Creamette Co. v. Conlin

• Citation: 191 F.2d 108
• Decision Date: 17 October 1951
• Docket Number: No. 13424.,13424.
• Parties: CREAMETTE CO. v. CONLIN et al.
• Court: U.S. Court of Appeals — Fifth Circuit

191 F.2d 108 (1951)

CREAMETTE CO. v. CONLIN et al.

No. 13424.

United States Court of Appeals, Fifth Circuit.

July 19, 1951.

Rehearing Denied October 17, 1951.

COPYRIGHT MATERIAL OMITTED

Frank A. Whiteley, Minneapolis, Minn., G. W. Botts, Jacksonville, Fla., for appellant.

John Marshall Green, Ocala, Fla., J. Edwin Holsberry, Pensacola, Fla., for appellees.

Before HOLMES, McCORD, and RUSSELL, Circuit Judges.

RUSSELL, Circuit Judge.

In the trial Court the appellant sought to enjoin the use by the defendants of the word "Creamette" as a trademark and tradename for a frozen sweet or dessert. The complaint was based both upon the claim of infringement of the plaintiff's registered trademark "Creamette" or its variant "Creamettes", and upon the claim of unfair competition at common law. The plaintiff alleged that the defendants, with full knowledge of its registration and use of the tradename, which was established in the minds of the public as representing plaintiff's product, had, with fraudulent intent, traded upon the plaintiff's reputation and good will, and, with like intent of passing off defendants' goods as the goods of the plaintiff, and with full knowledge of plaintiff's rights and that its trademark was the dominant part of its corporate name, had used plaintiff's trademark upon, and in connection with, the sale of "dairy products including forms of ice cream" and as its business name. It was alleged that such use was likely to cause confusion in the trade as to the source of the goods, and confuse and deceive purchasers of, and in connection with, the sale of the said dairy products. These allegations were denied by the defendants. The plaintiff likewise pleaded other instances where it had been successful in preventing infringement of its trademark by others. Two of these went to trial.¹

The trial Court, after a full hearing, found that the plaintiff had failed "to carry the burden of proof of the allegations of its complaint which the law imposes upon it." Other findings were made² upon which the Court adjudged that the injunction should be denied. Plaintiff has appealed, contending here that the Court clearly misconceived and misapplied the law applicable to the facts of the case so that its judgment is manifestly contrary to law. We do not sustain the contention of the appellant.

It was clearly shown that the defendants' business of manufacturing the frozen sweet or dessert by a patented machine located upon the premises and selling it upon such premises, — a small building, or "stand", — was not "in commerce". Thereby questions of infringement of the registered trademark were removed from the case, and it remains one based solely upon the claim of unfair competition. However, this did not render it improper for the appellant to show, as it did, that the appellant and its predecessor, Mother's Macaroni Company, had used the trademark Creamette, and the plural Creamettes, since prior to August 15, 1912, at which time the macaroni company registered the trademark Creamette with the United States Patent Office for use on its macaroni products. On later dates appellant registered with the United States Patent Office such trademarks for use on other food products which were specifically itemized on the registration certificates. None of these included a frozen dessert or ice cream product. These registrations were re-published under the Lanham Trade-Mark Act of 1946, 15 U.S.C.A. § 1051 et seq. At all times since August, 1912, appellant has sold its products under these tradenames in various trade territories in the United States and Canada, but has sold only macaroni and spaghetti in Florida. These latter products constitute 99 per cent of the appellant's total sales. Appellant has carried on an extensive advertising campaign during the years, some of it in Florida (since 1946). Appellant first introduced its macaroni to the trade in Florida under the name Creamettes in May, 1946, and it has continued to sell its macaroni and spaghetti in Florida under the trademarks Creamette and Creamettes since that time. On July 22, 1949, appellant applied for, and secured, from the Secretary of State of the State of Florida registrations of these trademarks for all products previously registered with the United States Patent Office.

Appellee Conlin first adopted the trade-name Creamette in October, 1947, at which time he filed application with the Secretary of State of the State of Florida for, and secured registration of, the trademark "Creamette" for frozen desserts. He opened his first ice cream "stand", using this name as his tradename, in December, 1947. Testimony by, and on behalf of, the defendants, that appellee Conlin had never heard of appellant's products or the use of the tradename by it until some time in 1948, when Conlin observed the products advertised in a grocery store, and of the other appellees to the effect that they had never heard of appellant company, its products or tradename prior to the receipt of correspondence shortly prior to the institution of the litigation was not materially controverted, and was accepted by the trial Court. Appellant introduced no evidence to support the allegations of its complaint that defendants had adopted and were using its trademark with fraudulent intent. It is not shown that there has been any confusion as to the source of the products in question, nor was any evidence introduced to support the view that there was likely to be any such confusion. The products of the appellant and appellees are distinctly different and are similar only in that they are both food products. Even in this respect, however, they are dissimilar in that appellant's...