Maternally Yours v. Your Maternity Shop

Decision Date06 June 1956
Docket NumberDocket 23796.,No. 196,196
Citation234 F.2d 538
PartiesMATERNALLY YOURS, Inc., Plaintiff-Appellee, v. YOUR MATERNITY SHOP, Inc., Defendant-Appellant.
CourtU.S. Court of Appeals — Second Circuit

COPYRIGHT MATERIAL OMITTED

Hartman, Sheridan & Tekulsky, New York City (Asher Blum, Mock & Blum, New York City, of counsel), for defendant-appellant.

Gallop, Climenko & Gould, New York City, Milton S. Gould, Herbert L. Scharf, of counsel, New York City, for plaintiff-appellee.

Before CLARK, Chief Judge, and MEDINA and WATERMAN, Circuit Judges.

WATERMAN, Circuit Judge.

This action involves a claim of trade-mark infringement under the Lanham Act, 15 U.S.C.A. § 1051 et seq., and a claim of unfair competition presumably governed by the law of New York.1 Jurisdiction over the trade-mark infringement claim rests on 15 U.S.C.A. § 1121 and 28 U.S.C.A. § 1338(a), while jurisdiction over the related unfair competition claim is based on 28 U.S.C.A. § 1338 (b), if not also on the Lanham Act.2

Plaintiff, Maternally Yours, Inc., is a New York corporation engaged in the retail merchandising of maternity apparel in the New York metropolitan area. A predecessor partnership commenced doing business under the name "Maternally Yours" in Bronx, N. Y., in October, 1945. The partnership filed an application for registration of the trade-mark "Maternally Yours" in December, 1945, and this trade-mark was duly registered in plaintiff's name in May, 1949. The idea of a specialized retail shop selling only maternity wear was new — "Maternally Yours" was one of the first shops of its kind in the New York area, if not in the country. Business prospered from the outset, and new stores were added. By 1954 plaintiff operated ten stores in the New York metropolitan area under the name "Maternally Yours."

Defendant, Your Maternity Shop, Inc., opened a maternity wear store in New Rochelle, N. Y., in September, 1946, under the name "Your Maternity Shop." In October, 1946, plaintiff served formal notice of infringement on defendant at its New Rochelle store, but defendant continued to operate under the name "Your Maternity Shop." In November, 1946, defendant opened a store within two blocks of plaintiff's Bronx store, and in subsequent years defendant continued to expand its business. Telephone listings were made under "Maternity Shop Your" as well as "Your Maternity Shop." In 1954 defendant was operating five maternity wear stores under the name "Your Maternity Shop." Four of these stores were located in the New York metropolitan area and the fifth in Philadelphia, Pa.

Plaintiff brought this action to enjoin defendant from infringing plaintiff's alleged common-law trade-mark from 1945 to the present and from infringing plaintiff's registered mark subsequent to its registration in 1949, and for an accounting for damages and profits resulting from the alleged infringements. The trial judge found in favor of the plaintiff on both the trade-mark infringement and unfair competition claims, and issued a decree enjoining defendant from using the name "Your Maternity Shop" in connection with the sale or advertising of maternity apparel, and ordering an accounting for damages and profits by a special master.

Defendant contends that plaintiff's registration is void because plaintiff's application falsely stated that "The trade-mark has been continuously used and applied to Maternity Apparel consisting of dresses, slips, bloomers, toppers, lounging robes, housecoats, girdles, brassieres, nightgowns in applicant's business since Nov. 27, 1945." The only evidence of any use of the trade-mark "Maternally Yours" prior to the filing of this application in December, 1945, concerned the sale and mailing of a maternity "jumper" to a customer in Newark, N. J. Defendant contends that this sale was an intrastate sale, completed by over-the-counter delivery, but the trial judge apparently believed the testimony that the sale had been consummated by an interstate mail delivery. A single instance of interstate use, when the accompanying circumstances indicate an intent to continue the use, has been held sufficient to justify registration of a trade-mark. Worden v. Cannaliato, 1923, 52 App.D.C. 254, 285 F. 988, 990; Montgomery Ward & Co. v. Sears, Roebuck & Co., 1931, 49 F.2d 842, 18 C.C.P.A., Patents, 1386. Moreover, the mere fact of plaintiff's registration created a strong presumption of validity, which defendant did not rebut. See 15 U.S.C.A. §§ 1057(b), 1115(b); Pastificio Spiga Societa Per Azioni v. De Martini Macaroni, 2 Cir., 1952, 200 F.2d 325.

Defendant also contends that plaintiff's registration is invalid because of the prior registration of the trade-mark "Maternelle" by DuBarry Frock Corporation. The Patent Office declined to register plaintiff's mark from the time of application in 1945 until May, 1949, because of the similarity between "Maternelle" and "Maternally Yours." In 1949, however, the Patent Office determined that "Maternelle" had been abandoned and registered plaintiff's mark. Defendant argues that this determination was based entirely upon the failure of the successor of DuBarry Frock Corporation to obtain and record a written assignment of the trade-mark. Whether this view is correct or not as a matter of fact is not determinative, since defendant has completely failed to prove fraud on the part of the plaintiff or other facts which would overcome the statutory presumption of validity of plaintiff's registration as well as the prima facie correctness of Patent Office proceedings.

Plaintiff's right to injunctive relief under the Lanham Act, 15 U.S.C.A. § 1114(1), depends upon a determination that the defendant's use of "Your Maternity Shop" in connection with the sale and advertising of maternity apparel "* * * is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods * * *." It is not necessary to show actual cases of deception or confusion, Admiral Corp. v. Penco, Inc., 2 Cir., 1953, 203 F.2d 517, 520; LaTouraine Coffee Co. v. Lorraine Coffee Co., 2 Cir., 1946, 157 F.2d 115, since the test is the likelihood that an appreciable number of ordinarily prudent purchasers will be confused. G. B. Kent & Sons, Limited v. P. Lorillard Co., D.C. S.D.N.Y., 1953, 114 F.Supp. 621, 626, affirmed per curiam 2 Cir., 210 F.2d 953; Miles Shoes, Inc., v. R. H. Macy & Co., 2 Cir., 1952, 199 F.2d 602; Eastern Wine Corporation v. Winslow-Warren, Ltd., 2 Cir., 1943, 137 F.2d 955, 960, certiorari denied 1943, 320 U.S. 758, 64 S.Ct. 65, 88 L.Ed. 452; United Drug Co. v. Obear-Nester Glass Co., 8 Cir., 1940, 111 F.2d 997, 999, certiorari denied 311 U.S. 665, 61 S.Ct. 22, 85 L.Ed. 427.

The trial judge found that "Defendant's use of the trade-mark `Your Maternity Shop' was misleading, caused confusion, and did divert trade from plaintiff" and that "Defendant, with knowledge of plaintiff's trade-mark, adopted the trade name `Your Maternity Shop' and located its store in Bronx County within two blocks of plaintiff's store, imitated plaintiff's format and slanted script in its advertising, used similar packing boxes, and adopted confusing telephone listings, all with the obvious intention of misleading the public and diverting trade from the plaintiff." We think that the result reached was correct, although we would place less emphasis upon the subjective intent of the alleged infringer. An intent on the part of an alleged infringer to palm off his products as those of another is, of course, a relevant factor in determining the likelihood of consumer confusion.3 Best & Co. v. Miller, 2 Cir., 1948, 167 F.2d 374, 377; L. E. Waterman Co. v. Gordon, 2 Cir., 1934, 72 F.2d 272, 273; and see Hyde Park Clothes, Inc., v. Hyde Park Fashions, Inc., 2 Cir., 1953, 204 F. 2d 223, 226 et seq. But it is only one of the factors which should be carefully weighed, such as the degree of similarity between the trade-marks in appearance and suggestion, the strength of the plaintiff's mark, the area and manner of concurrent use, and the degree of care likely to be exercised by purchasers. See Restatement of Torts § 729.

In this case the similarity of the names is not so marked as to itself create the probability that reasonably prudent consumers would be confused. But when the relatively circumscribed area of concurrent use (the New York metropolitan area), the narrow specialty market within that area to which the concurrent use was largely confined (retail maternity apparel shops), the close proximity of many of the stores, the novelty of plaintiff's trade-mark, and the seemingly studied imitation by defendant of plaintiff's signs, labels, boxes, advertising slogans, and telephone listings, all are taken into account, the likelihood of confusion is adequately established. Evidence of actual confusion bolsters this conclusion; one consumer testified to being confused; there was evidence that telephone information operators confused the names on a substantial portion of calls for information; and there was evidence that numerous mail and packages had been mis-addressed or mis-delivered. Thus we conclude that defendant infringed plaintiff's registered trade-mark "Maternally Yours" subsequent to its registration in May, 1949.

Unfair Competition

Defendant contends that the district court had no jurisdiction over the unfair competition claim because it originated prior to the registration of plaintiff's trade-mark in 1949. 28 U.S.C.A. § 1338(b) confers jurisdiction of "a claim of unfair competition when joined with a substantial and related claim under the copyright, patent or trade-mark laws." Emphasis added. We think that the trade-mark infringement claim in this case is a substantial and related claim, and hence the district court had jurisdiction over the unfair competition claim despite the fact that it originated prior to the trade-mark registration. The purpose of § 1338(b) as stated by the...

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