Ansehl v. Williams

• Decision Date: 15 July 1920
• Docket Number: 5503.
• Parties: ANSEHL v. WILLIAMS.
• Court: U.S. Court of Appeals — Eighth Circuit

267 F. 9

ANSEHL v. WILLIAMS.

No. 5503.

United States Court of Appeals, Eighth Circuit.

July 15, 1920

Rehearing Denied September 27, 1920.

James Rosenthal, of Chicago, Ill. (Marion C. Early, of St. Louis Mo., on the brief), for appellee.

Before HOOK and CARLAND, Circuit Judges, and TRIEBER, District Judge.

CARLAND Circuit Judge.

Appellee brought this action against appellant for trade-mark infringement and unfair trade competition. Appellant filed a cross-complaint, alleging infringement of his trade-mark and unfair trade competition on the part of appellee. A decree was rendered enjoining appellant from using his alleged trade-mark and from unfair competition. No accounting was granted. The material facts as shown by the record are as follows:

In September, 1915, appellee, under the name of Maybell Laboratories, commenced selling at Chicago, Ill., a preparation for promoting and stimulating the growth of eyebrows and lashes, under the trade-name of Lash-Brow-Ine. The name was suggested by preparations of a similar character then on the market under the names of Eye-Brow-Ine and Lashneen. The suffix 'ine' was used, because the principal ingredient contained in appellee's preparation was chiefly petrolatum, a form of vaseline. Appellee commenced to advertise his preparation in October, 1915, and since then has advertised in over 50 different magazines and had paid for advertising at the time of trial $67,084.19 the monthly expense for advertising having increased to about $3,000 per month. The preparation, sold directly to consumers at 50 cents per box, had amounted to 149,000 mail orders since the business was started. Sales were also made in gross to about 3,000 dealers, located in every state of the Union. Appellee testified that he never heard of Lashbrow, or Lashbrow Laboratories, until about September 1, 1918. About November 1, 1918, appellee caused appellant to be notified to cease infringing appellee's trade-mark. Appellant refusing so to do, this suit was commenced December 17, 1918.

Since commencing the sale of his preparation appellee has done a business amounting to $111,759.73. The trade-mark Lash-Brow-Ine was registered in the United States Patent Office April 24, 1917. The main ingredients of the preparation sold by appellee were a superfine petrolatum and paraffine, a high-grade perfume, and other small ingredients. No reply was received by appellee to the notification above stated until November 11, 1918, when the receipt of the letter of appellee of November 1, 1918, was acknowledged with a statement that appellant had used the trade-mark 'Lashbrow' much earlier than 1915, and a request that appellee desist from infringing the same, or suit would be brought by the appellant for an injunction and an accounting. No such suit was brought.

There was introduced in evidence a large number of advertisements appearing in various publications. The evidence on the part of appellant showed that he conceived the idea of manufacturing and putting on the market a preparation for stimulating and promoting the growth of eyebrows and eyelashes in 1911; that the formula for this preparation was one used by his mother for her eyebrows and eyelashes when she was a girl. Appellant commenced selling his preparation in the spring of 1912, under the trade-mark of 'Lashbrow,' to a small drug store on Jefferson and Lafayette avenues in the city of St. Louis, Mo. This was followed by soliciting trade from all the large dealers and retail stores in St. Louis, where the preparation was offered for sale. Appellant then started a campaign of advertising which began on October 12, 1912, in the St. Louis Post-Dispatch. This advertising brought him business from nearby states, such as Illinois and Indiana, and the entire Southwest. Appellant's business has been conducted since its commencement at 1755 Preston street, St. Louis, Mo., where he was doing business when enjoined in May, 1919. The stores referred to by appellant in his testimony were Wolf-Wilson, Judge & Dolph, Grand Leader, Famous & Barr, Nugent's, Hirsch's Hair Bazaar, and Schaper, being the leading stores in St. Louis. The preparation was sold through these stores in 1912. Appellant had printed 1,000 cardboard fliers and 1,000 transparent fliers, which were mailed to about 1,500 stores throughout the United States. A counter display card was also distributed throughout the country in 1913. A sample of appellant's preparation was mailed to the buyers of about 800 or 900 department stores throughout the country.

In order to get quicker national distribution, appellant testified that he called upon Meyer Bros. Wholesale Drug Company, in St. Louis, the largest wholesale drug concern in the world, as appellant understood, and asked them to make a thorough analysis of Lashbrow, with a view of having all of their 75 salesmen, who traveled in all parts of the United States, sell Lashbrow. Mr. Peet was then the buyer at Meyer Bros., and offered to do this, and as a result of appellant's request Lashbrow was entered upon the regular catalogue price list of Meyer Bros. This was late in 1912. Lashbrow has been carried by Meyer Bros. Drug Company in their catalogue until the present time and sold throughout the entire United States. Appellant also introduced it to the J. S. Merrill Wholesale Drug Company, in St. Louis, in 1912, and since said date, until the present time, the preparation has been carried by the most reputable wholesale drug houses in the United States, such as McKessen & Robbins, Lehn & Fink, and Schifflein, of New York City, J. W. Crowdus Wholesale Drug Company, Dallas, Tex., Alexander Drug Company, Oklahoma City, Okl., Stewart & Palmer, Seattle, Wash., and numerous others that the witness did not recall.

Appellant had very little means with which to exploit his preparation at first, and the business carried on did not reach the extent of that of appellees. The evidence shows, however, that appellant has done the best he could in the way of promoting the sale of his preparation. From 1912, down to December, 1915, three months after appellee had first adopted his trade-mark, appellant had advertised in 16 national magazines such as 'Grit,' 'Red Book,' Cappers Weekly,' 'Photoplay,' etc. In 1914 appellant ran a campaign of advertising in the St. Louis Globe-Democrat. He testified that during 1912, he spent $500 or $600 in advertising Lashbrow; during 1913, about $900 or $1,000; during 1914, about $2,500; during 1915, about $2,500 or $3,000; during 1916, a little over $2,000; during 1917, between $4,000 and $5,000; and in 1918, about $6,000. Up to 1915 he had purchased at least 79,056 jars or 549 gross, and invoices were produced for these amounts. Appellant's Exhibit 10, introduced in evidence, showed 243 original orders for Lashbrow, coming from 31 states of the Union, during the years 1912, 1913, 1914, 1915, 1916, and 1917.

The foregoing in a general way is what the evidence shows as to the business done by appellant and appellee. That of appellee was larger than that of appellant, but this fact is not decisive. In the case of Kathreiner's Malzkaffee Fab. v. Kneipp Medicine Co., 82 F. 321, 27 C.C.A. 351, the Court of Appeals of the Seventh Circuit said:

'It is not essential that its use has been long continued, or that the article should be widely known, or should have attained great reputation. The wrong done by piracy of the trade-mark is the same in such case as in that of an article of high and general reputation, and of long-continued use. The difference is but one of degree, and in the quantum of injury. A proprietor is entitled to protection from the time of commencing the user of the trade-mark.'

See, also, Waldes et al. v. International Manufacturers' Agency (D.C.) 237 F. 502; Walter Baker & Co. v. Delapenha (C.C.) 160 F. 746.

To avoid the force of appellant's prior use of his trade-mark, appellee claims that there was an abandonment of the same by appellant. Upon the question of abandonment it was said by the Supreme Court in the case of Hanover Milling Co. v. Metcalf, 240 U.S. 403, 36 Sup.Ct. 357, 60 L.Ed. 713:

'It results from the general principles thus far discussed that trade-mark rights, like others that rest in user, may be lost by abandonment, nonuser, laches, or acquiescence. Abandonment, in the strict sense, rests upon an intent to abandon; and we have no purpose to qualify the authority of Saxlehner v. Eisner, 179 U.S. 19, 31, to that effect. As to laches and acquiescence, it has been repeatedly held, in cases where defendants acted fraudulently or with knowledge of plaintiffs' rights, that relief by injunction would be accorded, although an accounting of profits should be denied. McLean v. Fleming, 96 U.S. 245, 257; Menendez v. Holt, 128 U.S. 514, 523; Saxlehner v. Eisner, 179 U.S. 19, 39. So much must be regarded as settled.'

The burden of showing abandonment was upon appellee, and we find no evidence that appellant intended to abandon the business of selling his preparation under the trade-mark adopted by him. It does appear that appellant was employed for 8 months during the year 1917, by Crundin-Martin Manufacturing Company, of St. Louis. During that time he spent 2 months in Cincinnati. In regard to this employment appellant testified:

'A large part of this 8 months I was right here in St. Louis, and I attended to my Lashbrow business in the evening, and also called upon the stores in the daytime. I was outside all the time, and the short time I was away from St. Louis, as is customary any time I am away from St. Louis, my folks attended to my business, and the business is conducted right in the house. This 8 months were about the first 8 months in the year. I was in St. Louis for that concern about 6 months out of

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