Du Barry of Hollywood, Inc. v. Richard Hudnut, 17320.

• Decision Date: 10 October 1963
• Docket Number: No. 17320.,17320.
• Citation: 139 USPQ 112,323 F.2d 986
• Parties: DU BARRY OF HOLLYWOOD, INC., a corporation, Appellant, v. RICHARD HUDNUT, a corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

139 USPQ 112, 323 F.2d 986 (1963)

DU BARRY OF HOLLYWOOD, INC., a corporation, Appellant, v. RICHARD HUDNUT, a corporation, Appellee.

No. 17320.

United States Court of Appeals Ninth Circuit.

October 10, 1963.

Harry Price, New York City, and Warren T. Jessup, Hollywood, Cal., for appellant.

Horton & Foote and Joseph K. Horton, Los Angeles, Cal., Mudge, Stern, Baldwin & Todd, Paul D. Miller, Milton Black and Stuart A. Summit, New York City, for appellee.

Before STEPHENS, JERTBERG and BROWNING, Circuit Judges.

STEPHENS, Circuit Judge.

This is an action for infringement of plaintiff-appellee's registered trade-mark "Du Barry," and some modification of the name "Du Barry," and for unfair competition in connection therewith. Appellee Richard Hudnut, a New York corporation, brought this action in December, 1959, against Du Barry of Hollywood, Inc., alleging trade-mark infringement and unfair competition in that the defendant-appellant used the designation "Du Barry" in connection with its products, in its advertising, and in its corporate name, and, further, that it used a type of script and representation of a crown on some of its products similar to the script and crown used by and identified with Hudnut.

Federal jurisdiction is based on diversity of citizenship and the Trade Mark Acts of 1905 and 1946, as amended. 15 U.S.C. § 1051 et seq. Jurisdiction of the pendant claim of unfair competition is based on 28 U.S.C. § 1338(b).

The district court found that the plaintiff-appellee was the owner of valid and subsisting trade-mark rights for the name "Du Barry" in the field of toilet goods, cosmetics, and broadly related fields of products for woman's comfort, used in her eternal quest for apparent youth and pleasant appearance. The court held that the products of both plaintiff and defendant were of the "same general class," and that defendant's use of the name "Du Barry" was likely to cause confusion and deceive the purchaser as to the source or origin of the goods so marked.

The trial court further found that the defendant's products and trade paper advertising were conspicuously labeled with the trade-mark and trade name "Du Barry," "By Du Barry," or "From Du Barry," often printed in substantially the same style of script which is displayed by the plaintiff on its products.

The district court held that the defendant had infringed Hudnut's trade-mark rights, and, in so doing, had been guilty of unfair competition. The court granted permanent injunctive relief, prohibiting the defendant from using the name "Du Barry" in any manner whatsoever. Du Barry of Hollywood, Inc., appeals.

Appellee Richard Hudnut is the corporate successor to the perfume and soap business established before 1900 by Richard Hudnut, an individual, and said corporation has been continuously engaged in the manufacture and sale of many notions for use by women in the fields of toilet goods and cosmetics. These products are distributed through the usual channels of retail consumer trade such as drug stores and department stores. One line of Hudnut products has been designated by the name "Du Barry" for more than fifty years and registered by Richard Hudnut and its successors under the name "Du Barry" with the United States Patent Office.

In addition to the "Du Barry" line of products, Hudnut has used the name in two other business ventures. First, from 1930 to 1953 Hudnut maintained a Du Barry Beauty Salon on Fifth Avenue in New York City. Second, in conjunction with the beauty salon, Hudnut operated the Du Barry Success School, a correspondence course designed to teach beauty hints such as proper skin care, healthful diets, and proper exercises. Hudnut presently maintains a Du Barry Salon in New York City, its own retail outlet for "Du Barry" products. Appellee's full name in connection with its "Du Barry" line is "Richard Hudnut, Du Barry Division," but its products are commonly referred to as "Du Barry," "Du Barry's" or "By Du Barry."

In 1947 defendant-appellant's founder began a small business making shoulder pads for women's dresses under the name "Du Barry of Hollywood." In 1950 appellant was incorporated under the name Du Barry of Hollywood, Inc., and it continued to use the name as a trade-mark on its products. Since 1950, appellant's line of merchandise has included such varied notion items as See-Thru Press Cloths, Slip-On Hanger Covers, Apron Hoops, lint brushes, Dura-Shammy Cloths, Fashion Needles, scarves, Grip-Clips, cushions, Heel Rings, plastic bags, glass cases, sweather bags, Fountain Faucets, aprons and similar products for women.

In 1953 the first net caps or hairnets were sold but as of 1954 the shoulder pads still constituted the bulk of appellant's business. The hairnets rapidly became appellant's principal product, accounting for more than ninety per cent of its sales in 1959.

Of appellant's total sales, a large portion is made to beauty supply houses which provide the beautician with beauty products for use in rendering services and for resale to customers.

The record indicates that in addition to the distribution...