Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; John P. Barnes, Judge.
Before EVANS, SPARKS, and MINTON, Circuit Judges.
The plaintiff-appellee, the Quaker Oats Company, filed an application in the Patent Office to register as a trade-mark the word "Oaties" to designate a ready-to-eat breakfast food made of oats. The Patent Office refused to register this word as a trade-mark. The plaintiff appealed to the United States Court of Customs and Patent Appeals. The defendant-appellant, General Mills, Inc., elected to have the proceedings under Section 4915, Revised Statutes, 35 U.S.C.A. § 63, which had the effect of forcing the plaintiff into the District Court. The plaintiff into the filed its petition to compel the Patent Office to register the name "Oaties," and also filed a complaint for a declaratory judgment holding that it was entitled to use the names "Oaties" and "Quaker Oaties" on a prepared breakfast food made of oats, and that such trade-marks did not infringe or colorably imitate the registered trade-marks of the defendant, to wit, "Wheaties," "Kornies," and "Maizies." While the mark sought to be registered was the word "Oaties," the mark used commercially to market the plaintiff's product at the time the complaint was filed and subsequent thereto was "Quaker Oaties."
The defendant answered the complaint and filed a counterclaim asking that the plaintiff be enjoined from using the marks "Oaties" and "Quaker Oaties," alleging that they infringed the defendant's registered trade-marks, "Wheaties," "Kornies," and "Maizies," and that the plaintiff was guilty of unfair competition.
The court refused to grant the petition of the plaintiff to register "Oaties," and this portion of the court's judgment is not appealed from. The court granted to the plaintiff the right to use "Oaties" and "Quaker Oaties" to designate its product, and dismissed the defendant's counterclaim for infringement and unfair competition. The defendant and counterclaimant appeals.
The questions we have then are whether the use of the words "Oaties" and "Quaker Oaties" infringes the defendant's trademarks, and whether the use of the words "Oaties" and "Quaker Oaties" in the marketing of a ready-to-eat oats cereal amounts to unfair competition with the products of the defendant.
The defendant's predecessor, Washburn-Crosby Company, registered the name "Wheaties" on June 9, 1925, to be used as a trade-mark on a ready-to-eat cereal made of wheat. In the eighteen years "Wheaties" has been on the market, between eight and nine hundred million packages have been sold. "Wheaties" has been extensively advertised, the defendant having expended about eighteen million dollars for this purpose. "Kornies" and "Maizies" have never been developed or sold commercially. They are registered as trademarks to be used on ready-to-eat cereals made of corn. Of these two latter products, a few packages have been sold each year, amounting to a few cents in revenue.
Did the defendant, by registering the word "Wheaties" as a trade-mark for a ready-to-eat cereal made of wheat, acquire the right to exclude the use of the words "Oaties" and "Quaker Oaties" by the plaintiff as an unregistered name under which it sought to market a ready-to-eat cereal made of oats? The names themselves suggest two different kinds of products. One suggests a product made of wheat, and the others a product made of oats. Obviously, the defendant would have no right to appropriate a generic name of one grain so as to preclude the use by someone else of the generic name of another grain. Has the defendant accomplished the result by adding the diminutive suffix "ies" to the name of the grain? We think not. The defendant could not appropriate either the generic word descriptive of the grain, or the mere suffix, or a combination of both, in such a maner as to exclude others from using the combination on a different grain. Dixi-Cola Laboratories v. Coca-Cola Co., 4 Cir., 117 F.2d 352, 358.
Furthermore, we think the defendant, as the owner of the registered trademark "Wheaties," should not be heard to deny the right of the plaintiff to use the words "Oaties" and "Quaker Oaties" to describe an oats product. If "Kornies" and "Maizies" are sufficiently distinct from "Wheaties" to authorize the defendant to have the words "Kornies" and "Maizies" registered as trade-marks for cereals made out of corn, then we see no reason why the plaintiff may not claim the name "Oaties" to be sufficiently descriptive to use on a product of oats which it manufactures. If General Mills, a long-time dealer in wheat products, can make a trade-mark out of the word "Wheaties," there is no reason why Quaker Oats, which has been marketing oats products longer than the defendant has wheat products, can not use the word "oats" plus "ies" to designate an oats product. The one does not infringe the other.
The defendant contends that by the use of the names "Wheaties," "Kornies," and "Maizies," it has established a family of names, and that the plaintiff, by the use of the name "Oaties" has infringed this "family" of names. We are unable to agree with this contention. Assuming for the purpose of argument that it is possible to establish a "family" of names, what would constitute an infringement of this "family" of names? We have difficulty in seeing how there could be an infringement unless the group or family of names had become so well-known as to have a secondary meaning. In other words, when the name "Wheaties" was mentioned, the names "Kornies" and "Maizies" would be more than likely called to mind. From the facts presented in the record, and from what we have said before, it is evident that such a secondary meaning has not been established. Only a few packages of "Kornies" and "Maizies" have been sold, so that these names are unknown to the public. We find no infringement of the names "Wheaties," "Kornies," and "Maizies" collectively. Indeed, the situation in the market as shown by the record would make it impossible to establish such meaning. As the trial court found, the defendant was not the first or the exclusive user of the diminutive suffix "ies" as a part of a brand name for a ready-to-eat cereal breakfast food. The plaintiff had registered its Quaker "Quakies" as early as 1921, and Quaker "Sparkies" in 1939.General Foods had registered "Post Toasties" in 1908. Other registered trade-marks for cereals are the Kellogg Company's "Rice Krispies" and "Wheat Krispies," and the National Biscuit Company's "Shreddies." It would seem the defendant is the interloper in this "ies" family. Our sympathy for the family ties was greatly diminished when we recalled that at the time the defendant was ready to market its ready-to-eat breakfast cereal of oats, it sent it forth into the cruel competitive world not as "Oaties" but as "Cherrioats," wholly deprived of its family name.
Since the defendant had no right to exclude the plaintiff from the use of the words "Oaties" and "Quaker Oaties," because their use did not infringe the defendant's trade-marks, the plaintiff was free to use the names "Oaties" and "Quaker Oaties" with only one limitation upon such use. The plaintiff was bound to use reasonable care in the marketing of its product to see that the public was informed of the source thereof, and to so identify its product as to make it readily distinguishable from the defendant's product. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119, 59 S. Ct. 109, 83 L. Ed. 73.
It is conceded that the plaintiff did not try to "palm off" "Oaties" or "Quaker Oaties" as "Wheaties." There is no evidence that any customer in all the millions of the defendant's customers for "Wheaties" ever bought a box of "Oaties" or "Quaker Oaties" thinking that he was getting "Wheaties."
Both parties conducted surveys. The defendant, from its survey, subpoenaed some seventeen of the persons interviewed to testify in court and to identify a questionnaire each had responded to on the survey. The substance of their testimony was that a representative of the defendant came to their houses making a survey on ready-to-eat cereals, and asked each witness a number of questions from a questionnaire which was filled out in the presence of the witness and signed by the witness. The gist of the questionnaire and of the testimony of these seventeen witnesses at the time was directed to the answers the witnesses had made to Question 5 in the questionnaire. In making the survey, Question 5 was propounded in two ways, "Do you recall what company makes 'Oaties'?" ...