Henry Heide, Incorporated v. George Ziegler Company, 14924

• Decision Date: 19 November 1965
• Docket Number: No. 14924,14925.,14924
• Citation: 354 F.2d 574
• Parties: HENRY HEIDE, INCORPORATED, Plaintiff-Appellant (Cross-Appellee), v. GEORGE ZIEGLER COMPANY, Defendant-Appellee (Cross-Appellant).
• Court: U.S. Court of Appeals — Seventh Circuit

354 F.2d 574 (1965)

HENRY HEIDE, INCORPORATED, Plaintiff-Appellant (Cross-Appellee), v. GEORGE ZIEGLER COMPANY, Defendant-Appellee (Cross-Appellant).

Nos. 14924, 14925.

United States Court of Appeals Seventh Circuit.

November 19, 1965.

Francis J. Sullivan, New York City, Albert W. Bicknell, Chicago, Ill., Joe E. Daniels, New York City, of counsel, for Heide.

Ira Milton Jones, Milwaukee, Wis., for Ziegler.

Before KNOCH, CASTLE, and SWYGERT, Circuit Judges.

SWYGERT, Circuit Judge.

Both parties have appealed from portions of the district court's judgment in a trademark infringement and unfair competition suit between candy manufacturers.

Henry Heide, Inc., a New York corporation, brought the action against the George Ziegler Company, a Wisconsin corporation. Heide alleged infringement of its registered trademark "Jujyfruits"¹ and unfair competition by Ziegler through the latter's use of the term "Fruit Ju Jus" in connection with the sale of soft gum candies. After Ziegler had discontinued using "Fruit Ju Jus" and began using "Ju Ju Bits," the complaint was amended by adding a second count alleging infringement of another of Heide's trademarks, "Jujubes,"² used to identify its hard gum candies. Ziegler subsequently filed a counterclaim alleging fraud in the procurement of the "Jujubes" registration and unfair competition in the use of the mark so obtained.

The district court held that the "Jujyfruits" registration was valid and that Ziegler's use of "Fruit Ju Jus" infringed the registration and constituted unfair competition. Further use of "Fruit Ju Jus" was enjoined and Heide's damages were set at $7,241.84 by stipulation of the parties. The court dismissed the second count of Heide's complaint, however, holding the registration for "Jujubes" invalid because of the generic nature of the term. The court further concluded that the use of "Jujubes" in connection with the marketing of hard gum candies was "deceptively misdescriptive." Finally, the district judge held that the registration for "Jujubes" had been obtained in good faith and dismissed Ziegler's claim of fraudulent registration.³

I.

The issue presented with respect to the trademark registration for "Jujubes" is whether the district court erred in concluding that "jujubes" is a generic term and as such incapable of valid registration. Heide, the owner of the mark, contends that the evidence is insufficient to establish that "jujubes" is a generic term when used in reference to candy. It further contends that even if it were to concede that "jujubes" has been and is now used generically at the manufacturing level to describe a class of soft, starch gum candies, such use is unknown to the consuming public, which associates the term only with the hard, genuine gum candy manufactured and sold by Henry Heide, Inc. To support this latter contention, Heide points to its extensive consumer-level advertising and sale of its product, and to a survey purporting to establish that seventy-four per cent of the consuming public identifies "Jujubes" as a trademark.

Ziegler, on the other hand, asserts that the record is replete with evidence pointing to the generic use of "jujubes" at both the manufacturing and consumer levels. Ziegler also maintains that proof of generic use at any trade level is sufficient and that a generic term cannot acquire a secondary meaning such as would permit exclusive appropriation.

We have concluded that the record does contain ample support for the finding that "jujubes" is a generic term, and hold that the acquisition of trademark rights in such term is proscribed.

The evidence introduced below over-whelmingly established that candy manufacturers for several decades have used in the trade the term "jujubes" to define a class of gum candy. Indeed, Heide conceded as much at the trial, "in the interest of saving time." We need not decide, however, whether such use among manufacturers and wholesalers of itself precludes exclusive appropriation at the retail level. The generic use of the term "jujube" has clearly not been restricted to those possessing special experience in the candy industry. Such use in consumer advertising and in consumer package labeling was quite extensive at one time. For example, Heide's competitor, Wallace & Co., packaged and sold "`Sa-Yo' mint jujubes" until sometime late in the 1920's. Further, several recipe books evidencing the generic nature of "jujubes" were introduced, at least a few of which are directed to the consuming public. In addition, definitions of "jujube" contained in several English language dictionaries of general use were presented. Many of these publications secondarily define "jujube" in terms of a lozenge flavored to resemble the jujube fruit, while others secondarily define "jujube" merely as a fruit-flavored lozenge or gum drop.⁴ This documentation clearly supports the conclusion that "jujubes" is a generic word defining a type of gum candy at both wholesale and retail levels.

Heide urges this court to respect the presumption of validity which attaches to trademark registration. But such presumption may, of course, be overcome by establishing the generic meaning of a registered mark. Flexitized, Inc. v. National Flexitized Corp., 335 F.2d...