Opinion
No. 230.
March 29, 1946.
Appeal from the District Court of the United States for the Southern District of New York.
Action by Julius Drittel, doing business as Julius Drittel Company, against Anna Friedman and others, copartners, doing business as Juliana Underwear Company, for injunction against alleged infringement of a trade-mark and for an accounting for profits and damages, wherein defendants filed counterclaim to enjoin plaintiffs from using the trade-mark, for damages, and an accounting to have plaintiff's registration of his trade-mark declared invalid. From an order of the United States District Court, 60 F. Supp. 999, striking defendants' counterclaim and granting summary judgment dismissing it, defendants appeal.
Affirmed.
The facts are stated in the district court's opinion, reported in 60 F. Supp. 999, except that defendants' counterclaim contained a paragraph 25 reading as follows: "That by the aforesaid acts and conduct of the plaintiff and plaintiff's predecessor and particularly the unwarranted and unlawful registration by them of the name `Juliana' as a trade-mark, the defendants have been prevented and interfered with in the registration of said trade-mark by the defendants."
Morris Kirschstein, of New York City, for appellee,
I. Gainsburg, of New York City, for appellants.
Before L. HAND, CLARK, and FRANK, Circuit Judges.
1. In so far as the appeal relates to the counterclaim, we may entertain it, since the counterclaim sought an injunction. Defendants' suggestion that we "search the record," and thus determine the validity of plaintiff's claim, is an oblique suggestion that we review the order denying defendants' motion for summary judgment. But such an order is not appealable.
2. Except as to two items, noted below, the state court judgment was res judicata barring the counterclaim. For necessarily within the issues which could have been litigated in the state court action, under defendants' pleadings there, was their claim that their use of the name "Juliana" in their trade-name conferred on them the right to prevent plaintiff from using it as a label.
3. After the entry of that judgment, defendants began to mark their goods "Juliana"; the counterclaim, to the extent that it rested upon that use, was not similarly barred. But obviously, too, to that extent it lacks merit because of plaintiff's prior use.
4. Also not barred by the state court judgment is the claim based on paragraph 25. The only asserted foundation for that claim is 15 U.S.C.A. § 102. But such a right can be asserted only by one who has obtained a registered trade-mark, and that defendants have not done. Since defendants have not appealed to the Commissioner of Patents, 15 U.S.C.A. § 89 is inapplicable.
Affirmed.