The opinion of the court was delivered by: BYERS
The plaintiff seeks an injunction against the infringement of its trade-mark "Finchley" by the defendants, one of whom (Hess) is a manufacturer of women's dresses, and the other (Gertz) is a distributor thereof, in this district.
At the hearing, the plaintiff waived its prayer for an accounting, and since there is no question of unfair competition involved, the sole issue is narrow; namely, whether the use by Hess of its trade-mark ("Fay Finchley") constitutes infringement.
The plaintiff's mark has been registered with the Patent Office, in January of 1927 for men's clothing, and in February of 1930 for women's clothing.
In November of 1937, the defendant Hess registered under the 1920 Act, 15 U.S.C.A. §§ 121-128, its trade-mark for women's dresses. The registration process under that statute did not invite opposition in the Patent Office, which is urged as a reason why the registration itself, so accomplished, should be disregarded for hhe purposes of this litigation. The defendant does not rely upon that registration and no attention will be paid to it.
The testimony fairly establishes the use by the plaintiff of its trade-mark since 1916, when it was organized under the laws of the State of New York, and commenced doing business. There are branches in Palm Beach and Southampton; also there is a Chicago enterprise conducted by an Illinois corporation of substantially the same name, which is affiliated with the plaintiff, in that there are some officers or directors in common, and some of plaintiff's officers have made a considerable financial contribution to its capital; the corporate interrelations are such that the Chicago enterprise uses the trade-mark in the conduct of its business with the consent of the plaintiff.
The plaintiff's business consists in the sale of men's apparel which is manufactured for it by others, and for two or three years as recently as 1934 it sold women's coats and hats in its New York store under the trade-mark "Finchley".
That the plaintiff's business is of substantial proportions seems not to be disputed by the defendants; nor is there any testimony tending to contradict that of the plaintiff that it has expended upwards of One Million Dollars in broadly advertising its wares and trade-mark in newspapers, magazines, pamphlets, etc.
There is no holding out that the plaintiff is a manufacturer, but the evidence is persuasive that its trade-mark has come substantially to identify the various products which it sells, and that use of that trade-mark has been made in connection with women's apparel.
The defendant Hess manufactures about one hundred so-called "numbers" of women's dresses, which it supplies to distributors, and does a certain amount of local newspaper advertising of its garments, displaying as part of each advertisement the names and addresses of retail dealers from whom purchases can be made. Of these "numbers" but two have been identified by a trade-mark, and one of those is that against which this plaintiff seeks protection.
The first question for determination is whether the defendant's mark so closely resembles the plaintiff's as to constitute infringement.
There can be no doubt that, as the plaintiff's mark consists of one word, any other mark which adopts that word adopts the dominating feature of the plaintiff's mark, and no reason is apparent why the plaintiff should not be protected against such appropriation. See Queen Mfg. Co. v. Isaac Ginsberg & Bros., 8 Cir., 25 F.2d 284; Reid, Murdoch & Co. v. H.P. Coffee Co., 8 Cir., 48 F.2d 817; Ammon & Person v. Narragansett Dairy Co., D.C., 252 F. 276. In the first, it is said (page 287):
"In order to constitute an infringement, it is not necessary that the trade-mark be literally copied. * * * There may be infringement where the substantial and distinctive part of the trade-mark is copied or imitated. * * * Dissimilarity in size, form, and color of the label and place where it is applied are not conclusive against infringement."
Numerous authorities are cited in support of the foregoing, and the language quoted is thought fairly to represent the ...