Industrial Rayon Corp. v. Dutchess Underwear Corp.
| Decision Date | 21 January 1937 |
| Citation | 17 F. Supp. 783 |
| Parties | INDUSTRIAL RAYON CORPORATION v. DUTCHESS UNDERWEAR CORPORATION. |
| Court | U.S. District Court — Southern District of New York |
Sullivan & Cromwell, of New York City, and Tolles, Hogsett & Ginn, of Cleveland, Ohio (Inzer B. Wyatt, of New York City, Louis S. Peirce, of Cleveland, Ohio, and David W. Peck and Franklin B. Lincoln, Jr., both of New York City, of counsel), for plaintiff.
Herbert Kaufman, of New York City (Asher Blum and Hugo Mock, both of New York City, of counsel), for defendant.
I dismiss the complaint herein on the merits but without costs.
I. This is a cause in equity between two Delaware corporations involving the alleged infringement by the defendant of the plaintiff's trade-mark Spun-lo registered under the United States Trade-Mark Law — whence flows the subject matter jurisdiction of this court, title 15 United States Code § 81 et seq. (15 U.S.C.A. §§ 81 et seq.) — and a claim, based on the same facts, of unfair competition by the defendant with the plaintiff. The plaintiff asks for an injunction, but not for any accounting.
II. Although there is not diversity of citizenship in this cause, in view of the fact that there is a substantial federal question involved in the trade-mark claim herein, under the teachings of Hurn v. Oursler, 289 U.S. 238, 246, 53 S.Ct. 586, 589, 77 L. Ed. 1148, and L. E. Waterman Co. v. Gordon, 72 F.(2d) 272, 274 (C.C.A.2), affirming (D.C.) 8 F.Supp. 351, 352, 353, I have jurisdictional competence to deal with the claim of unfair competition on its merits and give what I may regard as appropriate relief in respect thereof.
III. The goods involved in this cause are undergarments for women. I find that they are not far apart in price range, and therefore appeal to substantially the same class of purchasers.
It is common ground that these undergarments are similar in texture and appearance, whether made by the plaintiff's customers of the plaintiff's fabric, or by the defendant of its own fabric, and that they reach the retail trade through the same channels.
It is also common ground that on each undergarment there is what was referred to on the trial as a "hanger label" — of a type long used on flimsy knitted garments. This hanger label is a small loop made of tape, by which, if desired, the garment may be hung up on a hook without running the risk of damaging its fabric, either by piercing it or by stretching it unduly at the point of contact with the hook.
Therefore the goods involved in this cause are by their nature and, due to the prices at which they are sold, necessarily in active competition with each other. The relation of the parties to their competing goods are, however, somewhat different.
IV. Since September, 1931, plaintiff has been manufacturing circular knit rayon fabric, spending much money in many kinds of advertising thereof, and selling it, under the trade-mark Spun-lo, to customers who are makers of undergarments for women.
The hanger labels attached by the plaintiff's customers to their garments usually have woven into them the customer's own mark as garment manufacturer, together with the plaintiff's Spun-lo mark as showing the origin of the fabric used. The plaintiff pays one-half of the cost of this label.
The defendant now makes, and for many years has made undergarments for women out of circular knit rayon fabric which it knits out of rayon yarn purchased from a manufacturer thereof. Its Sunglo mark is woven into the hanger labels of its garments.
The plaintiff began to use the name Spun-lo as a trade-mark on circular knit rayon fabric in September, 1931, and registered that name, under the Trade-Mark Act of the United States, as a trade-mark for rayon fabric, on June 6, 1933.
The defendant began using the name Sunglo as a trade-mark on ladies' undergarments made of circular knit rayon fabric in February, 1934, about two years and five months after the plaintiff had adopted the name Spun-lo as its trade-mark, and with the knowledge that the plaintiff had been using it on the same kind of rayon fabric in the manner above described.
On June 17, 1934, the defendant registered Sunglo in the Patent Office as a trade-mark for ladies' rayon underwear.
V. It was not until August 29, 1935, almost four years after the plaintiff had adopted the name Spun-lo for its knit rayon fabric, that one of its employees observed in a trade paper called "Womens Wear Daily" an advertisement by the defendant of underwear for women made of knit rayon fabric called Sunglo.
On September 9, 1935, a written demand was made by the plaintiff on the defendant to cease and desist from its use of the name Sunglo on the ground that it was an infringement of the plaintiff's trade-mark Spun-lo. Responding, the defendant refused the plaintiff's demand and advised the plaintiff that the name Sunglo had been registered as a trade-mark with the United States Patent Office on July 17, 1934, as Trade-mark No. 315,113, and that it would continue to use the name Sunglo on its merchandise.
On October 5, 1935, plaintiff filed a petition with the Patent Office to cancel the registration of Sunglo by the defendant. That petition is now pending undetermined.
On December 17, 1935, plaintiff filed its bill of complaint in this action.
It is clear, therefore, that the plaintiff acted promptly in its attempt to protect its rights.
VI. For the reasons hereinafter stated, I find that the defendant has not been guilty of any act of unfair competition with the plaintiff unless the use of the word Sunglo can be so stigmatized.
The controversy of this cause, therefore, in both its aspects — infringement of trade-mark and unfair competition — is between the plaintiff's mark Spun-lo and the defendant's mark Sunglo.
VII. If Sunglo is not in sound and appearance sufficiently similar to Spun-lo to be an expectable cause of potential confusion between them in the trade wherein they are used, the complaint must, of course, be dismissed, and, if I felt I could so find, that would be an easy method of disposing of this cause. But, when I compare the word Sunglo with the word Spun-lo, it seems to me to be clear that there are similarities between them which undoubtedly do make confusion in such trade expectable.
The two words have the same number of letters and the same number of syllables, and of the six letters in each word five are identic; in the case of each word the accent is on the first syllable; and, perhaps, the most important of all their similarities is that the vowel sounds in each word are exactly the same and come in exactly the same sequence. It may, I think, be fairly said that the two words are not unlike to the eye or the ear.1
It is not necessary to show instances of actual confusion in the trade to establish the plaintiff's right to relief in a cause of this kind, for potentiality of confusion is sufficient in causes of unfair competition, Notaseme Hosiery Co. v. Straus, 201 F. 99, 100 (C.C.A.2), affirmed in this respect 240 U.S. 179, 180, 183, 36 S.Ct. 288, 60 L.Ed. 590; Helmet Co. v. Wm. Wrigley, Jr., Co., 245 F. 824, 829, 830 (C.C.A.6) as well as in causes of trade-mark infringement, Gehl v. Hebe Co., 276 F. 271, 272, 273 (C.C.A.7); Lambert Pharmacal Co. v. Bolton Chemical Corp. (D.C.) 219 F. 325, 326; Taendsticksfabriks A. Vulcan v. Myers, 139 N.Y. 364, 367, 368, 34 N.E. 904.
But it is always comforting for the judge, when questions involving the nuances of words used as trade-marks arise, to have his impressions confirmed, and I find such comfort in this record. For, whilst the instances of actual confusion shown are not very numerous, there is enough evidence to justify empirically the views which I have expressed above as to the expectable confusion between the words Spun-lo and Sunglo when used on goods of the same descriptive quality.
The George B. Peck Company, a department store in Kansas City, advertised women's undergarments of "`Spanlo' Rayon." Upon the plaintiff making inquiry by letter as to the use of the word "Spanlo" and whether it was intended to be Spun-lo, the Peck Company apologized for the spelling, saying it was a typographical error which had been corrected by them in the proof of the advertisement but had not been corrected in the newspaper office. Later, on the same day, the Peck Company wrote again to the plaintiff, stating that the articles which they were advertising were made of Sunglo rayon, adding, "We are indeed sorry for the confusion and error, be assured it was unintentional and will not occur again." This was an instance of complete confusion by the advertising manager of a large department store which led to his advertising defendant's garments under the plaintiff's trade-mark.
The plaintiff's advertising department, in order to feel out the situation, sent a questionnaire around to various retail stores. The advertising manager of Loeb & Hene Company, a department store in Lafayette, Ind., when asked what manufacturer sold them Spun-lo rayon fabric, answered, "The Dutchess Manufacturing Company," and returned this answer on a business reply post card to the plaintiff's advertising manager.
Paul Selver, president of the defendant corporation, testified that a garment made out of Spun-lo rayon "was returned by mistake to his office," allegedly on account of bad workmanship in its manufacture. The attempt of defendant's counsel to correct this on redirect examination failed, and the record as to the mistake is quite clear.
Miss Ferrar, employed by A. B. Sircom Company, Inc., New York City, manufacturers of women's undergarments, testified that she had known of instances where buyers had questioned whether Sunglo and Spun-lo were the same thing. Indeed, the defendant's witness, Miss Bryce, employed in the underwear department of Hahne's Department Store in Newark, N. J., said of women purchasers at that store that "they never usually get the right name, but they get there somehow or other."...
To continue reading
Request your trial