Pacific Coast etc. Milk Co. v. Frye & Co., 85 Wash. 133,

147 Pac. 865 (1915).

      PACIFIC COAST ETC. MILK CO. v. FRYE & CO.      133
 Apr. 1915          Statement of Case.

      [No. 12078. Department Two. April 17, 1915.]
           FRYE & COMPANY, Appellant. 1


Fraud amounting to unfair competition by the confusion of
things used in the label of another which through such other's
prior use had come to connote a particular thing, depends upon
whether the same would be reasonably calculated to deceive the
common or usual purchaser of the given article when exercising
ordinary care.
- LABELS AND COLORS. Unfair competition in the use of a similar
label for a like article of goods, sufficient to warrant injunction,
is not shown by the fact that plaintiff for a number of years had
on the market a condensed milk known as "Carnation Brand Sterilized
Evaporated Milk," and that the defendant later put out an article
known as "Wild Rose Brand Sterilized Milk," when the specific
points of resemblance in the labels are that both are made of the
same colors of red and white in hands of uniform width with their
relative positions reversed; that the central group of one
consists of a bunch of three carnations and the other of three
wild roses, and that there is a resemblance in number, size,
arrangement and relative position of the several parts and words
and in the colors in which the same are represented, excepting
that the title "Carnation" is in script type and that of
"Wild Rose" in Roman; since there is no idem sonatas in the
names, and similarity in the color scheme alone is not sufficient
to constitute an infringement; especially where there was no
evidence that dealers or consumers had been deceived by the
similarity in color and design.
- DECEPTION OF PUBLIC. Although a label for a competing article
of goods may manifest a similarity in color scheme and grouping
which might be characterized as ethically questionable, yet where
the differences are so prominent as to negative a design to
deceive an intending purchaser of ordinary intelligence using
reasonable caution, and there is no evidence of a single person
having been deceived, the burden being on plaintiff to establish
that fact, the use of such label will not be enjoined.

Appeal from a judgment of the superior court for King
county, Albertson, J., entered October 18, 1913, in favor of

1 Reported in 147 Pac. 865.

                Opinion Per ELLIS, J.           85 Wash.

the plaintiff, in an action to enjoin the use of a trade label
as unfair competition, tried to the court. Reversed.

Higgins & Hughes (Hyman Zettler, of counsel), for

Peters & Powell, for respondent.


ELLIS, J. - This is an action to enjoin, its unfair
competition, the use of a label upon containers of condensed milk.
The plaintiff and its predecessors have, for about fifteen
years, manufactured and marketed its "Carnation" brand of
evaporated milk, using a label of sufficient length and width
to practically cover the surface of the can, with equal
horizontal hands of red and white, the red above and the white
below. In the middle is a group of three carnation flowers,
two red, resting on the white background, and one pink,
resting on the red background; with the word "Carnation" in
prominent cursive script in white on the red background
running in a straight line above the flowers, and the word
"Brand" immediately under the word "Carnation," in small
green letters. Immediately under the group of carnations,
in small red letters, are the words "Sterilized Evaporated,"
and in large green letters, the word "Milk," below which,
in small red letters, are the words "An Unsweetened
Condensed Milk." These, as the major characteristics, are
placed in the middle of the label, and are flanked on either
side by a torch, one-ball in red extending into the while band,
and the other half in white extending into the red band. On
either side, outside of these torches, are groups of printed
matter containing a guaranty and directions. Across the
top of the label in the red hand is a row of while conventional
fleur-de-lis, and along the bottom in the white band a similar
row in green.

The defendant is a meat packer, and also operates a group
of retail markets in the state of Washington where meats
and other supplies are sold. For more than eighteen years
it has used the name "Wild Rose," together with a design

      PACIFIC COAST ETC. MILK CO. v. FRYE & CO.      135
 Apr. 1915          Opinion Per ELLIS, J.

of the rose in one form or another, on various articles as its
brand. A few months before the commencement of this
action, it determined to enter the competitive field for the
selling of evaporated milk, and adopted a label of the same size,
shape and color as that of the plaintiff, with the red band
below and the white above, thus reversing the plaintiff's color
scheme. The defendant's central figure is a cluster of three
wild roses, the stems in white and green resting on the red
background, the flowers pink, resting upon the white
background. Above the group of flowers are the words "Wild
Rose," in prominent upright Roman letters, red in color,
forming an arch. Immediately beneath it appears the word
"Brand" in green letters. Immediately beneath the group of
roses and in the red background appears the word "Sterilized"
in small white letters, and immediately beneath that, the word
"Milk" in prominent white letters. Flanking the entire
figure on either side, instead of the plaintiff's torches, appear
two upright scepters, one-half in the white background and
the other half in the red background. Outside of these, on
either side, appears printed matter wholly different from that
similarly placed on plaintiff's label. The defendants label
is not bordered with the fleur-de-lis, but along the bottom of
the red hand it is bordered with alternating long dashes and
round white dots, each edged with a crescent of green.

The case was tried on affidavits and certain stipulated
facts. The affidavits on behalf of the plaintiff were made by
its president and secretary. The gist of that of the president
is as follows:

"Condensed milk is for the most part sold through the
channels of the grocery trade, wholesale and retail. Prior
to engaging in the manufacture of condensed milk I was for
many years engaged in the retail and wholesale grocery
business, and am familiar with the habits of retail purchasers
in the matter of selecting and indicating goods by reference
to distinctive labels, and I know how readily confusion and
deception in trade may arise from similarity of labels and
trade-marks. I have no hesitation in saying that the Wild

                Opinion Per ELLIS, J.           85 Wash.

Rose label as described in and shown by the exhibit
annexed to the complaint herein might readily deceive the
average purchaser at retail, and could easily be used by dealers
in palming off goods so labeled upon incautious and illiterate
buyers as for Carnation Milk. The injury to plaintiff's
business is intensified by the reason that defendant's milk is
much inferior in quality to plaintiff's product, which
inferiority will, to those users not, noticing that they are not
getting plaintiff's product, result in leading him to think
that plaintiff is not maintaining the standard of its product
and will cease to buy it."

The affidavit of the secretary was to the effect that he
believed the allegations of the complaint to be true.

The affidavits on behalf of the defendant were those of its
president, secretary and purchasing agent, to the effect that
the name "Wild Rose," with the design of a rose or roses,
had been used by the defendant and its predecessor for more
than eighteen years, especially on lard of the highest
quality; that after careful consideration in seeking for a label
which would be appropriate for condensed milk, they found
the colors theretofore used by the defendant, red and black,
were not suitable for a light product such as milk; that the
color combinations most generally used on condensed milk or
similar products are white and red or white and blue; that
the probably attractive combination is are very few; that it
is impossible to secure a trade-mark from either the state or
the Federal governments upon any design or combination of
colors by reason of their common use; that any attractive
design or combination of colors would be certain to present
points of great similarity to some other label already in use;
that affiants considered red and white more attractive than
blue and white, and made their design, therefore, as
distinctive and different from the plaintiff's and other
manufacturers' using the same combination as ingenuity could
accomplish, not with the view to any confusion, but to avoid
such confusion, and to make defendant's milk, under its well

          PACIFIC COAST ETC. MILK CO. v. FRYE & CO.      137
 Apr. 1915          Opinion Per ELLIS, J.

known Wild Rose brand, as distinctively different as possible.
There were also affidavits of six managers of the defendant's
retail markets in the state of Washington and of fifty-four
retail grocers and general merchandise dealers throughout the
state located in some twenty different towns and cities, as

"That each of them has been handling 'Wild Rose' milk
for periods averaging from one to six months; that they
each for a long time past also handled 'Carnation' milk;
that not a single one of affiants has ever known of a single
instance of a retail purchaser or any one else who was
deceived by any similarity in the labels of 'Wild Rose' and
'Carnation' brands or who mistook one for the other, or
who was confused into buying or offering to any one of the
brands for the other; that the 'Wild Rose' and 'Carnation'
labels are as different as many other styles of labels on
independent brands of goods; that retail purchasers habitually
distinguish between and call for brands of canned goods they
want by name; that in the judgment of affiants there is no
likelihood of any retail purchaser's being deceived by the
label into purchasing 'Wild Rose' for 'Carnation'."

There is also an affidavit of defendant's secretary that the
affidavits above mentioned were those of all the dealers who
have handled the Wild Rose brand, except six or eight who
were absent from their places of business when called upon
or were located at places so remote that they could not be
reached at the time of bearing.

The stipulated facts were to the effect that the
defendant's Wild Rose label more nearly approached the plaintiff's
Carnation label than any label of any other competitor save
one which had been abandoned at plaintiff's instance, that
defendant's Wild Rose brand contained on the average about
five and eight-tenths per cent of butter fat, while the
plaintiff's Carnation brand contained not less than seven and
eight-tenths per cent of butter fat, and that the Wild Rose
milk has usually been sold on the market at a lower price
than the Carnation milk.

                Opinion Per ELLIS, J.           85 Wash.

The court entered a decree enjoining the defendant from
using the Wild Rose label or any other label as closely
resembling the Carnation label. The defendant appealed.

Irrespective of technical trade-marks, courts have long
recognized the right of the first user of a distinctive dress of
goods to protection against use by another of a similar
dress or name in unfair competition. The basic principle of
the doctrine of unfair competition, though variously
expressed, is exceedingly simple. It is just this - no dealer or
manufacturer has the right by any name, mark, sign, label,
dress or other artifice, to represent to the public that the
goods sold by him are those manufactured or produced by
another, thus passing off his goods for those of such other
to the latter's injury. Rathbone, Sard & Co. v. Champion
Steel Range Co., 189 Fed. 26; Coats v. Merrick Thread Co.,
149 U.S. 562; Sterling Remedy Co. v. Spermine Medical
Co., 112 Fed. 1000; Schmidt v. Brieg, 100 Cal. 672, 35 Pac.
623, 22 L. R. A. 790.

Innumerable cases stating this principle in some form
might be cited. The whole doctrine rests on the prevention
of fraud by the confusion of things through use of a label
or dress which by another's use has come to connote a
*particular thing*. Perlberg v. Smith, 70 N.J. Eq. 638, 62 All.
442. The difficulty in such cases lies not in determining the
governing principle - that is invariable and runs through
all of the cases, - but in applying that principle to the facts
of a given case. For this purpose an examination of a
multitude of decisions leads us to the conclusion that no rule,
other than a very broad one, can be stated. A resemblance
which would deceive an expert or very cautious purchaser
may still give a right of action, but a resemblance which
would deceive only an indifferent or careless purchaser gives
no right of action. The true rule lies between these
extremes, condemning what would be reasonably calculated to
deceive the common or usual purchaser of the given article

      PACIFIC COAST ETC. MILK CO. v. FRYE & CO.      139
 Apr. 1915          Opinion Per ELLIS, J.

when exercising ordinary care. As said in Allen B. Wrisley
Co. v. Iowa Soap Co., 122 Fed. 796, 798:

"The line of demarcation between acts indicative of a
lawful and of an unlawful intent here runs wide and clear
between those which would not and those which would be
likely to induce the common purchaser, when exercising
ordinary care, to buy the article of the vendor as the product
or property of his competitor. The duty is imposed upon
every manufacturer or vendor to so distinguish the article
he makes or the goods he sells from those of his rival that
neither its name nor its dress will probably deceive the public
or mislead the common buyer. He is not, however, required
to insure to the negligent or the indifferent a knowledge of
the manufacture or the ownership of the articles he presents.
His competitor has no better right to a monopoly of the
trade of the careless and indifferent than he has, and any
rule of law which would insure it to either would foster a
competition as unfair and unjust as that promoted by the
sale of the goods of one manufacturer as those of another.
One who so names and dresses his product that a purchaser
who exercises ordinary care to ascertain the sources of its
manufacture can readily learn that fact by a reasonable
examination of the boxes or wrappers that cover it has fairly
discharged his duty to the public and to his rivals, and is
guiltless of that deceit which is an indispensable clement of
unfair competition."

Even in trade-mark cases where the fact of infringement
is in issue, the same broad rule applies. We find it nowhere
better stated than by Mr. Justice Clifford in McLean v.
Fleming, 96 U.S. 245, 255:

"Colorable imitation, which requires careful inspection to
distinguish the spurious trade-mark from the genuine, is
sufficient to maintain the issue; but a court of equity will
not interfere, when ordinary attention by the purchaser of
the article would enable him at once to discriminate the one
from the other. Where the similarity is sufficient to convey
a false impression to the public mind, and is of a character
to mislead and deceive the ordinary purchaser in the exercise
of ordinary care and caution in such matters, it is sufficient
to give the injured party a right to redress, if he has been
guilty of no laches."

                Opinion Per ELLIS, J.           85 Wash.

See, also, Coats v. Marrick Thread Co., supra; Butte v.
Igleheart Bros., 137 Fed. 492; Hubimer Bros. Co. v. Eddy,
74 Fed. 551; American Tobacco Co. v. Globe Tobacco Co.,
193 Fed. 1015.

An examination of the complaint makes it plain that the
gravamen of the charge in this case is an alleged imitative
color scheme. It is the one specific feature emphasized
throughout. It is averred, in substance, that the appellant,
intending to imitate the respondent's label and to take
unfair advantage of the wide reputation of respondent's label
and product, has used a label of white and red parallel
stripes, the red below and the white above, reversing the
relative positions of the stripes as used by respondent. The
specific points of resemblance are set out as follows:

"(1) In the two bands, one red and the other white, of
uniform width, so placed upon containers that the upper half
presents one color and the lower half the other color.

"(2) In the number, size, arrangement and relative
position of the several parts and words of the central figure
and in the colors in which the same are represented.

"(3) In the number of groups or paragraphs of printed
matter outside of the central figure and in their position
with relation to each other and to the central figure.

"(4) In the use of green lettering upon the white band
and white lettering upon the red hand?"

It is then averred that this resemblance, "and especially
the substantial identity in color scheme and arrangement of
major characters, causes such confusion as to mislead the
ordinary intending purchaser." That the color scheme is
the chief offending element is further emphasized in the
prayer for an injunction against the use by the appellant of
"any label for milk of any kind which bears red and white
bands such as shown on the foregoing label." An
examination of the two labels makes it evident that if the claim
of unfair imitation is sustained at all, it must be almost entirely
upon appellant's use of the red and white colors. The names
"Wild Rose" and "Carnation" neither sound alike nor look

      PACIFIC COAST ETC. MILK CO. v. FRYE & CO.      141
 Apr. 1915          Opinion Per ELLIS, J.

alike. In lettering, the two names are wholly dissimilar.
Their only common point is that both are names of flowers.
This can hardly constitute an actionable resemblance,
especially since the appellant had adopted and given a vogue to
the Wild Bose as a brand of its own for other goods long
prior to the adoption of the name "Carnation" by the
respondent's predecessor. the colors of the two groups of
flowers are as dissimilar as possible, so long as both are
meant to simulate the true colors of the respective flowers.
While on each side of the central group on each label is a
column of printed information, the wording and the
substance of the one is entirely different from that of the other.
The most prominent flying in this side matter of appellant's
label is the name "Wild Bose Brand Sterilized Milk" and
"Frye & Company." In that of respondent's it is
respondent's name, "Pacific Coast Condensed Milk Co." The two
really distinguishing features, the name of the brand and
the name of the owner, neither of which bears the slightest
resemblance to that of the respondent, are set out in
appellant's label more prominently than anything else. It is not
claimed that the words "sterilized milk" are anything more
than truly descriptive matter incapable of exclusive
appropriation. Similarity in colors and general arrangement are
often held material factors in aiding deceit, but in a
majority of the adjudicated cases the names used in connection
therewith approach an idem sonans. Enoch Morgan's Sons
Co. v. Whittier-Coburn Co., 118 Fed. 657; McLean v.
Fleming, supra; Sterling Remedy Co. v. Spermine Medical Co.,
supra; Bauer & Co. v. La Societe Anonyme etc., 120 Fed.
74; Drewery 4 Son v. Wood, 127 Fed. 887; Carbolic Soap
Co. v. Thompson, 25 Fed. 625; Franck v. Frank Chicory
Co., 95 Fed. 818; Von Mumm v. Wittemann, 85 Fed. 966;
Centaur Co. v. Link, 62 N.J. Eq. 147, 49 All. 828.

Here, however, there is no hint of idem sonans in the names.
The names being wholly different, sounding differently, and
printed prominently in different colors and type, and the

                Opinion Per ELLIS, J.           85 Wash.

symbols being different with no marked resemblance other
than that necessitated by the nature of the flowers, it is
manifest that, but for the appellant's use of the red and
white bands, no plausible claim of unfair competition could
be advanced. But similarity in color alone is not sufficient
to constitute au infringement. The primary colors are few,
and, as the evidence straws, those suitable for light products,
such as milk, are even more limited. To allow them to be
appropriated as distinguishing marks would foster monopoly
by foreclosing the use by others of any tasty dress. It has
frequently been held that as a rule, subject to certain
exceptions when used in connection with other characteristics, a
color cannot be monopolized to distinguish a product.

"The primary colors, even adding black and white, are
trot few. If two of these colors can be appropriated for one
brand of tipped matches, it will not take long to appropriate
the rest. Thus, by appropriating the colors, the
manufacture of tipped matches could be monopolized by a few
vigilant concerns, without any patent whatever. Indeed, it is
customary for a large company like the defendant to issue
many brands of matches, with heads of different colors. It is
now making tipped matches. If, by appropriating two
colors for each brand, it could monopolize them, it would
soon take all the colors not in use by the complainant, and
this cover the entire field at once. For these reasons, we
think the court below was in error in holding that the
complainant had appropriated the colors of red and blue for
the head of its tipped matches." Diamond Match Co. v.
Saginaw Match Co., 142 Fed. 727.

See, also, Philadelphia Novelty Mfg. Co. v. Rouss,
Fed. 585; American Tobacco Co. v. Globe Tobacco Co.,
supra; New Orleans Coffee Co. v. American Coffee Co., 124
La. 19, 49 South. 780; Fleischmann v. Starkey, 25 Fed. 127;
Davis v. Davis, 27 Fed. 490 ; Newcomer & Lewis v. Scriven
Co., 168 Fed. 621; Mumm v. Kirk, 40 Fed. 589; Regensburg
& Sons v. Juan F. Portuondo Cigar Mfg. Co., 142 Fed. 160;
Heinz v. Lutz, 146 Pa. St. 592, 23 All. 314; Browne,
Trademarks (2d ed.), SSSS 271 and 272.

      PACIFIC COAST ETC. MILK CO. v. FRYE & CO.      143
 Apr. 1915          Opinion Per ELLIS, J.

The case of Nokes v. Mueller, 762 Ill. App. 431, does not
hold to the contrary, but merely emphasizes the exception.
In that case the corresponding parts of the rival milk wagons
were painted in precisely the same colors, and other
characteristics, such as a picture of two cows, a running brook and
the inscriptions, were substantially the same. Moreover, the
evidence there indicated that some persons were actually
deceived. Undoubtedly in cases where simulation is not only so
plain as to show an indisputable intention to deceive, and is
on its face obviously calculated to deceive, injunctions have
been and should be issued without evidence of specific
instances of actual deception. Von Mumm v. Frash, 56 Fed.
830; R. Heinisch's Sons Co. v. Boker, 86 Fed. 765; Lalance
& Grosjean Mfg. Co. v. National Enameling & Stamping
Co., 109 Fed. 317; New England Awl & Needle Co. v.
Marlborough Awl & Needle Co., 168 Mass. 154, 46 N. E.
386, 60 Am. St. 377; Dutton 4 Co. v. Cupples, 102 N.Y.
Supp. 309; Boker v. Kortemas, 122 App. Div. 36, 106 N.Y.
Supp. 904; Drake Medicine Co. v. Glessner, 68 Ohio St. 337,
67 N. E. 722; Burnett v. Hahn, 88 Fed. 694; Kostering v.
Seattle Brewing & Malting Co., 116 Fed. 620.

But, again, in most of such cases there is found an idem
sonans in name, in addition to color and arrangement of
parts on the label or a close imitation in other particulars.
We have been cited to but one case, where an injunction
was granted, in which the color and arrangement of the
offending label was not much more imitative than that
complained of here, but in that case the color and type of the
names "Fairbanks" and "Buffalo" were similar. Fairbank
Co. v. Bell Mfg. Co., 77 Fed. 869.

In that case, moreover, there was proof of specific
instances of deception. No such evidence is found here. On
the contrary, some fifty-four retail dealers who handled both
brands of condensed milk made affidavit that they had never
known of a single instance of a retail purchaser or any one
else being deceived. True, these dealers had only been

                Opinion Per ELLIS, J.           85 Wash.

handling the Wild Rose brand from one to six months, but
it is evident that if purchasers were ever likely to be
deceived, it would be at the start rather than later when the
new brand had become better known. As said by the supreme
court of Pennsylvania in Heinz v. Lutz, 146 Pa. St.
592, 23 All. 314, 315:

"It is not enough that there may be a possibility of
deception. The offending label must be such that it is likely to
deceive persons of ordinary intelligence. It is not necessary
to show that persons have been deceived, yet the finding of
the master that no one has been deceived, although defendant's
label has been in use for some time in the same vicinity
as that of the plaintiff's is certainly strong evidence in
support of defendants' allegation that their label is not likely to

See, also, Kann v. Diamond Steal Co., 89 Fed. 706.

The same rule also prevails in England: London General
Omnibus Co., Ltd., v. Lavell, 1 Chan. Div. (1901) 185;
Payton & Co. v. Snelling, Lampard & Co., (1901) Appeal
Cases, 308. The last case cited involved competitive brands
of coffee, one under the name of "Royal Coffee," and the
other under the name "Flag Coffee," the latter contained in
canister's with labels of colors which it was claimed were
calculated to deceive. Lord Menaughten said:

"In the next place, it is perfectly clear that no human
being has been deceived. There is not a single instance of
any person wishing to buy 'Royal Coffee' buying 'Flag
Coffee' instead through any mistake of any sort. Mr.
Warmington accounted for that by saying, 'Oh, we were
bound to institute proceedings at the earliest possible
moment;' but if persons come to the court under an
apprehension of that sort they are still bound to make out their
case. It will not do to say, 'We were frightened by what
might happen, and, therefore, you must stop the thing in

"The third thing which is perfectly clear on the evidence
is this: that as regards the plaintiff's goods, if they have
acquired a title and denomination in the market, the only
title and denomination which they can have acquired is that

      PACIFIC COAST ETC. MILK CO. v. FRYE & CO.      145
 Apr. 1915          Opinion Per ELLIS, J.

of 'Royal Coffee,' while as regards the defendant's goods,
if they have acquired or should acquire a title in the market,
it is or will be the title of 'Flag Coffee'."

So here, there is no evidence that a single person has been
deceived, and it seems clear that if the appellant's goods are
ever to gain a title in the market it must be as "Wild Rose"
milk, and it will not and cannot be as "Carnation" milk.
While there is in the case before us a manifest similarity in
color scheme and grouping which could not be the result of
mere coincidence, but evidences a design to imitate and
appropriate respondent's taste in dress, which is not to be
commended and may be justly characterized as ethically
questionable, the differences are so many and so prominent as
negative a design to so imitate as to deceive by confusing
identity or origin. The appellant's label could not deceive
an intending purchaser of ordinary intelligence using reasonable
caution, which is after all, both on reason and authority,
the only practical test.

As said in Perlberg v. Smith, supra:

"Care must be taken in these cases not to extend the
meaning of the word 'unfair' to cover that which may be
unethical but is not illegal. It may be unethical for one
trader to take advantage of the advertising of his neighbor,
but his so doing would in many instances be entirely legal."

And as said in Allen B. Wrisley Co. v. Iowa Soap Co.,

"Deceit is the basis of suits of this character. The
intention to palm off one's goods as those of another, and the
use of suitable means to effect that intention, are both
essential elements of a good cause of action for unfair
competition. The intention alone, without the actual or probable use
of means calculated 'to convey a false impression to the
public mind, . . . and to mislead and deceive the ordinary
purchaser,' furnishes no ground for relief, because an intent
to injure where no injury is or will be inflicted, causes no
legal damage."

                Statement of Case.                85 Wash.

The burden of proof was upon the respondent. From
an inspection of the labels, we cannot say that that of the
appellant is reasonably calculated to deceive. The
uncontradicted evidence shows that no one has been deceived.

The judgment is reversed.