PILLSBURY et al. v. PILLSBURY WASHBURN FLOUR MILLS CO., Limited, 64 F. 841

JENKINS, Circuit Judge, after statement of the case, delivered the opinion of the court. The right of appellees to relief is not rested upon any notion of light to or property in a technical trade-mark, hut upon principles applied by courts of equity in cases analogous to cases of trademarks, where the relief is afforded upon the ground of fraud, which in Turn rests upon the hypothesis that the party proceeded against had deliberately sought to deceive the public, and to defraud another by palming off his own goods as the goods of that other.

The general principles by which courts are guided in such cases are well and 'correctly slated in Cement Co. v. Le Page, 147 Mass. 206, 208, 17 N. E. 304, as follows; “A person cannot make a trade-mark of his own name, and thus debar another having the same name from using it in his business, if he (toes so honestly, and without any intention to appropriate wrongfully the good will oí a business already established by others of the name.

Every one has the absolute right to use his own name honestly in his own business for the irarpose of advertising it, even though he may thereby incidentally interfere wbh and injure the business of another having the name. In such ease the inconvenience or loss to which those having a common right to it are subjected is damnum absque injuria. But although he may thus u»se his name, he cannot resort to any artifice or do any act calculated to mislead the public as to the identity of the business firm or establishment, or of the

article produced by them, and thus produce injury to the other heyond that which results from the similarity of name.” The principle there announced is sustained by high authority. Croft v. Day, 7 Beav. 84; Holloway v. Holloway, 13 Beav. 209; Wotherspoon v. Currie, D. R. 5 H. L. 508; Thompson v. Montgomery, 41 Ch. Div. 35; Howard v. Henriques, 3 Sandf. 725; Meneely v. Moneely, 62 N. Y. 427; Lawrence Manufg Co. v. Tennessee Manuf’g Co., 138 U. S. 537, 11 Sup. Ct. 336; Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625; Coats v. Thread Co., 149 U. S. 562, 13 Sup. Ct. 966.

We have had occasion to consider the subject in Meyer v. Medicine Co., 18 17. S. App. -, 7 C. C. A. 558, 58 Fed. 884, and there asserted the doctrine as follows: “AVhile the right of no one can he aonied to employ his name in connection with his business, or in connection with articles of his own production, so as to show the business or product to be his, yet he should not be allowed to designate his

article by his own name in such a way as to cause it to be mistaken for the manufacture or goods of another already on the market under the same or a similar name. Whether it' be bife na ,o, or some other possession, every one, by the familiar maxim, must so use his own as not to injure the possession or right of another.” Tbe point is settled.

Disguise is tbe principle. “No one bas a right to dress himself in colors or adopt or bear symbols to wbicb be bas no peculiar or exclusive right, and thereby personate another person, for tbe purpose of inducing tbe public to suppose either that be is that person, or that be is connected with and selling tbe manufacture of such person, while in reality be is selling bis own.” Croft v. Day, supra. Disguise defeats the very end and object of legitimate competition, wbicb is tbe free choice of tbe public.

One may not legally use means, whether marks or other indicia, or even bis own name, with tbe purpose and to tbe end of selling bis goods as tbe goods of another. If such means tend to attract to bimself tbe trade that would have bowed to tbe person previously accustomed to use them, their use will be restrained by tbe law.

The question is therefore resolved into one of fact upon tbe evidence spread upon tbe record whether tbe means here employed expose tbe unwary to mistake one man’s goods for tbe goods of another; whether they tend to divert from the appellee and attract to the appellants tbe legitimate trade that belongs to tbe former; and whether tbe use of tbe name of L. F. Pillsbury, as it is here employed, is not a fraud upon the rights of tbe appellee.

It is without doubt true that flour brands are numerous, and the general shape and style are necessarily similar, because tbe packages wbicb contain tbe flour are necessarily of like shape and character.

But tbe question is not whether there is a general similarity of tbe brands in form necessitated by tire general similarity in the shape of tbe packages wbicb contain flour, but whether here is such marked simulation, and such conduct upon the part of tbe appellants in tbe marketing and sale of their goods, that lead to tbe conviction that they deliberately and fraudulently sought to impose upon tbe public, and to palm off their own goods as the manufactured product of tbe appellee. We are constrained to tbe conclusion that they have so done.

Considering first tbe two brands in question, there appears, we think, a studied attempt to simulate the brand of tbe appellee, and a studied design to incorporate in tbe brand of tbe appellants such differences only as shall, upon close investigation, serve to distinguish it from tbe brand óf tbe appellee, wbicb differences would not be observed by the ordinary purchaser. The differences strike us as merely colorable; distinguishable upon comparison of the two brands, but not so to the eye of the purchaser without opportunity of comparison.

The color of the sacks and of the letters in the two brands are the same, and the corresponding- letters are printed in ink of the same color. The word ‘‘Best,” in mk, is prominently displayed, and in substantially the same arrangement in the brand. In the one, the letters in the word “Best” are solid, in the other, with a diamond center. In the one, the letters “XXXX” are above and, in the other, below the word “Best.” In the one, “Minnesota” is substituted for “Minneapolis, Minn.” in the other.

The circle in the one, surrounding the brand, is composed of three lines of blue dots, and the other is of but two lines. The name “Pillsbury” is similarly arranged, at the top, within the circle, and on each side of the brand; and “Pillsbury’s Best” appears in ink below the circle, the only difference being that in the simulated brand the initials “L. F.” are prefixed. But these differences are not such as would attract the attention of the ordinary purchaser, the two devices being otherwise alike in detail and general effect. The question, however, is of resemblances, not differences.

A test which applies only after the deviations have been pointed out favors the counterfeit. We think it clear beyond reasonable doubt that the simulation is such as to deceive the ordinary purchaser desiring to* buy tbe Hour of the appellee into purchasing the Hour thus put upon the market by the appellants. We must remember, in considering this and like cases, that the purchaser of goods, with respect to brands by which the goods are designated, is not bound to exercise a high degree of care. A specific

article of approved excellence comes to be known by certain catch-words easily retained in memory, or by a certain picture which the eye readily recognizes. The purchaser is required only to usé that care which persons ordinarily exercise under like circumstances. He is not bound to study or reflect; he acts upon the moment. He is without the opportunity of comparison. It is only when the difference is so gross that no sensible man, acting on the instant, would be deceived, that it can be said tbat the purchaser ought not to be protected from imposition.

Indeed, some cases have gone to the length of declaring that the purchaser has a right to be careless, and that his want of caution in inspecting brands of goods with which he supposes himself to be familiar ought not to be allowed to uphold a simulation of a brand that is designed to work a fraud upon the public. However that may be, the imitation need only to be slight if it attaches to what is most salient, for the usual inattention of a purchaser renders a good will precarious if exposed to imposition.

An inspection of these brands shows that they are similar in appearance and in colors, and from the testimony in the case we are satisfied that the brand adopted by the appellants is not only calculated to, but does in fact, deceive the public into the purchase of the goods put upon the market by the appellants as the goods manufactured by the appellee. We are constrained to the conclusion that the brand of the appellants was gotten up for that specific purpose, The appellant L. F. Pillsbury, prior to the time in question, had never been engaged in the flour business.

He evidently was acquainted with the brand used by the appellee. He must have known that the product of the appellee had acquired under that brand a high reputation in the market, and was of ready saie. He was not, and had never been, engaged in milling, and, so far as we are informed by the record, knew nothing about it. He purchased flour from millers, putting it in sacks, branding the packages with this simulated device. He could not reasonably hope to compete in business with the ap-pellee. He was of little or no means, residing and trading in a small suburban town.

He could not hope to purchase of millers and undersell a miller. He could not reasonably expect in that way to obtain from the manufacturer a flour of the same quality as that manufactured by the appellee, and sell if for a less price than was asked by the appellee. The great competition in the manufacture of flour is well known, and the margin of profit must be small. It is only because of immense sales that the business can be made lucrative. And yet we are asked to believe that L. F.

Pillsbury, without means, without knowledge of the business, without business connection, could purchase flour of manufacturers, in small quantities, of like quality, if not superior, to the flour of the appellee, yielding the usual profits of manufacture, repack it in barrels and sacks, put it upon the market, and, with a profit to himself, undersell the appellee in the sale of an

article which had for years been produced at the Minneapolis mills, and had acquired a high reputation and a ready market over two continents. We do not credit the assertion of the appellants that the flour they thus put upon the market was of equal quality to that manufactured by the appellee. If it were so, it could make no difference in the consideration of the question whether, by the use of this simulated brand, the purchaser would likely be deceived in respect to the particular flour he desired to purchase. It is no answer to the charge of using a false and simulated brand that the

article covered by the brand is of a superior quality to that which the purchaser desired to buy. You may not deceive a purchaser for his own benefit The public will not be permitted to be deceived even for their own good. A purchaser has a right to buy the particular

article he desires, and to be protected in the purchase. We are forced to believe that the appellants have put upon the market an inferior

article of flour, and in order to dispose of it profitably to themselves have placed upon it this false and simulated brand, that it may be sold upon the market as and for the flour manufactured by the appellee, and thus to obtain advantage to themselves from the high repute which the product of the appellee has acquired. The record is replete with evidence in support of this conclusion, not needed to be^ here recalled. We find confirmation of the fact in the manner in which the charge in this respect is met.

It is asserted in the bill that the appellants use this simulated brand as a means of palming off their flour upon the public as the product of the appellee.

The answer asserts that "they have always stated and made known to tbeir customers that said flour so handled by them under said brand is not the flour of the complainants, but is a flour put up under said brand by themselves, manufactured from Minnesota wheat, and that said flour, in their judgment, is equal to, if not superior, to that sold by Pillsbury-Washburn Flour Mills Company, Limited.” It may be remarked, in passing, that if these brands are so dissimilar that the "‘most casual observer” cannot be imposed upon, why assure purchasers, wholesale and retail dealers, who are expected to he, and are naturally, more careful than a. purchaser of a single package, that the goods sold were not the product of llie PilMmry Mills?

If the dissimilarity was manifest, there would seem to exist no necessity for such assurance; and yet we are inclined to give credence to the asser lion of the appellants in (his respect and (herein we think we discover the keynote of (his scheme. They sell their goods with the false and simulated brand upon them to wholesale and retail dealers at a price Inflow that for which the genuine product, of ilm PiOsbury Mills can be purchased by them. They disclose to the retail dealer their mode of procedure and their object.

They appeal to the greed of ¡.heir customers to purchase an inferior quality of flour thus falsely branded with the name of a superior arricie, that the dealers may palm it off as the genuine article. No ingenuity could devise a more effectual way to pirate a good will. In the large, hold, displayed words “Pillsbury’s Best” and “Pillsbury’s Best XXXX” they address the general public. In their dealings wiih middlemen they declare 1lie Truth, making them accomplices in (he fraud for their share of the profit. Trae represen!a (ions in aid of false ones but aggravate the fraud.

A conclusive case to this point arose in a French court. Bardou v. Sabatou, Annales de la Prop., tome 14, p. 140, affirmed on appeal to the court of Paris, Anuales de la Prop., tome lo, p. 115. A certain paper had for a trade-mark the word “Job.” Another manufacturer put on the market a paper inclosed in wrappers of the same color, but differing in ornaments. This he thus described: “GUERRE A JOB PAPIEB TRES SUP KRTETJR. Paris 80 Rue de Rivoli, 80. TAKE NOTICE — LET NO PERSON BE SURPRISED. I AM NOT THE SAME MARK of the cover which hears the, title, -Job.

But I guaranty that I enclose a paper superior to Job by the addition oj hygienic substances.” lie also issued an advertisement in which he recognized the distinction between Iris paper and that of the proprietors of the Job paper, challenging them to deny the superiority of his.

In enjoining him, the court said, it, ter alia: ‘‘Whereas, the. lawful competition which should exist between merchants cannot be extended to include right to take the distinctive denomination of a rival even for advertisements and circulars, with the design of diverting his custom; whereas, it is manifest that Sabatou, in the use of the name Mob,’ and in indicating the superiority of his paper, had no other object than to destroy the reputation enjoyed for the paper sold under the title of Mob,’ and to cause confusion by holding for ill the said name; therefore.” etc. Browne, Trade-Marks, § 398.

To similar effect is Seixo v. Provezende, 1 Ch. App. 192. We ha ve said enough to show the manifest character of this scheme. It falls, we think, clearly within the principle by which courts of equity are guided.. The appellant Pillsbury has an undoubted right to use his own name in any honest way, but he has not the right to make the use of it here disclosed, to deceive the public, and to defraud the appellee. In the consideration of this question we have not overlooked the case of Mill Co. v. Alcorn, 150 U. S. 460, 14 Sup. Ct. 151.

That was the case of a trade-mark pure and simple, in which it was held that one cannot acquire the right to the exclusive use of the word “Columbia” as a trade-mark. The court, at page 467 (150 U. S., and page 151, 14 Sup.

Ct.) of the opinion, observes: “It is also shown by the testimony in this case that the flour manufactured from spring wheat, such as that dealt in both by the complainant and the defendant, is never bought or sold simply on the brand, but usually, if not always, by actual sample; and the proof fails to establish that the brand of the appellees was calculated to mislead, or did actually deceive or mislead, any one into supposing that the flour of the complainant was being bought, so that it cannot be said that the defendants were personating the complainant’s business by using such a description or brand as to lead customers to suppose that they were trading with the appellant” This case does not hold to the contrary of the principle which we have asserted, but, impliedly at least, approves the principle that if the brand had actually deceived or misled, or that one was personat-ing another’s business by using a description or brand that was de-' ceptive, the case would fall within the principle we have stated.

There it appeared that the flour was not sold or bought on the brand, but usually by actual sample; here the proof is different. There the proof failed to establish that the brand was calculated to mislead or deceive; here the proof is overwhelming to the effect that the brand used was designed to mislead, and actually did deceive and mislead.

It is further urged that the appellee should not receive equitable relief, for the reason that during the first years after its incorporation and acquirement of the business it failed to indicate the fact of transfer in connection with its use of the trade-name, and that thereby it worked deception upon the public in attempting to pass upon them goods purporting to be made by the original proprietors of the mills. It is claimed that this fact should avail to the denial of relief, within the authority of Siegert v. Abbott, 61 Md. 276; Partridge v. Menck, 1 How. App. 558; Medicine Co. v. Wood, 108 U. S. 218, 2 Sup.

Ct. 486. It may well be doubted if this case, upon its facts, falls within the reason of the authorities cited. Here the transaction was really but the incorporation of the parties who had built up and operated the business and mills in association with others; the supervision, superintendence, direction, management, and control of the business remaining and continuing in Mr. Charles A. Pillsbury as managing director, who had from the first controlled it, and under whose management the product of the mills acquired its high reputation.

Under such circumstances it may well be said that the trade-name continued to assert the truth in its spirit/ and essence, and gave truthful assurance to the public that the flour was the genuine product of the Minneapolis mills operated and controlled by Mr. Pilbbury, notwithstanding flie legal and technical change in ownership wrought by the incorporation. Can such conduct be fittingly characterized as misrepresentation and falsehood, preventing relief in equity?

But, how (Her that may be, it sufficiently appears that prior l«> this suit the appellee adojded the custom of stamping' upon its packages of flour, in connection with and immediately preceding the monogram of the former firm of Charles A. Pillsbnry & Go., the words, “Pillsbnry- Washburn Flour Mills, Ltd., Successors to,” thereby announcing the technical legal ownership of the mills and business and the origin of the product.

We are therefore of opinion that in restraining the unlawful acts of the appellants we should do no violence to the principle that “he who comes into a court of equity seeking equity must come with pure hands.” We see no occasion for the imputation of fraud to the appellee. Affirmed.