A. Hollander & Son, Inc. v. Philip A. Singer & Bro., Inc.

• Decision Date: 23 September 1935
• Citation: 180 A. 671
• Parties: A. HOLLANDER & SON, Inc. v. PHILIP A. SINGER & BRO., Inc.
• Court: New Jersey Court of Chancery

180 A. 671

A. HOLLANDER & SON, Inc.

v. PHILIP A. SINGER & BRO., Inc.

Court of Chancery of New Jersey.

Sept. 23, 1935.

Syllabus by the Court.

1. The test in infringement of a trademark is whether the alleged infringing trademark, taken as a whole, so far resembles the other mark as to be likely to be mistaken for it by the casual or unwary purchaser.

2. The resemblance need not be so great that one would be deceived who should see the trade-marks or labels side by side. If an ordinary purchaser, looking at the article offered to him, would naturally be led, from the mark or label attached to it, to suppose it to be the product of a rival manufacturer, and would purchase it in that belief, the court will enjoin the use of such mark as fraudulent.

3. The law is well settled that if the manufacturer puts it in the power of the retailer to misrepresent, he is answerable for the probable consequences.

4. Fraudulent intent need not be shown where the necessary and probable tendency of the defendant's conduct is to deceive the public and pass off his goods or business as and for that of the complainant. Unfair competition is fraudulent conduct.

Bill by A. Hollander & Son, Inc., against Philip A. Singer & Bro., Inc.

Decree in accordance with opinion.

Leber & Ruback, of Newark, for complainant.

Edward R. McGlynn, of Newark (Merritt Lane, of Newark, of counsel), for defendant.

STEIN, Vice Chancellor.

This is a suit to restrain the continued infringement of complainant's trade-mark, registered in the United States Patent Office, and to restrain the unfair competition that inheres in the defendant's use of a similar trade-mark to stamp its own product. In addition to the injunctive relief sought, complainant in its bill prayed for discovery concerning the products upon which the defendant stamped or impressed the allegedly infringing trademark and concerning the profits made by the defendant from those products, and prayed further that the defendant be decreed to account and pay unto complainant the profits realized by the latter from the dressing and dyeing of those fur skins and pelts upon which the defendant stamped or impressed the infringing trademark.

There are no controverted facts in this case, save the ultimate fact of infringement. All the facts alleged by complainant in support of the ultimate fact of infringement were admitted by the defendant's stipulation filed in the cause. That stipulation provides that: "The defendant hereby admits all the allegations of fact contained in the Bill of Complaint but does not admit any conclusions of law nor the allegation that defendant's trade-mark infringes upon complainant's trade-mark nor the allegation that complainant is entitled to the relief prayed for. The matters so not admitted are submitted to the Court's determination."

The stipulation further provided that on the return of the order to show cause, allowed on the filing of the bill, both parties might submit skins and advertising literature bearing the several trade-marks set up in the bill of complaint, and that such skins and advertising literature should constitute evidence in the cause, and that: "Upon the Court's comparison of the respective trade-marks and upon the within stipulation the Court shall finally determine complainant's right to relief and shall enter its Final Decree accordingly. A final hearing in any other form is hereby distinctly waived by both parties."

The facts appearing in the bill, admitted by the defendant's stipulation, establish that complainant's business has been conducted continuously since 1896; until 1919 by the copartnership of A. Hollander & Son; and since 1919 by complainant company as the successor in interest to the partnership business. That business consists of receiving from customers furs and skins in a raw state and by means of highly skilled labor and the application of secret formulae and processes converting those skins into finished fur products ready to be made into fur garments. That business is commonly called fur dressing and dyeing. The bill alleges that for more than a quarter of a century the excellence in quality of complainant's products has been universally recognized not alone by dealers, manufacturers, and retailers, but also by the ultimate consumer. The bill also establishes that it is a common thing for women negotiating for the purchase of a fur garment to ask that the inner lining be opened so that inspection might be had of the dyer's trade-mark appearing on the reverse side of the fur skin. For over a quarter of a century complainant and its predecessor firm have stamped and impressed their trade-marks on the skins dressed and dyed by them. This practice is not peculiar to complainant, but obtains generally in the fur industry, each dyer stamping his own distinctive trade-mark on the skins dyed by him. Such stamping of the trade-mark on the skin itself enables the retail purchaser to recognize the product of any particular dyer whose trade-mark is known to him, and also enables the dealer and the manufacturer to distinguish the products of each dyeing concern. Because of such stamping of trade-marks on the skins themselves, both confusion and deception are avoided.

One of the principal products put out by complainant is a muskrat, sheared and dyed black so as to resemble Alaskan seal. Complainant and its predecessor firm have been producing that item continuously since 1913. There are other concerns that have been producing the same kind of article and it has borne for a great many years (at least since 1908) the trade-name "Hudson seal." Complainant's Hudson seal product. is highly regarded and has been greatly in demand by consumers, so much so that complainant's trade-mark impressed on the backs of skins has become known to the retail purchaser and is associated in the latter's mind with the complainant's product. That trade-mark, which complainant seeks to protect by this litigation, has been stamped by complainant and its predecessor upon all their Hudson seals dressed and dyed from 1913 to the present time. That trade-mark, though so used continuously from 1913 to the present time, was not registered until recently. On February 28, 1933, it was duly registered with the Commissioner of Patents of the United States and a certificate of registration issued to complainant, which certificate is by law effective for twenty years from the date of registration.

It is established by complainant's bill and defendant's admission that since 1913 complainant's trade-mark has been extensively advertised not only in the trade by trade advertising, but also to the consumer public by advertisements in daily newspapers and magazines and by exhibitions in department stores, museums, and educational institutions, and that since 1913 that trade-mark has been stamped on more than seventy-five million muskrat skins dressed and dyed into Hudson seal. Complainant alleges that in consequence of this (and the court can well believe it aside from the fact that the defendant has admitted the allegation) there abides in the mind of the buying public a general impression and recollection of complainant's trademark and that the trade-mark is to the public mind suggestive of complainant's Hudson seal product and of its factories as the product's place or origin.

The defendant company commenced the production of Hudson seal in 1922 and used the trade-mark set forth in paragraph 8 of the bill of complaint, a trade-mark closely resembling complainant's trademark. The use, however, was a very short one because defendant abandoned its Hudson seal business in 1922. From 1922 until July, 1934, the defendant produced no Hudson seal. For the first six years of that period and for reasons of its own, it did not deal in Hudson seal. From September, 1928, to July is 1934, the defendant made no Hudson seal because it was under contract with complainant not to do so until December 1, 1933, and was also placed under a final injunction by this court entered in June, 1929, restraining it at the suit of this complainant from producing Hudson seal prior to July 1, 1934.

In July, 1934, the defendant resumed the production of Hudson seal and in the prosecution of that business adopted and has been using since July 1, 1934, the trademark complained of. That trade-mark defendant has been extensively advertising and also stamping it on the reverse sides of the skins processed by it. Those skins in turn have been converted into fur garments and distributed throughout the country. Complainant promptly protested in July and in August of 1934 against the use of the defendant's trade-mark, claiming it to be an infringement upon its own. The defendant's president promised to discontinue the use. That promise was not kept and complainant thereupon, by its counsel, protested by letter on September 26, 1934, demanding that the use of the objectionable trade-mark be discontinued and threatening suit for an injunction if that were not done. Thereafter complainant made several efforts to prevail upon the defendant to stop the protested use. Defendant's president stalled along, postponing final answer to the protest, saying as recently as the end of February, 1935, that he might voluntarily discontinue the objectionable trade-mark and adopt another in its stead. Failing so to do, the bill in this case was filed on March 13, 1935.

Complainant charges in paragraph 12 of the bill (and this is not admitted by the defendant's stipulation, but, on the contrary, submitted to the court's eye for determination) that the defendant's trademark is so similar to complainant's trademark in size, geometrical design, and in general features as to confuse, mislead, or deceive, or tend to have that effect upon "the ordinary purchaser having but a general recollection of complainant's trademark and not having presented to him at one and the same time that trade-mark and the defendant's simulating...