Walter Baker & Co. v. Baker

• Decision Date: 13 May 1898
• Docket Number: 6,440.,6,439
• Parties: WALTER BAKER & CO., Limited, v. BAKER (two cases).
• Court: U.S. District Court — Southern District of New York

87 F. 209

WALTER BAKER & CO., Limited, v. BAKER (two cases).

Nos. 6,439, 6,440.

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

May 13, 1898

John Vincent, for defendant.

SHIPMAN Circuit Judge.

These are bills in equity brought by Walter Baker & Company Limited, a corporation under the laws of the state of Massachusetts, and a citizen of that state, and located in Dorchester therein, against William P. Baker, of the city and state of New York, to restrain that use of trade names and trade designations upon his packages of unsweetened chocolate and his packages and cans of powdered cocoa, which decoys the purchaser into the belief that he is purchasing the article manufactured by the complainant, and which was devised for that fraudulent purpose. The questions in respect to the unfair use of the complainant's name by persons, who also bear the name of 'Baker,' and who seek, by the use of their own name in a way which simulates the manner and form in which the complainant and its predecessors have long used the name, to gain artificially the reputation which the complainant's goods have acquired, have been before the courts of the United States in the Western district of Virginia, and in this circuit. Walter Baker & Co. v Sanders, 26 C.C.A. 220, 80 F. 889.

The important facts in the cases now before this court can be compactly stated: The complainant is the successor of James Baker in the manufacture of bitter chocolate, who is alleged in the complaint to have commenced such manufacture in Dorchester about the year 1780. It is proved that since 1845 and the death of Walter Baker, who, in his lifetime, was the owner of the business, the manufacture has been carried on under substantially the name of the present corporation, and that the complainant is the owner of the good will of the business, and has the exclusive use of the stamps, brands and names 'W. Baker,' 'W. Baker & Co.,' 'Walter Baker,' and 'Walter Baker & Co.,' in the manufacture and sale of chocolate and powdered cocoa. The complainant and its predecessors have been the leading manufacturers in this country of chocolate and cocoa articles for domestic use. Their products are the most popularly and widely known and sold, and are generally spoken of by the trade and by consumers as 'Baker's Chocolate' and 'Baker's Cocoa.' The chocolate cakes have been uniformly, for the last 40 years, presented to the public in rectangular form, inclosed in a blue wrapper, which had a yellow label, bearing upon it, conspicuously, the words 'Baker's Chocolate.' Upon the bottom of the label the words 'W. Baker & Co., Dorchester, Mass.,' were formerly used. At present the label has the words 'Made by Walter Baker & Co., Limited. ' The defendant's testimony was taken in April, 1897. He had then been a wholesale grocer in the city of New York for about seven or eight years. Before that time he was a dealer in tea and coffee. In September, 1896, he commenced to buy chocolate from the Brewster Company, of Newark, in 10-pound cakes, and has since continued to buy such cakes from that company, and from Crane & Martin. He remolded these cakes into rectangular half-pound cakes of the customary size and shape, wrapped each cake in a blue wrapper, put upon the wrapper a buff or salmon colored label, having upon it conspicuously, in script, the words 'W. P. Baker's,' followed by 'No. 1 Extra Chocolate.' At the bottom of the label were the words, 'W. P. Baker, New York, U.S.A.' This article has been freely sold, and has come into the stock of retail dealers. It has been delivered by them to purchasers as 'Baker's Chocolate,' and has been sold in response to requests for 'Baker's Chocolate,' and in one instance it was offered to a retail dealer by a traveling salesman as Baker's goods. The manner in which the defendant buys and remolds, wraps, and labels the goods which he purchases, shows that he adopted his label for the purpose of gaining surreptitiously the reputation which Baker's chocolate or Baker's goods possess, and for the purpose of deceiving the consumer into the belief that his order for an article of known value was being complied with. It is said that he has not been shown to have deceived any one, or to have instigated a deception, but that he has testified that he uniformly asks his customers if they want his goods as distinguished from those of complainant. The reply to these suggestions and to this testimony is that he intentionally uses his name as a manufacturer of chocolate in the same way that the complainant and its predecessors have long been accustomed to use their name as manufacturers of the same article, and that he has thus intentionally presented his article to the public under a form of words which would naturally lead the purchaser to believe that it was the complainant's manufacture. The well-known short name by which the public styles the article of the complainant is 'Baker's Chocolate,' and thus the public regards what is presented under that name as the complainant's article, and associates the name with a particular factory of long existence and permanence. The defendant has a right to manufacture chocolate, and to acquire his own reputation under his own name, but not to use the name...