Finchley, Inc. v. Finchly Co., Inc.

• Decision Date: 11 June 1929
• Citation: 40 F.2d 736
• Parties: FINCHLEY, Inc., v. FINCHLY CO., Inc.
• Court: U.S. District Court — District of Maryland

40 F.2d 736 (1929)

FINCHLEY, Inc., v. FINCHLY CO., Inc.

District Court, D. Maryland.

June 11, 1929.

Cox & Campbell, of New York City (Clarence G. Campbell, of New York City, of counsel), and Haman, Cook, Chesnut & Markell, of Baltimore, Md. (George Ross Veazey, of Baltimore, Md., of counsel), for plaintiff.

John E. Cross and Louis Hollander, both of Baltimore, Md., for defendant.

WILLIAM C. COLEMAN, District Judge.

The present suit is based upon two grounds: First, infringement of the registered trade-mark "Finchley" and its accompanying crest or symbol; and, secondly, upon unfair competition.

The only difference between the spelling of the name "Finchley" as used by the complainant in its corporate name and trademark, and that used by the defendant in its corporate name, advertisements, correspondence, labels, and so forth, is that the former spells the words with the letter "e" in the last syllable, and the latter does not. The similarity between the two words seems to the court to be so great as not to be open to question. Their appearance and sound are strikingly similar. The defendant uses the Old English type, just as this complainant, even to the extent of adopting it on the front of its store. The court attaches no material significance to the fact that the defendant adds the words, "A Baltimore Institution," to its labels.

So the real question is this: Is the complainant on the pleadings and evidence in this case vested with such ownership and right to the use of this word as prevents the defendant from using it itself? I understand that there is no claim being made for an accounting in damages, but only for an injunction, in the present case.

Defendant asserts that complainant is not entitled to an injunction, because: First, there is no averment or proof of an interstate use of the name, actual or threatened, by defendant; secondly, because the name "Finchley" is a geographical one in which a secondary meaning has not been acquired and cannot be acquired; third, because complainant has disclaimed the right to use it as it does; fourth, because there is lack of similarity between complainant's and defendant's goods, that is, that there is no competition; and, lastly, because the complainant himself is guilty of misrepresentation.

As to the trade-mark, I find no averment or proof of interstate use, either actual or threatened, by defendant. Assuming without deciding that such proof is necessary, namely, that defendant's business as well as complainant's is interstate in character (compare Warner v. Searle & Hereth Co., 191 U. S. 195, 24 S. Ct. 79, 48 L. Ed. 145, and U. S. Printing & Lithograph Co. v. Griggs, Cooper & Co., 279 U. S. 156, 49 S. Ct. 267, 73 L. Ed. 650), the result here reached should not be different, because with respect to the question of unfair competition the court finds that the jurisdictional allegations of the bill are sufficient and also that the complainant has sustained the burden of proof imposed upon it, which entitles it to have the defendant enjoined from further use of the name.

With respect to the claim that the name "Finchley" is a geographical one, it seems to the court sufficient to say that geographical names often acquire a secondary significance, indicative not only of the place of manufacture, but of the name of the manufacturer or producer and the quality of the thing manufactured or produced, which enables the manufacturer or owner to assert exclusive right to such name as against every one not doing business within the same geographical limits, and even as against them if the name be used fraudulently for the purpose of misleading buyers as to the actual origin of the thing produced, or palming off the products of one person as those of another. I understand that to be the guiding principle, certainly it is the principle announced in such cases as French Republic v. Saratoga Vichy Spring Co., 191 U. S. 427, 24 S. Ct. 145, 48 L. Ed. 247, and in Siegert v. Gandolfi (C. C. A.) 149 F. 100, and also in Anheuser-Busch v. Budweiser Malt Products Corporation (C. C. A.) 295 F. 306.

We next come to the third question, that of disclaimer. As to this, it seems to the court sufficient to say that when a trade-mark includes unregisterable matter, the applicant may disclaim the unregisterable part and thereby preclude himself from setting up any exclusive right to it, and yet not be deprived of the benefits of registration of his trade-mark as a whole. I understand that to be the rule in Beckwith v. Commissioner, 252 U. S. 538, 40 S. Ct. 414, 64 L. Ed. 705. The disclaimer, as I read it in the present case, amounts to no more than this. But assuming that it does, and assuming further that the word "Finchley" is not capable of registration apart from the mark, we still have to consider complainant's rights in it as a trade-name, as opposed to a trade-mark, a trade-name as used in the common-law sense.

That brings us, then, to the fourth question, namely, that of similarity between the goods manufactured and sold by the complainant, and those manufactured and sold by the defendant. It is necessary to advert for a moment to the trend in the law dealing with cases of this kind. Must the owner of a trade-mark permit the use of that mark on articles which he does not himself sell? In the present case it is to be noted that, as a matter of fact, complainant does sell, to some extent at least, women's apparel; that is, women's coats. It is comparatively easy to carry over the good will of one article in which the public has confidence to another, by associating the first and the second, even though the seller or maker of the first may be unknown, and also for a firm to extend its good will into territory where its goods have never been sold, but where its reputation has already gone. In owning a mark which enjoys such trust and confidence in relation to one article or place, the owner possesses valuable property in the right to use that familiar and popular mark, or name, in the extension of his business to new lines of goods and...