Appeal from the District Court of the United States for the Western District of Missouri; Arba S. Van Valkenburgh, Judge.

Suit by the Stark Bros. Nurseries & Orchards Company against William P. Stark and others. Decree for plaintiff (248 Fed. 154), and defendants appeal. Modified.

The appellee instituted this action to enjoin the appellants from infringing its registered trade-mark and from unfair competition, with the usual prayer for damages and an accounting of profits. The appellee is a corporation existing under the laws of the state of Missouri, and the appellants, defendants in the court below, are citizens of the same state; the jurisdiction of the court having been invoked upon the sole ground of the registration of the trade-mark under the act of Congress of February 20, 1905, and the amendments thereto (Comp. St. §§ 9485, 9487-9511, 9513-9516).

The complaint charges that the plaintiff now is, and has been since the year 1816, including its predecessors, James Stark, William Stark, Stark & Barnett, Stark & Co., and Stark Bros. Nurseries Company, engaged in the business of propagating, buying, and selling fruit trees and other nursery stock, and ever since 1893 marked them with the words "Stark Trees" as its trade-mark, affixing it to boxes or packages containing its product; that it has incurred great expense in propagating trees and advertising them as "Stark Trees," and that this trade-mark has become widely known in this and.many foreign countries, as indicating a superior grade of trees propagated and sold by the plaintiff and its predecessors: that its fruit trees are invariably bought and sold and commonly designated as "Stark Trees"; that on January 9, 1913, it filed in the United States Patent Office an application for registra tion of its said trade-mark "Stark Trees" in accordance with the act of Congress of February 20, 1905, and its amendments, and on June 24, 1913, it was duly registered in the United States Patent Office as registration No. 92,282; that it claims the exclusive right to the trade-mark "Stark Trees," or the word "Stark," on fruit and ornamental trees, the trade-name which has always been claimed by its predecessors, they being the first to adopt this mark for nursery stock; that in the spring of 1913 they found sales of fruit trees, labeled and marked with the words "William P. Stark Nurseries," said words being printed across the representation of a short, bushy tree, so arranged that the word "Stark" appeared in large prominent letters across the picture of the tree, and the other words in comparatively smaller type, which, upon investigation, it found was marked and sold by the defendants; that defendants well knew of the exclusive use claimed by plaintiff of the trade-mark "Stark Trees," or any simulation thereof, and that they used the trade-mark "Stark," in conjunction with the representation of a tree, with the intent to defraud and deceive, and have caused their stock to be bought as and for the nursery stock of the plaintiff, much to plaintiff's loss and injury to the public, and the infringement of plaintiff's registered trade-mark, and of its trade-mark rights under the law; that defendants were duly notified of their infringement, but continued to do so since then; that William P. Stark, one of the defendants, was for a number of years an employé, officer, and stockholder of plaintiff, during which time he attempted to and did familiarize his personal name to readers of the plaintiff's general advertising; that defendants in 1912 established a nursery business, with the principal office at Louisiana, Mo., the home of plaintiff and its predecessors, causing a confusion of mails, which ceased when, by order of the Postmaster General, all mail addressed to the name of "Stark" should be delivered to the plaintiff, whereupon the defendants moved their nurseries to Chester, Mo., and caused the name of the town and post office of Chester to be changed to "Stark City," in face of the fact that for years prior thereto the plaintiff had extensively advertised its addresses at "Stark," "Starkdale," and "Stark Station," Mo.; that all the offices of the defendants are at Neosho, Mo., about 10 miles from Stark City. while all their advertising prominently bears the address "Stark City," causing much annoyance and confusion to the plaintiff; that defendants in their extensive advertising dwelt upon the fact that the name of "Stark" had for nearly a century been associated with the nursery business of America,

(257 F.)

and that for the last quarter of a century the defendant, William P. Stark, has made the name a sort of a trade-mark in big things in nursery work, and that their nursery at Stark City would continue to broaden the "Stark" nursery business; that the business of plaintiff and its reputation and the name of "Stark Trees" had been built up at great labor and expense, employing 5.000 salesmen.

The defendants in their answer deny most of the material allegations, and state that the first notification of the claim of the plaintiff to the trade-mark was in a letter received from it, dated August 26, 1916, many years after they had used the name "Stark" in connection with their business, and deny that they had any knowledge of appellee's claim to the exclusive right to the use of the trade-mark "Stark Trees" until notified by that letter. They deny any intent to defraud, or that appellee has suffered any loss by reason of their acts. They deny that the exclusive right to the trade-mark "Stark Trees." or the word "Stark," on fruit and ornamental trees, has been and is now claimed by plaintiff and its predecessors, or that plaintiff and its predecessors were the first to adopt and use this trade-mark for nursery stock, and, if it did, they had no knowledge of it until they received the letter of August 26, 1916. They deny that, at the time the name of Chester was changed to Stark City, plaintiff was using the address "Stark," "Starkdale," or "Stark Station," Mo.: that for years prior thereto it had not used any of these names, nor had there ever been a post office named "Stark," "Starkdale," or "Stark Station," Mo. They admit that they had advertised the location of their nurseries at Stark City, where they are in fact located, and their offices at Neosho, Mo., and that the defendant William P. Stark had for over a quarter of a century been associated with plaintiff's nursery work. They claim that there can be no confusion, as all their sales are made by catalogues and advertisements, and none by traveling salesmen, while the plaintiff did most, if not all, of its business through traveling salesmen, and emphasized in its advertisements that it was located in Louisiana, Mo., while defendants in all their advertisements and catalogues emphasizzed the location of their nurseries at Stark City; that in all their advertisements, letters, and catalogues they had taken precautions to refrain from disparaging the plaintiff or its products, and that their competition had been fair and open.

Upon final hearing there was a decree in favor of the plaintiff, enjoining defendants from the direct or indirect use of the infringing label, or any colorable imitation of plaintiff's trade-mark, in suit, and from putting the work "Stark" prominently at the top of its label, or elsewhere in connection with the business of producing, advertising, and selling nursery stock, in such manner as will not unmistakably differentiate their goods from those of the complainant, and from using the name or address of "Stark City" upon their labels or tags attached to nursery stock, or packages containing same, or from using the address "Stark City" in advertising their business. The decree also directed a reference to a special master to determine all gains and profits which the defendants have derived by infringing on plaintiff's trademark, beginning with the 11th day of March, 1914, and that the plaintiff also recover from the defendants all damages which it has sustained by reason of the defendants' infringement and unfair competition from and after the 26th day of August, 1916, on which date plaintiff gave notice to defendant of the registration of its said trade-mark. 248 Fed. 154. To reverse this decree, appellants are prosecuting this appeal.

Xenophon P. Wilfley, of St. Louis, Mo., and Eugene Pearson, of Louisiana, Mo. (O. L. Cravens, of Neosho, Mo., Ras Pearson, of Louisiana, Mo., and Wilfley, McIntyre, Nardin & Nelson, of St. Louis, Mo., on the brief), for appellants.

Andrew B. Remick, of St. Louis, Mo. (John W. Matson, of Louisiana, Mo., on the brief), for appellee.

Before SANBORN and STONE, Circuit Judges, and TRIEBER, District Judge.

TRIEBER, District Judge (after stating the facts as above). [1] It is undisputed that the appellee and its predecessors have used the name "Stark" in their nursery business for a century and that its products have an established reputation for quality. On June 24, 1913, it was granted a registration of the trade-mark "Stark Trees" under the 10-year clause of section 5 of the Trade-Mark Act of Congress of February 20, 1905 (33 Stat. 725, c. 592), as amended by the Act of February 18, 1911 (36 Stat. 918, c. 113; section 9490, U. S. Comp. Stat. 1916). That trade-mark consisted of the two words "Stark Trees," as shown by this photographic copy:

REES

The appellants' device, charged as the infringement, is on a narrow tag of wood, as shown by this photographic copy:

The word "Stark" is in white letters, across the dark bushy tree; the other words are in black, on white ground. It will be noticed that the word "Stark," across the bushy tree, is in larger letters than any of the other words, which are in smaller type. We concur in the finding of the learned trial judge that "in this manner the word "Stark" is given special emphasis, and from its position the term 'Stark Trees' is vividly suggested."

To justify a finding of infringement of a trade-mark, it is not necessary that the similitude should be exact. It is sufficient if, taking into account resemblance and conditions, the former are so marked that an ordinary purchaser is likely to be deceived thereby. McLean v. Fleming, 96 U. S. 245, 251, 24 L. Ed. 828; Layton Pure Food Co. v. Church & Dwight Co., 182 Fed. 24, 34, 104 C. C. A. 464, 474; McDonald & Morrison Mfg. Co. v. Mueller Mfg. Co., 183 Fed. 972, 974, 106 C. C. A. 312; Heileman Brewing Co. v. Independent Brewing Co., 191 Fed. 489, 494, 112 C. C. A. 133, 138; De Voe Snuff Co. v. Wolff, 206 Fed. 420, 423, 124 C. C. A. 302, 305; O. & W. Thum Co. v. Dickinson, 245 Fed. 609, 614, 158 C. C. A. 37, 42. In Thaddeus Davids Co. v. Davids, 233 U. S. 461, 469, 34 Sup. Ct. 648, 651 (58 L. Ed. 1046, Ann. Cas. 1915B, 322), it was claimed that "the protection is limited to its use when standing alone * and that there can be no infringement unless it is used in this precise. manner." The court, in denying this contention, said:

*

"The statutory right cannot be so narrowly limited. Not only exact reproduction, but a 'colorable imitation,' is within the statute; otherwise, the trademark would be of little avail, as by shrewd simulation it could be appropriated with impunity."

In McDonald & Morrison Mfg. Co. v. Mueller, supra, this court held:

(257 F.)

"The test is not whether, when goods are placed side by side, a difference can be recognized in the labels or marks; but the test is, when such goods are not placed side by side, would an ordinarily prudent purchaser be liable to purchase the one, believing that he was purchasing the other."

See, also, Gordon's Dry Gin Co. v. Eddy & Fisher Co. (D. C.) 246 Fed. 954.

There can be no doubt that an ordinarily prudent person, knowing of the reputation of the "Stark Trees," which for many years have been known as superior trees, would easily be induced to purchase the trees of appellants, in view of the advertisements, the statements in their catalogues, and their trade-mark, in the belief that they came from the orchard nurseries of appellee. The catalogues and advertisements of appellants, which do not appear in the printed record, but were by order of the trial court transmitted to this court as a part of the record, and have been carefully examined, indiscriminately describe their trees and nurseries as "Štark Nurseries," "Stark Brothers," "Stark Trees," and use the word "Stark" in connection with their nurseries and alleged location. The representation that the business is located at "Stark City," although they admit that only their nurseries are at Stark City, while the business itself is conducted at Neosho, the change of the name of the place where their nurseries are located from Chester to Stark City, the attempt to establish offices, at first, at Louisiana, Mo., all tend to impress one that there was an intention to add to the confusion and mislead purchasers of trees into the belief that their trees are those of appellee.

[2] Nor does it matter that appellants were using their own surnames as their trade-mark. While it is true that a person has a right to use his surname as a mark, without being guilty of an infringement, there is a limitation to that right. As stated in the Davids Case, "provided that the name was not used in a manner tending to mislead, and it was clearly made to appear that the goods. were his own, and not those of the registrant.' The decree complained of only enjoined appellants from using labels with their name "Stark" in such a manner "as will not unmistakably differentiate their goods and advertisements from those of complainant." There is nothing in Stix, Baer & Fuller Dry Goods Co. v. American Piano Co., 211 Fed. 271, 127 C. C. A. 639, which in any wise conflicts with this. Although that was not a registered trade-mark case, it was held:

"If, however, the name has previously become well-known in trade, the second comer uses it subject to three important restrictions: (1) He may not affirmatively do anything to cause the public to believe that his article is made by the first manufacturer. (2) He must exercise reasonable care to prevent the public from so believing. (3) He must exercise reasonable care to prevent the public from believing that he is the successor in business of the first manufacturer."

There is nothing in the decree to prevent appellants from using their surnames, nor from publishing in their catalogues and advertisements the training and knowledge of appellant William P. Stark in the nursery business. But the language employed in this part of the decree is in such general terms that appellants may be at a loss how to comply with the terms of the decree in every respect, and thus

may inadvertently violate the injunction. To avoid this we deem it best, following the rule in the Hall Safe Case, 208 U. S. 560, 28 Sup. Ct. 350, 52 L. Ed. 616, and the Knabe Piano Case, 211 Fed. 271, 127 C. C. A. 639, to indicate in this opinion the decree to be entered on this branch of the case.

Nor is it material that appellants do not use appellee's trade-mark in its entirety, if what they do use is misleading and likely to cause confusion, whether the goods offered under this trade-mark are or are not those of the registrant. In Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19, 33, 21 Sup. Ct. 7, 12 (45 L. Ed. 60), it was held:

"It is not necessary, to constitute an infringement, that every word of a trade-mark should be appropriated. It is sufficient that enough be taken to deceive the public in the purchase of a protected article."

In Ammon & Person v. Narragansett Dairy Co. (D. C.) 252 Fed. 276, 278, the registered trade-mark of plaintiff was "Queen of the West," and that of the defendant "Queen." The court in granting an injunction against the defendant, from using the trade-mark "Queen" said:

"The unnecessary adoption of a part of a plaintiff's trade-mark-a part so substantial as to have become a trade-name or nickname for the goods-is generally regarded as an infringement. The use by a defendant of a trademark identical with the name which has been derived from a plaintiff's trade-mark proper, and has become sufficiently descriptive of plaintiff's goods, is the adoption of a mark which will cause its goods to bear the same name in the market. Neither subtractions from nor additions to a trade-mark proper will avoid infringement, when such imitation as is likely to lead to confusion still remains despite the changes"

-and authorities cited. The same principle was announced by this court in Rossman v. Garnier, 211 Fed. 401, 406, 128 C. C. A. 73, 78. The use of "Stark City" as their address, when their business is conducted at another city, Neosho, Mo., is misleading, and, owing to the name, likely to cause confusion. This is true, not merely owing to the name "Stark" being used, but also for the reason that appellee and its predecessors have frequently advertised their business as at "Stark," "Starkdale," and "Stark Station," Mo., having at some time maintained nurseries at some of these places.

The court committed no error in granting the injunction, but, in order to avoid any misapprehension, there should be added to that part of the decree granting the perpetual injunction the following words:

"That the defendants may use their surnames in circulars, catalogues, or advertisements, but they must be accompanied by information that they are not of the original William Stark Nurseries, nor in any wise connected with the Stark Bros. Nurseries & Orchards Company, or any of its predecessors under whatsoever name their business was conducted, and that their trees are not the product of any of these concerns, nor their successors. It is further ordered and decreed that, for the purpose of distinguishing defendants' trees from those of the complainant, the defendants shall insert in their circulars, catalogues, and advertisements a notice substantially as follows, and in form as conspicuous as the body of such circulars, catalogues, or advertisements: