Before AUGUSTUS N. HAND, CLARK and FRANK, Circuit Judges.
AUGUSTUS N. HAND, Circuit Judge.
The plaintiff, Triangle Publications, Inc., a Delaware corporation, has published since September 1944 a girls' magazine entitled "Seventeen," for which a trade-mark registration was granted to plaintiff on January 9, 1945, for a "monthly magazine devoted to the interests of girls." In February 1945, the defendants, citizens of New York, adopted "Miss Seventeen Foundations Co." as a partnership name under which to make and sell girdles, and "Miss Seventeen" as the trade-mark for those girdles. They applied for registration of "Miss Seventeen" as a trade-mark for such girdles on June 28, 1945.
Early in 1946 the plaintiff began to write letters to some of defendants' customers charging them with trade-mark infringement and stating that if they did not discontinue the use of the mark "Seventeen" it would institute suit to enjoin its further use by them and to recover damages. Believing this claim to be unwarranted, the defendants brought an action in the Supreme Court of New York to restrain such interference with their business. The plaintiff removed the action to the District Court for the Southern District of New York and instituted an action of its own for infringement of its registered trade-mark and unfair competition by the use of "Seventeen" on defendants' girdles. It at the same time interposed counterclaims in the removed action which are substantially identical with the complaint in its own action. The two suits were consolidated for trial. Howard Strumpf, listed as a party-defendant in the action by Triangle Publications, Inc., was not served with process and did not appear. In the present opinion we shall call Triangle Publications, Inc., plaintiff and Miss Seventeen Foundations Co., defendant.
The District Court was of the opinion that magazines and girdles were not goods of the same descriptive properties and reached the conclusion that therefore defendants were not "guilty of statutory trade-mark infringement," but it determined that the defendants were guilty of "unfair competition and unfair trading entitling plaintiff to relief." It accordingly entered a judgment granting a permanent injunction against the further use by defendants of the word "Seventeen" or the numeral "17" and ordering an accounting of all defendants' profits realized in the sale of girdles under this trade-mark subsequent to October 4, 1945. It also entered a judgment dismissing the defendants' action.
The plaintiff has appealed from so much of the judgment in its own action as failed to order an accounting of profits from the time the defendants originally commenced doing business as "Miss Seventeen Foundations Co." until October 4, 1945. The defendants have appealed from the judgments in both actions.
The judge found that from September 1944, when the plaintiff first published its magazine "Seventeen" for girls thirteen to eighteen years of age, the magazine became an important medium for advertising teen-age apparel and accessories, and that by January 1945 a large proportion of the users of teen-age apparel had acquired a belief that articles, including girdles, advertised in or mentioned editorially by the magazine had an added desirability. He found further that by January 1945 the use of "Seventeen" to describe any article of teen-age apparel, including girdles, was likely to create the belief in the mind of teen-age girls that the article was advertised in or commented upon editorially by the magazine, and that the use of "Seventeen" as a trade-mark or trade name by a manufacturer of teen-age apparel was likely to cause damage to plaintiff's goodwill in the name of its teen-age fashion magazine. The judge also determined that "Seventeen" as the title of the magazine was a valid trade-mark in that it was arbitrary and fanciful and not descriptive of the magazine or its subject-matter and that it almost immediately acquired a secondary meaning. With regard to defendants' choice of the name "Miss Seventeen" for their girdles, the judge found that when they decided to use and did use "Seventeen" as part of the trade name they knew of the existence and nature of plaintiff's magazine and of its success in the teen-age fashion field. He found that "Seventeen" was a desirable name for the defendants because purchasers would have the erroneous belief that the girdles had been editorially approved by or advertised in the magazine and that this belief would aid their sales, and also that in advertising they placed primary emphasis upon the words "Miss Seventeen" and their retailers naturally tended to stress the word "Seventeen."
The judge further found that "Seventeen" was successful as a teen-age fashion magazine, as indicated by the large and rapid increases in its circulation, size, and advertising lineage and rates.He also held that it had played an important part in the merchandising of teen-age apparel in various ways, such as by conferences with manufacturers, editorial fashion comments, sales to manufacturers and merchandisers of reprints, counter-cards and blow ups of its comments and of advertising, monthly bulletins advising merchandisers how to tie in with forthcoming issues of the magazine, and by aiding merchandisers in arranging window displays and departmental displays. All this would seem to make it clear that the public was likely to attribute the use of "Seventeen" in connection with sales of teen-age merchandise to the plaintiff as a source of sponsorship.
Inasmuch as we think that the injunction granted by the decree was proper and that the court rightly sustained the charge of unfair competition as a basis for it, we need not determine whether there was an infringement of the registered trade-mark. But whether the defendants infringed a registered trade-mark or were guilty of unfair competition, we do not believe that an accounting should have been ordered.
The Eighth Circuit in Hanson v. Triangle Publications, 163 F.2d 74, upheld an injunction granted to the same company which is the plaintiff in the case at bar, enjoining Hanson and another, manufacturers of dresses for teen-age girls labeled "Seventeen for the Junior Teens," from using the word "Seventeen" in the manufacture, sale, distribution and advertising of such dresses. The court placed its decision upon a holding of unfair competition rather than upon infringement of the registered trade-mark for the reason that the trade-mark of Triangle Publications, though found to be fanciful and arbitrary, was considered as not being used upon "merchandise of substantially the same descriptive properties" as defendants. It also affirmed the trial court's denial of an accounting because there was no proof that the plaintiff therein had sustained any loss directly or indirectly. Upon facts that were without any significant difference from those in the case before us, the Eighth Circuit held that the defendants' use of "Seventeen" created a likelihood that the public would erroneously believe that defendants' dresses were advertised in or sponsored by the magazine and that the plaintiff's reputation and good will would thereby be injured. For this reason the plaintiff was held entitled to protection from such use of the misleading term. Judge Woodrough filed a dissenting opinion in which he expressed the view that "Seventeen" was a word of mere description which had acquired no secondary meaning. This was in effect a dissent upon the facts from the decision of the majority of his court and was in contradiction of the findings of the court below. The Supreme Court denied a petition for a writ of certiorari in the foregoing suit.332 U.S. 855, 68 S. Ct. 387.
We are in accord with the views of the district judge and the Eighth Circuit that plaintiff's use of "Seventeen" was arbitrary and fanciful rather than descriptive of the magazine or its subject matter. In other words, it was employed as symbolical of teen-age girls and their interests rather than in any primary or literal sense. In the record before us there was substantial evidence to support the findings of the district court that the word "Seventeen" as used by the plaintiff had almost immediately acquired a secondary meaning and that the defendants' use of that word was likely to cause a confusion as to sponsorship by plaintiff that might be harmful to the latter's reputation. This is particularly shown by the testimony of qualified witnesses who were in the merchandising business, the tie-ins of the magazine with manufacturers and retailers noted above, and by the great number of its subscribers and advertisers. The district judge's finding that defendants deliberately chose their name in order to take advantage of the likelihood of confusion with plaintiff's magazine and the attribution of some of their sales to its sponsorship was supported by the evidence and involved questions of credibility for his determination. This selection of the word "Seventeen" by the defendants with such an intent was in itself evidence that there would be a likelihood of confusion and that such confusion would work to their advantage. Such a prospective gain to the defendants, which apparently caused them to make use of the word "Seventeen," would necessarily be at the risk of the plaintiff's reputation and the realization of it through the erroneously supposed sponsorship of the plaintiff would injure the latter's reputation if goods sold by the defendants were inferior to the high quality which the public attributed to the goods actually advertised in or commented upon by the magazine. We agree with the holding of the Eighth Circuit that the defendants cannot lawfully impose any such risk upon the plaintiff by appropriating its name "Seventeen" because that name had come to indicate in the teen-age fashion field a sponsorship by or some relation to the magazine.
It is settled law that a plaintiff who has established a right to a trade name which is fanciful or arbitrary or has acquired a secondary meaning is entitled to protection of his reputation against the use of that name by others even upon non-competing goods, if the defendant's goods are likely to be thought to originate with the plaintiff. Yale Electric Corporation v. Robertson, 2 Cir., 26 F.2d 972; L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272; Standard Brands v. Smidler, 2 Cir., 151 F.2d 34; Bulova Watch Co. v. Stolzberg, D.C. Mass., 69 F.Supp. 543; Restatement, Torts, § 730.We can see no reason why the principle laid down by the foregoing decisions does not apply to the situation of confusion as to sponsorship found by the district judge to exist in the record before us. In either case, the wrong of the defendant consisted in imposing upon the plaintiff a risk that the defendant's goods would be associated by the public with the plaintiff, and it can make no difference whether that association is based upon attributing defendant's goods to plaintiff or to a sponsorship by the latter when it has been determined that plaintiff had a right to protection of its trade name. In each case the plaintiff is likely to suffer injury to his reputation and his trade name. Indeed, we have already applied this principle in a case involving sponsorship or approval of goods by the Boy Scouts of America in Adolph Kastor & Bros. v. Federal Trade Commission, 2 Cir., 138 F.2d 824. See also Esquire, Inc. v. Esquire Bar, D.C.S.D. Fla., 37 F.Supp. 875 where the use of the name of the magazine "Esquire" was enjoined.
Two decisions upon which the defendants rely are Durable Toy & Novelty Corp. v. J. Chein & Co., 2 Cir., 133 F.2d 853, and Vogue Co. v. Thompson-Hudson Co., 6 Cir., 300 F. 509; Vogue Co. v. Vogue Hat Co., 6 Cir., 6 F.2d 875, certiorari denied Thompson v. Vogue Co., 273 U.S. 706, 47 S. Ct. 98, 71 L. Ed. 850. In the first case we declined to enjoin the use of the name "Uncle Sam" in connection with toy banks. In weighing the conflicting interests there, it was thought that "Uncle Sam" represented a common name or symbol of national solidarity, was a part of the national mythology in the use of which all had a measurable interest and was therefore not subject to sole appropriation by any individual. It was also thought that the name was most unlikely to have acquired any secondary meaning to customers in stores. In the case at bar the name "Seventeen" as applied to plaintiff's magazine was not used in a descriptive sense and was properly held arbitrary and fanciful.The defendants made use of the word as referring to the magazine rather than for some legitimate purpose, as was done in Durable Toy & Novelty Corp. v. J. Chein & Co., supra. In the Vogue case, an injunction was at first denied as to use of the name of the magazine because the word "Vogue" was held to be descriptive and to have acquired no secondary meaning, though an injunction against the use of that name was later granted because of the fraud in defendant's appropriation of plaintiff's insignia, the use of which had been originally enjoined. We think the facts are thus plainly distinguishable from those in the case at bar. Similarly, a reading of the opinions in other cases cited by defendants shows that they invoke no different principle of law but are distinguishable on their facts, because they involve merely descriptive names or names which had acquired no secondary meaning that extended into defendant's field so as to cause a likelihood of confusion.
Defendants argue that plaintiff's use of the trade name "Seventeen" subsequent to the use of that term by a company named Juerelle, Inc., upon cosmetics tends to cause more confusion than does the word as applied to girdles, for the reason that the cosmetic field is larger and represents a more general interest on the part of teen-age girls.It may be that some confusion was caused in the cosmetic field in view of the protest by Juerelle, Inc., against the use of tags furnished by the plaintiff to cosmetic companies which advertised in plaintiff's magazine and competed with Juerelle, Inc. But the use of these tags was thereupon abandoned by the plaintiff and so far as the record indicates there was no subsequent objection by this company to the use by the plaintiff of the trade name "Seventeen." In any event, this prior use of "Seventeen" in the cosmetic field has no bearing on the issues before us and would not destroy the value of the name which the plaintiff has built up for its magazine in the apparel field or provide any defense for defendants' subsequent acts of unfair competition. Del Monte Special Food Co. v. California Packing Corp., 9 Cir., 34 F.2d 774; Restatement, Torts, § 717g. Such was the holding of the court below and of Judge Duncan who rendered the decree, afterwards affirmed by the Eighth Circuit, in Triangle Publications v. Hanson, D.C.E.D. Mo., 65 F.Supp. 952.
The trial court allowed an accounting of defendants' profits, but Triangle Publications itself has sold no goods which were in competition with defendants so there is no basis here for awarding profits as an equitable measure of a loss sustained by plaintiff. Vogue Co. v. Thompson-Hudson Co., supra; Durable Toy & Novelty Corp. v. J. Chein & Co., supra; Esquire, Inc v. Esquire Bar, supra; Restatement, Torts, § 747. The cases relied upon by plaintiff for an accounting involved parties selling competing goods and are therefore no authority for allowing an accounting in the present case. Moreover, there is no evidence that any direct or indirect injury has been caused by defendants to the plaintiff's business or good will. Such was the conclusion of the Eighth Circuit in Hanson v. Triangle Publications, supra. This denial of an accounting would follow even if we were to rest our decision upon an infringement of plaintiff's trade-mark which we find unnecessary to do. Cf. Vogue Co. v. Thompson-Hudson Co., supra. The plaintiff further relies as a justification for an accounting upon the Lanham Act, Trade Mark Act of 1946, effective July 5, 1947. 15 U.S.C.A. § 1051 et seq.We cannot see that this Act affords plaintiff any new rights to an accounting; Section 35 of the Act relating to an accounting merely states that an accounting shall be given "subject to the principles of equity." 15 U.S.C.A. § 1117.
The judgment in the action by Triangle Publications, Inc. is modified so as to dispense with the direction for an accounting, but is otherwise affirmed; the judgment dismissing the action ...