Vanity Fair Mills, Inc. v. T. Eaton Co. Ltd

234 F.2d 633 (2nd Cir. 1956)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

P is a Pennsylvania corporation. It has been engaged in the manufacture and sale of women's underwear under the trade-mark 'Vanity Fair' since about the year 1914 in the United States, and in Canada since at least 1917. P has publicized its trade-mark 'Vanity Fair' on feminine underwear in the United States since 1914, and since 1917 has regularly expended large sums of money in advertising and promoting its trademark both in the United States and Canada. The name 'Vanity Fair' has become associated throughout the United States and Canada with P's products. In 1914, P trade-marked 'Vanity Fair' as applying to various types of underwear. It has been continuously manufacturing and selling feminine underwear under these trade-mark registrations since about the year 1914. Eaton (D) is a Canadian corporation engaged in the retail merchandising business throughout Canada. It has a regular and established place of business in New York. On November 3, 1915, D filed in Canada an application for the registration in Canada of the trade-mark 'Vanity Fair,' claiming use in connection with the sale of 'Women's, Misses' and Children's Coats, Suits, Cloaks, Waists, Dresses, Skirts, Corsets, Knitted Goods, Gloves, Hosiery, Boots & Shoes, Outer Garments, and other Wearing Apparel.' It was granted a week later. In 1919 P sought to register the trade-mark 'Vanity Fair' in Canada for 'ready-made underwear,' but was rejected because of D's registration. In 1933 D's mark was modified to include only woman's underwear. Eaton (D) is a Canadian corporation engaged in the retail merchandising business throughout Canada. It has a regular and established place of business in New York. On November 3, 1915, D filed in Canada an application for the registration in Canada of the trade-mark 'Vanity Fair,' claiming use in connection with the sale of 'Women's, Misses' and Children's Coats, Suits, Cloaks, Waists, Dresses, Skirts, Corsets, Knitted Goods, Gloves, Hosiery, Boots & Shoes, Outer Garments, and other Wearing Apparel.' It was granted a week later. In 1919 P sought to register the trade-mark 'Vanity Fair' in Canada for 'readymade underwear,' but was rejected because of D's registration. In 1933 D's mark was modified to include only woman's underwear. D objected to P's sales of its branded merchandise to one of D's principal competitors in Canada, the Robert Simpson Company. The Simpson Company discontinued the purchases of P's branded merchandise after being threatened with infringement suits by D. P asserts that D has advertised feminine underwear in the United States under the trade-mark 'Vanity Fair,' and that it has sold such underwear by mail to customers residing in the United States. P sued D seeking injunctive relief in both countries. The district The court held that it had no jurisdiction over the Canadian issues. P was permitted to replead just American claims. P appealed.