Hub Clothing Co. v. Cohen , 270 Pa. 487 ( 1921 )

Opinion by

Mr. Justice Frazer,

Plaintiff, a corporation, is engaged in the retail clothing and gentlemen’s furnishing business, in the City of Wilkes-Barre, Luzerne County. It began business in 1909, at which time it adopted the trade name “The Hub,” with the design of a hub between the two words, and since that time has used this trade design in its advertising of all kinds throughout Luzerne County, including signs, billboards, stationery, newspapers and circulars and expended an amount in excess of $105,000 in such advertisement. Wilkes-Barre is the county seat and business center of Luzerne County with a number of smaller cities and towns in the vicinity, among them the City of Pittston, nine miles distant from Wilkes-Barre, containing approximately 20,000 inhabitants. Plaintiff’s customers are not confined to the City of Wilkes-Barre but to the surrounding country and towns, including the City of Pittston, from which place plaintiff estimated it derived between one-fifth and one-sixth of its annual gross business of $500,000.

In July, 1920, plaintiff arranged for the purchase of a site for a branch store to be opened in Pittston. At about the same time defendants, who had for a number of years been conducting a retail clothing business in Pittston, under the name of Cohen Brothers, began extensive advertising under the trade name “The Hub,” using substantially the same design as that in use by plaintiff. On August 3, 1920, defendants registered this trade name with the secretary of the Commonwealth, pursuant to the Act of June 20, 1901, P. L. 582. Plaintiff then filed the present bill for an injunction to restrain defendants from using plaintiff’s trade name, and, from a decree granting such injunction, defendants appealed.

The first argument advanced by defendants is that plaintiff could acquire no exclusive right in the trade name used, because • that descriptive term, previous to the beginning of the present proceedings, had been in use by others in the vicinity of Wilkes-Barre for a number of years. While there is evidence to support this contention in part, it appears that those who at various times had done business under the name in question had discontinued its use with one exception, which was that of a dealer in men’s and boys’ furnishing goods in a small town adjacent to the City of Pittston and eleven miles from Wilkes-Barre. The court below found that the business done by this merchant was “so inconsiderable that plaintiff did not deem it advisable to restrain him.” However this may be, the mere fact that others had infringed upon plaintiff’s right without interference on its part fails to justify the infringement of defendants. Plaintiff may well have believed that the damage to its business done by others through the use of its trade name was scarcely worth the trouble and expense of instituting legal proceedings to enforce its rights, considering the slight injury their opposition would inflict upon plaintiff’s trade. The mere fact that another assumed the use of plaintiff’s trade design is not sufficient to estop it from maintaining proceedings to enjoin an infringement by defendants, or furnish the latter an excuse for their wrongful act: Penna. Brewing Co. v. Anthracite Beer Co., 258 Pa. 51; Clark Thread Co. v. Armitage, 74 Fed. 936; Filley v. Fassett, 44 Mo. 169.

Defendants also argue that as their store is located in a city nine miles distant from Wilkes-Barre there could be no interference with plaintiff’s' trade. As the business of plaintiff is derived, not only from Wilkes-Barre but also from residents of Pittston and other parts of the county, and plaintiff’s advertising not only reach local buyers but substantially people of the entire county, through the medium of signs, newspapers, printed matter, etc., there is no merit in this contention. The property in a trade-mark is not limited by fixed territorial bounds but frequently extends over-; a large area, depending upon the extent and character of the business, and through sources tending to attract customers from a large area: Hanover Milling Co. v. Metcalf, 240 U. S. 403, 415-16. The evidence in this case clearly shows plaintiff’s market extended to the City of Pittston and its right to have its property in the trade-mark protected is coextensive with the territory throughout which it is known and from which it has drawn its trade.

The fact that plaintiff failed to register its trade-mark under the provisions of the Act of 1901 will not prevent it from enforcing its right by proper legal proceedings. The Act of 1901 merely provides that the certificate of registration issued by the secretary of the Commonwealth shall be proof of the adoption of the label or trade-mark by its holder. It does not deprive the court of jurisdiction to determine the validity of a right claimed by another person to the. exclusive use of the design: Fraim Lock Co. v. Shimer, 43 Pa. Superior Ct. 221. It prohibits infringements until, or unless, the registry is revoked, upon proper proof being made to the secretary of the Commonwealth that there has been a prior adoption of the device. Aside from the question of the trade-mark, this court has.said-: “A manufacturer has no right to enclose his packages in labels "so like that of a rival as to deceive a purchaser”: Penna. Brewing Co. v. Anthracite Beer Co., supra. The effect of the act of defendants in this case must necessarily be to claim unfairly a share of plaintiff’s business and produce confusion in the public mind as to the identity of the person or firm whose goods they were buying and, consequently, result in financial loss to plaintiff.

The decree is affirmed at appellants’ cost.