No. 311.

7 F.2d 304 (1925)


Circuit Court of Appeals, Second Circuit.

April 6, 1925.

Attorney(s) appearing for the Case

Frank A. Whitely, of Minneapolis, Minn., Edward S. Rogers, of Chicago, Ill., and Harry D. Nims, of New York City, for appellant.

Darby & Darby, of New York City (Samuel E. Darby, Jr., of New York City, of counsel), for appellee.

Before ROGERS, HOUGH, and MANTON, Circuit Judges.

HOUGH, Circuit Judge (after stating the facts as above).

There was a good deal said at bar about fraud and wrongdoing, which we lay entirely aside. The reason for France's assumption of Gold Medal in 1905 was pardonable pride in his prize; there was no intent on his part to trade on Washburn's fame, nor is there any evidence that he ever did so trade.

We likewise lay aside all arguments based on registration of marks; these litigants must both stand on what are usually (and not very accurately) called their "common-law" rights, aided by such equities derived from conduct and lapse of time as may serve them.

France and Washburn, now that the latter has gone into the business of selling prepared flours, are competitors, something they never were before 1924. It may be true that a competent cook can mix Washburn's Gold Medal flour with corn meal, leaven and appetizing flavors, and make perhaps the best "pancakes"; but the parties hereto do not make nor sell cakes — they sell the cook something out of which she can evolve the edible product without thought or much labor. This something Washburn neither made nor sold before 1924; France did and had for 20 years.

Thus at the time this suit began the situation in one view was exactly "the ordinary case of parties competing under the same mark, [and] it is correct to say that prior appropriation settles the question" between them. Hanover, etc., Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L. Ed. 713.

This ruling by Pitney, J., may be amplified by inquiring whether the parties at bar are now competing under the same mark in the same goods. They evidently are — in "pancake flour"; wherefore the next and vital inquiry is whether "straight" wheat flour, and "prepared flours" are the same goods or the same "class of commodities."

This is a question of fact; there is no rule of law applicable except that legal principle which underlies both the allied doctrines of trade-marks and unfair competition, viz.: that any honest man is entitled to have the good will of his business protected, by protecting the means whereby the public has come to distinguish and recognize the complainant's product.

It follows that, if one asks whether in 1923 Washburn had any business in pancake or buckwheat flours to be protected, the answer is "No," while it is emphatically "Yes," if the query be put as to France.

If then so many years of building up trade in "straight" wheat Gold Medal flour, had produced no business in prepared flours, how can it be said that the two articles belong to the same class of commodities? Classification of any commercial article depends far more on commercial custom than upon the inherent nature of the product. Dog biscuit and pilot bread are closely allied in physical origin, and so are guncotton and calico, but in commercial classification they are poles apart. The difference between "straight" and prepared flours is not so great as in the illustration given, but that as commercial commodities they are different is in our opinion plainly shown by the exhibition of business methods given by the affidavits; and that such was Washburn's own opinion in 1923 we have pointed out above.

To take another view of the matter, the degree or exclusiveness of appropriation accorded to the originator of a trade-name often varies with the kind of name he originates. If the name or mark be truly arbitrary, strange, and fanciful, it is more specially and peculiarly significant and suggestive of one man's goods, than when it is frequently used by many and in many differing kinds of business. Of this "Kodak" is a famous example, and the English courts have prevented one from putting forth Kodak bicycles, at the suit of the originator of the name for a totally different article. Eastman v. Kodak Cycle Co., 15 R. P. C. 105; cf. Re Dunn's Trade-Mark, 7 R. P. C. 311, and Dunlop v. Dunlop, 16 R. P. C. 12. In this court the same influence is seen in Aunt Jemima Mills Co. v. Rigney, 247 F. 407, 159 C. C. A. 461, L. R. A. 1918C, 1039, where the above line of cases is quoted and relied on.

The phrase "Gold Medal" is distinctly not in the same class of original, arbitrary, or fanciful words as "Kodak" and "Aunt Jemima." It is a laudatory phrase, suggestive of merit, recognized by some organization of authority awarding a prize. It is only allied to some particular business or person by insistent, persistent advertising. Washburn's flour has been so advertised, and the proof is ample that publicity efforts have borne fruit, so that Gold Medal flour means among purchasers Washburn's flour. Yet it must always be remembered that there is nothing original about the name per se; it is exactly like the phrase "Blue Ribbon," and has been as extensively and variously applied. One who devises a new, strange, "catching" word to describe his wares may and often has by timely suit prevented others from taking his word or set of words to gild the repute of even wholly different goods (cases supra); but one who takes a phrase which is the commonplace of self-praise like "Blue Ribbon" or "Gold Medal" must be content with that special field which he labels with so undistinctive a name. Of this Pabst, etc., Co. v. Decatur, etc., Co. (C. C. A.) 284 F. 110, and Anheuser, etc., Co. v. Budweiser, etc., Co. (C. C. A.) 295 F. 306, constitute a perfect illustration. In the first decision Blue Ribbon was restricted to the single product with which plaintiff had associated it, while in the second Budweiser was given a wider sphere of influence. In the present case Washburn has made known by advertising Gold Medal not a line of products, nor any product of a varied business, but one separate, well-known commodity, pure wheat flour, and with that he must be content.

Taking still another view of the evidence, Washburn's claim is not timely; the laches, indeed the acquiescence, of so many years, while France was building up a noncompetitive business, must be given weight. Carroll v. McIlvaine, 183 F. 22, 105 C. C. A. 314, affirming 171 F. 125, is conclusive against the award of any injunction against France, and the inequity of granting such relief is too manifest for discussion.

Result is: Washburn, by persistent and pushing use of a well-known and nondistinctive name has on this record made it a good trade-mark for just what it was applied to, pure or straight wheat flour; to that commodity France never applied the name, but did apply it to a commercially distinct article as he had good right to do.

Both parties are entitled to be protected in their several businesses. France has not attacked Washburn; therefore the latter needs no relief. Washburn has deliberately attacked France; therefore the decree below was right, and is affirmed with costs.


* Certiorari denied 45 S.Ct. 640, 69 L. Ed. ___.


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