Merrimac Hat Corp. v. Crown Overall Mfg. Co.
| Decision Date | 18 April 1950 |
| Citation | 91 F. Supp. 49 |
| Parties | MERRIMAC HAT CORPORATION v. CROWN OVERALL MFG. CO. et al. |
| Court | U.S. District Court — Southern District of New York |
Harry Price, New York City, for plaintiff.
Klein, Alexander & Cooper, New York City (Clifton Cooper, New York City, Frank Zugelter, Cincinnati, Ohio, and Stanley E. Zimmerman, New York City, of counsel), for defendants.
Defendant Crown Overall Manufacturing Co. moves to dismiss the amended complaint on the grounds that it fails to state a claim upon which relief can be granted and that the court lacks jurisdiction of the subject matter or, in the exercise of its discretion, should not entertain it.
The amended complaint purports to set forth three causes of action. The first alleges that plaintiff has been manufacturing hats and hat bodies since 1856 and, in connection therewith, has used certain trademarks, which consist in part of the word "excello" and the representation of a crown; that defendants are the owners of certain trade-mark registrations which allegedly cover the words "crown" and "excello" and the representation of a crown; that "Defendants are claiming and alleging likelihood of confusion with others including plaintiff using said words or terms and are further threatening and filing suit against those employing such words and expressions as exemplified by" plaintiff's marks; that in 1946 plaintiff, for the further protection of its trade-marks, filed in the United States Patent Office applications which were allowed and published in the Official Gazette in 1948; that thereafter defendants filed oppositions to said applications, claiming to have exclusive rights in the words "crown" and "excello" and the representation of a crown as applied to all clothing, and that the "use or registration by Plaintiff of said words or representations would be likely to produce confusion and mistake in the minds of the public and to deceive purchasers"; that "there is inherent in Defendants' allegations in said oppositions a threat of infringment and of suit for infringment and injunction"; that the allegations in the notices of opposition have cast a cloud upon plaintiff's title to its trade-marks and its right to use said trade-marks independently and apart from its right to register said trade-marks.
The prayer for relief asks for judgment (a) quieting plaintiff's common law right, title and interest in and to its marks, (b) declaring plaintiff has the right to enjoy quiet possession of its marks and (c) enjoining defendant from interfering with its mark or threatening plaintiff with suit for infringement.
In the second cause of action plaintiff asks for a judgment invalidating and cancelling defendants' registrations and declaring that plaintiff's marks do not infringe any common law or registered trademarks of defendants.
It is apparent that, in addition to the injunctive relief heretofore referred to, plaintiff is seeking a declaratory judgment to the effect that it has a valid common law right to use its marks and that defendants' registrations are void. No claim for unfair competition is set forth in the complaint. Since diversity of citizenship has been alleged, the only question that remains in determining the jurisdiction of the court is whether or not a justiciable controversy exists between the parties.
It is unnecessary on this motion to determine whether or not the issues framed in the opposition proceeding before the Patent Office are sufficient to establish such a controversy1. Plaintiff has alleged in its complaint that "Defendants are claiming and alleging likelihood of confusion with others including plaintiff using said words or terms and are further threatening and filing suit against those employing such words and expressions as exemplified by" plaintiff's marks. This allegation must be accepted as true on this motion to dismiss. The mere threat of suit against plaintiff is sufficient to warrant a finding that a justiciable controversy exists.2
The motion to dismiss the first two causes of action for lack of jurisdiction and for failure to state a claim upon which relief can be...
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Alberto-Culver Company v. Andrea Dumon, Inc., Civ. A. No. 68 C 544.
...anti-trust claims or counterclaims have been dismissed for similar lack of specificity. See, e. g., Merrimac Hat Corp. v. Crown Overall Mfg. Co., 91 F.Supp. 49, 52 (S.D.N.Y.1950), aff'd 186 F.2d 505 (2d Cir. 1951); Sheldon-Claire Co. v. Judson Roberts Co., 88 F. Supp. 120, 122 Defendant att......
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Topp-Cola Company v. Coca-Cola Company
...Co. v. Frusetta, 290 F.2d 689 (9 Cir., 1961); Wells v. Universal Pictures Co., 166 F.2d 690 (2 Cir., 1948); Merrimac Hat Corp. v. Crown Overall Mfg. Co., 91 F.Supp. 49 (S.D.N.Y.1950), aff'd 186 F.2d 505 (2 Cir., 1951). In this case, however, it is clear from the affidavits of the parties an......
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Heller v. Scanlon
...be granted. Upon this motion the Court must accept as true all of the facts alleged in the complaint. Merrimac Hat Corporation v. Crown Overall Mfg. Co., D.C.N.Y. 1950, 91 F.Supp. 49. It will therefore be assumed that as far as this plaintiff is concerned there is no basis for the exaction ......
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