National Fruit Product Co. v. Dwinell-Wright Co.

• Decision Date: 16 October 1942
• Docket Number: Civil Action No. 1445.
• Citation: 47 F. Supp. 499
• Parties: NATIONAL FRUIT PRODUCT CO., Inc., v. DWINELL-WRIGHT CO.
• Court: U.S. District Court — District of Massachusetts

47 F. Supp. 499

NATIONAL FRUIT PRODUCT CO., Inc., v. DWINELL-WRIGHT CO.

Civil Action No. 1445.

District Court, D. Massachusetts.

October 16, 1942.

Clarence B. Des Jardins, of Cincinnati, Ohio, and Gilman P. Welsh, of Boston, Mass., for plaintiff.

Edward G. Fenwick and Charles R. Fenwick, both of Washington, D. C., and Simon P. Townsend, of Boston, Mass. (Choate, Hall & Stewart, of Boston, Mass., and Mason, Fenwick & Lawrence, of Washington, D. C., of counsel), for defendant.

WYZANSKI, District Judge.

Defendant or its predecessors have used the words White House together with a representation of the Executive Mansion as a trade-mark for the sale of coffee since January 1, 1888, for tea since 1907, for roasted peanuts since 1940 and for a blend of orange and grapefruit juice since 1941. Pursuant to the United States Trade Mark Acts, 15 U.S.C.A. § 81 et seq., it secured federal trade-mark registrations for coffee and for tea in 1910 and for roasted peanuts in 1941.

Plaintiff or its predecessors have used the same mark on cider vinegar since 1907, sweet cider since about 1908, canned apples since 1918, applesauce since 1920, apple butter since 1924, apple jelly since 1931, apple pectin since 1935, evaporated apples since 1935, concentrated apple juice since 1935, prune juice since 1936, canned sauerkraut and sauerkraut juice since 1937, and apple juice since 1938. Pursuant to the United States Trade Mark Acts it secured or renewed federal trade-mark registrations for apple cider vinegar in 1915; for apple cider in 1918; for apple products, namely, canned apples, apple jelly, apple jam, marmalade, applesauce, vinegar, table apples and apple butter in 1932; for canned fruits, fruit jellies, fruit marmalade, fruit preserves, evaporated apples, fruit pectin and distilled vinegar in 1934; and for fruit and vegetable juices for food purposes in 1936.

Plaintiff and defendant each sells its products in large volume in each of the forty-eight states.

The immediate cause for this litigation was defendant's beginning in 1941 to market a blend of orange and grapefruit juice under the mark. Plaintiff relying upon its trade-mark registrations and diversity of citizenship filed in this Court a complaint seeking an injunction against defendant's use of the trade-mark White House accompanied by a representation of the Executive Mansion in connection with that particular juice. Defendant thereupon counterclaimed seeking relief against plaintiff's use of the mark in connection with plaintiff's whole line of products.

The principal questions presented are three: (1) What rule or rules of law are applicable to this controversy; (2) under the applicable rules has defendant a right to be protected against plaintiff's use of the mark on apple products, prune juice and sauerkraut products; and (3) if not, has plaintiff a right to be protected against defendant's use of the mark on orange and grapefruit juice. The first question embraces problems of conflict of laws; the second, problems of infringement of registered trade-marks (but not, by reason of defendant's express disclaimer, problems of unfair competition); and the third, problems of infringement of registered trademarks and of unfair competition.

Prior to Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487, when the jurisdiction of a United States court was invoked in trade-mark cases, it was not customary or necessary to distinguish nicely as to what rule of law was applicable. In view of that decision, however, it is incumbent on the court to make a preliminary inquiry to determine what is sometimes called the conflict of laws question.

In the case at bar my jurisdiction rests both upon federal trade-mark registrations and upon diversity of citizenship; and the plaintiff, at least, premises his complaint not only on infringement of registered marks but also on unfair competition. It may at first appear that the plaintiff relies on two and only two jurisdictional props. Closer examination makes it clear, however, that plaintiff is seated on a three-legged stool: (1) Apart from any question of diversity of citizenship, it has a right to be heard by this Court on the issue of infringement of its federal registration, 15 U.S.C.A. § 97; Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 323, 59 S.Ct. 191, 83 L.Ed. 195, note 4; (2) also apart from any question of diversity of citizenship, it has a right to be heard by this Court on the issue of unfair competition in so far as that issue is raised by substantially the same facts as those involved in the infringement issue, Armstrong Paint & Varnish Works v. Nu-Enamel Corp., supra, 305 U.S. at page 325, 59 S.Ct. 191, 83 L.Ed. 195; and (3) finally, on the basis of diversity of citizenship, it has a right to be heard by this Court on the issue of unfair competition, Section 24 of the Judicial Code, 28 U.S.C.A. § 41(1) (c); Dwinell-Wright Co. v. National Fruit Product Co., 1 Cir., 129 F.2d 848, 850, 851.

The law to be applied on the first leg is federal statutory law and, where that is ambiguous or silent, federal common law. The point has been discussed so ably and so recently by S. S. Zlinkoff in Erie v. Tompkins: In Relation to the Law of Trade-Marks and Unfair Competition, 42 Columbia Law Review 955, that, borrowing from that author, I shall merely state compendiously the basis for my conclusion. Although the Supreme Court of the United States now requires that in suits where jurisdiction is founded solely on diversity of citizenship, the United States courts should apply the law of the state where suit is instituted (Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487; Pecheur Lozenge Co., Inc., v. National Candy Co., Inc., 315 U.S. 666, 667, 62 S.Ct. 853, 86 L.Ed. 1103, trade-mark), that tribunal has not held that where issues of validity, infringement, defenses or remedies arise under the terms of, or in the interstices of, the trade-mark laws of the United States the United States courts should apply local law. Indications are to the contrary. Compare Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 62 S.Ct. 1022, 86 L. Ed. 1381 as explained 42 Col.L.Rev. 981-983. Thus it has been held that a federal common law rather than a local common law should be applied in formulating a gloss for, or filling a lacuna in, the act governing the Federal Deposit Insurance Corporation (D'Oench, Duhme & Co., Inc. v. Federal Deposit Ins. Co., 315 U.S. 447, 455, 456, 463, 464, 465-475, 62 S.Ct. 676, 86 L.Ed. 956), the Bankruptcy Act (Prudence Realization Corp. v. Geist, 316 U. S. 89, 95, 62 S.Ct. 978, 86 L.Ed. 1293), the National Bank Act (Deitrick, Receiver, v. Greaney, 309 U.S. 190, 200, 201, 60 S.Ct. 480, 84 L.Ed. 694), Indian treaties (Board of Commissioners of Jackson County v. United States, 308 U.S. 343, 349, 350, 60 S.Ct. 285, 84 L.Ed. 313), and the Communications Act (O'Brien v. Western Union Telegraph Co., 1 Cir., 113 F.2d 539, 541). Even more directly in point is a decision of the Circuit Court of Appeals for the Seventh Circuit that, in so far as a complaint is bottomed on infringement of a federally registered trade-mark, the applicable law is strictly federal. Time, Inc., v. Viobin Corp., 7 Cir., 128 F.2d 860, 862. Nothing to the contrary was decided by Judge Ford in Folmer Graflex Corp. v. Graphic Photo Service, D.C.Mass., 44 F.Supp. 429, for that case involved a mark not properly registerable under the federal statutes. 44 F.Supp. at page 433.

It is more difficult to decide what rule of law applies to the second leg. Here this Court's jurisdiction over a cause of action for unfair competition does not rest on diversity of citizenship. It rests on the ground that the facts supporting that cause of action are substantially the same as the facts supporting a not "plainly unsubstantial" cause of action for violation of the federal trade mark act. Armstrong Paint & Varnish Works v. Nu-Enamel Corp., supra, 305 U.S. at pages 324, 325, 59 S.Ct. 191, 83 L.Ed. 195; L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272, 273, 274; Pure Oil Co. v. Puritan Oil Co., Inc., 2 Cir., 127 F.2d 6. It seems that the Supreme Court has not as yet applied Tompkins' case beyond the bounds of diversity jurisdiction cases, D'Oench, Duhme & Co., Inc., v. Federal Deposit Ins. Co., 315 U.S. 447, 467, 62 S.Ct. 676, 86 L.Ed. 956. Therefore a novel question is presented: shall a United States court which has jurisdiction over a cause of action for unfair competition only because the cause is "pendent" to a cause of action for infringement of a registered trade-mark apply federal common law or the local common law.

In answering that question it is proper to take into account Section 34 of the Federal Judiciary Act of September 24, 1789, 28 U.S.C.A. § 725; intimations in opinions of Supreme Court Justices; and considerations of policy.

The 1789 Judiciary Act provided that: "The laws of the several States, except where the Constitution, treaties, or statutes of the United States otherwise require or provide, shall be regarded as rules of decision in trials at common law, in the courts of the United States, in cases where they apply." As used in this statute, "laws" includes local rules of decision, Erie Railroad Co. v. Tompkins, 304 U.S. at page 73, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487, note 5. But, strictly speaking, the statute applies only to "trials at common law." Russell v. Todd, 309 U.S. 280, 287, 294, 60 S.Ct. 527, 531, 84 L.Ed. 754. Although the Supreme Court has applied the principle of the statute and of Tompkins' case to many suits in equity, Ruhlin v. New York Life Insurance Co., 304 U.S. 202, 205, 58 S.Ct. 860, 82 L.Ed. 1290; Fashion Originators Guild v. Federal Trade Comm., 312 U.S. 457, 468, 61 S.Ct. 703, 85 L.Ed. 949 (unfair competition); Pecheur Lozenge Co., Inc., v. National Candy Co., 315 U.S. 666, 667, 62 S.Ct. 853, ...