NEW ENGLAND CONFECTIONERY CO. v. NATIONAL WAFER CO., 224 F. 344

ALDRICH, District Judge.

We think the District Court was right in basing its determinations upon the single question whether the complainant’s trade-mark, consisting of the coined word, “Neceo,” was infringed by the defendant’s use of its trade-mark, “Nawaco.” The original bill put in issue that question only, and in its praye'rs for relief the complainant asked, among other things, for an injunction against the National Wafer Company, restraining it from using its trade-mark, “Nawaco,” upon the ground that the name was so near that of “Neceo” that it should be treated as a copy, or at least as a colorable imitation.

Evidence was taken under issues joined upon such a theory of the complainant’s case; the cause was argued upon the merits; there was a decision adverse to the complainant through an opinion handed down by the District Court August 27, 1914.

Nearly a month thereafter, the complainant moved for a rehearing and for leave to amend its bill, by describing certain other trade-marks, under which it was claimed that the trade-mark designs, described by these certificates, among other things, embraced certain settings, like a circle with upper and lower fields, separated from a central field by double curved lines, as shown.

The object of this amendment was, of course, to enlarge the scope of the issues, and to make the case more one of unfair competition than of trade-mark infringement, pure .and simple, and yet there was no allegation that the trade-mark described as “Neceo Sweets,” which was the trade-mark of the proposed amendment, and one having a setting in'the fields to which we have referred, had been infringed. The fourth assignment- of error is directed against the refusal of the District Court to allow this amendment.

The question, whether the amendment should be allowed at such a stage of the proceedings was doubtless one of discretion, and, if it were open to- revision here, we should quite likely take the view that the discretion was properly exercised.

Holding this view as to the single issue involved, we have only to consider the question whether “Nawaco” should be accepted as identical with the word “Neceo,” and, if not identical, whether it is so near like it as to be in colorable imitation, and therefore to be accepted as a name used in infringement of the complainant’s rights under its trade-mark based upon the coined woTd “Neceo:” We do not think it was either. The words “Neceo” and “Nawaco” are not identical nor colorably the same.

On the contrary, we think they are so far different in sound and looks as to be easily “distinguishable by the ordinary observer.” It must be borne in mind that the trade-mark under which relief is sought was the coined word “Neceo,” as shown in the fac- simile which is annexed to the application for registration, and in the declaration, accompanying the statement of the trade-marks sought to be established it is said that no other has the right to use said trade-mark. either in the identical form or in any such near resemblance thereto as might be calculated to deceive.

Having seen that the word “Nawaco” is neither identical nor in color-able imitation, when tested by the eye or by the ear, without expressly defining what weight the setting of the words “Neceo” and “Nawaco” upon the labels, in commercial use, should have in a strictly trade-name or trade-mark case, we see nothing in the type, or the labels, which reasonably brings the word “Nawaco,” with its commercial setting, into such similitude with the word “Neceo,” and its setting, as used by the complainant, as to make it a label or mark calculated to deceive the purchasing public.

Judge Dodge, in his opinion, particularly differentiates the characteristics of the two words and the different labels, and we see no occasion to enlarge the discussion upon that phase of the case. We do not look upon the testimony of witnesses sent out by the complainant to call for “Neceo,” to whom iti some instances “Nawaco” was passed out by the tradesman, as at all conclusive.

The witnesses were not deceived, and the testimony bears more upon the fair dealing of the shopkeepers than upon the question as to whether the purchasing public would be misled into buying something different from what they called for. While Mr. Justice Brewer’s reasoning in the case of Lorillard v. Peper, 86 Fed. 956, 960, 30 C. C.

A. 496, had reference to instances where the purchasers -were actually misled, it applies with still greater weight to testimony of witnesses who are sent out to see what the storekeepers would pass out when they called for “Neceo.” We do not think we are required to review the various trade-name and trade-mark cases referred to by Judge Dodge, and by counsel, as authorities supposed to have some bearing by way of analogy upon the issue here, béeause wc think the case is plainly against the complainant upon the face of the names and their settings.

While there might be differences of opinion on the question of colorable imitation, and while in isolated instances members of the public might possibly be misled, evidence which comes through an inspection of the names, the labels, and the packages is of great weight, if not controlling, with the court having the responsibility to decide. Lorillard Co. v. Peper, 86 Fed. 956, 960, 30 C. C. A. 496. The decree of the District Court: is affirmed, with costs of this court.