Dwinell-Wright Co. v. National Fruit Product Co.

• Decision Date: 02 February 1944
• Docket Number: No. 3896.,3896.
• Citation: 140 F.2d 618
• Parties: DWINELL-WRIGHT CO. v. NATIONAL FRUIT PRODUCT CO., Inc.
• Court: U.S. Court of Appeals — First Circuit

140 F.2d 618 (1944)

DWINELL-WRIGHT CO. v. NATIONAL FRUIT PRODUCT CO., Inc.

No. 3896.

Circuit Court of Appeals, First Circuit.

February 2, 1944.

Edward G. Fenwick, Charles R. Fenwick, and Mason, Fenwick & Lawrence, all of Washington, D. C., and Simon P. Townsend and Choate, Hall & Stewart, all of Boston, Mass., for appellant.

Clarence B. Des Jardins, of Cincinnati, Ohio, and Gilman P. Welsh, and Harwood & Welsh, all of Boston, Mass., for appellee.

Before MAHONEY and WOODBURY, Circuit Judges, and HEALEY, District Judge.

WOODBURY, Circuit Judge.

This is an appeal by the defendant in a suit for trade-mark infringement and unfair competition from so much of a decree of the District Court of the United States for the District of Massachusetts as (1) enjoins it from making any further use of the trade-mark "White House", whether accompanied by a representation of the Executive Mansion or not, in connection with the sale of fruit or vegetable juices for food purposes, and (2) dismisses its counterclaim in which it charged the plaintiff with trade-mark infringement.

The plaintiff-appellee, National Fruit Product Company, Inc., a Virginia corporation, is the owner of five registrations¹ of the trade-mark "White House", either standing alone or accompanied by a representation of the Executive Mansion, covering a line of fruit (principally apple) and some vegetable products and juices. The defendant-appellant, Dwinell-Wright Company, a Massachusetts corporation, is the owner of three registrations² of the same trade-mark covering tea, coffee and salted peanuts.

In May, 1941, the defendant added to its line of coffee, tea and salted peanuts a blend of canned orange and grapefruit juice which it marketed under the trade-mark "White House" and thereupon the plaintiff brought the instant suit in which it charged that the defendant by so doing had begun to infringe its trade-mark and to compete unfairly³ with it. The defendant answered denying these charges and filed a counterclaim in which it charged that the plaintiff had been infringing its trade-mark ever since it began to use "White House" on its line of products.

In its counterclaim the defendant did not charge the plaintiff with unfair competition. Neither party alleges that the other has abandoned its use of the disputed mark on the products listed in footnotes 1 and 2 above, or denies that the other is engaged in interstate commerce. The facts necessary to sustain federal jurisdiction over both the suit and the counterclaim on the ground of diversity of citizenship and amount in controversy are admitted and have been found by the court below.

After full hearing the district court found that the fruit and vegetable juices marketed by the plaintiff are not merchandise of substantially the same descriptive properties as the tea, coffee and salted peanuts marketed by the defendant and that there is no substantial likelihood that the plaintiff's fruit and vegetable juices would be regarded by prospective purchasers as coming from the same source as the above listed goods of the defendant. But it found that the defendant's orange and grapefruit juice is merchandise of the same descriptive properties as the plaintiff's line of products, and that there is great likelihood that, because it is a fruit juice, it will be mistaken for the plaintiff's wares for the reason that the latter has marketed other fruit juices. It found that the registrations of both parties were valid. In consequence it concluded as matter of law that the plaintiff's registrations were infringed by the defendant's sale of its blend of canned orange and grapefruit juice under the trade-mark "White House" and that the defendant's registrations had not been infringed by the plaintiff.⁴ Consequently, damages having been waived, the district court entered the decree from which the defendant has taken this appeal.

Since the plaintiff has not appealed from the dismissal of its alleged cause of action for unfair competition and since the defendant in its counterclaim made no charge of that nature, only questions of trade-mark infringement are before us on this appeal. These questions are: (1) Did the defendant infringe the plaintiff's registrations of the trade-mark "White House" for fruit and vegetable products and juices when it put its canned blend of orange and grapefruit juice on the market under that mark in 1941, and (2) has the plaintiff been infringing the defendant's registrations of that mark for tea and coffee ever since it began to use it on its line of fruit and vegetable products and juices?

At the outset we are confronted with the question of what law to apply. Should federal law be applied because both parties have registered the mark under the Trademark Act? Or should the law of Massachusetts be applied under the doctrine of Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A. L.R. 1487, because there is a basis for federal jurisdiction on the ground of diversity of citizenship and amount in controversy? The court below concluded that on the question of infringement of registered trade-marks the applicable law is federal statutory law, and where that is ambiguous or silent, federal case law, and we agree.

The point is not by any means free from doubt and difficulty as the Supreme Court clearly indicated by granting certiorari in Pecheur Lozenge Co., Inc., v. National Candy Co., Inc., 315 U.S. 666, 62 S.Ct. 853, 86 L.Ed. 1103, expressly in order to consider it. But in the above case the Supreme Court was thwarted of its purpose because upon examination of the record it appeared that the petitioner's labels had been registered under the Copyright Law of the United States, 17 U.S.C.A. § 1 et seq., not under the Trademark Law. In consequence we are left for the present without controlling authority. The question, however, has recently been carefully considered, not only by the court below in the instant case,⁵ but also by S. S. Zlinkoff in Erie Railroad v. Tompkins; In Relation to the Law of Trade-Marks and Unfair Competition, 42 Columbia Law Review 955, and by the United States Circuit Court of Appeals for the Seventh Circuit in Time, Inc., v. Viobin Corporation, 128 F.2d 860, certiorari denied 317 U.S. 673, 63 S.Ct. 78, and Philco Corporation v. Phillips Mfg. Co., 7 Cir., 133 F.2d 663, and in view of these authorities, which are all in agreement, we think it would serve no useful purpose for us to consider it again in this opinion. It will suffice for us to say that the reasoning of the authorities cited above persuades us that the result reached by the court below is correct.

We turn now to the substance of the controversy.

Chapter 3 — Trade-Marks, of Title 15 of the United States Code Annotated (15 U.S. C.A. §§ 81-134) after making provision for registration in the Patent Office (§ 81) of certain kinds of trade-marks (§ 85) provides in § 96 that:

"Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such registered trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, * * * and shall use, * * * such reproduction, counterfeit, copy, or colorable imitation in commerce among the several States, * * * shall be liable to an action for damages therefor at the suit of the owner thereof; * * *."

From this section it is readily apparent that an owner of a registered trade-mark can recover for infringement only upon proof that the alleged infringer's merchandise is "merchandise of substantially the same descriptive properties" as those set forth in his (the plaintiff's) registration, and that, on such merchandise, without his consent and in interstate commerce, the defendant is using a "reproduction, counterfeit, copy, or colorable imitation" of the registered mark.

Since neither party contends that it is using the mark with the consent of the other and since each admits that the other is engaged in interstate commerce, the crucial questions on this appeal are the meanings of the statutory phrases quoted and italicized in the preceding paragraph.

The cases on the meaning of the phrase "merchandise of substantially the same descriptive properties" as used in the section of the statute quoted from above and those on the meaning of a very similar phrase in the section in which the kind of marks which may be registered are defined, § 85, are far too numerous to attempt to catalogue here. They can readily be found in the texts and digests. In some of them doubt is expressed as to whether or not the phrases have the same meaning in both sections of the statute,⁶ but however this may be it is perfectly clear from all of them that in neither section does the phrase mean, as in vacuo it might be taken to imply, that consideration must be limited only to the physical properties of the goods themselves. This is illustrated by the cases in which an owner of a registered trade-mark has been given protection against one who is using his mark, or one much like it, on wholly dissimilar goods which are not, strictly speaking, even competitive. For instance one who had registered the trade-mark "Aunt Jemima", accompanied by a picture of a laughing negress, for self-rising flour was given protection against one who used the same mark for pancake syrup and sugar cream (Aunt Jemima Mills v. Rigney & Co., 2 Cir., 247 F. 407, L.R.A. 1918C, 1039, certiorari denied 245 U.S. 672, 38 S.Ct. 222, 62 L.Ed. 540), and one who had registered a given mark for fountain pens was protected against another who used a very similar mark for safety razor blades. L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272. But compare Beech-Nut Packing Co. v. P. Lorillard Co., 3 Cir., 7 F.2d 967, affirmed 273 U.S. 629, 47 S.Ct. 481, 71 L.Ed. 810, in which an owner of a mark for food products was not given protection against the use by another of a substantially...