Griesedieck Western Brewery Co. v. Peoples Brewing Co.

• Decision Date: 20 June 1945
• Docket Number: No. 12979.,12979.
• Citation: 149 F.2d 1019
• Parties: GRIESEDIECK WESTERN BREWERY CO. v. PEOPLES BREWING CO.
• Court: U.S. Court of Appeals — Eighth Circuit

149 F.2d 1019 (1945)

GRIESEDIECK WESTERN BREWERY CO. v. PEOPLES BREWING CO.

No. 12979.

Circuit Court of Appeals, Eighth Circuit.

June 20, 1945.

A. W. Murray, of Chicago, Ill. (Hunt, Palmer & Hood, of Duluth, Minn., on the brief), for appellant.

T. J. Doyle, of Duluth, Minn., for appellee.

Before GARDNER, JOHNSEN, and RIDDICK, Circuit Judges.

GARDNER, Circuit Judge.

Griesedieck Western Brewery Company, plaintiff in the trial court, appeals from a judgment dismissing its suit by which it sought to enjoin Peoples Brewing Company from infringing its registered trademark and copyrighted labels. The parties will be referred to as they were designated in the trial court.

In its complaint plaintiff alleged that it was and for many years had been extensively engaged in the manufacture, advertising, distribution and sale in interstate commerce of beer under its "Stag" trademark; that due to skilful workmanship and the high quality of its beer in bottles bearing its trade-mark, and by reason of the advertising and sale of its beer for more than thirty years in interstate commerce, its trade-mark "Stag" and stag's head design had become generally and favorably known and familiar to the trade and public as identifying its product, and that "said trade-mark `Stag' and said distinctive appearance of plaintiff's label have become a substantial part of the valuable good will of the plaintiff." It alleged that it was the sole owner of certificate of trade-mark registration issued by the Commissioner of Patents for the trade-mark "Stag" and stag's head, and that notice to the public of such registration had always appeared upon the labels of its goods since the date of such registration; that plaintiff was also the owner of certificates of label registrations for labels created, designed and used by it on its beer and that such labels were copyrighted, and that notice of copyright had always appeared on its labels.

It alleged that the defendant was a corporation organized under the laws of the State of Minnesota, with its usual place of business in the City of Duluth, Minnesota, from which place of business it had committed the acts of infringement and unfair competition complained of; that it had been and was still infringing plaintiff's trade-mark and registered labels, and was competing unfairly with plaintiff by using in the City of Duluth and State of Minnesota and elsewhere in the United States, in interstate commerce, the trade-mark "Stag" and stag's head design in connection with the labeling, advertising, selling and distributing of beer; that the trademark "Stag" and stag's head design as used by defendant was a simulation of the distinctive style of plaintiff's trade-mark and labels; that defendant adopted and used such trade-mark for beer with knowledge of plaintiff's prior extensive use of the trade-mark and label; that the term "Stag" and stag's head design as used by defendant was substantially identical with and a colorable imitation of plaintiff's registered trade-mark and so nearly resembles that of plaintiff as to be likely to cause confusion or mistake in the minds of the public or to deceive purchasers; that the wrongful imitation, simulation and infringement by defendant of plaintiff's trade-mark, design and labels were intended to enable and did enable unscrupulous dealers to substitute and pass off defendant's infringing product as and for plaintiff's product; that defendant's beer bearing said infringing trade-mark, labels and designs was sold in the same kind of retail stores, shops, taverns and places where beer is sold and dispensed, as plaintiff's product is sold, to the same class of consumers; that by its unlawful imitation and simulation of plaintiff's trade-mark and registered label, defendant was competing unfairly with plaintiff in interstate commerce and was endeavoring to and had unlawfully appropriated the good will theretofore established by and belonging to plaintiff in its trade-mark and distinctive style of label.

Appropriate allegations as a basis for equitable relief by injunction were embodied in the complaint, and plaintiff asked that defendant be enjoined from the alleged infringements.

Defendant by its answer admitted its corporate existence and admitted that plaintiff was engaged in the manufacture, sale and distribution of beer under the trade-name of "Stag"; denied that the plaintiff was the sole or exclusive owner of the trade-mark or the stag's head design, and denied that plaintiff was the sole owner of the right to use the said design or label for beer. It denied that it was or ever had infringed any right of the plaintiff to the trade-mark or trade-name "Stag" or stag's head design; denied that it now or ever has or ever will compete unfairly with plaintiff anywhere. It also denied that the name "Stag" or stag's head design as used by it was a simulation of any distinctive style of label used by plaintiff, and it denied that it adopted the trade-name of plaintiff or that it had any knowledge of the existence of any such trade-name at the time it originated the name of "Stag" or the use of the stag's head design for its beer. It alleged that its trade-mark "Stag" and stag's head design was registered by it with the Secretary of the State of Minnesota, and registered with the secretaries of the States of Michigan, Iowa and South Dakota, and that under such registrations it had the sole and exclusive right to the use of such trade-mark and trade-name in each of said states.

On the controverted issues the court found substantially as follows: (1) That plaintiff was the owner of certificate of trade-mark registration issued by the Commissioner of Patents of the United States on January 1, 1935, for the trade-mark "Stag" and stag's head for beer; (2) that it was the owner of certificates of label registrations for labels created, designed and used by it on its "Stag" beer, which were copyrighted under the laws of the United States under date March 10, 1908, and June 23, 1936; (3) that plaintiff began to use the trade-mark "Stag" on beer in 1908 and since that time has from time to time sold and advertised its "Stag" beer product in the States of Missouri, Kansas, Arkansas, Oklahoma, Texas, Tennessee, Georgia, Alabama, Mississippi, Louisiana, Iowa, and Illinois; (4) that defendant originated the...