Isador Straus v. Notaseme Hosiery Company
| Decision Date | 21 February 1916 |
| Docket Number | No. 184,184 |
| Citation | 240 U.S. 179,60 L.Ed. 590,36 S.Ct. 288 |
| Parties | ISADOR STRAUS and Nathan Straus, Trading and Doing Business under the Firm Name and Style of R. H. Macy & Company, Petitioners, v. NOTASEME HOSIERY COMPANY |
| Court | U.S. Supreme Court |
Mr. Edmond E. Wise for petitioners.
Messrs. E. Hayward Fairbanks and James H. Griffin for respondent.
This is a bill in equity brought by the Notaseme Hosiery Company to restrain infringement of a registered trademark and unfair competition alleged to have been practised by the petitioners, and to recover damages and profits. The plaintiff's trademark, as registered, was a rectangle with a black band running from the left hand upper to the right hand lower corner, the upper and lower panels on the two sides of the band being printed in red. As used, it contained the word 'Notaseme' in white script upon the black band, with the words 'Trade Mark' in small letters upon the white, and beneath the label was printed 'Reg. U. S. Pat. Office.' In fact registration had been refused to the label with the word 'Notaseme' upon it, that word being merely a corrupted description of the seamless hosiery sold. The defendants, among other items of a large retail business in New York, sold hose with seams, which they advertised under the name 'Irontex.' After this name had been adopted, in pursuance of their request designs were submitted to them and one was chosen. It turned out that this was made by the printer who had made the Notaseme label. It also was a rectangle with a diagonal black band and red panels, the band in this case running from the right hand upper corner to the left hand lower, and having the word 'Irontex' in white script upon the band and 'The hose that—wears like iron' printed in black upon the two triangles of red. The defendants never had seen or heard of the plaintiff, its label or its goods, until November, 1909, when they were notified by the plaintiff that they were infringing its registered trademark. They ultimately stood upon their rights.
At the original hearing in the circuit court it was held that the plaintiff had embodied such a misrepresentation in the trademark as used that it would not be protected, and that unfair dealing was not made out. This decision was reversed by the circuit court of appeals on the ground that although the evidence did not show actual deception, the label used by the defendants so far resembled the plaintiff's that it would have deception as its natural result, and that the plaintiff was entitled to relief whether the trademark on its label was good or bad as such. 119 C. C. A. 134, 201 Fed. 99. The plaintiff was allowed to recover profits from a reasonable time after the defendants had notice of the similarity of the two designs, which was put at January 1, 1910. 209 Fed. 495, 131 C. C. A. 503, 215 Fed. 361.
We agree with the circuit court that the plaintiff is not in a position to recover for an infringement of a registered trademark. The mark that it used held out to the public as registered in the Patent Office precisely the element that had been rejected there. It affirmed that the authority of the United States had sanctioned that for which that authority had been refused, and by grasping at too much lost all, so far as this case is concerned. Holzapfel's Compositions Co. v. Rahtjen's American Composition Co. 183 U. S. 1, 8, 46 L. ed. 49, 53, 22 Sup. Ct. Rep. 6. The liability of the defendant must be derived from unfair competition if it exists.
That it was unfair to continue the use of a label so similar in general character to the plaintiff's we are not disposed to deny. But it does not follow that the defendants are chargeable with profits as a matter of course. Very possibly the statutory rule for wrongful use of a trademark may be extended by analogy to unfair competition in a proper case. But, as the ground of recovery in the latter instance is that the defendant has taken some undue advantage of the plaintiff's reputation, or that of his goods, and as the nature and extent of the...
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