Von Mumm v. Frash

• Decision Date: 07 June 1893
• Parties: VON MUMM et al. v. FRASH et al.
• Court: U.S. District Court — Eastern District of New York

56 F. 830

VON MUMM et al. v. FRASH et al.

United States Circuit Court, E.D. New York.

June 7, 1893

BENEDICT District Judge.

This is a suit in equity, brought by G. H. Mumm & Co., manufacturers of champagne wine, to restrain the defendants from infringing their trade-mark, and from conducting an unfair competition by manufacturing and selling their manufacture put up in a form calculated to induce its purchase as the champagne wine known as 'G. H. Mumm & Co.'s Extra Dry.' The following facts appear by the testimony: The complainants are aliens engaged in the production of champagne wine at Reims in the republic of France, under the style of G. H. Mumm &amp Co. Their business was established there in 1851, and their wines have since been extensively sold in the United States. During the year 1866 they originated a champagne wine having what is known as a 'dry' flavor. To this wine they then gave the name of 'Extra Dry.' This name they have ever since applied, in a variety of ways, upon the bottles in which they have sold wine of the character originated by them in 1866, and upon no other bottles. This wine, upon its introduction into the United States, became popular. Since then, according to the testimony of complainants' agents, millions of bottles of it have been sold in the United States, and for a period of from 15 to 20 years it has been one of the most, if not the most, popular brand of champagne sold in the United States. The words 'Extra Dry,' thus applied to the wine in question when it was first put upon the market, have been so extensively and so exclusively used to designate this particular wine that the words have come to be, to a large extent, a name whereby to distinguish the wine as wine manufactured by the complainants, and of the quality of the wine originated by them in 1866. It also appears that, since the popularity of this wine was assured, other manufacturers have, to some extent, used the words 'Extra Dry' in connection with wines of their manufacture; but according to the testimony the term has never come to be the well-known name of any wine, save only the champagne wine of G. H. Mumm & Co., so named by them in 1866. This is shown by the testimony in the case that a written order, 'Please give the bearer one pint of 'Extra Dry' cold,' when presented at the Astor House, at the Cosmopolitan Hotel, at the Hoffman House, at the St. James Hotel, and at the cafes of Frederick Gerkens, of Nelson & Co., of Cable, Bailey &amp Co., in each instance, brought a bottle of G. H. Mumm & Co.'s Extra Dry Champagne. The effect of this testimony is not overcome by the testimony introduced in behalf of the defendants to show that in other places a similar order provoked the inquiry, 'What brand of 'Extra Dry?"

In order further to distinguish their champagne wine of the character in question, G. H. Mumm & Co., at the time of introducing the wine, placed upon all bottles containing wine of this character a new and characteristic metal capsule, of a peculiar rose color, differing in color from any other known capsule then in use, upon which capsule were stamped the words 'G. H. Mumm & Co.;' and this rose-colored capsule, which the complainants were the first to adopt, and which they applied to their champagne, named by them 'Extra Dry,' has come to be an important, if not the principal, means by which, in practice, that wine is identified. The manager of the Astor House bar testifies that he is invariably governed by the rose-colored cap in identifying this wine. Mr. Chamberlain, of Washington, testifies that, when he sees the rose-colored cap upon a bottle of champagne wine, he takes it to be G. H. Mumm & Co.'s Extra Dry. The importance of the cap of a bottle of champagne wine as a means of identification appears by the fact proved, that in use the principal label upon a bottle of champagne wine is frequently washed off when the wine is cooled, and, if still remaining on the bottle when served, is often covered by the napkin usually wrapped about a bottle of wine when the wine is poured out.

Furthermore, in order to distinguish wines of their manufacture, G. H. Mumm & Co., shortly after their organization, some 40 years ago, adopted a trade-mark consisting of the representation of an eagle with head erect and wings extended, which they applied to all of their wines by means of labels and otherwise. This trade-mark they registered in the United States in 1876, and in the year 1881. They have also used extensively, in connection with the wine in question, advertising show cards, containing the representation of a French or imperial mantle, on which were imprinted the words, 'G. H. Mumm & Co. Extra Dry;' and this to such an extent, according to the testimony, that the mantle, with the words 'Extra Dry' imprinted upon it, has become associated with the wine in question in the public mind.

These several identifying marks have been placed upon all bottles of the G. H. Mumm & Co.'s Extra Dry Champagne in the following manner: In the upper field of the principal label of the bottle the trade-mark above described is imprinted. Just below the capsule a small label is placed, upon which the above described trade-mark is also imprinted. Above this label the neck and mouth of the bottle is inclosed in a metal capsule of the peculiar rose color adopted by G. H. Mumm & Co. in 1866, upon which capsule the words 'G. H. Mumm & Co.,' running perpendicularly, are stamped in the metal. On the top of the capsule is stamped, in blue color, the imperial mantle above described, upon which mantle the trade-mark is also stamped. By these means a very perfect identification of the wine is accomplished.

The defendants make and sell a fluid which, according to the testimony, is American wine aerated; that is to say, made to sparkle, when the bottle is opened, by introducing carbonic acid gas into the bottle, under pressure. This manufacture the defendants dress up as follows: They use an ordinary champagne bottle. In the upper part of the principal label upon the bottle they place the words 'Extra Dry,' and also a colorable imitation of the trade-mark of G. H. Mumm & Co., imprinted upon a colorable imitation of the imperial mantle above described. Just below the capsule they place a label, on which is a similar imitation of the trade-mark and mantle of G. H. Mumm & Co., and the words 'Extra Dry.' Above this label they inclose the neck and mouth of the bottle in a metal capsule of the rose color adopted in 1866 for G. H. Mumm & Co.'s Extra Dry. Upon the capsule the words 'Extra Dry' are stamped, the words running perpendicularly, in the same place where, on the wine of G. H. Mumm & Co., the name of 'G. H. Mumm & Co.' is stamped. Upon the top of this metal capsule the defendants stamp, in blue color, an imitation of the trade-mark and the imperial mantle employed by the complainants to identify G. H. Mumm & Co.'s Extra Dry. It will be observed that in two places upon their bottle, where, upon a bottle of the complainants' wine, the words 'G. H. Mumm & Co.' are placed, the defendants put the words 'Extra Dry,' which words, as already stated, have, by long and extensive use, become associated in the public mind with G. H. Mumm & Co.'s Extra Dry, as the name thereof. From this description it is seen that the similarity in the dressing up of the bottles of the defendants' manufacture and the bottles of G. H. Mumm & Co.'s Extra Dry is striking.

The principal labels upon the bottles of the defendants' manufacture differ in some particulars from the principal labels on the complainants' bottles. On the principal label of a bottle of the genuine G. H. Mumm & Co.'s Extra Dry, under the trade-mark, the words 'Extra Dry' are printed with the words, 'G. H. Mumm & Co., Reims, France,' while on the principal label of the defendants' product, under the words 'Extra Dry,' are the words, 'Imperial Cabinet, Frash & Co.' This difference in the principal labels is of little importance, however, by reason of the fact proved, that the principal label of a bottle of champagne wine is frequently gone when served, or, if present when served, frequently covered. For the same reason it is of little importance to the present controversy that the defendants put their own name upon the principal label of their bottles, and do not put there the name of G. H. Mumm & Co. What is of importance is that the defendants, on the principal label of their bottles, put the words 'Extra Dry,' coupled with an imitation of the trade-mark of G. H. Mumm & Co., imprinted upon an imitation of the imperial mantle above described, and the further fact that, while the complainants put the name of G. H. Mumm & Co. upon their bottles in three different places besides the principal label, the defendants put their name only upon the label, which, as already stated, is frequently, if not generally, absent from the bottle when the wine is served, and can easily be removed therefrom without its absence being observed. In connection with the use of the words 'Extra Dry' by the defendants, it is important to observe that the testimony discloses that the words 'Extra Dry' are not used by the defendants to describe any quality of their article, but for the purpose of fraud. The testimony shows that the manufacture of the defendants is all of the same grade, without, so far as appears, any 'dry' flavor. This article they sell under various names, sometimes with, sometimes without, the words 'Extra Dry,' and they keep on hand a great many labels, bearing different names, mostly fictitious, which they apply to the bottles of their article, as may be desired.

From the testimony presented the following conclusions may properly be drawn: (1) That the defendants dress up their manufacture in a way calculated to...