Esquire, Inc. v. Esquire Slipper Manufacturing Co., 5153

• Citation: 243 F.2d 540
• Decision Date: 24 April 1957
• Docket Number: 5154.,No. 5153,5153
• Parties: ESQUIRE, Inc., Plaintiff, Appellant, v. ESQUIRE SLIPPER MANUFACTURING CO., Inc., Defendant, Appellee. ESQUIRE SLIPPER MANUFACTURING CO., Inc., Defendant, Appellant, v. ESQUIRE, Inc., Plaintiff, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (1st Circuit)

243 F.2d 540 (1957)

ESQUIRE, Inc., Plaintiff, Appellant, v. ESQUIRE SLIPPER MANUFACTURING CO., Inc., Defendant, Appellee.

ESQUIRE SLIPPER MANUFACTURING CO., Inc., Defendant, Appellant, v. ESQUIRE, Inc., Plaintiff, Appellee.

Nos. 5153, 5154.

United States Court of Appeals First Circuit.

Heard December 4, 1956.

Decided April 24, 1957.

Harold R. Medina, Jr., New York City, with whom James D. St. Clair and Hale & Dorr, Boston, Mass., were on brief, for Esquire, Inc.

Cedric W. Porter, Boston, Mass., with whom Robert B. Russell and Porter, Chittick & Russell, Boston, Mass., were on brief, for Esquire Slipper Mfg. Co., Inc.

Before MAGRUDER, Chief Judge, and WOODBURY and HARTIGAN, Circuit Judges.

WOODBURY, Circuit Judge.

These are cross appeals from a judgment entered by the United States District Court for the District of Massachusetts in a suit for trade-mark infringement and unfair competition. The plaintiff, Esquire, Inc. (since these are cross appeals we shall for convenience refer herein to the parties as plaintiff and defendant as they appeared in the court below), is a Delaware corporation which since 1933 has published a monthly magazine called "Esquire." Since 1934 it has enjoyed federal registration (No. 313,768) of the name "Esquire" printed in distinctive disjointed script as the trade-mark for its magazine. The defendant, Esquire Slipper Manufacturing Co., Inc., is a Massachusetts corporation organized in 1949 which as its name implies is engaged in the business of manufacturing men's slippers. The relief sought by the plaintiff in this suit is an injunction restraining the defendant from making any use whatever of the word "Esquire," in any form of type or print, either in its corporate name, or on its product, or in its advertising, and in addition counsel fees in lieu of damages.

In view of the uncontradicted testimony at the trial of the defendant's treasurer and principal managerial officer that the defendant used the word Esquire on only about 10% of its slippers, the balance being sold to retailers who marketed them under their own brand names, and that the word was of no value to the defendant on its goods, and his agreement on behalf of the defendant not to use the word on its merchandise, labels, containers or advertising, the District Court found no occasion to pass upon the defendant's right to use the word otherwise than in its corporate name. Then, concluding that the plaintiff had no valid cause to complain of the defendant's use of the word Esquire in block letters (which its treasurer agreed to do) as part of its corporate name, it entered judgment dismissing the plaintiff's complaint. The judgment from which both parties have appealed is quoted in full in the margin.¹

The plaintiff, Esquire, Inc., contends that it is entitled to all the relief asked for in its complaint; the defendant, Esquire Slipper Manufacturing Co., Inc., contends that the plaintiff is entitled to no relief at all and that it, instead of the plaintiff, is entitled to an award of counsel fees and costs both in this court and in the court below.

This is obviously a dilution case, for clearly the parties are not directly competing with one another in the sale of similar goods. Compare Pro-phylactic Brush Co. v. Jordan Marsh Co., 1 Cir., 1948, 165 F.2d 549. But the fact that the parties are not trading in goods of the same descriptive properties, i. e. that one is selling a magazine and the other men's slippers, does not prevent the plaintiff from asserting a cause of action for trade-mark infringement under the Lanham Act, for the test of infringement under that act is not similarity of goods or services but whether the marks used are so similar as to be "likely to cause confusion * * * or to deceive purchasers as to the source of origin of the respective goods or services." Lanham Act, 15 U.S.C.A. § 1114. The plaintiff asserts that there is great likelihood that consumers will confuse the source of the defendant's slippers with the source of its magazine for two reasons: first because the mark "Esquire" has acquired a "secondary meaning" indicating its magazine exclusively, and second because of its practice adopted years ago of giving its so called "commercial blessing" to its advertisers.

The plaintiff's magazine currently sells for 60 cents a copy on the news stands and has a monthly circulation of approximately 800,000 copies. Being comparatively high in price, it is addressed primarily to a relatively well-to-do audience. It purports to be concerned with all "masculine interests," indeed on its cover under its name it carries the slogan "The magazine for men." Each issue contains a substantial amount of advertising from which the plaintiff derives a considerable income, and in advertising lineage, men's wear, liquor and travel rank in the order named. In editorial content men's fashions appears to maintain roughly the same relation to liquor and travel, but to stand far behind fiction, non-fiction, cartoons and other pictorial material much of which, no doubt to increase circulation and hence advertising revenue, is a bit racy if not sometimes risque.

The assertion is that Esquire magazine is the dominant voice in men's fashions, indeed it is "almost the sole arbiter of what is correctly fashionable" for men, and that over the years it has attained pre-eminence in that field.

Furthermore, during recent years "Esquire," like "Life" and some other magazines, has followed the practice of promoting the products advertised in its columns by so-called "tie-in advertising." That is to say, it gives its "commercial blessing" to its advertisers' products by providing the retailers who carry them with placards or posters indicating that the particular merchandise has been advertised in "Esquire." In addition it has also provided retailers with comparable promotional material indicating that designated merchandise on the retailers' shelves conforms to fashion trends or principles described and discussed in the magazine, as being for instance "authentic" "Mr. T." or "Bold Look" fashions.

These in brief are the facts upon which the plaintiff asserts its right to the injunction, costs and counsel fees for which it asks.

The plaintiff seems almost to contend that the word "Esquire," except, usually abbreviated, as a form of address or title, as customarily used in addressing members of the bar, has as a practical matter disappeared from the English language except as the name of its magazine. The District Court did not adopt this view and neither do we.

The word "Esquire" may not be capable of precise definition. See Webster's New International Dictionary, Second Edition. But the fact remains that it is not a coined word but one firmly established in the English vocabulary that has by no means become obsolete. And the word carries with it clear and strong implications of youthful gentility in an aura of wealth. Thus it has definite built-in attraction as a name for a magazine devoted primarily to men's fashions. By the same token it also has attraction as a name for other products of interest to men, such as men's furnishings and clothing including slippers. In short, the plaintiff picked an already diluted name as the mark for its "magazine for men." This does not mean that the plaintiff is entitled to no protection for its name. But it does mean that the scope of the protection to which it is entitled is not as broad as that which might be accorded to a strong, coined name, as "Kodak," for instance. We do not think a trader can pluck a word with favorable connotations for his goods or services out of the general vocabulary and appropriate it to his exclusive use no matter how much effort and money he may expend in the attempt. Nevertheless the fact remains, as the court below found, that the magazine "is regarded as a prominent voice on the subject of men's fashions," and the name of the magazine, "so far as it belongs to the plaintiff, has valuable good will" attached to it.

Nor does the plaintiff's practice of giving its "commercial blessing" to its advertisers entitle the plaintiff to appropriate the word to its exclusive use. It may be that some consumer-buyers, seeing the name "Esquire" in script on the defendant's slippers or on its boxes, labels or advertising, would infer some connection between the publisher of the magazine and the manufacturer of the slippers even without seeing a "tie-in" poster or placard. But it is hardly reasonable to suppose that consumers, if they gave any thought to the matter at all, would assume that the publisher of a magazine, even a "magazine for men" was also engaged in the business of manufacturing men's slippers. The most that ordinary...