Sunseald Products v. Domino Canning Ass'n

• Decision Date: 08 July 1941
• Citation: 3 So.2d 377,51 U.S.P.Q. 418,147 Fla. 700
• Parties: SUNSEALD PRODUCTS, Inc., v. DOMINO CANNING ASS'N.
• Court: Florida Supreme Court

3 So.2d 377

147 Fla. 700, 51 U.S.P.Q. 418

SUNSEALD PRODUCTS, Inc., v. DOMINO CANNING ASS'N.

Florida Supreme Court

July 8, 1941

Rehearing Denied July 25, 1941.

Appeal from Circuit Court, Hillsborough County; L. L Parks, judge.

Alvan B Rowe, of Palmetto, for appellant.

L. M Turner, of Tampa, for appellee.

THOMAS, Justice.

A bill of complaint was filed by Domino Canning Association against Sunseald Products, Inc., and Florida Everglades Company, two corporations, and A. C. Whitefield, which contained a prayer for injunction against the defendants to prevent their marketing citrus products under the trade name 'Sunseald' and the use of that word as a part of the corporate name of one of the defendants. The corporation Florida Everglades Company, and the individual defendant, A. C. Whitefield, were, upon their motions to dismiss, eliminated as parties to the suit and the cause proceeded to a trial of the controversy between the other defendant, Sunseald Products, Inc., and Domino Canning Association.

At the time of the dismissal of these litigants a stipulation was signed by the counsel for the remaining parties wherein it was agreed that 'the proof and decree in this case shall be limited to the sole issue as to which, if either, of these parties is entitled to the exclusive use of the word 'Sunseald' on their canned citrus products.' This stipulation, which was approved by the court, having narrowed the controversy to the one question stated we will confine our observations to that proposition. Esch et al. v. Forster, et al., 123 Fla. 905, 168 So. 229. There is, therefore, no necessity to discuss or determine the charge of the appellant that the bill was multifarious.

At the conclusion of the testimony heard by the chancellor he entered a final decree declaring that the plaintiff, Domino Canning Association, was entitled to the exclusive use of the trade name and enjoined the defendant, Sunseald Products, Inc., from employing that word as a part of its corporate name and from marketing or selling any citrus products under it except with the permission of the plaintiff.

The trade name was originated by A. C. Whitefield, who was instrumental in the formation of Florida Sunseald Products, Inc., the latter using the label on its products. Later this same person caused to be formed Whitefield Citrus Products Corporation and the trade name 'Sunseald' was registered in the United States Patent Office by Whitefield who represented that it 'belonged to the company.' Evidence is that simultaneously an agreement was made between this company and Whitefield under which title to the trade name was to be held by the latter, while the former was given license to use it on its products. Whitefield Citrus Products Corporation Inc., met financial distress and was subsequently declared bankrupt, whereupon, its assets were purchased by an attorney for an undisclosed principal. Meanwhile, during the proceedings in bankruptcy Whitefield assigned the trade name to appellant. The appellee corporation was then organized, and on April 5, 1940, shortly after the sale under order of the federal court to the agent, the trustee in bankruptcy issued a bill of sale to the newly formed company conveying all of the assets of the bankrupt estate, including trade-marks. On the same day the trustee executed an assignment to Domino Canning Association reciting in it that the assignee was the highest and best bidder for all of the assets of the bankrupt estate, 'including the good-will of...