Appeal from the District Court of the United States for the District of Nebraska; John W. Delehant, Judge.
William Ritchie, of Omaha, Neb. (C. Earl Hovey, of Kansas City, Mo., W. Ross King and Edward F. Fogarty, both of Omaha, Neb., Russell W. Bartels, of Wayne, Neb., and Ritchie & Swenson, of Omaha, Neb., on the briefs), for appellant.
George L. De Lacy, of Omaha, Neb. (Matthias Concannon and Lee J. Gary, both of Chicago, Ill., and Edwin L. Harding, of Battle Creek, Mich., on the brief), for Kellogg Sales Co., appellee.
Edgar M. Morsman, 3d, of Omaha, Neb. (Morsman & Maxwell, of Omaha, Neb., and Lester E. Waterbury, of New York City, on the brief), for General Foods Sales Co., Inc., appellee.
Before SANBORN, WOODROUGH, and THOMAS, Circuit Judges.
The appellant since 1925 has sold a breakfast food under the name "Raisin-BRAN." In 1942 each of the appellees commenced to market a similar breakfast food under a name which included the words "Raisin Bran." In each of these actions the appellant, claiming the exclusive right to use the name "Raisin-BRAN," charged trade-mark infringement and unfair competition. The appellees each denied the charges made. The cases were tried separately. The District Court, at the conclusion of the trials, determined that the appellant was not entitled to the injunctive relief which it sought, and entered a decree in each case dismissing the complaint. The court made findings of fact and conclusions of law in each case, but dealt with both cases in one opinion. 52 F.Supp. 432. These appeals were briefed and argued separately. The controlling questions in each case are, however, substantially the same and the cases appropriately can be considered together.
In its opinion the trial court has, with admirable thoroughness and care, stated the facts in detail, discussed each issue presented at the trials, considered the applicable rules of law, and explained its reasons for deciding that the appellant was not entitled to a decree enjoining either appellee from marketing its competing product as "Raisin-Bran." In view of the complete analysis of the facts and the law of these cases by the trial court in its published opinion, it is unnecessary for this Court to do more than state briefly and generally the factual situation out of which the cases arose, and to express its conclusions relative to the questions presented on appeal and the basis for those conclusions.*fn1
The appellant makes and sells food for human consumption. In 1925 it originated and caused to be manufactured a prepared dry breakfast food in which raisins were mixed with whole wheat flakes containing added bran and salt. The appellant named this product "Raisin-BRAN" and sold it in packages bearing that name. There was no similar product on the market at that time or until 1942. The appellant has done all that could be done to appropriate "Raisin-BRAN" as the trade-mark of its product. In 1926 it registered the name as a trade-mark under the Trade-Mark act of March 19, 1920, c. 104, 41 Stat. 533, 15 U.S.C.A. §§ 85, 121-128. In its advertising and on the packages in which the product was sold, appellant claimed the name as its trade-mark for the product. For seventeen years it marketed the product as "Raisin-BRAN" without competition. It spent large sums of money in advertising and in creating a demand for the product and built up a large and profitable business in it.
The appellees are engaged in selling food products, including prepared packaged breakfast foods. The appellee General Foods Sales Company is the selling agency for its parent company, the General Foods Corporation. The appellee Kellogg Sales Company is owned by the Kellogg Company and is the selling organization for the products of that corporation. Each of the appellees for many years had marketed prepared breakfast foods consisting of wheat flakes with bran added and known as "bran flakes" or "bran." In 1942 the General Foods Sales Company placed upon the market a breakfast food containing bran flakes and raisins. It was manufactured by the General Foods Corporation, and was labelled and advertised as "Post's Raisin bran." In the same year the Kellogg Sales Company placed upon the market a similar breakfast food, made by the Kellogg Company, called "Kellogg's Raisin 40% Bran Flakes." After the appellees' products containing bran and raisins came into the market, they and the appellant's product were generally referred to in the trade as "raisin bran." Prior to the advent of appellees' products, an order for "raisin bran" was regarded by the trade as an order for appellant's product "Raisin-BRAN," which was then the only breakfast food on the market consisting of bran flakes with raisins. After the advent of the appellees' competing products, an order for "raisin bran," without designating the name of the producer, was no longer treated as calling exclusively for appellant's "Raisin-BRAN." If a prospective purchaser failed to state whether he wanted "Post's", "Kellogg's", or "Skinner's" raisin bran, the dealer usually made the election for him
The main contention of the appellant is concisely stated in the written demands which it made upon the appellees to cease and desist from using the words "Raisin Bran" in describing their products. In appellant's letter of June 29, 1942, to the Kellogg Company and the Kellogg Sales Company, it said:
"It has recently come to our attention that you are manufacturing and distributing in parts of the United States a product which you have labelled 'Kellogg's Raisin 40% Bran Flakes.'
As you know, 'Raisin-BRAN' was coined by us as the name of a product which we originated and were the first to place on the market, and we have enjoyed the exclusive use of the trade mark 'Raisin-BRAN' and the sale of that particular ...