Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc.

• Citation: 297 F. 247
• Parties: FRANKLIN KNITTING MILLS, Inc., v. FASHIONIT SWEATER MILLS, Inc.
• Decision Date: 22 December 1923
• Court: U.S. District Court — Southern District of New York

297 F. 247

FRANKLIN KNITTING MILLS, Inc., v. FASHIONIT SWEATER MILLS, Inc.

United States District Court, S.D. New York.

December 22, 1923

William E. Warland, of New York City, for defendant.

LEARNED HAND, District Judge.

If I had any latitude in this case, I should enjoin the defendant. The infringement is obvious enough, and its honesty more than dubious. Probably the plaintiff could establish-- indeed perhaps, it has even now established--a secondary user, which in a suit at common law would be ample enough to protect it. But unhappily I have no choice but to dispose of this bill upon principles of trade-mark stricti juris, since, if the trade-marks are not valid, there is no further jurisdiction. And so the case comes down merely to the validity of the trade-marks as such, especially whether they are descriptive or denote quality or character.

I have always been at a loss to know why so many marks are adopted which have an aura, or more, of description about them. With the whole field of possible coinage before them, it is strange that merchants insist upon adopting marks that are so nearly descriptive. Probably they wish to interject into the name of their goods some intimation of excellence, and are willing to incur the risk. In the case at bar the plaintiff in my judgment, has gone beyond the line, and has chosen a mark which, if not of description, at least designates quality or character.

The word 'Fashionknit,' being made up of two words of common use, necessarily carries over into their conjunction the meanings of each. Two such words might indeed be so incompatible that their juxtaposition would make nonsense as, for example, 'Hardsoft' or 'Illwell;' but, if they are not, the resulting syllables will generally carry a very perceptible significance. Here the elements chosen seem to me to fit into what it is true is an awkward but is yet altogether a comprehensible, word. As applied to neckties, 'Fashionknit' certainly means 'knit in fashion' or 'fashionably knit'; it can mean nothing else, and the mind naturally attributes some meaning to the combination of such usual words. Whether the plaintiff's ties are in fact knit in fashion is irrelevant; at least they assert it. As applied to sweaters, the same thing is true. It may be true, though I profess no expertness in the matter, that the possible variations in knitting sweaters are not wide. That makes no difference; the word, when used of knitted goods, is equivalent to 'Fashionmade,' which is certainly descriptive, and only such. I have not the least doubt that it produces the effect intended; that the plaintiff expected its customers vaguely to understand that its clothes were knitted as fashionable clothes should be knitted.

It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and description begins. The nearest case is perhaps Judge Hough's decision on 'Porosknit,' Chalmers Knitting Co. v. Columbia, etc., Co. (C.C.) 160 F. 1013, though that mark was more clearly descriptive. It seems hardly of value to do more than enumerate the nearest cases. Thus the following were held descriptive: 'Flare Front,' Rushmore v. Manhattan Co. (C.C.A. 2) 163 F. 939, 90 C.C.A. 299, 19 L.R.A.(N.S.) 269.

'Keepclean,' Florence Mfg. Co. v. Dowd Co. (C.C.A. 2) 178 F. 73, 101 C.C.A. 565.

'Holeproof,' Holeproof Hosiery Co. v. Wallach Bros. (C.C.A. 2) 172 F. 859, 97 C.C.A. 263. The word was indeed protected, but only by virtue of its secondary meaning.

'Bestyette,' N.Y. Mackintosh Co. v. Flam (D.C.) 198 F. 571. Here Holt, J., supported the mark because it had been used 10 years before the statute went into effect. It is...