Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc.

CLOTHES, HYDE special tax PARK Inc. v. pay the HYDE failing wilfully time FASHIONS, Inc. PARK engaging paid and required to be at the same Docket 22342. liquor business wholesale special pay wilfully failing time Appeals United States Court by whole- paid by law to required tax Second Circuit. liquor dealers.” sale Argued Jan. anywhere no indication But there is April 29, Decided time was at any there record that proceedings administrative throughout uncertainty about alien was immigration agency fact that sentencing relying charging identifying Though the July on the stat- following warrants words did not set scilicet

utory crime elements of the all of

forth indictment on which

charged in the based, was July

sentencing identification accomplish sufficient did Clark, Judge, Circuit dissented. oc- the sentencing case (which itself the indictment curred always in evidence. lengthy) was was conspiracy to defraud charging After acts States, overt it set United conspiracy, each object of the effect to defraud tending act was an of which tax. States United

(3) There a further contention considering

reversal that the court erred in charged

crimes other than war those rants, clearly but the record shows deportation order was issued and

was sustained habeas de corpus solely appellant’s

nied account

two convictions and sentences of October and July respectively. appellant

is true that the here was convicted a number of crimes which he was

sentenced same date of October evidently the District Court was regard

well aware acted with due Fong

the decision of Court in Phelan,

Haw Tan v. 433. The 92 L.Ed. held 336 U.S. loc. cit. 68 S.Ct. loc. cit. 375 intent of was the de Congress to “persons “repeaters”, viz.

port who commit sentenced, and are

a crime then commit and are sentenced again”. category is in that judg denying his

ment for the writ corpus habeas is affirmed.

Affirmed.

22á disputes Ohio, findings questions; it Cincinnati, on factual Herron, A. Truman Evans, only drawn there legal conclusions Wood, Herron & appellant, parties Wolf, in direct com from. The are not Hays, Schwa Cincinnati, Ohio, and petition. predecessors in City, Plaintiff and New York its bacher, Epstein, Sklar & háve in the man engaged the business counsel. partic clothing, ufacture and sale of men’s ap- City, for Levine, New Oscar York suits, have ularly and since 1922 used pellee. Plain “Hyde Park” their labels. words on Judge, and SWAN, Chief Before has manufactured or sold wom tiff never Judges. FRANK, Circuit and CLARK imcorporat garments. en’s Defendant was exclusively in 1945and women’s éd deals SWAN, Judge. Chief in the trade as clothing, garment classified plaintiff from appeal an This is hjodels.” When Miss Sizes “Junior complaint dismissing on judgment its adopted corporate its name it defendant trial, charging in- merits, in a suit after plain knowledge had no of the existence registered trade-mark fringement of a predecessor tiff. It chose name which its jurisdiction competition. Federal unfair had which the New used in business and Mark Act on the Trade was based Secretary York of State informed pendent IS U.S.C.A. §§ plaintiff available.2 Both and defendant 1338(b) 28 U.S.C.A. jurisdiction under § nationally practical sell their garments competition, and unfair claim of as They all the states. with retailers deal ly citizenship, 28 diversity also public. sell to both who As applied trade-mark, regis- Plaintiff’s C.A. 1332. plaintiff defendant the trade-mark 163,111 under January 1923 as tered “Hyde geographical Park” not does February 20, showed the Act secondary connotation but has a connota with a combination “Hyde Park” in words style quality. connoting tion or Persons in- trial court found no The scene. golfing retailing engaged in the manufacture and trade-mark, and this of this fringement men’s words suits and coats associate the appellant.1 challenged by the finding is not “Hyde clothing Park” the men’s field plaintiff had also found The court plaintiff; engaged those common-law good suits retailing manufacture of women’s Park”, clothes “Hyde for men’s and coats the words the wom associate that this mark was by it and manufactured clothing en’s field with the defendant. The by the either infringed defendant not attempted palm defendant has off its not name, “Hyde corporate Park its use of product using Fashions, Inc.,” the words or not diverted cus on the advertising “Hyde Park” in tomers; plaintiff nor has the sustained garments it attaches to the manu- labels damage loss or the result similar The trial court fur- and sells. factures corporate ity in the names of the manu- that the defendant in ther held similarity has and defendant. Such caused ladies’ suits and and sale of its facture pur no “confusion” in plain- compete unfairly with not does coats chasing has not been misled into be and sale of men’s manufacture in its tiff lieving origin is the source or Only this conclusion as coats. suits plain of defendant’s merchandise. The the non-existence priced garments higher tiff’s appeal. by the attacked defendant’s, than this difference in findings adversely, made detailed of pr.ice The trial not affect does opinion (unreported). wrote good will. The defendant object more, to the court’s spent proportion gross brief, “Appellant jurisdic- appellant’s except states: 1. The in which the urging solely diversity.” predicated cause of action is not tion entirely registered mark and is on the qualify ignored. ig did itself do If content nored, until nothing in New State York before this court has then opinion. He anything Judge Leibell’s plaintiff; than has advertising sales, in circuit analyzed principal cases among highly considered product is atid its fields.4 involving competition in related buyers, be specialty store department and out, of point the interests As these cases style of patented quality and its its cause of who seeks a trade-mark the owner of merchandis advertising and its In skirt. he has goods which extend it cover as “Drum to its suits refers ing defendant possibility (1) used are two: never Skirt” suits. may defendant practices that ques- the first appellant urges that plaintiff in the reputation stain federal is whether determination tion for pos customers; (2) the minds of his controlling in cause a state law law or sibility time in future that some in which for unfair his business to extend wish solely on diver- jurisdiction rests federal al has which defendant into the market also claimed sity, although jurisdiction exploit. interests ready begun These reg- federally pendent action on a to an interests of weighed against the must be found court istered trade-mark which preserve good whatever defendant to said that infringed. It is valid but not selling goods acquired by will he has that should question “so controversial” adopted.5 he has and marks under name appellant’s view though in be decided “even dis Judge then demonstrated a Leibell turn on the not the result of case should plaintiff had facts cussion of the that decision,” prevail because it is entitled injunctive relief.6 any shown basis for au- regardless state federal or whether agree. in Ad Our We recent applied.3 Judge Clark is thorities are Penco, Inc., Cir., Corporation 2 miral v. Act of the Lanharn because F.2d a different situation 203 involves controls, majority of the law federal palm there the court found intentional law a decision as to which court thinks that ing off and actual confusion. unnecessary, applied since cases, Nor do the New if state York fed- of either applicable, lead to rather than federal be requires eral or state law affirmance. no different intentional conclusion when likely palming If exists and no actual or federal law off he assumed that According to applied, has been is to be need add confusion found.7 is no support applying law, 3. In that defendant does “I have concluded federal appellant Baking infringe v. cites Grocers Co. unfairly plaintiff. compete Sigler, with Cir., does not 6 132 F.2d Jewel by way Co., Inc., Kraus, Cir., harm come No ‘confusion’; has Tea F.2d 7 187 damage nor use defendant’s Johnson, Cir., 4. S. C. Johnson & Son v. corporate ‘Hyde Park’ name in its C. & S. Johnson Son no or on its there is women’s suits. Johnson, certiorari plaintiff. damage De- likelihood denied 338 U.S. S.Ct. L. nothing plain- taken fendant has Telephone Ed. Federal & Radio tiff; paid is defendant its Corporation v. Federal Television way acquiring good will of its own 180 F.2d 250. in the women’s field. Plaintiff has damages. Shoes, Inc., 5. Our recent decisions in ask Miles it does not stated proved Macy Co., Cir., H. v. R. Nor none. shown damage certiorari denied which could be the basis threat injunctive Spiga asking S.Ct. relief. The Pastificio Societa complaint accordingly Per Azioni De v. Martini Macaroni will dismissed 200 F.2d 325 are not the merits.” concerned fields; in related example, See, for Eastern Construction regarded any respect as in inconsistent Engineering Corp., Eastern Co. v. expounded with the doctrine in the John 397, 398, 159 N.E. N.Y. son and Federal cases. “Justification, any, injunction, if for the concluding paragraph finding corpo- 6. reads as fol- must rest adopt- lows : the defendant has rate name which CLARK, pronouncement tKe Judge “the latest Circuit (dissenting). subject” York New courts on Plaintiff-appellant has had misfor Time, Laboratory, Inc., Life Color tune —so it seems to me—to come before 198 Misc. 101 N.Y.S.2d panel of allergic to the doctrine judge There the trial that there had found historically associated with because us confusion, off, palming no no in- no judges1 nurture our most illustrious feriority in the defendant’s work competi of protecting trade names discredit if confusion tion which will confusion as to create existed, damage and no of goods source names. sold under injunc- Yet grant he felt constrained to assignment chance of calendar tion, saying “Upon facts, ap- would operated which has pear injunction issue, ought easily success, to brought competition’ judge but the law of 'unfair three most recent cases on to the us, this issue contrary.”8 before the unanimous deci relying in on this deci- But sion in each instance —two revers sion the evidently unaware ing panel. decisions below —of judgment had been reversed Shoes, Co., Macy Miles Inc. 2 v. R. H. & Appellate Division and its decision affirmed Cir., 602, 199 F.2d certiorari denied 345 Appeals.9 disposition the Court of This 909, 650; Spiga Pastificio appellate the case courts confirms Societa Per Azioni v. De Martini Macaroni our subject view that on this the state law Co., Cir., 2 325; Corp. 200 F.2d is not at odds with our own cases Penco, 2 Inc., v. Cir., 203 These F.2d 517. under either state or federal authorities present cases all the issue confusion affirmance judgment appeal source, my to but to mind no more even required. perhaps sharply less than this.2 Judgment many cited, affirmed. earlier ranging cases ed, state, 176, with the sanction of the is so 182 in sub n. similar to the name under which the stance the basis in Ad Penco, Inc., Cir., conducts miral its business that v. 2 203 F. public may confused, and that some 2d 517. persons may do business de- competition 2. The Miles case involved be- fendant ing the belief that are deal- shoes, tween retailers of ” extended * * * hosiery by ultimately successful de- Neva-Wet v. Never Wet P. fendant, where the trade-mark included a 755, 277 N.Y. N.E.2d 13 distinguishing growing tree, “ feature of * * * equity power But in addition to some combination court should not be exercised interfere “G-ro”; word further were several with freedom of conduct trade and other discovered uses of the word. only competition, competition Spiga Pastificio was a case of imposture.” restrain fraud between manufacturers of a food Judge indicates, Nathan’s 101 where the had not entered into pages 586-587, particular prod- N.Y.S.2d at lowed what he that he fol the manufacture of the country. all considered doc uct at in this The Admiral Triangle trine of Publications case involved v. Rohr between man- lich, sets, of radio and 167 F.2d 969. ufacturer television refrigerators, ranges, electric awith re- Inc., Time, Laboratory, Life v. Color tailer of electric vacuum cleaners and App.Div. 51, 107 N.Y.S.2d machines; sewing many and there were N.Y. affirmed 303 106 N.E.2d 56. uses other lines of the mark “Ad- 1. What is called “federal” rule miral.” The first two were reversals cf “popularly below; known as the doctrine” Hand decisions hence the Admiral and sion stresses the original impulse findings from case were there Second direct Circuit, Lunsford, Infringe competition; Trade Mark intentional the deci- accepts findings, ment and Confusion of Source: Need these but also Action, principles Court broad 35 Va.L.Rev. of the Lan- my is discussed in dissent in ham Act. Johnson, Cir., & Son S. O. Johnson v. deny clear-cut obscure and even in Aunt view disclosed from settled Cir., schism. Rigney & Mills Co. v. Jemima L.R.A.1918C, certiorari F. Actually plaintiff’s has been so counsel 222, 62 L.Ed. 672, 38 S.Ct. denied 245 U.S. acutely that he aware of these confusions Landers, Uni Frary Clark v. concessions damaging has made some Corp., 2 versal Cooler which, compelled by seemingly however questioned, through holding, situation, tactical never the immediate concurrence, true, Standard it is proper long-run theless are inimical Smidler, Cir., Brands F.2d important branch clarification of this striking in such majority ap law. I refer to his withdrawal Lor cases Touraine Coffee Co. as La attempt peal immediate save 115, cer Co., Cir., F.2d raine Coffee ac registered client’s marks and his 771, 67 S.Ct. tiorari denied controlling ceptance law as on the of state Triangle Publications 91 L.Ed. competition. frankly As True, Rohrlich, states, in each he does it instance obtain reflecting the cases recent other protection more the benefit of the inclusive which apparently developing wave precedents. thought to be found in the state adequately represents herewith strategy that result shows particularly by cases illustrated two failed, should, I no matter as believe Corp. Telephone & Radio cites: Federal sympathize may how much I Corp., Cir., 180 F. Federal Television For, all, of after purpose his endeavor. in re theme, necessarily (in if not 2d problem nationwide business concerns Johnson, Son& sult), and S. C. any attempt industry; untwine Johnson (where I stressed 175 F.2d 176 inextricably intermeshed elements of falsify holding in effect of the dissent the infringement and unfair com trade-mark wrongdoing, of finding ing our earlier case out petition is to transfer of refusing by any realistic practicalities and into of business realm is relief). view on such Differences of already legal have dialectics. We and, while unnatural sues seem to me not purpose of the announced given effect to inconvenient, apology. think we need no I law the Congress to establish national existence recognize ourselves as Act far concerns the issue of Lanham so just as are do divergence, others of such 1114(1). 15 U.S.C. S infringement, § Infringe Mark Lunsford, Trade ing, g., e. Johnson, supra, Son v. C. Johnson Need ment and Confusion of Source: 178; page Admiral v. Pen at Action, 35 Supreme Court Va.L.Rev. co, Inc., supra. think I we should do the Monopoly Pattishall, Trade Marks competition, same Phobia, and as Mich.L.Rev. Root 1125(a). See Beer Dad’s U.S.C. § by its careful opinion below demonstrates Beverages, 2 v. Doc’s Co. precedents. This selectivity in choice of Penco, su development could natural controversy par In between pra. these adopted practice if we ameliorated infringement the issue of ties special oc urged sitting en banc on have obviously involved with re to me seems casions, 46(c), though obvious 28 U.S.C. only that one of spect not really controlled ly it cannot until referred marks registered con decides to exercise its Court opinion, also to majority power premises.3 in these Since Hyde stitutional Park name alone —which postpone day appears and to expired tend re it will though counsel, and similar one after the confusion of I think a new placed increase confuse regrettable that the tends to below.4 I trial already registration of June adverted to the Plaintiff’s The Court “Hyde expired problem. Park” alone v. Bulova Steele Watch the words according brief, 6, 7, 73 S. nn. registration a similar “An Ct. sep- gratefully. on the whole rather Act up trying to store future trouble years was under for several postpone full decision here. consideration arate issues or al- Congresses. to me several We have single question here seems For the ready quoted de- simply Does the relied—in the to come down to this: Johnson case, supra confusingly the final statement of its name fendant’s use of the —on Report purpose purchasers in the of the Senate Com- as to source mislead Patents, 1333, May mittee on ? Sess., Cong.Serv., Cong., will U.S.Code 79th 2d of the case This counterstatement pp. to establish national why the enactment show I think in the also field. I think we should Lanham défiüite solution Act affords the far, take problem. under- statement of “Basic Pur- So heed poses” particular particularly the one it men- myself, stand I did not feel any- first, protect public if tions “to premises; originally bias that, product purchasing be confident equal for the ex- thing, repugnance I felt particular bearing for the trade-mark which it cesses of American advertising favorably knows, get it will attempts ride” a business at a “free 6 I get.” other which asks for and wants to In built others. particularly stress vital words, a dec- because the was one where the situation interest, perhaps consumer the most dura- by the constitu- policy laration case, responsibility significantly ble of body having tional the back- overlooked in the statement of interests And since should be welcome. protected adopted by my approvingly included be ground congressional brethren development from the Federal Television of the “federal” women, circuits,5 very important case.7 think but in this and other rule when being buy ad- led to the somewhat lower of the most in one careful formulation priced defendant, be restatements, goods of should not 3 Restate- all the mired of they also led ment, Torts, notably getting to Division §§ plaintiff’s long backed estab- that we (1938), and still feel felt 715-740 industry. lished congressional garment mandates accept purpose underlying any pending “The trade- at -the date of the trial pro- mark statute is twofold. One to the Patent Office has since been issued that, public Registration this tect so it be confident Were 558494.” purchasing product bearing par- reversed, in seem that would case to be favorably “sup pleaded ticular knows, trade-mark which it in a could be matters these plemental” 15(d). get pleading. it will which it The F.R. name, get. Secondly, using registration asks for and wants to for other golfing the owner of a trade-mark has with a where in connection suits men’s present- spent energy, time, money infringed in as much would seem scene ing public product, pro- growing to the with a tree “Gro” as the my in 2 su his investment its mis- to in note tected referred Miles case by pirates registration appropriation pra. and cheats. Here as to either necessary is the well-established rule of show the defend This to would protecting injury in interstate both the and the trade- ant’s commerce; succinctly follow from mark owner. stated that would but presented Justice Frankfurter in as to the defendant’s Mr. Mishawaka facts Company necessary to ad v. S. resort Rubber Kresge Woolen S. use without Company grounds in Root [316 Dad’s diseussed ditional 1381], May Beverages, decided on L.Ed. Doc’s Beer v.Co. ; Sterling Brew see also 1942: 79-83 “ protection Spring Brewing ing, ‘The trade-marks is the Cold Inc. v. recognition F.Supp. psychological D.C.Mass., with note law’s symbols.’ 1075. function of of Pa.L.Rev. U. thereon pro- “Your committee believes giv- my supra and references note 1 5. See accomplishes posed bill these two broad the cases there cited. inen principles.” Cong.Serv., basic U.S.Code Cong., Sess., 1946, p. 2d 1274. 79th quotation is as follows: full The following Legis- Purposes note In. text of Trade-Mark “Basic supra. lation all away products, easily do too, could significance, is not without possibility protection established head to meet thought Committee Senate instance, reputation. I should For monopoly relied on specter of on that authority to sell this decision take the cases— in some defeat trade-marks syn popular increasingly new here; consid- though sport wear alia, thetic materials for summer section, citing, inter erable manu older under the name of Pitney, under the Holmes of Justice But Rosen suits. see Monopoly facturers of woolen Defeat rubric, “Trade-Marks Elliott, Cir., berg Co. v. Cong. Bros. & Competition.” IJ.S.Code Stimulating Rubber Blek Co. v. Mishawaka supra pages Serv., at Mfg. App.D.C. F. Woolen out, pointed re most have often As we Long’s Hat Long’s Stores 2d yvith appropriate case cently the Admiral Clothes, App.Div. 231 N.Y.S. 107. authorities, the likeli the test is citation of spe confusion, number of not the hood statutory test majority’s view the mistake which customer cific instances of encourage element of seems me approach the piled up. When we wholly ir- partiality this field based on an standpoint I submit the case from namely, consideration, the trier’s relevant For here really be in doubt. swer apparent response to the fairness or un- competitors one with we have the two —the acts of fairness of the a defendant consid- reputation, the other long established standpoint. fear ered from his own This I manufacturing selling breaking in— subjective a anything too reaction me way the one in what seems the same pitfall court. Under such a “the industry, referred concept comparatively easy it will be connection seems garment trade.” competitors most to shield themselves from than, g., e. razor blades and closer me much ignorance challenge ostentatious Co. v. Gor pens, L. E. Waterman fountain and its their ramifications un- refrigera don, Cir., appropriated successfully til an- machines, sewing tors and Meanwhile the other’s title. confusion precedents Penco, Inc., supra, or other customers and the destruction of another’s nine take the factors cited. If we therein impunity go long can on with so infringement bearing on tile competitor purity show of his protection with “limitation of reference purpose. Further he is aided sub- goods” carefully so formulated to kind of stantially favor; presumption in his Restatement, 731, I suggest Torts in 3 in a considerable degree if we believe everyone practically argues against competition, we must free consider his ef- space to I shall not take limitation here. praiseworthy unless carried ill-de- forts through seriatim, go them stress predatory fined avoid extremes. lights high as the likelihood wondering if the defendant as innocent goods one will be mistaken for widely generally what so other, the extent to which the those of the pictured known this record. through goods are marketed the same chan more, untrustworthy I think this too Even them, nels, between the relation function upon which make in- basis degree trade distinctiveness important volving business relations turn. name, length mark time of rejected it as late as We the other deprecate use, seizing rather etc. term cited in this above and we a kind small distinctions —of here. do the same occurring shopping quickly cus injunc- I think the entitled competition. justify this form of tomer —to tion. By making finer distinctions between ever

Case Details

Case Name: Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc.

Court Name: Court of Appeals for the Second Circuit

Date Published: Apr 29, 1953

Citation: 204 F.2d 223

Docket Number: 22342_1

Court Abbreviation: 2d Cir.