Carthage Tobacco Works v. Barlow-Moore Tobacco Co.

DONAHUE, Circuit Judge

(after stating the facts as above). Upon the trial of this cause, a stipulation was filed, which, in part, reads as follows: “All twists and granulated tobaccos aré dressed and marketed for the public in practically the same form) color and shape of package as complainant and defendant are using. The sole and only issue arising on the question of infringement between the complainant and defendant being the use by defendant of the words ‘Red Leaf.’ ”

While there is some conflict in the evidence, nevertheless it appears from the record that the appellee established by a fair preponderance of the evidence that'the words “Red Leaf” are not fanciful and arbitrary, but are distinctive and descriptive of a grade, character, and quality of certain species of tobacco; that these words are commonly used and employed as descriptive of grade and quality of these several species by all tobacco raisers, dealers, and manufacturers. There is also substantial evidence tending to prove that there is a distinct variety or species of tobacco grown from-seed, in Barren and Smith counties, Tenn., in the upper Cumberland district, known as “Tennessee Red Leaf.” The appellant’s factory is located in Barren county.

It is claimed on behalf of appellant that these words cannot be descriptive of grade or quality for the reason there is no such thing as “Red Leaf” tobacco. Strictly speaking, that may be true, nevertheless it' is conclusively established by the evidence that red or red leaf is commercially used to designate a certain grade, differing in color from other grades of at least three species or varieties of tobacco grown in Tennessee, and that what is known as the Red or Red Leaf grade is recognized as of better quality and commands a higher market price than several other grades of the same tobacco. It' is therefore wholly unimportant whether the leaf is actually red or only a reddish brown, if it be known and designated in the trade as “Red Leaf.”

It is further claimed on the part of the appellant, and there is some evidence to that effect, that “Red Leaf” standing alone would have no significance in the trade, and that if an order were given to a dealer for “Red Leaf,” nothing more appearing, it would be too indefinite to fill. That, no doubt, is true, but it further appears from the evidence that it would be equally true if an order were given for' a distinct species, or variety, such as Burley, Green River, or One-Sucker to-baeeOj .without designating dark brown, red, bright, or select. Such an order would be equally as indefinite as an order for Red Leaf without designating1 “Green River,” “One-Sucker,” “Burley,” or “Tennessee Red Leaf,” yet it would hardly be claimed that “Green River,” “One-Sucker,” “Burley” or “Tennessee Red Leaf” could be appropriated as a trade-mark.

It is also claimed on the part of the appellant that even though “Red Leaf” might have some meaning in the trade to growers, dealers, and manufacturers, it has no significance whatever to the consumer. This contention is not sustained by the evidence. It appears by the excerpts from two issues of Western Tobacco Journal of Cincinnati of March 5 and 12,1923, copied into the record, that red grade of Green River leaf is quoted at $18 to $40, while dark leaf of the same tobacco is quoted from $10 to $30. A like difference in market value also applies to like grades of One-Sucker and Burley. This evidence would indicate that the consumer is very much concerned about the color of the tobacco he uses and is willing to pay a higher price for the red or bright leaf than the dark leaf of the same tobacco. This demand and willingness to pay on the part of the consumer is reflected in the wholesale market quotations, otherwise a level price would obtain for all colors of the same variety of tobacco in both wholesale and retail markets. If the ultimate consumer were not concerned as to color, the grading by color would appear to be without purpose or advantage in the trade.

Words, marks, or names which do not denote origin or ownership, but are merely descriptive and commonly and commercially known and used in the trade or business as descriptive of the quality, class, grade, or composition of the article sold, are not valid trade-marks and may not be appropriated. Columbia Mill Co. v. Alcorn, 150 U. S. 460, 463, 14 S. Ct. 151, 37 L. Ed. 1144; Rouss, Inc., v. Winchester Co. (C. C. A.) 300 F. 706, 711, and cases there cited.

Upon the question of unfair competition it clearly appears that, eliminating from the appellee’s label the words “Red Leaf,” there is no similarity whatever. The script upon the appellee’s label is wholly different and there is no resemblance whatever, “even as a picture.” Schlitz Brewing Company v. Houston Ice Co., 250 U. S. 28, 30, 39 S. Ct. 401, 63 L. Ed. 822.

The appellee having the right to use the words “Red Leaf,” it cannot now be held guilty of unfair competition because it has done so. The stipulation that all twists and granulated tobaccos are dressed and marketed for the public in practically the same form, color, and shape of package as complainant and defendant axe using, eliminates from our consideration all questions of similarity of packages in connection with the claim of unfair competition.

For the reasons stated, the judgment of the District Court is affirmed.