Thierfeld v. Postman's Fifth Avenue Corporation
| Decision Date | 11 February 1941 |
| Parties | THIERFELD et al. v. POSTMAN'S FIFTH AVENUE CORPORATION et al. |
| Court | U.S. District Court — Southern District of New York |
COPYRIGHT MATERIAL OMITTED
Louis Barnett, of New York City (Albert T. Scharps, of New York City, of counsel), for plaintiffs.
S. S. Goldsmith, of New York City, for defendants.
Plaintiff has made two motions, one to strike out certain denials as sham, and the other to strike out affirmative defenses and a counterclaim from the answer.
Defendants urge that these motions are not timely, and must be denied. The contention is that, pursuant to Federal Rules of Civil Procedure, rule 12(f), 28 U. S.C.A. following section 723c, the motion must be "made" within 20 days after the service of the pleading to which it is addressed, and that "made" means actually presented to the court. I do not agree with defendants. Rule 12(a), F.R.C.P. provides that "service" of a motion automatically extends time for the service of any responsive pleading. Service here was on the 20th day and therefore timely. 1 Moore's Federal Practice, pp. 391, 392, 639.
The first motion is to strike out certain denials. In paragraph 6 of the answer defendant Levine denies that a contract was made. Plaintiffs' counsel has submitted an affidavit that to his knowledge the contract was made. Defendant counters with an affidavit again denying it. I cannot, therefore, say that the denial is sham. Defendant also denied that its use of the word "Corde" was without plaintiffs' consent. This, I think is proper, because failure to do so might be tacit admission of the validity of plaintiffs' mark, a fact disputed by the defendant. I think defendant properly denied that its bags were of same descriptive qualities as those set out in plaintiffs' registration, because none are there set out.
The first motion is, therefore, denied.
The second motion is addressed to the affirmative defenses, numbered first to fourth, and to the fifth which is pleaded as a counterclaim.
The gist of the claim in suit is trademark infringement and unfair competition. Plaintiffs' claim ownership of the word "Corde", registered under the 1920 Trade Mark Act, 15 U.S.C.A. 121 et seq., and applicable to handbags. Continuous use since 1934 is alleged, and, since 1938, use of the statutory legend is asserted. It is averred that the word has acquired a secondary meaning. The complaint then states that the defendant Plymouth has infringed and continues to infringe, after notice, and with knowledge of prior use by plaintiffs, and that defendant Postman's has sold the infringing bags with knowledge of plaintiffs' rights and without their consent.
The first complete defense asserts at length that the plaintiffs' mark is descriptive and incapable of exclusive appropriation. Defendants contend that the defense is good because it raises a factual question as to whether the plaintiffs' mark has acquired a secondary meaning. Under the doctrine of Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195, a word may be registered under the 1920 Act, and is entitled to protection if it has acquired a secondary meaning. I think this defense is good. In order to become entitled to protection, a secondary meaning must be established, and it is not inferred from the registration alone. Armstrong Paint & Varnish Works v. Nu-Enamel Corp., supra; Rouss, Inc., v. Winchester, 2 Cir., 300 F. 706, certiorari denied 266 U.S. 607, 45 S.Ct. 92, 69 L.Ed. 465; Kellogg Co. v. National Biscuit Co., 2 Cir., 71 F.2d 662. Facts pleaded to negative title and exclusive use are a good defense. And the defense need not be stricken because it might be raised under a general denial. I construe this as a defense interposed by defendants to plaintiffs' claim that although their trade-mark is descriptive, it is still valid because it has acquired a secondary meaning.
The second complete defense, in essence, is one of estoppel, or laches amounting to an estoppel. It is stated therein that the plaintiffs' mark has been used as a common word for many years by manufacturers and by fashion writers to describe certain types of merchandise and embroidery; that such use was without plaintiffs' consent, but that plaintiffs never objected and thus tacitly recognized legal right in others to use the mark. It is claimed that therefore plaintiffs are estopped from asserting its rights against these defendants.
This defense appears sufficient to establish an estoppel, or at least to prove "loss of distinctiveness", which is a good defense. Saxlehner v. Eisner & Mendelson, 179 U.S. 19, 21 S.Ct. 7, 45 L.Ed. 60. It is impossible to say that an estoppel could not be spelled out. Plaintiffs' contention that the facts pleaded do not constitute a good defense is erroneous. Furthermore there is no doubt but that the defense of estoppel or laches must be affirmatively pleaded. Rule 8 (c), F.R.C.P. This defense, therefore, should not be stricken.
In the third complete defense it is asserted that the plaintiffs have always represented that their handbags, bearing their mark, are made from corded fabric, but that at the present they are using the mark on bags not so made, in order to deceive the public and the trade.
Plaintiffs contend that this defense is insufficient to establish "fraud", and hence should be stricken. On the argument however, defendants' counsel characterized this defense as one of "unclean hands". Plaintiffs' attorney rejoined that if the court's opinion stated this "concession" by defendants, plaintiffs would withdraw their objections. This opinion, therefore, so states, and I shall consider the objections withdrawn.
The fourth defense is stated to be partial and is one of res judicata. It is alleged that, previously, plaintiffs sued a third person in the state court for the same relief as here; that defendants there set up the same defenses as the defendants in the instant case, and that judgment there was for the defendants. It is further stated that the state court found that the use of the trade-marks (same as here) by defendants was not unfair competition; was not an infringement; that the plaintiffs' mark is merely descriptive and had not acquired a secondary meaning. It is asserted that, as to these matters, at least, the state court judgment is res judicata.
Defendant cites Good Health Dairy Products Corp....
To continue reading
Request your trial
-
Gallahar v. George A. Rheman Co.
...Rules of Civil Procedure; Pennsylvania R. Co. v. Musante-Phillips, Inc., D.C., 42 F.Supp. 340(3), 341; Thierfeld v. Postman's Fifth Ave. Corp., D.C., 37 F.Supp. 958, 960(20), 962. That they were omitted from the original answer is of no consequence when justice requires them to be allowed b......
-
Magna Pictures Corp. v. Paramount Pictures Corp.
...from waiver. The plaintiff and the court gain by this greater specificity of defendant's pleading. Theirfeld v. Postman's Fifth Avenue Corp., D.C.S.D.N.Y.1941, 37 F.Supp. 958, 960; United States ex rel. Rodriguez v. Weekly Publications, Inc., D.C.S.D.N.Y.1947, 74 F.Supp. 763, 764. Cf. Chica......
-
McKesson and Robbins, Inc. v. Charles Pfizer & Co.
...decision would not be admissible at the present time in a trial on the merits due to its lack of finality. Thierfeld v. Postman's Fifth Avenue Corp., 37 F.Supp. 958 (S.D.N.Y. 1941). But its admissibility as prima facie evidence would be for the purpose of proving the allegations of the amen......
-
Societe Comptoir De L'Indus. v. Alexander's Dept. Stores, Inc.
...defendant purchases garments debar plaintiff from court. Defendant cites Judge Conger's statement in Thierfeld v. Postman's Fifth Avenue Corporation, D.C.S.D.N.Y., 37 F. Supp. 958, 962, "Threatening defendants' customers with infringement suits, when done in bad faith would sustain the gran......