Baker v. Master Printers Union of New Jersey, Civ. No. 162.

• Decision Date: 19 September 1940
• Docket Number: Civ. No. 162.
• Citation: 34 F. Supp. 808
• Parties: BAKER et al. v. MASTER PRINTERS UNION OF NEW JERSEY.
• Court: U.S. District Court — District of New Jersey

34 F. Supp. 808

BAKER et al. v. MASTER PRINTERS UNION OF NEW JERSEY.

Civ. No. 162.

District Court, D. New Jersey.

September 19, 1940.

Meyer M. Semel, of Newark, N. J., for plaintiffs.

Morris G. Fredman, of Jersey City, N. J., for defendant.

Findings of Fact.

WALKER, District Judge.

The following are the facts found specially:

1. International Typographical Union (hereinafter called "Typographical") is a voluntary association and a trade union composed of working men (printers), commonly known as "Typographers", consisting of more than seven members, to wit: approximately 80,000 members, with its headquarters and principal office in the City of Indianapolis, County of Marion and State of Indiana.

2. Typographical is composed of a Board of Officers, consisting of a president, vice presidents, secretary, treasurer and an executive council, in addition to its membership of which the officers and executive council are a part, and the officers and members of the executive council are citizens and residents of states other than New Jersey.

3. Some of the members of Typographical are citizens of the State of New Jersey.

4. The members of Typographical constitute a class so numerous, it is impracticable to bring them before the court. Typographical therefore, by resolution regularly moved, seconded and carried, designated Claude M. Baker, Francis G. Barrett, John Connolly and Woodruff Randolph, its president, first vice president, second vice president and secretary and treasurer, respectively, of the City of Indianapolis in the State of Indiana, and Thomas Martin, its third vice president of the City of Cleveland in the State of Ohio, who are also all of the members of its executive council, as the sole representatives to bring this action on behalf of all the members of Typographical, and they fairly insure the adequate representation of all said members. They will be hereinafter referred to as "Typographical".

5. The character of the right sought to be enforced for the members of Typographical as a class is common.

6. On September 26, 1939, the United States Patent Office registered Typographical's label as a trademark under No. 371429, for use on certain goods in Class 37 (paper and stationery).

7. The defendant, Master Printers Union of New Jersey (hereinafter referred to as "Masters"), is a corporation incorporated in the State of New Jersey on May 5, 1936.

8. On May 2, 1936, the defendant, Masters, filed in the office of the Secretary of State of New Jersey its statement for the registration of the trademark "Master Printers Union Label of New Jersey", under the laws of New Jersey.

9. Typographical by its amended complaint seeks to restrain the alleged infringement of its trademark (label), and to restrain the alleged unfair competition in the defendant's use of a label similar to its and such other relief as may be granted.

10. Typographical has not established an actual or an immediately threatened use of the defendant's label in interstate commerce.

11. Typographical has spent money and has done many things to advertise its trade-mark (label) and enhance the value of its good will, all of which are here sought to be protected and the value of which is in excess of $3,000.

12. Typographical permits printing establishments throughout the United States to place the Typographical trademark upon its products when same are done by its members, under its supervision and control. In order to regulate this practice, it has organized throughout the several states of the Union and the counties and municipalities thereof, branches commonly known and designated as "Locals", which are also authorized to permit such a use subject to the aforesaid supervision or control.

Discussion.

The court has jurisdiction because the citizenship of the representatives selected by Typographical is wholly diverse from that of the defendant, a corporation of the State of New Jersey, and it has spent money and done many things to advertize its trademark (label) and enhance the value of its good will, all of which are here sought to be protected and the value of which is in excess of $3,000.

Typographical, more than twenty-three years ago, created and adopted a label of geometric shape and design for the purpose of characterizing, distinguishing and designating the work and products of its members and members of its affiliates, and on September 26, 1939, it registered said label as a trademark in the United States Patent Office under No. 371,429, for use on certain goods in Patent Office Class 37 (paper and stationery).

The defendant, Masters, was incorporated in the State of New Jersey on May 5, 1936, and a short time prior thereto, certain persons who subsequently became members under the plan proposed by said corporation, met and designed a label to be used in the printing industry by those who became members. On the date said persons convened and for many years prior thereto, there was an established custom in the printing trade of affixing labels to work done by members of labor unions and the shops authorized to affix such labels were known as "Union Shops". The persons who conceived the Master Printers Union of New Jersey and those who subsequently became members, operated what is generally known as "Non-Union Shop".

There was also a custom in the trade of placing chapel numbers alongside union labels, and these chapel numbers identified the particular shop doing the work, and members of Masters copied or adopted the same practice and placed chapel numbers alongside of the label used by them, which according to the testimony, identified the shop operated by said member.

This court finds the defendant imitated and simulated Typographical's label, and that its label is an infringement of the Typographical label, and that defendant and its members have competed unfairly with Typographical.

It is true that when compared side by side, differences as well as similarities are apparent in the labels of Typographical and Masters, but that is not the test. G. Heileman Brewing Co. v. Independent Brewing Co., 9 Cir., 191 F. 489, 497; Liggett & M. Tobacco Co. v. Hynes, D.C., 20 F. 883. In all cases of this type, the consumer is rarely, if ever, afforded an opportunity to make a side by side comparison. He must rely upon his memory. William Waltke & Co. v. Geo. H. Schafer & Co., 49 App.D.C. 254, 263 F. 650; Godillot v. American Grocery Co., C.C., 71 F. 873, 874; Scriven et al. v. North et al., 4 Cir., 134 F. 366, 379; Florence Mfg. Co. v. J. C. Dowd & Co., 2 Cir., 178 F. 73, 75.

The person to be considered is "the incautious purchaser." (Battle & Co. v. Finlay et al., C.C., 45 F. 796, 798.) "The law is not made for the protection of experts, but for the public — that vast multitude, which includes the ignorant, the unthinking, and the credulous, who, in making purchases, do not stop to analyze, but are governed by appearance and general impressions." J. N. Collins Co. v. F. M. Paist Co., D.C., 14 F.2d 614, 616; Florence Mfg. Co. v. J. C. Dowd & Co., supra.

This case brings to the attention of the court a deliberate, calculated and not too subtle fraud. Men, when seeking a symbol by which they would identify themselves and the product of their labor, should select a trademark which will be different from the trademarks or symbols of others already established in their competitive field, the object being to have a mark and good will which stand apart from all others. However, there are some men who would pass off their goods as and for the goods of another, and who, therefore, seek to identify their goods with the goods of another and who adopt every means of confusing their goods with the goods of another. It goes without saying that a group of men wishing the advantages of a union label, and seeking to avoid the expenses incident thereto might, if they wish to fly under colors other than their own, conceive, execute and attempt to profit by a scheme such as was unfolded during the trial herein.

There are also certain advantages which the defendant would obtain by copying Typographical's trademark. Of course, few would be stupid enough to make exact copies of another's mark or symbol. It has been well said that the most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts.

Masters has sought to convey the impression that it is a labor union in the sense in which that term is generally and properly understood. It is not a labor union. It is...