George W. Luft Co. v. Zande Cosmetic Co.
| Decision Date | 30 December 1942 |
| Citation | 48 F. Supp. 602 |
| Parties | GEORGE W. LUFT CO., Inc., v. ZANDE COSMETIC CO., Inc., et al. |
| Court | U.S. District Court — Southern District of New York |
Breed, Abbott & Morgan, of New York City (Charles H. Tuttle and Gerald J. Craugh, both of New York City, of counsel), for plaintiff.
Frederick L. Kane, of New York City, for Zande Cosmetic Co., Inc.
Stephen D. Finale, of New York City (Maurice J. Moore of New York City, of counsel), for Aristides Tsirkas.
This is a suit for trade-mark infringement and unfair competition. The plaintiff, the registered owner of the trade-mark "Tangee" for lipsticks, rouge and other cosmetics, seeks an injunction against the defendants' use of the word "Zande" or "Viz-Zan-De" as a trade-mark for similar products and the use of the defendants' corporate name; also an accounting. There is no diversity of citizenship, both plaintiff and defendant being New York corporations. Jurisdiction is founded upon the Federal Trade-Mark Act of February 20, 1905, 15 U.S.C.A. § 81 et seq. The defendant, Aristides Tsirkas, who controls and manages the corporate defendant, is a resident of New York.
The trade-mark "Tangee" was adopted for its products by The George W. Luft Company, Inc., the predecessor of the plaintiff and of identical name with that of plaintiff in December, 1920, and has been used by plaintiff and its predecessor continually since that time. Its products have been widely advertised and sold throughout the United States and many foreign countries, and for years has been the largest selling lipstick in America.
Plaintiff's trade-mark "Tangee" was first registered in the United States Patent Office on January 15, 1924; that registration covered lipstick and rouge. Plaintiff's registration No. 192,049, dated November 24, 1924, covers complexion powder, face lotions and nail polish. Plaintiff's registration No. 214,022, dated June 15, 1929, covers lipstick, creme rouge, compact rouge, cleansing cream, etc. Plaintiff's registration No. 338,256, dated September 1, 1936, covers the word "Tangee" and certain decorative matter upon the package then used by plaintiff; also face powder and rouge.
In 1932 the defendant Tsirkas became connected with Michel Cosmetics, Inc., organized by George L. Michel, formerly Chief Chemist for the plaintiff and uncle by marriage of Tsirkas. Through the association of Tsirkas with the Michel Cosmetics, Inc., he learned of the formula used by it which he knew differed only in color from that employed by the plaintiff. In 1934 Tsirkas was discharged by Michel Cosmetics, Inc., and caused the corporate defendant Zande Cosmetics Co., Inc., to be organized, using as a trade-mark "Zande". In adopting the trade-mark "Zande" Tsirkas was quite aware that the plaintiff had built up a large business in the same line of goods which he planned to sell. He was also aware that while the general public did not know the name of the manufacturer, the plaintiff's products had become widely known to the public through its trade-mark "Tangee". All the stock of Zande Cosmetic Co., Inc., which was issued and outstanding, was paid for by Tsirkas with his own money but was issued in the name of his wife, who was made and is the nominal president of the company, but he dominates and directs its affairs and is now vice-president and manager. It was obvious at the trial that the wife was a mere figurehead and knew little or nothing about the company's affairs. The circumstances disclosed at the trial created a strong suspicion that he was anxious to conceal his own identity with the company. He is a proper defendant. See Saxlehner v. Eisner, 2 Cir., 147 F. 189; certiorari denied 203 U.S. 591, 27 S.Ct. 778, 51 L. Ed. 331; Williams Soap Co. v. J. B. Williams Soap Co., 7 Cir., 193 F. 384; Crown Cork & Seal Co. of Baltimore v. Brooklyn Bottle Stopper Co., C.C., 172 F. 225.
In June, 1935, plaintiff, learning that defendants were using the name "Zande" for the same line of goods, wrote to Zande Cosmetic Co., Inc., stating that this was an attempt to imitate plaintiff's well known "Tangee" and requested that it discontinue the use of the name "Zande". In reply it received a letter in July from defendants' attorneys stating that should "the proper authorities decide that there is a similarity in the names, defendants would immediately discontinue the use of the word `Zande'". In April, 1935, Zande Cosmetic Co., Inc., filed an application in the United States Patent Office to register the trade-mark "Zande". The application was opposed by the plaintiff. On June 9, 1937, the Patent Office sustained the opposition holding that the applicant was not entitled to register the trade-mark "Zande", stating in part in its decision: . Citing cases.
No appeal was taken from this decision and it became final on June 29, 1937. But defendants continued to use the trade-mark "Zande", the defendants forming the letter "Z" in script so it resembles in appearance the letter "T" in script.
The odor and the color of the lipstick made by defendants are substantially identical with those made by plaintiff. Originally the defendants used a metal container which, in color, was like the color of the carton containers used by plaintiff.
The trade-mark "Zande" is an invented word, having no significance except that phonetically it has a strong resemblance to plaintiff's trade-mark "Tangee", another invented word. Both are pronounced as two syllable words — "Tan-gee"; "Zan-de". In "Tangee" the first syllable "Tan" is pronounced with a short "a" as in "ran" and the second syllable "gee" is pronounced like the final syllable in "refugee". In "Zan-de" the first syllable "Zan" is also pronounced with a short "a" as in "tan" or "ran" and "e" in "de", the second syllable is pronounced like "ee" in "Tangee". There is the same long "e" sound in each of the letters "T", "Z", "d" and "g". If the defendants intended to adopt a trade name closely resembling the plaintiff, the one selected is about as near as it could come and yet leave them with any plausible argument. The explanation given by Mr. Tsirkas for selecting "Zande" as a trade-mark is that he is a native of Greece and there is an island in Greece named "Zante" which he thought would be an appropriate name, but that as "Zante" is a geographical name, it would not be a valid technical name, so he substituted the letter "d" for "t" — so making the trade-mark "Zande". This is not a very impressive explanation. Defendants explain the selection of "Viz-Zan-De" by saying that it is derived from the word "Byzantium", a former name for Istanbul, Turkey.
The record in the State Court action, Michel Cosmetics Inc., v. Tsirkas, offered by the plaintiff as tending to prove defendants' wrongful intent in this case is excluded. I do not think the fact that the defendant, Zande Cosmetic Co., Inc., was found to have wrongfully appropriated the formula of Michel Cosmetics, Inc., should be accepted as proof of intention in adopting the trade-mark "Zande". The nature and extent of the defendants' activities in the case of Elgin National Watch Co. v. Elgin Razor Corporation, D.C., 25 F.Supp. 886, cited by plaintiff's counsel, are quite sufficient to distinguish it from the situation in the case at bar.
In view of the fact that defendants were refused registration of the trade-mark "Zande" because it was confusingly similar to "Tangee" early in its career when it would have been a comparatively simple matter to have then selected a trade-mark which would have avoided any question of confusion, and their continued use of "Zande", together with all the other circumstances including the adoption of an odor and a color substantially identical with plaintiff's product, I think the reasonable conclusion is that the defendants intended to and is using a trade-mark that is and will be confused with that of plaintiff. Among cases enjoining the use of confusingly similar trade-marks are the following: American Products Co. v. Braithwaite, 53 F.2d 532, 19 C.C.P.A., Patents, 736, "Sanlo" held to infringe "Zanol"; Ramopa Co. v. A. Gastun & Co., D.C., 278 F. 557, "Maropa" held to infringe "Ramopa"; Industrial Rayon Corp. v. Dutchess Underwear Corp., 2 Cir., 92 F.2d 33, "Sunglo" held to infringe "Spun-lo"; Procter & Gamble Co. v. Clark-Cleveland, Inc., 53 U.S.P.Q. 321, "Zell" held to infringe "Teel"; Gehl v. Hebe Co., 7 Cir., 276 F. 271, "Meje" held to infringe "Hebe"; Proctor & Gamble Co. v. Eney Shortening Co., 50 App.D.C. 42, 267 F. 344, "Esco" held to infringe "Crisco"; Buckeye Soda Co. v. Oakite Products, Inc., 56 F.2d 462, 19 C.C.P.A., Patents, 1034, "Novite" held to infringe "Oakite"; Oakite Products, Inc., v. Boritz, 161 Misc. 807, 293 N.Y.S. 399, "Borite" held to infringe "Oakite"; Marion Lambert, Inc., v. O'Connor, 86 F.2d 980, 24 C.C.P.A., Patents, 781, "Voo" held to infringe "Dew".
Although in a case for unfair competition it may be necessary to show intent to deceive the public, in a case for violation of a...
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