American Lead Pencil Co. v. L. Gottlieb & Sons

• Decision Date: 22 July 1910
• Citation: 181 F. 178
• Parties: AMERICAN LEAD PENCIL CO. v. L. GOTTLIEB & SONS.
• Court: U.S. District Court — Southern District of New York

181 F. 178

AMERICAN LEAD PENCIL CO. v. L. GOTTLIEB & SONS.

United States Circuit Court, S.D. New York.

July 22, 1910

[Copyrighted Material Omitted]

Kenyon & Kenyon, for complainant.

Stroock & Stroock, for defendants.

HAND District Judge (after stating the facts as above).

I will take up the objections of the defendant in the order in which they are given.

1. So far as the unconstitutionality of the trade-mark act is concerned I shall not pass upon it. I should certainly not hold unconstitutional an act of Congress enacted after such care as this, and acted upon together with its similar predecessor for nearly 30 years, unless it appeared with certainty that it was unconstitutional. Prima facie I must assume it to be valid, and the mere challenge of it by the defendant in no sense raises any question of its validity. Until that question can be considered at much greater length the statute must enjoy the presumption of validity universally accorded to acts of Congress.

2 and 3. The second and third objections I shall consider together. I have no difficulty in finding that the phrase 'Knoxall' is an infringement of the phrase 'Beats-All.' There is no such limitation as the defendant puts upon the infringement of a trade-mark; i.e that the similarity must go only to the eye or ear. The question cannot be treated in any such technical manner, for always the substantial question is whether the defendant is likely to steal the complainant's trade by the use of the trade-mark in question. I am quite satisfied in this case that there is such similarity between the two phrases as would readily lead in the mind of customers to confusion; a case in point is the infringement of 'Keepclean' by 'Sta-Kleen.' Florence Manufacturing Company v. J C. Dowd & Co. (C.C.A.) 178 F. 73. There are many other decisions in the books which show that it is not alone similarity to the ear or eye which constitutes infringement. In the case of Moore & Co. v. Auwell, 178 F. 543, the Circuit Court of Appeals held that 'Muresco' was not infringed by 'Murafresco,' Judge Lacombe dissenting upon that point. I interpret that decision as meaning that, as the defendant's name was substantially a description of the article, to wit, mural fresco, the scope of the trade-mark could not extend to prohibiting defendant's use of a descriptive term, else it would itself be bad as a trade-mark.

4. The next objection is that the trade-mark is expressive of quality and character. I agree with this objection. Proctor & Gamble Co. v. Globe Refining Co., 92 F. 357, 34 C.C.A. 405, Cooke & Cobb Company v. Andrew Miller et al., 169 N.Y. 475, 62 N.E. 582, and some obiter remarks in Coats v. Merrick Thread Co., 149 U.S. 562, 13 Sup.Ct. 966, 37 L.Ed. 847. I should deny the injunction upon that score except for considerations which I shall indicate later on.

5. The objection to the complainant's own conduct is frivolous. We have not yet got to the pass that the courts are closed to a man who says that a penny pencil 'beats all.' The defendant's unctuous regard for the good faith of the man whose business he is pirating in this case only suits some better world than this.

6. I do not rely in any sense upon the resemblance in color and size between the pencils. The question is one strictly of trade-mark and I agree that the bill could not be supported upon the theory of unfair trade.

7. I think that the laches are sufficiently explained in the case.

8. There is much talk in the books about the necessity of bad faith in trade-mark and unfair trade cases, but I think there is no case in which it has been held a bar to relief where the defendant has continued to use the trade-mark after warning.

9. It has been repeatedly decided that actual deception need never be proved provided there is reasonable likelihood of its occurrence. Of course the complainant must make out a clear case of infringement but I think he has done so.

10. Nor do I think that the defendant is in a position to state that there is substantially no interstate commerce involved under the decision in the Elgin Case, 179 U.S. 665, 21 Sup.Ct. 270 45 L.Ed. 365. ...