Griggs-Cooper Co. v. U. S. Print. & Lith. Co.

This case is here on appeal from a decree of the court of common pleas granting a permanent injunction enjoining the publishing or selling of labels for grocery commodities sold by plaintiff, on which labels the word "Home" appears. A motion was presented here by the defendant to suspend the order of injunction of the court of common pleas. The presentation of the motion and the consideration thereof required an examination of the merits of the case. The law question is presented by the pleadings.

The petition avers that plaintiff is engaged in the business of manufacturing wholesale groceries and other like goods, wares, and merchandise, and selling the same in the various states of the United States; that prior to 1893, as a partnership, and since then as a corporation, it adopted, used and owned, and at this time uses and owns the trade-mark "Home Brand" for various descriptions of groceries, goods, wares, and merchandise, sold by it; and that it applied such trademark to such goods, wares and merchandise. It charges the defendant company with printing and selling labels, in which the word "Home" appears, for all kinds of commodities, sold by manufacturing and wholesale grocers of goods similar to the goods of the plaintiff, and asserts that the use of the word "Home" upon said labels, so printed, makes them sufficiently similar to plaintiff's brand as to lead to confusion and mistake, and constitutes an infringement upon plaintiff's right and property in said trade-mark, and that the trade-mark is registered in the United States Patent Office for the several commodities dealt in by it.

If the labels printed and sold by defendant constitute such an infringement, plaintiffs are entitled to protection under the law and the Trade-Mark Act of 1905, Section 16 (Title 15, Section 96, U.S. Code).

Were this a case of first impression, this court would be constrained to hold that the word "Home" was a generic term, and, as such, could not be appropriated as a trade-mark, because of a too general and comprehensive meaning to become the monopoly of an individual in application to merchandise. However, the use of the very word "Home" as a trade-mark has been many times before the courts, particularly the federal courts, which have uniformly held the word "Home" not to be generic in its nature, and have upheld trademarks the essential word of which was "Home." New Home Sewing Machine Co. v. Bloomingdale (C.C.), 59 F., 284; Griggs, Cooper Co. v. Erie Preserving Co. (C.C.), 131 F., 359; Griggs, Cooper Co. v. Federal Coffee Mills Co.,46 App. D.C., 317; Saxlehner v. Eisner Mendelson Co.,179 U.S. 19, 33, 21 S. Ct., 7, 45 L. Ed., 60.

The question was made by the defendant that if plaintiff was entitled to an injunction it should be limited to those states in which plaintiff shows that it has established the right by trade, and should not be extended to all the states of the United States.

In Hopkins on Trade-Marks, Trade-Names, and Unfair Competition (4th Ed.), Section 14, in discussing the question of territorial limitation, the author says:

"Subject to the doctrine of the ``Tea Rose' Case, it has always been recognized that, unlike a patent, a trade-mark knows no territorial limitation. The right to a trade-mark cannot be ``limited to any place, city or state and therefore must be deemed to extend everywhere.' The fact that a corporation owning a trade-mark fails to comply with the foreign corporation law of a state is no justification for infringement by another within such state, and, more broadly stated, the fact that complainant has not up to this time (i.e., of the suit) extended its trade to the locality occupied by the respondent, is no defense to the charge of trade-mark infringement" — citing the cases of Kidd v.Johnson, 100 U.S. 617, 25 L. Ed., 769; Consolidated Ice Co. v. Hygeia Distilled Water Co., 151 F., 10, 12, 80 C.C.A., 506; Hygeia Distilled Water Co. v.Consolidated Ice Co. (C.C.), 144 F., 139, 142.

In the case of Saxlehner v. Eisner Mendelson Co., supra, the court held that the acquisition of a valid trade-mark in any place carries with it the right to use the mark everywhere.

As above stated, while this court would have grave doubt as to the exclusive use of the word "Home" in a trade-mark, we bow to the very great weight of authority and find the equities in favor of the plaintiff. A perpetual injunction will be granted, as prayed for. The motion to suspend the injunction granted below is overruled.

Injunction allowed.

BUCHWALTER, P.J., and CUSHING, J., concur.