"coke" -- usually for "coke".' Mr. Busch says, 'There it is'. I say, 'What do you mean "there it is"?' He said, 'When you ask for "coke" this is what I will give you. It is a product which is advertised before it is manufactured. Do you see what I mean?'" Therefore, from the testimony, the defendant himself made admission to the Witness Kobre that he would sell his product, "Koke-Up," as and for "Coca-Cola," and accordingly is distinguished from the Branham case, supra.
The better view, it seems to me, is that adopted in Denver Chemical Mfg. Co. v. Lilley et al., 8 Cir., 216 F. 869, 870, wherein the court says: "It being conceded, as it must be, that while appellant adopted the name 'Antiphlogistine' for its product, still if for some reason the general public has given to the product another and different name, by which it alone is known to the trade, the appellant becomes entitled to protection by injunction against one who thereafter endeavors through the adoption of such term as the public employs as synonymous for or as a secondary designation of such product, for in so doing the purchasing public may be deceived as to the article purchased, and the appellant is deprived of that trade which its industry and money have built up". I am constrained to adopt this theory of the law as applicable to the instant case, although in the case just referred to the court did not find as a fact that "Denver Mud" had been first coined and commonly applied to "antiphlogistine" and accordingly there was nothing to protect.
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.
From a reading of the testimony one is driven to the conclusion that the defendant with an infinite number of names to choose from, in designating his product, chose the designation "Koke-Up" solely for the purpose of taking advantage of the good will and reputation of the plaintiff's product, which would enure to his benefit as well as to the deception of the public. One who enters a field already occupied by another as in the instant case, should be careful in the selection of a tradename or trademark, keeping far enough away from the plaintiff's tradename or trademark to avoid any possible confusion. The test it seems to me to be applicable is the one in Northam Warren Corp. v. Universal Cosmetic Co., 7 Cir., 18 F.2d 774, 775, where it was said: "Whether there is an infringement of a trade-mark does not depend upon the use of identical words, nor on the question as to whether they are so similar that a person looking at one would be deceived into the belief that it was the other; but it is sufficient if one adopts a trade-name or a trade-mark so like another in form, spelling, or sound that one, with not a very definite or clear recollection as to the real trade-mark, is likely to become confused or misled." The iniquity here is, as has been pointed out, in the similarity of sound, since soft drinks in most instances are ordered verbally.
While it might seem that there can be no unfair competition where no business or competition is already existing, or until the defendant has actually engaged in business, Raladam Co. v. Federal Trade Commission, 6 Cir., 42 F.2d 430, 436, yet the nature of the action here must be construed as a bill quia timet to enjoin the threatened unlawful use of a name, as in Standard Oil Co. of New Mexico v. Standard Oil Co. of California, 10 Cir., 56 F.2d 973. Accordingly, there can be no objection that the defendant is not presently engaged and competing in business with the plaintiff. Standard Oil Company of Maine v. Standard Oil Company of New York, 1 Cir., 45 F.2d 309; Nims on Unfair Competition and Trademarks, Third Edition, 1929, Sec. 365, page 920.
Counsel for the Complainant have pressed with great vigor upon the court the case of Coca-Cola Company v. Koke Co. of America et al., 254 U.S. 143, 41 S. Ct. 113, 65 L. Ed. 189, and while it is true that in that case the court enjoined the product sold under the name of Koke, an analysis will show that the lower court, D.C., 235 F. 408, made Findings of Fact, among others, (a) that it aided persons to whom it sold its product in the substitution of its product for that of the plaintiff, and (b) that the defendant's salesmen were instructed to sell and did sell its product as and for "Coca-Cola." Thus, in that case there was an actual finding by the court of the substitution of the defendant's product for that of the plaintiff, and an actual palming off of the defendant's product for that of the plaintiff.On appeal to the Circuit Court, it agreed with the findings of the lower court, but reversed it on the ground that the advertising accompanying the name "Coca-Cola" was so fraudulent as not to entitle it to the protection of a court of equity and it was on this question, as is definitely stated in the opinion, that the Supreme Court granted certiorari, and it was with this question that the court mainly concerned itself.
However, without any further discussion of the testimony, I think the proof clearly indicates the intention to palm off the defendant's product as that of the plaintiff, and it seems to me to permit the defendant to so do would be unconscionable and would be lending the weight of a court of equity to a deceptive matter.
The bill will be sustained and an injunction granted.
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