A.J. Krank Mfg. Co. v. Pabst

• Decision Date: 09 December 1921
• Docket Number: 3554.
• Citation: 277 F. 15
• Parties: A. J. KRANK MFG. CO. v. PABST et al.
• Court: U.S. Court of Appeals — Sixth Circuit

277 F. 15

A. J. KRANK MFG. CO. v. PABST et al.

No. 3554.

United States Court of Appeals, Sixth Circuit.

December 9, 1921

J. D Karns, of Columbus, Ohio (G. C. Brown, of Columbus, Ohio, on the brief), for appellees.

Before KNAPPEN, DENISON, and DONAHUE, Circuit Judges.

KNAPPEN Circuit Judge.

Plaintiff manufactures a shaving cream, which it markets under the name of 'Lather Kreem'; its label (which contains the trade-name) being copyrighted. This suit is for alleged infringement of trade-mark and copyright, as well as unfair competition, through the manufacture and marketing by defendants of a shaving cream under the name of 'Twilight Lather Cream.' The appeal brings up for review the decree of the District Court, dismissing the bill for noninfringement and lack of unfair competition.

In our opinion the bill was rightly dismissed, but we prefer to rest our affirmance upon a somewhat broader basis than adopted by the District Court. The plaintiff began the manufacture of its product in the year 1910 according to a secret formula copyrighting its label in the year 1916. The preparation takes the form of a soft paste (stored in tubes or jars) which is applied directly to the face, thus dispensing with brush and cup, and requiring no more rubbing with the fingers than suffices to cover the parts to be shaved.

Setting to one side defendants' contention that the damages suffered and profits made through the alleged infringement and unfair competition are too trifling to justify resort to equity for injunction-- in our opinion the expression 'Lather Kreem,' as applied to plaintiff's product, is purely descriptive, and thus not the subject of a valid trade-mark. But for the word 'Krank's,' the name has no tendency to indicate origin. Shaving creams, and under that specific name, were well known long before 1910. The 1899 edition of the Century Dictionary gives as a secondary definition of cream:

'Any liquid or soft paste of the consistency of cream; as the cream of ale; shaving cream. ' (Lexicographer's italics.)

Moreover, the record specifically mentions three shaving creams as in public use before 1910, viz.: 'Euxesis,' from about 1895, and two others from about 1905. On this branch of the case the only question requiring serious consideration is that presented by plaintiff's contention that the word 'lather' fails of being descriptive by the fact that the preparation contains no soap. But this contention is in our opinion only plausible, at the most. It is true that in its strict sense the term 'lather' presents the thought of:

'Foam, froth or suds made from soap, moistened with water, as by a brush for shaving;' or 'foam or froth formed in profuse sweating, as of a horse. ' Century Dictionary, title 'Lather.'

But the preparation in question is solely a shaving compound. That no ingredient is inserted in the form of soap as such must be accepted, in view of the testimony of plaintiff's president, hereafter referred to.

But that an actual equivalent of soap is absent is by no means satisfactorily established. The formula for the preparation is nowhere given, nor the identity of any ingredient employed. The only testimony on this subject is that of Mr. Krank, plaintiff's president, who, after saying that 'the Lather Kreem shaving preparation does not contain any soap at all,' and while still under examination by plaintiff's counsel, adds:

'There may be some ingredient in it which may be similar to soap-- or may be that way. However, it is not a soap. It is not a lather, strictly speaking. It answers the purpose of a lather; provides a lather.'

His reason for saying that it is not 'really a lather' is:

'Because you can't can a lather. You understand, you can't put a lather in a jar, and leave it in that form, because it would fall in very short order, and therefore you cannot really make a lather in that way. ' ^[1]

This proposition, as applied here, does not impress us. In the first place, the testimony referred to must be considered in connection with the certificate of registration of label, which gives the title 'Krank's Lather Kreem,' as 'for soap or soap lather.' Again, not all shaving creams take the form of lather without the use of brush. As to one of the shaving creams in public use Mr. Krank specifically says:

'You have to put it on with a brush and make a lather with it.'

In the case of one of the others, mentioned above as in public use from about 1905, the directions call for wetting the face with a brush and applying the cream, either to the brush or directly to the face, and then working up the lather. In our opinion, the name 'Lather Kreem' was intended to convey the idea of a shaving cream, which, as furnished, took the form of or provided a lather, and without the use of brush, water, or cup. That idea is emphasized by the slogan upon the label:

'No brush, no cup, no soap, no water. Just apply and shave. ' ^[2]

It is not important whether the 'lather' is 'canned,' or whether it is 'provided' by applying the preparation to a wet face, and distributing it over the face by the fingers. The cream, being a paste, of course contains moisture. The directions say:

'Wet the skin, apply Lather Kreem, wait a minute, and then shave.'

In either case the name 'Lather Kreem' is equally descriptive. We cannot doubt that the user of 'Lather Kreem,' after applying the preparation to his face for shaving purposes, would think his face was 'lathered,' rather than 'creamed,' nor that the manufacturer intended he should so understand. The name 'Lather Kreem' is thus not merely fanciful, suggestive, figurative, metaphorical, or boastful, as is the case with the words 'Holeproof,' 'Wearever,' 'Queen Quality,' 'Imperial,' etc. It is, in our opinion, as distinctly descriptive as the word 'aluminum,' when applied to washboards (American Washboard Co. v. Saginaw Mfg. Co., 103 F. 281, 43 C.C.A. 233, 50 L.R.A. 609), 'computing,' when applied to scales (Computing Scale Co. v. Standard Computing Scale Co., 118 F. 965 ^[1]); 'elastic seam,' as applied to men's underwear (Newcomer & Lewis v. Scriven, 168 F. 621, 94 C.C.A. 77), or 'toasted corn flakes,' when applied to a breakfast food (Kellogg Toasted Corn Flake Co. v. Quaker Oats Co., 235 F. 657, 662, 149 C.C.A. 77).

We think the trade-name tells the whole story, and was designed to do so. It scarcely need be said that the misspelling of the word 'cream' cannot give validity to a name otherwise invalid as a trade-mark. The fact that the name 'Lather Kreem' was new...