Sun-Maid Raisin Growers v. American Grocer Co.

• Decision Date: 14 April 1930
• Docket Number: Patent Appeal No. 2282.
• Parties: SUN-MAID RAISIN GROWERS OF CALIFORNIA v. AMERICAN GROCER CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

17 CCPA 1034, 40 F.2d 116 (1930)

SUN-MAID RAISIN GROWERS OF CALIFORNIA v. AMERICAN GROCER CO.

Patent Appeal No. 2282.

Court of Customs and Patent Appeals.

April 14, 1930.

Miller & Boyken, of San Francisco, Cal. (George W. Dorr and Charles R. Allen, both of Washington, D. C., of counsel), for appellant.

B. G. Foster, of Washington, D. C., for appellee.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

BLAND, Associate Judge.

The American Grocer Company, appellee herein, was the applicant in the Patent Office for the registration of a trade-mark hereinafter described. The Sun-Maid Raisin Growers of California were the opposers. The mark which was sought to be registered by the applicant is the word "Sun-Maid" placed above a representation of a small girl in a standing position, holding a bundle of wheat in each arm. Behind the girl's head and shoulders is the upper half of a disk which represents the sun radiating light. It is not disputed but that this proposed trade-mark is quite similar to the trade-mark used by opposer. Appellant styles it "A Chinese copy" of the same. When placed side by side differences are apparent, but only in detail — the maid of applicant appears younger than the maid of opposer and bundles of wheat are substituted for a tray of grapes.

Applicant seeks registration for the mark to be used for wheat flour which is sold in barrels and other containers to bakers and grocers and its alleged first date of use is August 5, 1926. Opposer's use of the trade-mark antedated that of applicant by eleven years, and since 1905 it has been used on a large variety of goods. Its use began on dried raisins, and since 1905 the line of merchandise manufactured and sold by opposer under said trade-mark has been extended until at the date of filing the opposition, opposer had six different registrations in the Patent Office used on many different kinds of dried fruits, also raisin-seed, salad oil, mince meat, raisins and nuts, dried fruits and raisins, candy, canned raisins, flavoring extracts, nuts, table syrup, rice, sauces for food flavors, vinegar, edible oil, molasses, breakfast cereals, baking powder, cornstarch, pie fruit, and raisin syrup.

One of the trade-marks registered by the opposer in 1924, consists of the words "Sun-Maid Baker," which are placed on a baker's cap worn by a man in baker's uniform, holding a cut loaf of fruit or raisin bread in his hand, the fruit or raisins showing at the end of the loaf.

The Sun-Maid Raisin Growers of California are the manufacturers and sellers of products grown by the Sun-Maid Raisin Growers' Association. All of the stock of the latter is owned by the former. The allied companies, according to the record, up to May 31, 1927, had spent over $14,000,000 in advertising the Sun-Maid products, and up to that time, the value of the products handled was more than $198,000,000, and they were sold extensively throughout the entire United States and practically every civilized country in the world.

The Examiner of Trade-Mark Interferences dismissed the notice of opposition and adjudged that the applicant be entitled to registration on the ground that the merchandise upon which applicant sought to use and had used its trade-mark was not of the same descriptive properties as the merchandise of opposer. Upon appeal, the Commissioner affirmed the action of the Examiner and held that table syrup, raisin syrup, cereals, and baking powder were not merchandise of the same descriptive properties as wheat flour.

The record discloses that raisin syrup is chiefly used by and sold to the baking trade and is sold in barrels and in five-gallon cans and that it is used for making raisin bread and other related pastry products, and is also used to a certain extent for table purposes. The American Grocer Company, applicant, located at Little Rock, Ark., sells flour in barrels to the same baking trade in Arkansas and elsewhere to which opposer sells its line of goods, both selling under the trade-mark name "Sun-Maid."

The record offers no reason why applicant seeks to use a trade-mark almost identical with that of opposer, but the reason to us seems obvious. Applicant hopes to profit from the well-advertised and favorably known merchandise sold by opposer. That confusion would result in the mind of the public and to the purchasers of goods, if applicant used his proposed Sun-Maid trade-mark on wheat flour, we think is more than probable. No proof of actual confusion is necessary in this case. Patton Paint Co. v. Orr's Zinc White, 48 App. D. C. 221; A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 36 App. D. C. 451.

It seems to be the position of the Patent Office and of the applicant that as affects the goods at bar, it is immaterial if confusion and deceit result as long as the merchandise of the one is not of the "same descriptive properties" as the merchandise of the other, giving the phrase "same descriptive properties" its ordinary and restricted meaning.

To so conclude is to lose sight of the trade-mark legislation as a whole and the purpose of its enactment. "`The law of trade-marks is but a part of the broader law of unfair competition' * * * the general purpose of which is to prevent one person from passing off his goods or his business as the goods or business of another." American Steel Foundries v. Robertson, 269 U. S. 372, 46 S. Ct. 160, 162, 70 L. Ed. 317. Congress by the enactment of the Trade-Mark Act of 1905 (15 USCA §§ 81-109) never intended to authorize the registration of a trade-mark, the use of which could be prevented by resort to common law. See California Packing Corp. v. Tillman & Bendel, Inc., 40 F.(2d) 108, and B. F. Goodrich Co. v. Clive E. Hockmeyer (Zip-On Mfg. Co., substituted), 40 F.(2d) 99, both decided concurrently herewith. Also, see Yale Electric Corp. v. Robertson (C. C. A.) 26 F.(2d) 972, and Levy v. Uri, 31 App. D. C. 441.

Congress was given no constitutional authority to pass legislation concerning trade-marks inconsistent with the common law (American Steel Foundries v. Robertson, supra), and we think it is obvious from the context of the act and the report of the committee which reported the trade-mark bill that...