This case seems to me not distinguishable in principle fromWaterman v. Shipman *Page 479 (130 N.Y. 301), which contains the latest utterance of this court upon the subject. In that case the word "Ideal" as applied to fountain pens was held to be non-descriptive, arbitrary and fanciful, having no natural or necessary application to a pen which served to indicate that the article sold by the plaintiff was of his own manufacture. The opinion closes as follows:
"We think that the word `Ideal,' as applied by Mr. Waterman to fountain pens of his own manufacture, comes within the comprehensive definition of a trade mark as given in Selchow v.Baker (supra), and that the plaintiffs, as the owners of the name, are entitled to the protection which the law affords to owners of trade marks, notwithstanding the fact that the name is also used to designate the invention. Upon the facts found, the plaintiffs were entitled to an injunction restraining the defendant from using the word `Ideal' as applied to fountain pens."
If in that case Waterman had selected the word "Favorite" instead of "Ideal" the decision would necessarily have been the same. And if this plaintiff had employed the word "Ideal" as the special name of the "Letter and Invoice File" manufactured by it the court would have been obliged either to follow Waterman's case or overrule it, and the situation is not different because the word "Favorite" was chosen instead of "Ideal."
That this is so will appear from an examination of the labels. The plaintiff's is printed within a circle four and one-half inches in diameter, the words "The Improved" running around the upper inside of the circle and being composed of letters seven-sixteenths of an inch long and one-sixteenth of an inch wide; in the same size and kind of letter are the words "Letter and Invoice File" running around the inner lower half of the circle. In a heavy black letter twice as long and four times as wide as those in the words thus curving around the inside of the circle, appears the word "FAVORITE," extending entirely across the horizontal diameter of the circle. Above the word "FAVORITE" is printed within a small rectangular parallelogram the word "Best" in small *Page 480 letters, the whole word not covering as much space longitudinally as two of the letters in the word "FAVORITE," while directly underneath the latter word, in a similar geometrical figure as that containing "Best," appears in small letters the word "Cheapest," which, though containing twice as many letters as the word "Best," is but one-eighth of an inch longer than that word.
The defendants' label is printed in three horizontal lines and is comprised in the words "The Favorite Letter and Invoice File," the word "Favorite" in heavy black type extending longitudinally about three and one-half inches, the letters being an inch long and over an eighth of an inch thick. Above the word "Favorite" is printed the word "The" in small type, while in a horizontal line about three-quarters of an inch below the large word "Favorite" and in small letters that altogether occupy only about the same space horizontally as does that word, appear the words "Letter and Invoice File."
How could it be possible for even the most superficial observer to look at these labels without seeing at once that the particular designating word by which those files were intended to be identified was the word "FAVORITE?" That word looms up largely among the others and absorbs at once all of the attention of a person who looks at the labels. In both labels the rest of the legends of which they are composed is intentionally subordinated to this word "FAVORITE," which as regards letter and invoice files is assuredly non-descriptive, arbitrary and fanciful. It can be readily seen that the qualifying words, "Improved," "Best," and "Cheapest," were added to the plaintiff's label after he had appropriated the word "FAVORITE," simply for advertising, or, perhaps, æsthetic purposes.
Supposing the plaintiff's label had been in the first place "Favorite Letter and Invoice File," and afterwards in printing the label the word "The" had been added, and that then the defendants had begun manufacturing those files and had labeled them "Favorite Letter and Invoice File," without the definite article "The" similar to the label that the plaintiff *Page 481 had at first used. Would anybody claim in such case that under the principle applied in the case of Waterman v. Shipman (supra) the plaintiff's property rights had not been invaded? And if not, it seems to be impossible, without absolutely overruling the Waterman case, to hold that the addition by plaintiff of the words "Improved," "Best," "Cheapest," in small type changed the situation and permitted the defendants to take advantage of the plaintiff's years of advertising by using this word "FAVORITE," which, as applied to articles of this description, is incontrovertibly as non-descriptive, arbitrary and fanciful a word as is "Ideal" when applied to fountain pens.
The judgment should be reversed.
GRAY, BARTLETT, HAIGHT, CULLEN and WERNER, JJ., concur with O'BRIEN, J.; PARKER, Ch. J., dissents.
Judgment affirmed.