Loonen v. Deitsch

• Decision Date: 02 May 1911
• Citation: 189 F. 487
• Parties: LOONEN v. DEITSCH et al.
• Court: U.S. District Court — Southern District of New York

189 F. 487

LOONEN v. DEITSCH et al.

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

May 2, 1911

Joseph L. Levy, for defendants.

HAND District Judge.

The defense here is based upon six lines: First, that the mark is bad because adopted for purposes of deceit and therefore not primarily a mark of ownership at all; second, because the use has not been sufficiently shown to justify the presumption of a trade-mark; third, because the complainant, being guilty of fraud, has no standing in a court of equity; fourth, because the original use was to indicate only Comilo brushes and could not be extended to bone brushes, after the defendants had begun to make them; fifth, because it is against public policy to allow the Red Cross to become a mark at least without 'lawful right' prior to 1905, which has not here been shown; sixth, because a man may not use more than two marks on the same class of goods.

As to the first point, Loonen swears that he adopted the mark because his star mark was too small, and he wanted something showy to catch the eye. Though he denies that he supposed the symbol meant anything hygienic or sanitary, I cannot help thinking that he did attach some such meaning to its use in spite of his disclaimer. It is almost incredible that he should otherwise have chosen that particular mark for that particular purpose. However that may be, the question at this time is not what he meant but what he did. There is without a doubt a suggestion in the term that is related to asepsis and sanitary conditions, and it is almost certainly the case that the commercial uses of the symbol arose from the fact that the Red Cross Society was concerned with field surgery and with the care of, and supplies for the sick and wounded in battles and great public catastrophes.

All such commercial uses have, I believe, been of a kind congruous and analogous to the activities of the society itself, or at least vaguely suggestive of asepsis and general cleanliness. No one, for example, would be likely to sell Red Cross umbrellas, or Red Cross neckties or Red Cross ink. Those goods which are benefited by cleanliness and hygienic preparation are the only ones which so far as I know have been covered by the mark. The spread of popular information regarding the therapeutic value of cleanliness has created a strong predilection for anything suggestive of such methods. Merchants have been quick to take advantage of this education of the public and to indicate that their wares partake of such a character. The Red Cross is an easily caught symbol with an indefinite atmosphere, a kind of aseptic aura connotating clean preparation and careful protection from dirt. The complainant did only what others have done in exploiting that popular conviction, and the conclusion is pretty clear that those who so selected it not only had some such reason in mind, but succeeded in making the suggestion they intended to others. That, however, is not enough to make the mark bad. Of course it must not be descriptive; but suggestion is one thing, and description, another. A good collection of the authorities may be found in Trinidad Asphalt Mfg. Co. v. Standard Paint Co., 163 F. 977, at pages 986-988, 90 C.C.A. 195; Johnson v. Seabury, 71 N.J.Eq. 750, 67 A. 36, 12 L.R.A. (N.S.) 1201, 124 Am.St.Rep 1007, does not decide the question, because the court treated the case as one of secondary meaning. Perhaps that was due to the fact that originally the complainant had deliberately stated that the mark was used with the authority of the society, but the case still remains inconclusive here. Johnson v. Brunor (C.C.) 107 F. 466, is too scantily reported to know what was the basis of Judge Lacombe's decision. Nor does Johnson v. Bauer & Black, 82 F 662, 27 C.C.A. 374, pass upon it. The authorities therefore appear to be inconclusive. Suggestiveness not being a defect, the question comes down, therefore, to this: Does the mark actually mean that the society is in any way concerned with the manufacture of the goods? I think not. We have become familiar with it in the past for many other uses than that of the society, though happily such uses will now slowly disappear. It has been used on hospital ambulances, upon medicaments, upon doctors' motor cars, upon barber shops, upon laundries, and for military field service not connected with the Red Cross Society. In short, until the legislation of 1905 (Act Jan. 5, 1905, c. 23, 33 Stat. 599 (U.S. Comp. St. Supp. 1909, p. 1038)), it had been quite instinctively adopted for many uses which were congruous with the chief objects of the society, but which did not indicate that the society had anything to do with them, or certainly with the frequency of the use ceased to do so. Finally, Congress has clearly recognized that fact by permitting all those who prior to 1905 had used the mark lawfully, to continue. This appears beyond question in the act of June 23, 1910, c. 372, 36 Stat. 604. Such 'lawful use' does not imply the consent of the society, but only that there should be such use as would create a mark were it not the Red Cross.

Therefore, the mark is not invalid as being either illegal or deceitful in itself.

The next point is of the insufficiency of the use proved. I cannot understand the defendants' position in this regard, for it is hardly comprehensible that they actually suppose, as they keep repeating that only three shipments were made. All the complainant's witnesses testify to a continuous shipment and sale of toothbrushes so marked, either Comilo or bone, from August, 1899, down to the beginning of the suit. The single thread of justification for this disregard of all that testimony is the fact that Lotter from the books identified the entry of the first shipment of each number, '42,' '2742,' and '1498.' That this was his only purpose is apparent to anyone who reads the testimony in the least impartially or as a whole, because no one can construe the testimony as confining the shipments to those three without perversely twisting its sense.

The third defense is of the complainant's bad faith, disqualifying him from relief in a court of equity. This is to a large extent involved in the prior consideration of the mark, and in so far forth it falls with a decision that the mark is good, as neither descriptive nor misleading. There is, however, the question of whether it was fraudulent to add the words 'the Red Cross Brush,' or 'Red Cross,' to the symbol itself. The phrase 'Brush of the Red Cross' is quite a different matter from 'Red Cross Brush' and Loonen only used the latter. 'Brosse de lar Croix Rouge' does not mean 'Brush of the Red Cross,' but 'Red Cross Brush.' It would be meaningless in French to say 'Rouge Croix Brosse,' and on that account a strictly literal translation of the French phrase which Loonen used does not correctly represent even what he did in France. 'Red Cross Brush' is like 'Red Cross Pharmacy' or 'Red Cross Plaster;' it means as much and no more that the brush has anything to do with the Red Cross Society, as the symbol alone, for it neither adds to, nor takes from, the suggestion and the connotation of the symbol itself. There was then in this no more fraud than if the legend had been omitted.

The fourth defense is that the mark was specific to the Comilo brush, and its use upon the bone brush, an attempt to create a new mark. Before 1904 the only brushes bearing the mark had been the Comilo, and it was coupled with the words 'The Red Cross Brush.' It does not certainly appear that all Comilo brushes bore the mark and legend, though I think it fairly plain from Gibson's testimony that if any such brushes did not bear the mark th...