(125 Mise. Rep. 737) WM. P. GOLDMAN & BROS., Inc., v. GOLDSTEIN et al. (Supreme Court, Special Term, New York County. October 10, 1925.) 1. Trade-marks and trade-names and unfair competition 55-Plaintiff entitled to relief for infringement of trade-mark, where proving its right, and fact that similarity will make deception likely. Innocence of wrongful intent by defendants infringing plaintiff's trade-mark, or plaintiff's failure to show actual deception or damage need not be established, where plaintiff proves its right and fact that similarity in trade-marks is so close as to make deception likely. 2. Trade-marks and trade-names and unfair competition 59(1)-Adoption of G & G" as trade-mark will be restrained as an infringement of plaintiff's trade-mark "GGG." Adoption by firm of G. & G. of the trade-mark "G & G," with the "&" sign so enlarged as to give the impression of "GGG", will be restrained as an infringement of plaintiff's trade-mark “GGG.” 3. Trade-marks and trade-names and unfair competition 64-Defendants not permitted to infringe plaintiff's trade-mark because letters adopted represented first letters. of their last names. That letters "G & G," which defendants adopted as their trademark, represented first letters of defendants' last names, did not necessarily permit them to infringe upon plaintiff's trade-mark consisting of letters "GGG." 4. Trade-marks and trade-names and unfair competition 64-Person may not employ his own name to distinguish his business, where motive is to acquire benefit or reputation built up by competitor. Person may employ his own name with impunity to distinguish his business, except where it is shown that his motive was to acquire for himself benefit of a reputation built up under that name by a competitor. 5. Trade-marks and trade-names and unfair competition 64-Rule that clear case of unfair competition must be shown to justify injunction restraining one from using his own name in his business does not apply to initials. Rule that a clear case of unfair competition must be established to justify an injunction to restrain another person employing his own name to distinguish his business does not extend to use of initials as distinguished from names. 86-Plaintiff's 6. Trade-marks and trade-names and unfair competition laches held not a defense in action to restrain infringement of trademark. In action to restrain infringement of trade-mark, that defendants had been using trade-mark adopted by them for six years without protest against such use held not to present a defense. Action by Wm. P. Goldman & Bros., Incorporated, against Samuel Goldstein and another, copartners trading under the firm name and For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes (211 N.Y.S.) style of Goldstein & Goldstein, for an injunction restraining infringement of trade-mark. Injunction granted. Kahn & Zorn, of New York City, for plaintiff. LEVY, J. The plaintiff in this action, a manufacturer of men's clothing, seeks an injunction against the defendants, a copartnership, restraining them from infringing upon its trade-mark. The plaintiff's device consists of "GGG" in script form, while the defendants employ two script "G's" with the "&" sign between them. The plaintiff is a large concern doing extensive advertising, while the defendants have a much smaller business, but also do some advertising. Plaintiff's use dates back to 1909, while defendants did not adopt their trade-mark until 1919. [1] It is evident that defendants' device was deliberately copied from plaintiff's, consciously influenced by the forms used by the latter. This is evidenced by the identity of the script letters and particularly by inclosing the trade-mark in quotation marks, which are also used by the plaintiff, and have been thus used since the adoption of the trade-mark. But, even if this were not so, it is well settled that defendants' innocence of wrongful intent or the plaintiff's failure to show actual deception or damage need not be established, where the plaintiff proves its right and the fact that the similarity is so close as to make deception likely. Taendsticks fabriks Akticbolagat Vulcan v. Myers, 139 N. Y. 364, 34 N. E. 904; Kalish, Inc., v. Harper, 184 App. Div. 683, 172 N. Y. S. 470; Lipson v. Feigenbaum, 205 App. Div. 701, 200 N. Y. S. 183. [2-5] A very similar situation arose in the case of Wm. P. Goldman & Bros., Inc., v. Israel Gold, 211 N. Y. S. 868, in which the present plaintiff obtained an injunction against that defendant after a trial of the action before Mr. Justice Lydon. The court there held (N. Y. Law J. May 4, 1925, Special Term, Part 3) that the defendant's use of two "G's" was an infringement of plaintiff's three "G's." A permanent injunction issued there, and no appeal was taken. The present case differs from the other litigation only in that the defendants insert the "&" sign between the two letters. In the matter of the letters themselves, it is even a more flagrant imitation than the other. The letters exhibited at the hearing in this matter clearly show that the defendants have become more bold in their imitation, having enlarged the "&" sign so that the present label possibly gives the impression of three "G's" instead of two "G's." The important question to be considered here is whether the insertion of the "&" sign between the two letters distinguishes this case from the earlier one decided by Mr. Justice Lydon. The defendants urge the letters are the initials of the partners constituting the firm of Goldstein & Goldstein; but this does not avail them. The fact that "G & G" represents the first letters of the defendants' last names does not necessarily permit them to infringe upon the rights of another. It is true that a person may employ his own name with impunity to distinguish his business, except where it may be shown that his motive was to acquire for himself the benefit of a reputation built up under that name by a competitor. Higgins Co. v. Higgins Soap Co., 144 N. Y. 462, 39 N. E. 490, 27 L. R. A. 42, 43 Am. St. Rep. 769. In such a case unfair competition must be clearly established to justify an injunction. The rule does not extend, however, to the use of initials as distinguished from names. In W. B. Manufacturing Co. v. Rubenstein, 236 Mass. 215, 128 N. E. 21, 11 A. L. R. 1283, the defendants Rubenstein were enjoined from using "R. B.," even though these letters were the abbreviation of the name of the partnership firm. Furthermore, if "GG" is an infringement, then "G & G" must likewise be held to be one. In Frank v. Sleeper, 150 Mass. 583, 23 N. E. 213, the court held that "N. & S." was an infringement upon "N. S." [6] The final objection that the defendants have been using the trade-mark for six years without protest against its use is also unavailable. Even if it should appear that the plaintiff had knowledge of its use, the doctrine of laches does not seem to have application in actions of this character (Menendez v. Holt, 128 U. S. 514, 9 S. Ct. 143, 32 L. Ed. 526). The motion should therefore be granted. Settle order. In re MILLER'S WILL. * (Supreme Court, Appellate Division, First Department. October 19, 1925.) Reference 7(1)-Issues of law raised by objections to executrix's account and order to show cause should be determined by surrogate. Where objections to account filed by executrix and order to show cause raise only issues of law, such issues should be determined by surrogate in first instance, and submission to referee is erroneous. Appeal from Surrogate's Court, New York County. In the matter of the judicial settlement of the account of proceedings of the last will and testament of John L. Miller, deceased. From an order of Surrogate Court denying motion to overrule objections and appointing referee to hear and determine, and from an order referring to For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes Reargument denied App. Div. -, 212 N. Y. S. —. 1 (211 N.Y.S.) same referee, a motion as part of, and incidental to, account and objections, Emma J. M. Earp, individually and as executrix, appeals. Orders reversed, and matter remitted. Argued before CLARKE, P. J., and DOWLING, MERRELL, McAVOY, and MARTIN, JJ. Wilbur F. Earp, of New York City, for appellant Earp, as executrix and individually. Middlebrook & Borland, of New York City (Percy F. Griffin, of New York City, of counsel; Middleton S. Borland, of New York City, on the brief), for appellant John L. Miller, Jr. Eve P. Radtke, of New York City (Arnold Lichtig, of New York City, of counsel; Herbert A. Mossler, of New York City, on the brief), for respondent and appellant Charles E. Miller. PER CURIAM. The objections filed to the account herein, as well as the order to show cause, present only questions of law, all of which should be determined by the surrogate in the first instance. No question of fact is presented requiring submission to the referee. The orders appointing a referee are therefore reversed, and the matter remitted to the surrogate for such disposition as may be proper. Settle order on notice. In re HENDERSON. (Supreme Court, Appellate Division, First Department. October 19, 1925.) Discovery 40-Power to require discovery as to proceedings for adoption should be exercised only in case which appeals to discretion of court. Where court has power to require furnishing of information as to name of court wherein proceedings for adoption were had, title of proceedings, and date of order of adoption, such power should be exercised only in proper case, appealing to discretion of court. Appeal from Supreme Court, New York County. In the matter of David Henderson, an infant. From an order granting petitioner's motion for an order requiring the Spence Alumnæ Society to furnish the name of the court wherein proceedings for adoption were had, title of the proceedings, and the date of the order of adoption, the Society appeals. Order appealed from reversed, and motion denied. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes Argued before CLARKE, P. J., and DOWLING, MERRELL, McAVOY, and MARTIN, JJ. Schreiber, Collins, Myers & Buchter, of New York City (John Caldwell Myers, of New York City, of counsel, and Orlando P. Metcalf and William T. Collins, both of New York City, on the brief), for appellant. Bernard H. Sandler, of New York City (Ira Wollison, of New York City, of counsel), for respondent. Albert Ottinger, Atty. Gen. (George W. Davis, Deputy Atty. Gen., of counsel), for State Board of Charities, as amicus curiæ. PER CURIAM. While the power of the court to require the furnishing of the information sought for in this proceeding is undoubted, still such power should be exercised only in a proper case, and one which appeals to the discretion of the court. The present case is not such a one, and it sufficiently appears that the information desired should not be furnished to the petitioner. The order appealed from should therefore be reversed, with $10 costs and disbursements, and the motion denied, with $10 costs. Order filed. FEDERAL TERRA COTTA CO. v. MARGOLIES. (Supreme Court, Appellate Division, First Department. October 16, 1925.) Judgment 181-Denial of motion for summary judgment proper, in view of facts from which varying inferences could be drawn. Motion for summary judgment, under rule No. 113 of the Rules of Civil Practice, was properly denied, where whether there was waiver of performance after due date, and whether defendant acquiesced in plaintiff's completing work after knowledge that it would not be completed on time, depended on facts from which varying inferences might be drawn. Appeal from Supreme Court, New York County. Action by the Federal Terra Cotta Company against Edward Margolies. From an order denying a motion for an order striking out defendant's answer, and for judgment under rule No. 113 of the Rules of Civil Pactice, plaintiff appeals. Order affirmed. Argued before CLARKE, P. J., and DOWLING, MCAVOY, FINCH, and BURR, JJ. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes |