Holeproof Hosiery Co. v. Wallach Bros.

167 F. 373 | U.S. Circuit Court for the District of Southern New York | 1908

HOUGH, District Judge.

The motion, as shown by the moving papers, is to obtain pendente lite an injunction “in manner and form as set forth in the bill of complaint.” An analysis of the prayer for relief in the bill, taken in conjunction with the answer and the body of the bill and the affidavits submitted on this motion, leads me to think that the relief demanded may be fairly stated under the following heads:

Complainant wishes to prevent defendant (1) from using in connection with hosiery the word “Holeproof,” or any like word; (2) from using in like connection the words “guarantee,” “guaranteed hose,” or “guaranteed hosiery,” or words similar thereto;. (3) from employing in like connection boxes, labels, guaranty tickets, bands, or devices identical with or deceptively similar to those referred to in the bill and produced on this hearing; and (4) from selling or offering for sale as guaranteed hosiery, or “Holeproof” hosiery, or otherwise as a product of the complainant any product not the complainant’s.

First. The first branch of the prayer for relief raises the question whether “Knotair” is a like word to “Holeproof,” or so similar thereto as to be likely to deceive the average purchaser of the product to which it is applied; i. e., hosiery for men and women of no very high grade. By this I mean hosiery which may reasonably expect purchasers from among persons in moderate circumstances. This is to be regarded as a question of trade-mark, and the point should not be obscured by simultaneously considering suggestions of unfair competition. Raying aside the question (not raised at bar) whether “Holeproof” is not a descriptive word, and one descriptive of qualities which no pair of wearable stockings can ever really possess, and whether the word “Knotair” is not open to the same criticism, the question is this: If there were absolutely no similarity in the dressing, advertising, wrapping, and method of selling these two brands of hosiery, except the use of the trade-mark “Holeproof” by one proprietor, and of the trade-mark^Knotair” by the other, could infringe-merit be declared? To me it is quite plain that there would be no infringement, and the matter is assuredly not so clear as to warrant the issuance of a preliminary injunction under this branch of the relief prayer.

Second. As interpreted in argument, the second item of relief prayed for means that defendant should be restrained from selling “Knotair” hose as guaranteed hose or guaranteed hosiery. Since it is admitted that as a business method the guaranteeing of hosiery or any other article of merchandise is open to the world, this line of argument suggests the query whether any development of the business of selling hosiery with a guaranty can so effectually appropriate to one manufacturer or merchant the right to call his product “guaranteed hosiery” as to prevent other persons from doing the same, provided they do nothing else objectionable. .But this inquiry need not be pursued, because in my opinion the complainant has not shown thai it has so completely appropriated and made its own the business of Milling guaranteed hose as to render the use of that phrase (without more) suggestive to the general public of their “Holeproof” product. Assuming the answer to the legal question to be in favor of complainant, the evidence is not strong enough to warrant this relief pendente lite.

Third and Fourth. In my opinion the evidence is overwhelming that in the packing, labeling, dressing, use of colors, and arrangement of type defendant has used and is using unfairly competitive methods. The weight of evidence is also in favor of complainant in asserting tba'. defendant, through its salesmen, has palmed off its goods upon customers as the goods of complainant.

The injunction as prayed for will issue, except that defendant will rot be enjoined from using the word “Knotair,” as applied to hosiery, provided such use he not accompanied by the deceptive competitive method^ above indicated, and excepting, also, that defendant will not be enjoined from advertising, naming, or describing “Knotair” hosiery as guaranteed hose or hose sold with a guaranty, provided that such expression of warranty be not contained, printed, set forth, or advertised in words, letters, or figures calculated to induce belief that defendant’s guaranteed “Knotair” hosiery is complainant’s guaranteed “Holeproof” hosiery.

The injunction order will be settled on a notice of four days.