Petition of Swedish Produce Co.
| Decision Date | 15 February 1949 |
| Docket Number | No. 48 C 1766.,48 C 1766. |
| Citation | 84 F. Supp. 600 |
| Parties | Petition of SWEDISH PRODUCE CO. In re BERG. C. A. CARLSON CO. v. HERRMANN et al. |
| Court | U.S. District Court — Northern District of Illinois |
Thiess, Olson & Mecklenburger, Arthur A. Olson, Thorley von Holst, Chicago, Ill., for plaintiff.
Cyril A. Soans, William E. Anderson, Marshal Wiedel, Chicago, Ill., for defendants.
On December 10, 1948, Petitioner filed its verified petition, with the affidavit of Timothy P. Sheehan, its president, attached, praying this court to issue a Rule on Victor E. Berg to show cause why he should not be punished for contempt of court. The petition alleges that Victor E. Berg has violated a permanent injunction served on him on November 30, 1931, pursuant to an amended final decree entered on November 12, 1931, in the cause of C. A. Carlson Company v. Robert Herrmann, sometimes doing business as Pleasant Creek Cheese Factory, and Victor E. Berg, Equity Case No. 80, in the United States District Court for the Western District of Wisconsin, finding (a) that the trade-mark "Bond-Ost" for cheese is valid and legally registered as such under the Trade-Mark Act of 1905, 33 Stat. 724, and that said trade-mark was the exclusive property of C. A. Carlson Company, plaintiff herein, in connection with the business in which it is used; (b) That through long use of said word "Bond-Ost" to designate plaintiff's cheese, said word has acquired a secondary meaning identifying the cheese sold as "Bond-Ost" by plaintiff; (c) That plaintiff and its predecessors had since 1904 always manufactured under the trade-mark "Bond-Ost" cheese of a particular size and shape and that defendant, Robert Herrmann, had unfairly competed with plaintiff in manufacturing and selling cheese of the same particular size and shape as plaintiff's cheese manufactured and sold under said trade-mark "Bond-Ost;" (d) That the defendant, Victor E. Berg, controlled and conducted the defense in this suit by his own attorneys and at his own cost and expense, and is bound by any and all decrees entered herein. No appeal was taken from this decree.
Paragraph 7 of the decree provides:
Petitioner here contends that for sixteen years Berg obeyed the terms of the decree, but that within the last year he has violated the injunction, first, by the use of the words "Bord-Ost" and "Berg-Ost" as trade names for cheese distributed by him, and secondly, by manufacturing and selling, or causing to be manufactured and sold cheese of substantially the same size and shape as petitioner's "Bond-Ost" which is the same size and shape as was that sold by C. A. Carlson Company in 1931, when the injunction was issued against Berg; that respondent's present labels, in addition to the use of the term "Berg-Ost" are confusingly similar to petitioner's labels in color scheme, being predominantly blue and yellow and circular, with the identifying mark appearing straight across. That from the affidavit of Lillian Karman it appears that in a shopping tour in which eight retail stores were visited by her, in six instances the dealer furnished her with whole "Berg-Ost" cheese in response to her request for whole "Bond-Ost" cheese. Petitioner insists that the validity of the trade-mark, "Bond-Ost" was settled by the decree of 1931, and that C. A. Carlson Company was, under that decree, entitled to protection against unfair simulation of the size and shape of "Bond-Ost" cheese which it had been manufacturing under that trade name and in that particular size and shape since 1904, and which, as its successor, petitioner is now manufacturing and selling under said trade-mark.
Defendant has filed his answer in the present cause, denying that petitioner is successor in interest to C. A. Carlson Company, and urges that the right to enforce the decree of 1931 was a right in personam and not a right in rem, and therefore was not capable of assignment by Carlson to Shefford Cheese Co., Inc., to Standard Brands, Incorporated, and finally to petitioner, and that said right was never actually so assigned.
It appears, therefore, that the only new issue in the present proceeding is whether petitioner is in law the successor to the rights of the C. A. Carlson Company in the decree entered in 1931 by the United States District Court for the Western District of Wisconsin in the case of C. A. Carlson Company, a corporation, v. Robert Herrmann, sometimes doing business as Pleasant Creek Cheese Factory, and Victor E. Berg; and whether Berg's present trade name of "Berg-Ost" is so confusingly similar to the trade name "Bond-Ost" as to constitute a contempt of court. The affidavit of Fred Berg, salesman for petitioner for the past twenty-one years, sets out that the "Bond-Ost" cheese marketed today by petitioner is identical in shape and size with that marketed in 1931 by petitioner's predecessor, the C. A. Carlson Company. Petitioner urges that Victor E. Berg is in contempt of court because he has not obeyed the injunction issued by the United States District Court for the Western District of Wisconsin in 1931, from which injunction and decree no appeal was ever taken, and may not now be attacked collaterally. In support of this position petitioner cites the case of United States v. United Mine Workers of America, 330 U.S. 258, 67 S.Ct. 677, 696, 91 L.Ed. 884, where the Supreme Court said:
In support of its contention that petitioner has no standing in these proceedings in this court, in spite of the fact that it is the assignee of the trade-mark "Bond-Ost" and of the good will of the business in connection with which the mark is used, respondent cites to the court the case of Popsicle Corporation v. Pearlstein, et al., 168 S.W.2d 105, decided by the St. Louis Court of Appeals of Missouri. This case I believe is distinguishable on its facts from the case at bar. In the Popsicle case the original plaintiff brought suit against its one-time licensee. The license contract had provided among other things that the licensee would respect the licensor's patents covering a sucker on a stick, that the licensee would not make or sell suckers of a size greater than three ounces or at a price to the trade less than forty cents a dozen, and that the licensee would purchase all its extracts and ingredients used in the manufacture of the suckers from the Popsicle Corporation. Pearlstein the licensee disregarded the license and purchased her ingredients elsewhere, whereupon Popsicle sued her and obtained a decree whereby she was enjoined from manufacturing suckers of a size larger than three ounces, from selling them at a price less than forty cents a dozen and from using in their manufacture any ingredients other than those purchased from the Popsicle Corporation. Subsequently the Joe Lowe Corporation took over the business of the Popsicle Corporation, at which time the Popsicle Corporation purportedly assigned to the Lowe Corporation its right, title and interest in the decree, but the court held that the decree there was one in personam not binding anyone except respondents, and not conferring a right upon anyone except the Popsicle Company.
Here in the assignment from the C. A. Carlson Company to the Shefford Cheese Company, Incorporated, and the assignment from the Shefford Cheese Company, Incorporated, to Standard Brands, Incorporated, the grantor in each instance conveyed its "entire right, title and interest in and to the said trade-mark," together with "the good will of the business in connection with which said mark is used." In the third assignment the grantor, Standard Brands, Incorporated, conveyed to Swedish Produce Company, the petitioner here, "the entire right, title and interest in said trade-mark, * * * and the good will of the business in connection with which said mark is used."
In the case of Abraham & Straus, Inc. v. Truval Manufacturers, Inc., 138 F.2d 77, 79, 31 C.C.P.A., Patents, 731, the Court of Customs and Patent Appeals said:
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