Esquire, Inc. v. Esquire Slipper Manufacturing Co.

• Decision Date: 27 June 1956
• Docket Number: Civ. A. No. 54-224.
• Parties: ESQUIRE, Inc., v. ESQUIRE SLIPPER MANUFACTURING CO., Inc.
• Court: U.S. District Court — District of Massachusetts

139 F. Supp. 228

ESQUIRE, Inc., v. ESQUIRE SLIPPER MANUFACTURING CO., Inc.

Civ. A. No. 54-224.

United States District Court D. Massachusetts.

March 16, 1956.

As Modified June 27, 1956.

Hale & Dorr, James D. St. Clair, Boston, Mass., for plaintiff.

Cedric W. Porter, Boston, Mass., for defendant.

ALDRICH, District Judge.

This is an action primarily for an injunction brought by Esquire, Inc. against Esquire Slipper Manufacturing Co., Inc. Jurisdiction exists both under the Lanham Act, 15 U.S.C.A. § 1051 et seq., and on the basis of diversity. Plaintiff, since 1933, has published a magazine under the name of Esquire, U. S. Trademark No. 313,768, printed in a distinctive, disjointed script. The defendant manufactures men's slippers, ten per cent of which it sells under the name Esquire, and the balance under various names selected by individual chain and department stores. It does not sell at retail. The plaintiff objects to defendant's using the name Esquire on any slippers; it objects to the name Esquire being reproduced by the defendant in script, as distinguished from block letters (which the defendant does frequently, but not uniformly); but, fundamentally, it objects to the defendant's employing the name Esquire in any connection whatever. The defendant has offered, unacceptably, to stipulate that it will not hereafter use the name on merchandise, or in any sales or promotion, and will use it only as part of its corporate name, and then in block letters. Accordingly, I will take this final reservation of the corporate name, which it is unwilling to renounce, as the first issue.

Plaintiff's magazine has a very considerable national circulation. It is comparatively high priced, is addressed primarily to a relatively well-to-do audience, and commands substantial advertising, both in lineage and revenue. It purports to be concerned with all "masculine interests," and to an extent it may be, although I cannot avoid the thought that one is disproportionately emphasized. Other prominent features are men's wear, liquor and travel. In advertising lineage those three items rank in the order named. In non-advertising content ("editorial," so-called), men's fashions would appear to maintain the same relation to the other two, but to stand far behind fiction, non-fiction, cartoons, and other pictorial. I disagree with defendant's contention that such subordination is of importance.

While plaintiff asserts that it has substantial "acceptance" as to liquor and travel, and doubtless has, or it could not maintain its advertising volume, in the area of men's fashions it goes further and claims a virtual monopoly. The suggestion was that if plaintiff said such and such would be the fashion, it was; and if plaintiff said it was out, it was out. Only when I heard defendant's case I learned that national manufacturers spent four times as much to advertise men's wear in Life magazine as in the plaintiff's. The counter fact that this bought fewer pages, and that fewer advertisers in number could afford Life's far higher rates, scarcely means, under these circumstances, that the plaintiff is "almost the sole arbiter of what is correctly fashionable." For this, and other reasons, I will not so find. On the other hand I do find that the plaintiff's name, so far as it belongs to the plaintiff, has valuable good will, and is regarded as a prominent voice on the subject of men's fashion.

I do not find that the plaintiff in any material degree "creates" fashions. However, it is industrious in discovering, analyzing and promoting incipient trends, and no doubt in many cases its presaging them accelerates or accentuates their development.¹ Beyond this I cannot go. However, that is enough so that persons wishing to be in the forefront on styles often turn to the magazine and follow its "editorial" suggestions in making their purchases. A concomitant, stimulated by the fact that the plaintiff informs advertisers in advance by previews, including a separate magazine entitled "Apparel Arts," what its editorial features are to be, enabling them to advertise currently and consistently therewith, is that plaintiff's readers are contemporaneously exposed to advertising copy to which the editorial content has made them especially receptive.

Plaintiff offers its advertisers a further service, known in the trade as tie-ins. It prepares placards and other mechanical devices for its advertising customers, permitting them to inform buyers at the retail level that their goods are "As advertised in Esquire," or are "An authentic Esquire fashion." There was expert testimony, and I find, that this tends to give the retail consumer the impression that the plaintiff endorses the product. In other words, plaintiff sells not only advertising, and the normal benefits that flow therefrom, but sells also what it calls a "commercial blessing," or a portion of the fashion prestige which attaches to its name.

While there was some suggestion that plaintiff maintains a board of censorship, and that, for instance, it would not permit the advertising of "zoot suits," the plaintiff did little to satisfy me of activity in this direction.² However, I do not believe this issue material to the present decision.

I turn to a more fundamental controversy. Plaintiff's witnesses testified, with some positiveness, that the word "Esquire" meant only one thing — Esquire magazine.³ Though admitting that there was a dictionary meaning, along the lines of gentleman, or country squire, its testimony was that this meaning is as outdated as the country squire himself. Defendant's contention, on the other hand, is that the term is a general one, signifying gentleman, honor, title, or respect. As a lawyer trained in the propriety of addressing letters to other lawyers as ____ ____ Esq.,⁴ I have an initial reluctance to conclude that the word in the sense advanced by the defendant has disappeared from the language. Nor can I help but observe that when the plaintiff was not testifying in court it attached the word "Esquire" to the name of a fashionable and fortunately situated gentleman owner of an "aristocrat" yacht.⁵ Far from saying that the word has become archaic (or that it refers to plaintiff's magazine), Webster's New International Dictionary (2d ed. 1954) expressly states that its use "is common," although its meaning is unprecise.

Apart from socially, on plaintiff's admission, some 5,000 persons throughout the country have adopted the name Esquire commercially. So far as I know plaintiff does not claim a monopoly in any area except men's fashions, and certainly its prestige in such fields as automobile service stations, barber shops, cafes, cleaners, florists, and foods, to select a few at the beginning of the alphabet, can scarcely be significant, as it carries no advertising in those categories. The record indicates that "Esquire" has been attached to hundreds of such services or goods that have no connection with plaintiff or any of its allied activities, except a similarity of name. Even before plaintiff's trademark was obtained, the name was registered for men's furnishings, pipes, toilet articles, watches and writing paper. Such disparate uses may have grown, but for the plaintiff to claim full parentage seems little short of preposterous.⁶ While very possibly some do, I am unable to believe that a substantial number of these users have any thought of, or possibility of, any free-loading on the plaintiff. On the contrary, their use of the name is substantial evidence of the fact that in the public mind Esquire is not limited, either to men's fashions or to plaintiff's magazine, but has the connotations for which defendant contends. I accept defendant's and reject plaintiff's contentions.

This brings me to a further consideration. The plaintiff has adopted a comprehensive program of "policing" the name Esquire, so as to discourage its use by all and sundry. This undertaking is not limited to fields in which there could be thought to be any trademark violation, unfair competition, or "freeriding," but is on the bold, and I hold legally untenable, basis that everyone who uses commercially the word Esquire, or even any of its derivatives, such as Squire or Squires,^6a is unlawfully appropriating what is plaintiff's, and plaintiff's alone. The method, if plaintiff's correspondence with the defendant is an example,⁷ is to begin with letters suggesting that the addressee's "unfair trading" may have been inadvertent, or if not, that plaintiff would like to overlook that aspect, followed up by more letters indicating plaintiff's growing concern that it will have to bring court action, but at the same time suggesting an "amicable disposition," which latter, on analysis, means that the addressee will do everything the plaintiff wants. Plaintiff even throws in the suggestion that resistence to its demands is short-sighted, if not anti-social, because whatever plaintiff wants is good for industry, and hence even for the addressee. Court action is seldom brought. I asked the plaintiff why it did not bring more suits, and it replied that it could not afford to. I would be more disposed to think that it does not want to.

Plaintiff's campaign, and I use the term advisedly, appears to be the pincer movement so well known to students of World War II. On the one hand its attorneys correspond with remote parties of the types above listed, who capitulate in large numbers.⁸ On the other hand it sues a comparatively small...