Bulova Watch Co. v. Stolzberg

• Decision Date: 03 January 1947
• Docket Number: Civ. A. No. 5427.
• Citation: 69 F. Supp. 543
• Parties: BULOVA WATCH CO., Inc., v. STOLZBERG.
• Court: U.S. District Court — District of Massachusetts

69 F. Supp. 543

BULOVA WATCH CO., Inc., v. STOLZBERG.

Civ. A. No. 5427.

District Court, D. Massachusetts.

January 3, 1947.

Robert H. Davison, Stuart MacMillan and Haussermann, Davison & Shattuck, all of Boston, Mass., for plaintiff.

Nathan Tobin and Tobin & Tobin, all of Lynn, Mass., and Alfred Sigel, of Boston, Mass., for defendant.

SWEENEY, District Judge.

In this action the plaintiff seeks to have the defendant enjoined from use of its registered trade-mark, which the plaintiff says the defendant is using in such a manner as to constitute unfair competition. It is to be noted at the outset that this Court has jurisdiction on two grounds; first, because of the diversity of the citizenship of the parties and, second, because it is a trademark action with a pendent count for unfair competition.

Findings of Fact.

Plaintiff is a New York corporation, while defendant is a Massachusetts resident doing business under the name "Eddy's Shoes". The Bulova Watch Company was founded in 1875 by Joseph Bulova who originally manufactured and dealt in all kinds of jewelry. In 1911 the company was incorporated under the name J. Bulova Company, and it gradually concentrated on the manufacturing of watch cases and watch movements. About 1923 the corporate name was changed to the Bulova Watch Company. The plaintiff has continued to concentrate on the watch business, except for a period during the 1920's when it manufactured radios. During the war years its products were sold almost exclusively to the United States Government. These included time fuses, clocks, altimeters, rate of climb, hack watches, etc.

On January 26, 1927, plaintiff registered the trade-mark "Bulova" under the 1905 Act, 15 U.S.C.A. § 81 et seq., for watches, watch movements and watch cases. Defendent does not contest the validity of the registration on the ground of non-exclusive use during the 10 year period under the statute. According to the testimony of plaintiff's vice-president, Bulova is a family name but he knows of no other family with the same name in the United States. This was not controverted by the defendant.

Plaintiff sells its products through some 8,000 retail jewelers throughout the country, as well as through department stores and mail order houses. The plaintiff has continuously used the name "Bulova" in connection with its products and in its advertising. Factories are maintained at Waltham, Massachusetts, and Providence Rhode Island, in addition to the factories in other states. Extensive advertising has been carried on by the plaintiff, either alone or in association with local dealers, in newspapers, national magazines, by direct mail and over some 250 radio stations. The advertising budget has run from one million to three million dollars yearly. Plaintiff sells through some 210 authorized dealers in the New England area, including stores in Waltham and Quincy, Massachusetts, and Providence, Rhode Island.

Defendant registered his trade-mark, "Bulova", on shoes in June, 1941. He conducts a shoe business under the name of "Eddy's Shoes" with stores in Providence, Waltham and Quincy. His shoes were selling in 1944 in the price range from $4.95 to $5.95. He began using the trade-mark "Bulova" in 1940, stamping the shoes "Bulova Fine Shoes" and featuring the word "Bulova" in his advertising. He knew of the existence of the "Bulova" name in connection with watches. There has never been anyone with the name "Bulova" connected in any capacity with the defendant's business. The defendant could assign no reason for his choice of the word "Bulova", and I can only find that he chose it because it was a widely advertised and well known name in the field of trade.

In April, 1944 defendant received a letter from plaintiff's attorneys with reference to the use of the name "Bulova" on defendant's shoes. Defendant then stopped using the name. However, he had a stock on hand of some 2,000 shoes on which the name "Bulova" was stamped. The plaintiff agreed to permit the defendant to dispose of this stock in return for his commitment to discontinue the use of the name. Plaintiff further agreed not to institute any legal proceedings at that time. Subsequently, however, when a stipulation was prepared, defendant refused to sign it on the ground that it included a provision for cancellation of his registered trade-mark. From the evidence I cannot find that the defendant has entirely refrained from using the name. In the prayers for relief plaintiff asks for an injunction, the destruction of all materials containing the name "Bulova", damages, and an order for the cancellation of defendant's registered trade-mark.

The first question for consideration is whether or not there has been any trademark infringement under the 1905 Act. No contention is made by the defendant with reference to the invalidity of plaintiff's registered mark, and since registration is prima facie evidence of ownership the plaintiff is entitled to the benefits of the 1905 Act. Section 16 of the Act, 15 U.S. C.A. § 96, protects a federally registered trade-mark against its use on goods "of substantially the same descriptive properties" as those set forth in the registration. Watches are in class No. 27, while shoes are in class No. 39. Whether it is held that the concept of "descriptive properties" is tied in with class, Beech-Nut Packing Co. v. P. Lorillard Co., 3 Cir., 7 F.2d 967, or that descriptive properties is broader than class, L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272, it seems clear, under the doctrine of these cases, that watches and shoes do not possess "substantially the same descriptive properties" and hence there is no trade-mark infringement under the 1905 Act.

Although the count for trade-mark infringement cannot be sustained, the plaintiff has nevertheless established a not "plainly unsubstantial" claim for relief under the 1905 Act. The count for unfair competition in the complaint is predicated essentially on the same facts upon which the claim of trade-mark infringement was based. This Court, therefore, has jurisdiction of the count in unfair competition which is pendent to the claim for infringement of a federally registered trade-mark. Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148: Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 324, 325, 59 S.Ct. 356, 83 L.Ed. 437. This is a derivative jurisdiction and exists independently of any diversity of citizenship basis.

We are now met squarely with the question whether under Erie R. Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, 114 A.L.R. 1487, we are bound to follow the Massachusetts law of unfair competition, or, already having jurisdiction on a basis other than diversity, are we free to depart from the Massachusetts law and apply what seems to this Court to be a much more just solution of this particular case? There is much authority to the effect that we are bound by the Massachusetts law. Time, Inc. v. Viobin Corporation, 7 Cir., 128 F.2d 860; National Fruit Product Co. v. Dwinell-Wright Co., D. C., 47...