William Wrigley, Jr., & Co. v. Grove Co.

• Decision Date: 14 November 1910
• Docket Number: 148.
• Citation: 183 F. 99
• Parties: WILLIAM WRIGLEY, JR., & CO. v. GROVE CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

183 F. 99

WILLIAM WRIGLEY, JR., & CO. v. GROVE CO. et al.

No. 148.

United States Court of Appeals, Second Circuit.

November 14, 1910

Louis Hicks, for appellants.

Offield Towle, Graves & Offield (James R. Offield, Philip B. Adams and Charles K. Offield, of counsel), for appellee.

Before LACOMBE, COXE, and NOYES, Circuit Judges.

COXE Circuit Judge.

The right to make and sell chewing gum out of ingredients not deleterious to health and to flavor it with wintergreen vanilla, strawberry, pineapple, spearmint or any other flavoring material, is inherent in every citizen, whether a corporation or an individual. Having a right to make and sell gum, it follows, as a necessary corollary, that he has the right t describe it. The flavor is a very important factor regarding which the public desires to be informed and which the seller has a clear right to communicate, if, indeed, he is not under obligation to do so. If his gum be flavored with spearmint, for instance, he cannot inform the public of this fact without using the word 'Spearmint,' and to deprive him of that privilege is to interfere with his rights. Spearmint is a descriptive term as applied to chewing gum, and no one can deprive a manufacturer of its use or appropriate it as a trade-mark. The first paragraph of the decree is as follows:

'It is hereby ordered, adjudged and decreed: First: That the said word or name 'Spearmint' when used in a prominent way, either in advertising matter, on labels, or on boxes, is a good and valid trade name or mark for chewing gum; that the title thereof and the entire and exclusive right to the use of the same in the manner above specified is vested in complainant.'

The language quoted is too broad and the decree cannot be upheld in so far as it sustains as a trade-mark the word 'Spearmint' and awards to the complainant the exclusive right to use the same in connection with chewing gum. Indeed, at the argument we understood counsel for the complainant to concede that the decree was too broad. Similar concessions are made in the complainant's brief. For instance, at pages 12 and 13 it is said:

'The bill of complaint in this case is not founded on any technical trade-mark. * * * This case is not governed, therefore, nor affected by the fact that the word 'Spearmint' is descriptive of the quality of the goods, and as such is not capable of being monopolized as a trade-mark. * * * The complainant appellee is not seeking to monopolize the word 'Spearmint,' to the exclusion of all others, whereby other manufacturers cannot notify the public that their product is flavored with the oil of spearmint.'

The difficulty is that the decree as entered does give the complainant the very monopoly which is thus disclaimed, namely, an exclusive right to the use of the word 'Spearmint' as a trade-mark for chewing gum. In Florence Mfg. Co. v. Dowd & Co., 178 F. 73, 101 C.C.A. 565, this court upon similar facts decided that the word 'Keepclean' as applied to toothbrushes was descriptive only and not the subject of a valid trade-mark. We think the rationale of that decision applies with even greater force to the word 'Spearmint' when used in connection with chewing gum. The complainant has no exclusive property in the word 'Spearmint.' The defendants have a perfect right to use the word as descriptive of their goods; but they have not the right to use it in collocation with other words and symbols in such manner as to induce the public to believe that their 'Spearmint gum' is the 'Spearmint gum' of the complainant.

Although not entitled to a trade-mark in the word 'Spearmint,' we have little doubt that the complainant has proved a cause of action against the defendants based upon unfair competition. The complainant for at least five years has been selling 'Wrigley's Spearmint Gum' put up in packages containing five...