Vogue Co. v. Vogue Hat Co.
| Decision Date | 20 July 1925 |
| Docket Number | No. 4066.,4066. |
| Parties | VOGUE CO. v. VOGUE HAT CO. et al. |
| Court | U.S. Court of Appeals — Sixth Circuit |
Harry D. Nims, of New York City (E. J. Marshall, of Toledo, Ohio, and MacDonald De Witt and Minturn De S. Verdi, all of New York City, on the brief), for appellant.
Samuel W. Banning, of Chicago, Ill. (Ephraim Banning, Thos. A. Banning and Thos. A. Banning, Jr., all of Chicago, Ill., Chas. H. Studin, of New York City, and Rathbun Fuller, of Toledo, Ohio, on the brief), for appellees.
Before DENISON, MACK, and DONAHUE, Circuit Judges.
Upon a motion to direct a form of mandate we have further considered the nature and extent of the permissible relief. Plaintiff asks that the word "Vogue" be entirely forbidden upon the hat linings or labels, unless it is sterilized by the warning, "not connected with Vogue Magazine." Defendant Hat Company thinks that at most only the "V girl" should be banned.
We are without the aid of specific precedent. We find a helpful principle in the one which we applied, perhaps somewhat obscurely, in Coca-Cola Co. v. Gay-ola Co., 200 F. 720, 723, 119 C. C. A. 164. Plaintiff in its drink used caramel for producing a peculiar reddish color. Defendant had the abstract right to use caramel as an ingredient, and so to get the same color. We held in effect that he had forfeited this abstract right by having used it as a part of his expressly fraudulent scheme, and so he must get his color some other way; he must not use caramel, though other makers might. So here we solve a difficult problem by concluding that this defendant's otherwise clear enough right to use its complete label "Vogue Hats," or "Vogue Hats, Fifth Avenue, New York" (without the plaintiff's trade-mark), is tainted by its intentional fraud in the original adoption of the label with the trade-mark. This fraud permeates the whole label and plan under which it built its present business, and it cannot retain and carry on that business, and become immune by merely dropping the V girl and the dominant V.
We think it would be going too far to forbid entirely the name or label "Vogue Hats" unless accompanied by the disclaimer. That name is substantially descriptive, and has no secondary meaning appurtenant to plaintiff's business. A majority of the court think that the words "Fifth Avenue, New York," or "New York," though they are abstractly lawful members of a proper label and business combination, yet by their suggestion of plaintiff's...
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