Wembley, Inc. v. Diplomat Tie Company, Civ. A. No. 12046.

• Decision Date: 11 March 1963
• Docket Number: Civ. A. No. 12046.
• Citation: 216 F. Supp. 565
• Parties: WEMBLEY, INC. v. DIPLOMAT TIE COMPANY.
• Court: U.S. District Court — District of Maryland

216 F. Supp. 565

WEMBLEY, INC. v. DIPLOMAT TIE COMPANY.

Civ. A. No. 12046.

United States District Court D. Maryland.

March 11, 1963.

COPYRIGHT MATERIAL OMITTED

Melvin J. Sykes, Baltimore, Md., John H. O. Clarke, Annapolis, Md., Samuel Scrivener, Jr., Washington, D. C., Robert Weinstein, Martin L. C. Feldman, New Orleans, La., for plaintiff.

John Martin Jones, Jr., Piper & Marbury, Baltimore, Md., Albert J. Kramer, Washington, D. C., David Gerber, Burke, Gerber & Wilen, Baltimore, Md., for defendant.

R. DORSEY WATKINS, District Judge.

This is an action for alleged infringement by defendant of two registered trademarks owned by plaintiff, and for alleged unfair competition by the defendant. The complaint asserts that about June, 1954, plaintiff "conceived a special and novel plan and program for the merchandising of men's neckties, which plan and program was intended to increase the sale of neckties of its manufacture and which, in fact, had that result. This plan and program of merchandising included * * *" the adoption of the trademark "Color Guide" for plaintiff's neckties; the adoption of the trademark "The Tie with the Color Guide"; the registration of these two trademarks, the first on the Principal Register on August 14, 1956 by Registration No. 632,745 and the latter on the Supplemental Register on March 3, 1959 by Registration No. 675,108; the applying of a rider bearing one or both of the trademarks to plaintiff's ties; and the applying to each tie of a label advising the purchaser of the color of the suit with which the tie could best be worn; e. g. "wear with a black or blue suit;" and the advertising by plaintiff of this "merchandising plan and program and its neckties bearing the aforesaid rider and label * * *" Infringement and unfair competition by defendant are alleged to exist because defendant "adopted the same merchandising plan and program"; "adopted the trademark `The Tie with the Fashion Guide'", and the trademark "Fashion Guide" and used them in defendant's "merchandising plan and program". Damages in excess of $10,000 are alleged, and injunctive relief and an accounting are sought.

Color Harmony and History of the Tie Industry.

Dating from the 1930's, delineation of the color of the tie that could fashionably be worn with various colored shirts or suits, and combinations thereof, has had a place in the advertising of necktie manufacturers. The advertising beginning in the 1930's consisted of (1) national consumer magazine "spreads" featuring, in color, ties matched to suits (e. g., Defendant's Exhibit 1; Arrow, "with * * * suit, wear * * * shirt, * * * tie, and * * * handkerchief"; McCurrah, "For your * * * suit — with * * * shirts" then a photograph of various colored ties to match); (2) booklets or charts published by the tie manufacturers which indicated harmonious color combinations; (3) "riders" or hangers through which the ties were placed which indicated, in various word combinations, the color of suit with which the tie could correctly be worn (e. g., "colors of tie planned to be worn with * * * shirt" or "this tie is smart with * * * suits," — Calcutta Ties — Climax Neckwear); (4) "spreads" in retail trade publications similar in message to (1) but primarily appealing to the retailer's desire for easier sales rather than to the consumer's color consciousness. It appears, although the evidence on this point is not clear or unconflicting, that the color harmony message was sparsely used in the early 1950's, and that the manufacturers who had earlier featured that sort of advertising had drifted into oblivion. However, continuing into the early 1950's magazines aimed at the consumer (Esquire) and the retailer (Men's Wear) would indicate harmonious color combinations, with the trade publications featuring advertisements showing a salesman from a prominent store giving advice on how to sell ties. The promotion of color to harmonize with a suit was always suggested in such advertisements.

Wembley and "Color Guide."

Wembley, one of the largest of about one hundred tie manufacturers in the United States, with gross annual sales of between five and ten million dollars, was organized in 1936 and has its home office in New Orleans, Louisiana. Just before the Christmas season in 1950 Wembley became concerned with dropping neckwear sales throughout the industry. In order to investigate this decline and thereby to gain insight into, and if possible, to increase sales, Wembley placed a member of its Research Department in the men's department of a large New Orleans department store to serve as one of the sales personnel and to note "what she found out about the sales of neckwear during the Christmas period." (Transcript, page 243). Through this means Wembley learned that "the great majority of the people who bought neckwear were interested in what color suit the neckwear should be worn with." As a result of this information Wembley began a program to promote color harmony in 1951.

The first Wembley color promotion was the merchandising of a wardrobe set of three ties, each to be worn with a suit of a different color. This promotion was discarded in favor of placing on individual ties a rider or hanger indicating the color suit with which the tie should be worn. These riders or hangers helped display the tie at the retail level and were being used for display purposes by other manufacturers (Transcript, page 555), but without the color information, at the time Wembley introduced its display and information riders or hangers. Wembley promoted its color concept through these riders from 1952 to 1954, and the "wear with" theme became a feature of Wembley advertising at this same time.

Because the, paper or plastic, riders or hangers were usually discarded by the consumer upon the first use of the tie, Wembley believed its color promotion did not "carry very well with the consumer." To remedy this, S. E. Pulitzer, E. S. Pulitzer and one Hausser, respectively, Wembley's President, Vice President and former advertising manager, devised a color guide promotion in which the rider or hanger on the tie called attention to the "Color Guide", a fabric label sewn on the tie to indicate the color of the suit with which the tie should be worn. On the rider was the phrase "The Tie with the `Color Guide'", or "Color Guide" and the sewn label stated "Wear with * * * (color of) suit." The phrase "Color Guide" and the permanent label with color information first appeared in August of 1955, the permanent label being designed primarily to carry the color information to the ultimate consumer as distinguished from the retailer or the purchaser. Wembley claims to have been the first tie manufacturer to attach permanent labels bearing color information. However, labels of all kinds have been sewn on garments of all kinds for many years to indicate the manufacturer, the material of which the garment is made and/or the size of the garment.

Since 1954 Wembley has expended $227,685 on labels and $242,421 on riders, chiefly for the Color Guide promotion. Wembley has sought to promote its ties through a substantial amount of national advertising directed to the consumer;¹ advertising in retail trade journals, such as Men's Wear, Daily News Record, California Men's and Boy's Style, and advertising through TV commercials on the Bob Pettit, professional football, and Jack Paar shows. Wembley has designed display racks and display cards, engaged in direct mail advertising to the retailer, and made available cooperative advertising (retailer sharing cost of advertising featuring fact that Wembley is sold in retailer's store). The major proportion of this advertising has included the Color Guide promotion, but with that feature of the tie often being given subordinate billing to another feature, such as wrinkle resistance or wash and wear. The current Wembley advertising features color.

Endeavoring to protect its trademarks, Wembley, in addition to its two United States registrations, registered "Color Guide" as a trademark with the Commonwealths of Australia, New Zealand and Canada. Moreover, by letter dated September 18, 1959 Wembley objected to the use by A. Schreter & Sons Co., Inc., of Baltimore, Maryland, of a paper rider placed on neckties bearing the following wording:

"COLOR COORDINATED TIE See Label for suit to wear with this tie."

Nor has plaintiff been less diligent in asserting violations of its alleged rights by defendant.

Diplomat and "Fashion Guide."

The Miller brothers have, as partners, been manufacturing ties with the Diplomat label since August 1, 1945. However, Samuel Miller, one of the partners, asserted his personal entry into the tie business in 1932. Diplomat, a Baltimore firm of much smaller size than Wembley (Transcript, page 527), manufactures ties under various labels. Approximately fifty per cent of defendant's ties bear the Diplomat label. Thirty five per cent are manufactured for Belk Stores, with the Archdale label. Another fifteen per cent are given the label of the individual store which retails them, e. g., Hochschild-Kohn, etc.

In 1955, a point in time after Wembley had begun its "Color Guide" promotion but before the mark "Color Guide" had been registered on the Principal Register, the Miller brothers began to manufacture ties bearing permanent labels indicating with what color suits the ties were to be worn. The idea of selling a tie with such a label came from Samuel J. Miller, who was familiar with Wembley's attaching of a color information label to its ties at the time he suggested the idea. Samuel J. Miller indicated in response to a question put by the court, that he studies everybody in the same line of business and, if he feels they have a good merchandising idea which is not protected, he will urge Diplomat to use the idea. (Transcript, page 97). He referred to such approach as common to the trade. Samuel J. Miller further indicated that when he saw the...