N. Hess' Sons, Inc. v. Hess Apparel, Inc., 82-1766

• Decision Date: 10 July 1984
• Docket Number: No. 82-1766,82-1766
• Citation: 738 F.2d 1412,223 U.S.P.Q. 1006
• Parties: N. HESS' SONS, INC., Appellant, v. HESS APPAREL, INC., Appellee.
• Court: U.S. Court of Appeals — Fourth Circuit

Page 1412

738 F.2d 1412

223 U.S.P.Q. 1006

N. HESS' SONS, INC., Appellant, v. HESS APPAREL, INC., Appellee.

No. 82-1766.

United States Court of Appeals, Fourth Circuit.

Argued Jan. 12, 1984.

Decided July 10, 1984.

Donald A. Kaul, Washington, D.C. (Peter J. Klarfeld, Brownstein, Zeidman & Schomer, Washington, D.C., on brief), for appellant.

J. Hardin Marion, Baltimore, Md. (John B. Isbister, Tydings & Rosenberg, Baltimore, Md., on brief), for appellee.

Before HALL and PHILLIPS, Circuit Judges, MAX ROSENN, United States Senior Circuit Judge for the Third Circuit, sitting by designation.

PER CURIAM:

In this appeal, N. Hess' Sons, Inc. (Hess Shoes) challenges as inadequately remedial an injunctive decree entered in its favor against Hess Apparel, Inc. (Apparel), which the district court found had infringed upon Hess's trademark rights in violation of the Lanham Act, 15 U.S.C. Sec. 1125(a), and the common law of Maryland. ¹ We affirm.

Hess Shoes has, since the late 1800's, operated a number of retail stores specializing in sales of shoes and shoe-related accessories, all of which are located in the Baltimore, Maryland metropolitan trading area. Hess Shoes's stores are known by a variety of names, including "Hess," "Hess Shoes," "Hess for Her," "Hess Men's," "Hess Children's," "Current Events by Hess," "Hess Shoes Bargain Box," "Hess Stride-Rite," "Hess Running Center," and "Footgear by Hess." Although Hess stores market a wide variety of footwear items, Hess does not currently market a full line of women's apparel, and it has no intent to do so in the future. Because of extensive advertising and lengthy operations, the name "Hess" had become strongly associated with the Hess stores in the Baltimore area, specifically with the sale of shoes.

I

Hess Apparel, Inc., by contrast, has for a number of years operated full-line women's specialty clothing stores on Maryland's eastern shore and in Delaware. Although before 1981, Apparel had no store in the Baltimore area, it had acquired a substantial following there, as many Baltimoreans visited Apparel's stores during summer vacations to Ocean City, Maryland. In large part to service this following, John Hess, President of Apparel, laid plans in 1980 for opening a store in the Hunt Valley Mall (Mall) in Cockeysville, Maryland, a Baltimore suburb. Concurrently, George Hess, President of Hess, proceeded with plans to open three stores in Hunt Valley Mall that would market men's, women's and children's shoes respectively. Both firms executed leases for floorspace in the Mall in June of 1981.

Apparel opened its Hunt Valley store in September of 1981 and, contrary to John Hess's earlier representations to George Hess, began to market and advertise extensively 21 brands of shoes and an assortment of accessories, in addition to its other items of women's wear. Almost immediately, Hess Shoes objected to Apparel's use of the name "Hess" in connection with sales of shoes at the Mall. Hess Shoes documented a significant number of instances of its customers' confusing Apparel's operations with that of Hess Shoes. Ten days after opening its Hunt Valley women's store, Hess Shoes brought suit to enjoin Apparel from using the name Hess in the Baltimore metropolitan trading area.

The district court found that, prior to Apparel's entry into the Baltimore market, the name Hess had acquired a secondary meaning in connection with sale of the plaintiff's shoes, and that there was such a similarity between the names "Hess" and "Hess Apparel" that it "created a likelihood of confusion in minds of ordinary consumers," thus establishing Apparel's liability under the Lanham Act and Maryland common law.

Based on this finding of liability under the Lanham Act, the court entered an injunctive decree prohibiting Hess Apparel from selling women's shoes under the name Hess in the Baltimore area unless it chose to comply with two conditions. First, Apparel was required to state prominently in all of its advertising for the following year that it was not affiliated with "Hess Shoes," "Hess for Her," "Current Events by Hess," "Running Center by Hess," or "Hess Bargain Box." ² Second, it was required to display a prominent sign in its show area stating that it was not affiliated with "Hess Shoes." In addition to these alternatives, Apparel was enjoined from displaying the name "Hess" in the Baltimore area, either in connection with public displays or by way of product labels and the like, unless used in conjunction with Apparel's logo. The district court then allowed Apparel to choose between compliance with the conditions and the more severe prohibitive injunction; predictably Apparel chose the former.

II

With these basic facts in mind, we proceed to consider Hess Shoes's principal contention on appeal, namely, that the district court abused its remedial discretion by fashioning a decree which is insufficient in law and fact to remedy the unchallenged trademark violations found. According to this contention, the decree could not be expected to have a significant ameliorative effect upon the customer confusion caused by Apparel's infringing activities and it therefore manifestly fails to accomplish the remedial purposes of the Lanham Act and its counterpart in the Maryland common law. We cannot reject the district court's decree on this basis.

Even in a case such as this, where the district court is affirmatively charged with effectuating the purposes of a remedial statute, its discretion in fashioning an appropriate remedy runs wide. United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 141 (3d Cir.1981); Frostie Co. v. Dr. Pepper Co., 361 F.2d 124 (5th Cir.1966).

Where, as here, the claimed abuse of that wide discretion rests essentially on a contention that the injunction is ineffectual to remedy a found violation, a reviewing court is hard pressed so to conclude in the absence of facts demonstrating that it is indeed ineffectual. Obviously there may be cases where the very terms of an injunction facially reveal its inadequacy to remedy a specific violation or to vindicate a specific right, but we cannot say that of this injunction. Admittedly, it appears rather mild. But its actual working is a matter dependent upon the special circumstances and context of its operation. We could find abuse in the trial judge's obvious assumption that it would work only by presuming a better knowledge of those circumstances and of that context than he gained as trier of fact. We cannot so presume on the record before us.

Events subsequent to entry of the injunctive decree might, of course, demonstrate the actual inadequacy that is now simply asserted as a necessary consequence. Nothing in this opinion precludes plaintiff from seeking relief in the form of a modified injunction based upon developments of that sort. See Fed.R.Civ.P. 60(b)(5). We simply have no such basis for granting that relief on the record before us.

AFFIRMED.

ROSENN, Senior Circuit Judge, dissenting.

We have before us a case in which the district court correctly found that the defendant engaged in unfair competition and service mark infringement in violation of the Lanham Act and the common law of Maryland. The violations are so conspicuous that the defendant does not even challenge them on appeal. I believe, however, that the equitable measures for relief fashioned by the district court plainly fail to remedy the wrong done by these violations. I therefore dissent.

I.

As the district court found, the plaintiff has been selling women's shoes in the Baltimore metropolitan area ¹ for approximately a century. ² It currently operates thirty-eight stores in Maryland, Virginia, and the District of Columbia. Although most of the plaintiff's stores are called "Hess Shoes," other names, as the majority notes, are used, each emphasizing the word "Hess." Shoes sales account for approximately ninety percent of plaintiff's more than $100,000,000 retail sales throughout the past decade. Since 1974, plaintiff has spent approximately $2,000,000 on advertising, in newspapers (e.g., The Baltimore Sun, The Baltimore New American, The Washington Post ) and magazines (e.g., "Baltimore" and "Washingtonian") as well as on radio and television. The plaintiff also promotes its business through its participation in a wide variety of cultural and civic events in the Baltimore area.

The defendant has been operating under the name "Hess Apparel" since 1954. It currently operates eight women's specialty stores. ³ Except for the store involved in this case, defendant's establishments are clustered in a relatively small area comprising Delaware and the eastern shore of Maryland, with its principal store located in Salisbury, Maryland. In 1981, shoe sales accounted for approximately fifteen percent of defendant's $10,000,000 in retail sales. Defendant advertises primarily on the Eastern Shore, in newspapers such as The Salisbury Daily Times, The Ocean City Beachcomber, and The Eastern Star Democrat, as well as radio and television. From 1957 to 1969 and 1979 to 1981, however, defendant periodically advertised in The Baltimore Sun.

The families that operate and have operated these businesses are not related. Nevertheless, George Hess, president of Hess Shoes, and John Hess, president of Hess Apparel, have known each other and had been on good terms for at least a decade. They belong to several of the same organizations, including the Young Presidents Association, and share some of the same friends. For more than twenty years the parties have been aware that customers and potential customers confuse the two establishments, inquiring as to whether they are connected to each other, attempting to use one charge card to purchase goods from the other, and mistakenly returning merchandise purchased at one to the other. Sometime after 1974, George Hess and John Hess discussed the confusion, and each agreed to instruct his respective personnel to respond to...