Gorham Mfg. Co. v. Weintraub

• Decision Date: 09 May 1912
• Citation: 196 F. 957
• Parties: GORHAM MFG. CO. v. WEINTRAUB et al.
• Court: U.S. District Court — Southern District of New York

196 F. 957

GORHAM MFG. CO. v. WEINTRAUB et al.

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

May 9, 1912

Hugo Mock, Harry C. Adams (Frederick P. Fish, E. T. Fenwick, and L. L. Morrill, of counsel), for complainant.

Benno Loewy, for defendants.

James Gillin, amicus curiae for the British Government.

HAZEL District Judge.

The bill of complaint charges the infringement of complainant's trade-mark, consisting of the figure of a lion, the representation of an anchor, and the capital letter G in old English, by the defendants, who are copartners and citizens of the state of New York. The bill alleges that beginning in 1831 the predecessors of the complainant-- successive partnerships-- conducted the manufacture of solid or sterling silver ware in Providence, R.I.; and that subsequently the business was conducted by the Gorham Company, a copartnership which in 1863 was succeeded by the Gorham Manufacturing Company, the complainant, a citizen of the state of Rhode Island. It is alleged that continuously and without interruption for a period of 56 years, the solid or sterling silver ware of the complainant and its predecessors was conspicuously marked or stamped with said trade-mark to designate the particular kind of silver ware manufactured by it; that such trade-mark was at all times displayed upon its silver ware circulars, advertisements, trade publications, and other printed matter, as a result of which the Gorham Manufacturing Company became favorably and extensively known throughout this country as a manufacturer of silver ware of the highest quality; and that the complainant's predecessors were the first in the United States to use said trade-mark upon silver ware. The said allegations of the bill are fairly sustained by the proofs.

The following is a sketch of the trade-mark in controversy:

(Image Omitted)

The bill also alleges unfair competition by the defendants in the use upon their products, an electroplated or silver-plated ware, of the following representation:

(Image Omitted)

The use of such mark by the defendants in connection with the sale of their products is not denied. The principal defenses are: (1) That the three symbols-- the lion passant, the anchor, and the old English letter G-- in juxtaposition, form an English hall-mark, and therefore cannot be adopted in this country as a valid trade-mark; (2) that complainant's marks are not used to indicate the origin or ownership of the articles to which they are affixed, but for the purpose of identifying the class or quality; (3) that a trade-mark consisting of a combination of the figures and letter G in suit is a violation of the treaties between Great Britain and the United States; and (4) noninfringement.

The defenses in their entirety are not only novel, but extremely interesting, and are asserted by counsel for the defendants with vigorous elaboration. But, in the view taken of this case, the principal question arising on the merits is whether the complainant has the legal right to enforce its asserted common-law trade-mark claimed to have been exclusively applied by it first to articles of standard coin silver, and since 1868, to those of sterling quality. Had the complainant the right, for the purpose of designating silver ware of a certain grade, to adopt and use the three symbols-- the lion passant, the anchor, and the capital letter G-- which were the fac simile of a prior British hall-mark of the Birmingham Assay Office? Before dwelling upon the evidence contained in a voluminous record, the general rule may be stated that any one has the unquestionable right to make his merchantable commodities known to the purchasing public by attaching thereto a name, mark, or device not previously used by another on commodities of the same general kind or description. Such device must be for the purpose of enabling the user to impart to his salable article, to which it is affixed, an unmistakable characteristic to the end that there may be positive identification and differentiation from articles of a similar character produced by another. But if the mark or device originated and used by one is afterwards adopted and used on similar articles by another to create the impression that such articles were manufactured or sold by the former, then obviously a fraud or deception is practiced upon the public by the latter such as a court of equity will restrain. Manhattan Medicine Co. v. Wood, 108 U.S. 218, 2 Sup.Ct. 436, 27 L.Ed. 706; Browne on Trade-Marks, pp. 101-162.

The claim of the defendants that the trade-mark was really adopted to identify the class or quality of the silver ware, and not its ownership or origin, is not substantiated by the evidence. Therefore I conceive that the crucial questions arising from the alleged infringement of the trade-mark are: (1) Whether its adaptation as early as 1859, as appears by the proofs, and continuous use in this country by the complainant down to the present time, were in fact an appropriation of a British hall-mark or the essential parts thereof, and therefore not subject to a valid trade-mark; and (2) whether such hall-mark at the time of its simulation by complainant had achieved a reputation in this country such as would mislead the public when buying complainant's silver ware into believing it was buying hall-marked ware.

A temporary injunction was granted herein by Judge Lacombe (176 F. 927) restraining the defendants from using the trade-mark in controversy. The application was heard and considered upon a record which was not materially different from that which is now before this court, save perhaps for the interposition of the British government, the arguments submitted by it, and the refusal by the Patent Office to register complainant's trade-mark-- matters to which reference will later be made in this opinion. In granting the injunction, Judge Lacombe in broad terms expressed the opinion that a manufacturer or dealer in silver ware in the United States is not precluded from adopting as a trade-mark an impression made up of three marks or symbols by the fact that placed side by side they would indicate to a buyer of English silver ware that the article so marked was sterling ware made in the city of Birmingham in 1831. The learned court said that when the dealer 'has used the particular combination on his ware made in this country, for upwards of 40 years, and the same has been accepted by the trade as his identifying mark, without imitation by any one, he is entitled to an injunction at least until final hearing.'

In Kaiserbrauerei, Beck & Co. v. J. & P. Baltz Brewing Co. (C.C.) 71 F. 695, Judge Dallas decided that a mark of identity affixed to a vendible article, which could not be lawfully appropriated for such purpose in a foreign country, could nevertheless be properly appropriated and used as a valid trade-mark in the United States. The Circuit Court of Appeals for the Third Circuit, affirming such decision (74 F. 222, 20 C.C.A. 402), held that the provision in the treaty with Germany that its citizens living in the United States shall receive the same protection as native citizens in matters of trade- -mark, etc., cannot be construed to preclude an alien German from acquiring by prior use in this country a trade-mark in a particular word, though such use would not be allowed in Germany. The principle laid down in the cases cited is applicable to the case at bar.

The evidence conclusively establishes that from the time the mark was first used it was the intention of the complainant's predecessors to make their silver ware of coin and sterling standards favorably known to the public by their trade-mark-- the lion, the anchor, and the letter G-- and that in this intention they have been successful. That the lion passant, when used as a trade-mark in England or elsewhere, is expressive of superior workmanship or superior quality, and that the anchor is known in England to represent the place of manufacture, and that the hall-mark is protected in England by statute-- are not enough to deprive the complainant of the right to use such features, in combination with the old English letter G, as its trade-mark in this country. Sight should not be lost of the fact that such adoption occurred many years since at a time when it may fairly be presumed the Birmingham hall-mark was little known in the United States. It has several times been held by the federal courts that a trade-mark used abroad may be adopted by one in this country in connection with a similar article provided its adoption was in good faith. Richter v. Anchor Remedy Co. (C.C.) 52 F. 455. And though British hall-marks are not strictly trade-marks, this rule is thought analogous.

The Circuit Court of Appeals, affirming Richter v. Anchor Remedy Co., 59 F. 577, 8 C.C.A. 220, held that sale to a limited extent in this country by a foreign manufacturer did not amount to such use or publicity as would indicate an intention to adopt as a trade-mark the marks...