America’s First Ice Cream Trademark Infringement Case … Was “FRENCH”

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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This weekend marks Bastille Day in France and also National Ice Cream Day in the United States, so it’s the perfect time to recount the very first ice cream-related trademark lawsuit in the U.S. (or at least the earliest one available to us): French Brothers Dairy v. Giacin.

The story began in 1842, when Thomas Joseph French of Sussex, England moved to Cincinnati, Ohio and founded the French Dairy Company, which reportedly was the first dairy in the United States – outside Manhattan – to set up a retail delivery system for milk. The business was eventually taken over by French’s sons and renamed French Brothers Dairy Company. In 1896, French Brothers started manufacturing and selling ice cream. By the first decade of the new century, French Brothers was a major player in the thriving Ohio ice cream trade.

During this period, Italian ice cream maker Giovanni Giacin emigrated to the United States, changed his name to “John,” and made his way to Cincinnati, where he worked at the Vienna Ice Cream Company, which happened to be a few blocks away from French Brothers’ flagship store. In 1906, Giacin decided to open up his own ice cream store, which he called the “The French Ice Cream Company.” French Brothers filed an unfair competition lawsuit and sought an injunction preventing Giacin from using the FRENCH mark in connection with any ice cream business.

Giacin’s defense was that he did not use the FRENCH mark to pilfer French Brothers’ good will. He argued that the name of his company was based on his manufacturing process, known as the “French pot” method, which involved placing the ice cream in an open vessel, rather than closed one. Giacin also claimed that he was making a product known as “French style” ice cream (which contains more eggs than the “American” or “Philadelphia” style). Giacin testified (through an Italian translator) that he got the idea for the name from his old boss:

So he told me I had the French pot and make French ice cream – we use the French pot, so that is how I came to call the name.

But Judge Frank M. Gorman of the Court of Common Pleas of Hamilton County didn’t find this story credible, in part because the same French pot method “was employed by every maker of ice cream in Cincinnati according to the evidence.” As to the “French style” argument, Judge Gorman found that this style of ice cream “is not known to the general consuming public,” and therefore he did not believe that Giacin’s selection of the name was intended as a mere commercial descriptor of the type of ice cream he was selling. Judge Gorman was also suspicious of Giacin’s decision not to use his own name or his own country of birth. He wrote:

As a rule, honest men are not ashamed to use their own names in connection with their business [so] it is but natural to suspect him of some sinister motive … Nor does the defendant have the excuse of being a Frenchman; and what reason an honorable Italian might have for designating his individual business as a French company is not explained by any evidence or theory evolved in the case.

According to Judge Gorman, the “inevitable conclusion was that defendant desired to create the false impression in the public mind” that the French Ice Cream Company was affiliated with French Brothers. The Court ordered Giacin to stop using the FRENCH mark within a 50-mile radius of Cincinnati, suggesting that:

The “Giacin Ice Cream Co.” doth sound as fair and trip as lightly on the tongue.

The First Circuit Court of Hamilton County agreed and affirmed. There was a dissent, which sadly is not available to us, although a contemporary account of the Court’s ruling, in the 1909 Ice Cream Trade Journal, may give us a clue as to the basis for the dissent. The journal editors were incensed by the Court’s finding that that the public did not recognize a style of ice cream known as “French,” which the editors insisted “was absurd and could be controverted easily.” In other words, the editors were effectively arguing that FRENCH was merely descriptive for ice cream.

The Ice Cream Trade Journal also answered another burning question not addressed by the Court’s written opinion: What about “French vanilla?” Apparently, the final form of the injunction did indeed contain an exception allowing Giacin to continue to sell that flavor, even in Cincinnati.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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