Ward Baking Co. v. Potter-Wrightington, Inc.
| Decision Date | 08 April 1924 |
| Docket Number | 1641. |
| Citation | 298 F. 398 |
| Parties | WARD BAKING CO. v. POTTER-WRIGHTINGTON, Inc. |
| Court | U.S. Court of Appeals — First Circuit |
Edmund A. Whitman, of Boston, Mass., for appellee.
Before BINGHAM and JOHNSON, Circuit Judges, and HALE, District Judge.
This case is now before us on appeal from a decree of the District Court that the defendant appellant has infringed the rights of the plaintiff appellee in and to the words 'Old Grist Mill' and a pictorial representation of such old mill. The decree enjoins the defendant appellant from using such words and such pictorial representation in connection with the sale of bread, or other food products, and the public advertisement thereof. This is a trade-mark case; it involves some of the usual issues in such cases. In its assignments of error the defendant contends that the court erred:
First in holding that the plaintiff had any rights in and to the words 'Old Grist Mill' and a pictorial representation of such mill;
Second in holding that the defendant had infringed the rights of the plaintiff;
Third in enjoining the defendant from using the words 'Old Grist Mill,' or a pictorial representation thereof, in connection with the sale of bread and other food products and the public advertisement thereof.
The defendant sets up several distinct defenses, which we will state and consider.
The first assignment of error raises the fundamental question of the validity of the plaintiff's trade-mark.
1. The proofs show that about 1893 the plaintiff corporation was a commission merchant, a dealer in flour, and a manufacturer of rolled wheat, rye flakes, and other wheat products; that about 1893 it put upon the market an entire wheat flour and adopted as a mark the words 'Old Grist Mill,' with a pictorial representation of such a mill; that, thereafter it placed these words and this picture upon its bread wrappers; that it continuously made use of the term 'Old Grist Mill'; that it induced customers to demand bread made of Old Grist Mill flour from their bakers and grocers; that it gave public representations of the merit of the bread made from Old Grist Mill flour, selling packages under that name, and directing its advertising to bringing Old Grist Mill products before the public; that it registered the words 'Old Grist Mill' and the picture, as a trade-mark, in the United States Patent Office, and in the proper offices in Massachusetts and California; that it spent large sums of money, and created a large volume of business in Old Grist Mill products; that it built up in the public mind a good will in Old Grist Mill flour; that it so associated its mark with its products that the mark came to identify the origin and ownership of the plaintiff's goods. We think it acquired a valid trade-mark in such name and such pictorial representation.
Property in a trade-mark is not acquired like property in a patent or invention. There is little analogy between a patent and a trade-mark. The courts have pointed out that there is no such thing as property in a trade-mark, except as a right pertaining to an established business or trade in connection with which the mark is employed; that the right to such a designation arises out of its use; that its function is to designate goods as the product of a particular dealer and to protect his good will against the sale of another's product as his; that it becomes the subject of property by being used in connection with an existing business, and that by such use it shows the origin of the goods sold, not arbitrarily, but by association of the public mind with the mark. Hanover Milling Company v. Metcalf, 240 U.S. 403, 412, 414, 36 Sup.Ct. 357, 60 L.Ed. 713; United Drug Company v. Rectanus Co., 248 U.S. 90, 96, 39 Sup.Ct. 48, 63 L.Ed. 434.
2. The second and third assignments of errors raise the question whether the defendant has infringed the rights of the plaintiff in its trade-mark, and whether it should be enjoined.
The defendant is a baking company. The proofs show that early in 1922 it manufactured and sold a whole wheat bread called 'Homespun.' It offered this bread to the public in a wrapper with the words 'Ward's Homespun Bread,' and with a picture of an old grist mill having a water wheel on the gable end at the side of the building, and on its advertisements it had the words, 'Look for the Old Grist Mill.'
In the plaintiff's picture the mill is at the front end, and there is a flume leading the water to it. Both pictures represent an old grist mill. Some time afterwards the defendant put out an advertising card with the picture of a mill, with the words:
And the sun and the Father's will.'
In advertising since January 1, 1922, on pictures showing the old grist mill, the defendant has adventured into more verse, as follows:
And the Sun and the Father's will.'
About 1912 the defendant acquired a bakery in Newark, N.J., which appears to have been using certain quantities of the plaintiff's Old Grist Mill flour, and selling its bread in wrappers received from the plaintiff. After the purchase, this branch of the defendant appellant company, as the proofs show, continued to use plaintiff's Old Grist Mill flour, and received from the plaintiff a large quantity of its Old Grist Mill wrappers.
The emblem adopted by the defendant appellant is not identical with that of the plaintiff appellee. In analyzing the two wrappers, differences may be pointed out which, if known and recognized, might avoid mistaking one for the other. But the usual purchaser does not analyze; he merely looks, perhaps hastily; and the test must be whether the similarity of brands would mislead the 'ordinary observer.' Columbia Mill Company v. Alcorn, 150 U.S. 460, 14 Sup.Ct. 151, 37 L.Ed. 1144; Cantrell & Cochrane v. Hygeia Distilled Water Co., Inc. (C.C.A.) 283 F. 400; Hanover Milling Co. v. Metcalf, 240 U.S. 403, 424, 36 Sup.Ct. 357, 60 L.Ed. 713. We think it would so mislead. The proofs persuade us that, when the defendant appellant adopted its design, it had knowledge of the plaintiff's trade-mark; that it has done a large business, and made large sales of bread with such emblems on its wrappers as those which we have described; that it has advertised 'Look for the Old Grist Mill'; that, on being notified in February, 1922, of a claim of infringement, it refused to discontinue the use of the words, 'Old Grist Mill,' and of the picture and advertisement, and has since repeatedly used such design.
Upon a careful examination of the wrappers and the proofs, we are of the opinion that the use by the defendant of the words 'Old Grist Mill' and of its picture and advertisement, is deceptively similar to the use by the plaintiff, and is an infringement of the plaintiff's rights in its trade-mark. We agree with Judge Anderson, in the District Court, in holding that the wrongful conduct of the defendant was deliberate and persistent; that it was a case of undertaking to appropriate the property of the plaintiff, and to mislead the public into buying its own products when the products of the plaintiff were sought.
3. The defendant sets up the defense that the plaintiff was anticipated in the use of its trade-mark by one Thornton. It appears that Frank L. Thornton, of Providence, R.I., about 1892, was carrying on a small business as a dealer in corn meal and other cereals; that he adopted a similar emblem (but not the words 'Old Grist Mill'), and that he had it registered as a trade-mark and used it in his business in and near Providence. A bill was brought against this plaintiff to restrain an infringement of Thornton's rights. It was demurred to, and was finally dismissed from the docket. There is nothing in the record tending to show that the plaintiff pirated upon any rights of Thornton. There is no question of invention in a trade-mark case. It may be that it will be found that Thornton, in a limited territory, used a design somewhat similar to that of the plaintiff. Upon this point we think the District Court has properly held that, even if, for some purposes and in some territory, the Thornton Company may have a right in the trade-mark superior to that of the plaintiff, the defendant is not thereby exonerated from responsibility for an attempt to appropriate to itself a good will created by the plaintiff during a long course of business. Whatever Thornton has done or has not done, the ultimate offense is that the defendant has passed off its goods as those of the plaintiff, and has thereby...
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