The opinion of the court was delivered by: AVIS
The complainant's action is based upon its right to use the trade-name "Chicken of the Sea," as applied to tuna fish packed in cans. It appears that this trade-mark was originally applied to the product, packed and canned tuna fish, by White Star Canning Company as early as 1912; that on December 22, 1913, it filed in the United States Patent Office its application for registration of said trade-mark; that on May 19, 1914, the said trade-mark was duly registered, and a certificate or registration therefor, numbered 97,192, was duly issued, and was in full force and effect at the time of the grievances complained of in the bill of complaint. It is further claimed, and not disputed, that since March 21, 1923, said trade-mark so registered has been, and now is, the property of the complainant.
The evidence shows that the trade-mark has been continuously used by complainant on its product, packed and canned tuna fish, from that date to the time of the commencement of this action.
Complainant contends that defendant in the use of the same words "Chicken of the Sea," as applied to the defendant's product of the same character, packed in a container of the same general form and appearance, has infringed the trade-mark and trade-name so registered by complainant, and prays that injunction may issue against defendant, and also for an accounting for profits and damages.
Defendant contends that the words "Chicken of the Sea," the dominating word therein being "Chicken," is purely descriptive of the fish so packed, or of the character or quality of such goods.
The bill of complaint claims the right to a technical trade-mark, and a reading of it seems to indicate that complainant relies upon the validity of this trade-mark for relief. Some other points were argued, however, and counsel for defendant in his brief uses the following language:
"Complainant further argues that if it be conceded that its mark is descriptive, yet it should be sustained as a valid trade-mark because it has acquired a secondary meaning.
"It is difficult to see how the question of a claim of secondary significance or secondary meaning for the mark 'Chicken of the Sea' arises in this case. However, if this Court has no objection to also considering the matter, defendant hopes that every possible question relating to this case will be considered and determined herein."
In the broadest sense, and if the pleadings were drawn to cover, the controversy would consist of the disposition of three points:
First. Does the complainant own a valid and existing registered trade-mark in the words "Chicken of the Sea?"
Second. If not, have the said words, so used by complainant and its predecessor in title, for many years, acquired a secondary meaning, which entitles complainant to the exclusive use thereof in marketing canned tuna fish, its product?
Third. If the words have acquired such a secondary meaning, has the defendant, in the use of the identical words, on canned tuna fish, its product, unfairly competed to such an extent as to warrant an injunction and accounting?
If the first point to be considered is decided in favor of the complainant, the case is disposed of on that issue. If complainant's trade-mark is valid, defendant is an infringer, and ...