Circuit Court of Appeals, Second Circuit.
*973 Henry F. Parmelee, of New York City (Melville Church, of Washington, D. C., and William S. Pritchard, of New York City, of counsel), for appellant.
Taylor, Durey & Pierson, of Stamford, Conn. (Archibald Cox, Louis H. Porter, and F. Carroll Taylor, all of New York City, of counsel), for appellee.
Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
L. HAND, Circuit Judge (after stating the facts as above).
The original examiner concluded that the use of the word "Yale" upon the plaintiff's goods was confusing to the defendant's buyers, but based his decision upon the ground that the mark sought to be registered was only a proper name, whose registration the statute did not allow. The commissioner affirmed this decision on the same ground, without passing on the evidence of confusion. The Court of Appeals of the District of Columbia in turn affirmed the Commissioner, but, because of a change in the law, solely on its own finding that there was likelihood of confusion between the wares of the two parties. The District Judge took more testimony, and also reached the conclusion that there was likelihood of confusion. As the case came up, he was, and we are, required to accept the findings of the Patent Office on such an issue of fact, unless the evidence to the contrary is altogether convincing, Morgan v. Daniels, 153 U.S. 120, 125, 14 S. Ct. 772 (38 L. Ed. 657), for the new evidence was not of a kind to change the result. The proof as a whole is far from convincing against the finding; the record contains many instances where the defendant's buyers did, or said that they should, suppose the plaintiff's flash-lights to be one of the defendant's products, and it is extremely probable that mistakes will continue unless the practice ceases.
Therefore, so far as we can see, only two points of law need be considered: Whether the defendant's goods have "the same descriptive properties" as the plaintiff's, which is a condition upon its opposition to registration; whether, in view of the fact that it makes no flash-lights or batteries, it may complain of the plaintiff's use of its name. The law of unfair trade comes down very nearly to this as judges have repeated again and again that one merchant shall not divert customers from another by representing what he sells as emanating from the second. This has been, and perhaps even more now is, the whole Law and the Prophets on the subject, though it assumes many guises. Therefore it was at first a debatable point whether a merchant's good will, indicated by his mark, could extend beyond such goods as he sold. How could he lose bargains which he had no means to fill? What harm did it do a chewing *974 gum maker to have an ironmonger use his trade-mark? The law often ignores the nicer sensibilities.
However, it has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner's reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower's use is so foreign to the owner's as to insure against any identification of the two, it is unlawful. Aunt Jemima Mills Co. v. Rigney, 247 F. 407 (C. C. A. 2) L. R. A. 1918C, 1039; Akron-Overland v. Willys-Overland, 273 F. 674 (C. C. A. 3); Vogue Co. v. Thompson-Hudson Co., 300 F. 509 (C. C. A. 6); Wall v. Rolls-Royce, 4 F.(2d) 333 (C. C. A. 3). Although it is quite true that the point is still open in the Supreme Court. Beech-Nut Co. v. Lorillard, 273 U.S. 629, 47 S. Ct. 481, 71 L. Ed. 810. Again, if originally descriptive, a mark may have been so generally used that it denotes no particular maker, unless narrowly applied. Pabst Brewing Co. v. Decatur Brewing Co., 284 F. 110 (C. C. A. 7). Here we are dealing with a proper name, which, though it has been used quite generally, is shown to denote the defendant when applied to flash-lights. The disparity in quality between such wares and anything the plaintiff makes no longer counts, if that be true. The defendant need not permit another to attach to its good will the consequences of trade methods not its own.
There remains the question of registration, the goods not being of the "same descriptive properties" in the colloquial sense. It would plainly be a fatuity to decree the registration of a mark whose use another could at once prevent. The act cannot mean that, being drafted with an eye to the common law in such matters. American Steel Foundries v. Robertson, 269 U.S. 372, 381, 46 S. Ct. 160 (70 L. Ed. 317). While we own that it does some violence to the language, it seems to us that the phrase should be taken as no more than a recognition that there may be enough disparity in character between the goods of the first and second users as to insure against confusion. That will indeed depend much upon trade conditions, but these are always the heart of the matter in this subject. It is quite true that in Rosenberg v. Elliott (C. C. A.) 7 F.(2d) 962, the court felt bound to find that caps and suits had the same descriptive properties, quite independently of the confusion which had arisen. We cannot say that that is the case here, for the fact that flash-lights and locks are made of metal does not appear to us to give them the same descriptive properties, except as the trade has so classed them. But we regard what the trade thinks as the critical consideration, and we think the statute meant to make it the test, despite the language used.
The defense of laches needs no more than mention. The plaintiff has gone on in the face of the defendant's opposition from the very outset. If its persistence now lays a heavy burden on it, it is of its own making. It would be an easy escape from the consequences of a wrong to assert that one has grown so old in its practice as to make any change painful.
The injunction is, however, too broad. Since the plaintiff has used the word upon nothing but flash-lights and batteries, and so far as appears does not mean to do more, the defendant needs no further protection. Besides, it does not inevitably follow that all metal objects, and all those made from any hard substance, should not bear the name "Yale." At least, this record does not raise that question. The following words will be struck from the second paragraph of the decree: "Or any article which is manufactured and consists in whole or in part of metal or other hard substance." Otherwise, the decree is affirmed, with costs.
