My client is disgusted with your broken promises to discontinue your illega use of such trademark and name and will no longer tolerate your unfair competition. Unless you discontinue the use of said trade name and mark and pay my client damages for your past infringement of its trademark rights, my client will have to sue for an injunction and damages in the New Jersey Court of Chancery within ten days from this date. This is the last warning.
"'Very truly yours,
"'John M. A. Blair,
"'Attorney for Paul Westphal.'
"After the receipt of the foregoing letter Mr. Haber of the Poly Chemical Laboratories, Inc. called upon Mr. Blair and furnished to Blair a set of defendant's labels as then being used, and Mr. Blair said he would advise with his client on the subject. The result of that conference was the institution of this suit.
"The foregoing letter is the first evidence we have of any objection made by plaintiff to the defendant's use of the word 'Westphalia.' The prior complaint related only to the use of the word 'Westphal.'
"The bottle in which the defendant sells its Westphalia Foaming Hair Tonic is not at all similar in shape to that of plaintiff's bottle. The plaintiff's bottle is sold in a carton with a lithographic reproduction of the bottle and label on the carton. The defendant's bottle is not sold in a carton, and its bottle is cylindrical in shape, while that of the plaintiff is flat on the front and back.
"The position taken by counsel on both sides in this case leads to the finding that the issue is confined to the question as to whether or not the defendant is justified in the use of the word 'Westphalia' in connection with the sale of hair tonic, as against plaingiff's contention that the use of the word 'Westphalia' by the defendant in the sale and manufacture of its hair tonic amounts to unfair competition or a colorable imitation of its trademark 'Westphal.'
"On March 30, 1926, plaintiff obtained registration of a trademark covering the use of the word 'Westphal'. On July 6, 1926, defendant's predecessor obtained registration of a trademark covering the use of the word 'Westphalia.'
"It is found as a fact that purchasers of Westphal's Auxiliator invariably call for Westphal's. The word 'Auxiliator' is seldom, if ever, used.
"The only direct evidence bearing upon the confusion in the public mind as between Westphal's and Westphalia is as follows:
"In January, 1932, Lookout Barber Supply Company of Chattanooga, Tennessee, addressed a letter to Westphal-Westphail Mfg. Co., 59 Hudson Street, N.Y., and it was delivered to Paul Westphal, the plaintiff, at 209 West 48th Street, New York. The communication was apparently intended for the Westphal-Westphalia Manufacturing Company, inasmuch as the order therein contained was for six gallons of Westphalia Foaming Tonic.
"In 1934 one M. Bress of Troy, New York, addressed a communication to Westphal-Westphalia Mfg. Co. at 688 West 18th Street, New York City, and this letter was likewise delivered to the plaintiff at 209 West 48th Street, New York City. The contents of the letter indicate a request for quotations of prices of defendant's and not plaintiff's hair tonic.
"We have an envelope postmarked 1933, addressed to Westphal Mfg. Co., 591 Hudson Street, New York City. This was also delivered to Paul Westphal, 209 West 48th Street, New York.
"In 1934 the Sisson Drug Company of Hartford, Connecticut, ordered one-twelfth of a dozen Westphalia Hair Restorer, and the order was addressed to Paul Westphal, 209 West 48th Street, New York City.
"Louis Westphal testified that on one occasion a customer called at plaintiff's place of business in New York and asked for a bottle of Westphalia. Mr. Westphal informed the customer that they did not make or sell Westphalia Hair Tonic.
"As opposed to the thought that there was any confusion in the public mind by virtue of which Westphalia Hair Tonic was confused with Westphal's Hair Tonic, seven witnesses, each of whom was a licensed druggist, testified, and very emphatically, that there was no confusion, either in their minds or in the mind of the public, whereby one of these products might be mistaken for the other, and one of the reasons advanced was that the Westphal product was sold in a different shaped bottle and also in a carton, and the Westphalia bottle differed in design from Westphal's bottle, and was not sold in a carton.
"The Court will take judicial notice of the preliminary injunction issued herein, and also of the rulings by this Court in the preliminary injunction issued in the case of Pinaud, Inc., against Poly Chemical Laboratories, Inc., et al. (D.C.) 16 F.Supp. 414, and also of the consent decree in Semler & Co. v. Poly Chemical Laboratories, Inc., unless an examination of the law on the subject discloses that this Court cannot properly consider these factors."
To fully comprehend the conclusions I have arrived at, the foregoing findings of fact must be read in connection with the entire record. I am firmly convinced after deliberation on the facts that this defendant has been engaged in studied efforts to copy the appearances of the products of others for the purpose of misleading the public and thereby attempting to obtain an unjust enrichment. Defendant's conduct amounts to unfair competition as against the plaintiff here, since it has resulted in misleading the public as shown by the letters received by plaintiff coupled with the defendant's unfair conduct. The testimony of the druggists to the contrary is not sufficient to overcome this conclusion.
In the recent case of Pinaud, Incorporated, v. Poly Chemical Laboratories, Inc., this same defendant (D.C.) 16 F.Supp. 414 (opinion filed September 10, 1936), defendant was found guilty of unfair competition by me and also I find a consent decree against the defendant to the same effect in Semler & Co. v. Poly Chemical Laboratories, Inc. filed in this court May 31, 1934. All of which, coupled with the defendant's nicely laid scheme to obtain by purchase from a third party the right to use the word Westphal in competing with the plaintiff can lead to but one conclusion, and that is: This defendant is so constituted that for the protection of plaintiff as well as for the protection of the public, it must be kept at a very safe distance and well away from the use of names wherein good will and secondary meaning have accrued to others.
The word Westphal's has in my opinion acquired a secondary meaning as denoting the products of plaintiff, and plaintiff also has a right to the protection of its trademark. The use of the word Westphal by the defendant coupled with the word Westphalia, the phonetics of the two words, the nature of the product involved taken in connection with the defendant's conduct, places it in a position where it is not entitled to claim the full competitive rights which would inure to an innocent stranger. Broderick & Bascom Rope Co. v. Manoff (C.C.A.) 41 F.2d 353.
To afford full protection it is necessary in this case to make the preliminary decree permanent and also to enjoin defendant from the use of the word Westphalia in conformity with the prayer of the complaint.
A decree will be entered in conformity with the views above expressed.
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