The defense that the plaintiff's trademark and advertisements
convey fraudulent representations to the public affords but a
narrow ground for refusing injunctive relief against an infringer
who seeks to reap the advantages of the plaintiff's goodwill, and
the defense must be carefully scrutinized. P.
254 U. S.
145.
As respects this defense, the plaintiff's position must be
judged by the facts as they were when the suit was begun, not by
the facts of a different condition and an earlier time. P.
254 U. S.
147.
Plaintiff's beverage, widely sold under the name "Coca-Cola,"
with
Page 254 U. S. 144
a picture of coca leaves and cola nut on the labels, and
containing certain harmless extractives from coca leave and cola
nut, claimed to add flavor, with some caffein from the nuts and
more superadded, originally contained also some cocaine derived
from the coca leave, and was once advertised a an "ideal nerve
tonic and stimulant," but, long before this suit began, cocaine was
eliminated, the article was advertised and sold as a beverage only,
free from cocaine, and, for the public generally, the name came to
signify the beverage itself, the plaintiff's product, rather than
its ingredients.
Held, that the continued use of the name
with the picture was not a fraud depriving the plaintiff of the
right to enjoin infringement and unfair competition in selling a
like preparation under the name of "Koke," but that the injunction
should not restrain use of the name "Dope," a featureless word not
specifically suggestive of "Coca Cola" by similarity or in use, nor
forbid manufacture and sale of the product, including the coloring
matter. P.
254 U. S.
145.
55 F. 894 reversed.
The case is stated in the opinion.
MR. JUSTICE HOLMES delivered the opinion of the Court.
This is a bill in equity brought by the Coca-Cola Company to
prevent the infringement of its trademark Coca-Cola and unfair
competition with it in its business of making and selling the
beverage for which the trademark is used. The district court gave
the plaintiff a decree. 235 F. 408. This was reversed by the
circuit court of appeals.
Koke Co. v. Coca-Cola Co., 255
F. 894. Subsequently a writ of certiorari was granted by this
Court. 250 U.S. 637.
Page 254 U. S. 145
It appears that, after the plaintiff's predecessors in title had
used the mark for some years, it was registered under the Act of
Congress of March 3, 1881, c. 138, 21 Stat. 502, and again under
the Act of February 20, 1905, c. 592, 33 Stat. 724. Both the courts
below agree that, subject to the one question to be considered, the
plaintiff has a right to equitable relief. Whatever may have been
its original weakness, the mark for years has acquired a secondary
significance and has indicated the plaintiff's product alone. It is
found that defendant's mixture is made and sold in imitation of the
plaintiff's, and that the word "Koke" was chosen for the purpose of
reaping the benefit of the advertising done by the plaintiff and of
selling the imitation as and for the plaintiff's goods. The only
obstacle found by the circuit court of appeals in the way of
continuing the injunction granted below was its opinion that the
trademark, in itself, and the advertisements accompanying it made
such fraudulent representations to the public that the plaintiff
had lost its claim to any help from the court. That is the question
upon which the writ of certiorari was granted, and the main one
that we shall discuss.
Of course, a man is not to be protected in the use of a device
the very purpose and effect of which is to swindle the public. But
the defects of a plaintiff do not offer a very broad ground for
allowing another to swindle him. The defense relied on here should
be scrutinized with a critical eye. The main point is this: before
1900, the beginning of the goodwill was more or less helped by the
presence of cocaine, a drug that, like alcohol of caffein or opium,
may be described as a deadly poison or as a valuable item of the
pharmacopoeia, according to the rhetorical purposes in view. The
amount seems to have been very small, but it may have been enough
to begin a bad habit, and after the Food and Drug Act of June 30,
1906, c. 3915, if not earlier, long before this
Page 254 U. S. 146
suit was brought, it was eliminated from the plaintiff's
compound. Coca leaves still are used, to be sure, but after they
have been subjected to a drastic process that removes from them
every characteristic substance except a little tannin and still
less chlorophyl. The cola nut, at best, on its side furnishes but a
small portion of the caffein, which now is the only element that
has appreciable effect. That comes mainly from other sources. It is
argued that the continued use of the name imports a representation
that has ceased to be true, and that the representation is
reinforced by a picture of coca leaves and cola nuts upon the label
and by advertisements, which, however, were many years before this
suit was brought, that the drink is an "ideal nerve tonic and
stimulant," etc., and that thus the very thing sought to be
protected is used as a fraud.
The argument does not satisfy us. We are dealing here with a
popular drink, not with a medicine, and although what has been said
might suggest that its attraction lay in producing the expectation
of a toxic effect, the facts point to a different conclusion. Since
1900, the sales have increased at a very great rate, corresponding
to a like increase in advertising. The name now characterizes a
beverage to be had at almost any soda fountain. It means a single
thing coming from a single source, and well known to the community.
It hardly would be too much to say that the drink characterizes the
name as much as the name the drink. In other words, "Coca-Cola"
probably means to most persons the plaintiff's familiar product to
be had everywhere, rather than a compound of particular substances.
Although the fact did not appear in
United States v. Coca-Cola
Co., 241 U. S. 265,
241 U. S. 289,
we see no reason to doubt that, as we have said, it has acquired a
secondary meaning in which perhaps the product is more emphasized
than the producer, but to which the producer is entitled. The coca
leaves and whatever of cola nut is
Page 254 U. S. 147
employed may be used to justify the continuance of the name, or
they may affect the flavor as the plaintiff contends, but, before
this suit was brought, the plaintiff had advertised to the public
that it must not expect, and would not find, cocaine, and had
eliminated everything tending to suggest cocaine effects except the
name and the picture of the leaves and nuts, which probably
conveyed little or nothing to most who saw it. It appears to us
that it would be going too far to deny the plaintiff relief against
a palpable fraud because possibly here and there an ignorant person
might call for the drink with the hope for incipient cocaine
intoxication. The plaintiff's position must be judged by the facts
as they were when the suit was begun, not by the facts of a
different condition and an earlier time.
The decree of the district court restrains the defendant from
using the word "Dope." The plaintiff illustrated in a very striking
way the fact that the word is one of the most featureless known
even to the language of those who are incapable of discriminating
speech. In some places, it would be used to call for Coca-Cola. It
equally would have been used to call for anything else having about
it a faint aureole of poison. It does not suggest Coca-Cola by
similarity, and whatever objections there may be to its use,
objections which the plaintiff equally makes to its application to
Coca-Cola, we see no ground on which the plaintiff can claim a
personal right to exclude the defendant from using it.
The product, including the coloring matter, is free to all who
can make it if no extrinsic deceiving element is present. The
injunction should be modified also in this respect.
Decree reversed.
Decree of district court modified and affirmed.