Waples-Platter Companies v. Gen. Foods Corp.

• Citation: 439 F. Supp. 551
• Decision Date: 19 October 1977
• Docket Number: CA 4-75-113.,Civ. A. No. CA 4-75-112
• Parties: WAPLES-PLATTER COMPANIES and Great Western Foods Company v. GENERAL FOODS CORPORATION and Kraftco Corporation.
• Court: U.S. District Court — Northern District of Texas

439 F. Supp. 551

WAPLES-PLATTER COMPANIES and Great Western Foods Company v. GENERAL FOODS CORPORATION and Kraftco Corporation.

Civ. A. Nos. CA 4-75-112, CA 4-75-113.

United States District Court, N. D. Texas, Fort Worth Division.

October 19, 1977.

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William E. Schuyler, Jr., Washington, D. C., A. M. Herman, Fort Worth, Tex., for plaintiffs.

Morgan L. Fitch, Jr., Chicago, Ill., Don C. Plattsmier, Fort Worth, Tex., for Kraftco.

Catherine F. McCarthy, White Plains, N. Y., V. Bryan Medlock, Jr., Dallas, Tex., for General Foods Corp.

MEMORANDUM OPINION

MAHON, District Judge.

I. INTRODUCTION¹

These are actions for alleged trademark and tradename infringement and other acts of unfair competition arising under the Federal Trademark (Lanham) Act of 1946,² as amended, 15 U.S.C. § 1051 et seq., and under the statutes and commonlaw of the State of Texas. The undisputed jurisdiction of this Court over these controversies is founded on § 39 of the Act, 15 U.S.C. § 1121, and on 28 U.S.C. §§ 1331, 1332, & 1338.

On 15 April 1975, Waples-Platter Companies and Great Western Foods Company³ filed two complaints, one against Defendant General Foods Corporation⁴ and one against Defendant Kraftco Corporation.⁵ In particular, each complaint filed by Plaintiff charged the respective Defendant with trademark infringement under § 32(1) of the Act, 15 U.S.C. § 1114(1), with unfair competition under § 43(a) of the Act, 15 U.S.C. § 1125(a), with trademark infringement under 4 Tex.Bus. & Comm.Code Ann. § 16.26, and with trademark infringement, tradename infringement, and unfair competition under the commonlaw of the State of Texas. By Order of 5 February 1976, this Court bifurcated and consolidated the two causes of action for trial only on the issues of liability raised by the two complaints. Determination of the issue of damages was reserved until after the Court has ruled on liability.

On 19 April 1976, these causes of action came on for trial before the Court, sitting without a jury, on issues of liability only. The trial on the issues of liability lasted through 23 April 1976, during which time the parties presented live testimony, numerous designated depositions, and a multitude of exhibits. After both parties closed on 23 April 1976, the Court allowed a continuance so that the parties might obtain a transcript of the trial, designate portions of depositions for the Court's consideration, offer further necessary exhibits and make any objections thereto, and file briefs and proposed findings of fact and conclusions of law. The parties having accomplished these objectives, the Court ordered and heard closing oral argument on the issues raised at trial for three hours on 5 August 1976.⁶ By Order of 21 September 1977, the Court has finalized the admission and listing of all exhibits and designated depositions.⁷

The Court has carefully considered all testimony presented at the 19 April 1976 trial, and all depositions, exhibits, briefs, and oral arguments presented at the time of trial and thereafter. The Court hereby enters this Memorandum Opinion as its findings of fact and conclusions of law as required under Rule 52(a) of the Federal Rules of Civil Procedure.

II. SPECIFIC FINDINGS OF FACT⁸

A. Waples-Platter, Great Western, and "Ranch Style"

1. Founding, Development, and Business of Plaintiff

(1) Since it was founded in 1872, Plaintiff Waples-Platter has either by itself or through divisions, been engaged in the grocery business at the wholesale and institutional levels of trade. From time to time, either by itself or through subsidiaries or divisions, it has operated retail grocery stores. PX 65; Tr. 92-94 & 234.

(2) Plaintiff Waples-Platter was incorporated under the laws of the State of Texas in 1891. PX 15.

(3) Since 1913, Waples-Platter has operated a food processing factory in the same location in Fort Worth, Texas. Items manufactured at that factory include beans, blackeye peas, salad dressings, vinegar, preserves, jellies, syrups, spaghetti, rice, and tea. PX 66.

(4) This food processing operation was incorporated in 1956 as Great Western, a wholly-owned subsidiary of Waples-Platter. PX 14.

(5) Plaintiff has marketed a full line of grocery products, including products under its own private labels ("White Swan" and "W-P") in Texas, Oklahoma, New Mexico, Louisiana, and Arkansas. Plaintiff has marketed a limited line of grocery products in other states, principally those states in the southwestern United States, and provides limited items to the United States Government for sale in military exchanges. PX 16-17; Tr. 35, 93, & 236.

2. History and Development of Plaintiff's Use of "Ranch Style"

(6) In 1931, Plaintiff "began the development of a new product that would make use of the pinto bean in a truly distinctive way." After three years of research, the formula for these beans was perfected. Mr. Lloyd McKee, then president of Plaintiff, introduced the developed product to the market in 1934. The formula remains essentially unchanged today. PX 66; Tr. 201.

(7) Plaintiff originally began manufacturing these beans in 1931 under the trademark "Chuck Wagon." Because of a trademark conflict, however, the "Chuck Wagon" trademark was changed to "Ranch Style." PX 66; Tr. 389-390.

(8) Plaintiff wanted a unique label which would be different from that conventionally used in the 1930's. It adopted one with a black background, red and yellow bands at the top and bottom, and the term "Ranch Style" displayed in a distinctive white font with serifs. PX 66.

(9) Since the early 1930's, Plaintiff has continuously processed and canned beans that are sold under the "Ranch Style" trademark. PX 66.

(10) At least since 1953, Plaintiff has been processing and marketing canned spaghetti along with its beans under the trademark "Ranch Style." More recently, Plaintiff has begun to pack and market the following products under its "Ranch Style" mark: blackeye peas (beginning in 1964); navy beans (beginning in 1968); kidney beans (beginning in 1969); pinto beans (beginning in 1969); Spanish rice (beginning in 1971); chili (beginning in 1971); pinto beans with jalapeno (beginning in 1976); blackeye peas with jalapeno (beginning in 1976). PX 224; Tr. 176-178, 197, & 389.

(11) Since they were originated in the 1930's and continuing up until the incorporation of Great Western in 1956, "Ranch Style" products were manufactured and sold by Waples-Platter. Since the incorporation of Great Western in 1956, the "Ranch Style" products continue to be sold by Waples-Platter, although they are manufactured by Great Western and sold by Great Western through other channels of trade, including other wholesale grocers and grocery chains. Tr. 34 & 41.

(12) The "Ranch Style" label of Plaintiff has remained substantially unchanged until the present, and, since 1934, virtually all goods sold under the "Ranch Style" trademark have borne the unique black label with red and yellow bands and distinctive white font. There has been no significant consumer-oriented use of the term "Ranch Style" by Plaintiff other than by its distinctive label. PX 66; Tr. 73-79, 84, 208-209, 212-213, & 626.

(13) Plaintiff has used the "Ranch Style" trademark and its accompanying distinctive label almost exclusively on canned goods. PX 209; DX 327; Tr. 73-79.

3. "Ranch Style:" Plaintiff's Trademarks, Plaintiff's Recent Usage, and Its Importance to Plaintiff

(14) On 9 October 1934, Lloyd H. McKee, then president of Plaintiff, obtained Label Registration No. 44,485 pursuant to the copyright laws of the United States, for the use of "Ranch Style" for beans, which he subsequently assigned to Plaintiff. This Label Registration expired on 9 October 1962 and was not immediately renewed. DX 337A-C; Tr. 86.

(15) On 21 February 1950, Plaintiff obtained United States Registration No. 521,081 under Section 2(f) of the Act, 15 U.S.C. § 1052(f), for the use of "Ranch Style," shown in a distinctive font, for: coffee; canned pinto beans cooked with tomatoe puree, beef fat, spices, salt, seasoning, and sugar; and canned spaghetti cooked with puree, spices, sugar, salt, beef fat, and seasoning. This Registration expired on 21 February 1970. DX 19 & 305.

(16) On 9 January 1962, Plaintiff obtained United States Registration No. 726,319 for the use of "Ranch Style," shown in a distinctive font in combination with a logo showing hearts, the words "Husband Pleasin'," and smiling face of a man, for canned pinto beans. This Registration has become incontestable subject to the terms of Sections 15 and 33(b) of the Act, 15 U.S.C. §§ 1065 & 1115(b). PX 1; DX 307.

(17) Plaintiff obtained United States Registration No. 860,230 on 12 November 1968 for a design having a black background with red and yellow stripes at the top and bottom, for canned beans, spaghetti, blackeye peas, and coffee, claiming first use of the design on 1 September 1933. This Registration has become incontestable subject to the terms of Sections 15 and 33(b) of the Act, 15 U.S.C. §§ 1065 & 1115(b). DX 297.

(18) On 23 March 1971, Plaintiff obtained United States Registration No. 910,457, under Section 2(f) of the Act, 15 U.S.C. § 1052(f), for the term "Ranch Style," in block type, for canned pinto beans, canned beans, canned spaghetti, canned Spanish rice, canned blackeye peas, canned chili, canned navy beans with bacon, and canned red kidney beans. This Registration took the place of Registration No. 521,081, which had expired due to a clerical oversight. PX 2; DX 306.

(19) On 15 July 1939, Plaintiff obtained Texas Registration No. 8946 for the use of "Ranch Style" incorporated on its normal distinctive label. The description of goods or services in connection with which the mark was registered are described as "packaged and canned foods and ingredients of foods, such as coffee, canned pinto beans cooked with tomato puree,...