269 F.2d 191 (2nd Cir. 1959), 242, Deering, Milliken & Co. v. Gilbert

Docket Nº:242, 25284.
Citation:269 F.2d 191, 122 U.S.P.Q. 355
Party Name:DEERING, MILLIKEN & CO., Inc., Plaintiff-Appellee, v. Joseph GILBERT, individually and doing business as Gilbert Textile Company, Defendant-Appellant.
Case Date:August 03, 1959
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 191

269 F.2d 191 (2nd Cir. 1959)

122 U.S.P.Q. 355

DEERING, MILLIKEN & CO., Inc., Plaintiff-Appellee,


Joseph GILBERT, individually and doing business as Gilbert Textile Company, Defendant-Appellant.

Nos. 242, 25284.

United States Court of Appeals, Second Circuit.

August 3, 1959

Submitted April 10, 1959.

Page 192

Walter E. Shuttleworth, New York City (Townley, Updike, Carter & Rodgers, and Stuart N. Updike, New York City, on the brief), for plaintiff-appellee.

Mario Matthew Cuomo, Brooklyn, N.Y. (M. Malcolm Friedman, and William C. Mattison, Brooklyn, N.Y., on the brief), for defendant-appellant.

Before HINCKS, LUMBARD and WATERMAN, Circuit Judges.

HINCKS, Circuit Judge.

This appeal is taken from a judgment and decree of the District Court, Southern District of New York, Edmund L. Palmieri, Judge, entered after a trial without a jury on two causes of action, the first alleging trademark infringement under the Lanham Act (15 U.S.C.A. § 1051 et seq.) and the second alleging a substantial and related claim of unfair competition pursuant to 28 U.S.C. § 1338.

Judge Palmieri, having found that the defendants, Gilbert and his alter ego the Gilbert Textile Company, had infringed upon Deering, Milliken & Company's registered trademark milium, enjoined Gilbert from further use of the mark. He also awarded Deering Milliken the sum of $23, 419.26, which in part represented $6, 056.25 actual damages sustained by it, trebled to $18, 168.75.

The questions raised here by the appellant Gilbert concern the validity of the findings of actual damages and the propriety of trebling the amount so found. No error is predicated upon the balance of the judgment which includes attorney's fees and costs. Deering Milliken at all times relevant to this action was the owner of the trademark Milium, said mark having been duly registered upon the Principal Register maintained in the United States Patent Office. It also was the owner of patents upon certain textile products and finishes in conjunction with which the Milium mark was used. At no time was Gilbert licensed to use the trademark or manufacture the patented product.

In July of 1954 Gilbert embarked on a criminal scheme, calculated to trade upon the Milium trademark. On three occasions between July 1954 and May 1955 Gilbert caused to be printed and delivered to his place of business a total of 67, 600 counterfeit hang tags bearing appellee's Milium trademark. 1 During this period Gilbert also had in his possession an unknown quantity of fabric imitative of the distinctive fabric processed under the Deering Milliken patents. This fabric had been stolen from another textile company and criminally received by Gilbert for use in conjunction with the counterfeit tags. 2

Page 193

In May 1955, New York City Police, acting under a search warrant, entered the premises occupied by Gilbert and the Gilbert Textile Company and pursuant to the warrant seized a substantial quantity of cardboard hang tags and fabric labels bearing the Milium...

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