brand of clothes, the defendant can adopt the same as a firm name in 1933, when during this time the plaintiff has come into the area, particularly Philadelphia, and established and operated an Adam Hat Store as a branch of the Adam Hat Stores, Inc., which was operating in various states in the country. In other words, is the use to which the mark "Adams Clothes" is now applied, to wit: its use as a firm name, so different than that which it had previously been using, a marking for men's clothing, that equity will not protect it? In answer thereto, I feel that the plaintiff cannot invoke the protection of a court of equity and enjoin the defendant from using the term "Adams Clothes" in the transaction of his business, in that the new use given to the mark is not so dissimilar to the old use as would warrant the restraining arm of equity. I arrive at this conclusion because the mark or term "Adams Clothes" used by the defendants as a firm name is applied to men's clothing generally, since less than 1.55% of the defendants' business in 1940 was with respect to hats, which is the major business of the complainant company, and for the further reason that the product is being marketed in the same general area as "Adams Clothes" were previously sold, with the exception of Wilmington, which is somewhat outside of the metropolitan area of Philadelphia, which I take to embrace Norristown and Chester. The defendants' principal business is in Philadelphia as it was theretofore and as I have indicated the firm makes sale of the same class of merchandise as was sold previously, to wit: men's clothing, and it seems to me having sold this product for some fifteen years, it was but a natural step in the evolution of the business, considering the rapidity with which the business has expanded, that from the sale of a successful product such as a brand of clothes, it would be but natural that there would eventuate therefrom the adoption of the brand as a firm name.
Counsel on both sides as well as the court after extensive research have found but little authority by way of precedent to substantiate their respective contentions, but I am in accord with the view taken by Justice Holmes in Burt v. Tucker, 178 Mass. 493, 59 N.E. 1111, 52 L.R.A. 112, 86 Am.St.Rep. 499, wherein he states that he could see no objection to the defendant using the trademark which he had used on shoes he had sold in Massachusetts, as a tradename five years later in Philadelphia, even though one year after the discontinuance of the mark the plaintiff adopted it as his tradename.
I further feel that in the prosecution of this matter the plaintiff is guilty of laches. The record shows that on February 27, 1934, after the defendant had adopted the name "Adams Clothes" as a firm name (which was in September, 1933) the plaintiff attempted to enjoin the defendants' use of the name by a bill in equity in the Court of Common Pleas of Philadelphia County; a hearing was held on the plaintiff's application for a preliminary injunction on March 20, 1934, at the end of which hearing the plaintiff withdrew his application for a preliminary injunction and the case was continued until final hearing and on the following day, March 21, 1934, the plaintiff attempted to discontinue the proceeding without leave of court, at which time the defendant was called as of cross examination and the plaintiff was thereby advised that the defendant asserted his right to continue the use of the name. At the end of the hearing the plaintiff withdrew his application for a preliminary injunction and attempted to discontinue the same without leave of court. The defendants upon hearing of this, opposed it and the Supreme Court of Pennsylvania denied the plaintiff the right to discontinue and the record was remitted to the lower court. It is perhaps noteworthy that all of the defendants' stores in Norristown, Chester, Wilmington and Trenton were opened after this decision of the Supreme Court. It seems to me as contended by counsel after awaiting some seven months after the plaintiff had abandoned their application for a preliminary injunction and being refused permission to discontinue the action, it was logical to assume plaintiff had decided to abandon further prosecution thereof.
While it is true as in Menendez v. Holt, 128 U.S. 514, 9 S. Ct. 143, 32 L. Ed. 526, and in Layton Pure Food Co. v. Church & Dwight Co., 8 Cir., 182 F. 35, 32 L.R.A., N.S., 274, and in a long line of cases since that long delay in and of itself in the prosecution of the action is no defense to injunctive relief, nevertheless I feel that by reason of a different factual busis in the instant case, it can be distinguished from cases such as above cited. Here the plaintiff gave notice to the defendant in November, 1933, just a few months after the defendant began using the name "Adams Clothes" as a tradename, that the plaintiff objected to the use thereof since it stated that use by the defendant of the tradename "Adams Clothes" was an infringement upon its tradename because of its alleged deceptive similarity. The defendant refused so to do and thereupon the plaintiff caused to be instituted in February, 1934 the bill in equity looking to the enjoinment of the name "Adams Clothes" by the defendant. This indicates a definite intention on the part of the plaintiff to try and prohibit the defendant from conducting a business in Philadelphia under the firm name "Adams Clothes". However, as has been indicated at the hearing on the application for the preliminary injunction the plaintiff withdrew the application and asked leave of court to discontinue the action. This affirmative conduct on the part of the plaintiff, the withdrawal of the application for the preliminary injunction and the asking leave of the court to discontinue the action, though opposed by the defendant and later denied by the Supreme Court of Pennsylvania, shows a very definite intention on the part of the plaintiff to abandon prosecution of the action. Accordingly, by resort to prosecution of this action in a new forum almost five years later with no attempt to pursue the action in the Court of Common Pleas of Philadelphia County, Sitting in Equity, to completion, is in effect a waiver of that notice contained in the letter of November 15, 1933, for during that time the defendants advertised by radio in forty broadcasts over Station WIP in Philadelphia during the years 1933, 1934, and 1935 at a total cost of $9,420.94; and in 2,128 broadcasts over WIP from Philadelphia during the years 1936, 1937, 1938, 1939 and 1940 at a total cost of $60,840.78; over Station WCAU, 160 broadcasts in 1940 at a cost of $10,800; over Station WFIL, 720 broadcasts from June, 1935, to September, 1937, at a total cost of $27,133.33. In addition thousands of lines of advertising were resorted to by the defendants since the court action above referred to, which involved the expenditure of large sums of money by the defendants therefor.
It is submitted that the elementary and fundamental principle of equity that he who seeks equity must do equity should be applied here. The failure of the plaintiff to proceed with the action instituted in the Court of Common Pleas of Philadelphia County, Sitting in Equity, after once having started the same, having in mind that he abandoned his application for a preliminary injunction as well as affirmatively asked the court's leave to discontinue the same, shows an attitude of mind which gave the defendant every right to assume that whatever objection he had to defendants user of the name was abandoned. To say now, almost five years after, during which time large sums of money, as has been indicated, were expended in the expansion of the defendants' business, that the defendants' user of the name "Adams Clothes" should be enjoined, would be, in view of what I construe to be silent permission, most unconscionable.
I, therefore, deny the prayer of the bill.
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