Fox Fur Co. v. Fox Fur Co.

• Decision Date: 29 December 1944
• Docket Number: Civ. No. 2301.
• Citation: 59 F. Supp. 12
• Parties: FOX FUR CO., Inc., et al. v. FOX FUR CO., Inc., et al.
• Court: U.S. District Court — District of Maryland

59 F. Supp. 12

FOX FUR CO., Inc., et al. v. FOX FUR CO., Inc., et al.

Civ. No. 2301.

District Court, D. Maryland.

December 29, 1944.

Barton, Wilmer, Bramble, Addison & Semans, Randolph Barton Jr., and Irving B. Grandberg, all of Baltimore, Md., Atwood C. Wolf, of Jersey City, N. J., Leon M. Labes, of New York City, and Ellis B. Miller, of Washington, D. C., for plaintiffs.

Frank, Skeen & Oppenheimer and Reuben Oppenheimer, all of Baltimore, Md., Maxwell A. Ostrow, of Washington, D. C., and Edward Azrael and Max Sokol, both of Baltimore, Md., for defendants.

WILLIAM C. COLEMAN, District Judge.

This is a suit for injunctive relief and damages based upon alleged unfair competition and fraudulent infringement of trade names.

The jurisdictional prerequisites as to amount involved and diversity of citizenship of the parties are satisfied. Two of the plaintiffs are New York corporations and the third plaintiff, an individual, a citizen of New York. Hereinafter, plaintiff, I. J. Fox, Inc., since it is the principal plaintiff, will, for convenience, be referred to as "the plaintiff", unless complete clarity requires otherwise. The sole defendant is Fox Fur Co., Inc., a Maryland corporation, the suit having been dismissed as against an individual Ronald Sidney Yedwal, who was originally joined as a defendant.

As a result of a hearing held pursuant to an order of this Court directing the defendants to show cause why a preliminary injunction should not issue against them pending a hearing upon the merits, the injunction was denied, and defendants having duly answered the bill of complaint, the case proceeded to a hearing on the merits.

Summarized briefly, plaintiff contends that the use by the defendant, Fox Fur Co., Inc., of the words "Fox Fur" in its corporate name and the same, as well as the words "Fox" and "Fox Furs", in advertising and selling various types of furs, has caused confusion in the public mind between the general line of furs dealt in by the plaintiff and those dealt in by the defendant, and has tended to mislead the public generally, including purchasers or prospective purchasers of furs, into supposing that the furs dealt in by the defendant are, in fact, the furs advertised and dealt in by the plaintiff; that the trade names, "I. J. Fox Inc." and "Fox Fur Co., Inc.", have, by long association with the retail fur business, acquired a special significance or secondary meaning, and that, therefore, defendant's use of the words "Fox", "Fox Fur", or "Fox Furs" infringes upon these trade names, and that this would be true even though such words be preceded by initials or proper names, or by any other words of a descriptive character. No labels used by defendant on its furs or fur garments are claimed to infringe.

Briefly stated, defendant's contention is that no one has the exclusive right to the use of a generic term such as "Fox" or "Fox Fur" as a trade name, and, further, that defendant has resorted to no methods in its advertising or sales of the furs in which it deals which have confused or tend to confuse the public as between the plaintiff's and defendant's goods, trade names, or good will.

We find the following facts: I. J. Fox, the individual plaintiff, was engaged in the retail fur business as an individual prior to the year 1918, and in 1928, one of the corporate plaintiffs, I. J. Fox, Inc., succeeded to his business and has ever since been continuously engaged in it. The store is at 393 Fifth Avenue, New York City. I. J. Fox, Inc., owns or controls other retail fur stores operating under the same name in Boston and Cleveland. It also maintains a branch store under the name of "Fox-Weis" in Philadelphia, and has had in contemplation the opening of a store in Baltimore. In addition, it conducts a retail fur business in some forty-seven department stores in nine States (but not in Maryland) in the Eastern part of the country, in connection with which it bills direct the purchasers of its furs displayed in these department stores, and allows the latter commissions on such sales. The remaining plaintiff, Fox Fur Co., Inc., also a New York corporation, does not sell at retail, its business consisting solely of purchasing at wholesale for the plaintiff, I. J. Fox, Inc., and its affiliates, except the one in Philadelphia. Fox Fur Co., Inc., has never advertised or done any business of any kind in the State of Maryland.

The gross business of I. J. Fox, Inc., is very large; — for all stores approximately $77,000,000 during the years 1931-1944, inclusive; for the New York store alone in 1943, $3,000,000, and for all stores that year, $8,000,000. More than $12,000,000 has been expended by it to date in advertising its trade name and general retail business, and it is presently expending in excess of $1,250,000 a year in such advertising through radio broadcasting, newspapers, etc. It employs more than 1000 persons. However, the plaintiff has never done any fur business in Maryland nor has it ever placed any paid fur advertisement in any Baltimore newspaper or on any Baltimore radio station, and the only advertising which the plaintiff has placed in any magazine of national circulation was a series of advertisements in the year 1940, in the magazine "Esquire". The plaintiff has advertised over various radio stations outside of the City of Baltimore, but, generally speaking, the radio public of Baltimore rarely listens to any but Baltimore stations. The plaintiff has a list of some 800 persons resident in the State of Maryland, including Baltimore, who, over a period of years, have purchased or stored garments, or in some other manner dealt with it, or with one of its affiliated companies, but such transactions have taken place entirely outside the State of Maryland. This list includes persons who may have lived in New York and subsequently moved to Maryland, as well as all persons now living in the State of Maryland who have dealt in any way with the plaintiff, or any of its affiliated companies over a considerable period of years. The plaintiff has advertised extensively in New York City newspapers, some of which had, and still have circulations in Maryland, but the number of editions of these newspapers having such circulation which contain advertisements of the plaintiff is and has been quite small. All of the advertising matter of plaintiff and its affiliated companies always stresses the name and initials of the individual, I. J. Fox, and generally includes the slogan "America's Largest Furrier".

No customer of the defendant has ever actually purchased any garment from the defendant under the misapprehension that the defendant was in any way connected with plaintiff or any of its affiliates, although some few customers of the defendant have been known to ask if the defendant was connected with I. J. Fox, Inc. Two persons testified that they had dealt with I. J. Fox, Inc., outside of Maryland, and that upon seeing defendant's advertisements, thought that the defendant was connected with I. J. Fox, Inc., but neither of these persons had ever been in defendant's store, or had any business dealings with defendant.

Fifteen years after I. J. Fox, Inc., was incorporated, that is, in January, 1943, Messrs. Benjamin Dranow, Gus Getsos and Ronald Sidney Yedwal, incorporated the defendant company under the name of "Ronald Furs Incorporated", for the purpose of engaging in the general retail fur business in the City of Baltimore which they commenced at 313 North Eutaw Street, Baltimore, but moved, on or about March 1, 1943, to 106 North Howard Street, having changed the corporate name to "Fox Fur Co., Inc." It is significant that "Ronald" is the first name of the other individual, originally a defendant in the present suit. About two months prior to the incorporation of the Maryland company, Dranow and Getsos caused to be incorporated under the laws of the District of Columbia, a company known as "Fox Fur Co., Inc.", and under this corporate name engaged in a general retail fur business in Washington and advertised their business in Washington newspapers, as a result of part of which advertising, litigation arose between I. J. Fox, Inc., and Fox Fur Co., Inc., of Washington, which litigation, however, was settled without an adjudication of the questions with which we are here concerned. Dranow and Getsos had, as early as 1934, been connected with the sale of fur merchandise by the plaintiff, Fox Fur Co., Inc., which, as already stated, does the wholesale buying for I. J. Fox, Inc., and they have recently opened retail fur stores in Wilmington, Delaware, and Paterson, New Jersey, under the same name as defendant's. Dranow, Getsos and Yedwal were all original stockholders, officers and directors of defendant company, and the first two named still are.

Defendant has never conducted but one retail store and that in the City of Baltimore. No persons with the surname Fox is now or ever has been connected with defendant's business. While it sells fur garments made out of the pelts of many kinds of animals, its sales made from the pelt of the fox on a dollar basis, is in excess of 25% of its total sales of all kinds of furs; and the average proportion of sales of fur garments made from fox pelts in Baltimore retail fur stores, as well as in retail stores generally throughout the United States, is from 3% to 5%. Defendant deals in less expensive grades of furs, generally, than does plaintiff, and its business is a great deal smaller than that of plaintiff, its gross sales for its first year being only approximately $200,000.

In defendant's various types of advertisements there is appended under defendant's corporate name the phrase "This is a local corporation and business", but in some cases, the defendant, in its advertising, has used the phrase "Foxes Fine Furs" which its counsel admits was improper; and in the few cases in which customers of defendant have inquired of its representatives or...