Potter-Wrightington, Inc. v. Ward Baking Co.

• Decision Date: 20 March 1923
• Docket Number: 1744.
• Citation: 288 F. 597
• Parties: POTTER-WRIGHTINGTON, Inc., v. WARD BAKING CO.
• Court: U.S. District Court — District of Massachusetts

288 F. 597

POTTER-WRIGHTINGTON, Inc., v. WARD BAKING CO.

No. 1744.

United States District Court, D. Massachusetts.

March 20, 1923

Wm Quinby, of Boston, Mass., and Pennie, Davis, Marvin &amp Edmonds, of New York City, for defendant.

ANDERSON Circuit Judge.

By this suit in equity plaintiff seeks relief against alleged unfair competition and trade-mark infringement.

About 1889, the firm of Potter & Wrightington, the predecessor of the plaintiff corporation, began dealing in flour, acting as commission merchants for mills in the West. Some three years later, they installed milling machinery in their plant in Boston, and ground wheat into wheat meal. Later they bolted out the coarser particles of bran, thus making what is commonly known in the trade as 'whole wheat flour.' About 1902, they moved into the five-story building, about 90x100 feet, in Charlestown, now occupied by them. In this they have milling machinery-- rolling mills and three French burr stones-- and two large baking ovens, used for baking dog biscuit, and at times for baking samples of bread made from their flour. In addition to wheat meal and whole wheat flour they have manufactured rolled wheat, rye flakes, cereal coffee, wheat crackers, ginger cookies, dog bread, etc. When they put out the entire wheat flour, they adopted as a distinguishing mark therefor the name 'Old Grist Mill.' About 1893 or 1894, they also adopted a picture representing an old grist mill, alleged once to have existed in Scituate, Mass. These two forms of picture and words have been used by them continuously on their various products, and the packages and cartons containing them, for approximately 30 years.

The plaintiff's immediate customers are mostly bakers and grocers. In order to increase their sales, plaintiff sought to reach the ultimate consumer of flour by creating a demand for bread made of Old Grist Mill flour. To that end it furnished, to 1,000 or more baker customers, wrappers, about 300 to a barrel of flour, intended to be wrapped around the middle of the loaf. One of these wrappers is hereto annexed and marked 'Exhibit A.' This wrapper is headed 'Old Grist Mill Health Bread,' with a picture of a loaf of bread in a wrapper showing the old grist mill thereon, and a space for inserting the name of the particular baker selling the bread made of Old Grist Mill flour. It also has a premium list of prizes 'given only to customers of bakers using the Old Grist Mill flour. ' To secure such premiums the bread buyer was told to cut out the picture, with the baker's name thereon, and send the slips, with postage, to 'Department X, Old Grist Mill, Charlestown, Mass.' They thus adopted in this advertising and premium business the term 'Old Grist Mill' as their name, for the purpose of receiving mail. The premiums ran from an 'Old Grist Mill' cook book for three wrappers, to a watch for 10,000 wrappers. The wrappers also contain an offer of a special prize of $15 for the 'baker, driver, or saleslady sending the largest number of coupons,' and so on. Printed in large letters on each side of this wrapper are the words:

'No wrappers redeemed that have not been used on 'Old Grist Mill' health bread.'

This and much other analogous advertising show clearly how the plaintiff built up a good will in Old Grist Mill flour, by inducing consumers of bread to demand of their bakers and grocers bread made of this flour. Later a different form of waxed wrapper was adopted, but it shows the Old Grist Mill picture. Various other forms of advertising, featuring the old Grist Mill, were used by the plaintiff, such as billboard posters, 8x10 feet in dimensions, posted in Pennsylvania, New Jersey, and New York. Demonstrations at times were given of the merit of bread made of Old Grist Mill flour in grocery stores and food fairs, and at one time in Philadelphia at a regular market stall. At times there was house to house canvassing, selling packages of various products made from Old Grist Mill flour. Cookbooks were used to advertise the flour and other Old Grist Mill products.

In such advertising-- directed towards bringing Old Grist Mill products into public favor, and identifying them with the plaintiff-- the plaintiff expended, in the years 1908-1921, inclusive, upwards of $340,000. The volume of their business was substantial, running from about $300,000 a year to something over $700,000 a year. Both the words 'Old Grist Mill' and the picture were registered as trade-marks in the United States Patent Office, and at the proper offices in Massachusetts and California. These marks also have appeared on the stationery and bills of the plaintiff and its predecessors since 1898. Their goods were marketed in New England, New York, New Jersey, Pennsylvania, District of Columbia, Maryland, Illinois, California, and more or less in other states.

The grist mill was one of the first public utilities in pioneer days. To it our forefathers took the grain, where it was ground, sometimes bolted or sifted, receiving back meal or flour; the miller keeping the bran or a portion of the grain as toll. The phrase 'Old Grist Mill' and the picture suggest in attractive form the simple and supposedly wholesome habits and diet obtaining in days of old. Both the words and the emblem were, therefore, a desirable and effective means of advertising the merit, or supposed merit, of whole wheat flour as superior to ordinary white flour, from which practically all of the outer covering of the wheat has been taken. It was an advertising concept of intrinsic merit.

It is also clear that, by advertising and pressing its products upon the trade for a period of 30 years, the plaintiff established a substantial good will, connected in the public mind with this name and emblem. Plaintiff was, for practical and business purposes, the Old Grist Mill, and its products were Old Grist Mill products. 'Old Grist Mill' became the commercial signature of the plaintiff. United Drug Co. v. Rectanus Co., 248 U.S. 98, 39 Sup.Ct. 48, 63 L.Ed. 141.

The defendant is a large baking concern, with branches in various parts of the United States. Early in 1922 it manufactured and put upon the market a whole wheat bread called 'Home Spun,' put out in a wrapper with a picture thereon of an old grist mill, substantially like the plaintiff's emblem, and has sold approximately 10,000,000 loaves of this bread. It has also carried on for the past year an extensive advertising campaign, in which the picture of an old grist mill, very like the plaintiff's, is a prominent feature, containing the words, in large letters, 'Look for the Old Grist Mill.'

Some time ago the plaintiff put out a card on which was a fanshaped picture of such mill, with the words:

'Back of the loaf is the snowy flour,

And back of the flour the mill,

And back of the mill is the wheat and the shower,

And the sun and the Father's will.'

In advertising since January 1, 1922, the defendant, on pictures showing the Old Grist Mill, has varied the words as follows:

'Back of the loaf is the Whole Wheat Flour,

Which is ground at the old grist mill,

And Back of the mill is the wheat and the shower,

And the Sun and the Father's will.'

It would be hard to conceive of plainer evidence of an intent to appropriate all possible advantage derivable from the original conception of the Old Grist Mill, as suggesting whole wheat flour, as well as the advantage accruing from the plaintiff's 30 years of advertising and use of the term and the emblem as signifying whole wheat flour. The use of the name 'Ward,' in connection with Old Grist Mill and the picture, is intended and calculated to lead the bread-buying public to believe that the Ward Company, and not the plaintiff, is the original 'Old Grist Mill' concern. Taylor v. Carpenter, 3 Story, 458, Fed. Cas. No. 13784. Such action aggravates the injury done by its misappropriation of the plaintiff's 'commercial signature.' It shows wrongful intent, not purpose to sell its own products on the good will legitimately created therefor.

The defendant is an extensive advertiser, and keeps in its files a record of trade-mark registrations. About 1912 it bought a bakery in Newark, N.J., which was using substantial quantities of the plaintiff's Old Grist Mill flour, and selling its bread in wrappers received from the plaintiff. After this purchase, this branch of the defendant continued to use substantial quantities of the plaintiff's Old Grist Mill flour, and received from the plaintiff, and used, some 14,000 or 15,000 of its Old Grist Mill wrappers. That some of defendant's managers knew of such use of this flour and...