Goldsmith Silver Co. v. Savage

• Decision Date: 10 December 1915
• Docket Number: 1120.
• Citation: 229 F. 623
• Parties: GOLDSMITH SILVER CO. v. SAVAGE.
• Court: U.S. Court of Appeals — First Circuit

229 F. 623

GOLDSMITH SILVER CO. v. SAVAGE.

No. 1120.

United States Court of Appeals, First Circuit.

December 10, 1915

Rehearing Denied March 1, 1916.

Putnam Circuit Judge, dissenting.

Maurice E. Rosen, of Portland, Me., for appellant.

Phillips B. Gardner, of Bangor, Me., for appellee.

Before PUTNAM, DODGE, and BINGHAM, Circuit Judges.

BINGHAM Circuit Judge.

This is a proceeding in equity, brought by the complainant appellant, against the defendant, in which it alleges and claims (1) that it is the owner of a trade-mark in the numerals '108,' as adopted and used by it with reference to a certain cigar, which it manufactures and puts upon the market, and that the defendant has infringed its right by employing the numerals '208' on a cigar which he manufactures and puts upon the market; and (2) if it is not entitled to an exclusive right in the numerals '108' as a trade-mark, that by the adoption of them and their use through a series of years in connection with the sale of a certain cigar it has established a trade therein, and that the defendant, by putting upon the market his cigar numbered '208,' is guilty of unfair competition.

By agreement of the parties the case was sent to a special master under an order of the court, with directions 'to take the testimony and report the findings of fact and conclusions of law to the court, with all convenient speed subject to exceptions according to the usual course of chancery practice. ' Having heard the parties, the master made his report, in which he found in substance (1) that the complainant's predecessors in title adopted the numerals '108' to denote the origin and source of manufacture of a certain cigar that it manufactured, which mark the complainant and its predecessors have continued to use in connection with the manufacture and sale of said cigar for more than 20 years, but ruled that the complainant had no exclusive right to the use of such numerals, in that they would not constitute a valid trade-mark when not associated with some name or device to characterize and distinguish them. Having thus disposed of this question, he proceeded to consider whether the business, which the complainant had built up by the use of the numerals '108' in connection with its cigar, had been unlawfully interfered with by the defendant.

With reference to this subject, he states that one question is whether the natural and probable tendency and effect of the conduct of the defendant in his sale of the cigar marked '208' was such as to deceive the public, so as to pass off his goods for those of the complainant. He then finds that the box containing the cigars manufactured and sold by the defendant, when compared with the box containing the cigars manufactured and sold by the complainant, presented no such resemblance as would cause deception on account of similarity; that the shape, size, and general appearance of the boxes were very dissimilar, similar, and that the labels upon them were entirely different; that the numerals occupied different places on the respective boxes, and were so different in size as to present no real similarity to the eye; that, while the size of the cigars was practically the same, there were a million other makes of like size; and that the complainant's cigar was branded '108' while the defendant's was not. He summarizes his finding as follows: 'From a comparison, therefore, of the cigars and boxes, including labels, general appearance, and make-up, I find that there would be little or no possibility of a dealer thinking that they were the cigars manufactured and sold by complainant.'

As to the contention that the defendant, by manufacturing his cigars and selling them under the numberals '208,' put into the hands of retail dealers the means of deceiving the ultimate consumer by substituting cigars of his brand for those of the complainant's brand, he ruled that:

'To warrant the issuing of an injunction, either actual or probable deception and confusion must be shown, and that mere possibility of deception was not enough.'

After setting forth and analyzing the evidence bearing on this question, and showing that the complainant's and defenant's cigars are of the same size, shape, and color, and that there are numerous other cigars on the market of like size, shape, and color, he finds that the parties sent by the complainant to purchase cigars from retail dealers, and who testified in the case, were not deceived, and that the boxes were so marked and the marks on the boxes containing defendant's cigars were so open to observation that there was no likelihood of purchasers being deceived; that there is no uniform rule followed by retail dealers in the display of the boxes, but that generally their covers are torn off or bent back and put under the boxes, so that only the boxes themselves are seen in the cigar case; that if an unscrupulous retail dealer, who did not have the '108' cigar, wished to palm off on the purchaser a different one, he could do this as well by substituting any other cigar of the same shape and size, of which there were many on the market; and that to take cigars from a box marked '208' would assist him very little in accomplishing his purpose.

He then considers the evidence bearing upon the question of the purpose and intention of the defendant in adopting the universal Londres shape and size of cigar for his cigar, with the numerals '208' upon the box, and concludes, inasmuch as the boxes were dissimilar, and the size, shape, and color of the cigars were the same as many others on the market, that in the adoption of the numerals '208' the defendant did not intend to encroach upon the complainant's trade by deceiving the public, and that this conclusion was not overcome by the fact that the defendant had at one time handled the complainant's cigar as a jobber in practically the same territory in which he later sold the cigars marked '208.'

The report having been filed, the complainant excepted to the following findings of fact and conclusions of law of the master:

'First. That the master finds as a matter of law that the numberals '108' as used by your petitioner are not the subject of a trade-mark.

'Second. That the master finds that the petitioner is not entitled to an injunction on account of an infringement of the defendant on the alleged trade-mark.

'Third. That the master finds that the petitioner has not established his case of unfair competition on the part of the defendant as will entitle him to an injunction as prayed for.

'Fourth. That the master finds that the petitioner is not entitled to an accounting for damages.' There was a general exception to the report as against the law, the evidence, and the weight of the evidence.

In the District Court the findings and rulings of the master were sustained, and a decree was entered affirming the same. From this decree an appeal was taken to this court, and the errors assigned were that the District Court erred: (1) 'In finding that the name '208,' as used by the defendant in connection with the defendant's sale of his cigars, was not an infringement upon the complainant's trade-mark rights to use the name '108' as used by it'; and (2) 'in finding that the use by the defendant of the name '208' in connection with the sale of his cigars was not unfairly competing against the complainant in the complainant's use of the name '108' in connection with its sale of cigars.' The third, fourth, fifth, sixth, and eighth assignments were mere subdivisions of assignments 1 and 2. The seventh was that the court erred 'in not finding from all the evidence that the conduct of the defendant in placing upon the market his '208' cigars was for the fraudulent purpose of unfairly competing with the complainant.' The ninth, tenth, and eleventh assignments were general.

The report of the master was filed February 3, 1914, and the opinion of the District Court dismissing the bill was filed March 16, 1914. On March 15, 1915, the depositions of certain witnesses, whose testimony purports to have been taken in the case, were filed in the District Court. The record contains no stipulation that these depositions embrace all the evidence presented before the master, and the order of the court sending the case to the master contained no direction to him to report the evidence. Under these circumstances the evidence contained in the depositions cannot properly be considered by us for the purpose of determining whether the findings of fact by the master are correct or otherwise. 'The true rule upon this subject is that the master's finding of facts upon the evidence taken by him cannot be impeached, in the absence from the record of the certificate, or other competent proof, either that the evidence presented is the entire evidence taken by him, or that it contains all the evidence which was before him relative to the specific finding or findings challenged. ' While it would be presumed, in the absence of countervailing proof, in case the order to the master had contained a direction to report the evidence, and on filing his report he had accompanied it therewith, that he had faithfully discharged his duty and returned all the evidence, no such presumption can be indulged in this case, for the order to the master contained no such direction, and the record does not disclose that the evidence was returned by the master. Guarantee Gold Bond Loan & Savings Co. v. Edwards et al., 164 F. 809, 811, 90 C.C.A. 585, and cases there cited.

The complainant has argued his case as though the finding and ruling of the master-- that the numerals '108,' as used by the complainant, were not a valid trade-mark-- had been assigned by him as error. The record discloses that an exception of this...