Los Angeles Creamery Co. v. J. R. Newberry Co.

The complaint of plaintiff alleged that in 1907 plaintiff purchased from H. A. Bingham Company (a corporation), the exclusive right to the use of the trade name “Santa Ana” as applied to the manufacture of butter, being words so used by said Bingham corporation and its predecessors for many years; that plaintiff adopted said words as a name under which to sell its butter in this state; that said words are printed upon the labels under which said butter is marketed; that plaintiff manufactures a superior grade of butter and the same has become favorably known and a large remunerative trade has resulted in consequence; that defendant is advertising and selling an inferior grade of butter and marketing the same under the brand “Santa Ana” butter, which name it prints upon the labels and advertises the same, thereby inducing the public to believe the same is plaintiff’s butter. That the city of Santa Ana is not a center of butter manufacture, or noted for its superior grade of butter. That defendant has thus entered into and continues unfair competition with plaintiff. The prayer of the complaint is for an injunctional order preventing defendant from selling or offering for sale as “Santa Ana” butter any butter other than that manufactured by plaintiff, or from doing any acts calculated to deceive the purchasing public as to the character of butter so sold, or interfering with plaintiff’s established business and property, and for damages. Defendant interposed a general demurrer to the complaint, and demurred specially upon

It sufficiently appears from the complaint that the words “Santa Ana” so employed refer to a city or locality of that name, and that the injunction is sought to restrain defendant from using the words “Santa Ana” as a name for butter marketed by it. Construing the complaint liberally, as by our code required, it, nevertheless, is susceptible of no construction other than an admission that Santa Ana is a city where butter in other than great quantities is produced, and it must follow that the words “Santa Ana butter” are descriptive of the place of manufacture, and, therefore, under section 991 of the Civil Code, cannot be exclusively appropriated as a trademark or name. A case is not presented by the complaint where one buys an established business with its goodwill and thereby acquires the rights of the vendor in a trade name, but, on the contrary, the plaintiff only claims to have purchased the right to the trade name, and alleges no facts tending to show that it is a successor in any sense of the business of the Bingham Company. Assuming that a name descriptive of the place where a thing is produced may be used as and become a trade name entitling the user to protection in the use thereof, and a right to use which would pass by a sale of the business and goodwill, as would seem to be the doctrine of Millbrae Co. v. Taylor, 4 Cal. Unrep. 714 , [ 25 L. R. A. 193 , 37 Pac. 235 ], still that case restricts the use to the time in which it correctly represents the place of production and only countenances a transfer of the descriptive word as being a part of the goodwill of the business purchased. We are of opinion that under the facts set forth in the complaint no right or property passed to plaintiff by the attempted purchase of a trade name as descriptive of a place where a thing is produced. In addition, the case sought to be made out by plaintiff in its complaint is clearly within the rule approved

James, J., and Shaw, J., concurred.