Thursday, February 16, 2006
J.D. Fletcher Does Battle With Coca-Cola Company
By ROGER M. GRACE
The Nashville Syrup Company in 1910 began manufacturing a product it called “Murfe’s Cola,” changing the name, in rapid succession, to “Murfe’s Coca Kola,” and then, after J. D. Fletcher became sole owner of the company, to “Fletcher’s Coca Cola.”
Wasn’t this an infringement on the registered trademark of the Coca-Cola Company?
Heck, no, Fletcher insisted. He didn’t put a hyphen between “Coca” and “Cola”—and didn’t put the words in script.
His lawyers argued in federal court that those distinctions made a difference. The judge didn’t agree, and in 1912 granted a permanent injunction.
The judge was Edward Sanford, the same Tennessee-based trial judge who decided the case discussed here last week involving the government’s seizure of 40 barrels and 20 kegs of Coca-Cola syrup.
In the Fletcher case, Sanford found that the Coca Cola Company had acquired a valid trademark under the 1905 act which rendered names registrable, even if descriptive or geographic, where there had been 10 years of actual, continuous, and exclusive use.
The Sixth U.S. Circuit Court of Appeals affirmed Sanford’s decision on June 13, 1914, the same day it affirmed his decision in the syrup confiscation case.
The appeals court, in an opinion by Judge Arthur Carter Denison, found that “Coca-Cola,” though containing only a small amount of coca and cola, “is not so substantially and really deceptive as to invalidate the registered mark.” Denison wrote:
“Plaintiff’s counsel say, and so far as we see accurately say:
“ ‘The use of a compound name does not necessarily * * * indicate that the article to which the name is applied contains the substances whose names make up the compound. Thus, soda water contains no soda…; cream of tartar contains no cream….[g]rape fruit is not the fruit of the grape…; the pineapple is foreign to both the pine and the apple; and the manufactured food known as Grape Nuts contains neither grapes nor nuts.’ ”
The court was unswayed by Fletcher’s argument that he could call his product “Coca Cola” because it did, in fact, contain both coca and cola. Denison responded:
“Assuming that ‘Grape Nuts’ had been exclusively used for a long period as the distinct name of a particular maker’s compound food, could a newcomer rightfully take away a part of the established trade by using the same name for his new compound, just because it contained some nuts and was flavored with grape juice? To us, a negative answer seems imperative, and no less so in the instant case.”
Undaunted by the affirmance of the injunction, Fletcher continued trading on Coca-Cola’s name. He began making “John D. Fletcher’s Carbonated Syrup, a genuine Coca and Cola Flavor.” A customer of his was Benjamin Duberstein, a bottler in Ohio.
The Coca-Cola Company sued Duberstein. U.S. District Judge Howard Clark Hollister of the Southern District of Ohio granted an injunction and an accounting on March 19, 1918.
Duberstein had the words “Coca and Cola” blown into the glass bottles. While the case was pending, the bottler apparently got worried, and started covering those words with a label that was pasted over them reading, “El-Cola.” The judge said in his written order:
“Pasting the label ‘El-Cola’ affords no protection to defendants’ illegal act. These bottles are in contact with ice and water all the time while waiting for use. Aside from the instances proved of the labels having become detached, their liability to become detached is so great as not to afford protection, even if their permanency would be a protection.... [¶]“But the label, if permanent, affords no protection. ‘El-Cola’ is in itself an infringement of complainant’s trade-mark ‘Coca-Cola.’ Complainant has cited more than 25 applicable decisions.
“In addition to the injunction, plaintiff may take an order finding Duberstein guilty of contempt, the punishment to be determined when the formal order is taken.”
The basis upon which a contempt was discerned wasn’t clear, nor was it shown how the name “El-Cola” was determined to be confusingly similar to “Coca Cola.”
Once again, the Coca-Cola Company sued Fletcher. When it went to register its name with the Illinois secretary of state as trademark in 1916, it was turned down because of prior registrations (in 1914) of similar names: “John D. Fletcher’s Coca and Cola Carbonating Syrup, Chicago, Illinois” and “John D. Fletcher’s Carbonated Syrup, A Genuine Coca and Cola Flavor.”
Louis Fitzhenry, a U.S. district judge for the Southern District of Illinois, in 1920 ordered the secretary of state to cancel Fletcher’s state trademarks and enjoined further use of the names. He said Fletcher had to have known of the numerous decisions upholding the Coca-Cola trademark, commenting:
“In the light of this situation, it is not difficult for the court to conclude as to which of the contending parties judicial protection should be granted.”
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