The opinion of the court was delivered by: BRIGHT
Plaintiff is the owner of trademark 235,880, registered November 29, 1927, by Schneider & Miller, Inc., for the words 'Hoot Lass' Bonnie or ladies' coats, in Class 39, Clothing, the mark to be affixed to the goods by placing thereon a label. Plaintiff is the successor in title to the business of Schneider & Miller, Inc. and to the trademark.
Claiming an infringement of the trademark, and unfair competition in the use by defendants of the words 'Bonnie Lassie' and a design, colorably imitating the trademark and design used by plaintiff therewith, it brings this action for an injunction, accounting and damages.
Defendants contend that the action is founded solely on the trademark; that plaintiff's design, consisting of the figure of a Scotch dancing girl in a diamond shaped enclosure, was never registered; that defendants' mark 'Bonnie Lassie' (not registered) is not a simulation or copy of plaintiff's; that similar words, such as Bonnie Laddie, Bonnie Lassie, and Lassie, have been used as trademarks for over 35 years for similar goods; and, therefore, the protection of plaintiff's trademark must be limited strictly to ladies' coats and suits; that defendants are not engaged in a competitive business, and the products manufactured by them are not sold or displayed with plaintiff;s; and that plaintiff has failed to establish that defendants are engaged in interstate commerce. (In making this last contention, however, defendants have overlooked the testimony given by Herman Rottenberg, one of the copartnership, that their merchandise is sold throughout the country; and to chain and department stores, and mail order houses.)
Plaintiff is engaged in the manufacture and sale of ladies' and young misses' coats and suits, and has been so engaged since 1929. Defendant, since 1941, has manufactured and sold sweaters, women's knitwear, ladies', juniors', misses' and children's polo shirts, blouses, bedjackets and suits.
Plaintiff, on the dissolution of Schneider & Miller, Inc., in 1929, acquired their trademark 'Hoot Lass' Bonnie and have since been using it on labels attached to ladies' and misses' coats and suits.
In 1933, plaintiff began to use labels on its product which had on them the design of a Scotch dancing girl in a diamond shaped enclosure, on the top two sides of which were the trademark words 'Hoot Lass' Bonnie. On February 27, 1934, it registered as a trademark for ladies' coats a label containing the words 'Del-Ray' and in the upper left corner was printed the diamond design and words mentioned. The statement specifies that the trademark had been continuously used in the applicant's business since July 14, 1931. Other labels, having on them the same diamond shaped design with the Scotch dancing girl enclosed and the trademark words 'Hoot Lass' Bonnie, were registered as trademarks by the plaintiff, one for the words 'Llamadown' on February 27, 1934, stated to have been used since May, 1932; another for the words 'Lassie Tweed' on March 13, 1934, stated to have been used since July 14, 1931; and another for 'Lustre Wave' on May 25, 1937, stated to have been used since December 15, 1936.
In addition to the foregoing other labels, containing the diamond design with 'Hoot Lass' Bonnie as mentioned, were used by plaintiff upon coats and sportwear, in connection with 'Reflectone' (registered November 9, 1937, and used from 1937 on), 'Shag-Rilla' (registered November 23, 1937, and used from 1937 on), and 'Bonnie-brooke' (registered September 17, 1940, and used from 1940 on).
Other labels, containing the diamond design and trademark words, were used with other unregistered names to designate plaintiff's product, from 1940 on. So that it is fair to find that, in addition to the trademark 'Hoot Lass' Bonnie, plaintiff had adopted and used as its house mark the design of the Scotch dancing girl in the diamond shaped enclosure with the words 'Hoot Lass' Bonnie from at least 1933 on, and probably from July 14, 1931.
Its product was advertised nation wide in periodicals and trade papers used by manufacturers and buyers of ladies' ready-to-wear apparel, such as Women's Wear, Vogue, Harper's Bazaar, Mademoiselle, Seventeen, Glamour, Charm, Photoplay, as well as in the Nugent and Fairchild trade directories, for which advertising it had spent sums ranging from $ 3,458 in 1932 to $ 73,643 in 1945, and which advertising carried the design of the Scotch dancing girl and the trademark words. Sales of its product were made in retail specialty shops, department stores and other stores throughout the country where ladies' and misses' apparel, coats and suits were sold.
Defendants first adopted the design of the Scotch dancing girl on its labels in 1941, and has been using it down to the trial along with the words 'Bonnie Lassie', which latter had been used by them since 1940. Neither the design nor the words have been registered by them. Two labels, used by the defendants on ladies' sweaters manufactured and sold by them, were offered in evidence by plaintiff, each of which had on it the picture of a Scotch dancing girl; one of them (Exhibit 24) in conjunction with the words 'A Bonnie Lassie Sweater, 100% Virgin Wool, Carl Gutman & Co.', and the other (Exhibit 25) accompanied by the words 'A Bonnie Lassie Sweater'.
Defendants conceded that they had used facsimiles of these labels on their product, and had advertised such facsimiles in American Fashion, Women's Wear, Seventeen, Glamour, Charm, Harper's, and in Nugent's directory.
Plaintiff exhibited its 'Hoot Lass' Bonnie goods at the American Fashion show in Dallas in October, 1945. It advertised in American Fashion published by that show, and those who did so advertise were required to exhibit at the show. Plaintiff's ad had the design of the Scotch dancing girl in the diamond with the trademark words. In the same publication appeared defendants' advertisement of 'Bonnie Lassie' creations, women's knitwear, sweaters, ladies' and misses' polo shirts, blouses, bedjackets, shoulderettes, and children's polo shirts, suits, creepers and panties.
There was proof that the International Shoe Company had registered 'Bonnie Laddie' for shoes in 1924, and also had claimed 'Bonnie Lassie' to designate girls' shoes a long time ago. Borkin & Levine, Inc. had claimed and used the trademark 'Lassie Junior' on ladies' coats since 1936. Bird Knitting Mills Company on December 5, 1916, registered 'Bonnie Lassie' for use on hosiery, but there was no evidence of its use in the last 14 years. 'Lassie' was registered on November 10, 1925, by N. P. & J. Trabulski for mufflers and scarves of woven material. On June 13, 1938, 'Lassie' was registered by Contental Undergarment, Inc. for women's, misses' and children's undergarments, panties, bloomers, step-ins, chemises, slips, shirts, vests and sweaters, and that company had used it since October, 1938. Luxuray, Inc., on February 14, 1942, registered 'Bonnie Lassie Doveskins' for plaid print for ladies' and misses' slips, petticoats, bloomers, and other underwear, and had used it since September 1, 1939. It sold the name to one of the defendants in 1941, and it had been applied by defendants to cotton and rayon underwear since then.
Defendants sold their product throughout the country to mail order houses, department stores, chain stores and other shops; but it was claimed by them that coats and sweaters are not sold at ...