Pease v. Scott County Milling Co.

• Decision Date: 24 March 1925
• Docket Number: No. 6473.,6473.
• Citation: 5 F.2d 524
• Parties: PEASE et al. v. SCOTT COUNTY MILLING CO.
• Court: U.S. District Court — Eastern District of Missouri

5 F.2d 524 (1925)

PEASE et al. v. SCOTT COUNTY MILLING CO.

No. 6473.

District Court, E. D. Missouri, E. D.

March 24, 1925.

Edgar T. Brandenburg, of Washington, D. C., J. F. Brandenburg, of New York City, and John H. Bruninga, of St. Louis, Mo., for plaintiffs.

Andrew B. Remick, of St. Louis, Mo., for defendant.

FARIS, District Judge.

This case was submitted some time ago, but was overlooked by the court. It came by transfer, pursuant to stipulation, from the Southeastern division, being originally numbered 220, and now numbered 6473, in equity, on the docket of this court.

This is a suit in equity, as forecast by the number, for an injunction and an accounting, bottomed upon an alleged infringement by defendant of the registered trade-mark of plaintiffs, which trade-mark carries the word "Nox-All," as applied to a mixed or commercial stock food made by plaintiffs, which said trade-mark was duly registered by plaintiffs on the 30th day of October, 1922. In the beginning, I should have stated that the case was submitted to the court on an agreed statement of facts; no evidence was taken in it.

The answer of the defendant is an admission of the fact of the issuance of the certificate of registry of the trade-mark to plaintiffs, that plaintiffs are engaged in making and selling stock foods, that defendant is likewise engaged in selling a stock food under the name of "Noxall," and that plaintiffs heretofore complained of the action of defendant in the behalf last mentioned. Other facts are denied in substantial effect; that is to say, defendant avers that it has no knowledge or information of the existence of the facts pleaded, and asks that strict proof thereof be made and required of plaintiffs. Defendant also sets up a counterclaim, for that, as it is alleged, in the year 1893 its predecessor began using the word "Noxall" as a trade-mark on wheat flour made by its predecessor; that on February 20, 1916, defendant registered this trade-mark, as by law permitted, in the Patent Office; and that both before and after such registration defendant and its predecessor constantly and continuously used such trade-mark on wheat flour made and sold by it and by its said predecessor.

The agreed statement of facts on which the case is submitted to the court, eliminating merely conceded jurisdictional matters, substantially is that, since 1903, plaintiffs and their predecessor have been making and selling a mixed stock food, composed of corn, oats, alfalfa meal, and molasses, which they marketed under the trade name of "Nox-All"; that in the year 1915, plaintiffs' predecessor began selling such stock food, so marked, in interstate commerce; that on October 30, 1922, plaintiffs registered this name as a trade-mark for such mixed stock food in the Patent Office, pursuant to law, and got a certificate thereof, hearing the above date and numbered 146,329; that plaintiffs have extensively advertised such stock food at substantial expense, and during the years 1921, 1922, and the first half of the year 1923 they have sold more than 18,000,000 pounds of such stock food so marked, in many Southern states; and that plaintiffs were not advised, and had no knowledge of the use by defendant of the word "Noxall" on flour, or on any other product, until about the month of March, 1921; that defendant's predecessor, about the year 1893, began to use the word "Noxall" as a trade-mark for wheat flour made and sold by it, and continuously since that date such predecessor used this trade-mark, until 1904, when it sold out to defendant, and thereafter continuously defendant has used this mark on such flour made and sold by it; that in 1916 defendant procured the registration of this word "Noxall" as a trade-mark for wheat flour; that up to five years ago defendant was not engaged in making and selling food for live stock, but that in 1919 it began selling a live stock food made for it by others, according to a formula and mixture similar in all ways to that of plaintiffs, that is to say, a stock food composed of corn, oats, alfalfa meal, and molasses; that in the year 1921 it built a feed mill and began making and continued selling such stock food, marking it, for the whole five-year term, with the word "Noxall" as a trade-mark; that it began shipping such feed in interstate commerce in 1919, and is now shipping and selling the same in many of the states wherein plaintiffs' product is sold. It is also agreed that the words "Noxall," "Nox-All," and "Noxal" have been registered as trade-marks some 30 times, for almost every conceivable product, including poultry cures, paints, clothing, mineral water, starch, beer, meat, wheat flour, and stock food; that, in addition, this word is used as a trade-name by some 15 or 20 concerns, to designate divers articles or manufacture and sale, from cultivators to washing machines.

Upon these facts both sides contend for judgment. In limine, it is plain that, since the plaintiffs have been using the word about which the dispute wages for 22 years as a trade-mark for a mixed stock food, and defendant has been using it for 32 years as a trade-name for wheat flour, and both parties have had it registered as a statutory trade-mark (defendant in 1916, for wheat flour, and plaintiffs in 1922, for a mixed stock food), there is no such situation presented as indicates fraud, malice, or intentional infringement, without a fair claim of right.

The ruled cases disclose two lines of decision: A narrow rule of protection in a case wherein the trade-mark in dispute has been, as here, registered under the statute for some 30 times as a trade-mark, for as many different products, and has also been used as a common-law trade-mark as to some 20 other products (Columbia...