HP Coffee Co. v. Reid, Murdoch & Co.

• Decision Date: 15 July 1932
• Docket Number: No. 9396.,9396.
• Citation: 60 F.2d 387
• Parties: H. P. COFFEE CO. v. REID, MURDOCH & CO.
• Court: U.S. Court of Appeals — Eighth Circuit

60 F.2d 387 (1932)

H. P. COFFEE CO. v. REID, MURDOCH & CO.

No. 9396.

Circuit Court of Appeals, Eighth Circuit.

July 15, 1932.

Thomas B. Harlan, of St. Louis, Mo. (Roy M. Eilers, of St. Louis, Mo., on the brief), for appellant.

Fred Gerlach, of Chicago, Ill. (Douglas W. Robert, of St. Louis, Mo., on the brief), for appellee.

Before GARDNER, SANBORN, and BOOTH, Circuit Judges.

GARDNER, Circuit Judge.

Reid, Murdoch & Co. brought suit in the United States District Court for the Eastern District of Missouri against H. P. Coffee Company, for the infringement of its registered trade-mark No. 180558, for the trademark "Monarch." The parties will be referred to as they originally appeared in the District Court. 48 F.(2d) 815.

The District Court held (1) that plaintiff's trade-mark, which was registered about 1886, was good and valid, and that it was entitled thereto; (2) that, although certain retail merchants were guilty of acts of unfair competition in selling defendant's products under the name of Monarch, defendant had not connived with them, and hence was not guilty of infringing plaintiff's trade-mark; and (3) that plaintiff by its laches in not earlier bringing suit for infringement was estopped from complaining of defendant's use of the word "Monarch." The District Court therefore dismissed plaintiff's bill of complaint. On appeal to this court, we held (1) that plaintiff had a good and valid trade-mark; (2) that the defendant was responsible for the acts of unfair competition of the retail merchants selling its products, and hence defendant had infringed plaintiff's trade-mark; and (3) that, while plaintiff was not entitled to recover damages because of its laches, it was nevertheless entitled to injunctional relief against the continuing wrong in the violation of its trade-mark and of unfair competition. The decree of the lower court was therefore reversed, and the cause remanded, with directions for further proceedings consistent with the opinion of this court. Reid, Murdoch & Co. v. H. P. Coffee Co., 48 F.(2d) 817, 819. The lower court thereupon entered a decree on the mandate of this court, setting aside its former decree, and adjudging that, "Since prior to the year 1880 and up to and including the present time, the plaintiff, Reid, Murdoch & Co. and its predecessors in title have been continuously vested with the exclusive right and title in and to the word symbol `Monarch' as a trade-mark for certain foods and food products"; that it is now vested with said right and title to said trade-mark which was duly registered March 4, 1924 under No. 180558, for certain foods and food products, including coffee, and plaintiff is now vested with the entire right, title, and interest in and to said registration and the rights secured thereby; that defendant has since about 1907 used the name "Monarch" on packages containing coffee, and said use has been and is an infringement of the said exclusive rights of plaintiff in and to said trade-mark, and constitutes unfair competition in trade; that an injunction issue, enjoining defendant, its officers, servants, employees, and privies, from further infringement upon the exclusive rights of plaintiff, and especially from employing and using, or displaying, the trade-mark or name "Monarch" upon or in connection with any foods or food products, especially coffee, also from publishing or causing to be published or displayed in any manner price lists, labels, or advertisements, exhibiting the word "Monarch," and from in any other manner trespassing upon plaintiff's rights as the owner of the trade-mark.

Defendant thereupon moved the lower court for a modification of the decree, as not being in accordance with the opinion and mandate of this court, setting out in said motion, among other things, that the decree as entered prohibited defendant from using the word as a grade mark, and prohibited it from selling coffee as Monarch in any trade territory where it had sold coffee prior to the registering of plaintiff's trade-mark. The motion for modification was denied, and defendant has appealed from the decree.

Brushing aside generalities, the specific contentions of defendant are (1) that the decree as entered is broader than and inconsistent with the opinion and mandate of this court, in that this court did not vest Reid, Murdoch & Co. with the exclusive right and title in and to the word "Monarch" throughout the United States; (2) that the defendant should not be enjoined from using the word "Monarch" in connection with the sale of its coffee in bulk; and (3) that the defendant should not be enjoined from selling coffee marked "Monarch" in any state or trade territory where it might be able to establish that it in good faith and unaware of plaintiff's trade-mark first sold its coffee and established a reputation therefor as Monarch coffee before plaintiff entered such trade territory and began selling its Monarch coffee therein.

The question to be determined is whether the decree of the lower court goes beyond the mandate. The proceedings taken must, of course, conform to the mandate of this court, and the opinion of the court is...