Queen Mfg. Co. v. Isaac Ginsberg & Bros

• Decision Date: 06 March 1928
• Docket Number: No. 7894.,7894.
• Citation: 25 F.2d 284
• Parties: QUEEN MFG. CO. v. ISAAC GINSBERG & BROS., Inc.
• Court: U.S. Court of Appeals — Eighth Circuit

25 F.2d 284 (1928)

QUEEN MFG. CO. v. ISAAC GINSBERG & BROS., Inc.

No. 7894.

Circuit Court of Appeals, Eighth Circuit.

March 6, 1928.

Harry N. Soffer, of St. Louis, Mo. (Joseph Boxerman, of St. Louis, Mo., on the brief), for appellant.

Andrew B. Remick, of St. Louis, Mo. (Charles E. Francis, of New York City, on the brief), for appellee.

Before STONE and VAN VALKENBURGH, Circuit Judges, and PHILLIPS, District Judge.

PHILLIPS, District Judge.

This is an appeal from a decree in favor of Isaac Ginsberg & Bros., Inc. (hereinafter called plaintiff), in a suit brought against Queen Manufacturing Company (hereinafter called defendant) for infringement of plaintiff's trade-mark "Queen Make," and for unfair competition in the use of the trade name "Queen."

The plaintiff is a New York corporation engaged in the manufacture and sales of women's, misses,' and children's cotton bungalow aprons, dresses, skirts, and waists. It attaches to all such garments the trademark:

This trade-mark was registered in the United States Patent Office July 25, 1922, by the firm of Isaac Ginsberg & Bros., the predecessor of plaintiff, for women's cotton aprons and dresses. Plaintiff and its predecessor have used the mark since 1903. The plaintiff was incorporated January 2, 1923. It succeeded to and took over the assets and good will of the firm of Isaac Ginsberg & Bros., including the trade-mark.

The sales of plaintiff and its predecessor, of women's cotton dresses and aprons bearing the trade-mark "Queen Make," from July 31, 1914, until July 31, 1926, aggregated $15,243,739. These sales were made in practically every state in the Union, including Missouri. Plaintiff and its predecessor, from the year 1914 until July 21, 1926, expended for advertising "Queen Make" dresses and aprons in such nationally known magazines as the Ladies' Home Journal, Good Housekeeping, and Vogue, the amount of $349,502.

The defendant is also engaged in the manufacture and sale of similar cotton garments. It attaches thereto the following label or mark:

It also prints on its statement blanks or billheads the following:

Within a year prior to March 17, 1926, the date this suit was instituted, the plaintiff received information through one of its representatives that the defendant was manufacturing such cotton garments, and attaching thereto the mark "Queen Brand." Upon receiving this information, the plaintiff sent to the defendant two letters requesting it to desist from the use of the mark "Queen Brand," and claiming it was an infringement of plaintiff's trade-mark. One letter of remonstrance was sent on August 19, 1925, and the other on September 30, 1925. The defendant made no reply to these letters, and continued to use the alleged infringing mark.

Mrs. Habig, an employee of Scruggs-Vandervoort-Barney Dry Goods Company, which operates one of the large department stores of St. Louis, testified that she had been in employ of the dry goods company for twenty-seven years; that she was the buyer and manager of the women's dress department; that the dry goods company had sold during the past twelve years large quantities of "Queen Make" dresses made by the plaintiff; that most of her customers ordered the dresses by the single name "Queen"; and that they usually spoke of them as "Queen" dresses. The defendant introduced no evidence in the trial below.

The trial court found that the defendant was guilty of infringement, and enjoined the defendant from using "Queen Brand" as a trade-mark on its women's aprons, dresses, skirts, and waists and the use of the word "Queen" as a name or part of a name for its product, or in its corporate name.

Counsel for defendant, in their brief, set forth the following as controlling propositions of law:

"I.

"Before a court of equity will give relief in a trade-mark infringement case, the similarity of labels must be of such a nature as to deceive purchasers exercising ordinary care when examining to ascertain the source of its manufacture."

"II.

"Unless there is a passing off of the goods of one manufacturer for the goods of another, or the probability of it, there is no unfair competition."

"III.

"In cases of unfair competition, the burden of proof is upon complainant to show that purchasers have been deceived."

Predicating their argument upon the foregoing legal propositions, they contend the evidence is insufficient to support the decree.

Section 96 of title 15, U. S. C. (15 USCA § 96), in part, reads as follows:

"Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, * * * intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in such registration, and shall use, or shall have used, such reproduction, counterfeit, copy, or colorable imitation in commerce among the several states, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof."

In order to constitute an infringement, it is not necessary that the trade-mark be literally copied. Northam Warren Corporation v. Universal Cosmetic Co. (C. C. A. 7) 18 F.(2d) 774; Stark v. Stark Bros. Nurseries & Orchards Co. (C. C. A. 8) 257 F. 9, 12; McLean v. Fleming, 96 U. S. 245, 251, 24 L. Ed. 828; Stephano Bros. v. Stamatopoulos (C. C. A. 2) 238 F. 89, 94. Neither is it necessary that every word be appropriated. There may be infringement where the substantial and distinctive part of the trade-mark is copied or imitated. 38 Cyc. 744; Rosenblum v. Rosenblum (D. C. N. Y.) 253 F. 863; Jacoway v. Young (C. C. A. 8) 228 F. 630, 633; Omo Mfg. Co. v. Mystic Rubber Co. (D. C. Mass.) 225 F. 92; Johnson & Johnson v. Bauer & Black (C. C. A. 7) 82 F. 662, 663; De Voe Snuff Co. v. Wolff (C. C. A. 6) 206 F. 420, 423; Thomas G. Plant Co. v. May Co. (C. C. A. 6) 105 F. 375, 379. Dissimilarity in size, form, and color of the label and place where it is applied are not conclusive against infringement. Eagle White Lead Co. v. Pflugh (C. C.) 180 F. 579, 583. The resemblances may so far dominate the differences as to be likely to deceive ordinary purchasers. O. & W. Thum Co. v. Dickinson (C. C. A. 6) 245 F. 609, 613. Where a trade-mark contains a dominating or distinguishing word such as the word "Queen" in the instant case, and where the purchasing public has come to know and designate the article by such dominating word, the use of such word by another in marking similar goods may constitute infringement, although the latter mark, aside from such dominating word, may be dissimilar.

In determining whether an alleged infringing trade-mark is sufficiently similar to be deceptive, and therefore an infringement, ordinary purchasers, buying under the usual conditions prevailing in the trade, and giving such attention as such purchasers usually give in buying that class of goods, are the standard. Whether an imitation which is not an exact copy constitutes an infringement depends upon whether the resemblance is such as to be likely to deceive purchasers of the standard above defined and cause them to believe in purchasing the goods of the defendant that they are the goods of the plaintiff. In other words, if the resemblance is such as would deceive ordinary purchasers of the goods using ordinary caution, the trade-mark is infringed. McLean v. Fleming, supra; Ansehl v. Williams (C. C. A. 8) 267 F. 9, 15; Ward Baking Co. v. Potter-Wrightington, Inc. (C. C. A. 1) 298 F. 398, 401; Stark v. Stark Bros. N. & O. Co., supra. In the final analysis, it is by the application of this test to the particular facts of each individual case that the question of infringement must be determined.

There is no doubt under the evidence in the instant case that the word "Queen" is the dominating word and distinguishing feature of plaintiff's trade-mark, and that the public has come to know plaintiff's products as "Queen" dresses and aprons. While it is true there is dissimilarity in...