Benrose Fabrics Corp. v. Rosenstein

• Decision Date: 10 July 1950
• Docket Number: No. 10042.,10042.
• Citation: 183 F.2d 355
• Parties: BENROSE FABRICS CORP. v. ROSENSTEIN.
• Court: U.S. Court of Appeals — Seventh Circuit

183 F.2d 355 (1950)

BENROSE FABRICS CORP. v. ROSENSTEIN.

No. 10042.

United States Court of Appeals Seventh Circuit.

July 10, 1950.

Daniel H. Kane, Philip T. Dalsimer, New York City, Carlton Hill, Chicago, Ill. The Firm of Charles W. Hills, Chicago, Ill., Duell & Kane, New York City, for appellant.

Harold A. Fein, Chicago, Ill., for appellee.

Before KERNER, FINNEGAN and LINDLEY, Circuit Judges.

LINDLEY, Circuit Judge.

The suit of plaintiff, owner of registrations No. 504803, No. 418949 and No. 422622 of the trade-mark "Benrose," charging defendants with infringement and unfair competition having resulted in judgment for defendants, plaintiff appeals. It contends (1) that the proof clearly reflects likelihood of confusion of source of origin between defendants' trade-name "Ben Rose" and plaintiff's trade-mark and trade-name "Benrose," (2) that, though in "the absence of a self-imposed restraint, a person has the right to use his name in conducting his business," as the trial court found, the rule is not applicable here, inasmuch as the evidence allegedly establishes that Rose is not the name of defendants; that their name was originally Rosenstein, changed only in 1947, long after plaintiff's rights had come into being, and that, consequently, as newcomers in the field, they should be compelled so to limit the use of their name in business as not to infringe upon plaintiff's established rights and, finally, that the judgment is not supported by the evidence and should be reversed.

The trial court found that plaintiff has for many years been converting and marketing in large quantities, primarily for wearing apparel, silk, cotton and synthetic fabrics printed by the roller press process, selling at from 65 cents to $1.00 per yard to the wearing apparel trade and to stores which in turn retail them; that defendants began in 1946 to impress upon raw textiles and wallpaper, by hand process, designs proper and fitting for use in upholstery, interior decorating and home furnishings only, selling to architects, decorators and the interior decorating sections of department stores at $10.00 per yard; that plaintiff has not, except in a slight and incidental quantity, produced or marketed its products for use in home furnishing or upholstery; that defendants have not engaged in any business competitive with that of plaintiff; that plaintiff has produced no proof that the buying public or any customers of plaintiff have been confused by defendants' use of the trade-name "Ben Rose"; that the mark "Benrose" has not acquired a secondary meaning associated with the product of plaintiff; that plaintiff has not acquired the exclusive right to use of the trade name "Benrose," and that defendants have not infringed plaintiff's rights under the trade-mark registrations.

Though the court made no specific finding as to likelihood of confusion as to source of origin, it found that plaintiff had failed to prove any averment of its "complaint entitling it to any relief." The complaint contained averments that defendants' actions, if continued, would "deceive and confuse the public into believing that defendants' products are the genuine products of plaintiff or have some connection with the plaintiff or its products" and "mislead and deceive the public into believing that it is purchasing plaintiff's products." It follows from this finding that the court has found that plaintiff failed to prove the averments quoted, i. e., that confusion as to source of origin was likely to occur. This is also an effectual finding that plaintiff had failed to prove the charge of unfair competition. It is immaterial that some of these findings appear in the conclusions of law, for their true nature is not determined by their labels. Shapiro v. Rubens, 7 Cir., 166 F.2d 659.

Certain facts are undisputed. Thus it is clear that since 1924 plaintiff has used the trade-name "Benrose" as part of its corporate name and applied it to fabrics which it has produced and sold. Those fabrics consist of silk, cotton and synthetic textiles and are largely if not entirely used in making dresses and other wearing apparel. Almost one-third of plaintiff's output goes to the "cutting up trade," which converts it into clothing, and the remainder to retail stores which in turn sell to consumers, who then use the purchased fabric in any way they desire, i. e., to make clothes or otherwise to avail themselves of its utility. Apparently an inconsiderable part of it is used for purposes other than clothing. Plaintiff prints its fabrics by the roller press process, resulting, relatively speaking, in mass production. It sells at popular prices.

It is clear also that defendants began their business activities in February 1946 under the name "Ben Rose." Continuously since that time they have converted raw fabrics into hand printed, personally designed finished products, by what is known as the silk screen process. Their products have been used primarily in interior decorating, sales originally being made only to architects, designers or decorators. As their business has grown, they have extended their sales to certain sections of department stores. Their products and those of plaintiff are sometimes found on sale in the same department store, though in different sections, — plaintiff's in fabrics and defendants' in interior decorating. Defendants' volume has grown from $3,000 in the first six months to over $83,000 in the last like period. Their prices, obviously because of the hand printing process employed, are much higher than plaintiff's.

The facts relating to defendants' adoption of the name Rose likewise are not largely in dispute. In this connection the court found that defendant Ben Rose first adopted that name in 1936 and continuously used it for all social, family and business purposes, except during the period of his service in the Navy, and that defendants "at no time, indulged in or committed any act, directly or indirectly, in the operation of their business, or in the use of the name Ben Rose as their trade name, which constitutes fraud on the plaintiff or on the public" or infringement of plaintiff's registrations. Defendant Benjamin Rose is the son of Mr. and Mrs. Max Rosenstein. He came to Chicago in 1936 to live with his brother, who had taken the name of Rose, and to attend art school. From that time on he seems to have used the name of Rose except in certain business and public record matters. Thus he was married in 1942 as Rosenstein and...