Moxie Co. v. Noxie Kola Co. of New York

• Decision Date: 13 June 1939
• Citation: 29 F. Supp. 167
• Parties: MOXIE CO. v. NOXIE KOLA CO. OF NEW YORK, Inc., et al.
• Court: U.S. District Court — Southern District of New York

29 F. Supp. 167

MOXIE CO. v. NOXIE KOLA CO. OF NEW YORK, Inc., et al.

District Court, S. D. New York.

June 13, 1939.

Roberts, Cushman & Woodberry, of Boston, Mass. (Benjamin B. Avery, of New York City, of counsel), for plaintiff.

J. T. Basseches, of New York City, for defendants.

LEIBELL, District Judge.

By this motion plaintiff seeks a preliminary injunction in a suit to enjoin infringement of plaintiff's registered trade mark "Moxie" and to restrain unfair competition by the defendants because of the use by them of the name "Noxie Kola" on a similar and competing product. Plaintiff also seeks to enjoin the use of the word "Noxie" by the defendants as a part of their corporate titles.

Plaintiff, The Moxie Company, is a Massachusetts corporation engaged in the manufacture and sale of a carbonated beverage and a syrup for making the same, under the registered trade mark "Moxie" In connection with such manufacture and sale the plaintiff and its predecessors have made continuous and exclusive use in the United States of the name "Moxie" from the year 1885. The word "Moxie" was first registered in the United States Patent Office in 1885 under No. 12,565 and again in 1907 under number 62,295 by plaintiff's predecessors, the latter registration being renewed by the Patent Office in 1927. In 1924 the United States Patent Office also granted to plaintiff's predecessor trade mark No. 189,066 for the word "Moxie" in a slightly different style of type. The word "Moxie" is applied or affixed to plaintiff's bottles or receptacles by placing thereon a printed label on which the trade mark is shown. In 1927 plaintiff's predecessor sold and assigned to plaintiff its business and good will together with its trade mark "Moxie" and all its rights therein.

The affidavits and exhibits indicate that the "Moxie" trade mark has been for many years one of the best known trade marks for soft drinks in the United States. Since the year 1908 the gross receipts from the sale in this country of bottled "Moxie" and "Moxie" syrup have exceeded $35,000,000 and more than $6,000,000 has been spent in the same period to advertise the name "Moxie" and the product which it identifies. Plaintiff's beverage is sold at retail, principally at soda fountains and drug stores. It is ordered by both the retail dealers and the purchasing public by the name "Moxie". The name "Moxie" is accepted by the general public as the badge of the beverage of plaintiff's manufacture.

The defendant, Noxie Kola Company, Inc., is a Maryland corporation and the defendant, Noxie Kola Company of New York, Inc., is a New York corporation. Both have an established place of business in the Borough of Manhattan, City of New York, where the acts complained of are alleged to have been and are being carried on. It appears that both defendant corporations were incorporated in January of the present year. The defendants manufacture and sell in interstate commerce a carbonated beverage made from an extract of the Cola nut and leaves. Defendants claim the drink is made under an old recipe formerly the property of the Crystal Spring Bottling Works of Waterloo, Province of Quebec, Canada. It is stated that this beverage has been sold in Canada under the name "Noxie-Kola" since the year 1900. Defendants' predecessor registered the name "Noxie Kola" in Canada on or about June 28, 1906 for "a certain beverage, a temperance drink — nerve tonic and blood purifier". Defendants acquired their interests in the Canadian drink and the Canadian trade mark "Noxie Kola" by virtue of a recent assignment bearing date the 4th day of February, 1939. The papers before me are barren of any claim that the beverage "Noxie Kola" was ever sold in the United States prior to the incorporation of the defendants in this country.

The governing personnel of both defendants were, prior to the year 1939, officers or employees of the Pepsi-Cola Company, another manufacturer of a carbonated beverage of the same general class as that of the plaintiff and defendants. By reason of their previous connections, these individuals were familiar with the various carbonated beverages of national reputation sold in the United States, as well as the trade names or trade marks under which they were merchandised. The words "Noxie Kola" are applied or affixed to defendants' bottles or receptacles by placing thereon a printed label prominently bearing the words "Noxie Kola". Like plaintiff's beverage, defendants' drink is sold at retail and is similar in appearance and taste to that of the plaintiff.

During the short period of their operation the defendants have circularized the soft drink trade advertising the advent of "Noxie Kola" in the United States. In all their advertisements, letter heads and labels, and on their bottles and caps the word "Noxie" is given a prominent place. For example upon their bottle label the defendants use the words "Noxie Kola", the word "Noxie" appearing above the word "Kola" and the words "Trade Mark" appearing beneath the word "Noxie". In one of their advertisements defendants refer to their syrup as "Noxie" alone and say "No mixing required. Noxie is a finished syrup ready for bottling". These are typical instances of the use of the word "Noxie" by the defendants in connection with the marketing of their beverage. In addition, the word "Noxie" is employed by the defendants as the first word of their corporate titles.

Plaintiff contends that the use of the words "Noxie" and "Noxie Kola" by the defendants upon their beverage and advertising material infringes plaintiff's registered trade mark "Moxie" and that the use of the word "Noxie" by the defendants constitutes unfair competition.

This Court has jurisdiction of the action. There is diversity of citizenship and a matter in controversy involving much more than $3,000. The registration of the word "Moxie" in the United States Patent Office also furnishes a ground for federal jurisdiction and such jurisdiction should be continued to determine the issue of unfair competition connected with the use by defendants of plaintiff's trade mark. 15 U.S.C.A. § 97; 28 U.S.C.A. § 41, par. 7; Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195.

Defendants in opposing this application for a preliminary injunction argue that it should not be granted because (1) defendants' assignors used the name "Noxie Kola" before plaintiff and its predecessors used the name "Moxie"; (2) that the names "Moxie" and "Noxie Kola" are totally dissimilar and could not possibly lead to confusion in the beverage trade so as to result in a diversion of profits from the plaintiff to the defendants; (3) the word "Moxie" is (a) descriptive, (b) is the name of an individual, Lieutenant Moxie, and (c) is geographic, the name of a Maine Lake.

As to prior use — the use of the words "Noxie Kola" upon which the defendants rely, is the use made of these words by the defendants' predecessor. Defendants' own use of the words dates only from January of this year at the earliest. The use of the words "Noxie Kola" by defendants' predecessor from 1900 was confined to the Dominion of Canada and probably only to the Province of Quebec. That the words "Noxie Kola" were never employed by the defendants' predecessor, or anyone else for that matter, in the United States until defendants adopted the name in January of this year, does not appear to be in dispute.

This is not an action by a foreign manufacturer who claims previous sales of his product in the United States under a foreign trade mark and, as a result, the acquisition of certain rights in the name which make it unlawful for another to register in this country the same or a similar trade mark. The prior use of the words "Noxie Kola" in Canada by defendants' predecessor, who never sold his product under that name in this country, cannot be urged to protect the Canadian name in the United States, when that name conflicts with a trade mark otherwise properly registered here and applied to and identifying a product of a similar class sold for many years in the United States. On the question of use therefore, the defendants must rely only upon their own use thereof in the United States for a period not exceeding five months, and that is of no avail in this case.

The Circuit Court of Appeals for the Second Circuit in Le Blume Import Co., Inc., v. Coty et al., 293 F. 344, discussed the effect, upon a United States trade mark, of prior use of the same or a similar mark in a foreign country by one who had not used the mark or sold his product in the United States. The Circuit Court, in this connection, said, 293 F. at page 350: "But the right of Coty to protect his trade-mark `Lorigan' or his right to use `L'Origan' upon his perfumes in the United States is not dependent upon whether he has any exclusive right to the trade-mark or to the trade-name in France. It cannot be denied that the protection of a trade-mark in the United States is not to be defeated by showing a prior use of a like trade-mark in France, or in some other foreign country. It is not essential that one who claims protection of his trade-mark should in all cases be able to show that he first used it. The prior use of a mark by another in some foreign country is not fatal, if the one claiming protection is able to show that he was first to use it in this country. Gorham Mfg. Co. v. Weintraub (D.C.), 196 F. 957; Walter Baker & Co. v. Delapenha (C.C.), 160 F. 746; Richter v. Reynolds 3 Cir., 59 F. 577, 579, 8 C.C.A. 220; Richter v. Anchor Remedy Co. (C.C.), 52 F. 455, 458."

I pass now to the defendants' second point of opposition, namely that the words "Noxie" or "Noxie Kola" are not so similar in appearance or sound to plaintiff's trade mark "Moxie" as to justify a finding that confusion will result in the beverage trade and in the public mind from their concurrent use. Plaintiff and defendants are in the same type of business....