{ "id": 3336778, "name": "O'Cedar Corporation, Appellee, v. S. S. Kresge Company, Appellant", "name_abbreviation": "O'Cedar Corp. v. S. S. Kresge Co.", "decision_date": "1930-12-16", "docket_number": "Gen. No. 34,395", "first_page": "396", "last_page": "403", "citations": [ { "type": "official", "cite": "259 Ill. App. 396" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "293 Fed. 344", "category": "reporters:federal", "reporter": "F.", "case_ids": [ 11712603 ], "pin_cites": [ { "page": "351" } ], "opinion_index": 0, "case_paths": [ "/f/293/0344-01" ] }, { "cite": "313 Ill. 106", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 2435048 ], "pin_cites": [ { "page": "112" } ], "opinion_index": 0, "case_paths": [ "/ill/313/0106-01" ] }, { "cite": "107 Ill. App. 654", "category": "reporters:state", "reporter": "Ill. App.", "case_ids": [ 2572793 ], "pin_cites": [ { "page": "658" } ], "opinion_index": 0, "case_paths": [ "/ill-app/107/0654-01" ] }, { "cite": "66 Ill. App. 571", "category": "reporters:state", "reporter": "Ill. App.", "case_ids": [ 5189154 ], "pin_cites": [ { "page": "574-5" } ], "opinion_index": 0, "case_paths": [ "/ill-app/66/0571-01" ] }, { "cite": "224 Fed. 695", "category": "reporters:federal", "reporter": "F.", "case_ids": [ 6742387 ], "pin_cites": [ { "page": "696-7" } ], "opinion_index": 0, "case_paths": [ "/f/224/0695-01" ] }, { "cite": "297 Ill. 359", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 5040940 ], "pin_cites": [ { "page": "365" } ], "opinion_index": 0, "case_paths": [ "/ill/297/0359-01" ] }, { "cite": "142 N. Y. 467", "category": "reporters:state", "reporter": "N.Y.", "case_ids": [ 2260138 ], "pin_cites": [ { "page": "474" } ], "opinion_index": 0, "case_paths": [ "/ny/142/0467-01" ] }, { "cite": "235 Fed. 230", "category": "reporters:federal", "reporter": "F.", "case_ids": [ 4441 ], "pin_cites": [ { "page": "237" } ], "opinion_index": 0, "case_paths": [ "/f/235/0230-01" ] } ], "analysis": { "cardinality": 560, "char_count": 12054, "ocr_confidence": 0.522, "pagerank": { "raw": 5.8591662004228935e-08, "percentile": 0.36441738495178677 }, "sha256": "47665c87b791eeddb29146645998d2f35c93df697b84a4afad5a05287d8313d9", "simhash": "1:83b5bfff1a8e9257", "word_count": 2000 }, "last_updated": "2023-07-14T14:37:37.096016+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "O\u2019Cedar Corporation, Appellee, v. S. S. Kresge Company, Appellant." ], "opinions": [ { "text": ". Mr. Justice Gridley\ndelivered the opinion of the court.\nOn February 7,1929, complainant filed its bill in the circuit court praying that defendant, its agents, etc., be temporarily and perpetually enjoined \u201cfrom ordering, buying, selling, manufacturing or producing any oils, mops or polishes in which the word \u2018Cedar\u2019 appears, or forms a component part,\u201d and \u201cfor such other and further relief as equity may require.\u201d Prior to October 5,1923, complainant\u2019s corporate name was \u201cChannell Chemical Co.,\u201d but on that date its name was changed under the Illinois statute to \u201c0\u2019Cedar Corporation.\u201d The basis of the bill is a written contract, dated April 1, 1919, between defendant as first party and complainant (as Channell .Chemical Co.) as second party. After the cause was put at issue by defendant\u2019s answer to the bill and complainant\u2019s replication, there was a hearing before the chancellor, resulting in the entry of a decree on April 11, 1930, in which the court found (1) that the parties had entered into the contract on April 1, 1919-; (2) that defendant at and prior to the time of the filing of the bill, in violation of the terms of the contract, \u201cwas ordering, buying and selling oils and polishes, in which the word \u2018Cedar\u2019 appears, other than those manufactured, produced and sold by complainant\u201d; (3) that the oils and polishes that defendant was selling were not a part of the stock that defendant had on hand on April 1, 1919; and (4) that complainant has no adequate remedy at law and that the equities of the cause are with it. And the court decreed that defendant, its officers, agents, etc., are \u201chereby perpetually enjoined and restrained from manufacturing, buying, ordering, selling or offering for sale any oils or polishes bearing labels or printed matter upon which the words, \u2018 Cedar, \u2019 \u2018Cedar Oil\u2019 or \u2018Oil of Cedar,\u2019 appear as the title, caption, trade-mark, trade-name, or name for such oils or polishes, unless the same shall have been manufactured, produced or sold by complainant, except when used in the body of the reading matter of any label indicating that cedar oil is one of the ingredients of the product\u201d; and that the costs herein be taxed against defendant, etc. From the decree defendant has appealed.\nIn the contract it is recited that first party (defendant) \u201cis selling and offering for sale certain oils and polishes, bearing the words \u2018Cedar Oil\u2019 and \u2018Cedar,\u2019 manufactured for it by various concerns,\u201d (naming them); that second party (complainant) \u201cis the owner of trade-marks \u2018Cedarine\u2019 and \u2018O-Cedar,\u2019 which trademarks and trade-names have acquired a secondary name of \u2018Cedar,\u2019 \u2018Cedar Oil\u2019 and \u2018Oil of Cedar\u2019 in the market among the retail and wholesale customers and jobbers\u201d; and that second party- \u201cis exclusively entitled to the use of the word \u2018Cedar\u2019 in the manufacture, production and sale of oils and polishes.\u201d It is then stated that \u201cin consideration of $1.00, in hand paid, the receipt whereof is hereby respectively acknowledged, and other good and valuable considerations, and particularly the covenants hereinafter set forth, the parties agree,\u201d in substance as follows:\n(1) First Party (defendant) \u201cwill no longer order, buy or sell any oils, mops or polishes in which the words \u2018Cedar,\u2019 \u2018O-Cedar\u2019 or \u2018Cedarine\u2019 appear or form a component part, nor will they manufacture, produce or sell for themselves, or anyone else, any oils, mops or polishes in which the word \u2018 Cedar, \u2019 \u2018 O-Cedar \u2019 or \u2018Cedarine\u2019 appear or form a component part, except those manufactured, produced and sold by said second party\u201d (complainant).\n(2) First party (defendant) shall have the right to sell any mops or polishes, \u2018 \u2018bearing the word \u2018 Cedar, \u2019 \u2019 \u2019 which it may at the present time have on hand until the same are completely exhausted, but, upon the exhaustion of the stock on hand, it \u2018 \u2018 will no longer order, buy, manufacture, produce or sell for itself, its assigns or anyone else, any mops or polishes bearing the words \u2018Cedar,\u2019 \u2018Cedarine\u2019 or \u2018Oil of Cedar,\u2019 or where any of the above described words form a component part.\u201d\n(3) Second party (complainant), for itself and its assigns, does \u201crelease\u201d said first party \u201cfrom any and all manner of actions, or rights of actions in law or in equity, for the manufacture, production and sale of cedar oils, mops or polishes, bearing the words \u2018 Cedar,\u2019 from the beginning of the world to the date hereof,\u201d and said second party \u201cwill prosecute no action, either at law or in equity, against said first party for the above described.\u201d\nIn the bill it is alleged that complainant is an Illinois corporation and the owner of the duly registered trademarks \u201cO-Cedar\u201d and \u201cCedarine,\u201d that it is a manufacturer and vendor of oils, mops and polishes, and that it has been such since its incorporation in 1908; that defendant is a Michigan corporation and duly licensed to do business in Illinois; that on April 1, 1919, the parties entered into a certain, contract (here is set out in full the contract above mentioned); that, in violation of the covenants thereof, defendant \u201chas ordered, bought and sold oils, mops and polishes, in which the word \u2018 Cedar \u2019 appears or forms a component part, other than those manufactured, produced and sold by complainant\u201d-; that the oils and polishes now being sold by defendant, bearing the word \u201cCedar,\u201d are not of the stock which it had on hand on April 1, 1919, and which was long since exhausted; that defendant for about eight years observed and performed the terms of the contract, but is now buying and selling for itself, and is continuing so to do, in violation of said terms, oils and polishes bearing the word \u201cCedar\u201d or 1 \u2018 Oil of Cedar \u2019 \u2019; and that complainant has no adequate remedy at law, etc. The prayer of the bill is as first above mentioned.\nAfter defendant\u2019s demurrer to the bill had been overruled it filed an answer in which it denied that complainant is the owner of registered trade-marks \u201cO-Cedar\u201d and \u201cCedarine\u201d; admitted that it entered into the contract of April 1,1919, but denied its validity because '\u201cindefinite,\u201d \u201clacking in consideration,\u201d \u201clacking in mutuality\u201d and being \u201cagainst public policy\u201d; alleged that its execution was brought about by false representations of complainant\u2019s officers, that the word \u201cCedar\u201d is in general use throughout the United States in connection with oils, mops and polishes, and that said word is \u201cpurely descriptive.\u201d Defendant, however, admitted that it had bought and sold \u201ca small quantity\u201d of polishes, \u201cin the name of which the word \u2018Cedar\u2019 forms a component part, other than those polishes manufactured and sold by complainant and which were not a part of the stock which defendant had on hand on April 1, 1919.\u201d\nOn the hearing before the chancellor, complainant introduced evidence showing that when the bill was filed (February 7, 1929), complainant was, and had been for many years, the owner of the trade-marks \u201cO-Cedar\u201d and \u201cCedarine,\u201d used in connection with its business of manufacturing and selling oils, mops and polishes, and which trade-marks had been registered in the United States Patent Office; that said trade-marks and also the word \u201cCedar\u201d had acquired a secondary meaning as indicating to the trade and customers that oils and polishes bearing said marks or words on labels, etc., were complainant\u2019s goods; that complainant had spent much money in advertising and had built up for itself a large and lucrative business in the manufacture and sale of oils and polishes; that shortly prior to the filing of the bill defendant had violated the terms of its said contract with complainant,\" and especially the provisions of paragraph 1 thereof, and that, when its customers asked for \u201cO-Cedar\u201d or \u201cCedar\u201d polishes, it sold to them at a less price polishes, labeled \u201cCedar Oil Polish,\u201d manufactured by a concern other than complainant; that thereby, defendant had not only violated its said contract but was guilty of unfair trade competition as -to complainant and was \u201cpalming off\u201d said polishes manufactured by said other concern as the goods of complainant and thereby greatly injuring complainant.\nOne of defendant\u2019s counsel\u2019s contentions, urged as a ground for the reversal of the injunctional decree appealed from, is that the contract upon which it is based \u201cis void for want of consideration.\u201d And counsel argue in substance that complainant\u2019s release (as stated in paragraph 3 of the contract) of all rights of action against defendant, because of the latter\u2019s previous use of the descriptive word \u201cCedar\u201d on oils and polishes, is no consideration for the contract, or particularly for paragraph 1 thereof wherein defendant agreed that after April 1, 1919, it would not \u201corder, buy or sell any oils,-mops or polishes (except complainant\u2019s) in which the words \u2018 Cedar, \u2019 \u2018O-Cedar\u2019 or \u2018Cedarine\u2019 appear or form a component part,\u201d etc. We cannot agree with the contention or the argument. We do not regard any one of these three words as descriptive of the character or quality of complainant\u2019s oils or polishes. (Allen v. Walker & Gibson, 235 Fed. 230, 237; Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467, 474.) Moreover, even if the words could properly be considered as so descriptive, that fact would not justify the deceptive use by others of the words, or similar ones, in unfair trade competition where confusion in the minds of purchasers would result. In DeLong Hook & Eye Co. v. Hump Hairpin Mfg. Co., 297 Ill. 359, 365, it is said: \u201cWhere a manufacturer or merchant has used a mark, word or phrase in such a way that it has become identified with his business and the articles of his manufacture, another will not be permitted to use the same mark, word or phrase so as to lead purchasers to believe they are buying the goods of the former. This rule applies even though the word, name or phrase under which the reputation of the merchant or manufacturer has been acquired is . . . merely descriptive of the character or quality of the articles. . . . The question is one of common honesty, and the courts require the observance of such a standard as will protect the business,, the market- and the-reputation of a dealer against all acts which tend to deceive the public into Relieving that the goods of another are his goods and to pass them off as such. A merely descriptive term . . . may have become associated with a particular kind of goods or the product of a particular manufacturer in such a way that merely attaching the word to an article of the same kind would amount to a misrepresentation as to the origin of the article.\u201d (See, also, Standard Paint Co. v. Rubberoid Roofing Co., 224 Fed. 695, 696-7; Mossier v. Jacobs, 66 Ill. App. 571, 574-5; Job Printers Union v. Kinsley, 107 Ill. App. 654, 658; Nestor Johnson Mfg. Co. v. Alfred Johnson Skate Co., 313 Ill. 106, 112; LeBlume Import Co. v. Coty, 293 Fed. 344, 351.)\nWe have considered counsel\u2019s further contentions, (a) that paragraph 1 of the contract constitutes an unreasonable restraint of trade, (b) that the contract in its entirety is not enforceable in equity because it lacks mutuality and complainant has an adequate remedy at law, and (c) that the contract is too vague and indefinite to support the bill or the injunction granted, and are of the opinion that each and all of these contentions are without merit. And we think that under the provisions of the contract, the pleadings and the evidence, the in junctional decree appealed from was rightfully entered. Accordingly it will be and is affirmed.\nAffirmed.\nScant.am, P. J., and Barmes, J., concur.", "type": "majority", "author": ". Mr. Justice Gridley" } ], "attorneys": [ "Kirkland, Fleming, Green & Martin, for appellant; Weymouth Kirkland, Carl S. Lloyd, J. B. Martineau, Jr., and Arthur H. Stuart, of counsel.", "Lawler, Berry & McKerchar, for appellee; Joseph B. Lawler and G. Donald Whitehouse, of counsel." ], "corrections": "", "head_matter": "O\u2019Cedar Corporation, Appellee, v. S. S. Kresge Company, Appellant.\nGen. No. 34,395.\nHeard in the second division of this court for the first district at the June term, 1930.\nOpinion filed December 16, 1930.\nRehearing denied December 30, 1930.\nKirkland, Fleming, Green & Martin, for appellant; Weymouth Kirkland, Carl S. Lloyd, J. B. Martineau, Jr., and Arthur H. Stuart, of counsel.\nLawler, Berry & McKerchar, for appellee; Joseph B. Lawler and G. Donald Whitehouse, of counsel." }, "file_name": "0396-01", "first_page_order": 430, "last_page_order": 437 }