204 F.2d 223 | 2d Cir. | 1953
Lead Opinion
This is an appeal by the plaintiff from a judgment dismissing its complaint on the merits, after a trial, in a suit charging infringement of a registered trade-mark and unfair competition. Federal jurisdiction was based on the Trade Mark Act of 1946, IS U.S.C.A. §§ 1114, 1121, with pendent jurisdiction under 28 U.S.C.A. § 1338(b) as to the claim of unfair competition, and also on diversity of citizenship, 28 U.S. C.A. § 1332. Plaintiff’s trade-mark, registered January 2, 1923 as No. 163,111 under the Act of February 20, 1905, showed the words “Hyde Park” in combination with a golfing scene. The trial court found no infringement of this trade-mark, and this finding is not challenged by the appellant.
The trial court made detailed findings of fact and wrote an opinion (unreported). The appellant does not object to the court’s findings on factual questions; it disputes only the legal conclusions drawn therefrom. The parties are not in direct competition. Plaintiff and its predecessors in the business háve been engaged in the manufacture and sale of men’s clothing, particularly suits, and since 1922 have used the words “Hyde Park” on their labels. Plaintiff has never manufactured or sold women’s garments. Defendant was imcorporatéd in 1945 and deals exclusively in women’s clothing, classified in the garment trade as “Junior Miss Sizes and hjodels.” When defendant adopted its corporate name it had no knowledge of the existence of plaintiff. It chose a name which its predecessor had used in his business and which the New York Secretary of State informed it was available.
The appellant urges that the first question for determination is whether federal law or state law is controlling in a cause of action for unfair competition in which federal jurisdiction rests solely on diversity, although jurisdiction was also claimed as pendent to an action on a federally registered trade-mark which the court found valid but not infringed. It is said that the question is “so controversial” that it should be decided “even though in appellant’s view the result of the case should not turn on the decision,” because it is entitled to prevail regardless of whether federal or state authorities are applied.
If it he assumed that federal law is to be applied, there is no need to add anything to Judge Leibell’s opinion. He analyzed the principal cases in this circuit involving competition in related fields.
Nor do the New York cases, if state law rather than federal be applicable, lead to a different conclusion when no intentional palming off exists and no actual or likely confusion has been found.
Judgment affirmed.
. The appellant’s brief, states: “Appellant is not here urging the cause of action on the registered mark and is entirely content that it be ignored. If it is ignored, then this court has nothing before it except an action in which the jurisdiction is predicated solely on diversity.”
. The plaintiff did not qualify itself to do business in New York State until 1950.
. In support of applying federal law, the appellant cites Grocers Baking Co. v. Sigler, 6 Cir., 132 F.2d 498; and Jewel Tea Co., Inc., v. Kraus, 7 Cir., 187 F.2d 278.
. S. C. Johnson & Son v. Johnson, 2 Cir., 118 F.2d 427; S. C. Johnson & Son v. Johnson, 2 Cir., 175 F.2d 176, certiorari denied 338 U.S. 860, 70 S.Ct. 103, 94 L.Ed. 527; Federal Telephone & Radio Corporation v. Federal Television Corp., 2 Cir., 180 F.2d 250.
. Our recent decisions in Miles Shoes, Inc., v. R. H. Macy & Co., 2 Cir., 199 F.2d 602, certiorari denied 315 U.S. 909, 73 S.Ct. 650, and Pastificio Spiga Societa Per Azioni v. De Martini Macaroni Co., 2 Cir., 200 F.2d 325 are not concerned with goods in related fields; they cannot be regarded as in any respect inconsistent with the doctrine expounded in the Johnson and Federal cases.
. The concluding paragraph reads as follows :
“I have concluded that defendant does not infringe plaintiff’s trade-mark and does not unfairly compete with plaintiff. No harm has come to plaintiff by way of ‘confusion’; nor any damage to plaintiff’s reputation by defendant’s use of the words ‘Hyde Park’ in its corporate name or on its women’s suits. And there is no likelihood of any damage to plaintiff. Defendant has taken nothing from plaintiff; the fact is defendant has paid its own way in acquiring a good will of its own in the women’s field. Plaintiff has stated that it does not ask damages. It proved none. Nor has it shown any threat of damage which could be the basis for asking for injunctive relief. The complaint will accordingly be dismissed on the merits.”
. See, for example, Eastern Construction Co. v. Eastern Engineering Corp., 246 N.Y. 459, 402, 159 N.E. 397, 398,
“Justification, if any, for the injunction, must rest upon a finding that the corporate name which the defendant has adopt*226 ed, with the sanction of the state, is so similar to the name under which the plaintiff conducts its business that the public may be confused, and that some persons may do business with the defendant in the belief that they are dealing with the plaintiff. * * * ”
Neva-Wet Corp. v. Never Wet P. Corp., 277 N.Y. 163, 169, 13 N.E.2d 755, 758; “ * * * But the equity power of the court should not be exercised to interfere with freedom of conduct of trade and general business competition, but only to restrain fraud and imposture.”
. Judge Nathan’s opinion indicates, 101 N.Y.S.2d at pages 586-587, that he followed what he considered to be the doctrine of Triangle Publications v. Rohrlich, 2 Cir., 167 F.2d 969.
. Time, Inc., v. Life Color Laboratory, Inc., 279 App.Div. 51, 107 N.Y.S.2d 957, affirmed 303 N.Y. 965, 106 N.E.2d 56.
Dissenting Opinion
(dissenting).
Plaintiff-appellant has had the misfortune — so it seems to me — to come before a panel of this court allergic to the doctrine historically associated with us because of its nurture by our most illustrious judges
Actually plaintiff’s counsel has been so acutely aware of these confusions that he has made some damaging concessions which, however seemingly compelled by the immediate tactical situation, nevertheless are inimical to the proper long-run clarification of this important branch of the law. I refer to his withdrawal on appeal from any immediate attempt to save his client’s registered marks and his acceptance of state law as controlling on the issue of unfair competition. As he frankly states, he does it in each instance to obtain the benefit of the more inclusive protection thought to be found in the state precedents. The result shows that his strategy has failed, as I believe it should, no matter how much I may sympathize with the purpose of his endeavor. For, after all, this problem concerns nationwide business and industry; and any attempt to untwine the inextricably intermeshed elements of trade-mark infringement and unfair competition is to transfer the case out of the realm of business practicalities and into that of legal dialectics. We have already given effect to the announced purpose of Congress to establish a national law in the Lanham Act so far as concerns the issue of infringement, 15 U.S.C. § 1114(1). S C. Johnson & Son v. Johnson, supra, 175 F.2d at page 178; Admiral Corp. v. Penco, Inc., supra. I think we should do the same on the issue of unfair competition, 15 U.S.C. § 1125(a). See Dad’s Root Beer Co. v. Doc’s Beverages, 2 Cir., 193 F.2d 77, 80; Admiral Corp. v. Penco, Inc., supra. In the controversy between these parties the issue of trade-mark infringement seems to me obviously involved with respect not only to that one of plaintiff’s registered marks which is referred to in the majority opinion, but also to another for the name Hyde Park alone — which though expired appears to have been replaced by a new and similar one after the trial below.
This counterstatement of the case will show why I think the enactment of the Lanham Act affords the défiüite solution of our problem. So far, as I can understand myself, I did not feel any particular bias originally in the premises; if anything, I felt equal repugnance for the excesses of American advertising as for the attempts at a “free ride” upon a business reputation built up by others. In other words, the situation was one where a declaration of public policy by the constitutional body having that responsibility should be welcome. And since the background of congressional action included not only the development of the “federal” rule in this and other circuits,
As we have often pointed out, most recently in the Admiral case yvith appropriate citation of authorities, the test is the likelihood of confusion, not the number of specific instances of customer mistake which can be piled up. When we approach the case from this standpoint I submit the answer cannot really be in doubt. For here we have the two competitors — the one with long established reputation, the other breaking in — manufacturing and selling in the same way in what seems to me the one industry, referred to in the opinion as “the garment trade.” The connection seems to me much closer than, e. g., razor blades and fountain pens, L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272, 273, or refrigerators and sewing machines, Admiral Corp. v. Penco, Inc., supra, or other precedents therein cited. If we take the nine factors bearing on tile issue of infringement and the “limitation of protection with reference to kind of goods” so carefully formulated in 3 Restatement, Torts § 731, I suggest that practically everyone argues against limitation here. I shall not take space to go through them seriatim, but might stress such high lights as the general likelihood that the goods of one will be mistaken for those of the other, the extent to which the goods are marketed through the same channels, the relation in function between them, the degree of distinctiveness of the trademark or trade name, the length of time of use, etc. I rather deprecate the seizing on small distinctions in the goods — of a kind not quickly occurring to a shopping customer — to justify this form of competition. By making ever finer distinctions between products, we could easily do away with all possibility of protection to an established trade reputation. For instance, I should take this decision for authority to sell any of the new and increasingly popular synthetic materials for summer and sport wear under the name of any of the older manufacturers of woolen suits. But see Rosenberg Bros. & Co. v. Elliott, 3 Cir., 7 F.2d 962; Blek Co. v. Mishawaka Rubber & Woolen Mfg. Co., 57 App.D.C. 149, 18 F.2d 191; Long’s Hat Stores Corp. v. Long’s Clothes, 224 App.Div. 497, 231 N.Y.S. 107.
The majority’s view of the statutory test seems to me to encourage an element of partiality in this field based on a wholly irrelevant consideration, namely, the trier’s response to the apparent fairness or unfairness of the acts of a defendant considered from his own standpoint. This I fear is too subjective a reaction to be anything but a pitfall for the court. Under such a concept it will be comparatively easy for most competitors to shield themselves from any challenge by ostentatious ignorance of their own business and its ramifications until they have successfully appropriated another’s title. Meanwhile the confusion of customers and the destruction of another’s business can go on with impunity so long as the competitor can show a purity of his own purpose. Further he is aided by substantially a presumption in his favor; for if we believe in a considerable degree of free competition, we must consider his efforts praiseworthy unless carried to ill-defined predatory extremes. I cannot avoid wondering if the defendant is as innocent of what was so generally and so widely known as it is pictured in this record. Even more, I think this too untrustworthy a basis upon which to make decision involving important business relations turn. We have rejected it as late as the other decisions in this term cited above and we should do the same here.
I think the plaintiff entitled to an injunction.
. What is called the “federal” rule or is “popularly known as the Hand doctrine” from its original impulse in the Second Circuit, Lunsford, Trade Mark Infringement and Confusion of Source: Need for Supreme Court Action, 35 Va.L.Rev. 214, 217, is discussed in my dissent in S. O. Johnson & Son v. Johnson, 2 Cir., 175 F.2d 176, 182 n. 7; it is in substance the basis of our decision in Admiral Corp. v. Penco, Inc., 2 Cir., 203 F.2d 517.
. The Miles case involved competition between retailers of shoes, extended to hosiery by the ultimately successful defendant, where the trade-mark included a distinguishing feature of a growing tree, in addition to some combination of the word “G-ro”; further there were several other discovered uses of the word. Pastificio Spiga was a case of competition between manufacturers of a food product where the plaintiff had not entered into the manufacture of the particular product at all in this country. The Admiral case involved competition between a manufacturer of radio and television sets, refrigerators, electric ranges, with a retailer of electric vacuum cleaners and sewing machines; and there were many uses in other lines of the mark “Admiral.” The first two were reversals cf the decisions below; hence only in the Admiral case were there findings of direct and intentional competition; the decision accepts these findings, but also stresses the broad principles of the Lan-ham Act.
. The Court has already adverted to the general problem. Steele v. Bulova Watch Co., 344 U.S. 280, 283, nn. 6, 7, 73 S. Ct. 252.
. Plaintiff’s registration of June 12, 1923, of the words “Hyde Park” alone expired in 1948; according to plaintiff’s brief, “An application for a similar registration
. See my note 1 supra and references given in the cases there cited.
. The full quotation is as follows:
“Basic Purposes of Trade-Mark Legislation
“The purpose underlying any trademark statute is twofold. One is to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Secondly, where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. This is the well-established rule of law protecting both the public and the trademark owner. It is succinctly stated by Mr. Justice Frankfurter in Mishawaka Rubber and Woolen Company v. S. S. Kresge Company [316 U.S. 203, 62 S.Ct. 1022, 86 L.Ed. 1381], decided on May 4, 1942:
“ ‘The protection of trade-marks is the law’s recognition of the psychological function of symbols.’
“Your committee believes the proposed bill accomplishes these two broad basic principles.” U.S.Code Cong.Serv., 79th Cong., 2d Sess., 1946, p. 1274.
. In. text following note 4 of the opinion supra.