U.S. Tobacco Co. v. McGreenery

• Decision Date: 23 March 1906
• Docket Number: 209.
• Citation: 144 F. 531
• Parties: UNITED STATES TOBACCO CO. v. McGREENERY et al.
• Court: U.S. District Court — District of Massachusetts

144 F. 531

UNITED STATES TOBACCO CO. v. McGREENERY et al.

No. 209.

United States Circuit Court, D. Massachusetts.

March 23, 1906

Alex P Browne and Paul R. Blackmur, for complainant.

Edward S. Goulston, for defendants McGreenery and others.

Moody Burdett, Wardell & Snow, for American Tobacco Co.

LOWELL Circuit Judge.

This is a bill in equity to restrain unfair competition which is alleged to arise from the defendant's imitation of the complainant's paper label or wrapper used to make up packages of cut plug tobacco. The packages are of the same size. The paper is of the same quality and dark red color. The lettering is gilt, and the conspicuous words are printed in much the same type. One large face of the complainant's wrapper (which I shall call the front though it may be taken indifferently as the front or the back) has printed at its top the words 'Central Union,' placed one above the other. Near the middle is a conspicuous device, a woman's face in a half moon, the latter bearing the words 'Union Made.' Below this device the words 'Cut Plug' appear in one line, and at the very bottom of the label in much smaller letters 'United Tobacco Co., Richmond, Virginia.' The other large face of the package (which I shall call the back) differs from the front, in that it bears at the bottom, instead of the manufacturer's name, the 'Allied Printing Trades Council Union Label, Richmond, Va.,' and has, beside the device, a gilt edged space upon which is pasted the light blue label of the Tobacco Workers' Union. One narrow side of the package is marked 'Smoke and Chew,' the other carries the statutory notice. The top and bottom are covered with tin foil.

The front of the defendant's package has printed at the top the words 'Union Leader' placed one above the other. Near the middle is a conspicuous device, an eagle with outspread wings, resting upon a package of the defendant's tobacco marked 'Smoke and Chew.' At the bottom of the label are the words 'Cut Plug' in one line. The back of the package bears the words 'Union Leader' and 'Cut Plug' in perpendicular lines, and is admitted to be without resemblance to any part of the complainant's wrapper. One narrow side of the defendant's package is marked 'Union Leader,' the other carries the statutory notice. Top and bottom are covered with tin foil. Wrappers like those of the complainant in shape, size, tin foil, colored paper, and style of gilt lettering have long been common. The defendant owns several 'brands' of this sort which are older than the complainant's. The color of the paper has long been used to designate a mild tobacco. Varied devices, unlike complainant's or defendant's, have been printed upon similar packages. 'Cut Plug' merely described the kind of tobacco inclosed. The phrases 'Smoke and Chew' and 'Smoking-Chewing' are also old in the art. Gail v. Wackerbarth (C.C.) 28 F. 286. That the packages considerably resemble each other is obvious, but most of the resemblance arises from features which have been combined in common use, and to which no one has exclusive right. That any one is deceived by the size, shape, tin foil, or general makeup of the package, or by its paper, lettering, or color, does not help the complainant's case. All these are old separately and in combination. The complainant must show deception arising from some feature of its own, not common to the public. As was said in Coats v. Merrick Thread Co., 149 U.S. 562, 573, 13 Sup.Ct. 966, 970, 37 L.Ed. 847, the purchaser of thread 'is chargeable with knowledge of the fact that any manufacturer of six cord thread has a right to use a black and gold label, and is bound to examine such label with sufficient care to ascertain the name of the manufacturer. ' 'He (the plaintiff) must make out, not that the defendant's are like his by reason of those features which are common to them and other people, but he must make out that the defendant's are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plaintiff's from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails. ' Payton v. Snelling, 17 R.P.C. 48, 52. 'The evidence is very strong that one tin may be mistaken for the other, very likely; but why? Because of the features common to them and common to all. ' Payton v. Snelling, 17 R.P.C. 628. 'The only question you have then to consider is whether the defendants' get-up is so like the plaintiffs' as to be calculated to be mistaken for it. But when, as in this case and in the last, what is called the plaintiffs' get-up consists of two totally different things combined, namely, a get-up common to the trade, and a distinctive feature affixed or added to the common features, then what you have to consider is not whether the defendants' get-up is like the plaintiffs' as regards the common features, but whether that which specially distinguishes the plaintiffs' has been taken by the defendants. ' Payton v. Ward, 17 R.P.C. 58.

Passing from the features which are 'common to all' in the case at bar, we find that the back and one side of the Union Leader package are quite unlike the corresponding parts of the Central Union. The likeness arising from the statutory notice is immaterial. The devices are totally different, and both are conspicuous. From the Union Leader package are wanting the two trade union labels, at least one of which is conspicuous upon the front of the Central Union. If the back of the Central Union package be compared with the front of the Union Leader, the distinction of the two union labels is replaced by that of the manufacturer's name.

Complainant argued altogether upon the word 'Union,' which...