EMERY, V. C.
Suit by the Stirling Silk Manufacturing Company against the Sterling Silk Company and others. Application for preliminary injunction denied.
J. D. Bedle and Mr. McGee, for complainant, Eugene Stevenson, for defendants.
EMERY, V. C.This is an application for a preliminary injunction against the use of complainant's name and trade-mark. Without prejudging in any way the decision which should be made at final hearing, on the complainant's rights, as set up in the bill and on the argument, it is proper and necessary, in applications for preliminary injunctions in these cases, to consider to some extent the status of the complainant's claim on the disputed questions of law and fact which are raised on the pleadings and affidavits, for the reason that in trade-mark and similar cases clearness or doubt as to complainant's title is one of the elements which specially affects the right to a preliminary injunction. After considering and weighing, as fully as I have had opportunity, the very full and thorough arguments and briefs of counsel, my present view as to the situation of complainant's claim is this:
First. That the claim set up in its bill of an exclusive right, as against the defendants and all others, to a label or distinguishing mark, consisting of the weaving of a name upon the selvedge or margin of "black taffeta" or other silks is not well founded. This, as it now strikes me, is nothing more than a method of marking complainant's name on its goods, and as such method it cannot be protected, either as a patented process or as a trade-mark. This method of marking his own name upon every yard or smaller parcel of the goods is open to every manufacturer or dealer in the goods for a similar purpose. It is exceedingly useful and valuable for the purpose of enablingthe manufacturer or dealer in silks to appeal directly to the purchaser of every yard of his goods, and establishing with purchasers a reputation for his goods that will increase the sale. To give complainant the exclusive benefit of this method, under cover of the right to a trade-mark (which has no limited existence), would, as it now seems to me, create a privilege or monopoly in trade of an entirely new character, and the claim that it first introduced the method in this country does not give complainant any monopoly or exclusive right to its use. No case has been cited to support any such claim, and no preliminary injunction could go on the basis of this claim.
Second. I think the corporate name of the defendant "The Sterling Silk Company" is so similar to that of the complainant, "The Stirling Silk Manufacturing Company," that with purchasers at retail of the goods there is danger of confusing complainant's goods with defendants'. Such purchasers are the persons principally to be considered in reference to the trade in these selvedge-marked goods, rather than the jobbers or persons in the trade, for, as above stated, this method of marking on the selvedge the name of the maker or dealer and his guaranty is adopted for its effect in increasing the sales to the ultimate purchasers by a direct and permanent appeal to them. With reference to ordinary purchasers at retail, the distinctions drawn by counsel between the names are, as it now strikes me, too slight to be considered substantial. The two names "Sterling" and "Stirling" are not only eadem so-nantia, but the difference in mere spelling is one of such a character that ordinary purchasers would not be likely to recollect from one day or purchase to another whether the name of the manufacturer was spelled with an "e" or an "1," and on seeing the name spelled with a different letter from the one expected, would be likely to consider themselves mistaken as to the spelling, if the matter was at all called to mind. I doubt whether either counsel in this case, or the court, independent of the special reasons for recollecting the distinction set out in the answer, would themselves carry in mind for any length of time the distinction between "Sterling" and "Stirling" as the names of the respective parties in the cause. The difference occurring in defendant's name by the omission of the word "Manufacturing" might, perhaps, tend to distinguish, except for the fact that both the companies are silk manufacturing companies, and nothing but manufacturing companies. The addition, therefore, has no effect by way of describing the character of business, and for the purpose of distinguishing the parties to either dealers or purchasers at retail the addition is ineffectual. So far as relates to the question of the infringement and use of name, therefore, my present view is that the complainant has at least a prima facie case for relief. Up to the present time, or rather up to the time when the question in relation to the name appears to have been first raised by this method of bringing the name directly to the attention of the customers, and, so long as the dealings of the parties in their goods were altogether or mainly with respect to the trade dealers, the similarity of names seems to have been of little practical inconvenience, This seems to have been due mainly to the method adopted by the defendants of advertising and carrying on the business with the trade by using the names "Valentine & Bentley" in connection, more or less prominent, with the name "Sterling Silk Company," on its advertisements, signs, etc. But with the defendant company's adoption of the method of increasing its retail sales by weaving its name and guaranty on the goods, this distinctive feature of the use of the names of Valentine & Bentley has been discontinued, and it has been discontinued just when, under the special circumstances, the need for distinction was most urgent, if defendants really desire to continue the distinction. My present view, therefore, is that under these circumstances, admitted by the answer and affidavits, as to the pains defendants have for years taken, and apparently with success, to distinguish the companies and their products, the complainant has the right, even after the lapse of several years, to call in question the propriety of the use of the similar name, now that it is used in a manner calculated to mislead the ordinary purchaser, and used under a claim of right.
As to the differences in the manner of marking the names on the selvedge, the difference in spacing, and the greater number of words to the yard, and the addition of the word "Wear" to "Guarantied," these, as it now strikes me, are matters of detail which might possibly distinguish them to a dealer in the trade, but would not be fixed in the attention of a purchaser to whom the ideas in mind would be the ideas manifestly intended to be conveyed by both parties of a guarantied silk taffeta manufactured by the "Sterling" or "Stirling" Silk Company. I consider, therefore; that the complainant, so far as its right depend on the use of the name, has established a prima facie case for protection against the use of the name in the manner complained of, and the question is, is it entitled to injunction pending the final hearing? Interlocutory injunctions in trade-mark cases, which seek to restrain, pending hearing, the carrying on of business to a certain extent, or in a certain way, against defendant's bona fide claim of the right so to carry it on, involve not only the question of the protection of a probable right, but also other considerations which are specially applicable in these cases. One is promptness of application for the preliminary injunction, and in view of its interference with trade the rule against delays is specially strict 26 Am. & Eng. Enc. Law, p. 504, and cases cited. In this casehave been a defense to an action at law for violating the trade-mark, or sufficient basis for enjoining a suit at law. These rules were made the test of whether a court of equity was bound to aid by injunction in the protection of the legal rights. Mellish, L. J., pp. 632, G33. This case was cited in a late case in the house of lords (Cochrane v. Macnish [1896] App. Cas. 225, 226), and the question started, but it was not directly passed on. My present view is that there is much to be said in favor of the rule as stated by Vice Chancellor Bacon, especially in view of the fact that in many cases our courts of equity have adopted a rule in relation to the protection of legal rights different from that laid down by the justices en appeal in Ford v. Foster. Our courts hold in many cases that complainant must come into a court of equity with a cause essentially equitable. Minzesheimer v. Doolittle (N. J. Err. & App., March, 1900) 45 Atl. 611, and cases cited page 612. This rule, if applicable to the present case, and in the absence of a satisfactory explanation of the representation, or of its continuance, might prevent complainant obtaining a final decree. The doubt or question as to the legal effect of the misrepresentation upon the right of a decree at final hearing is, therefore, an additional ground for refusing to interfere by preliminary injunction, where the necessity for such interference is not absolutely imperative, in order to protect complainant, if ultimately successful. The preliminary injunction is therefore denied. Costs on the application will be costs in the cause.