Coca-Cola Co. v. Carlisle Bottling Works

• Decision Date: 14 January 1929
• Citation: 43 F.2d 101
• Parties: COCA-COLA CO. v. CARLISLE BOTTLING WORKS.
• Court: U.S. District Court — Eastern District of Kentucky

43 F.2d 101 (1929)

COCA-COLA CO. v. CARLISLE BOTTLING WORKS.

District Court, E. D. Kentucky.

January 14, 1929.

Allen, Botts & Duncan, of Lexington, Ky., and Candler, Thomson & Hirsch, of Atlanta, Ga., for plaintiff.

Leslie Morris, of Frankfort, Ky., for defendant.

COCHRAN, District Judge.

This suit is before me on final hearing. On the hearing of the motion for a preliminary injunction I delivered a written opinion denying the motion, which has been published in 20 F. (2d) 909.

The sole complaint of the plaintiff is of infringement of its trade-mark "Coca-Cola." This trade-mark is a compound word and does not consist of two separate words. This is due to the hyphen which connects the two words which make it up. In the former opinion, in presenting defendant's trade-mark, of which complaint is made, I gave it as a compound word, to wit, "Roxa-Cola." This was a mistake. It is not a compound word. It consists of the two separate words, "Roxa" and "Cola." They are not connected by a hyphen. Its trade-mark is "Roxa Kola." At the outset I would emphasize the fact that the plaintiff's complaint is limited to infringement of its trade-mark. No complaint is made that the dress of defendant's article resembles that of plaintiff. It was conceded in argument that it does not. The facts do not permit of its being claimed otherwise. There is no similarity in the bottles used by the defendant with those used by the plaintiff. They differ distinctly in shape. The plaintiff's bottle seems to be patented and the question of its infringement was involved in the case of Coca-Cola Co. v. Whistle Co. of America (D. C.) 20 F. (2d) 261, 955. It was held there that there was no infringement, in that the similarity between the two bottles was not such as to deceive ordinary observers or would-be purchasers.

The difference between the two bottles here is more striking than there. On defendant's bottles there is blown into and around it just below the neck the words "Carlisle Bottling Works, Carlisle," and on the end "Carlisle, Kentucky." There was a similarity between the caps of the two bottles, of which note was taken at the hearing on the motion for a preliminary injunction, in that the trade-mark on each was the same color, to wit, red. No complaint of this was made in the bill. It was pointed out at the hearing, when I expressed a disapproval of this similarity. It was at once removed by changing the color of the trade-mark on defendant's caps to blue. And apparently this change has put an end to this complaint so far as there ever was one. So much as to the container. As to the article itself there is a distinct difference. Each uses caramel. The plaintiff claims that the use thereof is limited to coloring the article; that it has no other function. The defendant claims that it has also a laxative effect. But, however this may be, the two articles differ distinctly in color. The color of plaintiff is light and rather transparent. That of defendant is dark and opaque. It is a much deeper tint. When we come to the immediate setting of the two trade-marks, we find a distinct difference. The plaintiff's compound word is in large red letters in script, on a white background, and presents in appearance a unique design. The defendant's two words are in large blue letters, not in script, on a gray background, The plaintiff's compound word has above it the words, "Minimum contents 6 fluid ozs," and below it, "Reg. U. S. Pat. Off." Defendant's two words have above them the words, "More than wet," and below them the words, "Trade Mark," and a small insignia. As already indicated, the two trade-marks themselves differ distinctly, in that plaintiff's consists of a compound word, whereas defendant's consists of two separate words. The first part of plaintiff's compound word is "Coca." The first part of defendant's two words is "Roxa." These two words differ in appearance and in sound. The "o" in plaintiff's word has the sound of "o" in coke. That in defendant's words has the sound of "o" in fox. The noticeable resemblance of the two trade-marks is between the second part of plaintiff's compound word, to wit, "Cola," and the second of defendant's two words, "Kola"; the resemblance to the ear being exactly the same, but to the eye it is not exactly so, in that the letter "K" is substituted for the letter "C."

I diverge here to give the history of the use of defendant's trade-mark. It was not originated by defendant. It was originated in 1906 by C. L. Wainscott of Winchester, Ky., which is within forty miles of Carlisle, defendant's headquarters. He then began the manufacture of the article at that place and to put it on the market under the name "Roxa Kola" and has continued so to do ever since. On August 10, 1909, he had the first word "Roxa" registered in the United States Patent Office. He did not have the two words registered, because he was advised by his attorney, who had the matter in charge, that the word "Cola" was not registerable, in that it was descriptive. His market is limited to a few counties in Eastern Kentucky, not far from his base at Winchester. Seemingly he sells his goods direct to the retailer in his own county of Clark and the counties of Montgomery, Bath, Rowan, Powell, and Madison, adjoining Clark, or not far away. In addition, he sells his article to concerns who bottle it and sell it to the retailer. There is reference in the evidence to a bottling company at Irvine, county seat of Estill county, which handles that county and the adjoining county of Lee, and to such a company at Georgetown, county seat of Scott county, and Cynthiana, county seat of Harrison county. The defendant is such a company located at Carlisle, county seat of Nicholas county. Its territory covers that county and parts of the counties of Bourbon, Robertson, Fleming, and Mason, all of which, except Mason, adjoin Nicholas. Wainscott's trade thus covers about fifteen counties in Eastern Kentucky, all of which are in close proximity to Clark county at the county seat of which he produces the article. It would seem that in all instances other soft drinks besides Roxa Kola are handled by the concerns handling it. The defendant has been in business continuously since 1911, i. e. for more than fifteen years before the bringing of this suit. Wainscott has done all the advertising of the article on behalf of himself, subsidiaries, and retailers. This advertising has been intensive, if not extensive. He has resorted to all sorts of devices to bring his article to the notice of the public, such as chain hangers, water drinking cups, tags, caps, fans, buttons, and whistles called Roxa Kola whistles. On the whistles is inscribed the words, "Something to blow about, drink Roxa Kola, more than wet, puts steam in your whistler." The article has been advertised on all billheads issued by him and subsidiaries, also by handbills, labels, pamphlets, local newspapers, and some magazines. Songs have been put out advertising the article. This one was circulated in 1913, to wit:

"Now listen boys a mystery to you I want to tell Cause when you call on your best girl Of course you want to look swell. Drink all the Rox Kola you can get and your beauty I'll insure You will capture every girl you meet Your rivals will be fewer." Chorus "Oh, its Roxa Kola dope It gives a body new hope Things don't seem the same When a glass you've drained. Try it, buy it just for a change. When once you tried that sparkling drink Ever more you'll think of the same notion And drink of your portion of Roxa Kola dope." This one in 1916 or 1917 "Ashes to ashes, dust to dust If cocaine don't get you, Roxa Kola must."

Much use has been made of signs in bringing Roxa Kola home to the public. In 1909 he tore down his original plant and built a four-story building, including basement. Delivery was then by wagon. A picture of the original plant and delivery wagon was introduced in evidence with Roxa Kola signs all over them. Since 1912 deliveries have been by truck operated by Wainscott and by the subsidiaries. The trucks all have a Roxa Kola sign on them, and such signs are placed on the plants of all the subsidiaries and along the highways. In 1910 Wainscott organized the Kentucky State Bottlers' Association, and there has been an annual meeting of the association ever since. At those annual meetings he has maintained a booth at which he has displayed his article in connection with Roxa Kola signs. The printed proceedings of the association has carried a full page advertisement of Roxa Kola. He had a booth at the National Bottlers' Exposition in 1914 where he displayed and advertised his article. He testified that he had sent Roxa Kola in small lots or with orders to practically every state in the United States. But there is no indication of any sustained business being transacted elsewhere than in the fifteen or so counties heretofore referred to. The pains taken to differentiate Roxa Kola from Coca-Cola in matter of dress, setting of trade-mark, and in the trade-mark itself, and the advertising which has been resorted to, rebuts the idea that there has been any purpose or intent on the part of those handling it to pass it off for Coca-Cola. It is indicative of a good-faith effort on their part to secure business on the merits of the article itself without deception of any one. This is fortified by the fact that, notwithstanding such advertising, the article has made little headway. Wainscott seems to have been able to secure no business outside of Kentucky and none in Kentucky outside of the few counties heretofore named. The business he has secured there may be accounted for to a certain, if not large, extent by local interest and pride in him and his subsidiaries. One is justified in acting on the idea that such has been the view which plaintiff's distributors affected by Roxa Kola, if not itself, have taken of the matter.

It would seem that plaintiff does not...