Alfred Dunhill of London, Inc. v. Dunhill Shirt Co.

213 F. Supp. 179, 136 U.S.P.Q. (BNA) 537, 1963 U.S. Dist. LEXIS 10141

• Court: District Court, S.D. New York
• Decided: January 18, 1963
• Status: Published

Opinion

NOONAN, District Judge.

This is a civil action for trademark infringement and unfair competition brought under the Trademark Laws of the United States. After a trial of all of the issues commencing on December 6, 1962, and a study of all the exhibits and on the record as a whole, this court makes the following Findings of Fact and Conclusions of Law.

FINDINGS OF FACT

1. Plaintiff, Alfred Dunhill of London, Inc., is a Delaware corporation with its office and principal place of business in the City, County and State of New York, and in the Southern District of New York.

2. Defendant, Dunhill Shirt Company, is a Missouri corporation with its office and principal place of business in Lexington, Missouri, and has an office and place of business at 350 Fifth Avenue, New York, New York, and in the Southern District of New York.

3. Defendant was incorporated in Missouri on February 17, 1939 as Dun-Hill Shirt Company, and, on July 10, 1945, filed an amendment changing its corporate name to Dunhill Shirt Company.

4. There is diversity of citizenship between plaintiff and defendant, and the amount in controversy, exclusive of interest and costs, exceeds the sum or value of $10,000.

5. Prior to September, 1921, Alfred Dunhill of London, England, an individual, had used DUNHILL as his trademark in the United States on various products.

6. By an agreement of August 11, 1921 with said Alfred Dunhill, plaintiff became the exclusive distributor of DUN-HILL products in the United States. Said relationship has continued from that time to the present and is so continuing, first with said Alfred Dunhill and later (1923) with his successor in business, Alfred Dunhill Ltd., a corporation of Great Britain, under various agreements and modifications thereof, the most recent of which agreements is dated August 29, 1961.

7. Plaintiff’s sale of DUNPIILL products from September, 1921 until May 15, 1922 was solely at wholesale, but on May 15, 1922, plaintiff opened a retail store in the City of New York, and, since that time, plaintiff has sold products bearing the trademark DUNHILL both at wholesale and at retail.

8. Plaintiff’s retail store in the City of New York occupied the ground floor store and other space at 512-14 Fifth Avenue (southwest corner of 43rd Street) from May 15, 1922 to November 18, 1933, and, since November 20, 1933, plaintiff has occupied and does now occupy the ground floor store and other space at 620 Fifth Avenue (southwest corner of 50th Street).

9. In 1922, plaintiff sold in its retail establishment tobacco products, smokers’ articles, men’s jewelry, including cuff links, tie bars, key chains, pocket knives and dress sets, flat leather goods, including wallets, billfolds, key cases and passport cases, canes and umbrellas, golf balls, razors, clocks, desk sets, playing cards and bridge sets, mahjong sets, silver tea sets, tea caddies, bar fixtures and accessories, luggage, including brief cases, travel cases and toilet cases, and other 'gift items of various descriptions under the trademark and trade name DUNHILL.

10. From the time of the opening of its retail store in New York on May 15, 1922, plaintiff has constantly added to its retail line of DUNHILL products, and included among such products have been items of clothing, including sport shirts, ties, slippers, sweaters, dressing gowns, smoking jackets, handkerchiefs, haberdashery and toiletries and additional gift items and leather goods.

11. Plaintiff’s net retail sales at its

New York and Beverly Hills stores only have been as follows:

NEW YORK STORE

Years Net Sales

1922 (May 15-Dec. 31) $ 293,914.43

1923 466,664.88

1924 508,998.02

1925 637,666.05

1926 750,323.46

1927 767,234.50

1928 653,910.89

1929 617,751.51

1930 468,314.16

1931 335,481.63

1932 264,025.50

1933 (to Nov. 18) 175,240.85

1933 (Nov. 20-Dec. 31) 153,899.36

1934 659,643.56

1935 617,024.10

1936 675,693.31

1937 467,197.44

1938 412,308.47

1939 440,207.91

1940 455,681.35

1941 535,393.03

1942 703,566.40

1943 1,193,008.58

1944 1,781,654.85

1945 2,204,174.56

1946 2,311,072.97

1947 1,876,182.89

1948 1,545,986.22

1949 1,324,631.88

1950 1,250,076.63

1951 1,341,662.69

1952 1,274,414.00

1953 1,198,692.52

1954 1,229,354.08

1955 1,250,915.43

1956 1,323,105.98

1957 1,491,209.63

1958 1,505,706.00

1959 1,709,700.00

1960 1,724,277.00

1961 1,853,909.00

BEVERLY HILLS STORE

1951 (Sept. 10-Dec. 31) 78,518.24

1952 177,309.72

1953 168,714.81

1954 191,072.76

1955 210,913.22

1956 204,883.00

1957 227,309.00

1958 275,709.00

1959 337,133.00

1960 367,755.00

1961 392,748.00

12. Since 1921, plaintiff has expended substantial sums each year for advertising and promoting the sale of DUN-HILL products.

13. DUNHILL had a special significance as meaning plaintiff and its product, including quality men’s wear, long before defendant made any use of the words DUN-HILL or DUNHILL, i. e„ before 1939.

14. Prior to the incorporation of defendant in 1939, DUNHILL was a famous trade name and trademark, which meant plaintiff and its products, including quality men’s wear, to the purchasing public.

15. From long prior to the time of the defendant’s incorporation up to the present, DUNHILL has had and now has a special significance to the purchasing public as meaning plaintiff and its various products, including quality men’s wear.

16. Plaintiff is the owner of the following trademark registration issued by the United States Patent Office:

Trademark Registration Issued

403,585 DUNHILL September 28,1943

17. Plaintiff is the exclusive user in the United States of the following trademarks registered in the United States Patent Office by said Alfred Dunhill Ltd., a corporation of Great Britain:

Alfred Dunhill (script) 155,951 June 13, 1922

Design 203,732 September 22, 1925

DUNHILL 403,661 October 5, 1943

DUNHILL 404,218 November 9,1943

DUNHILL 406,638 April 11, 1944

Alfred Dunhill (script) 419,717 March 5, 1946

Alfred Dunhill (script) 421,429 June 4, 1946

DUNHILL 527,207 July 4, 1950

DUNHILL 527,208 July 4, 1950

DUNHILL 534,705 December 12, 1950

DUNHILL 539,892 March 27, 1951

DUNHILL 540,389 April 3, 1951

DUNHILL DOUBLE-CLARO 541,949 May 8, 1951

ALFRED DUNHILL 634,071 September 4, 1956

18. No one with the name of DUN-HILL has ever been connected with defendant or with the family of the late Barney R. Schucart, who incorporated defendant, or the family of his nephew, Ralph Schucart, defendant’s present president, and defendant offered no explanation or justification of the appropriation by defendant’s incorporators of DUN-HILL as defendant’s trademark and as part of its corporate name or trade name.

19. Defendant began manufacturing and selling shirts bearing DUNHILL in 1939 and since that time has continuously manufactured and sold shirts bearing DUNHILL.

20. For twenty years defendant has manufactured shirts for the account of and sold shirts to Sears Roebuck & Co. and J. C. Penney Company, and, more recently, to other concerns, which shirts did not bear DUNHILL but bore, instead, the trademarks of the respective purchasers; and, in addition, defendant has since 1956 manufactured and sold other shirts, none of which bore DUNHILL, but which bore WENTWORTH or EMPIRE.

21. Defendant’s use of DUNHILL on or in connection with shirts and its use of “Dunhill Shirt Company” are color-able imitations of plaintiff’s common law-trademark DUNHILL and of the registered trademarks DUNHILL and ALFRED DUNHILL of which plaintiff is-, the owner or exclusive user in the United-States, and, because of such similarity, defendant’s business and products are likely to be mistaken for or confused with, plaintiff, its business or products, and' defendant’s use thereof is likely to create the erroneous impression that defendant and its products originate with plaintiff or are endorsed by plaintiff or are connected in some way in trade with plaintiff.

22. Defendant’s use of DUNHILL. and “Dunhill Shirt Company” are color-able imitations of plaintiff’s corporate name and of its trade name DUNHILL, and, because of such similarity, defendant’s business and products are likely to be mistaken for or confused with, plaintiff, its business or products, and defendant’s use thereof is likely to create the erroneous impression that defendant and its products originate with plaintiff' or are endorsed by plaintiff or are connected in some way in trade with plaintiff.

23. Defendant offered no proof that plaintiff knew or should have known that. defendant was manufacturing or selling DUNHILL shirts before defendant’s application to register DUNHILL for shirts was published for opposition in the Official Gazette of the United States Patent Office on March 20, 1956, to which application plaintiff filed its Notice of Opposition (No. 36,107) within the time prescribed by statute.

24. Defendant’s use of DUNHILL upon or in connection with shirts and in its corporate title was without the knowledge or permission of plaintiff.

25. Plaintiff has not advertised, offered for sale or sold DUNHILL products in any improper or illegal way and comes into court with clean hands.

26. No proof has been offered to support defendant’s position that plaintiff has monopolized any product or products •or that plaintiff has violated any antitrust laws of the United States.

CONCLUSIONS OF LAW

1. This is a civil action for trademark infringement and unfair competition brought under the Trademark Laws •of the United States (Trademark Act of July 5, 1946, 15 U.S.C. § 1051 et seq.), •under the Judicial Code, 28 U.S.C. § 1338, and by virtue of diversity of citizenship of the parties and the amount in controversy.

2. This court has jurisdiction of the parties and of the subject matter of the action by virtue of the Trademark Laws of the United States and also by virtue of the diversity of citizenship of the parties and the amount in controversy.

3. DUNHILL was a good and valid common law trademark for a variety of goods, including tobacco products, smokers’ articles, jewelry, leather goods, gift items, haberdashery, clothing and men’s wear, including sport shirts, ties, slippers, sweaters, dressing gowns, smoking jackets, and handkerchiefs, prior to 1939 and meant to the purchasing public the goods sold by plaintiff.

4. DUNHILL was a good and valid common law trade name prior to 1939 and meant plaintiff to the purchasing public.

5. DUNHILL has continued to be, from long prior to 1939 to date, and now is a good and valid trademark in the United States for such products then sold by plaintiff and for additional gift items, toiletries, sporting goods, haberdashery, leather goods, and clothing as have from time to time been added to the line of goods sold by plaintiff.

6. DUNHILL has continued to be, from long prior to 1939 to date, and now is a good and valid trade name of plaintiff.

7. The following United States trademark registrations are all good, valid and outstanding:

Alfred Dunhill (script) 155,951 June 13,1922

DUNHILL 403,585 September 28, 1943

8. Defendant’s use of DUN-HILL in the sale of its products, both on or in connection with its shirts and in its corporate name, infringed and infringes plaintiff’s trademark and trade name DUNHILL in that it is likely to cause confusion or mistake or to deceive purchasers into the belief that such products of defendant are made by, sponsored by or connected in some way in trade with plaintiff and to cause confusion or mistake or to deceive purchasers as to the source or origin of defendant’s products.

9. By its use of DUNHILL in the sale of its goods, both on or in connection with its shirts and in its corporate name, defendant has competed unfairly with plaintiff.

10. There is no laches present and plaintiff has not acquiesced in defendant’s use of DUNHILL and plaintiff is not estopped to bring and prosecute this civil action and to obtain appropriate relief.

11. Plaintiff has not been guilty of unclean hands.

12. There has been no proof that plaintiff has violated any anti-trust laws of the United States.

13. Plaintiff is entitled to an injunction against defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them, enjoining them from using, in the manufacturing advertising, offering for sale or selling, of shirts or goods of a similar nature, the designations DUNHILL and “Dun-hill Shirt Company” and any other designations which by colorable imitation or otherwise are likely to be mistaken for or confused with the trademark DUN-HILL or with plaintiff’s corporate name or trade name DUNHILL, or are likely to create the erroneous impression that defendant and its products originate with plaintiff or are endorsed by plaintiff or are connected in any way with plaintiff, and from otherwise competing unfairly with plaintiff or infringing plaintiff’s lights.

14. Defendant is required to deliver up for destruction all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession or control of defendant and all plates, molds, matrices and other means for making the same which might if used violate the injunction.

15. Plaintiff is entitled to recover full costs and disbursements to be taxed.