Stark v. Stark Bros. Nurseries & Orchards Co.

• Citation: 257 F. 9
• Decision Date: 25 March 1919
• Docket Number: 5181.
• Parties: STARK et al. v. STARK BROS. NURSERIES & ORCHARDS CO.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

257 F. 9

STARK et al. v. STARK BROS. NURSERIES & ORCHARDS CO.

No. 5181.

United States Court of Appeals, Eighth Circuit.

March 25, 1919

Rehearing Denied June 6, 1919.

The complaint charges that the plaintiff now is, and has been since the year 1816, including its predecessors, James Stark William Stark, Stark & Barnett, Stark & Co., and Stark Bros Nurseries Company, engaged in the business of propagating buying, and selling fruit trees and other nursery stock, and ever since 1893 marked them with the words 'Stark Trees' as its trade-mark, affixing it to boxes or packages containing its product; that it has incurred great expense in propagating trees and advertising them as 'Stark Trees,' and that this trade-mark has become widely known in this and many foreign countries, as indicating a superior grade of trees propagated and sold by the plaintiff and its predecessors: that its fruit trees are invariably bought and sold and commonly designated as 'Stark Trees'; that on January 9, 1913, it filed in the United States Patent Office an application for registration of its said trade-mark 'Stark Trees' in accordance with the act of Congress of February 20, 1905, and its amendments, and on June 24, 1913, it was duly registered in the United States Patent Office as registration No. 92,282; that it claims the exclusive right to the trade-mark 'Stark Trees,' or the word 'Stark,' on fruit and ornamental trees, the trade-name which has always been claimed by its predecessors, they being the first to adopt this mark for nursery stock; that in the spring of 1913 they found sales of fruit trees, labeled and marked with the words 'William P. Stark Nurseries,' said words being printed across the representation of a short, bushy tree, so arranged that the word 'Stark' appeared in large prominent letters across the picture of the tree, and the other words in comparatively smaller type, which, upon investigation, it found was marked and sold by the defendants; that defendants well knew of the exclusive use claimed by plaintiff of the trade-mark 'Stark Trees,' or any simulation thereof, and that they used the trade-mark 'Stark,' in conjunction with the representation of a tree, with the intent to defraud and deceive, and have caused their stock to be bought as and for the nursery stock of the plaintiff, much to plaintiff's loss and injury to the public, and the infringement of plaintiff's registered trade-mark, and of its trade-mark rights under the law; that defendants were duly notified of their infringement, but continued to do so since then; that William P. Stark, one of the defendants, was for a number of years an employe, officer, and stockholder of plaintiff, during which time he attempted to and did familiarize his personal name to readers of the plaintiff's general advertising; that defendants in 1912 established a nursery business, with the principal office at Louisiana, Mo., the home of plaintiff and its predecessors, causing a confusion of mails, which ceased when, by order of the Postmaster General, all mail addressed to the name of 'Stark' should be delivered to the plaintiff, whereupon the defendants moved their nurseries to Chester, Mo., and caused the name of the town and post office of Chester to be changed to 'Stark City,' in face of the fact that for years prior thereto the plaintiff had extensively advertised its addresses at 'Stark,' 'Starkdale,' and 'Stark Station,' Mo.; that all the offices of the defendants are at Neosho, Mo., about 10 miles from Stark City, while all their advertising prominently bears the address 'Stark City,' causing much annoyance and confusion to the plaintiff; that defendants in their extensive advertising dwelt upon the fact that the name of 'Stark' had for nearly a century been associated with the nursery business of America, and that for the last quarter of a century the defendant, William P. Stark, has made the name a sort of a trade-mark in big things in nursery work, and that their nursery at Stark City would continue to broaden the 'Stark' nursery business; that the business of plaintiff and its reputation and the name of 'Stark Trees' had been built up at great labor and expense, employing 5,000 salesmen.

The defendants in their answer deny most of the material allegations, and state that the first notification of the claim of the plaintiff to the trade-mark was in a letter received from it, dated August 26, 1916, many years after they had used the name 'Stark' in connection with their business, and deny that they had any knowledge of appellee's claim to the exclusive right to the use of the trade-mark 'Stark Trees' until notified by that letter. They deny any intent to defraud, or that appellee has suffered any loss by reason of their acts. They deny that the exclusive right to the trade-mark 'Stark Trees,' or the word 'Stark,' on fruit and ornamental trees, has been and is now claimed by plaintiff and its predecessors, or that plaintiff and its predecessors were the first to adopt and use this trade-mark for nursery stock, and, if it did, they had no knowledge of it until they received the letter of August 26, 1916. They deny that, at the time the name of Chester was changed to Stark City, plaintiff was using the address 'Stark,' 'Starkdale,' or 'Stark Station,' Mo.; that for years prior thereto it had not used any of these names, nor had there ever been a post office named 'Stark,' 'Starkdale,' or 'Stark Station,' Mo. They admit that they had advertised the location of their nurseries at Stark City, where they are in fact located, and their offices at Neosho, Mo., and that the defendant William P. Stark had for over a quarter of a century been associated with plaintiff's nursery work. They claim that there can be no confusion, as all their sales are made by catalogues and advertisements and by traveling salesmen, while the plaintiff did most, if not all, of its business through traveling salesmen, and emphasized in its advertisements that it was located in Louisiana, Mo., while defendants in all their advertisements and catalogues emphasized the location of their nurseries at Stark City; that in all their advertisements, letters, and catalogues they had taken precautions to refrain from disparaging the plaintiff or its products, and that their competition had been fair and open.

Upon final hearing there was a decree in favor of the plaintiff, enjoining defendants from the direct or indirect use of the infringing label, or any colorable imitation of plaintiff's trade-mark, in suit, and from putting the work 'Stark' prominently at the top of its label, or elsewhere in connection with the business of producing, advertising, and selling nursery stock, in such manner as will not unmistakably differentiate their goods from those of the complainant, and from using the name or address of 'Stark City' upon their labels or tags attached to nursery stock, or packages containing same, or from using the address 'Stark City' in advertising their business. The decree also directed a reference to a special master to determine all gains and profits which the defendants have derived by infringing on plaintiff's trade-mark, beginning with the 11th day of March, 1914, and that the plaintiff also recover from the defendants all damages which it has sustained by reason of the defendants' infringement and unfair competition from and after the 26th day of August, 1916, on which date plaintiff gave notice to defendant of the registration of its said trade-mark. 248 F. 154. To reverse this decree, appellants are prosecuting this appeal.

Xenophon P. Wilfley, of St. Louis, Mo., and Eugene Pearson, of Louisiana, Mo. (O. L. Cravens, of Neosho, Mo., Ras Pearson, of Louisiana, Mo., and Wilfley, McIntyre, Nardin & Nelson, of St. Louis, Mo., on the brief), for appellants.

Andrew B. Remick, of St. Louis, Mo. (John W. Matson, of Louisiana, Mo., on the brief), for appellee.

Before SANBORN and STONE, Circuit Judges, and TRIEBER, District Judge.

TRIEBER District Judge (after stating the facts as above).

It is undisputed that the appellee and its predecessors have used the name 'Stark' in their nursery business for a century and that its products have an established reputation for quality. On June 24, 1913, it was granted a registration of the trade-mark 'Stark Trees' under the 10-year clause of section 5 of the Trade-Mark Act of Congress of February 20, 1905 (33 Stat. 725, c. 592), as amended by the Act of February 18, 1911 (36 Stat. 918, c. 113; section 9490, U.S. Comp. Stat. 1916). That trade-mark consisted of the two words 'Stark Trees,' as shown by this photographic copy:

(Image Omitted)

The appellants' device, charged as the infringement, is on a narrow tag of wood, as shown by this photographic copy:

(Image Omitted)

The word 'Stark' is in white letters, across the dark bushy tree; the other words are in black, on white ground. It will be noticed that the word 'Stark,' across the bushy tree, is in larger letters than any of the other words, which are in smaller type. We concur in the finding of the learned trial judge that 'in this manner the word 'Stark' is given special emphasis, and from its position the term 'Stark Trees' is vividly suggested.'

To justify a finding of infringement of a trade-mark, it is not necessary that the similitude should be exact. It is sufficient if, taking into account resemblance and conditions, the former are so marked that an ordinary purchaser is likely to be deceived thereby. McLean v Fleming, 96 U.S. 245, 251, 24 L.Ed. 828; Layton Pure Food Co. v. Church & Dwight Co., 182 F. 24, 34, 104 C.C.A. 464, 474; McDonald & Morrison Mfg. Co. v. Mueller Mfg. Co., 183 F. 972, 974, 106 C.C.A. 312; Heileman Brewing Co. v. Independent Brewing Co., 191 F. 489, 494, 112...