Oakes v. St. Louis Candy Co.

• Decision Date: 06 December 1898
• Citation: 146 Mo. 391,48 S.W. 467
• Parties: OAKES v. ST. LOUIS CANDY CO. et al.
• Court: Missouri Supreme Court

48 S.W. 467

146 Mo. 391

OAKES v. ST. LOUIS CANDY CO. et al.

Supreme Court of Missouri, Division No. 2.

December 6, 1898.

TRADE-MARKS — NAMES — ORIGINALITY — AFFIXING MARK — RECORD — EFFECT — UNFAIR COMPETITION.

1. The name of "What is it?" as applied to a new kind of candy, does not point out the origin or ownership of the article, so as to give trade-mark rights in the name, where the proprietor has no exclusive property in the article itself.

2. The phrase "What is it?" is not an original, arbitrary name, so as to entitle the user to be protected in the exclusive use thereof.

3. Where the maker of a certain kind of candy never attached or stamped his alleged trade-mark on the candy itself, but distinguished his candy merely by a display card bearing the trade-mark in his own show cases and windows, he acquired no rights to the trademark.

4. The recording of a name as a trade-mark of itself has no effect whatever in giving the name the quality of a trade-mark, if it was not already such according to the trade-mark law.

5. A candy manufacturer by the name of Oakes sold a certain kind of candy under the name of "Oakes' What is it?" Defendant sold like candy as "Hawthorne's What is it?" Held not to show unfair competition.

Appeal from St. Louis circuit court; Jacob Klein, Judge.

Action by Peter Oakes against the St. Louis Candy Company and others. From a judgment dismissing the petition, plaintiff appeals. Affirmed.

This is an appeal from a judgment of the circuit court of the city of St. Louis. The action was one — First. To restrain defendants from selling or offering for sale or advertising a confection or candy in the similitude, likeness, or bearing a resemblance to a confection manufactured and sold by plaintiff under the name of "What is it?" Second. For $10,000, damages for the alleged piracy of said name by defendants. The circuit court found the issues for defendants on both counts, and dismissed the petition. Plaintiff appeals.

Jas. P. Kerr and Thos. J. Epps, for appellant. E. T. & C. B. Allen, for respondents.

GANTT, P. J.

The following finding of the facts by his honor, Judge Jacob Klein, is fully borne out by the record:

"The facts shown in evidence are these: The plaintiff's confectioner, intending to make a certain kind of nut candy, found that a particular lot did not turn out just as was intended. As the lot was a considerable quantity, the plaintiff suggested to him to let the mixture cool, and they would see what it would look and taste like. It proved to be curious in appearance, but palatable in taste, different from anything they had previously made, and was brought into plaintiff's salesroom, and offered for sale, some being placed in the show windows, and some upon the counter. It being different from any candy or confection previously made, plaintiff put upon it a piece of paper, with the words `What is it?' and afterwards had ordinary show cards printed with these words, and put the show cards in other lots of the same kind of candy made by him. This happened in the autumn of 1889. On the 14th of November, 1889, the plaintiff and his wife undertook to formally adopt the interrogated phrase `What is it?' as a trade-mark, by which to make known and designate the articles of commerce aforesaid (referring to this particular sort of confection), `as of their manufacture and production.' A formal document to this effect was recorded by the plaintiff and his wife, on November 16, 1889, in the recorder's office; and, from that time on, plaintiff continued to manufacture the same kind, or similar candy, and to expose the same for sale in his store in the same manner. The term `What is it?' was never impressed upon any part of the candy itself, nor was this put in any particular kind of package, or labeled in any such way when sold to customers. But the show cards with these words were used upon the lots of the candy exposed for sale on the counters or in the show windows. In March, 1895, the defendant Gustav Wamsganz, conducting a candy shop under the name of `Hawthorne's,' ordered a lot of similar candy to be made by the defendant the St. Louis Candy Company, and exposed it for sale, and sold it in his shop, under the designation `Hawthorne's What is it?' The total amount shown to have been sold was three different lots, aggregating 77 pounds. This suit was commenced April 3, 1895, and was tried and submitted November 20, 1895. In the determination of this case, it is to be borne in mind that plaintiff does not possess the exclusive right to manufacture or sell the particular kind of candy or confection in controversy. He has no patent upon the process of manufacturing it, nor upon the manufactured article when produced. His sole contention is that he has acquired the exclusive right to use the collection of words, or interrogative phrase, `What is it?' to designate it as a name therefor, or as a trademark or trade-name first adopted by him in connection therewith. Nor does he claim that the candy sold by the defendant is the same as the plaintiff's, although he claims that it is made in similitude thereof. The plaintiff's own proof shows that the defendant St. Louis Candy Company never used the name at all, and that the defendant Wamsganz never palmed off his candy as made by the plaintiff. On the contrary, the defendant Wamsganz designated and sold his candy as `Hawthorne's What is it?' in precisely the same way as plaintiff sold his as `Oakes' What is it?'

"Under these circumstances, is the plaintiff entitled to any judgment upon either of the two counts in his petition? (1) The first count is for $10,000 damages, and is based upon the charge that the defendants made and offered for sale large quantities of the confection `in imitation of the confection prepared and sold by plaintiff,' and that they did offer and cause the same to be sold under the name of `What is it?' and did cause a placard with these words to be set up in their place of business, `in order to denote that such confection was the genuine confection known and designated, prepared, vended, and sold by the plaintiff, and in violation of the rights of plaintiff in their said trade-mark.' Stripped of its verbiage, the count charges the defendant with fraudulently palming off on the public, under a trade-mark which plaintiff has acquired, goods made by defendants, as if they were of the plaintiff's manufacture; that this Is done maliciously, and for the purpose of depriving the plaintiff of his trade. (2) The second count is for an injunction to restrain defendant `from selling or offering for sale or advertising a confection in the similitude, likeness, or bearing a resemblance to the confection of the...