finding infringement of Aunt Jemima’s trademark on pancake batter by Aunt Jemima syrup on the ground that “goods, though different, may be so related as to fall within” the protections of trademark law
How later courts described this case
- finding infringement of Aunt Jemima’s trademark on pancake batter by Aunt Jemima syrup on the ground that “goods, though different, may be so related as to fall within” the protections of trademark law
- holding that pancake syrup and pancake flour are 16 related
- pancake flour and syrup complementary
- pancake syrup and pancake flour
Written by the judges who cited it.
The opinion
LEARNED HAND, District Judge
(concurring). The plaintiff’s letter of March 14, 1908, does not seem to me an expression of an opinion on the law; the plaintiff does not profess to have examined its rights in the case, but to allow them to pass as between the parties, whatever they may be. Nor is there the least reason to suppose that if there was a mistake of law, it was mutual. The defendant consulted the plaintiff as to its position, and the most that can be said of the reply is that the plaintiff explained' its intention not to assert any rights upon the ground that it probably had none. If anything could better indicate that they meant not to examine the matter fully, I confess I cannot see what it was. Furthermore, I find in the letter not only complete acquiescence, but in substance an invitation to co-operate with the defendant in the very infringement itself. The plaintiff’s subsequent letter of retraction of May 1, 1908, further corroborates this conclusion, at least it shows that it thought the defendant might interpret the earlier letter as I interpret it. This letter, after saying that the plaintiff had received no answer, added that the defendant had overstepped the bounds of. “business courtesy” in getting the benefit of their years of advertising. Therefore they formally protested against any continuance and asked for advices that the defendant would discontinue so that they might take up the matter legally and find out what their rights were. I cannot see how in the face of this it can be said that they were misled as to those rights. Of course, if this letter had been received, there could be no claim of acquiescence, but the proof is only that it was regularly mailed and not received in due course. This does not make proof of its receipt.
Therefore, when the defendant after communicating with the plaintiff and getting their consent, as I believe, for nearly eight years built up a substantial business, the injustice is apparent, of allowing the plaintiff now to assert its rights. McLean v. Fleming, 95 U. S. 245 , 24 L. Ed. 828 , and Menendez v. Holt, 128 U. S- 514, 9 Sup. Ct. 143, 32 L. Ed. 526 , do not support a contrary doctrine, even though they were not modified, by Saxlehner v. Eisner & Mendelsohn Co., 179 U. S. 19, 39, 40 , 21 Sup. Ct. 7, 45 L. Ed. 60 . Assuming that the theory of those cases is that time will never run against a fraud, surely it is wrong to say that when the plaintiff on original inquiry as to its position acquiesces in the infringement, the defendant commits a fraud in going on. Creswell v. Knights of Pythias, 225 U. S. 246, 261 , 32 Sup. *413 Ct. 822, 56 L. Ed. 1074 , seems to me a weaker case on the facts, yet the defendant succeeded.
I vote to affirm on the ground of acquiescence without expressing any opinion upon the plaintiff’s original right.