Van Camp Sea Food Co. v. Westgate Sea Products Co.

• Decision Date: 05 November 1928
• Docket Number: No. 5516.,5516.
• Citation: 28 F.2d 957
• Parties: VAN CAMP SEA FOOD CO., Inc., v. WESTGATE SEA PRODUCTS CO.
• Court: U.S. Court of Appeals — Ninth Circuit

28 F.2d 957 (1928)

VAN CAMP SEA FOOD CO., Inc., v. WESTGATE SEA PRODUCTS CO.

No. 5516.

Circuit Court of Appeals, Ninth Circuit.

November 5, 1928.

Newby & Newby and Nathan Newby, all of Los Angeles, Cal. (Dee Holder, of Los Angeles, Cal., of counsel), for appellant.

Wm. S. Graham, of San Francisco, Cal., for appellee.

Before GILBERT, RUDKIN, and DIETRICH, Circuit Judges.

DIETRICH, Circuit Judge.

Both parties are packers of tuna fish, with places of business in Southern California. The appellant (plaintiff below) adopted, used, and caused to be registered in the United States Patent Office as its trade-mark the phrase "Chicken of the Sea." Thereafter the appellee began to use, and caused to be registered, as its trade-mark "Breast-O'-Chicken." Alleging that this is an infringement of its mark, appellant brought this suit to enjoin its use. By the amended bill we are informed that in either case the trade-mark is applied by displaying it in conspicuous letters upon a band-label pasted upon the cans containing the canned fish; copies of the labels being exhibited with the pleading. While there are averments in the bill which would be material in a suit to restrain acts of unfair competition, admittedly such an issue is not involved. Upon defendant's motion, the court below entered a decree of dismissal, and the sole question on this appeal is whether the amended complaint discloses a cause of action for the infringement of appellant's registered trade-mark.

It is first complained that the court dismissed the bill without hearing evidence. We are not aware of any distinctive principle of procedure in such cases. Where there is doubt, a bill for infringement should not be dismissed upon motion; but a like rule is applicable generally to bills in equity. Failey v. Talbee (C. C.) 55 F 892; St. Louis & S. F. R. Co. v Allen (C. C.) 181 F. 710, 723. When it is clear that under no state of the evidence can plaintiff make a case of infringement, it would be idle to go further, and a motion to dismiss should be granted. Sprigg v. Fisher (D. C.) 222 F. 964; Collins Chem. & Mfg. Co. v. Capitol City Mfg. Co. (C. C.) 42 F. 64, and see, also, Mallinson v. Ryan (D. C.) 242 F. 951; M. C. Peters Milling Co. v. International Sugar Feed No. 2 Co. (C. C. A.) 262 F. 336, 339; P. Lorillard Co. v. Peper (C. C. A.) 86 F. 956; American Tobacco Co. v. Globe Tobacco Co. (C. C.) 193 F. 1015; S. R. Feil Co. v. J. E. Robbins Co. (C. C. A.) 220 F. 650; Richmond Remedies Co. v. Dr. Miles Medical Co. (C. C. A.) 16 F.(2d) 598; Liggett & M. T. Co. v. Finzer, 128 U. S. 182, 9 S. Ct. 60, 32 L. Ed. 395; Hopkins on Trade-Marks (3d Ed.) p. 467.

We are of the opinion that such a case is presented by the amended bill with its exhibits. Were the word "chicken," common to the two trade-marks, a purely fanciful term, and made equally prominent in both, we might have a case of sufficient doubt to warrant a hearing of evidence. But, as registered, the two combinations are similar neither in appearance nor in sound, and if, as appellant contends, it be conceded that "chicken" is the dominant word in its combination, it cannot be said to have such prominence in that of the defendant. Moreover, "chicken," as used by the plaintiff, is not a purely fanciful term, but is measurably descriptive. True, in its primary or most popular meaning, it designates the young of the domestic hen, and less commonly, the young of wild birds, but it is sometimes used to denote...