WARNER BROS. CO. v. WIENER

WARNER BROS. CO. v. WIENER. (Circuit Court of Appeals, Second Circuit. November 10, 1914.) No. 271. Tbade-Makks and Tkade-Names (§ 59) — Inekingement—Use op Subname as Tkade-Makk. Where a registered trade-mark consists of a surname, under Act Feb. 20, 1905, c. 592, § 5, S3 Stat. 725, as amended by Act Feb. 18, 1911, c. 113, 36 Stat. 918 (Comp.' St. 1913, § 9490), it is to be treated as an arbitrary word", and is protected, not only against literal, but against colorable, imitations; and under such rule the word “Wiener,” used alone to designate a corset, although it is the surname of the person using it, is an infringement of the trade-mark “Warner.” [Ed. Note. — For other eases, see Trade-Marks and Trade-Names, Cent. Dig. §§ 101, 102; Dec. Dig. § 59.* Right to use one’s own name as trade-mark or trade-name, see notes to R. W. Rogers Go. v. Wm. Rogers Mfg. Go., 17 C. O. A. 579; Kathreiner’s Maíz Kaffie Fab. v. Pastor Kneipp Med. Co., 27 C. C. A. 357; Borden Ice Cream Co. v. Borden’s Condensed Milk Co., 121 O. C. A. 203.] On rehearing. For former opinion, see 214 Fed. 30, 130 C. C. A. 424. Seahury C. Mastick, of New York City (Henry J. Lucke, of New York City, of counsel), for appellant. Before LACOMBE, COXE, and WARD, Circuit Judges. For other castes see same topic & § number in Doc. & Ara. Digs. 3907 to date, & Rep’r Indexes [MAJORITY — WARD, Circuit Judge.] WARD, Circuit Judge. Since our decision affirming the order in this case the Supreme Court has handed down an opinion in the case of Thaddeus Davids Co. v. Davids Manufacturing Co., 233 U. S. 461, 34 Sup. Ct. 648, 58 L. Ed. 1046. A majority of the court understand it to hold that the trade-mark granted in a surname under the fourth proviso of section 5 of the Trade-Mark Act of 1905 is in the name itself, irrespective of the way in which it is printed or displayed. The-name in such a case is to be treated as if it were an arbitrary word, and is to be protected, not only against literal, but against colorable,, imitation. So regarded, the word “Wiener,” standing alone, is, in our opinion a colorable imitation of the word “Warner,” and the defendant must be enjoined, although it is his own surname, from using it in the corset business alone, or in any manner amounting to a color-able imitation of the word “Warner.” Order modified.