Appendix — Skinner Manufacturing Co. v. Kellogg Sales Co.

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APPENDIX NOTES

Note 1. Evidence with respect to Petitioner’s busi-

ness and business methods:: T. 217, 224, 227 and 802

and 1286, 245, 248 and 781, 252, 257, 259, 260, 264, 267,

366, 435, 468, 489, 610, 859, and Exhibits 1 to 100, see In-

dex of Exhibits in Vol. V of Record for reference to

Transcript.

Note 2. Evidence with respect to Respondent’s busi-

ness and business methods: T. 276, and 315 and 889 and

925, 320, 333, 340, 344 and 347, 934, 938, 944, 949, and Ex-

hibits 200, 201, 203-289, inclusive, 292-294, 298, 307-317, 500-

536, 539-558, 561-568, 575-606, 615-620, 2022-2026, 2030, see

Index of Exhibits in Vol. V of Record for reference to

Transcript.

Note 3: Consumer witnesses (137).

(a) Those who had used Petitioner’s product prior

to advent of competition (129): T. 262, 262, 289, 290, 361,

362, 381, 383, 385, 386, 388, 391, 412, 416, 417, 419, 431,

438, 446, 447, 460, 461, 464, 466, 482, 487, 490, 491, 505,

517, 518, 519, 532, 533, 534, 543, 546, 548, 551, 552, 568, 592,

601, 605, 606, 619, 624, 627, 637, 639, 640, 641, 657, 667,

671, 674, 680, 689, 693, 694, 696, 713, 729, 730, 745, 753,

766, 776, 777, 818, 819, 821, 825, 826, 827, 828, 831, 836, 837,

840, 844, 844, 845, 847, 854, 857, 860, 861, 862, 866, 868,

873, 880, 882, 883, 884, 885, 887, 888, 1032, 1034, 1045, 1053,

1065, 1067, 1074, 1077, 1089, 1109, 1112, 1114, 1129, 1134,

1137, 1141, 1145, 1148, 1151, 1153, 1155, 1158, 1163, 1169,

1178, 1181, 1193, 1195, 1198, 1209 and 1215.

Poe ga

120

(b) Consumer witnesses who had not heard of or

used Petitioner’s product (8): T. 290, 525, 867, 869, 869,

1040, 1117, 1172.

(c) Consumer witnesses who knew that “Raisin-

BRAN” was a product of Skinner Manufacturing Com-

pany (46): T. 263, 361, 365, 386, 389, 391, 413, 421, 432,

438, 448, 463, 464, 467, 489, 492, 519, 532, 533, 534, 548,

551-552, 553, 583, 609, 619, 624, 641, 658, 668, 672, 674,

693, 713, 714, 717, 729, 753, 776, 819, 833, 846, 848, 886,

1054, 1110, and 1119.

(d) Consumers who testified there was only one

source of product prior to April, 1942, though they did

not know name of such source (13): T. 262, 373, 425, 430,

461, 482, 489, 520, 689, 718, 826, 1172.

(e) Consumers who identified Petitioner’s package

as only one they had been accustomed to purchase (50):

T. 262, 262, 361, 362, 386, 388, 391, 431-432, 438, 448, 464,

467, 482, 490, 491, 492, 518, 518-519, 519, 532, 533, 534,

548, 553, 568, 593, 601, 605, 606, 619, 624, 640, 642, 649,

667, 671, 674, 689, 693, 713-716, 729, 776, 820, 822, 828,

874, 1110, 1112, and 1129.

(f) All of those witnesses listed in paragraph (e)

above knew that Skinner was the distributor, except (5):

T. 482, 689, 776-777, 874, 1130.

(g) Consumer witnesses who testified that when

they wished Petitioner’s product they asked for “Raisin-

BRAN” (21): T. 363, 386, 389, 392, 464,467, 482, 490, 534,

535, 596, 602-604, 606, 621, 639, 641, 667, 671, 828, 1055,

and 1112.

121

(h) Consumer witnesses who mistook Respondent’s

package for Petitioner’s (9): T. 681, 693, 694, 697, 714,

718, 730, 733, 755, 766, and 1162.

(i) Consumers who testified that mark “Raisin

Bran” meant Petitioner’s product (24): 365, 394, 414,

465, 490-491, 594, 601, 608, 615, 617, 621, 668, 674, 700,

715-716, 729, 819, 821, 875, 1055, 1076-1077, 1110-1111,

1149, 1171-1172, 1218.

Note 4. Retail grocer witnesses (97):

(a) Retail grocer witnesses who had personal serv-

ice and delivery (54): T. 367, 370, 375, 378, 405, 409, 424,

429, 434, 436, 442, 449, 458, 474, 479, 485, 493, 498, 500,

507, 525, 527, 535, 539, 565, 566, 572, 579, 584, 634, 643,

660, 669, 692, 695, 698, 737, 740, 746, 756, 759, 769, 773,

823, 832, 834, 838, 876, 1047, 1164, 1186, 1190, 1200, and

1205.

(b) Retail grocer witnesses who had exclusively

self-service stores (30): T. 451, 497, 509, 520, 554, 580,

645, 650, 652, 683, 699, 702, 707, 829, 842, 851, 1036, 1038,

1040, 1051, 1059, 1069, 1072, 1093, 1099, 1120, 1124, 1131,

1218, and 1221.

(c) Retail grocers whose testimony did not indicate

the type of their service (12): T. 411, 558, 576, 597, 614,

631, 691, 734, 749, 849, 863, and 871.

(d) Retail grocers who had never heard of Peti-

tioner’s product (3): T. 864, 865, and 866.

(e) Retail grocers who knew source of Petitioner’s

product (87): T. 368, 371, 375, 380, 406, 409, 412, 427,

431, 434, 436, 445, 450, 452, 458, 475, 479, 481, 487, 494, 498,

Da sace ameeRE nen oie SL 28 or >

122

499, 502, 508, 510, 521, 526, 528, 540, 555, 559, 565, 568,

574, 577, 580, 586, 598, 614, 622, 626, 632, 635, 644, 646, 651,

653, 661, 670, 691, 692, 695, 698, 700, 702-703, 708, 725,

740, 741, 747, 756, 769, 829, 835, 839, 842, 850, 852, 864,

876, 1039, 1048, 1052, 1059, 1070, 1073, 1081, 1094, 1102,

1120, 1124, 1133, 1189, 1204, 1220, and 1228.

(f) Retail grocers under class (a) above, who testi-

fied that before the advent of the Post and Kellogg com-

peting products, their customers called for Petitioner’s

product under the trade name “Raisin-BRAN’’, standing

alone (41): T. 368, 377, 430, 435, 437, 480, 487, 493, 498,

499, 508, 511, 521, 526, 528, 539, 599, 576, 582, 586, 614,

632, 636-637, 646, 652, 654, 661, 669, 685, 692, 698, 737,

741, 746, 749, 756, 769, 774, 833, 843, and 1133.

(g) Retail grocers under class (f) above, who testi-

fied that when their customers asked for just “Raisin-

BRAN”, they desired Petitioner’s product (26): T. 368,

377, 430, 437, 480, 493, 498, 521, 526, 539, 576, 582, 586,

614, 632, 637, 646, 669, 685, 692, 737, 746, 769, 774, 833,

and 1133.

(h) Retail grocers under class (a) above who testi-

fied that after the advent of the Post and Kellogg prod-

ucts their customers, when ordering the Petitioner’s prod-

uct, called for just “Raisin-BRAN” (30): T. 371, 380,

406, 410, 430, 435, 437, 444, 493, 499, 501, 526, 528, 536,

540, 567-568, 574, 634, 670, 698, 737, 740-744, 772-773, 774,

835, 839, 1050, 1188, 1193, and 1203.

(i) Retail grocers who testified that the mark

“Raisin Bran” meant Petitioner’s product (46): T. 369,

371, 374, 377, 380-381, 405-408, 410, 414, 424, 430, 441,

123

444, 472, 492, 495, 495, and 497, 499, 558, 560, 580, 582-83, 598

and 600, 615-617, 635 and 637, 644, 646, 649, 661, 670, 698,

700, 701, 703, 708, 726, 738, 741, 769 and 772, 1097, 1097-

1099, 1102-1103, 1123, 1143, 1204, 1220, 1228 and 1220.

Note 5. Wholesale grocer witnesses (49): T. 263,

988, 356, 371, 396, 401, 422, 432, 439, 453, 456, 471, 473,

nih 483, 495, 495, 503, 512, 529, 541, 560, 562, 570, 57

586, 618, 628, 648, 654, 664, 675 5, 686, 701, 725, 727, 73:

ay 856, 870, 872, 878, 1024, 1029, 1056, 1080, 1141 and

1164.

(a) Of the above, the following did a joint whole-

sale and retail business: T. 495 and 1080.

(b) Of the above, all but the following knew the

source of origin of Petitioner’s product (4): T. 453, 477,

583 and 872.

(c) The following wholesale grocers testified that

before the advent of the Post and Kellogg competing

products, the term “Raisin-BRAN” meant Petitioner’s

product in the wholesale and retail trade (40): T. 264,

989, 357, 373, 398, 402, 423-424, 433, 441, 454, 458, 471-472,

473, 477, 484, 495, 504, 514, 530, 543, 561, 562, 572, 578-

579, 587-588, 619, 629, 648, 656, 665, 676, 701, 726, 728,

871, 879, 1026-1027, 1030, 1144, and 1169.

Note 6. Prior to its adoption by the Petitioner in

June, 1925, the term “Raisin-BRAN” had never been ap-

plied to any food product on the American market.

(a) Consumer witnesses who testified that name had

not been applied to any other breakfast food: T. 262, 363,

oo ENERO Ce OEE AEE Sy REDLINE AS RENEE AR IOAN

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124

392, 461, 482, 518, 520, 534, 621, 624, 640, 659, 667, 689,

718, 826 and 1172.

(b) Retail grocers who so testified: T. 373, 425 and

430.

(c) There was no evidence that the name had been

applied to any other food product prior to 1925.

The Trial Court found that prior to April, 1942,

there was no prepared breakfast food product on the

American food market, other than Appellant’s product,

designated as ‘‘Raisin- BRAN”, or in approximately sim-

ilar fashion (F. 6, T. 143); but the Court refused the

request of the Appellant (Par. I, T. 178) to find that at

the time the Appellant adopted the term ‘‘Raisin- BRAN”

for use upon its aforesaid product, said term, standing

alone, was not in use as a designating term for any food

product (Par. I, T. 181), and predicated its refusal upon

the following: ‘‘The evidence in the ease did not nega-

tive the possibility that it might have been employed

alone in designating some other type of food. The most

that can be said is that there is no evidence of any such

employment * * *” (Par. I, T. 181). In making this

Finding, the Court apparently overlooked the uncontra-

dicted testimony of consumers and retail grocers who

testified positively that prior to April, 1942, they knew

of no food product on the American market bearing the

name ‘Raisin-BRAN’’ other than Appellant’s product

(see notes, 12j, k, l, m, page 130 infra), or if the

Court did not overlook that testimony, the Court

erred in its Conclusion of Law as to what is

necessary to prove a negative. A negative, from

its nature, usually admits of no more than approximate

125

proof, and evidence which renders the negative probable

is sufficient proof of the negative in the absence of posi-

tive proof to the contrary. 32 C. J. S., See. 1025, p. 1062;

Leonard v. St. Joe Lead Co., 8th C. C. A., 1935, 75 F.

2d 390: Southern Rwy. Co. v. Stewart, 8th C. C. A., 1941,

119 F. 2d 85; Majestic Securities Corp. v. Collector of

Internal Revenue, 8th C. C. A., 1941, 120 F. 2d 12; Owen

rv. Carmichael’s Auto Co., (Cal, 1931), 2 P. 2d 580.

Note 7. The Petitioner’s attempt to register the

trade-mark under the 1905 Trade Mark Act and its sub-

sequent registration under the 1920 Trade Mark Act did

not preclude the term “Raisin-BRAN’’ from acquiring a

secondary meaning.

In the Lower Court, the Respondent insisted that

the Petitioner admitted that the term ‘Raisin-BRAN”’

was so descriptive that it could not aequire a secondary

meaning because when the Petitioner first tried to reg-

ister its mark under the Trade Mark Act of 1905, such

registration was denied on April 9, 1926, on the ground

that ‘“‘Raisin-BRAN, is merely the commercial name of

applicant’s goods’’, and the applicant did not appeal

from such decision, but shortly thereafter registered the

mark under the Trade Mark Act of 1920 (T. 294).

The Trial Court paid no heed to this particular ob-

jection, and it is apparent that the objection was of no

foree or effect, for as shown in the case of Armstrong

Paint & Varnish Co. v. Nu-Enamel Corp., 305 U. 8. 315,

this Court has held that the registration under the 1920

Act did not preclude the acquisition of a secondary mean-

ing. Surely the fact that the term was used as a com-

mercial name for the product did not preclude the Pe-

Berananese: pein

126

titioner from claiming it as a trade-mark nor prevent

the term from thereafter acquiring a secondary meaning

under the method employed by the Petitioner to create

such secondary meaning. At the time that the regis-

tration was sought under the 1905 Trade Mark Act, the

question whether or not the term had aequired a_see-

ondary meaning was not at issue, and those proceedings

in the Patent Office were not res judicata of the pro-

ecedings here. Popular Mechanics Co. v. Fawcett Pub-

lications, Inc., 1 F. S. 292, 294; Trappey v. MclIlhenny

Co., 281 F. 23, cert. denied, 43 8. Ct. 94, 260 U. S. 733;

Gaidry v. McIthenny Co., 253 F. 6138; Bisceglia Bros. v.

Fruit Industries, Ltd., 20 F. S. 564; In Re American Cy-

anide & Chemical Corp., 99 F. 2d 964.

Note 8. Petitioner’s trade-mark use on its packages.

e e

TRADE MARK BRAND NAME

REG. U. S PAT OFF AND STATES

BRA

TRADE MARK BRAND NAME

OF THIS PRODUCT WHICH IS

(From Ptfs. Ex. 9)

127

Note 9. Early design for label and early proposed

designation for Respondent’s product.

(Exhibit 209)

Note 10. Steps in development of label for Respond-

ent’s product.

Klleygs

RAISIN

ADIBRAN

FLAKES

FLAKED WHEAT WITH NORE BRAN

AND LESS STARCH THAN WHOLE WHEAT

WITH SUGAR, SALT AND MALT FLAVORING

NET WEIGHT 8 OUNCES

MADE BY KELLOGG CO, BATTLE CREEK, MICH.

(Exhibit 208)

130

FLAKED WHEAT WITH MORE BRAN

AND LESS STARCH THAN WHOLE WHEAT

WITH SUGAR SALT AND MALT FLAVORING

NET WEIGHT 8 OUNCES

MADE BY KELLOGG CO, BATTLE CREEK, MICH.

(Exhibit 209

WITH OTHER PARTS OF WHEAT, RAISINS,

WET WEIGHT i 10 OUNCES

MADE BY KELLOGG CO., BATTLE CREEK, MICH,

(Exhibit 210)

FLAKES |

WITH OTHER PARTS OF WHEAT, RAISINS,

SUGAR, SALT AND WALT FLAVORING

a eh t

rye?

reaps i

i iT a

‘

]

MET WEIGHT es > 10 OUNCES

Coreck with Fauit

MADE BY KELLOGE6 C0., BATTLE CREEK, MICH,

ial

(Exhibit 203)

132

{

;

a

;

i

TRADE MARK BRAND NAME :

REG. tf. S. PAT OFF. AND STATES

TRADE MARK BRAND NAME

Whole Wheat Flakes with Raisfns.

“Brand Sl Aa

j .

» dia exclusive product distributed by SKINNER MANU

ek Soe a

(Exhibit 9)

Ss

ut? BASH

A ho" eee

Rep Vays

133

Note 11. The testimony of witnesses who said they

were not confused or would not be confused: 'T. 385, 390,

396, 412, 419, 668, 692, 695, 699, 700, 720, 771, 778, 846,

873, 874, 877, 886, 1026, 1030, 1033, 1035, 1037, 1029, 1041,

1043, 1046, 1049, 1052, 1066, 1066, 1121, 1125, 1139, 1139,

1172, 1174, 1176, 1192, 1194, 1197, 1199, 1202, 1216.

Note 12. Answers to questions as to meaning of

term Raisin Bran.

(a) Answers of consumers and retailers to question,

“What does raisin bran mean to you?” T. 376, 354, 385,

390, 403-404, 405 and 408, 413, 416, 418, 423-424, 425,

429-430, 444, 446, 449, 456, 459, 461, 482, 492, 495, 498,

571, 577, 581, 586, 633, 638, 641, 642, 653, 661-662, 668,

693, 695, 699, 757, 761, 768, 821, 824, $26, 832, 833, $39,

843, 846, 847, 852, 855, 858, 863, 884, 887, 1030, 1035, 1039,

1041, 1046, 1049, 1055, 1070, 1072, 1075, 1078, 1091, 1099,

1100, 1111, 1113, 1115, 1119, 1121, 1125, 1182, 1135, 1138,

1143, 1146, 1149, 1151, 1152, 1159, 1176, 1182, 1187, 1191,

1194, 1197, 1199, 1201, 1206, 1216, 1219, 1222.

(b) Witnesses listed in (a) who gave their evidence

with the Kellogg and General Foods competing products

in mind: T. 385, 413-414, 423, 425, 429, 444, 455-456, 459,

461, 481-482, 571, 577, 581-582, 586, 633, 635, 638, 653,

692-693, 695-696, 699, 757, 761, 768, 821, 824, 826, 833,

839, 843, 847-848, 852, 858, 863, 884, 887, 889, 1026, 1030,

1039, 1041, 1046, 1049, 1072, 1075, 1078, 1091, 1095, 1100,

1111, 1115, 1119, 1121, 1123, 1125, 1132, 1135, 1138, 1143,

1146, 1149, 1151, 1152, 1159, 1187, 1191, 1194, 1199,

1201, 1206, 1216.

(c) Witness listed in (a) who testified that before

advent of General Foods and Kellogg competing prod-

134

ucts, “Raisin Bran” mean petitioner’s product: T. 3576-

377, 405 and 408, 410, 413-414, 423-424, 429-430, 444,

492, 499, 582-583, 594, 598-600, 635, 644, 661-662, 668, 674-

675, 698-699, 700, 701, 729, 738, 741, 769 and 772, 819-

821, 875, 1076-1077, 1095 and 1097, 1102-1103, 1143-1144,

1204-1205, 1216-1218, 1218-1220, 1222-12253.

(d) Witnesses listed in (a) who answered leading

and suggestive questions: T. 390, 446, 495, 498, 571, 638,

668, 768, 826, 833, 1072, 1075, 1095, 1111, 1113, 1132.

(e) Witnesses listed in (a) who had practically no

acquaintance with Petitioner’s product: T. 384, 416, 418,

492, 832, 855, 1034-1035, 1046, 1072-1073, 1149, 1152, 1159,

1176, 1182, 1197.

(f) Witnesses listed in (a) who were asked for dic-

tionary definitions: T. 393, 403, 571, 577, 581, 586, 633,

635, 638, 641, 642, 653, 661-662, 668, 693, 695, 699, 757, 761,

768, 821, 824, 826, 832, 833, 839, 843, 846, 847, 852, 859,

858, 863, 884, 887, 889, 1039, 1041, 1046, 1070, 1072, 1075,

1078, 1091, 1095, 1100, 1111, 1113, 1115, 1119, 1121, 1125,

1132, 1135, 1138, 1143, 1146, 1149, 1151, 1152, 1159, 1176,

1182, 1187, 1191, 1194, 1197, 1199, 1201, 1206, 1216, 1219,

1222.

(g) Consumer and retailer witnesses who answered

that “raisin bran” does not mean a particular producer:

Consumers: 413, 416, 461, 653, 889, 1152, 1182, 1194,

1216-1217.

Retail Grocers: 430, 444, 699, 756-757, 824, 1187, 1192,

1201-1202, 1206-1207, 1218-1220, 1221-1222.

(h) Witnesses listed in (g) whose testimony shows

135

that before competition they understood “Raisin Bran”

meant the Petitioner’s product:

Consumers: 413, 653, 1216-1217.

Retailers: 699, 756-757, 1218-1220, 1221-1223. (See also

430, 444, 1206-1207.)

(i) Witnesses listed in (g) who had competing

products in mind when testifying:

Consumers: T. 461, 653, 889, 1152, 1182, 1194, 1216-

1217.

Retailers: T. 756-757, 824, 1187, 1192, 1201-1202,

1206-1207, 1218-1220, 1221-1223.

(j) Witnesses who testified that before Respondents

put their competing products on the market, the term

“raisin bran”, standing alone, had not been applied to

any food product. T. 262, 363, 392, 461, 482, 489, 518, 520,

534, 621, 624, 640, 659, 667, 689, 718, 821, $26, 1172, 373,

425, 430.

(k) Witnesses listed in (a) above who testified that

before Respondents put their competing products on the

market there was no product other than Petitioner’s

known as “raisin bran”. T. 362, 377, 449, 640, 642, 1112,

1126, 461, 654, G63, $34, 852, 1093, 1098, 1104, 1123, 1126,

1135, 1170, 1174, 1180, 1193, 1195, 1219.

(1) Witnesses listed in (a) above who testified that

there was no such thing as the bran of a raisin. T. 849,

852.

(m) Witnesses listed in (a) above who test ad that

“raisin bran” did not signify any particular formula. T.

413, 416, 418, 423, 444, 459, 461, 824, 843.

136

Note 13. Retail grocer witnesses who said they didn’t

know of any confusion: T. 426-427, 487, 556, 577, 617,

1030, 1037, 1039, 1041, 1049, 1052, 1066, 1072, 1101, 1121,

1125, 1187, 1202.

Note 14. Section 240 (a) of Judicial Code:

‘See, 240. (a) In any ease, civil or criminal, in

a circuit court of appeals, or in the Court of Ap-

peals of the District of Columbia, it shall be com-

petent for the Supreme Court of the United States,

upon the petition of any party thereto, whether

Government or other litigant, to require by certio-

rari, either before or after a judgment of decree by

such lower court, that the cause be certified to the

Supreme Court for determination by it with the same

power and authority, and with like effect, as if the

ease had been brought there by unrestricted writ of

error or appeal.’’

Note 15. Federal Rule of Civil Procedure 52:

“Rule 52. Finding by the Court. (a) Effect. In all

actions tried upon the facts without a jury, the court

shall find the facts specially and state separately its con-

clusions of law thereon and direct the entry of the ap-

propriate judgment; and in granting or refusing inter-

locutory injunctions the court shall similarly set forth

the findings of fact and conclusions of law which con-

stitute the grounds of its action. Requests for findings

are not necessary ‘‘unless clearly erroneous, and due re-

gard shall be given to the opportunity of the trial court

to judge of its credibility of the witnesses. The findings

of a master, to the extent that the court adopts them,

shall be considered as the findings of the court.’’

Note 16. Federal Rule of Civil Procedure 1:

RESELL fe AEP LS ED RED ENS aye IS

2 H&S oes I

4

137

“Rule 1. Scope of Rules. These rules govern the

procedure in the district courts of the United States

in all suits of a civil nature whether cognizable as cases

at law or in equity, with the exceptions stated in Rule

81. They shall be construed to secure the just, speedy,

and inexpensive determination of every action.”’

Note 17. c. 651, 48 Stat. 1064:

“See, 1. Rules in actions at law; Supreme Court

authorized to make. The Supreme Court of the United

States shall have the power to prescribe, by general

rules, for the district courts of the United States and

for the courts of the District of Columbia, the forms of

process, writs, pleadings, and motions, and the practice

and procedure in civil actions at law. Said rules shall

neither abridge, enlarge, nor modify the substantive

rights of any litigant. They shall take effect six months

after their promulgation, and thereafter all laws in con-

flict therewith shall be of no further force or effect.

“See, 2, Union of equity and action at law rules;

power of Supreme Court. The court may at any time

unite the general rules prescribed by it for cases in equity

with those in actions at law so as to secure one form of

civil action and procedure for both: Provided, however,

That in such union of rules the right of trial by jury as

at common law and declared by the seventh amendment

to the Constitutiton shall be preserved to the parties

inviolate. Such united rules shall not take effect until

they shall have been reported to Congress by the At-

torney General at the beginning of a regular session

thereof and until after the close of such session.’’

6AM ILE LR EI LEER LEE SLE ELE AEA LES

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138

Note 18. Ten-year clause of 1905 Trade Mark Act:

“See, 5. Trade-marks which may be registered. No

mark by which the goods of the owner of the mark may

be distinguished from other goods of the same class

shall be refused registration as a trade-mark on account

of the nature of such mark unless such mark—

‘‘(a) Consists of or comprises immoral or scandal-

ous matter.

‘““(b) Consists of or comprises the flag or coat of

arms or other insignia of the United States or any sim-

ulation thereof, or of any State or municipality or of

any foreign nation, or of any design or picture that has

been or may hereafter be adopted by any fraternal so-

ciety as its emblem, or of any name, distinguishing mark,

character, emblem, colors, flag, or banner adopted by any

institution, organization, club, or society which was in-

corporated in any State in the United States prior to

the date of the adoption and use by the applicant: Pro-

vided, That said name, distinguishing mark, charaacter,

emblem, colors, flag, ‘‘or banner was adopted and pub-

licity used by said institution, organization, club, or

society prior to the date of adoption and use by the ap-

plicant: Provided, That trade-marks which are identical

with a registered or known trade-mark owned and in use

by another and appropriated to merchandise of the same

descriptive properties, or which so nearly resemble a

registered or known trade-mark owned and in use by

another and appropriated to merchandise of the same

descriptive properties as to be likely to cause confusion

or mistake in the mind of the public or to deceive pur-

—— Se

13!

chasers shall not be registered: Provided, That no mark

which consists merely in the name of an individual, form,

corporation, or association not written, printed, im-

pressed, or woven in some particular or distinetive man-

ner, or in association with a portrait of the individual,

or merely in words or devices which are descriptive of

the goods with which they are used, or of the character

or quality of such goods, or merely a geographical name

or term, shall be registered under the terms of this sub-

division of this chapter: Provided further, That no por-

trait of a living individual may be registered as a trade-

mark except by the consent of such individual, evidenced

by an instruument in writing, nor may the portrait of

any deceased President of the United States be reg-

istered during the life of his widow, if any, except by

the consent of the widow evidenced in such manner: And

provided further, That nothing herein shall prevent the

registration of any mark used by the applicant or his

predecessors, or by those from whom title to the mark

is derived, in commerce with foreign nations or among

the several States or with Indian tribes which was in ac-

tual and exclusive use as a trade-mark of the applicant,

or his predecessors from who he derived title, for ten

years next preceding February 20, 1905: Provided

‘further, That nothing herein shall prevent the registra-

tion of a trade-mark otherwise registrable because of its

being the name of the applicant or a portion thereof. And

if any person or corporation shall have so registered a

mark upon the ground of said use for ten years preceding

February 20, 1905, as to certain articles or classes of

articles to which said mark shall have been applied for

said period, and shall have thereafter and sub: equently

ne ee

At Reig NS

140

extended his business so as to include other articles not

manufactured by said applicant for ten years next pre-

ceding February 20, 1905, nothing herein shall prevent

the registration of said trade-mark in the additional

classes to which said new additional articles manu-

factured by said person or corporation shall apply, after

said trade-mark has been used on said article in inter-

state or foreign commerce or with the Indian tribes for

at least one year provided another person or corporation

has not adopted and used previously to its adoption and

use by the proposed registrant, and for more than one

year such trade-mark or one so similar as to be likely to

deceive in such additional class or classes.”’ Feb. 20,

1905, ¢. 592, See. 5, 33 Stat. 725; Mar. 2, 1907, ¢. 2573,

Sec. 1, 34 Stat. 1251; Feb. 18, 1911, ¢. 113, 36 Stat. 918;

Jan. 8, 1913, ¢. 7, 37 Stat. 649; Mar. 19, 1920, ¢. 104,

See. 9, 41 Stat. 535; June 7, 1924, c. 341, 43 Stat. 647.

Note 19. Section 16 of the 1905 Trade Mark Act:

“See, 16. Evidence of ownership; infringement, and

damages therefor. The registration of a trade-mark

under the provisions of this sub-division of this chapter

shall be prima facie evidence ‘‘of ownership. Any person

who shall, without the consent of the owner thereof, re-

produce, counterfeit, copy, or colorably imitate any such

trade-mark and affix the same to merchandise of sub-

stantially the same descriptive properties as those set

forth in the registration, or to labels, signs, prints, pack-

ages, wrappers, or receptacles intended to be used upon

or in connection with the sale of merchandise of substan-

tially the same descriptive properties as those set forth

in such registration, and shall use, or shall have used,

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141

such reproduction, counterfeit copy, or colorable imi-

tation in commerce among the several States, or with a

foreign nation, or with the Indian tribes, shall be liable

to an action for damages therefor at the suit of the

owner thereof; and whenever in any such action a ver-

dict is rendered for the plaintiff, the court may enter

judgment therein for any sum above the amount found by

the verdict as the actual damages, according to the cir-

cumstances of the case, not exceeding three times the

amount of such verdict, together with the costs.’’ Feb.

20, 1905, ¢. 592, See. 16, 33 Stat. 728.

Note 20. Section 17 of the 1905 Trade Mark Act:

“See, 17. Jurisdiction of suits. The district and Ter-

ritorial courts of the United States and the district

court of the United States for the District of Columbia

shall have original jurisdiction, and the cireuit courts of

appeal, of the United States and the United States Court

of Appeals for the District of Columbia shall have appel-

late jurisdiction of all suits at law or in equity respecting

trade-marks registered in accordance with the provisions

of this subdivision of this chapter, arising thereunder,

‘“‘without regard to the amount in controversy.’’ Feb.

20, 1905, ¢. 592, See. 17, 33 Stat. 728; Mar. 3, 1911, e. 231,

See. 291, 36 Stat. 1167; June 7, 1934, ¢. 426, 48 Stat. 926;

June 25, 1936, c. 804, 49 Stat. 1921.

Note 21. Section 6 of the 1920 Trade Mark Act:

‘““See. 6. The provisions of Sees. 15, 17 to 27, in-

elusive, and 28 (as to class B marks only) of the 1905

Trade Mark Act, and the provisions of See. 2 of said Act,

are made applicable to marks placed on the register pro-

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vided for by See. 1 of this Act.’? Mar. 19, 1920, ¢. 104,

See. 6, 41 Stat. 535.

Note 22. Cases cited by Lower Courts and Respond-

ent, classified and distinguished.

(a) Cases which were decided prior to the time

that the American and English Courts recognized that

geographical, generic or descriptive words might acquire

a secondary meaning;'! or

(b) Cases in which the words sought to be appro-

priated were already in use in the language as designa-

tions for the particular products to which they were ap-

plied at the time the appropriation was sought, or were

terms which were so completely descriptive of the product

that to grant monopoly of them would deprive com-

petitors of the ability to aptly describe their competing

products; or

(c) Cases in which the defendant was not seeking

to use the exact term in such a manner as to be charged

11 Canal Co. v. Clark, 80 U. S. (138 Wall.) 311, 20 L. Ed. S81 (decided

1871): with like exceptions, see Amoskeag Mfg. Co. v. Trainer, 101 U. 8.

D1, 25 L. Ed. 993 (decided 1880) ; Lawrence Mfg. Co. v. Tennessee Mfg.

Co., 188 U. S. 587; 34 L. Ed. 997 (decided 1891) ; Brown Chemical Co. v.

Meyer, 127 U. 8. 540, 35 L. Ed. 247 (decided 1890) ; Good Year's India

Rubber Glove Mfg. Co. v. Goodycar India Rubber Co., 128 U. 8. 592, 32

L. Ed. 535 (decided 1888-; Linoleum Mfg. Co. v. Nairn, 7 Ch. Div. 834

(decided 1877).

12 “Toasted Corn Flakes,” Kellogg Toasted Corn Flakes Co, v. Quaker Oats

Co., 235 F. 657; “Shredded Wheat,” Kellogg Co. v. National Biscuit Co.,

305 U. S. 111; “Vistand,” Armstrong Mfg. Co. v. Ridge Tool Co., 132 F.

2d 158: “Mechanics,” Fawcett Publications v. Popular Mechanics Co., 80

F. 24 194: “Food Center” (not strong case), Houston v. Berde, 2 N. W.

24 9 (Minn.); “Jell-Well” applied to gelatin food, Jell-Well Dessert Co.

rv. Jell-X-Cell Co., 22 F. 2d 522; “Computing” and “Standard” in names of

corporations manufacturing scales, Computing Scale Co. v. Standard Com-

puting Scale Co., 118 F. 965; “Basser” as applied to a fish bait. James

Heddon’s Sons v. Millsite Steel & Wire Co., 128 F. 2d 6; “Cerate,” “Cap-

sules,” “Suppositories,” “Tablets,” “Laxatives,” “Pencils (not used as

trade-marks), Viavi Co. v. Vimedia Co., 245 F. 289; “Brake Block.”

a Brake Shoe & Foundry Co. v. Aliter Products Corp., 117 F. 2d

143

with using practically an identical term, but had made

such changes as were possible under the circumstances

to obviate the conclusion that there was an intentional

infringement, as for instance where “*Coca-Quinine’’? was

held not infringed by ‘‘Quin-Coca’’;* or cases in which

the words or terms were so dissimilar as to preclude the

charge of infringement ;'* or

(d) Cases in which the claimant had not relied upon

the descriptive, generic or geographical words to indicate

the souree of origin, but had used his own name or some

other name as a part of said mark and as a means of in-

dicating the source of origin;'> or

13. W. R. Warner & Co. v. Eli Lilly and Co., 265 U.S. 526, 68 L. Ed. 1161,

see also “Roof-Leak,” held not infringed by the name “Never Leak,”

Nears, Roebuck & Co. v. Elliott Varnish Co., 282 F. DRS: “Food Breakers,”

held not. infringed by “Combination Cake Breakers, Pie Cutter and

Server.” Coradon Co. v. Schneider, 47 FB. S. 785,

14. “Ripplette’-“Krinklette,” Bliss, Fabyan & Co. v, Aileen Mills, Inc., 25 F.

2d BIO: “Steel Shod"’-"Steel Clad,” Brennan v. Emery-Bird-Trayer Dry

Goods Co., 108 F. 624; “Specs’’-“Goggles,” Crindlebaugh v. Rudolph, 131

F. 2d 795: (See (g) also); “Tuberose”-"True Smoke,” P. Lorillard Co.

v. Peper, 86 FB. 956; “Grape Nuts”-"Grain Hearts,” Postum Cereal Co.,

Ltd. v. American Health Food Co., 119 F. 848; “Rex” on glass phar-

maceutical bottles held not infringed by “Pyrex” on glass cooking utensils

where only competing article was babies’ milk bottle, Walgreen Stores v.

Obcar-Nestor Glass Co., 113 F. 2d 956; “Wornova’-“Slipova,” Wornova

Mfg. Co.v. McCawley & Co.,11 F. 2d 465; “Old Country’-"“Our Coun-

try,” Allen B. Wrisley Co. v. Iowa Soap Co., 122 F. 796.

15 “Brooten’s Kelp Ore,” Brooten v. Oregon Kelp Ore Products Co., 24 F.

294 496: “Samaritan Nervine,” Richmond Remedies Co. v. Dr. Miles

Medical Co. 16 F. 24 598; “Sanias (also Kellogg's Toasted Corn Flakes.”

Kellogg Toasted Corn Flakes Co. v. Quaker Oats Co., 235 F. 657; “Du-

pont Cellophane,” DuPont Cellophane Co., Inc. v. Waxed Products Corp.,

&5 F. 2d 75: See also “Hunyadi Janos,” Saarlehner v. Wagner, 316 U. 8.

375, D4 L. Ed. 525; “Horlick’s Malted Milk.” Horlick’s Malted Milk v.

Summerskill. 85 L. J. R. 338; “Fels Naphtha,” Fels v. Christopher-Thomas

é& Bros. 21 R. P. C. 85; “W. H. Bull's Herbs & Iron,” Spicer v. W. H.

Bull Medicine Co. 49 F. 24 980; “Krank’s Lather Kreem,” A. J. Krank

Mfg. Co. v. Pabst. 277 F. 15; “American Brakeblok,” American Brake

Shoe & Foundry Co. v. Allter Products Corp., 117 F. 2d 9838; Cellular

Clothing Co. Ltd. v. Marton & Murray, L. R. (189) A. C. 326, 80 L. T.

R.. N. S. 808, was an appeal from the Scottish High Court of Justice, the

decision for which is found in 35 Se. L. R. 869. In the Scottish Reports it

appears that the claimants had used the word “Aertex” as its trade-mark

and had also designated the product “Kershaw’s Cellular Cloth,” the word

“Kershaw’s” being the name used to identify the source of origin: “—Par-

son’s Oatmeal.” Parsons Bros. v. John Gilleespie, 15 R. P. ©. 57.

144

(ec) Cases in which the claimant when it first placed

its product upon the market, and for a number of years

thereafter, did not use as a trade-mark the descriptive or

generic words which it later claimed had acquired a

secondary meaning, but first used such words as purely

descriptive of the product and placed distinctive trade

marks on the packages to indicate the source of origin ;'°

or

(f) Cases in which the plaintiff was claiming a sec-

ondary meaning but where the evidence showed that

plaintiff had not had the exclusive use of the term

claimed, but the term was in common use in the compet-

16 Kellogg Co. v. National Biscuit Co., 305 U. S. 111; DuPont Cellophane

Co. v. Waxed Products Corp., 85 F. 2d 75; Claimant depended on a white

horse as trade-mark, Jamieson & Co. v. Jamieson, 15 R. P. C. 169;

Claimant had trade-mark represented by picture of a pig in natural walk-

ing position, head down, with words “Pig Sandwich” extending from

shoulder to hind leg. Respondent relied on trade-mark consisting of picture

of a pig standing erect with a checked cap on head, white apron fastened

around neck, checked tie around neck, pig holding a knife as a waiter in

front hoofs, with a sandwich thereon, and the word “Dixiepig’’ imme-

diately under the waiter, Dixiepig Corporation v. Pig Stand Co., (Civ.

App., Tex. 1930, 31 8. W. 24 325; “Mirrolike”’ applied to polish, claim-

ant’s mark surrounded by diagram or ornamental scroll, Mirrolike Mfg.

Co. v. DeVoe & Reynolds Co., Inc., 3 F. 2d 847: S. Chivers & Sons v. 8.

Chivers & Co., 17 R. P. C. 421, in which case the dispute related to the

nuse of the surname “Chivers” on jams and jellies. The complainant in

the case used a gold seal for its trade-mark and did not rely on the name

“Chivers” for a trade-mark, and the respondent in the case used a pic-

torial design with the word “Salisbury” as its trade-mark ; Parsons Bros.

». John Gillespie, 15 R. P. C. 57, in which case a pictorial trade-mark had

beenu used to indicatee source of origin; Steem-Electric Corp. v. Herzfeld

Phillipson Co., 118 F. 2d 122, in which case a pictorial trade-mark had

been used with a picture of a flatiron from which a cloud of steam was

emanating, with a bolt of lightning coming from the cloud to the iron.

BUC Pe Nat eal ARIE IA IAAL LIAB DEBE ULNE SGPRALELLLRI AAP,

145

itive trade or generic name for the product to which the

plaintiff sought to apply the mark;'’ or

(g) Cases in which the decision did not turn upon

the establishment of a secondary meaning or in which the

plaintiff’s right or claim was predicated upon a claim of

a

technical trade-mark right and not upon a secondary

meaning ;'* or

17

“Steem-Electric” (steam electric), Steem-Electric Corp. v. Herzfeld Phil-

lipson Co., 118 F. 2d 122; “Dridip” (dry dip), Ungles-Hoggette Mfg. Co.

v. Farmers’ Hog & Cattle Powder Co., 232 F. 116; “Nervine,” Richmond

Remedies Co. v. Dr. Miles Medical Co., 16 F. 2d 598; “Corn Flakes’,

Kellogg Toasted Corn Flakes Co. v. Quaker Oats Co., 235 F. 657; “Oat-

ies” (diminutive “ies” not being exclusive in the defendant), Quaker Oats

Co. v. General Mills Co., 134 F. 2d 429; to like exception are “Hunyadi

Water.” Sazlehner v. Wagner, 316 U. S. 375, M44 L. Ed. 525; “Imperial

Whiskey.” Hiram Walker & Sons v. Penn-Maryland Corp., 79 F. 2d 8386;

“Mirrorlike” applied to polish, Mirrorlike Mfg. Co. v. DeVoe & Reynolds

Co.. Inc.. 3 F. 2d 847 (See (e) also) ; “Wire Glass” as a name for glass

in which wire is enmeshed, Wire Glass Co. v. Continuous Glass Co., 7

N. J. BE. 277, 81 At. 374; “Cellular Cloth,” Cellular Clothing Co., Ltd., v.

Maxton & Murray, 35 Se. L. R. 869.

“No-D-Ka,” No-D-Ka Dentrifice Co. v. 8S. 8. Kresge Co., 24 F. 2d 726;

The claimant asserted that “No-D-Ka”’ was a technical trade-mark and en-

titled to the protection of registration under the 1905 Trade-Mark Act.

but not under the ten-year clause thereof, and the Court held that the

term was not a technical trade-mark, and no secondary meaning having

been established, the decision was adverse to the claimant; “Elgin

Watch,” Elgin National Watch Co. v. Illinois Watch Co., 179 U. 8.

665, 21 S. Ct. 270, 45 L. Ed. 365 (1900) ; Subsequent to the foregoing de-

cision, the right of the plaintiff to protection in the name “Elgin” be-

cause of the secondary meaning which the name had acquired was upheld

by the Federal Courts, Elgin National Watch Co. v. Loveland, 132 F. 41,

CG. G Ia. 1904; “Ruberoid,” Standard Paint Co. v. Trinidad Asphalt

Mfg. Co., 220 U. 8. 446, 55 L. Ed. 5386; Beckwith v. Commissioner of

Patents, 252 U. 8. 588, 64 E. Ed. 705; “Stabrite” for polish, secondary

meaning not involved, patent office registration only, In re Swan & Finch

Co., 259 F. 991: “Boiler Meter” for meter which would measure steam

from boiler, secondary meaning not involved, Er Parte Bailey Meter Co.,

487 O. G. 675, 36 U. S. P. Q. 294; Patent Office Registration, Er Parte

Railley Corp., 42 U. 8. P. Q. 472; Patent Office registration, Er Parte

Bardons & Oliver Inc., 42 U. S. P. Q. 682; “Bowlmill” as trade-mark

for patented grinding device, no secondary meaning involved, Er Parte

Combustion Engineering Co., 43 U. S. P. Q. 191; “Speed Wagon” as

applied to trucks, Patent Office registration, no secondary meaning in-

volved, Ex Parte Reo Motor Car Co., 341 O. G. 4, 16 F. 2d 349; “Malto-

Dextrine,” trade-mark registration, no secondary meaning involved, In

re Hartog, 49 U. S. P. Q. 121; “Ne Line” for hosiery, In re Archer

Hosiery Mills, 135 F. 2d 239; “Arch Rest” (held not descriptive), In re

Irving Drew, 297 F. 889; “Al-Kol” for alcohol, American Druggists’ Syn-

dicate v. United States Industrial Alcohol Co., 2 F. 2d 942; “Prun-O-

Wheat.” W. E. Long v. U. S. Bakery, 20 U. 8. P. Q. 520.

08 SPEER ee ee

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146

(h) Cases in which the product to which the term

was applied were patented, so that it was held that the

designation given to the patented article passed to the

public domain with the expiration of the patent, and there

were no special circumstances warranting an exception

to such general rule;'® or

(i) Cases in which a trade-mark or trade name so

aptly described competing products that the public on its

own motion and without any effort or blame on the part

of competitors adopted the term as the name for the

product, whether sold by the original user or his com-

petitors, and thus made a free word of the trade-mark ;”

or

(j) Cases in which numbers, colors, the use of un-

patented articles, or pictures, not trade-marks or trade

names, were involved.”

19 “Shredded Wheat”, Kellogg Co. v. National Biscuit Co., 305 U. 8S. 111,

83 L. Ed. 73; “Cellophane”, DuPont Cellophane Co. Inc. v. Wared

Products Corp., 85 F. 2d 75; see also “Steem-Electric Corp. v. Herzfeld

Phillipson Co., 118 F. 2d 122 “Linoleum”, Linoleum Mfg. Co. v. Nairn, 7

Ch. Div. 834; Singer Mfg. Co. v. June Mfg. Co., 163 U. 8. 169, 16 8. Ct.

1002, 41 L. Ed. 118; Centaur v. Heinsfurter, 84 F. 955; “Magic Drill

Chuck”, Collis Co. v. Consolidated Machine Tool Corp., 41 F. 2d 641;

“Specs”, Cridlebaugh v. Rudolph, 131 F. 795; “Wire Glass”, Wire Glass

Co. v. Continuous Glass Co., 79 N. J. E. 277, 18 At. 374.

%) Dry Ice Corporation v. Louisiana Dry Ice Corporation, 54 F. 2d 882.

21 Color—Diamond Match Co. v. Saginaw Match Co., 142 F. 727; Article

manufactured, Zithers—Flagg Mfg. Co. v. Holway, 178 Mass. 83, 59 N. E.

667: Numbers and letters for grades and types—Matthews Conveyor Co.

v. Palmer-Bee Co., 135 F. 2d 73; Color and packaging of box of ecandy—

Morse v. Towney; 256 F.9385; Type of overall—J. C. Penney Co. v. H. D.

Lee Mercantile Co., 120 F. 949; Unpatented use of unpainted aluminum

and unpatented form of constructtion for a mechanical implement—Pope

Automatic Merchandising Co. v. M’Crum-Howell Co., 191 F.979; Type

of table—Zangerle & Peterson Co. v. Venice Furniture Novelty Mfg. Co.,

133 F. 2d 266.