State of Florida v. Real Juices, Inc.

• Decision Date: 20 July 1971
• Docket Number: Civ. No. 70-251-ORL.
• Citation: 330 F. Supp. 428
• Parties: STATE OF FLORIDA, Department of Citrus, Plaintiff, v. REAL JUICES, INC., and John C. Youngblood, Defendants.
• Court: U.S. District Court — Middle District of Florida

330 F. Supp. 428

STATE OF FLORIDA, Department of Citrus, Plaintiff, v. REAL JUICES, INC., and John C. Youngblood, Defendants.

Civ. No. 70-251-ORL.

United States District Court, M. D. Florida, Orlando Division.

July 20, 1971.

James L. Dooley, of Cushman, Darby & Cushman, Washington, D. C., Monterey Campbell, Bartow, Fla., for plaintiff.

Robert W. Duckworth, of Duckworth & Hobby, Charles E. Davis, of Fishback, Davis, Dominick & Salfi, Orlando, Fla., for defendants.

OPINION

GEORGE C. YOUNG, District Judge.

Plaintiff in this case is the State of Florida, Department of Citrus. The defendant, Real Juices, Inc., is a corporation organized under the laws of the State of Florida and the defendant, John C. Youngblood, is the president of the defendant, Real Juices, Inc., and is a resident of Florida. Under the Lanham Trademark Act (15 U.S.C. § 1125 et seq.) plaintiff seeks to enjoin defendants' use of the name "Sunshine Tree". Plaintiff claims that the defendants have introduced into commerce an orange juice product under the trademark or brand name "Sunshine Tree", thereby infringing on plaintiff's unregistered certification mark¹ of the words "Sunshine Tree" in its advertising and promotion of Florida citrus and its common law certification mark employed to identify citrus products originating in Florida. Further, plaintiff alleges defendants registered that name ("Sunshine Tree") as a trademark for orange juice under the registration statutes of a number of states and therefore claim exclusive proprietary rights in those words. Plaintiff contends that defendants' actions constitute false representation under Section 43(a) of the Act, 15 U.S.C. § 1125(a) and an infringement of plaintiff's common law rights and that defendants' continued usage of the name "Sunshine Tree" serves to confuse the public, create a cloud over and dilute plaintiff's rights in its mark.

This Court's jurisdiction is invoked under Section 39 of the Act (15 U.S.C. § 1121). Because there is no diversity of citizenship, jurisdiction of this Court can exist only if it arises under the Lanham Act (15 U.S.C. § 1121).

Several threshold issues require determination before consideration of the question of a preliminary injunction. In this action plaintiff seeks to protect common law rights in an unregistered certification acquired initially through television, radio and newspaper advertising and commercials featuring Miss Anita Bryant, singing a variety of "Florida Sunshine Tree" songs. The essential issue first to be determined is whether federal trademark law protects an unregistered common law certification mark from false representation and infringement. Resolution of this question requires consideration of several related issues:

(1) Does the Lanham Act protect registered certification marks?

(2) Can rights in a common law certification mark be acquired in the same manner as other marks?

(3) Does Section 43(a) of the Act protect unregistered trademarks, and if so,

(4) Should the scope of Section 43(a) also be found to encompass false representation involving unregistered certification marks?

First, on the question of Lanham Act protection of registered certification marks, 15 U.S.C. § 1054 specifically states in part:

"Subject to the provisions relating to the registration of trademarks, so far as they are applicable, * * * certification marks, including indications of regional origin used in commerce, shall be registrable under this chapter, in the same manner and with the same effect as are trademarks, by persons, * * * States, * * *, exercising legitimate control over the use of the marks sought to be registered, * * *, and when registered they shall be entitled to the protection provided in this chapter in the case of trade-marks."

This statutory provision authorized federal registration of certification marks and brings them within the protection of other provisions of the Lanham Act including Section 43(a), 15 U. S.C. § 1125(a).

As to the second question, whether common law rights can be created in a certification mark in the same manner as in other marks, i. e., trademarks, it does not appear that this issue has been decided in any reported cases. However, the case of Pillsbury-Washburn Flour Mills Co. v. Eagle, 86 F. 608 (7th Cir. 1898) is relevant. In that case an otherwise unrelated group of flour mills in the Minneapolis, Minnesota region, which all ground hard flour by utilizing a special process, all certified the identity of that particular type of flour by presenting the words "Minnesota Patent" along with their regular brand names, and were able to show that flour so marked with "Minnesota Patent" had built up a good reputation and large public demand, were held to be entitled to an injunction against a Chicago firm which used the words "Minnesota Patent" as parts of brand names for flour which was milled in Milwaukee from different wheat by a different process. The Court there recognized that the complainants — acting jointly, had no trademark rights as such — that the words "Minneapolis" and "Minnesota" were not their brand names, and were geographic terms — but nonetheless concluded that they were entitled to relief under the broad principles of unfair competition.

The Court in Pillsbury, supra, found that even in the absence of formal registration equitable rights had developed to protect what could be found to have been in the nature of a certification mark. Furthermore, this Court finds no determinative substantive distinction between certification marks and trademarks which would render the case law pertaining to creation of common law trademarks inapplicable to certification marks. Therefore, this Court concludes that rights in an unregistered certification mark can be acquired in the same manner as they can in trademarks.

The issue of whether Section 43(a) of the Act created a federal cause of action for false representation has been recently decided by the Fifth Circuit in Alum-A-Fold Shutter Corporation v. Folding Shutter Corporation et al, 441 F.2d 556 (1971). It has further been found that an action would lie under Section 43(a) for protection of unregistered common law trademarks from false representations of origin. Federal-Mogul-Bower Bearings, Inc. v. Azoff, 313 F.2d 405 (6th Cir. 1963).

As to the fourth issue, inasmuch as a basic substantive similarity has been found between certification marks and trademarks, this Court finds that the scope of Section 43(a) is sufficiently broad to encompass protection of unregistered common law certification marks.

The Court therefore, ruling that it possesses jurisdiction to hear this action, the next question is whether plaintiff, in the present suit, has acquired a common law certification mark through adoption and use.

The Fifth Circuit recognized in American Foods v. Golden Flake, 312 F.2d 619 (5th Cir. 1963) that:

"* * * a trademark is not a right in gross or at large, nor is there property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed. The right to a particular mark grows out of its use and not its mere adoption.

"* * *

"`Undoubtedly, the general rule is that, as between conflicting claimants to the right to use the same mark, priority of appropriation determines the question. * * * But the reason is that purchasers have come to understand the mark as indicating the origin of the wares, so that its use by a second producer amounts to an attempt to sell his goods as those, of his competitor.'" (United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141 (1918) ) supra at 625.

"Rights in an inherently distinctive mark do not depend on any particular period of use but commerce with its first use as a mark * * * (citing) Drexel Enterprises, Inc. v. Richardson, 312 F.2d 525 (10th Cir. 1962)."

"* * *

"Thus, for the adoption and use of a mark to be effective in establishing rights, the adoption must be in good faith, the use must be a lawful use, and the use must be bona fide commercial transaction. Promotional activities which do not amount to a `trademark use' may, however, be sufficient to establish priority of use against another." Edward C. Vandenburgh III, Trademark Law and Procedure, Second Edition, Bobbs-Merrill Co., 1968, Sec. 2.10, pp. 54, 55.

The plaintiff's mark composed of an orange laden tree encircled on the border by the phrase "Produce of the Florida Sunshine Tree" has evolved from the original "Sunshine Tree Song" first sung by Miss Anita Bryant on radio commercials starting on April 22, 1968. These commercials and its various successors created extensive public recognition of the slogan or phrase "The Sunshine Tree" (see Hoffer Affidavit, Exhibit D, June 1970, National Consumer Survey by Drossler Research Corp.). The use of such statistical survey techniques in trademark cases to demonstrate public recognition and reservoirs of good will is a well accepted practice. Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. 1962).

In the present case a high percentage of those interviewed recognized Anita Bryant, her association with the "Sunshine Tree" song and "The Florida Sunshine Tree" and "The Sunshine Tree" being associated with orange juice from Florida.

This Court finds that plaintiff has demonstrated a significant quantum of public awareness of its "Sunshine Tree" advertising and promotional program, and public recognition of the expression "Sunshine Tree", and that the "Sunshine Tree" slogan has come to be recognized as being distinctive and has obtained a tangible quantum of good will. Allstate Insurance Co. v. Allstate Inc. Co., 307 F.Supp. 1161 (N.D.Tex.1969). Beef/Eater Restaurants, Inc. v. James Burroughs Limited, 398 F.2d 637 (5th Cir. 1968).

Inasmuch as "Sunshine Tree", until defendant applied that name to his orange juice, was not associated with a single entity or product, the good will engendered had...