Recamier Mfg. Co. v. Harriet Hubbard Ayer, Inc.

• Decision Date: 13 April 1932
• Citation: 59 F.2d 802
• Parties: RECAMIER MFG. CO., Inc., v. HARRIET HUBBARD AYER, Inc.
• Court: U.S. District Court — Southern District of New York

59 F.2d 802 (1932)

RECAMIER MFG. CO., Inc., v. HARRIET HUBBARD AYER, Inc.

District Court, S. D. New York.

April 13, 1932.

COPYRIGHT MATERIAL OMITTED

Breed, Abbott & Morgan, and Charles H. Tuttle, Arthur A. J. Weglein, and Isaac Reiss, all of New York City, for plaintiff.

Redding, Greeley, O'Shea & Campbell, and Charles Neave, Worthington Campbell, and Ernest W. Marlow, all of New York City, for defendant.

PATTERSON, District Judge.

The plaintiff brought this suit for infringement of a registered trade-mark, and the defendant filed a counterclaim for similar relief. The trade-mark in dispute is "Harriet Hubbard Ayer" written in script form, for use on toilet articles. The plaintiff claims that its right to the trade-mark goes back to 1886, while the defendant traces a use beginning in 1907.

The plaintiff's line of succession is Harriet Hubbard Ayer (1886-1887), Recamier Manufacturing Company (1887-1896), Maria E. Rinn (1896-1920), Anna E. Reynolds (1920-1931), and the plaintiff. As early as 1886 one Harriet Hubbard Ayer sold a face cream called Recamier cream, made under a secret formula claimed to have come down from Madam Recamier, a famous beauty. In that year she filed an application for registry of trade-mark. Included in the application was a drawing. The drawing showed at the top the words "Recamier Cream"; next came a crest; at the bottom there was a facsimile signature "Harriet Hubbard Ayer." In the description of the mark, however, the applicant made this statement:

"My trade-mark consists of the word-symbol `Recamier' and a crest composed of fasces surmounted by a coronet, out of which rises the head of a lion. These have generally been arranged, as shown in the accompanying facsimile, in which the word `Recamier' with the word `Cream' following it are in block capital letters, and arranged in the form of an arch over the said crest, and the facsimile of my signature is arranged below the said crest; but the style of lettering is unimportant, and the word `Cream' and the signature may be omitted without changing the character of the trade-mark, the essential features of which are the arbitrary word `Recamier' and the crest composed of fasces surmounted by a coronet out of which rises the head of a lion."

The following year Mrs. Ayer assigned the trade-mark, along with other property used in the business, to Recamier Manufacturing Company, a New York corporation, but not the plaintiff in this case. Mrs. Ayer owned stock in the corporation and was actively connected with it. In the instrument of assignment, she described the mark as "consisting of the word symbol `Recamier' and a cross (sic) composed of fasces surmounted by a coronet out of which rises the head of a lion." The Recamier Company continued the manufacture and sale of Recamier Cream, and it also manufactured and sold other toilet preparations. The word "Recamier" and the crest, as well as the facsimile signature, were placed on practically all products, the signature sometimes in juxtaposition to the crest and sometimes at other places on the box or bottle. Stress was laid on the fact that no products were genuine without the signature, and Mrs. Ayer's connection with the business was emphasized in many ways. For some years an extensive business was carried on and a great deal of advertising indulged in.

In 1896 the Recamier Company found itself insolvent. At a receiver's sale in October, 1896, all the corporate assets, including trade-marks and good-will, were sold for $4,000 to Maria E. Rinn, formerly an employee of the company. Miss Rinn thereupon continued the business under the trade-name of Recamier Manufacturing Company. For a time she went on using the Harriet Hubbard Ayer signature on the products. In 1897 Mrs. Ayer brought suit to put a stop to the use of her name in the business. This suit was dropped upon Miss Rinn's affidavit to the effect that she had discontinued using the Ayer name. Mrs. Ayer, having been unsuccessful in business, took up lecturing and writing beauty articles for newspapers. She died in 1903.

The business was carried on by Miss Rinn until 1920, when she sold out to Miss Reynolds. During this period of twenty-four years, she sold creams and cosmetics made by the old formulas, under the old Recamier name and crest. Sales seem to have gradually dwindled away. The evidence is conflicting as to her use of the Ayer signature. A witness who has worked for the old company and also for Miss Rinn stated that use of the signature was resumed in 1902 or thereabouts. Several other witnesses for the plaintiff, some of them customers and others persons in the drug business, testified that throughout this period the boxes of Recamier cream which came to their notice bore the signature. On the other hand, tradesmen who made labels and boxes for Miss Rinn stated that the Ayer name did not appear on them in any form. Advertisements of Recamier cream made no mention of the Ayer name. The letterheads which had featured the signature in earlier times no longer carried it. The defendant also called witnesses connected with wholesale drug houses who stated that the Recamier products purchased by them did not carry the signature. Although the plaintiff was able to produce many boxes, bottles, and circulars that had been in use by the old corporation, prior to 1896 when Mrs. Ayer was connected with the business, all bearing the signature, it produced practically no boxes, bottles, or circulars that had been made for Miss Rinn during this later period.

The 1886 trade-mark registration expired in 1916 without renewal. In June, 1920, Miss Reynolds, who had bought the business a month before, filed application for registry of the crest and word "Recamier" as a trademark. The original application made no mention of the Ayer signature. In February, 1921, while that application was still pending, however, she filed an amended application wherein the language of the 1886 registration was followed in mentioning the facsimile signature of Harriet Hubbard Ayer as arranged below the crest, but as capable of omission without affecting the essentials of the trademark. Registration was granted on December 13, 1921, the trade-mark being described as follows: "This trademark consists of the word-symbol `Recamier' and a crest composed of fasces surmounted by a coronet, out of which rises the head of a lion. These are arranged as shown in the accompanying drawing, in which the word `Recamier' with the word `Cream' following it are in block capital letters and arranged in the form of an arch over the said crest, and the facsimile of the signature of Harriet Hubbard Ayer (the original registrant of this trademark and my predecessor) is arranged below the said crest."

At some time between 1920 and 1931 (the precise time does not appear) Miss Reynolds offered for sale jars of face cream bearing the Ayer signature as well as the name "Recamier" and the crest. In 1931 the plaintiff was organized as a New York corporation, succeeded to Miss Reynolds' business, put on the market a full line of products and straightway commenced this suit.

The defendant is a New York corporation organized in 1907. Though sued as Harriet Hubbard Ayer, Inc., its real corporate name is simply Harriet Hubbard Ayer. Its organizers received permission to use the name Harriet Hubbard Ayer from one of Mrs. Ayer's daughters, receiving at the same time the right to use certain formulas prepared or collected by Mrs. Ayer. It commenced manufacturing and selling face cream, hair tonic, and similar articles. In 1908 the trade-mark "Harriet Hubbard Ayer" in script form was registered by one Thomas, who was active in the defendant's business. This mark was assigned to the defendant and was renewed in 1928. The mark has been used without interruption since 1907 on a great variety of toilet articles made by the defendant.

The plaintiff has proved, as bearing upon its contention that the defendant's counterclaim should be dismissed because of unclean hands, that the latter has made various misrepresentations as to its business and its products. In the earlier years of its existence, it referred to itself in the feminine gender in some of its advertising, plainly implying that it was the original and natural Harriet Hubbard Ayer, still living and conducting the business. Down to 1921, at least, it also represented at various times that it had formerly made Recamier cream, and that the face cream then being sold by it was made from the same formula as Recamier cream, neither of which statements was true. Further, in applications for registry of various trade-marks, the defendant's officers made statements that were false. As to the word "Cuxuria," it was stated in 1908 by Thomas that the trade-mark had been used "in my business and that of my predecessor, Harriet Hubbard Ayer, since January 1st, 1895." In the 1914 application for the word "Ayeristocrat," the word was said to have been used in the defendant's business and in that of its predecessor, Harriet Hubbard Ayer, since 1898. And in the 1921 application for the Ayer signature on toilet soaps it is stated that the mark had been used in the defendant's business or in its predecessor's business ever since 1894. All these statements were concededly untrue, as was also a statement, made in a 1928 price list, that the defendant was established in 1870. The fact is that it was established in 1907 and that it had no predecessor in business.

At the present time the defendant is selling its goods with the trade-mark "Harriet Hubbard Ayer" in script, and with Harriet Hubbard Ayer named as the maker. Its circulars refer to the "famous Harriet Hubbard Ayer Beauty Preparations," "Harriet Hubbard Ayer's Face Powder," and so forth. While the fact that it is a corporation is not set forth on the boxes, jars, and labels, that fact was set forth on its 1928 price list, and in at least some of the circulars now used the corporate name is...