Griggs, Cooper & Co. v. Erie Preserving Co.

• Decision Date: 05 July 1904
• Docket Number: 199.
• Citation: 131 F. 359
• Parties: GRIGGS, COOPER & CO. v. ERIE PRESERVING CO.
• Court: U.S. District Court — Western District of New York

131 F. 359

GRIGGS, COOPER & CO. v. ERIE PRESERVING CO.

No. 199.

United States Circuit Court, W.D. New York.

July 5, 1904

Macomber & Ellis, for defendant.

HAZEL District Judge.

This is a bill in equity to restrain the defendant from using the words 'Home Comfort' as a trade-mark placed on canned fruits, jellies, and sauces. The complainant's trade-mark consists of the arbitrary words 'Home Brand' for the same vendible commodity. The case was heard on the pleadings and an agreed statement of facts. The question of jurisdiction, which was raised, must therefore, be determined from those papers. The allegation of diversity of citizenship between complainant and defendant both of which are corporations, is not denied. Complainant's business is that of wholesale grocer at St Paul, Minn. Defendant is a manufacturer of canned vegetables and fruits as Buffalo, N.Y., with trade connections throughout the United States. The amount in controversy, according to the bill, exceeds the sum of $2,000. The record does not specify the amount of damages sustained by the orator, and no claim to recover any amount was asserted on the hearing. The actual value of the orator's common-law rights to the trade-mark is not specifically stated or proved. Neither is it averred in the bill that its trade-mark will be destroyed by defendant's unlawful use thereof. Hence the objection is urged that the court is without jurisdiction. This point will first be briefly considered. It is not necessary that the amount of actual damages sustained be proved for this court to retain jurisdiction and decide the question of infringement. It is enough that the parties are citizens of different states, and that irreparable damage may be sustained by a continuance of the alleged wrongful acts of the defendant. The value of the object to be gained by a bill in equity is the test of jurisdiction. The injury from which relief is sought is the wrongful appropriation and infringement by defendant of complainant's arbitrarily selected word 'Home' as a trade-mark. The remedy invokes the restraining power of the court. To restrain and enjoin future trespasses upon property rights in a proper case is one of the privileges conferred upon a court of equity, and the value derived from the exercise of such power is often difficult of ascertainment. Symonds v. Greene (C.C.) 28 F. 834; Johnston v. City of Pittsburg (C.C.) 106 F. 753; American Fisheries Co. v. Lennen (C.C.) 118 F. 869; Gannert v. Rupert (C.C.A.) 127 F. 962. The objection that the court is without jurisdiction is therefore overruled.

The record shows that in the year 1889 complainant's predecessor, Griggs, Cooper & Co., a partnership, manufactured and sold articles of merchandise, consisting of canned jellies, fruits, and sauces, under a common-law trade-mark 'Home Brand.' Except as hereinafter stated, such use and appropriated right has continued uninterrupted from that time, and on August 17, 1898, a trade-mark consisting of the arbitrary word 'Home' was reregistered (No. 31,881) by complainant in the office of the United States Commissioner of Patents. The original registration was for the words, 'Home Brand.' Soon afterwards complainant learned that Fry & Co., a Pennsylvania corporation, were the first to use and adopt a trade-mark 'Home Brand' as a distinctive mark of identification for the manufacture and sale of canned jellies, fruits, etc. Such prior appropriation was dated some time in the year 1877. Accordingly, on June 9, 1900, complainant, by written assignment from Fry & Co., acquired an exclusive right to use the previously adopted marks 'Home Brand' and 'Home,' as specifically appropriated within certain territory comprising the states of Minnesota, Wisconsin, North Dakota, South Dakota, and Montana. The trade-marks mentioned and previously appropriated by Fry & Co. in the manner stated were registered in the office of the Commissioner of Patents. Their numbers are 51,130, registered September 4, 1877, and 11,850, reregistered January 6, 1885. The specification of the reregistered mark declares that the essential feature of the trade-mark 'Home Brand' is the word 'Home.' The assignment from Fry & Co. to the complainant was in the following words:

'And the said party of the first part for itself and its successors, does hereby grant, license, assign and set over unto the said parties of the second part, and their successors in business the absolute and exclusive use of all and singular the hereinbefore mentioned trade-marks dated July 6, 1885, and March 29, 1892, and numbered respectively, 11,850, and 20,913, and all benefits and advantages to be derived therefrom and enjoyed therewith, in and to the several states of Minnesota, Wisconsin, North Dakota, South Dakota and Montana, but in no other place or places whatsoever, such absolute and exclusive use to be held and enjoyed by the said parties of the second part for their own use and behoof, but during such time only as they and their successors shall continue in business, as fully and entirely as the same would have been held by the said party of the first part had this agreement not been made: provided, however, and it is hereby further

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