Opinion
The answer of the petitioner admitted that the shoes sold by the Missouri corporation were of superior quality to those sold by itself. Upon the pleadings and the proof, the respondent made findings and held that the petitioner had violated the provisions of section 5 of the Act of Congress approved September 26, 1914 (Comp. St. Sec. 8836e), creating the Federal Trade Commission and defining its powers and duties, and it ordered that the petitioner, its officers, directors, agents, and employees, cease and desist (1) from using as a part of its corporate name the word 'Juvenile,' or any word or combination of words likely to be confused with the name of the Juvenile Shoe Corporation of America; (2) from using or permitting to be used in its behalf the word 'Juvenile' on its marks, labels, tags, or other devices upon or in connection with the sale of shoes for infants, children, and misses; and (3) from directly or indirectly suggesting by the use of a word, mark, or label or otherwise that the goods of the petitioner are the goods of the Juvenile Shoe Corporation of America.
Fred Mansur, of Los Angeles, Cal., for Angeles, Cal., for petitioner.
W. H. Fuller, Charles M. Neff, and Eugene W. Burr, all of Washington, D.C., and D. N. Dougherty, of San Francisco, Cal., for respondent.
Before GILBERT and RUDKIN, Circuit Judges, and DIETRICH, District judge.
GILBERT, Circuit Judge (after stating the facts as above).
The record fully justifies the order of the Federal Trade Commission enjoining the use of the petitioner's corporate name. The petitioner went into the business of manufacturing and selling children's shoes and took a name so similar to a senior corporation that was engaged in precisely the same business and in the same field that confusion of the two corporations in the public mind was inevitable. The names 'Juvenile Shoe Corporation' and 'Juvenile Shoe Company, Inc.,' are practically identical. The reported cases in which injunction has been sustained against the use of a corporate name afford few instances of names so similar and so likely to create confusion as those which these two corporations used. In assuming its name, a corporation acts at its peril. American Order Scottish Clans v. Merrill, 151 Mass. 558, 24 N.E. 918, 8 L.R.A. 320; Metropolitan Tel. Co. v. Metropolitan Tel. Co., 156 A.D. 577, 141 N.Y.Supp. 598. Injunction will lie against a corporation that by any artifice deceives the public into believing that its goods are those of another corporation having a similar name; and this is true irrespective of any intent to mislead the public, and especially is it true where the corporations are engaged in the same business. General Film Co. of Mo. v. General Film Co. of Me., 237 F. 64, 150 C.C.A. 266; Nat. Circle Daughters of Isabella v. Nat. Order D.I. (C.C.A.) 270 F. 723.
Nor are we convinced that this court should modify that portion of the order here under review which forbids the petitioner to use the word 'Juvenile' on its marks, labels, and tags in connection with the sale of children's shoes, and from suggesting by word, mark, label, or otherwise that its goods are the goods of the Juvenile Shoe Corporation. The Federal Trade Commission found as a fact that the use of the word 'Juvenile' as it was employed by the petitioner caused confusion and led purchasers to believe that the petitioner's goods were those of the Juvenile Shoe Corporation. It is not asserted that the Juvenile Shoe Corporation has the exclusive right to the word 'Juvenile' as applied to shoes, but we think it has a proprietary and exclusive right to the good will which it has created by its dealing and its advertising with the purchasing public, as well as by the superior quality of its shoes, and that the use of the word 'Juvenile' by the petitioner on its shoes, has, as the Trade Commission finds, tended to create the false impression that the goods sold by the petitioner were the goods of the Juvenile Shoe Corporation and while it may be that the word 'Juvenile' is not susceptible of appropriation as a trade-mark, the right to its use as a trade-name may still be protected against the unfair competition which might result from the use of the same trade-name by another corporation, where both are engaged in the same trade, dealing in the same class of goods and in actual competition with one another, Pillsbury-Washburn Flour-Mills Co. v. Eagle, 86 F. 608, 30 C.C.A. 386, 41 L.R.A. 162; Straus v. Notaseme Co., 240 U.S. 179, 36 Sup.Ct. 288, 60 L.Ed. 590; G.W. Cole Co. v. American Cement & Oil Co., 130 F. 703, 65 C.C.A. 105; N.K. Fairbank Co. v. Luckel King & Cake Soap Co., 102 F. 327, 42 C.C.A. 376; Stark v. Stark Bros. Nurseries & Orchards Co., 257 F. 9, 168 C.C.A. 221.
It is contended that, since the petitioner has ceased the use of a label on the cartons in which its shoes are packed and sold, an order to cease placing such labels on the cartons is not warranted; but it does not follow that the order should be dissolved. The Juvenile Shoe Corporation is not bound to accept the fact of the disuse of the labels as proof that the use will not be resumed in the future, and the mere fact that the petitioner has ceased such use is no reason why injunction
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should not issue, Sears, Roebuck & Co. v. Federal Trade Commission, 258 F. 307, 169 C.C.A. 323, 6 A.L.R. 358; Saxlehner v. Eisner, 147 F. 189, 77 C.C.A. 417.
The order of the Federal Trade Commission is affirmed.