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NATURAL FOOTWEAR LTD. v. HART, SCHAFFNER & MARX

Nos. 83-5883, 84-5002.

760 F.2d 1383 (1985)

NATURAL FOOTWEAR LIMITED, A Corporation of the Province of Ontario Canada, v. HART, SCHAFFNER & MARX, a New York Corporation, and Roots, Inc., a New Jersey Corporation. ROOTS, INC., A New Jersey Corporation, Counterclaimant, v. Don GREEN and Michael Budman, Individuals, and Natural Footwear Limited, a Corporation of the Province of Ontario, Canada, Counterdefendants. Appeal of NATURAL FOOTWEAR LIMITED, Don Green, and Michael Budman, Plaintiff and Counterclaim Defendants. NATURAL FOOTWEAR LIMITED, A Corporation of the Province of Ontario Canada, v. HART, SCHAFFNER & MARX, a New York Corporation, and Roots, Inc., a New Jersey Corporation. ROOTS, INC., A New Jersey Corporation, Counterclaimant, v. Don GREEN and Michael Budman, Individuals, and Natural Footwear Limited, a Corporation of the Province of Ontario, Canada, Counterdefendants. Appeal of HART, SCHAFFNER & MARX and Defendant-Counterclaimant Roots, Inc.

United States Court of Appeals, Third Circuit.

Decided April 19, 1985.

Rehearing Denied May 30, 1985.

As Amended May 31 and June 27, 1985.

Attorney(s) appearing for the Case

John T. Dolan (argued), Arnold B. Calmann, Crummy, Del Deo, Dolan & Purcell, Newark, N.J., Baker & McKenzie, Chicago, Ill., John T. Dolan, Newark, N.J., Horst H. Werder, Chicago, Ill., Richard S. Zackin, Arnold B. Calmann, Brian J. McMahon, Newark, N.J., Leslie Bertagnolli, Chicago, Ill., On the Brief, for Natural Footwear, Ltd., Don Green & Michael Budman.

W. Thomas Hofstetter (argued), Patricia S. Smart, Pattishall, McAuliffe & Hofstetter, Chicago, Ill., William J. Heller, Stryker, Tams & Dill, Newark, N.J., for Hart Schaffner & Marx, and Roots, Inc.

Before SLOVITER and BECKER, Circuit Judges, and FULLAM, District Judge.

OPINION OF THE COURT

BECKER, Circuit Judge.

This is a trademark infringement case in which two business concerns vie for the sole right to use the mark ROOTS for footwear and wearing apparel. Roots, Inc. ("Roots") is a northern New Jersey retail clothing operation which sells high quality clothing in several stores in northern New Jersey, and which has a scattering of mail order customers throughout the nation. Natural Footwear Limited ("Natural"), the other...

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