Petitioners Brief — Skinner Manufacturing Co. v. General Food Sales Co.

Supreme Court brief1944

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IN THE

Supreme Court of the United States

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OCTOBER TERM, 1944

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Be isitsanctsacutee

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SKINNER MANUFACTURING COMPANY,

a Nebraska Corporation,

Petitioner,

vs.

GENERAL FOOD SALES COMPANY, Ine.,

a Delaware Corporation,

Respondent.

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BRIEF IN SUPPORT OF PETITION FOR

CERTIORARI

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REPORTS OF OPINIONS IN COURTS BELOW

The opinion of the District Court of Nebraska from

which appeal was taken to the United States Cireuit

Court of Appeals is found in 52 Federal Supplement at

pages 432 to 452, inclusive.

The opinion of the United States Circuit Court of

Appeals for the Eighth Circuit, on account of which this

Writ of Certiorari is sought, is not yet published in an

official report, but is found on pages 3 to 11 of Vol. VI

of the Transcript of Record.

Hisar Ree ERR A

Ea BR

Aiea aR es

pate

eat

JURISDICTION

The jurisdiction of this Court is predicated upon Sec-

tion 240 (a) of the Judicial Code as amended (A. 14).

The jurisdiction of the District Court and United States

Cireuit Court of Appeals were predicated upon Section 17

of the 1905 Trade-Mark Act (A. 20) and Section 6 of

the 1920 Trade-Mark Act (A. 21).

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STATEMENT OF CASE

A concise statement of the case with references to the

record is found on pages 2 and 15 of the Petition for

Writ of Certiorari to which this Brief is appended, and

by reference is hereby incorporated in this Brief.

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SPECIFICATIONS OF ERRORS INTENDED TO BE

URGED

The specifications of errors intended to be urged are

found under ‘‘Questions Presented’’ on pages 16 to 19 in

Petition for Writ of Certiorari to which this Brief is

appended, and by reference are hereby incorporated in

this Brief.

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APPLICABLE DECISIONS, STATE OR FEDERAL

As stated in Note 1 of the Opinion of the Highth

Circuit Court of Appeals (T. Vol. VI, p. 9), “It is not

contended that the applicable local law differs substan-

tially from the general law, and the parties rely upon

Federal precedents.’? The Lower Court discussed this

matter thoroughly in 52 F. S. 482 at pages 439-441, and

IEP AD DINGS ey SALE

<a ama

after reviewing the Nebraska decisions, said: ‘It is, there-

fore, considered that there is no disparity between the

pertinent substantive law, if any, as administered in the

State Courts of Nebraska, and that which is to be gleaned

from the American decisions generally, and particularly

from the Federal Court decisions.’’ Neither of the parties

took any exception to the Trial Court’s conclusions in

this matter.

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ARGUMENT

1. Federal Rule of Civil Procedure No. 52 did not

change the old right of an appellant in an equity case to

have the findings of fact reviewed in the Appellate Court.

In its discussion of secondary meaning, the Court of

Appeals said: ‘‘Under the evidence, the issue was one of

fact to be tried and determined by the Trial Court, and

its determination is binding upon this Court. Cleo Syrup

Corporation v. Coca-Cola Co., 8 Cir., 139 F. 2d 416, 417-

418 and eases cited’’ (T. Vol. VI, p. 9).

The Court of Appeals also said:

‘‘Under the evidence, the questions whether the

appellees had furnished adequate means to identify

their products and to distinguish them from appel-

lant’s product, and whether the similarities which ex-

isted between the packages used by appellees and the

package used by appellant have caused or are likely

to cause deception and confusion in the trade, were,

we think, questions of fact for the Trial Court to de-

termine. Cleo Syrup Corporation v. Coca-Cola Co., 8

Cir., supra’’ (T. Vol. VI, p. 10).

In the opinion of the Eighth Cireuit Court in the case

of Cleo Syrup Corporation v. Coca-Cola Co., supra, the

Court said:

“This court, upon review, will not retry issues

of fact or substitute its judgment with respect to such

issues for that of the trial court. * * * The power of

the trial court to decide doubtful issues of fact is not

limited to deciding them correctly.”’

It thus appears that the Kighth Cireuit Court of Ap-

peals considered that the rights of appellant to a review

of findings of fact of the Trial Court in an appeal in ar

equity case, were abridged and modified by that sentence

of Federal Rule of Civil Procedure No. 52 which reads:

‘‘Findings of fact shall not be set aside unless clearly

erroneous, and due regard should be given to the oppor-

tunity of the Trial Court to judge of the credibility of

witnesses’? (A. 15). It is submitted that the failure of

the Eighth Circuit Court of Appeals to review the Trial

Court’s Findings of Fact on the questions of secondary

meaning, confusion, palming off, and likelihood of con-

fusion and palming off, was prejudicial error.

This Court has not passed definitely on the particular

questions involved, but the following indicates that it does

not incline to the position taken by the Kighth Cireuit

Court of Appeals: ‘‘This general rule (Federal Rule of

Civil Procedure No. 52), even if it were thought to modify

the previous rule as to review of findings of fact in equity

cases, would hardly supersede a special statutory measure

of review applicable to a special and local tribunal. We

conclude therefore, that the Court of Appeals has power

to review decisions of the Board of Tax Appeals as under

the equity practice in which the whole case, both facts and

law, are open for consideration in the Appellate Court

* * * 9 District of Columbia v. Pace, U. S. —, 88

L. Ed. Adv. Sh. 6, pp. 319, 321.

On this same question, the Advisory Committee on

Rules, in its note on this section, said; ‘** * * The rule

MRE eRe RRA AT DT ey -

stated in the third sentence of subdivision A (Rule 52) ac-

cords with the decisions on the scope of review in mod-

ern federal equity practice.’’ Tit. 28, U. S, C. A., foll.

See, 723 (ec), pp. 677, 678. Prior to the adoption of the

new Federal Rules of Civil Procedure, it was well estab-

lished that an appellant in equity had the right to have

the Appellate Court review the facts as well as the law.

‘An appeal in equity imports a broad power of revision.”’

Radio Corporation. of America v. Radio Engineering

Laboratories, 293 U. S. 1,9: ‘‘By the ordinary practice in

equity as administered in England and this country, an

Appellate Court has the power on appeal ** * to examine

the merits of the case if sufficiently shown by the plead-

ings and the record * * *,’’ North Carolina Railroad Co.

v. C. D. Storey, Sheriff, 268 U. S. 288, 292; Unkle v.

Wiles, 8th C. C. A., 281 F. 29; Klaber v. Lakenan, 64 F.

2d 86.

The right to have the Appellate Court try the case

de novo and review the law and the facts of the case, is a

substantive right, not a mere matter of procedure. The

Statute which gave the Supreme Court authority to pro-

mulgate the Federal Rules of Civil Procedure says in

part: ‘‘Said rules shall neither abridge, enlarge nor mod-

ify the substantive rights of any litigant.’’ ¢. 651, See. 1,

48 Stat. 1064 (A. 17). That portion of the Statute which

provides that there shall be but one form of civil action

reads: ‘‘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. * * *”’ ¢. 651, Sec. 2, 48 Stat.

1064 (A. 17). This, however, does not indicate that sub-

stantive rights of parties engaged in suits of an equitable

nature were to be abrogated, but merely that the form of

action and the procedure in a case of an equitable nature

was to be modified so that the form of action and pro-

cedure should be the same as in a suit at law.

Federal Rule of Civil Procedure No. 1 reads: ‘*These

rules govern the procedure * * * They shall be construed

to secure the just determination of every action’? (A. 16).

It is submitted that this makes it clear that the rules were

not intended to change the scope of review on appeal of a

case of an equitable nature so that the findings of fact of

the trial court should not be subject to review.

Conflict in Decision of Circuit Court of Appeals

The decision of the Highth Cireuit Court of Appeals

on this point, as set forth in the opinion in this case and

in Cleo Syrup Corporation v. Coca Cola Company, 8th

C. C. A., 138 F. 2d 416, is contrary to the decisions in

other Cireuits in the following cases: Jarvis, Postmaster,

vy. Shackleton Inhaler Co., 6th C. C. A., 136 F. 2d 116, 117;

Pfeifer Oil Transportation Company, Inc. v. The Ira 8S.

Bushey, et al., C. C. A., 129 F. (2d) 607; Kuhn v. Prin-

cess Lida of Thurw and Taxis, 3rd C. C. A., 119 F. (2d)

704; Texas Agricultural Association of Edinburg et al v.

Hidalgo Co. Water Control Improvement District et al,

5th C. C. A., 125 F. 2d 829; Equitable Life Assurance So-

ciety of the United States v. Irelan, 9th C. Cc. A., 123 F.

(2d) 462.

In the opinion in the case at bar, the Eighth Cireuit

Court of Appeals said that the question ‘‘whether the

similarities which exist between the packages used by the

appellees and the packages used by appellant have caused

or are likely to cause deception and confusion in the trade,

is, we think, a question of fact for the trial court to deter-

mine’? (T. Vol. VI, p. 10). This holding is contrary to

the following holding on the same question:

“He” (the Trial Judge) ‘‘did find such ‘simi-

larity in sound and appearance * * * as to make con-

fusion of the two probable.’ Apparently that finding

was not based on the testimony as to confusion; if

we assume that it was then we must hold that finding

‘clearly erroneous.’ If it was not based on that testi-

mony but solely on the names themselves, we are in as

good a position as the trial judge to determine the

probability of confusion.”’

Eastern Wine Corporation v. Winslow-Warren,

Ltd., Inc., 2nd C. C. A., 187 F. 2d 955, 959-960.

2. At the time of its adoption by Petitioner as a

trade mark for its breakfast food, the term ‘‘Raisin-

Bran,’’ standing alone, was not the primary generic name

for any particular product.

The Circuit Court of Appeals in its Opinion treated

the term ‘‘Raisin Bran’’ as ‘‘the primary generic name

for the Petitioner’s breakfast food product at the time of

its adoption by the Petitioner (T. Vol. VI, p. 7). This

is not in accord with the evidence or with the findings of

the Trial Court. The evidence shows that there is no sueh

thing as the bran of a raisin (A, 121). The evidence also

shows that prior to its adoption by the Petitioner in 1925,

the term ‘‘Raisin Bran’’, standing alone, had not been

applied to any food product (A. 12j; F. 6, T. 106), and

there was no evidence of such employment on any food

product prior to 1925 (par. 1, 'T. 152); and there was posi-

tive testimony to the effect that it had not been employed

on any product prior to 1925 (A. 6c). And the Trial

Court found, ‘*There is no such product or thing as the

bran of a raisin. Nor is there any product or thing which

PO Sere .

may ordinarily and logically be characterized as ‘a raisin

bran’ ”’ (F. 8, T. 107).

In spite of the above evidence and findings, the Trial

Court failed to distinguish the difference between the

terms ‘‘Shredded Wheat,’’ ‘‘Corn Flakes,’’ and ‘‘Oat-

meal’? and the term ‘‘Raisin-BRAN.”’ There is, however,

a marked distinction between these terms. ‘‘Shredded

Wheat”? is a wheat which has been shredded; the genus is

‘‘wheat,’’ the species is indicated by the word ‘‘shred-

ded.”? ‘Corn Flakes’? are either corn which has been

flaked, or flakes made of corn; ‘‘Qatmeal’’ is either oats

which have been mealed or meal made of oats; and the

respective genus is either ‘eorn’’ or ‘‘oats’’ with the

words ‘‘flakes’’? and ‘‘meal’’ respectively used to indicate

the species of the genus, or the words ‘‘flakes’’ or ‘‘meal’’

respectively represents the genus with the words ‘‘eorn’”

and ‘oats’? used to represent the species. ‘‘Raisin-

BRAN,”’ however, does not signify bran which has been

raisined, or raisins which have ben branned, nor does it

signify the bran of a raisin or the raisin of a bran. The

term is merely a combination of two generic words which,

when combined, do not constitute a single generic term,

or a term which designates the species of a genus.

The Circuit Court of Appeals endeavored to support

its statement that the term ‘‘Raisin-BRAN’’ was_ the

‘‘primary generic’’ name of Petitioner’s product, by say-

ing ‘‘without raisins the product would appropriately have

been called ‘bran flakes’ or ‘bran.’ With raisins it was

‘raisin bran’ in the same sense that pie containing raisins

is ‘raisin pie,’ that bread containing raisins is ‘raisin

bread,’ and that mufiins containing raisins are ‘raisin

muffins’ ”’ (T. Vol. VI, p. 7). Pie is crust with a filler, |

bakery products often contain fruit as a component part;

the terms ‘‘raisin pie,’’ ‘‘raisin bread’? and ‘‘raisin muf-

fins’? were in common use for many years, the words

‘‘nie,’? ‘bread,’ and ‘‘muffins’’ indicating the genus, the

word ‘‘raisin’’? being well understood to indicate the

species of the genus.

As pointed out above, the evidence shows that prior

to the introduction of Petitioner’s product on the market,

there was no product commonly known as ‘‘Raisin Bran,”’

and the Trial Court so found (IF. 8, T. 107). The term

‘Raisin Bran,’’ standing alone, cannot accurately be said

to designate a genus or the species of a genus. It is

merely a compound of two words, each by itself generic,

but in combination, the term was not, at the time of its

adoption by the Petitioner as a trade-mark for its prod-

uct, the primary generic name for the product to which

it was applied; and immediately prior to its adoption and

use by the Petitioner, if any member of the consuming

public had been asked ‘‘What is Raisin Bran?’’, he would

have been compelled to answer that he did not know, or,

if he attempted to answer, his answer would have been a

mere guess and it cannot be assumed that he would have

understood instantly that it designated a breakfast food

product identical or similar to the product which the Peti-

tioner was then about to put upon the market.

3. This case is governed by the rules laid down in

the ‘‘Coca Cola Case’’ and not by the decision in the

‘‘Shredded Wheat Case.’’

The Trial Court’s Opinion (52 F. S. 482-452) which

the Appellate Court follows with approval (T. Vol. VI,

pp. 4-11), and the Trial Court’s Findings of Fact (T. 100-

123), show that said Findings of Fact are predicated

chiefly upon the Trial Court’s Conclusions of Law that

the principles announced in the case of Kellogg Co. v. Na-

tional Biscuit Co., 305 U.S. 111, commonly known as the

‘‘Shredded Wheat Case’’ govern a determination of this

ease, and that the principles announced in the case of

Coca Cola Co. v. Koke Co., 254 U. 8. 143 (which we shall

hereinafter refer to as the ‘‘Coca Cola Case’’) are not

applicable to the case at bar (52 F. S. 482, 449).

In the opinion in the ‘‘Shredded Wheat Case,’’ the

facts which governed the decision were not clearly set

out, but reference is made to the ease of Natural Food Co.

v. Williams, 30 App. D. 348. An examination of the

Natural Food Company case, and of an article by Deren-

berg found in 16 N. Y. U. L. Q. R.,, at page 366, shows the

facts in the ‘*Shredded Wheat Case’’ to be as follows:

The predecessor in interest of National Biseuit Com-

pany commenced manufacturing the product «Shredded

Wheat”? in 1893. In 1895 a patent was taken out on the

process of manufacturing the product. This patent ex-

pired in 1912. From 1892 to 1905, no claim was made that

‘‘Shredded Wheat’? was the trade-mark of the product,

and until 1914, the distributor used a picture of the God-

dess Ceres, with a torch in one hand and a sheaf of wheat

in the other, for its trade-mark. In 1905, the Natural Food

Company filed application to register the term ‘¢Shredded

Wheat’’ under the ten-year clause of the 1905 Trade-Mark

Act, but this registration was denied on appeal by the

Cireuit Court of Appeals of the District of Columbia on

the grounds that (1) the claimant had not used the term

‘“‘Shredded Wheat’? as a trade-mark, (2) the opposer,

Williams, had been marketing a competing product under

the name ‘‘Shredded Wheat,’’ and (8) other inventors of

machinery for manufacturing a similar product had stated

PPP LEAE AH UE ON

in their patents that the purpose of their machinery was to

shred wheat. In 1914 the National Biscuit Company placed

upon the package of its product as its trade-mark a pic-

ture of Niagara Falls, and the words ‘‘Shredded Wheat,”’

standing alone, were not used as a trade-mark. In 1920

the National Biscuit Company registered the term ‘‘Shred-

ded Wheat”’ as its trade-mark under the 1920 Trade-Mark

Act; but the evidence showed that from 1912 on, the Kel-

logg Company in competition with the National Biscuit

Company had from time to time manufactured and mar-

keted a similar product.

On this record, the Supreme Court of the United

States, in 805 U. S. 111, held that: (1) since the term

‘‘Shredded Wheat’’ was applied to a patented product,

the name passed to the public with the expiration of the

patent, and (2) ‘For many years there was no attempt to

use the term ‘Shredded Wheat’ as a trade-mark, * * *.

It is contended that the plaintiff has the exclusive right

to the name ‘Shredded Wheat,’ because these words ae-

quired the secondary meaning of ‘Shredded Wheat’ made

at Niagara Falls by plaintiff’s predecessor. There is

no basis here for applying the doctrine of secondary

meaning.’”’

It is apparent from the foregoing that the National

Biscuit Company was attempting to recapture a name

which had already been dedicated to the public, was in

the public domain, and which it had taken no effective

means to establish as a trade-mark. It is with this state

of facts in mind that the Court held, ‘‘To establish a

trade-name in the term ‘Shredded Wheat,’ the plaintiff

must show more than a subordinate meaning which ap-

plies to it. It must show that the primary significance

of the term in the minds of the consuming public is not

the product but the producer.’? Kellogg Co. v. National

Biscuit Co., 305 U.S. 111, 118.

The Canadian? and Hnglish* ‘“‘Shredded Wheat’’ de-

cisions are predicated upon the same rule of law; and an

examination of the opinions in those cases shows that they

are predicated upon the same state of facts as the Ameri-

ean ‘Shredded Wheat Case’’ except that instead of the

use of the Goddess Ceres as a trade-mark in Canada and

England, the Canadian Shredded Wheat Company used

first a picture of a bowl with the product and a spoon in

the bowl for its trade-mark, and later a picture of Niagara

Falls; and on the packages the companies emphasized that

the purchaser should purchaser the ‘Original Shredded

Wheat’? manufactured by the particular companies in-

volved.

The Appellate Court in its Opinion, and the Trial

Court in its decision, treated the terms ‘“Shredded Wheat”’

and ‘Corn Flakes’? as though they were identical in char-

acter and structure to Petitioner’s trade-mark ‘‘ Raisin-

BRAN.” The dissimilarity between these terms has been

discussed on pages 32 and 33, supra.

In the case at bar, the Trial Court held that the term

‘‘Raisin-BRAN’’ could not acquire a secondary meaning

because it contained two words descriptive of contents of

the product, and that the Petitioner had failed in its proot

of a secondary meaning because it had failed to show

‘‘that the primary significance of the term in the minds

2 Canadian Shredded Wheat Co., Ltd., v. Kellogg Co. of Canada, Ltd.,

55 R. P. C. 125.

3 In the Matter of Shredded Wheat Company's Trade-Mark “Shredded

Wheat,” 55 R. P. C. 271, 278, aftirmed by the House of Lords, 57

R. P. GC. 187, 147.

of the consuming public is not the product but the pro-

ducer.’”’ These findings were chiefly predicated upon the

ease of Kellogg Co. v. National Biscuit Co., 305 U.S. 111.

The term ‘Coca Cola’’ in its origin and at the time

of its adoption, had characteristics identical to those of

‘‘Raisin-BRAN,”’ in that the term when first adopted was

composed of two generic words descriptive of two of the

constitutents of the product to which the term was applied,

but the combined words did not, at the time of the adop-

tion of the term, consitute a generic name, nor where they,

in combination, the designation of a species of a genus;

and standing alone, prior to their application to the

claimant’s now well-known drink, they might have been

applied to a bakery product or anything, and a member ot

the consuming public, if he had been asked ‘* What is

Coca-Cola??? would have been compelled to answer that

he did not know. The term ‘*Coca-Cola’’ was applied to a

product which was not patented and was used by the

claimant as the trade-mark for its product, no other trade-

mark being use. In spite of these and other similarities

between the ‘*Raisin-BRAN”’’ case and the ‘*Coca-Cola”’

ease, the Trial Court held that the rules announced in the

Coea-Cola Case did not apply to the case at bar (02 F. 5.

449). It is submitted that this was error,

The evidence in this case shows that for seventeen

years the Petitioner had the exclusive use of its trade-

mark ‘‘Raisin-BRAN’’ for a breakfast food product (T.

162-163), the product was not protected by a patent (Z.

182), and the Petitioner had made the term valuable by its

large advertising expenditures and its business acumen

(T. 164; F. 16, T. 111, 112); and the product being un-

patented, there was nothing during the seventeen years

when Petitioner had the exclusive use of the mark to

prevent the Respondent or any other competitor from

coming into the market prior to the time that the Peti-

tioner had established the term ‘‘Raisin-BRAN”’ as a

valuable trade-mark.

In the Coca Cola case, Justice Holmes held that a

secondary meaning had been established and stated the

rule as follows: ‘‘The name now characterizes a beverage

to be had at almost any soda fountain. It means a single

thing coming from a single source and well known to the

community. It hardly would be too much to say that the

drink characterizes the name as much as the name the

drink. In other words, Coca Cola probably means to most

persons the plaintiff’s familiar product, to be had every-

where, rather than a compound of particular substances.

We see no reason to doubt that as we have said it has

acquired a. secondary meaning in which perhaps the

product is more emphasized than the producer, but to

which the producer is entitled.’’ Coca Cola Co. v. Koke

Co., 254 U.S. 148, 146.

The Petitioner submits that is is the foregoing rule

which should govern the decision in this case and upon

which the Findings of Fact should be predicated; but the

Trial Court held that the case was inapplicable because

‘Coca Cola’? was registered under both the Trade-Mark

Act of 1881 and under the ten-year clause of the 1905

Trade-Mark Act; whereas, the term ‘‘Raisin-BRAN’’ was

only registered under the 1920 Trade-Mark Act; and the

Trial Court cited Thaddeus Davids Co. v. Davids Mfg.

Co., 233 U. 8. 461, as authority for its conclusion (52 F. 8.

449).

The fact that ‘‘Coca Cola’’ was registered under the

Trade-Mark Act of 1881 is of no significance. Subsequent

to its registration under that Act, the term was registered

under the ten-year proviso of the 1905 Act. This latest

registration was undoubtedly the result of the decision of

the Supreme Court in the case of Elgin National Watch

Co. v. Illinois National Watch Co., 179 U. 8. 665, in which

the Court held that the Trade-Mark Act of March 3, 1881,

did not permit the registration of marks which contained

descriptive, generic or geographical words, and that such

a registration was not of sufficient force or effect to give

the Federal Courts jurisdiction with respect to the regis-

tration of marks which were descriptive. The Thaddeus

Davids case was decided in 1913, which was prior to the

passage of the 1920 Trade-Mark Act, and in the case of

Nashville Syrup Co. v. Coca Cola Co., 6th C. C. A., 215 F.

527, 529, it was stated: ‘‘We do not regard the decision in

the Davids case as holding that the statute directly oper-

ates to grant a monopoly to one who rightfully registers

under the ten-year clause (of the 1905 Act) a descriptive

word.”’

: ‘‘Raisin-BRAN’’ could not be registered under the

ten-year clause of the 1905 Act (A. 18) because it was not

in use for ten years prior to 1905, and for that reason it

was registered under the 1920 Act. The only difference

between the character of the terms ‘‘Coca Cola’’ and

‘‘Raisin-BRAN’”’ lay in the fact that ‘‘Coca Cola’’ was in

use for ten years or more prior to 1905, whereas the term

‘‘Raisin-BRAN’’ was not. The only difference in the

rights of a trade-mark registered under the ten-year

clause of the 1905 Trade-Mark Act and the rights of a

' similar mark registered under the 1920 Trade-Mark Act

lies in the fact that the registration under Section 16 of

the 1905 Act is stated to be prima facie evidence of a

secondary meaning (A. 19) whereas, registration under

the 1920 Trade-Mark Act carries no such presumption.

(Section 16 of the 1905 Act is not applicable to the 1920

Act, see See. A. 21). When the secondary meaning of a

term registered under the ten-year clause of the 1905

Trade-Mark Act is challenged, the claimant is required to

prove a secondary meaning. There is nothing to indicate

that the rules of proof in such a case are different from

those required to establish a secondary meaning in a trade-

mark registered under the 1920 Trade-Mark Act.

The Seventh Cireuit Court of Appeals and the Su-

preme Court of the United States applied the principles

laid down in the ‘‘Coca Cola Case”’ with respect to the

ability of a term to acquire a secondary meaning, to terms

which were registered under the 1920 Trade-Mark Act,

and drew no such distinction as the Trial Court attempted

in this case. Armstrong Paint & Varnish Works v. Nu-

Enamel Corp., 95 F. 2d 448, 305 U.S. 315. In the Eighth

Cireuit Court of Appeals, the ‘*Coca Cola Case’’ has been

cited with approval in a case which involved the acquisi-

tion of a secondary meaning by a mark registered under

the 1920 Act. F. W. Fitch Co. v. Camille, Inc., 106 F. 2d

635; and even in a case in which a trade-name sought to

be protected was not registered under any trade-mark act,

the Eighth Circuit Court of Appeals has cited with ap-

proval the case of Coca Cola Co. v. Koke Co., 254 U. 8.

143, with respect to the establishment of a secondary

meaning, without noting any distinction because of the

registration of ‘Coca Cola’? under the ten-year clause of

the 1905 Act. Beneficial Industrial Loan Corp. v. Kline,

132 F. 2d 520.

In the Cireuit Court of Appeals, it was argued by

the Respondent that the foregoing quotation from the

_ PLONE PRA BS TAN sO —

ease of Coca Cola Co. v. Koke Co., supra, was mere dicta,

and that the question of secondary meaning was not un-

der consideration when that case was argued and deter-

mined. This objection is not well taken. From the notes

on the ‘‘Coca Cola Case’’ found in 65 L. Ed. at pages

190 and 191, it appears that the claimant in the case as-

serted that ‘‘The name ‘Coca Cola’ is a valid trade-

mark, acquired by priority of adoption * * * which by as-

sociation and extensive use in fact identifies the product

of petitioner exclusively’’; and the Respondent made the

contention that, ‘‘The words ‘Coea Cola’ are not a valid

trade-mark * * * as to the character of proof required to

establish a secondary meaning of descriptive words,

* & # 99

In the Cireuit Court of Appeals, the Respondent also

argued that the case of Coca Cola Co. v. Koke Co., supra,

was overruled by the decision in the ease of Kellogg Co.

v. National Biscwit Co., supra. There is nothing in the

opinion of the Court in the latter ease to indicate that it

was its intention to modify or overrule its opinion in the

ease of Coca Cola Co. v. Koke Co., supra; and since the

decision in the ‘‘Shredded Wheat Case,’’ the ‘‘Coca Cola

Case’’ has been quoted and cited with approval by the

Eighth Cireuit Court of Appeals in F. W. Fitch Co. v.

Camille, Inc., 106 F. 2d 635; Beneficial Industrial Loan

Corp. v. Kline, 132 F. 2d 520; and Cleo Syrup Corp. v.

Coca Cola Co., 139 F. 2d 416; and the ‘‘Coca Cola Case’’

has also been cited with approval by the Fourth Circuit

Court of Appeals in Dixie Cola Lab. v. Coca Cola Co., 4th

C. C. A., 117 F. 2d 352, 254.

4. The term ‘‘Raisin Bran’’ was capable of acquir-

ing a secondary meaning.

In the case at bar, the Petitioner is not claiming the

term ‘‘Raisin Bran’’ as a technical trade-mark, but predi-

cates its rights upon the establishment of a secondary

meaning (T. 4).

The evidence showed that the term ‘¢Raisin-BRAN,”’

standing alone, was not in common use, had no precise

meaning to the consuming public and had not been used

by others to designate breakfast food products prior to

the time that Petitioner adopted and claimed it as a trade-

mark for its product (see pages 31 and 32, supra).

The evidence also showed (T. 496, 497), and both the

Trial Court and the Court of Appeals found that other

appropriate names were available by which competitors

might aptly designate their competing products (52 F. S.

452).

The right to appropriate the term ‘‘Raisin Bran’’ for

a trade name must be determined as of the time of its

first appropriation. Wellcome v. Thompson & Capper, 1

L. R. Chan. Div. (1904) 736, 742, 749, 750, 754; Keasby

v. Chemical Works, 142 N. Y. 467, 471, 474, 475, 476, 37

N. E. 476.

The findings of the Trial and of the Appellate Court

that the term ‘‘Raisin Bran’’ was incapable of acquiring a

secondary meaning (F. 25, T. 119, T. VI, pp. 8-9, 52 F.

S. pp. 445-448) were predicated upon the following cases:

Canal Co. v. Clark, 13 Wall. 311; Standard Paint Co. v.

Trinidad Asphalt Co., 220 U. S. 446; Howe Scale Co. v.

a “ _

Wyckoff, Seamans & Benedict, 198 U. 8. 118; William R.

Warner & Co. v. Eli Lilly & Co., 265 U. S. 526; Elgin Na-

tional Watch Co. v. Illinois Watch Co., 179 U. S.

665; Kellogg Co. v. National Biscuit Co., 305 U. 8. 111,

and Armstrong Paint & Varnish Works v. Nu-Enamel

Corp., 305 U. S. 315 (T. VI, pp. 8, 9, 10; 52 F. S. 432).

The Trial Court also cited, at this point, Sec. 721, Vol. 3,

Restatement of the Law of Torts.

These cases are not in point with the case at bar on

the question now under discussion. In the case of Canal

Co. v. Clark, supra, the Court held that a geographical

term could not be appropriated as a trade-mark. The

Supreme Court in that case was referring to a technical

trade-mark; the case was decided in 1871, which was a

year before the doctrine of secondary meaning was first

applied by the British House of Lords to a geographical

name,‘ and fifteen years before the Courts of Equity rec-

ognized that a term composed of descriptive or generic

words might acquire a secondary meaning.°

Section 721, Vol. 3, Restatement of the Law of Torts,

says that ‘‘a designation cannot be a trade-mark for goods

if it is likely to be regarded by prospective purchasers as

a common name or generic name for such goods, or as

deseriptive of them or of their ingredients, quality, prop-

erties, functions or uses.’’ In this text the word ‘‘trade-

mark’’ is used to indicate a technical trade-mark as op-

posed to terms which contain descriptive or generic

4 Wotherspoon v. Currie, 5 L. R. Eng. & Irl. App. 508 (1872); Deren-

berg, Trade-Mark Protection, p. 553.

5 Reddaway v. Banham, 13 R. P. C. 218 (1896).

words.* In Sec. 716, Restatement of the Law of Torts it

is specifically stated that a trade term such as ‘‘Raisin-

BRAN’? may acquire a secondary meaning, as to nu-

merous cases which are in point with the case at bar.’

In the case of Standard Paint Co. v. Trinidad As-

phalt Mfg. Co., supra, no secondary meaning was shown,

and the question was whether ‘‘Rubberoid’’ could be

considered a technical trade-mark. The case of Howe

Scale Co. v. Wyckoff, Seamans & Benedict, supra, was de-

cided in 1904 and related to the use of a family surname.

In the case of W. R. Warner & Co. v. Eli Lilly & Co.,

supra, the Respondents were not using the exact term

claimed by the Petitioner; in the ease at bar Petitioner

seeks to enjoin the use of the exact term, not the use of

‘‘Raisin’”’ or the use of ‘‘Bran’’ in some other colloca-

tion (T. 4).

In the case of Elgin National Watch Co. v. Illinois

Watch Co., supra, decided in 1900, the Supreme Court

6 Substantial confusion often arises in analyzing trade-mark and trade

name cases by reason of the fact that some of the Courts have not

used distinctive designations for technical trade-marks and marks

which have acquired a secondary meaning through long and ex-

clusive use. This confusion is emphasized by the use of the word

“trade-mark” in the Federal Trade-Mark Act to designate both

technical trade-marks and marks which are registered under the

ten-year clause of the 1905 Act. The compilers of Restatement of

the Law of Torts have distinguished between the technical trade-

mark and the mark which has acquired a secondary meaning by

designating the first class as trade-marks and the other class as

trade names. “When a trade name denominates goods and is

affixed to them, there is as a practical matter, little legal difference

between it and a trade-mark. Such a trade name is frequently

called a trade-mark * * *.” Vol. 3, Restatement, Law of Torts, p.

560.

7 Coca Cola Co. v. Koke Co., 254 U. S. 143, 41 S. Ct. 113, 65 L. Ed.

189; Nashville Syrup Co. v. Coca Cola Co., 215 F. 627; Rawlinson v.

Brainard & Armstrong Co., 28 Misc. Rep. 287, 59 N. Y. S. 880;

R. B. Davis Co. v. Sher, 125 N. J. Eq. 316, 5 A. 2d 49; R. Guastavino

Co. v. Comerma, 180 F. 920, 184 F. 549; Feil v. American Serum

Co., 8th C. C. A. 16 F. 2d 88; Shaler Co. v. Rite-Way Products, Inc.

107 F. 2d 82; Industrial Rayon Corp. v. Dutchess Underwear Corp.,

92 F. 2d 33: Barton v. Rex Oil Co. 29 F. 2d 474; Fitch Co. v.

Camille, Inc., 8th C. C. A., 106 F. 2d 635.

held that only technical trade-marks could lawfully be

registered under the Trade-Mark Act of 1881 and _ that

registration of a geographical term under that Act did

not give the United States Courts jurisdiction over cases

involving the alleged infringement of the registered term.

Later the term ‘‘Elgin’’ was found to have acquired a

secondary meaning which entitled its owner to protection

against infringement. Elgin National Watch Co. v. Love-

land, C. C. Ia. 1904, 132 F. 41.

The difference in governing facts between the case

of Kellogg Co. v. National Biscuit Co., supra, and its

inapplicability to the case at bar has been pointed out on

pages 34 to 38 supra of this Brief.

In the Nu-Enamel Case, supra, the Supreme Court

granted protection to a term composed of words found to

be descriptive of the product to which the term was

applied, because the respondent had admitted that the

term ‘‘Nu-Enamel’’ had acquired the secondary meaning

Claimed by the petitioner, and the Court held that the

appropriation of such a term under such circumstances

should be enjoined. The Nu-Luamel Case also shows that

the Trial Court’s holding that registration of the term

‘*Raisin-Bran’’ under the 1920 Trade-Mark Act was void

(C. 11, T. 126), is erroneous. Armstrong Paint & Varnish

Co. v. Nu-Enamel Corporation, 305 U. 8. 315, 827-3382.

Opposed to the conclusions of the Kighth Circuit

Court of Appeals in the case at bar, we find in the follow-

ing cases that terms composed of words descriptive of

elements or of qualities or uses of a product, have been

held capable of acquiring a secondary meaning. ‘* Koke,’’

Coca Cola Co. v. Koke Co., 254 U. S. 148; ‘*Coea Cola,”’

wr YY o a 4 *, aos ge —

CI TBE LISI DRE BS eM ba LOI A PIT OSA IIT ED AE SOLES 1 LING TAR Re ea

Nashville Syrup Co. v. Coca Cola Co., 6th C. C. A., 215 F.

527; ‘‘Filo Floss,’’ Rawlinson v. Brainard & Armstrong

Co., 28 Mise. Rep. 287, 59 N. Y. S. 880; ‘‘Cocomalt,”’ R. B.

Davis Co. v. Sher, 125 N. J. Eq. 306, 5 A. 2d 49; ‘‘Cohe-

sive Tile,’’ R. Guastavino Co. v. Comerma, 180 F. 920, 184

F. 549; ‘‘Wormix,’’ Feil v. American Serum Co., 8th C.

C. A., 16 F. 2d 88; ‘‘Hot-Patch,’’ Shaler v. Rite-Way

Products, Inc., 6th C. C. A. 107 F. 2d 82; ‘‘Spunlo,”’

Industrial Rayon Corp. v. Dutchess Underwear Corp., 2nd

C. CG. A., 92 F. 2d 22; ‘‘Dyanshine,’’ Barton v. Rex Oil

Co., 8rd C. C. A., 29 F. 2d 474; and ‘‘Run-R-Stop,”’ Fitch

Co. v. Camille, Inc., 8th C. C. A., 106 F. 2d 685 Thus it

appears that the decision of the HKighth Cireuit Court in

this case conflicts with previous decisions of that Court in

Cleo Syrup Corp v. Coca Cola Co., supra, and Fitch Co.

v. Camille, Inc., supra, and also with decisions of the

Second, Third and Sixth Circuit Courts of Appeals, and

State Courts of New York and New Jersey, as well as

with the Supreme Court of the United States in the Nu-

Enamel Case, supra.

In finding and concluding that the term ‘*Raisin-

BRAN” could not acquire a secondary meaning because

it was composed of two words each descriptive of impor-

tant component parts of the product to which the term

was applied, both the Trial Court and the Cireuit Court of

Appeals laid special emphasis upon the fact that ‘‘bran

flakes’? was the common name for the cereal portion of

Petitioner’s product (52 F. 8. 432, 448; T. VI-7); and in

both Courts below the Respondent argued that because

the word ‘‘bran’’ was a part of the Petitioner’s trade-

mark and had been long used by the Respondent to

describe its products of like character to the cereal por-

tion of Petitioner’s product, the term ‘‘Raisin-BRAN’’ in

aia CAO VRAIN iis we aR. nN SA. ha RA a BIEL RAP SREB EERE LLG SI 9 PRAT DEER Po gee

47 4

its entirety could not acquire a secondary meaning so as :

to be subject to protection against infringement. No :

cases, however, were cited to support such a contention ©

and the cases in which that question has been raised have 3

held otherwise. In the case of Dixie Cola Laboratories v. ‘

Coca Cola Co., 4th C. C. A., 117 F. 2d 352, it was held

that the word ‘‘cola’’? was open to all manufacturers of

soft drinks, but it was definitely stated: ‘‘No one else can

lawfully use the word ‘‘Coca Cola’’ for a trade-mark even

though it originally may have been a descriptive name.”’

To the same effect is the recent decision of the Supreme

Court of Delaware in the ease of Coca Cola Co. v. Nehi

Corp., 36 A. 2d 156. We also find that in the case of

R. B. Davis Co. v. Sher, 125 N. J. Hq. 316, 5 A. 2d 49, the

word ‘‘Cocomalt’’ was applied to a product which was a

combination of cocoa and malt and the term was held to

have acquired a secondary meaning and be entitled to

protection against infringement of the exact combination.

The same ruling prevailed in the case of ‘‘Cohesive Tile.”’

R. Guastavino Co. v. Comerma, 184 F. 549. In the case of

Carson Corp. v. Condee, Ltd., 213 N. Y. 5S. 735, 736, it was

held that the claimant had the right to protection in the

use of the term ‘‘Black Narcissus’? as applied to a per-

fume even though the term was descriptive of character-

istics or component parts of the perfume; and the Court

pointed out that, ‘‘A phrase or combination of words may

be entitled to absolute protection while the use of its

component parts may be open to everyone.”’

The fact that the Petitioner’s product came to be

known in the trade and to the consuming public by its

trade-mark was no reason for holding that the term

‘‘Raisin-BRAN” could not acquire a secondary meaning.

In the ease of Barton v. Rex Oil Co., 29 F. 2d 474, the Cir-

cuit Court of Appeals for the Third Circuit pointed out

that there is a difference between the use of the term as

a designation or name for the product and its use ina

purely descriptive sense: ‘‘ Moreover, the complainants

have satisfied us that on a definite and unequivocal finding

of fact of this kind the law affords the remedy of in-

junction against the use of words which in instances such

as this have acquired only a secondary meaning when

those words are used as the name of a product as dis-

tinguished from their use in describing it.’’ Barton v.

Rex Oil Co., supra, page 475.

In the case at bar, the Petitioner at all times claimed

the term ‘‘Raisin-BRAN”’ as its trade-mark, and from the

time that it was registered in 1926, stated on each package

of the product that ‘‘Raisin-BRAN’’ was its trade-mark

(T. 163; A9); and on each carton for many years the con-

tents of the package have been described in large red let-

ters on the face of the label as ‘‘Whole Wheat Flakes

With Raisins, Bran and Salt Added”’ (F. 21, T. 113).

Mr. Justice Holmes in his discussion of the rights of the

Coca Cola Company in the ease of Coca Cola Co. v. Koke

Co., 254 U. S. 143, 145, said: ‘‘The name now character-

izes a beverage to be had at almost any soda fountain

** * Coca Cola probably means to most persons the

plaintiff’s familiar product to be had everywhere rather

than a compound of particular substances.’’ In this man-

ner, Justice Holmes made it clear that a secondary mean-

ing was established when the trade-mark became identi-

fied in the public mind as the name of the product and

not as a mere description of its contents.

Section 727, Restatement of the Law of Torts, page

587, reads: ‘‘One uses a designation in the manner of a

se OR ee

ty SA See

Boos

trade-mark or trade name, under the rule stated in Section

717 if he so uses it that prospective purchasers are likely

to regard it as the name of or the means of identifying,

his goods, services, or business.’’ The matter is well

summed up in the following: ‘Trade names for popular

products, as used by one manufacturer, may become so

widely known as sometimes to be used as a synonym for

the generic name itself. Striking examples of this are

such names as ‘Kodak’ and ‘Vasoline.’ Both of these are

defined in the dictionary, and yet they are trade-marks,

the use of which by any one outside the firms which have

originated them would constitute an infringement. The

fact that a large part of the public may associate a trade

name with the generic name for a product is a tribute to

the skill with which the firm has popularized the name.

To put a penalty upon such skill and to say that the gen-

eralization of the trade name by the public as a result of

the originator’s publicity must deprive him of his monop-

oly in the name would, in the absence of special circum-

stances, be the height of injustice.’ H. A. Metz Labora-

tories v. Blackman, 275 N. Y. 8. 407, 414.

The Respondent argued in the Lower Court that the

Petitioner had used the term ‘‘Raisin-BRAN”’ in a pure-

ly descriptive sense and not as a trade-mark, and to

support its contention, the Respondent cited extracts

from the cases of Kellogg Co. v. National Biscuit Co., 300

U. S. 111, and DuPont Cellophane Co. v. Waxed Products

Co., 85 F. 2d 75. In this Brief, it has already been

pointed out (p. 34, supra) that when the National Bis-

cuit Company and its predecessors first used the term

‘‘Shredded Wheat’? they did not use it as a trade-mark,

but had other trade-marks and used the term ‘‘Shredded

Wheat’? as descriptive of their product; and the Court

A EERE ERE SELIG A BI, aes gn Cae

ae -

held that after such use the term had become publici juris

and could not be recaptured unless it could be shown that

subsequently the name signified the producer rather than

the product. In the case of DuPont Cellophane Company

v. Wazed Products Co., 85 F. 2d 75, the same thing oc-

curred. The predecessors of DuPont Company and Du-

Pont Company itself first used the name ‘‘Cellophane”’ as

descriptive of the product and not as its trade-mark. The

extracts from the opinions of the Courts in the ‘‘ Shredded

Wheat”? and ‘‘Cellophane’’ cases must be read with the

above facts in mind and with the realization that in the

ease at bar the term ‘‘Raisin-BRAN’’ was at all times

claimed by the Petitioner as a trade-mark. In fact, the

Cireuit Court of Appeals in its opinion said: “The Ap-

pellant has done all that could be done to appropriate

‘Raisin-Bran’ as the trade-mark of its product. In

1926, it registered the name as a trade-mark under the

Trade-Mark Act of March 19, 1920. In its advertising

and on the packages in which the product was sold, Ap-

pellant claimed the name as its trade-mark for the

product’? (T. VI-5). Because of these acts of the Peti-

tioner and the fact that the term ‘‘Raisin-BRAN,”’ stand-

ing alone, had not been a well-known term in the language

prior to its adoption by the Petitioner, and because it was

not applied to a patented product, the term ‘‘Raisin-

BRAN” was capable of acquiring a secondary meaning ;

even though it was descriptive of the two principal in-

gredients of the product.

“There can be no doubt that the plaintiff’s corporate

name is descriptive of the kind of places in which its

business is conducted. Whether or not the name has

acquired a secondary meaning, within the sense described,

is a question of fact. We think that in this case the

existence of the fact has been established.’? Little Tavern

Shops v. Davis, 4th C. C. A., 116 F. 2d 906.

The chief difficulty confronting a Court when passing

upon the merits of claims made in a trade-mark or trade

name ease is what appears on the surface to be an appar-

ent conflict of authorities. Extracts can be found from

various cases to support almost any proposition urged pro

or con; but the fact remains that if one examines the

facts in the various cases and examines the reasons for

the application of the various rules, it will be discovered

that no extract from any one case ean be cited as au-

thority in another case unless it is clear that the facts

upon which the quotation is predicated are substantially

identical.

In Note 22 of the Appendix it is pointed out wherein

the cases cited by the Trial Court or advanced by Re-

spondent in support of the conclusion and finding that

‘‘Raisin-BRAN’’ could not acquire a secondary meaning

(and did not acquire a secondary meaning), are distin-

guishable from the case at bar.

Statements taken from opinions in eases where the

controlling facts are different from the controlling facts

in the case at bar are not authority for overruling and

ignoring the cases cited by the Petitioner in support of

Petitioner’s claim that the term ‘‘Raisin-BRAN,”’ as

used by the Appellant in connection with its dry prepared

breakfast food cereal, was capable of acquiring a_ sec-

ondary meaning.*

In citing Standard Paint Co, v. Trinidad Asphalt

Mig. Co., infra, as authority for its conclusion that the

8 See Note 24, Armstrong Paint & Varnish Works v. Nu-Enamel Corp.,

305 U. S. 315, 335, 83 L. Ed. 195, 205.

term ‘‘Raisin-BRAN’’ could not acquire a secondary

meaning, the Court of Appeals said: ‘*A contention that a

descriptive name had acquired a secondary meaning under

a comparable state of facts was rejected by this Court and

by the Supreme Court in Trinidad Asphalt Mfg. Co. v.

Standard Paint Co., 8th Cir., 163 F. 977, affirmed in 220

U. 8. 466” (T. VI-9). This statement of the Court of

Appeals (1) that the question of acquisition of a sec-

ondary meaning was involved in the Trinidad Asphalt

Company Case, and (2) that the facts in the Trinidad

Asphalt Company Case are comparable with the facts in

this case, is erroneous, vide: (1) An examination of the

opinions of the Cireuit Court and of the Supreme Court in

the Trinidad Asphalt Company Case shows that the ques-

tion was whether or not the term ‘‘Ruberoid’’ was en-

titled to protection as a technical trade-mark because it

was registered under the Trade-Mark Act of 1881,—and

the question of secondary meaning was not properly in-

volved in the case; (2) In the Trinidad Asphalt Company

Case, the Circuit Court of Appeals found that merely

leaving out a ‘‘b’’ from the word ‘‘rubberoid’’ did not

change the word in such manner as to entitle the claimant

to the exclusive use of the misspelled word. The Court

further pointed out that when the claimant first adopted

the term ‘‘Ruberoid’’ as a trade-mark for its rubberlike

roofing, ‘‘there were about forty other concerns engaged

in that business, many of whose products resembled those

of complainant and defendant, and because they possessed

some of the characteristics of India rubber, were called

and known as ‘rubber roofings,’ though in none of them

was rubber an ingredient * * * the word ‘rubberoid’ siti

was a part of our common vocabulary long before the

complainant began operations. The suffix ‘oid’ signifies

likeness or resemblance of the thing indicated by the word

to which it is attached * * *.”

In the ease at bar, prior to its adoption, the term

‘‘Raisin-BRAN”’ had not been used as a designation for

any product and was not in itself a term common to the

language at the time of its adoption by the Petitioner.

There were no competitors with similar products and the

term ‘Raisin-BRAN’’ was not the generic name of the

product to which it was applied at the time of its adoption

by the Petitioner, the combination of the words, standing

alone, was new.

In citing the case of Standard Paint Co. v. Trinidad

Asphalt Mfg. Co., supra, the Court of Appeals over-

looked Note 24 in the opinion of the Supreme Court in

the case of Armstrong Paint & Varnish Works v. Nw

Enamel Corp., 305 U. 8. 315, 335.

5. A trade-mark or trade name may acquire a sec-

ondary meaning during the time it is applied to a

product which has no competition.

The Trial Court concluded that the term ‘‘Raisin-

BRAN” could not acquire a secondary meaning during

the time that Petitioner’s product was marketed in a non-

competitive field and predicated this conclusion upon a

quotation from Kellogg Toasted Corn Flake Co, v.

Quaker Oats Co., 6th C. C. A, 235 F. 657, 666 (52 F. S.

432, 448-449).

An examination of the quotation from the Kellogg

Toasted Corn Flake Company Case, supra, shows that

the quotation appearing in the opinion of the Trial Court

in this case was predicated upon a quotation from one of

the opinions delivered in the House of Lords in the case

of Cellular Clothing Co., Ltd., v. Maxton & Murray, 16

R. P. C. 397, 80 Law Times 809. An examination of the

PTS MOT RREE GEER ST FEO

et A EE atl ESD he RS OLS ES

O+

reports of the case in the House of Lords shows that the

facts upon which the decision is predicated were not

stated. This was an appeal from the Scottish High Court

of Justice. An examination of the opinion in the Scottish

Court shows that the term ‘‘cellular cloth’’ had not been

used as the trade-mark for the claimant’s product and

that there had been competition in the market during the

period when it was claimed that a secondary meaning

arose:

‘‘The inventor or first maker of the fabric was

their managing director, Mr. Haslam, who began the

manufacture in 1886 and who first put it upon the

market as ‘Kershaw’s Cellular Cloth.’ But the pur-

suer’s company was formed in 1888, and I think it

may be taken that the fabric began thereafter to be

known in the market under the name of ‘Cellular

Cloth.’ There is no question of patent. Mr. Haslam

states that he applied for and obtained a patent, but

if so, it is not now in force. Neither is there any

question of trade-mark. The pursuers have a regis-

tered trade-mark which they partially use, of which

the word ‘Aertex’ is the essential part. The word

‘Cellular’ has not been registered by itself or as a

part of the trade-mark, nor was it I think suggested

that it could be so. * * * The defender, Mr. Maxton,

states—and I see no reason to disbelieve him— * * *

that * * * he had for some years been acquainted with

‘cellular cloth’ as a description of clothing in the mar-

ket which had been repeatedly offered under that

name by a Scottish manufacturer.’’ (The plaintiff,

Cellular Clothing Company, was a British manufac-

turer.)

Cellular Clothing Co. v. Maxton & Murray, 35

Se. L. R. 869, 870.

It thus appears that the quotation from the opinion

of one of the Justices in the House of Lords upon which

the lower Court predicated its conclusion that a trade

term could not acquire a secondary meaning when it was

applied to a product during the time it had no competi-

tion in the market, was mere dicta. The Sixth Circuit

Court of Appeals recognized that the quotation from the

Kellogg Toasted Corn Flake Case, supra, which was re-

lied upon by the Trial Court in this ease, was erroneous

and corrected the matter in Note 3 to its decision in the

ease of Saalficld Publishing Company v. C. & G. Merriam

Co., 238 F. 1, 9, where the Court said:

‘Where an article is put out under a trade name

which, although it must be called descriptive, is yet

also something more than merely descriptive, and

where the public is free to compete in the same ar-

ticle, and in the same name but for a long period re-

frains from both, this seems to the writer the ideal

soil in which the secondary meaning may grow into

effective existence. The name points to one maker

only, without confusion or uncertainty, and is a sure

‘badge of origin.’ ”’

In cases involving the following descriptive trade

names, the Courts have held that a secondary meaning

was established during the time that the owner of the

trade name had no competition for his product: ‘‘Dyan-

shine,’’ Barton v. Rex Oil Co., 2 F. 2d 404, 406, aff. 3rd

C. C. A., 29 F. 2d 474; ‘*Coea-Cola,’’ Nashville Syrup Co.

v. Coca Cola Co., 6th C. C. A., 215 F. 527; Coca Cola Co. v.

Old Dominion Beverage Works, 4th C. C. A., 271 F. 600;

‘*Bromo-Caffeine,’’ Keasby v. Brooklyn Chemical Works,

142 N. Y. 467, 37 N. E. 476.

6. The Trial Court erred in its conclusions as to the

quantum of proof necessary to establish a secondary

meaning.

In the opinion of the Trial Court appears the follow-

ing:

“The plaintiff in support of its resort to the sec-

ondary m:aning doctrine relies upon several elements

which have been judicially rejected in well reasoned

eases. Among these, without grouping them exactly

as the plaintiff does, are: (a) An exclusive and long

continued use of its designation during a period when

no competitor was in the field, vide: Kellogg Toasted

Corn Flake Co. v. Quaker Oats Co., 6 Cir., 235 F.

657, 665, 666; Kellogg Co. v. Netional Biseuit Co., 305

U. §. 111, 118, 119, 59 S. Ct. 109, 83 L. Ed. 73, 78;

(b) a wide distribution of its product, vide: Kellogg

Toasted Corn Flake Co. v. Quaker Oats Co., supra,

and Kellogg Co. v. National Biscuit Co., supra; (¢) a

wide advertising campaign and large expenditures

for advertising the product under the designation,

vide: Kellogg Co. v. National Biscuit Co., supra; Du-

Pent Cellophane Co. v. Waxed Products Co., supra;

and (d) identification of the product by its designa-

tion on the part of a substantial portion of the pur-

chasing public; understanding by a substantial por-

tion of the purchasing public and most of the retail

and wholesale trade that the name signifies a single

thing coming from a single source and covers a prod-

uct made and distributed exclusively by the person

who claims the brand, a recognition in the product

of superior quality or excellence by a substantial por-

tion of the purchasing public, vide: Restatement,

Torts, supra; Kellogg Co. v. National Biscuit Co.,

supra; DuPont Cellophane Co. v. Waxed Products

Co., supra; Chivers & Sons v. Chivers & Co., Ltd.,

17 R. P. C. 420; Cellular Clothing Co. v. Maxton &

Murray, L. R. A. 326; 16 R. P. GC. 397, 68 L. J., P. C.

72, 80 L T. Rep. 809.”

Skinner Mfg Co. v. General Foods Sales Co., 52

F. S. 432, 448.

That portion of the above quotation from the Trial

Court’s Opinion which is indicated as subsection (d) is

directly contrary to the opinion of the Supreme Court of

the United States in the case of Coca Cola Co. v. Koke

Co., 254 U. 8S. 143, 146, and shows clearly that the Trial

Court predicated its finding that no secondary meaning

had been established, upon its conclusion of law that the

ease of Coca Cola Co. v. Kloke Co., supra, did not apply

to the case at bar. The distinctions between the cases

cited by the Court in the foregoing extract from its Opin-

ion, and the case at bar, are pointed out in other portions

of this Brief as follows: Restatement of the Law of Torts

(pp. 43 and 47, supra); Kellogg Company v. National

Biscuit Company (pp. 34 and 49, supra, and Notes

12, 15, 19 of Appendix 22); DuPont Cellophane Co. v.

Waxed Products Co. (p. 49 and Notes 15 and 16 of Ap-

pendix 22); Chivers & Sons v. Chivers & Co., Ltd., (Note

16 of Appendix 12); Cellular Clothing Co. v. Maxton &

Murray (Notes 15, 16 and 17 of Appendix 22, and p. 54,

supra); Kellogg Toasted Corn Flake Co. v. Quaker Oats

Co. (Notes 12, 15, 17, of Appendix 22, and pp. 56-57, supra.

These conclusions of the Trial Court set out in the

above quotation from its opinion are contrary to many

adjudicated cases wherein it has been held that proof of

such a character is sufficient to establish secondary mean-

ing in terms which are capable of acquiring such mean-

ing. The following cases hold that the existence of a see-

ondary meaning may be proved by showing that the claim-

ant has had the exclusive use of its trade name as applied

to its product for a substantial period of time, and that

during such time a large and extensive volume of busi-

ness in the product has been developed; New England

Awl & Needle Co. v. Marlboro Awl and Needle Co., 168

Mass 154, 46 N. E. 387; Birmingham Vinegar Brewing

Co. v. Powell, A. C., House of Lords 1897, p. 710, 66 L.

J. (Ch.) N. S. 763; Barton v. Rex Oil Co., 2 F. 2d 402.

saga wena SC Fe OIE CIN ELSA iLO TE BES RED SE AY

St de tele kh eee ‘

ODA ALIAS LA ATES A.

Other authorities have considered such facts together

with large advertising expenditures to be sufficient proof;

Derenberg, Trade-Mark Protection, p. 399; Holt v. Metro-

politan Refining Co., 9 F. 8S. 662; Grocers Baking Co. v.

Sigler, 132 F. 2d 498; Keasby v. Brooklyn Chemical

Works, 142 N. Y. 467, 37 N. BE. 476; Coca-Cola Co. v. Old

Dominion Beverage Corporation, 271 F. 601, 602; R. B.

Davis Co. v. Sher, 125 N. J. BE. 316, 5 A. 2d 49, 50; and

some Courts have considered that in addition to the fore-

going, the fact that a claimant has made the product to

which it applied the term popular with the public, is of

particular significance in considering the question of sec-

ondary meaning. Acasby v. Brooklyn Chemical Works,

142 N. Y. 467, 37 N. E. 476; F. W. Fitch Co. v. Camille,

Inc., 106 F. 2d 635, 638.

Except in the case of Grocers Baking Co. v. Sigler,

supra, all of the cases just cited in favor of the Petition-

er’s Claim indicate that the secondary meaning was pred-

icated upon the evidence of the activities of the claimant

and the success of its business and not upon any testi-

mony of the wholesalers, retailers and consumers; and in

the case of Grocers Baking Co. v. Sigler, supra, the lat-

ter kind of testimony was very scant.

7. The Trial Court erred when it concluded that

credible testimony of sales representatives of the Peti-

tioner, with wide experience dealing with the trade, to

the effect that in the mind of the consuming public the

term ‘‘Raisin,BRAN’’ meant the Petitioner’s particular

product, and similar testimony of wholesale and retail

grocers with wide experience in the trade, was incompe-

tent as proof of a secondary meaning.

During the progress of the trial, 4 of Petitioner’s

sales representatives with wide experience in the trade

————eE CCS

(T. 261, 266, 336, 337), and 31 wholesale grocers with

equally broad experience (A. 5c), testified that prior

to the advent of the Post and Kellogg products, the term

‘‘Raisin-BRAN’’ meant the petitioner’s product, both in

the wholesale and retail trade. The Trial Court admit-

ted this evidence over the objection of the defendant that

it was incompetent, but in its opinion said: ‘‘In passing

it may be remarked that the Court has not regarded as ;

persuasive certain alleged expert testimony offered by the ‘

plaintiff from among (a) its own salesmen and repre- ,

sentatives, and (b) miscellaneous merchants, wholesale 3

and retail, largely customers of the plaintiff. Upon ma-

ture examination it is regarded as incompetent’? (52 F.

S. 448).

RAST CAS BROT On Meee

EET ES Vie

Under the Law Merchant the Courts frequently rely

upon testimony of this character, holding that testimony

of those shown to be familiar with a particular trade and

its terms is admissible to prove the understanding in the

trade with respect to the meaning of such terms. In the

ease of Reddaway v. Banham, L. R. 1896, A. C. 199, 205

the Court said: ‘‘To me, or to other persons not familiar

with the trade, this (the term ‘Camel’s Hair’ as applied ee

to belting) undoubtedly does seem simply a description

of the article sold and not a representation of it being

made by a manufacturer. But then, I should not know,

what persons engaged in the trade would know, how far

particular words, even though descriptive of the article

sold, may have acquired a kind of technical signification

which would give to them in the trade as completely the

character of being made by a particular manufacturer as

if they were stamped with his trade mark.’’ To the same

effect is Hygcia Distilled Water Co. v. Hyggeia Ice Co.,

70 Conn. 516, 40 At. 534, 539.

8. The term ‘‘Raisin-BRAN’’ had acquired a second-

dary meaning prior to the time that the Respondent ap-

propriated the term as a designation for its competing

product, and the term at that time was not a free word;

and the Circuit Court of Appeals erred when it held that

it was bound by the Trial Court’s finding on that issue.

It has been pointed out in a previous portion of this

Brief (pages 31 to 33, supra) that prior to the time that

the Petitioner coined the term ‘‘Raisin-BRAN,”’ standing

aone, and adopted it as its trade-mark, the term had no

particular meaning in the public mind and might have

meant almost anything; but surely did not instantly sug-

gest to the public that it was a dry prepared breakfast

food.

Definition of Secondary Meaning

In the Lower Courts the Respondent urged that the

very fact that ‘‘Raisin-BRAN”’ had no particular mean-

ing prior to its adoption by Petitioner made it impossible

for it to acquire a secondary meaning. This argument

shows a misconception of the true significance of the term

‘‘secondary meaning’? as it is used by the Courts in

trade-mark cases. The term ‘‘secondary meaning”’ is a

survival of a legal term adopted and used by the Courts

before it was recognized that terms composed of words

descriptive of the contents or uses of a product were

capable of acquiring a secondary meaning. As applied

to a term such as ‘‘Raisin-BRAN,”’ a secondary meaning

does not import that the term ‘¢Raisin-BRAN’’ (as op-

posed to the words of which it is composed) must have

an established primary meaning before it may be adopted

as a trade-mark and acquire a secondary meaning. The

term ‘‘secondary meaning’’ as applied to such a term

merely means that, subsequent to its adoption, the term

must acquire a particular meaning which it did not there-

tofore possess, and that such meaning must indicate to

the public a particular product coming from a single

source, whether the source be known or anonymous. That

this is so is clear from the fact that in the following

cases the following terms which had no particular mean-

ings prior to their adoption were found by the Courts

to have acquired secondary meanings: ‘‘Coca Cola,’’

Nashville Syrup Co. v. Coca Cola Co., 215 F. 527; **‘Coco-

malt,’’ R. B. Davis Co. v. Sher, 125 N. J. Eq. 316, 5 A.

2d 49; ‘‘Cohesive Tile,’’ #. Guastavino Co. v. Comerma,

184 F. 549; ‘‘Filo Floss,’’ Rawlinson v. Brainard & Arm-

strong CUo., 28 Mise. Rep. 287, 59 N. Y. S. 880; ‘‘Dyan-

shine,’ Barton v. Rex Oil Co., 29 F. 2d 474; ‘‘Run-R-

Stop,’ Ff. W. Fitch Co. v. Camille, Inc., 8th C. C. A,,

106 F. 2d 6385.

Merchandising Methods of Petitioner

In passing upon the question of the evidence offered

by the Petitioner to establish a secondary meaning, the

Trial Court in its opinion said that the Petitioner’s

‘*purpose and design to appropriate its brand name as

its exclusive prerogative are manifest from the evidence

and have been affirmed in specific findings by the Court’’

(52 F. 8S. 432, 447, 448). In its findings the Trial Court

said, among other things: ‘*From the inception of its

marketing of its product known as ‘Raisin-BRAN’ in the

year 1925 until the month of April 1942 * * * when re-

tail merchants or ulitmate consumers in the course of

their purchases asked for ‘Raisin-BRAN,’ they were sup-

plied with plaintiff’s product’’ (I. 24, T. 114); ““* * *

in most instances, prior to April 1942, the consuming

public, retailers, and wholesalers in listing, advertising

or ordering plaintiff’s product, designated it merely as

‘Raisin-BRAN.’ In most cases prior to April 1942, the

consumers, retailers and wholesalers merely called the

product ‘Raisin-BRAN’ when placing an order, either oral

or written, and in doing so intended that they should

receive the product distributed by the plaintiff?’ (I. 19,

T, 111); ‘Through its advertising and sales promo-

tion, the plaintiff has developed a public demand for the

product’’ (I. 17, T. 112); ‘‘At the time of the commence-

ment of this action and at the time of the inception of

competition with plaintiff’s product in 1942, and for sev-

eral years prior thereto, the term ‘Raisin-BRAN’ to ulti-

mate consumers and to the public generally signified a dry

prepared breakfast cereal, including as the principal

among its ingredients raisins and a bran type cereal,

* * * ot all times during the marketing of plaintiff’s

product, nearly all wholesale dealers in food products

and a majority of retail dealers in such products knew

that the plaintiff was the distributor of ‘Raisin-BRAN’

and the only distributor of a product containing like

ingredients or having a similar name’? (KF. 12, T. 108).

In its opinion, the Kighth Cireuit Court of Appeals

said: ‘The Appellant has done all that could be done

to appropriate ‘Raisin-BRAN’ as the trade mark of its

product. In 1926 it registered the name as a trade mark

under the Trade Mark Act of March 19, 1920. In its

advertising and on the packages in which the product was

sold, Appellant claimed the name as its trade mark for

the product. For 17 years it marketed the product as

‘Raisin-BRAN’ without competition. It spent large sums

ef money in advertising and in creating a demand for the

product and to build up a large and profitable business

in it? (T. VI, p. 5). It is clear from reading the

opinions of both the Trial Court and the Cireuit Court

of Appeals that their finding that no secondary meaning

was established by the Petitioner in the term ‘‘Raisin-

BRAN” (F. 25, 7. 115; T. V1, pp. 8-9) was predicated

upon their erroneous conclusions of law (1) that no such

term could acquire a secondary meaning, (2) that the

term could not acquire a secondary meaning during the

period when there was no competitive product in the

field, and (3) that the case was governed by the following

statement taken from the ‘‘Shredded Wheat’’ case: ‘* But

to establish a trade name in the term ‘Shredded Wheat,’

the plaintiff must show more than a subordinate meaning

which applies to it. It must show that the primary sig-

nificance of the term in the minds of the consuming

public is not the product but the producer.’’ Aellogg Co.

v. National Biscuit Co., 805 U.S. 111, 118.

Understanding of Public Required to Establish

Secondary Meaning

It has been pointed out in part 2 of this Argument

(pages 81 to 33, supra) that this was an erroneous

conclusion of law, in that the ‘‘Shredded Wheat’’ case

was predicated upon the proposition that the term

‘*Shredded Wheat’’ had become publici juris before the

National biscuit Company sought to appropriate it as a

trade-mark, and that the rule as announced in the

‘*Shredded Wheat’? case was a rule which applies to cases

where the claimant of a trade name is seeking to recap-

ture that name from the public domain, or to appropriate

a name which was already in common use at the time

the claimant first sought to appropriate it. In part 2

of this Argument (pages 31 to 33), it has been pointed

out that in the case at bar the term ‘‘Raisin-BRAN’’

Was not in common use when the Petitioner first appro-

priated it and used it ior a trade-mark, and that this

AS ODN RY ILS EAE TITER I SE, PEEING

ease is governed by the rule laid down in the case of

Coca Cola Co. v. Koke Co., 254 U. S. 148, 145, in which

the Court held: ‘‘It hardly would be too much to say

that the drink characterizes the name as much as the

name the drink. In other words, ‘Coca Cola’ probably

means to most persons the plaintiff’s familiar product,

to be had everywhere, rather than a compound of par-

ticular substances * * *. We see no reason to doubt

that, as we have said, it has acquired a secondary meaning

in which, perhaps, the product is more emphasized than

the producer, but to which the producer is entitled.”’

It is apparent from reading the Trial Court’s Opinion

and Findings that the Trial Court considered that it was

necessary for the Petitioner to show that the term

‘‘Raisin-BRAN’’ meant to most purchasers ‘‘Skinner

Manufacturing Company, Omaha, Nebraska’’ rather than

a single product coming trom a single source, whether

that source was known or anonymous, This was an error.

The value of a trade-mark lies in the fact that the public

understands that the mark represents a particular single

product which the customer wants so that when the cus-

tomer calls tor that product by the trade-mark, he can

expect to receive that particular product. It is not the

name of the manufacturer which interests the public, but

the quality and particular and peculiar characteristics of

the product, and when the public knows, that by asking

for a particular product by its trade-mark or brand name,

it can get the very thing it wants, the name becomes a

valuable item of good will.

«“* * * a trade name may be the name for goods em-

anating from a particular source whether known or anony-

mous * * *.’? Comment a, Sec. 716, Restatement of the

Law of Torts, pp. 558, et seq. ‘‘In the present case it

seems to me that ‘Yorkshire Relish’ meant the manufac-

ture of a particular person. I do not mean that in the

minds of the public the name of the manufacturer was

identified, but that it meant a particular manufacture,

and that when a person is sold ‘Yorkshire Relish,’ as the

defendant did, by selling it as ‘Yorkshire Relish,’ and

calling it ‘Yorkshire Relish,’ he represented to the public

that it was the manufacture which was known as and by

the name of ‘Yorkshire Relish,’’’ Birmingham Vinegar

Brewery Co. v. Powell, A. C. 1897, p. 710, 66 L. J. (Ch.)

N. 8. 763, 1897 L. R., House of Lords, p. 710. ‘‘See-

ondary meaning may exist between a name and a manu-

facturer or seller whose identity is not known to the

buyer as well as between a name and a manufacturer or

dealer who is known to the consumer. There are many

specific articles which are constantly asked for by brand

name. The buyer seeks the product of some one particu-

lar concern. He does not know its name, or its location,

or whether it is a corporation or an individual. He only

knows he seeks a particular thing known by a name

familiar to him.’’ Nims, Unfair Competition, See. 42, p.

121.

‘It is not of controlling unportance to the true appli-

cation of the secondary meaning theory, that the publie

should appreciate the personal identity of the manufac-

turer.’’ Saalfield Publishing Co. v. C. & G. Merriam Co.,

238 EF’. 1, 8.

Testimony Re Understanding of the Public

Most of the testimony on the issue of secondary

meaning was taken by deposition, and all of it was taken

after the Respondent and Kellogg had commenced in-

eer

PES SET APA T Pa al

* SS

tensive radio and newspaper advertising and sales

campaigns for the purpose of marketing their compet-

ing products under the trade name ‘‘Raisin-BRAN”’

(A. 1).

Fourteen consumer witnesses — testified that the

mark ‘‘Raisin-BRAN’’ meant the Petitioner’s product

(A. 3i), and 30 of the 86 consumer witnesses who had

knowledge of ‘‘Raisin-Bran,’’ knew that ‘*Raisin-BRAN’”’

was a product of the Petitioner (A. 3c) and 9 consum-

ers testified that although they did not know the name of

the distributor, they did know that prior to the advent of

the Post and Kellogg products, there was only one break-

fast food product designated ‘‘Raisin-BRAN”’ on_ the

market (A. 3d). Thirty-nine of the consumers witnesses

identified the Petitioner’s product as the only one they

had been accustomed to purchasing as ‘*Raisin-BRAN’”’

and 30 of these 39 knew the name of the distributor (A.

3e, 3f). Seventeen consumers testified that when they

wished the Petitioner’s product, they asked for ‘*Raisin-

BRAN” (A. 3g) Thousands of letters had been received

by the Petitioner from the ultimate consumers in all

sections of the country, indicating clearly that such per-

sons knew the source of origin of the product ‘‘Raisin-

BRAN’? (F. 20, T. 113).

There were 37 retail grocer witnesses who gave evi-

dence who did a service business and 26 retail gro-

cers testified that before the advent of the Post and

Kellogg products, their customers called for the Peti-

tioner’s product under the designation ‘*Raisin-BRAN”’

(A. 4f); 16 retail grocers testified that when their cus-

tomers asked for just ‘‘Raisin-BRAN,”’ they desired the

Petitioner’s product (A. 4g); 31 retail grocers testified

that the mark ‘‘Raisin-Bran’’ meant the Petitioner’s

product (A. 4i); and 5 of the Petitioner’s sales repre-

sentatives and 37 wholesale grocers with equally broad

experience, testified that prior to the advent of the Post

and Kellogg products, the term ‘‘Raisin-BRAN’’ meant

Petitioner’s product, both in the wholesale and _ retail

trade (A. de, T. 258, 266, 336, 337, 404).

The Trial Court ignored entirely the foregoing posi-

tive evidence and gave no heed whatsoever to the credible

evidence of the competent witnesses who testified that at

the time the Kellogg Company and General Foods put out

their products with infringing labels, the term ‘‘Raisin-

BRAN” meant the Petitioner’s product, and found that

‘the plaintiff has not established for the name any sig-

nificance other than descriptive’? (52 F. S., p. 448).

On this issue the Court of Appeals said: ‘‘The evi-

dence of appellant tended to show that the name had

acquired a secondary meaning, while the evidence of ap-

pellees tended to show that the name, which was originally

descriptive of ingredients of the product, had retained

its primary generic meaning. The Trial Court resolved

this issue in favor of the appellees, * * * and its determi-

nation is binding upon this Court’? (T., Vol. VI, pp. 8,

9), and further on, the Court of Appeals said: ‘*‘ Whatever

the trade name of ‘Raisin Bran’ may have meant prior to

the advent of appellees’ competing products, it is a rea-

sonable conclusion that the words ‘Raisin Bran’ have at

all times meant bran with raisins in it’’ (T., Vol. VI, p.

10).

From these statements of the Court of Appeals, it is

evident that that Court recognized the fact that the Peti-

tioner had produced substantial proof that the term

——

1 AURA INE OPPOSE RE TTI BET TARR LE EE ee NED

‘‘Raisin-Bran’’ had acquired substantial trade-mark sig-

nificance, but concluded that since it had at the same time

acquired a significance as to the characteristics of the

product, the trade-mark significance was of no conse-

quence, and a secondary meaning was not established. ,

In the case of Coca Cola Company v. Koke Company,

254 U. S. 143, 146, Justice Holmes said: ‘‘We see no

reason to doubt that, as we have said, it has acquired a

secondary meaning in which, perhaps, the product is more

emphasized than the producer, but to which the producer

is entitled.’’

It is clear from reading the opinions of the Trial

Court and of the Court of Appeals, that both courts over-

looked the fact that where a term which is descriptive of

important constituents of a product, is used as a trade-

mark, it may acquire a dual significance, one which char-

acterizes the product, the other which indicates that it is a

single thing coming from a single source, whether known

or anonymous, this being the trade-mark significance, and

if it has the latter significance, and other apt names are

available to competitors, it is entitled to protection against

infringement even though it also possesses a significance

which characterizes the product.

As in the ease of Coea Cola, that is what oecurred in

the case of Raisin-BRAN; neither term had been used

prior to its adoption to designate any product, each term

was composed of two words, which were descriptive of

two important ingredients of the product; before their

appropriation by the respective claimants neither term

standing alone meant to the public the particular type of

product to which such term was applied; after long ex-

elusive use Coca Cola came to mean a soft drink of which

coca and cola were the two principal ingredients, and

Raisin-BRAN came to mean a dry prepared breakfast

food of which raisins and bran were two of the principal

components (F. 12, T. 108); each term meant a single

thing coming from a single source, whether the source

was known or anonymous; Coca Cola had acquired a dual

significance, one which characterized the product (i. @., a

soft drink containing cocoa and cola), and the other of

trade-mark significance; and the evidence in this case

shows that Raisin Bran has likewise acquired such a dual

significance, one which characterizes the product (i. @, a

dry prepared breakfast food containing raisins and bran)

and the other which is of trade-mark significance.

An excellent illustration of the proof of dual signifi-

eance is found in the following extract from the Record

in this case: ‘‘Q. Raisin-bran means to you bran with

raisins in it??? “‘A. It means this package.’’ (Witness

points to Exhibit ‘‘A’’—Petitioner’s Package.)

Q. ‘What is on the package?’’? ‘‘A. Whole wheat

flakes with raisins, bran and salt added.’? ‘‘Q. It is a

bran cereal with raisins, bran—isn’t that right—with rai-

sins in it??? ‘‘A. That is right’’ (T. 365).

The following cases illustrate the fact that a term

which contains descriptive words may have a dual sig-

nificance, one characterizing the product or business to

which the term had been applied, and the other of trade-

mark significance, and the term will be granted protec-

tion under the secondary meaning rule if the trade-mark

significance is established and other names are available

to competitors.

BD 8 BEE A te Ue get ng oes:

“te

er eee

—_—_—

‘There can be no doubt that the plaintiff’s corporate

name is descriptive of the kind of places in which its busi-

ness is conducted, and whether or not the name has ac-

quired a secondary meaning within the sense described,

is a question of fact. We think in this case the existence

of the fact has been established.’’ Little Tavern Shops v.

Davis, 4 Cir., 116 F. 2d 903-906.

See also Note 3, Saalfield Publishing Co. v. C. & G.

Merriam Co., 238 ¥. 1, 9 (page 55, supra; Reddaway vs.

Banham, L. R. 1896 A. C. 199, 205 (page 59, supra); B. V.

D. v. Montgomery-Ward Company, 16 T. M. R. 423.

It is patent that the Trial Court ignored the posi-

tive evidence of witnesses who testified that Raisin-Bran

meant the Petitioner’s product, because it failed to rec-

ognize the fact that the term could acquire a dual signifi-

cance and still be held to have acquired a_ secondary

meaning which entitles it to protection from infringe-

ments. In fact, the Trial Court predicated its conclusion

that the Petitioner had failed to establish a secondary

meaning upon the following: ‘‘Down to, and during the

trial of this case, Raisin-Bran to the public generally sig-

nified a breakfast cereal, ‘consisting of,’ ‘composed of,’

‘containing or including’ raisins and bran’’ (52 F. 5. p.

448). The evidence to which the Trial Court adverts in the

above quotation, was predicated upon questions propound-

ed by defense counsel, of which the following is a fair

example: ‘‘Q. What does the term or name ‘Raisin-Bran’

mean to you? (T. 9554).

With but one or two exceptions, whenever questions

of this character were propounded to the witnesses, it was

clear that the answer related to the understanding of the

witnesses at the time the testimony was being taken,

which was after the intensive sales and advertising cam-

paigns of General Foods and Kellogg were well under

way (A. 12b). That the present tense of the question

propounded to the witnesses had a marked affect upon

their answers is demonstrated by the fact that a large

number of these witnesses who testified that the term

‘‘Raisin-Bran’’ meant ‘‘A breakfast cereal composed of

raisins and bran,’’ or words to that effect, also testified

that before the advent of General Foods and Kellogg

products, the term signified the Petitioner’s product (A.

12¢).

An examination of the evidence of almost all of the

witnesses who testified that Raisin-Bran meant a_ break-

fast food composed of raisins and bran, shows that the

trade-mark significance of the term was as well known to

them as that significance which characterized the product.

It is also apparent from examining the testimony

that many of these witnesses were induced to give the

answers which they did by leading and suggestive lines

of questioning (T. 307, 309, S11, S21, 368-569, 421, 427,

554, 668). In facet, some of this testimony was elicited

from witnesses who had never seen nor used Petitioner’s

product prior to competition (T. 549, 951, 991, 603), or

who had practically no knowledge or experience with Pe-

titioner’s product before competition (T. 3862, 654).

As opposed to the voluminous credible, positive evi-

capatespreciasis metas

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dence of the trade-mark significance of the term ‘‘ Raisin-

Bran” elicited from among the consumer and retail

grocer witnesses, there were only five consumer witnesses

who positively testified that the term ‘*Raisin-Bran”’

did not mean to them the product of any particular

manufacturer, or any particular product, and the tes-

timony of these witnesses was all predicated upon

their understanding as to the time after General Foods

and Kellogg had introduced their competing products

on the market (A. 12g); and two of these consumer

witnesses made it clear that they understood that be-

fore competition ‘‘Raisin-Bran’’ meant the Petitioner’s

product (T. 545, 664), and two of those consumers tes-

tified they had no real knowledge of Petitioner’s prod-

uct before competition (T. 548, 646).

It is submitted that none of this negative evidence

impeached the credibility of the Petitioner’s witnesses

who testified to positive understanding. Under the rules

of evidence, such negative testimony was not of sufficient

weight to overcome the substantial positive evidence ad-

duced by the Petitioner, which showed that a secondary

meaning had been established in Petitioner’s trade-mark

‘‘Raisin-BRAN.’’ DeGriselles v. Gans, 116 Neb. 889, 219

N. W. 235, 239.

The testimony of those who had never heard of the

Petitioner’s product or who had only recently heard of

it, is of no consequence against the positiwe evidence of

those who did know of the product and had purchased it

for some time. Bergman v. Northern Pac. Ry. Co., 8th C.

C. A., 14 F. 2d 580, 582.

The negative testimony of those whose memory or

power of comprehension was not particularly acute is of

little weight against the positive testimony of credible

witnesses who had good memories and powers of compre-

hension. Window Glass Mach. Co. v. Pittsburgh Plate

Glass Co., 46 F. 2d 484, 494; affd., 3rd C. C. A., 284 F. 640.

See also The Fort St. George, 22 F. 2d 195, syllabus 4;

affid. 27 F. 2d 728; cert. denied, 278 U. S. 654.

The evidence which was the result of leading and

suggestive questions which induced the witnesses to give

their understanding of the descriptive significance of the

term ‘‘Raisin-BRAN’’ after competing products were on

the market does not negative the positive testimony of the

witnesses to the effect that the term meant the Petition-

er’s product. Huffman v. Buckingham Transportation Co.

of Colorado, 10th C. C. A., 98 F. 2d 916, 921.

Amount of Testimony Necessary to Establish Secondary

Meaning

In spite of the foregoing, the Trial Court not only

held that such evidence was not sufficient to prove a sec-

ondary meaning, but in its Opinion said: ‘*The Court has

heard and upon this issue has particularly reviewed and

reread the oral evidence, both presented through wit-

hesses, appearing personally before the court and submit-

ted by deposition; and it is wholly satisfied that no public

understanding either of the plaintiff as the origin of

‘Raisin-BRAN’ or of ‘Raisin-BRAN’ as a product of the

plaintifi has even nearly been established?’ (92 KF. S. 432,

448).

EMAL

AIRE ROE

From this it is clear that the Trial Court erroneously

considered that it was necessary to show that practically

all of the purchasing public fully appreciated the fact that

the term ‘‘Raisin-BRAN’’ was a Skinner product.

The opinions of the Courts in the following cases in-

dicate that secondary meanings were found to exist in

cases where there was no testimony whatsoever from

ultimate consumers: New England Awl & Needle Co. v.

Marlborough Awl & Needle Co., 168 Mass. 154, 46 N. KE.

387; Birmingham Vinegar Brewing Co. v. Powell, 66 L. J.

(Ch.) N. 8. 763; Barton v. Rex Oil Co., 2 F. 2d 402; Der-

enberg Trade Mark Protection, p. 335; Holt v, Metropol-

itan Refining Co., 9 F. 2d 662; Keasby v. Brooklyn Chem-

ical Co., 142 N. Y. 467, 37 N. E. 476; Coca Cola

Co. v. Old Dominion Beverage Corp., 271 F. 601, 602; R.

B. Davis Co. v. Sher, 126 N. J. E. 316, 5 A. 2d 49, 50; F.

W. Fitch Co. v. Camille, Inc., 106 F. 2d 635. In cases

where evidence of consumers or other witnesses was used

to prove the secondary meaning, the Courts did not re-

quire a plethora of consumer, wholesaler and retailer wit-

nesses, but were satisfied with scant testimony of that

character, ‘‘The record shows without contradiction that

the words ‘Honey-Krust’ have acquired a secondary mean-

ing throughout the State of Kentucky, and have come to

signify the product of appellant, both to the consuming

public and to dealers generally. This was testified to by

a qualified disinterested witness, as well as by several

employees of the Appellant.’? Grocers Baking Co. v. Sig-

ler, 6th C. C. A., 132 F. 2d 498. ‘A trade mark owner will

usually summon as witnesses his former employees, as

well as those engaged at the time of the proceedings, his

agents, traveling salesmen, and possibly even eustomers.”’

Derenberg Trade Mark Protection, p. 337. In fact, in a

ease in the Fourth Cireuit Court of Appeals the Court

held that the existence of a secondary meaning was estab-

lished through customers who testified that they had pa-

tronized the defendant’s store in the belief that it was the

claimant’s. Little Tavern Shops v. Davis, 4th C. C. A., 16

F, 2d 903, 906.

In an article written by Dr. Martin Wassermann,

which appears in 24 United States Trade Mark Associa-

tion Bulletin, No. 6, p. 157, there is a discussion of the

“Gervais Cheese Case’’ as to the proof necessary to en-

title the owner of a trade-mark to protection against in-

fringement. In that case it was contended that beeause

a large number of members of the consuming public had

forgotten or did not appreciate the fact that the name

‘*Gervais’’ indicated the source of origin of the cheese,

that therefore the term did not have a secondary mean-

ing, and the Supreme Court of Germany in that case said:

‘““A large circle of consumers had in the course of time

become accustomed to seeing in the word ‘Gervais’ an in-

dication of quality; * * * however, on the part of the so-

called better class of publie concerned with the consump-

tion of genuine ‘Gervais’, the remembrance of the differ-

ent places of manufacture had not yet been obliterated;

that, moreover, this circle of consumers even now when

purchasing ‘Gervais’ expected a cheese of definite origin.

** * It is sufficient that a not inconsiderable part of the

public concerned sees in the word its original meaning.’’

24 ;U. S. Trade Mark Association Bulletin, p. 157. (By

‘‘original meaning’? the Court meant ‘‘trade mark signifi-

cance.’’)

In the same article, discussing the ‘‘Saecharino Case,”’

the Supreme Court of Germany is quoted, viz.: ‘*There is

no change into a trade name” so long as a part of the

trade circle, be it only of persons who are familiar with

the business of the mark in question and the meaning of

the word, regard it as an indication of such manufacture.

Whether the circle of consumers in general are aware of

the fact that the complainant has a trade mark and that

it has had a monopoly * * * in the production of sugars

is unimportant. The meaning of a trade mark to the con-

sumer does not consist in the fact that the buying public

knows from what source the goods originate, but that the

mark offers to it a guarantee of the uniform derivation

of the goods in question; it thus knows that it has before

it the same goods when it sees the same mark on the same

article.’ 24 U. S. Trade Mark Association Bulletin, pp.

158-159.

‘‘Raisin-BRAN’’ Did Not Become Publici Juris

The Respondent in the Lower Courts predicated part

of its argument that the term ‘*Raisin-BRAN’’ had not

acquired a secondary meaning upon the cases of Bayer

Co. v. United Drug Co., 272 F. 505, and Dry Ice Corp. of

America v. Louisiana Dry Ice Corp., 54 F. 2d 882, cert.

den. 286 U. 8. 558. These cases, however, are not in point

with the ease at bar. In the case of Bayer Co. v. United

Drug Co., supra, the word ‘*Aspirin”’ had become a tree

term to the consuming public and had failed to asquire

a secondary meaning because the producer of the product

had permitted various manufacturing chemists to put out

the product with their own names as part of the designa-

tion, thereby using the word ‘Aspirin’? in a purely de-

seriptive sense and using their own names to indicate

the sources of origin; but the Court did hold that a see-

ondary meaning had been established as between the man-

ufacturer and wholesalers because the manufacturer had

9 “Trade name” is used here as Synonymous with free name.

used the term as its trade-mark in selling its product

to manufacturing chemists. In the ‘‘Dry Ice Case’’ there

were competitors in the field who described their compet-

ing products by other names than dry ice, which was the

trade name of the complainant, but the name was such an

apt description that the public on its own volition and

without the encouragement or suggestion of competitors,

applied the term to the competitors’ products as well as

to the product of the original user of the term, In the

ease at bar, however, there was nothing done by the

claimant which amounted to a dedication of the word to

the public or was designed to lead the public to believe

that the term indicated other than a single thing coming

from a single source which, before competition, was the

Petitioner (F. 15, T. 110-111).

General Foods Company and Kellogg Company, how-

ever, by use of the term as though it were descriptive,

to wit, ‘“‘Post’s Raisin Bran’’ and ‘‘Kellogg’s Raisin

Bran,’’? and by sudden and intensive sales and adver-

tising campaigns (52 F. S. 457, 438) did their best to

convince the consuming public that the term ‘*Raisin-

BRAN” was descriptive ef their products and applied

thereto as well as to the Petitioner’s product, and in

this manner they attempted, by infringement and unfair

competition, to make Petitioner’s term ‘*Raisin-BRAN”’

a free word. Surely no rule of equity will justify hold-

ing that Petitioner’s trade name ‘*Raisin-Bran’’ be-

‘ame a free word, open to use by the infringers because

of wrongful aets of the infringers.

The right of the Respondent to appropriate the

trade-mark of the Petitioner must be measured by the

situation which existed with respect to the term at the

time that the Respondent and Kellogg first infringed

Yer tee

RUS IEE SANE ZOLLER USMS IES NTE?

the Petitioner’s trade-mark and not after they had done

their best to destroy the secondary meaning which Pe-

titioner had established in the mark through seventeen

years’ exclusive use of the mark and through extensive

and expensive advertising and sales campaigns. It has

been pointed out, supra, that the Trial Court predicated

its finding that no secondary meaning had been established

upon an analysis of the testimony which was predicated

upon such erroneous conclusions of law.

Court of Appeals Erred in Refusing to Review Evidence

This being the case, under its own decisions, the

Eighth Cireuit Court of Appeals erred when it refused

to review the Trial Court’s Finding that the Petitioner

had failed to establish a secondary meaning. Aetna Life

Ins. Co. v. Kepler, 8th C. C. A. 116 F. 2d 1, 5. But even

if this finding of the Trial Court were not predicated

upon erroneous conclusions of law, the testimony upon

which the Trial Court predicated its finding was not of

a nature which could be truly called conflicting. This

testimony came from 86 consumer witnesses (A 3), only

5 of whom appeared before the Court in person (T.

331, 331, 509, 509, 580) from 61 retail grocer witnesses

(A 4), all of whose testimony was given by deposition,

from 35 wholesale grocers witnesses (A. 5), only 2 of

whom appeared before the Court in person (T. 332, 507)

and some 17 brokers and salesmen representing the Ap-

pellant, 5 of whom appeared before the Court in per-

son (T. 258, 263, 267, 270, 334).

The testimony of all of these witnesses related to

the understanding, knowledge and practice of such wit-

nesses and no one witness gave testimony which im-

peached the credibility of another, the differences in

testimony merely being differences which would be nat-

ural when the evidence is taken from so many people,

differences which were predicated upon differences in

memory, experience, marketing methods, and understand-

ings of the several witnesses. There was nothing, there-

fore, which barred the Court of Appeals from reviewing

the testimony and drawing its own sound conclusions on

the subject. Kuhn v. Princess Lida of Thurn & Taxis, 3d

c. CG. A. 119 F. 2d 704, 706; Equitable Life Assurance

Society v. Irelan, 9th C. C. A., 123 BF. 2d 462, 464.

9. Since the term ‘‘Raisin-BRAN’’ had acquired a

secondary meaning with respect to Petitioner’s product,

the Respondent had no right to use that term as the desig-

nation for its competing product.

The Respondent, in designating its product which

competes with the product to which Petitioner had ap-

plied its trade-mark ‘*Raisin-BRAN,’’ called its product

‘*Post’s Raisin Bran’? and prepared its label and = ad-

vertising matter so that the product would naturally be

called ‘*Raisin-BRAN’’ (A. 10; T. 265, 266, 516-518, 522-

524). In its Opinion, the Trial Court said that the Re-

spondent had a perfect right to use the term ‘*Raisin

Bran’’ on its competing product (52 B.S. 482, 451). The

Court of Appeals also held that the Respondent had a

right to use the exact term ‘‘Raisin Bran’’ (T. Vol. VI,

p. 9).

Use by Respondent of Term ‘‘Raisin-BRAN’’ an

Infringement

These holdings were predicated upon the conelusion

that if the term was in any substantial degree deserip-

tive of the product or of the contents of the product,

Be hha STE ok Ne nina Te Bk Meee oak aa ats

it was in the public domain and open to use by others.

Such conclusion was in direct conflict with the decision

of the Supreme Court of the United States in Armstrong

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

in which it was held that the use of a descriptive or geo-

graphic trade name of another is an infringement, if

such a name has acquired a secondary meaning. To

like effect are Section 717, Restatement of the Law

of Torts, p. 562; N. A. Fairbanks v. Luckel, King &

Cake Soap Co., 102 F. 737; Fuller v. Huff, 104 F. 141;

Coca Cola Co. v. Stevenson, 276 F. 1015; R. Guastavino

Co. v. Comerma, 184 F. 549; Little Tavern Shops v. Davis,

116 F. 2d 903; Saalfield Publishing Co. v. Merriam, 238

F.1; Trappey v. M’Ilhenny, 281 FE. 23.

Registration Under 1920 Trade Mark Act No Excuse

for Infringement

In the Lower Courts, the Respondent claimed that

this rule did not apply to a trade-mark registered under

the 1920 Trade Mark Act. In the Nu-Enamel Case, supra,

the term which was granted protection and held to be

infringed was a descriptive term which had been regis-

tered by the claimant under the 1920 Trade Mark Act;

and in See. 717, Restatement of the Law of Torts, supra,

the text states that ‘‘trade marks’’ and ‘‘trade names”?

may be infringed, and as pointed out in Note 6, page 4,

supra, that text uses the words ‘*trade mark’’ to designate

a technical trade-mark and the words ‘‘trade name’’ to

designate a non-technical trade-mark.

;

‘

10. The Trial Court erred when it found that the

Respondent had done all that was necessary to distinguish

its product from that of the Petitioner, and the Court

of Appeals erred when it concluded that such findings

were binding upon the Appellate Court.

Use of Word ‘‘Post’s’’

In Findings of Fact No. 37 (T. 121-122), the Trial

Court found, ‘‘By using the trade-mark Post’s in clean

type and conspicuous position as a prominent feature of

the carton and by using cartons in colors clearly differ-

ent from those on plaintiff’s carton, the defendant used

reasonable care to inform the publie of the origin of

the Post product and used reasonable precautions to pre-

vent confusion and to guard against the Post product

being passed off as that of plaintiff.’ The Court of

Appeals, in passing on this question, said: ‘*The record

shows that the name ‘Post’s’ appears prominently upon

the packages of Raisin Bran sold by the General Foods

Sales Company, * * * It would seem that any purchaser

of ‘Raisin Bran’ who was at all interested in its origin

should have no difficulty in identifying the Raisin Bran

marketed by either of the Appellees and in distinguish-

ing it from the product of the Appellant’? (T. Vol. VI,

pp. 10-11). These Findings and Conclusions of both the

Trial Court and the Appellate Court are clearly predi-

cated upon the assumption that the term ‘*Raisin-BRAN”

could not and had not aequired a secondary meaning,

and that the Respondent was perfectly free to use the

term, and its sole responsibility was to identify its own

product so that a discerning purchaser might distinguish

between the product of the Petitioner and that of the Re-

spondent. This is the rule, of course, where the term

has not been used in a trade-mark sense and where no

ds)

secondary meaning has been estabished; but, as has been

pointed out above, the Petitioner’s term ‘“Raisin-BRAN”’

was capable of acquiring and did acquire a secondary

meaning, and the Respondent had no right to use it.

In such a case, placing the name ‘Post’s’’? on the Re-

spondent’s package aggravates rather than excuses the

infringement,

In most instances, it is not the name of the manu-

facturer that is important to the consumer, it is the

product and the qualities of the product which he is

particularly desirous of obtaining; and it is the trade-

mark of such a product which to his ears or his eyes

serves as the badge of identification. The evidence in

this case shows that the Petitioner had properly used

its mark ‘‘Raisin-BRAN’’ as such a badge of identifica-

tion and had not used its own name for that purpose

(F. 15, T. 110). It stands to reason that by taking that

badge of identification, the Respondent intended to and

did mislead many purchasers, when they selected Re-

spondent’s packages, to believe that they were securing

the product that they had always purchased before un-

der the Petitioner’s trade-mark ‘‘Raisin-BRAN,’’ and

the word ‘‘Post’s,’”’ if they gave attention to it at all,

would either mislead such purchasers into the erroneous

belief that the product which they have always identified

and procured by the only mark they knew was made

by Post’s all the time( which happened, see Ptf’s. Hxs, 56,

37, 38; T. 43, 44), or had been acquired by Post’s from

the orignial producer, or that it was a mere descriptive

term and did not mean what they had previously had

good reason to believe it meant, —a single thing coming

from a single source. Since the Petitioner cannot label

and advertise its product ‘‘Skinner’s Raisin-BRAN”’

without destroying the secondary meaning which it has

established over a period of seventeen vears, the chance

for continuing deception of the public and misappropria-

tion of the good will inherent in the Petitioner’s trade-

mark is greatly increased by the use of the word ‘*Post’s.”’

With respect to those of the consuming public who be-

come aware of the fact that there were now two products

on the market, the Respondent’s use of the name ‘*Post’s’’

was in itself unfair competition because its use in that

manner was well calculated to lead such members of the

consuming public to understand that ‘‘Raisin-BRAN’’

was no longer the plaintiff’s trade-mark, but was merely

a descriptive word, thus destroying the secondary mean-

ing established by the Petitioner through years of inten-

sive sales effort and large advertising expenditures. As

was said by the Supreme Court of the United States,

“That is an aggravation not a justification, for it is open

trading in the name of another upon the reputation ac-

quired by the device of the true proprietor’? Menendez

v. Iolt, 128 U.S. 514. See also Coca Cola Co. v. Steven-

son, 276 F. 1015; R. Guastavino Co. v. Comerma, 184 F.

549; Little Tavern Shops v. Davis, 116 F. 2d 906; Saalfield

Publishing Co. v. Merriam, 238 F. 1; Trappey v. M’Il-

henny, 281 F. 23,

Surely, where a merchant has a right to the ex-

elusive use of his trade-mark, it is not equity nor sound

justice to say that merely because the infringer is so

large that everybody knows his name, he can appropriate

the trade-mark or trade name belonging to another with

impunity if he places his own name upon the package

carrying an infringing trade name or trade-mark. Such

a course of conduct would promote monopoly, not pre-

vent it.

Re Color of Respondent’s Label

It is also to be noted that the Trial Court erred in

finding that the word ‘*Post’s’? was in coupicuous type—

‘f the test of conspicuousness is a comparison with the

location, size and emphasis of the words ‘‘Raisin Bran’’

as they appear upon Respondent’s package (Def. Ex. 3,

T. 737).

The Trial Court also erred when it found that the

General Foods label was ‘‘in colors clearly different from

those on plaintiff’s carton.’’ It is to be noted that the

lower right-hand corner, and both side panels of Peti-

tioner’s carton are in substantially the same shade of

blue as is found on the face of the Respondent’s carton.

(See Ptf. Ex. 9 sent forward to Court for comparison

with Def. Ex. 3, T. p. 787).

The conclusions of the two Lower Courts that the

Respondent could not be charged with infringement be-

cause it marketed its product in a package in which

blue and white predominated and where the word ‘‘Post’s”’

appeared at the top of the package is clearly erroneous

if, as the Petitioner has pointed out above, the trade-

mark ‘‘Raisin-BRAN”’ could and did acquire a secondary

meaning prior to the time that the Respondent sought

to appropriate it as part of the designation for Respond-

ent’s competing product. N. A. Fairbanks v. Luckel,

King & Cake Soap Co., 102 F. 327: Fuller v. Huff, 104

F. 141.

It is a matter of common knowledge that many per-

sons identify, select and order a product by its trade

name only, so that confusion will most likely result where

the transaction is oral or where a child or member of

;

tat)

a family not familiar with different brands is sent to the

shop; and how about the housewife who knows nothing

about the product but has heard from a friend or over

the radio of the desirability of the same, the package or

label means nothing, the trade name means everything.

N. K. Fairbanks v. Luckel, King & Cake Soap Co., supra;

Fuller v. Huff, supra.

It is a matter of common knowledge that the various

manufacturers change their labels from time to time, so

a change in the color or particular setup of a package

is not of a character which will challenge the public at-

tention to the fact that here is a different product from

that which the public has been accustomed to buying under

a well-known trade-nark. In fact, several witnesses tes-

tified that when they first saw the Respondent’s packages

they thought they were merely new packages for the old,

familiar product (T. 288, 307, 337, 415, 429).

It cannot be gainsaid that the words ‘* Raisin Bran’’

appear on Respondent’s package in the plaee which will

catch the eye and are the most conspicuous part of the

label, far more conspicuous in fact than the word

‘*Post’s,’? which is not on the portion of the label which

is calculated to catch the eye at first glance.

“The average buyer is always seeking a sign, some

special earmark of the brand he has in mind. It may be

ecolor—or a design—or a peculiar shape or name. Once

his eye sees that sign or his ear hears it, he is satisfied.

He is careless—yes, possibly, but if that is the way the

average man buys that sort of goods, he may rightfully

demand that the law proteet lim from deceit when he so

purchases.’? Nims, Unfair Competition and Trade Marks,

3rd Ed., See. 328, p. 847. ‘‘But the two marks are prac-

tically idem sonans; they look alike; they are distinguish-

able by ordinary purchasers only by sharp and concen-

trated inspection. The testimony of the eyes is conclusive

that they are likely to cause confusion and mistake by the

public, and to deceive purchasers to buy the product of

the defendant in the belief that it is the product of the

complainant.’? Feil v. American Serum Co. (8th C. C.

A.), 16 F. 2d 88, 90. ‘‘A vast field of words, phrases

and symbols is open to one who wishes to select a trade-

mark to distinguish his product from that of the other.

Unquestionably in our ever-increasing complex business

life, the trend of modern judicial decisions in trade-mark

matters is to show little patience with the neweomer who

in adopting a mark gets into a borderline zone between

an open field and one legally appropriated to another.

As between a newcomer and one who by honest dealing

has won favor with the public, doubts are always resolved

against the former.’’ Skelly Oil Co. v. Powerine Co. (U.

S. Customs Court), 86 F. 2d 752.

The Cireuit Court of Appeals, however, dismisses this

question by saying that ‘‘ Under the evidence, the question

whether the Appellees had furnished adequate means to

identify their products and to distinguish them from Ap-

pellant’s product * * * was, we think, a question of fact

for the Trial Court to determine’? (‘T., Vol. VI, p. 10).

In view of the fact that the Findings of the Trial

Court with respect to the question which is the point here

at issue were predicated upon erroneous Conclusions of

Law, it is submitted that such Findings were not binding

upon the Appellate Court.

11. The Trial Court erred in its finding that the

proof did not show confusion and palming off of Re-

spondent’s product for the product of the Petitioner; and

the Eighth Circuit Court of Appeals erred in concluding

that these findings of the Trial Court were binding upon

the Appellate Court.

The competing products of the Petitioner and the

Respondent retail at ten to fifteen cents a package and

are for sale in service and self-service grocery stores (T.

269, 345, 477). It is a matter of common knowledge that

in self-service stores the customer picks up a basket or

pushes a basket on wheels, and goes about the shop pick-

ing up from shelves and counters the various grocery

items whieh she desires. Often a child or a servant girl

is sent to market. These facts were brought out in the

testimony of the various consumer witnesses (.\. da).

Since dry prepared breakfast food is a low-priced article

and frequently purchased, the average customer will give

but little thought to making her purchase. It is not like

buying an expensive automobile. In service stores, orders

are filled hurriedly by the grocery clerks.

Confusion

In spite of the difficulty of locating witnesses who

know personally of confusion, in this case during the

course of taking depositions (within 90 days after Re-

spondent commenced its infringement), several instances

were disclosed which showed that actual customer confu-

sion had taken place.

Mrs. Clara Coker of Shreveport, Louisiana, a house-

wife, selected a box of Respondent’s package at a self-

service store thinking it was Petitioner’s package and

didn’t notice the word ‘*Post’s’? on the package until

after she started using the product and discovered it was

not what she had been accustomed to receive. She noticed

the difference in the label but thought it was merely a

change in label (‘T. 288-289).

Mrs. Ruth Polk, a housewife of Memphis, Tenn., tes-

tified, ‘‘There was confusion over the brand of Raisin

Bran I wanted’? (T. 371).

Mr. Ted Oliver, a salesman of Petitioner, testified that

at a Piggly-Wiggly Store in Nashville, Tennessee, ‘‘l

was standing near the cereal section * * * when a lady

‘same in and asked the clerk if they had any Raisin Bran.

The clerk said, ‘Yes,’ pointing to a shelf containing

Post’s Raisin Bran. The lady said, ‘That isn’t the kind

I have been using,’ and the clerk said, ‘Yes, that’s it;

that’s the new package’’’ (T. 337).

Two retail grocers testified that their customers were

confused by the appearance of the Respondent’s package

(T. 294, 297).

The Trial Court dismissed this positive evidence of

confusion with the statement, ‘‘To be sure some instances

are shown olf customers at self-service retail stores who,

during the early days of competition, inadvertently se-

lected a competing product when they desired to secure

the plaintiff’s with which alone they had heretofore been

acquainted. But within the rules af law above suggested,

that is not the test of unfair competition or even of cus-

(o2 B.S. 451). The ‘rules of law’’

referred to by the Court were the Trial Court’s erroneous

conelusions (1) that the term ‘*Raisin-BRAN’’ could not

acquire a secondary meaning (2) that the Petitioner had

wholly failed to prove that the term ‘Raisin-BRAN’’ had

tomer confusion’

acquired a secondary meaning, (3) that the Respondent

had the right to use the term ‘*Raisin-BRAN”’ in spite

of its long exclusive use by the Petitioner as a_trade-

mark, and (4) that the Respondent was ‘‘not obliged to

so guard his competitive methods that even a negligent

or inattentive purchaser will be protected from confu-

sion’? (52 F.S. 450), and ‘‘there is no probability of any

ordinary cautious member of the public, using reasonable

‘are and attention in purchasing, being deceived’? (I. 59,

T. 122).

Thus we see that the Trial Court shut its eyes to

positive, credible evidence of confusion on the ground that

the confusion was due to the use of the term ‘*Raisin

Bran’? and the Respondent could not be held responsible

for such confusion, and those confused were either ‘*neg-

ligent or inattentive’? purchasers, and it is only confusion

of ‘fa cautious member of the public, using reasonable

care and attention in purchasing’? which counts.

As to the character of the witnesses who were shown

positively to have been confused, the Court does not doubt

their credibility, but insists that they were ‘negligent and

eareless.’? The evidence does not justify holding that any

of the witnesses who were confused could be deseribed as

negligent (T. 288-289, 294, 297, 537, 371). It does not

appear that their conduct was any different from that

of the average purchaser of such product. The law does

not hold that it is only contusion on the part of a

‘Cautious’? purchaser ‘tusing care and attention in pur-

chasing’? which is of consequence. An infringer of a

well-known trade-mark is chargeable with the confusion

or deception of a casual purchaser, who may even be

thoughtless, unwary, ignorant, unthinking or even care-

less, such as a child or one who makes his purchase in a

rush, and his selection with a mere elance of the eye.'

To refute the Petitioner’s positive credible evidence

of confusion, the Respondent elicited from a number of

grocer witnesses the statements that they did not know of

any confusion occurring in their stores (A. 13). This evi-

dence was purely negative testimony and of no weight

against the positive credible testimony which was adduced.

De Griselles v. Gans, 116 Neb. 835, 219 N. W. 235, 239;

Bergman v. Northern Pacific R. R. Co., sh C. C. A. 34

F. 2d 580, 582; Window Glass Machine Co. v. Pittsburg

Plate Glass Co., 46 F. 2d 484, 494.

10 The following cases illustrate the type of confusion for which an in-

fringer is considered responsible: “Ordinarily the prospective pur-

chaser * * * acts quickly. He is governed by a general glance.

The law does not require more of him,” Coca-Cola Co. v. Chero Cola

Co., 273 F. 755; “The law does not require nice distinction or

discrimination from the ordinary purchaser,” R. B. Davis Co. v.

Sher, 125 N. J. E. 316, 5 A. (2d) 49, 51; “The usual purchaser * * *

merely looks, perhaps hastily,” Ward Baking Co. v. Potter-Wright-

ington Co., 228 F. 398, 401; He may be “careless as to details,”

Little v. Kellam, 100 F. 353; Or “unsuspecting,” Celluloid Mfg. Co.

v. Cellonite Mfg. Co., 32 F. 94, 97; Or “unthinking, who does not

stop to analyze,” Florence Mfg. Co. v. J. C. Dowd Co., 178 F. 73, 75;

Or he “may rely on his first impression,” In re Inderrieden Canning

Co., 277 F. 613, 614; He may be the ordinary retail purchaser * * *

“not usually of a high degree of intelligence * * *,” N. K. Fair-

banks Co. v. R. W. Bell Mfg. Co., 77 F. 869, 876: He need not be

“the careful and discriminating purchaser,” Auto Acetylene Light

Co. v. Presto-O-Light, 264 F. 810, 812; He is “not bound to study

or reflect,” Pillsbury v. Pillsbury Washburn Mills Co., 64 F. 841,

847.

The infringer may be held responsible for confusion of “the

servant girl or a child sent to the grocery store * * *' Ohio Baking

Co. v. National Biscuit Co., 127 F. 116, 120; “The purchaser with

not very definite or clear recollection,” Northern Warren Corp. v.

Cosmetic Co., 18 IF. 2d 774 (cited with approval in F. W. Fitch v.

Camille, Inc., 8th C. C. A.. 106 F. 2d 685; Or one who “picks up a

package from * the counter while purchasing a newspaper (or

other groceries) on the way to or from his train,” J. N. Collins Co.

v. Paist, 14 F. 2d 614, 615; Or one who “acts upon the moment,”

Pillsbury v. Pillsbury Washburn Mills Co., supra: And the wrongful

infringer is rightly chargeable with acts of retailers who are enabled

to palm off the infringer’s product because of the use of his rival’s

trade name, Saxlehner v. Seigel-Cooper Co., 179 U. S. 42, 45 L. Ed.

77: Coca-Cola Co. v. Gay-Ola Co., 200 F. 720; F. W. Fitch Co. v.

Camille, Inc., 8th C. C. A. 106 F. 2d 635: Reid Murdoch & Co. v.

H. P. Coffee Co., &th C. C. A.. 48 F. 2d 817.

The Respondent in the Lower Court argued that he-

cause only a few cases of confusion were shown, there

was in facet no confusion. This is not sound law. Many

persons who were confused would never realize that tact

and, of course, would not be available for testimony ;

others who were confused would not be known to the

Petitioner, particularly where the Petitioner was called

upon to obtain evidence from a purchasing public which

ran into the hundreds of thousands and which was seat-

tered over the entire United States. Recognizing this

difficulty and knowing the impracticability of producing

a multiplicity of witnesses, the Courts hold that ‘‘actual

deception having been shown establishes the likelihood of

deception.”?> BE. W. Fitch Co. v. Camille, Inc., 8th C. C.

A., 106 F. 2d 635, 640; see also Gebron, Tne. ve Gebron

Cleaners, 40 IF. S. 150, 155.

Palming Off

The Trial Court’s finding that there was no palming

off of Respondent’s product for the product of the Peti-

tioner (I. 42, T. 125) is likewise predicated upon errone-

ous conclusions of law. It is submitted by the Petitioner

that the foregoing positive evidence does not support the

Trial Court’s finding that ‘Said product has not been

passed off as that of plaintiff’? (Ff. 42, T. 123).

The first sale of Respondent’s product which it desig-

nated **Raisin Bran’? was made about May 1, 1942 (T.

000). On May 16, 1942, Petitioner obtained and served

a temporary restraining order upon the Respondent (T.

I1-lo). The Respondent paid no heed to the restraining

order and up to September 1942 had sold 3,129,984 pack-

ages of its produet (T. 500-501).

YQ?

The Respondent limited its sales territory to the ter-

ritory where it knew Petitioner had its greatest volume

of business (T. 500-501) and introduced its product with

a large newspaper and radio advertising campaign

throughout the south. In this program it emphasized

a sale of its product at two cents per package (Def.’s

Exs. 50, 51-A to W, 02-\ to M, 53, T. 515-017).

Beeause of this two-cent special price and the profit

in the deal to them, retail grocers pushed the Respondent’s

product, advertising it as just ‘‘Raisin Bran,’’ or if they

used the word ‘‘Post’s,’’ that — was in smaller type

than the words ‘*Raisin Bran’? (A. 10; T. 274, 290, 297,

298, 330, 344, 364, 369, 375, 408, 415, 4385, 475, 532, 038,

5d8, SSG, SVU, 598, GUG, 620, 628, 650, 639, 664, G66, O93; Lh.

gts 66-G-1, 66-H-1, T. 281, 282; K. 59, T. 266; Ki. 79,

», 336). Several retailers bluntly stated that because of

ae two-cent special price they palmed off Respondent’s

package on orders for Petitioner’s product (T. 274, 297,

415, 538, 606).

After Respondent’s product came upon the market, a

number of grocers who had previously been handling Pe-

titioner’s product and whose customers had been calling

for it under the designation ‘*Raisin Bran,’’ delivered

the Respondent’s product on such orders, although several

of such grocers testified that they knew the customer had

intended to order Petitioner’s product (T. 274, 296, 29%,

415, 538, 557, GOV, 6UG, GLO, 620, 659, 665, 666, 672, 679,

693, 694). Several customers testified that Respondent’s

product was passed to them on orders for Petitioner’s

product (T. 296, 310, 373, 398, 399, 478). The grocers

who admitted this palming off gave as their excuse that

they delivered whatever was most handy, or whatever had

the most profit, or whatever was slowest to move, and

their testimony shows that they are still following such a

practice.

The Trial Court in its Opinion comments on this

testimony as follows: ‘‘For some period following the

advent of the Kellogg and Post products, customers order-

ing ‘Raisin Bran’ without other particularization in ser-

vice grocery stores, and expecting to receive the plaintiff’s

product

were frequently served with one or the

other of the competing cereals. Grocers explained these

incidents variously, some saying that they delivered

‘whichever Raisin Bran was handy,’ or ‘whichever Raisin

Bran was in stock,’ and a few, more frank perhaps than

the others, ‘whichever one was the most profitable one to

the seller’? (52 F. $8. 451); but the Court excuses this by

saying, ‘‘In * * * the retail trade the practice developed

quickly of inquiring of the purchaser which brand was

desired and making delivery accordingly if the preferred

item was available’? (52 F.S. 451). This last sentence ts

contrary to the weight of the evidence which showed that

14 of the retail grocer witnesses testified that when their

customers want the product they still ask for ** Raisin

Bran’’ without sage tregid the name of the producer (T.

296, 298, 324, 328, 364, 369, 415, 464, 465, 600, 605, 606,

665, 672); and as pointed out above, most of these wit-

nesses testified that they still frequently deliver which-

ever product is most handy, or whatever they have the

most profit in, or whichever is the slower moving, on

orders for just ‘‘Raisin Bran,’’ without asking the cus-

tomer whose product she desires.

In the face yi the use of Petitioner’s tradeanark (KB.

3, T. 737; BK. 9, T. 723), the Trial Court found that the

passing off of Respondent’s product for that of the

Petitioner was ‘‘attributable to * * * careless merechandis-

ing practices by local grocers rather than to any purpose

of material consequence * * * arising out of any conduct

of the defendant’? (F. 40, T. 122-123). Such a conclusion

was disposed of in the case of F. W. Fitch Co. v. Camille,

Inc., 106 F. (2d) 635, as follows:

“But it is urged that no wrongtul act of the de-

fendant caused a single instance of substitution or

confusion. A similar argument was presented in Wolf

Bros. & Co. v. Hamilton Brown Shoe Co., 8th Cir.

206 F. 611, 617. In disposing of this contention, this

Court said: ‘If a manufacturer or wholesale dealer

willfully puts up goods in such a way that the ulti-

mate purchaser will be deceived into buying the goods

of another, it is no defense that he does not deceive

and has no intention of deceiving the retailer to

whom he himself sells the goods. The question is

whether the defendants have or have not knowingly

put into the hands of the retail dealers means of de-

ceiving the ultimate purchaser.’ See also Reid Mur-

doch Co. v. H. P. Coffee Co., 8th Cir., 48 F. 2d 817;

New England Awl and Needle Co. v. Marlboro Awl

& Needle Co., 168 Mass. 154, 46 N. E. 386.’’ (Note:

The opinion in the New England Awl case was writ-

ten by Justice Holmes, later of the United States Su-

preme Court.)

It is clear from the foregoing that the Trial Court’s

findings that there was no confusion and no palming off

were predicated upon its erroneous conclusions of law

that it was impossible for ‘‘Raisin-BRAN”’ to acquire a

secondary meaning, and its finding that no secondary

meaning had been established, and it is submitted that the

Kighth Cireuit Court of Appeals erred when it held that

such findings were binding upon the Appellate Court (T.,

Vol. VI, pp. 8-9).

12. The Trial Court erred when it found that there

was no likelihood of confusion and palming off of Re-

spondent’s goods for those of the Petitioner; and the

Eighth Circuit Court of Appeals erred when it concluded

that such findings were binding upon the Appellate Court.

As pointed out above, there was positive proof of

confusion and of palming off of Respondent’s product for

that of the Petitioner. This in itself is the most persua-

sive evidence one could find of the likelihood of confusion

and palming off. E. W. Fitch Co. v. Camille, Ine., 8th C.

C. A., 106 F. 2d 635, 640. See also Gebron, Inc. v. Gebron

Cleaners, 45 F. S. 150, 155.

Where the evidence shows that it was apparently the

effort of the neweomer in a competitive field to create

points of similarity betwen the newcomer’s designation

and label and that of the owner of an established trade-

mark, rather than to create outstanding points of differ-

ence, the Courts assume as a matter of law that confusion

and palming off will naturally result from such behavior,

and that such was the neweomer’s intention. Guggenheim

v. Cantrell & Cochrane, C. C. A., D. C., 10 F. 2d 895, 896;

Helmet Co. v. Wm. Wrigley, Jr.. Co., 245 F. 824-830;

Coca Cola Co. v. Cleo Syrup Corp. 48 FB. S. 565, 139 F.

2d 416.

Evidence of Respondent’s Intention to Deceive

The product which Respondent introduced on_ the

market in competition with Petitioner’s Raisin Bran, was

composed of a breakfast food cereal which it designated

“40% Bran Flakes’? (T. 496). The Respondent had spent

$14,000,000.00 advertising this product as ‘40% Bran

Flakes”? (T. 497). Mr. Eldrege, Vice President of the

Respondent, named the new product ‘Raisin Bran’? (T.

496), although he admitted that ‘40% Bran Flakes With

Raisins’? would have been an apt designation for the

product (T. 497).

Prior to April 1942, the Respondent had marketed its

“40% Bran Flakes’? in red and brown colored packages

(E. 100-A to Q, T. 715); but the Respondent made the

color and design of its product to which it applied the

designation ‘‘Raisin Bran’’ so that it was more like the

Petitioner’s package than Respondent’s old ‘40% Bran

Flakes’? package; and as pointed out above, the Respond-

ent chose a color similar to a color which is conspic-

uous on Petitioner’s package, and emphasized the words

‘Raisin Bran’? (A. 9). In its advertising Respondent also

emphasized the words “Raisin Bran’? (4. 53, T. 516-

518).

Before Respondent decided to enter into competition

with Petitioner’s product, it obtained reports showing

the amount of business done by Petitioner in ‘*Raisin-

BRAN” (T. 496) and knew that the great volume of

Petitioner’s business was in the south (T. 504, 505) and

Respondent limited its sales and intensive advertising to

the territory where Respondent had done its greatest vol-

ume of business (‘T. 500-001), and started its sales pro-

motion with a two-cent sale of its new product (T. 920-

524; KB. 50, 51-A to W, 52-\ to M, 538, T. 515-517).

With the foregoing uneontradicted evidence in the

record, the Trial Court coneluded ‘It is acknowledged,

and found to be a fact, that the defendant entered the

field deliberately, and after careful study of existing mar-

keting conditions, entered actively into the plaintiff’s

most profitable territory in the southern states. It adver-

tised extensively by radio and otherwise recommended its

product as ‘Post’s Raisin Bran’ ’’ (52 F. 8. 400).

Erroneous Conclusions of Trial Court

The Trial Court further said, ‘‘That the defendants

may profit, that they even formally desired and planned

to profit, from the advertising of the plaintiff’s product

through many years, especially in the south, seems prob-

able. But that is held not to be objectionable’’ (52 F.S.

452). ‘Certainly there is an utter failure to establish any

design or intention on the part of the defendant to that

end’’ (confusion and palming off) (52 F. S. 401).

Predicated upon the foregoing conclusions and the

conclusions that ‘‘Raisin-BRAN’’ could not acquire a

secondary meaning and was open to use by the Respond-

ent, the Court then found, ‘‘There is no probability of

any ordinary cautious member of the public, using reason-

able care and attention in purchasing, being deceived

into believing that in purchasing a General Foods Cor-

poration earton containing said product, he was purchas-

ing the product marketed by the plaintiff because of any

similarities between the cartons used by plaintiff and by

General Foods Corporation in packing their respective

products.

* ¥

This specifie finding is premised partly

upon the Court’s own factual conclusion, based upon fre-

quent, long, and careful examination of specimens of the

actual packages, and partly upon the testimony of people

incident to the marketing of the three similar products’’

(F. 39, T. 122).

The Court’s ‘‘long and careful examination’’ of the

cartons was not the right way to determine whether or

not there is likelihood of confusion. To determine whether

or not a customer is likely to be confused, the Court must

view the packages under the usual conditions prevailing

in the trade which would confront the casual, unthinking,

unintelligent and unwary purchaser; Queen Mfg. Co. v.

Isaac Ginsburg & Bros., 8th C. C. A., 258 F. 2d 284, 287;

F. W. Fitch Co. v. Camille, Inc., 8th C. C. A., 106 F. 2d

635; and the packages should not be placed side by side

to see if differences can be observed. Reid Murdoch &

Co. v. H. J. Coffee Co., 8th C. C. A., 48 F. 2d 817. The

Court should look to see if there are points of similarity

in important features of the label which are likely to con-

fuse the unwary purchaser. P’echeur Lozenge Co, v. Na-

tional Candy Co., 122 F. 2d 318, 820.

The ‘testimony of people incident to the marketing

of the three similar products’? to which the Court refers

in its Finding 39, supra, was evidence of various wit-

nesses who, when presented with the packages one after

another or side by side, testified that they would not be

confused (A. 13). This is not competent evidence to as-

certain whether or not there is likelihood of confusion and

palming off. Reid Murdoch & Co. v. H. J. Coffee Co.,

supra.

The Trial Court concluded its discussion of its finding

that there was no likelihood of confusion and palming off

by saying that this likelihood is now remote because the

General Food and Kellogg products bearing the infring-

ing designations ‘‘were respectively introduced by accom-

panying intensive advertising campaigns, with the con-

sequence that knowledge of their existence was spread

quickly among wholesale and retail grocers and the pub-

lic * * * in the localities where General Foods’ * ne

and Kellogg’s products were introduced * * * and ulti-

mate consumers

the competition * * * and to designate the brand which

they preferred’? (52 F. S. 451). This is but another way

of saying that if an infringer is powerful enough to put

* came quite early to understand

on a sudden smashing drive of advertising and sales pro-

motion which will quickly destroy a long established and

valuable secondary meaning of a competitor’s trade-mark,

and change the public understanding with respect thereto

by devastating radio and newspaper campaigns, the situa-

tion presents no such likelihood of confusion and palming

off as to justify the charge of infringement.

The rights of parties in cases such as this must be

measured as of the time just preceding the advent of the

infringing practices. Unless the injured party acquiesced

in the infringement or slept upon his rights, he cannot

be deprived of them by a blitz of the wrongdoer.

It is submitted that the Trial Court clearly erred

when it found that there was no likelihood of confusion

and palming off of Respondent’s goods for those of the

Petitioner by reason of Respondent’s acts of appropria-

tion of Petitioner’s trade-mark and simulation of its

label, and it is further submitted that the Kighth Cir-

euit Court of Appeals erred when it concluded that it

was bound by such finding (T. VI, p. 10).

13. The Trial Court erred when it concluded that

the equities in this case are in favor of the Respondent

and against the Petitioner; and the Eighth Circuit Court

of Appeals erred when it affirmed such an opinion.

There is absolutely no evidence that the Petitioner

at any time, in any way, unlawfully harmed or damaged

the Kellogg Company or General Foods.

LOO

The Petitioner,—a smal] manufacturer (I, 12, T. 160)

compared to Kellogg and General Foods (KK. 120, 120A,

121, T. 721, 722),—had for seventeen years conducted

its business in a proper manner, and by industry and

the expenditure of over $600,000.00 (Ii. 11, T. 164), which

was no mean sum to it, had built up a business which

grossed $806,000.00 in the first eight months of 1942 (EK.

13, T. 165) and showed net earnings of nearly $40,000.00

for the same period (I. 19, T. 181-182). The Petitioner

enjoyed one and one-half per cent of the total cold cereal

business of the country, between three per cent and four

per cent of all the cold cereal business in the southeast

section of the country, and about eight per cent of the

cold cereal business in the southwest. It had about eight

per cent of all the bran cereal business in the country,

over twenty per cent of all the bran cereal business in

the southeast and between twenty-five and thirty per cent

of the bran cereal business in the southwest. The Peti-

tioner occupied third place among the distributors of

part bran cereals in the southeast and second place in

the southwest (T. 504; F. 17, T. 112). This business was

built about and upon Petitioner’s trade-mark ** Raisin-

BRAN”, which mark Petitioner had advertised and

treated through the entire course of its use, as the trade-

mark and brand name of its product (I. 15, } 110: X.

193-202, 209, 229-241).

At the time the Petitioner created the term ‘ Raisin-

BRAN”? standing alone and applied it to its breakfast

food product, the term had no particular meaning (pp-

31 to 33, supra). After seventeen years’ exclusive use

by the Petitioner, users of the product scattered through-

out the United States had come to learn that the Peti-

tioner’s trade-mark ‘‘Raisin-BRAN’’ stood for the Peti-

101

tioner’s particular product (pp. 69 to 69, supra), and

thousands of consumers knew the source of origin of

the product (F. 20, T. 113), and although many others

did not know and did not care from what source the

product originated, they well knew and understood that

the trade-mark ‘‘Raisin-BRAN’’? meant the particular

product which they had been accustomed to purchasing

and which they desired (pp. 65 to 69, supra).

In April 1942, the Kellogg and General Foods Com-

panies deliberately, after study of Petitioner’s business

and marketing methods and with full knowledge thereof

(F. 27, T. 115), invaded Petitioner’s best territories, ap-

propriated Petitioner’s trade-mark **Raisin-BRAN’’ (02

F. S. p. 487).

Petitioner submits that under these circumstances, it

was error for the Trial Court to say that ‘*the equities

are with the defendant and against the plaintiff’? (92

F. 8. 452). Surely the mere size of the Respondent and

their overwhelming predominance in the breakfast food

field, does not justify such a statement. Certainly the

mere fact that the trade name ‘‘Post’s’’ is well known

to the public does not justify an infringement of another’s

trade-mark.

There is no reason for any such rule, The Respond-

ent in this case, and the Kellogg Company, Respondent

in a sister case, stood by for 17 years and watched the

Petitioner plow and seed and harrow the field. No patent

monopoly barred them from entering the same field,

nothing but their doubt as to the success of the venture

held them back, they have other apt names for designat-

ing competing products. Now, when the crop is ready for

the harvest because of the foresight, the industry and the

expenditure of hundreds of thousands of dollars by a

102

small competitor, it is submitted it is not equitable for

the two largest purveyors of breakfast foods in the United

States to step in and, by infringing Petitioner’s trade-

mark, reap the harvest.

14. The Trial Court erred when it failed to grant

the Petitioner the relief prayed for; and the Eighth Cir-

cuit Court of Appeals erred when it affirmed the de-

cision and opinion of the Trial Court.

In the foregoing portions of this Brief, it has been

pointed out that the Respondent has wrongfully infringed

the Petitioner’s trade-mark, ‘‘Raisin-BRAN’’ which had

acquired a secondary meaning and which had not become

a free word at the time of the commencement of such

infringement. The evidence also shows that the Petitioner

never intentionally abandoned its claim to the exclusive

use of the term ‘*Raisin-BRAN’’ as a trade-mark for

Petitioner’s breakfast food (T. 177). The evidence also

shows that the Respondent will continue to infringe the

Petitioner’s trade-mark unless enjoined and restrained

from doing so (I. 17, T. 178-179).

Granting the Petitioner the relief which it seeks will

not deprive the Respondent of the ability to select an

appropriate name for its product (T. 497; 52 F. S. 401),

nor to design an attractive label which will in no wise

infringe upon Petitioner’s mark and label. As was said

in the case of British-American T. Co. v. British-American

CG. S. Co., 211 F. 933, 935, ‘‘to change the defendant’s

name can injure no one. To retain it may mislead the

public, confuse the trade and seriously injure complain-

ant’s business. When such an alternative presents itself

the duty of a court of equity is plain, viz. to stop the

unfair proceedings in limine. ~ * * If the defendant in-

tends to deal fairly, it can do no harm to change its name.

103

If it intends to use the name unfairly, it should be com-

pelled to change it.”’

in the Lower Court the Respondent insisted that the

purpose of the Petitioner’s suit was ‘‘protection for its

business in the product, not for its own good will,’’ and

in support of such statement cited the following: ‘*Shar-

ing in the good will of an article unprotected by patent

or trade-mark is the exercise of a right possessed by

all—in the free exercise of which the consuming public

is deeply interested.”? Kellogg Company v. National Bis-

cuit Co., 311 U.S. 111, 122. The Trial Court quoted the

foregoing extract from the ‘*Shredded Wheat’? Case with

approval and said, **The distinction seems to lie between

sharing in the good will of a product, which is lawful,

and appropriating the good will of a producer, which is

not to be tolerated’? (52 F. 8S. 452). Of course, if the

Trial Court’s conclusion that the Respondent had the

right to use the Petitioner’s mark **Raisin-BRAN’’ were

correct, the Trial Court’s conclusion on the above con-

tention of the Respondent would have been correct; but

since the Trial Court’s conclusion as to the right of

the Respondent to use Petitioner’s trade-mark ‘*Raisin-

BRAN” is in error, so also is the Trial Court’s coneclu-

sion that the purpose of this proceeding was to protect

the good will inherent in the product rather than the good

will inherent in the trade-mark.

Under the facets and law in this case, the Petitioner

is entitied to a permanent injunction as prayed. .frm-

strong Paint & Varnish Works v. Nu-Eamel Corp, 300

U. S. 315; N. AK. Fairbanks Co. v. Luckel, King & Cake

Soap Co., 102 F. 827, 331; Fuller v. Huff, W4 BF. 141;

Beneficial Industrial Loan Corp. v. Kline, 8th C. C. A,

132 F. 2d 520.

RRP SMe ay PRA Ras SM 8

104

CONCLUSION

Counsel for the Petitioner submit that when this

Court checks the references to the record, particularly

those found in Appendix Note 8 (¢), (d), (e), (g), (h),

(i), and Appendix Note 4 (e), (f), (g), (bh), Gi), and

Part 11 of the Argument (pp. 87 to 94, supra), it will ap-

pear that, in view of the erroneous Conclusions of Law

npon which the Trial Court predicated its Findings of

Kaet, and decision, as pointed out in the Argument, supra,

the Kighth Circuit Court of Appeals erred when it failed

to review the evidence and the Trial Court ’s Findings of

Fact.

Petitioner’s Counsel realize that the trial and review

of this case has imposed a substantial burden upon the

Courts. The magnitude of this task, however, Was not

due to any action of the Petitioner. The Petitioner was

the defenseless viciim of a ruthless infringement, and

when the Petitioner sought to bring the infringer to time,

every conceivable defense of fact and of law was brought

to bear, and Petitioner was compelled to meet these issues

regardless of the resulting size of record and brief,

To alleviate the matter, Counsel for the Petitioner

have made eareful research of the authorities and have

done all in their power to shorten this brief and lighten

the work of the Court, and at the same time meet all

important issues fairly. In the preparation of the Ree-

ord, Petitioner’s counsel were most careful to be as

complete and accurate and fair to the Court and to the

Respondent, as possible, and were rewarded by the fact

that the Respondent found it necessary to suggest. but

few additions to the Record, Counsel for the Petitioner

have been equally careful to be accurate and fair in their

105

statements of fact and references to the Record as such

matters appear in this brief; and in’ the discussion of

eases and extracts taken from them, have been meticulous

‘n their endeavor not to cite or quote in any manner cal-

culated to mislead; and Counsel for the Petitioner hope

and trust that such efforts will lighten the work of this

Court in the review of this case.

Counsel for the Petitioner sincerely believe that a

great injustice to the Petitioner, and to the purchasing

public, will result in an affirmance of the decision of the

Lower Court in this case, and that the matter is of Na-

tional importance, not only because of the wide-spread

use of Petitioner’s product, but also because a clarifica-

tion of the numerous issues raised is desirable in order

to insure integrity and security in commercial transactions

which will be affected by the final decision.

Respectfully submitted,

WituuaMm Rrirenir, Omaha, Nebraska,

C. Bare Hovey, Kansas City, Missouri,

Attorneys for Petitioner.

Of Counsel:

Rirente & SWENSON,

Omaha, Nebraska.

W. Ross Kine,

Omaha, Nebraska.

ata a a

106

APPENDIX NOTES

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

ness and business methods: T. 161 and 171, 186, 190-241,

242, 250-258, 258-261, 263-267, 267, 270, 282, 334, 403, 416,

430, 440, 465, 480, 718 and 720.

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

ness and business methods: T. 493-507, 516-524.

Note 3. Consumer witnesses (91):

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

to advent of competition (86). T. 287-292, 295, 302,

303, 304, 305, 308, 310, 331, 331, 338, 340, 342, 351, 352,

353, 357, 361, 362, 370, 372, 373, 380, 392, 397, 397, 399,

418, 423, 424, 425, 426, 435, 437, 439, 459, 459, 460, 461,

467, 473, 478, 479, 509, 528, 530, 534, 541, 543, S44, 545,

548, 549, 551, 580, 582, 584, 591, 593, 601, 603, 608, 611,

613, 617, 621, 630, 632, 634, 642, 644, 653, 657, 667, 669,

670, 680, 682, 684, 696, 697, 699, 712.

(b) Consumer witnesses who had not heard of or

used Petitioner’s product (5): T. 508, 529, 531, 951, 713.

BRAN’’ was a product of Skinner Manufacturing Com-

pany (34): T. 272, 289, 292, 303, 303, 304, 306, 308, 310, 332,

338, 341, 342, 351, 363, 372, 402, 424, 425, 427, 435, 439,

460, 462, 468, 546, 552, 558, 583, 585, 633, G44, 656, 658,

671.

(d) Consumers who testified there was only one

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

not know the name of such source (5): T. 331, 461, 474,

479, 631.

(e) Consumers who identified Petitioner’s package

as only one they had been accustomed to purchase (37): T.

107

973, 288, 292, 302, 303, 304, 305, 308, 310, 331, 332, 338,

342, 351, 357, 361, 362, 371, 372, 380, 393, 397, 399, 418,

425, 426, 435, 439, 459, 460, 461, 468, 473, 478, 479, 991,

688.

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

above knew that Skinner was the distributor, except (2):

T. 479, 534.

(g) Consumer witnesses who testified that when

they wished Petitioner’s product they ask for ‘‘Raisin-

BRAN”’ (17): T. 228, 304, 306, 308, 311, 361, 371, 372,

384, 393, 399, 426, 435, 440, 478, 479.

(h) Consumer witnesses who mistook Respondent’s

package for Petitioner’s (1): T. 259.

(i) Consumers who testified that mark ‘‘Raisin

Bran’’ meant Petitioner’s product (14): T. 28, 314, 361,

381, 393, 399, 408, 411, 424, 428, 487, 535, 546, 689.

Note 4. Retail grocer witnesses (61):

(a) Retail grocer witnesses who had personal service

and delivery (37): 273, 290, 293, 296, 295, 323, 327, 363,

369, 374, 414, 431, 434, 447, 449, 464, 465, 474, 937, 959,

359, 597, 599, GU4, 605, G18, 625, 624, 629, 646, 650, 655, 664,

671, 675, 691, 694.

(b) Retail grocer witnesses who had exclusively

self-service stores (15): T. 327, 374, 414, 484, 447, 464,

474, 537, 599, 604, 605, 618, 629, 650, 691.

the type of their service (9): T. 529, 347, 389, 407, 524,

532, 586, 622, 662.

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

tioner’s product (3): T. 526, 526, 527.

weighs ctor

SRN TEER EM SY

108

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

product (54): T. 273, 275, 290, 294, 297, 298, 324, 327,

330, 344, 348, 354, 355, 364, 368, 370, 375, 405, 416, 432,

434, 448, 450, 452, 464, 467, 471, 475, 525, 537, 597, 561,

587, 595, 600, 605, 607, 620, 622, 623, 629, 636, 638, 651,

653, 663, 665, 675, 693, 695 704, 706, 710.

(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 (24): T. 274, 297, 298-299, 364, 368, 369, 376, 432,

450, 452, 464, 466, 475, 560, 637, 638, 651, 656, 665, 679,

703, 706, 711.

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

fied that when their customers asked for just ‘‘Raisin-

BRAN’’, they desired Petitioner’s product (16): T. 274,

297, 364, 468, 476, 432, 466, 475, 560, 622, 656, 662, 660,

677, 703, 705.

(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”’ (20): T. 290, 297,

999, 324, 328, 364, 369, 415, 434, 464, 465, 560, GUO, 605,

606, 619, 665, 675, 692, 694.

(i) Retail grocers who testified that the mark

‘‘Raisin Bran’’? meant Petitioner’s product (31): T. 324,

398, 345, 349, 363, 364, 366, 368, 370, 375, 377, 379, 389,

389, 408, 432, 434, 445, 546, 555, 559, 561, 597, 99S, 601,

666, 666, 688, 692, 702, 705.

Note 5. Wholesale grocer witnesses (37): T 2,

975, 286, 299, 315, 319, 332, 349, 358, 365, 378, 406, 411,

109

419, 444, 445, 454, 462, 470, 507, 533, 539, 553, 592, 594

G09, 614, 627, 640, 647, 659, 678, 685, 700, 707.

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

sale and retail business (1): T. 56.

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

source of origin of Petitioner’s product (3): T. 355, 471,

D384.

before the advent of the Post and Kellogg competing

products, the term ‘‘Raisin-BRAN’’ meant Petitioner’s

product in the wholesale and retail trade (33): T. 276,

287, 300, 316, 320, 334, 350, 359, 366, 379, 407, 415, 420,

445, 446, 455, 463, 471, 508, 540, 554, 595, 610, 616, 628,

641, 648, 660, 679, 687, 702.

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. 290,

293, 303, B11, 311, 331, 372, 425, 427, 459, 461, 474, 479,

651.

(b) Retail grocers who so testified: T. 557, 561, 597.

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. 106) but the Court refused the

request of the Appellant (Par. I, T. 132), to find that at

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

110

for use upon its aforesaid product, said term, standing

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

product (Par. 1, T. 182), and predicated its refusal upon

the following: ‘‘The eyaetfhice in the case did not nega-

tive the possibiliythat 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. 1, T. 132). 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 12), k, |, and m, p. 117, 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 proof, and evidence which ren-

ders the negative probable is sufficient proof of the nega-

tive in the absence of positive 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 3890; Southern Rwy. Co. v.

Stewart, 8th C. C. A., 1941, 119 F. 2d 85; Majestic Se-

curities Corp v. Collector of Internal Revenue, 8th C. C.

A., 1941, 120 F. 2d 12; Owen v. 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”’

111

was so descriptive that it could not acquire a secondary

meaning because when the Petitioner first tried to reg-

ister its mark under the Trade Mark Act of 1909, 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. 162).

The Trial Court paid no heed to this particular ob-

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

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

Paint & Varnish Co. v. Nu-Enamel Corp., 305 U.S. 310,

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-

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 registration

was sought under the 1905 Trade Mark Act, the question

whether or not the term had aequired a secondary mean-

ing was not at issue, and those proceedings in the Patent

Office were not res judicata of the proceedings here, Pop-

ular Mechanics Co. v. Fawcett Publications, Inc, 1 FL 8.

292, 294; Trappey v. M’Ilhenny Co., 281 F. 23, cert. de-

nied, 43 8. Ct. 94, 260 U.S. 753; Gaidry v. M’Ilhenny Co.,

253 F. 613; Bisceglia Bros. v. Fruit Industries, Ltd., 20

KF. 8S. 564; In Re American Cyanide & Chemical Corp.,

99 F. 2d. 964.

Be Oe colar 2

112

Note 8. Petitioner’s trade-mark as used on its

)aisin-

TRADE MARK BRAND NAME

REG. U. S PAT OFF AND STATES

BRAN

TRADE MARK BRAND NAME

OF THIS PRODUCT WHICH 1S

(From Ptfs. Ex. 9)

Note 9. Term ‘‘Raisin Bran’’ as it appears on Re-

spondent’s package:

nas

(From Defs. Ex. 3)

113

Note 10. Newspapers in which General Foods prod-

uct was advertised by retailers as ‘‘Raisin Bran’’ or

‘‘Post’s Raisin Bran’’ with the word ‘‘Post’s’’ small and

inconspicuous:

5-12-42

5-29-49

6-12-42

8-28-42

§-22-42

Reynolds ood Store, Texarkana, Arkansas, ad-

vertised “One Pkg. Post’s Grape-Nut Flakes

and one Pkg. Raisin Bran, both for 12¢.”’ The

“Raisin Bran’? advertised was the General

Foods product (Pts. Ex. 88-P, T. 481).

Lofton’s at Fort Smith, Arkansas, advertised

‘Raisin Bran, pkg. 8¢.7? The ‘Raisin Bran’’

thus adv ertised was the General Foods product

(Ptfs. Ex. 88-Q, T. 481, 482).

Gilchrist’s Food Store, Fort Smith, Arkansas,

advertised ‘‘Post’s Grape-Nut Flakes and pack-

age Raisin Bran, both for 18¢,”’ and Lofton’s

Store, Fort Smith, Arkansas, adv ertised ‘* Raisin

Bran, pkg. 7%¢.’’ The product advertised by

both of these stores as ‘‘Raisin Bran”? by the

General Foods product (Ptfs. Ex. 88-R, T. 485).

Lofton’s Store, Fort Smith, Arkansas, adver-

tised ‘*Raisin Bran pkg. 9¢.’’ Product thus ad-

vertised was General Foods product (Ptfs. Ex.

88-S, T. 482, 485).

Model Food Market, Little Rock, Arkansas, ad-

vertised ‘Raisin Bran,’’ 2 pkgs. 23¢.’? Product

thus advertised was General Foods product

(Ptfs. Ex. 88-T, T. 483, 484).

Strickland’s Super Store, Little Rock, Arkansas,

advertised ‘Raisin Bran, per pkg. 7¢.’? The

product advertised was the General Foods prod-

uct (Pts. Ex. 88-M, T. 477).

Stacy’s Store, Little Rock, Arkansas, advertised

‘‘Post’s Bran Flakes, 10¢ a package and Raisin

Bran free, for 10¢.’? The product advertised

‘Raisin Bran free’? was the General Foods

product (Ptfs. Ex. 88-O, 'T. 480, 481).

5-28-42

7-10-42

7-11-42

114

The E-%Z Self-Service Store, Frederick, Okla-

homa, advertised ‘‘ Raisin Bran, regular 12¢ box,

6.¢?? The product thus advertised was General

Foods product (Ptfs. Ex. 66-E-1, T. 281).

Piggly-Wiggly Stores, Lubbock, Texas, adver-

tised ‘‘Grape-Nut Flakes and Raisin Bran, 11-

oz. pkgs., both for 12¢.’’ The product advertised

as ‘‘Raisin Bran’? was the General Foods prod-

uct (Ptfs. Ex. N-1, T. 284).

Carl’s Cash Grocery, Lubbock, Texas, advertised

‘‘Grape-Nut Flakes and Raisin Bran, 2 pack-

ages 12¢.’’ The product advertised as ‘Raisin

Bran’? was the General Foods product (Pttfs.

Ex. O-1, T. 284).

Ideal Food Market, Pampa, Texas, advertised

‘1 package Raisin Bran, 1 package Grape-Nut

Flakes, 25¢ value, all for 11¢.’’? The product

advertised as ‘‘Raisin Bran’’ was the General

Foods product (Ptfs. Ex. P-1, T. 284).

McCartt Super Market, Pampa, Texas, adver-

tised ‘‘Raisin Bran, 1 box Post’s Grape-Nut

Flakes, free, 10¢.’’ The product advertised as

‘Raisin Bran’? was the General Foods product

(Ptfs. Ex. Q-1, T. 284).

The Furr Food Super Markets, Amarillo, Texas,

advertised ‘‘1 package Raisin Bran, 1 package

Grape-Nut Flakes, 2 for 11¢.’? The product ad-

vertised as ‘‘Raisin Bran’? was the General

Foods product (Ptfs. Ex. R-1, S-1, T. 284).

No Date

593-49

Aug. 742

7-31-42

6-9-42

5-29-42

115

Carl’s Cash Market, Tucumeari, New Mexico,

advertised by handbill ‘‘Grape-Nut Flakes and

Raisin Bran, 2 packages 12¢.’’? Product adver-

tised as ‘‘Raisin Bran’? was the General Foods

product (Ptfs. Ex. T-1, T. 284, 285).

Furr Food Store, Dumas, Texas, advertised

‘Raisin Bran and 1 package Grape-Nut Flakes,

all for 11¢.’? The product advertised as ‘* Raisin

Bran’? was the General Foods product (Ptfs.

Ex. U-1, T. 285). Exs. LL-1 and J-1 show sim-

ilar types of advertising which indicates that

the General Foods product was being advertised

as just ‘‘Raisin Bran.’’

Cireular of Q-P Stores, Houston, Texas, adver-

tised ‘Raisin Bran’? with word ‘‘Post’s’’ in

small letters (Ptfs. Ex. 57, T. 264-265). These

stores operate in numerous towns in Texas.

Market Basket Stores, Houston, Texas, listed

‘‘Raisin Bran, package 11¢”’ with word ‘‘ Post’s”’

in very small letters (Ptfs. Ex. 58, T. 260).

Houston Kash-way Stores, Houston, Texas, ad-

vertised product as ‘Raisin Bran’? in large let-

ters with word ‘‘Post’s’’ in small letters (Ptfs.

Ex. 60, T. 269).

Newspaper advertisement, Ingle Grocery, Cor-

pus Christi, Texas, advertising product as

‘(Raisin Bran’? in large letters with word

‘¢Post’s’”’ in small letters (Ptfs. Ex. 61, T. 269).

Exs. B. C, D, E and F show similar advertise-

ments circulated in New Orleans, La., in which

the General Foods product is advertised as just

‘‘Raisin Bran’’ (T. 417, 418) vide:

Ex. B, circular: ‘‘Grape Nuts and Raisin Bran,

Special both for 15¢.”’

dx. C, handbill: “Grape Nut Flakes and Raisin

Bran both for 12¢.’’

116

6-3-42 Ex. D, circular: ‘‘Buy 1 box Post’s Bran Flakes,

1-Ib. box Raisin Bran—worth 24¢, all for 12¢.”’

61-42 Ex. KE, cireular: ‘‘1 package New Raisin Bran,

2¢ when you buy 1 package Grape Nut Flakes,

10¢.”’

5-30-42 Ex. F, cireular: ‘‘1 box Grape Nut Flakes,

FREE with Raisin Bran, box tH4¢.’’

Note 11. The testimony of witnesses who said they

were not confused or would not be confused: T. 307, 309,

314, 329, 533, 535, 537, 551, 584, 670.

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. 274, 309, 321,

327, 352, 360, 363, 365, 369, 372, 374, 476, 545, 548, 549,

550, 554, 556, 560, 583, 585, 589, 593, 598, 603, 604, 619,

622, 625, 630, 632, 634, 635, 638, 643, 654, 656, 663, 668,

689, 692, 695, 698, 700, 711.

(b) Witnesses listed in (2) who gave their evidence

with the Kellogg and General Foods competing products

in mind: T. 274, 360, 476, 545, 549, 554, 556, 560, 585, 989,

593, 604, 615, 622, 625, 630, 632, 634, 635, 638, 643, 656,

663, 668, 689, 692, 695, 700, 711.

eral Foods and Kellogg competing products, ‘*Raisin

Bran’’ meant Petitioner’s product: T. $27, 328, 46s, 370,

374, 382, 389, 424, 536, 545, 554, 560, 998, 635, 638, 689,

692.

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

questions: T. 309, 360, 369, 615, 634, 656, 668, 690.

117

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

acquaintance with Petitioner’s product: T. 363, 549, 990,

603, 654.

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

tionary definitions: T. 274, 321, 372, 374, 545, 583, 58d

589, 593, 615, 622, 625, 634, 635, 638, 648, 654, 656, 663,

664, 668, 689, 695, 700, 711.

(g) Consumer and retailer witnesses who answered

that ‘‘raisin bran’’ does not mean a particular producer:

Consumers: T. 353, 546, 556, 651, 638.

Retail Grocers: T. 481, 625

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

that before competition they understood ‘Raisin Bran’’

meant the Petitioner’s product:

Consum

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