Rock Spring Distilling Co. v. Gaines & Co.,
246 U.S. 312 (1918)

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U.S. Supreme Court

Rock Spring Distilling Co. v. Gaines & Co., 246 U.S. 312 (1918)

Rock Spring Distilling Co. v. W. A. Gaines & Company

No. 58

Argued January 31, February 1, 1918

Decided March 18, 1918

246 U.S. 312


Under the common law and the federal registration statute (February 20, 1905, c. 592, 33 Stat. 724), a trademark for one variety of goods include other varieties of the same species.

An adjudication that, as against B, A is entitled, by prior appropriation,

Page 246 U. S. 313

to use a trademark on "blended" whiskey, protects A, as against B, in its use on "straight" whiskey.

G, claiming a trademark by prior adoption and use and by registration under the Act of February 20, 1905, supra, in connection with the manufacture in Kentucky and extensive sale of "straight" whiskies, sued R to enjoin the use of the mark on "straight" whiskey manufactured in that state. R, claiming to be acting as the agent of H, set up in bar a decree of the circuit court in Missouri, directed by the circuit court of appeals, dismissing the bill in a former suit brought by G against the predecessors of H to enjoin them from using the same mark on "blended" whiskey, which they had been producing and selling under it in a limited way at St. Louis. Held, reviewing the pleadings in the former case and the findings and conclusions of the circuit court of appeals as displayed in its opinion, (1) that the issues as to the common law right were the same in both cases, (2) that the former decree established against G, in favor of the predecessors of H, a title by prior appropriation, and not merely a defensive right limited to the type of whiskey ("blended") they were selling and to the volume and territorial extent of their trade in it when the former bill was filed, (3) that this adjudication enured to R by privity, and (4) barred the subsequent suit, notwithstanding the latter related to whiskey of another type -- "straight" whiskey -- and notwithstanding the subsequent registration of the trademark by the plaintiff for "straight" whiskey under the federal act.

226 F. 531, reversed.

This is a bill in equity brought by the Gaines Company against the Rock Spring Company to restrain the latter from using the trademark of the former. The trademark is registered and is employed by the Gaines Company to designate a brand of straight rye or straight bourbon whisky manufactured by that company.

The following are the facts of the bill stated narratively: the Gaines Company is the owner of a whisky distillery in Woodford County, Kentucky, known and named as the Old Crow Distillery. It is the only one in the state that is or ever has been designated by the name of "Crow" or "Old Crow."

Its product has been at all of the times mentioned in

Page 246 U. S. 314

the bill straight rye and straight bourbon whisky, and to it there has at all times been applied the trademark consisting of the words "Old Crow" by being imprinted or branded on the wooden box containing the whisky and imprinted upon labels affixed to bottles containing the whisky. The trademark is now and for many years past has been used by the company and its predecessors in commerce among the states.

On February 26, 1909, it filed in the Patent Office, in pursuance of the Act of February 20, 1905, 33 Stat. 724, in due form and under the conditions required, an application for registration of the trademark and a certificate of registration for the same was duly issued and for many years past has been used by the company as a trademark for its straight rye and straight bourbon whisky.

The Gaines Company, availing itself of certain acts of Congress, began and has ever since maintained the bottling of the "Old Crow" in bond, and it was then and has ever since remained the only "Old Crow" whisky bottled in bond and has an extensive sale throughout the United States and in foreign countries, and when so bottled in bond, it is known as and called "Old Crow Bottled in Bond," is so marked, and commands a high price.

The Rock Spring Company is a corporation, has a distillery in the County of Daviess, Kentucky, and is the owner of a distillery situated therein known as Distillery No. 18, operated by Silas Rosenfield, one of the defendants.

The Rock Spring Company, in fraud of the Gaines Company's rights and in infringement of its trademark, made or caused to be made and sold or caused to be sold in Kentucky a certain spurious straight bourbon whisky, not the product of the Gaines Company, and branded the same with the words "Celebrated Old Crow

Page 246 U. S. 315

Whisky Bottled in Bond," have caused the same to be bottled in bond, have applied to the labels thereon the words "Old Crow" in script type, and have caused the same to be sold and transported in interstate commerce, and this with the intent to mislead and deceive the public, and are doing so and will continue to do so unless restrained.

An injunction is prayed, and an accounting.

Demurrers were filed by the Rock Spring Company and Rosenfield, which were overruled, and they then answered, pleading a prior adjudication based upon the following alleged facts: a suit was brought in the United States Circuit Court for the Eastern Division of the Eastern District of Missouri by W. A. Gaines & Company against Abraham M. Hellman and Moritz Hellman charging infringement of the trademark and unfair competition. The bill was subsequently amended making Max Kahn, administrator with will annexed of the estate of Abraham M. Hellman, deceased, a party to the suit. Upon the issues framed, a decree was entered in favor of the complainants, an injunction granted, and an accounting ordered.

The decree was reversed by the United States Circuit Court of Appeals for the Eighth Circuit with directions to dismiss the bill on the ground that the evidence clearly showed that the predecessors in business of the appellants therein had adopted the words "Old Crow" as a trademark for whisky as early as the year 1863 and the evidence failed to show that the predecessors of the Gaines Company had used the words as a trademark prior to the year 1870.

A petition for certiorari to review the decision was denied by the Supreme Court of the United States.

Other proceedings were had in the suit pending its appeal and afterward. The suit, however, was finally dismissed on the merits because of the decision of the

Page 246 U. S. 316

court of appeals and the action of the Supreme Court of the United States.

Defendants are in privity with the parties recovering under those decisions and decrees, and are manufacturing whisky under contracts of agency from them or their successors and neither have nor claim any right except through such contract.

The Hellman Distilling Company filed a petition to be permitted to intervene, which was denied, 179 F. 544.

After hearing, a decree was entered sustaining the plea of former adjudication based on the decree of the District Court for the Eastern District of Missouri, and accordingly and for that reason, the bill of complaint, so far as it sought relief for any infringement of the trademark "Old Crow" in connection with its use on whisky, was dismissed. And it was further decreed that the registration of the trademark July 20, 1909, could not and did not invalidate or nullify the estoppel.

The decree was reversed by the circuit court of appeals, and thereupon this certiorari was applied for and allowed.

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