The opinion of the court was delivered by: KIRKPATRICK
This is a suit in equity to restrain infringement of a registered trade-mark. The mark consists of the word "Junket," and the plaintiff uses it in connection with the sale of tablets and powders, containing a preparation of rennet, for making the milk jelly dessert which is now almost universally known as junket.
The plaintiff is the largest manufacturer of this product in the country. It does business under the name of "The Junket Folks" and has spent a great deal of money in advertising, in all of which the word "junket" has been stressed, and in which it is applied indiscriminately to the product which the plaintiff sells and to the dessert which the housewife makes by its use. Examples: "Junket makes Milk into Delicious Desserts." "Junket is Milk -- Plus." "You'll love Junket -- served ice cold for dessert." Again: "Junket Powder makes milk into cool, creamy desserts." "Junket Tablets make milk into dainty desserts." "Chocolate Flavored Junket made with Junket Tablets." It is most confusing, and it is impossible to say whether, in the plaintiff's vocabulary, "junket" means the tablets and powders which the plaintiff sells, or the enzyme which they contain, or the dessert which the cook makes. It looks very much as though the plaintiff, having registered its mark as applied to its tablets and powders ("preparations for coagulating or curdling milk"), is attempting to build up a complete monopoly of the word and to appropriate it to its exclusive private use. At any rate, that would be the practical result if uses such as this defendant makes of it were to be restrained, as will be seen.
At this point it may be said that the evidence is insufficient to sustain the charge that the defendant is trying to palm off his product as that of the plaintiff, and I find that he is not doing so. Nor does he print or display the word "junket" in the manner which would be a "copy or colorable imitation" of the plaintiff's mark. See Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461, 34 S. Ct. 648, 652, 58 L. Ed. 1046, Ann. Cas. 1915B. 322.
This being so, it seems perfectly clear that the defendant does not infringe, unless the plaintiff "owns" the word -- has the sole right to use it in trade to the exclusion of all others. This was undoubtedly the basis of Judge Lacombe's order in Hansen v. Siegel-Cooper Co. (C.C.) 106 F. 691, in which he expressly permitted the defendant in that case to sell "Anker's Capsules for Making Junket"; and of Judge Knox's recent order in the Jelkwik Case (D.C.) 12 F. Supp. 296, also permitting the phrase "for making junket." If, however, the plaintiff can sustain the broad trade-mark rights which form the real basis of this suit, then, I think, the defendant unquestionably infringes.
This brings us immediately to the question of the scope of the plaintiff's rights, acquired by its registered trade-mark. It claims under two registrations, the first in 1897 under the act of March 3, 1881, 21 Stat. 502, and the second in 1922 under the Act of Feb. 20, 1905, 33 Stat. 724 (15 USCA § 81 et seq.). The important question is whether the word "junket" was at the time of its adoption by the plaintiff a descriptive word. If it never was, the plaintiff has a technical trade-mark and would have the exclusive right to use it. If the word was descriptive and the plaintiff's rights depend upon a secondary meaning, the registration might still be valid and the plaintiff would be entitled to a measure of protection but not the relief asked for against this defendant.
As I understand the plaintiff's position, it is this: It concedes that the word "junket" is a very old word in the English language, which, prior to the time when the plaintiff began to manufacture its tablets, had a number of different meanings. As applied to food products, it meant, says the plaintiff, curds of milk from which the whey had been removed by straining, which curds were then mixed with clotted cream and sweetened. This, however, was never called "junket" simply, but always "Devonshire junket." The word was also used of cheese cake and more generally of any delicate food. It also referred to a drink made of cream and rennet, or whey and rennet, flavored with wine. In addition, it referred to a party or pleasure trip (in America by politicians at public expense). It never meant the dessert which we now know as junket. The plaintiff's case is that it took this word of somewhat vague and varied meanings and applied it to something new, -- the rennet ingredient which it manufactured and sold as "junket tablets"; that its advertisement and sale were so extensive that the word became definitely associated in the public mind, first with its special product and later by a natural process of transfer with the dessert which the product was designed to make, and that if the word is now in the dictionary as meaning a milk jelly dessert it is because the plaintiff put it there. Plaintiff contends that if it is true that it used an English word in an arbitrary and nondescriptive sense it is entitled to it as a trade-mark, and that it does not lose its rights merely because its own widespread sales and advertising, have caused the word to become descriptive, not only of the ingredients sold by the plaintiff but of something which the ingredient is used to make.
Assuming, without deciding, that the plaintiff's position is sound in law, is its contention as to the facts supported by the evidence in this case? Was the word "junket," at the time the plaintiff began to apply it to its rennet preparation, a descriptive word as denoting the dessert which it is used to make? Very likely it had never been applied to powders and tablets such as the plaintiff made, but that is unimportant. If "junket" meant the dessert, the plaintiff could not appropriate the word for its exclusive use in connection with the necessary ingredient to make it, any more than it could invest some special kind of yeast cake, christen it "bread," and thereafter prevent others from making and selling the staff of life as bread.
In view of the plaintiff's position the time element is important. The plaintiff's first-claimed use in America of the word as applied to its product goes back to 1878. Its first proved use was in 1887, and I think it is agreed that that would be about the period to which we must direct our inquiry as to whether the word was descriptive or not. Of course uses after that time also have a bearing upon the question because words do not acquire meanings overnight, and the whole history of this word must be considered together.
I shall not attempt to detail all the evidence. The plaintiff examined four hundred and twelve cook books in the Library of Congress published prior to 1890, with the result that it found forty-six recipes for the milk jelly dessert in question, only one of which used the word "junket" in connection with it and then as an alternative name, "Mountain Custard -- (Junket)." Other names were "Cold Custard," "Rennet Custard," "Mountain Custard," "Curds and Cream," "Slip, Curds and Whey," atc. The plaintiff's affidavit upon this point does not indicate how often, if at all, the recipe for Devonshire junket was given. This is consistent with his position because he has always contended that Devonshire junket is an entirely different thing.
The defendant also made an exhaustive search and has unearthed Cooley's Cyclopaedia of 1846 (Junket, Devonshire); Paul's Cookery from Experience, of 1875, which, after giving the recipe, said, "This is only for cold custard or junket and cheese cakes"; Mrs. Rorer's Hot Weather Dishes, of 1888; Thudichum's The Spirit of Cookery, of 1895; the Druggists Circular of 1889 -- in all of which junket, as we know it, is described by that name, and other evidence, including the affidavit of Fairchild, a manufacturer of a similar preparation called "Essence of Pepsine," who testified that his firm has used the word "junket" for about fifty years and that it was in common use for many years prior to 1887, and who produced several circulars advertising his product in the nineties and referring to the dessert as junket.
Just exactly how Devonshire junket was made is not easy to say, but I believe the recipe for it in Cooley's Cyclopaedia in 1846 would make the milk jelly dessert now known as "junket" or something very close to it. At any rate, I do not think that there is ground for the total differentiation which the plaintiff makes between Devonshire junket and ordinary junket, and prior use of the concededly descriptive term, "Devonshire junket," must be taken into account.
The net result of all the above is the fact finding which I now make that the word "junket" was a descriptive word frequently, although by no means universally, applied to the dessert which it now designates. It had other meanings and the dessert had other names, but nevertheless "junket" did mean the dessert, and when the plaintiff called its product "junket tablets" it was not making an arbitrary or fanciful use of the word, but adopting a name which was already quite sufficiently attached to the product to enable the public to know what was meant without any education upon that point. Probably what the ...