LE Waterman Co. v. Gordon

Decision Date16 July 1934
Docket NumberNo. 489.,489.
Citation72 F.2d 272
PartiesL. E. WATERMAN CO. v. GORDON.
CourtU.S. Court of Appeals — Second Circuit

Schechter, Lotsch & Sulzberger, of New York City (John L. Lotsch, of New York City, of counsel), for appellant.

Gifford, Scull & Burgess, of New York City (William F. Wilder and George F. Scull, both of New York City, of counsel), for appellee.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

L. HAND, Circuit Judge.

This is an appeal from an injunction pendente lite enjoining the defendant from using the word, "Waterman," upon razor blades. The bill and affidavits showed without contradiction the following facts: The plaintiff is, and for fifty years has been, a manufacturer of fountain pens and other similar articles, upon which it has continuously used the name, "Waterman's." On October 21, 1930, it registered the name as a trade-mark for fountain pens, mechanical pencils and similar writing instruments; it has never manufactured razor blades. The defendant is engaged in selling drugs, face powder, perfumes, cosmetics, hair tonics and other similar articles, to which he has recently added razor blades sold under the name "Waterman," which he offers no excuse for pirating. The plaintiff alleged that he was acting in conjunction with one, F. A. Waterman, of Oakland, California, who was selling as one bargain, a fountain pen and a package of razor blades, under the name "Waterman"; but this the defendant denied, and the judge for this reason refused to consider this feature of the charge. The plaintiff is a corporation organized in New York, and the defendant is a citizen of New York; the jurisdiction of the District Court therefore depended upon the registration of the mark.

It is now well settled in this country that a trade-mark protects the owner against not only its use upon the articles to which he has applied it, but upon such other goods as might naturally be supposed to come from him. Aunt Jemima Mills Co. v. Rigney, 247 F. 407, L. R. A. 1918C, 1039 (C. C. A. 2); Akron-Overland Co. v. Willys-Overland Co., 273 F. 674 (C. C. A. 3); Vogue Co. v. Thompson-Hudson Co., 300 F. 509 (C. C. A. 6); Wall v. Rolls-Royce, 4 F.(2d) 333 (C. C. A. 3); Yale Electric Corporation v. Robertson (C. C. A.) 26 F.(2d) 972; Duro Co. v. Duro Co., 27 F.(2d) 339 (C. C. A. 3). There is indeed a limit; the goods on which the supposed infringer puts the mark may be too remote from any that the owner would be likely to make or sell. It would be hard, for example, for the seller of a steam shovel to find ground for complaint in the use of his trade-mark on a lipstick. But no such difficulty arises here; razor blades are sold very generally by others than razor blade makers, and might well be added to the repertory of a pen maker. Certainly when the infringement is so wanton, there is no reason to look nicely at the plaintiff's proofs in this regard. On the merits there can therefore be no question that the judge was right.

In point of jurisdiction we might find difficulty, were it not for the recent decision of the Supreme Court in Hurn v. Oursler, 289 U. S. 238, 53 S. Ct. 586, 77 L. Ed. 1148. Two circuits have held that the District Court has no jurisdiction over a cause based only upon registry of the mark, if the infringer uses it upon goods of another class than that for which it was registered in the Patent Office. Atlas Mfg. Co. v. Street & Smith, 204 F. 398, 402, 47 L. R. A. (N. S.) 1002 (C. C. A. 8); Rosenberg v. Elliott, 7 F.(2d) 962 (C. C. A. 3); Beech-Nut Packing Co. v. Lorillard Co., 7 F.(2d) 967 (C. C. A. 3). It may be that this is no more than to say that if the putative infringement only concerns goods whose provenience cannot possibly be attributed to the owner, there is no cause of suit. Layton Pure Food Co. v. Church & Dwight Co., 182 F. 35, 32 L. R. A. (N. S.) 274 (C. C. A. 8), was apparently such a case. But if it means to go further and say that although the user would infringe the mark at common law, it is an infringement over which the District Court has jurisdiction only in case the infringing goods are in the same Patent...

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