Touraine Co. v. F.B. Washburn & Co.

• Decision Date: 05 February 1923
• Docket Number: 1535.
• Citation: 286 F. 1020
• Parties: TOURAINE CO. v. F. B. WASHBURN & CO.
• Court: U.S. Court of Appeals — District of Columbia Circuit

286 F. 1020

TOURAINE CO. v. F. B. WASHBURN & CO.

No. 1535.

United States Court of Appeals, District of Columbia.

February 5, 1923

Submitted January 8, 1923.

D. P Wolhaupter, of Washington, D.C., for appeals.

Before SMYTH, Chief Justice, ROBB, Associate Justice, and SMITH Judge of the United States Court of Customs Appeals.

SMYTH Chief Justice.

The Commissioner of Patents, on the opposition of F. B. Washburn & Co., refused to register to the Touraine Company the word 'Touraine' as a trade-mark for candy and confections including chocolates, etc., and the latter company brings the proceeding here for our review.

Both parties are engaged in the manufacture of candy, one in Brockton and the other in Boston, Mass., which they sell to wholesalers and jobbers. A grocery company adopted the mark in 1906, and the next year conveyed all right to it to the Touraine Company. From the time of the conveyance the latter company has used it as a trade-mark for all its products. Opposer is entitled to 1897 as the date on which it commenced the use of the mark. It was, therefore, undoubtedly the first to adopt and use it.

But was its use a trade-mark use, or only a piece or grade mark use, to indicate the ingredients of the piece to which it was attached? Opposer put out over 200 different pieces or mixtures, but the word 'Touraine' was applied to only one, and in the following manner:

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Whenever a wholesaler desired a piece of a certain kind, he ordered it by its appropriate name. Opposer had two registered trade-marks, one of which, 'Waleco,' and a seal, are displayed on the above specimen. If the word 'Touraine' was used as a technical trade-mark, then there were two such marks on the package. Opposer's superintendent for 25 years said the word 'Touraine' referred distinctly to the grade or quality of the chocolate. Another employe, who had been in opposer's service for 7 years and in charge of the chocolate room for about 4 years, testified to the same effect. An employe of 22 years' service declared that the Waleco trade-mark was used on all the opposer's goods, so far as she knew. The opposer at times sold goods procured from the applicant, with the mark 'Touraine' on the packages. For 14 years, with full knowledge of the use of the mark by applicant, the opposer made no objection to its use. Many years ago the applicant requested the opposer to refrain from the use of the mark. It refused to do so, for the stated reason that it had been using the mark for a long time, but agreed not to apply it to any kind other than the chocolate piece. This was testified to by a witness who worked for 25 years for the opposer, and had risen from the position of office boy to the rank of general manager. True, he had been discharged by the opposer; but this does not weaken his testimony, because he describes exactly what was done, according to the other witnesses, by the opposer, so far as the use of the mark is concerned.

It appears no one connected with the opposer thought of claiming the word 'Touraine' as anything more than a grade mark, until one Miner, who joined the company in 1916 'originated the opposition,' to use his own words. He was prompted to do so by a notice in a bulletin that the applicant had asked for the registration of the word. This was about four...