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The Columbia University Libraries reserve the right to refuse to accept a copying order if, in its judgement, fulfillment of the order would involve violation of the copyright law. Author: National Biscuit Company Title: Trade mark litigation Place: New York Date: 1915 %'^T223-Z COLUMBIA UNIVERSITY LIBRARIES PRESERVATION BIBLIOGRAPHIC MICROFORM TARGET MASTER NEGATIVE # ORIGINAL MATERIAL AS FILMED - EXISTING BIBLIOGRAPHIC RECORD fmmmmmmm ^FW National biscuit company • ••• Trade mark litigation; opinions, orders, injunctions and decrees relating to unfair compe- tition and infringement of trade marks. 5th ed. ^Hew York, national biscuit compan:/] 1915. 233 p, illus. S&n cm. At head of title: National biscuit company. O mmtm RESTRICTIONS ON USE: TECHNICAL MICROFORM DATA FILM SIZE: 39w) REDUCTION RATIO: 1*2/ IMAGE PLACEMENT: lA (0^ IB IIB DATE FILMED: Q ko W INITIALS: \^^'^ TRACKING # : M5H OZ<^n FILMED BY PRESERVATION RESOURCES, BETHLEHEM, PA. Intentional Second Exposures due to Fade Variations and Photographs -^,7^ '*'* 00 (Jl 3 3 O) Is o "O ^ I CO < X OPQ ^ ::d ISI C/) 00 cn CT>X oorsi o 3 3 > CD Q, O o m Q.~n CD O do" N X M a' t^' I-* fO Ul o Z' E — o 3 1 3 r- OB ISI 8 — - fi =-0 3 X o ^ li Is IM (0. ^*— 4 CT X ^». -< ui * 4 ^^^5 NATI 01*11. BIS C U IT COM PAN Y I ¥ t': TRADE MARK UTIGATIOhl '"a^-S'-s^^" Opinions, Qrders, ln]unctionsiH|i D Relating to Unfair Compe "^ ~ Infringement of Traciel FMth Editloh ■;.-^ >-■ ■«»#^»*&few4;2;Aa»a^ ^^»^.:i^::s^i^i0^^m?m^^^ ' Columbia Winiotxiitv V^*^! LIBRARY School of Business SCHOOL OF BUSINESS Q'jf '^ ■ vpw in p^ 1 ' ■ ^wvn^^pvviv* NATIONAL BISCUIT COMPANY TRADE MARK LITIGATION Opinions, Orders, Injunctions and Decrees Relating to Unfair Competition and Infringement of Trade Marks Fifth Edition 1915 CONTENTS. National Biscuit Company v. Thomas and Clarke 5 National Biscuit Company v. Baker II National Biscuit Company v. Kennedy 19 National Biscuit Company v, Ohio Baking Com- pany 29 National Biscuit Company r. Deininger 67 National Biscuit Company r. Dake Cracker Com- pany 75 National Biscuit Company v. Walter 85 National Biscuit Company r. Swick 93 National Biscuit Company r. Punchard Ill National Biscuit Company v, Hargrave Biscuit Co 121 National Biscuit Company v. Hammell Cracker Co 131 National Biscuit Company v. Whiteside 139 National Biscuit Company r. Pacific Coast Biscuit Company 173 Tables of Infringements abandoned without suit... 229 Northern District of Illinois ■ Southern Division NATIONAL BISCUIT COMPANY . Vomplatnant, v». ALBERT V. THOMAS AND ROBERT D. CLARKE Defendants. IN EQUITY DECREE OFFIELD, TOWLE & LINTHICUM CHARLES K. OFFIELD For Complainant. PEIRCE & FISHER JAMES H. PEIRCE For Defendants. NATIONAL BISCUIT COMPANY i?«. THOMAS AND (iJkRKB NATIONAL BISCUIT COMPANY i»«. THOMAS AND CLARKE FINAL DECREE. United States Circuit Court, Northern District of Illinois, Southern Division. Monday, April 17, 1899. Present: Honorable Christian C. Kohlsaat, District Judge. National Biscuit Company, vs. Albert V. Thomas and Eobert D. Clarke. This day came the complainant, by Charles K. OflSeld, of the firm of Offield, Towle & Linthicum, its solicitors, and of counsel, and the defendants by James H. Peirce, of the firm of Messrs. Peirce & Fisher, their solicitors and of counsel, and thereupon the following proceedings were had: This cause coming on to be heard upon final hearing,, upon the pleadings and affidavits filed herein, and the respective counsel being heard for the respective parties thereon, and being duly considered, it is therefore or- dered, adjudged and decreed as follows : First: That the said word or name **Uneeda" is a good and valid Trade-mark or trade name for biscuits, crackers and other bakery products, and that the title thereof, and the entire and exclusive right in the use of the same as a Trade-mark or trade name, vest in said complainant. Second: That the package and wrapper thereof with the border and parallelogram arrangement upon the four longitudinal sides thereof, and the printed matter in rela- tion thereto, as shown by *' Complainant 's Exhibit, Com- plainant's Package, Trade-mark and Wrapper," are the NATIONAL BlSniT COMPANY vs. THOMAS AND TI^ARKB ll NATIONAL BISCriT COMl'ANY t>«. THOMAS AN1> CLARKK FINAL DEC REE. United States Circuit Court, Northern District of Illinois, Southern Division. Monday, April 17, 1899. Prosoiit : Honorable Christian C. Kohlsaat, District Judge. National Biscuit Company, vs. Albert Y. Thomas and Robert D. Clarke. This day came the complainant, by Charles K. Offield,. of the firm of Offield, Towle & Linthicum, its solicitors, and of counsel, and the defendants by James H. Peirce, of the firm of Messrs. Peirce & Fisher, their solicitors and of counsel, and thereupon the following proceedings were had : This cause coming on to be heard upon final hearing, upon the pleadings and affidavits filed herein, and the respective counsel being heard for the respective parties thereon, and being duly considered, it is therefore or- dered, adjudged and decreed as follows : First: That the said word or name **Uneeda'' is a good and valid Trade-mark or trade name for biscuits, crackers and other bakery products, and that the title thereof, and the entire and exclusive right in the use of the same as a Trade-mark or trade name, vest in said complainant. Second: That the package and wrapper thereof with the border and parallelogram arrangement upon the four longitudinal sides thereof, and the printed matter in rela- tion thereto, as shown by ** Complainant's Exhibit, Com- plainant's Package, Trade-mark and Wrapper," are the >< 8 NATIONAL BISCUIT COMPANY wt, THOMAS AND CLARKE / V equitable property, wrapper and label arrangement of the complainant herein, in connection with the manufac- ture and sale of biscuits, crackers and other bakery products. Third: That the defendants have infringed upon and violated the rights of the complainant by the use of the name or word ^^Uwanta" as a close imitation and simula- tion of the Trade-mark or name '*Uneeda" of the com- plainant, and have closely imitated and simulated the package of the said complainant as to size and form, and the wrapper thereof as to arrangement of border, respec- I tive parallelograms and printed matter, in relation there- \ to, in the sale of the biscuits and crackers of said de- fendants. Fourth: That the said defendants, Albert V. Thomas and Robert D. Clarke, and each of them, and their respec- tive agents, servants and employes, and each of them, be and hereby are perpetually enjoined from affixing, using or causing or permitting to be used or affixed to or upon any biscuits, crackers or other bakery products or pack- ages manufactured by them, or bought or procured or sold by them or for them or either of them, or in which they are in any manner interested, the word **Uneeda'' or the word **Uwanta" or any word or synonym thereof or any word calculated to deceive or mislead, or any word color- ably different therefrom, and from affixing to any pack- age, biscuit, crackers or bakery products any wrapper, label or other covering having thereon a border and parallelogram arrangement and accompanying letters in substantial imitation of the wrapper, label and package or box arrangement of the said complainant, and only colorably different therefrom, or from using any box or package construction, wrapper or label arrangement thereof, in the sale of biscuits, crackers and other bakery products, so contrived as to lead to the belief or to be calculated to lead to the belief, or to be liable to cause the public to believe, that the biscuits or crackers con- NATIONAL BISCUIT COMPANY r«. THOMAS AND CLARKE 51 tained in such box, packages, wrappers or other cover- ing, was manufactured or sold by the complainant. Fifth: It further appearing to the court that the said parties have agreed to settle the question of damages to the complainant and profits to the defendants out of court, within thirty days hereafter, no reference to Mas- ter for an accounting is at this time made. Sixth: It is further ordered, adjudged and decreed, that the defendants pay the costs herein to be taxed, and that complainant have execution therefor. Northern District of Illinois,] gg Northern Division. j I, S. W. Bumham, CTerk of the Circuit Court of the United States, for said Northern District of Illinois, do hereby certify the above and foregoing to be a true and correct copy of the Decree entered of record in said Court on the 17th day of April, A. D. 1899, in the cause wherein National Biscuit Company, is the complainant and Albert V. Thomas and Eobert D. Clarke are the defendants, as the same appears from the original thereof now remain- ing in my custody and control. In Testimony Whereof, I have hereunto set my hand and affixed the seal of said Court, at my office in Chicago, in said District, this 18th day of April, A. D. 1899. S. W. BURNHAM, Clerk. Oltrrmt CUnurt of ttje Unttrh ^tati^a Southern District of New York NATIONAL BISCUIT COMPANY Coniitloinattt, r«. > HENRY D. BAKER and JOHN P. BAKER Oefiitilants. IN EQUITY OPINION AND ORDER GRANTING INTUNCTTON OFFIELD, TOWLE & LIXTHICUM CHARLES K. OFFIELD For Complainant. BRIESEX & KXAUTH ARTHUR V. BRIESEX For Defendants. 12 NATIONAL BISCUIT COMPANY vs. BAKER NATIONAL BISCUIT COMPANY vs. BAKER 13 NATIONAL BISCUIT COMPANY vs. BAKER et al. (Circuit Court of the United States, Southern District New York, June 27, 1899.) Unfair Competition— Preliminary Injunction. **Uneeda," as applied to a biscuit, is a proper trade-mark; and the proprietor is entitled to an injunction against the use of "Iwanta" by another manufacturer as the name of a similar biscuit put up and sold to the trade in packages so similar as to be calculated to deceive consumers. Motion for preliminary injunction against sellers of al- leged infringing goods ; the action being defended by the Ward-Mackey Company, of Pittsburg, Pa., makers of the same. Charles K. Offield, for the motion. Arthur v. Briesen, opposed. LACOMBE, Circuit Judge. This case is too plain to waste many words over it,— the principles of trade-mark infringement and of unfair competition have been so often discussed in this circuit. That **Uneeda,'' as applied to biscuit, is a proper trade-mark, and that complainant is entitled to its exclusive use in that connection, is hardly disputed. That it has been most extensively advertised, presumably at great expense, is matter of common knowl- edge, and is asserted in the moving papers. Defendants present the usual voluminous bundle of affidavits by per- sons in the trade to the effect that in their opinion no one is likely to mistake defendants' biscuit for complainant's. As has been often pointed out before, it makes no differ- J^^^ to what constitutes unfair competition, see note to Scheuer v. MuIIer, 20 C. C A. 165, and supplementary thereto, under same title note to Lare v. Harper, 30 C C. A. 376. 12 NATIONAL BISCMT TOM TAN Y vs. BAKKR NATIONAL BLSCl IT COMPANY vs. BAKER 13 NATIONAL BISCUIT COMPANY vs. BAKER et al. (Circuit Court of the United States, Southern District New York, June 27, 1899.) Unfair Competition — Preliminary Injunction. "Uneeda," as applied to a biscuit, is a proper trade-mark; and the proprietor is entitled to an injunction against the use of "Iwanta" by another manufacturer as the name of a similar biscuit put up and sold to the trade in packages so similar as to be calculated to deceive consumers. Motion for preliminary injunction against sellers of al- leged infringing goods; the action being defended by the Ward-Mackey Company, of Pittsburg, Pa., makers of the same. Charles K. Offield, for the motion. Arthur v. Briesen, opposed. LACOMBE, Circuit Judge. This case is too plain to waste many words over it,— the principles of trade-mark infringement and of unfair competition have been so often discussed in this circuit. That **Uneeda,'^ as applied to biscuit, is a proper trade-mark, and that complainant is entitled to its exclusive use in that connection, is hardly disputed. That it has been most extensively advertised, presumably at great expense, is matter of common knowl- edge, and is asserted in the moving papers. Defendants present the usual voluminous bundle of affidavits by per- sons in the trade to the effect that in their opinion no one is likely to mistake defendants' biscuit for complainant's. As has been often pointed out before, it makes no differ- x/'V to what constitutes unfair competition, see note to Scheuer v. Muller 20 C. C A. 165, and supplementary thereto, under same title note to Lare v. Harper, 30 C C. A. 376. 14 NATIONAL BISCUIT COMPANY vs. BAKER / ence that dealers in the article are not deceived. No one Y^xpects that they will be. It is the probable experience of [^the consumer that the court considers. Here, too, we have the manufacturer of the articles complained of, who ex- plains, as usual, that, in adopting a trade name by which to identify his own product, he has been most ** careful not to trespass on any rights'' of complainant, and that ** after considerable thought" he selected a name which should make the difference between his goods and com- plainant's "distinct and plain, so that there could be no possibility of mistake." It is a curious fact that so many manufacturers of proprietary articles, when confronted with some well-advertised trade name or mark of a rival manufacturer, seem to find their inventive faculties so singularly unresponsive to their efforts to differentiate. Thus, in one case, with the word ''Cottolene" before him, defendant's best effort at differentiation resulted in ''Cot- toleo," and '* Mongolia" seemed to another defendant en- tirely unlike '^Magnolia." The manufacturer of the articles which defendants in the case at bar are selling seems to have had no better luck, for, with the word *'Uneeda" before him, his device to avoid confusion was the adoption of the word '*Iwanta." The incessant use of the personal pronouns in daily speech has associated in every one's mind the sounds represented by the letters **I" and *'U"; the two words are of precisely the same length; both end with the same letter, ** A"; and both ex- press the same idea, namely, that the prospective i)ur- chaser's personal comfort would be promoted by the ac- quisition of a biscuit. There are, as also is usual, a num- ber of minor differences between the forms and the dress of the two packages, which are expatiated upon in the affidavits and the brief; but no one can look at both packages without perceiving that there are strong resemblances, which could easily have been avoided had there been an honest effort to ^give defendants' goods a distinctive dress. Both I NATIONAL BISCUIT COMPANY vs. BAKER 15 -. name and dress are clearly calculated to mislead, and the statements that both were adopted with an eye single to differentiation strain the credulity of the court beyond the breaking point. Complainant may take a preliminary in- junction against the use of the trade-name ' ' Iwanta, " and of the present style of package ; also against similar col- orable imitations of complainant's trade-name, **Unee- da," and of his style of package. 95 Fed. Eep., 135. 16 NATIONAL BISCUIT COMPANY vs. BAKBE INJUNCTION ORDEK. United States Circuit Court. Southern District of New York. National Biscuit Company, Complainant, vs. Henry D. Baker and John P, Baker, Defendants. In Equity. J Complainant having moved the Court that a prelim- inary injunction issue against the above-named defend- ants in accordance with the prayer of the bill of complaint herein, and Charles K. Offield, Esq., of counsel for com- plainant, having been heard in support of the motion, and Arthur v. Briesen, Esq., of counsel for defendants, having been heard in opposition ; it is, on motion of Offield, Towle & Linthicum, complainant's solicitors. Ordered that the said motion be and the same hereby is granted and that an injunction issue against the said de- fendants Henry D. Baker and John P. Baker and each of them and their respective agents, servants and employees and each of them enjoining and restraining them until the further order of this court from affixing, using or causing or permitting to be used or affixed to or upon any biscuits, crackers or other bakery products or packages thereof, handled or sold by them, or bought or procured to be sold by them, or for them, or either of them, or in which they are in any manner interested, the word ''Iwanta" or **Uneeda", or against similar colorable imitation thereof, or from affixing to any package of biscuit, crackers, or other bakery products, any wrapper, label or other cover- ing in substantial imitation of the wrapper, label and NATIONAL BISCUIT COMPANY V8, BAKER 17 package of said complainant, or any similar colorable imi- tation of complainant's style of package, so contrived as to lead to the belief or to be calculated to lead to the belief or to be liable to cause the public to believe that the biscuit or crackers contained in such package, wrapper or other covering are manufactured and sold by the complainant. Dated New York, Aug. 11, 1899. E. Henry Lacombe. U. 8, Circuit Judge. (Endorsed): United States Circuit Court, Southern District of New York.— ISTational Biscuit Company, Com- plainant, vs. Henry D. Baker and John P. Baker, Defend- ants.— Order.— Briesen & Knauth, Solicitors for Defend- ants, 229 Broadway, Borough of Manhattan, New York. —IT. S. Circuit Court, Filed Aug. 11, 1899, John A. Shields, Clerk. United States of America, | Southern District of New York.C ' I, John A. Shields, clerk of the Circuit Court of the United States in and for the Second Circuit and Southern District of New York, Do Hereby Certify that I have compared the preceding with the original Order granting Injunction in the cause entitled National Biscuit Company, Complainant, vs. Henry D. Baker and John P. Baker, Defendants, on file 18 NATIONAL BISCUIT COMPANY r«. BAKEK and of record in my office, and that the same is a true and correct transcript therefrom, and of the whole of said original. In Testimony Whereof, I have hereunto set my hand and affixed the seal of said court, at the City of New York, in tlie District and Circuit ahove-named, this 27tli day of May in the year of our Lord one thousand nine hundred and four, and of the Independence of the United States the one hundred and twentv-ei2:hth. John A. Shields, Clerk. Oltrruit Olourt of % MniUh 0tatw XoRTHERx District of Illinois XoRTHERN Division NATIONAL BISCUIT COMPANY ^ Oomplalvant, V9. THEODORE WEISE AND JOHN P. KENNEDY, > IN EQUITY ORDER, IXJL'XCTIOX AND ORDER .MAKING IXJUXCTIOX PERPETUAL OFFIELD, TOWLE & LIXTHICU.M ^'or Complainant. ARCHIBALD CATTEL For Defendants. NATIONAL BISCUIT COMPANY vs. KENNEDY 21 INJUNCTION ORDER. Circuit Court of the United States, Northern District of Illinois, Northern Division. July 5, 1900, Present, Hon. Christian C. Kolilsaat, District Judge. National Biscuit Company, ^ T».n /» t i? • 25,598 vs. ^ ^ ' I Bill for Infringement Theodore Weise and John P. f ^^^uf'^^^^'u/'''^ Kennedy. J Equitable Rights. This case coming on to be heard upon motion for pre- liminary injunction upon pleadings and affidavits filed and exhibits referred to, and having been duly heard and considered, it is ordered, adjudged and decreed as follows : First: That the said complainant has good title and right in and to the said trade-mark or name ''Ken- nedy's,'' or ''Kennedy's Biscuit'' and "Kennedy's City Soda Crackers" as applied to bakery products, and in and to the particular and special label, package or carton associated with the sale thereof as identified by the bill of complaint and filed herein. Second: That the said defendants have violated and infringed upon said complainant 's right, title and interest in and to said trade-name, marks or words "Kennedy's," "Kennedy's Biscuit" and "Kennedy's Cit}^ Soda Crack- ers," and in and to the label, carton and package identi- fied therewith. Third: That the said defendants, and each of them, their servants and agents, and all claiming or holding through or under them, be until further order of the court enjoined and restrained from in any manner what- 22 NATIONAL BISCUIT COMrANY vs. KENNEDY I soever making use of the words *' Kennedy 's, " '* Ken- nedy's City Soda Crackers'' or ** Kennedy's Biscuit," or any words substantially like the same as the name or designation, or as any part of the name or designation, of any bakery products whatsoever not by or for the complainant manufactured; and from in any manner whatsoever making use of the words ** Kennedy's," ** Kennedy's City Soda Crackers" or *' Kennedy's Bis- cuit," or any words substantially like the same, as the name or designation, or as any part of the name or de- signation, of any bakery products whatsoever not manu- factured by or for the complainant, which shall be put up in carton like those hereinbefore described as the pack- ages by the defendants used and availed of, and other- wise in every way from making use in connection with the manufacture or sale of bakery products whatsoever,, not of the complainant's production, of packages whick shall be so nearly like the complainant's packages here- inbefore described as to be calculated to mislead; and otherwise in every way enjoining and restraining the said defendants from fraudulently making use of the words ''Kennedy's" ''Kennedy's City Soda Crackers" or "Kennedv's Biscuit" in connection with tlie sale of bakery products, and from doing any act or tbing what- soever that shall be calculated to cause any bakery prod- ucts not manufactured by the complainant to be offered or sold as "Kennedy's Biscuit" or "Kennedy's City Soda Crackers," or as bakery products or crackers manu- factured by or for the complainant. NATIONAL BISCUIT COMPANY vs. KENNEDY 23: NoRTHEBX District of Illinois,! Northern Division. j ^®* I, Marshall E. Sampsell, clerk of the Circuit Court of the United States for said Northern District of Illinois, do hereby certify the above and foregoing to be a true and complete copy of the order entered of record in said court on the 5th day of July, A. D. 1900, in the cause wherein National Biscuit Company is the complainant and Theodore Weise et al. are the defendants, as the same appears from the original records thereof now re-^ maining in my custody and control. In Testimony Whereof, I have hereunto set my hand and affixed the seal of said court at my office in Chicago- in said district, this 26th dav of Mav, A. D. 1904. Marshall E. Sampsell, Clerks 24 NATIONAL BISCUIT COMrANY vs. KENNEDY NATIONAL BISCUIT COMPANY is. KENNEDY 25 I 1 INJUNCTION. Circuit Court of the United States of America,! Northern District of Illinois, j-ss. Northern Division. J THE UNITED STATES OF AMERICA, To Theodore Weise and John P. Kennedy and to your Counselors, Attorneys, Solicitors, Trustees, Agents, Clerks, Employes, Servants and Workmen, and to each and every of you, Greeting: Whereas, It liatli been represented to the Judges of our Circuit Court of the United States for the Northern Division of the Northern District of Illinois in Chan- cery sitting, on the part of National Biscuit Company, complainant, in its certain bill of complaint, exhibited in our said Circuit Court, on the Chancery side thereof, before the Judges of said Court, against you, the said Theodore Weise and John P. Kennedy, to be relieved touching the matters complained of. In which said bill it is stated, among other things, that you are combining and confederating with others to injure the complainant touching the matters set forth in said bill, and that your actings and doings in the premises are contraiy to equity and good conscience. And it being ordered that a Writ of Preliminary Injunction issue out of said court, upon said bill, enjoining and restraining you, and each of you, as prayed for in said bill ; We therefore, in consideration thereof, and of the particular matters in said bill set forth, do strictly command you, the said Theodore Weise and John P. Kennedy, your Counselors, Attorneys, Solici- tors, Trustees, Agents, Clerks, Employes, Servants and Workmen, and each and every of you, that you do abso- lutely desist AND REFRAIN FROM iu auy mauucr whatso- ever making use of the words ** Kennedy's,'' * 'Kennedy's City Soda Crackers" or *' Kennedy's Biscuit," or any words substantially like the same as the name or desig- nation, or as any part of the name or designation, of any bakery products whatsoever not by or for the complain- ant manufactured ; and from in any manner whatsoever making use of the words *' Kennedy's," ** Kennedy's City Soda Crackers" or ** Kennedy's Biscuit," or any words substantially like the same, as the name or desig- nation, or as any part of the name or designation, of any bakery products whatsoever not manu- factured by or for the complainant, which shall be put up in a carton like those hereinbefore described as the pack- ages by the defendants used and availed of, and other- wise in every way from making use in connection with the manufacture or sale of bakery products whatsoever, not of the complainant 's production, of packages which shall be so nearly like the complainant's packages hereinbe- fore described as to be calculated to mislead ; and other- wise in every way enjoining and restraining the said de- fendants from fraudulently making use of the words *4^ennedy^s," '^Kennedy's City Soda Crackers" or '^Kennedy's Biscuit" in connection with the sale of bakery products ; and from doing any act or thing what- soever that shall be calculated to cause any bakery products not manufactured by the complainant to be of- fered or sold as *' Kennedy's Biscuit" or '^ Kennedy's City Soda Crackers," or as bakery products or crackers manufactured by or for the complainant, until this Hon- orable Court, in Chancery sitting, shall make other order to the contrary. Hereof fail not, under penalty of what the law directs. To the Marshal of the Northern District of Illinois, to execute, and return in due form of law. Witness, the Hon. Melville W. Fuller, Chief Justice of the United States of America, at Chicago, in said Dis- trict, this 5th day of July, in the year of our Lord one 26 NATIONAL BISCUIT COMPANY is. KENNEDY NATIONAL BISCUIT COMPANY vs. KENNEDY 27 thousand nine Imndred and of our Independence the one hundred and twenty-fifth year. S. W. BURNHAM, Clerk, Northern District of Illinois,| Northern Division. ] I, Marshall E. Sampsell, Clerk of the Circuit Court of the United States for said Northern District of Illinois, do hereby certify the above and foregoing to be a true and complete copy of the injunction writ, filed in said court on the 8th day of July, A. D. 1904, in the cause wherein National Biscuit Company, is the complainant and Theodore Weise ei al. are the defendants, as the same appears from the original now remaining in my custody and control. In Testimony Whereof, I have hereunto set my hand and affixed the seal of said Court at my office in Chicago,, in said District, this 8th day of July, A. D. 1904. Marshall E. Sampsell, Clerk. ORDER MAKING INJUNCTION PERMANENT. Circuit Court of the United States, Northern District of Illinois Northern Division. June 5, 1902. Present, Hon. Christian C. Kohlsaat, District Judge. National Biscuit Companv 25,598 vs, Theodore Weise and John P Kennedy. >v 7 Bill for Infringement of Trade-Mark and Equitable Rights. This cause coming on to be heard upon the pleadings as Med herein, Messrs. Offield, Towle & Linthicum appearing as solicitors and of counsel for said complainant the National Biscuit Company, Mr. Archibald Cattel appear- ing as solicitor and of counsel for the said defendants Theodore Weise and John P. Kennedy, and it appearing to the court that the defendants do not desire further to contest this action, and that they have settled with the complainant for the damages, profits and costs arising out of the acts complained of, and that nothing remains as to said litigation except as to the subject-matter of the injunction. It is therefore ordered, adjudged and decreed, as follows, VIZ. : That the Interlondory injunction heretofore issued and ?!Grved upon the defendants in this cause be, and the same hereby is, made perpetual, and that this decree be entered and stand as a final decree in the above cause. 28 NATIONAL BISCUIT COMPANY vs. KENNEDY Northern District of Illinois,! gg^ Northern Division. j I, Marshall E. Sampsell, clerk of the Circuit Court of the United States, for said Northern District of Illi- nois, do hereby certify the above and foregoing to be a true and complete copy of the order entered of record in said court on the 5th day of June, A. D. 1902, in the cause wherein National Biscuit Company is the complainant and Theodore Weise et al. are the defendants, as the same appears from the original records thereof now remaining in my custody and control. In Testimony Whereof, I have hereunto set my hand and affixed the seal of said court at my office in Chicago, in said District, this 26th day of May, A. D. 1904. Marshall E. Sampsell, Clerk. CUtrrmt Olimrt nf % Itiitrh ^tatea Northern District of Ohio Eastern Division NATIONAL BISCUIT COMPANY -n Complainant, V9. THE OHIO BAKING COMPANY, STEPHEN C. MORRIS and GEORGE E. COLLINGS J^rff ndants. > IN EQUITY No. 6131 OPINION AND DECREE SQUIRE, SANDERS & DEMPSEY OFFIELD, TOWLE & LINTHICUM EARL D. BABST for Complainant. BANNING & BANNING BENJAMIN C. STARR For Defendants. so NATIONAL BISCUIT COMPANY rs. OHIO BAKING COMPANY SODA CFi' ACKERS, SODA ER ACKERS NATIONAL BISCUIT COMPANY v%, OHIO BAKING COMPANY 31 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY et AL. (Circuit Court of the United States. Northern District Ohio, Eastern Division. December 21, 1900.) No. 6131. 1. Unfair Competition — Imitation of Packages. While a defendant may have the right to use every one of the elements entering into complainant's trade-mark and packages if used separately, yet his use of the same in combination, for the evi- dent purpose of imitating in appearance complainant's packages, constitutes unfair competition. In Equity. On motion for preliminary injunction. For opinion on appeal, see 127 Fed., 116. Squire, Sanders & Dempsey, Offield, Towle & Linthicum, and Earl D. Babst, for complainant. Banning & Banning and Benjamin C. Starr, for defend- ants. WANTY, District Judge. In this case a motion for a preliminary injunction has heretofore been filed, and was argued the other day, and I have come to a conclusion in the matter. The bill in this case was filed to restrain the defendants from infringing the complainant's trade-mark and to restrain fraudulent competition in imitating the complainant's packages or cartons in size and color and general appearance. The defendants claim that they have the right to use the straight lines and curves in a trade- mark, that they have the right to use the word ^'seal," that they have the right to use white lines on a red back- ground, and that they have the right to use cartons of a particular size, and that they have the right to use the Hi Unfair competition, see notes to Scheuer v. Muller, 20 C. C. A. 165 ; Lare v. Harper & Bros., 30 C. C. A. 376. -30 NAIIONAL r.ISCriT ( O.Ml'ANV r.s. OHIO BAKIN(; COMPANY S^Xi K \L^ K^Yv^Wb SODA ER ACKERS NATIONAL BISCL IT COMPANY i «. 01110 BAKING COMPANY 31 \ NATIONAL BISCIIT COMPANY r». OHIO BAKIN(; COMPANY et al. (Circuit Court of the United States. Northern District Ohio, Eastern Division. December 21, 1900.) No. 6131. 1. Unfair Competition — Imitation of Packages. While a defendant may have the right to use every one of the elements entering into complainant's trade-mark and packages if used separately, yet his use of the same in combination, for the evi- dent purpose of imitating in appearance complainant's packages, constitutes unfair competition. In Equity. On motion for preliminary injunction. For opinion on appeal, see 127 Fed., 116. Squire, Sanders & Dempsey, Offield, Towle & Lintliicum, and Earl D. Babst, for complainant. Banning & Banning and Benjamin C. Starr, for defend- ants. AYAXTY, District Judge. In this case a motion for a preliminary injunction has heretofore been filed, and was argued the other day, and I have come to a conclusion in the matter. The bill in this case was filed to restrain the defendants from infringing the complainant's trade-mark and to restrain fraudulent competition in imitating the complainant's packages or cartons in size and color and general appearance. The defendants claim that they have the right to use the straight lines and curves in a trade- mark, that they have the right to use the word **seal," that they have the right to use white lines on a red back- ground, and that they have the right to use cartons of a particular size, and that they have the right to use the Hi Unfair competition, see notes to Scheuer v. MuUer, 20 C. C. A. 165 ; Lare v. Harper & Bros., 30 C. C. A. 376. 32 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY different colors which they have adopted for their pack- ages, and that the complainant cannot appropriate any of these things so as to preclude others from their use. All of these claims of the defendants are true, but it is ap- parent, under the showing here, that the defcmdants de- liberately sat down and made their packages as like in general appearance to the complainant's packages as would be necessary to catch the customer and escape the courts. They had the right to use the background used by the complainant, they had the right to use clipped corners and the word ^*Seal," they had the right to use any color that the complainant used for cartons, and they had the right to use packages of the size used by the com- plainant. But when they used all these things in com- bination, the object is too apparent to admit of argument. The defendants put up a package which they say is exact- ly the size of complainant's package, because it contains the same quantity of crackers, which, if put up in a con- venient manner, necessarily compels the use of the same- size package. But this does not explain why on the largest-size package the defendants have the exact shade of red used by complainant, and have the white lettering of substantially the same type, and on the next-size pack- age, they have blue, like complainant's. Why did they not use blue on the largest-size package and red on the smaller? No one can read the pleadings and affidavits in this case and escape the conclusion that the defendants are endeavoring to appropriate the trade of the com- plainant by imitating, in its general effect, its seal and packages, and to escape the legal effect of such an at- tempt by making dissimilar minor details. The fraud is apparent, and the motion for a preliminary injunction will be granted. 127 Fed. Eep., 160. NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 33 FINAL DECEEE. The United States of America, Northern District of Ohio, Eastern Division. ^ss. At a stated term of the Circuit Court of the United States, within and for the Eastern Division of the North- ern District of Ohio, begun and held at the City of Cleve- land, in said District, on the first Tuesday in April, being the 7th day of said month, in the year of our Lord one thousand nine hundred and three, and of the In- dependence of the United States of America the one hun- dred and twenty-seventh, to wit : On Friday, the 22" day of May, A. D. 1903. Present : The Honorable Francis J. Wing, U. S. Dis- trict Judge. Among the proceedings then and there had were the following, to wit: National Biscuit Company, vs. The Ohio Baking Company, Stephen C. Morris, and George E. Collings. This cause coming on to be heard upon pleadings and proof, and having been fully argued by counsel re- spectively for both parties litigant; Mr. Charles K. Of- field, Mr. Andrew Squire, and Mr. Earl D. Babst, for Complainant; Mr. Thomas A. Banning, and Mr. Ben- jamin C. Starr, for Defendants: And the court being fully advised, and having fully considered the same, orders, adjudges, and decrees as follows : 1. That the said Complainant, the National Biscuit Company's * * In-er-seal " Trade Mark is a good and valid In Equity. 6131. I 34 NATIONAL BISCUIT COMPANY V8. OHIO BAKING COMPANY Trade Mark, and the complainant has full right and titki thereto, and therein, as alleged in said bill of complaint filed herein. 2. That the said defendants have infringed upon and violated said complainant's '*In-er-sear' Trade Mark, as alleged in said bill of complaint, by putting up and selling bakery products in cartons or packages like those marked ''Complainant's Exhibits Defendants' Infring- ing Packages Nos. 1, 2 and 3" and ''Defendants' Ex- hibits Nos. 13, 14 and 15." 3. That the said defendants have violated com- plainant's equitable rights; in putting up, selling and of- fering for sale, cartons or packages of bakery products which present a general appearance as to collocation of size, shape, color, lettering, spacing and ornamentation, closely resembling complainant's several exhibits re- spectively referred to in the bill of complaint, and marked as "Complainant's Exhibits." 4. That the said defendants, and each of them, their agents, serv^ants, and employes, be and hereby are, en- joined until the further order of this court from a. Imitating or simulating complainant 's ' ' In-er-seal ' ' Trade Mark, or manufacturing, handling, or selling car- tons of bakery products having thereon any imitation of complainant's "In-er-seal" Trade Mark, ' calculated to mislead or deceive; like those marked Complainant's Exhibits Defendants' Infringing Packages Nos. 1, 2 and 3, and Defendants' Exhibits Nos. 13, 14 and 15, but this shall not be construed as restraining defendants from selling cartons or packages of bakery products with their asserted Trade Mark thereon, provided such Trade Mark is so differentiated in general appearance and applica- tion from said complainant's Trade Mark that it is not calculated to deceive the ultimate ordinar>^ purchaser. h. From putting up and selling, or offering for sale, the NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 35 particular forms of cartons or packages referred to in the bill of complaint, and identified therein as "Complain- ant's Exhibit Defendants' Infringing Packages Nos. 1, 2 and 3," or any other form of packages or cartons, re- spectively, which shall, by reason of the collocation of size, shape, colors, lettering, spacing and ornamentation, present a general appearance as closely resembling com- plainant's several exhibits respectively referred to in the bill of complaint and marked as Complainant 's Exhibits — as do the said defendants' respectively infringing pack- ages Nos. 1, 2 and 3, but this shall not be construed as re- straining defendants from selling packages or cartons of the size, weight and shape of complainant's packages, nor from using the respective colors as wrappers for such packages, provided such packages are so differentiated in general appearance from said complainant's respec- tive packages that they are not calculated to deceive the ultimate ordinary purchaser. 5. That the said complainant has a right to recover any and all profits accruing to the said defendants from the unlawful violation and infringement of said complainant 's rights, and to recover all damages suffered by and ac- cruing to said complainant by reason of the commitment of said unlawful and infringing acts, together with the costs herein to be taxed, and that the same may be refer- red to Irvin Belford, he being a suitable person as Master of this Court, and approved by the parties to take, state and report an account of such damages and profits under and in accordance with this decree, and that upon such accounting the testimony heretofore taken by either party in this case, may be read by either party, and referred to and considered by said master. In open court the defendant prayed an appeal, which was allowed and bond fixed at $500.00. 36 NATIONAL BISCUIT COMPANY vs. OHIO BAKINCi COMPANY The United States,^ OF America. j ^^* I, Irvin Belford, Clerk of the Circuit Court of the United States, within and for the Northern District of the State of Ohio, do hereby certify that I have compared the witliin and foregoing transcript with tlie original de- cree entered upon the Journal of the proceedings of said Court in the therein entitled Cause, at the term, and on the day therein named; and do further certify that t\m same is a true, full and complete transcript and copy thereof. Witness, my official signature and the seal of said Court, at Cleveland, in said District, this 1st day of June, A. D. 1903, and in the 127" year of the Independence of the United States of America. Irvin Belford, Clerk. By Thomas M. Sherlock, Deputy Clerk. %nxUh BUUb (Hxrcmt Court at Apppala Sixth Circuit OHIO BAKING COMPANY, STEPHEN C. MORRIS and GEORGE E. COLLINGS, Appellants, vs. NATIONAL BISCUIT COMPANY Appellee. OPINION IN EQUITY No. 1232 THOMAS A. BANNING EPHRAIM BANNING BENJAMIN C. STARR For Appellants. SQUIRE, SANDERS & DEMPSEY OFFIELD, TOWLE & LIXTHICUM EARL D. BABST For Appellee. < h i NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 39 OHIO BAKING CO. et AL vs. NATIONAL BISCUIT COMPANY (Circuit Court of Appeals of the United States, Sixth Circuit. January 21, 1904.) No. 1233. 1. Trade Mark — Protection — Infringement. The right of the owner of a trade-mark to be protected in the exclusive use thereof is not dependent on the federal statute au- thorizing registration. 2. Same— Nature of Relief— Unfair Domestic Competition. Where the ground for relief in a suit for infringement of a trade- mark was unfair competition in domestic commerce, and the cause of action alleged was an imitation of plaintiff's trade-mark on cartons used in local trade, and there was no allegation that complainant's foreign trade was injured by the acts complained of, the fact that the trade-mark was registered, and that complainant was entitled to protection under the federal statute with regard to foreign com- merce, was immaterial. 3. Same — Evidence. Complainant's "In-er-seal" trade-mark, as known to the public, was printed in white letters on a vivid red back-ground of a peculiar shade, and applied to the ends of cracker and biscuit cartons, in which complainant's goods were packed for sale. Shortly, there- after defendant conceived a trade-mark with the words "Factory Seal" printed on the same colored labels, which it applied to the ends of similar packages of its biscuits. At the time defendant adopted this trade-mark it knew complainant's crackers were the only ones sold with the red seal on the end of the cartons, and that its trade-marks were liable to deceive careless purchasers. Held, that defendants' trade-mark, w^hen so printed and used, was an infringement on complainant's trade-mark, and should be enjoined. Appeal from the Circuit Court of the United States for the Northern District of Ohio. For opinion below, see 127 Fed., 160. Thomas A. Banning, Ephraim Banning, and Benjamin C. Starr, for appellants. Squire, Sanders & Dempsey, Earl D. Babst, and Offield, Towle & Linthicum, for appellee. Before Luetoi^ and Richards, Circuit Judges, and Thompson, District Judge. 40 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY ' EICHARDS, Circuit Judge. In March, 1900, the com- plainant below, the National Biscuit Company, was en- gaged in the manufacture and sale of bakery products, consisting of biscuits, crackers, etc. It owned and operated some 75 plants, located in the leading cities of the United States, the products of which were put out in packages or cartons under different factory names, indicating their character and origin. For the purpose of identifying all these products, making them known to the public, and guarantying their authenticity, it adopted an arbitrary design or symbol known as the * * In-er-seaP ' trade-mark for use on its cartons, and at a cost of hundrt^ds of thou- sands of dollars advertised it throughout this country and the world as the mark by which its goods might be recog- nized. Except for the use of some green and orange labels, which were soon abandoned, the ''In-er Seal" trade-mark was printed in white letters upon a vivid red label with clipped corners, and applied to the ends of tlie cartons. The trade-mark was registered, the application being filed May 12, 1900. In the latter part of August, 1900, the de- fendant below, the Ohio Baking Company, was engaged at Cleveland, Ohio, in making and selling bread and cakes. It had been so engaged for 17 years. At this time, having decided to enter upon the biscuit and cracker business, it employed one Miles, a former employe of tlie National Biscuit Company, and gave him charge as manager of the cracker department about to be established. Within three or four weeks afterwards it began to place its biscuits and crackers upon the market, packed in cartons of substan- tially the same size as those used by the National Biscuit Company, and in some cases of the same color, style of ornamentation, and general appearance, all having on the ends, printed in white letters upon red labels with clipped corners, a fanciful figure, known as the '* Factory Seal" NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 41 trade-mark, which the Ohio Baking Company, upon enter- ing the cracker business, for the first time adopted and began to use. This trade-mark was registered, the appli- cation being filed October 9, 1900. For the purpose of comparison, the two trade-marks are shown in the follow- ing illustrations, the vivid red background being desig- nated by the black background : I MH T •l-iiv ir' "•>■ «»^ 42 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 43 ■ The original suit was brought by the National Biscuit Company, to restrain the Ohio Baking Company and its officers from advertising or selling its goods in any pack- age having on it the * ' In-er-seaP ' trade-mark or any imi- tation thereof, or in any package dressed in imitation of one used by the National Biscuit Company, and for an ac- counting of the profits made by such unfair competition. On an application for a preliminary injunction. Judge Wanty restrained the defendant below, first, from using the **In-er-seaP' trade-mark upon cartons containing its bakery products, as shown in certain exhibits, or adver- tising or selling its bakery products in cartons containing thereon the * * In-er-seaP ' trade-mark or any imitation thereof ; and, second, from putting up and selling or offer- ing for sale the particular cartons shown in certain ex- hibits, or any other cartons resembling the complainant 's cartons as closely as they do. But this was not to be con- strued as restraining the defendant from selling cartons of the size, weight, and shape of the complainant's, nor from using the respective colors as wrappers, provided they were so differentiated in general appearance as not to be calculated to deceive the ultimate ordinary pur- chaser. There was an appeal from Judge Wanty 's order, and this court reversed the portion respecting the use of the ^^Tn-er-seaP' trade-mark or any imitation thereof, but affirmed the rest. Upon the return of the case to the Circuit Court, an application was made to Judge Severens for an attachment for contempt against the defendant below for putting out certain cartons in violation of the second part of Judge Wanty 's order, but Judge Severens dis- charged the rule, holding that the cartons did not present a general appearance so closely resembling the com- plainant's exhibit mentioned in the restraining order as to come within its terms. Afterwards the case came on for 42 NATIONAL BISCl IT COMl'ANY vs. OHIO BAKING COMPANY NATIONAL BISCUIT COMPANY r.s. OHIO BAKING COMPANY 43 The original suit was brought by the Xational Biscuit Company, to restrain the Ohio Baking Conii)any and its officers from advertising or selling its goods in any i)ack- age having on it the ^'In-er-seal" trade-mark or any imi- tation thereof, or in any package dressed in imitation of one used by the Xational Biscuit Comi)any, and for an ac- counting of the profits made by such unfair competition. On an application for a preliminary injunction, Judge Wanty restrained the defendant below, first, from using the ^*In-er-seaP' trade-mark upon cartons containing its bakery products, as shown in certain exhibits, or adver- tising or selling its bakery products in cartons containing thereon the ^^In-er-seaT^ trade-mark or anv imitation tliereof ; and, second, from putting up and selling or offer- ing for sale the particular cartons shown in certain ex- hibits, or any other cartons resembling the complainant's cartons as closelv as tliev do. But this was not to b(^ con- strued as restraining tlie defendant from selling cartons of the size, weight, and shape of the complainant's, nor from using the respective colors as wrappers, provided they were so differentiated in general appearance as not to l)e calculated to deceive the ultimate or No. 38:1 PETITION FOR WRIT OF CERTIORARI AND ORDER DENYING PETITION THOMAS A. BANNINcf EPHRAIM BANNING For Petitioners. CHARLES K. OFFIELD EARL D. BABST For Respondent. I y""^ Ma NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 51 Supreme Court of the United States. October Term, A. D. 1904. The Ohio Baking Company, Stephen C. Morris and George E. Collings, Petitioners, vs. National Biscuit Company, Respondent, On Petition for Writ of Certiorari directed to the United States Cir- cuit Court of Appeals for the Sixth Circuit. PETITION FOB WEIT OF CEETIORAEI. To the Honorable the Chief Justice and Associate Jus- tices of the Supreme Court of the United States: The petition of the Ohio Baking Company, a corpora- tion organized and existing under and by virtue of the laws of the State of Ohio, and Stephen C. Morris, treas- urer and general manager of said company, and George E. Collings, president of said company, respectfully represents and shows unto your Honors as follows : 1. That about the 1st day of March, 1900, the Na- tional Biscuit Company adopted what is generally known as its ''Iner SeaP' trade-mark — being the misspelled words *4nner seal," indicating that the package was sealed on the inside, and a purely arbitrary figure or de- sign—for use on various kinds of bakery products in- cluding biscuits, crackers, wafers, cakes, bread, snaps, jumbles, etc. The trade-mark has usually been printed on seals or labels which have been applied to the boxes, packages or cartons in which the goods were put up for the market. This seal or label has usually been applied to the end of the carton or package. The trade-mark has been printed on orange, green or red colored seals or C^T" 52 NATIONAL BISCUIT COMPANY v«. OHIO BAKING COMPANY labels. The trade-mark printed on one of the red end labels or seals appears as follows: 2. That in the bill of complaint charging infringe- ment of the complainant's '^Iner Seal" trade-mark, in the fourth paragraph of the bill, the characteristics, peculiarities, and distinguishing things and features of such *'Iner SeaP' trade-mark are stated and alleged to be the following: *'An oval-shaped figure separated centrally and hor- izontally in the direction of its greatest length by a bar, from which there rises centrally and at right angles thereto a perpendicular bar, which near its upper end is intersected by double horizontal cross-bars, thus forming what might be designated as a **double-T-sliaped'' figure or cross tree, while within said oval-shaped section and above the horizontal dividing-bar and to the left of the perpendicular intersecting bar appear the letters **I W and on the opposite side of said perpendicular intersect- ing bar and above said horizontal division-bar appear the letters **E E" the lower section of said oval-shaped figure having therein the word **Seal." 3. That the National Biscuit Company, registered its NATIONAL BISCUIT COMPANY va. OHIO BAKING COMPANY 53 **Iner Seal'* trade-mark in the Patent Office, the certifi- cate of registry being dated September 18, 1900, and num- bered 35,108, on an application filed May 12, 1900. The certificate of registry of such trade-mark will be found in the Record, following page 160. In the specification of such registration, which was sworn to, the National Bis- cuit Company stated the things in which the trade-mark consisted as follows: *'Said trade-mark consists of an arbitrarily selected design or symbol representing an oval-shaped figure sep- arated centrally and horizontally in the direction of its greatest length by a bar, from which there rises centrally and at right angles thereto a perpendicular bar, which near its upper end is intersected by double horizontal cross-bars, thus forming what might be designated as a ''double-T-shaped" figure or cross-tree, while within said oval-shaped section and above the horizontal dividing-bar and to the left of the perpendicular intersection bar ap- pear the letters ''IN" and on the opposite side of said perpendicular intersecting bar and above said horizontal division-bar appear the letters "E R" the lower section of said oval-shaped figure having therein the word ' ' Seal. ' ' And afterwards in said specification, after stating that the trade mark was not confined to the size of the end labels, nor to their application to the end of the package, nor to the shape of the label, nor to the size of the letters and figures, nor to the color of the letters and figures, nor to the color of the label or background, nor to the style of the letters, nor to the color of the border of the figure or the bars, nor to a white color for the letters or bars, the National Biscuit Company declared the real and essential features of the trade-mark in the following words : "The essential and paramount feature of said trade- mark consisting of an oval-shaped figure divided centrally and horizontally in the direction of its greatest length by a bar from which extends a perpendicular bar which is intersected near its upper end by two horizontal cross- 52 XATIONAT. RISrriT COMPANY vs. OHIO BAKING f'OMPANY lalx'ls. The trade-mark printed on one of the red end labels or seals appears as follows: 2. That in the bill of complaint charging infringe- ment of the complainant's ''Iner Seal'' trade-mark, in the fourth paragraph of the bill, the characteristics, peculiarities, and distinguishing things an«l features of such ''Iner Seal" trade-mark are stated and alleged to be the following: **An oval-shai)ed figure separated centrally and hor- izontally in the direction of its greatest length by a bar, from which there rises centrally and at right angles thereto a perpendicular bar, which near its upper end is intersected by double horizontal cross-bars, thus forming what might be designated as a ** double-T-shaped" figure or cross tree, while within said oval-shaped section and above the horizontal dividing-bar and to the left of the perpendicular intersecting bar appear the letters *^I N" and on the opposite side of said perpendicular intersect- ing bar and above said horizontal division-bar appear the letters *'E E" the lower section of said oval-shaped figure having therein the word *^Seal." 3. That the National Biscuit Company, registered its NATIONAL BISCL IT COMPANY is. OHIO BAKING COMPANY 53 **lner Seal" trade-mark in the Patent Office, the certifi- cate of registry being dated September 18, 1900, and num- bered 35,108, on an application filed May lli, 1900. The certificate of registry of such trade-mark will be found in the Record, following page 160. In the specification of such registration, which was sworn to, the National Bis- cuit Company stated the things in which the trade-mark consisted as follows: 'VSaid trade-mark consists of an arbitrarily selected design or symbol representing an oval-shaped figure sep- arated centrally and horizontally in the direction of its greatest length by a bar, from which there rises centrally and at right angles thereto a perpendicular bar, whicli near its upper end is intersected by double horizontal cross-bars, thus forming what might be designated as a *' double-T-shaped" figure or cross-tree, while within said oval-shaped section and above the horizontal dividing-bar and to the left of the perpendicular intersection bar ap- pear the letters '*! N" and on the opposite side of said perp(^ndicular intersecting bar and above said horizontal division-bar appear the letters '*E R" the lower section of said oval-shaped figure having therein the word * ' Seal. ' ' And afterwards in said specification, after stating that the trade mark was not confined to the size of the end labels, nor to their application to the end of the package, nor to the shape of the label, nor to the size of the letters and figures, nor to the color of the letters and figures, nor to the color of the label or background, nor to the style of the letters, nor to the color of the border of the figure or the bars, nor to a white color for the letters or bars, the National Biscuit Company declared the real and essential features of the trade-mark in the following words : '*The essential and paramount feature of said trade- mark consisting of an oval-shaped figure divided centrallv and horizontally in the direction of its greatest length by a bar from which extends a perpendicular bar which is intersected near its upper end by two horizontal cross- 54 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY bars, while within said oval-shaped figure and above said central horizontal bar appear the letters "I N^' and ''E K/' while below said horizontal dividing-bar appears the word * * ISeal. ' ' 4. That about the 1st day of August, 1900, your peti- tioner, the Ohio Baking Company, adopted what is gen- erally known as its *^ Factory Seal'' trade-mark, consist- ing of the monogram word **Ohio,'' being the designating or localizing w^ord of its corporate name. The words '^factory seal'' indicate that the package was filled and sealed at the factory so as to place responsibility in case the goods are found defective. The trade-mark has usu- ally been applied to cartons or packages containing bakery products by printing it upon the end seals. The founda- tion color of these end seals or labels from the commence- ment has been red. A sample of such end seals is sub- mitted as follows : NATIONAL BISCLIT COMl'ANY is. OHIO BAKING COMI'ANY 00 5. That your petitioner, the Ohio Baking Company, also registered its '* Factory Seal" trade-mark in the Pat- ent Office, the certificate of registry being dated Decem- ber 18, 1900, and numbered 35,597, on an application filed October 9, 1900. The certificate of registry of such trade- mark will be found in the back of the record. 6. That in December, 1900, the National Biscuit Com- pany filed its bill of complaint in the United States Cir- cuit Court for the Northern District of Ohio, Eastern Division, charging your petitioners wdth infringement of its **Iner Seal" trade-mark, applied to packages and car- tons of crackers and bakery products, by the use, by the Ohio Baking Company, of its *' Factory Seal" trade- mark, the monogram word ''Ohio," as shown in the sam- ple above. 7. That in January, 1901, a preliminary injunction order was entered by his Honor, Judge George P. Wanty, restraining your petitioners, first, ''from applying or using complainant's 'Iner Seal' trade-mark, in any man- ner whatsoever, upon or in connection with bakery prod- ucts," as shown in certain infringing packages 1, 2 and 3; and, secondly, from putting up or selling cartons or packages like the packages 1, 2 and 3 or others "w^hich shall, by reason of the collocation of size, shape, colors, lettering, spacing and ornamentation, present a general appearance closely resembling complainant's several ex- hibits respectively" as did the packages 1, 2 and 3, but at the same time the order provided that "this shall not be construed as restraining defendants from selling pack- ages or cartons of the size, weight and shape of complain- ant's packages, nor from using the respective colors as wrappers for such packages, provided such packages are so differentiated in general appearance from said com- pJainant's respective packages that they are not calcu- lated to deceive the ultimate ordinarv purchaser." (Rec- ord, 141-2.) 54 NATIONAL BISIM IT COMrANY rs. OHIO BAKING ( OMTANY l)ar8, wiiilc within said oval-shaped tigure and above said central horizontal bar appear the letters "1 N" and "E I\/' while below said horizontal dividing-bar appears the word "Seal." 4. That about tho 1st day of August, 19()i), your peti- tioner, the Ohio leaking Company, adopted what is gen- erallv known as its '* Factor v Seal" trademark, consist- ing of tin* monogram word ''Ohio," being the designating or localizing wor«l of its corporate name. The words **factory seal" indicate that the y)ackage was filled and sealed at the factory so as to place responsibility in case the goods are found defective. The trade-mark has usu- ally been applied to cartons or packages containing bakery products by printing it upon the end seals. The founda- tion color of these end seals or labels from the commence- ment has been red. A sample of such end seals is sub- mitted as follows: NATIONAL BlSei IT COMl'ANV / s. OHIO liAKLNiJ ( OMl'ANV 00 5. That your petitioner, the Ohio Baking C ompany, also registered its ^'Factory Seal" trade-mark in the Pat- ent Office, the certilicate of registry being dated Decem- ber 18, 1900, and numbered 3o,:)[)7, on an ai)plication tih^l October 9, 1900. The certificate of registry of such trade- mark will be found in the back of the record. 6. That in Decembia*, 1900, the National Biscuit Com- pany filed its bill of com])laiiit in the Cuited States Cir- cuit Court for the Northern District of Ohio, Eastern Division, charging your petitioners with infringement of its '4ner Seal" trade-mark, api)lied to packages and car- tons of crackers and bakerv ])roducts, bv the use, bv the Ohio Baking Company, of its ''Factory Seal" trade- mark, the monogram word ''Ohio," as shown in the sam- ple above. 7. That in January, 1901, a preliminary injunction order was entered by his Honor, Judge George P. Wanty, restraining your petitioners, first, "from applying or using complainant's 'Iner Seal' trade-mark, in anv man- ner whatsoever, upon or in connection with bakery ]»rod- ucts," as shown in certain infringing packages 1, '2 and 3; and, secondly, from putting up or selling cartons or packages like the packages 1, 2 and 3 or others "which shall, by reason of the collocation of size, shape, colors, lettering, spacing and ornamentation, present a general appearance closely resembling complainant's several ex- hibits respectively" as did the packages 1, 2 and 3, but at the same time the order provided that '*tliis shall not be construed as restraining (h^fendants from selling pack- ages or cartons of the size, weight and shape of com])lain- ant's packages, nor from using the respective colors as wrappers for such packages, provided such packages are so differentiated in general appearance from said com- plainant's respective packages that they are not calcu- lated to deceive the ultimate ordinarv purchaser." (Rec- ord, 141-2.) Hi fi: 56 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 8. That an appeal was taken from the injunction or- der entered by Judge Wanty on an assignment of errors, appearing at page 143 of the record, which appeal was argued in the United States Circuit Court of Appeals for the Sixth Circuit in due course, resulting in an order by said Court of Appeals reversing the decree of Judge Wanty, so far as the infringement of the trade-mark was concerned, but affirming his decision so far as simulating complainant's wrappers was concerned. In accordance with such order, a mandate was issued and tiled in the court below on the 24th day of June, 1901, as and for its judgment in the case. (Record, 147.) 9. That from the entry of the order of injunction by Judge Wanty until the 24th day of June, 1901, when the mandate was filed in the court below, your petitioner, the Ohio Baking Company, discontinued the use of its end seals containing its trade-mark — the monogram word *'Ohio'* — but when the mandate was filed on the 24th of June, 1901, it again began to use the same trade-mark — the monogram word **Ohio" — on its end labels precisely the same in every respect as it had used them before the decision of Judge Wanty; but it used such end labels and trade-marks on packages differing in the coloring and ornamentation of their wrappers from the original packages 1, 2 and 3, which had been enjoined. This was the only change made — the change in the wrap- pers. 10. That thereupon the National Biscuit Company moved before his Honor Judge Henry F. Severens, who was one of the judges who had heard and decided the case in the Court of Appeals, to have your petitioners at- tached for contempt of court ; and the charge and denial of contempt were argued before him, and on the 24th day of August, 1901, an order was entered by him dis- charging the rule to show cause, etc. The opinion of Judge Severens will be found at page 149 of the Record, NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 57 and the order entered under such opinion will be found at page 150. 11. That thereupon proof for final hearing was taken by the parties respectively and the cause brought on for argument before his Honor Judge Francis J. Wing, on the 27th day of March, 1903. Judge Wing ordered a decree to be entered against your petitioners both as to the infringement of the trade-mark and as to the simu- lation of the wrappers of the cartons or packages. This decree was entered on the 22nd day of May, 1903, and will be found beginning at page 153 of the Record. A perpetual injunction was granted restraining your peti- tioners both as to the trade-mark and as to the simula- tion, and the case referred to a Master for an assessment of damages and profits. 12. That your petitioners thereupon prayed an appeal from the order and decision of Judge Wing to the United States Circuit Court of Appeals for the Sixth Circuit, in which court the appeal was duly argued, and on or about the 21st day of January, 1904, decided by said court, affirming Judge Wing's decision. (Rec, 170; 127 Fed. Rep., 116.) 13. That your petitioner attach hereto and submit here- with, as a part hereof, a certified printed copy of the record and the opinion of the United States Circuit Court of Appeals affirming the decision of Judge Wing, as the same are on file in the office of the clerk of the United States Circuit Court of Appeals for the Sixth Circuit. 14. That your petitioners have been aggrieved, and, as they believe, a miscarriage of justice has been cau>sed in this case: By the confusion into which the Circuit Court and the Court of Appeals appear to have fallen as to the law relating to trade-marks proper and the law governing unfair competition; I' > i 58 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY By the conclusion of the Court of Appeals that the suit was not founded on the complainant's registered trade-mark, and, therefore, not subject to the same rides of construction as govern registered trade-marks; By giving to the complainant's ''Iner SeaV trade- mark, both in the Circuit Court and in the Court of Ap- peals, a broader construction than the complainant's pleadings and registration justified, inasmuch as the bill of complaint and the registration both stated that it con- sisted in certain things and features; By apparently considering that the bill was for un- fair competition in trade rather than for infringement of a technical trade-mark, and yet enjoining your peti- tioners as for the infringement of a technical trade-mark; By protecting the complainant in the use of its trade- mark when ''printed in white letters upon a vivid red background of a peculiar shade,'' notwithstanding the statements of the complainant's registration that the color of the end labels or seals was immaterial; By giving the complainant a practical monopoly of the color red as a background for end seals or labels; By finding infringement of the ''Iner Seal" trade- mark because the ''Factory Seal" trade-mark was print- ed in white letters on a red background; By protecting the complainant in the use of red for its end seals or labels notwithstanding it was not using red end seals exclusively at the time the Ohio Baking Company began to wse red end seals or labels, but was using other colors as well; By not holding that the complainant had aisentitled itself to relief in equity for unfair competition in view of the evidence that it had adopted "substantially all col- ors" (Q. 24, Rec. 13) for the wrappers of its cartons or packages, thus seeking to monopolize all colors; By holding that the "Factory Seal" trade-mark when NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY 59 printed on a red background and applied to the ends of cracker or biscuit cartons was an infringement of the "Iner Seal" trade-mark, thus attaching importance to the color of the background on the trade-mark branch of the case; By attaching importance in the trade-mark branch of the case to the manner in which the "Factory Seal" trade-mark had been used; By holding that there had been an improper simula- tion of the complainant's wrappers in view of the fact that the complainant, in order to match up the color and appearance of the defendant's packages 1, 2 and 3, held to be an improper simulation, was obliged to bring in packages from its Chicago and Toledo factories; By holding that the "careless purchaser asking for a box 'of those red seal crackers' would take the 'Factory Seal' goods, thinking he was getting the 'Iner Seal' goods," thus making the action of a careless person in- stead of an ordinary purchaser determinative of the probability of deception; By disregarding the fact that the red color, white fig- ures and letters, clipped corners, size of seal, etc., were shown by the evidence to be matters of utility instead of mere fancifid or arbitrary features; By applying the abstract principle "that as to do- mestic commerce a person might adopt and use a differ- ent trade-mark than that registered" to this case where the complainant has not adopted and has not used a "different" trade-mark, but identically the one regis- tered; and By affirming the decision of Judge Wing and in not reversing such decision. Wherefore, your petitioners pray tliat this Honor- able Court will take cognizance of the matters herein set forth and referred to and will grant unto your peti- tioners a writ of certiorari requiring said cause and the r 1 I ! 60 NATIONAL BISCUIT COMPANY vs. OHIO BAKING COMPANY record thereof to be certified to it by the United States Circuit Court of Appeals for the Sixth Circuit, for its review and determination, pursuant to the provisions of the statute in such case made and provided, and that your petitioners may have such other and further relief in the premises as the nature and circumstances of their ease may require. And your petitioners will ever pray, etc. The Ohio Baking Co., Gteorge E. Collings, Stephen C. Morris. United States of America, Northern District of Ohio, State of Ohio, Cuyahoga County, ss: George E. Collings, president of the Ohio Baking Company, one of the above named petitioners, being duly sworn, upon oath says that he has read the foregoing petition and knows the contents thereof and that the same is true in substance and matter of fact. George E. Collings. Subscribed and sworn to before me this 2nd day of September, 1904. F. T. Sholes, (seal) Notary Public. • We hereby certify that the foregoing stated grounds in support of the petition for a writ of certiorari in the above entitled cause, are, in our opinion, well founded in point of law. Thomas A. Banning, Ephraim Banning, Counsel for Petitioners. national biscuit company vs. OHIO baking company 61 ORDER DENYING PETITION. Supreme Court of the United States. No. 382, October Term, 19U4. The Ohio Baking Company ei ah, Petitioners, vs. National Biscuit Company >v J On petition for writ of certiorari to the United States Circuit Court of Appeals for the Sixth Circuit. On consideration of the petition for a writ of certiorari herein to the United States Circuit Court of Appeals for the Sixth Circuit, and of the argument of counsel there- upon had, as well in support of as against the same. It is now here ordered by the Court that said petition be, and the same is hereby denied. October 17, 1904. A true copy. Test: James H. McKenney, Clerk of the Supreme Court of the United States, 195 U. S., 630. ^l^^ ^ jWll il lll Itatnrt Court of tlj? l^nxtth ^tatf a Norther:n^ District of Ohio Eastern Division NATIONAL BISCUIT COMPANY ^ Complainant, rs. THE OHIO BAKING COMPANY, STEPHEN C. MORRIS and GEORGE E. COLLINGS. Ifefendants. > IN EQUITY ORDER FOR FINAL DECREE OFFIELD, TOWLE, GRAVES & OFFIELD EARL D. BABST For Complainani. KLINE, CLEVENGER, BUSS & HOLLIDAY For Defendants. NATIONAL BISCUIT COMPANY rs. OHIO BAKING COMl'ANY ORDER FOR FINAL DECREE. 65 The United States of America, Northern District of Ohio, Eastern Division. ss. At a stated term of the District Court of the United States, within and for the Eastern Division of the North- ern District of Ohio, begun and held at the City of Cleve- land, in said District, on the first Tuesday in October, being the 7th day of said month, in the year of our Lord one thousand nine hundred and thirteen, and of the Li- dependence of the United States of America, the one hundred and thirty-eighth, to-wit: on Monday, the 3rd day of November A. D. 1913. Present: — Honorable William L. Day, United States District Judge. Among the proceedings then and there had were the following, to-wit : National Biscuit Company ^ vs. y No. 5. Equity. vs. r The Ohio Baking Company et al. J Pursuant to stipulation filed by counsel in this cause, It is ordered, that the defendants having made settle- ment of all claims for profits, damages and costs and otherwise, arising hereunder, the reference to the Mas- ter shall be withdrawn, and the interlocutor^^ decree here- tofore entered in this cause be made final, such decree having been affirmed by the United States Circuit Court of Appeals for the Sixth Circuit, upon appeal, and the Supreme Court of the United States having refused to disturb said decree upon certiorari petition filed by de- fendants ; and it is further ordered that the plaintiff shall pay all costs herein, as taxed by the Court, now remain- ing unpaid. 66 NATIONAL BISCLIT COMl'ANY r«. OHIO BAKING COMPANY The United States of America,] Northern District of Ohio, [ss. Eastern Division. J I, B. C. Miller, Clerk of the District Court of the United States, within and for said District, do hereby certify that 1 have compared the within and foregoing transcript with the original '^ Order for Final Decree'' en- tered upon the Journal of the proceedings of said Court in the therein entitled cause, at the term, and on the dav therein named; and do further certify that the same is a true, full and complete transcript and copy thereof. Witness, my official signature, and the seal of said Court at Cleveland, in said District, this 5th day of No- vember, A. D. 1913, and in the 138th year of the Inde- pendence of the United States of America. B. C. Miller, Clerk. By Anna H. Elliott, Deputy Clerk. ©irrutt Qlnurt at % llnttrb S^tatPB Western District of New York NATIONAL BISCUIT COMPANY Complahwnt, i». WILLIAM DEININQER, HENRY E. DEIN- INGER, LOUIS C. DEININQER and FREDERICK C. J. DEININOER, co- partners, and doing business under the firm name and style of DEININOER BROTHERS, Defendants. IN EQUITY DECREE AND INTUNCTION charles k. offield adelbert moot earl d. babst For Coiiiplainaut. FREDERICK F. CTIURCH for Defendants. •T^ 68 NATIONAL BISCUIT COMPANY vs. DEININGER r Final Decree. NATIONAL BISCUIT COMPANY V8, DEININGER 69 FINAL DECREE. United States CiRCinx Court. Western District of New York. National Biscuit Company, vs. William Deininger, Henry E. Deininger, Louis C. Deininger, and Frederick C. J. Deininger, copartners and doing business under the firm name and style of Deininger Brothers. This cause coming on to be heard upon the pleadings as filed, Mr. Charles K. Offield appearing in behalf of the complainant and Mr. Frederick F. Church in behalf of defendants, and it appearing to the Court that said defendants do not desire further to contest or defend this action, but admit the truth of the allegations in the bill of complaint ; and the said defendants have tendered and paid the costs to the date of this cause as taxed by the clerk, and also have settled and paid the damages caused to complainant by the commitment of the un- lawful acts as set forth in the bill of complaint; and that no remaining question is presented except the mat- ter relating to the granting of an injunction. It is there- fore ordered, adjudged and decreed that an injunction issue under and in accordance with the allegations of, and the prayer of, the bill of complaint filed herein, and that this decree and order be, and is final. John E. Hazel, U, S, J. Endorsed: Circuit Court of U. S., Western Dist. of N. Y., National Biscuit Company agst William Deininger et al. Final Decree. Adelbert Moot, Counsel for plain- tiff, 45 Erie County Savings Bank Building, Buffalo, N. Y., U. S. Circuit Court, Western Dist. of N. Y. Filed Jul. 30, 1901. Harris S. Williams, Clerk. (38 NATlONAr. HISC'LIT COMPANY vs. TtFASl'SiiKH NATIONAL BISCTIT rOMPANY vs. DEININflER 69 r Final Decrcf^. FINAL DECREE. United States Circuit Court. AVestern District of New York. National lUseuit Company, vs. William Duininger, Henry E. Deining-er, Louis C. Deininger, ane, and is final. John R. Hazel, U. S. J. Endorsed: Circuit Court of IL S., Western Dist. of N. Y., National Bis(*uit Company a(jst William Deininger et al. Final Decree. Adelbert Moot, Counsel for plain- tiff, 45 Erie County Savings Bank Building, Buffalo, N. Y., IT. 8. Circuit Court, Western Dist. of N. Y. Filed Jul. 30, 1001. Harris S. W^liams, Clerk. \A 1 I i III <. 70 NATIONAL BISCUIT COMPANY vs. DEININGBR United States of America, | gg [Western District of New York. J I, Harris S. lYilliams, Clerk of the Circuit Court of the United States, for the Western District of New York, do hereby certify that I have compared the annexed oopy of Final Decree in re National Biscuit Company vs, Will- iam Deininger et al. with the original entered and on file in this office, and that the same is a correct transcript tlierefrom, and of the whole of said original. And I further certify that I am the officer in whose custody it is required by law to be. In Testimony Wliereof, I have caused the seal of the said court to be affixed at the City of Buffalo, in said District, this 27th day of May, A. D. 1904. Harris S. Williams, Clerlz, n i' NATIONAL BISCUIT rOMI'ANY vh. DEININC.ER 71 ^^wam.^*m \ 70 NAIKKXAI. ItLSCnr COMPANY vs. liKININGKH TJkitki) Statks of America, \ ^g ?^esti:hx Disthict of New York.( ' T, ITarris S. AVilliams, Clerk of tlie Circuit Court of the T^uitcd States, for the AVesterii District of N<'w York, do licreby certiiy that 1 liave coiny)ared the annexed copy of Final Decree in re National Biscuit Comi)aiiy vs. Will- iam Deiiiino-cr cf ^,/. ^vith tlie original entered and on file in tliis office, and that the same is a correct transcript tlierefrom, and of the whole of said orio:inal. And T further certify that I am the officer in whose custody it is required hy law to be. In Testimony A^liereof, I have caused the seal of the said court to he affixed at the City of Buffalo, in said District, this 27th day of May, A. *D. 1904. Harris S. AVilliams, Clerk, national ius< nr ( omtany is. iu.inincku 71 ^'t'^ii;^ 5i\vO*- o\xnyi. S;i^. IN EQUITY OPINION, INJUNCTION AND ORDER MAKING INJUNCTION PERPETUAL OFFIELD, TOWLE & LINTIIICUM EARL D. BABST For Complainant. W. p. FENNELL For Defendants. V NA'i K>NAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY / i OPINION. In the United States Ciecuit Coukt/ Northern Distbict of Illinois, Northern Division. KOHLSAAT, District Judge. No. 26,043. This matter comes on for hearing upon complainant's motion for a preliminary injunction restraining defend- ant corporation and the individual defendants from the use of the word ^*Dake'' either alone or in connection with other words, upon or with reference to crackers or other bakery products. I am of the opinion that the moving papers establish the property right in complainant to the use of the word **Dake'' in connection with bakery products. Several de- fenses are interposed among which is that of abandon- ment. This I consider an affirmative defense, the burden of establishing which is upon defendants. The affidavits on this point are conflicting, but I deem the showing as to continued, though diminished, use by complainant, not overcome by defendants' affidavits. The other defenses I do not think available. A preliminary injunction may be entered, restraining defendants from using the word ^^Dake" in connection with bakery products, either alone or with prefixes or suffixes. See International Silver Co. v, Kogers Co. et al., 110 Fed., 955. (Endorsed) Filed May 25, 1904, Marshall E. Samp- sell, Clerk. ' ( ! -11 78 NATIONAL BISCUIT COMPANY vs. DAKE CRACKER ( OMPANY Northern District of Illinois,! . Northern Division. ) ^^* I, Marshall E. Sampsell, Clerk of the Circuit Court of the United States for said Northern District of Illinois, do hereby certify the above and foregoing to be a true and complete copy of tke Opinion, filed in said Court on the 25th day of May A. D. 1904, in the cause wherein Na- tional Biscuit Company is the complainant and Dake Cracker Co. et al. are the defendants as the same ap- pears from the original records thereof now remaining in my custody and control. In Testimony whereof, I have hereunto set my hand and affixed the seal of said Court at my office in Chicago, in said District, this 26th day of May, A. D. 1904. Marshall E. Sampsell, Clerk, national biscuit company v8. dake cracker company 79 INJUNCTION. Circuit Court of the United States of America, Northern District of Illinois, J-ss. Northern Division. THE UNITED STATES -OF AMERICA, To Dake Cracker Company, a corporation, and J. A, Bernard Hossack, William P. Fennell and Abel L. Al- len, doing business jointly with and as officers and man- agers of Dake Cracker Company, and to your Coun- selors, Attorneys, Solicitors, Trustees, Agents, Clerks^ Employes, Servants and Workmen, and to each and every of you. Greeting: Whereas, it hath been represented to the Judges of our Circuit Court of the United States for the Northern Division of the Northern District of Illinois in Chancery sitting, on the part of National Biscuit Company, com- plainant in its certain bill of complaint, exhibited in our said Circuit Court, on the Chancery side thereof, before the Judges of said Court, against you, the said Dake Cracker Company, a corporation, and J. A. Bernard Hos- sack, William P. Fennell and Abel L. Allen, doing busi- ness jointly with and as officers and managers of Dake Cracker Company, to be relieved touching the matters complained of. In which said bill it is stated, among other things, that you are combining and confederating with others to injure the complainant touching the mat- ters set forth in said bill, and that your actings and doings in the premises are contrarj^ to equity and good conscience. And it being ordered that a Writ of Pre- liminary Injunction issue out of said Court, upon said bill, enjoining and restraining you, and each of you, as prayed for in said bill; We, therefore, in consideration 80 NATIONAL BISCUIT COMPANY vs. DAKE CRACKER COMPANY thereof, and of the particular matters in said bill set forth, do strictly command you, the said Dake Cracker Company, a corporation, and J. A. Bernard Hossack, William P. Fennell and Abel L. Allen, doing business with and as of- ficers and managers of Dake Cracker Company, your Counselors, Attorneys, Solicitors, Trustees, Agents, Clerks, Employes, Servants and Workmen, and each and ever>^ of you, that you do absolutely desist and refrain FROM in any manner whatsoever, manufacturing, han- dling, using, selling or advertising the bakery products all packages containing thereon, or in connection there- with your orator's said trade-mark or name, or any imita- tion or simulation thereof; also, from using your orator's trade name or mark on any package of any description, or any simulation or imitation thereof, upon any wrapper, box, carton, or barrel, or by any means whatsoever that may be adopted in the sale of bakery products of any description, that may be in any way calculated to de- ceive and otherwise enjoining and restraining in every way the said defendant from fraudulently using said trade-mark, or trade name, or any simulation or imita- tion thereof in the manufacture, use or sale of bakery products, or from violating or infringing tlie equitable rights of your orator in the premises herein complained of and set forth, or from using the word *^Dake" in con- nection with bakery products, either alone or with pre- fixes or suffixes, until this Honorable Court, in Chancery sitting, shall make other order to the contrary. Hereof fail not, under the penalty of what the law directs. To the Marshal of the Northern District of Hlinois, to execute and return in due form of law. Witness The Hon. Melville W. Fuller, Chief Justice of the IJnited States of America, at Chicago, in said Dis- trict, this 30th day of December, in the year of our Lord NATIONAL BISCUIT COMPANY vs. DAKE (RANKER COMPANY 81 one thousand nine hundred and one and of our In- dependence the one hundred and twenty-sixth year. S. W. BURNHAM, Clerk. Northern District of Illinois,! Northern Division. j I, S. W. Burnham, Clerk of the Circuit Court of the United States, for said Northern District of Illinois, do hereby certify the above and foregoing to be a true and complete copy of an Injunction Writ issued out of this Court on the 30th day of December, A. D. 1901, in the cause wherein the National Biscuit Company is the com- plainant and the Dake Cracker Company et al. are the defendants, as the same appears from the original issued out of and under the seal of this Court. In Testimony Whereof, I have hereunto set my hand and affixed the seal of said Court at my office in Chicago, in said District, this 30th day of December, A. D. 1901. S. W. Burnham, Clerk. 82 NATlONAr. 151SCL1T COMPANY 08. DAKE CRACKKR COMPANY i PJ •in I ORDER MAKING INJUNCTION PERPETUAL. Circuit Court of the United States, Northern District of Illinois, Northern Division. May 28, 1902. Present, Hon. Christian C. Kolilsaat, District Judge. National Biscuit Company vs. . ^.. ^v^^..^ . Dake Cracker Company and J. A. [Bill for Infringement Bernard Hossack. J of Trade Name, etc. 26,043. In Equity. This cause coming on to be heard this 28th day of May, 1902, upon the pleadings as filed, Messrs. Offield, Towle & Linthicum, attorneys for and appearing in behalf of said complainant, the National Biscuit Company, and Mr. W. P. Fennell, attorney for and appearing in behalf of the defendant; and it appearing to the Court that said defendants do not desire further to contest or defend this action, and admit the truth of the allegations of the bill of complaint ; and that said defendants have tendered and paid the costs in this action as taxed by the clerk, and have also settled for and paid to complainant the damages caused to plaintiff by the commitment of the unlawful acts as set forth in the bill of complaint, and that no remaining question is presented except and re- lating to the matter of the granting of the injunction therein. It is therefore ordered, adjudged and decreed that the preliminary injunction heretofore granted in this case is hereby made ]>erpetual, and that this decree and order be, and is, final. , NATIONAL BISCUIT COMrANY vs. DAKK CUACKKK COMPANY 83 Northern District of Illinois,) Northern Division. i ss. I, Marshall E. Sampsell, CHerk of the Circuit Court of the United States for said Northern District of Illinois, do hereby certify the above and foregoing to be a true and complete copy of the order entered of record in said Court on the 28th day of May, A. D. 1902, in the cause wherein National Biscuit Company is the complainant and Dake Cracker Company et al. are the defendants, as the same appears from the original records thereof now remaining in my custody and control. In Testimony Whereof, I have hereunto set my hand and affixed the seal of said court at my office in Chicago, in said District, this 26th day of May, A. D. 1904. Marshall E. Sampsell, Clerk. II m 'i aitrrmt (Howrt at % Init^h BtuUB Middle District of Pennsylvania NATIONAL BISCUIT COMPANY ^ Complainant, '•"*. LAWRENCE WALTER Defendant. IN EQUITY ORDER, INJUNCTION AND DECREE CHARLES K. OFFIELD EARL D. BABST H. C. REYNOLDS For Complainant. S. J. STRAUSS For Defendant. 86 NATIONAL BISCUIT COMPANY vs. WALTER GRAHAM CRA CKERS, m I ■ ";: NATIONAL BISCUIT COMrANV i .<. WALTER S7 I I United States Circuit Court, \ Middle District of Pennsylvania.] National Biscuit Company, Complainant, vs. Lawrence Walter, Defendant. ■^ >- In Equity. Motion for Injunction. INJUNCTION OKDEK. This cause coming on to be heard upon the 21st day of May, A. D. 1902, at 10 o'clock a. m., upon motion for in- junction as filed, and upon the pleadings and affidavits filed herein, Messrs. Charles K. Offield and H. C. Eey- nolds, solicitors and of counsel for the motion, and S. J. Strauss for the defendant, the court having duly con- sidered the same. And it appearing to the court, from a bill of com- plaint, exhibits and affidavits filed herein, that the mo- tion should be granted: It is, therefore, ordered, adjudged and decreed that a preliminary injunction issue under, and in accordance with the allegations of, and the prayer of the bill of com- plaint filed herein, to continue in effect until the next term of this court. B. A. Archbald, District Judge, s(; NAIRJ-NAI. r.lSC I 1 r CUMrANY ».v. WALTKK NATIONAL I'.ISniT ( OMI'ANV is. WAL'IKK bl United States C'ikclit ("oikt, | Middle Disthut ok J*exnsvl\axia.j National Biscuit Conijjauy, CompJahiaHt, Lawrence AValter, Def('}i(J \^ Qi vW' «=> \^^^ ^o.^ jc NATIONAL RISniT COMPANY vs. SWKTv 95 jSSraSk^^MSSSSv^ ^^►"•' •%a\\at\a\S>v&o»\\. Co FXCELSIOH U BUTTER. tdmimm-mmttttm ^XCELSm — ^ T/ff OHIO BAKinC CO. 96 NATIONAL BISCUIT COMPANY vs, SWICK '(W«r|nB.'r^rife'^:^- »*( *-&- «v' «iBi' ^t-i «■*. laii *^, ^^^;^^,5J^jf^*t ^^^„>«.it_ ,,n.y^ .«SLirs .i^i* •*» ,;«.» .x*> rr •»--%'a''Tv'*'^ - "»^^ iT" - •'"' - '■"' * I NATIONAL BISCUIT COMPANY r«. SWICK 97 Stipulation for Injunction. Circuit Court of the United States, Western District OF New York. National Biscuit Company, Complainant, vs, Ira Swick, Defendant, In Equity. It is hereby stipulated and agreed by and between the above parties, by their counsel, respectively, that an injunction may be entered in the above entitled cause against the defendant enjoining him from using the ''Long Branch Biscuit Eibbon-Tying" design, the trade- mark or name ' ' Zephyrette, ' ' and the trade-mark or name *' Excelsior" or *' Excelsior Butter Cracker" as prayed for in the bill of complaint in the above entitled cause, but without costs, profits or damages to which the com- plainant might be entitled for the past, the same hav- ing been mutually agreed upon and arranged. It is further stipulated and agreed that the Ohio Bak- ing Company, manufacturer of the cartons and packages sold by the defendant containing the above mentioned trade-marks, names or designs, shall cease and discon- tinue the use of each of the above trade-marks, names or designs on or before the First day of Januar>% 1902, and in consideration thereof the complainant hereby releases and quit claims under said agreement and arrangement the said Ohio Baking Company from any and all claim 96 NATIONAL BISCUIT COMPANY cs. SWlCK IL^ •^rV-^ ^^^;^S^;^^£|^::^CA^-^C^^^^-^^ L^ n-T" :*v2^ mi^ i^r<^*G5i NATIONAL I?IS( T IT COMTANY is. SWK K 97 Stipulation for Injunction. Circuit Coukt of the United States, Western District OF New York. National Biscuit Company, Complainant, vs. Ira Swick, Defendant. In Eijuity. It is hereby stipulated ami agreed by and between the above parties, by their counsel, respectively, that an injunction may be entered in the above entitled cause against the defendant enjoining him from using the *'Long Branch Biscuit Hibbon-Tjdng" design, the trade- mark or name ^'Zephyrette," and the trade-mark or name '* Excelsior" or ''Excelsior Butter Cracker" as prayed for in the bill of complaint in the above entitled cause, but without costs, profits or damages to which the com- plainant might be entitled for the past, the same hav- ing been mutually agreed upon and arranged. It is further stipulated and agreed that the Ohio Bak- ing Company, manufacturer of the cartons and packages sold by the defendant containing the above mentioned trade-marks, names or designs, shall cease and discon- tinue the use of each of the above trade-marks, names or designs on or before the First day of January, 1902, and in consideration thereof the complainant hereby releases and quit claims under said agreement and arrangement the said Ohio Baking Company from any and all claim 98 NATIONAL BISCUIT COMPANY vs. SWICK for damages or profits which it might have against said Company on account of its use prior to January 1, 1902, of each of said trade-marks, names or designs whether used on packages, sold to the defendant herein or others. OfFIELD, ToWLE & LlNTHICUM, Solicitors for Complainant. Banning & Banning, Solicitors for Defendant, I NATIONAL BISCUIT COMPANY vs. SWICK 99 (United States Circuit Court, Western Division New York. March 17, 1903.) No. 134. 1. Trade-Marks — Infringement. A technical trade-mark, although not a facsimile of another, may be so used by a rival manufacturer as to imitate another's trade- mark, and, when such use actually deceives the public, it consti- tutes an infringement, against which a court of equity will grant relief. 2. Same. Complainant used and registered a trade-mark consisting of a square label or seal of a vivid red color, with the corners clipped, on which was an arbitrary combination of straight and curved lines in white, in which were printed the letters and word "In-er-seal." These labels were placed on the ends of complainant's cartons con- taining bakery products. Another manufacturer of the same class of goods, registered as a trade-mark, and used in the same manner on its cartons, a label the same in size, shape, and color, having thereon a combination of white lines consisting of circles and straight lines with the words "Factory" and "Seal" printed thereon. The figure or symbol was not the same, but the general effect of the combination in a label used in the same place on a carton of the same size, shape, and color, together with a similar figure and the word "Seal," was to simulate the trade-mark of complainant, and to deceive purchasers. Held, that such use of defendant's trade- mark was an infringement of that of complainant, which entitled it to an injunction. In Equity. Suit for infringement of trade-mark. On final hearing. Moot, Sprague, Brownell & Marcy, Offield, Towle & Linthicum, and Earl D. Babst (Charles K. Offield, of counsel), for complainant. Banning & Banning and Benjamin C. Starr, for defendant. HAZEL, District Judge. The bill as originally filed, charges the defendant with unlawful infringement of a trade-mark and five trade-names used by com- plainant upon its various bakery products. A stipulation was filed before answ^er, admitting in- fringement by defendant as to five of the trade- names. Accordingly a decree was entered by con- 100 NATIONAL BISCUIT COMPANY V8, SWICK sent of all parties restraining and enjoining tlie future use of such trade-names by the defendant. The alleged infringement by the defendant of complainant's *^In-er- seaP' registered trade-mark No. 35,108, dated Septem- ber 18, 1900, is now the sole and specific subject for judi- cial determination. COMPLAI N AXT 's TrADE-M ARK. \ NATIONAL. BISCUIT COMPANY vs. SWICK 101 Defendant's Trade-mark. The defendant's infringement consists in the use of the registered trade-mark No. 35,597, dated December 18, 1900, issued to the Ohio Baking Company. The proofs show that complainant manufactures vari- ous kinds of bakery products, which it places upon the market in special and distinct sizes of cartons or packages. Such cartons and packages widely vary in form and col- oring, and are lettered on their sides in different size tjT)e. Upon the ends of each package or carton is applied the trade-mark printed upon a square label or seal, clipped at the corners, in clear white lines upon a vivid red back- ground. The proofs further show that the trade-mark seal has since its adoption regularly been applied to the ends of the cartons in the manner described, except in a few instances. Complainant contends that its product has 100 NAIIONAL r. ISC III" ('C).MrAXV r.s. SWK'K sent of all parties rest raining and enjoining the future use of such trade-names bv the defendant. The alleged infringement bv the defendant of complainant's *'ln-er- seal" registered trade-mark X-o. 35,108, dated Septem- ber IS, 11)00, is now the sole and speeitic subj<'ct for judi- cial deternnnatioii. ( Om PLAI N ax 1 's ThAI)K-M AKK. NATIONAL BlSCnX COMI'ANY rs. SWICK 101 De FE N 1 yA X T 's T KA DE- M AK K. The defendant's infringement consists in the use of the registered trade-mark No. :]5,597, dated Decend)er IS, 1900, issued to the Ohio Baking Company. The proofs show that complainant manufactures vari- ous kinds of bakery i)roducts, which it places upon the market in special and distinct sizes of cartons or packages. Such cartons and packages widely vary in form and col- oring, and are lettered on their sides in different size type. T^pon the ends of each package or carton is applied the trade-mark printed upon a square label or seal, clipped at the corners, in clear white lines upon a vivid red liack- ground. The proofs further show that the trade-mark seal has since its adoption regularly been applied to the ends of the cartons in the manner descnbed, oxcept in a few instances. Complainant contends that its product has f 'I f I' 102 NATIONAL BISCUIT COMPANY vs. SWICK become well known to the general public because of the peculiarly quaint configuration of its trade-mark, which is uniquely displayed. The bill charges the adoption of the trade-mark on or about the month of March, 1899, and its subsequent registration in the office of the Commis- sioner of Patents May 12, 1900. It is specifically de- scribed as — *^An arbitrarily-selected design or symbol representing an oval-shaped figure separated centrally and horizontally in the direction of its greatest length by a bar, from which there rises centrally and at right angles thereto a perpen- dicular bar, which near its upper end is intersected by double horizontal cross-bars, thus forming what might be designated as a ^double-T-shaped' figure or cross-tree, while with said oval-shaped section and above the hori- zontal dividing-bar and to the left of the perpendicular intersecting bar appear the letters *I N,' and on the op- posite side of said perpendicular intersecting bar appear the letters ^E R,' the lower section of said oval-shaped figure having therein the word * Seal. ' ' ' The specification describes and the drawings show the design as applied upon a rectangular background, the cor- ners thereof being clipped or irregular. The specification states a preference for the employment of a bright red or orange-colored background in connection with the trade- mark design with the figures and lines printed in white. The specification further says that the purpose and ob- ject of the peculiarity of the design is to produce a con- spicuous effect, securing the greatest possible [)rominence. The design is usually printed on the labels attached to the ends of the cartons or packages containing complainant's product. This arbitrary and fanciful designation was first appropriated by complainant as a trade-mark for its bakery product, and it is, therefore, entitled to protection from infringement. It quite clearly appears from the evi- dence that complainant's trade-mark has been extensively advertised at large expense throughout the United States I NATIONAL BISCUIT COMPANY vs. SWICK 103 and in the locality where the defendant carries on his business of selling bakery products, and where the alleged infringing trade-mark is asserted to have been fraudu- lently used. The defendant is a dismissed employe of the complainant. He w^as well acquainted with complainant's customers in the territory where the alleged infringements were committed. Soon after his dismissal from com- plainant's employ, he commenced to divert the trade of complainant by introducing the bakery product of a com- petitive manufacturer, and finally simulated complain- ant 's trade-mark, as a result of which his sales increased. Defendant's bakery product is manufactured by the Ohio Baking Company, and is put upon the market wrapped up in carton form, sealed at the ends, and having a vivid red rectangular label at each end, clipped at the corners. Upon the seals or square labels is imprinted in distinctive white lines the registered trade-mark of the Ohio Baking Company, above set forth. The labels upon which is printed the infringing device as to color, size, and irregu- lar shape are in similitude of complainant's labels or seals. The configuration of the infringing trade-mark consisting of curved and straight lines, flaring at the ends in resemblance of complainant's lines, is more particularly described in the specification as consisting of three paral- lel vertical bars and central cross-bar and two circles ar- ranged in the manner show^n by the figure itself. Defend- ant claims that the Ohio Company trade-mark really con- sists of a fanciful monogram of the w^ord **Ohio," and that he has the right to use it in any size, shape, and color. Prominently appearing in defendant's label are the words ^* Factory" at the upper end and **Seal" at the lower end. This also would appear to be in simulation of the word **In-er-seal" printed on complainant's device. The pack- ages or cartons of both complainant and defendant have ( ! M 104 NATIONAL BISCUIT COMPANY V8, SVVICK printed matter upon their sides, indicating tlie character of their contents and the name of the manufacturer. The form of the package and style of type and color of wrap- per are concededly the property of the public, as, indeed, are the labels clipped at the comers having a bright red background. No point is made to any similitude of car- tons, style, or color of print, nor even of the separate features of complainant's trade-mark. The defendant contended generally on argument that the specifically de- fined trade-mark of complainant as to its general features and characteristics must be interpreted as limiting its scope to that which is actually described. If this conten- tion means that complainant is restricted to the use of the trade-mark, and has obtained no exclusive right in the collocation of its parts and the distinguishing features by which the trade-mark has become known to the public, such contention is without merit. The gist of the com- plaint is a violation of a trade-mark, which is composed of a peculiar configuration of lines and a combination of other features. In other words, the distinguishing char- acteristics of the trade-mark consist in the circles and straight lines in relation to each other, and printed upon the label in white and upon a vivid red background. In the case of Lalance & Grosjean Mfg. Co. v. National Enameling & Stamping Co. (C. C), 109 Fed. 317— a case of unfair competition — it was held that no one can have a trade-mark monopoly of any color of paper, or any shape of label, or any color of ink, or any one or other detail, yet the general collocation of such details will be protected. The sole question, therefore, is whether the defendant's design for a trade-mark imprinted on a vivid red background in simulation of complainant's design is fairly within complainant's asserted exclusive scope. That complainant's trade-mark and manner of displaying the NATIONAL BISCUIT COMPANY vs. SWICK 105 same attracts the public attention cannot be successfully disputed. Undoubtedly, complainant 's manufactured product has become extensively known to the public solely by its peculiar trade-mark. I have no doubt that an in- tending purchaser of complainant's product using ordi- nary care is attracted to the arbitrary trade-mark design, and not to any printed words on the sides of the pack- ages, or even to the nomenclature of the manufacturer of the product. When both designs were exhibited on the hearing, I became well satisfied that defendant's device and manner of apphing it in combination with the other features are in imitation of complainant's. Such resem- blance tends to deceive an ordinary purchaser giving the usual attention, and causes him to purchase the one be- lieving it to be the other. Although defendant's device and configuration is not in strict resemblance to complain- ant 's, yet force is given to the impression which I ob- tained on the hearing because of the adoption by defend- ant of a bright red background and a label clipped at the comers of corresponding size to that of complainant. The record discloses that the trade-mark seal of the de- fendant and the manner of displaying it upon the ends of cartons and packages is likely to deceive the ordinary purchaser into the belief that he was purchasing the prod- uct of complainant. By the testimony of defendant's wit- ness Gaiser, a grocer, it appears that an intending pur- chaser must make a close examination of both packages in order to distinguish defendant's packages and cartons from complainant 's. The witness was unable at the hear- ing, when both packages were exhibited to him, to dis- cover much difference, and was compelled to look for the name of the manufacturer to distinguish the product of complainant from that of defendant. Other evidence was given by complainant upon the hearing showing the sim- I 106 NATIONAL BISCUIT COMPANY r«. SWICK ilitude of the respective trade-marks to be such as to de- ceive the public into buying the bakery product of defend- ant under the impression that they are buying those of complainant. Irrespective, however, of such proof, the trade-mark imprinted upon a bright red-colored label, clipped at the corners, and of corresponding size to com- plainant 's is alone calculated to deceive, and must be re- garded as an infringement of complainant's rights secured by its registered trade-mark. Specific proof of purchases by individuals actually deceived under such cir- cumstances appears not to be necessarv. Cleveland Stone Co. V, Wallace (C. C), 52 Fed. 431; National Biscuit Co V. Baker (C. C), 95 Fed. 135; Von Mumm, v. Frash (C. C), 56 Fed. 830. In the controversy it is immaterial that the size of cartons, color of wrapper, size and kind of label, and separate features of complainant's trade- mark are old, and may, therefore, be used by any one. The complainant's trade-mark, its features of coloring, rectangular labels, white lines on a vivid background', manner of displaying the arbitrary designation at the ends of the packages, all in combination, are peculiarly distinguishing marks for its goods. I am well satisfied that a technical trade-mark, although not a fac-simile of another, may, nevertheless, be so used by a rival manu- facturer as to imitate another's trade-mark, and when such use actually deceives the public a court of equity will afford relief. Scheuer v. Muller, 20 C. C. A. 161, 74 Fed 225; Draper v, Skerrett (C. C), 94 Fed. 912. I have ex- amined the case of Richter v. Anchor Eemedy Co. (C. C), 52 Fed. 455, and other cases cited by counsel, but such cases are either not in point or do not disturl) the conclu- sion reached. By the manner of defendant's use of the Ohio Baking Company's trade-mark he obtains a benefit to which he is not entitled. He appropriates the good will NATIONAL BISCUIT COMPANY vs, SWICK 107 of a rival business by purloining his rival's method of dressing his vendible goods. City of Carlsbad v. Schultz (C. C), 78 Fed. 471; Sprague Elec. Ry. & Motor Co. v. Nassau Elec. Ry. Co., 37 C. C. A. 286, 95 Fed. 821. As Judge Wanty said when the case against the Ohio Baking Company was before him on application for preliminary injunction, ^ * Why does the defendant use the exact shade of red used by complainant?" Further inquiry is perti- nent. Why white letters of substantially the same type ! Why labels of uniform size, and with clipped corners! Other questions of like kind may be propounded. The record discloses no satisfactory answer, and therefore it is manifest that the defendant deliberately and fraudu- lently imitates the trade-mark of complainant, and in that manner designs to palm off his goods for those of com- plainant. The complainant may have a decree, with costs, enjoin- ing the defendant from imitating or simulating complain- ant 's *^In-er-seal" trade-mark, as set out in this opinion. So ordered. 121 Fed. Rep. 1007. 108 I. , ■I ■ NATIONAL BISCUIT COMPANY vs. SWICK FINAL DECKEE. United States Circuit Court, Western District of New York. National Biscuit Company, Complainant, vs. Ira Swick, Defendant. Bill for Infringement of Trade-mark. Decree. This cause coming on to be heard upon pleadings and full proof, and having been fully argued by counsel re- spectively, for both parties litigant: Mr. Charles K. Offield, Mr. Adelbert Moot, and Mr. Earl D. Babst, for complainant; Messrs. Banning & Banning, and Mr. Benjamin C. Starr, for defendant; and the court being fully advised, and having duly considered the same, orders, adjudges and decrees: First : That the said complainant, the National Biscuit Company's In-er-seal Trade-mark is a good and valid Trade-mark, and the complainant has full and unques- tioned title thereto and therein, as alleged in the bill of complaint filed herein. Second: That the said defendant, Ira Swick, has in- fringed upon and violated said complainant's In-er-seal trade-mark, as alleged in said bill of complaint. Third: That the said defendant, his agents, servants, attorneys, and employes be, and hereby are enjoined from applying or using complainant's In-er-seal trade-mark in any manner whatsoever, upon, or in connection with, bakery products ; or in any manner whatsoever, handling, selling, or advertising bakery products, or packages, or cartons containing bakery products having thereon com- plainant's said trade-mark, or any imitation or simulation thereof. NATIONAL BISCUIT COMPANY va. SWICK 109 Fourth : That the said complainant has the right to re- cover any and all damages accruing to, or arising out of said unlawful violation and infringement of said trade- mark by said defendant, together with the cost herein to be taxed; and that this cause be referred to George P. Keating, he being a suitable person as Master of this Court, to take, state and report an account of such dam- ages under and in accordance with this decree, and that upon said accounting the testimony heretofore taken by either party in this cause may be read by either party, and considered by the Master. John K. Hazel, U, S. J. Endorsed: U. S. Circuit Court, Western District of New York. In Equity. National Biscuit Company vs. Ira Swick. Decree. U. S. Circuit Court, Western Dist. of N. Y. Filed Mar. 28, 1903. Harris S. Williams, Clerk. United States of America, | Western District of New York.) ss. I, Harris S. Williams, Clerk of the Circuit Court of the United States, for the Western District of New York, do hereby certify that I have compared the annexed copy of Decree with the original entered and on file in this office, 110 NATIONAL BISCUIT COMPANY vs. SWICK and that the same is a correct transcript therefrom, and ot the whole of said original. And I further certify that I am the officer in whose custody it is required by law to be. In testimony whereof, I have caused tlie seal of the said Court to be affixed at the City of Buffalo, in said District, this 6th day of April, A. D. 1903. Harris S. VV^illiams, Clerk. Ctrrmt CHourt of th? Ittttf 5 BMtB Southern District of New York NATIONAL BISCUIT COMPANY a corporation Complainant, vs. HENRY PUNCHARD, Sr., and HENRY PUNCHARD, Jr., co^partners, doing business as HENRY PUNCHARD & SON, Defendants. IN EQUITY ii DECREE AND INJUNCTION EDMUND WETMORE CHARLES K. OFFIELD EARL D. BABST For Complainant. JOHN A. MAPES For Defendants. XATIONAI. BLSn IT rOMTANY vs. 1*UNCHARI> 113 114 NATIONAL BISCUIT COMl'ANY vs. PUNCHAHD NATIONAL BLSCLIT COMPANY cs. PUNCHAKD 115 PINAL DECREE. United States Circuit Court, Southern District of New York. National Biscuit Company, a cor- poration, Complainant, vs. Henry Punchard, Sr., and Henry ^ Punchard, Jr., co-partners, do- ing business as Henry Pun- chard & Son. Defendants. This cause coming on to be heard under the pleadings as filed, and Mr. Edmund Wetmore, Mr. Earl D. Babst and Mr. Charles K. Offield, appearing in behalf of the complainant, and Mr. John A. Mapes in behalf of the defendants, and it appearing to the Court that the said defendants do not desire to further contest this action, but have made a certain settlement of the same and as- sented as follows : (1) That the said complainant is the rightful and ex- elusive owner of the trade-name '^Uneeda" or ''Uneeda Biscuit" as alleged in said bill of complaint, and is the rightful and exclusive owner of the trade-mark ''In-er- seal", consisting of a vivid red background, square in shape with uniform clipped corners having white line markings thereon and applied to each end of the bakery cartons or packages with a marginal exposure surround- ing the same, and is the rightful and exclusive owner of the wrapper application, word collocation and decorative appearance of the wrapper surrounding and enclosing said carton or package, as appears by complainant's ex- hibits filed herewith. (2) That the said defendants, Henry Punchard, Sr.,, 1 lU .\A1!'»\a: l:iS(iri CMMi'.W^ ■<. ITNCHAUI* XATloXAl, I'.ix I IT . oMi'.vw -. ri\( llAlrH 1 1 5 i I r FTXAL DErRKK. UxiTED Sta TES ClH( riT CoT'KT, Sontlirn-ii District of X(nv York. XatioMril Flisf-nit (VnnpHiiy, a tm^v- pc>ratioii, Comphi'numt , iffnry Punchard, Sr., an.l IFonrv Piuic'hard, *]\\, r-o-partnors, htful and exclusive .axucj- of the wrapiH'r application, word collocation and decoraliv e ap[>earance of the wrapper surronndiiio- .ind .m lovinir said carton or packa.<>e, as appears by complainani s .ex- hibits tiled herewith. (2) That the ^aid ATIOXAL BISCUIT rOMPAXY vs. PUNCHARD 119 and each of you, your servants, agents and employes, and all claiming or holding through or under you, un- der the penalties that may fall upon you in case of dis- obedience that you forthwith permanently and forever desist from in any manner whatsoever handling, adver- tising or selling the packages heretofore sold by defendants, complained of in the bill of complaint and hereinabove described, or making use of the word *'Ulika" or **Ulika Bis-kit," or any word substantially like it or them, as the name or designation, or as a part of the name or designation connected with any biscuit upon any package used in the sale of biscuits, and from in any manner whatsoever making use of the word or words ^^Ulika'^ or ^^Ulika Bis-kit," or any other word substantially like it as the name or designation, or part of the name or designation upon any wrapper on any package of biscuits or crackers whatsoever ; or from the use of said word or name upon any package or packages like those hereinabove described as the packages or car- tons of said defendants, and in every way from making use in connection with the sale or advertisement of bis- cuit the words **Ulika" or ^^Ulika Bis-kit" upon any packages so nearly like your orator's package hereinbe- fore described as to be calculated to mislead, or from in any way using upon the ends of such packages or cartons a label or seal of red background with white line mark- ings thereon, as shown upon the ends of defendants' packages herein complained of, or from advertising by picture representations your orator's said trade-names or trade-mark and wrapper ornamentation, as appears in ** Complainant's Exhibit Defendants' Advertisement No. 1," and ** Complainant's Exhibit Defendants' Poster Infringement No. 2," and from violating and infringing the rights of your orator in the premises as hereinbefore set forth. 120 NATIONAL BISCUIT COMPANY vs. PUNCHARI) Witness the Hon. Melville W. Fuller, Chief Justice of the United States at the City of New York, Borough of Manhattan, on the 5tli day of November, 1904. John A. Shields, Clerk, A copy. John A. Shields, Clerk. (Hxxmt Olowrt nf % Inttei ^tat^a District of Maryland NATIONAL BISCUIT COMPANY^ . ^ Complainant, HARGRAVE BISCUIT COMPANY, JOSEPH W. HARGRAVE, WILLIAM B. HARGRAVE, EPPS HARGRAVE, STEVEN J. VAN LILL and JAMES W. CHAPMAN, Jr., Defendants. IN EQUITY FINAL DECREE AND INJUNCTION OFFIELD, TOW^LE & LINTHICUM Solicitors for Complainant. W. IRVINE CROSS EARL D. BABST Of Counsel for Complainant. GEORGE D. PENNIMAN JAMES V^. CHAPMAN, Jr. Solicitors for Defendants. 1 ,!] NATKiXAL mscri'l ( O.Mi'A.W / .s-. IIA!t< lit A\ K IUS( ITr <'r>MI'A\Y 1:!: s^ . > .vV HARGRAVt ] BiStllT ^ ' ■< 1 f7%' ^\^At u « 124 NATIONAL BISCUIT COMPANY V8. HARGRAVE BISCUIT COMPANY J! NATIONAL BISCUIT COMPANY vs, HARGRAVE BISCUIT COMPANY 125 FINAL DECREE. United States Circuit Court, District of Maryland. National Biscuit Company, Complainant, vs, Hargrave Biscuit Company, Joseph W. Hargrave, William B. Hargrave, Epps Hargrave, Steven J. Van Lill and James W. Chapman, Jr., Defendants, > Bill for infringement of trade-mark, trade- name and unfair competition. This cause coming on to be heard upon the pleadings as filed, Mr. W. Irvine Cross, Earl D. Babst and Charles K. Offield appearing in behalf of the complainant, and Mr. George D. Penniman and James W. Chapman, Jr., in behalf of defendants. And it appearing to the Court that said defendants do not desire further to contest or defend this action, and that said defendants have tendered and paid the costs to date in this action as taxed by the Clerk, and have also made settlement and paid damages and profits due the complainant by reason of the infringing acts set fortb in the Bill of Complaint, and that no remaining question is open and present except the matter relating to the grant- ing of an injunction. It is therefore, this 19th day of October, 1905, ordered, adjudged and decreed that an injunction issue under and in accordance with the allegations of the Bill of Com- plaint and as identified by the prayer thereof, and that this decree and order be and is final. Thos. J. MORBIS, Judge. Ill 124 NATIONAL BISCUIT COMPANY vs. HARGRAVE BISCUIT COMPANY NATIONAL BISCUIT COMPANY vs. HARGRAVE BISCUIT COMPANY 125 FINAL DECBEE. United States Circuit Court, District of Marvlaiid. National Biscuit Company, Complainant, vs. Hargrave Biscuit Company, Joseph W. Hargrave, William B. Hargrave, Epps Hargrave, Steven J. Van Lill and James W. Chapman, Jr., Defendants, > J Bill for 'infrin(]enu'nt of trade-mark, trade- name and unfair competition. This cause coming on to be heard upon the pleadings as filed, Mr. W. Irvine Cross, Earl D. Babst and Charles K. Offield appearing in behalf of the complainant, and Mr. George D. Penniman and James \V. Chapman, Jr., in behalf of defendants. And it appearing to the Court that said defendants do not desire further to contest or defend this action, and that said defendants have tendered and paid the costs to date in this action as taxed by the Clerk, and have also made settlement and paid damages and profits due the complainant by reason of the infringing acts set forth in the Bill of Complaint, and that no remaining question is open and present except the matter relating to the grant- ing of an injunction. It is therefore, this 19th day of October, 1905, ordered, adjudged and decreed that an injunction issue under and in accordance with the allegations of the Bill of Com- plaint and as identified by the prayer thereof, and that this decree and order be and is final. Thos. J. Morris, Judfje. 126 NATIONAL BISCUIT COMPANY vs. IIARGRAVE BISCIIT COMPANY United States of America, District of Maryland, to- wit: I, James W. Chew, Clerk of the United States Circuit Court for the District of Maryland, do hereby certify that the foregoing is a true copy of the Original Decree entered and filed in the therein entitled cas(» in said Cir- cuit Court, on the 19th day of October, 1905. In testimony whereof, I hereunto set my hand and affix the seal of the said Circuit Court this 31st day of October, 1905. Jas. W. Chew, Cleric of said Circuit Court. NATIONAL BISCUIT COMI'ANY vs. HAKGKAVE BISCUIT COMi'ANY 127 INJUNCTION. Circuit Court of the United States of America,) District of Maryland. \ ^^' THE UNITED STATES OF AMERICA, To Hargrave Biscuit Company, Joseph W, Hargrave, William B. Hargrave, Epps Hargrave, Steven J, Van Lill and James TF. Chapman, Jr., and to your counselors, at- torneys, solicitors, trustees, agents, clerks, employees, servants and workmen, and to each and every one of you, Greeting: Whereas, it has been represented to the Judges of our Circuit Court of the United States for the District of Maryland in Chancery sitting, on the part of the National Biscuit Copipany, complainant, in a certain Bill of Com- plaint, exhibited in our said Circuit Court, on the Chan- cery side thereof, before the Judges of said Court, against you, the said Hargrave Biscuit Company, Joseph W. Hargrave, William B. Hargrave, Epps Hargrave, Steven J. Van Lill and James W. Chapman, Jr., to be relieved touching the matters complained of. In which said bill it is stated, among other things, that you are combining and confederating with others to injure the complain- ant touching the matters set forth in said bill, and that your actings and doings in the premises are contrary to equity and good conscience. ^ And it being ordered that a writ of perpetual injunc- tion issue out of said Court, upon said bill, enjoining and restraining you, and each of you, as prayed for in said bill; We, therefore, in consideration thereof, and of the particular matters in said bill set forth, do strictly com- mand you, the said Hargrave Biscuit Company, Joseph W. Hargrave, William B. Hargrave, Epps Hargrave, W M J ' 128 NATIONAL BISCUIT COMPANY vs. HARGRAVE BISCUIT COMPANY Steven J. Van Lill and James W. Chapman, Jr., your counselors, attorneys, solicitors, trustees, agents, clerks, employes, servants and workmen, and each and every of you, that you Do Absolutely Desist and Eefrain from, in any man- ner whatsoever handling, advertising or selling packages or cartons containing bakery products having upon the ends thereof any red seal with white line markings there- on, or red seal substantially like the Seal or Trade-Mark of your orator; or from making, using, selling or han- dling cartons like your orator's carton containing your orator's Trade-Name **Uneeida Biscuit" with wrapper accompaniment as shown in your orator's exhibit of the same, of the use of the word ** Biscuit" upon a white parallelogram, as shown in * ^ Complainant 's Exhibit De- fendants' Infringing Carton," whether preceded by the words ^^Eta Hargrave Biscuit" or any other words as- sociated therewith, or from the use of any wrapper ap- plication similar to or substantially like th(? wrapper aj)- plication upon your orator's **Uneej3a Biscuit" package; and from violating and infringing the rights of your orator in the premises, until this Honorable Court, in Chancery sitting, shall make other order to the contrary. Hereof fail not, under the penalty of what the law di- rects. Witness, the Hon. Melville W. Fuller, Chief Justice of the United States of America, at Baltimore, in said Dis- trict, this 19th day of October, in the year of our Lord, one thousand nine hundred and five and of our Inde- pendence, the one hundred and thirtieth year. James W. Chew, Clerk. NATIONAL BISCUIT COMPANY vs. HAKGRAVE BISCUIT COMPANY 129 United States of America, DiSTKICT OF MaEYLAND. To-Wit : I, James W. Chew, Clerk of the United States Circuit Court for the District of Maryland, do hereby certify that the foregoing is a true copy of the Perpetual In- junction which was issued out of said Court in the case entitled National Biscuit Company vs. Hargrave Biscuit Company, et al, in said Circuit Court on the 19th day of October, 1905. In Testimony Whereof, I hereunto set my hand and affix the seal of said Circuit Court this 31st day of Octo- ber, 1905. Jas. W. Chew, Clerk of said Circuit Court. I ■ 11 Qltrnttt (Htmrt nf % IntteJi BUtts Eastern District of Michigan NATIONAL BISCUIT COMPANY Complainant, t'«. HAMMELL CRACKER COMPANY, and JAMES F. HAMMELL, SAMUEL DUMPHY and P. J. HAMMELL, Defendants. IN EQUITY No. 3898 DECREE AND TNJUXCTION CHARLES K. OFFIELD EARL D. BABST Solicitors for Complainant. THOMAS, CUMMINS & NICHOLS Solicitors for Defendants. 132 NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANT .( NATIONAL BISCUIT COMPANY V8, HAMMELL CRACKER COMPANY 133 FINAL DECREE. At a session of the Circuit Court of the United States for the Eastern District of Michigan, continued and held pursuant to adjournment, at the District Court Room, in the City of Detroit, on Friday the thirteenth day of Octo- ber, in the year one thousand nine hundred and five. Present: The Honorable Henry H. Swan, District Judge. No. 3898. In Equity. National Biscuit Company, vs. Hammell Cracker Company, and James F. Hammell, Samuel Dumphy and P. J. Hammell. This day came the above named complainant, the Na- tional Biscuit Company, by Mr. Earl D. Babst and Charles K. Offield, its Solicitors and of Counsel, and the defendants by Messrs. Thomas, Cummins & Nichols, their Solicitors and of Counsel, and it appearing to the Court that the defendants do not further desire to contest this action, and that they have settled with and paid to the complainant the damages, profits and costs arising out of this action and the acts complained of in the Bill of Complaint, and that there nothing remains as to this liti- gation, except as to the subject matter of injunction, and the entry of final decree so expressed herein, the defend- ant consenting thereto. Now, THEREFORE, IT IS ORDERED, ADJUDGED AND DECREED I First: That the complainant is the true, rightful origi- nator and sole owner of a certain trade-mark, or symbol, consisting of a red end seal upon the ends of cartons or packages, containing bakery products, having a red back- ground and white line markings thereon ; i 132 NATIONAL liLSCin COMl'ANV .... IIAMMKLL CUA(MvBU COMrANlT NATIONAL BLSCUIT COMl'ANY r.s. IIAMMKLL CKACKLU COMl'ANY 133 FINAL DECKEE. At a session of the Circuit Court of tiie United States for the Eastern District of Michigan, continued and held pursuant to adjournment, at the District Court Room, in the City of Detroit, on Friday tlie thirteenth day of Octo- ber, in the year one thousand nine hundred and five. Present: The Honorable Henry H. Swan, District Judge. Xo. 3898. In Equity. National Biscuit Company, vs. Hammell Cracker Company, and v James F. Hammell, Samuel Dumphy and P. J. Hammell. This day came the above named complainant, the Na- tional Biscuit Company, by Mr. Earl D. Babst and Charles K. Offield, its Solicitors and of Counsel, and the defendants by Messrs. Thomas, Cunnnins & Xicliols, their Solicitors and of Counsel, and it appearing to the Court that the defendants do not further desire to contest this action, and that they have settled with and paid to the complainant the damages, profits and costs arising out of this action and the acts complained of in tlie Bill of Complaint, and that there nothing remains as to this liti- gation, except as to the subject matter of injunction, and the entry of final decree so expressed herein, the defend- ant consenting thereto, Now, THEREFORE, TT IS ORDERED, ADJUDGED AND DECREED: First: That the complainant is the true, riglitful origi- nator and sole owner of a certain trade-mark, or svml)ol consisting of a red end seal upon the ends of cartons or packages, containing bakery products, having a red back- ground and white line markings tliereon; Ill w I 134 NATIONAL BISCUIT COMPANY i«. HAMMELL CRACKER COMPANY Second: That the defendants have infringed upon and violated the exclusive rights of the complainant by the use and application upon the ends of their cartons con- taining bakery products, of a red end seal with white line markings thereon; Third: That the said defendants, Hamniell Cracker Company, James F. Hammell, Samuel Dumphy and P. J. Hammell and each of them, and their respec^tive agents, servants, and employes, and each of them, be and hereby are perpetually enjoined from afl&xing, using or applying, or causing to be affixed, used or applied, in any way, upon cartons or the ends of cartons containing bakery prod- ucts, any red seal with white line markings thereon, or from using or applying upon the ends of their cartons, containing bakery products, any seal in simulation or imi- tation of complainant's red end seal, or * * In-er-seal' ' trade-mark ; Fourth: It further appearing to this Court that the said defendants have settled and paid the complainant the damages to complainant and profits to the defendants arising out of the infringing acts complained of, and also paid to the complainant the costs in this case, no refer- ence to the Master for any purpose is therefore made in this ease, and this decree as entered, is to be, and stand, as final. NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMPANY 135 of Final Decree in the therein entitled cause as the same appears on file and of record in my office; that I have compared the same with the original and it is a true and correct transcript therefrom and of the whole thereof. In Testimony Whekeof, I have hereunto set my hand and affixed the seal of said Court, at Detroit, in said dis- trict, this 13th day of October, in the year of our Lord one thousand nine hundred and five, and of the Indepen- dence of the United States of America, the one hundred and tlnrtieth. Walter S. Harsiia, Clerk. By Adelaide Anderson Voobheis, Deputy Clerk, United States of America, \ Eastern District of Michigan.)^ I, Walter S. Harsha, Clerk of the Circuit Court of the United States for the Eastern District of Michigan, do hereby certify that the above and foregoing is a true copy 136 NATIONAL BISCUIT COMPANY V8. HAMMELL CRACKER COMPANY II I- ■ill INJUNCTION. UNITED STATES OF AMERICA : The Circuit Court of the United States For the Eastern District of Michigan, In Equity. The President of the United States of x\m erica, To Hammell Cracker Company, and James F. Ham- niell, Samuel Diimphy and P. J. Hammell , and to their counselors, attorneys, solicitors, trustees, agents and servants, and each and every of them, Greeting : Whereas, It has been represented to us, in the Circuit Court of the United States for the Eastern District of Michigan, in Equity, on the part of the National Biscuit C^oinpany, Complainant, that it has lately exhibited a Bill of Complaint and Decree against you the said Hammell Cracker Company, and James F. Hammell, Samuel Dum- phy and P. J. Hammell, Defendants, to be relieved, touch- ing the matters therein complained of; in wliich bill and decree it is stated, among other things, that you are com- bining and confederating with others to injure the said plaintiff touching the matters set forth in the said bill, and that your actings and doings in the premises are contrary to equity and good con- science; we therefore, in consideration tliereof, and of the particular matters in the said bill and de- cree set forth, do strictly command you, the said Hammell Cracker Company, and James F. Hammell, Samuel Dumphy and P. J. Hammell, and the persons be- fore mentioned, and each and every of you, under the penalty of Ten Thousand Dollars, to be levied of your lands, goods, and chattels, to our use, that you do abso- NATIONAL BISCUIT COMPANY vs. HAMMELL CRACKER COMI'ANY 137 lutely desist and refrain from perpetually from afl^ing, using or applying or causing to be affixed, used or ap- plied, in any way, upon cartons or the ends of cartons containing bakery products, any red seal with white line markings thereon, or from using or applying upon the ends of their cartons, containing bakery products, any seal in simulation, or imitation of, complainant's red end seal, or **In-er-sear' trade-mark, until the further order of this Court. . Witness, the Honorable Melville W. Fuller, Chief Jus- tice of the Supreme Court of the United States, this thir- teenth day of October in the year of our Lord one thou- sand nine hundred and five and of the independence of the United States of America the one hundred and thir- tieth. Walter S. Harsha, Clerk. By Adelaide Anderson Voorheis, Deputy Clerk. United States of America, ) Eastern District of Michigan.} ^^* I, Walter S. Harsha, Clerk of the Circuit Court of the United States for the Eastern District of Michigan, do hereby certify that the above and foregoing is a true copy of Perpetual Injunction in the therein entitled cause as ! 138 NATIONAL BISCUIT COMPANY r«. HAMMELL CRACKER COMPANY the same appears on file and of record in my office ; that I have compared the same with the original and it is a true and correct transcript therefrom and of the whole thereof. In testimony whereof, I have hereunto set my hand and affixed the seal of said Court, at Detroit, in said dis- trict, this 13th day of October, in the year of our Lord one thousand nine hundred and five, and of the Inde- pendence of the United States of America the one hun- dred and thirtieth. Walter S. Harsh a, Clerk. By Adelaide Anderson Voorhets, Deputy Clerk. (Hxvcnxt (Hmvt of % Intt^h ^tatea District of Indiana NATIONAL BISCUIT COMPANY ^ Complainant, V9. ISAAC F. WHITESIDE Defendant. IN EQUITY No. 104 lo DEMURRER AND ORDER OVERRULING DEMURRER OFFIELD, TOWLE & LINTHICUM Solicitors for Complainant. W. H. H. MILLER CHARLES K. OFFIELD EARL D. BABST Of Counsel for Complainant. HARVEY, PICKENS, COX & KAHN Solicitors for Defendant. KEALING & HUGG BAKEWELL & CORNWALL Of Counsel for Defendant. NATIONAL BISCUIT rOMPANY t;«. WHITESIDE 141 DEMURRER. Circuit Court of the United States. District of Indiana. National Biscuit Company, Complainant, vs. Isaac F. Whiteside, Defendant, In Equity. ^No. 10410. The Demurrer of Isaac F. Whiteside, the defendant above named to the Bill of Complaint of National Biscuit Company, complainant. This defendant, Isaac F. Whiteside, by protestation, not confessing or acknowledging all or any of the mat- ters and things in the said complainant's bill to be true, in such manner and form as the same are therein set forth and alleged, doth demur thereto and for cause of demurrer showeth: 1. That the said complainant has not in and by its said bill made or stated any such cause as doth or ought to entitle it to any such discovery or relief as thereby sought and prayed for from or against this defendant. 2. That it does not appear from the facts stated in said bill that the complainant is entitled to the exclusive use of what is designated in said bill as complainant's *'In-er-sear' trade-mark. 3. That it does not appear from the allegations of said bill, or from the exhibits therein referred to, that defendant has infringed and is now infringing any ex- clusive right of complainant in and to the '^In-er-seaP' mark referred to in the bill of complaint. 4. That it does not appear from the facts stated in the bill of complaint herein that complainant is entitled I 142 NATIONAL BISCUIT COMPANY V8. WHITESIDE to the exclusive use of what is herein designated as complainant's **Uneeda'' or **Uneeda Biscuit'' trade- mark or trade-name. 5. That it does not appear from said bill of com- plaint, or from the exhibits referred to therein, that de- fendant has infringed any exclusive right of complainant in the name *^Uneeda" or **Uneeda Biscuit." 6. That as to the things designated as ''the nine re- maining complainant's exhibits," referred to in para- graph sixteen of the bill, it does not appear from said bill— (a) That the same are described in said bill with sufficient particularity for the defendant to answer in respect to the same; (b) That it does not appear from said bill that com- l)lainant has any exclusive right with respect to any or all of said exhibits; (c) That it does not appear from said bill, or from the exhibits referred to therein, that defendant has in- fringed, or is now infringing, any exclusive rights of complainant with respect to any or all of said exhibits. 7. That complainant has not in and by its bill of com- plaint shown that it is entitled to the sole and exclusive use of the form and arrangement and dress of the pack- age referred to in paragraph ''ninth" of the bill of com- plaint as "Complainant's Exhibit Carton Trade Name Uneeda Biscuit and Wrapper"; nor has complainant shown by its said bill that defendant has infringed, and is now infringing, any exclusive right of complainant in and to the same. 8. That it does not appear from the said bill of com- plaint that complainant is entitled to the exclusive use of the name "Jersey Butter" as applied to crackers or biscuits; nor does it appear from said bill that defendant has infringed, or that defendant is now infringing, any NATIONAL BISCUIT COMPANY vs. WHITESIDE 143 exclusive right of complainant in the name "Jersey But- ter" as applied to crackers or biscuit. 9. That it does not appear from said bill that com- plainant is entitled to the exclusive use of the figure of a cow stamped or marked on crackers ; nor does it appear from the bill that defendant has infringed, or is now in- fringing, any exclusive right of complainant in respect to the figure of a cow stamped or marked on crackers or biscuit. 10. That it does not appear from the bill of com- plaint that complainant is entitled to the exclusive use of the word "Crisp" or "Crispy" as applied to crackers or biscuit ; nor does it appear from said bill that defend- ant has infringed, or that defendant is now infringing, any exclusive right of complainant in and to the word "Crisp" or "Crispy" as a mark or name for crackers or biscuit. 11. That as to all of said bill which undertakes to claim infringement by defendant in respect to complain- ant's alleged cartons or packages referred to therein as "Complainant's Exhibits Cartons Baking Products, Numbers 1, 2, 3, 4, 5, 6, 7, 8, 9, 10 and 11," "Complain' ant's Exhibit Complainant's Carton Trade Name Uneeda Biscuit and Wrapper," and "Complainant's Exhibit Complainant's In-er-seal trade-mark," complainant is not in equity with clean hands and is not entitled to any equitable relief in this cause, as it appears from said ex- hibits, which are referred to in the bill and made part thereof by the allegations of the bill, as well as from mat- ters of which this Court will take judicial notice, that as to each of said cartons it distinctly appears that the same (on the outer wrapper thereof) is now being repre- sented by complainant as patented March 28, 1899 (which is the date of the Peters U. S. Patent No. 621,974 relating to cartons). Whereas, as appears from Vol- ume 125 of the Federal Reporter, between pages 601 I idi^ 144 NATIONAL BISCUIT COMPANY vs. WHITESIDE and 609 thereof (of which this Court will take judicial notice), on the 23rd day of November, 1903, the said Peters Patent for Carton was declared invalid by the United States Circuit Court of Appeals for the Eighth Circuit, on the ground that the same failed to disclose patentable novelty ; and that it appears from the opinion, of the United States Circuit Court in said cause (120 Fed- eral Reporter, between pages 679 and 687), which opinion of the United States Circuit Court was reversed by the United States Circuit Court of Appeals for the Eighth Circuit in the case reported in 125 Federal Reporter, supra, that the complainant in this cause, the National Biscuit Company, was, at the time said cause of Peters vs. Union Biscuit Company (reported in the Federal Re- porter, volumes 120 and 125, supra) was pending and prior thereto, the exclusive licensee of Peters, the pat- entee of said patent No. 621,974, of March 28, 1899, so far as said patent might be used for packing bakery products. Therefore, it appears from the said bill of complaint, from complainant's exhibits above referred to, and from matters of which this Court will take ju- dicial notice, that at the time of filing tlie bill in this cause and since the decision of the United States Circuit Court of Appeals for the Eighth Circuit, rendered No- vember 23, 1903, in said cause of Union Biscuit Company, appellant, vs. Peters, appellee (see 125 Federal Reporter, 601-609), that complainant is still holding out to the public that said exhibit cartons or packages are pro- tected by said Peters' United States letters patent, dated March 28, 1899, whereas, at the time of filing this bill of complaint and said exhibits, and since about one year before the filing of the same, the said Peters' Pat- ent of March 28, 1899, has been adjudged of no force and effect by the United States Circuit Court of Appeals for the Eighth Circuit, which opinion and the decree entered in pursuance of the same is now, and was at the time of NATIONAL BISCUIT COMPANY vs. WHITESIDE 145 filing the bill of complaint herein, in full force and effect, as complainant well knew at the time of filing the bill of complaint herein. 12. That it appears from said bill and the exhibits filed therewith, as well as from matters of which this Court will take judicial notice, that this defendant has not infringed the alleged trade-marks, trade-names or wrappers of complainant, there not being such similarity between the alleged trade-marks, trade-names or wrap- pers of complainant and those of defendant, as shown by the exhibits filed in connection with complainant 's bill, as would deceive an ordinary purchaser using reasonable care so that he would buy the goods of defendant believ- ing them to be the goods of complainant. 13. That complainant has not in and by its said bill stated such a case as doth or ought to entitle it to any equitable relief by way of injunction as against defend- aiit, it not appearing from said bill that at the time of filing the same this defendant was continuing to do the acts of which complaint is made as acts done in the past by this defendant, nor does it appear from said bill that defendant is threatening to do, or about to do, the alleged acts complained of as having been done by the defend- ant. 14. As to the allegations of fraud in the bill of com- plaint, they are immaterial, since it appears from the whole bill, and the exhibits filed therewitli, notwithstand- ing the epithets as to fraud used therein, that— (a) Complainant has no standing in a court of equity ; (b) Complainant has no exclusive rights which have been violated by defendant ; (c) Said allegations of fraud, taken in connection with the bill and exhibits filed therewith, do not connect de- . t iitHMMU 146 NATIONAL BISCUIT COMPANY vs. WHITESIDE fendant with any specific acts which make him responsi- ble to complainant in this action. 15. That the bill fails to show such facts in regard to the use by defendant of any package, carton, trade-mark or wrapper as constitute unfair competition in trade on the part of defendant in respect to any article sold by complainant, in that it does not appear from said bill that any article made and sold by defendant has been sold, or is likely to be sold, to any one as and for the goods of the complainant. 16. That as to paragraph '^fourteen" of the bill, it does not constitute any cause of action, nor does it con- stitute any inducement to any cause of action, since it does not appear therefrom that if defendant did employ persons formerly in the employment of complainant, he thereby did an unlawful thing, or anything the doing of which can be taken cognizance of by this Court in this action; it does not appear from the allegations of para- graph ^*fourteen^' of the bill that the said former em- ployees of complainant were not free agents, free to take employment with others when and where they might see fit. 17. Referring to paragraph *^ twentieth'' of the bill of complaint, defendant demurs thereto on the ground that it does not appear from the allegations of the bill in that paragraph or elsewhere that complainant is entitled to the exclusive use of the certain metallic rack or holder therein referred to and marked '* Complainant's Exhibit Complainant's Retail Grocer Carton Exhibit Rack"; nor does it appear from the bill of complaint that defendant has infringed any exclusive rights of the complainant in and to said rack or holder. 18. That notwithstanding the allegations of the bill i J NATIONAL BISCUIT COMPANY vs. WHITErSIDE 147 of complaint herein as to defendant having originally been engaged wholly in the manufacture of bread and afterwards engaged in the manufacture of crackers and biscuit, it does not appear that defendant, by reason of such fact, is liable to the complainant in this suit ; since it does not appear from the allegations of the bill of com- plaint, nor could it be recognized in law as a sound principle if it do appear from the bill of complaint that complainant is entitled to the exclusive monoply in the manufacture and sale of crackers and biscuit. 19. That as to the allegations contained in ''twenty- fifth" and ^'twenty-sixth" paragraphs of the bill, the same constitute no cause of action, neither do they con- stitute any inducement to any cause of action, against this defendant, and are mere surplusage, for the following reasons : (a) The defendant is not shown to be a party nor is defendant shown to be in privity with any party,' to any suit stated or referred to in either of said clauses of the bill; (b) It appears from said decisions or decrees in all of said cases (if the Court chooses to refer to the same) that the facts in each and all of said cases are utterly and eTitirely different from the facts in the case presented by the bill m this case; (c) That the question as to defendant's liability in this action IS to be determined by the facts in this case- and, on this demurrer, it clearly appears that complainant has stated no cause of action, no matter whether or not in other cases against different defendants, under totally different states of facts, complainant has been able to state and establish causes of action. Wherefore, and for divers other good causes of de- murrer appearing in the said bill, this defendant demurs thereto and humbly demands the judgment of this Court 1 t I ,3 148 NATIONAL BISCUIT COMPANY V8, WHITESIDE] whether he shall be compelled to make any further or other answer to the said bill, and prays to bo hence dis- missed with his costs and charges in this behalf most wrongfully sustained. Harvey, Pickens, Cox & Kahn, Solicitors for Defendant, Kealing & Hugo, BaKEWELL & CoRNWALrl., Paul Bakbweill, Of Counsel for Defendant. State op Missouri,] City of St. Louis.} ^^• Isaac F. Whiteside, being duly sworn, on his oath states that he is the defendant above named, and that the foregoing demurrer is not interposed for delay. Isaac F. Whiteside. Sworn to and subscribed before me this 3rd day of February, 1905. My Term expires 17th February, 1905. George Bakewell, Notary Public. national biscuit company v8. whitksidb 149 ORDER OVERRULING DEMURRER. In the Circuit Court of the United States For the District of Indiana. May Term, 1905. June 17th, A. D. 1905. Before the Honorable Albert B. Anderson, Judge. National Biscuit Company vs. Isaac F. Whiteside. "No. 10,410 Chancery. Come now the parties by their respective solicitors, and thereupon the Court having heard the argument of Coun- sel and being sufficiently advised in the premises doth now ""T""^ 1 demurrer to the bill of complaint herein And the defendant is ruled to answer by the first Mon- day of September next. United States of America District op Indiana. i ss. I, Noble C. Butler, Clerk of the Circuit Court of the United States for the District of Indiana, do hereby certi- fy that the above and foregoing is a full, true and com- plete copy of an order entered in said court on the 17th I Ir ii 150 NATIONAL BISCUIT eOMPANY r». VVHITESll'K day of June, 1905, in the cause entitled National Biscuit Company vs. Isaac F. Whiteside, as fully as the same appears of record in my office. Witness my hand and the seal of said court, at In- dianapolis in said District this 1st day of November, A. D. 1905. Noble V. Butler, Clerk. NATIONAL BISCUIT COMl'ANY is. WHITKSIDE 151 fi 150 NATIONAL IUS(M rr ( OMTANV rs. WIHTKSIMO day of June, 1905, in tlie cause entitled National Biscuit Company vs. Isaac V. AVliiteside, as fully as the same appears of record in my ofHce. AVitncss my liand and tlie seal of said ctmrt, at In- dianapolis in' said District this 1st day of November, A. ]). 11)05. Noble ('. Butler, Clerk. NATIONAL niSCl rr CM>MrA\Y rs. WHITKSIDE 151 152 NxVTioNAi. r.iscrrr roMTANY rs-. win'n>;ii»M ^<;i*C^«^^ 1^5^ ■roR < X\)^^\'^^^ EAT :C.i?: mtherl Biscuiti WHITE 51 I NATIONAI, r.ISCI IT TOMPANY rs. WIIITICSriH.: 15; ^(^x ^wmik^^^^^ Wf^' '._::-:- 154 NATIONAl. IMS( riT ( OMTANY rs. WIMTICSinK r. ^ toa^ ^' XATroNAI. I'.IScriT rOMI'AXV rs. WII ITIISIIU; 15.1 15(i NATIONAL ISISCl IT I OMrANY rs. WIIITITSIIU: girama pakeg .>NVVVT NATIONAL lUSJlIT fOMTANY » v. WIIITKSIOK V\/^L- 157 158 NATIONAL BISCUIT COMrANY r^. \VlIITI'ft4llU: tm NATIONAL KISCl IT COMrANY vs. WIUTi:SIi>E 159 \^. ^^^^4^c-S?§, J-^SKsi*-;^--"^ IGO NATIONAL BISCUIT COMPANY vs. WHITESIDE NATIONAL KISdlT ('OMTANY is. WIIITKSIDR 161 V i^ • ■>' ^ ) / 162 NATIONAL BISCUIT COMPANY V8, WHITESIDE NATIONAL BISCUIT COMPANY r«. WHITESIDE 163 M! I ■ STIPULATION. United States Cikcuit Court, District of Indiana. National Biscuit Company, Complainant, ViS. Isaac F. Whiteside, Defendant, St. Louis, November 9, 1906. A settlement of the above-entitled case is agreed to between the parties complainant and defendant, as fol- lows: The original package exhibits and samples of loose crackers referred to in the bill of complaint in this case and made part thereof having been produced for the pur- pose of inspection by both parties, it is agreed as follows : That as to Mothers Biscuit package marked ** Com- plainant's Exhibit, Defendant's Infringing Carton No. 1," it is agreed that Defendant shall abandon the use of the red color on the end seal, and instead of the red col- ored end seal shall use an end seal of yellow. The color of the w^rapper shall be changed from blue to green. A sample of the changed form of carton to be used by the Defendant is hereto attached and marked '* Exhibit A." As to Defendant's Graham Crackers complained of m this suit, which is marked ^* Complainant's Exhibit, De- fendant's Infringing Carton No. 2," and which is pro- vided with a red wrapper, it is agreed that the Defendant shall change the wrapper from red to brown, and substi tute a yellow end seal for the red end seal. A sample of the change agreed upon is hereto attached and marked *^ Exhibit B." As to Defendant's package of Imperial Toast marked *' Complainant's Exhibit, Defendant's Infringing Carton No. 3," Defendant is to abandon the wrapper and the name Imperial Toast. As to Defendant's Oatmeal Cracker package marked * ' Complainant 's Exhibit, Defendant 's Infringing Carton No. 4," which is provided with a green wrapper with red panels and with red end seals, it is agreed that the de- fendant shall abandon the use of that wrapper as w ell as the red colored end seals; but nothing in this is to be construed as preventing the Defendant from using the word ' ' oatmeal ' ' in connection w ith his crackers, or from using the name or phrase ''For Goodness Sake," or from using his own name in connection with oatmeal crackers. As to ^* Complainant's Exhibit, Defendant's Infring- ing Carton No. 5" (Kentucky Flakes), it is understood and agreed that the Defendant shall substitute a yellow colored end seal for the red end seal on tliat exhibit, and change the body color of the wrapper, which in said ex- hibit is white, from w^hite to a delicate blue color. As to ** Complainant's Exhibit, Defendant's Infring- ing Carton No. 6," which is Whiteside's Oyster Cracker, and is of a gray or slate color with red colored end seals,' it is agreed that Defendant, from and after January 1, 1907, shall change the body color of the said w^rapper from a gray to a light blue color, the red end seal for such packages having already been changed by the De- fendant from a red color to a yellow color. Except as above stated, the printed matter on the said carton is to be the same as on the said exhibit, should the Defendant desire to use the lettering on that exhibit. As to ^^Complainant's Exhibit, Defendant's Infring- ing Carton No. 7," being for Butter Thin crackers, it is Ill 164 NATIONAL BISCUIT COMPANY va. WHITESIDE NATIONAL BISCUIT COMPANY t*. WHITESIDE 165 [•r t ] ^ understood and agreed that the Defendant has aban- doned that package. As to ** Complainant's Exhibit, Defendant's Infring- ing Carton No. 8/' which is for Whiteside's Butter crack- ers, it is agreed that from and after this date the Defend- ant shall not use a red end seal and substitute therefor an end seal of yellow color. As to ** Complainant's Exhibit, Defendant's Infring- ing Carton No. 9" (Mamma's Ginger Wafers), it ia agreed that the Defendant shall change his red end seal to an end seal of yellow color. As to ** Complainant's Exhibit, Defendant's Infring- ing Carton No. 10" (Whiteside's Milk Biscuit), it is agreed that the defendant shall change his red colored end seal to a yellow colored end seal. As to *' Complainant 's Exhibit, Defendant's Infring- ing Carton No. 11" (Whiteside's Cracker Meal package), it is agreed that the defendant shall, on or before Janu- ary 1, 1907, make the following changes in the carton or wrapper : Change the outer wrapper to a yellow color and substitute new directions and ornamental designs on the said wrapper. It is also understood and agreed that the defendant, as to the last named carton and wrapper, has changed the red end seal to a yellow colored end seal. As to the separate cracker exhibits in this case, it is agreed that on or before January 1, 1907, the defend- ant shall take off from said cracker the name *^ Crispy" and change the form of said cracker from a six-cornered cracker to a three-cornered cracker, and abandon the word ** Crispy" in connection with bakery products from and after January 1, 1907. As to ** Complainant's Exhibit, Defendant's Infring- ing Jersey Butter Cracker," it is agreed tliat on or be- fore January 1, 1907, the defendant shall take off from that cracker the picture of a cow, and abandon the use of the word ^^ Jersey" in connection with the wrappers, boxes or display cans, or in any way in connection with the manufacture of crackers. It is also understood and agreed that the exhibits which have been withdrawn by the Complainant and pro- duced here in connection with this settlement, and which are referred to in the bill of complaint, shall be returned to the Court so as to form part of the record in this case. It is also agreed that from this date on the defendant shall abandon the use of red colored end seals in con- nection with any bakery products manufactured or sold by the defendant, and that instead of red colored end seals he shall use a yellow colored end seal, or some color distinctly different from red. It is also agreed that the taxable costs in this suit shall be paid by the defendant. It is also agreed that in settlement of all claims for profits and damages on account of past infringements alleged in the bill of complaint herein, the defendant has paid to the complainant a sum of money satisfactory to the complainant, receipt of which is hereby acknowledged by the complainant. It is also agreed that a consent decree for a perpetual injunction, consistent with this settlement, shall go against the defendant in respect to the packages herein- before specified, with the understanding that that injunc- tion shall be suspended until January 1, 1907, in respect to certain of the packages specified herein and as fullv explained herein ; and that, the changes in the packages herein specified being made by the defendant, it shall not be contended by the complainant, at any time, that the packages, so changed as specified herein, are within the scope of any injunction that may be entered in this case in pursuance of this agreement. IH I|i. I ll If # I ['■ I I I (! I 1 1 WW I 166 NATIONAL BISCUIT COMPANY V8. WHITETSIDE Executed in triplicate at St. Louis, Missouri, this 9tli day of November, 1906. Earl D. Babst OfFIELD, ToWDE & LiNTHICUM Solicitors and of Counsel for National Biscuit C'ompany. Paul Bakewell Solicitor and of Counsel for Isaac F. Whiteside. W. H. H. Miller Of Counsel for Complainant. L. M. Harvey Of Counsel for Defendant. national biscuit company is. whitetside 167 FINAL DECREE. In the Circuit Court of the United States. For the District of Indiana. November Term 1906. December 10th, 1906. Before Honorable Albert B. Anderson, Judge. National Biscuit Company, Complainant, V. Isaac F. Whiteside, Defendant. > No. 10410. This cause coming on to be heard upon the pleadings and on the proofs taken on behalf of the Complainant, Messrs. Miller, Shirley & Miller and Messrs. C. K. Offield and Earl D. Babst appearing on behalf of Complainant and Messrs. Harvey, Pickens, Cox & Kahn and Mr. Paul Bakewell in behalf of the Defendant, and the Defendant not desiring to further contest this cause, a settlement having been made between the parties, it is therefore ordered, adjudged and decreed as follows : 1. That a settlement of damages and profits having been made by the parties and such damages and profits paid under such settlement, that no reference to the Master is therefore made. 2. That the taxable costs in this case, which it is agreed between counsel in this case amount to $140.35, have been paid by the Defendant. Id >» if > ! 168 NATIONAL BISCUIT COMPANY vs. WHITESIDE 3. That an injunction issue according to the prayer of Paragraph 1 of Clause 3 of the bill of complaint in this case as against carton exhibits Nos. 1 to 11 inclusive and the two individual cracker exhibits, ** Crispy^' and ** Jer- sey Butter;'' but such injunction is not to take effect or be served until January 1, 1907. 4. That this decree is therefore final. United States of America,| District of Indiana, jj I, Noble C. Butler, Clerk of the Circuit Court of the United States within and for said district, do hereby certify that the above and foregoing are full and true copies of the stipulation filed and the final decree entered on the 10th day of December, 1906, in the case of the National Biscuit Company against Isaac F. Whiteside, as fully as the same appear upon the files and records now in mv office. Witness my hand and the seal of said Court, at In- dianapolis in said district this 12th day of December, 1906. Noble C. Butler, Clerk. NATIONAL BISCUIT COMPANY vs. WHITESIDE 169 INJUNCTION. Ix THE Circuit Court of the United States, For the District of Indiana. THE UNITED STATES OF AMERICA. To Isaac F, Whiteside, his servants, agents and em- ployees, and all claiming or holding through or under him, Greeting : You, and each of you, are hereby strictly restrained and perpetually enjoined from in any manner whatso- ever handling, advertising or selling packages or cartons containing bakery products having upon the ends thereof any red seal with white line markings thereon, or red seal substantially like the seal or Trade Mark of the National Biscuit Company, or from making, using, sell- ing or handling cartons like the National Biscuit Com- pany's carton containing the National Biscuit Company's Trade Name ^^Uneeda Biscuit" with wrapper accompani- ment as shown in the 'National Biscuit Company's ex- hibit of the same in the cause in said court entitled the National Biscuit Company against Isaac F. Whiteside. No. 10,410, or the use of the word ** Biscuit" upon a white parallelogram, as shown in Complainant's exhibit De- fendant's Infringing Carton No. 1, in said cause, whether preceded by the word ** Mothers" or any word associated therewith, or from the use of any wrapper application similar to or substantially like the wrapper application upon the National Biscuit Company's **Uneeda Biscuit" package; or from the use of any wrapper or red body color like or similar to the Graham Wrapper of red body color of the National Biscuit Company, shown in Com- plainant's Exhibit Carton Bakery Product No. 2, in said cause of the National Biscuit Company against Isaac F. II "y :< y '1 m I i:l 1 1 1 If I! 170 NATIONAL BISCUIT COMPANY vs, WHITESIDE AVhiteside, No. 10410, or from in any manner copying or simulating the other carton exhibits of the National Bis- cuit Company with its wrapper accompaniment and red seal thereon, as shown and identified by the various ex- hibits filed in said above entitled cause; or from selling crackers in bulk like Complainant's Exhibit Complain- ant's Jersey Butter Cracker, and Complainant's Exhibit Complainant's Crispy Cracker, filed in said above en- titled cause ; and from violating and infringing the rights of the said National Biscuit Company as hereinabove set forth. Whereof you are not to fail at your peril. Witness the Honorable Melville AY. Fuller, Chief Justice of the Supreme Court of the United States and the seal of said Circuit Court at Indianapolis in said District, this 1st day of January, A. D. 1907. Noble C. Butlee, Clerk. n NATIONAL BISCUIT COMPANY vs. WHITESIDE 171 MARSHAL'S RETURN. United States of Amebic a, | District of Indiana. j ^^' Received this writ at Indianapolis, Jany. 5th, 1907, and served on the within named Isaac F. AVhiteside, by reading to and in his hearing at Jeffersonville, Clark County, Indiana, Jany. 7th, 1907, and by handing him copy of same on Jany. 8th, 1907. Henby C. Pettit, U. S. Marshal, By Alonzo Boyd, Deputy. United States of Amebica,| District of Indiana, ] I, Noble C. Butler, Clerk of the Circuit Court of the United States for the District of Indiana, do hereby cer- tify that the above and foregoing is a full, true and com- plete copy of the w^rit of injunction and return of the marshal thereon, filed in said court on the 11th day of January, 1907, in the cause of National Biscuit Company vs. Isaac F. Whiteside, No. 10410, as fully as the same remains on file in my office. Witness my hand and the seal of said Court, at In- dianapolis in said District, this 11th day of January, A. D. 1907. Noble C. Butleb, Clerk. F.ii;ii. I ■ »nii pniii|jpj|ini^iCT ' i ! I J(n Oliyanirpi^ a( ^^m Ifpratg Between NATIONAL BISCUIT COMPANY Complainontj and PACIFIC COAST BISCUIT COMPANY, CHARLES M. WARNER, JOHN C. HAN- RAHAN, WILLIAM M. LAWS, HER- MAN WITTENBERG, MORITZ THOM- SEN, CHARLES HOTCHKISS, and A. M. BROOKES, Officers and Directors of said PACIFIC COAST BISCUIT COM- PANY Defendants. On Bill for Relief CONCLUSIONS VREDENBURGH, WALL & CAREY Solicitors for Complainant CHARLES K. OFFIELD EARL D. BABST Of Counsel COLLINS & CORBIN Solicitors for Defendants WILLIAM D. FENTON Of Counsel Il I 174 NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY ^it ! H^ I ! Nil! III! •i NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 175 Between National Biscuit Company Complainant, and Pacific Coast Biscuit Company, and Charles M. Warner, John C. Hanrahan, William M. Laws, Herman Wittenberg, Moritz Thomsen, Cha r 1 e s Hotchkiss and A. M. Brookes, Officers and Directors of said Pacific Coast Biscuit Company Defendants, > On Bm, &c. CONCLUSIONS. On final hearing on pleadings and proofs. Messrs. Vredenburgh, Wall d Carey , Mr. Charles K. Offield (of the Illinois Bar) and Mr. Earl D. Bahst (of the New York Bar), for complainants. Messrs. Collins & Corbin and Mr. William D. Fenton (of the Oregon Bar), for defendants. Walker, C. The object of this bill is to restrain unfair competi- tion in trade. The complainant and defendant companies are cor- porations organized under the laws of this state. Both are engaged in the same line of trade, the manufacture and sale of bakery products. The business of the de- fendant company is confined to the Pacific Coast States and adjacent territory, while the field of activity of the complainant company is nation wide. The complainant's career commenced in 1898, when it acquired some of the leading bakery-plants in the country, with which it be- 1 174 NATIONAL HISCIIT COMi'ANV vs. I'ACIFIC COAST lUSCl IT CO\II*AN\ NATIONAL IJISCIIT COMPANY rs. PACIFIC COAST lilSl'L IT COMl'ANV -\ 175 On Bill, &c. COXCLUSIUXS. Between National Biscuit Company Complainant, and Pacific Coast Biscuit Company, and Charles ^1. Warner, John V C. Hanrahau, William M. l^aws, Herman Wittenberg, Moritz Thomsen, Cha r 1 e s Hotehkiss and A. M. Brookes, Officers and Directors of said Pacific Coast Biscuit Company Defendants. On final hearing on pleadings and proofs. Messrs. Vredenburgh, Wall & Carey, Mr. Charles K. Offield (of the Illinois Bar) and Mr. Earl D. Babst (of the New York Bar), for complainants. Messrs. Collins S Corhin and Mr. William D. Fenton (of the Oregon Bar), for defendants. Walker, C. The object of this bill is to restrain unfair competi- tion in trade. The complainant and defendant companies are cor- porations organized under the laws of this state. Both are engaged in the same line of trade, the manufacture and sale of bakery products. The business of the de- fendant company is confined to the Pacific Coast States and adjacent territory, while the field of activity of the complainant company is nation-wide. The complainant's career commenced in 1898, when it acquired some of the leading bakery-plants in the country, with wliich it be- I " 176 NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY gan operations. It already liad a market for its goods, brought to it by these plants, and by the exercise of a su- perior order of scientific and mechanical intelligence and of commercial acumen and industry, acquired a wide and enviable reputation for the high quality of its products. A market for these wares was established in the defend- ant's territory shortly after the complainant started business in 1898. The principal innovation made in the bakery line by the complainant is that of housing and ti'ansmitting to the ultimate consumer bakery products with a minimum of deterioration, and practically as they leave the ovens. This is accomplished by the use of paper-cartons. Up to the complainant's advent, shipments were mainly in **bulk," that is, in barrels and wooden boxes. Paper- cartons, of the shoe-box style, with loose paper-lining, and hermetically sealed tin-boxes, were also used, but only to a very limited extent. The tin boxes were com- mercially too costly and tlie shipment in bulk was objec- tionable because of the tendency of the contents to ab- sorb moisture and deleterious and offensive odors, and to breakage. Uncleanliness in the handling by the re- tailer was also to be reckoned with. The paper-cartons adopted by the complainant were much smaller than those theretofore used and were of a size to permit of sales at popular prices — five and ten cents per package. These cartons are constructed by superimposing upon the carton blank, made of card- board, a sheet of wax-paper of the size and shape of the blank, which when folded, form a unit-box, and, it is said, possess the quality and capacity of preserving the con- tents equal to the hermetically sealed tin- box. The car- tons are of various sizes and shapes, adapted to the forms of the proposed contents ; and to identify the con- tents as its products, and to distinguish the same from those of other dealers, the complainant adopted a trade- llMl llM NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMl'ANY 177 mark and a variety of trade-names for its various pro- ducts, and peculiar and distinctive labels and wrappers to envelop the cartons, all of which, it is claimed, the de- fendant fraudulently simulated, to the injury and dam- age of the complainant's trade. The alleged infringement of fifteen widely different styles of cartons and carton-wrappers and applied trade- names, for as many kinds of crackers or biscuits; the methods of construction of the carton and of the form of bundle-package of assembled cartons, as well as the trade-mark, is involved in this litigation. The law relating to fraudulent or unfair competition between traders is so firmly established and has been so lucidly illustrated and defined by the courts of England and of this country, that extended citation of authorities will be profitless. The underlying principle that no man has a right to palm off his wares as those of another, thereby cheating the purchasing public and filching the business of a rival, is so essentially an element of nat- ural justice and so solidly imbedded in our jurispru- dence, that all that is necessary to quicken a court of equity is to show that in the particular instance the of- fense has been committed. The cases cited by counsel in their briefs exemplify the illimitable conditions and circumstances under which this simple doctrine, requir- ing men to be honest towards each other, may be in- voked. The case of Wirtz v. Eagle Bottling Company, 50 N, J. Eq., 164, is a striking example of the adaptation of the principle to unfair competition in the use of imitative labels and wrappers. The opinion in that case so fully covers the whole scope of the law applicable to the facts presently to be considered, and furnishes so clear a guide, that I am persuaded to quote from it in extenso. The complainant, in that case, by his industry and fair dealing, had built up a large and valuable trade as a ii ( I 178 NATIONAL BISCUIT COMPANY V8. rACIl'iC COAST BISCUIT COMPANY bottler of beer and identified his goods by a peculiar and distinctive label, which label the defendant substantially copied. Vice-Chaiicellor Van Fleet, in granting a pre- liminary injunction, subsequently made perpetual, at p. 166, said: ^*If we speak with accuracy, these labels cannot be called trade-marks, but they serve substantially the same purpose. They are the marks by which the complainant's goods are distinguished in the market from all like goods put upon the market by other persons, and are, for that reason, according to many decisions, just as much under the protection of the law as trade-marks are. The law protects them for the same reasons and in precisely the same way that it does trade-marks. The leading prin- ciple of the law on this subject is, that no man should be permitted to sell his goods on the reputation which another dealer has established in the market for his goods, and this principle applies with equal force to the case where the goods of such other dealer are kno\vn in the market by a label as it does to the case where they are known by a mark which is strictly a trade-mark. No dealer can lawfully adopt the label of another dealer, or one so near like it as to lead the public to suppose that the article to which it is affixed was put upon the market by such other dealer. Miller Tobacco Manufactory v. Commerce, 16 Vr, 18, 24. The reasons upon which this rule rests were stated by Mr. Justice Knapp, in the case just cited, substantially as follows: While the markets are open and free to all, and fair competition should be encouraged, still every dealer must be required, for the protection of the public and to promote fair dealing, to depend for his success upon his own reputation and the quality of his own pro- ductions. If he were allowed to deal under false colors and sell his productions for those of others, the result would be that he would not only cheat the public, but also defraud him whose right place in the market he filled with spurious goods. Such competition would not be fair com- petition — it would be closer akin to piracy. NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 179 The defendant's labels were prepared under the direc- tion of its general manager * * * He further says, that in designing the defendant's labels he had no pur- pose or design of palming off the defendant's goods for those of the complainant. Admitting all this to be true, it is manifest it constitutes no defense. The vital question in cases of this kind is not what did the defendant mean, but what has he done! The legal quality of an act, re- sulting in injury, must be decided not by the motive with which it was done, but by the consequences which have necessarily resulted from it. The law, in civil cases, does not attempt to penetrate the secret motive which induced the act brought in judgment, but judges of its legal quality solely by the consequences which have actually and necessarily proceeded from it. It is no less a dictate of justice, than of sound reason, that every person must be understood to have intended to do just what is the nat- ural consequence of his act deliberately done. * * * for it is a matter of common knowledge that the ordinary buyer does not, as a general rule, exercise as much caution in buying an article for which he pays a few pennies as he does in purchasing a more valuable thing. The instances are very rare, I suppose, where a purchaser exercises as much care in buying a bottle of beer as he does in buying a bottle of whiskey, a box of cigars, or a hat or a coat. * * * Where, as in this case, the subject-matter of the controversy is labels, and the question is, whether one is a fraudulent simulation of the other, tlie decision must always, to a large extent, be controlled bv the evi- dence furnished by the labels themselves. As a general rule, they constitute the very best evidence of which the case is susceptible. That is the case here. A comparison of these labels, whether made singly or in a group, shows conclusively, as I think, that the use of the defendant's labels constituted a plain violation of the complainant's right. It is difficult to believe that one set of labels could have been made so near an exact copy, in all their spe- cial characteristics, of another set without an effort at simulation." In 1900 the complainant, the National Biscuit Com- pany, adopted as its trade-mark a sign or symbol known I ! ii I: I Jl I III I 180 NATIONAL BISCUIT COMPANY vs. TACIFIC COAST BISCUIT COMPANY in the trade as the * ^ In-er-seal' ' or ^^In-er-seal trade- mark/' This seal is square, and of a peculiar shade of red, with clipped corners and white lines thereon forming an ellipse, divided equally by a horizontal line, from which extends a perpendicular line halving the upper half of the ellipse, with two horizontal lines crossing the perpendicular line above the ellipse. This configuration of white lines on the seal is said to have been the sign and mark of the first printers in the early period of that art, taken by them from the Catholic church, and by the latter from Paganism, and signifies the triumph of the spiritual over the material world. These seals were placed upon each end of all the paper-cartons containing the bakery products placed on the market by the com- plainant, and in addition to the purpose they serve in sealing the cartons, are an attractive and conspicuous feature of the carton wrapper. The initial trade name coined and applied by the com- plainant to an important part of its cracker output is **Uneeda'' or **Uneeda Biscuit." The association of the ^^In-er-seal" trade-mark and the name *^Uneeda Biscuit'^ formed the slogan of the complainant's business. By the expenditure of a stupendous amount of money in lavish, but judicious, advertisement, they became known to al- most every man, woman and child in this country, as the identifying mark and name of the complainant's goods. I quite agree with the statement of one of the witnesses who testified, that ^^Uneeda Biscuit and tlie In-er-seal, it may be said, are woven into the fabric of the National Biscuit Company. In fact, they are th<» business. As to their value they are probably worth mil- lions of dollars to the National Biscuit Company. Its physical properties such as plants, machinery, and so forth, if destroyed, could be replaced within a reasonably short time, while the loss of the In-er-seal and Uneeda IT i NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 181 Biscuit and the good-will that goes with them, would be, if not irretrievable, at least a very great calamity." The defendant, The Pacific Coast Biscuit Company, succeeded to the business of the Portland Cracker Com- pany in 1899. The latter named company had been en- gaged in the cracker baking business at Portland, Oregon, since 1886, and in the carrying on of its business used a variety of labels, some descriptive of the package con- tents and others to identify its various kinds of cracker and biscuit output, and to mark them as the product of that company, but none that bore any resemblance to the ^ an-er-seal, " the label of the complainant; none square in shape, with clipped corners, a red field with white marking and applied to either end of paper-cartons of the dimensions of those of the complainant. When the defendant bought the property of the Portland Cracker Company it took over these seals and for a time used them, substituting only its name for that of its pre- decessor, until about the year 1903, when they were prac- tically discarded, and a seal known as ''Gold Coast End Seal" was adopted, which was also far unlike the com- plainant's ''In-er-seal." In 1907 this one was also aban- doned, and a red-end seal termed "Swastika Red-end Seal, ' ' with clipped comers and white line markings upon a back-ground of red exactly the same shade as the com- plainant's seal and which is the infringing seal com- plained of, was substituted. It is described in the record as a symbol of prehistoric origin, emblematic of a benef- icent Deity, eternal life, benediction and blessing, good wishes and good augury, and was and is used by Indian basket makers and blanket weavers, potters, and silver- smiths, and is known as the Navajo Indian cross, and was well known and in use as a religious emblem in India fifteen centuries before the Christian era. Like the com- plainant's "In-er-seal" it is being used by the defendant on both ends of paper-cartons of identically the same size t 1 I 182 NATIONAL BISCUIT COMPANY V8. PACIFIC COAST BISCUIT COMPANY NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMl'ANY 183 and shape as the complainant's cartons. The two labels, the ''In-er-sear' and the ** Swastika" differ only in their markings. Laid side by side, and disassociated from the cartons, the resemblance is not marked, but when the de- fendant's seals are applied to the end of cartons resem- bling, as to size, shape, wrapper application, and euphony of coined names, the similitude is striking, and when thus associated is of a character calculated to mislead and de- ceive the unwary and unsuspecting purchaser. The federal courts have had occasion, by injunction, to protect this complainant in its seal and seal applica- tion against an infringing seal, under circumstances much like those present in this case. Ohio Baking Com- pany V. National Biscuit Company, 127 Fed, Rep. 116; National Biscuit Company v, SwicJc, 121 Fed, Rep. 1007. The claim of the defendant that it and its predeces- sor, the Portland Cracker Company, used a red-end seal, square in outline with clipped corners, upon the end of cartons, to denote its wares, prior to the adoption by the complainant of its In-er-seal, is not sustained by the tes- timony. Moreover, the red-end seals which were used by the defendant were, as I have already stated, dis- carded for the '^Gold Coast seal" in 19()3. Inspection and comparison of the cartons of the com- plainant and defendant, of the nomenclature and wrap- per embellishment, and of the red-end seal application, are sufficient to satisfy me of the copying by the defend- ant of the complainant's trade-name and carton and car- ton-wrappers. I cannot conveniently deal with the car- tons collectively, nor will it be possible, within the lim- its of these conclusions, to advert in detail to all of the points of similarity between the two sets of cartons, to which my attention has been called, and, therefore, ref- erence will only be made to the prominent features. Generally, as to size, shape and capacity (and the fif- teen cartons of the complainant differ in these respects), it may be said, that the defendant's cartons are exact and substantial counterparts of the complainant's. The red- end seal on both ends of the infringing cartons, and the superimposed wax-paper interior, are also uniform points of likeness. The resemblances in other respects, submitted by the complainant, I will take up in the order in which the infringements are charged in the bill. 1. This relates to the red-end seal already disposed of. 2. Complainant's **UNEEDA;" Defendant's ^^ABETTA" BISCUIT. The wrappers of the two car- tons to which these words are applied are of a dark body color, with white parallelogram decorations. The style of type and the location of the display of the name of the biscuit and of the reading matter, is the same, and the latter conveys the same meaning. That the com- plainant is entitled to the exclusive use of this coined word, as applied to crackers or biscuits, seems to me to be beyond question, and this extends to any word sim- ilarly applied, which rings with the same tone. **Abetta" was coined by the defendant with knowledge of the use and application by the complainant of the suggestive name ^^Uneeda." This, coupled with the circumstances of two consecutive abandonments by the defendant of similar and graduating, but less offensive infringing cartons, and the obvious purpose of creating the impres- sion of an alliance between the two biscuits, and of su- periority in that of **Abetta" ( a better than Uneeda), evinces that the selection by the defendant of the word **Abetta" was intended to bring to it profit from a con- fused purchasing public. 3. Complainant's ^'NABISCO"; Defendant's '*PAKFAIT" and '* FIESTA." The word ** Nabisco" is made up practically of the initial syllable of each of the words of ** National Biscuit Company." Both packages ,1! 184 NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY NATIONAL BISCUIT COMPANY V8. PACIFIC COAST BISCUIT COMPANY 185 1< I ' are of tin. The contents of each is a sweet cracker. The color scheme of the wrappers is the same. It is of a white background with red and gold decorations, clearly a case of copying. 4. Complainant's *^ SOCIAL TEA BIS(^UIT;'' De- fendant's ^^ ELITE BISCUIT.'' There is a pronounced resemblance in the decorations and appearance of these two packages. ** Social" and ** Elite" convey the same impression, and the substitution of the latter for the former on the defendant's cartons evinces but a single motive: confusion. 5. Complainant's ^^UNEEDA MILK BISCUIT;" Defendant's ^MBETTA MILK BISCUIT." These are as nearly alike as ^*two peas in a pod." The answer of the defendant respecting its carton and its statement that it has stopped making it, impliedly confesses copy- ing. 6. Complainant's ^^OYSTEEETTES;" Defendant's '^TOKE POINT OYSTERETTES." This word ^^oys- terettes" was coined by the complainant and applied to a particular brand of its crackers, in the year 1901. The word is indicative of the contents of the cartons. Up to 1909 the complainant had marketed some Hfty millions of these carton contents, under this trade-name, and, on the Pacific coast, in excess of a million. The daim of the defendant that its predecessor originated and applied this name to a brand of its goods prior to the adoption by the complainant, is not borne out by the testimony. The prominent eye-object on the carton is, of course, the word ^ * Oysterettes. " The defendant's *^Toke Point" is printed with type comparatively obscure; the boxes are of the same size. 7. Complainant's *'FIG NEWTONS;" Defendant's *'FIG SULTANA." The copying here is manifest. The body-color of the wrapper in each carton is white, with gold scroll work embellishments and red-end seal. Ob- viously the defendant's carton is an imitation. 8. Complainant's and Defendant's **MABSHMAL. LOW DAINTIES. ' ' The complainant was the first to orig- inate and apply this trade-name to one of its carton bak- ery products. This was in 1905. Up to the time of the taking of the testimony in 1909, it had sold under this name some five million of these carton contents. The exact trade-name has been appropriated by the defendant, and is the subject of complaint. 9. Complainant's ''ZU ZU;" Defendant's *^H00 HOO" GINGER-SNAPS. ^^Zu Zu" and *^Hoo Hoo" are merely catch words, with the same general sound when spoken, and not widely different to the non-discriminat- ing when printed. The words respectively on the two cartons have the same general appearance, and with the box arrangement and red-end seals, show similarity, and leave the impression that imitation was intended. *'Zu Zti," as a trade name was adopted by the complainant in 1901, and applied to ginger-snaps. The sale of these cartons to June, 1909, was approximately one hundred million, and over a million in the Pacific coast states. The defendant claims the right to the use of ' ' Hoo Hoo ' ' because of prior appropriation by its predecessor. The record does not satisfy me that this contention is well founded. 10. Complainant's ''FROTAiNA;" Defendant's *^MABITANI" FRUIT BISCUIT. Similarity of size of cartons, of wrapper coloring, of red entering largely into the decorations, the red-end seal application, the fruit bis- cuit contents, and the confusion between the two names as to pronunciation of their ending syllables, taken as a whole, evidence copying. 11. Complainant's and Defendant's '^COCOANUT DAINTIES." This term was originated by the complain- ant as a mark for one of its products. The trade-name li 1 l« 186 NATIONAL BISCUIT COMPANY vs. PACIFIC COAiST BISCUIT COMPANY has been copied. Both cartons are of the same size. The general arrangement of the lettering, the light color of the two boxes and the red-end seal, all tend towards con- fusion. 12. Complainant ^s ' ' OLD TIME SUGAR COOKIES ; ' ' Defendant's ^^OLD FASHIONED SUGAR COOKIES.'' The only change made by the defendant in ajjpropriating this trade-name is the substitution of the word *^ Fash- ioned" for the word **Time'', both of which, in connection with the remainder of the name, have the same signifi- cance. The same size and shape of the carton, of the white colored wrappers, and the application of the red-end seal, complete the likeness. 13. Complainant 's * * CELEBRATED ZAYIEB ACK ; ' ' Defendant's '^GENUINE ZWIEBACK." These pack- ages are approximately of the same size and shape. The German and English printed matter bears comparatively the same appearance and meaning. Aside from this and the red-end seal application, there does not appear to be other similarity. 14. Complainant's **FANCY ASSORTMENT;" De- fendant's ^^FANCY ASSORTED CAKES." The size and dress of these cartons have a single eye appearance. The term applied to the defendant's carried with it the same meaning as that adopted by the complainant. The decorations, as to red border-lines, are attracting simi- larities. 15. Complainant's '* OATMEAL CRACKERS;" De- fendant's ^'ABETTA OATMEAL CRACKERS." Both wrappers are green. The shade of the defendant's varies slightly from that of the complainant's. The prominent sight object on both is *' Oatmeal Crackers." On the de- fendant's in dim type and small print, apparently intend- ed not to be readily observed, is the word '* Abetta." 16. Complainant's and Defendant's *' ANIMAL BOX." NATIONAL BISCUIT COMPANY V8. PACIFIC COAST BISCUIT COMPANY 187 These seem to be counterparts, even to the cord handle. Here the copying is complete. The history, as disclosed by the voluminous record, of the progressive steps of the defendant in the work of seal imitation, which culminated in the adoption of the ' ' Swas- tika ' ' seal, read in connection with the history relating to the constant advance in copying, and the gradual approach by the defendant in the use of cartons and wrappers, in appearance like those of the complainant, convinces me that the '* Swastika" red-end seal was fashioned and ap- plied by the defendant to the ends of its cartons, and that these cartons and wrappers and trade-names, so much like those of the complainant, were simulated by the defendant for no other purpose than to mislead the public into purchasing its goods for those of the com- plainant's, and thus to purloin the complainant's busi- ness. I cannot escape this conclusion. The Portland Cracker Company and the defendant built up a cracker trade, with seals of a distinctive type, the more prominent and generally used one of which w^as a red seal with a boy sitting on a cracker-box, apparently exhibiting a cracker in each hand, dividing the words, *^Our Brand." The defendant also created its own style of cartons and wrappers to individualize and distinguish its output. After the complainant entered the industry and introduced its novel and successful methods a cam- paign of simulation upon the part of the defendant began. Seals were abandoned and cartons and carton-wrappers of the defendant's selection and origin were from time to time discarded and eventually replaced by those the sub- ject of this suit. The deadly parallel between the entire line of the complainant's and defendant's seals, cartons, carton-wrappers and trade-names is so conspicuous that it requires no great perspicuity to observe that the de- fendant's present methods of displaying and vending its wares are not attributable to any desire on its part to 188 NATIONAL BISCI IT COMPANY vs. TACIFIC I OAST BISCUIT COMPANY NATIONAL BISCUIT COMPANY V8. PACIFIC COAST BISCUIT COMPANY 189 ! 1 honestly build up a trade of its own, but rather that they are the culmination of a premeditated and single purpose of dealing under the cover of the good-will of a success- ful rival. It is unnecessary in these passing-off cases to find in- tentional fraud or that it be shown that anyone has been actually deceived to entitle a complainant to protection. It need not appear that there is precise copying of any one of the cartons of the complainant. In Ball v. Siegel, 116 III., 137, it was said : **It is true, that in cases of this kind, as a general rule, exact similitude is not required to constitut(» an infringe- ment, or to entitle the complaining party to protection; but if the form, marks, contents, words, or other special arrangement or general appearance of the words of the alleged infringer's device are such as w^ould be likely to mislead persons in the ordinary course of purchasing the goods, and induce them to suppose that they were pur- chasing the genuine article, then the similitude is such as entitles the injured party to equitable protection, if he takes seasonable measures to assert his rights and prevent their continued invasion. ' ' And Vice Chancellor Van Fleet, in the Wirtz case {50 N, J. Eq. at p. 168) puts it thus: **If it appears that the resemblance between the two labels is such that it is probable in the sale of the goods of the parties, the one will be mistaken for the other, enough is shown to make it the duty of the court to inter- fere. Edelsten v. Edelsten, 1 De. G., J. d S, 185, 200. As was said by Mr. Justice Clifford, in McLean v. Flem- ing, 96 U. S. 245 — a case in which all the principles per- tinent to the case in hand were stated with great clear- ness and fullness — no rule, as to what degree of similar- ity must exist in order to constitute an infringement, can be laid down which may be applied to all cases. All that can be done in that record is to say, that where the similarity is sufficient to convey a false impression to the public mind, and is of a character to deceive the ordinary purchaser, buying with the caution usually exercised in such transactions, there sufficient ground exists to entitle the injured person to redress. There are cases which lay down a more liberal rule in favor of persons claiming protection, and declare that if the resemblance is only such as is calculated to deceive the careless and unwarj', a sufficient degree of similarity will exist to justify the court in interdicting the use of the counterfeit." The facts in the case suh judice, in my judgment, abundantly establish that the defendant's cartons and carton-wrappers, its seal trade-mark and trade-name, associated as they are, tend towards deceiving and are likely to deceive the purchasing public into the belief that the defendant's crackers and biscuits are those of the complainant. The carton formation and the bundle packages are not the subject of exclusive appropriation by the com- plainant, as devices to mark and indicate its products. The cartons known as the ** Peter's Patent" were de- clared in Union Biscuit Company, et at. v. Peters, 125 Fed. Rep. 601, as not a patentable invention. There can, of course, be no monopoly of the shape, size or capacity of a box. The lining of such boxes, with wax or paraffine paper superimposed thereon, and forming a unitary structure capable of inter-folding at the ends, for the enclosing of perishable goods, is a system or method which, it seems to me, must necessarily be common to all bakers. I have not a doubt but that the complainant used this form of package before the defendant, and that the secondary purpose of the defendant in adopt- ing it, was a part of its general plan of imitating the complainant's line of operation. Nor do I think it can be disputed that, in connection with the other simulations which have already been pointed out, this particular one failed of its mission. This may also be said of the bun- dle package. Instead of using wooden boxes to enclose for r II: 190 NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMl'ANY shipment an assembled assortmeni of filled cartons, the complainant used paper shaped into box form. The only service in this case of the imitation of the carton pack- age and the bundle package, is to emphasize tlie trend of the defendant towards copying the complainant's style. There will be an injunction restraining the defendant, including the director-defendants (for the sake of con- venience I have heretofore referred to all of the defend- ants as one), from putting up and selling or offering for sale : (a) Any carton of bakery products having thereon an imitation of complainant's **In-er-seal" trade-mark, calculated to mislead or deceive, like the defendant's *' Swastika" trade-mark. This shall not be construed to restrain the defendants from selling such cartons with their asserted trade-mark thereon, provided the trade- mark is so differentiated in general appearance and ap- plication, from the complainant's trade-mark, that it is not calculated to deceive the ultimate ordinary pur- chaser. (b) Any carton of bakery products having thereon an imitation of complainant's **Uneeda Biscuit" trade- name, calculated to mislead or deceive, like those on de- fendant's carton **Abetta Biscuit." (e) Any carton of baker>^ products having thereon an imitation of complainant's trade-names **lTneeda Milk Biscuit, " * * Oysterettes, " * * Marshmallow^ Dainties, ' ' **Cocoanut Dainties," and ** Oatmeal Crackers," calcu- lated to mislead or deceive, like those on defendant's cartons respectively **Abetta Milk Biscuit," **Toke Point Oysterettes, " * * Marshmallow Dainties, " ' ' Cocoanut Dainties," and '*Abetta Oatmeal Crackers." (d) The particular forms of cartons or packages re- ferred to in the bill of complaint and identified therein as ** Complainant's Exhibit Defendant's Ahetta Biscuit Ihi NATIONAL BISCUIT COMPANY vs. PACIB^IC COAST BISCUIT COMPANY 191 and Red-end Seal Carton No. 2," and ^^Complainant's Exhibit Defendant's Infringing Packages Nos. 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16, respectively," which shall by reason of the collocation of size, shape, colors, let- tering, spacing and ornamentation, present a general ap- pearance as closely resembling complainant's exhibits re- spectively referred to in the bill of complaint and marked as ** Complainant's Exhibit Complainant's Cartons Trade-name Uneeda Biscuit Wrapper No. 2," and *' Com- plainant's Exhibit Complainant's Cartons Nos. 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16," as do the said de- fendant's respective infringing packages afore-mention- ed, but this shall not be construed as restraining the de- fendants from selling packages or cartons of the size, weight and shape of complainant's packages, nor from using the respective colors as wrappers for such pack- ages, provided such packages are so differentiated in general appearance from the said complainant's respec- tive packages that they are not calculated to deceive the ultimate ordinary purchaser. The complainant's prayer for an accounting will be denied, upon the grounds and for the reason stated by Vice Chancellor Stevenson in The International Silver Co. V. William H, Rogers Corporation, et al, 66 N. J. Eq. 140. The complainant is entitled to costs. i I 192 NATIONAL BISCUIT COMPANY V8. PACIFIC COAST BISCUIT COMPANY I, Robert H. McAdams, Clerk of the Court of Cliancery of tlie State of New Jersey, the same being a Court of Record, do kereby cer- tify that the foregoing is a true copy of the conclusions, filed June 6th, 1914, in a cause wherein The National Biscuit Company is complainant and The Pacific Coast Biscuit Company, et oL, are de- fendants, now on the files of my office. In testimony whereof I have hereto set my hand and affixed the seal of said court, at Trenton, this Sixth day of June, A. D., Nineteen hundred and fourteen. Robert H. McAdams, Clerk. NATIONAL BISCT'IT COMPANY vft. I'ACIFIC COAST BISCUIT COMl'ANY 193 IN CHANCERY OF NEAV JERSEY. ^ FINAL DECREE. Between National Biscuit Company, Complainant, and Pacific Coast Biscuit Company, Charles M. Warner, John C. Hanrahan, William M. Laws, Herman Wittenberg, Moritz Thomsbn, Charles Hotchkiss and A. M. Brookes, Officers and Directors of said Pacific Coast Biscuit Company, Defendants. This cause being opened to the Court by Vredenburgh, Wall & Carey, Solicitors for the Complainant, and in the presence of Charles K. Offield and Earl D. Babst of Counsel with the Complainant, and in the presence of Collins and Corbin, Solicitors for Defendants, and Wil- liam D. Fenton and Carl M. Herbert, of Counsel for the Defendants ; and the cause having been fully heard upon arguments, pleadings and proofs and printed briefs hav- ing been submitted; and the Court having fully consid- ered the same — It is, on this 29th day of September, 1914, by His Honor, Edwin Robert Walker, Chancellor of the^ State of New Jersey, Ordered, adjudged and decreed, and the Chancellor doth by virtue of the power and authority of the Court of Chancery of New Jersey, order, adjudge and decree as follows — i :i!i IJ m 194 NATIONAL BISCT'IT COMPANY vs. PACIFIC COAST BISCUIT COMPANY NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 195 ii First. — That the red end seal, known as the '*In-er- seaP^ appearing upon the various carton bakery pro- ducts of the Complainant, with white line markings there- on, is a good and valid Trade Mark and the property of the Complainant, and that the red end seal appearing upon the ends of the carton products of Defendants is an infringement upon the Complainant's red end seal; Second. — That the Complainant's Trade Name or Trade Mark ''Uneeda'' is a good and valid Trade Mark and Name, and the property of the Complainant, and that Defendants' name or mark **Al)etta" Biscuit, with its placement upon Defendants' carton, is an infringe- ment of said Complainant's name or mark herein; Third. — That Complainant's Trade Mark or Trade Name *^ Nabisco" is the mark or name of the Complain- ant, and that Defendants' carton or package, with the words ^^Parfait" and ^'Fiesta" in the same manner of display, are infringements of Complainant's Trade Mark or Name **Na])isco" as applied, by the simulation therewith of the color scheme of the wrappers thereof; Fourth. — That the name, mark or words *' Social Tea" Biscuit as applied by the Complainants upon car- tons of crackers, is the property of said Complainant, together with the decoration and appearance of said package, and that the Defendants' carton or package ** Elite" Biscuit is a simulation and copying of said name or word designation in the same manner of dis- play, of Complainant's on said package; Fifth. — That Complainant's Trade Name, Mark or term **Uneeda Milk Biscuit", and the decoration and marking on Complainant's carton of biscuit products is the Trade Mark and Trade Name propei-ty of Com- plainant and Defendants have markedly infringed the same by copying such carton in connection with the name ^^Abetta Milk Biscuit" in the same manner of display as Complainant's carton; Sixth. — That the word, term or name * * Oysterettes " is the Trade Mark or Trade Name property of the Com- plainant, and the Defendants have infringed and copied the same in the same manner of display as Complain- ant's carton; Seventh. — That the Complainant is the owner of the Trade Mark or Trade Name *'Fig Newtons" as applied to bakery products and cartons containing bakery prod- ucts, and that the Defendants have manifestly copied the same by the use of the word ^^Fig Sultana" and the copying of the carton embellishment or decoration, in the same manner of display, in connection with the Com- plainant's Trade Name or Mark ^^Fig Newtons" upon their carton. Eighth. — That the Complainant is the owner of the Trade Mark or Trade Name ''Marshmallow Dainties" as applied to its carton bakery products, and that the Defendants have infringed and copied the same by the use thereof, upon their cartons of bakery products, in the same manner of display; Ninth. — That the Complainant is the owner of the Trade Name ^*Zu Zu" as applied to bakery products and cartons of bakery products and that the Defendants have simulated and copied the same, by the use of the words '^Hoo Hoo" upon their Ginger Snap carton, in the same manner of display and having the same general appear- ance ; m ' II i I 196 NATIONAL BISCUIT COMPANY V8. PACIFIC COAST BISCUIT COMPANY Tenth. — That Complainant is the owner of the Tradej Name or Trade Mark ''Frotana" as applied to bakery products and cartons containing bakery products, and that Defendants have copied and infringed the same by the use of the word '*Maritana'^ upon cartons of bakery products of similar size, color and decoration in the same manner of display as Complainant's cartons; Eleventh. — That Complainant is the owner of the Trade Mark or Trade Name **Cocoanut Dainties" as ap- plied to bakery products and cartons containing bakery products and that the Defendants have violated and in- fringed the same, by the use and application of the said Trade Mark or Trade Name **Cocoanut Dainties'' to cartons of bakery products, in the same size, general ap- pearance of lettering and coloring, and in the same man- ner of display as Complainant's cartons; Twelfth. — That the Complainant is the owner of the Trade Mark or Trade Name **01d Time Sugar Cookies" as applied to bakery products and the cartons containing bakery products, and that the Defendants have violated, infringed and copied the same by the use of the word or name ^^Old Fashioned Sugar Cookies" upon cartons of the same size and shape and white coloring, and in the same manner of display of the Complainant; Thirteenth. — That the Complainant is the owner of the words, name or term *^ Celebrated Zwieback" as ap- plied by them to cartons of bakery products, and that the Defendants have copied and infringed the same by the use of the words '* Genuine Zwieback" on packages of substantially the same size and in the same printing and manner of display as appears upon Complainant's car- tons ; NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 197 Fourteenth. — That the Complainant is the owner of the Trade Mark or Name or designation ''Fancy Assort- ment" as applied to cartons containing bakery products; that Defendants have copied and infringed the same by the use of the word or name ''Fancy Assorted Cakes" upon cartons of the same size and prominent dress ap- pearance and in the same manner of display as Com- plainant's cartons; Fifteenth.— That Complainant is the owner of the Trade Mark or Trade Name "Oatmeal Crackers" as ap- plied by Complainant to a carton of bakery products, and that Defendants have copied and simulated the same by the use of the words "Abetta Oatmeal Crackers" upon a carton in the same manner of display, and with the same coloring as upon Complainant's cartons; Sixteenth. — That Complainant is the owner of a Trade Mark, Animal Box, identified by the Pleadings and Proofs as Complainant's Animal Box, and that the Defendants have copied and infringed Complainant's rights therein by a complete simulation and copying thereof ; Seventeenth. — That the bundle package containing Complainant's carton formation enclosed for shipment and containing a red paster or label thereon, was origi- nated by the Complainant, and copied by the Defendants ; Eighteenth. — It is further ordered, adjudged and de- creed that an injunction be issued against the said De- fendants, corporation and individual, restraining them and each of them, their servants, agents, attorneys or employees from putting up and selling or offering for sale: * I ,] I 198 NATIONAL BISCUIT COMPANY vs. PACIHC COAST BISCUIT COMPANY (a) Any carton of bakery product having thereon an imitation of Complainant's ^^In-er-seaP' or red end seal Trade-Mark calculated to mislead or deceive, like De- fendants' ** Swastika" or red end seal or trade-mark. (b) Any carton of bakery products having thereon an imitation of Complainant's **Uneeda Biscuit" trade- name, calculated to mislead or deceive, like tliose on De- fendants' carton *^Abetta Biscuit." (c) Any carton of bakery products having thereon an imitation of Complainant's trade-names **Uneeda Milk Biscuit," **Oysterettes," ^^Marshmallow Dainties," **Co- coanut Dainties," and ** Oatmeal Crackers," calculated to mislead or deceive, like those on Defendants' cartons re- spectively '^Abetta Milk Biscuit," *'Toke Point Oyster- ettes," * * Marshmallow Dainties," ^^Cocoanut Dainties" and * * Abetta Oatmeal Crackers. ' ' (d) The particular forms of cartons or packages re- ferred to in the bill of complaint and identified therein as ** Complainant 's Exhibit Defendants' Abetta Biscuit and Bed End Seal Carton No. 2," and *^ Complainant's Exhibit Defendants' Infringing Packages Nos. 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16, respectively, or any other packages which shall by reason of the collocation of size, shape, colors, lettering, spacing and ornamenta- tion, present a general appearance as closely resembling Complainant's exhibits respectively referred to in the bill of complaint and marked as ** Complainant's Exhibit Complainant's Cartons Trade-name Uneeda Biscuit "Wrapper No. 2," and Complainant's Exhibit Complain- ant's Cartons Nos. 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16, as do the said Defendants' respective infring- ing packages aforementioned. But this shal I not be con- strued to restrain the Defendants from' selling such cartons with their asserted '^Swastika" trade-mark there- on providing the trade-mark is so differentiated in gen- NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 199 eral appearance and application from the Complainant's trade-mark, that it is not calculated to deceive or mislead the ultimate ordinary purchaser and shall not be con- strued as restraining the Defendants from selling pack- ages or cartons of the size, weight or shape of Complain- ant's packages, nor from using the respective colors as wrappers for such packages, provided such packages are so differentiated in general appearance from the said Complainant's respective packages, that they are not calculated to deceive the ultimate ordinary purchaser. Nineteenth.^ — And it is further ordered that the in- junction herein provided for shall not be actually issued until the first day of January, 1915. Twentieth. — It appearing to the Court that the De- fendants have made settlement with and paid the Com- plainant an agreed counsel fee provided by Statute to be fixed by the Chancellor on final decree, this decree shall be entered for taxable costs only including Four Hun- dred and Fifty and 40/100 Dollars ($450.40) paid to notaries and stenographers for taking and transcribing notes of testimony, and it is agreed that this decree is final without modification or appeal by either party there- from. The prayer for accounting being denied. **E. R. Walker, C' Approved **Vredenburgh, "VValt. & Carey," Solicitors for Complainant. '^ Collins & Corbtn,'' Solicitors for Defendants. Ill II 200 !* ii l^m w ' ■' ■ ' ' 'i ■Ii ill "1 i f ! i^ ' n ■^ NATIONAL BISCUIT COMPANY r.s\ PACIFIC COAST BISCUIT COMPANY I, Robert H. McAdams, Clerk of the Court of Chancery of the State of New Jersey, the same being a court of Record, do ieereiby certify that the foregoing is a true copy of the Decree, filed Sept. 30, 1914, in a cause wherein The National Biscuit Company is complainant and The Pacific Coast Biscuit Company, et ah., are defendants, now on the files of my office. Ix TESTIMONY WHEREOF, I liave hcrcto set my hand and affixed the seal of said court, at Trenton, this thirtieth day of September, A. D. Nineteen hundred and fourteen. Robert H. Mc Adams, Clerk. NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 201 NEW JERSEY, SS. THE STATE OF NEW JERSEY TO THE PACIFIC COAST BISCUIT COMPANY, CHARLES M. WARNER, JOHN C. HANRAHAN, WILLIAM M. LAWS, HERMAN WITTENBER<>, MORITZ THOMSEN, CHARLES HOTCHKISS and A. M. BROOKES, OFFICERS AND DIRECTORS OF SAID PACIFIC COAST BISCUIT COMPANY, THEIR COUNSEL, ATTORNEYS, SOLICITORS AND AGENTS, AND EACH OF THEM, GREETING : WHEREAS, by a certain final decree made in our Court of Chancery of New Jersey, on the thirtieth day of September, 1914, in a certain cause therein depend- ing, wherein NATIONAL BISCUIT COMPANY, a cor- poration of the State of New Jersey, is Complainant, and PACIFIC COAST BISCUIT COMPANY, a corporation of the State of New Jersey, and CHARLES M. WAR- NER, JOHN C. HANRAHAN, WILLIAM M. LAWS, HERMAN WITTENBERG, MORITZ THOMSEN, CHARLES HOTCHKISS and A. M. BROOKES, Officers and Directors of Pacific Coast Biscuit Company, are Defendants, it was ordered, adjudged and decreed. First. — That the red end seal, known as the **In-er- seal," appearing upon the various carton bakery products of the Complainant, with white line markings thereon, is a good and valid Trade-Mark and the property of the Complainant, and that the red end seal appearing upon the ends of the carton products of Defendants, is an infringement upon the Complainant's red end seal; Second. — That the Complainant's Trade Name or Trade-Mark **Uneeda" is a good and valid trade-mark Ii ii r ' \ 11 ! « 1 202 NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY and name, and the property of the Complainant, and that Defendants' name or mark '*Abetta" Biscuit, with its placement upon Defendants' carton, is an infringe- ment of said Complainant's name or mark herein; Third. — That Complainant's trade-mark or trade name *^ Nabisco" is the mark or name of the Complain- ant, and that Defendants' carton or package, with the words **Parfait" and **Fiesta" in the same manner of display, are infringements of Complainant's trade-mark or name ^* Nabisco" as applied, by the simulation there- with of the color scheme of the wrappers thereof; Fourth. — That the name, mark or words *' Social Tea" Biscuit as applied by the Complainant upon car- tons of crackers, is the property of said Complainant, to- gether with the decoration and appearance of said pack- age, and that the Defendants' carton or package ** Elite" Biscuit is a simulation and copying of said name or word designation in the same manner of display, of Complainant's on said package; Fifth. — That Complainant's trade-name, mark or term **Uneeda Milk Biscuit", and the decoration and marking on Complainant's carton of biscuit products is the trade-mark and trade name property of Complainant, and Defendants have markedly infringed the same by copying such carton in connection with the name **Abetta Milk Biscuit" in the same manner of display as Com- plainant's carton; Sixth. — That the word, term or name **Oysterettes" is the trade-mark or trade name property of the Com- plainant, and the Defendants have infringed and copied the same in the same manner of display as Complain- ant's carton; NATIONAL BISCUIT COMPANY vs. I'ACIFIC COAST BISCUIT COMPANY 203 I Seventh. — ^That the Complainant is the owner of the trade-mark or trade name **Fig Newtons" as applied to l)akery products and cartons containing bakery products, and that the Defendants have manifestly copied the same by the use of the word '*Fig Sultana" and the copying of the carton embellishment or decoration, in the same manner of display, in connection with Complain- ant's trade-name or mark ^*Fig Newtons" upon their carton ; Eighth. — That the Complainant is the owner of the trade-mark or trade name * ^ Marshmallow Dainties" as -applied to its carton bakery products, and that the De- fendants have infringed and copied the same by the use thereof, upon their cartons of bakery products, in the same manner of display; Ninth. — That the Complainant is the owner of the trade-name *^Zu Zu" as applied to bakery products and cartons of bakery products, and that the Defendants have simulated and copied the same, by the use of the words ^^Hoo Hoo" upon their Ginger Snap carton, in the same manner of display and having the same general appear- ance ; Tenth. — That Complainant is the owner of the trade name or trade-mark **Frotana" as applied to bakery products and cartons containing bakery products, and that Defendants have copied and infringed the same by the use of the word **Maritana" upon cartons of bakery products of similar size, color and decoration in the same manner of display as Complainant's cartons; Eleventh. — That Complainant is the owner of the trade-mark or trade name ^^Cocoanut Dainties" as ap- plied to bakery products and cartons containing bakery H ' '« t I 204 NATIONAL BISCUIT COMl'ANY vs. PACIFIC COAST BISCUIT COMl'ANY products and that the Defendants have violated and in- fringed the same by the use and application of the said trade-mark or trade name ^^Cocoanut Dainties'' to car- tons of bakery products, in the same size, general appear- ance of lettering and coloring, and in the same manner of display as Complainant's cartons; Twelfth. — That the Complainant is the owner of the trade-mark or trade name *^01d Time Sugar Cookies" as applied to bakery products and the cartons containing bakery products, and that the Defendants have violated, infringed and copied the same by the use of the word or name ^^Old Fashioned Sugar Cookies" upon cartons of the same size and shape and white coloring, and in the same manner of display of the Complainant ; Thirteenth. — That the Complainant is the owner of the words, name or term *' Celebrated Zwieback" as ap- plied by them to cartons of bakery products, and that the Defendants have copied and infringed the same by the use of the words ** Genuine Zwieback" on packages of substantially the same size and in the same printing and manner of display as appears upon Complainant's car- tons ; Fourteenth. — That the Complainant is the owner of the trade-mark or name or designation ** Fancy Assort- ment" as applied to cartons containing bakery products; that Defendants have copied and infringed the same by the use of the word or name ** Fancy Assorted Cakes" upon cartons of the same size and prominent dress ap- pearance and in the same manner of display as Com- plainant's cartons; Fifteenth. — That Complainant is the owner of the trade-mark or trade name ''Oatmeal Crackers" as ap- NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 205 plied by Complainant to a carton of bakery products, and that Defendants have copied and simulated the same by the use of the words ''Abetta Oatmeal Crackers" upon a carton in the same manner of display, and with the same coloring as upon Complainant's cartons; Sixteenth. — That Complainant is the owner of a trade-mark. Animal Box, identified by the pleadings and proofs as Complainant's Animal Box, and that the De- fendants have copied and infringed Complainant's rights therein by a complete simulation and copying thereof ; Seventeenth. — That the bundle package containing Complainant's carton formation enclosed for shipment and containing a red paster or label thereon, was orig- inated by the Complainant, and copied by the Defend- ants ; Eighteenth. — It is further ordered, adjudged and decreed that an injunction be issued against the said De- fendants' corporation and individuals, restraining them and each of them, their servants, agents, attorneys or employees from putting up and selling or offering for sale: (a) Any carton of bakery product having thereon an imitation of Complainant's ''In-er-seal" or red end seal trade-mark calculated to mislead or deceive, like Defend- ants' ''Swastika" or red end seal or trade-mark. (b) Any carton of baker^^ products having thereon an imitation of Complainant's ''Uneeda Biscuit" trade name, calculated to mislead or deceive, like those on De- fendants ' carton *'Abetta Biscuit". (c) Any carton of bakery products having thereon an imitation of Complainant's trade names ''Uneeda Milk Biscuit, " ' ' Oysterettes, " '' Marshmallow Dainties, ' ' 206 NATIONAL BISCriT COMrANY vs. TACIHC COAST BISCUIT COMl'ANY Hi H l-. '*Cocoanut Dainties,'* and ** Oatmeal Crackers/' calcu- lated to mislead or deceive, like those on Defendants' cartons respectively ^*Abetta Milk Biscuit," **Toke Point Oysterettes," ' ' Marslimallow Dainties," *' Cocoa- nut Dainties" and ^^Abetta Oatmeal Crackers." (d) The particular forms of cartons or packages re- ferred to in the bill of complaint and identified therein as *^ Complainant's Exhibit Defendants' Ahetta Biscuit and Red End Seal Carton No. 2'" and *< Complainant's Exhibit Defendants' Infringing Packages Nos. 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16, respectively," or any other packages which shall by reason of the collocation of size, shape, colors, lettering, spacing and ornamenta- tion, present a general appearance as closely resembling Complainant's exhibits respectively referred to in the bill of complaint and marked as ** Complainant's Exhibit Complainant's Cartons Trade Name Uneeda Biscuit Wrapper No. 2" and Complainant's Exhibit Complain- ant's Cartons Nos. 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16, as do the said Defendants' respective infringing packages aforementioned. But this shall not be con- strued to restrain the Defendants from selling such car- tons with their asserted ^^ Swastika" trademark thereon providing the trade-mark is so differentiated in general appearance and application from the Complainant's trade-mark that it is not calculated to deceive or mislead the ultimate ordinary purchaser and shall not be con- strued as restraining the Defendants from selling pack ages or cartons of the size, weight or shape of Complain ant's packages, nor from using the respective colors as wrappers for such packages, provided such packages are so ditferentiated in general appearance from the said Complainant's respective packages, that they are not cal- culated to deceive the ultimate ordinary purchaser. And it was further ordered, adjudged and decreed ; NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY 207 that an injunction do issue out of this court accord- ingly. WE THEEEFOEE, ON CONSIDEEATION OF THE PREMISES, do hereby strictly enjoin and com- mand you, the said PACIFIC COAST BISCUIT COM- PANY, CHAELES M. WAENEE, JOHN C. HANEA- HAN, WILLIAM M. LAWS, HEEMAN WITTEN- BEEG, MOEITZ THOMSEN, CHAELES HOTCHKISS and A: M. BEOOKES, Officers and Directors of Pacific Coast Biscuit Company, your counsel, attorneys, solicitors and agents, and each of you, under the penalty that may fall thereon, that you and each of you from henceforth and forever, do absolutely desist and refrain from imitating or simulating any of the Trade-Marks or Trade Names above identified, or manufacturing or sell- ing or handling cartons of bakery products having there- on any imitation of the respective Trade-Marks and Trade Names above identified, and from putting up or offering for sale the particular forms of cartons or pack- ages above identified or any other forms of packages or cartons respectively which shall, by reason of collocation of size, shape, colors, lettering, spacing or ornamentation present a general appearance resembling Complainant's several and respective cartons and packages identified and referred to in the bill of complaint and identified by the decree herein, and from the bundling of such car- tons or packages in the manner, color, size and shape as shown by the respective exhibits herein. WITNESS Honorable Edwin Eobert Walker, our Chancellor, at Trenton this sixteenth day of January, in the year of our Lord One thousand nine hundred and fifteen. Eobert H. McAdams, Clerk. Vredenbuegh, Wall & Carey, Solicitors for Complainant. I !i n m '.: i 206 NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCUIT COMPANY I, Egbert II. McAdams, Clerk of the Court of Chancery of the State of New Jersey, the same being a Court of Eecord, do hereby certify that the foregoing is a true copy of the Writ of Injunction, in the cause wherein National Biscuit Company is Complainant and Pacific Coast Biscuit Company, et als.y are De- fendants, now on the files of my office. In Testimony Whereof, 1 have hereto set my hand and affixed the seal of said Court, at Trenton, tliis Sixteenth day of January, A. D. Nineteen hundred and fifteen. KoBT. H. McAdams, Clerk. Service of the within Injunction is hereby acknowl- edged for the Defendants this 18th day of January, 1915. Collins & Corbtn, Solicitors for Defendants. NATIONAL BISCUIT COMPANY rs PACIFIC COAST BISCUIT COMI'ANY 209 Or>Q NATIONAL BISCriT COMPANY vft. -^^ I'ACIFIC eOAST I'.lSCl IT COMPANY I, RoHHiiT II. Mc Adams, Clerk of the Court of Chancery of the State of New J(»rsev- the same beinu: a Court of Record, do hereby certify that the foreo:omi2: is a true copy of the Writ of Injunction, \n the cause wherein National Biscuit Company is Complainant and Pacific Coast Biscuit Company, et ah., are De- fendants, now on the files of my office. In Testimony Whereof, I have hereto set my hand and affixed the seal of said Court, at Trenton, this Sixteenth day of January, A. D. Nineteen hundred and fifteen. EoBT. II. McAdams, Clerk. Service of the within Injunction is hereby acknowl- edged for the Defendants this 18th day of January, 1915. COLTJNS & CORBTN, Solicitors for T^efendants. v^missmmimiAm NATIONAL HISCriT COMTANY rs TACIFIC COAST lilSCL IT COMTANY 209 210 NATIONAL BISCllT COMl'ANY rs. rAClFlO COAST BISCUIT COMl'ANV 'Ab^ NATIONAL BISCriT COMPANY r«. PACIFIC COAST BISCUIT COMPANY 211 212 NATIONAL BISCUIT COMl'ANY vs. I'ACll'lC COAST BISCUIT COMl'ANV jSCUfTCOJ^^^^^ NATIONAL BISCUIT COMI'ANY rs I'ACIFIC COAST BISCUIT COMI'ANY 213 214 NATIONAL BlSCriT COMTANlf rs. rAClFic COAST BISCllT COMl'ANY (jneeda Miih Bisco>t NATIONAL BISCriT COMl'ANY rs. I'ACIFIC COA.ST BISCLIT COMrANY 215 21i?c^?JS rfv cr-'S 1') '>•>•) NATIONAL BISCHT COMrANY vs. I'ACIMC l0A;>T BISCLIT CUMl'ANV I V I' NATIONAL BISCriT COMPANY vs. TACIFIC COAST BISCUIT COMPANY 223 .sorted Qake , c^'^P'^y r>. I- '^fljicYfls^B. CfiKESi Fir ^^ 224 NATIONAL BISCUIT COMPANY v«. I'ACitlC COAbT iilSCLlT COMPANY NATIONAL BISCriT COMPANY XH. PACIFIC COAST BISCUIT COMl'ANY 225 I * I i> ' 22i\ NATIONAL HISCT'IT (M)MPANY vh. I'ACIFIC COAST B ISC LIT COMl'ANV I NATIONAL BISCUIT COMPANY vs. PACIFIC COAST BISCriT COMPANY 227 li I 228 NATIONAL BISCUIT COMPANY vs. FACIFIC COAST BISCUIT COMPANY TABLES OF INFEINGE7MENTS 229 . TABLES OF INFRINGEMENTS In addition to the foregoing, the following tables show infringements of trade marks, trade names, labels, and the equitable rights of National Biscuit Company therein as abandoned by two hundred and eighty-eight manu- facturers under notice, but without suit. NATIONAL BISCUIT COMPANY R. E. TOMUNSON Counsel New York, February 1915 m '22H NATION AI- i; I SCI IT ("O.MI'ANY vs. I'ACIMC COAST BISCl IT CUMl'AXY TABLES OF INi-TlINGBMENTS 229 TABLES OF INFRINGEMENTS In addition to the foregoin.2:, tlie following tables show infringements of trade marks, trade names, labels, and the equitable rights of National Biscuit Company therein as abandoned by two liundred and eighty-eight manu- facturers under notice, but without suit. C^HEE OAMDWICH '•« COM •i»cu, NATIONAL BISCUIT COMPANY R. E. TOMLIXSON Counsel New York, February 1915 I, ' ii lii 230 INFRINGEMENTS ABANDONED WITHOUT SUIT ABANDONMENTS AS OF JANUARY, 1906 (Third Edition) In-er-seal Trade Mark 58 Uneeda Biscuit 29 Red Label Graham 27 Ribbon Tying Design 22 Mary Ann 22 Social Tea 13 Zu Zu 11 Lemon Snaps label 6 Oysterettes 6 Jonnie 4 Faust 4 Saratoga Flakes label, Tid Bit, City Soda label,Pre- mium Biscuit, Saltine label, Etc., Etc 47 Total 249 KV INFRINGEMENTS ABANDONED WITHOUT SUIT 231 ABANDONMENTS AS OF JANUARY, 1907 (Fourth Edition) In-er-seal Trade Mark 80 Uneeda Biscuit 35 Red Label Graham 31 Ribbon Tying Design 26 Mary Ann 28 Social Tea 15 Zu Zu 11 Lemon Snaps label 8 Oysterettes IQ Jonnie 4 Faust 9 Refillers of Cans and Boxes 12 Saratoga Flakes label, Nabisco, City Soda label, Pre- mium Biscuit, London Cream Biscuit, Saltine label. Oatmeal Crackers label, Tid Bit, Eagle, Etc., Etc., Etc 61 Total 330 11 r^' ''] r .tfi It 232 INFRINGEMENTS ABANDONED WITHOUT SUIT ABANDONMENTS AS OF JANUARY, 1915 (Fifth Edition) In-er-seal Trade-Mark 145 Uneeda Biscuit 58 Red Label Graham 48 Ribbon Tying Design 35 Mary Ann 37 Social Tea 35 Zu Zn 18 Lemon Snaps label 13 Oysterettes 19 Jonnie 8 Faust 10 Saratoga Flakes 12 Oatmeal Crackers label 9 Eagle 8 Royal 21 Five O'clock 13 Nabisco 10 Premium 10 Sorbetto 10 Cow Design 15 Fig Newtons 10 Dainties 10 Tid-Bit 10 Refillers of Cans and Boxes 72 American Beauty, Crispy, Champion Cameo, Festino, Golden Rod, Kream Klips, Picnic, Pretzelettes, Old Time, Shell, Star, Sea Foam, Taffy, etc., etc 197 Total 833 INFRINGEMENTS ABANDONED 233 SUMMARY OF ABANDONMENTS BY YEARS ^905 1906 1907 1908 1909 igio 1911 1912 1913 1914 In-er-seal Trade Mark. . 58 80 96 108 120 128 133 134 137 145 Uneeda Biscuit 29 35 37 39 42 45 49 51 * 52 58 Red Label Graham.... 27 31 35 41 42 42 42 43 43 48 Ribbon Design 22 26 29 29 29 29 29 20 29 35 Mary Ann 22 28 29 30 30 32 33 35 35 37 Social Tea 13 15 17 21 24 24 28 29 31 35 Zu Zu 11 11 12 13 13 13 13 14 15 18 Lemon Snaps Label.... 6 8 9 12 12 13 13 13 13 13 Oysterettes 6 10 11 13 12 13 15 15 15 19 Jonnie 4 4 4 6 7 7 7 8 8 8 Faust 4 » 10 10 10 10 10 10 10 10 Saratoga Flakes 3 3 6 6 9 10 10 12 12 12 Oatmeal Crackers Label 13 5 6677779 Eagle .:.. — 4 4 5 6 8 8 8 8 8 Royal 2 2 5 6 7 10 12 15 16 21 Five O'clock ._ — 3 5 5 6 8 10 11 13 Nabisco — 2 3 3 5 5 8 8 8 10 Premium — 2 3 6 6 8 9 9 9 10 Sorbetto — — 3 3 5 10 10 10 10 10 Cow Design — — 3 5 8 12 12 12 13 15 Fig Newtons — — — — 1 2 3 4 5 10 Dainties — — — — 1 2 2 2 2 10 Tid-Bit 3 3 3 3 3 3 3 3 6 10 Refillers of Cans and Boxes 2 12 14 26 30 37 55 63 69 72 American Beauty, Crispy, Champion, Cameo, Festino, Golden Rod, Kream Klips, Picnic, Pretzelettes, Old Time, Shell, Star, Sea Foam, Taffy, etc., etc 36 42 57 77 81 90 93 100 110 197 Total by Notice 249 330 398 472 514 566 612 644 674 833 By Injunction 19 32 32 32 32 32 32 32 32 49 268 362 430 504 546 598 644 676 706 883 313 />^ 2^ Date Due r^X\D /tt^H-^« 1 *■ f) ^^zi'a./' 33 ZS'i.\ / /yj2/ Xhx*^ ■yyia.j^ JU'^t.^^A^ti^^^ iT\^H oimt NEH Mk i*m mmmmmmmuBlKM COLUMBIA UNIVERSITY LIBRARIES 00414 3040 FFR 1 1 MAY 19 1931 END OF TITLE