Campbell Soup Co. v. Armour & Co.

• Decision Date: 08 September 1948
• Docket Number: Civil Action No. 6859.
• Parties: CAMPBELL SOUP CO. et al. v. ARMOUR & CO.
• Court: U.S. District Court — Western District of Pennsylvania

81 F. Supp. 114

CAMPBELL SOUP CO. et al. v. ARMOUR & CO.

Civil Action No. 6859.

District Court, E. D. Pennsylvania.

September 8, 1948.

Robert T. McCracken and C. Russell Phillips, of Montgomery, McCracken, Walker & Rhoads, all of Philadelphia, Pa., for plaintiffs.

Harry D. Nims and Wm. M. Van Winkle, Jr., both of New York City, of counsel for Campbell Soup Co.

Edward S. Rogers and William T. Woodson, both of Chicago, Ill., of counsel for Carnation Co.

Walter J. Blenko, of Pittsburgh, Pa., William Clarke Mason and Thomas B. K. Ringe, of Morgan, Lewis & Bockius, all of Philadelphia, Pa., and George E. Leonard, of Chicago, Ill., for defendant.

GANEY, District Judge.

This is a suit by Campbell Soup Company and Carnation Company, complainants, to restrain the defendant, Armour and Company, from using a red and white device in any form approximating that of the present red and white banded label used on their products.

The complaint alleges that the plaintiff companies, Campbell and Carnation, have adopted identical trade-marks for their food and ingredients of food products; that each have done a large amount of business under the identical trade-mark in using the slogan, "Look for the red and white label", since the products of the plaintiffs bear red and white labels on their cans; that the red and white labels constitute a trade-mark which symbolizes the good will of each plaintiff and that their concurrent use of it in the United States and in foreign countries is the subject of an agreement between them; that the defendant, Armour and Company, has adopted a label for its products using white over red, and that the use of the same by the defendant is imitative of the trade-mark of the plaintiffs; that there is likelihood of confusion as to the source of origin of the defendant's products with the products marketed under the plaintiffs' alleged trade-mark; that the defendant by using the label white over red has competed unfairly with the plaintiffs, and has been guilty of unfair trade practice. Accordingly, an injunction is asked by the plaintiffs to restrain the defendant from using the band white over red on its products, or in any form approximating that of its present label, as well as for an accounting of all profits derived by the defendant for the sale of merchandise under the present label complained of.

With respect thereto the Court makes the following

Findings of Fact:

1. The plaintiff, Campbell Soup Company, hereinafter called "Campbell," is a New Jersey corporation, with its principal place of business at Camden, New Jersey, and is a citizen, resident and inhabitant of the State of New Jersey.

2. The plaintiff, Carnation Company, hereinafter called "Carnation," is a Delaware corporation, with its principal place of business at Milwaukee, Wisconsin, and is a citizen, resident and inhabitant of the State of Delaware. The predecessor of Carnation was originally known as Pacific Coast Condensed Milk Company.

3. The defendant, Armour and Company, hereinafter called "Armour," is an Illinois corporation, with its principal office or place of business at Chicago, Illinois, and is a citizen, resident and inhabitant of the State of Illinois, and authorized to do business in the State of Pennsylvania and maintains a place for the transaction of business in the Eastern District of Pennsylvania.

4. On October 31, 1905, a trade-mark registration was awarded to Campbell for a period of twenty years, the description thereof in part being as follows: "The trade-mark of said corporation consists of a rectangular panel having an upper half of red and a lower half of white." The asserted mark was limited to soups and known as No. 47,153 and was renewed in 1925 and again in 1945, with no change either in the description or the goods. In the original application for the trade-mark, the description merely referred to "* * * two bands, approximately centrally divided, one being white and the other red".

5. Trade-mark No. 47,154 was registered to Campbell in 1905 for baked beans with, in part, the following description: "The trade-mark of said corporation consists of a rectangular panel, the upper half of which is red and the lower half white, with the word `Campbell's' appearing upon the upper half." This was likewise renewed in 1925 and again in 1945 with no change either in the description or the goods. In the original application the description did not specify whether the red or white was to be uppermost, and was later limited to the description above.

6. Trade-mark No. 48,664 was awarded to Campbell in 1906 for condensed soups and the description for it, in part, was as follows: "* * * a band, the upper half of which is red and the lower half white, with the word `Campbell's' appearing in the upper half." In the original application there was no restriction as to which band was to be uppermost, but it was later limited by the description hereinabove.

7. Trade-mark No. 166,870 was registered in 1922 to Campbell for foods and ingredients of food, spaghetti being largely marketed thereunder. The description here provided for rectangular panels, the upper one red and the lower one white. Spaghetti has not been sold under this label since previous to 1939 although the registration was renewed without change in 1943.

8. Trade-mark No. 181,610, was registered in 1922 for certain canned goods, including tomatoes, corn, peas and beans, and while detailed the description provided for an upper panel of red and a lower one of white, specifies fleur-de-lis in gold, an upper border stripe of white and a lower border stripe of red.

9. All of the trade-mark registrations awarded to Campbell were under the Act of February 20, 1905, § 1, 33 Stat. 724, 15 U.S.C. 81, and were limited to panels of red over white after the original descriptions, sufficiently broad to admit of white over red, were amended.

10. The Carnation registration of September 18, 1900, No. 35,072, had an upper band of red with the word "Carnation" in script letters thereon, and a lower band of white, and three carnations centered on the label below the word "Carnation". The description, in part, provided:

"Different styles of lettering may be used, and the field or background may be varied, without altering the character of the trade-mark, the essential feature being the word `Carnation'".

11. The Carnation registration trademarks here asserted are Nos. 239,791 and 282,053 for evaporated milk and condensed milk products and describe the panel as red over white, the uppermost being red and the lowermost being white. Application was made for the former on October 12, 1927 and for the latter on May 8, 1929.

12. The trade-mark registrations of Carnation were registered under the Act of February 20, 1905.

13. On the Campbell label the red panel has always been at the top while on the Carnation label it has likewise always been at the top except for a small number of labels used by it in two states in the southwest where it has been at the bottom. Campbell and Carnation both use a dark red; the Carnation red being slightly darker than the Campbell red. Campbell's principal product under its red and white label is condensed soups although it has been used for spaghetti, however, spaghetti as has been indicated, has not been marketed by Campbell since prior to 1939, since which time it has been sold under the label of "Franco American." Campbell's red and white labels carry the name "Campbell's" in white script on the red band.

14. Carnation's principal product under its red and white labels is evaporated milk, but it has been used on ice-cream and breakfast cereals also. Carnation milk labels carry the name "Carnation" on the red band in a position corresponding to the name "Campbell's" on the Campbell Soup can and in white script of a style similar to that used on the Campbell cans.

15. Campbell's business began on the Eastern seaboard and Carnation's business began on the Western seaboard, and both had achieved national distribution as early as 1911. Each of the plaintiffs distribute their products through 95% of the retail stores in the United States.

16. For a period of 35 years, Campbell and Carnation concurrently used virtually identical red and white banding on their products, during a large period of which time the products were in national distribution and sold in the same stores.

17. After 35 years of such concurrent use, in January, 1934, Campbell and Carnation entered into an agreement, in writing, regarding their respective rights in the use of red and white banded labels, a similar agreement with respect to the foreign business of the two companies was made a year or two earlier. In general the agreement provided that Carnation should use the red and white labels on dairy and cereal products and Campbell was to use the labels on soups and all other food products. The division of the field between the two was made as a result of bargaining between the plaintiffs. The foreign agreement insofar as it operated in Germany was to be perpetual and for 100 years insofar as it operated over the rest of the world.

18. One of the effects of the agreement was that the plaintiffs agreed not to dispute the rights of the other whereas previous to the agreement they were entitled to oppose one another's applications for trademark registration.

19. Both plaintiffs for many years in magazines, newspapers and radio advertisements have been using the slogan, "Look for the red and white label" or its equivalent without protest from the other.

20. Although it has been using the red and white label since 1900 when the registration was obtained under the name of the Pacific Coast Condensed Milk Company, Carnation did not assert until 27 years later that the red and white background of the label constituted a trade-mark.

21. In trade-marks registered in Great Britain both plaintiffs disclaimed any right to monopolize a half red and half white...