Chapin-Sacks Mfg. Co. v. Hendler Creamery Co.

• Decision Date: 10 October 1918
• Docket Number: 1584,1620.
• Citation: 254 F. 553
• Parties: CHAPIN-SACKS MFG. CO. v. HENDLER CREAMERY CO. et al. HENDLER CREAMERY CO. et al. v. CHAPIN-SACKS MFG. CO.
• Court: U.S. Court of Appeals — Fourth Circuit

254 F. 553

CHAPIN-SACKS MFG. CO. v. HENDLER CREAMERY CO. et al.

HENDLER CREAMERY CO. et al. v. CHAPIN-SACKS MFG. CO.

Nos. 1584, 1620.

United States Court of Appeals, Fourth Circuit.

October 10, 1918

[Copyrighted Material Omitted]

John Watson, Jr., of Baltimore, Md. (Vernon Cook, of Baltimore Md., on the brief), for defendants.

Before KNAPP and WOODS, Circuit Judges, and WADDILL, District Judge.

WOODS Circuit Judge.

In these appeals two mixed questions of law and fact are to be decided: Were the words, 'The Velvet Kind,' applied to ice cream in 1905, so descriptive of quality that they could not be appropriated as a trade-mark by complainant Chapin-Sacks Manufacturing Company?

Assuming that they were, did the use by he defendant Hendler, and his successor in business, Hendler Creamery Company, of the words, 'The Velvet Kind,' and of containers and wagons similar to those used by complainant, nevertheless amount to unfair competition-- the unfair appropriation of the good will of the complainant and the reputation of its ice cream?

The first question is not free from difficulty, but it must be answered in the affirmative. No words which in their ordinary signification or in their accepted trade signification merely describe quality in the article to which they are applied can be excluded by one trader from use by others and appropriated as a trade-mark. Manufacturing Co. v. Trainer, 101 U.S. 51, 25 L.Ed. 993; Lawrence Manufacturing Co. v. Tennessee Manufacturing Co., 138 U.S. 537, 11 Sup.Ct. 396, 34 L.Ed. 997.

'Velvet,' in its primary meaning signifies cloth, substantial, soft, and smooth, without distinct particles causing roughness to the touch. With this signification, 'velvet' and 'velvety' are applied descriptively in common speech to other articles; and in this secondary sense the words are used almost as commonly as in their primary sense. Perhaps no other words applied to ice cream so well describe the qualities of consistency, softness, and smoothness--the absence of roughness to the sensitive touch of the tongue produced by distinct particles of ice. The word 'velvet' was in this sense becoming more markedly descriptive in 1905, when complainant commenced its business; real cream having so largely ceased to be the chief constituent of ice cream, and the volume of the ice cream business having so vastly increased. It is not denied that at least two or three manufacturers and dealers in different parts of the country had before 1905 used the word 'velvet' or 'velvet kind' as descriptive of quality in ice cream. After December, 1905, when complainant registered the words, 'The Velvet Kind,' in the Patent Office as a trade-mark, the words 'velvet' and 'velvet kind' were very extensively so used all over the country, apparently without any knowledge of complainant's effort to appropriate the terms. This last fact is not important, as showing such prior appropriation by any dealer or dealers as to invalidate complainant's claim to a trade-mark by reason of prior appropriation. Its significance is that it shows a common conception and understanding of the words as distinctive of quality so general, and so valuable to the trade, that they could not be appropriated as a trademark by one dealer to the exclusion of all others. Indeed, we cannot help thinking complainant adopted the word 'velvet' as a fit adjective to describe to the public the kind of cream it was making.

The allowance of the trade-mark by the Patent Office, it is true, furnishes a strong presumption of its validity. In addition to this, the Patent Office registration of the words 'velvet' and its derivatives, either alone or with other words, for such articles as candies, lotions, butter, oil, and cotton fabrics, also tends to support the claim of the complainant. No doubt, in registering these words as trade-marks, the Patent Office in these instances considered the words indirectly and remotely descriptive, without being actually so, thus applying the principle on which the word 'Hygeia,' conveying to those who happened to think of its derivation the idea of health or healthfulness, was held a good trade-mark for water in Consolidated Ice Co. v. Hygeia Distilled Water Co., 151 F. 10, 80 C.C.A. 506. But none of these registrations measures up to the case cited, and none of them, as we understand, has been subjected to judicial test. We think all presumptions from the action of the Patent Office are overcome by the great weight of the evidence and the common understanding that 'velvet' and 'velvet kind' describe, as hardly any other words could, the desirable qualities mentioned in ice cream.

The second question must also be answered in the affirmative. If the complainant had acquired the right to the exclusive use of the words, 'The Velvet Kind,' as a trade-mark, their use by the defendants would be itself evidence of the intention to defraud and palm off their cream as that of the complainant. Lawrence M. Co. v. Tennessee M. Co., 138 U.S. 537, 549, 11 Sup.Ct. 396, 34 L.Ed. 997. In such case the inference of fraud and unfair competition might be rebutted in exemption of damages; but, in the absence of conduct by complainant amounting to estoppel, further violation of the right of property would nevertheless be restrained. Elgin W. Co. v. Illinois W. Co., 179 U.S. 665, 674, 21 Sup.Ct. 270, 45 L.Ed. 365.

Even where there is no technical trade-mark, a dealer may acquire property rights which the courts will protect, upon proof of unfair competition by imitation of his distinctive words, marks, or other designations of his goods, or of his containers or other instrumentalities of trade. The principle is thus well expressed by Judge Lurton in Computing Scale Co. v. Standard Computing Scale Co., 118 F. 965, 55 C.C.A. 459:

'But when the word is incapable of becoming a valid trade-mark, because descriptive or geographical, yet has by use come to stand for a particular maker or vendor, its use by another in this secondary sense will be restrained as unfair and fraudulent competition, and its use in its primary or common sense confined in such a way as will prevent a probable deceit, by enabling one maker or vendor to sell his article as the product of another. ' Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 Sup.Ct. 1002, 41 L.Ed. 118; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365.

Complainant began to make and sell ice cream in the city of Washington under the name of 'The Velvet Kind' in May, 1905, and in December of that year registered the words under the federal law as a trade-mark. Doubtless believing it had a valid trade-mark, it placed the words on its containers and wagons, and by extensive advertisements in newspapers, by electric signs, and the distinctive marks on containers and wagons, the words, 'The Velvet Kind,' were made to signify to the trade in Washington, Richmond, and the immediate vicinity of those cities a cream of known quality made and sold in large quantities by the complainant under that name. There can be no doubt that, at least in Washington, the complainant had, by advertisement, marks, and the general conduct of its business, so associated its ice cream with the words, 'The Velvet Kind,' that the sale of ice cream in that city by others under that name, with nothing to distinguish their cream from complainant's, would have been a fraud.

But that did not give complainant any right to the exclusion of the use by others of the descriptive words in any place where it had not associated its cream with the designation. Hanover Star M. Co. v. Metcalf, 240 U.S. 403, 36 Sup.Ct. 357, 60 L.Ed. 713; Theodore Rectanus Co. v United Drug Co., 226 F. 545, 141 C.C.A. 301. It is true that, in the cases cited, the markets in which the complainant had not established their trade in flour and drugs were...