Kellogg Toasted Corn Flake Co. v. Quaker Oats Co.

• Decision Date: 03 October 1916
• Docket Number: 2807.
• Citation: 235 F. 657
• Parties: KELLOGG TOASTED CORN FLAKE CO. v. QUAKER OATS CO.
• Court: U.S. Court of Appeals — Sixth Circuit

235 F. 657

KELLOGG TOASTED CORN FLAKE CO. v. QUAKER OATS CO.

No. 2807.

United States Court of Appeals, Sixth Circuit.

October 3, 1916

Frank F. Reed and Edward S. Rogers, both of Chicago, Ill., for appellee.

Before WARRINGTON and KNAPPEN, Circuit Judges, and SATER, District judge.

WARRINGTON Circuit Judge.

The appellant, Kellogg Toasted Corn Flake Company, a Michigan corporation, brought suit against appellee, the Quaker Oats Company, a New Jersey corporation called defendant herein, to enjoin defendant from selling a food product, made from white corn, in cartons bearing the words 'Toasted Corn Flakes,' from using cartons containing such a food product and bearing such words, and from selling the product in the particular cartons which defendant is using. The case was heard finally upon the original bill, filed September 17,1910, and certain amendments thereto, filed August 3, 1912, and answer and proofs, and the bill as amended was in terms dismissed for want of equity. The case is pending here on appeal allowed in the court below, June 29, 1915. The grounds of dismissal are sufficiently shown by two of the assignments of error:

'(4) In finding and holding that the words 'Toasted Corn Flakes,' as applied to the articles in controversy, are a descriptive term and not susceptible of exclusive appropriation.'

'(9) In finding and holding that the evidence in this case shows no effort on the part of defendant to obtain the business of complainant, except only the use of the name 'Toasted Corn Flakes,' and that such name is, in fact, under the evidence so distinguished that there is no probability of confusion or deception arising.'

It is contended for appellant (1) that the words 'Toasted Corn Flakes,' as applied to appellant's food product, constitute a technical, though unregistered, trade-mark; and (2) that assuming, though not admitting, that the words were not susceptible of original and exclusive appropriation as a valid technical trade-mark, appellant has, nevertheless, by long prior and exclusive use of the words, 'in connection with its novel invented article, caused the words in the public mind to acquire a secondary meaning, designating' its 'particular product'; and that defendant has intentionally and unfairly invaded appellant's right, and so is guilty of unfair competition.

The subjects of these issues, the products of the respective parties, are substantially alike and are made in substantially the same way. The basic ingredient of each is white corn grits-- that is, as appellant's counsel say, 'corn with the jacket and germ removed'-- which are steamed in closed vessels, called cookers, and flavored, dried and rolled into flakes (each grit being reduced to a flake), and then subjected to the heat of an oven. Appellant claims, and has presented some testimony to show, that this process produces 'baked,' not 'toasted,' corn flakes; and thus that 'toasted' is a fanciful rather than a descriptive term. The ovens, therefore, involve an important feature of the process. The ovens are large, though indifferently described. It is fairly to be gathered from the evidence that they are each approximately 30 feet long, 25 feet high and 9 feet wide; that each is equipped inside with a series of metal belts, called shelves, about 25 feet in length and 3 feet in width, which are disposed one above another and operated slowly by power, and, presumably, alternately in opposite directions, so as to conduct the flakes (which are fed into the oven upon the top shelf) along each shelf, the flakes falling successively within the control of an apron from the end of one shelf to that of another until they reach and pass over the lower one, where they are discharged from the oven and carried to a point outside and placed and sealed in cartons. The heat maintained in the ovens averages about 450 degrees, Fahrenheit, and is generated at the bottoms of the ovens-- in the appellant's by a furnace, and in the defendant's by gas. The flakes passing through appellant's oven are not exposed directly to the fire of the furnace, but when the flakes carried through defendant's oven reach the bottom belt they are to some extent exposed to the gas flames, since defendant's shelves are made of perforated metal. The time consumed in carrying flakes from the entrance to the exit of defendant's oven is about 20 minutes, and it is to be inferred, though it is not distinctly shown, that practically the same time is used in appellant's oven. The products of both parties are through this treatment more or less browned.

It cannot be doubted that the effect of this process is to toast the corn flakes. In the first place, in our view of the evidence, it is not open to appellant to claim that, as applied to its product, the word 'toasted,' when considered either alone or in combination with the words 'corn flakes,' is a fanciful or arbitrary word. The appellant and its predecessors have manufactured this product in this way and have described the product by these words ever since 1898. It will serve to clarify the subject by alluding to the different companies which have been organized by the Kelloggs, and to some advertising matter which has been given widespread circulation in placing the product upon the market. The first two companies so organized were named, respectively, the Battle Creek Sanitarium Company and the Sanitas Nut Food Company, and were owned and controlled by Dr. Kellogg and his brother, W. K. Kellogg; the first-named company being organized in 1897, and the latter in 1899, though this one would seem to have been a partnership association until 1903, when it was incorporated. The Sanitarium Company manufactured cereal products and also acted as selling agent for the Sanitas Company, selling for the latter, among other products, 'Toasted Corn Flakes.' This plan was continued until 1906, and in March of that year Dr. Kellogg sold the exclusive right to make and sell 'Toasted Corn Flakes' to the Battle Creek Toasted Corn Flake Company, which was organized in February of that year; and in July, 1907, this sale was confirmed by the Sanitas Company. The Sanitas Company, however, continued to make other cereal products until at least 1912. The name of the Battle Creek Toasted Corn Flake Company was changed in May, 1907, to that of Toasted Corn Flake Company, and in May, 1909, the name was again changed to that of appellant, and, notwithstanding these changes in corporate name, W. K. Kellogg appears to have been the president of the company throughout, and to have signed the original bill. The features of advertising matter put out by these companies, including appellant, which for present purposes sufficiently illustrate the understanding of these companies and the persons controlling them that the process resulted in toasting the corn flakes, may be seen in the following:

'They are so nourishing and easily digested; so scientifically cooked and toasted. ' 'Properly cooked, flaked and toasted.' 'The flakes are exceedingly light, thin, crisp and tender, toasted just enough. ' 'Rolled into thin flakes and toasted at a very high temperature. ' 'So delightfully and tastily toasted.' 'Light crisp flakes of toasted corn that melt in your mouth-- rolled into film flakes and then toasted to a tempting golden brown. ' 'A good corn recipe: Select choicest White Indian corn; flake each kernel so that flakes are as thin as writing paper; place flakes in baking pans and toast slowly in oven. ' 'Toasted corn flakes are scientifically cooked and then toasted to a delicate brown.'

And in an advertisement bearing apparently a facsimile of the signature of the president of appellant this is found:

'There is a secret in preparing Kellogg's Toasted Corn Flakes-- a secret of toasting, blending and flaking 'the sweetheart of the corn' that other foods have never been able to copy.'

These interpretations of the process of producing this food derive emphasis from the fact that the same interpretations are found in the advertising matter put out in respect of the patented product and process which were embodied in patent No. 558,393, issued to Dr. Kellogg, April 14, 1896, for 'a certain new and useful alimentary product and process of making the same,' and assigned by the patentee to the partnership association doing business as the Sanitas Food Company. True, Judge Wanty held the patent invalid, and his decree dismissing the bill was affirmed by this court in Sanitas Nut Food Co. v. Voigt, 139 F. 551, 71 C.C.A. 535; true, also, as counsel for appellant say, the word 'toasted' was not found in the specification or claims of that patent. It is, however, noteworthy that in commenting upon 'granose flakes,' as the food was there called, Judge Wanty said that:

'Bread crusts, toast, zwieback and shredded wheat biscuits are the same product, containing every element of granose flakes, and only differing from them in form and degree.'

Another fact to be observed is that the patented process was in substance and effect the same as the present process, which we have already described. Still in their interpretation of the patented process appellant's predecessors considered it as involving 'flaking and toasting,' and in the recipe in part before set out, containing the statement 'place flakes in baking pans and toast slowly in oven,' it was stated by appellant over its former corporate name, Toasted Corn Flake Company, and as late as October, 1908:

'You won't be able to prepare corn in this way unless you buy our patented machinery and process, but you can buy Sanitas Toasted Corn Flakes at your grocers.'

If it were necessary to add anything to the foregoing, we think it might be affirmed to be common knowledge that placing corn flakes such...