King Pharr Canning Operations v. Pharr Canning Co.

• Decision Date: 13 June 1949
• Docket Number: Civ. No. 777.
• Citation: 85 F. Supp. 150
• Parties: KING PHARR CANNING OPERATIONS, Inc. v. PHARR CANNING CO., Inc.
• Court: U.S. District Court — Western District of Arkansas

85 F. Supp. 150

KING PHARR CANNING OPERATIONS, Inc. v. PHARR CANNING CO., Inc.

Civ. No. 777.

United States District Court W. D. Arkansas, Fort Smith Division.

June 13, 1949.

COPYRIGHT MATERIAL OMITTED

Beekman Aitken, New York City, Cecil R. Warner of Warner & Warner, Fort Smith, Ark., for plaintiff.

Byrne A. Bowman, Oklahoma City, Okl., Hardin, Barton & Shaw, Fort Smith, Ark., for defendant.

JOHN E. MILLER, District Judge.

Discussion.

Defendant asserts that the trademark "King Pharr" being merely the name of a deceased person in simple block letters, not printed in a distinctive manner, is invalid, and that defendant has suffered damage by the purported registration. Validity of a trade-mark and proper registration, plaintiff's mark was registered under Act of 1920, 41 Stat. 533, are not synonymous, and in fact, the registration by plaintiff in 1945 was a mere formality so far as the merits of this case are concerned and did not purport, and plaintiff does not so contend, to establish the validity of "King Pharr" as a trade-mark.

The Court is of the opinion that the registration under the Act of March 19, 1920, was valid. Armstrong Paint & Varnish Works v. Nu-Enamel Corp. et al., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195. However, since, in the final analysis, plaintiff is insisting upon an injunction, a remedy available at common law in a proper case, and not upon any relief given by and existing solely by virtue of the Act of March 19, 1920, it is immaterial on the question of validity as to whether the registration was proper, since validity is not determined or affected thereby.

In addition to diversity of citizenship and jurisdictional amount, the registration, proper or improper, and the claim thereunder is sufficient to give the Court jurisdiction of the claim of trade-mark infringement and unfair competition. Armstrong Paint and Varnish Works v. Nu-Enamel Corp. et al., supra; Title 28 U.S. C.A. § 1338.

"King Pharr", before the man by that name entered the canning business, was the name of an individual and as such was not available for appropriation as a valid trade-mark. At that time the only significance attached to it was that it was the name of the man. However, over a long period of years, because of its use in trade, the name has acquired a new meaning or a secondary significance, so that now "King Pharr" identifies, to the public, a product in the market and its source. The purchasing public has long since forgotten, if it ever knew, the man. Therefore, the plaintiff, in using "King Pharr" as its mark, has acquired a valuable right, and it is entitled to appeal to this court for the protection of that right. See, for cases involving "secondary meaning": Armstrong Paint and Varnish Works v. Nu-Enamel Corp. et al., supra; J. A. Dougherty's Sons, Inc., v. Dougherty, D.C.E.D.Pa., 36 F.Supp. 149; Little Tavern Shops, Inc., v. Davis, 4 Cir., 116 F.2d 903; Grocers Baking Co. v. Sigler, 6 Cir., 132 F.2d 498.

The existence of a secondary meaning is a question of fact, and being such, each case must be determined according to its particular facts. In the instant case, "King Pharr" has been used on labels of cans containing vegetables since 1904. True, until 1918 it was used for identification of packer, but since that date up to and including the present, it has been used as a trade-mark. Time is the usual standard but not the exclusive one. Barton v. Rex-Oil Co., 3 Cir., 2 F.2d 402, 40 A.L.R. 424. The period of time during which "King Pharr" has been before the purchasing public, the extensive area of operations (now generally sold in 20 States), advertising in connection therewith, and the normal and natural acquaintance of the public with the mark due to continuous association therewith in the market, combine to establish the secondary meaning of the "King Pharr" mark.

The law of trade-marks is ordinarily inseparably connected with the law of unfair competition, with the former being but a part of the broader filed of the latter. Thus, even though a mark has not been registered or is incapable of becoming a valid trade-mark, because it may not be exclusively appropriated by any one person, still, in a proper case, one may be protected under the law of unfair competition from the acts of another in passing off the latter's goods or business for the goods or business of the former. The protection, of course, runs to the business man or merchant injured and to the public, the protection of the public from such deceitful practices being of primary consideration. Too, there is the underlying principle of promoting honesty and fair dealing. See: Nims, Unfair Competition and Trade-Marks, Volume 1, Chapter 11, page 36, for a discussion of the basis of the action for unfair competition.

Since, in the instant case, the plaintiff's mark has acquired a secondary meaning, it now occupies that favored status under the law, whether trade-mark or unfair competition, which entitles it to the protection afforded by the law. Of course, the extent of that protection varies with the necessities of each case. As stated by the Court in Armstrong Paint & Varnish Works v. Nu-Enamel Corp. et al., supra, 305 U.S. at page 336, 59 S.Ct. at page 202, 83 L.Ed. 195:

"When a name is endowed with this quality (secondary meaning), it becomes a mark, entitled to protection. The essence of the wrong from the violation of this right is the sale of the goods of one manufacturer for those of another."

Thus, whether or not, by acquiring a secondary meaning, a name, otherwise invalid as a trade-mark, becomes valid, the practical result is the same and the same protective relief is accorded under the law of unfair competition, and it is neither necessary nor desirable to split the two in this case.

It is not uncommon for there to be a conflict of principles or "rights" in cases of this sort, and the instant case presents such a conflict. The principal stockholder of defendant, Goodwin Pharr (as appears from the findings of fact he owns all but qualifying shares in the defendant corporation), insists that he is merely using his own name for the conduct of defendant's business and that he is entitled to so do. Assuming at this time that this well recognized right in an individual exists in the defendant corporation, because of its stock ownership, it remains that the right is coupled with a duty not to use the name so as to pass its goods off for those of another with the resulting injury to that other and the deceit of the public, whether the passing off be intentional or the necessary result of selling goods under the name "Pharr". As stated in J. A. Dougherty's Sons, Inc., Distillers, v. Dougherty, supra 36 F.Supp. 151:

"It must be noted, though, that while it is true that every man has a right to use his own name in his business, it is also true that he has no right to use it for the purpose of stealing the good will of another's business. The right to use a name because of its generic signification does not imply a right to use it to destroy good will belonging to another. L. E. Waterman Co. v. Modern Pen. Co., 235 U. S. 88, 35 S.Ct. 91, 59 L.Ed. 142; Vick Medicine Co. v. Vick Chemical Co., 5 Cir., 11 F.2d 33; De Nobili Cigar Co. v. Nobile Cigar Co., 1 Cir., 56 F.2d 324; R. B. Davis Co. v. Davis, D.C., supra, 11 F.Supp. 269. In cases concerned with one's use of his own surname the power of the court is properly directed towards the correcting of an abuse of the right to use a personal name rather than the denial of that right. Howe Scale Co. v. Wyckoff, Seamans, etc., 198 U.S. 118, 136, 25 S.Ct. 609, 49 L.Ed. 972. So, adjudications precluding use of personal names are not properly to be deemed deprivations of rights." See, also: Gamlen Chemical Co. v. Gamlen et al., D.C. W.D.Pa., 79 F.Supp. 622

In this case, when Goodwin Pharr formed the defendant corporation in 1946, he had actual knowledge of the existence of the plaintiff, of the vegetables canned by plaintiff, of the trade-mark "King Pharr", of the labels of plaintiff, of the trade territory of plaintiff, of the canning processes employed by plaintiff, and other matters relating to the business, which a recent partner would have naturally acquired while in the business. With this knowledge, he, as principal stockholder in complete control of the defendant corporation, proceeded to imitate, very closely, the labels of plaintiff, and distribute goods in some or all of the same markets used by plaintiff. From these facts, the logical inference is that defendant deliberately intended to misrepresent and pass off its goods for the goods of the plaintiff. But, aside from fraudulent intent, the result is the same, for the action of the defendant, through Pharr, would necessarily create confusion as to source, deceive the public and injure the plaintiff. This is all that is necessary to entitle the plaintiff to some relief, a showing of actual confusion being unnecessary. Feil v. American Serum Co., 8 Cir., 16 F.2d 88, 90; Queen Mfg. Co. v. Isaac Ginsberg & Bros, Inc., 8 Cir., 25 F.2d 284, 288; Esso, Inc., v. Standard Oil Co., 8 Cir., 98 F.2d 1, 5, 6; Gamlen Chemical Co. v. Gamlen et al., supra.

The form of the relief to be granted in cases of this sort, with conflicting principles, is particularly troublesome. In deciding the case, the Court has no desire to punish the defendant nor does it wish to unduly restrict it in the operation of its business, but since the plaintiff is entitled to relief, that relief should be sufficient to afford protection of its rights to the use of the mark "King Pharr". To hold that this Court may not accord a deserving litigant complete relief, whatever form that relief may take, would be to say that the invoking of the jurisdiction of this Court is a futile and useless thing. Having decided that this defendant may not use the name "Pharr" in unfair competition with the plaintiff or infringe upon the trade-mark of the plaintiff, it...