Rolling into Court

Today’s post is written by Katie Dishman, of the National Archives at Chicago.

As Halloween approaches, our thoughts turn to candy — and court cases.  A sweet combination of both can be found in Record Group 21, the U.S. District Court, the Northern District of Illinois, Chicago.  Civil case number 47C1770 was filed in 1947, when the Life Savers Corporation sued the Curtiss Candy Company for trademark infringement.

In 1947, Life Savers parent company filed suit claiming Curtiss violated Trade-Mark Reg. 355,158, which is a Life Savers candy wrapper design.  In the “Complaint,” Life Savers Corporation said its “exclusive right in its trade-mark and distinctive package design and color scheme each exceeds the sum of Three Thousand Dollars ($3,000), exclusive of interest and costs, and the acts of defendant herein complained of have damaged plaintiff in excess of said amount and if not restrained, will greatly impair, if not destroy said value.”

Life Savers wanted to protect its brand, which celebrates its centennial this year; Pep O Mint was first introduced in Ohio in 1912.  Wint O Green followed in 1918, and the five-flavor roll, the primary product in the case, came out in 1935.

The Curtiss Candy Company, too, had been around for a long time when the suit was filed.  Curtiss was founded in Chicago in 1916.  Known most famously for Baby Ruth and Butterfinger candy bars, Curtiss began making rolled hard candies, varying its product line.

The “Memorandum Opinion” states the main issue with the case.  The style and colors of the packaging were so similar that Life Savers claimed there would be “actual confusion of goods between the products of the plaintiff and defendant.”  Curtiss, however, said its own label was “distinctive and totally different,” and “great pains and much care have been taken to avoid any possible confusion.”

 

The court realized that the profit margin on a “simple disk-like piece of hard candy of different colors and flavors” was large, so it was not surprised that a “simple sugar concoction” would have many others entering the market.  However, it understood that Life Savers, as one of the leaders in that business, wanted to “maintain its position.”

There was an analysis of the wrappers, including the positioning of two blue squares with “Curtiss Assorted Fruit Drops” and three “Life Savers Five Flavors” printed across the entire roll “as to be visible and prominent in whatever position that package may lie….”  However, the court was inundated with witness testimony acknowledging “there has been some actual confusion of goods.”

Depositions of witnesses were taken in different cities to show that consumers were so used to simply reaching for the multi-colored packaging of Life Savers that Curtiss would be able to take advantage of this with its own colored label.  One witness, Lillian Poshkus of St. Louis, when asked about her candy purchase, answered, “I just go right up to the counter and I see the different colored package and I pick that up, put it on the counter and pay for it.”  Several others answered similarly.

But the court considered more than just the colors.  For instance, the diameters and dimensions of all the packages were identical.  Moreover, buying mints is typically an impulse purchase, so consumers are not inclined to take such “care and caution in the selection of goods” as they would take to buy clothes or shoes, the judge said.

“It is probable that a great majority of purchasers do not care particularly what they get so long as they get a package of mints, and it is just as probable that the confusion can be attributed to the size and shapes of the various packages as to the exact wording and coloring of the labels,” the opinion stated.

Indeed, that was one of Curtiss’s claims, saying the “Defendant has not adopted the registered trademark of Plaintiff nor any ‘colorable imitation’ of any registered mark.”  Further the position of the defendant said the “striped effect produced by the picture or representation of the contents of a package is a functional device equally available…and widely used by manufacturers of candy of this type.”

Even in 1948, when the defendant filed its brief, an issue came up that continues to affect the contemporary marketplace.  Curtiss used examples from testimony where some witnesses refer to generic small candy drops as Life Savers.  “Typical of marks of this kind are the marks Frigidaire for the household mechanical refrigerator, Vaseline for petroleum jelly, Kodak for small cameras, Aspirin for the familiar headache remedy, etc.  The term Life Savers itself may have suffered this deterioration because of a developing usage of this word by consumers to mean any small round candies, regardless of the brand.”

Curtiss concluded that Life Savers was attempting “to prevent anybody from putting out assorted fruit drops in a multi-colored label.  If successful, Plaintiff will thus insure that all people who want assorted fruit drops will of necessity be compelled to purchase those of the Plaintiff,” and endowing it “with a monopoly of assorted fruit drops.”

U.S. District Court Judge Elwyn Shaw dismissed the complaint, concluding, “I believe that the defendant has taken every reasonable means to prevent confusion of goods, and unless Life Savers Corporation is to be given a patent on all colored and candy mints it must be held that the trade-mark is not infringed.”

The case was then appealed by the plaintiff, and went to the Seventh Circuit U.S. Court of Appeals, Chicago, shortly after the civil case was completed in 1949.  It supported the lower court decision, again siding in favor of the Curtiss Candy Company.  Nevertheless, Life Savers’ value was not destroyed as the complaint alleged.  Although its ownership has changed hands over the years and they are now made by Wrigley, a division of Mars, Incorporated, the round disk candies with the holes have remained afloat.