The fact that it had theretofre invented or adopted the word not, in my judgment, entitle it to the exclusive use of this word. It may be, and probably is, a fact that the defendant availed himself of the opportunity of adopting the name because of the fact that Bayuk cigars were sometimes referred to as "Phillies"; but this will not help the plaintiff, because it did not apply the word to its cigars prior to the registration and application thereof by the defendant.
The cases seem to be uniform in holding that the right arises out of the actual application cation of the mark to vendible goods.
"The exclusive right to the use of a mark or device claimed as a trade-mark is founded on priority of appropriation, and it must appear that the claimant of it was the first to use or employ it on like articles of production." Columbia Mill Co. v. Alcorn, 150 U.S. 461, 14 S. Ct. 151, 152, 37 L. Ed. 1144.
"But a trade-mark rests on such use as makes it point out the origin of the plaintiff's goods, and not on invention; and the use must begin early enough, and be separate enough, for that. Use by another before, at the same place, or near enough to start a similar right, would prevent the use from showing such origin." Tetlow v. Tappan (C.C.S.D.N.Y.) 85 F. 774, 775.
"Nor does the fact that the complainant adopted and used its trade-marks but a short time before the defendants imported and sold goods bearing like trade-marks, alter the situation. The complainant's rights accrued as soon as it had put goods upon the market bearing its trade-marks. Priority of use rather than priority of invention confers the right. The right to use does not depend upon any particular period of user; once a trade-mark is adopted in good faith and used, the right thereto inures and will prevail against any subsequent user." Walter Baker & Co. v Delapenha, 160 F. 746, 748, 749 (C.C.N.J., Cross, J.).
See, also, Metcalf v. Hanover Star Milling Co. (C.C.A. 5) 204 F. 211, 214; Sweet Sixteen Co. v. Sweet "16" Shop, Inc. (C.C.A. 8) 15 F.2d 920; Gray v. Armand Co., 58 D.C. 50, 24 F.2d 878.
The charge of unfair competition is based, mainly, upon the use of the words "Philadelphia Phillies." Some question is raised as to the color and style of the label, but without the above words, or one of them, I am reasonably sure that no purchaser would be deceived.
Outside of the label, the only basis for the claim is the alleged "nickname" applied to plaintiff's cigars, and the advertising by poster and in the newspapers where the plaintiff claims the word "Philly" and "Phillies" was applied to its cigars. In view of all of the facts, I am not prepared to say that the defendant is guilty of unfair competition as applied to the word "Phillies." This result is partly based upon the idea of the court that the plaintiff has not established, by a preponderance of evidence, such a use of the word as would entitle it to the exclusive use of the same, as against the defendant who registered this word and marketed products thereunder prior to the time the word in question was actually applied to the packages containing the plaintiff's cigars.
Trade-mark and unfair competition are so closely related that the failure of the plaintiff to sustain a trade-mark of "Phillies" carries with it a failure to establsh unfair competition. See United Drug Co. v. Rectanus Co., 248 U.S. 90, 97, 39 S. Ct. 48, 63 L. Ed. 141.
I find as facts:
(1) Plaintiff has used and applied to its products the word "Philadelphia" continuously since 1912 to the date of filing the bill of complaint in this cause.
(2) That plaintiff did not use the word "Phillies" on its products prior to November 8, 1929, but that its cigars were referred to as "Phillies" for some years by its officers and employees, jobbers, and customers; and that on April 1, 1929, and thereafter, the plaintiff spent large sums of money in advertising its cigars by posters, transparencies, and in newspapers, containing the word "Phillies" as applied to its product. Most of this advertising, issued prior to January 1, 1930, also had impressed on the advertisement a copy of the label of plaintiff with the words: "Bayuk Philadelphia Cigar It's Ripe Tobacco." On some of them the word "Perfecto," or other word indicating style or size, was substituted for the word "Cigar."
(3) That defendant, on October 2, 1929, filed his declaration, under the New Jersey trade-mark act, adopting the words "Philadelphia Phillies," and on October 18, 1929, and thereafter, by labels applied this name to packages containing his cigars, attaching also to said label the name "Schwartz & Co." in comparatively small script.
(4) That the defendant's cigars were not manufactured in Philadelphia, and that defendant's business house was located in the northern part of New Jersey.
(5) That defendant is not guilty of unfair competition, except as it may apply to the use of the word "Philadelphia."
As matters of law, I find:
(1) The plaintiff has established the right to the use of the word "Philadelphia" as against the defendant.
(2) The defendant has infringed the trade-mark "Philadelphia" and should be restrained in its use.
(3) The defendant has established the right to the use of the word "Phillies" as against the plaintiff.
(4) The plaintiff has infringed the trademark "Phillies" and should be restrained in its use.
(5) That under all of the evidence, and attendant circumstances, no damage, accounting, or costs shosuld be allowed to either party.
Decree will be settled and signed upon notice.
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