Triangle Publications v. Hanson

• Decision Date: 16 May 1946
• Docket Number: No. 3462.,3462.
• Citation: 65 F. Supp. 952
• Parties: TRIANGLE PUBLICATIONS, Inc., v. HANSON et al.
• Court: U.S. District Court — Eastern District of Missouri

65 F. Supp. 952

TRIANGLE PUBLICATIONS, Inc., v. HANSON et al.

No. 3462.

District Court, E. D. Missouri, E. D.

May 16, 1946.

Samuel H. Liberman and Shepley, Kroeger, Fisse & Ingamells, all of St. Louis, Mo., and Bell, Murdoch, Paxson & Dilworth, of Philadelphia, Pa. for plaintiff.

Howard Elliott, Aubrey B. Hamilton, and G. T. Priest, all of St. Louis, Mo., and Charles Sonnenreich, of New York City, for defendants.

DUNCAN, District Judge.

Plaintiff is a corporation organized under the laws of the State of Delaware, with its principal office in Philadelphia, Pennsylvania. It is the publisher of the Philadelphia Public Ledger and of numerous other publications, including the magazine "Seventeen" which is published in the City of New York and devoted to the interests of girls in the teen age group, from 13 to 17 or 18 years of age.

The defendants Gilbert E. R. Hanson and Joseph Schwartz, are co-partners, residents of the City of St. Louis, Missouri, and engaged in the manufacture and sale to retailers of dresses for teen age girls, under the trade name "Seventeen for the Junior Teens."

Plaintiff alleges that it is the owner of the trademark "Seventeen" and that the defendants have copied said trademark, and have been guilty of unfair trade practices in the use of said name in the advertising and sale of their dresses under the trade name "Seventeen for the Junior Teens".

In their brief the defendants attack the jurisdiction of the court on the ground that there is no substantial allegation in plaintiff's complaint as to the validity of the trademark "Seventeen," and that on account thereof, the action for unfair trade practices must be based upon diversity of citizenship and jurisdictional amount, and insist that there is complete lack of any showing as to the jurisdictional amount, and that the court therefore, is without jurisdiction to try and determine the case on its merits.

The defendants deny the validity of the trademark "Seventeen"; deny that they have been guilty of unfair trade practices with respect thereto, and contend that there can be no unfair competition between the publisher of a magazine and the manufacturer of girls' dresses, because the businesses are dissimilar and their merchandise not of the "same descriptive properties."

By way of counterclaim, defendants contend that the plaintiff wrongfully threatened certain department stores, manufacturers of fabrics from whom defendants purchased materials, and other persons who were purchasers, or about to become purchasers of defendants' merchandise, with suits for infringement if they continued to deal or dealt with the defendants in the purchase and sale of defendants' merchandise to be sold under the trade name "Seventeen for the Junior Teens."

With regard to the jurisdiction of the court, the plaintiff alleges inter alia that it is the owner of the trademark "Seventeen" which has been registered in the United States Patent Office, and that the defendants have wrongfully appropriated the word as its trade name in the manufacture of teen age dresses.

A substantial allegation of the registration of a trademark under the Act of 1920, 15 U.S.C.A. § 85, 41 Stat. 535 is sufficient to give the District Court jurisdiction of the merits. Armstrong Paint & Varnish Co. v. Nu-Enamel Corp., 1939, 305 U.S. 315, 59 S.Ct. 191, 83 L.Ed. 195; Dwinell-Wright Co. v. National Fruit Products Co., 1 Cir., 1944, 140 F.2d 618.

Moreover, it is a well settled principle of law that where the court acquires jurisdiction under the Trade-Mark Act, even though the court find against the plaintiff as to the validity of the trademark, the court will retain jurisdiction and determine the issues upon the merits. Armstrong Paint & Varnish Co. v. Nu-Enamel Corp., supra; Dwinell-Wright Co. v. National Fruit Products Co., 1 Cir., 140 F.2d 618 supra; Hurn v. Oursler, 1933, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148; Lewis v. Vendome Bags, 2 Cir., 1939, 108 F.2d 16.

It seems to me that the allegation with respect to the registration, ownership and infringement of the trademark is plainly substantial and is sufficient to confer jurisdiction upon this court.

There is no question about the residence of the parties and the diversity of citizenship. At the conclusion of the trial, one of counsel for defendants stated: "Mr. Priest: May I correct one idea, Your Honor, as to the question of jurisdiction? There is no question of the Court's jurisdiction at all in this matter; the diversity of citizenship is sufficient. But coming to apply the law of unfair competition, the cause of action having arisen in this jurisdiction, the Missouri law would govern."

While there is no direct proof as to any loss sustained as a result of the infringement of the trademark, or because of unfair competition or trade practices, it would seem that because of the very nature of the case, considering the extent of the circulation of plaintiff's magazine — 750,000; the charge for advertising ($1800 a page), and the extent of the sales of defendants' merchandise, the amount involved is in excess of $3000. The question of jurisdiction upon either theory is ruled against defendants.

The next question raised by the defendants is that of the validity of the trademark. A fuller understanding of the facts regarding the selection of the name "Seventeen" and its significance, will be desirable. For a number of years prior to the middle of May 1944 the plaintiff had been publishing a magazine known as "Stardom." It was deemed advisible to abandon the publication of that magazine and to publish a different type of magazine under another name, and the name "Seventeen" was selected. The new publication to be devoted exclusively to the problems of girls between the ages of 13 and 17 or 18 years of age, particularly with respect to style in all of its complicated phases; to cosmetics, and to other objects of personal adornment; to written articles dealing with the problems of this teen age group of girls in their relations with each other, with their seniors, with their families and with their country. In short, it was to be a magazine devoted to the physical, esthetic, psychological and educational problems of girls 13 to 17 or 18 years of age.

In its appeal to this group of girls, plaintiff proposed to advertise extensively such commodities as above mentioned, produced by the various manufacturers of the country. Naturally a name which would immediately be suggestive of the purposes of the magazine and appeal to the group to which it was to be directed was of the utmost importance. The name "Seventeen" was suggested by the book "Seventeen" written by Booth Tarkington in 1915. A reading of that interesting book and an analysis of the characters portrayed by the author, all of whom were teen-agers from 17 down, immediately will suggest the significance of the name "Seventeen."

To use the words of Mrs. Valentine, the editor-in-chief—"the name epitomizes the very spirit of the group of girls I hoped to reach." Before the adoption of the name, a communication was addressed to Booth Tarkington requesting his permission for its use, and such permission was granted.

It is a well recognized fact that this particular group of young people, both male and female, pass through a state of mind on their way to womenhood and manhood that is experienced at no other period in life. Their parents and teachers are thoroughly familiar with the condition and the problems resulting from it. To some extent they have a language of their own, certain types of clothing appeal to them, their problems weigh more heavily upon them and attain greater significance than at any other period in life. It is therefore natural that in the publication of a magazine to appeal to this particular group, realizing their state of mind, their problems and their customs, a word which would immediately upon sight reflect their interest and problems, would be highly desirable. The publisher of the magazine thought the word "Seventeen" did just that.

The magazine is approximately 10 × 13 inches in size and the word "Seventeen" appears across the top of the cover page in letters approximately two inches in height and of a width in proportion to the size of the magazine. Also upon the colored cover is usually to be found the picture of a very attractive young girl clothed in apparel suitable to her particular type. So it was with all of these things in mind that the name "Seventeen" was selected as the name of the magazine.

On August 22, 1944, plaintiff filed an application for the registration of the name "Seventeen" as a trademark, and on January 9, 1945, the Commissioner of Patents issued to plaintiff certificate of registration No. 411,294.

The defendants contend that the word "Seventeen" is a descriptive word; that it is descriptive of the age of a person. I am inclined to believe that it is suggestive rather than descriptive — suggestive of youth and adolescence. Application of Stephens-Adamson Mfg. Co., 49 App.D.C. 181, 262 F. 635; Reardon Laboratories v. B & B Exterminators, 4 Cir., 1934, 71 F.2d 515; Industrial Rayon Corp. v. Dutchess Underwear Corp., 2 Cir., 1937, 92 F.2d 33, certiorari denied 303 U.S. 640, 58 S.Ct. 610, 82 L.Ed. 1100; General Shoe Corp. v. Rosen, 4 Cir., 1940, 111 F.2d 95; Pennzoil Co. v. Crown Central Petroleum Corp., D.C.D.Md.,1943, 50 F.Supp. 891, affirmed 4 Cir., 140 F.2d 387, certiorari denied 322 U.S. 750, 64 S.Ct. 1261, 88 L.Ed. 1581; Gannert v. Rupert, 2 Cir., 1904, 127 F. 962; In re One Minute Washer Co., 95 F.2d 517, 25 C.C.P.A., Patents, 978; Esquire, Inc. v. Esquire Bar, D.C.S.D.Fla., 1941, 37 F.Supp. 875.

The defendants also contend that at the time they appropriated the name "Seventeen" as their trademark, it had not attained a secondary meaning or significance, identifying it as plaintiff's magazine. In this regard, plaintiff contends that it must have attained such significance as the property of the...