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

• Decision Date: 19 September 1910
• Docket Number: 3,347.
• Parties: LAYTON PURE FOOD CO. v. CHURCH & DWIGHT CO.
• Court: U.S. Court of Appeals — Eighth Circuit

182 F. 24

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

No. 3,347.

United States Court of Appeals, Eighth Circuit.

September 19, 1910

Syllabus by the Court

A manufacturer or dealer may secure the right to be protected in the exclusive use of as many separate trade-marks as he first adopts and then so continuously uses that they clearly become to purchasers and those who intend to purchase distinguishing marks of the origin and character of the goods he makes or sells.

It is no defense for a continuing infringer that others who had renounced their claim or right to use the trade-mark or have conveyed it to the complainant formerly infringed the right of its owner.

It is the province and right of the owner and not of the infringer of a trade-mark to select and adopt it, and the fact that he uses with it other symbols or words which he does not adopt as a part of that trade-mark does not deprive him of the right to it.

It is no defense to a continuing infringement of a trade-mark that previous to the infringement a third party claimed or acquired the exclusive right to use the trade-mark which he abandoned by nonuser, or by assignment without his business or its good will, years before the present infringement.

When the chief effect of an assigned trade-mark is to point out by name the orginal manufacturer of the article and the original place of its manufacture, courts refuse relief to the assign who uses such a trade-mark upon goods made by himself at a different place without giving notice of the assignment under the rule that 'he who comes into equity must come with clean hands.'

The owner of a trade-mark is not chargeable with laches for a failure to prosecute an infringer before he knows or has such notice as would lead an ordinarily prudent person to inquire and learn the existence of the infringement. It is not his duty to search out and discover it because the presumption is that parties will abide by the law and respect his rights.

The test of the infringement of a trade-mark is the affirmative answer to the question: Is the device used by the defendant likely or calculated to induce purchasers using such care as buyers ordinarily exercise to purchase the articles to which it is affixed in the belief that they are the articles made or sold by the owner of the trade-mark?

Infringement of a common-law or technical trade-mark is a continuing trespass upon the property of its owner, and he is entitled to an injunction to suppress it whether the infringement was or is intentional or not, and whether it was or is injurious or not. Intent and damage are immaterial.

In determining the question of the infringement of a trade-mark the evidence of the eyes is more persuasive and satisfactory than any other.

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, a corporation, the defendant below, from infringing the trade-mark of the Church & Dwight Company, which consists of the picture of an annular band colored in gilt, red, blue, or any other color. In their pleadings and evidence both parties conceded that such a band was the proper subject of a trade-mark, and the disputed questions relate to title and infringement. The complainant is a corporation which succeeded in 1896 to the property, business, good will, and trade-marks of John Dwight & Co. and Church & Co., two partnerships that had long been engaged in the business of manufacturing and selling baking soda, saleratus, and baking powder. In 1876 John Dwight & Co. commenced to use, and thereafter continuously used until they were succeeded by the complainant, the picture of the annular band in various colors upon its packages of baking soda and baking powder to indicate their origin and their manufacturers. In 1879 Church & Co. commenced to use, and continuously thereafter used until they were succeeded by the complainant, a like picture of the annular band on their packages of baking soda and baking powder for the same purpose. The members of these two partnerships were relatives. They all became stockholders of the complainant in 1896 when it was organized, and since its organization it has used this annular band upon some of its packages to indicate the origin, the manufacturer, and the character of its baking soda and baking powder.

The defendant was incorporated in 1901. It succeeded to the business and property of the Pure Food Company, a partnership, engaged in the manufacture and sale of baking soda. That partnership in 1897 placed a picture of an annular band around the word 'Quick' upon their labels, and this band has been used since that since that time by them and by their successor, the defendant, in connection with other words and pictorial representations upon some of the packages containing their baking soda.

On October 30, 1900, the complainant registered the picture of this annular band as its trade-mark, No. 35,359, and claimed in its declaration that it and its predecessors had used it as such since 1869. It subsequently registered this band in specific colors as its trade-mark on January 8, 1907, No. 59,574; on January 15, 1907, No. 59,817; on February 5, 1907, No. 60,407; and on August 21, 1906, No. 55,665. The defendant never registered this band as its trade-mark. The picture of this annular band was not used alone upon any of the packages of the complainant, of its predecessors in interest or of the defendant. On the other hand, it was used in association with the names of the respective manufacturers and with other words and symbols which they imprinted upon the packages containing their products. Thus in 1876 John Dwight & Co. registered 'the representation of a cow' No. 3,884 as a 'distinguishing mark for our baking soda, saleratus, and baking powder. ' In the facsimile of the label which accompanies the declaration the picture of the cow appears inclosed in an annular band upon which are printed the words 'John Dwight & Company, Soda.' On May 5, 1896, John Dwight & Co. registered the words 'Cow Brand' as their trade-mark, No. 28,224, and stated in their declaration that these words 'generally have been arranged as shown in the accompanying facsimile, in which it appears with the pictorial representation of a cow on a circular border inclosing such pictorial representation; but the latter and its border may be altered or omitted without materially altering the character of our trade-mark, the essential feature of which is the name 'Cow Brand.' ' On January 26, 1897, the complainant registered the representation of an arm and hammer, No. 29,518, and declared that this trade-mark had 'generally been arranged as shown in the accompanying drawing,' where it appeared inclosed in an annular band on which were printed the words 'Church & Co.'s Soda,' but that, 'the words used in connection with the trade-mark may be changed, or omitted, or arranged in different ways without materially altering the character of said trade-mark the essential feature of which is the representation of an arm and hammer. ' On March 28, 1899, No. 32,643, it registered the representation of a sleighing party; on March 28, 1899, No. 32,644, the picture of a bull dog's head; on February 26, 1901, No. 35,962, the picture of the moon's disk partly covering the sun's disk; on April 23, 1901, No. 36,290, the representation of a circle cut by a triangle; and on November 27, 1906, No. 57,849, the representation of a hand pointing to a star and above it the word 'Zenith.'

The first contention of counsel for the defendant is that one may have but a single trade-mark, and that as John Dwight & Co. registered as their trade-mark the picture of a cow in 1876 and the complainant in 1896 registered the representation of an arm and hammer, they thereby abandoned the picture of the annular band which appears in the drawings accompanying their declarations in the two registrations just recited, and the predecessors of the defendant were therefore free to appropriate that band in 1897, when they placed it upon their packages. But in 1897, when the defendant first used it, the complainant and its predecessors in interest had been using it to mark the origin of their products for more than 20 years. The complainant had succeeded to all the rights of its predecessors and by its continued use had acquired the right to continue the use of this band to indicate both the origin and the character of the articles to which it was applied, and this right had become valuable property. Did John Dwight & Co., or the complainant, lose this property because they also adopted and registered other trade-marks for some of their manufactures? To sustain an affirmative answer to this question counsel cite Pittsburgh Crushed Steel Co. v. Diamond Steel Co. (C.C.) 85 F. 637, 638; but the question here in issue was not presented for decision by the pleadings and claims of the parties in that case, and the remark regarding it was casual rather than authoritative. Richter v. Anchor Remedy Co. (C.C.) 52 F. 455, 458. But that case is not in point because the complainant had not acquired, as had the Church & Dwight Company in this suit, a common-law right to the exclusive use of the trade-mark in controversy as against the defendant before the latter commenced to use it. Richter v. Reynolds, 59 F. 577, at page 579, 8 C.C.A. 220, 222; Albany Perforated Wrapping Paper Co. v. John Hoberg Co. (C.C.) 102 F. 1579 But while there is no doubt that one cannot sustain claims to numerous trade-marks for a single article when these marks tend to produce confusion in the trade and fail to...