Rockowitz Corset & Brassiere Corp. v. Madam X Co.

• Decision Date: 29 May 1928
• Citation: 248 N.Y. 272,162 N.E. 76
• Parties: ROCKOWITZ CORSET & BRASSIERE CORPORATION v. MADAM X CO., Inc., et al.
• Court: New York Court of Appeals Court of Appeals

248 N.Y. 272

162 N.E. 76

ROCKOWITZ CORSET & BRASSIERE CORPORATION

v.MADAM X CO., Inc., et al.

Court of Appeals of New York.

May 29, 1928.

Action by the Rockowitz Corset & Brassiere Corporation against the Madame X Company, Inc., and others. An interlocutory judgment of the Special Term, enjoining the defendants from using a certain trade-mark, was reversed on the law and the facts, and a new trial ordered by the Appellate Division (222 App. Div. 359, 226 N. Y. S. 293), and plaintiff appeals. Plaintiff gave stipulation for judgment absolute, as required by Civil Practice Act, § 588.

Order affirmed, and judgment absolute ordered against plaintiff.

See, also, 219 App. Div. 557, 220 N. Y. S. 435; 130 Misc. Rep. 836, 225 N. Y. S. 360.Appeal from Supreme Court, Appellate Division, First department.

Ellis W. Leavenworth, W. Davis Conrad, and Tracy Fike, all of New York City, for appellant.

Neil P. Cullom and James E. Freehill, both of New York City, for respondents Madame X Co., Inc., Thompson-Barlow Co., Inc., Thompson, Ruthrauff, and Ryan.

Maxwell Slade and David H. Slade, both of New York City, for respondents Weil Corset Co. and Samuel J. Weil.

CRANE, J.

The complaint in this action alleges that the plaintiff is a domestic corporation engaged in the business of selling at wholesale and retail corsets and abdominal supporters manufactured by its orders. The business was started in 1910 by one Abraham Rockowitz, now known as Abraham Rocke. The plaintiff claims to be his successor by assignments of his trade-mark. ‘Madame X’ was a trade-mark used by Abraham Rocke from 1911 to about 1916, in connection with the sale of merchandise. This trade-mark was registered with the United States Patent Office for both supporters and corsets in August of 1912. The defendants are alleged to have appropriated the trade-mark of the plaintiff and to have used it in connection with the manufacture and sale of similar articles since the year 1924, all to the damage and injury of the plaintiff. The pleading demands relief by way of injunction and an accounting for the profits realized by the defendants through the use of the trade-mark.

[1] The issues raised by the answers were tried at Special Term, which gave judgment in favor of the plaintiff, enjoining the defendants from the use of the name ‘Madame X,’ and directing the defendants to account for all the profits derived from the use of such name.

On appeal the findings of fact made by the trial judge were reversed and a new trial ordered. No new findings of fact were made by the Appellate Division, but the order of reversal specified by number the many findings of fact and conclusions of law which were reversed. The reversal was necessarily upon the facts. From the opinion of the Appellate Division it is evident that the Appellate Division disagreed with the trial judge on the facts. It took the view that the evidence did not warrant a finding that the plaintiff owned the trade-mark, but that it did justify the view that whatever rights Abraham Rockowitz had to the trade-mark had been abandoned. However, the court sent the issues back for a new trial and the appellant has given a stipulation for judgment absolute in coming to this court. Its burden, therefore, is to show us that there was no question of fact justifying a reversal, and that as matter of law, on the evidence, the plaintiff was entitled to judgment.

Abraham Rockowitz did business until 1914 in the name of the ‘Madame X Manufacturing Company.’ In September of that year the company was adjudged a bankrupt, and all its property sold at public auction, and the business of course discontinued. The receiver in bankruptcy sold the trade-mark to one Dorfman. Abraham Rockowitz claimed that Dorfman had made this purchase for his benefit and the controversy resulted in litigation. Abraham Rockowitz thereafter did business under the trade-name of ‘S. O. S. Corset Company’ and got in a lawsuit over his right to use the name and the trade-mark here in question. The judgment went against him and he was restrained from in any way using the property of the company or the trademark. This business went into liquidation and a receiver was appointed in 1916. All its tangible assets were sold at public auction for $226.53. No use was thereafter made of the trade-mark. Apparently the receiver did not sell it, nor did Abraham Rockowitz or his brother, Joe, attempt to use it. Thereafter, in 1922, the defendants manufactured and sold corsets or girdles, using in their advertisements and boxing the trade-name ‘Madame X.’ There was evidence to support the conclusion that in so doing they, or the Thompson-Barlow Company, Inc., were unaware of the previous user eight years before by Rockowitz. In 1924, and after the defendants had extensively advertised their business and built up a large and substantial trade through the use of this name, Abraham Rockowitz learned of the fact, formed the plaintiff corporation,procured a transfer to it by the receiver of the trade-mark, and commenced this litigation. There is evidence from which it may be inferred that the plaintiff corporation was formed for the very purpose of starting this lawsuit. It has little or no business, employees, machinery, or equipment. There is evidence from which it may also be inferred that Rockowitz after two unsuccessful attempts to carry on the corset business had abandoned the use of the trade-mark ‘Madame X.’ The second company of which a receiver was appointed in 1916 had no good will; it was gone. Nothing was left except the trade-mark, which the receiver apparently did not sell, simply because there was no market for it. If he could have sold it, it was his duty to dispose of it, for such were his orders from the court which appointed him. The trade-mark was not used in connection with any business conducted by Rockowitz or his brother, Joe Rockowitz, from that time until the day of trial. No attempt was made by them to use it. The next we hear of it in their connection is when the plaintiff is formed, and this lawsuit is brought. No user of the trade-mark has been made by the plaintiff or its organizers.

[2] This brief outline of the case is sufficient, I think, to indicate that there was at least a question of fact to be determined as to the abandonment of the trade-mark by Rockowitz, if he owned it, or by Joe Rockowitz, if he were the person entitled to it. There being this question of fact to be determined or inferences which might reasonably be drawn in favor of the defendants from the facts, we can go no further, but must affirm the judgment below.

To constitute an abandonment, there must not only be nonuser, but an intent to abandon. In Baglin v. Cusenier Co., 221 U. S. 580, 597, 31 S. Ct. 669, 674 (55 L. Ed. 863), the court held:

‘But the loss of the right of property in trade-marks upon the ground of abandonment is not to be viewed as a penalty either for nonuser or for the creation and use of new devic...