A. J. Reach Co. v. Simmons Hardware Co.

CAULFIELD, J. (after stating the facts). — We may say at the outset that this case does not involve a technical trade-mark. The word “American” being geographical, and the words “league” and “official” being descriptive, none of them was capable of exclusive appropriation as a trade-mark or trade-name. [American Brewing Co. v. St. Louis Brewing Co., 47 Mo. App. 14; Wolff Bros. v. Hamilton Brown Co., 165 Fed. Rep. (C. C. A. 8th C.) 413, 414; Alden v. Gross, 25 Mo. App. 123, 330; Liggett & Meyers Tobacco Co. v. Sam Reid Tobacco Co., 104 Mo. 53, 60, 15 S. W. 843.] The parties concede this in their briefs, but each insists that under the law of unfair competition it is entitled to equitable relief against the other; the plaintiff claiming the right to have the defendant restrained from the use of the word “official” in combination with the words “American League”, and the defendant claiming the right to have the plaintiff restrained from using the word “American” as applied to “league” baseballs. We will first dispose of the claim of the defendant. I. The defendant’s claim is based upon the idea that the word “American” should not be considered or treated as merely a geographical name for the reason that it had acquired a secondary signification in connection with its use by defendant. The word “league” has, as we have mentioned in the statement of facts, two descriptive meanings. As applied to a baseball it means a high grade baseball. It also means a voluntary association of baseball clubs. Conceding that “American” acquired a secondary signification as applied to defendant’s — 424 — 'ball, then the words “American League” meant, when used by defendant, a high grade baseball vended by defendant. In this sense it pointed to defendant as the origin of the baseball stamped with those words. But there was a sense entirely different from that in which the words “American League” might be applied to a baseball. This is, as we have seen, that the ball was the “official” ball of the American League of Professional Baseball Clubs, commonly known as the “American League”. This last meaning is perhaps not complete •without the addition of the word “official”, that is, without the ball being called the “Official American League” baseball, as the plaintiff: called its ball. There is, then, a sense in which the word “American” may be properly, and is usually, applied to a baseball, entirely disassociated from the idea that the defendant is the origin of such baseball. If plaintiff uses the word in that sense, defendant is not injured. It is only when others use the word as indicating defendant as the origin, when they try to palm off their goods as the goods of defendant, that defendant can complain. Defendant cannot have plaintiff restrained from using the word so long as it confines such use to the disassociated sense by such limitations as will prevent misapprehension on the question of origin and do nothing calculated to result in the palming off of its goods as the goods of plaintiff. “The essence of the wrong consists in the sale of the goods of one manufacturer or vendor for ' another.” [Elgin National Watch Co. v. Illinois Watch Co., 179 U. S. 665, 674.] Now plaintiff has never tried to use the word “American” as applied to league baseballs except in combination with the words “official” and “league”, and it would be trifling with the facts to assume that it has used those words in a sense other than that the league ball to which plaintiff applied the word was the official ■ ball ,of the American League of Professional Baseball Clubs. This sense is, as we have seen, disassociated from the secondary signification which the de — 425 — fendant claims that the word “American” acquired as applied to its baseball. That the plaintiff took ample and most effective measures to confine its use of the word to the disassociated sense we have mentioned and to avoid giving the impression that its ball was the defendant’s is so fully shown by our statement of facts that we need not repeat here what was said there. It is apparent that the most valuable trade sense in which the word could be used is that the ball is the official ball of the “American League” and that the efforts of the plaintiff have been painstaking to express that sense. The trial court did right in refusing to restrain the plaintiff from using the words “American League” or the word “American”. II. Coining now to plaintiff’s case, we find, as already indicated, that it must rest, if at all, on a claim to the exclusive right to the use as applied to baseballs,, of the word “official” in .combination with the words j “American League”. Plaintiff is in the situation of trying to restrain the defendant by suit in equity from using ordinary descriptive or geographical words which are free for the world to use, unless the plaintiff has in some manner acquired an exclusive right to use them as applied to baseballs. It concedes that it has no right to use them as a technical trade-mark. It relies, then, and must rely upon the law of unfair competition, under which plaintiff cannot have the relief sought, unless the use by defendant of the word or combination in question tends to palm off its goods as being the goods of the plaintiff.' Not that it need be shown that the plaintiff’s name has been misused, nor that the defendant’s name has been concealed, but it must be shown that, by association, the word “official,” in combination with the words “American League,” had come to mean to the public the plaintiff’s baseballs alone, and that defendant is vending baseballs under that designation so as to give the public the false impression that they are the balls — 426 — made familiar and popular by plaintiff as the “Official American League” ball. If it be shown that plaintiff’s ball had acquired a meritorious reputation as the “Official American League” baseball, before defendant com-' menced to use the phrase, that reputation is considered part of the good will of the business of the plaintiff, a property right, which it is entitled to have protected. But plaintiff must make that showing; it must prove that its baseballs had acquired a reputation with the public as the “Official American League” baseballs, or else it has not shown itself to have any property right to be protected and is not entitled to relief. How well has plaintiff met its obligation in that respect? The case was tried upon an agreed statement of facts. It stated that “for some time prior to the institution of this suit, and now, the plaintiff’s baseball and the defendant’s baseball have been sold extensively in various parts of the United States in the same territory.” After describing plaintiff’s ball, the statement says, “The A. J. Reach Company has spent considerable sums of money in advertising the ball above described, and has sold the ball extensively through out the United States.” After describing the defendant’s ball, the statement says, “The Bimmons Hardware Company has spent considerable sums of money in advertising the ball above described, and has sold the same extensively throughout the United States.” This is the only language tending to show that the public has come to know the plaintiff’s ball as the “Official American League” baseball. But it makes exactly the same showing as to the defendant’s hall. It is not stated that the words have become associated in the public mind with either ball, and the inference, if any, to be derived from the language, shows the words to have been used as much and as long in connection with defendant’s ball as with that of the plaintiff. Clearly it was not shown in this case that the words in dispute had acquired any secondary signification, by association, as applied to the plaintiff’s baseball alone — 427 — and, therefore, defendant’s nse of them could not tend to palm off its goods as the goods of the plaintiff. And we are impressed that plaintiff did not try its suit upon that theory. It is very evident that plaintiff relied upon its contract with the “American League” to entitle it to the relief sought. Briefly, the plaintiff’s case is reduced to this: That the plaintiff’s ball has not (so far as shown by the evidence) acquired any reputation as the “Official American League” baseball and therefore those words are not part of the good will of its business and there is no such good will to be protected, but plaintiff alone manufactures and vends the ball which has been adopted as “official” by the “American League”, and defendant is telling a falsehood and committing a fraud upon the public when it uses the words in dispute upon its balls: The only question presented for our consideration, then, is, can the plaintiff, merely because it is the only one who can truthfully say that its baseballs have been adopted as “official” by the “American League”, restrain the defendant from falsely claiming the samé honor for its baseballs! . We feel constrained to conclude that it cannot. In cases involving the law of unfair competition the private right of action “is not based upon fraud or imposition upon the public, but is maintained solely for the protection of the property rights of complainant.” [American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. Rep. 281; Shelley v. Sperry, 121 Mo. App. 429, 99 S. W. 488.] And, in a case like this, as we have already indicated, such property right of plaintiff must consist in the good will or reputation acquired by the association of the words sought to be appropriated with the goods of the plaintiff. Plaintiff could not acquire the exclusive right to use the disputed words by contract with the “American League” nor by ■becoming the only one who could truthfully use the words. Such contract and acquired status has no hearing on this controversy. The plaintiff must stand or fall upon the question whether it has shown that the words — 428 — in dispute have acquired a secondary signification in connection with its baseball, and as we have seen it has failed to make that showing. We wish to qualify our remark that the contract has no bearing on this controversy to this extent; If on a retrial the circuit court should conclude that the plaintiff is entitled to injunctive relief under the rule here enunciated it will limit the period of restraint to the period of plaintiff’s right to have its ball exclusively used by the “American League,” for beyond that period the plaintiff may be guilty of fraud and deceit in designating its ball as the “Official American League”, baseball, and it will not be aided in that respect by the court. [Grocers Journal Co. v. Midland Publishing Co., 127 Mo. App. 356, 369, 105 S. W. 310.] The decree of the circuit court, excepting only that part which denies the prayer for relief set out in defendant’s answer, is reversed, and in order that the plaintiff may have opportunity to amend its pleading and offer proof as indicated in this opinion, if the facts justify, and it is so advised, the cause is remanded for retrial. Reynolds P. J., and Nortoni, J.¡ concur.