The opinion of the court was delivered by: AVIS
This action is based upon the alleged unfair competition of the defendant, and involves the use of a trade name or names in the selling and marketing of cigars.
Plaintiff is a corporation of the state of Pennsylvania, and for a number of years has been engaged in the manufacture and sale of cigars. Its factories have been operated mainly in the city of Philadelphia and state of Pennsylvania, although some of its cigars were made in the state of New Jersey, and possibly some in Pennsylvania outside of the city of Philadelphia.
Plaintiff since 1912 has used, on its labels and boxes, to designate and distinguish its product, the word "Philadelphia" in connection with the name "Bayuk," and the words "Hand Made," and also the designations "Perfecto," "Longfello," "After Dinner," etc., to indicate the shape and style of the cigar in the package. At some date it generally abandoned the words "Hand Made," because of the fact that it made its cigars by machine.
Plaintiff claims, although it did not apply the name "Phillies" to its output until November 8, 1929, that prior to that time, and for many years, this name has become associated with its product by common user of dealers and consumers. It also claims that on April 1, 1929, and thereafter continuously until November 8, 1929, it advertised its cigars as "Phillies" in handbills, transparencies, and in newspapers. Because of these various acts the plaintiff insists that it has acquired an equitable right in the word "Phillies," which prevents the use of this word upon the packages in which the defendant markets his cigars, or upon the cigar bands, or in advertising.
The plaintiff prays injunction and damages.
Defendant answers, denying the claim of the plaintiff, and contending that he is entitled to use the words "Philadelphia Phillies" on his product, both as to labels on cigar boxes and bands, and that plaintiff is guilty of unfair competition in using either the word "Philadelphia" or "Phillies," and prays for injunction and damages. The defendant's testimony shows that on October 2, 1929, he filed a trade-mark under the New Jersey statute, claiming the above name for his brand of cigars; that he started to market them under that name on October 18, 1929; and that by reason thereof he is legally entitled to its use.
It appears to the court that the first question to be disposed of is the effect of the New Jersey trade-mark statute (4 Comp. St. N.J. 1910, p. 5643, § 1 et seq.) on the rights of the respective parties.
This act was passed in 1898, and a careful reading thereof indicates that it is framed to a great extent from the provisions of the federal law (see 15 USCA § 81 et seq.). The claim of counsel for the defendant that the law permits any person, under the provisions of the state law, to file a trade-mark, and thereby adopt an advertising symbol, regardless of the prior use of the same mark by others, does not appeal to the court's reasoning.A reading of the act demonstrates that the Legislature intended that an applicant, under its provisions, must be entitled to the trade-mark at the time of filing the petition. If not so entitled at that time, the filing was ineffective to give the applicant an exclusive right to its use. The statute did not alter the common-law rule, but only provided a method of publishing and pre-empting a trade-mark of which applicant was then the user, or, if then adopted, to preserve his rights therein.
The result as to this contention is that the court in this case will consider the facts as they existed at the time the trade-mark was filed. It is true that the state has the right to legislate on this question as to intrastate commerce. The interpretation of the New Jersey statute does not sustain defendant's contention that under the terms of the statute the filing of the trade-mark is conclusive and controlling.
In the case of Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 672, 21 S. Ct. 270, 273, 45 L. Ed. 365, referring to the Federal Trade-Mark Act, Mr. Chief Justice Fuller said: "Trademarks are not defined by the act, which assumes their existence and ownership, and provides for a verified declaration by applicants for registration, that they have the exclusive right to the particular trademark sought to be registered."
Taking this view of the statute, the next question to be decided relates to the use of the word "Philadelphia" by the plaintiff. It appears without contradiction that this word has been prominently displayed on plaintiff's products since 1912; that it has become a trade-name for plaintiff's cigars in Pennsylvania and New Jersey, and apparently wherever the cigars are distributed.
Undoubtedly the word, because of its long and continued use by plaintiff, has acquired a secondary meaning, sufficient to entitle the plaintiff to its exclusive use, as against a willful infringer, in territory where its product has been marketed, which, under the evidence, includes the state of New Jersey.
The word "Philadelphia" primarily refers to a city in Pennsylvania, and the courts have uniformly held that ordinarily the use of the name of a political subdivision cannot be applied to an article of commerce, and thereby give to the party using it an exclusive right, but it may acquire ...