Waldes v. International Mfrs.' Agency, Inc.

• Decision Date: 08 December 1916
• Citation: 237 F. 502
• Parties: WALDES et al. v. INTERNATIONAL MFRS.' AGENCY, Inc.
• Court: U.S. District Court — Southern District of New York

237 F. 502

WALDES et al. v. INTERNATIONAL MFRS.' AGENCY, Inc.

United States District Court, S.D. New York.

December 8, 1916

The defendant was incorporated early in September, 1912, but began to do business some time before-- just when it is not certain. They adopted for their trade-mark a globe having a plane representation of the Atlantic Ocean, with the continents on either side, at the top of which was an airship, at the center a steamer, and at the bottom a train of cars. On October 19, 1915, they obtained a trade-mark for this to be used on dress shields, snap fasteners, corset laces, celluloid thimbles, finger shields, and collar supports. Above the globe was the word, 'Eymay.' The business of the defendant is the sale of the articles mentioned in the registration and of notions generally.

Snap fasteners are sold in two ways: By the dozen on cards; and fastened into a tape, which is reeled. The plaintiffs have used a great many different kinds of cards in this country but by far the largest is a card going by the name of 'Koh-i-noor' in dark blue. An insignificant detail of this card printed in gold is the globe, which is the registered trade-mark. It is so printed, however, that the ordinary observer would hardly be able to pick it out without much attention, for the color of the gold is very little distinguished from the dark blue, and there are many other confusing features. The tape fasteners sold by the plaintiff are on a reel, which does not contain the trade-mark at all. Defendant sells its fasteners on a card, on which it does not use any representation of a globe; but it also sells tape fasteners, both on a reel and in a yellow box. On the front of the yellow box it uses its trademark of the globe without the word 'Eymay,' and it puts a paper band around the reel containing its full trade-mark. It is these two uses of which the plaintiff complains.

This is the usual suit for an injunction and accounting under Trade-Mark Registration Act, Feb. 20, 1905, c. 592, 33 Stat 724. The bill also asks for cancellation of the defendant's mark in so far as it conflicts with its own. The plaintiffs are aliens doing business in Austria, and the defendant is a corporation, a citizen of New York. On November 1, 1910, the plaintiffs obtained a registered trade-mark for snap buttons used as garment fasteners, which consisted of a plane representation of the Western hemisphere, with parallels and meridian. They asserted that this had been used in their Austrian business since July 1905, and had been registered in Austria.

On the trial the evidence was excluded of the use of the plaintiff's trade-mark in Europe, it appearing that over the whole continent of Europe the globe had been widely used and the court confined the plaintiff to its use in the United States. The plaintiffs then showed that the 'Koh-i-noor' mark had been used in enormous quantities since the year 1909 over 20,000,000 in all having been sold, although the business had fallen off greatly since the beginning of the Great War. They also showed that a card called the 'Rival' had been sold in large quantities, 1,800,000 in all, since the year 1909. This card had the upper half of the plaintiffs' trade-mark at the top of the card. It then showed some 13 other cards, which had been used in small quantities, being shipped over to this country in nothing like the amount of the 'Koh-i-noor,' or even the 'Rival.' The user of these cards is as follows:

Name of Card. Number of Cards Sold. When Sold.

Koh-i-noor . . . 8,536 From March 13, 1914, to June 16, 1916.

Koh-i-noor (No. 9). . . 3,600 From April 27, 1914, to March 26, 1915.

Best Quality . . . 7,902 From August 8, 1912, to April 21, 1913.

Corso (white card). . . 7,560 From July 19, 1913, to July 17, 1914.

Corso (green card). . . 15,684 From May 3, 1915, to October 6, 1915.

Queen . . . 19,656 From March 28, 1912, to June 6, 1913.

Zeppelin . . . 3,572 From March 15, 1912, to May 15, 1913.

London . . . 960 From April 15, 1915.

Conqueror . . . 45,300 From April 7, 1915, to August 3, 1915.

Noblem . . . 11,928 From April 12, 1915, to April 13, 1915.

Record . . .488 From August 27, 1914.

Mignon . . . 45,856 From July 13, 1915, to October 6, 1915.

Atlas . . . 40,555 From April 14, 1915, to October 6, 1915.

It also showed large and continuous advertising since 1909, in which the globe played a conspicuous part. In October, 1913, the plaintiffs objected to the use of the defendant's mark upon snap fasteners, but the defendant refused to accede to their claim.

Harry D. Nims, of New York City, for plaintiffs.

Louis S. Posner, of New York City, for defendant.

LEARNED HAND, District Judge (after stating the facts as above).

I think that there is enough proof in the case of a user antedating the defendant's user to support the plaintiffs' claim of a trade-mark, without considering the 'Koh-i-noor' user, or the question of law raised by the foreign user with local registration. The earliest use, besides the 'Rival' card and the 'Koh-i-noor,' is that of the 'Zeppelin' card, which began on March 15, 1912 consisted of 7 separate invoices, and amounted in all to 2,136 cards before September 1, 1912. The next use was of the 'Queen' card, beginning March 28, 1912, and amounting to 14,168 before September 1, 1912, in 32 separate invoices. Finally there is the 'Best Quality' use, beginning on August 8, 1912, and consisting of 4 separate invoices, amounting to 720 cards before September 1, 1912. The defendant's use cannot with certainty be dated before September 1, 1912, but possibly it may have run back to June 1, 1912. In the latter event we should have 3 invoices of 'Zeppelin,' aggregating 1,048 cards, and 13 invoices of 'Queen,' aggregating 4,164 cards, antedating it. The use thus begun in March 15, 1912, continued without any break up to June of this...