188 F. 731 | U.S. Circuit Court for the District of Northern New York | 1911
The parties are both residents and citizens of the state of New York. The complainant has a valid registered trade-mark, “Trojan,” duly registered after 10 years’ appropriation and exclusive use. He applied it to an ice cream disher or spoon, dipper or-ladle, for accurately measuring the amount of ice cream taken up thereby and so constructed as to remove the contents into another receptacle without adhering to the disher or spoon. It was also so constructed as to be easily and thoroughly cleansed. This spoon or ladle is of simple construction and has a distinctive and an attractive appearance. It was called and known as the “Gem.” It was well known in the trade and known as of the complainant's make independent of the trade-mark, “Trojan,” used or placed thereon, but especially when that name was found thereon. The complainant used this name “Trojan” on other goods of the same class made and sold by him.
Prior to the commencement of this action, the defendant, or the company who manufactures, the defendant being a dealer only, it is said, commenced manufacturing and selling an ice cream dipper, spoon, disher, or ladle, used for the same purpose, and which, as to the bowl and some of its parts, resembled the spoon of the complainant. This had: “Clipper Disher, Pat. Feb. 7, 05. Geer Mfg. Co., Troy, N. Y.” — on the handle. A later one, more nearly resembling complainant’s spoon or disher, had on the handle: “New Clip Disher, Pat. Pend. H. S- Geer Co., Troy, N. Y.” Eater, and before the commencement of this suit, the defendant put out another dipper or ladle approaching véry much nearer to the general form, construction, and appearance of the complainant’s spoon or disher, and on the handle of this defendant put the words, “Trojan Disher,” and on the reversé side, “H. S. Geer Co., Troy, N. Y.” Eater defendant put on the market an almost exact duplicate of the complainant’s spoon or disher with the same marks, and later one that merely omitted the complainant’s trade-mark on the dipper or ladle itself, but which when offered for sale and sold had on the box containing it the words: “Trojan Ice Cream Disher. Cup Shape. H. S.- Geer Co., Troy, N. Y.” And also, “Directions for cleaning Trojan Spoons.”
The defendant was clearly infringing the complainant’s trade-mark
The injunction order contains a clause which enjoins the defendant from making or selling or offering for sale any dipper, spoon, or ladle made in such close imitation of the complainant’s dipper, spoon, or ladle as to deceive the public or cause the one to be taken or purchased as the other, etc.; in short, it enjoins the defendant from committing acts in the future in reference to this article which amount to unfair competition in trade with respect thereto, but which acts will not infringe the complainant’s trade-mark inasmuch as what defendant proposes to do and desires to do will not use the word “Trojan” in any way. The dipper or spoon defendant desires to make is called “New Troy Cup Disher,” instead of “Trojan.”
Is the injunction broader and more comprehensive than the facts justify, the power and jurisdiction of this court in the premises considered? As the parties are all citizens of the state of New York, this court has no jurisdiction of an action for unfair competition in trade pure and simple. It does have jurisdiction of an action between these parties for infringement of the trade-mark.
In the Globe-Wernicke Case, supra, the court, Burton, Day, and Severens, said:
“The bill was not founded on two separate matters or transactions.' Tbe conduct of the appellee complained of consisted of the same acts. The legal qualities of those acts were in some respects different, and the result was that the facts presented a double aspect. It is upon this consideration that such a bill can be sustained against an objection that it is multifarious.”
“That a corporation, and, through it, its officers, agents, and servants, had been enjoined from further infringing complainant’s trade-marks, and from conducting a business campaign of unfair competition, did not preclude com*735 plainant from, obtaining an injunction restraining certain of the officers in their individual capacity from performing such unwarranted acts.”
As a condition of modifying the injunction, the defendant offers to give a bond to pay all damages, etc., awarded against it in the action and to keep an account of its sales. There will be an order modifying the injunction so as to permit the defendant to make and sell its ice cream dippers, ladles, or spoons which do not bear the word '‘Gem” or “Trojan” in any form or combination on the article itself or on the package or packages containing it and which are not advertised as the Trojan spoon, dipper, or ladle, provided it executes and files a bond to complainant'in the sum of $5,000, conditioned to pay all costs and damages awarded against it in case the court finally holds that it has power in this action to enjoin the future making and sale of dippers or spoons of the character mentioned entirely disconnected from any infringement of the trade-mark “Trojan,” and also keeps an account of its sales to be rendered to this complainant if directed so to do.