The opinion of the court was delivered by: GALSTON
This action was brought by a manufacturer of candies, for the infringement of its trade-mark "Trumps." The mark was registered in the United States Patent Office under registration No. 140,938 on March 29, 1921, and under registration No. 152,874 on March 7, 1922. The defendant is also charged with unfair competition.
The defendant admits the use of the word "Trumps" in connection with the manufacture and sale of cookies, which it designates as "Sunshine Trumps Cookies," but denies that such use is an infringement of the plaintiff's trade-mark; and it also denies that it has committed any acts of unfair competition.
The plaintiff is a manufacturer of five-cent candies and bulk candies, and has not manufactured in its long existence anything but candy. It adopted and used "Trumps" as a trade-mark for its candy in May, 1921. Its candy is sold in cartons containing 24 five-cent packages. It is interesting to note that the sales in 1921 were 27,000 boxes, and then for a time fell off as follows: 1922 -- 24,000; 1923 -- 14,690; 1924 -- 3.965; 1925 -- 1069; 1926 -- only 860. Then they increased in 1927 -- 3,848; 1928 -- 12,943; 1929 -- 12,107. Then followed a marked decline in 1930 -- 2,285; 1931 -- 1,275; 1932 to date 918.
The defendant first used the word "Trumps" in 1926, in connection with ginger snaps sold in bulk, to which a small label was attached. All of the products of the defendant are sold with the name "Sunshine," and have been so sold and advertised since 1908. The defendant expends a very considerable sum of money annually in advertising its products, approximately three-quarters of a million dollars a year. In 1929 it began using the word "Trumps" on its present products.
The fundamental question presented by this record is whether the trade-mark "Trumps," used by the plaintiff solely as a trade-mark for candies, is infringed by the defendant's use of "Trumps" for its cookies. There is ample authority to cover a situation of this kind.
It may be stated at the outset that the record is barren of any suggestion or of anything on which a conclusion can be based that the defendant is palming off its goods as those of the plaintiff. It is impossible to see how any purchaser could be deceived, by the packabe or label of the defendant, into believing that he was getting the plaintiff's product. This is readily determined by a comparison of its package of "Sunshine Trumps Cookies" with Plaintiff's Exhibit 8, "Mason's Trumps." None of the three samples of defendant's products attached to plaintiff's interrogatories, designated A, B, and C, has the slightest resemblance to the plaintiff's package. So I shall eliminate from further consideration any suggestion of unfair competition.
Coming now to the question of the alleged infringement of the technical trade-mark: The registration No. 140,938 is for nut candy; the later registration No. 152,874 of March 7, 1922, is for candies.
The inquiry suggested is whether by any reasonable extension of its business over these many years the plaintiff's rights should be broadened so as to prohibit the defendant from using the same name for such a totally different class of article as cookies or ginger snaps. Had the plaintiff ever been a manufacturer of cookies or biscuits or allied foods, the question presented would be quite different; but in the circumstances, I think that the rights of the plaintiff must be measured by its own narrow use.
In American Steel Foundries v. Robertson, 269 U.S. 372, 46 S. Ct. 160, 162, 70 L. Ed. 317, it was said: "The mere fact that one person has adopted and used a trade-mark on his goods does not prevent the adoption and use of the same trade-mark by others on article of a different description. There is no property in a trade-mark apart from the business or trade in connection with which it is employed. United Drug Co. v. [Theodore] Rectanus Co., 248 U.S. 90, 97, 39 S. Ct. 48, 63 L. Ed. 141; Hanover [Star] Milling Co. v. Metcalf, 240 U.S. 403, 413, 414, 36 S. Ct. 357, 360 (60 L. Ed. 713). "The law of trade-marks is but a part of the broader law of unfair competition' (Id.), the general purpose of which is to prevent one person from passing off his goods or his business as the goods or business of another."
Under the foregoing test, certainly the defendant has invaded no field that previously was occupied by the plaintiff.The plaintiff has never lost and probably never will lose the sale of one of its five-cent candy packages as a result of the acts of the defendant. To give the plaintiff the monopoly that it seeks here would be to conclude, in defiance of the foregoing authority, that there is a property in a trade-mark apart from the business or trade in connection with which it is employed.
United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S. Ct. 48, 50, 63 L. Ed. 141, bears on the general principle. There the question arose as between two parties, one who had in good faith employed a trade-mark in one state and by its use built up a trade there, and another who had employed the same trade-mark prior thereto but had confined its use to other and remote jurisdictions. The court said: "The right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his; and it is not the subject of property except in connection with an existing business. Hanover [Star] Milling Co. v. Metcalf, 240 U.S. 403, 412-414, 36 S. Ct. 357, 60 L. Ed. 713."
Now in the instant case, even if one were prepared to grant that cookies and candies are in the same general category of foods, with the same descriptive properties -- which I may say I myself doubt -- still plaintiff's business was exclusively that of a candy manufacturer. It had no good will in any other line of manufactured goods. The case might well be different if a history of ...