Lustberg, Kast & Company, I

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IN THE )IATTER OF LUSTBERG, KAST & COMPANY, I MODIFIED CEASE AXD DESIST ORDER Docket 2:;36. Orders anti optnion, ll/o 'cmber, 1954 Order modifying cease and desist order dated July 10, 1942, 35 1". T. C. 132, 139, which required respondent to cease using the term "Buck Skein" to describe any product not made from the skin of the deer or elk, by adding the provision that nothing therein "shall be construed to prohibit the respondent from using the words 'Buck Skein Brand' " '" '" for garments which neither simulate nor resemble leather llfr. Joseph Callaway for the Commission. Feinberg, JeTJ'Y Lewl of Platts burgh, N. Y. , and ilfr. l11a:rtin Whyman and Hays, St. John, Abramson Schulman of ew York City, for respondent.

ORDER RULIXG OK PETITION TO ::IQDIFY \.)m ::IODIFYING PAR.-I.GRAPH (1) OF THE ORDER OF JULY 10 , 1942 This matter coming on to be heard upon the petition filed on August , 1954, by the respondent requesting that Paragraph (1) of tho order to cease and desist as entered on .July 10, 19"12, be modified, and upon the answer of counsel on the Commission s staff interposing no objection to modification of such order; and The Commission having duly considered the matter and having determined, for the reasons set forth in the accompanying opinion that the re,sponclenfs request for modification of the order to cease and desist should be granteel and that the proceeding accordingly should be reopened for the pmpose of modifying Paragraph (1) of said order:

J t is ordered That the petition of the respondent be, and it hereby , granted.

It is That this proceeding be, and it hereby is, re- fllrther ordered opened solely for the purpose of modifying Paragraph (1) of the order to cease and desist.

It is That the order to cease and desist heretofore further ordered entered in this matter be, and it hereby is, l110dified by changing Paragraph (1) thereof to read as follows:

1. Using the tenn "Buck Skein " either alone or in conjunction with the outline of a deer s head, or any other colorable simulation of the word "buckskin " in advertising, or otherwise, to describe LUSTBERG, NAST & co., INC. 443 442 Opinion designate, or refer to any product which is not made from the skin of a deer or elk; provided, howe vel' that nothing herein shall be COllstrued to prohibit the respondent from using the words "Buck Skein Brand" on labels and in advertising for ga.rments which neither simulate nor resemble leather.

It is further 01'de1' That the General Counsel of the Commission , and he hereby is, authorized and directed to initiate proceedings appropriate in the light of the Commission s foregoing action, before the United Stales Court of Appeals for the Second Circuit. It is furthe1' m'del'ed That a. modified order to cea.se and desist incorporating the modification provided for be issued and served upon the respondent.

OPIXlOX OF THE COl\DIISSIO:! Pel' CrmA::'1 :

This matter is presented for our consideration upon the petition flled by the respondent. 011 August 18, 1954, requesting that Paragraph (1) of the order to cease and desist., heretofore issued by the Commission on J nly 10 , 1\)42, be modified, Sta.ff counsel have filed ails''-,er interposing no objectioll t.o modification to acc.ollpllsh the objectives and purposes expressed in the petition. The Ilrst paragraph of that order forbids use of tj'e tl:.ln "Buck Skein" either alone or in conjunction with t.he outlinp of the deer head or any ot.he.r colorable sirnulation of the word " buckskin " in advertising, or ot.herwise, to de-signate or describe any product not made from the skin of the decr or elk. The respondent requests that this particular provision be modified so that it \"in be permitteel to use thc expression "Bnc): Skein Brand" in connection \\ith the advertising andlnbeling of garments which (10 not sinmlate or resemble lmlther.

It appe.ars that the years since the Commission s order to cease and desist \,,as issued have seen various changes oecur in the re.spondents business. Yfhen the instant proceeding \,,as instituted, the respondent \yas engaged primarily jn producing rough garments used by ontdoor workers and others, and included jn its line were jackets made from it type of cotton \which: when processed, resemblec11eather; The company concp,ntrates now, ho\vcvcl', on manufaduring from text.ile fabric certain highly-styled leisure. and semi-dress \\"enr \yhieh it states are in a garment category often re.ferred to in the trade as country club:' clothing. Formerly a substantial part of respondent's volmne was distributed thronQ'h mail oreler channels. This 11ns been discontinued and the concern s products currently are sold through 444 FEDERAL TRADE COMMISSIO DECISIOXS Opinion 51 F. T. C.

retail stores in the course of over-the-counter transactions presenting opportunity for pre-purchase visual inspection of the merchandise. Furthermorc, the sale of the cotton jackets referred to above has been diseontinucd for more than a decade, and it additionally appears that no garments made of materials imulatillg least.her have been distributed during that period.

To be noted also in these connections, are certain advertising practices adopteel by the respondent pursuant to its report to the Commission respecting the manner in which it proposed to offer its products in the light of the order to cease and desist. Thereunder the respondent signified its int.e,nt.ion to use on packing Jabels a trademark containing the words ' Buck Skein ,Joe" with an outline of a cowboy s head appearing bebyeen the words "Buck" and "Skein. It also expressed intention similarly to use that lTHlrk on garment labels and in advertising and, in those connections, proposed additionally to refer to the person thus depicted as maker of the garments. Designating a homespun, philosophical character, t.he Dame "Buck Skein .Joe': was created to epitomize the company and had been featured in responde,nfs advertising lor llany years prior to that time. Information cont.ained in the petition suggests that, as a designation for the luore highly-styled merc.handise presently offered, this name and mark lack consumer appeal and, in instances, have even served to deter retail stores from handling the respondents garments. Since 1921, the respondent has expended very large sums in popularizing this mark and others used prior to its adoption. It is apparent, therefore, that hardship may be entailed if, in order to abandon use of the word " Toe, " the respondent ,were obliged, likewise, to discontinue its heretofore permitted use of other ,yards ('contained in that name. -ender its original decision, the Commission, in effect, found that the words "Buck Skein" constituted a distorted spelling of the word buckskin" a.nd that the use of the ,words "Buck Skein :' with or without the eleer s head in juxtaposition thereto, had the capacity and tendency to cause purchasers to believe that the respondent's products ,were made of leather or buckskin or possessed some of the latter prized qualities or characteristics. Under the manifest view that only excision of the name would adequately protect the public and competitors, the proscription directed to use of the term "Duek Skein;' as then adopted by the Commission, was an absolute prohibition. As stated by tho Commission, however, ill its recent decision in the matter of OountTY Tweeds, Inc. , et al.. Docket o. 59;-)7, every effort should be made in proceedings wllcrein deception is found to inhere in trade name to foll1ulate a remedy ,which will afford the public and LUSTBgRG, NAST & co. , IKC. 445 442 Order competitors reasonably accurate protection a,nd likewise avoid unnecessary hardship or loss to t.he owner of the name. If less drastic measures will suffice, these valuable business assets should be saved. In the light of our foregoing action and ,with due regard to the changed conditions of fact which appear here, we have concluded that the provisions of the order to cease and desist are unduly restrictive. ,Ve are of the view that adequate protection of the public and the respondent s competitors will be afforded if our order is modified to permit use by the respondent of the expression "Buck Skein Brand" to designate and refer to garments nowise rcsembling or simulating leather. 'Ye accord ingly are gl'fll1ting the petition. )fODIFIED ORDER TO CEASE AKD DESIST This proceeding was heard by the Federal Trade Commission upon the record and the Commission, having made its findings as to the facts and its conclusion that the respondent had violated the provisions of thc Federal Trade Commission Act, issued its order to cease and desist on July 10, 1942. Thereafter, the respondent fied its petition for review of such order in the United States Circuit Court of Appeals for the Second Circuit, and on Hay 29, 1944, pursuant to motion jointly filed by counsel, that Court entered its decree (hsmissing said petition for review and affrming a,nd enforcing the order to cease and desist.

On August 18, 1954, the respondent filed with the Commission a petition requesting modification of the said order to cease and desist and the Commission having duly considered and granted such petition and having issued its order reopening the proceeding and modifying the order to cease and desist in the respects set out therein, now issues this, its modified order to cease and desist: It is Ordered That respondent Lustberg, 1' ast & Company, Inc. a corporation, its offcers, directors, representatives, agents and employees, directly or through any corporate or other device, in connection with the offering for sale, sale and distribution of coats, shirts mackinaws, jackets, or other garments, in commerce as "commerce is defined in the Federal Trade Commission Act, do forthwith cease and desist from:

1. losing the term "Buck Skein " either alone orin conjunction with the outline of a deer s head, or any other colorable simulation of the ,vord "buckskjn " in advertising, or otherwise, to describe, designate, or refer to any" product which is not made from the skin of a deer or elk; provided, hrJ1L'ever that nothing herein shall be construed to prohibit the respondent from using the words "Buck Skcin Brand" 446 FEDEEAL TRADE COMMISSION DECISIOKS Order 51 F. T, C.

on labels and in advertising for garments which neither simulate nor resemble leather.

2. Representing directly or by implication in any advertisement or on labels, or otherwise, that any product made of wool or cotton or any other woven fabric is made of buckskin or other type of leather. It is further ordel'd That the respondent shall, within sixty (60) days after service upon it of this order, file with the Commission a report in writing, setting forth in detail the manner and form in which it has complied with this order.

ALL AME:RICAX SPORTSWEkR CO,) ll, , E'T AL. 447 Complaint