Sullivan, Kolovsky and Carton. The opinion of the court was delivered by Kolovsky, J.A.D.
Defendants appeal from a final judgment which
(1) enjoins them "from using and causing to be used the words 'Red Devil' and any representation of a devil upon brushes sold or offered for sale by any of them, directly or indirectly, and from using and causing to be used the words 'Red Devil' and any representation of a devil upon any type of advertising and sales promotion literature for brushes, and upon devices for displaying and otherwise aiding the sale of brushes"; and
(2) directs them "to account to the plaintiff for all profits realized by any of them since September 1, 1961, from the manufacture and sale, or either the manufacture or sale of brushes under the brand or name 'Red Devil.'"
Plaintiff has for many years manufactured and sold an extensive line of glazier's tools and "painter's tools," using as a trademark the words "Red Devil" and a picture of a devil's head. The "painter's tools" include such items as putty knives, wall scrapers, window zippers for opening stuck windows, window tools for puttying windows, a handle faced with a carpeting material designated as a screen painter, utility patchers, taping knives for removing wall paper and patching plaster, wood scrapers, dragon skin (similar to sandpaper) attached to a holder, sandpaper holders and burn-off knives. Plaintiff neither makes nor sells paint brushes.
Defendant Tip Top Brush Co., Inc., a New Jersey corporation, manufactures and sells and its affiliated companies, the
other defendants, sell paint brushes under various brand names and trademarks, including "Red Devil." The two individual defendants are officers and stockholders of the corporate defendants. Tip Top is the successor of a New York corporation of the same name, the New Jersey corporation being formed when its manufacturing plant was moved from New York City to Jersey City in 1961.
Both plaintiff and defendant Tip Top have registered "Red Devil" as trademarks in the United States Patent Office. As the trial court found, "paint brushes are not included in the line of painters' and glaziers' tools and equipment covered by [plaintiff's] registrations."
Tip Top's New York predecessor corporation filed an application with the United States Patent Office to register the trademark "Red Devil" as applied to various kinds of brushes, including paint brushes, on or about April 2, 1954. The application was rejected because of a prior registration, which also included paint brushes, then held by Pittsburgh Plate Glass Company. Following negotiations between Tip Top and Pittsburgh Plate Glass Company, the latter deleted from its registration all reference to paint brushes. Tip Top's application for registration of the trademark "Red Devil" as applied to paint brushes was thereupon granted by the Patent Office on January 22, 1957.
There is a dispute as to when Tip Top and its predecessor company first began using the words "Red Devil" in connection with the sale of brushes. The trial court, rejecting defendants' testimony, found that the first significant use of the mark in connection with the marketing of brushes was in 1959. In any event, it is clear that plaintiff's use of the trademark "Red Devil" in connection with the sale of its products antedated any use by defendants of the trademark "Red Devil" in connection with the sale of brushes. It is undisputed that plaintiff has extensively advertised its products in various trade media and other publications.
Defendants attack both the grant of an injunction and the order directing an accounting of profits, ...