Block v. Jung Arch Brace Co.

• Decision Date: 02 July 1924
• Docket Number: 4022.
• Citation: 300 F. 308
• Parties: BLOCK et al. v. JUNG ARCH BRACE CO. [a1]
• Court: U.S. Court of Appeals — Sixth Circuit

300 F. 308

BLOCK et al. v. JUNG ARCH BRACE CO. ^[a1]

No. 4022.

United States Court of Appeals, Sixth Circuit.

July 2, 1924

Walter F. Murray, of Cincinnati, Ohio, for appellee.

Before DENISON, MACK, and DONAHUE, Circuit Judges.

PER CURIAM.

The situation is fully stated in Judge Hickenlooper's opinion, the decisive portion of which we quote below:

'This cause comes for hearing upon a motion for preliminary injunction against the use by the defendant of the words 'Wonder' and 'Miracle' upon elastic arch supports, as infringing the plaintiffs' registered trade-mark 'Wizard.' While the goods of both plaintiffs and defendant serve somewhat the same purposes that of supporting or strengthening the fallen arch in the foot of the wearer, they are of very different type material, and appearance. The plaintiffs' support consists of an adjustable leather insert to be placed in the shoe, while the defendant's consists of an elastic band fitting over the instep and passing under and supporting the arch. Nor are the respective trade-marks in any wise similar in appearance. The plaintiffs' trade-mark consists of the word 'Wizard' in large letters, tapering in size toward both ends, and beneath, in smaller letters, the word 'lightfoot,' immediately above a winged reproduction of the inverse side of the support superimposed upon an outline of the sole of a foot. Defendant's label consists of the words 'Jung's Arch Brace' in column with the word 'Wonder' ('Miracle') between the word 'Jung's,' and 'Arch' and the technical trade-mark of the defendant, the symbol of a foot wearing the elastic support and surrounded by a circle, between the words 'Arch' and 'Brace.' The words 'Wonder' and 'Miracle' are used, as distinguishing between different designs and sizes. Nor is the dress of the package in which the goods are contained in any wise similar. Not only is there no apparent attempt upon the part of the defendant to simulate the appearance of the plaintiffs' container, but such containers are so different in appearance as to conclusively negative any such intention upon defendant's part.

'Under the foregoing facts, the plaintiffs' right to relief, if any, depends upon the right to appropriate, by registration (adoption) of trade-mark, the exclusive right to use of all words implying supernatural origin or abnormal or magical source, and plaintiffs' argument goes to this extent. Thus 'Wonder' is said to infringe the trade-mark 'Wizard,' because a 'Wizard' is a 'wonder worker'; 'Miracle' is said to infringe because it is 'a wonder.' By like process of reasoning, an infringement could be predicated upon the use of the words 'conjurer,' 'magician,' 'sorcerer,' 'alchemist,' 'spiritualist,' and many other words having no similarity in appearance or sound. This we conceive to be inconsistent with both reason and precedent.

'Infringement of a trade-mark consists in the unauthorized use or colorable imitation of the mark already appropriated by another, upon goods of a similar class. In Canal Co. v. Clark, 13 Wall. 311, 322 (20 L.Ed. 581) the court, after calling attention to the fact that 'property in a trade-mark, or rather in the use of a trade-mark or name, has very little analogy to that which exists in copyrights, or in patents or inventions,' and to the fact that it is not necessary that a trade-name should be a new creation, says: 'It is invariably held that the essence of the wrong consists in the sale of the goods of one manufacturer or vendor as those of another, and that it is only when this false representation is directly or indirectly made that the party who appeals to a court of equity can have relief.' In the case of A Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co. (C.C.) 123 F. 149, 150, the court says: 'The equity entitling the owner of a trade-mark to an injunction to restrain infringement consists in the irreparable damage done the owner by so simulating his trade-mark as to impose on the public and palm off the infringer's goods as and for those of the owner.'

'Without identity in the names respectively appropriated for use, there must be such similarity in sound or appearance, or in the dress of the goods, as will cause confusion in the minds of the public as to the source of manufacture of the articles. Where this similarity in sound or appearance of the trade-mark, or in the dress of the goods, appears, there is no doubt that the use of one word may be held to infringe a trade-mark consisting of an entirely different word. But this is not due merely to similarity of meaning, but rather to the principles prohibiting unfair competition. It is the public that is to be protected, and the final criterion seems always to be whether there is likelihood of deception of the public and the substitution of the goods of the defendant for those of the plaintiff. This doctrine underlies practically all of the decided cases.

'Plaintiff relies upon the case of Wonder Mfg. Co. v. Block, 249 F. 748, 161 C.C.A. 658, as establishing the doctrine that the use of the word 'Wonder' is an infringement upon the trade-mark 'Wizard,' without regard to the general appearance of the label or dress of the package. It is true that ...