Smith & Wesson, Inc. v. Galef

• Decision Date: 19 June 1923
• Docket Number: 26-249.
• Citation: 292 F. 314
• Parties: SMITH & WESSON, Inc., v. GALEF.
• Court: U.S. District Court — Southern District of New York

292 F. 314

SMITH & WESSON, Inc., v. GALEF.

No. 26-249.

United States District Court, S.D. New York.

June 19, 1923

Eugene I. Gottlieb, of New York City, for defendant.

WINSLOW District Judge.

This is a motion for a preliminary injunction by the plaintiff corporation to restrain the defendant from the use of the registered trade-mark 'S. & W.,' or any simulation thereof, on pistols or firearms, or from selling or offering for sale any pistol or other firearm bearing such trade-mark or one so similar as to be likely to deceive the public.

The plaintiff is a corporation organized under the laws of Massachusetts. The defendant is a citizen of the state of New York, having his place of business in the Southern district of New York. The trade-mark of the plaintiff was duly registered by plaintiff's predecessors and assignors on July 31, 1894, certificate No. 25,085, and re-registered on October 14, 1913, certificate No. 93,767. The plaintiff, or its predecessors in business, have been manufacturers of and dealers in firearms in the several states of the United States for over 40 years, and have dealt with foreign nations extensively.

The defendant has sold and is a distributor of an automatic pistol manufactured in Germany, on which is stamped the characters 'St. W.,' inclosed in an oval. The letter 'T' is somewhat distorted. The defendant contends that the automatic firearm bearing this device is of German origin and is so stamped; that the device 'St. W.' stands for the compounded German word 'Stendawerke,' and that it is not calculated to deceive the purchasing public in the belief that the pistol is the product of the plaintiff. The defendant also contends that the registered trade-mark 'S. & W.' has been abandoned by the plaintiff and that in lieu thereof it has used the initials 'S. W.' intertwined, inclosed in a circle. Stamped on the barrel of the defendant's automatic appear the words 'Waffenfabrik-Stendawerke-Suhl-Germany,' in addition to the device on the stock 'ST. W.,' inclosed in an oval.

Plaintiff admits that the monogram trade-mark, composed of the letters 'S.W.' intertwined, is used extensively by the plaintiff, but the record satisfies the court that the plaintiff is also the owner of the trade-mark 'S. &amp W.,' and that such trade-mark has been used for many years, and is still used as a trade-mark upon some of its revolvers and pistols and upon packages in which they are inclosed. It needs no argument to sustain the contention that a dealer may have more than one trade-mark, and the only questions to be seriously considered by the court are, first whether there has been an abandonment of the registered trade-mark, 'S. & W.,' and, second, whether the device used by the defendant, if there be no such abandonment, is an infringement upon plaintiff's trade-mark, 'S. & W.'

As to the first proposition, the court is satisfied that there has been no abandonment of the trade-mark by the plaintiff as contemplated by law. It does not appear that there has been any voluntary or intentional disuse or nonusing of the mark. Plaintiff's catalogues in evidence show a revolver 'U.S. Army model 1917, having on the barrel 'S. &amp W.' D.A. .45,' the 'S. & W.' being the plaintiff's trade-mark now under consideration, and 'D.A. .45' meaning double action .45 caliber. It is uncontradicted that revolvers of this model, with this trade-mark 'S. & W.,' were supplied by the plaintiff in large numbers to the...