Paul Sachs Originals Co. v. Sachs

• Decision Date: 29 March 1963
• Docket Number: Civ. No. 881-61-S.
• Citation: 217 F. Supp. 407
• Parties: PAUL SACHS ORIGINALS CO., a corporation, Plaintiff, v. John SACHS and Leo Hirsch, doing business as Sachs of California a partnership, Defendants.
• Court: U.S. District Court — Southern District of California

217 F. Supp. 407

PAUL SACHS ORIGINALS CO., a corporation, Plaintiff, v. John SACHS and Leo Hirsch, doing business as Sachs of California a partnership, Defendants.

Civ. No. 881-61-S.

United States District Court S. D. California, Central Division.

March 29, 1963.

Flam & Flam, Los Angeles, Cal., and Ralph W. Kalish, St. Louis, Mo., for plaintiff.

Fendler, Lerner & Warner, Beverly Hills, Cal., for defendants.

STEPHENS, District Judge.

This is an action for trademark infringement and unfair competition brought by Paul Sachs Originals Co., a corporation, against John Sachs and Leo Hirsch, doing business as Sachs of California, a limited partnership.

This Court has jurisdiction of the controversy pursuant to Title 15, Chapter 22, United States Code, Section 1121, and also pursuant to Title 28 United States Code Section 1338(a) and 1338 (b), by reason of the fact that the suit is of a civil nature between residents of different states, in which plaintiff claims the amount in controversy exceeds the sum of $10,000.00, exclusive of interest and costs. The residence of each of the parties is referred to below.

The case was tried before the Court sitting without a jury. Plaintiff appeared by its officers in person and by its counsel, Flam & Flam and Ralph W. Kalish, Esq., and the defendants appeared in person and by their counsel, Harold A. Fendler, Esq. and Douglas Fendler, Esq. Oral and documentary evidence was introduced by the respective parties on May 22, 23, 24 and 25, 1962. At the request of counsel, time was allowed for the submission of briefs. The Court, having considered the evidence, the arguments of counsel and the briefs submitted, ordered judgment in favor of defendants and requested counsel for defendants to prepare Findings of Fact, Conclusions of Law and Judgment.

The Findings of Fact, Conclusions of Law and Judgment proposed by defendants' counsel were complained of so bitterly as being entirely one sided and incomplete that the preparation of a Memorandum of Decision which can serve also as Findings of Fact and Conclusions of Law appears to be the only hope of recording the basis for the Court's decision.

Plaintiff, a Missouri corporation having its office and principal place of business in the City of St. Louis, State of Missouri, is a successor in business of Paul Sachs Originals, Inc. For purposes of brevity, references to plaintiff herein shall encompass and comprehend any activities of its aforesaid predecessor.

On or about May 15, 1942, plaintiff adopted the term "Paul Sachs Original" as a trademark to make known and identify ladies' and misses' dresses and suits which it produced and sold. The said trademark was used in conjunction with plaintiff's merchandise, being applied to the goods by means of a cloth label (Exhibit 3) stitched to the neck of the garments and by a hang tag (Exhibit 4) suitably suspended from the garments. The aforesaid trademark was the only trademark used by plaintiff until August 14, 1959, when it adopted and commenced using the trademark "Don Sachs Original" to distinguish another line of ladies' and misses' dresses. This trademark was also presented by means of a cloth label sewn to the neck of garments (Exhibit 5) and by a hang tag (Exhibit 6). For the twenty years encompassed by the period May 15, 1942 until May 22, 1962, the opening date of the trial of this action, plaintiff never sold a dress or any other article of wearing apparel which was not identified either by the trademark "Paul Sachs Original" or "Don Sachs Original". Plaintiff's entire business has been devoted to the production and sale of ladies' and misses' dresses and suits under these trademarks.

The trademark "Paul Sachs Original" was registered in the United States Patent Office on October 12, 1948, Registration No. 502,925, in accordance with the provisions of Section 2(f) of the Trademark Act of 1946 (Lanham Act); and, as Affidavits under Sections 8 and 15 of said Act were filed in the Patent Office on October 22, 1953, said registration has become incontestable. The aforesaid registration disclaimed any exclusive right to the word "Original" apart from the mark as shown and described. The plaintiff caused the trademark "Don Sachs" to be registered in the United States Patent Office on December 6, 1960, Registration No. 708,120, under Section 2(e) of the aforesaid Act. The application which matured into said registration was published in the Official Gazette of the United States Patent Office on September 20, 1960.

Plaintiff's trademark "Paul Sachs Original" has been used continuously upon dresses which are characterized in the trade as misses' dresses, and being in sizes 10 to 20, while the trademark "Don Sachs Original" has been used by plaintiff upon dresses which are characterized as petites, and being in sizes 8 to 18. As early as November 15, 1942, plaintiff advertised its dresses under the trademark "Paul Sachs Originals" on a national level to the consuming public, as evidenced by its advertisement in Vogue magazine (Exhibit 7). Plaintiff continued through the 1940's and early 1950's to advertise in national consumer publications, such as Vogue, Mademoiselle, and Charm (See Exhibits 10 to 34, inc., 36, 38, 40-44, 47, 49). In the middle 1950's plaintiff apparently temporarily suspended national advertising in view of certain internal circumstances, but resumed such national consumer advertising in Vogue magazine on February 15, 1960 (Exhibit 25), and has periodically advertised in said magazine since said date. Plaintiff has consistently supplied advertising mats (Exhibits 72-74, inc.) free of charge to its customers so that local advertisements of plaintiff's goods might be made. Evidence of such local advertisements with respect to California was submitted as Exhibits 59 to 63, inclusive. Plaintiff has always advertised in trade journals which are designed for dress buyers of department stores and speciality shops.

Plaintiff's annual sales for its dresses under the aforesaid trademarks for the years 1942 to date have exceeded $1,500,000.00, and during this period of time plaintiff has expended a total of $400,000.00 to advertise and publicize its garments under the said trademarks. Plaintiff operates and maintains showrooms for its "Paul Sachs Original" and "Don Sachs Original" dresses in New York City, St. Louis, Missouri, and Dallas, Texas.

Since its first use of the trademark "Paul Sachs Original" in 1942, plaintiff has sold its dresses identified by said trademark throughout the entire United States, so that its operations have been on a national basis for each of the intervening twenty years. Dresses identified by plaintiff's trademark "Don Sachs Original" have been sold on a national basis since 1959. Plaintiff has consistently maintained eight full-time salesmen and three representatives for selling its "Paul Sachs Original" and "Don Sachs Original" lines throughout the United States. Currently, plaintiff sells its "Paul Sachs Original" and "Don Sachs Original" dresses to an estimated twelve hundred accounts, and it is estimated that during the last ten years plaintiff has sold said merchandise to over twenty-five hundred different accounts. Presently, plaintiff sends its advertising pieces and like publicity matter relative to its "Paul Sachs Original" and "Don Sachs Original" dresses to a mailing list of over thirteen thousand five hundred prospective accounts.

The wholesale price range of plaintiff's "Paul Sachs Original" and "Don Sachs Original" dresses is from $10.75 to $39.75.

One of plaintiff's representatives, Mr. Eddie Silk, of Los Angeles, who testified with respect to plaintiff's operations in the State of California, stated that during the ten years he had represented plaintiff in the State of California, the sales of "Paul Sachs Original" dresses and, latterly, "Don Sachs Original" dresses as well, averaged in California annually $100,000.00 at wholesale; that during said period of time, he had sold plaintiff's dresses bearing the aforesaid trademarks to an estimated three hundred California accounts; and that he would estimate that during the said period he had one hundred active accounts annually for such merchandise. Plaintiff has sold its merchandise under the aforesaid trademarks in over seventy-five different cities in the State of California, with the annual number being between sixty and seventy. In plaintiff's advertisements in Vogue (Exhibits 26, 28 and 30), plaintiff gave what are known as store credits to stores carrying its merchandise in the cities of Sacramento, Glendale, and Los Angeles, California. During his ten years with the firm, Mr. Silk has exhibited plaintiff's merchandise as identified by its trademarks, five times annually at the Pacific Coast Travelers Association Market Weeks at the Biltmore Hotel in Los Angeles, each such "market" having a duration of about four days. Plaintiff's merchandise has been and is being displayed equally frequently at similar markets in San Francisco, Portland, and Seattle.

To this point, the statement of facts is taken verbatum from the plaintiff's brief after trial with only one exception. Plaintiff ignored the fact that its registered trademark "Don Sachs" was never used in that form on any of the labels or hang tags in plaintiff's dresses or in its advertising. Plaintiff invariably used the word combination, "Don Sachs Original". This statement of facts has added the word, "Original" at every place where "Don Sachs" was mentioned in the plaintiff's statement except where reference is made to the registration of "Don Sachs" as a trademark as registration No. 708,120.

Trademarks are acquired by use, not by registration. The trademark in use by plaintiff, so far as the evidence shows, is "Don Sachs Original". There is no evidence in this case that the trademark registered as No. 708,120 was used by the plaintiff at any time after its registration in the form shown on the registration ...