Caffarelli Brothers v. Western Grocer Company, 102 Tex. 104

Mr. Justice Brown delivered the opinion of the court. The Western Grocer Company instituted this suit in the District Court of Bexar County to enjoin Caffarelli Bros, from the infringement of its trade mark. It was alleged that in 1898 A. B. Frank Company, then engaged in business in the city of San Antonio, adopted as their trade mark the words, “Georgia Coon,” to be used on molasses and syrups sold by the said firm. That in 1903 A. B. Frank. Company sold out their grocery business to the Western Grocer Company and sold and assigned the said trade mark with that business. The trade mark used by A. B.

Frank Company was upon a label marked Ho. 1 in the record, consisting of a picture wherein is represented a sugar farm with four negro men working at the standing cane, a cart with a negro man standing on it and drawn by a yoke of oxen, and in the distance is a picture of a sugar house with smoke ascending from the smoke stack, and other things not necessary to mention. The words, “Georgia Coon,” were upon the upper margin. After the purchase from A. B.

Frank Company by the Western Grocer Company, about June 1, 1904, the latter company devised and adopted a label differing from that stated above, but retained the words, “Georgia Coon,” on it. Label Ho. 2 had upon it the picture of a raccoon on a limb of a tree with a monogram on each side, “W. G.

Co.,” and just above the coon were the words, “Georgia Coon Brand;” beneath the coon was written, “Fancy Table Syrup, Western Grocer Co., San Antonio, Texas.” It was alleged in the petition that Caffarelli Bros, had used on molasses and syrups sold by them labels with the words, “Hew Coon,” thereon, which constituted an infringement of the trade mark of the Western Grocer Company. The first issue that arises is, did the evidence show conclusively an appropriation of the word, "Coon,” by A. B. Frank Company before the plaintiffs in error adopted their trade mark, “New Coon.”. W. J.

Morrison testified that he was the confidential assistant to Mr. Weiss, a member of the firm of A. B. Frank Company, who seems to have been in charge of the grocery department; that in ( Mr. Weiss’ absence he transacted the business of that department; he ‘ purchased groceries and sold them, and, one time when Mr. Weiss was away in 1898, he, Morrison, purchased of the Geyer Company a lot of molasses and when it came he “stumbled” on the words, “Georgia Coon,” on the cans or barrels, and he said he thought that would be a good name to use on the molasses. When Mr.

Weiss returned he saw a can of molasses with the words on it and said: “Halloo, Morrison, where did you get that?” Witness told him where he bought the molasses and Mr. Weiss said: “That is a pretty good name for the molasses.” Being asked the question what A. B. Frank Company did towards adopting the words as a trade mark, the witness said: “Mr. Weiss registered a good many trade marks, but I do not know whether he registered that one or not.” Then afterwards said: “I think he did.” The witness further said: “It was always a fad of mine—an idea of mine—to identify the concern with certain labels.

It did not appeal to Mr. Weiss very much, nor did it appeal to A. B. Frank, principally on account of the expense of getting out labels, and I did not deem it of sufficient importance to pursue the matter with Mr. Frank after Mr. Weiss left; but immediately after I took charge of the Western Grocer Company, as soon as I got rid of more pressing matters, which took about six months, after running three or four months, say, I took up the matter and ordered a lot of labels to be printed with the words, ‘Georgia Coon.’ ” The witness said that these labels were received in June, 1904.

In the course of his examination the witness also said that he had used the words, “Georgia Coon,” on the molasses all the time after he first had the conversation with Mr. Weiss, in 1898, until A. B. Frank Company sold out to the Western Grocer Company. _ _ If it shall be proved on another trial that the words, “Georgia Coon,” were adopted by A. B. Frank Company, then the sale of the stock of groceries to the Western Grocer Company would carry the right to the trade mark to the latter. The evidence in this case does not show conclusively that A. B.

Frank Company adopted the word, “Coon,” as a trade mark for molasses and syrups sold by that company. The fact that the company registered a number of trade marks, but did not register the word, “Coon,” or the words, “Georgia Coon,” tends strongly to prove that A. B. Frank Company did not intend to adopt those words, but that it was a fad of Morrison to identify the company with the words, “Georgia Coon,” which did not interest Mr. Weiss nor Mr. Frank. However, from the evidence of long use by Morrison in the employ of A. B.

Frank Company of labels with the words, “Georgia Coon,” upon them a jury might conclude that it was done with approval of Frank Company with the purpose of adopting the words as a trade mark. That question, should be submitted to the jury at another trial. The evidence in this case and the petition show that after the Western Grocer Company purchased the business of A. B. Frank Company, Mr.

Morrison, being a member of the last company and in charge of the sales department, used the label No. 1 until about June, 1904, when he had printed for the use of the Western Grocer Company in the sale of its molasses and syrups label No. 2, as shown by the statement above, which was continued in use until after the institution of this suit. In the first label used by A. B.

Frank Company in connection with the words, “Georgia Coon,” the coon idea was represented by the negro men in the picture; but in label No. 2 that idea was represented by the picture of the animal itself, a raccoon upon a limb of a tree, and in connection with that picture was also the monogram, “W. G. Co.” There is a marked difference, we think in the two labels and- the combination of different things which may be said to constitute the trade mark of the company.

The words, “Georgia Coon,” are preserved in this as they were in the former, but all else in this label is entirely new and embraces three different things which might be separately used as a trade mark, that is, the word, “Coon,” the picture of the coon, and the monogram. Also the entire combination of the coon, the picture and the monogram might be used as a trade mark. This condition of the evidence raises the question as to whether the Western Grocer Company in adopting' the last designs, ceasing to use the first, did not abandon the single word, “Coon,” as a trade mark. 28 Am. & Eng.

Ency., 396 VI; Kohler Mfg. Co. v. Beshore, 53 Fed. Rep., 264. In determining the question of infringement or not the standard of comparison should be the registered trade mark, trade name, etc., shown upon the labels Nos. 2 and 3; they were alone in use when the suit was filed. It is alleged in the petition that those labels were registered about the first of June, 1904, and that they were thereafter used by the Grocer Company as their trade mark. (Kohler Mfg. Co. v. Beshore, 53 Fed.

Rep., 262.) In that case the plaintiff had registered a trade mark and afterwards in bringing a suit alleged á different arrangement of the words which he claimed to have been infringed. With reference to that the court said: “The plaintiff certainly knew what its trade mark was, if they had one, and the foregoing statement should therefore be regarded as conclusive.

The registration was notice to everybody that the trade mark claimed was what is there set up, and nothing - else.” It is not necessary for us to go to the length in this case that the opinion did in that, but we are of opinion that the registration of the trade mark is sufficient to establish it as the standard of comparison in this suit, especially as the allegations are based upon that trade mark. The fact that the word, “Coon,” was used in the labels of the Caffarelli Bros, does not necessarily make his label and trade mark an infringement upon that of the Grocer Company. (Desmond’s Appeal, 103 Pa.

St., 129; Gilman v. Hunnewell, 122 Mass., 139.) . That case is strongly in point in support of that proposition. The different labels used by the plaintiff and the defendant in that case show that there were many points of resemblance in using the same words, and in fact in using the words which the plaintiff claimed to be his trade mark but in different combinations.

The court said: “All the authorities agree that the court will not restrain a defendant from the use of a label, on the ground that it infringes the plaintiff’s trade mark, unless the form of the printed words, the words themselves, and the figures, lines and devices, are so similar that any person, with such reasonable care and observation as the public generally are capable of using and may be expected to exercise, would mistake the one for the other.” Many authorities could be cited in support of the same proposition, but we deem it unnecessary to multiply them.

Under the rule laid down in the ease above cited the comparison of the two trade marks is to be made, not only of the word “Coon” and its relation to other words, but all of the devices, marks and figures that are upon the label of the plaintiff and those upon the label of the defendant, and if upon such a comparison it shall be found by the jury that the label and trade mark of the Caffarelli Bros, is calculated to deceive a person of ordinary prudence, in the exercise of such ordinary prudence, who desired to purchase the molasses or syrups sold by the Grocer Company, and lead such purchaser to buy the molasses or syrups of Caffarelli Bros., then the infringement would be established.

If, however, the evidence falls short of this there is no such infringement as by law could give a right of action to the Grocer Company. The question of infringement or not is one of fact to be submitted to the jury. Of course, there might be such unquestioned similarity that a court would be justified in telling the jury, as a matter of law, that the one was an infringement of the other, but such is not the evidence in this case.

We are of opinion that the Court of Civil Appeals erred in rendering judgment in this case for the Grocer Company and we therefore reverse the judgment of the Court of Civil Appeals and remand the case to the District Court. Reversed and remanded.