Triangle Publications v. Rohrlich

• Decision Date: 06 May 1948
• Docket Number: 53,Dockets 20682,No. 52,20683.,52
• Citation: 167 F.2d 969
• Parties: TRIANGLE PUBLICATIONS, Inc., v. ROHRLICH et al. ROSENBAUM et al. v. TRIANGLE PUBLICATIONS, Inc.
• Court: U.S. Court of Appeals — Second Circuit

167 F.2d 969 (1948)

TRIANGLE PUBLICATIONS, Inc., v. ROHRLICH et al. ROSENBAUM et al. v. TRIANGLE PUBLICATIONS, Inc.

Nos. 52, 53, Dockets 20682, 20683.

Circuit Court of Appeals, Second Circuit.

April 14, 1948.

Rehearing Denied May 6, 1948.

Lord, Day & Lord, of New York City (Herbert Brownell, Jr., and Woodson D. Scott, both of New York City, and Murdoch, Paxson, Kalish & Dilworth and Richardson Dilworth, all of Philadelphia, Pa., of counsel), for plaintiff-appellee and cross-appellant in first action, and defendant-appellee in second action.

Pennie, Edmonds, Morton & Barrows, of New York City (George E. Middleton and William M. Pollack, both of New York City, of counsel), for defendants-appellants in first action and for plaintiffs-appellants in second action.

Before AUGUSTUS N. HAND, CLARK and FRANK, Circuit Judges.

AUGUSTUS N. HAND, Circuit Judge.

The plaintiff, Triangle Publications, Inc., a Delaware corporation, has published since September 1944 a girls' magazine entitled "Seventeen," for which a trade-mark registration was granted to plaintiff on January 9, 1945, for a "monthly magazine devoted to the interests of girls." In February 1945, the defendants, citizens of New York, adopted "Miss Seventeen Foundations Co." as a partnership name under which to make and sell girdles, and "Miss Seventeen" as the trade-mark for those girdles. They applied for registration of "Miss Seventeen" as a trade-mark for such girdles on June 28, 1945.

Early in 1946 the plaintiff began to write letters to some of defendants' customers charging them with trade-mark infringement and stating that if they did not discontinue the use of the mark "Seventeen" it would institute suit to enjoin its further use by them and to recover damages. Believing this claim to be unwarranted, the defendants brought an action in the Supreme Court of New York to restrain such interference with their business. The plaintiff removed the action to the District Court for the Southern District of New York and instituted an action of its own for infringement of its registered trade-mark and unfair competition by the use of "Seventeen" on defendants' girdles. It at the same time interposed counterclaims in the removed action which are substantially identical with the complaint in its own action. The two suits were consolidated for trial. Howard Strumpf, listed as a party-defendant in the action by Triangle Publications, Inc., was not served with process and did not appear. In the present opinion we shall call Triangle Publications, Inc., plaintiff and Miss Seventeen Foundations Co., defendant.

The District Court was of the opinion that magazines and girdles were not goods of the same descriptive properties and reached the conclusion that therefore defendants were not "guilty of statutory trade-mark infringement," but it determined that the defendants were guilty of "unfair competition and unfair trading entitling plaintiff to relief." It accordingly entered a judgment granting a permanent injunction against the further use by defendants of the word "Seventeen" or the numeral "17" and ordering an accounting of all defendants' profits realized in the sale of girdles under this trade-mark subsequent to October 4, 1945. It also entered a judgment dismissing the defendants' action.

The plaintiff has appealed from so much of the judgment in its own action as failed to order an accounting of profits from the time the defendants originally commenced doing business as "Miss Seventeen Foundations Co." until October 4, 1945. The defendants have appealed from the judgments in both actions.

The judge found that from September 1944, when the plaintiff first published its magazine "Seventeen" for girls thirteen to eighteen years of age, the magazine became an important medium for advertising teen-age apparel and accessories, and that by January 1945 a large proportion of the users of teen-age apparel had acquired a belief that articles, including girdles, advertised in or mentioned editorially by the magazine had an added desirability. He found further that by January 1945 the use of "Seventeen" to describe any article of teen-age apparel, including girdles, was likely to create the belief in the mind of teen-age girls that the article was advertised in or commented upon editorially by the magazine, and that the use of "Seventeen" as a trade-mark or trade name by a manufacturer of teen-age apparel was likely to cause damage to plaintiff's goodwill in the name of its teen-age fashion magazine. The judge also determined that "Seventeen" as the title of the magazine was a valid trade-mark in that it was arbitrary and fanciful and not descriptive of the magazine or its subject-matter and that it almost immediately acquired a secondary meaning. With regard to defendants' choice of the name "Miss Seventeen" for their girdles, the judge found that when they decided to use and did use "Seventeen" as part of the trade name they knew of the existence and nature of plaintiff's magazine and of its success in the teen-age fashion field. He found that "Seventeen" was a desirable name for the defendants because purchasers would have the erroneous belief that the girdles had been editorially approved by or advertised in the magazine and that this belief would aid their sales, and also that in advertising they placed primary emphasis upon the words "Miss Seventeen" and their retailers naturally tended to stress the word "Seventeen"

The judge further found that "Seventeen" was successful as a teen-age fashion magazine, as indicated by the large and rapid increases in its circulation, size, and advertising lineage and rates. He also held that it had played an important part in the merchandising of teen-age apparel in various ways, such as by conferences with manufacturers, editorial fashion comments, sales to manufacturers and merchandisers of reprints, counter-cards and blow ups of its comments and of advertising, monthly bulletins advising merchandisers how to tie in with forthcoming issues of the magazine, and by aiding merchandisers in arranging window displays and departmental displays. All this would seem to make it clear that the public was likely to attribute the use of "Seventeen" in connection with sales of teen-age merchandise to the plaintiff as a source of sponsorship.

Inasmuch as we think that the injunction granted by the decree was proper and that the court rightly sustained the charge of unfair competition as a basis for it, we need not determine whether there was an infringement of the registered trade-mark. But whether the defendants infringed a registered trade-mark or were guilty of unfair competition, we do not believe that an accounting should have been ordered.

The Eighth Circuit in Hanson v. Triangle Publications, 163 F.2d 74, upheld an injunction granted to the same company which is the plaintiff in the case at bar, enjoining Hanson and another, manufacturers of dresses for teen-age girls labeled "Seventeen for the Junior Teens," from using the word "Seventeen" in the manufacture, sale, distribution and advertising of such dresses. The court placed its decision upon a holding of unfair competition rather than upon infringement of the registered trade-mark for the reason that the trade-mark of Triangle Publications, though found to be fanciful and arbitrary, was considered as not being used upon "merchandise of substantially the same descriptive properties" as defendants. It also affirmed the trial court's denial of an accounting because there was no proof that the plaintiff therein had sustained any loss directly or indirectly. Upon facts that were without any significant difference from those in the case before us, the Eighth Circuit held that the defendants' use of "Seventeen" created a likelihood that the public would erroneously believe that defendants' dresses were advertised in or sponsored by the magazine and that the plaintiff's reputation and good will would thereby be injured. For this reason the plaintiff was held entitled to protection from such use of the misleading term. Judge Woodrough filed a dissenting opinion in which he expressed the view that "Seventeen" was a word of mere description which had acquired no secondary meaning. This was in effect a dissent upon the facts from the decision of the majority of his court and was in contradiction of the findings of the court below. The Supreme Court denied a petition for a writ of certiorari in the foregoing suit. 332 U.S. 855, 68 S.Ct. 387.

We are in accord with the views of the district judge and the Eighth Circuit that plaintiff's use of "Seventeen" was arbitrary and fanciful rather than descriptive of the magazine or its subject matter. In other words, it was employed as symbolical of teen-age girls and their interests rather than in any primary or literal sense. In the record before us there was substantial evidence to support the findings of the district court that the word "Seventeen" as used by the plaintiff had almost immediately acquired a secondary meaning and that the defendants' use of that word was likely to cause a confusion as to sponsorship by plaintiff that might be harmful to the latter's reputation. This is particularly shown by the testimony of qualified witnesses who were in the merchandising business, the tie-ins of the magazine with manufacturers and retailers noted above, and by the great number of its subscribers and advertisers. The district judge's finding that defendants deliberately chose their name in order to take advantage of the likelihood of confusion with plaintiff's magazine and the attribution of some of their sales to its sponsorship was supported by the evidence and involved questions of credibility for his determination. This selection of the word "Seventeen" by the defendants with such an intent was in itself evidence that there would be a likelihood of confusion and that such confusion would work to their advantage. Such a prospective...