Dietene Company v. Dietrim Company

• Decision Date: 12 August 1955
• Docket Number: No. 15164.,15164.
• Parties: DIETENE COMPANY, Appellant, v. DIETRIM COMPANY and Vitamin Industries, Inc., a corporation, Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

225 F.2d 239 (1955)

DIETENE COMPANY, Appellant, v. DIETRIM COMPANY and Vitamin Industries, Inc., a corporation, Appellee.

No. 15164.

United States Court of Appeals Eighth Circuit.

August 12, 1955.

Gerrit P. Groen, Chicago, Ill. (Harold A. Prince, Grand Island, Neb., was with him on the brief), for appellant.

Philip B. Polster, St. Louis, Mo., for appellee.

Before SANBORN, JOHNSEN and VAN OOSTERHOUT, Circuit Judges.

SANBORN, Circuit Judge.

This is an appeal from a judgment dismissing upon the merits the complaint of the plaintiff (appellant) in an action for trade-mark infringement and unfair competition.

The plaintiff is a Minnesota corporation which brought this action upon the claim that it owns the trade-mark "Dietene" for a fortified dietary food supplement which the plaintiff and its predecessors have been engaged in producing and distributing since January, 1934; that the trade-mark was registered November 19, 1935, as No. 329,995, under the Trade-Mark Act of 1905, 33 Stat. 724; that the trade-mark has been used by the plaintiff and its predecessors to distinguish and identify the product, and is a valid, subsisting, unrevoked and uncancelled trade-mark; that the plaintiff has built up a valuable business and good will throughout the United States in the sale of Dietene; that the trade-mark "Dietene" has come to mean to the public the product of the plaintiff; that the defendants (appellees) are selling fortified dietary food supplement products in competition with the plaintiff under the mark "Dietrim", which is confusingly similar to the trade-mark "Dietene"; that the defendants have infringed the plaintiff's trade-mark rights, have engaged in unfair competition, and have continued to do so after notice of infringement. The plaintiff demanded an injunction and an accounting. Jurisdiction was based on diversity of citizenship, as well as upon Title 15 U.S.C.A. § 1121.

The defendant Vitamin Industries, Inc., a Nebraska corporation, the only actual defendant (the "Dietrim Company" not being a legal entity but only a trade name sometimes used by Vitamin Industries, Inc., in connection with its sales of Dietrim), in its answer denied that by using the mark "Dietrim" in connection with the sale of its vitamin dietary supplement it had infringed the plaintiff's trade-mark, and denied that there was any confusing similarity between the marks "Dietene" and "Dietrim" or that any confusion had been occasioned by the alleged similarity of the marks. The defendant asserted that the marks were dissimilar and that the dissimilarity was accentuated by the fact that Dietene was distributed in powder form, in cans, by weight, in two flavors — chocolate and vanilla, while the defendant's product was distributed in capsule form in bottles.

The only issue expressly raised by the pleadings was whether the marks "Dietene" and "Dietrim" were so similar as to make the defendant an infringer or an unfair competitor.

The case was tried to the court without a jury. There was little, if any, dispute as to the evidentiary facts. The product Dietene was originated in 1934 by the Dietary Foods Company of Minneapolis, which in that year was acquired by the Dietene Company, not then incorporated but operating as a division of Larx Company, Incorporated, of Minneapolis. In 1951 the plaintiff was incorporated under Minnesota law, and acquired from Larx Company, Incorporated, the trade-mark "Dietene" and the good will which went with it.

The plaintiff makes and distributes two products: Dietene Reducing Supplement and Meritene Whole Protein Supplement. Both are supplementary foods. Dietene is used primarily as a supplement to a low calorie diet, to provide adequate proteins, vitamins and minerals. Meritene is normally used to provide extra quantities of those things in special diets beyond normal requirements.

Dietene is distributed in the form of a powder, in cans, to be mixed with milk, and to be used by those on a reducing diet, to insure adequate nutrition. The trade-mark "Dietene" has appeared on the cans containing the product as well as upon plaintiff's letterheads and advertising material. Instructions have been furnished with every can of Dietene, together with a suggested diet. The product has been checked by the American Medical Association, and its seal of acceptance is used on every package and on the plaintiff's literature and letter-heads. Dietene is the only product of its type having this seal of acceptance.

To promote the sale of Dietene, the plaintiff furnishes suggested reducing diets to physicians for distribution to their patients. These diets are distributed through Physicians' Nutrition Clinics for use by physicians and dietitions. A physician can fill in the name of a patient on one of the suggested diets and give it to the patient to follow. The folders containing the suggested diets are distributed in large numbers, 90,000 sets being used in 1953.

Dietene reaches the public mainly through retail druggists. The plaintiff's direct customers are wholesale druggists and large retail chain stores. Dietene is not sold on prescription, but upon recommendation and as an over-the-counter product. It is frequently on open display. The product has been assayed once a year by the Wisconsin Alumni Research Foundation, to insure that it is as represented. A copy of the report of the Foundation is sent to the American Medical Association to evidence that the product is as claimed. A copy of the report is also furnished the Inspector from the Federal Food and Drug Administration when he comes around. In the middle thirties, Dietene was nationally publicly advertised. Later on, sales promotion was through the medical profession.

Total net sales of Dietene from 1934 to 1953 were $1,256,137.63. Annual sales for each of the years 1952 and 1953 exceeded $200,000. Sales had been small prior to 1945 and 1946. The increase in sales since that time is attributed to the reinvestment of profits in advertising. Distribution of Dietene is nationwide. From 1934 to 1953 the plaintiff and its predecessors spent or allocated to sales promotion and advertising $431,358.11. The plaintiff has regularly advertised its product in the Journal of the American Medical Association, the Annals of Internal Medicine, and in Medical Economics and Modern Medicine. It employs ten full-time salesmen, who call on physicians, hospitals, and wholesale and retail druggists. Constant advertising in the American Medical Association Journal, together with the fact that Dietene is acceptable to the American Medical Association's Council on Foods and Nutrition, has familiarized doctors with the...