and tends to give actual notice, since the proposed trade-mark must be published in the Official Gazette of the Patent Office. Also, the applicant for registration has the benefit of the examination of his mark by the Patent Office before it is registered and of the publication of it just mentioned, which tends to invite opposition if there be any, and therefore, to aid the determination of doubtful questions of validity. See Nims on Unfair Competition and Trade-Marks, 3rd Ed., pages 591, 592.
Thus, each case must be considered upon its own facts, and this court believes that in the present case the voluminous record presents an issue more clear-cut than has been heretofore presented in most, if not all, of the litigated cases involving use of the word "Cola", and, therefore, a fortiori is this true with respect to the mere ex parte registration proceedings in the Patent Office. Here it is appropriate to call attention to the fact that the Patent Office refused registration to Dixi-Cola, not on the broad principle here adopted, but because the prefix "Dixi" suggests the locale of origin of Coca-Cola.
We come, then, finally to the question whether or not plaintiff is entitled to the additional relief asked for, namely, that defendants shall not, unless they sell their products in bottles to consumers, give to their products the same color as Coca-Cola. We think that plaintiff is entitled to this relief. The weight of the credible evidence clearly indicates that the caramel used for coloring purposes by both plaintiff and defendants has no real functional value, and it is clear to this Court that there is no way of successfully avoiding the future probability of substitution except by changing the color, if defendants still desire to have their products dispensed to the consumer otherwise than in bottles, as they have the right to do. This is not tantamount to giving plaintiff a proprietary right in the particular brown color that it employs for its beverage. The testimony discloses that plaintiff has used this same, or substantially the same, color from the time that it first marketed its product, and since the use of caramel has no real functional value, it is only reasonable to conclude that the real purpose of defendants, in precisely matching colors, was to stimulate substitution -- certainly where their product is sold to the public without identifying bottles or insignia.
In this connection it is quite significant, and greatly weakens the defendants' case, that they stress the value of their trade-marks in one breath, and in the next breath say that they are willing, as they have been, to let their bottlers take their products and dispense them under whatever labels their bottlers see fit to use. The answer given by defendants is that they cannot afford to have their own exclusive bottlers. That may be true; but that is a business question which cannot over-ride basic principles of law essential to the maintenance of fair competition.
The question of change of color was directly involved in the case of Coca-Cola Company v. Gay-Ola Company, supra. There the Court said, 200 F. at page 724: "The record justifies the conclusion that the color is 'nonfunctional' -- to use the phraseology of the patent law. The bill alleges that Gay-Ola is 'artificially and unnecessarily's colored so as to look exactly like Coca Cola. The answer denies this in terms; but it goes on to say that the color is produced by caramel, which is in universal use for coloring purposes, and is used by complainant for coloring Coca Cola. There is here no claim that caramel serves any other purpose in either compound, except merely to give color, and saying that it is one of the 'component element,' as one of the witnesses does, is saying nothing more. It follows that the adoption, not only of caramel, but of the selected amount of caramel, was for the main and primary purpose of making the two articles look just alike. In this connection it appears that there is a great variety of coloring materials open to the use of any manufacturer, and selections from which are used by other manufacturers."
In the second Gay-Ola case, Coca-Cola Co. v. Gay-Ola Co., 6 Cir., 211 F. 942, in which the Court considered certain questions arising in connection with the form of decree incident to the court's original decision, it was said, 211 F. at page 943: " We cannot see how it is possible for this syrup, carrying what on the record must be called the guilty color, to be sold by the Gay-Ola Company, so that it loses title and control, and for the court at the same time to retain practical power to enforce against the Gay-Ola Company the existing restriction upon the ultimate form of sale. Obviously, by establishing its own bottling works in different places, or by causing the bottling to be done by its agents, whose acts are its acts, it can get its product on the market in bottled form; if such branches or agencies are impracticable, and the Gay-Ola Company must either change the color or abandon the business, this result must be charged to its fraudulent inception -- to a 'congenital defect'. We think the decree should absolutely prohibit sales by the Gay-Ola Company unless in the form prescribed for ultimate use." (Italics inserted.)
A good deal was said in the course of the trial about custom of the trade, and that jobbers, bottlers and retailers were not deceived by anything that defendants did, or omitted to do. Suffice it to say that any method of competition, inherently unfair, does not cease to be so because it becomes so well known to the trade that dealers, as distinguished from consumers, are no longer deceived by it. Federal Trade Commission v. Winsted Co., 258 U.S. 483, 42 S. Ct. 384, 66 L. Ed. 729. To be sure, there is no evidence in the present case from consumers themselves that they were offered, when asking for Coca-Cola, defendants' product instead, and were told that it was the same thing. What was done, as the testimony discloses, was far more subtle, therefore, the more effective and the more to be condemned.
In conclusion, and to summarize, this Court believes that the plaintiff is entitled to the relief asked for, namely: First, an injunction preventing the defendants from using, as part of the name of their products, the word "Cola", regardless of whether the syllable placed in front of the word "cola" is like or unlike the syllable "Coca" -- whether it looks like it, or when pronounced, sounds like it. This does not mean that the defendants cannot use the word "Cola" or the word "Coca", or both, separately, on their labels otherwise than as part of the name itself. They have a right to do that, provided they do not embody either of those words in the name itself, for the plaintiff has no proprietary right in either of these words, standing alone. For example, it would be entirely permissible for defendants' labels and advertisements to contain an explanatory statement, apart from the name, such as: "This beverage contains the extract of coca and of cola."
Second, and in addition to the aforegoing requirement as to the name, plaintiff is entitled to have the defendants enjoined from employing for their products the same color as that of Coca-Cola if defendants distribute, or permit their products to be distributed, or sold to the consumer other than in bottles.
Lastly, plaintiff is entitled to an accounting from the corporate defendants, and from Robert W. Kruse and Constantine A. Grivakis, individual defendants, for all damages sustained by the plaintiff and profits realized by said defendants by reason of infringement and unfair competition, and to its taxable costs.
A decree will be signed in accordance with the opinion just rendered.
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