Loughran v. Quaker City Chocolate & Confectionery Co., Inc.

• Decision Date: 23 February 1924
• Docket Number: 3001.,3000
• Citation: 296 F. 822
• Parties: LOUGHRAN et al. v. QUAKER CITY CHOCOLATE & CONFECTIONERY CO., Inc. QUAKER CITY CHOCOLATE & CONFECTIONERY CO., Inc., v. LOUGHRAN et al.
• Court: U.S. Court of Appeals — Third Circuit

296 F. 822

LOUGHRAN et al. v. QUAKER CITY CHOCOLATE & CONFECTIONERY CO., Inc.

QUAKER CITY CHOCOLATE & CONFECTIONERY CO., Inc., v. LOUGHRAN et al.

Nos. 3000, 3001.

United States Court of Appeals, Third Circuit.

February 23, 1924

Joshua R. H. Potts, of Chicago, Ill. (George B. Parkinson and Brayton G. Richards, both of Chicago, Ill., on the brief) for Loughran and others.

Before BUFFINGTON, WOOLLEY, and DAVIS, Circuit Judges.

WOOLLEY Circuit Judge.

These cross-appeals are from a decree entered by the District Court in a suit in equity brought by Christine M. Loughran and Christian W. Reiher against the Quaker City Chocolate &amp Confectionery Company, Inc., to enforce their claimed right to registration of a trade-mark and to compel cancellation of certain trade-mark registrations previously allowed the defendant.

In July, 1918, Christine M. Loughran (then Christine M. Kernan) filed an application in the United States Patent Office for registration of the words 'Quaker Maid' as a trade-mark for candies, claiming use of this mark since October, 1913. Following an ex parte prosecution the Commissioner of Patents passed the application for publication in the Official Gazette. Trade-Mark Act of February 20, 1905, Sec. 6, 33 Stat. 724 (Comp. St. Sec 9491). After publication, the Quaker City Chocolate & Confectionery Company filed a notice of opposition based upon prior use of its several marks. Issue was joined and testimony taken. The case was then presented to the Examiner of Trade-Mark Interferences. That official sustained the opposition, but on appeal the Commissioner of Patents reversed his decision. From the Commissioner's decision favoring registration the Chocolate Company prosecuted an appeal to the Court of Appeals of the District of Columbia. That court reversed the Commissioner of Patents and directed rejection of the Kernan (Loughran) application. Quaker City C. & C. Co. v. Kernan, 51 App.D.C. 283, 278 F. 592. Loughran, with Reiher who had acquired an interest in the trade-mark, then brought this action in the District Court under section 4915 of the Revised Statutes (Comp. St. Sec. 9460) for the twofold purpose of compelling the registration of their trade-mark and the cancellation of the trade-marks of the Chocolate Company. The District Court adjudged the plaintiffs entitled to registration but dismissed that part of the bill by which they sought cancellation of the defendant's registrations. Loughran v. Quaker City C. & C. Co. (D.C.) 286 F. 694. The defendant below, hereinafter referred to as defendant, appealed from the first part of the decree and the plaintiffs below, hereinafter referred to as plaintiffs, appealed from the second part. This is the history of the litigation. The story of the case is as follows:

On different dates between November, 1891, and April, 1906, being dates in some instances prior to the use and in all instances prior to the registration of the trade-marks here in contest, Doniphan & Co. of St. Joseph, Mo., adopted and used the word 'Quaker' and various representations of persons in Quaker costume in its candy business. Trade-mark registrations were allowed Doniphan & Co. as follows: One in 1891, use claimed since October 1, 1890, showing a picture of a Quaker maid with the words 'Quaker Brand'; another in 1895, showing a bust picture of a Quaker man and the word 'Quaker,' claiming use since September 30, 1890; another in 1905, showing a different picture of a Quaker maid with the words 'Quaker Brand,' claiming use since October 1, 1890; still another in 1906, showing a bust picture of a Quaker man with the word 'Quaker,' and claiming use since October 30, 1890.

In 1893, the defendant assumed the corporate name 'Quaker City Chocolate & Confectionery Company' and, evidently without knowledge of the trade-mark registrations of Doniphan & Co., attached labels to its candies bearing the words 'Quaker City' and the picture of a man in Quaker costume. On November 13, 1906, the defendant obtained the registration of the main characteristics of this label as trade-marks. No. 57,604 and 57,605. In their commercial use they are combined in a strip, bright red in color, having the words 'Quaker City' prominently displayed at opposite ends in white script letters and containing in the center a gold seal bearing the picture of a Quaker man. Above the seal appears the words 'Gold Seal Brand' and below the seal the words 'Trade-mark.' These trade-marks are used mainly, if not entirely, on penny specialties and constitute, the defendant claims, a valuable good will asset in a business that has grown through the years to very large proportions.

In using its trade-marks, however, the defendant has not confined itself to their precise words and figures, but, being entitled to the whole, it conceived it was equally entitled to their parts, and, so, broke them up and freely adopted the single word 'Quaker'-- the capital word or catch word of the marks-- in wrapping and advertising its candies, using such expressions as 'Quaker Brand,' 'Quaker Chips,' 'Quaker Kisses.' In one instance, and in only one so far as the record shows, the words 'Quaker Kisses' were accompanied with the picture of a Quaker woman or maid dressed in Quaker costume.

In October, 1912, Loughran first used the words 'Quaker Maid,' evidently without knowledge of the previous use by Doniphan & Co. or of the close use by the defendant in the instance mentioned. Her business started in a small way and has not greatly expanded. She manufactured her own candies and put them up and sold them in a plain white box with a picture of a Quaker woman and the words 'Quaker Maid' in script letters positioned diagonally across the top in a form practiced very generally by dealers who sell candies in pound boxes. In 1915, Loughran decided to register her trade-mark. A preliminary search disclosed the trade-marks of both Doniphan & Co. and the defendant. This, it is alleged, was her first knowledge of them, and in view of Doniphan & Co.'s registrations, she decided not to prosecute her application. Later, however, she learned that Doniphan & Co. had discontinued business. Upon verifying this information and regarding the trade-marks of Doniphan & Co. as being abandoned and therefore susceptible of valid appropriation by any one (Paul on Trade-Marks, Sec. 101; Rice-Stix Dry Goods Co. v. Schwarzenbach-Huber Co., 47 App.D.C. 249, 250; Mayer F. & J. Co. v. Virginia-Carolina Chem. Co., 35 App.D.C. 425, 429)8 she made application as the first taker on July 6, 1918, for the registration here in controversy, and thereupon this litigation began.

On the facts, which are not in dispute, the defendant has raised several questions of law. The first is whether the District Court had jurisdiction under section 4915 of the Revised Statutes to adjudge the plaintiffs entitled to the registration they seek. Since these appeals were taken that question has been removed from the case by the decision of the Supreme Court in American Steel Foundries v. Commissioner of Patents, 262 U.S. 209, 43 Sup.Ct. 541, 67 L.Ed. 953, sustaining the jurisdiction of District Courts in cases involving the registration of trade-marks.

The next question is whether the plaintiffs are entitled as matter of law to registration of their trade-marks. This depends upon a variety of considerations. In approaching this question we are moved to express hesitation in reviewing and indirectly reversing the action of the Court of Appeals of the District of Columbia in a matter peculiarly within the province of that court. While technically a bill in equity under section 4915 of the Revised Statutes is an action de novo (Butterworth v. Hoe, 112 U.S. 50, 5 Sup.Ct. 25 28 L.Ed. 656; Appert v. Brownsville P.G. Co. (C.C.) 144 F. 115, 117), it is, nevertheless, in effect, a suit to set aside a judgment made by the Court of Appeals of the District of Columbia within its special jurisdiction (Morgan v. Daniels, 153 U.S. 120, 14 Sup.Ct. 772, 38 L.Ed. 657). Yet, as the cited statute extends a litigant's remedy beyond that court to the district court and, by appeal, to the circuit court of appeals, a question of this kind, when it reaches the latter courts, must there be considered and determined on its merits. We make this observation, however, that in a case for the registration of a trade-mark, the law applicable to patents where priority of invention is involved is equally...