195 F.2d 356 (7th Cir. 1952), 10471, Doeskin Products v. United Paper Co.

Docket Nº:10471.
Citation:195 F.2d 356, 93 U.S.P.Q. 328
Case Date:April 10, 1952
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit

Page 356

195 F.2d 356 (7th Cir. 1952)

93 U.S.P.Q. 328




No. 10471.

United States Court of Appeals, Seventh Circuit.

April 10, 1952

Page 357

Samuel W. Kipnis, Chicago, Ill., Armand E. Lackenbach, New York City, for appellee.

Before MAJOR, Chief Judge and KERNER and SWAIM, Circuit Judges.

SWAIM, Circuit Judge.

The defendant, United Paper Company, appeals from a preliminary injunction against use by it of the trade-mark 'Fawn, ' or the pictorial representation of a fawn of doe, as theretofore used by defendant in connection with the sale of paper napkins, or any trade-mark or pictorial representation confusingly similar thereto or to plaintiff's trade-marks, and the color combination

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of brown and yellow or of brown and pink.

The order for this preliminary injunction was entered in a suit by Doeskin Products, Inc., a New York corporation, against the defendant, a Delaware corporation; for trade-mark infringement and for unfair competition in the sale of paper napkins and other soft paper products. The plaintiff prayed for an injunction, for an accounting and for damages. The day after the filing of its complaint, the plaintiff filed a motion for a preliminary injunction. The defendant answered the complaint and both parties filed affidavits. After hearing arguments on the motion for a preliminary injunction, the District Court made findings of fact and conclusions of law in favor of the plaintiff and issued the injunction 'pending the determination of this action, and until the further order of this Court.'

In passing on this appeal the primary question confronting us is whether the trial court abused its discretion in issuing the preliminary injunction. Rule 65 of the Federal Rules of Civil Procedure, 28 U.S.C.A., provides, (a), that a preliminary injunction shall not be issued without notice to the adverse party, and, (c), without the applicant giving security, in such sum as the court deems proper, for the payment of such costs and damages as may be incurred or suffered by any party who is found to have been wrongfully enjoined or restrained. In oral argument in this court it was stated that the plaintiff had filed such a bond.

District Courts of the United States are given original jurisdiction of actions alleging infringement of trade-marks. 15 U.S.C.A. § 1121. They are also expressly empowered to grant injunctions 'according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent Office.' 15 U.S.C.A. § 1116. Rule 52(a) of the Federal Rules of Civil Procedure provides that in granting an interlocutory injunction the court shall find the facts specially and state separately its conclusions of law thereon, and further provides that such findings shall not be set aside unless clearly eroneous. The district Court complied with the provisions of this Rule.

The courts have uniformly held that a petition for a preliminary injunction is addressed to the judicial discretion of the District Court. Deckert v. Independent Shares Corp., 311 U.S. 282, 290, 61 S.Ct. 229, 85 L.Ed. 189; United States v. Corrick, 298 U.S. 435, 437-438, 56 S.Ct. 829, 80 L.Ed. 1263; Rice & Adams Corp. v. Lathrop, 278 U.S. 509, 514, 49 S.Ct. 220, 73 L.Ed. 480. An order granting such an injunction will not be set aside by a Court of Appeals unless it is contrary to the principles of equity or the result of improvident exercise of judicial discretion. Meccano, Ltd., v. John Wanamaker, 258 U.S. 136, 141, 40 S.Ct. 463, 64 L.Ed. 822.

The purpose of a preliminary injunction is to preserve the object of the controversy in its then existing condition- to preserve the status quo. Missouri-Kansas-Texas v. Brotherhood of Ry. & S.S. Clerks, 7 Cir., 188 F.2d 302, 306. Or, as said in Benson Hotel v. Woods, 8 Cir., 168 F.2d 694, 696, ' * * * the purpose of an injunction pendente lite is not to determine any controverted right, but to prevent a threatened wrong or any further perpetration of injury, or the doing of any act pending the final determination of the action whereby rights may be threatened or endangered * * * .'

When a trial court is considering a petition for a temporary injunction, the proper exercise of its judicial discretion requires the weighing of the 'conveniences of the parties and possible injuries to them according as they may be affected by the granting or withholding of the injunction. (Citing cases.) And it will avoid such inconvenience and injury so far as may be, by attaching conditions to the award, such as the requirement of an injunction bond (such as was done in the instant case) conditioned upon payment of any damage caused by the injunction if the plaintiff's contentions are not sustained. (Citing cases.)' Yakus v. United States, 321 U.S. 414, 440, 64 S.Ct. 660, 675, 88 L.Ed. 834. In Perry v. Perry, D.C. Cir., 190 F.2d 601, 602, the court said: 'When a motion for

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preliminary injunction is presented to a court in advance of hearing on the merits, it is called upon to exercise its discretion 'upon the basis of a series of estimates: the relative importance of the rights asserted and the acts sought to be enjoined, the irreparable nature of the injury allegedly flowing from denial of preliminary relief,...

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