HUTCHINSON fl. BLUMBERG.
829
felts this prefereIfce as against a bondholder. It may be the complainant has some right to cOrne into this court by reason of its citizenship, but I have not considered that question. The demurrershould be overruled, and it is 80 .ordered.
HUTCHINSON
it at' t7.
Bt.UMBERG.
(O&rcUit
D.nZinaw. June 8, 18119.)
L
'rBADBc],{ARXl!-WJlAT WILL BB PROTBOTBD-STAR.
The word "Star," and the sYmbol of a star, adopted and used durfng many years . by matiuf8Cturers of shirts, waists, underwear, and furnishing goods, to mark and designatll their goods, in cOlD-bination with the words "Star Shirts," and other words describing the articles, so that the goods become well known by such mark, and by the desi/tnation of "Star Goods, "constitute a valid trade-mark. . Such trade-mark is infringed by marking similar goods with a star and crescent, making the star so prominent that such goods may also be designated as "Star Goods, " and purchasers may be readily deceived into the belief that the goods were J!:\,8de by the proprietors of the trade-mark, even though the star so used is not of the oolor'usually employed' for the trade-mark, and is a Ave-pointed star, while that in the is uniformly six-pointed·
lL
SMltB-Il!iFRINGEMBNT.
...
infringer of a trade-mark, on being notified of hiB infrfn/t8JXH!nt,' told his·customers to erase the trade-marks from their goods, and,hl/d since . gone out of bU!iiness, are not ground for denying an to the true owner 01 the where every step of the suit for an inJunction and accounting haa by·the and De hlils put the coliQplainants to the expense of ,.Pl.'O!+pg, every fact necelilsary to establish their right and his infringement..
Cole, '4pd '()f
by G#dlner S. Hutchinson, Henry B. Pierce, Ira Morison against Jacob J. Blumberg for praying an injunction and an accounting.... Decree
{or coqlplainants'. · "," . f" '
B:'F. CorneliUs V. Smith, for complainants· ..Elliert, 0. Ferg'UBlYiL, for defendant· ". ,
.. The complainants in this case, who were cOpartners .doing business under the style and firm name of" Hutchin,&;90.," having their principal place of business in the city ofNew York, charge that the armor T. A. Morieon & Hoyt, in or about the year i859,was engaged in the manufacture of shirts, 'Waists, underwear. and goods, and, to designate the goods of their manufiwture,'ad8pted and employed as their device alid trade-mark the word "Star," and with the form and symbol of a star to represent the word the words, "Star Shirts," and thedevice or figure of a star. in combi.nation with the words "Star Shirts," and other words describing "* shirt" and ,,*i\vaistj" that 'complainants, through a series .()f mesne assignments, have become and now are the' successors of said firm of T. A. Morison & Hoyt, and have also become the owners of said and of tbeexclusive right to use the same; that the goods I¥nufactured by complainants and their predl'cessors have been sold, and have become well known by said trade-mark and ";. 'H ','. · . · ·
830
FMftAti.:'1iipc!RTER, ,,"0[51.
,that said by have fpr excellenc'eillnd are cliibo"soughtalter hi the'trltd'ej thli.tdeferidilrit the manufacture and sale of shirts, waiRts, underwear, and'ftiTmshirfgs, 5i:lbstimtiallj like those manulactured and sold by complainants, and greatly resembling the same, and has marked and· said goods by a star, symbol, or device like that used by complainants, and that the use of such symbol on the h.ae the eflectJ)f. causing purchasers and users of such goods' to they are'piirchasing and using goods manufactured, thll,tp,eftln,dAnt marks and designateshis goods with the word "Star," and symbol of a star and soma.rkll. .and snid goods, prominent and conspicuousRs to attract attention, aog d,ebeive intljebelief that the g<?oqs eo .made by defendant are the,,"Stall Gooda./',of,complainants, thereby: deceiving the public, wronging Ilnd illJuring the The answer denies. the;complainants' rigbt 'to the use of the stai.'ns a trade-mark, and also fririgem,ent.. . The shows conc1usivelythat the firm ofT. A. Morison & lIoyt adopted the star both in word and symbol ns their trade-mark as early tAat tbe 0/ said firm has passed by trallsfer through a,numbpr9f'llucceedine; flrmsuntil about 1883 it came to the complainQOh${irm in a direct from snid T. A. Morison & and, that the star trade-mark has been used by the sa.id firm of T. A. Morison & Hoyt 'aDd its successors,and is now used by com.. IBW,.l;,and class to which it was the, o.)'jgiuftJ firrnwhich first deVIsed anda:dopted it. . It may also be ..1?upd.a'?-tl';Jlroven, iruot concede1,upon hearing, that t?e for a year or more before the commencement of this sUlt, had made audsoldSllir4l, waists, and underwllar upon which he had placed 1\ star a'ridcrescent, but such proluinencehad beengivell to the star, both in word and symbol, in themarking ofthe defendant's goods apd packages" 8.3 inexperienced persons, purchasers, and pelief thllt thElY were the genuine and wellknown "Star Gpods" of the Qomplainl;tnts. .. '.' It is contended on the part of the tpat. as he has combined ngure()fa markitlg his goods, there is no inI have no doubt, from the pJ;opf in the case, that the qefendant does. by the use of the star in his mark, although combined witll ncrescent, infringe upon the rights, because, as is in the biU an4 all the proof shows, he makes. the star so promifeature iq, ,the quirk as to enable him ,oli, those dealing in his goods, to impose. them qpon unwary.as ."Star rGPOd.. s.,,-th e..Q.s . . .. . t.he. w.o.rd.. ·. I,l.Qd symbol "S.tar',l.g,·iving a color qfright . ;to deaignatetb,edefeq.dant'!!,goods as "star Good,," by which complainants' goods ha.ve come to be wider,yand JavorablY'·known. ' , · . It is also cQntellded on the ciefendant that pomplainantsare only entitleqto use of, a reds:tar, because the proof shows that plainants' goods were mainly marked with a red star; or the star was im.
IW'l1CBINSON
,pressed in .red color upon complainants' goods. But· the complainants have not confined themselves, as the proof shows, exclusively to the use ofa red star,but ha.ve designated their goods, so that they became known to the tral,ie, "Star Goods" wit\1out reference to thecolorj hence I think there ,is ,QO force in this position ,on the part ot the defenqant. contends that he has pot because he has JIsed The a five-pointed, star, while the' complainants' star has been usually' and uniformly>&: six-pointed star. 'rhere is no force in this objection, because nopurcbaser would be expected to stop and count the points' upon a star in order to determine whether they were the goods of the COOlIt is enough thatthe goods aremarketl with Ii star, Rnd 'ar.e lthowIi ot' called by the designation. of "Star Goods." It is also further urged in behalf of the defendant that" on.being noti., fied by the complainants that he was infringing their trade-mark, he gave notice to persons to whom he had sold star and crescent goods to erase the star from the marks upon the goods, and that he has since gone out of business, and therefore no decree for any injunction should be awarded agaiust hiJl;1.· If the proof hadshown. that the defendant, at once, on being notified of his infringement, had, in good faith, abandoned the use of-complainants' trade-mark, his conduct in that respect might be considered by the court in fixing the terms of the decree." But 'the record MQoWS that the,.defendanthas contested every step of' the case. Hei'Ma put the complainants' to the expense of proving every fact nEtcessary to eStablish their right to the use of the trade-mark in question,anda·Isothe fact of his infringement, and even, only a very few daysbefqre the ca.se"as prought on.for tinal hearing, put in additional proof upon the point of complainants' right to the use of the word and symbol "Star." As I have already said, the defendant's trade mark shows the star as the· prominent feature I al though tbere in is acresoentalongside tbestar. He prints the word" the same relation to the star as it is printed and shown in the complainants' mark, and locates his mark in the same place npon the garment. These facts show, I think, most manifestly a clear intention upon the part of the defendant to avail himself of the celebrity of the complainants' goods for' .thepurposeof making a market for his own. It is. very evident. I think, that any person disposed to take advantage of a eus·tomer, having the defendant's goodsin his store, could, on.inquiry being made for" Star· Goods," which is the common designation of complainants'goods, or "Star Shirt," or "Star Waist," or "Star Underwear," are the ·Star hand to the customer defendant's goods, and say, Goods,' are known as such,'·' and impose on a customer by reason ofthis trade-mark, the presence of the crescent cutting no !>pecial figure in the purohal'er's mind. Very many cases· have been decided. by. tbecoQrts :where have arisen. such as that the use of the words" Perry Davis' Vegetable Pain Killer" is an infringement upon the trade-mark of!'Perry Davis' Pain Killer/' (Davis v. KelldaU, 2 R. 1. 560j) "Charter Oak" and a sprig of oak ·leaves, and " Charter Oak," "The omitting the sprig of oak leaves, (Pilley ,v. Fassett, 44 ?lo. Hero" and "The Heroine," (Rowley v. Houghton, 2 Brew!!t. 303; "Ria.
Rising Moon Stove Polish;", (Morse lC Apollinaris Water" and lC London ApbUinaris Water," in differen,tki'nds of bottles and different kindS blbe1tl· .(Apollind1"iJJCo. v. NO'I"i'iAh, 33 LawT. [N; S.] 242.) In Amoskeag Manuf(1 Co. v. Spear. 2 Sandf. 608, it was said: .. An injunction ought to be granted whenever the design of, a person who a trade-mark, be his design apparent or proved. is to impose his own goods upon the public as those of the owner of the mark. and the imitation is Bueb tbattbe success of the design is a .or even pOBsible, consequence.'r A deoree may be prepared finding, that the complainants have a valid trade-mark as aUaKed in their bill,and that defendant has infrinled the same. and for an accounting.
v.W(;frell, 9 Amer. 4w Rev. 868j)
-Stove .Polish" and
lC
or
HtrtcmNsON etal. v. CoVER'!. (cCrcuu Court, N. D. IUinoW. June 8, 1-.)
A ti'!Ule-markconsisting of the word KBtar" and the symbol of · ltal', marll:ecl Upon shirts and like artiol!!.. in conneoUol/,withthewoll9.s "Star SlJirts, "and other · words the articlell,. by .the use of·which· mll.rk .the goods have beoome well and favorabl.vknown as "Star Goods," 18 infringed by tile use of the word. KL.one Star... an.d the. lIyml)Ql;of a sin.gle ljtar on similar gOO!lS,.Wherllb.Y' such goods ... . . may ,be soll1 a8 "Star GoQ.4s. .. and purchasera may be deceived into the belief that the are those madeb;y the proprietors of thetrade-marlL ' .
'.
.. .
.
In Equity. Bill by Gardiner S. Hutchinson, Henry B. Pierce, Ira Oole, a.nd Thomas S. Morison against George H. Covert for infringement of trade-mark, praying an lnjunctionand accounting. Decree for com. 'B. F. Watsonand·Oomt1ius V. Smith., for complainants· .Hojhei'T1lR/t& Zei8let'. for defendant.
BLODGETT,District Judge. This case involves the alleged infringement of complainants' star trade-mark,theorigin and title to which are set out in the bill sUbstantially as in the preceding C8se·of SQHTl£ Com.plainants v. BlumMrg, 51 Fed. iRep. 829. The infringement charged against defendant' consillts in the use olthe words" Lone Star," and symbol of a single star on shirts and underwear made or sold by defendant. I am of opinion that the prefiX of the word" Lone" to the word' and symbol ·· Star" in de.t'endant's trade-mark is an infringement of the complainants' star trade-mark, as applied to shirts, underwear, etc. It is a mark and designation of defendant's goods which may give color to the assumed as "Star Shirts," "Star Underwear." "Star right to sell Goods," ete., and thereby deceive ,purchasers and users into the belief that they are buying the genuine complainants' goods. A decree for an injunction and accounting may be entered.