United Lace & Braid Mfg. Co. v. Barthels Mfg. Co.

221 F. 456 | E.D.N.Y | 1915

VEEDER, District Judge

(after stating the facts as above). This is a suit for infringement of an unregistered trade-mark and for unfair competition. In trade-mark and unfair competition cases alike we have to dowith the indicia of ownership, and the fundamental principle underlying both is that no person may pass off his goods as and for the goods of another and thereby work a fraud upon the public and upon his rival in trade.

[1-3] A trade-mark is a distinctive mark of authenticity through which the products of a particular manufacturer may be distinguished from others. It may be any symbol or form of words; but, since its office is to point out distinctively the origin or ownership of the articles to which it is affixed, it follows that no sign or form of words can be appropriated as a valid trade-mark which, from the nature of the fact conveyed by its primary meaning, others may employ with equal truth and with equal right for the same purpose. Hence words which are merely descriptive of the character or quality of the product cannot be exclusively appropriated as a trade-mark. Where, however, the trademark adopted is a word never in use before, and meaningless except as indicating by whom the goods in connection with which it is used were made, there can be no conceivable legitimate use of it by another person. His only object in employing it in connection with his goods must be to deceive. Ir. suck circumstances, therefore, mere proof that the trade-mark of one manufacturer has been thus appropriated by another suffices to bring the case within the rule of prohibition and entitles the person aggrieved to an injunction.

[4, 5] But there are other cases which fall equally within the general rule where the mere use of the particular mark which has been employed by another would not of itself necessarily indicate that the person so using it was thereby inducing purchasers to believe that the goods he was selling were the goods of another. Words forming part of the common stock of language may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by another, without explanation or qualification, would deceive a purchaser. A word may acquire in trade a secondary signification, differing from its primary meaning, and if it is used to persons in the trade who will understand it, and be known and intended to understand it, in its secondary sense, it will be none tlie less a falsehood, although in its primary sense it may be true. One who uses language which will convey to persons reading ,or hearing it a particular idea which is false, knowing and intending this to be the case, is not to be absolved from a charge of falsehood because in another sense, which will not be conveyed and is not intended to be conveyed, it is true. In such a case, however, mere proof of the use by another of such mark or word will not of itself entitle the complainant to relief, for this would be to give to the word full effect as a trade-mark while denying its validity as such. The complainant must prove, further, that the defendant used it under such circumstances or in such a manner as to pass off his goods as the goods of the complainant. Such circumstances must be made out as will show wrongful .intent in fact, or justify that inference from the inevitable consequences of the act complained of. When this is done, relief against unfair competition will be awarded by requiring the use of the mark by another to be confined to its primary sense by such limitations as will prevent misapprehension upon the question- of origin.

[6, 7] In this case the evidence shows beyond peradventure that the complainant was the originator of the term “Beaded” as applied to shoe, lace tips, and that it had used the term as a trade-mark continuously from its entrance into the trade in 1905. Such use was, moreover, exclusive until the defendant also- adopted it in 1912. It is equally clear that the defendant’s mark, however, spelled or hyphenated, is á mere colorable imitation of the mark known by the defendant to have been appropriated and continuously used by the complainant. The prefix “new” does not avoid infringement. Royal Baking Powder Co. v. Royal, 122 Fed. 337, 58 C. C. A. 499; Janney v. Pan-Coast Ventilator & Mfg. Co. (C. C.) 128 Fed. 121. Unless, therefore, the word is of such a nature that it is not capable of appropriation as a trade-mark, it follows that the complainant has established the right to its exclusive use. The defendant asserts that it is incapable of appropriation because it is merely descriptive of the article. This was also the view of the Patent Office upon the complainant’s application for registration. “Registration of the word ‘Beaded’ is refused,” said the examiner,, “as it describes the character or quality of the braid on which the mark is used.. It indicates that the ‘braid’ is ornamented, with beads.”

This' view seqms. to me to be; untenable. The term “beaded” is no* properly descriptive of the complainant’s tip, which does not really resemble a string of beads, and is so made for purposes of utility, not for ornament. It is properly described as corrugated or crimped. This is conclusively shown as a fact by the evidence. In the prior patent to Hall for a similar tip (No. 733,837, of 1903) it is thus described. 1't is so described throughout the specification of the defendant’s Wiberley patent, as well as in the complainant’s Richardson patent. Prior to its adoption by the complainant, nobody had ever described similar tips by this term. Moreover, the manner in which it has been used by the complainant shows that it is used as a trade-mark, not as a description. The defendant’s president admitted on the stand that he adopted “Nu-beaded” as a “catchy” name.

'The utmost that can be said is that the term “beaded,” as applied to these tips, is somewhat suggestive of their appearance. In other words, it is used figuratively. This, however, is not enough to take it out of the range of lawful appropriation as a trade-mark. Every good trade mark is suggestive; once seen or heard, its association with the product is readily fixed in the wind. If there were no association of ideas between the two, it would require an independent effort of memory to recall the connection. It is not necessary to the validity of a trade-name that it should be-utterly devoid of aptitude. It is enough that it leaves open to every one all words that are really descriptive.

[8] It is true that the issue is somewhat complicated by the fact that the complainant used for a time on some of its labels another, trademark : “T—I—P.” But this mark was not featured in the complainant’s advertising, and the “Beaded” mark was always used in connection with it. A person is not necessarily limited to one mark, even on the same article. Capewell Horse Nail Co. v. Mooney (C. C.) 167 Fed. 575, 588. The complainant (as'well as the defendant) also occasionally used labels designed tO' suit the taste of particular customers, in which words descriptive of quality were most prominently featured; but in such cases, also, whatever the other wording, the “Beaded” tip mark was invariably added by the complainant.

[ 91 Although my conclusion is, therefore, that the complainant is entitled to an injunction to restrain the infringement of its valid trademark, it appears to' me to be equally plain that the complainant has made out a case of unfair competition. There can be no doubt whatever that “Beaded” tip laces had come to mean the complainant’s laces in the trade. If, therefore, the word were descriptive in its primary signification, it has acquired a well-recognized secondary meaning through its use by the complainant. If a name having a two-fold significance, one generic and the other pointing to the origin of manufacture, could be availed of by another without clearly indicating that the product was his, it is obvious that the right to use the name because of its generic signification would carry with it the power to destroy the good will built up by the original appropriator, with whose goods it had become associated. Such is not the law. When the secondary meaning is established, the right to use the name is primarily vested in the original appropriator. Others may. not use it at all, unless accompanied by such an explanation as will neutralize an otherwise false impression.

The evidence leaves no- doubt in my mind of a deliberate intent by the defendant to appropriate the fruits of the complainant’s advertising. If the name in question can be said to be descriptive in any true sense, it is certainly not a necessary description for any honest purpose. The defendant never used the word descriptively, but always as a trade-name. The defendant’s imposition upon the Patent Office in securing registration of the apparently meaningless word “Nubded,” and its subsequent use of the word “Nu-B-Ded” in association with the statement that it was registered, plainly indicate its purpose. On many of its “Nu-B-Ded” laces the defendant used a white label with gold lettering, while the complainant commonly used a gold background with white lettering. Prior to the filing of this suit the complainant made laces of a superior quality only, while the defendant makes man}? grades inferior in quality and cheaper in price than the complainant’s laces. It appears to me idle for the defendant to argue that it is against the public interest to permit of the monopoly of a descriptive name, when the inevitable effect of allowing its use in the manner and for the purpose sought to be restrained will be the deception of the public and the filching of the complainant’s trade.

Decree for the complainant in accordance with the prayer of the complaint.