Layton Pure Food Co. v. Church & Dwight Co.

• Decision Date: 19 September 1910
• Docket Number: 3,348.
• Citation: 182 F. 35
• Parties: LAYTON PURE FOOD CO. v. CHURCH & DWIGHT CO.
• Court: U.S. Court of Appeals — Eighth Circuit

182 F. 35

LAYTON PURE FOOD CO. v. CHURCH & DWIGHT CO.

No. 3,348.

United States Court of Appeals, Eighth Circuit.

September 19, 1910

Syllabus by the Court

Baking soda and baking powder are in the same class, and the use of a trade-mark for the former on the baking powder of a manufacturer other than that of the owner is an infringement.

After one has acquired a trade-mark for one member of a class of goods, in this instance baking soda, another may not acquire the same trade-mark for another member of the class, in this case baking powder, although the former has not applied the trade-mark to that member.

But a suit for injunction against future infringement of a trade-mark is not subject to the general rules of laches and the statute of limitations because repeated or continuous infringements establish no right to continue them, and mere delay in bringing suit to enjoin them does not prove an abandonment of his rights by an owner of a trade-mark, or an estoppel from preventing subsequent infringement.

E. E Huffman and A. C. Fowler, for appellant.

Paul Bakewell and Luke E. Hart (Brown & Seward, on the brief), for appellee.

Before SANBORN and VAN DEVANTER, Circuit Judges.

SANBORN Circuit Judge.

This is an appeal from a decree which enjoins the Layton Pure Food Company, the defendant below, from infringing the trade-mark of the Church & Dwight Company, which consists of the representation of a cow which was registered in 1876, No 3,884, and again in 1883, No. 10,118, by John Dwight & Co. the predecessor in interest of the complainant, as 'a distinguishing mark for our baking soda, saleratus and baking powder. ' In the facsimile of the label which accompanies the declaration for the first registration the picture of the cow appears inclosed in an annular band upon which are printed the words 'John Dwight & Co., Soda.' On October 30, 1900, the complainant, a corporation which succeeded John Dwight & Co., registered the annular band as its trade-mark for the same goods, No. 35,359, and at various times it claimed and registered other trade-marks for these goods some of which are described in the opinion in the case between these parties for the infringement of the trade-mark in the representation of the annular band which is filed herewith. There is no material difference in the titles to the trade-mark for the picture of the annular band and that for the picture of the cow. The titles to both are founded upon an adoption in 1876 and a use by John Dwight & Co. thereafter until 1896, when the complainant succeeded them and an adoption by the complainant in 1896, and its subsequent use of them. The only difference in the use by the defendant is that it commenced to use the picture of the cow in 1894 and the picture of the annular band in 1897.

There are two defenses, conditioned by evidence that does not differ materially, that are common to both suits. They are: (1) That a party can have but a single trade-mark for the same class of goods, and that, as John Dwight & Co. used each of these trade-marks in association on the same labels with other devices and trade-marks, some of which they or the complainant registered, they and it abandoned and thereby lost their right to the trade-marks in suit; and (2) that the complainant without giving notice of the assignment of the trade-mark to it has used continuously the name John Dwight & Co. on some of its labels, although it succeeded that firm in 1896, dismantled its factory in New York City, and thereafter made its products at Solvay, near Syracuse, N.Y., and although John Dwight died more than four years before the bill in this suit was filed. For the reasons which have been stated at some length in the opinion regarding the infringement of the trade-mark in the annular band, these defenses cannot be sustained. There remain for consideration the contentions that there was no infringement of the trade-mark in the cow and that the complainant was guilty of laches fatal to this suit.

While the colors, words, and devices other than the representation of the cow upon the labels of the defendant differ from those upon the labels of the complainant, the picture of the cow is so dominant and striking a feature of the labels of each that a look at them is an ocular demonstration that the use of this picture on the labels of the defendant is well calculated to induce purchasers, exercising such care as buyers ordinarily use, to buy the articles offered under it in the belief that they are those of the same class made by the complainant, and the defendant cannot escape infringement on account of the difference in the dress of the goods. McLean v. Fleming, 96 U.S. 245, 251, 24 L.Ed. 828; Kann v. Diamond Steel Co., 89 F. 706, 711, 32 C.C.A. 324; Walter Baker & Co. v. Puritan Pure Food Co. (C.C.) 139 F. 680, 682; Walter Baker & Co. v. Delapenha (C.C.) 160 F. 746, 750.

But the evidence is convincing that the complainant's use of the picture of the cow was practically limited to baking soda, while the defendant's use of it was restricted to baking powder, and counsel argue that these articles are in different classes, so that a trade-mark for one manufacturer for baking soda is not infringed by its use by another manufacturer for baking powder, and that, while the complainant has a trade-mark in the picture of the cow for baking soda, the defendant has acquired one in this picture for baking powder. Upon the question whether the articles are in the same class or in different classes the witnesses directly contradict each other; but these pertinent facts were well established by the evidence. Baking soda and baking powder are used to leaven or raise dough in making bread. The active principle of each is bicarbonate of soda or baking soda. It is necessary to add some suitable acid, such as lactic acid, cream of tartar, acid phosphates, or alum to bicarbonate of soda to set its leavening power at work, and baking soda is an article to which such an acid must be added in order to raise the dough to make the bread. Baking powder contains, mechanically mixed together, the bicarbonate of soda, some suitable acid to set its leavening power at work, and a filler or dryer. Baking soda and baking powder are both put up and sold in the form of a powder, and they are both used to make bread. The demand for baking soda is diminished by the use of baking powder, and the demand for baking powder is diminished by the use of baking soda. The filler commonly used to make baking powder is cornstarch, and baking powder is almost exclusively used in the household for making bread, while baking soda is also used to correct the acidity of milk, vegetables, a sour stomach, or indigestion, uses to which baking powder may not be applied.

The general rule of law upon this subject is that the owner must have used his trade-mark on the same class but not necessarily on the same species of goods as the alleged infringer in order to entitle him to its protection against infringement. Paul on Trade-Marks, Sec. 202, and cases there cited. The issue here really harks back to the fundamental question that conditions every disputed infringement of a trade-mark, viz.: Is the defendant's use of the mark calculated to induce a purchaser exercising such care as buyers commonly use to purchase the goods of the defendant in the belief that they are those of the complainant? The Church & Dwight Company owned its trade-mark of the picture of the cow, and it had the right to its exclusive use on its baking soda to the full extent of the business it had acquired or could acquire therein. The use of that mark on baking soda or any article of its class manufactured by another in such a way as is calculated to diminish the complainant's business or restrict its trade by inducing purchasers to buy the article to which the mark is affixed, in the mistaken belief that that article is the product of the complainant, is necessarily an infringement of that right as well as a deception of the buyers. The facts that baking soda and baking powder are generally purchased and used for the same purpose, that the sale and use of one for the common purpose diminishes the sale and use of the other, and that the active element of each is the same, lead our minds to the conclusion that they must be in the same class, that the application of the complainant's trade-mark for baking soda to the baking powder made by another is calculated to induce purchasers to buy it as the product of the complainant, and that it is an infringement of its trade-mark. This decision has not been reached without a careful consideration of the argument of counsel for the defendant to the contrary, of their earnest contention that, inasmuch as the complainant has never used its picture of a cow on baking powder, it was and is without right so to use it, and that the defendant through its later and exclusive use of this mark on baking powder alone had acquired a common-law trade-mark in it for use upon that article and of the cases which they cite in support of these positions. Filkins v. Blackman, 13 Blatchf. 440, 9 Fed.Cas.pp. 50, 52, No. 4,786; Independent Baking Powder Co. v. Boorman (C.C.) 175 F. 448, 455, and Celluloid Mfg. Co. v. Read (C.C.) 47 F. 712. But the conclusion we have reached seems to us to be not only right, but supported by the better reasons and the more persuasive authority.

In Collins Co. v. Oliver Ames & Sons Corporation (C.C.) 18 F. 561, 570, Collins & Co. was a corporation of Connecticut authorized to manufacture all articles of metal. It had made and sold in the United States and in Australia axes hatchets, broadaxes, picks, and hoes which it had stamped with name 'Collins & Co.' until it had acquired a right to be protected in the...