175 F. 978 | S.D.N.Y. | 1910
The complainant firm, doing business as Spiegel & Prehs, claims to be the owner of the trade-mark “Princess” as used in connection with ladies’ shirt waists, and that defendants Louis Zuckerman, Morris Kantrowitz, and Nathan Benowitz, or firm, infringe same, in that they are doing business under the firm name and style of “The Princess Shirt Waist Manufacturing Company,” and thereby, in effect, representing themselves as the makers of the Princess shirt waist for ladies. The complainant firm contends that in 1899 the name “Princess,” as applied to shirt waists, was first chosen and appropriated as a trade-mark by their predecessors in title.
The bill' of complaint alleges that heretofore and on or about January 1, 1901, Harry Kottler and Lipawsky were, as copartners, doing
The written assignment of this alleged trade-mark bears date or was acknowledged February 8, 190C, and runs from H. Kottler & Co. by Harry Kottler to the firm of Spiegel & Prehs and purports to bargain, sell, and convey “All our right, interest and property right we now have in and unto a certain trade-mark, or trade-name, known as and consisting of the inscription ‘The Princess/ and which trade-mark as aforesaid has been filed, or sent to the collectors of the customs at certain ports.” No reference is made to any prior oral assignment or agreement to assign, or to any business or to the good will of any business. It is claimed, however, that there was a prior oral assignment of the trade-mark and business and good will altogether.
Defenses and Prior Use.
The defendant insists that the evidence shows the complainants and their predecessors were not the first to adopt and use the word “Princess” as a trade-mark, and that, in the absence of fraud or purpose to imitate the dress or style of complainants’ goods or packages, or even knowledg'e of complainants’ use of the word, it had and has the right to adopt the firm name or business name “The Princess Shirt Waist Manufacturing Company.” On the 10th day of August, 1905, the defendants entered into a copartnership in the business of manufacturing and selling ladies’ shirt waists under the above name, and under that name they have since carried on that business. They had' no knowledge that the complainants had or purported to have a trademark “Princess,” or that they were making or selling a shirt waist known as “Princess” or “The Princess.” They do not attach, and never have attached, that name, or the firm name, to any of their goods. The defendants label their boxes containing their goods “Ladies’ Shirt Waists.” In shipping goods it is necessary, in order to comply with the requirements of the carriers, to put on the boxes containing them the names of the consignor and consignee, and hence they have a label for shipping purposes only reading, “Don’t Crush. To -. From Princess Shirt Waist Manufacturing Company, 38-44 West 21 Street, New York.” This label is not used in sending goods by messenger or when doing up goods for a purchaser who takes •them aw ay himself. They do not do a retail business. There is no evidence that the defendant firm is known as the manufacturer of any particular brand of shirt waists or of the “Princess” shirt waist. They have never received an order for “Princess,” shirt waists, nor have they ever billed any as such. The defendants do not and never have used the word “Princess” to designate their goods, or as an advertising medium in any way, directly or indirectly. There is an utter absence of any element of unfair competition in trade. It is apparent, of course, that persons acquainted with the shirt waists made by the complainant firm and desiring same, and ignorant of the name of the firm making them, might assume they were made by “The Princess Shirt Waist Manufacturing Company,” and send an order to that company. A person so ignorant of the true origin of the shirt waists marked or labeled “The Princess” might send correspondence to the
I do not think there is any substantial or trustworthy evidence in this case that the complainants or their predecessors in title adopted this word as a trade-mark or to designate the origin of their shirt waists prior to 1901 or 1902. There is no satisfactory reason given for their adoption and use of that particular word. The defendants prove to my satisfaction that in 1900 one Edward Bleicher and another filed a certificate in the clerk’s office of the county of New York under the name of “The Princess Shirt Waist Manufacturing Company.” That firm went out of business in 1901. In October, 1900, there was a corporation doing business at 355 Wabash Avenue, Chicago, Ill., under the name “Princess Waist Company,” incorporated under the laws of the state of Illinois. It was then engaged exclusively in the manufacture of silk waists. It sold its waists from Maine to California. The corporation used the word “Princess” as a trade-mark to designate its waists and that name was on a woven label attached to each and every waist made or sold by it. They were sold as “Princess Waists.” The billheads used by the corporation showed they were “Princess Waists,” and the stationery used by it showed that it dealt in “Princess Waists.” Some of the labels were produced, defendants’ exhibit label, “Princess,” and were on cloth with the words “The Princess” in red letters. The label “Princess Waists’’ was also pasted on the boxes containing such waists.
December 1, 1902, Eeon Swawite, who was a stockholder in and vice president of Princess Waist Company, went into business for himself, and up to that lime certainly the business mentioned was continued as described. Tlie Princess Waist Company, under that name came into existence March ?, 1900, the name being changed by law from Teasdale Waist & Suit Company. February 9, 1901, the “Princess Waist & Suit Company” was incorporated under the laws of the state of Illinois. Its business was the same as that of the Princess Waist Company. January 8, 190(5, Swawite and F. K. Fisher bought out this last-named corporation and all its assets were turned over to him including the labels “The Princess” before mentioned, and they have continued the use of such labels and name as a trade-mark. In January, 1899, Riegel, Wilson & Finley, a copartnership, commenced business in Philadelphia, Pa., in manufacturing and selling ladies’ shirt waists. In November of the same year Mr. Riegel withdrew, and the other members continued the business as Wilson, Finley & Co. until July, 1901, when the Wilson Manufacturing Co. succeeded to the business. In 3 899, Riegel, Wilson & Finley adopted a trade-mark for the purpose of designating the mark and ownership of their shirt waists, viz., “Princess.” They adopted it as a brand, the
Gussie Eisen, called by complainants in rebuttal and sworn in September, 1909, claims that she came to this country from Austria, Galicia, about 10 years ago and worked for Kottler Bros., who, she says, had a shirt waist and a rag business. She cannot remember the year or time of year, but says they used the word “Princess” on boxes for shirt waists—may have on the waists too—but cannot remember. She says she was 14 or 15 years of age when she came to this country, “Something like that,” and cannot remember the name of the steamer she came over to this country on. She cannot tell what year she came to this country. After coming here she attended evening school some and learned to read and write English some. It appears that her attention was called to the use of this label 10 years ago by Mr. Kottler going to her and asking, not if she remembered their using a label and if so what, but if she “remember the place using the Princess label?” Assuming that in 1899 Kottler Bros, were using the word “Princess” on shirt waists, it is clear that others were also using it on shirt waists to indicate origin and ownership and there is no satisfactory evidence, not a fair preponderance of evidence, that Kottler Bros, were the first to adopt it. In view of.Kottler’s interest, the allegation of the complaint that H. Kottler & Co. were the first to adopt and use the word as a trade-mark, the affidavits and verified declaration referred to, and the very unsatisfactory testimony of the Eisen girl, I am unable
"Tho office of a trade-mark is to point out distinctively the origin or ownership of the article to which it is affixed; or, in other words, to give notice who was the producer. This may, in many cases, be done by a name, a mark, or a device well known, bur. not previously applied to the same article.”
This may be read to indicate that a word used by A. as a trade-mark for certain goods and then abandoned may not be subsequently adopted by another on the same class of goods. I do not see why A. may not adopt a word, sign, or symbol as a trade-mark to designate the origin and ownership of his goods even if it had been used by B. at a prior time for the same purpose as to the same kind of goods, provided B. lias absolutely abandoned it, and it had not gone into general use. But there are reasons to the contrary. Bulte v. Igleheart Bros., 137 Fed. 492, 70 C. C. A. 76; Columbia Mill Co. v. Alcorn, 150 U. S 460, 14 Sup. Ct. 151, 37 L. Ed. 1114; Corbin v. Gould, 133 U. S. 308, 10 Sup. Ct. 312, 33 L. Ed. 611; Pratt Mfg. Co. v. Astral R. Co. (C. C.) 27 Fed. 492. But if this is so it does not aid the complainants here. It is certain that others were using the word “Princess” as a trade-mark or a trade-name to designate origin and ownership and name of manufacturers of ladies shirt waists at the time complainants and their predecessors in title adopted it. In fact, taking all the evidence together. 1 think the word “Princess,” and the words “The Princess” and “Princess Brand,” as applied to ladies’ shirt waists were quite generally in use by more than one firm of makers and sellers as early as 1899, and that it was “picked up” from the trade by the com
On this evidence it is just as probable that the mind of the general public associated the name “Princess” or the words “The Princess” or “Princess Brand” with shirt waists made in Chicago as with those made in New York. “The trade-mark must therefore be distinctive in its original signification pointing to the origin of the article, or it must have become such by association.” D. & H. Canal Co. v. Clark, 13 Wall. 311, 20 L. Ed. 581; Columbia Mill Co. v. Alcorn, 150 U. S. 460, 14 Sup. Ct. 151, 37 L. Ed. 1144. “It is sufficient that by association with such articles in trade it has acquired with the public an understood reference to such origin,” etc. Dennison Mfg. Co. v. Thomas Mfg. Co. (C. C.) 94 Fed. 651; Stachelberg v. Ponce (C. C.) 23 Fed. 430. It is somewhat significant that the written assignment of this alleged trade-mark running from IT. Kottler & Co. to Spiegel & Prehs was not executed until February 8, 1906, when the agreement to assign was made in 1902 or 1903. ITarry Kottler also testifies that H. Kottler & Co. did not dissolve until the latter part of June, 1906. The firm of Spiegel & Prehs was formed in August, 1887, under that name, but it had existed since 1901 or 1902. Spiegel says that after IT. Kottler & Co. dissolved and was succeeded by Eipawsky, he (Eipawsky) continued to make shirt waists and ptit the label “Princess” on the boxes and sell them to him. This was in 1906 or 1907. The occasion of the oral agreement between H. Kottler & Co. and Spiegel that Spiegel should have the exclusive use of the word “Princess” was that confusion had arisen whether or not Kottler & Co. or Spiegel was the maker of the “Princess” shirt waists. It is clear that both were using it to designate their make, and that both continued to use it. In point of fact, that word as used by the two firms did not point to origin or ownership, but to the name of the waist simply, and so far as the general public knew or could know the waists bearing that name were made by either Eipawsky (or Lipaw) or by Spiegel's Company up to 1907. And when the oral agreement as to the use of the word was made in 1901 or 1902 no business was transferred. I do not think a trade-mark can be transferred in any such way. “A trade-mark is the sign of the good will or reputation of a business, and it is not an abstract property right apart from its use in that business.” It is assignable, of course, but only in connection with the business. Morgan v. Rogers (C. C.) 19 Fed. 596; Bulte v. Igleheart Bros., 137 Fed. 492, 498, 499, 70 C. C. A. 76; M. P. Co. v. D. C. Mfg. Co., 113 Fed. 468, 474, 51 C. C. A. 302; Kidd v. Johnson, 100 U. S. 617, 620, 25 L. Ed. 769; Hoxie v. Chaney, 143 Mass. 592, 10 N. E. 713, 58 Am. Rep. 149,
There will be a decree dismissing the bill, with costs.