Ball v. Bazaar

| N.Y. App. Div. | Oct 18, 1907

Gaynor, J.:

This is not a trade mark case, but a trade name cáse. A trade mark designates an article of commerce, and is affixed thereto. It is thus general or universal, accompanying the article, while a trade name applies to a business and is as a rule local (Paul on Trade Marks, § 177; Browne on Trade Marks [2d ed.], § 91). A trade mark may be infringed anywhere; but not so with a tradename. For instance, that A has a 'hotel called the Irving hotel or the Cosmopolitan hotel in a place, does not prevent others from having hotels of the same name in other places; he has an exclusive right to the name in his locality only. Though simple, this illustration is of general application.

The plaintiff is engaged in making and selling children’s clothes at 60 and 62 West 23rd street in the former city, of New York. The business was established there before the city of Brooklyn was made part of the new city of New York in 1897 as the borough of Brooklyn, and has always been local and advertised as local to that place. That ‘the goods there sold may go to distant places or all over the country does not make a different case; the place of business, the place where the goods are purchased, is there. The trade name and sign of the business is “Best & Co.— Liliputian Bazaar”, with the street and numbers and the name Ne'vy York added. The defendant is engaged,in the same, kind of business, at number 1185 Broadway, Brooklyn, H. Y., i. e., the borough of Brooklyn, under thé trade name and sign of “Broadway Bazaar — Brooklyn’s Best Liliputian Store -^1185 Broad way, Brooklyn.”

It is manifest that no.one could mistake either.place or business for the other. The two names are of localities so different that it would be" impossible. Each name carries-the mind to an entirely different and distinct locality. It will not be -disputed, I conceive, that the defendant could use its trade name'and sign, for abiisinessim, Syracuse or Chicago, or even use the - very name-Liliputian Bazaar there, without giving the plaintiff any right to complain. The name and business would be local to that place, just as Best & Co.’s name and business are local to a place. Ho one could .confound the one with the other. Each would be selling Liliputian clothes, ire., clothes for little folk,'in different places. Whether the word Liliputian, for being descriptive of the articles sold, could be the subject of a trade mark we do not need to consider, for that question is hot before Us,. hut only the question of the infringement of a tradeiname. How the-'name of Brooklyn .is as distinct from the . name New York as is-the name of Syracuse or-Chicago-. If Brooklyn were-still a separate city, no one could.think of -question.irig this-; but its identity has not been sunk, or even affected in the public mind, by its ceasing to be a city and becoming ,a borough. Brooklyn has as -distinct am identity throughout the country- -as it ever had. It- even retains its .post office and post office name of Brooklyn, the same as does the former city of Hew York its post ■ office and post office name. Ho one could "mistake “ Broadway Bazaar.— Brooklyn’s Best Liliputian Store — 1185 Broadway, Brooklyn,,” for “Best & Co.— Liliputian Bazaar.— 60-62 West 23i‘d Street, New York City,” It is quite-impossible.

. But the plaintiff lias nevertheless obtained-a judgment herein which forbids the defendant to use the -'words .best, Liliputian and bazaar “'in' connection with .each other”, the phrase Liliputian Bazaareither-alone or in-connection with‘the word ‘Best’ v, or the word Liliputian at all, in-its trade name or-sign. ■

It cannot be disputed that the defendant has the right to .use the adjective best. 7 It is equally indisputable that it has the right to Use .the'"common word bazaar. There are many stores and shops called bazaars. Ho one can exclusively appropriate either of these words. Hor could any one appropriate the exclusive right to call his bazaar the best bazaar or store. But it is said that the adjective best iii the phrase Brooklyn’s best Liliputian store, and following after the word bazaar in the name Broadway bazaar, would lead people to believe that it stood for the noun and proper name Best, and that therefore the impression conveyed would be that the store was Best & Co’s. This is "fanciful. - Ho one could get such a notion, from the defendant’s sign or name. As to the prohibition in the judgment of the use of the phrase “Liliputian Bazaar”; the defendant does not use it, and there was therefore no issue of its use in the case.

The learned counsel have not been able to find decisions in point, hnt only because the plaintiff’s case is unprecedented. Most of the trade mark decisions cited are wholly inapplicable. The power of the courts in cases like this could easily be abused by being used in extreme or fanciful cases. It .has to be restricted to cases of actual wrong and injury, neither of .which exists in this case. There is no fraud in.the case. Moreover, the motive with which one does that which he has the right to do is of no consequence.

The judgment should be reversed.

Woodward, Jenks and Rich, JJ., concurred; Hooker, J., dissented. •

Judgment reversed and" new trial granted, costs to abide the final • award of costs;