WG Reardon Laboratories v. B. & B. EXTERMINATORS

• Decision Date: 15 May 1933
• Docket Number: No. 2112.,2112.
• Citation: 3 F. Supp. 467
• Parties: W. G. REARDON LABORATORIES, Inc., v. B. & B. EXTERMINATORS, Inc., et al.
• Court: U.S. District Court — District of Maryland

3 F. Supp. 467

W. G. REARDON LABORATORIES, Inc., v. B. & B. EXTERMINATORS, Inc., et al.

No. 2112.

District Court, D. Maryland.

May 15, 1933.

Thomas W. Y. Clark, of Baltimore, Md., and Howson & Howson, of New York City, for plaintiff.

Robert E. Kanode, of Baltimore, Md., and R. Clyde Cruit, of Washington, D. C., for defendants.

CHESNUT, District Judge.

In this case the plaintiff seeks to enjoin the defendant from the use of the allegedly valid trade-marks "Mouse Seed" and "Rat Seed" as applied to exterminators for rats and mice; and also against unfair competition by the defendant in the sale of these products.

A preliminary injunction was sought and after hearing denied. At that time an opinion was filed which outlined the issues in the case and concluded that on the affidavits of the respective parties the situation was not sufficiently clear to be made the basis of a preliminary injunction. Since then there has been a final hearing with full proof on both sides.

The important and controlling facts developed by the testimony are as follows: Mice and rat poisons have been in common use for many years in various forms, including biscuits, powders and poisoned grains, the last named especially having been in use for 40 years or more. The form of mouse and rat poison involved in this case consists of poisoned grains. The plaintiff uses a yellow canary seed, and the defendant, a mixture of whole and broken grains, mostly of wheat, oats and barley with a pinkish color. Many years ago poisoned grains in bulk used for the extermination of field mice and other rodents attacking fruit trees (at least in one section of the country, Western Maryland and Virginia) were referred to as "Mouse Seed," but this expression seems not to have been known to or used by those dealing with the subjects in the Department of Agriculture, and there seems to be no literature upon the subject in which the term "Mouse Seed" has been generally applied to these poisoned grains. The first use of the word combination "Mouse Seed" in the sale of poisoned grains for the extermination of mice in houses and buildings, seems to have been by one Green of Providence, R. I., who, in or before 1903, commenced the manufacture and sale for such purposes of a poisoned grain which was sold at retail to the ultimate consumer in a small white box bearing the label "Green's Original Mouse Seed" (the expression obviously implying a considerable prior use of the term "Mouse Seed" either generally or specially). Some time later and prior to 1920, Green sold this business to one Burke, also of Providence, who continued the same form of marketing the product, but also placing his own name on the boxes. In 1920 one Hagedorn of Brooklyn, N. Y., became one of Burke's customers and thereafter for some year or two, sold the product in boxes similar to those used by first, Green, and second, Burke, but under the name of "Marvel Mouse Seed." During this time Hagedorn purchased the poisoned seeds in bulk from Burke. On January 22, 1923, Hagedorn bought out Burke's business entirely and continued the sale of the article under the name of "Marvel Mouse Seed."

In 1925, W. G. Reardon (now president and owner of the plaintiff corporation) advertised for a business connection. Hagedorn answered the advertisement and negotiations ensued for the purchase by Reardon of Hagedorn's business, Reardon being much attracted by the expression "mouse seed" as applied to a rodent poison, having never had any prior connection with the subject-matter. Before purchasing the business he consulted a patent attorney to ascertain whether he could register the term "Mouse Seed" as a trade-mark in the United States Patent Office if he purchased the business, and learned that previously one Theodore Meyer of Philadelphia, had in 1923 registered the term "Mouseed" for the same general article, claiming use since 1910 (but with sales only in Philadelphia, as shown by the testimony). Thereupon Reardon negotiated with Meyer and for the sum of $100 and a very small royalty, obtained from him a so-called license agreement to use the trade-mark "Mouseed," save in Philadelphia, Washington and Atlantic City. Reardon, not being then advised that he could obtain no rights in a trade-mark whether registered or not except in connection with the business to which it applied, and incorrectly believing that he had thus acquired rights superior to Hagedorn in the use of the term "Mouseed" as a poison for rodents, discontinued negotiations with Hagedorn and promptly began the manufacture and sale from Pt. Chester, N. Y., of a poisoned grain for mice which he prepared and put up for sale through retail dealers in boxes substantially identical in size, shape, color and lettering as those used by Hagedorn, with the exception that Reardon did not use the word "Marvel" in connection with "Mouse Seed," and substituted on the picture of the mouse prominently displayed on the cover of the boxes the letters "R.L." instead of "M.M.S.," which were used by Hagedorn. About the same time Reardon incorporated his business. Reardon obtained from Pease Laboratories in New York and used an entirely different formula for the poisoning of the grain than that used by Meyer or Hagedorn and his predecessors. The form and style in which the Reardon product was marked was an obvious imitation of Hagedorn's package but Reardon seeks to defend his appropriation of such rights, if any, as Hagedorn had on the ground that he felt he had better legal right to use the term "Mouse Seed," and anyhow, sooner or later he expected to buy out Hagedorn's business. Nevertheless he says that he restricted his sales to the neighboring territory of Connecticut where he understood Hagedorn was not marketing his product although Hagedorn's deposition was to the effect that he had sold his product in Connecticut, New Hampshire, New Jersey and New York. Nevertheless Hagedorn took no legal action against Reardon, and on March 26, 1927, Reardon bought out the whole of Hagedorn's business and rights for $5,000 and continued to market his product in the same form, gradually extending the territorial area. On June 30, 1930, Meyer having died, Reardon purchased from his estate for $1,000 all his right to the trade-mark "Mouseed," United States Registration No. 169600, which was assigned to him, Reardon still apparently being under the impression that he could acquire a trade-mark without the business to which it pertained. The agreement nominally included the particular business but in fact Meyer's estate continued the sale of his same product under another name, and Reardon made no change in his own product.

In 1926 and 1927, Reardon began to market his products, both "Mouse Seed" and "Rat Seed," in addition to the small white package referred to, in a larger one-pound package in the form of a cylinder with yellow label on the sides and with green tops and bottoms. The product has been sold in Baltimore since 1926 or 1927 in both forms. In 1927 and 1928 the plaintiff nationally advertised its products as "Mouse Seed," spending about $25,000 in all in so doing; and its aggregate annual gross sales are about $25,000 in amount.

By virtue of national advertising the plaintiff's form of rodent poison has acquired a prominent, if not dominant, position in the retail market but for many years there have also been numerous competing products of the same general character, in the form of poisoned grains of one kind or another, called variously "Sanaseed," "Rat Corn," "Sweeney's Poisoned Wheat," "Extermorat," "Baer's Wheat," etc. The testimony of the witness Stover is to the effect that in very numerous specific instances retail dealers, in several different states, when asked if they carried any mouse seed, produced indifferently or indiscriminately any one or several of these separate preparations in the form of poisoned grains, although probably a majority of the retail dealers, by virtue of the plaintiff's national advertising, are more familiar with the plaintiff's product and would produce it when mouse seed is called for. A number of retail dealers who testified in the case, principally representative Baltimore druggists, most of whom handle only the plaintiff's product, associated the term "Mouse Seed" with the plaintiff's product alone.

The extent to which the plaintiff's product has become identified in the retail trade under the terms "Mouse Seed" and "Rat Seed" does not very satisfactorily appear from the testimony. To some extent the testimony is contradictory and conflicting but considering it all, I think the plaintiff has failed to establish that the terms "Mouse Seed" and "Rat Seed," if not valid trademarks, have acquired a secondary meaning which identifies the product as the manufacture of the plaintiff alone.

The defendant's business was incorporated in 1929, succeeding the Baltimore firm of Barham and Bowersox, one of the partners being the individual defendant in this case named Henry L. Barham. The latter had been acquainted with poisoned grains for rodent exterminators for many years and was familiar with the sale of the product in bulk for the extermination of field mice and other rodents and knew that in some sections it was popularly called "Mouse Seed," and also knew of the product of various manufacturers sold to the retail trade but did not learn of the plaintiff's article sold under the name of "Mouse Seed" until some time in 1928 when his attention was called to it by a distributor of the plaintiff's products in Baltimore. In February of 1930, some months at least before the defendant put out its product under the name of "B. & B. Mouse Seed" for retail sales, the defendant sold a considerable quantity of poisoned seeds in bulk to the Park Board of Baltimore, it being described on the written sales ticket as "Mouse Seed." Some months later the defendant decided to market a poisoned grain for retail distribution and, as Mr....