Kraft-Phenix Cheese Corp. v. Goldfarb
KRAFT-PHENIX CHEESE CORPORATION v. GOLDFARB
- Proceeding
- district
- Area
- civil
- Panel
- James (author)
Analysis
The court considered plaintiff's motion for a preliminary injunction to restrain defendants from using the brand name 'Wonder Whip' for a competing salad dressing. The court granted the injunction, enjoining defendants from using the word 'whip' in connection with their food product, while allowing them to continue using the word 'wonder.'
| What the court decided | The model |
|---|---|
Motion for preliminary injunction granted in part“Plaintiff is entitled to an injunction pen-dente lite to restrain defendants from using in connection with their food product the word “whip.”” | agree with court The court correctly applied the standard for preliminary injunctions in unfair competition cases, finding that the similarity between 'Miracle Whip' and 'Wonder Whip' was likely to cause confusion and that defendants intended to piggyback on plaintiff's advertising. The court appropriately limited the scope of the injunction to the specific element causing confusion ('whip') rather than the entire name, which is a standard equitable remedy. The court also correctly noted that actual deception is not required when likelihood of confusion and intent to copy are present. |
Injunction scope limited to word 'whip'“No restraint will be imposed upon defendants as to the use of the word “wonder,” used either alone or in conjunction with any other words chosen by them.” | agree with court The court properly tailored the injunction to the specific harm identified. Since 'wonder' was a generic or previously used term by defendants, and the confusion arose from the combination with 'whip', restricting only 'whip' is the least restrictive means to protect the plaintiff's rights. |
Bond amount set at $5,000“Plaintiff will be required to furnish bond on the injunction in the sum of $5,000', which amount is now fixed subject to being increased or diminished upon proper application.” | agree with court Setting a bond is a standard procedural requirement for preliminary injunctions to secure the defendant against potential damages if the injunction is later found to have been wrongfully issued. The amount is within the court's discretion. |
The order itself: sound with gaps — The order is procedurally sound and applies the correct legal principles for a preliminary injunction in an unfair competition case. It correctly identifies the likelihood of confusion, the intent to copy, and the need for a tailored remedy. However, it lacks specific citations to controlling authority, which is a gap in legal reasoning, though the result is defensible based on well-established common law principles of the time.
Opinion — James
JAMES, District Judge.
Plaintiff asks that a preliminary injunction issue to restrain defendants from using as a brand label on their product the words “Wonder Whip.” Plaintiff at about the first of the year 1933 adopted the name “Miracle Whip” for its manufactured salad preparation. It attained prominence in the market and mot with largo sales. These sales resulted from an extensive and costly advertising campaign, carried on by radio and'through newspapers and periodicals. In September of the same year the defendants put out their similar product under the name “Wonder Whip,” in direct competition with plaintiff’s snerchandise. Defendants had not before used the word “whip” in describing the material. They had used the word “wonder” before plaintiff originated its word combination name “Miracle Whip.” It would seem very clear that defendants sought to1 imitate the name adopted by plaintiff, and they' undoubtedly intended to reapi some of the benefit of the extensive advertising which plaintiff had caused to be made. Undoubtedly the use of the word “wonder” alone was open to defendants. But the combination of it with “whip” created a close imitation of plaintiff’s trade-mark, one that was likely to deceive customers who might wish to purchase plaintiff’s product, and who1 had heard it advertised over the radio, or seen it pictured in public journals. The practice- of defendants properly may be designated as pirating on the business of plaintiff.
It has been held that where names or labels adopted by a defendant show in themselves similarity to those of a complainant, and in such a degree as,makes it appear likely that purchasers may be deceived, proof is not required that some persons] have actually been deceived thereby. Especially is this so when all of the facts and circumstances indicate that it was the intention of the defendant to copy as nearly as he might, without actually duplicating, the trade-mark of the complainant. The facts shown, on this application bring this ease within the rule referred to.
Defendants insist that as they have made answer under oath to the bill of complaint, that no1 preliminary injunction may issue. But the facts in general are not disputed. It is not denied that plaintiff adopted and made use of its label as stated, nor that defendants used labels bearing the words “Wonder Whip,” as described. If defendants had denied under oath that they had ever used the latter label, then a different condition of issues would be presented. As the matter rests, they admit the use of the label and claim the right to so use it. Such use was at least'a colorable imitation, and one that was calculated to damage plaintiff'in the marketing of • its product.
Plaintiff’s counsel stated at the oral argument that he would not rely upon a claim of strict infringement of a copyrighted trademark, but as diversity of citizenship existed with the proper jurisdictional amount involved, it would rest upon the claim of unfair business, competition. It has the right to do that, as the complaint in its statement of facts shows sufficient grounds.
Plaintiff is entitled to1 an injunction pen-dente lite to restrain defendants from using in connection with their food product the word “whip.” No restraint will be imposed upon defendants as to the use of the word “wonder,” used either alone or in conjunction with any other words chosen by them.
Plaintiff will be required to furnish bond on the injunction in the sum of $5,000', which amount is now fixed subject to being increased or diminished upon proper application.