Villager, Inc. v. Dial Shoe Company
| Decision Date | 21 July 1966 |
| Docket Number | Civ. A. No. 40377. |
| Citation | 256 F. Supp. 694 |
| Parties | The VILLAGER, INC. v. DIAL SHOE COMPANY, Inc. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
George A. Burnstein, Philadelphia, Pa., for plaintiff.
Allen J. Levin, Theodore R. Mann, Philadelphia, Pa., for defendant.
SUR MOTION FOR PRELIMINARY INJUNCTION
A hearing on the motion was had on June 10, 1966. Witnesses were examined and cross-examined, and numerous exhibits were received into evidence.
In addition to the briefs and proposed findings of fact and conclusions of law submitted in advance of that hearing, both parties have since submitted comprehensive supplementary briefs. The pleadings, notes of testimony, and exhibits have been carefully reviewed. All points and authorities covered in the briefs and argument have likewise been studied, analyzed, and compared. The matter is accordingly in position for disposition in accordance with the findings of fact, discussion, conclusions of law, and order which appear after the following abbreviated preliminary statement.
Lest there be undue repetition herein, because findings of fact and conclusions of law will follow, this initial statement will be confined to the barest minimum statement necessary to an understanding of the nature of this controversy. It must be understood that the following introductory statements are to give way and be subject to the more precise and detailed statements of the findings of fact which follow thereafter.
Defendant is the older of the two companies, having been for 40 years in the business of selling shoes in Pennsylvania and surrounding states (N.T. 92). It does no manufacturing; it sells relatively low-priced shoes through its chain or chains of retail stores (N.T. 85).
For ten years the Plaintiff has been in the business of advertising, selling and distributing a line of women's wearing apparel and accessories as THE VILLAGER and, more recently, JUNIOR VILLAGER. These VILLAGER products are relatively high-priced and are sold in the more exclusive shops and department stores (N.T. 20). Sales and advertising have been nation-wide; and the increase in the sales (and advertising) of THE VILLAGER clothing and accessories has been remarkable.
Plaintiff's lines (THE VILLAGER and JUNIOR VILLAGER) have not included shoes, but Plaintiff has for some time been developing a line of shoes which it plans to start marketing in the fall of 1966.
Meanwhile Defendant began using the brand name Miss VILLAGER on a line of shoes. On June 10, 1966, Defendant had on hand at least 15,000 pairs of shoes boxed as Miss VILLAGER and imprinted with that brand name on the sock linings of the shoes.
Plaintiff alleges infringement of its registered trademarks under federal and state law and seeks permanent injunction; damage for injuries to its goodwill and reputation as the result of unfair competition; reasonable attorney fees; and costs. The only relief sought by the present motion, however, is a preliminary injunction against further use of the brand name Miss VILLAGER on shoes.
Jurisdiction has not been challenged. Not only is there diversity of citizenship and jurisdictional amount—but also there is clear jurisdiction under the trademark statutes (as will more fully appear in due course). Time, Inc. v. Life Television Corp., 123 F.Supp. 470, 473 (D.Minn. 1954).
Plaintiff's motion will be granted for the reasons set forth hereafter. Rule 65(d), Fed.R.Civ.P.
1. Plaintiff, The Villager, Inc., is a corporation organized and existing under the laws of the State of Delaware, having its principal place of business located at Richmond & Allegheny Avenue, Philadelphia, Pennsylvania (N.T. 5, 19).
2. Defendant, Dial Shoe Company, Inc., is a corporation organized and existing under the laws of the Commonwealth of Pennsylvania, having its principal place of business located at 4225 Chestnut Street, Philadelphia, Pennsylvania.
3. Since June, 1956 the Plaintiff and its predecessors have been engaged in the advertising, sale and distribution of women's wearing apparel, accessories and other related products under the trademark THE VILLAGER namely shirts, blouses, dresses, jackets, sportswear, slacks, neckwear, belts, suspenders, dickies, kerchiefs, headbands, sashes, cummerbunds, sweaters, kilts, dress ensembles of skirts and blouses, blouses and slacks, sweaters and slacks, and sweaters and skirts, and raincoats (N.T. 5-52).
4. Since 1960 the Plaintiff has advertised young women's wearing apparel, accessories and other related products under its registered trademark JUNIOR VILLAGER, namely, dresses, shirts, blouses, slacks, jackets, coats and skirts (N.T. 52, 53; Exh. P-27).
5. Since 1959 the Plaintiff and its predecessors have used the tradename THE VILLAGER in connection with the advertising, sale and distribution of women's wearing apparel, accessories and other related products (N.T. 19).
6. The trademarks THE VILLAGER and JUNIOR VILLAGER have been registered in the United States Patent Office and with the Office of the Secretary of the Commonwealth of Pennsylvania as follows:
7. Sales of the Plaintiff and its predecessors under the trademarks THE VILLAGER and JUNIOR VILLAGER have steadily improved since their initial adoption and use and such sales have increased from two million dollars in 1961 to over fourteen million dollars in 1965. They anticipate sales of approximately twenty million dollars in 1966 (N.T. 19, 25, 26).
8. Since 1961 The Villager, Inc. has advertised and promoted its trademarks throughout the United States. During this period, The Villager, Inc. has actively promoted and advertised such trademarks in magazines such as Glamour, Harper's Bazaar, Mademoiselle, Saturday Review, The New Yorker, and Vogue, all of which are distributed on a national basis throughout the United States. During this period, in addition to the magazine advertising program, these trademarks have been extensively advertised in newspapers and other print media. The advertising expenditures since 1961 have been in excess of one million dollars (N.T. 26, 27, 41-51).
9. The Plaintiff's trademarks have been extensively advertised throughout the United States in newspapers and other media by retail outlets offering Plaintiff's products for sale to the public (N.T. 49-51).
10. That as a result of the extensive sales of the Plaintiff's goods and its advertising promotional efforts the Plaintiff's trademarks have become well and favorably known to the general public and trade to identify the Plaintiff's goods, and they identify the source and origin of the Plaintiff's goods and represent substantial good will.
11. Dial Shoe Company and its subsidiaries operate approximately 49 shoe stores in the Philadelphia metropolitan area, which includes New Jersey. Some of the store locations are as follows: 52nd and Chestnut Streets; 4601 Frankford Avenue; 7302 Frankford Avenue; 63rd and Woodland Avenue; 2649 Germantown Avenue; 3605-07 Germantown Avenue; 5522-24 N. 5th Street (N.T. 80, 81, 86).
12. Without prior trademark search or market investigation, and also without Plaintiff's permission or advance knowledge, the Defendant began to use "Miss VILLAGER" as a trademark on shoes and on the boxes containing such shoes; and such shoes shoe boxes have been sold or stocked in all stores operated by Dial (N.T. 90, 92, 96).
13. VILLAGER is the dominant feature of Plaintiff's trademarks; and in its use of the trademark "Miss VILLAGER" the Defendant has caused the name VILLAGER to be displayed in large, bold lettering which has much greater prominence than the word "Miss" (N.T. 36; Exhs. P-32, P-35).
14. Defendant has approximately fifteen to sixteen thousand (15,000-16,000) pairs of shoes on hand bearing the trademark "Miss VILLAGER" (N.T. 84, 90; Exh. P-46).
15. Upon learning that Defendant was using the trademark "Miss VILLAGER" on shoes, the Plaintiff instructed its counsel to make demands upon the Defendant to discontinue its unauthorized use of VILLAGER. Such demand was made, but has not been complied with, and Defendant has...
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