Coca-Cola Co. v. Busch

GANEY, District Judge.

The bill in this case seeks relief by injunction, both preliminary and perpetual, against the defendants, their attorneys, employees, servants, representatives and assigns, from (a) using upon or in connection with the manufacture, advertising, offering for sale or sale of any beverage syrup of beverage made therefrom, the work "koke" whether in association with the word "up" or any other word or words, and whether spelled "koke" or otherwise; (b) infringing plaintiff's trademark "Coca-Cola" in any other manner or form whatsoever, and from competing unfairly with the plaintiff in any other manner or form whatsoever, etc.

After alleging the required jurisdictional qualifications, the plaintiff's bill avers that it is engaged and has been for many years in the manufacture of a soft drink syrup under the trademark "Coca-Cola"; that a considerable portion of the public abbreviate the trademark to "koke (coke)," and call for it as "koke (coke)"; that when offered as a soft drink "Koke (coke)" means "Coca-Cola"; that the defendants have adopted a name to be used on a soft drink the words "Koke-Up" and have caused the same to be copyrighted in the United States Patent Office; that the defendants threaten to manufacture, advertise, offer for sale and sell a soft drink, using the name "Koke-Up"; that unless enjoined by the court the defendants will carry out their threat and put on the market a soft drink named "Koke-Up"; that these threatened acts will constitute unfair competition; that the application of the word "koke" to a soft drink is a representation that it is "Coca-Cola". The answer inter alia denies that a considerable number of the public abbreviate the trademark "Coca-Cola" to "koke (coke)", or call for "Coca-Cola" as "koke (coke)", but that the public refers to and calls the plaintiff's product "Coca-Cola"; it is admitted that the defendants intend to manufacture, offer for sale and sell soft drinks and use thereon the name "Koke-Up"; it is further denied that the acts averred in the complaint constitute unfair competition in the use of the name "Koke-Up" as a soft drink, and that in no wise is it a representation that it is "Coca-Cola". . . .

It is generally recognized today that the emphasis on cases concerning trademarks, tradenames and unfair competition is not only the injury occasioned to the innocent parties but equally as much on the injury suffered by the public and it is accordingly becoming increasingly more evident that if defendant's acts result in the confusion and deceit of the public primarily relief will be granted. In other words it seems to me that in the progress of the law of trademark infringement and unfair competition as well, the likelihood of injury to the public which may result from the use of the defendant's product is one of the essentials which the courts consider in granting equitable relief.

The purpose of a trademark is to identify the business in connection with which it is used and accordingly it will be protected only when used in connection with a business, for trademarks and the right to their exclusive use are property rights, in the sense that the right to one's trade, and the good will that follows from it, free from unwarranted interference from others is a property right. The trademark is the instrumentality by which this property right is protected and the right grows out of its use in trade not merely out of its adoption. Accordingly, here the plaintiff company did not use the word "koke (coke)" or identify its product with the word by sale, advertisement or otherwise and so a strict construction of the authorities on common law trade infringement would seem to hold that there could be no infringement, and accordingly it is to the broader field of unfair competition that we must look to for redress, if any.

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The word "koke (coke)" is simply an abbreviation which the public has made of the trademark "Coca-Cola" since it is commonplace in our daily endeavor to shorten and abbreviate anything which is capable of being shortened or abbreviated, and I think it is also common knowledge that there is a marked tendency among American youth, usually to shorten and abbreviate, and it is therefore quite natural, that the purchasing public rather than use the full trademark, "Coca-Cola", make resort to the more abbreviated form "koke (coke)". Further the testimony shows conclusively that soft drinks such as "Coca-Cola" are purchased by spoken word in a vast number of instances and when a "Coca-Cola" is wanted, resort is made to the abbreviation "koke (coke)" which has come to be the nickname for "Coca-Cola."

The cases with respect to abbreviations or nicknames in the law of unfair competition are rather few and on the whole not altogether satisfactory. A review of the leading English cases show that the courts grant redress where there is a use of nicknames or an abbreviation of a trademark which have a likelihood of resulting in confusion. In Read v. Richardson, "Bull Dog Bottling" became known as "Dog's Head Beer", by reason of a bull-dog's head appearing on the label, and the producers of the product were granted an injunction against the use by the defendant of "a rough terrier's head" which it carried on its label. This relief was afforded on the theory that one who tries and likes beer with a bull-dog trademark may remember it as "Dog's Head" and extol its qualities under that name to one who calls for dog's head and is satisfied when given a bottle with a dog's head though it be a rough terrier's head.

In Seixo v. Provezende, the court held that the actual physical resemblance of two trademarks is not the sole question for decision for if the plaintiff's goods have from his trademark become known in the market by a part name, the adoption by the defendant of a mark or name which will cause his goods to bear the same name in the market is as much a violation of the plaintiff's rights as an actual copy of his mark.

In another case an English House had used in India a trademark for yarn which had led the natives to call for "Bhe-Hathi" (two elephant) yarn, a competing firm was enjoined from exporting yarn to India under a trademark of which the principal feature was the representation of two elephants. On the same reasoning the word "Sportsman's" accompanied by a picture of two mounted huntsmen, used as a trademark for cherry brandy, was held to be infringed by the picture of a huntsman standing beside his horse, and the words "Huntsman's Cherry Brandy" where the proof aliunde showed that the plaintiffs' liquor had become known to the public as "The Hunter's Cherry Brandy".

The American cases are few in number and some while seemingly opposed to the view here adopted, upon careful examination, reveal no inconsistency with the position here taken. In Bayuk Cigars, Inc., v Schwartz, D.C., the court held that the term "Phillies" as applied to the plaintiff's cigars by the purchasing public, though never attached to or used by way of advertising in connection with the sale of the product, was not subject to the protection of a court of equity as against the defendant who later used the term "Phillies" in connection with his brand of cigars. However, the court says; "This result is partly based upon the idea of the court that the plaintiff has not established, by a preponderance of evidence, such a use of the word as would entitle it to the exclusive use of the same, as against the defendant who registered this word and marketed products thereunder prior to the time the word in question was actually applied to the packages containing the plaintiff's cigars". In the instant case there can be no question of the fact that the plaintiff has established by a preponderance of evidence that the word coke is used solely in designation of the plaintiff's product, as the record will show that almost every witness so testified. . . .

I feel that the abbreviation of the trademark which the public has used and adopted as designating the product of the complainant is equally as much to be protected as the trademark itself and while the name of the defendant's product is "Koke-Up" it is not to be doubted from the evidence in the case that "Koke" is the dominant word which is attempted to be impressed upon the public, since the word "Koke" on the label of the bottle of the product is much larger in size than the other lettering.

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The bill will be sustained and an injunction granted.