George W. Luft Co. v. Zande Cosmetic Co., No. 155.

CourtU.S. Court of Appeals — Second Circuit
Writing for the CourtSWAN, AUGUSTUS N. HAND, and CLARK, Circuit
Citation142 F.2d 536
Docket NumberNo. 155.
Decision Date09 May 1944
PartiesGEORGE W. LUFT CO., Inc., v. ZANDE COSMETIC CO., Inc., et al.

142 F.2d 536 (1944)

GEORGE W. LUFT CO., Inc.,
v.
ZANDE COSMETIC CO., Inc., et al.

No. 155.

Circuit Court of Appeals, Second Circuit.

May 9, 1944.


142 F.2d 537
COPYRIGHT MATERIAL OMITTED
142 F.2d 538
Frederick L. Kane, of New York City (Maurice J. Moore, of New York City, of counsel), for appellants

Breed, Abbott & Morgan, of New York City (Charles H. Tuttle and Gerald J. Craugh, both of New York City, of counsel), for appellee.

Before SWAN, AUGUSTUS N. HAND, and CLARK, Circuit Judges.

SWAN, Circuit Judge.

This is a suit under the Federal Trade-Mark Act, 15 U.S.C.A. § 81 et seq., for infringement of the plaintiff's registered trade-mark "Tangee", and for unfair competition. All of the parties are residents of the state of New York. Both the plaintiff and the corporate defendant, which is owned and dominated by the individual defendant, are engaged in the business of manufacturing and selling cosmetics, principally lipsticks. In an opinion reported in 48 F. Supp. 602, the district court held that the use by the defendants of the word "Zande" as a trade-mark and as part of the corporate name infringes the plaintiff's trademark "Tangee" and also constitutes unfair competition. An interlocutory decree was entered enjoining such use and directing a reference to a master for an accounting of profits and damages sustained by the plaintiff since June 9, 1937. The defendants have appealed, claiming that the court was in error in the following respects: (1) in finding that the plaintiff had established a valid title to the trade-mark registrations enumerated in its complaint; (2) in finding that the word "Zande" is confusingly similar to the trade-mark "Tangee"; (3) in overruling the defense of laches; (4) in excluding evidence of foreign trade-mark proceedings in which registration of the mark "Zande" was granted to the corporate appellant; and (5) in failing to limit the injunction and accounting to the appellants' business in the United States and failing to limit the accounting to a period starting with the commencement of this action in March 1941.

(1) In 1920 the trade-mark "Tangee" was adopted by the original George W. Luft Co., plaintiff's predecessor, which will be referred to as the old company. The old company obtained five registrations of its trade-mark between the years 1924 and 1936. In October 1937 by vote of its directors and stockholders it was dissolved, the certificate of dissolution being duly filed on October 13th. Prior to dissolution it had contracted to transfer its assets to the plaintiff and by a written instrument dated October 20, 1937, it assigned to the plaintiff all interest in its registered trademarks. It is the contention of the appellants that section 105 of the New York Stock Corporation Law, Consol. Laws, c. 59, makes this assignment invalid because it was executed by the officers of the dissolved corporation instead of by the directors. The unsoundness of this contention is demonstrated by Asphalt Paving & Construction Co. v. City of New York, 149 App. Div. 622, 134 N.Y.S. 433.

(2) Also without merit is the claim that there is no confusing similarity between the words "Zande" and "Tangee". The appellants stress the absence of proof of actual confusion or deception of purchasers, but such proof is unnecessary where the similarity of names is such as to make confusion likely. The district court found that there was such similarity and so did the Patent Office when it refused registration of the trade-mark "Zande" in June 1937. On this branch of the case we see no necessity for adding to what was said in the opinion below.

(3) The appellants urge that the plaintiff has been guilty of such laches as to preclude the granting of an injunction and accounting. They began selling merchandise under the name "Zande" early in 1935. The old company promptly learned of the appellants' use of this name, wrote a letter objecting to it and filed notice of opposition to the Zande Company's application for registration of "Zande" as a trademark; but neither the old company nor the plaintiff brought any action for an injunction or for damages until the present suit was commenced in March 1941. The plaintiff cannot be charged with delay during the pendency of the old company's opposition proceeding in the patent office. Yale Electric Corp. v. Robertson, 2 Cir., 26 F.2d 972, 974; Noll v. Rinex Laboratories Co., D.C., 25 F.Supp. 239, 242, affirmed on the opinion below in 6 Cir., 99 F.2d 1013. This opposition was decided adversely to the applicant on June 9, 1937, and no appeal was taken. After the plaintiff succeeded to the old company's trade-mark it discovered in October 1939 that the Kress Company was

142 F.2d 539
offering the appellants' products for sale and by a protest caused it to cease handling them. No other instance of the sale of "Zande" products in the United States came to the attention of the plaintiff until the summer of 1940 and again protest was made to the dealer. In several foreign countries the plaintiff or its predecessor has litigated with the Zande Company the right of the latter to register its trade-mark. The district court found that the plaintiff has been active in its opposition to the defendants' use of the name "Zande". The defense of laches was correctly overruled

The problems raised by the appellants' remaining contentions are more difficult. Points (4) and (5) are closely related and may be considered together. The defendants offered in evidence, as exhibits W1-W18, certified copies (with translations thereof) of proceedings in foreign countries wherein they had obtained, sometimes ex parte and sometimes after contest with the plaintiff, registration of "Zande" as a trade-mark. Upon objection by the plaintiff decision as to the admissibility of this evidence was reserved. In his opinion the district judge excluded it as irrelevant, citing as authority City of Carlsbad v. Kutnow, C.C., 68 F. 794, affirmed, 2 Cir., 71 F. 167. That was a suit in equity brought by the city of Carlsbad and others to enjoin the defendants from infringing a common law trade-mark, consisting of the words "Carlsbad Sprudel Salts", by selling in New York under the designation "Kutnow's Improved Effervescent Carlsbad Powder" an article in no way derived from the well-known Carlsbad waters. The defendants introduced in evidence a decision of the high court of chancery in England granting to them, against the...

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67 practice notes
  • Cottonwood Financial Ltd. v. the Cash Store Financial Serv. Inc., Civil Action No. 3:10–CV–1650–N.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • March 31, 2011
    ...national in his home country under a presumably valid trademark registration in that country.”); see also Luft v. Zande Cosmetic Co., 142 F.2d 536, 540 (2d Cir.1944). Because CSFS's foreign consumer lending operations abroad are not services that Congress may regulate, they cannot constitut......
  • Ramirez & Feraud Chili Co. v. Las Palmas Food Company, No. 19355.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • November 8, 1956
    ...v. T. Eaton Co., 2 Cir., 234 F. 2d 633, 646-647, certiorari denied, 1956, 77 S.Ct. 96; Geo. W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 142 F.2d 536, 540, certiorari denied, 1944, 323 U.S. 756, 65 S.Ct. 90, 89 L.Ed. 606. Thus comity does not here argue against exercise of the power which the......
  • Brooks Bros. v. Brooks Clothing of California, Civil Action No. 3580-Y.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • May 5, 1945
    ...cases under Notes 10 and 11. 18 Restatement of Torts, §§ 716(b), 717(b). And see, George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 1944, 142 F.2d 536, 19 Restatement of Torts, § 727. 20 Restatement of Torts, § 716(b); G. & C. Merriam Co. v. Saalfield, 6 Cir., 1912, 198 F. 369; American Tra......
  • Vanity Fair Mills v. T. Eaton Co., No. 251
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • June 1, 1956
    ...the respective trade-mark rights of the parties are irrelevant and inadmissible. George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 1944, 142 F.2d 536, 539. Similarly, the rights and liabilities of United States citizens who compete with foreign nationals in their home countries are ordinari......
  • Request a trial to view additional results
67 cases
  • Cottonwood Financial Ltd. v. the Cash Store Financial Serv. Inc., Civil Action No. 3:10–CV–1650–N.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • March 31, 2011
    ...national in his home country under a presumably valid trademark registration in that country.”); see also Luft v. Zande Cosmetic Co., 142 F.2d 536, 540 (2d Cir.1944). Because CSFS's foreign consumer lending operations abroad are not services that Congress may regulate, they cannot constitut......
  • Ramirez & Feraud Chili Co. v. Las Palmas Food Company, No. 19355.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • November 8, 1956
    ...v. T. Eaton Co., 2 Cir., 234 F. 2d 633, 646-647, certiorari denied, 1956, 77 S.Ct. 96; Geo. W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 142 F.2d 536, 540, certiorari denied, 1944, 323 U.S. 756, 65 S.Ct. 90, 89 L.Ed. 606. Thus comity does not here argue against exercise of the power which the......
  • Brooks Bros. v. Brooks Clothing of California, Civil Action No. 3580-Y.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • May 5, 1945
    ...cases under Notes 10 and 11. 18 Restatement of Torts, §§ 716(b), 717(b). And see, George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 1944, 142 F.2d 536, 19 Restatement of Torts, § 727. 20 Restatement of Torts, § 716(b); G. & C. Merriam Co. v. Saalfield, 6 Cir., 1912, 198 F. 369; American Tra......
  • Vanity Fair Mills v. T. Eaton Co., No. 251
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • June 1, 1956
    ...the respective trade-mark rights of the parties are irrelevant and inadmissible. George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 1944, 142 F.2d 536, 539. Similarly, the rights and liabilities of United States citizens who compete with foreign nationals in their home countries are ordinari......
  • Request a trial to view additional results

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