Rosenberg Bros. & Co. v. Elliott

• Decision Date: 11 September 1925
• Docket Number: No. 3322.,3322.
• Citation: 7 F.2d 962
• Parties: ROSENBERG BROS. & CO. v. ELLIOTT.
• Court: U.S. Court of Appeals — Third Circuit

7 F.2d 962 (1925)

ROSENBERG BROS. & CO. v. ELLIOTT.

No. 3322.

Circuit Court of Appeals, Third Circuit.

September 11, 1925.

Clarence G. Campbell, of New York City, and Cyrus N. Anderson, of Philadelphia, Pa., for appellant.

Andrew Foulds, Jr., of New York City, and J. S. Freemann, of Philadelphia, Pa., for appellee.

Before BUFFINGTON, WOOLLEY, and DAVIS, Circuit Judges.

WOOLLEY, Circuit Judge.

Rosenberg Bros. & Co., a corporation engaged in the manufacture of men's clothing, having long used the trade-mark "Fashion Park," registered it in three ways: "Fashion Park," "Fashion Park Clothes," and "Tailored at Fashion Park." Discovering that John F. Elliott, a storekeeper in the village of Shenandoah, Pennsylvania, had on sale hats and caps marked "Fashion Park," Rosenberg Bros. & Co. brought this suit, charging him with infringement of its trade-mark and with unfair competition. Elliott, by his answer, traversed these allegations and for further defense said that men's clothing and men's hats and caps are in separate and distinct classes; that he had used the mark "Fashion Park" only on hats and caps, and, therefore, he had not infringed the complainant's trade-mark; and that men's hats and caps are not sold in competition with men's clothing, therefore in selling hats and caps with the mark "Fashion Park" he had not engaged in unfair competition.

The learned trial court did not discuss the issue of unfair competition, but, limiting its opinion to the issue of trade-mark infringement, it found that men's clothing and men's hats and caps constitute distinct and separate classes of merchandise and that, in consequence, the respondent's use of the mark was not in the line of trade related to that of the complainant within the principle of the Aunt Jemima Case and kindred cases, but its use was in a wholly different line of trade and therefore it was not an infringing use. From the decree dismissing the bill the complainant took this appeal, bringing here for review the same two questions that were tried in the District Court.

Although the law of trade-marks and the law of unfair competition are closely related — the law governing trade-marks being a branch of the broader law regulating trade competition, Barton v. Rex-Oil Co. (C. C. A.) 2 F.(2d) 402, 404; Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 413, 36 S. Ct. 357, 60 L. Ed. 713 — it should be kept in mind that, though alike in principle, they are enough unlike in practice to admit of raising and trying different issues. Yet the distinction between these similar laws is not always observed, as we have found from an inclination of counsel rather frequently to cite the decisions of this court in Akron-Overland Tire Co. v. Willys-Overland Co. (C. C. A.) 273 F. 674, and Howard Wall v. Rolls-Royce of America, Inc. (C. C. A.) 4 F.(2d) 333, as authority for finding infringement of a trade-mark by its use on different but related wares and sometimes as authority for infringement by use on wares that are not related. We pause to note that those cases are not authority on the law of trade-mark infringement at all, for each was tried and decided on the single issue of unfair competition, and then not unfair competition in the sale of goods but in the unfair appropriation and use of a competitor's trade-name — with the intention, of course, thereby to profit in the sale of goods of a related character. Such an act is not infringement of a trade-mark but is a trespass of the same nature as is committed by one who applies another man's name to his own goods. It is a wrong which equity will enjoin even when the goods of the two men do not strictly enter into competition. British American Tobacco Co. v. British-American Cigar Stores Co., 211 F. 933, 128 C. C. A. 431, Ann. Cas. 1915B, 363; Eastman Co. v. Kodak Cycle Co., 15 Reports Patent Cases, 105; Dunlop Pneumatic Tire Co. v. Dunlop Lubricant Co., 16 Reports Patent Cases, 12; Valentine Meat Juice Co. v. Valentine Extract Co., 17 Reports Patent Cases, 673; Dunlop Pneumatic Tire Co. v. Dunlop-Truffault Cycle & Tube Co., 12 Times Law Reports, 434; Premier Cycle Co. v. Premier Tube Co., 12 Times Law Reports, 481 — all cited and reviewed in Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 410, 411, 159 C. C. A. 461, L. R. A. 1918C, 1039; Willys- Overland Co. v. Akron-Overland Tire Co. (D. C.) 268 F. 151, 155, and cases cited.

As the complainant in this case has not charged the respondent with unfair appropriation of its trade-name, but has charged him with infringement of its trade-mark and with unfair competition by unfair advertising practices, the law of Akron-Overland Tire Co. v. Willys-Overland Co. and Howard Wall v. Rolls-Royce of America, Inc., is not in terms applicable to either issue of the case under review. The case at bar, however, directly raises for the first time in this circuit the question which it has frequently been thought this court decided in those two cases. In order to avoid confusion in our decisions we shall treat the precise question here raised as one of first impression.

In discussing the issue of trade-mark infringement, we first go to the statutes for the law. Act Feb. 20, 1905, § 5 (33 Stat. 725 Comp. Stat. § 9490), tells when a mark may be registered, but provides in consonance with the principle of common-law trade-marks that:

"Trade-marks which are identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties * * * shall not be registered."

In order to carry out this theory of registration the same Act, while in terms disclaiming registration as a test of trade-mark validity or as a condition of trade-mark protection (section 23 Comp. St. § 9508), provides that the applicant shall specify the class of merchandise and give a description of goods comprised in the class in which his trade-mark is appropriated. In furtherance of the idea of similarity of descriptive properties and classification of the merchandise to which the trade-mark is appropriated, the Act requires that the Commissioner of Patents shall establish classes of merchandise for the purpose of trade-mark registration and that on a single application a trade-mark may be registered at the option of the applicant for any or all goods comprised in a single class upon which the mark has been used. In respect to classification of merchandise, such as food, wearing apparel, etc., the courts have generally held, notably in the Eighth Circuit, that "the general rule of law upon this subject is that the owner must have used his trade-mark on the same class but not necessarily on the same species of goods as the alleged infringer in order to entitle him to its protection against infringement," Layton Pure Food Co. v. Church & Dwight Co., 182 F. 35, 37, 104 C. C. A. 475, 477 (32 L. R. A. N. S. 274); Atlas Mfg. Co. v. Street & Smith, 204 F. 398, 405, 122 C. C. A. 568, 47 L. R. A. (N. S.) 1002; William Waltke & Co. v. Schaeffer Co., 49 App. D. C. 254, 263 F. 650; and that, "where a party has been in the habit of labeling his goods with a distinctive mark, so that purchasers recognize goods thus marked as being of his production, others are debarred from applying the same mark to goods of the same description," Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 36 S. Ct. 357, 60 L. Ed. 713; D. & H. Canal Co. v. Clark, 13 Wall. 311, 322, 323, 327, 328, 20 L. Ed. 581.

This brings us to the question — the central question of fact in the case — whether hats and caps are so closely related to men's clothing, both being wearing apparel, as to be within the same class and of the same description.

The Commissioner of Patents has answered this question, at least for himself, when in complying with the statute he established in the Patent Office classes of merchandise for trade-mark registration and in Class 39, under the head of "Clothing," he included men's coats, vests, pants, overcoats and hats and caps.

Opposed to this official classification the learned trial court found as a fact that men's clothes (to which the complainant's trade-mark applies) and men's hats and caps, both outerwear as distinguished from underwear, do not come within one class and cannot be considered as related in the sense of the Act which prohibits trade-mark registration for "merchandise of the same descriptive properties" and which, by the same test, implies non-infringement where goods are not of the same descriptive properties. Though persuasive, we cannot follow the reasoning of the learned trial court. Specifically there is a difference between coats, vests, pants, overcoats and hats and caps. There is no doubt about that. But on a charge of infringement courts, advancing a step from the old law, are to-day less concerned with the species than with the class of goods on which a trade-mark has been used. When it has been used by the owner and by another on goods of the same class, though different in species, the question whether they are so closely related — so near akin — as to be regarded as having the "same descriptive properties" arises. The leading case involving this question perhaps is the now familiar case of Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 159 C. C. A. 461, L. R. A. 1918C, 1039,¹ in which the court announced the principle that "goods though different may be so related as to fall within the mischief which equity should prevent," noting that flour and syrup, though different, are food products, commonly used together, and that the public, seeing the flour mark on syrup, would conclude that it was made by the owner of the mark and on this mistaken belief the public would be imposed upon and the wrongful user would reap the benefit of the owner's reputation and advertisement. The court held that here were "property rights" which should be protected in equity. In thus basing the relief on the complainant's property right in a trade-mark, ...