Fancee Free Mfg. Co. v. Fancy Free Fashions, Inc.
148 F. Supp. 825, 112 U.S.P.Q. (BNA) 359, 1957 U.S. Dist. LEXIS 4119 (1957)
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Rule of Law:
The use of a similar trade name on related, non-competing goods constitutes trademark infringement and unfair competition if there is a likelihood of confusion as to the source of the goods or a likelihood of dilution of the distinctive quality of the senior user's mark.
Facts:
- In 1947, Herma Wiedle started a business under the trade name “Fancee Free Mfg. Co.”, which was incorporated as Fancee Free Mfg. Co. in 1950.
- Fancee Free Mfg. Co. manufactures and sells women's intimate apparel, such as garter belts, brassieres, and girdles.
- In 1954, Fancee Free Mfg. Co. obtained a U.S. trademark registration for “Fancee Free” for its line of products.
- In March 1955, a New York corporation was organized and began using the trade-mark “Fancy Free” on its products.
- The defendant, Fancy Free, manufactures and sells women's lounging wear, such as brunch coats and housecoats, but not the specific types of intimate apparel sold by the plaintiff.
- Both companies sell their merchandise to the same retail stores throughout the country, often through the same central buying offices.
- Within three months of the defendant's formation, Fancee Free Mfg. Co. protested the use of the similar name and asked the defendant to stop, but the defendant refused.
Procedural Posture:
- Fancee Free Mfg. Co. filed an action in the U.S. District Court against the defendant corporation.
- The complaint sought an injunction, an accounting of profits, and counsel fees for alleged trademark infringement and unfair competition.
- The defendant asserted an affirmative defense that the plaintiff's mark was descriptive and therefore not entitled to protection.
- The defendant also filed a counterclaim seeking the cancellation of the plaintiff's registered trademark.
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Issue:
Does a company's use of a phonetically identical trade name on related, but not directly competing, goods constitute trademark infringement and unfair competition where there is evidence of actual confusion in the trade?
Opinions:
Majority - Dawson, District Judge.
Yes. The defendant's use of the name “Fancy Free” on related goods constitutes trademark infringement and unfair competition because it is likely to cause confusion as to the source of the goods. Under the Lanham Act, infringement is not limited to competing goods but applies to any goods where use of a similar mark is likely to cause confusion. The court found that women's intimate apparel and lounging wear are sufficiently related goods, as they are sold in the same stores and a consumer might reasonably assume they come from the same source. Furthermore, New York's anti-dilution statute provides grounds for an injunction where a defendant's actions dilute the distinctive quality of a trademark, which was established here by substantial evidence of confusion in the trade, including misdirected returns, orders, and payments. The defendant’s defense that the mark is merely descriptive was rejected, as the court found “Fancee Free” to be a fanciful term, not one that describes the product.
Analysis:
This case solidifies the 'related goods' doctrine in trademark law, affirming that infringement can occur even between non-competing products if they are marketed in such a way that consumers are likely to be confused about their origin. The decision demonstrates that the 'likelihood of confusion' standard is the central inquiry, and evidence of actual confusion among suppliers and retailers is powerful proof of this likelihood. Additionally, the opinion highlights the independent power of state anti-dilution statutes, which can provide a separate basis for relief by focusing on the harm to the mark's distinctiveness, even in the absence of competition or direct consumer confusion.
