Royal Baking Powder Co. v. Raymond

• Decision Date: 02 November 1895
• Citation: 70 F. 376
• Parties: ROYAL BAKING POWDER CO. v. RAYMOND.
• Court: U.S. District Court — Northern District of Illinois

70 F. 376

ROYAL BAKING POWDER CO. v. RAYMOND.

United States Circuit Court, N.D. Illinois.

November 2, 1895

Campbell & Custer and Rowland Cox, for complainant.

Smith Helmer & Moulton and Henry W. Blodgett, for defendant.

SHOWALTER Circuit Judge.

Complainant is a corporation organized under the laws of New York in April, 1873. Since said date said corporation has been continuously engaged in business as a manufacturer and vender of baking powder. Its home office and chief place of business is in New York, but its trade connections extend throughout the United States. The word 'Royal' is marked by complainant on the cans or packages containing the baking powder made by complainant. Said product is called 'Royal Baking Powder,' and the name of complainant corporation is Royal Baking Powder Company. These uses of the word 'Royal' by complainant have been continuous uninterrupted, and substantially exclusive since the date of incorporation above mentioned.

In 1866 a firm called Biddle & Hoagland commenced the compounding and selling of baking powder in connection with a business carried on at Ft. Wayne, Ind. This business, or the baking powder feature thereof, was afterwards transferred to New York, and was there carried on by C.N. and J. C. Hoagland successors to the old firm, and under the name Royal Baking Powder Company, from 1868 down to 1873. The two Hoaglands became officers in complainant corporation at the time of its organization, and said corporation commenced the manufacture of baking powder, supplanting said firm, and thenceforward conducting said baking powder business on its own account, as already stated. Complainant insists that the word 'Royal' was appropriated and used as a trade-mark for baking powder in July, 1866, by said Biddle & Hoagland, and that said mark was continuously so used in said baking powder business down to April, 1873, when complainant corporation was organized as above mentioned. On behalf of defendant it is insisted that in 1865, or certainly as early as March 1866, one C. A. King, in connection with a business carried on at 24 and 26 Peck Slip, in New York City, sold a baking powder marked 'Royal London Baking Powder.' In the fall of 1866 one Decker became a partner with King. In the fall of 1867 Decker became sole owner by purchase from King. In August, 1868, the defendant bought the business from Decker, and continued to carry on the same at the old stand till the spring of 1870, when he removed to another place in New York City. After such removal, defendant continued the business till 1871, when he failed. The articles mainly dealt in in this business were originally teas, coffees, and spices. Defendant, in his time, appears to have added liquors as an important part of his stock in trade. The compounding and sale of baking powder was at no time a very pronounced feature of this business. The trade in baking powder was confined to the neighborhood of New York City, and at and for some months before the time of said failure had almost ceased, though cans or parcels of said product were still on hand. The business, including the compounding and selling of baking powder, ceased entirely with said failure. From 1871 to 1894 defendant was engaged in various occupations and business enterprises, but does not appear to have concerned himself with the manufacture and sale of banking powder. Over the front of the store 24 and 26 Peck Slip, occupied by King and his assignees, as above stated, were painted the words 'American Mills,' and these words were apparently used as a trade-name for the business there conducted. This use of the words 'American Mills' as a trade-name for said business continued from a time prior to the introduction of the Royal London Baking Powder till the failure of defendant, and extinction of said business, in 1871. Said words were not exhibited as a name on the front of defendant's place of business after the removal from Peck Slip, but were retained apparently on his bill and letter heads. In the latter part of February, 1894, defendant recommenced the manufacture and sale of baking powder; this time at 196 Michigan street, Chicago. He puts up his product in cylindrical tin cans similar in size and shape to those used by complainant and other baking powder makers. On these cans is pasted a colored, rectangular label, substantially the same in shape, size, and position on the cans, as the label used by complainant, and displaying in the left half thereof the four words, 'Royal London Baking Powder,' arranged in perpendicular column. The word 'London' is printed in very much smaller type than the word 'Royal,' and there is a small and rather inconspicuous vignette, showing a lion and unicorn, below the words 'Royal London,' and above the words 'Baking Powder,' and separating the two words, 'Trade Mark,' printed in comparatively small type. On the right half of defendant's label, in small type, are the directions for using, followed by the words: 'American Mills. George E. Raymond, Proprietor, 196 Michigan St., Chicago, Formerly 24 and 26 Peck Slip, New York. ' The directions, printed in English and German, are an exact copy of the directions on the left half of complainant's label. On the top of complainant's can are stamped or embossed the words: Full Weight. 1/2 lb. (the fraction being changed to suit the size of the can). Royal Baking Powder. Absolutely Pure. ' On the top of the can of corresponding size used by defendant are stamped or embossed the words: 'Full Weight. 1/2 lb. Royal London Baking Powder. Strictly Pure.' As will be seen from the facsimiles in the printed argument for complainant, and from the cans put in evidence as exhibits, these markings on the tops of the cans are very similar. That on complainant's can originated with, and has long been in use by, complainant. Complainant likewise originated, and has long so used, said directions in English and German. Across the upper portion of the left half of complainant's label appears in large letters the word 'Royal.' Next below is a small oval, containing a cut in miniature of complainant's can, and below this are the words 'Baking Powder.' The upper left half shows in small characters the two words 'Trade' and 'Mark'; and the lower, the two words 'Royal' and 'Registered.' The distinguishing, characteristic and notable mark on defendant's label, as on complainant's label, is the word 'Royal.'

The following letter, written by defendant under his new letter head, is in evidence:

Established 1865. G. E. Raymond, Prop.

American Mills.

Manufacturers of

Royal London Baking Powder.

196 Michigan Street.

Chicago, April 27th, 1894.

Mess. Mason, Ehrman & Co., Portland, Ore.-- Gentlemen: Enc'd please find circular letter in re the Royal London Baking Powder. This old trade-mark has been revived. It is the first Royal ever placed on the Eastern market, and made all the name and fame possessed by a Co. now called Royal in consequence of its purity. A party writing from Indiana this morning says, 'Royal London takes the place of Royal every time without a riffle. ' Your house was recommended to me by Mr. Foster, of Mess. Foster, Brydge & Co., of Union, Ore. We ship'd them some time ago one barrel powder, Mrs. Foster having made biscuits from the powder before an order was made. You can make more money out of Royal London than the other Royal. We would be pleased to make you a ship't, and give your house agency for Pacific coast. Will deliver goods in your city. Would be pleased to receive trial order from you. Awaiting your favor, we are,

Respy., yours, American Mills Co.

Geo. E. Raymond.

Defendant testified that the baking powder made by him prior to 1871 was commonly known and spoken of as 'The Royal' (not 'Royal London'), and from the letter above it may be inferred that 'Royal,' and not 'Royal London,' is his colloquial designation of the product now made by him. I may add here that, as shown by the evidence, complainant, since its incorporation, has expended some $5,000,000 in advertising its product as 'Royal Baking Powder,' and its average of sales for many years has been nearly 20,000,000 packages per annum.

In March, 1894, complainant filed this bill to enjoin the use of the word 'Royal' by defendant as a designation of baking powder made by defendant, or as a mark on defendant's goods, insisting that the said word is identified with the good will of complainant as a trade-mark on the baking powder made by complainant, as a part of the name of the baking powder made by complainant, and as a part of the corporate name of complainant; and that the use of said word by defendant in connection with the baking powder made by him and on his labels is essentially fraudulent and unfair, and a trespass on the complainant's good will. Defendant insists that he himself, and not complainant, is owner of the word 'Royal' as a mark for baking powder; and that his ownership may be referred to the use of said word by himself and his assignors from 1865 to 1871, such use being, in its inception, prior in time to any like appropriation...