Medlar & Holmes Shoe Co. v. Delsarte Manufacturing Co.

The opinion of the court was delivered by Garrison, J. The decree of the court of chancery is affirmed, 'for the reasons given in the opinion of the learned vice-chancellor who heard the cause. The distinction that -he draws between the use- by the complainants of the word “Delsarte” as a fancy name and the use made of it by the defendant as a descriptive term is a valid one and fully warranted by the testimonjq but added stress should, we think, be given to the consideration that the complainants’ use of the word directly tended to impart to it that essential element of value in a trade mark by which prospective purchasers are attracted, and upon which customers learn to.rely; whereas, in the defendant’s use of it, the purchase was made on behalf of the customer before file word was stamped upon or in any way affixed to the article purchased, the [715] customer relying not upon any significance the mark bad to him,, but solely upon the selective skill of the defendant in filling his order. A mark that is not affixed to an article of barter until after it had been purchased for a customer lacks the essential elements that entitle a trade mark to equitable protection. Whether the appellant may, in the future, make the same use of the word “Delsarte” that it did prior to the respondents’ use of it as a trade mark, viz., by stamping it on shoes furnished to-its customers, is a question that has not been argued before us,, and hence upon this point no opinion is expressed. For affirmance—The Chief-Justice, Garrison, Fort, Garretson, Pitney, Bogert, Vredenburgh, Vroom, Green, Gray—10. For reversal—Dixon—1.