Schlitz Brewing Co. v. Houston Ice Co., 250 U.S. 28 (1919)

U.S. Supreme Court

Schlitz Brewing Co. v. Houston Ice Co., 250 U.S. 28 (1919) Joseph Schlitz Brewing Company v.

Houston Ice & Brewing Company

No. 326

Submitted April 24, 1919

Decided May 19, 1919

250 U.S. 28

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Syllabus

A manufacturer of beer cannot claim the exclusive right to use brown bottles with brown labels, but their adoption by a competitor may contribute to a wrongful deception if combined with an imitative inscription.

Held that defendant's label was so dissimilar to plaintiff's in shape, script, meaning, and mode of attachment that it could not be said to add appreciably to any deception that might arise from the brown color of label and bottle.

241 F. 817 affirmed.

The case is stated in the opinion.

Page 250 U. S. 29

MR. JUSTICE HOLMES delivered the opinion of the Court.

This is a bill in equity brought to restrain the use of a trademark alleged to infringe the plaintiff's or at least to be used in a way that is calculated to deceive and unfairly to interfere with the plaintiff's goodwill. Both courts have found for the defendant, 241 F. 817, so that the only question that we shall consider is whether, upon inspection, it can be said as matter of law that the admitted acts of the defendant are a wrong of which the plaintiff can complain.

Both parties sell beer in brown bottles with brown labels, and the plaintiff conceded below and still with some unwillingness seems to concede that, although perhaps it first introduced them in this connection and this place, it cannot claim the brown bottle, the brown label, or the two combined. These could be used without a warning, such as sometimes is required, that the beer was not the plaintiff's. The only question is how the additional element, the form of the inscription, should be treated. It often is said that the plaintiff must show a deception arising from some feature of its own not common to the public. United States Tobacco Co. v. McGreenery, 144 F. 531, 532, cited by the court below. But, so stated, the proposition may be misleading. It is not necessary that the imitation of the plaintiff's feature, taken alone, should be sufficient to deceive. It is a fallacy to break the fagot stick by stick. It would be enough if, taken with the elements common to the public, the inscription accomplished a result that neither would alone. New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 154.

But it is true that the unlawful imitation must be what achieves the deception, even though it could do so only on the special background lawfully used. The question again narrowed is whether that is the case here. The

Page 250 U. S. 30

shape of the defendant's label is different from the plaintiff's; the script upon it not only is wholly different from the other in meaning, to one who reads the two, but hardly can be said to resemble it as a picture. The two labels are attached to the bottles in quite unlike modes. The Schlitz is applied in a spiral around the length of the bottle, so as to make the ends of the label parallel to the sides of the glass. The defendant's is pasted around the bottom of the bottle in the usual way. This diversity of itself renders mistake unlikely. If there were deception, it seems to us that it would arise from beer and brown color, and that it could not be said that the configuration appreciably helped. Coats v. Merrick Thread Co., 149 U. S. 562, 149 U. S. 573. Beyond stating the principles to be applied there is little to be said except to compare the impression made by the two, or, if that form of statement is preferred, the memory of Schlitz with the presence of the defendant's bottles as marked.

Decree affirmed.

MR. JUSTICE McKENNA and MR. JUSTICE PITNEY dissent.