Waldes v. International Mfrs.' Agency, Inc.

237 F. 502 | S.D.N.Y. | 1916

LEARNED HAND,

District Judge (after stating the facts as above). [1] I think that there is enough proof in the case of a user antedating the defendant’s user to support the plaintiffs’ claim of a trade-mark, without considering the “Koh-i-noor” user, or the question of law raised by the foreign user with local registration. The earliest use, besides the “Rival” card and the “Koh-i-noor,” is that of the “Zeppelin” card, which began on March IS, 1912, consisted of 7 separate invoices, and amounted'in all to 2,136 cards before September 1, 1912. The next use was of the “Queen” card, beginning March 28, 1912, and amounting to 14,168 before September 1, 1912, in 32 separate invoices. Finally there is the “Best Quality” use, beginning on August 8, 1912, and consisting of 4 separate invoices, amounting to 720 cards before September 1, 1912. The defendant’s use cannot with certainty be dated before September 1, 1912, but possibly it may have run back to June 1, 1912. In the latter event we should have 3 invoices of “Zeppelin,” aggregating 1,048 cards, and 13 invoices of “Queen,” aggregating 4,164 cards, antedating it. The use thus begun in March 15, 1912, continued without any break up to June of this year in the sales of “Koh-i-noor” (Exhibit A.) Various forms were used, aggregating the very substantial total of 211,597, and in every case the trademark was a substantial feature of the card, striking in its position and distinctiveness against the background. But the effective user does not stop there, because of the “Rival” card (Exhibit 3) 1,800,000 have been sold from 1909 to the present time. This card shows in the most conspicuous way the upper half of the hemisphere, and so far as that one-half can constitute a user it is such. That question I shall consider later, assuming for the present that it is to be included.

[2] Thus we have a total user of about one-eleventh of the whole output of the plaintiffs’, antedating the defendant’s user, uninterrupted and open. It is idle to speak of such a user as casual or sporadic, in the sense that it is used in such cases as Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32 L. Ed. 526, Brower v. Boulton, 58 Fed. 888, 7 C. C. A. 567, or Kohler Mfg. Co. v. Beeshore, 59 Fed. 575, 8 C. C. A. 215, where the name was used, off and on, for a single shipment, or for a short period, and then abandoned. This had been a foreign mark of the plaintiffs’, and they had always intended to use it on all their goods. Indeed, the only possible ground on which the defendant' can stand is that the plaintiffs failed unintentionally in the “Koh-i-noor” card, because the globe is too small and its gold color is not a sufficiently ■ distinctive feature. The intention to use their mark on that card is apparent enough, and the only exception throughout the case is the instance of “Revol” (Exhibit 12) and the “Revol” tape (Exhibit B).

[3] If we were to disregard the “Rival” card, it is true that the use would be small, and would antedate the defendants by only a few months. In considering that question I shall not determine whether a mere claim of trade-mark by an alien, who has used it abroad, when the mark is fanciful and arbitrary, is enough to reserve the held for a while and keep others off. I shall, on the contrary, assume that the “ownership” of the mark depends solely upon user. Yet it is the priority of user alone that controls, even though, when the defendant comes into the field, it may not be fully established, or may not even be enough established to have become associated largely in the public mind with the plaintiff’s make. Kathreiner’s Malzkaffee Fab. v. Pastor Kneipp Medical Co., 82 Fed. 321, 27 C. C. A. 351; Thomas Carroll & Son Co. v. McIlvaine & Baldwin, 183 Fed. 22, 105 C. C. A. 314; Baker v. Delapenha (C. C.) 160 Fed. 746. Were it not so, it would be of extreme difficulty to show at just what point in time the mark became associated with the maker in enough of his customers’ minds to justify the inference that the defendant’s use might have become confusing. Therefore, once his use begins, the rest of the public must avoid his fanciful mark.

[4] Hence the user here would be enough, even though the “Rival” cards were disregarded, because we have an earlier use of the mark, continuous and substantial, to which no objection can possibly be taken. I do not, however, believe that the “Rival” cards should be thrown out of consideration. That question turns upon whether the use of half a hemisphere is enough like the use of the plane globe to identify the goods as belonging to the same maker. I cannot see why not. In several of the other cards the base of the globe is more or less cut off, but no one would question that enough is left clearly to indicate that the globe is portrayed. I cannot see what difference it makes how much of the globe is shown, so long as there be enough to put it beyond doubt that a globe is' meant. Sometimes people like to represent the globe as floating amid clouds, which conceal a substantial part of the hemisphere. It would, I think, be absurd to say that such a user was not the user of the globe itself. There is certainly no rule of rigidly undeviating similarity in the user of the mark. Such notions lose sight of the whole underlying theory of tire matter, which, it cannot be too often repeated, is that the mark is only a representation, and will represent as far as it is recognized as identical with what has become familiar.

[5] People sometimes talk as though registration put some rigid limitation on user, but I know of none such. Registration confers no right, and limits none; it is a mere procedural advantage, depending upon common-law “ownership,” which can exist quite as well without it. In a case like this, where the jurisdiction of the court does not depend upon it, it gives scarcely any advantage of any sort, except under section 16. It is not, like the issuance of a patent, the condition and the limitation of the owner’s rights.

Now no one can doubt that the half hemisphere on the “Rival” card, being so distinctive as it is, indicates the globe, and only that, and no one can doubt that, to minds accustomed to an association of a half hemisphere with these fasteners, the full representation of a globe would carry out that association. If, indeed, the only use of the mark had been a half hemisphere, I should not hesitate to hold it infringement to use the whole. For the same reason I do not hesitate to include within the actual user of the mark such a user as the “Rival” card presents.

[6] As to the “Koh-i-noor” card itself, I am of the same opinion as Judge Hough was on the preliminary injunction; i. e., that it occupies too insignificant a place in the total make-up to serve .as a trade-mark. No one could have been present at the trial and failed to be impressed with the genuine difficulty of the witness Arnold in picking out that feature. But this “Koh-i-noor” card is effective evidence against abandonment, for it shows an honest intent to use the mark, though it be not effective to establish the mark itself.

An injunction will go against the use of the globe on all packages, or reels, containing snap fasteners, and the motion will be granted to cancel the defendant’s registration as applied to such goods. The de* cree will include damages and costs.