Triumph Hosiery Mills, Inc. v. TRIUMPH INTERNAT'L CORP.

• Decision Date: 18 July 1960
• Parties: TRIUMPH HOSIERY MILLS, INC., Plaintiff, v. TRIUMPH INTERNATIONAL CORPORATION and Triumph of Europe, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

187 F. Supp. 169

TRIUMPH HOSIERY MILLS, INC., Plaintiff, v. TRIUMPH INTERNATIONAL CORPORATION and Triumph of Europe, Inc., Defendants.

United States District Court S. D. New York.

July 18, 1960.

Lipkowitz & Plaut, New York City, I. Robert Harris, New York City, Robert Zicklin, New York City, of counsel, for plaintiff.

Brumbaugh, Free, Graves & Donohue, New York City, Granville M. Brumbaugh, Richard G. Fuller, Jr., New York City, of counsel, for defendants.

CASHIN, District Judge.

This is a motion for a preliminary injunction which would prevent the defendants from utilizing the word "Triumph" in the nature of a trademark or a trade name. The underlying complaint states claims grounded in trademark infringement, unfair competition and conspiracy, and requests permanent injunctive relief as well as an accounting for profits and damages.

The facts which I deem relevant to the motion are not in substantial dispute. Plaintiff is a manufacturer and distributor to retail outlets in the United States, Canada, Europe and Africa of women's hosiery. Plaintiff, or its predecessor in interest, has, since 1890, utilized the mark "Triumph" to identify its products. This mark was registered on April 11, 1939 for use on women's hosiery and stockings, under Registration No. 366,415. The registration was renewed on April 11, 1959. In 1955, the stockholders of plaintiff organized another corporation, "Danskin, Inc.", which conducts the same general type of business as plaintiff throughout the same area. The products purveyed by the affiliate, however, are "women's outerwear, underwear and foundation-wear * * * which include girdles, stretchable nylon leotards, tights, trunks and panties, elastic mesh hosiery and swim suits." These products are not marketed under the trademark "Triumph" but, rather, under the trademark "Danskin". This mark plaintiff registered on January 12, 1954 for use on "women's hosiery and stockings, and for opera hose and stockings and opera tights" (Registration No. 584,683) and on March 20, 1956 for use on "women's and children's foot socks, and women's, children's and men's leotards" (Registration No. 623,525). After the affiliate "Danskin, Inc." was formed, the registrations for the mark "Danskin" were assigned to the new corporation.

The defendants are subsidiaries of Triumph Spiesshofer & Braun, a German partnership. Both are New York corporations, Triumph International Corporation being the importing and distributing subsidiary for the United States and Canada, and Triumph of Europe, Inc., being the marketing subsidiary. Defendants' parent or its predecessor have been in the business of manufacturing and selling women's foundation garments since 1886. Defendants' parent, through various subsidiaries, markets its product in Europe, Africa, the Middle and Far East and South and Central America, as well as conducting the marketing activities herein attacked. Since 1948 its sales have exceeded the equivalent of $250,000,000. While not all of the names of the subsidiaries are listed in the papers before me, thirteen subsidiaries, apart from the defendants, utilize the word "Triumph" in their names. Defendants' parent products have also been advertised and marketed under the trademark "Triumph" in its overseas operations. Until recently, defendants' parent conducted no activities in the United States or Canada except to export small quantities to the United States through an independent American importer. In 1945, however, defendants' parent contemplated expanding into the North American market. Soon thereafter, negotiations were initiated with a view towards obtaining from plaintiff its consent to the use of the trademark "Triumph". The negotiations were, for reasons in dispute, abortive. When defendants' parent, through defendants, did commence in 1959 substantial operations in the North American market, it utilized as its trademark the term "Distinction". However, it invariably coupled the trademark with the use of the corporate name of the marketing defendant. The trademark "Distinction", however, appears in large letters and much more prominently than the corporate name. From May 1, 1960 through August 31, 1960 defendants have budgeted $75,000 for advertising. From September 1, 1959 through May 1, 1960 they have expended approximately $110,000 for advertising.

From these virtually undisputed facts it appears abundantly clear that plaintiff has not at all established the defendants are newcomers to the field who are attempting to pirate plaintiff's customers. The products purveyed by plaintiff and defendants are entirely different. The products purveyed by plaintiff's affiliate would seem to overlap to only a slight extent, if at all. Defendants do not sell an inferior product which might benefit from the superior reputation of a manufacturer of a related though noncompetitive product. Rather, defendants' merchandise appears to be, at the very least, of as high a quality as plaintiff's. Further, defendants' substantial advertising expenditures and budget negates any possible inference that they are seeking a "free ride". Rather, their utilization of the corporate name Triumph would seem reasonably inferable from a natural desire for similarity of names with their parent and other affiliated corporations and from a desire to trade on its own good will, which may well be known to the trade in this country through the activities of defendants' parent or affiliates overseas.

A finding that plaintiff has not established that defendants are seeking to appropriate to themselves the customers of plaintiff is not dispositive of the motion, however. Undisputed facts still remain which tend to favor the position of the plaintiff. These facts are that plaintiff is the owner of the trademark "Triumph"; that the customers of plaintiff's products and defendants' products are of the same class; that the products will generally be sold in the same specialized retail outlets or in the same department of large retail outlets; and that defendants can market their products under the trademark "Distinction" or some other mark, for that matter, without utilizing, in conjunction therewith, a corporate name containing the plaintiff's trademark. Under the facts before me at this point, however, I do not believe injunctive relief is warranted.

The first user of the mark does not obtain the right to enjoin anyone else from using the same or similar mark in another field. True, a literal reading of the Lanham Act would lead to a different conclusion, for the Act states as follows:

"* * * the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services * *

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