Gort Girls Frocks v. Princess Pat Lingerie

• Decision Date: 12 May 1947
• Docket Number: Civ. 39-565.
• Citation: 73 F. Supp. 364
• Parties: GORT GIRLS FROCKS, Inc. v. PRINCESS PAT LINGERIE, Inc.
• Court: U.S. District Court — Southern District of New York

73 F. Supp. 364

GORT GIRLS FROCKS, Inc. v. PRINCESS PAT LINGERIE, Inc.

Civ. 39-565.

District Court, S. D. New York.

May 12, 1947.

Katz & Heimowitz, of New York City (Simon Katz, of New York City, of counsel), for plaintiff.

Lackenbach & Hirschmann, of New York City (Armand E. Lackenbach, of

New York City, of counsel), for defendant.

CAFFEY, District Judge.

In this action, brought under the U. S. Trade Mark Act of February 20, 1905, Title 15 U.S.C.A. §§ 81-109, for infringement of plaintiff's registered trade-mark and for unfair competition, plaintiff moves, upon serving its complaint, for a preliminary injunction.

The trade-mark consists of the words "Princess Pat" underneath an heraldic emblem or shield. The two capital P's are in rather fanciful script; they look very much as though a capital P had been superimposed upon a capital L. The other letters have no particular distinctiveness. Registration was granted to Morris Silver on June 29, 1937, for "Children's and Junior Misses' Dresses, Gowns, Wraps, Coats, of all Kinds and of all Materials, and Hats, in Class 39, Clothing." It is alleged in the complaint that the trade-mark has been continuously used since July 16, 1936, first by plaintiff's predecessor, and then by plaintiff, in their business of designing, creating and selling at wholesale children's and junior misses' dresses, gowns, wraps of all kinds and of all materials.

Plaintiff asks that defendant be enjoined "from directly or indirectly manufacturing, selling, distributing or advertising its merchandise bearing the name, label or mark, `Princess Pat,' or any corporate or business name containing the words, `Princess Pat,' or any other mark or name which colorably imitates plaintiff's trade-mark."

To sustain an action for the infringement of a registered trade-mark it must appear that plaintiff owns the mark (Perry v. American Hecolite Denture Corporation, 8 Cir., 78 F.2d 556, 558), and also, of course, that the registration is valid. Although registration furnishes a presumption of both ownership and validity, it does not conclusively establish either, and both may be questioned in any action in which validity is relied upon, and the burden of proof is upon the plaintiff to establish these elements (House of Westmore, Inc., v. Denney, 3 Cir., 151 F.2d 261, 265, and James Heddon's Sons v. Millsite Steel & Wire Works, 6 Cir., 128 F.2d 6, 9). Where plaintiff's title rests upon an assignment from the original registrant, it has been held that the assignment must conform to the requirements of Section 90 of the Act, i.e., it must be in writing, duly acknowledged, and have been assigned in connection with the good will of the business in which the mark was used. Keystone Macaroni Mfg. Co. v. V. Arena & Sons, D.C.E.D.Penn., 27 F.Supp. 290, 293, and Perry v. American Hecolite Corporation, supra, 78 F.2d at pages 558, 559.

In his application for registration, dated September 5, 1936, Silver alleged that he "has adopted and used the trade-mark shown in the accompanying drawing for children's and junior misses' dresses," etc., and that "the trade-mark has been continuously used and applied to said goods since July 15, 1936." Defendant asserts that this was a false statement and that the trademark is, therefore, invalid. This assertion is based on a report upon plaintiff by Dun & Bradstreet, Inc., a mercantile agency, in which it is alleged that, upon the failure in June, 1933, of William Gort & Company, Inc., of which Silver was secretary and treasurer, Silver took employment with Moe Schwartz Corporation in the same line, but in late 1938 rejoined Gort, becoming treasurer of plaintiff. Although this report is mere hearsay, defendant, relying upon it, contends that Silver could not have been in business in 1936 and, therefore, could not have truthfully said that he had used the mark on children's and junior misses' dresses continuously since July 15, 1936.

Silver, who is now plaintiff's treasurer, replies that this report is erroneous; that the truth is that his business association with Mr. Gort, plaintiff's president, has been continuous and uninterrupted since July, 1936; that on September 5, 1936 he (Silver) had already been associated with plaintiff's predecessor, a New York corporation having the same name as plaintiff and engaged in the same line of business; and that since July 15, 1936, the trade-mark has been continuously used in connection with such goods. It will be noticed that he does not say by whom it was so used, or that he himself was ever engaged in that line of business.

The complaint, however, which is verified by William Gort, plaintiff's president, alleges that plaintiff's predecessor adopted and began to use the trade-mark on all of its merchandise on or about July 15, 1936, and that it has been continuously used since then, at first by plaintiff's predecessor and then by plaintiff.

These statements as to use are too conflicting to justify a finding that Silver made a false statement in his application for registration. The presumption of validity, created by the registration of the mark, must prevail, for defendant has not overcome that presumption by competent evidence.

Next, in reliance upon the same report of Dun & Bradstreet, defendant asserts that plaintiff cannot be the owner of the trade-mark, for it could not have been assigned by Silver in connection with the good will of any business in which it was used by him, since he was not engaged in any business in 1936. In his affidavit Silver swears that upon the granting of the registration he executed and acknowledged an assignment of the trade-mark to plaintiff's predecessor; that it was prepared by a lawyer in this City, whom he has not been able to locate, the last heard of him being that he had been in the Armed Forces of the United States, and that many of the records of plaintiff's predecessor, of which the assignment was but a part, had been left with him. It will be seen that Silver does not say that the trade-mark was assigned in connection with the transfer of any business conducted by him — an essential element in the transfer of a trade-mark. The alleged assignment of the trade-mark may, therefore, have been a nullity. I am unwilling, however, upon such a meager record, to hold that plaintiff is not the owner of the trade-mark, for there are other and much stronger reasons for denying its motion for a preliminary injunction.

Plaintiff alleges in its complaint that for many years it and its predecessor have been engaged in the business of designing, creating and selling at wholesale "children's and junior misses' dresses, gowns, wraps of all kinds and of all materials." Its letterhead bears the words "Makers of Children's Dresses Six to Sixteen." The advertisements of its goods feature pictures of children and misses and refer to sizes, 2 to 16, 3 to 16, 1 to 3, 4 to 8, 3 to 6½, 7 to 14 and 10 to 16. When prices are stated (they appear to be retail prices), they are very low — $1.09, 59 cents, $1 and $2.98. Plaintiff's name does not always appear in the advertisements.

Defendant is a New York corporation, organized on December 1, 1944. It is the successor of a partnership having the same name, whose certificate was filed on February 1, 1944, and which then began to manufacture and sell lingerie for women, in sizes from 32 to 38, using the name "Princess Pat." In his affidavit defendant's president says that its merchandise is what is known in the trade as high quality "upstairs" merchandise; that it has always been sold at prices (evidently, also, retail prices) of approximately $5 and upwards to as much as $20 (although one advertisement shows a slip at $3.98); that the expression "upstairs" indicates that the merchandise is of the type and price sold only in the fine merchandise carrying departments of a retail establishment, whereas the term "downstairs" indicates to both the merchant and the consumer that the merchandise is of inferior quality, of extremely low price, usually sold in the basement "bargain" departments of retail merchandising establishments. The advertisements of its goods feature young women, not children or junior misses; prices are usually not stated; the words "Princess Pat Lingerie Co. Inc." appear in most, if not all, the advertisements.

As defendant contends, it is quite apparent that the merchandise manufactured and sold by the plaintiff and that manufactured and sold by the defendant are in fields far apart, that the price ranges are also far apart and that the consuming public who ultimately purchase the merchandise fall into completely different categories. No one who wishes to buy a child's or a junior misses' dress would ask to see a woman's dress. Nor would a woman seeking to buy a dress for herself ask for a junior misses' dress, except in a case where she is so small that a woman's dress is too large for her. There is little danger that a purchaser, seeing "Princess Pat" labels on both women's and junior misses' dresses, would be confused or misled into a belief that both were made by the same manufacturer. Certainly, here, the reputation of plaintiff's dresses would not be endangered if the purchaser should be misled into the belief that the defendant's much higher priced dresses were manufactured by plaintiff. It might be different, if the situation were reversed.

In N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 2 Cir., 77 F. 869, 871, Judge Lacombe said: "Necessarily, in applying the test suggested, viz. the likelihood of deception of an `ordinary purchaser exercising ordinary care,' regard must be had to the class of persons who purchase the particular article for consumption, and to the circumstances ordinarily attending their purchase."

Defendant has submitted several registrations of the words "Princess Pat", all issued prior to July 15, 1936, and all relating to Class 39, Clothing — (1) for dresses, issued to Nat Goldston & Co., Inc., of New York City...