Monday, May 04, 2009
The Famous DOBBS Trademark Case
(Photo shows a classic DOBBS® Grey Fedora hat; Photo source: eBay)
Our Hat is off to the Court on this one. DOBBS® hats, of course, are right up there with Stetson® and Mallory® in the annals of Hatdom.
In this brief blog post, we will comment on a seminal trademark case from 1933 that is a virtual classic trademark case discussing surnames as trademarks and the efficacy of disclaimers. For illustrative and fair use purposes only, several photos of a classic Dobbs® fedora hat and DOBBS® hat box are also included herein for your academic and scholarly attention.
This writer first became familiar with the famed Dobbs hat case in the Fall of 1990 while studying trademark law under the guidance of Adj. Professors Ray Geraldson and Mark V.B. Partridge at the John Marshall Law School in Chicago, Illinois, in the school's LL.M, Intellectual Property program. The DOBBS® Hat case was a case that was briefed and discussed early on that fall in the substantive course of Trademark Law. The case citation for this Dobbs matter is Hat Corp. of America v. D.L. Davis Corp., 4 F. Supp. 613 (D.Conn.1933) (hereinafter, DOBBS Case). In the Dobbs case, the court granted an absolute injunction forbidding the use of the name "Dobbs" on hats by the junior user. This extended even to a disclaimer proposed by the defendant. The disclaimer used by the defendant had been: "Not connected with the original Dobbs". But the Court reasoned that: "Confusion is created by the very explanation to avert confusion."
As for the particular facts of the case with respect to the plaintiff's prior rights to the DOBBS® trademark and the defendant's use of "Wm H. Dobbs" on the sweatbands of hats and on the hat boxes, the court stated: "The facts of the case at bar are such that Wm. H. Dobbs himself could not use the name "Dobbs" in the marking of hats publicly offered for sale or in advertising hats for sale, without deceiving and confusing the public to the plaintiff's damage."
The court then directed its attention to the disclaimer, referred to in this case as an "explanatory suffix", and whether its use would suffice to avoid the confusion. DOBBS was understood by all parties to be the surname of the founder of the Dobbs hat company (Dobbs & Co.), the predecessor in interest to the current plaintiff. With respect to the Dobbs surname, the court ruled: "The surname alone remains in the public mind as an identification mark about which cluster associated ideas such as quality and style in headgear. The name has become a purely impersonal symbol." The court further reasoned, with respect to the defendant's use of "Wm. H. Dobbs", that: Precisely the same images are evoked by the sight or sound of "Wm. H. Dobbs," and the effect is no different if followed by such a phrase as "not connected with the original Dobbs. For the eye of the purchaser, long taught to identify the product by the name Dobbs alone, promptly registers the identity as complete upon catching the surname without noticing and pondering the significance of initials or suffix." For this and like reasons, the court then reasoned: "Confusion is created by the very explanation intended to avert confusion."
(Photo of DOBBS® hat and hat box; Photo source: eBay)
The photo above shows the classic evidence of use of a trademark in connection with the sale of hats, e.g., on the hat box, and as seen in the photo below, in the lining on the inside of the hat.
(Photo of underside of DOBBS® hat which shows the use of the trademark, DOBBS®, on the inner lining; Photo source: eBay).
Finally and notably, the court was so convinced of the likelihood of confusion that it issued a very expansive and exacting injunction, as follows: "...that an injunction may issue against this defendant, without the limitations to which Wm. H. Dobbs would be entitled, wholly restraining it from all use whatsoever of the name "Dobbs," whether refixed by initials or given names, or suffixed by explanations, either imprinted on any hats which it manufactures or sells or offers for sale, or on the containers thereof, or in advertising the same or otherwise in connection with its operations in the manufacture, distribution, and sale of hats."
Postscript: Attached hereto is one of the long standing and renewed DOBBS® registration records from uspto.gov. Interestingly, a few of the original registrations have been cancelled for failure to renew. Nevertheless, use seems to date back to as early as 1908 for this famous DOBBS® hat trademark.
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Until next time,....please remember:
TrademarkEsq is here for you !
William E. Maguire, Esq.
Los Angeles, Calif.
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