Gannert v. Rupert

127 F. 962, 62 C.C.A. 594, 1904 U.S. App. LEXIS 3856

• Court: Court of Appeals for the Second Circuit
• Decided: January 6, 1904
• Docket: No. 47
• Status: Published

Opinion

COXE, Circuit Judge.

This is a trade-mark case pure and simple. It is not a case of unfair competition. It is founded on a technical, common-law trade-mark. With this distinction in mind it is obvious that many of the propositions argued by the defendant are irrelevant. For 15 years the complainant and its predecessors have published a monthly periodical called “Comfort.” Under this name a large, lucrative and growing business has been established. A person publishing a newspaper or a magazine may give it a name by which it is known and by which its authenticity is attested. This name is entitled to the same protection as if it were affixed to other articles of merchandise. The purchasing public know it by that name and no other. The name is a badge of origin and genuineness. It is as much a part of the proprietor’s property as his counting room or printing press. A rival publisher has no more right to appropriate the name of ‘the periodical than' the individual name of its owner. But it is objected that “Comfort’’ is a standard English word not fanciful or manufactured but descriptive, suggesting the purpose and errand of the paper. It certainly is descriptive, but of what? Surely not of a family newspaper. Some of the synonyms of comfort are consolation, contentment, ease, enjoyment, happiness, pleasure, satisfaction, but would any of these be used fey a rational being to describe a monthly journal intended to circulate in the rural districts? Would the word “ease,” for instance, when applied to a newspaper convey to the reading public any accurate information of its errand or purpose or the character of its contents? It is thought not. “Comfort” is, it is true, a common English word free to all, but so are “century,” “cosmopolitan,” “forum” and “arena.” The last two are suggestive of ancient contests, physical and intellectual, but "not of a modern literary review. Such words are continually being selected, ■ arbitrarily, to designate publications which in time become known solely by the names so bestowed upon them, and such use is protected by the courts.

The defendant is publishing a monthly paper circulating, in part at least, in the sarpe territory as the complainant’s paper and covering a somewhat similar field. He calls his paper “Home Comfort.” This is enough to justify the relief prayed for. It is of no moment that the proof fails to show deception, confusion or injury to any marked extent. Such proof is unnecessary where infringement of a valid trade-mark is clearly established. The defendant is using the complainant’s property and, as he is acting without color of right, the complainant is entitled to have that use discontinued. If the defendant’s "contention be correct that actual damage must be proved before an injunction can issue, it follows that-if to-morrow a new infringer should commence the publication of a paper with a Chinese copy of the complainant’s trade-name on its title page, the court would be powerless to grant relief until the infringement had been carried on long enough to cause actual, provable damage. Equity is not so helpless and impotent. It is the policy of the law to arrest the pirate before he actually 'makes off with the plunder.

The complainant has waived an accounting. It follows that the decree must be reversed, with costs, and the cause remanded to the Circuit Court with instructions to enter a decree for an injunction restraining the defendant from infringing the complainant’s trade-mark.