Decision Date10 December 1930
Docket NumberNo. 316.,316.
Citation45 F.2d 94
CourtU.S. Court of Appeals — Second Circuit

Mock & Blum, of New York City (Asher Blum, of New York City, of counsel), for appellant.

William Wallace White, of New York City (Archibald Cox, of New York City, of counsel), for appellees.

Before L. HAND, CHASE, and MACK, Circuit Judges.

MACK, Circuit Judge.

We adopt in substance statement of facts made by the learned District Judge as follows:

"Plaintiff, a Dutch corporation, brought this suit against defendants, who are selling agents in this country of another Dutch concern which manufactures in Holland a confection known as `Frank Rademaker's Hopjes,' in competition with a similar product made by plaintiff under the name of `Rademaker's Hopjes.'

"The complaint sets up two causes of action; one, based upon an alleged infringement of a trade-mark registration of `Rademaker's Hopjes' with specified markings, and the other upon the ground of unfair competition. * * *

"On the fourteenth day of November, 1782, the city of Brussels was occupied by French troops, and Hendrik Baron Hop, the Dutch Ambassador, was ordered to the Hague, where he took quarters in the home of a confectioner and pastry baker by the name of Theodorus Van Haaren. According to tradition, the latter, in an effort to please his distinguished guest, manufactured a hard candy, cut into squares or cubes, made from coffee, sugar and fresh cream. The confection so met the fancy of the Ambassador that he purchased it in considerable quantities for distribution among his friends. So generously and generally did he perform that considerate function that the confection was associated with the name of the Ambassador, and came to be known as `Hopjes' which signified `little Hops.'

"Van Haaren had a daughter who, in 1802, married Pieter Nieuwerkerk, and when the originator of the confection was gathered unto his fathers, the business he had established was continued by his son-in-law. In the century and more that has passed, the Nieuwerkerk family has carried on the manufacture of hopjes, and its product is now on sale in this city (New York). Meanwhile, other manufacturers, attracted by the business, engaged in making hopjes and sold the candy over the counters of their shops.

"As the years went on, a Hollander named Johannes Petrus Rademaker took up the business of a confectioner. His elder son, Franciscus Joseph Maria Rademaker (herein known as Frank Rademaker), became a manager for his father at Scheveningen, Holland. A few years later, a younger son, William Joseph Rademaker, who is now the managing director of the plaintiff, became associated in the business and over the period from 1894 to 1899 he acted as superintendent of his father's factory at Cologne, Germany. Notwithstanding, this portion of the father's business was never transferred to the plaintiff, but remained the property of the founder of the house.

"In 1896, or thereabouts, the Rademaker concern began to make hopjes on a small scale, and in increasing measure have continued to do so. Three years later the business of Johannes Petrus Rademaker, at Scheveningen, was transferred to the plaintiff, and the two sons, Frank and William, became its co-managers. Shortly thereafter, Frank went to England, where he formed and afterwards liquidated a chocolate business. When he had done so, probably about 1904, he failed to reassociate himself with his brother, but established and conducted his own business at Rotterdam, in which he made and sold hopjes. * * *

"On January 8, 1910, plaintiff filed applications for and was granted registration of certain trademarks under `the ten year clause' of the registration statute. The marks are described as follows:

"No. 82,808 `Rademaker's Hopjes'

"No. 89,860, the display of `S. Rademaker Hopjes' in light letters (either yellow or white) against a comparatively dark (either black or gold) disk on the labels with which each piece of plaintiff's products is wrapped.

"No. 85,756, the registration of a label reading `Haagsche Hopjes' on which the mark described in No. 89,860 is displayed. * * *

"About eight or nine years ago, Frank Rademaker began to make shipments of hopjes of his manufacture to the United States. In the year 1923, they came to the attention of the defendants who were engaged in the fruit and candy business, and who had previously handled a negligible quantity of another brand of the candy. In 1924, the Kosloff firm acquired the American agency for Frank Rademaker's goods. It began to push the business among the smaller candy stores and distributing centers of New York City, while the plaintiff's product was handled by the more exclusive stores. Plaintiff's distributors began to feel the effects of competition as early as 1923, and in that year, plaintiff's agents filed the above mentioned registration with the custom's authorities, and under the provisions of section 526 of the Act of September 21, 1922 (19 USCA §§ 141-143) succeeded in stopping temporarily an importation of about 4,000 pounds of Frank Rademaker's hopjes. The shipment was finally released, and the goods were distributed. In 1925, Frank Rademaker petitioned for the cancellation of plaintiff's American trademark registration, and the examiner sustained the petition."

"Plaintiff, over the years from 1911 to 1927 has built up an American consumption running from 5,000 pounds in 1911 to 175,000 pounds in 1927. At the present time, defendants are handling about 40,000 pounds of the Frank Rademaker brand, per annum. In this regard, it may also be remarked that in 1921 or 1922, when plaintiff says it began to feel the competition offered by defendants, its American business in the confection was about 40,000 pounds. In the years since Frank Rademaker's goods came on the market, plaintiff's sales have increased more than four times over, while that of defendants in the same period increased from a negligible quantity of 40,000 pounds per annum."

After successive appeals, the United States Court of Customs and Patent Appeals, since the submission of the case before us, has reversed the lower tribunals and has held the trade-marks good under the ten-year provision of the Trade-Mark Act of Feb. 20, 1905 (15 USCA § 85), as having been used on "Hopjes" candy during the ten years immediately preceding February 20, 1905. This decision necessarily...

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