Walter Baker & Co. v. Gray

• Decision Date: 24 November 1911
• Docket Number: 3,046.
• Citation: 192 F. 921
• Court: U.S. Court of Appeals — Eighth Circuit
• Parties: WALTER BAKER & CO., Limited, v. GRAY et al.

192 F. 921

WALTER BAKER & CO., Limited, v. GRAY et al.

No. 3,046.

United States Court of Appeals, Eighth Circuit.

November 24, 1911

Dorr Raymond Cobb (Edgar N. Wilson and John J. Sullivan, on the brief), for appellees.

Before ADAMS and SMITH, Circuit Judges, and AMIDON, District Judge.

ADAMS Circuit Judge.

This was a bill to restrain unfair trade, which the learned trial court dismissed. Hence this appeal.

Complainant is a corporation organized and existing under the laws of the state of Massachusetts, and by divers successions and transfers claims the right, alleged to have originated as early as 1780 in one James Baker, to carry on the business of manufacturing and selling chocolate and cocoa under the trade or corporate name of 'Walter Baker & Co.' and particularly claims the exclusive right to the use of the word 'Baker' in connection with the sale of its chocolate and cocoa. It is charged in the bill that the defendants Sydney C. Gray and Clinton C. Gray, doing business under the firm name of Gray Mercantile Company, at Columbus in the state of Nebraska, have infringed complainant's rights by selling chocolate and cocoa manufactured by a corporation of New York known as 'William H. Baker Syracuse, Inc.,' under the descriptive designation of 'Baker's Chocolate' and 'Baker's Cocoa.'

Defendants in their answer admit complainant's exclusive right to the use of the name 'Walter Baker' in any of the combinations specified by it, but deny it has any exclusive right to the use of the name 'Baker.' They admit they are selling the product of the Syracuse Baker; and allege that for some years prior to 1899 a man by the name of William H. Baker had been engaged in the wholesale grocery business in Syracuse, and in that year determined to embark upon the business of manufacturing and selling chocolate and cocoa; that, with a view to accommodating his business to the rights of Walter Baker & Co. of which he had full information, he devised and adopted a label to be placed upon the packages of his product which so fairly distinguished and differentiated them from the packages of Walter Baker & Co. that no confusion could arise, and that upon a conference between the two concerns the label so devised and adopted by the Syracuse Baker was approved by the Massachusetts corporation; that William H Baker and his subsequently formed corporation of the same name, soon after commenced to use the label so adopted and approved, expended large sums of money in the development of their trade under it, and continued the use of that label without objection by Walter Baker & Co. until about the time this suit was instituted in 1904.

By reference to the cases of Walter Baker & Co. v. Baker (C.C.) 77 F. 181, Walter Baker & Co. v. Sanders, 26 C.C.A. 220, 80 F. 889, Baker v. Baker, 53 C.C.A. 157, 115 F. 297, and Walter Baker & Co. v. Slack, 65 C.C.A. 138, 130 F. 514, which related to a controversy between the complainant in this case and one W. H. Baker of Winchester, Va. (and not William H. Baker of Syracuse, whose rights are now involved), the genesis and development of complainant's business as well as valuable contributions to the law governing the rights and limitations upon the rights of individuals to make use of their own patronymic as a trade-name can be found; and, in view of the facts there disclosed, little need be said now concerning the general facts of the case. Suffice it to say that complainant's label on the front of its package is and for a long time has been of a distinctive yellow color upon a dark blue background, having on its front side in large black letters: 'BAKER'S CHOCOLATE-- CELEBRATED AS A NUTRITIVE, SALUTARY AND DELICIOUS BEVERAGE FOR MORE THAN A CENTURY.'

This is followed by 10 lines of descriptive matter in small type, and then by the words in large type: 'MADE BY WALTER BAKER & CO., LIMITED, DORCHESTER, MASS.'

On the reverse side of the package appears in lavender color an attractive picture of a waitress with a white cap and apron, carrying in her outstretched hands a tray with two cups on it. Above the picture are the words, 'La Belle Chocolatiere,' and below it the words, 'Walter Baker & Co., Limited, Registered in U.S. Patent Office.'

The label on defendants' package being that of the Syracuse Baker upon whose rights they stand is of white color over a dark blue background. On it, in large green letters, appears this legend:

'JUSTICE Brand CHOCOLATE

Premium No. 1.

Highest Grade Made in the World.'

Then follow three lines only, of directions in small type; afterwards in bold large type the following: 'WILLIAM H. BAKER, SYRACUSE, INC.'

On the reverse side of their package is a representation of the Goddess of Justice in scarlet color holding aloft in one hand the scales of justice and in the other the conventional sword. Over the head is inscribed in large and prominent letters the words 'JUSTICE BRAND,' and beneath in like large and prominent letters are the words, 'COCOA AND CHOCOLATE, WILLIAM H. BAKER, SYRACUSE, INC.'

These labels are strikingly dissimilar, and each prominently and unevasively discloses the manufacturer of its contents. In the spirit of fairness which seemed to actuate both parties in the year 1899 and for several years thereafter, the labels were regarded and treated as quite sufficient to prevent any deception or confusion.

In the trial before the Circuit Court no claim was made that the Syracuse label failed to properly distinguish between the product of complainant and the Syracuse Baker, and the case was there argued and decided on the assumption that the labels on defendants' goods (which were the same as those of the Syracuse Baker from whom they purchased them) were undeceptive and lawful. There could not well be, neither has there been, any serious contention that defendants in handling the Syracuse Baker's product have been guilty of unfair competition by simulating complainant's labels or advertising matter. This kind of deception, being that which commonly characterizes unfair competition in trade, is conspicuously absent in this case.

Practically the only contention here is that defendants, who keep the product of both the Bakers for sale in their grocery at Columbus, have been guilty of unfair competition in trade because they have not on an inquiry by customers for 'Baker's Chocolate,' without more, handed out at once complainant's packages or have not affirmatively called attention to the fact that there were two kinds of Baker's chocolate, one Walter Baker's and the other William H. Baker's, and asked inquirers which they desired. This contention must be considered in the light of the following facts which are disclosed in the record:

The complainant under the name of 'Walter Baker & Co.' and its predecessors had for a long time and until about the year 1895, when one W. H. Baker of Virginia and later William H. Baker of Syracuse, engaged in the chocolate business, enjoyed a practical monopoly of the name of 'Baker' in connection with that business. Prior to this date its product had been commonly known and referred to as 'Baker's' chocolate or cocoa, and even up to the time the testimony was taken in this case in 1907 the word 'Baker' used alone, in common speech, concerning chocolate or cocoa, had generally denoted the product of the complainant company. But the defendants the Gray Mercantile Company prior to the institution of this suit had established a large demand in Columbus for the product of William H. Baker of Syracuse, which had there become so well known for its excellence that many purchased it in preference to the Walter Baker product. There is considerable evidence to the effect that, since William H. Baker of Syracuse entered into the business, a growing disposition has arisen to discriminate between the Bakers, when calling for chocolate. Customers desiring complainant's goods are beginning to call for 'Walter Baker's.' Even the complainant company in its advertisements in recent years has recognized the necessity for this discrimination and has emphasized it by urging purchasers to specify 'Walter Baker's' goods in making their orders. Not only so, but in these later years complainant's product has become very generally known and ordered by purchasers by distinguishing names other than 'Baker's,' as, for example, the 'Yellow Label,' the 'Chocolate Girl,' and frequently as 'Baker's Yellow Label,' or 'Baker's Chocolate Girl.'

The retail selling price of the products of both Bakers at Columbus was the same; but defendants, being able to purchase the Syracuse Baker's chocolate at a less price than the Walter Baker's, made a little greater profit by selling the former to its customers rather than the latter; and, when Baker's chocolate without further specification or other description was asked for, they generally handed out the William H. Baker package. There having been an extensive demand for both these products in and about Columbus, users became entirely familiar with the dress of the different packages, and recognized complainant's as the 'Yellow Label' or the 'Chocolate Girl,' and often called for them by either of those names. These and other distinguishing marks upon complainant's packages were so well known that purchasers of ordinary perception could not have failed to quickly discover that some other brand of chocolate or cocoa had been palmed off for Walter Baker's if such had been attempted. If a William H. Baker package bearing its peculiar and impressive labels had ever been offered to a customer calling for or wanting a Walter Baker package, the latter's sense of sight would have immediately come to his assistance and it would have been rejected. In the nature of things, therefore, the public has not...