Seven Up Co. v. Cheer Up Sales Co.

• Decision Date: 15 May 1945
• Docket Number: No. 12955.,12955.
• Citation: 148 F.2d 909
• Parties: SEVEN UP CO. v. CHEER UP SALES CO. OF ST. LOUIS, MO., et al.
• Court: U.S. Court of Appeals — Eighth Circuit

148 F.2d 909 (1945)

SEVEN UP CO. v. CHEER UP SALES CO. OF ST. LOUIS, MO., et al.

No. 12955.

Circuit Court of Appeals, Eighth Circuit.

April 26, 1945.

Rehearing Denied May 15, 1945.

John H. Cassidy, of St. Louis, Mo. (Frank Y. Gladney and Jones, Hocker, Gladney & Grand, all of St. Louis, Mo., on the brief), for appellant.

Oliver T. Remmers, of St. Louis, Mo., for appellees.

Before GARDNER, THOMAS, and JOHNSEN, Circuit Judges.

THOMAS, Circuit Judge.

This is an appeal by the plaintiff from a decree dismissing its bill in equity in a suit under the Trade-Mark Laws of the United States, 15 U.S.C.A. § 81 et seq., (1) to enjoin infringement of its registered trade-marks and unfair competition, (2) for damages, and (3) for cancellation of defendant Orange Smile Sirup Company's registered trade-mark No. 340,923.

Plaintiff's registrations are No. 252,350, issued February 5, 1929, for "Seven Up", and No. 331,345, issued January 7, 1936, for "7 Up". Both are for use on the goods or on the packages or bottles containing non-alcoholic soft drinks and syrups, extracts and flavors used in making the same. Defendants' registration is for "Cheer Up", issued November 24, 1936, for use on similar soft drinks and their containers.

Plaintiff and defendants are corporations organized under the laws of Missouri with their principal places of business in the city of St. Louis.

In its complaint the plaintiff avers that it is engaged in manufacturing and selling extracts for flavoring soft drinks, and contracting with bottlers to bottle and sell beverages flavored with such extracts; that it adopted and first used its trade-marks in 1928; that about the year 1929 it devised a secret formula for compounding an extract carrying lemon-lime flavoring to be used in flavoring a carbonated soft drink beverage to be sold in bottles and introduced the same into commerce; that about 1930 it applied its trade-mark to designate and make known said extract; and that since said date it has continuously made and sold said extract and has used said trade-mark exclusively for said lemon-lime beverage. That it has established its business throughout the United States and in foreign countries; that since 1930 it has spent $2,000,000 for advertising; that in 1930 its sales of extract aggregated 30 gallons; that the volume of sales increased progressively each year until in 1940 the sales amounted to over 75,000 gallons, sufficient to make 630,000,000 seven ounce bottles of 7 Up; and that its trade-marks are worth at least $3,000,000. That its bottlers use a distinctive green glass seven ounce bottle with fused markings thereon in two colors, white and a modified red or red-orange, including "7 Up" with a design on the neck of the bottle.

That defendants engage in substantially the same business, making a lemon-lime extract, contracting with bottlers for territory; that defendants have adopted and use the trade-mark "Cheer Up", which infringes plaintiff's trade-mark; that defendants have used a bottle and crown simulating plaintiff's package; and that further to confuse the public they have used other devices following or suggested by plaintiff's advertising.

That plaintiff's and defendants' trade-marks are interfering trade-marks within the meaning of the Trade-Mark statutes, 15 U.S.C.A. § 102.

The statute under which the action is brought (15 U.S.C.A. § 96) and upon which federal jurisdiction is based provides that "Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such registered trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration * * * and shall use * * * such reproduction, counterfeit, copy, or colorable imitation in commerce among the several States * * * shall be liable in an action for damages therefor at the suit of the owner thereof * * *."

The proper function of a trade-mark is that by association with goods it becomes a means of identification of the origin or ownership of the article and hence a symbol of good will. This essential element is the same both in trade-mark cases and in cases of unfair competition unaccompanied with trade-mark infringement. The law of trade-marks is but a part of the law of unfair competition. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413, 36 S.Ct. 357, 60 L.Ed. 713; Walgreen Drug Stores v. Obear-Nestor Glass Co., 8 Cir., 113 F.2d 956, 961; F. W. Fitch Co. v. Camille, Inc., 8 Cir., 106 F.2d 635.

It is not claimed in the instant case that the defendants' trade-mark is a copy of plaintiff's, but that it is a colorable imitation thereof. When this issue is presented and when, as in the present case, no evidence of actual instances of confusion in the purchase of goods is introduced, the test of deceptive similarity is whether ordinary purchasers, buying under the usual conditions in the trade and exercising ordinary care, would likely be induced to purchase the article to which the accused trade-mark is affixed, believing it to be the plaintiff's article. Queen Mfg. Co. v. Isaac Ginsberg & Bros., Inc., 8 Cir., 25 F.2d 284, 287; S. S. Kresge Co. v. Winget Kickernick Co., 8 Cir., 96 F.2d 978, 987. This test must be applied by comparing and contrasting the accused trade-mark with the purchaser's assumed memory of the plaintiff's trade-marks. Schlitz Brewing Co. v. Houston Ice Co., 250 U.S. 28, 30, 39 S.Ct. 401, 63 L.Ed. 822. In thus testing the memory of the ordinary careful purchaser, the court must consider the appearance of the two trade-marks as to form and color and their similarity or difference in sound or meaning when pronounced. Esso, Inc., v. Standard Oil Co., 8 Cir., 98 F.2d 1.

Whether the defendants' trade-mark "Cheer Up" is so similar to the trade-marks "Seven Up" or "7 Up" that the former deceives or is likely to deceive purchasers and cause them to buy the product of the defendants believing it to be the product of the plaintiff, is a question of fact. The findings of the trial court on this question are presumptively correct, and such findings will not be disturbed on appeal, unless this court can say that in the light of the evidence the court erred as a matter of law. Cleo Syrup Corporation v. Coca Cola Co., 8 Cir., 139 F.2d 416, 417, 150 A.L.R. 1056; F. W. Fitch Co. v. Camille, Inc., supra; Magazine Publishers, Inc., v. Ziff-Davis Pub. Co. 2 Cir., 147 F.2d 182, 185; Rules of Civil Procedure, rule 52, 28 U.S.C.A. following section 723c.

In this case there is no evidence of palming off or of confusion of customers. The findings on both infringement and unfair competition are based solely upon a comparison of the trade-marks and the appearance of the packages. It is not disputed that the goods of the parties are of the "same descriptive properties"; both plaintiff and defendants are engaged in marketing through licensed bottlers lemon-lime soft drinks or beverages. In comparing the respective trade-marks and packages of the parties the trial court found that

"6. The label now used by the plaintiff * * * comprises a substantially square area outlined in white within which is another substantially square area colored reddish orange and alongside the colored square the outside of a human figure clad in a bathing suit. Within the reddish orange area, there appears in white lettering, and somewhat askew, the character `7 Up'. The only other wording...