LaTouraine Coffee Co. v. Lorraine Coffee Co. , 157 F.2d 115 ( 1946 )

CLARK, Circuit Judge.

Plaintiff, a Massachusetts corporation doing business in New York, has brought this action to enjoin infringement of its registered trade-mark and to enjoin unfair competition. Plaintiff and its predecessor corporation have employed the name “La-Touraine” in connection with coffee, tea, and chocolate powder sold by them, beginning as to coffee in 1906, as to tea in 1918, and as to the powder in 1937. Through a broad and varied program of advertising, they have attained a position of eminence in the industry, selling some fifteen million pounds of coffee alone each year. The corporate defendant is a small New York family corporation, organized by the individual defendant in 1944 and engaged in selling coffee and tea throughout Staten Island, New York, and northern New Jersey. From a judgment of the lower court holding the trade-mark valid, but not infringed, and finding no unfair competition, plaintiff appeals.

Before considering the question of infringement, we must dispose of defendants’ very vigorous contention that plaintiff does not have a valid technical trademark in any case, because the word “Touraine” is geographical. Congress denied registration of geographical terms only in those cases where the name adopted is “merely geographical.” 15 U.S.C.A. § 85 (b). Its purpose was obviously to codify the common-law rule which prevented one manufacturer from appropriating to his own use a name so generically descriptive that it might be employed with equal propriety by others. “Could such phrases as ‘Pennsylvania wheat,’ ‘Kentucky hemp,’ ‘Virginia tobacco,’ or ‘Sea Island cotton,’ be protected as trademarks; could any one prevent all others from using them or from selling articles produced in the districts they describe under those appellations,— it would greatly embarrass trade, and secure exclusive rights to individuals in that which is the common right of many.” Delaware & H. Canal Co. v. Clark, 13 Wall. 311, 324, 80 U.S. 311, 324, 20 L.Ed. 581. See also Columbia Mill Co. v. Alcorn, 150 U.S. 460, 14 S.Ct. 151, 37 L.Ed. 1144; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365; American Wine Co. v. Kohlman, 5 Cir., 158 F. 830. The courts have consistently held, however, that, when the name is used in an “arbitrary” or fictitious sense, it may be the subject of a valid trade-mark. Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 36 S.Ct. 269, 60 L.Ed. 629 (The American Girl shoe) ; McIlhenny Co. v. Gaidry, 5 Cir., 253 F. 613 (Tabasco sauce) ; Century Distilling Co. v. Continental Distilling Corp., D.C.E.D.Pa., 23 F.Supp. 705, modified 3 Cir., 106 F.2d 486, certiorari denied 309 U.S. 662, 60 S.Ct. 581, 84 L.Ed. 1010 (Dixie Belle and Dixie Beau liquor); Fleischmann v. Schuckmann, 62 How.Prac., N.Y., 92 (Vienna bread).

This judicial construction has received legislative approbation. The Trade Mark Act of July 5, 1946, Pub.L.No.489, c. 540, 79th Cong., 2d Sess., § 2(e) (2), 15 U.S.C.A. § 1052(e) (2), effective one year hence, provides specifically that the use of geographical terms prevents registration if "when applied to the goods of the applicant” it “is primarily geographically descriptive or deceptively misdescriptive.” (Emphasis added.) And application of the established principles compels a conclusion of validity here. The word “Touraine” itself is no longer a geographical name, since the ancient French province, existing until 1789, then was incorporated in substance into the Department of Indre-et-Loire. 11 Encyc. Americana 575; 26 id. 719; 22 Encyc. Britannica, 14th Ed., 325; Century Atlas of the World, 80. And admittedly that word is not the plaintiff’s symbol. It has always used the prefix “La” as a part of its trade-mark. Moreover, its trademark registration, as well as its own certificate of incorporation, shows the combination as a single word “LaTouraine”; and this, according to its testimony, is its actual mark. True, defendants did call attention to certain instances of use otherwise. But whether these had become habitual or were mere careless misquotations, the differences noted above from the ancient French name are quite sufficient to avoid a deceptive misdescription of the goods. A. Bauer & Co. v. Siegert, 7 Cir., 120 F. 81, 84; Havana Commercial Co. v. Nichols, C.C.S.D.N.Y., 155 F. 302. The registered term neither has nor professes to have any relation to the source of its coffee, the place of manufacture, or the place of sale. It is an entirely arbitrary name. Obviously the legal principle should be employed to effectuate its purpose; it should not be made a mere contrivance to destroy an otherwise impregnable and successful trade-mark.

To establish infringement, plaintiff need show only that the name adopted by defendants is so similar to its trade-mark as to be likely to cause confusion among reasonably careful purchasers. Defendants urge that there has been no showing of actual instances of confusion; but no such evidence is required. George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 142 F.2d 536, certiorari denied 323 U.S. 756, 65 S.Ct. 90, 89 L.Ed. 606; Rice & Hutchins, Inc., v. Vera Shoe Co., 2 Cir., 290 F. 124. Small metropolitan restaurants constitute the trade of both companies in this area; and the owners of or purchasers for such establishments should not be held to a higher than usual standard of discrimination in purchasing. The only question is whether or not the similarity of names is such as to make likely the deception of any appreciable number of ordinary prudent customers.

While the trial judge, emphasizing the dissimilarity in size of the two businesses, concluded otherwise, we are constrained to think it is. As the cases cited below show, this is a question reviewable on appeal. Defendants have attempted to distinguish “Lorraine” from “LaTouraine” on the basis of the number of letters and syllables in the words, but this form of technical gymnastics is not determinative. See Celanese Corp. of America v. E. I. Du Pont De Nemours & Co., Cust. & Pat. App., 154 F.2d 143. The initial letters and the last syllables — probably the parts of any word which impress themselves most firmly upon the memory — are identical. The similarity is, of course, most striking in oral speech; a call for one in a store is likely to produce the other. Except on the tongues of precisionists, both sound alike; both are unmistakably French.

In this area of trade-mark law, each case must be considered separately and precedents are not conclusive. But examination of the cases gives some standard of similarity; and they indicate that here the degree of resemblance is rather greater than that in several cases where infringement has been found. See, for example, George W. Luft Co. v. Zande Cosmetic Co., supra (Tangee and Zande) ; Industrial Rayon Corp. v. Dutchess Underwear Corp., 2 Cir., 92 F.2d 33, certiorari denied Dutchess Underwear Corp. v. Industrial Rayon Corp., 303 U.S. 640, 58 S.Ct. 610, 82 L. Ed. 1100 (Spun-lo and Sunglo) ; Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir., 178 F. 73 (Keepclean and Sta-Kleen); Northam Warren Corp. v. Universal Cosmetic Co., 7 Cir., 18 F.2d 774 (Cuticlean and Cutex); Gehl v. Hebe Co., 7 Cir., 276 F. 271 (Hebe and Meje); National Biscuit Co. v. J. B. Carr Biscuit Co., 55 App.D.C. 146, 3 F.2d 87 (Uneeda and Eta).

As further support for its claim for injunctive relief, plaintiff urges that Eben selected the name “Lorraine” well aware of the similarity and with the express purpose of deceiving the purchasing public. On this issue the court below has found against it. Were this a controlling issue here, we should find some embarrassment in accepting these findings notwithstanding that under Federal Rules of Civil Procedure, rule 52(a), 28 U.S.C.A. following section 723C, they must stand unless clearly erroneous, for they do seem to call for a belief in Eben’s naivete which is hard to achieve. The record shows that for three years before starting his own business he was a salesman for a competitor of LaTouraine, during which time he never even heard of the name or knew there was such a brand of coffee. As Judge Learned Hand put it in a similar case, this calls for “stretching credulity beyond' its breaking point.” Ramopa Co. v. A. Gastun & Co., D.C.S.D. N.Y., 278 F. 557, 558. Further, his former employer testified under subpoena that he had even discussed plaintiff with Eben as “one of our toughest competitors.” And his own explanation of the choice of “Lorraine” was, to put it mildly, fanciful. He said that he had made this selection because he had travelled in Alsace-Lorraine and had had some minor business dealings there and because a friend had just had a baby to whom he had given the name. Actually the baby, born more than two years before, bore the name of Eve Lorraine. And there were other small discrepancies in his story.¹ As a matter of fact the court did not analyze this testimony or mention, even to repudiate, the detailed testimony of Eben’s former employer;² and we might well return the case for a discussion of this evidence and for an answer to the question how a coffee salesman could avoid all knowledge of a large competitor for three years. But, as the case stands, the-question is not of controlling importance, for when similarity is established, good faith — even if proven — is no defense. Thaddeus Davids Co. v. Davids, 233 U.S. 461, 34 S.Ct. 648, 58 L.Ed. 1046; Coty, Inc., v. Parfums De Grande Luxe, 2 Cir., 298 F. 865, certiorari denied Parfums De Grande Luxe v. Coty, Inc., 266 U.S. 609, 45 S.Ct. 94, 69 L.Ed. 466; Gehl v. Hebe Co., supra.

The Supreme Court has pointed out the law’s recognition of “the psychological function of symbols” in protecting trademarks, adding that once the owner has impregnated “the atmosphere of the market with the drawing power of a congenial symbol” then the owner can obtain redress “if another poaches upon the commercial magnetism of the symbol he has created.” Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205, 62 S.Ct. 1022, 1024, 86 L.Ed. 1381. True, the trade-mark is a species of monopoly, towards which the present climate of opinion is frigid, Standard Brands v. Smidler, 2 Cir., 151 F.2d 34, 38, though a monopoly of the words “LaTouraine-Lorraine” for the coffee-bean hardly seems world-shattering. Be that as it may, Congress has shown its continued interest in trade-mark protection by the comprehensive new codification of trade-mark law embodied in the Trade Mark Act of July 5, 1946, which not merely amplified the Act of 1905, 15 U.S.C.A. § 81 et seq., but gave to this property right a legislative standing it had not had before. Derenberg, Trade-Marks Ante Portas, 52 Yale L.J. 829, 830. We should hesitate to go against so clearly expressed a legislative intent for only some remote fears of our own of social disaster to result from grant of the statutory protection. The new statute affords relief for a “colorable imitation” where use is “likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods,” § 32(1) (a), Act of July 5, 1946; and all the courts and judges hearing the Misha-waka case were agreed as to the need of at least injunctive relief to avoid confusion. Thus the dissenting justices say, 316 U.S. 203, 208, 62 S.Ct. 1022, 1025, 86 L.Ed. 1381: “In any event, the economic rivalry, if it existed at all, was so remote and indirect that an injunction alone would seem to have afforded ample relief against the infringement, found by both courts below to have been without fraudulent intent.” (Emphasis added.)

Here the only question involved is that of injunctive relief. The District Judge seems to have been greatly impressed by the defendant’s small size, business-wise; he refers several times to this or to the plaintiff’s “large” or “flourishing” business and the lack of a showing of sufficient grounds to put defendant Eben “out of business” or to prevent him “from doing business.” Even so, one cannot ride upon another’s coattails in the inevitable process of becoming bigger; and, at least as the law now stands, one cannot grow through use of another’s congenial symbol. And there is no question of destroying a business; here defendant had chosen a name, on his own story as a flight of fancy without connection with himself, his family, or the coffee trade, and had used it at the utmost for some six months when he was warned of the consequences. We think under the circumstances that imagination can soon suggest a worthy substitute.

The judgment is reversed and the action is remanded for the award of injunctive relief.

1 Such as the original assertion that the girl’s father was joining him in the new business, which he later modified to the claim that for a few months the father purchased coffee from him for resale. This person was not produced as a witness, because he was said to be suffering from “grippe” or a “severe cold.”

2 The findings were not filed until sometime after the memorandum of opinion— a practice often criticized. United States v. Forness, 2 Cir., 125 F.2d 928, 942, 943, certiorari denied City of Salamanca v. United States, 316 U.S. 694, 62 S.Ct. 1293, 86 L.Ed. 1764; City of New York v. McLain Lines, 2 Cir., 147 F.2d 393, 395; United States v. Crescent Amusement Co., 323 U.S. 173, 185, 65 S.Ct. 254, 89 L.Ed. 160. The trial court’s preoccupation with the relative magnitude of the businesses is noted below.