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THE LAW OF 
 
 UNFAIR COMPETITION 
 
 AND 
 
 TRADE-MARKS 
 
 WITH CHAPTERS ON 
 
 GOOD-WILL, TRADE SECRETS, DEFAMATION OP COMPETITORS 
 AND THEIR GOODS, REGISTRATION OF TRADE-MARKS 
 UNDER THE FEDERAL TRADE-MARK ACT, 
 PRICE CUTTING, ETC. 
 
 SECOND EDITION 
 
 BY 
 
 HARRY D. NIMS, M. A. 
 
 OF THE NEW YORK BAR 
 
 "The law ie not made for the protection of experts, but for the public, — that vast multi- 
 tude which includes the ignorant, the unthinking, and the credulous, who, in making 
 purchases, do not stop to analyze, but are governed by appearances and general impres- 
 donB." Coxe, J., in Florence Mfg. Co. v. Dowd, 178 Fed. 75. 
 
 NEW YORK 
 
 BAKER, VOORHIS AND COMPANY 
 
 1917 
 
Copyright, 1909 
 
 By 
 Harbt D. Nob 
 
 Copyright, 1917 
 
 By 
 Habbt D. Nims 
 
^/^■"t.'.t/r/^'x 
 
 INTRODUCTION TO SECOND EDITION 
 
 The law of Unfair Competition is a popular branch of the law. 
 It has a direct bearing on the Uves of most of us, and is of gen- 
 eral interest for that reason. It deals fimdamentally and spe- 
 cifically with one of the most important phases of everyday life,— 
 the struggle for a Uving. It is largely free from legal red tape and 
 technicality. It consists of one simple rule,—' ' Compete honestly ". 
 This rule is not a statute, the creation of a Congress or a Legis- 
 lature. It is a statement of the public sentiment of the day. The 
 old rules,— "He who buys must look out for himself," "Every- 
 thing goes in a trade," "Business is business,"— have been dis- 
 carded, and a better time has come. 
 
 This law is of general interest, too, because business is no longer 
 entirely in the hands of individuals. Our hfe depends more than we 
 sometimes appreciate, on great soulless, invisible and, to the aver- 
 age man, xm-understandable forces, which we call corporations. 
 In the past, there has been cause to fear them, and many instinc- 
 tively turn to the law for protection in their dealings with them. 
 Men believe they can deal personally and adequately with 
 a competitor who is a fellow-townsman, even though he has 
 great possessions, while they often feel helpless in a struggle with 
 a corporation. The demand upon the law to protect the small 
 business concern against oppressive competition has been persist- 
 ent in the past twenty-five years, and the rules of Unfair Compe- 
 tition Law form one of the principal answers of the courts to this 
 demand. 
 
 This law is of special interest to the lawyer and to the political 
 economist, because it has demonstrated that our courts of equity 
 can be depended upon to adjust the law to the vital needs of the 
 times. In Rome, the Prsetor, the forerunner of our equity judge, 
 sat at the city gate clothed with power to relieve the people in 
 cases where the rigorous judgments of the courts, which enforced 
 the letter of the law, worked needless hardships and injustice. 
 The equity judges of to-day, as they have built up the law of un- 
 fair competition in their decisions dealing with the hardships of 
 .modern trade, have shown the community that the great fimda- 
 
 iii 
 
iv Intboduction to Second Edition 
 
 mental rules of honesty and fair dealing are still the touch-stones 
 by which the relations of conunercial hfe are to be measured. 
 
 The law of Unfair Competition might well be called the book 
 of rules of the business game. It gives far greater protection 
 against unfair practices used in competition than is realized by the 
 average business man. It is still in its infancy. Its possibilities 
 of growth and effectiveness are almost unlimited. It started by 
 regulating only one unfair practice, viz: substitution, or the act 
 of offering or selling one brand of goods when the buyer has asked 
 for another brand. To-day its principles are being applied to 
 most commercial practices that are unfair, or, as the French law 
 terms it, disloyal. 
 
 The rules of Unfair Competition are not arbitrary pronounce- 
 ments of courts. The formulation of these rules has been an 
 almost spontaneous process, growing out of the discussion and 
 decision of cases where injustice and wrong have been suffered 
 because of the use of oppressive and unfair methods of competi- 
 tion. These cases have been decided, not by the application of 
 abstruse technical legal doctrines, but by the application of the 
 same simple standards of right and wrong that are recognized 
 and applied by the public in daily life outside the court house. 
 
 This law promises great things for the futiire of our business 
 life. When the great war ends, there is every reason to believe 
 that men will tiim to business problems with a clarified vision 
 of , right and fairness. When that time comes, there should 
 come with it a fairer chance for all. There should be cleaner, 
 "squarer" business (which, it is already being demonstrated, 
 can exist without curtailing our competitive system), and in our 
 commercial life of the future, this body of law should play a most 
 important and salutary part. 
 
 In preparing this edition, the book has been largely rewritten 
 and re-arranged. The two editions do not correspond as to sec- 
 tion or page numbers. 
 
 The author is greatly indebted to Oleon J. Sawyer, Esq., of the 
 New York bar, for many helpful suggestions regarding this book; 
 also to Clinton deR. Combes, Esq., and Frederick M. Herrick, Esq., 
 of the New York bar, for painstaking assistance in its preparation. 
 
 HARRY D. NIMS. 
 32 Nassau Street, New York. 
 
 July 26, 1917. 
 
INTRODUCTION TO FIRST EDITION 
 
 There is a maxim as old as law, that there can be no right 
 without a remedy, but it is equally true that men are constantly 
 acquiring new rights and new kinds of property almost unknown 
 to the law, and in lawful ways are putting themselves into new 
 positions, in which they soon suffer wrongs which the courts seem 
 powerless to prevent, or to end. It seems, sometimes, as if the 
 progress of the unscrupulous merchant and manufacturer in 
 inventing new schemes for filching away the trade of others un- 
 fairly, has been far more rapid than that of the courts in finding 
 ways of protecting the honest business man against such schemes. 
 But whatever has been the activity of these unscrupulous mem- 
 bers of the business community iti the last decade, during this 
 time very marked progress has been made by the law in develop- 
 ing rules and remedies relating to dishonest and unfair commer- 
 cial practices- 
 It is but a few years since cases involving applications for 
 relief against unfair dealing were indifferently classed as trade- 
 mark cases or injunction cases, or hidden away in digests under 
 headings most surprisingly disassociated from ideas conveyed 
 by the term Unfair Competition. Now we find that the phrases 
 "Passing Off," in England, "Concurrence Deloyale" in 
 France and "Unfair Competition" in America are recognized 
 legal terms, embracing rules of law appUcable to cases of this 
 character. 
 
 One reason for the growth of the law of unfair competition is 
 probably to be found in the effects of the delay incident to suits 
 at law for damages. Business lost and credit injured by mis- 
 representation or threats made by maUcious or unscrupulous 
 competitors, injury to brands of goods by the sale of inferior 
 imitations, injury to reputation by fraudulent use of the name 
 of a business house, — such losses cannot be compensated for 
 by damages recovered at the end of a tedious suit at law, occupy- 
 ing perhaps two or three years. Any adequate remedy' must 
 
vi Introduction to First Edition 
 
 stop the injurious acts instanter, and this can be afforded only 
 by use of the writ of injunction. 
 
 The law of unfair competition has developed in part also in 
 response to a general feeling that the honest and fair-dealing 
 merchant is entitled to the fruits of his skill and industry, and 
 must be protected against loss caused by fraudulent and unfair 
 methods used by business rivals. It is a recognition by the 
 courts of the duty to be honest and fair in all relations of business 
 life. This is one of the most healthful signs of the times. The 
 gradual judicial development of this doctrine is an embodiment 
 of the principles of sound common sense, business morality, 
 although it involves nice discriminations between what may and 
 what may not be done in honorable business rivalry. 
 
 Just what acts are to be included in the term competition it 
 is hard to state. Formerly, business houses made the favor of 
 the customer the principal object of their efforts. Now very 
 often the customer figures little — the struggle being to obtain 
 special privilege, monopoly or special rates, or to injure a com- 
 petitor by ousting him from some vantage ground he has gained, 
 or by inducing a breach of his contracts. All these acts are a 
 part of the struggle for commercial success. They are acts done 
 in business competition, and some of them are fair and honest 
 methods of business rivalry and some are not. No attempt is 
 here made to deal with all of them. But the fundamental rule 
 that in business rivalry, no unfair or dishonest methods shall be 
 tolerated, applies, on principle, to all of them. 
 
 Closely akin to the doctrines involved in the cases which are 
 now definitely classed as unfair competition cases, are many un- 
 decided questions of large moment, just now. The right of per- 
 sons, and especially corporations and associations, to compete 
 by trying to eliminate and efface rivals from the race; the right 
 of the multitude, acting in concert to do acts which are unques- 
 tionably the right of an individual acting alone to do; the legality 
 of acts (otherwise legal) which are done with the definite intent 
 to unfairly injure another but done merely as a part of the business 
 struggle to succeed and make money; these and many similar 
 problems are yet to be solved in the light of present-day con- 
 ditions. 
 
 Courts and legislatures cannot create fairness and honesty. 
 Men must be free to manage their business enterprises in their 
 
Introduction to First Edition vii 
 
 own way. There must be competition. It is said that the doc- 
 trine, long upheld by common law, that competition must be 
 free and unrestricted has brought about the very evil of monopoly 
 which the doctrine was aimed to prevent. Nevertheless, com- 
 petition cannot be abolished; and it will be a long time before 
 it ceases to play a very important and beneficial part in our 
 civihzation if its rules are founded in fairness and hpnesty. 
 
 Modern science has transformed into wealth much that in 
 former days was waste. Similarly, modern conditions have 
 given very great importance and value to parts of a business 
 which formerly were considered worthless. And now the question 
 is raised as to whether these new values are property, — the 
 sort of property which equity protects? If they are, then the 
 jurisdiction of our equity courts seems broader, in this respect, 
 than is usually recognized. 
 
 President Taft in his inaugural address in 1909, says: "The 
 proposition that business is not a property or pecuniary right 
 which can be protected by equitable injunction is utterly with- 
 out foundation in precedent or reason. The proposition is usually 
 linked with one to make the secondary boycott lawful. Such a 
 proposition is at variance with the American instinct, and will 
 find no support in my judgment when submitted to the American 
 people. The secondary boycott is an instrument of tyranny, 
 and ought not to be made legitimate." 
 
 In the following pages will be found references to the discus- 
 sion as to the power of equity to protect, not only the tangible 
 parts of a business, but also its intangible rights and properties. 
 The right decision of these questions is of far-reaching importance 
 to the manufacturer and trader to-day, for unless the writ of in- 
 junction is preserved in its present form, both labor, capital and 
 the general business world will lose their most effective bulwark 
 against unfair and dishonest business practices. 
 
 In compiling, arranging and interpreting the authorities in- 
 cluded, the writer has been very greatly aided by the able work 
 of Frederick M. Herrick, Esq., of the New York Bar, and he 
 wishes here to express his obligation to Mr. Herrick in that 
 regard. 
 
 This volume refers only to the American and English cases 
 and statutes. There are French statutes dealing with various 
 features of unfair competition and many decisions of French 
 
viii Introduction to First Edition 
 
 courts relating to it. It has been thoulght wise not to attempt 
 to treat them here, but instead to refer the reader for informa- 
 tion to such works as M. Pouillet's book, "Traite des Marques 
 de Fabrique et de la Concurrence Deloyale," Paris, 1906. 
 
 HARRY D. NIMS. 
 32 Nassau Street, New York. 
 April, 1909. 
 
TABLE OF CONTENTS 
 
 CHAPTER I 
 The Legal Doctrine op Unfair Competition 
 
 PAGE 
 
 Section 1. Unfair competition is not a subdivision of trade-mark law 1 
 
 2. Historical: early cases of unfair competition in America and England 4 
 
 3. The law of unfair competition curtails freedom of trade, but only 
 
 of trading that is unfair 11 
 
 4. Definitions of unfair competition 12 
 
 CHAPTER II 
 Basis of the Action for Unfair Competition 
 
 Section 5. Legal basis of the action for unfair competition 17 
 
 6. Grounds of the action for unfair competition , 18 
 
 7. Theory that the court acts to promote honesty and fair dealing. . . 18 
 
 8. Theory that the court aims to protect the purchasing public 18 
 
 9. Theory that the court aims to protect, not rights of the public, but 
 
 rights and property of individuals 21 
 
 10. Property rights in marks which are not technical trade-marks 23 
 
 11. Exclusive right to a name or mark not necessary to action 26 
 
 12. Geographic extent of trade rights based on priority 28 
 
 CHAPTER III 
 Good-Will 
 
 Section 13. Definitions of good-will 32 
 
 14. Elements of good-will ^ 35 
 
 15. Relation of good-will to trade-marks and trade insignia 35 
 
 16. Good-will protected by law of unfair competition 36 
 
 17. Good-will which is not transferable — artists, musicians, etc 37 
 
 18. Sale of good-will of entire property — rights of vendor 38 
 
 19. Presumption that no one intends to part with right to use his own 
 
 name 39 
 
 20. Name may be so sold as to preclude the owner from again using 
 
 it in the same business 39 
 
 21. Sale of business site; effect of, on names 42 
 
 22. Sale and license of trade-mark rights 45 
 
 23. Duty to prevent confusion resting on one who sells his business. . . 46 
 
 24. Transfer of portraits 47 
 
 25. Rights of a manufacturer as to his good-will in a name under which 
 
 his goods are sold, not by him, but by a customer of his 47 
 
 ix 
 
X Contents 
 
 FAOB 
 
 Section 26. Transfers in bankraptcy and in assignments for creditors 48 
 
 27. Rights of retiring stockholders and others in corporate names 50 
 
 28. Soliciting old customers 51 
 
 29. Sale of name or business by originator of an article 56 
 
 30. Effect of locality on transfers of a business ....:..,.' 57 
 
 31. Partners' rights in the partnership name, on dissolution 57 
 
 32. Dissolution by death of a partner. 60 
 
 33. Transfers by descent and rights of descendants 62 
 
 34. Transfer of secret formulae 64 
 
 35. Good-will, valuation of 64 
 
 CHAPTER IV 
 
 Secondaey Meaning 
 
 Section 36. General discussion 66 
 
 37. Statements of the general rule 67 
 
 38. Geographic limits in which secondary meaning is protected 72 
 
 39. Secondary meaning of trade phrases 75 
 
 40. Names of places 76 
 
 41. Existence of secondary meaning is a question of fact 77 
 
 42. Association of names with goods the identity of the makers of which 
 
 is unknown 77 
 
 43. Ten-year trade-mark law 78 
 
 CHAPTER V 
 
 Trade Names — General Principles 
 
 Section 44. Introductory . .-- 79 
 
 45. Business names as distinguished from marks, designs, devices, etc. 80 
 
 46. Difference between abstract names of objects and trade names. . . 81 
 
 47. Lord Kay's summary of the law of names 81 
 
 48. Names considered as transitory or personal and as local or fixed; 
 
 . . hotel names 82 
 
 49. Phrases such as "Formerly with" and "Successor to," etc 86 
 
 50. General or common names of an article and names descriptive of 
 
 construction necessary to it gg 
 
 51. Unfamiliar or scientific words used as names of goods 90 
 
 52. Artificial or made-up words 91 
 
 53. Names appealing to the eye as similar 93 
 
 54. Names idem sonans 95 
 
 55. Foreign words as names of goods 99 
 
 56. Abbreviation of names of goods — nicknames 100 
 
 57. Fraudulent use of coincidences in meaning of names 101 
 
 58. Numerals and letters as names of goods .., 103 
 
 59. Numerals and letters used to designate grade of goods 103 
 
 60. Numerals indicating source or origin 105 
 
 61. Initials as names of goods 106 
 
 62. Numerals used to designate series, etc 106 
 
Contents xi 
 
 PAGE 
 
 Section 63. Names of goods intended for export 108 
 
 64. Signs 109 
 
 65. Street addresses etc 112 
 
 66. Use of suffix "& Co.," etc 114 
 
 CHAPTER VI 
 
 Family Names or Surnames, as Trade Names 
 
 Section 67. Nature of the right in one's own name 116 
 
 68. The right of every man to use his own name in business: its charac- 
 
 ter, and misconceptions regarding it 117 
 
 69. Early cases dealing with the use of personal names 121 
 
 70. Explanatory phrases as a means of eliminating confusion in family 
 
 names 124 
 
 71. The inadequacy of the explanatory phrase rule 133 
 
 72. Acquired generic or secondary meaning of personal names 137 
 
 73. Family names as generic or general names of articles 143 
 
 74. Surnames used as abbreviations 146 
 
 75. Names made up of surnames qualified by other words or symbols. . 148 
 
 76. Surnames acquired otherwise than by descent 149 
 
 77. Voluntary change of personal name 151 
 
 78. Rights acquired by him who first uses a surname in business 152 
 
 79. Family names as corporate names 153 
 
 80. Rights of descendants to the family name used in business by an 
 
 ancestor 153 
 
 81. Prefixes, suffixes and first names 159 
 
 CHAPTER VII 
 
 Corporate Names 
 
 Section 82. Effects of a state charter on names of corporations 163 
 
 83. Effect of incorporation of a business on its right to its name 163 
 
 84. Foreign and domestic corporations — rights of, as to name 165 
 
 85. Right to name on dissolution 166 
 
 86. Names of charitable corporations 166 
 
 87. Incorporating under nickname of a rival 169 
 
 88. Abbreviations of corporate names 169 
 
 89. Affirmative duty to differentiate in choosing corporate names. . . . 171 
 
 90. Family names as names of corporations 172 
 
 91. What is evidence of fraud in use of a corporate name 177 
 
 92. Rights arising out of priority in use of corporate names 180 
 
 93. Use of term "works," "company," etc., by an individual or part- 
 
 nership ^°^ 
 
 94. Outgoing stockholders and employees 182 
 
 95. False or misleading use of corporate names 185 
 
 96. Names of unincorporated societies, clubs, etc 186 
 
 97. Names of fraternal societies 187 
 
 98. Similarity of corporate names, what is 187 
 
xii Contents 
 
 CHAPTER VIII 
 
 Geographical Names 
 
 PAOB 
 
 Section 99. Rule of priority 200 
 
 100. One of several who use a common geographic name may sue on 
 
 behalf of aU 200 
 
 101. Secondary meaning or association between the name and the lo- 
 
 cality which transforms a geographic name into a trade name. . 203 
 
 102. Extent of public knowledge of secondary meaning 205 
 
 103. Duration of ^user necessary to acquire secondary meaning 207 
 
 104. Degree of resemblance necessary 208 
 
 105. Geographical or place names which indicate origin and source 
 
 falsely 208 
 
 106. Residence in a locality does not give unlimited right to use the 
 
 name of the locality as a trade name 211 
 
 107. Relative location of plants of rivals — e£fect on names 212 
 
 108. Names of cities 213 
 
 109. Effect of moving a plant or business 216 
 
 110. Names of natural products 217 
 
 111. Geographical names which indicate a process of manufacture 219 
 
 112. Geographic names may be arbitrarily adopted as trade names. . . 223 
 
 113. Use of geographic names as trade-marks must be truthful 226 
 
 114. Geographical names which indicate quality as well as origin or 
 
 source 228 
 
 115. Secondary meaning of semi-geographiq names 230 
 
 CHAPTER rX 
 
 Deess of Merchandise 
 
 Section 116. Labels which are not strictly trade-marks are protected 234 
 
 117. Degree of similarity calculated to deceive 235 
 
 118. Mere diversity of color, not a controlling feature 236 
 
 119. Imitation of a single feature, such as color, form, etc 238 
 
 120. A collocation of features, which singly might be copied, is unfair 239 
 
 121. Resemblance in several features may be fair, if these features are 
 
 common to the trade 242 
 
 122. Remarks as to classification of the following cases of simulation 
 
 in dress or general get-up 244 
 
 123. Designs, devices, and figures 245 
 
 124. Signatures and initials 246 
 
 125. Reading matter on labels or circulars 247 
 
 126. Misleading use of a label proper in itself 248 
 
 127. Tobacco tags, and cigar bands, etc • 249 
 
 128. Wrappers, cartons, etc 250 
 
 129. Copying bottles used by competitor 251 
 
 130. Refilling containers that have been once used 253 
 
 131. Substitution by selling of inferior goods in dress of goods of a 
 
 higher grade 256 
 
 132. Get-up of wagons, buildings, etc 257 
 
Contents xiii 
 
 FAOB 
 
 Section 133. Labels 259 
 
 (a) Labels not registered or copyrighted are protected 260 
 
 (b) Features of an action as to label 260 
 
 (o) Kinds of labels 261 
 
 (d) Classification of label cases 261 
 
 I. Simulation of labels in which a name is the principal 
 
 feature 261 
 
 II. Cases involving label in which the salient feature is 
 a device or catchword, which is copied or simu- 
 lated 263 
 
 III. Cases in which there is no salient feature but the 
 
 whole get-up including the name is unfair 264 
 
 IV. Cases involving a general resemblance and also a 
 
 likeness in the name used in which relief was 
 
 denied 269 
 
 V. Cases involving no similarity in name but a re- 
 semblance in general appearance amounting to 
 
 unfair competition 270 
 
 VI. Cases not involving names, in which the general 
 
 likeness in get-up is not close enough to be unfair 273 
 
 CHAPTER X 
 
 Simulation op Articles Themselves 
 
 Section 134. Copying of features essential to construction 276 
 
 135. Copying distinguishing features as a whole 277 
 
 136. Copying the whole article — making a facsimile 278 
 
 137. Copying a single feature or part 284 
 
 138. Making repair parts for articles manufactured by others 285 
 
 139. Copying articles on which patents have expired 288 
 
 140. Copying the color of goods 292 
 
 CHAPTER XI 
 Tbade Secrets 
 
 SBXjnoN 141. Property in trade secrets 294 
 
 142. Protection of trade secrets 296 
 
 143. Injunctions against breach of contract by disclosure of secrets. . . 297 
 
 144. Is a secret a monopoly? 298 
 
 145. Conditional sale of goods made by secret formula; 299 
 
 146. Publication of a secret, what constitutes 299 
 
 147. Disclosure of a secret in court 301 
 
 148. Discovery of a secret by lawful means , 302 
 
 149. Violation of contract of employment by betrayal of secrets 303 
 
 150. Employees are bound by implied contract not to disclose secrets 306 
 
 151. Title to secrets discovered by employee as a part of his work. . . . 309 
 
 162. Unlawful secrets 312 
 
 153. Danger of injury to plaintiff by defendant's disclosures must exist 313 
 
 164. One who avails himself of a secret fraudulently disclosed may be 
 
 enjoined and held accountable for profits 314 
 
xiv Contents 
 
 PAGE 
 
 Section 155. Name of a jobber from whom goods are bought may be a trade 
 
 secret 314 
 
 166. Transfer of secrets 315 
 
 157. List of customers is secret property — no one may canvass them 
 
 except the owner of the list 316 
 
 168. Pleadings and practice; form of injunction 319 
 
 159. Defenses. 320 
 
 160. Duty of corporate oflScers as to trade secrets 320 
 
 161. Letters may be trade secrets 321 
 
 CHAPTER XII 
 
 Interference with a Competitor's Business and Contracts 
 
 Section 162. Action at common law based only on injury to one's trade or 
 
 business 323 
 
 163. Malice 329 
 
 164. Interference with business generally 333 
 
 165. Interfei^nce with contracts by third person enjoined 336 
 
 166. Interference with contracts with servants 338 
 
 167. Lumley v. Gye, and later cases 340 
 
 168. Causing breach of contracts for furnishing information 342 
 
 169. Causing breach of passengers' contracts with transportation 
 
 companies 343 
 
 170. What constitutes interference with contract 344 
 
 171. Justification of interference with contracts 350 
 
 172. Ignorance of the existence of the contract is no defense against 
 
 an injunction 351 
 
 172a. Procuring breach of contract not to re-enter business 351 
 
 173. Position of New York courts 352 
 
 174. Conditional contracts — inducing breach of manufacturers' con- 
 
 tracts with retailers 355 
 
 176. Inducing breach of contracts for sale of goods made by secret 
 
 process 357 
 
 176. Interference with proposed or prospective contracts 361 
 
 177. What interference with another's business in general is legitimate 364 
 
 178. Tortious interference with another's business generally 367 
 
 179. Interference with salesmen of a competitor 368 
 
 180. Interference by false representations and threats 368 
 
 181. Interference by bringing a multiplicity of suits 369 
 
 182. Stimulated competition 369 
 
 183. Interference with employment, actual or prospective 371 
 
 184. Damages 372 
 
 CHAPTER XIII 
 
 Trade-Marks — General Principles 
 
 Section 185. Marks, trade-marks and trade names 373 
 
 186. Definitions of a trade-mark 375 
 
 187. Functions of a trade-mark 37g 
 
 188. Nature of a trade-mark 377 
 
Contents xv 
 
 PAGE 
 
 Section 189. Essential elements of a technical trade-mark 379 
 
 190. Non-essentials of a trade-mark 380 
 
 191. Features of the dress or appearance of goods cannot ordinarily 
 
 become technical trade-marks 380 
 
 192. Products to which a trade-mark may be applied 381 
 
 193. Marks indicating the selector not maker of goods 381 
 
 194. Several trade-marks for the same goods 382 
 
 195. Must be affixed to goods ' 383 
 
 196. The use of a sign or word as a trade-mark must not be against 
 
 public policy 384 
 
 197. Various classifications of trade-marks 386 
 
 198. Distinction between trade-marks and trade names 386 
 
 199. Difference between trade-marks and trade names not one of 
 
 underlying principle, but of degree and method of proof. . 389 
 
 CHAPTER XIV 
 What Mat be Appropriated as a Trade-Mark 
 
 Section 200. The general principle 391 
 
 201. Descriptive words not appropriable 392 
 
 202. Invented or fanciful words 396 
 
 203. Common words used in an arbitrary sense 397 
 
 204. Words indicating quality, superiority, etc 398 
 
 205. Geographical or place names 399 
 
 206. Personal or family names 403 
 
 207. Names of patented articles 404 
 
 208. Foreign words. 405 
 
 209. Letters of the alphabet 406 
 
 210. Numerals 407 
 
 CHAPTER XV 
 
 Acquisition op Technical Trade-Marks 
 
 Section 211. Introductory 409 
 
 212. Who may acquire a trade-mark 409 
 
 213. Rights of foreigners 410 
 
 214. How a trade-mark may be acquired 410 
 
 215. Adoption of a trade-mark 411 
 
 216. Priority of use against priority of invention 412 
 
 217. Priority and exclusiveness of use 413 
 
 ''18. Length, extent and manner of use 414 
 
 219. Change in goods to which trade-mark is applied 416 
 
 220. Territorial extent of technical trade-mark rights 417 
 
 221. Trade-mark protection limited to goods of the same class 420 
 
xvi Contents 
 
 CHAPTER XVI 
 
 Registered Teade-Marks Under the U. S. Trade- 
 Mark Act 
 
 FAGB 
 
 Section 222. Introductory 423 
 
 223. Advantages of registration 424 
 
 224. History of U. S. trade-mark legislation; constitutionality 426 
 
 225. Registration by owners 426 
 
 226. Declaration 429 
 
 227. Designation of agent by non-residents 431 
 
 228. Foreign applicants 431 
 
 229. Unregistrable trade-marks 432 
 
 230. Who may oppose 448 
 
 231. Interference 451 
 
 232. Appeals to the commissioner 453 
 
 233. Appeals to the courts 454 
 
 234. Assignment of trade-mark 454 
 
 235. Certificates of registration 455 
 
 236. Period of protection 456 
 
 237. Cancellation of registration 456 
 
 238. Fees 457 
 
 239. Repayment of fees 458 
 
 240. Liability for infringement 458 
 
 241. Jurisdiction of the courts 460 
 
 242. Appeals to the United States supreme court 461 
 
 243. Scope of court's powers 462 
 
 244. Court may destroy infringing marks 462 
 
 245. Trade-marks fraudulently used 463 
 
 246. Cancellation of the registration of a trade-mark by a court in an 
 
 equity suit 464 
 
 247. Effect of the act on prior rights 464 
 
 248. Pending applications 465 
 
 249. Registration fraudulently procured 465 
 
 250. Rules for conducting proceedings 465 
 
 251. Importation of articles bearing infringing marks 466 
 
 252. Notice of registration 467 
 
 253. Definitions 4gg 
 
 254. When act takes effect 468 
 
 CHAPTER XVII 
 Disparagement of Rivals and Their Goods 
 
 Section 255. English procedure statutes as related to injunction 471 
 
 256. Did equity have jurisdiction to enjoin libels prior to the act of 
 
 18737 472 
 
 257. Summary of English ca.ses 475 
 
 258. Importance of this question in United States 477 
 
 259. Difference between trade libel and personal libel 477 
 
 260. American cases 479 
 
 261. The case of Kidd v. Horry 483 
 
Contents xvii 
 
 PAGE 
 
 Section 262. The general American rule 485 
 
 263. Qualification of rule 486 
 
 264. Right to restrain issuing of circulars to customers — case of 
 
 Emack v. Kane 488 
 
 265. Theory that threats of prosecution must be shown to warrant is- 
 
 suance of injunction 491 
 
 266. Intent to intimidate customers, not to fairly warn them, is a neces- 
 
 sary element of this kind of proceeding to enjoin 493 
 
 267. Circulars giving notice of pendency of suit for unfair competition 
 
 are legal ; 496 
 
 268. Trade libels not libelous per se 496 
 
 269. Preliminary injunction should issue, when the plaintiff's right is 
 
 so clear as to be practically, or is actually (as by demurrer) 
 conceded 500 
 
 270. False representations regarding a competitor which are not libelous 501 
 
 271. Statutes as to libels do not oust equity of jurisdiction 504 
 
 CHAPTER XVm 
 
 Unfair Competition in the Use of Literary Property 
 
 Section 272. Copyright 509 
 
 273. Publication 510 
 
 274. Trade-mark rights arising in connection with hterary property. . 512 
 
 275. Analogy between actions for unfair competition and infringement 
 
 of copyright 513 
 
 276. The doctrine of unfair competition as applied to literary property 514 
 
 277. Unfair competition in connection with books and book titles. . . . 517 
 
 278. Unfair competition in connection with plays and play titles 528 
 
 279. Names of newspapers and magazines 535 
 
 280. Comic strips 541 
 
 281. Use of an author's name 543 
 
 282. Jurisdiction 545 
 
 CHAPTER XIX 
 
 Miscellaneous Forms op Unfair Competition 
 
 Section 283. Confusing uses of the term "Unfair Competition" by the courts. 547 
 
 284. Acts contributory to unfair acts 548 
 
 285. Disparagement of a competitor or his goods 550 
 
 286. Disparagement, not of the goods of a specific competitor, but of 
 
 the article sold by a number of competitors 550 
 
 287. Obstruction of a competitor's customers 550 
 
 288. Mis-use of term "Sole Proprietor" 551 
 
 289. Unfair appropriation and use of a competitor's ideas and methods 552- 
 
 290. Use of false advertising 556 
 
 291. Advertising, appropriation of, by a competitor 556 
 
 292. Solicitation of customers 558 
 
 293. Signs; misuse of those of a competitor 560 
 
 294. Bribery as a means of competition 660 
 
 295. Injuring a rival by pretended business competition 560 
 
xviii Contents 
 
 paoe: 
 Section 296. Paaaing off the goods of a third party 561 
 
 297. Sale of inferior goods, or seconds, as usual quality 663 
 
 298. Use of prices to inflict definite injury on a competitor 564 
 
 299. The use of prices, for advertising purposes or as a decoy 565 
 
 300. Unfair use of price as a means of competition 567 
 
 301. Local price cutting , 567 
 
 302. Where the use of cut prices accompanies unfair or inaccurate 
 
 description of goods 567 
 
 303. Competition by unfair comparison of prices 568 
 
 304. Corporate stock; acquiring for purpose of unfair competition. . . . 568 
 
 305. Inducing breach of contract by offers to save harmless 568 
 
 CHAPTER XX 
 
 Pleading 
 
 Section 306. Joinder of causes of action 570 
 
 307. Allegations on information and belief 571 
 
 308. Allegations by way of recital 571 
 
 309. Facts, not conclusions, to be alleged 571 
 
 310. Certainty and particularity 572 
 
 311. Jurisdictional facts 573 
 
 312. Answer 574 
 
 313. Essential allegations 575 
 
 314. What allegations held sufficient 575 
 
 315. What allegations held insufficient 576 
 
 316. What questions may be raised by demurrer 576 
 
 317. As to pleading the defense of "unclean hands" 577 
 
 CHAPTER XXI 
 
 Evidence 
 
 Section 318. Intent of defendant 580 
 
 319. Difference between proof of cases involving a fanciful name, or 
 
 mark, and one involving secondary meaning 581 
 
 320. Evidence connected with comparison of names or marks used by 
 
 the parties — similarity 581 
 
 321. What is similarity? 581 
 
 322. Test of similarity is general impression made, not detailed ex- 
 
 amination 582 
 
 323. Similarity does not mean exact likeness 584 
 
 324. Care used by average buyer of the class of article in question must 
 
 be considered 535 
 
 325. Character of the article, and the habits and intelligence of the 
 
 consumer 586 
 
 326. Side by side comparison in the court room is not a proper final 
 
 test of similarity 588 
 
 327. Evidence that the proportion of buyers of any article likely to be 
 
 deceived by defendant's acts is small, is not a defense 590 
 
 328. Imitation of salient features 59O 
 
 329. Necessary physical requirements of the article must be considered 591 
 
Contents xix 
 
 PAOE 
 
 Section 330. Distance between competitors a factor in deciding as to similarity 592 
 
 331. Deceit of ultimate purchaser, not of middleman, is the important 
 
 consideration 593 
 
 332. Similarity of color, shape, size, etc 594 
 
 333. Similarity of names 595 
 
 334. Evidence to prove secondary meaning 596 
 
 335. Proof of instances of actual bona fide deceit of purchasers 601 
 
 336. Burden of proof 602 
 
 337. Evidence of investigators employed by plaintiff 603 
 
 338. Loss of business by complainant as evidence 604 
 
 339. Time — presumption of continuance 604 
 
 340. Judicial notice 605 
 
 341. Weight and credibility of evidence 605 
 
 342. Discovery and examination before trial 605 
 
 343. Evidence of acts of employees 605 
 
 344. Evidence of registration, effect of 606 
 
 345. Evidence as to use of a trade-mark 606 
 
 346. Inferences and presumptions 607 
 
 CHAPTER XXII 
 
 Intent to Defeaud — Must It Be Pboved? 
 
 Section 347. Question of intent is a plea raised by defense 609 
 
 348. Division of cases as regards intent 610 
 
 349. Cases holding that intent is immaterial 611 
 
 350. Summary of English rule as to proof of intent 615 
 
 351. American cases as to necessity of proof of intent : . . . . 615 
 
 352. First user of a mark, rights of, arising out of priority 620 
 
 353. Denial of intent will not avail defendant 622 
 
 354. The action for unfair competition is based on injury to the plain- 
 
 tiff, not on the intent of the defendant to injure the plaintiff. . . 623 - 
 
 355. Proof of specific orders to his agents and servants to act fairly 
 
 will not excuse defendant 624 
 
 356. Actual injury to plaintiff by defendant must be imminent 624 
 
 357. Unimportant facts not a basis of presumption of intent to defraud 625 
 
 358. Fraudulent intent may be presumed 625 
 
 359. Presumption of fraud may arise from similarity of name or get-up 626 
 
 360. Presumption of fraud arises from so selling goods that vendees 
 
 may pass them off fraudulently 629 
 
 361. Presumption may be based on manner in which the truth is told. . 631 
 
 CHAPTER XXIII 
 
 Remedies 
 
 Section 362. Manufacturers' responsibihty to consumers for defective goods. . 635 
 
 363. Jurisdiction of courts in unfair competition cases 636 
 
 364. Parties 637 
 
 365. Injunctions before any act committed — bills in the nature of 
 
 quia timet 639 
 
XX Contents 
 
 PAGE 
 
 Section 366. Preliminary injunctions 641 
 
 367. Final injunctions — general considerations 648 
 
 368. The court does not pass upon the measures adopted by the de- 
 
 fendant to correct his unfair acts 649 
 
 369. Decree correcting a confusing use of names and signs 651 
 
 370. Injunctions against use of color, size, form, etc 652 
 
 371. Injunctions against use of family name 653 
 
 372. Voluntary discontinuance of infringing acts — effect of 654 
 
 373. Injunction against the use of the name of a former partner or 
 
 former member of a corporation 655 
 
 CHAPTER XXIV 
 Defenses 
 
 Section 374. The defense that the plaintiff and defendant are not in competi- 
 tion with each other 658 
 
 375. The defense that the name, mark, form, shape, or other device in 
 
 question has not been exclusively used by complainant, but is in 
 common use 659 
 
 376. The defense that the defendant's article is as good as the plaintiff's 661 
 
 377. The defense that the defendant has no intent to pass off his goods 
 
 as plaintiff's goods 662 
 
 378. The defense that the goods were not marked with any spurious 
 
 marks or names 662 
 
 379. The defense that defendant's marks differ sufficiently from com- 
 
 plainant's to be capable of registration as distinct marks 663 
 
 380. The defense that representations objected to by plaintiff are true 663 
 
 381. The defense that the deception is due not to the defendant, but to 
 
 a jobber or retailer or other purchaser from the defendant 664 
 
 382. The defense that defendant was only the maker of the label or 
 
 container complained of, and was not responsible for its ulti- 
 mate use by him for whom it was made 667 
 
 383. The defense that defendant was acting only as agent for another, 
 
 and received none of the profits 667 
 
 .__ .—384. The defense that complainant's title was not properly established 668 
 
 385. The defense that the offense is too trivial for the court to notice. . 668 
 
 386. The defense that plaintiff's goods are worthless, or useless 669 
 
 387. The defense that defendant's name is two or more words, while 
 
 plaintiff's is one and hence different 669 
 
 388. The defense that plaintiff has acted unfairly toward third persons 
 
 not connected with the suit at bar 669 
 
 389. The defense that plaintiff is an impostor and deluding the public 669 
 
 390. The misrepresentation must be as to the subject-matter of the suit 670 
 
 391. The defense that plaintiff is making misrepresentations in his 
 
 own business 671 
 
 392. Misrepresentation usually but not always an affirmative defense 672 
 
 393. Misrepresentations by plaintiff discontinued before suing 673 
 
 394. Misrepresentations must be intentional and material 674 
 
 395. Misrepresentations as to ingredients, and the nature and effect 
 
 of a medical preparation 675 
 
Contents xxi 
 
 PAGE 
 
 Section 396. Misrepresentations must be as to ingredients that are material . 680 
 
 397. Extravagant claims as to efficacy of medicines 680 
 
 398. Misrepresentations as to manufacture, place of manufacture, 
 
 origin of goods, etc { 681 
 
 399. Misrepresentation as to maker of goods 684 
 
 400. Continuing use of name of predecessor 685 
 
 401. Misrepresentation as to unessential details 686 
 
 402. Misrepresentations implying claim 6f monopoly — use of term 
 
 "Patented" 687 
 
 403. Misrepresentation by use of the term "Copyrighted" or "Regis- 
 
 tered" 690 
 
 404. Misrepresentation by laudatory expressions and exaggerated trade 
 
 phrases 691 
 
 405. Miscellaneous cases of misrepresentation deemed harmless 694 
 
 406. Claiming falsely to be a corporation 694 
 
 407. Use of term "established in" 695 
 
 408. Abandonment 695 
 
 409. Kinds of laches 699 
 
 410. Laches, in the sense of mere delay 700 
 
 411. First user of mark may revoke license implied from laches 701 
 
 412. No presumption of acquiescence arises from an exclusive right . . . 703 
 
 413. Material delay bars right to an accounting of profits 703 
 
 414. Laches may bar right to order for destruction of offending goods 704 
 
 415. Laches which bars right to preliminary injunction 705 
 
 416. Acquiescence in the sense of inaction upon which others have the 
 
 right to rely 706 
 
 417. Test by which to determine acquiescence 708 
 
 418. Defense that plaintiff violated some federal statute regarding re- 
 
 straint of trade, or monopoly 710 
 
 CHAPTER XXV 
 
 Profits and Damages 
 
 Section 419. Damages recoverable in unfair competition cases 711 
 
 420. Confusion as to right to profits as distinguished from damages. . 712 
 
 421. Adequate compensation to the plaintiff is the purpose of the court 
 
 in granting profits and damages 713 
 
 422. Damage to reputation of product to be reckoned as well as loss 
 
 of profits ''^'^ 
 
 423. Deduction of defendant's expenses from profits 718 
 
 424. When an account will not be ordered 720 
 
 425. Profits given to plaintiff may be limited to those resulting from 
 
 defendant's fraud 723 
 
 426. What profits may be recovered 724 
 
 427. Rules for determining what are and are not profits 729 
 
 428. When laches will bar an accounting 732 
 
 429. Notice of infringement ■ • J^ 
 
 430. Damages in suits at law for unfair competition • ■ 734 
 
 431. Good faith as an excuse for relieving defendant from paying 
 
 damages 7^5 
 
 Appendix. United States Trade-Mark Laws 737 
 
TABLE OF CASES 
 
 A 
 
 PAGE 
 
 Accident Ins. Co., The, Ltd. v. The Accident, Disease and General Ins. Corp., 
 
 Ltd., 61 L. T. Rep. N. S. 597-1884 180 
 
 ActiengeseUschaft, V. U. F. v. Amberg, 109 Fed. 151-1901 (C. C. A. 31 Cir.). . 698 
 
 Adams, Matter of, 24 Misc. (N. Y.) 293-1898, 53 N. Y. Supp. 666 50 
 
 Adriance, Piatt & Co. v. National Harrow Co., 121 Fed. 827-30-1903 (C. C. 
 
 A. 2d Cir.), 58 C. C. A. 163, 49 L. R. A. 755 493, 495, 501 
 
 Aiello V. Montecalfo, 21 R. I. 496-1899 187 
 
 Ainsworth v. Walmsley, L. R. 1 Eq. 518-1866 40, 611 
 
 Alaska Packers' Assn. v. Admiralty Trading Co., 43 App. D. C. 198 461 
 
 Alaska Packers' Assn. v. Alaska Improvement Co., 60 Fed. 103-1894 (C. C. 
 
 N. D. Cal.) 218, 681 
 
 Albany Perforated Wrapping Paper Co. v. John Hoberg Co., 102 Fed. 157- 
 
 1900 382 
 
 Albright v. Teas, 37 N. J. Eq. 171 309 
 
 Alden, Ex parte, 131 O. G. 2419 438 
 
 Alden v. Gross, 25 Mo. App. 123-1887 385, 676 
 
 Alexander Bros. v. Morse, 14 R. I. 153-1884 95 
 
 Alff,& Co. V. Radam, 77 Tex. 530-1890, 14 S. W. 164, 9 L. R. A. 145n. See 
 
 also 81 Tex. 122-1891, 16 S. W. 990 15, 16, 396 
 
 Alger V. Thatcher, 19 Pick. 51 309 
 
 Allegretti V. AUegretti Chocolate Cream Co., 177 111. 129-1898, 52 N. E . .41, 184, 621 
 Allegretti Chocolate Cream Co. v. Keller, 85 Fed. 643-1898 (C. C. S. D. 
 
 N. Y.) 643, 645 
 
 Allegretti Chocolate Cream Co. v. Rubel, 83 111. App. 558-1898 485, 491 
 
 Allen V. Flood, App. Cas. 1-1898. . . .325, 326, 327, 329, 331, 338, 353, 355, 357 
 
 Allen V. Walker & Gibson, 235 Fed. 230 393 
 
 Allen V. Walton Wood & Metal Co., 178 Fed. 287 572 
 
 Allen & Wheeler Co. v. Hanover Star Milling Co., 240 U. S. 403-1916 30 
 
 Allison V. Chandler, 11 Mich. 554 728 
 
 Aluminum Cooking Utensil Co. v. National Aluminum Works, 226 Fed. .. 815 394 
 
 American Brewing Co. v. Bienville Brewery, 153 Fed. 615 396 
 
 American Brewing Co. v. St. Louis Brewing Co., 47 Mo. App. 14-1891 664 
 
 American Chicle Co. v. W. J. White Chicle Co., 196 Fed. 977 248 
 
 American Circular Loom Co., In re, 28 App. D. C. 450 436 
 
 American Clay Mfg. Co. of Pa. v. American Clay Mfg. Co. of N. J., 198 Pa. 
 
 St. 189-1901, 47 Atl. 936 164, 610 
 
 American Fibre Chamois Co. v. De Lee, 67 Fed. 329 395 
 
 American Glue Co., In re, 27 App. D. C. 391 434 
 
 American Grocer Publishing Assn. v. The Grocer Publishing Co., 25 Hun 
 
 (N. Y.), 398-1881 98, 535 
 
 American Grocery Co. v. Sloan, 68 Fed. 539 397 
 
 American Law Book Co. v. The Edward Thompson Co., 41 Misc. (N. Y.) 
 
 396-1903, 84 N. Y. Supp. 225 335, 354 
 
 xxiii 
 
xxiv Table of Cases 
 
 FAQB 
 
 American Lead Pencil Co. v. Gottlieb & Sons, 181 Fed. 178-1910, C. C. S. 
 
 D. N. Y 448, 606 
 
 American Malting Co. v. Keitel, 209 Fed. 351 (CCA.) 337, 485, 486 
 
 American Order of Scottish Clans v. Merrill, 151 Mass. 558, 8 L. R. A. 
 
 320-1890, 24 N. E. 918 172 
 
 American Solid Leather Button Co. v. Anthony, 15 R. I. 338-1886, 5 Atl. 
 
 626 104, 383, 408 
 
 American Specialty Co. v. CoUis Co., 235 Fed. 929 606 
 
 American Stay Co. v. Delaney, 211 Mass. 229-1912 311 
 
 American Stove Co. v. Detroit Stove Works, 31 App. Cas. D. C. 304- 
 
 1908 437, 605, 607 
 
 American Tin Plate Co. v. Licking Roller Mill Co., 158 Fed. 690-1902 (C 
 
 C. Ky.) 106, 406 
 
 American Tobacco Co. v. Werckmeister, 146 Fed. 376, aff'd 207 U. S. 284 511 
 
 American Tobacco Co. v. Polacsek, 170 Fed. 117-1909 394, 395, 421 
 
 American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85- 
 
 1899, 53 N. E. 141, 43 L. R. A. 826 200, 620 
 
 American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281-1900 (O. C A. 
 
 6th Cir.), 50 L. R. A. 609 21, 22, 23, 24, 392, 412, 675, 601 
 
 American Wine Co. v. Kohlman, 158 Fed. 830-1907 (C C. Ala.) 172, 400 
 
 Amoskeag Mfg. Co. v. Gamer, 56 Barb. 151 421 
 
 Amoskeag Mfg. Co. v. Garner, 54 How. Pr. (N. Y.) 297-1876. 227, 703 
 
 Amoskeag Mfg. Co. v. Spear, 2 Sandf. (N. Y.) 599-1849. . . 6, 235, 391, 396, 701, 702 
 
 Angers v. Le Prohon, Rap. Jud. Quebec,- 22 S. C 170 623 
 
 Angler v. Webber, 14 Allen (Mass.), 211-1867, 92 Am. Dec. 748 47, 52 
 
 Angle V. Chicago, St. Paul, etc., Ry. Co., 151 U. S. 1-1893, 38 L. ed. 65, 14 
 
 Sup. Ct. 240 327, 336, 338, 343, 347, 363 
 
 Anglo-Swiss Milk Co. v. Metcalf, 3 R. P. C 28 101 
 
 Anheuser-Busch Brew. Assn. v. Clarke, 26 Fed. 410-1886 (C C Md.) 264 
 
 Anheuser-Busch Brewing Assn. v. Fred Miller Brewing Co., 87 Fed. 864 (Cir. 
 
 Ct. E. D. Wis. 1898) 219 
 
 Anheuser-Busch Brewing Assn. v. Piza, 24 Fed. 149-51-1886 215 
 
 Anti-Cori-Zinc Chemical Co., Iji re, 34 App. D. C. 191 436 
 
 Apollinaris Co., Ltd., v. Scherer, 27 Fed. 18-1886 (C C S. D. N. Y.) 366, 368, 
 
 686 
 
 Apollo Bros. V. Perkins, 207 Fed. 630 (C C A.) 400, 401, 440 
 
 Armington & Sims v. Palmer, 21 R. I. 109-1898, 42 Atl. 308, 43 L. R. A. 95. . 49 
 
 Armstrong v. Klemhans, 82 Ky. 303-1884, 56 Am. Rep. 894 206 
 
 Armstrong Cork Co. et al. v. Ringwalt, 235 Fed. 458 550 
 
 Armstrong v. Savannah Soap Works, 53 Fed. 124-1892 (C C. Ga.) 637 
 
 Armstrong Seatag Corporation v. Smith's Island Oyster Co., 224 Fed 100 
 
 (CCA., 2d Cir.) ;.... 250 
 
 Army and Navy Co-operative Society v. Army, Navy and Civil Service Co- 
 operative Society of South Africa, Ltd., 19 R. P. C 574-76-1902 696 
 
 Aronson v. Fleckenstein, 28 Fed. 75 52g 
 
 Artesian Mfg. Co., In re, 37 App. D. C 113 43g 
 
 Asbestone Co. v. Carey Mfg. Co., 41 App. D. C 607 45q 
 
 Ashley V. Dkon, 48 N. Y. 430-1872 .' ' '335,' 352_ 353 
 
 Astor V. West 82d St. Realty Co., 167 App. Div. 273 533 
 
 Atkins & Co., In re, 29 App. D. C 385 429 454 
 
 Atkins Co. v. Moore, 212 U. S. 285 .'454 
 
Table op Cases xxv 
 
 PAQB 
 
 Atlantic Milling Co. v. Rowland, 27 Fed. 24 716, 725 
 
 Atlas Mfg. Co. V. Street & Smith, 204 Fed. 398-1913 428, 513, 515, 522 
 
 Atlas Underwear Co. v. Cooper Underwear Co., 210 Fed. 347 495 
 
 Ault & W. Co. V. Cheshire, 191 Fed. 741 393 
 
 Automatic Recording Safe Co. v. Bankers' Registering Safe Co., 224 Fed. . . 506, 394 
 
 AvenariuB v. Komely, 139 Wis. 247-1909 397, 405, 410, 697 
 
 Avery & Sons v. Meikle & Co., 81 Ky. 73-84-1883 27, 107, 286 
 
 Avery & Sons v. Meikle, 85 Ky. 435 716 
 
 Ayer v. HaU, 3 Brewst. (Pa.) 509-1871 41 
 
 B 
 
 Badische Anilin & Soda Pabrik v. Klipstein & Co., 125 Fed. 643 581 
 
 Baglin v. Cusenier Co., 141 Fed. 497-1905 (C. C. A. 2d Cir.) 643 
 
 Baglin, A. L., v. The Cusenier Co., 164 Fed. 25 (C. C. A., 1908) 301 
 
 Baglin v. Cusenier Co., 156 Fed. 1016; see same case 221 U. S. 580 402, 410, 
 
 414, 440, 696 
 
 Bailly v. Nashawannuck Mfg. Co., 10 N. Y. Supp. 224 396 
 
 Baker, Walter, & Co. v. Baker, 77 Fed. 181-1896 126, 160, 401 
 
 Baker, Walter, & Co. v. Baker, 87 Fed. 209-1898 (C. C. S. D. N. Y.) 649 
 
 Baker, Walter, & Co. v. Delapenha, 160 Fed. 746 410, 412, 414, 415 
 
 Baker, Walter, & Co., Ltd., v. Gray, 192 Fed. 921 127, 562 
 
 Baker Co., Walter, v. Harrison, 32 App. D. C. 272 437 
 
 Baker v. Sanders, 97 Fed. 948-1899 (C. C. E. D. Pa.) 127, 642 
 
 Baker, Walter, & Co. v. Sanders, 80 Fed. 889-1897; (2d Cir.), 26 C. C. A. 
 
 220 126, 668 
 
 Baker, Walter, & Co. v. Slack, 130 Fed. 514-1904 (65 C. C. A. 138, 7th Cir.) 
 
 127, 136, 204, 632, 713, 716, 718, 725, 729, 731, 732 
 Baker, William H., v. Baker, 115 Fed. 297-1902 (53 C. C. A. 157, 2d Cir.). . . 127, 131 
 
 Baldwin v. Von Micheroux, 5 Misc. 386, 83 Hun, 43 .314, 316 
 
 Ball, Matter of, 161 App. Div. (N. Y.) 79 65 
 
 Ball V. Best, 135 Fed. 434-1905 (C. C. N. D. 111.) 140, 169, 188, 592 
 
 Ball V. Broadway Bazaar, 194 N. Y. 429 386 
 
 Ball V. Siegel, 116 111. 137-1886, 4 N. E. 667 248, 621 
 
 Ball & Socket F. Co. y. Cohn, 90 Fed. 664 571 
 
 Baltimore Car Wheel Co. v. Bemis, 29 Fed. 95-1886 (C. C. Mass.) 499 
 
 Baltimore Life Insurance Co. v. Gleisner, 202 Pa. St. 386-88-1902, 51 Atl. 
 
 1024 501 
 
 Bamforth v. Douglass P. C. & M. Co., 158 Fed. 255 384 
 
 Bank of Tomah v. Warren, 94 Wis. 151-1896, 68 N. W. 649 32, 50 
 
 Bankers' H. W. Co. v. Beaver S. & B. M. Co., 236 Fed. 731 248 
 
 Banks v. Gibson, 34 Beav. 566-1865 58 
 
 Banghaf, John A., v. Edward C. Chase, 150 Cal. 180-1907 283 
 
 Barber v. Manico, 10 R. P. C. 93-1893 148 
 
 Barker's Trade-Mark, «e, 53 L. T. N. S. 23 101 
 
 Barley v. Walford, 9 Q. B. 197-1846 482 
 
 Barnes v. Pierce, 104 Fed. 213-1908 (C. C. N. Y.) 257, 397 
 
 Bamett v. Leuchars, 34 L. T. (Ch.) N. S. 495-1865 257, 720 
 
 Barrett Mfg. Co., In re, 37 App. D. C. Ill 435 
 
 Barrett Mfg. Co., Re, 41 App. D. C. 513 435 
 
 Bass, Ratcliff & Gretton Co. v. Feigenspan, 96 Fed. 206 (C. C. N. Y., 1899). 421 
 
xxvi Table op Cases 
 
 PAGBl 
 
 Batchellerv. Thomson, 93 Fed. 660 405 
 
 Bates Mfg. Co. v. The Bates Machine Co., 141 Fed. 213-1905 248 
 
 Bates Mfg. Co. v. Bates Numbering Mach. Co., 172 Fed. 895-1909. .3, 15, 22, 
 
 80, 162, 171 
 
 Battle Creek Sanitarium Co. v. Fuller, 30 App. D. C. 411 450, 453 
 
 Batty V. HiU, 1 Hem. & M. 264-1863 27 
 
 Bauer, A., & Co. v. Order of Carthusian Monks, 120 Fed. 78, 56 C. C. A. 
 
 480-1903 98, 253 
 
 Bauer, A. & Co. v. Siegert, 120 Fed. 81 398, 402 
 
 Bayer v. Baird, 15 R. P. C. 615 106 
 
 Beadleston & Woerz v. Cooke Brewing Co., 74 Fed. 229 (C. C. A., 1896). .379, 398 
 Bear Lithia Springs Co. v. Great Bear Spring Co., 71 N. J. Eq. 595. .671, 673, 683 
 
 Beard v. Turner, 13 L. T. N. S. 747-1866 586, 708 
 
 Beattie v. CaUanan, 82 App. Div. (N. Y.) 7-1903, 81 N. Y. Supp. 413 335 
 
 Beck V. Railway Teamsters' Protective Union, 118 Mich. 497-1898 486 
 
 H. Becker Co. v. C. A. Gambrill Mfg. Co., 38 App. D. C. 535 440, 447, 452 
 
 Beddow v. Beddow, L. R. 9 Ch. Div. 89-1878 484 
 
 Beecham v. Jacobs, 159 Fed. 129-1908 (C. C. A. 2d Cir.) 687 
 
 Beekman v. Marsters, 195 Mass. 205-1907, 80 N. E. 817, 11 L. R. A. N. S. 
 
 201 337, 347, 363 
 
 Bell V. Locke, 8 Paige (N. Y.), 75-1840 536, 539 
 
 Bender v. Bender S. & O. F. Co., 178 111. App. 207-1913 172 
 
 Bender v. Enterprise Mfg. Co., 156 Fed. 641-1907 (C. C. A. 6th Cir.) 285 
 
 Benkert v. Fader, 34 Fed. 634^1888 (C. C. N. D. Cal.) 713, 716 
 
 Benton v. Pratt, 2 Wend. (N. Y.) 385-1829 327, 338, 345, 346, 348 
 
 Bergamini v. Baatian, 35 La. Ann. 60-1883 52 
 
 Bergdoll Brewing Co., Louis, v. BergdoU Brewing Co., 218 Fed. 131 460, 574 
 
 Berry v. Donovan, 188 Mass. 353-1905, 74 N. E. 603, 6 L. R. A. N. S. 899. . 346, 487 
 
 Betterman v. Louisville & N. R. R. Co., 207 U. S. 205 553 
 
 Bewlay & Co., Ltd., v. Hughes, 15 R. P. C. 290-1898 213 
 
 Bickmore Gall Cure Co. v. Karns, 126 Fed. 573, 134 Fed. 833-1905 (C. C. A. 
 
 3d Cir.) 76, 267, 396, 630 
 
 Bile Bean Mfg. Co. v. Davidson, 22 R. P. C. 553-1905 (Ct. Sess.) 679 
 
 Bingham School v. Gray, 122 N. C. 699-1898, 41 L. R. A. 243, 30 S. E. 304. . 158 
 Birmingham Small Arms Co., Ltd., v. Webb & Co., 24 R. P. C. 27-1906 (Ch. 
 
 Div.) 103 
 
 Birmingham Vinegar Brewery Co. v. Powell, 66 L. J. Ch. N. S. 763-1897, 
 
 A. C. 710 '221 
 
 Bissell Chilled Plow Works v. T. M. Bissell Plow Co., 121 Fed. 357-1902 
 
 (C. C. Mich.) 703, 705 
 
 Bitterman v. Louisville & Nashville R. R. Co., 207 U. S. 205-1907 . 336, 338, 343, 344 
 
 Bixby V. Dunlap, 56 N. H. 456-1876, 22 Am. Rep. 475 327,' 339 
 
 Black V. Ehrich, 44 Fed. 793-1891 (C. C. S. D. N. Y.) 513, 516, 525^ 527 
 
 Blackford & Wilan, 28 App. D. C. 535 452 
 
 BlackweU v. Crabb, 36 L. J. Ch. N. S. 504-1867 590 
 
 Blackwell & Co. v. Dibrell & Co., 3 Hughes, 151-1878 (U. S. C. C. Va.) Fed. 
 
 Cas. No. 1, 475-1878 213, 696! 698 
 
 Blackwell v. Wright, 73 N. C. 310-1875 616 
 
 Blackwell's Durham Tobacco Co. v. American Tobacco Co. (N. C), 59 S. E. 
 
 123-1907 166 
 
 Blakely v. Sousa, 197 Pa. St. 305-1900, 47 Atl. 286 33 
 
Table of Cases xxvii 
 
 PAQB 
 
 Blanchard v. Hill, 2 Atk. 484-1742 5 
 
 Blatz, J. P., Brew. Co. v. Kaiaerbrauerei, Beck & Co., 74 Fed. 222 398 
 
 Block V. Standard Distilling & Distributing Co., 95 Fed. 978-1899 (C. C. 
 
 Ohio) 571, 695 
 
 Blofield V. Payne, 4 B. & Ad. 410-1833 6, 7, 661 
 
 Blumenthal v. Bigbie, 30 App. Cas. (D. C.) 118-1908 87 
 
 Bluthenthal & Bickart v. Mohlmann, 49 Fla. 275-1905 577 
 
 Board of Trade, etc., v. Christie Grain & Stock Co., 198 U. S. 236-1904, 49 
 
 L. ed. 1031, 25 Sup. Ct. 637 300, 342, 553 
 
 Board of Trade v. Hadden-KruU Co., 109 Fed. 705-1901 (C. C. Wis.) 342 
 
 Board of Trade v. C. B. Thomson Commission Co., 103 Fed. 902-1900 (C. C. 
 
 Wis.) 342 
 
 Boardman v. Meriden Britannia Co., 35 Conn. 402 408 
 
 Bobbs-Merrill Co. v. Straus, 147 Fed. 15-1906, 210 U. S. 339-1907 (C. C. 
 
 A. 2d Cir.) 348, 358, 361 
 
 Boggs V. Duncan-ScheU F. Co., 163 Iowa, 106-1913, 143 N. W. 483. . .371, 556, 
 
 560, 564 
 
 Bohn Mfg. Co. v. Hollis, 54 Minn. 223, 55 N. Y. 119, 21 L. R. A 365 
 
 Bolander v. Peterson, 136 lU. 215-1891, 26 N. E. 603, 11 L. R. A. 350. .. .406, 
 
 597 
 
 Bonnard v. Perryman, 2 Ch. 269-1891 472 
 
 Boosing & Dorman, 148 App. Div. (N. Y.) 824 319 
 
 Booth, Alfred W., & Bro. v. Burgess (N. J. Eq. 1906), 65 Atl. 226 335 
 
 Booth, A., & Co. V. Davis, 127 Fed. 875-1904 (C. C. Mich.) 351 
 
 Booth V. Jarrett, 52 How. Pr. 169-1876 (N. Y. C. P. Sp. T.) 45 
 
 Borden's Ice Cream Co. v. Borden's Condensed Milk Co., 201 Fed. 510 (C. 
 
 C. A. 1912) 403, 422, 601 
 
 Borthwick v. Evening Post, 37 Ch. Div. 449-1888, 12 Encyc. of the Laws of 
 
 England, 234, 235 26, 537 
 
 Boston Diatite Co. v. Florence Manufacturing Co., 114 Mass. 69-1873. . .481, 482 
 Bourlier Brothers v. Maeauley, 91 Ky. 135-1891, 15 S. W. 60, 11 L. R. A. 
 
 550 -. 335, 342 
 
 Bowen v. HaU, L. R. 6 Q. B. Div. 333-1881 338 
 
 Boynton v. Shaw Stocking Co., 146 Mass. 219-1888, 15 N. E. 507 497 
 
 Boysen v. Thorn, 98 Cal. 578-1893, 33 Pac. 492, 21 L. R. A. 233.. . .335, 340, 342 
 
 Bowen v. HaU, L. R. 6 Q. B. Div. 333-1881 333, 341 
 
 Braadland, Ltd., John, In re, 37 App. D. C. 602 437 
 
 Bradford v. Belknap Motor Co., 105 Fed. 63 721 
 
 Bradley v. Norton, 33 Conn. 157 639 
 
 Braham v. Beachim, 7 Ch. Div. 848-1878 206 
 
 Braham v. Bustard, 1 Hem. & M. 447-1863 82 
 
 Brandreth v. Lance, 8 Paige (N. Y.), 24r-1839; Eden, Injunction (3d ed.), 
 
 372 479, 499 
 
 Breitenbach v. Rosenberg, 37 App. D. C. 102. 415, 431, 435 
 
 Breitenbach, M. J., Co. v. Spangenberg, 131 Fed. 160-1904 (C. C. S. D. 
 
 N. Y.) 90, 394, 576, 577 
 
 Brennan v. Emeiy-Bird-Thayer D. G. Co., 108 Fed. 624 (C. C. A.) 396 
 
 Briggs V. Natl. Wafer Co., 102 N. E. Rep. 87-1913, 215 Mass. 100. .74, 417, 729, 730 
 British-American Tobacco Co. v. British-American Cigar Stores, 206 Fed. 
 
 189 440, 575 
 
 Bromund Co. v. Columbia Wax Co., 41 App. D. C. 506 436 
 
Xxviii Table of Cases 
 
 PAGE 
 
 Brooklyn White Lead Co. v. Masury, 25 Barb. (N. Y.) 416-1857 225, 598 
 
 Brooks V. Ingraham, 186 Ala. 106, 65 So. 138-1914 366 
 
 Brown v. Mercer, 37 N. Y. Super. Ct. 265-1874 665 
 
 Brown v. Seidel, 153 Pa. St. 60-72-1893, 25 Atl. 1064 594 
 
 Brown Chemical Co. v. Meyer, 139 U. S. 640-1890, 35 L. ed. 247, 11 Sup. 
 
 Ct. 625 49, 117, 148, 160 
 
 Brown Chemical Co. v. Frederick Steams & Co., 37 Fed. 360-1889 (C. C. 
 
 E. D. Mich.) 600 
 
 Brown-Forman Co. v. Beech Hill Co., 30 App. D. C. 485 435 
 
 Brown, J. S., Hardware Co. v. Ind. Stove Works, 96 Tex. 453-1903, 73 S. W. 
 
 800 340, 710 
 
 Brown Saddle Co. v. Troxel, 98 Fed. 620 672, 710 
 
 Brooke & Co. v. Commissioners of Inland Revenue, 2 Q. B. 356-1896 32 
 
 Buck's Stove and Range Co. v. Kiechle, 76 Fed. 758-1896 (Cir. Ct. Ind.) 284 
 
 Buchanan-Anderson Co. v. Breen, 27 App. Div. 573 436, 450 
 
 Buckland v. Rice, 40 Ohio St. 526-1884 384 
 
 Buffalo Rubber Co. v. Batavia Rubber Co., 90 Misc. 418 459 
 
 Buffalo Rubber Mfg. Co. v. Batavia Rubber Co., 153 N. Y. Supp. 779. 393 
 
 Bulte V. Igleheart Bros., 137 Fed. 492 (C. C. A.) 576 
 
 Bureau of Natural Literature v. Sells, 211 Fed. 379 524 
 
 Burgess v. Burgess, 3 De G. M. & G. 896-1853 81, 82; 121, 122, 124 
 
 Burgess v. Burgess, 17 Eng. Law & Equity, 257 133 
 
 Burke v. Cassin, 45 Cal. 467, 480 403 
 
 Burke, Edward & John, Ltd., v. Bishop, 144 Fed. 838-1906 (C. C. A. 2d Cir.) . . 706 
 
 Burke, Edward & John, Ltd., v. Bishop, 175 Fed. 167 696 
 
 Burnett v. Chetwood, 2 Merivale, 441-1720, note 473 
 
 Burnett v. Phalon, 3 Keyes (N. Y.), 594-1867 98 
 
 Bums, C. O., Co. v. Bums, W. F., Co., 118 Fed. 944-1902 (C. C. S. D. N. Y.) 
 
 642, 706 
 
 Bumstein v. Danwitz, 190 Fed. 604 460 
 
 Burrell v. Simplex Electric Heating Coi, 44 App. D. C. 452 452 
 
 Burrow v. Marceau, 124 App. Div. (N. Y.) 665-1908, 109 N. Y. Supp. 105 
 
 16, 150, 176, 639 
 
 Burt V. Tucker, 178 Mass. 493, 59 N. E. 1111 696 
 
 Burton v. Stratton, 12 Fed. 696-1882 42 
 
 Bury V. Bedford, 4 De G. J. & S. 352-1864 44 
 
 Busch V. Gross, 71 N. J. Eq. 508, 64 Atl. 754-1906 86 
 
 Buzby V. Davis, 150 Fed. 275-1906 (C. C. A. 8th Cir.) 231 
 
 Buzby V. Keystone Oil & Mfg. Co., 206 Fed. 136 397 
 
 Cady V. Schultz, 19 R. I. 193-1895, 32 Atl. 915, 29 L. R. A. 524 Ill, 592 
 
 Caffarelli Bros. v. Westem Grocer Co., 102 Tex. 104, 127 S. W. 1018 .'.693 
 
 Cahn V. Gottschalk, 14 Daly (N. Y.), 542-1888, 2 N. Y. Supp. 13. . . .95, 680, 690, 
 
 703 732 
 
 Cahn V. Hoffman House, 28 N. Y. Supp. 388 ' 402 
 
 Cahn, Belt & Co., In re, 27 App. D. C. 173 434, 443 
 
 California Fig Syrup Co. v. Improved Fig Symp Co., 51 Fed. 296 578, 638 
 
 California Fig Syrup Co. v. Putnam, 66 Fed. 750-1895 (C. C. Mass.). .1 676 
 
 California Fig Syrup Co. v. Stearns & Co., 73 Fed. 812-1896 (C. C. A. 6th 
 
 Cir.), 33 L. R. A. 56 -. 676 
 
Table of Cases xxix 
 
 PAGE 
 
 California Fruit Canners' Assn. v. Myer, 104 Fed. 82 (Cir. Ct. Md. 1899) 203 
 
 Callaghan v. Myers, 128 U. S. 617 721, 726 
 
 Calliga V, Interocean Newspaper Co., 157 Fed. 186, aff'd 215 U. S. 182 510 
 
 Camors v. McConneU, 140 Fed. 412 .' 672, 710 
 
 Campbell v. Cooper, 34 N. H. 49 342 
 
 Canal Co. v. Clark, 13 WaU. 311-1871, 80 U. S. 311, 20 h. ed. 581. . .22, 28, 216, 
 
 379, 388, 391, 664 
 
 Candee, L., & Co. v. B. F. Goodrich Co., 44 App. D. C. 53 454 
 
 Candee, Swan & Co. v. Deere & Co., 54 111. 439-61-1870 287, 382, 400, 412 
 
 Cantrell & Cochrane v. Wittemann, 109 Fed. 82-1901 (C. C. S. D. N. Y.). .641, 642 
 
 Capewell Horse Nail Co. v. Green, 182 Fed. 404, aff'd. 188 Fed. 20 384 
 
 CapeweU Horse Nail Co. v. Mooney, 167 Fed. 575, aff'd. 172 Fed. 826, 97 G. 
 
 C. A. 248 382, 383, 384, 389 
 
 CapeweU Horse Nail Co. v. Putnam Nail Co., 140 Fed. 670 412 
 
 Carew v. Rutherford, lOG Mass. 1 487 
 
 Carmel Wine Co. v. California Winery, 38 App. D. C. 1 435, 452 
 
 Carmel Wine Co. v. Palestine Hebrew Wine Co., 161 Fed. 654-1908 402, 643 
 
 Carson v. Ury, 39 Fed. 777-1889 (CCA.) 550 
 
 Carrington v. Taylor, 11 East, 571 325 
 
 Carroll v. Duluth Superior Milling Co., 232 Fed. 675 : 603 
 
 CarroU v. Ertheiler, 1 Fed. 688 (C. C. E. D. Pa., 1880) 421, 605 
 
 CarroU & Son Co., Thomas G., v. McUvaine & Baldwin, 171 Fed. 129, aff'd 
 
 183 Fed. 22 (C C A., 2nd Cir.) 388, 418, 424, 700 
 
 Carter Medicine Co. v. Barclay, 36 App. D. C. 123 449 
 
 Cartier v. Carlile, 31 Beav. 292-1862 612 
 
 Casey v. Cincinnati Typographical Union, 45 Fed. 135-1891 (C C Ohio), 12 
 
 L. R. A. 193, note 491 
 
 Ca.shv.Cash, 19 R. P. C. 181-1902, 86 L. T. 211 138, 141 
 
 Castroville Co-op. Creamery Co. v. Coe, 92 Pac. 648, 6 Cal. App. 533-1907. . 669 
 
 CasweU V. Hazard, 121 N. Y. 484-1890, 24 N. E. 707 147 
 
 CeUular Clothing Co., Ltd., v. Maxton & Murray, App. Gas. 326-1899, 16 
 
 R. P. C 307 70, 599, 614 
 
 Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. 94-1887 (C C D. N. J.) 
 
 98, 108, 198 40, 50, 98, 162,, 182, 397, 582 
 
 Celluloid Mfg. Co. v. Read, 47 Fed. 712 397 
 
 Centaur Co. v. Heinsfurter, 84 Fed. 955 404 
 
 Centaur Co. v. Killenberger, 87 Fed. 725-1898 (C. C. N. J.) 251, 289 
 
 Centaur Co. v. Link, 62 N. J. Eq. 147-1901, 49 Atl. 828 266, 290 
 
 Centaur Co. v. Marshall, 97 Fed. 785-1899, 38 C C A. 413 625, 642 
 
 Central Consumers Co., In re, 32 App. D. C. 523 439 
 
 Central Transportation Co. v. Pullman Palace Car Co., 139 U. S. 24-53-1890, 
 
 35 L. ed. 55, 11 Sup. Ct. 478 298 
 
 Chadron Opera House Co. v. Loomer, 71 Neb. 785, 99 N. W. 649-1904 86 
 
 Chadwiok v. Covell, 151 Mass. 190, 23 N. E. 1068, 6 L. R. A. 839, 21 Am. St. 
 
 Rep. 442 64, 296, 303 
 
 Chambers & MarshaU v. Baldwin, 91 Ky. 121-1891, 15 S. W. 57, 11 L. R. A. 
 
 545 335, 342, 354 
 
 Chancellor, etc.. University of Oxford v. Wilmore-Andrews Pub. Co., 101 Fed. 
 
 443-1900 (C. Ct. S. D. N. Y.) 222, 517 
 
 Chapin-Sacks Mfg. Co. v. Hendler Creamery Co., 231 Fed. 550 393 
 
 Chasemore v. Richards, 7 H. L. C 349-1859 329 
 
XXX Table of Cases 
 
 PAGE 
 
 Cheavin v. Walker, 5 Ch. Div. 850-1877 (Ch. App.) 688 
 
 Chesterman v. Seeley, 18 Pa. Co. Ct. 631-1896, 5 Pa. Dist. 767 50 
 
 Chicago Pneumatic Tool Co. v. Phila. Pneumatic Tool Co., 118 Fed. 852 (C. C. 
 
 S. D. N. Y. 1902) 581, 604 
 
 Chickering v. Chickering & Sons, 215 Fed. 490 (C. C. A. 7th Ct. 1914) .... 134, 157 
 Chickering v. Chickering & Sons, 120 Fed. 69-1903 (C. C. A. 7th Cir.) 198 Fed. 
 
 958 157, B60 
 
 Chipley v. Atkinson, 23 Fla. 206-1887, 1 So. 934 339, 340, 353, 354 
 
 Chissum v. Dewes, 5 Russ. 29 32 
 
 Chittenden v. Witbeck, 50 Mich, 401-20-1883, 15 N. W. 626 34 
 
 Choynski v. Cohen, 39 Cal. 501-1870 596 
 
 Church & Dwight Co. v. Russ, 99 Fed. 276-78-1900 (C. C. Ind.) 5, 421 
 
 Church V. Kresner, 26 App. Div. (N. Y.) 349-1898, 49 N. Y. Supp. 742 147 
 
 Churton v. Douglas, 28 L. J. N. S. Ch. 841-1859 34, 52 
 
 Cincinnati Co. v. Dodds, 19 Wkly. L. Bui. Ohio, 84 310 
 
 Cincinnati U. S. Co. v. Cincinnati Shoe Co., 7 Ohio N. P. 135 649 
 
 Citizens Co. v. Montgomery, etc., Co., 171 Fed. 561 324, 329, 349, 485, 569 
 
 City of Carlsbad v. Kutnow, 71 Fed. 167-1895 (C. C. A. 2d Cir.), 35 U. S. App. 
 
 750, 18 C. C. A. 24 207 
 
 City of Carlsbad v. Kutnow, 68 Fed. 794-1895, affirmed 35 U. S. App. 750- 
 
 1895, 71 Fed. 167 210 
 
 City of Carlsbad v. Tibbetts, 51 Fed. 852-56 202 
 
 City of Findley v. Pertz, 66 Fed. 427 560 
 
 Civil Service Supply Association v. Dean, L. R. 13 Ch. Div. 512-1879 695 
 
 Clark v. Mtna, Iron Works, 44 111. App. 510-1892 182 
 
 Clark V. Clark, 25 Barb. (N. Y.) 76-1857 262, 644 
 
 Clark V. Freeman, 11 Beav. 112-1848 473, 480 
 
 Clark Thread Co. v. Armitage, 67 Fed. 896-1895 (C. C. S. D. N. Y., 1895), 
 
 affirmed and modified 74 Fed. 896-1895 76, 152, 692, 695 
 
 Clark Thread Co. v. Armitage, 74 Fed. 936-1896 (C. C. A. 2d Cir.) 76, 686 
 
 Clark Thread Co. v. Clark, 55 N. J. Eq. 658-1897; 37 Atl. 59 654 
 
 Clay v. Kline, 149 Fed. 912-1906 (C. C. S. D. N. Y.) 250 
 
 Clayton v. Day, 26 Sol. Jour. 43-1881 82 
 
 Clemens v. Belford, Clark & Co., 14 Fed. 728 543 544 
 
 Clement v. Maddick, 5 Jur. N. S. 592-1859 " 98^ 535 
 
 Cleveland Foundry Co. v. Silver, 134 Fed. 591 236 
 
 Cleveland Stone Co. v. Wallace, 52 Fed. 431-1892 (C. C. Mich.) 401, 692 
 
 Clip Bar Mfg. Co. v. Steel P. P. Co., 209 Fed. 874 (aff'd 213 Fed. 233, C C a' 
 
 3d Cir.) 496 
 
 Clotworthy v. Schepp, 42 Fed. 62-1890 (C. C. S. D. N. Y.) 676, 678 
 
 Coal Co. v. Spangler, 54 N. J. Eq. 354, 34 Atl. 932 ..." 65 
 
 Coats V. Holbrook, 2 Sandf . Ch. (N. Y.) 586-1845 218^ 256 725 
 
 Coats, J. & P., Ltd., V. John Coates Thread Co-, 135 Fed. 177-79-1905 177 
 
 Coats V. Merrick Thread Co., 149 U. S. 562-1892, at p. 566, 37 L. ed. 847 13 
 
 Sup. Ct. 966 13^ 227, 244 
 
 Coca-Cola Co. v. American Druggists Syndicate, 200 Fed. 107 394 448 
 
 Coca-Cola Co. v. Deacon Brown Co., 200 Fed. 105 448 710 
 
 CocBrCola Co. V. Gay-Ola Co., 200 Fed. 720-1912 (C. C. A. 6th Cir.) . .278, 293^ 672 
 Coca-Cola Co. V. Gay-Ola Co., 200 Fed. 720, 119C.C. A. 164, 211 Fed. 942,651,' 653, 
 
 710 
 CocarCola Co. v. Glee-Nol Bottling Co., 221 Fed. 61 (C. C. A. 5th Cir.) 242 
 
Table of Cases xxxi 
 
 PAOB 
 
 CoearCola Co. v. Koke Company of America, 6 Trade-Mark Rep. 349 394 
 
 CocarCola Co. v. Nashville Syrup Co., 215 Fed. 527 394, 732 
 
 CocarCola Co. v. Nashville Syrup Co., 200 Fed. 153 394, 444, 448 
 
 Cochrane v. McNiah & Son, App. Cas. 225-1896 82, 92, 93, 689 
 
 Coeur D'Alene Mining Co. v. Miners' Union, 61 Fed. 260 492 
 
 Coffeen v. Brunton, 5 McLean, 256-1851, Fed. Cas. No. 2947, 4 McLean, 
 
 516-1849, Fed. Cas. No. 2946, 5 Fed. Cas. 1184-1185 270, 616, 648 
 
 Cohen v. Nagle, 190 Mass. 4^1906, 76 N. E. 276, 2 L. R. A. 964, 190 Mass. 4^ 
 
 1893, 76 N. E. 276 231, 389, 413, 414, 649 
 
 Cole, G. W., Co. V. American Cement Co., 130 Fed. 703-1904 (C. C. A. 7th 
 
 Cir.) 4 21, 376, 387 
 
 Cole, H. C, & Co. V. Wm. Lea & Sons Co., 35 App. D. C. 355 606 
 
 Colgate V. Adams, 88 Fed. 899-1898 (C. C. N. D. 111.) 227 
 
 CoUard v. MarshaU, 1 Ch. 571-1892, 577 475 
 
 Collier v. JonM, 66 Misc. 97 518 
 
 Collins Co. V. Brown, 3 K. & J. 423 390 
 
 Collins Company v. Oliver Ames & Sons Corporation, 18 Fed. 561-1882 (C. C. 
 
 S. D. N. Y.) 108, 421, 422 
 
 Cohnan v. Crump, 70 N. Y. 573-1877 245, 585, 613, 620 
 
 Colton V. Thomas, 2 Brewst. (Pa.) 308-1869, 7 Phila. 257 (Com. Pleas, Phila.) 87, 
 
 112 
 Columbia MiU Co. v. Alcorn, 150 U. S. 460-463-1893, 37 L. ed. 1144, 14 Sup. Ct. 
 
 141 173, 377, 400, 412, 633 
 
 Commercial Acetylene Co. v. Avery Portable L. Co., 152 Fed. 642-1906 (C. C. 
 
 Wis.) 369, 491 
 
 Commercial Advertiser Assn. v. Haynes, 26 App. Div. (N. Y.) 279-1898, 49 N. 
 
 Y. Supp. 938 98, 536 
 
 Commissioners of Inland Revenue v. Angus & Co., 23 Q. B. D. 579-1889 32 
 
 Commonwealth v. Banks, 198 Pa. St. 397-1901, 48 Atl. 277 599 
 
 Commonwealth v. Kentucky Distilleries & Warehouse Co., 132 Ky. 621-1909 . 378 
 
 Compania General de Tabacos v. Rehder, 5 R. P. C. 61-1887 (Ch. Div.) 211 
 
 Computing Scale Co. v. Standard Computing Scale Co., 118 Fed. 965-1902, 
 
 55 C. C. A. 459 68, 98, 392, 399 
 
 Condy & MitcheU v. Taylor & Co., 56 L. T. N. S. 891-1887 (Ch. Div.) 254 
 
 Congress and Empire Spring Co. v. High Rock Congress Spring Co., 45 N- Y. 
 
 291-1871 218, 397 
 
 ConneU y. Reed, 128 Mass. 477-1880 385, 400, 676, 682 
 
 Connors Paint Co., 27 App. D. C, Re, 389 434 
 
 Conrad v. Uhrig Brewing Co., 8 Mo. App. 277-1880 262, 680 
 
 Consolidated Ice Co. v. Hygeia Distilled Water Co., 151 Fed. 10-1907 (C. C. A. 
 
 3d Cir.) 394 
 
 Consumers' Co. v. Hydrox Chemical Co., 40 App. D. C. 284-1913 429, 436 
 
 Continental Ins. Co. v. Continental Fire Assn., 41 C. C. A. 326, 101 Fed. 255. . 230 
 Contmental Tobacco Co. v. Larus & Brothers Co., 133 Fed. 727-1904 (C. C. A. 
 
 4th Cir.) 273 
 
 Cook V. Collingridge, Jacob, 607-1825 52 
 
 Cook & Bemheimer Co. v. Ross, 73 Fed. 203-1896 (C. C. S. D. N. Y.).. . .238, 251 
 
 Cook V. Starkweather, 13 Ab. Pr. N. S. (N. Y.) 392 407 
 
 Cooke & Cobb Co. v. Miller, 169 N. Y. 475-1902, 62 N. E. 582 287 
 
 Cooper & McLeod v. Maclachlan, 19 R. P. C. 27-1901 596 
 
 Corbett v. Purdy, 80 Fed. 901 510, 528 
 
xxxii Table op Cases 
 
 FAQB 
 
 CornwaU, Re, 12 Pat. Off. Gaz. 312-1877 227 
 
 Cottrell V. Babeock Printing Press Mfg. Co., 54 Conn. 122, 6 Atl. 791-1886. .52, 53, 
 
 317 
 
 Coulson & Sons v. Coulson & Co., 3 Times L. R. 846-1887 500 
 
 County Chemical Co. v. Frankenburg, 21 R. P. C. 722-1904 272, 704 
 
 Covell V. Chadwiok, 153 Mass. 263-1891, 26 N. E. 856 315 
 
 Covert V. Bernat, 156 Mo. App. 687 383 
 
 Crawshay v. Collins, 15 Ves. 218-1808 60 
 
 Crawshay v. Thompson, 4 Man. & Gr. 357-1842 6, 7, 8 
 
 Crescent Typewriter Supply Co., Re, 30 App. Cas. (D. C.) 324-1908 230, 400, 440 
 
 Croft V. Day, 7 Beav. 84-1843 6, 8, 82, 88, 109, 114, 117, 148 
 
 Croft V. Richardson, 59 How. Pr. 356-1880 483 
 
 Cropper v. Cropper, 23 R. P. C. 388-1906 638 
 
 Crossman v. Griggs, 186 Mass. 275-1904, 71 N. E. 560 44 
 
 Cruttwell V. Lye, 17 Ves. 335-1810 32, 33, 52 
 
 Ciystaleid Water Co. v. Schultz, 77 Misc. 26, 135 N. Y. Supp. 273-1912 252 
 
 Cuervo v. Landauer, 63 Fed. 1003-1894 (C. C. S. D. N. Y.) 623 
 
 Cumberland Glass Mfg. Co. v. De Witt, 120 Md. 381-1913 348, 350 
 
 Cutter V. Gudebrod Bios. Co., 190 N. Y. 252-1907, 83 N. E. 16. . . .719, 721, 729 
 
 D 
 
 Dadirrian & Sons, Co., Dr. v. Hauenstein, 37 Misc. 23 464, 697 
 
 Dadirrian v. Yacubian, 98 Fed. 872 406, 692 
 
 Dale V. Smithson, 121 Abb. Pr. (N. Y.) 237-1861 385, 694 
 
 Daly V. Cornwell, 34 App. Div. (N. Y.) 27-1898, 54 N. Y. Supp. 107 353 
 
 Daly V. Palmer, 6 Blatchf. 256, Fed. Cas. No. 3,552 535 
 
 Daughters of Isabella v. National Order, 83 Conn. 679, 78 Atl. 333, Anno. Case, 
 
 1912, 822 187 
 
 Davids, Thaddeus, Co. v. Davids, 190 Fed. 285, (Southern Dist. N. Y.) 389 
 
 Davids, Thaddeus, Co. v. Davids, 233 U. S. 461. .403, 404, 434, 438, 440, 442, 
 
 443, 444, 446, 448, 459 
 
 Davids Co., Thaddeus, v. Davids, 178 Fed. 801 434, 442 
 
 Davies v. Racer, 72 Hun, 43 305 
 
 Davis V. Kendall, 2 R. I. 566-1850 612, 616 
 
 Davis V. New England Ry. Pub. Co., 203 Mass. 470-1909 367, 486, 503 
 
 Davis V. Stribolt, 59 L. T. N. S. 854 406 
 
 Day V. Brownrigg. L. R. 10 Ch. Div. 294-1878 45, 475 
 
 Day V. Hunnicutt, 160 S. W. 134^1913 349, 372 
 
 Day V. Web.ster, 23 App. Div. (N. Y.) 601-1897, 49 N. Y. Supp. 314 517, 609, 619 
 De Bevoise, Charles R., & Co. v. H. & W. Co., 69 N. J. Eq. 114^1905 (Pitney, 
 
 V. C.) 100, 406 
 
 Deitsch v. Gibson, 198 Fed. 410 393 
 
 Deitsch v. Gibson, 155 Fed. 383-1907 (C. C. N. Y.) 699 
 
 Deitsch Bros. v. Loonen, 39 App. D. C. 11 432 
 
 De Feranti v. Lyndmark, 30 App. D. C. 417 449 
 
 De Jong V. Behrman Co., 148 A. D. 37 353 
 
 De Libellis Famosis, 6 Coke, 125a 473 
 
 De Long v. De Long Hook and Eye Co., 89 Hun, 399-1895, 35 N. Y. Supp. 
 
 509 143, 172, 176 
 
 De Long Hook & Eye Co. v. American Pin Co., 200 Fed. 66 405 
 
Table of Cases xxxiii 
 
 PAGE 
 
 De Long Hook and Eye Co. v. Excelsior Hook and Eye and Fastener Co., 139 
 
 Fed. 146-1905 (C. C. W. D. N. Y.); on appeal, 144 Fed. 682 274 
 
 De Nobili v. Soanda, 198 Fed. 341 410, 428, 434, 683 
 
 De Youngs v. Jung, 7 Misc. (N. Y.) 56-1894, 27 N. Y. Supp. 370 112 
 
 Deering Harvester Co. v. Whitman & Barnes Co., 91 Fed. 376-1898 107, 287 
 
 D., L. & W. R. Co. V. Frank, 110 Fed. 689-1901 (C. C. W. D. N. Y.) 344 
 
 Delaware & H. Canal Co. V. Clark, 13 Wall. (80 U. S.) 311, 322 613 
 
 Delz V. Winfree, 80 Tex. 400-1891 365 
 
 Deming v. Chapman, 11 How. Pr. 382-1854 301 
 
 Dennehy & Co. v. Robertson Co., 32 App. D. C. 355 439 
 
 Dennison Mfg. Co. v. Schart Tag, Label and Box Co., 135 Fed. 625-1905 (C. C. 
 
 A. 6th Cir.) 107, 407 
 
 Dennison Mfg. Co. v. Thomas Mfg. Co., 94 Fed. 651-1899 (C. C. Del.) . .3, 13, 380, 
 
 402, 441 
 
 Derringer v. Plate, 29 Cal. 296-1865, 87 Am. Dec. 170 73, 417 
 
 Devlin v. Devlin, 69 N. Y. 212-1877 147 
 
 Devlin v. McLeod, 135 Fed. 164-1904 (C. C. W. D. N. Y.) 264, 267, 392 
 
 De Voe Snuff Co. v. Wolff, 206 Fed. 420 (C. C. A.) .397, 585 
 
 Diamond Co. v. U. S. Co., N. Y. L. J., Apr. 23, 1917, by N. Y. App. Div 281 
 
 Diamond Match Co. v. Saginaw Match Co., 142 Fed. 727-1906 (C. C. A. 6th 
 
 Cir.) 292 
 
 Diamond Match Co. v. Safe Harbor Metal Co., 109 Fed. 154 642 
 
 Dick, A. B., Co. v. Henry, 149 Fed. 424 (C. C. S. D. N. Y., 1907) 604 
 
 Dick v. Northern Pacific R. Co., 86 Wash. 211-1915 372 
 
 Dickey, Paul, v. Mutual Fihn Corporation, 160 N. Y. Supp. 609-1916, 6 Trade- 
 Mark Rep. 423 533 
 
 Dicks V. Yates, 18 Ch. Div. 76, 87-1881 515 
 
 Diederich v. W, Schneider Wholesale W. & L. Co., 195 Fed. 35 (C. C. A. 8th Cir., 
 
 1912) .• 383, 429, 459 
 
 Dixie Cotton Felt Mattress Co. v. Steams & Foster Co., 185 Fed. 431 383 
 
 Dixon V. Holden, L. R. 7 Eq. 488-1869 473, 474, 481, 483, 484, 485 
 
 Dixon Crucible Co. v. Guggenheim, 2 Brewst. (Pa.) 321-1869 40, 219, 682 
 
 Doan v. American Book Co., 105 Fed. 772 524 
 
 Dockrell v. Dougall, 80 L. T. Rep. 556-1899 505 
 
 Doctor Miles Medical Co. v. Jaynes Drug Co., 149 Fed. 838-1906 (C. C. Mass.) 573 
 
 Doctor Miles Medical Co. v. Park & Sons Co., 220 U. S. 373 348 
 
 Doctor MUes Medical Co. v. Piatt, 142 Fed. 606-1906 (C. C. H. D. 111.), 149 
 
 Fed. 838-1906 (C. C. Mass.) 296, 298, 299, 360 
 
 Dodd, F. H., et al. v. H. J. Smith et at., 144 Pa. St. 340 524 
 
 Dodge Co., F. W., v. Construction Information Co., 183 Mass. 62-1903, 66 N. 
 
 E. 204, 60 L. R. A. 810 342 
 
 Dodge v. Sewall, 142 Fed. 288 , 654 
 
 Dodge Stationery Co. v. Dodge, 145 Cal. 380-1904, 78 Pac. 879.176, 186, 624, 695 
 
 Donaldson v. Beckett, 2 Brown's Pari. Cas. 129-1774 473 
 
 Donaldsons v. Becket, 4 Burrows, 2408 507, 509, 511 
 
 DonneU v. Herring-HaU-Marvin Safe Co., 208 U. S. 267-1908 153, 154, 183 
 
 Dooling V. Budget Pub. Co., 144 Mass. 258-1887, 10 N. E. 809 496, 499 
 
 Doremus v. Hennessy, 176 111. 608-1898, 52 N. Y. 924, 43 L. R. A. 797 349 
 
 Dougherty v. Van Nostrand, 1 Hoff. Ch. (N. Y.) 68-1839 60 
 
 Drake Medicine Co. v. Glessner, 68 Ohio St. 337-1893, 67 N. E. 722, 62 L. R. 
 
 A 941 21, 148, 401, 403 
 
xxxiv Table of Cases 
 
 PAGE 
 
 Draper v. Skerrett, 116 Fed. 206-1902 (C. C. E. D. Pa.) 19, 76, 396 
 
 Drewry & Son v. Wood, 127 Fed. 887 (C. C. Minn.) 98 
 
 Drummond v. Altemas, 60 Fed. 338 544 
 
 Du Bost V. Beresford, 2 Campb. 511-1810 473 
 
 Dunbar v. Glenn, 42 Wis..ll8-1877 217, 402 
 
 Dung V. Parker, 52 N. Y. 494-1873 346 
 
 Dunlop Pneumatic Tire Co., Ltd., v. Dunlop Motor Co., Ltd., 22 R. P. C. 
 
 533-1905 (Ct. Sess. Scotland) 173 
 
 Dunnachie v. Young, 10 Scot. Sess. Cas. (4th ser.) 874^1883 212 
 
 Dunn Co. v. Trix Mfg. Co., 50 App. Div. (N. Y.) 75-1900, 63 N. Y. Supp. 333. .517, 
 
 583 
 
 Dunshee v. Standard Oil Co., 152 Iowa, 618, 165 Iowa, 625. . . .• 370, 560 
 
 Dunstar Co. v. Autoaale Gum & Chocolate Co., 113 Ms. Dec. 265 437 
 
 Dunston v. Los Angeles V. & S. Co., 165 Cal. 89 402 
 
 Duryea v. Manufacturing Co., 79 Fed. 651, 25 C. C. A. 139, 2nd Cir 153 
 
 Dutton & Co., E. P., V. Cupples, 117 App. Div. (N. Y.) 1st Dept. 172-1907, 102 
 
 N. Y. Supp. 309 278, 512, 517, 518 
 
 Dwinell-Wright Co. v. Co-operative Supply Co., 148 Fed. 242, 155 Fed. 909.398, 
 
 402, 654 
 
 Dyer Quarry Co., John T., v. Schuylkill Stone Co., 185 Fed. 557 381, 402, 442 
 
 E 
 
 Eastern Outfitting Co. v. Mannheim, 59 Wash. 428 417, 418 
 
 Eastman Kodak Co. v. Reichenbach et al., 20 N. Y. Supp. 110-1892, aff'd 79 
 
 Hun, 183 305, 310 
 
 Eckhart v. Consolidated Milling Co., 72 111. App. 70-1897 255, 616 
 
 Edelsten v. Edelsten, 1 De G. J. & S. Ch. 185-1863, 10 L. T., (N. S.) 780. .6, 661, 
 
 716, 724,. 725, 732 
 
 Edelsten v. Vick, 11 Hare, 78-1853 688 
 
 Edison v. Edison Mfg. Co., 73 N. J. Eq. 136 168 
 
 Edison v.' Thomas A. Edison, Jr., Chemical Co., 128 Fed. 957-1904 (C. C. Del.) 491 
 Edison Storage Battery Co. v. Edison Automobile Co. of Washington, D. C, 
 
 67 N. J. Eq. 44-1904, 56 Atl. 861 '639 
 
 Edison Mfg. Co. y. Gladstone, 58 Atl. 391-1903 286 
 
 Edison v. Mills-Edisonia (N. J. Ch.), 70 Atl. 191-1908 ' 291 
 
 Edward & John Burke, Ltd., v. Bishop, 175 Fed. 167 253 
 
 Edward Hilker Mop Co. v. U. S. Mop Co., 191 Fed. 613 (C. C. A. 6th Cir.). . '. 248 
 
 Eggers V. Hink, 63 Cal. 445-1883, 49 Am. Rep. 96 112, 586 
 
 Eiseman v. Schiffer, 157 Fed. 473-1907 (C. C. N. Y.) 397, 455, 464, 697* 699 
 
 Elbs v. Rochester Egg Carrier Co., 134 N. Y. Supp. 979-1912 177^ 248 
 
 Electric Renovator Mfg. Co. v. Vacuum Cleaner Co., 189 Fed. 754 495 
 
 Elgin Butter Co. v. Elgin Creamery Co., 155 111. 127-1895, 40 N. E. 616 621 
 
 Elgin Nat. Watch Co. v. Eppenstein, 1 111. C. C. 602-1892 640 
 
 Elgin Natl. Watch Co. v. Illinois Watch Cgse Co., 179 U. S. 665-1900 21 
 
 Supp. Ct. 270, 45 L. ed. 365 68, 226, 377, 389, 400, 609, 618, 637 
 
 Elgin Natl. Watch Co. v. Loveland, 132 Fed. 41-1904 (C. C. N. D. Iowa) . . 223,' 638 
 
 639, 659 
 
 Elks, B. P. O., v. Improved B. P. O. Elks, 205 N. Y. 459 I87 
 
 Elliott & Co. v. Hodgson, 19 R. P. C. 518-1902 ' 279 
 
 Ellis V. Hurst, 70 Misc. (N. Y.) 122 ! ! ! 644 
 
Table op Cases xxxv 
 
 PAGE 
 
 Ellis V. ZeUin & Co., 42 Ga. 91-1871 676 
 
 El Modello Cigar Mfg. Co. v. Qato, 25 Pla. 886 716 
 
 Emack v. Kane, 34 Fed. 46-1888 (C. C. lU.) 488, 490, 491, 492, 493, 501 
 
 Emerson v. Badger, 101 Mass. 82-1869 63, 154 
 
 Emperor of Austria v. Day & Kossuth, 3 De G. F. & J. 217-1861 473, 481 
 
 Empire Steam Laundry v. Lozier, 165 Cal. 95-1913 306, 318 
 
 England v. Downs, 6 Beav. 269-1842 32, 63 
 
 England v. N. Y. Publishing Co., 8 Daly (N. Y.), 375-1878 151 
 
 Enoch Morgan's Sons Co. v. Hunkele, 8 Fed. Cases, 724 (Case No. 4493).. 577, 584 
 
 Enoch Morgan's Sons Co. v. Wendover, 43 Fed. 420 561 
 
 Enoch Morgan's Sons Co. v. Whittier-Coburn Co., 118 Fed. 657-1892 (C. C. N. 
 
 D. Cal.) 666 
 
 Enterprise Mfg. Co. v. Landers, Frary & Clark, 131 Fed. 240-1904 (C. C. A. 
 
 2d Cir.) 89, 277, 283, 591, 624, 639, 649 
 
 Epperson, J. W. & Co. v. Blumenthal, 149 Ala. 125; 42 So. 863-1906 678 
 
 Equitable Relief v. Defamation and Injuries to Personality, 29 Harv. Law Rep. 
 
 640-1916 506 
 
 Ertz V. Produce Exchange of Minneapolis, 79 Minn. 140-1900 365 
 
 Estes V. Leslie, 27 Fed. 22-1886, 29 Fed. 91-1886 (C. C. S. D. N. Y.) .99, 520, 528 
 
 Estes V. Williams, 21 Fed. 189 519 
 
 Estes V. Worthington, 22 Fed. 822-1885, 30 Fed. 465, 31 Fed. 154-1887 (C. C. 
 
 S. D. N. Y.) 519, 528, 639, 705 
 
 Eureka Fire Hose Co. v. Eureka Rubber Mfg. Co., 69 N. J. Eq. 159-1905, 60 
 
 Atl. 561, modification refused, s. c, 65 Atl. 870-1907 93 
 
 Evans v. Von Laer, 32 Fed. 153-1887 253, 256 
 
 Evenson v. Spaulding, 150 Fed. 517-1907 (C. C. A. 9th Cir.), 9 L. R. A. N. S. 
 
 904, note 368, 551, 560 
 
 Everett Piano Co. et al. v. George P. Bent, 60 111. App. 372-1895 494 
 
 Everett Piano Co. v. Maus, 200 Fed. 719 547 
 
 Ewing V. Standard Oil Co., 42 App. D. C. 321 456 
 
 Excelsior Shoe Co., Re, 40 App. D. C. 480 431, 437, 438, 605 
 
 Exchange Telegraph Co., Ltd., v. Central News, 2 Ch. 48-1897 297, 343 
 
 Exchange Telegraph Co., Ltd., v. Gregory & Co., 73 L. T. 120-1895, 1 Q. B. D. 
 
 147-1896 297, 342, 343 
 
 F 
 Fahmey, Dr. Peter H., & Sons Co. v. Ruminer, 153 Fed. 735-1907 (C. C. A. 
 
 7th Cir.) 600, 676, 693, 704 
 
 Fairbank, E. T., & Co. v. Des Moines Scale and Mfg. Co., 96 Fed. 972 642 
 
 Fairbank, N. K., Co. v. R. W. Bell Mfg. Co., 77 Fed. 869-1896 (C. C. A. 2d 
 
 Cir.) 271, 585, 622, 625, 627, 652, 665 
 
 Fairbank, N. K., Co. v. Central Lard Co., 64 Fed. 133 397 
 
 Fairbank, N. K., & Co. v. Luokel, King and Cake Soap Co., 102 Fed. 327, 106 
 
 Fed. 498-1901 (Cir. Ct. Oregon) 95, 96, 732, 733 
 
 Fairbank, N. K., Co. v. Swift & Co., 64 111. App. 477-1896 91, 664 
 
 Fairbank, N. K., Co. v. Windsor, 61 C. C. A. 233-1903, 124 Fed. 200-35 (C. 
 
 C. A. 2d Cir.) 118 Fed. 96 619, 716, 722, 725, 730, 735 
 
 Fairbanks v. Dunn, 126 Fed. 227 257, 561 
 
 Fairbanks v. Jacobus. 14 Blatchf, 337 287 
 
 Falk V. American West Indies Trading Co., 180 N. Y. 445-1905, 73 N. E. 1123, 
 
 1 L. R, A. N. 8. 704, note 46 
 
xxxvi Table of Cases 
 
 PAGE 
 
 Falk V. American West Indies Co., 71 App. Div. (N. Y.) 320-1002, 75 N. Y. 
 
 Supp. 964 151, 678 
 
 Falk V. Gast Lithograph & Engraving Co., 54 Fed. 890 512 
 
 Farina v. Silverlock, 4 Kay & J. 650-1858 649 
 
 Farmers' Handy Wagon Co. V. Beaver Silo, etc., Co., 236 Fed. 731-738-1917 
 
 (C. C. A. 7th Cir.) 657 
 
 Fanners' Loan & Trust Co. v. Farmers' Loan & Trust Co. of Kansas, 1 N. Y. 
 
 Supp. 44-1888, 21 Abb. N. C. 104 159, 166, 170, 188 
 
 Farquhar, A. B., & Co. v. National Harrow Co., 102 Fed. 714-1900 (C. C. A. 
 
 3d Cir.), 42 C. C. A. 600, 49 L. R. A. 755 495, 601 
 
 Faulder & Co., Ltd., v. O. & G. Rushton, Ltd., 20 R. P. C. 477-1902. . . .71, 73 
 
 205, 669 
 
 Faunoe v. Searles, 122 Minn. 343-1913 351, 372 
 
 Fay V. Lambourne, 124 App. Div. (N. Y.) 245-1908 670 
 
 Feder v. Benkert, 18 C. C. A. 549, 70 Fed. 613-1895 41, 219, 682 
 
 Fela V. Christopher Thomas & Bros., 21 R. P. C. 85-1903 (High Ct. of App.) . . 72 
 
 Felton V. SeUers Co., 4 Brewst. (Pa.) 42-1867 (Sup. Ct. Pa.) 682 
 
 Ferguson-McKinney Dry Goods Co. v. J. A. Scriven Co., 165 Fed. 655-1908 
 
 (CCA.) 604 
 
 Ferris v. Frohman, 223 U. S. 435 511 
 
 Fetridge v. Wells, 4 Abb. Pr. (N. Y.) 144-1857, 13 How. Pr. (N. Y.) 385-1857 671, 
 
 674, 676, 677 
 
 Filkins v. Blaokman, 13 Blatchf. (Conn.) 440-1876 60 
 
 Filley v. Fassett, 44 Mo. 168-1869 .92, 616 
 
 Fine Cotton Spinners and Doublers Assn., Ltd., v. Harwood, Cash & Co., Ltd., 
 
 2 Ch. 184-1907 143 
 
 Fischer v. Blank, 138 N. Y. 244-1893, 33 N. E. 1040 265, 583 
 
 Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 95 Fed. 457-1899 (C C A. 8th 
 
 Cir.) 44 
 
 Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 646-1892, 52 N. W. 
 
 595, 16 L. R. A. 453 41, 146 
 
 Fisk, A. G., v. Fisk, Clark & Flagg, 77 App. Div. (N. Y.) 83-1902, 79 N. Y. 
 
 Supp. 37 61, 62 
 
 Fishbeck Soap Co. v. Kleeno Mfg. Co., 44 App. D. C 6 462 
 
 Flaccus V. Smith, 199 Pa. St. 128-1901, 48 Atl. 894, 54 L. R. A. 640 335 
 
 Flagg Mfg. Co. V. Holway, 178 Mass. 83-1901, 59 N. E. 667 280, 287 
 
 Flavel V. Harrison, 10 Hare, 467-1853, 19 Eng. L. & Eq. 15 687 
 
 Fleckenstein Bros. Co. v. Fleckenstein, 66 N. J. Eq. 252-1904, 57 Atl. 
 
 1025 '352 
 
 Fleischmann v. Fleischmann, 7 App. Div.' 280 578 
 
 Fleischmann v. Schuckmann, 62 How. Pr. 92-1881 224 401 
 
 Fleischmann v. Starkey, 25 Fed. 127-1885 (C C R. I.) .'594 
 
 Fleming v. Newton, 1 H. L. Cas. 363-1848 ^1 
 
 Flint v. Hutchinson Smoke Burner Co., 110 Mo. 492-1892, 19 S. W. 804 16 
 
 L. R. A. 243 .....'... 493 
 
 Florence Mfg. Co. v. J. C Dowd & Co., 178 Fed. 73, 171 Fed. 122.236, 393, 396, 421 
 
 Florence Mfg. Co. v. Dowd, 189 Fed. 44 (C C. A. 2d Cir.) ' 722 
 
 Fonotipia, Limited, v. Bradley, 171 Fed. 951-1909 552 
 
 Ford v. Foster, L. R. 7 Ch. App. 611-1872 602, 670, 697, 708, 727 
 
 Forney v. Engineering News Publishing Co., 10 N. Y. Supp. 814r-1890 536 
 
 Forster Mfg. Co. v. Cutter Tower Co., 211 Mass. 223, 97 N. E. 749 714 
 
Table of Cases xxxvii 
 
 PAGE 
 
 Forster Mfg. Co. v. Cutter Tower Co., 215 Mass. 136-1913, 101 N. E. 1083. .251, 
 
 713, 714, 716, 727 
 
 Forsythe v. Guzy, N. Y. Supr. Ct., O'Gorman, J., Nov. 26, 1907 96 
 
 Fort Pitt Building & Loan Assn., etc., v. Model Plan Building & Loan Assn., 
 
 159 Pa. St. 308-1893 163 
 
 Foss V. Roby, 195 Mass. 292, 81 N. E. 199-1907 57, 58 
 
 Foster v. Blood Balm Co., 77 Ga. 216 .^ 407 
 
 Foster-Milbum Co. v. Chinn, 134 Ky. 424 168 
 
 Foule V. Park, 131 U. S. 88-1889, 33 L. ed. 67, 9 Sup. Ct. 658 359 
 
 Fox V. Best Baking Co., 209 Mass. 251-1911 238, 282 
 
 Fox, George G., Co. v. Glynn, 191 Mass. 344-1906, 78 N. E. 89, 9 L. R. A. N. S. 
 
 1096, note, 85 N. E. 417-1908 35, 276, 281 
 
 Fox, George G., Co. v. Hathaway, 199 Mass. 99-1905, 85 N. E. 417 281 
 
 Fowle V. Park, 131 U. S. 88-1889, 33 L. ed. 67, 9 Sup. Ct. 658 64, 296, 298 
 
 Fralich v. Despar, 165 Pa. St. 24^1894, 30 Atl. 521 ' 305 
 
 Francis v. Flinn, 118 U. S. 385-1886, 30 L. ed. 165, 6 Sup. Ct. 1172 490, 499 
 
 Frank v. Sleeper, 150 Mass. 583 406 
 
 Franck v. Frank Chicory Co., 95 Fed. 818-1899 (C. C. E. D. Wis.) 239, 269, 595 
 
 Frazer v. Frazer Lubricator Co., 121 111. 147-1886, 13 N. E. 639 40, 50, 51 
 
 Frazier v. Dowling, 39 S. W. 45-1897, 18 Ky. L. Rep. 1109 159, 219 
 
 French Republic v. Saratoga Vichy Co., 191 U. S. 427-1903, 48 L. ed. 247, 24 
 
 Sup. Ct. 145 193, 204, 226, 410, 707, 734 
 
 Frese v. Bachof, 14 Blatchf. 432-5-1878 241 
 
 Freund Bros. & Co., In re, 37 App. D. C. 109 439 
 
 Frohman v. Payton, 34 Misc. (N. Y.) 275 530 
 
 Frohman v. Miller, 8 Misc. 379 532 
 
 Frohman v. Morris, Inc., 68 Misc. (N. Y.) 461 531 
 
 Frost, Geo., Co. v. E. B. Estes & Sons, 156 Fed. 677-1907 (C. C. Mass.) 285 
 
 FuUer v. Huff, 43 C. C. A. 453, 144 Fed. 141-1900 (CCA.) 601 
 
 FuUer v. Huff, 104 Fed. 141-1900 (C. C. A.), 51 L. R. A. 332 193, 622 
 
 FuUwood V. FuUwood, 9 Ch. Div. 176-1878 88, 110, 700 
 
 Fulton V. Seller & Co., 4 Brewst. (Pa.) 42 219 
 
 Funck V. Elevator Co., 142 Iowa, 621 568 
 
 Funke v. Dreyfus & Co., 34 La. Ann. 80-1882 686 
 
 G 
 G. & J. Tire Co. v. G. J. G. Motor Car Co., 39 App. D. C. 508-1913. . .406, 420, 
 
 437, 453 
 Gage-Downs Co. v. Featherbone Corset Co., 83 Fed. 213-1897 (Headnote) . . 228 
 
 Gaines v. Carlton Imp. Co., 27 App. D. C. 571 436, 460 
 
 Gaines v. Knecht, 27 App. D. C. 530 435, 450 
 
 Gaines v. Leslie, 25 Misc. Rep. 20, 54 N. Y. Supp. 421 638 
 
 Gaines & Co. v. Rook Springs Distilling Co., 226 Fed. 531 (C. C. A. 6th Cir., 
 
 1915) 446, 448, 465 
 
 Gaines & Co. v. Sroufe, 117 Fed. 965 571, 572 
 
 Gaines, W. A., & Co. v. E. Whyte G. F. & W. Co., 107 Mo. App. 607 414 
 
 Gambrill Mfg. Co., C. A., v. Waggoner-Gates M. Co., 38 App. D. C 532 447 
 
 Gannett v. Rupert, 127 Fed. 962-1904 (C. C A. 2d Cir.), rev'g 119 Fed. 221 . 537, 540 
 
 Gamier v. Rossman, 195 Fed. 175 394, 406 
 
 Garrett, W. E., & Sons v. T. H. Garrett & Co., 78 Fed. 472-1896, 24 C. C A. 
 
 173 117, 138, 177, 648. 
 
xxxviii Table of Cases 
 
 PAGE 
 
 Garst V. Charles, 187 Mass. 144, 72 N. E. 839 360 
 
 Garst V. Hall & Lyon Co., 179 Mass. 588-591-1901 379 
 
 Gartside v. Outram, 3 Jur. N. S. 39-1856 312 
 
 Gato V. El Modelo Cigar Mfg. Co., 6 L. R. A. 823-1889, 25 Fla. 886 662 
 
 Gebbie v. Stitt, 82 Hun (N. Y.), 93-1894, 31 N. Y. Supp. 102 (Gen. T. 4th 
 
 Dept.) 193, 216 
 
 Gee V. Pritchard, 2 Swanst. 403-1818 473, 481 
 
 General Electric Co. v. Anglo-American Incandescent Light Co., 114 Mo. Dec. 8 437 
 
 General Electric Co. v. Re-new Lamp Co., 128 Fed. 154 406 
 
 George v. Smith, 52 Fed. 830 412 
 
 Germer Stove Co.' v. Art Stove Co., 150 Fed. 141-1907 (C. C. A. 6th Cir.) .... 599 
 
 Gessler v. Grieb, 80 Wis. 21-1891, 48 N. W. 1098 i. . . 270 
 
 Gibblett v. Read, 9 Mod. 459-1743 32, 302 
 
 Gilbert V. Mickle, 4 Sandf. Ch. (N. Y.) 357 488 
 
 Gilka V. Mihalovitch, 50 Fed. 427-1892 (C. C. Ohio) 708 
 
 Gillis V. Hall, 2 Brewst. (Pa.) 342-1869 40 
 
 Gillott V. Esterbrook, 48 N. Y. 374-1872, 47 Barb. (N. Y.) 455-1867 105, 408, 703 
 
 GiUott V. Kettle, 3 Duer (N. Y.), 624-1854 105-254 
 
 Gilly V. Hirsch, 122 La. 966 488, 550 
 
 Ginn & Co. v. Appolo Publishing Co., 115 Fed. 77^ 524 
 
 Ginesi v. Cooper & Co., 14 Ch. Div. 596-1880 34, 52, 53, 54 
 
 Giragosian v. Chutjian, 194 Mass. 504-1907, 80 N. E. 647-1907 598, 720 
 
 Given v. N. Y. Athletic Club, 42 App. D. C. 558 449 
 
 Glaser v. St. Elmo Co., 175 Fed. 276 534 
 
 Glen Cove Mfg. Co. v. Ludeling, 22 Fed. 823-1885 (C. C. S. D. N. Y.) 98 
 
 Glen & HaU Mfg. Co., The, v. C. S. Hall, 61 N. Y. 226-1874 113, 114 
 
 Glencoe Land, etc., Co. v. Hudson Brothers, etc., Co., 138 Mo. 439-1896, 40 
 
 S. W. 93, 36 L. R. A. 804 335, 342 
 
 Glendon Iron Co. v. Uhler, 75 Pa. St. 467-1874 204 
 
 Glenny v. Smith, 2 Drew. & Sm. 476-1865 87, 88, 109 
 
 Globe & R. F. I. Co. v. Firemen's F. F. I. Co., 97 Misc. 148-1910 339 
 
 Globe-Wernicke Co. v. Brown & Besly, 121 Fed. 90-1902 (C. C. A. 7t\ Cir.). 15, 
 
 276, 277, 394 
 Globe-Wernicke Co. v. Fred Macey Co., 119 Fed. 696-1902 (C. C. A. 6th Cir.) . 276 
 
 Gluckman v. Strauoh, 99 App. Div. (N. Y.) 361-1904, 91 N. Y. Supp. 223 684 
 
 Godlllot V. American Grocery Co., 71 Fed. 873-1896 (C. C. N. J.) 102, 407 
 
 Godillot V. Harris, 81 N. Y. 263-1880 380, 406 
 
 Goldmark v. Kreling, 35 Fed. £61 509 
 
 Goldsmith Silver Co. v. Savage, 229 Fed. 623 407 
 
 Gompers v. Buck's Stove & Range Co., 221 U. S. 418, 437 486 
 
 Goodman v. Bohls, 3 Tex. Civ. App. 183-1893, 22 S. W. 11 \\ 619 
 
 Goodwin v. Hamilton, 19 Pa. Co. Ct. 652-1897, 6 Pa. Dist. 705 112 
 
 Goodwin v. Ivory Soap Co., 18 R. P. C. 389-1901 \\ 595 
 
 Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 
 
 598-1888, 32 L. ed. 538, 9 Sup. Ct. 166 144 
 
 Goodyear Rubber Co. v. Day, 22 Fed. 44-1884 (C. C. E. D. Mo.) 641 
 
 Gorham Mfg. Co., In re, 41 App. D. C. 263 ! ! 434 
 
 Gorhara v. Emery & Co., 92 Fed. 779, aff'd 104 Fed. 243 ' ' 315 
 
 Gorham Mfg. Co. v. Schmidt, 196 Fed. 955 (D. C. S. D. N. Y., 1912) .'. 604 
 
 Gorham Mfg. Co. v. Weintraub, 196 Fed. 957, 180 Fed. 639, 176 Fed. 927. .382, 
 
 414, 464, 572, 573 
 
Table of Cases xxxix 
 
 PAGE 
 
 Gott V. Berea College, 156 Ky. 376 '. 366 
 
 Gould V. Head, 41 Fed. 240 568 
 
 Gouraud v. Trust, 6 Thomps. & Cook (N. Y.), 133-1875 158 
 
 Gout V. Alepoglu, 6 Beav. 69-1833 108 
 
 Gove V. Condon, 40 L. R. A. 382 354 
 
 Graham v. Plate, 40 Cal. 593-1871, 6 Am. Hep. 639 716, 717, 725, 727 
 
 Graham v. St. Charles S. R. Co., 47 La. Ann. 214-1895 367 
 
 Grand Hotel Co. v. Wilson, 21 R. P. C. 117-1903 218 
 
 Grand Lodge of the Ancient Order of United Workmen of the State of Iowa v. 
 
 Graham,' 31 L. R. A. 133-1895, 96 Iowa, 592, 65 N. W. 837 164 
 
 Grand Lodge, Knights of Pythias v. Creswill, 128 Ga. 775-1907, 58 S. E. 163. . 187 
 Grand Rapids School Furniture Co. v. Haney School Furniture Co., 92 Mich. 
 
 558-1892, 52 N. W. 1009, 16 L. R. A. 721 492 
 
 Greacen v. Bell, 115 Fed. 553-1902 (C. C. N. J.) 50, 51 
 
 Great Union Tea Co. v. Dodds, 164 Mich. 50-1910 319 
 
 Green, Re, 8 Pat. Off. Gaz. 729-1875 227 
 
 Green v. Button, 2 C, M. & R. 707 327, 338 
 
 Green v. Folgham, 1 Sim. & St. 398-1823 300, 315 
 
 Greene, Tweed & Co. v. Mfrs. Belt Hook Co., 158 Fed. 640-1906 (C. C. 111.). 413 
 
 Gregory v. Duke of Brunswick, 6 M. & G. 953-1844 345 
 
 Gretsch Manufacturing Company, Fred, v. Michael E. Schoening, & Dudley 
 
 Field Malone, 6 Trade-Mark Rep. 224 466 
 
 Grierson v. Birmingham Hotel Co., 18 R. P. C. 158 668 
 
 Grocers Journal Co. v. Midland Pub. Co., 127 Mo. App. 356 416 
 
 Grocers Supply Co. v. Dupius, 219 Mass. 576 (107 N. E. 389) 269 
 
 Grow V. SeUgman, 47' Mich. 607-1882, 11 N. W. 404 42 
 
 Gruber Aknanack Co. v. Swingley, 103 Md. 362, 63 Atl. 684-1906 686 
 
 Guardian Fire and Life Assur. Co. v. Guardian and Gen. Ins. Co., 50 L. J. Ch. 
 
 N. S, 253-1880 62l 
 
 Guethler v. Altman, 26 Ind. App. 587 366 
 
 Gulden v. Chance, 182 Fed. 303-1910 (C. C. A. 3d Cir.) 242, 252 
 
 Gumbinner, Matter of, 92 Misc. (N. Y.) 104 65 
 
 Gunter v. Astor, 4 J. B. Moore, 12-1819 327, 339 
 
 Guth V. Guth, 224 Fed. 934-1915 (C. C. A. 4th Cir.) 159 
 
 Guth Chocolate Co. v. Guth, 215 Fed. 750-765 133 
 
 H 
 
 Hainque v. Cyclops Iron Works, 136 Cal. 361-1902, 68 Pac. 1014 17 
 
 Hall's Appeal, 60 Pa. St. 458-1869, 100 Am. Deo. 584 47, 52 
 
 Hall V. Barrows, 9 Jur. N. S. 483-1863, 4 De G. J. & S. 160-1863 25, 60 
 
 HaU Safe Co. v. Herring-Hall-Marvin Safe Co., 31 App. D.' C. 498 450 
 
 Hall's Safe Co. v. Herring-HaU-Marvin Safe Co., 146 Fed. 37-1906 (C. C. A. 
 
 6th Cir.), 208 U. S. 554-1908 639 
 
 HaU v. Ingram, 28 App. D. C. 454 436 
 
 Hall v. Stem, 20 Fed. 788 (C. C. S. D. N. Y.) 718 
 
 Hall Signal Co. v. Railway Signal Co., 163 Fed. 907 236 
 
 Hallett V. Cumston, 110 Mass. 29-1872 61 
 
 Hamilton-Brown Shoe Co. v. Wolf Bros. Co., 240 U. S. 251, 36 Sup. Ct. Rep. 269 . 401, 
 
 441, 715, 728 
 HamUton Mfg. Co. v. Tubbs Mfg. Co., 216 Fed. 401-1908 308, 310 
 
xl Table of Cases 
 
 PAGE 
 
 Hammer v. Barnes, 26 How. Pr. 174-1863 300 
 
 Hanna v. Andrews, 50 Iowa, 462-1879 52 
 
 Hannis Distilling Co. v. Geo. W. Torrey Co., 32 App. D. C. 530 696 
 
 Hanover Star Milling Co. v. Allen & Wheeler Co., 208 Fed. 613-1913, 125 C. C. 
 
 A. 515, affd. 240 U. S. 403-1915 30, 390, 397, 418, 419, 700 
 
 Hanover Star Milling Co. v. Metcalf, 240 U. S. 403-1916. .26, 28, 29, 74, 76, 206, 
 
 378, 419, 696, 699 
 
 Hansen v. Siegel-Cooper Co., 106 Fed. 691-1900 (C. C. S. D. N. Y.) 72, 644 
 
 Hardy v. Cutter, 3 U. S. Pat. Gaz. 468-1873, 16 Phila. 182 156 
 
 Harper v. Holman, 84 Fed. 222 571 
 
 Harper & Bros. v. Lare, 103 Fed. 203-1900 (C. C. A. 3d Cir.) 527 
 
 Harper v. Pearson, 3 L. T. N. S. 547-1861 15, 113 
 
 Harper v. Ranous, 67 Fed. 904 528 
 
 Harrison v. Gardner, 2 Mad. 198-1817 60 
 
 Harrison v. Glucose Co., 116 Fed. 304 296 
 
 Harrison v. Taylor, 11 Jur. N. S. 408-1865 704, 732, 733 
 
 Hart V. Aldridge, 1 Cowp. (N. Y.) 54^1774 327, 339 
 
 Hartnett v. Plumbers, etc., 169 Mass. 229 340 
 
 Hartzler v. Goshen Churn & Ladder Co., 55 Ind. App. 455-1914, 104 N. E. 
 
 Rep. 34 171, 172, 622 
 
 Harvey, G. F., Co. v. National Drug Co., 75 App. Div. (N. Y.) 103-1902, 77 
 
 N. Y. Supp. 674 308, 320 
 
 Haskins v. Royster, 70 N. C. 601-1874 339, 342 
 
 Haslinghuis v. P. Harrington Sons, 237 Fed. 301 (D. C. N. H., 1916) (7 T. M. 
 
 Rep. 4) 269 
 
 Havana Commerical Co. v. Nichols, 155 Fed. 302-1907 (C. C. S. D. N. Y.) . . 708 
 
 Havens v. Burns, 188 Fed. 441 570 
 
 Hawker v. Stourfield Park Hotel Co., Wkly. Notes, 51-1900 505 
 
 Hazard v. Caswell, 93 N. Y. 259 218 
 
 Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 111. 494-1892, 30 N. 
 
 E. 339 39, 50, 165, 182, 383. 
 
 Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 137 111. 231-1891, 28 N. E. 
 
 248 152 
 
 Hazlett V. Pollack Stogie Co., 188 Fed. 494, aff'd 195 Fed. 28 683 
 
 Heath v. American Book Co., 97 Fed. 533-1899 (C. C. W. Va.) 349 
 
 Heaton, In re, L. R. 27 Ch. Div. 670-1884 ...7m 
 
 Hegeman v. Hegeman, 8 Daly (N. Y.), 1-1880 218 682 
 
 Heide v. WaUace & Co., 136 Fed. 346-1905 (C. C. A. 3d Cir.) at p. 347. . . . .88, 89 
 G. Heilman Brewing Co. v. Independent Brewing Co., 191 Fed. 489.. 430 468 
 
 570 588 
 
 Heinisch's Sons' Co. v. Boker, 86 Fed. 765-1898 (C. C. S. D. N. Y.) ' 623 
 
 Heinz v. Lutz Bros., 146 Pa. St. 592-1891, 23 Atl. 314 .273 594 
 
 Helmore v. Smith, C. A. 1886, 35 Ch. Div. 449 " ^ ' ^ ^ 6O3' 559 
 
 Heminway v. Heminway, 58 Conn. 443-1896 32i 
 
 Hendriks v. Montagu, 60 L. J. (Ch.) N. S. 456-1881 .640 641 
 
 Hennessy v. Branuschweiger & Co., 89 Fed. 664-1898 (C. C. Cal.) 425' 429 
 
 Hennessy v. Dompe, 19 R. P. C. 333-1902 .. . . ' 239 
 
 Hennessy v. Herrmann, 89 Fed. 669-1898 (C. C. N. D. Cal.) .649 574 
 
 Hennessy v. Hogan, 6 W., W. & A'B. 225 .' 254 
 
 Hennessy v. Neary, 19 R. P. C. 36-1901 '255 
 
 Hennessy v. White, 6 W., W. & A'B. 216-1869 (Victoria) ' 264 
 
Table op Cases xli 
 
 PAGE 
 
 Hennessey v. Wine Growers' Assn., 212 Fed. 308-1914 (D. C. S. D. N. Y.). .604, 721 
 Hennessey v. WUmerding-Loewe Co., 103 Fed. 90-93-1900 (C. C. N. D. CaJ,). .713, 
 
 714, 728 
 
 Henry v. A. B. Dick Co., 224 U. S. 1-1911 299 
 
 Herbst, Re, 44 App. D. C. 203 462 
 
 Herbst, Be, 32,App. D. C. 269 452, 454 
 
 Herbst Importing Co., In re, 30 App. D. C. 297 .'435 
 
 Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U. S. 554-1908 ... 64, 67, 
 
 155, 204, 655, 656 
 
 Heublein v. Adams, 125 Fed. 782 397 
 
 Heusner v. Baugher, 248 Pa. 536, 94 Atl. 225 250 
 
 Hier v. Abrahams, 82 N. Y. 519-1880 386, 398, 662 
 
 Higgins, C. S., Co. v. Higgins Soap Co., 144 N. Y. 462-1895, 18 N. E. 714, 
 
 39 N. E. 490, 27 L. R. A. 42. . . .41, 50, 124, 134, 147, 153, 162, 175, 182, 
 
 185, 193, 646, 647, 655 
 Hildreth v. MoCaul, 70 App. Div. (N. Y.) 162-1902 (1st Dept.), 74 N. Y. Supp. 
 
 1072 58 
 
 Hildreth v. McDonald Co., 164 Mass. 16-1895, 41 N. E. 56 271, 631 
 
 Hildreth v. Norton, 159 Fed. 428-1908 (CCA.) 236 
 
 Hildreth v. Sparks Mfg. Co., 99 Fed. 484-1899 (C C S. D. N. Y.) 549 
 
 Hilker Mop Co., Edward, v. U. S. Mop Co., 191 Fed. 618 557 
 
 Hill V. Hart Davies, L. R. 21 Ch. Div. 798-1882 475 
 
 Hill V. Lockwood, 32 Fed. 389-1887 (C C E. D. Wis.) 218 
 
 Hillside Chemical Co. v. Mmison & Co., 146 Fed. 198-1906 (C. C. Conn.) 638, 667 
 
 Hilson Co. V. Foster, 80 Fed. 896-1897 (C C S. D. N. Y.) 25 
 
 Hine v. Lart, 10 Jur. 106 401 
 
 Hiram Holt Co. v. Wadsworth, 41 Fed. 34 395 
 
 Hires, Chas. E., Co. v. Consumers' Co., 100 Fed. 809-1900 (C C. A. 7th Cir.).252, 
 
 650 
 Hires, Charles E., Co. v. George A. Hires, 182 Pa. St. 346-1897, 37 Atl. 1117 
 
 146, 148 
 
 Hires, Chaa. E., Co. v. Simpkins, 179 Fed. 1012 572, 573 
 
 Hirst V. Denham, L. R. 14 Eq. Cas. 542-1872 227, 401 
 
 Hobbs V. Francais, 19 How. Pr. (N. Y.) 567-1860 671, 683 
 
 Hoff, In re, 33 App. D. C 233 435, 447 
 
 Hogg V. Kirby, 8 Ves. Jr. 215-1803 5, 10 
 
 Holbrook v. Nesbitt, 163 Mass. 120-1895, 39 N. E. 794 (from headnote) 87 
 
 Holden, Admr. v. M'Makin, 1 Pars. Sel. Cas. (Pa.) 270-1847 60 
 
 Holeproof Hosiery Co. v. Richmond Hosiery Mills, 167 Fed. 381 577 
 
 Holeproof Hosiery Co. v. Wallach Bros., 167 Fed. 373, aff'd s. c. 172 Fed. 859, 
 
 (C. C. A.) final hearing 190 Fed. 606, 192 Fed. 534 244, 394, 605, 694 
 
 HoUenbeck v. Restine, 114 Iowa, 358 354 
 
 HoUoway v. Clent, 20 R. P. C 525-1903 36 
 
 Holloway v. HoUoway, 13 Beav. 209-1850 72, 73, 117, 148 
 
 Holmes, Booth & Haydens v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 
 
 278-1870 50, 146, 182, 612, 615, 616, 625, 695 
 
 Holmes, Wilkop, v. Boyce, 61 Misc. (N. Y.) 126-131, aff'd no. op. 131 A. D. 
 
 (N. Y.) 922 306 
 
 Hohnes v. Hurst, 174 U. S. 82-84 508, 511 
 
 Holt V. Menendez, 23 Fed. 869 413 
 
 Hooker C. & M. Co. v. Hooker, 95 Atl. 649 372 
 
xlii Table op Cases 
 
 PAOB 
 
 Hookham v. Pottage, L. R. 8 Ch. App. 91-1872 87, 88, 101 
 
 Hopkins, In re, 29 App. Cas. (D. C.) 118-1907 230, 439, 445 
 
 Hopkins Amusement Co. v. Frohman, 103 111. App. 613-1902 20, 535 
 
 Hopkins Amusement Co. v. Frohman, 202 111. 541 530 
 
 Horlick's Malted Milk Co. v. A. Spiegel Co., 155 Wis. 201-1913 605 
 
 Horaburgh, Matter of, 63 L. J. Ch. 237 , 397 
 
 Horton Mfg. Co. (N. Y.) v. Horton Mfg. Co. (Ind.), 18 Fed. 816-1883 40 
 
 Hostetter v. Adams, 10 Fed. 838-1882 (C. C. S. D. N. Y.) 256 
 
 Hostetter Co. v. Becker, 73 Fed. 297-1896 (C. C. S. D. N. Y.) 255, 604 
 
 Hostetter Co. v. Brueggeman-Reinert Distilling Co., 46 Fed. 188-1891 (C. C. 
 
 E. D. Mo.) 256, 604 
 
 Hostetter v. Brunn, 107 Fed. 707-1901 (C. C. S. D. Cal.) 606 
 
 Hostetter Co. v. Conron, 111 Fed. 737rl901 (C. C. S. D. N. Y.) 604, 605 
 
 Hostetter v. Fries, 17 Fed. 620-1883 (C. C. S. D. N. Y.) 145 
 
 Hostetter Co. v. E. G. Lyons Co., 99 Fed. 734 576 
 
 Hostetter v. Martinoni, 110 Fed. 524-1901 (C. C. N. D. Cal.) 256, 669 
 
 Hostetter Co. v. Schneider, 107 Fed. 705-1900 (C. C. E. D.) 604 
 
 Hostetter Co. v. Sommers, 84 Fed. 333-1897 (C. C. S. D. N. Y.) 256, 593, 604 
 
 Hovey v. Rubber Tip Pencil Co., 57 N. Y. 119-1874 494 
 
 Howard v. Henriques, 3 Sandf . (N. Y.) 725-1851 15, 84, 98 
 
 Howard v. Taylor, 90 Ala. 241-1889, 8 So. 36 32 
 
 Howard Dustless Duster Co. v. Carleton, 219 Fed. 913 241, 242 
 
 Howe V. Searing, 6 Bosw. (N. Y.) 354^1860 60 
 
 Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118-1905, 49 L. ed. 
 
 972, 25 Sup. Ct. 609 13, 133, 137, 154, 161, 173, 174, 175 
 
 Howes, S., Co. V. Howes Grain Cleaner Co., 24 Misc. (N. Y.) 83-1898, 52 N. Y. 
 
 Supp. 468. . : 64, 732 
 
 Howes, S., Co. V. Howes Grain Cleaner Co., 19 App. Div. (N. Y.) 625-1897, 
 
 46 N. Y. Supp. 165 180 
 
 Hoxie V. Chaney, 143 Mass. 592, 10 N. E. 713 38, 40, 47, 53 
 
 Hoyt V. Hoyt, 143 Pa. St. 623-1891, 22 Atl. 755, 13 L. R. A. 343 686 
 
 Hoyt V. J. T. Lovett & Co., 71 Fed. 173 381 
 
 Hoyt V. Hoyt, 143 Pa. St. 623-1891, 22 Atl. 755, 13 L. R. A. 343 244 
 
 Hudson V. Osborne, 39 L. J. Ch. N. S. 79-1869 49 
 
 Huggonson Case, 2 Atk. 488-1742 481 
 
 Hughes V. Samuels Bros., 159 N. W. 589 (Iowa Supreme Court, Oct. 17, 
 
 1916 497 
 
 Hughes V. Alfred H. Smith Co., 205 Fed. 302, aff'd 209 Fed. 37. .394, 397, 409, 
 
 448, 457 
 
 Hump Hairpin Co. v. De Long Hook & Eye Co., 39 App. D. C. 484 431 436 
 
 Hunt V. Ehrmann, 27 R. P. C. 512 '553 
 
 Hunt V. N. Y. Cotton Exchange, 205 U. S. 322-1907, 51 L. ed. 821, 7 Sup. Ct. 
 
 529 300 
 
 Hunt V. Simmons, 19 Mo. 583 3gg 
 
 Huntley & Palmer v. Reading Biscuit Co., Ltd., 10 R. P. C. 277-1893. . . .214 640 
 
 Huskie v. GrifBn, 75 N. H. 345-1909 333^ 365'^ 37I 
 
 Hutchinson v. Nay, 187 Mass. 262 ' 3^7 
 
 Hutchinson, Pierce & Co. v. Loewy, 217 U. S. 457 4gl 
 
 Hutchinson, Pierce & Co. v. Loewy, 163 Fed. 42 43g 
 
 Hutton V. Walters, 132 Tenn. 527-1915 334^ 357 
 
 Huwer v. Dannenhoffer, 82 N. Y. 499-1880 ' 42 
 
Table of Cases xliii 
 
 PAGE 
 
 Hygeia DistUled Water Co. v. Consolidated Ice Co., 144 Fed. 139-1906 (C. C. 
 
 Pa.), 151 Fed. 10-1907 (C. C. A. 3d Cir.) 73 
 
 Hygeia Distilled Water Co. v. Hygeia Ice Co., 70 Conn. 516 606 
 
 I 
 
 Ibbotson V. Peat, 3 H. & C. 644 325 
 
 Ide V. Engine Co., 31 Fed. 901 490 
 
 lUinois Cent. R. Co. v. Caffrey, 128 Fed. 770-1904 (C. C. Mo.) 344, 553 
 
 Illinois Commission Co. v. Cleveland Tel. Co., 119 Fed. 301 553 
 
 Imperial Mfg. Co. v. Schwartz, 105 111. App. 525-1903 172, 180, 181 
 
 Improved Fig Syrup Co. v. California Fig Syrup Co., 4 C. C. A. 264-1893, 54 
 
 Fed. 175 211 
 
 Independent Baking Powder Co. v. Boorman, 175 Fed. 448. .382, 386, 417, 464, 697 
 
 Independent Breweries Co., In re, 39 App. D. C. 118 435, 437 
 
 Indian Portland Cement Co., In re, 30 App. D. C. 463 435 
 
 Indurated Fibre Co. v. Amoskeag Indurated F. W. Co., 37 Fed. 695 396 
 
 Industrial Press v. W. R. C. Smith Pub.Co., 164 Fed. 842-1908 (C. C. A.) .572, 575 
 
 Inland Rev. Commissioners v. MuUer & Co., App. Cas. 217-1901 43 
 
 Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946-1881 395, 597, 606, 690 
 
 International Cheese Co. v. Phenix Cheese Co., 118 App. Div. (N. Y.) 499-1907, 
 
 103 N. Y. Supp. 362 (3d Dept.) 227, 402 
 
 International Committee, Y. W. C. A. v. Y. W. C. A. of Chicago, 194 111. 194- 
 
 1902, 62 N. E. 551, 56 L. R. A. 888 167, 621 
 
 International Food Co. v. Price Baking Powder Co., 37 App. D. C. 137 439 
 
 International Plasmon, Ltd., v. Plasmonade, Ltd., 22 R. P. C. 543-1905 (Ch. 
 
 Div.) 97 
 
 International Silvet Co. v. W. H. Rogers Corp., 66 N. J. Eq. 140-1904, 57 Atl. 
 
 1037 173, 733, 734 
 
 International Register Co. v. Recording Fare Register Co., 151 Fed. 199-1907 
 
 (C. C. A. 2d Cir.) 314 
 
 International Silver Co. v. Rogers, 72 N. J. Eq. 933, 67 Atl. 105-1907, reversing 
 
 63 Atl. 977 129, 132, 144, 145 
 
 International Silver Co. v. Wm. H. Rogers Corp., 67 N. J. Eq. 646-1905, 60 Atl. 
 
 187, rev'g 66 N. J. Eq. 119, 57 Atl. 1037-1904 130, 132, 137, 734 
 
 International SUver Co. v. Wm. G. Rogers, 113 Fed. 526-1902, afE'd 118 Fed. 
 
 133-1902 132 
 
 International Silver Co. v. Simeon L. & George. H. Rogers Co., 110 Fed. 955- 
 
 1901 (C. C. Conn.) 131, 642 
 
 International Silver Co. v. Rogers Bros. Cutlery Co., 136 Fed. 1019-1905 (C. C. 
 
 W. D. Mich. 5th Dept.) 132 
 
 International Tooth Crown Co. v. Carmichael, 44 Fed. 350 490 
 
 International Trust Co. v. International Loan & Trust Co., 153 Mass. 271-1891, 
 
 26 N. E. 693, 10 L. R. A. 753 . , 171 
 
 Investor Publishing Co. of Mass. v. Dobinson, 72 Fed. 603-1896, modified in 82 
 
 Fed. 56-1897 (C. C. S. D. Cal.) 50, 170, 525, 540, 571, 577, 578, 621 
 
 Iron-Ox Remedy Co., Ltd., v. Co-operative Wholesale Soc, Ltd., 24 R. P. C. 
 
 425-1907 (Ch. Div., Parker, J.) 97 
 
 Isaacs V. Daly, 39 N. Y. Superior Ct. 611 532 
 
 Isaacson v. Thompson, 41 L. J. Ch. N. S. 101-1871 705 
 
 Italian Swiss Colony v. Italian Vineyard Co., 158 Cal. 252, 110 Pac. 913. .388, 405, 
 
 406 
 
xliv Table op Cases 
 
 J 
 
 PAGE 
 
 Jackson v. Stairfield, 137 Ind. 592 337 
 
 Jackson Corset Co. v. Cohen, 38 App. D. C. 482 377, 455 
 
 Jacobs V. Beecham, 221 U. S. 263 ., 683 
 
 James v. James, 13 Eq. 421-1872 303 
 
 Jameson v. Clarke, 19 R. P. C. 225 563 
 
 Jamieson v. Jamieson, 15 R. P. C. 169-1897 142 
 
 Jaysee Corset Co., In re, 201 Fed. 779 378 
 
 Jenkins Bros. v. Kelly & Jones Co., 212 Fed. 328 732 
 
 Jennings v. Johnson, 37 Fed. 364-1888 (C. C. Me.) 219, 268, 682, 685 
 
 Jesse L. Laskey Feature Play Co. v. Wm. Fox V. Co., 93 Misc. 364 352 
 
 Jewelers Mercantile Agency v. Jewelers Publishing Co., 155 N. Y. 241. . . .510, 511 
 Jewish Colonization Assn. v. Solomon & Germanski, 125 Fed. 994-1903 (C. C. 
 
 N. Y.) 570, 577, 637, 638 
 
 Jewish Colonization Assn. v. Solomon & Germansky, 154 Fed. 157 398, 402 
 
 Johnson v. Bauer & Black, 82 Fed. 662-1897 246 
 
 Johnson v. Brandau, 32 App. D. C. 348 439, 450 
 
 Johnson v. Helleley, 2 De G. J. & S. 446-1864 52 
 
 Johnson v. Hitchcock, 3 N. Y. Supp. 680-1888 (Sup. Ct. Sp. T.) 112 
 
 Johnson v. Whelan, 33 App. D. C. 4 431 
 
 Johnson & Johnson v. Seabury & Johnson, 69 N. J. Eq. 696-706, 61 Atl. 5- 
 
 1905, 71 N. J. Eq. 750, 67 Atl. 36-1907 673, 690, 692 
 
 Johnson Co. v. Smith & Co., 37 App. D. C. 107 436 
 
 Johnson Educator Food Co. v. Sylvanus Smith & Co., Inc., 37 App. D. C. 107. 452 
 
 Johnston & Co. v. Orr Ewing & Co., L. R. 7 App. Cas. 219-25-1882 108, 587 
 
 Jones V. Goodrich, 17 111. 380 114 
 
 Jones V. Hallworth, 14 R. P. C. 225-1897 .• 241 
 
 Jones & Jester v. Blocker, 43 Ga. 331-1871 339 
 
 Jones V. Stanly, 76 N. C. 355-1877 337, 338, 340, 341 
 
 Joyce V. Gt. Northern Ry. Co., 100 Minn. 225, 229-1907 363, 371 
 
 Julian V. Hoosier Drill Co., 78 Ind. 408-1881 231, 698, 702 
 
 Jurgens, Andrew, Co. v. Woodbury, 56 Misc. (N. Y.) 404, 106 N. Y. Supp. 
 
 571-1907 (Sup. Ct. N. Y. Sp. T.) 40 
 
 Kahn v. W. A. Gaines & Co., 161 Fed. 495 (C. C. A.) 413 
 
 Kann v. Diamond Steel Co., 89 Fed. 706-1898 (C. C. A. 8th Cir.), 32 C. C. A. 
 
 324 .624, 625 
 
 Kansas Milling Co. v. Kansas Flour Mills Co., 89 Kansas, 855-1913, 133 Pac. 
 
 Rep. 542 188, 615, 620 
 
 Kathreiner's Malzkaffee v. Pastor Kneipp Med. Co., 82 Fed. 321-1897 27 C 
 
 C. A. 351, 53 U. S. App. 425 , 247, 412, 415 
 
 Kaufman v. Kaufman, 123 N. Y. Supp. 699 I33 
 
 Kayser v. Italian Co., 160 App. Div. N. Y. 607-1914. .197, 401, 440, 442, 461 
 
 465 
 Keahon, Matter of, 60 Misc. (N. Y.) 508 g5 
 
 Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467 394 
 
 Keeble v. Hickeringill, 11 East, 574, Holt, 14 324, 325, 326, 327, 329 
 
 Keller v. B. F. Goodrich Co., 117 Ind. 556-1888, 19 N. E. 196 237,' 622 
 
 Kelley v. Ypsilanti Dress Stay Co., 44 Fed. 23 492 
 
Table of Cases xlv 
 
 PAGE 
 
 Kellogg Toasted Com Flake Co. v. Quaker Oats Co., 235 Fed. Rep. 657-665. . 600, 
 
 603 
 
 Kelly V. Byles, 13 Ch. Div. 682 515 
 
 Kennedy v. Holt, 128 U. S. 514 409 
 
 Kennedy v. Press Pub. Co., 41 Hun (N. Y.), 422-1886 499 
 
 Kentucky Distilleries Co. v. Old Lexington Club Distilling Co., 31 App. D. C. 
 
 223 438 
 
 Kentucky Distilleries and Warehouse Co. v. Wathen, 110 Fed. 641-1901 (C. C. 
 
 Ky.) 94 
 
 Kerry v. Toupin, 60 Fed. 272 410 
 
 Kessler & Co. v. Goldstrom, 177 Fed. 392-1910 581, 603, 604, 721 
 
 Ketterer v. Armour, 200 Fed. 322 635 
 
 Keystone Type Foundry v. Portland Pub. Co., 180 Fed. 301 721 
 
 Kidd V. Horry, 28 Fed. 773-1886 (C. C. Pa.) 483, 484, 488, 489, 495, 499 
 
 Kidd V. Johnson, 100 U. S. 617-1879, 25 L. ed. 769 40, 43, 47, 49 
 
 Kieman v. Manhattan Quotation Telegraph Co., 50 How. Pr. (N. Y.) 194- 
 
 1876 294, 300 
 
 Kildow Cigar Co., T. M., v. George B. Sprague Cigar Co., 35 App. D. C. 345- 
 
 1910 385, 437 
 
 King & Co. V. GiUard, 21 R. P. C. 589 243 
 
 King & Co., Ltd., v. Gillard & Co., Ltd., 22 R. P. C. 327-1905, aff'g 21 R. P. C. 
 
 589 273 
 
 King & Co., C. L., v. Inlander, 133 Fed. 416 571 
 
 Kipling V. Fenno, 106 Fed. 692 523 
 
 Kipling V. G. P. Putnam's Sons, 120 Fed. 631, 65 L. R. A. 873. .376, 512, 516, 524, 
 
 619 
 
 Klaw V. General Film Co., 154 N. Y. Supp. 988-1915 533 
 
 Kline v. Eubanks, 109 La. 241-1802, 33 So. 211 335 
 
 Klingel's Pharmacy v. Sharpe & Doelune, 104 Md. 218 (7 L. R. A. N. S. 976) . 365 
 
 Klotz V. Hecht, 73 Fed. 822-1896 (C. C. S. D. N. Y.) 268 
 
 Knickerbocker Ice Co. v. Gardiner Dairy Co., 107 Md. 556 (16 L. R. A. N. S. 
 
 746) 365, 372 
 
 Knights of Macabees v. Searle, 75 Neb. 285, 106 N. W. 448 187 
 
 Knight & Sons v. Crisp & Co., 21 R. P. C. 670-1904 669 
 
 Knott V. Morgan, 2 Keene, 213-1836 6, 8, 193, 621 
 
 Koehler v. Sanders, 122 N. Y. 65, 4 L. R. A. 576, 25 N. E. 235 193, 230 
 
 Kohler Mfg. Co. v. Beeshore, 8 C. C. A. 215, 59 Fed. 572 415, 680 
 
 KoUey V. Robinson, 187 Fed. 415 369 
 
 Kostering v. Seattle Brewing & Malting Co., 116 Fed. 620-1902 (C. C. A. 9th 
 
 Cir.) .' 267, 587 
 
 Krauss v. Jos. R. Peebles' Sons Co., 58 Fed. 585-1893 (C. C. Ohio) . . .385, 676, 678 
 
 Krigbaum v. Sbarbaro, 23 Cal. App. 427 (138 Pac. 364) 363 
 
 Kronthal Waters, Ltd., v. Becker, 137 Fed. 649-1905 (C. C. E. D. Pa.) 253 
 
 Kroppf V. Furst, 94 Fed. 150 582 
 
 L 
 
 Labouchere v. Dawson, L. R. 13 Eq. Cas. 322-1872 '. 52, 55, 316 
 
 Lalance & Grosjean Mfg. Co. v. National Enameling & Stamping Co., 109 Fed. 
 
 317-1901 (C. C. S. D. N. Y.) 240 
 
 Lamb v. Evans, 3 Ch. 462-1892, aff'd, 1 Ch. 218-1893, 62 L. J. Ch. 404. .307, 312 
 
xlvi Table of Cases 
 
 PAGE 
 
 Lamb Knit Goods Co. v. Lamb Glove & Mitten Co., 120 Mich. 159-1899, 78 
 
 N. W. 1072, 44 L. R. A. 841 183, 621 
 
 Lambert Pharmacal Co. v. Bolton Chemical Corporation, 219 Fed. 325 603 
 
 Lament, Corlias & Co. v. Hershey, 140 Fed. 763-4-1905 (C. C. N. D. Pa.). ... 619 
 
 Lamont v. Leedy, 88 Fed. 72 392, 577 
 
 Lampert v. Judge Co., 238 Mo. 409-1914, 141 S. W. 1095 712, 735 
 
 Landespriv v. Hall & Ruokel, 36 App. D. C. 532 436 
 
 Landreth v. Landreth, 22 Fed. 41-1884 (C. C. Wis.) 138, 152 
 
 Lane v. Brothers and Sisters of the Evening Star Society, 120 Ga. 355-1904, 
 
 47 S. E. 951 164 
 
 Lang V. Green River Distilling Co., 33 App. D. C. 506 435 
 
 Lar6 et al. v. Harper Bros. 3d Cir., March, 1898, 86 Fed. 481, 30 C. C. A. 
 
 373 520 
 
 La Republique Francaise v. Schultz, 102 Fed. 153-1900 (C. C. A. 2d Cir.) 703 
 
 La Societe Anonyme des Anciens Etablissements, Panhard et Levafisor v. 
 
 Panhard-Levassor Motor Co., 18 R. C. P. 405-1901 180 
 
 Lauferty v. Wheeler, 11 Abbott's N. C. 220 394 
 
 Lawrence v. P. E. Sharplesa Co., 203 Fed. 762 422 
 
 Lawrence Mfg. Co. v. Lowell Hosiery Mills, 129 Mass. 325-1880 105, 408 
 
 Lawrence Mfg. Co. v. Tennessee Mfg., Co., 138 U. S. 537-1890, 34 L. ed. 997, 
 
 11 Sup. Ct. 396 68, 104, 202, 227, 279, 407, 610, 618, 619 
 
 Layton Pure Food Co. v. Church & Dwight Co., 182 Fed. 24 (C. C. A. 8th Ct.). .414, 
 
 420, 421, 578, 683, 697, 699 
 
 Lea v. Deakin, Fed. Cas. 8, 154-1879 220 
 
 Leach v. Scarff, 188 Fed. 446 393 
 
 Leacher v. Levy, 23 R. P. C. 117 563 
 
 Leahy, Kelly & Leahy v. Glover, 10 R. P. C. 141-1891 669 
 
 Leather Cloth Co. v. American Leather Co., 11 Jur. N. S. 513-1865, 4 De G. 
 
 J. & S. 137-1863, aff'd, 11 H. L. Cas. 523-1865. .22, 23, 25, 63, 212, 481, 
 
 676, 682, 688 
 
 Lee V. Haley, L. R. 5 Ch. App. Cas. 155-1869 87, 94, 147, 192, 193, 596, 621 
 
 Legal Aid Society v. Wage Earners' Legal Aid Assn., N. Y. L. J., April 21, 
 
 1908, Dowling, J 168 
 
 Leggott V. Barrett, 15 Ch. Div. 306-1880 52 
 
 Leidersdorf v. Flint, 50 Wis. 400-1880, 7 N. W. 252 .577, 586 
 
 Le Massena v. Storm, 62 App. Div. (N. Y.) 150-1901, 70 N. Y. Supp. 882. .478, 
 
 497, 499 
 
 Leonard v. Wells, L. R. 26 Ch. Div. 288 .397 
 
 Leonard v. White's G. L. Co., 38 Fed. 922 397 
 
 LePage Co. v. Russian Cement Co., 2 C. C. A. 555, 51 Fed. 941-1892, 17 L. R. 
 
 A. 354 50, 101, 286 
 
 Lepow V. Kottler, 115 App. Div. (N. Y.) 231-1906, 100 N. Y. Supp. 779 59 
 
 Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166- 
 
 1906, 30 L. ed. 710, 26 Sup. Ct. 425, aff'g 134 Fed. 571-1904, 67 C. C. A. 
 
 418 292, 636 
 
 Lever v. Goodwin, 4 Rep. Pat. Cas. 492-1887 724 
 
 Lever v. Goodwin, 36 Ch. Div. 1-1887 665 667 
 
 Lever Bros. v. Pasfield, 88 Fed. 484 ' 531 
 
 Levering Coffee Co. v. Merchants' Coffee Co., 39 App. D. C. 151 414 696 
 
 Levy V. Uri, 31 App. D. C. 441 ..." 437 
 
 Levy V. Walker, L. R. 10 Ch. Div. 436-1879 22, 88, 109 
 
Table op Cases xlvii 
 
 PAGE 
 
 Lewis V. Bloede, 202 Fed. 7 (C. C. A.) .361, 363 
 
 Lewis V. Langdon, 7 Simons, 421-1835 60 
 
 Liebig's Extract of Meat Co. v. Chemists Co-operative Society, 13 R. P. C. 635 . 583, 
 
 601 
 Liebig's Extract of Meat Co., Ltd., v. Libby, McNeill & Libby, 103 Fed. 87-1900 
 
 (C. C. N. D. lU.) , 144, 269 
 
 Liebig's Extract of Meat Co. v. Liebig's Extract Co., 180 Fed. 688 (C. C. A.) . 145, 
 
 403 
 
 Liebig's Extract of Meat Co., Ltd., v. Walker, 115 Fed. 822-1902 144, 721 
 
 Life Association of America v. Boogher, 3 Mo. App. 173-1876 482 
 
 Liggett & Myer Tobacco Co. v. Finzer, 128 U. S. 182 583 
 
 Liggett & Myer Tobacco Co. v. Hynes, 20 Fed. 883-1884 (D. C. Ark.). . . .581, 662 ' 
 
 Link V. Architectural Iron Works, 24 111. 551-1860 182 
 
 Linoleum Manufacturing Co. v. Nairn, 7 Ch. Div. 834-1878 82 
 
 Lippman v. Martin, 5 Ohio N. P. 120, 8 Ohio Dec. 485-1898 110 
 
 Listman Mill Co. v. Wm. Listman Milling Co., 88 Wis. 334-1894, 60 N. W. 
 
 261 41, 61, 398 
 
 Little V. Gallus et ah, 4 App. Div. (N. Y.) 569-74-1896, 38 N. Y. Supp. 487. .305, 
 
 307 
 
 Little V. Kellam, 100 Fed. 353-1900 (C. C. N. D. N. Y.) 97, 721 
 
 Lloyd Sabaudo v. Cubicciotti, 159 Fed. 191-1908 (C. C. Pa.) 369 
 
 London & Northern Bank v. Newnes, 16 Times L. R. 76-1899 505 
 
 London Guarantee, etc., Co. v. Horn, 206 111. 493-1906 354 
 
 Longenecker v. Longenecker Bros., 140 N. Y. Supp. 403 572, 575 
 
 Loog V. Bean, L. R. 26 Ch. Div. 306-1884 483, 484 
 
 Loonen v. Deitsch, 189 Fed. 487-1911 (C. C. N. Y.) 382, 385, 395, 397, 417 
 
 Lorillard Co. v. Peper, 86 Fed. 956-1898 (C. C. A. 8th Cir.) 160, 584 
 
 Lorillard v. Wight, 15 Fed. 383-1883 (C. C. Md.) 249 
 
 Los Angeles Creamery Co. v. J. R. Newberry Co., 21 Cal. App. 567, 132 Pac. 
 
 289 400, 577 
 
 Lothrop Pub. Co. v. Lothrop L. & S. Co., 191 Mass. 353 572 
 
 Loven v. The People, 158 111. 159-1895 319 
 
 Low V. Fels, 35 Fed. 361-1888 (C. C. E. D. Pa.) 704, 733 
 
 Ludington Novelty Co. v. Leonard, 127 Fed. 155-1903 (C. C. A. 2d Cir.) aff'g 
 
 119 Fed. 937 394, 720, 722 
 
 Ludlow Valve Mfg. Co. v. Pittsburgh Mfg. 'Co., 166 Fed. 26 (C. C. A.) 405 
 
 Lumley v. Gye, 2 El. & Bl. 216-1853 327, 336, 337, 338, 340, 342, 353 
 
 Luyties Bros. v. E. Zimmernam & Co., 149 A. D. (N. Y.) 542 269 
 
 Lynn, W. R., Shoe Co. v. Auburn-Lynn Shoe Co., 103 Me. 334, 69 Atl. 569. .719, 
 
 728, 732 
 Lynn, W. R., Shoe Co. v. Auburn Lynn Shoe Co., 100 Maine, 461, 62 Atl. 499 
 
 (4 L. R. A. N. S. 460) 402, 719, 722, 727 
 
 M 
 
 Macauley Bros. v. Tiemey, 19 R. I. 255-1895 366 
 
 Mack V. Petter, L. R. 14 Eq. 431-33-1872 526 
 
 MacMahan Pharmacal Co. v. Denver Chemical Mfg. Co., 113 Fed. 468, 51 C. 
 
 C. A. 302-1901 46, 377 
 
 Magee Furnace Co. v. Le Baron, 127 Mass. 115-1879 286 
 
 Magnolia Metal Co. v. Price, 65 App. Div. 276 305 
 
xlviii Table of Cases 
 
 FAOB! 
 
 Magnolia Metal Co. v. Tandem Smelting Syndicate, Ltd., 15 R. P. C. 701- 
 
 1898 93 
 
 Mahler v. Sanche, 223 111. 136-1906, 79 N. E. 9, rev'g 121 111. App. 247 304 
 
 Major Brothers v. Franklin & Son, 25 Rep. Pat. Cases, 406-1908 381 
 
 Manhattan Hudson Co. v. Wood, Fed. Cases 9026 696 
 
 Manhattan Medicine Co. v. Wood, 108 U. S. 218-1882, 27 L. ed. 706, 2 Sup. 
 
 Ct. 436 Fed. Cas. 9026 218, 676, 681 
 
 Manitowoc Pea Packing Co. v. Numsen & Sons, 93 Fed. 196-1899 (C. C. A. 
 
 7th Cir.) 580 
 
 Mann v. Brown, 43 App. D. C. 457 454 
 
 Manufacturing Co. v. Trainer, 101 U. S. 55, 25 L. ed. 993 104, 193, 601, 640 
 
 Mappin & Webb, Ltd., v. Leapman, 22 R. P. C. 398-1905 (Ch. Div.) 37 
 
 Marcus Ward v. Ward, 40 N. Y. St. Rep. 792, 15 N. Y. Supp. 913 104 
 
 Mark Cross Co., In re, 26 App. D. C. 101 465 
 
 "Mark Twain" case, 14 Fed. Rep. 728 543, 544 
 
 Marlin Fire Arms Co. v. Shields, 171 N. Y. 384-1902, 64 N. E. 163, 59 L. R. 
 
 A. 310 168, 483, 490, 496, 498 
 
 Marsh v. Billings, 7 Cush. 322-1851, 61 Mass. 322-1851 84, 114, 367 
 
 Marshall v. Pinkham, 52 Wis. 572-1881, 9 N. W. 615 64, 158 
 
 Marshall v. Ross, L. R. 8 Eq. 651-1869 689 
 
 Martens v. Reilly, 109 Wis. 464-1901, 84 N. W. 840 348 
 
 Martin v. Martin & Bowne Co., 27 App. D. C. 59 450 
 
 Martin v. Martin, 75 N. J. Eq. 257 712 
 
 Martin v. Martin, 71 Atl. 409 172 
 
 Martin Co., L. v. L. Martin & Wilckes Co., 75 N. J. Eq. 39-50 137 
 
 Martin v. Wright, 6 Sim. 297-1833 480 
 
 Marvel Co. v. Fuller Co., 125 Fed. 829-1903 (C. C. N. Y.) 276 
 
 Marvel Co. v. Pearl, 133 Fed. 160-1904 (C. C. A. 2d Cir.) 89, 591, 592 
 
 Marx & H. J. Clothing Co. v. Watson, 168 Mo. 133-1901, 67 S. W. 391, 56 L. 
 
 R. A. 951 491 
 
 Massachusetts & Baltimore Car Wheel Co. v. Bemis, 29 Fed. 95-1886 (C. C. 
 
 Mass.) 484 
 
 Massam v. Thorley's Cattle Food Co., 14 Ch. Div. 748-1880 122, 177 
 
 Mathy v. Republic Metalware Co., 35 App. D. C. 151 452, 453, 463 
 
 Matsell V. Flanagan, 2 Abb. Pr. N. S. (N. Y.) 459-1867 172, 539, 621,' 639 
 
 Mauger v. Dick, 55 How. Pr. 132-1878 482, 499 
 
 Maxwell v. Hogg, L. R. 2 Ch. App. 307-1867 481, 52?] 528 
 
 May V. Thompson, 20 Ch. Div. 718 33 
 
 May V. Wood, 172 Mass. 11-1898, 51 N. E. 191 335 
 
 Mayer v. Journeymen Stonecutters' Assn., 47 N. J. Eq. 519-1890, 20 Atl. 492. . 499 
 
 Mayer Fertilizer & Junk Co. v. V. C. Chemical Co., 35 App. D. C. 425 414 
 
 Mayer F. & J. Co. v. Virginia-Carolina C. Co., 35 App. D. C. 425 414 455 
 
 Mayor of Bradford v. Pickles, 64 L. J. Ch. 101-1895 .' 329 
 
 McAllister v. Stumpp & Walter Co., 25 Misc. (N. Y.) 438-1898 551 
 
 McAndrew v. Bassett, 4 De G. J. 4 S. 380-1864 208, 412, 620 
 
 McAndrew v. Bassett, 10 Jur. N. S. 492 402 
 
 McBride v. O'Neal, 128 Ga. 473-1907, 57 S. E. 789, Miss. Code 1892, § 1068, 
 
 Code of 1906, § 1146 ' 34O 
 
 McCann v. Anthony, 21 Mo. App. 83-1886 272 614 621 
 
 McCann v. Wolff, 28 Mo. App. 447-1888 .........'....] ZZ5 
 
 McCardel v. Peck, 28 How. Pr. (N. Y.) 120-1864 ....!.. 701 
 
Table of Cases xlix 
 
 PAGE 
 
 MoCarter v. Baltimore Chamber of Commerce, 126 Md. 131-1915 349 
 
 McCartney v. Gamhart, 45 Mo. 593-1870 103 
 
 McCaw, Stevenson & Orr, Ltd., v. Lee Bros., 23 R. P. C. 1-1905 (Ch. Div.) . . 699 
 McDonald & Morrison Mfg. Co. v. Mueller Mfg. Co., 183 Fed. 972-1910 (C. C. 
 
 A. 8th Cir.) 278, 583 
 
 McFell Electric & Telephone Co. v. McFell Electric Co., 110 lU. App. 182- 
 
 1903 51, 111 
 
 McGraw Tire & Rubber Co. v. Griffith, 198 Fed. 566 413 
 
 Mcllhenny's Sons v. New Iberia Co., 30 App. D. C. 337 450, 457 
 
 Mcllhenny v. New Iberia E. of T. P. Co., 34 App. D. C. 430 400, 457 
 
 McKee v. Hughes, 133 Tenn. 455, 181 S. W. 930-1916 366 
 
 McLean Co. v. Adams Mfg. Co., 31 App. D. C. 509 436 
 
 McLean v. Fleming, 96 U. S. 245-1877, 24 L. ed. 828. .20, 23, 40, 94, 117, 191, 
 
 408, 584, 586, 617, 618, 625, 631, 721, 732, 733 
 
 McLennan v. Church, 163 Wis. 411, 158 N. W. 73-1916 351 
 
 McVey v. Brendel, 144 Pa. St. 235-1891, 22 Atl. 912, 13 L. R. A. 377 672 
 
 Mealey v. Bemidji Lumber Co., 118 Minn. 427-1912 339 
 
 Meccano v. Wagner, 234 Fed. 912-1916 242, 555 
 
 Melachrino, M., & Co. v. Melachrino Egyptian Cigarette Co., 4 R. P. C. 215- 
 
 1887 82 
 
 Meldrum v. Shubert, 2 111. Cir. Ct. Rep. 293-1904 621 
 
 Millwood Distillery Co. v. Harper, 167 Fed. 389 269 
 
 Memphis Keeley Institute v. Leslie E. Keeley Co., 155 Fed. 964-1907 (C. C. A.) . 578, 
 
 675 
 
 Meneely v. Meneely, 62 N. Y. 427-1875 88, 110, 124 
 
 Menendez v. Holt, 128 U. S. 514-1888, 32 L. ed. 526, 9 Sup. Ct. 143. .34, 61, 415, 
 
 467, 701, 710, 732, 733 
 Merchant Banking Co. v. Merchants' Joint Stock Bank, 9 Ch. Div. 560-1878. . 188 
 Merchants' Detective Assn. v. Detective Mercantile Agency, 25 111. App. 250- 
 
 1888 Ill, 162, 170 
 
 Merchants' S. C. Co. v. Retailers' Co., 206 Fed. 545 320 
 
 Merriam v. Famous Shoe & Clothing Co., 47 Fed. 411-1891 (C. C. E. D. Mo.) .291, 
 
 525 
 
 Merriam v. HoUoway Pub. Co., 43 Fed. 450 525, 575, 577 
 
 Merriam, G. & C, Co. v. Ogilvie, 159 Fed. 638-1908 (C. C. A. 1st Cir.), modify- 
 ing 149 Fed. 858 290, 291, 524 
 
 Merriam v. Ogilvie, 170 Fed. 167 721 
 
 Merriam v. Saalfield, 198 Fed. 369 69, 390, 405, 713, 716, 722, 726 
 
 Merriam, G. & C, Co. v. Straus, 136 Fed. 477-1904 (C. C. S. D. N. Y.) . .514, 515, 
 
 527 
 Merriam v. Texas Siftings Pub. Co., 49 Fed. 944-1892 (C. C. S. D. N. Y.) . .291, 525 
 Merriam Co. v. Syndicate PubUshing Co., 207 Fed. 515, 237 U. S. 618-621 
 
 461, 525 
 
 Merry v. Hoopes, 111 N. Y. 415-1888, 18 N. E. 714 41, 69, 61 
 
 Merryweather v. Moore, 2 Ch. 518-1892 305 
 
 Messerole v. Tynberg, 4 Abb. Pr. N. S. 410-1868 ' 224 
 
 Metcalf V. Hanover Star MilUng Co., 204 Fed. 211 (C. C. A. 5th Cir.) 240 
 
 U. S. 403 (1915) 388, 397, 417, 419, 696, 699 
 
 Metcalfe v. Brand, 86 Ky. 331-1887, 5 S. W. 773 228 
 
 Metropolitan, etc., Co. v. Metropolitan, etc., Co., 156 A. D. 577 (N. Y.), May, 
 
 T913 163, 169 
 
1 Table of Cases 
 
 PAGE 
 
 Metropolitan Nat. Bank v. St. Louis Dispatch Co., 36 Fed. 722-1888 (C. C. 
 
 Mo.) 32 
 
 Metzler v. Wood, 8 Ch. Div. 606-1878 526 
 
 Meyer v. Dr. Bull Vegetable Medicine Co., 58 Fed. 884-1893 (C. C. A. 7th 
 
 Cir.) : 590, 649 
 
 Meyer Bros. Coffee & Spice Co., In re, 35 App. D. C. 351 439 
 
 Michigan Condensed Milk Co. v. Kenneweg Co., 30 App. D. C. 491 . .410, 453, 697 
 
 Michigan Savings Bank v. Dime Savings Bank, 162 Mich. 297 602 
 
 Millar v. Taylor, 4 Burrows, 2303 509 
 
 Miller, The Mrs. G. B., A Co. Tobacco M'f'y v. Commerce, 45 N. J. L. 18- 
 
 1883 95, 609, 617 
 
 MiUington v. Fox, 3 My. & Cr. 338-1838. . .8, 19, 25, 26, 81, 611, 612, 613, 614, 
 
 732 
 
 MiskeU v. Prokop, 58 Neb. 628-1899, 79 N. W. 522 598 
 
 Missouri, K. & T. Ry. Co. v. McCrary, 182 Fed. 401 343 
 
 Mitchel V. Reynolds, 1 P. Wms. 181; 1 Smith Lead. Cas. Pt. II, 508 297, 298 
 
 Mitchell v. Henry, 15 Ch. Div. 181-1880 426, 663 
 
 MitcheU v. Williams, 106 Fed. 168-1901 (C. C. A. 7th Cir.) 651 
 
 Modesto Creamery v. Stanilaus Creapiery Co., 168 Calif. 289-1914, 142 Pao. 
 
 845 716, 727 
 
 Moebries v. Louis Dejonge & Co., 215 Fed. 443-1914 (D. C. S. D. N. Y.) 606 
 
 Moat V. Pickering, 6 Ch. Div. 770, 47 L. J. Ch. 527 407 
 
 Mogul SS. Co. V. McGregor, Gow & Co., App. Cas. 25-1892, L. R. 23 Q. B. 598- 
 
 1889 12, 13, 323, 333, 336, 364 
 
 Moller V. Lambert, 2 Campb. 548 114 
 
 Monopol Tobacco Works v. Gensior, 32 Misc. (N. Y.) 87-1900, 66 N. Y. Supp. 
 
 155 237 
 
 Montegut v. Hickson, Inc. N. Y. Law Journal, May 18, 1917 (N. Y.) App. Div. 
 
 16, 552 
 
 Montgomery v. Thompson (1891), A. C. 217, 64 L. T. R. 748 139, 197 
 
 Montgomery Ward Co. v. South Dakota, etc., Assn., 150 Fed. 413 486 
 
 Moore, Matter of, 97 Misc. (N. Y.) 240 65 
 
 Moore v. Rawson, 185 Mass. 264-1904 60 
 
 Moore, Benjamin, & Co. v. Anwell, 158 Fed. 462-1908 (C. C. E. D. N. Y.) 641 
 
 Moorman v. Hoge, 2 Sawy. 78-1871 (C. C. Cal.) 594 
 
 Moran v. Dunphy, 177 Mass. 485 337, 340, 349, 354 
 
 Morasse v. Brochu, 151 Mass. 567 340 
 
 Morgan v. Andrews, 107 Mich. 33 337, 364 
 
 Morgan Envelope Co. v. Walton, 86 Fed. 605 400 
 
 Morgan's, Enoch, Sons Co. v. Edler, Cox's Manual, 714-1890 99 
 
 Morgan's Sons Co. v. Troxell (rev'g 23 Hun, 632-1881), 89 N. Y. 292-1882, 42 
 
 Am. Rep. 294 241, 586 
 
 Morgan's Sons Co. v. Troxell, 23 Hun (N. Y.), 632-1881 588 
 
 Morgan's Sons, Enoch, Co. v. Whittier-Coburn Co., 118 Fed. 657-1902 (C. C. 
 
 N. D. Cal.) 267 
 
 Morison v. Moat, 20 L. J. N. S. Ch. 513-1851, affirmed on appeal, 21 L. J. N. S. 
 
 Ch. 248, 9 Hare, 241-1851 296, 300, 304, 305 
 
 Morris v. Altstedter, 156 N. Y. Supp. 1103-1916 637 
 
 Morrall, Abel, Ltd., v. Hessin & Co., 20 R. P. C. 429-1903 (Ct. App.) 36 
 
 Morse v. Hall, 109 Mass. 409 638 
 
 Morton v. Morton, 148 Cal. 142-1905, 82 Pac. 664, 1 L. R. A. N. S. 660n 147 
 
Table of Cases li 
 
 PAGE 
 
 Mossier v. Jacobs, 66 111. App. 571-1896 98, 697, 670 
 
 Motion Picture Patents Co. v. Eclair Film Co., 208 Fed. 416 571 
 
 Motley, Green & Co. v. Detroit S. & S. Co., 161 Fed,. 389^1908 350 
 
 Motz Tire Co., In re, 40 App. D. C. 487 439 
 
 Mouson & Co._v. Boehm, L. R. 26 Ch. Div. 398-1884 698 
 
 Moxie Co. V. Daoust, 206 Fed. 434-1913, (C. C. A. 1st Cir.) 239, 252 
 
 Moxie Nerve Food Co. v. Baumbach, 32 Fed. 205-1887 (C. C. E. D. Tex.). ... 268 
 
 Moxie Nerve Food Co. v. Holland, 141 Fed. 202-1905 (C. C. R. I.) 680 
 
 Moxie Nerve Food Co. v. Modox Co., 152 Fed. 493-1907 (C. C. R. I.), 153 
 
 Fed. 487-1907 (C. C. R. I.) 673, 678, 679, 694 
 
 Moxley Co. v. Braun & Fitts Co., 93 III. App. 183-1900 271, 379, 380, 692 
 
 Mueller Mfg. Co. v. McDonald & Mooson Mfg. Co., 164 Fed. 1001-1909. . 247, 277 
 
 Mulkem v. Ward, L. R. 13 Eq. 619-1872 474, 481 
 
 Munden v. Harris, 153 Mo. 652, 134 S. W. 1076 168 
 
 Munro v. Tousey, 129 N. Y. 38-1891, 29 N. E. 9, 14 L. R. A. 245n. .521, 538, 583 
 
 Muralo Co. v. National Lead Co., 36 App. D. C. 541 437 
 
 Mutual Milk & Cream Co. v. Heldt, 120 App. Div. (N. Y.) 795 305 
 
 Mutual Milk & Cream Co. v. Prigge, 112 App. Div. (N. Y.) 652 305 
 
 Myers v. Kalamazoo Buggy Co., 54 Mich. 215, 20 N. W. 545, 52 Am. Rep. 
 
 811 41, 55, 317 
 
 Myers v. TheUer, 38 Fed. 607-1889 (C. C. S. D. N. Y.) 268 
 
 N 
 
 Nash Hardware Co., In re, 33 App. D. C. 221 435, 453 
 
 NashviUe, C. & St. L. Ry. Co. v. McConnell, 82 Fed. 65-1897 (C. C. Tenn.) . 344, 553 
 
 Nashville Syrup Co. v. Coca Cola, 215 Fed. 527 444, 446, 448 
 
 Nathan Manufacturing Co. v. H. A. Rogers Co., N. Y. Law Jour., February 
 
 27, 1909 I 283 
 
 National Biscuit Co. v. Baker, 95 Fed. 135 (C. C. S. D.), 1899 397, 601 
 
 National Biscuit Co. v. Pacific Coast Biscuit Co., 83 N. J. Eq. 368-1914 251 
 
 National Candy Co-, In re, 35 App. D. C. 351 440 
 
 National Carbon Co. v. Bright Star Battery Co., 4 Trade Mark Reg. 346. . . 408 
 
 National Distilling Co. v. Century Liquor & Cigar Co., 183 Fed. 206 403 
 
 National Folding Box and Paper Co. v. National Folding Box Co., 43 Wkly. 
 
 Repr. 156 189 
 
 National Gum & Mica Co. v. Braendly, 27 App. Div. (N. Y.) 219, 51 N. Y. 
 
 Supp. 93, 22 Cyc. 867 , 305, 306 
 
 National Life Ins. Co. v. Myers, 140 111. App. 392-1908 488 
 
 National Lock Washer Co. v. Hobbs Mfg. Co., 210 Fed. 516 448 
 
 National Phonograph Co., In re, 29 App. D. C. 142 438, 439 
 
 National Phonograph Co., Ltd., v. Edison Bell, etc., Co., 1 Ch. 335-1908. . 337,. 356 
 National Phonograph Co., Ltd., v. Edison-Bell ConsoI'd Phonograph Co., Ltd., 
 
 24 T. L. R. 201-1907 / 356 
 
 National Protective Association v. Cuming, 170 N. Y. 315 353 
 
 National Telegraph News Co. v. Western Union Telegraph Co., 119 Fed. 294- 
 
 1902 (C. C. A. 7th Cir.), 60 L. R. A. 805 342, 553 
 
 National Starch Mfg. Co. v. Duryea, 101 Fed. 117-1900 (C. C. A. 2nd Cir.).. . 154 
 
 National Starch Co. v. Koster, 146 Fed. 259 642 
 
 National Water Co. v. Hertz, 177 Fed. 607 253 
 
 Natural Food Co. v. Williams, 30 App. D. C. 348 447 
 
lii Table of Cases 
 
 PAQE 
 
 Nelson v. J. M. Winchell & Co., 203 Mass. 75, 89 N. E. 180, 23 L. R. A. (U. S.) 
 
 1150 409, 730, 732, 734 
 
 Nesne v. Sundet, 101 N. W. 490-1904, 93 Minn. 299 77, 181, 620 
 
 Neth V. Ohmer, 30 App. D. C. 478-1908 310 
 
 Newark Coal Co. v. Spangler, 54 N. J. Eq. 354-1896, ^4 Atl. 932 88, 110, 317 
 
 Newbro v. Undeland, 69 Neb. 821-1903, 96 N. W. 635 681 
 
 Newby v. Oregon Cent. Ry. Co., 1 Deady, 609-1869, Fed. Cas. No. 10,144. .163, 
 
 170, 181, 182, 616, 621, 622 
 Newcomer & Lewis v. Scriven Co., 118 Fed. 621-1909 (C. C. A. 6th Cir.). .292, 392 
 New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 
 
 154-1897, 46 N. E. 386 240, 593, 620, 629 
 
 Newman v. Alvord, 49 Barb. 588-1867, aff'd, 51 N. Y. 189-1872. .192, 193, 213, 
 
 225, 229, 230 
 
 Newman v. Pinto, 4 R. P. C. 508-1887 (Ct. App.) 683 
 
 New Orleans Coffee Co. v. American Coffee Co. of New Orleans, 124 La. 19- 
 
 1909 251 
 
 N. Y. & N. J. Lubricant Co. v. O. W. Young, etc., 77 N. J. Eq. 221 396, 679 
 
 N. Y. Asb. Mfg. Co. V. Ambler, etc., Co., 102 Fed. 890 642 
 
 N. Y. Asbestos Mfg. Co. v. Ambler Asb. Air-Cell Cov'g Co., 99 Fed. 85 642 
 
 N. Y. Cab Co. v. Mooney, 15 Abbott's N. C. 152-1884 258 
 
 N. Y. C. & H. R. R. Co. V. Reeves, 85 N. Y. Supp. 28-1903 344 
 
 New York Filter Co. v. Schwarzwalder, 58 Fed. 579 492 
 
 New York & Rosendale Cement Co. v. Coplay Cement Co., 44 Fed. 277-1890 
 
 (C. C. A.), 10 L. R. A. 833, 45 Fed. 212-1891 200, 618 
 
 New York Herald Co. v. Star Co., 146 Fed. 204, aff'd 146 Fed. 1023 541 
 
 New York Mackintosh v. Flam, 198 Fed. 571 448 
 
 Nicholson, J. & W., & Co. v. Buchanan, 19 R. P. C. 321-1900 44, 76, 83 
 
 Noel V. ElUs, 89 Fed. 978-1896 (C. C. S. D. Iowa) 96 
 
 Noice V. Brown, 39 N. J. L. 669 342 
 
 Nokes V. Mueller, 72 111. App. 431 ,. 257 
 
 Nolin V. Pearson, 191 Mass. 283-1900 337 
 
 Nordenfelt v. The Maxim-Nordenfelt Guns & Ammunition Co., App. Cas. 535- 
 
 1894 38 
 
 North Cheshire & Manchester Brewery Co., The, Ltd., v. The Manchester 
 
 Brewery Co., Ltd., App. Cas. 83-1899 177, 178, 615 
 
 Northcutt V. Turney, 101 Ky. 314-1897, 41 S. W. 21 638, 703 
 
 Northwestern C. M. Co. v. Mauser & Cressman, 162 Fed. 1004 397 
 
 Northwestern Knitting Co. v. Garon, 112 Minn. 231, 128 N. W. 288 388, 421 
 
 Notaseme Hosiery Co. v. Straus, 201 Fed. 99 (C. C. A. 2d Cir.), 209 Fed. 
 
 495-1916 235, 721, 722, 727 
 
 
 
 Oakes v. St. Louis Candy Co., 146 Mo. 391-1898 383 
 
 Oakes v. Tonsmierre,"4 Woods, 547-1883 (C. C. Ala.) [[ 40 
 
 Ogilvie V. G. & C. Merriam Co., 149 Fed. 860 610, 524 
 
 Ogilvie, J. S., Pub. Co. v. Royal Pub. Co., 241 Pa. 5, 88 Atl. 316 .' 251 
 
 O'Grady v. McDonald, 72 N. J. Eq. 805, 66 Atl. 175-1907 .., 85 
 
 Ohio Baking Co. v. National Biscuit Co., 127 Fed. 116-1904 (C. C. A. 6th Cir.) 264 
 
 Oliver Plow Works v. Oliver Mfg. Co., 40 App. D. C. 125 438 
 
 Oneida Community v. Oneida Game Trap Co., 168 App. Div. (N. Y.) 769-1915 163 
 169, 185, 208, 212, 215, 399, 403, 448, 461, 646, 648, 651 
 
Table of Cases liii 
 
 PAGE 
 
 O'Neill V. General FUm Co., 171 App. Div. (N. Y.) 854 510, 545 
 
 Oppermann v. Waterman, 94 Wis. 683-1896, 69 N. W. 569 267 
 
 Original La Tosca Social Club v. La Tosca Social Club, 23 App. D. C. 96-1904. 186 
 
 O'Rourke v. Central City Soap Co., 26 Fed. 576 394, 414 
 
 Orr V. Home Mutual Ins. Co., 12 La. Ann. 255-1857 365 
 
 Orr, Ewing & Co. v. Johnston & Co., L. R. 13 Ch. Div. 434-1880. . .586, 602, 622 
 Osgood V. AUen, 18 Fed. Cas. No. 10,603, 1 Holmes, 185.... 509, 510, 513, 528 
 
 Ottoman Cahvey Co. v. Dane, 95 111. 203-1880 166 
 
 Outcault V. Lamar, 135 App. Div. 110 541, 545 
 
 Outcault V. New York Herald, 146 Fed. 205 541 
 
 Oxypathor Co. v. De Cordero, 164 App. Div. 962, 149 N. Y. Supp. 513. .318, 320 
 
 Pacific Coast Condensed Milk Co. v. Frye & Co., 85 Wash. 133-1915 (147 Pao. 
 
 865) 239 
 
 Packham & Co., Ltd. v. Sturgess & Co., 15 R. P. C. 069-1898 270 
 
 Paine & Co. v. Daniell & Sons' Breweries, Ltd., 10 R. P. C. 71-1893. . 92 
 
 Palmer v. De Witt, 47 N. Y. 632-1872 295, 509, 510, 512, 645 
 
 Palmer v. Harris, 60 Pa. St. 166-1869 18, 682 
 
 Paper Goods Co. v. Dittgen, 171 Fed. 031 (C. C. A. 7th Cir.) 495 
 
 Paris Medicine Co. V. W.H.Hill Co., 102 Fed. 148-1900 (C. C. A. 6th Cir.) . .385, 678, 
 
 679 
 Park, John D., & Sons Co. v. Hartman, 187 Mass. 144-1905, 72 N. E. 839, 163 . 
 
 Fed. 24-1907 (C. C. A. 6th Cir.), 12 L. R. A. N. S. 135, note. .64, 296, 298, 299, 
 
 358, 360, 361 
 
 Parkinson, J. F., Co. v. Trades Council, 154 Cal. 581 (Dec, 1908) 333 
 
 Parkland Hills Blue Lick Water Co. v. Hawkins, 96 Ky. 502-1894; 26 S. W. 389, 211, 
 
 381, 402 
 
 Parlett v. Guggenheimer, 67 Md. 542-1887, 10 Atl. 81 266 
 
 Parsons Bros. & Co. v. GiUespie & Co., 15 R. P. C. 67-1897 90 
 
 Partridge v. Menck, 2 Sandf. Ch. (N. Y.) 622-1846 88, 110 
 
 Pasley v. Freeman, 3 Term Rep. 51-1789 346 
 
 Pavesich v. N. E. Life Ins. Co., 122 Ga. 190 168 
 
 Payton & Co. v. Snelling, Lampard & Co., App. Cas. 308-1901 582, 622 
 
 Payton & Co. v. Snelling, Lampard & Co., Ltd., 17 R. P. C. 48-63-1900 243 
 
 Peabody v. Norfolk, 98 Mass. 462-1867, 96 Am. Deo. 664 ...... . .295, 296, 300, 301 
 
 Pearson v. Pearson, L. R. 27 Ch. Div. 145-1884 52, 55 
 
 Peck Bros. & Co. v. Peck Bros. Co., 113 Fed. 291-1902 (C. C. A. 7th Cir.), 61 
 
 C.C.A.251,62L.R.A.81 41, 49, 163, 186 
 
 Peck v. Northern Pac. Ry. Co., 51 Mont. 295, 162 Pac. 421-1915 367 
 
 Peerless Pattern Co. v. Pictorial Review Co., 147 App. Div. (N. Y.) 715-1911. ... 319 
 Penberthy Injector Co. v. Lee, 120 Mich. 174-1899,78 N. W. 1074. .183, 184, 
 
 654, 656 
 
 Pennellv.Lathrop, 191 Mass. 357 575 
 
 Pennsylvania Iron Works Co. v. Henry Voght Machine Co., 29 Ky. L. Rep. 861- 
 
 1906,968. W. 551,8 L.R. A. N.S. 1023 497 
 
 Penn. R. Co. v. Beekman, 30 Wash. (D. C.) Law Rep. 715-1902 344 
 
 Pennsylvania Rubber Co. v. Dreadnought Tire & Rubber Co., 225 Fed. 138 393 
 
 Pennsylvania Salt Mfg. Co. v. Myers, 79 Fed. 87-1897 (C. C. E. D. Mo.) . .251, 394, 
 
 oy7 
 
liv Table op Cases 
 
 PAGE 
 
 People V.Sheldon, 139N. Y.251 322 
 
 People's Land & Mfg. Co. v. Beyer, 161 Wis. 349, 154 N. W. 382 366 
 
 Perkinsv. Apollo Bros., 197 Fed. 476 418 
 
 Perkins V. Pendleton, 90 Me. 166 354 
 
 Perkins Electric Lamp Co. v. Hood, 44 III. App. 449-1892 182 
 
 Perry v.Truefitt, 6 Beav. 66-1842 12, 390, 677 
 
 Pettes V. American Watchman's Clock Co., 89 App. Div. (N. Y.) 345-1903, 85 
 
 N. Y. Supp. 900 181 
 
 Pfeiffer V. Wilde, 107 Fed. 456-1901 642 
 
 Pflugh V. Eagle White Lead Co., 185 Fed. 769, 771 377, 697, 699 
 
 Phalon&Son v. Wright, 5 Phila. 464-1864 678 
 
 Phenix Cheese Co. v. Cleveland Cream Cheese Co., U. S. Cir. Ct. (Northern Dist. 
 
 Ohio, Eastern Div.), Feb. 4, 1910 216, 225, 227 
 
 Phenix Cheese Co. v. Kennedy et al., U. S. Dist. Ct. (Eastern Dist. of Pennsyl- 
 vania), May 18, 1915 212, 216, 225, 227 
 
 Phenix Cheese Co. v. Kirp et al., App. Div. (N. Y.) March, 1917 216, 225, 227 
 
 Philadelphia Extracting Co. v. Keystone Extracting Co., 176 Fed. 830-1910 
 
 320 
 Philadelphia Novelty Co. v. Blakesley Novelty Co., 37 Fed. 365-1889 (C. C. 
 
 Conn.) 246 
 
 PhUadelphia Novelty Mfg. Co. v. Rouss, 40Fed. 585-1889 (C. C. S. D. N. Y.) 273, 594 
 
 Phoenix Paint & Varnish Co. v. Lewis & Bros., 32 App. D. C. 285 437 
 
 Photo Drama Motion Picture Co. v. Social UpUf t Fihn Corp., 220 Fed. 448 ... 510, 545 
 
 Pidding v.How, 8Sim. 477-1837 676, 677, 678 
 
 Pierce V. Franks, 15 L. J. Ch. N. S. 122-1846 114 
 
 Pierce v.Guittard, 68 Cal. 68-1885, 8 Pac. 645 94, 101 
 
 Pike, A. F., Mfg. Co. v. Cleveland Stone Co., 35 Fed. 896-1888 213, 401 
 
 Pillsbury v. Pillsbury-Washburn Flour Mills Co., 64 Fed. 841-1894 (C. C. A. 7th 
 
 Cir.), 24 U. S. App. 395 146, 589, 662 
 
 Pillsbury-Washburn Flour Mills Co., Ltd., v. Eagle, 86 Fed. 608-1898, 30 C. C. 
 
 A. 386, 41 L. R. A. 162, reVg 82 Fed. 816-1897 202, 209, 223, 229 
 
 Pinet, F., et Cie v. Madison Louis Pinet, Ltd., 15 R. P. C. 65-1897; see also s. c. 
 
 14 R. P. C. 933-1897 138, 161 
 
 Plant, Thomas G., v. May Mercantile Co., 163 Fed. 229 398, 654 
 
 Plant V. Woods, 176 Mass. 492-1900, 57 N. E. 1011, 51 L. R. A. 339. .334, 340, 346, 
 
 487 
 
 Plant Seed Co. v. Michel Plant & Seed Co., 23 Mo. App. 579-1889 102, 182, 576 
 
 Planten v. Gedney, 221 Fed. 281, 224 Fed. 382 427, iSj\ 469 
 
 Planten V. Pharmacy Co., 33 App. C. D.268 '439 
 
 Plotzker v. Lucas, 24 R. P. C. 551-1907 687 
 
 Polar Knitting Mills, Ex parte, 164 Off. Gaz. 251 ... .f. 438 
 
 Pollard V. Photographic Co., 40 Ch. Div. 346-1889 295 
 
 Pomeroy Ink Co. v. Pomeroy, 77 N. J. Eq. 293, 1910 320 
 
 Pope V. McCrum-Howell, 191 Fed. 979-1911 (C. C. A. 7th Cir.) ....!!.!!!!!!'! 277 
 
 Popham V. Cole, 66 N. Y. 69-1876, 23 Am. Rep. 22 ! ! ! . ! 586 
 
 Postal Tel. Cable Co. v. Netter, 102 Fed. 691 642 
 
 Postum Cereal Co. v. American Health Food Co., 119 Fed. 848-1902 (C. C A 
 
 7th Cir.), 56 CCA. 360 98, 27oi 625 
 
 Potter V. McPherson, 21 Hun (N. Y.), 659-1880 98, 518, 526 
 
 PotterDrug&ChemioalCo. V.Miller, 75 Fed. 656 .' 397 
 
 Potter Drug & Chemical Corp. v. Pasfield ooap Co., 102 Fed. 490-1900, aff'd 98 
 
Table of Cases Iv 
 
 PAGE 
 
 Powell V. Birmingham Vinegar Brewery Co., 2 Ch. 54-1896, L. R. App. Gas. 710- 
 
 1897 20, 81, 142, 263, 664, 709 
 
 Pratt's Appeal, 117 Pa. St. 401-1888, 11 Atl. 878 615, 616 
 
 Pres-O-LiteCo. v. Davis, 209 Fed. 917, 215 Fed. 349, 131 C. C. A. 491 554, 556 
 
 Press Pub. Co. v. Levi Bros. & Co., N. Y. Law Journal, Dec. 20, 1912 558 
 
 Prince Albert V. Strange, 1 HaU. &T. 1-1849, p. 24 311 
 
 Prince Mfg. Co. v. Prince's Metallic Paint Co., 135 N. Y. 24-1892, 31 N. E. 990, 
 
 17 L. R. A. 129 661, 676 
 
 Prince's Metallic Paint Co. v. Prince Mfg. Co., 57 Fed. 938-1893 (C. C. A. 3d 
 
 Cir.) 710 
 
 Prince de Wagram v. Marais, Cour de Paris, Dec. 2, 1871, Dalloz, 2, 185 327 
 
 Probasco v. Bouyon, 1 Mo. App. 241-1876 40 
 
 Proctor & Gamble Co. v. Globe Refining Co., 92 Fed. 357-1899 (C. C. A. 6th Cir.) 260, 
 
 269 
 Prudential Assurance Co. v. Knott, L. R. 10 Ch. App. Cas. 142-1875 . . . 474, 482, 484 
 
 Punch v. Boyd, L.R.Ir. 16Q.B. D. 476-1885 505 
 
 Punnett, Ex parte, 16 Ch. Div. 226-1880 33 
 
 Putnam Nail Co. v. Bennett, 43 Fed. 800-1890 227, 279, 280, 576, 618 
 
 Putnam Nail Co. v. Dulaney, 140 Pa. St. 205-1891, 21 Atl. 391, 11 L. R. A. 524 . . 279 
 
 Q 
 Quinnv.Leathem, App. Cas. 495-1901 327, 328, 336, 337, 338, 354, 355, 357 
 
 R 
 
 Radam v. Capital Microbe Destroyer Co., 81 Tex. 122-1891, 16 S. W. 990 273 
 
 Radische Anilin, etc., v. Klipstein, 125 Fed. 543, 556-1903 (C. C. S. D. N. Y.) . . . 604 
 
 Rains & Sons v. White, Haucke & Co., 107 Ky. 114-1899, 52 S. W. 970 265 
 
 Randall v. British & American Shoe Co., 19 R. P. C. 393-1902 592 
 
 Ranft V. Reimers, 200 lU. 386 317 
 
 Ransomev.BentaU,3L. J.Ch.N.S. 161 105 
 
 Rappv.0ver,3Brewst. (Pa.) 133-1869 57 
 
 Rathborne, Sard & Co. v. Champion Co., 189 Fed. 26 286 
 
 Ratclifiev.Evans,C. A. 1892, 2 L B. 525-533 502 
 
 Raycroftv.Tayntor,68Vt.219 354 
 
 Raymond v. Royal Baking Powder Co., 29 C. C. A. (7th Cir.) 245-1898, 85 Fed. 
 
 231 698 
 
 Raymond v. Russell, 143 Mass. 295-1887, 9 N. E. 544 479 
 
 Raymond v. Yarrington, 73 g. W. 800, 62 L. R. A. 962, 96 Tex. 400-1903, 96 Tex. 
 
 400 337, 352 
 
 Read Brothers v. Richardson* Co., 45 L.T.N.S. 54-1881 (Ct. App.).. 230, 586, 665 
 Reading Stove Works v. Howes, S. M. Co., 201 Mass. 437-87 N. E. 751 . . 288, 394, 725 
 
 Reddaway v. Banham, App. Cas. 199-1896, 13 R. P. C. 218 12, 70, 72, 390, 599 
 
 Reed Dr. A., Cushion Shoe Co. v. Frew, 158 Fed. 552-1908 (C. C. N. Y.) . .704, 721, 
 
 723 
 
 Regent Shoe Mfg. Co. v. Haaker, 75 Nebr. 426, 106 N. W. 595-1906 684 
 
 Regis V. Jaynes & Co., 191 Mass. 245, 77 N. E. 774. .713, 714, 716, 722, 723, 725, 
 ^ 727, 730, 731, 732 
 
 Regis V. Jaynes & Co., 185 Mass. 458-1904, 70 N. E. 480 96, 731 
 
 Reisch Brewing Co., /rare, 30 App. D. C. 445 435 
 
 Renftv.Reimer, 200 111. 386-1902, 65 N.E. 720 56 
 
Ivi Table of Cases 
 
 PAGE 
 
 Repetti v. Louis Repetti, Inc., et al., 6 Trade-Mark Rep. 94 160, 177 
 
 Revere Rubber Co. v. QonsoUdated Hoof Pad Co., 139 Fed. 151-1905 (C. C. S. D. 
 
 N.Y.) ,. 89 
 
 Reymer&Bros.,Iirc., v.Huyler's, 190 Fed. 83 398, 401 
 
 R. J. Reynolds Tobacco Co. v. Allen Bros. Tobacco Co., 151 Fed. 819-1907 
 
 (C. C. Va.) 250, 668 
 
 Rice V. Albee, 164 Mass. 88, 41 N. E. 122 346 
 
 Rice V. Manley, 66 N. Y. 82-1876 327, 338, 346, 348, 353, 354 
 
 Rice-Stix & Co. v. J. A. Soriven Co., 165 Fed. 639-1908 289, 392, 396 
 
 Richards v. Williamson, 30 T. L. Rep. 746-1874 288 
 
 Richmond Nervine Co. v. Richmond, 159 U. S. 293-1895, 40 L. ed. 155, 16 
 
 Sup. Ct. 30 47, 49 
 
 Richter v. Reynolds, 59 Fed. 577-1893 (C. C. A. 3d Cir.) 606 
 
 Ricker v. Leigh, 74 A. D. N. Y. 138 654 
 
 Riokerby v. Reay, 20 R. P. C. 380-1903 (Ch. Div.) 32, 42 
 
 Riding v. Smith, 1 Ex. D. 91 502 
 
 Ripley v. Griffiths, 19 R. P. C. 591-1902 72 
 
 Robb V. Green, 64 L. J. I. B. N. S. 593 319 
 
 Robb V. Green, 2 Q. B. D. 315-1895. And see 2 Q. B. D. 1 306, 318 
 
 Roberts v. McKee, 29 Ga. 161-1859 321 
 
 Roberts v. Sheldon, 8 Biss. 398 397 
 
 Robertson v. Berry & Co., 50 Md. 591-1878 20, 538 
 
 Robinson v. Storm, 103 Tenn. 40-1899, 52 S. W. 880 156 
 
 Robinson v. Texas Pine Lands Assn., 40 S. W. 843-1897 (C. C. A. Tex.) 366 
 
 Rodgers v. NowiU, 6 Hare, 325-1846, 3 De G. M. & G. 614-1853 121, 708 
 
 Rogers, R. W., Co. v. Wm. Rogers Mfg. Co., 17 C. C. A. 576, 70 Fed. 1017- 
 
 1895 50, 175, 182 
 
 Rogers, Wm. A. v. International Silver Co., 30 App. Cas. (D. C.) 97 426 
 
 Rogers, William G., Co. v. International Silver Co., 118 Fed. 133 175, 639 
 
 Rogers, William, Mfg. Co. v. Rogers Mfg. Co., 16 Phila. 178 (Com. PI. Phila. 
 
 1883) 128, 145 
 
 Rollins V. Hinks, L. R. 13 Eq. 355-1872 481 
 
 Romeike, Inc., Henry, v. Albert Romeike & Co., Inc., 7 Trade-Mark Rep. 16. . 160, 
 
 177, 185 
 
 Roncornoni v. Gross, 92 App. Div. (N. Y.) 221 406 
 
 Root V. Lake Shore & M. S. R. Co., 105 U. S. 189, 214, 26 L. ed. 975, 984. .. . 715 
 Rose HiU Race Course Company, The, In re, 5 St. Reps. New South Wales, 
 
 402-1905 : 37 
 
 Rosenberg, Matter of, N. Y. Law Journal, May 9, 1908 65 
 
 Roseneau v. Empire Circuit Co., 131 A. D. 429 353 
 
 Rossmanv. Gamier, 211 Fed. 401-1914 (CCA. 8th Cir.).. 394, 406, 468, 605, 721 
 
 Routh V. Webster, 10 Beav. 561-1847 473, 481 
 
 Rowland v. Michell, 14 R. P. C 37-1896 (reported in Ch. Div. 13 R. P. C 457) . 99 
 
 Rowley v. Houghton, 2 Brewst. (Pa.) 303-1868 98 
 
 Rowley Co. v. Rowley, 193 Fed. 390 (113 C C A. 386) 714, 724 
 
 Rowley, J. F., Co. v. Rowley, 154 Fed. 744-1907 (C C Pa.), modified 161 Fed! 
 
 94 139, 140 
 
 Royal Baking Powder Co. v. Davis, 26 Fed. 293-1885 (C C E. D. Mich.) 262 
 
 Royal Baking Powder Co. v. Raymond, 70 Fed. 376 398 ggg 
 
 Royal Baking Powder Co. v. Royal, 122 Fed. 337-1903, 58 C C A. 499-506. .' 125 
 Royal Irish Linen Hurd & Co., Ex parte, 590 G. 1763 76 
 
Table of Cases Ivii 
 
 PAGE 
 
 Rubber Co. v. Goodyear, 9 Wall. (U. S.) 788, 19 L. ed. 566 720, 732 
 
 Rubber & CeUuloid H. T. Co. v. Rubber Bound Brush Co., 81 N. J. Eq. 419, 
 
 519, 88 Atl. 210 393 
 
 Rubber & C. H. T. Co. v. F. W. Devoe, etc., Co., 233 Fed. 150 393, 724 
 
 Rubel V. Allegretti Chocolate Cream Co., 76 111. App. 581-1898 145 
 
 Rugby Portland Cement Co., Ltd., v. Rugby & N. P. C. Co., Ltd., 9 R. P. C. 
 
 46-1891 203 
 
 Rumford Chemical Works v. Muth, 1 L. R. A. 44^1888, 35 Fed. 624-1888 98 
 
 Rushmore v. Badger Brass Co., 198 Fed. 379-1912 (C. C. A. 2d Cir.) . . . .283, 590, 
 
 723, 727 
 Rushmore v. Manhattan Screw & Stamping Works, 163 Fed. 939-1908 (C. C. 
 
 A. 2d Cir. 1908) •. 236, 283, 393 
 
 Rushmore v. Saxon, 154 Fed. 213-1907, C. C. A. 2d Cir., Nov., 1908, 170 Fed. 
 
 1021, C. C. A. 2d Cir., June, 1909, mod. and aff'g 158 Fed. 499 .. . .592, 642 
 
 Russia Cement Co. v. Fauenhar, 133 Fed. 518-1904 (CCA.) 254 
 
 Russia Cement Co. v. Katzenstein, 109 Fed. 314-1901 (C. C. S. D. N. Y.) . . . . 254 
 
 Russia Cement Co. v. LePage, 147 Mass. 206-1888, 17 N. E. 304 40, 146 
 
 Rutter & Co. v. Smith, 18 R. P. C. 49-1901 669 
 
 S 
 
 Safety Remedy Co., In re, 35 App. D. C 353 439 
 
 St. Paul Electric Co. v. McCrum-HoweU, 189 Fed. 849-1911 (C. C. A. 8th Cir.) 277 
 
 Salomon v. Hertz, 40 N. J. Eq. 400-1885, 2 Atl. 379 295, 311, 315 
 
 Salvation Army v. American Salvation Army, 135 A. D. (N. Y.) 268 187 
 
 Samson Cordage Works v. Puritan Cordage Mills, 193 Fed. 274, 194 Fed. 573, 
 
 211 Fed. 60a-1914 (C C. A. 6th Cir.) 384, 570 
 
 Samuel v. Berger, 24 Barb. 163-1856 (N. Y. Sup. Ct.) 39 
 
 Samuel & Co. v. Hostetter, 118 Fed. 257-1902 (C. C. A. 9th Cir.) 604 
 
 Samuel Bros. & Co. v. Hostetter Co., 55 C. C A. Ill, 118 Fed. 257 256, 680 
 
 Samuels v. Spitzer, 177 Mass. 226-1900, 58 N. E. 693 598 
 
 Sanders v. Jacob, 20 Mo. App. 96-1885 621 
 
 Sanders v. Utt, 16 Mo. App. 322-1884 224 
 
 Sanford Day Iron Works v. Enterprise Foundry & Machine Works, 172 So. W. 
 
 537 (Tenn. Sup. Ct.) 150 
 
 Sarrazin v. Irby Cigar & Tobacco Co., Ltd., 35 C. C. A. 496, 93 Fed. 624^1899, 
 
 46 L. R. A. 541n , 50 
 
 Sartor v. Schaden, 125 Iowa, 696-1904, 101 N. W. 511. . . .28, 76, 92, 376, 549, 
 
 638, 690, 700 
 Sauers Milling Co. v. Kehlor Flour Mills Co., 39 App. D. C. 535 . 392, 396, 439, 455 
 
 Savage v. Hoffman, 159 Fed. Rep. 584 534 
 
 Sawyer Crystal Blue Co. v. Hubbard, 32 Fed. 388-1887 (C. C Mass.), see 7 Fed. 
 
 720 256, 264 
 
 Sawyer v. JKellogg, 7 Fed. 720-1881 (C C. N. J.) 262 
 
 Sawyer v. KeUogg, 9 Fed. 601 716 
 
 Saxlehner v. Eisner & Mendelson Co., 88 Fed. 61-1898 (C. C S. D. N. Y.), ^ 
 
 138 Fed. 22-1905 (C C. A. 2d Cir.), 179 U. S. 19-1900, 44 L. ed. 60, 21 
 
 Sup.Ct.7. .398, 417, 695, 696, 703, 708, 718, 721, 725, 726, 730, 733, 734 
 Saxlehner v. Eisner & M. Co., 147 Fed. 189-1906 (C. C A. 2d Cir.), aff'g 140 
 
 Fed. 938-1905 (C C S. D. N. Y.) 638, 641 
 
 Saxlehner v. Nielson, 179 U. S. 43-1900, 44 L. ed. 77, 21 Sup. Ct. 16 708 
 
Iviii Table of Cases 
 
 PAGE 
 
 Saxlehner v. Siegel-Cooper Co., 179 U. S. 42 721 
 
 Sayre v. McGill T. P. Co., 200 Fed. 771 570, 575 
 
 Schendel v. Silver, 63 Hun (N. Y.), 330 398 
 
 Schenker v. Auerbach, 89 App. Div. (N. Y.) 612 642 
 
 Scheuer v. MuUer, 74 Fed. 225-1896, 20 C. C. A. 161 631 
 
 Schmidt v. Brieg, 100 Cal. 672-1893, 35 Pac. 623, 22 L. R. A. 790 236, 702 
 
 Schneider v. Williams, 44 N. J. Eq. 391, 14 Atl. 812 ; . . .411, 416 
 
 Schoenhofen, Peter, Brewing Co. v. Maltine Co., 30 App. Cas. (D. C.) 340- 
 
 1908 376 
 
 Schuster Co. v. Muller, 28 App. Cas. (D. C.) 409-1906 .437, 681 
 
 Schwann v. Miele, 203 Fed. 176 245 
 
 Schweinfurter, In re, 38 App. D. C. 279 439, 449 
 
 Schweppes, Ltd., v. Gibbens, 22 R. P. C. 601-1905 273 
 
 Scidmore v. Smith, 13 Johns. (N. Y.) 322-1816 339 
 
 Scott V. Prudential Outfitting Co., 92 Misc. 195 (155 N. Y. Supp. 497) 349 
 
 Scott V. Jackson, 89 Cal. 258-62 706 
 
 Scriven, J. A., Co. v. Girard Co., 140 Fed. 794-1905 (C. C. S. D. N. Y.) 92 
 
 Scriven, J. A., Co. v. Morris, 154 Fed. 914-1907, aff'd 158 Fed. 1020 292 
 
 Scriven v. North, 134 Fed. 366-1904 (C. C. A. 4th Cir.), 67 C. C. A. 348, s. c, 
 
 modifying 124 Fed. 894-1903 (C. C. Md.)...4, 289, 292, 387, 392, 630, 
 
 659, 662, 666 
 
 Seabury v. Grosvenor, 14 Blatchf. (U. S.) 262-1877 674 
 
 Seamless Rubber Co., In re, 34 App. D. C. 357 439 
 
 Searchlight Gas Co. v. Pres-O.-Lite Co., 215 Fed. 692 (C. C. A. 7th Cir.) 554 
 
 Sears & Nichols Co. v. Brakely, 38 App. D. C. 530 439, 447 • 
 
 Sears, Roebuck & Co. v. ElUott Varnish Co., 232 Fed. 588 393 
 
 Seeger Refrig. Co. v. White Enamel R. Co., 178 Fed, 567-1910 (C. C. D. 
 
 Minn.) 605 
 
 Seeley v. Fisher, 11 Sim. 581-1841 473, 480, 481 
 
 Seigert v. Findlater, 7 Ch. Div. 801-1878 73 
 
 Seixo V. Provezende, L. R. 1 Ch. App. 192-1865. 73, 191, 192, 196, 199, 212, 246 
 
 Selchow v. Baker, 93 N. Y. 59. . , 395 
 
 Selchow V. Chaffee & Selchow Mfg. Co., 132 Fed. 996-1904 (C. C. S. D. N. 
 
 Y.) 100, 406 
 
 Seubert v. Santaella & Co., 36 App. D. C. 447 414 
 
 Sexton & Co. v. Alart & McGuire Co., 114 Ms. Deo. 320 437 
 
 Sexton & Co. v. Arnold & Co., 113 Ms. Dec. 242 437 
 
 Sharpless Co. v. Lawrence, 213 Fed. 423-1914 (C. C. A. 3d Cir.) 388, 715, 716 
 
 Shaver v. HeUer & Merz Co., 108 Fed. 821-1901 (C. C. A. 8th Cir.), 65 L. r! 
 
 A. 878 13, 18, 27,' 48, 193, 670 
 
 Shaver v. Shaver, 54 Iowa, 208-1880, 6 N. W. 188 40 
 
 Shaw V. Pilling, 175 Pa. St. 78-1896 .284 604 
 
 Shaw Stockmg Co. v. Mack, 21 Blatchf. 1-1882 (C. C. N. Y.) . . ' 106 
 
 Shaw Co. V. Mack, 12 Fed. 707 588 
 
 Shelly V. Sperry, 121 Mo. App. 429 4jq 
 
 Shepard v. Stuart, Am. T. M. Cas. (Price & S. 193, 1 B. Phil. 117) 662 
 
 Shepherd v. Wakeman, 1 Sid. 79 327 
 
 Shepp V. Jones, 35 Wkly. Notes Cas. (Pa.) 29-1892 278 279 
 
 Sherry v. Perkins, 147 Mass. 212 ' ^gy 
 
 Sherwood v. Andrews, 5 Am. L. R. N. S. 588-1866 218 
 
Table op Cases lix 
 
 PAGE 
 
 Shoemaker v. South Bend Spark Arrester Co., 135 Ind. 471-1893, 35 N. E. 280, 
 
 22 L. R. A. 332 491 
 
 Shonk Tin Printing Co. v. Shonk, 138 lU. 34^1891, 27 N. E. 529 313 
 
 Siegert v. Abbott, 61 Md. 276-1883 676, 682 
 
 Siegert v. Gandolfi, 149 Fed. 100-1906 (75 C. C. A. 145) 68, 217, 680 
 
 Silkman, Matter of, 121 App. Div. (N. Y.) 202 65 
 
 Silver & Co. v. Waterman, 122 App. Div. (N. Y.) 373 : 575 
 
 Silver Spring Co. v. Woolworth, 16 R. I. 729-1886, 19 Atl. 528 311 
 
 Simmons Medicine Co. v. Mansfield Drug Co., 93 Tenn. 84-1893, 23 S. W. 
 
 165 671, 690 
 
 Simmons, C. F., Medicine Co. v. Simmons, 81 Fed. 163-1897 (C. C. A. Ark.) . . 247, 
 
 268, 316 
 
 Simplex Auto Co. v. Kahnweiler, 162 App. Div. 480 422 
 
 Singer Machine Manufacturers v. Wilson, L. R. 3 App. Cas. 376-1877. .19, 20, 
 
 602, 612, 614, 663 
 
 Singer Mfg. Co. v. Domestic Sewing Machine Co., 49 Ga. 70-1873 480, 499 
 
 Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169-1895, 41 L. ed. 118, 16 Sup. Ct. 
 
 1002 144, 154, 288, 379, 405, 534, 716, 727 
 
 Singer Mfg. Co. v. Loog, L. R. 8 App. Cas. 15-1882, 18 Ch. Div. 395-1880. .6, 14, 
 
 19, 25, 594, 661, 665 
 
 Singleton v. Bolton, 3 Dougl. 293 6 
 
 Sipe & Co., James B., v. Columbia Refining Co., 171 Fed. 295 571 
 
 Skinner v. Oaker, 10 Mo. App. 45-1881 43 
 
 Slater v. Slater, 175 N. Y. 143-1903, 67 N. E. 224, 61 L. R. A. 796 61, 62 
 
 Smith v. Atlas Mfg. Co., 231 U. S. 348 461, 462 
 
 Smith V. David H. Brand & Co.', 67 N. J. Eq. 529-1904, 58 Atl. 1029 69 
 
 Smith v. Everett, 27 Beav. 446-1859 60 
 
 Smith V. Fair, 14 Ont. 729 407 
 
 Smith V. Kenian, 8 Ohio Dec. Repr. 32 (cited in note 31 L. R. A. N. S. 260, 
 
 261) 319 
 
 Smith V. Keman (Ohio), 5 Law Bui. 145, 8 Ohio Deo. Reprint, 32 295 
 
 Smith V. Krause, 160 Fed. 270 384 
 
 Smith V. Sixbury, 25 Hun, 232 395 
 
 Smith et al. v. Hitchcock, 226 U. S. 53, 33 Sup. Ct. 6 428 
 
 Smith & Davis Mfg. Co. v. Smith, 89 Fed. 486-1898 (C. C. N. D. lU.) 104 
 
 Smithies v. National Association of Operative Plasterers (L. R.), 1 K. B., 310- 
 
 1909 '. 333, 354 
 
 Snow V. Judson, 38 Barb. (N. Y.) 210-1862 346, 483 
 
 Snowden v. Noah, 1 Hopk. (N. Y.) 348-1825 539 
 
 Snyder Mfg. Co. v. Snyder, 54 Ohio St. 86-1896, 43 N. E. 325, 31 L. 
 
 R. A. 657 • ■ 41 
 
 Social Register Assn. v. Howard, 60 Fed. 270-1894 (C. C. N. J.) 526 
 
 Social Register Assn. v. Murphy, 128 Fed. 116-1904 (C. C. R. I.) 527 
 
 Society of Accountants and Auditors v. Goodway (1907, Ch. Div.), 76 L. J. Ch. 
 
 384 75 
 
 Society Anonyme v. Western Distilling Co., 46 Fed. 921-1891 (C. C. E. D. Mo.) .719, 
 
 730 
 
 Society Anonyme, etc., v. Western DistiUing Co., 43 Fed. 416-1890 (C. C. E. D. 
 
 Mo.) 683 
 
 Society of the War of 1812 v. The Society of the War of 1812 in the State of 
 
 New York, 46 App. Div. (N. Y.) 568-1900, 62 N. Y. Supp. 355 168 
 
ix Table of Cases 
 
 PAGE 
 
 Sohier v. Johnson, 111 Mass. 238-1872 62 
 
 Solar Baking Powder Co. v. Royal Baking Powder Co., 128 App. Div. (N. Y.) 
 
 650 650 
 
 Solis Cigar Co. v. Pozo, 16 Colo. 388-1891, 26 Pao. 556 50, 51, 270, 683, 690 
 
 South Brewery Co., In re, 32 App. D. C. 591 439 
 
 Southernv. How, Poph. 144 5, 7 
 
 South Wales Miners' Fed. v. Glamorgan, App. Cas. 239-1905. .326, 328, 330, 333, 
 
 345, 350, 354 
 
 Southern White Lead Co. v. Cary, 25 Fed. 125-1885 213 
 
 Spalding & Bros., In re, 27 App. D. C. 314-1906 428, 447 
 
 Spalding & Bros., A. G., v. A. W. Gamage, Ltd., 32 R. P. C. 237, 110 L. T. 
 
 530-1914 563 
 
 Sperry & Co. v. Percival Milling Co., 81 Cal. 252-1889, 22 Pac. 651. . . .95, 96, 265 
 Sperry & Hutchinson Co. v. Mechanics' Clothing Co., 128 Fed. 800-1904 (C. C. 
 
 R. I.) 361, 553 
 
 Sperry & Hutchinson Co. v. Pommer, 208 Fed. 804 350 
 
 Sperry & Hutchinson Co. v. L. Weber & Co., 161 Fed. 219-1908 (C. C. 111.). .367, 
 
 553, 669 
 
 Spiegel V. Zuckerman, 188 Fed. 63 459 
 
 Spottiswoode v. Clark, 10 London Jurist R., 1043, 2 Sandf. Ch. R. 628 725 
 
 Spottiswoode v. Clarke, 2 Phil. 154-1846 642 
 
 Sprigg V. Fisher, 222 Fed. 964 577 
 
 Springhead Spinning Co. v. Riley, L. R. 6 Eq. 551-1868 481 
 
 Stachelberg v. Ponce, 23 Fed. 430-1885 218, 682 
 
 Stagg, Geo. W., Co. v. Taylor, 95 Ky. 651 408 
 
 Stamatopoulos v. Stephano Bros., 41 App. D. C. 590 457 
 
 Standard Brewery Co. v. Interboro Brewing Co., 44 App. D. C. 193 457 
 
 Standard Brewery Co. v. Interboro Brewing Co., 229 Fed. 543 428 
 
 Standard Oil Co., In re, 39 App. D. C. 491 454 
 
 Standard Oil Co. v. Doyle, 118 Ky. 662-1904, 82 S. W. 271 368, 551 
 
 Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446 392 
 
 Standard Table Oil Cloth Co. v. Trenton Oil Cloth & Linoleum Co., 71 N. J. 
 
 Eq. 655, 63 Atl. 846-1906 103 
 
 Standard Underground Cable Co., 27 App. D. C. 320, In re, 429 
 
 Standard Varnish Works v. Fisher, Thorsen & Co., 153 Fed. 928-1907 (C. C. 
 
 Oreg.) 577 
 
 Star Co. V. Wheeler Syndicate, Inc., 91 Misc. (N. Y.) 640-1915 542 
 
 Star Brewery Co. v. Val Blatz Brewing Co., 36 App. D. C. 534 697 
 
 State V. Dalton, 83 S. E. 693-1914 551 
 
 State, The, v. McGrath, 75 Mo. 424-1882 \\\ 182 
 
 Stecher Lithograph Co. v. Dunston Lithograph Co., 233 Fed. 601 512 
 
 Steiff V. Bing, 206 Fed. 900, 124 C. C. A. -560, 215 Fed. 204 547, 573 
 
 Stein V. National Life Assn., 105 Ga. 821-1898, 32 S. E. 615, 46 L. R. A. 150. .60, 
 
 309, 319 
 Stem, A., & Co. v. Liberty Garter Mfg. Co., 198 Fed. 959-1912 (D. C. S. D. N. 
 
 Y-) 401, 602 
 
 Steinert & Sons Co. v. Tagen, 207 Fed. 394-1911 488 
 
 Steinfeld v. National Shirt Waist Co., 99 App. Div. (N. Y.) 286-1904, 90 N. 
 
 Y. Supp. 964 ' ' ei 
 
 Steinway & Sons v. Henshaw, 5 R. P. C. 77-1887 (Ch. Div.) 97 
 
 Stephens v. Peel, 16 L. T. N. S. 145-1867 .95, 263 
 
Table of Cases Ixi 
 
 PAGE 
 
 Sterling Remedy Co. v. Eureka Chemical & Mfg. Co., 70 Fed. 704-1895 (C. C. 
 
 W. D. Wis.), 80 Fed. 105 95, 393 
 
 Sterling Remedy Company v. Gorey, 110 Fed. 372-1901 (C. C. N. D. 
 
 Ohio) ; 265 
 
 Sterling Remedy Co. v. Spennine Medical Co., 112 Fed. 1000-1901 (C. C. A. 
 
 7th Cir.), 106 Fed. 414-1901 (C. C. A. 2d Cir.) 98, 239, 595, 651 
 
 Sterling Varnish Co. v. Macon, 217 Pa. St. 7-1907, 66 Atl. 78 301 
 
 Stem V. Barrett Chemical Co., 29 Misc. (N. Y.) 609 395 
 
 Sternberg Mfg. Co. v. Miller & Co., 161 Fed. 318-1908 (C. C. A. 8th 
 
 Cir.) 291, 405 
 
 Stevens Linen Works v. Wm. & John Don & Co., 127 Fed. 950 407 
 
 Stevens v. Stiles, 29 R. I. 399-1909 818 
 
 Stewart v. Hook, 118 Ga. 445, 45 S. E. 369, 63 L. R. A. 255 303 
 
 Stewart v. Smithson, 1 Hilt, 119 (N. Y. Com. Pleas. 1856) 385 
 
 Stirling Silk Mfg. Co. v. Sterling Silk Co., 59 N. J. Eq. 394-1900, 46 Atl. 199. .599, 
 
 641, 688, 705 
 Stix, Baer & Fuller Dry Goods Co. v. American Piano Co., 211 Fed. 271.. 118, 132 
 
 Stokes v. Allen, 56 Hun, 526 : 516, 522 
 
 Stone V. Grasselli Chemical Co., 65 N. J. Eq. 756-1903, 55 Atl. 736, 63 L. R. 
 
 A. 344 301, 310 
 
 Stonebraker v. Stonebraker, 33 Md. 252-1870 146, 150 
 
 Stoughton V. Woodard, 39 Fed. 902 394 
 
 Straus V. Notaseme Co., 240 U. S. 179 • 235 
 
 Street v. Union Bank, 30 Ch. Div. 156-1885 114 
 
 Stuart V. Simpson, 1 Wend. 376-1828 339 
 
 Stuart V. F. G. Stewart Co., 91 Fed. 243-1899 (C. C. A. 7th Cir.) 97, 589 
 
 Suburban Press v. Philadelphia Suburban Pubg. Co., 227 Pa. 148-1910 536 
 
 Success Co., In re, 34 App. D. C. 443 438 
 
 Summit City Soap Works v. Standard Soap Co., 37 App. D. C. 604 436 
 
 Sunwalt Ice Co. v. Knickerbocker Ice Co., 114 Md. 403 365 
 
 Supreme Lodge, Knights of Pythias v. Improved Order Knights of Pythias, 
 
 113 Mich. 133-1897, 71 N. W. 470, 38 L. R. A. 658 187 
 
 Swain v. Seamens, 9 Wall. 254-1869, 76 U. S. 254, 19 L. ed. 554 706 
 
 Swift & Co. V. Brenner, 125 Fed. 826-1903 (C. C. S. D. N. Y.) 631 
 
 Sykea v. Sykes, 3 B. & C. 541-1824 14, 19, 81 
 
 Symonda v. Jones, 82 Me. 302-1890 682 
 
 T 
 Tabor v. Hoffman, 118 N. Y. 30-1889, 23 N. E. 12, 16 Am. St. Rep. 740. .295, 296, 
 
 300, 302 
 Taendsticksfabriks Aktiobolagat Vulcan v. Myers, 139 N. Y. 364-1893, 34 
 
 N. E. 904 '266, 640 
 
 Tallcot V. Moore, 6 Hun, 106-1875 585 
 
 Tallerman v. Dowsing Radiant Heat Co. (1900), 1 Ch. 1 27 
 
 Tarleton v. McGawley, 1 Peake N. P. C. 205 327, 369 
 
 Tarrant & Co. v. Johann Hoff, 76 Fed. 959-1896, 22 C. C. A. 644 125 
 
 Tasker v. Stanley, ISSMass. 148 340 
 
 Tavis V. Knapp, 121 Fed. 34 296 
 
 Taylor v. Carpenter, 11 Paige, 292, 2 S. ndf . Ch. 603-1845 21 
 
 Tavlor v. Carpenter, 3 Story, 458-1844, Cas. No. 13,784, Co;x. Am. T. M. Cases, 
 •^ p. 14. 5, 401, 410, 702 
 
Ixii Table of Cases 
 
 PAGE 
 
 Taylor v. Gillies, 5 Daly, 285 (aff'd 59 N. Y. 331) 396, 398 
 
 Taylor Co., S. T., v. Nast, 154 N. Y. Supp. 982 538 
 
 Taylor Iron & Steel Co. v. Nichols, 70 N. J. Eq. 541-1905, 61 Atl. 946, 69 Atl. 
 
 186-1908 (N. J. Er. & App.) s. c, 65 Am. Rep. 695-1907 301, 309, 341 
 
 Taylor v. Taylor, 23 L. J. Ch. (N. S.) 255 401 
 
 Taylor, E. H., Jr., & Sons Co. v. Taylor, 27 Ky. L. Rep. 625, 85 S. W. 1085- 
 
 1905 147 
 
 Teacher v. Levy, 23 R. P. C. 117-1905 257 
 
 Teed v. Elworthy, 14 East, 210, Greenlf. Ev. 278 114 
 
 Temperton v. RusseU, 1 Q. B. D. 715-1893 338, 345, 363 
 
 Temple v. Gordon, 159 Pa. 983 393 
 
 Teofani & Co., Ltd., v. Teofani, 30 R. P. C. 446 404 
 
 Tetlow V. Tappin, 85 Fed. 774 412 
 
 Thacker Coal & Coke Co. v. Burke, 59 W. Va. 253-1906, 53 S. E. 161, 5 L. R. 
 
 A. N. S. 1091 335 
 
 Theodore Rectanus Co. v. United Drug Co., 226 Fed. 546-1915 74, 449 
 
 Thermogene Co., Ltd., v. Thermogine Co., Inc., 234 Fed. 69 (C. C. A.) 393 
 
 Thibodeau v. Hildreth, 124 Fed. 892 308 
 
 Thomas v. Williams, L. R. 14 Ch. Div. 864-1880 .475, 483, 484, 505 
 
 Thompson v. Montgomery, 41 Ch. Div. 35-1889, aff'd App. Cas. 217-1891, 
 
 "Stone Ale" 73, 104, 618 
 
 Thorley's Cattle Food Co. v. Massam, L. R. 6 Ch. Div. 482-1877, see on appeal 
 
 14 Ch. Div. 763-1880 474, 475, 483, 484 
 
 Thorneloe v. Hill, 11 R. P. C. 61-1894 (Ch. Div.) 44 
 
 Thum & Co. V. Tloczynski, 114 Mich. 149-1897, 38 L. R. A. 200, 72 N. W. 140. . 308 
 
 Thynne v. Shove, 45 Ch. Div. 577-1890 57 
 
 Tilghman v. Proctor, 125 U. S. 136, 148, 31 L. ed. 664, 668, 8 Sup. Ct. Rep. 894 
 
 (Patent Cases) 715 
 
 Tim & Co. V. Cluett, Peabody & Co., 42 App. D. C. 212 450 
 
 Tipping V. Clarke, 2 Hare, 393 311 
 
 Tobias v. Harland, 4 Wend. (N. Y.) 537-1830 496, 499 
 
 Tode V. Gross, 127 N. Y. 480-1891, 28 N. E. 469, 13 L. R. A. 652, note .'312 
 
 Toledo, etc., Ry. Co. v. Pennsylvania Co., 54 Fed. 730-1893 (C. C. Ohio), 19 
 
 L. R. A. 387 505 
 
 Tolman v. Mulcahy, 119 App. Div. (N. Y.) 42-1907, 103 N. Y. Supp. 936 305 
 
 Trade-mark Cases, 100 U. S. 82, 25 L. ed. 550.. .376, 379, 413, 426, 428, 446, 618 
 
 Traiser v. Daty Cigar Co., 198 Mass. 327 461 465 
 
 Trego V. Hunt, 12 T. R. R. 80-1895 (1896), App. Caa. 7 '.55, 6o[ 317 
 
 Tremaine v. Hitchcock & Co., 90 U. S. 518 729 
 
 Tremolo Patent, 23 Wall. 518, 23 L. ed. 97, 90 U. S. 518 .729, 730 
 
 Tuchman v. Welch, 42 Fed. 548-1890 .' 40 
 
 Turton v. Turton, 42 Ch. Div. 128-1889 88, 110, 122, 621 
 
 Tussaud v. Tussaud, 44 Ch. Div. 678-1890 ' ' 149 
 
 Tuttle V. Buck, 107 Minn. 145-1900 .369 560 
 
 Twitchell v. Nelson, 126 Minn. 423 .' 348 
 
 U 
 
 Udell-Predock Mfg. Co. v. Udell Works, 32 App. D. C. 282 438 
 
 Underwood Typewriter Co. v. A. B. Dick Co., 36 App. D. C. 175 45O 
 
 Ungles-Hoggette Mfg. Co. v. Farmers' Hog & Cattle Powder Co., 232 Fed. 116 393 
 
Table of Cases Ixiii 
 
 PAGE 
 
 Union Distilling Co. v. Schneider, 29 App. D. C. 1 454 
 
 United Drug Co. v. Theodore Rectanus Co., 206 Fed. 570 (D. C. Ky., 1913) . . 418 
 
 United Electric Co. v. Creamery P. M. Co., 203 Fed. 53 496 
 
 United Lace Co. v. Barthels Mfg. Co., 213 Fed. 535-1914 (D. C. E. D. N. Y.). 605 
 
 United L. & B. Mfg. Co. v. Barthels Mfg. Co., 221 Fed. 456 237 
 
 United States v. Duell, 17 App. Cas. (D. C.) 575-1901 425 
 
 United States v. Great Lakes Towing Co., 217 Fed. 656 '. 567 
 
 United States ex rel. Newcomb Motor Co. v. Moore, 30 App. D. C. 464 452 
 
 United States Frame & Picture Co. v. Horowitz, 51 Misc. (N. Y.) 101-1906, 
 
 100 N. Y. Supp. 705, 139 A. D. 895, aff'd 204 N. Y. 630-1912. .598, 599, 654 
 U. S. Mercantile Reporting Co. v. U. S. Mercantile Rep. & Collecting Assn., 
 
 21 Abb. N. C. (N. Y.) 115-1888 621 
 
 United States Tobacco Co. v. McGreenery, 144 Fed. 531-1906 (C. C. Mass.), 
 
 aff'd 144 Fed. 1022 243 
 
 Uri V. Hirsch, 123 Fed. 568-1903 (C. C. W. D. Mo.) 574, 578, 683 
 
 V 
 
 Vacuum Oil Co. v. Eagle Oil Co., 154 Fed. 867, aff'd 162 Fed. 671-1908 637 
 
 Valentine Meat Juice Co. v. The Valentine Extract Co., Ltd., 83 L. T. N. S. 
 
 259-1900, 17 R. P. C. 673 153 
 
 Valvoline Co. v. Havoline Co., 211 Fed. 189 436 
 
 Van Auken Co. v. Van Auken Steam Specialty Co., 57 111. App. 240-1894 184 
 
 Van Camp Packing Co. v. Cruikshanks Bros. Co., 90 Fed. 814-1898 (C. C. A. 
 
 3d Cir.) 642 
 
 Van Hoboken v. Mohns & Kaltenbach, 112 Fed. 528-1901 (C. C. N. D. Cal.) .257, 
 
 406, 407 
 
 Van Horn, Ltd., v. Coogan, 52 N. J. Eq. 380-1894, 28 Atl. 788 226, 687 
 
 Van Houten v. Hooten Chocolate Co., 130 Fed. 600-1904 (C. C. N. J.) . . .624, 651 
 Van Kannel Revolving Door Co. v. American Revolving Door Co., 215 Fed. 582 672 
 
 Van Raalt v. Schneck, 170 Fed. 1021 654 
 
 Van Stan's Stratena Co., Ltd., v. Van Stan, 209 Pa. St. 564-1904, 58 Atl. 
 
 1064 146, 156 
 
 Van Zile v. Nomb Mfg. Co., 228 Fed. 829 245, 246 
 
 Vassar CoUege v. Loose-Wiles Biscuit Co., 197 Fed. 982-1912 (W. D. Mo.) . 168, 486 
 
 Vegalahn v. Gunter, 167 Mass. 92 340, 354, 487 
 
 Viano v. Baccigalupo, 183 Mass. 160-1903, 67 N. E. 641 179 
 
 Victor Safe & Lock Co. v. Deright, 147 Fed. 211-1906 (C. C. A. 8th Cir.) . .478, 497 
 Victor Talking Machine Co. v. Armstrong, 132 Fed. 711-1904 (C. C. S. D. N. Y.) 277 
 
 Virginia Baking Co. v. Southern Biscuit Works, 111 Va. 227 421 
 
 Virginia Hot Springs Co. v. Hegeman & Co., 138 Fed. 855-1905 381 
 
 Virtue v. Creamery P. M. Co., 123 Minn. 17 369, 372, 496 
 
 Vitascope Co. v. U. S. Phonograph Co., 83 Fed. 30-1897 (C. C. N. J.) 19 
 
 Von Au V. Magenheimer, 126 App. Div. (N. Y.) 257 65 
 
 Von Bremen v. MacMonnies, 200 N. Y. 41-1910 55, 317 
 
 Vonderbank v. Schmitt, 44 La. Ann. 264-1892, 15 L. R. A. 462, 10 So. 616. ... 42 
 Von Faber v. Faber, 124 Fed. 603-1903 (C. C. S. D. N. Y.).. . .619, 625, 626, 649 
 
 Von Mumm v. Frash, 56 Fed. 830-1893 211 
 
 Von Mumm v. Steinmetz, 137 Fed. 168-1905 (C. C. S. D. N. Y.) 706 
 
 Vulcan V. Myers, 139 N. Y. 364, 101 U. S. 51 518, 601 
 
 Vulcan V. Myers, 58 Hun, 161 620 
 
Ixiv Table of Cases 
 
 PAGE 
 
 Vulcan Detinning Co. v. American Can Co., 75 N. J. Eq. 642; s. c. 80 N. J. Eq. 
 
 443 314 
 
 Vulcan Detinning Co. v. American Can Co., 67 N. J. Eq. 243-1904, 58 Atl. 
 
 290, 72 N. J. Eq. 387, 67 Atl. 339 296, 303, 316, 320 
 
 Vulcan Detinning Co. v. American Can Co., 69 Atl. 1103-1908 (N. J. Eq.) . .320, 649 
 
 W 
 
 Wagner v. Conried, 125 Fed. 798 511 
 
 Wagner Typewriter Co. v. F. S. Webster Co., 144 Fed. 405-1906 (C. C. S. D. 
 
 N. Y.) 286 
 
 Waldes v. International Manufacturers' Agency, U. S. Dist. Ct. Southern Dis- 
 trict of N. Y. 1916, 237 Fed. 502, 7 Trade-Mark Rep. 7. .380, 411, 414, 464, 
 
 607 
 Walker v. Cronin, 107 Mass. 555-1871. . .326, 337, 338, 339, 340, 353, 362, 487 
 
 Walker, Hiram, & Sons v. Gnebman, 224 Fed. 725 236 
 
 Walker v. Mottram, 19 Ch. Div. 355-1881 , 52 
 
 WaUach v. Wigmore, 87 Fed. 469 639 
 
 Walter v. Emmot, 54 L. J. Ch. N. S. 1059-1885 535 
 
 Wamsutta Mills v. Allen, Cox's Manual, 660-1878 (Com. PI. Phila.) 98 
 
 Warner v. Roehr, 29 Fed. Cas. 266, No. 17189a-1884 735 
 
 Warner v. Searle & Hereth Co., 191 U. S. 195 573 
 
 Warren, A. D., v. Warren Thread Co., 134 Mass. 247-1883 60 
 
 Warren Featherbone Co. v. American Featherbone Co., 141 Fed. 613 405 
 
 Warren Featherbone Co. v. Landauer, 151 Fed. 130-1903 (C. C. Wis.). .491, 495, 
 
 496, 501 
 
 Warsehauser v. Brooklyn Furniture Co., 169 A. D. 81 349, 352 
 
 Waterbury Chemical Co. v. Reed, 41 App. D. C. 256. 436 
 
 Waterman L. E. Co. v. Modern Pen Co., 235 U. S. 88, 35 Sup. 91-1914. .132, 135, 
 
 136, 138, 163, 647, 664 
 
 Waterman v. Shipman, 130 N. Y. 301-11 377 
 
 Watkins v. Landon, 52 Minn. 389-1893, 54 N. W. 193, 19 L. R. A. 236 302 
 
 Wayne County Preserving Co. v. Burt Olney Canning Co., 32 App. D. C. 279 . 435, 
 
 452 
 
 Weatherbee, Matter of. New York Law Journal, Nov. 5, 1913 65 
 
 Wedderburn v. Wedderburn, 22 Beav. 84-1855 60 
 
 Weener v. Bray ton, 152 Mass. 101, 25 N. E. 46, 8 L. R. A. 640 23, 416 
 
 Weingarten v. Charles Bayer & Co., 22 R. P. C. 341 (H. L., 1905) 90 
 
 Weinstock, Lubin & Co. v. Marks, 109 Cal. 629-1895, 42 Pac. 142, 30 L. R. A. 
 
 182 14, 35, 258, 548, 697, 652 
 
 Welch V. Knott, 4 K. & J. 747-1857 614 
 
 Wellman & Dwire Tobacco Co. v. Ware Tobacco Works, 46 Fed. 289-1891 
 
 (C. C. Minn.) 246 
 
 Wells v. Ceylon Perfume Co., 105 Fed. 621-1900 (C. C. S. D. N. Y.) 94 
 
 Wells & Richardson Co. v. Abraham, 146 Fed. 190-1906 (C. C. E. D. N. Y.) 
 
 aff'd 149 Fed. 408-1906 (C. C. A. 2d Cir.) 359I 350 
 
 Wells & Richardson Co. v. Siegel, Cooper & Co., 106 Fed. 77-1900 (C. C. 111.). 394 
 
 Welabach Light Co. v. Adam, 107 Fed. 463 382, 412 
 
 Welsh, Matter of. Mills Reports, Vol. 9, page 411 65 
 
 Wentzel v. Barbin, 189 Pa. St. 602 ! . . ! ! 317 
 
 Werckmeister v. American Lithographic Co., 134 Fed. 321 511 
 
 Wesley v. Native Lumber Co., 97 Misc. 814-1910 367 
 
Table of Cases Ixv 
 
 PAGE 
 
 West Publishing Co. v. Edward Thompson Co., 169 Fed. 833-853 514 
 
 West Virginia Transportation Co. v. Standard Oil Co., 50 W. Va. 611-624.334, 371 
 
 Westinghouse v. Wagner, 225 U. S. 604 726 
 
 Westcott Chuck Co. v. Oneida Nat. Chuck Co., 199 N. Y. 247 716 
 
 Westcott Chuck Co. v. Oneida Nat. Chuck Co., 122 App. Div. (N. Y.) 260-1907 107 
 
 Western Electric Co., In re, 39 App. D. C. 420 393, 439 
 
 Western Grocer Co. v. Caffarelli, 102 Tex. 104, 108 S. W. 413-1908 599 
 
 Westernset v. National Paper Co., 154 Ind. 673, 57 N. E. 552 510 
 
 Westervelt v. National Paper & Supply Co., 154 Ind. 673-1900, 57 N. E. 
 
 552 309 
 
 Westminster Laundry Co. v. Hesse Envelope Co., 174 Mo. App. 238 557 
 
 Weston V. Barnicoat, 175 Mass. 454 340 
 
 Weston V. Ketcham, 51 How. Pr. N. Y. 455 377 
 
 Weyman v. Soderberg, 108 Fed. 63-1901 (C. C. W. D. Wis.) 227 
 
 Weyman-Burton Co. v. Old Indian Snuff Mills, 197 Fed. 1015 672, 710 
 
 Wheaton v. Peters, 8 Pet. 591 509, 511 
 
 Wheeler v. Johnson, 3 L. R. Ir. 284-1879 211 
 
 Whitcher, Frank W., v. Sneierson, 205 Fed. 767-1913 (D. C. D. Mass.) ... 607 
 
 White V. Mellin, L. R. 1895, A. C. 154 496 
 
 White V. Merritt, 7 N. Y. 352-1852 346 
 
 S. S. White D. M. Co. v. Mitohel, 188 Fed. 1017 314, 319, 573 
 
 White V. Trowbridge, 216 Pa. St. 11, 64 Atl. 862 56, 156 
 
 White Studios, Inc., v. Dreyfoos, 156 A. D. (N. Y.), 762 553 
 
 Whitehead v. Kitson, 119 Mass. 484-1876 482 
 
 Whitstable Oyster Fishery Co. v. Hayling Fisheries, 18 R. P. C. 434-1901 221 
 
 Whittier v. Dietz, 66 Cal. 78-1884 380 
 
 Whitwell V. Continental Tobacco Co., 125 Fed. 454 366 
 
 Wiggins, H. B., Sons Co. v. Cott-A-Lap Co., 169 Fed. 150-1909 313 
 
 Wilcox & Co., In re, 36 App. D. C. 107 435 
 
 WUcox & Gibbs Sewing Machine Co. v. The Gibbens Frame, 17 Fed. 623-1883 
 
 (C. C. S. D. N. Y.) 278, 288 
 
 Wilcoxen v. McCray, 38 N. J. Eq. 466-1884 85 
 
 Wilkinson v. Griffith Bros. & Co., 8 Rep. Pat. Cas. 370 587 
 
 WiUiams v. Adams, 8 Biss. 452-1879 (C. C. 111.) Fed. Cas. 17711 400, 698 
 
 WiUiams v. Brooks, 50 Conn. 278-1882 248, 662 
 
 Williams v. Farrand, 88 Mich. 473-1891, 50 N. W. 446, 14 L. R. A. 161 . . . : . . 41 
 
 Williams v. Mitchell, 106 Fed. 168 394, 716 
 
 Williams v. Wilson, 4 Sandf. Ch. (N. Y.) 379-1846 60 
 
 Williams Soap Co. v. J. B. Williams Soap Co., 193 Fed. 384 (C. C. A.). . . . 171, 403 
 Williamson Corset & Brace Co. v. Western Corset Co., 70 Mo. App. 424- 
 
 1897 593 
 
 Willis V. O'ConneU, 231 Fed. 1004-1916 (D. C. Ala.) > • 485 
 
 Wilmer v. Thomas, 74 Md. 485-1891, 22 Atl. 403, 13 L. R. A. 380 49 
 
 Wilson V. Hecht, 44 App. D. C. 33 450 
 
 Wilson Co. V. Foster, 80 Fed. 896-897 35 
 
 Winsmore v. Greenbank, Willes, 577-1745 327, 337 
 
 Winchester Repeating Anns Co. v. Butler Bros., 128 Fed. 976 573, 575, 576 
 
 Winchester Repeating Arms Co. v. Peters Cartridge Co., 30 App. D. C. 505. . 439 
 
 Winsor v. Clyde, 9 Phila. 513-1872 (Ct. Com. PI. Phila.) 231 
 
 Wirtz V. Eagle Bottling Co., 50 N. J. Eq. 164-1892, 24 Atl. 658. .234, 259, 582, 
 
 585, 619 
 
Ixvi Table of Cases 
 
 PAGE 
 
 Witherspoon v. Currie 104 
 
 Witkop V. Boyce, 61 Misc. (N. Y.) 126-31, aff'd 131 App. Div. 922 318 
 
 Witkop & Holmes Co. v. Great A. & P. Tea Co., 69 Misc. (N. Y.) 90, 124 N. Y. 
 
 - Supp. 956 314, 318, 547 
 
 Witthaus V. Braun, 44 Md. 303-1875 43 
 
 Wolf V. Harris, 184 S. W. 1139-1916 485 
 
 Wolf & Sons, N., V. Lord & Taylor, 41 App. D. C. 514-1914 421 
 
 Wolf, B. J., & Sons V. New Orleans, etc., Co., 113 La. 388-1904, 37 So. 2, 67 
 
 L. R. A. 65 335 
 
 Wolf Bros. & Co. V. Hamilton-Brown Shoe Co., 165 Fed. 413 (C. C. A.) 396 
 
 Wolf Bros. & Co. V. Hamilton-Brown Shoe Co., 206 Fed. 611 726 
 
 Wolfe V. Barnett & Lion, 24 La. Ann. 97-1872 684 
 
 Wolfe V. Burke, 56 N. Y. 115-1874 13, 677 
 
 Wolfe V. Goulard, 18 How. Pr. 64 406 
 
 Woodcock V. Guy, 33 Wash. 234 576 
 
 Woods Sons Co., T. B., v. Valley Iron Works, 166 Fed. 770 670 
 
 Woodward v. Lazar, 21 Cal. 449-1863 83 
 
 Woollam V. Ratcliff, 1 Hem. & M. 259-1863 617 
 
 Woolsey v. Judd, 4 Duer (N. Y.), 379-1855 295 
 
 Worcester Brewing Co. v. Rueter & Co., 157 Fed. 217-1907 (C. C. A. 1st Cir.), 
 
 30 App. D. C. 428 447, 599, 704, 727, 733, 734 
 
 Worcester Royal Porcelain Co. v. Locke & Co., 19 R. P. C. 479-1902 220 
 
 Worden v. California Fig Syrup Co., 187 U. S. 516-1902, 47 L. ed. 282, 23 
 
 Sup. Ct. 161 385, 675 
 
 Worden & Co. v. California Fig Syrup Co., 102 Fed. 334-1900 674 
 
 Wormser v. Shayne, 111 111. App. 556-1904 684, 687 
 
 Wotherspoon v. Currie, L. R. 5 Eng. & Ir. App. 508-1872 73, 202, 618, 622 
 
 Wren v. Weild, L. R. 4 Q. B. 730-1876 482 
 
 Wright, A. D., v. J. C. Coules, 4 Cal. App. 343-1906 501, 503 
 
 Wright V. Eisle, 86 App. Div. (N. Y.) 356 512 
 
 Wright, In re, 33 App. D. C. 510 437, 447 
 
 Wright Restaurant Co. v. Seattle Co., 67 Wash. 690, 122 Pac. Rep. 348 42 
 
 Wrigley, Wm., Jr., & Co. v. L. P. Larsen, Jr., Co., 195 Fed. 568 269, 393 
 
 Wrigley v. Norris, 34 App. D. C. 138 ~ . .452, 607 
 
 Wringley, Wm., Jr., Co. v. Grove Co., 161 Fed. 885, 183 Fed. 99 (C. C. A. 2d 
 
 Cir.) 393 
 
 Wrisley, A. B., Co. v. Iowa Soap Co., 104 Fed. 548 218, 385 
 
 Wrisley Co. v. Iowa Soap Co., 122 Fed. 796-1903 (C. C. A. 8th Cir.) 400, 625 
 
 Wurm V. Webster, 21 R. P. C. 373 231, 232 
 
 Wyckoff, Seamans & Benedict v. Howe Scale Co., 122 Fed. 348-1903, 58 C. C. 
 ^ A. 510 124, 125 
 
 Y 
 
 Yale & Towne Mfg. Co. v. Alder, 154 Fed. 37-1907 (C. C. A. 2d Cir.), rev'g 
 
 149 Fed. 783-1906 278, 283 
 
 Yale & Towne Mfg. Co. v. Ford, 203 Fed. 707 (C. C. A.) .' 405 
 
 Yale & Towne Mfg. Co. v. Restein, 196 Fed. 176 405 
 
 Yale & Towne Mfg. Co. v. Worcester Mfg. Co., 195 Fed. 528 (C. C. A.), 205 
 
 ' Fed. 952 ; 405 
 
 Yonge v. Ward, 21 L. T. N. S. 480 667 
 
Table of Cases Ixvii 
 
 PAGE 
 
 Youatt V. Winyard, IJ. & W. 394-1820 ". .300, 305 
 
 Young V. Macrae, 9 Jur. N. S. 322-1862 ; . . . 82 
 
 Z 
 
 Zanturjian v. Boornazian, 25 R. I. 151 317 
 
THE LAW 
 
 UNFAIR COMPETITION 
 
 CHAPTER I 
 The Legal Docteine of Unfair Competition 
 
 Section 1. Unfair competition is not a subdivision of trade-mark law. 
 
 2. Historical: early cases of unfair competition in America and 
 
 England. 
 
 3. The law of unfair competition curtails freedom of trade, but only 
 
 of trading that is unfair. 
 
 4. Definitions of unfair competition. 
 
 Section 1. Unfair Competition is not a Subdivision of Trade- 
 mark Law. — In the digests one usually finds unfair competition 
 cases under the general head of trade-marks. This is misleading; 
 for the law of trade-marks does not include unfair competition, 
 but rather the law that governs trade-marks and infringements of 
 them is but a part of the law regulating unfair and dishonest 
 competition and trade. 
 
 This misconception of the true meaning and scope of the 
 doctrine of unfair competition may cause some to take issue with 
 the writer, on the correctness of including in a book bearing the 
 title of Unfair Competition, some of the classes of cases here in- 
 cluded. It is beUeved, however, that the bar will be called upon 
 more and more frequently to protect traders whose business is 
 threatened with injury or destruction, from many sorts of dis-. 
 honest or unfair competition beside those arising out of trade- 
 marks and trade names. Referring to the development of Unfair 
 Competition law, W. K. Townsend said in 1901: "Not yet fully 
 adopted by all the courts, still to be developed in its appUcation to 
 particular circmnstances and conditions, this broad principle of 
 
 1 
 
2 The Legal Doctrine of Unfair Competition 
 
 business integrity and common justice is the product and the 
 triumph of the development of the law of trade-marks in the last 
 half century, and the bulwark which naakes possible and protects 
 the world-wide business repmtations common and growing more 
 common in this new country. This statement even after fifteen 
 years, describes accurately present day conditions.^ 
 
 Unfair competition is not confined to acts directed against the 
 owners of trade-marks or trade names, but exists wherever imfair 
 means are used in trade rivalry. Equity looks, not at the char- 
 acter of the business in which the parties before the court are en- 
 gaged, but at the honesty or dishonesty of their acts. It is imfau- 
 to pass off one's goods as those of another person; it is unfair to 
 imitate a rival's trade name or label; but he who seeks to win 
 trade by fair means or foul is not Umited to these methods. He 
 may copy and imitate the actual goods made or sold by a com- 
 petitor, he may libel or slander these goods, make fraudulent 
 use of a family name, of trade secrets, of corporate names, of 
 signs, of threats of action, he may construct buildings which are 
 reproductions of pecuUar buildings of a rival, thus producing con, 
 fusion in the minds of purchasers, which enables him to purloin 
 his rival's trade, and in a hundred other unfair ways secure an- 
 other's trade. 
 
 By no means all acts done in competition which the average 
 person would describe as unfair are recognized by equity as ac- 
 tionable. Most of such acts are not so recognized. In the past 
 equity courts usually have not regarded an act as actionable im- 
 der the law of imfair competition unless such act constituted a 
 passing off of the goods of one person as those of another. In 
 England unfair competition is termed "Passing Off," although in 
 other countries the concept of it is much broader than mere 
 passing off of goods. 
 
 That a difference might exist between unfair competition from a 
 legal standpoint and unfair competition from a popular standpoint 
 was recognized by Congress in discussing section 5 of the Trade 
 Commission Bill. As finally enacted it forbids, not "Unfair Com- 
 petition," but "Unfair Methods of Competition." ^ 
 
 Unfair competition does not necessarily involve the violation 
 of any exclusive right to the use of a word, mark, or symbol. It 
 
 ' "Two Centuries Growth of Amer- ^ See N. Y. Times Annalist, Octo- 
 ican Law," Scribners, 1901. ber 26, 1914, p. 240. 
 
Unfair Competition not Subdivision op Trade-mark Law 3 
 
 may arise from the misuse of words, marks, or symbols which are 
 free to everybody to use and are not subject to exclusive appro- 
 priation by anyone. The existence of this right of action depends 
 upon the question of fact, whether what is done in any special 
 case tends to pass off the goods of one man as being those of 
 another, or tends to deprive anyone of his rights. On the other 
 hand, a trade-mark action has always been supposed to involve 
 some exclusive right to a mark. This is the only substantial 
 distinction between cases of imfair competition, or passing off 
 actions as they are called in England, and cases of infringement 
 of trade-marks.^ This distinction has no practical value. The 
 action on a trade-mark and the action for unfair competition do 
 not differ except that it is, of course, more difficult to prove that 
 a geographical or other public name is used as a trade-mark than 
 to prove this as to an invented or fanciful word. 
 
 Names or the words making up names may be descriptive, indi- 
 cating general qualities such as style, size, shape, color or appear- 
 ance, words which are public property as much as are the adjectives 
 of the language; or they may be fanciful and not at all descriptive, 
 or they may be public or family names. It is possible for any sort 
 of name or device to be used for a trade purpose. All rival traders 
 have an absolute right to use such descriptive names ; but if one of 
 these words, by long association with the goods of one person, has 
 come to mean to the public his goods alone and not such goods in 
 general, then any other person may be prohibited from using 
 it. A trader "will not be permitted, with intent to mislead the 
 public, to use such words, marks, or symbols in such a manner, 
 by trade dress or otherwise, as to deceive or be capable of deceiving 
 the public as to the origin, manufacture, or ownership of the 
 articles to which they are applied; and the latter may be required, 
 when using such words, marks, or symbols, to place on articles of 
 his own production or the packages in which they are usually sold 
 something clearly denoting the origin, manufacture, or ownership 
 of such articles, or negativing any idea that they were produced 
 or sold by the former." ^ 
 
 The foundation principle is the same, in both trade-mark and 
 passing off cases. Both actions rest upon the same principle, which 
 
 s Above statement cited Bates Mfg. * Dennison Mfg. Co. v. Thomas 
 Co. V.Bates Numbering Mach. Co., 172 Mfg. Co., 94 Fed. 651-59-1899 (C. 
 Fed. 895. C. Del.). 
 
4 The Legal Doctrine of Unfair Competition 
 
 is that no man has a right to pass off his goods upon the public as 
 and for the goods of another. "Inasmuch as the testimony shows 
 unfair competition which entitled them (plaintiffs) to an injunc- 
 tion, it is deemed unnecessary to discuss the distinction which 
 seemed to differentiate this case from one of trade-mark, pure 
 and simple — the foundation principle upon which relief is granted 
 being substantially the same and the like remedy invoked." * 
 
 Again, "An infringement of such trade-mark consists in the use 
 of the genuine upon substituted goods or of an exact copy or 
 reproduction of the genuine, or in the use of an imitation in which 
 the difference is colorable only, and the resemblance avails to 
 mislead so that the goods to which the spurious trade-mark is 
 affixed are Ukely to be mistaken for the genuine product; and this 
 upon the ground that the trade-mark adopted by one is the exclu- 
 sive property of its proprietor, and such use of the genuine, or 
 such imitation of it, is an invasion of his right of property. Unfair 
 competition is distinguishable from the infringement of a trade- 
 mark in this: that it does not involve necessarily the question of 
 the exclusive right of another to the use of the name, symbol, or 
 device. A word may be purely generic or descriptive, and so not 
 capable of becoming an arbitrary trade-mark, and yet there may 
 be an unfair use of such word or symbol which will constitute 
 unfair competition. Thus a proper or geographical name is not 
 the subject of a trkde-mark, but may be so used by another un- 
 fairly, producing confusion of goods, and so come under the con- 
 demnation of unfair trade, and its use will be enjoined. The right 
 to the use of an arbitrary name or device as indicia of origin is 
 protected upon the ground of a legal right to its use by the person 
 appropriating it." " 
 
 § 2. Historical: Early Cases of Unfair Competition in America 
 and England. — The legal doctrine of unfair competition is a 
 development of the fundamental idea that it is against public 
 policy that the goods of one person should be offered for sale or 
 sold as those of another. Very few cases dealing with the ques- 
 tion were decided in England or America prior to 1850. At first 
 this idea was applied only to what were then termed trade-mark 
 cases. 
 
 <■ Scriven v. North, 134 Fed. 366- » G. W. Cole Co. v. American Cement 
 80-1904 (C. C. A. 4th Cir.); 67 C.C. Co., 130 Fed. 703-1904, at p. 705 
 A. 348. (C. C. A. 7th Cir.). 
 
Historical: Early Cases of Unfair Competition 5 
 
 One of the first cases involving a trade-mark or trade name in 
 which the courts in America granted an injunction was decided 
 in 1844, by Judge Story. This was the ' ' Taylor's Persian Thread " 
 case.^ The growth of the doctrine has been thus described. 
 "During this period of growth the courts, at first inclined to 
 develop the law along narrow and technical lines, have oome to 
 see more and more clearly the fundamental principles upon which 
 to act in extending this protection of the law to the achievements 
 of business. Now the technical doctrines are less and less em- 
 ployed and one simple just rule is invoked. The law of trade- 
 marks is disappearing in a broader principle which prohibits 
 unfair trade." * 
 
 A similar statement is made in Church & Dwight Co. v. Russ: ' 
 "The tendency of the courts at the present time seems to be to 
 restrict the scope of the law applicable to technical trade-marks, 
 and to extend its scope in cases of unfair competition." 
 
 The cases given below show in part the beginnings of the 
 doctrine. In 1742 Lord Hardwicke refused an injunction in 
 Blanchard v. Hill.^" This was an action to restrain the defendant 
 from using the mogul stamp on his cards. The plaintiff, in con- 
 formity with the charter granted to the Cardmakers' Company by 
 King Charles I, had appropriated the stamp to himself, and so 
 considered the sole right to be in him. His lordship said: "Every 
 particular trader has some particular mark or stamp; but I do not 
 know any instance of granting an injunction here, to restrain one 
 trader from using the same mark with another; and I think it 
 would be of rnischievous consequence to do it." He then referred 
 to a case cited in Southern v. How,^^ where an action was brought 
 by a cloth worker against another of the same trade for using the 
 same mark, and judgment was given that the action would he; but 
 added, "it was not the single act of inaking use of the mark that 
 was sufficient to maintain the action, but doing it with a fraud- 
 ulent design, to put off bad cloths by this means, or to draw away 
 customers from the other clothier." 
 
 Lord Eldon in Hogg v. Kirby,^^ a case decided in 1803, speaks 
 
 ' Taylor v. Carpenter, 3 Story, 458, » 99 Fed. 276-78-1900 (C. C. 
 
 Cox. Am. T. M. Cases, p. 14. Ind.). 
 
 8 " Two Centuries Growth of Amer- " 2 Atk. 484-1742. 
 
 ican Law," Scribners, 1901, of Yale, " Poph. 144. 
 
 p. 436. " 8 Vesey Jr. 215-1803. 
 
6 The Legal Doctrine of Unfair Competition 
 
 of "fair competition:" and it is doubtful if the term "fair com- 
 petition" or "unfair competition" had been used prior to that 
 time. The body of law now referred to as the doctrine of unfair 
 competition has been but recently known under that name. This 
 is shown by the fact that Mr. Cox, in his well-known "Manual of 
 Trade-Mark Cases," published in 1892, refers in his index to but 
 eight cases as unfair competition cases, although many of the 
 cases he includes in the volume are now frequently cited as laying 
 down the fundamental rules of that law. "The original foun-' 
 dation of the whole law is this, that when one knowing that 
 goods are not made by a particular trader sells them as and for the 
 goods of that trader, he does that which injures that trader. At 
 first it was put upon the ground that he did so when he sold 
 inferior goods as and for the trader's; but it is estabhshed alike at 
 law ^' and in equity," that it is an actionable injury to pass off 
 goods not known to be the plaintiff's as and for the plaintiff's, even 
 though not inferior." ^^ 
 
 The case of Singleton v. Bolton *® decided in 1783 shows the 
 use of these principles at an early date. 
 
 Judge Duer in Amoskeag Mfg. Co. v. Spear ^^ founded the doc- 
 trine of unfair competition on Blofield v. Payne,^ Crawshay v. 
 Thompson,^^ Knott v. Morgan,^° Croft v. Day.^^ These cases are 
 summarized below: 
 
 " Blofield V. Payne, 4 B. & Ad. 410- would be a fraud for which an ac- 
 
 1833. tion would lie. But here both the 
 
 "Edekten v. Edelsten, 1 De G. J. plaintiff and defendant use the name 
 
 & S. 185-1863. of the original inventor, and no evi- 
 
 ^^ Singer Mfg. Co. v. Loog, L. R. dence was given of the defendant 
 
 8 App. Gas. 15-1882, at p. 29. having sold it as if prepared by the 
 
 " 3 Dougl. 293. plaintiff. The only ground on which 
 
 "Thomas Singleton, the plaintiff's the action could have been maintained 
 
 father, sold a medicine called 'Dr. was that of property in the plaintiff, 
 
 Johnson's Yellow)? Ointment.' The which was not pretended, there being 
 
 plaintiff, after his father's death, con- no patent, nor any letters of adminis- 
 
 tinued to sell the medicine, marked tration. 
 
 in the same way. The defendant " Rule discharged." 
 
 also sold the medicine, with the same " 2 Sandf . N. Y. 599-1849. 
 
 mark, and for that injury the present " 4 B. & Ad. 410-1833. 
 
 action was brought. * * * Lord " 4 Man. & Gr. 357-1842. 
 
 Mansfield said, that if the defendant ^o 2 Keen, 213-1836. 
 
 had sold a medicine of his own, under 21 7 Beav. 84-1843. 
 the plaintiff's name or mark, that 
 
Historical: Early Cases of Unfair Compei'ition' 7 
 
 Blofield V. Payne was an action on the case, before a jury, for 
 damages, decided in 1833. Plaintiff made hones, which he sold 
 wrapped in a peculiar envelope, which served, he alleged, to dis- 
 tinguish his hones from other kinds. He acquired a great reputa- 
 tion for the quality of his hones. Defendant used similar wrappers 
 and words on them which denoted they were of the plaintiff's 
 make. Plaintiff recovered 1 farthing damage; and on appeal the 
 verdict was upheld. The opinion was in substance as follows : The 
 act of the defendants was a fraud against the plaintiff. The 
 defendants used plaintiff's envelope and pretended it was their 
 own; they had no right to do that, and the plaintiff was entitled 
 to recover some damages in consequence. 
 
 Crawshay v. Thompson.^^ The gist of this action was selling 
 iron made by the defendants as and for iron of the plaintiff's 
 manufacture; that the plaintiff having used a certain mark in 
 the manufacture of his iron, the defendants knowingly made and 
 sold their iron with a mark, imitating that used by the plaintiff, in 
 order to denote that such iron was manufactured by the plaintiff. 
 The argument in effect amounts to this, — if the defendants sold 
 their iron as and for the plaintiff's, whatever may have been their 
 motive for so doing, they are liable. The opinion was in part as 
 follows: 
 
 "There is an early case in illustration of this principle, cited 
 by Doderidge, J., in Southern v. How, to this effect, as stated in 
 Popham, pp. 143-4. 'An action upon the case was brought in 
 the Common Pleas by a clothier, that, whereas he had gained 
 great reputation for his making of his cloth, by reason whereof he 
 had great utterance, to his great benefit and profit; and that he 
 used to set his mark to his cloth; and another perceiving it, used 
 the same mark to his ill-made cloth on purpose to deceive him; 
 and it was resolved that the action did well lie.' The same case 
 is cited also in Cro. Jac. 471; but it is there said that the action 
 was brought by him who bought the cloth; whereas, in Popham, 
 the action is said to have been brought by the manufacturer, and 
 the gist of the action appears to have been the use of his mark 'on 
 purpose to deceive '" (id. p. 385). 
 
 "Can it be contended that the mere use of a similar mark will 
 give a right of action? I do not know that a man can have an 
 abstract right to use any particular mark; but long user in a 
 " 4 Man, & Gr. 357-1842. 
 
8 The Legal Doctrine of Unfair Competition 
 
 trade of a mark may produce a general impression that goods 
 bearing such mark are of a particular manufacture. The notice 
 here, although it was argued that it ought to have determined the 
 case in favor of the plaintiff, cannot alter the legal rights of the 
 parties. Millington v. Fox,^^ which was relied upon, does not 
 establish that doctrine. What is the- notice here? It is to the 
 effect that the defendants were using a mark similar to that used 
 by the plaintiff. But such a notice is not equivalent to knowledge; 
 as the defendants might dispute the resemblance; or they might 
 admit the resemblance, and yet insist that they had no intention 
 of passing off their goods as the plaintiff's (id. 386).^^ 
 
 In Knott v. Morgan, ^* the plaintiff ran a conveyance company, 
 which marked its buses "Conveyance Company" and "London 
 Conveyance Company." Defendant began to run over route 
 used by plaintiff a bus on which were painted these same words 
 in similar characters and on the same parts of the omnibuses, and 
 he also imitated the livery of the plaintiff's employees. The court 
 said: "I have not the least doubt that the defendant did in- 
 tend to induce the pubUc to beUeve that the omnibus which he 
 painted and appointed, so as to resemble the carriages of the plain- 
 tiffs, was in fact, an omnibus belonging to the plaintiffs. * * * 
 They had a right to call upon this court to restrain the defendant 
 from fraudulently using precisely the same words and devices 
 which they have taken for the purpose of distinguishing their 
 property, and thereby depriving them of the fair profits of their 
 business by attracting custom on the false representation that 
 carriages, really the defendant's, belong to, and are under the 
 management of, the plaintiffs" (id. p. 219). 
 
 In Croft V. Day,"^^ Day's father began in 1801 with one Mar- 
 tin to make blacking. Day, senior, and Martin died and Day's 
 executors, one of whom was the plaintiff, carried on the business, 
 and sought to prevent defendant from making blacking. The 
 court said in substance, that the accusation made against this 
 defendant is that he is selling goods, under form and symbols of 
 such a nature and character as will induce the public to beUeve 
 that he is selUng the goods which are manufactured at the manu- 
 factory belonging to the testator in this case. "It has been very 
 
 " 3 Myl. & Cr. 338-1838. " 2 Keen, 213-1836. 
 
 " Crawshay v. Thompson, 4 Man. «» 7 Beav. 84-1843. 
 
 & Gr. 357-1842. 
 
Historical: Early Cases of Unfair Competition 9 
 
 correctly said, that the principle, in these cases, is this: That no 
 man has a right to sell his own goods as the goods of another. 
 You may express the same principle in a different form, and say 
 that no man has a right to dress himself in colors, or adopt and 
 bear symbols, to which he has no pecuhar or exclusive right, and 
 thereby personate another person for the purpose of inducing the 
 public to suppose, either that he is the other person, or that he is 
 connected with and selhng the manufacture of such other person, 
 while he is really selling his own. It is perfectly manifest, that 
 to do these things is to commit a fraud, and a very gross fraud. 
 * * * The right which any person may have to the protection 
 of this court, does not depend upon any exclusive right which he 
 may be supposed to have to a particular name, or to a particular 
 form of words. His right is to be protected against fraud, and 
 fraud may be practiced against him by means of a name, though 
 the person practicing it may have a perfect right to use that 
 name, provided he does not accompany the use of it with such 
 other circumstances as to effect a fraud upon others." 
 
 "It is perfectly manifest, that two things are required for the 
 accomplishment of a fraud such as is here contemplated. First, 
 there must be such a general resemblance of the forms, words, 
 symbols, and accompaniments as to mislead the public. And, 
 secondly, a suflBcient distinctive individuality must be preserved, 
 so as to procure for the person himself the benefit of that deception 
 which the general resemblance is calculated to produce. To have a 
 copy of the thing would not do, for, though it might mislead the 
 public in one respect, it would lead them back to the place where 
 they were to get the genuine article, an imitation of which is im- 
 properly sought to be sold. For the accomplishment of such a 
 fraud it is necessary, in the first instance, to mislead the public, 
 and in the next place, to secure a benefit to the party practicing 
 the deception by preserving his own individuality." * * * 
 "My decision does not depend upon any peculiar or exclusive 
 right the plaintiffs have to use the names Day and Martin, but 
 upon the fact of the defendant using these names in connection 
 with certain circumstances, and in a manner calculated to mislead 
 the public, and to enable the defendant to obtain, at the expense 
 of Day's estate, a benefit for hunself, to which he is not, in fair 
 and honest dealings, entitled. Such being my opinion, I must 
 grant the injunction restraining the defendant from carrying on 
 
10 The Legal Doctrine of Unfair Competition 
 
 that deception. He has a right to carey on the business of a 
 blacking manufacturer honestly and fairly; he has a right to the 
 use of his own name; I will not do anything to debar him from the 
 use of that, or any other name calculated to benefit himself in an 
 honest way; but I must prevent him from using it in such a way as 
 to deceive and defraud the pubhc, and obtain for himself, at the 
 expense of the plaintiffs, an undue and improper advantage" 
 (id. pp. 88-90). 
 
 Another early case of this sort is Hogg v. Kirhy,^ decided in 
 1803 by Lord Eldon, which lays down the fundamental rules of 
 the law we now know as the law of unfair competition. Hogg was 
 publisher of the "Wonderful Magazine." A dispute arose as to 
 altering the title of it and Kirby refused to allow his name to be 
 used longer as publisher. Later, plaintiff issued hand bills saying 
 he would thereafter publish the magazine and began to do so. 
 Thereupon Kirby and another began to pubUsh a periodical 
 under a similar title as a "New Series Improved." Plaintiff asked 
 that defendants be enjoined from selling their publication and 
 from printing any future number under the same or a similar 
 title or using the design of plaintiff's magazine and an account. 
 Lord Eldon said: "But the question is, whether he has not pub- 
 lished this work, not as his original work, but as the continuation 
 of the work of another person. Then what is the consequence in 
 law and equity? If that question is determined in the aflSnnative, 
 a court of equity in these cases is not content with an action for 
 damages; for it is nearly impossible to know the extent of the 
 damage; and therefore the remedy here, though not compensating 
 the pecuniary damage except by an account of the profits, is the 
 best: the remedy by an injunction and account " (p. 223). "In 
 this case, protesting against the argument, that a man is not 
 at Uberty to do anything which can affect the sale of another 
 work of this kind, and that, because the sale is affected, therefore 
 there is an injury (for if there is a fair competition by another 
 original work, really new, be the loss what it may, there is no 
 damage or injury), I shall state the question to be, not whether 
 this work is the same, but, in a question between these parties, 
 whether the defendant has not represented it to be the same; and 
 whether the injury to the plaintiff is not as great, and the loss 
 accruing ought not to be regarded in equity upon the same prin- 
 "8 Vesey Jr. 215; 1803. 
 
The Law Curtails only Teade that is Unfair 11 
 
 ciples between them, as if it was in fact the same work. Upon the 
 point, whether the work was in fact meant to be represented to the 
 pubUc as the same, I do not say, that is not a question proper for a 
 jury. But I must act upon the inference from the circumstances; 
 and it is impossible not to say, till this is better explained, an 
 intention does appear both upon the transaction as to the fifth 
 number and the other circumstances, in some degree upon the 
 appearance of the outside, in a great degree upon the first page, 
 the index, and the promised contents, to state this as a continua- 
 tion of the former work, in a new series indeed. I am not here to 
 speculate upon the probable consequences of such conduct; for I 
 have the actual consequences, as far as fair reasoning can deter- 
 mine, that out of 2,000 purchasers 1,800 havebought this as part 
 of the old work. The point, where he who carries his work into the 
 world as that of another person, shall not as between them be 
 considered as pubUshing that work, if the consequences are the 
 same, is new, and therefore fit to be discussed elsewhere as well as 
 here. I must incur the hazard of occasioning finally some in- 
 jurious consequences to one party or the other" (id. pp. 225-6). 
 
 An early edition of Sebastian on Trade-Marks has a chapter on 
 "Cases Analogous to those of Trade-Mark," Browne on Trade- 
 Marks, contains one on "Rights Analogous to Those of Trade- 
 Marks." These chapters deal with cases now known as Unfair 
 Competition cases. 
 
 It is, then, in reality the name, unfair competition, that is 
 new, not the theory bearing the name; and relief formerly given, 
 as the courts have so often expressed it, "on principles similar to 
 those of trade-mark cases" was rehef based on the principles of 
 unfair competition. 
 
 § 3. The Law of Unfair Competition Curtails Freedom of Trade, 
 but only of Trading that is Unfair. — The law of unfair competition 
 might seem to have the effect of limiting the rights enjoyed by all 
 men to trade freely with each other. But the restrictions imposed 
 by it are not imposed upon traders alone, but equally on all other 
 citizens. The right to trade is not an absolute right, but a qualified 
 one. Whether a man be a trader or not he is not justified in damag- 
 ing another's business or profession by fraudulent methods, by 
 threats, interference with contract, hbel or slander of goods, 
 obstruction, or unfau- methods of any sort. It is the policy of the 
 law to encourage fair trade in every way. "We have then to 
 
12 The Legal Doctrine of Unfair Competition 
 
 inquire whether mere competition, directed by one man against 
 another, is ever unlawful. It was argued that the plaintiffs have a 
 legal right to carry on their trade, and that to deprive them of that 
 right by any means is a wrong. But the right of the plaintiffs to 
 trade is not an absolute but a quaUfied right, a right conditioned 
 by the like right in the defendants and all Her Majesty's subjects, 
 and a right therefore. to trade subject to competition. Now, I 
 know no limits to the right of competition in the defendants — I 
 mean, no limits in law. I am not speaking of morals or good 
 manners. To draw a line between fair and unfair competition, 
 between what is reasonable and unreasonable, passes the power 
 of the Court. Competition exists when two or more persons seek 
 to possess or to enjoy the same thing: it follows that the success 
 of one must be the failure of another, and no principle of law 
 enables us to interfere with or to moderate that success or that 
 failure so long as it is due to mere competition. I say mere 
 competition, for I do not doubt that it is unlawful and actionable 
 for one man to interfere with another's trade by fraiud or mis- 
 representation, or by molesting his customers, or those who would 
 be his customers, whether by physical obstruction or moral 
 intimidation." ^ 
 
 § 4. Definitions of Unfair Competition. — The fundamental 
 rule is that one man has no right to pahn off his own goods 
 as the goods of a rival trader, and "he caimot, therefore," 
 in the language of Lord Langdale in Perry v. Truefitt,^ "be 
 allowed to use names, marks, letters, or other indicia, by which 
 he may induce purchasers to believe that the goods which he 
 is selling are the manufacture of another person." Referring to 
 the above. Lord Herschell, in Reddaway v. Banham,^ said: "It 
 is, in my opinion, this fundamental rule which governs all cases." 
 
 "Irrespective of the technical question of trade-mark, the 
 defendants have no right to dress their goods up in such man- 
 ner as to deceive an intending purchaser, and induce him to 
 believe he is buying those of the plaintiffs. Rival manufacturers 
 may lawfully compete for the patronage of the public in the 
 quality and price of their goods, in the beauty and tastefulness 
 of their inclosed packages, in the extent of their advertising, and 
 in the employment of agents, but they have no right, by imitative 
 
 " Mogul SS. Co. V. McGregor, Gow "9 g Beav. 66-73-1842. 
 & Co., L. R. 23 Q. B. 598-625-18S9. » 189&-App. Cas. 199-209. 
 
Definitions of Unfair Competition 13 
 
 devices, to beguile the public into buying their wares under the 
 impression they are buying those of their rivals." " 
 
 "The essence of a wrong in unfair competition consists in the 
 sale of the goods of one manufacturer or vendor for those of 
 another, and if defendant so conducts its business as not to palm 
 off its goods as those of complainant the action fails." ^* 
 
 "An act of competition, otherwise unobjectionable, done, not 
 for the purpose of competition but with intent to injure a rival 
 in his trade, is not an act done in an ordinary course of trade, and 
 therefore is actionable if injury ensue." '* 
 
 "Everyone has the right to use and enjoy the rays of the 
 sun, but no one may lawfully focus them to burn his neighbor's 
 house. * * * Everyone has the right to use pen and paper, 
 but no one may apply them to the purpose! of defrauding his 
 neighbor of his property, or making counterfeit money, or of 
 committing forgery." ^* 
 
 "Competition in business is justifiable and desirable; but a 
 business built up by one man by the use of peculiar packages and 
 names, should not be appropriated by another by contrivances 
 which, although not strictly within the rules of UabiUty, yet are 
 designed to accompMsh a purpose equally injurious. Persons thus 
 situated are not regarded with favor by a court of equity." '^ 
 
 "If the same evil results are accomplished by the acts prac- 
 ticed by this defendant which would be accompUshed by an adop- 
 tion of plaintiff's name, why should equity smile upon the one 
 practice and frown upon the other? Upon what principle of law 
 can a court of equity say, if you cheat and defraud your competitor 
 in business by taking his name, the court will give relief against 
 you, but if you cheat and defraud him by assuming a disguise of a 
 different character your acts are beyond the law? Equity will not 
 concern itself about the means by which fraud is done. It is the 
 results arising from the means, it is the fraud itself, with which it 
 deals. " " The foregoing principles of law do not apply alone to the 
 " " Coats V. Merrick Thread Co., 149 " Lord Esher (dissenting), Mogul 
 U. S. 562-1892, at p. 566; 37 L. Ed. SS. Co. v. McGregor, Gmv & Co., L. R. 
 847; 13 Sup. Ct. 966. See also Den- 23 Q. B. D. 598-609-1889. 
 nison Mfg. Co. v. Thomas Mfg. Co., >* Shaver v. Helkr & Merz Co., 
 94 Fed. 651-1899 (C. C. Del.). 108 F. R. 821-827-1901 (G. C. A. 
 
 y- ^'Howe Scale Co. v. Wyckoff, Sea- 8th Cir.); 65 L. R. A. 878. 
 mans & Benedict, 198 U. S. 118-140- '» Church, J., in Wolfe v. Burke, 56 
 
 1905; 49 L. Ed. 972; 25 Sup. Ct. 609. N. Y. 115-122-1874. 
 
14 The Legal Docteine of Unfair Competition 
 
 protection of parties having trade-marks and trade names. They 
 reach away beyond that, and apply to all cases where fraud is 
 practiced by one in securing the trade of a rival dealer; and these 
 ways are as many and as various as the ingenuity of the dishonest 
 schemer can invent." '* 
 
 "The modes in which goods may be passed off as and for the 
 plaintiff's vary. The most usual is where a particular mark on the 
 goods or on the packages in which they are sold has been used to 
 denote that they are made by a particular firm to such an extent 
 that it is understood in the market to bear that meaning. The 
 law as to those trade-marks is now regulated by statutes, but 
 before there was any legislation on the subject it was well settled 
 that when anyone adopted a mark so closely resembling the trade- 
 mark of the plaintiff that it would be hkely to be mistaken for it, 
 and put it on his goods and sold them, knowing that though the 
 persons to whom he sold them were well aware that they were not 
 the plaintiff's make, yet that they were meant to be sold to others 
 who would see only the trade-mark, and were likely to be deceived 
 by its resemblance to that of the plaintiff, he might be properly 
 found to have knowingly and fraudulently sold the goods as and 
 for the plaintiff's goods: '' And, so far, there was no difference 
 between law and equity. But at law it was necessary to prove 
 that an injury had been actually done. In equity it was enough 
 to show that the defendant threatened to do, and would, if not 
 prevented, do that injury. * * *" "There is another way 
 in which goods not the plaintiff's, may be sold as and for the 
 plaintiff's. A name may be so appropriated by user, as to come to 
 mean the goods of the plaintiff, though it is not, and never was, 
 impressed on the goods or on the packages in which they are con- 
 tained, so as to be a trade-mark, properly so called, or within the 
 recent statutes. Where it is estabUshed that such a trade name 
 bears that meaning, I think the use of that name, or one so nearly 
 resembling it as to be likely to deceive, as apphcable to goods not 
 the plaintiff's, may be the means of passing off those goods as 
 and for the plaintiff's, just as much as the use of a trade-mark; and 
 I think the law (so far as not altered by legislation) is the same." ^ 
 
 "He (competitor in business) must not, by any deceitful or 
 
 3» Weinstock, Lubin & Co. v. Marks, " Citing Sykes v. Sykes, 3 B. & C 
 109 Cal. 629-40-1895; 42 Pac. 142; 641-1824. 
 30 L. R. A. 182. '» Singer Mfg. Co. v. Loog, L. R. - 
 
Definitions of Unfair Competition 15 
 
 other practice, impose on the public, and he must not by dressing 
 himseK in another man's garments, and by assuming another 
 man's name, endeavor to deprive that man of his own individual- 
 ity and thus despoil him of the gains to which, by his industry and 
 skill, he is fairly entitled." ^^ 
 
 "If a person had established a business at a particular place, 
 from which he has derived, or may derive, profit, and has at- 
 tached to that business a name indicating to the public where or 
 in what manner it is carried on, he has acquired a property in the 
 name which will be protected from invasion by a court of equity, 
 on principles analogous to those which are appUed in case of the 
 invasion of a trade-mark." ^'' 
 
 "Unfair competition consists essentially in the conduct of a 
 trade or business in such a manner that there is an express or 
 implied representation that the goods or business of one man are 
 the goods or business of another." ^^ 
 
 "The imitation of the index sheets would deceive the ordi- 
 nary purchaser, and the appellee had a purpose that such effect 
 should result. This constitutes unfair competition, notwith- 
 standing that the merchant purchasing from the manufacturer 
 may not have been deceived." ^^ 
 
 "Unfair competition may be defined as passing off, or at- 
 tempting to pass off, upon the pubhc the goods or business of one 
 man as being the goods or business of another." ^^ 
 
 "Notwithstanding plaintiff had no real or legal trade-mark, 
 if the defendant had intentionally simulated the peculiar device 
 or symbol employed by plaintiff on his labels, and such simulation 
 was calculated to deceive ordinarily prudent persons, and did 
 deceive such persons, the plaintiff would be entitled to protection 
 against the consequence of such deception, not because of his 
 device or symbol being a trade-mark in the legal sense of that 
 term, but because of the fraud and deception practiced by the 
 defendant upon the plaintiff and the pubUc." ** 
 
 8 App. Cas. 15-30-32-1882. Above " 28 Am. & Eng. Encyc. 345, 2d ed. 
 
 statement in the text cited, Bates Mfg. " Globe Wernicke Co. v. Brown & 
 
 Co. V. Boies Numbering Mach. Co., 172 Besly, 121 F. R. 90-1902, at p. 92 
 
 Fed. 895. (C. C. A. 7th Cir.). 
 
 '^Howard v. Henriques, 3 Sandf. "28 Am. & Eng. Encyc. 409, 2d 
 
 (N. Y.) 725-27-1851. ed. 
 
 ^Harper v. Pearson, 3 L. T. N. "Aljf & Co. v. Radam, 77 Tex. 
 
 S. 547-49-1861. 530-41-1890; 14 S. W. 164; 9 L. R. 
 
16 The Legal Doctrine of Unfair Competition 
 
 "La concurrence d61oyale c'est I'acte pratique de mauvaise 
 foi k I'effet de produire une confusion entre les produits de deux 
 fabricants, ou de deux cominerpants, ou qui, sans produire de 
 confusion, jette le discredit sur un 6tablissement rival." *^ 
 
 "There is no hard and fast rule by which it can be determined 
 when the court will interfere by injunction to prevent what is 
 practically a fraud upon a person engaged in business by unfair 
 methods of business. Each case must depend upon its own facts, 
 but where it is clearly established that an attempt is being made 
 by one person to get the business of another by any means 
 that involves fraud or deceit, a court oi equity will protect an 
 honest trader and restrain a dishonest one from carrying out his 
 scheme." ** 
 
 This definition was approved in May, 1917, in Montegut v. 
 Hickson, Inc., App. Div. (N. Y.), 1st Dept., where the copying 
 of a model for a gown was held to constitute imfair competition, 
 when the possession of the gown which was copied was obtained 
 by fraudulent means. 
 
 A. 145n; affirmed, 81 Tex. 122-1891; Concurrence D61oyale." Paris, 1912 
 
 16 S. W. 990. § 872. 
 
 " Darras, cited by Pouillet " Traits " Burrow v. Marceau, 124 App. 
 
 des Marques de Fabrique et de la Div. (N. Y.) 665. 
 
CHAPTER II 
 Basis op the Action for Unfair Competition 
 
 Section 5. Legal basis of the^ction for unfair competition. 
 
 6. Grounds of the action for unfair competition. 
 
 7. Theory that the court acts to promote honest and fair dealing. 
 
 8. Theory that the court aims to protect the purchasing pubhc. 
 
 9. Theory that the court aims to protect, not rights of the pubhc, 
 
 but rights and property of individuals. 
 
 10. Property rights in marks which are not technical trade-marks. 
 
 11. Exclusive right to a name or mark not necessary to action. 
 
 12. Geographic extent of trade rights based on priority. 
 
 The decisions are not clear as to the exact character of the 
 rights, which are protected by the law of unfair competition or 
 the exact basis on which actions of this character are founded. 
 
 This uncertainty is due perhaps to the attempt which the courts 
 made in the latter part of the nineteenth century to decide unfair 
 competition cases as analogous to trade-mark cases. It is now 
 seen that these rights, whether property or not, are entitled to pro- 
 tection and it very well may be that in the future, acts of unfair 
 competition will be regarded neither as injuries to property nor as 
 torts, strictly speaking, but rather as acts unfair to both the pub- 
 lic and the plaintiff, hence .inequitable, and therefore actionable. 
 
 § 6. Legal Basis of the Action for Unfair Competition. — No 
 distinction can be made between a trade-mark and a trade name 
 as regards the rights acquired in, either by usage. Both are held 
 to be of Uke character and will be protected if violated.' 
 
 ^Hainque v. Cyclops Iron Works jy the word 'Cyclops' in this particu- 
 136 Cal. 351-1902; 68 Pac. 1014. lar instance is the trade name of 
 Plaintiffs, for years, called them- plaintiffs rather than their trade- 
 selves "Cyclops Machine Works." mark, that fact is not material. By 
 Defendants set up near by, calling long continued exclusive user, plain- 
 themselves "Cyclops Iron Works." tiffs and their predecessors in in- 
 "Upon general principles of equity, terest have acquired property rights 
 the acts of the defendants here de- in the use of the word which defendant 
 tailed will not be countenanced by is bound to respect." 
 the courts. If it be conceded that 
 
 17 
 
18 Basis of the Action for Unfair Competition 
 
 § 6. Grounds of the Action for Unfair Competition. — An 
 
 attempt to pass off goods is discovered to the court: is it set in 
 motion by its abhorrence of dishonesty and double dealing or does 
 it feel called upon to protect the interests — the property — of the 
 complainant or does it feel that it is its duty to first protect the 
 purchasing public from deception, or does it act in such a case be- 
 cause of all these reasons? The following are the principal grounds 
 usually given : First, That the court acts to promote honest and fair 
 dealing; Second, That the aim of the court is to protect the pur- 
 chasing pubhc; Third, That the court aims to protect not rights 
 of the public but the rights and property of individuals. 
 
 § 7. Theory that the Court Acts to Promote Honesty and 
 Fair Dealing. — Unfair competition is often said to rest on the 
 theory that a court is in duty boxmd to protect and promote 
 honesty and fair dealing. "The ground on which the jurisdiction 
 of equity in such cases is rested, is the promotion of honesty and 
 fair dealing, because no one has a right to sell his own goods as the 
 goods of another. ' It is perfectly manifest,' said Lord Langdale, 
 'that to do this is a fraud and a very gross fraud.' " ^ That this is 
 one of the objects of the court is not doubted. Many judges 
 have considered that this consideration does not furnish sufficient 
 basis for the court's action. In the attempts that have been made 
 to supplement it, however, no theory has been advanced which has 
 received anything hke general acceptance. The reason for this 
 is perhaps the fact that most if not all such theories are attempts 
 to tie up this form of action to some of the older recognized 
 forms of action, not taking into consideration the fact that 
 this action has grown out of a demand for the regulation of com- 
 petition on grounds of fairness, which has not heretofore existed, 
 and may fairly lay claim to be based on grounds individual to 
 itself and to the need it has been developed to meet. Actions 
 for unfair competition are more and more frequently used be- 
 cause, as is pointed out in Shaver v. Heller,^ "There is no prac- 
 ticable way other than by prohibition of the use of the name by 
 which filching the trade of an article, whose sale is solicited and 
 made by its name can be effectually prevented." 
 
 § 8. Theory that the Court Aims to Protect the Purchasing 
 Public. — The early English cases assigned fraud on the purchas- 
 
 2 Palmer v. Harris, 60 Pa. St. 156- » 108 Fed. 821-27; C. C. A. 8th 
 
 1869, at p. 159. Cir.; 65 L. R. A. 878.' 
 
Theoby That Court Aims to Protect Public 19 
 
 ing public as the ground on which equity would act. Fraud on 
 the pubHc to the detriment of the plaintiff was the foundation of 
 the right to damages at common law, according to Lord Black- 
 burn in Singer Manufacturing Co. v. Loog; * and as long ago as 
 1838, it was decided in Millington v. Fox,^ that intentional deceit 
 was not essential to warrant an equity court in granting an in- 
 junction, but that the court will interfere to protect a plaintiff, if 
 ordinary or unwary purchasers are likely to be misled to mistake 
 the defendant's goods for the plaintiff's. Nothing can be more 
 emphatic on this point than the judgment in Singer Machine 
 Manufacturers v. Wilson; ^ where it was held that in cases of 
 this description, the probabiUty of liiisleading, not experts or 
 persons who know the real facts, but ordinary or unwary cus- 
 tomers, is the mischief to be guarded against. This point was 
 recognized in 1824 in Sykes v. SykesJ In the Singer Manufactur- 
 ing Co. V. Loog,^ Lord Selborne, commenting on the brass plate 
 at one time used by the defendant in that case, held that 
 persons may be misled and may mistake one class of goods for 
 another, although they do not know the names of the makers of 
 either. 
 
 "To justify a court of equity in interfering, there must be 
 something more than the mere duplication by the one party of 
 the other's trade name. This is found in the deceptive use of 
 imitative methods of display, or other devices by which the 
 public are led into buying the infringer's goods when they in- 
 tended to buy those of the original producer. The fraud which 
 is thus perpetrated is a legitimate ground for equitable inter- 
 ference, and is the practical basis for it."." 
 
 "The grounds on which unfair competition in trade will be 
 enjoined are either that the means used are dishonest, or that, by 
 false representation or imitation of a name or device, there is a 
 tendency to create confusion in the trade, and work a fraud upon 
 the public, by inducing it to accept a spurious article. Where 
 these grounds are absent, and no trade-mark rights exist, injunc- 
 tion does not lie" (headnote).^ 
 
 10 
 
 < L. R. 8 App. Cas. 15-1882. ' Draper v. Skerrett, 116 Fed. 206- 
 
 5 3 Myl. & Cr. 338. 1902 (C. C. E. D. Pa.) (id. p. 209). 
 8 3 App. Cas. 376-391-2-1877. >» Fitoscope Co. v. U. S. Phono- 
 
 ' 3 B. & C. 541-1824. graph Co., 83 F. R. 30-1897 (C. C. 
 
 8 8 App. Cas. 18, N. J.). 
 
20 Basis op the Action for Unfair Competition 
 
 The multitudes of ignorant and unwary must be regarded in 
 considering the interest of traders who may be injured by the mis- 
 takes of purchasers. The plaintiff has a right whether founded on 
 property in himself, or upon reasons of public policy which make 
 it incumbent upon the courts to protect the pubUc from deceit, to 
 insist that his rival sell his goods in such a way as to insure the 
 purchasers of them from deceit.^^ 
 
 As between rival claimants to the right to reproduce a drama 
 or play, while admitting that the author and he to whom it was 
 sold were entitled to protection, the court held that the pubUc 
 were entitled to be honestly informed as to who was playing it, 
 that they might not confuse the play in question with a poor 
 imitation.12 
 
 Honest competition reUes on the intrinsic merits of the goods. 
 It does not require a false or fraudulent mark. To give to the 
 product of what is claimed to be superior skiU, the name, simiUtude 
 and imitation of an article with which it professes to compete is 
 fraud. The pubhc should not be obUged to guard against such 
 methods. The law does not place upon the purchaser the burden 
 of protecting himself against fraud of that sort. The seller of the 
 goods is now compelled to assume that burden. 
 
 "A disguise is not usually assumed for an honest object. It is a 
 mark more characteristic of deception and fraud. It defeats the 
 
 ^^ Singer Machine Manufacturers Appellant attempted to play a piece 
 
 V. Wilson, L. R. 3 App. Cas. 376- called "Sherlock Holmes, Detective." 
 
 1877; Powell v. Birmingham Vinegar Held, names of publications may be 
 
 Brewery Co. (1896). 2 Ch. 54. Lord protected by trade-mark (citing Roh- 
 
 Kay: "It was argued that the de- ertsmi v. Berry, 50 Md. 591-1878). 
 
 fendant had nothing to do with "Sherlock Hohnes," the drama, has 
 
 the deception of the public. The not been copyrighted. Its authors and 
 
 answer is obvious. Every person who, Frohman as their grantee have right 
 
 intending to buy a bottle of the plain- to protection on the ground of their 
 
 tiff's sauce, gets instead a bottle of property in it (citing McLean v. 
 
 the defendants', is q, customer taken Fleming, 96 U. S. 245-1877- 24 L. Ed. 
 
 from the plaintiff by this deceit; and 828). Frohman owned exclusive right 
 
 if this is extensively fione the damages to produce this play by contract with 
 
 to the plaintiff's trade would be the author. One seeing advertise- 
 
 serious" (p. 83). ment of "Sherlock Hohnes, Detec- 
 
 ^' Hopkins Amusement Co. v. Fwh- tive" would suppose it the same as 
 man, 103 111. App. 613-1902. Froh- Frohman's play. The public are en- 
 man and Gillette put on the stage titled to protection as well as Froh- 
 a play called "Sherlock Holmes." man. 
 
Court Aims to Protect Rights of Individuals 21 
 
 very end and object contemplated by legitimate competition — 
 the choice to the public to select between the articles exposed to 
 sale — and operates as a deception and imposition on the dealer. 
 It is to prevent such a course of transaction and dealing that the 
 interposition of the Court of Chancery is asked, and I have no 
 doubt it is within its proper jurisdiction to restrain a proceeding of 
 such a character by injunction." ^^ 
 
 "The doctrine of unfair competition is possibly lodged upon 
 the theory of the protection of the public whose rights are in- 
 fringed or jeopardized by the confusion of goods produced by 
 unfair methods of trade as well as upon the right of a complainant 
 to enjoy the good-will of a trade built up by his efforts, and sought 
 to be taken from him by unfair methods." ^^ 
 
 § 9. Theory that the Court aims to Protect, not Rights 
 of the Public, but Rights and Property of Individuals. — The 
 courts frequently refuse to act at the suit of an individual, 
 to protect the public, on the ground that such protection 
 may be extended by the court only at the suit of the pubUc 
 through its own public oflBcers and not at the suit of an 
 individual. It is contended that the private action is given, not 
 for the benefit of the pubhc, although that may be its incidental 
 effect, but to reUeve against the invasion, by the defendant, of the 
 exclusive rights of complainant. The bill here "loses sight of the 
 thoroughly estabhshed principle that the private right of action 
 in such cases is not based upon fraud or imposition upon the 
 pubhc, but is maintained solely for the protection of the property 
 rights of complainant." ^^ 
 
 Chancellor Westbury differentiates, in this connection, cases 
 where the defendant imitates the plaintiff's goods and thus causes 
 mistakes on the part of buyers, and those cases where this feature 
 is not present. He says: "It is, indeed, true that, unless the mark 
 used by the defendant be appUed by him to the same kind of goods 
 as the goods of the plaintiff, and be in itself such that it might be 
 and is mistaken in the market for the trade-mark of the plaintiff, 
 the Court will not interfere, because there is no invasion of the 
 
 " Taylor v. Carpenter, 2 Sandf. Cement Co., 130 F. R. 703-705-1904 
 
 Ch. 676-1845; Drake Medicine Co. (C. C. A. 7th Cir.). 
 
 V. Glessner, 68 Ohio St. 337-1893; ^^ American Washboard Co. v. Sag- 
 
 67 N. E. 722, 62 L. R. A. 94 1. inaw Mfg. Co., 103 F. R. 281-285- 
 
 "G. W. CoU Co. V. American 1900; 50 L. R. A. 609. 
 
22 Basis of the Action for Unfair Competition 
 
 plaintiff's right; and thus the mistake of buyers in the market, 
 under which they, in fact, take defendant's goods as the goods of 
 the plaintiff — that is to say, imposition on the public — becomes 
 the test of the property in the trade-mark having been invaded 
 and injured. * * * The true principle, therefore, would seem 
 to be that the jurisdiction of the Court in the protection of given 
 trade-marks rests upon property, and that the Court interferes by 
 injunction, because that is the only mode by which property 
 of this description can be effectually protected. The same things 
 are necessary to constitute a title to relief in equity in the case of 
 the infringement of a right to trade-mark as in the case of the 
 violation of any other right of property." ^* When one has 
 established a trade or business in which he has used a particular 
 device, symbol, or name so that it has become known in trade as a 
 designation of such person's goods, equity will protect him in the 
 use thereof. " " Such person has a right to complain when another 
 adopts this symbol or manner of marking his goods so as to mis- 
 lead the public into purchasing the same as and for the goods of 
 the complainant. Plaintiff comes into a court of equity in such 
 case for the protection of his property rights. The private action 
 is given, not for the benefit of the public, although that may be its 
 incidental effect, but because of the invasion by defendant of 
 that which is the exclusive property of complainant. In Canal Co. 
 V. Clark,^^ the court said: 'It is'invariably held that the essence of 
 the wrong consists in the sale of the goods of one manufacturer or 
 vendor as those of another.' " '^ 
 
 "The right to restrain anybody from using any name that he 
 Ukes in the course of any business he chooses to carry on is a right 
 in the nature of a trade-mark, that is to say, a man has a right to 
 say, 'You must not use a name, whether fictitious or real — you 
 must not use a description, whether true or not, which is intended 
 to represent, or calculated to represent, to the world that your 
 busmess is my business, and so, by a fraudulent misstatement, 
 deprive me of the profits of the business which would otherwise 
 
 ^'Leather Cloth Co. v. American "15 Wall. 322-1871; 80 U. S. 
 
 Leather Cloth Co., 4 De G. J. & S. 311; 20 L. ed. 583. 
 
 137-41-42-1863; 11 H. L. Cas. 623. "American Washboard Co. v. Sag- 
 
 " This passage quoted Bates Mfg. inaw Mfg. Co., 103 F. R. 281-84^1900, 
 
 Co. V. Bates Numbering Mach. Co. in 50 L. R. A. 609. 
 172 F. 895. 
 
Rights in Marks not 'Technical Trade-marks 23 
 
 come to me.' That is the principle, and the sole principle, on 
 which this Court interferes. The Court interferes solely for the 
 purpose of protecting the owner of a trade or business from a 
 fraudulent invasion of that business by somebody else. It does 
 not interfere to prevent the world outside from being misled into 
 anything." 2" 
 
 The Supreme Court of the United States considers that the 
 action of unfair competition is based on the ground that the 
 deception by one trader resulting in loss to another of "advantages 
 of celebrity" is against equity. "Equity gives relief in such a 
 case, upon the ground that one man is not allowed to offer his 
 goods for sale, representing them to be the manufacture of another 
 trader in the same commodity. Suppose the latter has obtained 
 celebrity in his manufacture, he is entitled to all the advantages 
 of that celebrity, whether resulting from the greater demand 'for 
 his goods or from the higher price the pubhc are willing to give 
 for the article, rather than for the goods of the other manufac- 
 turer, whose reputation is not so high as a manufacturer." ^^ 
 
 § 10. Property Rights in Marks which are not Technical Trade- 
 marks. — The difference most often noted between technical 
 trade-mark cases and those involving unfair competition seems to 
 
 ™ Levy V. Walker, L. R. 10 Ch. marks on account of the injury which 
 
 Div. 436-47-48-1879. is thus done to him. The wrong done 
 
 "Imposition on the public occa- to him consists in misrepresenting the 
 
 sioned by one man selling his goods as vendible articles sold as being those 
 
 the goods of another, cannot be the of the true owner of the trade-mark", 
 
 ground of private action or suit." and thus to a greater or less extent 
 
 Chancellor Westbury in Leather Cloth depriving him of the benefit of the 
 
 Co. V. American Leather Cloth Co. (4 reputation he has given to the articles 
 De G. J. & S. 137-41-1863, 11 H. • made or dealt in by him" (id. p. 103), 
 
 L. Gas. 523); Weener v. Brayton, 152 Gited in American Washboard Co. v. 
 
 Mass. 101; 25 N. E. 46; 8 L. R. A. Saginaw Mfg. Co., 103 F. R. 281-285- 
 
 640. "The jurisdiction of a court of 1900; 50 L. R. A. 609. 
 equity to restrain the wrongful use "The rule which protects against 
 
 of such trade-marks by persons not unfair competition is primarily for 
 
 entitled thereto is founded, not upon the protection of the party against 
 
 the imposition upon the pubhc thus' whom such competition is directed, 
 
 practiced, but on the wrongful in- and only incidentally for the pro- 
 
 vasion of the right of property therein tection of the pubhc." (Paul on 
 
 which has been acquired by others. Trade-marks, p. 388, § 215.) 
 A remedy is offered only to the owner =* McLean v. Fleming, 96 U. S. 
 
 of the right of property in such trade- 245-251-1877; 24 L. ed. 828. 
 
24 Basis of the Action foe Unfair Competition 
 
 rest on the fact that, in technical trade-mark cases, the com- 
 plainant has a distinct property interest in the technical mark, 
 while in cases of unfair competition he is said to have no property- 
 interest in that which the defendant has used or imitated to his 
 injury or damage. Nevertheless, he has defrauded the plaintiff of 
 something, and that something is valuable. A name may be 
 public property, and yet, if someone acquire right to use it exclu- 
 sively, in a limited field even, that right is valuable. The right of 
 the Saxon villager to use the common as a pasture was a limited 
 right, yet it was property. 
 
 Where the complainant is adjudged to have a distinct and sole 
 property right to use his mark, the court will enjoin injury to it 
 regardless of the intent of the offender. But where his mark is 
 something that is free to both parties to use, as, for instance, the 
 name of the family to which both belong, and which, therefore, 
 cannot be the complainant's property exclusively, the court may 
 find the complainant to possess something in connection with that 
 name which it must protect. Many judges have called that some- 
 thing property, while more have denited it to be property. 
 
 This intangible interest in a mark, used by the maker or vendor 
 of the article to which it is attached, and which is protected by the 
 appUcation of the rules of unfair competition, is a part of the 
 good-will of the seller in such a mark. The courts seem to 
 distinguish this right, whatever it be called, from the property 
 of the owner of a technical trade-mark in that mark, although the 
 good-will in a trade name or mark, not a technical one, would 
 seem to be an important part of what is usually termed the good- 
 will in a business which is undoubtedly property. For instance, in 
 the case of American Washboard Co. v. Saginaw Mfg. Co.,^^ no 
 trade-mark was in question, and the ground of the injimction 
 issued was the invasion of the plaintiff's property rights.^* 
 
 22 103 Fed. 291-1900, C. C. A., 6th the public, although that may be its 
 
 Cir., 5 L. R. A. 609. incidental effect, but because of the 
 
 "The ease opens with the specific invasion by defendant of that which 
 
 statement that no claim was made by is the exclusive property of complain- 
 
 the plaintiff that it possessed a techni- ants" (id. 284). And again the court 
 
 cal trade-mark. " Plaintiff comes into said: "The jurisdiction of a court of 
 
 a court of equity in such a case (viz: equity to restrain wrongful use of such 
 
 unfair competition) for the protection trade-marks by persons not entitled 
 
 of his property rights. The private thereto, is founded, not upon the im- 
 
 action is given, not for the benefit of position upon the public, but on the 
 
Rights in Marks not Technical Trade-marks 25 
 
 The property rights in the good-will of a particular business 
 consist in part in the marks used on its goods, in its stand or local- 
 ity, in its name, and all of these things are under the protection of 
 a court of equity. ^^ These features may sell for many times what 
 all its personal property of other sorts will bring. Their value is 
 frequently the result of the most expensive advertising, and a 
 court of equity protects this property zealously from injury 
 through unfair methods. "Money invested in advertising is as 
 much a part of a business as if invested in buildings or machinery, 
 and when the goods of a manufacturer have become popular, 
 not only because of their intrinsic worth, but also by reason 
 of the ingenious, attractive, and persistent manner in which they 
 have been advertised, the good-will thus created is entitled to pro- 
 tection against unfair competition." " Referring to the case of 
 Millington v. Foa;,^' Lord Chancellor Westbury in Hall v. Bar- 
 rows,"" says: "The case * * * is very important as estab- 
 lishing the principle that the jurisdiction of the court in the pro- 
 tection of trade-marks rests upon property, and that fraud in the 
 defendant is not necessary for the exercise of that jurisdiction." 
 Later in this opinion, referring to plaintiff's trade name, he said 
 (p. 157) that "the trade-mark is a valuable property of the 
 partnership * * * and may be properly sold with the works, 
 and, therefore, properly included as a distinct subject of value in 
 the valuation to the surviving partner." This statement was 
 made in 1863, when the law now connected with "technical 
 marks" was hardly known. 
 
 Blackburn says of this case: ^* "And I think it settled by a 
 series of cases, of which Hall v. Barrows ^^ is, I think, the leading 
 
 wrongful invasion of the right of the court interferes by injunction, 
 
 property therein which has been ac- because that is the only mode by which 
 
 quired by others. A remedy is offered property of this description can be 
 
 only to the owner of the right of prop- effectually protected." 
 
 erty in such trade-marks on account of " Hall v. Barrows, 9 Jurist, N. S. 
 
 the injury which is thus done to him" 483-1863; 4 De G. J. & S. 150. 
 
 (id. 285). ^^ Hilson Co. v. Foster, 80 Fed. 896- 
 
 Leather Cloth Co. v. Am. Leather 1897 (C. C. S. D. N. Y.). 
 
 Cloth Co., 11 H. L. Gas. 523-1863. ^ 3 Myl. & Gr. 338-1838. 
 
 "The true principle, therefore, would " 4 De G. J. & S. 150-56-1863. 
 
 seem to be that the jurisdiction of the ^ Singer Mfg. Co. v. Loog, L. R. 8 
 
 court in the protection given trade- App. Gas. 15-33-1882. 
 
 marks rests upon property, and that '' 4 De G. J. & S. 150-1863. 
 
26 Basis of the Action for Unfair CoMPETiTrON 
 
 one, that both trade-marks and trade names are in a certain sense 
 property, and that the right to use them passes with the good-will 
 of the business to the successors of the firm that originally estab- 
 lished them, even though the name of that firm be changed so 
 that they are no longer strictly correct. This was evidently Lord 
 Cottenham's opinion in Millington v. Foa;,^" and I know of no 
 authority against it." A trade name may be either the name of 
 the manufacturer of goods or some name by which the manufac- 
 tiu-ed goods have become generally known. There is a kind of 
 property in such a name and interference with it will be restrained 
 by the court if there is a prospect of injury to the owner of it.^* 
 
 § 11. Exclusive Right to a Name or Mark not Necessary to Ac- 
 tion. — ■ In an action for unfair competition it is not necessary 
 that the plaintiff should have an absolute and exclusive right 
 to the distinguishing marks which he alleges the defendant has 
 wrongfully used. The- defendant may be properly enjoined in 
 such an action, although undoubtedly entitled to use the name or 
 mark in question, provided tha£ he uses it in such a way as not to 
 injure the complainant. There need be no exclusive right in the 
 complainant. A definite property right may aris^ in a name or 
 mark, although it is not a technical trade-mark. This right is 
 qualified and not exclusive, but, like the rights in a technical 
 mark, is valuable in a very real sense. It is settled law that the 
 right to use a technical trade-mark is not a privilege attaching 
 only to the person first using it, but an actual property right, 
 capable of being dealt in and of being transferred as property 
 from person to person. This is equally true of names and marks 
 that are not technical trade-marks. A dealer has acquired val- 
 uable interests in some name, by long use as a trade name. He 
 may sell such right as he has in that name for value and give 
 good title. If another steals his business by Using a similar and 
 confusing name, his damage is none the less real because his mark 
 is not a technical trade-mark. To protect his rights he needs only 
 to prove his ownership of such an interest. 
 
 In 19i6, in Hanover Star Milling Co. v. Metcalf,^^ the Supreme 
 Court said: "The redress that is accorded in trade-mark cases is 
 based upon the parties' right to be protected in the good-will of a 
 
 »» 3 Myl. & Cr. 338-1838. 37 Ch. Div. 449-1888 ; 12 Encyc. of the 
 
 " Citing Borthwick v. Evening Post, Laws of England, 234-5. 
 
 " 240 U. S. 403, 412-413 (1916). 
 
Exclusive Right to a Name not Necessary to Action 27 
 
 trade or business. * * * Courts afford redress or relief upon 
 the ground that a party has a valuable interest in the good-will of 
 his trade or business and in the trade-marks adopted to maintain 
 or extend it. The essence of the wrong consists in the sale of the 
 goods of one manufacturer or vendor for those of another" (citing 
 cases). "This essential element is the same in trade-mark cases 
 as in cases of unfair competition, unaccompanied with trade-mark 
 infringement. In fact the common law of trade-marks is but a 
 part of the broader law of unfair competition" (citing cases). 
 "Common law trade-marks and the rights to their exclusive use 
 are, of course, to be classed among property rights, but only in the 
 sense thatia man's right to the continued enjoyment of his trade 
 reputation and the good-will that flows from it, free from unwar- 
 ranted interference by others, is a property right for the protection 
 of which a trade-mark is an instrumentality." 
 
 See also Shaver v. Heller,^^ which holds that suits for unfair 
 competition in trade "are founded upon the damage to the trade 
 of the complainants by the fraudulent passing of the goods of one 
 manufacturer for those of another. * * * No proprietary 
 interest in the words, names, or means by which the fraud is per- 
 petrated is requisite to maintain a suit to enjoin it. It is sufficient 
 that the complainant is entitled to the custom — the good-will — of a 
 business and that this good-will is injured or is about to be injured, 
 by the pahning off of the goods of another as his. * * * 
 There is no practicable way other than by prohibition of the use 
 of the name, by which filching the trade of an article whose sale is 
 solicited and made by its name can be effectually prevented." ^^ 
 
 '* 108 F. R. 821-26-27-1901 (C. C. now, quocunque modo rem,' seems to 
 A. 8th Cir.); 65 L. R. A. 878. apply in full force to modern times, I 
 
 »6 See also Batty v. Hill, 1 Hem. & can only interfere when some private 
 M. 264-1863. A manufacturer ob- rightis thereby infringed" (id. p. 268). 
 tained a gold medal at Exhibition of As there was no attempt to pass off 
 1862 for pickles, etc., and sought to defendant's goods as those of the 
 restrain a rival from making false plaintiff, injunction was refused. Fol- 
 statements on his goods that he too lowed by Stirling, J., in Talkrman v. 
 had been awarded a gold medal at Dowsing Radiant Heat Co. (1900), 
 same exhibition in respect of same 1 Ch. 1. 
 
 class of goods. Held: "It is no part Avery & Sons v. Meikle & Co., 
 of the duty of the court to enforce 81 Ky. 73-84-1883. * * * "The 
 the observance of the dictates of object of trade-mark law is to pre- 
 moraUty; and though the old maxim vent one person from selling his goods 
 'rem facias, rem, si possis, rede; si as those of another, to the injury of 
 
28 Basis of the Action for Unfair Competition 
 
 While the protection of the general public is not intrusted to any 
 individual and no person may institute an action of this sort to pre- 
 vent deception of people generally ; nevertheless if the pubhc is being 
 deceived as to some article of commerce as, for instance, identity of 
 a business house, some one is being wronged, and the righting of 
 that wrong will often result in distinct benefit to the general pubUc. 
 
 Courts will sometimes protect trade names or marks, although 
 not registered or properly selected as trade-marks, on the broad 
 ground of enforcing justice and protecting one in the fruits of his 
 toil. "This is bottomed on the principle of common business 
 integrity, and proceeds on the theory that, while the primary and 
 common use of a word or phrase may not be exclusively appro- 
 priated, there may be a secondary meaning or construction which 
 will belong to the person who has developed it. In this secondary 
 meaning there may be a property right." ^^ 
 
 Areadingof the cases cited above shows that three grounds atleast 
 for this actionhavebeenrecognized. (1) The promotion of honesty 
 and fair dealing. (2) The protection of the purchasing public 
 againstfraud. (3) Theprotectionof the plaintiff's property rights. 
 
 § 12. Geographic Extent of Trade Rights Based on Priority. — 
 Rights protected in unfair competition cases are often said to grow 
 out of priority of use by plaintiff, not by reason of mere adoption. 
 In. Canal Co. v. Clark,^'' the Court speaks of "the first appro- 
 priator." Similar expressions are often found in the cases. It 
 has long been a question, however, as to what is the extent geo- 
 graphically of the rights thus obtained by being the first user of a 
 mark. It has often been maintained that registration by the 
 first user extends his rights to the boundaries of the jurisdiction, 
 under the laws of which the registration is made. "In the ordi- 
 nary case of parties competing under the same mark in the same 
 market, it is correct to say that prior appropriation settles the 
 question." Hanover Star Milling Co. v. Metcalf.^ 
 
 When, however, two or more persons have been using the same 
 mark in widely separated markets, even in the same jurisdiction, 
 the latter and of the public. It grew emergency exists to justify a neces- 
 out of the philosophy of the general sarily different manner of use." 
 rule that every man should so use his " Sartor v. Schaden, 125 Iowa, 696- 
 own property and rights as not to at p. 700, 1904; 101 N. W. 511. 
 injure the property or rights of an- " 13 Wall. 311-13; 80 U. S. 311; 
 other, unless some priority of right or 20 L. ed. 581-1871. 
 
 'S240U. S. 403-415-1916. 
 
Geogbaphic Extent of Trade Rights Based on Priority 29 
 
 and not in competition with each other, a complex question is 
 presented. On this point the Supreme Court in Hanover Star 
 Milling Co. v. Metcalf (supra) said: "But where two parties in- 
 dependently are employing the same mark upon goods of the same 
 class, but in separate markets wholly remote from each the one 
 from the other, the question of prior appropriation is legally 
 insignificant, unless at least it appear that the second adopter 
 has selected the mark with some design inimical to the interests 
 of the first user, such as to take the benefit of the reputation of his 
 goods to forestall the extension of his trade or the like." 
 
 It would seem that this is almost equivalent to saying that where 
 the conditions stated by the Court in this case are present the whole 
 question must be decided on the peculiar facts of each case. Were 
 this rule to be strictly applied, it would apparently increase seriously 
 the difficulties of extending the market of an article by modern sell- 
 ing methods and advertising on a national basis. It is easy to recall 
 many articles now being sold the country over under brands which 
 are the property of concerns that started in a small local way and 
 gradually, by good business methods, extended the knowledge of 
 and market for their products to the whole country. It is not to be 
 assumed that the Supreme Court intended by the rule in the Han- 
 over case to curtail opportunities of our business men by compeUing 
 them at once on starting business, either to place their goods on sale 
 in every part of the country or run the risk of being later barred 
 from some valuable market by some unknown competitor, who 
 chanced to adopt and use in those markets at an earlier date a 
 similar brand in a small way. In reading the Hanover case it is 
 well to consider carefully the statement of the court that this case 
 "is peculiar in its facts, and we have found none precisely like it." 
 
 The extent of the territory in which a common law trade-mark 
 exists and will be protected has been an unsettled question for a 
 long time. Into consideration of it must enter: (1) The rights of 
 the first user in territory he has not occupied; (2) the rights of any 
 later user who has used the name and invested money in its 
 exploitation in ignorance of the user by anyone else; (3) the right 
 of the first user to extend his trade into new territory as his busi- 
 ness grows and the popularity of his brand increases. Popularity 
 of an article of trade, or as the Supreme Court terms it, the 
 trader's "celebrity," is often a process of growth over which the 
 maiiufacturer has only a partial control. A visitor to a northern 
 
30 Basis of the Action for Unfair Competition 
 
 city from the south or east or vice versa, becomes acquainted with 
 such an article. He returns home and causes the local dealer to put 
 the brand in stock and a market is automatically created at a 
 point far distant from territory intentionally occupied by the 
 manufacturer. An article is advertised; a reader at a point far 
 distant from the place of manufacture or from the territory in 
 which the sale of the article is actively pushed, sees the advertising, 
 sends for the article, and a new market for the goods is created. 
 This is a normal extension of trade. It is a natural process. It is 
 the most normal process by which the distribution of an article in- 
 creases. There is inherent in the good-will of every business the ab- 
 solute right to reap the benefits of such growth. An owner of a 
 trade-mark may, either by direct efforts looking to the expansion 
 of his distribution or by the natural growth in popularity that comes 
 from good quality and honest dealing find the market for it carried 
 to distant and unexpected points. The statement of Judge Baker 
 in Hanover Star Milling Co. v. Allen & Wheeler Co.,^^ that "Since 
 it is the trade and not the mark that is to be protected, a trade- 
 mark acknowledges no territorial boundaries of mimicipalities or 
 states or nations but extends to every market where the trader's 
 goods have become known and identified by his use of the mark," 
 deserves serious consideration. 
 
 In the decision of this same case by the Supreme Court*" the 
 Court holds that common-law trade-marks like other rights rest- 
 ing in user may be lost by "abandonment, non-user, laches, or 
 acquiescence," and proceeded to further hold that because the 
 Allen & Wheeler Co. had allowed forty years to elapse without 
 attempting to sell goods under their brand in the southern states 
 and no sales had there occm-red in that time it was "estopped to 
 assert trade-mark infringement in that territory." What will be 
 construed, in the future, to be such laches, acquiescence or non- 
 user as will warrant a coiirt in thus excluding an owner of a brand 
 from new territory, of course we cannot foresee. It seems likely 
 that before a concern will be thus penalized it must first be shown 
 that it has committed itself definitely to some course of action 
 that will give ample basis for a finding that it has adopted a 
 settled policy of confining its business to one locality and of making 
 no effort to extend its business into new territory. 
 
 "208 Eed. 513-19-1913. Star Milling Co., 240 U. S. 403- 
 
 ^ Allen & Wheder Co. v. Hanover 1916. 
 
CHAPTER III 
 
 Good-Will 
 
 Section 13. Definitions of good-will. 
 
 14. Elements of good-will. 
 
 15. Relation of good-will to trade-marks and trade insignia. 
 
 16. Good-will protected by law of unfair competition. 
 
 17. Good-will which is not transferable — artists, musicians, etc. 
 
 18. Sale of good-will of entire property — rights of vendor. 
 
 19. Presumption that no one intends to part with right to use his 
 
 own name. 
 
 20. Name may be so sold as to preclude the owner from again using it 
 
 in the same business. 
 
 21. Sale of business site; effect of, on names. 
 
 22. Sale and license of trade-mark rights. 
 
 23. Duty to prevent confusion resting on one who sells his business. 
 
 24. Transfer of portraits. 
 
 25. Rights of a manufacturer as to his good-will in a name under 
 
 which his goods are sold, not by him, but by a customer of his. 
 
 26. Transfers in bankruptcy and in assignments for creditors. 
 
 27. Rights of retiring stockholders and others in corporate names. 
 
 28. SoUciting old customers. 
 
 29. Sale of name or business by originator of an article. 
 
 30. Effect of locality on transfers of a business. 
 
 31. Partners' rights in the partnership name, on dissolution. 
 
 32. Dissolution by death of a partner. 
 
 33. Transfers by descent and rights of descendants. 
 
 34. Transfer of secret formulas. 
 
 35. Good-will, valuation of. 
 
 There never was a time, in all likelihood, when good-will (which 
 is only another name for credit, honesty, fair name, reliabiUty) 
 played a more important part in commercial life than to-day. 
 There never was a time when a good name was more to be desired, 
 for purely business reasons, regardless of any other considerations, 
 than to-day. There never was a time when the means and instru- 
 ments designed for the creation of a good name for one's self were 
 so highly developed as to-day. 
 
 The law of unfair competition is the body of rules created by 
 the' common law of the United States (not by statute) to regulate 
 
 31 
 
32 Good-Will 
 
 the conduct of those striving for good-will for themselves or for 
 ill-will for their competitOTs. 
 
 Good-will is unquestionably property. In England it is so 
 treated with reference to the stamp duty on instruments deal- 
 ing with good-will.' And American courts have held the same.'' 
 
 Probably Lord Hardwicke was the first to recognize this fact 
 when in 1743 he said: "Suppose the house were a house of great 
 trade, he must account for the value of what is called the good- 
 will of it." 2« 
 
 § 13. Definitions of Good-Will. — Lord Eldon said good- 
 will was a "probability." Vice-Chancellor Wood called it an 
 "advantage." The Michigan court terms it "favor"; Judge 
 Story, an "advantage or benefit." Good-will is identified in most 
 instances by names and it is difficult to conceive of good-will with 
 which no name is associated. Injure the name of a concern and 
 instantly its good-will depreciates in value. Destroy its reputa- 
 tion — its name for honor, for promptness, for always deahng 
 in high grade goods, and the good-will is impaired. Lord Eldon 
 said good-will is "nothing more than the probability that the old 
 customers will resort to the old place." ' He might with equal 
 fitness have added that it is the further probability that old 
 customers will remember favorably the name of the house with 
 which they have dealt so long. 
 
 Sir John Leach in Chissum v. Dewes,* defines good-will to be 
 "the advantage attached to the possession of the house." 
 
 ''Good-will," said Lord Langdale, "is the chance or prob- 
 ability that custom will be at a certain place in consequence of 
 the way in which that business has been previously carried on." ^ 
 
 Various kinds of good-will grow up in connection with various 
 sorts of business: one sort is that belonging to a public-house, a 
 theatre, an office building, an amusement park, a manufacturing 
 works, as the "Crown Works," (see Rickerby v. Reay, infra) and 
 
 1 See Commissioners of Inland Rev- Tomah v. Warren, 94 Wis. 151-1896; 
 
 mue V. Angus & Co., 23 Q. B. Div. 68 N. W. 549. 
 
 579-1889; Brooke & Co. v. Commis- ^ Gihblett v. Read, 9 Mod. 459- 
 
 sioners of Inland Revenue, 2 Q. B. 356- 1743. 
 
 1896. c ' Cruttwell v. Lye, 17 Ves. 335-46- 
 
 ^ Metropolitan Nat. Bank v. St. 1810. 
 
 Louis Dispatch Co., 36 Fed. 722-1888 * 5 Russ. 29. 
 
 (C. C. Mo.); Howard v. Taylor, 90 'England v. Downs, 6 Beav. 269- 
 
 Ala. 241-1889; 8 So. 36; Bank of 1842. 
 
Definitions of Good-Will 33 
 
 is usually termed local good-will or business good-will. Con- 
 trasted with this, is personal or, as it is often called, professional 
 good-will. This attaches more directly to a person, and is not 
 associated, in the minds of the pubhc or business world, with 
 any particular spot. "It is quite plain that the good-will of a 
 pubUc-house passes with the public-house. In such a case, the 
 good-will is the mere habit of the customers resorting to the house. 
 It is not what is called personal good-will." * 
 
 Then, too, there is a good-will which attaches solely to goods, 
 in distinction from that belonging to a person or a place or busi- 
 ness house. For instance, few people know the name of the 
 makers, or the place of manufacture of "Dutch Cleanser," while 
 most persons have heard of the article itself. The "Gold Dust 
 Twins," (the name of a brand of cleaning powder) is well-known, 
 but few could say who made it. So numerous are the assumed 
 names used in business, that statutes are passed in various states 
 requiring their registration in public offices that the pubhc may 
 be informed of the identity of the persons using the name. 
 
 Good-will of professional men and in professional partner- 
 ships attaches to persons, not to place usually; and this is true of 
 partnerships made by brokers and builders, as well as partnerships 
 for buying and selling cattle and other goods, where the partners 
 go about from place to place. It is "in part the chance that 
 sellers will consign in a name they know." ^ As showing what 
 professional good-will is and how it is appendant to the person of a 
 doctor, the case of May v. Thompson,^ which arose on a breach of 
 contract to buy a practice, is in point. Jessel, M. R., said in that 
 case (p. 718) that in a contract for the sale of a doctor's practice, 
 "there is always a stipulation that the selling doctor shall retire 
 from practice either altogether or within a given distance. It is so 
 always and there is also, sometimes, a stipulation that he shall 
 not sohcit the patients or shall not sohcit them for a given time." 
 
 One of the earUest cases on good-will was Cruttwell v. Lye,^ 
 decided in 1810, in which Lord EJdon seemed to think that, with- 
 out actual fraud, no injunction should issue to protect the good- 
 will of a concern which had been sold, from possible injury from 
 further competition on the part of the vendor; saying that "the 
 
 « Ex parte Punnett, 16 Ch. Div. 226- ' Bates Partnership, vol. II, § 657. 
 33-1880. ' 20 Ch. Div. 718. 
 
 9 17 Ves. 335-46. 
 
34 Good-Will 
 
 good-will which has been the subject of sale, is nothing more 
 than the probabihty that the old customers will resort to the old 
 place." Jessel, M. R., in Ginesi v. Cooper & Co.,^" questions 
 this rule of Lord Eldon and states what has since come to be the 
 law on this point, thus: " 'Good-will,' I apprehend, must mean 
 every advantage — every possible advantage, if I may so express 
 it, as contrasted with the negative advantage of the late partner, 
 not carrying on the business himself — that has been acquired 
 by the old firm in carrying on its business, whether connected 
 with the premises in which the business was previously carried 
 on, or with the name of the late firm, or with any other matter 
 carr5ang with it the benefit of the business." The above definition 
 of Lord Eldon was given when he was considering a case of a 
 wagoner who carried goods on a route, and the value of his good- 
 will was solely in the fact that people in the locality knew a 
 wagoner was accustomed to start at the place where he usually 
 did start and ypould go there when needing a wagoner. Wood, V. 
 C, in Churton v. Douglas, ^^ defines good-will thus: "Good-will, I 
 apprehend, must mean every advantage that has been acquired 
 by the old firm by carrying on its business, everything connected 
 with the premises, and the name of the firm, and everything con- 
 nected with or carrying with it the benefit of the business." ^^ 
 
 Judge Story defines good-will as "the advantage or benefit, 
 which is acquired by an establishment, beyond the mere value 
 of the capital stock, funds, or property employed therein, in 
 consequence of the general public patronage and encouragement 
 which it receives from constant or habitual customers, on account 
 of its local position, or common celebrity, or reputation for skill or 
 affluence, or punctuahty, or from other accidental circumstances, 
 or necessities, or even from ancient partiahties, or prejudices." ^* 
 
 The Michigan definition is as follows: "The favor which the 
 management of a business has won from the public, and the 
 probability that old customers will continue to give it their 
 patronage." ^* 
 
 Included in good-will is the right to use lists of customers. 
 
 •» 14 Ch. Div. 596-600-1880. " 2 Story Partnership, § 99. 
 
 " 28 L. J. Ch. 841-45-1859. " Chittenden v. Witbeck, 50 Mich. 
 
 " See also Menendez v. Holt, 128 401-20-1883; 15 N. W. 526. 
 U. S. 514^22-1888; 32 L. ed. 526; 
 9 Sup. Ct. 143. 
 
Elements of Good-Will 35 
 
 The sale of good-will passes to the purchaser such a list of cus- 
 tomers and correspondents of the house. As mere possession of 
 this list, acquired legally, gives to the possessor the right to solicit 
 the trade of such customers, actions regarding this sort of good- 
 will often take the form of applications to enjoin one having such 
 a list from using it to the damage of the owner of the good-will. 
 See the discussion of this question in the chapter on Trade Secrets, 
 and later sections in this chapter. 
 
 § 14. Elements of Good-Will. — Good-will, as has been seen, 
 is "favor," "celebrity," "probability," "habit." It is made up of 
 all in the daily life of the community that creates this popularity 
 and celebrity. Money invested in sales campaigns of a con- 
 structive sort, in advertising, in clean attractive store fittings 
 and apparatus, in the wages of high class employees, in contribu- 
 tions to public enterprises and charities that create friendliness 
 of the public, every act that increases the favor with which the 
 concern is regarded by the public creates, in part, its good-will. 
 "Money invested in advertising is as much a part of the business 
 as if invested in buildings or machinery, and a rival in business 
 has no more right to use the one than the other." ^^ 
 
 Per contra every act on the part of a competitor that unfairly 
 injures or lessens this friendly attitude of the community is an 
 act of unfair competition, and may be a basis of court action look- 
 ing to the protection of the good-will thus attacked. 
 
 § 15. Relation of Good-Will to Trade-Marks and Trade In- 
 signia. — A trade-mark or trade name is one of the visible me- 
 diums by which this good-will is identified, bought and sold, and 
 known to the pubhc. It is the good-will, however, and not trade- 
 marks or names that the court seeks to protect in unfair competi- 
 tion cases. 
 
 Good-will is represented, not only by trade-marks, but by all 
 kinds of commercial insignia, by any agencies used in commerce 
 to identify either merchandise or its manufacturer." In the early 
 cases the courts aimed to protect the mark, assuming it to be prop- 
 erty, in and of itself. Recently, however, it has been seen that the 
 actual property to be protected, is not the mark, but the good-will 
 behmd the mark, of which the mark is but a symbol. 
 
 16 Wilson Co. V. Foster, 80 Fed. 896, N. E. 89, 91; Weinstock v. Marks, 109 
 897. Cal. 529; 42 Pac. 142, 144. 
 
 i» Fox V. Glynn, 191 Mass. 344, 78 
 
36 Good-Will 
 
 § 16. Good-Will Protected by Law of Unfair Competition. — 
 
 Good-will is protected by the law of unfair competition. One 
 can pass off such good-will as he possesses, as the good-will of 
 another, just as he can pass off his goods as those of another; 
 for when a trader, whose goods have little reputation, holds him- 
 self out to be someone else, whose goods have a favorable reputa- 
 tion, he fraudulently obtains the benefit of a valuable good-will 
 not his own. Hence he does not pass off his goods as another's 
 necessarily, but he holds himself out as possessing a reputation 
 that gives hisJiouse and its goods particular standing, in the 
 mind of the trade and the public, which standing belongs only 
 to another. It has been rightly termed "stealing" for one thus to 
 take fraudulent advantage of another's good-will. 
 
 Colorable purchases of a business of small value, to obtain its 
 good-will for the purpose of using its name, it being similar 
 to that of a successful competitor, have been frequently con- 
 demned by the courts. Such transactions are deemed fraudu- 
 lent and the use of the name in question will be enjoined. See 
 also as to this, the section of the chapter on "Family Names" as 
 to "Surnames acquired otherwise than by Descent." " 
 
 "Abel Morrall, Ltd., v. Hessin & good-will, use of name, labels, etc. 
 
 Co., 20 R. P. C. 429-1903 (Ct. App.)."^ Held, these purchases were colorable 
 
 For one hundred years, a needle busi- and made with intent to defraud plam- 
 
 ness had existed under the name of tiff, and that the defendant might 
 
 "Abel Morrall." In 1891, plaintiff obtam trade intended for plaintiff, 
 
 purchased the good-will of the needle That this was fraud enough to enable 
 
 business of Joseph Mogg, and Joseph the court to inquire into the transac- 
 
 John Richard Mogg which dated from tion even where a man's own name had 
 
 1846. Abel Morrall's or A. Mor- been purchased. Injunction granted, 
 
 rail's needles were famous under these against use of J. Y. Morrall or W. 
 
 names or simply as Morrall's. Mogg's Mogg & Co. 
 
 needles were well known in certain Holloway v. Clmt, 20 R. P. C. 
 localities. Defendant began needle 525-27-1903. Application for inter- 
 business in 1893 as "T. Hassin& Co.," locutory injunction. Plaintiff had 
 and in 1900 purchased business of been a pill maker since 1837, selling 
 Jabez Yardley Morrall, a former em- HoUoway's Pills. In 1897, Clent, 
 ployee of a company now owned by for £60, bought out Arthur Hollo- 
 plaintiff. He was not successful, way, who had an ink, gum, fur- 
 Defendant purchased his business niture and paste business, with his 
 for £68. W. Mogg & Co. were provi- good-will, trade name, etc. No men- 
 sion dealers and for £7 sold to defend- tion is made in the agreement as to 
 ant "the whole bag of tricks," the the pill business or trade possessed 
 receipt given by defendant mentioning by Holloway. Defendant then be- 
 
Good-Will Which Is Not Teajstsferable 37 
 
 Advertisements stating or suggesting that the one advertis- 
 ing possesses the good-will of one well known in business, when 
 such is not the fact, is unfair competition. 
 
 Where the principal value of the property of a racecourse 
 company was a privilege granted by a jockey club to carry, on 
 races, and it tried to transfer its property to a successor by a 
 deed merely of its land, which deed, to escape stamp tax, was 
 for a consideration of £10,000, the value of the land only, when 
 the actual consideration for the entire sale was greater than that, 
 it was held that the good-will merely enhanced the land value; 
 it was not a separate property and the business and good-will 
 were not separable.^* 
 
 In England and the United States injury to good-will not 
 caused by passing off has not been considered as a part of the law 
 of unfair competition, but it has been so classified in Germany 
 in sections 6 and 7 of the law Gesetz Zur Bekampfung des un- 
 lauteren Wettbewerbs, passed May 27, 1896.^^ This statute 
 allows restraint of inaccurate statements in selling goods and 
 allows, too, compensation for injury suffered and a fine for one 
 who intentionally makes misleading statements as to price, etc. 
 
 § 17. Good-Will Which is Not Transferable — Artists, Musi- 
 cians, etc. — The good-will attaching to certain classes of trade 
 and professional names is not transferable. On grounds of public 
 poUcy the right to use the name of an artist or musician is not 
 
 gan to put up and sell "Holloway's Plaintiffs were the successors in 
 Pills." Plaintiff had a registered business of two old firms, Mappin 
 mark. He claimed to have been es- Brothers and Mappin & Webb. De- 
 tabhshed since 1837, the date when fendant sold goods similar to plain- 
 plamtiff began business. Defendant tiffs', but made by one Blyde, who 
 also wrapped his boxes and pills in was alleged, without strict proof, to 
 leaflets issued by plaintiff in which have bought the business in Sheffield 
 plaintiff wrapped his boxes. "It of one Theophilus Mappin, trading 
 certainly is not open to a person to as Mappin & Sons, and bore tickets 
 buy another's business and then to with such phrases as "Mappin's A 1 
 use the name of the vendor of that Quality." Defendant's salesmen rep- 
 business, which happens to be the resented these goods to be the same 
 name of a well-known manufacturer as plaintiffs'. Held, that plaintiffs 
 of a different article to assist him in were entitled to an injunction, 
 the sale and business of that other •» In re The Rose Hill Race Course 
 article." C'o., 5 State Reports, 402-1905. 
 
 Mappin & Webb, Ltd., v. Leapman, " See articles on same, 13 Law 
 
 22 R. P. C. 398-1905 (Ch. Div.). Quarterly Review, 156-1897. 
 
38 Good-Will 
 
 capable of being assigned so as to be used, for example, in desig- 
 nating or advertising a band, or a series of concerts, with which 
 the musician in question has no connection.^" The same is prob- 
 ably true of all professional names, whenever the repute of the 
 name depends on the personality or personal characteristics 
 of the individual in such a way that if used, except in connection 
 with that individual, the pubHc will not be gettmg what it has a 
 right to expect from the use of the name. 
 
 § 18. Sale of Good-Will of Entire Property — Rights of Ven- 
 dor. — Where an entire business is sold, the question often arises 
 as to the rights of the vendor to re-enter the same business, to 
 soUcit the old customers, to set up a stand near the old one, to 
 use the old name in part or in whole, to associate himself with 
 former partners, to use wrappers, bottles, cartons,' labels and 
 trade names of the old concern, to state his former connection 
 with it or to trade on its credit in any way. 
 
 With the simple sale of a business and its attendant good-wiU 
 there goes no legal or equitable right, according to certain au- 
 thorities, to prevent the vendor from again entering the same 
 business. He cannot resume business so as to directly take away, 
 or put himself in the way of getting, the business he has sold. 
 Any of the trade which would naturally go to his former place of 
 business or "stand," or any that would be naturally attracted 
 there because of the name or reputation which that business 
 bears, and which his vendee now uses, he may not seek to retain; 
 but unless he has specifically agreed in his contract of sale not to 
 do so, he may, if he chooses, re-enter the same line of business in 
 any manner that does not in any way create the impression that 
 the new business he starts is the old one, or connected with it; 
 or, in other words, in any way which does not involve unfair 
 conduct on his part. The Encyclopedia of the Laws of England, 
 volume 6, page 85, summarizes this rule by saying that the pur- 
 chaser or acquirer for value of a good-will cannot insist upon the 
 retirement from the trade of the late owner of the business, but, 
 to protect himself, he must obtain an agreement restraining com- 
 petition — an agreement which must satisfy the tests laid down 
 in Nordenfelt v. The Maxim-Nordenfelt Guns & Ammunition Co.^^ 
 
 "> Blakely v. Soma, 197 Pa. St. 30&- Chaney, 143 Mass. 592; 10 N. E. 713, 
 1900; 47 Atl. 286, citing Hoxie v. and other cases. 
 
 " (1894) App. Cas. 535. 
 
No One Intends to Part with Right to Own Name 39 
 
 The value of good-will bought from another depends in part 
 upon whether it be sold voluntarily by the former owner or 
 whether he parts with it involuntarily as in bankruptcy. Where 
 the sale is voluntary, a specific duty rests upon the vendor not 
 to do anything in competition with his vendee, such as the solicit- 
 ing of old customers, which will decrease the value of the good-will 
 sold. Where the sale is a result of the intervention of the law as 
 in bankruptcy, this duty is perhaps less definite. 
 
 It is not necessary here to discuss the principles of restraint 
 of trade. This work has to do with these contracts, not in the 
 making, but in the enforcement of them. It assumes that the 
 contracts referred to are valid. 
 
 Under ordinary circumstances a court of equity will protect a 
 person using a label which states the true source of the goods upon 
 which the label appears. For instance, a person may sell to an- 
 other the right to use his name, but this person may not enjoin a 
 third who sells goods actually made by original maker, under that 
 maker's name. To enjoin, in such a case, would be to enjoin the 
 sale of a genuine article. ^^ 
 
 ,§ 19. Presumption that no One Intends to Part with Right 
 to Use His Own Name. — In Hazelton Boiler Co. v. Hazleton 
 Tripod Boiler Co., the court said: "The right of a man to use 
 his own name in connection with his own business is so funda- 
 mental that an intention to entirely divest himself of such a right 
 and transfer it to another will not be readily presumed, but must 
 be clearly shown" (p. 508). This statement was made regarding 
 a transfer of all one's "right, title and interest in a business" and 
 it was held this did not pass the right to use the name of the 
 vendor.2^ See further on this question the chapter on "Family 
 Names." 
 
 § 20. Name May be so Sold as to Preclude the Owner from 
 Again Using It in the Same Business. — A person may, if he 
 
 '''Samuel v. Berger, 24 Barb. 163- that plaintiffs were not entitled to 
 1856 (N. Y. Sup. Ct.). Plaintiffs an injunction restraining defendants 
 were the assignees of Samuel who, from so doing, the court considering 
 by agreement with one Brindle, had that to grant such an injunction 
 acquired the right to use Brindle's would be to prevent the sale of the 
 name on watches made by Samuel, genuine article, and thus protect plain- 
 Defendants sold watches which were, tiff in the sale of a simulated one. 
 in fact, manufactured by Brindle and " 142 m. 494-1892; 30 N. E. 
 were stamped with his name. Held, 339. 
 
40 
 
 Good-Will 
 
 wishes, sell his name once for all and exclude himself entirely 
 from the use of it in such a way as to injure his vendee in any 
 unfair way in the enjoyment of his purchase. This is now decided 
 not to be any unjust limitation of a person's right to the use of 
 his own name.^^ This question is discussed in chapter on "Family 
 Names." 
 
 Having excluded himself by agreement from the use of his name, 
 if one uses his name in re-entering the same line of business, or 
 makes any attempt to reclaim any of the business of the concern 
 he has sold out, he will be competing unfairly. Merely to make 
 Tiis own name unduly prominent may be unfair.^' If in the new 
 business the vendor makes use of the identical name he used be- 
 fore or a very similar one he commits an inequitable act.^^ This 
 
 '* Russia Cement Co. v. LePage, 147 
 Mass. 206-1888; 17 N. E. 304. In 
 1880, LePage and Brooks began to 
 make LePage glue, agreeing to use 
 LePage's name. In 1882, they sold 
 their business to plaintiff, including 
 the trade-mark which was not regis- 
 tered. In 1886, LePage drew out and 
 began business for himself in same 
 town with plaintiff. Held, a person 
 may sell his own name as a trade name 
 and preclude himself from further use 
 of it. Defendant enjoined from using 
 "LePage's Improved Liquid" or Le- 
 Page's "Liquid Glue," and from using 
 " LePage's Liquid Glue Co." as name 
 of his company. Citing Horton Mfg. 
 Co. (N. Y.) V. Horton Mfg. Co. {Ind.), 
 18 Fed. 816-1883; McLean v. Fleming, 
 96 U. S. 245-1877; 24 L. ed. 828; 
 Dixon Crucible Co. v. Guggenheim, 2 
 Brewst. (Pa.) 321-1869; Probasco v. 
 Bouyon, 1 Mo. App. 241-1876; Oakes 
 V. Tbnsmierre, 4 Woods, 547-1883 
 (C. C. Ala.); Celluloid Mfg. Co. v. 
 Cellonite Mfg. Co., 32 Fed. 94-1887; 
 Ainsworth v. Walmsley, L. R. 1 Eq. 
 518-1866; Shaver v. Shaver, 54 Iowa, 
 208-1880; 6 N. W. 188; S. Frazer v. 
 Frazer Lubricator Co., 121 111. 147- 
 1886; 13 N. E. 639; Gillis v. Hall, 
 
 2 Brewst. (Pa.) 342-1869; Kidd v. 
 Johnson, 100 U. S. 617-1879; 25 L. ed. 
 769; Hoxie v. Chaney, 143 Mass. 592- 
 1887; 10 N. E. 713. 
 
 2' Andrew Jurgens Co. v. Woodbury, 
 56 Misc. (N. Y.) 404; 106 N. Y. Supp. 
 571-1907 (Sup. Ct. N. Y. Sp. T.). 
 Defendant, John H. Woodbury, with 
 others, in 1901 transferred to the 
 predecessors of the plaintiff all trade- 
 marks and other rights in connection 
 with various preparations, including 
 Woodbury's Facial Soap, which was 
 widely known. He engaged in no 
 competing business until 1906, when 
 he began to sell a soap called "Wood- 
 bury's New Skin Soap." There was 
 no simulation of wrapper or package, 
 except that the name "Woodbury" 
 appeared conspicuously on each box 
 and cake. Held unfair competition. 
 
 ^Probasco v. Bouyon, 1 Mo. App. 
 241-1876. Oakes, one of the defend- 
 ants, was a former partner of plain- 
 tiff. The firm made candies known 
 as "Oakes' Candies." Oakes sold to 
 plaintiff his mterest in the firm, the bill 
 of sale including the exclusive right 
 to make and sell "Oakes' Candy." 
 Afterward he began making candies 
 for defendant, who advertised and 
 
No One Intends to Part with Right to Own Name 41 
 
 is true of a name of a brand of goods or of a business name as 
 much as of a personal name.^' One member of a family may 
 
 sold them as "Oakes' Candies." Held, 
 that defendants would be restrained 
 from selling candy under that name. 
 
 " Myers v. Kalamazoo Buggy Co., 
 54 Mich. 215. Myers bought of 
 owners of Kalamazoo Wagon Com- 
 pany all their interest "in the prop- 
 erty, assets, money and good-will, and 
 all the other property of every man- 
 ner and nature in and to the firm of 
 the Kalamazoo Wagon Co." His ven- 
 dors then organized the defendant 
 company. Cooley, J., said: "Plaintiff 
 was entitled to be put in possession 
 of what he had bought. The good- 
 will was a substantial part of the 
 purchase, and purposely to take any 
 steps to prevent his receiving the 
 benefit of it was a wrong of the same 
 nature as would have been the reten- 
 tion of some portion of tangible prop- 
 erty belonging to the stock of the 
 company. This good-will is to be 
 found Lq the probabiUty that the old 
 customers of the estabhshment whose 
 deaUngs with it have been satisfactory 
 to them will continue their custom 
 and commend it to others." 
 
 Listman Mill Co. v. Ldstman Mill- 
 ing Co., 88 Wis. 334-1894; 60 N. W. 
 261. WiUiam Listman originated 
 the trade-mark or trade name "Mar- 
 vel" as applied to flour, and the 
 name was used for some years by 
 a firm of millers of which he was a 
 member. During this period, he 
 registered, in his individual name, a 
 trade-mark of which "Marvel" was 
 the distinguishing feature. The busi- 
 ness and the use of this mark or name 
 were continued by a corporation 
 formed by Listman, and then by the 
 plaintiff corporation, in which he was 
 largely interested and of which he was 
 
 general manager. There was no for- 
 mal assignment of the trade-mark or 
 express agreement regarding it. List- 
 man then severed his connection with 
 plaintiff, organized the defendant com- 
 pany in another city, and defend- 
 ant then began to apply the name 
 "Marvel" to its flour. Held, that 
 plaintiff had acquired the exclusive 
 right to the use of this mark or name. 
 Giacomo Allegretti v. Allegretti Choc- 
 olate Cream Co., 177 111. 129-1898. 
 "Transfer of the property and effects 
 of a business carries with it the exclu- 
 sive right to use such trade-marks or 
 trade names that have been used in 
 such business" (id. p. 132). Citing 
 Snyder Mfg. Co. v. Snyder, 54 Ohio 
 St. 86-1896; 43 N. E. 325; 31 L. R. 
 A. 657; Williams v. Farrand, 88 Mich. 
 473-1891; 50 N. W. 446; 14 L. R. A. 
 161; Fish Bros. Wagon Co. v. La Belle 
 Wagon Works, 82 Wis. 546-1892; 52 
 N. W. 595; 16 L. R. A. 453; Merry v. 
 Hooves, 111 N. Y. 415-1888; 18 N. E. 
 714; Feder v. Benhert, 18 C. C. A. 
 549; 70 Fed. 613-1895; C. S. Hig- 
 gins Co. v. Higgins Soap Co., 144 
 N. Y. 462-1895; 39 N. E. 490; 27 
 L. R. A. 42; Peck Bros. & Co. v. Feck 
 Bros. Co., 113 Fed. 291-1902; 62 
 L. R. A. 81; 51 C. C. A. 251; Ayer v. 
 Hall, 3 Brewst. (Pa.) 509-1871; De- 
 fendant, R. P. Hall, had sold to plain- 
 tiff the right in a preparation called 
 "Hall's Vegetable Sicilian Hair Re- 
 newer," including the right to use the 
 defendant's name, and had been en- 
 joined from using the name Hall in 
 connection with any similar prepara- 
 tion sold by him. Held, that it was a 
 breach of the injunction for him to 
 sell "R. P. Hall's Improved Prepa- 
 ration for the Hair," even though 
 
42 
 
 Good-Will 
 
 sell out his rights in a business to another and in a similar way 
 lose the right to use his own name to the injury of the vendee.^' 
 
 §21. Sale of Business Site; Effect of, on Names. — This 
 question is complicated often, because the name which is trans- 
 ferred is attached more or less definitely to some locality, build- 
 ing, or address, which has become really a part of the name and 
 reputation of the business. This is true frequently of hotels, 
 breweries, natural springs, newspapers, and the like. In such 
 cases he who buys the buildings, or acquires the right to occupy 
 them, will have the right to use the name attaching thereto, in 
 the absence of very explicit contractual arrangement.^* 
 
 accompanied by the words "This 
 preparation is entirely different from 
 Hall's Vegetable Sicilian Hair Re- 
 newer, but is compounded by the 
 ■ same inventor, R. P. Hall." 
 
 28 "Twin Brothers" Yeast. Where 
 one brother sold out to the plaintiff, 
 the purchaser can enjoin the other 
 from using the name. Burton v. 
 Stratum, 12 Fed. 696-1882. Where 
 a merchant using name "Little Jake" 
 sold out, agreeing not to use the name, 
 he can be enjoined from using the 
 name. Grow v. Seligman, 47 Mich. 
 607-1882; 11 N. W. 404. 
 
 2" The above statement is approved 
 in Wright Restaurant Co. v. Seattle Co., 
 67 Wash. 690; 122 Pac. Rep. 348; 
 Vonderbank v. Schmilt, 44 La. Ann. 
 264^1892; 15 L. R. A. 462; 10 So. 616. 
 Plaintiff owned and ran "Hotel Von- 
 derbank" or "Vonderbank Hotel." 
 Plaintiff later opened "Cafe Restau- 
 rant Vonderbank" which was a saloon 
 with a few rooms. In 1889, he sold 
 the hotel to one Dormitzer, who as- 
 signed to creditors, who then conveyed 
 to defendant. Held, that the right to 
 use the name of plaintiff must be ex- 
 pressly understood to have passed at 
 the sale or the purchaser may be en- 
 joined from using it. Defendant en- 
 joined. See Browne Trade-Marks 
 
 (2d ed.), §§ 528-29 on Hotel Names. 
 See also index title " Hotel Names." 
 
 Huwer v. Dannenhoffer, 82 N. Y. 
 499-1880. Defendants sold real estate 
 where their business was conducted 
 and certain personal property of the 
 business. Defendant later set up in 
 another place and used same trade 
 name. Held, their trade-mark " Silex " 
 did not pass with place and personal 
 property or must be specifically 
 nominated in sale in order to pass. 
 
 Rickerby v. Reay, 20 R. P. C. 380- 
 1903 (Ch. Div.) . " Reay & Carrick " 
 began to make farm machines at A. in 
 1875. Carrick died in 1879. The firm 
 then became "Jno. Reay." In 1880, 
 Rickerby, who was in business at Car- 
 lisle, sold the machines as agent. Reay 
 died in 1885. In March, 1886, Rick- 
 erby bought the works. In 1898, Isaac 
 Reay, the son of John Reay, began 
 to make farm machinery in the old 
 Reay & Carrick works at A., which 
 Rickerby had just vacated. From 
 the beginning of R. & C.'s business 
 until 1898, a certain machine had 
 been sold by this concern with a de- 
 vice of a crown upon the footplate. 
 The machine was advertised as "The 
 Crown" and this device was con- 
 tinuously used by plaintiff and pred- 
 ecessors up to the date of this action. 
 
Sale of Business Site; Effect of, on Names 43 
 
 The Missouri Appeal Court has held, in Skinner v. Oakes,^" 
 that courts do not go to the length of holding that the name of 
 a man may be segregated from the man himself and from his 
 business in connection with which he has used it, and erected 
 into an ideal and abstract species of property, and be made a 
 subject of traffic and sale in the open market. There is an ex- 
 ception to this in the case of names which are attached to a place 
 of manufacture. Judge Field says, in this connection, that: 
 "It is true, the primary object of a trade-mark is to indicate by 
 its meaning or association, the origin of the article to which it 
 is affixed. As distinct property, separate from the article created 
 by the original producer, or manufacturer, it may not be the 
 subject of sale. But when the trade-mark is affixed to articles 
 manufactured at a particular establishment and acquires a special 
 reputation in connection with the place of manufacture, and that 
 establishment is transferred either by contract or operation of 
 law to others, the right to use the trade-mark may be lawfully 
 transferred with it. Its subsequent use by the person to whom 
 the establishment is transferred is considered as only indicating 
 that the goods to which it is affixed are manufactured at the same 
 place and are of the same character as those to which the mark 
 was attached by its original designer." ^' An assignment of 
 trade-marks without any accompanying transfer of the business 
 with which they are connected may be vaUd, if they are to be 
 used on goods which are made at the same place as before, ^^ 
 
 In 1900, defendant issued circular right to represent himself as carry- 
 headed "Crown Combined Mowing & ing on the old business, to use the 
 Reaping Machine, manufactured by crown device, and even if this were 
 Isaac Ray, Aspatria, late Reay & Car- not so, plaintiff's goods had come to 
 rick." Others were headed "Crown be known as "Crown" goods. Plain- 
 Implement Works, A — " then words tiff's right did not end with the lease 
 "Established 1875" and device of a of the old shops, but plaintiff could 
 crown. A writ was issued in the action not prevent the works being called 
 for injunction restraining use of the "Crown Works." 
 crown. August 16, 1902, defendant ^o iq Mo. App. 45-61-1881. 
 issued a very similar advertisement. " Kidd v. Johnson, 100 U. S. 617- 
 This the court terms "perfectly un- 1879, at.p. 620; 25.L. ed. 769. 
 justifiable from any point of view" " Wittham v. Braun, 44 Md. 303- 
 (id. p. 387). Held, citing Lord Lind- 1875. One Falk, a dealer in tobacco, 
 ley in Inland Rev. Commissioners v. assigned to complainant, a member 
 Muller & Co., App. Cas. 217-1901, of a firm of manufacturers who had 
 that plaintiff had in 1886 bought been manufacturing for Falk, ae- 
 
44 
 
 Good-Will 
 
 especially if the marks indicate some connection with that 
 place. 
 
 Such a trade name attaches generally to the place of manu- 
 facture rather than to the person of the manufacturer. It is 
 transferred, not with the person, but with the business itself. ^^ 
 It cannot usually be assigned in gross, apart from the business 
 to which it relates. ^^ Where a watchmaker of repute died leaving 
 no business which was making use of his name and the defend- 
 ant subsequently did use it, the court refused to restrain him, 
 holding that the right to the name was not assignable in gross.'^ 
 Where a name attaches to a place, it may be fraud for a person 
 who buys it to use the name in carrying on there the same business 
 as that of the former owner. But he may use the name in a 
 different business although the difference be slight, as for instance 
 between gin and Scotch whiskey.'* 
 
 cording to indications, all his "Smok- 
 ing Tobacco Brands." Held, that 
 while in general, trade-mark rights 
 can be assigned only in connection 
 with the business, this assignment 
 was valid, since the goods to which 
 the brands belonged continued to be 
 manufactured at the same place and 
 by the same concern. 
 
 " Bury V. Bedford, 4 De G. J. & S. 
 352-1864. A trade-mark or trade 
 name is generally associated with 
 the place of manufacture rather 
 than with the person of the manu- 
 facturer, and may be transferred 
 with the business to another, unless pe- 
 culiarly personal in its application. A 
 partnership trade-mark or trade name 
 may be sold with the other partner- 
 ship assets by the trustees under an 
 assignment for the benefit of creditors. 
 
 »* Grossman v. Griggs, 186 Mass. 
 275-1904; 71 N. E. 560. 
 
 » Thorneloe v. Hill, 11 R. P. C. 61- 
 1894 (Ch. Div.). Defendant was, 
 without any right to do so, selling 
 watches marked "John Forrest." 
 Held, however, that plaintiff was not 
 entitled to restrain him from doing 
 
 so, for the reason that his right to 
 use the name, was not established; 
 it was traced by various steps to the 
 actual John Forrest, who died many 
 years before, and the particular de- 
 fect pointed out in plaintiff's title 
 was that the right to use the name 
 was not assignable in gross, without 
 some business or good-will to which 
 it was appurtenant. Fish Bros. 
 Wagon Co. v. Fish Bros. Mfg. Co., 
 95 Fed. 457-1899 (C. C. A. 8th Cir.) 
 (headnote) : "A right of individuals to 
 use certain trade names and devices 
 in connection with the manufacture 
 and sale of an article, established by 
 a judicial decree, is not personal, in 
 such sense that it cannot be sold and 
 assigned to another, in a different 
 locality, in connection with a transfer 
 of the good-will of their business." 
 
 »«/. & W. Nicholson & Co. v. 
 Buchanan, 19 R. P. C. 321-1900. 
 About 1847, A. & Co. began to carry 
 on the "Black Swan Distillery." In 
 1897, successors of A. & Co. assigned 
 to the plaintiffs the ' good-will and 
 trade-mark, and later all the distillery 
 plant was taken from the premises. In 
 
Sale and License of Trade-Makk Rights 
 
 45 
 
 A lessee of a theatre will be allowed to use the name as against 
 the lessor even if the theatre is named with the lessor's personal 
 name.'' This rule goes upon the theory that names of this sort 
 come to identify not a particular person but a "stand" or business 
 site which he has used. The good-will involved is the reputation 
 not of the individual so much as that of the place. The individual 
 may have created the favorable reputation which the place 
 enjoys but he cannot carry this name with him when he leaves 
 the place. Jf the name be used to identify something unconnected 
 with this stand or business site, confusion must result. 
 
 Cases involving rights to names of hotels after a change of 
 ownership or of lease occurs, will be found in chapter on "The 
 Law of Trade Names." 
 
 § 22. Sale and License of Trade-Mark Rights. — The Mas- 
 sachusetts Court has held that the right to use a trade-mark not 
 
 April, 1897, defendant, a spirit mer- 
 chant, bought the property, put up the 
 figure of a black swan, and advertised 
 that the "Black Swan Distillery" had 
 been rebuilt. His wagons were marked 
 "Black Swan Distillery." Defend- 
 ant claimed he purchased premises 
 without restriction; that "Black 
 Swan" was nothing more than the 
 name of the premises. The name 
 "Black Swan" came from the fact 
 that a pubUc house of that name once 
 existed on the spot where the distil- 
 lery stood. It was more often known 
 as "Anderson's Distillery" than as 
 "Black Swan Distillery." Held: "As 
 a general rule the owner of land or 
 buildings of any kind may affix to 
 it any name he pleases. Day v. 
 Brovmrigg, L. R. 10 Ch. Div. 294- 
 1878. But I apprehend the court 
 would interfere if a particular name 
 were affixed with the view of mak- 
 ing a dishonest reputation which 
 would cause damage to another, as, 
 for example, if it were used for the 
 purpose of representing that a busi- 
 ness carried on there was the busi- 
 ness of another, or even if, without 
 
 any dishonest intention, the user were 
 such as actually, or probably, to mis- 
 lead" (id. p. 325). Defendant had a 
 reputation as a dealer in Scotch 
 whiskey. The Black Swan gained a 
 name as a distillery of gin — not 
 whiskey. Defendant does not deal 
 in gin. No evidence was shown of 
 anyone being misled. Action dis- 
 missed. 
 
 "Booth v. Jarrett, 52 How. 169- 
 1876 (N. Y. C. P. Sp. T.). Plain- 
 tiff had built and for about four 
 years managed a theatre which be- 
 came well known as "Booth's The- 
 atre." Defendants afterward came 
 into control of the theatre under 
 lease in which it was described as 
 "Booth's Theatre," and designated it 
 in the advertisement of their per- 
 formances by the same name, repre- 
 senting themselves as lessees and 
 managers. Plaintiff sought to re- 
 strain them from the use of this name, 
 claiming that the public would be 
 misled into beUeving that he still 
 acted in and managed the theatre. 
 Held, that defendants were entitled 
 to continue the use of the name. 
 
46 Good-Will 
 
 strictly personal may be transferred with the business for a limited 
 time, by license, subject to payment of license fees, or while the 
 owner remains in employ of the Ucensee.'* This is not the usual 
 rule. Normally a trade-mark cannot be transferred except 
 with the business of which it is the outward sign. "A trade-mark 
 cannot be assigned, or its use Ucensed, except as incidental to 
 a transfer of the business or property in connection with which 
 it has been used. An assignment or Ucense without such a transfer 
 is totally inconsistent with the theory upon which the value of a 
 trade-mark depends and its appropriation by an individual is 
 permitted. The essential value of a trade-mark is that it identifies 
 to the trade the merchandise upon which it appears as of a certain 
 origin, or as the property of a certain person. When its use has 
 been extensive enough to accompUsh that pm^ose, and not tUl 
 then, it becomes property, ^^ and when it so becomes property it is 
 valuable for two piuposes: (1) As an attractive sign manual of 
 the owner, faciUtating his business by its use; (2) as a guaranty 
 against deception of the pubUc. By famiUarity with the trade- 
 mark attached to the owner's merchandise, purchasers are enabled 
 to buy what they desire, and are thereby protected against im- 
 position and fraud. Disassociated from merchandise to which it 
 properly appertains, it lacks the essential characteristics which 
 alone give it value, and becomes a false and deceitful designation. 
 It is not by itself such property as may be transferred." ^^ 
 
 This statement applies equally to the good-will of places, build- 
 ings and the like. 
 
 § 23. Duty to Prevent Confusion Resting on One Who Sells 
 His Business. — Where one sells a business and the buyer later 
 ^ removes it to another place, good faith requires that the vendor, 
 should he chance to occupy the old stand, use great care not to 
 do anything which will cause the public to confuse his new busi- 
 ness with that which he has sold or which will deprive his vendee 
 
 28 See Nelson v. J. H. Winchell & known to the public, and hence valu- 
 
 Co., 203 Mass. 75. able. 
 
 "It should be noted in connection ^f'MacMahan Pharmacol Co.v. Den- 
 
 with this statement that a trade- ver Chemical Mfg. Co., 113 Fed. 468- 
 
 mark, as distinguished from a trade 74; 51 C. C. A. 302-1901 (citing au- 
 
 name, may be property once it is th.ont{es);Falky.AmericanWestIndies 
 
 adopted as such, although it has not Trading Co., 180 N. Y. 445-1906- 73 
 
 been used suflSciently to become well N. E. 1123; 1 L. R. A. N. S. 704n. 
 
Transfer of Portraits 
 
 47 
 
 of any of the benefits of his purchase to which he is rightfully 
 entitled. The same is true where the vendors later occupy stands 
 near their former one, now occupied by their vendee/" 
 
 § 24. Transfer of Portraits. — Trade-marks and names often 
 are combined with the portrait of some person as well as his name. 
 This fact does not prevent the assignment or transfer of the 
 name and portrait.*^ The death of the person whose name or 
 portrait is used by a firm does not prevent a transfer to the surviv- 
 ing partners of the right to use the portrait and name, provided 
 they were a part of the partnership or corporate property and 
 assets; but unless the right to use them was distinctively a part 
 of the assets, the surviving partners have no such right what- 
 ever, and no power to transfer the right to use them or use them 
 themselves. ^^ 
 
 § 25, Rights of a Manufacturer as to His Good-Will in a 
 Name under which His Goods Are Sold, not by Him, but by a 
 
 '^Angier v. Webber, 96 Mass. (14 
 Allen) 211-1867; 92 Am. Dec. 748. 
 Two of three members of a firm of 
 wagoners sold to the third their in- 
 terest and good-will in the business, 
 with the property used in it, and 
 agreed to do nothing to "impair or 
 injure" such interest and good-will. 
 The retiring partners then purchased 
 stands close to the stand of the pur- 
 chasing partner, engaged in busi- 
 ness on the same route as he, and 
 carried goods for many former cus- 
 tomers of the firm, but did not di- 
 rectly soUcit customers. Held, to be 
 a violation of the agreement. 
 
 Hall's Appeal, 60 Pa. St. 458-1869; 
 100 Am. Dec. 584. Defendant, having 
 sold to plaintiff for a valuable con- 
 sideration, the good-will of an under- 
 taking business, removed to a pla,ce 
 nearby on the same street and ad- 
 vertised that he had removed from 
 the old to the new place of business 
 and that he would there continue his 
 former business. Held, that he should 
 be enjoined from thus holding himself 
 
 out to the public as continuing the 
 business. 
 
 ^'^ Richmond Nervine Co. v. Rich- 
 mond, 159 U. S. 293-1895; 40 L. ed. 
 155; 16 Sup. Ct. 30; Hoxie v. 
 Chaney, 103 Mass. 592-1887; 10 N. 
 E. 713. 
 
 « Kidd V. Johnson, 100 U. S. 617- 
 1879; 25 L. ed. 769. S. N. Pike, a 
 distiller, branded his goods "S. N. 
 Pike's MagnoUa Whiskey, Cincin- 
 nati, Ohio," and formed a firm to 
 continue the business, one member of 
 which was the defendant, Kidd. In 
 1868, the firm removed its business to 
 New York, and the distillery as well 
 as the use of all the brands there 
 used, were transferred by Pike to a 
 firm of which complainants were the 
 successors. Held, that complainants 
 had thus acquired the exclusive right 
 to the use of the words above men- 
 tioned as a trade-mark and were en- 
 titled to enjoin its use by partners 
 acting under a hcense from Kidd, 
 claiming as survivor of the Pike 
 firm. 
 
48 
 
 Good-Will 
 
 Customer of His. — Where a manufacturer sells goods to a cus- 
 tomer who, in turn, sells them under another name, with the 
 consent of the makers; and the second concern sells its business 
 and good-will, and with them transfers also the name used by it 
 in selling the goods, the purchasers will not be allowed to sell 
 goods of another maker under this same name. Were such a 
 use of a name allowed, the original makers would lose trade 
 which had been secured by them in part through the merit of 
 their goods/^ 
 
 § 26. Transfers in Bankruptcy and in Assignments for Cred- 
 itors. — Purchasers of good-will and trade names in a bank- 
 ruptcy sale or in a sale by assignees will be protected against 
 injurious use of the name by the bankrupt after his discharge. 
 It may be that the name of the business which has been sold 
 
 *' Shaver v. HeUer & Merz Co., 
 108 Fed. 821-24^1901; 65 L. R. A. 
 878 (C. C. A. 8th Cir.). Heller made 
 "American Ball Blue." No one else 
 had used that name. Olmsted & Co. 
 bought of HeUer bluing which he 
 sold as "American Wash Blue." 
 Shaver bought out Olmsted and be- 
 gan to sell bluing not made by Heller 
 under the names of "American Ball 
 Blue" and "American Wash Blue," 
 and seriously injured the business of 
 HeUer. They contended that as they 
 bought Olmsted's good-will they had 
 a right to sell any bluing they wished 
 under the name of "American Wash 
 Blue," because Olmsted sold bluing 
 made by Heller and not by himself 
 under that name. The court held: 
 "That court (C. C. Iowa, 102 Fed. 
 882-1900) came to the conclusion 
 that the appellants had no better 
 right to use the name "American 
 Wash Blue" to palm off the goods of 
 other manufacturers as those made 
 by the appellee (Heller) than G. M. 
 Olmsted & Co. had, and that the lat- 
 ter firm stood in such a fiduciary 
 relation to the appellee (Heller) that 
 they could not be permitted to take 
 
 such action. It held that the good-will 
 of the business established under the 
 name 'American Wash Blue' was the 
 property of the appellee (Heller) and 
 not of Shaver who had bought the 
 good-will of Ohnsted, who had sold 
 Heller's Wash Blue. These conclu- 
 sions are, in our opinion, well founded 
 iu fact and in law. * * * The 
 excellence of the article and the in- 
 troduction which the appellee (Heller) 
 gave it or induced Olmsted & Co. 
 to give it, * * * established the 
 trade in it, and gave that trade 
 its value. Purchasers in the trade 
 and the public came to know, to 
 demand, and to buy the appellee's 
 manufacture by this brand. "The in- 
 evitable result is that the good-will 
 of this trade became the appellee's 
 property, which neither Olmsted & 
 Co. nor their successors could law- 
 fully lead away from it by fraud or 
 falsehood. One does not lose the 
 good-will of his trade in an article 
 * ■* * by the fact that the con- 
 sumers know only the name and the 
 excellence of the article, and neither 
 know nor care who makes it." 
 
Transfees in Bankruptcy and Assignments 
 
 49 
 
 in the bankruptcy is composed in part of the bankrupt's own 
 family name or some name long used by him. Despite this, the 
 buyer from the bankrupts is entitled to be put in control of his 
 purchase and a court will enjoin the bankrupt from resuming 
 the use of the name. This does not mean he may not use his own 
 name or his firm name at all. It does mean he may not use it 
 except in a way to distinguish it clearly from the name used by 
 the purchasers.^* An assignee for benefit of creditors may not, 
 
 '^Armington & Sims v. Palmer, 21 
 R. I. 109-1898; 42 Atl.- 308; 43 L. 
 R. A. 95. Complainants were part- 
 ners making engines under the name 
 "Armington & Sims." They sold out 
 at auction to Scott who, with other 
 respondents, formed the corporation 
 — Armington and Sims Company. 
 Sims protested in writing against 
 use of the name at the first directors' 
 meeting. Armiagton was not pres- 
 ent. Respondents claimed Arming- 
 ton & Sims were not in business after 
 corporation was formed, hence could 
 not suffer injury. Held, no defense, 
 as the company might resume at any 
 time. 
 
 Hudson V. Osborne, 39 L. J. N. S. 
 Ch. 79-1869. The "good-wiU" in 
 a title to a manufactory of certain 
 provisions had been sold by as- 
 signees in bankruptcy to the plain- 
 tiffs, who continued to carry on un- 
 der the title of "Osborne House" a 
 business such as that which the de- 
 fendant Osborne, the bankrupt, had 
 formerly conducted under the same 
 name. Osborne, having been dis- 
 charged in the bankrupt proceedings, 
 commenced anew, and used upon his 
 new place of business the words 
 "Osbeme House," where he carried 
 on the same kind of manufacturing 
 as before. He put up signs on his 
 buildings and issued circulars calcu- 
 lated to lead the public to believe 
 that he was conducting the old busi- 
 
 ness. The court said that he had no 
 right to use the words "Osborne 
 House" as holding out, in any man- 
 ner, that he was carrying on business 
 in continuation of or in succession 
 to the business originally conducted 
 by Osborne, the defendant. He might 
 have said that he had been twenty- 
 two years at the "Osborne House," 
 or that one of his partners had been 
 for many years managing there, but 
 he must not appropriate to himself 
 the very words which he selected to 
 designate the business. 
 
 Wilm^r V. Thrnias, 74 Md. 485-1891; 
 22 Atl. 403; 13 L.R. A. 380. Under an 
 assignment for the benefit of creditors 
 by an insolvent manufacturing com- 
 pany, and upon a sale by the assignee, 
 after advertising that the mills were 
 to be sold as a going concern, the 
 trade-mark and trade name (in this 
 case the "Druid Mills") were held to 
 pass to the purchaser. 
 
 Peck Bros. & Co. v. Peck Bros. 
 Co., 113 Fed. 291-1902; 61 C. C. 
 A. 251. A trade name passes by 
 sale by the receiver of an insol- 
 vent corporation which had oper- 
 ated under that name and buyers 
 could prevent others using it. Kidd 
 V. Johnson, 100 U. S. 617-1879; 25 
 L. ed. 769; Brown Chemical Co. v. 
 Meyer, 139 U. S. 540-1890; 35 L. 
 ed. 247; 11 Sup. Ct. 65; Richmond 
 Nervine Co. v. Richmond, 159 U. S. 
 293-1895; 40 L. ed. 155; 16 Sup. 
 
50 
 
 Good-Will 
 
 in disposing of assets, do anything which will prevent the assignor 
 from reaping all benefit which he lawfully naay, from his name 
 and reputation. Selling labels bearing the assignor's name has 
 been held to be an unauthorized act on the part of such an as- 
 signee.*^ 
 
 § 27. Rights of Retiring Stockholders and Others in Cor- 
 porate Names. — It has been held that one who has originated 
 a trade-mark or trade name and has joined a company formed to 
 push the brand of goods to which the name is applied, and has 
 allowed it to use the mark, will not be heard later to question 
 the title of the company to the name. This because the name 
 has become a part of the company's property.*® Greacen v. 
 
 Ct. 30; Sarrazin v. Irhy Cigar & 
 Tobacco Co., Ltd., 35 C. C. A. 496; 
 93 Fed. 624-1899; 46 L. R. A. 541n; 
 LePage Co. v. Ritssia Cement Co., 
 2 C. C. A. 555; 51 Fed. 941-1892; 
 17 L. R. A. 354; Bank of Tomah v. 
 Warren, 94 Wis. 151-1896; 68 N. 
 W. 549; A. D. Warren v. Warren 
 Thread Co., 134 Mass. 247-1883; see 
 Hazelton Boiler Co. v. HazeUon Tri- 
 pod Boiler Co., 142 111. 494^1892; 30 
 N. E. 339; Frazer v. Frazer Lubri- 
 cator Co., 121 111. 147-1886; 13 N. 
 E. 639; Celluloid Mfg. Co. v. Cel- 
 lonite Mfg. Co., 32 Fed. 94-1887; 
 R. W. Rogers Co. v. Wm. Rogers 
 Mfg. Co., 17 C. C. A. 576; 70 Fed. 
 1017-1895; Investor Pub. Co. v. Dob- 
 inson, 72 Fed. 603-1896; C. S. Hig- 
 gins V. Higgins Soap Co., 144 N. Y. 
 462-1895; 18 N. E. 714; Holmes, 
 Booth & Haydens v. Holmes, Booth 
 & Atwood Mfg. Co., 37 Conn. 278- 
 1870. 
 
 Chesterman v. Seeley, 18 Pa. Co. 
 Ct. 631-1896; 5 Pa. Dist. 757 (head- 
 note): "In the absence of proof 
 to the contrary, it is presumed that 
 a purchaser of all property of a 
 firm, including good-will, at a receiv- 
 er's sale, acquires as to the name of 
 the firm a right to use the firrn name 
 
 in such manner as to indicate that 
 the purchaser is the successor to the 
 dissolved firm. Such a use of the 
 firm name, although it includes or 
 consists in the name of an individual, 
 is the purchaser's exclusive right, and 
 neither the individual whose name is 
 so used, nor anyone else, can be al- 
 lowed to interfere with it." 
 
 '^ Matter of Adams, 24 Misc. (N. 
 Y.) 293-1898; 53 N. Y. Supp. 666. 
 The assignee for the benefit of cred- 
 itors of Robert Adams, a manufac- 
 turer, who had been doing business 
 under the name "R. & H. Adams," 
 first sold to one Robert F. Adams, 
 certain goods manufactured by the 
 assignor, and a large number of 
 labels bearing the name above men- 
 tioned. Held, that the assignee 
 should not be authorized to sell the 
 right to use "R. & H. Adams" as 
 a trade name or trade-mark, as this 
 would tend to confusion, and confUct 
 not only with the rights of the pur- 
 chaser of the labels, but also with 
 the right of the assignor, upon re- 
 suming business, to use his own name 
 and avail himself of his personal 
 reputation. 
 
 " Filkins v. Blackman, 13 Blatchf. 
 (Conn.) 440-1876; Solis Cigar Co, 
 
Soliciting Old Customehs 51 
 
 Bell *'' is authority for the doctrine that where a trade-mark or 
 trade name is owned by one who enters into partnership with an- 
 other for the manufacture of the article to which it appUes, the 
 title to the trade-mark does not pass to the partnership except 
 by express agreement; especially where, from the circumstances of 
 the case, it may be inferred that it was not the actual intention 
 of the parties that the trade-mark should be partnership property. 
 
 Not only is a retiring partner who sells his interest in the 
 business thereafter limited in his use of his own name, if that 
 be a part of the name of the firm, but a stockholder whose name 
 is a part of the name of the corporation may not, by the mere 
 act of selhng his stock, at once regain full possession and use of 
 his name which now is also the name of the corporation. His 
 rights to the name are limited, and he may use it only in so far 
 as his use will not interfere with the business of the corporation. 
 This is held, on the ground that he is presumed to have sold his 
 stock in good faith. He must, therefore, respect the right and 
 interest of the corporation in its name and good-will.^* See chap- 
 ter on "Corporate Names." 
 
 § 28. Soliciting Old Customers. — In retiring from a firm or 
 corporation the one so retiring does not agree that the custom- 
 ers whom he has brought to the concern by his personal effort 
 will continue to patronize the business he has left, even when 
 
 V. Pozo, 16 Colo. 388-1891; 26 Pac. Telephone Company and began to 
 
 556. The inventor of a trade-mark compete with the old company, with 
 
 or trade name having permitted its an office in the same building. Decem- 
 
 use by a company formed to carry ber, 1900, charter of the old company 
 
 on the business and in which he was had expired. McFell was one of the 
 
 largely interested, no objection can signers of a petition for a license for 
 
 be made to its title, to the mark or a new company under same name, 
 
 name, because of the lack of a formal which was granted May, 1901. Held, 
 
 transfer thereof to the company. "that when he sold out his stock in 
 
 " 115 Fed. 553-1902 (C. C. the company and his interest in its 
 
 N. J.). business to McWade for a valuable 
 
 « See also discussion in chapter on consideration, as he did, he could not 
 "Family Names." McFell Electric afterward resume the use even of his 
 <fc Telephone Co. v. McFell Electric own name in carrying on the same 
 Co., 110 111. App. 182-85-1903. Mc- business during the lifetime of the 
 Fell was an incorporator of the McFell corporation in such a way as to mis- 
 Electric Company in 1890. In April, lead the public." Citing Frazer v. 
 1900, he sold his interest. May, 1901, Frazer Lubricator Co., 121 111. 147- 
 he formed the McFell Electric and 1886; 13 N. E. 639. 
 
52 Good-Will 
 
 he agrees not to enter that hne of business for a certain period. 
 Such customers may or may not remain customers of the old 
 concern. There are cases which hold that a person voluntarily 
 selling his interest in a going concern may not thereafter deal 
 even with those of the former customers of the old concern who 
 come to him without solicitation by him.'**" In Leggott v. Barrett, 
 this view of the law was disapproved on appeal. In leaving the 
 old house, the partner or stockholder who is selling out, sells that 
 part of his interest in it which legitimately attaches to the name 
 and the location or stand of that business, as contrasted with those 
 interests which attach to him personally. The latter he resigns 
 to the old house only by special agreement. He sells only such 
 of the trade as the house can keep its grip on regardless of his 
 leaving, provided he does thereafter nothing to fraudulently de- 
 prive them of this business. 
 
 Where a partnership dissolution agreement provides that no 
 further business shall be done under the name of the firm, each 
 partner is considered to have reserved the full right to use his 
 own name.*' If one of the partners buys the good-will and old 
 stand, and continues the business, he has the right merely to 
 conduct the business as a going concern with the probability 
 in his favor that customers of the old company will continue to 
 deal with it. 
 
 Some jurisdictions allow to an ex-partner all rights of adver- 
 tising and soliciting of trade except to seek personally the trade 
 of the customers of the former concern. Other courts have said 
 that to refuse personal access to former customers is in a sense 
 restrafnt of trade, and all such restraint must arise out of personal 
 agreement, and not from construction of law.^" 
 
 ■^ Gined v. Cooper, L. R. [14 Ch. Gined v. Cooler <fc Co., 14 Ch. Div. 
 
 D. W.] 596-1880; Leggott v. Barrett, 596-1880; Leggott v. Barrett, 15 Ch. 
 
 L. R. [15 Ch. D. W.] 306. Div. 306-1880, see appeal; WoRer 
 
 " CoUrell V. Babcock Printing Press v. Mottram, 19 Ch. Div. 355-1881; 
 
 Mfg. Co., 54 Conn. 122; 6 Atl. 791- Lahovchere v. Dawson, L. R. 13 Eq! 
 
 1886. Cas. 322-1872; Pearson v. Pearson, 
 
 51 These cases deal with the ques- L. R. 27 Ch. Div. 145-1884; Hall's 
 
 tion: Cook v. CoUingridge, Jacob, 607- Appeal, 60 Pa. St. 458-1869;' Anjier 
 
 1825; Cndtwell v. Lye, 17 Ves. 335- v. Webber, 14 Allen (Mass.), 211- 
 
 1810; Johnson v. Helleley, 2 De G. 1867; Bergamini v. Bastion, 35 La. 
 
 J. & S. 446-1864; Chwton v. Doug- Ann. 60-1883; Hanna v. Andrews, 
 
 las, 28 L. J. N. S. (Ch.) 841-1859; 50 Iowa, 462-1879, 
 
Soliciting Old Customees 
 
 53 
 
 The rule to be drawn from the authorities seems to be that, 
 on dissolution of a partnership by reason of the termination of the 
 agreement of partnership, old customers may be solicited person- 
 ally and in any other legitimate way be a retiring partner, who is 
 not bound by special agreement not to compete with those running 
 the old concern; but in doing so he may not use any method which 
 will create confusion in the mind of the public as to which is his 
 own new business and which is the old business. If either partner 
 desires more he must see to it that it is provided for in a special 
 agreement/^ 
 
 This is not the rule in most jurisdictions, where there is a dis- 
 solution by voluntary act of the partners. 
 
 The extremes to which courts have gone in discussing the rule 
 are very well illustrated by Ginesi v. Cooper & Co.,^^ where 
 James, L. J., writes as follows: "The command 'Thou shalt not 
 steal!' is as much a portion of the law of courts of equity as it is 
 of courts of law. The proposition, as I understand it, which has 
 
 61 Cottrell V. Babcock Printing Press 
 Mfg. Co., 54 Conn. 122; 6 Atl. 791- 
 1886 (headnote) : "A partner who, 
 upon dissolution of partnership, pur- 
 chases the good-will secures merely the 
 right to conduct the old business at 
 the old stand, and in the absence in 
 the contract of dissolution or stipu- 
 lations to the contrary, the retir- 
 ing partner may lawfully establish a 
 similar business, even in the neighbor- 
 hood, and by advertisement, circular, 
 card, and personal solicitation, invite 
 the public generally, including the 
 customers of the old firm, to come 
 there and purchase of him." But he 
 must not so advertise and sohcit as 
 to lead to the belief that he is the suc- 
 cessor to the old firm, or that the pur- 
 chaser of the good-will is not carrying 
 on the business formerly conducted by 
 the old rfirm. 
 
 Hoxie V. Chaney, 143 Mass. 592- 
 1887; 10 N. E. 713. Hoxie sold his 
 trade-mark, good-will, etc., in" A. N. 
 Hoxie's Mineral Soap," and then 
 
 began to manufacture soap and 
 put up his soap in similar wrap- 
 pers bearingi the trade-mark he had 
 sold. Held, he had the right in ab- 
 sence of express stipulation in the 
 sale, to again enter the same business, 
 but he had no right to represent him- 
 self as successor of the former busi- 
 ness or as owner of the trade-marks, 
 and an injunction was granted, re- 
 straining him from interfering with 
 vendee's business by representing 
 himself as successor of the late firm. 
 Assets of a partnership include trade- 
 marks and good-will. The retiring 
 partner here was enjoined from "vir- 
 tual representation of himself as the 
 successor to the business of the old 
 firm," and was directed "not to inter- 
 fere or compete with the business" of 
 the old firm "by representing himself, 
 either directly or by imphcation, as 
 the successor of the late firm or as 
 doing the same business that was done 
 by them." 
 " 14 Ch. Div. 596-98-99-1880. 
 
54 Good-Will 
 
 been gravely argued before me is this, that a trader who has sold 
 for value his business and good-will to another man is entitled, 
 notwithstanding, to solicit his old customers to deal with him 
 just as if no sale had ever taken place. In my opinion, the de- 
 fendants having sold the business, the attempt to take it away 
 from the plaintiff in the way I have mentioned, is neither a lawful 
 nor an honest attempt; and I consider that I should not be per- 
 forming my duty in an adequate and proper manner if I hesitated 
 for a moment to state that that was my opinion" (id. p. 598). 
 "The present injunction asked from me is only to restrain the 
 defendants from soliciting the old customers and from taking 
 away the plaintiff's business, which, of course, must be right 
 anyhow; but if I had been asked, I certainly should have pre- 
 vented their dealing with the old customers. Can it be tolerated 
 that men who have sold their business, including the benefit of 
 their connection — ^ here they have sold their trade, business, and 
 'good-will;' — I will come in a moment to what 'good-will' 
 means — can, immediately after, take away the benefit of that 
 connection so sold. I gave an illustration during the course 
 of the argument, which I will repeat. Suppose a solicitor sells 
 his business, say at five years' purchase, which is by no means 
 uncommon, could he, having offices on the first floor, iname- 
 diately afterward go on to the ground floor, paint up his name 
 and receive his clients as usual because they choose to come to 
 him, even if he did not actually ask them to come and transact 
 their business with him? The answer would be that he was 
 stealing that which he had sold, and any conduct more outrageous 
 or more opposed to morality or law could not well be imagined"^* 
 (at p. 599). 
 
 ^^Ginesi v. Cooper & Co., 14 Ch. business, and that they had trans- 
 
 Div. 596-1880. Prior to 1887, de- ferred it to the plaintiiif. In 1879, 
 
 fondants carried on business as stone defendants recommenced business as 
 
 merchants under the style of "Cooper stone merchants, as "Samuel Cooper 
 
 & Hampson." They are now called & Company," and solicited business 
 
 "Samuel Cooper & Company." The from the customers of the old firm, 
 
 plaintiff is a stone merchant of Leeds, They distributed business cards and 
 
 who, in 1877, purchased the business sent their former manager around 
 
 of Cooper & Hampson. The good-will for orders. This is a motion for an 
 
 was included. The day the business injunction restraining the defendants 
 
 changed hands. Cooper & Hampson from soliciting orders from their 
 
 sent circulars to their customers an- former customers, 
 nouncing that they had retired from 
 
Soliciting Old Customees 55 
 
 Labouchere v. Dawson,^* holds that one who sells the good-will 
 of a business is not precluded from engaging in a competing busi- 
 ness, or from advertising his business, but he cannot directly 
 solicit trade from the customers of the old business. In Pear- 
 son V. Pearson,^^ James Pearson, the defendant, had assigned all 
 his interest in various property derived under his father's will, 
 including the business of an earthenware manufacturer, carried 
 on by his father under the name James Pearson, to plaintiff, with 
 an express provision, however, that defendant should be at 
 Uberty to carry on a similar business under his own name, while 
 plaintiff was to discontinue using the name James Pearson. Plain- 
 tiff sought to enjoin the defendant from soliciting the old cus- 
 tomers of the business in which defendant had assigned his in- 
 terest. Held, that defendant had this right and would have it 
 even in the absence of the express provision above mentioned. 
 
 This case was, however, disapproved by the House of Lords in 
 Trego v. Hunt,^^ and that tribunal adopted the rules of Labouchere 
 V. Dawson.^^ The long existing confusion in the state of New 
 York has been terminated since the publication of the first edition 
 of this book by the case of Von Bremen v. MacMonnies,^^^ in 
 which the doctrine of Trego v. Hunt is adopted as the law of that 
 state. 
 
 Trego v. Hunt has been followed in Massachusetts, New Jersey, 
 Michigan, Rhode Island, Illinois and Pennsylvania. 
 
 The Illinois court states, that the rule as to sohciting old cus- 
 tomers is unsettled. It cites Trego v. Hunt,^^ as authority for 
 the English rule that a vendor of good-will may not canvass cus- 
 tomers and solicit them not to deal with his vendee, and urge 
 them to deal with him, and adopts this rule, citing various au- 
 thorities." "We do not think that the defendant ought to be 
 allowed, after selling and warranting a good-will to the com- 
 
 '< L. R. 13 Eq. 322-1872. La- s"" Labouchere v. Dawson, L. R. 13 
 
 bouchere v. Dawson was overruled by Eq. 322. 1872. 
 
 Pearson v. Pearson, L. R. 27 Ch. Div. "" 200 N. Y. 41-1910. 
 
 145-1884, which in turn was over- This case contains a very free dis- 
 
 ruled by Trego v. Hunt (1896), App. cussion of the right and obKgations of 
 
 Cas. 7, which case followed Labou- the vendor of good-will. 
 
 chere V. Dawson. ^'' Myers v. Kalamazoo Buggy Co., 
 
 " L. R. 27 Ch. Div. 145-1884. 54 Mich. 215; 20 N. W. 545; 52 Am. 
 
 " (1896) App. Cas. 7. Rep. 811; Coal Co. v. Spangkr, 54 
 
 N. J. Eq. 354; 34 Atl. 932. 
 
56 
 
 Good-Will 
 
 plainants, to purposely endeavor to prevent their receiving the 
 benefit of it, or to attempt to disturb them in its enjoyment. The 
 locality chosen by her was not near enough (600 feet) to have 
 that effect. But to canvass old customers of the firm and en- 
 deavor to dissuade them from continuing to deal with complain- 
 ants was a direct interference with the property which defendant 
 sold, with the purpose of destrojang it and preventing com- 
 plainants having the benefit and advantage of it. The attempt 
 to appropriate the telephone number * * * was of the same 
 character." ^ 
 
 § 29. Sale of Name or Business by Originator of an Article. 
 — One who has originated an article, on selHng out the good-will 
 of his business, may still advertise that he originated the article 
 and continues to sell it, in the absence of a stipulation to the con- 
 trary. He may also state honestly where he formerly lived, the 
 experience he has had, the skill he possesses/^ 
 
 Mfien/i V. Reimer, 200 111. 386- 
 1902; 65 N. E. 720. 
 
 ^^ Fish Bros. Wagon Co. v. Fish, 
 82 Wis. 546-67-1892; 16 L. R. A. 
 453; 52 N. W. 595. "The defend- 
 ants have the lawful right to honestly 
 and truthfully state where they for- 
 merly resided, the experience they 
 ha^e respectively had, and the skill 
 they respectively possess in the manu- 
 facture of wagons and other vehicles; 
 but they have no right to represent 
 their present business as the same 
 which they formerly conducted at 
 Racine. The circular addressed 'To 
 Our Old Customers arid the Imple- 
 ment Trade,' issued by Fish Brothers 
 and Company, and mentioned in the 
 complairit and the foregoing state- 
 ment, is, to a limited extent, objec- 
 tionable on this ground; as for in- 
 stance, where it speaks of their 
 'change of location' and ' firm name,' 
 'Fish Brothers,' 'formerly of Ra- 
 cine, Wisconsin,' and for the 'first 
 time since 1883 we shall be able to 
 furnish our patrons with the genuine 
 
 Fish Brothers and Company wagon, 
 fully up to our old standard of that 
 date.' But the defendant may truth- 
 fully and in good faith publish 
 the good quahties and material of 
 the wagons and vehicles manu- 
 factured by them, and their su- 
 perior facilities for the manufacture 
 of the same at South Superior. In 
 other words, their advertisements and 
 marks must truthfully and in good 
 faith refer to their own manufac- 
 tures, trade, and business, and not 
 to those of the plaintiff." 
 
 White V. Trowbridge, 216 Pa. St. 
 11-1906; 64 Atl. 862. Defendant 
 made chocolate chips, and claimed 
 to be the originator of that par- 
 ticular kind of confectionery, to 
 which he appKed the name "Trow- 
 bridge's Chocolate Chips." He ad- 
 mitted the plaintiffs to a part- 
 nership which, after two years, 
 was dissolved, the defendant selling , 
 and assigning to plaintiffs all his 
 rights in, or connected with, the 
 business including the good-will! De- 
 
Effect of Locality on Transfers of a Business' 57 
 
 § 30. Effect of Locality on Transfers of a Business. — It is 
 
 fraud for a partner who sells to an associate his share of the 
 good-will of a partnership to send notices of his opening a new 
 oflSce in the same locality as the old office, even after a lapse of 
 several years after the sale.^° 
 
 It is not unfair for the vendor of a newspaper to set up a new 
 plant and publish another newspaper in the same locaUty served 
 by his former paper .^^ 
 
 § 31. Partners' Rights in the Partnership Name, on Dissolu- 
 tion. — A retiring partner who leaves his firm by mutual consent 
 is usually free to use his name after leaving a partnership, in the 
 absence of express stipulation to the contrary; but should he use it 
 in competition with the old concern, he must not in any way hold 
 himself out as connected with the old business. That is the 
 only limitation on his right to his own name, unless there be 
 specific contract provisions as to it in the dissolution articles.®^ 
 
 fendant within a few months began m 
 the same city the manufacture of the 
 same sort of confectionery, marking 
 the packages "Chocolate Chips," and 
 placing thereon his name, W. S. 
 Trowbridge. He solicited trade gen- 
 erally and described himself as the 
 "originator of the Chocolate Chips." 
 His goods and packages as to mark- 
 ings, labels, and dress were sufficiently 
 differentiated from plaintiffs'. Held, 
 that defendant was within his rights; 
 that if the intention of the parties 
 had been that the defendant should 
 not engage in a competing business, 
 that should have been expressly stip- 
 ulated. 
 
 'oPoss V. Roby, 195 Mass. 292; 
 81 N. E. 199-1907. Defendant and 
 plaintiff had formerly practiced den- 
 tistry as partners in Boston, many of 
 their patients coming from places out- 
 side Boston. The partnership was 
 dissolved and defendant conveyed to 
 Foss his interest in the business. 
 After three years, he began to practice 
 again in Boston, seiit circulars to pa- 
 
 tients of the old firm soliciting their 
 patronage, referring to his connection 
 with the old firm, and thus attracted 
 many of these former patients. Held, 
 that this was inconsistent with the 
 covenant that would be implied from 
 the transfer of his interest in the good- 
 will that he would not practice in the 
 same locality under such conditions 
 as to impair the value of the good- 
 will transferred by him. Defendant 
 enjoined from practicing in Boston; 
 damages of plaintiff to be assessed. 
 
 "^Rapp V. Over, 3 Brewst. (Pa.) 
 133-1869. Defendant, owning a news- 
 paper called "The Bedford Inquirer," 
 sold it, with all the stock and "good- 
 will" to M., and afterward began to 
 publish another newspaper in the 
 same place under the name of the 
 "Bedford Patriot." Held, that the 
 defendant, in the absence of any 
 express agreement to the contrary, 
 was at liberty to publish such a com- 
 peting newspaper. 
 
 »2 Thynne v. Shove, 45 Ch. Div. 
 577-80-1890. Thynne sold to Shove 
 
58 
 
 Good-Will 
 
 If, upon the dissolution of a firm, the partners divided among 
 themselves the tangible assets, nothing being done or said re- 
 garding the use of the firm name, the name is an undivided asset 
 of the partnership, which, upon dissolution, belongs to both part- 
 ners in common, so that one may not enjoin the use of it by the 
 other. If, however, the whole business and good-will is sold upon 
 the dissolution, the trade name would also pass to the purchaser .^^ 
 
 A sale by one partner of his entire interest in a dentistry part- 
 nership has been held to warrant a court in holding that there 
 was an implied contract that the vendor would not again practice 
 in the locality under such conditions as would impair the value 
 of the good-will sold by him. To begin practice in the same town 
 and send notices to former patients has been held to be an impair- 
 ment of the value of the good-will.^* A former partner will not 
 be allowed to make a colorable use of the name of a person who 
 was once associated with him in business, even by nominally going 
 into a new partnership with someone of the same name. The new 
 association must be a bona fide one, or the court will regard it 
 as an unfair attempt to obtain the custom of the former concern.^^ 
 
 A partner who hag retired from a firm which bore his name. 
 
 "all the beneficial interest and good- 
 will of the said Arthur Thynne in 
 the said trade or business of a baker 
 and pastry cook, so carried on by 
 him as aforesaid." Plaintiff alleged 
 that defendant issued cards in plain- 
 tiff's name intimating to the public 
 that plaintiff was still carrying on the 
 business. Held, by Sterling, J., that 
 defendant "has the right to use the 
 name of the assignor for the purpose 
 of showing that the business is the 
 business formerly carried on by the 
 assignor; and he has the full right to 
 use it, subject to this: that he must 
 not exercise that right so as to ex- 
 pose the assignor to any liabihty by 
 holding him out to be the real owner 
 of the business. That is the only 
 hmit of the defendant's right to use 
 the plaintiff's name." 
 
 "'Banks v. Gibson, 34 Beav. 566- 
 1865. 
 
 " Foss V. Roby, 195 Mass. 292; 81 
 N. E. 199-1907; see note 59, supra, 
 for statement of this case. 
 
 «6 Hildreth v. McCaul, 70 App. Div. 
 (N. Y.) 162-1902 (1st. Dept.); 74 
 N. Y. Supp. 1072. Hildreth & Se- 
 gelken had for many years been 
 dealers in honey, beeswax, etc., at 
 120 and 122 West Broadway. In 
 May, 1901, they moved to another lo- 
 cation, whereupon defendant, who 
 had many years before been for a 
 while a member of the firm, moved 
 into the old place and opened busi- 
 ness under the name "Hildreth- 
 McCaul Company" with "Joseph M. 
 McCaul, Prop." in small letters below. 
 He claimed to have formed a part- 
 nership with one Hildreth, a former 
 member of plaintiff's firm, but there 
 was evidence tending strongly to show 
 that there was no bona fide partner- 
 ship. It also appeared that custom- 
 
Effect of Locality on Transfers of a Business 59 
 
 or a member of a corporation which used his name who sells 
 his interest in the corporation totally or nearly so, may not pre- 
 vent the remaining owners of the firm or corporation from stating 
 that they are continuing the old business.^^ 
 
 Where Kottler did business as "H. Kottler & Co." and then 
 took in Lepow and continued to use the same name for the new 
 partnership, it was held that after three or four years had passed 
 and the firm was dissolved, Lepow could not, in the absence of 
 special provision prevent Kottler from still using the name H. 
 Kottler & Co., although it was intimated that Lepow would be 
 enjoined from using the sign "L. Lepow, formerly (in small 
 letters) H. Kottler & Co." 
 
 It would seem that both these rulings might result in confusion 
 and the better decision in cases of this sort would be to limit 
 both parties to such use of the firm name as could not cause con- 
 fusion as to which partner was carrying on the old business.^^ 
 
 Vice-Chancellor Plimier said that "a person not a lawyer 
 
 ers had been deceived by circulars 
 issued by defendant into supposing 
 him to be plaintiff's successor. Held, 
 that the defendant was not entitled 
 to use the name Hildreth as he had 
 been doing, and that he should be en- 
 joined from using it at all until the 
 further cfrder of the court. 
 
 8» Smith V. David H. Brand & Co., 
 67 N. J. Eq. 529-1904; 58 Atl. 1029. 
 Complainant, William Smith, had for 
 many years been in partnership with 
 David H. Brand under the firm name 
 "Brand & Smith." In 1904, the part- 
 nership was dissolved and the defend- 
 ant corporation, "David H. Brand & 
 Co.," was organized by the two part- 
 ners and one John H. Brand., The 
 two partners conveyed to this cor- 
 poration the assets and "good-will" 
 of the firm. Complainant very soon 
 sold his interest in the corporation to 
 the corporation, retaining only one 
 share, and, within a few months, 
 formed with his brother, a partner- 
 ship under the name "WUliam Smith 
 
 & Brother," to carry on the same busi- 
 ness as the defendant. .He then 
 sought to enjoin defendant from 
 advertising its business under the 
 name of "Brand & Smith" or as 
 "Successors of Brand & Smith," 
 claiming that this tended to deceive 
 the public. Held, that the defendant 
 had not exceeded its rights. 
 
 Merry v. Hoopes, 111 N. Y. 415- 
 1888; 18 N. E. 714 (headnote): 
 "Where upon the dissolution of a 
 firm, one of the copartners pur- 
 chases and -succeeds to the busi- 
 ness, the exclusive right to use 
 trade-marks belonging to the firm 
 passes to the purchaser, although 
 no express mention is made of them 
 in the deed of assignment." 
 
 '■I Lepow V. Kottler, 115 App. Div. 
 (N. Y.) 231-1906; 100 N. Y. Supp. 
 779. Defendant Kottler, who had 
 previously been doing business un- 
 der the name of H. Kottler & Co., 
 formed a partnership with plaintiff 
 under the firm name of H. Kottler 
 
60 
 
 Good-Will 
 
 would not imagine that when the good-will and trade of a retail 
 shop were sold, the vendor might, the next day, set up a shop 
 within a few doors and draw off all the customers. The good-will 
 of such a shop, in good faith and honest understanding, must 
 mean all the benefit of the trade and not merely a benefit of 
 which the vendor might the next day, deprive the vendee." ** 
 
 § 32. Dissolution by Death of a Partner. — The former rule 
 was that, on the death of a partner, the right to use a firm name 
 and the title to it pass to the surviving partners.®' This rule 
 was doubted in Crawshay v. Collins,'"' and is not now regarded as 
 law. The name is now held an asset of the company in which 
 the estate of a deceased partner may participate.'^' 
 
 In a purchase by a surviving partner of the rights of his de- 
 ceased partner from the estate of that partner, the family and 
 descendants of the deceased may lose the right to use the family 
 name in any way detrimental to the rights of the surviving partner 
 under the terms of the sale.'^ 
 
 Where, on the death of a partner, all assets are sold at auction, 
 a purchaser of the good-will obtains an unrestricted right to use 
 
 & Co. It was agreed that, upon 
 dissolution, the party bidding highest 
 should acquire the share of the other, 
 a reference to the good-will being 
 stricken out of the draft. Three or 
 four years after, the firm was dis- 
 solved; one of the two adjoining 
 stores was taken by each partner, but 
 no provision was made as to the use 
 of the firm name. Plaintiff then 
 sought to restrain the defendant from 
 using the old firm name, "H. Kot- 
 tler & Co." Held, that the defendant 
 was entitled to use the name. It is 
 intimated, also, that plaintiff was not 
 entitled to use the sign "N. Lepow, 
 formerly H. Kottler & Co.," the word 
 "formerly" being in small letters. 
 
 Stein V. National Life Assn., 105 
 Ga. 821-1898; 32 S. E. 615; 46 
 L. R. A. 150; Moore v. Rawson, 185 
 Mass. 264^1904. Where a manufac- 
 turer of shoes, doing business under 
 the name "D. G. Rawson & Co." en- 
 
 tered into a partnership agreement 
 with others under which the same 
 business was to be carried on by the 
 new firm at the same place and under 
 the same name, the trade name passed 
 to the firm without being specified. 
 
 '"Harrison v. Gardner, 2 Mad. 
 198-219-1817. This is the doctrine 
 of Trego v. Hunt, 12 T. L. R. 80- 
 1895. See note 34, § 59, infra. 
 
 «' Lewis V. Langdon, 7 Simons 421- 
 1835. 
 
 '» 15 Ves. 218-1808. 
 
 " Wedderburn v. Wedderbum, 22 
 Beav. 84^1855; Smith v. Everett, 27 
 Beav. 446-1859; Hall v. Barrows, 4 
 De G. J. & S. 150-1863; Dougherty 
 V. Van Nostrand, 1 Hoff. Ch. (N. Y.) 
 68-1839; Williams v. Wilson, 4 Sandf. 
 Ch. (N. Y.) 379-1846; Howe v. Sear- 
 ing, 6 Bosw. (N. Y.) 354-1860; Holden, 
 Admr., v. M'Makin, 1 Pars. Sel. Cas. 
 (Pa.) 270-1847. 
 
 "Hall V. Barrows, 4 De G. J. & 
 
Dissolution by Death of a Partner 
 
 61 
 
 the firm name, because such name is inseparable from the good- 
 will/^ In the case of a purchase of the partnership business by- 
 one partner, it is held that the exclusive right to the use of the 
 firm name passes to the purchaser, although no express mention 
 is made of such name in the agreement of dissolution. The pur- 
 chaser acquires the good-will of the firm, and this includes, as 
 against the retiring partners, the exclusive right to use the name 
 under which the firm did business.''* 
 
 Where the member of the firm dies and his will and the partner- 
 ship agreement contemplate the continuation of the business 
 
 S. 150-1863. Partnership assets in- 
 clude the good-will and the right to 
 use the trade-mark, and, on the pur- 
 chase of all the partnership assets 
 by a surviving partner, from the es- 
 tate of a deceased partner at a valu- 
 ation, the value of the good-will and 
 trade-mark should be included. 
 
 ■"Slater v. Slater, 175 N. Y. 143- 
 1903; 67 N. E. 224; 61 L. R. A. 796; 
 HaUett v. Cumston, 110 Mass. 29- 
 1872. Hallett and Cumston were 
 partners up to 1865, when Hallett 
 sold out to Cumston, giving . him 
 right "to use the name of said Hal- 
 lett jointly with his own name, in 
 conducting his said business, but 
 that such use of his name should 
 give the plaintiff no rights or in- 
 terest whatever therein, other than 
 those named" (id. p. 30). Hallett 
 was to continue three years as a 
 salesman and to take one-third of 
 the net profit. In 1870, Cumston 
 died; defendant, the son of Cum- 
 ston, was then notified, as executor 
 of Cumston's will, that plaintiff ter- 
 minated his agreement with Cumston 
 and forbade the use of his (plain- 
 tiff's) name. Next day, Cumston's 
 son wrote Hallett that he had com- 
 pleted arrangements with another 
 man called Hallett to join him in con- 
 tinuing his father's business. Held, 
 by agreement with Cumston, senior. 
 
 Hallett conveyed all interest in the 
 business and cannot restrain use of 
 trade-mark "Hallett and Cumston." 
 The agreement terminated at Cum- 
 ston's death. Cumston's executors 
 had no right to use Hallett's name 
 without his consent. They had right 
 to use any other person's name. In- 
 junction denied because there was no 
 allegation that defendant used name 
 Hallett with intent to represent it to 
 be the name of the plaintiff and 
 thereby defraud him. 
 
 '< Merry v. Hoopes, 111 N. Y. 415- 
 1888; 18 N. E. 714; Memndez v. 
 Holt, 128 U. S. 514r-1888; 32 L. ed. 
 526; 9 Sup. Ct. 143; Listman Mill 
 Co. V. Wm. Listman Milling Co., 88 
 Wis. 334-1894; 60 N. W. 261; Slater 
 V. Shier, 175 N. Y. 143-1903; 67 N. 
 E. 224; 61 L. R. A. 796; A. G. Fish 
 V. Fish, Clarh & Flagg, 77 App. Div. 
 (N. Y.) 83-1902; 79 N. Y. Supp. 37. 
 
 Steinfeld v. National Shirt Waist 
 Co., 99 App. Div. (N. Y.) 286-1904; 
 90 N. Y. Supp. 964. Plaintiffs were 
 successors to a firm doing business 
 under the name "National Shirt 
 Waist Co.," and were doing business 
 under that name. One Broads had 
 sold all his interest in the earlier 
 firm to a party who, in time, as- 
 signed to plaintiffs; no express men- 
 tion being made, however, of the 
 firm or trade name. Defendant com- 
 
62 
 
 Good-Will 
 
 under the former name, the firm name cannot be considered as 
 an asset of the estate, subject to sale by the executors of the 
 deceased, but is a part of the property of the firm and often the 
 most important part, and not to be changed or disposed of ex- 
 cept as firm property." 
 
 § 33. Transfers by Descent and Rights of Descendants. — 
 The good-will and trade names of a business which pass from 
 its owner to some of his descendants, by devolution of law, will 
 be protected in the hands of the descendants if they continue the 
 business. They may use the ancestor's name as a trade name, 
 
 pany was then organized under the 
 same name as that used in trade by 
 plaintiffs. Broads had two, and his 
 brother ninety-seven of the hundred 
 shares of the company. It was al- 
 leged that defendant had taken the 
 name for the purpose of misleading 
 the public, that confusion had in fact 
 resulted, with injury to plaintiff's 
 business. Held, that a preliminary 
 injunction should be granted. Where, 
 upon the dissolution of a firm, one 
 partner purchases the business, he is 
 exclusively entitled to the firm name, 
 even though not dishonest in the 
 agreement. 
 
 ''' Sohier v. Johnson, 111 Mass. 
 238-1872. Defendant was a member 
 of the firm of E. A. & W. Winchester 
 at the time of the death of the senior 
 member, WUham F. Winchester. It 
 was held, in view of the provision of 
 the articles of partnership and of the 
 will of Wilham P. Winchester, which 
 contemplated the continuance of a 
 firm under the old name, that the firm 
 name and good-will of the business 
 could not be considered an asset of the 
 estate, subject to sale by the executors 
 and trustees, especially after defend- 
 ant in partnership with others, had for 
 many years carried on the business 
 under the old firm name. 
 
 Slater v. Slater, 175 N. Y. 143-1903; 
 67N.E.224; 61L.R.A.796. A firm 
 
 name is inseparable from the good-will, 
 and the unrestricted right to use it 
 passes to one who, by the dissolution 
 of the firm, (as by the death of one 
 of the partners,) purchases the assets 
 of the firm, including the good-will, 
 whether such purchaser be a surviv- 
 ing partner or a stranger. In this 
 case, in an action for an accounting 
 between the executor of the deceased 
 partner of J. & J. Slater against the 
 surviving partner, the entire assets 
 of the firm had been directed to be 
 sold at auction. The question thus 
 arose as to what right to the firm 
 name a purchaser (other than the 
 surviving partner) would acquire. 
 Fisk V. Fisk, Clark & Flagg, 77 App. 
 Div. (N. Y.) 83-1902; 79 N. Y. 
 Supp. 37 (1st Dept.). Plaintiffs were 
 administrators of the last surviving 
 member of the firm of Fisk, Clark 
 & Flagg. Held, that they were en- 
 titled to an injunction against the 
 carrying on of a business similar to 
 that firm's by defendants under a 
 corporate name the same as that of 
 the firm, since the good-wiU of the 
 business (though not the name itself) 
 could be disposed of by the repre- 
 sentatives of the last surviving mem- 
 ber, and the purchaser of the good- 
 will would be entitled to hold himself 
 out as the successor to the business of 
 the extinct firm. 
 
Tkansfers by Descent and Rights of Descendants 63 
 
 because in so doing they will be regarded merely as carrying on 
 the business carried on by him. The point to be considered is 
 whether their use of the name can be reasonably regarded as 
 indicating anything except that they are carrying on the business 
 of the ancestor, or that the goods marked with the name are 
 made at the old factory.''^ 
 
 As between one who bears a name as his family name, and one 
 who has bought a right to use this family name as a part of the 
 good-will of a business, if the former person competes with the 
 latter he must accompany his use of his name with such explana- 
 tions as will prevent fraud, and the explanations "must accom- 
 
 " Leather Cloth Co. v. American 
 Leather Cloth Co., 4 De G. J. & S. 
 137-1863; affd., 11 H. L. Cas. 523- 
 1865. Emerson v. Badger, 101 Mass. 
 82-6-1869. Judge Gray: "The orig- 
 inal inventor of the razor straps 
 mentioned in the bill, and the owner 
 and designer of the label put upon 
 them by way of trade-mark, was 
 Charles Emerson, St., who employed 
 and instructed in his business five of 
 his nephews, of whom Benjamin 
 Badger, the father of this defendant, 
 was the eldest, and the plaintiff was 
 the third. Said Benjamin, in his 
 uncle's lifetime, left his employment, 
 and continued, with his consent and 
 permission, but on his own account, 
 to manufacture and sell such straps 
 and to use the same label thereon, 
 and was succeeded in his business by 
 his son, the defendant. The uncle 
 died without issue, his nephews were 
 among his heirs at law, and his busi- 
 ness and trade-mark were not dis- 
 posed of by himself by will or other- 
 wise, nor by his administrator after 
 his decease. The plaintiff, though 
 bearing the same name, is not the 
 original Charles Emerson, and has no 
 greater right than the defendant to 
 hold himself out as such, or to use 
 the label of his uncle. The label used 
 
 by the defendant does not represent 
 his razor straps to be made by the 
 plaintiff or by any person of the 
 name of Charles Emerson, but states 
 with exact truth the relation of the 
 defendant to the original inventor 
 and owner. The plaintiff, therefore, 
 fails to prove either any infringement 
 of his own rights or any wrongful 
 act of the defendant." 
 
 England v. Downs, 6 Beav. 269-76- 
 1842. A widow carried on the business 
 of victualler on premises leased from 
 year to year. Before marrying again 
 she assigned all her household goods, 
 stock in trade, brewing utensils, and 
 all her effects — thus excluding her 
 husband — and then married. " Good 
 will in a case of this sort," Lord 
 Langdale said, "is the chance or prob- 
 ability that custom will be had at a 
 certain place of business in conse- 
 quence of the way in which that 
 business has been previously carried 
 on. * * * I must own my opinion 
 is, that the good-will belonged to the 
 wife, and was a part of the settled 
 property, as annexed and incident 
 to the things which were comprised 
 in the deed, and that whether the 
 particular interest she had in the 
 leasehold premises was distinctly com- 
 prised in the deed or not," 
 
64 
 
 Good-Will 
 
 pany the use, so as to give the antidote with the bane." " Chil- 
 dren of a decedent may form a corporation and use his name in the 
 corporate name, and be protected in so doing against former em- 
 ployees of decedent and others who attempt to use his name in a 
 similar business.'* 
 
 § 34. Transfer of Secret Formulae. — As to the law relating 
 to transfers of secret formulae and processes, see the chapters 
 on "Trade Secrets" and "Interference with Contract." 
 
 One who owns such a secret may transfer it under contract 
 providing that it be kept a secret by the person buying it, and 
 may enjoin a breach of such contract. He may sell the same 
 secret to various persons, allowing to each the right to sell the 
 article generally or in a prescribed territory.'^ See chapter on 
 "Trade Secrets." 
 
 § 35. Good- Will, Valuation of. — The question as to the 
 method of valuing good-will is one which has been unsettled in 
 
 " Herring-Hall-Marvin Safe Co. v. having a recipe for a liniment, appar- 
 
 Hall's Safe Co., 208 U. S. 554r-59- 
 1908. 
 
 "<S. Howes Co. V. Howes Grain 
 Cleaner Co., 24 Misc. (N. Y.) 83- 
 1898; 52 N. Y. Supp. 468. Upon 
 the death of Simeon Howes, well 
 known as a manufacturer of grain 
 cleaners and similar machinery, his 
 children and legatees formed a corpo- 
 ration under the name of the "S. 
 Howes^ Company" to continue de- 
 cedent's business; this corporation 
 acquired from the executors the as- 
 sets, trade-marks and good-will of de- 
 cedent's business, without any ex- 
 press mention of the right to use the 
 name. Former employees of the de- 
 cedent then organized "The Howes 
 Grain Cleaner Company" to engage 
 in the same business. Confusion and 
 mistakes on the part of customers 
 were shown to have resulted. Held, 
 that defendant should be enjoined 
 from using a corporate name of 
 which "Howes" was a part. 
 
 Marshall v. Pinkham, 52 Wis. 572- 
 1881 ; 9 N. W. 615. Samuel Marshall, 
 
 ently not originated by him or pat- 
 ented, allowed various members of his 
 f amUy to make and sell it, a label being 
 attached containing the words "Old 
 Dr. S. Marshall's Celebrated Lini- 
 ment" and other words, and the 
 figure of a horse's head. After his 
 death his widow continued for a 
 time to make and sell the liniment, and 
 then sold all her material to the plain- 
 tiff, one of Samuel Marshall's sons. 
 Held, that plaintiff had no exclusive 
 right to make and sell the liniment, or 
 use the old label and the trade name, 
 but that the other children had 
 similar rights. 
 
 " Park & Co. v. Hartman, 187 Mass. 
 144-1905; 72 N. E. 839; 153 Fed. 24; 
 Fowl V. Park, 131 U. S. 88-1889; 9 S. 
 Ct. 658; 33 L. ed. 67. In Chadvnck v. 
 Covell, 151 Mass. 190-1890; 23 N. E. 
 1068; 6 L. R. A. 839; the adminis- 
 tratrix of Dr. Spencer, who had made 
 certain medicines according to secret 
 formulae and under distinctive names, 
 made what is assumed to have been a 
 valid transfer to the plaintiff of the 
 
Good-Will, Valuation of 
 
 65 
 
 this country for many years. Gradually, however, a rule has taken 
 form that value of good-will may be ascertained by multiplying 
 the annual net profits of the business with which the good-will 
 is connected by a number of years, increasing in accordance with 
 the length of time in which the name has been used, and the char- 
 acter and prominence of the reputation attaching to it. ' ' Most of 
 the American cases adopted a period running from two to six years, 
 the number being dependent upon the nature of the business, the 
 length of time during which it has been established at a particular 
 place, and the extent to which it is known to the public.^" 
 
 Six years have been considered a proper multiple as to good-will 
 in a chain of candy stores.*' 
 
 Ten years have been considered to be a proper multiple to 
 establish the good-will of Tiffany & Co., New York City.*^ 
 
 formulae for these medicines with the 
 trade-marks and labels. Afterward 
 an administrator de bonis non assumed 
 to convey to defendant the recipes and 
 trade-marks for these medicines, ex- 
 cept such as might have been alfeady 
 granted. Defendant then made and 
 sold the medicines, with labels simi- 
 lar to those used by Dr. Spencer. 
 Held, that he was entitled to do so; 
 that both plaintiff and defendant 
 could use the formulae, as well as the 
 trade names, which were not identi- 
 fied with any particular place of 
 manufacture, so that defendant's use 
 of them did not tend to deceive the 
 public any more than plaintiff's. 
 
 ™ Matter of Moore, 97 Misc. (N. Y.) 
 240; von Au v. Magenheimer, 126 App. 
 Div. (N. Y.) 257. 
 
 "It was a question of fact in view of 
 the surrounding circumstances, how 
 
 many years purchase of the average 
 annual profits should be taken as the 
 value of the good-will." 
 
 A two years' purchase was. adopted 
 in the Matter of Bosenherg, N. Y. Law 
 Journal, May 9, 1908; in Matter of 
 Gumbinner, 92 Misc. (N. Y.) 104; in 
 Matter of Silkman, 121 App. Div. 
 (N. Y.) 202. 
 
 A three years' purchase was adopted 
 in Matter of Keahon, 60 Misc. (N. Y.) 
 508; in Matter of Wekh, Mills Reports, 
 Volume 9, page 411, and in Matter of 
 Ball, 161 App. Div. (N. Y.) 79. 
 
 A ten years' purchase was adopted 
 in Matter of Weatherbee, New York 
 Law Journal, November 5, 1913, and 
 Matter of Moore, 79 Misc. (N. Y.) 240. 
 
 8' Von Au V. Magenheimer, 126 
 App. Div. (N. Y.) 257. 
 
 82 Matter of Moore, 97 Misc. (N. Y.) 
 240. 
 
CHAPTER IV 
 
 Secondary Meaning 
 
 Section 36. General discussion. 
 
 \ 37. Statements of the general rule. 
 
 38. Geographic limits in which secondary meaning is protected. 
 
 39. Secondary meaning of trade phrases. 
 
 40. Names of places. 
 
 41. Existence of secondary meaning is a question of fact. 
 
 42. Association of names with goods the identity of the maker of 
 
 which is vmknown. 
 
 43. Ten-year trade-mark law. 
 
 § 36. General Discussion. — All words of the language are 
 public property. Like highways, they are part of the public 
 domain. In fact, they are public property to a greater extent 
 than anything else unless it be air and sunlight. Nevertheless, 
 many words are protected as trade-marks, which is equivalent to 
 saying that they may be used in some particular sense by only 
 one pei-son. The fact that the goods of one manufacturer are 
 known by a name which is in constant use by the pubUc does not 
 necessarily permit a rival to use the name on competing goods. 
 The control of equity over words and marks used in trade is not de- 
 fined or limited by the nature of the word or mark, but by the use 
 which the public makes of it. The status of all industrial names 
 is largely in the hands of the pubUc which creates words and mean- 
 ings for words at will. The great European war has created many 
 new words, modified the meaning of others and added new mean- 
 ings to many others. A similar process is going on constantly in 
 trade; and the paramount consideration of the court in every 
 case involving a name is the use to which the pubUc puts the word, 
 not generally speaking, but in connection with the goods or busi- 
 ness house it is used to describe. 
 
 With the general and usual meaning of words and names or 
 with the general and usual uses of marks and devices, as distin- 
 guished from their trade meaning and use, the law of unfair com- 
 petition does not deal. The rights of the one using these names 
 66 
 
Statements of the General Rule 67 
 
 and marks in trade are confined to this trade meaning. The 
 existence of a trade meaning presupposes that the public has no 
 need to use the name in describing or referring to the article to 
 which it is applied in trade. The public has need of the word 
 " Ivory " to describe elephants' tusks. It has no need for the word 
 to describe soap. 
 
 Whenever a word which is in general use is used also in a trade 
 sense, all trade rights in the word rest on the doctrine of Secondary 
 Meaning. The legal questions involved are simple, however, 
 where the word is used in an entirely non-descriptive sense, as, 
 for instance, the case of the word "Fairy" in the name "Fairy 
 Soap." Where, however, the word used may be construed as 
 descriptive, even when placed on the goods it identifies, the legal 
 questions involved may be most complex, as for instance the 
 name "Oneida Traps" — a phrase which might be construed to 
 mean traps made at Oneida, had not the pubUc come to associate 
 this term with the goods of one particular concern. It is in this 
 association in the public consciousness that the property right 
 in trade names is found. 
 
 This doctrine is a distinctly modern development. It is in 
 direct contravention of the theory so long held, that words in 
 constant pubUc use may not be protected and segregated for 
 trade use. 
 
 The secondary meaning rules are a legal recognition of the 
 value of business reputation and standing. For a competitor of 
 the makers of "Camel Hair Belting" to sell poor quality belting 
 as "Camel Hair Belting" may injure the business of the makers 
 of this brand just as much as statements reflecting upon the ability 
 of its makers to produce good belting or upon their personal 
 integrity. 
 
 § 37. Statements of the General Rule. — Secondary meaning 
 is association, nothing more. It exists only in the minds of those 
 of the public who have seen or known a brand of goods by some 
 name or sign and have associated the two in their minds. 
 
 "The name of a person or a town may have become so associated 
 with a particular product that the mere attaching of that name to a 
 similar prodtict without more would have all the effect of a false- 
 hood" ' (italics author) 
 
 "When the word is incapable of becoming a valid trade-mark, 
 1 Herring-Hall Co. v. Hall's Safe Co., 208 U. S. 554. 
 
68 Secondaky Meaning 
 
 because descriptive or geographical, yet has come by long use to 
 stand for a particular maker or vendor, its use by another in this 
 secondary sense will be restrained as unfair and fraudulent com- 
 petition, and its use in its primary or common sense confined in 
 such a way as will prevent a probable deceit by enabling one 
 maker or vendor to sell his article as the product of another." ^ 
 
 "Geographic names often acquire a secondary signification 
 indicative not only of the place of manufacture but of the name 
 of the manufacturer or producer, and the excellence of the thing 
 manufactured or produced, which enables the manufacturer or 
 owner to assert an exclusive right to such name as against every 
 one not doing business within the same geographical limits; and 
 even as against them, if the name be used fraudulently for the 
 purpose of misleading buyers as to the actual origin of the thing 
 produced or pabning off the productions of one person as those of 
 another." * 
 
 "Where an alleged trade-mark is not in itseK a good trade- 
 mark, yet the use of the word has come to denote the particular 
 manufacturer or vendor, relief against imfair competition or 
 perfidious dealing will be awarded by requiring the use of the 
 word by another to be confined to its primary sense by such 
 limitations as will prevent misapprehension on the question of 
 origin." * 
 
 "The first appropriator of a name or device pointing to his 
 ownership or which, by being associated with articles of trade, has 
 acquired an understood reference to the originator or manufac- 
 turer of the articles, is injured whenever another adopts the same 
 name or device for similar articles, because such adoption is in 
 effect representing falsely that the productions of the latter are 
 those of the former." ^ 
 
 "Primarily, it would seem that one might appropriate to him- 
 self for his goods any word or phrase that he chose; but this is 
 not so, because the broader public right prevails, and one may 
 not appropriate to his own exclusive use a word which already 
 belongs to the public and so may be used by any one of tke public. 
 
 ' Compviing Scale Co. v. Standard * Elgin Watch Co. v. III. Watch Co., 
 
 ComjnUing Scale Co., 118 Fed. 965; 55 179 U. S. 665. 
 
 C. C. A. 459. s Lawrence Mfg. Co. v. Tennessee 
 
 ' Siegert v. Gandolfi, 149 Fed. 100- Mfg. Co., 138 U. S. 546. 
 1906; 79 C. C. A. 145. 
 
Statements of the Genekal Rule 69 
 
 Hence comes the rule, first formulated in trade-mark cases, that 
 there can be no exclusive appropriation of geographical words 
 or words of quality. This is because such words are, or may be, 
 aptly descriptive, and one may properly use for his own product 
 any descriptive words, because such words are of pubUc or com- 
 mon right. It soon developed that this latter rule, literally ap- 
 plied in all cases, would encourage commercial fraud, and that 
 such universal application could not be tolerated by courts of 
 equity; hence came the "secondary meaning" theory. There is 
 nothing abstruse or complicated about this theory, however 
 difficult its application may sometimes be. It contemplates 
 that a word or phrase originally, and in that sense primarily, 
 incapable of exclusive appropriation with reference to an article 
 on the market, because geographically or otherwise descriptive, 
 might nevertheless have been used so long and so exclusively 
 by one producer with reference to his article that, in that trade 
 and to that branch of the pm-chasing public, the word or phrase 
 had come to mean that the article was his product; in other 
 words, had come to be, to them, his trade-mark. So it was said 
 that the word had come to have a secondary meaning, although 
 this phrase, "secondary meaning," seems not happily chosen, 
 because, in the limited field, this new meaning is primary rather 
 than secondary; that is to say, it is, in that field, the natural 
 meaning. Here, then, is presented a conflict of right. The al- 
 leged trespassing defendant has the right to use the word, be- 
 cause in its primary sense or original sense the word is descriptive; 
 but, owing to the fact that the word has come to mean, to a part 
 of the public, something else, it follows that when the defendant 
 approaches that same part of the public with the bare word, and 
 with nothing else, applied to his goods, he deceives that part 
 of the public, and hence he is required to accompany his use of/ 
 the bare word with sufficient distinguishing marks normally to 
 prevent the otherwise normally resulting fraud.^ ■' Denison, J. 
 
 Statements like the above might be multipHed but it would 
 be mere reiteration, for the principle is very simple indeed. 
 
 The questions involved in these cases are: first, as to whether 
 or not the name used by the plaintiff is used by him and under- 
 stood by the public to be used by him, in its general or common 
 meaning, or in a trade sense, as identifying him or his goods: 
 » Merriam v. Saalfleld, 198 Fed. 369, at p. 373. 
 
70 Secondaey Meaning 
 
 second, whether (if the pubhc gives to the name when used 
 by the plaintiff a trade meaning) the defendant has so used 
 it as to prevail on purchasers to buy defendant's goods, believing 
 that they were getting the goods made by the plaintiff. Of course 
 if the defendant used direct misrepresentation, the plaintiff's 
 remedy is plain. But when the proof shows that the defendant 
 is using a term which is in general use as a part of the language, 
 or partially describes the goods in question, it must be a 
 precedent condition to plaintiff's success, that he prove that 
 the term in question as used by the defendant no longer has 
 its evident, usual meaning, but has come to possess a second- 
 ary and further meaning, viz. : that the goods to which it refers, 
 are goods made only by the plaintiff. Unless this be proven the 
 defendants are not in the wrong, for they are merely using a 
 name to which they have as much right as has the plaintiff, and 
 there is no room for a charge of fraud or unfaimes^.'' 
 
 The doctrine of secondary meaning is clearly illustrated by 
 Reddaway v. Banham^ a House of Lords case. This case involves 
 the name "Camel Hair Belting." This name the plaintiffs ap- 
 plied to a belting made largely of camel's hair, although it was 
 not at first generally known that such was the fact. At the first, 
 this "camel's hair" was supposed to be a commercial hair stock 
 which was a mixture of the hair of sheep, goats, and various 
 eastern animals in which hair of camels might be foxmd; but 
 which no one supposed was all camel's hair. Formerly the yam 
 of which the belting was made was sold simply as "brown 
 worsted." Competitors of Reddaway made belting, which they 
 called by names of animals such as yah, buffalo, llama, crocodile, 
 etc. On the trial a letter was put in evidence in which a salesman 
 wrote: "I think I can take this order from ' Reddaway 's' if the 
 goods are marked 'Camel Hair Belting.'" There was ample 
 evidence to show, says the court, that purchasers did not apply 
 this name to all goods made of camel hair but to Reddaway's 
 goods only. Lord Herschell said in the House of Lords: "The 
 name of a person, or words formmg a part of the common stock of 
 language, may become so far associated with the goods of a partic- 
 ular maker that it is capable of proof that the use of them by 
 themselves, without explanation or qualification, by another 
 
 ' Cellular Clothing Co., Ltd., v. Max- « App. Cas. 199-1896. 
 ton & Murray, App. Cas. 326-1899. 
 
Statements of the General Rule 
 
 71 
 
 manufacturer would deceive a purchaser into the belief that he 
 was getting the goods of A. when he was really getting the goods 
 of B." (id. p. 210.) 
 
 Another illustration of the application of this doctrine is found 
 in the "Silverpatti" case, mentioned in the note below.' 
 
 ^FavMer & Co., Ltd., v. 0. & G. 
 Rushton, Ltd., 20 R. P. C. 477-1902. 
 Plaintiffs made jam at Stockport, 
 Chester. Defendants were grocers, 
 twenty-three miles away. In 1886, 
 plaintiffs began to boil their jam in 
 silvered or silver-lined jars, and be- 
 gan to call their product "Silver- 
 pan" and sell it under that name. 
 Defendants issued a circular contain- 
 ing these words: "A 2 lb. Jar Sil- 
 verwell — Silver Pan Strawberry 10 
 1^ d. 0. & G. Rushton, Ltd." Plain- 
 tiffs claimed secondary meaning for 
 word "Saverpan." They had used 
 it since 1887; had spent £12,000 
 in advertising. Nine thousand copies 
 of "The Mail" circulated in the dis- 
 trict where defendants carried on 
 business, and plaintiffs often adver- 
 tised "Silverpan" jams in that pa- 
 per and two others in the neighbor- 
 hood, and 1,000,000 circulars were 
 said to have been used. Letters were 
 addressed to plaintiff at "Silverpan 
 Works," "The Silverpan Company," 
 by customers when ordering goods, 
 and "SUverpan" jam. Held: "If 
 a man is accustomed to buy a certain 
 brand which has become a catch- 
 word, very often he forgets the name 
 of the maker. He might remember 
 jam that he bought, which was un- 
 doubtedly Faulder & Co.'s jam, and, 
 wishing to get the same jam again, 
 in asking foir 'Silverpan' he would 
 buy it in the expectation of getting 
 the same brand, that is, Faulder's 
 brand; therefore I am not at all sure 
 it was absolutely necessary that a 
 
 person asking for 'Silverpan' should 
 have in mind also the name of Faul- 
 der" (id. p. 485). Held, "SUverpan" 
 had acquired a secondary meaning 
 and meant Faulder's jam. Defend- 
 ants' circular broke the word into 
 two — "silver" and "pan." Held, 
 that the substance was "Silverpan," 
 and this would not excuse their use 
 of the word. Defendants put the 
 word in inverted commas, as they 
 claimed, to attract attention. Held, it 
 meant quotation. The plaintiffs are 
 not bound to prove that when the 
 defendant put those words (Silver 
 Pan) in he intended to deceive. 
 "It is enough that he put them 
 there. * * * Whether it was in- 
 tentional or whether it surged up in 
 his mind as a kind ~ of unconscious 
 cerebration, he got the idea ulti- 
 mately from Faulders" (id. p. 489). 
 Injunction granted. Decision upheld 
 on appeal, where Vaughan- Williams 
 stated that it was necessary (1) to 
 show proof of identification of word 
 "Silverpan" with plaintiff's firm, and 
 (2) this identification is recognized 
 in district where defendant is located, 
 but not by everyone in the district 
 (p. 492), and Romer, L. J., said: 
 "Of course I do not mean that in 
 every town in which there was a 
 market for jams you could find a 
 majority of the inhabitants who knew 
 about this jam: still less do I suppose 
 that a majority of the inhabitants of 
 the districts in which this jam was 
 chiefly sold, as a whole knew the jam 
 intimately, or possibly at all; but I 
 
72 
 
 Secondary Meaning 
 
 § 38. Geographic Limits in which Secondary Meaning is 
 Protected. — A name need not acquire this secondary meaning 
 everywhere, in order to be entitled to protection by the court; but 
 
 think that in the markets I have re- 
 ferred to, a substantial number of 
 persons who were interested in the 
 question, and whom, from their posi- 
 tion, one would expect to have known 
 about the jam, did so know the plain- 
 tiff's jam; and I certainly think upon 
 the evidence that all who knew the 
 phrase at all, as applied to jam before 
 the acts of the defendants which are 
 complained of, identified the term as 
 meaning the plaintiff's goods" (id. 
 pp. 439-94). 
 
 Fek V. Christopher Thomas & Bros., 
 21 R. P. C. 85-1903 (Court of App.). 
 Plaintiffs were Americans who made 
 "Fels-Naphtha Soap," which con- 
 tained naphtha. They introduced it 
 into England in 1900. It appears that, 
 after this, customers and dealers began 
 to use term "Naphtha Soap" when 
 plaintiffs' was the only naphtha soap 
 on the market. In 1902, defendant 
 began to make "Naphtha Soap." 
 Although in the two years while 
 plaintiffs' soap was the only naphtha 
 soap on the market, buyers asking for 
 "Naphtha Soap" undoubtedly meant 
 plaintiffs' soap, there was, neverthe- 
 less, no evidence of any secondary 
 meaning which the word naphtha had 
 acquired in this two years as applied 
 to plaintiffs' soap. 
 
 Eipky V. Griffiths, 19 R. P. C. 591- 
 1902. Plaintiff made blue in oval 
 cakes which he called "Oval Blue." 
 The question at issue was whether or 
 not the words "Oval Blue" meant 
 plaintiff's blue and nothing else. Both 
 plaintiff and defendant sold blue in 
 oval form. Plaintiff began to sell blue 
 in ovals twenty-five years before this 
 suit was brought, and for about eight- 
 
 een years no one else sold oval blue. 
 Testimony showed that people usually 
 ask for blue according to the shape, 
 and the blues are called by names de- 
 noting shape. Defendant called his 
 goods "Bobby Blue." It was in oval 
 shape. Dealers testified: "There is 
 only one oval blue, that is Ripley's." 
 Customers would ask for 'Oval' to 
 distinguish it from 'Rickett's Square.' 
 If they asked for 'Oval' I gave them 
 Ripley's." " I have never heard of any 
 other oval blue than Ripley's," etc. 
 Referring to the rule laid down by 
 Judge Davey in Reddaway v. Banham, 
 App. Cas. 199-1896 (see discussion of 
 this case, § 82), court denies injunction 
 on ground that most of witnesses 
 either were dealers who kept only 
 plaintiff's blue, or were persons who 
 had never used other kinds. In other 
 words, that identity between name and 
 plaintiff's goods was not established. 
 
 Hansen v. SiegelrCooper Co., 106 
 Fed. 691-1900 (C. C. S. D. N. Y.). 
 Complainant made and sold a prepara- 
 tion of rennet under the name "Junket 
 Tablets." The word "Junket" is the 
 recognized English name for a species 
 of food, and complainant's tablets 
 were used in making it. It was held 
 that "Junket Tablets" had, however, 
 acquired a secondary meaning as ap- 
 plied to complainant's tablets, and 
 defendant, a later manufacturer, was 
 enjoined from using the name "Jun- 
 ket Capsules" as applied to a prepara- 
 tion similar to complainant's but put 
 up in capsules, although he was al- 
 lowed to indicate that his preparation 
 was used in making junket. 
 
 The following cases furnish fa- 
 miliar examples: HoUoway v. HoUo- 
 
Geographic Limits 73 
 
 protection will be given in any territory in which the name is 
 used and understood in its secondary sense. Nor is it necessary 
 that a majority of the people in that locality must know or use 
 the name in this secondary way. This is held in Faulder v. Rush- 
 ton, supra. Nor will the right to an injunction be affected by 
 either the period of time the defendant has used the offending 
 name, or the fact that the plaintiff has not yet extended its busi- 
 ess to the territory which the defendant occupies.^" 
 
 Many names never obtain national repute; they are known 
 only in the vicinity of the place where the goods to which they 
 are attached are made, or the persons who use them reside. 
 
 The fact that the plaintiff has not yet extended his trade to 
 the territory occupied by the defendant has been held, in registered 
 trade-marks cases, to be no defense to an injunction." But if 
 the use of a name or mark, not a registered mark, will cause 
 confusion in some locality with a mark well known there, the 
 use of the foreign name has been enjoined in most cases where 
 this question has been raised. It has been held, however, that 
 even with registered trade-marks the rights of the user do not 
 always extend to the bounds of the jurisdiction registering the 
 mark, but that general rights in a registered mark may be lost 
 
 way, 13 Beav. 209-1850; Seixo v. institution of the suit. Held, that the 
 
 Provezende, L. R. 1 Ch. App. 192-1865; word "Hygeia" was not a descriptive 
 
 Wotherspoon v. Currie, L. R. 5 Eng. word, but had come to denote the 
 
 & Ir. App. 508-1872, "Glenfield product of the complainant; that the 
 
 Starch;" Seigert v. Findlater, 7 Ch. defendant's use of the word, though 
 
 Div. 801-1878, "Angostura Bitters;" innocent at first, was not justified 
 
 Thompson v. Montgomery, 41 Ch. after the facts as to the prior use were 
 
 Div. 35-1889; affirmed in App. Cas. known to the defendant; that the 
 
 217-1891, "Stone Ale." right to an injunction was not affected 
 
 '» Hygeia Distilled Water Co. y. either by the length of time during 
 
 Consolidated Ice Co., 144 Fed. 139- which defendant had used the word, 
 
 1906 (C. C. W. D. Pa.) affirmed, 151 nor by the fact that plaintiff had 
 
 Fed. 10. Complainant and its prede- not yet extended its business to 
 
 cessors had for over twenty years the locality occupied by the defend- 
 
 distilled and sold water of a high ant. 
 
 grade, advertised, marked, and known " Hygeia Distilled Water Co. v. 
 as "Hygeia Water," and had built Consolidated Ice Co., 144 Fed. 139- 
 up a large trade in some states, but 1906 (C. C. Pa.); affirmed, 151 Fed. 
 had done practically no business in 10-1907 (C. C. A. 3d Cir.); citing 
 Pittsburg and vicinity. Neither party Derringer v. Plate, 29 Cal. 296-1865; 
 knew of the use of the name " Hygeia " 87 Am. Dec. 170; Hopkins on Trade- 
 by the other till shortly before the Marks, § 13. 
 
74 Secondary Meaning 
 
 by conduct of the user amounting to estoppel."" See chapter on 
 "Legal Basis of the Action for Unfair Competition." 
 
 The value of trade-marks is measured by the extent of their 
 celebrity. A trade-mark be it ever so original and attractive and 
 apt is valuable only as it becomes known as a guidepost to its user's 
 store or factory. Hence the value of every trade-mark consists in 
 the association in the minds of the public between itself and the 
 owner of the goods it identifies. Secondary meaning is the name 
 applied to the trade meaning that a word or name in general use 
 acquires by such association. 
 
 Recognizing these facts, the cases generally hold that rights in a 
 conmion-law mark extend only as far as knowledge of the mark has 
 gone and the goods upon which it appears have been sold. Prac- 
 tically speaking, this condition of affairs may easily result in 
 commercial confusion. For instance, "Boston Wafers" may be 
 sold under that name by the National Wafer Co. in most states 
 of the country, but in Ohio, Michigan, West Virginia and Virginia 
 the name may be used only by the C. A. Briggs Co.^^ Commer- 
 cially this is most unfortunate, not from the standpoint of the 
 persons using the names, but from a public standpoint. The 
 person who goes from Indiana where "Boston Wafers" means 
 the goods of the National Wafer Co. to Ohio, finds that in his 
 new home this name is legally protected as the name of the goods 
 of the Briggs Co. 
 
 In Hanover Star Milling Co. v. Metcalf,^^ the court held that the 
 brand "Tea Rose" for flour could be used by one manufacturer 
 in one section of the country and by another in a different section. 
 The court stated that this was a most unusual case; it has found 
 no decided case like it. Nevertheless this rule raises a serious 
 practical question for many business houses. See discussion at 
 p. 28 hereof. The person who does a substantial business in any 
 section of the country under a brand which thereby acquires a 
 secondary meaning in reference to his goods acquires an interest 
 in it which should be sufficiently protected to enable him to use 
 it in the further extension of his business to any section of the 
 country into which his energy enables him to enter. 
 
 It would seem, therefore, that in suits where two parties lay 
 
 "" 226 Fed. 546 (1915). » 240 U. S. 403-1916. 
 
 "Briggs v. Nat. Wafer Co., 102 
 N. E. Rep. 87-1913. 
 
Secondary Meaning of Trade Phrases 75 
 
 claim to the same mark the courts should be slow to uphold the 
 rights of the second user of the mark, unless definite acts on the 
 part of the first user are shown which indicate. clearly that he has 
 elected to confine his use of the brand to the territory already 
 occupied by him. 
 
 For further discussion of this question see chapter on "Legal 
 Basis of the Action for Unfair Competition." 
 
 § 39. Secondary Meaning of Trade Phrases. — Goods may be 
 identified in the pubUc mind by a phrase as well as by a single 
 word, and there is nothing in the mere fact that this identification 
 is caused by a phrase, rather than in some other way, that con- 
 stitutes a defence to an unfair competition action. There are 
 some decisions of the Patent Office holding that trade phrases 
 may not be registered. It is a fact however that trade phrases 
 may be protected in unfair competition cases where the defend- 
 ant's use of them has caused confusion. 
 
 Such a secondary meaning may be acquired by words in gen- 
 eral use, when a phrase made up of them has come to have a par- 
 ticular meaning in the minds of the public. This has been held 
 true where the phrase "incorporated accountant" had come to 
 mean in England that the person to whom it was applied was a 
 member of a certain corporation called "Society of Accountants 
 and Auditors." " See note for further examples. 
 
 In another case, involving a gall cure for animals, the phrase 
 "Be Siire to Work the Horse" was used on the goods of one of the 
 parties, and this product became known as the "Work the Horse 
 Cvu-e." After a considerable period, the defendants entered the 
 field with a remedy called the "Foiu- Horse Gall Ciire," and used 
 
 ^* Society of Accountants and Aw- phrase "incorporated accountant" 
 
 diims V. Goodway (1907, Ch. Div.), had acquired a secondary meaning, 
 
 76 L. J. Ch. 384. and that members of the new com- 
 
 Plaintiff society was incorporated pany should not be allowed to use 
 
 in 1885, and it admitted, as members this designation, nor the company to 
 
 only well-qualified accountants; it hold out its members as entitled to 
 
 gained a high reputation and its use it in such a way as to lead to the 
 
 members were usually described as behef that they were members of the 
 
 "incorporated accountants," which plaintiff society. See similar Scotch 
 
 term was generally understood to im- case. Soc. of Accts. in Edinh. v. Corp. 
 
 ply membership in this society. In of Accts., 20 Ct. Sess. Cas. 750, 4 
 
 1905, a new company was formed for Ser. 
 similar purposes. Held, that the 
 
76 Secondary Meaning 
 
 the phrase "Always Work the Horse While Using the Cure", 
 which was condemned by the court.**" 
 
 § 40. Names of Places. — A name often becomes associated 
 with a particular place because of the existence there of a business 
 plant; again, the name may be associated with the place before 
 the business is started there, and the business be named from the 
 place. In either event the business may move and seek to take 
 with it the name and to prevent others who may buy the plant or 
 property it abandons from using the name. In Nicholson v. Btir 
 chanan,^^ plaintiff set up a distillery in 1847, which he called the 
 "Black Swan Distillery," and in 1897 sold it and the plant was 
 moved away. The defendant, a spirit merchant, purchased the 
 place where the distillery stood and advertised that the Black 
 Swan had been rebuilt, and contended he had a right to the name 
 as it came from the fact that a public house of that name once 
 stood on the spot. Held, defendant's reputation was as a dealer in 
 Scotch whiskey. The name Black Swan was associated with dis- 
 tilling gin, or whiskey, and defendant did not deal in gin. No 
 evidence was shown of anyone being misled. Action dismissed. 
 
 The value of a name may be based on usage prevailing only in 
 certain particular localities, in which the party using the name 
 or mark has established his business. Sartor v. Schaden holds " 
 that "When the question of unfair trade is involved, one person 
 may have a property right in the secondary use of a word in one 
 locality and another in the same word or device in another. This 
 is one of the distinguishing features between a trade-mark, 
 strictly speaking, and a trade name. One is of necessity geo- 
 graphical, and covers the entire limits of the jurisdiction of the 
 sovereignty granting the right; and the other is of necessity local, 
 not founded upon any authority or right from the state, but 
 based upon usage in the particular locality, or localities, in which 
 the party is doing or seeks to do business." " This statement 
 must be considered with Hanover Star Milling Co. v. Metcalf}'''' 
 
 ^^ Bickmore Gall Cure Co. v. Karns, »' Draper v. Skerrett, 116 Fed. 206; 
 
 134 Fed. 833-1905; C.C.A.,3rd Cir. Hainque v. Cyclops Iron Works, 136 
 
 " 19 R. P. C. 321-1900. Royal Irish Cal. 351; 68 Pac. 1014; Clark Thread 
 
 Linen Hurd & Co., Ex parte, 590 G. Co. v. Armitage, 67 Fed. 896, C. C. S. 
 
 1763; "Every Day Soap," 92 Fed. D. N. Y. (1895); 74 Fed. 936 C. C. A., 
 
 914, 102 Fed. 490. 2d Cir. (1896). 
 
 18 125 Iowa, 696-704^1904; 101 N. "° 240 U. S. 403 (1916). 
 W. 511. 
 
Existence of Secondaby Meaning Is Question of Fact 77 
 
 See chapter on "Geographical Names." 
 
 § 41. Existence of Secondary Meaning is a Question of Fact. 
 — Secondary meaning is a question of fact and a different question 
 in each case. "The whole matter lies in pais." '* Evident decep- 
 tion for a year may not warrant such a finding in absence of intent 
 to defraud.^' 
 
 The facts of each case must be considered in deciding as to the 
 existence of secondary meaning. Long use of a name by one con- 
 cern creates a strong presumption of the existence of such associa- 
 tion. The volume of sales, not in dollars and cents but in the num- 
 ber of articles sold and the amount of advertising of the name, 
 are both important considerations. 
 
 § 42. Association of Names with Goods the Identity of the 
 Makers of which is Unknown. — Secondary meaning may exist 
 between a name and goods the maker of which is unknown to 
 the average buyer of them, as well as between a name and a manu- 
 facturer or dealer who is known to the consumer. There are 
 many specific articles in all general stores, which are constantly 
 asked for by some descriptive or semi-descriptive name. The 
 buyer seeks the product -of some one particular concern. He 
 does not know its name, or its location, or whether it is a 
 corporation or an individual. He only knows he seeks a partic- 
 ular thing known by a name familiar to him. There are 
 brands of diaries on the market that have been sold for years, 
 for which buyers have a decided preference, yet probably not 
 one in a hundred of these persons could tell the name of the 
 maker. Nevertheless this buyer's preference for the goods of 
 this unknown concern is a species of industrial property having 
 
 " 179 U. S. 677. dressed "Crookston Marble Works." 
 
 " Nesne v. Sundet, 93 Minn. 299; In June, 1902, they formed a corpora- 
 
 101 N. W. 490-1904. In 1901, plain- tion under name "Crookston Marble 
 
 tiffs formed partnership at Crookston, Works." Court found that there was 
 
 Minnesota, under the name "Crooks- no intent to defraud on part of either 
 
 ton Marble & Granite Works." plaintiff or defendant. Held, that 
 
 Two weeks later, they changed their plaintiff first adopted the name and 
 
 name to "Crookston Marble Works." that the defendants acquired no right 
 
 Nine years before, defendants began in the name because mail intended 
 
 business at the same place as "North- for "Northwestern Marble Works" 
 
 western Marble Works" and used the was addressed to "Crookston Marble 
 
 name "Marble Works" as a sign. Works." No vested right in that name 
 
 Ten per cent, of their letters were ad- accrued to the defendants. 
 
78 Secondary Meaning 
 
 a very decided market value and it rests upon the Tule of 
 secondary meaning. 
 
 § 43. Ten Year Trade-Mark Law. — The so-called Ten Year 
 Clause of the present Trade-mark Statute is a codification of 
 the secondary meaning theory. In effect, this clause creates 
 a presumption that any mark, whether it is of such a character as 
 to become a common-law mark or not, if used continuously and 
 exclusively by the registrant for ten years prior to February 20, 
 1905, may be registered under ^ the act. See discussion of this 
 clause in the chapter on "Registered Trade-Marks and the Fed- 
 eral Trade-Mark Act." 
 
 The application of the rules of secondary meaning in the various 
 kinds of cases such as family name cases, corporate name cases, 
 etc., is discussed in the chapters devoted to each particular sub- 
 ject. See also title "Secondary Meaning" in Index. 
 
CHAPTER V 
 Trade Names — General Principles 
 
 Section 44. Introductory. 
 
 45. Business names as distinguished from marks, designs, devices, etc. 
 
 46. Difference between abstract names of objects and trade names. 
 
 47. Lord Kay's summary of the law of names. 
 
 48. Names considered as transitory or personal and as local or fixed; 
 
 hotel names. 
 
 49. Phrases such as "formerly with" and "successor to," etc. 
 
 50. General or common names of an article and names descriptive of 
 
 construction necessary to it. 
 
 51. Unfamiliar or scientific words used as names of goods, 
 
 52. Artificial or made-up words. 
 
 53. Names appealing to the eye as similar. 
 
 54. Names idem sonans. 
 
 55. Foreign words as names of goods. 
 
 56. Abbreviation of names of goods — nicknames. 
 
 57. Fraudulent use of coincidence in meaning of names. 
 
 58. Numerals and letters as names of goods. 
 
 59. Numerals and letters used to designate grade of goods. 
 
 60. Numerals indicating source or origin. 
 
 61. Initials as names of goods. 
 
 62. Numerals used to designate series, etc. 
 
 63. Names of goods intended for export. 
 
 64. Signs. 
 
 65. Street addresses, etc. 
 
 66. Use of suffix "& Co.", etc. 
 
 § 44. Introductory. — The name of a thing and the thing 
 itself are hardly distinguishable. It is seldom that they can 
 be separated. Injure one and the other suffers. Lower the 
 quality of the goods themselves and the name becomes less val- 
 uable. Apply the name to some similar but inferior article or 
 to a cheaper article of ill repute, and the value of the name be- 
 comes materially less. Trade names frequently are guarded 
 with as zealous care as a name of a faitaily. They may be Ubeled 
 and slandered, misused and discredited just as personal names 
 are Ubeled and misused. 
 
 With the growth of trade, with the increase of transportation 
 
 79 
 
80 Tkade Names — Genekal Peinciples 
 
 facilities, with the multipUcation of means of making an article 
 of trade known to the public, and equally with the multipUcation 
 of methods of quickly injuring its reputation, the law which 
 governs the protection given to trade names has become more 
 explicit and more fully defined. Underneath all this develop- 
 ment, however, Ues the same principle — so often referred to 
 before — that one must not pass off his goods as those of another, 
 must not use his trade name in such a way as to give the impres- 
 sion that it is the trade name of another," or to cast discredit upon 
 the reputation of his rival or his rival's product. 
 
 § 46. Business Names as Distinguished from Marks, De- 
 signs, Devices, etc. — It is to be remembered that trade names 
 differ from trade-marks, trade designs and devices. The exclusive 
 right to use a trade name imposes upon competitors a more bur- 
 densome restriction than the right to use a mark. It is not un- 
 reasonable to say to traders that they shall not imitate an ar- 
 bitrary mark or device adopted by one of them; but to say to a 
 person that he shall not use his own family name in the manufac- 
 ture or sale of an article is quite a different matter. Accordingly, 
 various limits have been set to the right to exclude others from 
 the use of certain classes of words and names in designating goods, 
 while hke limits have not been imposed as to the use of marks, 
 designs, and devices. It would obviously be unjust, for instance, 
 to forbid a man the use of his own name in trade, when no fraud 
 or damage to others' rights arising therefrom was shown, although 
 it would not be unjust to forbid him to use a fanciful device already 
 adopted and used by a rival although no fraud is shown. 
 
 Again, a name of a business or of an article of trade gives more 
 information than a trade device or emblem. A nam£ may disclose 
 the name of the maker or seller of goods or the place of manufac- 
 tm-e or the locahty of a business, perhaps all of these facts, while 
 an emblem indicates these and similar facts usually by association 
 only. Failure to understand and observe this difference between 
 an emblem and a name is often the cause of unfair competition. 
 There is no question that an emblem which has been lawfully 
 chosen and appropriated to the use of one person is property; 
 but it is not always easy to know whether or not one has rights in 
 a trade name he is using, sufficient to entitle him to protection in 
 the sole use of the name in the particular business in which he 
 " See Bates Mfg. Co. v. Bates Numbering Co., 172 Fed. at p. 895-1909. 
 
Abstract Names and Trade Names 81 
 
 may be engaged. When such rights exist they rest on the doc- 
 trine of "secondary meaning" (see this term in index and the 
 chapter entitled "Secondary Meaning"). 
 
 § 46. Difference Between Abstract Names of Objects and 
 Trade Names. — A trade name is to be distinguished from the 
 abstract or general name of the article. When an article first 
 becomes known, it is without a name and must be associated with 
 a word, — must be named — christened. Such name, thus given, 
 everyone has a right to use, for it is by this name only that it can 
 be known, dealt in and designated. A new metal, for example, 
 is discovered. It must be given a name, and the inventor or 
 someone else calls it aluminum and straightway that is its name. 
 Everyone has a right to use that name; for it would be entirely 
 against public policy and individual rights to allow any one 
 person to obtain a monopoly of this general or generic name. 
 
 On the other hand, a business or trade name is one that iden- 
 tifies a particular concern, or the goods of one concern. When 
 such a name is fanciful it is a trade-mark. Where it is a word in 
 the public domain but used in a trade sense, it is a trade name. 
 
 § 47. Lord Kay's Simmiary of the Law of Names. — Lord 
 Kay, in Powell v. Birmingham Vinegar Brewery Co.,^ has sum- 
 marized the rules relating to the law of trade names as follows: 
 "The law relating to this subject may be stated in a few proposi- 
 tions: 
 
 "(1) It is unlawful for a trader to pass off his goods as the 
 goods of another." 
 
 "(2) Even if this is done innocently it will be restrained. 
 (Millington v. Fox, 3 Myl. & Cr. 338-1838.)" 
 
 " (3) A fortiori if done designedly, for that is a fraud." 
 
 "(4) Although the first purchaser is not deceived, neverthe- 
 less if the article is so delivered to him as to be calculated to de- 
 ceive a purchaser from him, that is illegal. (Sykes v. Sykes, 
 3 B. & C. 541-1824.)" 
 
 "(5) One apparent exception is that, where a man has been 
 describing his goods by his own name, another man having the 
 same name cannot be prevented from using it, though this may 
 have the effect of deceiving purchasers. {Burgess v. Burgess, 
 3 De G. M. & G. 896-1853)." 
 
 "(6) But this exception does not go far. A man may so use 
 1 2 Ch. 54-79-1896, 
 
82 Trade Names — General Principles 
 
 his own name as to infringe the rule of law: 'It is a question of 
 evidence in each case whether there is false representation or 
 not,' per Turner, L. J., in Burgess v. Burgess (3 De G. M. & G. 
 896-1853, at p. 905). So he may be restrained if he associates 
 another man with him so that under their joint names he may- 
 pass off goods as the goods of another person. (Croft v. Day, 
 7 Beav. 84-1843; Clayton v. Day, 26 Sol. Jour. 43-1881; M. Mela- 
 chrino & Co. v. Melachrino Egyptian Cigarette Co., 4 R. P. C. 215^ 
 1887.)" 
 
 "(7) Another apparent exception is, where a man has under 
 a patent had a monopoly for fourteen years, and has given the 
 article a descriptive name, he cannot, when the patent has ex- 
 pired, prevent another from selling it under that name. {Young 
 V. Macrae, 9 Jur. N. S. 322-1862; Linoleum Manufacturing Co. 
 V. Nairn, 7 Ch. Div. 834^1878.)" 
 
 " (8) I am not sure this would be so if the name so used were 
 the name of the patentee, or even a purely fanciful name not 
 descriptive." 
 
 "(9) Certainly, where there has not been a patent, and an 
 article has been made and sold under a fanciful name not de- 
 scriptive, so that the article as made by one person has acquired 
 reputation under that name, another trader will not be permitted 
 to use that name, for a similar article made by him. (Braham 
 V. Bustard, 1 Hem. & M. 447-1863; Cochrane v. McNish & Son, 
 App. Gas. 225-1896.)" 
 
 "(10) To this last proposition there is again a limitation. If 
 the first maker has slept upon his rights, and allowed the name 
 to be used by others until it has become publici juris, the court 
 will not interfere." 
 
 § 48. Names Considered as Transitory or Personal and as 
 Local or Fixed; Hotel Names. — Trade names are either local 
 or fixed, or else transitory or personal in character, — • the one 
 attaching to a place regardless of the ownership of the name at 
 any one time, the other attaching to the person regardless of 
 where the person locates himself. This distinction is important 
 in cases involving names of hotels and buildings. 
 
 The protection afforded by law is not limited to the exact or 
 formal name employed by the one using it to identify his goods 
 or his business. For instance a nickname by which a hotel 
 has become known is entitled to such protection; for the use oi 
 
Tkansitoey or Personal and Local or Fixed Names 83 
 
 such a nickname by a rival naay work injiu-y to the complainant's 
 house and business. Some hotel names are personal names, 
 others impersonal, certain of these names attach to a place, to a 
 particular hotel regardless of its ownership; while others have 
 been held to be the property of a person and to attach to him 
 rather than to the place. Such a personal hotel name was in- 
 volved in a California case in which the plaintiff leased land 
 where he erected and conducted a hotel to which he gave a name. 
 Later he moved and used the same name on a new hotel; it was 
 held that the name was his property and did not pass to the owner 
 of the first named premises.^ 
 
 Again, a clear distinction was taken by the California court, 
 between the reputation a name or appellation gives to a certain 
 business locality, and which adheres to that, without any refer- 
 ence to the proprietor of the establishment personally, and the 
 designation or name for a locality, at which a certain business 
 is carried on, and which is personal and does not attach to the 
 
 ' Woodward v. Lazar, 21 Cal. 449- of its surrender, it being a trade name. 
 
 1863. Defendants were restrained 
 from using the name "What Cheer 
 House," as the name of a hotel in 
 the city of San Francisco. Wood- 
 ward, plaintiff, first erected a hotel 
 building on leased premises and gave 
 it that name. During his occupancy 
 as tenant, he purchased and built on 
 the adjoining lot, another hotel edi- 
 fice, and occupied it also. Afterward 
 he surrendered the leased premises, 
 and occupied the second, and con- 
 tinued to conduct a hotel business on 
 his own premises under the name of 
 "What Cheer House." The defend- 
 ants later purchased the premises first 
 described, and conducted thereon a 
 hotel under the name "Original What 
 Cheer House." The contention of the 
 plaintiff, on injufiction, was that the 
 name belonged to him, as the pro- 
 prietor of the hotel last established 
 which he had owned and occupied, 
 which name he had theretofore used 
 continuously while proprietor of the 
 hotel last leased, and up to the date 
 
 The contention of the defendant was, 
 that the name was a mere designation 
 of the building in which the business, 
 at first estabUshed, was conducted, 
 and that it attached to the building 
 at the termination of the plaintiff's 
 lease, and passed to him by his pur- 
 chase thereof from the plaintiff's 
 lessor. Denjdng the latter proposi- 
 tion, the court said: "A person may 
 have a right, interest, or property in a 
 particular name, which he has given 
 to a particular house, and for which 
 house, under the name given to it, a 
 reputation and good-will may have 
 been acquired; but a tenant, by giving 
 a particular name to a building, which 
 he appUes to some particular use, as a 
 sign of the business done at that place, 
 does not thereby make the name a 
 fixture to the building, and transfer it 
 irrevocably to the landlord" (id. 
 p. 452). See also Nicholson v. Bu- 
 chanan, 19 R. P. C. 321-1900; supra, 
 §38. 
 
84 Trade Names — General Phinciples 
 
 property, but remains subject to the control of the proprietor. 
 In treating of this distinction the court here said: "Plaintiff's 
 claim for protection, so far as his right results from the good-will 
 acquired for the name while it was applied exclusively to the leased 
 premises, may not be sustainable, yet he is entitled to protection 
 in the exclusive use of the name as proprietor of the new house" 
 (id. p. 453). 
 
 Had the name of the establishment formed an element of the 
 good-will of any hotel business conducted on these particular 
 premises, it might have been lost by the conveyance to the de- 
 fendant; but as it was rather a personal possession of the pro- 
 prietor, while lessee, and not an impersonal feature of this busi- 
 ness, it did not pass to the landlord, but remained subject to the 
 control of the lessee at the termination of the lease. 
 
 In Howard v. Henriques,^ it appears that the plaintiff's hotel 
 was called the "Irving House" but it soon became generally 
 known as the "Irving House" and "Irving Hotel," indiscrim- 
 inately. The defendants named their house the "Irving Hotel." 
 There was no question of resemblance between the two hotels, 
 or the two signs. It was the good-will represented by the name 
 that was protected, not merely the name. 
 
 The right to use a hotel name is entirely in the control of the 
 owner of the name. If he contracts with a person allowing the 
 use of it for a certain period, at the end of that time he may as- 
 sume entire control of it again, and for the person who has been 
 using it under the contract to continue to do so will subject him 
 to injunction.* 
 
 45 Super. (3 Sandf.) (N. Y.) 725- man has, by close attention to the 
 
 1851. Plaintiff owned and ran "Irv- comfort of his guests, and by superior 
 
 ing House " opened in 1848. In 1851, energy, made his hotel desirable for the 
 
 defendant opened in same city "Irving traveler, and caused its name to be- 
 
 Hotel." The court said: "We think come popular throughout the land, 
 
 that the principle of the rule is the another man ought not to be per- 
 
 same, to whatever subject it may be mitted to assume the same name in 
 
 applied, and that a party will be pro- the same town, and thus deprive him, 
 
 tected in the use of a name which he who first appropriated the name, of 
 
 has appropriated and by his skill ren- some portion of the fruits of that 
 
 derid valuable, whether the same is good-will which honestly belongs to 
 
 upon articles of personal property him alone." 
 
 which he may manufacture, or applied * Marsh v. BiUings, 61 Mass. 322- 
 
 to a hotel where he has built up a pros- 1851. The proprietor of the Revere 
 
 perous business. * * *" "If one House arranged with defendants to 
 
Transitory or Personal and Local or Fixed Names 85 
 
 It would seem that if a person, while lessee of a hotel prop- 
 erty, by his energy and industry, builds up a reputation for the 
 house that brings to it a large increase of business and adds value 
 to the property, on surrendering it to the landlord, he should be 
 entitled to some return for the increase in its value, if such in- 
 crease was solely due to his efforts. 
 
 Where the name of a hotel was attached to it before a lessee 
 of it took possession, the fact that the lessee increases by his 
 energy and skill the value of the name is not a reason why he 
 may use the name in another place in competition with the 
 owner, because to do so would mislead the public.^ 
 
 A person who sublets a boarding-house — which the original 
 lessee has named "Norwood" (the place being unnamed before) 
 — may not restrain the lessee from using name "Norwood Hall" 
 on adjoining premises.^ 
 
 have carriages at the station to carry 
 passengers to the Revere House, au- 
 thorized him to use the badge "Re- 
 vere House" on the carriages and 
 the drivers' caps, and gave him the 
 privilege of carrying all passengers 
 from the hotel to the station. After a 
 time, the agreement with the defend- 
 ants was terminated, and a similar 
 exclusive arrangement was made with 
 the plaiatiEfs. Defendants, however, 
 still continued to use the "Revere 
 House" badge, and sought to divert 
 passengers from plaintiffs' carriages, 
 and there was some evidence of actual 
 misrepresentation on the part of de- 
 fendants' employees. Held, that the 
 defendants had no right to use the 
 "Revere House" badge in such man- 
 ner as to hold themselves out as hav- 
 ing the patronage and confidence of 
 that house, and that plaintiffs were 
 entitled to such damages as the jury 
 from all the evidence might judge 
 reasonable, and not only for the loss 
 of such passengers as plaintiffs could 
 prove had actually been diverted. 1 
 
 ^O'Grady v. McDonald, 72 N. J. 
 Eq. 805; 66 Atl. 175-1907. Com- 
 
 plainant owned a hotel in Atlantic 
 City, known for twelve years as "The 
 Hotel Dominion." Defendant, after 
 conducting this hotel as lessee for one 
 year, and (as she claimed) greatly in- 
 creasing its reputation, erected and 
 opened, a few hundred feet away on 
 the same avenue, a new hotel under 
 the name "The New Dominion." 
 Held, that the use of this name should 
 be enjoined, as tending to mislead the 
 public. Wilcoxen v. McCray, 38 N. 
 J. Eq. 466-1884, infra, distinguished. 
 « Wilcoxen v. McCray, 38 N. J. Eq. 
 466-1884. Defendant in 1881 rented 
 a house at Asbury Park for three 
 years, and occupied it as a boarding- 
 house for the season of 1881, placing 
 a sign marked "Norwood" on the 
 front of the house, which was known 
 as the Norwood Cottage. Early in 
 1882, defendant sublet the house to 
 complainant from May 1st to Octo- 
 ber 15th, 1882, no reference being 
 made to the name of the house. De- 
 fendant was at the same time erecting 
 on adjoining land a boarding-house 
 which she occupied for the season of 
 1882, and, on the front porch of 
 
86 Trade Names — General Principles 
 
 Where a lessee ran an inn for three years under name "Me- 
 tuchen Inn" and then moved to another part of the town, a 
 person buying the building formerly used by him will not be 
 allowed to use the name "Metuchen Inn." To do this is unfair 
 competition — when the name was first used by the lessee in 
 question.^ 
 
 In Chadron Opera House Co. v. Loomer * the court dechned to 
 protect the plaintiff in the exclusive use of the name "Chadron 
 Opera House" for a building used in part as a theatre, where 
 the name had been used by plaintiff and defendants contem- 
 poraneously, until about the time the suit was brought, and 
 without an apparent intention on the part of either, to appro- 
 priate the name to his exclusive use as the distinctive designation 
 of his building. The court there says that, to entitle a party to 
 enjoin the use of such a name by another, "he must make it ap- 
 pear, with at least reasonable certainty, that his adoption of the 
 name was prior in time to that of his adversary; that he adopted 
 and made use of it in such manner as would reasonably apprise the 
 public that he intended it as a distinctive appellation for his trade, 
 commodity or place of business, and that it was not, at the time 
 of his attempted appropriation of it, in common or general use in 
 connection with hke businesses, commodities, buHdings or lo- 
 caUties." 
 
 § 49. Phrases such as " Formerly with " and " Successor 
 to," etc. — We now come to the cases which deal with the 
 rights of an employee, who has left his employment, to use the 
 name of the person in whose employment he has been, and those 
 of a purchaser of the business of another, to use the name of his 
 
 which, about June 20th, she placed Inn," although no such sign was dis- 
 the sign "Norwood Hall." Held, that played. His lease expiring, he re- 
 she should not be restrained from moved to another house in the same 
 doing so, for, if the name was the borough, and there continued his 
 badge of anyone's business or busi- business as an innkeeper, putting up 
 ness reputation, it was that of de- the sign "Metuchen Inn." Defend- 
 fendant, and not complainant. ant purchased the house first occupied 
 ' Busch V. Gross, 71 N. J. Eq. 508; by the complainant, and two months 
 64 Atl. 754-1906. Complainant, from after plaintiff had put up his sign 
 1903 to 1906 maintained in the on the new place, defendant placed 
 borough of Metuchen an inn, which in front of his house a sign "Metu- 
 was well known and appears to have chen Inn." Held unfair competition, 
 been designated as the "Metuchen ' 71 Nebr. 785; 99 N. W. 649-1904. 
 
Phbases "Formekly With" and "Successor to" 87 
 
 predecessor. It seems that one has a right in law to state to 
 the public in any proper way, the fact that he has been "for- 
 merly with" the house which he has left. This may take the 
 form of any one of several phrases as "Late with," "From," 
 "Formerly with," "Late of the firm of." But if any one of 
 these phrases is used, the law will insist that the name of the 
 person using the phrases, and not the name of his former em- 
 ployer, be prominently displayed.' See chapter on "Good- Will." 
 
 A person who enters a partnership with one who owns a trade- 
 mark will, on retiring from it, have no interest in or right to 
 use the mark except by special arrangement. Where L. had 
 long sold "Old Velvet" whiskey and then entered a partnership 
 with K. under the name of L. & K., and K. afterward retired, 
 he was held to have no right in the name "Old Velvet."^" 
 
 "A person who has been a manager of another's business, 
 has a right, on setting up an independent business, to make 
 known to the public that he has been with the firm, but he must 
 take care not to do so in a way calculated to lead the public to 
 beheve that he is carrying on the business of his former employer, 
 or is in any way connected with it." (Headnote.) " 
 
 ^Colton V. Thomas, 2 Brewst. similar business, displaying upon his 
 
 (Pa.) 308-1869; 7 Phila. 257 (Com. office a sign containing underneath his 
 
 Pleas, Phila.). Plaintiff had pur- name the words 'Late of the Firm,' 
 
 chased the right to use for his busi- will not be enjoined, if the sign is not 
 
 ness the name" Col ton Dental Associa- painted in such a manner as to be 
 
 tion," and for some years conducted likely to mislead the public." 
 a dentail business under that name. Lee v. Haley, L. R. 5 Ch. App. 155- 
 
 Defendant was a former employee 1869. Plaintiffs had been doing busi- 
 
 of plaintiff who had opened a dental ness at 22 Pall Mall, under the artifi- 
 
 office of his own some distance away cial name of "Guinea Coal Co." De- 
 
 on the same streetj using on his fendant, who had been their manager, 
 
 sign and cards his own name with set up a rival business under the name 
 
 the addition, "Formerly Operator at of "Pall Mall Guinea Coal Co." at 46 
 
 the Colton Dental Rooms." The Pall Mall. His envelopes and busi- 
 
 words, "Formerly Operator at" were ness cards were printed in such a 
 
 in much smaller letters than "Col- way as to resemble the plaintiffs', 
 
 ton Dental Rooms." Held, that the Injunction was granted, 
 sign was calculated to mislead the i" BlutfientM v. Bigbie, 30 App. 
 
 public, and injunction granted. Cas. (D. C.) 118-1908. 
 
 Holbrook v. Nesbitt, 163 Mass. 120- " Glenny v. Smith, 2 Drew. & Sm. 
 
 1895; 39 N. E. 794 (from headnote): 476-1865; Hookham v. Pottage, L. R. 
 
 "A person who was formerly in the em- 8 Ch. App. 91-1872. 
 ploy of a firm and who engages in a 
 
88 
 
 Trade Names — General Principles 
 
 The use of any device which will cause a false impression to 
 be given by the use of any of these phrases will be enjoined, 
 such as erecting and using an awning which when let down 
 covered all of a sign except the name of the house which the de- 
 fendant had left. ^^. 
 
 § 60. General or Common Names of an Article and Names 
 Descriptive of Construction Necessary to it. — The law of unfair 
 competition does not protect A name which is based on or is truly 
 descriptive of the construction common to, or characteristic of, 
 the article in question. This has been held particularly true when 
 the rival articles described are evidently constructed so as to adapt 
 the article to the natural conditions under which it is to be used, 
 and the name is reasonably descriptive of the structure which has 
 resulted from such an attempt to meet these natural conditions. 
 "These matters are characteristics of the article itself, and no 
 dealer is entitled to impose restriction upon his competitors 
 with respect to them. They do not necessarily or naturally 
 point to the source or origin of the goods." " 
 
 " Glenny v. Smith, 2 Drew. & Sm. N. J. Eq. 354-1896; 34 Atl, 932. 
 476-1865. Defendant had been in Defendant having for some years 
 
 plaintiffs' employ and started in busi- 
 ness on his own account. Over his 
 shop he had his own name, Frank D. 
 Smith, printed in large black letters 
 on a white ground; but on the brass 
 plates under the windows of his shop 
 he had engraved the word "from" 
 in small letters, and the words 
 "Thresher and Glenny" (the name 
 of plaintiffs' firm) in large letters. 
 He had an awning in front of his 
 shop, which, when let down, would 
 cover his own name and expose only 
 the name of plaintiffs' firm. The 
 court held that defendant was deceiv- 
 ing the public, and an injunction was 
 issued. Croft v. Day, 7 Beav. 84^ 
 1843; Leiy v. Walker, 10 Ch. Div. 
 1436-1879; Turton v. Turton, 42 Ch. 
 Div. 128-1889; Hookman v. Pottage, 
 L. R. 8 Ch. App. 91-1872; Meneely 
 V. Meneely, 62 N. Y. 427-1875; Full- 
 wood V. FuUwood, 9 Ch. Div. 176-1878. 
 Newark Coal Co. v. Spangler, 54 
 
 been engaged in the coal business un- 
 der the name of the Newark Coal 
 Company (Incorporated), formed, with 
 others, in 1892, a corporation un- 
 der the same name and transferred 
 to it his business and good-will. He 
 was for four years president and a 
 director of the company. He then 
 ceased to be a director or oflScer, 
 though retaining stock, and went into 
 the coal business on his own account, 
 advertising himself as "Formerly of 
 the Newark Coal Company" and ap- 
 pealing for orders to the customers 
 "who have patronized him and his 
 company for the past eleven years." 
 Held (on application for preliminary 
 injunction), that he should not be 
 enjoined from representing himself 
 as formerly connected with the com- 
 pany. Court disapproves here of 
 Partridge v. Menck, 2 Sandf. Ch. 
 (N. Y.) 622-1845. 
 " Heide v. Wallace & Co., 135 Fed. 
 
General or Common Names op an Article, etc. 89 
 
 No such general name of the article to which it is applied can 
 be appropriated exclusively, for it is publici juris. If such a 
 name could be appropriated by any one person, it would be as 
 if a person's name could be used only by one person while to 
 the rest of the world he would be nameless. Such a name is not 
 capable of appropriation as a technical trade-maj-k, or as the 
 exclusive property of one person under the broader rules of un- 
 fair competition. "Flaked Oatmeal," "WhirHng Spray," "Air 
 Cushion," are names of this kind. In Marvel Co. v. Pearl,^^ the 
 question was as to the right of one person to appropriate, to the 
 exclusion of others, the elements of a mechanical construction 
 and as to the Umitations of the right of one person to manufac- 
 ture an article similar to that of another. The plaintiff made a 
 bulb syringe to use as a douche, by means of a whirling spray 
 discharge, under name "Whirling Spray." Defendant made 
 one like it, under name of "Whirl Spray." Defendant's spray 
 was made "in the form it must be made in order to accomplish 
 its purpose, and, if the making in that form is any representation 
 that the thing made came from the plaintiff, it is because of the 
 extent to which the plaintiff had made and displayed and sold 
 it before the defendants began." "Unfair competition," says 
 this court, "is not established by proof of similarity in form, 
 dimensions, or general appearance alone. Where such similarity 
 consists in constructions common to or characteristic of the 
 articles in question, and especially where it appears to result 
 from an effort to comply with the physical requirements essential 
 to commercial success, and not to be designed to misrepresent 
 the origin of such articles, the doctrine of unfair competition 
 cannot be successfully invoked to abridge the freedom of trade 
 competition." ^^ 
 
 346-1905 (C. C. A. 3d Cir. at p. "A. C. Pads," and the business had 
 
 347). originally been conducted by the 
 
 " 133 Fed. 160-1904 (C. C. A. 2d "Air Cushion Rubber Pad Co." De- 
 
 Cjj. _> fendant made rubber hoof pads very 
 
 " Citing Enterprise Mfg. Co. v. similar in appearance, stamping them 
 
 Landers, 131 Fed. 240-1904 (C. C. "Air Cushion," and "A. C. Con- 
 
 A. 2d Cir.); Revere Rvhher Co. v. soHdated Hoof Pad Co.," and regis- 
 
 Consolidated Hoof Pad Co., 139 Fed. tered "A. C." as a trade-mark. Held, 
 
 151-1905 (C. C. S. D. N. Y.). Com- that defendant was guilty of unfair 
 
 plainant's rubber hoof pads were competition, 
 
 known as "Air Cushion Pads" and Weingarten v. CMrles Bayer & 
 
90 
 
 Trade Names — General Principles 
 
 Although such names cannot be appropriated by one person, 
 they may nevertheless be fraudulently used; consequently thek 
 use is regulated and sometimes enjoined by equity, just as in 
 the case of geographic or family names. See chapter on "Simula- 
 tion of Articles Themselves." 
 
 § 51. Unfamiliar or Scientific Words Used as Names of 
 Goods. — A name taken from a foreign language, may be descrip- 
 tive to a person who is an expert Unguist, or if the name be made 
 up from chemical or other scientific terms, to one who is a trained 
 scientist. To the public, such words are usually unintelligible 
 and entirely nondescriptive, and appear to be artificial words. 
 For instance, the names " Pepto-Mangan " and "Pepto-Man- 
 ganate of Iron and Cascara" would not convey very different 
 impressions to an unlearned man, while to a chemist they might 
 convey very different meanings. On that ground they have been 
 held arbitrary and fanciful names. '^ 
 
 Co., 22 R. P. C. 341 (H. L. 1905). 
 Plaintiffs, an American firm, early 
 in 1902 began to advertise and sell 
 in England an improved form of 
 what were known as "straight- 
 fronted" corsets. Plaintiffs used the 
 words "Erect Form." Defendants, 
 English manufacturers, a few months 
 later, began to sell corsets of precisely 
 the same kind under the name "Erect 
 Form." Held, that defendants were 
 entitled to use the words "Erect 
 Form," since they had not yet ac- 
 quired a secondary meaning, but not 
 to use the peculiar scroll or manner of 
 printing. Plaintiffs held entitled to 
 that extent to an injunction and ac- 
 count of profits. 
 
 Parsons Bros. & Co. v. Gillespie & 
 Co., 15 R. P. C. 57-1897. Plaintiffs, 
 from 1890, sold "Flaked Oatmeal." 
 Defendants began in 1894 to sell 
 "Gillespie's Flaked Oatmeal." Their 
 packages differed entirely in get-up 
 from plaintiffs'. Held, that "Flaked 
 Oatmeal" were descriptive words, and 
 not an artificial term, and that de- 
 fendants were at liberty to use them. 
 
 at least where their packages and 
 labels in no respect resembled plain- 
 tiffs'. 
 
 " M. J. Breitenbach Co. v. Span- 
 genberg, 131 Fed. 160-1904 (C. C. S. 
 D. N. Y.), Holt, District Judge: "I 
 do not think that the name 'Pepto- 
 Mangan' is simply descriptive, within 
 the meaning of that term in the law 
 of trade-marks. It seems, if analyzed 
 by a person famihar with the Greek 
 and German languages, somewhat 
 descriptive, but I think it would 
 seem to the general public to be an 
 artificial and manufactured word. 
 The complaint alleges that the in- 
 ventor ' adopted the arbitrary and 
 fanciful words " Pepto-Mangan " as 
 the trade-mark and trade name' by 
 which to designate his preparation, 
 and the demurrer formally admits 
 this allegation. Evidence possibly 
 might lead to a different conclusion, 
 but on this demurrer I think it clear 
 that the court caimot assume that 
 the term 'Pepto-Mangan' is purely 
 descriptive, but must assume that it 
 is an arbitrary and fanciful trade- 
 
Aktificial or Made-up Words 
 
 91 
 
 No rule can be laid down which will create a definite line 
 of cleavage in these cases. " Pepto-Mangan " and "Pepto- 
 Manganate of Iron and Cascara" are held to be infringing names, 
 although both may accurately describe the article to which they 
 are offered; while "Cotosuet" is held not to infringe "Cottolene," 
 because "only a person of more than average heedlessness and 
 carelessness would mistake one for the other." " 
 
 § 52. Artificial or Made-up Words. — Many of the names 
 applied to goods are artificial, "made-up" i^ames, and such 
 names are the sole property of him who makes them up and uses 
 them on his goods. Practically all such names may be registered 
 as technical trade-marks. At first thought, it would seem that 
 the owner's right in such names must be so clear that unlawful 
 use of the name would be rare. This is far from the fact. Fre- 
 
 mark. That being so, it is not at 
 all clear, under the authorities, that 
 the defendants did not infringe the 
 rights of the complainant when they 
 adopted as the name of their prepa- 
 ration 'Pepto-Manganate of Iron 
 and Cascara.' Moreover, the com- 
 plaint alleges that the defendants 
 have substituted their tablets, and 
 suppUed them to customers who have 
 asked at their store for the com- 
 plainant's 'Pepto-Mangan.' This al- 
 legation is formally admitted by the 
 demurrer and constitutes a legal 
 cause of action, which, if supported 
 by evidence, would authorize a re- 
 covery" (at p. 160). 
 
 "N. K. Fairbank Co. v. Swift & 
 Co., 64 lU. App. 477-92-1896. The 
 plaintiff made "Cottolene," defend- 
 ants made "Cotosuet." Held, that 
 cottolene indicates an article derived 
 from the cotton plant, while cotosuet 
 indicates a substance derived from 
 the cotton plant and from suet, and 
 that an ordinarily intelligent person 
 would not be deceived. * * * "We 
 can well understand that a person who 
 desired to obtain, for cooking pur- 
 poses, a vegetable shortening, might 
 
 easily be induced by a grocer to ac- 
 cept 'cotosuet,' 'cookene,' 'golden 
 suet,' 'suetene,' 'cornene,' 'clare- 
 lene,' 'golden shortening,' or 'su- 
 preme shortening,' names applied 
 by other manufacturers to their re- 
 spective products of similar arjfcicles 
 to ' cottolene,' although such pur- 
 chaser had distinctly asked for " cot- 
 tolene.' It is well known that retail 
 vendors can, to the ordinary pur- 
 chaser, sell several similar articles that 
 which they, as such vendors, en- 
 deavor to dispose of, and that if the 
 articles are substantially alike the 
 seller will hear no 'kicking' as, in 
 the present case one witness testi- 
 fied he heard none when he gave 
 'cotosuet' to people who inquired 
 for ' cottolene.' There are doubtless 
 in this country millions of people to 
 whom, if Seipp's beer were given 
 when they called for Blatz's or vice 
 versa, would make no complaint. 
 "To a person of ordinary observa- 
 tion and attention, the distinction 
 between 'cottolene' and 'cotosuet' is 
 obvious. Only a person of more than 
 average heedlessness and carelessness 
 would mistake one for the other." 
 
92 
 
 Trade Names — General Principles 
 
 quently the name is taken bodily by competitors with no pretense 
 at varying it, while at other times it is used in some modified form. 
 As most of these names are technical trade-marks, the question of 
 secondary meaning is seldom involved, the issue being merely 
 whether or not the defendant's mark is a colorable imitation of 
 that of plaintiff. Usually deliberate use of an artificial name, 
 although no attempt has ever been made to register it as a trade- 
 mark will be enjoined and penalized, as for instance, "Char- 
 ter Oak Stoves," "She Cigars," "Club Soda," "Elastic Seam" 
 underwear.'* The rule here stated does not apply to cases where 
 
 ^'Filley v. Fassett, 44 Mo. 168- 
 1869. "The defendants accumulated 
 in the St. Louis market a quantity of 
 stoves (not made by plaintiff) with 
 the name 'Charter Oak' upon them, 
 which they held for sale as 'Charter 
 Oak Stoves.' They were aware of 
 the plaintiff's proprietorship of the 
 'Charter Oak' trade-mark, and were 
 proceeding to sell in defiance of the 
 plaintiff's rights." Plaintiff had been 
 the first to use "Charter Oak" as a 
 name of stove and had used it for a 
 long time when this suit was begun. 
 The mark was not registered. Injunc- 
 tion granted. 
 
 J. A. Scriven Co. v. Girard Co., 140 
 Fed. 794-1905 (C. C. S. D. N. Y.). 
 Lacombe, J.: Preliminary injunction 
 granted against use of words "Elastic 
 Seam" or "Stretchiseam," or similar 
 words, in connection with a longitu- 
 dinal yellow strip inserted in the gar- 
 ments. The operation of injunction 
 was suspended thirty days, to allow 
 changes to be made in stock on hand 
 etc. 
 
 Paine & Co. v. Daniells & Sons' 
 Breweries, Ltd., 10 R. P. C. 71-1893. 
 It was sought to restrain defendant 
 from selling "John Bull Beer," plain- 
 tiff having applied this name to its 
 beer for some time. It was not consid- 
 ered that the term "John Bull" in 
 such a connection was descriptive or 
 
 pvhlici juris, or that the exclusive 
 right to use it might not be acquired. 
 It was, however, held, that in this case 
 sufficient independent use of the 
 term had been made by other par- 
 ties, though in a different territory, 
 to defeat plaintiff's claim to an ex- 
 clusive right. 
 
 Sartor v. Schaden, 125 Iowa, 696- 
 1904; 101 N. W. 511. Plaintiff in 
 1894 began to apply to the boxes 
 containing cigars made by him a 
 stock label bearing the word "She," 
 and continued to use the word as 
 a kind of trade-mark or trade name, 
 building up a considerable business. 
 In 1899, he caused the word to be 
 registered as a trade-mark. The 
 labels were made by a New York 
 printer, and were used by others be- 
 sides plaintiff, being in some cases 
 applied to cigar-boxes outside of the 
 plaintiff's territory, and in the same 
 state, though not with his knowledge. 
 In 1902, defendant began to use a 
 similar label, with the word "She," 
 for cigars manufactured by him, and 
 it was shown that many purchasers 
 were misled as to their origin, suppos- 
 ing them to be plaintiff's. Held, that 
 defendant was guilty of unfair compe- 
 tition and should be enjoined from 
 labeling his cigars with . the word 
 "She." 
 
 Cochrane v. MacNish & Son, App. 
 
Names Appealing to the Eye as Similar 93 
 
 the name in question can be rightfully appUed to the goods of 
 anyone other than complainant.*^ 
 
 § 53. Names Appealing to the Eye as Similar. — Merchants 
 frequently attempt to imitate the name of a successful com- 
 petitor's house or company or brand of goods just closely 
 enough to get a name for themselves which, while different in 
 various particulars, will sound or appear to those not familiar 
 with both as the name of their competitor and cause their house 
 or their goods to be mistaken for that of their competitors. Some- 
 times this is accomplished by names combined with labels both 
 differing in details, but bearing the same salient or catch features, 
 so that a casual examination will detect no particular differences. 
 Again, it is accomplished by names which are so framed that 
 while they are quite different in appearance, yet when spoken, the 
 sound of them is very similar. Such names are characterized as 
 idem sonans. The average retail buyer is careless as to details. 
 He knows that "Honejmaoon" Whiskey is good, — at least he 
 recalls that a whiskey he knows to be good has a name very like 
 that. Perhaps he has not purchased it in a long time. He is 
 shown "Honey-Comb" Whiskey and is quite satisfied. The 
 
 Cas. 225-1896. Cantrell and Coch- other and noncompetitive rubber 
 rane first made "Club Soda" and goods, from using the name "Eureka" 
 long after defendants put on the in connection with its hose, even 
 market a brand of soda by same though that name was joined with an- 
 name. The court ^W that although other word (such as "Acme," etc.), and 
 no one could mistake MacNish's also from using that word in its cor- 
 soda for that of complainant, and porate title, so long as it should make 
 HO one in trade would be likely to or sell goods in competition with com- 
 be deceived, consumers would not no- plainant's. 
 
 tice the difference and would be de- '^'Magnolia Metal Co. v. Tandem 
 ceived. Smelting Syndicate, Ltd., 15 R. P. 
 Eureka Fire Hose Co. v. Eureka C. 701-1898. Plaintiffs manufao- 
 Rubher Mfg. Co., 69 N. J. Eq. 159- tured a variety of anti-friction metal 
 1905; 60 Atl. 561; affirmed on ap- to which they gave the fancy name 
 peal on opinion below; modification "MagnoUa Anti-friction Metal." De- 
 refused; s. c. 65 Atl. 870-1907. Com- fendants, however, were permitted to 
 plainant manufactured principally fire apply the same name, "Magnolia," to 
 and other hose, and it was well known their similar metal, as it did not ap- 
 by the trade name "Eureka," some of pear that "Magnolia" meant only the 
 the goods having also a subsidiary manufacture of the plaintiff, nor that 
 name in connection with this. Held, defendants used the name to pass off 
 that it was entitled to enjoin defend- their goods as those manufactured by 
 ant, a manufacturer of hose and also of plaintiff. 
 
94 Trade Names — General Principles 
 
 principal features of an article he has used before and found satis- 
 factory are all that he remembers. The value of the average 
 trade-mark, then, is not in its details but rather in its salient fear 
 tures, — the things about it the average buyer remembers. It 
 is this possibiUty of easily misleading purchasers that causes the 
 courts to be astute and zealous in condemning all spurious labels 
 and names of goods, and especially those which are not identical 
 but are similar. 
 
 Where one dealer used the name "West End Distillery Co." 
 and "Ky.'s Criterion" and "Honeymoon," and another adopted 
 the name "East End Distillery Co." and "Ky.'s Credential" 
 and "Honey-Comb" it was held fraudulent. The use of defend- 
 ant's names was lawful, but the use by him of the name "East 
 End Distillery Co." though in itself probably legitimate, was, 
 in connection with the use of the brands just mentioned, prima 
 facie evidence of intentional simulation.^ 
 
 In Pierce v. Guittard,^^ the plaintiff for thirteen years made 
 "German Sweet Chocolate," the name German being that of 
 Samuel German who was employed before 1867 by plaintiff, 
 and who in 1867 duly assigned to plaintiff the exclusive right 
 to use his name on the chocolate. Defendant made chocolate 
 which he called "Sweet German Chocolate." The court con- 
 sidered that the defendant's acts constituted fraud upon the 
 public, and on the authority of Lee v. Haley, ^^ and McLean v. 
 Fleming,^^ ordered a new trial, injunction having been denied 
 below. 
 
 Contrast with the above the following case as showing how 
 close the distinction is between similar and dissimilar names. 
 In Wells V. Ceylon Perfume Co.,^* plaintiff was the proprietor 
 of "Rough on Rats," a yellowish brown poisonous powder, 
 sold in boxes, for killing vermin, including mosquitoes. He also 
 had a trade-mark for the words "Rough on Rats" as applied to 
 vermin exterminators, but had never used the words "Rough on 
 Mosquitoes" or "Rough on Skeeters." Defendant put up and 
 sold, under the name "Rough on Skeeters," an orange-colored 
 liquid in bottles, having an odor obnoxious to mosquitoes. Held, 
 
 2» Kentucky Distilleries & Warehouse " L. R. 5 Ch. App. Cas. 155-1869. 
 
 Co. V. Wathen, 110 Fed. 641-1901 ^a gg u. §_ 245-1877; 24 L. ed. 828. 
 
 (C. C. Ky.). 2< 105 Fed. 621-1900 (C. C. S. D. 
 
 " 68 Cal. 68-1885; 8 Pac. 645. N. Y.). 
 
Names Idem Sonans 95 
 
 that defendant's preparation could not be mistaken for anything 
 that plaintiff offered, and that there was no unfair competition. 
 
 Plaintiff used name, "Dr. Morse's Compound Syrup of Yel- 
 low Dock Root." Later the defendants began to use for their 
 product the name, "Dr. Morse's Improved Yellow Dock and 
 Sarsaparilla Compound." This difference was held not suffi- 
 cient to be of any avail.^^ See chapter on "Evidence." 
 
 § 54. Names Idem Sonans. — The circuit court in N. K. 
 Fairbank Co. v. Luckel, King and Cake Soap Co.,^^ says that while 
 a trade-mark appeals to the eye a trade name appeals to the ear. 
 It is, therefore, natural that the unscrupulous competitor of the 
 makers of "Insectine" should name his product "Instantine." 
 Here again no rules can be laid down, as is seen by a comparison 
 of this case and the following one, where plaintiff manufactured 
 a remedy for the tobacco habit in the form of tablets and called 
 it "No-To-Bac." Defendant manufactured a remedy for the 
 same habit also in tablet form, to which it gave the name "Baco- 
 Curo." There were marked differences, in color and otherwise, 
 between the tablets and boxes of defendant and those of plaintiff, 
 and it was held there was no unfair competition.^^ If in this case 
 there had been any other features which might have rendered the 
 "Baco-Ciu-o" likely to be mistaken for the plaintiff's article it 
 would seem that the injunction might have been granted. 
 
 When a competitor of "Stephens' Blue Black" ink put out 
 "Steelpens Blue Black" ink, he made use of an idem sonans.^ 
 
 2s Alexander Bros. v. Morse, 14 R. I. were accompanied by entirely dif- 
 
 153-60-1884. ferent designs. 
 
 "N, K. Fairbank Co. v. Luckel Mrs. G. B. Miller & Co. Tobacco 
 
 K. & C. Co., 102 Fed. 327; 106 Fed. Manufactory v. Commerce, 45 N. J. L. 
 
 498-1901 (Cir. Ct. Oregon). 18-1883. Plaintiffs made and sold 
 
 ^Sterling Remedy Co. v. Eureka smoking tobacco wrapped in blue 
 
 Chemical & Mfg. Co., 70 Fed. 704- wrappers with the words "Mrs. G. B. 
 
 1895 (C. C. W. D. Wis.). Miller & Co.'s Best Smoking Tobacco, 
 
 M Stephens v. Peel, 16 L. T. N. S. 97 Columbia Street, New York," 
 
 i45-1867. Stephens' Blue Black Ink printed upon it. The defendant put 
 
 held infringed by Steelpens' Blue on the market smoking tobacco of 
 
 Black. Cahn v. Gottschalk, 14 Daly the same shape, color, size and appear- 
 
 (N. Y.), 542-1888; 2 N. Y. Supp. ance, with the words "Mrs. C.B.Miil- 
 
 13. "Maryland Club Rye Whiskey" ler & Co., Best Smoking Tobacco, 
 
 held infringed by "Maryland Jockey 4373^ Grove Street, Jersey City." 
 
 Club Rye Whiskey," although the Held fraudulent, 
 
 words as branded upon the barrels Sperry & Co. v. Perdval Milling 
 
96 Trade Names — General Principles 
 
 In Regis v. Jaynes & Co.,^ the plaintiff who appUed the word 
 "Rex" as a trade-mark or trade name, to dyspepsia tablets 
 made by her, was held entitled to restrain the defendant from 
 using the word "Eexall" in connection with similar tablets, al- 
 though defendant began the use of the word without any intention 
 to simulate. The same also is true of the case Noel v. Ellis, ^ 
 where complainant sold a medicine under the name of "Vitae- 
 Ore." Defendant, an agent of the plaintiff, began to sell a similar 
 preparation of his own, under the name "Vitalizing Ore," and the 
 dress of his packages in many ways resembled that of com- 
 plainant's. Held unfair competition. The use of the name 
 "Foresight Waist Company, Home of Fashion," for a store 
 placed directly opposite that of "Forsythe" a well-known maker 
 of waists, was held unfair.^^ 
 
 One purpose in the adoption of a name which is so similar in 
 soimd to that of a rival as to cause one to be taken for the other 
 is to cause purchasers to buy by ear, not by eye; to neglect the 
 label and depend o^ the name. 
 
 The name "Gold Drop" was applied by defendant to a wash- 
 ing powder, competing with "Gold Dust," a similar article made 
 by complainant and widely advertised and known. Different 
 styles of labels and packages were used. Fraud resulted despite 
 this, from the resemblance, in sound, of the names. "The trade 
 name differs from the trade-mark in this," said the court, "that 
 one appeals to the ear more than to the eye. The advertisements 
 of the name were for the purpose of having the intended pur- 
 chaser ask for 'Gold Dust' without his having any knowledge of 
 the character of the label on the package he was to receive, and 
 in this sense the fact that the infringer of the name used different 
 devices and symbols would have no great force." '" 
 
 Complainants adopted " Sorosis " as a trade-mark for a women's 
 shoe manufactured by them. After the shoe had become known 
 and popular, defendants, shoe manufacturers of the same city, 
 
 Co., 81 Cal. 252-1889; 22 Pac. 651. "Nod v. Ellis, 89 Fed. 978-1896 
 
 "Gennea," as applied to a meal or (C. C. S. D. Iowa), 
 
 cereal, held infringed by "Golden "Forsythe v. Gugy, N. Y. Sup. 
 
 Eagle Germ," used in connection with Ct., O'Gorman, J., Nov. 26, 1907. 
 
 very similar labels. " N. K. Fairbank Co. v. Luckel 
 
 29 185 Mass. 458-1904; 70 N. E. King & Cake Soap Co., 102 Fed. 
 
 480. 327-1900 (C. C. A. 9tli Cir.). 
 
Names Idem Sonans 97 
 
 began to use the name "Sartoris," changed later to "Sartoria" 
 and "Satoria," for a women's shoe of their make, very similar in 
 appearance to complainants' but inferior in quality to "Sorosis" 
 shoes. Such action constituted unfair competition, the similarity 
 in names and in appearance together rendering it very probable 
 that retail dealers would deceive purchasers into buying defend- 
 ants' shoes as and for complainants'.^^ 
 
 A medical company had built up a large sale of laxative tab- 
 lets called "Iron-Ox Tablets," but not containing oxide of iron. 
 A rival then began to put on the market "Compound Iron Oxide 
 Tablets," containing besides certain useful drugs, some iron oxide, 
 a practically useless ingredient, being one of the least soluble 
 forms of iron. There was no similarity in the dress of the two 
 packages. Held, that defendants should be enjoined from using 
 the words "Iron Oxide" without clearly distinguishing their 
 goods.^* 
 
 "Steinway" pianos have been long known as of high grade. 
 One Henshaw, a competitor, used on cheaper pianos the name 
 "Steinberg Pianos." No sufficient explanation was given of 
 the adoption of this name, and he was using the name as a trade- 
 mark in connection with a device on his goods bearing a general 
 resemblance to that used by the makers of Steinway pianos. An 
 injunction was issued. The court thought defendant's combina- 
 tion calculated to deceive, "None the less that pianos sold by the 
 defendant are very much cheaper and of lower quality than those 
 sold by the plaintiffs." ^* 
 
 " Little V. Kellam, 100 Fed. 353- Stuart v. Stewart, 91 Fed. 243 (C. 
 
 1900 (C. C. N. D. N. Y.); Inter- C. A.). Plaintiff put on market 
 
 national Plasmon Ltd., v. Plasmon "Stuart's Dyspepsia Tablets." De- 
 
 Ltd., 22 R. P. C. 543-1905 (Ch. fendant later began to sell "Dr. Stew- 
 
 Div.). Plaintiff sold various food art's Dyspepsia Tablets." Held, "It 
 
 preparations under names of which needs no argument to show that these 
 
 the word "Plasmon" formed part, names are idem sonans, and that to 
 
 such as Plasmon Cocoa, Plasmon use both of them in connection with 
 
 Biscuits, Beef Plasmon, etc. De- dyspepsia tablets must cause great 
 
 fendants began to sell tablets and confusion in a sale and great wrong to 
 
 powder for making a beverage which purchasers." 
 
 they called "Plasmonade." Held, '* Iron^Ox Remedy Co., Ltd., v. Co- 
 
 that defendants should be enjoined operative Wholesale Soc, Ltd., 24 R. P. 
 
 from selling any such preparations C. 425-1907 (Ch. Div., Parker, J.), 
 
 under any name of which "Plas- "^Steinway & Sons v. Henshaw, 5 
 
 mon" formed a part. R. P- C. 77-1887 (Ch. Div.). 
 
98 Tkade Names — General Pkinciples 
 
 Further illustrations of such approximations of rival trade 
 names are as follows: "Grape-Nuts" not infringed by "Grain- 
 Hearts Food;" ^* "Chartreuse" is infringed by "Chasseurs;" " 
 "Limette" infringes "Lmnetta;" ^* "Standard Computing Scales" 
 does not infringe "Standard Scales;" *^ "The Grocer" iafringes 
 the "American Grocer;" *" "The Penny Bell's Life and Sporting 
 News" infringes "Bell's Life in London and Sporting Chronicle;"*' 
 "Irving Hotel" infringes "Irving House;"*'' "Independent Na- 
 tional System of Penmanship" infringes "Payson, Dutton & 
 Scribner's National System of Penmanship;" *' "Liquor Acidi 
 Phosphorioi" does not infringe "Hosford's Acid Phosphate;" ** 
 "Six Big Tailors" infringes "Six Little Tailors;" « "New York 
 Commercial" does not infringe the "Commercial Advertiser;" *^ 
 "Cuticle" soap does not infringe "Cuticxira" soap; " "Cas- 
 torets" infringes "Cascarets." ^ 
 
 In Burnett v. Phalon,*^ the two words were: "Cocoaine" and 
 "Cocoine." In Rowley v. Houghton,^" the two words were "Hero" 
 and "Heroine." In Wamsutta Mills v. Allen,^^ the two words 
 were "Wamsutta" and "Wamyesta." In Glen Cove Mfg. Co. v. 
 Ludeling,^^ the words were "Maizena" and " Maizharina." In 
 Celluloid Mfg. Co. v. Cellonite Mfg. Co.,^^ the two words were 
 "Celluloid" and "Cellonite." In Enoch Morgan's Sons Co. v. 
 
 '« Postum Cereal Co. v. American " Bumford Chemical Works v. Muth, 
 
 HeaUh Food Co., 56 C. C. A. 360- 1 L. R. A. 44-1888; 35 Fed. 524^1888. 
 
 1902; 119 Fed. 848-1903. *^ Mossier v. Jacobs, 66 111. App. 
 
 " A. Bauer & Co. v. Order of Car- 571-1896. 
 
 thusian Monks, 56 C. C. A. ^85-1903; *^ Commercial Advertiser Assn. v. 
 
 120 Fed. 78-1903. Haynes, 26 App. Div. (N. Y.) 279- 
 
 S8 Dreimy & Son v. Wood, 127 1898; 49 N. Y. Supp. 938. 
 
 Fed. 887-1903 (C. C. Minn.). "Potter Drug & Chemical Corp. 
 
 '^Compuiing Scale Co. v. Stand- v. Pasfield Soap Co., 102 Fed. 490- 
 
 ard Computing Scale Co., 118 Fed. 1900, aflirmed. 
 
 965-1902; 55 C. C. A. 459. *> Sterling Remedy Co. v. Sper- 
 
 '"Am^ican Grocer Pub. Assn. v. mine Medical Co., 112 Fed. lOOO- 
 
 The Grocer Publishing Co., 25 Hun 1901 (C. C. A. 7th Cir.); 106 Fed. 
 
 (N. Y.), 398-1881. 414-1901 (C. C. A. 2d Cir.). 
 
 " Clement v. Maddick, 5 Jur. N. S. « 3 Keyes (N. Y.), 594-1867. 
 
 592-1859. to 2 Brewst. (Pa.), 303-1868. 
 
 "Howard v. Henriques, 3 Sandf. "Cox's Manual, 660-1878 (Com. 
 
 (N. Y.) 725-1851. PL Phila.). 
 
 *' Potter V. McPherson, 21 Hun '222 Fed. 823-1885 (C. C. S. D. 
 
 (N. Y.), 559-1880. N. Y.). 
 
 " 32 Fed. 94r-1887. 
 
Foreign Words as Names of Goods 99 
 
 Edier,5Hhe two words were "Sapolio" and"Saponit." InEstesv. 
 LesKe," the two words were "Chatter-box " and " Chatter-Book." 
 An injunction was issued in all these cases. Further illustrations 
 of names alleged to be similar in sound are found in the note.^^ 
 
 § 55. Foreign Words as Names of Goods. — If the general 
 or abstract name given an article in a foreign land, in the language 
 of that country is used for the same article here, it is equally an 
 abstract name and a descriptive term, and may be used by all 
 persons here just as it may be used by all persons in the foreign 
 country. In 1869, Selchow introduced in the United States a game 
 which he called Parcheesi, a name similar to the name given it 
 in India. Chaffee used the name, in selling the same game here. 
 Selchow alleged he had no exclusive right to the game, but that 
 he had exclusive right to use the name. Defendant claimed the 
 word is the Indian name of the game and hence descriptive and 
 can be used by anyone. Selchow built up a large demand for 
 Parcheesi and the name became widely identified with the game 
 by him. "It is clear to this court that, if defendant is permitted 
 to make and sell this game under the name ' Parcheesi,' they will 
 take away a part, if not a large part, of complainants' business 
 
 " Cox's Manual, 714-1890. 864. "Sunlight" and "American 
 "29 Fed. 91-1886 (C. C. S. D. Sunlight," 88 Fed. 484. "Royal" 
 N. Y.). and "Royal London," 76 Fed. 465. 
 ^ Rowland V. Michell, li R. F. C. "Health Food" and "Sanitarium 
 37-1896 (reported in Ch. Div. 13 R. Health Food," 104 Fed. 141. "Com- 
 P. C. 457). Plaintiff sold "Row- fort" and "Home Comfort," 127 
 landV Army and Navy Paregoric Fed. 962. "Sanitas" and "Condi- 
 Tablets." Defendant enjoined from Sanitas," 56 L. T. N. S. 621. "Port- 
 selling other goods as "Army and' land" and "Famous Portland," 52 
 Navy Paregoric Tablets," with wrap- N. J. Eq. 380. "Roy Watch Case 
 pers resembling plaintiff's. "Queen" Company" and "Canun-Roy Watch 
 and "Queen Quality," 105 Fed. 375. Case Co.," 58 N. Y. Supp. 979. 
 "Congress" and "High Rock Con- "Star" and "Lone Star," 51 Fed. 
 45 N. Y. 291. "Carlsbad 832. "Cashmere" and "Violets of 
 
 Sprudel Salt" and "Kutnow's Im- Cashmere," 88 Fed. 899. "Hohner" 
 
 proved Effervescent Carlsbad," 71 and "Improved Hohner," 52 Fed. 
 
 Fed. 167. "Home" and "Home 871. "Pride" and "Pride of Syra- 
 
 Delight," 59 Fed. 284. "ApoUin- cuse," 82 N. Y. 519. "German House- 
 
 aris" and "London AppoUinaris," hold Dyes" and "Excellent German 
 
 33 L. T. N. S. 242. "Glenfield" and Household Dyes," 94 Wis. 583. 
 
 "Royal Palace Glenfield," L. R. "Guinea Coal Company" and "Pall 
 
 5 H. L. 508. "Budweiser" and Mall Guinea Coal Company," L. R. 
 
 "Milwaukee Budweiser," 87 Fed. 5 Ch. App. Cas. 155- 
 
100 Trade Names — General Principles 
 
 to their great damage. That they intend so to do is plain, and 
 they use the word Parcheesi, not because it is the Hindoostanee 
 or foreign name of the game, for they are compelled to concede 
 it is not (although so very similar as before stated), but because 
 it is the name of the game given to it by .the complainants, whose 
 enterprise in business has caused it to become under that name a 
 popular game, and an extensive article of commerce, from the 
 manufacture and sale of which, under that name, large profits 
 have been and may be derived. It seems plain that to permit the 
 defendant to make and sell this article under the name 'Par- 
 cheesi' will legalize a fraud upon complainants' rights. It is 
 not intended to hold that defendant may not use the Hin- 
 doostanee name of this game, for that everyone has the right 
 to do." " 
 
 Complainant used the French word "brassiere" to designate 
 an article of women's wear made by him (a combined corset 
 cover and bust supporter), calling it the "De Bevoise Brassiere." 
 Held, that the word was descriptive and that defendant should 
 not be enjoined from selling a similar article under the name 
 "H. & W. Brassiere." '\ 
 
 § 56. Abbreviation of Names of Goods — Nicknames. — 
 Nickname's are not confined to persons. Goods have nicknames; 
 business houses have them. Oftentimes they are just as valuable 
 as the full name of the goods or the formal name of the house, 
 sometimes more valuable. Business firms with long, cumbersome 
 names, often become known among their neighbors and often 
 to the public that patronize them merely by the initials of the 
 names making up the full name of the firm or company. So of 
 names of commodities. "S. & W." revolvers are no doubt as 
 well known to the shooting public as "Smith & Wesson " revolvers. 
 Abbreviations like "B. & A.," "B. & M.," "D. L. & W.," are 
 names — not initials merely, — and the right to use them is valu- 
 able. C. G. V. and F. I. A. T. are names of importance in the 
 automobile world, although they are merely the initials of the 
 men or the firm building the cars bearing the names. For a com- 
 petitor to advertise, using such a name, which is a nickname of a 
 competitor, may well cause confusion and injury, and such a use 
 
 " Selchow V. Chaffee & Sekhow ^Charles R. De Bevoise & Co. v. 
 Mfg. Co., 132 Fed. 996-99-1904 (C. H. & W. Co., 69 N. J. Eq. 114r-1905 
 C. S. D. N. Y.). (Pitney, V. C). 
 

 O, t; 
 
 Fraudulent Use of Coincidences in MeAing ' 101 
 
 IS actionable under the rules of unfair competitiOTt^ — See § 61. 
 "It would be mere self-stultification for this court to assume 
 not to see what every practical person of intelligence must see 
 * * * that the phrases 'Le Page's Glue,' and 'Glue manu- 
 factured by Le Page/ * * * mean or come to mean, one and 
 the same thing, and that both will inevitably be soon styled alike 
 in the market." ^^ 
 
 There are certain brands which have more than one name. 
 The brand of milk sold as "Milkmaid" and "Milkmaid Brand" 
 came to be called by the public "Dairymaid" and "Dairymaid 
 Brand," and it was held that the latter names were trade names 
 denoting the plaintiffs' goods.*" So the words "Sportsman Special 
 Quality" brandy used with a label on which was a hunting scene 
 with two huntsmen. This brand came to be known as "Hunts- 
 man Cherry Brandy." ^^ 
 
 § 57. Fraudulent Use of Coincidences in Meaning of Names. 
 — It sometimes happens that the opportunity is offered to a 
 competitor to take advantage of a coincidence of meaning in two 
 names to his profit and the injury of his rival. For instance, in 
 the case of Pierce v. Guittard,^^ for thirteen years Samuel German 
 made "German Sweet Chocolate." Defendant began later to sell 
 "Sweet German Chocolate." Plaintiff showed that defendant, 
 asked what name the plaintiff used for their chocolate and when he 
 learned that it was "German Sweet Chocolate " said that he would 
 use the name "Sweet German Chocolate." The court held, that 
 on such a state of facts it was necessary to decide nothing farther 
 than that fraud existed. When plaintiff had estabUshed a busi- 
 ness for his goods and was carrying it on under a particular name, 
 for some other person to assume the same name with slight alter- 
 tions, in such a way as to induce persons to deal with him in the 
 belief they were dealing with the first-mentioned person was 
 fraud. This was a deliberate misuse of a rival's name, taking 
 advantage of its double meaning. The fact that a name already 
 possesses two distinct meanings as the word "German" did in 
 this case, will not serve as a protection against injunction if this 
 
 59 Le Page Co. v. Russia Cement " Re Barker & Son Trade-Mark, 53 
 
 Co., 51 Fed. 941-1892 (C. C. A. 2d L. T. N. S. 23. 
 
 Cir.) • 17 L. R. A. 354. "^ Pierce v. Guittard, 68 Cal. 68- 
 
 0" Anglo-Smss Milk Co. v. Met- 1885; 8 Pac. 645. 
 cdf, 3 R. P. C. 28. 
 
102 Trade Names — General Principles 
 
 coincidence is used as an agency of fraud. Here again the court 
 will consider whether or not the defendant was under any neces- 
 sity for making use of the word in his business, whether (to use 
 the phrase of Justice Holmes) it was "commercially practicable" 
 for him to have used some other name. 
 
 In Godillot v. American Grocery Co.,^^ Alexis Godillot used his 
 initial letters "A. G.," combined in a monogram for many years on 
 groceries made by him in France, and sold by him and by others, 
 as his agents, in the United States. In 1884, he sold the right to 
 use the mark in the United States to T. W. & Co. In 1894, the 
 T.-W. Co. resold the right to Godillot and later the T.-W. Co. 
 was sold to the American Grocery Company, which began business 
 at the former stand of the T.-W. Co., and began to use a mark 
 consisting of the letters "A. G. Co." in a monogram similar to 
 Godillot's. It applied this name to different articles, and claimed 
 the right to use these letters without restriction, in dealing in 
 groceries. The court said of this act: "There is no good reason 
 for such a close imitation of the plaintiff's trade-mark, and no 
 justification therefor." 
 
 In Plant Seed Co. v. Michel Plant and Seed Co.,^* plaintiff suc- 
 ceeded "Plant Brothers." Both parties to this action are cor- 
 porations. The defendant's predecessors incorporated under 
 the name of "H. Michel & Company," and later changed their 
 name to "Michel Plant and Seed Company." The plaintiff 
 alleges that this name was a scheme of piracy against the plain- 
 tiff's business and to deceive the public by diverting to them- 
 selves the trade of the plaintiff. The business of both the plaintiff 
 and defendant was the sale of plants and seeds. "The word 
 ' Plant ' is one of very common use, and may very properly be used 
 to designate a business and the fact that the 'Plant Family' were 
 the founders of the plaintiff's business and its principal stock- 
 holders affords no reason why the defendant could not use the 
 word to designate its business provided it was done for an honest 
 purpose; and, with the same proviso the defendant had the right 
 to adopt its present corporate name. We do not think that the 
 resemblance between the two corporate names is sufficiently close 
 to raise a probability of mistake on the part of the public, or to 
 show a design or intention on the part of the defendant to de- 
 
 »' Godillot V. American Grocery Co., i" 7 Mo. App. 313-20-1889. 
 71 Fed. 873-75-1896,(0. C. N. J.). 
 
Numerals and Letters as Names of Goods 103 
 
 ceive." »5 * * * "Under such circumstances the choice of 
 names by which a new company can designate its business so as 
 to satisfy the requirements of law and at the same time avoid 
 trouble with the other companies is very Umited, and it would 
 not be wise for the courts to adopt too stringent rules in deter- 
 mining controversies like the one under consideration. If such a 
 case is free from actual fraud, it is better for the courts to per- 
 mit some confusion and friction in business than to hamper and 
 discourage trade by judicial interference." 
 
 § 58. Numerals and Letters as Names of Goods. — Numerals 
 and letters are free to the use of all, yet the law of unfair 
 competition forbids their use to the detriment and loss of others. 
 If they are used by a defendant on his goods in evident imitation 
 of nmnerals or letters adopted by another to distinguish his goods, 
 thus disguising the defendant's own goods and inducing the 
 public to believe that they are the goods of the plaintiff, it is 
 unfair. Such a use of letters is well illustrated by Birmingham 
 Small Arms Co., Ltd., v. Webb & Co.^^ Plaintiffs made, among 
 other things, cycle accessories, including spanners. They stamped 
 most of their goods with the initials of their name, "B. S. A.," 
 and these letters had become associated with the plaintiffs in 
 the public mind. Their spanners bore a certain trade-mark in 
 addition to these letters. Defendants began to sell spanners 
 bearing the letters "B. A. S." which, it was claimed, stood for 
 "Best All-round Spanners." Held, that defendants should be 
 enjoined from using these letters, even though there was originally 
 no intention to deceive on defendant's part. 
 
 § 59. Numerals and Letters Used to Designate Grade of 
 Goods. — The United States Supreme Court holds as to the 
 right to the exclusive use of letters and numerals that: "Letters 
 or figures which, by the custom of traders or the declaration of 
 
 »6 Citing McCartney v. Garnhart, trade-mark the initials T. O. C. & 
 
 45 Mo. 593-1870. L- Co., with "Superior" above and 
 
 ««24 R. P. C. 27-1906 (Ch. Div.); "Quality" below, the whole being 
 
 Standard Table Oil Cloth Co. v. Trm- inclosed in an ellipse of about the 
 
 ton Oil Cloth & Linoleum Co., 71 N. J. same size as that in complainant's 
 
 Eq. 555; 63 Atl. 846-1906. Com- mark. Held, that while defendant 
 
 plainant used as a trade-mark the should not be required to discontinue 
 
 initials oTc, with "Standard" above the use of the letters T. 0. C. in its 
 
 and "Company", below, all inclosed mark, it should be enjoined from using 
 
 in an ellipse. Defendant used as a the eUipse in combination with them. 
 
104 Tkade Names — General Principles 
 
 the manufacturer of the goods to which they are attached are 
 only used to denote quality, are incapable of exclusive appropria- 
 tion, but are open to use by anyone like the adjectives of the 
 language;" *' but in Lawrence Mfg. Co. v. Tennessee Mfg. Co.,^^ 
 Fuller, C. J., said, after citing Witherspoon v. Currie and Thomp- 
 son v. Montgomery, that if "the letters 'L. L.' formed an im- 
 portant part of plaintiff's label and the defendant had used them 
 in such a way and under such circumstances as to amount to a 
 false representation which enabled it to sell and it did sell its 
 goods as those of the plaintiff and this without the plaintiff's 
 consent or acquiescence, then plaintiff might obtain relief within 
 the principle of the cases just cited." 
 
 Where a number is originally used -by a manufacturer to desig- 
 nate a particular kind of goods as distinguished from other pat- 
 terns or kinds made by him, and has come to designate in the 
 trade, goods of like kind or quality, other manufacturers who 
 make such goods may designate them by that number without 
 infringement.*' 
 
 This is squarely denied by the Rhode Island court, which 
 holds that a trader may not denote his corresponding styles of 
 goods by the numbers used on those styles by his competitor. 
 In American Solid Leather Button Co. v. Anthony,'"' the complain- 
 ant designated the different styles of buttons and nails made 
 by it by arbitrary numerals, such as "30," "40," "111," etc., by 
 which these different styles became known in the trade. Held, 
 that the defendants had no right to designate the corresponding 
 styles of their own similar goods by the same numerals, which 
 the court deemed to denote not style or quality alone, but origin 
 as well. This was held not to apply to certain of the numerals, 
 "60" and "70," which had previously been applied to the same 
 styles by another manufacturer. 
 
 "R. 12" on writing paper — a private mark for office conven- 
 ience — will not be restrained where it has no meaning in the 
 stationery trade.' ^ 
 Mr. Hesseltine says " that "words, letters, or numbers chosen 
 «' Manufacturing Co. v. Trainer, '» 15 R. I. 338-1886; 5 Atl. 626. 
 101 U. S. 55; 25 L. ed. 993. "Jlfarews Ward v. Ward, 40 N. Y. 
 
 «' 138 U. S. 537-1891; 34 L. ed. St. Rep. 792; 15 N. Y. Supp. 913. 
 997; 11 Sup. Ct. 396. ""Digest of the Law of Trade- 
 
 is Smith & Davis Mfg. Co. v. Smith, marks and Unfair Trade," Boston, 
 89 Fed. 486-1898 (C. C. N. D. 111.), p. 153-1906. 
 
Numerals Indicating Source or Origin 105 
 
 to designate the grade or quality of the product of a manufac- 
 turer, while not legal trade-marks, on proof of use with fraudulent 
 intent on the part of another will be protected on the ground of 
 unfair trade." He goes on to mention the use of the numeral 
 "303" by Gillott to denote a pattern of pens made by him," and 
 "H. H." and size "6" used by a plow maker on plows. Defend- 
 ant used "H. H. 6" and was enjoined.''* 
 
 Gillott long manufactured steel pens of a peculiar pattern, and 
 upon both the pens and the box labels were stamped the figures 
 "303" and the words "Joseph Gillott, extra fine." The number 
 "303" was not used to denote size or grade, but was arbitrarily 
 chosen to denote the make or pattern of the pen, and dealers 
 generally designated these pens as "303" pens. Held, that 
 plaintiff was entitled to the exclusive use of these figures as a 
 trade-mark, and defendants were not at liberty to sell pens 
 of the same design as plaintiff's, put up in similar boxes and 
 similarly stamped except that defendant's name was substi- 
 tuted for plaintiff's.''^ This was a case of unfair competition 
 although the courts and bar at that time (1872) did not 
 know the doctrines of the law of unfair competition under that 
 name. 
 
 § 60. Numerals Indicating Source or Origin. — Numerals 
 may come to indicate origin, — in a secondary sense, — may 
 come to mean the goods of the plaintiff when used as a part of 
 a mark, and when so used by another the court will enjoin the 
 use of the entire mark, figures and all. 
 
 In Lawrence Mfg. Co. v. Lowell Hosiery Mills,'"' the plaintiff 
 stamped upon its hosiery of a certain grade a device consisting 
 of an eagle surmounting a wreath inclosing its name, with the 
 figures "523" conspicuously printed below. Defendant for the 
 purpose of misleading customers, and, as the court found, with 
 that actual result, stamped its hosiery with an eagle surmounting 
 a double circle or garter, with the figures "523" printed below in 
 the same size and style as on plaintiff's mark. Defendant was 
 entitled to use the eagle and double circle, having adopted them 
 before the plaintiff had adopted its device. Held, that the nu- 
 
 " Gillott V. Kettle, 3 Duer (N. Y.), " Gillott v. Esterbrook, 48 N. Y. 
 
 624. 374^1872. 
 
 ^*Ransome v. BentaU, 3 L. J. Ch. " 129 Mass. 325-1880. 
 N. S. 161. 
 
106 Tbade Names — General Principles 
 
 merals indicated origin and that defendant should be restrained 
 from continuing their use as part of his mark. 
 
 In Shaw Stocking Co. v. Mack/'' complainant manufactured at 
 Lowell hosiery of high reputation and designated one style by 
 the figures "830." The label bore the trade-mark "Shawknit," 
 in script with a flourish and the words "Seamless Half Hose," 
 with the name of the manufacturer and the figures "830." De- 
 fendants at Albany bought large quantities of complainant's 
 goods and with complainant's consent, in effect, held themselves 
 out to the public as selling agents of complainant. They then 
 began to buy of a Connecticut manufacturer goods similar to 
 complainant's "830" style, but inferior, and sold them under a 
 label generally resembling complainant's in appearance and 
 bearing the word "Seamless" in script of similar style, including 
 the flourish, followed by the words "Half Hose, Double Heels," 
 with defendant's name and address and the figures "830." The 
 court enjoined them from using the figures "830" to designate 
 the Connecticut goods, and from using on the label the word 
 "Seamless" printed in imitation of "Shawknit." 
 
 § 61. Initials as Names of Goods. — The fact that the let- 
 ters used by the plaintiff are the initials of the defendant will 
 not excuse his adopting them as a trade name, if to do so will 
 cause confusion. Charles Bayer stamped his initials "C. B." 
 on corsets. After corsets so marked and so known had long 
 been on the market, Connell Brothers & Co., were not entitled 
 to mark their corsets conspicuously "C. B." with the addition 
 of "& Co." in small letters, nor to advertise them as "C. B." 
 corsets.'* See § 56. 
 
 § 62. Numerals Used to Designate Series, etc. — Series of 
 numbers used by a manufacturer of labels in its catalogues and 
 
 "21 Blatch. 1-1882 (C. C. N. Y.). with the letters "M. F. H.," claim- 
 's Bayer v. Baird, 15 R. P. C. 615; ing that it had acquired the right to 
 American Tin Plate Co. v. Licking use them frcnn a man whose initials 
 Roller Mill Co., 158 Fed. 690-1902 they were, although it appeared that 
 (C. C. Ky.). Complainant and its he did business and was known as 
 predecessor had long used as a trade- "Martin Herman," without the mid- 
 mark the letters M F in monogram, die initial. Held unfair competition; 
 inclosed in a circle, and their product it not being permissible to use such a 
 was known and designated in the mark as will tend to cause a rival's 
 trade as "M. F." plate. Defendant goods to be known by the same name 
 then began to make plate marked as those of the original manufacturer. 
 
Numerals Used to Designate Series, etc. 107 
 
 on boxes containing the labels, not primarily to indicate origin, 
 but to designate the color, shape and size of the label, each kind 
 bearing a different number, do not in themselves constitute 
 good trade-marks, nor is such manufacturer entitled on the 
 ground of unfair competition to restrain the use of the same 
 numbers in the same way and for a similar purpose by another 
 in connection with his own name, there being no simulation in 
 dress or style of package.^' 
 
 Where, however, the goods designated by the numbers are for 
 similar purposes, as, for instance, repair parts or batteries for 
 lights, and the like, and in addition one or more features of the 
 get-up of defendant's goods is made to resemble plaintiff's goods, 
 the use of the numbers will be considered as unfair. 
 
 In Avery v. Meikle,^ there is a full discussion of the relation of 
 unfair competition to the use of numerals denoting series of goods. 
 
 In Deering Harvester Co. v. Whitman and Barnes Co.^^ a dis- 
 tinction is made between letters and numerals used on parts 
 of a manufactured article to designate the size, shape and ca- 
 pacity of the article and to distinguish it from other sizes and 
 shapes with no intention or expectation of indicating by them 
 origin or source of manufacture, and marks which are designed 
 primarily to distinguish each of the articles to which they are 
 affixed, from similar articles produced by others. The court 
 holds, speaking of marks used to identify repair parts of mowing 
 and reaping machines, that "Any office which these marks per- 
 form as designations of origin is purely accidental" (p. 380). 
 It considers that all persons may make repair parts and hence 
 it is not unfair trade to use these symbols in such manufacture. 
 
 This case does not, it would seem, decide, finally, the questions 
 it discusses, for it is certain that if its principles be widely applied 
 great injury must be done to the business and reputation of manu- 
 facturers of intricate articles needing repau* parts, if it is possible 
 for consumers to be misled by a competitor's use of such numbers 
 or marks into buying cheap parts that may interfere with the 
 use of such articles. See chapter on "Simulation of Articles 
 Themselves." 
 
 ■'■'Bmnism Mfg. Co. v. Scharf '"81 Ky. 73. See also Westcott 
 Tag Label & Box Co., 135 Fed. 625- Chuck Co. v. Oneida Nat. Chuck Co., 
 1905 (C. C. A. 6th Cir.). 122 App. Div. (N. Y.) 260-1907. 
 
 81 91 Fed. 376. 
 
108 
 
 Trade Names — General Principles 
 
 § 63. Names of Goods Intended for Export. — The fact that 
 goods are exported to countries where other languages are spoken 
 may inject into the question of the use of a name the interpreta- 
 tion which may be placed upon the name by the foreign con- 
 sumers. Cases of this sort arise over colors of trade-marks, over 
 names of the goods, and over names of the houses which do the 
 exporting; and it has been held repeatedly that it is unfair com- 
 petition for a house to export goods under any label or name which 
 may tend to pass off its goods in the foreign market as those 
 of some other person regardless of whether the same names or 
 labels would have that effect at home.^^ In R. Johnston & Co. v. 
 Archibald Orr Swing & Company, ^'^ the plaintiff before 1875 was in 
 the habit of exporting to Bombay, Turkey, red yarn or twist, with 
 labels affixed to the inner covering of each package. The labels 
 were "of a triangular shape bearing in green and gold colours the 
 device of two elephants, with a drooping cloth or banner suspended 
 between them, upon which are printed the words 'Prime Turkey 
 
 '2 Govt V. Aleploglu, 6 Beav. 69- began to send shovels to Australia 
 
 1833. Gout made watches for Turk- 
 ish markets where they acquired great 
 repute by the marks on them, which 
 consisted of Gout's name in Turkish and 
 "Pessendede" (warranted) — and other 
 minor marks. Defendant had watches 
 made with the words "Ralph Gout" 
 and " Pessendede " in Turkish engraved 
 on same part of watch that plaintiff put 
 these marks. Injunction granted. 
 
 Collins Com/pany v. Oliver Ames & 
 Sons Corporation, 18 Fed. 561-1882 
 (C. C. S. D. N. Y.). Plaintiff was 
 a corporation organized in 1843 to 
 carry on an already established 
 business in Connecticut of making 
 edge tools, its corporate powers, 
 however, extending to the making 
 of all articles of metal. The trade 
 name stamped on the goods, both be- 
 fore and afterward, was "CoUins & 
 Co.," by which name its goods were 
 known all over the world. Defendant 
 was the successor of Oliver Ames & 
 Sons, well-known makers of shovels 
 and other tools. In 1856, this firm 
 
 stamped "Collins & Co.," this name 
 being adopted to take advantage of 
 the plaintiff's reputation for the 
 quality of its tools, which were then 
 sold in AustraUa, though plaintiff 
 manufactured no shovels at all until 
 long after 1856. Oliver Ames & Sons, 
 and defendants, their successors, also 
 used on their goods labels, indicating 
 that they were manufactured "by 
 Collins & Co., North Easton, Mass., 
 U. S. A." They used the name "Col- 
 lins & Co." only in the export trade. 
 Held, that the defendant had no right 
 to the use of the name "Collins & Co." 
 against plaintiff, although defendant 
 had long exported shovels under that 
 name while plaintiff had no trade in 
 shovels — in view of the fact that 
 since 1843, plaintiff had the right to 
 make shovels and of the circumstances 
 under which the use of the name by the 
 defendant originated. See also chap- 
 ters on " Trade Names " and " Geo- 
 graphical Names." 
 '^ 7 App. Cas. 219. 
 
Signs 109 
 
 red No. 40' (or other number according to the fineness of the 
 yarn)." The goods so labeled were consigned to plaintiffs' agents . 
 in Bombay, by whom they were sold in the interior and to local 
 consumers. Subsequently the defendant adopted a label con- 
 taining a representation of two elephants holding a suspended 
 banner for use in connection with the sale of similar, though in- 
 ferior goods, in the same market. 
 
 In dismissing an appeal from a decision of the Court of Appeals, 
 affirming a decision of Fry, J., granting an injunction to the plain- 
 tiff, the Lord Chancellor (Lord Selborne) wrote: 
 
 "But although the mere appearance of these two tickets could 
 not lead any one to mistake one for the other, it might easily 
 happen that they might both be taken by the natives of Aden or of 
 India, unable to read and understand the English language, as 
 equally symbolical of the plaintiffs' goods. To such persons or at 
 least to many of them, even if they took notice of the differences 
 between the two labels, it might probably appear that these were 
 only differences of ornamentation, posture, and other accessories, 
 leaAdng the distinctive and characteristic symbol substantially 
 unchanged. 
 
 § 64. Signs. — Business signs are not restricted to those bear- 
 ing the name of the owner of the business or that of the store or 
 business itself. A globe, a device or figure of any sort with which 
 the public comes to associate the business which it advertises, 
 is a sign; and a sign may be made use of by a trader who competes 
 unfairly to defraud a rival of business rightfully belonging to 
 him. Sometimes these signs are descriptive of a particular place 
 and cannot be used apart from that place; but usually the sign 
 goes with the business when it moves and the owner can restrain 
 one moving into the place which he has vacated from using the 
 sign he has been using.^^ 
 
 " Ghnny v. Smith, 2 Drew. & Sm. words "Thresher and Glenny" (the 
 476-1865. Defendant had been in name of plaintiffs' firm) in large let- 
 plaintiffs' employ and started in busi- ters. He had an awning m front of his 
 ness on his own account. Over his shop, which, when let down, would 
 shop he had his own name, Frank D. cover his own name and expose only 
 Smith, printed in large black letters the name of plaintiffs' firm. The 
 on a white ground; but on the brass court hsM that defendant was deceiv- 
 plates under the windows of his ing the pubhc, and an injunction was 
 shop he had engraved the word issued. Croft v. Day, 7 Beav. 84- 
 "from" in small letters, and the 1843; Levy v. Walker, 10 Ch.' Div. 
 
110 Trade Names — General Principles 
 
 If a name or sign device becomes associated in the public mind 
 with a particular locality to the extent that it becomes a sort of 
 finger-post used by buyers to pick out or find their way to a 
 particular dealer or to the place or building which is occupied 
 by such a dealer no rival of his may set up the same or a 
 similar sign or device if its use is likely to lead to confusion. 
 On moving into the neighborhood of a rival using a particular 
 sign, one may not adopt the same sign if this would cause 
 the public to confuse the two places of business. This has 
 been held of a globe used by one who moved into a store 
 next door to one already using a globe as a sign.^* It is the 
 custom in certain Hnes of trade, for concerns owning many 
 stores to paint the store fronts a peculiar color, and use 
 a sign of an individual type for the purpose of enabUng cus- 
 tomers to identify all the various stores as belonging to one con- 
 cern. The misuse of such a store get-up may easily be unfair 
 competition. 
 
 Sometimes there is no question as to form of the sign in ques- 
 tion, but it has been so placed as to cause confusion among those 
 using it, or seeking to be guided by it. For instance, in McFell 
 
 436-1879; Turton v. Turton, 43 Ch. company for the past eleven years." 
 Div. 128-1889; Hookman v. Pottage, Held (on application for preUminary 
 L. R. 8 Ch. App. 91-1872; Meneely injunction), that he should not be 
 V. Meneely, 62 N. Y. 427-1875; Fullr enjoined from representing himself 
 wood V. Fullwood, 9 Ch. Div. 178-1878. as formerly coimected with the com- 
 Newark Coal Co. v. Spangler, 64 pany. Court disapproves here of 
 N. J. Eq. 354^1896; 34 Atl. 932. Partridge v. Menck, 2 Sandf. Ch. 
 Defendant, having for some years (N. Y.) 622-1845. 
 been engaged in the coal business un- " Lippman v. Martin, 5 Ohio N. P. 
 der the name of the Newark Coal 120; 8 Ohio Dec. 485-1898. Where 
 Company (Incorporated), formed, one moved his clothing store next 
 with others, in 1892, a corporation door to a clothiog store called "The 
 under the same name and transferred Globe" and placed in his windows 
 to it his business and good^will. He and in conspicuous places globes rep- 
 was for four years president and a di- resenting the earth similar in appear- 
 rector of the company. He then ance to those used by "The Globe," 
 ceased to be a director or officer, and had misleading signs arranged, 
 though retaining stock, and went into and, in various ways, endeavored to 
 the coal business on his own account, induce the public to believe that his 
 advertising himself as "Formerly of store was "The Globe" or part 
 the Newark Coal Company" and ap- thereof, an injunction is warranted 
 pealing for orders to the customers restraining him from unfair competi- 
 "who have patronized him and his tion. 
 
Signs 
 
 111 
 
 Electric & Telephone Co. v. McFell Electric Co.,^^ a company 
 organized to compete with an existing company, adopted a name 
 very like that of this older concern, and took offices in the same 
 building. The new company then caused its name to appear on 
 the buUetin-board of the building directly above the older com- 
 pany's name. This was held unfair competition. 
 
 That the courts will restrain the use of certain signs is not to 
 admit that anyone has exclusive property in any shape, size, 
 color, or arrangement used on the sign.^^ The real basis of the 
 court's interference is the resulting confusion. If a dentist has 
 already a sign reading "United States Dental Association" and 
 another dentist comes along and exhibits a sign "U. S. Dental 
 Rooms" very like it and customers are misled, the court con- 
 siders it plainly an attempt to confuse the public and pass off the 
 newer ofl&ce as the one longer estabhshed.^' 
 
 86 110 lU. App. 182-1903. The 
 "McFell Electric and Telephone Com- 
 pany" was organized some years after 
 the "McFell Electric Company" and 
 took offices in the same building and 
 put its sign on the bulletin board of 
 the building directly above that of the 
 old company so as to give the impres- 
 sion that they were one and the same 
 company. Held, "The circumstances 
 justify the inference that it was for 
 some such purpose the location was 
 selected. This is not open and honest 
 competition. It has every appear- 
 ance of an attempt to mislead the 
 public, and to obtain by deception the 
 benefit of the patronage and cUentage 
 enjoyed by appellee. Courts of equity 
 give relief against such violations of 
 the rules of honest and fair dealing. 
 Citing Merchants' Detective Asso. v. 
 Detective Mercantile Agency, 25 111. 
 App. 250-1888." 
 
 ^<^Cady V. SchvMz, 19 R. I. 193- 
 1895; 32 Atl. 915; 29 L. R. A. 524. 
 
 <"Cody V. SchuUs, 19 R. I. 193- 
 1895; 32 Atl. 915; 29 L. R. A. 524. 
 Plaintiff ran dental offices which he 
 called "United States Dental Asso- 
 
 ciation," at Providence, R. I. De- 
 fendant opened an office in Pawtucket 
 and exhibited signs closely resembling 
 in shape, size, and color those of the 
 plaintiff. "We have no doubt" (said 
 the court, p. 194) "from the evidence 
 that these imitations were inten- 
 tional." Customers were misled. 
 "We are of the opinion that the com- 
 plainant can have no property in the 
 shape, size, color, or arrangement of 
 signs, without regard to the letters 
 which they bear, nor can he claim any 
 exclusive use of the words 'scientific 
 dentistry at moderate prices.' The 
 characteristics of the signs do not 
 differ from those which ordinarily 
 appear in business signs placed as 
 these are. The statement that a den- 
 tist does his work scientifically and 
 charges moderate prices for it is one 
 which any dentist may make and 
 disseminate if he can do so truthfully. 
 It ought not to be inapplicable 
 equally to all members of the pro- 
 fession. Neither of these things 
 tends to injure unlawfully the com- 
 plainant's business. 
 But we think the use of the words 
 
112 
 
 Trade Names — • Generajl Principles 
 
 These rules apply to signs of all descriptions — on stores, 
 wagons, hats of employees, and vehicles. 
 
 § 65. Street Addresses, etc. — Associated closely with signs 
 and business names are the cases arising over disputes as to 
 the use of a street address. It is not necessary to point out 
 that, sometimes confusion in the use of business addresses, may 
 be of serious importance. For instance, "Number 10 South 
 Water Street" was widely advertised by Hall, as the place where 
 
 'U. S. Dental Rooms,' and the use of 
 the letters 'U. S.' upon the windows of 
 defendant's office is a plain attempt to 
 c6nvey the idea that the business car- 
 ried on there is a branch of the com- 
 plainant's business, and should be re- 
 strained" (id. p. 194). The case of 
 CoUon V. Thomas, 2 Brewst. (Pa.) 
 308-1869; 7 Phila. 257, is to the same 
 effect. A simulated card issued by a 
 dentist, or sign put up by him, cal- 
 culated to deceive the uncautious or 
 unwary into believing that his rooms 
 are those of another dentist, thereby 
 depriving the latter of his just business, 
 will be restrained. 
 
 Johnson v. Hitchcock, 3 N. Y. 
 Supp. 680-1888 (Sup. Ct. Sp. Term). 
 Plaintiff, a real estate auctioneer, 
 extensively advertised suburban lots 
 for sale on the installment plan, 
 and used conspicuously in his ad- 
 vertising the representation of a 
 flag with stars arranged in an effective 
 and striking way along the borders. 
 Held, that he was entitled to restrain 
 defendant from using an advertise- 
 ment of a similar kind, — the repre- 
 sentation of a flag closely resembling 
 plaintiff's in design. 
 
 Goodwin v. Hamilton, 19 Pa. Co. Ct. 
 652-1897; 6 Pa. Dist. 705. Where a 
 hotel proprietor maintains, for carry- 
 ing travelers to and from the station, 
 a line of hacks with the name of his 
 hotel on them, the owner of a rival 
 hack line will be restrained from plac- 
 
 ing the same words upon his convey- 
 ances. 
 
 De Youngs v. Jung, 7 Misc. (N. Y.) 
 56-1894; 27 N. Y. Supp. 370. Plain- 
 tiff used its corporate name, "De 
 Youngs," as a trade-mark or trade 
 name in its photographic business. 
 Defendant, Solomon Jung, then en- 
 gaged in a similar business one block 
 away from the plaintiff, using, on 
 signs, stationery, etc., the name "The 
 Youngs" in script similar to that em- 
 ployed by the plaintiff, and with a 
 similar dash under the words. Al- 
 though defendant's business was only 
 two or three years old his circulars 
 referred to the well-known "reputa^ 
 tion of our work" and contained 
 copies of medals awarded at the 
 Exhibition of 1876. Held, that it was 
 unfair competition. Interlocutory in- 
 junction granted. 
 
 Eggers v. Hink, 63 Cal. 445-1883. 
 Plaintiff sold "Philadelphia Beer," and 
 his sign consisted of a row of barrels 
 marked "P. B.," with "Depot of the 
 Celebrated" above, and "Philadelphia 
 Lager Beer " below. Defendant used a 
 similar sign except that "F. B." was 
 substituted for "P. B." and "Fred- 
 ericksburger" for "Philadelphia." 
 Held, that plaintiff's sign could not be 
 protected as a trade-mark — it was 
 rather a description of the beer and for 
 all that appeared, defendant had an 
 equal right to its use. 
 
Street Addresses, etc. 
 
 113 
 
 he made threshing machines. A rival came along, and located 
 an office in South Water street, but made his goods two miles 
 away. Despite this he advertised that his goods were made at 
 "Number 10 South Water Street." The court held that these 
 facts showed a proper subject for the interference of equity on 
 the ground that, by estabhshing a business at a particular ad- 
 dress, the pubUc from the name and description used came to 
 know where or in what manner it was carried on, and hence the 
 owner of it had acquired a property in that address.^^ 
 
 >^The Glm & HaU Mfg. Co. v. C. 
 S. HaU, 61 N. Y. 226-1874. For 
 thirty years, Joseph Hall manufac- 
 tured threshing machines at No. 10 
 South Water street, in Rochester, N. 
 Y. Defendant, Charles Hall, bought 
 out Joseph Hall and adopted as his 
 trade-mark "The Old Joseph Hall 
 Agricultural Works, No. 10 South 
 Water Street, Rochester, New York." 
 Later, plaintiff, in 1869, opened an 
 office near defendant's, and printed 
 on its bills and signs "The Glen & 
 Hall Manufacturing Company, Num- 
 ber 10 South Water Street, Roch- 
 ester, N. Y." The plaintiff's shops 
 were not in Rochester and were two 
 miles away from the shops of the 
 defendant. It took the office in 
 Water street and adopted the "Num- 
 ber 10" with the intention of inter- 
 fering with the defendant's business. 
 HeM, it was a species of property 
 and on that ground is under the pro- 
 tection of a court of equity. It was 
 not denied by the plaintiff that the 
 words "Number ten" did not cor- 
 respond to any street number. It 
 was the opinion of the court that the 
 invasion of the defendant's right was a 
 proper ground for the protection of 
 equity and that, in an action brought 
 by the plaintiff, a counterclaim on the 
 part of the defendant alleging that he 
 is the owner of the name that the plain- 
 tiff has wrongfully used, and that 
 
 plaintiff be restrained from such use 
 and be ordered to pay damages will be 
 upheld. " It would follow, from these 
 principles, that if a person had estab- 
 lished the business at a particular 
 place, from which he has derived, or 
 may derive, profit and has attached 
 to that business a name indicating to 
 the pubUc where or in what manner 
 it is carried on, he has acquired a 
 property in the name which will be 
 protected from invasion by a court 
 of equity, on principles analogous to 
 those which are appUed in case of 
 the invasion of a trade-mark" (id. 
 p. 231), and the name may be severed 
 from the place where it has been used, 
 for "It seems plain that if a banking- 
 house had acquired a name, such as 
 that of Baring Brothers, though there 
 were no partner of the name of Bar- 
 ing, it would, on general principles of 
 law, and independent of a statute pre- 
 venting the use of fictitious names 
 have a property in such name, without 
 reference to the particular place where 
 the business was carried on. Though 
 the name might be inseparable from 
 the business, it would be separable 
 from the premises; so that the business 
 might, for example, be carried on on 
 the opposite side of the street." 
 
 Harper v. Pearson, 3 L. T. N. S. 547. 
 Defendants occupied a place formerly 
 used by Harper & Pearson. They did 
 not have the clay mines used by that 
 
114 
 
 Trade Names — General Principles 
 
 § 66. Use of Sufiix " & Co.," etc. — One person may use a 
 name with the suflBx "& Co." This fact does not estop him 
 from showing that he alone is the real party in interest.*^ 
 
 finn, but they advertised that they 
 were "late Harpers & Moore." Fol- 
 lowed in Glen, etc., Co. v. HaH, 61 N. Y. 
 226-1874. See also Marsh v. Billings, 
 7 Cush. 322. 
 
 Croft V. Day, 7 Beav. 84-1843. 
 The "Day & Martin blacking" 
 was put up in bottles with a label, etc., 
 containing as the place of manufac- 
 ture "97 High Holborn." The ar- 
 ticle was made by the executors of 
 the surviving partner of Day & Mar- 
 tin, who continued the business in 
 their name. The defendant, Day, a 
 nephew of the testator, associated 
 with a person named Martin and set 
 up a blacking manufactory, using 
 the old firm name and labeUng their 
 bottles in a manner closely resem- 
 bling those of the old establishment. 
 In the cut on the label they, however, 
 substituted the royal aims for those 
 of the original firm, and inserted 
 "90k Holborn HiU," in the place of 
 "97 High Holborn." Lord Langdale 
 said the defendants' contrivances 
 were calculated to mislead the bulk- of 
 the unwary public into the impres- 
 sion that the new concern was con- 
 nected with the old manufactory and 
 thus to benefit the defendant, to injure 
 the plaintiff, and to deceive the pub- 
 lic; and he, therefose, directed an in- 
 junction to issue. 
 
 Pierce v. Franks, 15 L. J. (Ch.) N. S. 
 
 122 (Jan. 13, 1846). The complainant 
 was in the habit of seUing tooth- 
 brushes and nail-brushes on which were 
 stamped "Smyth's Bond Street,'' that 
 being the trade-mark to which he was 
 entitled; and they also had stamped 
 on them certain figures and letters 
 which were his private marks, and 
 were used to distinguish the different 
 sizes and patterns. The bill alleged 
 that the defendant made and sold 
 brushes which were stamped with 
 the same words and the same pri- 
 vate trade-marks. An injunction 
 was granted restraining the defend- 
 ant from selUng brushes on which 
 "Smyth's Bond Street" was stamped. 
 
 Street v. Union Bank, 30 Ch. Div. 
 156-1885. Street & Co., of Cornhill, 
 for a long time used "Street, London," 
 as a telegraphic address. In 1882, 
 same words were registered as tel- 
 egraphic address of defendant. In- 
 junction asked. Plaintiff was adver- 
 tising concern. Defendant was a bank. 
 Their business did not conflict. 
 Held, that "All the court is asked to 
 prevent is merely an inconvenience. 
 To my 'mind, the Union Bank of Spain 
 and England has done nothing un- 
 lawful" (at p. 158). 
 
 ^' Jones V. Goodrich, 17 111. 380; 
 Moller V. Lambert, 2 Campb. 548; 
 Teed v. Elworthy, 14 East, 210; Green- 
 leaf Evidence, 278. 
 
CHAPTER VI 
 
 Family Names or Surnames, as Trade Names 
 
 Section 67. Nature of the Right to Use One's Own Name. 
 
 68. The Right of Every Man to Use His Own Name: Its Character and 
 
 Misconceptions Regarding It. 
 
 69. Early Cases Dealing with the Use of Personal Names. 
 
 70. Explanatory Phrases as a Means of Eliminating Confusion in 
 
 Family Names. * 
 
 71. The Inadequacy of the Explanatory Phrase Rule. 
 
 72. Acquired Generic or Secondary Meaning of Personal Names. 
 
 73. Family Names as Generic or General Names of Articles. 
 
 74. Surnames Used as Abbreviations. 
 
 75. Names Made Up of Stirnames QuaUfied by Other Words or 
 
 Symbols. 
 
 76. Surnames Acquired Otherwise than by Descent. 
 
 77. Voluntary Change of Personal Name. 
 
 78. Rights Acquired by Him Who First Uses a Surname in Business. 
 
 79. Family Names as Corporate Names. 
 
 80. Rights of Descendants to the Family Name Used in Business by an 
 
 Ancestor. 
 
 81. Prefixes, Suffixes and First Names. 
 
 The prestige which the pubHc attaches to many family names 
 used in business is perhaps the most interesting phase of trade-^ 
 mark and unfair competition law. There are many classic business 
 names which are the last names of men long dead. The individ- 
 uality of the person who first apphed such a name to the business 
 that still uses it, has long since been forgotten. The particular 
 abilities which he possessed and which he contributed to the 
 business were lost to it long ago. The processes he devised and 
 used have been abandoned. The business which, in his hands, 
 was devoted to one phase of trade may now be devoted to another 
 phase. There may now be no one connected with the concern 
 that bears the founder's name or is in any way related to him. 
 Despite all these things, this man's name in this sphere of trade 
 may be of immense value. In it the public may place confidence 
 above all names in that commercial field, and this name as now 
 used by this business house, although not associated with any 
 
 115 
 
116 Family Names or Surnames, as Trade Names 
 
 member of the family of which it is the surname, or with any 
 person at all, lives on, a piece of industrial property, which at 
 the bar of the court has rights very similar to, if not identical 
 with, those of him who first attached it to the business that it 
 still identifies. Fifty years ago Uttle attempt was made by 
 the courts to deal with the protection of the good-will that is 
 bound up in such names; but as the law of unfair competition has 
 developed, distinct rules have been laid down regulating the 
 relative rights of the owners of a business identified, by such a 
 name and the rights of other persons who also bear this same name 
 as a patronymic. 
 
 The attitude of the courts tdward questions arising as to family 
 names will be made clearer by a study of the protection given 
 to-day by equity to various other personal rights. The question of 
 personal rights is a far different question now from what it was a 
 century ago. To these changed conditions equity must and does 
 adapt its remedies, often varying its method of rehef, although 
 never changing its few rules or curtailing its powers by specific 
 limitation or definition. 
 
 § 67. Nature of the Right in One's Own Name. — A man 
 has distinct trade rights in his family or personal name. Just 
 what is their extent is disputed, but rights he most assuredly has, 
 and these rights are such as usually will be protected by an equity 
 court. The general impression is prevalent that a man's name, 
 like his house, is particularly his own; and an Englishman or 
 American is quick to resent any interference with such rights by 
 the courts. The common law has taught them that "every man's 
 house is called his castle. Why? Because it is surrounded by 
 a moat or defended wall? No. It may be a straw-built hut: 
 the wind may whistle through it, the rain may enter it, but the 
 king cannot." ^ And his name is dearer to him than his house. 
 
 It is only in recent times that the necessity for protection of 
 one's name by injunction has become important. Formerly, libel 
 and slander afforded about the only ways by which one could 
 injure another's name. Now, through the multiplication of 
 advertising methods and through the present means of reaching 
 the public the instruments at the hand of a person disposed to 
 injure his competitor's good name and business reputation are 
 legion. 
 
 1 Stephens' Dig. Evidence, Introd. p. 23. 
 
Right op Every Man to Use His Own Name 117 
 
 As said above, every man has a right to the use of his own name. 
 That is the first principle. To this the law of unfair competition 
 has added another — no man may use even his own name in such 
 manner as to injure another unfairly or fraudulently in his busi- 
 ness. " While it is true that every man has a right to use his name 
 in his own business, it is also true that he has no right to use it for 
 the purpose of stealing the good-will of his neighbor's business, 
 nor to commit a fraud upon his neighbor, nor to trespass upon 
 his neighbor's rights or property; and while it is true that every 
 man has a right to use white paper, it is also true that he has no 
 right to use it for making counterfeit money, nor to commit a 
 forgery." ^ 
 
 § 68. The Right of Every Man to Use His Own Name in Bus- 
 iness : Its Character, and Misconceptions Regarding it. — The 
 
 2 Garrett v. T. H. Garrett & Co., 78 
 Fed. 472-1896; 24 C. C. A. 173, 
 Croft V. Day, 7 Beav. 84^1843. Ex- 
 ecutors of Day sought to restrain 
 nephew of Day from making blacking 
 under label similar to those used by 
 Day & Martin. "His (plaintiff's) 
 right is to be protected against fraud, 
 and fraud may be practiced against 
 him by means of a name, though the 
 person practicing it may have a per- 
 fect right to use that name, provided 
 he does not accompany the use of it 
 with such other circumstances as to 
 effect a fraud upon others" (id. p. 88). 
 "He has a right to carry on the busi- 
 ness of a blacking manufacturer hon- 
 estly and fairly; he has a right to the 
 use of his own name. I wiU not do 
 anything to debar him from the use of 
 that, or any other name calculated to 
 benefit himself in an honest way; but 
 I must prevent him from using it in 
 such a way as to deceive and defraud 
 the public, and obtain for himself, at 
 the expense of the plaintiffs, an undue 
 or improper advantage" (id. p. 90). i 
 Cited with approval in Brown Chemi- 
 cal Co. V. Meyer, 139 U. S. 540-1890; 
 35 L. ed. 247; 11 Sup. Ct. 625. 
 
 Holloway v. Holloway, 13 Beav. 209- 
 1850. Thomas Holloway made and 
 sold pills, etc., at 244 Strand as "Hol- 
 loway's PiUs and Ointment." Henry 
 Holloway, a brother of the plaintiff, 
 then sold pills at 210 Strand as "H. 
 HoUo way's pills and ointment," using 
 boxes similar to those of plaintiff, and 
 copying the latter's labels and wrap- 
 pers. The evidence disclosed an in- 
 tention to profit by this similarity. 
 Held, Henry had no right to deceive 
 the public and make them beheve he 
 was selling Thomas' goods. "The 
 defendant's name being Holloway, he 
 had a right to constitute himself ven- 
 dor of HoUoway's pills and ointment, 
 and I do not intend to say anything 
 tending to abridge any such right. 
 But he has no right to do so with 
 such additions to his own name as to 
 deceive the public and make them be- 
 lieve that he is selUng the plaintiff's 
 piUs and ointment" (id. p. 213). Fol- 
 lowed in Brawn Chemical Co. v. Meyer, 
 139 U. S. 540-1890; 35 L. ed. 247; 
 11 Sup. Ct. 625; and McLean v. 
 Flmiing, 96 U. S. 245-1877; 24 L. ed. 
 828. 
 
118 Family Names or Surnames, as Trade Names 
 
 right to do business under one's own name is apparently the most 
 sacred right which is known to law. This seems to be the only- 
 right which it is impossible to forfeit or lose by misconduct. 
 Rights such as the right to Uberty, the pursuit of happiness, to 
 hfe, to the custody of one's own children, may be lost by mis- 
 conduct, but the courts have held that a man cannot be deprived, 
 under any circumstances, of his right to do business under his 
 own name, regardless of the depth of fraud and deceit to which 
 he may stoop in its use. 
 
 Not only can he not forfeit the general right to use his own 
 name, but it now seems to be the law in this country that he can- 
 not forfeit his right to use it in even the smallest corner of the 
 commercial world or in connection with the sale of the most 
 insignificant article in the most limited way. 
 
 An atmosphere has grown up around these cases charged with 
 the idea that this question turns largely on whether or not the 
 plaintiff is entitled to a monopoly of the name in question. A 
 fair example of the expression of this idea is found in the Knabe 
 Piano case. The court there said: "It is now settled beyond con- 
 troversy that a family name is incapable of exclusive appropria- 
 tion. The right of every man to use his own name in business was 
 declared in the law before the modern doctrine of unfair com- 
 petition had arisen." ^ 
 
 It is axiomatic that a family name is incapable of exclusive 
 appropriation in trade. It is not that proposition which is here 
 questioned; it is the fallacy of its application by the courts to 
 unfair competition cases which we endeavor to demonstrate. In 
 a case involving the protection of trade-mark rights, the plaintiff, 
 to recover, must establish that he is entitled to the exclusive use 
 of a symbol in connection with an article of trade. A true monop- 
 oly is involved. Any use of an imitation of the sjTnbol in connec- 
 tion with a similar article of trade, the courts will enjoin. On the 
 other hand, where a person seeks the protection of the courts 
 against the unfair use of a family name in business, no trade- 
 mark rights are involved, and no monopoly is claimed. The bases 
 of the two classes of cases are different, but the reUef sought is the 
 same and the character of the injury suffered by the defendant is 
 the same. Apparently the courts are reluctant to grant as drastic 
 
 ^ Stix, Boer, etc., v. American Piano Co., 211 Fed. 274; Amidon, J., C. C. 
 A., 8th Cir., 1913. 
 
Right of Every Man to Use His Own Name 119 
 
 relief in family name cases as in strict trade-mark cases, believing 
 that in so doing they will place the two classes of cases on the 
 same legal basis; in other words, that if full protection to the 
 plaintiff is granted against the unfair use of a family name, the 
 court has created in him a monopoly in the use of that name 
 similar to the trade-mark monopoly. Accordingly, even in cases 
 of the most flagrant misuse of a family name, the courts refuse to 
 absolutely enjoin a person from using his own name, as they 
 would absolutely enjoin the use of a trade-mark, but attempt to 
 nullify the wrong by compelling the use of distinguishing marks. 
 
 In so ruling, the courts overlook the fact that no demand is ever 
 properly made in a family name case that the plaintiff be decreed 
 to be exclusively entitled to the use of the name in question, as 
 against all other persons of that name. The relief sought is to 
 compel the defendant to cease abusing his right to use a family 
 name, to the injury of the plaintiff. An injunction forbidding 
 such use in no case necessarily creates a monopoly. Everyone is 
 free regardless of such a decree to continue the use of this name 
 in all ways that do not cause confusion and injury. All persons 
 bearing the family name involved, are still free to use the name in 
 all ways that do not cause injury to others. The whole problem 
 is as to the relative importance to the public of the right of the 
 defendant to use his name as an instrument of fraud and confusion, 
 and the right of the plaintiff to sell his goods as his goods and the 
 right of the public to be free from confusion in buying plaintiff's 
 goods. 
 
 The second statement of the court in the Knabe case was that 
 "the right of every man to use his own name in his business was 
 declared in the law before the modern doctrine of unfair competi- 
 tion had arisen." This is undoubtedly true; but in this case, as ki 
 so many others, the court applied the rule that under no circum- 
 stances, and regardless of the fraud which the court might find 
 the defendant had committed, he could not be deprived of his 
 right to use his own name. 
 
 The law relating to both common law trade-marks and the use 
 of names, semi-pubUc in character, in trade, has been derived from 
 the earlier cases which involved fanciful names. In all of these 
 cases it was held to be fundamentally necessary, in order that a 
 person might be protected in the use of a name in trade, to show 
 that the name was capable of being set aside to his exclusive use. 
 
120 Family Names or Surnames, as Trade Names 
 
 Later it was found that this rule worked the grossest injustice 
 in certain cases; for users of trade-marks have always refused to 
 limit their choice of trade-marks to words which could be pure 
 common law trade-marks, but instead constantly adopt as their 
 trade insignia, words in which it is impossible for them to have 
 an exclusive right. As a result, therefore, it was found that, if 
 relief in these cases was to be limited by this rule, making it nec- 
 essary for the plaintiff to show an exclusive right to his name, the 
 greatest hardship would be suffered through the pirating of the 
 good-will of concerns using as trade insignia, names of a semi- 
 pubUc character. 
 
 Where a semi-public name is adopted as a trade name, and that 
 adoption is followed by long-continued, honest and effective use 
 of the name as a trade name, there is invariably created an associa- 
 tion between the name and the person using it, which association 
 becomes extremely valuable. It is the property right in this asso- 
 ciation between these names and the business of the persons 
 using them that the law of unfair^ competition aims to protect. 
 While this association is the same in character as the association 
 between a common law trade-mark and the user of it, if no pro- 
 tection could be given unless an exclusive right to the use of every 
 name was proven, there could be no protection of the good-will 
 in public names used in trade. 
 
 It is apparent, therefore, that the principles involved in an ac- 
 tion for the protection of a common law trade-mark are clearly 
 distinguishable from those upon which an action for the infringe- 
 ment of a family name are based, in respect to the necessity of 
 proving exclusive rights in the name. 
 
 There is good reason to beUeve that the failure of the courts in 
 the past to work out some doctrine by which adequate reUef 
 can be administered by them in cases involving the use of family 
 names, is due to the belief that if a person be enjoined from using 
 his family name in a particular business, the court, in issuing that 
 injunction, has created a monopoly and excluded every other 
 person of the same family name from doing that sort of business 
 under his own name. A decree forbidding one person to use his 
 name in one Une of business, because it creates confusion and 
 fraud among buyers and injmy to the plaintiff, affects only the 
 defendant in that suit. It is not a binding adjudication on any 
 other person regardless of whether his name be that of the de- 
 
Early Cases 121 
 
 fendant or not. The rights of third persons are not lessened or 
 impaired, and if such a person can find a way by which he can 
 enter the business in question and make use of the same family 
 name as that of another already in the field, so as not to create a 
 situation of fraud and confusion, such a decree will not prevent 
 his doing so. His rights cannot be pre-adjudicated in a case to 
 which he is not a party. When a case arises where a defendant 
 has deliberately misused his name, — has made it an instrument 
 by use of which he has defrauded another, — he should be for- 
 bidden to longer use it, not in all ways, but merely forbidden to 
 use it as a business name in the line of business in which he has 
 abused it. 
 
 § 69. Early Cases Dealing with the Use of Personal Names. — 
 In 1853, Burgess v. Burgess ^ was decided. This case held that 
 every man had a full right to use his own name. Father and 
 grandfather had sold "Burgess's Essence of Anchovies" since 
 before 1800. The son then opened a competing business, and 
 he too called his goods "Burgess's Essence of Anchovies." His 
 right so to do was upheld. Lord Justice Bruce saying: "All the 
 Queen's subjects have a right, if they will, to manufacture and sell 
 pickles and sauces, and not the less that their fathers have done 
 so before them. All the Queen's subjects have a right to sell 
 these articles in their own names, and not the less so that they 
 bear the same name as their fathers.* * * * No man can 
 have any right to represent his goods as the goods of another 
 person, but in applications of this kind it must be made out that 
 the defendant is selhng his own goods as the goods of another. 
 When a person is selling goods under a particular name, and 
 another person, not having that name, is using it, it may be pre- 
 sumed that he so uses it to represent the goods sold by him as the 
 goods of the persons whose name he uses; but where the defendant 
 sells goods under his own name, and it happens that the plaintiff 
 has the same name, it does not follow that the defendant is selling 
 his goods as the goods of the plaintiff. It is a question of evidence 
 in each case, whether there is false representation or not" (id. 
 
 pp. 904r-5). 
 
 This case has been widely cited and repeatedly distinguished 
 and limited by the courts of both England and this country. For 
 
 3 3 De G. M. & G. 896. ■* See also Badgers v. NffuM, 6 
 
 Hare, 325-1846. 
 
122 Family Names or Sttrnames, as Trade Names 
 
 instance, in Massam v. Thorley's Cattle Food Co.,^ the court said: 
 "Now Burgess v. Burgess has been very much misunderstood if it 
 has been understood to decide that anybody can always use his 
 own name, as a description of an article, whatever may be the 
 consequence of it, or whatever may be the motive for doing it, or 
 whatever may be the result of it." 
 
 Lord Turner, in a concurring opinion in the Burgess case itself, 
 laid down important limitations on the right to use one's own 
 name as a trade name. 
 
 Lord Esher in Turton v. Turton, a case decided in 1889, thought 
 that, in addition to using the same family name that was in use 
 by some one already established in business under that name, one 
 must also do other acts tending to create confusion in the mind 
 of the pubUc, in order to be held guilty of unfair competition.® 
 
 6 14 Ch. Div. 748-52-1880. 
 
 « 42 Ch. Div. 128-1889, The names 
 in question were "Thomas Turton & 
 Sons" and "John Turton & Sons." 
 Lord Esher, M. R., held in substance 
 as follows: "Now it is not proved 
 against the defendant, that he did 
 anything in the way of his trade which 
 tended to give any other meaning to 
 the name in which he carried on his 
 business, or which could give any other 
 meaning to it, than merely the fact 
 that he did carry on business, and was 
 in partnership with his sons. He had 
 not done anything with the intent or 
 for the purpose of making the use 
 of his simple name look as if his name 
 was the name of the plaintiffs. In 
 some cases, besides using the name, 
 parties have, to use what I think is a 
 happy phrase of my brother Cotton's, 
 'garnished that use,' that is they have 
 done things besides using the name, in 
 order that the use of that name might 
 look as if it were being used by the old 
 firm " (id. p. 134). " I assume that the 
 names are sufficiently alike to cause 
 blunders in trade; but they are blun- 
 ders of the people who make the 
 blunders. Has the defendant done 
 
 anything so far to cause these blunders 
 even though he did not intend it, 
 which entitles the court to stop him 
 from doing what he is doing? He is 
 simply stating that he is carrying on 
 business with his two sons as partners. 
 I say that is the accurate and exact 
 truth of what he is doing. I will 
 assume for the moment that it is 
 pointed out to him what he is doing, 
 that blunders wiU occur in the business 
 and that the results which are com- 
 plained of will happen. Is there any- 
 thing dishonest, — is there anything 
 wrong morally, in any, even in the 
 strictest sense, in a man using his 
 own name, or stating that he is carr}'- 
 ing on business exactly as he is carry- 
 ing it on? Is there anything wrong in 
 his continuing to do so, because people 
 make blunders, and even, if you please, 
 because they make probable blunders? 
 What is there wrong in what he is 
 doing? Now it is said that the plain- 
 tiffs have a trade name and a property 
 in their name. I doubt about prop- 
 erty, though they have this right: 
 that no man shall wrongfully inter- 
 fere with their name. But they have 
 lio right to say that a man may not 
 
Eakly Cases 123 
 
 The Turton case emphasizes two points, viz., that the defend- 
 ant cannot be held accountable for the stupidity or carelessness 
 of heedless purchasers who deal with the plaintiff or with him; 
 and that if, in the name the defendant has used, he has stated 
 the exact truth, he is not responsible for injury suffered by the 
 plaintiff. Both these questions are discussed later on under the 
 head of Defenses and both ideas have been much modified by 
 later decisions. 
 
 This opinion assumes that the contention is made that, if 
 two persons of the same name desire to enter the same busi- 
 ness, one must "discard his own name and take a false one." 
 No one now contends that fair dealing demands this; but it does 
 demand that if these two namesakes are to compete, while neither 
 is forbidden to use their common name, neither must do any act 
 that will create confusion which will result in injury to the Other. 
 It is a question if in the near future, the business world will not 
 demand that the rule provide that if the defendant cannot use his 
 name without confusion resulting, i. e., if the explanations he uses 
 with it do not eliminate confusion, then he may not use it at all in 
 that particular line of business in which the plaintiff has long used 
 it, and in which the public has come to associate this name solely 
 with the plaintiff. 
 
 rightly use his own name. I cannot another man must not use his own 
 
 conceive that the law is such. If the name. If that other man comes and 
 
 law were such, the law would be most carries on busiaess he must discard his 
 
 extraordinary and, to my mind, most own name and take a false name. The 
 
 unjust, te prevent a man's using his proposition seems to me so monstrous, 
 
 own name. And I must say this, that that the statement of it carries its 
 
 all the arguments which have been own refutation. Therefore, upon prin- 
 
 used in this case would have been ciple, I should say it is perfectly clear 
 
 equally applicable if there had been that if all that a man does is to carry 
 
 nothing about sons, and if one man on the same business, and to state 
 
 were carrying on business as Thomas how he is canying it on, that state- 
 
 Turton under the circumstances in ment being the simple truth, and he 
 
 which Thomas Turton & Sons were does nothing more with regard to the 
 
 carrying on their business, and an- respective names, he is doing no 
 
 other man named John Turton were wrong. He is doing what he has an 
 
 to come and carry on his business sim- absolute right by the law of England 
 
 ply in his own name. Therefore the to do, and you cannot restrain a man 
 
 proposition goes to this lei^h: that from doing that which he has an 
 if one man is in business and has so « absolute right by the law of England 
 
 carried on his business, that his name to do" (at pp. 135-36). 
 has become a value in the market. 
 
124 Family Names or Surnames, as Trade Names 
 
 In 1875, twenty-two years after Burgess v. Burgess, the New 
 York Court of Appeals decided Meneely v. MeneelyJ The sub- 
 stance of that case is stated by Andrews, J., in Higgins v. Higgins 
 Soap Co., ^" thus: "any person may use in his business his family 
 name, provided he uses it honestly and without artifice or de- 
 ception, although the business he carries on is the Same as the 
 business of another person of the same name previously estab- 
 lished, which has become known under that name to the public, 
 and although it may appear that the repetition of that name 
 in connection with the new business of the same kind, may 
 produce confusion and subject the other party to pecuniary in- 
 jury. The right of a person to use his family name in his business 
 is regarded as a natural right of which he cannot be deprived, by 
 reason simply of priority of use by another of the same name." 
 
 § 70. Explanatory Phrases as a Means of Eliminating Con- 
 fusion in Family Names. — The rule as it exists to-day in the con- 
 servative jurisdictions is stated by the Circuit Court of Appeals 
 in Wyckoff, Seamans & Benedict v. Howe Scale Co.,^ as follows: 
 "No one may be excluded from taking up whatever business he 
 chooses by the circumstance that someone else of the same name 
 has made a reputation in it; nor may he be required to conduct 
 such business under an aUas, although the conducting of it imder 
 his own name may produce a confusion in the public mind as to 
 the identity of goods, which no 'precaution or indication' of his 
 can effectually prevent. It is through no fault of his that his 
 name happens to be the same as that of some other man, who has 
 already impressed his personality on some particular industry. 
 All that is required of him is that he shall use reasonable precau- 
 tions to prevent confusion; that he shall refrain from any affirma- 
 tive act which may produce it. Thus doing and thus refraining, 
 he may do business under the name that came to him without his 
 choice, and may call his goods by it, if he pleases." 
 
 There is, however, something abhorrent to justice and com- 
 mon sense in allowing one who has built up a profitable busi- 
 ness to suffer severe loss of money and trade, because another 
 who happens to enter the business later has inherited the same 
 name as he. Such an idea is opposed to the American and EngUsh 
 idea of fair play. The courts have experienced this feeling and 
 
 ' 62 N. Y. 427-1875. " 122 Fed. 348-51-1903; 58 C. C. 
 
 '« 144 N. Y. 462. A. 510. 
 
Explanatory Phrases 125 
 
 have in numerous instances tried to prevent the injury, at the 
 same time trying to uphold the unqualified right of the defendant 
 to the use of his own name, going even farther than the court went 
 in Wyckoff v. Howe Scale Co., supra. In recent years, it has been 
 common for the courts to dispose of cases where a common family 
 name was being used by defendant to the injury of plaintiff, by 
 allowing the defendant to use his name, but only in such ways as 
 would not give occasion for purchasers being deceived into think- 
 ing the goods on which it appeared were those of the plaintiff, and 
 thus giving relief to the plaintiff without forbidding anyone to use 
 his own name. In other instances the court has ordered that the 
 defendant use his full name instead of merely his surname, as 
 where two "Hoffs" manufactured malt extract, Leopold, being 
 later in beginning business than Johann, was ordered to prefix 
 his first name to all his labels. This, however, is not usually 
 considered a sufficient differentiation.'' 
 
 A very good illustration of the present attitude of the courts 
 is found in the cases brought by the Walter Baker Chocolate Co. 
 against various persons by the name of Baker, who have set up in 
 the chocolate business from time to time. The following summary 
 is taken, in part, from the Trade-Mark Bulletin, for 1905. The 
 
 ' Tarrant & Co. v. Johann Hoff, Royal Baking Powder Co. v. Royal 
 76 Fed. 959-1896; 22 C. C. A. 644. 122 Fed. 337-1903; 58 C. C. A. 499- 
 " Complainant acquired the right to 506. " Now, if defendant did not bear 
 manufacture and sell in the United the family name of 'Royal', there would 
 States 'Johann Hoff's Malt Extract' not be the slightest doubt but that his 
 under labels and trade-marks used in use of the word 'Royal' in connection 
 Germany for many years, and which with a baking powder made and sold 
 entered into commerce under the by himself would be absolutely pro- 
 name 'Johann Hoff's' or simply hibited, upon the ground that the 
 'Hoff's' extract. Defendant became use of so arbitrary and meaningless a 
 the selling agent for a malt extract word applied to a baking powder 
 manufactured by Leopold Hoff in could only be with the dishonest in- 
 Germany, using the words, 'Hoff's tent to appropriate to himself some 
 Malt Extract' on its labels and ad- of the benefits resulting from the de- 
 vertisements, affixing also a perpen- mand for the Royal baking powder 
 dicular side label, 'Manufactured by made and sold by the complainant" 
 Leopold Hoff.' Held, that defendant (id. p. 343). The defendant was or- 
 should be enjoined from using the dered to distinguish his goods from 
 words 'Hoff's Malt Extract,' unless those of complainant, and make his 
 preceded by the word 'Leopold,' and name inconspicuous, 
 that the perpendicular label was in- 
 sufficient" (headnote). 
 
126 Family Names or Surnames, as Trade Names 
 
 business of Walter Baker & Co. was begun in 1780, at Dorchester, 
 Mass. For more than fifty years it had been conducted under its 
 present name. In 1894, William H. Baker, of Winchester, Va., 
 began to market chocolate put up and labeled with the name 
 "W. H. Baker & Co.," so as to cause his goods to be called for, 
 sold and accepted as the goods of "Walter Baker & Co.," whose 
 goods were marked "W. Baker & Co.," thereupon, Walter Baker 
 sued WilUam H. Baker, and his New York agent, Sanders, to 
 enjoin them from using the name "Baker." In the suit against 
 Baker, the Circuit Court in the Western District of Virginia, i" 
 while refusing to enjoin the defendant from using his own name, 
 enjoined him from using the name "Baker" alone or in connection 
 with the designation "& Co." and required him to use it in some 
 distinctive manner. 
 
 In the suit against Sanders in the Circuit Court of Appeals, 
 Second Circuit, an injunction was granted which specified the 
 manner in which the goods in controversy should be marked, and 
 required the defendant to place upon his packages in prominent 
 type the words, "W. H. Baker is distinct from and has no con- 
 nection with the old chocolate manufactory of Walter Baker & 
 Company." " 
 
 The next suit was brought by Walter Baker & Co. against 
 William P. Baker, of New York, and restrained him from using 
 the name "Baker" alone, in the sale of chocolate, or from using 
 it with the initial "W." only, but providing that he might use 
 his name in full, "William P. Baker" or "WilUam PhilUps Baker" 
 and might indicate in appropriate language upon the packages of 
 his goods that they were made and prepared, or sold by WiUiam P. 
 Baker, of New York." '^ 
 
 In the next series of two cases, William H. Baker, of Win- 
 chester, Va., appeared as complainant. It appeared that one 
 William H. Baker, of Syracuse, N. Y., had now begun to trade 
 upon the reputation of the former infringer, William H. Baker, 
 of Winchester, Va., and was using upon his packages the same 
 form of marking which the court had required the latter dealer 
 to place upon his, to wit, "Wm. H. Baker is distinct from the 
 
 '0 Walter Baker & Co., Ltd., v. Sanders, 80 Fed. 889-1897; 26 C. C. 
 Baker, 77 Fed. 181-1896. A. 220. 
 
 '■I Walter Baker & Co., Ltd., v. ''Walter Baker &Co.,Ltd.,v. Baker, 
 
 87 Fed. 209-1898; C. C. S. D. N. Y. 
 
Explanatory Phrases 127 
 
 old chocolate manufactory of Walter Baker & Co.," thereby 
 making it appear that he was the "Wilham H. Baker" who had 
 been enjoined at the suit of Walter Baker & Co. Thereupon, 
 Wilham H. Baker, of Winchester, Va., brought suits against 
 WiUiam H. Baker, of Syracuse, and also against Sanders, now the 
 agent of the latter, to compel them to desist from the use of this 
 marking. In the suit against Sanders such injunction was granted, 
 and also an injunction requiring the defendant to desist from the 
 use of the name in the form "W. H. Baker," or " Wm. H. Baker," 
 but permitted him to use the full name, "William H. Baker" in 
 connection with the word, "Syracuse" when the same were 
 printed in type of sufficient prominence.^' In the suit against 
 Baker, of Syracuse, a similar decree was made.^* 
 
 In another of the series, Walter Baker & Co., as complain- 
 ants, sought to restrain the defendant, Slack, a retail grocer, of 
 Chicago, from advertising the goods of William H. Baker, of 
 Winchester, Va., as "Baker's Chocolate" and "Baker's Cocoa" 
 and from selling them to customers who asked for "Baker's 
 Chocolate" or "Baker's Cocoa." 
 
 The reUef awarded was an injunction preventing the defend- 
 ant from advertising, selling or causing to be sold any choco- 
 late or cocoa other than that of the complainant as or under the 
 names "Baker's Chocolate" or "Baker's Cocoa," and from using 
 the name "Baker" alone in any way whatever in connection with 
 the advertisement or sale of chocolate or cocoa other than that of 
 Walter Baker & Co., or in any way so as to indicate that the goods 
 of the Virginia manufacturer were "Baker's Chocolate" or 
 "Baker's Cocoa." ^' 
 
 In 1911, still another "Baker" case was decided by the Circuit 
 Court of Appeals, Eighth Circuit, i'' Here the defendant was a 
 retailer, who sold both the original Baker product and that of 
 "Wilham H. Baker, Syracuse, Inc." He was charged with sell- 
 ing both brands indiscriminately as "Baker's" and "Baker's 
 Cocoa." "Wilham H. Baker, Syracuse,. Inc.," conformed his 
 package to the rules laid down by various courts in other "Baker" 
 
 " William H. Baker v. Sanders, 97 " Walter Baker & Co., Ltd., v. 
 
 Fed. 948-1899 (C. C. E. D. Pa.). Slack, 130 Fed. 514^1904 (65 C. C. A. 
 
 '1 William H. Baker v. Baker, 115 138, 7th Cir.). 
 
 Fed. 297-1902 (53 C, C. A. 157, 2d ^' Walter Baker & Co., Ltd., v. Gray, 
 
 192 Fed. 921, 
 
128 Family Names or Suknames, as Trade Names 
 
 cases, so that his products did not unfairly resemble that of the 
 plaintiff. This case is an application of the doctrine of caveat 
 emptor. The court held "that defendants' right to offer their 
 goods to the trade as 'Baker's' goods is equal to that of complain- 
 ant's right to so offer its goods, and that defendants having fully 
 complied with the law obligating them to so dress their goods as 
 to prevent confusion and enable purchasers when exercising rea- 
 sonable care to distinguish between them and the goods of others 
 of the same name, have done their full duty either to the public or 
 to the complainant." 
 
 This decision has not been widely approved. It seems to over- 
 look the important fact, that commercial considerations often 
 demand that the manufacturer change the form and appearance of 
 his package: that this fact is known to the public, and buyers, 
 therefore, place Uttle reliance on these features but look for the 
 name. This decision would seem to overlook the further fact that, 
 while, as the court says, a dealer is not in duty bound to advertise 
 the original brand, he is in duty bound to sell his goods openly 
 for what they are: and when inquiry is made which is obviously 
 ambiguous as to which of two brands the customer seeks it is the 
 shop keeper's duty to find out which brand the customer seeks, 
 before offering his goods. 
 
 Another good illustration of the unsatisfactory condition of the 
 law relating to family names is found in the Rogers cases. The 
 name Rogers has come to be associated in a peculiar way with 
 the manufacture of silver. The first Rogers business was started 
 in 1872 by Rogers Brothers, who stamped their goods "Wm. 
 Rogers Manufacturing Co." and "Wm. Rogers & Son." Various 
 persons who bore the name "Rogers" have, from time to time, 
 set up in the silver business, under the name of "Rogers," only to 
 be curtailed and limited by the courts in the use of the name. 
 
 In 1883, George Rogers, a lawyer, and others started the 
 "Rogers Manufactm-ing Co." and sold silver as "6 Rogers A-1." 
 Held, defendants intended by so using their name to deceive the 
 public." 
 
 " William Rogers Mfg. Co. v. Rog- ing silver plate which had long been 
 
 ers Mfg. Co., 16 Phila. 178 (Com. PI. carried on by three brothers named 
 
 Phila. 1883). The plaintiff company Rogers and their successors. Their 
 
 was incorporated in 1872, and sue- goods were stamped with the name 
 
 ceeded to a business of manufactur- "Wm. Rogers Mfg. Co." or "Wm. 
 
Explanatory Pheases 
 
 129 
 
 In 1907, William H. Rogers started in the silver business, mark- 
 ing goods "W. H. Rogers, of Plainfield, New Jersey," and his 
 packages "Not connected with any other Rogers." Court held, 
 this was not sufficient identification. He must mark his goods 
 "Not the original Rogers," "Not connected with the original 
 Rogers." ^* 
 
 been enjoined from the use of any 
 name of which "Rogers" was a part. 
 Defendant then set up in business in 
 his own name, stamping his goods 
 "W. H. Rogers, of Plamfield, N. J.," 
 and marking his packages "not con- 
 nected with any other Rogers." Held, 
 that this was not a sufficient differ- 
 entiation, and that defendant should 
 be enjoined from making and selUng 
 his goods, unless he should stamp 
 upon them "not the original Rogers" 
 or "not connected with the original 
 Rogers." "The normal presumption 
 that the use of one's name is an 
 honest one may be rebutted by show- 
 ing a fraudulent use of it touching 
 the matter in issue." (Referring to 
 the fact that such fraudulent prior 
 use was here estabUshed, the court 
 proceeds:) "The burden is therefore 
 on the defendant to show that the 
 use of his name is not in effect a con- 
 tinuation of such prior fraud" (id. 
 p. 106). As to the differentiating 
 effect of the addition to defendant's 
 name of the place of manufacture, 
 the court remarks that the original 
 Rogers' goods had been manufactured 
 in various places and says: "Locality 
 has no sufficiently distinguishing force, 
 because locality is not associated in 
 any way with the mark itself." As to 
 defendants' use of the words "Not 
 connected with any other Rogers" on 
 the wrappers, the court remarks that 
 these words would not reach the retail 
 purchaser, and adds that even if they 
 do they would not suffice. "These 
 words merely tend to add to the confu- 
 
 Rogers & Son," and the name Rogers 
 had long been identified with these 
 goods, which were of high reputation. 
 The defendant company was formed 
 in 1883 by George Rogers, a lawyer, 
 George Linsenmayer, a silversmith, 
 and another, and it stamped its goods 
 "6 Rogers A-1." The court con- 
 sidered that in adopting its name, de- 
 fendant intended to mislead the pub- 
 Uc. Defendant was enjoined from 
 using the name "Rogers" on its 
 ware. The court, with reference to 
 the proposition that in general any 
 man may apply his own name to the 
 goods in which he deals, says: "But 
 if the use of the name is intended to 
 gain an advantage over anyone al- 
 ready established, and using it in the 
 same trade, or if, without such intent, 
 the effect is to mislead and deceive 
 buyers, then such use of the name will 
 be prevented by injunction; and 
 while all intendments are made in fa- 
 vor of a person formerly in the trade, 
 when he sets up a new firm, yet the 
 presumptions are against a stranger 
 to the business, when he sets up a 
 rival establishment" (p. 179). 
 
 ^^International Silver Co. v. Rog- 
 ers, 72 N. J. Eq. 933; 67 Atl. 105- 
 1907. Complainant was the successor 
 to the good-wiU of an extensive busi- 
 ness in silver-plated ware originally 
 established by the Rogers Brothers, 
 by whose surname the goods had long 
 been generally known. Defendant, 
 W. H. Rogers, had been the presi- 
 dent of a rival concern, the William 
 H. Rogers Corporation which had 
 
130 Family Names ob Surnames, as Trade Names 
 
 William H. Rogers, a bicycle maker at Bristol, began to make 
 silver stamped "Wm. H. Rogers." One Hubbard furnished all 
 the capital. Held, he was seeking to pass o£f his goods fraud- 
 ulently, else he would have used name "Rogers & Hubbard." 
 Defendant was enjoined from use of word "Rogers" associated 
 in any way with word "WiUiam" or abbreviation of it. On appeal 
 the court granted an mjunction restraining defendant from using 
 the word "Rogers" in any form.^' 
 
 sion. They might well be, and usually 
 would be, employed by an original 
 manufacturer seeking to warn the 
 trade when he finds on the market 
 other goods which may be passed off as 
 his. In employing such words, so 
 misleading and ambiguous, the de- 
 fendant is clearly guilty of bad faith" 
 (id. p. 107). 
 
 ^^International Silver Co. v. Wm. 
 H. Rogers Corp., 67 N. J.Eq.646; 1905; 
 60 Atl. 187, reversing 66 N. J. Eq. 
 119; 57 Atl. 1037-1904. In 1890, 
 William H. Rogers, who had been in 
 the bicycle business, began to make 
 spoons and forks through a company 
 at Bristol, having them stamped 
 "Wm. H. Rogers Co." In this ven- 
 ture he was at first with one Hubbard, 
 who furnished all of the capital. The 
 vice-chancellor held, that he was 
 evidently seeking to pass off his goods. 
 Had he not been he would have used 
 the name "Rogers & Hubbard." The 
 name he did use was strikingly Uke 
 the name of a company then in. exist- 
 ence, the "Wm. H. Rogers Manufac- 
 turing Co." He had no skill or repu- 
 tation in the market as a dealer in 
 silver nor any financial responsibility. 
 He had httle part in the business 
 and yet the B. Company were will- 
 ing to pay five cents per dozen over 
 the manufacturer's price for knives 
 stamped with his name. This would 
 only have represented the value of the 
 name and reputation of the predeces- 
 
 sors of the complainant. He was 
 seeking to pass off his goods as the 
 goods of his competitor. A man is not 
 always debarred from giving his own 
 name to a corporation, where it hap- 
 pens to be the name of the competitor. 
 If he did it for some good reason and 
 in such a way as Hot to mislead the 
 public, his name may be of value to 
 him because it suggests his skill oc his 
 financial abihty or something else that 
 belongs to him. In this ease, there was 
 no vaUd reason why the individual 
 name should have been adopted as a 
 corporate name, and further the name 
 was not embodied in the corporate 
 name merely, but in its most objec- 
 tionable form with the abbreviation 
 " Wm.," just as in the corporate name. 
 For this the court held that there was 
 not any excuse. The gravamen of the 
 action was not fraudulent intent but 
 misrepresentation, the suggestio falsi is 
 to be found in the name stamped on 
 the ware. The W. H. Rogers corpora- 
 tion should be enjoined from adver- 
 tising its wares under the corporate 
 name or under any name in which the 
 word "Rogers," with the word "Wil- 
 liam " abbreviated or unabbreviated, 
 is a part, or from selling its wares 
 under that name. 
 On appeal Swayze, J., said: 
 "We think he (the vice-chancellor) 
 erred in refusing to enjoin the defend- 
 ant from using the word "Rogers" in 
 any form, even as a part of the cor- 
 
Explanatory Phrases 
 
 131 
 
 In 1901, a corporation was formed by Simeon L. and George 
 H. Rogers, sons of one of the original Rogers Brothers, but neither 
 of them had active control of the business. They advertised then- 
 ware as "The Real Rogers goods," etc. They were enjoined from 
 using the word "Rogers" or "Rogers Bros." or stating their goods 
 were "The Real Rogers goods" or that they were "the only 
 real Rogers Bros." ^ This was on the preliminary hearing. 
 
 porate defendant's name, in connec- 
 tion with the manufacture and sale 
 of silver-plated table ware, carried 
 on by or on behalf of the corporate 
 defendant." 
 
 "The vice-chancellor cited Baker v. 
 Baker, 115 Fed. Rep. 297, as sustaining 
 the defendant's right to use WiUiam 
 H. Rogers' name, when properly dis- 
 tinguished, in view of the skill and 
 experience he may have acquired in 
 the business. To this there are two 
 answers: (1) That skill and experience, 
 such as it was, was acquired in his 
 effort to profit by the reputation of the 
 complainant's goods. As the vice- 
 chancellor said: "The conclusion is 
 inevitable that up to, or nearly up to, 
 the time of the formation of the Rogers 
 corporation, Rogers was using the 
 name to gain for himself a profit which 
 belonged to another. He was con- 
 sciously seeking to pass off his goods 
 as the goods of his competitor.' We 
 cannot think that a man who acquires 
 skill and experience under such cir- 
 cumstances is entitled to protection 
 against those whom he has sought to 
 injure. (2) The case differs from the 
 Baker case. There the defendant 
 changed his business methods, adopted 
 advertisements, packages and labels 
 which met with the approval of the 
 successors of Walter Baker & Com- 
 pany, and so differentiated the dress 
 of his products as to minimize as far 
 as possible the risk of confusion be- 
 tween them and those of the com- 
 
 plainant. A part of the corporate 
 name was the place of business, and 
 every person who dealt with the de- 
 fendant in that case was thereby noti- 
 fied that its business domicile was not 
 the domicile of the complainant. 
 After reciting these facts, the court, 
 in that case, added: 'If the name had 
 been selected unnecessarily or for the 
 purpose of illegitimate competition 
 with the complainant, we should not 
 hesitate to enjoin its use. But it was 
 selected without any element of bad 
 faith or unfair use.' In the present 
 case the corporate name was selected 
 unnecessarily, with the intent to make 
 an unfair use of it." 
 
 20 International Silver Co. v. Simeon 
 L. & George H. Rogers Co., 110 Fed. 
 955-1901 (C. C. Conn.). Defendant 
 was a corporation recently organized 
 to make silver-plated ware. Simeon 
 L. and George H. Rogers, after whom 
 it was named, were sons of one of the 
 original Rogers brothers, but neither 
 had been engaged in the manufacture 
 of silver-plated ware, though one had 
 been employed in the business at small 
 wages. Neither of the active man- 
 agers of the defendant corporation 
 was a Rogers. Defendant advertised 
 their goods as "The real Rogers 
 goods," and represented Simeon L. 
 and George Rogers as "the only real 
 Rogers Brothers." Held, that de- 
 fendant should be restrained by pre- 
 liminary injunction from stamping its 
 goods "Rogers", or "Rogers Bros." 
 
132 Family Names or Surnames, as Trade Names 
 
 In the past few years the owners of a number of very old Amer- 
 ican business names have appealed to the courts for protection 
 against what seemed to be unfair use of these names by others. 
 "Knabe," "Chickering" and "Waterman" ^^ are examples of 
 such names. Each of these cases was considered by a different 
 tribunal. All agreed that a man could not be deprived abso- 
 lutely of the right to use his own name even in one line of business, 
 because of unfair acts on his part. All agreed that every man 
 must use his name so as not to deceive; but no two agreed as to 
 any specific rule governing the method of limiting such use by 
 competitors. None of these courts devised a remedy which 
 would seem to give adequate protection to any of these com- 
 plainant concerns. 
 
 The law on this question as usually applied at the present time 
 is thus stated by Rose, J. : 
 
 "One man may have long been engaged in the production 
 and sale of a particular kind of wares. He may have been the 
 only person of that name who made or sold them. They may 
 have acquired a widespread and valuable reputation. Any goods 
 with which a like surname may be used will be taken for his. 
 Nevertheless, any man who has that surname may go into the 
 same business and offer the like goods for sale. A good deal of 
 confusion will necessarily follow. The first comer will suffer from 
 
 either with or without an accompany- ufactured by the Muskegon Cutlery 
 ing emblem, monogram or initials, Co., and stamped them with the name 
 and from representing its goods to be "RoDgers Bros. Cutlery Co." (cap- 
 "The real Rogers goods," and the italizing the d). Held, that the de- 
 manufacturers to be "the only real fendants' use of the name was prima 
 Rogers Bros." The court postponed facie fraudulent. Preliminary injunc- 
 untU a final hearing the determination tion granted. See also International 
 of the question whether or not defend- Silver Co. v. Wm. H. Rogers Corp., 67 
 ant should be enjoined from the use N. J. Eq. 646-1905; 60 Atl. 187, re- 
 of its corporate name, as having been versing, 66 N. J. Eq. 119; 57 Atl. 1037; 
 adopted solely for the purpose of International Silver Co. v. Rogers, 67 
 unfair competition. Atl. 105-1907; 72 N. J. E. 933, re- 
 International Silver Co. v. Rodgers versing 63 Atl. 977; International 
 Bros. Cutlery Co., 136 Fed. 1019-1905 Silver Co. v. Wm. G. Rogers, 113 
 (C. C. W. D. Mich. 5th D.). The de- Fed. 526-1902, affirmed, 118 Fed. 
 fendant company was formed by two 133-1902. 
 
 persons of the name of Rodgers, and " Stix, Boer & Fuller Dry Goods Co. 
 
 another person, and did not itself man- v. American Piano Co., 211 Fed. 271- 
 
 ufacture, but bought and sold cutlery. 1913; Waterman v. Modern Pen Co., 
 
 It placed upon the market knives man- 235 U. S. 88-1914. 
 
Inadequacy of Explanatory Phease Rule 133 
 
 it. If the second does nothing unnecessarily to increase the 
 difficulty of distinguishing his goods from those of his predecessor, 
 the latter will not be heard to complain." ^^ 
 
 We believe that the time must soon come when a way will be 
 found by which reputation and good-will fairly and honorably 
 acquired by long continued fair dealing will be adequately pro- 
 tected, which it is not to-day. 
 
 § 71. The Inadequacy of the Explanatory Phrase Rule. — The 
 use of explanations with family names in cases where the de- 
 fendant is found to have used his name to the injury of older 
 concerns has very grave objections. The defendant who de- 
 liberately so uses his name as to sell his goods on the reputation 
 and celebrity of a competitor commits a fraud. . In so doing he has 
 abused his right to use his name. He who abuses his right to 
 liberty, loses it, for a time at leapt, sometimes permanently. He 
 who abuses his rights and privileges as a husband or parent may 
 lose them. He who abuses his rights in many relations of life is 
 compelled by law to give them up. It is difficult to see how the 
 right to the use of one's name is more sacred than various other 
 personal rights. Repeatedly we find the rule stated in substance 
 thus: "every one has a right to the free use of his own name." 
 There is grave doubt if any such absolute right exists. The only 
 right one has in his name is the right to use it honestly and 
 fairly. As said by Gerard, J., if one "cannot use his own name 
 without representing his goods as those of another, then he cannot 
 use his own name at all " — meaning of course in the one particular 
 line of business in connection with which the abuse of the name 
 had occurred.^* 
 
 Doubtless the theory of many of the decisions on this subject, 
 is that an explanation converts a dishonest use of a name into an 
 honest one. This is true only in cases where the explanation 
 actually reaches the buyer of the article. It is by no means nec- 
 essarily the fact that every purchaser of defendant's article 
 reads and understands the explanation. One court has directed 
 that a defendant shall stand upon his pianos, when exhibited for 
 
 22 Brmn Chemical Co. v. Meyer, 139 Burgess, 17 Eng. Law & Equity, 257; 
 
 U. ^. 540 11 Sup. Ct. 625; 35 L. ed. Guth Chocolate Co. v. Guth, 215 Fed. 
 
 247; Howe Scale Co. v. Wyckoff, Sea- 750-765. 
 
 mans & Benedict, 198 U. S. 118; 25 ^'Kaufman v. Kaufman, 123 N. Y. 
 
 Sup. Ct. 609; 49 L. ed. 972; Burgess v. Supp. 699. 
 
134 Family Names or Stjenames, as Tkade Names 
 
 sale, a large sign explaining that they are not the product of plain- 
 tiff (the assumption of course being that without the sign such 
 impression would be conveyed by the piano itself). Such a 
 decree gives no adequate protection to the plaintiff, for if, without 
 the sign, it will be confused with the plaintiff's products, once it 
 is sold and the sign removed, it remains, during its long life a 
 constant and continuous injury to the plaintiff, if it is of poorer 
 quality than plaintiff's product. 
 
 The explanatory phrase remedy was adopted and applied in 
 Chickering v. Chickering & Sons.^'^ Defendants were using their 
 own surnames, and yet they were required to do more than to 
 use with it their first names or initials. They were not to de- 
 scribe the pianos as "Chickering" pianos, and that name was 
 to be distinctly subordinated in the marking of the pianos. As the 
 best practical means of protecting the successor to the original 
 good-will, without undue prejudice to the later comers, it was 
 required that the latter should adopt a uniform name for all their 
 pianos (such as "Acoustigrande"), and make that the conspicuous 
 word in the marking [see facsimile in report of case, p. 493], with 
 permission to follow it with the name of the makers, in smaller 
 type, together with the place of manufacture, which was different 
 from complainants'. 
 
 This requirement of a conspicuous uniform name, to which 
 "Chickering" even as the name of the makers, should be entirely 
 subordinated was "strenuously objected to" by the defendants 
 [p. 497], but was approved by a unanimous appellate court, which 
 said by Mack, C. J.: — "If defendants were permitted to use the 
 word 'Chickering' or 'Chickering Brothers' on the fall board, 
 unaccompanied by any other name and without the usually re- 
 quired express disclaimer of connection with complainants, their 
 piano would inevitably be known as the 'Chickering,' and the 
 confusion with complainants' piano would be, as it has been, un- 
 avoidable." 
 
 In Higgins v. Higgins,^^ the leading authority in the New York 
 Courts on this question, the court held that a person has no 
 right whatever to cause fraud by use of his name as a part of a 
 corporate title and that he may be enjoined from so using it. 
 This use of one's own name is denied to one who has abused it. 
 
 ^* 215 Fed. 490 (C. C. A. 7th Ct. " 144 n. Y. 462; 39 N. E. 490; 27 
 1914). L. E. A. 42. 
 
Inadequacy of Explanatory Phrase Rule 135 
 
 According to most authorities, had frhe defendant done business 
 under his personal name "Charles S. Higgins," instead of as a 
 corporation "Charles S. Higgins Co.", he could not have been 
 restrained farther than to be required to use explanatory phrases 
 or words with his name. Admitting that a name when used by a 
 corporation causes fraud it is idle to argue that if used by a part- 
 nership, the fraud is lessened or eUminated, yet under present 
 conditions such a name may be used by a person whose name it is, 
 or a partnership of which he is a member with an explanation re- 
 gardless of the fraud it causes. 
 
 Is there then any real difference between the right to use one's 
 family name by itself and to use it to name a corporation? The 
 Supreme Court has said in Waterman v. Modern Pen Co.:^^" 
 "There is no distinction between corporations and natural 
 persons in the principle which is to prevent fraud." 
 
 Mr. Wigmore says of this right to use one's family name as a 
 business name: "It is merely the right to obtain patronage, 
 for wares or services, by the use of the mark that identifies 
 our personality. Now this right can never have any superior 
 claim over and above our general duty to obtain patronage 
 honestly." ^s" 
 
 The Waterman case,^® apparently stands for the proposition 
 that, regardless of the depth of fraud and dishonesty to which a 
 defendant may have stooped, to pass off his goods as those of 
 another to his profit, if the medium used by him to accomplish 
 his ends is his own name, he cannot be asked to do more than 
 to add to his name an explanatory phrase which may or may not 
 reach the attention of the consumer. 
 
 The rule protecting the right to one's name when used by the 
 person himself regardless of resulting confusion, and the rule for- 
 bidding use of a name as a corporate name, when fraud results 
 as in the Higgins case (supra), cannot both be accurate or salu- 
 tary. One enables the clever substitute to succeed. The other 
 compels him to put an end to his fraudulent practices. As a 
 practical matter, the threat has been made more than once by 
 the defendants in cases involving the use of a family name as a 
 part of a corporate name, that if the plaintiff presses the case 
 the defendant's business will be continued under the name in 
 
 "° 235 U. S. 88 (1916). ^° Waterman v. Modern Pen Co., 235 
 
 25* 10 lU. Law Rev. 182-1916. U. S. 88; 35 Sup. 91-1914. 
 
136 Family Names or Sttrnames, as Trade Names 
 
 question used alone or as a partnership name, and the same re- 
 sults to the defendant secured. 
 
 That the remedies now given in unfair competition cases are 
 often inadequate from a commercial standpoint is evident. That 
 they give as effective rehef as they do is quite as much the result of 
 the widespread aversion to litigation on the part of the defend- 
 ants as it is of the orders of the court, which often leave open to de- 
 fendants opportunities to continue to pass off their goods provided 
 they are willing to change the form of their business organization. 
 The framing of an explanatory phrase presents a wonderful chance 
 for a defendant to minimize the practical effect of an adverse de- 
 cision. This is well illustrated by a study of the struggles of 
 the L. E. Waterman Pen Co., the Rogers' silverware interests 
 and the makers of Baker chocolate to preserve their good-will. 
 
 The effect of the use of the explanatory phrase rule is shown by 
 the argument of counsel for the defendant in Waterman Co. v. 
 Modern Pen Co.,^^" who excused to the courts their clients' acts by 
 saying that: "There is undoubtedly some slight confusion owing 
 to the similarity of names. This confusion is nothing compared 
 to the confusion arising from the names of the twelve firms of 
 Rogers in the silverware business." Counsel might have added 
 that this widespread confusion in the silver trade is caused by 
 concerns operating under court decrees granted in cases in which 
 the original Rogers had applied for relief. 
 
 In the first Baker case the defendant was compelled to mark 
 his goods "No connection with the old chocolate manufactory of 
 Walter Baker & Co., Ltd." In this connection, one Circuit Court 
 of Appeals said: "In the market there were no two 'Bakers' 
 products,' 2^ but the courts have failed in these cases to appre- 
 ciate that the original 'Baker' cannot exist alongside eleven other 
 Bakers and keep his business free from unfair trade, merely be- 
 cause the eleven other Bakers use explanations on their goods. 
 Where an old established business has been long known by a 
 personal name, in the market two products of that name cannot 
 exist without confusion and fraud and serious injury to the orig- 
 inal concern. This may create a difficult legal question but it is a 
 commercial fact which the courts must soon recognize and with 
 which they must adequately deal." 
 
 »"235 U. S. 88, 35 Sup. Ct. 91- '^ Baker v. Slack, 130 Fed. 514- 
 1914. 1904. 
 
Acquired Meaning of Personal Names 137 
 
 It is difficult to realize how it accords with public poUcy to 
 penalize the defendant who misuses his rights in his name by 
 using it as part of a corporate name and yet fails to accord with 
 pubhc policy to impose a similar penalty when he commits the 
 same fraud by use of the name by itself or as a partnership name. 
 
 It is difficult, further, to see how public interest can be imperilled 
 by a rule compelling the defendant guilty of unfair competition 
 in the use of his name, as a penalty therefor to be deprived of his 
 right to use it, not entirely, but merely in the one field of business 
 in which he has used it as a means of fraud. 
 
 Stevenson, V. C, says in L. Martin Co. v. L. Martin & Wilckes 
 Co., "" "Howe Scale Co. v. Wyckoff, Seamans & Benedict,^'''' so 
 far as it negatives when properly interpreted the proposition that 
 the use of a family name by a corporation stands on a different 
 footing from its use by individuals or firms, is, I think, inconsistent 
 with the unanimous opinion of the Court of Errors and Appeals 
 in this State in International Silver Co. v. Rogers Corporation.'^'''' 
 
 "I think we have got beyond the notion, if it ever prevailed, 
 that a man has an absolute right to use his name in his business 
 shutting his eyes to the inevitable effect of such use to deceive 
 the pubhc generally, and to injure some other dealer in the mar- 
 ket. The maxim sic utere tuo ut alienum non Icedas applies to 
 everything that a man has, including his name." . 
 
 § 72. Acquired Generic or Secondary Meaning of Personal 
 Names. — In the difficulty, which the courts have found, in pre- 
 serving this right which every man has, to use his own name, and 
 at the same time preventing injury and fraud arising from the 
 exercise of that right, the doctrine of secondary meaning has been 
 invoked. Words which form a part of the common stock of the 
 language may become so thoroughly identified with some one 
 person's business or goods, that it is quite possible that the use of 
 them alone, without any qualifying words or other explanation, 
 by another manufacturer, will deceive buyers into believing 
 that there is but one concern or one brand of goods instead of 
 two. This same rule has been applied in personal name cases. 
 There are many cases on record where a family name has become 
 so completely identified with a particular business or manufac- 
 turing plant as to become synonymous with it.^* 
 
 "" 75 N. J. Eq. 39-50. ^ 67 N. J. Eq. 646. 
 
 ^ 198 U. S. 119. "' For discussion of rule as to Sec- 
 
138 Family Names or Surnames, as Trade Names 
 
 Where a personal surname does become so identified with an 
 article of trade or business as to become synonymous with it, it 
 follows that for a rival to use this same name — even though it is 
 his surname and his fathers have borne it. before him — cannot 
 but create confusion. 
 
 "Where other persons bearing the same surname have previsusly 
 used the name in connection with their goods, in such manner and 
 for such length of time as to make it a guaranty that the goods 
 bearing the name emanate from them, they will be protected 
 against the use of that name, even by a person bearing the same 
 name, in such form as to constitute a false representation of the 
 origin of the goods." ^' . It is quite possible that a trade may be so 
 constituted that some one of its products will become eventually 
 completely identified with one house or one person or one place. 
 This person may have founded the business and developed the 
 product, yet, in opposition to the rights arising out of such a 
 condition, stands the other right of every other person bearing 
 that same name to use it as he will. The Enghsh Court of Ap- 
 peals said in 1902, that "there never has been a case in which an 
 order has been made restraining a man altogether from carrying 
 on in his own name a particular trade. Every decision that has as 
 yet been given has been limited to restraining him from canying 
 on such trade, so identified with the plaintiff's business, with- 
 out taking the steps, which any honest man ought to wish to 
 take, to prevent his goods being confounded with the plaintiff's 
 goods, whose goods are so much identified with the particular 
 trade." '" 
 
 This statement of the English court is probably true. There 
 are few cases of authority which absolutely prohibit a man 
 from using his own name, although a person has been definitely 
 prohibited from using an adopted name, ^' but there is good rea- 
 son to believe that it wiU not be long before the justice of a more 
 effective remedy will be realized. 
 
 The rules, as to secondary meaning of personal names do not 
 
 ondary Meaning of Names of Business '" Cash v. Cash, 19 R. P. C. 181- 
 
 Houses see chapters on " Secondary 1902; 86 L. T. 211. 
 
 Meaning " and " Corporate Names." " Pinet et Cie v. Madison Louis 
 
 29 Landreth v. Landreth, 22 Fed. Pimt, Ltd., 15 R. P. C. 65-1897. See 
 
 41-1884 (C. C. Wis.) ; followed in contra L. E. Waterman Co. v. Modem 
 
 Garrett v. T. H. Garrett & Co., 78 Fed. Pen Co., 235 U. S. 88; 35 Sup. 91. 
 472-1896; 24 C. C. A. 173. 
 
Acquired Meaning of Personal Names 139 
 
 differ from those applicable to other classes of names when used 
 in a secondary sense. These rules are discussed in the chapter on 
 "Secondary Meaning." Practically all cases of unfair competition 
 in the use of personal names involve secondary meaning because, 
 prima facie, every person has a right to use his own name. When 
 the name is used in such a sense as to convey some meaning other 
 than its personal or family meaning a secondary meaning is 
 created. 
 
 Cases sometimes occur where a family name has been so long 
 used and so generally used that the public have adopted the name 
 as the common name of an article or business and it is in constant 
 daily use in that sense. When such a situation is found, it is some- 
 times a commercial impossibility for another person to use the 
 same name in the same business and not cause confusion. Such a 
 situation arose in the Stone Ale case ^^ in England, as regards the 
 geographic name "Stone" as applied to ale, and the House of 
 Lords pointed out the fact that it was not possible for the defend- 
 ant to use the name Stone in the ale business and not cause con- 
 fusion and forbade the defendant to use it at all. There is Uttle, if 
 any difference between a person's rights in his own name and in 
 the name of the community in which he is located. There are 
 various American cases which have applied the same rule. 
 
 In 1907, the United States Circuit Court, in J. F. Rowley Co. 
 v. Rowley, ^^ prohibited E. H. Rowley from using name Rowley 
 in any way in the sale of artificial limbs, saying: "As an abstract 
 right, every person has the right to the use of his own name; but 
 when the use of such name is but a cloak to cover an intended 
 fraud upon the rights of another, the wrongdoer has himself and 
 
 '2 Montgomery v. Thompson, (1891) ent's agency was shortly terminated, 
 
 A. C. 217, 64 L. T. R. 748. whereupon he set up in same business 
 
 " J. F. Rowley Co. v. Rowley, 154 for himself. His business sign, under 
 
 Fed. 744r-1907 (C. C. Pa.), reversed his own name, contained in large let- 
 
 161 Fed. 94. Complainant, the J. F. ters, the words "Rowley Artificial 
 
 Rowley Co., had for many years in Limbs." He not only described his 
 
 Chicago made artificial legs which had goods as "Rowley Limbs," but made 
 
 a high reputation and were known as false or misleading representations, 
 
 "Rowley" legs. Respondent, E. H. and used fraudulent devices to divert 
 
 Rowley, a brother of the president of trade to himself. Held, that he should 
 
 complainant, had been employed by it be enjoined from using the word 
 
 for some time at Chicago, and was sent "Rowley" in any way in the sale of 
 
 as its agent to Pittsburg. Respond- artificial limbs. 
 
140 Family Names or Surnames, as Trade Names 
 
 not the law to blame for placing a limitation upon the right to the 
 use thereof" (citing cases). 
 
 "In view of the facts of this case, and particularly of the con- 
 duct of this respondent, we are very clear that nothing short of a 
 total prohibition of the name Rowley in connection with the 
 manufacture and sale of artificial limbs will grant to the com- 
 plainant that complete protection and preservation of its property 
 in its trade-name and good will to which it is entitled under the 
 law" (id. p. 747). 
 
 This decision was reversed on appeal and it was held that 
 the defendant could not be enjoined, entirely, from using his 
 own name, but he was directed to accompany his use of the name 
 by proper explanations.'* 
 
 A person has been forbidden to use his surname in a particu- 
 lar business, where he has sold that right to the plaintiff and his 
 use of it in that business after the sale was causing confusion. 
 This was done in the case of Ball v. Best.^^ Ball owned Best & 
 Co., of New York, " Liliputian Bazaar," a house selling children's 
 clothing. Defendant having formerly been with Best & Co., of 
 New York, as had his brother, left the concern and bought S. & 
 Co., of Chicago, and took the name of A. S. Best & Co., associat- 
 ing his brother with him, nominally. On his sign, he put "Lili- 
 putian Outfitters" and "Formerly with Best & Co., New York." 
 "Formerly it would have been assumed, in the absence of most 
 positive proof, that a party might carry on his own business under 
 his own name in Chicago, notwithstanding the fact that parties 
 had established business under the same name in New York, since 
 there could be no presumption that the business interests of the 
 two cities could be so intimate as to extend the good-will of such a 
 business as that before the court all the way from New York to 
 Chicago. It is not a light thing to restrain a man from the full 
 benefit of his name, nor would a court of equity consider such 
 a course in any case even now, in the absence of fraud or actual 
 damage. It is apparent in this case that defendant shaped his 
 business and presented the same to the public with the intention 
 of getting the benefit of complainant's standing and business 
 prestige. The only basis upon which a contrary conclusion could 
 be arrived at would be positive evidence to the effect that the 
 two fields of patronage did not conflict. But it is in evidence that 
 
 '* 161 Fed. 94. 36 135 pgd. 434-1905 (C. C. lU.). 
 
Acquired Meaning of Personal Names 141 
 
 complainant is a manufacturer and dealer, and that he does a 
 large mail order business, as does also defendant. It hardly needs 
 saying that the proficiency of the mails at this date is such that 
 every nook and corner of the nation, as well as of Manitoba, is as 
 accessible as were places fifty miles away from New York a few 
 years ago. It cannot be otherwise than that the advertising and 
 canvassing of these two rival concerns pass and repass each other 
 innumerable times in their journeys to the centers of trade as well 
 as to the homes of the people — mute contestants for the favor of 
 supplying the wants of each customer. I am clear that under the 
 facts in this case the court must hold that the use of the name of 
 Best & Co., by defendant, even with its present prefix, espe- 
 cially in connection with the word 'LiUputian,' is a fraud upon 
 complainant's business rights. The action of defendant was 
 deliberate. He both intended to and did trespass upon com- 
 plainant's rights, and take advantage of his good-will and trade. 
 It is not important what definition is placed upon ' Liliputian.' 
 The name of Best & Co., with the use of that word, constituted 
 complainant's good-will. That use was arbitrary, and stands for 
 complainant's goods. The complainant is clearly entitled to the 
 relief prayed for as to the use of the name 'Best & Co.,' with and 
 without prefixes" (id. p. 436). 
 
 The Cash case '* is a typical case of this character. The plain- 
 tiff and defendant bore the name "Cash." They were in business 
 in the same town; they manufactured the same articles, viz., 
 woven names and frillings. The problem in the case was, whether 
 it was possible for Joseph Cash, the defendant, to have a shop 
 in Coventry and there sell these articles and not have them 
 known (as the plaintiff's goods had been known for some years) 
 as "Cash's frillings," and "Cash's woven names," and cause 
 unfair loss of trade to the plaintifif. The lower court forbade 
 the defendant to sell these goods under the name of Cash, but 
 the Court of Appeal modified this decision and its injunction 
 was as follows: "This com-t doth order that the defendant, 
 Joseph Cash, be restramed from selling any frillings or woven 
 names or initials, not manufactiu-ed by the plaintiffs, as 'Cash's 
 Frillings' or 'Cash's Woven Names or Initials' and from carry- 
 ing on the business of a manufacturer or seller of frillings, or 
 woven names or initials, under the name of 'Joseph Cash & 
 3» Cash V. Cash, 19 R. P. C 181-1902. 
 
142 Family Names or Suknames, as Trade Names 
 
 Co./ while not in partnership with any other person, or from 
 carrying on any such business either in the name of 'Cash,' or 
 under any style in which the name 'Cash' appears, without taking 
 reasonable precautions to clearly distinguish the business carried 
 on, and the friUings and woven names and initials manufactured 
 or sold by the defendant from the business carried on, and the 
 frillings and woven names manufactiu'ed by the plaintiff, and from 
 carrying on any such business under any name or in any manner 
 so as to mislead or deceive the public into the belief that the busi- 
 ness of the defendant, or the frillings or woven names or initials 
 manufactured or sold by him are the business of, or the goods 
 manufactured by plaintiff, or that the defendant is carrying on 
 the business formerly carried on at Coventry by Messrs. J. & J. 
 Cash, the vendors, predecessors in business of the plaintiffs." 
 
 The defendant was prohibited also from making over his busi- 
 ness to a corporation with a name likely to mislead, or from 
 soliciting any of Cash's former customers in any way. 
 
 Lindley, L. J., in Jamieson v. Jamieson,^'' states that: "The 
 court ought not to restrain a man from carrying on business in 
 his own name simply because there are other people who are 
 doing the same and who will be injured by what he is doing. It 
 would be intolerable if the court were to interfere, and to prevent 
 people from carrying on business in their own name in rivalry to 
 others of the same name. There must be something far more 
 than that, viz., that the person who is carrying on the business in 
 his own name is doing it in such a way as to pass off his goods as 
 the goods of somebody else. We must not lose sight for a moment 
 of the real question which we have to try — the question of fact" 
 (id. p. 181), whether he is passing off, or conducting his trade in 
 such a way as to pass off his goods as the goods of somebody 
 else. 
 
 The same judge said substantially the same thing, though in 
 different language, with reference to different circumstances in 
 Powell V. Birmingham Vinegar Brewery Company. ^^ "Again, if a 
 person uses words which simply describe the kind of goods he 
 makes or sells — e. g., leather goods — it would be intolerable to 
 confer upon him the right to prevent other persons from honestly 
 using the same words to describe what they make or sell. Al- 
 
 " 15 R. P. C. 169-81-1897. '» (1896) 2 Ch. 54-69; s. c. on ap- 
 
 peal (1897) L. R. App. Cas. 710. 
 
Family Names as General Names of Articles 143 
 
 though, however, a person by using his own name, or a merely- 
 descriptive word, to denote a particular article, cannot prevent 
 other bona fide traders of the same name from using it, or prevent 
 other bona fide traders making or selling the same sort of goods, 
 from using the same descriptive words, yet, even in such a case, if 
 the descriptive name is proved to mean the goods of the plaintiff, 
 and if deception is also proved, a person may be restrained from 
 using such name or word without taking such steps as will render 
 mistakes unlikely to occur." '' 
 
 In deciding cases where a complete and definite secondary 
 meaning is established, as in the Stone Ale case (supra) the court 
 must decide between depriving the defendant of his use of his own 
 name, not totally, but merely in reference to the particular 
 article or articles, with which the name has become associated by 
 the public in connection with his rival's business and permitting 
 a condition to continue in which fraud is inevitable. The state- 
 ment is often made in these cases to the effect that "a man may 
 use his own name because he cannot truthfully do business under 
 any other." *" This would not seem strictly according to fact. 
 When the alternative is presented of using one's personal name 
 and thus causing widespread confusion and deceit of the public or 
 adopting an assumed name under which to conduct business or sell 
 merchandise, the later comer should be compelled, to use the 
 latter method. 
 
 § 73. Family Names as Generic or General Names of Articles. 
 — Sometimes, family names acquire not only a secondary mean- 
 ing, but become the primary name of an article which anyone may 
 use. But even then, no one may pass his goods off as those of the 
 original maker of the article by the use of the name. "Where the 
 name is one which has previously thereto come to indicate the 
 source of manufacture of particular devices, the use of such name 
 by another, unaccompanied with any precaution or indication, in 
 itself amounts to an artifice calcul9.ted to produce the deception 
 
 " Fine Cotton Spinners and Doubkrs by plaintiffs, formed the defendant 
 Assn., Ltd., V. Harwood, Cash & Co., company in order to carry on a com- 
 Ltd., 2 Ch. 184^1907. Plaintiffs made peting business. Held, that the use of 
 yarns, long associated by the public the name "Cash" as part of the de- 
 with the word "Cash," originally a fendant's corporate title would be en- 
 family name, the goods being gener- joined. 
 
 ally described as "Cash" goods. John '" DeLong v. Belong, 89 Hun (N. 
 Harwood Cash, formerly employed Y.), 399-403. 
 
144 Family Names or Surnames, as Trade Names 
 
 alluded to in the foregoing adjudication." *^ Names so used may 
 not be appropriated by any one person any more than one is 
 allowed to appropriate to himself the name "Wine Company," or 
 "Cotton Company." They become necessary to all as the only 
 words to name an article of general use; they are general terms. 
 Such a name is "Goodyear Rubber," viz., rubber manufactured 
 or treated by Goodyear 's particular process; or "Singer Sewing 
 Machines" machines of a particular \iype, "Liebig's" Meat 
 Extract, or "Hostetter's" Bitters.^^ 
 
 ^'^ Singer Mfg. Co. v. June Mfg. 
 Co., 163 U. S. 169-1895; 41 L. ed. 118; 
 16 Sup. Ct. 1002, quoted in Interna- 
 tional Silver Co. v. Rogers, 67 Atl. 105- 
 1907. 
 
 " Goodyear India Rvbber Glove Mfg. 
 Co. V. Goodyear Rubber Co., 128 U. S. 
 598-1888; 32 L. ed. 638; 9 Sup. Ct. 
 166. Plaintiff was organized in New 
 York, Nov., 1872; prior to that time 
 defendant existed under laws of 
 Connecticut. For many years, de- 
 fendant had used and was known to 
 trade as "Goodyear's Rubber Manu- 
 facturing Co." or "Goodyear Rubber 
 Co." or "The Goodyear's Company." 
 Held, "The name 'Goodyear Rubber 
 Company' is not one capable of exclu- 
 sive appropriation. 'Goodyear Rub- 
 ber' are terms descriptive of well- 
 known classes of goods produced by 
 the process known as Goodyear's in- 
 vention. Names, which are thus 
 descriptive of class and of goods can- 
 not be exclusively appropriated by 
 anyone. The addition of the word 
 'Company ' only indicates that parties 
 have formed an association or partner- 
 ship to deal in such goods. Thus 
 parties * * * might style them- 
 selves Wine Company, Cotton Com- 
 pany or Grain Company. All persons 
 have a right to deal in such articles and 
 to publish the fact to the world." 
 
 Liebig's Extract of Meat Co., Ltd., 
 V. Walker, 115 Fed. 822-1902. Com- 
 
 plainant made and sold extract of 
 meat, put up in two-ounce jars, with a 
 wrapper and neck label, and capped 
 with a metallic capsule. The label 
 bore the words "Liebig's Extract of 
 Meat," the name of complainant as 
 maker, and the facsimile signature 
 "J. V. Liebig" in blue script, running 
 diagonally across the printed matter. 
 Defendant offered an extract of meat 
 put up in jars of the same shape and 
 size, with neck label and wrapper of 
 substantially the same appearance, 
 printed in the same colors and bearing 
 the words "Liebig's Extract of Beef" 
 and the names "Liebig Fluid Beef 
 Co." and "Liebig Beef Co.," both of 
 which were fictitious. Diagonally 
 across the wrapper was the facsimile 
 signature "J. T. Walker" in blue 
 script, resembling in appearance the 
 signature on complainant's wrappers, 
 and other portions of the reading mat- 
 ter were similar. Held, that while 
 defendant was at liberty to use the 
 word "Liebig," prefixed to the words 
 "Extract of Meat,"' as "Liebig" had 
 become a generic designation of the 
 article, yet defendant was guilty of 
 unfair competition in the dress of his 
 goods, and in using the name "Lie- 
 big's Fluid Beef Co." 
 
 Liebig's Extract of Meat Co., Ltd., v. 
 lAbby, McNeill & Libby, 103 Fed. 87- 
 1900 (C. C. N. D. III.). Complainant 
 had for many years sold this product 
 
Family Names as General Names op Aeticles 145 
 
 "While all intendments are made in favor of a person formerly 
 in the trade when he sets up a new firjn, the presumptions are 
 against a stranger to a business when he sets up a rival establish- 
 ment." ^* There is also a presumption that the use of one's own 
 name is an honest one; but it may be rebutted by showing a prior 
 fraudulent use of the name.^* And where there has been such 
 prior use, the burden is on the defendant to show that the use of 
 his name which is questioned is not, in effect, a continuation of 
 such prior use. The Illinois court has enjoined a nephew from 
 using the family name which both he and his uncle bore, in the 
 same business as that of his uncle, where the nephew opened a 
 store near the uncle's with similar show windows, and goods 
 packed in similar boxes and bearing similar labels. ^^ 
 
 extensively in the United States, when 
 defendant entered the market with a 
 similar extract distinctively dressed, 
 but subsequently sent out its goods in 
 a package very similar to complain- 
 ants' in color and general appearance, 
 and used on the package, as the name 
 of the maker, the fictitious title of 
 "Liebig Fluid Beef Co." HeM, un- 
 fair competition. In Liebig's Extract 
 of Meat Co. v. Liebig's Extract Co., 180 
 Fed 688, C. C. A., it was held that 
 an exclusive right to the name " Lie- 
 big" was shown based on a grant 
 from the original Liebig and an ex- 
 clusive user of over twenty years. 
 
 Hosteller v. Fries, 17 Fed. 620-1883 
 (C. C. S. D. N. Y.). Complainants 
 manufactured "Dr. J. Hostetter's 
 Stomach Bitters" but the process was 
 not patented. Held, that since it was 
 open to anyone to manufacture such 
 bitters, and since the only name by 
 which the article was known was 
 "Hostetter's Bitters," defendants were 
 entitled to make and sell similar 
 bitters (or an essence from which they 
 might be prepared) and to call them 
 "Hostetter's Bitters" so long as there 
 was no simulation in bottles, labels or 
 devices; also that defendants were not 
 
 liable for the unlawful acts of retailers 
 merely because they supplied them 
 with some of the means employed by 
 them (the retailers). 
 
 " Wm. Rogers Mfg. Co. v. Rogers 
 Mfg. Co., 16 Phila. 178-80-1883. 
 
 " International Silver Co. v. Rogers, 
 67 Atl. 105-1907. 
 
 " Rvbel V. Allegretti Chocolate Cream 
 Co., 76 '111. App. 581-1898. Com- 
 plainant, the AUegretti Chocolate 
 Cream Co., was the successor of Ig- 
 nazio Allegretti, who had long made 
 and sold confections widely and 
 favorably known as "Allegretti" 
 Chocolate Creams. He and his two 
 sons were the only persons interested 
 in the complainant corporation. De- 
 fendant, Giacomo Allegretti was a 
 nephew of Ignazio and had for sev- 
 eral years been in his or complainants' 
 employ, and formed a partnership for 
 the making of 9hocolate creams with 
 B. F. Rubel and I. A. Rubel, hardware 
 merchants, under the firm name 
 "Allegretti & Co." The firm then 
 opened a store not far from com- 
 plaints', with very similarly arrayed 
 show-windows, and the goods re- 
 sembled complainants' in appearance, 
 and were put in similar boxes with 
 
146 Family Names or Surnames, as Trade Names 
 
 Again where Hires had built up a prosperous business, the 
 court enjoined another person of same name from entering the 
 same business under the name of Hires. ^* See chapter on "Cor- 
 porate Names." 
 
 § 74. Surnames Used as Abbreviations. — A family name is 
 often used in an abbreviated form, — "Wanamaker's," "Hires'," 
 similar labels. Held, that defendaints evidence" (p. 569). Citing Russian 
 
 were properly enjoined from using the 
 name "Allegretti" or "Allegretti & 
 Co." 
 
 " Charles E. Hires Co. v. George 
 A. Hires, 182 Pa. St. 346-1897; 37 
 Atl. 1117. Plaintiff put on the market 
 Hires Root Beer and it became well 
 known; defendant later entered same 
 business under his own name. "But 
 for the fortuitous identity of family 
 name it is clear that the respondents 
 would not have embarked in this pro- 
 posed, commercial venture and the 
 evidence shows their studied purpose 
 was to keep as close to the appearances 
 and name of the plaintiff's article as 
 possible and preserve similarity while 
 yet presenting minor differences" 
 (p. 347). Injunction awarded. 
 
 Van Stan's Stratena Co., Ltd., v. Van 
 Stan, 209 Pa. St. 564-1904; 58 Atl. 
 1064. Defendant's father assigned to 
 plaintiff's assignor right to make a ware 
 which he had invented and to use his 
 name. Defendant, who was a son of 
 the inventor, after being in employ of 
 plaintiff, withdrew and sold the ware 
 under his own name, simulating 
 plaintiff's label, etc. Held, defendant 
 had not the right to use his own name 
 as a trade-mark of the goods sold by 
 him. "But assuming he had a tech- 
 nical right to use his own name, 
 he clearly had no right to use it to 
 deceive the public, for such a use 
 would be a fraud upon the clear right 
 of the purchasers of the trade-mark. 
 That he intended to and did de- 
 
 ceive 
 
 k manifest from the 
 
 Cement Co. v. LePage,, 147 Mass. 206- 
 1888; 17 N. E. 304; Fish Bros. Wagon 
 Co. V. La Belle Wagon Works, 82 Wis. 
 546-1892; 52 N. W. 595; 16 L. R. A. 
 453; Stonebraker v. Stonebraker, 33 
 Md. 253-1870; Holmes et al. v. Holmes 
 Mfg. Co., 37 Conn. 278-1870. 
 
 Pillsbury v. PiUsbury-Washburn 
 Flour Mills Co., 64 Fed. 841-1894 (C. 
 C. A. 7th Cir.). Complainant-appellee 
 was the successor in business of Chas. 
 A. Pillsbury & Co. and had long been 
 known as a manufacturer of flour, 
 which was of a superior grade, and 
 was made by a patent process. They 
 had long applied to their packages a 
 brand, the principal part of which was 
 inclosed in a circle, and read; "Pills- 
 bury's Best X X X X Minneapolis, 
 Minn." Defendant appellant, L. F. 
 Pillsbury, was a dealer in flour in a 
 small town in IlUnois; in 1893, he began 
 to put up and sell flour, which he 
 bought of various millers, in packages 
 bearing a brand closely resembling 
 complainant's in appearance and in 
 the colors of the letters, the principal 
 part of which, inclosed in a circle, read: 
 L. F. PiUsbury's XXXXXXX, Best 
 Patent, Minnesota." Held, that this 
 mark was a colorable imitation of 
 complainants', intended to mislead 
 the public as to the origin of the goods, 
 and ■ that it did not avail defendant 
 that he was accustomed to explain to 
 dealers that he was not selling com- 
 plainant's flour, but other flour of 
 equal or superior grade. 
 
Surnames Used as Abbreviations 
 
 147 
 
 "Huyler's," "Cameron's." When any particular concern has 
 reached such a place in the regard of the public as to be known 
 generally in that familiar way, that concern has a right to protec- 
 tion against a rival which advertises itself simply by use of the 
 family name.*' The use of the same proper name in conjunction 
 " Church V. Kresner, 26 App. Div. own immediate locality? There can 
 
 (N. Y.) 349-1898; 49 N. Y. Supp. 
 742. In 1892, plaintiff entered the 
 retail clothing business, in Brooklyn, 
 as "Cameron's." At that time, there 
 was no other establishment in Brook- 
 lyn using that name nor had one of 
 that' name been known there before. 
 In 1894, defendant opened a store 
 near the plaintiff's and began, through 
 his agents and employees, ,to create 
 the impression that his store was 
 "Cameron's," by use of various de- 
 vices all of which injured the plaintiff. 
 In 1895, defendant openly proclaimed 
 by signs and other devices his place as 
 "Cameron's." Plaintiff alleged that 
 such adoption of the name "Camer- 
 on's" as business name or trade sign 
 and defendant's conduct of the busi- 
 ness was for the purpose of deceiving 
 the public into believing that defend- 
 ant's place of business was in reality 
 that of the plaintiffs. On the author- 
 ity of Higgins Co. v. Higgins Soap Co., 
 144 N. Y. 462-1895; Lee v. Haky, L. 
 R.-5 Ch. App. 155-1869; Devlin v. 
 Devlin, 69 N. Y. 21^-1877; Caswell v. 
 Hazard, 121 N. Y. 484^1890; 24 N. E. 
 707, the court held (p. 353): "If the 
 defendant had been desirous of build- 
 ing up a reputation for himself, if he 
 had not found the name of 'Camer- 
 on's' to have a value to which he 
 had contributed no part, and to which 
 he had no right of enjoyment, can we 
 conceive of a reason why he should, 
 after a business experience of some 
 months, take to himself a name which 
 had already been adopted by another 
 in the same line of business and in his 
 
 be but one answer to this question." 
 E. H. Taylor, Jr., & Sons Co. v. 
 Taylor, 27 Ky. L. Rep. 625; 85 S. W. 
 1085-1905. Plaintiff and its predeces- 
 sors had long distilled and sold a pure 
 whiskey which had become well known 
 as "Old Taylor " whiskey. Defendant 
 was not a distiller, but a rectifier, and 
 began putting upon the market a 
 blended whiskey at a lower price as 
 "Fine Old Kentucky Taylor" whis- 
 key, advertising it as pure whiskey, 
 and describing the sellers as distillers. 
 His bottles did not resemble plaintiff's 
 nor could his labels be said to resemble 
 plaintiff's, except in the use of the 
 words above mentioned. Held, that, 
 while there was no infringement of 
 trade-mark, there was fraudulent 
 simulation tending to mislead those 
 not familiar with the whiskey trade. 
 Morton v. Morton, 148 Cal. 142-1905 ; 
 82 Pac. 664; 1 L. R. A. N. S. 660n. 
 Plaintiffs, Wm. R. Morton and others, 
 were expressmen using as a business 
 name "Morton's Special Delivery." 
 They employed many agents, who 
 wore upon their hats a badge bearing 
 conspicuously the name "Morton" 
 and this badge became familiar to the 
 pubUo as designating plaintiff's agents. 
 Defendant, John Morton, opened a 
 similar business, under the name of 
 "Morton's Transfer Company" and 
 his agents used a badge similar in size, 
 color, and appearance to that of plain- 
 tiff's, bearing the word "Morton's" 
 in letters precisely resembling those 
 on plaintiff's badge. Held, that de- 
 fendant should be enjoined from 
 
148 Family Names or Surnames, as Trade Names 
 
 with separate descriptive words which accurately describe the 
 character of the article to which they are applied will not be en- 
 joined. For instance, in Brown Chemical Co. v. Meyer,^ plaintiff 
 made "Brown's Iron Bitters;" and later defendant began to 
 make "Brown's Iron Tonic," and put the tonic up in containers of 
 different size, color, and appearance and with different labels from 
 that used by plaintiff. Injunction was refused by the United 
 States Supreme Court, which said that the words "Iron Bitters" 
 are descriptive of the article sold. Every man has a right to his 
 own surname for a legitimate purpose, provided he has not as- 
 signed or parted with this right to the use of it, the distinction 
 betweei;! lawful and unlawful use of one's own name being illus- 
 trated by Croft v. Day ^^ and by Holloway v. Holloway.^ 
 
 It will be seen by the foregoing cases that there is a marked 
 difference between the use of a complete name, first name, middle 
 name, if any, and surname, and the use of the sm-name alone. 
 The likelihood of confusion is much increased in the latter^use. 
 And there is little doubt but such use of a name will be enjoined, 
 while the injunction will often be refused where a person uses his 
 full name. See Charles E. Hires v. George A. Hires.^^ 
 
 § 75. Names Made up of Surnames Qualified by Other Words 
 or Symbols. — The mere addition of qualifying words such as 
 "Famous," "Genuine," "Original," etc., will not take a name 
 which otherwise would be similar to the name already in use, out 
 of the rules of unfair competition.^^ 
 
 using a badge with the word "Mor- 68 Ohio St. 337-1893; 67 N. E. 722; 
 
 ton's." 62 L. R. A. 941. "The plaintiff's al- 
 
 Barber v. Manko, 10 R. P. C. 93- leged trade-mark identified * * * 
 1893. Defendant enjoined from selling a 'Croup remedy' which originated 
 in Ireland knives marked "Edward with one Dr. August Drake, a German 
 Barber" where plaintiff's knives were physician who formerly resided in the 
 known in Ireland.as "Barber's knives" State of Iowa, and from whom the 
 and were stamped " Era James Barber, plaintiff obtained the formula. In that 
 Sheffield," this being a trade-mark of sense, therefore, the plaintiff's trade- 
 plaintiff's, mark indicates the origin, and is a 
 
 « 139 U. S. 540-1890; 35 L. ed. 247; guarantee of the character and qual- 
 
 11 Sup. Ct. 625. ity of the remedy which was sold 
 
 «» 7 Beav. 84-1843. with that trade-mark for ten years 
 
 M 13 Beav. 209-1850. before the defendant, Warren W. 
 
 " 182 Pa. St. 346-1897; 37 Atl. Drake, who resided during aU of that 
 
 1117. time in the same town in which the 
 
 52 Drake Medicine Co. v. Glessner, plaintiff conducted his business, came 
 
Surnames Acquired Otherwise than by Descent 149 
 
 § 76. Surnames Acquired Otherwise than by Descent. — 
 
 A person who bears the same family name as some one who is 
 running a business under the common surname will not be al- 
 lowed to sell or transfer the right to use the name to a third person 
 who has no interest in it, when the vendor has never carried on 
 the business in which the third person is engaged. The EngUsh 
 Chancery Division has held that a person cannot, at will, confer 
 the right on others to use his surname. Nor can he hire himself to 
 another and stipulate that the other shall carry on the business in 
 the employee's name, when such a transaction would cause confu- 
 sion with the business of another. ^^ 
 
 into the market with his competitive 
 product. Warren W. Drake had the 
 right to make and sell a croup rem- 
 edy different from the plaintiff's com- 
 pound using his own name; but under 
 the circumstances found by court 
 below he could only do so in such an 
 honest and legitimate manner that 
 the public would not be deceived nor 
 his competitor defrauded. For the 
 reasons stated and upon the facts 
 specially found by the circuit court, 
 which are conclusive here, we are 
 satisfied that the plaintiff has such 
 an interest in the words 'Dr. Drake's 
 German Croup Remedy' as a trade- 
 mark that the use of the words 'Dr. 
 Drake's Famous German Croup Rem- 
 edy' by the defendants is an infringe- 
 ment thereof" (p. 357). 
 
 " Tussaud V. Tussavd, 44 Ch. Div. 
 678-1890. Plaintiff carried on a wax 
 works exhibition, which had been 
 founded in 1802 by Madame Tussaud. 
 The wax works were often spoken 
 of as "Tussaud's." The father of 
 the defendant, Louis Joseph Kenny 
 Tussaud, formerly managed the exhi- 
 bition for the plaintiff. In 1890, he 
 opened a wax works under the name of 
 " Louis Tussaud, Limited." Circulars 
 stated that he had no connection with 
 the plaintiff. At the time of the suit, 
 the defendant had not carried on any 
 
 exhibition on his own account or 
 modelled any figures for his own use. 
 Stirling, J., held that the word "Tus- 
 saud" was well known and of high 
 reputation in connection with wax 
 works, and visitors who had heard 
 of the plaintiff company's exhibition 
 would likely be misled into going to 
 see the other company's exhibition. 
 The question was whether or not, 
 granting that the defendant company 
 should be restrained, the defendant, 
 himself bearing the name "Tussaud," 
 should be restrained also. "I con- 
 ceive it to be clear that the defendant 
 could not, either for valuable consid- 
 eration or otherwise, confer on an- 
 other person the right to the use of 
 the name of 'Tussaud' in cormec- 
 tion with the business which the de- 
 fendant had never carried on, and in 
 which the defendant had no interest 
 whatever. Then comes the question, 
 can he confer that right on a person or 
 a company toward whom he stands 
 simply in the position of a paid serv- 
 ant? He could no doubt confer the 
 right of saying that the business is 
 under his management, but could he 
 go to the same private individual and 
 say to him, 'I will become your servant 
 as manager and modeller for several 
 years, and you shall carry on the busi- 
 ness (which is not to be mine, but 
 
150 Family Names or Surnames, as Trade 'Names 
 
 To transfer to a third person the right to use one's surname 
 when one knows there akeady exist business names containing 
 that surname, which will be injured by use of his name in the 
 same line of business, is fraud if the vendor knew of the use to be 
 made of the name at the time of the sale.^^ 
 
 yours) under my name?' I think not. 
 Would it make any difference that, 
 instead of going to a private individ- 
 ual, he invited the pubUc to become 
 proprietors of a business upon the Uke 
 terms? On that question there is, I do 
 not say decision, but some authority" 
 (p. 688). 
 
 Stonebraker v. Stonebraker, 33 Md. 
 252-1870. The complainant, Henry 
 Stonebraker, had long manufactured 
 various medicines and preparations 
 that were widely known as "Stone- 
 braker's" medicines and prepara- 
 tions. Defendants subsequently em- 
 ployed Abraham S. Stonebraker, a 
 doctor, and the brother of the com- 
 plainant, in the manufacture of 
 similar preparations which closely re- 
 sembled those of complainant, and 
 were sold as "Dr. Stonebraker's " 
 medicines and preparations. Wrap- 
 pers and general get-up were imitated 
 in various ways, and circumstances 
 clearly indicated fraudulent intention. 
 Abraham S. Stonebraker had, for a 
 short time only, some years before, 
 manufactured some drugs and rem- 
 edies to which he applied his name. 
 Held, that defendants were not en- 
 titled so to use the name; injunction 
 granted. 
 
 5* This statement approved in San- 
 ford-Day Iron Works v. Enterprise 
 Foundry & Machine Works, 172 So. W. 
 537 (Tenn. Sup. Ct.). Ernest M. 
 Burrow v. Theodore Marceau, 124 
 A. D. (N. Y.) 665-1908; 109 N. Y. 
 Supp. 105. Napoleon Sarony was a 
 successful New York photographer 
 prior to November 9, 1896, when he 
 
 died. October 7, 1898, Otto Sarony, 
 his executor, sold to plaintiff's assignor 
 Sarony's business with the trade-mark 
 "Sarony" and the good-will of the 
 business. Later this executor agreed 
 with Marceau to use his. Otto Sarony's 
 name, or any part of it. Marceau then 
 organized the "Otto Sarony Co., Pho- 
 tographers" — a New York corpora- 
 tion, in which Otto Sarony owned one 
 share of stock — the consideration for 
 his giving the concern the right to use 
 his name. Held, "The object of this 
 transaction is perfectly apparent. It 
 was not an attempt of a man to 
 transact business in his own name, or 
 to transfer to another the good-will 
 of an established business. Otto 
 Sarony did not intend to go into busi- 
 ness using his own name. * * * 
 The only object he (Marceau) could 
 have was thus to secure some of 
 the business of .the plaintiff. * * * 
 'Sarony' meant nothing except so far 
 as it represented the reputation or skill 
 and artistic merit of the business trans- 
 acted under that name. It was a 
 fraud if the defendant represented 
 that this company was either the suc- 
 cessor of the business and methods 
 established by Napoleon Sarony, or 
 that any member of the Sarony family 
 had any connection with it. It was a 
 fraud upon the plaintiff, in that by the 
 use of the name 'Sarony ' it indicated 
 that the Sarony who had established 
 the business known to the public as 
 Sarony's photographic establishment 
 was connected with it; and it was a 
 fraud for Otto Sarony to make such an 
 agreement with the defendant Mar- 
 
Voluntary Change of Personal Name 
 
 151 
 
 § 77. Voluntary Change of Personal Name. — By comply- 
 ing with the statutory regulations which exist in most states, 
 a person may change his name. If he does this and then uses it in a 
 way to injure the business of another who bears the name the 
 first-mentioned person has adopted, an injunction will lie re- 
 straining the use of the adopted name." 
 
 Arbitrary adoption of a family name as a business name is not 
 allowable when one does not bear that name and another is using 
 the name in business. The court will presume that such an act is 
 done with fraudulent intent. It is unfair for a dealer to use the 
 name of his manager as a trade name for his business or goods 
 when that name is the name under which a competitor carries on 
 business. The fact that it is the manager's name will not excuse 
 such an act.^^ 
 
 ceau when he had transferred the 
 right to use the name of Sarony with 
 the business estabUshed by Napoleon 
 Sarony and had received consideration 
 therefor." See also chapter on " Good- 
 Will," for further discussion of this 
 question. 
 
 " England v. N. Y. Publishing Co., 
 8 Daly (N. Y.), 375-1878. Henry 
 Carter came from England to the 
 United States, took for his name 
 Frank XesUe, but did not do so legally, 
 and published various periodicals 
 known as "Frank Leslie's" and widely 
 circulated. He had caused his son to 
 take the same name of Frank Lesfte, 
 and he was christened and married 
 under that name. Subsequently, in- 
 fluenced by threats and misrepresenta- 
 tions on the part of his father, he 
 assumed the name Henry Leslie, al- 
 though still known as Frank to his 
 wife and various friends. Afterward 
 he resumed the name of Frank, and 
 the defendant, of which he was one of 
 the incorporators, began to publish a 
 weekly journal entitled "Frank Leslie, 
 Jr.'s Sporting & Dramatic Times." 
 Neither of his father's pubhcations 
 dealt especially with sporting or 
 
 dramatic matters. Held no infringe- 
 ment. 
 
 F. Pinel et Cie v. Madison Louis 
 Pinet, Ltd., 15 R. P. C. 65-1897; see 
 also s. c. 14 R. P. C. 933-1897. Plain- 
 tiffs had a well-established business in 
 boots and shoes, and their goods were 
 known as "Pinet" boots and shoes- 
 The founder of the defendant com- 
 pany had repeatedly changed his 
 name, and finally adopted the name 
 Pinet, and the company formed by 
 him began dealing in boots and shoes, 
 which they advertised as "Pinet's 
 Special Boots and Shoes," though their 
 prospectus set forth that they had no 
 connection with F. Pinet et Cie., of 
 Paris. Defendants were enjoined from 
 using the name "Pinet" in any way in 
 their business. 
 
 '" Falk V. American West Indies 
 Co., 71 App. Div. (N. Y.) 320-1902; 
 75 N. Y. Supp. 964. Plaintiff used 
 for twenty years "El Falcon" as the 
 name of a cigar; defendant adopted 
 name "El Falco." Fact that defend- 
 ant's manager was named G. Lopez y 
 Falco, when he did not swear he was 
 known by that full name, will not 
 permit use of word by defendant. 
 
162 Family Names or Surnames, as Trade Names 
 
 § 78. Rights Acquired by Him Who First Uses a Surname 
 in Business. — The first appropriator of his surname as a trade 
 name may adopt the name alone, without any accompanying 
 word or symbol by way of prefix or suffix; and if he does, manufac- 
 turers of like goods having the same name may not use it upon 
 their goods, unless they accompany it by such distinguishing 
 devices by way of prefix or suffix, that a buyer, who takes note of 
 both name and other marks, will not be deceived. If consumers 
 who notice nothing but the name are deceived and there is loss to 
 either in consequence, it must be borne as the result of the act 
 of taking a family name as a trade name; but if the first appro- 
 priator affixes distinguishing figures or words or symbols to his 
 name, the second may not use his name in connection with the 
 same marks, figures, sjrmbols or words, nor with such marks as so 
 resemble those of the first that the similarity and association will 
 probably mislead. This rule does not apply where the defendant, 
 a corporation, chooses its own name and it appears that the name 
 was selected with an intention to defraud. There the corporation 
 is entitled to little consideration, for there is no reason for in- 
 corporators to choose a name likely to confuse, while there is 
 reason for an individual wishing to trade under his own name." 
 
 " Landreth v. Landreth, 22 Fed. appearance from complainant's. Pre- 
 
 41-1884 (C. C. E. D. Wis.). Com- liminary injunction granted, 
 plainants, from 1873, sold peas in ClarkThrecidCo.v.Armitage,67Fed. 
 
 bags marked in blue ink, "Guaran- 896-1895 (C. C. S. D. N. Y.), affirmed 
 
 teed to Contain Landreth's Extra and modified 74 Fed. 896. Complainant 
 
 Early Peas, Provided the Seal is Un- was a New Jersey corporation created 
 
 broken," with the quantity "1-4 in 1865. Defendant was manager of 
 
 Bus.", and the year. These goods "William Clark Thread Company," 
 
 under this label became well known which was organized in New Jersey 
 
 to the trade and the public. In 1883, in 1891, and sold cotton thread as 
 
 defendant began selling peas in bags "Clark's N-E-W Spool Cotton." 
 
 bearing in blue ink, the inscription: Complainant alleged defendant was 
 
 "This Bag Contains Landreth's Ex- putting up thread in a way to lead 
 
 tra Early Peas. Provided the Seal is purchasers to believe that they were 
 
 Unbroken" with the quantity "1-4 buying a new brand of the complain- 
 
 Bus." and the year. Held, that al- ant's thread. Defendant's company 
 
 though defendant was entitled to use changed its name to "The William 
 
 his own name and perhaps the phrase Clark Company." "The chief in- 
 
 "Landreth's Early Peas" he was corporator was William Clark. He 
 
 bound to differentiate his label clearly, was at liberty to avail himself of 
 
 in arrangement of words and general whatever reputation he had gained 
 
Rights op Descendants to the Family Name 153 
 
 This is specifically held in Higgins v. Higgins Soap Co.,^^ a widely- 
 cited case. In this connection see discussion in earlier part of 
 this chapter. 
 
 § 79. Family Names as Corporate Names. — Family names 
 are often used in naming corporations, and when the same family 
 name is used in two corporations confusion and injury usually 
 result. Sometimes this is the result of intent, sometimes of acci- 
 dent, but more and more frequently the courts are finding some 
 means of preventing the use of these corporate names in such man- 
 ner as to cause fraud and deception. A discussion of decisions of 
 this character will be found in the chapter on "Corporate Names." 
 
 § 80. Rights of Descendants to the Family Name Used 
 in Business by an Ancestor. — The general principle is that 
 confusion of the public and use of signs and advertisements 
 calculated to make the public think one concern is another or its 
 successor, is no sufficient reason for taking from sons "the right 
 to continue the business to which they were bred and to use their 
 own name in doing so." ^* So strong is this right that a nephew 
 
 as a thread maker while in the employ 
 of the complainant, but it was un- 
 lawful for him so to act that the 
 public was deceived as to the true 
 condition of affairs.'' The use of his 
 name to name a corporation was "of 
 doubtful propriety but for complain- 
 ant's consent" (id. p. 901). The court 
 was of the opinion "Clark's" had ac- 
 quired a secondary meaning relating 
 to thread and granted injunction 
 against use of "Clark" or "Clark's." 
 Valentine Meat Juice Co. v. The 
 Valentine Extract Co., Ltd., 83 L. T. 
 N. S. 259-1900, 17 R. P. C. 673. The 
 plaintiffs were incorporated in Vir- 
 ginia in 1871. Their product had been 
 sold under some name of which the 
 name "Valentine" formed a part. 
 Until 1898 no other preparation con- 
 nected with the name of Valentine was 
 on the market. The defendant was 
 incorporated in London, 1897. It was 
 promoted by Charles R. Valentine. 
 Its product was first sold as "Valen- 
 
 tine's Valtine Meat Globules," the 
 word Valtine being a shortening of 
 word Valentine. Complainants al- 
 leged that defendants used the word 
 "Valentine" in such a way as to de- 
 ceive the public into the belief that 
 the goods sold by the defendants were 
 manufactured by the plaintiff. In- 
 junction granted against the use of 
 both "Valentine" and "Valtine." 
 
 ^ 144 N. Y. 462-1895, 18 N. E. 714; 
 39 N. E. 490; 27 L. R. A. 42. 
 
 '' Donnell v. Herring-Hall-Marvin 
 Safe Co., 208 U. S. 267-74-1908; 
 Duryea v. Manufacturing Co., 79 
 Fed. 651-1897; 25 C. C. A. 139, 2d 
 Cir. One Duryea and his brothers 
 were the controlling members of the 
 Glen Cove Manufacturing, Company, 
 which for a long time made and sold 
 starch in packages having thereon, 
 in prominent letters, "Duryea's 
 Starch." A picture of the manufac- 
 turing buildings, together with the 
 name of the corporation, also appeared 
 
154 Family Names or Surnames, as Trade Names 
 
 who bore his uncle's exact name could not object to its use by 
 another nephew who did not bear the uncle's full name but who 
 bore the name as his family name.®" 
 
 The individual who first uses a name as a trade name may 
 dispose of it in its trade sense in connection with the good-will of 
 his business as he does of other property — by will; and if he 
 leave no will, it is dealt with by law as a part of his personal prop- 
 erty. His descendants may inherit it. He may give the right to 
 use it in the trade sense to one child to the exclusion of all the 
 others or to someone entirely outside of the family, to the exclu- 
 sion of 9,11 its members. In such cases it has been held that no one 
 of the family can use the name to damage or injure the property 
 of him who has thus acquired it. 
 
 A person may dispose of the right to use his name as a trade 
 name in connection with a particular article, in such a way as 
 to prevent his children from using the name in selUng that article 
 in any manner which will injure the rights sold by the father. 
 The Supreme Court of the United States in Donnell v. Herring- 
 Hall-Marvin Safe Co.,^^ has held that, where a father. Hall by 
 name, did business under a corporate name of which the name 
 Hall was part, and the corporation and the corporate name was 
 sold, the vendee is entitled to an injunction against sons of said 
 Hall, forbidding use of "any name, mark, or advertisement, in- 
 dicating that the plaintiff (the son) is the successor of the original 
 company, or that its goods are the product of that company or its 
 successors, or interfering with the good-will bought from it." *^ 
 
 on the packages, and the starch and Mfg. Co. v. Duryea, 101 Fed. 117- 
 
 the corporation became identified 1900 (C. C. A. 2d Cir.). 
 
 with the name. Thereafter the busi- «» Emerson v. Badger, 101 Mass. 82- 
 
 ness was sold to another corporation, 1869. 
 
 which continued the use of the words " 208 U. S. 267-74-1908. 
 
 and pictures with its own name. Dur- " Citing Howe Scale Co. v. Wyck- 
 
 yea, having subsequently withdrawn off, Seamans & Benedict, 198 U. S. 
 
 from the company, furnished capital 118-1905; 49 L. ed. 972; 25 Sup. Ct. 
 
 to his sons, who thereafter procured 609; Singer Mfg. Co. v. June Mfg. 
 
 other starch to be made for them, and Co., 163 U. S. 169-1895; 41 L. ed. 
 
 sold it as starch "Prepared by Duryea 118; 16 Sup. Ct. 1002. 
 
 & Co.," etc., without imitation of la- DonneU v. Herring-Hall-Marvin Safe 
 
 bels or packages. Held, that this was a Co., 208 U. S. 267-1908 (Hohnes, J.). 
 
 proper use by Duryea and his sons of The Herring-Hall-Marvin Safe Com- 
 
 their own name, and could not be pany was formed in 1892 to take over 
 
 enjoined. See also National Starch an old business, founded by Joseph L. 
 
Rights of Descendants to the Family Name 155- 
 
 In the case of Herring-Hall-Marmn Safe Co. v. Hall's Safe 
 Co.,^^ a contract of sale specified that along with the plant, pat- 
 terns, stock of safes, accounts, papers, etc., it was intended to 
 convey all "trade-marks, patent rights, trade rights, good-will, 
 and all its property and assets of every name and nature," and 
 agreed that the business "is taken over in all respects as a going 
 concern." The question was as to the rights of sons of the original 
 Hall, who founded the Hall business and the reputation enjoyed 
 by "Hall's Safes." Held, that the "Hall's Safe & Lock Co.," a 
 corporation founded by Hall (the stock of which belonged to 
 his children and estate), acquired what reputation the name Hall 
 enjoyed. The good-will belonged to that company. The sons, by 
 this transfer, did not lose the right to use the name Hall in the safe 
 business, if used with proper explanations accompanying their 
 every use of it. An absolute prohibition against using the name 
 ^all, it was held, would carry trade-marks too far. Therefore, the 
 rights of the two parties were there reconciled by allowing the 
 use, provided that an explanation was attached. The sons might 
 have left the old company and set up for themselves. "They 
 might have competed with it (the old company); they might 
 have called attention to the fact that they were the sons of the 
 
 Hall, of maJdng safes, which had be- company organized by the two sons, 
 
 come well known ag "Hall's Safes," Held, that these sons and the com- 
 
 the business being transferred by a pany formed by them had the right 
 
 corporation controlled by the Hall to use the name "Hall" in connection 
 
 family. The selling corporation was with their business and in describing 
 
 dissolved, and Edward C. Hall became their safes, subject to the duty not to 
 
 the president, and another son of the mislead the public by the form of any 
 
 founder treasurer of the new com- name, sign, mark, or advertisement, 
 
 pany, under contracts by which their into supposing them to be successors 
 
 services were secured for a certain to the old business, or their safes to be 
 
 period. Upon the termination of made by the Herring-Hall-Marvin 
 
 these contracts the two sons organ- Company. It does not appear very 
 
 ized an Ohio corporation to engage in specifically just what use of the name 
 
 a competing business of making safes, the court would have deemed admis- 
 
 Donnell was the president of an Ilhnois sible. The decree below had enjoined 
 
 corporation, the Hall Safe & Lock the marking or advertising of safes, 
 
 Company, which, although Donnell or the carrying on of business, with 
 
 had been the selling agent of the or under any name of which the word 
 
 Herring-Hall-Marvin Company, now "Hall" was a part. This decree was 
 
 began at the same place and with the reversed. 
 old sign, "Hall's Safes," to sell the " 208 U. S. 554-1908. 
 safes made by the competing Ohio 
 
153 Family Names or Surnames, as Trade Names 
 
 man who started the business; they might have claimed their 
 due share, if any, of the merit in making Hall's Safes what they 
 were,** but they would have been at the disadvantage that some 
 names and phrases, otherwise truthful and natural to use, would 
 convey to the public the notion that they were continuing the 
 business done by the company or that they were in some privity 
 with the estabUshed manufacture of safes which the public al- 
 ready knew and liked. To convey such a notion would be fraud 
 and would be stopped. Therefore, such names and phrases could 
 be used only if so explained that they would not deceive"" 
 
 " White V. Trowbridge, 216 Pa. St. 
 11; 64 Atl. 862. 
 
 "^ Hardy v. Cutter, 3 U. S. Pat. 
 Gaz. 468-1873 (as cited in 16 Phila. 
 182). Plaintiffs manufactured "Cut- 
 ter's Whiskey," as successors, by 
 purchase, of J. H. Cutter, and branded 
 their barrels "J. H. Cutter — Old 
 Bourbon." Defendant, a son of J. H. 
 Cutter, also manufactured whiskey, 
 marking it "J. F. Cutter, son of the 
 late J. H. Cutter," etc. The marks 
 resembled each other only in the use 
 of the name "Cutter." Held, that 
 d^endant was entitled to use his 
 own name in this way; injunction 
 denied. 
 
 ■Van Stan's Stratena Co., Ltd., v. Van 
 Stan, 209 Pa. St. 564-1904; 58 Atl. 
 1064. Frederick Van Stan had in- 
 vented a peculiar kind of cement 
 which, for some time prior to 1876, he 
 had manufactured and sold in Eng- 
 land as "Van Stan's Stratena Co. 
 Cement." In 1876 he transferred to 
 one, who, in 1878, assigned to plaintiff 
 the sole right to make and sell the 
 cement in the United States, with the 
 use of the name and trade-mark. In 
 1889 defendant, Victor F. Van Stan, a 
 son of Frederick Van Stan, came to 
 the United States, was employed for 
 some years by plaintiff, and became 
 familiar with the business and the 
 customers. He left plaintiff's employ 
 
 and, after an interval, returned to 
 Philadelphia, where he began selling an 
 article labeled "Victor F. Van Stan's 
 Cementive" and sometimes advertised 
 as "Van Stan's Improved Cement." 
 His circulars, labels, and wrappers 
 were in various ways misleading. 
 Held, that defendant was not entitled 
 thus to use his own name in describing 
 and advertising his cement. Citing 
 Russia Cement Co. v. LePage, 147 
 Mass. 206-1888; 17 N. E. 304, and 
 other cases. 
 
 Robinson v. Storm, 103 Tenn. 40- 
 1899; 52 S. W. 880. In 1872 Dr. 
 Mitchell prepared a cathartic for- 
 mula which he put into the hands 
 of Stever & Robinson, druggists, to 
 perfect so as to make it palatable. 
 Dr. Mitchell claimed no interest in the 
 formula. He prescribed it, soon after 
 he invented it, for Captain Storm, a 
 citizen of wide influence, who recom- 
 mended it so generally that it soon 
 acquired a wide reputation. Stever & 
 Robinson, with his consent, then put 
 it up and sold it as "Storm's Liver 
 Regulator," out of compliment to 
 Captain Storm. In 1873 Robinson 
 bought out Stever and became sole 
 owner of the formula. Captain Storm 
 died, and his child, the defendant, 
 asked Dr. Mitchell to aid him to 
 acquire the formula that he might 
 sell the medicine. The doctor de- 
 
Rights of Descendants to the Family Name 157 
 
 (id. p. 559). It has been held that the fact that there was no 
 person by the name of Chickering connected with the concern 
 making Chickering pianos in Boston, gave no right to other per- 
 sons who bore the same name, to set up a piano business and hold 
 themselves out as being the only Chickerings making pianos, thus 
 giving the impression that they were the rightful heirs of and 
 successors to the name.^^ 
 
 This same name was considered in Chickering v. Chickering,^'' 
 in which the last mentioned case was followed and the defendants 
 enjoined from the use of the name "Chickering" as the name of a 
 piano, from advertising that they were connected with the original 
 clined. He then obtained another medicine came into use, and Robin- 
 
 formula, which he put on the market 
 as "Storm's Liver Regulator." Both 
 labels have the catch words "Storm's 
 Liver Regulator;" the bottles are of 
 same general shape, the neck of de- 
 fendant's bottles being a little longer 
 than those of plaintiff's. The recom- 
 mendations on each bottle are not 
 exactly the same, but similar. The 
 cartons vary in color, but not enough 
 to place purchasers on guard. On 
 both cartons and labels the word 
 "Storm's" is very prominent. Com- 
 plainant's carton had mortar and 
 pestle, surrounded by black rim and 
 words "Storm's," "Only the best," 
 and "Prepared by Jas. S. Robinson, 
 Apothecary, Memphis, Tenn." De- 
 fendant's carton had picture of Cap- 
 tain Storm and words "Storm's Liver 
 Regulator," and "Prepared by em- 
 inent chemists for A. G. Storm," and 
 "This is not the medicine put up by 
 James S. Robinson," and in this the 
 word "Robinson" is prominent. Held, 
 it is sufficient that between the two 
 labels there is a simulation "likely to 
 deceive an incautious and ordinary 
 purchaser," Decree forbade use of 
 the words "Storm," "Captain Storm," 
 and "Storm" in connection with 
 words "Liver Regulator," and also 
 the use of the description of how the 
 
 son's name on bottles, etc., and also 
 forbade the use of Robinson's formula, 
 etc. 
 
 »» Chickering v. Chickering & Sons, 
 120 Fed. 69-1903 (C. C. A. 7th Cir.). 
 Two men named Chickering set up 
 business in Chicago for manufacture 
 of pianos. Chickering & Sons were 
 in same business in Boston and had 
 been since death of last Chickering 
 connected with said company some 
 years before. Defendants advertised a 
 sketch of Chickering family and their 
 "famous piano," concluding with this 
 statement: "By right of purchase 
 this name will continue to be used 
 on the Boston Piano, but by reason 
 of their kinship and because of their 
 long practical training under the 
 'Chickering System' the fact is prop- 
 erly advanced that 'the only piano 
 made by a Chickering ' is now made in 
 Chicago by Chickering Brothers." 
 The expression "The only piano made 
 by a Chickering" was cast into their 
 piano frames and inserted in their 
 catalogues. Held, that injunction was 
 properly granted restraining use of 
 word Chickering on ground of unfair 
 competition. 
 
 " 215 Fed. 490-1914 (C. C. A. 7th 
 Cir. 1914). 
 
158 Family Names or Surnames, as Trade Names 
 
 Chickering by relationship, and in other ways forbidden to "make 
 use of the good-will and reputation of the Chickering piano" in 
 selUng their goods. 
 
 Similarly, an injunction has been granted forbidding a son 
 from seUing goods under the family surname when the father was 
 using the name in the same business. This was the decision in 
 Gouraud v. Trust,^^ where the defendants were sons of the plaintiff 
 and plaintiff had been long engaged in selhng a cosmetic called 
 "T. Felix Gouraud's Oriental Cream and Magical Beautifier." 
 Defendants began to make a cosmetic they called "CrSme Orien- 
 tal by Dr. T. F. Gouraud's Sons." 
 
 If a widow continues a business belonging to the deceased hus- 
 band, it seems she cannot transfer the exclusive right to use the 
 father's name to one of her sons to the exclusion of others, for all 
 the children had equal rights to the use of the name.^^ 
 
 The North Carolina courts have held that descendants of 
 one Bingham, who established a "Bingham School" at Mebane, 
 N. C, may continue the school although another school called 
 "Bingham School" had been estabUshed at Asheville; and that 
 both schools may use the name because no confusion could arise 
 as the schools are not in the same locality.™ The case of Ball v. 
 
 es 6 Thomps. & Cook (N. Y.), 133- a school at Mebane, N. C. (site of old 
 
 1875. • school), under name "William Bing- 
 
 «' Marshall v. Pinkham, 52 Wis. ham School," and claim it was or- 
 
 572-1881; 9 N. W. 615. ganized in 1793 and conducted by the 
 
 ™ Bingham School v. Gray, 122 N. Binghams since, and they have right 
 
 C. 699-1898; 41 L. R. A. 243; 30 S. E. to name Bingham School. Held, as 
 
 304. The Bingham School was estab- defendants are widow and children of 
 
 Ushed in 1793 by one Wm. Bingham, Wm. Bingham, and are on site of old 
 
 and in 1864 was incorporated as The school, they can use words "Bing- 
 
 Bingham School. , The charter pro- ham School" or "Wm. Bingham 
 
 vided: "Nothing herein contained School." "That the plaintiff is in- 
 
 shall prejudice the original and ulti- corporated as the 'Bingham School' 
 
 mate right of property in the name of does not give it the exclusive right to 
 
 said school pertaining to WiUiam that name; another corporation might 
 
 Bingham as representative of the name be created by and operated under the 
 
 and reputation of the school." The same title, when not in the same lo- 
 
 charter having expired Robt. Bingham cality, in the absence of an intent to 
 
 had it again incorporated in 1895. injure the first named corporation 
 
 In 1875 Wm. Bingham died, left all or to avail itself fraudulently of the 
 
 his property to widow for life, then to other's good name and reputation." 
 
 children. Defendants are his widow Citing Farmers' Loan & Trust Co. v. 
 
 and children, who are now conducting Farmers' Loan & Trust Co. of Karh 
 
Prefixes, Suffixes and First Names 159 
 
 Best " is distinctly at variance with this decision, and it seems 
 with good reason; for while no doubt in years past, confusion 
 would be quite unlikely, under modern conditions of easy com- 
 munication and in view of the facilities offered by newspapers 
 and periodicals, one of these schools might easily avail itself of the 
 reputation of the other in the minds of the persons not familiar 
 with local history and conditions. 
 
 The right of a son to use his father's name and the limitations 
 upon this right in equity are shown in Frazier v. Dowling.''^ 
 Waterfill and Frazier (father of plaintiff) made "WaterfiU and 
 Frazier Whiskey." Frazier died. Appellees came into control of 
 his business. Frazier's son then formed a partnership with J. W. 
 Waterfill, a cousin of his father's partner, to distill whiskey in 
 another county. They marked their whiskey in various ways and 
 finally began to mark it "Waterfill and Frazier, Distillers, etc.," 
 the exact label of the old firm, and were enjoined from using this 
 brand. Held, "that this combination did not represent the name 
 of either of the partners in the new firm. If the sole object in 
 using this combination was to tell the truth it does not do so any 
 more than * * * 'G. G. Frazier & Co.,' or 'J. M. Water- 
 fill & Co.,' both of which names this new firm discarded." 
 
 Here, then, was an evident attempt by descendants to use a 
 right to a father's name and a family name for the purpose of 
 passing themselves off as persons they were not, as owning and 
 carrying on a business they did not own and did not carry on. 
 This question of Rights of Descendants is considered in the chap- 
 ter on "Transfer." 
 
 § 81. Prefixes, Suffixes and First Names. — Mere use of a first 
 name with a surname already in use by others will not save such 
 use from a charge of fraud.^' 
 
 "But he made prominent in every way the name of Guth, and 
 evidently relied for success upon the popularity of candies asso- 
 ciated with that name. True, he made use of his full name, 
 "Charles G. Guth," instead of the surname "Guth," or "Au 
 
 SOS, 1 N. Y. Supp. 44-1888; 21 Abb. " 135 Fed. 434^1905 (C. C. N. D. 
 
 N. C. 104. "Certainly there could 111.)- 
 
 be no confusion between a Bingham " 39 S. W. 45-187; 198 Ky. L. Rep. 
 
 School at Asheville and one at Me- 1109. 
 
 bane" (id p. 707). Injunction de- '"Guth v. Guth, 224 Fed. 934-1915 
 
 Hied, (C. C. A. 4th Cir.). 
 
160 Family Names or Surnames, as Trade Names 
 
 Guth," which he had previously employed; but it is the sur- 
 name which catches the pubUc, and few purchasers would notice 
 the difference between one form and the other. In the nature of 
 things, confusion was inevitable." 
 
 In Repetti v. Bepetti, the plaintiff was a corporation using as a 
 name the one word "Repetti." The defendant incorporated 
 as "Louis Repetti, Inc.," and Goff, J., enjoined the defendant 
 from using the name.^'" In Romeike v. Romeike the plaintiff was 
 a corporation using the name "Henry Romeike." The defend- 
 ant was incorporated by former officers of the plaintiff under the 
 name "Albert Romeike, Inc." Held that the defendant's use of 
 its corporate name was unfair competition.^'^ 
 
 The resemblance between two similar labels appeals to the 
 eye; a family name used as a trade name or part of a trade name 
 appeals to the ear. The general look of a label, the "tout en- 
 semble," as Judge Brewer calls it in Lorillard v. Peper,^^ is what 
 the public remembers. It is the name in common use, the 
 nickname, if you will, not its full name, that becomes the real 
 name — for instance, "Baker Chocolate," not "Walter Baker & 
 Co.'s Chocolate," becomes known to the public by advertising 
 and by the merits of the goods, and pm-chasers remember that 
 name. For Wm. H. Baker to sell chocolate as "Baker's Choco- 
 late" was to commit a fraud on Walter Baker & Co.''^ The name 
 used by the defendant may be almost an exact counterpart of that 
 of the complainant, and yet no unfair competition results.'* 
 Again there may be many points of difference between them and 
 yet the use of the defendant's name may be unfair. 
 
 "" Repetti v. Louis Repetti Inc. et al, "* WaUer Baker & Co. v. Baker, 77 
 
 6 Trade-Mark Rep. 94. Fed 181-1896. 
 
 '"^ Henry Romeike Inc. v. Albert '"Brovim Chemical Co. v. Meyer, 139 
 
 Romeike & Co. Inc., 7 Trade-Mark U. S. 540-1890; 35 L. ed. 247; 11 Sup. 
 
 Rep. 16. Ct. 625. 
 
 " 86 Fed. 956-1898 (at p. 960). 
 
CHAPTER VII 
 
 Corporate Names ^ 
 
 Section 82. Effects of a state charter on names of corporations. 
 
 83. Effect of incorporation of a business on its right to its name. 
 
 84. Foreign and domestic corporations — rights of, as to name. 
 
 85. Right to name on dissolution. 
 
 86. Names of charitable corporations. 
 
 87. Incorporating under nickname of rival. 
 
 88. Abbreviations of corporate names. 
 
 89. Affirmative duty to differentiate in choosing corporate names. 
 
 90. Family names as names of corporations. 
 
 91. What is evidence of fraud in use of a corporate name. 
 
 92. Rights arising out of priority in use of corporate names. 
 
 93. Use of term "works," "company," etc., by an individual or part- 
 
 nership. 
 
 94. Outgoing stockholders and employees. 
 
 95. False or misleading use of corporate names. 
 
 96. Names of unincorporated societies, clubs, etc. 
 
 97. Names of fraternal societies. 
 
 98. Similarity of corporate names, what is? 
 
 Chief Justice Fuller contends that there is no distinction 
 between rules applying to names used as corporate names and 
 those applying to names used by a firm or partnership. He says: 
 "But if every man has the right to use his name reasonably and 
 honestly, in every way, we cannot perceive any practical dis- 
 tinction between the use of the name in a firm and its use in a 
 corporation. It is dishonesty in the use that is condemned, 
 whether in a partnership or corporate name, and not the use it- 
 self." 1 
 
 There is, however, one important difference between corporate 
 names and other names. It is found in the fact that the choice of 
 a corporate name is the result of a deliberate act of the incorpo- 
 rators, while the firm or partnership that uses the personal names 
 of its members uses a name to which they have a certain right. 
 
 ^Howe Scale Co. v. Wyckoff, Seor at p. 136; 1905, 49 L. ed. 972; 25 
 mam & Benedict, 198 U. S. 118- Sup. Ct. 609. 
 
 161 
 
162 Corporate Names 
 
 The rule in this regard is clearly set out in Chas. S. Higgins Co. 
 V. Higgins Soap Co^^ 
 
 Personal names, like one's parents, are not of one's own choos- 
 ing; but a corporate name is chosen by the incorporators them- 
 selves; hence it is in their power to make it what they will. That 
 being the case, their rights arising from its possession are less 
 important and their responsibiUty for its use is greater than in the 
 case of their own personal names.^ 
 
 Bradley, J., says in Celluloid Mfg. Co. v. Cellonite Mfg. Co.,^ 
 "As to the imitation of the complainant's name. The fact that 
 both are corporate names is of no consequence in this connection. 
 They are the business names by which the parties are known, and 
 are to be dealt with precisely as if they were the names of private 
 firms or partnerships. The defendant's name was of its own 
 choosing, and, if an unlawful imitation of the complainant's, 
 is subject to the same rules of law as if it were the name of an 
 unincorporated firm or company. It is not identical with the 
 complainant's name. That would be too gross an invasion of the 
 complainant's right. Similarity, not identity, is the usual re- 
 course when one party seeks to benefit himself by the good name 
 of another." ' 
 
 Incorporators of a company choose a name at their peril. They 
 will be presumed to know the names under which the probable, 
 
 1° Charles S. Higgins Co. v. Higgin's cases, not on the ground that the state 
 
 Soap Co., 144 N. Y. 462: 1895. may not aflSx such corporate names as 
 
 '' Above statement approved, Bates it may elect to the entities it creates, 
 
 Mfg. Co. V. Boies Mach. Co., 172 F. but to prevent fraud, actual or con- 
 
 896. structive." Per Andrews, C. J. 
 
 2" 32 Fed. 94 (C. C. D. N. J.) 1887. HazeUm Boiler Co.v. HazeUon Tripod 
 
 ^Seea]so Chas. S.HigginsCo.v.Hig- Boiler Co., 137 111. 231-33-1891; 28 
 
 gins' Soap Co., 144 N. Y. 462-68-1895; N. E. 248. "The right of a corpora- 
 
 39 N. E. 490; 27 L. R. A. 42. "In re- tion to the use of its name can be no 
 
 spect to corporate names the same rule greater or different in principle than 
 
 appUes as to the names of firms or that of an individual." 
 
 individuals, and an injunction lies to Merchants' Detective Assn. v. Detective 
 
 restrain the simulation and use by one Mercantile Agency, 25 111. App. 250- 
 
 corporation of the name of a prior 1888. A corporate name "is entitled to 
 
 corporation which tends to create con- be protected in its use upon the same 
 
 fusion and to enable the latter corpora- principle and at least to the same ex- 
 
 tion to obtain, by reason of the similar- tent that individuals are protected 
 
 ity of names, the business of the prior in the use of trade-marks" (at p. 
 
 one. The courts interfere in these 255). 
 
Effect of Incorporation of a Business 163 
 
 existing competitors of the new company are doing business. 
 The choice of a name colorably similar to that used by a com- 
 petitor, is evidence of fraud, especially if it is likely that the new 
 corporation will profit by the confusion that will result from the 
 similarity between its names and that of a competitor.* 
 
 § 82. Effects of a State Charter on Names of Corporations. — 
 The statutes of the various states provide for the registration of 
 corporate names, but forbid the registration of names so nearly 
 identical with those already registered as to create confusion, or 
 the incorporation of companies which bear names colorably similar 
 to corporate names aheady in use. The provisions of these stat- 
 utes are not imiform but vary with the different states. The 
 fact that the defendant corporation, in a suit for unfair com- 
 petition involving its name, has been chartered by some state 
 government, does not afford it a defense or immunity from ac- 
 tion against it in a federal court or state court by a corporation 
 of another state, where the name adopted is used to compete 
 unfairly with the complainant company.^ 
 
 § 83. Effect of Incorporation of a Business on its Right to its 
 Name. — The incorporation of an organization does not alter in 
 any way its rights, as against those of another concern using the 
 same or a similar name. The act of incorporation gives it no right 
 to demand that a rival desist from using the common name. The 
 Supreme Court of the United States has said: "There is no dis- 
 tinction between corporations and natural persons in the prin- 
 ciple, which is to prevent fraud." " If damage is suffered by the 
 corporation it must bear it; for it arises out of the folly of de- 
 
 ' Metropolitan, etc., Co. v. Metro- tors in imitation of complainant's, for 
 
 politan, etc., Co., 156 A. D. 577 (N. Y.) the fraudulent purpose of deceiving 
 
 May, 1913. the public and appropriating com- 
 
 ^Peck Bros. & Co. v. Peck Bros, plainant's good-will and reputation" 
 
 Co., 113 Fed. 291-1902 (C. C. A. 7th (reporter's note). Fort Pitt Building & 
 
 Cir.) • 62 L. R. A. 81. "The fact that Loan Assn., etc., v. Model Plan BuiM- 
 
 a corporation has been chartered by ing & Loan Association, 159 Pa. St. 
 
 a state under a certain name, which 308-1893; Newby v. Oregon Central 
 
 it selected, does not afford it immunity Ry. Co., 1 Deady, 609-1869; Fed. 
 
 from a suit in a federal court by a Cas. No. 10,144. See also Oneida 
 
 corporation of another state to enjoin Community v. Oneida Game Trap Co., 
 
 it from prosecuting its business under 168 App. Div. 769 (N. Y.) 1915. 
 
 such a name, where the name was " Waterman v. Modern Pen Co., 235 
 
 deliberately adopted by its incorpora- U. S. 88-94-1914. 
 
164 
 
 Corporate Names 
 
 liberately incorporating under a name the incorporators knew or 
 ought to have known had they used proper diligence and care, was 
 akeady being used. Furthermore, persons desiring to incorporate 
 under a name they have previously used as the name of an or- 
 ganization not incorporated, are not barred from so doing because 
 of the fact that others had incorporated under that name subse- 
 quent to the time they began to use it as a, name of an unincor- 
 porated organization. If they were the first to use the name and 
 to become known by it, they cannot be denied the right to in- 
 corporate under that name, because others have adopted their 
 name, and preceded them in incorporating under it. Any damage 
 resulting to the plaintiffs from such incorporation is chargeable 
 to their folly in choosing a name already in use.'' 
 
 ' Grand Lodge of the Ancient Or- 
 der of United Workmen of the State 
 of Iowa V. Graham, 96 Iowa 592; 65 
 N. W. 837; 31 L. R. A. 133-1895; 
 The court's opinion in this case was 
 substantially as follows: The ques- 
 tion is on the exclusive right of the 
 plaintiff to the name Grand Lodge of 
 the Ancient Order of United Workmen 
 of Iowa and the letters G. L. A. 0. U. 
 W. of Iowa. It was argued that in- 
 corporating under this name and 
 receiving a certificate from the state 
 to do business under this name, the 
 plaintiff became entitled to its exclu- 
 sive use. The defendants had the 
 prior right to the name, and the fact 
 that they were not incorporated is 
 whoUy immaterial. The plaintiff, in 
 amending its articles of incorporation, 
 and in securing its certificates from 
 the state auditor, has taken the name 
 which was formerly used by the de- 
 fendants, and of which they cannot 
 be deprived, simply because the plain- 
 tiff sees fit to use it as its corporate 
 name. A corporation cannot insist, 
 after recording its articles, that any 
 person or persons abandon the name 
 which they have previously selected 
 and under which they are operating. 
 
 Any damage resulting is due to the 
 folly and indiscretion on the part of 
 the second corporation in selecting a 
 name already in use. 
 
 Lane v. Brothers & listers of the 
 Evening Star Society, 120 Ga. 355-1904; 
 47 S. E. 951. An incorporated mutual 
 benefit society, the "Brothers & Sisters 
 of the Evening Star Society," main- 
 tained or controlled a dependent or 
 branch society, not separately incorpo- 
 rated, entitled "Sons and Daughters of 
 the Evening Star Society." Certain 
 persons, who had been officers of the 
 branch society, repudiated the author- 
 ity of the incorporated society, and ap- 
 plied for a corporate charter under the 
 name of "Sons and Daughters of the 
 Evening Star Society." Hdd, that they 
 should be restrained by injunction 
 from prosecuting their application 
 for a charter under this name. The 
 injunction covered other matters also; 
 such as the control of bank funds, 
 etc. 
 
 American Clay Mfg. Co. of Pa. v. 
 American Clay Mfg. Co. of N. J., 198 
 Pa. St. 189-91-1901; 47 Atl. 936. 
 Both parties possessed the corporate 
 name "American Clay Manufacturing 
 Company." Complainant was or- 
 
Rights of Foreign and Domestic Corporations 165 
 
 § 84. Foreign and Domestic Corporations — Rights of, as 
 to Name. — According to the rules prevaiUng in some jurisdic- 
 tions, foreign corporations must be subordinated to domestic 
 corporations so far as the policy of any state is concerned; for a 
 state is bound to protect and assist first those companies incor- 
 porated under its own laws, and the rights of citizens of other 
 states must be subordinated to the rights of the domestic com- 
 pany. The Ilhnois courts go so far as to hold that a foreign com- 
 pany has no standing in its courts to contest a right to use a name 
 which the state has bestowed on one of its own companies.* 
 
 We do not believe this doctrine is generally followed. Most 
 jurisdictions uphold the common-law rights which are acquired in 
 a name by usage regardless of the jurisdiction in which it may 
 
 ganized in Pennsylvania, defendant 
 in New Jersey. Plaintiff made brick 
 for buUdings and contemplated mak- 
 ing fire-proofing brick. Defendant 
 made fire brick and sewer pipes. 
 Later defendant put under its name 
 the words, "of New Jersey" in red 
 ink. No intended injury is alleged, 
 but much confusion resulted because of 
 the similarity of the names. Defend- 
 ant incorporated subsequently to the 
 plaintiff and began to do business in 
 Pennsylvania after plaintiff had be- 
 gun business there. Held: "In case 
 of associations voluntarily formed 
 and named, whether chartered or not, 
 there is an opportunity to avoid such 
 difficulty by refraining from choosing 
 a name identical with, or similar to, 
 that of associations already in exist- 
 ence." The defendant's name caused 
 plaintiff injury and plaintiff had no 
 remedy at law, and hence the case was 
 within the jurisdiction of equity, 
 Held also that the injury was not de 
 minimis. 
 
 'HazeUon Boiler Co. v. Hazelton 
 Tripod Boiler Co., 142 111. 494-1892; 
 30 N. E. 339. "The Hazelton Boiler 
 Company" was organized June 23, 
 1888, in New York. "Hazelton Tri- 
 
 pod Boiler Company" was organized 
 February 29, 1888, in lUinois. Plain- 
 tiff was, therefore, incorporated after 
 defendant. "But the complainant is 
 in the attitude of a foreign corpora- 
 tion coming into this state and seek- 
 ing to contest the right to the use 
 of a corporate name which this state, 
 in furtherance of its own pubhc 
 poUcy and in the exercise of its own 
 sovereignty, has seen fit to bestow 
 upon one of its own corporations. 
 For such a purpose, a foreign cor- 
 poration can have no standing in our 
 courts. Such corporations do not 
 come into this state as a matter of 
 legal right, but only by comity, and 
 they cannot be permitted to come for 
 the purpose of asserting rights in 
 contravention of our laws or public 
 policy. It is competent for this state, 
 whenever it sees fit to do so, to debar 
 any or all foreign corporations from 
 doing business here, and whatever it 
 may do, by way of chartering cor- 
 porations of its own, cannot be called 
 in question by corporations which are 
 here only by a species of legal suf- 
 ferance" (id. p. 505). The United 
 States courts have refused to follow 
 this case. 
 
166 
 
 Corporate Names 
 
 have been incorporated, as against rights which a company ac- 
 quires by the mere act of incorporation.^ 
 
 § 85. Right to Name on Dissolution. — It has been held that 
 where a corporation has ceased to exist, the stockholders are 
 partners so far as the name goes, and all have an equal right to it. 
 It would seem that those of them who first used the name, without 
 objection on the part of the others, would be entitled to it."" 
 
 § 86. Names of Charitable Corporations. -^ The fact that a 
 corporation is an eleemosynary or charitable one and has no goods 
 to sell, and does not make money, does not take it out of the 
 protection of the law of unfair competition. Distinct identity is 
 just as important to such a company, oftentimes, as it is to a 
 commercial company. Its financial credit — its abihty to raise 
 funds, its general reputation, the credit of those managing it and 
 supporting it, are all at stake if its name is filched away by some 
 other organization, and the two become confused in the minds of 
 the public. The existence of two charitable organizations in one 
 city — or even in one section of the country, both of which bore 
 
 ^Farmers' Loan & Trust Co. v. 
 Farmers' Loan & Trust Co. of Kan- 
 sas, 1 N. Y. Supp. 44-1888; 21 Abb. 
 N. C. 104. 
 
 Blackwell's Durham Tobacco Co. v. 
 American Tobacco Co. (N. C), 59 S. E. 
 123-1907. Plaintiff, a domestic corpo- 
 ration, sought to enjoin a defendant, 
 "Blackwell's Durham Tobacco Com- 
 pany of New Jersey," from conducting 
 a competing business under that name. 
 It was not alleged or shown that plain- 
 tiff had been incorporated, or had used 
 the name in business, prior to its use by 
 defendant. Held, that plaintiff was 
 not entitled to the injunction; that 
 the fact that it was a domestic corpo- 
 ration did not entitle it to use its 
 name as against the rights acquired by 
 user by the foreign corporation; and 
 that plaintiff could not raise the point 
 that defendant had not complied with 
 the statutory requirements for doing 
 business in North Carolina, this being 
 
 a matter that could be availed of only 
 by the state. 
 
 ^"Ottoman Cahvey Co. v. Dane, 95 
 111. 203-1880. In 1875, defendants 
 and Adams organized a corporation 
 under laws of Michigan called "the 
 Ottoman Cahvey Co.," which did busi- 
 ness in Chicago. In 1878, Adams and 
 others organized a corporation under 
 the lUinois laws — "The Ottoman 
 Cahvey Co.," located in Chicago. 
 This company was the complainant. 
 Held, so far as complainant was con- 
 cerned, defendaints had a prior right 
 to the name. Defendants had as 
 much right to use the name as the 
 complainant. As the complainant 
 had shown no equitable ground for 
 relief, the bill was dismissed. The 
 ground on which the complainant 
 asked relief was that the Michigan 
 corporation no longer legally existed. 
 That being so, the incorporators were 
 partners and had a right to any name 
 they saw fit to use. 
 
Names of Charitable Corporations 
 
 167 
 
 names in which the words "Young Women's Christian Associa- 
 tion" appeared, could not but be a distinct injury to one or the 
 other. The evils of such a condition are clearly shown in the cases 
 given in the note below." 
 
 " International Committee Y. W. C. 
 A. V. Y. W. C. A. of Chicago, 194 111. 
 194-1902; 62 N. E. 551; 56 L. R. A. 
 888. The appellee is one of a large 
 number of associations of women, 
 who have operated under the name 
 'of "The Women's Christian Asso- 
 ciation" or "The Young Women's 
 Christian Association." Appellee in- 
 corporated in 1877 under the name 
 "The Women's Christian Associa- 
 tion," which name was, in 1887, 
 changed to "The Young Women's 
 Christian Association of Chicago." 
 Two local associations had been 
 organized in Chicago, the previously 
 chosen field of appellee, under the 
 names, respectively, of " The North 
 Chicago Young Women's Christian 
 Association," and " The West Chicago 
 Young Women's Christian Associa- 
 tion," and in furtherance of that work, 
 the appellant has issued and circulated 
 through the mails a publication known 
 as " The Young Women's Christian 
 Association Quarterly," which was 
 latterly succeeded by "The Young 
 Women's Christian Association Evan- 
 gel; " "Much confusion has arisen on 
 account of the similarity in nanie of 
 the appellant and appellee. Letters 
 intended for the one have been de- 
 livered to the other; visitors intend- 
 ing to call upon the one have called 
 upon the other, and donations in- 
 tended for the one have been received 
 by the other * * *." (at pp. 197, 
 198). "Such name was adopted by 
 the appellant advisedly, and for the 
 purpose of leading the general pub- 
 lic, and the persons with whom it 
 was likely to be associated, and from 
 
 whom it hoped and expected to ob- 
 tain support by way of donations, 
 to believe that it stood as the com- 
 mittee and representative of the asso- 
 ciations known as 'The Young Wo- 
 men's Christian Association,' then 
 organized in the field where it ex- 
 pected to operate. * * * Such 
 conduct, in law, amounts to a fraud 
 upon the public and appellee. While 
 it is true that generic terms or mere 
 descriptive words are the common 
 property of the public, and not ordi- 
 narily susceptible of appropriation 
 by an individual, that fact will not 
 prevent the issuing of an injunction 
 to restrain the use of such terms and 
 words, at the suit of one who has al- 
 ready adopted them, where the evi- 
 dence shows a fraudulent design and 
 the public will be misled" (id. p. 
 199). "We are of the opinion the 
 Appellate Court properly held that 
 the name of the appellant is so similar 
 to the name of the appellee and so 
 arranged as to deceive and mislead the 
 public into believing that the ap- 
 pellant is the appellee, or a committee 
 or representative of appellee and the 
 conference with which it affiliates, 
 and properly directed the superior 
 court to grant a perpetual injunction 
 against the appellant, restraining it 
 from using the name 'International 
 Committee of Young Women's Chris- 
 tian Association,' or any other color- 
 able imitation thereof, etc., as prayed 
 for in said original and supplemental 
 bills" (id. p. 201). The fact, that a 
 name is not used in a commercial 
 business or trade will not prevent 
 equity enjoining its use where such 
 
168 Corporate Names 
 
 The New York Supreme Court, on application for prelimi- 
 nary injunction, has held that a corporation organized for pur- 
 poses of gain should not be allowed to use words or names which 
 have "acquired a special application by reason of the charitable 
 nature of the plaintiff's services to the poor and helpless." ^^ 
 
 The protection accorded at present to charitable and educa- 
 tional corporations against the use of their reputation is inade- 
 quate. Vassar College v. Loose-Wiles Biscuit Co.,^^ is a good 
 illustration of this fact. Here the coiu-t refused to prevent the 
 biscuit maker from selling "Vassar Chocolates." The adver- 
 tising displayed the Vassar Pennant and Seal. The court rested 
 its refusal to enjoin the defendant in Marlin v. Shields, ^'^ (see com- 
 ment on this case, p. 498). It is difficult to see how such a decree 
 could have been granted in the Vassar Case if the proposition 
 was urged upon the court, that a corporation has a property right 
 in its reputation — its "celebrity," and its good name. Such 
 property right is the basis of various statutes passed in recent 
 years to protect rights of this sort and of various decisions for- 
 bidding use of personal reputation to promote some commercial 
 enterprise." 
 
 This decision has been criticised and rightly, it would seem. It 
 attempts to show that the interest of a college in its name is dif- 
 ferent from that of a business house. True, the Biscuit Company 
 is not in competition with the college, yet the Biscuit Company 
 is undoubtedly using the reputation of the college to sell its candy. 
 On this point the New York Law Journal says: "There ought 
 to be, and we believe that in principle there is, remedy in law 
 and in equity against pirating for commercial purposes things 
 which attach in a measure like property to a business, and that 
 courts ought to be alert to sec to their protection when the doing 
 
 use interferes with some other name. " ijegal Aid Society v. Wage Earn- 
 
 "The right to injunctive reUef de- ers' Legal Aid Assn., N. Y. L. J., 
 
 pends upon the use by one party of a April 21, 1908, Dowling, J. 
 
 name or corporate designation of ^^ 197 Fed. 982: W. D. Mo., 1912. 
 
 another so as to interfere with its '* 171 N. Y. 384r-1902. 
 
 business, whatever it may be — not ^^ Pavesich v. N. E. I/ife Ins. Co., 
 
 necessarily a commercial or trading 122 Ga. 190; Edison v. Edison Mfg. 
 
 business." The Society of the War of Co., 73 N. J. Eq. 136; Foster-Milbum 
 
 1812 v. TU Society of the War of 1812 Co. v. Chinn, 134 Ky. 424; Munden 
 
 in the State of New York, 46 App. Div. v. Harris, 153 Mo. 652, 134 S. W. 
 
 (N. Y.) 568-1900, 62 N. Y. Supp. 355. 1076. 
 
Abbreviations of Corporate Names 109 
 
 of this not only serves to vindicate private right, but subserves 
 public policy independently of that vindication. 
 
 "The judge seems not to have approached the decision of this 
 case in this view and, had he, possibly he might have concluded 
 that such an institution as Vassar College had a substantial claim 
 against the influence of 'distaste' for it in popular view. One of 
 the chief est assets of a college or university is that it is regarded by 
 the public in a proper way. It is expected to encourage ideals 
 that are wholly foreign to the every-day material view." 
 
 This case is typical of a class of cases where even though the 
 parties are not in competition, injury to the plaintiff is inevitable 
 from the defendant's acts, which to say the least -are attempts to 
 use good-will and reputation of the plaintiff for the defendant's 
 profit and against the plaintiff's will. 
 
 This view is borne out by the statement of Scott, J.: "It is of 
 no moment that the defendants are not at present competing for 
 business with either of the corporations plaintiff. Injunctions to 
 prevent the misappropriation of corporate names are not limited 
 to business corporations. They have been issued to protect 
 the use of the name of a fraternal benevolent society (citing 
 cases). * * * The pubUc policy of the State * * * forbids 
 the use of misleading names by corporations of any character." ^* 
 
 A college or university has an interest in its name that is just 
 as definite, just as specific as that of a business corporation in its 
 name. So far as equity protects property rights in names, the 
 name of a charitable corporation stands on a par with other 
 corporate names. ' 
 
 § 87. Incoiporating under Nickname of a Rival. — It is 
 fraudulent to use as a corporate name, a nickname of a rival or of 
 his goods. In the Oneida Trap Case, the plaintiff's traps were 
 widely known as "Oneida Traps," and plaintiff itself was known 
 as the "Oneida Trap Co." Defendant incorporated under 
 the name "Oneida Game Trap Co." An injunction was granted 
 forbidding the further use of this corporate name." 
 
 § 88. Abbreviations of Corporate Names. — Corporate names, 
 like personal names, are used as trade names; but the weight of 
 authority is against the proposition that a corporate name is a 
 
 " Metropolitan Tel. & Tel. Co. v. " Oneida Community v. Oneida 
 
 Id., 156 App. Div. (N. Y.) 577; 1st Game Trap Co., 168 A. D. (N. Y.) 
 Dept., May, 1913. 769-1914. 
 
170 CoKPOEATE Names 
 
 trade-mark. In Newby v. Oregon Cent. By. Co.,^^ it was held that 
 "the corporate name of a corporation is a trade-mark from the 
 necessity of the thing." (Headnote.) Merchants' Detective Assn. 
 V. Detective Mercantile Agency,^'' and Investor Publishing Co. of 
 Mass. V. Dobinson,^^ are to the same effect. "Although not 
 technically a trade-mark, the authorities are in favor of holding 
 that a corporate name deserves the same consideration as a 
 trade-mark; some even going so far as to hold that it is a trade- 
 mark, and will be protected as such. In most of these cases, how- 
 ever, it will be found that the use of the name was connected with 
 some article of merchandise, and was adopted and used by a 
 manufacturer, merchant, or corporation in order to designate the 
 goods that they manufactured or sold and to distinguish them 
 from those manufactured or sold by others, to the end that they 
 might be known in the market as his." ^' 
 
 Corporate names or parts of these names when used to desig- 
 nate goods or business houses, or as trade "nicknames," are trade 
 names pure and simple, in most instances, and can be protected as 
 such. The commercial nickname, or abbreviated name, is often 
 more valuable, far better known, and more carefully guarded 
 from use by rivals than the formal or full name from which it is 
 taken. Hence it is that the law of trade names applies fully to 
 the names of corporations. "U. M. C." for Union Metallic 
 Cartridge Co.; "Winchester," for Winchester Repeating Arms 
 Co.; "Equitable," for Equitable Life Assurance Society; "C. B. 
 & Q.," for Chicago, Burlington & Quincy; "B. & A.," for Boston 
 & Albany, are instances of such nicknames. One hears or sees the 
 full corporate name used seldom in comparison to the number of 
 times the nickname is used. And these abbreviations are capable 
 of protection under the rules of Unfair Competition. A corpora- 
 tion will be enjoined, regardless of its actual name, if it does 
 business under any name which is similar to that of a rival. For 
 instance, the "International Trust Co." was a Massachusetts cor- 
 poration. The defendant was chartered in Missouri as the "Na- 
 tional Loan and Trust Company," and then changed its name to 
 
 " 1 Deady, 609-1869; Fed. Cas. No. " Farmers' Loan & Trust Co. v. 
 
 10,144. Farmers' Loan dk Trust Co. of Kan- 
 
 " 25 111. App. 250-1888. sas, 1 N. Y. Supp. 44-1888; 21 Abb. 
 
 18 72 Fed. 603-1896; modified in 82 N. C. 104. 
 Fed. 56-1897. 
 
Duty to Difperentiai'e in Choosing Names 171 
 
 "International Loan & Trust Company." This change made the 
 names of the two companies very similar. Defendant did business 
 in Boston where plaintiff also did business. It was held by the 
 Massachusetts court on the question as to whether a foreign 
 corporation could be enjoined, that if a foreign corporation carries 
 on its business under a name the same or nearly identical with 
 that of a domestic corporation, it should be enjoined. The pubhc 
 may be misled and the domestic corporation suffer. The foreign 
 corporation ought not to be allowed to escape liability on the 
 ground that while the name that it actually uses is the same or 
 similar, its corporate name is not. Even if the corporate name of a 
 foreign corporation is the same or nearly identical with that of a 
 domestic corporation, if it carries on its business under a different 
 and dissimilar one, there is no reason why it should be enjoined. 
 "No harm would be done and nobody would suffer." ^° 
 
 Speaking of the name "Williams Soap" Baker, J., has said: 
 "With the fraudulent imitations of cartons and labels out of the 
 way, the use of 'Williams Soap' as the name of the appellant 
 company has all the effect of a falsehood. The public would be 
 Ukely to believe that 'Baker's Chocolate' Company, 'Hall's Safe' 
 Company, 'Williams Soap' Company, 'Bates Numbering Ma- 
 chine' Company, were respectively the makers of those well- 
 known products if no explanations were made." ^^ 
 
 § 89. Affirmative Duty to Differentiate in Choosing Cor- 
 porate Names. — No name may be chosen in naming a corpo- 
 ration which will cause the new corporation to be passed off as 
 some other company already in existence, or that will, when at- 
 tached to thp goods made by the new company, pass those goods 
 off as the goods of some other company.^^ There are statutes re- 
 lating to choice of corporate names, but they are all state statutes; 
 so that, except for the names already in use by corporations 
 created under the laws of the home state, the incorporators can 
 take any name — but at their peril; and if the incorporators 
 choose a misleadmg name, they may be enjoined, although their 
 
 ^"International Trust Co. v. Inter- "Cited with approval Bates Mfg. 
 
 naticmal Loan & Trust Co., 153 Mass. Co. v. Bates Numbering Mach. Co., 
 
 271-1891; 26 N. E. 693; 10 L. R. A. 172 Fed. 895; also in Hartzler v. 
 
 753 Goshen Churn & Ladder Co., 55 
 
 " Williams v. Williams, 193 Fed. Ind. App. 455-1914; 104 N. E. Eep. 
 
 384-387-1911 (C. C. A. 7th Cir.). 34. 
 
172 
 
 Corporate Names 
 
 company be organized under the laws of a state far away from 
 the home state of the complainant.^' 
 
 The court scans the facts that it may decide whether the use of 
 the defendant's name will cause confusion in the pubUc mind and 
 consequent injury to the plaintiff. This is hardly an open ques- 
 tion in most instances, for on the incorporators rests the affirm- 
 ative duty of differentiating the name of a new corporation from 
 the names of concerns with which the new company will compete.''^ 
 The duty to differentiate is not changed or lessened because 
 the conflicting name already in use is a name not of another cor- 
 poration, but of a firm or an individual operating imder a name 
 not his own.^^ 
 
 § 90. Family Names as Names of Corporations. — One of the 
 most common ways of naming a corporation is to use the personal 
 name of one or more of the incorporators. The rules apphcable 
 
 «» Cited with approval, 78 111. App. 
 207; American Order of Scottish Clans 
 V. MerriU, 151 Mass. 558; 24 N. E. 
 918; 8 L. R. A. 320-1890. "When 
 there are no statute provisions as 
 to the choice of names, and parties 
 organize a corporation under general 
 laws, it may be that they choose the 
 name at their peril, and that if they 
 take one so like that of an existing 
 corporation as to be misleading and 
 thereby to injure its business, they 
 may be enjoined if there is no lan- 
 guage in the statute to the contrary." 
 
 American Wine Co. v. Kohlman, 158 
 Fed. 830-1907 (C. C. Ala.). Com- 
 plainant was a Missouri corporation 
 well known in the wine trade by its 
 corporate name, American Wine Com- 
 pany. Defendant was afterward in- 
 corporated in Alabama under the same 
 name. There was no allegation of 
 similarity of dress, or of the use of any 
 deceptive device, nor of facts showing 
 fraud on the part of defendant or 
 injury to complainant. Held, that 
 the mere similarity of name, under 
 these circumstances, did not entitle 
 the plaintiff to relief. 
 
 "* Cited in Hartzler v. Goshen Chum 
 dk Ladder Co., 104 N. E. Rep. 34; 
 F. E. De Long v. De Long Hook & 
 Eye Co., 89 Hun (N. Y.), 399-1895; 
 35 N. Y. Supp. 509. In 1899, the 
 plaintiffs put on the market the "De 
 Long Hook and Eye," sewed on cards 
 at top of which was printed "The De 
 Long Hook and Eye." In 1892 0. A. 
 De Long, a buyer of a department 
 store, conceived a change in the hooks 
 and formed the De Long Hook & Eye 
 Co., and put hooks on cards in the 
 same manner as plaintiffs. Held, 
 similarity of the two hooks (for they 
 were not identical) was sufficient to 
 warrant injunction. "The promoters 
 of this corporation could have given 
 to it the name of either of the other 
 incorporators, or any other name they 
 liked, provided the designation was 
 honestly made and without injury to 
 others" (p. 403). See also Martin v. 
 Martin, 71 Atl. 409. 
 
 " Imperial Mfg. Co. v. Schwartz, 
 105 111. App. 525-1903. See also 
 Matsell V. Flanagan, 2 Abb. Pr. N. S. 
 (N. Y.) 459-1867. 
 
Family Names as Names of Corporations 173 
 
 to it are practically the same as those relating to the use of per- 
 sonal names in other trade names such as partnership names and 
 are to be found in the chapter entitled "Family Names." There 
 is, however, this difference, as has been already observed, and it is 
 a substantial one. As the law now stands, when a natural person 
 starts business under his own name a duty rests upon him to so 
 use that name as to prevent confusion between his house and goods 
 and the house and goods of any other person by the same family 
 name in the same business. When, however, a person causes the 
 organization of a corporation a much greater burden and duty 
 rests upon him. If his use of his siu-name as a part of the cor- 
 porate name will cause confusion between his new corporation and 
 its rivals he may not use his name in the corporate name at all. 
 
 The Scottish courts have held that it is imfair to give a corpora- 
 tion a name which contains the same family name as that which 
 is a part of the name of a concern already in that line of business, 
 and an injunction will issue in such a case although no actual de- 
 ceit or fraudulent intent is shown. ^ "A man is not always de- 
 barred from giving his own name to a corporation, where it 
 happens to be the name of a competitor, if he does it for some good 
 reason and in such a way as not to mislead the public. His name 
 may be of value to him because it suggests his skill, or his financial 
 abiUty, or something else that belongs to him." ^^ 
 
 The United States Supreme Court sustains the rule that "one 
 corporation is not entitled to restrain another from using in its 
 corporate title a name to which others have 'a common right;' " ^ 
 and adds that this rule is applicable to all names publici juris. 
 The decision then refers to the necessity or nonnecessity of us- 
 ing one's personal name in choosing a business name, as follows: 
 "It is said that the use of the word 'Remington' in the name 
 'Remington-Sholes' was unnecessary, as if necessity were the 
 absolute test of the right to use. But a person is not obUged to 
 abandon the use of his name or to unreasonably restrict it. The 
 question is whether his use is reasonable and honest, or is cal- 
 
 ^>Dunlop Pneumatic Tyre Co. v. '^Howe Scale Co. v. Wyckoff, Sea- 
 
 Dunlop Motor Co., Ltd., 22 R. P. C. mans & Benedict, 198 U. S. 118- 
 
 533-1905 (Ct. Sess. Scotland). 137-8-40-1905, 49 L. ed. 972; 25 
 
 " International Silver Co. v. W. H. Sup. Ct. 609, citing Columbia Mill 
 
 Rogers Corp., 66 N. J. Eq. 119-36- Co. v. Akorn, 150 U. S. 460-1893; 
 
 1904; 57 Atl. 1037. 37 L. ed. 1144; 14 Sup. Ct. 141. 
 
174 Corporate Names 
 
 culated to deceive." And it was held in this case that the defend- 
 ants' acts were not calculated to deceive and it had taken all 
 reasonable precautions to prevent confusion. This being so no 
 further duty to differentiate rested upon defendants. The position 
 of the court is summed up as follows: "It was natural that those 
 who had invented the machine, and given all their time and means 
 in introducing it to the pubUc, when they came to organize the 
 corporation which was to represent the cuhniaation of their 
 hopes and efforts, should choose their own name as the corporate 
 name. In doing so I think they were exercising only the common 
 privilege that every man has to use his own name in his own busi- 
 ness, provided it is not chosen as a cover for unfair competition. 
 They did not choose the complainant's name hterally, or so 
 closely that those using ordinary discrimination would confuse the 
 identity of the two names, and that differentiation is sufficient to 
 relieve them of any imputation of fraud. * * * "^q hold 
 that, in the absence of contract, fraud or estoppel, any man may 
 use his own name, in all legitimate ways, and as the whole or a 
 part of a corporate name." 
 
 All this is imquestionably law, in the absence of imfair com- 
 petition. What then is unfair competition? The court here 
 defines it thus: "The essence of the wrong in unfair competition 
 consists in the sale of the goods of one manufacturer or vendor for 
 those of another, and if defendant so conducts its business as not 
 to palm off its goods as those of complainant, the action fails" ^' 
 
 ^^Howe Scale Co. v. Wyckoff, Sea- diet, the complainant. Among the 
 mans & Benedict, 198 U. S. 118- trade-marks registered by that corpo- 
 1905; 49 L. ed. 972; 25 Sup. Ct. 609. ration was the name "Remington." 
 E. Remington & Sons, first a firm, The Howe Scales Company, the de- 
 afterward incorporated, manufactured fendant, was the sales agent of the 
 the "Remington Rifle," and the " Remington-Sholes Company," which 
 "Remington Sewing Machine." In manufactured at Chicago a machine 
 1873, it began to manufacture a type- called the "Remington-Sholes" or 
 writing machine, the most important "Rem-Sho" typewriter. This com- 
 feature of which was invented by one pany was the successor to a company 
 Sholes. From 1880, this machine was organized in 1892 by one Sholes, the 
 called the "Remington" and "Rem- son of the inventor above mentioned, 
 ington Standard." In 1886, the type- in which Franklin Remington, son of a 
 writing branch of the business, with former president of E. Remington & 
 the right to use the name "Standard Sons, acquired an important interest, 
 Remington Typewriter," was trans- and to the position of which he con- 
 ferred to Wyckoff, Seamans & Bene- tributed much time and money. Aside 
 
Family Names as Names of Corporations 
 
 175 
 
 (id. p. 140). The rule in this regard is clearly set out in 
 Higgins v. Higgins, the leading case in New York on the 
 subject.'" 
 
 The sum of the whole matter is this: If a plaintiff can demon- 
 strate that the defendant's use of its corporate name is causing 
 unfair competition as against the plaintiff, the defendant must 
 change its name even though it contain the personal name of an 
 incorporator, and inasmuch as an affirmative duty to differentiate 
 itseK from the plaintiff rests upon defendant, the failure so to do 
 is an evidence of fraud. 
 
 The fact that some person transfers to the incorporators full 
 right to use his personal name as part of the corporate name will 
 not excuse the adoption of a name which is similar to one already 
 in use. In the first place no person has a right to transfer the 
 
 from the use of the name Remington, 
 nothing was done by the last-named 
 company or the defendant to promote 
 confusion in the mind of the pubHc, 
 and that company advertised expressly 
 that its machine was not the "Reming- 
 ton Standard Typewriter." Held, 
 that the name Remington was prop- 
 erly used by the Remington-Sholes 
 Company, and that the right to use 
 one's name in an honest manner in- 
 cludes the right to use it as a part of a 
 corporate name. 
 
 R. W. Rogers Co. v. Wm. Rogers 
 Mfg. Co., 70 Fed. 1017-1895 (C. C. 
 A. 2d Cir.). The various Rogers 
 cases in the federal courts are found 
 in 66 Fed. 56; 70 Fed. 1017; 110 
 Fed. 955; 113 Fed. 526; 118 Fed. 133, 
 and are suits brought to overthrow a 
 succession of attempts to obtain by 
 unfair means the business of one 
 Rogers, by various other persons 
 named Rogers, and by corporations 
 formed by persons bearing the name 
 Rogers. Wallace, Circuit Judge, said 
 (70 Fed. 1019): "I place my con- 
 currence in the judgment in this cause 
 upon the broad ground that a body of 
 associates who organize a corporation 
 
 for manufacturing and selling a par- 
 ticular product are not lawfully en- 
 titled to employ as their corporate 
 name in that business the name of one 
 of their number when it appears that 
 such name has been intentionally 
 selected in order to compete with an 
 estabhshed concern of the same name, 
 engaged in similar business, and divert 
 the latter's trade to themselves by 
 confusing the identity of the products 
 of both, and leading purchasers to buy 
 those of one for those of the other. 
 No person is permitted to use his own 
 in such manner as to inflict an unneces- 
 sary injury upon another. The cor- 
 porators chose the name unneces- 
 sarily, and, having done so for the 
 purpose of unfair competition, can- 
 not be permitted to use it to the in- 
 jury of the complainant" (at p. 1019). 
 The Supreme Court says of these 
 words of Judge Wallace in Howe Scale 
 Co. V. Wyckoff, Seamans & Benedict, 
 198 U. S. 118-1905; 49 L. ed. 972; 25 
 Sup. Ct. 609: "This, of course, as- 
 sumes not only that the name selected 
 was calculated to deceive, but that the 
 selection was made for that purpose." 
 " 144 N. Y. 462. 
 
176 
 
 Corporate Names 
 
 rights to his name for use for such a purpose; " and secondly the 
 incorporators had no right to adopt such a name.^^ "A corpora- 
 
 " Burrow v: Marceau, 124 App. 
 Div. (N. Y.) 665-1908. Otto Sarony, 
 as executor of Napoleon Sarony, who 
 at the time of his death was conduct- 
 ing a profitable business as a photog- 
 rapher under the trade name "Sa- 
 rony," sold the good-will and trade 
 name of the business to plaintiff. 
 Subsequently Otto Sarony assumed to 
 permit the defendant, who was al- 
 ready a photographer, to organize a 
 corporation to conduct a similar busi- 
 ness under the name "Otto Sarony 
 Company;" this company's place of 
 business was close to plaintiff's. Ac- 
 tual deception of the pubUc was al- 
 leged. Held, on demurrer, that a cause 
 of action for an injunction was stated. 
 
 '^ Dodge Stationery Co. v. Dodge, 
 145 Gal. 380-1904; 78 Pac. 879. Plain- 
 tiff was incorporated in August, 1894. 
 J. S. Dodge was an incorporator, until 
 1890, when he sold all his interest in 
 the company. The business was 
 generally known as "Dodge's," its sign 
 containing only the word "Dodge's." 
 In January, 1901, J. S. Dodge and 
 others incorporated the "J. S. Dodge 
 Company," took a store in the same 
 block with plaintiff's store, 100 feet 
 away, and put up a sign "Dodge will 
 occupy this store," etc. Defendant 
 also used word "Dodge" alone on sign 
 and stamped envelopes "Dodge's, 209 
 Post Street, S. F." There had not 
 been since September 17, 1900, any- 
 one with the name of Dodge connected 
 with plaintiff. J. S. Dodge had been 
 in this business in San Francisco 
 twenty-five years, and during that 
 time had used name "Dodge." Held, 
 that by sale of stock. Dodge did not 
 sell any part of plaintiff's good-will. 
 By seUing his stock, he did not agree 
 
 not to enter stationery business. 
 Dodge had the right to enter business 
 in his own name, so long as he did not 
 try to pass his store off as plaintiff's 
 store. "It does not follow, however, 
 that he could confer the right to use 
 his name upon a corporation for the 
 purpose of enabling that corporation 
 to engage in a business which had 
 been conducted by another corpora- 
 tion under a similar name, and it is 
 well settled he could not do so. This 
 must be especially true where he him- 
 self caused the use of his name by the 
 prior corporation. The name given 
 to a corporation is an artificial and 
 impersonal thing, selected arbitrarily 
 by the corporators themselves, and 
 can be selected from an entire vocab- 
 ulary of names" (p. 388), citing De 
 Long V. De Long Hook & Eye Co., 89 
 Hun, 399-1895; 35 N. Y. Supp. 509. 
 The defendant's rights are distinct 
 from those of J. S. Dodge, and are the 
 same as if he had never been con- 
 nected with it at all. "Whoever its 
 incorporators might be, they had no 
 right to fraudulently adopt a name 
 similar to plaintiff's name for the 
 purpose of palming off the business to 
 be conducted by the new corporation 
 as plaintiff's business, and thus invade 
 the rights of the prior corporation. 
 Injunction will he to restrain the 
 simulation so far as may be necessary 
 to protect the rights of the prior 
 corporation, even to the extent of 
 prohibiting the use of the name at 
 all, the courts interfering in such cases 
 solely for the purpose of preventing 
 fraud, actual or constructive" (id. 
 p. 389). The court has power to re- 
 strain a company from using such a 
 name as "Dodge's." 
 
What Is Evidence of Fbaud in Use of a Name 177 
 
 tion has not the right to use the name of one of its incorporators 
 for the purpose of unfair competition with an older dealer, where 
 it is hkely to do him injury, and it will not be permitted to use that 
 name if it is the name by which the older article is usually called 
 for and described." ^^ In Massam v. Thorley's Cattle Food Co., '* 
 a much cited case, Joseph Thorley had made cattle food called 
 "Thorley's Food for Cattle." At the time of this action the 
 name meant that it was made at Thorley's works. It did not 
 mean food made by a particular recipe belonging to Thorley. 
 The defendant got hold of J. W. Thorley, a brother of the first 
 Thorley, and formed "J. W. Thorley and Company, Limited," 
 and sold "Thorley's Food for Cattle." J. W. Thorley had a one 
 shilling share in the company and was employed as an agent. It 
 was held that the defendant intended deceit. See also Repetti v. 
 Repetti ^*" where the plaintiff was a corporation using the single 
 name "Repetti" and the defendants were a corporation using 
 the name "Louis Repetti, Inc.," and a son of the founder of the 
 plaintiff corporation. See also Henry Romeike v. Albert Romeike 
 & Co., Inc.,^^ in which similar facts were found. 
 
 § 91. What is Evidence of Fraud in use of a Corporate Name. 
 — In the face of facts showing that in choosing a corporate name 
 the incorporators intended to profit fraudulently by the reputation 
 of someone else, they will not be heard to deny that they intended 
 to do so, or that they did not know of the existence of their com- 
 petitor, or that it was an accident that the names are similar. ^= 
 Despite all pleas of this sort it is the duty of the court to restrain 
 such use.'^ Lord Halsbury, C. J., in The North Cheshire & Man- 
 
 " J. & P. Coats, Ltd., V. John Coates of whom was T. H. Garrett, who 
 
 Thread Co., 135 Fed. 177-79-1905. owned two and one-half shares. The 
 
 " 14 Ch. Div. 748-1880. cans, packages, labels and wrappers 
 
 "" Repetti v. Louis Repetti, Inc., N. of defendant differed from plaintiff's 
 
 Y. Law J., Jan. 5, 1916. but little, except that "T. H. Garrett, 
 
 "* Henry Romeike v. Albert Romeike Louisville, Ky.," was substituted for 
 
 & Co., Inc., N. Y. Law J., Jan. 23, 1917. " W. E. Garrett, Philadelphia." The 
 
 '5 Above statement approved. Elbs color was the same, type similar in 
 
 V. Rochester Egg Carrier Co., 134 N. Y. appearance, arrangement, and effect. 
 
 Supp. p. 983 (1912). ■ Defendants denied intent to copy. 
 
 '« W. E. Garrett & Sons v. T. H. Held, that failure of defendants to 
 
 Garrett & Co., 78 Fed. 472-1896; 24 adopt some name other than Garrett 
 
 C. C. A. 172. Plaintiffs made "Gar- (which they claimed to have adopted 
 
 rett's Snuff." Defendants were in- because T. H. Garrett originated the 
 
 corporated io 1895 by four men, one idea of the company) was evidence of 
 
178 
 
 Corporate Names 
 
 Chester Brewery Co., Ltd., v. The Manchester Brewery Co., Ltd.,^'' 
 said that on the question as to whether the two names were so 
 similar as to be calculated to deceive, no witness would be en- 
 titled to say, for the reason that this was the very question 
 which the court was called upon to decide; that from the mere 
 similarity of the two names and the fact that two breweries 
 existed, one the Manchester Brewery and the other the North 
 Cheshire Brewery, unfair competition was inevitable; and that 
 the fact that there was undoubtedly no intent to defraud was 
 quite immaterial, for the court must restrain anything that is 
 injuring another person, however inadvertently or innocently it 
 may be done. These rules have been applied by the House of 
 Lords to a consoUdation of two corporations and a use of a com- 
 bination of the two names as a name for the new company, hold- 
 ing that, if the new name was so similar to one already in existence 
 as to cause deceit and to mislead, it should be enjoined. Says 
 Lord Halsbury: "The result to my mind is that everybody who 
 had dealt with the old company, seeing this amalgamated name, 
 would send their order to the new address and not to the old 
 
 its intent to fraudulently profit by the 
 reputation of W. E. Garrett. "It is 
 not to be credited that the imitations 
 were unintentional or accidental" (id. 
 p. 476), but were made with intent 
 that retail dealers should sell it as 
 "Garrett's Snuff," and as defend- 
 ant's product was inferior to W. E. 
 Garrett's snuff, they would get his 
 prices, thereby reaping large profits. 
 See § 30. 
 
 "[1899] App. Gas. 83. The re- 
 spondents, "The Manchester Brew- 
 ery Co. Ltd," had carried on busi- 
 ness under that name for years in 
 Manchester and elsewhere. The ap- 
 pellants bought an old business, con- 
 ducted under the corporate name of 
 "The North Cheshire Brewery Co., 
 Ltd.," the brewery being at Maccles- 
 field, but some business being done at 
 Manchester. Appellants then had 
 themselves incorporated and regis- 
 tered as "The North Cheshire & 
 
 Manchester Brewery Co. Ltd." This 
 was done, as the court found, with- 
 out any intent to deceive the public 
 or divert respondent's trade. Held, 
 that as a matter of fact, the name of 
 the appellant company was calculated 
 to deceive, and that its use should be 
 enjoined. "When I see that in the 
 name of the appellant company there 
 is Uterally and positively the same 
 name as that of the rival company, 
 as I will call it, and that it is only 
 prevented from being identical in 
 name by having another name asso- 
 ciated with it, I should think myself, 
 that the inevitable result would be 
 that which appears to have hap- 
 pened, — that anyone who saw the 
 two names together would arrive at 
 the conclusion without any doubt at 
 all that the two companies, both with 
 well-known names, both in the par- 
 ticular neighborhood with which we 
 are deahng, had been amalgamated/' 
 
What Is Evidence of Fraud in Use of a Name 179 
 
 address where the single company had carried on its business. 
 That would be an ordinary business matter. If they first came 
 to the conclusion that it was an amalgamation of the two concerns, 
 their next proceeding would be, unless they had certain knowl- 
 edge of the matter (and of course when you are dealing with the 
 question of people being deceived, that negatives the idea of their 
 having certain knowledge, or else they could not be deceived), 
 those customers as a matter of business would direct their orders, 
 if they intended to remain customers of the old firm, to the 
 address of the new company which had just been brought out, 
 which they would think included the old. Can that be permitted? 
 I think it cannot. That is calculated to deceive, and that is the 
 very question which your lordships have to determine" (id. pp. 85- 
 86). 
 
 The combination of various acts such as the use of a similar 
 corporate name, similarity in the business done, and the nearness 
 of the stand 'adopted by the defendant to that of the plaintiff will 
 justify a finding of fraudulent conduct on defendant's part.^* 
 
 It has been said that the very fact that a body of associates 
 organizing a company take, as part of the name of the company, 
 the name of one of their number which is the same or nearly the 
 same as that of some rival who has an established business, in 
 most cases gives rise to a presumption of fraud. The presumption 
 may be rebutted; but the fact remains that despite the laudable 
 desire of a promoter or incorporator to make his own name a part 
 of the company, despite his common-law right to use his own name 
 
 »8 Viano v. Baccigalupo, 183 Mass. of 'Boston Trade Peanut Roasting 
 
 160-1903; 67 N. E. 641. The plain- Company,' a name almost identical 
 
 tifi, under the name "Boston Peanut with the plaintiffs' name of 'Boston 
 
 Roasting Co," had, at time defendant Peanut Roasting Company,' together 
 
 entered business, been carrying on its with the fact that the business done 
 
 business at 94 Fulton street for five by the defendant is identically the 
 
 years. Defendant opened his shop same, and that the defendant has 
 
 on Fulton street and adqpted the selected a place of business not only 
 
 same identical name, except he put in the same city but on the same street, 
 
 word "Trade" between "Boston" That justifies a finding that the action 
 
 and "Peanut." Held, by Loring, J.: of the defendant is calculated to in- 
 
 "The plaintiffs' right to protection duce the pubUc to trade with the 
 
 does not depend on the defendant's defendant under the belief tha,t it was 
 
 having adopted a similar single word trading with the plaintiffs. * * * 
 
 alone, but on the combination adopted One mistake in mail orders was proved 
 
 by the defendant of the business name at the hearing." 
 
180 Corporate Names 
 
 as he will, the trader who enters the court of equity with greatest 
 claim on its aid is he who has striven to differentiate his goods and 
 his company as much as possible from all rivals, and to sell his 
 goods on their merits, and advertise himself and his house in as 
 individual a manner as possible. 
 
 "The public are entitled to protection from being misled to 
 trade with parties not known to them, under the impression that 
 they are doing business with an established firm or person with 
 whom they have been accustomed to deal." '^ 
 
 § 92. Rights Arising out of Priority in Use of Corporate Names. 
 — Names of corporations which do not include personal names 
 must, of course, be names to wMch the incorporators of neither 
 the plaintiff company or the defendant company have any such 
 individual right as they have in their own family name, hence, 
 as between two corporate names, not personal in character, 
 which are alike or similar, the one coming into existence last 
 must give way to the prior one for two reasons: (1) Because the 
 existence of both will, in all likelihood, cause confusion; (2) be- 
 cause of the right of priority in the one first used. It is not neces- 
 sary that any long period of time should intervene between the 
 time the first corporation enters business and the time the second 
 begins. Thirteen months has been held sufficient.^" 
 
 '^Imperial Mfg. Co. v. Schwartz, company should be enjoined from 
 
 105 111. App. 525-1903; La Societe using its corporate name. 
 Anonyme des Anciens Etablissements, The Accident Ins. Co., Ltd., v. The 
 
 Panhard et Levassor v. Panhard-Le- Accident, Disease, & General Ins. Corp., 
 
 vassor Motor Co., 18 E. P. C. 405-1901. Ltd., 51 L. T. N. S. 597-1884, before 
 
 Seven men, none of whom bore name Pearson J., in chancery. Plaintiff regis- 
 
 Panhard or Levassor, formed defend- tared its name in 1870, but had existed 
 
 ant company in England and regis- since 1849. Defendant registered its 
 
 tered its name. Plaintiff did not do name in 1883, and plaintiff became 
 
 business directly in England. Held, aware of the fact in 1884. Plaintiff 
 
 defendants should be enjoined from was known as "The Accident Co.," 
 
 using either of the names. or "The Accident." Held, defendant 
 
 ^"S. Howes Co. V. Howes Grain- "takes a title which is so like the 
 Cleaner Co., 46 N. Y. Supp. 165- plaintiff's title, that I am satisfied by 
 1897. The "S. Howes Company" the evidence before me that it is calcu- 
 was organized in January, 1895; the lated to deceive, and that it is also cal- 
 "Howes Grain-Cleaner Company" in culated to appropriate to the defend- 
 February, 1896, the latter being ant company business which would 
 named for its president. Both com- legitimately go to the plaintiff com- 
 panies manufactured the same class pany" (id. p. 598). 
 of machinery. Held, that the latter 
 
Use op Term "Works," "Company," etc. 181 
 
 In one instance, persons who began doing business under the 
 name "American Watchman's Clock Company," as partners, 
 in summer of 1901, were held to be able to restrain others 
 from organizing a corporation in May, 1902, under the same 
 name." 
 
 § 93. Use of Term " Works," " Company," etc., by an Indi- 
 vidual or Partnership. — The fact that the user of the name, in 
 the first instance, is an individual or partnership engaged in a 
 business under some fanciful or symbohc name such as "New 
 York Specialty Works," or "Imperial Manufacturing Com- 
 pany," and not a corporation, does not tend to defeat the right 
 of this first user to enjoin one subsequently adopting the name, 
 or one very similar, as the name of a corporation.*^ Such a 
 
 <• Pettes V. American Watchman's 
 Clock Co., 89 App. Div. (N. Y.) 345- 
 1903; 85 N. Y. Supp. 900. Plain- 
 tiffs were copartners, and part of 
 their business was the sale and in- 
 stallation of electric time detectors 
 or watchman's clocks. This branch 
 of their business they conducted un- 
 der the name of the "American Watch- 
 man's Clock Company," having in the 
 summer of 1901 filed a certificate of 
 intention to do business under that 
 name. In May, 1902, they executed 
 the papers necessary to incorporate in 
 this state under that name, but in the 
 same month defendant was incor- 
 porated in this state under the same 
 name for the purpose of engaging in 
 the same business. The incorporators 
 of the defendant company knew that 
 plaintiffs were engaged in business as 
 above mentioned under the name 
 adopted by them. Held, that defend- 
 ant should be restrained from the use 
 of its corporate name in the same 
 business as plaintifi's. 
 
 *^ Imperial Mfg. Co. v. Schwartz, 
 105 111. App. 525-1903; Nesne v. 
 Sundet, 93 Minn. 299-1904; 101 N. W. 
 490. In 1901, plaintiffs entered into a 
 partnership at Crookston, under the 
 
 name of Crookston Marble & Granite 
 Works. Two weeks later, thev 
 changed their name to the Crookston 
 Marble Works, and since that time had 
 done business under that name. For 
 nine years prior thereto, some of the 
 defendants had done a like business at 
 Crookston as partners under the name 
 of the North Western Marble Works. 
 They used the words "Marble Works" 
 as a sign over the place of business, 
 and during part of this time about 10 
 per cent, of the letters received by 
 them were addressed "Crookston 
 Marble Works." In 1902, defendants 
 incorporated under the name "Crook- 
 ston Marble Works . ' ' Plaintiffs adopt- 
 ed their name one year before defend- 
 ants organized as a corporation. The 
 trial court found no intent to compete 
 unfairly on the part of either of the 
 parties. "The rule is settled that, in 
 the absence of statutory provisions 
 regulating the subject, parties or- 
 ganizing a corporation must choose a 
 name at their peril, and that the use of 
 a name similar to one adopted by 
 another corporation, may be enjoined 
 at the instance of the latter, if mis- 
 leading and calculated to injure its 
 business. Newby v. Oregon Cent. 
 
182 CoEPOEATE Names 
 
 simulation of a name will be enjoined although the plaintiff has 
 used the name in such a manner as would cause it to import 
 that his concern was a corporation when, in fact, he never had 
 incorporated his business at all. The fact that the name which 
 the defendant attempts to use has been previously appropriated as 
 the name for any sort of business concern, by another, is sufficient 
 ground to warrant an injunction. This is not universally held, 
 however, for some jurisdictions regard words like "Works," 
 "Company," "Association," as importing that the concern using 
 them is a corporation, and that a partnership or individual can 
 have no property in a name containing such words.^' 
 
 § 94. Outgoing Stockholders and Employees. — It is entirely 
 natural that one who has acquired skill and experience in his 
 trade or business, while in the employ of another, should wish 
 to start out for himself. ' It is entirely right that he should use 
 his own name for the new concern; but he cannot do so in such a 
 manner that from his so doing, confusion, fraud, or loss of business 
 to the old company may result. The same is true also of stock- 
 holders of a corporation, who leave it to form a new company. 
 Such outgoing stockholders must use their own name subject 
 to the rights of the company with whom they formerly were 
 connected.** In this connection see the chapter on "Good-will." 
 
 Ry. Co., 1 Deady, 609-1869; Fed. Cas. not being the names of persons, but of 
 
 No. 10,144; Holmes, Booth & Haydens an entity capable of business." 
 V. Holmes, Booth & Atwood Mfg. Co., HazeUon Boiler Co. v. HazeUon Tripod 
 
 37 Conn. 278-1870; C. S. Higgins Co. Boiler Co., 142 III. 494^1892; 30 N. E. 
 
 V. Higgins' Soap Co., 144 N. Y. 462- 339, the plaintiff, a copartnership, 
 
 1895; 39 N. E. 490; 27 L. R. A. 42; held to have no property in a name, as 
 
 Celluloid Mfg. Co. v. CeUonite Mfg. a trade name, which imported a 
 
 Co., 32 Fed. 94-1887(0. C.N. Y.);fi. corporation. Words like "Associa- 
 
 W. Rogers Co. v. Wm. Rogers Mfg. tion," "Works," "Company," pre- 
 
 Co., 70 Fed. 1017-1895; 17 C. C. ceded by words indicating the kind of 
 
 A. 576; Plant Seed Co. v. Michel business, are used as names of corpora- 
 
 Plant & Seed Co., 37 Mo. App. 313- tions. Link v. Architectural Iron 
 
 1889. Works, 24 lU. 551-1860; Perkins 
 
 " Clark V. Aetna Iron Works, 44 Electric Lamp Co. v. Hood, 44 111. 
 
 111. App. 510-1892. Clark sued to App. 449-1892; The State v. McGrath, 
 
 prevent defendant using the words 75 Mo. 424r-1882. 
 "Aetna Iron Works," on ground that ** Holmes, Booth & Haydens v. 
 
 it had acquired the right to use them Holmes, Booth & Atwood Mfg. Co., 
 
 as a trade name, before defendant's 37 Conn. 278-1870. Plaintiff in- 
 
 company was incorporated. Held, corporated 1853, defendant incor- 
 
 that the "words import a corporation: porated 1869. Held, that "until 
 
Outgoing Stockholdbes and Employees 183 
 
 A stockholder in a corporation which bears his family sur- 
 name, does not necessarily lose all right to use that name as a 
 business name in a company making or seUing the same com- 
 modity as the corporation, because the latter sells its business, 
 including good-will and name. He will be enjoined, however, 
 from passing off the goods made by the new company as those 
 of the older corporation or its successor.*^ Where the name has 
 as its principal feature the name of a person, ihat name is Ukely 
 to be the nickname of the company, and for a person bearing 
 that name to start a competing company with that particular 
 name as the basis of its name will in all likelihood lead to decep- 
 tion. In the words of the Michigan court "the natural tendency 
 of the situation would be to divert the complainant's business." ^ 
 Outgoing stockholders of a corporation bearing a name the most, 
 distinctive part of which is the names of such stockholders, have 
 no right to compete with that corporation, under a new corporate 
 name so similar to the first as to mislead. In ordinary speech, 
 the "Alton," the "Burlington," the "Rock Island," the "Cen- 
 tral," are used instead of the full names of these companies. In a 
 similar fashion the striking word in other corporate names is 
 some family name and this surname alone is often used as the 
 name of the company. A person whose name is thus used as 
 the abbreviated name of a corporation will be enjoined from 
 allowing his name to be assumed by another company in such 
 fashion as to make it possible that this second company may be- 
 come known by the same abbreviation. Lamb invented a process 
 of knitting. The product was called "Lamb Knit." He left his 
 former employee and started the Lamb Glove and Mitten Co. 
 Dealers were misled and an injunction was issued.^' Van Auken 
 
 its (plaintiff's) dissolution, therefore, 841. Defendant Lamb organized 
 
 Holmes and Booth must use their own Lamb Knitting Company, which was 
 
 names subject to the rights of the bought out by plaintiff. Lamb was 
 
 petitioners, unless relieved of that plaintiff's superintendent for a long 
 
 inconvenience by their consent." period, but left then- employ April, 
 
 *^Donnell v. Herring-Hall-Marvin 1892. He then organized defendant 
 
 Safe Co., 208 U. S. 267-1908. company and began to make goods 
 
 " Penberthy Injector Co. v. Lee, 120 with the same stitch used by plaintiff, 
 
 Mich. 174-1899" 78 N. W. 1074. which claimed all rights to said stitch 
 
 "Lamb Knit Goods Co. v. Lamb and trade-mark, "Lamb Knit." De- 
 
 Glove & Mitten Co., 120 Mich. 159- fendant alleged "Lamb stitch" had 
 
 1899; 78 N. W. 1072; 44 L. R. A. been in use for twenty-five years by 
 
184 
 
 Corporate Names 
 
 left the "Van Anken Co." and formed the "Van Auken Steam 
 Specialty Co.," and was enjoined.^* Penberthy left the Penberthy 
 Injector Co. and formed a partnership which was called the "Lee- 
 Penberthy Manufacturing Co.," and he was enjoined. Said the 
 court: "I cannot doubt that defendants intended to appropriate a 
 portion of complainant's good-will and good reputation. I cannot 
 doubt that the natural tendency of the situation would be to 
 divert the complainant's business to the defendants. I do not 
 question or doubt the general natural right which a man has to use 
 his own name in his own business without interference; but I 
 think, in a case like the present one, such right should be guarded 
 by language sufficiently clear and exphcit to notify all persons that 
 the business is not that of another. I do not think this has been 
 done by these defendants, and I am of the opinion that com- 
 plainant has made out a good case, and is entitled to the injunction 
 prayed for, with costs" *» (p. 179). 
 
 the "Lee-Penberthy Manufacturing 
 Company," which made improved in- 
 jectors. They located on the same 
 street as the said corporation. In- 
 junction granted. 
 
 Criacomo Allegretti v. Allegretti Choc- 
 olate Cream Co., V71 lU. 129-1898; 52 
 N. E. 487. The appellee, a corporation, 
 brought bill against Giacomo Alle-' 
 gretti, alleging it was owner of the sole 
 rights, processes, receipts, and methods 
 of manufacturing certain chocolate 
 creams, and of the trade-mark "Alle- 
 gretti;" that Giacomo Allegretti, who 
 was a former employee of the corporar 
 tion, had set up business under the 
 name "Allegretti & Company" and 
 claimed to be originator of Allegretti 
 creams, and made and sold similar 
 goods. The corporation had been 
 making these goods for many 
 years. Held, Allegretti chocolates 
 were for years known in Chicago, as 
 goods of Allegretti Bros., which after- 
 ward became appellee company. De- 
 fendants had right to open business as 
 "Allegretti and Company," provided 
 they did so without any intent, act, 
 
 many nulls, and that there were 
 various Lamb knitting machine com- 
 panies in operation. Held, that the 
 plaintiff was not entitled to exclusive 
 use of term "Lamb Knit." But 
 dealers have been here misled by the 
 similarity of the names of these cor- 
 porations, as business of both parties 
 is largely gloves and mittens. De- 
 fendant "was, therefore, restrained 
 from the use of the name "Lamb 
 Glove and Mitten Company" or any 
 name in which word Lamb appeared 
 in connection with other words in- 
 dicating a business similar to plain- 
 tiffs'. 
 
 <8 Van Auken Co. v. Van Auken 
 Steam Specialty Co., 57 111. App. 240- 
 1§94. 
 
 <« Penberthy Injector Co. v. Lee, 120 
 Mich. 174-1899; 78 N. W. 1074. 
 Penberthy invented an injector for 
 boilers and organized the Penberthy 
 Injector Company. The Penberthy 
 injector became known famiUarly to 
 the trade. Six years later Penberthy 
 sold out to the corporation all his in- 
 terest and engaged in a partnership. 
 
False or Misleading Use op Corporate Names 185 
 
 In Charles S. Higgins Co. v. Higgins Soap Co.,^ the plaintiff 
 was an old concern formed by Charles S. Higgins. This concern 
 sold its business to the plaintiff corporation, and subsequently 
 the son of the original Higgins [who, like his father, bore the name 
 Charles S. Higgins] organized the defendant corporation, the 
 "Higgins Soap Co.," in which he and his family were the prin- 
 cipal stockholders. The old Higgins business had become widely 
 known as the "Higgins Soap Co." and its soap as "Higgins 
 Soap." Three hundred thousand dollars had been spent in 
 advertising "Higgins Soap" subsequent to 1879. In 1892, the 
 defendant company put up soap in a wrapper marked "Higgins 
 Soap Co., Original Laundry Soap, Chas. S. Higgins, President." 
 Held, the Higgins Soap Co. was not Chas. S. Higgins, and he could 
 not thus appropriate the business of a concern to which he had sold 
 his good-will in the name he bore. The court enjoined the defend- 
 ant from use of its corporate name. The court said "the de- 
 fendant derives no additional immunity from the fact that the 
 name of 'Higgins' in its corporate name was that of one or 
 more of its corporators." See also Oneida Community v. Oneida 
 Game Trap Co.,^^ and Henry Romeike v. Albert Romeike & Co. 
 Inc.,^^" where the defendant was organized by former employees 
 of the plaintiff. 
 
 § 95. False or Misleading Use of Corporate Names. — It 
 is always unwise, but not always unlawful to use a false name for a 
 corporation. So long as no one is injured by the false name and 
 no one objects who has a right to object, such a name may be used. 
 But so often does it happen that false names are made use of to 
 effect unfair competition, that the courts look with suspicion on 
 any name that is false. By the term "a false name" is meant the 
 use of a name which implies that the company named has certain 
 features which it has not. If it be named "Peck Bros. Co.," when 
 there is but one Peck in the company, such a name is false and 
 using such a name is a falsehood. Persons resorting to such 
 or artifice to mislead dealers in the gretti and not by Ignazio Allegretti or 
 market or the public at large as to the the Allegretti Chocolate Cream Corn- 
 identity of the firm. Held, further, pany." 
 
 that pubhc were so deceived. The ^"Chas. S. Higgins Co. v. Higgins 
 defendants can use name AUegretti in Soap Co., 144 N. Y. 462-1895; 39 
 a manner indicating that their goods N. E. 490; 27 L. R. A. 42. 
 are "manufactured and sold by B. F. " 168 A. D. N. Y. 769. 
 and I. A. Rubel and Giacomo Alle- "» N. Y. Law Journal, Jan. 23, 1917. 
 
186 
 
 Corporate Names 
 
 methods are usually presumed to do so for a purpose, and, if 
 unfair competition results, they will be restrained from so doing. ^^ 
 
 The fact that a corporation has no one among its stockholders 
 or incorporators Uving who bears the family name which is a part 
 of the corporate name, is no ground for questioning its right to use 
 the name on the ground that it is a false name. In Dodge Sta- 
 tionery Co. V. Dodge,^^ Dodge sold all his stock in plaintiff com- 
 pany, but it was held that by so doing he did not and could not 
 sell any part of plaintiff's right to use his name. Nor could he sell 
 to still another corporation the right to use his name. 
 
 § 96. Names of Unincoi-porated Societies, Clubs, etc. — Some- 
 times serious disputes arise as to the right of some of the mem- 
 bers of an unincorporated association to incorporate, using the 
 name of the common association. The rule in New York seems to 
 be that where two factions incorporate, neither can have the ex- 
 clusive right to the common name.'^ 
 
 '^ Peck Bros. & Co. v. Peck Bros, itself a falsehood, and we must believe 
 Co., 113 Fed. 291-1902 (C. C. A. 7th 
 Cir.); 51 C. C. A. 251; 62 L. R. A. 
 81. Elnathan Peck and two sons, in 
 1859, began business as E. Peck & 
 Sons, in New Britain, Connecticut. 
 In 1862, same business was incorpo- 
 rated as "Peck Bros. & Co." Later 
 the house became embarrassed and 
 went into a receiver's hands — who 
 sold it to three stockholders, one of 
 whom was a Peck. While the receiver- 
 ship was pending, a charter was taken 
 out in Illinois for a corporation known 
 as "Peck Bros. Co.," designed to en- 
 gage in same business, the old company 
 having had a branch office in Chicago. 
 There was one person in the new com- 
 pany named Peck. Held, "Here the 
 artifice consisted in not using one's 
 own name but in assuming falsely the 
 name 'Peck Bros.,' there being no 
 brothers of that name in the incorpora- 
 tion. The name, manifestly, was 
 thus assumed for the purpose of 
 obtaining the good-will of the estab- 
 lished business of the Connecticut 
 corporation. The name assumed was 
 
 that it was so assumed for a pur- 
 pose" (p. 297). "* * * There 
 is here either original wrongful intent, 
 or, if the design were originally honest, 
 it became wrongful upon failure to ac- 
 quire by purchase the business and 
 trade name of the plaintiff." 
 
 " 145 Cal. 380-1904; 78 Pac. 879. 
 
 " Original La Tosca Social Club 
 V. La Tosca Social Club, 23 App. D. C. 
 96-1904. For about six years there 
 was an unincorporated association 
 known as the "La Tosca Social Club." 
 Some of the members thought that the 
 club should be incorporate, and three, 
 out of a total of twelve, caused it to 
 be incorporated, under name of the 
 unincorporated association. There- 
 upon, about half of the members 
 withdrew and about ten months later 
 incorporated themselves as the "Orig- 
 inal La Tosca Social Club." The 
 court refused to restrain the later 
 formed corporation from the use of the 
 name, adding that the corporation 
 first formed had no exclusive right to 
 it. " It is only in plain cases of wrong 
 
Names of Fraternal SocrETiES 
 
 187 
 
 § 97. Names of Fraternal Societies. — Members of a fra- 
 ternal society may withdraw and organize a corporation under 
 any name they desire, provided they do not choose one so like 
 that of the order they have left as to cause confusion. The name 
 "Improved Order of Knights of Pythias" was held not to be 
 unfair to the organization known as "Knights of Pythias." ^^^ 
 
 § 98. Similarity of Corporate Names, What is. — What 
 names are "calculated to deceive" and what names are so 
 "different," or "dissimilar," as not to tend to cause con- 
 fusion or deceit? What standard can be applied to measure 
 names, to discover whether or not they are conflicting? The 
 and mischief that the court will be fringe plaintiffs', and to have been 
 
 disposed to apply the strong remedy 
 by injunction to restrain the use of a 
 name. The business operation of a 
 corporation or party should not be 
 restrained upon mere speculative or 
 possible injury, because of the use of 
 a particular name claimed by an- 
 other. * * * There is no right to 
 the injunction, merely from the form 
 of similarity of names; there must be 
 injury shown to result therefrom" 
 (pp. 105-6). 
 
 AieUo V. Montecalfo, 21 R. I. 496- 
 1899. Held, on demurrer, that a good 
 cause of action in equity was set up by 
 a bill alleging that complainants main- 
 tained a society or club for the purpose, 
 in part, of giving dramatic entertain- 
 m^ts, that they had from time to time 
 given such entertainments, and had ad- 
 vertised themselves and were well 
 known as a club in the city, and that re- 
 spondents, in wrongfully appropriat- 
 ing the name of the club, had caused 
 and would cause great loss and dam- 
 age to complainants. 
 
 "" Grand Lodge, Knights of Pythias 
 V. Cresmll, 128 Ga. 775-1907; 58 S. E. 
 163. Preliminary injunction granted 
 against the obtaining of a corporate 
 charter by persons who had been 
 acting and who proposed to incor- 
 porate under a name claimed to in- 
 
 selected with fraudulent intent. 
 
 Supreme Lodge, Knights of Pythias v. 
 Improved Order, Knights of Pythias, 
 113 Mich. 133-1897; 71 N. W. 470; 
 38 L. R. A. 658. Complainant was in- 
 corporated by special act of congress, 
 there being already a voluntary asso- 
 ciation known as the "Knights of 
 Pythias." Certain members of the 
 Knights of Pythias withdrew and 
 organized themselves into an unin- 
 corporated society known as the " Im- 
 proved Order of Knights of Pythias." 
 Held, that defendant's name was not 
 calculated to mislead. "While mem- 
 bers withdrawing from a fraternal 
 society are not at liberty to associate 
 themselves under a name so like the 
 name of the parent order as to be cal- 
 culated to deceive ordinary persons 
 proceeding with ordinary care, they 
 may, subject to this limitation, use 
 any derivative of such name that they 
 may see fit to employ" (from head- 
 note). See also Knights of Macabees 
 V. Seark, 75 Neb. 285; 106 N. W. 448; 
 Daughters of Isabella v. National 
 Order, 83 Conn. 679; 78 Atl. 333, 
 Anno. Case, 1912, ar822; B. P. 0. 
 Elks V. Improved B. P 0. Elks, 205 
 N. Y. 459; Salvation Army v. American 
 Salvation Army, 135 A. D. (N. Y.) 
 268. 
 
188 Corporate Names 
 
 House of Lords has said that no witness is entitled to express an 
 opinion as to this. The names may be put in evidence, together 
 with the facts as to their use, and the circumstances surrounding 
 the choosing of them; but there is no standard, except what the 
 court in each particular case believes has worked fraud, or may 
 work fraud or loss to the plaintiff. The probability of injury 
 resulting from the use of the two names is the test to be applied by 
 the court for the purpose of deciding whether or not the name will 
 conflict. The "Merchant Banking Company" was established 
 in 1863. In 1878 the "Merchants' Joint Stock Bank " was started. 
 No one had been misled. The two banks were at a distance from 
 each other, although both in London, and the Chancery Court 
 refused an injunction, being "satisfied that there is not likely to 
 be any damage or injury to the plaintiffs at all, from the act of the 
 defendants." ^^ In most cases, however, such similar names 
 would cause confusion. The mere fact that two concerns happen 
 to be widely separated geographically is no proof that no confusion 
 can or will result from the use of the same name by both. In 
 Ball V. Best,^ Best & Co. in Chicago was held to be in unfair com- 
 petition with Best & Co. of New York; and, again, two concerns 
 may be but a short distance apart and yet be fairly competing, as 
 for instance: the "Fulton National Bank of New York" and the 
 "Fulton National Bank of Brookl3m." Again, names of corpora- 
 tions may be similar or exactly the same and the companies be 
 located very near each other without creating any unfair com- 
 petition if the names are distinct and businesses dissimilar." 
 For further discussion of this subject see chapter on Evidence. 
 
 " Merchant Banking Co. v. Mer- court refused to "infer" an intent to 
 
 chants' Joint Stock Bank, 9 Ch. Div. imitate and said, "I am also satis- 
 
 560-1878. Probability of injury re- fied that there is not likely to be any 
 
 suiting from similar names is some- damage or injury to the plaintiffs at 
 
 times taken into consideration by all from the act of the defendants" 
 
 courts. Plaintiff, Merchant Banking (at p. 569). 
 
 Company of London, was established «» 135 Fed. 434r-1905 (C. C. 111.), 
 in 1863. In 1878, defendant estab- "Farmers' Loan & Trust Co. v. 
 lished the Merchants' Joint Stock Farmers' Loan & Trust Co. of Kan- 
 Bank. There was no evidence that sas, 1 N. Y. Supp. 44^1888; 21 Abb. 
 anyone had been misled by the N. C. 104. "It is evident, on the 
 similarity of name. The two banks other hand, that the use of the same 
 were located a considerable distance name would not be enjoined where 
 apart, one in Bloomsbury, London, the parties were doing a business 
 the other in Cannon street. The thereunder entirely dissimilar and 
 
Names op Fraternal Societies 
 
 189 
 
 distinct; as, for instance, where one 
 represented a banking basiness and 
 another a locomotive works. Nor 
 could the first national bank estab- 
 lished enjoin every other bank from 
 using the name ' First National Bank ' ; 
 nor could the Mechanics' National 
 Bank of New York enjoin the Me- 
 chanics' National Bank of New Jersey; 
 nor the Fulton Bank of New York, the 
 Fulton Bank of Brooklyn. And yet, 
 if a bank like the Chemical Bank of 
 New York, or any other bank, had 
 acquired in the particular city a 
 valuable interest or proprietary right 
 in the name, the court would not 
 hesitate to enjoin another bank of the 
 
 same name from doing business in 
 the same city, to its detriment, and 
 the confusion of the public" (at p. 
 47). 
 
 National Folding Box and Paper Co. 
 v. National Folding Box Co., 43 Weekly 
 Reporter, 156. The plaintiffs were an 
 American company and in business in 
 America and also carried on, through 
 their agents, a large business in Eng- 
 land. The defendants interfered with 
 this business and adopted a name 
 which, in all reasonable probability 
 the court held, would lead to their 
 goods being passed off as goods manu- 
 factured by the plaintiffs. Injunction 
 issued. 
 
CHAPTER VIII 
 
 Geographical Names 
 
 Section 99. Rule of priority. 
 
 100. One of several who use a common geographic name may sue on 
 
 behalf of all. 
 
 101. Secondary meaning or association between the name and the 
 
 locaUty which transforms a geographic name into a trade name. 
 
 102. Extent of public knowledge of secondary meaning. 
 
 103. Duration of user necessary to acquire secondary meaning. 
 
 104. Degree of resemblance necessary. 
 
 105. Geographical or place names which indicate origin and source 
 
 falsely. 
 
 106. Residence in a locaUty does not give unUmited right to use the 
 
 name of the locahty as a trade name. 
 
 107. Relative location of plants of rivals — effect on names. 
 
 108. Names of cities. 
 
 109. Effect of moving a plant or business. 
 
 110. Names of natural products. 
 
 111. Geographic names which indicate a process of manufacture. 
 
 112. Geographic names may be arbitrarily adopted as trade names. 
 
 113. Use of geographic names as trade-marks must be truthful. 
 
 114. Geographical names which indicate quality as well as origin or 
 
 source. 
 
 115. Secondary meaning of semi-geographic names. 
 
 Geographic or place names used as trade names are of four 
 sorts : 
 
 (1) Those indicatmg origin. The fact that a cloth is called 
 "Connecticut Cloth" and is manufactured in Connecticut does 
 not, per se, fix upon it any badge of quaUty whatever, although 
 it does show the place from which it comes. Such a name indi- 
 cates origin — nothing more. 
 
 (2) Those indicating a particular process of manufacture, viz. : 
 that the goods bearing the name come from a locaUty where such 
 goods are made customarily by one particular process or from 
 some particular material. The Kentucky court has held that 
 "Lexington" mustard meant mustard made originally in the 
 factory of one named Brand, by his particular process. "Wor- 
 
 190 
 
General Discussion 191 
 
 cester" china has come to mean china made in Worcester, Eng- 
 land, by the process used in that place. . 
 
 (3) A name used arbitrarily is used in a manner in no way con- 
 nected with the place the name of which is used on the product, 
 as, for instance, a stove made and sold in Newark, being called 
 the "Portland," or one made in Baltimore, being sold as the 
 Boston Stove. 
 
 (4r) Those indicating quality. The nature of the soil, or climate 
 of a locahty may put upon certain of its products an indelible 
 stamp of good, medium, or poor quaUty. "Connecticut " tobacco 
 is an instance of this, for it is known in the tobacco trade, that 
 only certain quahties of tobacco can be grown there. 
 
 Probably the leading case in this country as to unfair compe- 
 tition in use of geographical names, and one of the first to lay 
 down the general principles of unfair competition is McLean v. 
 Fleming.^ 
 
 "Equity gives relief in such a case, upon the ground that one 
 man is not allowed to offer his goods for sale, representing them 
 to be the manufacture of another trader in the same community. 
 Suppose the latter has obtained celebrity in his manufacture, he 
 is entitled to all the advantages of that celebrity, whether result- 
 ing froEQ the greater demand for his goods or from the higher 
 price the public are willing to give for the article, rather than 
 for the goods of the other manufacturer, whose reputation is not 
 so high as a manufacturer. Where, therefore, a p^rty has been 
 in the habit of stamping his goods with a particular mark or 
 brand, so that the purchasers of his goods having that mark or 
 brand know them to be of his manufacture, no other manufac- 
 turer has a right to adopt the same stamp, because, by doing so, 
 he would be substantially representing the goods to be the manu- 
 facture of the person who first adopted the stamp, and so would 
 or might be depriving him of the profit he might make by the 
 sale of the goods which the purchaser intended to buy." ^ 
 
 The Supreme Court rendered this decision in 1877. It was al- 
 most the first, if not actually the first, case of this character which 
 was exhaustively considered by that court. In 1877, the doc- 
 trine of unfair competition had been but little recognized in this 
 country. This case therefore shows very clearly the sources 
 
 '■ 96 U. S. 245, 251. ' Citing Seixo v. Provezende, Law 
 
 Rep., 1 Ch. 195, 
 
192 Geographical Names 
 
 from which our law on this subject has been taken. This opinion 
 cites twenty-four English cases, seven New York cases, four 
 Massachusetts cases, one Connecticut case, and five United States 
 cases. In Newman v. Alvord (1867),* decided ten years before 
 the McLean case. Judge Earl cites three English cases, two New 
 York cases, and one United States case, the English cases cited 
 being Seixo v. Provezende ("Seixo Wine"),* and Lee v. Haley 
 ("Pall Mall Guinea Coal"),^ all of which have been widely used 
 as authorities ever since. 
 
 This use of English cases is mentioned here to show the extent 
 to which English cases are recognized by American courts as of 
 very great authority on this particular question. 
 
 Lee v. Haley, supra, was an appeal by defendant from an inter- 
 locutory order, restraining him froni using the name "The Pall 
 Mall Guinea Coal Company," in Pall Mall, or any other name 
 or style so framed as to be a colorable imitation of the name or 
 style in which the plaintiff's branch business mentioned in the 
 bill was carried on, or as to deceive the pubUc, or lead to the 
 beUef that the business carried on by the defendant was the same 
 as the business carried on by the plaintiffs under the name or 
 style of "The Guinea Coa,l Company," or was in any way con- 
 nected therewith. 
 
 The plaintiffs carried on an extensive business as coal merch- 
 ants under the style, "The Guinea Coal Company," at 22 Pall 
 Mall. Plaintiffs were the first to use this style, but there were 
 several more recent estabUshments doing business under the 
 same name. Defendant, one of plaintiff's managers, left plain- 
 tiff's employ and began business on the Strand as "The Pall Mall 
 Guinea Coal Company." Thereafter he moved to Pall Mall, 
 and sent out prospectuses to the trade similar to those sent out 
 by plaintiffs. These prospectuses contained his Strand address, 
 but had pasted over it a paper on which was printed, "Removed to 
 46 Pall Mall." Plaintiff discovered these facts in August, and 
 filed his bill for injunction in November. There was evidence 
 that plaintiff's customers had been misled by defendant's conduct. 
 
 Sir G. M. Giffard, L. J., said, sustaining the injunction: 
 
 "It has been strongly urged here that if this injunction is sus- 
 tained the Defendant's trade will be stopped, but that is not so; 
 
 » 49 Barb. 588; 51 N. Y. 189. » 5 Ch. App. Cas., L. R. 155. 
 
 * 1 Ch. App., L. R. 192. 
 
General Discussion 193 
 
 his trade will not be stopped in the least, he will only be restrained 
 from selling under this particular name. He may sell in Pall Mall 
 coals at a guinea per ton to his heart's content; the only thing he 
 may not do is to use a name which is calculated to induce customers 
 to come to him under the supposition that they are going to the 
 Plaintiffs. * * * 
 
 "I quite agree that they have no property in the name, but the 
 principle upon which the cases on this subject proceed is, not that 
 there is property in the word, but it is a fraud on a person who 
 has estabhshed a trade, and carries it on under a given name, 
 that some other person should assume the same name, or the 
 same name with a slight alteration, in such a way as to induce 
 persons to deal with him, in the belief that they are dealing with the 
 person who has given a reputation to the name." (Italics Author's.) 
 
 As showing the importance of Lee v. Haley as an authority, 
 in this country the writer has noted that it is cited and followed 
 in the following cases: Fuller. v. Huff,^ Newman v. Alvord,'' French 
 Republic v. Saratoga Vichy Co.,^ Mfg. Co. v. Trainer,^ Koehler v. 
 Sanders,^'' Higgins v. Higgins,^^ Shaver v. Heller, ^'^ Gebbie v. Stitt.^^ 
 
 Lee V. Haley was preceded by the "London Conveyance" case,' 
 Knott V. Morgan.^^ 
 
 In 1872, three years after Lee v. Haley, came Wotherspoon v. 
 Currie,^^ the Glenfield starch case (also widely cited in American 
 courts V^ in which the defendant went to Glenfield and there 
 used the name in the starch business in face of the fact that plain- 
 tiff's "Glenfield Starch" had been a widely known brand for 
 years. 
 
 Defendant Currie was a starch maker at Paisley. For many 
 years he had Uved at Glenfield, however, and during the whole 
 of the time that plaintiff and its predecessors had had their works 
 at Glenfield. In 1868, Currie obtained possession of a small part 
 of the premises at Glenfield formerly used by the plaintiff and 
 began to make starch under the name "Glenfield Starch." 
 
 The defendant's excuse for this conduct was that he had resided 
 
 » 104 Fed. 141. '' 82 Hun, 93. 
 
 ' 51 N. Y. 189. " 2 Keen, 213 (Aug., 1836). 
 
 8 191 u. S. 435. " 5 H. L., Eng. & Ir. App. 508 
 
 » 101 u! S. 55. (April, 1872). 
 
 10 122 N. Y. 65. " S^^ Gebbie v. Stitt, 82 Hun, 93; 
 
 " 144 N. Y. 462. Newman v. Alvord, 51 N. Y. 189; 
 
 " 108 Fed. 821 (C. C. A. 8th). Shaver v. Helkr, 108 Fed. 826. 
 
194 Geographical Names 
 
 in Glenfield twenty-four years; that the water there was excellent 
 for starch manufacture, and that the labor was cheap. 
 Plaintiff's label read: 
 
 "GLENFIELD 
 
 PATENT DOUBLED-REFINED POWDER 
 
 STARCH, 
 
 EXCLUSIVELY USED IN THE ROYAL LAUNDRY, 
 AWARDED THE PRIZE MEDAL, i86s. 
 
 Manufactured by ROBERT WOTHERSPOON & CO., Great Wellington Street. 
 
 Kinning Park, (and 70 Union Street,) Glasgow. 
 Xiondon Depot— WOTHEBSPOOW &, CO., 66, Queen Street, City." 
 
 Defendant's label read: 
 
 "THE ROYAL PALACE 
 
 DOXJBILiE! REFITTED 
 
 PATENT POWDER STARCH. 
 
 CURRIE & CO., 
 
 STARCH AND CORN FLOUR MANUFACTURERS 
 
 GLENFIEL D." 
 
 The name "Glenfield" in each label was the most noticeable 
 feature. The above is a substantial reproduction of the copy 
 of the label as shown in the report of the case." 
 
 The Lord Chancellor said, speaking of Glenfield: 
 
 "Nor is it a place which has any special circumstances con- 
 nected with it (although something was attempted to be said 
 about the water used in the manufacture) which would make the 
 starch manufactured there particularly good (p. 125). * * * 
 
 "There was, therefore, nothing whatever to give particular 
 celebrity to the name of Glenfield so connected with a starch 
 manufactory, beyond the fact that the Appellants had manu- 
 factured an article known by that name and having a very large 
 sale under that name. That, of course, was a fact of considerable 
 importance and value to anybody who should be minded to ap- 
 propriate the name of ' Glenfield ' to his starch. * * * 
 
 "It may very well be that hundreds of people like Gknfidd 
 " L. R, 5 H. L. Eng. & Irish App. at 511. 
 
General Discussion 195 
 
 Starch, and order it because they think that it is the best starch 
 that they ever used, without having heard the name of Mr. 
 Wotherspoon, and without knowing him at all. They say, I 
 want the thing that bears that name, the thing made in a par- 
 ticular way, made by the manufacturer who makes it in that way, 
 and there being only one manufacturer who does make, it in that 
 way, I want the article made by that manufacturer. 
 
 "That being so, it appears to me that the respondent, if he was 
 an honest manufacturer setting up in business, would take great 
 care, and all the more because he was setting up in business in a 
 place where Glenfield Starch had been manufactured and sold, to 
 disconnect his name with any name which had become exclusively 
 a designation of an article manufactured by the Appellants. 
 There is a passage in the respondent's answer in which he says: 
 'There is no reason in the world why I should take the name, 
 because I manufacture something superior, and at a cheaper 
 price, therefore, why should I take the name of the plaintiffs?' 
 Well, then, one naturally asks, why should he do anything to 
 lead people to suppose that his name is to be in any way asso- 
 ciated with Glenfield, or this inferior article (as he says) with 
 his. It must be damaging to him that his 'Royal Palace Starch' 
 should ever be called Glenfield Starch. If this statement of 
 his be true he would desire above all things to dissociate himself 
 from a name by which an inferior article could be palmed off as 
 his; but, on the contrary, there is not a tittle of evidence of his 
 ever having advertised his article as 'Royal Palace Starch' alone 
 or gone about selhng it merely as 'Royal Palace Starch.'" 
 
 In a. concurring opinion, Lord Chehnsford said: 
 
 "I am satisfied by the evidence that the Respondent's object 
 in getting possession of a small piece of standing ground, I may 
 call it, at Glenfield, was for the purpose of commenciag opera- 
 tions by acquiring a right to mention Glenfield in his advertise- 
 ments, and that he followed this up by trying how near he could 
 come to a deceiving resemblance of the appellant's labels, and 
 be safe from a charge of piracy. By prominent mention of 
 Glenfield in his labels, and by the representations of his agent, 
 he succeeded in passing off his starch as Glenfield Starch, and 
 it appears by the evidence that he has succeeded in drawing off 
 from the Appellants a great number of their customers. 
 
 "It appears to me that this case closely resembles that of Seixo 
 
196 Geographical Names 
 
 V. Provezende.^^ Under all the circumstances I have not the 
 sHghtest hesitation in agreeing with the conclusion at which my 
 noble and learned friend has arrived." 
 
 Lord Westbury said: 
 
 "I take it to be clear from the evidence, that long antecedently 
 to the operations of the Respondent, the word Glenfield had 
 acquired a secondary signification or meaning in connection with 
 a particular manufacture — in short, it had become the trade 
 denomination of the starch made by the Appellants. It was 
 wholly taken out of its ordinary meaning, and in connection 
 with starch had acquired that peculiar secondary signification 
 to which I have referred. The word Glenfield, therefore, as a 
 denomination of starch, had become the property of the Ap- 
 pellants. It was their right and title in connection with the 
 starch. 
 
 "Now the question is, has that property been invaded by the 
 Respondent? I take the whole proceedings of the Respondent 
 from the beginning to the end to be nothing in the world more 
 than a contrivance for the purpose of getting the word Gknfidd 
 associated with his manufacture. * * * j have no doubt, 
 therefore, that this case comes within the principle on which 
 the jurisdiction is founded — the principle being to prevent a 
 party from fraudulently avaihng himself of the trade-mark of 
 another which has already obtained currency and value in the 
 market, by whatever means he may devise for the purpose, pro- 
 vided the means are devised in order to give him a colorable title 
 to the use of the word, and provided it be shewn from the manner 
 in which he had employed those means that his object was from 
 the beginning to invade the property of the Appellants. That is 
 clearly demonstrated in the present case, to my mind." 
 
 An injunction was granted, "restraining the respondent, his 
 servants and agents, from using the word 'Glenfield,' in or upon 
 any labels affixed to packets of starch manufactured by or for him, 
 and from in any other way representing the starch manufactured 
 by or for him to be 'Glenfield Starch,' and from selling or causing 
 the same to be sold as 'Glenfield Starch,' ,and from doing any act 
 or thing to induce the beUef that starch manufactured by or for 
 him, the respondent,- is 'Glenfield Starch,' or starch manufactured 
 by the appellants," etc. 
 
 " L. R. 1 Ch. App. 192. 
 
General Discussion 197 
 
 In 1891, the House of Lords decided the "Stone Ale" case, 
 another case where a plaintiff had gone to a town where an es- 
 tablished business was located, to compete with that concern, 
 both using the town name as a trade name. This case is cited 
 by Clarke, J., in Kayser v. Italian Co.; " in Shaver v. Heller, ^° 
 and many other American cases. 
 
 Montgomery v. Thompson,^'^ ("Stone Ale" case): Appeal 
 to House of Lords from Court of Appeal, affirming an interloc- 
 utory order and granting a perpetual injunction against the de- 
 fendant. Thompson, the plaintiff (respondent in the House of 
 Lords), and his predecessors had bottled ale at a town in England 
 called Stone, 100 years or more prior to 1891. This ale had 
 come to be known as "Stone Ale," the term "Stone Ale" being 
 apphed to a superior quahty of ale, while the general term "Stone 
 Ales" was apparently applied to all of his product. During 
 this time this brewery was the only one in Stone. It was claimed 
 by the defendant that the water in Stone contributed to the 
 quality of this ale, but this fact was not proved. About 1890, 
 a pubUcan at Liverpool moved to Stone, and set up a brewery 
 under the name "Montgomery's Stone Brewery." There is no 
 evidence that he did any fraudulent act beyond merely adopting 
 the name "Stone." He contended that he had a perfect right 
 to use the name "Stone Brewery," as long as he used it in com- 
 bination with other words which sufficiently distinguished his 
 manufacture from that of the plaintiff's. Stone Ale was also ad- 
 vertised under the name of "Joule Co.," and "Joule Co.'s Stone 
 Ale." Although it does not appear in the report of this case, the 
 fact was that Joule & Sons sold ale both as "Stone Ale" and 
 " Stone Ales." The former was a special quality selling at a 
 higher price than the general stock of ale sold by them. 
 
 The perpetual injunction appealed from restrained the de- 
 fendant "from carrying on the business of a brewer at Stone, 
 under the title 'Stone Brewery,' or 'Montgomery's Stone Brew- 
 ery,' or under any other title so as to represent that the defend- 
 ant's brewery is the brewery of the plaintiffs, and from seUing or 
 causing to be sold any ale or beer not of the plaintiff's manufac- 
 ture under the term 'Stone Ales,' or 'Stone Ale,' or in any way so 
 as to induce the belief that such ale or beer is of the plaintiff's 
 
 i» 160 App. Div. N. Y. 607 (1914). »" (1891) A. C. 217. 
 
 "> 108 Fed. 821; 65 L. R. A. 833. 
 
198 Geogeaphical Names 
 
 manufacture, and from infringing the plaintiff's registered trade- 
 marks or any of them" (p. 218). 
 
 The defendant did not claim that an injunction should not have 
 been granted, but maintained that the one granted was too broad 
 in its terms in that it forbade the use of the terms "Stone Ales" 
 or "Stone Ale" in any manner. 
 
 In affirming the form of injunction, the House of Lords held: 
 
 "I do not think the principle on which the court ought to act 
 in such a case as the present is open to doubt. The respondents 
 are entitled to ask that a rival manufacturer shall be prevented 
 from selling his ale under such a designation as to deceive the 
 public into the belief that they are obtaining the ale of the re- 
 spondents, and he ought not the less to be restrained from doing 
 so, because the practical effect of such restraint may be much 
 the same as if the persons seeking the injunction had a right of 
 property in a particular name. 
 
 "It appears to me idle to argue in opposition to the injunction 
 that it is against the public interest to permit a monopoly of 
 the use of the name of a town for trade purposes, when the only 
 effect of allowing its use by the person and for the purpose sought 
 to be restrained would be to deceive the public" (220) (Herschell). 
 
 "I am of opinion that any attempt by the defendant to sell ale 
 or beer of his own brewing as 'Stone Ales,' or as 'Stone Ale,' would 
 constitute an infringement of the plaintiff's right. Whether it is 
 possible for the defendant to use the word 'Stone' with such 
 differentiae as will distinguish his manufacture from what has 
 hitherto been known as 'Stone Ales' and 'Stone Ale,' and to keep 
 outside the obvious and natural scope of the injunction, is a mat- 
 ter for his own consideration" (221-222) (Watson). 
 
 "Here the evidence has satisfied Chitty, J. (Judge at Circuit), 
 and the Court of Appeal, and I think ought to satisfy your Lord- 
 ships, that the respondent's goods had acquired by long usage 
 the name of 'Stone Ale,' and 'Stone Ales'; that that name does 
 not merely convey the idea that the beer was manufactured at 
 Stone, but that it was the ale of the respondents' manufacture. 
 The appellant is undoubtedly entitled to brew ale at Stone, and 
 to indicate that it was manufactured there, but there are various 
 means of stating that fact without using the name which has 
 now become the designation of the respondent's ale" (227) 
 (Hannen). 
 
General Discussion 199 
 
 "Whatever reputation, therefore, is attached to Stone Ales, or 
 Stone Ale, above other ales known in the district, is due to the 
 plaintiffs and their predecessors in business. The value of that 
 reputation, whatever it is, no one knows better than the appel- 
 lant. He is the proprietor of several hotels and public houses 
 in Liverpool, and in his different establishments he has dealt 
 largely in Stone Ales procured from the plaintiffs. In 1887 he 
 determined to set up a brewery himself. He had to find a site 
 for his business. Where was he to go? After much consider- 
 ation, influenced as he says by the peculiar virtue of the water, 
 he resolved to go to Stone. One thing leads to another. Having 
 gone to Stone, he could think of no better name for his brewery 
 than 'Stone Brewery'; he could find no more fitting designation 
 for his ales than 'Stone Ale.' Then came these proceedings. It 
 is not the first time in these cases that water has got an honest man 
 in trouble, and then failed him at a pinch. Neither Chitty, J., 
 nor the learned Lord Justices could be persuaded that the appel- 
 lant was attracted to Stone by the peculiar virtue and chemical 
 properties of the water. They thought he went there simply with 
 the object of stealing the plaintiff's trade, and in the hope of reap- 
 ing where he had not sown. They were satisfied that he meant to 
 make a fraudulent use of the term 'Stone Ales,' and that he could 
 not possibly use the term honestly" (222) (MacNaughton). 
 
 In respect to the form of injunction the House of Lords said : 
 
 " I do not see my way to alter it at all, except by making it more 
 stringent and more severe. And that would hardly be fair to 
 the appellant on his appeal. I think that an order in the terms 
 read by my noble and learned friend opposite (Lord Watson), 
 an injunction in the form of that granted in Seixo v. Provezende,^^ 
 would have better met the justice of this case. * * * 
 
 "It is obvious, I think, that if the injunction had been in that 
 form, the appellant could not have used the term 'Stone Ales' 
 at all. It would have been impossible for him to have called his 
 ales 'Stone Ales,' and to have distinguished his ales from those of 
 the plaintiff. Any attempt to distinguish the two, even if honestly 
 meant, would have been perfectly idle. Thirsty folk want beer, 
 not explanation^. If the pubhc get the thing they want, or some- 
 thing near it, and get it under the old name — the name with 
 which they are familiar — they are likely to be supremely indif- 
 
 " L. R., 1 Ch. 192. 
 
200 Geographical Names 
 
 ferent to the character and conduct of the brewer, and the equita- 
 ble right of rival traders" (MacNaughton). 
 
 § 99. Rule of Priority. — In cases involving geographic and 
 family names which become trade names are found the strongest 
 reasons for refusing to interfere with the unlimited use of a name. 
 Both parties often have most meritorious claims to the right to 
 use it in trade.' But here, as in so many other similar situations, 
 the law has foimd the rule of priority to work justice. Says 
 Holmes, J., in The American Waltham Co. v. United States Watch 
 Co.,^^ in which the question was as to the use of the word "Wal- 
 tham": "Whatever naight have been the doubts some years 
 ago, we think that now it is pretty well settled that the plaintiff, 
 merely "on the strength of having been first in the field, may 
 put later comers to the trouble of taking such reasonable pre- 
 cautions as are commercially practicable to prevent their law- 
 ful names and advertisements from deceitfully diverting the 
 plaintiff's custom," * * * "In cases of this sort, as in so 
 many others, what ultimately is to be worked out is a point or 
 fine between conflicting claims, each of which has meritorious 
 grounds and would be extended further were it not for the other. 
 It is desirable that plaintiff should not lose custom by reason 
 of the public mistaking another manufacturer for it. It is de- 
 sirable that the defendant should be free to manufacture watches 
 at Waltham, and to. tell the world that it does so. The two 
 desiderata cannot both be had to their full extent and we have 
 to fix the boundaries as best we can" (id., p, 86). 
 
 In cases involving semi public names, priority of use does not 
 give to the user rights analogous to the rights obtained by the 
 adoption of a fanciful word, which may become a technical trade- 
 mark; but priority of use of a semi-public name is always impor- 
 tant in considering the equities involved. 
 
 § 100. One of Several Who Use a Common Geographic Name 
 May Sue on Behalf of All. — The question, as to who may be a 
 party complainant, who has a right to demand for a geographic 
 name the protection of equity arose in the Rosendale Cement 
 case.^' In that case defendants sold "Anchor Rosendale Ce- 
 ment" at Lehigh county, Pennsylvania, making it from stone 
 
 ^' 173 Mass. 85-87-1899; 53 N. E. Co. v. Coplay Cement Co., 44: Fed. 
 141; 43 L. R. A. 826. 277-1890 (C. C. A.); 10 L. R. A. 
 
 "New York & Rosendale Cement '833. 
 
One May Sue on Behalf of ^eveeal 201 
 
 quarried there. Complainants made cement at Rosendale, New 
 York, where there were fifteen or twenty cement rock quarries, 
 some of which had been worked for fifty years. Complainants 
 began to work theirs in 1874. The product of all these quarries 
 has always been known as Rosendale cement. Complainants 
 contended that the name had acquired a generic significance. 
 Joseph P. Bradley, Justice, held: "No doubt the sale of spurious 
 goods, or holding them out to be different from what they are, is a 
 great evil, and an inamoral, if not an illegal, act; but unless there 
 is an invasion of some trade-mark, or trade name, or peculiarity 
 of style, in which some person has a right of property, the only 
 persons legally entitled to judicial redress would seem to be 
 those who are imposed upon by such pretenses. The public, of 
 course, is deeply interested in their suppression, and if the laws 
 are deficient, the legislature might very justly intervene to pre- 
 vent impositions of this kind by public prosecution of the of- 
 fenders; but to give a civil action to every honest dealer against 
 every dishonest one engaged in the same .trade would vex the 
 courts and the country with an excess of multitudinous litiga- 
 tion, * * * Xn our view, if a person seeks to restrain others 
 from using a particular trade-mark, trade name, or style of goods, 
 he must show that he has an exclusive ownership or property 
 therein. To show that he has a mere right, in common with 
 others, is insufficient" (id. p. 279). 
 
 An injunction was refused and later the same case was moved 
 for rehearing,^* and Bradley, J., affirmed himself and said: "A 
 cigar manufacturer of Havana cannot maintain a claim of trade- 
 mark in 'Havana Cigars.' If a dealer in New York sells cigars 
 as Havana cigars which are not such, it may be fraud, but it 
 is no violation of a trade-mark which can be claimed by all the 
 cigar-makers of Havana. * * * So all cement manufacturers 
 in Rosendale and its vicinity may rightly call their manufactured 
 article 'Rosendale Cement,' but any other person may go to 
 Rosendale and manufacture cement there, and have the same 
 right. There is no exclusive property in the name, even in those 
 who now reside there, or carry on the manufacture there. It is 
 open to all the world. In our judgment there is not, there cannot 
 be, any trade-mark in the name of the place" (id. p. 213). 
 
 The result of this case, then, was a denial of the right of a 
 
 "45 Fed. 212-1891. 
 
202 Geographical Names 
 
 dealer in a position like that of one of the cement makers of 
 Rosendale, to protect the name which all of them used, against 
 dealers, outside of Rosendale, who were using the name. It 
 was true there could be no trade-mark in the name, but the case 
 was really one of unfair competition not one of trade-mark, and 
 if buyers of cement were deceived as to the source or origin of 
 the cement which the defendants sold, the injunction should 
 have been granted. 
 
 In Pillsbury-Washburn Flour Mills Co. v. Eagle,^^ a bill was 
 brought on behalf of all flour dealers making Minneapohs flour 
 and was upheld, and various other cases have been since decided, 
 which have laid down a different rule, in this regard, from that 
 of the Rosendale case. This decision of Judge Bradley was 
 criticised by Putnam, J., in 1892, in City of Carlsbad v. Tihhetts,^ 
 as follows: "I fear that the rule laid down by Justice Bradley 
 may be held to be the law in the United States; although to one 
 who knows the history of the manufacture of Rosendale cement, 
 it would seem just, on a bUl filed by any cement manufacturer 
 in that locaUty in behalf of himself and other manufacturers, to 
 protect against an injury to the honest dealer coupled with a 
 fraud on the public. The fact that many have a common in- 
 terest in the same subject-matter ought not to deprive one of 
 the many from being protected against an injury to the whole; 
 and, whatever difficulties there might be in a suit at law for dam- 
 ages in behalf of one manufacturer among many, as pointed out 
 by Justice Bradley, there is no more inconvenience in proceeding 
 in equity in such cases, than on bills in behalf of parishioners to 
 establish a general modus, or of commoners respecting rights of 
 common, or of one taxpayer in behalf of all others in the town, 
 all of which are well-recognized subjects of equity jurisdic- 
 tion. * * * It is certain that, in case of the 'Stone Ale' re- 
 ferred to, and also in the case of the 'Glenfield Starch,' reported 
 as Wotherspoon v. Currie,^'' and noted in Lawrence Mfg. Co. v. 
 Tennessee Mfg. Co.,"^^ the use of the name of the town was pro- 
 tected, under special circumstances." 
 
 In 1899, several California corporations, engaged in that state 
 
 " 86 Fed. 608; 41 L. R. A. 162. ^a 133 u. S. 537-1891; 34 L. ed. 
 
 2« 51 Fed. 852-56. 997; 11 Sup. Ct. 396. 
 
 " L. R. 5 Eng. & Irish App. 508- 
 1872. 
 
Secondary Meaning of Geographical Names 203 
 
 in canning pears grown there and known to the trade as "Cali- 
 fornia Pears," sued one Myer, who canned pears grown in Mary- 
 land and adjoining states, but marked them as "California 
 pears;" and it was held that, while no one person could appro- 
 priate the words "CaUfornia Pears," all those who put up fruit 
 grown in California were entitled to use these words, and they 
 would be protected by injunction against the fraudulent use of 
 labels designating as California pears fruit that was grown and 
 put up elsewhere. ^^ 
 
 It would seem then that any one dealer of a group, all of whom 
 use a particular place name, should have standing in equity to 
 demand protection against any competitor who is using the name 
 which is used by him and his neighbors, to their damage. The 
 fact that others share the right to use the name does not lessen 
 the loss he suffers or give any better standing to the rival who is 
 stealing his business unfairly. The true test is found in the ques- 
 tion as to whether or not the name used has become so associated 
 with the product of complainant and his neighbors as to cause 
 fraud when used by anyone else. 
 
 § 101. Secondary Meaning or Association between the Name 
 and the Locality which Transforms a Geographic Name into a 
 Trade Name. — The association between the goods of the com- 
 plainant and the place name in question must be clear. One may 
 go from any part of the world to Rosendale and begin to make, 
 advertise and sell cement there, free from interference by the 
 courts; but he may not make cement in any other place and 
 sell it as coming from Rosendale, for by so doing he will confuse 
 his product with that of dealers there; nor may he use the name 
 "Rosendale" in connection with the sale of his cement in such 
 a way as to deceive. His product may be better than that of the 
 Rosendale quarries, but that does not excuse him. He may not 
 dictate to buyers. They have a right to be dealt with fairly. 
 That they prefer cement from Rosendale, though it cost more and 
 is inferior to his cement, is no concern of his.'" 
 
 ^^ California Fruit Canners' Assn. cement, which it called "Rugby 
 V. Myer, 104 Fed. 82 (Cir. Ct. Md. Portland Cement." Defendant or its 
 1899) _ predecessor had also for some years 
 
 3» Rugby Portland Cement Co., Ltd., manufactured Portland cement, with 
 V. Rugby & N. P. C. Co., Ltd., 9 R. P. which it had occasionally filled orders 
 C. 46-48-1891. Plaintiff had for for "Rugby Portland Cement," al- 
 some time manufactured Portland though it did not invoice it under 
 
204 Geographical Names 
 
 On this point the Supreme Court says: "The name of a per- 
 son or a town may have become so associated with a particular 
 product that the mere attaching of that name to a similar product 
 without more would have all the effect of a falsehood." " 
 ' "Geographical names often acquire a secondary signification 
 indicative not only of the place of manufacture or production, but 
 of the name of the manufacturer or producer and the excellence 
 of the thing manufactured or produced, which enables the owner 
 to assert an exclusive right to such name as against everyone not 
 doing business within the same geographical limits; and even as 
 against them, if the name be used fraudulently for the purpose of 
 misleading buyers as to the actual origin of the thing pro- 
 duced, or of palming off the productions of one person as 
 those of another."'^ On this subject see also §§ 36-41, 46, 72, 
 100, 111. 
 
 In cases of this sort a distinction must be made between names 
 which are local, that is, which are associated with a certain specific 
 locahty, and those which, while based on the name of a place, are 
 associated with the business which is located in this particular 
 place known by this name. In the first instance they serve as a 
 sort of directory^— a signboard to all who see the name, which 
 tells them where the concern using the name is located. For that 
 
 that name. Both companies were don was a torough and "the name 
 
 located near but not in Rugby. The which an individual may give to his 
 
 plaintiff was denied an injunction, the estate is unlike that which legislative 
 
 court saying: "The plaintiffs cannot sanction has given to a municipal cor- 
 
 monopolize the use of the name poration. The rights of the pubUc in 
 
 'Rugby' as applied to all Portland each are radically different" (p. 470). 
 
 cement made out of the blue lias Plaintiff's sole right to use a word was 
 
 formation which is situated in the denied, although the bill alleged that 
 
 neighborhood of Rugby." name had come to mean in iron trade 
 
 Glendon Iron Co. v. Uhler, 75 Pa. St. the iron of the plaintiffs, which was 
 
 467-1874. Both parties made iron in of peculiar grade, and the referee 
 
 borough of Glendon, incorporated, found the principal facts as set out 
 
 Plaintiff began to make use of word in the bill. 
 
 "Glendon" in 1844, and in 1871 de- ^'^ Hernng-Hall-Marmn Safe Co. v. 
 
 fendants began to mark their iron Hall's Safe Co., 208 U. S. 554-59- 
 
 with that name and the letters 1908, citing WaUer Baker & Co. v. 
 
 "U. F.", their initials. The Glen- Slack, 130 Fed. 514-1904. 
 field starch case was distinguished '^ French Republic v. Saratoga Vichy 
 
 in that Glenfield was an estate where Co., 191 U. 8. 427-35-1903; 48 L. ed. 
 
 about sixty people lived, while Glen- 247; 24 Sup. Ct. 145. 
 
Extent of Public Knowledge of Trade Meaning 205 
 
 concern to move and take the name along with it, would serve to 
 deceive the public. In the second instance, the name goes with 
 the business and is a trade name. 
 
 In Armstrong v. Kleinhans, a building was leased before com- 
 pletion to plaintiff. A large sign with the words "Tower 
 Palace," paid for by plaintiff and the owner, was placed on the 
 building. The name was chosen by the owner. The plaintiff, a 
 clothier, advertised his business widely in connection with the 
 sign. Subsequently he moved, taking the sign to his new loca- 
 tion without the owner's consent. A new sign was erected by 
 the owner and the building leased to the defendant, a clothier. 
 Held, the sign described the building not the plaintiff's business 
 and an injunction would not lie.^' 
 
 § 102. Extent of Public IQiowledge of Secondary Meaning. — 
 
 Unfair competition does not deal with place names when they are 
 used in their usual signification, but with those in which someone 
 has acquired a special right or property, — when, in other words, 
 they are used in an unusual sense. Such rights are acquired by 
 user — by association. 
 
 The knowledge of such user need not be universal; it is enough 
 that it exists among such persons as knew, at the time the action 
 is brought, of the existence of complainants' business or goods.'* 
 "UniversaUty of recognition, therefore, is not required. What 
 is required is that a substantial section of the purchasing pubUc 
 should be proved to identify the trade name with the plaintiff's 
 
 "82 Ky. 303-1884; 56 Am. Rep. Tower Palace Carpet Store." That 
 894. Plaintiff sought to remove from sign was on the building when the 
 a storehouse, No. 150 West Market defendant took possession. The court 
 street, occupied by the defendant, a held that the building was named by 
 sign reading "Tower Palace" and to the owner. The plaintiff advertised 
 enjoin them from using these words in his business extensively. There was 
 anyway. From 1871 to 1877, plaintiff evidence to show that since his re- 
 had occupied this building. When moval he had lost business because 
 he left the building he took, without of the Market street house being still 
 consent of the owner, the sign from called "Tower Palace." Held, that 
 its place and put it upon the house to the name described the place — the 
 which he removed. When the owner building — not the business, or the 
 took possession he put a new sign person carrying it on, and was never 
 reading "Tower Palace" where the used as a trade-mark by the plaintiff, 
 other had been and called his store "* Faulder v. Bmhton, 20 R. P. C. 
 while he occupied the building "The 477, 1902. 
 
206 Geographical Names 
 
 goods, and that this should be true of the district in which the 
 defendant's trade is done."'^ 
 
 The fact that plaintiff's sales have been small is not a defense 
 to the action.^* If, however, the plaintiff's goods are absolutely 
 unknown in the defendant's territory, there could be no passing 
 off. But if the plaintiff's goods are even sUghtly known there — 
 that is to such extent as not to be negligible — then the plaintiff 
 should be protected.'' Questions of this sort, however, must be 
 considered, having in mind the right of the plaintiff, the first user 
 to all benefit of his mark that comes from a lawful extension 
 of his market in new territory — and in all territory in which 
 the mark may not now be known. The court will not set geo- 
 graphic limits to the expansion of a business in these cases in the 
 absence of estoppel or laches on plaintiff's part. Hanover Star 
 Milling Co. v. Metcaip'''' 
 
 The question often arises as to the extent of a district in which 
 the right to a certain name may be claimed. Does it apply to a 
 township or merely to a parish or village or to an entire country- 
 side? Local conditions necessarily govern these cases. In Bra- 
 ham V. BeacMm,^^ it was held that "Radstock Colliery" might 
 
 's Cutler, Passing Off, p. 48. liery Proprietors, Coal & Coke Office." 
 " Ibid., p. 52 . Fry, J., held, when plaintiff changed 
 " Braham v. Beachim, 7 Ch. Div. name from Radstock Coal Co. and 
 848-1878. Ratstock Coal Works defendants were 
 3'" 240 U. S. 403 (1906). bound as honorable men not to follow 
 38 7 Ch. Div. 848-1878. Plaintiff suit. Plaintiff, as sole owner of col- 
 owned aU colUeries in parish of Rad- Ueries in Radstock parish, is pre- 
 stock. The same seam of coal was sumably alone entitled to call herself 
 worked outside the parish by others. "Radstock Coal Proprietor." "The 
 Before 1848, predecessors of the plain- fact that a vein of Radstock coal runs 
 tiffs used name " Radstock Coal Co." out of parish of Radstock does not en- 
 and later "Radstock Coal Works." title all workers of it to describe them- 
 Defendants, in 1868 began as "Rad- selves as Radstock CoUiery Pro- 
 stock Wagon Co.,'' using name "Rad- prietors. The genus includes the 
 stock Coal Co." Confusion resulted species and by using name of Rad- 
 and plaintiff adopted "The Rt. Hon. stock coal proprietors defendants rep- 
 the Countess Waldegrave's Radstock resented themselves as selling coals 
 ColUeries." Defendants then used of plaintiff and others which comes 
 name "The Radstock Colliery Pro- under description Radstock coal, 
 prietors." They then put up the sign There is great distinction between 
 "The Radstock Colliery Proprietors Radstock Colliery (which may mean a 
 Coal & Coke Office," and later still colliery within the district) and a 
 "The Radstock Coal Company, Col- colliery at Radstock, because that 
 
Duration of User Necessary to Secondary Meaning 207 
 
 mean a colliery within a district called by the name Radstock or a 
 colliery within Radstock parish proper; and further, that the 
 parish had not given its name to all the collieries on the coal vein 
 in that neighborhood. A name often has many meanings. New 
 York is the name of a state, a county, and a city. All the facts 
 of each particular use must be studied, to discover the meaning 
 of the names as used in the case under consideration. Is the use 
 of the name an honest one, an accm-ate one; is it used, not to 
 imitate but to separate, to differentiate? 
 
 What is the understanding of the average man — the general 
 pubhc — as to the meaning of the name? This question is far 
 more important, in the eyes of the court, than the fixing of boun- 
 daries. The meaning of a geographic name and the extent of 
 the section to which it applies, may be said to be qualified by the 
 section from which orders or customers may be expected to come. 
 In some instances this might mean a large part of the civilized 
 world, in others a few blocks in a city. What is a merchant's 
 market? His protection should be coextensive with that at least. 
 See § 38. 
 
 § 103. Duration of User Necessary to Acquire Secondary 
 Meaning. — The duration of user required to create a secondary 
 meaning can be measured by no accurate test. In the Yorkshire 
 Relish case the time was twenty-five years, in the Silverpan Jam 
 case, about fourteen years, in the Anatolia Licorice case, six weeks. 
 From these instances it will be seen that there is no rule as to the 
 length of time required. It must be governed by the conditions 
 in each case, depending on the locality, the nature of the business, 
 and the kind of goods involved. 
 
 The difference between a natural meaning, an abstract mean- 
 ing and a trade meaning may be illustrated by the terms "Carls- 
 bad Sprudel Salts," which means only salts from Carlsbad, "Ep- 
 som Salts," which means either salts from Epsom or merely Sul- 
 phate of Magnesia, and "Oneida Traps" which means traps 
 made only by one concern regardless of where made.^' 
 
 means a colliery within the parish of until they acquire a colliery in parish 
 
 Radstock and I do not believe that the of Radstock. 
 
 parish has given its name to all the "Cily of Carlsbad v. Kutnow, 71 
 
 collieries in the Radstock series" Fed. 167-1895; 35 U. S. App. 750; 
 
 (p. 856). Defendants enjoined from 18 C. C. A. 24. Lacombe, J., said: 
 
 use of Radstock Colliery Proprietors "The Carlsbad Sprudel Salts in either 
 
208 
 
 Geographical Names 
 
 § 104. Degree of Resemblance Necessary. — The resemblance 
 necessary to constitute unfair competition in these cases of geo- 
 graphical names is the same as with other names. Th^e must 
 be ambiguity. There must be such confusion as will bring some 
 loss or injury to those who have already built up a business of 
 their own. The primary right of all to use the geographical 
 names must be considered in connection with the other right 
 which each man has to be free from fraudulent competition. A 
 further discussion of the question of similarity and secondary 
 meaning is found in the chapter on "Evidence." 
 
 § 105. Geographical or Place Names Which Indicate Origin 
 and Source Falsely. — The importance to the business world of 
 place names not being lying brands but truthful representations 
 
 form, therefore, is a natural product, 
 and well known as such; and there is 
 no proof in the case that the com- 
 plainants have used the name Carls- 
 bad upon any but genuine Carlsbad 
 Sprudel Salts. And we concur with 
 the circuit judge in the finding ttiat 
 there is no evidence in the record that 
 any artificial salts have, from similar- 
 ity or otherwise, come to be known 
 by the name of Carlsbad, as is the 
 case with the Epsom Salts, a term 
 now generally appUed to sulphate of 
 magnesia, whether such sulphate of 
 magnesia comes from Epsom or not. 
 Under these circumstances the com- 
 plainant, the city of Carlsbad, has 
 the right to indicate the origin of 
 these natural salts by its own name, 
 and would be entitled to the aid of 
 a court of equity to prevent anyone 
 from using that name to induce the 
 public to accept as genuine arti- 
 ficial salts not the product of the 
 Carlsbad Spring" (at p. 757). 
 
 Oneida Community v. Oneida Game 
 Trap Co., Inc., 168 A. D. (N. Y.) 769; 
 1915, McAndrew v. Bassett, 4 De G. J. 
 & S. 380-1864. The plaintiffs were 
 large manufacturers of licorice. They 
 styled this hcorice "AnatoUa," which 
 
 was the name applied to a whole tract 
 of country wherein Ucorice root is 
 largely grown. At the time plaintiffs 
 began to use the word there was no 
 other manufacturer of licorice stamp- 
 ing it with the word. Subsequently, 
 in response to an order for Anatolia 
 licorice, defendants caused a stamp 
 to be prepared containing the word 
 "Anatoha" and put it on the goods 
 and afterward continued to use it. 
 The court bdow granted a perpet- 
 ual injunction restraining the use of 
 the word "Anatolia" by the defend- 
 ants on licorice. In response to the 
 argument that the word "Anatolia'' 
 was common to all, the court said: 
 " * * * Property in the word 
 for all purposes cannot exist, but 
 property in that word, as applied by 
 way of stamp upon a particular ven- 
 dible article as a stick of licorice, does 
 exist the moment the article goes into 
 the market so stamped, and there 
 obtains acceptance and reputation, 
 whereby the stamp gets currency as 
 an indication of superior quality, or of 
 some other circumstance, which ren- 
 ders the article so stamped acceptable 
 to the public" (p. 386). 
 
Names Which Indicate Origin Falsely 209 
 
 as to the identity of the maker of the goods on which they appear 
 is recognized by equity. If anyone who wishes may use a name, 
 whether technical trade-mark or not, untruthfully, or if he may 
 use a name which gives false information as to his goods, the 
 result is fraud on the pubUc, loss of business by the plaintiff, and 
 a loss of incentive to dealers to create individual reputations for 
 themselves and their goods. Reputations cannot exist apart 
 from names. It is important then, that names indicating source 
 or origin of goods should be most accurately used and should, 
 when truthful, be given full protection. One may not make ' ' Min- 
 neapoUs Flour" in Wisconsin, when the term "Minneapolis Flour" 
 is already in use as the name of a product made in Minneapolis. 
 Everyone is free to go to that city, and make flour there, and it may 
 be that his product may properly be called "Minneapohs Flour" 
 if that term as used in the flour trade parlance means merely 
 "flour made at Minneapohs" or "made by the methods in general 
 use in Minneapohs." He cannot so use it if the name has come 
 to mean the goods of some one particular concern. To use that 
 name on flour made in any other place than Minneapohs under 
 these conditions is to use it in fraud of the rights of manufac- 
 turers in Minneapohs; is to use it so as to make of it a lying brand, 
 a name giving false information; is to misrepresent the source or 
 origin of the goods. ^'' If one person be allowed to use such a lying 
 brand, all may, and the good-will of various concerns, built up by 
 years of work, will be injured and perhaps rendered valueless. 
 If the private interests involved in this question are great, the 
 
 *" PiUsbury-Washburn Flour Mills and 'Minneapolis, Minnesota.' The 
 Co., Ltd., V. Eagle, 86 Fed. 608-1898; defendant might have continued to 
 30 C. C. A. 386; 41 L. R. A. 162, re- buy Minneapolis flour, and branded it 
 versing 82 Fed. 816-1897. "The 'Minneapolis, Minnesota,' and had 
 complainants can have no exclusive all the benefit which these marks 
 right to the use of the geographical would give him in the market, be- 
 names of 'Minneapolis' or 'Minne- cause he would be adhering to truth 
 sota.' They are not the subject of a and fair deaUng. But when he placed 
 trade-mark proper. Any one or more these same brands upon another flour, 
 of the two hundred thousand in- manufactured in Wisconsin, he de- 
 habitants of Minneapolis may use that parted from the truth, and placed a 
 word upon their flour. The defendant lying brand upon his goods, which was 
 or any other person from any state intended to deceive, and could not but 
 may go there and estabhsh a mill and deceive, the public and result in injury 
 brand his flour 'Minnesota Patent' to the complainants' business." 
 
210 
 
 Geogkaphical Names 
 
 public interests are greater, for the public has a right to insist 
 upon the use of honest brands. 
 
 Persons doing business at places other than those bearing the 
 name they use on their goods will not be permitted to use this 
 geographical name as a brand or label, merely for the purpose of 
 fraud and false representation and to appropriate the good-will 
 of a business which another has built up imder this name by long- 
 continued industry and skill and a generous use of capital. 
 
 To sell artesian well-water as "Blue Lick Water," which the 
 public would understand from the name to mean water from a 
 spring well known to many^ is fraud. If a purchaser calls for 
 Carlsbad salts he has a right to be sure the article comes from 
 Carlsbad and not New York. To use that name upon artificial 
 salts made in New York is to deceive the purchaser as to the 
 origin of the goods, the place from which they came, and to 
 state an untruth. He may be injured, and the trader who is 
 using the name, accurately, to describe the source of the goods, 
 may be defrauded of profits which are the result of his work in 
 buUdiag up his business under the name, now wrongfully used by 
 his competitor.*^ 
 
 " City of Carlsbad v. Kutnow, 68 
 Fed. 794-1895, affirmed, 35 U. S. 
 App. 750-1895, 71 Fed. 167. The 
 City of Carlsbad as proprietor of the 
 Carlsbad Springs, had for years 
 evaporated the waters into salts, 
 which were sold as "Carlsbad Sprudel 
 Salz." Defendants, who were New 
 York druggists, made a similar salt, 
 without the use of the genuine Carls- 
 bad water, and sold it under the name 
 "Improved Effervescent Carlsbad 
 Powder." Held, that if any arti- 
 ficial salts have come to be known by 
 the name of "Carlsbad Salts," from 
 similarity or otherwise, the defend- 
 ants have the same right to sell such 
 salts by that name that they have to 
 sell anything by the name by which 
 it i^ known. If the defendants pro- 
 cured genuine Carlsbad waters or 
 salts, and put them up in different 
 forms, or with other ingredients, to 
 
 improve their taste or vary their ef- 
 fects, these words used would be 
 truthful, and they would seem to 
 have a clear right to use them in such 
 preparations; but the plaintiffs' proof 
 tends to show that the defendants' 
 salts are not, in substance, gSnuine 
 Carlsbad salts, in any form. No 
 proof has been brought showing that 
 the plaintiffs have used the name of 
 "Carlsbad" upon any but genuine 
 Carlsbad Sprudel Salts, and the de- 
 fendants use the name "Carlsbad" 
 upon artificial salts having no connec- 
 -tion with that name because of its 
 connection with the genuine Carlsbad 
 Sprudel Salts. Carlsbad, with its 
 springs, is far away. This use of its 
 name in connection with a preparation 
 so similar to this well-known product 
 of them is some representation that 
 it is a genuine product of them. Call- 
 ing the powder "Improved CArlsbai" 
 
Residence Does not Give Unlimited Right 211 
 
 § 106. Residence in a Locality does not give Unlimited Right 
 to use the Name of the Locality as a Trade Name. — The fact 
 that a person takes up his residence in a locahty or locates a 
 manufactory there does not give the right to him to use that 
 name as a trade name, if by so doing fraud or unfair competition 
 will be created. A company organized under the name "Oneida 
 Game Trap Co., Inc.," and first located in Niagara Falls and then 
 moved to Oneida, N. Y., and there began ,to make and sell traps. 
 It happened that for many years another concern, the "Oneida 
 Community, Ltd.," located in Oheida City and on the Oneida 
 River had made traps of which the popular or trade name had 
 come to be "Oneida Traps," and "Oneida Game Traps." The 
 new corporation was enjoined from using its corporate name or 
 
 is a direct representation that genuine 
 Carlsbad powder has been taken to be 
 improved upon; and calUng it also 
 "effervescent" is a representation that 
 the improvement is in the efferves- 
 cence. This is putting the plaintiffs' 
 mark to some extent upon the de- 
 fendants' salts, and is calculated to 
 lead customers to think they are the 
 salts of the plaintiffs. Such deception 
 would be actionable at law, and is 
 preventable in equity. Improved Fig 
 Syrup Co. v. California Fig Syrup Co., 
 4 C. C. A. 264^1893; 54 Fed. 175; 
 Von Mumm v. Frash, 56 Fed. 830- 
 1893. 
 
 Parkland Hills Blue Ldck Water 
 Co. v. Hawkins, 95 Ky. 502-1894; 26 
 S. W. 389. Plaintiff marketed "Blue 
 Lick Water" since 1888. Defendant 
 later began to sell "Parkland Hills 
 Blue Lick Water," words Blue Lick 
 being very prominent on their label. 
 Their water came from an artesian well 
 at Lexington. Blue Lick spring used 
 by plaintiff had been famous for more 
 than one hundred years. "Name 
 Blue Lick indicated origin and owner- 
 ship or place of the product and is 
 one in the exclusive use of which the 
 appellees should be protected. The 
 
 proof discloses a scheme by which, 
 when a thirsty patron * * * 
 caUed for Blue Lick water, * * * 
 he was to be given water from the 
 artesian well of the appellant. This 
 was no less a fraud on the public than 
 on the appellee." 
 
 Compania General de Tabacos v. 
 Rehder, 5 R. P. C. 61-1887 (Ch. 
 Div.). Plaintiffs succeeded to the 
 business of the Spanish govern- 
 ment in the manufacture of cigars, 
 and continued to use the same labels 
 and marks, including the word "Ca- 
 vite," the name of a district in which 
 the cigars were manufactured. De- 
 fendants were using for their cigars 
 labels closely resembling plaintiff's 
 and were likewise using the name 
 Cavite. It was not proved that their 
 goods were manufactured in the 
 district of Cavite. Interlocutory in- 
 junction granted. 
 
 Wheeler v. Johnson, 3 L. R. Ir. 
 284-1879. Use of words Cromac 
 Springs for name of waters from a 
 spring at a locality called Cromac 
 will be protected if defendant uses 
 the name so as to pass off the waters 
 he sells as those of the plaintiff. 
 
212 
 
 Geographical Names 
 
 the name "Oneida Game Traps" although it was actually located 
 in Oneida. ^^ 
 
 § 107. Relative Location of Plants of Rivals — Effect on 
 Names. — The fact that the place where the defendant makes 
 his goods or where he procures raw material is near to the Spot 
 from the name of which the name of his rival's goods is taken, 
 is no justification for his using that name to the injury of an- 
 other. That clay is taken out of the same seam or vein, although 
 in a place distant from the spot where a rival is located, and 
 that this clay is of the same quaUty constitutes no justification.^' 
 
 *' Oneida Community, Ltd., v. Oneida 
 Game Trap Co., 168 A. D. 769-1915. 
 
 Phenix Cheese Co. v. Kennedy et al., 
 U. S. Dist. Ct. (Eastern Dist. of 
 Pennsylvania) May 18, 1915. 
 
 «3 Dunnachie v. Young, 10 Scot. 
 Sess. Cas. (4th ser. X) 874r-1883. Dun- 
 nachie was on Glenboig; the clay the 
 plaintiff used was found and manu- 
 factured there; and in putting the 
 name of the place into this trade- 
 mark he was only following the course 
 ordinarily pursued. The respondents 
 were not on Glenboig. "In taking 
 that word, they took it only because 
 it denoted goods known in the market 
 to he of high quality, and, if they are 
 to find virtue in it, this will only be 
 because those who at first or second- 
 hand are the purchasers of their goods 
 read the word as indicated that the 
 goods are the product of a manufac- 
 tory other than Heathfield. The re- 
 spondents try to justify their assump- 
 tion of Glenboig, first, on the ground 
 that their clay is of the same seam; and 
 second, that the word 'Glenboig' as 
 used by them is qualified by the word 
 'Young's' and so misapprehension not 
 to say deception is prevented. The 
 fact assumed is the former of these 
 grounds, and has, I think, been estab- 
 lished, but it is insufficient as a justifi- 
 cation. The least that can be said on 
 the subject is that the word, as used, is 
 
 ambiguous. That, in my opinion, 
 would be enough. Why should the 
 respondents use a word that may 
 mislead people to buy their goods as 
 the goods of the complainants? If 
 all the respondents desired to sug- 
 gest is that their bricks are made of 
 the clay of the Glenboig seam raised 
 on Heathfield, a word or words could 
 be introduced by which this could be 
 commui)icated" (p. 886). Seixo v. 
 Provezende, 1 Ch. App. 192-1865. 
 Since 1848, plaintiff had marked his 
 wine "Seixo," with his coronet 
 stamped over it. In 1862 defendant 
 put on the market "Seixo de Cima" 
 (upper Seixo). Seixo means stony or 
 pebbly, like Steinwein in German. 
 Defendant's vineyards were on Sitio 
 de Seixo (district of Seixo). Plaintiff 
 owned Quinta de Seixo (Seixo Estate). 
 "Assuming the truth of what is con- 
 tended for by the defendants, i. e., 
 that parts of their vineyards are 
 known by the name Seixo, that does 
 not justify them in adopting a device 
 or brand the probable effect of which 
 is to lead the public when purchasing 
 their wine to suppose that they are 
 purchasing wine produced from the 
 vineyards not of the defendants, but 
 of the plaintiff" (at p. 198). Dis- 
 tinguishing Leather Cloth Co. v. Amer- 
 ican Leather Co., 11 Jur. N. S. 513- 
 1865. 
 
Names of Cities 
 
 213 
 
 § 108. Names of Cities. — Anyone has the right to use the 
 name of a city as the name of his goods, as a general principle, 
 but not the right to do so to the injury of another trader or manu- 
 facturer using the name rightfully. St. Louis has become known 
 for the quality of white lead made there. For a Chicago manu- 
 facturer of lead to call his product St. Louis lead, to the injury 
 of St. Louis dealers, is unfair.** The right of all citizens of 
 
 Bewlay & Co., Ltd., v. Hughes, 
 15 R. P. C. 290-1898. Plaintiffs had 
 for some time been selling cigars 
 named from a district in India "Flor 
 de Dindigul." Defendant afterward 
 began selling cigars under the brand 
 "Cigarro de Dindigul," claiming the 
 right to do so on the ground that 
 the tobacco came from Dindigul in 
 India. He was enjoined from using 
 the name "Cigarro de Dindigul," or 
 from using the name "Dindigul" at 
 all without clearly distinguishing his 
 cigars from plaintiffs'. 
 
 A. F. Pike Mfg. Co. v. Cleveland 
 Stone Co., 35 Fed. 896-98-1888. The 
 names "Green Mountain," "Wil- 
 loughby Lake," "Lamoille," and 
 others as designating scythe stone, 
 had been used by complainant and its 
 predecessors for a number of years. 
 Defendants acquired a quarry ad- 
 jacent to complainant's, and branded 
 theirs in the same way. It was urged, 
 first, that the brands employed by 
 defendants did not infringe.. Defend- 
 ants used the exact words "Lamoille," 
 "Green Mountain" and others, but in 
 place of "Willoughby Lake," em- 
 ployed the title "Willoughby Ridge." 
 It was urged that "Lamoille" and 
 "Willoughby Lake" were geograph- 
 ical terms. The defendants quarried 
 stones 200 miles from Lamoille county 
 and Willoughby Lake, and applied to 
 this stone the names "Lamoille" and 
 "Willoughby Ridge." Assuming that 
 complainants cannot have a vaUd 
 
 trade-mark in these names, it seems 
 settled that a manufacturer will be 
 protected in the use of a geographical 
 name as against one who does not 
 carry on business in the district so 
 designated. Blackwell v. Dibrell, 3 
 Hughes, 151, Fed. Cas. No. 1,475- 
 1878; Newman v. Alvord, 49 Barb. 588- 
 1867; affirmed in 51 N. Y. 189-1872. 
 
 Blackwell & Co. v. Dibrell & Co., 3 
 Hughes (U. S.), 151-178; Fed. Cas. 
 1,475 (C. C. Va.). Complainants were 
 successors to one who, taking up a 
 small tobacco business at a little place 
 called Durham, adopted the word 
 "Durham" with the figure of a bull 
 as a trade-mark, and developed a very 
 large business. The neighborhood of 
 Durham came to be known for the 
 quality of the smoking tobacco there 
 grown; and the place grew and be- 
 came well known, owing largely to 
 the development of the business of 
 the complainants' predecessors. Held, 
 that complainants were entitled to the 
 exclusive use of the word and figure, 
 particularly as against competitors 
 manufacturing elsewhere than at Dur- 
 ham. 
 
 " Southern White Lead Co. v. Gary, 
 25 Fed. 125-1885. Complainant, a 
 manufacturer of white lead in St. 
 Louis, stamped upon its kegs the 
 words, "Southern Company, St. Louis, 
 Warranted Strictly Pure White Lead 
 in Pure Linseed Oil." St. Louis had 
 an estabUshed reputation for pure 
 white l^ad, and complainant had main- 
 
214 
 
 Geogbaphical Names 
 
 a city to use its name in christening their goods will not excuse 
 their using it so as to injure their rivals by deceit, fraud, or trick- 
 ery. An illustration of such a use of a city name is found in the 
 
 tained for years a large trade at that 
 place as manufacturer. Defendants 
 manufactured their lead at Chicago, 
 branding it "Southwestern St. Louis." 
 Surrounding the words "Strictly Pure 
 White Lead," the words "South- 
 western St. Louis" appearing in the 
 same form as the words "Southern 
 Company, St. Louis," and a label on it 
 stating it was strictly pure. Analysis 
 showed complainant's lead to be pure 
 and defendant's to be adulterated. 
 Held, Gresham, C. J., that "the de- 
 fendants so brand the heads of 
 their kegs as to naturally mislead and 
 induce persons purchasing for con- 
 sumption to suppose they are pur- 
 chasing compUanant's lead, when they 
 are getting an inferior article. The 
 brand used by the defendants is so 
 Uke the complainant's as to induce the 
 pubhc to mistake the one for the other. 
 The defendants sell their goods to 
 retail dealers, and it may be that such 
 dealers are not deceived, but they sell 
 to consumers who are or may be de- 
 ceived. The complainant is entitled 
 to reUef, if the brand used by the 
 defendants sufficiently resembles the 
 complainant's brand to be mistaken 
 for it, and the defendants adopted 
 their brand for the purpose of selling 
 their kegs as the kegs of complain- 
 ant, or for the purpose of enabUng 
 retail dealers to do so, and the com- 
 plainant has been injured by this 
 fraud, or is likely to be injured by it. 
 The complainant manufactures its 
 genuine white lead at St. Louis, and 
 its reputation is already established 
 as a manufacturer and dealer of this 
 character. The defendants manufac- 
 ture their adulterated and greatly 
 
 inferior lead at Chicago, and stamp 
 upon their kegs a false brand in 
 imitation of the complainant's brand. 
 Why is this done unless it be in the 
 hope of deceiving the public and 
 injuring the complainant? Realizing 
 that they could not engage in open 
 manly competition with the complain- 
 ant, the defendants resort to a pal- 
 pable trick. If this resulted in no 
 injury to the complainant, or was 
 likely to result in no injury to it, the 
 bill would have to be dismissed. But 
 the affidavits show that the defend- 
 ants' kegs can and have been sold as 
 the complainant's" (id. p. 126). 
 Huntley & Palmer v. Reading Biscuit 
 Co., Ltd., 10 R. P. C. 277-1893. 
 Plaintiffs had long made at Reading 
 biscuits very widely known as "Read- 
 ing biscuits." In many cases the tins 
 were so marked and the words were 
 used in catalogues. Plaintiffs were 
 substantially the only biscuit manu- 
 facturers in Reading. Defendant 
 corporation was formed by the owners 
 of an existing bakery business, estab- 
 lished at Reading, to manufacture 
 biscuits under the name of The 
 Reading Biscuit Company, but had 
 not yet commenced business. Injunc- 
 tion granted against the use of the 
 word "Reading" in connection with 
 biscuits not manufactured by plain- 
 tiff, unless clearly distinguished from 
 plaintiff's goods. Chitty, J., says: 
 "It is necessary to look carefully into 
 cases Uke the present, because it does 
 not depend on the form; it does not 
 depend on how it is done, or the names 
 which the defendants in cases of this 
 kind endeavor to set up. The court 
 has to look at the substance and 
 
Names op Cities 215 
 
 "St. Louis Beer" cases. This beer was sold in South America 
 and Panama, as well as in the United States. 
 
 In Anheuser-Busch Brewing Association v. Piza,*^ complainant 
 did business at St. Louis, Mo., and had been accustomed to ex- 
 port beer in bottles with a label bearing the words "St. Louis 
 Lager Beer" to South America and Panama. Neither defendant 
 nor any other person in the export trade had been accustomed to 
 use the words "St. Louis Lager Beer." Defendant shipped beer 
 from New York in competition with complainant. It was shown 
 that at Panama and in South America "St. Louis Lager Beer" 
 was in demand. Defendant's beer was made in New York and 
 his bottles were so labeled as to represent that the beer was made 
 at St. Louis, and that his firm were the sole agents for the St. 
 Louis lager beer. He insisted that buyers did not discriminate 
 between complainant's article and other beer made in the United 
 States, but bought it simply because they supposed St. Louis 
 beer was produced in the United States, as distinguished from 
 German and English beer, but the court said: "This may be 
 true; but, if it is, it does not seem to be conclusive against the 
 right of the complainant to the injunction which he seeks. As 
 the goods of the parties go to the same markets it can hardly fail 
 to happen that the complainant will lose sales, and the defendant 
 will get customers, in consequence of the defendant's acts. Al- 
 though the complainant cannot have an exclusive property in the 
 words ' St. Louis ' as a trade-mark, or an exclusive right to desig- 
 nate its beer by the name 'St. Louis Lager Beer,' yet, as its beer 
 has always been made at that city, its use of the designation upon 
 its labels is entirely legitimate; and if the defendant is diverting 
 complainant's trade by any practices designed to mislead its 
 customers, whether these acts consist in simulating its labels, or 
 representing in any other way his products as those of the com- 
 plainant, the latter is entitled to protection. It is no answer for 
 the defendant, when the complainant asks for protection, to 
 say that it has no exclusive right to designate its product in the 
 
 when the court finds that in sub- the duty of the court to interfere" 
 
 stance, notwithstanding there are (at p. 280). 
 
 many things which the defendant " 24 Fed. 149-50-51-1885. See also 
 
 could do which are legitimate and Oneida Community, Ltd., v. Oneida 
 
 within his right, yet he is so contriv- Game Trap Co., 168 A. D. (N. Y.) 
 
 ing them as to take away something 769-1915. 
 
 which belongs to another man, it is 
 
216 ' Geographical Names 
 
 manner it has, although this might very properly be asserted by 
 a competitor seUing beer made at St. Louis, or who, by reason of 
 any circumstances, might be entitled to represent his product as 
 originating there. ^® * * * It is sufficient that it was lawful 
 for the complainant to use that name (St. Louis) to designate 
 its property; that by doing so it has acquired a trade which is 
 valuable to it; and that the defendant's acts are fraudulent and 
 create a dishonest competition detrimental to the complainant."**" 
 
 § 109. Effect of Moving a Plant or Business. — The right to 
 use a geographic name indicating source is not lost because the 
 one using it moves his plant to a place which does not bear the 
 name which has been thus used as a trade name. This is not a 
 reason why he may not continue to claim protection in the use of 
 the name of the place where he was formerly located, if it has, 
 prior to the time of his removal, acquired a secondary meaning, 
 as used by him, which will cause fraud and deceit of purchasers, if 
 used by another, even though that other is making the goods at 
 the place whence the first mentioned maker had removed. 
 
 For instance, one G. in 1891 acquired the plant, stock, good- 
 will and all rights in a well-established business of manufactur- 
 ing plows, long carried on at a village called Deer River, the 
 plows being branded with the words "Deer River" and widely 
 known as "Deer River" plows. Plaintiff then removed the 
 factory to Lowville in the same county, continuing the old name 
 and brand "Deer River." Two or three years later defendant, a 
 former employee, bought the old factory building, representing 
 that he was to use it as a blacksmith shop and general repair 
 shop. He began, however, to make plows there in imitation of 
 plaintiff's and branded them as "Deer River" plows and placed 
 his own name upon them and his salesmen represented the plows 
 to be identical with that made by the plaintiff and his predeces- 
 sors. It was held, that the plaintiff was entitled to a preliminary 
 injunction restraining defendant from the use of the name "Deer 
 River" on his plows.*' 
 
 «» Canal Co. v. Clark, 80 U. S. May 18, 1915; Phmix Cheese Co. v. 
 
 311-1871; 20 L. ed. 581; 13 Wall. Cleveland Cream Cheese Co., U.S. Cir. 
 
 322. Ct. (Northern Dist. Ohio, Eastern 
 
 «»" Phenix Cheese Co. v. Kirp et al., Div.), Feb. 4, 1910. 
 App. Div. (N.Y.) March, 1917; Phenix " Gehbie v. Stitt, 82 Hun. (N. Y.), 
 
 Cheese Co. v. Kennedy et al, U. S. 93-1894; 31 N. Y. Supp. 102 (Gen'l 
 
 Dist.'ct. (:^astern Dist. of Penna.1, Term, 4th Dep't). 
 
Names of Natural Products 217 
 
 In Siegert v. Gandolfi it is stated that "if the geographical name 
 has become a secondary designation indicative of the product of 
 the particular manufacturer, it is as much entitled to protection 
 as any arbitrary or fancy name * * * and the circumstance 
 that the manufacturer may have removed his place of business, 
 and is making his product in some other place, is of no more 
 consequence than it would be if he had adopted the fancy name."^^ 
 
 § 110. Names of Natural Products. — The same rules that 
 apply to names of manufactured articles apply to the names of 
 natural products which have been rendered valuable by the 
 owner's brains and labor, such as names of natural springs. The 
 Wisconsin court, on the petition of the owners of the "Bethesda 
 Mineral Spring" enjoined the use of the name "Glenn Bethesda 
 Mineral Water" where the owners of the latter made misleading 
 representations as to the ownership of the spring of the plaintiffs, 
 the defendant's spring being 1200 feet away from theirs, although 
 the two waters were identical in their character. The decision 
 was based on the court's beUef that "the rules laid down in re- 
 spect to an artificial or manufactured article are said to apply to 
 the proprietorship of any pecuUar natiu-al product which a party 
 may have acquired with the avails of his industry, sagacity, and 
 enterprise; the owner or vendor of the one, equally with the 
 owner or vendor of the other, having a right to the exclusive use 
 of his mark employed in connection with sale of the conunodity."^" 
 
 ^Siegert v. Gandolfi, 149 Fed. lOO- "Angostura" had acquired a second- 
 1906 (C. C. A. 2nd Cir.). Com- ary meaning and was not open to 
 plainanl;s were the successors of the the use of defendants, and these 
 original manufacturer of Siegert's rights were not lost by the removal. 
 "Angostura Bitters," with which the *« Dunbar v. Gkrm, 42 Wis. 118-35- 
 name "Angostura" had long been 1877. For seven years, plaintiffs 
 identified; this name was that of a owned a mineral spring in village 
 city in Venezuela where the bitters of Waukesha, generally called the 
 were first made, though the factory "Bethesda Mineral Spring," and sold 
 had long since been transferred to its waters widely over the country. 
 Trinidad. Defendants made bitters Defendants began to sell "Glenn- 
 of a similar kind at Baltimore and Bethesda Mineral Water" and pub- 
 sold them as "Angostura Bitters," lished circulars giving misleading facts 
 imitating at the same time complain- as to ownership of the Bethesda 
 ants' bottles and labels, but correctly Spring. Defendants claimed to own 
 stating in the labels and circulars spring 1,200 feet from plaintiffs' spring 
 their own name and the place of - with water identical with that of 
 manufacture. Held, that the word plaintiffs' spring in all respects. Held, 
 
218 
 
 Geographical Names 
 
 In Canada, in a case where there was no misrepresentation, a 
 case of this sort was distinguished from the Stone Ale case, be- 
 cause the water was not a manufactured product, but a product 
 of the soil, and the name used applied to a locality in which both 
 springs were located and the defendant was entitled to indicate 
 in his name the source of his natural product.^" But in an 
 American case," the use of the name "Clysmic" for a spring was 
 
 it is the rule that the owner of a trade- 
 mark has a right to protection in the 
 sole use of it. Citing Coats v. Hol- 
 brook, Nelson & Co., 2 Sandf. Ch. 
 (N. Y.) 586-1845; Congress and 
 Empire Spring Co. v. High Bock 
 Congress Spring Co., 45 N. Y. 291- 
 1871. 
 
 ^0 Grand Hotel Co. v. Wilson, 21 
 R. P. C. 117-1903. Plaintiffs owned 
 springs in township of Caledonia, 
 Ontario, which spring watCT they 
 sold as " Caledonia Water," etc. One 
 defendant bored on land belonging to 
 another of the defendants, adjoining 
 land of plaintiffs, and got water 
 similar to plaintiff's and began to sell 
 it as "Natural Saline Water from the 
 New Springs at Caledonia." Held by 
 the Privy Council that there had been 
 no imitation of get-up or marks, and 
 defendant was entitled to indicate the 
 local source of the waters sold by 
 him and had adequately distinguished 
 their product from that of plaintiffs. 
 Court made the point that waters 
 were not manufactured goods (hence 
 the Stone Ale case did not apply), that 
 the waters got their properties from 
 the soil of that locality. It was shown 
 also, that the word "Caledonia" ap- 
 plied not only to plaintiffs' spring, but 
 also to a spring two miles away, called 
 the D Spring. The court admitted 
 defendants' water was likely to be 
 more profitable because of situation 
 of springs of defendant and that the 
 defendant was entitled to any profit 
 
 that might come from that fact in this 
 instance, but held that defendants 
 were not proved to have sold water 
 as " Caledonia Water" and that the 
 use of words "New Springs" by de- 
 fendants distinguished their goods 
 from plaintiffs'. 
 
 "ffiZZ v. Lockwood, 32 Fed. 389- 
 1887 (C. C. E. D. Wis.). Plaintiff 
 purchased a spring of mineral water, 
 known as the "Clysmic Spring." 
 Defendant was then selling agent for 
 a certain territory; he had advertised 
 and developed the spring, and given 
 it its name. Plaintiff, then, by con- 
 tract, gave defendant the exclusive 
 right to sell the water for twenty 
 years. By defendant's efforts, the 
 water became widely known as "Clys- 
 mic Water." Afterward, the con- 
 tract being still in force, defendant 
 purchased land adjoining plaintiff's 
 and opened a spring there, the water 
 of which he sold as "Clysmic Water." 
 The name "Clysmic" had never been 
 used in the locaUty except with 
 reference to plaintiff's spring, and, 
 that defendant had no right to sell 
 other waters under the same name, in 
 competition with those of plaintiff's 
 spring. Manhattan Medicine Co. v. 
 Woods, 108 U. S. 218; Alaska Pack- 
 ers' Assn. V. Alaska Imp. Co., 60 Fed. 
 103; Sherwood v. Andrews, 5 Am. L. R. 
 N. S. 588; Hegermm v. Heg«rmn, 8 
 Daly (N. Y.), 1; A. B. Wriskij Co. v. 
 ■ Iowa Soap Co., 104 Fed. 548; Stachelr 
 berg v. Ponce, 23 Fed. 430; Hazard v. 
 
Names Indicating Process of Manufacture 219 
 
 enjoined where the name was one which had never been used in 
 the locaUty where the springs were, except by the plaintiffs. In 
 other words, if the name is given to a spring by one person, an- 
 other may not use it although the latter's water comes from the 
 same locality but is not put on the market until after the name 
 had been appUed to the place by the plaintiff. 
 
 § 111. Geographical Names Which Indicate a Process of 
 Manufacture. — Again, geographical names may indicate that the 
 goods so named are made by a particular process, or in a manner 
 pecuhar to a particular place. A. has long made a certain prod- 
 uct at X. in a manner peculiarly his own, which is not patented. 
 That fact is one widely known, and it comes about that any of 
 that product bearing the name X. will be taken to have been 
 made by him. "Stone Ale" which was made in the town of 
 Stone in England, and "Worcester China" which has for years 
 been made at Worcester, England, by a few firms in a particular 
 way, are illustrations of such names. For a stranger to make ale 
 or china under these names in these places or elsewhere could not 
 but create confusion. 
 
 There is a distinction between a geographic name which has 
 become synonymous with the plaintiff's name by association and 
 a name which has become synonymous with some process in the 
 abstract. The distinction is necessary because a name merely 
 synonymous with the plaintiff's goods may be protected by equity 
 for the sole benefit of the plaintiff; but one which has become the 
 name of a process has become an abstract word which all may 
 use. This distinction is shown in the case of Anheuser-Busch 
 Brewing Assn. v. Fred Miller Brewing Co.^^ Complainants' pred- 
 ecessor had long sold a beer of special quality, known as "Bud- 
 weiser" beer, because originally made of imported materials 
 similar to those used in a brewery at Budweis, in Bohemia, and 
 by the same process there employed. Defendant subsequently 
 put on the market a brand of beer described as "Budweiser." 
 There was no simulation in labels or dress. Held, that while 
 there could be no exclusive right in the geographical name "Bud- 
 
 Caswell, 93 N. Y. 259; Dixon Crucible (Pa.) 42; Frazier v. Bowling, 18 Ky. 
 
 Co. V. Guggenheim, 2 Brewst. (Pa.) L. R. 1109. 
 
 321; Jennings v. Johnson, 37 Fed. ^^ 87 Fed. 864, Circ. Ct. E. D. Wis. 
 
 364; Feder v. Bmkert, 70 Fed. 613; 1898. 
 
 Fulton V. Seller & Co., 4 Brewst. 
 
220 Geographical Names 
 
 weiser," as a trade-mark, and while defendant might be entitled 
 to use the name if it truly denoted the process by which it was 
 brewed, yet, under the evidence, it appeared that .the name had 
 been arbitrarily adopted by defendant, being in no way descrip- 
 tive of the process, and that it had been adopted for the purpose 
 of taking advantage of the reputation of complainants' beer and 
 that its use therefore constituted unfair competition. 
 
 Similarly, the name of the town of Worcester, England, re- 
 ferred to above, has become associated with the china industry. 
 It has been held that the owner of the china factories there had 
 the right to enjoin a rival from using the name for china which 
 he manufactiired in or near Worcester. The name had been used 
 as a name of the product of three mills for 115 years. That fact 
 gives to the owners of these mills the right to say that Worcester 
 china means only china made by them. On the other hand, 
 Worcestershire sauce means sauce made by a particular process 
 not associated with one person only, but with a place, and indi- 
 cates that the sauce bearing the name is the kind originally made 
 in Worcestershire by some one, the identity of the maker having 
 been lost, or at any rate disregarded.^^ 
 
 "Lea V. DeaMn, Fed. Cas. 8,154- near Worcester making Worcester 
 1879. Plaintiffs had long made Wor- ware. From 1840 to 1889, there were 
 cestershire sauce in Worcestershire, two china makers near Worcester 
 England. Defendant lived in Wiscon- making Worcester ware. These houses 
 sin and got from England "Improved were independent and enjoyed a 
 Worcestershire Sauce" made in Lon- large reputation. The name "Wor- 
 don and put it on the market. Held, cester" apphed to china has a second- 
 Worcestershire sauce had been long ary meaning relating to china and has 
 known in market and is now a generic had such meaning for more than 100 
 name, applied to that species of sauce, years, aside from its geographical 
 It cannot be claimed by the plaintiffs sense, so the court here held, and never 
 simply because they live in Worcester- has represented the china of more than 
 shire and they cannot have sole right three contemporaneous firms, ajl of 
 to use of that term for that species of which are now united in the plaintiff 
 sauce. by succession or otherwise. The plain- 
 
 Worcester Royal Porcelain Co. tiff claimed that Locke left their 
 
 V. Locke & Co., 19 R. P. C. 479- employ and, in 1896, began to make 
 
 1902. In 1751, Worcester Porcelain "Worcester China" which his adver- 
 
 was first made in Worcester, Eng- tisements stated was "Manufactured 
 
 land. From 1786 to 1801, there were by E. Locke & Co., Shrub Hill Works, 
 
 two china makers near Worcester Worcester," and that he made other 
 
 making Worcester ware. From 1801 goods marked only with word "Wor- 
 
 to 1840 there were three china makers cester." Held, injunction should issue 
 
Names Indicating Process of Manufacture 221 
 
 In Birmingham Vinegar Brewery Co. v. Powell,^^ "Yorkshire 
 Relish" had been made by plaintiffs from a secret receipt, during 
 many years, and the name had come to mean sauce made by the 
 plaintiff by their own receipt. Defendants did not discover 
 it but approximated it, and put out their product under the 
 same name, in a similar bottle with a similar label. Proof 
 existed of actual deception of purchasers. It was held that, as 
 plaintiffs had used the name for thirty years, and it was the name 
 of a particular sauce, if anyone sold "Yorkshire Relish " he thereby 
 alleged that he sold the particular sauce of the plaintiffs. That 
 was passing off goods as the goods of another, for, since the recipe 
 for plaintiffs' sauce had not been discovered, the two sauces could 
 not be the same. The defendants thus were using a name to 
 misrepresent their goods to be made by the same process as that 
 used by the plaintiffs, which was untrue. 
 
 "Whitstable Oysters" was found by the English court to mean 
 a peculiar class of oysters fattened by the process used near 
 Whitstable, and that all oysters of this name had an appearance 
 peculiar to themselves. It was decided that, unless the term 
 meant that all Whitstable oysters came from the plaintiff's beds 
 at that place, no injunction could issue. But as it meant oysters 
 of a certain kind, the defendant might use it on oysters answering 
 these requirements.'^ 
 
 restraining from using name "Wor- George III and was sole owner of the 
 
 cester" on china "without clearly dis- marine manor and royalty of Whit- 
 
 tinguishing such goods from the goods stable & Oyster Fishery thereon, and 
 
 of the plaintiffs" (p. 490). This ruling claimed especial qualities for their 
 
 was made despite the fact that no oysters. Defendants began to offer 
 
 actual deception was proven. Held, for sale oysters not plaintiff's, as 
 
 also, that the plaintiffs were not dis- "Whitstables &c. Imperials" which 
 
 entitled to relief because other firms latter was a name used by plaintiff 
 
 had made "Worcester" china in the to designate oysters imported by 
 
 past at Worcester or because they had plaintiff and fattened at Whitstable. 
 
 described some of their goods as Plaintiff had permitted persons pur- 
 
 "Royal Worcester" and others as chasing oysters from them to sell them 
 
 "Graingers Worcester China." as Whitstable oysters with the addi- 
 
 " App. Cas. 1897-710, 66 L.' J. tion of the seller's name. A company 
 
 (Ch.) N. S. 763-1897, House of called Sea Salter Co. with beds near 
 
 LQj.jg_ those of plaintiff had also used the 
 
 " Whitstabk Oyster Fishing Co. v. name for a long period. The defend- 
 
 Hayling Fisheries, 18 R. P. C. 434- ants had used term- Whitstable only 
 
 1901. Plaintiff was incorporated by on oysters bought from plaintiff but 
 
222 Geographical Names 
 
 The Chancellor of Oxford University had long made bibles in 
 a certain style which were called "Oxford Bibles." A printing 
 house began to sell "Oxford Bibles," although it was not con- 
 nected with Oxford in any way. It was held that the defendants 
 did not show that the bibles had become so associated with the 
 name that "Oxford" had come to be the abstract name of that 
 kind of a bible, but that the defendants' use of the name passed 
 off its goods as those of the plaintiff — the name was sufficiently 
 associated with the plaintiff for this.^^ 
 
 A person who puts on the market goods purporting to be 
 made by an unpatented process but are not so made, is doing a 
 wrong. Perhaps he cannot under all circumstance be sued by 
 one who also is making goods by this process, as the latter has 
 no special right to the process in question. Such a case is to be 
 carefully distinguished from one which concerns a process in which 
 some one dealer has acquired rights by the association in the 
 minds of the public of the name, not with the process, but with him 
 personally. Such association gives him rights ample to secure 
 standing in equity to sue. In considering apparent violations 
 of rights in place names which indicate process this distinction 
 is to be kept in mind. 
 
 Certain millers in Minneapolis, Minnesota, and their pred- 
 ecessors in business have for thirty years made flour by the 
 roller process, and used as brands the words "Minneapolis," 
 "MinneapoUs, Minnesota," "Minnesota," "Minnesota Patent." 
 The words "Minnesota" or "Minnesota Patent" mean that 
 the flour is made under the roller patent process somewhere in 
 Minnesota. These words signify to the trade that the flour was 
 made at a Minneapolis flouring mill. A dealer in Chicago, 111., 
 obtains from mills at Milwaukee, Wis., an inferior grade of flour, 
 which he labels "Best Minnesota Patent, Minneapolis, Minn.," 
 and advertises it as made at Minneapolis, Minn., with the result 
 
 now claimed right to use name on other answering this description were pro- 
 oysters. Held it was found below, that duced by defendants and might be 
 the term Whitstable meant a peculiar called Whitstable; that the plaintiff 
 class of oyster which must answer the had not established that the public 
 requirements of the trade as to ap- understood Whitstable oysters were 
 pearance and also that it was a geo- oysters from their beds and no other, 
 graphical term in the sense that it ^ Chancellor, etc., University of Ox- 
 must have a connection, more or ford v. Wilmore-Andrews Pub. Co., 101 
 less, with Whitstable; that oysters -Fed. 443-1900 (C. Ct. S. D. N. Y.). 
 
Geographic Names Akbitraeily Adopted 223 
 
 that the pubUc is deceived into buying this flour under the behef 
 that it is made in Minneapohs, and is defrauded, and the business 
 of the Minneapolis millers is damaged. Held, that a court of 
 equity may grant relief by prohibiting the fraud and preventing 
 damage to the business of the Minneapohs millers. ^'^ 
 
 Complainant was a well-known maker of watches at Elgin. 
 Defendants, wholesale dealers in jewelry and watches, doing 
 business in Iowa, adopted the name "Elgin Jewelry Company" 
 and stated Elgin to be their place of business. They rented a 
 small room at Elgin and had a clerk there who merely received 
 and answered or forwarded correspondence. There were also 
 actual misrepresentations by salesmen. Held unfair compe- 
 tition.^^ 
 
 § 112. Geographic Names May be Arbitrarily Adopted as 
 Trade Names. — The uses of geographical names so far noticed 
 arise naturally from association of goods and places. There 
 is also an arbitrary use of geographical names. By this term 
 is meant attaching to goods a geographical name which has 
 utterly no connection or association with the goods, as for 
 instance the use of the name "Vienna Bread" by Fleischmann, 
 a baker in New York. "Boston Stores" and "New York Stores" 
 are found in many cities outside of Boston and New York. These 
 names are used arbitrarily, when the shops to which they are 
 appHed have no connection with the city for which they are 
 named. This does not mean, however, that the shopkeeper is 
 to be held to have misrepresented his business by using them. 
 It is not fraudulent misrepresentation to call a store in Baltimore, 
 a 'Boston Store." It is merely an arbitrary use of the geo- 
 graphical name Boston. 
 
 Because Fleischmann lived in New York, instead of Vienna, 
 was no reason for prohibiting him from using "Vienna," as a 
 name of his particular kind of bread. No one was deceived by 
 his so using the word, because everyone knows the bread is made 
 here; but were it a fact that fresh bread could be imported from 
 Vienna and sold in New York, it would then be unfair trade for 
 him to sell bread made in New York, in competition with the 
 
 " PilMmry-Washhurn Flow Mills 41 L. R. A. 162, reversing 82 Fed. 816- 
 Co., Ltd., et al. v. Eagle (C. C. A. 1897. 
 
 7th Cir., April 5, 1898), 86 Fed. 608; ^s Elgin Nat. Watch Co. v. Love- 
 land, 132 Fed. 41-1904 (C. C. la.). 
 
224 
 
 Geogeaphical Names 
 
 bread imported from Vienna under the name "Vienna Bread." 
 In the first instance the name is used arbitrarily, in the latter 
 descriptively.^^ "To say that a geographical name can never 
 be used in a proprietary right as a trade-mark states the rule 
 far too broadly. * * * Had he (the plaintiff) called his 
 establishment the 'Chimborazo Dental Rooms' no intelligent 
 person would be Ukely to associate the designation with a moun- 
 tain in South America. * * * We think the petition shows 
 a proprietary right in the title, 'New York,' as descriptive of 
 his professional abode." ^ Such a name is used not to indicate 
 a particular locaUty connected with a business, but as a fancy 
 designation, to distinguish the factory or business or the persons 
 engaged in it from all others identified with the same sort of 
 business. It is not to be imderstood from a name so used that 
 the business is done in the city or state bearing the name used 
 or that either of those geographical divisions is in any way con- 
 nected with it. It would show at most only how the proprietor 
 
 " Fleischmann v. Sckuckmann, 62 
 How. Pr. 92-1881. Plaintiff made 
 bread under name "Fleischmann, 
 Vienna Model Bakery, Broadway & 
 Tenth Street, New York, New York, 
 Patent appUed for." Later defend- 
 ant sold loaves of bread similar in 
 form to plaintiff's with label Schuck- 
 mann's Genuine Vienna Bakery, 154 
 E. 54th Street, New York. At Cen- 
 tennial in 1876, G. F. & Co., under 
 management of plaintiffs, first used 
 word "Vienna" for baked bread. At 
 close of Centennial plaintiif pur- 
 chased right to use this word. Held, 
 Vienna bread was different from other 
 kinds. Defendant's label is similar 
 to plaintiff's and an imitation of it. 
 No complaint is made of quality of 
 defendant's bread, but this is not 
 material. Plaintiff is an Austrian 
 from Vienna, living here. He had a 
 right to call his bread, by way of dis- 
 tinction, Vienna bread. No deception 
 is practiced as everyone knows the 
 bread is made here, citing "Bismark 
 
 colla,rs" (Messerok v. Tynberg, 4 Abb. 
 Pr. N. S. 410-1868). 
 
 ™ Sanders v. Utt, 16 Mo. App. 322- 
 1884. Plaintiff was a dentist in St. 
 Louis, who had for twelve years put 
 over the entrance to his oflBce the 
 words, "New York Dental Kooms." 
 The defendant carried on business 
 about nine blocks from the plaintiff, 
 and adopted a sign similar in ap- 
 pearance to that of the plaintiff, bear- 
 ing the words "New York Steam Den- 
 tal Company." In other ways also he 
 employed the same words in adver- 
 tising his business. Held that, strictly 
 speaking, this is not a controversy 
 about a trade-mark, but rather con- 
 cerning the good-will of the plaintiff's 
 business. "To say that a geographical 
 name can never be used in proprietary 
 right as a trade-mark states the rule 
 far too broadly. When such a name 
 is employed in connection with the 
 place of manufacture or proQuction, 
 no person manufacturing or producing 
 at that place can monopolize it against 
 
Geographic Names Arbitrarily Adopted 
 
 225 
 
 had found a fancy name to distinguish his place of business from 
 others of Uke character.^ 
 
 other persons manufacturing or pro- 
 ducing at the same place" (p. 325). 
 Citing Brooklyn White Lead Co. v. 
 Masury, 25 Barb. 416-1857; Neuman 
 V. Alvord, 49 Barb. 588-1867. 
 
 '»" Phenix Cheese Co. v. Samuel Kirp 
 and Morris Pearl, App. Div. (N. Y., 
 First Department) March, 1917. 
 Plaintiff was a manufacturer of cheese 
 in New York, and had sold his product 
 for over 35 years under the name 
 "Philadelphia Cream Cheese, when 
 the defendant began the manufacture 
 and sale of cheese under the name 
 "Pennsylvania Cream Cheese." De- 
 fendants' product was not manufac- 
 tured in Pennsylvania. Held, that the 
 plaintiff was entitled to a preliminary 
 injunction restraining the defendant 
 from using the name. The Court 
 said — 
 
 "Even if the word 'Pennsylvania' 
 was simply a name that occurred to 
 one of the defendants, as his affidavit 
 states, the defendants were acting 
 entirely in good faith, and had no in- 
 tent to deceive the purchasing public, 
 the fact remains that defendant's 
 label and their use of the word 'Penn- 
 sylvania' would probably mislead the 
 average purchaser, and plaintiff is 
 entitled to have it restrained." 
 
 Phenix Cheese Co. v. Kennedy et al., 
 District Court of the United States for 
 the Eastern District of Pennsylvania, 
 May 18, 1915. Action for unfair 
 competition. The defendants used 
 the word "Philadelphia" in connec- 
 tion with cream cheese made in Phil- 
 adelphia, and sold the same in viola^ 
 tion of the plaintiff's exclusive right 
 to the use of that name. The plaintiff 
 and his predecessors since 1880 had 
 sold cream cheese, manufactured in 
 
 New York, under the name "Phil- 
 adelphia Cream Cheese." The de- 
 fendants, who had been cheese dealers 
 in Philadelphia for many years, in 1907 
 adopted the word "Philadelphia" in 
 connection with the sale of their 
 cheese. The court held the plaintiff 
 entitled to an injunction, saying: 
 
 "The geographical name 'Phil-, 
 adelphia' having no peculiar signif- 
 icance attached to it by the superior 
 quahty of Cream Cheese derived from 
 Philadelphia territory has become a 
 name indicative of the cheese made by 
 the plaintiff, and its use antedates any 
 use of the word 'Philadelphia' by the 
 defendants upon their labels. If the 
 word 'Philadelphia' had been con- 
 nected in the trade with the defend- 
 ants' output, or with any peculiar 
 style of quality of cheese made in or 
 about Philadelphia, the plaintiff would 
 not be allowed to adopt the name in 
 prejudice of the right of the defendants 
 to designate by geographical designa- 
 tion the locaUty in which their product 
 is produced, but such is not the case 
 here. Whether or not the defendants' 
 intent has been to obtain an unfair 
 and fraudulent share of the plaintiff's 
 business, the effect of its action is such 
 as to produce confusion in the minds 
 of the pubUc and the trade and con- 
 sequent loss to the plaintiff, against 
 which it should be protected in 
 equity." 
 
 Phenix Cheese Company v. Cleveland 
 Cream Cheese Company, Circuit Court 
 of the United States, Northern Dis- 
 trict of Ohio, Eastern Division, Feb- 
 ruary 4, 1910. AppUcation by com- 
 plainant for a temporary injunction 
 restraining the defendants from using 
 the name "Philadelphia" in connec- 
 
226 Geographical Names 
 
 § 113. Use. of Geographic Names as Trade-Marks must be 
 Truthful. — Place names are governed by the same rules as other 
 trade names. Care must be taken to prevent fraud and deceit 
 arising from the fact that they have a meaning usually far better 
 known and understood than that which they have acquired 
 from association with the goods of some individual. The ques- 
 tion is not so much what is the exact character of the rights one 
 acquires in a name so used, but rather is he using it in a deceptive, 
 misleading wayj so as to attract trade away from another user of 
 the name. In Van Horn, Ltd., v. Coogan,^^ Amos Van Horn and 
 his company sold the "Portland" cook stove which was made 
 for him alone and sold only by him, and became well known in 
 and near Newark, N. J., under that name. Defendant was a 
 rival of complainant with a store a few doors away. The defend- 
 ant began to sell a stove which had been known as "Columbian 
 Dandy" as the "Portland." It was a similar stove to the " Port- 
 land " stove of plaintiff. Defendant undersold complainant and 
 put out a sign reading "Famous Portland," "Famous Portland 
 Range, reduced, has no equal." It was held that the question 
 was not "Whether the complainant has a property in the name 
 by which his goods are distinguished in the market, but * * * 
 has the defendant a right to use the name by which the com- 
 plainant's goods are known, for the purposes of deception, and 
 
 tion with cream cheese manufactured cheese or the expression ' Philadelphia 
 
 by the defendants. Complainants for Cream Cheese,' notwithstanding the 
 
 about 30 years were the exclusive facts as I have just stated; and the 
 
 manufacturers of cream cheese labeled position is taken on the authority of 
 
 "Philadelphia Cream Cheese." that Une of cases which hold that a 
 
 The court said in granting a tern- mere geographical name or word is 
 
 porary injunction — not the subject of a trade-mark. That 
 
 "The name 'Philadelphia' as ap- is true in a narrow sense, but the 
 
 plied to cream cheese, was selected Supreme Court of the United States, 
 
 arbitrarily some thirty y^ars ago, in the case of Elgin National Watch 
 
 solely for the purpose of distinguishing Co. v. Illinois Watch Co., 179 U. S. 
 
 select cheese made by the person who 665, and French Republic v. Saratoga 
 
 selected that name from cream cheese Vichy Spring Co., 191 U. S. 427, as 
 
 made by other manufacturers, and well as by other decisions, has, as it 
 
 so the name has continually been used seems to me, laid down the rule which 
 
 ever since. * * * establishes the right of the complain- 
 
 "The defendants assert that they ant, on the papers before me, to the 
 
 have a right to use the inscription relief which it seeks." 
 'Philadelphia,' as applied to cream " 52 N.J. Eq. 380-1894; 28 Atl. 788. 
 
Use of Names Must Be Truthful 
 
 227 
 
 in order to attract to himself that custom which, without the 
 improper use of such name, would have flowed to the complain- 
 ant? And the answer to the inquiry is that the defendant has 
 no such right." ^^ 
 The use of a geographical name in this arbitrary way spoken 
 
 «2 Citing Coats v. Merrick Thread under the name of "Philadelphia 
 Co., 149 U. S. 562-1893; 37 L. ed. 
 847; 13 Sup. Ct. 966; Lawrence Mfg. 
 Co. V. Tennessee Mfg. Co., 138 U. S. 
 537-1891; 34 L. ed. 997; 11 Sup. Ct. 
 396; Putnam Nail Co. v. Bennett, 43 
 Fed. 800-1890. See also Re Green, 8 
 Pat. Off. Gaz. 729-1875; "German 
 Sirup" made in United States; Re 
 Cornwall, 12 Pat. Off. Gaz. 312-1877; 
 "Dublin" soap made in United States; 
 Hirst V. Denham, L. R. 14 Eq. Cas. 
 542-1872; "Liverpool" hair cloth 
 made at Huddersfield. Weyman v. 
 Soderberg, 108 Fed. 63-1901 (Circ. Ct. 
 W. D. Wis.). Complainant, a Pitts- 
 burg manufacturer of snuff, used 
 name "Copenhagen" as a trade-mark, 
 not to indicate that it was imported, 
 but to, attract Scandiaavian trade. 
 Defendants, retail dealers, sold snuff, 
 made in Chicago, and put up in jars 
 labeled "Kjobenhavn Snus." There 
 were marked differences between the 
 jars and labels of the two parties. 
 Held, no unfair competition. Col- 
 gate V. Adams, 88 Fed. 899-1898 (C. 
 C. N. D. III.). Complainants had 
 long made and sold a well-known 
 toilet soap called "Cashmere Bou- 
 quet," and generally designated in 
 the trade as "Cashmere Soap."- De- 
 fendants then put on the market a 
 soap stamped "Cashmere" and desig- 
 nated upon the boxes "Violets of 
 Cashmere." Held, unfair competition. 
 
 International Cheese Co. v. Phenix 
 Cheese Co., 118 App. Div. (N. Y.) 499- 
 1907; 103 N. Y. Supp. 362 (3d Dep't). 
 Defendant and its predecessors had 
 since 1880 made and sold cream cheese 
 
 name 
 
 Cream Cheese" although the cheese 
 does not appear to have been made at 
 Philadelphia, nor to have differed in 
 composition from cream cheese of 
 other brands. No other manufactu- 
 rers, except two or three who had 
 been compelled to abandon its use, 
 had used this name, but in trade 
 journals and restaurant biUs of fare the 
 term "Philadelphia Cream Cheese" 
 was often applied to cream cheese in 
 general. Plaintiff then began to sell 
 part of its product as "Philadelphia 
 Cream Cheese." Held, that defendant 
 was exclusively entitled to use this 
 trade name; also, that the right so to 
 use the name was unaffected by the 
 fact that a distinctive trade-mark was 
 applied by defendant to all its prod- 
 ucts, including this brand of cheese. 
 
 See also Phenix Cheese Co. v. Kirh, 
 App. Div. (N. Y.) March, 1917; Phe- 
 nix Cheese Co. v. Cleveland Cream 
 Cheese Co., U. S. Cu-. Ct. (Northern 
 Dist. of Ohio, Eastern Div.) Febru- 
 ary 4, 1910; Phenix Cheese Co. v. Ken- 
 nedy et al., U. S. Dist. Ct. (Eastern 
 Dist. of Penn'a) May 18, 1915. It was 
 contended in Amoskeag Mfg. Co. v. 
 Garner, 54 How. Pr. 297-1876, that 
 the plaintiff's claim was a monopoly 
 of the word "Amoskeag," which was 
 a geographical, name. Defendant ap- 
 plied the word in a way to injure the 
 reputation of the plaintiff's highest 
 class goods to which alone it was 
 applied by them. The defendant was 
 enjoined from the use of it on goods 
 inferior to those on which plaintiff 
 used the word. 
 
228 Geographical Names 
 
 of above, as in the case of the Boston Store in Baltimore, is usu- 
 ally allowed without restriction; but it may not be used in Boston 
 in such a way as to injure any business there. One who made 
 "Chicago Waists" elsewhere than in Chicago, and so injured the 
 business of the plaintiff who was making "Chicago Waists" in 
 Chicago, was enjoined. Those in a certain section, interested in 
 an industry located there, and no others, are entitled to the use 
 of the name of the locality, if its use by persons outside that sec- 
 tion actually does injure the trade of those Uving in the section 
 or will tend to injure it.^^ 
 
 § 114. Geographical Names Which Indicate Quality as 
 well as origin or source. — Names like "Sea Island Cotton," 
 "Hungarian Grass," "California Sherry," "Connecticut To- 
 bacco," "Kentucky Hemp" or "Virginia Tobacco "denote the qual- 
 ity of the products more or less accxu-ately. This may also be true 
 of a manufactured article. Again where a manufactiu:er has given 
 an article a geographical name, which he was the first to use in con- 
 nection with it, it may, from long use in such connection, acquire 
 a secondary meaning, p,nd come to mean, not the place where it 
 is made but an article made according to his method, or 
 that it possesses some particular quality or character. In 
 Metcalfe v. Brand,^^ it was shown that in 1810, B. made mustard 
 at Lexington which became commonly known as "Lexington 
 Mustard." In 1841, B.'s wife succeeded to the business and then 
 sold it to her son McC. who changed the label to "Burrowe's 
 Mustard, Lexington, Ky." In 1869, he sold to Yates & Dudley, 
 who used label "Yates & Dudley, successors to S. D, McCuIlough, 
 sole manufacturers of Burrowe's Mustard, Lexington, Ky." In 
 July, 1877, they sold to John H. Brand. In August, 1877, Brand 
 moved business to Louisville, Ky. In 1873, Metcalfe began to 
 make mustard at Lexington, and in 1877 he copied the can and 
 label of Brand and moved into building vacated by him. An in- 
 junction was granted against the use of the name "Lexington," 
 
 "' Gage-Downs Co. v. Feaiherbone another who makes similar waists in 
 
 Corset Co., 83 Fed. 213-1897 (Head- a different state and city, and sells 
 
 note). "One making corset waists them as 'Chicago Waists' with the 
 
 at Chicago, and selling them as manifest intent of availing himself 
 
 'Chicago Waists,' so that this desig- of the reputation acquired by the 
 
 nation has come to denote among other's goods." 
 purchasers the goods made by him, '^8Q Ky. 331-1887; 5 S. W. 773. 
 is entitled to an injunction against 
 
Names Which Indicate Quality 229 
 
 because that name had come to mean the mustard made by the 
 process long used by the original maker. It had acquired a rep- 
 utation, and it was doubtless a reputation based on quality and 
 not on its historic connection with the original maker. 
 
 Most of the cases already mentioned — referring to geograph- 
 ical names which have become associated with some manufac- 
 tiu-er or plant, and which, through this association, are now 
 synon3Tnous with the names of these persons or factories — have 
 come to stand for some quality or grade of goods. In a sense, 
 therefore, all cases of secondary use of geographical names deal 
 with quality. The rule still in force in such cases was laid down 
 in 1872 in Newman v. Alwrd.^^ The plaintiffs used the word 
 "Akron" in designating a cement made by them near the village 
 of Akron, in Erie county. State of New York. This word had 
 been used by the plaintiflfs and their predecessors in business about 
 thirteen years, to designate the original quality of their cement. 
 The defendants, who manufactured cement in Onondaga county, 
 near Syracuse, knowing that the plaintiffs had for years used the 
 word "Akron" as a trade-mark to designate the origin and place 
 of manufacturing their cement, called their product "Akron Ce- 
 ment." The plaintiffs' barrels were labeled as follows: "New- 
 man's Akron Cement Co., manufactured at Akron, N. Y. The 
 hydraulic cement known as the Akron Water Lime." The de- 
 fendants labeled their barrels: 'Alvord's Onondoga Akron Ce- 
 ment or Water Lime, manufactured at Syracuse, N. Y." They 
 placed the word "Akron" upon their label for precisely the same 
 reason that the defendant in the flour case *' placed the words 
 "Minnesota Patent, Minneapolis, Minn.," upon his flour sacks 
 and barrels, to increase their sales, and avail themselves of the 
 reputation acquired by plaintiffs' cement. "The label," said 
 Earl, C, "was calculated to induce ordinary buyers to believe 
 that they were purchasing either plaintiffs' cement, or cement of 
 the same kind and value." The sole question to be determined 
 was held to be whether the plaintiffs, who were the only persons 
 engaged in manufacturing and selling the real Akron Cement, 
 which was known and had a reputation in the market as such, 
 could be protected in the use of the word "Akron" against the 
 defendants, who used it to defraud the plaintiffs and deceive the 
 
 «6 51 N. Y. 189. Co. V. Eagle, 86 Fed. 608-1898; infra, 
 
 ™ PUlsbury-Washburn Flour Mills 41 L. R. A. 608. 
 
230 Geographical Names 
 
 public. The plaintiffs had given a reputation to Akron ce- 
 ment in the market. They had always been its principal manu- 
 facturers and sellers, and, at the time of the commencement of the 
 suit, were the sole parties who could be injured by the fraudulent 
 use of the trade-mark by the defendants; and hence they were 
 clearly entitled to the protection which they sought.^^ 
 
 The name "Sea Island Cotton" means cotton of a certain grade 
 desirable for certain known purposes. If poor or low grade cotton 
 is marked and sold as "Sea Island" the reputation of the article 
 itself as well as the trade of dealers in it may suffer. It is in the 
 interest of honest commerce, honest branding of goods that all 
 such misrepresentation be stopped. The same may be said of 
 manufactured goods. It was held as to the owners of a brand of 
 ale called "The Bull Dog Bottling," ^^ that if a brand has any 
 reputation for quaUty its owner has a right to such protection as 
 will prevent that reputation from being injured by the sale of in- 
 ferior goods under that brand. 
 § 115. Secondary Meaning of Semi-Geographic Name. — 
 "Orient" has been held to be a geographical name within the 
 meaning of section 5, Trade-mark Act of 1905, which forbids 
 use of "merely a geographical name." *^ "Oriental;" ^^ "Con- 
 tinental;" ™ "International" '' have been held geographic names. 
 "Keystone," "Granite State," "Empu-e State," "Hoosier," 
 which are nicknames semi-geographical in meaning may, by 
 
 8=" Newman v. Alvord, 51 N. Y. 189. junction against the use of the ter- 
 
 ^'' Read Brothers v. Richardson & rier's head by defendant on bottles 
 
 Co., 45 L. T. N. S. 54-1881 (Ct. exported to the colonies. The rule 
 
 App.). Plaintiffs were bottlers of was applied that a rival trader should 
 
 ales and stouts for export. Their not be permitted to use a mark that 
 
 label bore a bull dog's head on a black would tend to give his goods the same 
 
 ground within a circular band on name in the market as those of his 
 
 which were the words "Read Broth- rival. 
 
 ers, London. The Bull Dog Bottling." « Re Crescent Typewriter Supply 
 
 Their goods were commonly called Co., 30 App. Cas. (D, C.) 324- 
 
 " Dog's Head" in the colonies. De- 1908. 
 
 fendants also bottled and exported "In re Hopkins, 29 App. Cas. 
 
 ales and stouts with a label bearing a (D. C.) 118-1907. 
 
 terrier's head on a black ground within '" Continental Ins. Co. v. Con- 
 
 a circular band the words on which tinental Fire Assn., 41 C. C A. 326; 
 
 were "Celebrated Terrier BottUng, 101 Fed. 255. 
 
 E. Richardson." Held, that plaintiffs " Koehler v. Sanders, 122 N. Y. 
 
 were entitled to a preliminary in- 65; 4 L. R. A. 576; 25 N. E. 235. 
 
Secondary Meaning of Semi-Geographic Names 231 
 
 usage, acquire a secondary meaning, as connected with a par- 
 ticular brand or make of goods; and when so used will be pro- 
 tected against use in a similar sense by rivals. It is not material 
 that, the plaintiff had no special right to use the name at the time 
 he adopted it.^^ 
 
 A steamship agent may acquire a secondary meaning in the 
 name he uses for a number of lines represented by him and this 
 against the owner of one of the lines.''^ Kekewich, J., in Wwm v. 
 
 '''^ Cohen v. NagU, 190 Mass. 4- 
 1906; 76 N. E. 276; 2 L. R. A. 964. 
 Cohen made "Keystone Cigars," be- 
 ginning in 1885, thinking it a name 
 never used before on cigars. He 
 built up a large trade in New Eng- 
 land — »160,000 per year. .Defend- 
 ant, in 1905, began to sell "Keystone 
 Maid" cigars. Confusion with plain- 
 tiff's goods resulted. Held: "The 
 trade and public in New England 
 have come to associate the word 
 'Keystone' with the plaintiff's cigars 
 and to recognize it as meaning his 
 cigars and not those of any other per- 
 son" (p. 7): and that, the fact that 
 word "Keystone" has been spasmod- 
 ically used on cigars did not defeat 
 plaintiff's right. (See form of de- 
 cree, pp. 12-13.) "The fact that the 
 word "Keystone" was a geographical 
 name and in common use as a cigar 
 label since 1870, prevented his (plain- 
 tiff) adopting it as his distinctive 
 mark for cigars of his manufacture. 
 It did not prevent those words from 
 acquiring in time a, secondary or trade 
 meaning, to wit, cigars made by the 
 plaintiff" (p. 18). 
 
 Julian V. Hoosier Drill Co., 78 
 Ind. 408-1881. A geographical nick- 
 name, such as "Hoosier," may be 
 applied to a specific article, such 
 as a grain drill, and an exclusive 
 right may be acquired to use it 
 as a trade-mark or trade name for 
 the article. "The thing, and the only 
 
 thing, that is material in case of a 
 trade name is this: Does that name in 
 the trade mean that goods to which 
 it is attached are goods of the plain- 
 tiff's manufacture? If it does, a case of 
 trade name is made out, although the 
 plaintiff had no right to adopt it as his 
 mark when he did adopt it as such, or 
 having been the first to adopt it, and 
 without regard to how many others 
 are then using it." Buzby v. Davis, 
 150 Fed. 275-1906 (C. C. A. 8th Cir.). 
 Complainant had for many years made 
 and sold at Philadelphia oils and 
 lubricants under the name "Keystone 
 Lubricating Company." The S3rmbol 
 of the keystone of an arch was placed 
 upon the packages as a trade-mark, 
 and the products were widely known 
 by the name "Keystone.'' Defend- 
 ants began to put upon the market 
 inferior oUs, placing upon the pack- 
 ages a similar keystone symbol, to- 
 gether with ffee trade name adopted 
 by them, "Keystone Oil Company," 
 with the result of misleading pur- 
 chasers. Held, on demurrer, that 
 even if "Keystone" were to be taken 
 as a geographical term, unfair com- 
 petition was shown. 
 
 ■'^Winsor v. Clyde, 9 Phila. 513- 
 1872 (Ct. Com. PI. Phila.) Plain- 
 tiffs were agents at Philadelphia for 
 several lines of steamers, but did not 
 own the vessels. They had long desig- 
 nated and long advertised most of 
 these hues of steamers as "Key- 
 
232 
 
 Geographical Names 
 
 Webster,^^ doubted if one could acquire a secondary meaning in 
 the name "White Hungarian Band," because the pubUc usually 
 knew the band by the name of the leader — or partially by that 
 name. 
 
 stone" lines. Held, that they had ac- 
 quired a proi)erty right in the use 
 of the name, which would be pro- 
 tected by injunction, as against the 
 owners of one of these lines, who, 
 after withdrawing it from the plain- 
 tiffs, advertised it as the "Keystone" 
 
 line. It appeared that this particular 
 line, while managed by plaintiffs, had 
 generally been known simply as the 
 "Philadelphia and Providence Line" 
 rather than by the name "Key- 
 stone." 
 " 21 R. P. C. 373. 
 
CHAPTER IX 
 
 Deess of Merchandise 
 
 Sechion 116. Labels which are not strictly trade-marks are protected. 
 
 1 17. Degree of similarity calculated to deceive. 
 
 118. Mere diversity of color not a controlling feature. 
 
 119. Imitation of a single feature such as color, form, etc. 
 
 120. A collocation of features which singly might be copied is unfair. 
 
 121. Resemblance in several features may be fair if these features 
 
 are conmion to the trade. 
 
 122. Remarks as to classification of the following cases of simulation 
 
 in dress or general get-up. 
 
 123. Designs, devices and figures. 
 
 124. Signatures and initials. 
 
 125. Reading matter on labels or circulars. 
 
 126. Misleading use of a label proper in itself. 
 
 127. Tobacco tags, and cigar bands, etc. 
 
 128. Wrappers, cartons, etc. 
 
 129. Copying bottles used by competitor. 
 
 130. Refilling containers that have been once used. 
 
 131. Substitution by selling of inferior goods in dress of goods of a 
 
 higher grade. 
 
 132. Get-up of wagons, buildings, etc. 
 
 133. Labels. 
 
 (a). Labels not registered or copyrighted are protected. 
 
 (b). Features of an action as to label. 
 
 (c). Kinds of labels. 
 
 (d). Classification of label cases. 
 
 I. Simulation of labels in which a name is the principal 
 
 feature. 
 II. Cases involving label in which the salient feature is a de- 
 vice or catchword, which is copied or simulated. 
 
 III. Cases in which there is no salient feature but the whole 
 
 get-up including the name is unfair. 
 
 IV. Cases involving a general resemblance and also a likeness 
 
 in the name used in which relief was denied. 
 V. Cases involving no similarity in name but a resemblance in 
 general appearance amounting to unfair competition. 
 VI. Cases not involving names, in which the general likeness 
 in get-up is not close enough to be unfair. 
 
 The growth of the doctrine of the law of unfair competition 
 can be clearly traced in studying cases relating to the general 
 
 233 
 
234 Dress of Merchandise 
 
 appearance of goods when placed on the market. As recently 
 as 1890, Mr. High, in his well-known book on Injunctions, said 
 (§1076): "There can be no trade-mark in the exterior form 
 or color of the article, and hence no injunction to protect the 
 plaintiff in the manufacture of an article of a peculiar form 
 or color. So a package or barrel cannot by reason of its pe- 
 culiar form, dimensions, or shape, independent of any symbol, 
 figure, or device impressed upon or connected with it, constitute 
 a trade-mark, and will not be protected by injunction." It is 
 true, as Mr. High states, that no trade-mark can be had in color, 
 form, dimension, or shape. It is no longer true that injunction 
 will never issue to protect a trader who has acquired a particular 
 interest or property in a color used in relation to his goods, or in 
 the size, shape, or form in which he puts them up. It has be- 
 come a recognized fact that severe loss to him and confusion on 
 the part of the public may arise because of the imitation of some 
 one or more of these features of goods, with or without the intent 
 to filch away the trade of the person who uses them. 
 
 § 116. Labels Which Are not Strictly Trade-marks Are 
 Protected. — It was once the tendency of courts to treat all labels 
 as technical trade-marks; but it has been found that many labels 
 do not meet the requirements usually mentioned in defining a 
 trade-mark, viz.: Must (1) point out the origin or ownership of 
 the article; (2) be affixed to a commercial article, and (3) be of 
 such a nature as to be capable of exclusive appropriation by one 
 person. Such labels are nevertheless under the protection of the 
 law of unfair competition, and the unscrupulous trader who seeks 
 to use them to the injury of their owner, will be enjoined. 
 
 There are vast numbers of labels in this category, and this 
 protection is as adequate in many ways as that which technical 
 trade-marks receive, although not entirely based on the same 
 principles. In Wirtz v. Eagle Bottling Co.,^ complainant bottled 
 beer and sold it at wholesale. He invented three labels which he 
 put upon his goods. These the defendant imitated. Said the 
 court: "His Uquors are known to the pubhc by these labels. 
 They are the sign or symbol by which his hquors are known in 
 the market. If we speak with accuracy, these labels cannot be 
 called trade-marks, but they serve substantially the same pur- 
 pose. They are the marks by which the complainant's goods 
 >50 N. J. Eq. 164-6-1802; 24 Atl. 658. 
 
Degree of Similarity Calculated to Deceive 235 
 
 are distinguished in the market from all like goods put upon the 
 market by other persons, and are, for that reason, according to 
 many decisions, just as much under the protection of the law as 
 are trade-marks. The law protects them for the same reasons 
 and in precisely the same way that it does trade-marks. The 
 leading principle of the law on this subject is, that no man shall 
 be permitted to sell his goods on the reputation which another 
 dealer has established in the market for his goods, and this prin- 
 ciple applies with equal force to the case where the goods of such 
 dealers are known in the market by a label, as it does to the case 
 where they are known by a mark which is strictly a trade-mark." 
 
 §117. Degree of Similarity Calculated to Deceive. — It is 
 hardly necessary to restate here the familiar rule, applicable to 
 trade-marks and all forms of competition, that the defendant's 
 mark may not only not be an exact copy of that of the plaintiff, 
 but that there may be many differences between the two labels or 
 forms of dress, and yet a deceptive resemblance may exist. 
 The question is, not whether the two articles are readily dis- 
 tinguishable when set side by side, but whether the general im- 
 pression made by defendant's article upon the eye of a casual 
 purchaser who is unsuspicious and off his guard, is such as to be 
 likely to result in his confounding it with the original article.^" 
 
 The rule as to what amounts to simulation in unfair competition 
 may be stated in the same language appUed to trade-marks gener- 
 ally in Amoskeag Mfg. Co. v. Spear. ^ " It is evident, however, that 
 in order to convey a false impression to the mind of the public as to 
 the true origin or manufacture of goods, it is not necessary that 
 the imitation of an original trade-mark shall be exact or perfect. 
 It may be limited and partial. It may embrace variations that 
 a comparison with the original would instantly disclose, yet a 
 
 i" "The question is whether the nat- had been copied, though defendants 
 
 ural and probable result of the use by themselves might not have known it 
 
 the defendants of its label will be the at first. For the facts of the case and 
 
 deception of the ordinary purchaser, for other points involved in it, see it 
 
 making his purchases under ordinary reported on appeal, as Straus v. 
 
 conditions." Notaseme Hosiery Co. Notaseme Co., 240 U. S. 179. The 
 
 V. Straus, 201 Fed. 99 (C. C. A. 2d U. S. Supreme Court sustained the 
 
 Cir.) finding the similarity in the injunction but not the recovery of 
 
 salient feature of a label for hosiery profits. 
 
 to be calculated to deceive, and to ^Sandf. (N. Y.) 599-06-1849. 
 make it probable that the earlier label 
 
236 Deess Of Merchandise 
 
 resemblance may still exist that was designed to mislead the 
 public, and the effect intended may have been produced; nor can 
 it be doubted that whenever this design is apparent, and this 
 effect has followed, an injunction may rightfully be issued, and 
 ought to be issued." See chapter on "Similarity." ^ 
 
 An injunction on ground of deceit from mere similarity of 
 appearance will not issue in doubtful eases and where there is 
 no real evidence of actual deceit having been caused.^ But the 
 circumstances and the probable intention of the defendant will 
 have weight. "When one is frankly putting out an imitation 
 one should be held very strictly to the requirement of distinguish- 
 ing one's goods from the original. Any doubt must be resolved 
 against the imitator." ^ 
 
 § 118. Mere Diversity of Color, not a Controlling Feature. — 
 A difference in the color of a label or wrapper may be unimportant 
 where there is close similarity in other respecte. Diversity of 
 color was held not to constitute sufficient differentiation in 
 Schmidt v. Brieg,' in which the court said: "In fact the only 
 material difference between the two labels in design and appear- 
 ance exists in the colors, but this is no defense. The difference 
 in color is a mere probative fact, a circumstance to be considered 
 by the court in determining the ultimate question as to whether 
 the defendant's devices so closely resembled the plaintiff's labels 
 as to deceive the public," and, naturally, little importance will be 
 
 ** It was said in Florence Mfg. Co. norant, the unthinking and the cred- 
 
 V. /. C. Doiad & Co., 178 Fed. 73: — ulous, who, in making purchases, do 
 
 "It is so easy for the honest business not stop to analyze, but are gov- 
 
 man, who wishes to sell his goods upon emed by appearances and general 
 
 their merits, to select from the entire impressions." 
 
 material universe, which is before * Samvd W. Rushmme v. Manhat- 
 
 him, symbols, marks and coverings tan Screw & Stamping Works (C. 
 
 which by no possibility can cause C. A. July, 1908), rating HaU Signal 
 
 confusion between his goods and Co. v. Railway SigruA Co., 153 Fed. 
 
 those of competitors, that the courts 907; Cleveland Foundry Co. v. SUr 
 
 look with suspicion upon one who, in ver, 134 Fed. 591; Hildreth v. Nor- 
 
 dressing his goods for the market, ton, 159 Fed. 428-1908 (C. C. A.) 
 approaches so near to his successful ^ Hiram Walker & Sons v. Gneb- 
 
 rival that the public may fail to dis- man, 224 Fed. 725-29 ("Canadian 
 
 tinguish between them. The law is Type" whiskey), 
 not made for the protection of ex- » 100 Cal. 672-81-1893; 35 Pac. 
 
 perts, but for the public — that vast 623; 22 L. R. A. 790. 
 multitude which includes the ig- 
 
Diversity of Color not Controlling Feature 237 
 
 attached to marked differences or even total dissimilarity in 
 parts of a package that are hidden or inconspicuous, as the 
 bottom, or perhaps the sides or ends, if at the same time there is a 
 close resemblance in the part most exposed to view, such as the 
 top of the package. 
 
 Defendant's top label for tobacco or cigarettes was of the sanae 
 size as plaintiff's, and had a similar hght, clouded background. 
 There was a general resemblance in the devices borne by the 
 labels; the lettering also as to size, color, arrangement, and gen- 
 eral effect was very similar on the two labels. Instead of the 
 words "Monopol Tobacco Works" defendant's label bore the 
 words "North Pole Tobacco Works," and the wrappers on the 
 bottom of the box were dissimilar. Defendant was enjoined.* 
 
 The deception may arise not only from the use of words that 
 are truthful in themselves, but from the printing of words in such 
 colors and in such a manner or with such accompaniments as to 
 produce a false impression. 
 
 In Keller v. B. F. Goodrich Co.,^ there was such a simulation. 
 Plaintiff made "Akron Dental Rubber." Defendant made and 
 sold " Non-Secret Dental Vulcanite, made according to an analysis 
 of the Akron Dental Rubber." They printed this name so that 
 the words "Akron Dental Rubber" appeared in red ink and were 
 prominent. The defendant claimed that there was no infringe- 
 ment because his labels did not assert that his article was that of 
 the plaintiff's, that the similarity would not mislead. The court 
 said: "We should, perhaps, be able to sustain the views of the 
 appellant's counsel if it were not that the words constituting the 
 appellee's trade-mark are printed in colors that attract attention 
 at once, and are so prominently displayed as to catch and hold 
 the eye. The manner in which the words that form the appellee's 
 trade-mark are printed is such as to make them very conspicuous, 
 thus indicating the pm^pose of the appellant to reap some advan- 
 tage from the trade^mark, and not merely to impart information. 
 If the object had been to impart information simply, it is evident 
 that no such prominence would have been given those words." 
 
 * Monopol Tobacco Works v. Gerv- trade name which was condemned in 
 
 sior, 32 Misc. (N. Y.) 87-1900; 66 United L. & B. Mfg. Co. v. Barthek 
 
 N. Y. Supp. 155. A similar color M/^. Co., 221 Fed. 456. 
 
 scheme in a label was an element con- ^ 117 Ind. 556-7-1888; 19 N. E. 
 
 sidered in connection with a similar 196. 
 
238 - Dress of Merchandise 
 
 § 119. Imitation of a Single Feature, Such as Color, Form, 
 etc. — One often sees the rule stated that the use of color or form 
 or shape or any of the characteristics which may be used by all in 
 the making of an article does not, of itself, amount to unfair 
 competition. This is true in a sense and untrue in another 
 sense. The effect of imitating a single feature of an article varies 
 with every case. No definite rule can be laid down. It depends 
 on the conspicuousness of the feature copied. Will its use of this 
 feature cause buyers of the article to be confused and deceived? 
 If it will, the question then arises, as to the extent to which the 
 court has power to enjoin its use. It can grant no degree which 
 will give to the complainant a monopoly of the use on any par- 
 ticular line of goods of any color, form, size or other common 
 feature of the article. If, however, the plaintiff has used a pecu- 
 liar form, or shape or size, he will be protected on its use even 
 against one who copies his goods in this one particular only. 
 Seldom does the newcomer in any commercial field have absolute 
 rights as to the use of these common characteristics of the article 
 he sells. He must first consider, not himself, but those who en- 
 tered the field before he did, with whom the public have become 
 acquainted. If he cannot enter the business without confusing 
 himself with one or more of these older concerns he will be com- 
 pelled to stay out. Said the Massachusetts court on this point as 
 to the use of an oval loaf in the manufacture of bread: "And the 
 defendants would have a right to make and sell bread which has 
 that shape, were it not for the fact that bread of that shape means 
 to the public that it is made by the plaintiff." Fox v. Best 
 Baking Co., 209 Mass. 251-1911, Loring, J. The relief given the 
 plaintiff in such a case is not usually absolute prohibition of the use 
 of the featiu-e in question but a command that either he cease 
 using it or use it in such a manner as to eliminate deception of 
 the public. In Cook & Bernheimer Co. v. JBoss,® the imitation 
 complained of was solely in the shape of the bottle, the labels 
 being distinctive. Complainant had the sole privilege of bot- 
 tling at the distillery "Mount Vernon Whiskey," and of attach- 
 ing to the bottles the distiller's guarantee of purity, though 
 others were also entitled to purchase in bulk and bottle and sell 
 as "Mount Vernon Whiskey." Complainant adopted a peculiar 
 and novel square and bulging-necked bottle and after the whis- 
 
 » 73 Fed. 203-1896. . 
 
Collocation of Features, etc. 239 
 
 key bottled and marketed by it had obtained a wide reputation 
 and had become associated by the public with the square-shaped 
 bottle, defendant changed its form of bottle and began to use a 
 Chinese copy of complainant's, although they claimed to be 
 using stock bottles purchased in the open market. Defendant's 
 use of this shape was held to amount to unfair competition, and a 
 preliminary injunction was granted. See § 129. 
 
 In Sterling Remedy Co. v. Spermine Medical Co.,'' there was 
 a clear and deliberate imitation of the peculiar and unusual shape 
 and color of labels and style of box adopted by the complainant, 
 as well as of letter press and of the name applied to the goods. 
 Held, that there should be an injunction against the form of 
 tablet and shape of box as well as against the use of infringing 
 names. So, also, in Franck v. Frank Chicory Co.,^ the use of a 
 particular label was specifically prohibited, where there had been 
 imitation in other respects also. The court considered itself not 
 bound, in such cases, to limit its injunction to the combined use 
 of all the features of imitation. An injunction was refused 
 against the use of a similar color scheme (red and white) in labels 
 for condensed milk where the respective trade names were " Car- 
 nation " and " Wild Rose," and there was further differentiation.*" 
 
 § 120. A Collocation of Features, Which Singly Might be 
 Copied, is Unfair. — A large proportion of cases brought to en- 
 join some forin of the dress of goods involves the use of more than 
 one feature of its general get-up. The rules of law as to the use 
 of the features of dress vary in such cases quite widely from the 
 rules applicable where only one feature is copied. One may be 
 enthely free to use singly the exact color or design of form used by 
 a competitor, yet (unless such use be necessary to the usefulness 
 of the article) if several or all are used the presumption is that 
 such use is fraudulent, unnecessary and for the purpose of passing 
 off. "He (the defendant) has no right to use these things in 
 that special combination in which the complainant uses them, if 
 that has become a distinctive combination distinguishing com- 
 plainant's article." ** It was attempted in Hennessy v. Dompe,^ to 
 
 ' 112 Fed. lOOa-1901 (C. C. A. 7th v. Frye & Co., 85 Wash. 133 (1915) 
 Cir.). (147 Pac. 865). 
 
 ' 95 Fed. 88-1899. '■'' Moxie v. Daoust, 206 Fed. 434, 
 
 8" Pacific Coast Condensed Milk Co. 436 (1913) C. C. A. 1st Cir. 
 
 » 19 R. P. C. 333-1902. 
 
'240 Dress of Merchandise 
 
 defend an action for the copying of the general appearance of a 
 brandy bottle label by contending that, before a comparison 
 could be made, all features of the label common to the trade must 
 be eliminated, and then it must be decided (1) whether the re- 
 maining features of the label were used by purchasers to dis- 
 tinguish and recognize the goods, and (2) if so, were those features 
 used by the defendant sufficiently similar to those of the plaintiil 
 to cause confusion. The court used this elimination method in 
 deciding against the plaintiff, but after an appeal had been taken, 
 and before it was heard, the defendants admitted their label was 
 an infringement, and consented to an injunction. 
 
 No one can have a trade-mark monopoly in color of paper, or 
 in shape of label, or in color of ink; but a general collocation of 
 such details will be protected by injunction. Where a defendant 
 and its predecessors had long used on their granite-ware a lozenge- 
 shaped label, printed in black ink, on grayish blue paper, the 
 complainant subsequently began to manufacture similar ware, 
 using a rectangular label of larger size than defendant's, printed 
 in dark blue ink on light blue paper, with a trade device on the 
 upper half. Three years later defendant changed its label for 
 one similar as to paper and ink, placing on the upper half its old 
 lozenge-shaped trade-mark. No reason for the change was 
 shown. No weight was given to defendant's affidavits that 
 there had been no intention to mislead, and it was held unfair 
 competition.^" 
 
 An exclusive right to use a particular form, color, or other 
 feature, not by itself, but in combination with certain other 
 featiu-es, may be acquired. In New England Awl & Needle C». 
 V. Marlborough Awl & Needle Co.,^^ defendant imitated plain- 
 tiff's packages in the color of the box and color of the label, the 
 words and type of the inscription, and in practically every other 
 detail excepting the name and address of the mamifacturer. In 
 deciding this to be unfair competition. Holmes, J., after remarking 
 that no monopoly of color could be claimed, said (p. 156): "But 
 the most universal element naay be appropriated as the specific 
 mark of a plaintiff's goods if it is used and claimed only in con- 
 nection with a sufficiently complex combination of other things. 
 
 ^'Lalance & Grosjean Mfg. Co. v. "168 Mass. 154^1897; 46 N. E. 
 National Enameling & Stamping Co., 386. 
 109 Fed. 317-1901 C. C. S. D. N. Y.) 
 
Collocation of Features, etc. 241 
 
 The plaintiff did not claim the exclusive right to brown labels for 
 awls, but it claimed the exclusive use of the brown color in the 
 combination which we have described. If the only other element 
 besides the color had been a box of a certain size, and a label of 
 a certain shape, the case might be different," but when there is 
 added an inscription which both in its pictorial aspect of black 
 marks and in its meaning was calculated to confuse if not to de- 
 ceive, the plaintiff's claim seems to us moderate." "" 
 
 In this class of cases the ultimate question asked is this: Is 
 the defendant, not expressly, but in effect, representing or en- 
 abling the retailer to represent to the public that the goods 
 offered are the familiar goods of the complainant? The various 
 resemblances are to be regarded as evidentiary facts, bearing on 
 the one hand on the presiunable intent of the defendant and on 
 the other on the probable effect upon the mind of the ordinary 
 purchaser. Thus in Frese v. Bachof,^^ Wheeler, J., said: "Prob- 
 ably no mere form of a package would ever alone amount to a 
 representation, capable of deceiving, that the wares contained 
 in it were those of any particular make. But, when the form of the 
 packages, the color of the wrappers and papers done up with them, 
 and the form and color of the labels are considered all together, 
 it is qmte apparent that when they had been so long used by the 
 orator's firm for holding this particular compound when offered 
 for sale, the mere appearance of the packages would amount to a 
 representation that they contained that article, of that manu- 
 facture." In this case the name of the article, rightfully used by 
 both parties, was "Hamburg Tea," which defendant put up in 
 packages closely resembling complainant's in being of long cylin- 
 drical shape, with pink wrappers, and papers of instructions of 
 the same colors and with labels similar in arrangement and ap- 
 pearance, the only substantial difference being in the names of the 
 parties. 
 
 In Jones v. Hallworth," Kekewich, J., after remarking that 
 any one of a number of features may be open to common use, 
 
 " Enoch Morgan's Sons Co. v. .^ which the pubhc has come to recog- 
 
 Troxell, 89 N. Y. 292-1882. nize the plaintiff's product." Howard 
 
 «" "The sole question in such cases Dustless Duster Co. v. Carkton, 219 
 
 is: Does the adoption of the collo- Fed. 913. 
 
 cated features of the plaintiff's style '» 14 Blatchf. 432-5-1878. 
 
 of dress disclose a differentiation " 14 R, P, C, 22$-34-1897. 
 from that previously adopted, and by 
 
242 Dress of Merchandise 
 
 so that as to any one of them singly there may be an innocent 
 resemblance, says: "But, by an inductive process, one may come 
 to this conclusion, that every one of those perfectly innocent 
 things when combined in a series, may produce something which 
 is the reverse of innocent." "" 
 
 A good example of undue imitation in the collocation of features 
 makiftg a general impression on the piu-chaserj in connection of 
 a trade-name which was somewhat similar to complainant's 
 trade-name, though not enough so as to infringe it, is found in 
 Gulden v. Chance."'' 
 
 § 121. Resemblance in Several Features May be Fair, if 
 These Features Are Common to the Trade. — Even where there 
 is a general res^ablance, such as may tend to some confusion 
 in the mind of the casual purcha,ser, and although such a re- 
 semblatttje may appear to have been designed by the ptirchaser, 
 the details in which similarity is shown, and indeed the simi- 
 larity of general effect may be common to the trade. To con- 
 stitute unfair competition the features imitated must be such as 
 distinguished plaintiff's goods from others, not such as he shares 
 with the trade generally.'^ For example, in United States Tobacco 
 
 "° It is immaterial that plaintiffshas the resemblance is such as is caleu- 
 
 no exclusive right in any one element lated and intended to deceive the 
 
 of the dress or get-up of the article, ultimate purchaser. Defendants were 
 
 "so long as the etisenible has come to enjoined from using their infring- 
 
 be a pubUc guarantee of origin or ing bottles or labels, and to ac- 
 
 quality." Howard DusUess Duster Co. count for plaintiff's lost profits and 
 
 Co. V. Cm-leton, 219 Fed. 913. damages. 
 
 "^82 Fed. 303 (1910)' C. C. A. For another recent example of decep- 
 
 3d Cir. tive collocation, see Meecans v. Wag- 
 
 This case marks the end of a long ner, 234 Fed.''912 (1916) in which the 
 
 litigation. See 163 Fed. 447; 165 Fed. imitator's mechanical toy was put up 
 
 624; 180 Fed. 178. Defendants, m covers of the same color, with a 
 
 shortly after taking a former salesman label of the same predominant color, a 
 
 of plaintiff's into their employ, adopted similar picture of a boy, and a legend 
 
 the name "Don Csesar" for their of equivalent meaning. 
 oUves, and labels and packages very "°In CodchCvbi Co. v. Gtee-Nol 
 
 similar to those^ long used by com- Bottling Co., 221 Fed. 61 (C. C. A. 5th 
 
 plainants in sellihg their "Don Carlos" Cir.) the similarity of bottles in size, 
 
 brand. Held that lack of actual shape, color and general appearance, 
 
 fraud or wrongful intent was no de- since these were common features 
 
 fence. The true test for unfair com- to the trade and in view of differ- 
 
 petition is not whether jobbers or entiation in other respects,. was not 
 
 dealers would be deceived, but whether found to justify an injunction. 
 
Resemblance in Several Features May Be Fair 243 
 
 Co. V. McGreenery,^^ the complainant sold cut plug tobacco in 
 packages bearing conspicuously the words "Central Union" and 
 "Union Made" and the label of a trade union, together with 
 other words and devices. Defendant sold similar tobacco in 
 packages of the same size, the paper being of the same kind and 
 quaUty. Its packages were conspicuously marked "Union 
 Leader," and while there was in other points a degree of resem- 
 blance, there were also noticeable differences, particularly in the 
 device. Wrappers resembling complainant's in shape, size, 
 style and color of paper, and in style of lettering had long been 
 common, and the word "Union" had been used in various brands. 
 Some purchasers were shown to have been deceived. It was held, 
 that the resemblance was prinipipally in features often combined 
 in common use, and that deception had not been shown to have 
 arisen from resemblance in any feature peculiar to complainant. 
 Said the court (p. 534) : "While fraud alone is not sufficient to 
 entitle the complainant to a decree, yet it is a fact to be taken 
 into consideration by the court. A defendant may lawfully seek 
 to enlarge his custom by selUng cheaper than his rivals, packages 
 of tobacco put up in an old form; and this, even if the packages 
 thus sold are bought by a careless public in the belief that the 
 tobacco is that of the complainant. A defendant may not law- 
 fully seek to obtain the complainant's custom by deceiving the 
 public through the appropriation of some characteristic of the 
 complainant's package which was new in the art, and is the com- 
 plainant's peculiar property. The distinction thus expressed 
 must be kept carefully in mind." 
 So in Payton & Co. v. Snelling, Lampard & Co., Ltd.,^^ the 
 18 144 Fed. 531-1906 (Circ. Ct. of something peculiar to him and by 
 Mass.); aflSrmed in 144 Fed. 1022. reason of defendant having adopted 
 
 " 17 R. P. C. 48-53-1900. "What some mark or device or label or 
 is it that the plaintiffs must make out something of that kind which distia- 
 in order to entitle them to succeed in guishes the plaintiff's from other 
 this action? * * * Where the goods which have, Uke his, the fea- 
 features in which they resemble each tures common to the trade. Unless 
 other are common to trade, what has the plaintiff can bring his case up 
 the plaintiff to make out? He must to that he fails." Cited with ap- 
 make out not that the defendant's are proval and as a rule by Kekewich, J., 
 like his by reason of those features in King & Co. v. Gillard, 21 R. P. 
 which are common to them and other C. 589. Other examples ,of resem- 
 people, but he must make out that blance in dress resulting from con- 
 the defendant's are like his by reason formity to trade custom, and accord- 
 
244 Dress of Merchandise 
 
 court remarked: "The evidence is very strong that one tin may 
 be mistaken for the other, — very likely; but why? Because 
 of the features common to them and common to all." 
 
 In Hoy t V. Hoyt,^" plaintiffs made and sold "Hoyt's German 
 Cologne" at Lowell, while defendants made and sold "Hoyt's 
 Egyptian Cologne" at Philadelphia. Defendants used a bottle 
 of similar shape to that used by plaintiffs. This was, however, 
 a stock bottle which anyone could buy; and they used a similar 
 cap label, although one that had been used by others than plain- 
 tiffs; they also packed bottles in boxes in the peculiar manner 
 adopted by plaintiffs. Held not unfair competition. 
 
 An injunction was refused in Coats v. Merrick Thread Co.,"^^ 
 in which there was a certain similarity in labels placed upon the 
 ends of spools, especially in the use of concentric rings of black 
 and gold, which had become common in the trade, and in em- 
 bossing on the border the numeral 40 for the number of the 
 thread. The labels were differentiated by the manufacturer's 
 name conspicuously printed. 
 
 § 122. Remarks as to Classification of the Following Cases 
 of Simulation in Dress or General Get-up. — Concurring simi- 
 larity in name and in dress may amount to unfair competition, 
 though the similarity in either respect by itself, would not be 
 enough. In the following pages are groups of cases in which 
 oiertain features of the get-up are prominent or distinctive, but 
 there are many cases of similarity of dress, or general appearance 
 of labels and packages, which are very difficult to classify, be- 
 cause it is a question of the concurrent effect of many details; 
 and it is often impossible to put one's finger on a particular point 
 of resemblance, and say that is the controlhng or salient feature. 
 
 Each case stands by itseff. The questions presented by any 
 particular case are rather of fact than law. Similarity in gen- 
 eral, and in the goods themselves, as distinguished from the 
 containers or packages, are separately treated in the chapters 
 on " Simulation of Articles Themselves." 
 
 ingly held not to constitute unfair ^0 143 Pa. St. 623-1891; 22 Atl. 
 
 competition are: Holeproof Hosiery 755; 13 L. R. A. 343. 
 
 Co. V. Wallach Bros., 192 Fed. 534 »' 149 U. S. 562-1892; 37 L. ed. 
 
 (boxes similar in size, shape, etc., and 847; 13 Sup. Ct. 966. 
 
 often yellow in color, and change from 
 
 red to yellow explained). 
 
Designs, Devices, and Figures 245 
 
 § 123. Designs, Devices, and Figures. — It is a common prac- 
 tice to designate goods by designs, symbols, and figures which are 
 original or peculiar, and serve to identify the goods in the same 
 manner as a name identifies them. These devices are of par- 
 ticular value to a maker of goods which are largely consumed by 
 ignorant people or people unfamiliar with the English language, 
 because they enable a purchaser of this sort to recognize the goods 
 when he sees them a second time. See § 324. In many cases the 
 devices are not technical trade-marks, and not patented as de- 
 signs. Here we deal with such devices only. In Colman v. 
 Crump, ^^ the plaintiffs for seventeen years had made mustard, 
 placing on their packages a figure of a bull's head. When they 
 began to use it, they kne^V of no one using such mark. They 
 never registered this mark, nor attempted to comply with the 
 statutes of the United States relating to trade-marks. Their 
 product came to be known as "Bull's Head Mustard." The de- 
 fendants were manufacturers of labels which were used by mus- 
 tard manufacturers; some of these labels were almost exact 
 copies of the plaintiffs' labels. Held, that plaintiffs were entitled 
 to restrain the use of a similar figure on other brands of mustard, 
 the court saying (p. 580) : "The fact that the same device is used 
 upon other articles of merchandise does not take from the plain- 
 tiffs their rights to its exclusive use on this one article of their 
 manufacture," and also "A party may have a property in — 
 that is, an exclusive right to use — a name, symbol, figure, letter, 
 form, or device to distinguish goods manufactured and sold by 
 him, and those manuf^,ctured and sold by others, or to indicate 
 when or by whom, or at what manufactory the article was manu- 
 factured. It is an infraction of that right, to print or manu- 
 facture, and sell for use upon articles of merchandise of the same 
 kind as those upon which it is used by the proprietor, any device 
 or symbol which by its resemblance to the established trade-mark 
 will be liable to deceive the public, and lead to the use of that 
 which is not the manufacture of the proprietor, believing it to be 
 his." '^ 
 
 ^^ 70 N. Y. 573-78-1877. claimed as a trade-mark. Defendant's 
 ^^ In Schwann v. Miele, 203 Fed.- label, also bearing a woman's head, and 
 176, a salient feature of the labels on quite similar in general appearance 
 complainant's jars of massage cream and effect, was held calculated to de- 
 was the figure of a woman's head, ceive. In Van Zile v. Nomb Mfg. 
 
246 Dbess op Merchandise 
 
 Not only are these devices on goods important in themselves, 
 as identifying the goods to the eye of the purchaser, but they have 
 an additional value, as the basis of popular nicknames for the 
 goods on which they are put. For instance, in the case just 
 cited, mustard on which a bull's head had long appeared came 
 to be known as "Bull's Head Mustard," and plasters on which 
 a red cross had been used came to be called "Red Cross Plas- 
 ters." ^* In the latter case it was held, that the use of a Greek 
 cross of somewhat different form, with a red circle in the center, 
 was an infringement, despite the fact it bore on its face letters 
 and marks not on the other label, and though there was little re- 
 sembknce in the package or other parts of the get-up. 
 
 In Seixo v. Provezende,^* the court says: "I do not consider 
 the actual physical resemblance of its two marks to be the sole 
 question for consideration. If the goods of a manufacturer 
 have from the mark or device he has used become known in the 
 market by a particular name, I think that the adoption by a 
 rival trader of any mark which will cause his goods to bear the 
 same name in the market may be as much a violation of the 
 rights of that rival as the actual copy of his device." *^ 
 
 § 124. Signatures and Initials. — Among those devices which 
 are frequently copied are the autograph signatures of the makers 
 or inventors of the goods on which the labels appear. These are 
 to be considered in the same category with all of these figures and 
 
 Co., 228 Fed. 829, there was undue use of this device by defendant's 
 imitation of the device of a shield, in predecessor antedated that by plain- 
 connection with the use of a some- tiff's predecessor. Preliminary in- 
 what similar trade name. junction denied. 
 
 " Johnson v. Bauer & Black, 82 Wdlman & Dvnre Tobacco Co. v. 
 Fed. 662-1897. Ware Tobacco Works, 46 Fed. 28*- 
 " 1 Ch. App. 192-6-1865. 1891 (Cir. Ct. Minn.). Defendants' 
 ^^Philadelphia Novelty Co. v. label for tobacco packages resembled 
 Blakesley Novelty Co., 37 Fed. 365- complainants' in the colors used, and 
 1889 (Cir. Ct. Conn.). Defendant in certain devices of a shield or ban- 
 put up hair-crimpers in a box of the ner, and an ellipse with a circle, and 
 same color, and bearing a label of otherwise, so that in spite of varia- 
 the same color as used by the plain- tions where was a general resem- 
 tiff. The boxes were not alike ia blance. There was no similarity in 
 shape, nor in the printed matter on the names applied by the represent- 
 the label, but there was a resem- ative manufacturers to their tobacco, 
 blance in respect to the central de- Injunction, 
 vice, a woman's head or bust; the 
 
Reading Matter on Labels or Circt/lars 24/ 
 
 devices, and even when not trade-marks are protected under the 
 rules of unfair competition. In C. F. Simmons Medicym Go. v. 
 Simmons,^ the headnote states the "defendant manufactured 
 and sold a medicine to which he gave a name similar to the na,me 
 of the complainant's medicine, including the name of the inventor; 
 he placed on the wrapper of his medicine a picture of a bust,, and 
 an autograph signature, complainant's medicine having long 
 been known among an ignorant class of purchasers by simil^ 
 signs; he issued directions which were almost a literal copy of the 
 complainant's; and he published a card in which he described 
 himself as the son and successor of the inventor of coinpla,inant's 
 medicine." This was unfair competition. 
 
 Where a name, portrait, or facsimile signature of another is 
 employed without consent and against his will, with Q, view to de- 
 ceive the public into the belief that the product sold was prepared 
 by him, and offered to purchasers with his sanction, an injunction 
 will be granted. Jenkins, Circuit Judge, hais said in such a case: 
 "The name of an eminent philanthropist was taken without his 
 consent and against his protest. This assumption of name was a 
 wrong which we cannot doubt a court of equity would, upon his 
 application, have restrained, even if the purpose of the corpora- 
 tion had been wholly innocent and praiseworthy; but here, it is 
 clear, the name, the portrait, and the facsimile signature of Rev. 
 Sebastian Kneipp were employed, not only without his consent 
 and his will, but were so assumed with a view to deceive the 
 public, and to Induce the belief that the produce marketed and 
 sold was prepared under his supervision, and offered to the public 
 with his sanction. Under such circmnstances, equity will not 
 hesitate to extend its preventive arm." ^' 
 
 § 125. Reading Matter on Labels or Circulars. — Reading 
 matter on labels and wrappers often consists of the names of 
 makers, agents, etc., designations of quality or quantity, direc- 
 tions for use, cautions against imitations, warnings as to features 
 of the marks used on the genuine goods. The questions relating 
 to names are fully discussed in the chapter on " Tfade Names" 
 Directions for use are frequently copied in whole on in part by 
 
 «» 81 Fed. 163-1897 (Cir. Ct. Kndvp Me^ne Co., 82 Fed. 321- 
 
 Ark.). 1897; 53 U. g. App. 425. Sep also 
 
 " Kathreiner's Mahkaffee Fabriken Mueller Mfg. Oo. y. MpDanaU <fc 
 
 Mit Beschraenkter Haftung v. Pastor Mooson Mfg- Co., 164 Fed. 1001-1909. 
 
24S Dress of Merchandise 
 
 an unfair dealer. Thus phraseology alone may be copied or, 
 in addition, the type and general method of printing may be 
 imitated also. Doing either or both of these things, especially if 
 accompanied by imitation in other points, may be treated as 
 unfair competition. In Ball v. Siegel,^ it is said that it is well 
 settled that directions, advertisements, notices, etc., constitute 
 no part of a trade-mark. In Bates Mfg. Co. v. The Bates Machine 
 Co.,^^ plaintiff put up his goods in boxes on one end of which was a 
 label and the words "A Few Dont's." Under this title were 
 seven different sentences which begin with the word "Don't." 
 Defendant's goods were put up in boxes of similar shape; on the 
 end of each was a label bearing the words "A Few Dont's." On 
 both the defendant's and plaintiff's label the word "Dont's," was 
 in large capital letters. Under the title of defendant's labels 
 were seven sentences commencing with the word "Don't"; four 
 of these were literally the same as those used upon the plaintiff's 
 boxes, and the other three were substantially the same. The 
 labels on complainant's boxes also contained the words "Useful 
 Hints." On the defendant's boxes was a series of "Important 
 Suggestions," the substance of these hints and suggestions being 
 the same. Preliminary injunction was granted. 
 
 Circulars, price lists and advertising matter may be so imitated 
 in form, arrangement and general appearance as to amount to 
 unfair competition.^'" 
 
 § 126. Misleading Use of a Label Proper in Itself. — A per- 
 son may have full right to the use of a label and yet by concealing 
 a part of it in packing his goods, or by unduly emphasizing a 
 part of it, give the impression that his goods are those of some- 
 one else. The cases here given are those showing instances, not 
 of the copying of a label, but of attempts to approximate the 
 appearance of the plaintiff's goods by misuse of a label, which 
 properly displayed would not be a violation of the plaintiff's 
 rights. In Williams v. Brooks,^ plaintiffs for ten years past had 
 
 ^ 116 m. 137-1886; 4 N. E. 667. B. M. Co., 236 Fed. 731. Circulars 
 
 ^ 141 Fed. 213-1905. sent to agents, however, though imi- 
 
 "^ Elbs V. Rochester Egg Carrier tative, would not ordinarily tend to 
 
 Co., 134 N. Y. Supp. 979, advertis- divert trade. Edward Hilker Mop 
 
 ing matter, as well as wrappers con- Co. v. U. S. Mop. Co., 191 Fed. 613 
 
 demned. American Chicle Co. v. (C. C. A. 6th Cir). 
 
 W. J. White Chicle Co., 196 Fed. 977; '<> 50 Conn. 278-1882. 
 Bankers' H. W. Co. v. Beaver S. & 
 
Tobacco Tags, Cigar Bands, etc. 240 
 
 been making hairpins at Birmingham, England, under the name 
 of D. F. Tayler & Co. These they put in pink, yellow, and 
 brown papers and imported same into the United States. For 
 three years the defendants had been making hairpins in the United 
 States and had put them up in pink and yellow papers, upon 
 which was a printed statement that the hairpins were manufac- 
 tured by L. B. Taylor & Co., Cheshire, Connecticut. The court 
 below found that the wrappers were so nearly like those of the 
 plaintiffs as to deceive the careless and unwary purchaser. The 
 defendants used their labels with full knowledge of the plaintiffs' 
 trade-mark and reputation. The defendants always sold their 
 pins as of domestic manufacture, and for less than the plaintiffs 
 charged for theirs. When the defendants' pins were done up in 
 ounce packages and looked at separately, the words "Cheshire, 
 Conn.," appeared plainly on the wrapper; but when these were 
 gathered into pound packages, the whole of the printed label was 
 not seen. Says the court (p. 282): "The defendants have no 
 right to destroy or diminish the property of the plaintiffs in the 
 name of 'D. F. Tayler & Co.,' and in the device and vignette with 
 which it is connected, applied to the manufacture and, sale of 
 hairpins, by so printing the name of 'L. B. Taylor & Co.,' not 
 borne by either of them, but pin-chased solely for use in coimection 
 with this particular branch of their business, as part of a device 
 and vignette upon a pink or yellow wrapper * * * as that 
 their entire device shall so closely resemble that of the plaintiffs 
 as to be liable to deceive careless and unwary purchasers; and 
 this regardless of the fact that the defendants believed their 
 manner of use of the name and vignette to be within the law; for 
 the injm-y to the plaintiffs remains the same." 
 
 § 127. Tobacco Tags, and Cigar Bands, etc. — Tags on tobacco 
 packages and bands on cigars are so conspicuous as badges 
 of identity, in view of the similarity in various other points 
 for the most part common to the trade, that sonietimes a 
 resemblance in these has been held to be calculated to deceive, 
 even though the name on the tags or bands may have been differ- 
 ent. In Lorillard v. Wight, ^^ complainants fastened upon the out- 
 side of the plugs of their tobacco, tin tags variously colored accord- 
 ing to the brand, with the name of the brand and the makers 
 stamped upon them. They were the first to use this device, and 
 " 15 Fed. 383-1883 (C. C. Md.). 
 
250 Dress of Merchandise 
 
 the public had come to recognize their products by these tags. 
 Defendant, or parties represented by him, afterward put upon the 
 market plug tobacco, bearing the tin tags of the same size and 
 shape, the same color and enamel finish. The words were very 
 different, but they were in small letters and in ink of the same 
 color. Defendant's plugs, however, were of different size, color, 
 and flavor. Held, that while defendant had a right to use tin 
 tags, he had no right to use tags so nearly resembling com- 
 plainant's as to mislead the public.^^" 
 
 In Reynolds Tobacco Co. v. Allen Bros. Tobacco Co.,^^ com- 
 plainant and its predecessors had since about 1880 made and 
 sold a brand of plug tobacco under the name "Schnapps," and 
 from 1894 attached to the plugs distinctive tags of lozenge shape, 
 with the word "Schnapps" in slanting red letters on dark 
 background. This brand was largely advertised with pictures 
 of the tag and was generally recognized by the tag, having a 
 very large sale in the South where many customers could 
 not read. Defendant afterward put on the market an in- 
 ferior grade of tobacco in plugs of the same size and shape, with 
 tags of the same color and slant, the only difference being that 
 the name "Traveller" was used instead of "Schnapps." It was 
 shown that the tag was intended to, and actually did, deceive 
 customers. Injunction granted. A preliminary injunction was 
 granted against the use by defendant upon cigars of panatella 
 shape, bands similar in colors, and bearing a similar elongated 
 oval escutcheon.^' 
 
 § 128. Wrappers, Cartons, etc. — The rules of similarity, as to 
 copying goods themselves and as to labels, apply to all sorts of 
 containers, such as boxes, wrappers, cartons, bags, envelopes and 
 the like. Cases involving a simulation of these articles could be 
 
 "" In Armstrong Seatag Corporor- any ta^ed oysters were complain- 
 
 tion V. Smith's Island Oyster Co., ant's. 
 
 224 Fed. 100 (C. C. A. 2d Cir.) it was « 151 Fed. 819-1907 (C. C. W. D. 
 
 held that complainant could not Va.). 
 
 monopolize the tagging of oysters, "Clay v. Kline, 149 Fed. 912- 
 
 although it first introduced this 1906 (C. C. S. D. N. Y.). The use 
 
 method of marking oysters and was of a cigar band has been condemned 
 
 liable to lose some trade to a com- as deceptively similar to one used by 
 
 petitor using tags of different shape an earlier trader in Heusner v. Bau- 
 
 and wording because for a while gher, 248 Pa. St. 536; 94 Atl. 225. 
 many consumers would assume that 
 
Copying Bottles Used by Competitoe 
 
 251 
 
 multiplied, but it would be only a reiteration of rules given else- 
 where.'^ Deceptive imitation of the covers of a book may con- 
 stitute unfair competition.^^" 
 
 § 129. Copying Bottles Used by Competitor. — Where the 
 use of bottles of the same shape as complainant's has been en- 
 joined, there have generally been other features imitated at the 
 same time, but in some cases a peculiar form and appearance de- 
 vised for a bottle has been the principal, if not substantially the 
 only, feature imitated. In Cook & Berntheimer Co. v. Ross,^^ 
 plaintiff bottled whiskey at a distillery, using bottles of a pecuUar 
 
 '* Pennsylvania Sali Mfg. Co. v. 
 Myers, 79 Fed. 87-1897 (C. C. E. 
 D. Mo.). Complainant had long sold 
 concentrated lye in cylindrical pack- 
 ages, the wrappers of which were 
 white with black margins and hori- 
 zontal lines, and bore prominently 
 the word "Saponifier," by which 
 for many years complainant had dis- 
 tinguished its lye from that of other 
 manufacturers. Defendant then put 
 upon the market lye in packages of 
 similar size and shape, the wrappers 
 being white, with similar black lines, 
 and bearing the word "Saponifier" 
 in large letters. Defendant's own 
 trade name, however, appeared on 
 the package, and the reading matter 
 in smaller type was different. Held 
 unfair competition on defendant's 
 part. Centaur Co. v. Killenherger, 
 87 Fed. 725-1898 (C. C. N. J.). In 
 connection with the use of the same 
 name "Castoria" (which had be- 
 come pubUc property), defendant 
 used a wrapper of the same color as 
 complainant's, bearing an inscription 
 similar ia type, arrangement and 
 general appearance, and in other fear 
 tures resembling complainant's. Held, 
 unfair competition. The court says: 
 "Bearing in mind that the com- 
 plainant's wrapper was well known 
 to the trade for years before the 
 adoption of that of the defendant, it 
 
 is impossible, in view of the accumu- 
 lated resemblances, to avoid the con- 
 clusion that these numerous similari- 
 ties were not the result of chance, 
 but are chargeable to design" (id. 
 p. 726). In National Biscuit Co. v. 
 Pacific Coast Biscuit Co., 83 N. J. Eq. 
 368-1914, defendant used for bakery 
 products cartons similar in shape and 
 size and color of wrappers to com- 
 plainant's, and also bearing labels 
 resembling in effect complainant's 
 red "In-er-seal" label. The colloca- 
 tion was condemned as deceptive, 
 but defendant was permitted to con- 
 tinue the use of similar colors, sizes 
 and shapes on condition of differ- 
 entiating adequately the general 
 appearance of the packages. (See 
 descriptions of the cartons, including 
 trade names used.) In Forster Mfg. 
 Co. v. Cutter-Tower Co., 215 Mass. 
 136 (1913); 101 N. E. 1083, boxes for 
 toothpicks were found deceptively 
 similar. In New Orleans Coffee Co. v. 
 Ameriean Coffee Co. of New Orleans, 
 124 La. 19-1909, similarity in shape 
 and color of container (a red cyUnder) 
 was not enough to warrant injunction, 
 where otherwise there was reasonable 
 differentiation. 
 
 '^ J. -S. Ogilvie Pub. Co. v. Royal 
 Pub. Co., 241 Pa. 5; 88 Atl. 316. 
 
 "73 Fed. 203-1896 (C. C. S. D. 
 N. Y.). 
 
252 Dress of Merchandise 
 
 shape and bearing the distiller's guaranty of purity, and through 
 extensive advertising the bottles were relied upon by purchasers 
 to identify plaintiff's whiskey. Defendants who had been deal- 
 ing in the same whiskey of their own bottling adopted a bottle 
 of the same shape and appearance as that of plaintiff's, but with 
 entirely different labels, and the use of such bottles by the de- 
 fendant was restrained. In Chas. E. Hires Co. v. Consumers' 
 Co.,^^ the defendant, a bottler, after having for some time used 
 distinctive labels and forms of bottles for its root beer and other 
 beverages, changed the form of its root beer bottles only, and 
 adopted a form identical with the peculiar and unusual form 
 long used by complainant, and also changed its labels so as to 
 resemble complainant's somewhat closely. Held, that it was 
 not enough to enjoin the use of labels similar in appearance, and 
 that the use of a bottle of similar shape should also be enjoined. 
 The court says: "The court below seems to have placed its refusal 
 to extend its injunction to include the bottle used by the defend- 
 ant upon the notion that one has the right, under all circum- 
 stances, to use any form of bottle he may desire. * * * An action 
 like the present proceeds upon no such ground, but upon the prin- 
 ciple that one may not, by means lawful in themselves when de- 
 voted to a lawful end, perpetrate a fraud upon the pubUc, or 
 infringe the rights of another." '*" 
 
 The Bauer Company procured bottles to contain its cordial 
 to be made in the same ungainly shape as the bottles used by 
 the Carthusian monks. The glass was colored to correspond 
 with the color of the cordial contained therein, precisely as 
 was done by them. Its labels corresponded also in color with 
 their labels, and the arrangement of the lettering thereon corre- 
 sponds with that upon these labels. It substituted the word 
 "Chasseurs" for "Chartreuse," — a word not dissimilar in 
 sound and appearance, and likely to delude a purchaser. De- 
 
 »« 100 Fed. 809-1900 (C. C. A. 7th caps. Moxie Co. v. Daoust, 206 Fed. 
 
 Cir.)- See also Gulden v. Chance, 434 (C. C. A. 1st Cir.). But in 
 
 182 Fed. 303-1910 (C. C. A.). Crystaleid Water Co. v. Schvltz, 77 
 
 s»" Where defendant had changed Misc. 26; 135 N. Y. Supp. 273 (1912) 
 
 his bottle to a shape very similar to the labels and markings were held 
 
 complainant's, the color and taste sufficiently distinctive to obviate an 
 
 of the beverage being similar, he was objection to the use of a square bottle 
 
 enjoined, in spite of differentiation like that of plaintiff, who had not 
 
 in marking on bottles, labels and originated the shape. 
 
Refilling Containers Once Used 253 
 
 fendant made untrue statements "putting forth a false sugges- 
 tion that the article was imported from France, when in fact it 
 was made in the city of Chicago." Said the court: "We have 
 little patience with such schemes." *^ 
 
 In Kronthal Waters, Ltd., v. Becker,^^ complainant and its 
 predecessors had long sold in the United States the waters of a 
 German mineral spring, using a bottle with a peculiarly shaped 
 blue neck label marked "Blue Label," and the water was widely 
 known as "Blue Label Mineral Water." Defendant began to use 
 for a different mineral water a bottle of the same shape, and size, 
 and color, with neck and body labels of the size and style and 
 almost the same color, the words on the labels, however, being 
 different, though arranged similarly. A preliminary injunction 
 was granted. 
 
 In Evans v. Von Laer,^^ the resemblances were (1) in the use 
 of the name "Montserrat Lime Fruit Juice," (2) in the color of 
 the labels, and (3) in the form of the bottles. Montserrat was 
 the island from which both parties imported lime juice, and the 
 bottles were of a shape common in the lime juice trade. This 
 was not considered unfair, but defendant was enjoined from re- 
 filling complainant's bottles.'^" See § 119. 
 
 § 130. Refilling Containers That Have Been Once Used. — 
 To buy goods of another in bulk, and resell under truthful labels 
 is not usually unfair. Plaintiffs manufactured a disinfectant, 
 known as "Condy's Fluid," and these words were registered as 
 their trade-mark. It was generally sold, both at wholesale and 
 retail, in small bottles. In this instance, however, they had sold 
 a cask of the fluid to defendants, who had bottled it, and were 
 selling the bottles labeled with the words "Condy's Fluid (Crim- 
 son) warranted genuine." It appeared that there had been 
 some deterioration of the fluid, due to the action upon it of the 
 wood of the cask. Held, that defendants were within their 
 rights. 
 
 The court (Kekewich, J.) says: "A manufacturer who sells to a 
 
 " Bauer Co. v. Order of Carthusian '^ Other cases of undue imitation of 
 
 Monks, 120 Fed. 78-80-1903 (C. C. bottles, including capsules and labels 
 
 A. 7tli Cir.)- s-re: Edward & John Burke, Ltd., v. 
 
 38 137 Fed. 649-1905 (C. C. E. D. Bishop, 175 Fed. 167; National Water 
 
 Pa.). Co. V. Hertz, 177 Fed. 607. 
 
 3»S2 Fed. 153-1887 (C. C. Mass.). 
 
254 Dress of Merchandise 
 
 dealer, in bulk, an article generally sold and used in small quan- 
 tities, without any restriction on its disposal, must be taken to 
 authorize the dealer to sell the article in small quantities, as being 
 the manufacture of his vendor." ^^ 
 
 It is unfair, however, to misstate the quality in reselUng. 
 The rights which are acquired by the purchaser in bulk do not 
 permit him to misrepresent the quality of the article to his cus- 
 tomers. Could this be done it would be a means of unfairly 
 injuring the reputation of another's goods.*^ 
 
 Where the defendant took the label off of the boxes contain- 
 ing plaintiff's 753 grade pens, which was a poor grade, and put 
 on one bearing nimiber 303, which number plaintiff used for his 
 fine grade goods, it was held, that the plaintiff was defrauded by 
 these acts which caused destruction of confidence in his goods. *^ 
 
 Again, purchasers in bulk will be enjoined from r^resenting 
 that they are the original makers, when they resell. Plaintiffs 
 were noted manufacturers of brandy in France, which they sold 
 both in casks and in bottles, the bottled goods being of superior 
 quality. Defendant purchased plaintiffs' brandy in casks, and 
 then bottled and sold it, the bottles, labels, etc., colorably imitating 
 those of plaintiffs, though the label indicated in small letters that 
 the bottling was done by defendant. Held, that defendant 
 should be enjoined from thus passing off on the public plaintiffs' 
 second-grade brandy as their bottled and first-grade goods.^' 
 
 A presumption of intent to pass off will arise where one sells 
 
 ^'Condy & MitcheU v. Taylor & distinctive labels correctly statrag 
 
 Co., 56 L. T. N. S. 891-1887 (Ch. that it was manufactured by com- 
 
 Div.). See also Russia Cement Co. plaiaant and bottled by defendants, 
 
 V. Frauenhar, 133 Fed. 518-1904 but on which they printed "Le 
 
 (C. C. A.). Page's Liquid Glue." Hdd, that 
 
 ■" Russia Cement Co. v. Katzen- such use for an inferior grade, of a 
 
 stein, 109 Fed. 314^1901 (C. C. S. trade name which had bocome asso- 
 
 D. N. Y.). Complainant manufac- ciated by the public with complain- 
 
 tured glue well known as "Le Page's ant's best grade, was fraudulent and 
 
 Glue." Different grades were desig- should be restrained as unfair com- 
 
 nated by some additional word; the petition. 
 
 highest grade was called "Le Page's *'Gillot v. Kettle, 3 Duer (N. Y.), 
 
 Liquid Glue," and the lowest "Le 624-1854. 
 
 Page's Fish Head Glue." Defend- " Hennessy v. White, 6 Wyatt, 
 ants purchased of complainant in Webb «& A'Beckett 216-1869 (Vic- 
 bulk a quantity of the latter grade, toria); also Hennessy v. Hogan, 6 
 which they put up in bottles with W. W. & A'B. 225. 
 
Refilling Containers Once Used 255 
 
 bitters in competition with Hostetter's Bitters which are usually 
 marketed in bottles, and puts his produce in demijohns marked 
 "Host-Style Bitters," and gives with the demijohn an empty 
 Hostetter bottle.^* 
 
 Selling a brandy which is not Hennessy's out of a bottle 
 marked as if containing Hennessy's Brandy, will be enjoined.*^ 
 
 Purchase of second-hand containers, bottles, boxes, and the 
 like, will not give to the buyer a right to again use them if such 
 use will cause deceit, and so injure the original user of the con- 
 tainer. Such conduct cannot fail to cause a passing off of the 
 goods of the second user for those of the first. These cases 
 usually concern refilling of bottles, which often are of a pe- 
 culiar shape identified by the public with a particular brand of 
 goods. 
 
 In Eckhart v. Consolidated Company, ^^ both parties were flour 
 manufacturers. Eckhart delivered flour to customers in bags 
 bearing the various trade-marks of the Consolidated Company. 
 Eckhart justified himself by saying that his customers were 
 bakers, and that sometimes by agreement they sold to bakers 
 large quantities of flour in bulk, and that the bakers furnished 
 bags to them for the delivery of the flour; that they also pur- 
 chased from bakers second-hand bags, among which were bags 
 of the Consolidated Company. They denied that the public 
 was deceived of that the bakers were deceived or that the Con- 
 solidated Company were injured. Held, "* * * To entitle 
 a complainant to relief by injunction in a case like the present, 
 it is not necessary to show that the public are or have been ac- 
 tually deceived. The remedy by injunction is preventive, and 
 it is sufficient to show facts from which the court can deduce the 
 conclusion that the complainant has reasonable ground to fear 
 that the public and the complainant's customers may be deceived, 
 to the injury of the complainant; that the use made by the de- 
 fendant of the complainant's marks is calculated to deceive, and 
 probably will deceive the public, to the injury of the complainant. 
 It is obvious that, after appellants delivered flour to their cus- 
 tomers, the bakers, in bags marked and branded as before stated, 
 appellants would not, in all cases, follow the bags, nor could they. 
 
 ** Hostetter Co. v. Becker, 73 Fed. "^ Hennessy v. Neary, 19 R. P. C. 
 297-1896 (C. C. S. D. N. Y.). 36-1901. 
 
 « 72 111. App. 70. 
 
256 Dkess of Mekchandise 
 
 control the bakers in the disposition of their flour, nor could 
 they have personal knowledge as to how the bakers disposed of 
 it, or as to whether or not they sold it, or any of it, or exposed it 
 for sale in the bags in which it was delivered to them; or repre- 
 sented to their, the bakers', customers, that bread sold by them 
 was made of flour of the brands marked on the bags, showing the 
 bags. By delivering to the bakers their floiu- in bags marked as 
 stated, they put it in the power of the bakers to dispose of the 
 flour as that of appellee." *' 
 
 The following cases deal with refilling of second-hand bottles. 
 In Hostetter Co. v. Sommers,^ complainant had long sold "Hos- 
 tetter's Stomach Bitters" in bottles of a peculiar form, and its 
 product had a wide reputation. Defendants sold spurious bitters 
 in bulk, marking them "Stomach Bitters" or " Hostetter 's Bit- 
 ters," with the intent (as the evidence was held to establish) that 
 the purchasers should put them in second-hand Hostetter bottles, 
 and sell them by the drink to customers applying for "Hostetter's 
 Bitters." Held unfair competition.^' 
 
 Hostetter made "Hostetter's Celebrated Stomach Bitters," 
 these words appearing conspicuously on his label. Adams made 
 and sold bitters of their own manufactiu"e, marketing them in 
 bottles of the same size and shape and color as plaintiff's, often 
 using old bottles of the plaintiff's on which "Hostetter" was 
 blown in the glass, but covered by defendant's label. The color 
 and general appearance of defendant's label was very similar to 
 plaintiff's, and it contained similar devices such as the figiu-es of a 
 horse and rider and shield. - The preparation was described in this 
 label as " Clayton & Russell's Celebrated Stomach Bitters." Plain- 
 tiff held entitled to an injunction and to an accounting of profits.^" 
 
 § 131. Substitution by Selling of Inferior Goods in Dress of 
 
 « Citing Coats v. Ilolbrook, 2 Sandf. Martinoni, 110 Fed. 524-1901 (C. C. 
 
 Ch. (N. Y.) 586. N. D. Cal.). "Hostetter's Bitters," 
 
 « 84 Fed. 333-1897 (C. C. S. D. long weU known, were sold by com- 
 
 N. Y.). plainant. Defendant sold to cus- 
 
 " See also Hostetter Co. v. Brueg- tomers inquiring for " Hostetter's 
 
 geman-Reinert Distilling Co., 46 Fed. Bitters," othel' bitters as "H. Bitters," 
 
 188-1891 (C. C. E. D. Mo.); Samuel ^placing them in complainant's empty 
 
 Bros. & Co. V. Hostetter Co., 118 Fed. bottles which still bore the original 
 
 257; 55 C. C. A. 111. labels. Held a fraud on complainant. 
 
 '"Hostetter v. Adams, 10 Fed. 838- Evansv.Von LaeT,32Fed.l53;Sav)yer 
 
 1882 (C. C. S. D. N. Y.); Hostetter v. Crystal Blue Co^v.Hubbard,32Fed.m, 
 
Inferior Goods in Dress of Higher Grade 257 
 
 Goods of a Higher Grade. — "In supplying a customer who 
 orders and expects to get the goods of A., the substitution of 
 any other goods is illegal, unless the customer understands that 
 he is not getting what he ordered and assents thereto. The 
 above-mentioned rule is quite in accordance with the principle of 
 commercial honesty." ^ 
 
 The complainants manufactured an antiseptic called "Ar- 
 gyrol" and defendant, a jobbing druggist, kept silver nuclei- 
 nate, a more or less similar but cheaper preparation, which he 
 was accustomed to offer customers who called for argyrol; it was 
 held to be unfair competition.^"'' 
 
 It is a clear infringement of trade-mark to place in a box bear- 
 ing the trade-mark of one manufacturer the goods of another and 
 then to offer or deliver the goods to purchasers, and the courts 
 will not readily accept an explanation that such substitution was 
 accidental.^^ 
 
 For a dealer to buy his competitor's inferior grade whiskey 
 and sell it imder the name of a high grade brand of that com- 
 petitor is unfair.^^" 
 
 Where distillers and selectors of gin have for many' years put' 
 up and exported their gin in dark glass bottles of a distinctive 
 size and shape, having their firm name, address, and registered 
 monogram trade-mark blown in the glass, one who refills such 
 bottles with an inferior quality of gin, which he sells without 
 notice that such gin is not genuine, infringes their rights, and 
 should be restrained, though the refilled bottles are sold at a less 
 price than the genuine, and do not have such distiller's monogram 
 paper label and stamp on the cork (headnote)."'' 
 
 § 132. Get-up of Wagons, Buildings, etc. — There may be un- 
 fair competition by any sort of unfair representation, — as much 
 by the painting or construction of a wagon or a building as by 
 misuse of a name or a label. The following are cases of this sort. 
 
 In Nokes v. Mueller,^^ both the parties were engaged in the 
 sale of milk in the city of Springfield, Illinois, the appellee hav- 
 
 '«" Cutler on Passing Off, London, "" Teacher v. Levy, 23 R. P. C. 
 
 1904, pp. 1-2. 117-1905. 
 
 '''^ Barnes v. Pierce, 104 Fed. 213- "^ Van Hoboken v. Mohns & Kalt- 
 
 1908 (C. C. N. Y.). See also Fair- enbach, 112 Fed. 528-1901 (C. C. 
 
 banks v. Dunn, 126 Fed. 227. N. D. Cal.). 
 
 " Barnett v. Leuchars, 13 L. T. " 72 111. App. 431. 
 N. S. 495-1865, 
 
258 Dress of Merchandise 
 
 ing been in the business for about sixteen years. During all this 
 time in supplying his customers he used wagons which had a 
 yellow running gear, brown body, and white top, with a picture 
 of two cows, some trees, a nmning brook, some lilies and a fence, 
 and the name "Walnut Grove Dairy" on them. Appellant com- 
 menced business in Springfield in February, 1895, using wagons 
 with a black top, and with no name on them, to deliver milk to his 
 customers. Shortly before this suit, he took them to the shop 
 where appellee had his wagons painted. Prior to this time ap- 
 pellant had had no work done at this shop. These wagons were 
 painted with running gear yellow, body brown and top white. 
 In front of the entrance on either side was a picture of two cows, 
 a mountain, a Swiss castle with a cupola, a nmning brook, and 
 some lilies. In the rear of the entrance, and on either side, on 
 the white tops, there was in black letters the name "Walnut Park 
 Dairy," and under this the name "A. B. Nokes." At this time 
 appellant was living on what was known as the "Walnut Park 
 Farm." The court said: "The appellee in sixteen years has 
 established a large profitable trade, and carries it on under a 
 given nanie, and should be protected from those attempting to 
 usurp his business. The wrong in this case does not consist in 
 appellant painting the running gear of his wagons yellow, or the 
 body brown, or the top white, etc. The wrong is in their accumu- 
 lation, not in any one of them alone; but all combined are suffi- 
 cient to entitle appellee to an injunction. * * * Jt cannot 
 be maintained that appellee so impoverished the vocabulary of 
 the English language, and so exhausted the taste and skill of the 
 artist who lettered and painted the pictures on his wagons, that 
 appellant was compelled to imitate him so closely. We feel con- 
 strained to hold from the facts and circumstances in proof of this 
 case that his purpose was to usurp appellee's business, and draw 
 some of his customers to him, and would thereby injure appellee's 
 business he has been so many years in establishing." 
 
 In N. Y. Cab Co. v. Mooney,^^ plaintiff painted its cabs in a 
 peculiar style to distinguish them from other cabs. Defendant 
 painted his in the same manner, and used plaintiff's trade-mark, 
 slightly changed. Held, injunction rightly granted; that defend- 
 ant had attempted to imitate the cabs of plaintiff to secure trade. 
 Weinstock & Co. v. Marks:^* "The store of plaintiff was known 
 " 15 Abbott's New Cases, 152-1884. *< 109 Cal. 529; 30 L. R. A. 182. 
 
Labels 259 
 
 as 'Mechanics' Store,' and established a wide and honorable 
 reputation as a fair and reliable house with which to deal. He 
 had erected a building of peculiar architecture, there being none 
 Uke it in the city of Sacramento; and defendant thereupon erected 
 a store building, immediately adjoining that of plaintiff, in every 
 respect of similar architecture. He refrained from placing any 
 sign in or upon the building indicating the proprietorship of the 
 business, or designating it in any way so that it might be dis- 
 tinguished from the store of plaintiff. Many of plaintiff's cus- 
 tomers were deceived into purchasing goods in defendant's store; 
 and defendant thus diverted from the plaintiff much of its trade. 
 The court said: "The defendant had the right to erect his build- 
 ing, and erect it in any style of architecture his fancy might 
 dictate. He had the right to erect it in the particular locality 
 where it was erected. He had a right there to conduct a business 
 similar to plaintiff's. He had a right to do all these things, for, 
 of themselves, they did not offend against equity, but when they 
 were done with a fraudulent intent, with the purpose of tolling 
 away plaintiff's customers by a deception, a fraud is practiced, 
 and equity will do what it can to right the wrong. The decision 
 of the trial court in effect ordered defendant to place signs both 
 inside and outside his building, showing to the world the pro- 
 prietorship thereof. We think this decree holds defendant to a 
 rule too strict, in that it requires the proprietorship of the store 
 to be shown. In this particular we think the decree should be 
 modified so as to require that the defendant, in the conduct of 
 this business, shall distinguish his place of business from that in 
 which the plaintiff is carrying on its business, in some mode or 
 form that shall be a sufficient indication to the public that it is a 
 different place of business from that of the plaintiff." 
 
 § 133. Labels. — To discuss these cases as to dress, and espe- 
 cially those relating to labels, in the abstract is very difficult. A 
 court when passing on such a case, has before it, in most instances, 
 one of each of the articles in question. Description is inadequate 
 to convey an exact idea of what information the court obtains 
 from an examination of these objects. The question is, what 
 will be the court's opinion of the similarity in the general effect 
 of the two labels, when it compares them? ^^ 
 
 To classify this sort of cases is hardly possible; to deduce from 
 " Wirtz V. Eagk Bottling Co., 50 N. J. Eq. 164^1892; 24 Atl. 658. 
 
260 Dress of Merchandise 
 
 them any general rules is equally difficult. To use the words 
 of the Sixth Circuit Court of Appeals: "The sharp competition 
 in business of recent years has brought about a great increase ta 
 suits of this character, and the decisions therein have rapidly 
 multiplied. It would be a difficult task to harmonize them upon 
 the principles which all of them recognize. This is because of 
 such an infinite variety in the facts and circumstances with which 
 the courts have had to deal, — a variety perhaps not surpassed in 
 the field of any other department of judicial labor. The deci- 
 sions, however, do undoubtedly help to sharpen the judgment, 
 and often shed a line of light which leads one to a just conclusion. 
 Each case depends upon its own facts and circumstances, and 
 must be decided upon the application thereto of settled principles 
 which have received no substantial modification in recent 
 years" ^^ 
 
 (a) Labels not Registered or Copyrighted are Protected. — In 
 England, many labels are never registered under the Merchandise 
 Marks Acts, because of the requirements of the patent office; and 
 while a larger proportion are registered here, there are many 
 American labels which are protected only by the rules of unfair 
 competition. It is very important, therefore, that the rules of 
 law as to what is a passing off of one label for another be definitely 
 fixed, that those who use them may know the extent of the pfo- 
 tection which the law gives them when their labels are not regis- 
 tered, for it seems that there is a prevailing idea that unless such 
 registration is effected, the label is practically common property. 
 This is very far from the truth. It is just as unfair to copy an 
 unregistered label if a fraud is likely to result as to copy one that 
 is registered. 
 
 (b) Features of an Action as to a Label. — Where the case in- 
 volves the unfair copying of a label, it must first be decided as to 
 what the plaintiff's right in the label is. We have considered 
 here only such labels as are not registered. The piupose of a 
 person who will stoop to simulate an existing label is to confuse 
 his goods with some brand which is more widely known than his 
 own. His aim is to construct a label, which, when closely com- 
 pared with existing ones, will show differences, but which will be 
 so similar to others, that buyers will not detect them in pur- 
 chasing. The decision as to whether his act is fraudulent must, 
 
 '« Proctor & Gamble Co. v. Globe Refining Co., 92 Fed. 357-60-1899. 
 
Labels 261 
 
 to a large extent, be determined by the evidence of the labels 
 themselves, as placed before the court. They are the best evi- 
 dence. 
 
 (c) Kinds of Labels. — Mr. Cutler^' divides labels into two 
 sorts, (1) those "in which the most prominent or salient feature 
 is some device which may or may not be a registered trade-mark, 
 or some catchword or catchwords which the owner claims as his 
 trade name;" and (2) those in which the prominent or salient 
 feature "is the general appearance, or as it is called, the 'get-up' 
 of the label." In the first class, no doubt, Mr. Cutler would 
 include those labels in which the name is the important feature. 
 
 (d) Classification of Label Cases. — As has been noted, it is 
 impracticable, if not impossible, to classify label cases satisfac- 
 torily, on a basis of principles of law, for the principles are the 
 same in all cases. The difficulty is in applying them to various 
 conditions. Consequently, the cases which are deemed important 
 as showing such application of law to fact, are given in the fol- 
 lowing pages, without comment usually, but roughly classified as 
 follows: 
 
 I. Cases in which the name is the principal feature of the label. 
 
 II. Cases involving labels in which the salient feature is some 
 device or catchword, which is copied or simulated. 
 
 III. Cases in which there is no sahent feature, but the whole 
 get-up, including the name, is unfair. 
 
 IV. Cases involving general resemblance and also a likeness 
 in the names used which does not, however, constitute unfair 
 competition. 
 
 V. Cases involving no similarity in name, but a resemblance 
 in general appearance amounting to unfair competition. 
 
 VI. Cases not involving a name, in which the general likeness 
 in get-up is not close enough to be unfair. 
 
 I. Simulation of Labels in Which a Name is the Principal Fea- 
 ture. — The cases here mentioned are in many instances the same 
 in character as those cited in the chapter on "Trade Names — 
 General Principles," under the heading of "Idem Sonans." 
 There are also many instances in the reports of imitation of 
 names, not with the purpose of making the sound the same, but 
 of creating such likeness as will catch the eye. The principles 
 are the same in both instances. Many cases involving names of 
 " Passing Off, London, 1904, pp. 23-24. 
 
262 
 
 Dkess of Merchandise 
 
 this sort are found in the chapters on "Family Names," "Cor- 
 porate Names," "Geographical Names," "Trade Names," — 
 General Principles," "Evidence." In a note below are given 
 cases illustrating this distinction.^^ 
 
 '* See chapter on " Trade Names — 
 General Principles," title "Idem So- 
 nans." Royal Baking Powder Co. v. 
 Dams, 26 Fed. 293-1885 (C. C. E. 
 D. Mich.). The words "Coral Bak- 
 ing Powder" have been held to be 
 in themselves no infringement of 
 "Royal Baking Powder," yet their 
 use in connection with labels bearing 
 a- general resemblance to those of 
 the Royal Co. in colors, ornamenta- 
 tion and otherwise, was enjoined. 
 Sawyer v. Kellogg, 7 Fed. 720- 
 1881 (C. C. N. J.). Complainant's ' 
 bottles of bluing bore a blue label, 
 containing in several compartments, 
 inscriptions in silver bronze letters, 
 one of which was the name of the 
 article, "Sawyer's Crystal Blue and 
 Safety Box." Defendant on the 
 order of parties for whom he made 
 bluing, used a label of the same size, 
 color and type, divided into com- 
 partments corresponding to those on 
 complainant's label, one of which 
 contained the name of the article, 
 "Sawin's Soluble Blue and Pepper 
 Box." Held, that complainant was 
 entitled to an injunction against the 
 use of this label, and to an account- 
 ing of profits in order to ascertain 
 damages. Clark v. Clark, 25 Barb. 
 76-1857. Plaintiff manufactured 
 thread at Glasgow, and used as a 
 trade-mark four concentric circles, of 
 different colors, containing in the 
 inner circle the number of the cotton, 
 in the next, "J. Clark, Jr., & Co., 
 Mile End, Glasgow," in the next "Six 
 cord cabled thread warr'd 200 
 yards," and in the outer circle "Sole 
 
 agent, Wm. Whiteright, New York." 
 Defendant, the New York agent of 
 J. & J. Clark & Co., manufacturers 
 of similar thread at Paisley, used a 
 mark closely resembling plaintiff's in 
 appearance, there being four concen- 
 tric circles of the same size and same 
 colors, and the details of arrange- 
 ment being the same. The inner cir- 
 cle had the same number, the next 
 the words "Clark & Co., Seed Hill, 
 Paisley," the third "Six Cord Cabled 
 thread warr'd 200 yards," and the 
 outer circle "Sole agent, George 
 Clark, New York." This showed an 
 intention to imitate and a probabiUty 
 of deception and the defendant was 
 required to substitute for "Clark & 
 Co." the firm name "J. & J. Clark 
 & Co." and to change the order of 
 colors and the style of lettering and 
 figuring. Conrad v. Uhrig Brewing 
 Co., 8 Mo. App. 277-1880. Conrad, 
 a brewer, for two years prior to this 
 suit, caused beer to be made for him 
 by a process called the "Budweiser 
 Process." Budweiss is a small Bohe- 
 mian city where good beer is made. 
 Conrad placed upon this beer, a label 
 in the shape of a necktie in the 
 center of which were three C's with 
 barley and hop leaves, bearing these 
 words: "We guarantee that this beer 
 is brewed especially for our own 
 trade, according to the Budweiser 
 process, of the best Saazar hops and 
 Bohemian barley, and warranted to 
 keep in any climate. Take notice 
 that all our corks are burned with 
 our trade-mark, etc." After his beer 
 had made a reputation for itself, de- 
 
Labels 263 
 
 //. Cases Involving Labels in Which the Salient Feature is a 
 Device or Catchword which is Copied or Simulated. — He who 
 claims a label must establish to the court's satisfaction, that the 
 public has associated with the distinctive or salient features of his 
 label the brand of goods he puts on the market under that label. 
 Until he does that, he has no ground for claiming the right to 
 restrain another person from using the device, or mark, or name 
 which appears on his label. If the feature relied on be a device 
 or symbol, even the names used may be entirely different and it 
 still be shown that there is a distinct connection between this 
 device, which both parties are using, and the plaintiff's goods. 
 So, also, where the name is the distinctive feature, the get-up 
 otherwise may be very different. In Powell v.- Birmingham 
 Vinegar Brewery Co. (supra), the two labels were entirely differ- 
 ent except that both bore prominently the words "Yorkshire 
 Rehsh." 
 
 This salient feature need not be exactly copied; it may be an 
 approximation. In Stephens v. Peel,^^ plaintiffs and their pred- 
 ecessors had long sold ink known as "Stephens' Blue Black," 
 and these words appeared prominently in large, white capitals 
 on labels of peculiar pattern as to coloring aB,d arrangement of 
 words. Defendant then put on the market ink in bottles bearing 
 labels on which appeared prominently in large, white capitals, 
 "Steelpens Blue Black," and in which the coloring and arrange- 
 ments of the other words and the devices on the label closely re- 
 sembled plaintiff's. This was a colorable imitation, and an in- 
 junction was granted. 
 
 The National Biscuit Company attached to the ends of cartons 
 a trade-mark, consisting of the words "In-er Seal," printed in 
 white letters with a fanciful design on a vivid red label with 
 clipped corners. Defendant began selling biscuits in packages 
 of the same size and sometimes of similar color, shape and ap- 
 pearance, all having on the ends, in white letters on labels of the 
 same shade of red, with clipped corners, the trade-mark "Fac- 
 
 fendant procured from the same en- with our trade-mark. Beware of 
 
 graver a label of the same size, shape imitation. The world renowned 
 
 and general appearance and having Budweiser lager-beer." These labels 
 
 the same peculiar devices of a crown were used for his beer, which was 
 
 and wreaths. It bore three letter B's inferior to plaintiff's and cheaper, 
 
 and the following words: "Cau- Injunction granted, 
 tion! See that our corks are burned '» 16 L. T. N. S. 145-1867. 
 
264 Deess of Meechandise 
 
 tory Seal," with a fanciful design. The defendant was enjoined 
 from using this trade-mark and label without a clearer differ- 
 entiation of the same from complainant's.^" 
 
 A brewer used for his bottled beer a label with a conspicuous 
 diagonal red band, bearing in white letters the name of the beer. 
 Another brewer, in the same city, adopted a diagonal red label, 
 the general effect of which resembled that of the former, and did 
 not satisfactorily explain how he came to adopt this particular 
 label. Injunction against him.®^ 
 
 Plaintiff made liquid bluing, marked as "Sawyer's Crystal 
 Bluing." An employee of his began the manufacture of liquid 
 bluing; his labels did not resemble complainant's and the name 
 was quite different, but he used bottles of the same size and shape, 
 with a bright metallic perforated cap closely resembling that on 
 complainant's bottles. Injunction ^anted.^^ 
 
 ///. Cases in Which There is no Salient Feature, but the Whole 
 Get-up, Including the Name, is Unfair. — The largest class of 
 cases under the head of labels is the second mentioned by Mr. 
 Cutler, in which there is no one determining feature, and in which 
 it is often hardly possible to single out particular characteristics 
 which may be termed salient or conspicuous, but which show re- 
 semblance in many details, producing a similarity of general 
 effect. 
 
 It will be seen in the chapter on "Intent" that an intent 
 to deceive and defraud may be presumed from facts which seem 
 to the court to show that the defendant's acts will cause loss of 
 business to the plaintiff, or deceit of purchasers. Various au- 
 thorities have held that such an intent may be presimied from 
 facts showing that one article or its label or general get-up is an 
 approximation of that of another.^' 
 
 Where a company has worked through years to build up a 
 trade, and the public has become acquainted with its goods, it is 
 entitled to demand protection against a copying of its general 
 get-up. A purchaser is not bound to be painstaking in selecting 
 his purchase. Although he has the opportunity of comparing 
 
 «» Ohio Baking Co. v. National Bis- «2 Sawyer Crystal Blue Co. v. Hub- 
 
 cuit Co., 127 Fed. 116-1904 (C. C. bard, 32 Fed. 388-1887 (C. C. Mass.). 
 
 A. 6th Cir.). See 7 Fed. 720. 
 
 6' Anheuser-Busch Brew. Assn. v. " Devlin v. McLeod, 135 Fed. 165- 
 
 Clarke, 26 Fed. 410-1886 (C. C. Md.). 1904 (C. C. W. D. N. Y.). 
 
Labels 265 
 
 the labels and wrappings of various articles, he is not bound to do 
 so. If the commodity he desires costs very little he is still more 
 likely to give little heed to what he gets and courts will take 
 judicial notice of this fact. If there are but slight and minor 
 differences between the article he knows from having used it 
 before, and some competing article, so that he cannot easily dis- 
 tinguish them, he may be deceived and buy the article he did not 
 intend to buy. Where the differences are less easily distinguished 
 than the likenesses — where the ordinary purchaser would be 
 more likely to believe the two articles were the same, than to 
 believe they were different — it is a case of unfair competition. 
 For instance, in Sterling Remedy Company v. Gorey,^* the com- 
 plainant sold octagonal cascara tablets marked "C. C. C," and 
 on the boxes were the words "Cascarets, Candy Cathartic," and 
 other matter. Defendant's tablets were exactly like com- 
 plainant's, except for one letter "G," and the boxes, which were 
 of the same shape and nearly the same color, bore the word ' ' Cas- 
 cara" and (it seems) also the words "Candy Cathartic." There 
 were, however, dissimilarities sufficient to make it easy, on com- 
 paring the boxes, to distinguish them. The resemblance was 
 considered more observable to an ordinary purchaser than the 
 differences and defendant was charged with unfair competition. 
 
 It often happens that the imitation of any particular detail, 
 including the name of the offending article, could not have been 
 interfered with, yet the imitation of several features, resulting in 
 a similar general effect, has been considered unfair competition.^^ 
 
 Sperry & Co. v. Perdval Milling Co., 81 Cal. 252-1889; 22 Pac. 651. Plaintiff 
 had for some time used "Germea" as a trade name or brand for a kind of meal 
 used for mush. Defendant subsequently placed on the market a similar article 
 marked "Golden Eagle Germ." It was put up in packages of the same size, 
 shape, and color as plaintiff's and had attached labels of the same size and shape, 
 the words and pictures on the labels being in many cases similar, of the same 
 colors, and similarly arranged. The differences consisted in the trade name, the 
 name of the proprietor and in certain minor details. Plaintiff held entitled to 
 injunction. Bains & Sons v. White, Haucke & Co., 107 Ky. 114-1899; 52 S. W. 
 970. In 1889 plaintiff put out a tobacco in 12-pound boxes, 156 twists to the 
 box or 13 twists to the pound, and it soon acquired a reputation under the name 
 "Rainbow Twist." Defendant began in 1893 to put tobacco in same 12-pound 
 boxes, 13 twists to the pound, 156 twists to the box. They used same wreaths as 
 
 " 110 Fed. 372-1901 (G. C. N. ,D. " Fischer v. Blank, 138 N. Y. 244- 
 
 Ohio). 1893; 33 N. E. 1040. 
 
266 Dress of Merchandise 
 
 the plaintiff on their label, because the printer had them on hand, and marked 
 the label "The Best Twist," etc. The general arrangement of the words 
 was similar on both labels, "* * * so that, when the appeUees had gotten 
 a box of twist tobacco on the shelf of the retail dealer the result was that they 
 had duphcated the 'Rainbow Twist' of their rivals in all respects except as to 
 the words on the label. Even the arrangement, size and style of the printing 
 were the same; the departure from the appellant's brand consisting solely in 
 substituting the word 'Best' for the word 'Rainbow,' and the words 'White, 
 Haucke & Co.,' for the words 'J. H. Rains & Sons.' The result was confusing 
 on the market, and purchasers who wanted 'Rainbow Twist' were given the 
 'Best Twist' to the pecuniary disadvantage of the appellants and the annoy- 
 ance of the deceived tobacco chewer" (id. p. 116). Held, unfair competition. 
 Parlett v. Guggenheimer, 67 Md. 542-1887; 10 Atl. 81. Plaintiffs sold tobacco 
 marked and known as "Golden Crown" and further distinguished by four tin 
 tags of a special description. Defendants sold tobacco marked "Golden Chain" 
 in packages bearing similar tin tags and resembling plaintiffs' in dress and ap- 
 pearance. Plaintiffs were held entitled to an injunction and accounting. It was 
 set up in defense that plaintiffs had no right to use the words "Golden Crown," 
 as they had long been used as a trade-mark to one Palmer. It appeared, however, 
 that Palmer had, in a Pennsylvania court, been refused protection for the trade- 
 mark claimed by him, on the ground that he falsely represented his goods to 
 be made in Havana. Held, that the defense was unavailing. Centaur Co. v. 
 Link, 62 N. J. Eq. 147-1901; 49 Atl. 828. The resemblance in dress is thus 
 described in the opinion: "The compound of the Link Drug Company is put up 
 in two-ounce paneled bottles, so nearly similar in size and appearance with those 
 of complainant's as to present no substantial difference. The word 'Castoria' 
 is printed in similar and conspicuous type, the only difference being the first 
 and last letters, — a difference not calculated to attract attention — and in the 
 fact that the name upon complainant's bottle is slightly curved, and in the de- 
 fendant's bottle straight — this also being a difference which would not arouse 
 the attention of an unsuspecting purchaser. Upon both is the formula of Dr. 
 Pitcher. Over the complainant's formula are the words 'Receipt of old Dr. 
 Pitcher,' in small type, and over the formula of the Link Drug Company bottles 
 'Formula of Old Dr. Pitcher,' in large letters. The remainder of the printed 
 matter differs in form and somewhat in substance, and upon the defendant's 
 label is the picture of a bee-hive, with the words 'trade' jipon one side of it and 
 'mark' upon the other. On the bottom of the complainant's label is the name 
 of ' Charles H. Fletcher,' in small letters. Upon the label of the Link Company, 
 in large letters, are the words ' C. W. Link Drug Co.' The label of the complain- 
 ant is made of shghtly tinted white paper, and that of the Link Drug Company 
 of white paper; but unless placed together, the difference in color is not per- 
 ceptible" (id. p. 150). Injunction granted. Taendsticksfabriks Akticbolagai 
 Vulcan V. Myers, 139 N. Y. 364^1893; 34 N. E. 904. A Swedish corporation 
 made matches which it put up in boxes bearing the trade-mark "The Vulcan," 
 in red letters over a globe, on each side of which were representations of various 
 medals. The labels also bore the words "Damp Proof," "Trade Mark," and 
 "Paraffin Matches." A competitor later began to put up matches in boxes 
 
Labels 267 
 
 of the same size having the same general appearance, with a label bearing in red 
 letters of the same style the word "Vulture," a picture of a vulture with out- 
 spread wings and a facsimile of the medals of the Swedish company; also the 
 words "Damp Proof," "Trade Mark" and "Paraffin Matches" arranged in 
 the same way as upon the plaintiff's boxes. The court said: "The similarity 
 between the names employed and the devices used; the identity of the medals 
 represented and the correspondence of size, color and general appearance, when 
 combined upon the wrapper of a box, are so close and striking that an intending 
 purchaser of the plaintiff's goods would be likely to be imposed upon if the 
 matches sold by defendant in these packages should be offered. While competi- 
 tion is essential to the life of commerce and is the consumer's main defense 
 against extortion, it should be fair and honest, and the manufacturer who pro- 
 duces an article of recognized excellence in the market, and stamps it with the 
 insignia of his industry, integrity and skill, makes his trade-mark a part of his 
 capital in business, and thus acquires a property right in it, which a court of 
 equity will protect against all forms of commercial piracy" (id. p. 367). Opper- 
 mann v. Waterman, 94 Wis. 583-1896; 69 N. W. 569. Defendant's packages 
 of dyes closely resembled plaintiff's in size, shape and general appearance; 
 defendant's labels were similar to the peculiar labels used by plaintiff, in the 
 colors of the ink and arrangement of printed matter. Plaintiff's dyes were 
 known as "German Household Dyes," and defendants called theirs "Excellent 
 German Household Dyes." Held, unfair competition. Bickmore Gall Cure Co. 
 V. Kams, 134 Fed. 833-1905 (C. C. A. 3d Cir.). The principal features of re- 
 semblance were the use of the two phrases "Be sure to work the horse" and 
 "always work the horse while using the cure;" the use of two pictures, one of a 
 single working horse, the other of four working horses; the use of boxes sub- 
 stantially the same size and of exactly the same shape, both being of yellow or 
 yellowish €olor. "The true question is not whether the boxes, circulars, ad- 
 vertisements and directions of the appellees are, in their details, the same, or 
 nearly the same, as those of the appellant, but whether the general effect pro- 
 duced by those of the appellees is such as would be likely to lead ordinary pur- 
 chasers to accept their gall cure as being that of the appellant" (id. p. 835). 
 It should be noted that the earher trader's medicine had come to be popularly 
 known as the "Work the Horse" Cure. In Devlin v. McLeod, 135 Fed. 164r- 
 1904 [C. C. W. D. N. Y.] it was said that while the words "Toothache Gum" 
 are not subject to exclusive appropriation as a trade-mark, yet their use by de- 
 fendant in connection with the use of labels in many ways similar to those of 
 complainant, and of packages of about the same size, called for injunctive re- 
 Uef. Kostenng v. Seattle Brevying & Malting Co., 116 Fed. 620-1902 (C. C. A. 
 9th Cir.). Complainant sold beer called "Rainier Beer," with a label of pecuhar 
 coloring and design. Defendant sold "Rhinegold Beer," in bottles of the same 
 color and shape, and with a label of the same size, the same peculiar coloring, 
 and similar in arrangement and in most of its features, the differences being 
 mainly in the words and the landscape views. This was unfair. 
 
 Enoch Morgan's Sons Co. v. Whittier-Coburn Co., 118 Fed. 657-1902 (C. C. 
 N. D. Cal.). Complainant and its predecessor had long manufactured a soap 
 under the trade-mark and name "Sapoho," and had put it up in a peculiar 
 
268 Dkess of Merchandise 
 
 style of package. Defendant had been the agent of complainant, and after the 
 termination of its agency began to sell soap of the same size and shape as com- 
 plainant's, and marked "W. C. Co.'s Sapho," whereas complainant's was marked 
 "E. Morgan's Sons N. Y., Sapolio.'' There was considerable resemblance as to 
 color and general appearance between defendant's wrapper and label and com- 
 plainant's. Held, unfair competition. Moxie Nerve Food Co. v. Baumbach, 32 
 Fed. 205-1887 (C. C. E. D. Tex.). Complainant used a trade-mark con- 
 sisting of the word "Moxie," with a label bearing a certain design and other 
 descriptive words. He sold a beverage known as "Moxie Nerve Food," put 
 up in a champagne bottle with a light^brown wrapper. Defendant afterward 
 began to sell a beverage of similar appearance and taste, put up in a champagne 
 bottle, witlv a label and wrapper sufficiently resembling complainant's to de- 
 ceive the unwary purchaser. This bottle was marked "Standard Nerve Food." 
 Injunction issued. Jennings v. Johnson, 37 Fed. 364-1888 (C. C. Me.). 
 Plaintiff and his predecessors had long sold "Johnson's Anodyne Liniment" 
 in bottles with blue wrappers and labels bearing a facsimile of the name "A. 
 Johnson." Defendant then put on the market what he also called "Johnson's 
 Anodyne Liniment," in bottles of the same size, with a similar blue wrapper and 
 a label of similar appearance, though of slightly differing color, with a, facsimile of 
 the name "F. E. Johnson." There was proof of actual deception. Injunction 
 granted. Myers v. Theller, 38 Fed. 607-1889 (C. C. S. D. N. Y.). Com- 
 plainants made and sold, in bottles of peculiar shape, "Hostetter's Stomach 
 Bitters." The label bore a representation of St. George and the dragon, a 
 black shield, the words "Hostetter's Celebrated Stomach Bitters," and some 
 additional matter. Defendants put upon the market an article of their own, in 
 bottles of the same color and peculiar shape as complainant's, and bottles with 
 the words "Theller's Celebrated Stomach Bitters," a monogram of the letters 
 "A. T." in place of St. George and the dragon, and a black shield resembUng 
 that on complainant's. Otherwise there were resemblances and also points of 
 difference between the labels. Held, unfair competition. Klotz v. Hecht, 73 
 Fed. 822-1896 (C. C. S. D. N. Y.). Complainant was the successor of a famous 
 Parisian manufacturer of toilet articles, and continued the business under the 
 old trade-names "Ed. Pinaud" and "Parfumerie Ed. Pinaud." Defendant, 
 who had been employed by complainant, then began to sell similar goods, 
 which although made in the United States, bore labels in French, and were 
 put up as to give the impression that the goods were French. One label indi- 
 cated that the contents were prepared by "M. Hecht, lately with" (those 
 words being in French) "Parfumerie Ed. Pinaud, Paris." There was also 
 blown into the glass a design resembling one blown into complainant's bottles. 
 An injunction was granted. C. F. Simmons Medicine Co. v. Simmons, 81 Fed. 
 163-1897 (C. C. Ark.). Defendant made and sold a medicine under a name 
 similar to that of complainant's medicine, including the name of his father, the 
 inventor, who had transferred all rights in the medicine to the predecessor of 
 complainant. Defendant advertised himself as the son of the inventor, and as 
 having been brought up in his laboratory. His packages resembled complain- 
 ant's in various ways, such as the portrait, autograph signature, arrangement 
 of words, and directions for using. The medicine was used largely by ignorant 
 
Labels 269 
 
 and illiterate persons. Held, unfair competition. Franck v. Frank Chicory Co., 
 95 Fed. 818-1899 (C. C. E. D. Wis.). Complainants were the American branch 
 of a German firm that had long made and sold chicory as a substitute for coffee. 
 Their product, put up in red packages of cylindrical shape, was somewhat pop- 
 ular in the vicinity of Milwaukee. Defendant's company was afterward or- 
 ganized and made and sold, in the neighborhood of Milwaukee, a similar product, 
 put up in packages of similar shape and color, with labels of similar design, 
 bearing the name "Frank Chicory Co." The name Frank was afterward with- 
 drawn. Held, unfair competition. Injunction granted against the use of the 
 same color as well as against the use of a similar label and the name "Frank." 
 Liebig's Extract of Meat Co., Ltd., v. Libby, McNeill & Libby, 103 Fed. 87-1900 
 (C. C. N. D. 111.). The complainant had possessed a trade in its product for more 
 than thirty years, and for many years its trade had been of great extent, aided 
 by large expenditures for advertising. The defendant entered the market with 
 an extract well distinguished in the marking and color of the package, but sub- 
 sequently adopted a dress for its goods which clearly simulated that of the com- 
 plainant, and was calculated to deceive. It assumed the fictitious title of " Liebig 
 Fluid Beef Co." with a label stamped in blue "J. Walker," and the color and 
 general appearances of the packages closely resembling that of complainant. 
 Held, that taking all the circumstances, it was evident that deception was both 
 intended and Uable to arise in palming off the goods upon ultimate purchasers 
 as those of the complainant. In Haslinghuis v. P. Harrington Sons, 237 Fed. 301 
 (D. C. N. H. 1916) (7 Trade-mark Rep. 4) plaintiff's label was imitated in its 
 peculiar shape, that of a heart in its salient word, "Geneva," and in certain 
 devices and the arrangement of the reading matter, resulting in an almost 
 identical general appearance. Other examples of collocations found deceptively 
 imitative are found in Wm. Wrigley, Jr., & Co. v. L. P. Larsen, Jr., Co., 195 Fed. 
 568 (Spearmint and Peptomint packages) ; Luyties Bros. v. E. Zimmermann & 
 Co., 149 A. D. (N. Y.) 542; Mellwood Distillery Co. v. Harp&r, 167 Fed. 389 (re- 
 semblance of appearance of label, in connection with similar name and misleading 
 statements); Grocers' Supply Co. v. Dupuis, 219 Mass. 576 (107 N. E. 389) 
 (red label of distinctive design imitated, as well as trade name "Cormond 
 Water," in which there was no exclusive right). 
 
 IV. Cases Involving a General Resemblance and also a Like- 
 ness in the Names Used in Which Relief was Denied. 
 
 Proctor & Gamble Co. v. Globe Refining Co., 92 Fed. 357-1899 (C. C. A. 6th 
 Cir.). Complainant manufactured soap which it sold in packages having a 
 yellow wrapper, on one side of which was printed in black letters the words 
 "Every Day Soap,'' together with the name and location of the maker. There 
 was also a small circular figure containing a representation of a moon and stars 
 on a black ground. Defendant put up its soap in packages of similar size and 
 shape, having a yellow wrapper, on one face of which was a black ground con- 
 taining only the words "Everybody's Soap" in letters formed by the yellow 
 paper of the wrapper showing through the black field of the label. The print 
 and figures displayed on the sides and back of the wrapper bore no resemblance 
 
270 Debss of Merchandise 
 
 to anything on complainant's, and the name and location of the maker were 
 conspicuously shown on one side of the package. This statement of the case 
 is taken from the headnote. Held, that an order refusing complainant a pre- 
 liminary injunction would not be disturbed. Postum Cereal Co., Ltd., v. Ameri- 
 can Health Food Co., 119 Fed. 848-1902; 56 C. C. A. 360 (C. C. A. 7th Cir.). 
 Complainant's cereal product was put up in a package with a yeUow label con- 
 taining general printed matter, the conspicuous words being "Grape-nuts," 
 the trade-mark or trade name printed on a horizontal black or dark-blue band, 
 in yellow letters. Defendant's cereal was put up in a package of the same size 
 and shape, with a label of the same size of a shghtly Ughter shade of yellow. 
 There was a good deal of difference in the printed matter, and the prominent 
 words were "Grain-Hearts," printed in white letters on a blue band running 
 obUquely across a large red heart, a feature which corresponded to nothing in 
 complainant's label. The size of the package and the color of the label were both 
 in common use for cereals or breakfast foods. There was no proof of actual 
 deception. Held, no infringement of trade-mark nor unfair competition. 
 Gessler v. Grieb, 80 Wis. 21-1891; 48 N. W. 1098. Plaintiff sold medicme in 
 boxes labeled "Gessler's Magic Headache Wafers," with directions for use, etc., 
 and the manufacturer's name and address. Defendant sold medicine in sim- 
 ilar boxes, wrapped, however, in paper of a different color, and labeled "Brown's 
 Alpha Headache Wafers," with similar directions, and a different name and 
 address as those of the manufacturer. Held, no infringement, and no grounds 
 for injunction. Solis Cigar Co. v. Pozo, 16 Colo. 388-1891 ; 26 Pac. 556. Parties 
 were both makers of cigars at Denver. Their labels contained several words 
 and designs often used on such labels, such as the picture of a tobacco plant, 
 and the words "Fabrica Tobacos" and "Habana." The name or brand on 
 complainant's label was "El Cabio," while the name on defendant's label 
 (adopted subsequently to complainant's) was "El Cavio." The type on the 
 two labels, however, and the details in the pictures were quite dissimilar, and 
 the name of the manufacturer was printed conspicuously after the name of the 
 brand, "De R. Solis" on one label, and "De Pozo and Suarez" on the other. 
 No actual deception of purchasers was shown. Held, no infringement. In 
 Packham & Co., Ltd., v. Sturgess & Co., 15 R. P. C. 669-1898, the get-up of the 
 goods was held not to be sufficiently close to make deception probable (in spite 
 of the identity of name, the goods of each party being called "Sparkling Lime 
 Wine"). 
 
 V. Cases Involving no Similarity in Names, but a Resemblance 
 in General Appearance Amounting to Unfair Competition. — 
 Cases of this sort have long been held to be unfair. As early as 
 1849 it was held, that sale of "Ohio Liniment" in bottles and 
 with labels very similar to those used to market "Chinese Lini- 
 ment" was not proper .^^ 
 
 The presence of a name on a label, even when showing dis- 
 «« Coffeen v. Brunton, 4 McLean, 516-1849; Fed. Gas. 2946. 
 
Labels 271 
 
 tinctly, will not excuse or justify a similarity of get-up in other 
 respects. This fact sometimes increases the liability to injury, 
 for people familiar in a general way with the plaintiff's device as 
 marking its particular brand, and subsequently seeing a similar 
 label on similar goods, but bearing defendant's name, might 
 readily forget the plaintiff's name, and infer that defendant was 
 the manufacturer of the goods associated in their minds with that 
 kind of a seal, and so be led to order from him under the impres- 
 sion that he manufactured the brand which was in fact made by 
 the plaintiff." 
 
 iV. K. Fairbank Co. v. R. W. BeU Mfg. Co., 77 Fed. 869-1896. Complainant 
 manufactured soap powder of a yellow color and devised a distinctive yellow 
 package, bearing the words "Gold Dust" and "Washing Powder," together 
 with the makers' name "and numerous indicia and directions upon the various 
 panels. After complainant had advertised and sold the powder for two or three 
 years, defendant company began manufacturing a yellow washing powder, 
 which it styled "Buffalo Powder," put up in packages of the same size as com- 
 plainant's, using a yellow wrapper, but making numerous changes in its indicia, 
 all of which constituted an approach to those used by complainant. Held, that 
 notwithstanding that the word "Buffalo," together with the defendant's name 
 on the package, was distinctive, there was a simulation of complainant's pack- 
 age which entitled complainant to an injunction restraining the sale of that 
 particular form of package, "or any other form which should, by reason of the 
 collocation of size, shape, coloring, lettering, spacing and ornamentation, present 
 a general appearance as closely resembhng complainant's packages as the one 
 complained of; but that a clause should be added to the effect that the injunction 
 should not be construed as preventing the sale of packages of the size, weight, 
 shape, or color of complainant's packages provided that they were so differ- 
 entiated in general appearance as not to be calculated to, deceive the ordinary 
 piu-chaser" (from headnote). Even though the court is satisfied that a new 
 form of package was devised by defendant, with an intent to stimulate com- 
 plainant's package, the continued use of such package will not be enjoined 
 unless the similarity is of a character to convey a false impression to the public 
 mind, and to mislead and deceive an ordinary purchaser exercising ordinary 
 care, but in applying the test of likelihood of deception of an ordinary pur- 
 chaser exercising ordinary care regard must be had to the class of persons who 
 purchase the particular article for consumption, and to the circumstances or- 
 dinarily attending their purchase. Defendant's packages of soap powder 
 were of the same size and form as plaintiff's, and wrapped in paper of the same 
 color, the labels also were similar in their combination of colors and arrange- 
 ment and appearance of printed matter. Actual deception was shown. Held, 
 unfair competition. Hildreth v. McDonald Co., 164 Mass. 16-1895; 41 N. E. 
 56. Plaintiff made molasses candy in pieces of a certain size and wrapped them 
 6' Moxley v. Brawn, 93 111. App. 189-1900. 
 
272 Dress of Merchandise 
 
 in papers with twisted ends and printed the word "Velvet" in red script upon 
 the middle and ends of the wrappers. Others had used the same method of. 
 wrapping candy, but had not used the word "Velvet." The defendant used the 
 same combination of size and shape of candy and the same kind and size of paper 
 and manner of wrapping, all of which it was held it had a right to do. But it 
 also printed the word "McDonald" upon its wrappers, but in Roman letters 
 instead of script and upon the middle of the wrappers only (not on the ends). 
 The court enjoined the printing of the red letters upon its wrappers by defend- 
 ants, considering that this, in connection with the other resemblances, tended 
 to deceive the public. McCann v. Anthony, 21 Mo. App. 83-1886. The 
 plaintiff for a long time had made "Old Coon Smoking Tobacco," and for 
 years the defendant had made "Old Bachelor Smoking Tobacco." In 1883 
 the plaintiff began to put up "Old Coon" in cloth bags, having formerly used 
 paper bags. In the fall of the same year defendant began putting up "Old 
 Bachelor" in cloth bags of the same size, and at the same time changed his label, 
 which before had not been at all Uke the labels of the plaintiff, to a label similar 
 to plaintiff's in form, size and color. On the plaintiff protesting against this 
 defendant added to his label the words "Not Old Coon." Two witnesses 
 testified that they had been deceived by defendant's label. The court here 
 says: "The governing principle is that one manufacturer shall not be allowed 
 to impose his goods upon the pubUc as the goods of another manufacturer and 
 so derive a profit from the reputation of the other. It is not necessary that the 
 trade-mark, trade name, sign, label, or other device which is employed by one 
 merchant for that purpose shall be an exact imitation or counterfeit of the 
 trade-mark, trade name, sign, label, or other device employed by the other man- 
 ufacturer. Nor is it required that the imitation be so close as to deceive cau- 
 tious and prudent persons; it is sufficient that it be so close as to deceive the 
 incautious and unwary, and thereby work substantial injury to the other manu- 
 facturer" (id. p. 89). Held, that the use of the words "Not Old Coon" did not 
 sufficiently differentiate, in view of the close similarity in general appearance. 
 County Chemical Co. v. Frankenburg, 21 R. P. C. 722-1904. Plaintiff, in Jan- 
 uary, 1902, began to sell in a green oblong box repair kits for pneumatic tires. 
 The boxes bore a label covering nearly whole of top of lid, had background of 
 gold with sUght green dots, and words "Chemico Repair Outfit, complete with 
 the best materials for the repairs of Pneumatic Tyres." In October, 1902, defend- 
 ant got from the maker of plaintiff's labels samples of boxes for repair outfits, 
 among which was plaintiff's, and then ordered a large quantity to be "Exactly 
 hke plaintiff's in color and style of printing," and used "Triumph" instead of 
 "Chemico" as a name, and instead of words "The County Chemical Company, 
 Ltd., Excelsior Works, Birmingham," defendant ordered that his box should 
 bear words "manufactured in Birmingham." The output was inferior to 
 plaintiff's. In July, 1903, plaintiff discovered the operations of defendant and 
 began suit in January, 1904. Held, that plaintiff was entitled to an injunction, 
 but not to an order for the destruction of defendant's boxes and their deUvery 
 to him, in view of his laches in delaying six months. "From July to December 
 they slept on their rights." 
 
Labels 273 
 
 VI. Cases not Involving a Name, in Which the General Likeness in 
 Get-up is not Close Enough to be Unfair. ' 
 
 Philadelphia Novelty Mfg. Co. v. Rouss, 40 Fed. 585-1889 (C. C. S. D. N. Y.). 
 The resemblance between defendant's package and complainant's consisted in 
 similarity of color of boxes and wrappers, and in the labels being white with a 
 woman's head in the center. There were marked differences in the size or 
 weight of the packages, the words on the labels and otherwise. Held, no de- 
 ceptive simulation. Continental Tobacco Co. v. Larm & Brothers Co., 133 
 Fed. 727-1904 (C. C. A. 4th Cir.). Defendant's plug tobacco was put up in a 
 way somewhat similar to complainant's, including the use of a tag of similar 
 size and color, though the printed matter on the tag was entirely different. 
 The method of putting up the tobacco, however, was largely the same as that 
 followed by the trade in general, and not peculiar to the parties. Held, that 
 no unfair competition was shown. Heinz v. Lidz Bros., 146 Pa. St. 592-1891; 
 23 Atl. 314. Suit to enjoin defendant from using on fruit preserves and similar 
 goods a label alleged to resemble plaintiff's sufiBciently to mislead the public. 
 The words on the labels were wholly different, but there was some similarity 
 in the colors and arrangement of the fruits depicted. Held, that defendant's 
 label was not likely to deceive a purchaser of ordinary intelligence. Injunction 
 denied. In such a case the possibility of deception is not enough; it must appear 
 probable that persons of ordinary intelligence using ordinary care would be 
 deceived, and the fact that after the lapse of considerable time no one appears 
 actually to have been deceived is strong evidence that there is no probability 
 of deception. Radam v. Capital Microbe Destroyer Co., 81 Tex. 122-1891; 16 
 S. W. 990. The use by defendant, in seUing a patent medicine, of jugs similar 
 in size and color, with some similarity, but other marked points of difference in 
 the labels, held, not to amount to unfair competition. The resemblance must 
 be sufficient to deceive a purchaser of ordinary care. King & Co., Ltd., v. Gil- 
 lard & Co., Ltd., 22 R. P. C. 327-1905; affirming 21 R. P. C. 589. Plaintiff 
 had long made and sold certain preparations of dried materials for soups. De- 
 fendant began to make and sell similar preparations, put up in packets and 
 boxes of similar forms and sizes, and with labels somewhat resembling plaintiff's 
 in design and appearance, but in different colors and with the defendant's name 
 "Gillard's" in place of "Edwards'," the name used by the plaintiff. Held, 
 that the resemblance was not sufficiently close to amount to fraudulent or de- 
 ceptive simulation. Schweppes, Ltd., v. Gibbens, 22 R. P. C. 601-1905. Plain- 
 tiff sold soda water in bottles with a neck label of chocolate color and white 
 border, with a red medallion in the center. The label bore the maker's name. 
 Defendant afterward began to sell soda water in bottles bearing a label of simi- 
 lar color and border, and with a red medallion in the center, the words, how- 
 ever, being different, giving defendant's name conspicuously, and the red me- 
 dallion bearing her trade-mark, the figure of a man, instead of the fountain 
 trade-mark printed on the medaUion of plaintiff's label. Defendant only used 
 one label on her bottles, while plaintiff used two, and there was some differ- 
 ence in size and shape of bottles. Held, that defendant's labels were not 
 calculated to mislead. 
 
274 Dbess of Merchandise 
 
 Under the general head of imitation of dress, or general ap- 
 pearance, should also be placed a few cases involving miscel- 
 laneous features imitated that are somewhat sui generis, in- 
 volving imitation in such particulars as the card for hooks and 
 eyes, the flag of an auctioneer, the title of a popular song, the 
 capsule of a bottle, etc. For instance in DeLong Hook & Eye 
 Co. V. Excelsior Hook & Eye & Fastener Co.,^ the cards to which 
 defendant's hooks and eyes were attached closely resembled 
 complainant's in size, color, spacing, manner of printing, and 
 mode of attaching the eyes to the cards, but differed in the 
 printed words. Held, a simulation amounting to unfair com- 
 petition. See also this case on appeal.*' 
 
 «» 139 Fed. 146 (1905) Cir. Ct. W. «» 144 Fed. 682. 
 D. N. Y. 
 
CHAPTER X 
 
 Simulation of Articles Themselves 
 
 Section 134. Copying of features essential to construction. 
 
 135. Copying distinguishing features as a whole. 
 
 136. Copying the whole article — Making a facsimile. 
 
 137. Copjring a single feature or part. 
 
 138. Making repair parts for articles manufactured by others. 
 
 139. Copying 'articles on which patents have expired. 
 
 140. Copying the color of goods. 
 
 It is hard to lay down a general rule as to when mere imita- 
 tion of the form, color or external details of an article of trade 
 constitutes unfair competition. It is, of course, true that simu- 
 lation in other respects, as iu labels, wrappers or name, is often 
 accompanied by imitation of the general appearance of the 
 goods themselves. This fact will always be taken into account, 
 in connection with the other points of resemblance. Such cases 
 are treated in the chapter entitled "Dress of Merchandise." 
 
 We will now consider those cases in which imitation of the 
 goods themselves, either as a whole, or in some prominent fea- 
 ture, is the sole or at least a saUent and essential element of the 
 case. In the absence of patent protection, there can be no mo- 
 nopoly in form, color, construction and general design of an 
 article. But this rule is to be applied subject to certain qualifica- 
 tions which are illustrated by the cases referred to below. Pe- 
 culiar and arbitrary features in the form, structure, arrangement 
 of parts, or otherwise in the general appearance of the article it- 
 self, are often devised in large part for the purpose of distinguish- 
 ing the product. Often they are not necessary to the usefulness 
 of the article but, nevertheless, are identified with it in the public 
 mind. In such cases, imitation of the form and general appear- 
 ance of the article itself, including these features of it, may amount 
 to unfair competition. 
 
 There are cases which hold that imitation of form and appear- 
 ance of the goods themselves does not amount to unfair competi- 
 tion. Where a manufacturer of sectional book-cases not only 
 followed complainant's system, which was not protected by valid 
 
 275 
 
276 SiMXTLATION OF ARTICLES THEMSELVES 
 
 patent, but used the same sizes, styles and varieties of wood and 
 the same finish, it was held not to constitute unfair competition.' 
 This, however, is not the usual rule. Copying the different dis- 
 tinguishing features of an object ordinarily will be condemned. 
 
 The true rule has been laid down by Knowlton, C. J., of Mas- 
 sachusetts,^ in holding that dealers must recognize that when a 
 competitor honestly adopts a distinctive get-up for his commodity, 
 with the evident purpose of distinguishing his goods from those 
 of others, it is their duty to observe that fact, "not indeed to the 
 abandonment of their right to do what was reasonably necessary 
 to success in the management of their own business; but to the 
 extent of so conducting their business as not to unreasonably 
 and unnecessarily interfere with the plaintiff's business through 
 deception of the public." 
 
 § 134. Copying of Features Essential to Construction. — 
 The foregoing cases turn in part on the rule that while a manu- 
 facturer may adopt distinguishing marks to denote the origin 
 of his goods, or adopt some other way of distinguishing them, 
 the very fact that his purpose is tp individualize — distinguish 
 his goods from all others — forbids the use of characteristics which 
 are common to goods of this character to accomplish this end. 
 No one may be forbidden to copy or make use of features which are 
 necessary to the usefulness of all articles of the same general sort. 
 
 In Marvel Co. v. Fuller Co.,^ the boxes and labels were suffi- 
 ciently differentiated, but it was claimed that there was a mis- 
 leading similarity in the goods themselves (spray syringes). 
 Held, that unfair competition was not shown since (as Wheeler, 
 D. J., said): "There is nothing about the article as made and 
 sold by the defendants that is not necessary in the making and 
 operation of such an instrument. It is made in the form that 
 it must be made in order to accompUsh its pmpose, and, if the 
 r^aking in that form is any representation that the thing made 
 came from the plaintiff, it is because of the extent to which the 
 plaintiff had made and displayed and sold it before the defend- 
 ant began." See § 50. 
 
 ' Ghbe-Wemicke Co. v. Fred Macey " George G. Fox Co. v. Glyrm, 191 
 
 Co., 119 Fed. .696-1902 (C. C. A. 6th Mass. 344; 78 N. E. 89-1908. 
 
 Cir.). But see contra Globe-Wernicke ' 125 Ted. 129-1903 (C . C. 
 
 Co. V. Brovm, 121 Fed. 90-1902 (C. C. N. Y.). 
 A. 7th Cir.). 
 
Copying Distinguishing Featuebs 277 
 
 § 135. Copying Distinguishing Features as a Whole.— Where 
 
 (Hie person had long sold mills of a particular design and appear- 
 ance for grinding coffee and drugs, and a competitor put on the 
 market mills resembling them so closely in size, shape and de- 
 tails of structure, in coloring and ornamentation as to be prac- 
 tically indistinguishable, except for the names of the makers to 
 be found on each, it was held by Lacombe, J., that "a court of 
 equity will not allow a man to pahn off his goods as those of an- 
 other whether his misrepresentations are made by word of mouth, 
 or, more subtly, by simulating the collocation of details of appear- 
 ance by which the consuming public has come to recognize the 
 product of his competitor."^ 
 
 In Globe-Wernicke Co. v. Brown & Besly,^ the defendant in 
 1897 changed entirely the style and appearance of the box-files 
 for letters and papers which it had been selling, and closely imi- 
 tated in many details of construction, form, color, markings, etc., 
 including certain words and emblems, the box-files long sold by 
 complainant as "Leader" and "Eureka" files. It was unlawful 
 for defendant thus to copy the ensemble of these files, with the 
 purpose and effect of misleading the public, although each fea- 
 ture of the files, separately, was open to pubhc use. 
 
 Again a defendant reproduced the phonograph disks of the 
 plaintiff by making a matrix from disks made by the latter which 
 were on the market. Plaintiff's disks were black and red, with a 
 picture of a dog in the center, while defendants made their disks 
 dark brown with an eagle and their name on them; both had red 
 seal centers. The court held that the law of unfair competition 
 could be invoked and a preliminary injunction was issued "against 
 the manufacture and sale of disk records, black or nearly black 
 in color, with a red seal center inscribed with decoration and 
 letters in gilt, when such records contain the shop numbers or 
 catalogue numbers of complainant's disk records, or when the 
 sound-recording grooves thereon are copies of the grooves on 
 complainant's disk records." ® 
 
 * Enterprise Mfg. Co. v. Landers, " 121 Fed. 90-1902 (C. C. A. 7th 
 
 Frary & Clark, 131 Fed. 240-1904 Cir.). See Mueller Mfg. Co. v. Mc- 
 
 (C.C. A. 2d Cir.). See also St. Paul Donald Co., 164 Fed. 1000-1909. 
 Electric Co. v. McCrum^HoweU, 189 » Victor Talking Machine Co. v. 
 
 Fed. 849-1911 (C. C. A. 8th Cir.) and Armstrong, 132 Fed. 711-12-1904 
 
 Pope V. id., 191 Fed. 979-1911 (C. C. (C. C. S. D. N. Y.). 
 A. 7th Cir.). 
 
278 Simulation or Articles Themselves 
 
 In Wilcox & Gibbs Sevnng Machine Co. v. The Gibbens Frame,'' 
 after the expiration of the patent on a machine, the frame of 
 which was made in a peculiar form or shape (the letter G), com- 
 plainant claimed to be still entitled to a trade-mark right in the 
 use of this shape. The shape of the frame was not arbitrary, but 
 had practical advantages. Held, that complainant had no ex- 
 clusive right to use it. 
 
 It well may be that the court lacks power to enjoin the de- 
 fendant from using any single one of the various details that go 
 to make up the distinguishing features of an article. It has 
 power, however, to forbid the use of a number of these features 
 together where the result is confusion.* 
 
 The fact that necessity demands the use of the various fea- 
 tures common to both plaintiff's and defendant's goods will not 
 necessarily relieve defendant from unmistakably indicating upon 
 his goods and in his advertising the maker of the goods.^" 
 
 § 136. Copying the Whole Article — Making a Facsimile. — 
 The foregoing cases show the application of the rule against 
 copying the general features by which the pubhc has come to 
 know an article, even though the simulated features, if used 
 alone, be such as may be properly adopted by anyone. Usually 
 these cases involve other features unfair in character, such as 
 simulating the design of the labels, the similarity of the names, 
 the use of the same colors, or the copying of the form and shape 
 of containers. There are, however, some cases where nothing 
 is involved except the copying of the commodity itself.' A good 
 example is E. P. Dutton & Co. v. Cupples,^'' where the plaintiff 
 
 ' 17 Fed. 623-1883 (C. C. S. D. of the separate features of plaintiff's 
 
 N. Y.). lock were open to public use, and al- 
 
 ' Coca Cola Co. v. Gay-Ola Co., 200 though the differences in the two 
 
 Fed. 720-1912 (C. C. A. 6th Cir.). locks were such as dealers generaUy 
 
 «" McDonald & Morrison Mfg. Co. would notice, this was held to be un- 
 
 Y. Mueller Mfg. Co., 183 Fed. 972-1910 fair competition. It is remarked in the 
 
 (C. C. A. 8th Cir.). opinion that where two articles are 
 
 « Yale & Tovme Mfg. Co. v. Alder, submitted the court can judge cor- 
 154 Fed. 37-1907 (C. C. A. 2d Cir., rectly as to resemblances and tendency 
 reversing 149 Fed. 783-1906). Plain- to deceive and the testimony of ex- 
 tiff manufactured a padlock, which perts or of dealers is of little assistance 
 defendant closely imitated in form, (p. 38). 
 
 size, coloring, lettering and details of ' '"117 App. Div. (N. Y.) 1st dep't, 
 
 finish, then sold his product at a price 172-1907; 102 N. Y. Supp. 309; 
 
 lower than plaintiff's. Although most Shepp v. Jones, 35 Weekly Notes of 
 
Copying the Whole Article 279 
 
 had for several years published a uniform series of illustrated 
 books, with covers of a peculiar style, each one generally con- 
 taining a single favorite poem, and these books became well 
 known and had a wide sale. They were not copyrighted. De- 
 fendants then, by some photographic or mechanical . process, 
 copied the books with their illustrations, and closely imitated 
 the covers. The work was of inferior quality, and the books 
 were sold for prices much lower than plaintiff's. Held to be 
 unfair competition. In an English case," plaintiff made cigars 
 with bull-nosed or flattened shape. These were the only cigars 
 of this style sold. Defendant copied the shape used by plaintiff, 
 but contended that other cigars of the same shape were sold. He 
 failed to prove his case. The court said, "that although defend- 
 ant is selling in boxes which are not capable of being mistaken, he 
 is inclosing in the box a cigar which is capable of being mistaken 
 and which will be, on the evidence, likely to be mistaken when it 
 is taken out of the box. He might distinguish his goods by put- 
 ting bands on cigars themselves." Injunction granted. 
 
 In 1890, the United States Circuit Court in Pennsylvania de- 
 cided that, regardless of the question of trade-mark, a manufac- 
 turer who bronzed the heads of his nails to distinguish them from 
 others, was entitled to restrain others from bronzing theirs in the 
 same manner. "Whether this is in itself a good trade-mark or 
 not, it is a style of goods adopted by the complainants which the 
 defendants have imitated for the purpose of deceiving, and have 
 deceived the pubUc thereby, and induced them 'to buy their 
 goods as the goods of the complainants. This is fraud." ^^ This 
 passage is quoted with favor in Lawrence Mfg. Co. v. Tennessee 
 Mfg. Co.^^ 
 
 In contrast to this case, and as showing the different views 
 which have been taken of this question, it is interesting to note 
 that, within a year of the decision in the last-mentioned case by 
 the federal court in Pennsylvania, the state court there took the 
 opposite view, in Putnam Nail Co. v, Dulaney.^* In this case. 
 
 Cases (Pa.), 29-1892, is a similar "138 U. S. 537-1891; 34 L. ed. 
 
 case, as to a book of photographs. 997; 11 Sup. Ct. 396. 
 
 "Mio« & Co. V. Hodgson, 19 R. "140 Pa. St. 205-1891; 21 Atl. 
 
 P. C. 518-1902. 391; 11 L. R. A. 524. 
 
 "Putnam Nail Co. v. Bennett, 43 
 Fed. 800-1890. 
 
280 Simulation of Akticles Themselves 
 
 plaintiff, a manufacturer of horse-shoe nails, had adopted the 
 method of bronzing its nails in order to distinguish them as being 
 of its manufacture. No other manufacturer had made bronzed 
 nails, and the bronzing had no effect on the quality or usefulness 
 of the nails. Plaintiff sought to enjoin defendant from selling a 
 precisely similar nail, alleging that defendant btonzed his nails 
 in order to pass them off on the public as the plaintiff's. The 
 imitation of plaintiff's goods by defendant appears to have been 
 limited to this one particular, and it was decided that the bronz- 
 ing could not constitute a trade-mark, and that, as the plaintiff's 
 process was not patented, defendant was entitled to sell nails 
 bronzed like those of plaintiff. 
 
 Where the plaintiff manufactured zithers, and the defendant 
 made similar instruments so closely resembling plaintiff's in out- 
 line, arrangements of strings and other pecuUarities, that it was 
 manifest, on inspection, that there had been a dehberate copying 
 of it in all essential and many nonessential details, the Massa- 
 chusetts court has held that, while defendant had a right so to 
 imitate plaintiff's instrument, he should be required, before offer- 
 ing his goods for sale, to mark them clearly so as to indicate un- 
 mistakably that they are the defendant's and not the plaintiff's 
 goods." This decision rests on a somewhat different ground 
 from Putnam v. Bennett}^" The one holds it fraud to copy 
 a "style of goods" with fraudulent intent. The other that to 
 copy is quite allowable, but that it is fraud not to mark the 
 goods so distinctly as to avoid confusion. In the zither case 
 Holmes, J., says at p. 90, "Both zithers are adapted for the use 
 of patented sheets of music, but the zithers are not patented. 
 Under such circumstances the defendant has the same right that 
 the plaintiff has to manufacture instruments in the present form, 
 to imitate the arrangement of the plaintiff's strings or the shape 
 of the body. In the absence of a patent, the freedom of the 
 manufacturer cannot be cut down under the name of preventing 
 unfair competition. All that can be asked for is that precau- 
 tions be taken, so far as are consistent with the defendant's 
 fundamental right to make and sell what he chooses, to prevent 
 the deception which no doubt he desires to practice. It is true 
 that a defendant's freedom of action with regard to some sub- 
 
 15 Flagg Mfg. Co. v. Holway, 178 "° Putnam Nail Co. v. Bennett, 43 
 Mass. 83-1901; 59 N. E. 667. Fed. 800-1890. 
 
Copying the Whole Article 281 
 
 sidiary matter of ornament or label may be restrained, although 
 a right of the same nature with its freedom to determine the 
 shape of the articles which it sells. But the label or ornament 
 is a Relatively small and incidental affair, which would not exist 
 at all, or at least would not exist in that shape but for the intent 
 to deceive; whereas the instrument sold is made as it is partly, 
 at least, because of a supposed or established desire of the public 
 for instruments in that form. The defendant has the right to get 
 the benefit of that desire, even if created by the plaintiff. The 
 only thing he has not the right to steal is the good-will attaching 
 to the plaintiff's personality, — the benefit of the public's desire 
 to have goods made by the plaintiff." 
 
 The point of difference between the two cases just referred to 
 is made by Judge Holmes to rest on the fact that the public 
 has a desire for zithers in a particular form. Anyone may make 
 and sell goods in that form if it is not covered by patents. The 
 law of unfair cdm'petition cannot give to one deialer the sole right 
 to use that 'form, even though he may have been the first one to 
 make zithers in that manner. This would be an instance of sec- 
 ondary meaning which attaches to a process or form of manufac- 
 ture and not to a person. The result of the difference has been 
 noticed in the chapter on "Geographical Names," in referring to 
 names indicating process. It is this: No one can obtain the sole 
 righ^ to a name or article which has become attached to a process; 
 but one may acquire valuable and distinct rights to a name or form 
 of goods which has become associated with his personality. The 
 first maker of zithers in this particularly desirable style may have 
 created a desire on the part of the public for one of two things, 
 either for zithers made by him, above all other zither makers, or 
 for zithers made in a particular form regardless df who makes 
 them. The law of unfair competition is interested in the first of 
 these conditions — the one attaching to the personality. But 
 the fact that the demand for zithers has been created by the 
 plaintiff will not put the case within the unfair competition rules, 
 where the demand is fdr the article, ndt the personality. "*" 
 
 Fox,'* the complainant, was the first to manufacture a par- 
 
 "* Above passage cited and ap- Mass. 99-1905, 85 N. E. 417. See 
 
 proved, Diamond Co. v. U. S. Co., N. Y. also George G. Fox Co. v. Glynn, 191 
 
 L. J. Ap. 23, 1917,'by N. Y. App. Div. Mass. 344-1906; 78 N. E. 89; 9 
 
 « Geo. E. Fox Co. v. Hathaway, 199 L. R. A. N. S. 1096n, 
 
282 Simulation of Articles Themselves 
 
 ticular kind of bread, using in it milk and malt, and applied to it 
 as a trade name the word "Creamalt." The bread was made 
 in an oval loaf, unusual in shape and size, and having a peculiar 
 broken and glazed surface, so as to produce an odd visual appear- 
 ance. This combination of external characteristics was neither 
 economical nor necessary, and nothing similar was in use by 
 others. Defendants then began to make similar bread, calling 
 it "Crown Malt," and imitating, first, the form of the loaf, and 
 then also, with a slight difference, the peculiar appearance of the 
 surface, and a label resembling that used by complainant was 
 attached to the loaf. A band was put around the loaf by both 
 plaintiff and defendant, the former calling his product "Fox's 
 Creamalt," the latter naming his " Hathaway's Log Cabin Bread." 
 This band was easily removable by retail dealers. Knowlton, 
 C. J., says: "The plaintiff had no exclusive right in any one of 
 the features of the combination, and if the defendants had re- 
 quired the use of this combination for the successful prosecution 
 of their business, they would have had a right to use it, by taking 
 such precautions as would prevent deception of the pubhc and 
 interference with the plaintiff's good will. But the evidence 
 shows that the defendants had no occasion to use this combina- 
 tion, and therefore they were not justified in producing an imita- 
 tion of the plaintiff's loaves, the natural effect of which would 
 be to deprive it of a part of its trade through deception of the 
 public. There are numberless shapes and sizes in which loaves 
 of bread may be produced, and various peculiarities of appear- 
 ance in color and condition of surface. These that the defend- 
 ants adopted had been combined to distinguish the plaintiff's 
 Creamalt bread, and it was the duty of other manufacturers to 
 recognize this fact. Not, indeed, to the abandonment of their 
 right to do what was reasonably necessary to success in the 
 management of their own business; but to the extent of so conduct- 
 ing their business as not unreasonably and unnecessarily to inter- 
 fere with the plaintiff's business through deception of the public." 
 In George Fox Co. v. Best Baking Co.,^^"^ the Massachusetts court 
 went further still and held that even if the form used by defend- 
 ant had definite practical advantages, instead of being arbitrary 
 and uneconomical, still the defendant could be enjoined unless 
 it found some adequate means of distinguishing its goods. 
 
 "" 209 Mass. 251. 
 
Copying the Whole Article 283 
 
 The Second Circuit Court of Appeals has said in Rushmore v. 
 Badger Brass Co., ^^^ "When it appears that a competitor has un- 
 necessarily and knowingly imitated his rival's goods in Nonfunc- 
 tional features, a court of equity is justified in interfering." 
 
 In the case of Rushmore v. Manhattan Screw and Stamping 
 Works,^'' the Circuit Court of Appeals, Second Circuit, carried 
 the doctrine even further perhaps than does the Massachusetts 
 case. In that case, the complainant in the use of the words 
 "Flare Front," applied to an automobile lamp, obtained an in- 
 junction against the imitation of the form and appearance of the 
 shell inclosing the lamp, although it conspicuously bore the dis- 
 tinctive name of defendant. The court said : 
 
 "We are thus confronted with the naked question of law — 
 can one who manufactures and sells a well-known article of 
 commerce, like an automobile searchlight inclosed in a shell of 
 graceful but unpatented design, maintain a bill for an injunction, 
 profits, and damages against a defendant who sells automobile 
 search lights inclosed in a similar shell, with his name prominently 
 appearing thereon as the maker, and who has never represented 
 that his lamps were made by the complainant? We feel con- 
 strained to answer this question in the affirmative upon the au- 
 thority of Enterprise Co. v. Landers,^''" and Yale & Towne 
 Mfg. Co. V. Alder.^ Both of these cases were decided by this 
 court and we see no way to distinguish them on principle from 
 the case at bar. We are of the opinion, however, that to answer 
 this question in favor of the complainant carries the doctrine of 
 unfair competition to its utmost limit. If it be pushed much 
 further, those engaged in trade will be encouraged to run to the 
 courts with trivial complaints over the petty details of business 
 and thus will grow up a judicial paternalism which in time may 
 become intolerable." 
 
 In the case of John A. Banzhaf v. Edward C. Chase,^^ the plain- 
 tiffs made "Old Homestead Bread." Defendant put on the 
 market "New Homestead" bread, the words being stamped and 
 arranged on the loaf in the same manner as that used by the 
 
 «^ 198 Fed. 379-1912. See also Nathan Mfg. Co. v. H. A. 
 
 " 163 Fed. 939-1908 (C. C. A. 2d Rogers Co., N. Y. Law Jour., Feb. 27, 
 
 Cir.). 1909. 
 
 "" 131 Fed. 240-1904. " 150 Cal. 180-1907. 
 "154 Fed. 37; 83 C. C. A. 149. 
 
284 Simulation of Articles Themselves 
 
 plaintiff. The bread of the defendant was of a character to be 
 mistaken for that of the plaintiff. Injunction was granted on 
 ground of fraud. The plaintiff's case was held to rest "on the 
 right of the plaintiffs to restrain the conduct of the defendant 
 whereby he, in order to injure the plaintiffs and benefit himself, 
 simulates the plaintiffs' goods, . deceives the plaintiffs' patrons 
 into the belief that his bread is that made by the plaintiffs. * * * 
 The right of action * * * arises from the fraudulent pur- 
 pose and conduct of the defendant and the injiuy caused to the 
 plaintiffs thereby, and it exists independently of the law regulat- 
 ing trade-marks. * * * The gist of such an action is not 
 the appropriation and use of another's trade-mark, but the 
 fraudulent injury to, and appropriation of, another's trade." 
 
 SJiaw V. Pilling ^'' was an action of trespass for infringement. 
 Plaintiff, with the aid of a physician, invented, but did not patent, 
 an atomizer, which he called the "Burgess Atomizer," naming 
 it from his partner. Defendants (and other parties as well) 
 afterward began to make an exactly similar atomizer, indorsing 
 it in a similar box, with a label containing the same cut or picture, 
 and called it the "Burgess Atomizer." 
 
 Defendants claimed that the name Burgess had come to be 
 merely descriptive, not denoting a particular manufacturer, but 
 were held liable for damages. 
 
 These cases indicate the general rule, viz.^, that it is unfair to 
 copy another's goods if by so doing one's own goods may be passed 
 off as those of that other. The right of everyone to make copies 
 of unpatented articles does not permit the use of this right in 
 such a way as to create fraud. 
 
 § 137. Copying a Single Feature or Part. — The rules apply- 
 ing to imitation of a complete article apply equally to copsdng 
 a single salient feature or part. Where a complainant had long 
 manufactured stoves and ranges with white enamel lining on 
 the inside of the doors, which feature distinguished these stoves 
 to the eye from all others, and they were often called "White 
 Enamel" stoves, it was held that defendant had no right to use 
 similar white lining for the inside of the doors of his stoves, with 
 intent to lead the pubUc to suppose his goods to be those of 
 complainant.^^ 
 
 ■'o 175 Pa. St. 78-1896. Kiechle, 76 Fed. 758-1896 (Ci'. Ct. 
 
 '^ Bitck's Stove and Range Co. v. Ind.). 
 
Making Repair Parts for Articles 285 
 
 In Geo. Frost Co. v. E. B. Estes & Sons,^^ complainant made a 
 hose supporter, the distinctive feature of which was a rubber 
 button with a metal rivet, used to attach the hose to the sup- 
 porter. The use of a rubber button for this purpose was pro- 
 tected by a patent. Defendant manufactured a wooden button, 
 intended to be used with a metal rivet, colored like rubber, and 
 resembUng complainant's button in appearance. Hose support- 
 ers with wooden buttons had often been sold for those with rubber 
 buttons, and sometimes specifically for complainant's supporters; 
 but defendant himself did not make or sell supporters. Held, 
 that defendant made the buttons for the purpose of aiding unfair 
 trade, and should be enjoined from thus contributing to the wrong 
 done the complainant. 
 
 § 138. Making Repair Parts for Articles Manufactured by 
 Others. — These cases are important, for much injury is often 
 done to manufacturers by other dealers putting on the market 
 parts of articles made by these manufacturers for purposes of 
 repair. These parts must of necessity be exact copies in form 
 and shape of the original parts; and the question in these cases 
 is, what constitutes a representation that these repair parts are 
 made by the original manufacturer? 
 
 The Enterprise Manufacturing Co. had for many years made 
 and sold meat choppers and also separate repair parts to replace 
 parts of the machine that were damaged or worn out. Many of 
 these parts were marked with the company's name. The patents 
 on them had expired. Bender made repair parts for the machine 
 of the same shape and appearance as complainant's, and these, 
 although put up in distinctive packages, usually reached the 
 consumer without markings indicating origin. No actual de- 
 ception was proved and the court held that he should not be re- 
 quired to mark the parts with his name.^' 
 
 Where an employee of a manufacturer of electric batteries and 
 renewal plates learned the business and then started out on his 
 own account and manufactured plates similar in shape, size, and 
 appearance to complainant's, and intended to be used as renewal 
 plates for complainant's batteries, he was restrained from selling 
 such plates without conspicuously stamping them with his name, 
 
 " 156 Fed. 677-1907 (C. C. Mass.). 156 Fed. 641-1907 (C. C. A. 6th 
 Affirmed 176 Fed. 338-1910. Cir.). 
 
 " Bender v. Enterprise Mfg. Coi, 
 
286 Simulation of Articles Themselves 
 
 or otherwise clearly distinguishing them to the eye from com- 
 plainant's goods.^* 
 
 It is not unfair to use the name of a well-known article in 
 labeling a repair part, if it be used in a bona fide way and simply to 
 indicate that the part is made to fit that article. ^^ ' 
 
 Magee Furnace Co. v. Le Barron ^^ holds that it is lawful to make 
 and sell these repair parts if not patented and that the numerals 
 and letters used by the maker of the article itself to designate 
 these parts may be freely used by him who makes only the parts, 
 as they are not a part of the mark on the article itself and are not 
 likely to mislead when considered alone. The Circuit Court of 
 Appeals considers this case of little authority, for it says of it: 
 "The opinion * * * was aimed at a mere question of fact, that 
 is, whether the letters or niunbers used on certain parts of stoves 
 were any part of the trade-mark in question." ^' 
 
 In Avery v. Meikle & Co.,'^ the defendants pm-chased plows 
 made by the plaintiffs, dismantled them, and then copied the 
 parts exactly, and, using plaintiffs' plows as patterns, began to 
 make plows so similar to plaintiffs' that no ordinary person could 
 tell them apart. "They also imitated almost to perfection the 
 interchangeable metal points of appellants' plows " (p. 82) . They 
 copied all the following marks used by plaintiffs on their plows, 
 "A. O.," "B. O.," "C. O.," "M," "1," "2," "3," "8," used the 
 mark "P. 0." in place of "Pony," and, like plaintiffs, placed on 
 their plows the words "Louisville," and "Keep all taps screwed 
 up." The letters used were the same size and kind, and in the 
 same position on the plows. The varnishing of the plows was 
 the same. The only difference between the goods of plaintiffs 
 and those of the defendants was in the actual trade-marks used, 
 — each party putting on its goods its own name and mark. Soon 
 after the defendants put on the market the plows copied from the 
 plaintiffs' designs, their sales increased from 30 to 100 plows per 
 day. They sold largely to jobbers, and put on their plows so 
 sold, not their own name and mark, but the name and mark of 
 the jobber to whom the goods were sold. Held, that the defend- 
 
 '* Edison Mfg. Co. v. Gladstone, " Le Page v. Riissia Cement Co., 
 
 58 Atl. 391-1903. 51 Fed. 941-1892 (C. C. A. 1st Cir.); 
 
 « Wagner Typewriter Co. v. F. S. 17 L. R. A. 354 et seq. 
 
 Webster Co., 144 Fed. 405-1906 (C. ^s gi Ky. 73-1883. See also Rath- 
 
 C. S. D. N. Y.). borne, Sard ds Co. v. Champion Co., 
 
 "' 127 Mass, 115-1879. 189 Fed. 26. 
 
Making Repair Parts for Articles 287 
 
 ants had a right to copy the plaintiffs' plows, the court saying: 
 "The shape and construction of the plows do not form any part 
 of the trade-mark of appellants." It cited Candee, Swan & Co. 
 V. Deere & Co.,^ where the Illinois court said: "Anyone, there- 
 fore, has a perfect right to make plows in their exact similitude, 
 even to the ' curve of the mould-board ' and ' the tip of the handles ' 
 — in the minutest, as well as in the most important parts — all 
 have a right to manufacture them no matter where the maker 
 may reside, and has the right to put the name of the place where 
 manufactured as well as his own name on such parts of the plows as 
 he pleases, taking care, however, so to use the brand as not to de- 
 ceive the public, so as not to create a belief that the plow is the 
 manufacture of another;" and citing also Fairbanks v. Jacobus.^" 
 "The only thing he (defendant) has not the right to steal is the 
 good-will attached to the plaintiff's personality — the benefit 
 of the public's desire to have goods made by the plaintiff."" 
 
 The opinion in the Avery case continues : 
 
 "If so restricted, the case is plain, for what they used they had 
 the right to use, but the manner in which they used these letters 
 and figures constitutes the wrong. They have used lawful things 
 in an illegal way. Instead of using them to designate quality 
 and size merely, which is allowable, they did not content them- 
 selves, but, under the pretense of designating quality and size, 
 which the letters and figures really do, they pressed them into 
 another service, by placing them at points and in positions on 
 their plows that corresponded with the manner of their use by 
 appellants. For this reason the appellants' trade-mark could 
 not perform its legitimate functions; its power of designating 
 their make of plows was lessened, and to that extent their trade 
 coming to them from their reputation, as evidenced by their 
 trade-mark, was destroyed, and the way opened for appellees to 
 claim that loss as their gain, thus usurping the trade reputation of 
 appellants by the artful manner of using and combining artificial 
 signs common to all as signifying quality and number generally." 
 
 The right to copy parts of machines is considered in Deering 
 Harvester Co. v. Whitman & Barnes Co.^^ Also the right to use 
 
 29 54 III. 439-461-1870. on this point Cooke & Cobb Co. v. 
 
 30 14 Blatchf. 337. MiUer, 169 N. Y. 47&-1902; 62 N. 
 
 " Flagg v. Holway, 178 Mass. 83- E. 582. 
 91-1901; 59 N, E, 667, See further " 91 Fed. 376-1898, 
 
288 Simulation of Articles Themselves 
 
 letters and figures used by the plaintiff on such parts; and it was 
 held that there were no trade-mark rights in these marks, that 
 any office of designating source which these marks perform is 
 accidental, that it is open to all persons to makei these parts of 
 the plaintiff's machine. 
 
 In this connection the case of Richards v. Williamson '' is inter- 
 esting. This case deals with the sale of repair parts of a gun as unfair 
 trade (p. 749). In Reading StoveWorhsY.H owe, '^^"'liyf&s considered 
 lawful for defendant to sell parts of plaintiff's stoves provided the 
 plaintiff's trade-mark or trade name was not placed thereon. 
 
 § 139. Copying Articles on Which Patents Have Expired. — 
 Owners of a patented article have an absolute monopoly of the 
 right to make and sell that article during the life of the patent, 
 and in this period no one may copy it. The absolute property 
 of the patentee in it gives him the right to demand its protection. 
 But when the patent expires, a competitor may copy the article 
 in every detail without interference as to the mere copying. Here 
 the law of unfair competition steps in, and forbids the marketing 
 of the goods made by others than the patentee, in any manner 
 which will pass off their article as that of those who made it under 
 the patent. The public learned to know the "Singer" sewing- 
 machine from the machine made by the patentees. The latter 
 were entitled, on the expiration of the patent, to all of the 
 good-will which had been created through the merits of that 
 machine as made by them, despite the fact that the design was 
 now public property. In other words, there is now a differ- 
 ence between a Singer machine, viz., one made according to 
 Singer's patents, and a machine made by the company which 
 made the machines under the patents.^''' ' 
 
 The fact that the frame of a peculiar shape was an important 
 feature of a patented sewing-machine did not, upon the expira- 
 tion of the patent, give to the patentees any exclusive right to 
 use a frame of that shape, on the ground that the manufacturer's 
 goods had come to be known and identified by the public by that 
 peculiarly shaped frame provided the frame of that shape 
 served a useful purpose.'^ 
 
 " 30 L. T. Rep. 746-1874. " Wilcox & Gibbs Sewing Machine 
 
 ""201 Mass. 437. Co. v. The Gibbens Frame, 17 Fed. 
 
 "'' Singer Mfg. Co v. June Mfg. Co., 623-1883 (C. C. S. D. N. Y.). 
 163 U. S. 169. 
 
Copying Articles When Patents Have Expired 289 
 
 While upon the expiration of a patent, the name by which 
 the article has come to be known is open to general use, this 
 cannot be claimed as to the form of dress, such as a wrapper of 
 peculiar design by which the article has been known to the pub- 
 lic.'^ These features have nothing to do with the patent rights, 
 and are property of the patentee. As to them the general rules 
 as to dress apply, for which see Chapter on "Dress." He who 
 makes use of the design of an expired patent must limit himself to 
 that design or device; he must not adopt its other features and so 
 cause confusion. 
 
 In Scriven v. North,^^ Jeremiah A. Scriven began, in 1884, 
 the manufacture of a new style of men's drawers, the body por- 
 tion of which was of white jeans, with longitudinal insertions of 
 elastic knitted fabric inside and outside of the legs, and at the 
 back. Until that time drawers were all made of a uniform color, 
 and in order to make his garments distinctive, Scriven had the 
 body portion of his garments made white and the elastic insertions 
 yellow or buff. The selection of this buff color was deliberate, 
 and for the purpose of making it conspicuous and different from 
 other similar garments. He gave these drawers the name of 
 "Elastic Seam," and the distinguishing number "50," both 
 the words and the number being stamped upon the drawers. 
 His goods were made under patents, and known as the "Scriven 
 Drawers." At the expiration of the patent, the defendants and 
 others began to market goods of a similar type, but inferior in 
 quaUty and cheaper, making no attempt to conceal the fact that 
 they deliberately made their goods very similar to those the 
 plaintiffs had made imder their patent. The plaintiffs had 
 marked their goods for some time with an oval stamp made up 
 of the words, "Scriven's Elastic Seam" in a semicircle with 
 three straight printed lines below and the number "50." The 
 defendants put upon their goods an oval stamp reading as fol- 
 lows: "Standard Stretchy Seam," with three lines printed be- 
 low, and the number "50." The stamps closely resembled each 
 other. When plaintiffs' goods were first put on the market, 
 these words were stamped in straight lines, the defendants also 
 
 ^^ Centaur Co. v. Kilknberger, 87 fying 124 Fed. 894-1903 (C. C. Md.). 
 
 Fed. 725. See also Rice-Stix v. Scrivin, 165 Fed. 
 
 »9 134 Fed. 366-1904 (0. C. A. 4th 639-1909. 
 Cir.); 67 C. C. A, 348; s. c. modi- 
 
290 Simulation of Articles Themselves 
 
 stamping theirs in straight Unes, and when the plaintiffs adopted 
 the oval stamp, the defendants did Ukewise. The plaintiffs' 
 goods had two distinctions: (1) The buff-colored insertion in the 
 legs, which made them unique, for before they began manufac- 
 turing them, nothing of the kind was known. (2) The name 
 "Elastic Seam," a fanciful designation identified with the plain- 
 tiffs' goods. The defendants first adopted a straight stamp, and 
 afterward, when complainants began to use an oval stamp, fol- 
 lowed them by adopting a stamp of like shape, with lettering 
 and lines so arranged as would be Ukely to mislead the careless 
 observer. The words "Stretchy Seam" are intended to convey 
 to the mind of the purchaser precisely the same idea as is con- 
 veyed by the words "Elastic Seam," words not subject to an 
 exclusive appropriation. The opinion of the court was that the 
 defendants adopted and apphed the name "Stretchy Seam" 
 to their garments for the purpose of imitating the name which 
 had been adopted by the plaintiffs. 
 
 In Centaur Co. v. Ldnk,^'' after the expiration of the patent on 
 "Castoria," and the word became public property, the owners 
 spent more than $100,000 a year in advertising the name. The 
 defendant put out a remedy called "Castoria" in a bottle and 
 wrapper similar to that of the plaintiffs. The court considered 
 that purchasers, not aware of the fact that other manufacturers 
 were making "Castoria," were being deceived; that persons using 
 such articles are not familiar with printed matter upon them 
 but/ecognize them by the size, general appearance, and possibly 
 the most strikingly displayed words on the wrapper; that it was 
 the duty of the defendant to make clear to the purchaser that its 
 remedy was not that manufactured by the complainant under the 
 name "Castoria." 
 
 "The presence of an inequitable purpose is necessarily an ele- 
 ment of great weight in the determination of a question of fair- 
 ness in trade. And where another avails himself of the principle 
 of public dedication, he must in good faith fully identify his 
 production, and clearly disassociate his work from the work of 
 the one who has given significance to the name, and sufficiently 
 direct the mind of the trading pubMc to the fact that, though the 
 thing is of the same name, that it is something produced and 
 put upon the market by himself." '^ 
 
 "62N.J.Eq. 147-1901; 49 Atl. 828. =»(?. <fc C. Merriam Co. v. OgUme, 
 
Copying Articles When Patents Have Expired 291 
 
 Purchase of a patented article from the inventor or his gran- 
 tees, carries with it the right to lawfully use the inventor's name 
 to describe it. To allow a restraining of such a use might lead to 
 an indefinite extension of the benefits of patent statutes.'" 
 
 159 Fed. 638-1908 (C. C. A. 1st Cir.) 
 [modifying 149 Fed. 858]. After the 
 copyright on earher editions of Web- 
 ster's Dictionary, published by the 
 Merriam Co., had expired, defendant 
 published an edition under the name 
 of "Webster's Imperial (a universal) 
 Dictionary;" the Merriam Co.'s later 
 edition being entitled "Webster's In- 
 ternational Dictionary." Defendant 
 placed his own name as publisher on 
 the title page and the back, but used at 
 the same time such titles and phrases as 
 "The latest complete authentic Web- 
 ster's Dictionary," with a reference 
 to supplementary matter contributed 
 by Noah Porter to later Merriam 
 editions. The court below condemned 
 certain misleading circulars issued 
 by defendant, but permitted the use 
 of the words used on title page and 
 back, on the ground that the addition 
 of defendant's name as publisher 
 sufficiently notified the pubUc that 
 the book was not that published by 
 the Merriams; the court at the same 
 time enjoined the Merriams from rep- 
 resenting that they were exclusively 
 entitled to the name "Webster's Dic- 
 tionary." On appeal, the injunctive 
 reUef already awarded was sustained, 
 but was extended so as to condemn the 
 title pages and backs then used by de- 
 fendant, it being considered that the 
 words used were misleading, in spite 
 of the use of defendant's name. 
 
 Merriam v. Famous Shoe & Clothing 
 Co., 47 Fed. 411-1891 (C. C. E. 
 D. Mo.), as to copying book after 
 copyright had expired; and Mer- 
 riam V. Texas Siftings Pub. Co., 
 
 49 Fed. 944r-1892 (G. G. S. D. 
 
 N. Y.). 
 
 Sternberg Mfg. Co. v. Miller & Co., 
 161 Fed. 318-1908 (G. C. A. 8th Gir.) 
 reversing G. G. Gomplainant pat- 
 ented a cigar mold, the chief merit of 
 which was its increased strength from 
 the grain of the wood running up 
 and down, and this became generally 
 known as "Vertical Top." Held, that 
 upon the expiration of the patent rival 
 makers were entitled to use this name, 
 indicating at the same time the dif- 
 ference of origin. Defendant, how- 
 ever, was found to be using ia its 
 catalogues and circulars a series of 
 figures of tools, etc., deceptively sim- 
 ilar to those used in complainant's, 
 and was required to indicate more 
 clearly to the public that the goods 
 advertised were not of complainant's 
 manufacture. The appellate court 
 directed that the defendant be en- 
 joined "from manufacturing and plac- 
 ing upon the market the 'Vertical 
 Top' cigar mold, without plainly 
 stamping thereon, or otherwise plainly 
 indicating, the name of the defendant 
 as the manufacturer thereof, and also 
 from copying or reproducing, in its 
 published catalogues, circulars, or 
 other printed advertising matter, the 
 cuts and figures of tools, implements 
 and machinery produced and pub- 
 lished by complainant connected with 
 its trade, without distinctly indicating 
 therewith, so as to reasonably advise 
 the pubUc, the fact that the same are 
 of the manufacture and use of the 
 defendant." 
 
 ^^ Edison v, Mills-Edisonia (N. J. 
 Gh.), 70 Atl. 191-1908. 
 
292 Simulation of Articles Themselves 
 
 § 140. Cop3rmg the Color of Goods. — Color as put upon 
 goods themselves may be considered sometimes as dress, some- 
 times as a part of the article itself. Where two dealers put out 
 matches which were colored in the same way, the court said if 
 two colors there used could be appropriated, other colors also 
 could be appropriated for other matches, and a monopoly of 
 the trade would result.^" 
 
 In a recent case coming before the United States Supreme 
 Court, as a statutory trade-mark case, the court declined to ex- 
 press any opinion as to how it would have dealt with the case if 
 presented on the broad basis of unfair competition, but was of 
 the opinion that, in the case before it, there could be no trade- 
 mark in the device of painting one strand of wire rope a distinc- 
 tive color, no particular color being specified, remarking that no 
 authority exists for recognizing mere color, not connected with a 
 particular design, as a trade-mark. ** In Scriven v. North,^^ 
 the use of similar colors is made a question of good faith. Said 
 the court: ".We do not think that it would be proper to forbid by 
 injunction the use of a Uke color of insertion (of a colored strip in 
 imderwear), if that was the natural color of the material used; 
 * * * but the use of an inferior material dyed to imitate the 
 color adopted by the complainants ought clearly to be forbidden, 
 for this color was originally selected by the complainants for the 
 purpose of distinguishing their goods, and the use of inferior ma- 
 terial dyed to imitate it, could have no other purpose than to 
 deceive, and would be calculated to mislead, the public, accus- 
 tomed to the distinctive characteristics of the complainants' 
 garments, into buying an inferior article." 
 
 The Circuit Court in Maryland has refused to follow this 
 rule,*' and after a full discussion, held that there was no unfair 
 competition in using a buff-colored longitudinal strip, resembling 
 complainant's, it appearing that, although the natural color of 
 the American cotton used by defendant was not buff, like that 
 of the Egyptian cotton used by complainant, it was common in 
 
 <» Diammd Match Co. v. Saginaw " 134 Fed. 366-at p. 373-1904 (C. 
 
 Match Co., 142 Fed. 727-1906 (C. C. A. 4th Cir.). 
 
 C. A. 6th Cu-.). " J. A. Scriven Co. v. Morris, 154 
 
 '^Leschen & Sons Rope Co. v. Fed. 914-1907; affirmed in 158 Fed. 
 
 Broderick & Bascom Rope Co., 201 1020. See also Newcomer & Lewis v. 
 
 U. S. 166-1906; 30 L. ed. 710; 26 Scriven Co., 168 Fed. 621-1909 (C. C, 
 
 Sup. Ct. 425. A. 6th Cir.). 
 
Copying the Color of Goods 293 
 
 trade to bleach it white or dye it buff, since the natural color was 
 unpleasing to the eyes. 
 
 In Coca Cola Co. v. Gay-Ola Co.^* the defendant was forbidden 
 to copy the artificial color of plaintiffs' beverage when it was 
 demonstrated that other colors could have been used equally 
 well. There was strong evidence of fraudulent intent on the part 
 of defendant, and the color was only one of various means used 
 by defendant to pass off his goods. 
 
 " 200 Fed, 720-1912 (C. C. A. 6th Cir.). 
 
CHAPTER XI 
 
 Trade Seckets 
 
 Section 141. Property in trade secrets. 
 
 142. Protection of trade secrets. 
 
 143. Injunctions against breach of contract by disclosure of secrets. 
 
 144. Is a secret a monopoly? 
 
 145. Conditional sale of goods made by secret formulae. 
 
 146. Publication of a secret, what constitutes. 
 
 147. Disclosure of a secret in court. 
 
 148. Discovery of a secret by lawful means. 
 
 149. Violation of contract of employment by betrayal of secrets. 
 
 150. Employees are bound by imphed contract not to disclose secrets. 
 
 151. Title to secrets discovered by employee as a part of his work. 
 
 152. Unlawful secrets. 
 
 153. Danger of injury to plaintiff by defendant's disclosures must exist. 
 
 154. One who avails himself of a secret fraudulently disclosed may 
 
 be enjoined and held accountable for profits. 
 
 155. Name of a jobber from whom goods are bought may be a trade 
 
 secret. 
 
 156. Transfer of secrets. 
 
 157. List of customers is secret property. No one may canvass them 
 
 except the owner of the list. 
 
 158. Pleading, practice and form of remedy. 
 
 159. Defenses. 
 
 160. Duty of corporate officers as to trade secrets. 
 
 161. Letters may be trade secrets. 
 
 § 141. Property in Trade Secrets. — A secret is "something 
 known only to one or a few and kept from others; anything 
 hidden from general knowledge or observation; something not 
 to be told." ^ A secret may be property, just as land is 
 property; for money and other value is often given in return 
 for learning it. It somewhat resembles the property one has 
 in an unpublished manuscript. The right to have exclusive 
 knowledge of foreign financial news for fifteen minutes after 
 its receipt by the Associated Press has been held property;^ 
 so also the Miowledge of secret processes of manufacture, and 
 
 ' Standard Diet. 1616. Telegraph Co., 50 How. Pr. (N. Y.) 
 
 ^Kiernan v. Manhattan Quotation 194^1876. 
 294 
 
Property in Trade Secrets 295 
 
 formulae for making various articles and the names of the cus- 
 tomers of a business house. In fact, any information legitimately- 
 obtained which is in the nature of a secret, a state of knowledge 
 which is valuable because a few only know the facts of which it 
 consists, is property; and the business conditions of to-day make 
 it imperative that he who wrongfully publishes secret informa- 
 tion should be enjoined and prevented from so doing. 
 
 Peabody invented a process of making gunny cloth from jute 
 butts, and machinery to make it, and employed Norfolk as ma- 
 chinist. Norfolk became confidentially possessed of knowledge 
 of the machinery and process and entered into an agreement with 
 Peabody not to divulge the secrets. Norfolk left Peabody two 
 years later and began plans to build a rival factory fitted with 
 machinery on Peabody's model. In the opinion in this case 
 Judge Gray speaks of the character of the rights of the owner of 
 a secret thus : " If he invents or discovers and keeps secret * * * 
 he has not indeed an exclusive right to it as against the public, 
 or against those who in good faith acquire knowledge of it; but 
 he has a property in it which a court of chancery will protect 
 against one who, in violation of contract and breach of confidence 
 undertakes to apply it to his own use, or to disclose it to third 
 persons." * 
 
 A baker may acquire such property in an established route, 
 or list of customers as will entitle him to an injunction against 
 an employee to prevent his conspiring to leave said baker and 
 divert customers from said route to a rival baker.^ 
 
 "Independent of copyright or letters patent, an inventor or 
 author has, by the common law, an exclusive property in his 
 invention or composition until, by publication, it becomes the 
 property of the general public." ^ The power to protect such 
 property is a part of the original jurisdiction of chancery, in- 
 dependently of any rights which the injured party may have 
 at law. It has power to prevent any act which the court con- 
 siders to be a wrong, whether the wrong arises from violation 
 of a right or from a breach of confidence.^ 
 
 ' Peabody v. Norfolk, 98 Mass. 452- authority Palmer v. De Witt, 47 N. Y. 
 
 1867. 532-1872; Woolsey v. Judd, 4 Duer 
 
 * Smith V. Kernan (Ohio), 5 Law (N.Y.), 379-1855; Peabody v. Norfolk, 
 
 Bui. 145; 8 Ohio Dec. Reprint, 32. 98 Mass. 452-1867; Salomon v. Hertz, 
 
 6 Tabor v. Hoffman, 118 N. Y. 30, 40 N. J. Eq. 400-1885; 2 Atl. 379. 
 
 at p. 34^1889; 23 N. E. 12, citing as ' Pollard v. Photographic Co., 40 
 
296 Trade Secrets 
 
 An owner of a trade secret may do with it as he will. He may 
 refuse utterly to sell goods made from it, if he wishes. He may 
 fix prices as he chooses. He may sell at one price to one per- 
 son, at another to another. He is not required to give reasons or 
 deal fairly with purchasers, but his control over their goods 
 ceases with their sale.'' 
 
 § 142. Protection of Trade Secrets. — There is no statutory 
 protection of one who makes an article by a secret process or 
 private formula. He may have a property right in it, but he 
 has no special property right similar to the right of the owner 
 of a patent or copyright. His secret is valuable only because 
 of its being a secret, and only so long as he keeps it secret. 
 The general public is free to find it out, by any fair and hon- 
 est method.^ Nevertheless the owner may protect himself 
 by the help of a court of equity, against discovery by breach of 
 confidential relations.' 
 
 In France a penal statute exists which punishes an employee who 
 communicates a secret of manufacture, by fine and imprison- 
 ment, and puts such a person imder surveillance of the police."' 
 This statute covers all secrets of manufacture. If there be a 
 publication of the secret, then the owner or the discoverer or 
 the inventor has no further right to claim the courts' protection. 
 
 An owner of a secret is protected against a breach of contract 
 by which 'his secret is betrayed. Fowle v. Park " is a leading 
 case in the United States on this point, and Fuller, C. J., held 
 there, that as the contracts involved were based on a valuable 
 consideration, and were limited as to space (but not as to time), 
 
 ,Ch. Div. 345-1889. "Independently man, 118 N. Y. 30-1889; 23 N. E. 
 
 of any question as to the right at 12; 16 Am. St. Rep. 740; Peabody v. 
 
 law, the court of chancery has al- Norfolk, 98 Mass. 452-1867; 96 Am. 
 
 ways had an original and independ- Dec. 664; Vulcan Detinning Co. v. 
 
 ent jurisdiction to prevent what that American Can Co., 67 N. J. Eq. 
 
 court considered and treated as a 243; 58 Atl. 290-1904; John D. 
 
 wrong, whether arising from a viola- Park & Sons v. Hartman, 153 Fed. 
 
 tion of an unquestionable right or 24r-1907; 12 L. R. A. N. S. 135, note, 
 
 from a breach of contract or con- " Tarns v. Knapp, 121 Fed. 34; 
 
 fidence" (at p. 354). Harrison v. Glucose Co., 116 Fed. 304; 
 
 ' Dr. Miles Medical Co. v. Piatt, 58 L. R. A. 915; Morison v. Moat, 9 
 
 142 Fed. 606-1906, and cases cited. Hare, 241. 
 
 8 Chadwick v. CoveU, 151 Mass. "> § 418, Code, Penal. 
 
 190; 23 N. E. 1068; 6 L. R. A. 839; » Fowle v. Park, 131 U. S. 88-1889; 
 
 21 Am. St. Rep. 442; Tahor v. Hoff- 33 L. ed. 67; 9 Sup. Ct. 658. 
 
Breach of Contract by Disclosure of Secrets 297 
 
 and ooneerned a secret compound, the court would enforce them; 
 that vendors were entitled to sell to the best advantage, and to 
 preclude themselves from competition with those to whom they 
 sold, and to prevent competition between purchasers, and that 
 the purchasers were entitled to reasonable protection (id. p. 97). 
 See §§ 174-5 as to conditional sales of goods made by secret 
 process. 
 
 § 143. Injunctions Against Breach of Contract by Disclosure 
 of Secrets. — The court will restrain a third person from induc- 
 ing a person to break his contract by disclosing information of 
 a confidential nature or trade secrets. The court proceeds on 
 the theory that valuable property of the pMntiff is imperilled 
 by the threatened disclosure. 
 
 "It is competent for a news agency to collect information 
 from a public source and transmit it to subscribers to whom it 
 is new, upon the terms that they shall not communicate it to 
 third parties; and the cornl; will interfere by injunction to restrain 
 a subscriber from communicating such information to a third 
 party in breach of his contract, and also to restrain a third party 
 from inducing a subscriber to break his contract by supplying 
 him with such information with a view to publication." ^^ 
 
 The contention is made that to uphold these contracts is to up- 
 hold a restraint of trade. The foundation of the rule as to invalid- 
 ity of contracts in restraint of trade is considered by Chief Justice 
 Fuller to be the case of Mitchel v. Reynolds, ^^ and his comment 
 
 ^'Exchange Telegraph Co., Ltd., v. plaintiffs, to supply the information 
 Central News, Ltd., 2 Ch. 48-1897 that defendants could no longer obtain 
 (headnote); Exchange Telegraph Co., from plaintiffs, and then used such 
 Ltd., V. Gregory & Co., 73 L. T. 120- information for the purpose of their 
 1895; affirmed in 1 Q. B. 147-1896. business by posting it on bulletin 
 Plaintiff published stock exchange boards in various places. Held, that 
 bulletins, and under an exclusive con- defendants" had no right to appro- 
 tract with the stock exchange man- priate the information, which was 
 agement, furnished stock exchange plaintiffs' property, that they were 
 quotations to subscribers under a maliciously interfering with plaintiffs' 
 contract by which the subscribers business, and that the interference was 
 bound themselves not to communicate actionable without proof of special 
 information thus obtained to non- damage. Injunction granted. (Note 
 subscribers. Defendants were for- copyright infringement was also in- 
 merly subscribers but had ceased to be volved.) 
 
 such. They induced subscribers, in " 1 P. Wms. 181 ; 1 Smith Lead, 
 
 violation of their contracts with Cas., Pt. II, 508. 
 
298 Trade Secbets 
 
 on that case is instructive as to the interpretation of such cases 
 in the Ught of modern conditions. He says," "but as it (the rule 
 of that case) was made under a condition of things and a state of 
 society diEferent from those which now prevail, the rule laid down 
 is not regarded as inflexible and has been considerably modified. 
 Public welfare is first considered; and if it be not involved, and 
 the restraint upon one party is not greater than protection to 
 the other requires, the contract may be sustained." 
 
 Thus it is seen that Chief Justice Fuller sustains these con- 
 tracts, not on the theory that they were outside the common- 
 law rule against restraint of trade, but that they were valid be- 
 cause the court considered them necessary to protect the rights 
 of the owner of the secret. 
 
 Justice Gray considers them lawful, "because the process 
 must be kept secret in order to be of any value, and the public 
 has no interest in the question by whom it is sold." ^* 
 
 § 144. Is a Secret a Monopoly? — So long as the owner of 
 a secret keeps it a secret he has a monopoly. While equity af- 
 fords protection to trade secrets against betrayal by those »nder 
 contract or in confidential relations with the owners of the secret, 
 there is no difference between contracts as to trade secrets and 
 contracts as to any other personal property, so far as restraint 
 of trade is concerned. There is such a difference between con- 
 tracts as to patents and those as to secrets, because of the statu- 
 tory monopoly of patentees. No such distinction is enjoyed by 
 contracts involving trade secrets. Contracts forming a part of 
 a system used in selling goods, which limit and restrict the rights 
 of jobbers and retailers, by forbidding them to sell goods except 
 to specified persons or classes of persons, are held illegal.^* It 
 makes no difference as to the vahdity of these contracts whether 
 the articles to which they relate are made by a secret process or 
 not. There is nothing about a secret process, which so differen- 
 tiates it from other personal property, as to warrant the stifling 
 of competition, which results from these contracts. See full dis- 
 cussion of question in John D. Park & Son v. Hartman." There 
 
 "Fowle V. Park, 131 U. S. 88-9- "See Dr. Miks Medicine Co. v. 
 
 1889; 9 Sup. Ct. 658. Phtt, 142 Fed. 606-1906. 
 
 ^^ Central Transportation Co. v.PvU- "153 Fed. 24-1907; 12 L. R. A. 
 
 man Palace Car Co., 139 U. S. 24-53- N. S. 135, note. 
 1890; 35 L. ed. 55; 11 Sup. Ct. 478. 
 
Sale of Goods Made by Secret Formulae 299 
 
 it is contended that any such restrictions on the sale of goods 
 must be shown to be not larger than necessary for the protection 
 of the owner of the secret process against such unjust use of the 
 secret as will injure the business and rights in it, which the owner 
 retains. "A partial restraint of competition may be upheld 
 when one sells a business or other property, provided it is no 
 greater than necessary to enable the vendor to realize the value 
 of his good-will or to secure to the buyer the enjoyment of his 
 purchaise, or to prevent the use of the property to the prejudice 
 of the seller" (id. p. 44, Lurton, J.).^^ 
 
 § 145. Conditional Sale of Goods Made by Secret Formulae. 
 — Under certain circumstances a seller may impose conditions 
 and limitations with respect to price and reselling, on persons 
 who buy his goods. It has been claimed that to do that is to 
 offend the rules of the common law against restraint of trade 
 and monopoly, and the federal anti-trust act. Formerly such 
 conditions were imposed usually on goods made under patents, 
 copyrights, secret processes, and patents." One who violated 
 conditions of this sort, as to a patented article, was an infringer. 
 These restrictions were held to be valid, because of the monopoly 
 of the owner of the patent, which gave him the right to reserve 
 to himself as much or httle of his exclusive right as he pleased. 
 
 These conditions have been changed by the decisions of the 
 Supreme Court in Dr. Miles Co. v. Platt,^^ in Henry v. A. B. 
 Dick Co.,^^ and other similar cases in which it was denied 
 that patents, trade secrets or copyright gives to the owner thereof 
 any right to fix the price after a sale of the goods outright to 
 another. These cases do not deny the right to make a condi- 
 tional sale that shall bind an immediate vendee, as to resale 
 price unless the defendant is acting in such a manner as to produce 
 a substantial restraint of trade. In the Miles case, the plaintiff 
 had a uniform system of contracts which was held to constitute 
 restraint of trade, and was therefore condemned. 
 
 § 146. Publication of a Secret, what Constitutes. — Pub- 
 lication consists in imparting secret information in such a 
 
 18 For a further discussion of the man, 153 Fed. 24-7-1907 (C. C. A.) 
 
 right to enjoin such breach of con- and cases cited, 
 
 tract, see chapter on "Interference "" 142 Fed. 606-1906. 
 
 with Contract." '»'' 224 U. S. 1-1911. 
 
 ^oJohn D. Park & Sons v. Hart- 
 
300 Trade Secrets 
 
 way as to indicate that one gives up to the pubUc such rights 
 as were his at common law, as the originator or the discoverer 
 of the secret process. But a "sale of an article compounded by 
 secret process is not pubUcation of the formula or device used 
 in its manufacture," ^ and a person who wrongfully discovers a 
 secret may not set up a sale of the article, made by use of the 
 secret, as a publication of the secret, and hence a defense behind 
 which he may fortify himself. 
 
 Communicating secret information to many persons in con- 
 fidential relationship with the owner of the secret under a con- 
 tract not to make the information generally public is not publica- 
 tion. Even the distributing of such information generally to a 
 number of customers paying therefor is not publication. 
 
 The Chicago Board of Trade conducted an exchange, and 
 collected the quotations for transmission through the telegraph 
 companies, to persons approved by it and contracting with it. 
 Defendant obtained and used these quotations without plain- 
 tiff's authority, presumably by inducing persons contracting with 
 plaintiff to disregard their obligations to plaintiff. Held, that 
 plaintiff was entitled to an injunction. The plaintiff's quota- 
 tions were held to be in the nature of a trade secret, which would 
 be protected. "The plaintiff does not lose its rights by com- 
 municating the results to persons, even if many, in confidential 
 relations to itself, under a contract not to make it public, and 
 strangers to the trust will be restrained from getting at the knowl- 
 edge by inducing a breach of trust, and using knowledge ob- 
 tained by such a breach." ^^ 
 
 SI Tabor v. Hoffman, 118 N. Y. 30, ed. 821; 7 Sup. Ct. 529; Kieman V. 
 
 at p. 36-1889; 23 N. E. 12, citing Manhattan Quotation Tekgraph Co., 
 
 Hammer v. Barnes, 26 How. Pr. (N. 50 How. Pr. (N. Y.) 194 (Sup. Ct. 
 
 Y.) 174^1863; Morison v. Moat, 21 N. Y. Spec. T. 1876). Plaintiff was 
 
 L. J. N. S. (Ch.) 248-1852; Mori- entitled by contract to the exclusive 
 
 son V. Moat, 20 L. J. N. S. (Ch.) 513- use, for fifteen minutes after it was 
 
 1851; Green v. Folgham, 1 Sim. & St. received, of all foreign financial news 
 
 398-1823; Youatt v. Winyard, 1 Jac. & transmitted through the Associated 
 
 W. 394-1820; Peabody v. Norfolk, 98 Press. Plaintiff was accustomed, 
 
 Mass. 452-1867. upon receiving this news, to telegraph 
 
 " Board of Trade, etc., v. Christie it immediately to his customers, who 
 
 Grain & Stock Co., 198 U. S. 236- were not restricted by any express 
 
 1904; 49 L. ed. 1031; 25 Sup. Ct. 637. stipulation in using or republishing it. 
 
 Followed in Hunt v. N. Y. Cotton Defendant, through an agent, ob- 
 
 Exchange, 205 U. S. 322-1907; 51 L. tained and sent to their customers the 
 
Disclosure of a Secbet in Court 301 
 
 § 147. Disclosure of a Secret in Court. — The fact that, if 
 the secret is to be used, it must be examined and understood by 
 public officials, will not prevent its owner enjoining him who 
 would fraudulently publish it, nor will the disclosure of the 
 secret to a court in judicial proceedings be held a publication.^^ 
 In an appUcation for an injunction against disclosure of a trade 
 secret, it is usually unnecessary to reveal the secret or disclose 
 confidential information relating to it — certainly not in the 
 open court. Such hearing may be held in camera, and is vaUd 
 if so held. Such a disclosure is not a publication to the world in 
 any sense.^' A manufacturer seeking to protect trade secrets by 
 injunction will not, ordinarily, be requested at the trial to dis- 
 close what these secrets are.^* 
 
 Evidence as to a secret may be taken in camera and sealed, 
 where the question involved is as to whether or not the plain- 
 tiff is the owner of a secret. ^^ It was once held that injunction 
 is not a proper remedy where plaintiff alleges defendant revealed 
 a trade secret, because the information was no longer secret 
 when revealed to a court, which revelation must take place 
 before a court can decide; ^^ but to-day measures are taken to pro- 
 tect such secrets when being considered by courts, and the secret 
 is preserved so far as is necessary to preserve also the cause of 
 action upon it. 
 
 In Baglin v. Cusenier Co.^ the court deemed it was unable 
 to decide as to the imitation of plaintiff's cordial because it 
 did not know the ingredients of it, holding that more than 
 opinion and speculation is necessary to show imitation, espe- 
 
 same quotations, and their agent was " Peabody v. Norfolk, 98 Mass. 452- 
 
 shown to have obtained his iirforma- 1867. 
 
 tion from plaintiff's tapes and slips ''Stone v. GrasseUi Chemical Co., 
 
 in the office of his customers. Held, 65 N. J. Eq. 756-1903; 55 Atl. 736; 
 
 that plaintiff was entitled to restrain 63 L. R. A. 344. 
 
 defendant from publishing plaintiff's " Taylor Iron & Steel Co. v. Nichols, 
 
 foreign financial reports, the news 70 N. J. Eq. 541-1905; 61 Atl. 946; 
 
 being plaintiff's property, plaintiff's Sterling Varnish Co. v. Macon, 217 
 
 right not being lost by the transmis- Pa. St. 7-1907; 66 Atl. 78. 
 
 sion to his customers, and defendant " Taylor Iron & Steel Co. v. 
 
 being deemed to have acquired his Nichols, 69 Atl. 186-1908 (N. J. Er. 
 
 information by' inducing plaintiff's & App.). 
 
 customers to violate the tacit under- *' Deming v. Chapman, 11 How. Pr. 
 
 standing impUed from the nature of (N. Y.) 38^1854. 
 
 their contract with plaintiff. " 164 Fed. 25-1908 (C. C. A.). 
 
302 
 
 Tbade Seckets 
 
 daily "when the party upon whom the burden rests has it m 
 his power to establish fraud, if it exists, by proof which it will 
 be practically impossible to contradict," per Coxe, J. 
 
 § 148. Discovery of a Secret by Lawful Means. — The right 
 to legally discover and use a secret was early recognized. Hard- 
 wicke, Ld. Ch., said in Gibhlett v. Read,^ "So in the case of 
 Tipping, if anybody had thought of his nostrum, as he had no 
 patent, any discoverer might have sold it." 
 
 When the secret information becomes known to the defendant 
 through his own efforts, no action hes against him. He has a 
 right to discover for himself the ingredients of a secret medical 
 formula by study of the product itself, if it be sold pubUcly, or 
 he may discover the secret of a method of manufacture from 
 a study of the manufactured article. If he acquires the hidden 
 information honestly, he may use it as he will, assuming of course 
 there is no question of patent; but a discovery of a secret by un- 
 fair means, such as bribing a clerk of the owner of the secret, or 
 steahng or copying the information from the owner, will not be 
 protected.^' 
 
 ^ 9 Mod. 459-1743. 
 
 2" Tabor v. Hoffman, 118 N. Y. 30- 
 &-1889; 23 N. E. 12. But because 
 this discovery may be possible by 
 fair means,' it will not justify a dis- 
 covery by unfairness, such as a bribery 
 of a clerk, who, in the course of his 
 employment, had aided in compound- 
 ing the medicine, and had thjis be- 
 come familiar with the formula. The 
 courts have frequently restrained per- 
 sons, who have learned a secret 
 formula from compounding medicine 
 and beverages and the like while 
 in the emplojmient of a proprietor, 
 from using it themselves or imparting 
 it to others to his injury. Watkins v. 
 Landon, 52 Minn. 389-1893; 54 N. W. 
 193; 19 L. R. A. 236. In 1856, Ward 
 owned a receipt for "Ward's Botanical 
 Liniment." The same year, he sold to 
 Sands the formula and granted him the 
 right to sell it in Miimesota. It came 
 to be known as "Dr. Ward's Lini- 
 
 ment." In 1868, plaintiff claimed the 
 sole right to sell "Ward's Liniment" 
 in Minnesota and threatened Sands 
 with prosecution if he sold the liniment 
 longer under that name. Conse- 
 quently Sands changed the name to 
 "T. H. Sands' Celebrated Liniment." 
 The liniment was never patented. 
 Since 1870, the plaintiff has sold the 
 liniment substantially the same as 
 Ward's under the name "Dr. Ward's 
 Vegetable Anodyne Liniment." Sub- 
 sequent to 1885, defendant manu- 
 factured and sold a liniment similar 
 to Ward's caUed "Dr. Hoffman's 
 Vegetable Anodyne." In 1889, Sands 
 sold to defendants the Ward for- 
 mula. Since that time they have sold 
 it under the label "Dr. Ward's Lini- 
 ment, Landon & Burchard," etc. 
 Held, that as the li nim ent had not 
 been patented, anyone lawfully ac- 
 quiring the knowledge of its prepa- 
 ration had a right to use it, and to 
 
Betrayal of Secrets by Employees 303 
 
 An illustration of a fair use of a secret which resulted in loss 
 to one rightfully in possession of it, is foxmd in Stewart v. Hook.^" 
 T. prior to 1894 had sold a cure for the opium and morphine 
 habit, known as the "Acme Opium Cure." T. had invented 
 and was the sole owner of the cure. The formula for it was a 
 secret known only to T. In 1894, T. sold to each of the two 
 plaintiffs a one-half interest in the cure. In 1897, T. sold the 
 same formula and receipts to the defendant, who began to manu- 
 facture under the same name, not by public advertising, but 
 by secret correspondence under T.'s name. Until 1902, this was 
 unknown to the plaintiffs, whose business had greatly suffered 
 by reason of the defendant's action. Held on the authority of 
 Chadwick v. Covell,^^ that as the defendant did not come into 
 possession of the formula in any unfair way and had not com- 
 mitted any fraud or breach of trust of which the plaintiffs could 
 complain, he could not be held Uable; that the plaintiffs sued 
 the wrong man and should have brought an action against T., 
 who by violating his agreement brought about the damage of 
 which the plaintiffs complain. 
 
 After the death of the owner of a secret unpatented process, 
 anyone who discovers the process by legitimate methods may 
 use it for mercantile piirposes and call it by the name of the 
 original discoverer.^^ 
 
 Title to a secret which has been dishonestly obtained is good 
 against all the world, except the person from whom it has been 
 dishonestly obtained and his assignees. It has been held, how- 
 ever, that where a company was alleged to have obtained knowl- 
 edge of a trade secret, seemingly without dishonest intention, 
 but from persons who were dishonestly using the knowledge ob- 
 tained from the discoverer, a person bound to such company by 
 contract or confidence when sued by the company for a breach 
 of the contract or confidence, could not set up that the company 
 had no right to the secret.'^ 
 
 § 149. Violation of Contract of Employment by Betrayal of 
 say that it was made in accordance »» 118 Ga. 445; 45 S. E. 369; 63 
 with Ward's formula; that the com- L. R. A. 255. 
 mon name of the liniment had come " 151 Mass. 190. 
 to be "Dr. Ward's Liniment." Con- ^■^ James v. James, 13 Eq. 421-1872. 
 sequently the plaintiff could not ac- '' Vukan Detinning Co. v. Ameri- 
 quire the sole right to the name. can Can Co., 67 N. J. Eq. 243-1904; 
 
 58 Atl. 290. 
 
304 Trade Secrets 
 
 Secrets. — Many of the cases involving a violation of a trade 
 secret arise over the betrayal of. an employer's confidence by an 
 employee. Where the contract of employment includes a clause • 
 binding the employee not to impart to anyone the knowledge he 
 gains through his employment except by order of his employer, 
 the law enforces that clause. It is not against public policy or 
 in restraint of trade. See § 145. The object of the court in up- 
 holding it, is to preserve the employer's property in the secret. 
 "Courts of equity will restrain a party from making a disclosure 
 of secrets communicated to him in the course of a confidential 
 employment; and it matters not in such cases whether the secrets 
 be secrets of trade or secrets of title or any other secrets of the 
 party important to his interests." '^ To warrant the issuance of 
 an injunctisn against a former employee, it must appear that 
 the defendant made use not only of some secret that the plaintiff 
 shares with him, but it must also appear that the defendant's 
 knowledge of it was obtained by him through and by means of 
 his having been in plaintiff's employ. No action lies to restrain 
 a former agent of a manufacturer from selling an article alleged 
 to imitate the manufacturer's, it not appearing that the article 
 was patented or that the former agent availed himself of 
 secret information obtained while in the manufacturer's em- 
 ploy.'^ 
 
 One of the earliest and most important cases on this point is 
 Morison v. Moat,^^ decided in 1851, where the right of employers 
 to restrain employees from betraying secrets was upheld. Mori^ 
 son invented a medicine, entered into partnership with Moat, 
 reserving all rights, and told Moat the secret. Morison reserved 
 the secret against all the world except Thomas Moat, and Moat 
 was bound not to reveal it. Moat obtained a place in the con- 
 cern for defendant Moat, his son. Morison never communicated 
 the secret to defendant. His father had no right to do so, and 
 the court decided that the defendant obtained the secret of the 
 medicine surreptitiously and without sanction of his partners. 
 "The defendant derives under that breach of faith (his father's 
 in telling him the secret against the terms of his contract), and 
 I think he can gain no title by it" (p. 263). On appeal the case 
 
 " 2 Story Eq. Jur., § 952. 1906; 79 N. E. 9, reversing 121 111. 
 
 « Mahkr v. Sanche, 223 111. 136- App. 247. 
 
 '« 9 Hare, 241-1851. 
 
Betrayal op Secrets by Employees 
 
 305 
 
 was affirmed," and it was held that "there is no doubt whatever 
 that where a party who has a secret in trade, employs persons 
 under contract, express or implied, or under duty express or 
 implied, these persons cannot gain knowledge of that secret and 
 then set it up against their employer" (at p. 248). Where an 
 employee is given increased wages and agrees not to disclose 
 the secrets of the business he "has no right to use the secrets so 
 obtained for his own private use or reveal them to others." ^^ 
 
 An injunction will lie against the use of a secret without any 
 proof that any disclosure has been made by the defendant. An 
 apprentice of plaintiff became his employee. Just before leaving 
 he compiled and took away a table of dimensions of the various 
 types of fire engines which plaintiff made and which dimensions 
 plaintiff claimed to be trade secrets. No proof was given of 
 disclosure. Defendant was a draughtsman. Interim injunction 
 granted.^^ Disclosure of methods of business, receipts for medi- 
 cines, and all sorts of confidential information, will be protected 
 by equity against fraudulent disclosure.^" Actual disclosure need 
 
 " 21 L. J. N. S. (Ch.) 248. Div. (N. Y.) 42-1907; 103 N. Y. 
 
 '* There are numerous cases holding Supp. 936. Defendant had been em- 
 
 that where there is a written agree- 
 ment, that an employee will not after 
 leaving his master's employ engage in 
 the same line or similar hne of busi- 
 ness, and will not furnish to others 
 lists of customers or information of any 
 kind or nature pertaining to his em- 
 ployer's business, that a court of 
 equity will intervene to enforce the 
 observation of that agreement by in- 
 junction. Domes v. Racer, 72 Hun, 
 43; Eastman Kodak Co. v. Beichev^ 
 bach, 79 id. 183; Little v. Gallus, 4 App. 
 Div. 569; National Gum & Mica Co. v. 
 Braendly, 27 id. 219 at p. 224; 22 Cyc. 
 867; Magnolia Metal Co. v. Price, 65 
 App. Div. 276; Mutual Milk & Cream 
 Co. V. Prigge, 112 id. 652; Mviual 
 Milk & Cream Co. v. Eeldt, 120 id. 
 795; Fralich v. Despar, 165 Pa. St. 
 24-6-1894; 30 Atl. 521. 
 
 ™ Merryweather v. Moore, 2 Ch. 
 518-1892. 
 
 « Tolman v. . Mukahy, 119 App. 
 
 ployed by plaintiff, a lender of money, 
 under a contract that she would di- 
 vulge to no outsider anything regard- 
 ing the system or methods of the 
 plaintiff's business, and would not, 
 within two years after leaving plain- 
 tiff's employ, engage in the same 
 business as principal or employee. 
 She left plaintiff's employ and became 
 an employee of a firm doing a similar 
 business, and it was alleged that she 
 was communicating to her new em- 
 ployers confidential information ac- 
 quired in plaintiff's employ. Held, 
 that while under all the circumstances 
 no preliminary injunction should issue 
 against her remaining in a third per- 
 son's employ, defendant was prop- 
 erly enjoined from communicating or 
 divulging plaintiff's forms or meth- 
 ods and from sending letters to plain- 
 tiff's customers. 
 
 Youatt V. Winyard, IJ. & W. 394- 
 1820. Defendant, while in plaintiff's 
 
306 
 
 Teade Secrets 
 
 not be proven. It is enough that such disclosure is apprehended 
 by plaintiff. See § 153. 
 
 § 150. Employees are Bound by Implied Contract not to 
 Disclose Secrets. — la the absence of such a clause in the con- 
 tract of employment the law will, when necessary for the pro- 
 tection of the property of the employer, import into the contract 
 a prohibition against a betrayal of his trust and confidence and 
 against imparting any confidential information to others. In 
 fact suda a stipulation of the character is probably a part of 
 every employment whether actually expressed or not. In 
 Empire Steam Laundry v. Lozier,^^ a laundry driver was sup- 
 plied with a list of customers, which he was to keep up to date. 
 Held that he was not at liberty to turn over this fist to a new 
 employer, nor to solicit those on that list to trade with the new 
 employer. There was an express contract; but, the validity of this 
 being questioned, the decision was based on the obUgation, en- 
 forcible in equity, growing out of the relation between the parties. 
 
 employ, had surreptitiously copied re- 
 ceipts for veterinary medicines, and 
 after leaving his employ began to sell 
 the medicines, with printed directions 
 for their use, which were almost Uteral 
 copies of plaintiff's. Upon the ground 
 that there had been a breach of confi- 
 dence, the court granted an injunction 
 restraining defendant from using or 
 communicating the receipts, and from 
 printing and publishing the directions 
 for their use. 
 
 The National Gum & Mica Co. v. 
 Braendly, 27 App. Div. (N. Y.) 219; 
 51 N. Y. Supp. 93. Delery owned a 
 smaH business, the assets of which con- 
 sisted almost wholly in secret processes 
 for making various articles. Defendant 
 approached plaintiff and offered to sell 
 him the secrets, and plaintiff agreed, if 
 the sale was made, to employ the de- 
 fendant, and defendant agreed not to 
 communicate the processes to any- 
 body else. Defendant remained in 
 plaintiff's employ only a short time, 
 but he refused to disclose to the plain- 
 
 tiff the processes, and finally left the 
 plaintiff and organized a corporation 
 for carrying on the same business. He 
 also agreed that he would not dis- 
 close any secrets that he learned from 
 the plaintiff while in his employ. 
 Held, the power to restrain the viola- 
 tion of a secret protected by a contract 
 is well settled. 'The vendee employed 
 the manager as long as he desired to 
 stay in its employ, and was wiUing to 
 contimue to employ him, and hence 
 performed its part of the contract. 
 That the court had power to punish 
 defendant for violating an injunction 
 restraining him from disclosing the 
 secret processes bought by the plain- 
 tiff, and also the secrets whidi defend- 
 ant had learned while in plaintiff's 
 employ. 
 
 " 165 Cal. 95 (1913), [citing jRo6& 
 V. Green, L. R. (1895), 2 Q. B. D. 1, 
 10]. Willcop Holmes v. Boyce, 61 
 Misc. (N. Y.) 126-131 afd. no. op. 
 131 A. D. (N. Y.) 922. 
 
Employees Bound not to Disclose Seckets 307 
 
 An early case involving this rule is referred to by the English 
 Chancery Court. " * * * I mentioned during the argument a 
 case which is unreported, so far as I know, but which has some 
 bearing on these points. It was a case of a master tailor and his 
 foreman cutter. The foreman cutter, whilst in the employ of 
 the master tailor, cut out the ordinary patterns for the dress of 
 his master's customers — those brown paper things which may 
 be seen in many a tailor's shop, but, being about to leave his 
 master's service, and to set up for himself an independent busi- 
 ness, and being desirous of attracting the custom of his master's 
 customers, he jnade, whilst in the employ of the master tailor, 
 copies of those brown paper patterns; and, setting up for him- 
 self, he took them away with him, and made use of them, by in- 
 forming those whom he supposed would deal with him (his late 
 master's customers) that he had their patterns, and he could 
 make their clothes without putting them to the trouble of at- 
 tending to be measured again. The master tailor obtained an 
 injunction against him for using this, which, in substance, was 
 information obtained by him exclusively for the benefit of the 
 master while in the master's employment."*^ 
 
 Plaintiff sold typewriter ribbons. Defendant was in his em- 
 ploy from 1886 to 1894, when he left and organized the Rochester 
 Ribbon & Carbon Co., and began to make goods by a process 
 used by the plaintiff. While in plaintiff's employ he copied 
 every formula he used. Held, defendant was in a confidential 
 relation to plaintiff and in that relationship gained knowledge 
 of his processes. He knew of the care exercised to keep the 
 secret and, in violation of the confidence reposed in him, sur- 
 reptitiously made memoranda of the formulas, and was now 
 using them and other knowledge ' obtained while in plaintiff's 
 employ to run a rival estabUshment. The law raises an implied 
 contract where none exists, "that an employee who occupies a 
 confidential relation toward his employer will not divulge any 
 trade secrets imparted to him, or discovered by him in the course 
 of his employment, and we do not see why the defendants, Gallus 
 & Bostwick, are not under just as strong an obligation to ob- 
 serve and keep secret the trust reposed in them as they would be 
 had they received the contract which the law implies to writing."*^ 
 
 "Lamb v. Evans, 3 Ch. 462-8- " Littk v. Gallus et al., 4 App. 
 1892. Div. (N. Y.) 569-74-1896; 38 N. Y. 
 
308 
 
 Trade Secrets 
 
 Not all contracts of employment will sustain an injunction of 
 this sort. Actual knowledge of business secrets on the part of 
 the employee, acquired from his employment, is essential, and it 
 must be knowledge of some facts known only to the employer 
 or those in his confidence or under contract with him. 
 
 The implied obhgation of an employee not to disclose a trade 
 secret, such as a process of manufacture, is conditioned upon its 
 having been actually treated as a secret and preserved as such, 
 so that the employee must be deemed to have been aware of its 
 secret character/* 
 
 An agreement by an employee that all his inventions shall be- 
 long to the employer and shall perpetually be kept secret if the 
 employer so requires, is not unconscionable nor against public 
 policy.*^ 
 
 A contract with an employee which forbids him to divulge, 
 during the term of the agreement or afterward, "any informa- 
 tion of any nature now known to him, or hereafter acquired by 
 him during the term of his agreement, relating to the process of 
 steel making," etc., was held to compel the employee to either 
 
 Supp. 487; Thum & Co. v. Tloczyiv- 
 ski, 114 Mich. 149-1897; 38 L. R. A. 
 200; 72 N. W. 140. Plaintiffs manu- 
 factured fly-paper. The process was 
 regarded a secret. The public were 
 excluded from the premises where it 
 was made. The employees at one 
 machine were not allowed to inspect 
 the other machines. The business of 
 the firm grew. The defendant was in 
 the employ of the plaintiffs. He left 
 their employ and began to engage in 
 the manufacture of the same product. 
 Held, that the evidence showed that 
 the business and the process were a 
 secret; that the defendant knew that 
 fact; that the employment was on 
 the agreement that the defendant 
 would not communicate information 
 received by him to the harm of his 
 employer; that an express agree- 
 ment existed between the parties, and 
 even though there was no express 
 agreement an agreement would be 
 
 implied from the facts on which the 
 defendant could be restrained. (Cit- 
 ing Story Eq. Jur., §§323, 952.) 
 That it was not against public inter- 
 est to allow an employer to make such 
 conditions with his employees, but 
 was to the advantage of both parties 
 that such a contract should be made. 
 
 G. F. Harvey Co. v. National Drug 
 Co., 75 App. Div. (N. Y.) 103-1902; 
 77 N. Y. Supp. 674. L. J. Har- 
 vey was in employ of plaintiff as su- 
 perintendent where he learned secret 
 of compounding certain medicines. 
 He left plaintiff's employ and entered 
 that of defendant to whom plaintiff 
 claimed he had revealed the secret 
 process learned from plaintiff while 
 in its employ. He was enjoined. 
 
 " Hamilton Mfg. Co. v. Tvbbs Mfg. 
 Co., 216 Fed. 401-7-1908, and cases 
 cited. 
 
 '^Thibodeau v. Hildreth, 124 Fed. 
 892. 
 
Title to Secrets Discovered by Employee 309 
 
 work for this employer or remain idle. Such a contract will not 
 be enforced.^* 
 
 Where a general insurance agent left his employer and at- 
 tempted to divert policy-holders in the company formerly em- 
 ploying him, to his later employer, no injunction was granted, as 
 the relation to the employer was not confidential in the sense that 
 he acquired knowledge of any business secret. Persons might 
 have taken out policies on account of friendship for the agent. 
 There was no reason why he should not solicit their business for 
 new company he represented.^^ See § 177. 
 
 § 151. Title to Secrets Discovered by Employee as a Part of 
 his Work. — Often persons are employed for the purpose of de- 
 voting their time and brains to the invention of new methods 
 relating to the business of their employer. He pays them a 
 salary and defrays the expenses of the experiments, and he is 
 held to be entitled to the ownership of all inventions and secrets 
 discovered by them while in his employ. Such persons will be 
 enjoined from disclosing to others any of the information so ac- 
 quired, and such an injunction will issue also against any who, by 
 means. of information acquired through such persons, make use 
 of such inventions. This relief is allowed on an implied contract 
 which the law finds in the relation of persons so employed, that 
 one will not betray any secret of his employer, and further, be- 
 cause such betrayal of a secret would be a breach of trust as a 
 court of equity will condemn.** 
 
 " Taylor Iron & Steel Co. v. Nichols, that Taggart should finish machine. 
 
 70 N. J. Eq. 541; 69 Atl. 186-1908. Later Taggart was' employed by 
 
 Seeaho Alger V.Thatcher, 19 Fick. 51; Westervelt to build machines like 
 
 Albright v. Teas, 37 N. J. Eq. 171. those he had built for National Paper 
 
 "Stein V. National Life Assn., 105 Company, and at this time Wester- 
 
 Ga. 821-1898; 32 S. E. 615; 46 L. velt knew nature of contract of Tag- 
 
 R. A. 150. See also High Injunc- gart with National Paper Company 
 
 tions, § 19. and that machine was trade secret. 
 
 ^8 Westervelt v. Naiional Paper & "Said machine was a secret and, un- 
 
 Supply Co., 154 Ind. 673-1900; 57 der the facts alleged, even if no agree- 
 
 N. E. 552. One Taggart was em- ment was made, one would be implied 
 
 ployed by National Paper Company, that he (Taggart) was not to disclose 
 
 He was at work on an incomplete the secret of the construction of the 
 
 tube machine, and it was understood machine, or impart any information 
 
 that all improvements made by Tag- by which anyone could construct such 
 
 gart to said machine should belong a machine. He occupied a confidential 
 
 to National Paper Company, and relation to the appellee (National 
 
310 
 
 Trade Secrets 
 
 If an employee is to be held responsible for keeping the se- 
 crets of his employer he should receive notice when the secret is 
 disclosed to him or he is made aware of its existence that it is a 
 secret. " To enforce on the individual defendants the duty of 
 preserving the secrets, if any, pertaining to the complainant's 
 business, it must be shown that they knew that its methods of 
 manufacture and machines were in fact secret."**" 
 
 But in the absence of an express stipulation, it is a question of 
 fact, depending upon the circumstances and the conduct of the 
 parties, whether or not the understanding of the parties was, or 
 must be taken to have been that everything devised or invented 
 by the employete was to belong exclusively to his employer. 
 
 Where an employee of especial skill aided in the development 
 
 Paper Company) and in such case the 
 law raises an implied contract be- 
 tween him and them that the employee 
 will not disclose any trade secret im- 
 parted to him or discovered by him in 
 the course of his employment. A dis- 
 closure of such secrets thus acquired 
 is not only a breach of contract 
 on his part but is a breach of trust 
 which a court of equity will pre- 
 vent" (p. 679). Held, injunc- 
 tion would lie against the employee 
 to prevent his manufacturing the 
 machine for others. It would lie 
 against third parties reproducing the 
 machine from plans given by the 
 employee. The fact that there were 
 in existence machines which would 
 fold paper, which machines were 
 trade secrets not known to the 
 National Paper Company, as show- 
 ing that the machine was not a se- 
 cret, did not make the petition de- 
 murrable or raise a presumption that 
 it was the same kind of a machine. 
 Neth V. Ohmer, 30 App. D. C. 47&- 
 1908. One who conveys to employees 
 information and orders that they 
 make a machine, is entitled to their 
 skill and ingenuity, and to any patent 
 
 or secret process of value which they 
 discover. 
 
 Eastman Kodak Co. v. Beichen- 
 bach et al., 79 Hun (N. Y.) 194, 
 20 N. Y. Supp. 110-1892. Plaintiff 
 manufactured Kodak cameras, etc. 
 Defendants were in plaintiff's em- 
 ploy under an agreement to give 
 plaintiff all benefit of any inventions 
 they made. Action was to restrain 
 defendant from reveahng secrets 
 learned in course of their employ- 
 ment. Injunction granted. 
 
 Stone V. Grasselli Chemical Co., 65 
 N. J. Eq. 756-1903; 55 Atl. 736; 63 L. 
 R. A. 344. One Goss was an employee 
 of plaintiffs from 1892 to 1901. Dur- 
 ing this time plaintiff had improved a 
 secret process by a secret method of 
 mixing the ingredients. Goss knew 
 this secret method. He left plain- 
 tiffs' employ, entered that of defend- 
 ants, and disclosed the method. Held, 
 he was under an express contract not 
 to disclose the secret. Injunction 
 granted against Goss and defendant. 
 
 *^ Cincinnati Co. v. Dodds, 19 
 Wkly L. Bui., Ohio, 84 Taft, J. See 
 also Westemset v. National Paper Co., 
 154 Ind. 673, 57 N. E. 552; Hamilton 
 V. rM66s, 216 F. 401-07. 
 
Title to Secrets Discovered by Employee 311 
 
 of inventions, though not employed to originate them, the court 
 said that while he was not at liberty to appropriate trade secrets 
 of his employer, yet "no obligation rested upon him to forego 
 the exercise of his inventive powers, even if they were incited be- 
 cause of knowledge necessarily derived from the performance 
 of his contractual duties."*' It was further held in this case that 
 where the employee had used part of his working time in design- 
 ing and making new machinery afterwards used for his individual 
 profit, he could not be compelled to account for and return the 
 salary received by him, though he might be liable in damages 
 for breach of contract. 
 
 "Every clerk employed in a merchant's counting house is 
 under an implied contract that he will not make public that 
 which he learns in the execution of his duty as clerk * * * 
 and if he avails himself surreptitiously of the information which he 
 could not have had except from a person guilty of a breach of 
 contract in communicating it, I think he could not be permitted 
 to avail himself of that breach of contract."^" Where one who 
 was employed as an inventor discovered in the course of his em- 
 ployment a valuable process and attempted to drive a more fa- 
 vorable bargain as to his wages as a consideration for revealing 
 the discovery, the court gave to the employers an order com- 
 pelling disclosure to them and forbidding disclosure to anyone 
 else, and the injunction issued, although the employee had been 
 dismissed.*^ 
 
 There are Umits to the information which an employee may not 
 divulge. He usually may disclose where his employer buys ma- 
 terial, what his prices are, and his customers,^^ after his employ- 
 ment is ended. 
 
 The term " employee " as here used includes not only workmen 
 and artisans, but all persons who act for another in a capacity 
 which demands of the employed good faith and confidence. For 
 an employee to quit the emplojonent and then use in the service 
 of a rival information of a confidential nature gained in the prior 
 employment is contrary to good faith and fair dealing, and all 
 
 ^^ American Stay Co. v.Delaney, 211 '^^ Silver Spring Co. v. Woolworth, 
 
 Mass. 229-1912. 16 R. I. 729-1866; 19 Atl. 528. 
 
 '» Tipping v. Clarke, 2 Hare, 393. ^^ Salomon v. Hertz,, 40 N. J. Eq. 
 
 Cited in Prince Albert v. Strange, 1 400-1885; 2 Atl. 379. 
 Hall & T. 1-1849 (at p. 24). 
 
3l2 Trade Secrets 
 
 such actions are not only a breach of trust, but are, if such a 
 presumption be necessary, in violation of implied conditions 
 against such acts, which conditions the law will import into any 
 contract of employment. As seen above, the relation of an in- 
 sm-ance agent has been held not confidential within the meaning 
 of this rule, but an injunction has been issued in England against 
 an agent of an advertising house who, on leaving it, used informa- 
 tion gained there in his new position. In this case, when the 
 agreement of employment terminated, Evans went to a rival 
 house and used in its employ materials, headings, etc., which he 
 had obtained while with plaintiff. Such use violated the good 
 faith of the employment, and good faith underlies the whole of 
 an agent's obligations to his principal; an agent has no right to 
 employ, as against his principal, material obtained only for his 
 principal and in course of his agency. "The defendant, Evans, 
 was exclusively employed by the plaintiff to collect the adver- 
 tisements in certain districts, and in regard to the material things, 
 such as blocks and the like, it was the duty of these defendants 
 to furnish the plaintiff with them for the purpose of his work" 
 (id. p. 468). "As well as I could make out from the evidence, 
 the defendant, Evans, has retained some of these blocks and 
 other materials, and also the notes which they have made during 
 the term of their exclusive employment. In my opinion, as be- 
 tween the plaintiff and the defendants, these things could only 
 be used wrongfully as against the plaintiff."^^ An agreement not 
 to communicate a trade secret applies to agents of the one con- 
 tracting. On no other basis could vendee safely buy. While 
 such a contract of purchase is a personal covenant, it relates to 
 the actions of others, as well as to the acts of the vendor himself." 
 § 152. Unlawful Secrets. — The rule which prohibits former 
 employees from making disclosure of their employers' secrets 
 and of information acquired in course of their employment, does 
 not apply to facts acc[uired by them which show fraudulent con- 
 duct on the part of one or more of the employers to the injury of 
 persons dealing with them. The rules applicable to trade secrets 
 do not apply to such a case. There can be no lawful confidence 
 in an iniquitous and unlawful information.^^ 
 
 " Lamb v. Evans, 3 Ch. 462-1892; " fo^ ^ g^ggg^ ^27 N. Y. 480-1891; 
 affirmed in 1 Ch. 218-1893; 62 L. J. 28 N. E. 469; 13 L. R. A. 652, note. 
 Ch. 404. ^^Gartside v. Oulram, 3 Jr. N. S. 
 
Injury to Plaintiff by Defendant's Disclosures 313 
 
 § 153. Danger of Injury to Plaintiff by Defendant's Dis- 
 closures Must Exist. — In order fo obtain an injunction it should 
 appear that the plaintiff is in a position where he is exposed to 
 danger of loss by defendant's acts or threatened acts.^^ 
 
 But in the absence of proof of actual misuse of secrets, there 
 must at least be some evidence of wrongful intent, or other suffi- 
 cient reason for apprehending injury through violation of con- 
 fidence. 
 
 The mere fact that a competitor has employed one's former 
 employee, acquainted with one's trade secrets, does not entitle 
 one to an injunction against the learning and using of such secrets; 
 no such facts being shown as to warrant the inference of a fraud- 
 ulent or ulterior purpose, in the hiring. 
 
 In H. B. Wiggins Sons Co. v. Cott-A-Lap Co.,^^ Piatt, J., 
 said with reference to the state of facts above indicated: "If 
 the injunction issues, it means that hereafter no man can 
 work for one and learn his business secrets, and after leaving 
 that employment engage himself to a rival in business, without 
 carrying on his back into that business the injunctive mandate 
 of a court of equity. There is nothing whatever in the facts 
 of this case, except opportunity to do wrong and a suspicion in 
 the mind of the rival that wrong will be done. The remedy 
 asked for is an extraordinary one, and should not be lightly in- 
 dulged in." 57 * * * 
 
 39-1856. Defendant was a former extended to cases where fraudulent 
 employee of plaintiffs, a firm of brok- transactions have come to the knowl- 
 ers, and during his employment had edge of the person confidentially em- 
 acquired information showing fraud- ployed. There can be no confidence 
 ulent conduct on the part of the firm in an iniquitous secret, 
 to the injury of persons deaUng with '» Shonk Tin Printing Co. v. Shonk, 
 them. Upon his evidence one person 138 111. 34-1891; 27 N. E. 529. The 
 so injured had recovered substantial appellant had gone out of business 
 damages before an arbitrator. The and appellee was its successor. Held, 
 firm then sued to restrain him from that as it did not appear that at the 
 making further disclosures, on the time the bill was filed the appellant 
 ground that his information had been was in a position where it could have 
 acquired while he occupied a con- been injured by the acts of appellee 
 fidential relation to them. Held, that complained of, and this is an indis- 
 the protection to which one is or- pensable element of this action, no 
 dinarily entitled as against any person injunction would issue, 
 whom he has employed in a confiden- ««" 169 Fed. 150 (1909). 
 tial way in his affairs is not to be " To similar effect as the last cited 
 
314 Trade Secrets 
 
 § 154. One Who AvaUs Himself of a Secret Fraudulently 
 Disclosed May be Enjoined and Held Accountable for Profits. — 
 
 A secret need not be one relating to methods of manufactm-e 
 or process to receive the protection of the court, but may be some 
 financial or commercial information, or the fact that some cus- 
 tomer is about to place an order. If an employee or agent leaves 
 his employer or is discharged knowing such information, and he 
 imparts it to a rival to the damage of his former employer, the 
 second employer will be enjoined from using the information, 
 and may be compelled to account for any profits made from use 
 of this information. 
 
 One Hayes, an employee of complainant's predecessor, briefly 
 termed the "New Haven Company," had nearly completed 
 negotiations with a Boston company for placing an order with 
 the New Haven Company, when the latter tmned over all its 
 business to complainant, which did not take Hayes into its em- 
 ploy. Hayes then avaiUng himself of information obtained and 
 relations estabhshed with the customer while in the employ of 
 the New Haven Company, succeeded in directing the contract 
 to the defendant company. Held, that this company was Hable 
 to account to complainant for the profits made on this contract. ^^ 
 
 § 155. Name of a Jobber from Whom Goods are Bought 
 may be a Trade Secret. — The court, on application of a manu- 
 factiu-er, will not compel a retailer to give information as to 
 who was the jobber who sold certain goods made by this 
 manufacturer to the retailer. This fact is held to be a trade 
 secret. 
 
 A dry goods store was asked who sold the goods of plaintiff 
 to them, and on their declining to answer the comt upheld them, 
 saying that fact was a trade secret not essential to maintenance 
 of the plaintiff's suit. "When a manufacturer parts with his 
 
 case, see S. S. White D. M. Co. v. Misc. 386; 83 Hun, 43. But such prof- 
 MitcheU, 188 Fed. 1017 (injunction its are only awarded for the period 
 asked against former employee). during which a defendant knowingly 
 ^'International Register Co. v. Re- infringed complainant's rights. Vul- 
 cording Fare Register Co., 151 Fed. can D. Co. v. American Can Co., 75 
 199-1907 (CCA. 2d Cir.). Account- N. J. Eq. 542. A court of equity can- 
 ing for profits was directed in Vulcan not award exemplary damages. Wit- 
 Detinning Co. v. American Can Co., 75 kop & Holmes Co. v. Great A. & P. 
 N. J. Eq. 542; s. c. 80 N. J. Eq. 443; Tea Co., 69 Misc. 90. 
 also in Baldwin v. Von Micheroux, 5 
 
Transfer of Secrets 315 
 
 goods and they go upon the market, any third person has the 
 right to purchase and sell them as he pleases without the consent 
 of the manufacturer, and the courts will not aid the manufac- 
 turer; under the guise of protectiag his trade-mark or the sup- 
 pression of unfair competition, by permitting him in such 
 htigation to discover the source from which an objectionable 
 merchant to him obtains his supply." ^ 
 
 In connection with this ruling, that of the New Jersey Chan- 
 cery Court should be noticed, when, in Salomon v. Hertz,^" it 
 was held that employees should not be restrained after their 
 employment was ended from disclosing where plaintiff purchased 
 his materials or to whom he sold his goods or the prices at which 
 he bought and sold. 
 
 A plea by the defendant that he uses no secret in his business 
 or has possession of no secret, such as the plaintiff alleges he 
 has, will not be sufficient to prevent the issuing of the injunction. 
 
 § 156. Transfer of Secrets. — As early as 1823 trade secrets 
 were objects of transfer by sale, assignments and bequests, and 
 the right of the true owner of a secret to hold to account one 
 who wrongfully obtains possession of it was upheld.®^ 
 
 A secret may be transferred by gift. In Covell v. Chadwick, ^^ 
 an administratrix transferred a formula and trade-marks by a 
 gift. The donee of the administratrix thereupon made the medi- 
 cine. The plaintiff, a grantee of an administrator de bonis non, who 
 followed the administratrix, attempted in this action to prevent 
 the donee from using the formula. Held, the donee had good title. 
 
 Where one has sold for a valuable consideration the exclusive 
 property in a secret medicine, he has no right to reveal the secret 
 to another, and an injunction will issue against the use of such 
 a secret by one to whom it has been revealed either by the vendor 
 
 ^^Gorham v. Emery, etc., Co., 92 mother destroyed the formula, but 
 
 Fed. 774 at p. 779. verbally communicated its contents to 
 
 «» 40 N. J. Eq. 400-1885; 2 Atl. her eldest son, for the benefit of the 
 
 379. brothers and sisters. Upon suit 
 
 "GVeew v. Folgham, 1 Sim. & St. brought against him by some of the 
 398-1823. The owner of a secret latter, he was declared to hold the 
 formula for making an ointment, as- secret upon the trust of the settle- 
 signed it, on her marriage, to trus- ment, and was directed to account for 
 tees, in trust for her and her hus- the profits since his mother's death, 
 band for their lives, then to be sold «2 153 Mass. 263-1891; 26 N. E. 
 for the benefit of their children. The 856. 
 
316 Trade Secrets 
 
 himself or by the member of the family or other person who is 
 in possession of it through confidential relations with the vendor.*' 
 Whether nominated in the agreement of the transfer or not, the 
 vendor of a secret will not be allowed to impart the secret to a 
 third person after the transfer. The law holds the right con- 
 veyed to be exclusive even of the vendor himself, and an injunc- 
 tion will issue against the vendor, or any one of his family or 
 associates who learn the secret through their relations with him, 
 forbidding them to disclose it. 
 
 The devolution of the right to use a trade secret in case of the 
 dissolution of partnership or corporation, or of bankruptcy, etc., 
 is doubtless subject to similar rules as those applying to other 
 intangible assets, such as trade-marks, etc.*^ 
 
 The assignment of a trade secret carries the right to protect 
 it, by preventing disclosure or unauthorized use on the part of 
 those who have held confidential relations with the assignor, 
 though they may never have had any connection with the as- 
 signee. This because title to a trade secret, though dishonestly 
 obtained, is good against everyone except the person from whom 
 the secret had been so obtained and his assigns.*^ 
 
 § 157. List of Customers is Secret Property — No One May 
 Canvass Them Except the Owner of the List. — The question 
 whether a person who had sold the good-will of his business 
 was entitled afterward to canvass the customers of that busi- 
 ness came first before the courts for decision in the case of La- 
 bouchere v. Dawson,^ and Lord Romilly, M. R., answered in the 
 negative. He was of opinion that the principles of equity must pre- 
 vail and that persons are not at liberty to depreciate the value of 
 the thing which they have sold. He considered that the defendant 
 was not entitled, personally or by letter, or by his agent or traveler, 
 to go to anyone who was a customer of the firm and to soUcit 
 him not to continue business with the old firm, but to transfer it 
 to him; that this was not a fair and reasonable thing to do after 
 
 »' C. F. Simmons Medicine Co. v. absence of any express agreement, at 
 
 Simmons, 81 Fed. 163 (C. C. Ark. liberty to use its trade secrets. 
 
 1897). 86 Vulcan Detinning Co. v. Ameri- 
 
 " It was, however, said in Baldwin can Can Co., 67 N. J. Eq. 243-1904; 
 
 V. Von Micheroux, 5 Misc. (N. Y.) 58 Atl. 290. 
 
 386; 83 Hun, 43, that on the dissolu- «« 13 Eq. 322-1872. 
 tion of a firm each member was, in the 
 
List of Customers Is Secret Property 317 
 
 he had sold the good-will. Accordingly an injunction was granted 
 "to restrain the defendant, his partners, servants, or agents from 
 applying to any person who was a customer of the firm prior to 
 the date of the sale, privately, by letter, personally, or by a 
 traveler, asking such customers to continue to deal with the 
 defendant or not to deal with the plaintiffs" (id. p. 327). This 
 decision was subsequently followed by the House of Lords in 
 Trego v. Hunt.^'' 
 
 Before 1876, Trego and wife were in business in Condon. In 
 1876, Trego took Hunt into partnership, agreeing with Hunt 
 that the good-will should remain Trego's property. Trego died, 
 business was continued by his widow, under contract that she 
 should be sole owner of good-will. In 1894, Hunt employed 
 a clerk out of hours to make a copy of the concern's customers. 
 Injunction granted. The same view obtains in New Yorkj^'" 
 Massachusetts,^''' New Jersey,"" Michigan,^''' Rhode Island,"'' Illi- 
 nois " ^ and Pennsylvania "'" as to the right of a voluntary assignor 
 of the good-will of a business to solicit business from old custom- 
 ers. In Connecticut*'* the court of last resort has entertained 
 a contrary view. 
 
 A manager of a game farm surreptitiously copied from his 
 master's order book a Ust of names and addresses of the cus- 
 tomers, with the intention of using it for the purpose of solicit- 
 ing orders from them after he had left the plaintiff's employ, 
 and set up a similar business of his own. He then left the plain- 
 tiff's employ and sent out circulars to the customers in the list, 
 sohciting their trade for himself. Held, that in such a contract 
 of service there is an imphed stipulation that the servant will 
 act with good faith toward his master, and that defendant's 
 conduct was a breach of that obligation. The court granted an 
 injunction against the use of information derived from the hst, 
 awarded damages and directed that the list be delivered to plain- 
 
 »' Trego v. Hunt, 1896, App. Cas. ''^ Myers v. Kalamazoo Buggy Co., 
 
 7. 54 Mich. 215. 
 
 »'" Von Breman v. MacMonines, "" Zanturjian v. Boornazian, 25 
 
 200 N. Y. 41. R. I. 151. 
 
 '■''' Hutchinson v. Nay, 187 Mass. "^ Ranft v. Reimers, 200 111. 386. 
 262. ""' Wentzel v. Barbin, 189 Pa. St. 
 
 «"= Newark Coal Co. v. Spangler, 54 502. 
 N. J. Equity, 354. "'* Cottrell v. Babcock P. P. M. Co., 
 
 54 Conn. 122. 
 
318 Trade Secrets 
 
 tiff to be destroyed.*^ It is seen from the foregoing that under 
 EngUsh procedure, where an ex-employee is found to have copied 
 and used a list of customers belonging to his former employer, 
 the court has power to enjoin the use of it, award damages, and 
 direct that the list be delivered to the plaintiff to be destroyed. 
 See §§ 28, 150. 
 
 "The names of the customers of a business concern whose 
 trade and patronage have been secured by years of business 
 effort and advertising, and the expenditure of time and money, 
 constituting a part of the good-will of a business which enterprise 
 and foresight have built up, should be deemed just as sacred and 
 entitled to the same protection as a secret of compounding some 
 article of manufacture and commerce." ^' 
 
 The fact that the list was prepared by the ex-employee during 
 his previous employment will give him no right to use it after 
 he leaves his employment.^''' 
 
 It has been held in New York that it is not essential that writ- 
 ten lists of customers should be retained and used by the former 
 employee. He is not entitled to avail himself of his acquaintance 
 with the customers to canvass their trade for a new employer. 
 This rule should be apphed with caution. Much depends on the 
 special facts of the case, and some courts seem disinclined to go 
 as far as this.™ 
 
 '8 Robb V. Green, 2 Q. B. 315-1895. prepared by a former employee of 
 
 And see 2 Q. B. 1. plaintiff in the course of duty, and a 
 
 '5 Witkop V. Boyce, 61 Misc. (N. Y.) copy of them having been taken by 
 
 126-31, aff'd 131 App. Div. 922. Cited him when he left plaintiff's employ, 
 
 in Empire Laundry v. Lozier, 165 Cal. Stevens & Co. v. Stiles, 29 R. I. 399 
 
 95-1913. (1909); (20 L. R. A. N. S. 933). 
 
 «"" Stevens v. Stiles, 29 R. I. 399- Defendant was employed by plain- 
 
 1909. tiff in its business, as opticians, to 
 
 ™ Witkop V. Boyce, 64 Misc. (N. Y.) examine the eyes of customers, pre- 
 
 374^1909. See also Witkop v. Great scribe glasses, and keep records of his 
 
 Atlantic & Pacific Tea Co., 69 Misc. examination and prescription. Held, 
 
 (N. Y.) 90; Oxypathor Co. v. De that he had no right to copy such 
 
 Cordero, 164 App. Div. 962; 149 N. Y. notes, even so far as they related to 
 
 Supp. 513. examinations made by him, and after 
 
 An injunction was granted against leaving his employ, to send circular 
 
 the use by a rival of card indices letters soliciting the custom of those, 
 
 giving information as to agents, con- whose names and addresses he had 
 
 tracts, and other details of plaintiff's recorded by this means. Injunction . 
 
 business, these indices having been granted. 
 
Pleadings and Practice; Form of Injunction 319 
 
 But in a later New York case, '^ in which there was no copying 
 of lists of customers the court said: "All that clearly appears is 
 that he (the employee) undertook to use in his new employ- 
 ment the knowledge he had acquired in the old. This if it in- 
 volves no breach of confidence, is not unlawful, for equity has no 
 power to compel a man who changes employers to wipe clean the 
 slate of his memory." So also in Boosing v. Darman,''^'^ a former 
 employee was permitted to solicit old customers, these not being 
 only on his employer's list, but publicly listed in trade directories. 
 
 And in Great Union Tea Co. v. Dodds,''^^ the court decUned to 
 restrain the mere soliciting of customers known to defendant 
 through his former employment. On the other hand, Smith 
 V. Kenian,^^" (cited in note, 31 L. R. A. N. S. 260, 261) and the 
 discussion m. Robb v. Green,''^'^ seem to support the ruling of the 
 New York case first mentioned. Such a case as Stein v. National 
 Life Association,''^^ seems distinguishable. There the court re- 
 fused to restraiu a life insurance agent who had made a new 
 connection from influencing policy-holders whom he had se- 
 cured for the old company from transferring their insurance 
 to the new company; the agent had "relied upon no informa- 
 tion which had been communicated to him in confidence, as a 
 business or trade secret." 
 
 An unusually vigorous injunction was granted in Loven v. 
 The People,''^' where a former employee, using confidential 
 data regarding customers, was endeavoring by solicitation to 
 divert their trade. His conduct was in violation of an ex- 
 press agreement. The injunction forbade his corresponding 
 in any name with complainants' customers, as well as from 
 soliciting them, and was continued, in a contempt proceed- 
 ing, not only to prohibit him from initiating correspondence 
 with them, but even from responding to their inquiries. 
 
 § 158. Pleadings and Practice ; Form of Injunction. — Neither 
 the bill nor the injunction nefed specify in detail the particular 
 secrets the disclosure of which is threatened.^^ 
 
 (English and American cases cited "° 8 Ohio Dec. Repr. 32 (cited in 
 
 and quoted). note 31 L. R. A. N. S. 260, 261. 
 
 ■•^Peerless Pattern Co. v. Pictorial "'' 64 L. J. Q. B. N. S. 593. 
 
 Review Co., 147 App. Div. (N. Y.) 715- "« 105 Ga. 821-1899. 
 
 1911. ■"f 158 m. 159-1895. 
 
 ■"■" 148 App. Div. (N. Y.) 824. '" S. S. White D. M. Co. v. Mitchell, 
 
 "'' 164 Mich. 50-1910. 188 Fed. 1017 (injunction need not 
 
320 Trade Secrets 
 
 But it has been held that an injunction should specify the par- 
 ticular preparations as to which it forbids the disclosure and use of 
 secret formulas." 
 
 The remedies applicable to trade-mark, copyright and patent 
 cases are said to be applicable to equitable suits to protect trade 
 secrets.''* 
 
 § 159. Defenses. — That the employer is in actual possession 
 of the secret and using it is ordinarily enough to entitle it to pro- 
 tection against an employee using it improperly, and he cannot 
 set up, under the doctriae of "clean hands," that the secret had 
 been obtained by unfaii- means from a third person. This is so 
 at least where the employer was not personally at fault; the fraud 
 of an agent will not be imputed to him." 
 
 So it was held not to be sufficient to call for the application of 
 the "clean hands" doctrine that complainant had to some extent 
 offended against another by copying his catalogues, where not 
 only this but various other disloyal acts were charged against 
 defendant.'* Nor is it a defense that the manufacture of the 
 article in question by the plaintiff corporation was ultra vires.'''' 
 
 In Philadelphia Extracting Co. v. Keystone Extracting Co.,'''''' it 
 was intimated that laches would not bar injunctive relief against 
 one who has violated the confidence reposed in him as an employee. 
 
 § 160. Duty of Corporate Officers as to Trade Secrets. — 
 A director of a corporation who obtains knowledge of confidential 
 trade information while in performance of his duty may not 
 use such information later in a rival concern.'^ "In the appUca- 
 
 be more definite than the threatened Co. v. De Cordero, 164 App. Div. 
 
 injury). Vulcan Detinning Co. v. 962. 
 
 American Can Co., 67 N. J. Eq. 243 '^ Vulcan Detinning Co. v. American 
 
 (secrets need not be specifically enu- Can Co., 69 Atl. 1103, 1106 (N. J. Eq. 
 
 merated; general description enough). 1908). 
 
 Pomeroy Ink Co. v. Pomsroy, 77 N. J. " Vulcan Detinning Co. v. American 
 
 Eq. 293, 299-1910. Can Co., 67 N. J. Eq. 243-1905; s. c' 
 
 " G. F. Harvey Co. v. Nat'l Drug 72 N. J. Eq. 387. 
 Co., 75 App. Div. 103 (where the evi- ™ Merchants S. C. Co. v. Retailers' 
 
 dence related only to a particular rem- Co., 206 Fed. 545. 
 edy, which was covered by the in- " S. S. White D. M. Co. v. Mitchell, 
 
 junction, it was too sweeping to make 188 Fed. 1017-1911. 
 the injunction extend to "any" prepa- ""176 Fed. 830-1910. 
 rationraadeinaccordance with "any " " Vulcan Co. v. American Can Co., 
 
 secret formula). See also Oxypathor 72 N. J. Eq. 387; 67 Atl. 339-1907. 
 
Letters May Be Teade Secrets 321 
 
 tion of these general principles the secrecy with which a court of 
 equity deals is not necessarily that absolute secrecy that inheres 
 in discovery but that qualified secrecy that arises from mutual 
 understanding and that is required ahke by good faith and by 
 good morals." (Id.) 
 
 A secretary of a corporation has been upheld in forcibly tak- 
 ing the files of a corporation from a director who was using them 
 for the benefit of a rival company.'' 
 
 § 161. Letters May be Trade Secrets. — After dissolution of a 
 partnership, equity will restrain one partner from pubUshing 
 letters of another partner concerning the business of the firm, 
 unless the purpose of justice, civil or criminal, require such pub- 
 lication.^ 
 
 " Heminway v. Heminway, 58 Conn. '" Roberts v. McKee, 29 Ga. 161- 
 443-1895. 1859. 
 
CHAPTER XII 
 
 Interference With a Competitor's Business and Contracts 
 
 Section 162. Action at common law based only on injury to one's trade or 
 business. 
 
 163. Malice. 
 
 164. Interference with business generally. 
 
 165. Interference with contracts by third person enjoined. 
 
 166. Interference with contracts with servants. 
 
 167. Lumley v. Gye, and other cases. 
 
 168. Causing breach of contracts for furnishing information. 
 
 169. Causing breach of passengers' contracts with transportation 
 
 companies. 
 
 170. What constitutes interference with contract. 
 
 171. Justification of interference with contracts. 
 
 172. Ighorance of the existence of the contract is no defence against 
 
 an injunction. 
 172". Procuring breach »f contract not to re-enter business. 
 
 173. Position of New York courts. 
 
 174. Conditional contracts — inducing breach of manufacturers' con- 
 
 tracts with retailers. 
 
 175. Inducing breach of contracts for sale of goods made by secret 
 
 process. 
 
 176. Interference with proposed or prospective contracts. . 
 
 177. What interference with another's business in general is legitimate. 
 
 178. Tortious interference with another's business generally. 
 
 179. iMterference with salesmen of a competitor. 
 
 180. Interference by false representations and threats. 
 
 181. Interference by bringing a multiplicity of suits. 
 
 182. Simulated competition. 
 
 183. Interference with employment, actual or prospective. 
 
 184. Damages. 
 
 It has long been a recognized principle of common law that 
 the prevention and cm-bing of competition is an unlawful act. 
 The restriction of the freedom of trade is considered to be against 
 pubUc policy, and injurious to general welfare.^ During the past 
 few years there has been a growing demand made on courts and 
 legislatures that they take measures to limit the freedom of com- 
 petition of the so-called trusts and also that they take other 
 measures to give the small dealer larger protection and freedom 
 1 People V. Sheldon, 139 N. Y. 251. 
 322 
 
Action Based Only on Injury to One's Trade 323 
 
 in competition. All these demands are made for the benefit of 
 those who are not able to cope with the great powers of the com- 
 mercial world that have come into existence under the law as it 
 now exists. These demands are socialistic in their nature. Free- 
 dom of competition, under modern conditions,^ seems to lead to 
 monopoly, — the very evil which the common law sought to 
 avoid in its protection of competition. This condition has been 
 reached, in part, by the application of the very rules laid down by 
 the common law to prevent monopoly. 
 
 The discussion of these questions by the courts is to be found 
 largely in cases dealing (a) • with the right which it is claimed 
 every man has to carry on his trade or calling without molestation 
 or interruption, — cases dealing principally with rights of labor 
 organizations as to boycott, strikes, lockouts, etc.; (6) with the 
 right of persons under contract with each other as against one 
 who intentionally causes a breach of that contract. Cases of 
 this sort are not usually classed as unfair competition cases, but 
 the principles involved in them go straight to the question of 
 fairness and honesty in business competition. If the limits to 
 the right of one merchant to interfere with, to block, harass, and 
 injure the trade of a competitor are not defined clearly, it means 
 that the freedom of use of capital in commercial enterprises will 
 be hampered and restricted unnecessarily. If the business world 
 is not certain of its rights as against those who intentionally and 
 wrongfiiUy procure the breaking of contracts for their own gain, 
 public confidence in the binding force of contracts which is now 
 none too strong will be weakened. 
 
 Here again the extension of the application of the writ of in- 
 junction is demanded and opposed by the contending forces, for 
 by far the most effective weapon against him who interferes with 
 business or sets out to effect a breaking of contracts to which he 
 is not a party, is the quick relief afforded by this writ. 
 
 First, then, let us ask if at common law there existed a right 
 of action on the complaint of one who had been or was being 
 injured in his trade, business, or calling against the one causing 
 the injury, simply because the injury was to his means of earning 
 his livelihood. 
 
 § 162. Action at Common Law based Only on Injury to One's 
 
 'Mogul SS. Co. V. McGregor, 23 December, 1906, "New National 
 Q. B. D, 598. Atlantic Monthly, Forces and the Old Law." 
 
324 Interference With a Competitor's Business, Etc. 
 
 Trade or Business.^ — One of the earliest cases and one on the 
 interpretation of which much of the discussion of this subject has 
 turned, is Keeble v. Hickeringill,^ (an action upon the case) de- 
 cided in 1707 by Sir John Holt, who is known to every lawyer 
 through his decisions relating to bailments. The facts were these : 
 Plaintiff owned a decoy pond and put upon it decoy-ducks, nets, 
 etc., for taking fowl. "The defendant, knowing which and in- 
 tending to damnify the plaintiff in his vivary and to fright and 
 drive away the wild fowl used to resort thither, and deprive him 
 of his profit, did * * * resort to the head of said pond and 
 vivary, and did discharge six guns laden with gunpowder, and 
 with the noise and stink of the gunpowder did drive away the 
 wUd fowl then being in the pond; and * * * the defendant, 
 with design to damnify the plaintiff, * * * did place himself 
 with a gun near the vivary and there did discharge the said gun 
 several times that was then charged with the gunpowder against 
 the said decoy pond, whereby the wild fowl were frighted away 
 and did forsake the said pond." Verdict for plaintiff. 
 
 Holt, J., held, that (1) "Making a decoy is lawful; (2) using 
 ground for that purpose is profitable for plaintiff. As to the first, 
 every man that hath a property may employ it for his pleasure 
 and profit as for alluring and procuring decoy ducks to come to 
 his pond. To learn the trade of seducing other ducks to come 
 there in order to be taken is not prohibited either by the law of 
 the land or the moral law. * * * When a man useth his art 
 or his skill to take them, to sell and dispose of for his profit, this 
 is his trade; and he that hinders another in his trade or livelihood 
 is hable to an action for so hindering him. * * * Why other- 
 wise are scandalous words spoken of a man in his profession ac- 
 tionable, when without his profession they are not so? Though 
 they do not effect any damage, yet they are mischievous in them- 
 selves and therefore in their own nature productive of damage; 
 and therefore an action lies against him. Such are all words that 
 are spoken of a man to disparage him in his trade that may bring 
 damage to him. * * * jjow much more when the defendant 
 doth an actual and real damage to another when he is in the very 
 act of receiving profit by his employment. * * * Where a 
 
 2" This and the succeeding in first jl v. Montgomery, etc., Co., 171 Fed. 
 edition referred to in Citizens Co. \ 561. 
 
 » n East, 574, note. 
 
Action Based Only on Injttry to One's Trade 325 
 
 violent or malicious act is done to man's occupation, profession, 
 or way of getting a livelihood, there an action lies in all cases. 
 But if a man doth him damage by using the same employment, 
 as if Mr. HickeringUl had set up another decoy on his own ground 
 near the plaintiff's, and that had spoiled the custom of the plain- 
 tiff, no action would he, because he had as much liberty to make 
 and use a decoy as the plaintiff." 
 
 Whether or not this case is of sufficient authority to warrant 
 saying that an action did exist at common la^ on account of 
 injury to a man in his trade or calling, it must be admitted that 
 to-day there is an increasing demand that the law furnish soiAe 
 remedy against wrongs which deprive a man of his trade and 
 its profits, and which interfere with his business, where such 
 acts are done unfairly. Freedom of competition, and freedom 
 of the right to contract have ever been stoutly defended by the 
 common law, and many court's have turned to the Keeble case 
 as giving the foimdation for allowing an action which modern 
 conditions seem to render essential to the administration of 
 justice. 
 
 This case was fully discussed in Allen v. Flood* by the House 
 of Lords. Lord Davey there says (p. 173) that, in every case 
 where such an action has been allowed in England, there has 
 been "either violence or the threat of violence, obstruction of the 
 highway or the access to the plaintiff's premises, nuisance, or 
 other unlawful acts done to the damage of the plaintiff;" and he 
 continues to argue, as does Lord Herschell, that there can hardly 
 be such an action because no instance of it is found, other than 
 Keeble v. Hickeringill,^ Carrington v. Taylor,^ and Ibbotson v. 
 PeatJ 
 
 Lord Watson takes up the illustrations used by Sir John Holt 
 in that case, viz.: (1) Scaring children on way to school with 
 guns to the loss of the pupils and schoolmaster; (2) obstruction 
 of one takuig a horse to market, to the loss of the owner; (3) 
 frightening away tenants at will; (4) beating a servant; and says 
 that, "apart from any question of motive all these cases involve 
 the use of means in themselves illegal — obstruction, coercion 
 by means of threats and personal assault.^ " This observation, 
 
 * App. Cas. 1-1898. ' 3 H. & C. 644. 
 
 6 11 East, 574; Holt, 14. « Allen v. Flood, App. Cas. 1, 102- 
 
 « 11 East, 571. 1898. 
 
326 Interfekence With a Competitor's Business, Etc. 
 
 while based somewhat on assumption, does not seem to nullify the 
 authority of the Keeble case itself, in which there was no illegal 
 or violent act, and these conclusions are exactly contrary to those 
 of Lord Halsbury.^ 
 
 Lord Herschell contends that the fact that the plaintiff traded 
 in ducks — made duck decoying his business — did not change 
 the right of the defendant to shoot on his own land.^" He declines 
 to entertain any distinction between an injury inflicted upon a 
 man's trade and injuries of other sorts. He admits everyone has 
 a right to pursue his trade or calling without molestation, but 
 only as a part of the larger principle that all may do lawful acts 
 without molestation. He considers the statement in the Mogul 
 Steamship Company case, to the effect that "intentionally to do 
 that which is calculated in the ordinary course of events to dam- 
 age, and which does in fact damage another in that other person's 
 property or trade is actionable, if done without just cause or 
 excuse," is dictum, and too broad a statement. But in South 
 Wales Miners' Fed. v. Glamorgan Coal Co.^^ Lord James cites 
 this very passage as a foundation principle of law. 
 
 Lord Chancellor Halsbury sums up his view thus: "I have 
 never heard that a man who was dismissed from his service by 
 reason of some slander, could not maintain an action against 
 the slanderer because the master had a legal right to discharge 
 him."^^ Again he said (p. 78): "I do not think that the case of 
 Keeble v. Hickeringill ^' stands alone, though if it did, considering 
 who decided it and that certainly in later years it has been much 
 quoted and commented on and never until now, so far as I am 
 aware, criticised or questioned, I should be quite content- to rely 
 upon the authority of so profound a lawyer as Sir John Holt, and 
 such an expositor as he was of the spirit of freedom which runs 
 through the English law." Lord Halsbury rests his decision in 
 part on Walker v. Cronin,^* which decision is based on (1) Comyn 
 Dig., where, under the title "Action upon the case," it is stated: 
 "In all cases, where a man has a temporal loss, or damage by the 
 wrong of another, he may have an action on the case to be repaired 
 
 9 Alkn V. Flood, App. Cas. 1, 70- " App. Cas. 239-1905, "The Stop 
 1898. Day Case." 
 
 ^oAlkn V. Flood, App. Cas. 133- ^' Allen v. Flood, App. Cas. 74r-l898. 
 1898. " 11 East, 574, note. 
 
 ■^ 107 Mass. 555. 
 
Action Based Only on Injury to One's Trade 327 
 
 in damages;" and on (2) the following cases: Keeble v. Hickerin- 
 gill,^^ Tarletori v. McGawley,^^ Green v. Button," Gunter v. Astor,^^ 
 Hart V. Aldridge,^^ Shepherd v. Wakenian,^° Winsmore v. Green- 
 bank,^^ Lumley v. Gye;" ^^ and in part on Benton v. Pratt,^^ Rice v. 
 Manley,^'^ Bixhy v. Dunlap,^^ Angle v. Chicago, etc., Railway. ^^ 
 The facts of most of these cases will be found in this volume. 
 
 A case very similar to the Keeble case has arisen in France. 
 The plaintiff invited friends to his estate to shoot. A jealous 
 neighbor ordered his servants to make a noise on his own land 
 to frighten away the game from the plaintiff's land. He was 
 made to pay damages to the plaintiff. ^^^ 
 
 We will now turn to the case of Allen v. Flood,^ from 'which 
 the foregoing opinions are taken, and which is probably the 
 most exhaustive judicial discussion of this question. Briefly 
 stated, that case was an action by a discharged workman against 
 a delegate of a union to which he did rwt belong, on the ground 
 that the delegate caused his employer to discharge him.^ Twenty- 
 one judges heard the case in all its stages. Thirteen, of whom 
 three were Law Lords, held that the case presented a good cause 
 of action. Eight, six of whom were Law Lords, denied the exist- 
 ence of an actionable wrong. Since it was decided, the House of 
 Lords itself and other English courts have been astute to modify 
 and explain it, so that its authority is now confined to narrow 
 limits. Lord Halsbury, ia Quinn v. Leathern,'^ says that "the 
 hypothesis of fact upon which Allen v. Flood was decided by a 
 majority in this House was that the defendant there neither 
 uttered nor carried into effect any threat at all. He simply warned 
 others against certain acts." Lord MacNaghten says in the same 
 case, "an act which does not amount to a legal injury cannot be 
 actionable because it is done with a bad intent. That, in my 
 opinion, is the sum and substance of Allen v. Flood;" '" and Lord 
 
 " 11 East, 574, note. ^s 55 N. H. 456; 22 Am. Rep. 475. 
 
 i« 1 Peake N. P. C. 205. «» 151 U. S. 1-1893. 
 
 " 2 C. M. & R. 707. 2«" Prince de Wagram v. Marais 
 
 " 4 J. B. Moore, 12-1819. Cour de Paris, Dec. 2, 1871, Dalloz, 
 
 " 1 Cowp. 54^1774. 2, 185. 
 
 2» 1 Sid. 79. " App. Cas. 1-1898. 
 
 " Willes, 577-1745. '' See on this case valuable article, 
 
 " 2 E. & B. 216. 11 Har. L. Rev. 449. 
 
 2' 2 Wend. (N. Y.) 385-1829. "■" App. Cas. 495-506-1901. 
 
 " 66 N. Y. 82-1876. '" App. Cas. 1-1898. 
 
328 Intekfeeence With a Competitor's Business, Etc. 
 
 Lindley says that the case also establishes the fact that Allen 
 infringed no right of the plaintiffs, although he acted maliciously. 
 The question was later considered by the House of Lords in 1901, 
 when it held that a combination of two or more persons without 
 excuse and without justification to injure a, man in his trade by 
 persuading or inducing his customers not to trade with him, or 
 his servants or customers to break contracts made with him, or 
 not to deal with him, or to leave his employ, is actionable, pro- 
 vided he suffers damages.^' 
 
 In 1905 the House held that officers of a labor union who, 
 without malice or ill will against the employers, caused the mem- 
 bers of the union to stop work and break their contract with these 
 employers, were liable, for their act was wrongful, in the absence 
 of justification.'^ 
 
 Whether an action existed at common law based solely on 
 injury to a man in his trade or business, is doubtful, perhaps, but 
 some jm-isdictions, as will be seen, have definitely recognized 
 that such a wrong is the basis of an action now, and practically 
 all coTirts grant relief against acts which cause breach of con- 
 tracts made by others. 
 
 The Trade Disputes Act of 1906 provides that an act done 
 in contemplation or furtherance of a trade dispute shall not 
 be actionable as an interference with contract or with the trade 
 or business of another. Speaking of this act, "The Solicitors' 
 Journal" ^^ says, p. 156: "For general purposes, however, the 
 law as to the liabifity of a third party for inducing a breach 
 of contract remains untouched, and with the growth of modern 
 restrictions on business, it is probable that the courts will have 
 abundant opportunity of applying it." Mr. J. B. Ames states 
 his view of the rule to be: "The wilful causing of damage to 
 another by a positive act, whether by one man alone, or by several 
 acting in concert, whether by direct action against him or in- 
 directly by inducing a third person to exercise a lawful right, is 
 a tort, unless there was a just cause for inflicting the damage, 
 and the question whether there was or was not just cause will 
 
 " Quinn v. Leathern, App. Cas. '^ London, January 4, 1908. See 
 
 495-1901. also Cohen's "Trade Union Law," 
 
 ^^ South Waks Miners' Fed. v. Lond. 1907. 
 Glamorgan, App, Cas. 239-4905. 
 
Malice 329 
 
 depend in many cases, but not in all, upon the motive of the 
 actor." 32 6 
 
 § 163. Malice.'^" -^ In Allen v. Flood ^^ much space is devoted 
 to a consideration of the meaning of the term malice, as defining 
 the intent to injure, which the defendant has when he commits 
 acts which result in injury to the plaintiff's trade, profession, or 
 business; and it is advisable to pause here to consider this ques- 
 tion, as the American cases, in most instances, use the term in 
 defining the action against injury of this sort. 
 
 Keeble v. Hickeringill^* is usually considered as authority for 
 two propositions: (a) that intentional injury to a man's business 
 or trade is actionable; (6) that malice or intent to injure will under 
 certain circumstances cause an act, otherwise legal, to become 
 illegal. So long as Hickeringill shot his gun on his own land, 
 in good faith, no action arose against him. Does the fact that he 
 did this shooting with latent to damnify the plaintiff in his busi- 
 ness, create an action where none would exist had the intent to 
 injure not been shown? 
 
 MaUce does not always create a cause of action. It may cause 
 a man to set up a rival business next door to his enemy, but so 
 long as he pursues that business, using only fair methods, al- 
 though with all possible malice, no action arises. A person may 
 stop the percolation of water from his land, when his evident 
 purpose is to impair a city's water supply and force a sale of 
 land, yet no action arises.'* But any invasion of the civil rights 
 of. another person is in itself a legal wrong. Whether the motive 
 be good or bad does not alter this principle. Lord Watson says, 
 in Allen v. Flood,^^ that "the existence of a bad motive in the case 
 of an act which is not in itself illegal, will not convert that act into 
 a civil wrong for which reparation is due. A wrongful act done 
 knowingly and with a view to its injurious consequences may, 
 in the sense of law, be malicious, but such malice derives its 
 essential character from the circumstance that the act done 
 constitutes a violation of the law." 
 
 »* 18 Harvard Law Rep. v. 412. "11 East, 574, note. See digest 
 
 »2" See Citizens Co. v. Montgomery, case, § 162. 
 etc., Co., 171 Fed. 561, where this ^^Chasemore v. Richards, 7 H. L. 
 
 section in first edition is referred C. 349-1859; Mayor of Bradford v. 
 
 to. Pickles, 64 L. J. Ch. 101-1895. 
 
 " App. Cas. 1-1898. " App. Cas. 92-1898. 
 
330 Interference With a Competitor's Business, Etc. 
 
 In other words, according to Lord Watson, no amount of 
 malice will make an otherwise unactionable act, actionable; the 
 act which is done with malice must be illegal in itself. Would 
 this not eliminate the question of malice and leave the question 
 thus: Is it actionable to injure another in his business regardless 
 of malice? This seems begging the question. Is it true that ' ' mal- 
 ice derives its essential character from the circumstance that the 
 act done constitutes a violation of law?" Rather, may not the 
 maUce often arise in the defendant's mind because of something 
 totally unconnected with the act which breaches the contract and 
 yet be the cause of the act he does in furtherance of his intent to 
 injure the plaintiff? In the Keeble case the act of defendant may 
 have been prompted by the fact that Keeble's children had an- 
 noyed his children, or because he was jealous of Keeble on account 
 of some political quarrel. If this be true then the maUce or ill 
 will which prompted the injurious acts has nothing to do with 
 the acts complained of. Without it they are legal; the question 
 is, Does the presence of this malice or ill will make them illegal? 
 
 Malice may mean many things; and there are various kinds 
 of malice recognized in law. In defamation cases there is implied 
 malice, viz., absence of just cause or excuse, and the express or 
 actual malice which may be proved after the legal presumption 
 of malice is rebutted. Suffice it to say that what is meant by the 
 word, when used in describing the acts of those who interfere 
 with the business of others, who get trade away from rivals, 
 who force rivals to sell out, who cause breaches of contracts 
 in which competitors are interested, is not the usual meaning, 
 which is "A disposition or intent to injure another or others for 
 the gratification of anger, jealousy, hatred, revenge," ^^ Rather 
 these acts are the result of the desire of business men to succeed, 
 — to down rivals, to get out of their way those who block their 
 progress. The acts done for this purpose and those done in return 
 by those injured result in "anger, jealousy, hatred, revenge," 
 but the real intent is to succeed in business, to make money. 
 Lord Lindley said ^^ that malice may or may not be used to denote 
 ill will, and that as there are various kinds of malice, such as 
 presumptive or implied malice and express malice, the term 
 should be dropped, and there should be substituted for it the 
 
 "Standard Diet. '» South Wales Miners' Fed. v. 
 
 Glamorgan, App. Cas. 23&-1905. 
 
Malice 331 
 
 meaning which is really intended to be conveyed by that term, 
 as the word is not an apt one to describe a mere "intention to 
 commit an unlawful act without reference to spite or ill feeling." 
 But even this definition does not seem to meet all cases, for it 
 fails to include the injuries which are suffered by reason of legal 
 acts done with the intent to be unfair and dishonest, with the 
 express purpose of injm-ing another. 
 
 Most of the acts which are claimed to be malicious and of a 
 character to render an act otherwise legal illegal, are unscrupu- 
 lous, often dishonest and unfair, but they are not illegal. As an 
 abstract, general principle, it is always a legal wrong to injure 
 another in any way; but, in the development of business and 
 civilization, the law has found it necessary to legalize many 
 injiu"ies, or to consider certain injuries of a character which pre- 
 vents any redress being awarded to the person injured. Such 
 injiu-ies are permitted because of some privilege possessed by him 
 who inflicts them, which gives him a right to demand of the law 
 immunity from the penalty which would otherwise be visited 
 upon him. In the adaptation of legal rules to modern conditions 
 of business, the problem of the courts will be to determine what 
 are the privileges of this sort, which will justify the acts which 
 now are considered by many to be in violation of individual 
 rights. Lord Watson states that to avail himself of such a priv- 
 ilege, a man "shall act honestly * * * and shall not be 
 prompted by a desire to injure the person who is affected by his 
 act." ^^ "In order to justify the intentional doing of 'that which 
 is calculated in the ordinary course of events to damage and 
 which does in fact damage another in that other person's property 
 or trade,' you must have some just cause or excuse." This state- 
 ment of Bowen, L. J., was approved as "exactly accurate" by 
 Lord Chancellor Halsbury.*" 
 
 "I was on my own land," says Hickeringill. "But while 
 there," declared Keeble, "you planned, intended, and committed 
 acts expressly to injure my business, to destroy my Uvehhood 
 because of malice you bore me. Your mahce has rendered your 
 excuse of no avail. To hide behind that, your act must have been 
 done in good faith." This motive of Hickeringill's, said Lord 
 Holt, created an actionable wrong out of an otherwise legal act. 
 
 ^^Alkn V. Flood, App. Cas. 93- *" Allm v. Flood, App. Cas. 84- 
 1898, 1898. 
 
332 Interfebence With a Competitor's Business, Etc. 
 
 Justice Oliver Wendell Holmes has said that "when a responsible 
 defendant seeks to escape liability for an act which he had notice 
 was likely to cause temporal damage to another, he must show 
 justification." *^ What constitutes such justification has not yet 
 been determined. The most important justification, he says, is 
 privilege; but he is not ready to admit that men enjoy such a 
 privilege to do harm, in following their own inclination, or in the 
 pleasure of doing harm, to warrant a court in overlooking the 
 damage suffered at their hand by others. Many elements, he 
 thinks, may enter into a decision as to this question, of privilege, 
 such as the method of inducing the act, whether by an act wrong- 
 ful in itself or by advice or combined action, and the motive 
 underlying the act may be most important. 
 
 A privilege may be forfeited, and the question is as to the effect 
 on these privileges claimed by defendants in cases involving 
 injuries to business and trade, of the fact thalj these injuries were 
 inflicted with the deliberate intent to injure the plaintiff in his 
 trade or livelihood. Will proof of such intent wipe out the privi- 
 lege and compel the defendant to indemnify the plaintiff for the 
 loss he has inflicted? 
 
 To define just what acts will constitute privilege — justifica- 
 tion — would be a difficult task. Would it be desirable? One 
 of the safeguards of equity jurisprudence is the consistent refusal 
 of equity courts to define fraud. Lord Halsbury believes that a 
 definition of the acts which may be considered as privilege, is 
 essential to personal freedom, but others hold a contrary view. 
 Undoubtedly every man has a right to pursue his business free 
 from the damage, injury and loss which are the result of unfair- 
 ness, dishonesty, misrepresentation, or deceit on the part of 
 others who shelter themselves behind the policy of laws that free- 
 dom of competition must be preserved at all hazards. In the past 
 men have built up their business on the results of the labor of 
 competitors which they have seized upon by use of methods 
 which whether legal or not are not equitable or fair and they have 
 been protected by law to some extent in so doing. Appeal to the 
 courts for rehef against such conditions will be continuous imtil 
 some modification of the present rule is effected. 
 
 Any unfair act in trade has not for its end freedom of compe- 
 tition, but the doing away with competition. But Mr. Bigelow 
 
 "' 8 Harv. L. Rev. 9. 
 
Interference With Business Generally 333 
 
 contends/^ that if the defense of competition does not extend to 
 cases where the defendant is trying to eliminate competition, 
 then freedom of contract does not extend to cases of the buying 
 out and absorption of rivals, and he believes that a limitation of 
 the meaning of both these terms is already in progress. 
 
 § 164. Interference with Business Generally. — Perhaps the 
 most advanced statement of authority as to the legal effect of 
 inflicting injury in trade is the following: "Now, intentionally 
 to do that which is calculated in the ordinary course of events to 
 damage, and which does in fact damage another in that person's 
 property or trade, is actionable if done without just cause or 
 excuse." *^ This statement has been widely cited here and in 
 England. Lord James considered it as unquestioned law in South 
 Wales Miners' Fed. v. Glamorgan^* He also cited the following: 
 "Wherever a man does an act which in law and in fact is a wrong- 
 ful act, and such an act as may, as a natural and probable conse- 
 quence of it, produce injury to another, and which in the particu- 
 lar case does produce such injury, an action on the case will lie." *^ 
 
 The rule may now be considered as settled, that injury caused 
 to another's business, or legitimate interests, even though not by 
 means in themselves unlawful, is actionable, unless justified by 
 legitimate self-interest. 
 
 In /. F. Parkinson Co. v. Trades Council,^ it was said: — "Any 
 injury to a lawful business, whether the result of conspiracy or 
 not, is prima fade actionable, but may be defended upon the 
 ground that it was merely the result of a lawful effort of the de- 
 fendants to promote their own welfare. To defeat this plea of 
 justification, the plaintiff may offer evidence that the acts of the 
 defendants were inspired by express malice, and were done for the 
 purpose of injuring plaintiff and not to benefit themselves." 
 And in a very well considered recent case, Huski& v. Grifin,^'' 
 the New Hampshire Court said: — "One may not interfere with 
 his neighbor's open market or /reasonable expectancies' solely for 
 the purpose of doing harm. . It has been said, however, in several 
 cases that a wrongful motive cannot convert a legal act into an 
 
 " Bigelow Torts (8th ed.), 250. " Bowen v. HaU, 6 Q. B. D. 333; 
 
 *' Mogul Steamship Co. v. McGregor, Smithies v. Asso., 1 K. B. 310-1909. 
 23 Q. B. D. 698, per Bowen, L. J., at « 154 Gal. 581-603 (Dec. 1908). 
 613. " 75 N. H. 345-1909, 
 
 " App. Gas. 239-255-1905. 
 
334 Intekference with a Competitor's BusnsrESS, Etc. 
 
 illegal one, and many judges have thought this was the end of 
 the law upon the question. They seem to proceed upon a theory of 
 absolute right in the defendant, which is at variance with the hold- 
 ing in many of the same cases, that the defendant may be called 
 upon to justify his conduct. Indeed, the authorities are practi- 
 cally imanimous to the effect that the defendant is liable unless 
 he shows a justification. If this is true, it follows as a matter of 
 course that this right is not absolute. It is a qualified one, and the 
 rightfulness of its exercise depends upon all those elements which 
 go to make up a cause for human action." And quotes from 
 Plant V. Woods, 176 Mass. 492, that the justification of an act 
 " may be found sometimes in the circumstances under which it is 
 done, irrespective of motive, sometimes in the motive alone, and 
 sometimes in the circumstances and motive combined."^^ 
 
 *^ "One may without liability induce 
 the customers of another to withdraw 
 their custom from him, in the race of 
 competition, in order that the former 
 may himself get the custom, there 
 being no contract; and it is no matter 
 that the other party was moved 
 by express intent to injure him, 
 motive being immaterial where the 
 act is not unlawful. But where the 
 act is not done under right of com- 
 petition, or under the cover of friendly, 
 neighborly counsel, but wantonly or 
 maliciously with intent to injure an- 
 other, it is actionable, if loss ensue. 
 Nor is it material in the latter case 
 that there was no binding contract 
 between the business man and his 
 customers. He cannot interfere, even 
 for his own benefit, if there is a con- 
 tract." W. Va. Transportation Co. 
 V. Standard Oil Co., 50 W. Va. 611, 
 624. In the recent case of Hutton v. 
 Walters, 132 Tenn. 527 (1915), the 
 court discussed the cases, and said: 
 "Every one has the right to establish 
 and conduct a lawful business, and is 
 entitled to the protection of organized 
 society, through its courts, when- 
 ever that right is unlawfully invaded. 
 
 Such right existing, the commission 
 of an actionable wrong is established 
 against any one who is shown to have 
 intentionally interfered with it, with- 
 out justifiable cause or excuse. To 
 establish justification, it must be made 
 to appear, not only that the act com- 
 plained of was otherwise lawful and 
 performed in a lawful maimer, but 
 likewise that it had some real tend- 
 ency to effect a reasonable advantage 
 to the doer of it. But in order to de- 
 termine the reasonableness of such 
 act it must be considered from the 
 standpoint of both parties, with a 
 view to ascertaining whether the de- 
 fendant has acted merely in the due 
 exercise of his own right to carry on 
 business for himself. If this be found 
 in his favor, while he may have done 
 the plaintiff harm, he cannot be 
 adjudged to have done an injury in 
 the legal sense; that is, a wrongful 
 act in violation of the legal right of 
 another. Whether the defendant 
 was in the reasonable exercise of his 
 own similar rights must, from the view- 
 point stated, be determined by the 
 court, or court and jury in each case 
 as it arises, on the law and evidence. 
 
Interference with Business Generally 
 
 335 
 
 Most cases of this character, aside from those involving in- 
 terference with contract, as has been said, have arisen over labor 
 difficulties. They involve largely the same fundamental ques- 
 tions as those which arise from other acts of competitors in trade, 
 but these labor cases are outside the scope of this book. Many 
 recent cases, although arising out of the acts of labor unions, 
 have involved the principle of liability for interference with con- 
 tract, as well as the broader question of interference with business, 
 as by boycotting.*' 
 
 A defendant cannot excuse himself by 
 the mere fact that the means used were 
 his own, his property, his servants. 
 He cannot, with justification in law, 
 use his property, or anything else 
 that appertains to him, in such man- 
 ner as to wantonly injure another. 
 Still, it has been decided, by the weight 
 of authority, that if the act com- 
 plained of, being otherwise lawful in 
 itself, had a reasonable tendency to 
 promote ends advantageous to the 
 defendant in the conduct of his own 
 business, it cannot be correctly ad- 
 judged an illegal agency or operation 
 by reason of the fact that the doer of 
 it was moved also by a feehng of iU- 
 will, a personal maUce, towards the 
 person against whom his act was 
 directed (citations); but if the act is 
 otherwise wrongful, such personal mal- 
 ice may aggravate the damages. 
 
 * * * Of course it is wholly 
 impossible to formulate a description 
 which will cover aU acts which are 
 intentionally hurtful to another, and 
 at the same time justifiable in law. 
 
 * * * It is left in each case for 
 the court, or the court and jury, ac- 
 cording to the way in which the con- 
 troversy is presented, to say whether 
 the defendant's conduct complained 
 of was, in view of all the circumstances, 
 a reasonable and proper exercise of 
 his right of self-protection or self- 
 
 advancement, both as to the substance 
 of it, and the method of it." 
 
 ^^ Alfred W. Booth & Bra. v. Bur- 
 gess (N. J. Eq. 1906), 65 Atl. 226; 
 Thaeker Coal & Coke Co. v. Burke, 
 59 W. Va. 253-1906; 53 S. E. 161; 
 5 L. R. A. N. S. 1091; Flaccus v. 
 Smith, 199 Pa. St. 128-1901; 48 Atl. 
 894; 54 L. R. A. 640; Boysen v. Thorn, 
 98 Cal. 578-1893; 33 Pac. 492; 21 
 L. R. A. 233; May v. Wood, 172 Mass. 
 11-1898; 51 N. E. 191; Glencoe Land, 
 etc., Co. V. Hudson Brothers, etc., Co., 
 138 Mo. 439-1896; 40 S. W. 93; 36 
 L. R. A. 804; Chambers & Marshall, 
 V. Baldwin, 91 Ky. 121-1891; 15 
 S. W. 57; 11 L. R. A. 545; Bourlier 
 Brothers v. Macauley, 91 Ky. 135- 
 1891; 15 S. W. 60; 11 L. R. A. 550; 
 Kline v. Eubanks, 109 La. 241-1802; 
 33 So. 211; B. J. Wolf & Sons v. New 
 Orleans, etc., Co., 113 La. 388-1904; 
 37 So. 2; 67 L. R. A. 65; McCann v. 
 Wolff, 28 Mo. App. 447-1888. Ashley 
 v. Dixon, 48 N. Y. 430-1872, is some- 
 times cited with the foregoing cases; 
 but this was a case involving an ordi- 
 nary real estate transaction, and it is 
 probable that, at least in the normal 
 case of including a breach of contract 
 to the injury of a competitor in trade, 
 the prevailing rule would now be 
 applied in New York. Beattie v. Cal- 
 lanan, 82 App. Div. (N. Y.) 7-1903; 
 81 N. Y. Supp. 413; also, American 
 
336 Interference with a Competitor's Business, Etc. 
 
 § 165. Interference with Contracts by Third Person Enjoined. 
 
 — Has a man an absolute right to carry on his trade or calling with- 
 out being molested, harassed, or interfered with? He has a right 
 to earn his living in his own way provided he does not violate law 
 or infringe the rights of others. Has he the right to deal with all 
 other persons who may wish to deal with him? This right is of 
 no value if others may not deal with him freely, for interference 
 with their liberty afif ects him. ' ' If such interference is j ustifiable in 
 point of law he has no redress. Again, if such interference is 
 wrongful, the only person who can sue in respect of it is, as a rule, 
 the person immediately affected by it. Another who suffers by 
 it has no redress, the damage to him is too remote, and it would 
 be obviously practically impossible and highly inconvenient to 
 give legal redress to all who suffered from such wrongs. But if 
 the iaterference is wrongful and is intended to damage a third 
 person, and he is damaged in fact — in other words, if he is wrong- 
 fully and intentionally struck at through others, and is thereby 
 damnified — the whole aspect of the case is changed; the wrong 
 done to others reaches him, his rights are infringed, although 
 indirectly, and damage to him is not too remote or unforeseen, 
 but is the direct consequence of what has been done. Our law, 
 as I understand it, is not so defective as to refuse him a remedy 
 by an action under such circumstances." ^ 
 
 To the defense that the act of the defendant is too remote, 
 Bigelow says: =^ "Intention to have an act done and procuring 
 it to be done, though by persuading another to do it, should 
 bring a man near enough to the act to make him accountable for 
 it; successful endeavor ought to be enough." He adds (p. 264): 
 "Analogy is clearly in favor of treating persuasion to break a 
 contract as too dangerous to the public welfare to be permitted." 
 
 Law Book Co. v. The Edward Thomp- or more contracting parties consti- 
 
 son Co., 41 Misc. (N. Y.) 396-1903; tutes legal malice within the rule of 
 
 84 N. Y. Supp. 225. See § 186, infra. Angle v. Chicago, St. Paul, etc., Ry. 
 
 Bitterman v. Louisville & Nashville Co., 151 U. S. 1-1893; 38 L. ed. 55; 
 
 Railroad, 207 U. S. 205-1907, holds 14 Sup. Ct. 240. 
 that actual malice is not a necessary ™ Lord Lindley in Quinn v. Leathern, 
 
 ingredient of an action for interfer- App. Cas. 534-5-1901, citing Mogul 
 
 ence with contract; that is, malice, SS. Co. case, 23 Q. B. D. 613; Imdey 
 
 in the sense of personal ill wiU. How- v, Gye, 2 E. & B. 216. 
 ever, wanton disregard, on the part " Big. Torts (8th ed.), 263. 
 of a third person, of the rights of two 
 
Interference with Contracts by Third Person 337 
 
 Says Lord Watson of the House of Lords: "There are, in my 
 opinion, two grounds only upon which a person who procures 
 the act of another can be made legally responsible for its conse- 
 quences. In the first place, he will incur liability if he knowingly, 
 and for his own ends, induces that other person to commit an 
 actionable wrong. In the second place, when the act induced is 
 within the right of the immediate actor, and is therefore not 
 wrongful in so far as he is concerned, it may yet be to the detri- 
 ment of a third party; and in that case, according to the law laid 
 down by the majority in Lumley v. Gye, the inducer may be held 
 liable if he can be shown to have procured this object by the use 
 of illegal means directed against that third party.^^ A violation 
 of legal right committed knowingly is a cause of action; and it 
 is a violation of a legal right to interfere with contractual relations 
 recognized by law if there be no sufficient justification for the in- 
 terference." ^^ In Beekman v. Marsters,^^ it is said that "it has 
 been settled in Massachusetts that there is no distinction between 
 a defendant's enticing away the plaintiff's servant and a defend- 
 ant inducing a third person to break any other contract between 
 him and the plaintiff. ^^ **In Nolin v. Pearson,^^ defendant per- 
 suaded and enticed the plaintiff's husband to commit adultery 
 and to refuse to perform his marital contract. Held a wrong 
 for which the wife can maintain an action without joining the 
 husband as plaintiff." In Quinn v. Leathem,^^ the defendants 
 wrongfully and maliciously induced customers and servants to 
 cease to deal with the plaintiff. This was held actionable. 
 
 The qutestion of the effect of causing a breach of contract by 
 one not a party to it was first considered by the Supreme Court 
 
 '2 Citing National Phmograph Co., Tex. 400; 73 S. W. 800; 62 L. R. A. 
 
 Ltd., V. Edison Bell, etc., Co., 1 Ch. 962; American Malting Co. v. Keitel, 
 
 335-59-1908. 209 F. 351 (C. C. A.): — We fail to 
 
 ''Lord Macnaughten in Quinn v. discover any satisfactory distinction 
 
 Leathern, App. Gas. 510-1901. between an attempt to induce em- 
 
 " 195 Mass. 205; 80 N. E. 817. ployees to break a contract of em- 
 
 " See Walker v. Cronin, 107 Mass. ployment and an attempt to induce 
 
 555-57; Moran v. Dunphy, 177 Mass. customers to break their business con- 
 
 485; Jackson v. Stairfield, 137 Ind. tracts for the sale of goods." 
 
 592 (contract for lumber); Morgan =« 191 Mass. 283-1906. 
 
 V. Andrews, 107 Mich. 33 (contract "See to same effect Winsmore v. 
 
 to construct machine); Jones v. Greenbank, Willes, 577. 
 
 Stanley, 76 N. C. 355 (carriers' con- '» App. Cas. 495-1901. 
 tract); Raymond v. Yarrington, 96 
 
338 Interference with a Competitor's Business, Etc. 
 
 of the United States in Angle v. Chicago, etc., Ry.^^ The Court 
 cited Green v. Button,^ Lumley v. Gye,^^ Bowen v. Hall,^^ Walker v. 
 Cronin,^^ Benton v. Pratt,^^ Rice v. Manley,^^ Jones v. Stanley; ^ all 
 of which cases except the last two were before the House of Lords 
 in Allen v. Flood,^'' and cited by Halsbury, L. C, in that case. 
 
 The opinion in Angle v. Chicago, etc., Ry., was in part as follows: 
 "It has been repeatedly held, that if one maliciously interferes 
 in a contract between two parties, and induces one of them to 
 break that contract to the inju:^ of the other, the party injured 
 can maintain an action against the wrongdoer." This case does 
 not decide that interference with a man's livelihood, trade, or 
 business -per se creates a cause of action, but that it is actionable 
 to interfere with a contract maliciously. The term ' ' maliciously " 
 is not defined in the case, and is to be presumed to be here used 
 in its ordinary legal meaning. 
 
 Temperton v. Russell^ involved acts done to interfere with 
 the contracts with materialmen to supply builders who refused 
 to follow union rules. The plaintiff, one of these materialmen, 
 sued the unions. These acts consisted of various things done to 
 bring pressure on the materialmen, such as ordering their members 
 to refuse to work on the plaintiff's goods. It was held, that these 
 acts were not induced by malice, but nevertheless were malicious 
 in the legal sense, the following ruling in Bowen v. Hall being 
 cited: "If the persuasion be used for the indirect purpose of in- 
 juring the plaintiff, or of benefiting the defendant at the expense 
 of the plaintiff, it is a malicious act, which is in law and in fact a 
 wrongful act, and therrfore an actionable act, if injury ensues 
 from it. * * * That act is a persuasion by the defendant of 
 a third person to break a contract existing between such third 
 person and the plaintiff." ^° 
 
 § 166. Interference with Contracts with Servants. — From 
 early times it has been considered a legal wrong to entice away 
 
 "151 U. S. 1-1893; affirmed in ««76N. C. 355. 
 Bitterman y. Louisville & Nashville B., " App. Cas. 1-1898. 
 
 207 U. S. 205. »8 1 Q. B. 715-1893. 
 
 •» 2 C. M. & R. 707. «» Quinn v. Leathern, App. Cas. 
 
 «i 2 E. & B. 216. 495-509-1901, holds that Temperton 
 
 " 6 Q. B. D. 333-37. v. BusseU, 1 Q. B. 715-1893, was not 
 
 " 107 Mass. 555. overruled- by Allen v. Flood, App. 
 
 " 2 Wend. (N. Y.) 385. Cas. 1-1898. 
 
 •» 66 N. Y. 82. 
 
Interfekence with Contbacts with Servants 339 
 
 a servant, or to persuade him to break the contract of employ- 
 ment. This was not limited to menial or household servants, 
 but was extended to industrial employees, such as factory hands. 
 Under this rule, acts such as giving liquor to employees of another, 
 entertaining them, and inducing them by ofifer of higher wages 
 to leave their employer or to sign an agreement to that effect, 
 are actionable. 
 
 Gunter v. Astor'"' was an action on the case. Plaintiff was 
 a maker of pianos; his workmen were under no contract for a 
 definite period, but worked by the piece. Defendants were 
 charged with conspiring to entice away plaintiff's servants. 
 They appear to have invited the workmen to a dinner, plied them 
 with liquor, and, by the offer of higher wages, induced them to 
 leave plaintiff's service, and sign an agreement to that effect. 
 Plaintiff's business was practically ruined in consequence. Held, 
 that defendants were liable in substantial damages. Verdict 
 for two years' profits not interfered with by the appellate court.^^ 
 
 At common law a man could not exercise a trade to which he 
 had not been duly apprenticed, and one so admitted was obliged 
 by statute to follow and exercise his trade under a penalty.'^ 
 Hence to prevent a person's exercising his trade was to compel 
 him to violate the law. 
 
 "If any person do hire or retain my servant being in my serv- 
 ice, for which the servant departeth from me and goeth to serve 
 the other, I may have an action for damages against both the 
 new master and the servant, or either of them." ''^ 
 
 '» Gunter v. Astor, 4 J. B. Moore, Firemen's F. F. I. Co., 97 Miss. 148 
 
 12-1819, an action on the case. See (1910), the Court, while sustaining, 
 also Hart v. Aldridge, 1 Cowp. 54- ' against demurrer, an action for con- 
 
 1774; Scidmore v. Smith, 13 Johns, spiring to injure one's business by 
 
 (N. Y.) 322-1816; Stuart v. Simp- persuading his employees to leave, 
 
 son, 1 Wend. (N. Y.) 376-1828; say: — " * * * it may have been 
 
 Mealey v. Bemidji Lumber Co., 118 perfectly legitimate for the defendants 
 
 Minn. 427-1912. to have employed the agent of plain- 
 
 "See also Walker v. Cronin, 107 tiff and to pay him better for his 
 
 Mass. 555-1871; Chipley v. Atkivr services * * * if the object of 
 
 son, 23 Fla. 206-1887; 1 So. 934, a the employment was in the honest 
 
 carefully considered case; Haskins v. furtherance of their own business 
 
 Royster, 70 N. C. 601-1874; Jones enterprises." 
 
 & Jester v. Blocker, 43 Ga. 331- " Pollock, Contracts, 313. 
 
 1871; Bia^y v. Dunlap, 56 N. H. " Blackstone, Book 1, § 429. 
 456-1876. In Globe <& R. F. I, Co. v. 
 
340 Interfeeence with a Competitor's Business, Etc. 
 
 This rule of law is now incorporated in the statutes of some 
 states. For instance, the laws of Georgia,^^ provide that when 
 the relation of landlord and tenant, or employer and employee, 
 as regards argricultural lands, has been established by written 
 contract, or parol contract partly performed, it is unlawful for 
 a third person "to employ or to rent lands to * * * or 
 disturb in any way said relation without first obtaining the 
 written consent of said employer," etc.^^ 
 
 In J. S. Brown Hardware Co. v. Ind. Stove Works,''^ there seems 
 to be the element of fraud as well as of inducing breach of con- 
 tract, as there defendant induced plaintiff's traveling salesman 
 while in plaintiff's employ under a contract of exclusive service, 
 to act at the same time in the service of defendant. In these cases 
 it seems settled that it is not necessary that there should be any 
 contract for a definite period." 
 
 The Harvard Law Review,'^ admitting that in cases where 
 the breach is of a contract involving no personal service the 
 weight of authority is against recovery unless illegal means are 
 used,^^ contends that there is no valid reason for the distinction, 
 saying: "The principle covering all these cases would seem to be 
 that anyone intentionally causing pecuniary loss to another is 
 prima facie liable." 
 
 On the authority of the cases mentioned in the note below 
 the Massachusetts court has held in Moran v. Dunphy,^^ that 
 maliciously and without justifiable cause to induce a third person 
 to end his employment by either false slanders or successful 
 persuasion is an actionable tort.^^ 
 
 § 167. Lumley v. Gye, and Later Cases. — Lumley v. Gye,^^ 
 marked a step in the development of the rule. It was there held, 
 
 "Acts of 1903, p. 91. Ga. Code 578; Jams v. SUmley, 76 N. C. 
 
 1914, § 3712. 355. 
 
 " McBride v. O'Neal, 128 Ga. 473- «» 177 Mass. 487. 
 
 1907; 57 S. E. 789; Miss. Code, 1892, " Walker v. Cronin, 107 Mass. 
 
 § 1068, Code of 1906, § 1146, to the 555; Morasse v. Brochu, 151 Mass. 
 
 same effect. 567; Tasker v. Stanley, 153 Mass. 
 
 «96 Tex. 453-1903; 73 S. W. 800. 148; Vegelahn v. Gunter, 167 Mass. 
 
 " Chipley v. Atkinson, 23 Fla. 206- 92; Hartnett v. Plumbers, etc., 169 
 
 1887; 1 So. 934. Mass. 229; Weston v. Barnicoat, 
 
 '8 Vol. 16, p. 228. 175 Mass. 454; Plant v. Woods, 176 
 
 "See Boysen v. Thorn, 98 Cal. Mass. 492. 
 
 «2 2 E. & B. 216-1853. 
 
LuMLEY V. Gye, and Later Cases 341 
 
 that defendant was guilty of a tort, in inducing an opera singer 
 to refuse to perform her contract to sing at the plaintiff's theatre, 
 and the plaintiff's contract rights were protected by injunction. 
 The contract was wholly executory, and the wrong could hardly 
 be placed under the familiar category of enticing away servants, 
 but the case may be regarded as the starting point of the develop- 
 ment of the law which has now resulted in the establishment of 
 the broad rule. 
 
 This was followed in Bowen v. HallP The plaintiff, a brick 
 manufacturer, entered into a contract with one Pearson, in view 
 of his special skill and knowledge of certain secret processes, 
 under which, for a period of years, Pearson was to supervise the 
 manufacture of certain kinds of brick, finding all labor and a part 
 of the materials. Defendants, rivals in trade, persuaded him to 
 break his contract and enter their employ. This was held to be 
 actionable. Similarly a president of a corporation who caused 
 the corporation to refuse to complete a contract, with the purpose 
 of injuring the plaintiff, was successfully proceeded against per- 
 sonally.^* 
 
 In Taylor Iron & Steel Co. v. Nichols,^^ defendant Nichols was 
 employed by complainant and taught its secret processes in the 
 manufacture of steel, under an agreement not to divulge the same. 
 His co-defendant was a competing company, which induced 
 Nichols to violate his contract and enter its employ, disclosing 
 to it these trade secrets. Complainant was held entitled to a 
 preliminary injunction restraining defendants from disclosing 
 trade secrets, and restraining defendant company from employ- 
 ing Nichols during the term of his contract with complainant, 
 although not to an injunction restraining Nichols from entering 
 the employ of another during that period. 
 
 In California, "maliciously inducing another to break his 
 contract with a third person will not create a Uability to the 
 latter, when it is done without threats, violence, falsehood, de- 
 
 «' L. R., 6 Q. B. Div. 333-1881. plete the contract. Plaintiff sued the 
 
 8* /ones V. Stanly, 76 N. C. 355- president personally for causing this 
 
 1877. Plaintiff had contracted with breach of his contract with the rail- 
 
 a railroad company to carry cross road company and was held entitled 
 
 ties for him. Defendant, the presi- to recover. 
 
 dent and superintendent of the rail- «= 70 N. J. Eq. 541-1905; s. c. 65 
 
 road company, for the purpose of in- Atl. 695-1907. 
 
 juring the plaintiff, refused to com- 
 
342 Interference with a Competitor's Business, Etc. 
 
 ception, or benefit to the person inducing the breach." ^^ The 
 same is held in Kentucky, Chambers v. Baldwin,^'' Boulier 
 V. Macauley;^^ in Missouri, Glencoe Land Co. v. Hudson 
 Bros?^ In Boulier v. Maxiauley,^ Boulier contracted with an 
 actress to play at his theatre. Later defendant caused her to 
 break the contract. Held there was no cause of action. The 
 facts of the case are very similar to Lumley v. Gye, supra.^^ 
 
 In New Hampshire a binding contract of service is held neces- 
 sary.^^ 
 
 § 168. Causing Breach of Contracts for Furnishing Informa- 
 tion. — The doctrine in question has been applied also to con- 
 tracts for the furnishing of market quotations under certain re- 
 strictions as to their use by the one buying them, such as that 
 they should not be divulged. One who acquires information, 
 either by discovery or by labor, is entitled to the aid of law to 
 protect the information as a secret. The fact that others might 
 do similar work is no reason why they may steal plaintiff's in- 
 formation. This information may be communicated to others 
 who are in confidential relations with the owner; and if a contract 
 exists between owner and customer that the customer will not 
 make the information public, it will be enforced by equity, and 
 third persons will be restrained from using this knowledge if they 
 obtain it from any customer in violation of his contract.^' "The 
 plaintiff does not lose its rights by communicating the result 
 to persons, even if many, in confidential relations to itself, under 
 a contract not to make it public, and strangers to the trust will 
 be restrained from getting at the knowledge by inducing a breach 
 of trust and using knowledge obtained by such a breach." ^* 
 
 86 Boysen v. Thorn, 98 Cal. 578. tion Co., 183 Mass. 62-1903; 66 N. 
 
 8' 91 Ky. 121. E. 204; 60 L. R. A. 810; Board of 
 
 ssgi Ky. 135. Trade v. C. B. Thomson Commission 
 
 89 138 Mo. 439. Co., 103 Fed. 902-1900 (C. C. Wis.); 
 
 9» 91 Ky. 135. Board of Trade v. Hadden^KruU Co., 
 
 91 2 El. & Bl. 216-1853. 109 Fed. 705-1901 (C. C. Wis.); 
 
 92 Campbell v. Cooper, 34 N. H. 49. National Telegraph News Co. v. West- 
 
 But see also Noice v. Brown, 39 N. J. em Union Telegraph Co., 119 Fed. 
 
 L. 569; Haskins v. Boyster, 70 N. C. 294-1902 (C. C. A. 7th Cir.); 60 L. R. 
 
 601. A. 805. 
 9' Exchange Telegraph Co. v. Greg- "* Board of Trade v. Christie Grain 
 
 my & Co., 1 Q. B. D. 147-1896; F. W. & Stock Co., 198 U. S. 236-50-1904; 
 
 Dodge Co. v. Construction Informa- 49 L. ed. 1031; 25 Sup. Ct. 637. 
 
Bkeach of Contracts with Transportation Companies 343 
 
 The same has been held in England. In the case of Exchange 
 Telegraph Co. v. Gregory & Co.,^^ it was held, that the plaintiff 
 which published the stock exchange news to subscribers, in con- 
 fidence, under contract, was entitled, not only to an injunction 
 against a subscriber divulging the news in violation of his contract, 
 but also to restrain an outsider from inducing subscribers to 
 communicate the news to him contrary to the terms of such con- 
 tract, these terms being known to the outsider; and that no proof 
 of special damage was necessary. Said the court: "Merely to 
 persuade a person to break his contract may not be wrongful in 
 law or fact * * * ; but if the persuasion be used for the indirect 
 purpose of injuring the plaintiff or of benefiting the defendant at 
 the expense of the plaintiff, it is a malicious act which is in law and 
 in fact a wrong act, and therefore a wrongful act, and therefore 
 an actionable act if injury ensues "from it." The case of Exchange 
 Telegraph Co., Ltd., v. Central News '* is to the same effect. In all 
 of these cases will be found a breach of contract induced by some 
 third person for his own profit. 
 
 § 169. Causing Breach of Passengers' Contracts with Trans- 
 portation Companies. — The rule has been repeatedly applied 
 to dealings by ticket brokers in nontransferable tickets, such as 
 return coupons; and they have been enjoined from buying and 
 selUng such tickets on the ground that they could only do so by 
 inducing those from whom they bought them to violate their 
 contract with the transportation company not to transfer such 
 coupons. While somewhat different grounds for these decisions 
 have been suggested, they are distinctly placed upon the ground 
 of interference with contract. The United States Supreme 
 Court in Bitterman v. Louisville & Nashville R. R., has so 
 held." The court there cites and applies the rule laid down 
 in Angle v. Chicago, St Paul, etc., Ry. Co.,^^ "that an actionable 
 wrong is committed by one who 'maliciously interferes in a con- 
 tract between two parties, and induces one of them to break that 
 contract to the injury of the other,'" deeming it clear that this 
 principle "embraces a case like the present, that is, the carrying 
 on of the business of purchasing and selling nontransferable 
 
 9s 73 L. T. 120-24^1895. in Missouri, K. & T. Ry. Co. v. Mc- 
 
 «2 Ch. 4S-1897. Crary, 182 Fed. 401. 
 
 " 207 U. S. 205-23-1907. Followed «« 151 U. S. 1-1893; 38 L. ed. 65; 
 
 14 Sup. Ct. 240. 
 
344 Interference with a Competitor's Business, Etc. 
 
 railroad tickets for profit, to the injury of the raiboad company 
 issuing such tickets" and remarking that "it is not necessary 
 that the ingredient of actual malice in the sense of personal ill- 
 will should exist;" and that in such a case, the "wanton disregard 
 of the rights" of the complaining party constituted legal malice 
 within the meaning of the foregoing statement of the rule. 
 
 There are several decisions of the lower federal courts to the 
 same effect as the Bitterman case. A New York (Special Term) 
 opinion, which is of doubtful authority, is opposed to these cases.'' 
 
 To Summarize. — From the foregoing pages, it will be seen 
 that one who interferes in a transaction between other persons 
 who are about to enter into, or are already under contract obliga- 
 tion to each other, may often, not always, be held for damages 
 or enjoined. The cases mentioned above do not include the class 
 of cases most closely related to unfair competition as the term is 
 usually understood. They have been discussed because they 
 serve to illustrate various applications of this principle which is 
 now under such frequent discussion. 
 
 We will now take up various cases which seem to show the 
 present understanding as to what is such interference with a 
 contract as will afford ground for an action at law for damages 
 or for a preventive remedy in equity. 
 
 § 170. What Constitutes Interference with Contract. — Per- 
 sons who are not lawyers are inclined to believe that everything 
 is lawful which is not criminally punishable. This is a serious 
 misconception. To break a contract is to commit a wrong. Pay- 
 ing damages does not make a wrong action a right one. A breach 
 of contract would not be actionable if it was a right thing to do. 
 
 If a co-contractor refuses to concur in a breaching of a contract 
 it is no justification of the other contracting party, or of a third 
 person who causes a breach, that they believed a breach would 
 benefit the co-contractor. Nor iS the fact that they believed that 
 
 ^^ Illinois Cent. R. Co. v. Caffrey, v. Reeves, 85 N. Y. Supp. 28-1903; 
 
 128 Fed. 770-1904 (C. C. Mo.); D., disapproved in Bitterman v. Louis- 
 
 L. & W. B. Co. V. Frank, 110 Fed. ville & Nashville R., supra. The ques- 
 
 689-1901 (C. C. W. D. N. Y.); Nash- tion under consideration was hardly 
 
 ville, C. & St. L. Ry. Co. v. McConnell, discussed in the opinion by Lambert, 
 
 82 Fed. 65-1897 (C. C' Tenn.); J., though really involved; the whole 
 
 Penn. R. Co. v. Beekman, 30 Wash, question before the court, as remarked 
 
 (D. C.) Law Rep. 715-1902. Contra, by the Justice, having become purely 
 
 the case of N. Y. C. & H. R. R. Co. academic through lapse of time. 
 
What Constitutes Interference! with Contract 345 
 
 their breach would do the other party no harm; or the fact that, 
 on moral or religious grounds, they feel they should not perform 
 the contract, any excuse for not doing what they agree to do. 
 Lord Halsbury thinks that if there are sometimes cases where a 
 person is justified on moral or religious grounds in breaking a 
 contract, there is in such cases the question whether or not there 
 is not an equally strong reason why he who breaks the contract 
 should not indemnify the person whom the breach injures.^ 
 
 There are at least two ways of interfering with contracts made 
 by other persons: (a) by preventing a contract being made, (b) 
 by causing the parties to it to break it after it is made. Mr. 
 Bigelow claims that to make a prima facie cause of action for 
 procuring one person not to contract with another, three things 
 must be shown: (1) Notice to the defendant of the plaintiff's 
 relation to the third person; (2) interference with that relation; 
 (3) damage.^ In Temper ton v. Russell,^ it was set up that a dis- 
 tinction exists between inducing the breach of a contract already 
 entered into and inducing persons not to enter into contracts, but 
 the court refused to sustain it, saying that the same wrongful 
 intent existed in both cases and the same sort of injury to the 
 plaintiff. Gregory v. Duke of Brunswick * was cited as sustaining 
 the rule that acts which prevent contracts being made are action- 
 able. In this case judgment was given for defendant on alle- 
 gations showing that he with others had conspired to cause dis- 
 turbance at a theatre which prevented persons coming to see and 
 hear plaintiff, an actor, perform. See the section of this chapter 
 entitled "Interference with proposed or prospective contracts." 
 
 There are a number of cases to be found in which there was 
 interference with a contract, but there is no definite statement 
 of a rule of law in them. For instance, in Benton v. Pratt, ^ third 
 parties agreed to purchase of plaintiff 200 hogs to be delivered 
 three or four weeks later, provided the purchasers had not been 
 previously suppUed. Later plaintiff started with his drove of 
 hogs for the town where they were to be delivered, and on the 
 way overtook the defendant with another drove. Defendant 
 told plaintiff he was going to another town, and plaintiff disclosed 
 
 ' SoviK Waks Miners' Federation ' 1 Q. B. 715-28-1893. 
 
 V Glamorgan Coal Co., App. Cas. *6 M. & G. 953-1844. 
 
 245-1905. ' 2 Wend. (N. Y.) 385-1829. 
 
 ' Bigelow Torts (8th Am. ed.), 238. 
 
346 Interference with a Competitor's Business, Etc. 
 
 the particulars of his own sale. Defendant then arranged to get 
 away with his drove first, took them to plaintiff's buyer and 
 represented that plaintiff was going to another town and did not 
 intend to perforin his contract. Thereupon plaintiff's vendees 
 purchased defendant's hogs and refused to purchase plaintiff's, 
 when he arrived later. Held, that plaintiff was entitled to re- 
 cover damages. In Rice v. Manley,^ the plaintiffs agreed with 
 Stebbins to buy cheese for future delivery at Cattaraugus. De- 
 fendant knew of this agreement, and to deprive the plaintiffs of 
 the benefit of it caused a telegram to be sent to Stebbins signed 
 "E. Rice," which he intended Stebbins should understand to be 
 one of the plaintiffs, to the effect that he could sell the cheese 
 and that the plaintiff did not want it. He took the dispatch to 
 the telegraph office and then carried it to Stebbins, and by this 
 fraud induced Stebbins to sell and deliver the cheese to him before 
 the date of delivery to the plaintiffs arrived. Earl, J., held, 
 citing Coke, J., in 3 Bulstr. 95, that "fraud without damage, or 
 damage without fraud, gives no cause of action; but where these 
 two concur an action lies," and that the plaintiffs would have 
 been damaged by reason of the defendant's fraud. "Schemes of 
 fraud may be so cunningly devised as to elude the eye of justice, 
 but they must not escape condemnation and reparation when 
 discovered " (id. p. 87). Judgment for the plaintiff.^ In 1895 it 
 was held in Rice v. Albee,^ that a third person who persuaded A. 
 not to enter into a partnership with B. did not commit a wrongful 
 act. Later, in 1900, speaking of a case where a trade union in- 
 terfered with employees of a third person, the court said, in Plant 
 V. Woods: ^ "It is not necessary that the liberty of the body should 
 be restrained. Restraint of the mind, provided it would be such 
 as would be likely to force a man against his will to grant the thing 
 demanded, and actually has that effect, is sufficient in cases like 
 this" (id. p. 502); and following this case, in Berry v. Donovan,^" 
 the plaintiff worked for one who had agreed not to employ any 
 but union men. The plaintiff was a non-union man. The union, 
 
 « 66 N. Y. 82-1876. Dung v. Parker, 52 N. Y. 494r-1873, 
 
 'Citing Benton v. Pratt, 2 Wend, distinguished. 
 
 (N. Y.) 385-1829; Snow v. Jvdsm, » 164 Mass. 88; 41 N. E. 122. 
 
 38 Barb. (N. Y.) 210-1862; Pasl^ '176 Mass. 492-1900; 57 N. E. 
 
 V. Freeman, 3 Term Rep. 51-1789; 1011; 51 L. R. A. 339. 
 
 White V. MerriU, 7 N. Y. 352-1852;' "188 Mass. 353-1905; 74 N. E. 
 
 603; 5 L. R. A. N. S. 899. 
 
What Constitutes Interference with Contract 347 
 
 without any threats, asked the employer to discharge the plain- 
 tiff, and he did so. Knowlton, C. J., held this act unlawful. 
 The decision of the case turned largely on what was fair and 
 unfair competition. The imion contended that this interference 
 was "a kind of competition" (p. 357). Held, that "an inter- 
 ference by a combination of persons, to obtain the discharge of a 
 workman because he refuses to comply with their wishes, for 
 their advantage, in some matter in which he has a right to act 
 independently, is not competition" (p. 357). 
 
 A tourist agent who obtained an exclusive contract within 
 specified territory to represent a certain hotel, has enjoined a 
 competitor who attempted to induce the hotel company to break 
 the contract. The opinion of Loring, J., carefully discusses the 
 whole subject, including the distinction between cases involving 
 an interference with rights under a contract actually existing, and 
 those involving interference with another's general right to make 
 contracts and do business. The tourist agent, at Boston, con- 
 tracted with a company having the only hotel in the Jamestown 
 Exposition Grounds, to act as its exclusive agent in New England. 
 Defendant, a rival agent, then represented to the hotel company 
 that it was a mistake to make any one man the exclusive New 
 England agent, that plaintiff's business was insignificant, and 
 that he had made false statements as to his subagencies. He 
 thus influenced the company to grant him similar rights of repre- 
 sentation, without regard to its exclusive contract with plaintiff. 
 The defendant was enjoined from acting as the company's agent 
 in New England, and from interfering with plaintiff's exclusive 
 rights." 
 
 The acts of a corporation, by which a rival corporation is 
 prevented from completing a railroad, and is thereby caused to 
 forfeit land granted to it conditionally on its completing the 
 road in a given time, are actionable and an action on the case 
 will he in such a case. Equity will impress on the lands which 
 the offending corporation fraudulently prevented the other from 
 securing, and obtained for themselves, a trust ex maleficio or ex 
 delicto.^^ This case involved distinctly fraudulent dealing, but 
 the decision is based upon the broader ground; and the case seems 
 
 ^^Beekman v. Marsters, 195 Mass. ^^Angk v. Chicago, St. Paul, etc., 
 205-1907; 80 N. E. 817; 11 L. R. A. By. Co., 151 U. S. 1-1893; 38 L. ed. 
 N. S. 201. 55; 14 Sup. Ct. 240. 
 
348 Interfeeence with a Competitor's Business, Etc. 
 
 to be authority for the proposition that it is actionable not only 
 to induce breach of contract by direct means, such as persuasion 
 and inducement, but also to bring it about by indirect means, if 
 employed deliberately and without justification for the same end, 
 as by disabling a party from performing the contract. The facts 
 were these: a railway company (briefly described as the Portage 
 Company) holding a land grant from the state on condition of 
 completing a railroad by a certain time, made a contract with one 
 Angle to construct a portion of the line. Defendant, a compet- 
 ing railway company, by bribing officers of the Portage Company, 
 wrongfully obtained an injunction, and otherwise secured control 
 of the Portage Company, preventing Angle from completing his 
 work, and rendered the Portage Company insolvent, so that 
 Angle was unable to collect from it a judgment obtained against 
 it for damages for breach of contract. The defendant was held 
 liable to Angle for his damages on the ground that it had 
 maliciously interfered in the contract and brought about its 
 violation. 
 
 Persons inducing the breach of the provisions of a lease, result- 
 ing in preventing the lessee from carrying on a profitable business, 
 were held liable in Martens v. Reilly.^^ 
 
 Unless the contract with which the defendant attempts to 
 interfere is in its nature a valid one, no liability will ordinarily 
 arise. Thus in Bobbs-Merrill Co. v. Straus,^* a book was pub- 
 lished by complainants with a notice that no dealer was licensed 
 to sell it at less than one dollar, the retail price of the book, and 
 that a sale at a lower price would be treated as an infringement 
 of the copyright. Defendants purchased copies from whole- 
 salers, who had entered into no contract with complainants, and 
 proceeded to sell them at eighty-nine cents. Defendants held 
 not liable; injunction denied. But a contract need not be legally 
 enforceable (e. g., under the statute of frauds) to entitle its holder 
 to recover damages from one interfering and inducing its breach.^" 
 
 And it makes no difference that the contract is one that might 
 
 "109 Wis. 464^1901; 84 N. W. 373. But see fact that in Benton 
 
 840; and see Twitchell v. Nelson, 126 v. Pratt and Bice v. Manley, the 
 
 Minn. 423. contract was void under the statute 
 
 » 147 Fed. 15-1906 (C. C. A. 2d of frauds. 
 Cir.), affirmed, 210 U. S. 339-1907. '^Cumberland Glass Mfg. Co. v. 
 
 See, to similar effect, Dr. Miles Medi- De Witt, 120 Md. 381-1913. 
 cal Co. V. Park & Sons Co., 220 U. S. 
 
What Constitutes Interference with Contract 349 
 
 be terminated at any time by the other party, as where the con- 
 tract is only from day to day." 
 
 It is, for example, actionable to cause the discharge of plaintiff, 
 as employee of another, though he was employed only at will." 
 
 Causing one under a contract to supply work, labor, or services, 
 or goods to a competitor, to cease to carry out his contract is 
 actionable. As where a carpenter is prevented by threats, from 
 performing his contract with plaintiff to build a house for him: ^^ 
 Damages were allowed in a case where the plaintiff was conduct- 
 ing a laundry business, but had no plant of her own, and had 
 entered into contracts with various laundries to do her work, and 
 the defendants, apparently competing laundrymen, by induce- 
 ments and threats, persuaded several of these laundries to break 
 their contracts with the plaintiff and refuse to do her work." 
 
 In Heath v. American Book Co.,^'^ plaintiffs had entered into 
 a contract with the state, pursuant to a statute, to supply for 
 five years all of a certain class of text-books required for use in 
 public schools of the state. Defendant knowing that this contract 
 was in force, induced the school boards of certain counties to sub- 
 stitute certain of its books for those furnished by plaintiff, and was 
 adjudged liable in damages. 
 
 There may be general solicitation of business by a tradesman, 
 which, if successful, will actually result in the breaking of con- 
 tracts, but which does not include such direct and deliberate in- 
 ducement to break contracts as to be actionable. The line may 
 be somewhat hard to draw.^^ 
 
 i« McCarter v. Baltimore Chamber of F. 553, a distinction is suggested be- 
 
 Commerce, 126 Md. 131-1915. tween mere solicitation of business 
 
 "Scott V. Prudential Outfitting Co., (regardless whether the business can 
 
 92 Misc. 195 (155 N. Y. Supp. 497); be given without breaking existing 
 
 Warschauser v. Brooklyn Furniture contracts) and active interference, 
 
 Co., 159 A..D. 81; Moran v. Dunphy, The Court says (p. 561): — 
 
 177 Mass. 485. "Hence, while the law allows a 
 
 18 Day V. Hunnicutt, 160 S. W. 134- trader, by mere solicitation, to per- 
 
 1913. suade customers to change their 
 
 ■» Doremus v. Hennessy, 176 111. business relations, without actionable 
 
 608-1898; 52 N. E. 924; 43 L. R. A. UabiUty therefor, though a broken 
 
 797. contract is the result, it does not 
 
 2»97 Fed. 533-1899 (C. C. W. permit such a solicitor even in the 
 
 Ya ) interests of competition, to go further, 
 
 " In Citizens' Light H. & P. Co. v. intervening actively between the con- 
 
 Montgomery Light & Power Co., 171 tracting parties, as a dominant agency 
 
350 Intekference with a Competitor's Business, Etc. 
 
 But the offering of goods at lower prices, thus inducing one under 
 contract to break that contract, and to buy goods of plaintiff is 
 actionable, and is not justified by the motive of trade compe- 
 tition. ^^ 
 
 Conspiracy with another to induce breach of contract is held 
 to be equally actionable with direct action. ^^ 
 
 § 171. Justification of Interference with Contracts. — There 
 are probably still some exceptional circumstances justifying one 
 who deliberately induces the violation of a contract but legitimate 
 self-interest is not such a justifying circumstance. Sir Fred- 
 erick Pollock (Torts, 9th Ed., p. 339) says: "But it seems 
 that there must be some exceptions in the natm-e of privilege 
 for disinterested advice honestly given upon a proper occasion." 
 And English judges have intimated a like opinion.^* 
 
 in producing a breach, by promise of 
 indemnity to one of them to induce 
 the breach. ^ * *" 
 
 And in Sperry & Hutchinson Co. v. 
 Pommer, 208 Fed. 804, it is said that 
 "persistent solicitation of complain- 
 ant's customers generally to take and 
 put in the Palace stamps, such solic- 
 itors knowing that such customers " 
 were under exclusive contracts with 
 complainant, would constitute un- 
 lawful interference with business; 
 but it was not considered that the 
 evidence in this case showed more 
 than general recommendations of 
 Palace stamps to merchants and readi- 
 ness to furnish them, without in- 
 quiring into the question whether 
 exclusive contracts with the rival 
 company existed. Expressions of 
 opinion, in good faith, that a contract 
 with a rival is void, are not deemed 
 actionable (p. 812). 
 
 " Cumherland Glass Mfg. Co. v. 
 De Witt, 120 Md. 381 (1913). 
 
 " In Motley, Green & Co.v. Detroit S. 
 & S. Co., 161 Fed. 389-1908 — it was 
 said: — "If it be an actionable wrong 
 for a third person to interfere in a con- 
 tract and induce one of the parties 
 
 thereto to break it to the injury of the 
 other, can it be said it is not equally 
 wrong for one of the parties to the con- 
 tract to invite a third party to unite 
 with him and aid him in breaking the 
 contract in such a way as possibly to 
 escape liability in an action for non- 
 performance and gaining his consent, 
 to act together in consummating their 
 agreement? " 
 
 " "It is true that great difficulty 
 arises when hypothetical cases are 
 suggested of advice given under a 
 great moral sense of right, or where 
 great good would result from a con- 
 tract being broken, or where the 
 claims of relationship or guardian- 
 ship demand an interference amount- 
 ing to protection. Each of these 
 cases must be determined as it 
 arises," * * * [Per Lord James, in 
 South Wales Miners Federaiion v. 
 Glamorgan Coal Co. (1905), A. C. 239, 
 249. In this case, though actual malice 
 was not deemed essential to liability, 
 there were found to be no such cir- 
 cumstances as to justify advising the 
 breach of a separate contract.] And ^ 
 Lord Lindley said in the same case 
 (p. 254): "That there are cases in 
 
Ignorance of Contract No Defense Against Injunction 351 
 
 In Faunce v. Searles ^* the defendants were held hable in dam- 
 ages, for maliciously procuring plaintiff's discharge from his office 
 of school superintendent, held under contract, but the opinion 
 intimates that the good faith of the defendants, one being a mem- 
 ber of the school board and the other a patron of the school, might 
 have had an important bearing upon the question of liability. 
 
 § 172. Ignorance of the Existence of the Contract is no De- 
 fense Against an Injunction. — Ignorance of the contract relation 
 may be a defense to an action at law for damages in such cases 
 as these, but would not necessarily be a sufficient reason for 
 denying an injunction against the new employer, or against the 
 employee who had broken his contract. And while the general 
 rule, as above stated (p. 345) is that there must be notice of a 
 contract to charge one with Uability for inducing its breach, 
 notice is ordinarily enough and good faith may not suffice as a 
 defense. For example, if the defendant knew of the contract 
 and of such circumstances as to charge him with knowledge that 
 it was still in force, he is liable for inducing its breach (as by 
 pin-chasing from the seller land contracted to be sold to another), 
 even though by a mistake of law he supposed the contract to have 
 lapsed. His erroneous belief might "relieve him from any taint 
 of moral tmT>itude, but not of remediable responsibility."^^ 
 
 § 172". Procuring Breach of Contract Not to Re-enter Busi- 
 ness. — The rule under consideration has been applied by hold- 
 ing liable third persons, who induced the breach of an agree- 
 ment not to engage in business again, which contracts had been 
 made by one selling his business, or by a former partner. 
 
 Where a person has bound himself by contract not to engage 
 in business on his own account or for another in competition 
 with complainant, he will be enjoined from violating the contract. 
 And a person who had employed him will be enjoined also from 
 continuing to employ him in a competing business, and the fact 
 ■ that such employer acted in ignorance of the contract was held 
 to be no defense in the injunction proceedings." 
 
 Two partners on selling their business to plaintiff, stipulated 
 
 which it is not actionable to exhort '^ 122 Minn. 343-1913. 
 
 a person to break a contract may be ^' McLennan v. Church, 163 Wis. 
 
 admitted; and it is very difficult to 411; 158 N. W. 73-1916. 
 
 draw a sharp line separating all such " A. Booth & Co. v. Davis, 127 Fed. 
 
 cases from all others." 875-1904 (C. C. Mich.). 
 
352 Interference with a Competitor's Business, Etc. 
 
 not to engage in a similar business in a certain territory. One of 
 the partners violated this contract, and not only the partners, 
 but also other persons who had knowingly induced the violation 
 of the contract, were held liable in damages.^* 
 
 A dealer sold his bologna sausage business and covenanted 
 not to engage either for himself or as agent or servant in that 
 business thereafter. His wife and brother-in-law later established 
 a similar business of which he acted as manager. Not only was 
 he enjoined from further violation of his covenant, but, what is 
 of most interest in this discussion, his wife and brother-in-law, 
 though not bound by the covenant, were at the same time en- 
 joined by the equity court in New Jersey from causing him to 
 violate his obligation by employing him, and holding him out as 
 their agent. ^' 
 
 § 173. Position of New York Courts. — While this law in New 
 York can hardly be considered as settled, the preponderance of 
 authority, contrary to modern tendency elsewhere, seems to favor 
 the view that for inducing the determination or other breach of a 
 contract, a third party is liable "only when he has been guilty 
 of unlawful means." ^^ There has been no recent pronouncement 
 by the Court of Appeals, and possibly Ashley v. Dixon, 48 N. Y. 
 430 (which held that A was not liable to B for inducing C to sell 
 him real property which he had, to A's knowledge, contracted to 
 sell to B) will some day be distinguished or overruled. A recent 
 decision in the second department may be cited in favor of the 
 prevailing rule that to induce the violation of a contract, though 
 by mere persuasion, is ordinarily actionable." The first depart- 
 
 '^ Raymond v. Yarringlon, 72 S. W. Hotchkiss, J., says at p. 367: "The 
 
 800; 62 L. R. A. 962; 96 Tex. 443- gist of the .wrong lies in overpowering 
 
 1903. or circumventing the freedom of will 
 
 ^° Fleckenstein Bros. Co. v. Fleck- and the intent of the one obligated to 
 
 enstein, 66 N. J. Eq. 252-1904; 57 perform, as distinguished from pro- 
 
 Atl. 1025. curing him by fair means to elect not 
 
 '° Jesse L. Laskey Feature Play Co. to perform." 
 V. Wm. Fox V. Co., 93 Misc. 364, in " Warschauser v. Brooklyn Furni- 
 
 which, however, a complaint was tore Co., 159 A. D. 81 (2d Dept. 1913), 
 
 sustained upon demurrer, where it in which, upon demurrer, it was held 
 
 was alleged that breach of the con- actionable, maliciously to induce or 
 
 tract was procured by false represen- procure a master to discharge an era- 
 
 tations that plaintiff was not preparing ployee, though no fraudulent means 
 
 and did not intend to perform, and were used, while it did not appear what 
 
 that the contract was not binding, particular means of inducing the dis- 
 
Position of New York Courts 
 
 353 
 
 ment, however, seems to have committed itself to the contrary 
 view by the decisions cited in the note, particularly De Jong v. 
 Behrman Co.^'^ 
 
 charge were employed by plaintiff, it 
 was deemed sufficient that the com- 
 plaint set forth "circumstances show- 
 ing an intentional and wilful act 
 calculated to cause damage to the 
 plaintiff by depriving her of her law- 
 ful employment, done with the un- 
 lawful and unjustifiable purpose of 
 causing such damage and loss, and 
 resulting in such damage and loss." 
 The court quotes from and follows 
 Walker v. Cronin, 107 Mass. 552, and 
 Ghivhy v. Atkinson, 23 Fla. 206. 
 
 '^Ashley v. Dixon, 48 N. Y. 430, was 
 followed in the similar case of Daly v. 
 Cornwell, 34 A. D. 27. Such cases as 
 Rice V. Mardey, 66 N. Y. 82, where 
 fraudulent or otherwise unlawful 
 means were used, are clearly distin- 
 guishable. In Boseneau v. Empire 
 Circuit Co., 131 A. D. 429, it was 
 held that a theatrical syndicate was 
 not liable for inducing theatrical 
 companies to play only at its houses, 
 in violation of an existing contract 
 with the plaintiff. The question was 
 again fairly presented and discussed 
 in De Jong v. Behrman Co., 148 A. D. 
 37, in which it was held to entice 
 away employees and induce them to 
 break their contracts of service is not 
 an actionable tort, where no unlawful 
 means, such as false representations 
 or intimidations, are used. The cases, 
 it will be observed, expressly apply 
 the same rule to contracts of service 
 as to other contracts, and refuse to 
 follow Lumley v. Gye, 2 El. & Bl. 216. 
 The Appellate Division, in the De Jong 
 case just referred to, clearly dissented 
 from the prevailing rule in this coun- 
 try, as well as in England, saying: — 
 
 "This brings us to the question 
 
 whether or not this action will lie 
 for damages for inducing a servant to 
 break his contract for services with 
 his master. This is a question which 
 has been widely discussed, and upon 
 which there has been much difference 
 of opinion, but, strangely enough, it 
 has seldom arisen in this state so 
 far as appears from the reported cases. 
 The plaintiff relies upon the well- 
 known, and often cited case of Lium- 
 ley V. Gye, 2 El. & Bl. 246. In that 
 case one Wagner, a lyric artist, had 
 contracted with plaintiff to sing at 
 his theatre and elsewhere during a 
 certain time. Defendant, without 
 using fraudulent or otherwise illegal 
 means, persuaded her to break her 
 contract. It was held, not without 
 a strong dissent by Coleridge, J., 
 that an action would lie for damages. 
 It is safe to say that that case has 
 never been fully accepted in this 
 country, and even in England its 
 authority has been much hmited if not 
 actually weakened. Allen v. Flood, 
 Law Rep., 1898, App. Cas. 1. In so 
 far as it was based upon the ancient 
 statutes of England respecting labor- 
 ers and servants it is clear that it has 
 no appUcation to conditions existing 
 in this state. National Protective 
 Association v. Cuming, 170 N. Y. 315. 
 It has been held in some jurisdictions, 
 and strongly denied in others, that 
 the law gives a remedy for interfer- 
 ence with contracts for service, which 
 it would not give under like circum- 
 stances for interference with other 
 contracts. In our opinion, however, 
 no such distinction can properly 
 be made, nor is sanctioned by the 
 closer reasoning. A contract for 
 
354 Interference with a Competitor's Business, Etc. 
 
 A guarantee insurance company which threatened cancella- 
 tion of a policy which could be canceled only on five days' notice, 
 unless the employer (the assured) discharged an employee, in an 
 action of trespass on the case by the discharged employee was 
 held liable in damages.^^ 
 
 The acts of a trade union in inducing miners to strike, such as 
 passing resolutions to direct a strike, declaring holidays, ordering 
 men to stop work, are acts inducing a breach of contract and are 
 unlawful. The union was held to have "initiated," directed, 
 given orders, "so that it is correct to say that they induced and 
 procured the workmen to break their contracts."'* 
 services is like any other contract more than the pleader's conclusions 
 
 in which the parties assume mutual 
 obligations one to the other. In case 
 of a breach by one the other has his 
 action for damages. If a third party 
 is to be held liable for having induced 
 the breach it must be because he has 
 been guilty of some wrongdoing, 
 amounting to a tort, whereby he had 
 deprived the aggrieved party of a 
 valuable thing, to wit, the contract. 
 It seems to be well settled as to con- 
 tracts generally, and we see no rea- 
 son why the same rule should not 
 apply to contracts for service, that 
 interference by a stranger is action- 
 able only if he has used fraudulent or 
 otherwise wrongful means to induce 
 one party to break the contract. That 
 such interference is actionable is set- 
 tled, Rice v. Manky, 66 N. Y. 83. 
 It is significant that in the present 
 case the defendants are charged with 
 the adoption of no illegal or fraudulent 
 means for enticing away plaintiff's 
 employees, and, except in the case of 
 Suzanne Partridge, no allegation is 
 made that any employee so enticed 
 away was under contract for any 
 definite term. It is true that the 
 complaint is plentifully besprinkled 
 with allegations that defendants did 
 certain things 'wrongfully and mali- 
 ciously,' but these amount to nothing 
 
 from unalleged facts. In the absence 
 of any sufficient allegation of the 
 use by defendants of fraudulent or 
 unlawful means to entice away plain- 
 tiff's employees, we are of opinion that 
 the complaint fails to state facts 
 constituting a cause of action." Any 
 intimation inconsistent with the fore- 
 going in the opinion of Bischoff, J., 
 in American Law Book Co. v. Edward 
 Thompson Co., 41 Mise. 396, must be 
 considered as overruled, in the first 
 department at least, by the cases 
 above referred to. 
 
 '' London Guarantee, etc., Co. v. 
 Horn, 206 111. 493-1906, citing Quinn 
 V. Leathern, App. Cas. 495-1901; 
 Chambers v. Baldwin, 15 S. W. 57. 
 Where defendant maliciously became 
 purchaser instead of plaintiff and 
 caused breach. Raycroft v. Tayntor, 
 68 Vt. 219; Vegelahn v. Gunter, 167 
 Mass. 92, opinion of Holmes, J. 
 Moran v. Dunphy, 177 Mass. 485 
 Hollenbeck v. Restine, 114 Iowa, 358 
 Gove V. Condon, 40 L. R. A. 382 
 Perkins v. Pendleton, 90 Me. 166 
 Chipley v. Atkinson, 23 Fla. 206. 
 
 '^ South Wales Miners' Fed. v. 
 Glamorgan Coal Co., App. Cas. 239- 
 49-1905; Smithies v. National Asso., 
 etc., L. R. 1 K. B. 310-1909. 
 
Conditional Contracts 355 
 
 The Lords in deciding Allen v. Flood,^^ considered that Allen 
 had no power himself to call out workmen to Loflict damage. 
 All he did was to inform the employer that the other workmen 
 would leave under certain conditions. Such at least is the expla- 
 nation of the case given by them in Quinn v. Leathem,^^ where 
 they were asked if Allen v. Flood made the boycott legal. A 
 valuable article on the New York law as to interference with 
 contract, by E. W. Huffcutt, is found in 18 Harvard Law Review, 
 423. 
 
 § 174. Conditional Contracts — Inducing Breach of Manufac- 
 turers' Contracts with Retailers. — He who sells to one he is 
 bound by contract with his vendor not to sell to, gives good 
 title nevertheless; and this is true although the person so buying 
 knew at the time of pm-chase of the existence and terms of the 
 contract. Coke on Littleton, section 360, states: "If a man be 
 possessed of a horse, or any other chattel, real or personal, and 
 give his whole interest or property therein upon condition that the 
 donee or vendee shall not alien the same, the same is void because 
 his whole interest and property is out of him, so as he hath no 
 possibility of reverter; and it is against trade and traffic and bar- 
 gaining and contracting between man and man." Such condi- 
 tional contracts are made with agents who are granted exclusive 
 license to sell in a certain territory. These agents are often met 
 by the competition of some third person who has lawfully pro- 
 cured elsewhere the goods which the agent sells. The competitor, 
 not having bought of the manufacturer, and so being under no 
 contract as to price, may sell as he will, and may cut prices and 
 sell to persons to whom the agent is forbidden to sell. There is 
 no breach of covenant in such a case. Both parties to the con- 
 tract of agency may be acting in perfect good faith, and yet the 
 agent's business may be ruined by this competition. The usual 
 method by which these goods are obtained by those who under- 
 sell the authorized agent, is by inducing some one of those under 
 contract with the manufacturer to keep up the price, to sell at a 
 less price than that specified in these contracts. What is then the 
 relationship of the manufacturer to him who has thus broken 
 his agreement, and to the third person who has bought the goods 
 and induced the seller to break his contract? 
 
 These contracts often specify that the buyer shall sell only 
 "App. Cas. 1-1898; §174. »« App. Gas. 495-1901. 
 
356 Interference with a Competitor's Business, Etc. 
 
 « 
 
 in certain specified places. For instance, the owner of a well- 
 known spring of mineral water in Hungary had the exclusive 
 right to export and sell the water in Great Britain and America. 
 Defendant, having applied to the owner to purchase bottled water, 
 and having been refused, and notified of complainant's rights, 
 purchased in Germany bottles bearing a cautionary notice that 
 the water was not to be exported, and sold them in the United 
 States at a lower price than the complainant's. The defendant 
 was not chargeable with unfair competition for so doing, and the 
 complainant was without remedy.'' 
 
 In National Phonograph Co., Ltd., v. Edison-Bell, etc., Co., 
 Ltd.,^^ plaintiff sold goods to wholesale dealers under a contract 
 that they should sell only to dealers who had signed a retailers' 
 agreement to the effect that the retailers would not sell at less 
 than list prices. The defendant obtained plaintiff's goods from 
 one who had signed this agreement, and defendant was one of 
 those to whom retailers had agreed not to sell. Defendant also 
 hired persons to impersonate independent dealers and so obtain 
 goods of plaintiff for his own use," and paid the prescribed price 
 through these persons. Held, that the dealings between the de- 
 fendant and the retail dealer did 'not give any right of action to 
 the plaintiff, as no actual contract between the retailer and the 
 plaintiff was shown, but the acts of the defendant in inducing the 
 wholesalers by fraud and deceit to sell in breach of their contract 
 
 " Apollinaris Co., Ltd., v. Scherer, and addresses. This resulted in 
 
 27 Fed. 18-1886 (C. C. S. D. sales being made under misappre- 
 
 N. Y.). hension. The makers were intention- 
 
 " 1 Ch. 335-1908; National Phono- ally misled. Lord Kennedy sums it 
 graph Co., Ltd., v. Edison-Bell Con- up thus: "If A, who knows that B, 
 sol'd Phonograph Co., Ltd., 24 T. L. the producer of an article, has stip- 
 R. 201-1907. Ell, a dealer bound by ulated in selling it to C, the factor, 
 a conditional contract for sale of that he shall not resell it to A, pro- 
 goods of plaintiff, sold to an agent cures by an intentional misrepresen- 
 of the defendant, who was on the tation to C a sale to himself, he has 
 "suspended list" at trade discount committed toward B an actionable 
 prices. There was no proof that the wrong, provided that B can prove he 
 defendants incited or procured Ell has been thereby damaged, although 
 to violate his contract. Nor was their in the particular circumstances B may 
 conduct proven malicious. There have no cause of action against C in 
 was proof that agents of defendant respect of the transaction." Injunc- 
 represented themselves as indepen- tion as to the agent's acts was granted, 
 dent dealers and gave fictitious names but not as to Ell's acts. 
 
Inducing Breach of Contracts, Etc. 357 
 
 with plaintiff, was an interference with contract, within the 
 naeaning of Allen v. Flood '^ and Quinn v. Leathern J° Injunction 
 and damages were granted. 
 
 The National Phonograph case differs from some American 
 cases in that there the wholesaler did not know when he made the 
 objectionable sales he was breaking his contract. One of the 
 judges in that case contended tliat there was no breach of the 
 contract because of this fact; although he says (p. 368): "If A, 
 who knows that B, the producer of an article, has stipulated in 
 selling it to C, the factor (or wholesaler), that he shall not resell 
 it to A, procures by an intentional misrepresentation to C, a sale 
 to himself, he has committed an actionable wrong (provided that 
 B can prove he has been thereby damaged), although in the par- 
 ticular circumstances B may have no cause of action against C 
 in respect of the transaction." In this case it is to be noted also 
 that there is no consideration given to the character of the prop- 
 erty of the maker whether he be a patentee or not. 
 
 As a general proposition there seems to be no rule of law or 
 equity which can invalidate the title of one who thus buys of one 
 who has agreed not to sell on the terms on which the sale is made. 
 If one makes an offer of purchase to a party to such a contract, 
 without using any fraudulent representations and, through the 
 financial attractiveness of the offer he makes, induces the breach 
 of the contract, it would seem there is no ground on which the 
 buyer can be enjoined or held responsible for interference with 
 contract, when there is no particular property right in the original 
 owner of the goods, such as that given by patent laws to patentees. 
 
 § 175. Inducing Breach of Contracts for Sale of Goods Made 
 by Secret Process. — In cases dealing with goods made by a 
 secret formula, equity will not restrain one dealer from persuading 
 another to break a contract which the latter has made with the 
 manufacturer, which contract provides that the dealer shall sell 
 only at a price, and to customers specified by the manufacturer. 
 Such contracts are made frequently in the attempt to keep up 
 prices and ehminate competition. When such a sale is made 
 violating a contract of this sort, or if the maker himself sells in 
 the agent's territory, a purchaser acquires an absolutely good 
 title as against the agent and maker, and he may do with the goods 
 as he will. This is true, although the buyer knew at the time, of 
 
 " App. Cas. 1-1898. '" App. Cas. 495-510-1901. 
 
358 Inteeference with a Competitor's Business, Etc. 
 
 the existence of a contract which forbade the agent to sell to 
 him. The bar to relief against such competition is the good 
 title which a buyer of personal property gets under such cir- 
 cumstances.^* 
 
 This rule does not apply to patented articles, and probably 
 not to copyrighted articles, during the life of the patent or copy- 
 right.*^ The monopoly given by the statutes governing patents 
 and copyrights controls in such cases, and the maker may sell 
 under such conditions as he will. But the rule does apply to goods 
 made by secret processes. There no monopoly exists. Contracts 
 to limit alienation of personal property made by such process 
 because it is secret, are invalid. The product of a secret process, 
 once sold by the maker, may be dealt in by anyone. That 
 the method of making it is a secret, does not change its 
 legal status. The (yircuit Court of Appeals has recently dis- 
 tinguished contracts dealing with a secret' formula itself, 
 from those dealing with the product of the formula, because 
 the goods when ready for the market, may be owned by some- 
 one quite distinct from the owner of the formula,*^ The court 
 says: "Contracts in respect of a restricted use of the formula 
 are not within the rule against restraint (of trade), because of 
 the character of the property right in such a secret. There 
 can be no unrestricted use, before discovery by fair means, to 
 which the owner does not consent, and then only at the expense 
 of the destruction of its commercial value as a secret; but this is 
 not the case with contracts which affect only traffic in the manu- 
 factured product of the secret formula. Freedom of traffic in 
 that is consistent with its value, and does not involve exposure 
 of the formula" (id. p. 32). This case would seem to hold that 
 there could be no interference with contracts relating to the prod- 
 uct of a secret; but that there could be such interference with a 
 contract relating to the secret itself, and that interference with 
 a contract as to the secret itself would be enjoined. This is the 
 general rule. 
 
 Where one communicates a secret formula, and contracts that 
 the parties shall enjoy a monopoly of it in a certain region and 
 
 *^ Apollinaris Co. v. Scherer, 27 "See full discussion in John D. 
 
 Fed. 18-21-1886 (C. C. S. D. N. Y.). Park & Sons Co. v. Hartman, 153 
 
 ^^See Bobbs-Merrill Co. v. Straus, Fed. 24-1907 (C. C. A. 6th Cir.); 12 
 
 210 U. S. 339-1907. L. R. A. N. S. 135, note. 
 
Inducing Breach of Contracts, Etc. 359 
 
 that the product of it shall not be sold below a certain price, and 
 a third person sells it in these Umits, an account will be directed,^* 
 One who procures a wholesaler or retailer, who is under contract 
 with a maker to sell goods made by secret process only under 
 certain conditions, to violate these conditions will be enjoined. 
 Such conditions are usually against selling below a fixed price, 
 or to persons not nominated by the manufacturer. It is said 
 that the defendant is intentionally doing another a legal injury 
 by tempting and persuading him to break a contract or to commit 
 a breach of a trust, under which the goods were delivered to him.^^ 
 In Wells & Richardson Co. v. Abraham,^^ complainant was a 
 manufacturer of a proprietary medicine which it sold only to 
 wholesale dealers, who in turn agreed to sell only at a fixed price 
 and only to such retail dealers as had contracted with complain- 
 ant to retail the medicine at a stipulated price. Defendants were 
 retail merchants who had not contracted with complainant at 
 all, but purchased from dealers who thus sold in violation of their 
 agreements with complainant. Defendants then sold at a cut 
 price. Held, that complainant was entitled to an injunction re- 
 straining defendants from inducing any dealer to violate his 
 contract with complainants by selling to defenda-nts. "A is 
 intentionally doing B a legal injury. C intentionally induces A 
 to do the injury. He solicits that it be done. He pays money to 
 the doer of it, to tempt him to do the act; that is, A and C unite, 
 connive, agree to procure A to break his contract, so that C may 
 get complainant's goods, which the latter had comlnitted to A, 
 upon the trust that they shall not be delivered to C and others 
 similarly situated. In such an instance, the law should have 
 sufficient inherent integrity to enable it to lay fast hold of A and 
 C, and stop both such deliberate breach of obligations and the 
 advantages that persons implicated in it are gaining. * * * 
 No sane conscience can justify one man inducing another to 
 betray a legal obHgation. * * * The very vital wrong is 
 that the defendants have obtained and are obtaining the goods 
 by inducing others, not entitled to sell to them, to make sale to 
 them, whereby the defendants come into possession by doing the 
 complainant a legal injury, a wrong, that makes such possession 
 
 " Fowk V. Park, 131 U. S. 88- ham, 146 Fed. 19Q-1906 (C. C. E. D. 
 1889; 33 L. ed. 67; 9 Sup. Ct. 658. N. Y.); affirmed in 149 Fed. 408. 
 « Wells & Richardson Co. v. Abra- « 146 Fed. 190-1906. 
 
360 Interference with a Competitor's Business, Etc. 
 
 wrongful. * * * The law of the land accords with good 
 morals." Thomas, J. (pp. 193, 194). This language has been 
 affirmed.*^ 
 
 This decision is not foUoWed in John D. Park & Sons Co. v. 
 Hartman,^ on the ground that the validity of the contracts 
 involved was not denied, while in the latter case the contract 
 between maker of goods, the owner of the secret, and the whole- 
 saler was held invalid on the ground that there is nothing in the 
 character of a trade secret similar to the right of monopoly granted 
 to the owner of a patent, hence the owner of a secret process can- 
 not, by contract, prevent his vendee from obtaining absolute title. 
 
 In Garst v. Charles,*^ plaintiff was a manufacturer of a proprie- 
 tary medicine which he sold only to retail druggists under con- 
 tracts by which they agreed not to sell it at less than a stipulated 
 price. Defendant, a retail druggist, knowing of the terms ©n 
 which plaintiff sold his medicine, procured a third person to buy 
 a quantity on those terms, and then to turn it over to defendant 
 at cost, whereupon defendant advertised and sold the article at 
 a cut price. Plaintiff was granted an injunction restraining de- 
 fendant from selling such medicine as he had already procured, 
 except at the regular price, and enjoining him also from there- 
 after inducing other persons to purchase from the plaintiff, and 
 to resell to the defendant in violation of their contracts with 
 plaintiff. 
 
 In Wells & Richardson Co. v. Abraham ^° the defendants ob- 
 
 J. 
 
 literated or mutilated the marks upon packages before offering 
 complainant's goods for sale, and it was held that this act consti- 
 tuted sufficient evidence of connivance and participation in the 
 breach of the contract. 
 
 Other similar cases, also involving the sale of proprietary med- 
 icines, are Doctor Miles Medical Co. v. Piatt ^^ and Doctor Miles 
 Medical Co. v. Jayne Drug Co.^^ In some similar cases the ques- 
 tion was raised whether the contracts were not invalid as in re- 
 straint of trade, but this question is not considered to be within 
 the scope of this book. A somewhat analogous case was Bobbs- 
 
 " 149 Fed. 408-1906 (C. G. A. 2d »" 146 Fed. 190-1906; affirmed in 
 
 Cir.). 149 Fed. 408. 
 
 « 153 Fed. 24-1907; 12 L. R. A. " 142 Fed. 606-1906 (C. C. III). 
 
 N. S. 135, note. «» 149 Fed. 838-1906 (C. G. 
 
 « 187 Mass. 144-1905; 72 N. E. 839. Mass.). 
 
Interference with Prospective Contracts 361 
 
 Merrill Co. v. Straus,^^ which is mentioned below; but as it was 
 found there that no contract existed, so that there was no inducing 
 of the violation of any contract, the case is hardly an authority, 
 though valuable for the discussion in the opinion. 
 
 Where the contract is personal in character to a greater extent 
 than in the cases just discussed, an injunction has been granted. 
 In Sperry & Hutchinson Co. v. Mechanics' Clothing Co.^^ the com- 
 plainant was engaged in the business of selling and redeeming 
 trading stamps which it sold to merchants under a special con- 
 tract by which the purchasers agreed not to dispose of them 
 except in the regular course of retail trade. The defendants 
 acquired a quantity of stamps from merchants who disposed of 
 them to the defendants in violation of their special contracts 
 with the complainants. The defendants were reselling these 
 stamps to other merchants who were already under contract to 
 purchase only from the complainants, and were enjoined. Speak- 
 ing of this decision and of the railroad ticket cases, Lurton, J., in 
 John D. Park & Bons Co. v. Hartman,^^ says: These cases "rest 
 upon the peculiar character of the property rights involved. 
 Neither of these cases concern the buying and selling of articles 
 of general commerce, and both relate to things in the nature of 
 contracts personal in character, _ and not to things which can 
 ever become the subject of general trade and traffic." 
 § 176. Interference with Proposed or Prospective Contracts. — 
 It may be considered now as settled that to interfere with a 
 man's trade, without justification, by preventing another from 
 entering into a contract with him which it is reasonably certain 
 would have been made but for the interference, is actionable. 
 In a recent case, Letins v. Bloede, 202 Fed. 7 (C. C. A.) the ques- 
 tion was considered with care, and the conclusion was to that 
 effect. ^^ 
 
 " 147 Fed. 15-1906 (C. C. A. 2d executory contract, the question nat- 
 
 Cir.). urally arose whether the principle 
 
 " 128 Fed. 800-1904 (C. C. R. I.), extended to a case in which a third 
 
 " 153 Fed. 24-31-1907 (C. C. A. party, with hke motive and without 
 
 6th Cir.) ; 12 L. R. A. N. S. 135, note, lawful excuse, by his interference 
 
 5« The court says at p. 16: — prevented one from entering into, 
 
 "It having been settled that an or making, a contract. The answer 
 
 action, as for a tort, would lie for a to this question is dependent upon 
 
 malicious — that is wrongful — inter- the answer to another, which lies at 
 
 ference with the performance of an the threshold of the inquiry: Does 
 
362 Interference with a Competitor's Business, Etc. 
 
 This distinction, however, is to be observed, namely, that 
 interference with a fixed contract right is actionable, even though 
 motived by trade competition; whereas interference with a con- 
 
 the right to enter into or make a con- 
 tract come within the definition of a 
 legal right, the wrongful interference 
 with which is actionable? It is diffi- 
 cult to say, in many cases, at what 
 stage of a negotiation the condition 
 has arisen when it can be said that two 
 persons would, but for the interfer- 
 ence of a third party, have entered 
 into contract relations. If A make 
 a definite proposal to B to enter into 
 a contract, the character, terms, etc., 
 of which are sufficiently definite ta be 
 capable of acceptance, and, while 
 B is negotiating, or after he has de- 
 termined to accept tte proposal, C 
 maliciously interferes and prevents 
 the acceptance on the part of B., or 
 procures a withdrawal of the proposi- 
 tion by A., by reason whereof loss is 
 sustained, can it be said that the party 
 who is injured by such interference 
 has sustained no legal wrong, and that 
 by reason thereof has sustained no in- 
 jury — that is, loss? Is there not in 
 such case damnum el injuria, which 
 constitute the elements of an action- 
 able wrong? Assuming, ■pro hoc vice, 
 that the facts averred in plaintiff's 
 declaration are true, is it not clear 
 that the Chemical Company, being pre- 
 ftared to comply with the terms of the 
 government's proposal to buy the ink, 
 which was the subject-matter of the 
 proposal, and, accepting the invita- 
 tion of the government to bid for the 
 contract, by furnishing the sample and 
 stating the price, it secured, over 
 other bidders, a status in the nego- 
 tiation which, but for defendant's 
 interference, would have resulted in 
 its making the contract by the per- 
 formance of which it would have made 
 
 a profit, why did it not have a status, 
 the unlawful interference with which 
 by defendants was a wrong for which 
 he is entitled to a remedy? It is true 
 that the right is more difficult to es- 
 tabhsh — requiring another link in the 
 process of proof — than where the con- 
 tract has been entered into. When the 
 parties have entered into a contract, 
 the terms of which are fixed, the 
 plaintiff is only required to show the 
 maUcious interference and the dam- 
 age proximately resulting; whereas, 
 if the ground of complaint is that he 
 was about to make a contract, he is 
 required to go further and show that 
 he was not only ' about to,' but would, 
 but for the maUsious interference of 
 defendants, have entered into the 
 contract, etc. WhUe there are but 
 few adjudged cases throwing light 
 upon the subject, we are not without 
 authority to sustain the ruling of the 
 court below in overruling the demur- 
 rer. In Am. & Eng. Enc, vol. 16, 
 page 1114, it is said that: 
 
 'According to some authorities, an 
 actionable interference with contract 
 relations is not confined to cases where 
 the contract is binding and valid. 
 It is actionable likewise to maliciously 
 induce the termination of a contract, 
 terminable at will, or to prevent the 
 formation of contracts which, in the 
 natural course and but for such inter- 
 ference, would have been formed.' 
 
 For this statement of the law the 
 author cites Walker v. Cronin, supra. 
 In that case the declaration alleged 
 that defendant did unlawfully, etc., 
 molest and hinder the plaintiffs from 
 carrying on their business of manu- 
 facture and sale of shoes — willfully 
 
Interference with Prospective Contracts 
 
 363 
 
 tract in course of negotiation, without the use of illegal means, 
 may be justified by the motive of the legitimate interest, as trade 
 competitor or otherwise of the one interfering.^' 
 Analogous to an interference to prevent the formation of a 
 
 persuaded a large number of persons 
 who were in the employment of plain- 
 tiffs, and others, who were about to 
 enter into their employment, to aban- 
 don, etc. It may be suggested that 
 the question presented here did not 
 necessarily arise because the declara- 
 tion was good without reference to it. 
 The language of Wells, J., however, 
 indicates that he was making no such 
 distinction. After citing authorities, 
 he says: 
 
 ' In all these cases, the damage for 
 which the recovery is had is, not the 
 loss of the value of actual contracts 
 by reason of their nonfulfilment, but 
 the loss of advantages either of prop- 
 erty or personal benefit, which, but 
 for such interference, the plaintiff 
 would have been able to obtain or 
 enjoy.' 
 
 The language of the judge in 
 Templeton v. Russell, 1 Q. B. 728 
 [1893], clearly indicates that the right 
 of action accrues to the injured party, 
 not only for maliciously 'inducing per- 
 sons to break contracts already entered 
 into, * * * but for inducing per- 
 sons not to enter into contracts with 
 the plaintiff ' — the reason given be- 
 ing: 
 
 'That there was the same wrong- 
 ful intent in both cases; wrongful, 
 because malicious. There was the 
 same kind of injury to the plaintiff. 
 It seems rather a fine distinction to 
 say that where a defendant maliciously 
 induces a person not to carry out a 
 contract already made with the plain- 
 tiff, and so injure the plaintiff, it is 
 actionable, but where he injures the 
 plaintiff, by maliciously preventing a 
 
 person from entering into a contract 
 which he would otherwise have en- 
 tered into, it is not actionable.' " 
 
 The court also refer to Angle v. 
 Chicago &c. Ry., 151 U. S. 1, and other 
 cases. 
 
 In Krigbaum v. Sbarbaro, 23 Cal. 
 App. 427 (138 Pac. 364) it was simi- 
 larly held that interference with a 
 contract for real estate under negotia- 
 tion was actionable, if the contract 
 would have been made but for the 
 interference. There, however, the in- 
 terference was by means of intimida- 
 tion and coercion. 
 
 See also Joyce v. Gt. Northern Ry. 
 Co., 100 Minn. 225, 229, and cases 
 there cited. 
 
 "In Lewis v. Bloede, 202 Fed. 7, 
 fraudulent means were used by a 
 trade competitor. Otherwise it seems 
 that his conduct would not have been 
 actionable. There seems no ground, 
 either in reason, or in the authority 
 of judicial precedent, for differentiat- 
 ing the case of interfering to prevent 
 the formation of a particular contem- 
 plated contract from the general case 
 of interfering with another's business 
 or emplojnnent, in which (always as- 
 suming that the means used are not in 
 themselves unlawful), the rule is, as 
 stated in Beekman v. Marsters, 195 
 Mass. 205, 212: "When the plaintiff 
 comes into court to get protection from 
 interference with his right of possible 
 contracts, that is, of his right to 
 pursue his business, acts of inter- 
 ference are justified when done by a 
 defendant for the purpose of further- 
 ing his (the defendant's) interests 
 as a competitor." 
 
364 Interfebence with a Competitor's Business, Etc. 
 
 contract is an interference to prevent the taking of action favor- 
 able to plaintiff's interest. For example, defendant, by deceit, 
 induced A to reject a machine made by plaintiff, under a contract 
 by which A might reject the machine if not satisfied with it. He 
 was held liable, even without direct proof that A would other- 
 wise have accepted the machine.®* 
 
 § 177. What Interference with Another's Business in General 
 is Legitimate. — Some methods of bringing pressure to bear are 
 quite legitimate, though the result may be to divert a rival's 
 trade. Under certain circumstances one may have a perfect 
 right to threaten a class of persons with withdrawal of patronage, 
 or with some other disadvantage, if they deal with a rival. The 
 House of Lords has held that it is not unlawful to outbid a compet- 
 itor in rates. 
 
 In the case of Mogul SS. Co., Ltd., v. McGregor, Gow & Co.,^^ 
 an association of shipowners, to secure to themselves a certain 
 carrying trade, agreed that the number of ships and rate of 
 freight should be regulated by agreement between themselves, 
 and offered a rebate to shippers who would agree to ship only by 
 their vessels. Other shipowners not belonging to the defendant's 
 association sent ships to load at a port covered by the agreement, 
 and defendants sent extra vessels to the same port, underbid 
 plaintiffs for freight, reduced rates so low that plaintiffs could not 
 get a remunerative rate, threatened, to dismiss certain of their 
 agents if they loaded plaintiffs' vessels, and notified shippers 
 that they would not receive the usual rebate if they shipped by 
 plaintiffs' ships. The defendants were held not liable in an action 
 for damages, for the court considered they had been actuated by 
 the lawful purpose of increasing their own trade and profits, and 
 had used no unlawful means. 
 
 A retail lumber dealers' association agreed not to deal with 
 any wholesale dealer who sold direct to consumers. It was 
 the duty of the secretary to report all such sales to the members 
 of the association. A member having sold to consumers, the 
 secretary imposed the fines fixed by the rules of the association 
 and threatened, if they were not paid, to report the transactions 
 to all the members of the association. The member then brought 
 action for an injunction forbidding the giving of the proposed no- 
 's Morgan v. Andrews, 107 Mich. '« App. Cas. 25-1892. 
 33-1895. 
 
What Interference Is Legitimate 
 
 365 
 
 tice and forbidding the defendants to combine to hinder or hmit 
 plaintiff's sales. An injunction was granted, but on appeal was dis- 
 solved; the court holding that any man might refuse to deal with 
 any other man or class of men, and that any number of men 
 might agree to exercise such right jointly.'''' 
 
 An ice dealer was coerced by the threats of defendant, a manu- 
 facttirer of ice, that the dealer's supply of ice would be cut off, to 
 its great injury, unless the dealer broke its contract to furnish 
 ice to a customer. This was held actionable." 
 
 Similarly, plaintiff, a butcher, was held to be entitled to dam- 
 ages against cattle dealers who, without justifying reasons, had 
 combined to refuse to sell to plaintiff and to induce others so to 
 refuse. The principle was applied that the right to refuse to deal 
 with another, even from motives of prejudice or malice, does not 
 extend to the inducing of others not to deal with him.^^ 
 
 However, the cases are not wholly in harmony, and combina- 
 tions to interfere with the free market of others have repeatedly 
 been held to be justified by the motive of trade competition. 
 Instances are given in the note.^^ 
 
 «» Bohn Mfg. Co. v. Hollis, 54 Minn. 
 223-1893; 55 N. W. 1119; 21 L. R. A. 
 337. But see Huskie v. Griffin, lb 
 N. H. 345, in which this case is dis- 
 approved. 
 
 '^Sunwali Ice Co. v. Knickerbocker 
 Ice Co., 114 Md. 403. 
 
 «» Delz V. Winfree, 80 Tex. 400-1891. 
 Other cases in which the business 
 interest sought to be subserved were 
 not deemed to justify the means used, 
 are Knickerbocker Ice Co. v. Gardiner 
 Dairy Co., 107 Md. 556 (16 L. R. A. 
 N. S. 746) in which defendant, a man- 
 ufacturer, threatened to deprive a 
 jobber of the opportunity to handle 
 his goods unless he should break his 
 contract to supply goods to the plain- 
 tiff. He was held liable. Klingel's 
 Pharmacy v. Sharps & Doelune, 104 
 Md. 218 (7 L. R. A. N. S. 976). 
 There merchants combined to keep 
 up a scale of prices, agreeing to refuse 
 to sell to dealers who would not ad- 
 
 here to such prices and threatening 
 to boycott those selling to such deal- 
 ers, held liable. In Ertz v. Produce 
 Exchange of Minneapolis, 79 Minn. 
 140-1900, defendants agreed with each 
 other and with others to transact no 
 business with plaintiff, a commission 
 merchant in the same line of business 
 with themselves, and thereby ruined 
 his business. In the absence of justi- 
 fication, held actionable, on demurrer. 
 The court said: "One man singly, 
 or any number of men jointly, having 
 no legitimate interests to protect, 
 may not lawfully ruin the business of 
 another by maUciously inducing his 
 patrons and third parties not to deal 
 with him." Bohn Mfg. Co. v. Hollis, 
 54 Minn. 223, was distinguished. 
 
 83 In Orr v. Home Mutval Ins. Co., 
 12 La. Ann. 255-1857, insurance com- 
 panies which, in order to prevent 
 plaintiff's appointment (as master 
 of a steamboat) agree, though maU- 
 
366 Interference with a Competitor's Business, Etc. 
 
 It is lawful, according to the Texas court, for an employer of 
 laborers who also kept a store, to forbid his men, on the pain of 
 discharge to trade at a store kept by another. In so doing he is 
 merely seeking to build up his own business to a certain extent 
 at the expense of the other storekeeper.^* 
 
 So a landlord may induce or influence his tenants not to take 
 their electric light from a particular lighting company. It was 
 considered that the right of the lighting company to sell its current 
 to those desiring it could be interfered with by one having an 
 equal or superior right, in this case the landlord.^^ 
 
 And so in general, where the relations of one person toward 
 others, as, for example, school authorities to pupils, justify the 
 exercise of a certain control over their action, a wide discretion 
 is permitted, and if it is exercised in good faith there will, in 
 general, be no liability to one with whom those under authority 
 have been forbidden to deal.** 
 
 ciously and without cause, that they 
 would insure no boat on which he 
 should be employed, were held not 
 to be Uable in damages. To the same 
 effect was Hunt v. Simonds, 19 Mo. 
 583. It may perhaps be doubted 
 whether these decisions would be 
 followed now. In Macauley Bros. v. 
 Tierney, 19 R. I. 255-1895, competi- 
 tion in business was held to justify 
 an association of master plumbers 
 in inducing wholesale dealers in sup- 
 plies not to sell to plumbers not be- 
 longing to the association, by threaten- 
 ing that if. they did so they would 
 lose the patronage of the- members 
 of the association. This decision 
 seems in line with approved authori- 
 ties. So in Whiiwell v. Continental 
 Tobacco Co., 125 Fed. 454, it was held 
 not actionable for a manufacturer to 
 refuse to sell to one who would not 
 agree to trade exclusively with him. 
 
 ^* Robinson v. Texas Pine Lands 
 Assn., 40 S. W. 843-1897 (Tex. C. 
 C. A.). 
 
 ^^ People's Land & Mfg. Co. v. 
 Beyer, 161 Wis. 349; 154 N. W. 382. 
 
 6« In Gott V. Berea College, 156 Ky. 
 376, defendant promulgated and en- 
 forced a rule forbidding its students 
 to visit restaurants or place of amuse- 
 ment not controlled by it. Plaintiff 
 kept a restaurant near the college, 
 and its business was injured by the 
 enforcement of this rule. Held that 
 the rule was reasonable, and that 
 plaintiff had no remedy. So in Chieth- 
 ler V. AUman, 26 Ind. App. 587, it 
 was held not actionable for members 
 of a school board and a teacher to 
 injure merchants' trade by diverting 
 pupils by persuasion and threats. In 
 McKee v. Hughes, 133 Tenn. 455; 
 181 S. W. 930-1916. Defendants, 
 residents of a town, petitioned its 
 authorities to revoke the Ucense of 
 plaintiff as a merchant, on the ground 
 that his store was a public nuisance; 
 the petition was granted and the 
 store closed. Defendants had acted 
 in good faith, and had some justificar 
 tion in the facts. Held, no liability. 
 In Brooks v. Ingraham, 186 Ala. 
 106; 65 So. 138-1914, it was held the 
 proprietor of a health resort could 
 
Tortious Interference with Another's Business 367 
 
 But this control over dependents, such as employees, pupils, 
 etc., must not be abused. It must be exercised in strict good 
 faith." 
 
 § 178. Tortious Interference with Another's Business Gener- 
 ally. ^- There are many ways, other than by interference with 
 contract, of harassing, interfering with, and obstructing a competi- 
 tor in such a manner as to amount to unfair competition, in the 
 broadest sense of the term. The business of another may be un- 
 lawfully obtained by harassing his customers and salesmen, just 
 as effectively as by passing off his goods as those of another.^^ 
 Certain of these methods are mentioned below. 
 
 A hotel keeper made a contract with B, a hack driver, to have 
 him meet trains and carry passengers to his hotel. On the termi- 
 nation of the contract with B a similar one was made with M, 
 but B continued to usfe the name "Revere House" on his cabs 
 and carriages. On suit brought by M, B was enjoined.^^ 
 
 In Davis v. New England Ry. Pub. Co., 203 Mass. 470-1909, 
 (a case presented by demurrer) defendant corporation published 
 a directory of local expresses, and intentionally omitted plaintiff 
 therefrom, although requested to include his name, being induced 
 to do so by the false statements and threats of certain individuals, 
 
 without incurring liability, announce in any case a particular physician 
 
 that excursionists would not be ad- was held actionable, where the cir- 
 
 mitted to the grounds even though this cumstances justified only a caution 
 
 resulted in loss to plaintiff, who had against employing except in emergency 
 
 organized a railway excursion and had cases any physician but those desig- 
 
 spent money in advertising it and nated. In a recent and well-considered 
 
 otherwise. case, Hutton v. Walters, 132 Tenn. 
 
 «' In Graham v. St. Charles S. B. Co., 527, the president of an institution, 
 
 47 La. Ann. 214r-1895, it was held to gratify a personal grievance, by 
 
 (on demurrer) that to forbid one's persuasion and threats diverted stu- 
 
 employees, on pain of discharge, to dents from plaintiff's boarding house, 
 
 deal with a merchant, and thus injure He was held Uable. 
 
 his business, in the absence of justi- "^ Sperry & Hutchinson Co. v. 
 
 fication, was actionable. Wesley v. Louis Weber & Co., 161 Fed. 219- 
 
 Native Lumber Co., 97 Miss. 814-1910, 1908 (C. C. 111.). Complainant held 
 
 held it actionable, for defendant, for entitled to injunction to prevent de- 
 
 the purpose of injuring a merchant's fendant from interfering in its busi- 
 
 business, to warn defendant's employ- ness of issuing trading stamps by in- 
 
 ees not to deal with him, on pain of ducing the violation of contracts 
 
 dismissal. In Peek v. Northern Pac. with it. 
 
 Ry. Co., 51 Mont. 295; 152 Pac. 421- '<' Marsh v. Billings, 7 Gush. 322- 
 
 1915, forbidding employees to employ 1851. 
 
368 Interference with a Competitor's Business, Etc. 
 
 competitors of plaintfff, who were joined as defendants. Plain- 
 tiff was held to be entitled to injunction.^^" 
 
 § 179. Interference with Salesmen of a Competitor. — In 
 Evenson v. Spaulding,'"' Spaulding manufactured buggies and 
 wagons in Iowa and sold them, through itinerant salesmen, to 
 farmers and others in the state of Washington. A voluntary 
 association, composed principally of dealers in hardware and 
 farming implements in the state of Washington, existed, the 
 object of which was to induce farmers and others to Umit then- 
 trade to dealers within the state. This association employed 
 agents to follow closely Spaulding's salesmen, to interrupt their 
 conversations with farmers, and dissuadfe the latter, by false 
 statements and otherwise, from buying Spaulding's goods, and 
 in various ways to intimidate and interfere with the salesmen. 
 The agents of the association very rarely offered any buggies or 
 wagons for sale; and hardly any of the members of the association 
 dealt in buggies. This was held an unwarranted attempt to 
 destroy complainant's business,' and an injunction pendente lite 
 was granted. 
 
 § 180. Interference by False Representations and Threats. — 
 An injunction was issued against the Standard Oil Co. in 1904 
 because of very similar conduct on its part.^^ Its agents at- 
 tempted to ruin the business of one Doyle by making false repre- 
 sentations to his customers, and by threats and intimidation. 
 It also harassed his employees by following and interfering with 
 them, and ofifeaing his customers oil at a lower rate, or for nothing. 
 
 690 "The ground on which the plain- ing, to the plaintiff's injury. * * * 
 tiff seeks relief is not that he has a The direct effect of the false state- 
 right to compel the defendants or ment is to point those who want the 
 either of them to do anything for his services of an express company to 
 benefit, but that he has a right to have other companies and to divert them 
 them refrain from intentionally doing from the plaintiff." He adds that 
 anything, without legal justification, "the gist of the plaintiff's action is 
 to his injury. The defendant cor- the wrong done him by intentionally 
 poration professes to give the public turning away from him those who 
 a full list of all the reputable ex- would otherwise do business with 
 press companies doing business in him." 
 
 Boston. While it does not say in '" 150 Fed. 517-1907 (C. C. A. 9th 
 
 express words that the list is complete, Cir.) ; 9 L. R. A. N. S. 904, note, 
 
 that is the meaning which the publi- ''^Standard Oil Co. v. Doyk, 118 
 
 cation is intended to convey and does Ky. 662-1904; 82 S. W. 271. 
 convey. Its Ust is false and mislead- 
 
Bringing a Multiplicity of Suits 369 
 
 So also a preliminary injunction has been granted restraining 
 persons who threatened complainant's booking agents with loss 
 of business controlled by defendant if they continued to sell 
 complainant's tickets.'^ 
 
 Intimidating customers, as by a show of violence, such as 
 firing cannon, has been held actionable. In Tarleton v. M'Gaw- 
 ley,^^ an action was allowed against a rival trader who, by firing 
 cannon, had frightened away natives on the African coast, and 
 thus prevented plaintiff from trading with them. Intimidation 
 by unjustified threats is actionable.'* 
 
 § 181. Interference by Bringing a Multiplicity of Suits. — 
 The bringing of a multiplicity of suits, started not in good faith 
 but for the purpose of deterring the pubHc from purchasing from 
 a rival and of ruining his trade, has been enjoined in Wisconsin. 
 Where a large number of infringement suits were brought, the 
 prosecution of them was restrained until the questions involved 
 had been determined in the principal suit, the object of the mul- 
 tiplicity of suits being found to be to harass a rival manufacturer 
 and destroy his business. "Instances are not wanting," says 
 Quarles, D. J., "where patentees make illicit use of the courts 
 as instrumentalities of oppression: bring a multiplicity of suits, 
 purposely scattered through the circuits, not for the honest 
 purpose of securing an adjudication in support of the patent, but 
 to crush a rival manufacturer by creating a stampede among his 
 customers: alarming them by circulars breathing threats of prose- 
 cution, denouncing the product of the rival concern as an infring- 
 ing device, at the same time taking no step to bring any of the 
 numerous suits to final hearing." '*" 
 
 § 182. Simulated Competition. — The motive of trade compe- 
 tition, set up in justification of acts causing injury to plaintiff's 
 business, may be subjected to the test of good faith. Some 
 legitimate benefit to defendant (other than the gratification of 
 spite or vindictiveness) must have been contemplated. The lead- 
 ing case upon this point is Tuttle v. Buck, 107 Minn. 145-1900. 
 
 " Lloyd Sabaudo v. Cubicciotti, 159 industrial dispute cases, e. g., Kolley 
 
 Fed. 191-1908 (C. C. Pa.). v. Robinson, 187 Fed. 415. 
 " Peake N. P. 205-1793. '*° Commercial Acetylene Co. v. Avery 
 
 ''* Virtue v. Creamery P. M. Co., Portable Ltg. Co., 152 Fed. 642-45- 
 
 123 Minn. 17. Other examples of 1906 (C. C, Wis.), 
 actionable intimidation are found in 
 
370 Interference with a Competitor's Business, Etc. 
 
 There a complaint was sustained, upon demurrer, in which de- 
 fendant, a banker, by false accusations and threats, as well as 
 persuasion, was alleged to have induced many of the patrons of 
 plaintiff, a barber, to cease employing him, and also to have 
 caused two persons employed by him to set up a rival barber 
 shop, controlled by him (plaintiff) to divert custom from plaintiff, 
 all with the malicious purpose of ruining plaintiff's business, and 
 not to serve any legitimate purpose of his own. Plaintiff had 
 refused to rent a shop offered him by defendant, who evidently 
 resolved to punish him by ruining his business. 
 
 In Dunshee v. Standard Oil Co., 152 Iowa, 618, the doctrine 
 of simulated competition was clearly stated. In that case the 
 Standard Oil Co., when a retailer withdrew part of its business 
 from it, set up a competing retail business and conducted it in 
 such a manner as to force the retailer out of business. The 
 court said: — 
 
 "We may concede to the appellants the undoubted right to 
 establish a retail oil business in Des Moines, tb employ agents 
 and drivers, and send them out over the same routes and make 
 sales to the same people with whom the Crystal Oil Company was 
 dealing, but in so doing it was bound to conduct such business 
 with reasonable regard and consideration for the equal right of 
 the Crystal Company to continue its business and to continue 
 supplying oil to such of its customers as desired to remain with it. 
 If, however, there was no real purpose or desire to establish a 
 competing business, but under the guise of pretense or competi- 
 tion to accomplish a malicious purpose to ruin the Crystal Com- 
 pany or drive it out of business, intending themselves to retire 
 therefrom when their end had been secured, then they can claim 
 no immunity under the rules of law which recognize and protect 
 competition between dealers in the same line of business seeking 
 in good faith the patronage of the same people. And if under 
 such pretense of competition defendants maliciously interfered 
 with the business of the Crystal Oil Company in the manner 
 charged, and injury to the latter was thereby inflicted, a right of 
 action exists for the recovery of damages." ''^ 
 
 " This case may be compared with ulated in which the same defendant 
 
 an earlier case, the facts of which, was exonerated from liability for 
 
 however, appear to differentiate it, various acts of rivalry and attempted 
 
 &s competition was not merely sim- monopoly, designed to force it out of 
 
Interfbbence with Employment 371 
 
 The above cases have been followed in Boggs v. Duncan-Schell 
 F. Co., 163 Iowa, 106-1913; 143 N. W. 483, in which an agent 
 for a sewing machine was superseded by plaintiff. The former 
 agent threatened to drive the other out of business, and published 
 misleading advertisements, offering at $25, machines falsely 
 represented to be of the same grade as the machines sold by 
 plaintiff for $45. He refused, however, to sell any machines such 
 as he advertised. Held, actionable. Said the court: — "There 
 is a difference between lawful competition and simulated competi- 
 tion carried on with the sole purpose and intent, not of profit and 
 gain, but of maliciously injuring others. * * * The law, it 
 was said, will not permit a trader "to simulate that which is 
 right for the sole purpose of protecting himself in the doing of 
 that which is palpably wrong." 
 
 § 183, Interference with employment, actual or prospective. 
 — We have seen that to injure another's business by persuading 
 his employees to leave him, is, with some qualifications, action- 
 able. In the absence of sufficient justification, there is likewise 
 liability to an employee or person desiring employment for in- 
 ducing his discharge or preventing him from obtaining employ- 
 ment. 
 
 In Joyce v. Great Northern Railway Co., 100 Minn. 225-1907, 
 for example, it was held actionable to induce another not to em- 
 ploy an applicant for employment, except on condition that he 
 release defendant from a claim for damages arising from an acci- 
 dent, plaintiff having been refused employment by reason of de- 
 fendant's interference.'^ 
 
 In Huskie v. Griffin, 75 N. H. 345-1909, it was held actionable 
 to prevent A's employment by B, by making a statement con- 
 cerning A calculated to prejudice B against him," solely to injwe 
 B, and without justification in any legitimate purpose to be served. 
 
 Withholding a certificate of character from an employee is not 
 actionable, although the making of false or unfair statements, by 
 business, including the refusal to applicable, if there had been no 
 patronize plaintiff's line of transportar statute. 
 
 tion or permit others to do so. West " The court even saying "that a 
 Virginia Transportation Co. v. Stand- statement of the truth, made for the 
 ard Oil Co., 50 W. Va. 611-1902. sole purpose of damaging the plaintiff 
 
 '6 A Minnesota statute was appUed, by causing a third party to refuse to 
 but the court discussed the common further deal with the plaintiff, is 
 law which was evidently considered actionable if damage ensues." 
 
372 Interfekence with a Competitor's Busestess, etc. 
 
 reason of which another took action causing loss to a former 
 employee, would be actionable.''^ 
 
 Various persons, interested in the administration of schools, 
 but found to have acted maliciously, were held liable in damages 
 for procuring the dismissal of a school superintendent.''^ 
 
 § 184. Damages. — Exemplary damages may be awarded where 
 the wrong was willful and malicious.*" Where there is no ex- 
 press malice, and defendant's object was merely to benefit him- 
 self, exemplary damages are not, as a rule, recoverable," for in- 
 jury to business should not be merely speculative and conjectural; 
 but if it is certain that damages have been caused by the wrong- 
 ful act of another, uncertainty as to the amount is rarely good 
 reason for refusing any damages at all. "The jury may in such 
 case give such temperate damages for injury to business as they 
 believe to be reasonable compensation for the injury which must 
 necessarily result from the act of the defendant." *^ 
 
 In estimating damages, the profits for the period following the 
 injury may be compared with those for the period before, making 
 allowance for the causes shown to have affected profits.** 
 
 '"Dick V. Northern Pacific R. Co., have been instructed that plain- 
 
 86 Wash. 211-1915. tiff was entitled to actual dam- 
 
 " Faunce v. Searles, 122 Minn, ages and also to such exemplary dam- 
 
 343-1913. Plaintiff's office was held ages (not exceeding the amount 
 
 under contract, but this doubtless claimed) as the jury might allow. See 
 
 was not an essential element of the Chapter on " Profits and Damages." 
 case. *' Knickerbocker Ice Co. v. Gardiner 
 
 8» Dunshee v. Standard Oil Co., 152 Dairy Co., 107 Md. 556; 16 L. R. A. N. 
 
 Iowa, 618, 631-1911; (but interest S. 746. 
 
 on such damages is not recover- '* Virtiie v. Creamery P. M. Co., 
 
 able). Virtue v. Creamery P. M. Co., 123 Minn. 17 (discussing evidence of 
 
 123 Minn. 17-20; Day v. Hunni- damages). 
 
 cutt, 160 S. W. 134, in which "Hooker C. & M. Co. v. Hooker, 
 
 there was actual malice and intimi- 95 Atl. 649. 
 dation; held that the jury should 
 
CHAPTER XIII 
 
 Trade-Maeks — General Principles 
 
 Section 185. Marks, trade-marks, and trade names. 
 
 186. Definitions of a trade-mark. 
 
 187. Functions of a trade-mark. 
 
 188. Nature of a trade-mark. 
 
 189. Essential elements of a technical trade-mark. 
 
 190. Non-essentials of a trade-lnark. 
 
 191. Features of the dress or appearance of goods cannot ordinarily 
 
 become technical trade-marks. 
 
 192. Products to which a trade-mark may be appUed. 
 
 193. Marks indicating the selector, not the maker of goods. 
 
 194. Several trade-marks for the same goods. 
 
 195. Must be affixed to goods. 
 
 196. The use of a sign or word as a trade-mark must not be against 
 
 public policy. 
 
 197. Various classifications of trade-marks. 
 
 198. Distinction between trade-marks and trade names. 
 
 199. Difference between trade-marks and trade names not one of 
 
 underlying principle, but of degree and method of proof. 
 
 § 185. Marks, Trade-Marks and Trade Names. — A mark is 
 defined as "a symbol or character, a stamp, brand or device, 
 made on or attached to something to identify, distinguish or call 
 attention: * * * an object serving to guide, direct or point 
 out." (Standard Diet.) 
 
 The terms "trade-mark," "trade name" and "technical trade- 
 mark" are confused constantly, both in court opinions and in the 
 pubUc press. This confusion is natural, and arises out of the man- 
 ner in which the law of trade-marks has been developed in Enghsh 
 and American jurisprudence. 
 
 The use of marks on merchandise for the purpose of indicating 
 the maker or seller thereof has existed for many centuries. A 
 statute existed in Parma as early as 1282, which provided for the 
 placing of marks of origin upon swords and other articles. In 
 1452, a guild statute of Lubeck provided that "every crossbow 
 maker shall place his mark upon the bow of each crossbow that 
 
 373 
 
374 Tkade-Marks — General Principles 
 
 he makes, in token that he has done and. will do his work in a 
 proper manner." Marks of this sort are found even on articles 
 discovered in the niins of the ancient civilizations of the 
 'east. 
 
 To such marks as these, used to indicate commercial origin, 
 the term "trade-mark" was very early applied. It then had no 
 signification other than that it meant a mark used in trade. 
 
 Later on, the Enghsh coiirts began to protect persons using 
 such marks against competitors who copied these marks upon 
 their own goods; and the name "Trade-Mark" came to have, not 
 only this general meaning defining all commercial marks of iden- 
 tification, but acquired a technical meaning indicating such of 
 th^se marks as possessed the characteristics necessary to insure 
 their protection by the courts. 
 
 Later still, statutes were passed making possible the registra- 
 tion of marks used in trade in public offices: and the term 
 "trade-mark" was further used to indicate marks which were 
 susceptible of such registration within the meaning of these 
 statutes. 
 
 In modern times the term "technical trade-mark" has come 
 into use, in the effort to overcome this confusion and is now used 
 to define marks which are trade-marks at common law and 
 which also are susceptible of registration under trade-mark 
 statutes existiijg in the jurisdiction in which the mark is used, as 
 distinguished from mere marks of trade. 
 
 In modem times, also, the term "trade name" is widely used 
 to describe various commercial symbols. 
 
 These expressions may be defined as follows: 
 
 A "common law trade-mark" is a commercial mark which 
 may be appropriated to the use of one person imder the rules of 
 common law regardless of registration statutes. 
 
 The term " technical trade-mark" isappUed to both common- 
 law trade-marks and to marks which may be registered under the 
 trade-mark statutes, and means a pure trade-mark as distingushed 
 from various other trade symbols that lack the characteristics 
 necessary to become trade-marks. 
 
 A "trade name" is a mark used to indicate origin, yet which is 
 neither a "common-law trade-mark" nor a registrable trade- 
 mark. These names are nothing more than marks of trade that 
 consist of names instead of signs or emblems, and, further, are 
 
DBJ'iNrTiow OT A TSase-Mark 375 
 
 names that do not possess the necessary characteristics of a 
 trade-mark, but which are so used as to do service as trade-marks. 
 Trade-marks existed many years before fee first Registration 
 Act was passed- 
 
 § 186. Definitions of a Trade-Mark, — Judicial defiiHiiionsi of the 
 term "trade-mark" might be multiplied indefinitely > aad m the 
 consideration of most subjects no doubt a collection of definitionsi 
 is helpful. Unfortunately the definitions of a trade-mark found 
 in the cases include so many inconsistent statements that it is 
 questionable whether a collection of them is not harmful, rather 
 than helpful, to an imderstanding of the subject. 
 
 The difficulties which are found in reconciling the various state-' 
 ments found in the many definitions of a trade-mark which now 
 exist, are not due to the fact that the term is difficult to define, 
 for it has a very exact meaning, but rather to the loose use to 
 which it is constantly put in legal literature. 
 
 A trade-mark, legally speaking, is a definite, specific thing hav- 
 ing definite and specific elements of component parts or char- 
 acteristics, which are susceptible of little, if any, modification in 
 their application. The term "trade-mark" is popularly applied 
 to any sort of a mark, emblem or symbol used in trade, regardless 
 of whether it possesses the necessary characteristics to make it a 
 legal trade-mark or not. 
 
 A trade-mark, therefore, can be simply and accurately defined 
 by stating its necessary requisites. They are these: first, it must 
 point distinctively, either by its evident meaning or by associa- 
 tion, to the origin or ownership of the article to which it is affixed; 
 second, it must be affixed or applied to a commercial article or its 
 container; third, it must be of such a nature that it can be law- 
 fully appropriated to the use of one person, to the exclusion of 
 all others.^ 
 
 Despite the constantly growing njimber of cases involving 
 trade-marks which come before the courts, there still exists a 
 very marked confusion in trade-mark literature as to the nature 
 and characteristics of trade-marks, and there is perhaps nothing 
 which will do more to eliminate this confusion than to emphasize 
 the simple but absolutely essential requirements of a legal trade- 
 mark. In the hope of doing this, the author has intentionally 
 omitted any compilation of the definitions of the term "trade- 
 >Paul on Trade-Marks, § 22. 
 
376 Trade-Marks — General Principles 
 
 mark, " thus avoiding the confusion incident always to numerous 
 restatements of the same propositions. 
 
 "A trade-mark is an arbitrary, distinctive name, sjrmbol, or 
 device, to indicate or a,uthenticate the origin of the product to 
 which it is attached." ^ 
 
 "The purpose of the trade-mark is to get before the public, in a 
 unique and impressive manner, the goods on which the mark is 
 used, and to distinguish such goods from all other goods on the 
 market of the same class or description. It serves a two-fold pur- 
 pose, — to protect the owner from unfair competition, and the 
 public from being deceived." * 
 
 The Supreme Court of the United States thus speaks of the 
 trade-marks as they are known to our law: "The right to adopt and 
 use a symbol or a device to distinguish the goods or property made 
 or sold by the person whose mark it is, to the exclusion of use by 
 all other persons, has been long recognized by the common law 
 and the chancery courts of England and of this country. * * * 
 It is a property right for the violation of which damages may be 
 recovered in an action at law, and the continued violation of it 
 will be enjoined by a court of equity, with compensation for past 
 infringement. This exclusive right was not created by the act of 
 Congress, and does not now depend upon it for its enforcement. 
 The whole system of trade-mark property and the civil remedies 
 for its protection existed long anterior to that act (viz., Act of 
 July 8, 1870), and have remained in full force since its passage." * 
 
 The term "technical trade-mark" defines a common-law trade- 
 mark. It does not' mean a mark that has been registered, as 
 distinguished from one not registered. 
 
 § 187. Functions of a Trade-Mark.— A trade-mark is essentially 
 a stamp of authenticity of merchandise, or, as it has been called, 
 the "commercial signature" of the trader. "The trade-mark 
 brands the goods as genuine, just as the signature to a letter 
 stamps it as authentic." ^ Its primary purpose is to distLuguish, — 
 to set apart, one man's merchandise from that of another. It is a 
 
 3 G. W. Cole Co. V. American Cement Maltine Co., 30 App. Cas. (D. C.) 340- 
 
 Co., 130 Fed. 703-1904, at p. 705 (C. 3-1908. 
 
 C. A. 7th Cir.) ; Sartor v. Schaden, 125 ' Trade-Mark Cases, 100 U. S. 82-92. 
 
 Iowa, 696-700-1904, 101 N. W. 511- « Kipling v. G. P. Putnam's Sons, 
 
 513. 120 Fed. 631, 635. 
 
 * Peter Schoenhofen Brewing Co. v. 
 
Nature of a Tkade-Mark 377 
 
 pure monopoly: it must be a monopoly to effect its purpose. 
 A trade-mark, "generally speaking, means a distinctive mark of 
 authenticity, through which the products of particular manufac- 
 turers or the vendible commodities of particular merchants may 
 be distinguished from those of others." ^ 
 
 Judge Vann, of the Com-t of Appeals of the State of New York, 
 in 1891 made this simple statement: "The function of a trade- 
 mark is to point out the maker of the article to which it is at- 
 tached." It would be difficult to improve upon this definition 
 had Judge Vann used after the word maker the words "or 
 vendor." ^ 
 
 The trader adopts a mark in order that he may create a distin- 
 guishing brand or name for his goods, and as this mark is used it 
 gradually comes to identify his goods to the pm-chasing public, 
 and becomes a trade-mark. "The gist of a trade-mark is its 
 association in the public mind with a product." ^ "It must be 
 designed, as its primary object and purpose, to indicate the owner 
 or producer of the commodity, and to distinguish it from like 
 articles manufactured by others." ^° 
 
 A trade-mark is not limited in function to indicating merely 
 the owner or producer of goods and nothing more. It may at 
 the same time be a badge of quality. But it must indicate the 
 origin of the goods at least to the extent that the public considers 
 that all goods bearing that mark come from one and the same 
 person as the maker or seller thereof. 
 
 § 188. Nature of a Trade-Mark. — A trade-mark is auxiliary to 
 the good^ll of the business. It is inseparable from it, and title 
 to the trade-mark cannot be transferred apart from the business. 
 There is no such thing as a trade-mark in gross." 
 
 Whether or not a trade-mark is property has often been dis- 
 cussed.^^ The present consensus of opinion is that a right to the 
 
 ' Elgin Nat'l Watch Co. v. Illinois mark "lacks the essential characteris- 
 
 Watch Case Co., 179 U. S. 665, 673. tics which alone give it value, and 
 
 8 Waterman v. Shipman, 130 N. Y. becomes a false and deceitful designa- 
 301-11. tio'i- It is not by itself such property 
 
 9 Pfliigh V. Eagle White Lead Co., as may be transferred." 
 
 185 Fed. 769 771 . " MacMahan Pharmacol Co. v. 
 
 i" Columbia Mill Co. v. Alcorn, 150 Denver Chemical Mfg. Co., 113 Fed. 
 
 U. S., 460 at 463. 468, 475 (C. C. A., 8th Cir. 1901). 
 
 " " Dissociated from merchandise to Weston v. Ketcham, 51 How. Pr. (N.Y.) 
 
 which it properly appertains," a trade- 455; Jackson Corset Co. v. Cohen, 38 
 
378 Trade-Makks — General Principles 
 
 exclusive use of a trade-mark is property. It is well established 
 also that the association between merchandise and a name or 
 design which, in its ordinary use and meaning, is in the pubUc 
 domain is the property of the concern with which such name or 
 •design is thus commercially related in the public mind. "Com- 
 mon-law trade-marks, and the right to their exclusive use, are of 
 course to be classed among property rights." Hanover Star 
 Milling Co. v. Metcalf.^^ See discussion of this question in this 
 opinion. 
 
 The trade-mark is the expression, the symbol, of part or all of 
 the good-will of the business using the mark. A trade-mark is 
 just as necessary to the creation and development of good-will as 
 words are to the use and expression of thoughts. Separate from 
 the good-will of the business it identifies, it is useless, valueless; 
 similarly good-will separated from the trade-marks by use of 
 which the public have created it, is valueless. "Ivory Soap" 
 has a valuable good-will. But assume that the word "Ivory" 
 ceases to have any association with this soap and the good-will 
 of the makers of it is valueless so far as this brand of soap is 
 concerned. 
 
 "In its last analysis a trade-mark is a name or sign or symbol, 
 which indicates or certifies that a given article or commodity is 
 in reality what it claims or purports to be. It has no intrinsic 
 value whatever. It is merely a certificate of the truth." " It is 
 a badge of cormnercial genuineness — authenticity. 
 
 It is not necessary to the validity of a trade-mark that it be 
 invented or devised by the one using it. It even may be forced 
 upon him by public usage against his wishes. 
 
 "The ordinary trade-mark has no necessary relation to invention 
 or discovery. The trade-mark recognized by the common law 
 is generally the growth of a considerable period of use, rather than 
 a sudden invention. It is often the result of accident rather than 
 design, and when under the Act of Congress it is sought to es- 
 
 App. Cas. D. C. 482; Jaysee Corset Co. not taxable property under the statute, 
 
 {In re), 201 Fed. 779, are only a few and remarking that no ease had been 
 
 of many authorities on this point. cited in which either a trade-mark or 
 
 '^ 240 U. S. 403^13. the good will of a business had been 
 " Commonwealth v. Kentucky Dis- i treated as property for the purposes of 
 tiUeries & Warehouse Co., 132 Ky. 521 , taxation. 
 (1909), holding that a trade-mark was 
 
Essential Elements of a Technical Trade-Mark 379 
 
 tablish it by registration, neither originality, invention, discov- 
 ery, science nor art is in any way essential to the right conferred 
 by that act." " 
 
 Nor does a trade-mark confer or imply any monopoly in goods, 
 as does a patent." Its primary object is to preserve the identity — 
 the personality of merchandise, not merely the rights of him who 
 first devised it, or first used it as a badge of origin. This is clearly 
 shown by the history of many famous trade-marks. The Singer 
 Company's rights in the patents that it has owned expired with 
 the term of the patents. Anyone thereafter could use the ideas con- 
 tained in the letters patent; but no one is allowed to make free with 
 the celebrity that this company acquired under the name "Singer" 
 as a maker (not inventor) of sewing machines. ^^ The patent owner 
 is protected in his ownership of his patent as a right vested in him; 
 the trade-mark is protected, in part, at least, to shield the public 
 from imposition, confusion and deceit. 
 
 Monopoly in the use of the mark itself is necessary to protect 
 the trader against others who, by its use or simulation, may seek to 
 mislead the public, and so divert trade from the owner of the mark. 
 
 § 189. Essential Elements of a Technical Trade-Mark. — The 
 essential elements or characteristics of a technical or pure trade- 
 mark are four in number. 
 
 1. It must be a word or device that lawfully may be appro- 
 priated by the trader to distinguish his specific products, without 
 violating rights of other persons to use the mark. 
 
 2. Its main or primary function must be to indicate the origin 
 of the goods; not primarily to distinguish a particular grade, style 
 or size of the trader's product." It may incidentally indicate grade 
 or quality also, but it must be capable of distinguishing one 
 article from all others as regards origin or ownership. 
 
 " Trade-Mark Cases, 100 U. S. 82, sold in the market." Garst v. Hall 
 
 94-1879; Canal Co. v. Clark, 13 Wall. & Lyon Co., 179 Mass. 588, 591 
 
 311; Wm. J. Moxley Co. v. Braun & (1901). 
 
 Fitts Co., 93 111. App. 183. ^ i» Singer Mfg. Co. v. June Mfg. Co., 
 
 >6 "The plaintiff's trade-mark does ' 163 U. S. 169. 
 
 not give him the rights of a patentee " See Beadleston & Woerz v. Cooke 
 
 in property manufactured under a Brewing Co., 74 Fed. 229 (C. C. A. 
 
 patent. His trade-mark is to secure 7th Cir. 1896), in which, there being a 
 
 him and the public from deception common trade-mark for all grades, 
 
 and fraud as to the origin and source "Imperial" was applied to one of three 
 
 of these goods and of similar goods grades of beer. 
 
380 Trade-Makks — General Principles 
 
 3. A trade-mark must have been used to some extent on the 
 goods it is designed to identify. It is not enough to select a mark, 
 or having selected it, to advertise it. It must be used as a trade- 
 mark upon goods actually sold or offered for sale in the usual 
 course of business,'^ and it must be physically affixed to the goods 
 or to the packages containing them.'^" 
 
 4. Its use as a trade-mark must not be against public policy; 
 that is, it must not be either false or deceptive in its meaning or 
 implication, or indecent, scandalous, etc. 
 
 § 190. Non-Essentials of a Trade-Mark. — A trade-mark need 
 not be novel, ^' nor is it necessary that on its face it indicate the 
 name or identity of the proprietor, or show the origin or ownership 
 of the goods.'" 
 
 Registration is not essential to the validity of a trade-mark, 
 nor does registration make the mark registered into a trade-mark. 
 The law of trade-marks long antedates registration statutes, and 
 is a development of the common law. Certain advantages may 
 be derived from registration; but failure to register does not 
 prejudice one's common-law rights in a trade-mark.'^ 
 
 The fact that one does register what is a good common-law 
 trade-mark does not impair his common-law rights or compel 
 him to resort to the statute for protection. Registration, irre- 
 spective of the provisions of the statute, may, however, be useful 
 as evidence of intention to claim a mark as a trade-mark and of a 
 claim of title to it, and of what the registrant claimed his mark 
 consisted when he registered it. 
 
 § 191. Features of the Dress or Appearance of Goods Cannot 
 Ordinarily Become Technical Trade-Marks. — The physical fea- 
 
 ''See chapter on "Acquisition and Thomas Mfg. Co., 94 Fed. 651, 656 
 
 Manner of Use of Trade-marks." (1899) ; citing authorities to the effect 
 
 "" Waldes v. International Manu- that it is enough that the mark has 
 
 facturers' . Agency, 237 Fed. 502 acquu-ed by association an understood 
 
 (1916). reference to origin. 
 
 " "If it is new in its application to " gee Chapter I, § 3, and see Chap- 
 
 the particular merchandise in con- ter " Registration under U. S. Statute." 
 
 troversy, it may be entitled to pro- Under the peculiar wording of the 
 
 tection." Wm. J. Moxley Co. v. California statute, it was at one time 
 
 Braun & Fitts Co., 93 111. App. 183, held in that state [whittier v. Dietz, 66 
 
 186 (1900). Cal. 78, 1884) that a trade-mark must 
 
 ^0 Godillot V. Harris, 81 N. Y. 263, be filed for record to be protected, but 
 
 266 (1880); Dennison Mfg. Co. v. the statute was afterwards changed. 
 
Products to Which a Trade-Mark May Be Applied 381 
 
 tures, peculiar appearance, ornamentation of the article itself, ele- 
 ments of its dress or get-up, such as the special features of wrappers 
 or containers, labels, etc., and reproduction thereof, cannot ordi- 
 narily become technical trade-marks. Often, however, these fea- 
 tures of an article are used by many to identify it, and for this rea- 
 son it pays a rival to copy these features of a well-known article and 
 thus confuse his goods with those well-known. Acts of this sort 
 are violations of the law of unfair competition and are discussed 
 elsewhere. (See index under such headings as "Similarity" 
 "Dress" "Substitution," etc.) 
 
 § 192. Products to which a Trade-Mark may be Applied.— 
 Trade-marks may be applied not only to manufactured articles, but 
 to any thing that is sold to the public. Natural products, such 
 as mineral or spring water, ^^ fruit, vegetables and the like may be 
 identified by trade-marks. It has been held, however, that a 
 trade-mark may not be applied to a natural product that is or- 
 ganic and reproductive, such as a grape-vine. ^^ In England a 
 trade-mark applied to vegetables has been upheld. ^^ The final 
 protocol of the International Convention of 1883 for the protec- 
 tion of industrial property contains the following provision: 
 "The words Industrial Property are to be considered in their 
 widest acceptation in the sense that they apply not only to the 
 productions of industry so-called, but equally to the productions 
 of agriculture (wines, grains, fruits, cattle, etc.), and to mineral 
 productions used in commerce (mineral waters, etc.) " 
 
 § 193. Marks Indicating the Selector not Maker of Goods. — 
 Selectors as well as makers of goods may use a trade-mark. A 
 person may use a trade-mark to indicate his ability to pick out 
 goods, although all his goods are made by others. Certain 
 automobiles are sold under trade-marks by concerns that manufac- 
 ture practically nothing connected with them. A shoe dealer may 
 sell under his own brand shoes that are made entirely by another. 
 These are known in trade as ' ' private brands." He who uses such 
 
 22 Congress & Empire Spring Co. v. the name claimed as a trade-mark 
 High Rock Congress Spring Co., 45 was applied to stone from a quarry. 
 N. Y. 291 (1871); Parkland Hills B. '' Hoyt v. J. T. Lovett Co., 71 
 L. W. Co. V. Hawkins & Co., 95 Ky. Fed. 173. This case should be followed 
 502 (1894); Virginia Hot Springs Co. with caution. 
 
 V. Hegeman & Co., 138 Fed. 855 " Major Bros. v. Franklin & Son, 25 
 (1905). In John T. Dyer Quarry Co. Rep. Pat. Cases, 406-1908. 
 V. Schuylkill Stone Co., 185 Fed. 557, 
 
382 
 
 Trade-Makks — General Principles 
 
 a brand becomes sponser for the goods marked with the brand. 
 Such a person may enjoin another from the use of his brand 
 quite as fully as if he actually manufactured the goods he sells. 
 
 §194. Several Trade-Marks for the Same Goods. — Whether 
 several different marks for the same goods may be used for the pn- 
 mary purpose of pointing to the origin of the goods, and whether 
 they are so used as to accomplish that purpose with the pubUc is 
 primarily a question of fact. If they are so used they are good 
 trade-marks. There is apparent confusion in the earlier cases, ^' 
 but the broad dictum, that one may have only one mark for the 
 same goods, ^^ has been disapproved, and can no longer be con- 
 sidered as law.^' Learned Hand, J., says, — "In principle there 
 is no possible ground for refusing to recognize any number of 
 trade-marks which are really such." ^^ It is almost entirely a 
 
 25 In Albany Perforated Wrapping- 
 Paper Co. V. John Hdberg Co., 102 Fed. 
 157 (1900), it was held that several 
 trade-marks could not be used for the 
 same article. In view of the more 
 recent cases, which settle the law to 
 the effect that it is possible to have 
 more than one trade-mark for the 
 same goods, it may be enough to note 
 that, although the rule is too broadly 
 stated, the decision in this case may be 
 supported on the facts, as there seems 
 to have been a very large number of 
 names or brands used for different 
 grades and sizes of toilet paper, so 
 that the court was satisfied' that the 
 purpose of a trade-mark was not and 
 could not be attained, Jenkins, C. J., 
 saying: "A court of equity cannot be 
 impressed by an appeal to protect 
 that which produces infinite confu- 
 sion"-159. This case was aflSrmed on 
 appeal (109 Fed. 689), the Circuit 
 Court of Appeals, 7th Circuit, consid- 
 ering it to have been decided on the 
 ground that the names employed were 
 intended to distinguish sizes, shapes 
 and qualities, and not origin. But in 
 Welsbach Light Co. v. Adam, 107 Fed. 
 463, this was questioned, except as 
 
 limited to a case of confusion, in which 
 the pluraUty of marks and the circum- 
 stances of their use prevents the ac- 
 comphshment of the proper purpose of 
 a'trade-mark,namely, to indicate origin. 
 
 ^^ Candee v. Deere, 54 111. 439. 
 
 " Capewell Horse Nail Co. v. 
 Mooney, 167 Fed. 575; Independent 
 Baking Powder Co. v. Boorman, 175 
 Fed. 448; Gorham Mfg. Co. v. TFein- 
 traub, 196 Fed. 957. 
 
 "8 In Loonen v. Deitsch, 189 Fed. 
 487, 492, Hand, D. J., says: "Now, in 
 principle, there is no possible ground 
 for refusing to recognize any number 
 of trade-marks which are really 
 such. * * * If a man uses foiu- or 
 five marks together, it may be, there- 
 fore, doubtful whether as matter of 
 fact, any single one had ever got to 
 mean, his goods, but the trouble is 
 merely one oi fact, and there is no 
 reason that I can see, why if that fact 
 exists, the court should take from him 
 the means he has created of identify- 
 ing his wares. In Candee v. Deere, 54 
 111. 439, 5 Am. Rep. 125, there is talk I 
 of confusion, but that begs the ques- ' 
 tion, for if it be a true trade-mark 
 alone, there can be no confusion. Cer- 
 
Must Be Affixed to Goods 383 
 
 question of the extent and character of the use to which the 
 name is put. 
 
 There may be different trade-marks for different grades of 
 the same product, provided they are so used as distinctly to 
 indicate origin as well as grade. It does not vitiate a trade- 
 mark, to show that it indicates grade or quality in addition to 
 origin.^^ 
 
 § 195. Must be Affixed to Goods. — It has always been held to 
 be an essential element of a technical trade-mark that it should be 
 in some manner physically affixed or attached to a marketable pro- 
 duct or its container,'" and the rule is that a trade-mark is 
 only valid when attached to the article or wrapper, or in some 
 manner physically connected with the article itself.'^ This is 
 inherent in the very idea of a trade-mark. To hold otherwise 
 would be a contradiction of terms. The use of a trade-mark, 
 apart from the goods it identifies, is not using the mark in a 
 purely trade-mark sense but rather as a trade-name. 
 
 The use of a. name, not on the goods, but merely as a sign 
 placed on a building or in a shop will not make the name a 
 trade-mark.'^ It is not enough to place loosely upon the goods 
 exhibited for sale, a card bearing the name or words claimed as 
 a trade-mark.'' 
 
 tainly if the public has solved that tion, may serve the purpose of a 
 
 difficulty of more than one mark, the trade-mark, as well as a device in- 
 
 court becomes officious in forbidding vented or arbitrarily selected. So a 
 
 the maker from continuing to use what person may have different symbols for 
 
 the public already understands." different grades of goods, which, in 
 
 ^ Dixie Cotton Felt Mattress Co. v. the same way, will indicate both 
 
 Stearns & Foster Co., 185 Fed. 431 quaUty and origin with respect to the 
 
 ("Lenox," "Windsor," "Anchor,'' for goods so marked. " 
 
 different grades of mattress); Cape- '"'Diederich v. W. Schneider Whoksale 
 
 well Horse Nail Co. v. Mooney, 167 W. & L. Co., 195 Fed. 35 (C. C. A. 
 
 Fed. 575 (different grades of horse 8th Cir. 1912). 
 
 shoe nails), the court saying: "It is '^ Hazelton Boiler Co. v. Hazelton 
 
 immaterial that the mark indicates Tripod Boiler Co., 142 111. 494; Oakes 
 
 grade as well as origin, and is also v. St. Louis Candy Co., 146 Mo. 391. 
 
 ornamental, if the primary purpose of '=> Oakes v. St. Louis Coudy Co., 146 
 
 adoption and use was to indicate Mo. 391; Covert v. Bernat, 156 Mo. 
 
 origin "-586. American Leather Button App. 687 (sign placed over or in front 
 
 Co. V. Anthony, 15 R. I. 338: "Within of place of business not a trade-mark; 
 
 limits which are well defined, a com- protected, if at all, as a trade-name, 
 
 bination of letters or figures, arranged " Oakes v. St. Louis Candy Co., 146 
 
 for convenience or to attract atten- Mo, 391 (1898). 
 
384 Trade-Mabks — General Principles 
 
 The mark may be impressed upon the product. A check or 
 figure of a particular pattern impressed on the under side of a nail 
 head which was intended to indicate the manufacturer, and to be a 
 trade-mark has been held to be a pure or technical trade-mark.'^ 
 It was so held in spite of the fact that a check pattern of 
 some kind, producing a gripping surface, might be a necessary or 
 useful incident in the process of manufacture. This case has 
 been followed and approved.'^ 
 
 Neither the product itself, nor an integral part of it, can 
 serve as a technical trade-mark,'^ although a watermark, or a 
 design blown into a bottle, or woven into cloth may be protected 
 as a trade-mark if it possesses the other necessary characteristics. 
 It has been held that an uncopyrighted picture postcard could 
 not be a trade-mark, and the exact reproduction of such cards 
 by a competitor was not restrained.'^ "Merrie Christmas" 
 woven into ribbon tape at intervals, and adding to the value of the 
 product (intended for tying Christmas packages), was held not to 
 be a good trade-mark.'^ It has been repeatedly held that col- 
 ored checks in cord, formed by using one strand of a particular 
 color, cannot be a trade-mark.'^ 
 
 § 196. The Use of a Sign or Word as a Trade-Mark Must Not 
 be Against Public Policy. — The provision of the United States 
 statute excluding from registration marks that are scandalous or 
 immoral in their purport, corresponds to the common-law rule. 
 A trade-mark must not convey a false or deceptive mean- 
 ing. Marks that in their meaning or implication are false or de- 
 ceptive are not good trade-marks, and will not be protected. For 
 example, "Syrup of Figs" (for a laxative medicine which con- 
 tained practically no ingredient of figs) was refused protection 
 
 '*CapeweU Horse Nail Co. v. Cordage Mills, 193 Fed. 274; see, 
 
 Mooney, 167 Fed. 575, aff'd 172 Fed. also, 194 Fed. 573 (explaining the 
 
 826. distinction between this case and one 
 
 " Capewell Horse Nail Co. v. Green, in which the mark is impressed upon 
 
 182 Fed. 404; aff'd 188 Fed. 20. the product, but is not a functional or 
 
 '"See Samson Cordage Works v. integral part of it). In the same case 
 
 Puritan Cordage Mills, 211 Fed. 603, on appeal, 211 Fed. 603 (C. C. A., 6th 
 
 (C. C. A., 6th Cir. 1914). Cir. 1914), the ruling as to the ques- 
 
 " Bamforth v. Douglass P. C. & M. tion of strict trade-mark was affirmed, 
 
 Co., 158 Fed. 355. but unfair competition was found in 
 
 «8 Smith V. Krause, 160 Fed. 270. the similarity of visual appearance, 
 
 " Samson Cordage Works v. Puritan 
 
Tkadb-Maek Must not be Against Public Policy 385 
 
 because deceptive.^" "Old Country Soap" (where the soap was 
 manufactured in the United States)." "Half Spanish" for cigars 
 (where the tobacco was not half Spanish) ; ^^ " Gold Medal " (where 
 no medal had been obtained) ; ^' "East Indian" applied to a medi- 
 cine (where the remedy was made in the United States) ; " "Fruit 
 Vinegar" (where the vinegar was not made from fruit) ; *^ "Pepper 
 Whiskey" used in connection with a liquor (which was in fact a 
 mixture of Pepper whiskey and other whiskeys); ^* "Bromo Qui- 
 nine" for medicine (containing no bromides) ; *' are illustrations of 
 this rule. 
 
 "Red Cross" has been held not to be deceptive, as it is not re- 
 garded as necessarily implying any relation to the society of that 
 name.^ 
 
 That the name of the manufacturer included in the trade-mark 
 is inaccurately given, is not necessarily an objection to the valid- 
 ity of the trade-mark.*^ 
 
 The general subject of the effect of misrepresentations, in con- 
 nection with trade-marks, labels, advertising matter and the like, 
 is considered under the heading of " Defenses," the well-established 
 rule being that, even if the trade-mark itself is not deceptive, a 
 court of equity will refuse relief to a suitor who has deceived the 
 
 " Warden v. Cal. Fig Syrup Co., 187 But under the U. S. Act of 1905 the 
 
 U. S. 516. It is true, however, that red cross cannot be used for a regis- 
 
 this is not clearly a technical trade- tered mark (unless by prescriptive 
 
 liiark case. It is one illustration of right under the ten-year clause), 
 
 the dilemma of a mark (or name) *^ Dale v. Smithson, 12 Abb. Pr. 237 
 
 being either descriptive or deceptive. (N. Y. Com. Pleas, 1861). In this 
 
 " Allan B. Wrisley Co. v. Iowa Soap case the name of the manufacturer was 
 
 Co., 104 Fed. 548 (C. C. Iowa, 1900). only in part correct, but there w^s not 
 
 *'T.M. Kildow Cigar Co. v. George B. deemed to be any attempt to deceive, 
 
 Sprague Cigar Co., 35 App. Cas. D. C. nor actual deception of, the public. In 
 
 345 (1910), (denying registration under a still earUer case, Stewart v. Smithson, 
 
 Federal statute) . 1 Hilt. 1 19 (N. Y. Com. Pleas, 1856) , it 
 
 " Taylor v. GiUies, 5 Daly, 285 was held that it was no defense to a 
 
 (affd. 59 N. Y. 331). suit to restrain infringement of a 
 
 " Connell v. Reed, 128 Mass. 477. trade-mark, that it contained an en- 
 
 *^Alden v. Gross, 25 Mo. App. tirely incorrect representation as to 
 
 123. the manufacturer and the place of 
 
 *'Krams v. Peebles' Sons Co., 58 manufacture, and that it described the 
 
 Fed. 585. goods as "patent thread," although 
 
 " Paris Medicine Co. v. Hill Co., 102 not patented in fact. This. case, how- 
 Fed. 148. ever, can hardly be considered au- 
 
 *' Loonen v. Deitsch, 189 Fed. 487. thoritative at the present time. 
 
386 Tkadb-Marks — General Principles 
 
 public in building up his trade, and who therefore does not come 
 into court with clean hands. 
 
 A trade-mark must be consistently applied and used in good 
 faith. For example, if a mark is used only when the goods are 
 sold at a reduced price to meet competition, when marketed at 
 higher prices such use of the mark will not be protected,* the 
 same goods being sold under different marks. 
 
 §197. Various Classifications of Trade-Marks. — The most 
 obvious division of trade-marks is that indicated, for example, 
 in Hier v. Abrahams, 82 N. Y. 519, 523, namely, (a) pictures or 
 symbols, and (b) words. The following is suggested as a fuller 
 and fairly serviceable classification: 
 
 1. Pictures, devices or emblems. 
 
 2. Words (either one word or a combination of words). 
 
 (a) Personal names. 
 
 (b) Common words of the language (including geograph- 
 
 ical, historical and other names) appUed in a special 
 and arbitrary sense. 
 
 (c) Artificial or invented words: (either meaningless when 
 
 adopted, or at best suggestive of some character- 
 istic of the goods). 
 
 3. Letters of the alphabet and numerals. 
 
 4. Pictures or devices in combination with a word or 
 
 words: (including words written in a peculiar script or 
 design). 
 
 The above classification is intended to apply to common law 
 rules rather than to the rules governing registration under the 
 statutes. 
 
 § 198. Distinction Between Trade-Marks and Trade-Names. — 
 These terms to a certain extent overlap. One distinction is that 
 a trade-mark "is applicable only to a vendible article of merchan- 
 dise to which it is affixed," while "a trade-name relates to a busi- 
 ness and its good will rather than a vendible commodity."^^ 
 
 "Trade-name" has, however, a somewhat broader meaning 
 than this, although it is not really capable of exact definition. It 
 includes, in general, names which perform the functions of 
 trade-marks, but which are not susceptible of being set apart to 
 the exclusive use of one concern. A trade-mark is always used 
 
 »» Independent Baking Powder^ Co. v. ^^ Ball v. Broadway Bazaar, 194 
 Boorman, 175 Fed. 448. N. Y. 429, 434-35. 
 
Trade-Mabks and Trade-Names 387 
 
 •to mark and distinguish the goods themselves and must be at- 
 tached to them; while a trade-name need not be, and often is not, 
 so used and attached, but is used to distinguish not only the goods 
 but the concern selling the goods, its place of business and the 
 like; and is used not only on the goods, but in advertising and in 
 other ways apart from the goods. 
 
 Actions brought against the infringer of a trade-mark or a trade- 
 name both rest upon the same principle, which is that no man has 
 a right to pass off his goods upon the public as and for the goods 
 of another. "Inasmuch as the testimony shows unfair competi- 
 tion, which entitled them (plaintiffs) to an injxmction, it is deemed 
 unnecessary to discuss the distinctions which seem to differen- 
 tiate this case from one of trade-mark, pure and simple — the 
 foundation principle upon which relief is granted being substan- 
 tially the same and the Uke remedy invoked." *^ 
 
 Again, "An infringement of such trade-mark consists in the use 
 of the genuine upon substituted goods, or of an exact copy or 
 reproduction of the genuine, or in the use of an imitation in which 
 the difference is colorable only, and the resemblance avails to mis- 
 lead so that the goods to which the spurious trade-mark is affixed 
 are likely to be mistaken for the genuine product; and this upon 
 the ground that the trade-mark adopted by one is the exclusive 
 property of its proprietor, and such use of the genuine, or of such 
 imitation of it, is an invasion of his right of property. Unfair 
 competition is distinguishable from the infrmgement of a trade- 
 mark in this: that it does not involve necessarily the question of 
 the exclusive right of another to the use of the name, symbol, 
 or device. A word may be purely generic or descriptive, and so 
 not capable of becoming an arbitrary trade-mark, and yet there 
 may be an unfair use of such word or symbol which will constitute 
 imfair competition. Thus a proper or geographical name is not 
 the subject of a trade-mark, but may be so used by another un- 
 fairly, producing confusion of goods, and so come under the con- 
 demnation of unfau- trade, and its use will be enjoined. The right 
 to the use of an arbitrary name or device as indicia of origin is 
 protected upon the ground of a legal right to its use by the person 
 appropriating it." " 
 
 52 Scriven, v. North, 134 Fed. 366- " G. W. Cok Co. v. American Cement 
 80-1904 (C. C. A., 4th Cir.), 67 C. C. Co., 130 Fed. 703-1904, at p. 705 (C. C. 
 A. 348-362. A. 7th Cir.). 
 
388 Tkade-Makks — General Principles 
 
 Radical distinctions have been made by various courts be- 
 tween pure trade-mark cases and cases under the general rules 
 of unfair competition. It has been said that a trade-mark is 
 protected on the ground of property right, while relief in other 
 cases of unfair competition is based upon fraud; and upon this 
 supposed distinction, important differences between the two 
 classes of cases, as to proof and remedy, have been built up." 
 We believe distinctions of this sort will in time be abandoned and 
 in both classes of cases courts will compensate the plaintiff by an 
 award of damages against the defendant because he has com- 
 mitted a tort. The difficulty in the way of doing this is the rule of 
 equity that no damages are awarded by that court, such rehef 
 being a prerogative of the law courts only. 
 
 From the beginning, however, it has been recognized that, if a 
 trade-mark is property, it is property of a pecuUar kind, and that 
 it is subservient to the good-will of the business. The gist of the 
 wrong is a tort, viz., the deception of purchasers by means of 
 the use or simulation of another's mark, and the consequent 
 diversion of his trade. Thus, in the first leading case on trade- 
 marks in the U. S. Supreme Court, Canal Co. v. Clark, 13 Wall. 
 311,itissaid: "* * * in all cases where rights to the exclusive 
 use of a trade-mark are invaded, it is invariably held that the 
 essence of the wrong consists in the sale of the goods of one manu- 
 facturer or vendor as those of another, and that it is only when 
 this false representation is directly or indirectly made that the 
 party who appeals to a court of equity can have relief." " 
 
 "It is the business which is to be protected, not the trade-mark 
 as a mere collocation of words or symbols." ^^ 
 
 " Gray, C. J., in Sharphss Co. v. of a property right, but of a tort com- 
 
 Lawrence, 213 Fed. 423, 426 (C. C. A., mitted by the defendant, in that his 
 
 3d Cir. 1914), said: "In theory, a conduct has been unlawful by reason 
 
 technical trade-mark, Uke a patent of the consequential injury to the 
 
 right, is a species of property, and plaintiff." 
 
 when it is invaded or appropriated, the " See, also, Metcaif v. Hanover Star 
 
 owner thereof is entitled, not only to Milling Co., 204 Fed. 211; Italian 
 
 protection from further trespass, but, Sviiss Colony v. Italian Vineyard Co., 
 
 to the recovery of the profits issuing 158 Cal. 252, 110 Pac. 913; Northr 
 
 therefrom, as incident to and a part of western Knitting Co. v. Garon, 112 
 
 his property right. In suits for unfair Minn. 321, 128 N. W. 288. 
 
 competition, on the other hand, the ^e Thomas G. Carroll & Son Co. v. 
 
 complaint is not of an appropriation Mcllvaine & Baldwin, 171 Fed. at 129. 
 
DiFFEEENCE OF DeGREE AND MeTHOD OF PrOOF 389 
 
 "It is to be regretted, that sharp distinction was ever drawn 
 between that trespass on property rights called trade-mark in- 
 fringement, and the exactly similar trespass commonly spoken of 
 as unfair competition." " 
 
 In Cohen v. Nagle,^ the com-t by Loring, J., after remarking 
 that a difference of opinion exists as to whether there is a right 
 of property in words used as a trade-mark or trade-name (e. g., 
 "Keystone" cigars), says: "But whether it is or is not correct to 
 say that such a plaintiff has property in such a word is not of 
 consequence. If he has a right of property in such a word, this 
 right of property results from his right to prevent others from us- 
 ing it. His right to prevent others from using it does not result 
 from his property in it." 
 
 § 199. Difference Between Trade-Marks and Trade-Names 
 not one of Underlying Principle, but of Degree and Method of 
 Proof. — ■ The discussion of this subject in the following cases would 
 seem to represent the soimder modern theory and the prevailing 
 trend of opinion. The view taken by these courts is to be found in 
 the statement, contained in the opinion in the last mentioned case 
 that the differences between "trade-mark" and "unfair competi- 
 tion" cases relate "not to the underlying principle but to the 
 methods and degrees of proof required to enforce the principle." 
 
 "The entire substantive law of trade-marks (excepting statutory 
 provisions and construction) is a branch of the broader law of 
 unfair competition. The ultimate offence always is that de- 
 fendant has passed off his goods as and for those of the complain- 
 ant. Capewell Horse Nail Co. v. Mooney, (C. C. A. 2,) 172 Fed. 826, 
 97 C. C. A. 248; Elgin, etc., Co', v. Illinois Watch Co., 179 U. S. 
 665, 674, 21 Sup. Ct., 270, 45 L. Ed., 365. More or less confusion 
 has arisen because it happened that the specific offense and the 
 specific rule were recognized and a body of law grew up concern- 
 ing the same before the broader and inclusive offense was recog- 
 nized and defined; but this does not prevent proper classification 
 after both are understood. * * * Not so, regarding a trade- 
 mark and the right to protection against unfair competition; 
 these rights are only incidental to an existing business; they can- 
 not be independently injured or suffer damages; they do not 
 
 " Thaddms Davids Co. v. Davids, 190 '' 190 Mass. 4-18. 
 Fed. 285-287, Southern Dist. N. Y., 
 Hough, J. 
 
390 Teade-Marks — General Principles 
 
 create any monopoly in the article itseK; there can be no damage 
 in connection with violation of these rights, except as there is 
 injury to the business and good-will." ^' 
 
 "* * * The question whether or not a trade-mark is 
 property has often been mooted. Lord Langdale, in Perry v. 
 Truefitt, 6 Beav. 73: 'I own it does not seem to me that a 
 man can acquire a property merely in a name or mark.' Vice- 
 Chancellor Sir W. Page Wood, in Collins Co. v. Brown, 3 K. & J, 
 423: 'It is now settled law that there is no property whatever in a 
 trade-mark.' Lord Herschell, in Reddaway v. Banham, A. C. 
 (1896), 199: 'I doubt myself whether it is accurate to speak of 
 there being property in a trade-mark.' On the other hand, the 
 books are full of cases in which by impUcation or direct statement 
 it is declared that trade-marks are property. But the dispute is 
 only apparent; the minds of the various courts are found to be in 
 accord when the basis of the cause of action and the reason for 
 granting injunctive relief are considered." ^ 
 
 It is believed that the true basis of actions for unfair competition 
 as well as for infringement of a trade-mark is that of tort. The fact 
 that this tort does not fit exactly any of the estabUshed definitions 
 does not challenge the legahty of the cause of action. It 
 is a proof that equity courts of to-day are able and willing to 
 enforce the observance of the standards of fairness which prevail 
 in the community. 
 
 ™ G. & C. Merriam Co. v. Saalfield, «> Hanover Star Milling Co. v. Allen 
 198 Fed. 369, at 372-3; 376, C. G. A., & Wheeler Co., 208 Fed. 513-515; G. G. 
 6th Cir., Dennison, J. A., 7th Gir:, by Baker, G. J. 
 
CHAPTER XIV 
 
 What May be Appropriated as a Trade-Mark 
 
 Section 200. The general principle. 
 
 201. Descriptive words not appropriable. 
 
 202. Invented or fanciful words. 
 
 203. Common words used in an arbitrary sense. 
 
 204. Words indicating quality, superiority, etc. 
 
 205. Geographical or place names. 
 
 206. Personal or family names. 
 
 207. Names of patented articles. 
 
 208. Foreign words: 
 
 209. Letters of the alphabet. 
 
 210. Nimierals. 
 
 § 200. The General Principle. — Since the ofRce of a trade-mark 
 is to identify or authenticate the goods as made or sold by a par- 
 ticular trader, it must, for that purpose, possess distinctiveness. 
 It need not necessarily be inherent in the word or mark, but 
 may have been acquired by association. A trader cannot appro- 
 priate to his exclusive use words or symbols which (in the appli- 
 cation he is to make of them) are public property. The right 
 of others to use descriptive words in their ordinary and usual 
 meaning must not be restricted. No sign or form of words may be 
 appropriated as a valid trade-mark, for use in its primary meaning 
 which, from the natiu-e of the fact conveyed by that primary 
 meardng, others may employ with equal truth, and with equal 
 right, for the same purpose.^ 
 
 One caimot, therefore, take as a trade-mark for use in its or- 
 dinary and usual meaning "a generic name, or a name merely de- 
 scriptive of an article of trade, of its qualities, ingredients or 
 characteristics." ^ The general principle is clear, but its applica- 
 tion presents questions of difficulty, and the numerous decisions 
 of the courts are not always harmonious. For convenience of 
 
 » This is a slight modification of the quoted in Canai Co. v. Clark, 13 Wall, 
 language used by Judge Duer in the at 323, and elsewhere, 
 early and leading case of Amoskeag ' Canal Co. v. Clark, 13 Wall. 
 Mfg. Co. V. Spear, 2 Sandf. 599, and 311. 
 
 391 
 
392 What May be Appropriated as a Trade-Mark 
 
 treatment, the cases are classified under several heads in this 
 chapter; but the principle controlling throughout is as above 
 stated. 
 
 § 201. Descriptive Words not Appropriable. — Words that de- 
 SOTibe the goods or some feature of them are not available for 
 trade-marks. Such words in trade-mark law are termed "de- 
 scriptive." It is often difficult to draw the line between words that 
 are thus descriptive to such a degree that they may not be appro- 
 priated by a particular trader, and those that, although they may 
 be considered to possess some element of description, are still 
 sufficiently arbitrary or fanciful to be appropriable as trade-marks 
 despite the general right of others to use them in describing or 
 designating their goods. Words of this latter kind in trade-mark 
 law, are called "suggestive." This term aptly indicates the 
 distinction between such words and those that are more definitely 
 descriptive. To be condemned as "descriptive," a word need not 
 be clear or accurate in its description; nor on the other hand, to 
 be approved as valid in this respect, is it necessary that a word 
 should be utterly devoid of aptitude or meaning. It is enough 
 that it leaves open to every one all meanings of the word which 
 are really needed for public use as descriptive of quality or char- 
 acter. 
 
 To illustrate this principle the following instances are given of 
 words that have been held to be descriptive and not open to ex- 
 clusive appropriation: 
 
 "Ruberoid" (for roofing material).' 
 
 "Toothache Gum" (for a viscous substance to be used as a cure 
 for toothache).* 
 
 "Crystallized Egg" (preserved by a secret process).^ 
 
 "Almninum" (for an article partly composed of almninum).* 
 
 "Brilliant" (for flour; to distinguish bright from darker flour) .^ 
 
 "Computing" (scales).^ 
 
 "Elastic Seam" (for drawers).' 
 
 ' Standard Paint Co. v. Trinidad ' Computing Scale Co. v. Standard 
 
 Asphalt Co., 220 U. S. 446. Computing Scale Co., 118 Fed. 965. 
 
 « Devlin v. McLeod, 135 Fed. 164. « Eice-Stix Dry Goods Co. v. J. A. 
 
 6 Lamont v. Leedy, 88 Fed. 72. Scriven Co., 165 Fed. 639 (C. C. A.); 
 
 « American Washboard Co. v. Sagi- Newcomer & Lewis v. Scriven Co., 168 
 
 naw Mfg. Co. (C. C. A.), 103 Fed. 281. Fed. 621; Scriven v. North, 124 Fed. 
 
 ' Saiws Milling Co. v. Kehlor Flour 894, 134 Fed. 366 (C. C. A.). 
 Mills Co., 39 App. D. C. 535. 
 
Descriptive words not Appropriable 393 
 
 "Flare Front" (for automobile lamps).'" 
 
 "Inter-phone" (for telephone switching apparatus)." 
 
 "Keepclean" (for brushes).'^ 
 
 "No Wash Up (lithographing plates, etc.).'^ 
 
 "Thermogene" (for medicated cotton wadding)." 
 
 "Dridip" (for powder used to destroy vermin on animals).*^ 
 
 "The Velvet Kind" (for ice-cream).'^ 
 
 "Roof Leak" (for roof paint). '^ 
 
 "Rubberset" (for brushes).'^ 
 
 "Faultless" (for bread)." 
 
 "C. & C." (for capsules). 2» 
 
 "Security" (for automobile tire tread). ^' 
 
 "Vacuum Cup" (for automobile tires). ^^ 
 
 "Oil of Pine" (for medicine).^' 
 
 "Spearmint" (for chewing gum).^* 
 
 "Rubberset" (for brushes). ^^ 
 
 The following words on the other hand, are examples that have 
 been held to be "suggestive" rather than descriptive and there- 
 fore are valid trade-marks: 
 
 "No-To-Bac" (medicine to cure tobacco habit). ^^ 
 
 "Cedarine" (for furniture poUsh)." 
 
 " Rushmore v. Manhattan Screw & " Temple v. Gordon, 159 Pac. 983. 
 
 Stamping Works, 163 Fed. 939 (C. C. ^Planten v. Gedney, 221 Fed. 281. 
 
 A.). " Buffalo Rubber Mfg. Co. v. Batavia 
 
 " In re Western Electric Co., 39 Rubber Co., 153 N. Y. Supp. 779. 
 
 App. D. C. 420. ^' Pennsylvania Rubber Co. v. Dread- 
 
 ^' Florence Mfg. Co. v. Dowd, 171 naught Tire & Rubber Co., 225 Fed. 
 
 Fed. 122; id., 178 Fed. 73 (C. C. A.). 138. 
 
 " Ault & W. Co. V. Cheshire, 191 " Leach v. Scarff, 188 Fed. 446. 
 
 Fed. 741. '* Wm. Wrigley, Jr., Co. v. Grove 
 
 » The Thermogene Co., Ltd., v. The Co., 161 Fed. 885; Same v. Same, 183 
 
 Thermogine Co., Inc., 234 Fed. 69 Fed. 99 (C. C. A. 2d Cir.). See Wm. 
 
 (C. C. A.). Wrigley, Jr., Co. v. L. P. Larson, Jr., 
 
 " Ungles-Hoggette Mfg. Co. v. Farm- Co., 195 Fed. 568, simulation of dress 
 
 ers' Hog & Cattle Povxler Co., 232 Fed. in connection with use of "Pepto- 
 
 116. mint." 
 
 >• Chapin-Sachs Mfg. Co. v. Hendler " RiAber & Celluloid H. T. Co. v. 
 
 Creamery Co., 231 Fed. 550. Rubber Bound Brush Co., 81 N. J. 
 
 " Sears, Roebuck & Co. v. Elliott Eq. 419; aff'd id. 519, 88 Atl. 210. 
 
 Varnish Co., 232 Fed. 588. '" Sterling Remedy Co. v. Eureka C. 
 
 18 Rubber & Celluloid Harness Trim- & M. Co., 80 Fed. 105. 
 
 witnff Co. V. F. W. Devoe & C. T. "Allen v. Walker & Gibson, 235 
 
 Raynolds Co., 233 Fed. 150. Fed. 230. 
 
394 What May be Appropriated as a Trade-Mark 
 
 "Teller" (for recording safes). ^ 
 
 "Ideal" (for brushes).^^ 
 
 "Wearever" (for cooking utensils),^" 
 
 "Aldemy" (oleomargarine).*^ 
 
 "Elastic" (bookcases, etc.).'^ 
 
 "Saponifier" (concentrated lye).^* 
 
 "Hygeia" (distilled water).^^ 
 
 ' ' Carroms " (for a game) .^^ 
 
 "Celery Compound" (for beverage).^^ 
 
 "Sunshine" (for stoves). ^l 
 
 "Virgin Leaf" (for tobacco).** 
 
 "Abricotine" (liquexir).*^ 
 
 "Coca-Cola" (drink)."" 
 
 "Holeproof" (hosiery)." 
 
 "Pepto-Mangan" (medicine)."^ 
 
 "Bromo-Caffeine" (medicine)."* 
 
 "Anti-washboard" (soap)."" 
 
 "Cough Cherries" (medicated confection)."^ 
 
 28 Automatic Recording Safe Co. v. 
 Bankers Registering Safe Co., 224 Fed. 
 506. 
 
 ^^ Hughes v. Alfred H. Smith Co., 
 209 Fed. 37. 
 
 "> Aluminum Cooking Utensil Co. v. 
 National Aluminum Works, 226 Fed. 
 815. 
 
 ^^Lauferty v. Wheeler, 11 Abbott's 
 N. C. 220. 
 
 " Globe-Wemicke Co. v. Brown, 121 
 Fed. 185. 
 
 ^^Pennsylvania Salt Mfg. Co. v. 
 Myers, 79 Fed. 87. 
 
 ^^ Consolidated Ice Co. v. Hygeia 
 Distilled Water Co., 151 Fed. 10 (C. 
 C. A.). 
 
 '* Ludingtori Novelty Co. v. Leonard, 
 127 Fed. 155, affg. 119 Fed. 937 (which 
 see) and see Williams v. Mitchell, 106 
 Fed. 168. 
 
 8« Wells & Richardson Co. v. Siegel, 
 Cooper & Co., 106 Fed. 77 (C. C. lU. 
 1900). 
 
 "Reading Stove Works v. S. M. 
 
 Howes Co., 201 Mass. 437, 87 N. E. 
 751. 
 
 ™ American Tohaeoo Co. v. Polacsek, 
 170 Fed. 117 (1909). 
 
 ^' Gamier v. Rossman, 195 Fed. 175; 
 Rossman v. Gamier, 211 Fed. 401. 
 
 ^ CocorCola Co. V. Nashville Syrup 
 Co., 200 Fed. 153; CocorCola Co. v. 
 American Druggists' Syndicate, 200 
 Fed. 107. See also Coca-Cola Co. v. 
 Koke Company of America, 6 Trade- 
 Mark Rep. 349; Coca-Cola Co. v. 
 Nashville Syrup Co., 215 Fed. 527. 
 
 *' Holeproof Hosiery Co. v. WaUach 
 Bros., 167 Fed. 373, affd., S. C, 172 
 Fed. 859 (C. C. A.), final hearing, 190 
 Fed. 606. 
 
 " M. J. Breitenbach Co. v. Spang- 
 enberg, 131 Fed. 160. 
 
 *' Keasbey v. Brooklyn Chemical 
 Works, 142 N. Y. 467. 
 
 " O'Rourke v. Central City Soap Co., 
 26 Fed. 576. 
 
 *^Stoughton v. Tf^oodard, 39 Fed. 
 902 (words "not properly merely de- 
 
Desckiptive Words not Appropriable 395 
 
 "Lightning" (hay knives)/^ 
 
 "Fibre Chamois" (fabric, somewhat resembUng chamois 
 leather, for interlining dresses).^' 
 
 "Shced Animals" (a game or puzzle).'*^ 
 
 "Insm-ance Oil" (illmninating oil).^' 
 
 "Red Cross" (tooth brushes).^" 
 
 "Magnetic Balm" (medicine). ^^ 
 
 "Vkgin Leaf" (tobacco)." 
 
 It will be apparent from these illustrations that no hard and 
 fast line can be drawn between the two classes of words. It is 
 desirable, however, to formulate some general rule to serve as a 
 test of descriptiveness in the sense above indicated. It was said 
 in a New York case that, to condemn a term as descriptive, 
 "its description must import information as to the general char- 
 acteristics and composition of the article to which it applies." ^* 
 
 A better practical test would perhaps be (using language of 
 Rapallo, J.,^*) to inqiiire whether the giving to the plaintiff of the 
 right to use the name as his trade-mark in any way "restricts 
 others from properly describing similar articles produced by them." 
 Or, as expressed in an early leading case: ^^ — A trader "has no 
 right to appropriate a sign or symbol which, from the nature of 
 the fact it is used to signify, others may employ with equal truth, 
 and therefore have an equal right to employ for the same purpose." 
 "Hygieniques" as applied to suspenders was held not descrip- 
 
 Bcriptive of the qualities of the thing association of ideas, suggest the notion 
 
 manufactured and sold, .but are to a of safety, it is not synonymous with 
 
 large extent arbitrary or fanciful"). safe, nor can it be said to describe any 
 
 " Hiram Holt Co. v. Wadsw<rrth, 41 possible quality of oil, * * * but 
 
 Fed. 34. 'insurance oil' is itself meaningless 
 
 "American Fibre Chamois Co. v. * * *". 
 
 De Lee, 67 Fed. 329 ("If said words, as «" Loonen v. Deitsch, 189 Fed. 487. 
 
 here combined, have any sense, as " Smith v. Sixbury, 25 B.mi,2S2. 
 
 descriptive of the class of goods in ^^ American Tobacco Co. v. Palacsek, 
 
 question, it is not so pronounced, ob- 170 Fed. 117 (name not considered 
 
 vious and usual as to make said com- equivalent to Virginia), 
 
 bined words unfit, inappropriate or ^' Stern v. Barrett Chemical Co., 29 
 
 misleading as a name, sign or mark of Misc. (N. Y.) 609, citing several N. Y. 
 
 origin," etc.). cases and sustaining "Roachsault" as 
 
 48 Selchow V. Baker, 93 N. Y. 59. a good trade-mark. 
 
 « Insurance Oil Tank Co. v. ScoU, 33 '^ Selchow v. Baker, 93 N. Y. 59, 64. 
 
 La. Ann. 946, 1881, "While the word '■^ Amoskeag Mfg. Co. v. Spear, 
 
 'insurance' may, by some process of 2 Sandf. 599. 
 
396 What May be Appropriated as a Trade-Mark 
 
 tive in such a sense as to prevent its appropriation, as, for example 
 the word "elastic" would be. " Hygieniques," Barrett, J., says, 
 "is suggestive of the good quality of the suspenders and of its 
 usefulness; but it does not directly characterize the article, nor 
 the methods which tend to make it healthful. At the outside, 
 such word is descriptive only in a modified or indirect sense, and 
 it does not monopolize a part of the language essential or appro- 
 priate to describe the article, it may become the subject of a 
 valid trade-mark. Words which are but inferentially or remotely 
 descriptive, indicating neither origin nor ownership, but merely 
 some special quality or peculiarity of the article itself, may prop- 
 erly be regarded as fanciful or arbitrary in the legal sense." '* 
 Other examples of words not appropriable as trade-marks are 
 given in the note.^' 
 
 § 202. Invented or Fanciful Words. — In most cases there is no 
 question about words invented for the sole purpose of use as 
 trade-marks, being good trade-marks. It is not necessary that 
 such words should be wholly arbitrary or contain no suggestion of 
 any meaning. Here again the line of demarcation is not always 
 easy to draw. The following are examples of words that have been 
 sustained as trade-marks, and classified as invented or fanciful 
 words: 
 
 ^» Bailly v. Nashawannuck Mfg. Co., hops), American Brewing Co. v. Bien- 
 
 10 N. Y. Supp. 224. mUe Brewery, 153 Fed. 615; "Non-fluid 
 
 " Words held descriptive, and not Oil," N. Y. & N. J. Lubricant Co. v. 
 
 available as strict trade-marks: 0. W. Young, etc., 77 N. J. Eq. 321; 
 
 "French Tissue" (dressing for "Gold Medal" (saleratus), Taylor v. 
 
 corns), Draper v. Skerrett, 116 Fed. Gillies, 59 N. Y. 331 (condemned as 
 
 206; "Steel-shod" (shoes), Brennan v. descriptive if the product had been 
 
 Emery-Bird-Thayer D. G. Co., 108 awarded a gold medal, and as decep- 
 
 Fed. 624 (C. C. A.); "Elastic Seam" tive if it had not); "Indurated Fibre" 
 
 (drawers), Rice-Stix Dry Goods Co. v. (wood pulp wares), Indurated Fibre 
 
 J. A. Striven Co., 165 Fed. 639 (C. C. Co. v. AvMskeag Indurated F. W. Co., 
 
 A.); "Keepclean" (tooth brushes), 37 Fed. 695 (1889); (words said to 
 
 Florence Mfg. Co. v. /. C. Dowd & Co., denote, in a measure at least, the 
 
 178 Fed. 73 (C. C. A.); "Gall Cure" quality, ingredients and characteris- 
 
 (medicine), Bickmore G. C. Co. v. ticsof the articles produced; "Microbe 
 
 Karns Mfg. Co., 126 Fed. 573 (see killer" (medicine), Alff v. Rodham, 77 
 
 same case, 134 Fed. 833); "American Tex. 530; "Brilliant" (for flour, dis- 
 
 Girl" (shoes), Wolf Bros. & Co. v. tinguishing it from a darker kind of 
 
 HamilUm-Brown Shoe Co., 165 Fed. flour), Sauers Milling Co. v. Kehhr F. 
 
 413 (C. C. A.); "Bohemian" (beer; M. Co., 39 App. D. C. 535. 
 indicating that it is made of Bohemian 
 
Common Words Used in Aebitrary Sense 397 
 
 "Valvoline" (lubricating oil).^* 
 
 "CeUuloid."59 
 
 "Momaja" (coffee).^'' 
 
 "Cottolene" (substitute for lard)." 
 
 "Saponifier" (concentrated lye).^^ 
 
 "Cuticura" (soap).«^ 
 
 "Uneeda" (crackers)/^ 
 
 "Carbolineum" (kind of paint) .^^ 
 
 "Ceresota" (flour) .^^ 
 
 "Argyrol" (antiseptic)." 
 
 § 203. Common Words Used in an Arbitrary Sense. — A word 
 in common use but applied to a product in an arbitrary or fanciful 
 sense, may be a good trade-mark. For example: 
 
 "Club Cocktails" (cocktail). "» 
 
 "Congress Water" (mineral water).*' 
 
 "Parabola" (needles).^" 
 
 "Eagle" (snuff)." 
 
 "Radium" (silk)." 
 
 "Tea Rose" (flour)." 
 
 "Red Cross" (tooth brushes) .^^ 
 
 "Ideal" (hair brush) .'» 
 
 "Keystone" (grease), 
 
 76 
 
 =« Leonard v. White's G. L. Co., 38 " Northwestern C. M. Co. v. Mauser 
 
 Fed. 922; Leonard v. Wells, L. R. 26 & Cressman, 162 Fed. 1004. 
 
 Ch. Div. 288. But see Matter of Hors- «' Barnes v. Pierce, 164 Fed. 213. 
 
 burgh, 53 L. J. Ch. 237. '« Heublein v. Adams, 125 Fed. 782. 
 
 ^CeUvMd Mfg. Co. v. Read, 47 '^'Congress Co. v. High Rock Co., i5 
 
 Fed. 712, and see Celluloid Mfg. Co. v. N. Y. 291. 
 
 Cellonite Mfg. Co., 32 Fed. 94. ™ Roberts v. Sheldon, 8 Biss. 398. 
 
 ™ American Grocery Co. v. Shan, 68 " De Voe Snuff Co. v. Wolff, 206 
 
 Fed. 539. Fed. 420 (C. C. A.). 
 
 " N. K. Fairbanh Co. v. Central " Eiseman v. Schiffer, 157 Fed. 473. 
 
 Lard Co., 64 Fed. 133. " Metcalf v. Hanover Star Milling 
 
 '^Pennsylvania Salt Mfg. Co. v. Co., 204: Fed. 211; Hanover Star Mill- 
 
 Meyers, 79 Fed. 87. ing Co. v. AUen & Wheeler, 208 Fed. 
 
 " Potter Drug & Chemical Co. v. 513. 
 
 Miller, 75 Fed. 656. " Loonen v. Deiisch, 189 Fed. 487, 
 
 «< National Biscuit Co. v. Baker, 95 C. C, N. Y. 1911. 
 
 Fed. 135. " Hughes v. Alfred H. Smith Co., 
 
 »5 Avenarius v. Kornely, 139 Wis. 205 Fed. 302; affd. 209 Fed. 37. 
 
 247. " Buzby v. Keystone Oil & Mfg. Co., 
 
 206 Fed. 136. 
 
398 What May be Appropriated as a Trade-Mark 
 
 ' ' Metropolitan' ' (chocolate) ." 
 
 "White House" (coffee).^^ 
 
 "Angostura" (bitters) .''' 
 
 "Carmel" (wine).8» 
 
 "Hunyadi" (mineral water).** 
 
 "Marguerite" (tooth brushes).*^ 
 
 § 204. Words Indicating Quality, Superiority, etc. — The gen- 
 eral rule is that words that ordinarily or directly indicate or imply 
 high quality, excellence, superiority, popularity, etc., as belonging 
 to the goods, are not appropriable as trade-marks. This rule, 
 however, must be taken subject to some qualifications, as will be 
 seen by the examples which indeed indicate that, in a number of in- 
 stances, the same word has been sustained as a trade-mark in 
 some cases and rejected in others. The following are words which 
 have been held not available as trade-marks on the ground that 
 they denote quality, excellence, etc. : 
 
 "Gold Medal" (saleratus) .^^ 
 
 "Royal" (baking powder).^* 
 
 "Imperial" (beer).*^ 
 
 The following words, however, have been sustained as trade- 
 marks : 
 
 ' ' Nickel-In' ' (cigars) .^^ 
 
 "Pride" (cigars) .^^ 
 
 "Marvel" (flour) .^^ 
 
 "Kaiser" (beer).*^ 
 
 "Queen" and "Queen Quality" (shoes^.^" 
 
 Referring to words like "Kaiser," "Royal," "Monarch," etc., 
 Lurton, C. J., says: — 
 
 " Reymer, & Bros. Inc. v. Huykr's, ^* Royal Baking Powder Co. v. 
 
 190 Fed. 83. , Raymond, 70 Fed. 376. 
 
 " Dwinell-Wright Co. v. Co-operative *' Beadleston & Woerz v. Cooke 
 
 Supply Co., 148 Fed. 242, 155 Fed. Brewing Co., 74 Fed. 229. 
 
 909. 86 Schendel v. Silver, 63 Hun (N. Y.), 
 
 ■">A. Bauer & Co. v. Siegert, 120 330. 
 
 Fed. 81. 8' Hier v. Abrahams, 82 N. Y. 519. 
 
 8" Jewish Colonization Association v. 88 I4stman Mill Co. v. William Ldst- 
 
 Solomon, 154 Fed. 157. man Milling Co., 88 Wis. 334. 
 
 8' Saxlehner v. Eisner & Mendelson 89 j_ p_ Blatz Brew. Co. v. Kaiser- 
 Co., 179 U. S. 19. brauerei, Beck & Co., 74 Fed. 222. 
 
 .82 Deitsch v. Gibson, 198 Fed. 410. "> Thomas G. Plant v. May Mercan- 
 
 88 Taylor v. Gillies, 59 N. Y. 331. tile Co., 153 Fed. 229. 
 
Geographical or Place Names 399 
 
 "But these cases rest upon the peculiar and specific character 
 of the names as adopted as trade-marks being names not primarily 
 descriptive of kind, quality or class, when applied to inanimate 
 things, and only standing ill a purely figurative way, for excel- 
 lence or quality or grade or class. Not being descriptive words, 
 they were capable of adoption as trade-names." '* 
 
 § 205. Geographical or Place Names. — This section is devoted 
 merely to a discussion of geographic names used as technical or 
 . pure trade-marks, and not as trade-names. As to the use of such 
 names as trade-names see the chapter entitled "Geographical 
 Names." Geographical names are ordinarily not available as 
 trade-marks, since they are words in the public domain and open 
 to general use. Yet these names on merchandise often convey 
 a meaning not related to a special place and at the same time 
 serve all the uses of a trade-mark. Geographical names used as 
 trade-marks in this way for more than ten years prior to Feb- 
 ruary 20, 1905, may be registered under the United States Trade- 
 Mark Act, section 5.^2 
 
 One of the earliest American cases on geographical words as 
 trade-marks is Canal Co. v. Clark, 13 Wall. (U. S.) 311, (Lacka- 
 wanna Coal). The court there says: — 
 
 "And it is obvious that the same reasons which forbid the 
 exclusive appropriation of generic names or of those merely 
 descriptive of the article manufactured and which can be employed 
 with truth by other manufacturers, apply with equal force to the 
 appropriation of geographical names, designating districts of 
 country. Their nature is such that they cannot point to the 
 origin (personal origin) or ownership of the article of trade to 
 which they may be applied. They point only at the place of pro- 
 duction, not to the producer, and could they be appropriated ex- 
 
 91 Computing Scale Co. v. Standard ized by persons who acquired a fac- 
 Comptding Scale Co., 118 Fed. 965, tory site in Oneida, N. Y., under the 
 968. name " Oneida Game Trap Co." and 
 
 92 Oneida Community, Ltd., v. Oneida began a competing business, marking 
 Game Trap Co., Inc., 168 App. Div. its traps with its corporate name. 
 (N. Y.) 769. The plaintiff, a manu- The court held such acts an infringe- 
 facturer of traps, sold them stamped ment of plaintiff's rights and enjoined 
 with the words "Oneida Community" defendant from using its corporate 
 but they were generally known as name or marking its traps with the 
 " Oneida Traps " or " Oneida Game word " Oneida." 
 
 Traps." The defendant was organ- 
 
400 What May be Appkopriated as a Trade-Makk 
 
 clusively, the appropriation would result in mischievous monopo- 
 lies." 
 
 The rule as thus stated is subject to various exceptions. The 
 above statement was written in 1871 when the law of unfair 
 competition was in its early stages of development. This decision 
 has been much modified in the unfair competition cases that have 
 been decided since. 
 
 The following are examples of words that have been held to be 
 invalid as trade-marks because geographical: 
 
 "Elgin (Watch).'^ 
 
 "Nubia" (cigarettes) .95 
 
 "Santa Ana" (butter).»« 
 
 "Moline" (flour from name of town).'^ 
 
 "Tobasco" (pepper sauce) .^* 
 
 "Columbia" (flour).'' 
 
 " American Wine Co." ' 
 
 "East Indian" (remedy.)^ 
 
 "Orient" (ink ribbons and carbon paper).* 
 
 "Old Country" (soap).^ 
 
 Some names which are semi-geographic in character have been 
 held to be trade-marks as, for instance: 
 
 "Yankee" (soap).^ 
 
 "Metropolitan" (chocolate).^ 
 
 " Elgin Nat'l Watch Co. v. Illinois ^ Columbia Mill Co. v. Akmn, 150 
 
 Watch Case Co., 179 U. S. 665 (1901). U. S. 460. And in Morgan Envelope 
 
 "Elgin" had been registered as a Co. v. WaUon, 86 Fed. 605, "Colum- 
 
 trade-mark. It was held that the bia" applied to tissue or toilet paper 
 
 word was not a valid trade-mark. It was held invalid, 
 
 might, having acquired a secondary ^American Wine Co. v. Kohlman, 
 
 meaning, be protected on principles of 158 Fed. 830 (perhaps more properly 
 
 unfair competition, although the court a trade-name case), 
 
 lacked jurisdiction, in this case, to ^ Connell v. Reed, 128 Mass. 477. 
 
 administer such rehef. « Matter of Crescent Typewriter Sup- 
 
 " Apollo Bros. V. Perkins, 207 Fed. ply Co., 30 App. D. C. 324. 
 
 530 (C. C. A.). •< Allen B. Wrisky Co. v. Iowa Soap 
 
 " Los Angeles Creamery Co. v. J. R. Co., 122 Fed. 796 (C. C. A.). 
 
 Newberry Co., 21 Cal. App. 567 (per- « Williams v. Adams, 8 Biss. 452 
 
 haps rather a trade-name than a trade- (the court remarking that it was not 
 
 marks case). really a geographical name). 
 
 " Candee v. Deere, 54 111. 439. « Reymer & Bros. Inc. v. Huyler's, 
 
 9« Mcllhenny v. New Iberia E. oj 190 Fed. 83. 
 T. P. Co., 34 App. D. C. 430. 
 
Geographical ok Place Names 401 
 
 The broad statement made that a geographical name can never 
 become exclusive property of the one who first uses it as a trade- 
 mark/ is subject to substantial qualification. Where the name 
 is arbitrarily used and not in any of its natural meanings, it may 
 be adopted as a trade-mark. The following are examples: 
 
 "Paris" (garters).^ 
 
 "Vienna" (bread).^ 
 
 "German" (chocolate). i" 
 
 "Italian" (underwear)." 
 
 "The American Girl" (shoes)." 
 
 "Ethiopian" (black cotton stockings).^* 
 
 "Indian Pond" (for scythe stones)." 
 
 "Green Mountain" (for scythe stones)." 
 
 "Quinnebog" (for scythe stones).^® 
 
 "Lake Huron" (for scythe stones)." 
 
 "Taylor's Persian Thread" (for thread manufactured in Eng- 
 land), i^ 
 
 "Turin" (for patterns of cloths manufactured at Huddersfield, 
 Eng.).i« 
 
 "Sefton" (for patterns of cloths manufactured at Huddersfield, 
 Eng.).2» 
 
 "Liverpool" (for patterns of cloths manufactured at Hudders- 
 field, Eng.).='i 
 
 "Philadelphia" (for cheese manufactured in New York).''^ 
 
 ' AyoUo Bros. v. Perkins, 207 Fed. " Pike Mfg. Co. v. Cleveland Stone 
 
 530, 533 (C. C. A.). Co., 35 Fed. Rep. 896. 
 
 ' A. Stein & Co. v. Liberty Garter " Pike Mfg. Co. v. Cleveland Stone 
 
 Mfg. Co., 198 Fed. 959. Co., 35 Fed. Rep. 896. 
 
 "Fhischmann v. Schuckmann, 62 ^o Cleveland Stone Co. v. Wallace, 
 
 How. Pr. 92. 52 Fed. Rep. 431. 
 
 '» Walter Baker & Co. v. Baker, 77 " Cleveland Stone Co. v. Wallace, 
 
 Fed. 181. Compare also Drake Med- 52 Fed. Rep. 431. 
 
 icine Co. v. Glessner, 68 Ohio State, '' Taylor v. Carpenter, 3 Story, 458, 
 
 337, 356. Cas. No. 13,784; Taylor v. Taylor, 23 
 
 " Kayser & Co. v. Italian Silk Un- L. J. Ch. (N. S.) 255; Taylor v. Car- 
 
 derwear Co., 160 App. Div. (N. Y.) 607 yenter, 11 Paige, 292; aff'd, 2 Sandf . 
 
 (the trade-mark had been registered Ch. 603. 
 
 and was considered good under the " Hirst v. DenAajw, L. R. 14 Eq. 542. 
 
 ten-year clause of the Federal Act). ^^ Hirst v. Dmham, L. R. 14 Eq. 542. 
 
 " Hamilton-Brovm Shoe Co. v. Wolf " jjirst v. Denham, L. R. 14 Eq. 542. 
 
 Bros. & Co., 240 U. S. 251. " International Cheese Co. v. Phenix 
 
 " Mine v. Lart, 10 Jur. 106. Cheese Co., 118 App. Div. 499. 
 
402 What May be Appropriated as a Trade-Mark 
 
 "Anatolia" (for licorice).^' 
 
 "Maryland Club" (whiskey).^" 
 
 "Tabor" and "Carmel" (for wine grown in Palestine, none 
 however being grown on the mountains of those names). ^° 
 
 "White House" (coffee). ^^ 
 
 "American Express" for sealing wax.^^"* 
 
 "Chartreuse" has been held to be not a geographical name, but 
 rather the name of a monastery which name followed the monks 
 when, being expelled from France, they resumed the manufacture 
 of their product in another country. ^^ ' ' Angostura ' ' (bitters) is an 
 example of a name originally geographical, but afterwards used 
 arbitrarily, the name of the town where the product was first 
 made having been changed, and the place of manufacture having 
 also been changed.^^ 
 
 Where a geographical name is a part of a combination of words, 
 the question is more complex. Where there is a distinctive word 
 associated with the geographical words, the combination may be 
 used as a trade-mark as in the case of "Auburn-Lynn" shoes.^' 
 If, however, the words are descriptive, the combination is invalid 
 as a trade-mark for example, "Birdsboro Trap Rock" ^ or "Los 
 Angeles Van, Truck & Storage Co." '^ 
 
 A further exception to the general rule may be noted. A place 
 name may be a good trade-mark where the place is exclusively 
 occupied by the trader, for example: "Bethesda" (spring) ;^^ 
 "Blue Lick Water" (springs controlled by one concern);^' 
 "Rischon-le-Zion" (name of one farm).'* 
 
 ^^ Mc Andrew v. Bassett, 10 Jur. N. 2* A. Bauer & Co. v. Siegert, 120 
 
 S. 492. Fed. 81. 
 
 " Cahn V. Hoffman House, 28 N. Y. ^9 ]y. R. Lynn Shoe Co. v. Auburn- 
 
 Supp. 388. Lynn Shoe Co., 100 Maine, 461. 
 
 =* Carmel Wine Co. v. Palestine H. ^o John T. Dyer Quarry Co. v. 
 
 W. Co., 161 Fed. 654; Jewish Coloniza- Schuylkill Stone Co., 185 Fed. 557. 
 
 tion Assn. v. Solomon & Germansky, '^ Dunston v. Los Angeles V. & S. 
 
 154 Fed. 157. Co., 165 Cal. 89 (these words had been 
 
 2« DwinellrWright Co. v. Co-operative registered as a trade-mark, but were 
 
 Supply Co., 148 Fed. 242 (on final condemned as both geographical and 
 
 hearing, 155 Fyed. 909). descriptive). 
 
 M" Dennison v. Thomas, 94 Fed. »2 Dunbar v. Glenn, 42 Wis. 118. 
 
 651-3. >o Parkland Hills Blue Lick Water 
 
 " Baglin v. Cusenier Co., 156 Fed. Co. v. Hawkins, 95 Ky. 502. 
 
 1016; see same case, 221 U. S. 580. " Jewish Colonizaiion Asm. v. /Solo- 
 mon & Germansky, 154 Fed. 157. 
 
Personal ok Family Names 403 
 
 The true rule would seem to be, that where a geographical 
 name is used in trade, not in its geographical sense, but as a name 
 for the goods of one particular person, that person may prevent 
 others using the word, not in its geographical sense, but as the name 
 of competing goods. It is of no value in applying this rule to 
 discuss whether it is used by the defendant as a trade-mark or as 
 a trade-name. The important question is whether it is used in its 
 public or geographical meaning or in its trade meaning.'^ If it is 
 used by the defendant in the latter sense he may be enjoined 
 under the rules of unfair competition. 
 
 § 206. Personal or Family Names. — The courts of the United 
 States have often held that a personal or family name cannot be a 
 trade-mark. ^^ Such names sometimes, however, acquire prac- 
 tically all the characteristics of a true trade-mark.^' 
 
 A family name is a good trade-mark, except as against others of 
 the same name,^* just as a geographical name may be a trade-mark 
 when used in a non-descriptive way as "Vienna Bread" as a name 
 for bread made in New York by some particular concern, or Paris 
 garters for garters made by an American concern. 
 
 Under the rule as formerly understood and applied a family 
 name might not be used as a technical trade-mark. It is not a 
 fanciful name. It is in the public domain so far as all persons are 
 concerned that rightfully bear the name in question. But a rule 
 
 '* Oneida Community, Ltd., v. Oneida forbidden to use the name "Williams" 
 
 Gams. Trap Co., Inc., 168 App. Div. in its corporate name or otherwise 
 
 (N. Y.) 769. unless conjoined with some word or 
 
 '' Thaddeus Davids Co. v. Davids, words other than a Christian name, 
 
 233 U. S. 461, 464, and cases cited; or unless accompanied by explanatory 
 
 Borden's Ice Cream Co. v. Borden's words differentiating it from the old 
 
 Condensed Milk Co., 201 Fed. 510. concern. (See form of inj., p. 385, 
 
 " Liebig's Extract of Meat Co. v. affd. C. C. A.) Drake Medicine Co. v. 
 
 Ldebig's Extract Co., 180 Fed. 688 Gkssner, 68 Ohio, 337 ("Dr. Drake's 
 
 (C. C. A.); Williams Soap Co. v. German Croup Remedy"); Burke v. 
 
 J. B. Williams Soap Co., 193 Fed. 384 Cassin, 45 Cal. 467, 480 (in which the 
 
 (C. C. A.). Complainant (appellee) court say: "The name of the manu- 
 
 was the well-known soap concern of facturer or seller of goods may, of 
 
 Connecticut. Appellant, whose cor- course, be used as a trade-mark"), 
 porate name containing from the first, '' In National Distilling Co. v. 
 
 the word "Williams," derived from Century Liquor & Cigar Co., 183 Fed. 
 
 founders of the concern of that name 206, "Livingstone" (for whisky) was 
 
 had been changed to resemble more held to be a good trade-mark except as 
 
 nearly the name of complainant, was against persons of that name. 
 
404 What May be Appeopriated as a Trade-Mark 
 
 that stops here would fall far short of meeting the demands of the 
 business world. Such a rule would leave totally unprotected all 
 of the good-will that is represented by the vast number of family 
 names that have acquired through long use in trade a distinct 
 commercial meaning quite apart from their use as designating 
 persons who bear the name as a family name. To meet these 
 conditions, the law has developed the doctrine of unfair competi- 
 tion known as the secondary meaning rule which affords protection 
 to such names used in a trade sense distinct from their ordinary 
 family meaning. A discussion of cases of this sort will be found in 
 chapters on "Family Names " and "Secondary Meaning." 
 
 Strictly speaking this secondary use of these names is not a 
 pure trade-mark use. Practically speaking, however, such names 
 perform the functions of a trade-mark. 
 
 The Trade-Mark Act of 1905 as originally passed, did not 
 permit registration of a mark which consisted merely in the. name 
 of an individual, unless written in a distinctive way or accom- 
 panied by a portrait of the individual, or unless it had been used 
 as prescribed in the "ten year" clause. Subsequently an amend- 
 ment to section 5 was passed which permits the applicant to regis- 
 ter his own name or a part thereof.'^ 
 
 § 207. Names of Patented Articles. — The name of a patented 
 article which, during the life of the patent, has become familiar 
 to the public as the designation of the article, is open to public 
 use on the expiration of the patent and may not be used as a trade- 
 mark. Although the word may originally have been fanciful and 
 one legally appropriable as a trade-mark, its use as the one apt 
 name of the patented article has placed it in the public domain 
 and it can no longer be monopolized even by the original maker. ^ 
 The rule governiug the use of the names of patented articles as 
 
 " "There is between a name of an thousands, to all of whom it is equally 
 individual or firm used as a trade- appropriate." Sebastian on Trade- 
 mark and a fancy name or arbitrary Marks (5th ed.), 39. Under the Eng- 
 symbol used for the same purpose, a lish Act, a personal name may in some 
 broad distinction, which was early cases, though not as a matter of course, 
 perceived, and which caused some be registered as a trade-mark. SeeTeo- 
 difficulty in the universal acceptance fani & Co., Ltd., v. Teofani, 30 R. P. 
 of a name as an efficacious trade-mark. C. 446. See chapter on " Registered 
 The difference is that a name is in its Trade-marks," Trade-mark act, Sec. 5, 
 very nature generic, and is properly T. Davids v. Davids, 233 U. S. 461. 
 apphed to designate, not one Individ- *» Centaur Co. v. Heimfurter, 84 Fed. 
 ual in the world, but, it may be, many 955. 
 
Foreign Words 405 
 
 trade-marks is merely a particular application of the general rule 
 as to descriptive or generic words. The exclusive right of the 
 patentee to use what has become the generic name of a patented 
 article ceases on expiration of patent or copyright because the 
 word during the term of the monopoly has come to be a word of 
 apt description and hence necessary to the uses of the pubUc in 
 referring to the article it describes.*^ 
 
 The following are examples of names of patented or copyrighted 
 articles which have been held not available for trade-marks: 
 
 "Vertical Top" (cigar mold). ^^ 
 
 "Ludlow Valves." « 
 
 "Blount Door Checks." " 
 
 "Triplex Blocks." « 
 
 "De Long Hook and Eye." ^« 
 
 "Singer Sewing Machines." '" 
 
 But if a trade-mark or trade name was used before the patent 
 was obtained, the mark or name does not become public property 
 upon the expiration of the patent, especially where the patent did 
 not contribute greatly to the value of the trade-mark.*^ 
 
 § 208. Foreign Words. — A word adopted from a foreign lan- 
 guage, but descriptive in that language, may not be appropriated 
 as a trade-mark. In a California case,*' the authorities are said 
 to be "virtually without conflict" as to this. 
 
 The following are examples of foreign words which have been 
 held unavailable as trade-marks because descriptive in a foreign 
 language: 
 
 "Matzoon" (Armenian name of milk product).™ 
 
 ^' G. & C. Merriam v. Saalfield, 198 *^ Yale & Towne Mfg. Co. v. Restein, 
 
 Fed. 369, 374 (C. C. A.). Warren 196 Fed. 176; Id. v. Ford, 203 Fed. 
 
 Featherbone Co. v. American Feather- 707 (C. C. A.). 
 
 bone Co., 141 Fed. 513; Batcheller v. ■"" DeLong Hook & Eye Co. v. Amer- 
 
 Thomson, 93 Fed. 660, 664; same prin- ican Pin Co., 200 Fed. 66. 
 
 ciple, Avenarius v. Kornely, 139 Wis. " Singer Mfg. Co. v. June Mfg. Co., 
 
 247, 268 (1909). 163 U. S. 169. 
 
 "Sternberg Mfg. Co. v. Miller &c. *' Batcheller v. Thomson, 93 Fed. 
 
 Co., 161 Fed. 318. 660, 664; Avenarius v. Kornely, 139 
 
 " Ludlmo Valve Mfg. Co. v. Pitts- Wis. 247, 268 (1909). 
 
 burgh Mfg. Co., 166 Fed. 26 (C. C. A.). " Italian Svdss Colony v. Italian 
 
 " Yale & Tmime Mfg. Co. v. Worces- Vineyard Co., 158 Cal. 252, 257-1910. 
 
 ter Mfg. Co., 195 Fed. 528 (C. C. A.). ^"Dadirrian v. Yacubian, 98 Fed. 
 
 As to method of differentiating pre- 872 (C. C. A.), 
 scribed, see same case, 205 Fed. 952. 
 
406 What May be Appropriated as a Trade-Mark 
 
 "Svenska Snusmagasinet" (snuff)/* 
 
 "Parcheesi" (for game so named in India). ^* 
 
 "Tipo" (wine)." 
 
 "Brassiere" (corset cover or jacket). °* 
 
 "Schnapps" (for gin).^^ 
 
 "Bokol" (for beer imported from Norway).^'' 
 
 "Conserva di Tomate." " 
 
 "Abricotine" (for a cordial), although held to be a good trade- 
 mark/^ is not an exception to the rule, as it is treated as a coined 
 word. 
 
 § 209. Letters of the Alphabet. — Letters of the alphabet may 
 be good technical trade-marks if used to denote origin 'and so 
 understood, and if so combined as to form a distinctive mark. 
 For example, "N. S." (for cigars),^^ "0. F. C." (for whiskey),^'' 
 "G. E." (for electric lamps) have been held valid trade-marks.** 
 Letters used as trade-marks are often the initials of the trader.*^ 
 
 Frequently letters are used in connection with a device or sym- 
 bol, and thus form only part of the trade-mark.*^ 
 
 As in the case of numerals, if a series of letters, or combinations 
 of letters, are used to denote the different grades, sizes, etc., of a 
 product, and not to denote origin, they are not ordinarily recog- 
 nized as trade-marks.** 
 
 " Bolander v. Peterson, 136 111. 215. "■ General Electric Co. v. Re-new 
 
 52 Sekhow V. Chaffee & S. Mfg. Co., Lamp Co., 128 Fed. 154. 
 
 132 Fed. 996. "^ "a. V. H." in Van Hoboken v. 
 
 " Italian Smss Colony v. Italian Mohns & Kaltenhach, 112 Fed. 528; 
 
 Vineyard Co., 158 Cal. 252. " G. J. G." mG.&J. Tire Co. v. G. J. 
 
 " Chas. R. DeBevoise Co. v. H. & W. G. Motor Car Co., 39 App. D. C. 508 
 
 Company, 69 N. J. Eq. 114. (1913). 
 
 " Wolfe V. Goulard, 18 How. Pr. 64. " Examples: the "A. V. H." trade- 
 
 '' Davis V. Stribolt, 59 L. T. N. S. mark above i;eferred to; "P. G." 
 
 854. (initials of trader) on shield, with word 
 
 " Roncoroni v. Gross, 92 App. Div. "Abricotine "and autograph signature. 
 
 (N. Y.) 221. Rossman v. Gamier, 211 Fed. 401 ; "A. 
 
 6' Gamier v. Rossman, 195 Fed. 175; G." forming but a small part of a label 
 
 on the appeal of this case, Rossman v. and trade-mark, Godillot v. Harris, 81 
 
 Gamier, 211 Fed. 401, it was held N.Y. 263. In American Tin Plate Co. 
 
 (Hook, C. J., dissenting) that judicial v. Lkking Roller Mill Co., 158 Fed. 690 
 
 notice could be taken of the meaning (C. C, Ky. 1902) the letters "M. F." 
 
 of a foreign word. were presented in monogram, enclosed 
 
 '' Frank v. Sleeper, 150 Mass. 583. in a circle, but the letters were con- 
 
 «» Geo. T. Stagg Co. v. Taylor, 95 sidered the essential feature. 
 
 Ky. 651. <'* Laifirence Mfg. Co. v. Tennessee 
 
NuMEEALS 407 
 
 Letters, when written in a peculiar or distinctive way, are 
 protected as trade-marks. This is a frequent method of branding 
 goods. Various forms of script copies of signatures, flourishes used 
 in making letters, and the Uke may be protected as trade-marks.^^ 
 
 Monograms are considered as fanciful devices, which may 
 become trade-marks.^* 
 
 §210. Numerals. — Whether numerals may be employed as 
 trade-marks is a question of some doubt."'' In considering the 
 cases on this subject it should be borne in mind that most of them 
 are unfair competition cases rather than strict trade-mark cases. 
 In a leading case on this general question Lurton, C. J., reviews 
 the cases and summarizes the rules to he deduced from them thus: 
 "Combined with a name, a word or some other sign or symbol 
 a muneral may well become a vital part of a valid trade-mark." "* 
 The case further held that the use of a numeral could not be pro- 
 tected unless it was shown that the primary object and purpose of 
 its use was to indicate, not quality, grade, or style of the goods, 
 but the identity of the owner or producer and to distinguish it from 
 similar articles made by others. In Goldsmith Silver Co. v. Sav- 
 age,^^ the Circuit Court of appeals, First Cirauit, by Bingham, J., 
 says: — "Whether naked numerals may constitute a valid trade- 
 mark has never been determined. The cases, however, are not 
 without expressions of opinion upon the subject, some viewing the 
 matter from one standpoint and some from another, and text- 
 writers have entertained equally divergent views." 
 
 Putnam, J., in a dissenting opinion discusses fully the question 
 of whether numerals may be valid trade-marks. He says :— 
 
 "There has never been any authoritative decision sustaining 
 the claim of the respondent that a number like 108 may not be 
 properly held to be a trade-mark. In this particular case it seems 
 to have been taken from the street nmnber of the building where 
 the complainant's factory or place of trade was. In McLean v. 
 
 Mfg. Co., 138 U. S. 537 ("L L" used Balm Co., 77 Ga. 216; Cookv. Stark- 
 
 to mark a certain grade or quality); weather, 13 Ab. Pr. N. S. (N. Y.) 392. 
 
 Stevens Ldnen Works v. Wm. & John «» Godillot v. American Co., 71 Fed. 
 
 Don & Co., 127 Fed. 950 (letters de- 873; Smith v. Fair, 14 Out. 729. 
 
 noting grade only). " Goldsmith Silver Co. v. Savage, 
 
 «6 Van Hoboken v. Mohns, 112 Fed. 229 Fed. 623. 
 
 528; Moet v. Pickering, 6 Ch. Div. »^ Dennison Mfg. Co. v. Scharf Tag, 
 
 770, 47 L. J. Ch. 527; Foster v. Blood Label & Box Co., 135 Fed. 625. 
 
 »9 229 Fed. 623-1916. 
 
408 What May be Appropriated as a Trade-Mark 
 
 Fleming, 96 U. S. 245; 24 L. Ed. 828, there is a full and complete 
 discussion by Mr, Justice Clifford of the law of trade-marks; 
 and he makes it sweeping enough to cover in a mere number. 
 As we have said, there has been no authoritative decision throw- 
 ing out numbers as trade-marks, though there has been con- 
 siderable discussion on the topic. As applied to the present case, 
 the numerals answer all the demands for a proper trade-mark, 
 indicating nothing except such elements as are proper to estab- 
 lish trade-mark rights; and, in the lack of any authoritative 
 hostile decision, we might accept the position of the complainant 
 in view of the general observations of Mr. Justice Chfford (96 
 U. S. at pages 250, 254; 24 L. Ed. 828), especially about ' symbol, 
 figure, letter, form, or device.' These observations are sufficient 
 to show the position of the federal courts." 
 
 Judge Putnam then discusses the case of Gillott v. Esterbrook, 
 48 N. Y. 374, and quotes from the opinion of the Supreme Court 
 of Rhode Island in the American Solid Leather Button Co. v. ^n- 
 thony,^^'^ as follows: 
 
 "A trade-mark when applied to manufactured articles may well 
 consist of the name and address of the manufacturer, with the 
 addition of some peculiar device or emblem, some cmious forms 
 or figures, so disposed as to attract attention, impress the memory, 
 and advertise more effectually the origin of the article to which 
 it is attached. This affords a wide field for ingenuity in producing 
 designs, which the increasing variety of modem trade-marks 
 shows is not wholly neglected, and it may be that even numerals 
 or letters of the alphabet can be combined and printed in such 
 unusual and peculiar forms, that the result would be quite suf- 
 ficient for use as a trade-mark." ™ 
 
 "It may be difficult to give to bare numbers the effect of in- 
 dicating origin or ownership; and it may be still more difficult 
 to show that they were originally designed for that purpose; but 
 if it be once shown that that was the original design, and that they 
 have had that effect, it may not be easy to assign a reason why they 
 should not receive the same protection, as trade-marks, as any 
 other symbol or device." ^' 
 
 «'" 15 R. I. 338. Co., 35 Conn. 402. See also Naiimal 
 
 1" Lawrence Mfg. Co. v. . Lowell Carbon Co. v. Bright Star Battery Co., 
 
 Hosiery Mills, 129 Mass. 325-1880. 4 Trade-Mark Rep. 346. 
 " Boardman v. Meriden Britannia 
 
CHAPTER XV 
 Acquisition of Technical Trade-Marks 
 
 Section 211. Introductory. 
 
 212. Who may acquire a trade-mark. 
 
 213. Rights of foreigners. 
 
 214. How a trade-mark may be acquired. 
 
 215. Adoption of a trade-mark. 
 
 216. Priority of use against priority of invention. 
 
 217. Priority and exclusiveness of use. 
 
 218. Length, extent and manner of use. 
 
 219. Change in goods to which trade-mark is applied. 
 
 220. Territorial extent of technical trade-mark rights. 
 
 221. Trade-mark protection limited to goods of the same class. 
 
 § 211. Introductory. — In this chapter only common-law, or 
 technical trade-marks are dealt with. Cases under the United 
 States Trade-Mark Act will be found in the chapter on "Registered 
 Trade-Marks and the Federal Trade-Mark Act." Questions re- 
 lating to the transfer of trade-mark rights, to the rights of a with- 
 drawing or surviving partner, and similar matters, are dealt with 
 in the chapter on "Good-will." 
 
 § 212. Who may Acquire a Trade-Mark. — Not only a manufac- 
 turer of goods, but a merchant, distributer, jobber, bottler, or other 
 person who selects goods and markets them, or places them before 
 the public may adopt and use his own trade-mark.^ In Menendez 
 V. Holt,^ the trade-mark ("La Favorita," for flour) was not that 
 of the manufacturer, but that of one who selected and marketed 
 the flour. In Nelson v. Winchell & Co., ^ it is said: "The use of a 
 trade-mark does not necessarily and as a matter of law import 
 that the articles upon which it is used are manufactured by the 
 user. It may be enough that they are manufactured for him and 
 that he controls their production, or even that they pass through 
 his hands in the course of trade, and that he gives to them the 
 benefit of his reputation, or of his name and business style." The 
 British Trade-Mark Act, 1905 (§ 3), provides that one may be 
 
 1 Hughes v. Alfred H. Smith Co., 205 ' 128 U. S. 514. 
 Fed. 302, aff'd, 209 Fed. 37 (C. C. A. » 203 Rlass. 75, 82. 
 1913). 
 
 409 
 
410 Acquisition of Technical Trade-Marks 
 
 the proprietor of a trade-mark "by virtue of manufacture, selec- 
 tion, certification, dealing with, or offering for sale." 
 
 The question sometimes arises whether a particular trade-mark 
 belongs to the manufacturer, the jobber or the seller. If the 
 latter has ordered goods made for him bearing a particular mark 
 or brand selected by him, it will ordinarily be deemed his mark.* 
 This is what is known in trade as a "private brand." 
 
 § 213. Rights of Foreigners. — In general, even independent of 
 treaty, foreigners have the same right as citizens, to be protected 
 in the use of trade-marks actually used by them on goods sold 
 in this country.^ Treaty provisions are sometimes referred to, ® 
 but except as to registration under the Federal Trade-Mark Act, 
 the effect of said provisions seems hardly more than confirmatory 
 of the common-law rights of aliens. It was not intended by treaty 
 to put aliens on a more favorable footing than citizens.^ Priority 
 of use abroad will not avail them as against one who anticipates 
 them in using the trade-mark in American trade.* Under the 
 Federal Trade-Mark Law (Act of 1905) there are special pro- 
 visions regarding the registration of trade-marks by foreigners 
 (see chapter on " Registered Trade-Marks and the Federal Trade- 
 Mark Act'O. 
 
 § 214. How a Trade-Mark May be Acquired. — The trader 
 must do three things in order to acquire a good title to a technical 
 trade-mark. First, he must adopt a trade-mark open to appro- 
 priation; second, he must apply it or attach it physically to a 
 
 ^ Michigan Condensed Milk Co. v. ' French Republic v. Saratoga Vichy 
 
 Kenneweg Co., 30 App. D. C. 491. Co., 191 U. S. 427, 439. 
 
 See also Shelly v. Sperry, 121 Mo. App. ' Walter Baker & Co. v. Delapenha, 
 
 429 (seller's mark and name being 160 Fed. 746. See also Baglin v. 
 
 placed by manufacturer on cartons, Cusenier Co., 221 U. S. 580, to the 
 
 and seller being there named as manu- effect that our law and the facts of 
 
 facturer. the trade in this country prevail in 
 
 ' Taylor v. Carpenter, 3 Story, 458. case of conflict over foreign law and 
 
 In De Nobili v. Scanda, 198 Fed. 341, the facts of foreign trade. So in 
 
 there is probably no intention to limit Avenarius v. Konnely, 139 Wis. 247, 
 
 the right of ahens' common law relief , 270, it is said: "Our courts are not 
 
 but only where the U. S. Trade-Mark bound by any foreign rule, judicial or 
 
 Act is invoked, to require the fulfill- otherwise, as to the precise essentials 
 
 ment of its reciprocity condition of a trade-mark. The question is 
 
 before extending reUef under that whether plaintiff's claim is in harmony 
 
 Act. with the law, written and unwritten, 
 
 « Kerry v. Toupin, 60 Fed. 272. of this country." 
 
Adoption of a Trade-Makk 411 
 
 vendible commodity, and third, he must actually put the commod- 
 ity so marked on the market.** The offering of goods for sale 
 to the public is necessary, if not actual sale. (See note 26, 
 infra.) 
 
 § 215. Adoption of a Trade-Mark. — The act of adoption is a 
 most important one in connection with the determination of 
 trade-mark rights. A trade-mark may have been adopted by a 
 defendant almost immediately after it was first adopted by a 
 plaintiff, yet if it is conclusively shown that the plaintiff was the 
 first to adopt the trade-mark, this fact is important in determining 
 the respective rights of the parties.^" 
 
 In considering the question of rights acquired by adoption, a 
 sharp distinction must be observed between cases involving 
 fanciful, non-descriptive words which may become strict or pure 
 trade-marks and cases involving the use of names or designs 
 which are in the public domain. The adoption of a fanciful non- 
 descriptive word, followed by even slight use, creates in the 
 person so adopting and using it a distinct and specific trade- 
 mark right, provided he be the first person to adopt and use the 
 mark in question. 
 
 This right, once acquired, must be supported by a use suffi- 
 ciently constant to indicate an intention on the part of the owner 
 of the mark to continue to use it and not to abandon it. This 
 does not mean in any sense that the title to a common-law trade- 
 mark depends upon any comparison of the extent of the use of the 
 first user with that of a later user. The second user may plunge 
 into business on a large scale and use the mark on a large volume 
 of goods, while the first user may continue his business on a modest 
 scale and use the trade-mark to a very limited extent. If, however 
 his use be reasonably constant and is bona fide, the extent of that 
 use as compared with that of the second user has nothing to do 
 with his title. 
 
 In fact there is grave doubt if, in a case involving the title to a 
 non-descriptive or fanciful name or mark, evidence of the extent 
 in volume of the use of a second user is admissible at all. Evi- 
 dence of this character is of the utmost importance in a case in- 
 volving rights based on secondary meaning. It has nothing to 
 
 ' Schneider v. Williams, 44 N. J. *" Waldes v. International Manu- 
 Eq. 391 (1888). faeturers Agency, 237 Fed. 502, U. S. 
 
 Dist. Ct., So. Dist. N. Y., 1916. 
 
41?, Acquisition of Technical Trade-Marks 
 
 do with the right of the first adopter and user of a common-law 
 trade-mark. 
 
 Rights acquired by adoption and use cannot be lost or im- 
 paired except by acts on the part of the owner of the mark amount- 
 ing to abandonment. 
 
 In considering the rights of the owner of a common-law trade- 
 mark, the fact is often lost sight of that such a mark is based on 
 adoption primarily, while rights in a trade name, or a name in the 
 public domain, are based primarily on the extent of the use of 
 the mark and the consequent knowledge obtained by the pubUc 
 of the mark through such use.''' 
 
 § 216. Priority of Use against Priority of Invention. — It is 
 priority of use and not priority of invention which affords the 
 right to a trade-mark. He who first conceives a trade-mark but 
 does not put his thought into action in the use of his invention for 
 trade-mark purposes, possesses no right as against the second 
 discoverer of the idea, provided the latter puts his idea into imme- 
 diate use as a trade-mark upon his goods. The Supreme Court has 
 said: "The exclusive right to the use of the mark or device claimed 
 as a trade-mark is founded upon priority of appropriation; that is 
 to say, the claimant of the trade-mark must be the first to use or 
 employ the same on like articles of production." '" The inventing 
 or selecting of the mark, and the decision to adopt it is, therefore, 
 not sufficient to estabUsh trade-mark rights." It is not enough 
 to declare publicly, as by advertising or through circulars or 
 trade-lists, that the trade-mark has been adopted.^* What is 
 claimed as a trade-mark must have been used under such condi- 
 tions as to make it clear that it is intended as a trade-mark. '^ A 
 
 ^ Baker v. Delapenha, 160 Fed. "Candee, Swan & Co. v. Deere & 
 
 746-9; Columbia Milling Co. v. Al- Co., 54 111. 439. 
 
 com, 150 U. S. 460-3; Kathreiner's »»See CapeweU Horse Nail Co. v. 
 
 Malzkaffee, etc., v. Pastor, 82 Fed. Putnam Nail Co., 140 Fed. 670. In 
 
 321; Tetlow v. Tappan, 85 Fed. 774; this case, a check mark impressed on 
 
 Welsbach Co. v. Adam, 107 Fed. 463; a horse nail was not considered under 
 
 McAndrew v. Bassett, 4 DeGex, J. & S. the evidence to be intended as a trade- 
 
 380-4. mark and recognized as such by the 
 
 "> Columbia Mill Co. v. Alcorn, 150 public. The evidence offered in a 
 
 U. S. 460, 463; 14 Sup. Ct. 151, 152. later case, however, was considered to' 
 
 " Wehhach Light Co. v. Adam, 107 show that this same mark, although 
 
 Fed. 463, and George v. Smith, 52 Fed. intended also to serve other purposes, 
 
 830; American Washboard Co. v. Sagi- had been adopted with the distinct 
 
 naw Mfg. Co., 103 Fed. 281-287. purpose of denoting origin and serving 
 
Priority and Exclusiveness of Use 413 
 
 trade-mark is sometimes acquired involuntarily. A trade-rmark 
 says the Supreme Court "is often the result of accident rather 
 than design." i'" This is usually brought about by reason of the 
 use by the pubUc of some name of its own choosing as the name for 
 some dealer's goods. When this occurs the nick-name so given 
 to a product, if affixed to it, is just as vaUd a trade-mark for it as 
 the most carefully chosen device or name. 
 
 § 217. Priority and Exclusiveness of Use. — It is an essential 
 condition of acquiring a particular trade-mark that it is not al- 
 ready in use by another, at least in the, market where it is to be 
 used on goods of the same descriptive properties. As we have 
 already seen, the question of priority is not determined by the 
 time of invention or announcement, unless that coincides with the 
 date of its first use as a trade-mark. The right acquired by adop- 
 tion is incomplete until the use of the mark on the goods begins. 
 The claimant of a- trade-mark is not prejudiced by an earlier use 
 for another purpose. The word "Keystone," claimed as a trade- 
 mark for a cigar, had been previdusly used by another dealer as 
 part of his label, but not under such circumstances as to indicate 
 its use as a trade-mark.^* A slight, temporary or tentative use 
 may not prejudice the right of a person subsequently adopting 
 a trade-mark,^' but if there has been an earlier, definite applica- 
 tion of the trade-mark in actual trade, then the small extent of 
 the trade does not justify a superior claim by a subsequent user.^^ 
 
 A trade-mark need not necessarily be used first by the one 
 claiming it. A trader may adopt an old mark that has been 
 abandoned. In Cohen v. Nagle, it is said, "There is no doubt that 
 an abandonment paves the way for future possession and prop- 
 erty in another person." Other cases to this effect are referred 
 
 as a trade-mark, and was so understood garded in favor of one who had af ter- 
 
 by the public. 167 Fed. 575. See wards used the trade-mark for years 
 
 Greene v. Manufacturers' Co., 158 Fed. and had built up a large trade in it. 
 
 640. See also 'Holt v. Menendez, 23 Fed. 
 
 "" Trademark Cases, 100 U. S. 82; 869, in which there was some evidence 
 
 25 L. Ed. 550. of a prior use of the mark or name at 
 
 " Cohen V. Nagk, 190 Mass. 4. St. Louis. This was deemed inef- 
 
 " In McGVow Tire & Rubber Co. V. fectual as "casual and fortuitous," 
 
 Griffith, 198 Fed. 566, a very slight continuing for a short period only, and 
 
 and temporary use'of a trade-mark "soon^ abandoned and forgotten." 
 
 ("Imperial" Tires), having no prac- ^^ Kahn v. W^A. Gaines & Co., 161 
 
 tical effect upon the mark, was disre- Fed. 495 (C. C. A.). 
 
414 Acquisition of Technical Trade-Marks 
 
 to in the note." An abandoned trade-mark may be resumed — 
 and be reacquired by the former owner (if no rights of others 
 intervene), as well as by one who has never used it. But a trade- 
 mark once used, and having become familiar to the pubhc, before 
 it can be appropriated by a subsequent trader, must be abandoned 
 by the original user so effectually that its use by the subsequent 
 trader would not tend to mislead the public.^* The adoption of a 
 trade-mark formerly in use, but abandoned, must be made in 
 good faith by one who was never a conscious infringer." If there 
 are two or more trespassers when the true owner of a mark aban- 
 dons it, none of them acquires title, since none can claim a prior 
 use.^" If, on the other hand, there is a concurrent use by two 
 claimants, and one of them abandons the mark, then the period 
 of sole use will give good title to the other." The prior use of the 
 mark by another, abroad, is no objection, if the claimant has first 
 used the mark in this country. ^^ The question of the respective 
 rights of two traders who have used the same trade-mark in 
 different territories is considered below. 
 
 § 218. Length, Extent and Manner of Use. — It is sometimes 
 said that the use of a trade-mark must have been so persistently 
 continuous as to have identified the goods in the pubhc mind.^' 
 But if the lapse of a period of time is necessary before the right to 
 the trade-mark accrues, it is only because the mark has not been 
 
 "Cohen v. Nagle, 190 Mass. 4, 11; adopted and used in ignorance of a 
 
 Levering Coffee Co. v. Merchant Coffee prior use will, after its abandonment 
 
 Co., 39 App. D. C. 151; W. A. Gaines by the prior user, belong by good title 
 
 & Co. V. E. Whyte G. F. cfc W. Co., 107 to the subsequent user. 
 
 Mo. App. 507. '"Seubert v. Santaella & Co., 36 
 
 18 Baglin v. Cusenier Co., 156 Fed. App. D. C. 447. 
 
 1016 ("Chartreuse"). " Layton Pure Food Co. v. Church & 
 
 " It was held in O'Rourke v. Central Dtoight Co., 182 Fed. 24. 
 
 City Soap Co., 26 Fed. 576, that one " Gorham Mfg. Co. v. Wdntravb, 
 
 who wrongfully uses another's trade- 196 Fed. 957; Waller Baker & Co. v. 
 
 mark does not acquire a good title to Delapenha, 160 Fed. 746. See also 
 
 it merely by its abandonment by the Waldes v. IntemationaJ, Manufac- 
 
 original owner. There is nothing in turers Agency (U. S. Dist. Ct. South- 
 
 this ease to show any intentional wrong em District of N. Y., Dec. 8, 1916), 
 
 on the part of the defendant. The 7 Trade-Mark Rep. 7; 237 Fed. 
 
 ruUng of this case was disapproved in 502. 
 
 Mayer Fertilizer & Junk Co. v. V. C. ^' Layton Pure Food Co. v. Church & 
 
 Chemical Co., 35 App. D. C. l25, in Dvdght Co., 182 Fed. 24. 
 which it was held that a trade-mark 
 
Length, Extent and Manner of Use 415 
 
 adopted and used in such a manner as to make it clear that it is 
 intended to be used as a trade-mark. If the trade-mark purpose 
 and use is unquestioned, it is unnecessary that the use should 
 continue for any particular period of time.^* The use of the mark 
 must not be merely temporary or experimental.^^ 
 
 In considering the question of extent of use, careful distinction 
 must be drawn between technical or pure trade-marks, and marks 
 which are not technical marks but are in the public domain. 
 Where the name or device chosen is fanciful and may become a 
 technical trade-mark, very slight use will, in addition to adoption, 
 create a trade-mark. Where the name or device is in the pubhc 
 domain, the whole question of use lies in pais. It differs with 
 every case, and to make out a cause of action, the complainant 
 must show that the name or mark he is claiming as his commercial 
 signature has now come to possess a meaning or signification in 
 addition to its general or pubhc meaning or signification, which 
 new or secondary meaning is identified in the public mind only 
 with him and his business. 
 
 In considering the manner in which a trade-mark is used it 
 must be borne in mind that no trade-mark rights will accrue from 
 use of a symbol in connection with articles which are not on the 
 market. ^^ "Until the thing is actually on the market, marked 
 
 2* "The right to use does not depend nize by injunction a proprietary right 
 
 upon any particular property and in a phrase or name, unless it has been 
 
 user; once a trade-mark is adopted used in such circumstances as to pub- 
 
 in good faith and used, the right Ucity, and length of use, as to show an 
 
 thereto inures and wiU prevail against intention to adopt it as a trade-mark 
 
 any subsequent user.'' Walter Baker for a specific article." 
 Co. V. Delapenha, 160 Fed. 746 (C. C, «« Baker v. Delapenha, 160 Fed. 746- 
 
 N. J. 1908). This case cites sevgral 748, Cross, D. J., said: "There is no 
 
 earlier cases in which this rule was positive proof to show that the foreign 
 
 laid down, particularly Kathreiner' s trade-marks were ever placed upon 
 
 Malzkaffee v. Pastor Kneipp Med. Co., any goods which were actually sold 
 
 82 Fed. 321 (C. C. A., 7th Cir.). See anywhere prior to those which came 
 
 also Breitenbach v. Rosenberg, 37 App. into the hands of the defendants about 
 
 D. C. 102. the 1st of March, 1905, which was 
 
 " Kohler Mfg. Go. v. Beeshore, 59 several months after the complainant 
 
 Fed. 572 (C. C. A.). "A merely casual had adopted and used its trade-marks, 
 
 use, interrupted, or for a brief period, and several days after it had filed its 
 
 would not support a claim to a trade- original appUcation for their registra- 
 
 mark. Menendez v. Holt, 128 U. S. tion. Upon this point counsel for the 
 
 514. Nor will a court of equity recog- complainant in their brief well say 
 
416 
 
 Acquisition of Technical Trade-Marks 
 
 by the particular mark of the person intending to acquire a title, 
 no property right in the mark arises." " 
 
 § 219. Change in Goods to which Trade-Mark is Applied. — 
 The goods to which the mark is appUed must continue sub- 
 stantially the same. For instance, where an essential ingredient 
 in a baking powder was changed, it was held that the right to the 
 
 'A manufacturer does not acquire 
 a trade-mark by sending goods bearing 
 it to his agents and by the agents 
 sending it to subagents, as from its 
 nature a trade-mark must be used on 
 goods sold.'" 
 
 Schneider v. Williams, 4A N. J. Eq. 
 391; 14 Atl. 812, per Van Fleet, V. C, 
 "The question to be considered is. 
 Does the bill show a property right in 
 the complainants and their fellow- 
 members in the trade-mark in ques- 
 tion? This is, however, preceded by 
 another, which is. How may property 
 in a trade-mark, or a right to a trade- 
 mark, be acquired? It would seem to 
 be settled beyond question, that there 
 can be no such thing as a trade-mark 
 distinct from and unconnected with a 
 vendible commodity. As the words 
 themselves import, to make the thing 
 selected or adopted answer the pur- 
 poses of a trade-mark, it must be so 
 used as to mark or distinguish some- 
 thing which is the subject of traffic, — 
 something which is bought and sold. 
 It can have no existence as property, 
 or a thing distinct from and wholly 
 unconnected with an article of traffic; 
 for in that condition, while it might be 
 the subject of traffic itself, it would be 
 simply as a mark or name, and not as 
 the distinguishing mark of some other 
 article of traffic. It is only when it is 
 affixed to or associated with some 
 vendible commodity so as to dis- 
 tinguish that particular commodity 
 from others of the same class or kind, 
 that it is possible for it to possess 
 
 the essential quality of a trade- 
 mark." 
 
 In Weener v. Brayton, 152 Mass. 
 101, Devens, J., said: "There is no 
 exclusive ownership of the names, de- 
 vices, symbols or marks which con- 
 stitute a trade-mark, apart from the 
 use or application of them; but the 
 word 'trade-mark' is the designation 
 of them when applied to a vendible 
 commodity." . . . "To the validity 
 of a trade-mark, so as to entitle any- 
 one to a remedy for an invasion 
 thereof, three things have been held 
 necessary: that he must show that he 
 has adopted some marks or signs not 
 in use by others to distinguish the 
 goods manufactured or sold by him 
 from those of other manufacturers or 
 traders; that these must be applied to 
 some article of traffic; and that such 
 articles must be placed on the mar- 
 ket." . . . "The right to a trade- 
 mark cannot exist as a mere abstract 
 right, independent of and discon- 
 nected from a business. It is not 
 property as distinct from, but only as 
 incident to the business." 
 
 In Grocers Journal Co. v. Midland 
 Pub. Co., 127 Mo. App. 356-366, 
 Nortoni, J., wrote: "And indeed it is 
 the law that there is not and can be no 
 exclusive ownership of the words or 
 symbol which constitute a trade-mark 
 apart from the use or application of 
 such words or symbol to a vendible 
 commodity." 
 
 "Schneider v. Williams, 44 N. J. 
 Eq. 391, 
 
Territorial Extent of Trade-Mark Rights 417 
 
 trade-mark applied to it was lost.^* A reasonable extension of the 
 mark to other similar goods may be made by the owner of a mark 
 that denotes the maker rather than the quality of the goods.^^ 
 
 § 220. Territorial Extent of Technical Trade-Mark Rights. — 
 There is a serious conflict in the authorities on this point. It 
 has sometimes been said that there is no territorial limit to trade- 
 mark rights. This is true in the sense that a trader can protect 
 his trade-mark in all the markets in which he sells, without 
 territorial limit, but is it true also that one who has acquired a 
 technical trade-mark, and used it in a limited territory, has a 
 prior right to its use throughout the whole country without re- 
 gard to the rights of others who, subsequent to his adoption of the 
 mark, may have used it in an entirely different territory? In cases 
 of unfair competition it is held that protection will be limited 
 to territory in which the applicant's goods have been sold.^" It 
 was distinctly stated in Metcalf v. Hanover Star Milling Co.,^^ 
 that there are no territorial limits in the protection of a trade- 
 
 rs Independent Baking Powder Co. v. 
 Boorman, 175 Fed. 448. 
 
 29 Loonen v. Deitsch, 189 Fed. 487 
 ("Comilo," first used for tooth 
 brushes, allowed to be used by the 
 same maker for other kinds of brushes 
 as well). 
 
 ">C. A. Briggs Co. v. National 
 Wafer Co., 215 Mass. 100 (citing 
 and discussing the authorities). See 
 also Eastern Outfitting Co. v. ManVf- 
 heim, 59 Wash. 428. 
 
 ^^ Metcalf V. Hanover Star Milling 
 Co., 204 Fed. 211 (C. C. A. 5th Cir.). 
 Appeal from a decree of the District 
 Court granting a temporary injunc- 
 tion restraining the defendant from 
 unfair competition and infringing the 
 plaintiff's trade-mark. 
 
 The complaint set out that the 
 plaintiff, Hanover Star Milling Co., 
 had been engaged for 27 years in the 
 manufacture of a popular grade of 
 flour known as "Tea Rose," and that 
 plaintiff had built up a lucrative busi- 
 ness in such flour in certain southern 
 
 states. That the defendant was seUing 
 flour not niade by the plaintiff, in 
 packages simulating the plaintiff's as 
 "Original Tea Rose Flour," in the 
 same territory in which the plaintiff's 
 product was sold. The defense set 
 up the fact that the plaintiff was not 
 the first user of the trade-mark "Tea 
 Rose" as applied to flour. Held that 
 as complainant was not the originator 
 or first appropriator of the name "Tea 
 Rose" as appUed to flour, but that 
 both the defendant and another mill- 
 ing concern had used the mark in that 
 connection long prior to complainant's 
 adoption thereof, that the plaintiff 
 was not entitled to relief. 
 
 "Nor is property in a trade-mark 
 limited to its enjoyment by territorial 
 bounds, but may be asserted and pro- 
 tected wherever the law affords a 
 remedy for wrongs" (citing Saxlehner 
 V. Eisner Mendelson Co., 179 U. S. 19, 
 and Derringer v. Plate, 29 Cal. 292). 
 There is no further discussion of the 
 question in the opinion. 
 
418 
 
 Acquisition of Technical Tradb-Makks 
 
 mark. The same view of the law seems to be imphed in United 
 Drug Co. v. Theodore Rectanus Co.^^ 
 
 In Perkins v. Apollo Bros.,^^ we find the following dictum — 
 "And it makes no difference that the plaintiff's mark may be for 
 the present somewhat restricted, nor that the defendant and the 
 plaintiff are not yet appeahng to the same trade. At any time 
 these conditions may change." *^ 
 
 There is, however, a carefully considered opinion in the Circuit 
 Court of Appeals for the Seventh Circuit, Hanover Star Milling Co. 
 V.Allen & Wheeler Co.,^^ in which the conclusionis reached that even 
 a technical trade-mark is not ordinarily entitled to protection out- 
 side of the territory in which its owner has marketed his goods. ^^ 
 
 " 206 Fed. 570 (D. C. Ky. 1913). " Hanover Star Milling Co. v. AUen 
 Plaintiff's predecessor, prior to 1880, & Wheeler Co., 208 Fed. 513. Appeal 
 
 adopted a trade-mark for medicinal 
 preparations and registered it in 
 the Patent Office in 1900. Defend- 
 ants, without any knowledge of 
 this, had from 1883 used the same 
 trade-mark for medicinal tablets in a 
 territory distant from that occupied 
 by the first user. (The question of 
 territorial hmits was not further dis- 
 cussed.) This case is now before the 
 United States Supreme Court. 
 
 " 197 Fed. 476, 478. 
 
 '< The reasoning on which the view 
 set forth in the preceding cases is of 
 would most naturally be based, is ex- 
 pressed in the dissenting opinion of 
 Chadwick, J., in the above cited unfair 
 competition case of Eastern Outfitting 
 Co. V. Mannheim, 59 Wash. 428, as 
 follows: He objects to the reasoning of 
 the prevaiUng opinion in that it "pro- 
 ceeds upon the theory that a business 
 once estabUshed must cover a whole 
 field in its inception, rather than upon 
 the evident fact, proven by the history 
 of the whole businessworld,that a busi- 
 ness legitimately organized is entitled 
 to the protection of the law in its devel- 
 opment from a small local concern to 
 the larger concern into which it had 
 the natural right to grow." 
 
 from an order granting a preliminary 
 injunction restraining the defendants 
 from infringing the plaintiff's trade- 
 mark. 
 
 The complainant, Allen & Wheeler 
 Co., had been a manufacturer of 
 flour, in Ohio, since 1872, and used the 
 words "Tea Rose" as a common-law 
 trade-mark. Its trade was confined 
 to the territory north of the Ohio 
 River. The defendant conducted a 
 flour mill in Illinois, and since 1893 
 has used the words "Tea Rose" in 
 marking its flour sacks. The defend- 
 ant adopted the "Tea Rose" mark in 
 good faith with no knowledge that 
 anyone else was using the brand. It 
 built up an extensive business in the 
 southern States. The court found that 
 in the flour trade in the southeastern 
 territory the mark "Tea Rose" had 
 come to mean the defendant's flour 
 and nothing else. 
 
 Held, that the complainant was not 
 entitled to an injunction restraining 
 the defendant from using the name 
 "Tea Rose" in the southern States. 
 
 '» Thomas G. Carroll <Sk Sons Co. v. 
 Mcllvaine & Baldwin, Inc., 171 
 Fed. 125; afi'd 183 Fed. 22. "Balti- 
 more Club" as a trade-mark for 
 
Territorial Extent of Trade-Mark Rights 419 
 
 The following qualification of the rule suggested by Baker, J., 
 in, his opinion in Hanover Star Milling Co. v. Allen & Wheeler Co., 
 should be noted — "If the junior has not established his trade 
 in good faith, or if, having appropriated certain marks in an 
 honest belief, he should attempt to forestall the elder trader by 
 hastening into markets the elder was arranging to occupy, it 
 might be that equity would have no difficulty in recognizing an 
 inchoate right in the elder to precedence and dominance, for hon- 
 esty and fair dealing should always be a strong appeal to con- 
 science" " 
 
 The United States Supreme Court recently passed on the ques- 
 tions involved in the Hanover Star Milling Company cases.'* 
 Its decision upholds the rights of the Hanover Co., reversing the 
 Circuit Court of Appeals of the Fifth District '^ and affirming the 
 view of the Circuit Court of Appeals of the Seventh District.*" 
 Mr. Justice Pitney in delivering the opinion wrote in reference to 
 the territorial limits of trade-mark protection as follows: 
 
 "That property in a trade-mark is not limited in its enjoyment 
 by territorial bounds, but may be asserted and protected wherever 
 the law affords a remedy for wrongs, is true in a limited sense. 
 Into whatever markets the use of a trade-mark has extended, or 
 its meaning has become known, there will the manufacturer or 
 trader whose trade is pirated by an infringing use be entitled to 
 protection and redress. But this is not to say that the proprietor 
 of a trade-mark, good in the markets where it has been employed, 
 can monopolize markets that his trade has never reached and 
 where the mark signifies not his goods but those of another. We 
 agree with the court below (208 Fed. Rep. 519) that 'Since it is 
 the trade, and not the mark, that is to be protected, a trade-mark 
 acknowledges no territorial boundaries or municipalities or states 
 or nations, but extends to every market where the trader's goods 
 have become known and identified by his use of the mark. But 
 
 whiskey, although assumed to have " 208 Fed. 513, 522. 
 
 been first used in Baltimore, could be '' Hanover Star Milling Co. v. Met- 
 
 claimed as a trade-mark by a New calf, 240 U. S. 403. 
 
 York dealer who had for a long time " Metcalf v. Hanover S. Milling Co., 
 
 dealt in whiskey under that name, and 204 Fed. 211. 
 
 built up a large trade without protest, *" Hanover S. Milling Co. v. Allen & 
 
 while theBaltimore trader's trade had Wheeler Co., 208 Fed.. 513. 
 
 been local and never extended to the 
 
 neighborhood of New York. 
 
420 Acquisition op Technical Trade-Marks 
 
 the mark, of itself, cannot travel to markets where there is no 
 article to wear the badge and no trader to offer the article.' 
 
 " To say that a trade-mark right is not limited in its enjoyment 
 by territorial bounds, is inconsistent with saying that it extends as 
 far as the sovereignty in which it has been enjoyed. If the ter- 
 ritorial bounds of sovereignty do not limit, how can they enlarge 
 such a right? And if the mere adoption and use of a trade-mark 
 in a limited market shall (without statute) create an exclusive 
 ownership of the mark throughout the bounds of the sovereignty, 
 the question at once arises, 'What sovereignty?' " 
 
 It should be remembered that this case involved parties both 
 of which owned sustantial equities in the name Tea Rose as as- 
 sociated with their product. The case is most unusual in many 
 features. It is doubtful if it is authority for the doctrine that the 
 first adopter and user of a true trade-mark could not oust a later 
 user of the mark from territory he (the first user) had not actually 
 occupied, provided he moved with reasonable promptness. 
 
 For further discussion of this question see chapter on "Reme- 
 dies." 
 
 § 221. Trade-mark Protection Limited to Goods of the Same 
 Class. — Since the purpose of the trade-mark is to protect the 
 business in which it is used, it follows that the owner of the 
 trade-mark cannot prevent its use by another trader for goods 
 of an entirely different class. The law places no inhibition 
 upon the use of the same mark so long as the goods to which this 
 applies are so distinctive in class and quality as to forbid the prob- 
 ability of confusion in trade.^^ 
 
 The question is where to draw the line between goods that are 
 sufficiently similar to those of the owner of the trade-mark to 
 create confusion in the public mind, and those that are so dis- 
 similar that there is no probability of such confusion. The general 
 rule is stated as being that the owner "must have used his trade- 
 mark on the same class, but not necessarily on the same species 
 of goods, as the alleged infringer in order to entitle him to its pro- 
 tection against infringement. "^^ 
 
 The test is whether the public is likely to be misled into sup- 
 posing that the competitor's goods, though not of just the same 
 
 " G. & J. Tire Co. v. J. G. Motor 
 
 " Layton Pure Food Co. v. Church & 
 
 Car Co., 39 App. D. C. 508, 511 ' 
 
 ' Dwight Co., 182 Fed. 35, C. C. A., 8th 
 
 (1913). 
 
 Ct. 
 
Protection Limited to Goods op Same Class 421 
 
 description, are nevertheless the goods of the owner of the trade- 
 mark/^ It has been said that the benefit of the doubt where there 
 is a question whether or not the goods are of the same class, will 
 be given to the owner of the trade-mark.^^ To illustrate, it has 
 been held that the first named goods in the following list are 
 sufficiently near in description or class to the second named goods, 
 to entitle the dealer in the first named to protection in his trade- 
 mark: 
 
 Shovels to pickaxes. ^^ 
 
 Baking powder to baking soda and saleratus.*^ 
 
 Baking powder to baking soda/^ 
 
 Chewing tobacco to cigarettes.'** 
 
 Toilet brushes to tooth brushes.*' 
 
 Sweaters to knitted underwear.^" 
 
 "Half and Half" to pale ale." 
 
 In the following list the first named goods have been held to 
 belong to a different class from the second named goods so that 
 the owner of the trade-mark applied to the latter was not entitled 
 to prevent the use of the same mark on the former: 
 
 Cotton cloths and prints and calicoes.*^ 
 
 Ginger snaps to soda crackers and jumbles to drops.^^ 
 
 *' It is a recognized rule that the *' Collins Co. v. Oliver Ames & Sons 
 
 different species of goods are of the Corp., 18 Fed. 561. 
 
 same class when a certain trade-mark *' Church & Dwight Co. v. Russ, 99 
 
 used on them would enable an un- Fed. 276. 
 
 scrupulous dealer to readily palm off " Lay ton Pure Food Co. v. Church 
 
 on an unsuspecting purchaser the & Dwight Co., 182 Fed. 36, C. C. 
 
 goods "of one make when he sup- ^ American Tobacco Co. v. Polacsek, 
 
 posed he was receiving the goods of 170 Fed. 117; see also Carroll v. 
 
 another." N. Wolf & Sons v. Lmd & Ertheiler, 1 Fed. 688. 
 
 Taylor, 41 App. D. C. 514, 515 (1914). « Florence Manf. Co. v. T. G. Dowd 
 
 " " Courts should not be astute to & Co., 178 Fed. 73 (C. C. A.), 
 
 recognize in favor of an infringer fine '" Northwestern Knitting Co. v. 
 
 distinctions between different articles Garon, 112 Minn. 321. 
 
 of merchandise of the same general "' Bass, Ratcliff & Grettan Co. v. 
 
 nature, and should resolve against the Feigenspan, 96 Fed. 206, C. C, N. Y. 
 
 wrongdoer any fair doubt whether the 1899. 
 
 public may or may not be deceived '^ Amoskeag Mfg. Co. v. Garner, 55 
 
 through the application of the spurious Barb. 151 . 
 
 symbol." Bass, Ratcliff & Gretton Co. " Va. Baking Co. v. Southern Biscuit 
 
 v. Feigenspan, 96 Fed. 206 (C. C, Works, 111 Va. 227. - 
 N. Y. 1899). 
 
422 
 
 Acquisition of Technical Trade-Marks 
 
 Cheese to butter." 
 
 Ice cream to milk and milk products.^^ 
 
 Fire extinguishers to automobiles.^^ 
 
 In protecting a trade-mark against its use on goods of a some- 
 what different class, it is sometimes considered that a trader has a 
 reasonable right to extend his trade under a trade-mark which his 
 efforts in the past have made valuable to a wider line of goods than 
 those in which he may deal at the time he seeks protection for his 
 trade-mark." There is also an element of injury to reputation, 
 in the use of a trade-mark by competitors on similar but not 
 identical goods, which is sometimes given weight, although there 
 may not be any actual diversion of trade. ^* 
 
 ^* Lawrence v. P. E. Sharpkss Co., 
 203 Fed. 762. 
 
 '* Borden's Ice Cream Co. v. Borden's 
 Condensed Milk Co., 201 Fed. 510 
 (C. C. A. 1912). 
 
 ^^ Simplex Auto Co. v. Kahnweiler, 
 162 App. Div. 480. 
 
 "This point was suggested in the 
 Collins Co. V.Oliver Ames & Sons Corp., 
 18 Fed. 561. However, in the recent 
 case of Borden's Ice Cream Co. v. 
 Borden's Condensed Milk Company, 201 
 Fed. 510, it was held that the possibil- 
 ity that the complainant might extend 
 its business so as to include the making 
 of ice cream was not sufficient to 
 entitle it to restrain the use of the 
 
 name Borden's for ice cream by the 
 defendant. 
 
 s* It is held in a case under the 
 Federal Act that coffee and cocoa are 
 sufficiently similar in class to prevent 
 a registration of the same mark for 
 coffee as was already in use for cocoa, 
 on the ground chiefly of the possibility 
 of the mark being applied to an in- 
 ferior grade of coffee and so injuring 
 the reputation of the cocoa manufac- 
 turer. In the above cited case of Bor- 
 den's Ice Cream Company v. Borden's 
 Condensed Milk Company it was con- 
 sidered that it was premature to 
 consider the possibility of damage to 
 reputation since the defendant had 
 not begun to sell any goods. 
 
CHAPTER XVI 
 
 Registebed Trade-Marks Under the U. S. Trade-Mark Act 
 
 Section 222. Introductory. 
 
 223. Advantages of registration. 
 
 224. History of U. S. trade-mark legislation; constitutionality. 
 
 225. Registration by owners. 
 
 226. Declaration. 
 
 227. Designation of agent by non-residents. 
 
 228. Foreign applicants. 
 
 229. Unregistrable trade-marks. 
 
 230. Who may oppose. 
 
 231. Interference. 
 
 232. Appeals to the conmiissioner. 
 
 233. Appeals to the Courts. 
 
 234. Assignment of trade-mark. 
 
 235. Certificates of registration. 
 
 236. Period of protection. 
 
 237. Cancellation of registration. 
 
 238. Fees. 
 
 239. Repayment of fees. i 
 
 240. Liability for infringement. 
 
 241. Jurisdiction of the courts. 
 
 242. Appeals to the United States Supreme Court. 
 
 243. Scope of court's powers. 
 
 244. Court may destroy infringing marks. 
 
 245. Trade-marks fraudulently used. 
 
 246. Cancellation of the registration of a trade-mark by a court in an 
 
 equity suit. 
 
 247. Effect of the act on prior rights. 
 
 248. Pending applications. 
 
 249. Registration fraudulently procured. 
 
 250. Rules for conducting proceedings. 
 
 251. Importation of articles bearing infringing marks. 
 
 252. Notice of registration.' 
 
 253. Definitions. 
 
 254. When act takes effect. 
 
 § 222. Introductory. — The law of trade-marks in this country 
 has until recent years been almost exclusively, and is still in large 
 measure, a development of the common law. The preceding 
 
 423 
 
424 Registered Trade-Marks 
 
 chapters deal in general with common-law trade-marks irrespective 
 of statutory provisions. Trade-mark statutes have, as their pur- 
 pose, not the creation, but the regulation of trade-mark rights by 
 providing remedies for their enforcement." 
 
 In Great Britain the first act for the registration of trade- 
 marks, was passed in 1875. The statutory system has become 
 a very prominent feature in the law of trade-marks in that coun- 
 try, and a large proportion of the English decisions regarding 
 trade-mark rights, involve the construction of the statutes re- 
 lating thereto. In this country, however, trade-mark statutes, 
 state as well as Federal, play a less important part. 
 
 § 223. Advantages of Registration. — As we have seen, it is not 
 necessary to register a trade-mark under the Federal Act in order 
 to be entitled to protection. There are, however, important 
 advantages of various kinds to be secured by such registration, 
 some of which are the following: 
 
 1. The necessity of proving adoption and continued use is 
 avoided, since the registration creates a presumption of such 
 adoption and use, sufficient to make a 'prima facie case. 
 
 2. The registration gives effectual constructive notice to the 
 public of the claim to the trade-mark and tends to give actual 
 notice, as the proposed trade-mark must be published at least 
 once in the Official Gazette of the United States Patent Office. 
 
 3. The appUcant has the benefit of the examination of his mark 
 by the Patent Office before it is registered and of the publication, 
 which tends to elicit oppositions, if there be any, which tends to 
 effect with promptness the determination of doubtful questions 
 of validity. 
 
 4. Registration is prima facie evidence of the validity of the 
 mark. 
 
 5. The registered owner may in some instances recover triple 
 damages. 
 
 6. Suit may be brought in the Federal courts to protect a mark 
 which is registered without restriction as to amount involved or 
 proving diversity of citizenship. 
 
 Trade-mark statutes have made no change in the law govern- 
 ing common-law trade-marks or in the law relating to imfair com- 
 petition. 
 
 "Registration under the statute confers no new rights to the 
 " Carroll v. Mcllvaine, 171 Fed. 125. 
 
Advantages of Registration 425 
 
 mark claimed or any greater rights than aheady exist at common 
 law without registration." ^ 
 
 The effect of the Federal act is threefold: (a) it creates a per- 
 manent record of the date of adoption and use of a mark; (b) gives 
 jurisdiction to the Federal courts where all parties are citizens 
 of the same state; ^ (c) enables treaty stipulations to be carried 
 out.^ Common-law rights as to trade-marks remain unaffected, 
 for the statute expressly states: "Nothing in this act shall prevent, 
 lessen, impeach or avoid any remedy at law or in equity, which 
 , any party aggrieved by any wrongful use of any trade-mark 
 might have had, if the provisions of this chapter had not been 
 enacted." ^ 
 
 The same is true of the English Trade-Marks Act. Speaking 
 of it. Cotton, L. J., says that formerly when a court passed on a 
 trade-mark question, a trade-mark signified a "mark to the use 
 of which the plaintiff had by user entitled himself, and the in- 
 junction was obtained where the defendant was marking his goods 
 with a mark so similar to that used by the plaintiffs as to be cal- 
 culated to pass them off as the goods of the plaintiffs. Of course, 
 in order to enable the court to arrive at that conclusion, it had to 
 be shown that the plaintiffs had for a period of time been selling 
 their goods with a mark which distinguished them. For the pur- 
 pose of seeing whether or not the mark upon their goods did dis- 
 tinguish them, it was of course necessary to see what marks were 
 in common use by the trade as regards that particular class of 
 goods, and then, having ascertained that fact, it had to be con- 
 sidered whether, having regard to the marks which were in com- 
 mon use, what was being done by the defendants was calculated 
 to pass off their goods as the goods of the plaintiffs. How is this 
 altered? It was contended in argument that the Trade-Marks 
 Act has entirely altered the question. I do not say that the effect 
 of the act may not be to give a person an absolute right to the 
 registered trade-mark so as to entitle him to restrain another per- 
 son from selling goods with that mark upon them without ref- 
 erence to the question whether or not th§ goods are sold under 
 such circumstances as to pass them off as the goods of the plain- 
 tiffs. I say nothing upon that point, but I say that, in my opin- 
 
 1 28 Am. & Eng. Encyc. 435. « V. S. v. Duell, 17 App. Cas. 
 
 ^ Hennessy v. Branuschweiger & Co., D. C. 575. 
 89 Fed. 664r-1898 (C. C. Cal.). " Act of 1905, § 23. 
 
426 Registered Trade-Marks 
 
 ion, the act in no way interferes with the exercise by a court of 
 equity of its old jurisdiction. What the act does, as I under- 
 stand it, is this: It enables persons to register a trade-mark, and 
 when they register it that is equivalent to evidence of public use 
 of it by them, and during five years the registration is prima 
 fade evidence of their exclusive right to it, and after the five 
 years it is conclusive evidence of such right." ^ 
 
 Registration does not in any way conclude any property rights 
 in a mark. All parties interested are free after registration to 
 maintain whatever rights they may have in law or in equity.^ 
 
 § 224. History of U.S. Trade-mark Legislation; Constitution- 
 ality. — The first Federal Trade-Mark Act was passed in 1870, 
 and provided for the registration of trade-marks generally without 
 regard to whether they were used in interstate or foreign commerce 
 or not. Although this act seems to have been assmned by the 
 courts, for some years, to be valid, it was held unconstitutional 
 in the litigation known as The Trade-Mark Cases, 100 U. S. 
 82, on the ground that Congress had no authority to regulate 
 instrmnents of trade not used in interstate or foreign commerce. 
 
 In 1881 a new act was passed providing for the registration and 
 protection of trade-marks used in interstate and foreign com- 
 merce. In 1905 the scope of the act was greatly extended, 
 making the machinery of the law, and the remedies provided, 
 more adequate for the protection of trade-mark owners. There 
 appears to be no doubt as to the constitutionality of this act as a 
 whole, and up to the present time no provision of it has been held 
 to be unconstitutional. 
 
 The various sections of this act are given below with comments. 
 
 Statements in the text of the Act, written in italics, indicate 
 Amendments. 
 
 § 225. Registration by Owners. — The first section of the Act 
 is as follows: 
 
 " AN ACT To authorize the registration of trade-marks used 
 in commerce with foreign nations or among the several 
 States or with Indian tribes, and to protect the same. 
 
 "Beit enacted by the Senate and House of Representatives of 
 the United States of America in Congress assembled, That the 
 
 ^ Mitchellv. Henry, IdCh.mv. 181. Silver Co., 30 App. D. C. 97-105- 
 • Wm. A. Rogers v. International 1907. 
 
Registeation by Ownees 427 
 
 owner of a trade-mark used in commerce with foreign na- 
 tions, or among the several States, or with Indian tribes, pro- 
 vided such owner shall be domiciled within the territory of 
 the United States, or resides in or is located ia any foreign 
 country which, by treaty, convention, or law, affords similar 
 privileges to the citizens of the United States, may obtain 
 registration for such trade-mark by complying with the fol- 
 lowing requirements: First, by filing in the Patent Office an 
 application therefor, in writing, addressed to the Commis- 
 sioner of Patents, signed by the applicant, specifying his 
 name, domicile, location, and citizenship; the class of mer- 
 chandise and the particular description of goods comprised 
 in such class to which the trade-mark is appropriated; a 
 statement of the mode in which the same is -applied and 
 affixed to goods, and the length of time during which the 
 trade-mark has been used; a description of the trade-mark 
 itself shall be included, if desired by the 
 ■* Fe^Tsl^wog^ ^°* °' applicant or required by the commissioner, 
 provided such description is of a character 
 to meet the approval of the commissioner. With this state- 
 ment shall be filed a drawing of the trade-mark, signed by the 
 applicant, or his attorney, and such number of specimens of 
 the trade-mark as actually used as may be required by the 
 Commissioner of Patents. Second, by paying into the 
 Treasury of the United States the sum of ten dollars, and 
 otherwise complsdng with the requirements of this act and 
 such regulations as may be prescribed by the Commissioner 
 of Patents." 
 The Act provides for registration of a trade-mark by owners 
 domiciled in the United States, or in foreign countries which by 
 treaty or law afford similar privileges to citizens of the United 
 States. As it does not prescribe what may be valid trade- 
 marks, but simply authorizes the registration of trade-marks, 
 such registration can in no way validate a trade-mark which was 
 not previously valid. The validity of a trade-mark must depend 
 upon general principles and rules of law, and not upon its regis- 
 tration.^" 
 
 The rights which a person obtains by registration of a trade- 
 mark under the statute have been held to be coterminous with 
 6" Planten v. Gedney, 221 Fed. 281. 
 
428 Registeeed Trade-Marks 
 
 the territory of the United States.^'' The privilege to foreigners 
 does not give them the right to register a trade-mark used in con- 
 nection with a product manufactured by them in the United 
 States, which a citizen of the United States would not be per- 
 mitted to manufacture in the country of which the foreigner is a 
 citizen^ 
 
 In order to register a trade-mark, the owner is required to file 
 in the Patent Office, an application in writing. This application 
 must be addressed to the Commissioner of Patents, signed by the 
 applicant, specifying his name, domicile, location and citizenship. 
 In addition, the application must contain a description of the 
 goods to which the trade-mark is to be applied, a description of 
 the trade-mark itself, a statement of the mode in which the trade- 
 mark is to be applied to the goods in connection with which it is 
 used, and the length of time the trade-mark has been used. 
 The description of the goods to which the trade-mark is 
 applied must be set out in the application with certainty. An 
 application containing a description which would include in its 
 terms all kinds of games and sporting goods has been held to be 
 too broad.* The goods to which a trade-mark is affixed must 
 conform to the description of the merchandise set out in the 
 application in order to entitle the owner to protection.* The 
 
 ^ Standard Brewery Co. v. Interboro vides that the applicant shall specify 
 
 Brewing Co., 229 Fed. 543. Writ of ' the class of merchandise and the par- 
 
 certiorari has been granted in this case, ticular description of goods comprised 
 
 ' De Nobili v. Leanda, 198 Fed. 341. in such class to which the trade-mark 
 The court held that an Italian citizen is appropriated * * * a descrip- 
 was not entitled to register a trade- tion of the trade-mark itself,' and 'a 
 mark used in connection with tobacco statement of the mode in which same 
 manufactured by him, for the reason is applied and affixed to goods. * * *' 
 that an American citizen would not Act Feb. 20, 1905, 33 Statutes at 
 be permitted to register a mark in Large, pt. 1, c. 592, p. 724 (U. S. 
 connection with tobacco manufactured Comp. St. Supp. 1911, p. 1459). In 
 in Italy. In Italy, there is a govern- compliance with this requirement com- 
 ment monopoly in the manufacture of plainants particularly describe their 
 tobacco. so-called goods as 'a weekly periodical 
 
 "In re Spalding & Bros., 27 App. devoted to fiction.' To entitle this 
 
 D. C. 314-1906. publication to protection under the 
 
 ' Atlas Mfg. Co. v. Street & Smith, trade-mark granted, it must conform 
 
 204 Fed. 398 (1913); Van Valken- to the description filed; it must be a 
 
 burgh. District J., wrote, "The trade- periodical. In Smith et al. v. Hitchcock, 
 
 mark registered is 'Nick Carter.' The 226 U. S. 53, 33 Sup. Ct. 6, the Su- 
 
 law authorizing such registration pro- preme Court held that 'Tip Top 
 
Declaration 429 
 
 trade-mark must be applied or affixed to goods. ^^ Mere use of 
 the trade-mark in connection witli the owner's business will not 
 be sufficient to entitle him to protection against infringement." 
 
 The section further provides for the filing of a drawing of the 
 trade-mark and such niunber of the specunens of the trade-mark, 
 as actually used, as the commissioner may require. It is not 
 within the power of the commissioner to require the owner to 
 make his drawing conform to a specimen of a trade-mark, which 
 has been filed ^^ but he may require the applicant to strike out the 
 description of his trade-mark from his petition and refer only to 
 his drawing." 
 
 § 226. Declaration. 
 
 " Sec. 2. That the application prescribed in the foregoing 
 section, in order to create any right whatever in favor of the 
 party filing it, must be accompanied by a written declaration 
 verified by the applicant, or by a member of the firm or an 
 ofl&cer of the corporation or association applying, to the 
 effect that the applicant believes himself or the firm, corpo- 
 ration, or association in whose behalf he makes the applica- 
 tion to be the owner of the trade-mark sought to be 
 registered, and that no other person, firm, corporation, or 
 association, to the best of the applicant's knowledge and belief, 
 has the right to use such trade-mark in 
 ^erisffgogf "'" "^ the United States, either in the identical 
 form or in such near resemblance thereto 
 ' as might be calculated to deceive; that such trade-mark is 
 used in commerce among the several States, or with foreign 
 nations, or with Indian tribes, and that the description and 
 drawing presented truly represent the trade-mark sought to 
 
 Weekly,' issued by these same com- for a trade-mark, to give not only a 
 
 plainants, and practically identical description of the trade-mark itself but 
 
 in structure with the 'Nick Carter' ' a statement of the mode in which the 
 
 publication, is not a periodical, but a same is applied and affixed to goods.' " 
 
 book." Consumers' Co. v. Hydrox Chemical 
 
 i» Diederich v. Schneider Co., 195 Co., 40 App. D. C. 284^1913. 
 
 Fed. 35, Munger, District J., "It will '■^Diederich v. Schneider Co., 195 
 
 be observed that this section contem- Fed. 35. 
 
 plates that the trade-mark is to be '■' In re Standard Underground Cable 
 
 affixed to the goods which are used Co., 27 App. D. C. 320. 
 
 in the commerce specified, as it re- " In re Atkins & Co., 29 App. D. C. 
 
 quires the applicant in his application 385. 
 
430 Registered Trade-Marks 
 
 be registered. If the applicant resides or is located in a 
 foreign country, the statement required shall, in addition to 
 the foregoing, set forth that the trade-mark has been regis- 
 tered by the applicant, or that an application for the regis- 
 tration thereof has been filed by him in the foreign country 
 in which he resides or is located, and shall give the date of such 
 registration, or the application therefor, as the case may be, 
 except that in the application in such cases it shall not be neces- 
 sary to state that the mark has been used in commerce with 
 the United States or among the States thereof. The verifica- 
 tion required by this section may be made before any person 
 within the United States authorized by law to administer 
 oaths, or, when the applicant resides in a foreign country, 
 before any minister, charge d'affaires, consul, or commercial 
 agent holding cormnission under the Govenmient of the 
 United States, or before any notary public, judge, or magis- 
 trate having an official seal and authorized to administer 
 oaths in the foreign country in which the applicant may be 
 whose authority shall be proved by a certificate of a diplo- 
 matic or consular officer of the United States." 
 The second section of the Act provides that the application 
 for registration must be accompanied by a written declaration 
 verified by the applicant or by a member of the firm or officer 
 of the corporation or association applying, to the effect (a) that the 
 applicant is the owner of the trade-mark sought to be registered, 
 (b) that no other person has the right to use such trade-mark, (c) 
 that the trade-mark is used in commerce among the several 
 states or with foreign nations or with Indian tribes, and (d) that 
 the description and drawing presented truly represent the mark 
 sought to be registered. 
 
 It follows from this requirement that mere prior use of a trade- 
 mark by its owner will not preclude him from registration, as 
 the section makes it necessary for an applicant to establish 
 his right to a trade-mark by proof of use.'* To establish trade- 
 
 This section was amended Feb. 18, Independent Brewing Co. (supra), in 
 
 1909. these words: "By section 2, in order to 
 
 " G. Heilman Brewing Co. v. Inde- procure registration, he (the owner of 
 
 pendtnt Brewing Co., 191 Fed. 489. a trade-mark) must show that such 
 
 Wolverton, District J., refers to this trade-mark is used in commerce 
 
 section in G. Heilman Brewing Co. v. among the several states or within for- 
 
Designation of Agent by Non-Residents 431 
 
 mark rights it is not necessary to prove use over a long period. 
 Use is almost entirely a question to be decided on the facts of 
 each case. No general rule can be laid down on this question. ^^ 
 If an applicant resides in a foreign country he must set forth 
 that the trade-mark has been registered by him, or that application 
 for registration has been made in the foreign country in which he 
 resides. In such case it is not necessary to state that the mark has 
 been used in commerce in the United States or among the states. 
 The verification required in the section must be made before the 
 officers designated in the Act. 
 § 227. Designation of Agent by Non-Residents. 
 
 Sec. 3. That every applicant for registration of a trade- 
 mark, or for renewal of registration of a trade-mark, who is 
 not domiciled within the United States, shall, before the 
 issuance of the certificate of registration, as hereinafter pro- 
 vided for, designate, by a notice in writing, filed in the Patent 
 Office, some person residing within the United States on 
 whom process or notice of proceedings affecting the right of 
 ownership of the trade-mark of which such applicant may 
 claim to be the owner, brought under the provisions of this 
 act or under other laws of the United States, may be served, 
 with the same force and effect as if served upon the appHcant 
 or registrant in person. For the purposes of this act it shall 
 be deemed sufficient to serve such notice upon such appli- 
 cant, registrant, or representative by leaving a copy of such 
 process or notice addressed to him at the last address of 
 which the Commissioner of Patents has been notified." 
 § 228. Foreign Applicants. 
 
 " Sec. 4. That an application for registration of a trade- 
 mark filed in this country by any person who has previously 
 regularly filed in any foreign country which, by treaty, con- 
 vention, or law, affords similar privileges to citizens of the 
 United States an application for registration of the same 
 trade-mark shall be accorded the same force and effect as 
 
 eign countries. So that registration Co., 40 App. D. C. 480. Hump Hair- 
 
 comes only after acquirement of the pin Co. v. De Long Hook & Eye Co., 
 
 right to a trade-mark by use. The 39 App. D. C. 484; Johnson v. Whekm, 
 
 complainant shows user prior to regis- 33 App. D. C. 4. 
 
 tration. If that be publication, com- " Breitenbach v. Rosenberg, 37 App. 
 
 plainant did only what the statute D. C. 102. 
 
 required of it." Be Excelsior Shoe 
 
432 Registered Trade-Makks 
 
 would be accorded to the same application if filed in this 
 country on the date on which apphcation for registration of 
 the same trade-mark was first filed in such foreign country: 
 Provided, That such application is filed in this country 
 within four months from the date on which the apphcation 
 was first filed in such foreign country: And provided, That 
 certificate of registration shall not be issued for any mark 
 for registration of which application has been filed by an 
 apphcant located in a foreign country until such mark has 
 been actually registered by the applicant in the country in 
 which he is located." 
 The fourth section of the Act gives the same force to applica- 
 tions for registrations of trade-marks previously filed in foreign 
 countries which extend similar privileges to citizens of the 
 United States, as would be accorded if the application were made 
 in this country on the date of the foreign application. In order 
 to enjoy this privilege the application must be filed within four 
 months from the date of the foreign application. Failure to make 
 the application within the statutory period, however, does not 
 deprive a foreign applicant of any rights. He merely loses the 
 benefit of having his application considered as of the date of the 
 foreign application.'" The section further provides that in such 
 case, registration will not be granted prior to actual registration in 
 the foreign country. 
 § 229. Unregistrable Trade-Marks. 
 
 " Sec. 5. That no mark by which the goods of the owner of 
 the mark may be distinguished from other goods of the same 
 class shall be refused registration as a trade-mark on account 
 of the nature of such mark unless such mark — 
 
 " (a) Consists of or comprises immoral or scandalous 
 matter. 
 
 " (6) Consists of or comprises the flag or coat of arms or 
 other insignia of the United States or any simulation thereof, 
 or of any State or municipality or of any foreign nation, or of 
 any design or picture that has been or may hereafter be 
 adopted by any fraternal society as its emblem, or of any 
 name, distinguishing mark, character, emblem, colors, flag, or 
 banner adopted by any institution, organization, club, or so- 
 ciety which was incorporated in any State in the United States 
 " Deilsch Bros. v. Loonen, 39 App. D. C. 11. 
 
Unregistrable Trade-Marks 433 
 
 prior to the date of the adoption and use by the applicant: Pro- 
 vided, That said name, distinguishing mark, 
 jatVTgTs!^'' ^^ *"* °^ character, emblem, colors, flag, or banner 
 was adopted and publicly used by said insti- 
 tution, organisation, club, or society prior to the date of adoption 
 and use by the applicant: Provided, That trade-marks which 
 are identical with a registered or known trade-mark owned 
 and in use by another and appropriated to merchandise of 
 the same descriptive properties, or which so nearly resemble 
 a registered or known trade-mark owned and in use by an- 
 other and appropriated to merchandise of the same descrip- 
 tive properties as to be likely to cause confusion or mistake 
 in the mind of the public or to deceive purchasers shall not 
 be registered : Provided, That no mark which consists merely 
 in the name of an individual, firm, corporation, or associa- 
 tion not written, printed, impressed, or woven in some par- 
 ticular or distinctive manner, or in association with a por- 
 trait of the individual, or merely in words or devices which 
 are descriptive of the goods with which they are used, or of 
 the character or quality of such goods, or merely a geograph- 
 ical name or term, shall be registered under the terms of 
 this Act: Provided further, That no portrait of a living indi- 
 vidual may be registered as a trade-mark except by the 
 consent of such individual, evidenced by an instrument in 
 writing: And provided further, That nothing herein shall pre- 
 vent the registration of any mark used by the applicant or 
 his predecessors, or by those from whom title to the mark is 
 derived, in commerce with foreign nations or among the 
 several States or with Indian tribes which was in actual and 
 exclusive use as a trade-mark of the applicant, or his pred- 
 ecessors from whom he derived title, for ten years next pre- 
 ceding February twentieth, nineteen hundred and five: 
 Provided further. That nothing herein shall prevent the regis- 
 tration of a trade-mark otherwise registrable because of its 
 being the name of the applicant or a portion thereof." 
 Instead of specifying, as does the British Act, what kinds of 
 words or marks may be registered, the fifth section of the 
 United States Act enumerates the kinds of marks which from 
 their nature, are not registrable. ' It contains a "fairly complete 
 list of those marks which manufacturers and dealers use in con- 
 
434 Registered Trade-Maeks 
 
 nection with the sale of then- goods and which the courts have 
 held not to constitute technical trade-noarks." " Those specified 
 are: 
 
 1. Immoral and Scandalous Matter. Subdivision A of this 
 section denies registration to any mark which is immoral or scan- 
 dalous in its nature. Public policy demands such restriction. 
 Moreover, marks of this character used in compliance with the 
 provisions of the ten-year clause will not be entitled to registra- 
 tion.'* 
 
 2. Flags and Other Public Insignia. Subdivision B for like 
 reason refuses registration to marks which simulate public in- 
 signia. Nor does this class of marks come within the scope of the 
 ten-year clause." The language of the clause is such that it is im- 
 possible for the owner of such mark to comply with its terms. ^^ 
 Under this subdivision registration was refused to the following 
 marks: A mark simulating a coat of arms of the state of Mary- 
 land; " a mark simulating the great seal of the United States; "^ 
 a mark simulating the great seal of the department of justice of 
 thfe United States; '' a mark consisting of an EngUsh hall-mark; "^ 
 a mark containing a representation of the Italian flag."* 
 
 3. Marks Resembling Another's Trade-Mark, etc. The first pro- 
 viso of the section includes all marks which are identical or similar 
 to known or registered trade-marks used by another on a similar 
 class of merchandise. They are forbidden registration. The 
 purpose of the Act 'being to protect trade-marks from infringe- 
 ment, it could not fulfill its purpose and allow registration to 
 similar marks. 
 
 " ThaMeus Davids Co. v. Davids, simulation of the Maryland coat of 
 
 178 Fed. 801. arms, and for this reason the appel- 
 
 " In re Cahn, Belt <& Co., 27 App. lants' trade-mark sought to be regis- 
 
 D. C. 173; Thaddeus Davids Co. v. tared does not come within the last 
 
 Davids, 233 U. S. 461. proviso of the 5th section." In re 
 
 " Thaddeus Davids Co. v. Davids, Cahn, Belt & Co., 27 App. D. C. 173. 
 
 233 U. S. 461. " In re Cahn, Belt & Co., 27 App. 
 
 » "The coat of arms of Maryland D. C. 173. 
 
 was never in the exclusive use of the " /„ ^e American Glue Co., 27 App. 
 
 applicants during any period, nor could D. C. 391. 
 
 the applicants ever acquire an exclu- " Re Connors Paint Co., 27 App. 
 
 sive use as a trade-mark of the State D. C. 389. 
 
 coat of arms. In the sense of this pro- . =* In re Gorham Mfg. Co., 41 App. 
 
 viso, the applicants had the actual, D. C. 263. 
 
 but never had the exclusive, use of this " De NoUli v. Scanda, 198 Fed. 341. 
 
Unregistrable Trade-Marks 435 
 
 (a) Deceptively Similar. For instance, the following marks have 
 been held similar or identical within the meaning of this proviso: 
 
 "Worth" and "Our Worth." ^ 
 
 "Hoff" and "Leopold Hoff's." ^^ 
 
 "Green Ribbon" and "Green River." ^s 
 
 "Chologestin" and "Chologen." ^^ 
 
 "Creo-Carbolin" and "Carbolineum." '" 
 
 "Amber Bead" and "Amber." 'i 
 
 "Col. Willet," with representation of Colonial Officer; and por- 
 trait of Gen. Anthony Wayne.'^ 
 
 "Autola" and "Au-to-do." " 
 
 Indian head in profile and a front view of Indian head.^* 
 
 "Hydronon" and "Hydrocide." '' 
 
 "Chancellor's Club" and "Club." "« 
 
 "Old Tucker" and "J. C. Tucker." «^ 
 
 Representation of a peacock at top, with words "Gold Top" 
 (beer); and representation of a peacock with words "Ye Peacock 
 Ale." '^ 
 
 Representation of a vineyard, herd of camels and two men 
 bearing a grape; and representation of two men similarly dressed 
 bearing a bunch of grapes.'^ 
 
 On the other hand, the following marks were held not to be 
 similar : 
 
 Pictiu"e of a crow with the words "Old Crow" and picture of 
 three birds of smaller size in the dead branches of a tree with the 
 words "Raven Valley." ^° 
 
 26 In re Nash Hardware Co., 33 App. " In re Wilcox & Co., 36 App. D. C. 
 
 D. C. 221. 107. 
 
 " In re Hoff, 33 App. D. C. '* In re Indian Portland Cement Co., 
 
 233. 30 App. D. C. 463. 
 
 2* Lang v. Green River Distilling Co., "^ Re Barrett Mfg. Co., 41 App. 
 
 33 App. D. C. 506. D. C. 513. 
 
 29 Breitenbach v. Rosenberg, 37 App. " In re Herbst Importing Co., 30 
 
 D. C. 102. App. D. C. 297. 
 
 '» In re Barrett Mfg. Co., 37 App. '' Brown-Forman Co. v. Beech Hill 
 
 D. C. 111. Co., 30 App. D. C. 485. 
 
 " In re Independent Breweries Co., " In re Reisch Brewing Co., 39 App. 
 
 39 App. D. C. 118. D. C. 445. 
 
 *2 Wayne County Preserving Co. v. " Carmel Wine Co. v. California 
 
 Burt Olney Canning Co., 32 App. D. C. Winery, 38 App. DT C. 1. 
 
 279. *° Gaines v. Knecht, 27 App. D. C. 
 
 530. 
 
436 Registeeed Trade-Marks 
 
 Picture of a crow with the words "Old Crow" and picture of a 
 blue-jay perched in the branches of a tree with the words "Old 
 J." " 
 
 "Sozodont" and "Kalodont." '^ 
 
 Outline of a six-pointed star and a comet consisting of a solid 
 five-pointed star with a tail.^' 
 
 "Victor" and "Victoria." " 
 
 "Sozodont" and "Zodenta." « 
 
 "Pinozyme" and " Peptenzyme." ** 
 ' "Grand-Ma's" and "Mother's." « 
 
 "Havoline" and "Valvoline." ^ 
 
 "Henderson" and "Anderson." « 
 
 "Mammoth" with picture of prehistoric animal; and represen- 
 tation of two elephants.^" 
 
 (b) The Goods of Same Descriptive Property. The fact that in 
 registering a trade-mark for certain articles they are included in 
 one of the comprehensive classes established by the Commis- 
 sioner of Patents pursuant to Sec. 2 of the Ac^ of May 4, 1906, 
 amending the laws relating to the registration of trade-marks, 
 does not, of itself make them of the same descriptive properties 
 as other articles included in the same class. ^"^ As to what are 
 goods of the same "descriptive properties" it has been held that 
 the following are not of the same class: 
 
 Salted, smoked and canned fish and crackers and breakfast 
 cereals.^' 
 
 Peroxide of hydrogen and soft drinks.** 
 
 Hairpins and hooks and eyes. 
 
 63 
 
 *' Gaines v. Carlton Imp. Co., 27 *' Valvoline Co. v. Havoline Co., 211 
 
 App. D. C. 571. Fed. 189. 
 
 *' Landespriv v. Hall & Ritckel, 36 " Buchanan-Anderson Co. v. Breen, 
 
 App. D. C. 532. 27 App. D. C. 573. 
 
 " Hutchinson, Pierce & Co. v. "' Summit City Soap Works v. Stand- 
 
 Loewy, 163 Fed. 42. ard Soap Co., 37 App. D. C. 604. 
 
 " McLean Co. v. Adams Mfg. Co., '»" Hump Hairpin Co. v. DeLong 
 
 31 App. D. C. 509. Hook & Eye Co., 39 App. D. C. 484. 
 
 *^Hall V. Ingram, 28 App. D. C. ^'^ Johnson Co. v. Smith & Co., 37 
 
 454. App. D. C. 107. 
 
 " Waterbury Chemical Co. v. Reed, '^ Consumers Co. v. Hydrox Chem- 
 
 41 App. D. C. 256. ical Co., 40 App. D. C. 284. 
 
 " Bromund Co. v. Columbia Wax ^' Hump Hairpin Co. v. DeLong 
 
 Co., 41 App. D. C. 506. Hook & Eye Co., 39 App. D. C. 484. 
 
Unregistrable Trade-Marks 437 
 
 Automobiles and rubber tires. ^^ 
 
 Kalsomine and white lead." 
 
 Chewing gum and candy. ^^ 
 
 Soap, scouring powder, washing compounds, window and metal 
 cleaners; soap and perfumeries.^' 
 
 Pickles; canned fruits and vegetables.^* 
 
 On the other hand, the following goods have been held to be of 
 a similar class: 
 
 Coffee and chocolate. ^^ 
 
 Beverage composed in part from malt and containing less than 
 one-half of one per cent alcohol and beer.*" 
 
 Canned sardines and canned fish." 
 
 Paint colors and paste paints and paints, stains, etc.*^ 
 
 Coal and wood stoves and gas and gasoline stoves."^ 
 
 Ground roots and bark prepared to mix with Holland gin to 
 make bitters and a finished preparation of the same ingredients." 
 
 Electric lamps and incandescent mantles.^^ 
 
 (c) Words Likely to Deceive Purchasers. The following marks 
 were refused registration on the ground that they were deceptive: 
 "Boy Scouts" applied to shoes in no way connected with that 
 organization.*^ "Half Spanish" applied to cigars which did not 
 contain one-half Spanish tobacco." "Taylor" in connection with 
 a whisky purporting to be pure, when in fact it was adulterated.*^ 
 "Brookwood" in connection with a whisky purporting to be pure, 
 when in fact it was adulterated.*^ 
 
 4. Marks Consisting of Names Only. Where the trade-mark 
 
 " G. & J. Tire Co. v. G. J. G. Motor '^ Phwnix Paint dt Varnish Co. v. 
 
 Car Co., 39 App. D, C. 508. Lewis & Bros., 32 App. D. C. 285. 
 
 66 Muralo Co. v. National Lead Co., " American Stove Co. v. Detroit 
 
 36 App. D. C. 541. Stove Works, 31 App. D. C. 304. 
 
 " Dunstan Co. v. Autosak Gum & "^ Schuster Co. v. Mulhr, 28 App. 
 
 Chocolate Co., 113 Ms. Dec. 265. D. C. 409. 
 
 6' Sexton & Co. v. Arnold & Co., " General Electric Co. v. Anglo- 
 
 113 Ms. Dec. 242. American Incandescent Light Co., 114 
 
 " Sexton & Co. v. Alart & JifcGuire Mo. Dec. 8. 
 
 Co., 114 Ms. Dec. 320. , '^ Re Excelsior Shoe Co., 40 App. 
 
 » Walter Baker Co. v. Harrison, 32 D. C. 480. 
 
 App. D. C. 272. «' Kildow Cigar Co. v. Sprague Cigar 
 
 6» In re Independent Breweries Co., Co., 35 App. D. C. 345. 
 
 39 App. D. C. 118. «« Levy v. Uri, 31 App. D. C. 441. 
 
 61 7n re John Braadland, Ltd., 37 «'7w re Wright, 33 App. D. C. 
 
 App. D. C. 602. 510. 
 
438 Registeeed Trade-Marks 
 
 consists merely of a name of a person or firm without any dis- 
 tinguishing feature it is not registrable under the act.™ Under 
 certain conditions, however, such a mark may be registered. 
 
 (a) Distinctive Script. If a mark is written or printed in a dis- 
 tinctive style, it may be registered. "It is believed that the con- 
 trolling principle underlying the requirement of the statute that 
 a mere name unless written or printed in a descriptive manner 
 may not be registered, is that the distinctive manner in which 
 the name is displayed must be of a character as to give such a 
 distinctive impression to the eye of the ordinary observer as to 
 outweigh the significance of the mere name." Ex parte Polar 
 Knitting MillsJ^ In the case in the foot-note it was held 
 that the mark was not written in such distinctive manner as to 
 entitle the complainant to registration.''^" 
 
 (b) In Connection with a Portrait. If a mark consisting of a 
 name is accompanied by a portrait it may be registered. 
 
 (c) Name of Applicant. By amendment in 1911 a mark con- 
 sisting of a name, where such mark was the name of the applicant, 
 became registrable. Such a name may become registrable if the 
 owner of the mark has used such mark in accordance to the re- 
 quirements set forth in the ten-year clause.''^ 
 
 5. Descriptive Words and Devices. The provision which forbids 
 the registration of marks which are descriptive of the goods to 
 which they are applied is merely a declaration of an accepted 
 principle of the common law.''* The Patent Office is not justified 
 in presuming that a trade-mark applied to a patented article has 
 become generic, or descriptive, in an effort to prevent a monopoly 
 from continuing beyond the fife of the patent.''*" The courts 
 have held the following marks to be descriptive in character and 
 therefore not entitled to registration: 
 
 "Boy Scouts" (shoes).'^ 
 
 '» Kentucky Distilleries Co. v. Old D. C. 125. Ex parte Alden, 131 0. 
 
 Lexington Club Distilling Co., 31 App. G. 2419. 
 
 D. C. 223. In re Siuxess Co., 34 App. '^ Thaddeiis Davids Co. v. Davids, 
 
 D. C. 443; Oliver Plow Wks. v. Oliver 233 U. S. 461. 
 
 Mfg. Co., 40 App. D. C. 125; In re " In re National Phonograph Co., 29 
 
 Artesian Mfg. Co., 37 App. D. C. 113. App. D. C. 142. 
 
 " 154 Off. Gaz. 251. "" UdeUrPredock Mfg. Co. v. Udell 
 
 ■"■" In re Artesian Mfg. Co., 37 App. Works, 32 App. D. C. 282. 
 
 D. C. 113. Oliver v. Oliver, 40 App. '* In re Excelsior Shoe Co., 40 App. 
 
 D. C. 480. 
 
Unregistrable Trade-Marks 439 
 
 "BrilUant" (flour)." 
 
 "Inter-phone" (telephone switching apparatus).''* 
 "Evergreen" (canned fruits and vegetables)." 
 "No-sag" (hand bags).^» 
 "Black Caps" (medicine) .'« 
 "Getwell" (medicines) .8'' 
 "Kantleek" (atomizers, etc.).^* 
 "Black Capsules" (medicines).*^ 
 "Asbestos" (shoes).*' 
 
 A mark consisting of a figure representing a ball bearing.** 
 "Next-to-Beer" (drink).*'^ 
 "Mountain Dew" (whisky).** 
 "Crystal" (beer).^^ 
 
 A mark consisting of a representation of a loving cup with the 
 word "Trophy." ** 
 
 "Standard" (phonographs).*' 
 
 "Oriental Cream" (face lotion).'" 
 
 A mark representing the rim of a wheel with a tire.'^ 
 
 "Circular Loom." '^ 
 
 "Self-loading" (cartridges) .'' 
 
 On the other hand, the following terms were held registrable: 
 
 "Cream" (baking powder).'^ 
 
 '5 Savers Milling Co. v. Kehlor Flour '* In re Central Consumers Co., 32 
 
 Mills Co., 39 App. D. C. 635. App. D. C. 523. 
 
 '« In re Western Electric Co., 39 App. *' Dennehy & Co. v. Robertson Co., 
 
 D. C. 420. 32 App. D. C. 355. 
 
 " Sears & Nichols Co. v. Brakeley, 38 <" In re South Brewery Co., 32 App. 
 
 App. D. C. 530. D. C. 591. 
 
 '8 In re Freund Bros. tSk Co., 35 App. ™ In re Meyer Bros. Coffee & Spice 
 
 D. C. 353. Co., 35 App. D. C. 351. 
 
 " In re Safety Remedy Co., 35 App. *' In re National Phonograph Co., 29 
 
 D. C. 353. App. D. C. 142. 
 
 «" In re Anti-Cori-Zine Chemical Co., " In re Hopkins, 29 App. D. C. 118. 
 
 34 App. D. C. 191. "■ In re Motz Tire Co., 40 App. D. C. 
 
 " In re Seamless Rubber Co., 34 App. 487. 
 
 D. C. 357. ""^ In re American Circular Loom Co., 
 
 '2 Planten v. Pharmacy Co., 33 App. 28 App. D. C. 450. 
 
 D. C. 268. " Winchester Repeating Arms Co. v. 
 
 «' Johnson v. Brandau, 32 App. D. C. Peters Cartridge Co., 30 App. D. C. 505. 
 
 348. ^* International Food Co. v. Priee 
 
 " In re Schweinfurter, 38 App. D. C. Baking Powder Co., 37 App. D. C. 
 
 279. 137. 
 
440 
 
 Registered Trade-Maeks 
 
 "Navy" (candy) .^5 
 
 6. Geographical Terms. Marks consisting of geographical terms 
 are not registrable under the Act. These terms include not only 
 names indicating cities, countries, or subdivisions of countries, but 
 also to names which apply to a particular section of the globe.'" 
 The provision is declaratory of the well-settled common-law rule." 
 If, however, a geographical term has been used as a trade-mark in 
 such manner as to fulfill the requirement of the ten-year clause it 
 may be registered.'* The following terms have been denied regis- 
 tration : ■ 
 
 "Nubia" (cigarettes).'' 
 
 "Orient" (typewriter ribbon).^ 
 
 "British America" (tobacco).^ 
 
 "Orange Grove." ' 
 
 "Oriental." * 
 
 On the other hand, the following marks are registered: 
 
 "Chartreuse" (cordial).^ 
 
 The United States Supreme Court has recently held that the 
 name "The American Girl" for shoes is neither geographical or 
 
 '5 In re National Candy Co., 35 App. 
 D. C. 351. 
 
 *= In re Crescent Typewriter Co., 30 
 App. D. C. 324. The court denied 
 registration to the mark "Orient" as 
 appHed to typewriter ribbons on the 
 ground that it was a geographical 
 term. Van Orsdel, J. , said : ' ' We think 
 this provision of the statute is broad 
 enough to prohibit the use of any word 
 that has an exclusive geographical sig- 
 nificance or that would suggest any 
 particular geographical location. Cer- 
 tainly, the use of a name indicating a 
 particular place is prohibited, such as 
 the name of a city, or country, or sub- 
 division of a country. With equal 
 certainty do we think that it prohibits 
 the use of a name that applies to a 
 particular section of the globe, as, in 
 this instance, to a section composed 
 of a number of countries. The word 
 'Orient' is generally understood to 
 refer to certain eastern countries^ 
 
 specifically the region east and south- 
 east of the leading states of Europe, 
 including, among others, Turkey, 
 Persia, Egypt, and India. The word 
 has a fixed and definite use in our 
 vocabulary." 
 
 " Mcllhenney v. New Iberia Co., 34 
 App. D. C. 430. 
 
 '* Thaddeits Davids v. Davids, 233 
 U. S. 461; Kayser & Co. v. Italian 
 Silk Underwear Co., 160 App. Div. 607. 
 
 '9 Apollo Bros. V. Perkins, 207 Fed. 
 530. 
 
 1 In re Crescent Typewriter Co., 30 
 App. D. C. 324. 
 
 ^ British^American Tobacco Co. v. 
 British-American Cigar Stores, 206 Fed. 
 189. 
 
 'H. Becker Co. v. C. A. Gambrill 
 Mfg. Co., 38 App. D. C. 535. 
 
 * In re Hopkins, 29 App. D. C. 
 118. 
 
 ' Baglin v. Cvsenier Co., 221 U. S. 
 580. 
 
Unkegisteable Trade-Makks 441 
 
 descriptive.^" The court said of the name, "It is a fanciful desig- 
 nation arbitrarily selected." The court noted that if the name 
 had been "American Shoe " its ruling might have been diiTerent. 
 See also "American Express Sealing Wax " case.^^ 
 
 For cases as to the use of geographical names as common-law 
 trade-marks see chapters on " Geographical Names " and "What 
 May be Appropriated as a Trade-Mark." 
 
 7. Portraits. The portrait of a living individual will not be 
 registered as a trade-mark unless the application is accompanied 
 by the written consent of the person portrayed to use the portrait 
 as a trade-mark. 
 
 8. The Ten-Year Clause. The fourth proviso, commonly called 
 the ten-year clause, was enacted in these words: 
 
 And Provided further, That nothing herein shall prevent 
 the registration of any mark used by the apphcant or his pred- 
 ecessors, or by those from whom title to the mark is de- 
 rived, in commerce with foreign nations or among the several 
 States, or with Indian tribes, which was in actual and ex- 
 clusive use as a trade-mark of the applicant or his predeces- 
 sors from whom he derived title for ten years next preceding 
 the passage of this Act." 
 A brief review of the history of the bill in Congress is essential 
 
 to a clear understanding of this statute. As origiually presented 
 
 for the consideration of Congress, the text of the proviso was as 
 
 follows: 
 
 "And provided further, that nothing herein shall prevent 
 the registration of any trade-mark used by the applicant or 
 his predecessors, or by those from whom title to the trade- 
 mark is derived, in commerce with foreign nations or among 
 the several States or with Indian tribes which was in actual 
 and lawful use as a trade-mark of the applicant, or his 
 predecessors from whom he derived title over ten years 
 next preceding February twentieth, nineteen hundred and 
 five." 
 In the course of its enactment by the legislature, its wording 
 
 was changed and manifestly this charge of language was made 
 
 with a definite purpose. It was thought that the word "trade- 
 s'" Hamilton Broivn Shoe Co. v. ^'' Dennison v. Thomas Co., 91 Fed. 
 
 Wolf Bros. & Co., 240 U. S. 251; 36 651-3. 
 
 Sup. Ct. Rep. 269. 
 
442 Registered Trade-Marks 
 
 mark" as used was too limited in meaning to fulfill the purpose 
 of the Act, and the broader word "mark" was substituted. Like- 
 wise the term "and lawful" was omitted and the phrase "and 
 exclusive" inserted in its place. The natural inference from these 
 changes is that Congress intended to permit registration of marks 
 which were not valid conmion-law trade-marks.* 
 
 Judge Noyes writes, referring to this clause: "It provides that 
 nothing shall prevent the registration of any 'mark' used as a 
 'trade-mark' for more than 10 years. The evident purpose is to 
 permit the registration of marks not amounting to technical trade- 
 marks but which have been long used as such. This is indicated 
 not only by the language of the clause itself, but by the history of 
 the passage of the Act through Congress." ' 
 
 Bradford, D. J., similarly writes: "Section 5 * * * when 
 read in connection with other provisions, evidently contemplated 
 that some marks * * * other than proper or technical trade- 
 marks might be registered." * 
 
 "Congress evidently had in mind the fact that marks, although 
 not susceptible of exclusive appropriation at common law, fre- 
 quently acquired a special significance in connection with par- 
 ticular commodities; and the language of the fourth proviso was 
 carefully chosen in order to bring within the statute those marks 
 which, while not being technical trade-marks, had been in 'actual 
 and exclusive use' as trade-marks for ten years next preceding the 
 passage of the Act." ^ 
 
 We now proceed to a consideration of this " Ten Year Law" 
 as this clause is commonly known, in connection with the other 
 provisions of the section. 
 
 Subdivisions a and b, viz. refuse registration of certain 
 marks. These marks are of such a character that it is apparent 
 
 ^ Davids Co. V.Davids, 178 Fed. 801; mark here in question, although a 
 
 Dyer Quarry Co. v. Schuylkill Stone Co., geographical term, for more than ten 
 
 185 Fed. 557; Davids Co. v. Davids, years prior to its application for regis- 
 
 233 U. S. 461. In Kayser v. Italian tration, it was properly admitted to 
 
 Silk Underwear Co., 160 App. Div. such registration and the certificate 
 
 607, the court enjoined the defendant therefor having been duly issued it is 
 
 from using the plaintiff's registered entitled to protection." 
 
 trade-mark "Italian" in connection '' Davids Co. v. Davids, 178¥&i. 801. 
 
 with silk underwear. Clarke, J.: "It ^ Dyer Quarry Co. v. Schuylkill Stone 
 
 appearing that the plaintiff and its Co., 185 Fed. 557. 
 
 predecessor had exclusively used the » Davids v. Davids, 233 U. S. 461. 
 
Unregistrable Trade-Marks 443 
 
 that the reason for refusing them registration is that of pubUc 
 policy. Manifestly Congress did not intend that a mark con- 
 sidered objectionable on such grounds, could merely by long use 
 be sanctioned and protected by the State, i" 
 
 Moreover, the very language of the ten-year clause makes it 
 difficult to understand how a mark imitating or reproducing 
 some public insignia could be exclusively used. To quote from 
 the opmion in In re Cahn Belt & Co., 27 App. D. C. 173: "The 
 coat of arms of Maryland was never in the exclusive use of the 
 applicants during any period; nor could the applicants ever 
 acquire an exclusive use as a trade-mark of the state coat of 
 arms. In the sense of this proviso the applicant had the actual, 
 but never the exclusive, use of this simulation of the Maryland 
 coat of arms, and for this reason the appellant's trade-mark 
 sought to be registered does not come within the last proviso of 
 the fifth section.^* 
 
 Mr. Justice Hughes construing the ten-year clause in Thaddeus 
 Davids Co. v. Davids,^^" wrote: 
 
 "We think that the intent of Congress is clear. In the opening 
 clause of Sec. 5, it is provided that no mark by which the goods 
 of the owner may be distinguished from other goods of the same 
 class shall be refused registration as a trade-mark, on account of 
 its nature, unless it consists of, or comprises : (a) immoral or scan- 
 dalous matter; or (b) certain public insignia. The marks within 
 these excepted classes are withdrawn from the pm-view of the Act. 
 Then, in dealing with the marks which remain, limitations upon 
 registrability are defined by the first, second and third provisos; 
 and the restrictions thus imposed are in t\xrn qualified by the 
 fourth proviso or ten-year clause. It follows that the fourth 
 
 " In re Cahn Belt & Co., 27 App. trade-mark which was scandalous, 
 
 D. C. 173. "The 5th section, taken would be absurd. The proviso which 
 
 in its entirety * * * did not at was meant to be a saving clause for 
 
 the same time permit marks in actual certain marks cannot be construed to 
 
 and exclusive use for ten years to be make the marks thus saved a preferen- 
 
 registered as trade-marks if such marks tial class of marks to which the two 
 
 were either scandalous, or immoral, or prohibitions of the section do not 
 
 simulations of public insignia. To apply." 
 
 permit, Under this proviso to the " In re Cahn Belt & Co., 27 App. 
 
 section, the registration of a scandal- D. C. 173. 
 
 ous mark, and to prohibit, under the "" 233 U. S. 461 at p. 467. 
 section, the registration of a technical 
 
444 Registered Trade-Marks 
 
 proviso in no way detracts from the force of the exceptions con- 
 tained in classes (a) and (b) which were plainly intended to be 
 established without qualification; but the generality of the suc- 
 ceeding prohibitions is qualified. It may well be that this qual- 
 ification, by reason of its terms, does not affect the first proviso, 
 which relates to cases of conflicting trade-marks, as the ten-year 
 clause explicitly requires that the use shall have been 'exclusive.' 
 But there can be no doubt that this clause does modify the general 
 limitations contained in the second proviso with respect to the 
 use of marks consisting of names of persons, firms or corporations, 
 of terms descriptive of character and quality, or of geographical 
 names or terms. Marks of this sort, notwithstanding the general 
 prohibition, were made registrable when the applicant or his pred- 
 ecessors had used them, actually and exclusively as trade-marks 
 for the described period." 
 
 A mark registered under the ten-year clause is entitled to pro- 
 tection from infringement just as is any other trade-mark. "It 
 was not the intention of Congress thus to provide for a barren 
 notice of an ineffectual claim, but to confer definite rights. The 
 applicant, who by virtue of actual and exclusive use is entitled 
 to register his mark under this clause, becomes on due registration 
 the 'owner' of a 'trade-mark' within the meaning of the act, and- 
 he is entitled to be protected in its use as such." ^^ 
 
 This protection is not restricted to use of a mark in the same 
 form in which it is registered. Any colorable imitation will be 
 considered an infringement. Sandford, D. J., has said on this 
 point: 
 
 "I am of opinion that this section (§ 5) when properly con- 
 strued, does not confer merely the right to the use of the registered 
 mark as a mark in the precise form in which it has been previously 
 used, but that by registration of the mark under section 5 of the^ 
 Act, after ten years' prior exclusive use, such mark is thereafter 
 given effect as a valid statutory trade-mark in all respects, en- 
 titling it to protection as any other statutory trade-mark, and not 
 merely to protection as a mark in the precise form of its former 
 
 "Damds v. Davids, 233 U. S. 461 U. S. 461; Nashville Syrup Co. v. 
 
 at p. 469. Coca Cola, 215 Fed. 527. In this case 
 
 " CocorCola V. Nashville Syrup Co., Denison, J., writes: "The specific form 
 
 200 Fed. 157; Davids v. Davids, 233 in which the mark was registered in 
 
Unregistrable Trade-Marks 445 
 
 The aim of the ten-year proviso is to extend to marks that 
 could not be registered under the statute that existed when the 
 ten-year law was passed (1905), substantial protection against 
 infringement. 
 
 Its purpose is practical, to relieve business men whose good will 
 is, in part or whole, crystallized, about names that are not suscep- 
 tible of registration as trade-marks, a right to obtain the benefits 
 of registration, provided the names they use have been in actual 
 and exclusive use for the prescribed period. This ten-year 
 statute represents perhaps the greatest step so far taken in 
 America for the adequate protection of business good-will, and 
 the prevention of commercial fraud by the misuse of marks. 
 
 Denison, J., of the Circuit Com-t of Appeals has described the 
 manner in which a personal name may cease to be used in trade 
 as a personal name, and become a trade-mark susceptible of regis- 
 tration under this Ten Year Law. 
 
 "As the making of whisky after Crow's death, but by the same 
 formida and methods, was continued by Pepper or by Gaines, and 
 as it continued to be called 'Old Crow,' this appellation would 
 gradually change its character. It at once ceased truly to per- 
 sonify the maker; it did not immediately become merely arbi- 
 trary. As the trade lost the sense of Crow's personahty, as he 
 became less real and more traditional, as no one else of the same 
 name challenged the growing right, and as with Crow's person- 
 ality fading there must also fade the vague descriptive effect 
 of using his formula, the words 'Old Crow' would become less 
 descriptive and more arbitrary, and after a period of such un- 
 challenged use they would become dominantly and substantially 
 a mere symbol of origin. * * * Words which were at first 
 essentially incapable of exclusive appropriation were continually 
 used as descriptive by the only one who could truthfully make 
 such use, until, by change of circumstances and by long acqui- 
 escence, they had come to indicate, and indicate only, a particular 
 
 that case {Davids v. Davids, supra) only does this qualification in the name 
 
 was not considered important; and so it fail effectively to reach the ultimate 
 
 cannot be here controlling, whether consumer (Coca-Cola Co. v. Gay-Ola 
 
 the words "Coca Cola" are with or Co., 200 Fed. 720, 119 C. C. A. 164 
 
 without a hyphen, or in script or in and 211 Fed. 942), but a trade-mark 
 
 plain letters. Neither is infringement right which could be so avoided would 
 
 avoided because defendant marks its be of no value." > 
 
 bottles "Fletcher's Coca Cola." Not 
 
446 Registered Trade-Maeks 
 
 product of a particular manufacturer. It might be otherwise, 
 if the words had originally been more piu-ely descriptive of quahty 
 or method; and it may be that some person named Crow would 
 even yet have a measure of right to call his product 'Crow.' " ^^" 
 
 The protection afforded a trade-mark, registered under the 
 ten-year clause, is not such that the owner may obtain a monopoly 
 in the terms set out in the first three provisos. If an applicant 
 obtains registration of such a mark, it is protected only in its 
 trade or secondary sense. Anyone may still use it in its primary 
 meaning, so long as he does not create confusion. Hughes, J., 
 says: "In the case, therefore, of marks consisting of names or 
 terms having a double significance, and being susceptible of 
 legitimate uses with respect to their primary sense, the reproduc- 
 tion, copy or imitation which constitutes infringement must be 
 such as is calculated to mislead the public with respect to the 
 origin or ownership of the goods and thus to invade the right of 
 the registrant to the use of the name or term as a designation of 
 his merchandise. This we conceive to be the meaning of the 
 statute." " 
 
 Various expressions, used in the ten-year clause, have been de- 
 fined by the courts. 
 
 "Exclusive use" is taken to mean a trade use which is exclusive 
 of all other similar trade use. It does not mean a use exclusive 
 of all use whatever by others. Accordingly, a person although 
 
 "" Gaines & Co. v. Rock Springs (supra) as holding that the statute 
 
 ■Distilling Co., 226 Fed. 531, C. C. A. directly operates to grant a monopoly 
 
 6th Cir., 1915. to one who rightfully registers under 
 
 '*i)oOTdsCo.v.Z)owds,233U. S. 461. the ten-year clause a descriptive or 
 
 In Nashville Syrup Co. v. Coca Cola geographical word. We take it as 
 
 Co., 215 Fed. 527, Denison,C. J., says: holding that the statute was not in- 
 
 "In view of the settled rule that the tended to permit, under this clause, 
 
 Federal trade-mark statute does not an ineffective and useless registration, 
 
 create any exclusive right, as the and so, in effect, holding that the 
 
 patent statute does, but only recog- statute removed from descriptive 
 
 nizes a right which has been already words which had been exclusively 
 
 acquired by exclusive appropriation, used as a mark in interstate com- 
 
 and then furnishes evidence and rem- merce for 10 years the bar or disabiUty 
 
 edies (Trade-Mark Cases, 100 U. S. caused by their descriptive character, 
 
 82, 25 L. ed. 550; Hopkins on Trade- and made them, after that probation, 
 
 Marks, §27; Hesseltine's Law of subject to exclusive appropriation with 
 
 Trade-Marks; p. 139), we do not re- the same effect, in the main, as if the 
 
 gard the decision in the Davids case disability had never existed." 
 
Unregistrable Trade-Marks 447 
 
 the first user of a term, cannot register it under this clause, if, 
 prior to the expiration of the period set out, another has used it in 
 violation of his alleged rights.^' 
 
 This interpretation prevents the registration of a mark, when 
 a similar mark has been used by another on goods of the same 
 descriptive properties, although it has been used in a deceptive 
 manner. ^^ 
 
 A like result is reached even when the adverse use is in a de- 
 scriptive sense." 
 
 The burden is on the apphcant to show exclusive use.^* 
 
 In the cases given in the note, registration of a mark was re- 
 fused on the ground that the applicant had failed to estabhsh 
 exclusive use within the meaning of the statute.^' 
 
 The term "actual use" has been construed so as to deny regis- 
 tration to a mark unless it has been used for the prescribed period 
 in connection with the class of goods in respect to which registra- 
 tion is sought.^" 
 
 It must further have been used as a trade-mark. 
 
 The period of ten years "actual and exclusive" use prescribed 
 was not intended by Congress to include the use of a name or mark 
 
 "In Worcester Brewing Corporation App. D. C. 348; C. A. Gambrill Mfg. 
 V. Rveter & Co., 30 App. D. C. 428, Co. v. Waggoner-Gates M . Co., 38 App. 
 Van Orsdel, J., said: "Inasmuch as D. C. 532; Sears & Nichols Co. v. 
 the word is used in the statute in Brakeky, 38 App. D.C.5S0; H.Becker 
 connection with the words 'actual & Co. v. C. A. Gambrill Mfg. Co., 38 
 use,' and both expressions are used to App. D. C. 535. 
 qualify the special right conferred by ^^ In re Spalding & Bros., 27 App. 
 this provision of the act, we hold that D. C. 314. Duell, J.: "The question 
 an actual use must be shown to have as to what is meant by the term 'ex- 
 been possessed and enjoyed by the elusive use' is not now before us; but 
 applicant to the sole exclusion of all the objection raised to the registration 
 others. The use could not be exclusive is broad enough to present the ques- 
 if, during the period, it appears that tion as to what is meant by the term 
 another was using the same word as ' actual use.' We think that the term 
 a trade-mark upon the same character should be strictly construed, and when 
 of goods." In re Wright, 33 App. D. C. an applicant seeks a registration under 
 510. this so-called 'ten-years' clause he 
 
 " In re Wright, 33 App. D. C. should not be permitted to register a 
 
 510. word or name, not recognized by the 
 
 " Natural Food Co. v. Williams, 30 law as a lawful trade-mark, for any 
 
 App. D. C. 348. article of commerce save those upon 
 
 " In re Hoff, 33 App. D. C. 233. which he has actually used the mark 
 
 " Natural Food Co. v. WiUiams, 30 for the required period." 
 
448 Registered Tkade-Marks 
 
 in connection with a patented article. If registration were allowed 
 under such circumstances it would be possible to prolong the life 
 of the patent monopoly indefinitely. Accordingly the courts 
 refuse to protect a mark thus registered.^^ 
 
 But if the term applied to a patented article has not become 
 generic it may be registered. ^^ 
 
 The following registered marks have been protected against 
 infringements as within the scope of the ten-year clause: 
 " Davids" — applied to ink.^' 
 "Beats-AU"— " to pencils. 2* 
 "Coca-Cola"— " to soft drink. "^ 
 " Bestyette" — " to rain coats.^" 
 "Oneida Traps" " to game traps. ^' 
 
 "Crow whiskey" (the name "Crow" being the name of the 
 first seller of this brand of whiskey). ^^" 
 § 230. Who May Oppose. 
 The sixth section of the act is as follows : 
 
 " Sec. 6. That on the filing of an appUcation for registration 
 of a trade-mark which' complies with the requirements of 
 this act, and the payment of the fees herein provided for, 
 the Commissioner of Patents shall cause an examination 
 thereof to be made; and if on such examination it shall ap- 
 pear that the appUcant is entitled to have his trade-mark 
 registered under the provisions of this act, the commissioner 
 shall cause the mark to be published at least once in the 
 
 ^1 National Lock Washer Co. v. '* American Lead Pencil Co. v. 
 Ho66s M/^. Co., 210 Fed. 516. "Then Gottlieb & Sons, 181 Fed. 178. 
 again, in construing the Trade-Mark ^'Nashville Syrup Co. v. Coca-Cola 
 Act of 1905, it is a reasonable inference Co., 215 Fed. 527; Coca-Cola v. Nash- 
 that Congress did not intend that the ville Syrup Co., 200 Fed. 157; Coco- 
 provisions of that act should operate Cola v. Am. Druggists' Syndicate, 200 
 to continue the monopoly through Fed. 107; Coca-Cola v. Deacon Brown 
 registration under it, or that the use Bottling Co., 200 Fed. 105. 
 of a word in connection with a pat- "^ New York Mackintosh v. Flam, 
 ented article and during the life of the 198 Fed. 571. 
 
 patent should be availed of to make " Oneida Community v. Oneida 
 
 up the ten years of actual and exclusive Game Trap Co., 168 App. Div. (N. 
 
 use necessary to authorize registra- Y.) 769. 
 
 tion." "" W. A. Gaines v. Rock Springs 
 
 " Hughes v. Smith Co., 205 Fed. 302. Co., 226 Fed. 531; C. C. A., 6th Ca., 
 
 " Davids Co. v. Davids, 233 U. S. 1915. 
 461. 
 
Who May Oppose 449 
 
 Official Gazette of the Patent Office. Any person who be- 
 
 Ueves he would be damaged by the registration of a mark 
 
 may oppose the same by fiUng notice of opposition, stating 
 
 the grounds therefor, in the Patent Office within thirty days 
 
 after the pubhcation of the mark sought to be registered, 
 
 which said notice of opposition shall be verified by the person 
 
 filing the same before one of the officers mentioned in section 
 
 two of this act. An opposition may be 
 
 M^r. 2,T907!^ ^"^ ""' °' filed by a duly authorized attorney, but 
 
 such opposition shall be null and void 
 
 imless verified by the opposer within a reasonable time after 
 
 such filing. If no notice of opposition is filed within said 
 
 time, the commissioner shall issue a certificate of registration 
 
 therefor, as hereinafter provided for. If on examination 
 
 an appUcation is refused, the commissioner shall notify the 
 
 appUcant, giving him his reasons therefor." 
 
 It provides that on filing an apphcation which complies with 
 
 the requirements of the statute and the payment of the fees, the 
 
 Commissioner of Patents shall cause an examination to be made 
 
 as to the registrabiUty of the trade-mark. In determining whether 
 
 a trade-mark is registrable it must be considered as a whole. ^^ 
 
 The proceedings leading up to the registration of a trade-mark 
 
 are matters of procedure which may be changed or abolished. 
 
 Accordingly cases pending at the time of the enactment of an 
 
 amendatory statute are governed by it, unless expressly excepted 
 
 from its operation. ^^'' If on the examination it appears that the 
 
 applicant is entitled to registration, the commissioner shall 
 
 cause the trade-mark to be published at least once in the Official 
 
 Gazette.''*^ Where a material change is made in an apphcation 
 
 for registration the commissioner will be justified in ordering a 
 
 second pubhcation.^* Any person who believes that he will be 
 
 damaged by the registration may oppose the same by filing notice 
 
 of opposition, within thirty days, verified by the person who 
 
 '' In re Schweinfurter, 38 App. D. C. Mark Act is not expressly made notice 
 
 279. of the rights claimed, and so it can- 
 
 ^ DeFeranti v. Lyndmark, 30 App. not as a matter of law be called a con- 
 
 D. C. 417; Givm v. N, Y. Athletic structive notice, and yet that it in fact 
 
 Club, 42 App. D. C. 558. tends to give notice is well known. 
 
 '^ Theodore Rectanus v. United '^ Carter Medicine Co. v. Barclay, 36 
 
 Drug Company, 226 Fed. 545-553. App. D. C. 123. 
 Registration under the Federal Trade- 
 
450 Registered Trade-Maeks 
 
 filed it. An opposer must show a legal damage to authorize 
 him to oppose successfully the registration of a trade-mark. ^'^ 
 Use of a name as a trade name, although not such as would create 
 trade-mark rights, makes it permissible for the person so using 
 to oppose registration of the name by another. ^''' Unless an op- 
 position alleges that the opposer has used the trade-mark, it is de- 
 murrable.'" But it is not necessary to prove actual damage.'^ 
 Where a demurrer to an opposition is sustained upon certain 
 grounds, the appropriate time for the opposer to ask leave to 
 amend his notice of opposition is when the Examiner of Interfer- 
 ences sustains the ground of demurrer.'^" Verification by an attor- 
 ney or an agent was held not sufficient before the Amend- 
 ment of the Act of March 2, 1907,'^ nor is a verification 
 sworn to before a notary who is attorney for the opposer, '^ and 
 it will not be cured by filing a properly verified notice after 
 the expiration of the statutory period.'* A person opposing 
 the registration of a mark under the terms of the Act will not 
 be permitted to raise the question of the constitutionality of 
 the statute.'^ The section further provides that if there is 
 no opposition the commissioner shall issue a certificate of 
 registration, and that if on examination an application is re- 
 fused the conunissioner shall notify the appUcant, giving his 
 reasons. 
 
 ^'^ Wilson V. Hecht, 44 App. D. C. 296 Johnson v. Brandau, 32 App. D. 
 
 33; Mcllhenny v. New Iberia Extract C. 348. 
 
 of Tobasco Pepper Co., 30 App. D. C. '" Battk Creek Sanitarium v. Fulkr, 
 
 337; Battle Creek Sanitarium Co. v. 30 App. D. C 411. 
 Fuller, 30 App. D. C. 411. ^i Asbestone Co. v. Carey Mfg. Co., 
 
 In this case the court said: — 41 App. D. C. 507. 
 
 "It is not suflBcient for the opponent ''" Battle Creek Sanitarium v. Fuller, 
 to say that he believes he would be 30 App. D. C. 411. 
 damaged. He must allege some fact " Martin v. Martin & Bowne Co., 
 showing an interest in the subject- 27 App. D. C. 59. 
 matter from which damage might be " Hall Safe Co. v. Herring-HaU 
 inferred. If he has not used the mark Marvin Safe Co., 31 App. D. 0. 498. 
 as a trade-mark upon goods of a hke " Hall Safe Co. v. Herring-Hall- 
 description, he can suffer no damage Marvin Safe Co., 31 App. D. C. 498. 
 from its registration by another." " Gaines v. Knecht, 27 App. D. C.' 
 Underwood Typewriter Co. v. A. B. 530; Gaines v. Carlton Importation 
 Dick Co., 36 App. D. C. 175; Tim & Co., 27 App. D. C. 571; Buchanan- 
 Co. V. Cluett, Peabody & Co., 42 App. Anderson Co. v. Breen, 27 App. D. C. 
 D. C. 212. 573. 
 
Inteeference 451 
 
 § 231. Interference. 
 
 " Sec. 7. That in all cases where notice of opposition has 
 been filed the Commissioner of Patents shall notify the ap- 
 plicant thereof and the grounds therefor. 
 
 Whenever application is made for the registration of a 
 trade-mark which is substantially identical with a trade- 
 mark appropriated to goods of the same descriptive prop- 
 erties, for which a certificate of registration has been pre- 
 viously issued to another, or for registration of which an- 
 other has previously made application, or which so nearly 
 resembles such trade-mark, or a known trade-mark owned 
 and used by another, as, in the opinion of the commissioner, 
 to be likely to be mistaken therefor by the public, he may 
 declare that an interference exists as to such trade-mark, and 
 in every case of interference or opposition to registration he 
 shall direct the examiner in charge of interferences to deter- 
 mine the question of the right of registration to such trade- 
 mark, and of the sufficiency of objections to registration, 
 in such manner and upon such notice to those interested as 
 the commissioner may by rules prescribe. 
 
 " The commissioner may refuse to register the mark against 
 the registration of which objection is filed, or may refuse to 
 register both of two interfering marks, or may register the 
 mark, as a trade-mark, for the person first to adopt and use 
 the mark, if otherwise entitled to register the same, unless an 
 appeal is taken, as hereinafter provided for, from his deci- 
 sion, by a party interested in the proceeding, within such 
 time (not less than twenty days) as the commissioner may 
 prescribe." 
 The seventh section requires the Commissioner , of Patents 
 to notify an applicant when a notice of opposition has been 
 filed. It then provides that when an application is made to 
 register a trade-mark which is similar to, or identical to a 
 trade-mark which has been previously registered, or for which 
 application for registration has been made, or is known and 
 used by another and which is appropriated to goods of the same 
 descriptive properties, the commissioner may declare an inter- 
 ference and direct an examiner to determine the right to register 
 the trade-mark, and the sufiiciency of the objections to such 
 registration. 
 
452 Registered Trade-Marks 
 
 Goods of the "same descriptive properties" have been taken to 
 mean goods the general and essential characteristics of which are 
 the same. "The test is whether there is such a sameness in the 
 distinguishing characteristics of the goods as to be likely to mis- 
 lead the general public.^^ See title " Descriptive quality " in index. 
 "The only purpose of an interference is to determine the question 
 of priority of adoption and use " of a trade-mark. " The fact that an 
 interference is granted is a recognition by the commissioner that 
 the mark for which registration is sought is "substantially identi- 
 cal" to a known or registered trade-mark.'* A decision of the 
 Patent Office in an interference case not appealed from is final 
 and conclusive of every question which might have been pre- 
 sented and determined.'*" 
 
 The fact that a person disclaibis the exclusive use of a word 
 forming part of the mark for which registration is sought, after 
 an opposition has been filed in the Patent Office, will not, of 
 itself, justify a dismissal of the opposition.'*^ 
 
 An appUcant who has been defeated in opposition proceedings 
 may amend his application so as to omit all the grounds of con- 
 troversy involved in the opposition proceedings.'*" 
 
 In determining the question of similarity all doubts should 
 benefit a prior registrant." An application which is regular in 
 form establishes a frima facie case entitling the applicant to 
 registration. If an opposer can overcome this case by evidence, 
 then the applicant must establish his right to registration by a 
 fair preponderance of evidence,^" but if the commissioner calls the 
 attention of the applicant to a prior registration of a similar 
 trade-mark by another, then the burden of proof is on the ap- 
 plicant to show first adoption and use, or an abandonment by the 
 
 '• Johnson Educator Food Co. v. "^ Fisfiberk Soap Co. v. Kkeno Mfg. 
 
 Sylvanus Smith & Co., Inc., 37 App. Co., 44 App. D. C. 6; Carmel Wine 
 
 D. C. 107. Co. V. California Winery, 38 App. D. 
 
 " Mathy v. Republic Metalware Co., C. 1. 
 
 35 App. D. C. 151. '<" Burrell v. Simplex Electric Heat- 
 
 »8 Becker & Co. v. GambriU Mfg. Co., ing Co., 44 App. D. C. 452. 
 
 38 App. D. C. 535. " Wayne County Preserving Co. v. 
 
 '^ Blackford v. Wilan, 28 App. D. Burt Olney Canning Co., 32 App. D. C. 
 
 C. 535; United States ex rel. Newcomb 279. 
 
 Motor Co. V. Moore, 30 App. D. C. *» Wrigky v. Norris, 34 App. D. C. 
 
 464; Be Herbst, 32 App. D. C. 269; 138. 
 Be Herbst, 44 App. D. C. 203. 
 
Appeals to the Commissioner 453 
 
 prior registrant.*' Mere delay, however, on the part of the owner 
 of a trade-mark in asserting his right cannot be the ground of a 
 successful opposition. *2 The patentee of a product will be entitled 
 to register a trade-mark used in connection with the patented 
 article as against a licensee manufacturing the same merchan- 
 dise. ■•' Where an opposer has used a term in a descriptive sense 
 he has not such an interest in it as will entitle him to oppose the 
 registration of such term by another.** 
 § 232. Appeals to the Commissioner. 
 
 " Sec. 8. That every applicant for the registration of a 
 trade-mark, or for the renewal of the registration of a trade- 
 mark, which application is refused, or a party to an inter- 
 ference against whom a decision has been rendered, or a 
 party who has filed a notice of opposition as to a trade-mark, 
 may appeal from the decision of the examiner in charge 
 of trade-marks, or the examiner in charge of interferences, 
 as the case may be, to the commissioner in person, having 
 once paid the fee for such appeal." 
 Under this section it has been held that where a demurrer is 
 filed to a notice of opposition and the demurrer is overruled and 
 judgment pro confesso rendered, an appeal may be taken to the 
 Commissioner of Patents upon the single question of the suffi- 
 ciency of the notice. The refusal to answer or further plead is 
 equivalent to standing upon the demurrer and permitting judg- 
 ment to be entered from which this section provides a right of 
 appeal to the Commissioner.**" Where an appeal is taken it is 
 discretionary with the Commissioner to allow or to refuse leave 
 to amend an opposition notice.**'' Where the Commissioner 
 sustains the determination of the examiner of interferences that 
 neither party to an interference is entitled to register a trade- 
 mark the applicant's remedy is to Appeal to the Court of Appeals 
 of the District of Columbia^ When the time to so appeal expires 
 the decision of the Commissioner becomes final and the applicant 
 
 " In re Nash Hardware Co., 33 App. ** Battk Creek Sanitarium v. Fuller, 
 
 D. C. 221. 30 App. D. C. 411. 
 
 "Michigan Condensed Milk Co. ^'^G. & J. Tire Co. v. G.J. G. Motor 
 
 V. Kenneweg Co., 30 App. D. C. Car Co., 39 App. D. C. 508. 
 
 491. "''Battle Creek Sanitarium Co. v. 
 
 " Mathy v. Republic Metalware Co., Fuller, 30 App. D. C. 411. 
 35 App. D. C. 151. 
 
454 Registered Trade-Marks 
 
 cannot thereafter prosecute his original application before the 
 examiner of trade-marks/*" 
 § 233. Appeals to the Courts. — The ninth section of the Act 
 is as follows: 
 
 "Sec. 9. That if an applicant for registration of a trade- 
 mark, or a party to an interference as to a trade-mark, or a 
 party who has filed opposition to the registration of a trade- 
 mark, or party to an application for the cancellation of the 
 registration of a trade-mark, is dissatisfied with the decision 
 of the Commissioner of Patents, he may appeal to the court 
 of appeals of the District of Columbia, on complying with 
 the conditions required in case of an appeal from the decision 
 of the commissioner by an applicant for patent, or a party 
 to an interference as to an invention, and the same rules of 
 practice and procedure shall govern in every stage of such 
 proceedings, as far as the same may be applicable." 
 It provides that all persons interested in proceedings for the 
 registration of a trade-mark who are dissatisfied with the decision 
 of the commissioner may appeal to the Coiu"t of Appeals of the 
 District of Columbia. The proceedings in such cases are to be 
 governed by the same rules of practice and procedure as in patent 
 cases. ^^ There is no appeal to the Court of Appeals from an in- 
 terlocutory order of the commissioner.^^ Nor is an applicant for 
 the renewal of registration given the right of appeal to the court. 
 In such case the right of appeal stops with the commissioner.^' 
 An appeal does not lie from an order of the Commissioner of 
 Patents dissolving an interference which does not refuse regis- 
 tration to either party. The court will not consider acts of the 
 conunissioner which are of a discretionary character imless they 
 are clearly a gross abuse of his power.** 
 § 234. Assignment of Trade-Mark. — The tenth section of the 
 Act is as follows: 
 
 " Sec. 10. That every registered trade-mark, and every 
 mark for the registration of which application has been made, 
 together with the application for registration of the same, 
 
 **' Re Herhst, 32 App. D. C. 269. D. C. 491; L. Candee & Co. v. B. F. 
 
 « Atkins Co. v. Moore, 212 U. S. 285. Goodrich Co., 44 App. D.C. 53; Mann v. 
 
 *' Union Distilling Co. v. Schneider, Brown, 43 App. D. C. 457; Union Dis- 
 
 29 App. D. C. 1. tilling Co. v. Schneider, 29 App. D. C. 1. 
 
 " In re Standard Oil Co., 39 App. « In re Atkins, 29 App. D. C. 385. 
 
Cektificates of Registration 465 
 
 shall be assignable in connection with the good will of the 
 business in which the mark is used. Such assignment must 
 be by an instrument in writing and duly acknowledged ac- 
 cording to the laws of the country or State in which the same 
 is executed; any such assignment shall be void as against 
 any subsequent purchaser for a valuable consideration, with- 
 out notice, unless it is recorded in the Patent Ofl&ce within 
 three months from date thereof. The commissioner shall 
 keep a record of such assignments." 
 It provides for the assignment of registered trade-marks and 
 marks for which application for registration has been made, in 
 connection with the good-will of the business in which the marks 
 are used. If the trade-mark is assigned without a transfer of the 
 business the assignment is void.^* The assignment must be in 
 writing duly acknowledged and must be recorded within a period 
 of three months in order to bind a purchaser for value without 
 notice. 
 
 § 236. Certificates of Registration. 
 
 " Sec. 11. That certificates of registration of trade-marks 
 shall be issued in the name of the United States of America, 
 under the seal of the Patent Office, and shall be signed by the 
 Commissioner of Patents, and a record thereof, together 
 with printed copies of the drawing and statement of the 
 applicant, shall be kept in books for that purpose. The 
 certificate shall state the date on which the application for 
 registration was received in the Patent Office. Certificates 
 of registration of trade-marks may be issued to the assignee 
 of the applicant, but the assignment must first be entered 
 of record in the Patent Office. 
 
 " Written or printed copies of any records, books, papers, or 
 drawings relating to trade-marks belonging to the Patent 
 Office, and of certificates of registration, authenticated by 
 the seal of the Patent Office and certified by the commissioner 
 thereof, shall be evidence in all cases wherein the originals 
 could be evidence; and any person making application 
 therefor and paying the fee required by law shall have cer- 
 tified copies thereof. 
 
 « Eiseman v. Schiffer, 157 Fed. 473; Corset Co. v, Cohen, 38 App. D. C. 482; 
 Sauers Milling Co. v. Kehlor Flour Mayer F. & J. Co. v. Virginia- 
 Mill Co., 39 App. D. C. 535; Jackson Carolina C. Co., 35 App. D. C. 425. 
 
456 Registered Trade-Marks 
 
 § 236. Period of Protection. 
 
 " Sec. 12. That a certificate of registration shall remain in 
 force for twenty years, except that in -the case of trade-marks 
 previously registered in a foreign country such certificates 
 shall cease to be in force on the day on which the trade-mark 
 ceases to be protected in such foreign country, and shall in 
 no case remain in force more than twenty years, unless re- 
 newed. Certificates of registration may be from time to. 
 time renewed for like periods on payment of the renewal fees 
 required by this act, upon request by the registrant, his legal 
 representatives, or transferees of record in the Patent Office, 
 and such request may be made at any time not more than 
 six months prior to the expiration of the period for which the 
 certificates of registration were issued or renewed. Certifi- 
 cates of registration in force at the date at which this act 
 takes effect shall remain in force for the period for which they 
 were issued, but shall be renewable on the same conditions 
 and for the same periods as certificates issued under the pro- 
 visions of this act, and when so renewed shall have the same 
 force and effect as certificates issued under this act." 
 A request for the renewal of a certificate of registration is not 
 
 to be considered in the same light as a new application. The 
 
 procedure to be followed in such a proceeding is set out in this 
 
 section.*^" 
 § 237. Cancellation of Registration. — The thirteenth section of 
 
 the Act is as follows: 
 
 " Sec. 13. That whenever any person shall deem himself in- 
 jured by the registration of a trade-mark in the Patent Office 
 he may at any time apply to the Commissioner of Patents 
 to cancel the registration thereof. The commissioner shall 
 refer such application to the examiner in charge of inter- 
 ferenceS; who is empowered to hear and determine this 
 question and who shall give notice thereof to the registrant. 
 If it appear after a hearing before the examiner that the 
 
 ' registrant was not entitled to the use of the mark at the date 
 of his appUcation for registration thereof, or that the mark 
 is not used by the registrant, or has been abandoned, and 
 the examiner shall so decide, the commissioner shall 
 cancel the registration. Appeal may be taken to the com- 
 *^ Ewing v. Standard Oil Co., 42 App. D. C. 321. 
 
Fees 467 
 
 missioner in person from the decision of examiner of interfer- 
 ences." 
 
 It provides that a person deeming himself injured by the regis- 
 tration of a mark may apply to the commissioner to cancel such 
 registration. The case is then referred to an examiner, who gives 
 notice to the registrant and after a hearing determines whether 
 the registrant was entitled to the use of the mark at the time of 
 the application and whether it is used or has been abandoned by 
 the registrant. If he decides against the registrant, the registra- 
 tion is cancelled, but an appeal is given from the decision of the 
 examiner to the commissioner in person. The certificate of 
 registration is sufficient prima fade to indicate compliance with 
 all the regulations of the Act. The burden of showing non- 
 compliance is on the opposer.^" A person intervening must in his 
 petition set out sufficient facts to show that he has been injured by 
 such registration." A party, who upon his own showing has no 
 right to the use of a trade-mark will not be permitted to prosecute 
 an application for the cancellation of such trade-mark. ^^" . 
 
 The provisions of this section permit a proceeding for the can- 
 cellation of a trade-mark, registered under a prior trade-mark 
 Statute, "'' or under the ten year clause of this act."° The pur- 
 pose of this section is to enable a person who has been injured by 
 the registration of a trade-mark to institute proceedings to obtain 
 a cancellation of the registration. This form of reUef was not 
 provided for in the previous Federal Trade-Mark Laws. The 
 section relates entirely to the procedure in the Patent Office, 
 and is remedial in character. The remedy is "full, fair and sum- 
 mary." No time limit is fixed for an appUcation for cancella- 
 tion."" 
 
 § 238. Fees. — The statute provides for the payment of fees in 
 the following language : 
 
 " Sec. 14. That the following shall be the rates for trade- 
 mark fees: 
 
 " On filing each original application for registration of a 
 trade-mark, ten dollars: Provided, That an application for 
 
 " Hughes v. Smith, 209 Fed. 37. "'' Stamatopoulos v. Stephana Bros., 
 
 " Mcllhmny's Sons v. New Iberia 41 App. D. C. 590. 
 
 Co., 30 App. D. C. 337. "" Mcllhenny v. New Iberia Co., 34 
 
 ^'^ Standard Brewery Co. v. Inter- App. D. C. 430. 
 
 bmo Brewing Co., 44 App. D. C. 193. ^■'' Planten v. Gedney, 224 Fed. 382. 
 
468 Registered Trade-Marks 
 
 registration of a trade-mark pending at the date of the pas- 
 sage of this act, and on which certificate of registration shall 
 not have issued at such date, may, at the option of the appli- 
 cant, be proceeded with and registered under the provisions 
 of this act without the payment of further fee. 
 
 " On filing each application for renewal of the registration 
 of a trade-mark, ten dollars. 
 
 " On fihng notice of opposition to the registration of a trade- 
 mark, ten dollars. 
 
 " On an appeal from the examiner in charge of trade-marks 
 to the Commissioner of Patents, fifteen dollars. 
 
 " On an appeal from the decision of the examiner in charge 
 of interferences, awarding ownership of a trade-mark or 
 canceling the registration of a trade-mark, to the Commis- 
 sioner of Patents, fifteen dollars. 
 
 " For certified and uncertified copies of certificates of regis- 
 tration and other papers, and for recording transfers and 
 other papers, the same fees as required by law for such 
 copies of patents and for recording assignments and other 
 papers relating to patents." 
 § 239. Repayment of Fees. — ■ The statute provides for the re- 
 payment of fees paid by naistake as follows: 
 
 " Sec. 15. That sections forty-nine hundred and thirty-five 
 and forty-nine hundred and thirty-six of the Revised Stat- 
 utes, relating to the pajonent of patent fees and to the re- 
 payment of fees paid by mistake, are hereby made appli- 
 cable to trade-mark fees." 
 § 240. Liability for Infringement. — The sixteenth section of 
 the Act provides: 
 
 " Sec. 16. That the registration of a trade-mark under the 
 provisions of this act shall be prima fade evidence of owner- 
 ship. Any person who shall, without the consent of the owner 
 thereof, reproduce, counterfeit, copy, or colorably imitate 
 any such trade-mark and affix the same to merchandise of 
 substantially the same descriptive properties as those set 
 forth in the registration, or to labels, signs, prints, packages, 
 wrappers, or receptacles intended to be used upon or in 
 connection with the sale of merchandise of substantially the 
 same descriptive properties as those set forth in such regis- 
 tration, and shall use, or shall have used, such reproduction, 
 
Liability for Infringement 459 
 
 counterfeit, copy, or colorable imitation in commerce among 
 the several States, or with a foreign nation, or with the 
 Indian tribes, shall be liable to an action for damages there- 
 for at the suit of the owner thereof; and whenever in any- 
 such action a verdict is rendered for the plaintiff, the court 
 may enter judgment therein for any sum above the amount 
 found by the verdict as the actual damages, according to the 
 circumstances of the case, not exceeding three times the 
 amount of such verdict, together with the costs." 
 It makes the registration of a trade-rfiark prima facie evidence 
 of ownership. ^^ Though the act does not provide that registra- 
 tion of a trade-mark is prima fade evidence of its validity, the 
 Patent Office is not authorized to register anything but a trade- 
 mark. Incidentally, therefore, registration involves the consider- 
 ation by the Commissioner of Patents of whether the device for 
 which registration is sought may be the subject of exclusive ap- 
 propriation as a trade-mark. That officer's decision of that 
 proposition is entitled to respect as being -prima facie correct.^^ 
 Registration of a trade-mark under the Federal Statute is not 
 conclusive upon the State courts as to its validity or the right 
 to the registry.^^*" The prima fade proof may be overcome 
 if it is made to appear that the registrant was not entitled to the 
 mark.^^ The section provides that a person who uses without the 
 consent of the owner, a reproduction or simulation of a trade-mark 
 in connection with merchandise of the same descriptive properties 
 as those set out in the registration, in commerce among the sev- 
 eral states or with foreign nations or with the Indian tribes shall 
 be liable to an action for damages; and that when in such suit 
 a verdict is rendered for the plaintiff judgment may be rendered 
 for a sum not exceeding three times the amount of the verdict. 
 This provision applies to all trade-marks that are within the 
 Act except those falling within the twenty-first section." If 
 the registered mark is not a valid trade-mark for the reason that 
 it has not been attached to an article of merchandise, infringe- 
 ment of such mark will not entitle the registrant to damages.^'' 
 
 " Spiegel v. Zuckerman, 188 Fed. " Speigel v. Zucherman, 188 Fed. 63. 
 
 63. ■ ^^ Thaddeus Davids Co. v. Davids, 
 
 "^ Planten v. Gedney, 221 Fed. 281. 233 U. S. 461. 
 
 6* Buffalo Rvhher Co. v. Batavia " Diederich v. Schneider Liquor Co., 
 
 Rubber Co., 90 Misc. 418. 195 Fed. 35. 
 
460 
 
 Registered Teade-Marks 
 
 § 241. Jurisdiction of the Coxxrts. — The seventeenth section 
 of the Act is as follows: 
 
 " Sec. 17. That the circuit and territorial courts of the 
 United States and the supreme court of the District of Co- 
 lumbia shall have original jurisdiction, and the circuit courts 
 of appeal of the United States and the court of appeals of 
 the District of Columbia shall have appellate jurisdiction of 
 all suits at law or in equity respecting trade-marks regis- 
 tered in accordance with the provisions of this act, arising 
 under the present act, without regard to the amount in con- 
 troversy." 
 The fact that an action is based upon the infringement of a 
 registered trade-mark does not, of itself, confer jurisdiction upon 
 the courts enumerated in this section. Facts necessary to confer 
 jurisdiction must be averred. As the federal trade-mark legisla- 
 tion is based upon the provision of the Constitution granting 
 Congress power to regulate commerce among the several states, 
 etc., it must be shown that the infringement of the trade-mark 
 claimed, arose in an interstate use actual or threatened."" The 
 
 "° Louis Bergdoll Brewing Co. v. 
 Bergdoll Brewing Co., 218 Fed. 131. 
 
 "The Trade-Mark Legislation of 
 Congress is based upon that provision 
 of the Constitution which confers 
 power upon Congress to regulate com- 
 merce among the several States, etc. 
 The use of a trade-mark may be con- 
 fined to Intrastate Commerce, or it 
 may be extended into the Federal 
 field. With the regulation of trade 
 when thus confined to the limits of a 
 single state Congress has nothing to do. 
 Its power and authority is limited 
 to interstate transactions, * * * 
 The registration protects the use of a 
 trade-mark only in interstate trans- 
 actions. When the controversy is 
 between citizens of the same state, 
 and the jurisdiction of the court de- 
 pends upon the averment that the case 
 arises under the laws of the United 
 States, then the complaint must be 
 an infringement of the proprietary 
 
 right which arises out of the registra- 
 tion and the facts necessary to confer 
 jurisdiction must be averred. * * * 
 As the averment is of a registered 
 trade-mark under the provisions of 
 the Act of Congress, this may be taken 
 to include an averment of all the facts 
 necessary to found the right of the 
 plaintiff to the trade-mark registra- 
 tion, and therefore to include the 
 averment of an interstate use of the 
 trade-mark by the plaintiff. There is 
 no averment, however, of an interstate 
 use, actual or threatened, by the de- 
 fendant. The averment quoted, that 
 injury had been caused to the business 
 of the plaintiff here 'and elsewhere 
 throughout the United States,' is 
 not an averment of interstate use. 
 The bill should accordingly be dis- 
 missed for want of jurisdiction." 
 
 Bumstdn v. Danwitz, 190 Fed. 604, 
 holds: — 
 
 "That the Federal Court is without 
 
Appeals to the United States Supreme Court 461 
 
 jurisdiction given to the Federal Courts in cases arising under the 
 statute is not expressly exclusive. It would, therefore, appear 
 proper for the State courts to determine controversies involving 
 a registered trade-mark.^^'' Where an opposition to the registra- 
 tion of a mark as a trade-mark, based on use of a similar mark by 
 the opposer on the same class of goods, is dismissed, and an appeal 
 is taken to the Court of Appeals of the District of Columbia, the 
 Patent Office and not the Court must determine as to the regis- 
 trability of the applicant's mark.^^'* 
 
 § 242. Appeals to the United States Supreme Court. — The 
 provision for an appeal to the Supreme Court of the United 
 States is contained in the eighteenth section of the act. It is as 
 follows: 
 
 "Sec. 18. That writs of certiorari may be granted by the 
 Supreme Court of the United States for the review of cases 
 arising under this act in the same manner as provided for 
 patent cases by the act creating the circuit court of appeals." 
 
 The right of appeal to the United States Supreme Court above 
 provided has been held exclusive.^*" The Circuit Courts of 
 Appeals act to which reference is made in this section has been 
 
 jurisdiction in a case where both under the patent laws, as respects 
 
 parties are citizens of the same state, the remedy by certiorari, Congress 
 
 and where nothing either in the bill or undoubtedly intended that this rem- 
 
 in the decree confined the reUef prayed edy should have the same attributes 
 
 for, or granted to commerce carried in the one class of cases as in the 
 
 on with foreign nations, or among the other. We already have seen that 
 
 several States, or with the Indian the Circuit Courts of Appeals Act, in 
 
 tribes." § 6, made it exclusive in cases arising 
 
 ^^'' Oneida Community L't'd. v. under the patent laws. Before the 
 
 Oneida Game Trap Co., 168 App. Div. adoption of the Code, this court said 
 
 (N. Y.) 769; Kayser dk Co. v. Italian in Hutchinson Pierce & Co. v. Loewy, 
 
 Silk Underwear Co., 160 App. Div. 217 U. S. 457, 460, a case like this: 
 
 (N. Y.) 607; Traiser v. Doty Cigar Co., "We are of opinion that this appeal 
 
 198 Mass. 327. will not lie, and that the remedy by 
 
 ^^ Alaska Packers Ass'n v. Ad- certiorari is exclusive. * * * We 
 
 miralty Trading Co., 43 App. D. C. think that the language of § 18 places 
 
 198. suits brought under the trade-mark 
 
 "° Hutchinson Pierce & Co. v. act [February 20, 1905] plainly within 
 
 Loewy, 217 U. S. 457; Smith v. Atlas the scope of the act establishing the 
 
 Mfg. Co., 231 U. S. 348. Court of Appeals [March 3, 1891] and 
 
 Van Devanter, J.: that a final decision of that court can 
 
 "In placing such trade-mark cases be reviewed in this Court only upon 
 
 upon the same footing as cases arising certiorari. * * *■" Merriam Co. 
 
462 Registered Tkade-Marks 
 
 superseded by being incorporated into the Code, but the section 
 has not thereby lost any of its original effect, for § 292 of the Code 
 requires the reference to be construed as if naming the very sec- 
 tions of the Code into which the Circuit Courts of Appeals act 
 has been carried.^^'' 
 
 § 243. Scope of Court's Powers. 
 
 " Sec. 19. That the several courts vested with jurisdiction 
 of cases arising under the present act shall have power to 
 grant injunctions, according to the course and principles of 
 equity, to prevent the violation of any right of the owner of 
 a trade-mark registered under this act, on such terms as the 
 court may deem reasonable; and upon a decree being ren- 
 dered in any such case for wrongful use of a trade-mark the 
 complainant shall be entitled to recover, in addition to the 
 profits to be accounted for by the defendant, the damages 
 the complainant has sustained thereby, and the coiu"t shall 
 assess the same or cause the same to be assessed under its 
 direction. The court shall have the same power to increase 
 such damages, in its discretion, as is given by section sixteen 
 of this act for increasing damages found by verdict in actions 
 of law; and in assessing profits the plaintiff shall be required 
 to prove defendant's sales only; defendant must prove all 
 elements of cost which are claimed." 
 § 244. Court may Destroy Infringing Marks. 
 
 " Sec. 20. That in any case involving the right to a trade- 
 mark registered in accordance with the provisions of this 
 ^ act, in which the verdict has been found for the plaintiff, or 
 an injunction issued, the coxu-t may order that all labels, 
 signs, prints, packages, wrappers, or receptacles in the pos- 
 session of the defendant, bearing the trade-mark of the plain- 
 tiff or complainant, or any reproduction, counterfeit, copy, 
 or colorable imitation thereof, shall be delivered up and 
 destroyed. Any injunction that may be granted upon hear- 
 ing, after notice to the defendant, to prevent the violation 
 of any right of the owner of a trade-mark registered in ac- 
 cordance with the provisions of this act, by any circuit court 
 
 V. Syndicate PiiblisMng Co., 237 U. S. sions making the jurisdiction of the 
 
 618-621. Circuit Court of Appeals final." 
 
 Day, J., wrote: ' 56d Smith v. Atlas Mfg. Co., 231 
 
 "The Act of 1905 contains provi- U. S. 348. 
 
Trade-Marks Fraudulently Used 463 
 
 of the United States, or by a judge thereof, may be served on 
 the parties against whom such injunction may be granted 
 anyTvhere in the United States where they u\.Siy be found, 
 and shall be operative, and may be enforced by proceedings 
 to punish for contempt, or otherwise, by the court by which 
 such injunction was granted, or by any other circuit court, 
 or judge thereof, in the United States, or by the Supreme 
 Court of the District of Columbia, or a judge thereof. The 
 said courts, or judges thereof, shall have jurisdiction to en- 
 force said injunction, as herein provided, as fully as if the 
 injunction had been granted by the circuit court in which it 
 is sought to be enforced. The clerk of the court or judge 
 granting the injunction shall, when required to do so by 
 the court before which application to enforce said injunction 
 is made, transfer without delay to said court a certified copy 
 of all the papers on which the said injunction was granted 
 that are on file in his office." 
 § 245. Trade-Marks Fraudulently Used. — In section twenty- 
 one, the Act refuses relief to the owner of a trade-mark who 
 uses it in an unlawful business, on an injurious article, or for 
 the purpose of deceiving the public. One who has abandoned 
 it, or obtained his certificate fraudulently will not be pro- 
 tected. 
 The words of the section are: 
 
 "Sec. 21. That no action or suit shall be maintained un- 
 der the provisions of this act in any case when the trade- 
 mark is used in unlawful business, or upon any article injurious . 
 in itself, or which mark has been used with the design of de- 
 ceiving the public in the purchase of merchandise, or has 
 been abandoned, or upon any certificate of registration fraud- 
 ulently obtained." 
 In construing abandonment, the courts have held that "aban- 
 donment being in nature a forfeitm-e, it is incmnbent upon 
 the person alleging it to prove by clear and convincing evidence 
 that the right claimed has been relinquished. * * * ^ mark 
 will never be held abandoned, unless a clear intention to do so 
 appears."^* See title "Abandonment" in index. The use of 
 the mark in connection with merchandise containing different 
 ingredients from those with which it was originally used is suffi- 
 6« Mathy v. Republic Metalware Co., 35 App. D. C. 152, 156. 
 
464 Registeeed Tbade-Makks 
 
 cient to work a forfeiture." Also assignment of a trade-mark 
 without the, business is invalid as an assignment; but, if ac- 
 companied by a discontinuance of use of the trade-mark the 
 courts will consider the same abandoned.^^ Abandonment is 
 not established by showing that an owner has used another 
 mark in connection with the same goods. ^^ 
 Hazel, D. J., says in Gorham v. Weintraub:^^" 
 "It is unimportant that complainant has registered other 
 trade-marks which it applies to articles differing in kind or quality. 
 Such additional registered trade-marks were not an abandonment 
 of complainant's common-law trade-mark, and their registration 
 has not deprived it of right to protection in the use thereof." 
 
 § 246. Cancellation of the Registration of a Trade-mark by a 
 Court in an Equity Suit. — The Statute provides: 
 
 "Sec. 22. That whenever there are interfering registered 
 trade-marks, any person interested in any one of them may 
 have relief against the interfering registrant, and all persons in- 
 terested uiider him, by suit in equity against the said regis- 
 trant; and the court, on notice to adverse parties and other 
 due proceedings had according to the course of equity, may 
 adjudge and declare either of the registrations void in whole 
 or in part according to the interest of the parties in the trade- 
 mark, and may order the certificate of registration to be 
 delivered up to the Commissioner of Patents for cancellation." 
 The Court directed the cancellation of a trade-mark under 
 this section in Waldes & Co. v. International Manufacturer's 
 Agency. ^^^ 
 
 § 247. Effect of the Act on Prior Rights. — The twenty-third sec- 
 tion of the Act provides that nothing in the Act shall abridge the 
 rights a person has to use remedy at law or equity. 
 
 " Sec. 23. That nothing in this act shall prevent, lessen, 
 impeach, or avoid any remedy at law or in equity which any 
 party aggrieved by any wrongful use of any trade-mark 
 might have had if the provisions of this act had not been 
 passed." 
 Registration of a word capable of exclusive appropriation has 
 
 " Independent Baking Powder Co. v. «» Dr. Dadirrian & Sons Co. v. 
 
 Boorman, 175 Fed. 448. Hauenstein, 37 Misc. 23. 
 
 ™ Eiseman v. Schiffer, 157 Fed. '»" 196 Fed. 957. 
 
 473. ='*237Fed. 502. 
 
Pending Applications 465 
 
 no effect upon the substantive rights of the parties, excepting its 
 evidential force to make a prima facie case of title.'^'" 
 
 The passage of the law has been held not to affect the jurisdic- 
 tion of the state courts in trade-mark cases.*" 
 
 § 248. Pending Applications. — The twenty-fourth section of 
 the Act is as follows: 
 
 " Sec. 24. That all applications for registration pending in 
 the office of the Commissioner of Patents at the time of the 
 passage of this act may be amended with a view to bringing 
 them, and the certificate issued upon such appHcations, un- 
 der its provisions, and the prosecution of such applications 
 may be proceeded with under the provisions of this act." 
 It provides for the amendment of applications pending at 
 the time of the passage of the Act so as to conform with the new 
 requirements, and for the further prosecution of such applications 
 under its provisions. The word "pending" herein used must be 
 taken in its ordinary sense. An application which has been re- 
 fused registration under the former statute cannot be said to be 
 pending within the meaning of the Act.*^ 
 § 249. Registration Fraudulently Procured. 
 
 " Sec. 25. That any person who shall procure registration 
 of a trade-mark, or entry thereof, in the office of the Com- 
 missioner of Patents by a false or fraudulent declaration or 
 representation, oral or in writing, or by any false means, 
 shall be hable to pay any damages sustained in consequence 
 thereof to the injured party, to be recovered by an action on 
 the case." 
 The courts have held this section inapplicable to a case where a 
 person registered a trade-mark for straight whiskey claiming use 
 since 1835 and that no other person had the right to use the mark, 
 where it appeared that another had a defensive right to use the 
 mark on blended whiskey.*'^" 
 § 250. Rules for Conducting Proceedings. 
 
 " Sec. 26. That the Commissioner of Patents is authorized 
 to make rules and regulations, not inconsistent with law, for 
 
 '"° Gaines & Co. v. Rock Spring Dis- " In re Mark Cross Co., 26 App. 
 
 tiUing Co., 226 Fed. 531. D, C. 101. 
 
 '" Traiser v. Doty Cigar Co., 198 "'* W. A. Gaines v. Rock Spring 
 
 Mass. 327; Kayser & Co. v. Italian Distilling Co., 226 Fed. 531. 
 Silk Underwear Co., 160 App. Div. 607. 
 
466 Registered Trade-Marks 
 
 the conduct of proceedings in reference to the registration of 
 trade-marks provided for by this act." 
 § 251. Importation of Articles Bearing Infringing Marks. 
 
 " Sec. 27. That no article of imported merchandise which 
 shall copy or simulate the name of any domestic manufac- 
 ture, or manufacturer or trader, or of any manufacturer or 
 trader located in any foreign country which, by treaty, con- 
 vention, or law affords similar privileges to citizens of the 
 United States, or which shall copy or simulate a trade-mark 
 registered in accordance with the provisions of this act or 
 shall bear a name or mark calculated to induce the public 
 to believe that the article is manufactured in the United 
 , States, or that it is manufactured in any foreign country or 
 locality other than the country or locality in which it is in 
 fact manufactured, shall be admitted ti entry at any cus- 
 tomhouse of the United States; and, in order to aid the officers 
 of the customs in enforcing this prohibition, any domestic 
 manufacturer or tradra-, and any foreign manufacturer or 
 trader, who is entitled imder the provisions of a treaty, con- 
 vention, declaration, or agreement between the United States 
 and any foreign country to the advantages afforded by law 
 to citizens of the United States in respect to trade-marks 
 and commercial names, may require his name and residence, 
 and the name of the locality in which his goods are manufac- 
 tured, and a copy of the certificate of registration of his 
 trade-mark, issued in accordance with the provisions of this 
 act, to be recorded in books which shall be kept for this pur- 
 pose in the Department of the Treasury, under such regula- 
 tions as the Secretary of the Treasury shall prescribe, and 
 may furnish to the department facsimiles of his name, the 
 name of the locality in which his goods are manufactured, or 
 of his registered trade-mark; and thereupon the Secretary 
 of the Treasury shall cause one or more copies of the same to 
 be transmitted to each collector or other proper officer of 
 customs. 
 This section has been held not to apply to a case where genuine 
 goods manufactured abroad, identified by a trade-mark regis- 
 tered in the United States Patent Office were imported by a third 
 person.®^* 
 ^^^ Fred Gretsch Manufacturing Company v. Michael E. Schoening and 
 
Notice of Registration 
 
 467 
 
 § 252. Notice of Registration. — The twenty-eighth section of 
 the Act is in these words: 
 
 " Sec. 28. That it shall be the duty of the registrant to give 
 notice to the public that a trade-mark is registered, either 
 by affixing thereon the words 'Registered in U. S. Patent 
 Office,' or abbreviated thus, 'Reg. U. S. Pat. Off.,' or when, 
 from the character or size of the trade-mark, or from its 
 manner of attachment to the article to which it is appro- 
 priated, this can not be done, then by affixing a label contain- 
 ing a like notice to the package or receptacle wherein the 
 article or articles are inclosed; and in any suit for infringe- 
 ment by a party failing so to give notice of registration no 
 damages shall be recovered, except on proof that the de- 
 fendant was duly notified of infringement and continued the 
 same after such notice." 
 
 It sets out that a registrant shall give notice of registration. 
 
 Dudley Field Malone, the latter Col- 
 lector of the Port of New York, 6 
 Trade-Mark Reporter, 224, Opinion 
 on Appeal not reported. 
 
 The defendant, Schoening, was ex- 
 clusive sales agent for the United 
 States of certain vioUn strings manu- 
 factured in Germany to which the 
 trade-mark "Etemelle" is applied. 
 The agent registered the trade-mark 
 under the Federal Statute and there- 
 after served notice through the See- 
 cretary of the Treasury upon divers 
 collectors of customs (including that 
 official at the Port of New York). 
 The plaintiff bought "Eternelle" 
 violin strings in Germany and sent 
 them to New York but they were re- 
 fused entry on account of defendant's 
 trade-mark and notice. 
 
 The plaintiff brought action to 
 compel the defendant Schoening to 
 withdraw his protest against importa- 
 tion and to compel the collector to 
 pass the goods. Motion for prelim- 
 inary injunction was granted by 
 Hough, D. J. On appeal decree was 
 affirmed. Ward, G. J., said: — 
 
 "Assuming that Congress coiild 
 protect the owner of a registered 
 trade-mark against the importation 
 by third parties of the genuine article 
 under that trade-mark, has it done 
 so? We think not. The act pro- 
 hibits the entry of imported merchan- 
 dise which shall "copy or simulate" a 
 trade-mark registered under it. The 
 obvious purpose is to protect the pub- 
 lic and to prevent any one from im- 
 porting goods identified by their 
 registered trade-mark which are not 
 genuine. In this case, however, the 
 imported goods were the geniune 
 article identified by the trade-mark. 
 We assume that Schoening has a valid 
 trade-mark, even if he does not man- 
 ufacture the strings, Menendez v. 
 HoU, 128 U. S. 514, applying to the 
 whole of the United States and still 
 are of opinion that it is not infringed 
 by one who buys in Germany the 
 genuine article identified by the 
 trade-mark, imports it into the 
 United States and sells- it so marked 
 here." 
 
468 Registered Trade-Marks 
 
 This notice must be affixed to the trade-mark or where that can- 
 not be done it must be appUed to the package or receptacle con- 
 taining the article. Failure to do this prevents the recovery of 
 damages except where thie defendant was duly notified of infringe- 
 ment, and continued the same. It does not, however, render a bill 
 brought for infringement demm-rable,*^ but merely prevents re- 
 covery of damages.** 
 § 263. Definitions. 
 
 " Sec. 29. That in construing this act the following rules 
 must be observed, except where the contrary intent is plainly 
 apparent from the context thereof: The United States in- 
 cludes and embraces all territory which is under the jurisdic- 
 tion and control of the United States. The word 'States' 
 includes and embraces the District of Columbia, the Terri- 
 tories of the United States, and such other territory as shall 
 be under the jurisdiction and control of the United States. 
 The terms 'person' and 'owner,' and any other word or 
 term used to designate the applicant or other entitled to a 
 benefit or privilege or rendered liable under the provisions 
 of this act, include a firm, corporation, or association as 
 well as a natural person. The term 'applicant' and 'regis- 
 trant' embrace the successors and assigns of such applicant 
 or registrant. The term 'trade-mark' includes any mark, 
 which is entitled to registration under the terms of this act, 
 and whether registered or not, and a trade-mark shall be 
 deemed to be 'aflBxed' to an article when it is placed in any 
 manner in or upon either the article itself or the receptacle 
 or package or upon the envelope or other thing in, by, or 
 with which the goods are packed or inclosed or otherwise 
 prepared for sale or distribution." 
 § 254. When Act Takes Effect. 
 
 " Sec. 30. That this act shall be in force and take effect 
 April first, nineteen hundred and five. All acts and parts of 
 acts inconsistent with this act are hereby repealed except 
 so far as the same may apply to certificates of registration 
 issued under the act of Congress approved March third, 
 eighteen hundred and eighty-one, entitled 'An act to 
 authorize the registration of trade-marks and protect the 
 
 '2 Heileman Breuring Co. v. Inde- " Rossman v. Gamier, 211 Fed. 
 pendent Brewing Co., 191 Fed. 489. 401. 
 
When Act Takes Effect 469 
 
 same,' or under the act approved August fifth, eighteen 
 hundred and eighty-two, entitled 'An act relating to the 
 registration of trade-marks.' " 
 Approved, February 20, 1905. 
 
CHAPTER XVII 
 Disparagement op Rivals and Their Goods 
 
 Section 255. English procedure statutes as related to injunction. 
 
 256. Did equity have jurisdiction to enjoin libels prior to the act of 
 
 1873? 
 
 257. Summary of EngUsh cases. 
 
 258. Importance of this question in United Sta,tes. 
 
 259. Difference between trade libel and personal hbel. 
 
 260. American cases. 
 
 261. The case of Kidd v. Horry. 
 
 262. The General American Rule. 
 
 263. Qualification of rule. 
 
 264. Right to restrain issuing of circulars to customers — case of 
 
 Eniack v. Kane. 
 
 265. Theory that threats of prosecution must be shown to warrant 
 
 issuance of injunction. 
 
 266. Intent to intimidate customers, not to fairly warn them, is a 
 
 necessary element of this kind of proceeding to enjoin. 
 
 267. Circulars giving notice of pendency of suit for unfair competition 
 
 are legal. 
 
 268. Trade Ubels not libelous per se. 
 
 269. Preliminary injunction should issue, when the plaintiff's right is 
 
 so clear as to be practically, or is actually (as by demurrer), 
 conceded. 
 
 270. False representations regarding a competitor which are not 
 
 libelous. 
 
 271. Statutes as to libels do not oust equity of jurisdiction. 
 
 The law relating to libel and slander of goods, trade names, 
 and business credit is most interesting from an historical stand- 
 point, as well as from the fact that the decisions on the questions 
 involved are far from unanimous. Many of the cases place 
 squarely before the court a state of facts showing beyond a doubt 
 that one of the parties to the action is suffering continuous and 
 irreparable damage to his business or credit, by reason of malicious 
 misrepresentations made by the other. It should be, and un- 
 doubtedly is, the impulse of a court of equity in all such cases, to 
 ^ve quick relief to the injured party by injunction against further 
 use of the damaging words. This is not often done, however, as 
 470 
 
English Statutes as Related to Injunction 471 
 
 the court is at once brought face to face with the various constitu- 
 tional provisions by which trial by jury is required in all cases of 
 libel and slander, and in some instances the jury is made the judge 
 of both law and fact.^ There are decisions both ways as to the 
 jurisdiction of equity to grant relief by injunction against false 
 statements as to trade and merchandise. The problem in these 
 cases is to uphold the rights of free speech and free press, and still 
 to prevent the fraud, loss, and injustice which arise from defama- 
 tion of merchandise, credit, and trade. 
 
 The reputation and credit of business men are, perhaps, no 
 more important and no more valuable, in many instances, now- 
 adays than fifty or a hundred years ago. But it must not be 
 forgotten that the malicious and unscrupulous competitor has at 
 his hand to-day, a hundred means of injuring his rival, where 
 formerly he had one. Half a century ago, credit was not the sen- 
 sitive thing that it is to-day, and credit agencies and trade journals 
 were Uttle known. Mails were slow and sending letters was expen- 
 sive; advertising was in its infancy. To-day, the many news- 
 papers, cheap postal rates, cheap printing, and cheap transporta- 
 tion, give an unscrupulous trader many swift ways of blasting his 
 rival's trade reputation almost before it is discovered that he has 
 begun his nefarious operations. 
 
 Therefore, one studying the decisions dealing with this ques- 
 tion should not forget this change in conditions; and, while it is 
 true equity does not attempt to relieve every wrong, it is also 
 true that it always does relieve wrong, as far as it is possible for 
 the court to do so. It also adapts itself to new conditions when 
 it can do so consistently with its fundamental principles. 
 
 § 255. English Procedure Statutes as Related to Injunction. — 
 The necessity for quick relief in such cases as these has been 
 recognized and provided for in England. The statutes of 1854 
 and 1873 have given to courts of both law and equity the right 
 to grant injunctions in cases of libel and slander, by giving to the 
 chancery courts the power to try libels, and to the law courts the 
 power to issue injunctions'. The Common Law Procedure Act of 
 1854 1° enacted that: "In all cases of breach of contract or other 
 injury, where the party injured is entitled to maintain, and has 
 brought an action, he may * * * claim a writ of injunction 
 against the repetition or continuance of such breach of contract 
 
 IN. Y. Const., art. 1, § 8. i" 17 & 18 Viet., chap. 125. 
 
472 Disparagement of Rivals and their Goods 
 
 or other injury," etc. — and "in such action judgment may be 
 given that the writ of injunction do, or do not issue as justice may 
 require;" and further "the plaintiff may at any time after the 
 commencement of his action, apply ex parte for an injunction." 
 
 This statute gave the judges of the common-law courts the 
 power to issue injunctions, in the cases specified, to prevent a 
 repetition or a continuance of the injiuy for which the suit was 
 brought. It did not change the jwwers of chancery. "Although 
 the power (of courts of common law to issue injunctions) had 
 existed since 1854 (by reason of the Procedure Act of that year), 
 there is no reported instance of its exercise by a court of conunon 
 law till Saxby v. Esterhrook which was decided in 1878." ^ 
 
 The Judicature Act of 1873 ^ enacted that the High Court of 
 Justice should have and exercise "the jurisdiction which, at the 
 commencement of this act, was vested in or capable of being 
 exercised by all or any one or more of the judges in the common- 
 law courts, respectively, sitting in Court or in Chambers, or else- 
 where, when acting as judges or a judge in pursuance of any stat- 
 ute, law, or custom; and all powers given to any such court or to 
 any judges or judge, by any statute; and also all ministerial 
 powers, duties, and authorities incident to any and every part 
 of the jurisdiction so transferred." Section 25, subsection 8, 
 Judicature Act of 1873, reads: "A mandamus or an injunction 
 may be granted or a receiver appointed by an interlocutory order 
 of the court in all cases in which it shall appear to the court to be 
 just or convenient that such an order should be made; and any 
 such order may be made either unconditionally or upon such terms 
 and conditions as the court shall think just; and if an injunction 
 is asked, either before, or at, or after the hearing of any cause or 
 matter, to prevent any threatened or apprehended waste or tres- 
 pass, such injunction may be granted, if the court shall think fit, 
 whether the person against whom such injunction is sought is 
 or is not in possession under any claim of title or otherwise," etc. 
 
 § 256. Did Equity Have Jurisdiction to Enjoin Libels Prior 
 to the Act of 1873? — It is probable that the English Court of 
 Chancery had jurisdiction, prior to both of these acts, to forbid 
 the pubhcation of false and malicious statements regarding the 
 quality of merchandise, methods of manufacture, and the like — 
 
 2 Lord Coleridge in Bonnard v. » 36 & 37 Vict. c. 66, § 16. 
 Perryman, 2 Ch. 269-1891. 
 
English STATtrfEs As Related to Injunction 473 
 
 acts which, in brief, are usually referred to as trade Ubels. The 
 Court of Star Chamber granted injunctions against libel. ^ Lord 
 Ellenborough said in Du Bost v. Beresford ^ that the exhibiting 
 of a painting might be enjoined; in Burnett v. Chetwood,^ the 
 translation of a book from Latin to English was forbidden. In 
 Gee V. Pritchard,'' Lord Eldon prohibited the publication of copies 
 of letters from copies secretly taken before they were returned to 
 the writer, and the reporter's note refers to 4 Burrow's 2331-1769, 
 where counsel speak of two unrecorded cases holding the same 
 way, and said (p. 413): "The question will be, whether this bill 
 has stated facts of which the court can take notice as a case of 
 civil property." This decision is approved by Judge Story.^ 
 In Emperor of Austria v. Day and Kossuth^ a libel was enjoined, 
 probably on the ground of property rights. In Routh v. Webster i" 
 the defendants were restrained from publishing in a prospectus 
 that plaintiff was trustee of a joint-stock company, the court here 
 probably acting on the ground of plaintiff's property rights. 
 Doctor Clark attempted to stop a quack from selling "Sir James 
 Clark's Consumption Pills," in Clark v. Freeman,^^ but an injunc- 
 tion was refused on the ground that the court could not stop the 
 publication of a libel. In Seeley v. Fisher ^^ an injunction against 
 an advertisement was refused because no claim of exclusive prop- 
 erty was made by plaintiff. 
 
 In Donaldson v. Beckett ^' it is stated that one class of injunc- 
 tions issuing out of chancery is "injunctions for printing unpub- 
 Ushed manuscripts without license from the author." 
 
 These cases are the English cases on this point prior to the 
 .decision of MaUns, V. C, in 1869 in Dixon v. H olden, ^* where he 
 said: "I beg to be understood as laying down that this court has 
 jurisdiction to prevent the publication of any letter, advertise- 
 ment, or other document, which, if permitted to go on, would 
 have the effect of destroying the property of another person, 
 whether that consists of tangible or intangible property, whether 
 it consists of money or reputation." 
 
 " Hudson's Star Chamber. 
 
 ' 2 Campb. 5.11-1810. 
 
 » 2 Merivale, 441-1720, note. 
 
 ' 2 Swanst. 403-1818. 
 
 8 2 Story Eq. Jur. §948. 
 
 » 3 De G. F. & J. 217-1861. 
 
 " 10 Beav. 561-1847. 
 " 11 Beav. 112-1848. 
 " 11 Sim. 581-1841. 
 " 2 Brown's Pari. Cas. 129; 
 " L. R. 7 Eq. 488-94-1869. 
 
 1774. 
 
474 Disparagement of Rivals and their Goods 
 
 The facts of this case are stated by this same vice-chancellor 
 in Thorley's Cattle Food v. Massam. ^^ ' ' Mr. Dixon was a merchant 
 of great repute in Liverpool, and he happened to employ a sohcitor 
 of that town; that solicitor thought fit to quarrel with him about 
 his bill of costs, or something of that kind, and he persisted in 
 stating day after day, in newspapers and placards over the town, 
 that Mr. Dixon had been a member of an insolvent firm which 
 had failed, and that it was treated as a fraudulent firm; if that 
 were true Mr. Dixon's character and reputation as a merchant 
 were gone." The opinion was in part as follows: "I am told that 
 a court of equity has no jurisdiction in such a case as this, although 
 it is admitted it has jurisdiction when property is hkely to be 
 affected. What is property? One man has property in lands, 
 another in goods, another in a business, another in skill, another 
 in reputation; and whatever may have the effect of destroying 
 property in any one of these things (even in a man's good name) 
 is, in my opinion, destroying property of a most valuable descrip- 
 tion. But here it is distinctly sworn to, and cannot be denied that 
 the effect of this will be seriously damaging to the plaintiff's busi- 
 ness of a merchant. Now, the business of a merchant is about 
 the most valuable kind of property he can well have. Here is the 
 source of his fortune, and therefore to be injured in his business 
 is to be injured in his property. But I go further, and say if it 
 had only injured his reputation, it is within the jurisdiction of 
 this court to stop the pubUcation of a libel of this description 
 which goes to destroy his property or his reputation, which is his 
 property, and, if possible, more valuable than other property" 
 (id. p. 492). 
 
 In reading this case it should be remembered that the act of 
 1854 did not in any way enlarge the power of the Chancery Court 
 in which this proceeding was brought. Hence, this decision was 
 an announcement of an enlarged jurisdiction of chancery. To 
 this proposition Malins, V. C, clung consistently against much 
 opposition, and it now seems as if his view was to be adopted, 
 although in Mulkern v. Ward,^^ and in Prudential Assurance Co. 
 V. KnoU," Dixon v. H olden was adversely criticised. 
 
 In 1873 came the Judicature Act, which gave power to the 
 Chancery Court to try libels, but a study of the decisions rendered 
 
 '^ L. R. 6 Ch. Div. 582-87-1877, " L. R. 13 Eq. 619-1872. 
 11 Ch. Div. 762-1880. " L. R. 10 Ch. App. 142-1875. 
 
Summary of English Cases 475 
 
 subsequent to the act seems to show that the doctrine developed 
 in a considerable degree spontaneously regardless of this statute 
 both before and after the date of its enactment. 
 
 This review of the English cases has been given to show that 
 the conception of the powers of the Chancery Court has been a 
 growth — a natural development of the past sixty years, and 
 not the result of statute. 
 
 Following the act of 1873 came Thorhy's Cattle Food Co. v. 
 Massam,^^ Day v. Brownrigg,^^ Hill v. Hart Davies,^" and other 
 cases, all influenced in a greater or less degree by the act of 1873. 
 
 § 257. Summary of English Cases. — The English cases of this 
 character seems to warrant the following deductions: 
 
 (1) Equity has jurisdiction to protect business property from 
 injury inflicted by pubUcation of false statements — at the same 
 time being "keenly ahve to the difiiculty, which varies greatly 
 with the circumstances of each case, in framing an injunction 
 which will protect the plaintiff without imduly restricting free 
 speech." The court said in Collard v. Marshall,^^ on a motion for 
 znfenm injunction (Chitty, J.), that "The Court of Chancery, be- 
 fore the Judicatm-e Act, had power to intervene by injimction to 
 protect property, but not to protect character; it had no power 
 to try a Ubel. Since the Judicature Acts, the chancery division 
 has, on motion, granted injunctions restraining the further pub- 
 lication of false statements calculated to injure a man's trade. 
 See Thomas v. Williams.^^ The court always acts with the great- 
 est caution, and is keenly aUve to the difficulty, which varies 
 greatly with the circmhstances of each case, in framing an injunc- 
 tion which will protect the plaintiff without unduly restricting 
 free speech" (id. p. 577), This action was to restrain a placard, 
 which was as follows: "A strike is now on at C. & C.'s against 
 cheap labor and the sweating system of contract work," and 
 Chitty, J., allowed a statement that a strike against a system of 
 contract labor, or the employment of an undue proportion of boys, 
 was on at C. & C.'s. 
 
 (2) Before the act of 1854 equity could enjoin injury to prop- 
 erty, and the jurisdiction of chancery in that regard was not 
 altered in any way by that act. 
 
 " L. R. 6 Ch. Div. 582-1877; 14 »» L. R. 21 Ch. Div. 798-1882. 
 Ch. Div. 762-1880. " 1 Ch. 571-1892, at p. 577. 
 
 " L. R. 10 Ch. Div. 294^1878. " L. R. 14 Ch. Div. 864-1880. 
 
476 Disparagement of Rivals and their Goods 
 
 (3) A man's interest in the names of his merchandise, in his 
 trade name, and in the reputation of his business is property 
 which a court of equity will protect from destruction or injury. 
 
 The present condition of the law in England is well summed 
 up by Mr. Folkard in "The Law of Libel and Slander:" ^' "It 
 appears, therefore, that (independently of the statute cited, viz.: 
 acts of 1854 and 1873), both upon principle and authority, the 
 jurisdiction rests on the injury to property, such injury being 
 actual or prospective; but where the injury complained of is that 
 of defamation of character only, there is no principle of law nor 
 rule of equity conferring jurisdiction to restrain it by injunction. 
 If, however, the publication is, or would be, if persisted in, in- 
 jurious to property, or if it amoimts to a contempt of court, it 
 may be restrained by interlocutory injunction; and not the less 
 so because it is also libelous." 
 
 That other courts than the law courts should have jurisdiction 
 of Ubel and slander accords with the history of the law of defama- 
 tion. In very early times the ecclesiastical, Star Chamber and 
 seignorial courts tried most of these cases. At first the law courts 
 had no remedy for defamation. "And it is not used in this realm 
 that pleas of defamation should be pleaded in the King's Court." ^* 
 
 The early cases distinguished between spiritual and temporal 
 defamations. Most of these cases dealing with defamation of a 
 person's livelihood, office, or business, related to callings connected 
 with the administration of justice; as defamation of judges or 
 attorneys, calfing merchants bankrupts and so bringing them 
 under the bankruptcy statute. The idea that damage to a man's 
 trade or business was a ground of action probably arose after the 
 ecclesiastical courts lost their power, as such a loss related to 
 temporal, nonspiritual affairs. 
 
 The Star Chamber Court finally obtained large powers as re- 
 gards these cases. It drew its precedents not from the common 
 law but through the influence of its ecclesiastical members from 
 the civU law, and the rules of law thus created were first set forth 
 in the case of De Libellis Famosis.^^ 
 
 It is said Scroggs was impeached for trying to introduce the 
 practice of enjoining Ubels into the Court of King's Bench.^^" 
 
 " London, 1908, p. 327. """Judges of England," Foss, 
 
 " Rat. Pari. 1-133. Vol. VII, p. 170. 
 
 25 5 Coke 125o. 
 
Importance of Question in United States 477 
 
 § 258. Importance of this Question in United States. — It 
 must be remembered that none of the cases subsequent to 1873 are 
 of much value in America. All cases, in other words, decided 
 after the act of 1873 are not in point because of the existence of 
 that act, which enlarged the jurisdiction of English chancery and 
 so gave the court powers which American equity courts do not 
 possess. But it, is most important to the American courts to 
 know whether or not the EngUsh Chancery Court had original 
 jurisdiction, before the statutes to enjoin the utterance of trade 
 Ubels; for both American and EngUsh equity courts are the devel- 
 opment of the old English Chancery Court. If, therefore. Chan- 
 cery did have the power to issue such injunctions, the American 
 Equity Court, which adopted the principles of the English Chan- 
 cery Courts, is not using one of its most important weapons. 
 
 Before the Judicature Acts the Court of Chancery undoubtedly 
 did not claim to have power to try a libel, using that term ia its 
 usual legal sense; but that is not the question first to be considered. 
 Rather it must first be decided if the acts included in the mislead- 
 ing term "trade libel" are really libels at all. 
 
 § 269. Difference Between Trade Libel and Personal Libel. — 
 This question is not now important in England, as the statutes 
 referred to have cleared all obstacles out of the way of the court 
 and quick relief can there be afforded in these cases by injunction; 
 but in America the strict construction of the term "libel" has 
 governed; and all false statements, whether as to trade and mer- 
 chandise or as to character, are measured up to the same rules of 
 procedure and remedy. Hence it is important here in the United 
 States to know if there be any distinction between character 
 libel and trade Hbel. If there is such a distinction, it may be 
 possible to secure reUef by injunction in cases where, in the past, 
 the suitor has been turned away from an equity court, and left 
 to seek relief against one who is doing him serious and constant 
 injury through an action at law. 
 
 If there be a difference between trade Ubel and character libel, 
 it is to be found in their relation to personal rights. A hbel of a 
 man's personal reputation involves his good name. That vitally 
 concerns his standing among men, and the repute of himself and 
 his family in the community. On the other hand, to publish a 
 statement that the ejector device of the rifle which he sells is 
 defective has no such effect. 
 
478 Disparagement of Rivals and their Goods 
 
 False statements as to merchandise or trade are made for the 
 purpose of getting a rival's trade away from him. They do not 
 often involve any criticism of his character, impute to him any 
 loathsome disease, or charge him with crime, or defect in character, 
 in the sense in which such criticism could be construed as libel. 
 To say something of another falsely "which may impair or hurt 
 his trade or livelihood, as to call a tradesman a bankrupt, a physi- 
 cian a quack, or a lawyer a knave" "^ is undoubtedly libel. To so 
 speak of a person is to discredit him among his fellows, to deprive 
 him of his neighbors' respect and confidence — to brand him as 
 unfit to share in the life of those about him. To say falsely that a 
 rival is infringing one's patent; that a newspaper is not of a class 
 specified by statute for pubhcation of certain advertising; ^' or 
 that plaintiff's safes could be easily opened, — ^^ is not a libel in 
 the usual meaning of the term. It is a false and fraudulent state- 
 ment, made to obtain unfairly the business of another. Persons 
 who use such words or phrases should be enjoined at once. If 
 these words are to be classed strictly as libels, special damages 
 must be shown to have resulted from their use, and it may be 
 diflicult, if not impossible, to show such damage except after a 
 considerable period. But it is not difficult usually to prove their 
 falsity, and an equity court, if convinced of the falsity of the state- 
 ments made, should put an end to them by injunction. 
 
 Damages at law may afford adequate recompense and reUef 
 for either a single utterance of a libel or for many utterances of a 
 Hbel against character. Once a statement has been made that a 
 person is guilty of a crime, or that a doctor is a quack, the dam- 
 age is done. The libeled person can recover damages; a jury can 
 at once, or after a lapse of two or three years, put an estimate on 
 the injury suffered by the false statement. The statement that a 
 man's patent is invalid, or that the ejector of a rifle he manufac- 
 tures is defective, made once may, and probably would, cause a 
 damage which could not easily be estimated accurately, and 
 usually because the damage would be very slight from a single 
 statement of that sort, but that it might well be very large in 
 total cannot be denied. Any adequate reUef against such state- 
 
 ^ Blackstone, Bk. Ill, c. VIII, § 5. ^' Victor Safe & Lock Co. v. De- 
 
 "Le Massena V. Storm, 62 App. right, 147 Fed. 211-1906 (C. C. A. 
 
 Div. (N. Y.) 150-1901; 70 N. Y. 8th Cir.). 
 
 Supp. 882. 
 
American Cases 479 
 
 ments must put a stop to them at once. Customers must not be 
 continually frightened if business is to prosper. 
 
 This is the reason for the statement in 22 Cyclopedia of Law 
 and Procedure ("Cyc") 901, that "a distinction is taken between 
 false statements made maliciously and those made in good faith; 
 and this class of cases holds that the injunction will be granted 
 where malice or a wilful purpose to inflict injury is present." 
 See cases there cited. 
 
 The decision of the Massachusetts court that breach of trust 
 or of contract is necessary to give equity jurisdiction to restrain 
 "representations as to the character and standing of the plaintiff, 
 or as to his property (by a mercantile agency), although such rep- 
 resentation may be false," **" is to the same effect. 
 
 Speaking before the Patent Law Association, in 1899, Mr. C. E. 
 Pickard says ^^ as to the value of an action at law against one 
 who issues circulars making accusations of infringement against 
 rivals: "Of course if he can prove that the circulars in question 
 are false and maliciously uttered and that he has been actually 
 damaged thereby, the manufacturer may, by a suit at law, recover 
 such damages as he can prove he has actually sustained. * * * 
 How difficult — how practically impossible — it generally is to 
 prove such actual damages is obvious to any to whose attention 
 the matter has been brought, and need not be discussed here. The 
 advice we are compelled to give is that ' the game is not worth the 
 candle.' Some means should be provided by which this evil may 
 be checked at the source." 
 
 The realization of the necessity of the writ of injunction to 
 prevent and forestall the use of false statements regarding the 
 merchandise is becoming more general; and it will be a great 
 boon to honest business when men are able to use freely the 
 weapon of the injunction to prevent malicious attacks upon their 
 products by competitors who use falsehood as their weapon. 
 
 § 260. American Cases. — An early New York case '" held 
 that, in the absence of an allegation of injury to plaintiff's prop- 
 erty, a Ubel would not be restrained. The motive in this case 
 was malice and revenge, rather than trade rivalry, and the libel 
 
 ^^ Raymond v. Russell, 143 Mass. '" Brandreth v. Lance, 8 Paige, 24r- 
 295-96-1887; 9 N. E. 544. 1839. 
 
 ^'Proceedings pf Assn., 313-1884- 
 1900, 
 
480 
 
 Disparagement of Rivals and their Goods 
 
 was a personal, and not a trade libel, but the opinion of Chan- 
 cellor Walworth is in point here and contains a summary of early- 
 English cases dealing with applications to enjoin libels. In Singer 
 Manufacturing Co. v. Domestic Sewing Machine Co.^^ an injunc- 
 tion was sought against the publication of the false statement 
 that defendant's machine, instead of complainant's, had been 
 decided at a state fair to be the best domestic machine. " It is well 
 settled," says the court in this case, "that an injunction will not 
 be granted to restrain slander or libel of title, or of reputation.^^ 
 Not that it is not a wrong, not that the wrong might not be irrep- 
 arable, but simply because courts of chancery in the exercise 
 of the extraordinary powers lodged in them have uniformly re- 
 fused to act in such a case, leaving parties to their remedy at law." 
 Later, speaking of the acts of the defendant, the court remarks 
 that they "are calculated to injure the credit of the complainant's 
 
 51 49 Ga. 70-1873. The plaintiff, a 
 manufacturer of sewing machines, 
 entered into a competition before the 
 Georgia State Agricultural Society for 
 a premium on the best machine, and 
 secured the reward. The defendant, 
 which was also a competitor in said 
 contest, published an article in the 
 " Atlanta Herald," stating that its ma- 
 chine had been decided and reported 
 by the Committee to be the best 
 family machine. 
 
 The plaintiff brought suit for an 
 injunction to restrain the defendant 
 from saying by publication or other- 
 wise that the said Society did not 
 award the first premiums to the com- 
 plainant for the best family machine, 
 and for the best manufactured ma- 
 chine. An injunction was denied. 
 
 "The case made by the bill is one 
 of words which are untrue in fact, and 
 which are calculated to injure the 
 credit of the complainant's business 
 and advance the business of the de- 
 fendant. If a wrong capable of redress 
 before the Court at all, it comes more 
 nearly within the definition of a libel 
 or of slander concerning one's trade or 
 
 business than anything else. Equity, 
 it must be remembered, will not en- 
 join every wrong. There are injuries 
 by one man to another which no law 
 will remedy. TelUng Ues, unless those 
 hes be of a pecuUar character, is 
 one of such injuries. But there are 
 very many wrongs, wrongs recogniz- 
 able and capable of redress at law, 
 that yet are not such wrong as a court 
 of equity will enjoin. Libel and 
 slander, however illegal and outrageous 
 will not be enjoined. * * * 
 
 " The principle is, that to authorize 
 the writ there must be an irreparable, 
 expected injury to a property right. 
 It is a pervereion of language to say 
 that the complainant has a property 
 right in the truth of the report. He 
 has, perhaps, a right to the report, 
 but a perversion of the truth, a claim 
 that it is different from what it in fact 
 is, can in no fair sense be called an 
 infringement of his right of property 
 in the report." 
 
 '2 Citing Martin v. Wright, 6 Sim. 
 297-1833; Clark v. Freeman, 11 Beav. 
 112-1848; Seeley v. Fisher, 11 Sim. 
 581-1841. 
 
American Cases 481 
 
 business and advance the business of the defendant. If a wrong 
 be capable of redress before the courts at all, it comes more nearly 
 within the definition of a libel or of slander concerning one's trade 
 or business, than anything else. Equity, it must be remembered, 
 will not enjoin every wrong. There are injuries done by one man 
 to another which no law will remedy. * * * The principle is, 
 that to authorize the writ there must be an irreparable injury to 
 a property right." 
 
 In the same year 1873, the case of Boston Diatite Co. v. Florence 
 Manufacturing Co.^^ was decided in Massachusetts. Diatite was 
 a patented material used by plaintifif to make toilet mirrors, etc., 
 and it was a trade-mark name. Defendant made mirrors from 
 another substance of the same nature not protected by letters 
 patent. Defendant represented to plaintiff's customers that plain- 
 tiff was infringing patents of defendant. Injunction was refused. 
 Said Grey, C. J.: "The jurisdiction of a Court of Chancery does 
 not extend to cases of libel and slander, or of false representation 
 as to the character or quahty of the plaintiff's property, or to his 
 title thereto which involves no breach of trust or of confidence." 
 The court cites Huggonson Case,^* Gee v. Pritchard,^^ Seeley v. 
 Fisher,^^ Fleming v. Newton,^'' Emperor of Austria v. Day & 
 Kossuth,^^ Mulkern v. Ward,^^ and remarks: "The opinions of 
 Vice-Chancellor Malins in Springhead Spinning Co. v. Riley, ^^ 
 in Dixon v. HoMen,*^ and Rollins v. Hinks,^'^ appear to us to be so 
 inconsistent with these authorities and with well-settled prin- 
 ciples, that it would be superfluous to consider whether, upon the 
 facts before him, his decisions can be supported. The jurisdic- 
 tion to restrain the use of a name or trade-mark, or the pubUca- 
 tion of letters, rests upon the ground of the plaintiff's property in 
 his name, trade-mark, or letters, and of the defendant's unlawful 
 use thereof." *^ Held, that there was here "no trust or contract 
 between the parties and no use by the defendants of the plaintiff's 
 
 »' 114 Mass. 69. " L. R. 13 Eq. 355-1872. 
 
 " 2 Atk. 469, 488-1742. " Citing Bovth v. Webster, 10 Beav. 
 
 2*2 Swanst. 403-1818. 561-1847; Leather Cloth Co. v. Amer- 
 
 »« 11 Sim. 581-1841. ican Leather Co., 4 De G. J. & S. 137- 
 
 " 1 H. L. Cas. 363-1848. 1863; affirmed in 11 H. L. Cas. 523- 
 
 »8 3 De G. F. & J. 217-1861. 1865; Maxwell v. Hogg, L. R. 2 Ch. 
 
 " L. R. 13 Eq. 619-1872. App. 307-1867; Gee v. Pritchard, 2 
 
 " L. R. 6 Eq. 551-1868. Swanst. 403-1818. 
 " L. R. 7 Eq. 488-1869. 
 
482 Disparagement of Rivals and their Goods 
 
 name; but only that the defendants made false and fraudulent 
 rep^esentationSj oral and written, that the articles manufactured 
 by the plaintiff were infringements of letters patent of the defend- 
 ant corporation, * * * and that the defendants further 
 threatened divers persons with suits, etc. * * * if the plain- 
 tiff has any remedy, it is by action at law." ** 
 
 The foregoing case was followed in Whitehead v. Kitson,*^ in 
 which it was alleged that defendant falsely represented to persons 
 Ukely to buy plaintiff's patent that it interfered with a patent of 
 defendant, resulting in loss of business to plaintiff; and it was held, 
 that the case was not one of equitable jurisdiction and that, on 
 authority of Boston Diatite Co\ v. Florence Manufacturing Co.,^ 
 and Prudential Asewanee Co, v. Knott,^'' the court had no jurisdic- 
 tion. 
 
 In Life Association (^ America v. Boogher ^ the allegations of 
 the bill were that Boogher had been engaged in the composition, 
 pubUcation, and circulation of false, etc., statements respecting 
 the plaintiff * * * "for the purpose of injuring him, and 
 in order to levy blackmail on the plaintiff," and that defendant 
 was insolvent so that a judgment against him for damages would 
 be valueless. Held, that there was no jurisdiction to restrain the 
 publication. 
 
 In Manger v. Dick,*^ an action to restrain defendant from in- 
 terfering with plaintiff's business by threats, circulars, and suits, 
 Dick made and sold capsules. Mauger left employ of Dick and 
 started "American Soft Capsule Co." And soon after Dick 
 issued a circular stating "certain parties are infringing our trade- 
 mark rights by seeking to place on the market imitations of our 
 soft capsules," etc., and threatening to punish "any encroach- 
 ments on our rights." Held, that "the jurisdiction of a court of 
 equity does not extend to false representations as to the char- 
 acter or quality of the plaintiff's property, or to his title thereto, 
 when it involves no breach of trust or contract, nor does it extend 
 to cases of libel or slander. Equitable jurisdiction to restrain the 
 use of a name or trade-mark, or letters, rests upon the ground 
 of plaintiff's property in his name, trade-mark, or letters, and the 
 
 ", Citing Barley v. Walford, 9 Q. B. « 114 Mass. 69-1873. 
 
 197-1846; Wren v. Weild, L. R. 4 " L. R. 10 Ch. App. 142-1875. 
 
 Q. B. 730-1869. ■» 3 Mo. App. 173-1876. 
 
 « 119 Mass. 484-1876. " 55 How. Pr. 132-34-1878. 
 
The Case of Kidd v. Horry 483 
 
 unlawful use thereof." In contrast with the above ruling note 
 that an injunction was issued in Crojt v. Richardson,^" a Special 
 Term case, against the publication of threats of prosecution for 
 infringement, the court inferring bad faith from the language used 
 by defendants; but this case, especially since Marlin Fire Arms 
 Co. V. Shields,^"^ which appears to disapprove it, can hardly be 
 considered authoritative. The decision stated that the "plain- 
 tiffs claim * * * that the defendants are publishing false 
 and malicious libels concerning plaintiffs' business and their busi- 
 ness character and transaction." This the state courts have a 
 right to restrain.^^ The charge was to the effect that plaintiffs 
 were prosecuting a business which was an unlawful interference 
 with defendants' rights, and were irresponsible, and hoped to make 
 something out of it before legal proceedings were taken, and that 
 their efforts in that direction were nefarious. "This language is 
 quite too excessive and ill chosen to convey simply information 
 that the plaintiffs and their patrons have no right to make and 
 sell exhibitors, and are Uable to defendants for so claiming. At 
 all events, I think it quite safe to hold that such language is sat- 
 isfactory evidence of malice until the defendants commenced an 
 action in good faith, against the plaintiffs or other parties, to 
 vindicate the rights which the defendants claim" (p. 358). 
 
 § 261. The Case of Kidd v. Horry. — In 1886, application 
 was made to the United States Circuit Court, Joseph P. Bradley 
 and WiUiam McKennon, Justices, in the case of Kidd v. Horry, ^^ 
 for an interlocutory injunction against "circular letters which are 
 alleged to be libelous and injurious to the patent rights and busi- 
 ness of the complainants; and from making or uttering -libelous 
 or slanderous statements, written or oral, of or concerning the 
 validity of their letters patent," etc. The court admitted the 
 question new, saying: "* * * The application seems to be 
 altogether a novel one, and is urged principally upon a line of 
 recent English authorities, such as Dixon v. Holden,^* Thorley's 
 Cattle Food Co. v. Massam,^^ Thomas v. William^,^ and Loog v. 
 
 "> 59 How. Pr. 356-1880. Food Co. v. Massam, L. R. 14 Ch. Div. 
 
 " 171 N. Y. 384-1902; 64 N. E. 163; 763-1880. 
 59 L. R. A. 310. " 28 Fed. 773-76-1886 (C. C. Pa.). 
 
 " Citing Snow v. Judson, 38 Barb. " " L. R. 7 Eq. 488-1869. 
 (N; Y.) 210-1862; Thorky's CatOe '' L. R. 14 Ch. Div. 763-1880. 
 
 5« L. R. 14 Ch. Div. 864-18S0. 
 
484 Disparagement op Rivals and their Goods 
 
 Bean." An examination of these and other cases relied on con- 
 vinces us that they depend on certain peculiar acts of parliament 
 of Great Britain, and not on the general principles of equity 
 jurisprudence" (id. p. 774); and then added: "We do not think 
 that the existence of malice in publishing a libel, or uttering slan- 
 derous words, can make any difference in the jurisdiction of the 
 court. Malice is charged in almost every case of libel, and no 
 cases of authority can be found, we think, independent of statute, 
 in which the power to issue an injunctibn to restrain a libel or 
 slanderous words Jias ever been maintained, whether maUce was 
 charged or not. Charges of slander are peculiarly adapted to, 
 and require trial by jury; and, exercising as we do, authority under 
 a system of government and law, which by a fimdamental article 
 secures the right of trial by jury in all cases at common law, and 
 which by express statute declares that suits in equity shall not 
 be sustained in any case where a plain, adequate, and complete 
 remedy may be had at law, as has always heretofore been con- 
 sidered the case in causes of Ubel and slander, we do not think that 
 we would be justified in extending the remedy of injunction to 
 such cases." ^^ 
 
 The English cases which the court here refuses to recognize 
 as authority binding in any way upon it, because "An examina- 
 tion of these and other cases relied on convinces us that they de- 
 pend on certain peculiar acts of parliament of Great Britain, and 
 not on the general principles of equity jurisprudence" are Dixon 
 V. Holden,^^ Thorley's Cattle Food Co. v. Massam,^'^ Thomas v. 
 Williams,^^ and Loog v. Bean.^^ It referred also to Prudential 
 Assurance Co. v. Knott,^^ and Beddow v. Beddow.^^. The date of 
 these decisions is vital in considering their authority; for, if the 
 act of 1854 did not affect the jurisdiction of Chancery, and the 
 act of 1873 did enlarge that jurisdiction, all Chancery cases before 
 1873 are cases which depend on the general principles of equity 
 jurisprudence and were authorities on which the court in Kidd v. 
 Horry should have acted. Tlie court seems to have relied on cases 
 
 t ' 
 
 " L. R. 26 Ch. Div. 306-1884. «» L. R. 14 Ch. Div. 763-1880. 
 
 '8 Followed by Judges Colt and " L. R. 14 Ch. Div. 864^1880. 
 
 Carpenter in Massachusetts & Balti- e^ L. R. 26 Ch. Div. 306-1884. 
 
 more Car Wheel Co. v. Bemis, 29 Fed. " L. R. 10 Ch. App. 142-1875. 
 
 95-1886 (C. C. Mass.). " l. R. 9 Ch. Div. 89-]878. 
 
 " L. R. 7 Eq. 488-1869. 
 
The General American Rule 485 
 
 decided after 1873, with the exception of Dixon v. Holden, and 
 hence on cases which may be presumed to have been influenced by 
 that act. It does not mention the cases decided before the act, 
 which hold against the view here adopted by the court. It is to be 
 noted that this was an application for an interlocutory or interim 
 injunction. No proof appears to have been offered on the applica- 
 tion as to the falsity of the alleged libelous statements. This case 
 could therefore hardly be considered authority on an application 
 at trial on proof of falsity having been given. Moreover, it does 
 not decide what a "trade libel" is; it only lays down the rule that 
 equity will not enjoin a hbel such as the making of libelous and 
 injurious statements as to patents and patent rights. What these 
 statements are, of course, we do not know. This case held also 
 that the fact that the defendant acted with malice was no ground 
 for granting an injunction. It is followed and upheld in Allegretti 
 Chocolate Cream Co. v. Bubel.^^ 
 
 § 262. The General American Rule. — The doctrine laid 
 down in Kidd v. Horry must be considered as the settled rule in 
 this country, subject only to limited qualification, as indicated 
 below. The rule, for example, was strongly applied in Citizens' 
 Light, etc., Co. v. Montgomery, etc., Co.,^^ in which the court refused 
 to interfere with the widespread circulation of false statements 
 as to credit, business standing, etc., and it was held to make no 
 difference that this was by the concerted action of several. The 
 rule was re-stated (although the case at bar did not require its 
 full application) in American Malting Co. v. KeiteV The opinion 
 reviews and discusses the earlier cases characterizing the cases in 
 which jurisdiction to restrain libels has been assumed as "those 
 which have involved conspiracy, intimidation or coercion."^* 
 Other recent cases are referred to in the note.™ 
 
 « 83 111. App. 558-1898. found to be a libel by the verdict of 
 
 «« 171 Fed. 553. a jury, where insolvency was shown, 
 
 «' 209 Fed. 351. or to avoid multipUcity of suits. 
 
 «8lt might be suggested, however, Willis v. O'Connell, 231 Fed. 1004 
 
 that conspiracy, in the sense of con- (D. C. Ala., 1916), in which there is a 
 
 carted action, would not be enough, on full discussion of the cases and an 
 
 the authority of Citizens' Light, etc., emphatic assertion of the general rule, 
 
 Co. V. Montgomery, etc., Co., supra. although the case lacked the elements 
 
 «' Wolf V. Harris, 184 S. W. 1139 of intimidation or coercion, and was 
 
 (1916) ; intimating that equity might not a case of trade competition. 
 
 restrain the continviance of what was The rule was also applied or stated 
 
486 Disparagement of Rivals and their Goods 
 
 § 263. Qualification of Rule. — If libel is only incidental, 
 however, to an attack upon another's business by unjustifiable 
 means, such as coercion or intimidation, it will not be immune 
 from equitable jurisdiction. A course of action may be stopped 
 by injunction, although it includes or involves libel. It is true 
 that where proper grounds exist for assuming jurisdiction, equity 
 does not refuse jurisdiction because there is incidentally involved 
 the restraining of a libel.™ Libel incidental to boycotting, for 
 example, may be enjoined.''^ 
 
 According to the United States Supreme Court, "the strong 
 current of authority is that the publication and use of letters, 
 circulars and printed matter may constitute a means whereby a 
 boycott is unlawfully continued. * * *"'* 
 
 The making of false statements about a competitor, and threat- 
 ening injury to a third person in order to damage a rival's business 
 is unfair competition, and may be restrained by injunction. 
 
 In the case of Davis v. New England Railway Pub. CoJ^ there 
 were several defendants. One of these defendants published a 
 full list of all express companies in Boston. The other defendants 
 were competitors of the plaintiff, and these persons threatened the 
 defendant Publishing Company, that unless they refused to print 
 the name of the plaintiff, they would refuse to co-operate with 
 the defendant Publishing Company in giving data for the direct- 
 ory; that they would cut down their advertising in such publica- 
 
 in Montgomery Ward Co. v. I^outh panied by threats, express or covert, 
 
 Dakota,etc.,Ass'n,150Fed.4:13;Vassar or intimidation or coercion, and the 
 
 CoUege v. Loose-Wiles Biscuit Co., 197 accomplishment of the purpose will 
 
 Fed. 982. result in irreparable injury to, and 
 
 '"'Americcm Malting Co. v. Keitel, the destruction of, property rights. 
 
 209 Fed. 351. If all there was to this transaction was 
 
 " Beck V. Railway Teamsters' Protec- the publication of a libellous article, 
 
 tive Union, 118 Mich. 497-1898, is a the position would be sound. It is only 
 
 prominent case in which libel was en- libellous in so far as it is false. Its 
 
 joined, together with other acts con- purpose was not alone to libel com- 
 
 stituting a boycott. Regarding the plainaiits' business, but to use it for 
 
 objection that boycotting circulars the purpose of intimidating and pre- 
 
 could not be suppressed by injunction, venting the public from trading with 
 
 because this would be to restrain the the complainants." 
 
 publication of a libel, it was said: ''' Gompers v. Buck's Stove & Range 
 
 "But the answer is, and always has Co., 221 U. S. 418, 437. 
 
 been, that parties cannot interpose "" 203 Mass. 470. 
 this defense when the acts are accom- 
 
Qualification of Rule 487 
 
 tion, and in other ways injure the Pubhshing Company's business. 
 As to the character of these acts, the court by Knowlton, C. J., 
 says: 
 
 "The injury is to property, and it is not technically a libel 
 upon the plaintiff. The rule that a court of equity will not 
 enjoin the naere commission of a crime does not apply. The 
 conduct complained of works a continuing and permanent in^ 
 jury to the plaintiff's property. Upon proof of the facts set 
 out in the biU, the plaintiff will be entitled to an injunction to 
 protect him from the wrongful publication. * * * Upon 
 proof of these facts and the other averments of the bill, the 
 plaintiff is entitled to an injunction against these defendants, 
 to prevent them from attempting to procure this wrongful kind 
 of publication in the future. He has a right to have the other 
 defendant reUeved from the temptation to continue the wrong- 
 ful publication, to which their misstatements and threats might 
 subject it. 
 
 "Their desire to advance their own interests, in competition, 
 is not a justification for attempting to interfere with tiie plain- 
 tiff's business by misstatements, and the making of a false and 
 misleading publication." ^^ 
 
 An almost identical state of facts is found in a French case 
 relating to the omission of plaintiff's name from a Steamboat 
 Directory .^^ The French courts declared such an act to be 
 unfair competition. 
 
 The same rule has been applied in France to a merchant who 
 distributed copies of an almanac published by the merchants of 
 the town to his customers, but pasted together the pages contain- 
 ing the advertisements of his rival.^^ 
 
 Again: it is held in France to be unfair for a telephone company 
 to print the advertisements of a competitor of the plaintiff 
 after the plaintiff's name and out of its regular order alpha- 
 betically."' 
 
 '2* Citing Carew v. Rutherford, 106 Pandectes Francaises, tome 20, p. .71. 
 
 Mass. 1; TFaZfcer V. Cronm, 107 Mass. "■* Tribunal Com. Seine, 9 juin, 
 
 555; Sherry v. Perkins, 147 Mass. 1876, Eame, Besland et al. Amieles 
 
 212; Vegehhn v. Guntner, 167 Mass. 1877, p. 47. , 
 
 92; Plant v. Woods, 176 Mass. 492; ""Paris, Nov. 20, 1912; Revue 
 
 Berry v. Donovan, 188 Mass. 353. Trunestrielle de Droit Civil 1913, 
 
 ""^ Rennes, 4 juin," 1883, cited in p. 184. 
 
488 
 
 DiSPAEAGEMENT OF RiVALS AND THEIR GoODS 
 
 But the typical class of cases in which incidental libel is en- 
 joined is that treated in the following section, in which charges of 
 infringement and threats of prosecution are made in bad faith 
 to intimidate a rival's customers and destroy his trade. Some 
 other cases in which injunctions have issued against acts including 
 the element of libel, and in which the limitations of the general 
 rule are discussed, are referred to in the note/' 
 
 § 264. Right to Restrain Issuing of Circulars to Customers — 
 Case of Emack v. Kane. — With the case of Kidd v. Horry 
 should be compared Emack v. Kane,''^ in which Blodgett, J., 
 granted an injunction against circulars threatening prosecution 
 for infringement, brought in bad faith to intimidate complainant's 
 customers and destroy his business. There was evidence that 
 there was no real intention to sue, and defendant had discontinued 
 suits formerly brought, after taking proof. 
 
 '' In National Life Ins. Co. v. truthful, this act would not have been 
 Myers, 140 111. App. 392-1908, a wrongful, but that the false announce- 
 
 violent blackmailing attack upon the 
 reputation and business of an in- 
 surance company, by the circulation 
 of a hbellous pamphlet, and by pub- 
 hshing other libellous matter, was met 
 by an injunction, the publications 
 complained of being characterized as 
 "more than mere libels." The con- 
 currence of the following conditions 
 was referred to as taking the case out 
 of the ordinary rule against restraining 
 libel: 1, the violation of a valid con- 
 tract; 2, insolvency of defendants and 
 lack of adequate remedy at law; 
 3, irreparable injury; 4, malicious 
 conspiracy by this and similar means 
 to lead poUcy holders to allow policies 
 to lapse, to destroy property rights and 
 to ruin business. In M. Steinert & 
 Sons Co. V. Tagen, 207 Fed. 394-1911, 
 an injunction was issued against the 
 driving around of a wagon with pla- 
 cards falsely announcing that "the 
 union teamsters" were on strike at 
 plaintiff's place, the strike being in 
 fact a matter of the past. It was con- 
 sidered that if the placards had been 
 
 ment not being adapted to benefit the 
 union, but only to injure plaintifi, 
 should be restrained. The Court said: 
 
 "The case does not come within the 
 doctrine that equity will not enjoin the 
 pubUcation of a Mbel. There is here a 
 wrongful act maliciously done, con- 
 tinuing and repeated day by day, 
 which, although it is not shown to have 
 caused as yet any damage to the plain- 
 tiff, is manifestly intended to produce 
 that result, is Uable at any time in the 
 future to do so, and may cause real 
 and substantial damage of which it 
 would be certainly difficult and might 
 be impossible to prove either the 
 existence or qiumtum of loss." 
 
 In Gilbert v. Midch, 4 Sandf. Ch. 
 (N. Y.) 357, defendant was enjoined 
 from posting in front of complainant's 
 place of business a placard "Strangers, 
 beware of mock auctions," since this, 
 although libelous, was also an obstruc- 
 tion of complainant's business, and a 
 private nuisance. See also GiUy v. 
 Hirsch, 122 La. 966. 
 
 " 34 Fed. 46-1888 (C. C. lU.). 
 
Right to Restrain Issuing of Circulars 489 
 
 Referring to Kidd v. Horry, the court says that the principle 
 of that case, "concisely stated, is that a court of equity has no 
 jurisdiction to restrain the pubUcation of a Ubel or slander. But 
 it seems to me the case now under consideration is fairly different 
 and distinguishable from the cases relied upon by the defendants, 
 in what seems to me a material and vital feature. In Kidd v. 
 Horry the owner of a patent sought the interference of a court of 
 equity to restrain the defendants from publishing and putting 
 in circulation statements challenging the validity of his patent 
 and of his title thereto, on the ground that such publications were 
 libelous attacks upon his property. Here the complainant seeks 
 to restrain the defendants from * * * making threats in- 
 tended to intimidate the complainant's customers under the pre- 
 text that the complainant's goods infringe a patent owned or 
 controlled by the defendants, and threats that if such customers 
 deal in complainant's goods, they will subject themselves to suit 
 for such infringement; the bill charging and the proof showing, 
 that these charges of infringement are not made in good faith, but 
 with a malicious intent to injure and destroy the complainant's 
 business. While it may be that the owner of a patent cannot 
 invoke the aid of a court of equity to prevent another person from 
 publishing statements denying the validity of such patent by 
 circulars to the trade, or otherwise, yet, if the owner of a patent, 
 instead of resorting to the courts to obtain redress for alleged 
 infringements of his patent, threatens all who deal in the goods 
 of a competitor with suits for infringement, thereby intimidating 
 such customers from deahng with such competitor, and destroying 
 his competitor's business, it would seem to make a widely different 
 case from Kidd v. Horry, and that such acts of intimidation should 
 fall within the preventive reach of a court of equity. It may not 
 be libelous for the owner of a patent to charge that an article 
 made by another manufacturer infringes his patent; and notice of 
 an alleged infringement may, if given in good faith, be a con- 
 siderate and kind act on the part of the owner of the patent; but 
 the gravamen of this case is the attempted intimidation by the 
 defendants of complainant's customers by threatening them with 
 suits defendant did not intend to prosecute; and this feature was 
 not involved in Kidd v. Horry. I cannot believe that a man is 
 remediless against persistent and continued attacks upon his 
 business, and property rights in his business, such as have been 
 
490 Disparagement of Rivals and their Goods 
 
 perpetrated in this case. It shocks my sense of justice to say 
 that a court of equity cannot restrain systematic and methodical 
 outrages like this, by one man upon another's property rights. 
 If a court of equity cannot restrain an attack like this upon a 
 man's business, then the party is cer^inly remediless, because an 
 action at law in most cases would do no good, and ruin would be 
 accomplished before an adjudication would be reached. True, it 
 may be said that the injured party has a remedy at law, but that 
 might imply a multiplicity of suits which equity often interposes 
 to relieve from; but the still more cogent reason seems to be that 
 a court of equity can, by its writ of injunction, restrain a wrong- 
 doer, and thus prevent injuries which could not be fully redressed 
 by a verdict and judgment for damages at law. Redress for a 
 mere personal slander or libel may perhaps properly be left to the 
 courts of law, because no falsehood, however gross and malicious, 
 can wholly destroy a man's reputation with those who know him; 
 but statements and charges intended to frighten away a man's 
 customers, and intimidate them from dealing with him, may 
 wholly break up and ruin him financially, with no adequate 
 remedy if a court of equity caimot afford protection by its re- 
 straining writ." 
 
 Here again may be seen acts which do not constitute charges 
 against the person of the plaintiff, but rather acts which injured 
 the plaintiff's business. It is hardly a hbel against a person's 
 character to charge that he has infringed a patent; yet making 
 such a charge may cause great damage to the one against whom 
 the charge is directed. 
 
 Ide V. Ball Engine CoJ^ is to the same effect as Emack v. 
 Kane, but in Marlin Fire Arms Co. v. Shields,''^ the court said of 
 the Ema6k case: "A very careful examination of it leads to the 
 conclusion that its attempt tu overthrow the reasoning of Mr. 
 Justice Bradley was not successful." In International Tooth 
 Crown Co. v. Carmichael " Jenkins, J., disapproves of Emack 
 V. Kane on the authority of Francis v. Flinn.''^ 
 
 Francis v. Flinn '* was a case in which the complainant, owner 
 of a pilot boat, alleged that the respondents confederated to 
 destroy his business by publications in a newspaper, by instituting 
 
 " 31 Fed. 901. " 44 Fed. 350. 
 
 ™ 171 N. Y. 384-95-1902; 64 N. E. " 118 U. S. 385. 
 163; 59 L. R. A. 310. '» 118 U. S. 385. 
 
Threats of Prosecution Must be Shown 491 
 
 suits, seeking injunctions, etc., and the court dismissed the bill 
 on demurrer for want of equity. 
 
 Shoemaker v. South Bend Spark Arrester Co.,^" follows Emack 
 V. Kane, and holds that the court has power to enjoin interference 
 with property rights in patents by false and maUcious claims of 
 title, threats to collect royalties from plaintiff's customers, etc. 
 This case is often cited in connection with Casey v. Cincinnaii 
 Typographical Union,^^ in which a newspaper was enjoined from 
 pubhshing boycott notices, and Warren Featherbone Co. v. Lan- 
 dauer,^^ and Commercial Acetylene Co. v. Avery Portable L. Co.^^ 
 On the other hand, in Marx & H. J. Clothing Co. v. Watson,^* 
 the court refused to restrain the publication of circulars issued 
 to boycott the business of individuals, no matter how unjustifiable 
 and injurious the publication may be. In Allegretti Chocolate 
 Cream Co. v. Rubel,^^ the court refuses to follow Emack v. Kane, 
 supra, because in that case intimidation by defendants of plain- 
 tiff's customers was by threats of suit, which defendants did not 
 intend to prosecute, and there was no such allegation in the 
 Allegretti case. This was on appeal from an order granting a 
 preliminary injunction against a circular. 
 
 § 265. Theory that Threats of Prosecution Must be Shown to 
 Warrant Issuance of Injunction. — In the cases in which the 
 doctrine of Emack v. Kane has been followed, threats have been 
 made and widely disseminated, to prosecute customers of the 
 plaintiff for infringement, it being shown that the threats were 
 made with fraudulent intent to break up plaintiff's business, and 
 it would seem that the court has regarded the proof of such threats 
 as necessary to the right to demand an injunction under this 
 doctrine. 
 
 The jurisdiction of equity in these cases is negatively de- 
 fined in Edison v. Thomas A. Edison, Jr., etc., Co.^^ thus: "The case 
 
 «> 135 Ind. 471-189S; 35 N. E. 280; The facts were these: Defendant 
 22 L. R. A. 332. made and sold "Wizard Ink Tab- 
 s' 45 Fed. 135-1891 (C. C. Ohio); lets" and a device called a "Magno- 
 12 L. R. A. 193, note. Electric Vitalizer," a:nd complainant 
 »2 151 Fed. 133-1903 (C. C. Wis.). alleged that through the name adopted 
 8' 152 Fed. 645-1906 (C. C. Wis.). by the defendant, the names given to 
 " 168 Mo. 133-1901; 67 S. W. 391; its goods, and the form of its advertise- 
 56 L. R. A. 951. ments, it was misleading the public 
 *' 83 111. App. 558-1898. into supposing that its worthless de- 
 ** 128 Fed. 957-1904 (C. C. Del.), vices were the invention of complain- 
 
492 . Disparagement of Rivals and their Goods 
 
 now in hand, being one merely of libel or defamation of business 
 reputation, unaccompanied by threats, intimidation or coercion, 
 or by any direct attack upon property or conduct of business, or 
 by any direct or indirect creation of liability on the part of the 
 complainant, is not within the equitable jurisdiction of this court." 
 Where circulars were distributed stating that the goods of the 
 plaintiff infringed a patent, and threatened all persons purchasing 
 complainant's goods with suit, and defendant instituted a collusive 
 and fraudulent suit and obtained in it a decree apparently sup- 
 porting his patent, the court enjoined the use of this decree to 
 injury of complainant. "Complainant has no adequate remedy 
 at law. * * * It cannot be said that it should lie by and wait 
 the slow and uncertain processes of a suit for damages for its 
 redress. * * * The complainant is rightfully operating under 
 such patent, and it has no remedy adequate for the fraud and 
 wrong perpetrated upon it, except as aided by a court of 
 equity." ^ 
 
 Flint owned patents for a smoke-preventing device. Plain- 
 tiffs alleged that they were trying to sell the device to the M 
 Company, and that defendant maliciously served notice on the 
 M Company that plaintiff's device infringed patents owned by 
 defendant, and that if the M Company used plaintiff's device, 
 it would be liable for costs and damages. Plaintiffs also averred 
 that defendant served a like notice on others; that plaintiffs were 
 financially responsible, and that they believed defendant did not 
 intend to sue them, or their customers, but intended to continue 
 the false notices. Injunction was refused, and Black, J., said 
 (p. 501): "We live under a written constitution which declares 
 that the right of trial by jury shall remain inviolate; and the ques- 
 tion of libel or no libel, slander or no slahder, is one for the jury 
 to determine. Such was certainly the settled law when the various 
 constitutions of this state were adopted, and- it is all-important 
 that the right thus guarded should not be disturbed. It goes hand 
 
 ant, and thus injuring his reputation D'Alene Mining Co. v. Miners Union, 
 
 and his business as an inventor. This 51 Fed. 260; New York Filter Co. v. 
 
 was treated as a species of trade libel Schwarzwalder, 58 Fed. 579. 
 that would not be restrained. See also ^'^ Grand Rapids School Furniture 
 
 these cases in which Emack v. Kane Co. v. Haney School Furniture Co., 
 
 has been cited: Kelley v. Ypsilanti 92 Mich. 558-64-1892; 52 N. W. 
 
 Dress Stay Co., 44 Fed. 23; Coeur 1009; 16 L. R. A. 721. 
 
Intent to Intimidate Customers 493 
 
 in hand with the Uberty of the press and free speech. For un- 
 bridled use of the tongue or pen the law furnishes a remedy. In 
 view of these considerations a court of equity has no power to 
 restrain a slander or hbel, and it can make no difference whether 
 the words are spoken of a person or his property." The court 
 then held that the element of "unfair competition which results 
 in the loss of business, owing to the dread men have of law suits," 
 will not give equity jurisdiction, because libel and slander are 
 generally accompanied with loss of business. No mention is made 
 of Emack v. Kane, although it would seem in point and was cited 
 in appellant's brief.^* 
 
 This case may be distinguished from those holding that an 
 injimction is warranted against libel and slander, in that there 
 is no continuing wrong here, no irreparable injury the damage 
 from which it is impossible to assess. An action at law might give 
 damages that would compensate the loss of the plaintiff, but there 
 are many cases where the loss cannot be estimated. 
 
 § 266. Intent to Intimidate Customers, Not to Fairly Warn 
 Them, is a Necessary Element of this Kind of Proceeding to 
 Enjoin. — The circumstances attending an issue of circulars 
 threatening litigation should, to warrant interference, indicate 
 bad faith. "The question whether the patent owner is acting in 
 good faith in advertising his claims to the manufacturer's cus- 
 tomers by circulars or letters, can seldom be determined from the 
 contents of the communication alone, and, like all questions of 
 intent, must generally be determined by the extrinsic facts." *^ 
 For instance, the National Harrow Company sent out numerous 
 circulars and letters claiming the Adriance Company were in- 
 fringing their patents, and threatening with suit all dealers selling 
 the Adriance harrow. The lower court held that all statements 
 in said circulars and letters were true, and declined to enjoin them. 
 The court said: '/When the manufacturer is financially respon- 
 sible, is accessible, and his infringements readily provable, and 
 when the patent owner is financially able, and is one who makes 
 it his sole business to grant Ucenses, and is under a duty to his 
 licensees to prosecute extensive infringers, the sending of such 
 
 88 Flint V. Hvichimon Smoke Burner Harrow Co., 121 Fed. 827-30-1903 
 
 Co., 110 Mo. 492-1892; 19 S. W. 804; (C. C. A. 2d Cir.); 58 C. C. A. 163; 
 
 16 L. R. A. 243. 49 L. R. A. 755. 
 
 8» Adriance, Piatt & Co. v. National 
 
494 Disparagement of Rivals and their Goods 
 
 circulars to customers would seem to be merely a preliminary or 
 cumulative measure, and the bringing of an infringement action 
 the paramount and imperative proceeding. As, ordinarily, the 
 patent owner would be prompt and zealous to assert his claims, if 
 he halts and purposely procrastinates and attempts to effect by 
 threats and manifestoes, that which he can compel by the strong 
 hand of the law, a strong inference arises that he has not any real 
 confidence in his pretensions. This inference becomes irresistible 
 if he refuses to bring suit during a considerable period of time 
 \when the alleged infringement is open, notorious and defiant, 
 and so extensive as to threaten destruction to his alleged exclusive 
 rights. The indicia of bad faith are persuasive in the present 
 case. It is impossible to read the communications warning com- 
 plainant's customers against selling its harrows, with which the 
 defendant seems to have flooded the country, without being led 
 to believe that they were inspired by a purpose to intimidate the 
 complainant's customers, and coerce the complainant, by injuring 
 its business, into becoming a Hcensee of the defendant. In view • 
 of its failure to bring an infringement action, under circumstances 
 which made an action practically compulsory, the defendant 
 cannot shelter itself behind the theory that the circulars were 
 merely legitimate notices of its rights. We are satisfied that they 
 were sent, not for the purpose of self-protection, but in execution 
 of the defendant's threat to stop the complainant from building 
 harrows by other means than legal remedies." 
 
 Hovey v. Rubber Tip Pencil Co.^° points out the same distinction, 
 and holds that circulars threatening Utigation cannot be interfered 
 with, unless bad faith be shown. 
 
 It is, of course, possible that such circulars may be distributed 
 in good faith to warn against infringement, and in doing so com- 
 ^mit no wrong. It is the fraud that gives the right to an injunction. 
 Bad faith, the intent to destroy the business of another, and hence 
 danger to property rights, are the grounds given by the Circuit 
 Court of Appeals on which equity may interfere. An equity 
 court will not enjoin a person from asserting his belief that he 
 owns title to property. Where the record does not make it clear 
 that statements made by defendant are either maUcious or false, 
 equity will not act." A circular of warning and stating that suit 
 
 '■' 57 N. Y. 110-1874. »i Everett Piano Co. et al. v. George 
 
 P. Bent, 60 111. App. 372-1895. 
 
Intent to Intimidate Customers 495 
 
 had been started, which has been adjudged to be proper, is found 
 at 151 Fed. 134. 
 
 If the circular is issued in bad faith, which fact is shown by 
 neglect to bring suit, it may be enjoined."^ If the complainant's 
 bill be true, it has an undoubted right to warn the public 
 against the infringement of its trade-mark; that question should 
 not be determined on the mere allegations of the parties ®' (id. p. 
 135). 
 
 "Where notices are given or circulars distributed in good faith 
 to warn against infringement, no wrong whatever is committed; 
 but where, as is here averred, they are not made or issued with 
 such intent, but in bad faith, and solely for the purpose of destroy- 
 ing the business of another, a very different case is presented. 
 In such a case property rights are fraudulently assailed, and a 
 court of chancery, whose interposition is invoked for their pro- 
 tection, should not refuse to accord it." ^^ 
 
 It is interesting to note that the position taken by the Circuit 
 Court of Appeals in this Farquhar case is the same position taken 
 by the English courts in cases which were not considered authority 
 in Kidd v. Horry, supra, viz., that a man's trade reputation 
 and the reputation of his goods is property which equity must 
 protect. 
 
 " Warren Featherstone Co. v. Lan- year; misleading statements and 
 
 dauer, 151 Fed. 130-1903 (C. C. threats). In the first of these cases 
 
 Wis.). (171 Fed. 633) it was said: "Un- 
 
 " Adriance, Piatt & Co. v. National doubtedly, one claiming that his 
 Harrow Co., 121 Fed. 827-1903 (C. patent is being infringed should take 
 C. A. 2d Cir.); 58 C. C. A. 163; and steps to advise the public of his rights 
 A. B. Farquhar Co. v. Same, 102 Fed. as provided by statute; provided, how- 
 714-1900 (C. C. A. 3d Cir.); 42 C. ever, that if it is made to appear that 
 C. A. 600; 49 L. R. A. 755. The fol- under pretense of so doing he is pur- 
 lowing are more recent cases in which suing a course which is calculated to 
 threats of prosecution have been held unnecessarily injure another's busi- 
 not to be justified by good faith, and ness, and with the plain intention of 
 have therefore been stopped by injunc- so doing, his conduct will be deemed 
 tion: PaTper Goods Co. v. Dittgen, 171 malicious, and he brings himself within 
 Fed. 631 (C. C. A. 7th Cir.); Electric the rule of law obtaining in cases of 
 Renovator Mfg. Co. v. Vacuum Cleaner unfair competition in trade, and sub- 
 Co., 189 Fed. 754 (two years' delay in ject to injunction." 
 prosecuting suit evidence of bad faith) ; '*A B. Farquhar Co. v. National 
 Atlas Underwear Co. v. Cooper Under- Harrow Co., 102 Fed. 714^15-1900 
 wear Co., 210 Fed. 347 (no suit for a (C. C. A. 3d Cir.); 42 C. C. A. 600. 
 
496 
 
 Disparagement of Rivals and their Goods 
 
 § 267. Circulars Giving Notice of Pendency of Suit for Un- 
 fair Competition Are Legal. — A complainant, in a suit for un- 
 fair competition, may issue circulars to the trade to give notice 
 of the pendency of the suit and of the claims made by him where 
 he acts in good faith and limits the claims to the allegations of the 
 bill. The issuance of such circulars will not be enjoined in advance 
 of hearing, upon a mere denial of the allegations of the bill.'' 
 
 § 268. Trade Libels Not Libelous Per Se. — Trade libels are 
 not Ubelous per se. The damage must be alleged and proved in 
 these cases.'^ Special damage not being alleged, it is not action- 
 able to say that goods manufactured by a rival dealer are "bad" 
 or "inferior." To be actionable per se, the words used in such a 
 case should import that the dealer in question is guilty of deceit 
 or fraud in manufacturing or vending the goods." "Words re- 
 lating to quality of articles made, produced, furnished or sold — 
 though false and malicious — are not actionable without special 
 damage." '^ An action based on a statement that the "Wall 
 
 s6 Warren Featherbone Co. v. Lan- 
 dauer, 151 Fed. 130-1903 (€. C. Wis.). 
 To same general effect, see United 
 Electric Co. v. Creamery P- M. Co., 
 203 Fed. 53; Clip Bar Mfg. Co. v. 
 Steel P. P. Co., 209 Fed. 874 (aff'd 
 213 Fed. 233 (C. C. A. 3d Cir.); suit 
 to determine right had in this case 
 actually been brought). See also 
 cases under § 261, supra. 
 
 ^« For a case in which damages were 
 sought and recovered, for misrep- 
 resentations (as well as for threats and 
 for the maUcious prosecution of a 
 civil suit) see Virtue v. Creamery 
 P. M. Co., 123 Minn. 17 (verdict, 
 however, set aside as awarding 
 excessive damages on insufiBcient ev- 
 idence) . 
 
 " Tobias v. Harland, 4 Wend. (N. 
 Y.) 537-1830. 
 
 ^'Dooling v. Budget Pub. Co., 144 
 Mass. 258-1887; 10 N. E. 809. See 
 also Marlin Fire Arms Co. v. Shields, 
 171 N.Y. 384-1902;64 N. E. 163;59 L. 
 R. A. 310. White v. Mellin, L. R. 1895, 
 
 A. C. 154. Defendant (White) sold 
 plaintiff's "MelUn's Infants' Food" 
 affixing to the wrapper a label stating 
 that defendant's "food for infants and 
 invaUds" was "far more nutritious and 
 healthful than any other preparation." 
 The House of Lords held that an ac- 
 tion would not he for a false statement 
 disparaging a trader's goods where no 
 special damage was proved. 
 
 Lord Watson said: 
 
 "The wrong complained of being the 
 slander of goods, the fact that the 
 representations made by the defend- 
 ant in the label already referred to 
 might be calculated to disparage the 
 food manufactured by the plaintiff and 
 to interfere with its sale can afford no 
 cause of action. Every extravagant 
 phrase used by a tradesman in com- 
 mendation of his own goods may be 
 an imphed disparagement of the goods 
 of all others in the same trade; it may 
 attract customers to him and diminish 
 the business of others who sell as good 
 and even better articles at the same 
 
Trade Libels Not Libelous Per Se 
 
 497 
 
 Street Journal" was not a newspaper, within the meaning of a 
 certain statute; '^ that A had not sold B any first-class goods, hence 
 customers could not get that quahty from B; ^ that plaintiff's 
 safe could be easily opened,^ are cases in which damages must be 
 alleged and proved. 
 
 But for the defendant to say of the plaintiff, an ice machine 
 maker, to a customer from whom both were seeking an order, 
 that the plaintiff would be unable to fulfill the contract, was a 
 second-hand dealer, and did inferior labor, was a "scab" estab- 
 lishment, and had no mechanic in its employ, is libelous per se; * 
 
 price; but that is a disparagement of 
 which the law takes no cognizance. In 
 order to constitute disparagement 
 which is, in the sense of law, injurious, 
 it must be shown that the defendant's 
 representations were made of and 
 concerning the plaintiff's goods; that 
 they were in disparagement of his 
 goods and untrue; and that they have 
 occasioned special damage to the 
 plaintiff. Unless each and all of these 
 three things be established, it must be 
 held that the defendant has acted 
 within his rights and that the plaintiff 
 has not suffered any legal injuria." 
 
 ''Le Massena v. Storm, 62 App. 
 Div. (N. Y.) 150-1901; 70 N. Y. 
 Supp. 882. Plaintiff was the adver- 
 tising agent of the "Wall Street 
 Journal," for which he soUcited the 
 pubhcation of legal notices, under a 
 contract by which he shared in the 
 profits of the business. Defendant 
 represented to persons from whom 
 plaintiff solicited advertisements that 
 the "Wall Street Journal" was not 
 such a newspaper as the statute con- 
 templated for the insertion of legal 
 notices. Held, that as to plaintiff 
 such a statement was not actionable 
 per se, and that plaintiff could re- 
 cover for loss of business only by 
 pleading and proving special damage. 
 
 ' Boynton v. Shaw Stocking Co., 
 146 Mass, 219-1888; 15 N. E. 507. 
 
 Defendant, a manufacturer of hosiery, 
 pubHshed in the papers a caution to 
 the public not to form an opinion of 
 its hosiery from goods advertised by 
 plaintiff as of "first quahty," since 
 they had been sold to him as "dam- 
 aged." Held, that the words were not 
 fairly to be construed as imputing 
 fraud to plaintiff, and were not libelous 
 per se. 
 
 ^ Victor Safe & Lock Co. v. Deright, 
 147 Fed. 211-1906 (C. C. A. 8th Cir.). 
 Defendant, a dealer in safes, wrote to 
 a person doing business with plaintiff, 
 a manufacturer of safes, charging that 
 plaintiff's safes were strongly con- 
 structed but could easily be opened. 
 Held, on demurrer, that as no special 
 damage was alleged, no action for 
 Ubel lay. The language used was con- 
 strued as merely in disparagement of 
 the quality of plaintiff's goods, and not 
 as necessarily casting a damaging 
 imputation upon the plaintiff in re- 
 spect of its trade (in which case no 
 special damage need have been al- 
 leged). 
 
 ' Pennsylvania Iron Works Co. v. 
 Henry Voght Machine Co., 29 Ky. 
 L. Rep. 861-1906; 96 S. W. 551; 8 
 L. R. A. N. S. 1023; Hughes v. Samuels 
 Bros., 159 N. W. 589 (Iowa Supreme 
 Court, Oct. 17, 1916). The plaintiff' 
 and defendant were engaged in the 
 undertaking business in Storm Lake, 
 
498 
 
 DiSPAKAGEMENT OF RiVALS AND THEIR GoODS 
 
 and where words used are libelous per se no injunction ought to 
 issue. There is no continuing danoiage. For each statement of 
 that sOTt made by the defendant a substantial amount of dam- 
 ages ©aight fee ooillected. Such a case differs materially from the 
 cases where continued publication of statements, none of which 
 alone «ou!ld be shown to have caused serious damage, was, never- 
 theless, <wrecy!ng the plaintiff's business. Such a case was Marlin 
 V. Shields^ The Marlin Company manufactured rifles. Shields 
 conducted "Recreation," a magazine. The Marlin Company 
 withdrew its advertising from said magazine, after defendant 
 advanced his rates. Defendant then pubUshed letters, purporting 
 to be from correspondents, reflecting on the Marlin rifle. These 
 letters were shams, written by the defendant himself, to force the 
 plaintiff to advertise with him, or failing in that "to gratify his 
 malice-" In defense, it was said that the "complaint contains 
 
 Iowa. The comjilamt stated that de- 
 fendants falsely and maliciously pub- 
 lished concerning the plaintiff a card 
 as follows, "Bear in mind our Under- 
 taking Department, satisfaction guar- 
 anteed. [Signed,] H. L. Hughes" 
 and caused iihe same to be eertt to a 
 citizen of Storm Lake by mail at a 
 time when his wife was critically ill in 
 an iiospital, for the purpose of injuring 
 •the jllaintiff business. The plaintiff 
 sought to recover damages on the 
 ground that such adiiQn was libelous. 
 The defendant demurred. On appeail 
 the court reversed the court below 
 which had sustained the demurrer. 
 -Gaynor, J., said: 
 
 "It appears that Cattermole's wife 
 was sick unto death at the time this 
 card was composed by defendants and 
 sent to him. The defendants knew 
 this fact at the time they composed 
 and mailed the card. We take judicial 
 notice of the fact that the city in which 
 the parties resided was not so populous 
 "that the active business men of the 
 city were not known to each other and 
 to the general public. The card was 
 BO framed and mailed by the defend- 
 
 ants as to lead the receiver to believe 
 that the plaintiff had composed and 
 mailed it, and this was their purpose 
 in mailing it. What possible reason 
 could they have in preparing and pub- 
 lishing this card? Was it to help a 
 rival? Was it to exploit the business 
 of a rival? Was it intended as a letter 
 of credit, to the pubhc, by and through 
 which he would be better installed in 
 ■its confidence and esteem? Is this the 
 usua:l and ordinary course of procedure 
 on the part of rival business firms? 
 With the largest charity, we cannot 
 think this was the purpose of the pub- 
 Ucation. What, then, was the purpose 
 in the minds of these defendants when 
 they composed and sent these cards 
 to the sick and dying in that com- 
 munity? Was it not rather, as the 
 petition says, to deprive him of public 
 confidence and esteem? Was it not 
 rather to expose him to pubUc con- 
 tempt and ridicule? Was it not rather 
 to divert business through this means, 
 from the plaintiff, and to injure him 
 by such diversion?" 
 
 « 171 N. Y. 304r-1902; 64 N. E. 
 163. 
 
. Trade Libels Not Libelous Per Se 499 
 
 no allegation of any statement made against the character or 
 conduct of the plaintiff." The defendant criticised not the plain- 
 tiff, but its gun. In Tobias v. Heiirland,^ the court (p. 309), "holds 
 that when words are spoken not of the trade, or manufacturer, 
 but of the quality of the article he malkes or deals in, to render 
 them actionable per se, they must import that the plaintiff is 
 guilty of deceit or malpractice in making or vending them." The 
 plaintiff was unable to say to what extent it was damaged by said 
 pubUcations and there was no allegation of special damage. The 
 court then cites Le Massena v. Storm,^ Kennedy v. Press Pub. Co.,'' 
 and Dooling v. Budget Publishing Co.,^ to show, in the words of 
 the Dooling case, that "words relating merely to the quahty of 
 the articles made, produced, furnished, or sold by a person, though 
 false and malicious, are not actionable without special damage." 
 The Marhn Company asked the injunction (1) "to avoid multi- 
 plicity of actions, (2) because of the impossibility of ascertaining, 
 identifying or establishing according to legal principles, any 
 measure of damage." The court in addressing itself to the ques- 
 tion "whether equity, which creates neither rights nor liabilities, 
 has heretofore assumed jurisdiction to restrain the publication of 
 criticisms unjustly affecting the merits of articles of property 
 belonging to a plaintiff when such publication will not support an 
 action at law," ^ refused to grant an injunction and left the plain- 
 tiff to his action for damages. 
 
 This decision then meant that equity could not eajoin a news- 
 paper that published false and sham letters describing alleged de- 
 fects the writer knew did not exist in goods, on the ground that 
 eqmty cannot try a libel. It is difficult to agree with the reasoning 
 of this decision. Just how the freedom of the press is seriously 
 endangered by restraining a malicious person from publishing 
 untrue statements as coming from p^sons who as a matter of fact 
 never existed, to the effect that an ejector is faulty, is difficult to 
 
 ' 4 Wend. (N. Y.) 537-1830. 1873; Mauger v. Dick, 55 How. Pr. 
 
 «62 App. Div. (N. Y.) 150-1901; 132-1878; Kidd-v. Horry, 28 Fed. 773- 
 
 70 N. Y. Supp. 882. 1886 (C. C. Pa.) ; Baltimore Car Wheel 
 
 ' 41 Hun (N. Y.), 422-1886. Cx). v. Bends, 29 Fed. 95-1886 (C. C. 
 
 « 144 Mass. 258-1887; 10 N. E. 809. Mass.); Ma,yer v. Journeymen Stone- 
 
 ' Brandreth v. Lance, 8 Paige (N. cutters' Asm., 47 N. J. Bq. 519-1890; 
 
 Y.), 24^1839; Eden Injunction (3d 20 Atl. 492; Fmnras v. fimn, 118 U. S. 
 
 ed.), p. 372; Singer Mfg. Co. v. Do- 385-1886; 30 L. ed. 165; 6 Sup. Ct. 
 
 mestic Sewing Machine Co., 49 Ga. 70- 1172. 
 
500 Disparagement of Rivals and their Goods 
 
 see. This case was admittedly a libel of goods. Furthermore, 
 the fundamental reason for the trial by jury was waived by the 
 defendant himself, for by his demurrer he admitted that his 
 statements were false and untrue. The court ignored what, it is 
 believed, will eventually be the basis on which equity will give 
 rehef in similar cases in the future, viz., the fact that the good 
 repute of merchandise is property and that there is a difference 
 between Ubeling a person and telhng falsehoods about his goods. 
 The reputation of the Marhn rifle for having an effective ejector 
 is property, is valuable; and, for an equity court to sit by and see 
 the reputation of that article injured by statements of the char- 
 acter of those disclosed here and which the defendant himself 
 admitted to be untrue, is to take a narrow view of the powers of 
 equity which its history and functions do not warrant. In consid- 
 ering the value of this decision it is significant that in 1904, two 
 years later, subsection 8 of section 364 of the Penal Code of 
 New York was enacted, which is aimed to reUeve against all 
 sorts of hbels of the character of that uttered by Shields, by 
 making them misdemeanors. A digest of the law is given in the 
 note.i" 
 
 § 269. Preliminary Injtmction Should Issue, When the Plain- 
 tiff's Right is so Clear as to be Practically, or is Actually (as by 
 Demurrer) Conceded. — On the question of the right of the 
 EngUsh court to grant an injunction, on an interim or interloc- 
 utory appUcation, presumably imder the Judiciary Acts, it was 
 said in Coulson & Sons v. Coulson & Co.: " "To justify the court 
 in granting an interim injtmction, it must come to a decision upon 
 the question of Ubel or no Ubel, before the jury have decided 
 whether it is a hbel or not. Therefore the jurisdiction is of a 
 dehcate nature. It ought only to be exercised in the clearest 
 cases, where any jury would say that the matter complained of was 
 
 "> Section 421 of the Penal Code, or other publication, an advertisement 
 
 Chap. 569, Laws of New York, 1915. regarding merchandise which contains 
 
 As this section now exists it provides, any assertion that it is imtrue, de- 
 
 in substance, that if any person, with ceptive, or misleading, shall be guilty 
 
 intent to sell or dispose of merchan- of a misdemeanor, punishable by a 
 
 dise, directly or indirectly, to the pub- fine of not less than $25 nor more 
 
 he, or with intent to increase the con- than $100, or by imprisonment for 
 
 sumption thereof, knowingly causes, not more than one year, or by both 
 
 directly or indirectly, to be made or such fine and imprisonment. 
 
 pubUshed in a newspaper, magazine, " 3 Times L. R. 84&-1887. 
 
Representations False but Not Libelous 501 
 
 libelous, and where, if the jury did not so find, the court would set 
 aside the verdict as unreasonable." Such cases are rare, of course 
 but they occur. Again in Warren Featherbone Co. v. Landauer,^^ it 
 was said that "if the defendant, who applied for an injunction to 
 restrain plaintiff from issuing circulars stating this action had 
 been begun, came with an adjudication in another court upon the 
 validity of the complainant's trade-mark, we might follow that 
 without proof and grant an injunction; but * * * there has 
 never been an adjudication of the question. Such relief has been 
 granted in several cases, sometimes on the application of the de- 
 fendant, though more generally upon the appUcation of the com- 
 plainant, and upon final hearing" '^ (p. 133). 
 
 Where an insurance agent who left plaintiff's employ uttered 
 untrue and damaging statements to the effect that plaintiff was 
 about to abandon a part of its business, the court said: "It is 
 urged that the injury is a continuing one, for which there is no 
 accurate measure of damages, and, therefore, is within the prov- 
 ince of equity. But even in that class of cases the complainant's 
 right must be so clear as to be practically conceded, or it must 
 first be established by the verdict of a jury." " Publication of a 
 newspaper article to the effect that a hotel is about to be sold for 
 use as a club, when that is not the fact, is a good cause of action 
 at law as a Hbel." 
 
 § 270. False Representations Regarding a Competitor which 
 are not Libelous. — ■ There are many statements which it is possible 
 for a trader to make up regarding his rival or his rival's product 
 or business which are not hbelous, and yet the uttering or publish- 
 ing of which will have the effect of interfering unfairly with his 
 rival's business. There are also statements which may be made 
 regarding one's own goods in the nature of "puffs" which in- 
 cidentally bring the goods of a competitor into disrepute. State- 
 ments of the first sort are actionable: Those of the second are not 
 actionable. To cause it to become known, that a competitor is 
 
 "151 Fed. 131-1903 (C. C. 3d Cir.); 42 C. C. A. 600; 49 L. R. A. 
 
 Wis.). 755. 
 
 " Citing Emack v. Kane, 34 Fed. ^^ Baltimore Life Insurance Co. v. 
 
 46-1888 (C. C. m.); Adnance, Piatt Gleisner, 202 Pa. St. 386-88-1902; 
 
 & Co. V. National Harrow Co., 121 51 Atl. 1024. 
 
 Fed. 827-1903 (C. C. A. 2d Cir.); "A. D. Wright v. J. C. Coules, 4 
 
 58 C. C. A. 163; A. B. Farquhar Co. Cal. App. 343-1906. 
 V. Same, 102 Fed. 714^1906 (C. C. A. 
 
502 Disparagement of Rivals and their Goods 
 
 about to retire from business, or is about to change the location 
 of his store, or that some ofl&cial connected with his business is to 
 retire, or to make statements of a similar character, may seriously 
 injure a rival business. Such statements may be made honestly 
 or dishonestly. If made honestly they are mere gossip, if dis- 
 honestly, they are actionable as unfair competition. 
 
 A case of this character arose in England by reason of a county 
 paper pubUshing the fact that a certain boiler making concern 
 which had done business for a long time in the neighborhood had 
 ceased to exist. The action was treated in the pleadings as a 
 Hbel. The case was tried on the theory that it was not a libel but 
 was a false statement purposely made, which was intended to and 
 did injure the plaintiff. At the trial there was no proof of special 
 damages, but of general loss of business. No proof of any particu- 
 lar customer lost to the plaintiff by reason of the defendant's 
 acts was produced. The court held that proof of general damages 
 was sufficient. Bowen, L. J., saying: 
 
 "To refuse with reference to such a subjectr-matter to 
 admit such general evidence would be to misunderstand and 
 warp the meaning of old expressions; to depart from,, and not 
 to follow, old rules; and, in addition to all this, would involve 
 an absolute denial of justice and of redress for the very mis- 
 chief which was intended to be committed. It may be added 
 that, so far as the decision in. Riding v. Smith (1 Ex. D. 91) 
 can be justified, it must be justified on the ground that the 
 court (rightly or wrongly) believed the circumstances under 
 which the falsehood was uttered to have brought it within 
 the scope of a similar principle."^*" 
 
 In a Cahfomia case the defendant caused to be published of a 
 hotel owned by the defendants the following statement: 
 
 "The famous Hotel Arcadia at Santa Monica has been 
 purchased by the Occidental Club and will be remodeled into 
 a colossal country club house, the largest in the world, for the 
 use of the members and their families. 
 
 "The new owners will proceed at once to enter upon the 
 privileges of the spadous' quarters they have acquired by 
 the sea. 
 
 " They do not take possession until the close of the present 
 season, but a series of balls, planned to occur twice a week, 
 "" RaJldiffe v. Evans, C. A. 1892, 2 Q. B. 525-533. 
 
Representations False- btjt Not Libelous 603' 
 
 will soon commencei Im the meantiiiixe, extensive alteraitioBs 
 and repairs will go on witkoufe mterruipiaion'." 
 
 The court held, on demmwer, that by reasoa of this statemen* 
 certain persons who were about to' comae to plaintiff's: hotel to 
 stay, were dissuaded from, patroniziai^ the hotels and that the 
 cause of aiction was statedl'^^ 
 
 In a Massachusetts case, it was shown that one of the defend- 
 ants published a directory which purported to give' a full list of all* 
 reputable concerns in Boston doing an express business, failed to 
 publish the plaintiff's name and that it had omitted this- name as 
 a direct result of the efforts of other defendants who were com- 
 petitors of plaintiff. The Court held that 
 
 "An intentional act of this kind, without excuse; is a 
 violation of his (plaintiiif's) legal rights. * * * 
 
 "The injury is to property, and it ie not technically a 
 Ubel upon the plaintiff.""" 
 
 In Helmore v. Smith ^^^ the father of the plaintiff, and one 
 Smith; had been engaged in the coal business in London, prior to 
 1886. Ai partnership accounting action was aftarwauds brought, 
 and a reference was ordered. The court having ordered that the 
 business be continued until an appeal could be heard,, ap- 
 pointed- the defendant a receiver. The plaintiff was a clerk in> 
 the employ of the firm, who had been dismissed by the receiver. 
 He then set up in business as a coal merchant on his own account, 
 and at once sent out circulars to the customers of the firm, stating 
 that in consequence of his dismissal' he had started business on his 
 own account and was soliciting^ their trade. Later he sent out 
 another circular, which rea4 as follows: 
 
 "Sir, — I beg to enclose you report of the above case from 
 the Times of Nov. &, 1886. The Defendant, Charles Smith, 
 is appealing from such judgment, and pending the hearing 
 of such appeal- has been appointed receiver on giving ade- 
 quate security. 
 
 "As your esteemed' orders have for the most part come 
 under my persona;l supervision, while manager to the firms of 
 
 ^^'' Wright V. Coules, 4 Cal. App. vMy Pub. Co., 203 Mass. 470-479- 
 343-345-1906. 1909. 
 
 '^'■'Dams V. New England Rail- ^^"^ Helmore v. Smith, C. A. 1886, 
 
 35 Ch. Div. 449. 
 
604 Disparagement of Rivals AisfD their Goods 
 
 Helmore & Smith and Charles Smith & Co., I beg to submit 
 to your notice my present prices, and to inform you that 
 should you favour me with any orders they will receive the 
 same attention and care as formerly. 
 "Thanking you in anticipation, I am yours obediently, 
 
 "Henry W. Helmore." 
 
 The report to which he refers was a report of a hearing of a case 
 before the Vice-Chancellor in Chancery. He was asked by the 
 Justice in Chancery hearing the case, to give an imdertaking to 
 desist from issuing further circulars calculating to draw the trade 
 of the firm. He refused. The court then ordered him "to be 
 committed to prison, but give him three days before the order is 
 enforced, to see whether he will give an undertaking in the terms 
 of the notice of motion." An appeal was taken to the Court of 
 Appeals, where this order was sustained. Lord Cotton. L. J., 
 saying: 
 
 "My decision does not turn on this fact, but it must not 
 be supposed that I do not strongly disapprove of such con- 
 duct. It was said that there was a general custom among 
 persons engaged in the coal trade to act in this manner. If 
 that be so, all I can say is that the sooner they act as honour- 
 able men the better. * * * 
 
 "No fair competition would justify the act of the appellant 
 in sending round a copy of the report in the Times, which, 
 4f taken alone, would lead the customers to think that the 
 business was in a faiUng state or would shortly fail." 
 
 The above cited cases indicate clearly that there are many 
 injurious statements continually circulated in trade not consti- 
 tuting Ubel or slander which under our present rules may be 
 the basis of actions brought in equity for injunction as well as at 
 law for damages, and, as pointed out by Judge Cotton in the 
 passage above referred to, constitute unfair competition. 
 
 § 271. Statutes as to Libels Do Not Oust Equity of Jurisdic- 
 tion.. — The fact that there exists, as in New York, a penal stat- 
 ute forbidding acts which constitute trade hbel, is not an excuse 
 for the failure of a coiu't of equity to enjoin such acts. If a tres- 
 passer begins to tear down a building, the fact that a. statute 
 exists forbidding malicious mischief, or that the owner has an 
 action for trespass, is no reason for an equity court refusing to 
 
Libel Statuses Do Not Oust Equity of Jurisdiction 505 
 
 enjoin such an act. When an irreparable and continuing unlawful 
 injury is threatened to private property and business rights, 
 equity will generally enjoin on behalf of the person whose rights 
 are to be invaded, even though an indictment on behalf of the 
 public will also he." 
 
 Mr. Robert P. Clapp, in a valuable note on this subject in 
 23 Am. Law Reg. N. S. 707-14-1884, says: "The greater protec- 
 tion afforded by the English courts is demanded by a just regard 
 for the vastness and variety of our commercial interests. Our 
 jurisprudence must in some way meet this demand." If that 
 statement was true in 1884, it is many times more so now." 
 
 To summarize. English courts are now granting injunctions 
 against many forms of trade hbel under the powers granted by 
 the act of 1873. The act does not give a complainant such relief as 
 a matter of right; for granting the writ is always in the discretion 
 of the court. It has generally been considered and stated by 
 courts here and, it must be said, in most instances without fully 
 understanding the authority of the English cases, so far as can 
 be judged from the.opinions rendered, that equity cannot enjoin 
 or try a hbel of goods or business, a trade libel. Because of this 
 apparent obstacle, the American courts admit they are powerless 
 to give reUef in many cases where they themselves consider relief 
 ought to be granted. As a commentary on this condition, it is 
 interesting to note some of the pubhcations and utterances which 
 have recently been enjoined in England: — trade letters imputing 
 that plaintiff's goods were spurious, it being held unnecessary 
 to show special damage; ^^ stating in a paper called "Money 
 Maker" that plaintiff's bank was in litigation; " unauthorized 
 use of man's name where such use injured his property and busi- 
 ness.^" In Punch v. Boyd ^^ an action was brought for £10,000 
 damage for Ubel. The plaintiff had built an expensive plant to 
 make butter firkins by machinery instead of by hand. The butter 
 merchants of Limerick posted placards reading: "Notice to 
 
 « Toledo, etc., By. Co. v. Pennsyh " London & Northern Bank v. 
 
 vania Co., 54 Fed. 730-1893 (C. C. Nevmes, 16 Times L. R. 76-1899. 
 
 Ohio);19L. R. A. 387. ^<> Dochrell v. Dougall, 80 L. T. 
 
 " See also note in 4 Cent. L. Jour. N. S. 556-1899; Hawker v. Stourfield 
 
 171, which is a plea for interference Park Hotel Co., Wkly. Notes, 51- 
 
 by injunction in cases of trade libel. 1900. 
 
 '8 Thomas v. Williams, L. R. 14 Ch. " L. R. Ir. 16 Q. B. Div. 476- 
 
 Div. 864-1880. 1885. 
 
506 Disparagement of Rivals and their Goods 
 
 Farmers" and stating that they would refuse to purchase butter 
 packed in machine-made firkins "as we find them to be more 
 injurious to keeping the quality of the butter," etc., and an inter- 
 locutory injunction was granted because a verdict of a jury would 
 not afford adequate compensation. The court interfered "to 
 prevent injury to the plaintiffs by the publications complained 
 of until the defendants shall have established their defense." 
 The injunction was granted on aflfidavits. Coimnenting on the 
 position taken by the American courts in cases of trade libel 
 Professor Roscoe Pound said: 
 
 "In substance, the traditional doctrine puts anyone's busi- 
 ness at the mercy of any insolvent malicious defamer who has 
 sufficient imagination to lay out a skilful campaign of extortion. 
 So long as denial of reUef in such cases rests on no stronger 
 basis than authority, our courts are sure to find a way out." ^^ 
 
 ""Equitable Relief Against Def- amation and Injuries to Personality," 
 
 29 Harv. Law Rep. 640-1916. 
 
CHAPTER XVIII 
 
 Unpaib Competition in the Use op Literary Property 
 
 Section 272. Copyright. 
 
 273. Publication. 
 
 274. Trade-mark rights arising in connection with literary property. 
 
 275. Analogy between actions for unfair competition and infringement 
 
 of copyright. 
 
 276. The doctrine of unfair competition as applied to hterary property. 
 
 277. Unfair competition in connection with books and book titles. 
 
 278. Unfair competition in connection with plays and play titles. 
 
 279. Names of newspapers and magazines. 
 
 280. Comic strips. 
 
 281. Use of an author's name. 
 
 282. Jurisdiction. 
 
 Under the early English common law, the right of an author 
 in his literary works was in the nature of a monopoly, which ex- 
 tended to his printed as well as his unpublished compositions. This 
 right, however, was not so clearly defined by the courts as to form 
 a basis for proper protection, and it became expedient to remedy 
 this defect by statutory action. Accordingly, in the eighth year 
 of Anne, the first copyright act was passed by Parliament. The 
 purpose of that act was to afford protection to authors for a limited 
 period after the pubhcation of their works. In the htigation 
 following its enactment the House of Lords held that the common- 
 law right of an author in his printed works was superseded and 
 replaced by the rights accorded under the statute. This determi- 
 nation was reached in the case of Donaldsons v. Becket,^ eleven 
 judges participating. The five following questions were put to 
 their Lordfehips: 
 
 1. "Whether at common law an author of a book or hterary 
 composition, had the sole right of first printing and pubhshing the 
 same for sale, and might bring an action against any person who 
 printed, pubhshed and sold the same without his consent." 
 
 Three of the judges answered this question in the negative, as 
 against eight who held the affirmative. 
 
 2. "If the author had such right originally, did the law take it 
 
 • Donaldsons v. Becket, 4 Burrows, 2408. 
 
 507 
 
608 Unfaie Competition in Use of Literary Property 
 
 away upon his printing and publishing such book or Uterary com- 
 position, and might any person afterwards reprint and sell, for 
 his own benefit, such book or literary composition against the 
 will of the author." 
 
 Seven judges held the negative on this question, as against 
 four for the affirmative. 
 
 3. "If such action would have lain at common law, is it taken 
 away by the statute of 8th Anne? And is an author by the said 
 statute precluded from every remedy except on the foundation 
 of the same statute and on the terms and conditions prescribed 
 thereby?" 
 
 Five judges responded in the negative to this question, as 
 against six who held the affirmative. 
 
 4. "Whether the author of any Uterary composition, and his 
 assigns, had the sole right of printing and publishing the same in 
 perpetuity by the common law." 
 
 Four judges held the negative, as against seven in the aflfirma- 
 tive. 
 
 5. "Whether this right is in any way impeached, restrained or 
 taken away by the statute of 8th Anne." 
 
 Five judges held the negative, as against six in the aflSrmative. 
 In the United States a similar interpretation has been given to 
 the copsrcight law of 1790, by the United States Supreme Court. ^" 
 
 >" Holmes v. Hurst, 174 U. S. 82-84. Indeed, the Star Chamber seems to 
 
 Brown, J.: "The right of an author, have exercised the power of search, 
 
 irrespective of statute, to his own confiscation and imprisonment with- 
 
 productions and to a control of their out interruption from Parliament, 
 
 publication, seems to have been recog- up to its abolition in 1641. From 
 
 nized by the common law, but to this time the law seems to have been 
 
 have been so iU defined that from in an unsettled state — although 
 
 an early period legislation was adopted Parliament made some efforts to re- 
 
 to regulate and limit such right, strain the hcentiousness of the press — 
 
 The earliest recognition of this com- until the eighth year of Queen Anne, 
 
 mon-law right is to be found in the when the first copyright act was 
 
 charter of the Stationers' Company, passed, giving authors a monopoly 
 
 and' certain decrees of the Star Cham- in the publication of their works for 
 
 ber promulgated in 1556, 1585, 1623 a period of from fourteen to twenty- 
 
 and 1637, providing for licensing and eight years. Notwithstanding this 
 
 regulating the manner of printing, act, however, the chancery courts 
 
 and the number of presses through- continued to hold that, by the com- 
 
 out the Kingdom, and prohibiting mon law and independently of legis- 
 
 the publication of unlicensed books, lation, there was a property of un- 
 
Copyright 
 
 509 
 
 The limitations of the right of an author in his printed works 
 thus put in force have not, however, affected his rights in a book 
 or composition unpubhshed within the meaning of the copyright 
 statutes. It is now well settled both in this country and in 
 England that an author has by law a right to the first publica- 
 tion of his Uterary works. He has a right to determine whether 
 they shall be published at all, and if published, when, where, 
 by whom, and in what form.^ 
 
 §272. Copyright. — Various statutes have been enacted in the 
 jurisdictions wherein the common law prevails, granting to authors 
 and owners of unpublished Uterary works a monopoly in the publi- 
 cation of their works for certain prescribed periods. The statutes 
 aim to protect the "property in the literary composition, — the 
 product of the mind and genius of the author" ^ and do not af- 
 ford protection against use of a similar title by another in connec- 
 
 limited duration in printed books. 
 This principle was affirmed so late 
 as 1769 by the Court of King's Bench 
 in the very carefully considered case 
 of Millar v. Taylor, 4 Burrows, 2303, 
 in which the right of the author of 
 'Thomson's Seasons,' to a monopoly 
 of this work, was asserted and sus- 
 tained. But a few years thereafter 
 the House of Lords, upon an equal 
 division of the judges, declared that 
 the common-law right had been taken 
 away by the statute of Anne, and that 
 authors were limited in their monopoly 
 by that act. Donaldsons v. Becket, 
 4 Burrows, 2408. This remains the 
 law of England to the present day. 
 An act similar in its provisions to the 
 statute of Anne was enacted by Con- 
 gress in 1790, and the construction 
 put upon the latter in Donaldsons v. 
 Becket, was followed by this court 
 in Wheaton v. Peters, 8 Pet. 591. 
 While the propriety of these decisions 
 has been the subject of a good deal 
 of controversy among legal writers, 
 it seems now to be considered the 
 settled law of this country and Eng- 
 land that the right of an author to a 
 
 monopoly of his publications is meas- 
 ured and determined by the copyright 
 act — in other words, that while a right 
 did exist by common law, it has been 
 superseded by statute." 
 
 2 Palmer v. DeWitt, 47 N. Y. 532. 
 "The author of a literary work or 
 composition has by law a right to 
 the first the publication of it. He has a 
 right to determine whether it shall 
 be published at aU, and if published, 
 when, where, by whom, and in what 
 form. This exclusive right is confined 
 to the first publication. When once 
 published it is dedicated to the public, 
 and the author has not at common 
 law any exclusive right to multiply 
 copies of it, or to control the subse- 
 quent issues of copies by others." 
 Goldmark v. Kreling, 35 Fed. 661. 
 "The law protecting the rights of 
 authors in their compositions, literary 
 and musical, where they have not 
 been dedicated to the public, or 
 published with the author's consent, 
 is well established." 
 
 '^Osgood v. Allen, 18 Fed. Cas. 
 No. 10,603. 
 
510 Unfair Competition in Use of Literary Property 
 
 tion with a different work/ The right granted to an author or 
 proprietor of a literary work is that of multiplying copies of it to 
 the exclusion of others. It is purely statutory.^ Publication of a 
 literary work is a condition precedent to obtaining a copyright.^ 
 Upon the expiration of the period prescribed in the copyright 
 statutes, the literary property which has been copyrighted be- 
 comes publici juris.'' 
 
 §273. Publication. — Under the common-law rule as above 
 stated publication of literary work did not affect the author's 
 or proprietor's rights of ownership. Since the enactment of the 
 copyright statutes in the United States and England pubUca- 
 tion of a Hterary production is considered a dedication of the 
 
 *Corbett v. Purdy, 80 Fed. 901. « O'Neill v. General Film Co., 171 
 " The right secured by the copyright App. Div. (N. Y.) 854. 
 
 act is the property ia the literary 
 composition, and not in the name or 
 title given to it. In no case, so far 
 as this court is advised, has protec- 
 tion been afforded by injunction 
 under the copjright laws to the title 
 alone, separate from the book or 
 dramatic composition which it is 
 used to designate." Citing Osgood v. 
 Allen, 1 Holmes, 185, Fed. Cas. 
 No. 10,603. 
 
 Harper v. Ranous, 67 Fed. 904. 
 " The appUcation, however, for an in- 
 junction against the mere use of the 
 name 'Trilby' as the title of any dra- 
 matic composition which does not 
 present such scenes, incidents, plot, or 
 dialogue, or simulated or colorable 
 imitation or adaptation thereof, is de- 
 nied. It is the name in connection with 
 the novel, not the name alone, which 
 the copyright law protects." 
 
 ^Palmer v. DeWitt, 47 N. Y. 532. 
 "The right of an author or pro- 
 prietor of a literary work to multiply 
 copies of it, to the exclusion of others, 
 is the creature of statute. This 
 is the right secured by the copy- 
 right laws of the different govern- 
 ments." 
 
 "An author or owner of aibook or 
 play, by publishing it, which is a 
 condition precedent to obtaining a 
 copyright, waives and abandons his 
 common-law rights therein, and must 
 thenceforth depend upon the statutory 
 rights conferred by the acts of Con- 
 gress. {Calliga v. Pnterocean News- 
 paper Co., 157 Fed. 186; aff'd 215 U. S. 
 182; Jewelers Mercantile Agency v. 
 Jewelers Publishing Co., 155 N. Y. 241; 
 Photo Drama Motion Picture Co. v. So- 
 cial Uplift Film Corp., 220 Fed. 448.)" 
 
 ''Ogilvie v. G. & C. Merriam Co., 
 149 Fed. 860. 
 
 "A copjrright, the same as a patent, 
 is a monopoly created by statute. 
 This monopoly is granted upon the 
 implied condition that at the expira- 
 tion of the copyright the book and 
 the name by which it is designated 
 are dedicated to the public; in other 
 words, at the expiration of the copy- 
 right, both the book and its generic 
 name become public property. To 
 say that the public have the right to 
 publish the book, and not the inci- 
 dental right to use the name by which 
 it is known, is in effect to destroy 
 the public right, and to perpetuate 
 the monopoly." , 
 
Publication 511 
 
 work to the public and the author or proprietor has not, aside 
 from the copyright statutes, any exclusive right to multiply 
 copies of it or to control the subsequent issue of copies by others.* 
 What constitutes a publication sufficient to affect an author's 
 Uterary property must, therefore, be determined by considering 
 the decisions construing the various copyright statutes. If the 
 act of the author constitutes a publication within the meaning 
 of these statutes without affording him the statutory protection 
 the public may enjoy free use of his literary work. Parker, Ch. J., 
 of the New York Court of Appeals defining publication said: 
 "The present state of the law is that if a book be put within 
 reach of the general public so that all may have access to it^ no 
 matter what Umitations be put upon the use of it by the indi- 
 vidual subscriber or lessee, it is pubUshed, and what is known as 
 the common-law copyright, or right of first publication, is gone." ' 
 Pubhcly performing a dramatic composition is not sufficient pub- 
 lication to destroy the author's common-law property therein,^" 
 nor is the exhibition of a painting in an art gallery to which the 
 pubUc is admitted, if the rules of the exhibition provide that no 
 copy of the works may be made." Printing a book serially in a 
 magazine is a publication,^^ and the same effect is given to the 
 
 ^Wheaton v. Peters, 8 Pet. 591; dramatic composition, not printed 
 
 Donaldsons v. Becket, 4 Burrow, 2408; and published, does not deprive the 
 
 Drone on Copyright, p. 116. owner of his common-law right, save 
 
 'Jewelers' Mercantile Agency v. by operation of statute. At common 
 
 Jewelers' Pub. Co., 155 N. Y. 241. law, the public performance of the 
 
 Wagner v. Conried, 125 Fed. 798. play is not an abandonment of it to 
 
 The German opera "Parsifal" was the public use." 
 
 published by a firm entitled to the " Werckmeister v. American Litho- 
 
 exclusive publication of the same graphic Co., 134 Fed. 321. 
 
 under a contract reserving the acting Case holds that an exhibition of a 
 
 rights to the composer's heirs. Com- painting in the Royal Academy, 
 
 plete copies of the work were offered London, where the public were ad- 
 
 for sale in the United States so that mitted to view paintings on pay- 
 
 "the public, without discrimination ment of admission fee but were not 
 
 of persons, had an opportunity of allowed to copy the pictures exhibited 
 
 enjoying them," containing a notice was not a publication of the artist's 
 
 of the reservation of right for stage work. 
 
 production. Held, that the opera Case reviews the authorities re- 
 was dedicated to public and the lating to publication generally, 
 reservation of right ineffective. See American Tobacco Co. v. Werch- 
 
 >» Ferris v. Frohman, 223 U. S. 435. meister, 146 Fed. 375, aff'd 207 U.S.284. 
 
 "The public representation of a "Holmes v. Hurst, 174 U. S. 82. 
 
612 Unfair Competition in Use of Literaky Property 
 
 act of filing house plans with the building department of a city 
 as a preliminary to securing the consent necessary to the erection 
 of a building. 1' Sending a sample out to the trade is not a 
 published edition within the meaning of the copyright laws." 
 
 § 274. Trade-Mark Rights Arising in Connection with titerary 
 Property. — "An author or proprietor of an unpublished Uterary 
 work has then a property in such work, recognized and protected 
 both here and in England, and the use and enjoyment of it is se- 
 cured to him as of right. This property in a manuscript is not dis- 
 tinguishable from any other personal property. It is governed by 
 the same rules of transfer and succession, and is protected by 
 the same process, and has the benefit of all the remedies accorded 
 to other property so far as applicable." " There is nothing 
 inherent in literary property to prevent the courts from applying 
 the general principles of the law governing cases of unfair com- 
 petition, to protect an author's rights.'^ It would seem, there- 
 fore, that a vaUd trade-mark right may be acquired in connection 
 with Hterary property, if a person conforms to the requirements 
 of the law relating to trade-marks generally." Any other maimer 
 of using a mark in connection with literary property will be of 
 no avail. ^^ Where a person has perfected a trade-mark right in 
 connection with literary property, the protection accorded him 
 is no more nor less than if he had acquired the mark in connec- 
 tion with ordinary merchandise. Accordingly, use of a trade- 
 Publication of a book serially in a has been applied to a game or to cigars, 
 magazine prior to securing copyright or to anything else which is distin- 
 vitiates a copyright subsequently guished by a label, or by the distinc- 
 procured. tive form or style of the package.'' 
 
 " Wright V. Eisk, 86 App. Div. " See chapters on " Trade-marks." 
 
 (N. Y.) 356. 18 Kipling v. G. P. Putnam Sons, 
 
 " Stecher Lithograph Co. v. Dunston 120 Fed. 631. 
 Lithograph Co., 233 Fed. 601; Folk v. "We do not intend to decide that 
 Gast Lithograph & Engraving Co., 54 such a trade-mark is sanctioned by 
 Fed. 890. the law, but even if it were, it is 
 
 " Palmer v. De Witt, 47 N. Y. manifest that the mark does not lose 
 532. its characteristics because used to 
 
 ^'^Dvtton & Co. V. Cupples, 117 designate an unusual variety of 
 App. Div. 172. 'goods.' In other words, the author, 
 
 " Upon the general right of the plain- assuming that he may have such 
 tiff to protective relief, we cannot protection, must comply with the 
 see any reason why the same rule law if he would have a valid trade- 
 should not apply to a book that mark." 
 
Analogy Between Unfair Competition and Copyright 513 
 
 mark in connection with the sale of a book will not afford its 
 owner protection against infringement of the literary property in 
 the book. " The law of trade-marks prevents simulation of a mark 
 in connection with an article sold and in no way prevents simula- 
 tion of the article itself. 
 
 The difficulty in applying the law of trade-marks to literary 
 property, as shown in the reported cases, Ues in. the fact that 
 authors seek to make trade-marks of the titles given to their works, 
 or to their own names or pseudonyms and thus attempt to pro- 
 tect their literary property. It is obvious that the title of a book 
 or play is descriptive and cannot be exclusively appropriated as 
 a trade-mark. It is the name and the only name used by the public 
 to designate the article to which it is applied. The name of an 
 author' or his pseudonym is also aptly descriptive and may, there- 
 fore, be used by anyone entitled to use a published literary work. 
 
 § 275. Analogy between Actions for Unfair Competition and 
 Infringement of Copyright. — There is no marked degree of simi- 
 larity between the property which exists in a trade-mark or trade- 
 name and that which is created by the copyright laws. The right 
 secured by the copjrright laws is the property in a literary com- 
 position, — the product of the mind and genius of the author and 
 not in the name or title given to it. On the other hand, the prop- 
 erty protected in cases involving the infringement of a trade- 
 mark or trade name is the right to use a name or symbol to in- 
 dicate a good-will.^" There is this analogy, however, in both 
 classes of cases that when an infringement occurs the basis of 
 
 "Black V. Ehrich, 44 Fed. 793; essence of the wrong consists in the 
 
 Atlas Mfg. Co. v. Street & Smith, 204: sale of the goods of one manufac- 
 
 Fed. 398; Osgood v. Allen, 18 Fed. turer or vendor as those of another. 
 
 Cas. 871, No. 10,603 (1 Hohnes, It is only when this false representa- 
 
 185). Suit by purchaser of "Our tion is directly or indirectly made 
 
 Young Folks" to restrain use of that the party who appeals to a court 
 
 title "Our Young Folks Illustrated of equity can have relief. Delaware & 
 
 Paper." Injunction refused. H. Canal Co. v. Clark, 13 Wall. 
 
 ^Osgood V. AUm, 18 Fed. Cas., (80 U. S.) 311, 322. Words or de- 
 
 p. 871; Case No. 10603. vices may be adopted as trade-marks, 
 
 "Property in the use of a trade- which are not original inventions of 
 
 mark or name has very little analogy the one who adopts and uses them, 
 
 to that which exists in copyrights Words in common use may be adopted 
 
 or patents for inventions. In all if, at the time of adoption, they were 
 
 cases where rights to the exclusive not used to designate the same or 
 
 use of a trade-mark are invaded, the similar articles of production. A 
 
514 Unfair Competition in Use of Literary Property 
 
 the plaintiff's remedy is that another person makes use of plain- 
 tiff's property and endeavors to pass it off as his own.^' 
 
 § 276. The Doctrine of Unfair Competition as Applied to 
 Literary Property. — Irrespective of the protection afforded by 
 the copyright statutes, the law does not leave remediless a per- 
 son damaged by acts of unfair competition in the use of published 
 literary works. "A publication is the subject of property, and 
 there is no reason why, like every other kind of property, it 
 should not be subject of the law's protection. To put out a 
 colorable imitation of it, by which the public may be easily mis- 
 led into supposing that it is the literary article they have in mind to 
 obtain and read, is an act of deception which injures the public." ^^ 
 
 generic name, or a name merely 
 descriptive of an article of trade, or 
 its qualities or ingredients, cannot be 
 adopted as a trade-mark, so as to 
 give a right to the exclusive use of 
 it. The office of a trade-mark is to 
 point distinctively to the origin or 
 ownership of the article to which it 
 is affixed. Marks which only indi- 
 cate the names or qualities of prod- 
 ucts cannot become the subjects of 
 exclusive use, for, from the nature of 
 the case, any other producer may 
 employ, with equal truth and the 
 same right, the same marks for like 
 products. * * * 
 
 "Applying these principles to the 
 case before the court, the question 
 presented on this branch of the case 
 is, whether the defendant has so simu- 
 lated the mark of the complainant 
 as to deceive the public, so that the 
 public will naturally mistake his 
 publication for that of the com- 
 plainant." 
 
 21 West Pubtishing Co. v. Edward 
 Thompson Co., 169 Fed. 833-853. 
 
 "Actual copying, or such para- 
 phrasing as to be equivalent to copy- 
 ing, was at first considered to be the 
 only form of infringing use of copy- 
 righted material. But the great 
 
 diversity of printed publications, and 
 the many phases of literary activity, 
 especially when applied to minor pur- 
 suits, ultimately forced the construc- 
 tion of the copyright statute, in which 
 the basis of injury is found in the 
 unfair use of the material of the work 
 in making up a book of similar na- 
 ture, as well as in a direct copying or 
 paraphrasing of the words therein 
 contained. This extension of the 
 law of copyright brings the case 
 closely into the realm of unfair com- 
 petition. But, while a likeness may 
 be traced in the principles upon 
 which this class of actions is founded, 
 yet in application and in scope a 
 sharp line of distinction can be drawn. 
 Copyright is based upon statute, 
 while unfair competition (except as 
 it may be affected by legislative en- 
 actment, in connection with patents, 
 trade-marks, etc.) is dependent upon 
 abstract principles of law. Copy- 
 right relates to the printed material 
 of a publication while unfair compe- 
 tition may be concerned with any 
 article of trade, whether having words 
 or letters in its composition and ap- 
 pearance or not." 
 
 " Monroe v. Tousey, 129 N. Y. 38; 
 G. & C. Merriam Co. v. Strauss, 
 
Doctrine Applied to Literary Property 
 
 515 
 
 The general principles of law governing cases of unfair com- 
 petition are the same when applied to literary property as any 
 other commercial article. Fraud is the basis of the cause of 
 action, and must be established to entitle the plaintiff to relief.^' 
 
 136 Fed. 477. Wallace, C. J., 
 said: 
 
 "But there may be a commercial 
 property in books as well as a literary 
 property, and when a publisher has 
 imparted to his books peculiar charac- 
 teristics, which enable the public to 
 distinguish them from other books 
 embodying the same literary prop- 
 erty, and to recognize them as his 
 particular product, there is no reason 
 why the principles which interdict 
 unfair competition in trade should 
 not aSord him protection against 
 the copying of the characteristics by 
 rivals. So far as the bill proceeds 
 upon this theory, it presents a meri- 
 torious case." 
 
 ^ Atlas Mfg. Co. v. Street & SmUh, 
 204 Fed. 398. 
 
 "But complainants insist that we 
 shall consider their books not from 
 a Uteraiy standpoint but as mer- 
 chandise, and cite numerous cases 
 recoghizing, that the principles of 
 trade-mark law, and the law for- 
 bidding unfair competition in busi- 
 ness, may under certain conditions 
 apply to books, magazines, periodicals 
 and newspapers. That they may and 
 do apply to magazines, periodicals 
 and newspapers, as such, we have 
 already seen; to books the application 
 is more limited." 
 
 Dicks V. Yates, 18 Ch. Div. 76, 87 
 (1881). 
 
 The case involved a novel entitled 
 "Splendid Misery; or, East End and 
 West End, by C. H. Hazlewood." 
 It was copyrighted, but the court 
 held that did not protect the use of 
 the hackneyed phrase, "Splendid 
 
 Misery." It was not practicable as 
 a trade-mark, because the public 
 would not be led to believe that 
 they were buying one novel when they 
 were actually buying the other. De- 
 fendant's full title was, "Splendid 
 Misery, by the Author of Lady 
 Audley's Secret, Vixen, &c." The 
 court considered whether or not 
 any "common-law fraud" was in- 
 volved, in the following language: 
 
 "Supposing a man were to publish 
 a book, calling it 'Soyers' Cookery 
 Book,' which it is not, or 'Colenso's 
 Arithmetic,' which it is not, * * * 
 that is a common-law fraud." 
 
 KeUy V. Byks, 13 Ch. Div. 682. 
 
 Plaintiff published "Post Office 
 Directory of West Riding of York- 
 shire," for 36 shillings. Defendant 
 threatened to pubHsh "Post Office 
 Bradford Directory" for 7 shillings 
 6 pence. Bradford was included in 
 plaintiff's directory, occupying 126 of 
 the 1704 pages. The court below 
 said: 
 
 "To hold under these circumstances 
 that any person desiring to possess 
 the plaintiff's West Riding Directory 
 might be misled or deceived into buy- 
 ing the defendant's Bradford Direc- 
 tory, seems to me to be wholly un- 
 warranted by the facts in evidence, 
 and so grossly improbable as to be 
 impossible to be inferred " (id., pp. 690, 
 691). 
 
 James, L. J., said on appeal: 
 
 "The words 'Post Office' in con- 
 nection with a directory are descrip- 
 tive of the work, and imply that it 
 was compiled with the assistance of 
 the letter carriers and other servants 
 
516 Unfair Competition in Use of Literary Property 
 
 Courts recognize that the title of a literary work, although a 
 word common to the language, may acquire a secondary meaning 
 pointing to the origin of the work in connection with which it 
 has been long used. Accordingly, if the title is used by another 
 in its secondary meaning, an injunction will lie restraining such 
 use, but all persons will be pertnitted free use of the title in its 
 primary sense.^* 
 
 of the Post OflBce, and for this reason 
 is calculated to give the most accurate 
 information. Now, the plaintiff does 
 not obtain the assistance of the serv- 
 ants of the Post OflBce, and the title 
 of his directories represents what is 
 not strictly true. But in the case of 
 the defendants the use of the word is 
 strictly correct. He did get the as- 
 sistance of the servants of the Post 
 OflSce at Bradford. He had a right 
 to get that assistance if he could, 
 and he had a right to say that he had 
 got it. It does not appear that any- 
 body has been deceived, and there 
 was no evidence that what has been 
 done was calculated to deceive the 
 public" {id., p. 692). 
 
 Black V. Ehrich, 44 Fed. 793. 
 
 " With the exception of the copy- 
 righted articles, the entire literary 
 matter of 'The Encyclopaedia Bri- 
 tannica. Ninth Edition,' is public 
 property in this country, at least, and 
 a rival pubUsher has the legal right 
 to make any use of it he sees fit. He 
 may use any part of it, or all of it, 
 and call it by what name he prefers. 
 Neither the author nor proprietor of 
 a Uterary work has any property in 
 its name. It is a term of description, 
 which serves to identify the work; 
 but any other person can with im- 
 punity adopt it, and apply it to any 
 other book, or to any trade com- 
 modity, provided he does not use it 
 as a false token, to induce the public 
 to believe that the thing to which 
 
 it is applied is the identical thing 
 which it originally designated. If 
 literary property could be protected 
 upon the theory that the name by 
 which it is christened is equivalent 
 to a trade-mark, there would be no 
 necessity for copyright laws." 
 
 Kipling v. G. P. Pvinam Sons, 120 
 Fed. 631. 
 
 "Actions of this character are 
 based essentially upon fraud. Fraud 
 must be proved. It can not be in- 
 ferred from unimportant similarities, 
 not calculated to mislead the pur- 
 chaser. The action may be main- 
 tained where it appears that the de- 
 fendant is destroying or attempting 
 to destroy an honest business by dis- 
 honest means. The gravamen of the 
 action is a fraudulent purpose on the 
 part of the defendant to represent 
 to the public that the plaintifi's. busi- 
 ness is his business, and by fraudulent 
 mis-statements to deprive the plaintiff 
 of the, profits which he would other- 
 wise receive." 
 
 '* Stokes V. AUm, 56 Hun, 526, 
 Daniels, J., said: 
 
 "It may properly be conceded that 
 words of common use may be so em- 
 ployed as to acquire a limited addi- 
 tional significance by way of desig- 
 nating a particular article of manu- 
 facture or production, and in that 
 sense be entitled to the protection of 
 the court by way of injunction against 
 infringement by another person or 
 persons (citing cases). But the law 
 
Books and Book Titles 
 
 517 
 
 § 277. Unfair Competition in Connection with Books and Book 
 Titles. — Under the principles of the law of unfair competition, a 
 pubHsher who has long sold a work under a title indicating the 
 origin of the publication is entitled to an injunction restraining 
 a competitor from using the same title. ^^ Similarly, a publisher 
 who places on the market books in a unique style of binding, with 
 illuminated type, illustrations and decorated borders, is protected 
 from the damages which will follow a competitor's placing on 
 the market books which are identical copies except in artistic 
 merit and workmanship.^^ 
 
 has not been, neither does, nor could it 
 practically be extended any farther 
 than that. * * * But it is necessary 
 to maintain their action that the de- 
 fendants should have employed this 
 word 'Life' with the same significance 
 in whole or in part as it has been em- 
 ployed by plaintiff, and that from 
 the proofs it is clear they have not 
 done." 
 
 " The Chancellor of Oxford Uni- 
 versity V. Wilmore-Andrews Publishing 
 Co., 101 Fed. 443. 
 
 The plaintiff had long used the 
 word "Oxford" to designate its bibles, 
 and the term became generally known. 
 The defendant published a bible and 
 printed on the title page "Oxford 
 Bible, the S. S. Teachers edition." 
 The plaintiff brought suit to enjoin 
 the use of its trade name. In granting 
 a perpetual injunction, Wheeler, C. J., 
 
 "The plaintiff has no copyright of 
 this work, and anyone would of course 
 have a clear right to print and pub- 
 lish it, but no one would have a right 
 in any false manner to represent such 
 a product as' the work of the plaintiff. 
 The use of the name upon the defend- 
 ant's bibles had a tendency to so rep- 
 resent, and to confuse the plaintiff's 
 use of its name in its business." 
 
 "Button & Co. v. Cupples, 117 
 App. Div. 172. 
 
 The plaintiff published certain un- 
 copyrighted hymns and poems in a 
 unique style of binding, printed with 
 special type and illuminated capitals, 
 containing illustrations and decorated' 
 borders. The defendant placed on 
 the market identical copies of the 
 plaintiff's publication, except that 
 they were inferior in workmanship 
 and artistic merit. The court granted 
 an injunction restraining the defend- 
 ants from publishing and selling re- 
 productions of the plaintiff's books. 
 It said: 
 
 "The obvious purpose of publish- 
 ing such copies was to trade upon the 
 favorable reputation which plaintiff 
 had established for its books; to de- 
 ceive many purchasers into the be- 
 lief that they were purchasing plain- 
 tiff's books, and to damage plaintiff 
 by the unfair use of its ingenuity in 
 devising the general make-up of its 
 books and of its success in placing 
 the books upon the market. 
 
 "In such a case it was unnecessary 
 for plaintiff to prove, dehors the books 
 themselves, that defendants were in- 
 spired by a fraudulent intent {Day 
 V. Webster, 23 App. Div. 601; Dunn 
 Co. V. Trix Mfg. Co., 50 id. 75), nor, 
 in so flagrant a case as the present, 
 is it necessary to prove that any per- 
 son was actually deceived by the 
 imitation. It is apparent that there 
 
518 Unfair Competition in Use of Literary Property 
 
 Where a publisher obtains from an eminent scholar the right 
 to publish a series of books to be selected by him, and the pub- 
 lisher widely advertises that fact, an injunction will be granted 
 against the sale of the same books by a competitor under a similar 
 title indicating that the books were the selection of the scholar, 
 even though the general appearance of the book is different. ^^ 
 
 A publisher will be restrained from imitating the title and 
 form under which a series of books of a rival has become known 
 and popular with the public, even where the contents of the 
 imitating book is not the same as that of the book imitated.^* 
 
 was every probability of such decep- 
 tion, and that is precisely what the 
 law seeks to prevent, fyulcan v. 
 Myers, 139 N. Y. 364.)" 
 
 " Collier v. Jmes, 66 Misc. 97. 
 
 Plaintiff entered into an agreement 
 with Dr. Eliot, whereby the plaintiff 
 began the pubUcation of a series of 
 books selected by Dr. EUot in uniform 
 edition, and sold the same under the 
 trade-mark "Dr. Eliot's Five-foot 
 Shelf of Books." The defendants, 
 without the consent of the plaintiff 
 or Dr. Eliot, caused to be pubUshed 
 a series of books entitled "Dr. Eliot's 
 Famous Five-Foot Shelf of World's 
 Greatest Books." 
 
 The court granted an injunction 
 pendente hte. Newbueger, J., said: 
 
 "There appears to be no doubt that 
 the defendants are seeking by unfair 
 competition or unfair trade to put 
 upon the market a series of books. 
 Although it is not similar in appear- 
 ance and make-up to the set which 
 plaintiff has pubUshed, yet, in adopt- 
 ing the name of 'Dr. Eliot's Five- 
 Foot Shelf of Books,' the title which 
 plaintiff has advertised extensively 
 for a long while, there is indicated 
 an attempt to deceive the pubUc into 
 buying defendants' publications, be- 
 lieving them to be those published 
 by the plaintiff. While it is conceded 
 by the defendants that their publica- 
 
 tions are of less value, yet, as their 
 books are offered for sale by subscrip- 
 tion, the purchaser will not see the 
 books until they are delivered. Mr. 
 Justice Scott in DvUon & Co. v. 
 Cujyples, 117 App. Div. 176, says: 
 'Nor, in so flagrant a case as the 
 present, is it necessary to prove that 
 any person was actually deceived by 
 the imitation. It is apparent that- 
 there was every probability of such 
 deception, and that is precisely what 
 the law seeks to prevent. (Vtdcan v. 
 Myers, 139 N. Y. 364.) Upon the 
 general right of the plaintiff to pro- 
 tective reUef we carmot see any reason 
 why the same rule should not be ap- 
 plied to a book that has been appUed 
 to a game, or to cigars, or to any- 
 thing else which is distinguished by 
 a label, or by the distinctive form or 
 style of the package. The decisive 
 fact is that the defendants are unfairly 
 and fraudulently attempting to trade 
 upon the reputation which plaintiff 
 has built up for its books. The right 
 to injunctive relief in such a case is 
 too firmly established to require the 
 citation of authorities.'" 
 
 =» Potter V. McPherson, 21 Hun, 559. 
 
 Action to restrain defendant from 
 publishing and selling certain copy 
 books. Complaint alleged that the 
 plaintiffs were the owners of a trade- 
 mark or right of property in the name 
 
Books and Book Titles 
 
 519 
 
 "National System of Penmanship" 
 as applied to certain books, published 
 under the name "Payson, Dunton & 
 Scribner's National System of Pen- 
 manship." The defendant published 
 a book under the name "Independent 
 National System of Penmanship." 
 
 Daniels, J., said: 
 
 "An inspection of the books dis- 
 closes the facts that they are pubUshed 
 substantially in the same form so far 
 as general appearance, binding, and 
 color of the covers are concerned; 
 and upon the cover of the defendant's 
 book the phrase 'National System of 
 Penmanship,' which has long been 
 the title of the plaintiffs' publication, 
 is printed in the same manner, the 
 same size and form of letters, and 
 occupying the same position as they 
 do upon the cover of the plaintiffs' 
 book. The resemblance of the words 
 and letters composing this phrase is 
 as complete as it could well be made, 
 and from the identity of the contents 
 of the books, their size, and general 
 appearance, the conclusion seems to 
 be well warranted, that they could 
 not in that manner have found their 
 place upon the defendant's book, 
 unless it was the result of design upon 
 their part to imitate the plaintiffs' 
 book. * * * In order to render it 
 necessary that a publication or imita- 
 tion of this nature should be restrained, 
 it is suflScient that persons who may 
 desire to purchase the plaintiff's pub- 
 lication, might very well accept that 
 of the defendants, supposing and 
 beUeving it to be the same. That 
 the difference might be readily de- 
 tected by a comparison of one book 
 with the other, is not sufficient to 
 allow the defendants to appropriate 
 and use the plaintiffs' title. If in its 
 use, persons under ordinary circum- 
 stances, desiring to purchase one, 
 
 would receive the other in its place, 
 believing that they had obtained the 
 work intended to be bought, that will 
 not only justify, but require the court 
 to interfere, for the purpose of pre- 
 venting the use of the plaintiffs' 
 title." 
 
 Estes V. Worthington, 31 Fed. 154. 
 
 Plaintiff's assignor was the origina- 
 tor of the title "Chatterbox" upon 
 a continuous annual series of books 
 which he caused to be compiled, con- 
 taining illustrations and stories of a 
 class and style adapted to young 
 persons. The series, called "Chatter- 
 box" became widely known and very 
 popular in England and in this coun- 
 try, and "Chatterbox" books had a 
 distinctive title or name, appearance, 
 style and manner of covering and of 
 printing, which caused them to be 
 universally recognized as the books 
 which had attained and had main- 
 tained a well-known and highly ap- 
 preciated character. 
 
 The defendant published various 
 juvenile books, which simulate the 
 appearance and decoration of plain- 
 tiff's Chatterbox series, but do not 
 contain the contents of their books. 
 The court said: 
 
 "The use by the defendant of the 
 name 'Chatterbox' upon the books 
 which are represented by the plain- 
 tiffs' exhibits in this case, or upon 
 similar books of a juvenile character, 
 of the general appearance and style 
 of the plaintiffs' books, and from 
 presenting to the public for sale 
 juvenile publications with the use 
 of the title 'Chatterbox' and thereby 
 leading the public to believe that 
 they are the publications of the plain- 
 tiffs', should be enjoined." 
 
 Estes v. Williams, 21 Fed. 189. 
 
 In this case the defendants com- 
 menced the publication of a series of 
 
520 Unfair Competition in Use of Literary Property 
 
 But if the similarity of title and form is not sufficient to deceive 
 a person of ordinary intelligence, no relief will be granted.^' 
 
 books, and called them by the name 
 "Chatterbox," and made them so 
 similar in appearance and style to 
 those of the complainant's, as to lead 
 purchasers to think that they were the 
 same. The court said, Wheelek, J.: 
 
 "As a matter of fact that it is found 
 that they intended to make the books 
 appear to be the same, and to avail 
 themselves of the popularity which 
 the books had attained by the labor 
 and skill bestowed upon them by and 
 at the expense of Johnston. There 
 being no copyright to prevent, the 
 defendants claim the right to so print 
 and pubUsh the series of books in this 
 country, and that if they have not the 
 right, the orators have no right to 
 prevent them. There is no question 
 but that the defendants have the right 
 to reprint the compositions and illus- 
 trations contained in these books, in- 
 cluding the titles of the several pieces 
 and pictures. * * * That does 
 not settle the question as to the right 
 claimed here. There is work in these 
 publications aside from the ideas and 
 conceptions. Johnston was not the 
 writer of the articles nor the designer 
 of the pictures composing the books, 
 but he brought them out in this form. 
 The name indicates this work. The 
 defendant, by putting this name to 
 their work in bringing out the same 
 style of book, indicate that their work 
 is his. This renders his work less 
 remunerative, and while continued 
 is a continuing injury which it is the 
 peculiar province of a court of equity 
 to prevent." 
 
 Estes V. Leslie, 27 Fed. 22. 
 
 "It is true that the name 'Frank 
 Leshe' is added, so that the title is 
 'Frank Leslie's Chatterbox,' and 
 
 the address of the publishing house is 
 put on. This appears to be done, 
 however, for the purpose of adding the 
 reputation of Frank LesUe, and of 
 that pubUshing house to that of the 
 Chatterbox, rather than for that of 
 building up a new reputation under 
 that name. If nothing had been 
 wanted of the popularity which had 
 been acquired under it, and which it 
 stood for, it could have been left, and 
 another name taken to build up. The 
 defendants do not copy the orators' 
 publications, but imitate them, and 
 apply the name of the orators' pubUca^ 
 tions to their imitations." 
 
 An injunction was granted. 
 
 " Lore et al. v. Harper Bros., 3rd 
 Circuit, March, 1898, 86 Fed. 481, 
 30 C. C. A. 373. The headnote reads : 
 
 "The complainant had pubUshed a 
 book entitled 'Farthest North. Nan- 
 sen,' composed mainly by Dr. Nansen. 
 Afterwards the defendants commenced 
 the publication of a book under the 
 title 'The Fram Expedition. Nansen 
 in the Frozen World.' The defend- 
 ant's book contained a number of 
 portraits ar^d illustrations similar to 
 those made use of by the complainant, 
 and part of substantially the same 
 literary matter. It contained accounts 
 of sundry arctic expeditions prior to 
 Dr. Nansen's polar voyage, to which 
 reference is made in complainant's 
 book. 
 
 " But the defendant's book differed 
 from the complainant's in respect to 
 style, price, number of volumes, and 
 color, to such an extent that an or- 
 dinary customer possessing common 
 intelligence would not mistake the 
 one for the other. Held, that the 
 complainant was not entilled to a pre- 
 
Books and Book Titles 
 
 521 
 
 So, also, it has been held that a publisher of a series of detec- 
 tive stories in which the deeds of the same character were weekly 
 
 liminary injunction on the ground of 
 unfair competition.'' 
 
 Bradford, D. J., said: 
 
 "It is a wholesome doctrine that 
 equity will restrain unfair competition 
 in trade; but it should be applied with 
 caution, lest, through possible mis- 
 appUcation, healthful and honorable 
 competition be defeated. Particularly 
 is this true with respect to Uterary, 
 historical and scientific works. The 
 complainant was not entitled to a 
 monopoly in the subject of arctic ex- 
 plorations; nor had it an exclusive 
 right to publish and sell books relating 
 to Hansen's polar expedition. That 
 subject was open to the world. Nor 
 had the complainant an exclusive 
 right, as against the defendants, to 
 the use of the words 'The Fram 
 Expedition. Nansen in the Frozen 
 World' or of any of them. There can 
 be little doubt that Nansen's exploits 
 served to kindle popular interest in 
 arctic explorations. In fact, the record 
 discloses that they were the proxi- 
 mate cause of the publication by the 
 defendants of their book. But this 
 circumstance does not in the least 
 militate against good faith or fair 
 dealing on their part. It appears 
 that months before Nansen began to 
 write an account of the expedition, 
 the defendants had determined to 
 publish a book on that and kindred 
 subjects. Nor does the appearance 
 or title of the defendants' book dis- 
 close any intent to indulge in unfair 
 competition with the complainant. 
 Certainly the difference between the 
 two books is obvious to any ordinary 
 customer of such works. The com- 
 plainant's books is in two volumes 
 containing, respectively, 587 and 714 
 
 pages, and is bound in brown cloth. 
 The defendants' book is in one volume 
 containing in the English edition, 
 531 pages and in the Norwegian edi- 
 tion 524 pages, and is bound in blue 
 cloth in both editions. * * * 
 
 " The complainant's book in two 
 volumes sells at .110, and that of the 
 defendants at $2.00. It is evident 
 that the two works are calculated 
 respectively to meet the demands of 
 different classes of purchasers. There 
 is nothing deceptive in the cover, 
 outside title or title page of the de- 
 fendants' book. Those titles, taken 
 in conjunction, are fairly descriptive 
 of the subject-matter of the volume. 
 They radically differ from the outside 
 title and title page of the complain- 
 ant's book. Comparing the two works, 
 we are unable to perceive that any 
 ordinary customer of such books pos- 
 sessing common intelligence should, 
 in the absence of actual fraud prac- 
 ticed upon him, mistake the one for 
 the other, without gross carelessness on 
 his part. The answer expressly denies 
 fraud and unfair competition. It is a 
 rule, subject to few exceptions, that a 
 preliminary injunction should not be 
 awarded on ex parte affidavits, unless 
 in a clear case. This rule has full ap- 
 plication in a case like the present, 
 where, though the bill should ulti- 
 mately be dismissed, great damage 
 would result from such an injunction 
 to the standing and business of a 
 book publishing house. If there be 
 any substantial doubt as to the right 
 to a preliminary injunction in such a 
 case, it should be refused." 
 
 Munro v. Tousey, 129 N. Y. 38. 
 
 The plaintiff published a series of 
 works and fiction entitled "Old 
 
622 Unfair Competition in Use of Literary Property 
 
 features, could not restrain a motion picture producer from ex- 
 hibiting a photo-play in which the same character appeared. 
 The articles in connection with which the controversy arose 
 were held by the court to be so dissimilar that there was no 
 competition.^" 
 
 Sleuth Library," and "Old Sleuth, 
 the Detective" was designated as 
 their author. The defendant pubhshed 
 a series of works variously entitled 
 "Young Sleuth, the Detective, in 
 Chicago," "Young Sleuth, the Keen 
 Detective" and other similar words 
 containing "Young Sleuth." Gray, 
 J., said: 
 
 "The difference in the caption of 
 the story, as well as the difference in 
 the name of the series and in the illus- 
 tration upon the covers, should indi- 
 cate to the most ordinary intelligence 
 that the defendants' publications 
 were not of tales of 'Old Sleuth the 
 Detective' or parts of the 'Old 
 Sleuth Library.' * * * 
 
 "In cases such as this it should pre- 
 sume that the public makes use of 
 the senses of sight and hearing, and 
 that it is possessed of a sufficient 
 amount of intelligence to note the 
 difference the senses convey. The 
 court ought not to interfere with the 
 freedom of conduct of trade and with 
 general business competition. Its 
 power to restrain should be reserved 
 to prevent fraud and imposture from 
 some real resemblance in the name 
 and appearance of the publications." 
 
 Stokes V. Allen, 56 Hun, 526. 
 
 The plaintiff brought an action to 
 restrain the defendant from publish- 
 ing a book entitled "Spice of Life" 
 as an infringement of the plaintiff's 
 book which was known as "The Good 
 Things of 'Life.'" 
 
 The plaintiff's book consisted of 
 extracts of a publication entitled 
 "Life." The defendant's publication 
 
 consisted of extracts from other maga- 
 zines. The books were quite similar 
 in color and binding. In its title, 
 the plaintiff quoted "Life," but the 
 defendant did not. The Court held 
 that as the defendant was using the 
 term "Life" in its primary significance, 
 it would not grant an injunction re- 
 straining such use saying: "It is not 
 sufficient to maintain the action that 
 purchasers inattentively might ac- 
 cept the defendant's publication in 
 place of the plaintiffs." 
 
 3« Atlas Mfg. Co. v. Street & Smith, 
 204 Fed. 398. The plamtiff was en- 
 gaged in the business of publishing 
 detective stories characterized by the 
 general name of "Nick Carter." Its 
 publications are issued weekly, and 
 each week has a different story under 
 a distinctive title. The stories are 
 complete in themselves. The only 
 connection between them is that the 
 detective character Nick Carter is 
 the central figure in each. The com- 
 plainant registered the name "Nick 
 Carter" as a trade-mark for a "weekly 
 publication devoted to fiction." It did 
 not obtain a copjnight. 
 
 The defendants were engaged in 
 the business of manufacturing and 
 selling motion pictures. They pro- 
 duced a motion picture entitled "Nick 
 Carter, the Great American Detec- 
 tive, Solving the $100,000 Jewel 
 Mystery." Neither the plot, situa- 
 tion nor people of this motion picture 
 were taken from complainant's pub- 
 lished works, but the character of 
 Nick Carter appeared in the same. 
 
 The Circuit Court of Appeals re- 
 
Books and Book Titles 
 
 523 
 
 It has been held not to be unfair competition to reprint an 
 uncopyrighted published book under a title different from that 
 selected by the author," and with which the book has become 
 known. Neither can an author of Uterary compositions which 
 are pubUshed as a collection under a title selected by him, com- 
 plain if they are subsequently reprinted under a different group- 
 ing and title.^^ 
 
 versed an order granting a preliminary 
 injunction and dismissed the bill for 
 want of equity. It held that a trade- 
 mark did not protect literary rights 
 in a book, and that a motion pic- 
 ture is not in the same class of goods 
 as a writing. 
 
 "We do not think a moving picture 
 show is of the same class as a written 
 book. One belongs to the field of 
 literature: the other to the domain of 
 theatricals. Originally there was no 
 legal connection between the written 
 novel and a dramatization based upon 
 its characters and incidents. The 
 connection was made by statute in 
 derogation of the common law. In 
 the absence of copyright, the situation 
 is as if no such connection had ever 
 been made. * * * 
 
 "Neither trade-mark nor trade- 
 name can afford protection to detec- 
 tive stories, as such, whether published 
 or still unborn, and much less where 
 neither title nor composition is pirated, 
 and but a single common character is 
 used." 
 
 ^^ Angers v. LeProhon, Rap. Jud. 
 Quebec, 22 S. C. 170. 
 
 Plaintiff published an uncopyrighted 
 story under the title "Un Amour 
 Vrai" using the pseudonym Laure 
 Cronon. The defendant repubUshed 
 the story under the title "Larmes 
 d' Amour," and used the pseudonym 
 in connection therewith. The court 
 dismissed an action for an injunction 
 brought by the author. 
 
 '2 Kipling v. Fenno, 106 Fed. 692. 
 Lacombe, C. J., said: 
 
 "Many of complainant's writings 
 are short tales or poems, requiring 
 the grouping together of several to 
 make up a single volume of appro- 
 priate size. He has from time to time 
 thus grouped his tales and poems, 
 giving to the volumes which contain 
 such groups titles of his own selec- 
 tion, 'Soldiers Three,' 'Barrack 
 Room Ballads,' and what not. Such 
 groups, thus entitled, have been pub- 
 lished with his authority, and, as is 
 conceded for the purpose of this argu- 
 ment, without any copyright protec- 
 tion. Apparently he has himself from 
 time to time made changes, as his 
 own taste varied, in the components 
 of the different groups, though that 
 circumstance is probably immaterial. 
 Baldly stated, the proposition ad- 
 vanced is that an author, whose men- 
 tal productions, prose, verse, and 
 title, have been given to the world by 
 publication without copyright, so that 
 any one is free to reprint and sell the 
 whole or any part of them, may 
 nevertheless regulate the manner in 
 which such reprinted matter may be 
 grouped and entitled, and may re- 
 strain any application of the title he 
 selected otherwise than as he used or 
 uses it. No authority is cited which 
 supports any such proposition, and, 
 in the absence of authority, the ques- 
 tion of its adoption by the courts had 
 better be reserved for final hearing." 
 
524 Unfaib Competition in Use of Literary Property 
 
 To rebind and sell copyrighted books is not unlawful, ^^ unless 
 the rebound books are passed off as new.'* On the expiration 
 of the term of copyright of a book, the owner of the expired copy- 
 right is entitled to protection in the same manner that the owner 
 of an expired patent is protected. The title of a book, during the 
 period of copyright monopoly, becomes descriptive of the book 
 in connection with which it is used, and on the termination of 
 the monopoly may properly be used by anyone in connection 
 with such work. But if subsequently the title is so used by a 
 person that it becomes associated in the mind of the public with 
 that person, and indicates liis product, the courts will not permit 
 the use of the title by another in connection with the work, un- 
 less the origin of the book is clearly indicated.'^ 
 
 " F. H. Dodd et al. v. H. J. Smith, 
 et al, 144 Pa. St. 340. 
 
 The plaintiff owned the copyright 
 of the works of E. P. Roe, and pub- 
 lished two editions of the books; one 
 ip paper cover was sold at $.50 per 
 volume, the other was cloth bound and 
 sold at SI. 50 per volume. 
 
 The defendant bought copies of the 
 paper cover edition, and bound the 
 book in imitation of plaintiff's bound 
 copies, selling them at about $.45 per 
 volume to the trade. The court re- 
 fused to grant a motion for preliminary 
 injunction. Doan v. American Book 
 Co., 105 Fed. 772; Bureau of Natural 
 Literature v. Sells, 211 Fed. 379. 
 
 '* Doan V. Ammcan Booh Co., 105 
 ^ed. 772; Bureau of Natural Literature 
 V. Sells, 211 Fed. 379; Qin & Co. v. 
 Appolo Publishing Co., 115 Fed. 772; 
 Kipling v. G. P. Putnam Sons, 120 
 Fed. 631. 
 
 Action was brought to recover dam- 
 ages for infringement of plaiatiff's 
 copyrights and trade-marks and unfair 
 competition. The defendants pur- 
 chased from the authorized publishers 
 of the plaintiff's literary works copies 
 of his books. They bound these books 
 uniformly, and sold the same as the 
 
 "Brushwood" edition. On the books 
 of these volumes the defendants placed 
 an elephant's head enclosed in a 
 circle. A similar marking had ap- 
 peared on the "Outward Bound" 
 edition of Kipling's works published 
 by Scribner. The court held that 
 there was no infringement of copy- 
 right, that the plaintiff had not estab- 
 lished a trade-mark, and that the 
 plaintiff had failed to show that the 
 defendants were guilty of unfair com- 
 petition. 
 
 " G. & C. Merriam Co. v. Ogilme, 
 159 Fed. 638. 
 
 "The right to use a copjrighted 
 name, however, upon the expiration of 
 the copyright, goes out to the pubUc 
 subject to a certain and well under- 
 stood limitation or condition, namely, 
 that the public right to use shall be 
 so exercised as not to deceive members 
 of the public and lead them into the 
 belief that they are buying the par- 
 ticular or identical thing which was 
 produced under the copyright." Aid- 
 rich, J., 159 Fed. 640." 
 
 Ogilme v. G. & C. Merriam Co., 149 
 Fed. 858, Colt, J., said: 
 
 "A copyright, the same as a patent, 
 is a monopoly created by statute. 
 
Books and Book Titles 
 
 525 
 
 The same rules hold regarding magazines '^ and text-books on 
 the ground of various resemblances of form, size, binding, print- 
 
 This monopoly is granted upon the 
 implied condition that at the expira- 
 tion of the copjrright the book, and 
 the name by which it is designated, 
 are dedicated to the public; in other 
 words, at the expiration of the copy- 
 right, both the book and its generic 
 name become public property. To 
 say that the public have the right to 
 pubUsh the book, and not the inci- 
 dental right to use the name by which 
 it is known, is in fact to destroy the 
 pubhc right and to perpetuate a 
 monopoly. For instance, to hold that 
 the Merriam Co . , after the expiration of 
 its copyright in Webster's Unabridged 
 Dictionary, still has the exclusive 
 right to the use of the name 'Webster,' 
 on some theory of trade-mark or trade 
 name or unfair competition, would 
 be to nullify the public dedication 
 and perpetuate the monopoly secured 
 by the copyright. It follows, there- 
 fore, as a necessary result that at the 
 expiration of the copyright any person 
 has the right to publish the copy- 
 righted book and to call it by its 
 generic name. But it may so happen, 
 as in the case at bar, that at the ex- 
 piration of the copyright the name 
 by which the book is known has also 
 acquired a secondary meaning, and 
 has come to indicate to the public 
 the book published and sold by the 
 publisher who took out the copyright. 
 In such a case, another person must 
 so use the name as to protect in- 
 dividual property rights and to pre- 
 vent injury to the public. While 
 no restrictions can be imposed upon 
 the right to use the name, such per- 
 son must, so far as is consistent with 
 
 such use, protect the good-will and 
 business of the original pubHsher and 
 guard the public against decep- 
 tion." 
 
 Merriam v. Texas Sif tings Pub. 
 Co., 49 Fed. 944; C. C. S. C, N. Y., 
 Shipman, J.: 
 
 "The plaintiffs are not entitled to 
 an exclusive use of the name ' Webster's 
 Dictionary' upon copies of editions 
 the copyrights of which have expired, 
 for the name is not a trade-mark. 
 Mere copies of the edition of 1847 
 and 1859 can be reproduced by a 
 pubUsher, over his own name, pro- 
 vided he makes no misrepresentations 
 to induce the pubUc to believe that 
 it is another book, the right to pub- 
 lish which is the exclusive property 
 of the plaintiff." 
 
 Defendant was enjoined against mis- 
 representations in its advertisements 
 calculated to deceive the public, and 
 directed to attach a printed slip to 
 each book sold, stating that it is a 
 reprint of 1847 edition, with a Ust of 
 the additions. 
 
 Court refers to Merriam v. Halloway 
 Pub. Co., 43 Fed. Eep. 450; Merriam 
 v. Famous Shoe, etc., Co., 47 Fed. Rep. 
 411; Black v. Ehrich, 44 Fed. Rep. 793. 
 See also Merriam v. Syndicate Pub. 
 Co., 207 Fed. 515; appeal dismissed, 
 237 U. S. 618. 
 
 ^'^ Investor Publishing Co. of Mass. 
 V. Dobinson, 72 Fed. 603-1896 (C. C. 
 S. D. Cal.). Plaintiff publishes "The 
 United States Investor." Defendant 
 began to pubUsh the "Investor," 
 which he stated to be pubUshed by 
 the Investor Publishing Company. 
 Injunction was granted. 
 
526 Unfair Competition in Use op Literary Property 
 
 ing, general get-up, title, etc., entirely aside from questions of 
 copyright,^'' on the book or series of books.^* 
 
 " Metzler v. Wood, 8 Ch. Div. 606- 
 1878. "Hemy's Royal Modern Tutor 
 for the Pianoforte" was published 
 by plaintiff and was a most valuable 
 work. Defendant employed Hemy 
 to revise an old work of Jousse, which 
 was published as "Hemy's New and 
 Revised Edition of Jousse's Royal 
 Standard Pianoforte Tutor." The 
 two works were similar in size and 
 form, but the color of the plaintiff's 
 work was yellow and that of the de- 
 fendant's gray. "When the defend- 
 ant came to print the cover, fair 
 trading required that the exterior 
 of the work should bear the name of 
 Jousse as the prominent word, and 
 that the name of Hemy as editor 
 should be made subordinate. * * * 
 The plmrdiff's book was no doubt 
 commonly spoken of as ' Hemy's 
 Pianoforte Tutor,' for people in speak- 
 ing of or ordering a book do not comr 
 monly use the full tide." Purchasers 
 asking for plaintiff's book had been 
 given defendant's. Held unfair com- 
 petition. Cotton, L. J., said: "Any- 
 one learning that 'Hemy's Pianoforte 
 Tutor' was the best for beginners, and 
 going into a shop where he was shown 
 the work published by the defendant 
 would naturally say: 'Oh, this is no 
 doubt it, this is Hemy's, I will take 
 it.'" (id. p. 612). 
 
 Potter V. McPherson,21 Hun (N. Y.) 
 559-1880. Since 1863, plaintiffs made 
 "Payson, Dunton and Scribner's 
 National System of Penmanship," 
 which became known as the "Na- 
 tional System of Penmanship." De- 
 fendants published "Independent 
 National System of Penmanship." 
 The name and system were never 
 copyrighted or patented. Held, "an 
 
 inspection of the books discloses the 
 facts that they are published sub- 
 stantially in the same form so 
 far as general appearance, bind- 
 ing, and color of the covers are con- 
 cerned; and upon the cover of the 
 defendants'- book the phrase 'Na- 
 tional System of Penmanship,' which 
 has long been the title of the plaintiffs' 
 publication, is printed in the same 
 manner, the same size and forms of 
 letters, and occupying the same posi- 
 tion as they do upon the cover of 
 the plaintiffs' book. The resemblance 
 of the words and letters composing 
 the phrase is as complete as it could 
 well be made and * * * the con- 
 clusion seems to be weU warranted 
 that * * * it was the result of de- 
 sign upon their part to imitate the 
 plaintiffs' book" (id. p. 565). In- 
 junction restraining use of phrase 
 "National System of Penmanship." 
 
 Mack V. Petter, L. R. 14 Eq. 431-33- 
 1872. Plaintiff published "The Birth- 
 day Scripture Text Book." Defend- 
 ant then published "The Children's 
 Birthday Text Book." Romilly, M. 
 R., held: Defendants "are not en- 
 titled to publish a work with such a 
 title, or in such a form as to binding 
 or general appearance, as to be a color- 
 able imitation of that of the plaintiff." 
 
 "Social Register Assn. v. Howard, 
 60 Fed. 270-1894 (C. C. N. J.). Com- 
 plainant published in New York, 
 from time to time, a list of names and 
 addresses of persons of social standing 
 in New York and its vicinity, including 
 Orange. This publication was en- 
 titled, and became well known as the 
 "Social Register." Held, that this 
 title would be protected as a trade- 
 mark, and that defendant would be 
 
Books and Book Titles 
 
 527 
 
 Reprints and restatements of books in other language accom- 
 panied by unfair statements to the effect that the reprint is 
 really the original, will be enjoined.^" 
 
 enjoined from applying the name 
 "Howard's Social Register" to a 
 similar list of selected persons residing 
 in Orange. 
 
 Social Register Assn. v. Murphy, 
 128 Fed. 116-1904 (C. C. R. 
 I.) (headnote): "While the words 
 'Social Register,' adopted as the title 
 of a series of books containing lists of 
 persons selected by the compiler, may, 
 in association, constitute a trade- 
 mark, neither word alone can be so 
 appropriated, and the fact that com- 
 plainant published such a book under 
 the title 'Social Register, Newport,' 
 does not entitle it to enjoin the use by 
 defendant of the title 'Newport 
 Social Index' for a similar publica- 
 tion, there being no proof that any 
 deception was intended or resulted, 
 such as to constitute unfair com- 
 petition." 
 
 G. & C. Merriam Co. v. Straits, 
 136 Fed. 477-1904 (C. C. S. D. 
 N. Y.). Complainants, publishers 
 of Webster's Dictionaries, charged 
 the defendants, although there was 
 no copjrright infringement, with un- 
 fair competition in the manner in 
 which they had used the word "Web- 
 ster's.'' "But there may be a com- 
 mercial property in books as well as 
 a literary property, and when a pub- 
 lisher has imparted to his books pe- 
 cuhar characteristics which enable the 
 public to distinguish them from other 
 books embodying the same literary 
 property, and to recognize them as 
 his particular product, there is no rea- 
 son why the principles which inter- 
 dict unfair competition in trade 
 should not afford him protection 
 against the copying of the character- 
 
 istics by rivals" (per Wallace, J., at 
 p. 479). 
 
 ^ Black V. Ehrich, 44 Fed. 793- 
 1891 (C. C. S. D. N. Y.). Complain- 
 ants published the "Encyclopaedia 
 Britannica'' in Great Britain, and 
 put it upon the American market 
 through authorized publishers. De- 
 fendant offered to the public a cheap 
 reprint of the work, with the same 
 name and the same contents, except 
 that a few articles copyrighted in the 
 United States were replaced by other 
 matter. The advertisements repre- 
 sented the work as an American re- 
 print, with certain articles rewritten, 
 and there was no evidence of an at- 
 tempt to mislead the public as to the 
 identity of the work. Held, that de- 
 fendants were at liberty to pubhsh 
 the volumes under the title "Ency- 
 clopaedia Britannica." 
 
 Harper & Bros. v. Lare, 103 Fed. 
 203-1900 (C. C. A. '3d Cir.) Com- 
 plainant published a book entitled 
 "Farthest North. Nansen," trans- 
 lated from the Norwegian original, 
 written chiefly by Dr. Nansen. De- 
 fendants subsequently published a 
 book entitled "The Fram Expedition. 
 Nansen in the Frozen World. Includ- 
 ing earlier Arctic Explorations," which 
 contained part of the same matter as 
 complainant's book, with a number 
 of similar illustrations. It differed 
 so much, however, from complain- 
 ant's book, in cover and title page, 
 that no one of ordinary intelligence 
 could mistake one for the other. No 
 deception in advertising was shown 
 on defendant's part. Held, no unfair 
 competition. 
 
 Maxwell v. Hogg, L. R. 2 Ch. 
 
528 Unfair Competition in Use of Literary Property 
 
 § 278. Unfair Competition in Connection with Plays and Play 
 Titles; — The copyright legislation enacted in the United States 
 does not afford protection to the author of a dramatic composition 
 against the use of the title selected by him by others to designate 
 a different work.*" Accordingly an injunction was denied in an ac- 
 tion brought under the statute where the relief sought was merely 
 to restrain the defendant from using a play-title where the play 
 did not present any scenes, plot or dialogue taken from plain- 
 tiff's drama nor any colorable imitation thereof.*^ Where, how- 
 ever, the title of a play has betome closely associated in the 
 mind of the public with a certain author's work, indicating his 
 work and nothing else, the courts will not permit another to 
 reap the benefits of the first user's good-will by selecting as the 
 
 App. 307-1867. Hogg, in 1863, 
 registered an intended new magazine, 
 to be called "Belgravia." He did 
 nothing further until 1866 when Max- 
 well, ignorant of what Hogg had done, 
 projected a magazine with the same 
 name, incurred considerable expense 
 in preparing it, and during August and 
 September advertised it extensively as 
 about to appear in October. Hogg 
 then hastily prepared to bring out 
 his own magazine before Maxwell's 
 could appear, and published it Septem- 
 ber 25th. Maxwell's magazine ap- 
 peared in October. Hogg had given 
 Maxwell no notice or caution prior to 
 September 25th, and had even ac- 
 cepted from Maxwell an advertise- 
 ment of Maxwell's magazine to ap- 
 pear in pubUcations of Hogg. Held, 
 that Maxwell's advertisements and 
 expenditure gave him no exclusive 
 right to use the name "Belgravia," 
 and that Hogg, on the other hand, 
 had acquired no such right by what 
 he had done, and that neither party 
 was entitled to an injunction as 
 against the other. 
 
 Estes V. Worthington, 31 Fed. 
 154-1887 (C. C. S. D. N. Y.). 
 Plaintiff was the American pub- 
 
 Usher of an annual series of ju- 
 venile books, which had for many 
 years been widely known and popu- 
 lar under the name "Chatterbox.'' 
 The books were marked by distinc- 
 tive characteristics as to cover, print- 
 ing, etc. Defendant published vari- 
 ous juvenile books bearing upon the 
 covers the title "Chatterbox," and 
 simulating in appearance and deco- 
 ration the series published by plain- 
 tiff. Held, that defendant was not 
 entitled to the use of the title for 
 such books, especially when coupled 
 with an imitation of the general ap- 
 pearance of the books. 
 
 Estes V. Leslie, 27 Fed. 22-1886 
 (C. C. S. D. N. y.). Complainants had 
 the American rights for an English 
 series of juvenile books called 
 "Chatterbox." Defendants published 
 books under the name "Frank Leslie's 
 Chatterbox," employing the same 
 method of selection and illustration, 
 square form and style of binding, and 
 vignette. Injunction granted against 
 defendants. 
 
 ^'Corbett v. Purdy, 80 Fed. 901; 
 Osgood V. Alien, 1 Holmes, 185; 18 
 Fed. Cas. No. 10,603. 
 
 " Harper v. Banous, 67 Fed. 904. 
 
Plays and Play Titles 
 
 529 
 
 title of his work the title made famous by the first user. The 
 ordinary principles of unfair competition apply to such a case, 
 equity granting injunctive relief.''^ Where the name chosen as 
 
 *^Ar<mson v. Fleckenstein, 28 Fed. 
 75. 
 
 Action to restrain the defendants 
 from producing an operetta known 
 as "Erminie." Bill alleged that the 
 complainant acquired the exclusive 
 right to produce in the United State 
 the operetta known as "Erminie"; 
 that the play was produced with great 
 success in New York by complainant, 
 and the title "Erminie" had been 
 copyrighted under the laws of the 
 United States. 
 
 That the defendant was about to 
 produce an operetta advertised as 
 "Erminie" in contravention to the 
 complainant's right. Before the com- 
 plainant acquired his rights, the songs 
 and vocal score were published in 
 England and United States with the 
 consent of the owners, but the orches- 
 tration and orchestra parts and 
 libretto of the operetta had never 
 been published. 
 
 Complainant's operetta was founded 
 upon a well-known drama, but had 
 been freely adapted. The defendant's 
 operetta was founded upon the same 
 well-known drama. The court in 
 granting an injunction said: 
 
 "I think the proof now before the 
 court shows that the name 'Erminie,' 
 as applied to an operetta, originated 
 with the authors of complainant's 
 operetta; and that, by the publication 
 of the songs and vocal score of the 
 operetta, they have not given to the 
 public the right to use the name as 
 applied to any other libretto, dialogue, 
 and orchestra parts; that the publica- 
 tion of the songs only gave to the pub- 
 lic that which was published, and 
 doe^ not authorize the use of the 
 
 name as applied to the operetta as a 
 whole. 
 
 " The case, as now made by the 
 proof, shows an attempt by defend- 
 ants to avail themselves of the reputa- 
 tion and popularity which has been 
 achieved by the operetta of Erminie, 
 as exclusively owned and produced 
 by complainant, by bringing out a 
 piece mth the same name and songs, 
 but with colorable changes in the 
 text of the dialogue and dramatic 
 arrangement. The Poulton operetta, 
 with the name of Erminie, being so 
 far an original composition as to en- 
 title it to protection as a piece of 
 literary property, the name given 
 the composition by its author, and 
 under which it has become known to 
 the public, became, as it seems to 
 me, a property right, — not strictly 
 on the principle of a trade-mark, but 
 because the name and literary com- 
 position became blended and united, 
 so that the name identifies the com- 
 position to the public, — so that the 
 name of this composition belongs to 
 this complainant as identifying and 
 describing his hterary property, and 
 as a p^rt of the piece itself, and de- 
 fendants have no right to profit by 
 using this name to the injury of the 
 complainant. 
 
 " The law is now too well settled to 
 require the citation of authorities, 
 that the playing of a dramatic com- 
 position is not such a pubUcation as 
 makes the composition public prop- 
 erty; and I think it equally clear that 
 an author who has given a particular 
 title or name to his composition is 
 entitled to have that name protected. 
 The proof shows that complainant has 
 
530 Unfair Competition in Use op Literary Property 
 
 the title of a play is a word in common use and not ordinarily 
 susceptible to exclusive appropriation it would seem that the 
 
 put his play before the public in New 
 York City, and that it has there met 
 with such approval as makes it prob- 
 able, if not certain, that the piece will 
 have a successful run in the other 
 cities and towns of this country; and 
 defendants have no right to avail 
 themselves of the merits and popu- 
 larity of complainant's play to draw 
 audiences to the performance of 
 theirs, even if, as is claimed, their 
 composition is a new and original 
 dramatic arrangement. It is a fraud 
 upon the public, as well as upon the 
 complainant, to attempt to do so." 
 
 Hopkins Amusement Co. v. Froh- 
 man, 202 111. 541. The court enjoined 
 the defendant from using the name 
 "Sheriock Holmes, Detective," in 
 connection with the production and 
 performance of a play, as infringing 
 the rights of the plaintiff, who was 
 producing a play under the name 
 "Sherlock Holmes." Justice Bogges 
 said: 
 
 "The name given to the drama 
 advertised to be performed by the 
 appellant company and that borne 
 by the play of the appellee are so 
 similar that the likeUhood is that the 
 public would be deceived to beUeve 
 that the drama of the appellant com- 
 pany was that which the appellee had 
 been producing. This likelihood of 
 deception is declared to be the test in 
 Hopkins on Unfair Trade (p. 186), and 
 the same author there remarks that in 
 applying this test all doubts are to be 
 resolved in favor of the complain- 
 ant. * * * 
 
 "The decree is to be sustained, not 
 upon the principal theory upon which 
 the appeal was framed, that the ap- 
 pellee has an exclusive property right 
 
 in the name 'Sherlock Holmes' as a 
 trade-mark, but upon the ground that 
 it appeared from the allegations of 
 the bill, independently of any of the 
 allegations with reference to the al- 
 leged trade-mark rights of the ap- 
 pellee, that the appellant company 
 adopted and used the words 'Sherlock 
 Holmes, Detective,' as the name of 
 the play intended to be produced by 
 it, in a manner calculated to deceive 
 the public and with the intent to lead 
 the pubUc to believe that it would 
 perform the drama which the appellee 
 had made well known and popular, 
 and thereby not only to deceive the 
 public but to injure the appellee.'' 
 
 Frohman v. Payton, 34 IVfisc. (N. Y.) 
 275. Motion for a^i injunction pendente 
 lite. 
 
 The plaintiff, a theatrical manager, 
 purchased the sole right to produce 
 in the United States a play entitled 
 "L'Aiglon," and caused the same to 
 be produced upon the stage, where it 
 achieved unusual success. The de- 
 fendant, the proprietor of a theatre in 
 Brooklyn, announced the production 
 of a play in his theatre entitled 
 "L'Aiglon." The court in granting 
 the relief applied for said: 
 
 "It must be inferred from the 
 moving papers that the defendant's 
 purpose in appropriating the name 
 of the plaintiff's organization to the 
 play to be produced by said de- 
 fendant is to secure to himself the 
 eclat and benefit of plaintiff's meri- 
 torious and well known advertised 
 organization a feature which gives 
 rise to equitable relief. The question 
 'What's in a Name?' has been an- 
 swered by the courts in many well 
 considered cases, wherein the exclu- 
 
Plays and Play Titles 
 
 531 
 
 sive right to a name possessed or 
 owned by a successful business enter- 
 prise has been maintained against 
 imitators, and wrongdoers, who sought 
 by an unauthorized use to deceive 
 the pubUc and profit by the wrong." 
 
 Frohman v. Morris, Inc., 68 Misc. 
 (N.Y.)461. Motion for an injunction 
 pendente lite. 
 
 The plaintiffs acquired from the 
 author the sole rights to produce the 
 play "Chantecler" in EngUsh in the 
 United States. The play was copy- 
 righted in the United States in April, 
 1910. The play was first produced 
 in Paris, France, in 1910. For several 
 years prior to its first production, the 
 title and subject-matter, particularly 
 the fact that every character was to 
 represent a barnyard fowl or animal 
 had been published and announced. 
 In August, 1909, a dramatic piece in 
 the nature of a burlesque was pro- 
 duced in Paris under the name " Chan- 
 ticlair." The defendant acquired by 
 purchase the sole right to produce 
 "Chanticlair" in the United States. 
 Upon the argument the plaintiffs 
 withdrew their demand for an injunc- 
 tion against the continued perform- 
 ance of the piece itseii, but they insist 
 that the defendant should be en- 
 joined from producing it under the 
 name "Chanticlair." Gibgbeich, J., 
 said: 
 
 "I base my conclusion that an in- 
 junction should issue upon the ground 
 that upon the situation shown in the 
 affidavits, the pubhc will be deceived 
 and misled if two performances under 
 the same name, each having as its 
 characters barnyard animals, are pro- 
 duced simultaneously in this city. 
 It may be, as stated in the opposing 
 affidavits, that the character of the 
 two performances is wholly different, 
 the one being serious and artistic. 
 
 while the other is a burlesque; and it 
 is also doubtless true that no one in- 
 tending to witness the plaintiffs' play 
 could possibly mistake the defend- 
 ants' performance for it. But this 
 power to distinguish would not save 
 the playgoer who had gotten into the 
 wrong theatre. His money would 
 have been paid and his evening would 
 have been irretrievably lost. It is 
 manifest also that confusion and 
 errors would arise in ordering and pur- 
 chasing tickets in advance, and that 
 great vexation, inconvenience and 
 loss would come to the general public 
 from the concurrent production of 
 two such plays under the same name. 
 On behalf of the defendants it is ar- 
 gued that the first actual production 
 of the play under the name in ques- 
 tion was made by persons in Europe, 
 from whom the defendants have ob- 
 tained their right; but I cannot regard 
 this circumstance as conclusive upon 
 the rights of the parties. At the time 
 such production was made and for 
 months and years before that, the 
 fact that Mr. Rostand had written 
 a play under this title and was about 
 to produce it, and the general charac- 
 ter and plan of the play had become 
 well known to the public in Europe 
 and elsewhere; and, owing to the 
 eminence of the playwright and the 
 success of his former productions and 
 the unique character of his latest ef- 
 fort, the interest in the forthcoming 
 performance was widespread and in- 
 tense. No claim is made in the op- 
 posing affidavits that the title 
 'Chanticlair' was not adopted by the 
 author of the defendants' play with 
 full knowledge of what Mr. Rostand 
 had done. Under such circumstances 
 I do not think it should be held that 
 the one who was prior in time in ac- 
 tually producing something upon the 
 
532 Unfair Competition in Use of Literary Property 
 
 fraud of the person subsequently appropriating the title should 
 be clearly shown to entitle a person to an injunction.*' Mere 
 similarity in titles of plays is not sufficient ground for granting 
 reUef ; the similarity must be so great that the ordinary person 
 will be deceived.** 
 
 A motion picture production is so closely related to the spoken 
 stage is stronger in right. In equity right for three years to produce within 
 
 the right belongs to the eminent author 
 whose talent and reputation created 
 the extraordinary interest of which 
 the defendants and their assignors 
 have sought to reap the benefit." 
 
 *^ Isaacs V. Daly, 39 N. Y. Superior 
 Ct. 611. 
 
 Plaintiff copyrighted a play called 
 " Charity " in Dec, 1873. In January, 
 1874, defendant bought an entirely 
 different play also called "Charity." 
 
 In denying a motion for an injunc- 
 tion, Curtis, J., said: 
 
 "It is not alleged that there has 
 been any bad faith on either side. 
 The complication appears to be purely 
 accidental." * * * 
 
 " The law favors literature and art, 
 and while it seeks to protect all in the 
 enjoyment of their property and their 
 rights, it does not Umit and abridge 
 the field of occupation and enterprise. 
 The use of the word 'Charity' as a 
 designation for any work of art or 
 Uterature can not ordinarily be monop- 
 ohzed by any one person. There may 
 be occasions when a title is made use 
 of in bad faith, or to promote some 
 imposition, or to inflict a wrong, when 
 a court of justice should interfere to 
 prevent its use, or to compensate a 
 party who has in consequence sus- 
 tained an injury. But the present 
 case does not appear to be one where 
 the court is called upon to interfere 
 for any of these reasons." 
 
 "Frohman v. Miller, 8 Misc. 
 379. 
 
 The plaintiff acquired the exclusive 
 
 the United States and Canada a play 
 called "Charley's Aunt." In calling 
 the attention of the public to it he 
 used a picture of a laughing cat. The 
 defendant produced a play in New 
 York entitled "Charley's Uncle," and 
 advertised the same by means of 
 posters and display sheets in imitation 
 of the manner and style in which 
 "Charley's Aunt" had been adver- 
 tised. In place of a cat the defendant 
 inserted an owl. 
 
 The court refused an injunction 
 restraining the defendant, and said: 
 "While there is no doubt as to the 
 power of the court to enjoin the use 
 of a title calculated to deceive the 
 public into the belief that the defend- 
 ants were performing the plaintiff's 
 play, the question is whether the 
 title 'Charley's Unele' is so similar to 
 'Charley's Aunt' as to induce the 
 public to take the former for the latter. 
 * * * It cannot be urged that 
 the plaintiff, even if he had copy- 
 righted the title 'Charley's Aunt,' 
 could have extended his right to liter- 
 ary protection to all the relatives of 
 Charley's family, for it must have 
 been known to the plaintiff that this 
 Charley, like every other individual, 
 was apt not only to have aunts, but 
 uncles, brothers, sisters, cousins, and 
 perhaps a mother-in-law and a grand- 
 father. Nor would it be seriously 
 contended that by adopting 'Charley's 
 Aunt' as the title to this play he 
 monopolized the right to all the other 
 relatives." 
 
Plays and Play Titles 
 
 533 
 
 drama that in a proper ca^e an injunction will lie restraining the 
 producer of a photo-play from assuming the title of a well-known 
 drama for use in connection with his photo-play.*^ 
 
 A similar case has arisen in France where it was held that the 
 title of a drama, "Les Deux Gosses" could not be used for a 
 photo-play, even though it had no point of resemblance with 
 the drama. *^" 
 
 Where two authors make separate dramatizations of an un- 
 
 " Paul Dickey v. Mutual Film Cor- 
 poration, 160 N. Y. Sup. 609 (1916), 
 6 Trade Mark Rep. 423. Action for 
 injunction and accounting. Plain- 
 tiff, a dramatic writer, wrote a one- 
 act play called "The Come-Back" 
 which was ,produced in 1911. In 
 June, 1915, the defendant pro- 
 duced a photo-play entitled "The 
 Come-Back." The story of the play 
 and photo-play were not similar, the 
 sole similarity being in the title. 
 
 The court granted the relief de- 
 manded, saying: 
 
 "I- shall hold that although not 
 now actually being produced, plain- 
 tiff's play is sufficiently of value to 
 be the subject of loss from competi- 
 tion, and that the name 'The Come- 
 Back' is not descriptive but fanciful, 
 and therefore subject in a proper 
 case to the protection of an equity 
 court. In the first place I do not 
 think that the prior copyright of two 
 dramatic compositions under a similar 
 name affects plaintiff's rights. The 
 title not being subject to copyright, 
 its use is protected under the equi- 
 table rule applicable to trade-marks; 
 that is, priority of actual use gives 
 priority of right to use and to protec- 
 tion. {Columbia Mill Co. v. Akom, 
 150 U. S. 460, 463.) Defendant's 
 chief defense is that the case is merely 
 one of coincidence, and that not every 
 ease of coincidence is unfair competi- 
 tion, at least in the absence of fraudu- 
 
 lent intent. I do not think that 
 fraudulent intent is involved in this 
 case. It is true that coincidence in 
 title is not per se unfair competition, 
 as witness numerous cases cited by 
 the defendant, beginning with the 
 Apthorp case, Astor v. West 82d St. 
 Realty Co. (167 App. Div. 273). 
 These cases, as I read them, are de- 
 cided on the ground that no competi- 
 tion exists." 
 
 Klaw V. General Film Co., 154 
 N. Y. Supp. 988-1915. 
 
 The plaintiffs produced a play 
 under the title "A Fool There Was" 
 with great success. Large sums of 
 money were expended for hiring actors 
 and actresses, equipping the play and 
 advertising it. After the play ac- 
 quired a reputation the defendant 
 produced a photo-play under the 
 same title. 
 
 The court held the plaintiffs estab- 
 lished and acquired an exclusive pro- 
 prietary right as a trade name and 
 trade-mark in the words "A Fool 
 There Was" as a title ii connection 
 with their play, and were entitled to 
 a permanent injunction restraining 
 the defendant from the continuance 
 of the infringement and impairment 
 of their right to such trade-mark or 
 trade name. 
 
 "" Pouillet: "Trait6 des Marques de 
 Fabrique" 1247 (Trib. civ. Seine, 27 
 d^c. 1906, Decourcelle, Gaz. Trib., 26 
 f6v 1907). 
 
534 Unfair Competition in Use of Literary Property 
 
 copyrighted novel each has the right to entitle his play from the 
 story from which the plays were taken, particularly if each author 
 makes public announcement that he is the author of his play.^* 
 
 The author or proprietor of a dramatic composition which is 
 produced by well-known actors, cannot restrain other actors 
 from imitating in public the postures and dances of the actors of 
 his production/' 
 
 *' Glaser v. St. Elmo Co., 175 Fed. 
 276. 
 
 Augusta J. Evans wrote a novel 
 which she named "St. Ehno," and 
 for which a copyright was taken out. 
 Just before the expiration of the copy- 
 right of the novel, a dramatization of 
 the novel was made, and a copyright 
 procured for the play under the same 
 title as the novel " St. Elmo." On 
 the expiration of the copyright of the 
 novel, the defendant Neil Twomey 
 wrote a play based on the incidents 
 of the novel and called it "St. Elmo." 
 This was a motion for a preliminary 
 injunction to restrain the production 
 of the defendant's play under the 
 name "St. Elmo." It was held that 
 the preliminary injunction should be 
 denied. 
 
 "It is claimed by the complain- 
 ants in this case that the defend- 
 ants' adoption of the title "St. 
 Elmo" for their play, and their pro- 
 duction of the play with such a title, 
 constitutes unfair competition in trade, 
 but I doubt whether this doctrine 
 applies in the case of plays made 
 from novels the copyright of which has 
 expired. Suppose that two plays were 
 written based on an old novel, for in- 
 stance, Don Quixote, or Clarissa Har- 
 low, or Quentin Durward, and that 
 both such plays were given the title 
 of the story from which they were 
 taken. Would not the author of 
 each play have the right to give his 
 play the name of the novel on which 
 
 it was based, particularly if each made 
 proper public announcement that he 
 was the author of that play? * * * 
 In this case upon all the advertise- 
 ments and notices of their play put 
 out by the defendants, they pub- 
 lished the fact that it was written 
 by Neil Twomey, and I think that 
 the proof shows that if the principle 
 announced in the case of Singer Mfg. 
 Co. V. June Mfg. Co., is appUcable 
 to the case of a copjTight, the rule 
 there laid down has been complied 
 with by the defendants." 
 
 " Savage v. Hoffman, 159 Fed. Rep. 
 584. On motion to continue the re- 
 straining order. 
 
 The complainant alleged that he 
 owned the exclusive right of produc- 
 ing an opera under the title "The 
 Merry Widow," and was producing 
 the same. It was shown that the 
 defendants were giving a series of 
 imitations in a vaudeville perform- 
 ance, one of which consisted of the 
 defendant and her assistant dancing 
 in imitation of two of the characters 
 in the complainant's production. 
 Waed, C. J., said: 
 
 "The complainant asks that the 
 defendant be restrained from imitat- 
 ing the postures of BarbaneU and 
 Brian, from singing the song called 
 'Maxim's,' and from using the or- 
 chestration of 'The Merry Widow.' 
 Obviously the complainant has no 
 literary property in the manner in 
 which BarbaneU and Brian dance or 
 
Names of Newspapers and Magazines 
 
 535 
 
 The publication or production of a play by one not entitled to 
 use its name or its subject-matter will be enjoined on the 
 ground that both the rightful owner and the public are entitled 
 to protection against spurious plays, viz., which are represented 
 to be what they are not/* 
 
 § 279. Names of Newspapers and Magazines. — Most of the 
 litigation involving title to newspaper names arises because of 
 the fact that the full name of a paper is seldom used in speaking 
 of it. "The New York Evening Post " and "The Saturday Even- 
 ing Post" are referred to merely as "The Post." In London 
 and New York "The Times" is well known, yet the person using 
 the term in one city does not mean what is commonly meant by 
 the same name in the other city. The "London Times" could 
 not restrain the pubUshing of a "Newcastle Times" or a "Bristol 
 Times" in those towns. Yet it could doubtless restrain a rival 
 from setting up, at London, a competing paper as "The London 
 Morning Times." For instance, to start "The Grocer" when the 
 "American Grocer" was being published and was commonly 
 known as "The Grocer" was held unfair.^' 
 
 posture. They, if any one, have 
 the right to complain. The manner 
 and method of every dancer and 
 actor is individual, and utterly unlike 
 the railroad scene, which was held 
 the subject of literary property in 
 Daly v. Palmer, 6 Blatchf. 256, Fed. 
 Cas. No. 3,552." 
 
 *' Hopkins Amusement Co. v. Froh- 
 man, 103 111. App. 613-1902. 
 
 ^' Amxrimn Grocer Publishing Assn. 
 V. The Grocer Publishing Co., 25 Hun 
 (N. Y.), 398-1881. Plaintiff for many 
 years had published the "American 
 Grocer," which was known commonly 
 as the "Grocer." In 1875, its editor 
 resigned and started "The Grocer" 
 on the same block in New York on 
 same side of the street. Later the 
 plaintiff moved and the defendant did 
 likewise, to the same block as plaintiff 
 again. Held that decision below re- 
 fusing injunction was error. 
 
 Walter v. Emmot, 54 L. J. (Ch.) N. S. 
 
 1059-1885. "The Evening Mail" be- 
 gan to be published in 1789, and in 
 1868 the name was changed to "The 
 Mail." The defendant began to pub- 
 lish "The Morning Mail" in 1885. 
 Plaintiff alleged that defendant's paper 
 would soon become "The Mail," and 
 had already begun to be so called, and 
 hence the public would be misled to 
 the injury of plaintiff. Evidence of 
 letters and business intended for 
 plaintiff, which had gone to defend- 
 ant, was admitted, and other evidence 
 of confusion. Held: "It is not a ques- 
 tion of property; it is the question 
 whether what has been done by the 
 defendant is in reason calculated to 
 induce people to take his goods as 
 those of the plaintiff, or, in other 
 words, to pass off his goods, whatever 
 they may be, as the goods of the 
 plaintiff" (id. p. 1061). Lord Lindley 
 said: "The name of a paper is a very 
 valuable property. There is no doubt 
 
536 Unfair Competition in Use of Literary Property 
 
 The rules which apply to such cases are very similar to those 
 applied to others spoken of in connection with trade names; and 
 
 about that; but it is property of a very 
 peculiar kind. The owner of a news- 
 paper has not a copyright in the name, 
 and what is quite as important in a 
 legal point of view as the name, is that 
 to which the name is annexed and 
 which that name denotes. Take the 
 expression 'The Mail' or 'The Times,' 
 there is no copyright in that expres- 
 sion, and the same words may be used 
 with perfect impunity with reference 
 to other matters, or in other places 
 where there is no possibility of infring- 
 ing anything like a trade-mark." 
 
 Clement v. Maddick, 5 Jur. N. S. 592- 
 1859. The proprietor of "Bell's Life in 
 London and Sporting Chronicle" ob- 
 tained an injunction restraining the 
 proprietors of the "Penny Bell's Life 
 and Sporting News" from using any 
 title which included "Bell's Life," by 
 which name the complainant's paper 
 was known familiarly. "Suburban 
 Life," a magazine published at New 
 York and circulating in Philadelphia, 
 was protected by injunction against 
 "Philadelphia Suburban Life," a sim- 
 ilar magazine afterwards published, 
 there being a close resemblance in the 
 general appearance of the two maga- 
 zines. Suburban Press Y. Philadelpkia 
 Suburban Pubg. Co., 227 Pa. 148-1910. 
 
 Commercial Advertiser Assn. v. 
 Haynes, 49 N. Y. Supp. 938-1898 
 (headnote): "A newspaper will not 
 be restrained from using the name 
 'New York Commercial,' in con- 
 nection with a vignette between 
 the words 'York' and 'Commercial' 
 and with another title in conspicuous 
 letters immediately beneath the name, 
 because of its similarity to the name of 
 a newspaper, ' The Commercial Adver- 
 tiser,' where the type and arrange- 
 
 ment are dissimilar; where one is an 
 evening paper, devoted to general 
 news, and the other is a morning 
 paper, which confines itself to com- 
 mercial, financial, and shipping news, 
 and the price is different; where the 
 only evidence of injury is that or- 
 ders for advertising intended for 
 plaintiff are frequently addressed to 
 the 'Commercial,' and that other pa- 
 pers in quoting from plaintiff's paper 
 frequently give credit to the 'New 
 York Commercial;' and where the 
 only evidence of injury consists in 
 expressions of opinion, which are 
 controverted by other witnesses, — 
 since the facts do not justify the con- 
 clusion that the use of the name by 
 the defendant is calculated to deceive 
 any purchaser or advertiser of com- 
 mon intelligence." 
 
 Bell v. Locke, 8 Paige (N. Y.), 
 74^1840. Plaintiff published a paper 
 entitled the "Democratic Republi- 
 can New Era." Defendant had 
 formerly been associated with plain- 
 tiff in the issue of a paper 
 called the "New Era," but its pub- 
 lication for more than a year and a 
 half had been discontinued. De- 
 fendant now began to publish a paper 
 called the "New Era, revived by 
 Richard Adams Locke, its original 
 editor." The device or emblem at 
 the head of defendant's paper dif- 
 fered considerably from that on the 
 plaintiff's paper. Held, that there was 
 no such probability of deception as to 
 entitle plaintiff to restrain defendant 
 from publishing his paper under the 
 title "New Era." 
 
 Forney v. Engineering News Pub- 
 lishing Co., 10 N. Y. Supp. 814- 
 1890. Plaintiff published a monthly 
 
Names of Newspapers and Magazines 
 
 537 
 
 periodical of limited circulation 
 called "The Railroad and Engi- 
 neering Journal," resulting from the 
 consoUdation of the two period- 
 icals, one of which was known as "The 
 American Railroad Journal." Plain- 
 tiff's periodical was sometimes called 
 "Forney's Railroad Journal." De- 
 fendant published a weekly periodical 
 which, after several changes, was 
 called "Engineering News & American 
 Railway Journal." The abbreviated 
 title "Engineering News" was used on 
 letter-heads and was the title by which 
 the paper was ordinarily known. Held, 
 that in the absence of evidence that 
 actual confusion resulted, plaintiff 
 was not entitled to restrain defendant 
 from using the words "Railway 
 Journal." 
 
 Borthvrick v. Evening Post, 37 Ch. 
 Div. 449-1888. Plaintiff owned 
 the "Morning Post"; defendant 
 the " Evening Post." Action brought 
 to restrain defendant from the use 
 of the word "Post" or any title of 
 which that word formed a part. The 
 papers were different in many respects. 
 Defendant gave evidence that the 
 word "Post" had been appUed to 
 newspapers frequently in the past in 
 England. The " Morning Post " was 
 established in 1772. There was 
 evidence of several cases of actual 
 deception. Perpetual injunction 
 granted restraining the defendant 
 from using the words "Evening 
 Post." On appeal, this judgment was 
 reversed, the court holding that they 
 are asked to draw the inference that 
 the defendant assumed the name 
 "Post" with the intention of obtain- 
 ir^ part of the trade of the plaintiff 
 from the fact that there have been ap- 
 plications to the " Morning Post " for 
 twenty copies of the " Evening Post," 
 but there is no evidence that a single 
 
 copy less of the " Morning Post " has 
 been sold by reason of the defendant's 
 action. Held, that this was not 
 enough to warrant the interference of 
 the court. The court also put its 
 decision on the ground that the two 
 papers were not competing papers, 
 inasmuch as one was a morning and 
 the other an evening paper; that the 
 get-up of the papers were different, 
 and the court should be satisfied that 
 the pocket of the plaintiff will be 
 injured before they granted an in- 
 junction. 
 
 In Gannett v. Ruppert, 119 Fed. 
 221 (reversed on facts, 127 Fed. 962), 
 Hazel, C. J., said: 
 
 "It has been repeatedly held by 
 the Courts of the United States, and 
 of the State of New York, that there 
 is a property right in a name which 
 may be protected by a court of equity. 
 Complainant is entitled to his trade- 
 name as appUed to his periodical, and 
 may avail himself of the same reme- 
 dies to enforce his rights that are open 
 to a tradesman whose goods have 
 become distinctively known to the 
 pubUc by the use of a technical mark 
 or name which differentiates them 
 from the goods of another of like 
 kind. Sebastian,Trade-Marks,Fourth 
 Ed. 291. The foundation of com- 
 plainant's claim lies in priority of 
 appropriation, and exclusive right 
 to a trade name as applied to a publi- 
 cation. A trade-mark as applied to 
 a periodical or pubUcation is some- 
 what different from a mark, name or 
 symbol, by which the products of a 
 particular merchant may become 
 known. Names, however, which are 
 ordinarily used to make periodicals, 
 magazines and newspapers known to 
 the public, are governed by the same 
 general principles which apply to a* 
 trade-mark actually affixed to an 
 
538 Unfair Competition in Use of Literary Propertt 
 
 the use of such names will be forbidden or regulated where decep- 
 tion or the likehhood of fraud is shown.^" 
 
 The same may be said also of pubUcations other than news-, 
 papers, such as magazines, sheet music and music-books, series 
 of books, encyclopedias, dictionaries, directories, and the hke. 
 
 Newspapers and other periodicals possess individuahty and 
 have pecuUar traits which are of value to them just as persons 
 have individuality. Each has a name which may be a fanciful 
 one devised especially for it or it may be a combination of common 
 words of the language. In either case, it is of prime and essential 
 importance to the paper that its identity be not lost, that it be 
 
 article of manufacture and sale, and 
 adopted to denote origin and owner- 
 ship. A court of equity will inter- 
 pose to protect such rights whenever 
 damages are caused by the infringe- 
 ment. (Citing cases.) Such names 
 * * * when applied to newspapers 
 and periodicals have been held not to 
 be infringed because the right to 
 the use of the name was invoked 
 without proof of deception or injury 
 to the original user of the name." 
 
 S. T. Taylor Co. v. Nast, 154 N. Y. 
 Supp. 982. 
 
 Motion for an injunction •pendente 
 lite. Plaintiff had long published a 
 fashion magazine under the title 
 "Bon Ton" which term acquired a 
 special and unusual meaning as re- 
 lated to plaintiff's magazine desig- 
 nating plaintiff's periodical. The de- 
 fendant undertook to publish a fashion 
 magazine, different in size, form and 
 type under the title "Gazette du 
 Bon Ton," but the words "Bon Ton," 
 were used in such a manner as to fix- 
 the identity of the magazine by that 
 title. 
 
 Philbin, J., said in granting an 
 injunction: 
 
 "In view of the fact that the 
 physical characteristics of the two 
 publications, except in so far as the 
 
 use oLthe words 'Bon Ton' is con- 
 cerned, are totally dissimilar, it may 
 be questioned whether there has been 
 sufficient proof given from which a 
 fraudulent intent upon the defend- 
 ant's part could be inferred. While 
 the fact that the defendant is engaged 
 in the publishing business, occupying 
 in many respects a field similar to 
 that occupied by the plaintff, would 
 justify such an inference, it is not 
 necessary to rest whatever right the 
 plaintiff has upon that theory. If 
 the plaintiff has acquired the right to 
 a trade-mark in the words 'Bon Ton,' 
 as I think has been clearly shown, it 
 is entitled to the relief sought. Gaines 
 v. Leslie, 25 Misc. Rep. 20; 54 N. Y. 
 Supp. 421. Under such circumstances, 
 it is not necessary to establish fraudu- 
 lent intent." (Citing eases.) 
 
 =" Robertson v. Berry & Co., 50 Md. 
 591-1878. A pubUcation is property 
 and there is no reason why it should 
 not be the subject of the law's pro- 
 tection. To put out a colorable simu- 
 lation of it, which may mislead the 
 public into supposing that it is the 
 literary article they had in mind to 
 obtain and read, is an act of de- 
 ception which injures the publishers. 
 Munro v. Tousey, 129 N. Y. 38- 
 1891; 29 N. E. 9; 14 L. R. A. 245. 
 
Names of Newspapers and Magazines 
 
 539 
 
 not confused with any other paper. The "New York Sun" 
 strives for and possesses a real individuality. A paper has 
 principles, it has a creed, it has a history, a past good or bad, 
 which it must Uve up to or live down. In the one case it is im- 
 portant to its owners that it shall not lose its identity and in the 
 other it is of importance to the community that it be known for 
 itself and be prevented from masking under the name of a more 
 respectable neighbor." 
 
 Mr. Browne, in his treatise upon Trade-Marks, sections 415 
 to 418, presents a very interesting synopsis of some French cases. 
 In one of them, the plaintiff's journal, the "Moniteur Universel" 
 had become known as the "Moniteur." The defendant's paper 
 adopted the title "Moniteur Officiel" of the French Empire. 
 
 ^^MaiseU v. Flanagan, 2 Abb. Pr. 
 N. S. (N. Y.) 459-1867 (Com. PL). 
 Plaintiffs published the "National 
 Police Gazette," which was commonly 
 known as the "Police Gazette." The 
 defendants published a paper which 
 was an imitation of the plaintiff's pa- 
 per, with nearly the same title and 
 device, called "The U. S. PoUce 
 Gazette." Held, that the doctrine 
 that trade-marks shall not be simu^ 
 lated rests upon the broad principle 
 of protection of the public. "A news- 
 paper establishment is not excluded 
 from the advantage of these rules. 
 It is a species of property, and the 
 rights which appertain to it, so far 
 as they are private and exclusive, are 
 entitled to the protection of the laws. 
 Snowden v. Noah, 1 Hopk. (N. Y.) 351- 
 1825; Bell v. Locke, 8 Paige (N. Y.), 
 74-1840. "The title of a newspaper 
 may be a purely original one, and the 
 proprietor for that reason entitled to 
 its exclusive use. He may create a 
 word, or combination of words, for 
 the particular designation of his pa- 
 per, and in that way acquire an ex- 
 clusive right to the use of the name 
 employed. He may combine, as the 
 plaintiffs have, well-known English 
 
 words in common use, to designate 
 his paper, and its contents may in 
 many respects be multiplied by pub- 
 lication in other prints,, but the pa- 
 per will, nevertheless, be original in 
 some, if not in many, respects. The 
 individualities of editorial life are as 
 i-arely duplicated as those displayed 
 in other pursuits; and the intellectual 
 vigor distinguishing the character 
 and value of different prints, though 
 equal in power, will be essentially 
 different in thought, — in the prin- 
 ciples announced and advocated, and 
 in the reasoning by which the same 
 theories are advanced and sought to 
 be established. A newspaper in its 
 commanding elements is the result of 
 mental labor, and should be pro- 
 tected to the same extent, at least 
 in the use of symbols, names, and 
 marks, as any other property. It 
 may be that, as it changes from day 
 to day or week to week, and is more 
 or less re-created by each publica- 
 tion, becoming as it were the mirror 
 as well as the chronicler of the times, 
 it is better entitled to such protection 
 by reason of its multiplied original- 
 ity." 
 
540 Unfair Competition in Use of Literary Property 
 
 It was held, that the title of a journal is property, and the use 
 of the word Moniteur, either singly or with the qualifications 
 "Officiel," was enjoined for the reason that it incontestably ap- 
 peared that the "Moniteur Universel," whether as a daily, 
 political, and literary sheet, or, as an historical collection, had 
 always been known by the simple title "Moniteur." In another 
 case in which the plaintiff published "La Presse," "La Presse 
 Libre" was enjoined, although the papers belonged to differ- 
 ent political parties and addressed themselves to different classes 
 of readers. 
 
 In another case, the defendants having adopted the title "Petit 
 Journal," which was the title of the paper published by the 
 plaintiffs, added the words "de la Somme" which were printed 
 in smaller characters. The judgment declares that the title of a 
 journal is the exclusive property of its founder, and to give to a 
 new journal the title already belonging to another would be a 
 usurpation of property, and consequently an act of an unlawful 
 competition. An injunction was therefore granted forbid- 
 ding the further use by the defendants of the title "Petit 
 Journal." 
 
 The locahty in which a paper or magazine is circulated is an 
 important element in determining the rights of the parties to 
 the name of it. Two papers may have identical names and no 
 loss results, if they do not reach the same territory and are not 
 read in the same communities. In a recent case of this sort, the 
 difference in size, appearance, price, lack of proven intent and 
 difference in locality formed the basis for a refusal of injimction by 
 the court.^^ 
 
 " Investor Pvblishing Co. of Mass. that such injury has actually oc- 
 
 V. Dobinson, 82 Fed. 56-1897 (C. C. curred. 
 
 S. D. Cal.). A corporation is not Gannett v. Rupert, 127 Fed. 
 entitled to an injunction restraining 962-1904 (C. C. A. 2d Cir.), re- 
 another corporation from publishing versing 119 Fed. 221. Complain- 
 a periodical bearing a name similar ant, publishing a monthly family 
 to its own publication where the two magazine of wide circulation entitled 
 periodicals are published in distant "Comfort," held entitled to an in- 
 states, and the names are used with junction against the publication of 
 distinguishing characteristics which a monthly paper under the title of 
 render injury to complainant im- "Home Comfort," which covered a 
 probable, in the absence of proof somewhat similar field, and circulated, 
 
 in part at least, in the same territoiy. 
 
Comic Strips 
 
 541 
 
 § 280. Comic Strips. — The originator or publisher of a series of 
 grotesque drawings, commonly called "comic strips," published 
 in newspapers, which become well known under a certain title, is 
 protected under the principles of unfair competition against in- 
 fringement of his title. ^^ Protection may also be accorded under 
 the law of trade-marks.^^ But when no copyright has been ob- 
 tained and no title is acquired in the name under which the draw- 
 ings are published, the originator or publisher cannot prevent 
 others from representing the same characters in different scenes 
 and incidents.'^ If during the period of publication the title of 
 the drawings indicates the work of the individual artist rather 
 than the supplement of the newspaper in which the drawings 
 have been published, the artist may subsequently publish similar 
 
 " Ovtcault V. Lamar, 135 App. Div. 
 110. Laughlin, J., said: 
 
 "The theory of the complaint is 
 that the cartoonist invented this 
 title and these names, and that he 
 and his associates were the first to 
 use them in connection with a public 
 play, and that a court of equity 
 should protect them in that use upon 
 the principles upon which trade names 
 and trade-marks are protected by 
 the courts, notwithstanding the fact 
 that they are used in connection with 
 a copyright or a patent. * * * 
 
 It seems quite clear, therefore, that 
 the complaint presented a case of 
 which the courts of this State have 
 jurisdiction and over which the Fed- 
 eral courts have no jurisdiction, ex- 
 cepting upon appropriate allegations 
 of diversity of citizenship which 
 would be a ground for removing the 
 case from the State court, but not 
 for the State court to decline juris- 
 diction." 
 
 " New York Herald Co. v. Star Co., 
 146 Fed. 204, aff'd 146 Fed. 1023. 
 Motion for a preliminary injunction. 
 Suit to restrain the infringement of a 
 trade-mark. 
 ^ An injunction pendente lite was is- 
 
 sued restraining the use of the trade- 
 mark "Buster Brown" either in news- 
 paper or advertising matter, so as to 
 indicate or imply that the defendant 
 was about to publish a "Buster Brown 
 Comic Section." 
 
 ^^Outcault V. New York Herald, 
 146 Fed. 205. Motion for preliminary 
 injunction. Lacombe, C. J., said: 
 
 "The contention of complainant 
 is that it is unfair competition in trade 
 for any one else to draw and offer for 
 sale any other pictures in which, al- 
 though the scenes and incidents are 
 different, some of the characters are 
 imitations of those which appeared in 
 the earlier pictures which complainant 
 sold to defendant. In other words, 
 that deponent, although he never 
 copyrighted them and did not ac- 
 quire any right to the title in connec- 
 tion with newspaper publication, has, 
 nevertheless, some common-law title 
 to individual figures therein displayed, 
 which he can maintain to the exclu- 
 sion of others, who depict them in 
 other scenes and situations. It is 
 sufficient to say that no authority is 
 cited supporting this proposition, 
 which seems entirely novel and does 
 not commend itself as sound." 
 
642 Unpaie Competition in Use of Literary Property 
 
 drawings in another newspaper without being guilty of unfair 
 competition.^® 
 
 " Star Co. V. Wheeler Syndicate, Inc., 
 91 Misc. (N. Y.) 640-1915. Motion 
 to vacate a preliminary injunction. 
 Motion granted. 
 
 The plaintiff sought an injunction 
 to restrain the defendant from using 
 the words "Mutt and Jeff" in con- 
 nection with cartoons designated as 
 "comic strips," which are claimed to 
 constitute comic sections of news- 
 papers. 
 
 Fisher, in 1907, originated certain 
 comic drawings containing grotesque 
 figures known as "Mutt and Jeff," 
 and published the same in newspapers 
 in San Francisco. These drawings 
 were copyrighted by Fisher. In 1910, 
 Fisher entered into an agreement with 
 the plaintiff to devote his entire time 
 and energy to the plaintiff, and the 
 publications in which William R. 
 Hearst was interested. Subsequently 
 in 1910, Fisher copyrighted in book 
 "form some of the cartoons thereto- 
 fore published under the title "The 
 Mutt and Jeff Cartoons, by Bud 
 Fisher." A second book was pub- 
 lished under the same name in 1911. 
 These books were also copyrighted. 
 In 1914, Fisher applied for registra- 
 tion of the title "Mutt and Jeff" as 
 a trade-mark for a series of cartoons, 
 and registration was granted in 
 March, 1915. Prior to December, 
 1914, the cartoons were published 
 under titles furnished by Fisher, with 
 the words "By Bud Fisher." The 
 words "Mutt and Jeff" had never 
 been used in the newspaper as a title. 
 Subsequently the plaintiff published 
 certain of these drawings under the 
 name " Mutt and Jeff." Weeks, J., 
 said: 
 
 "The distinctive title 'Mutt and 
 
 Jeff' was first applied to the cartoons 
 by the artist when he cop3rrighted 
 'The Mutt and Jeff Cartoons, by 
 Bud Fisher,' and the Star Company 
 never applied the title to any car- 
 toons published and sold by it until 
 December 11, 1914, and even then 
 such title was not used upon its 
 syndicated pictures, and during the 
 entire period, down to and including 
 the pubUcation of January or Febru- 
 ary, 1915, hereafter referred to, the 
 captions or titles of the cartoons were 
 invariably followed by the words 'By 
 Bud Fisher.' * * * 
 
 "It is apparent, therefore, that in 
 the present case the question is not 
 so much one of trade-mark infringe- 
 ment as one of unfair competition and 
 the right to acquire a trade-mark in 
 a name previously selected by an- 
 other as the title to a copsrighted 
 work. * * * 
 
 "In the case at bar registration of 
 'Mutt and Jeff' as a trade-mark is 
 in the name of Fisher, and the plain- 
 tiff has not shown such a clear right 
 in itself to the trade-mark as to over- 
 come this presumption of ownership 
 in Fisher. * * * 
 
 "The reputation acquired for these 
 cartoons was not a reputation estab- 
 lished in the market for a comic strip 
 manufactured and produced by the 
 Star Company and to which it had 
 attached the mark or device of ' Mutt 
 and Jeff' in order to distinguish it 
 from a like class of merchandise pro- 
 duced by others. It was rather a 
 reputation established in the market 
 for a comic strip containing the gro- 
 tesque figures of 'Mutt and Jeff, by 
 " Bud" Fisher.' 
 
 "The designation of authorship 
 
Use of an Author's Name 
 
 543 
 
 § 281. Use of an Author's Name. — Any person may republish 
 an uncopyrighted literary production and use in connection there- 
 with the name of the author. The fact that the work was first 
 pubUshed under a pseudonym does not enlarge the . author's 
 rights. Adoption of a pseudonym will not defeat the well-settled 
 rules of law that "publication of a literary work without copy- 
 right is a dedication to the public, after which anyone can re- 
 publish it." " 
 
 was a part of the trade-mark, if trade- 
 mark there was. 
 
 "The reputation which was estab- 
 lished was a reputation which en- 
 titled the public, constituting the 
 market, to expect to receive and en- 
 joy the humor of the author and the 
 skill of the artist to which it had be- 
 come accustomed. 
 
 "If there were any doubt as to 
 the words 'Mutt and Jeff' being in- 
 separably associated in the public 
 mind with the artist rather than with 
 the newspapers it is entirely dispelled 
 by the letters produced by the Star 
 Company." 
 
 "The 'Mark Twain' Case. Ckm- 
 ens V. Belford, Clarh & Co., 14 Fed. 
 728. 
 
 "This is the first attempt which 
 has ever come under my notice to 
 protect a writer's exclusive right to 
 literary property under the law ap- 
 plicable to trade-marks. Literary 
 property is the right which the author 
 or pubUsher of a hterary work has to 
 prevent its multiplication by copies 
 or dupUcation, and is from its very 
 nature an incorporeal right. William 
 Cobbett could have no greater right 
 to protect a literary production which 
 he gave to the world under the fic- 
 titious name of 'Peter Porcupine' 
 than that which was pubUshed under 
 his own proper name. The invention 
 of a nom de plume gives the writer no 
 increase of right over another who 
 
 uses his own name. Trade-marks 
 are the means by which the manufac- 
 turers of vendible merchandise desig- 
 nate or state to the public the quality 
 of such goods, and the fact that they 
 are the manufacturers of them; and 
 one person may have several trade- 
 marks, designating different kinds of 
 goods or different qualities of the 
 same kind; but an author cannot, by 
 the adoption of a nom de plume, be 
 allowed to defeat the well-settled rules 
 of the common law in force in this 
 country, that the 'publication of a 
 literary work without copyright is a 
 dedication to the public, after which 
 any one may republish it.' No pseu- 
 donym, however ingenious, novel, 
 or quaint, can give an author any 
 more rights than he would have under 
 his own name. The poUcy of the law 
 in this country has been settled too 
 long to be now considered doubtful, 
 that the pubUcation of literary matter 
 without protection by copyright has 
 dedicated such matter to the public, 
 and the public are entitled to use it 
 in such form as they may thereafter 
 choose, and to quote, compile, or 
 publish it as the writing of its author. 
 That is, any person who chooses to 
 do so, can republish any uncopy- 
 righted literary production, and give 
 the name of the author, either upon 
 the title-page, or otherwise as best 
 suits the interest or taste of the per- 
 son so republishing." 
 
544 Unfair Competition in Use of Literary Property 
 
 This principle of law would also seem to include the right to 
 publish an uncopyrighted book in the name of its author, even 
 though the previous publications were made under a pseudonym.^' 
 
 The right to use an author's name in connection with his pub- 
 lished works will not justify a person in using his name when 
 the literary production is inaccurately set out.'' 
 
 58 Ellis V. Hurst, 70 Misc. (N. Y.) 
 122. 
 
 Action brought under Sections 50- 
 51 of the Civil Rights Law, to enjoin 
 
 pubUcation and sale by the defendants 
 of certain books with the imprint of 
 the plaintiff's name on the cover. 
 Plaintiff, an author of standing and 
 reputation, wrote certain juvenile 
 stories, which he published under an 
 assumed name, and which were never 
 published by the plaintiff, or by his 
 authority, in connection with his own 
 proper name. These publications were 
 not copyrighted. The defendant pub- 
 lished the books under his nom de 
 plume, and also printed his proper 
 name on the cover. 
 
 "In the case at bar the defendants 
 concededly had the right to publish 
 the books in the suit with the nom de 
 plume of the plaintiff, and this right 
 carried with it the right to state the 
 true 'name of the author in such 
 form in the book, either upon the title 
 page or otherwise, as to show who 
 was the writer or author thereof.' 
 The 'Mark Twain' case, 14 Fed. 
 Rep. 728, 730. The nom de plume 
 of an author is but the synonym of 
 his true name, and, as was said in 
 the 'Mark Twain' case, supra, at 
 page 731, 'the invention of a nom 
 de plume gives the writer no increase 
 of right over another who uses his 
 own name' in the absence of a copy- 
 right. In publishing plaintiff's name 
 on the volumes under consideration 
 the defendants pubhshed a truthful 
 statement, directly connected with 
 
 the authorship of the books, which 
 they had a right to print." 
 
 5' Drummond v. Altemus, 60 Fed. 
 338. 
 
 The comi)lainant delivered a series 
 of lectures, and caused them to be 
 reported in the "British Weekly." 
 The defendant copied the published 
 reports incorrectly, and also added 
 matter to them, and published the 
 same in book form under a title "The 
 Evolution of Man; being the Lowell 
 Lectures Delivered at Boston, Mass., 
 April, 1893, by Professor Drum- 
 mond." The court in granting a 
 temporary injunction said: 
 
 "The defendant's book is founded 
 on the matter which had appeared in 
 the British Weekly, and, if that mat- 
 ter had been literally copied, and so 
 as not to misrepresent its character 
 and extent, the plaintiff would be 
 without remedy; but the fatal weak- 
 ness in the defendant's position is 
 that, under color of editing the au- 
 thor's work, he has represented a part 
 of it as the whole, and even, as to the 
 portion published, has materially de- 
 parted from the reports which he 
 sets up in justification. The title of 
 the book is 'The Evolution of Man; 
 being the Lowell Lectures DeUvered 
 at Boston, Mass., April, 1893, by 
 Professor Drummond.' It is true 
 that all the reports, except one, in 
 the British Weekly, appear under the 
 heading in the same words; but the 
 ordinary reader is not likely to rely 
 upon display lines of a public journal 
 to give a precise indication of the 
 
Jurisdiction 
 
 545 
 
 § 282. Jurisdiction, —r The federal courts in the United States 
 have exclusive jurisdiction of all cases arising from the infringement 
 of copyright.™ On the other hand, in cases involving an infringe- 
 ment of an author's rights in an unpublished literary production 
 the state courts have exclusive jurisdiction, unless the federal 
 courts obtain jurisdiction by reason of some extraneous fact 
 such as diversity of citizenship." The fact that a copyright is 
 set up in an answer will not divest the state court of jurisdiction. 
 Jurisdiction of the state courts depends on the allegations of the 
 complaint.®^ 
 
 contents of an article to which they 
 are prefixed, whereas such a title as 
 we have in this instance, given to a 
 book in permanent form, may rea- 
 sonably be, and usually is, relied on 
 as truly stating the nature of its con- 
 tents. A most important circum- 
 stance in this connection is that the 
 defendant, while precisely adopting 
 his title from the headlines of the re- 
 ports, has so altered their text as to 
 make it appear, contrary to the whole 
 tenor of the reports themselves, that 
 what his book contains is the precise 
 
 language of the author of the lectures, 
 although, as has been said, it contains 
 only some of the lectures, not all of 
 them, and presents none of them 
 fully or correctly." 
 
 >« O'Neill V. General Film Co., 171 
 App. Div. 854; Outcault y. Lamar, 
 135 App. Div. 110; Photo-Drama Mo- 
 tion P. Co. V. Social Uplift Film Corp., 
 220 Fed. 448. 
 
 '^Palmer v. DeWitt, 47 N. Y. 
 532. 
 
 '' Outcault V. Lamar, 135 App. Div. 
 110. 
 
CHAPTER XIX 
 
 Miscellaneous Forms of Unfair Competition 
 
 Section 283. Confusing uses of the term "Unfair Competition" by the courts. 
 
 284. Acts contributory to unfair acts. 
 
 285. Disparagement of a competitor or his goods. 
 
 286. Disparagement, not of the goods of a specific competitor, but of 
 
 the article sold by a number of competitors. 
 
 287. Obstruction of a competitor's customers. 
 
 288. Mis-use of term "Sole Proprietor." 
 
 289. Unfair appropriation and use of a competitor's ideas and methods. 
 
 290. Use of false advertising. 
 
 291. Advertising, appropriation of, by a competitor. 
 
 292. Solicitation of customers. 
 
 293. Signs: mis-use of those of a competitor. 
 
 294. Bribery as a means of competition. 
 
 295. Injuring a rival by pretended business competition. 
 
 296. Passing off the goods of a third party. 
 
 297. Sale of inferior goods, or seconds, as usual quality. 
 
 298. Use of prices to inflict definite injury on a competitor. 
 
 299. The use of prices for advertising purposes or as a decoy. 
 
 300. Unfair use of price as a means of competition. 
 
 301. Local price cutting. 
 
 302. Where the use of cut prices accompanies unfair or inaccurate 
 
 description of goods. 
 
 303. Competition by unfair comparison of prices. 
 
 304. Corporate stock; acquiring for purpose of unfair competition. 
 
 305. Inducing breach of contract by offers to save harmless. 
 
 In the present chapter an attempt has been made to collect 
 some of the cases in which the fmidamental doctrines of equity 
 involved in all these cases have been appUed to cases other than 
 those involving acts constituting passing off, as well as cases of 
 passing off not properly included in the foregoing chapters. 
 
 No attempt will be made to discuss the cases involving restraint 
 of trade, or cases concerning boycotts or labor difficulties, even 
 though such acts were shown to have been instigated by a com- 
 petitor of one of the parties involved in the case; nor will any 
 attempt be made to discuss the cases brought by the Government 
 under the Sherman law, although these cases in some instances 
 546 
 
Confusing Uses of Term "Unfair Competition" 547 
 
 involve questions relating to the unfairness of competitive 
 methods. 
 
 § 283. Confusing Uses of the Term " Unfair Competition " by 
 the Courts. — As has been already pointed out, there is considerable 
 confusion as to the exact meaning of the term "Unfair Compe- 
 tition." Not only is there confusion as to the definition of the 
 term as used by economists and publicists, but there is much con- 
 fusion among legal writers using the term only in its legal sense. 
 For instance, the Sixth Circuit Court of Appeals, in a per 
 curiam decision, speaking of a case involving a statement made 
 by the defendant, and termed by the court a "trade libel," said: 
 
 "It does not state a case of unfair competition, because it is not 
 averred that defendant has attempted to palm off any other kind 
 of a piano as that of the complainant." ^ 
 
 This implies that this court considers that nothing should be 
 termed unfair competition which does not involve an act of passing 
 off. 
 
 In contrast to the position of this court, Judge Pound, of New 
 York, in discussing the acts of a person who was formerly em- 
 ployed by the plaintiff, and who, after leaving the plaintiff, solic- 
 ited customers of the plaintiff on behaK of the defendant, said of 
 these acts: 
 
 "This is not a case of maUcious interference with contracts 
 where equity refuses to interfere unless the services are of a 
 unique and special character, but of unfair competition." ^ 
 
 Hough, J., has said that unfair competition "consists of selling 
 goods by means that shock judicial sensibiUties." ' 
 
 As used by the Sixth Circuit Court of Appeals, the term de- 
 scribes the doctrine of law known as "passing off," and nothing 
 more. As used by Judge Pound, the term not only includes acts 
 of passing off, but many other acts resulting in commercial fraud. 
 
 For years past it has been considered by many authorities that 
 the jxirisdiction of the court in enforcing the law of unfair com- 
 petition was limited to cases in which some act of passing off was 
 proven. As a matter of fact, however, the term "Unfair Competi- 
 tion" may be appUed to the legal rules regulating all acts done 
 in business competition which are tainted with fraud. This was 
 
 » Everett Piano Co. v. Maus, 20O etc., 124 N. Y. Supp. 956; 69 Misc. 
 Fed. 719. 90. 
 
 ^W'Wco'p, etc., V. Great Atlantic, ' Steiff v. Bing, 215 Fed. 20i. 
 
548 Miscellaneous Fokms of Unfaie Competition 
 
 pointed out some time ago by the California Court, speaking of 
 the fundamental rules involved in these cases, thus: 
 
 "The principles * * * apply to all cases where fraud is 
 practiced by one in securing the trade of a rival dealer; and these 
 ways are as many and various as the ingenuity of the dishonest 
 schemer can invent. * * * The fact that the question comes 
 to us in an entirely new guise, and that the schemer has con- 
 cocted a kind of deception heretofore unheard of in legal juris- 
 prudence, is no reason why equity is either unable or imwilling 
 to deal with him." * 
 
 It would seem evident that in the near future, if there is to be a 
 clear understanding on the part of the courts and the bar of this 
 body of law, the term "unfair competition" must be limited to 
 acts constituting "passing off," or the term "passing off" must 
 be used generally to describe acts of that character in preference 
 to the term "imfair competition," leaving the term "unfair com- 
 petition" open for use as the name of these rules which apply to 
 all inequitable acts done in competition, whether they cause 
 passing off or other kinds of fraud. For a further discussion of 
 this question see Chapters I and II. 
 
 There is a tendency in newspaper and Congressional discussion 
 of business conditions to fail to distinguish between unfair acts 
 which may be committed by almost any trader and those which 
 can be conunitted in an effective way only by powerful concerns 
 possessing large resoiu-ces. Passing off may be accomplished by 
 the mere affixing of a label or the choice of a name by anyone, 
 whether his resources be large or small; but local price cutting, 
 the use of bogus independent concerns, "fighting," or "com- 
 petitive" brands, and like methods, are necessarily limited to 
 concerns of sufficient size to furnish the large capital essential to 
 the creation and operation of these agencies; and acts of the char- 
 acter which necessarily involve the use of large resources are gen- 
 erally described as acts in restraint of trade, rather than as acts of 
 imfair competition. 
 
 § 284. Acts Contributory to Unfair Acts. — Unfair acts are 
 often rendered possible only through aid of third persons who 
 contribute to the damaging result. Printing or making of labels 
 or other articles, with or without knowledge of the use to which 
 
 ' Judge Garroute in Weinstock, LvMn & Co. v. Marks, 109 Cal. 529; 42 Pac. 
 142. 
 
Acts Contributory to Unfair Acts 549 
 
 they are to be put by him to whom they are sold, may constitute 
 such contributory infringement/ 
 
 The keeping for sale and selling of labels made in imitation of 
 complainant's, with the intention, through their sale, of putting 
 into the hands of dealers the means of deceiving ultimate pur- 
 chasers, gives a right of action. 
 
 An action for unfair competition lies against one who makes 
 and sells to others, who are competitors of plaintiff, labels and 
 wrappers which closely resemble plaintiff's, which may be used 
 by them to mislead the public. It need not be alleged that the 
 wrappers have been used for the specific kind of goods sold by the 
 plaintiff. In Farina v. Silverlock,^ the plaintiff used certain labels 
 for cologne bottles. Defendant printed copies of these, or labels 
 closely resembUng them, and sold them to persons who used them 
 for goods not made by plaintiff. Held, that defendant should be 
 restrained from printing and selling any such labels, notwithstand- 
 ing the possibiUty that some might be legitimately used to replace 
 labels that had been lost from plaintiff's product. 
 
 Printers have a right to print and sell "stock labels" to whom- 
 ever they please, and cannot be enjoined from so doing. It can- 
 not be objected, where one claims an exclusive right to the use of 
 a stock label for a particular purpose, that to allow this right 
 would amoimt to a fraud on the printer, as curtailing his right to 
 sell to any buyer.^ 
 
 This question of acts contributory to unfair acts is further con- 
 sidered in the chapter on "Defences," under the heading "De- 
 ception due, not to defendant's acts, but to the acts of others." 
 
 In Sartor v. Schaden,^ the plaintiff bought stock labels of a 
 printer, featuring the word "She" and applied them to cigars, 
 under which name his product became known. On appeal from 
 a decree enjoining the defendant from using the trade name in the 
 same locality as plaintiff, the decision was affirmed. Deemer, 
 C. J., said: 
 
 "But it is argued that the exclusive appropriation of the stock 
 label as a trade name resulted or was likely to result in a fraud 
 upon the printers thereof . * * * The printers knew when they 
 sold their labels to the plaintiff that he purposed using them as a 
 
 ^Hennessey v. Herrmann, 89 Fed. ^ HiMreth v. Sparks Mfg. Co., 99 
 669 (1898), (Cir. Ct. N. D. Cal.). Fed. 484-1899. 
 
 •4 K. and J. 650-1858. « 125 Iowa, 696. 
 
550 Miscellaneous Forms of Unfair Competition 
 
 distinctive brand for cigars made by him, to be sold in the locality 
 where he did business. They knew, or should have known, that 
 property rights might grow up around the use of this label, and 
 that the demand for these labels might in that way be somewhat 
 curtailed. They could easily have avoided this by using some 
 distinctive feature which would indicate that the subsequent label 
 was not for goods made by a prior customer to whom they sold 
 the labels. If appellant's contention in this respect were sound, 
 it would entirely destroy the doctrine of trade names, in so far as 
 they are prepared or printed by others upon paper or board to be 
 used as cartons, wrappers or labels for any sort of manufactured 
 goods." 
 
 In Carson v. Ury,^ the Cigar Makers International Union of 
 America adopted a label to be put on boxes of cigars manufactured 
 by its members. Plaintiff was a manufacturer of cigars and a 
 member of the union. His bill alleged that these labels enabled 
 him to obtain a higher price for his cigars, and that defendant 
 should be enjoined from the manufacture and sale of counterfeit 
 labels, as the sale of them injured his trade. Held, that the bill 
 stated good groimds for relief in equity. Defendant's demurrer 
 overruled. 
 
 § 285. Disparagement of a Competitor or His Goods. — This 
 question is fully discussed in the chapter on "Disparagement of 
 Competitors,'' etc. 
 
 § 286. Disparagement, Not of the Goods of a Specific Com- 
 petitor, but of the Article Sold by a Number of Competitors. — 
 This question has recently been raised in Armstrong Cork Co. 
 et al. V. Ringwalt,^" in which various linoleum manufacturers sued 
 a concern that was applying the name "linoleum" to a substance 
 that was not Unoleum, but a cheap substitute therefor. The Cir- 
 cuit Court of Appeals overruled a demurrer to the complaint and 
 the case is awaiting trial. 
 
 § 287. Obstruction of a Competitor's Customers. — In Gilly 
 V. Hirsch, the court said: " "So far as we can see, the point at 
 which plaintiff's business, by reason of the manner in which it has 
 been conducted, has amoimted to an unlawful interference with 
 that of defendant was when plaintiff or his employees molested 
 defendant's customers, actual or prospective, whilst enjoying the 
 
 » 39 Fed. 777-1889 (C. C. A.). u 122 La. 966-972 (1909). 
 
 '" 235 Fed. 458. 
 
Mis-Use of Term "Sole Proprietor" 651 
 
 privilege of looking into his show window, and undertook to 
 'hustle' or coax them into plaintiff's place, representing that it, 
 and the show window, were parts of the same estabUshment and 
 such interference has been enjoined." ^^ 
 
 State V. Dalton,^^ is an appeal by the state from a judgment 
 quashing a bill indicting the defendants for conspiracy. In re- 
 versing the judgment Clark, C. J., said: "In the present case the 
 charge in the bill is of a conspiracy whose object was to break 
 up a rival company and to drive it from the business field and 
 leave it clear for the agents and employees of the company for 
 whom the defendants were working, and that this conspiracy was 
 to be carried out by the following means: To break up the sales 
 made by the agents of the rival company; to abuse that company; 
 to vilify it; to follow up its agents from town to town, from road 
 to road, from house to house, and viUfy and abuse them; to slan- 
 der, vilify and run down that company; to charge falsely that 
 such rival company was composed of a set of thieves and liars; 
 and to say falsely that the agents of that company were a set 
 of thieves and liars who were trying to cheat and defraud the 
 people." * * * The acts here charged constitute a conspiracy 
 indictable at common law and the order quashing the bill was 
 improvidently allowed. A combination to injure the business of 
 another by a resort to systematic .falsehood and misrepresenta- 
 tions, as here charged, has not been made lawful by any statute 
 nor recognized as permissible by the decision of any court." 
 
 In Standard Oil Co. v. Doyle, ^^ the court said by Judge Nunn: 
 "It was most assuredly unlawful to obstruct, harass, and annoy 
 appellee's employees when engaged in the discharge of their duties 
 in selling and distributing oils to appellee's customers; to threaten 
 customers of appellee to shut them up in their business if they con- 
 tinued to deal in appellee's oils; to cause and procure false and 
 injurious reports concerning appellee and his business," etc. 
 
 § 288. Mis-Use of Term " Sole Proprietor."— In McAllister 
 V. Stumpp & Walter Co.,^^ the plaintiff and the defendant were 
 both entitled to manufacture certain proprietary articles. The 
 defendant advertised himself as the "sole proprietor" of this 
 article. Justice Bischoff said: "Defendant's acts in styling itself 
 
 '2 See also Evmsm v. Spavlding, "118 Ky. 662-671-1904. 
 150 Fed. 517. " 25 Misc. (N. Y.) 438-1898. 
 
 " 83 S. E. 693-1914. 
 
552 Miscellaneous Forms of Unfair Competition 
 
 the 'sole proprietor' of the articles would amount to an unfair 
 method of trade competition as against the plaintiff, who is en- 
 titled to vend the goods under the same general designations, and 
 the injunction is to issue upon this ground, whether or not the 
 rights were properly to be viewed as rights of trade-mark, and 
 whether or not the respective parties could derive enforcible rights 
 by their transfers from McAllister. Both parties deal in the prep- 
 arations, and in any aspect neither has a greater right than the 
 other. Hence the public assertion of exclusive control by one is 
 an attempted usurpation of the rights of the other, and clearly to 
 the latter's detriment. Judgment for plaintiff for injunction." 
 
 § 289. Unfair Appropriation and Use of a Competitor's Ideas 
 and Methods. — Many ideas and methods more or less original 
 in character are frequently devised which are not patentable, but 
 which have a distinct commercial value. Often much time and 
 money are expended in their development by the originator, only 
 to find when 'they are in successful operation that a competitor 
 has appropriated them bodily, and is using them to sell his own 
 goods. Within narrow limits, acts of this character have been 
 enjoined in recent years. 
 
 In Fonotipia, Limited, v. Bradley, ^^ complainant was engaged in 
 producing and putting on the market music records for use upon 
 machines made after the Berliner patent. The defendant was 
 sales agent for the Continental Record Co., and engaged in ad- 
 vertising and selling its records under the claim that they were 
 all "duplicates from the original record made by the artists." 
 As a matter of fact, these records of the defendant were made 
 from commercial records of the complainant, and, therefore, 
 presumably and actually, were inferior to the complainant's 
 records, whose commercial (copy) records approached the original 
 record of the voice as closely as was, for the purpose of multiform 
 reproduction, mechanically possible*. The court observed that it 
 had no doubt but that property rights in connection with material 
 things may exist, and consist of incorporeal rights to enjoyment 
 of the material object, and said, by Chatfield, J. (page 960): 
 "We therefore reach the broad question of the power of a court 
 of equity to secure to an individual by injunction the full enjoy- 
 
 " 171 Fed. 951-1909. See also Mon- obtaining by fraud models for copy- 
 tegul V. Hiekson, Inc., N. Y. Law J., ing purposes was enjoined. 
 May 18, 1917 (N. Y. App. Div.) where 
 
Unfair Appeopriation of Competitor's Ideas 553 
 
 ment of both corporeal and incorporeal rights in property created 
 by him or at his expense and capable of a taking by another, 
 whether such taking either diminishes or destroys the enjoyment 
 of these rights by the owner, and diverts a part of the enjoyment 
 of profit. * * * Equity has granted reUef in certain typical 
 lines of cases where the doctrine of unfair competition seems to 
 have been the guide to the decision, but where the basis upon 
 which the reUef was granted was the unfair taking of complain- 
 ant's property, rather than the deception of the purchaser." 
 
 The court then cited, as illustrating this tendency to give relief, 
 the "ticker," " and the "scalping" ^^ and the "trading stamp" ^' 
 cases, and said that the effect of granting an injunction in the pres- 
 ent case might reach far along the road of preventing many things 
 winked at by business practice, on the theory of competition: how 
 far, it could not say. ReUef by injunction was granted in this case. ^ 
 
 The Prest-O^Lite cases fall under this general head. In most 
 of th^n there was, indeed, the element of an attempt to pass off 
 goods, but the decisions did not all turn on this alone. The com- 
 plainant in these cases made and sold acetylene gas for auto- 
 mobiles, in metal containers, which were sold at $25, but ex- 
 changeable, when empty, for filled containers at $2.50; and at a 
 very large expense a system of exchange stations for this purpose 
 was established, so that supplies could be had in this way at almost 
 every fair-sized village in the country. No competing dealer in 
 illuminating gas could provide exchange facilities approaching 
 those of the complainant. It has accordingly been held in the 
 later cases that competitors could re-fill Prest-O-Lite containers 
 only on condition of completely obliterating the trade-mark and 
 making it reasonably certain that customers would know that 
 
 ^''National Tel. News Co. et al. v. "Sperry & HvicMnson Co. v. Me- 
 
 Western Union Tel. Co., 119.Fed. 2Q4:; chanics Clothing Co., 128 Fed. 800; 
 
 Illinois Commission Co. v. Cleveland Sperry & Hutchinson Co. v. Louis 
 
 Tel. Co., 119 Fed. 301; Board of Trade Weber & Co., 161 Fed. 219. 
 
 V. Christie Grain & Stock Co., 198 U. S. '" But in White Studios, Inc., v. 
 
 236. Dreyfoos, 156 A. D. (N. Y.) 762, 
 
 " Betterman v. Louisville & N. R. B. it was not considered unlawful, as 
 
 Co., 207 U. S. 205; Penna. Co. v. Bay, against a photographer, to make and 
 
 150 Fed. 770; Illinois Central B. R. Co. sell to the public copies of his photo- 
 
 V. Caffrey, 128 Fed. 770; Nashville, C. graph (the consent of the subject being 
 
 & St. L. By. Co. V. MeConnell, 82 obtained). Reversed by Court of Ap- 
 
 Fed. Rep. 65. peals, N. Y. Law J., June 1, 1917. 
 
554 Miscellaneous Forms of Unfair Competition 
 
 they were losing the privilege of re-filling at Prest-0-Lite exchange 
 stations. The most authoritative decisions are: PrestrO-Lite Co. 
 V. Dams, 215 Fed. 349 (C. C. A. 6th Cir.), and Searchlight Gas 
 Co. V. PrestrO-Lite Co., 216 Fed. 692 (C. C. A. 7th Cir.). In the 
 latter case, Baker, C. J., says (p. 695): "So it is apparent that 
 something more is involved here than the question of rights 
 flowing from the sale and purchase of original Prest-0-Lite gas 
 packages. That something more is an incorporeal right that may 
 best be called service; the right to serve and be served without 
 interference from outsiders. Such a right, as a species of property, 
 has been recognized and upheld." ^^ 
 
 In PrestrO-Lite Co. v. Davis,^^ Hollister, D. J., said: 
 "The defendants are using the name and reputation of com- 
 plainant's product and complainant's business system to further 
 their own competing goods. Every time they sell a charge of 
 Searchlight gas in a Prest-O-Lite tank, they either deceive the 
 user desiring Prest-O-Lite gas (what he had before) or the pur- 
 chaser knowingly takes Prest-O-Lite tanks charged with Search- 
 light gas. In one case they palm off their own goods as complain- 
 ant's and trade on complainant's good will; in the other, they 
 sell their own goods (gas) only because the purchaser knows he 
 can, by having a Prest-O-Lite tank, participate in the system of 
 business estabhshed by the complainant. In either case the com- 
 plainant loses and the' defendants gain by defendants' use of 
 something which belongs to the complainant " (p. 921). * * * 
 "The purchaser from the complainant gets more than the tank 
 itself. He buys a right and opportunity to participate in the 
 business system complainant has, at great expense, established 
 and maintained. The especial value the tank has is its exchange- 
 ability, when empty, for a full tank essentially the same as the 
 other. The popularity of Prest-O-Lite is without doubt due to this 
 fact. By furnishing dealers in all parts of the country with charged 
 tanks for exchange for its empty tanks, and advertising in many 
 ways, an enormous demand has been created by complainant for 
 its tanks and gas. This system of exchange is necessarily highly 
 profitable to the complainant and, in a smaller measure, to the 
 dealer, and performs a service to the user of the greatest impor- 
 tance. This service and the general knowledge that it may be had 
 
 " See list of earlier cases, 215 Fed. " 209 Fed. 917. 
 693-4. 
 
Unfair Appropriation of Competitor's Ideas 555 
 
 is the very life of complainant's business. To the tank, the title 
 of which has passed from the complainant, is attached a quality — 
 the quality of exchangeability practically anywhere in the United 
 States. This quality the complainant has created and it belongs 
 to the complainant and is a valuable asset in its business" (p. 922). 
 
 "And so the defendants, in order to sell Searchlight gas, the 
 profit of which goes to them and the Searchlight Company which 
 charges defendants' tanks with its gas, exchange with the user 
 Prest-0-Lite tanks charged with Searchlight gas for empty Prest- 
 0-Lite tanks and thereby reap a very considerable part of the 
 value of the quality of exchangeability inherent in every tank the 
 complainant sells. There is surely something unfair in this, if 
 not morally wrong. 
 
 "Fair competition between the two systems is excellent, but 
 the acts complained of do not involve competition between the 
 two systems. They involve a use by the defendants in the fur- 
 therance of their competitive business, and the appropriation 
 of something of value which actually belongs to their competitor. 
 Instead of using their own system in competition with complain- 
 ant's system, they actually make complainant's system the very 
 medium through which their gas was introduced to complainant's 
 customers " (p. 923). 
 
 "The great value of complainant's business lies in the inter- 
 changeability of its tanks.. This quality the complainant has 
 created. It is his, and no one has the right to appropriate it for 
 his own gain to the detriment and even destruction of complain- 
 ant's business. That quality is incorporeal and intangible, but 
 is property nevertheless. The complainant manifestly having 
 no adequate remedy at law is entitled to have his property pro- 
 tected by a court of equity. This, of course, is aside from any 
 question involved in the ownership of a registered trade-mark; 
 or any question of deceit. Defendants' wrong does not lie in the 
 mere use of old Prest-0-Lite tanks, but in using them to destroy 
 the complainant's business system for the purpose of, or with the 
 result of, injuring the complainant's business" (p. 924). 
 
 In Meccano v. Wagner, ^^ where were elements of unfair com- 
 petition (in the narrower sense), and of copyright infringement, 
 but it was also considered that there was an unwarrantable 
 appropriation of the methods and system of complainant, the 
 
 " 234 Fed. 912. 
 
556 Miscellaneous Forms of Unfaie Competition , 
 
 manufacturer of a mechanical building toy; the court sajang: 
 "Unfair competition exists also in that the complainant has estab- 
 Ushed a business system which is peculiarly its own. This was 
 done at the expense of tiine, thought, labor, and much money. 
 If it be assumed that this court is in error with respect to the 
 finding of palming off of defendant's goods for the complainant's, 
 establishing thereby unfair competition, yet the defendants use 
 complainant's business and the system it has estabhshed. In 
 these it has acquired a property, right of which its competitor 
 cannot deprive it by introducing his goods into, and as a part of, 
 complainant's business and business system. In this respect the 
 case strongly resembles Prest-0-Lite Co. v. Davis, 209 Fed. 917, 
 afiBrmed by the Circuit Court of Appeals of this Circuit, 215 Fed. 
 349; 131 C. C. A. 491" (p. 920). 
 
 § 290. Use of False Advertising. — It is unfair competition for 
 a competitor to make use of advertisements which reach the com- 
 munity served by his competitor, the purpose of which advertising 
 is to drive a competitor out of business. 
 
 In Boggs v. Furniture Co.,^^ the plaintiff was a sewing machine 
 agent and the defendant was a retail merchant in the same city. 
 Both were competing for the opportunity to seU White Sewing 
 Machines in the county in which they lived. The Furniture Co. 
 had been an agent in the past, but the plaintiff had secured the 
 agency. The defendant thereupon procured old styles of White 
 machines, and whereas the plaintiff advertised the new models 
 at $45 the defendant advertised a price of $24.75, stating that 
 they were "the latest patterns," etc., and also advertised that the 
 machines had just been received by the defendant, all of which 
 facts it was alleged were untrue. Evidence was also produced of 
 threats on the part of the defendant to ruin the plaintiff and run 
 him out of business. The jury gave a verdict for the plaintiff, 
 and the Court on appeal held that the acts of the defendant 
 created unlawful competition. "The case before us does not 
 present a case of lawful competition, but a case of maUcious or 
 pretended competition, designed and carried out with malice 
 for the purpose of injuring the plaintiff in his business. At least 
 the jury might have so found from the evidence" (p. 115). 
 
 § 291. Advertising, Appropriation of, by a Competitor. — The 
 adoption and use of a competitor's advertising may constitute 
 
 " 163 Iowa, 106-1913. 
 
Advertising, Appropriation of, by a Competitor 557 
 
 unfair competition. It has been held unfair to use a rival's ad- 
 vertising phrases and literature where such acts undermine the 
 plaintiff's trade. ^^ 
 
 One object of advertising is to establish an association in the 
 minds of the buying public between the advertiser as identified by 
 his name or by his trade insignia and his goods. If it be lawful for 
 a dealer to copy the advertising used by his competitor, confusion 
 on the part of the pubUc is almost inevitable, and where such con- 
 fusion exists the public will mistake the goods of the defendant 
 for those of the plaintiff, especially if the article involved be low 
 priced and bought casually and without careful inspection. 
 
 Most of the cases in which the imitation of advertisements has 
 been condemned have involved the usual elements of unfair 
 competition; that is, they involved a tendency to mislead pur- 
 chasers and to pass off goods. But the question has arisen 
 whether, short of this, might there not be an inequitable appro- 
 priation of the benefit of advertising, which would be an unfair 
 method of competition. 
 
 In Westminster Laundry Co. v. Hesse Envelope Co.,^^ plaintiff 
 ran for some time a "bUnd" advertisement with the salient word 
 "Stopurkicken," intending, after arousing public curiosity, to 
 complete the advertisement so as to relate to its laundry business. 
 Before it had been so completed, however, defendant, a manufac- 
 turer of envelopes, began advertising, by means of cards, in which 
 the word was adopted and connected with defendant's wares. 
 Held, that this was not restrainable as unfair competition. The 
 question was discussed as one of trade-mark or of unfair com- 
 petition in the narrower or technical sense, and not on the broader 
 equitable principles that might have been claimed to be applicable, 
 such as the unjustified appropriation of value created by plaintiff. 
 
 The more conservative and the prevailing view, with regard to 
 advertising, still is that "nothing less than conduct tending to 
 pass off one man's business or merchandise as that of another will 
 constitute unfair competition." ^ 
 
 ^^ Farmers' Handy Wagon Co. v. "The circulars sent defendant's 
 Beoioer SUo, etc., Co., 236 Fed. 731-738 agents were apparently copied, in 
 (1917), C. C. A. 7th Cir. substantial respects, from complain- 
 " 174 Mo. App. 238. ant's circulars to its agents. The 
 "Per Ejiappen, C. J., in Edward similarity is such that, if intended or 
 Hilker Mop Co. v. U. S. Mop Co., 191 likely to be given to the ultimate pur- 
 Fed, at 618. chaser, we should be disposed to 
 
558 Miscellaneous Fokms of Unfaik Competition 
 
 A New York case, decided at Special Tenn in 1912, is of interest, 
 though apparently not officially reported.^ A merchant was 
 enjoined from printing advertisements on sheets resembhng ad- 
 vertising pages of the "World," and procuring news dealers to 
 fold them in with copies of the "World" and thus distribute them, 
 even though at the top of the inserted sheet were the words: 
 "This publication is not a part of any newspaper." Says Staple- 
 ton, J: "The plaintiff claims that the act constitutes an unlawful 
 interference, to its injury and damage, with its business as the 
 pubhsher of a modern newspaper, the prosperity of which is so 
 largely dependent upon the advertising feature of the enterprise." 
 Distinguishing the sale of a newspaper from that of ordinary goods, 
 he says of the newspaper: "The sale is for circulation, and that 
 the publication be distributed in form and substance as issued, 
 without improper or unfair addition, subtraction or defacement, 
 is implied from the circumstances of the transaction. * * * 
 The obvious purpose of the defendant was not alone to secure 
 distribution of its advertising matter, but to tack such matter on 
 to defendant's publication, to impress some persons mth the 
 beUef that it was part of the newspaper, to trade on the favorable 
 reputation of the plaintiff in an unfair and fraudulent manner by 
 the use of an ingenious decree which, unless the design be as sug- 
 gested, is otherwise purposeless." 
 
 In this case there was no. competition between the parties, but 
 the case shows a recognition of the right to conduct a business 
 unhampered by interference that injures the owner. 
 
 § 292. Solicitation of Customers. — As an illustration of the 
 value placed upon good-will in England, and of the sanctity of 
 
 hold that the ultimate purchaser who ing points' identical in many respects 
 had seen complainant's circulars was with those in complainant's circulars 
 hkely to be deceived by defendant's to its agents, the prospective purchaser 
 circulars into purchasing in the belief may well be deceived by the similarity 
 that the goods were those of complain- of the arguments used by agents, 
 ant's manufacture. But the nature It seems to me that this possibihty 
 of the circulars issued by both parties is rather remote. The rule is well 
 was such, containing as they did in- settled that nothing less than con- 
 structions to and a schedule of large duct tending to pass off one man's 
 compensations paid agents, that it business or merchandise as that of 
 seems quite unlikely that they would another will constitute unfair com- 
 naturally fall into the hands of the petition." 
 
 ultimate purchaser. It is urged that, ^ See Press Pub. Co. v. Levi Bros. & 
 
 as defendant's circulars furnish 'talk- Co., N. Y. Law Journal, Dec. 20, 1912. 
 
Solicitation of Customers 559 
 
 court decrees, it is interesting to note the action of the Court of 
 Chancery in the case of Helmore v. Smith^^ The father of the 
 plaintiff, and one Smith, had been engaged in the coal business in 
 London prior to 1886. A partnership accpunting action was after- 
 wards brought, and a reference was ordered. The court or- 
 dered that the business be continued until an appeal could be 
 heard, and appointed the defendant a receiver. The plaintiff was 
 a clerk in the employ of the firm, who had been dismissed by the 
 receiver. He then set up in business as a coal merchant on his 
 own account, and at once sent out circulars to the customers of the 
 firm, stating that in consequence of his dismissal he had started 
 business on his own account and was soliciting their trade. Later 
 he sent out another circular, which read as follows — 
 
 "Sir, — I beg to enclose you report of the above case from the 
 Times of Nov. 9, 1886. The Defendant, Charles Smith, is appeal-- 
 ing from such judgment, and pending the hearing of such appeal 
 has been appointed receiver on giving adequate security. 
 
 "As your esteemed orders have for the most part come under 
 my personal supervision while manager to the firms of Helmore 
 & Smith and Charles Smith & Co., I beg to submit to your notice 
 my present prices, and to inform you that should you favour me 
 with any orders they will receive the same attention and care as 
 formerly. 
 
 "Thanking you in anticipation, I am yours obediently, 
 
 "Henry W. Helmore" 
 The report to which he refers was a report of a hearing of a case 
 before the Vice-Chancellor in Chancery. He was asked by the 
 Justice in Chancery hearing the case, to give an undertaking to 
 desist from issuing circulars calculating to draw the trade of the 
 firm. He refused. The court then ordered him "to be committed 
 to prison, but give him three days before the order is enforced, 
 to see whether he will give an undertaking in the terms of the 
 notice of motion." An appeal was taken to the Court of Appeals, 
 where this order was sustained. Lord Cotton, L. J., saying — 
 "My decision does not turn on this fact, but it must not be sup- 
 posed that I do not strongly disapprove of such conduct. It was 
 said that there was a general custom among persons engaged in the 
 coal trade to act in this manner. If that be so, all I can say is 
 that the sooner they act as honourable men the better." * * * 
 2» C. A. 1886, 35 Ch. Div. 449. 
 
560 Miscellaneous Forms of Unfaie Competition 
 
 "No fair competition would justify the act of the appellant in 
 sending round a copy of the report in the Times, which, if taken 
 alone, would lead the customers to think that the business was 
 in a failing state or would shortly fail," ib. See index under title 
 " Customers." 
 
 § 293. Signs; Misuse of those of a Competitor. — It is unfair 
 competition for a defendant's servants to destroy or carry away 
 cards which plaintiffs' customers displayed in their windows when 
 they desired plaintiff's oil to be delivered to them.™ 
 
 § 294. Bribery as a Means of Competition. — It is unfair and 
 illegal to use bribery or graft to influence trade or contract to the 
 benefit of the person offering the bribe or gratuity. There is a 
 distinction to be drawn between merely selling goods on merit 
 and price alone and selUng goods by buying the disloyalty of a 
 competitor's agents or representatives in order to make the sale. 
 This first method is fair, the second is illegal and a wrong to com- 
 petitors and at the suit of a competitor may be enjoined. It is 
 unfair competition.'^ 
 
 § 296. Injuring a Rival by Pretended Business Competition. — 
 Injuring the good-will of a person in business by means of com- 
 petition when the sole object of the competition arises because of 
 ill will to the person occupying the business field and not because 
 the competitor seeks financial gain, is an actionable wrong. Such 
 competition is not considered legitimate for the reason that it is 
 not carried on for the purpose of estabUshing a rival business but 
 simply for the purpose of destroying an existing good-will, and 
 when that purpose has been accomphshed the business of the 
 competitor will cease. It is a pretended business competition and 
 nothing more. The motive is coupled with the deed and the re- 
 sult taken to be against pubUc policy. In other words, the law 
 will distinguish between creative and purely destructive com- 
 petition. In the case of Tuttle v. Buck,^^ the business was 
 
 30 Dunshee v. Standard Oil Co., 152 enter into a contract for his principal 
 
 Iowa, 618-1911; 165 Iowa, 625-1914. is pernicious and corrupt, and cannot 
 
 " City of Findlay v. Pertz, 66 Fed. be enforced at law. This principle is 
 
 427-434. "Any agreement or under- founded upon the plainest principles 
 
 standing between one principal and of reason and morality, and has been 
 
 the agent of another, by which such sanctioned by the courts in innumer- 
 
 agent is to receive a commission or able eases." 
 
 reward if he will use his influence with '^ 107 Minn. 145; Boggs v. Duncan- 
 
 his principal to induce a contract or Schell Furniture Co., 163 Iowa, 106. 
 
Passing Off the Goods of a Third Party 
 
 561 
 
 started by the defendant not for profit, but regardless of profit, 
 for the sole purpose of driving a competitor out of business. 
 The Minnesota Court thus characterized this defendant's acts: 
 
 "To call such conduct competition is a perversion of terms. 
 It is simply the apphcation of force without legal justification, 
 which in its moral quahty may be no better than highway rob- 
 bery." 
 
 § 296. Passing Off the Goods of a Third Party. — Passing off 
 the goods of a third party as those of some other person known 
 to the pubhc may be accomplished in various ways, such as giving 
 the goods of A to a customer who asks for the goods of B,^' or by 
 
 In Evenson v. SpavMing, 150 Fed. size of a cake of "Sapolio." In grant- 
 
 517, 522, GUbert, C. J., said: "Their 
 sole purpose appears to have been 
 to interfere with and prevent sales by 
 the appellees. This they accomplished 
 by breaking in upon conversations, 
 interrupting sales, and making false 
 representations as to the nature of the 
 appellee's goods, and the manner in 
 which they treated the purchasers 
 thereof and other offensive acts. Their 
 purpose was not to sell goods of their 
 own, and thereby interfere with sales 
 by the appellees, but it was, by pur- 
 suing a policy of molestation, to drive 
 the appellees out of business and out 
 of the country. The right of compe- 
 tition furnishes no justification for 
 such acts. This is in accordance 
 with the decided weight of authority." 
 " Enoch Morgan Sons Co. v. Wend- 
 over, 43 Fed. 420, was a suit in equity 
 to restrain the unlawful use of the 
 trade-mark "Sapolio." The plaintiff 
 proved that the defendant delivered 
 to purchasers requesting "Sapolio " a 
 cake of soap called "Pride of the 
 Kitchen," without explanation. It 
 was admitted that the soap desig- 
 nated as "Pride of the Kitchen " was 
 enveloped in a wrapper wholly differ- 
 ent from that used to envelop "Sa- 
 polio," and that the shape and size of 
 the cake also differed from the usual 
 
 ing an injunction. Green, J., said: 
 "That the act of the salesman in offer- 
 ing 'Pride of the Kitchen' in response 
 to a demand for 'Sapolio' is, though 
 done silently, a positively unlawful 
 act, is clear. Its unlawfulness con- 
 sists in an attempt to steal away the 
 business of the complainant for the 
 benefit of the manufacturers of 'Pride 
 of the Kitchen.'" 
 
 Fairbank Co. v. Dunn, 126 Fed. 
 227. On motion for a preliminary in- 
 junction, Ray, D. J., said: "The de- 
 fendant, John F. Dunn, is conducting 
 and transacting the business of a 
 grocer at Little Falls, Rome, and 
 Utica, in the state of New York. In 
 his said business he has advertised 
 Gold Dust, and has advertised to sell 
 the same at a less price than the same 
 can be obtained and sold for at a profit 
 in the market. Having so advertised 
 Gold Dust, the defendant has on sev- 
 eral occasions knowingly and wilfully 
 and fraudulently handed out and de- 
 livered to his customers who called 
 for Gold Dust, and who desired to 
 purchase Gold Dust, and who ex- 
 pected they were purchasing and ob- 
 taining Gold Dust, another and in- 
 ferior article known as Buffalo, and in 
 so doing has not only imposed upon 
 and defrauded purchasers to their 
 
562 Miscellaneous Fokms of Unfair Competition 
 
 use of a show card of B displayed with the goods of A. It has 
 been held, in this conneotion, that where two products have be- 
 come well known under the same family name but are placed on 
 the mariiet in distinctive wrappers that it is not incumbent on 
 a dealer in both these articles to inform a prospective purchaser 
 iliquiEing for the product merely under the family name that there 
 are two such products and to ask the purchaser which he desires.'* 
 
 damage and injury, but has injured 
 the complainant. 
 
 "The defendant claims that he was 
 ignorant of this act, but the court can- 
 not so find. The defendant claims that 
 he 'has had no purpose to deliver tocus- 
 • tomers the soap powder Buffalo when 
 Gold Dust has been called for. The 
 court is not satisfied that such is the fact. 
 
 "The acts complained of are un- 
 lawful. The defendant has no right 
 to deliver Buffalo when the customer 
 calls-for Gcfld Dust. The customer has 
 ttie -right to Teceive Gold Dust when 
 he calls for it and the seller purports 
 to fill 'liis order, without taking pains 
 to examine the package delivered, 
 and 'he is defrauded -if an inferior ar 
 tide is Substituted, even if the pack- 
 age bears a label showing it to be 
 Buffalo and not 'Gold Dust. 
 
 "The customer at a grocery is not 
 compelled -to inspect every package 
 callled for to see that he gets what 
 he orders. He has the right to assume 
 that he gets what he orders. The 
 merchant, by assuming to fill the order, 
 represents that the goods put up and 
 delivered are those ordered. The law 
 is too well settled on this subject to 
 require extended quotation. The man- 
 trfacturer of an article placed upon the 
 markefrfor sale has the right to demand 
 (St the dealer -vs^ho purports and adver- 
 tises to sell it that he deliver his prod- 
 uct when called for by the customer. 
 
 "The injunction pendente lite is 
 granted, and will issue." 
 
 " Walter Baker & Co., Ltd., v. Gray 
 et al., 192 Fed. 921. Appeal. from an 
 order dismissing a bill to restrain un- 
 fair competition. 
 
 The plaintiffs, manufatiturers of 
 chocolate, based their claim on the 
 fact that defendants who kept the 
 product of both plaintiffs and another 
 manufacturer of chocolate named 
 Baker for sale in their grocery have 
 not, on an inquiry by customers for 
 "Baker's Chocolate" without more, 
 handed out at once plaintiffs' pack- 
 ages, or have not aflBrmatively called 
 attention to the fact that there were 
 two kinds of Baker's Chocolate, and 
 asked the inquirers which they desired. 
 
 In affirming the decision of the court 
 below Adams, C. J., said: 
 
 "In -view of the uncontradicted 
 testimony that the prominent yellow 
 label, the striking effigy of the choco- 
 late girl, and the display of the name 
 of 'Walter Baker & Co., Limited,' 
 so distinguished and characterized 
 complainant's packages that all per- 
 sons knew them by those tokens or 
 some of them, it seems perfectly ob- 
 vious that an inquirer for its chocolate 
 would, at once, on being offered 
 a package of the 'Justice Brand' 
 manufactured by William H. Baker 
 with its label so strikingly different 
 from those characterizing the Walter 
 Baker product,- refuse to accept or 
 keep it, unless they were willing to 
 take it on its own merits. The de- 
 livery of a package of the 'Justice 
 
Sale of Inferior Goods or Seconds 663 
 
 This decision has been approved but a very few times and does 
 not state what would seem to be the sound rule. The proposition 
 is now established that the purchasing public, when asking for a 
 specific article, are entitled to receive what they ask for, and not 
 to be made victims of a play on names, or a possible indefiniteness 
 in the order given, when the shopkeeper knows perfectly well 
 what brand they are seeking or a fortiori, if he be in doubt. 
 
 § 297. Sale of Inferior Goods, or Seconds, as Usual Quality. — 
 In a recent EngUsh case the sale of "second class goods," as the 
 court phrased it, was held a form of "passing off," which is "a 
 more subtle and possibly a more injurious passing off" than the 
 usual sort.'*" 
 
 In A. G. Spalding & Bros. v. A. W. Gamage, Ltd., ^^ the 
 plaintiff placed upon the market a football which was called 
 "Orb " and which achieved a good reputation. In 1911 the plaintiff 
 put out a new type of football under the name "Improved Orb," 
 the footballs previously sold having proved unreliable. It ceased 
 to sell the old footballs under the name "Orb" and sold its entire 
 stock of them to a waste rubber dealer. The defendant purchased 
 these footballs from the dealer and advertised the same for sale 
 and sold them at cut prices under the name "Improved Orb." 
 Thereafter the defendant changed its advertisements, simply 
 stating that the footballs were "Orb" balls. On trial an injunc- 
 tion and accounting was granted but the Court of Appeals re- 
 versed the same holding that plaintiff failed to state a cause of 
 action. The decision of the trial court was restored on appeal to 
 the House of Lords. Lord Parker of Waddington wrote: 
 
 "It appears to me to be quite certain that anyone comparing 
 any of these advertisements with the catalogue, or anyone with a 
 knowledge of the catalogue and seeing the advertisements, would 
 be led to conclude that the defendants were offering for sale at 
 
 Brand' on a call for complainant's fail of its purpose. A purchaser of 
 
 chocolate would be in effect a proposi- ordinary prudence or even the most 
 
 tion to the purchaser to accept that in unwary could not be deceived by 
 
 lieu of what he asked for. In reality, it." 
 
 therefore, we fail to see how the tender '*" Spaulding v. Gamage, 110 L. T. 
 
 of a William H. Baker package on a 530-1914; Jameson v. Clarke, 19 R. 
 
 call for complainant's chocolate could P. C. 225; Leacher v. Levy, 23 R. P. C. 
 
 deceive any purchaser. Certainly 117; Hunt v. Ehrmann, 27 R. P. C. 
 
 an attempt to deceive in that way 512. 
 
 would be so palpable as to signally " 32 R. P. C. 237. 
 
564 Miscellaneous Forms of Unfair Competition 
 
 4s. 9d. the identical ball catalogued by the plaintiffs in their 1912 
 catalogue at 10s. 6d. Indeed, I find it difiicult to imagine that 
 the advertisements were not deliberately framed so as to convey 
 this impression. * * * 
 
 "Some discussion took place before your Lordships as to the 
 subsequent advertisements issued by the defendants, it being 
 admitted that these advertisements were not such that, taken 
 alone, they would have given rise* to a right of action on the part 
 of the plaintiffs. This may well be so, but, taken in connection 
 with the previous advertiserpents, I cannot help thinking that 
 Mr. Justice Sargant was ri^ht in his conclusion that they were 
 hardly consistent with fair or honest trade. The effect of a mis- 
 leading advertisement is a continuing effect, and it might reason- 
 ably be expected that' a fair and honest trader, having his atten- 
 tion called to the fact that his advertisements were misleading, 
 would do all in his power to coimteract their effect. There is 
 nothing in the subsequent advertisements pointing to a desire on 
 the part of the defendants to undo the harm they had done by 
 their first advertisements. Indeed, I am not sure that the sub- 
 sequent advertisements were not so framed as to strengthen a 
 belief induced by the first that the defendants were selling for 
 4s. 9d., or some less price, the same ball as the plaintiffs had cat- 
 alogued at 10s. 6d.; whereas, imder the circumstances, they ought 
 in common fairness to have been so framed as to counteract such 
 belief. 
 
 "My conclusion, therefore, is that the appeal ought to be 
 allowed and Mr. Justice Sargant's judgment restored." 
 
 § 298. Use of Prices to Inflict Definite Injury on a Competitor. 
 — The price at which merchandise is offered for sale may be 
 illegally used to inflict definite and specific injury upon a rival. 
 This is illustrated in the case of Boggs v. Duncan-Schell Furniture 
 Co.^^ In this case both parties were seeking to obtain the agency 
 to the White Sewing Machine. The plaintiff finally obtained it, 
 and advertised the machine at $45. The defendant for the pur- 
 pose of destroying the plaintiff's business, and injuring him, 
 advertised the same machine at $24.75. As a matter of fact, how- 
 ever, the defendant did not have the same machine as the plain- 
 tiff, but an older and less improved type. The defendant also 
 stated in his advertisements that the machines had just been re- 
 
 '« 163 Iowa, 106. 
 
Use of Prices for Advertising Purposes 565 
 
 ceived by him, which was not the fg,ct. The action was brought 
 at law, and the jury gave a verdict for the plaintiff, with damages. 
 This act was held to be unfair competition. The Court said — 
 
 "While a person has the right to pursue his avocations and his 
 business for his own pleasure and profit,. he has no right, directly 
 or indirectly, to willfully and maliciously injure another in his 
 lawful business or occupation. Men have the right to engage in 
 lawful competition, and, though the competition may have the 
 effect of driving another out of business, if the competition is 
 lawful, no action arises, though injury resulted from the competi- 
 tion. Where there is lawful competition for gain, for supremacy 
 in business, for the legitimate control of business, even though 
 the purpose and effect of the competition is to drive from business 
 competitors, yet, if the competition is lawful and carried on in a 
 lawful way, no action will lie. There is a difference between law- 
 ful competition and simulated competition carried on with the 
 sole purpose and intent, not of profit and gain, but of maliciously 
 injuring others engaged in that particular business. 
 
 ' ' The case before us does not present a case of lawful competition, 
 but a case of simulated or pretended competition, designated and 
 carried out with malice for the purpose of injury to the plaintiff 
 in his business. At least the jury might have so found from the 
 evidence." 
 
 In this case the cut price was but one of several unfair acts 
 committed by the defendant. The question as to whether the 
 cutting of price alone for a similar unfair purpose would be unfair 
 competition has not been yet decided in the affirmative in this 
 country, although it would seem as if there might easily be in- 
 stances where such an act would be unfair. 
 
 § 299. The Use of Prices for Advertising Purposes or as a 
 Decoy. — The commonest form of price cutting is that which 
 involves the use of a price which is low enough to attract public 
 attention when compared with the ordinary prices at which the 
 goods advertised are normally sold. Usually the person adver- 
 tising the low price names a reason therefor, as for instance, a 
 liquidation, a season sale, a stock taking, or a closing out sale. 
 Few, if any cases, exist in this country which have definitely de- 
 cided the legal character of acts of this sort. In Europe sales of 
 this character and advertisement of the prices under these con- 
 , ditions is most carefully regulated either by statute as in Germany, 
 
566 Miscellaneous Forms of Unfair Competition 
 
 or by court decisions as in France. In the latter country it is 
 considered to be unfair competition to advertise a low price, and 
 give as a reason therefor the desire of a merchant to close out his 
 remaining stock, and then to proceed to buy in new stock to sell 
 at the low price named in the advertisement. In this country, 
 on the contrary, such methods are practiced by concerns claiming 
 the highest ethical standards. The right of a merchant to sell his 
 goods at any price he wishes, should be no greater than the right 
 of his competitor to insist that the prices used in the competition 
 between them should not be used to beguile the public into bujong 
 goods under a misapprehension or misunderstanding of the reasons 
 for the sale. The foreign view of business methods of this kind 
 is clearly set forth in the following statement from one of the 
 French text writers — 
 
 Joret-Desclosieres,'^ states: "Doubtless the merchant, having 
 become the owner of an article of commerce, can sell the article 
 imder conditions that seem best to him. He can even, according 
 to present necessities, sell at a loss, reserving the responsibility 
 which he incurs in, case of failure. But these operations, of 
 which he is the sole judge, are only possible under this condi- 
 tion, that they will not be able (likely) to injure another, accord- 
 ing to the general principles of justice. 
 
 "Now, if the merchant plays a double game, selling under the 
 price of the manufacturer, and making use of, at the same time, 
 his name and his mark, to allure the public by the bait of an im- 
 portant reduction in price which he would not obtain even in 
 manufacture, it is evident that the retailer depreciates the mer- 
 chandise, that he debases the current price, and that he causes, 
 consequently, damage to the manufacturer, which ought to be 
 made good." 
 
 This passage is quoted with approval by Pouillet in his standard 
 work on Concurrence deloyale (Unfair Competition), 1906. 
 Pouillet says: *^ 
 
 "No doubt that on principle, and in the absence of an agree- 
 ment to the contrary, a retailer has a right to sell at a price that 
 suits him, even at a loss, articles which he buys for his trade. 
 That is one of the evident consequences of the principle of free- 
 dom of trade. Nevertheless, the rule is far from bfeing without 
 
 " See article in the Mont. Trib. "" Traits des Marques de Fabrique, 
 64, 3477. F. Pouillet, § 1221. 
 
Unfair Use of Price as Means op Competition 567 
 
 exceptions. Sale at a cut price can take place under such con- 
 ditions with so evident an intention to depreciate the merchan- 
 dise, that it becomes an act of unfair competition." 
 
 § 300. Unfair Use of Price as a Means of Competition. — 
 There is much discussion at the present time as to legal character 
 of the act of cutting prices. This term "price cutting" has no 
 exact legal definition, due largely to the fact that there exists no 
 standard or rule by which it can be determined whether or not 
 the price in question is a price lower than it is lawful, under all 
 the circumstances for the seller to place upon his goods. 
 
 There exists httle, if any, authority holding that it is illegal 
 merely to offer or to sell merchandise at any particular price or 
 at any particular scale of prices, no matter how low or high. The 
 naming of prices is held to become unfair or fraudulent only in 
 connection with other acts on the part of the seller naming the 
 price, or conditions prevaiHng at the time of the sale. There is 
 little doubt, however, that price may be used as an instrument of 
 fraud, now that advertising plays so important a part in mer- 
 chandising. 
 
 § 301. Local Price Cutting. — It is generally recognized in this 
 country to-day, that it is illegal to vary the price in one locality 
 from the price named in another locaUty, for the purpose of 
 driving a competitor out of business. Of course in deciding 
 whether the price is vmfair, in cases of this character, regard must 
 be had to differentials of transportation and other expenses. This 
 principle has been recognized in the statu,tes of a considerable 
 number of states, which forbid the sale of merchandise for the 
 purposes of unfair competition at one price in one part of the 
 state, and at another price in another part. 
 
 The Federal Courts have condemned as unfair the local cutting 
 of prices in connection with a rate war by towing companies on 
 the Great Lakes, considering it unfair for these companies to 
 name prices in one harbor for the purpose of disposing of com- 
 petitors doing business in that harbor, which prices were lower 
 than those at which they were rendering the same service in other 
 places.'^ 
 
 § 302, Where the Use of Cut Prices Accompanies Unfair or 
 Inaccurate Description of Goods. — It is an unfair method of 
 competition to place a cut price upon goods, and at the same time 
 '' United States v. Great Lakes Towing Co., 217 Fed. 656. 
 
'568 Miscellaneous Forms of Unfair Competition 
 
 to make statements regarding the goods so offered for sale which 
 are inaccurate and untrue. 
 
 Recently the Connecticut Courts in an unreported case granted 
 a preliminary injunction where a shop took a notion out of its 
 original package, and repacked it, marking it "Special" followed 
 by the brand name of the article, and then advertised it at a cut 
 price. The pleadings alleged that the goods were the regular 
 goods sold under the brand name in the usual course of business, 
 were merely put up in different packages, and were not in any 
 sense "Special." 
 
 § 303. Competition by Unfair Comparison of Prices. — In 
 Europe cases exist in which it is held unfair competition to ad- 
 vertise at a price less than a normal price and in the announce- 
 ment of the price to call attention to the higher prices of com- 
 petitors for the same goods. 
 
 § 304. Corporate Stock; Acquiring for Purpose of Unfair Com- 
 petition. — Equity will not assist a person who acquires stock 
 in a corporation as part of a scheme to ruin or injure the business 
 of a competitor.'^ 
 
 § 305. Inducing Breach of Contiact by Offers to Save Harm- 
 less. — It is unlawful for a competitor to solicit his rival's cus- 
 tomers to breach their contracts on the understanding that they 
 
 '^Funck V. Ekvafar Co., 142 Iowa, "In the light of the evidence the 
 
 621. plaintiff does not stand before the 
 
 Plaintiff brought mandamus to court as a mere purchaser of stock in 
 
 compel defendant company to trans- the defendant company, but as a 
 
 fer upon the books of the company conspirator or a puppet of conspira- 
 
 stock owned by the plaintiff and com- tors, working in conjunction with 
 
 pel defendant to permit plaintiff to many others by unlawful means to- 
 
 examine its books. The court below ward an unlawful end. A conspiracy 
 
 refused an order permitting plaintiff usually, often necessarily, involves in 
 
 to examine the company's books but its details many lawful acts; that is 
 
 held plaintiff entitled to have his stock to say, acts which in themselves 
 
 transferred on the books of the com- would be lawful. They are none the 
 
 pany. less unlawful as parts of the plan of 
 
 It appeared that plaintiff was act- conspiracy. It is our conclusion, there- 
 ing on behalf of an association which fore, that the plaintiff is entitled to no 
 was attempting to obtain information aid from a court of equity, and that 
 concerning the defendant's business the relief prayed for should be re- 
 in order to destroy its business by fused." 
 means of boycott. See also Govld v. Head, 41 Fed. 
 
 Evans, C. J., writing for a majority 240. 
 of the court, said: 
 
Inducing Breach of Contract 
 
 569 
 
 will sufifer no damage by reason of their failure to live up to their 
 undertaking.^" 
 
 As to cases involving the unlawful procuring of goods with 
 which to compete, at cut prices, with a rival's exclusive sales 
 agents, see Sections 174 and 175. 
 
 *" Citizens' Light, Heat & Power Co. 
 V. Montgomery Light & Water Power 
 Co., 171 Fed. 553. The parties were 
 competing public service corporations. 
 The plaintiffs sought an injunction 
 against the alleged acts of the de- 
 fendants, — false representations con- 
 cerning plaintiff's credit and ability to 
 do business, and solicitation of plairi- 
 tiffs' customers to break their contracts 
 and trade with defendant, unaccom- 
 panied by incitement to violence to 
 the customer's property or person. 
 Held, that equity would not enjoin 
 these acts, but that it would restrain 
 pendente lite defendant's efforts to 
 indemnify plaintiff's customers against 
 liability for their breaking their con- 
 tracts with plaintiff. Jones, D. J., 
 said: "Hence, while the law allows a 
 trader, by mere solicitation, to per- 
 suade customers to change their busi- 
 ness relations, without actionable 
 liability therefor, though a broken 
 contract is the result, it does not 
 
 permit such a solicitor, even in the 
 interests of competition,- to go further, 
 intervening actively between the con- 
 tracting parties, as a dominant agency 
 in producing a breach, by promise of 
 indemnity to one of them to induce 
 the breach. When the solicitor know- 
 ingly and intentionally goes beyond 
 mere solicitation, to induce another 
 man's customer to do business with 
 him, and promises to hold that other 
 man's customer harmless for the 
 breach of a contract with him, he 
 transcends the rights of the law of 
 competition, has no 'sufficient jus- 
 tification,' and thereby becomes liable 
 to him whose customer is taken over. 
 Such conduct is an unlawful inter- 
 ference with another man's rights, 
 for which he may maintain an action 
 and recover nominal damages, al- 
 though the contract be not actually 
 breached in consequence of the soli- 
 citation." 
 
CHAPTER XX 
 
 Pleading 
 
 Section 306. Joinder of causes of action. 
 
 307. Allegations on information and belief. 
 
 308. Allegations by way of recital. 
 
 309. Facts, not conclusions, to be alleged. 
 
 310. Certainty and particularity. 
 
 311. Jurisdictional facts. 
 
 312. Answer. 
 
 313. Essential allegations. 
 
 314. What allegations held sufficient. 
 
 315. What allegations held insufficient. 
 
 3i6. What questions may be raised by demurrer. 
 317. As to pleading the defense of "Unclean hands." 
 
 § 306. Joinder of Causes of Action. — Causes of action for in- 
 fringement of trade-mark, and for unfair competition (as by im- 
 itating labels), may be joined.^ 
 
 In the United States courts the bill may join causes of action 
 for infringement of patent and for unfair competition, where they 
 are based upon the same acts and transactions,* but not where 
 
 '■ Jewish Colonization Assn. v. SoU allegations of infringement with aver- 
 
 omon & Germanski, 125 Fed. 994. ments of unfair competition. Indeed, 
 
 G. Heileman Breviing Co. v. Inde- he could not well state his case other- 
 pendent Brewing Co., 191 Fed. 489, wise. There can be no objection, 
 C. C. A. 9th Cir. (1911). "A suit therefore, to joining the two causes of 
 for unfair competition may be main- suit in one complaint, and it is true 
 tained where there is no lawful also that he might succeed in one 
 trade-mark involved, which con- cause alone and fail in the other. By 
 sists essentially in palming the goods fair intendment the complaint in the 
 of one manufacturer or vendor off for present cause combines both elements 
 the goods of another. * * * ^ of fraud, infringement, and unfair 
 fortiori a suit may be maintained for competition in trade." See also Sam- 
 unfair competition when the infringe- son Cordage Works v. Puritan Cordage 
 ment of a trade-mark is resorted to as Mills, 211 Fed. 603. 
 a means of accomplishing the pur- ^Sayre v. McGill T. P. Co., 200 
 pose. * * * In such a case it is Fed. 771; Havens v. Bums, 188 Fed. 
 altogether appropriate that the party 441; T. B. Woods Sons Co. v. Valley 
 claiming to be injured should conjoin Iron Works, 166 Fed. 770. 
 570 
 
Allegations on Information and Belief 571 
 
 the acts are separate and distinct.* The bill, however, must 
 allege diverse citizenship to show jurisdiction of the action for 
 unfair competition.* Causes of action for infringement of 
 trade-mark and of copyright may be joined,^ and causes of ac- 
 tion for fraudulent use of trade secrets and for unfair competition 
 based upon connected acts.^ 
 
 Causes of action for damages under Anti-Trust Law of 1890, 
 and for injunction against infringement or unfair uses of trade- 
 mark or trade name, cannot be joined.'' 
 
 § 307. Allegations on Information and Belief . — Essential facts, 
 necessarily within complainant's knowledge (such as complainant's 
 use of the trade-mark, the fact of its imitation, without license or 
 acquiescence of the complainant), must be alleged positively, 
 and not on information and belief.^ 
 
 § 308. Allegations by Way of Recital. — Where an essential fact 
 appeared by necessary implication (though in form a recital), such 
 a statement is good against a general demurrer.' 
 
 § 309. Facts, not Conclusions, to be Alleged. — The bill of 
 complaint in an action for unfair competition, must set out the facts 
 upon which the action is based. The essence of the wrong in such 
 an action is fraud. No fraudulent intent need be proved, but facts 
 must be alleged which will justify a court in reaching the conclusion 
 that the defendant has acted fraudulently. A pleading setting out 
 conclusions without setting out the facts which support the con- 
 elusion is bad.^" Accordingly in an action of this character, al- 
 
 ' Ball & Socket F. Co. v. Cohn, 90 of the column the words ' Pubhshed 
 
 Fed. 664. by the Investor PubHshing Company, 
 
 * C. L. King & Co. v. Inlander, 133 Incorporated,' " deemed equivalent to 
 
 Fed. 416. a direct allegation that they did print 
 
 ' Harper v. Holman, 84 Fed. 222. those words. 
 
 (Opinion discusses the principle on ^"Motion Picture Patents Co. v. 
 
 which questions of multifariousness Eclair Film Co. ,2Q8Fed. 416. "Fraud 
 
 are decided.) is at the root of all actionable unfair 
 
 « James B. Sipe & Co. v. Columbia competition; and, as no intendment is 
 
 Refining Co., 171 Fed. 295. made in favor of fraud, the facts (but 
 
 ''Block V. Standard Distilling & not the mere evidence thereof) upon 
 
 Distributing Co., 95 Fed. 978. which such a charge is predicated must 
 
 "Gaines & Co. v. Sroufe, 117 Fed. be set forth distinctly and with as 
 
 965. • much particularity as the nature of 
 
 ' Investor Pub. Co. v. Dobinson, the transactions involved and the 
 
 72 Fed. 603-1896, "That defend- circumstances in which they have 
 
 ants * * * by printing at the head their being or development are within 
 
572 Pleading 
 
 leging simply that if the defendant be allowed to continue' the 
 display of signs, or signs of like import and meaning, that the 
 plaintiff will suffer irreparable damage, has been held insufficient." 
 Similar rulings have been made where a pleading set out that 
 certain acts were "wrongfully" done, where the acts themselves, 
 so far as could be seen from the facts alleged, were not wrongful.*^ 
 §310. Certainty and Particularity. — ^In an action in which 
 registration of a trade-mark is an essential element, the date of 
 the registration should be alleged in order to negative the possible 
 inference of the loss of the rights arising under the registration by 
 lapse of time." A bill of complaint in an action for unfair compe- 
 tition based on the imitation of the form, appearance and orna- 
 mentation of the complainant's product, should "describe or state 
 in what such ornamentation consists," for without such allega- 
 tions the complaint states conclusions, not facts. Failure to make 
 the proper allegations may be cured, however, by submitting in 
 evidence the imitated and imitating articles as part of the bill of 
 complaint. In such a case the "exhibits supersede the conclusions 
 stated in the bill and qualify the general broad allegations." " In 
 a case in which it is necessary to allege that the defendant has 
 used a trade name with intent to deceive the public a statement 
 in the complaint that use of the trade name by the defendant is 
 "calculated to deceive " is of no avail. Such an averment does 
 not mean or include intent to deceive. ^^ An answer in an action 
 for infringement of a trade-mark setting up prior use of the al- 
 leged trade-mark by persons other than the complainant, need 
 not specify the names of the prior users," and in an action for 
 unfair competition a complaint which states that "On divers days 
 and at divers places " the particular acts constituting the cause of 
 action were conamitted within the jurisdiction of the court was 
 sustained against demurrer." 
 
 complainant's knowledge or could " Gaines & Co. v. Sroufe, 117 Fed. 
 
 have been ascertained by his employ- 965. 
 
 ing such means as were at his com- "4ZZen v. Walton Wood & Metal 
 
 mand." Co., 178 Fed. 287. 
 
 " Longenecker v. Longenecker Bros., " Industrial Press v. W. R. C. 
 
 140 N. Y. Supp. 403. Smith Pub. Co., 164 Fed. 842. 
 
 12 Lothrop Pvb. Co. v. Lothrop L. & " Oorham Mfg. Co. v. Weirdrawb, 
 
 S. Co., 191 Mass. 353; Van Kannel 180 Fed. 639. 
 
 Revolving Door Co. v. American Revolv- " Chas. E. Hires Co. v. Simpkins, 
 
 ing Door Co., 215 Fed. 582. 179 Fed. 1012 (ruling on demurrer). 
 
Jurisdictional Facts 573 
 
 In a suit to restrain a person from disclosing secret processes of 
 manufacture, the complainant need not specify the particular 
 process sought to be restrained,^* and in a suit to restrain defend- 
 ants from combining with complainant's agents and interfering 
 with his contract rights, it is not necessary to enumerate in the 
 complaint the particular persons dealt with by the defendants, 
 especially where it is probably impossible for complainant to 
 ascertain them." 
 
 In an action for unfair competition based on the fraudulent use 
 of complainant's product, the amount and value of the article, the 
 names of the defendant's agents or of the parties buying the same 
 need not be alleged.^" 
 
 §311. Jurisdictional Facts. — Jurisdictional facts, such as di- 
 versity of citizenship should be pleaded in an action for unfair 
 competition brought in the Federal Court, or in an action brought 
 in that court for the infringement of a trade-mark not based 
 on the Federal Trade-mark Act. In an action brought under the 
 Federal Act use of the trade-mark in interstate commerce is an 
 essential allegation.^^ 
 
 An allegation that a party to a suit is a "citizen of the United 
 States and a resident of " a particular state has been held sufficient 
 as an allegation of citizenship of that state. ^^ Diversity of citi- 
 zenship may be sufficiently shown in a complaint by recited facts, 
 instead of by direct and explicit allegations.^' 
 
 In an action in the Federal Courts where jurisdiction depends 
 on the amount in controversy a complaint brought to restrain 
 the unfair use by the defendant of complainant's trade name, 
 which states the value of the trade name to be in excess of $5000 
 but makes no charge as to the amount of damages arising from the 
 defendant's acts and which fails to state that the complainant's 
 trade name will be destroyed or placed in jeopardy, is demurrable. 
 The court cannot assume from such a statement that the damages 
 are in excess of the amount prescribed by the. rules which in this 
 case was $2000,^* but in a suit brought for an injunction and 
 
 "S. S. White Dental Mfg. Co. v. '' Margarete Steiff v. Bing, 206 
 
 Mitchell, 188 Fed. 1017. Fed. 900. 
 
 " Dr. Miles Medical Co. v. Jaynes ^' Gorham Mfg. Co. v. Weintravb, 
 
 Drug Co., 149 Fed. 838-1906. 176 Fed. 927. 
 
 '» Hires v. Simpkins, 179 Fed. 1012. ^4 Winchester Repeating Arms Co. v. 
 
 "■ Warner v. Searle & Hereth Co., 191 Butler Bros., 128 Fed. 976. 
 U. S. 195. 
 
574 Pleading 
 
 accounting depending for jurisdiction on the same facts a demurrer 
 to the complaint on the ground "that there is no averment that 
 the alleged acts of the respondents have damaged complainants 
 in any sum of money; and that damages to the extent of $2000 
 must be alleged in order to give the court jurisdiction, etc," was 
 overruled, the court holding that in such cases the amount in 
 dispute is the value of the object to be gained by the bill and as the 
 property to be protected in the suit was complainant's trade- 
 noark which was alleged to be of the value of $2000, the allegation 
 of the amount of damages was unnecessary.^^ In an action 
 brought to restrain the infringement of a trade-mark registered 
 luider the Act of 1905 where both parties are residents of the 
 same state, an allegation that a trade-mark has been registered 
 under the provisions of the act of Congress "may be taken to 
 include an averment of all the facts necessary to found the right 
 of the plaintiff to the trade-mark registration, and therefore to 
 include the averment of an interstate use of the trade-mark by 
 the plgiintiff " but an allegation that defendant has induced pur- 
 chasers to take the product of the defendant under the belief that 
 it was the product of the plaintiff, and thereby "it has caused in 
 this district and elsewhere throughout the United States great and 
 irreparable injury to the plaintiff," is not a sufficient averment of 
 interstate use, actual or threatened, by the defendant and such a 
 bill will be dismissed for want of jurisdiction.^^ 
 
 § 312. Answer. — In an action to restrain the violation of an 
 alleged trade-mark, an answer which sets up prior use of the 
 mark by the defendant is directly responsive to the allegations of 
 the complaint,^' and the defendant was given the benefit of the 
 rule in equity practice, that where the complainant sees fit to put 
 the defendant on oath in his answer, such answer has such force 
 as evidence in behalf of the defendant that the burden is cast upon 
 the complainant to overcome it by the testimony of two wit- 
 nesses, or one witness corroborated by other facts and circum- 
 stances that persuasively outbalance such sworn answer.'^ Under 
 the New York Code of Civil Procedure, in an action to restrain 
 unfair competition, the defendant may plead by supplemental 
 answer facts which came into existence subsequent to the former 
 
 " Hennessy v. Herrman, 89 Fed. 669. " Uri v. Hirsch, 123 Fed. 568. ; 
 
 2« Louis Bergdoll Brewing Co. v. !» Uri v. Hirsch, 123 Fed. 568. 
 BergdoU Brewing Co., 218 Fed. 131. 
 
Essential Allegations 575 
 
 pleading, even though the plea if proven cannot constitute a com- 
 plete defense and majr not be at all material, if it is possible that 
 some of the acts of unfair competition may be justified. Such 
 pleading is not manifestly bad or frivolous.^' 
 
 § 313. Essential Allegations. — In an action based on the in- 
 fringement of a trade-mark, the complaint must contain an 
 allegation setting out the ownership of the trade-mark involved, 
 especially where there are several plaintiffs '" and an allegation 
 showing competition in the same class of trade.'^ 
 
 In an unfair competition case an allegation to the effect that 
 defendant's goods are so marked as to deceive the public has been 
 held insufficient on demurrer. The complainant in order to state 
 a cause of action must in addition show that the goods are so 
 marked as to mislead the public into accepting them as those of 
 the complainant.^^ When such an action is based upon the imita- 
 tion of the form and appearance of plaintiff's goods, the complain- 
 ant should allege not merely the imitation, but that the particular 
 form imitated had come to be known to the purchasing public 
 as an indication of the origin of the plaintiff's goods, and that 
 confusion has resulted in the pubHc mind by reason of the imita- 
 tion.^' A case of unfair competition by substitution is not stated 
 where the pleading is to the effect that the defendant has caused 
 persons to beUeve that the goods kept and offered for sale and sold 
 by the defendant were of the plaintiff's manufacture. Mere beUef 
 is immaterial unless acted on.'* 
 
 § 314. What Allegations held Sufficient. — Allegations from 
 which fraudulent intent and resulting damage may be inferred 
 may be sufficient against demurrer, though such intent and dam- 
 age are not expressly alleged.'^ 
 
 General allegations of intent to deceive, imitation in certain re- 
 
 ^^ Silver & Co. v. Waterman, 122 »' Sayre v. McGill Ticket Punch Co., 
 
 App. Div. (N. Y.) 373. 200 Fed. 771. 
 
 '" PenneU v. Lathrop, 191 Mass. " Winchester Repeating Arms Co. v. 
 
 357. Butkr Bros., 128 Fed. 976. (Mail. 
 
 " Longenecker v. Longenecker Bros., order business — advertising compet- 
 
 140 N. Y. Supp. 403. And see British- itor's goods and filling orders with 
 
 American Tobacco Co. v. British- others.) 
 
 American Cigar Stores Co., 206 Fed. " Industrial Press v. W. R. C. Smith 
 
 189. Pvb. Co., 164 Fed. 842-1908 (C. C. A.) ; 
 
 " American Washboard Co. v. Sagi- Merriam v. Holloway Pub. Co., 43 
 
 naw Mfg. Co., 103 Fed. 281. Fed. 450. 
 
576 Pleading 
 
 spects of name and of appearance of product, and deception of 
 public, are sufficient to cliarge fraud and state a cause of action 
 for unfair competition.'* 
 
 Allegation of sale by defendants of a preparation of a similar 
 kind under similar name, together with allegation of substitution 
 of defendant's goods when customers asked for complainant's is 
 sufficient." 
 
 Allegations of various similarities in dress, and that these were 
 imitations adopted for the purpose of "taking advantage of the 
 reputation" of complainant, have been deemed sufficient.'* 
 
 Alleging the adoption of a similar corporate name would not 
 state a cause of action; but if fraudulent intent in the adoption, 
 and also resulting injury, are alleged, the pleading is sufficient 
 against demurrer.'' 
 
 § 315. What Allegations held Insufficient. — Alleging that after 
 plaintiff's product had long been known by the trade-mark 
 "Gargline," defendant put on the market a similar product by 
 the name "Gargeline," etc., without alleging either fraudulent in- 
 tent, actual deception of pubUc, or resulting loss to complainant, — 
 held insufficient.^" 
 
 Alleging that orders for complainant's goods were filled with 
 other goods, thereby deceiving purchasers and injuring complain- 
 ant's business, held insufficient. It should have been more dis- 
 tinctly alleged that such orders were filled with other goods as 
 and for those of complainant.*^ 
 
 Allegation of the transfer of a trade-mark merely is not suffi- 
 cient; the transfer of the business also should be alleged.*^ 
 
 §316. What Questions May Be Raised by Demurrer. — 
 A demurrer raises a question of law and is directed to the suf- 
 ficiency of the complaint, A defect upon the face of a bill is 
 met, not by plea, but by a demurrer.^' 
 
 Where the complaint is based upon the fraudulent infringement 
 of a trade-mark a defendant by demurrer confesses the fraud 
 
 '« Putnam Nail Co. v. Bennett, 43 " Woodcock v. Guy, 33 Wash. 234. 
 Fed. 800. ■>! Winchester Repealing Arms Co. v. 
 
 " M. J. Breitenbach Co. v. Spangen- Butler Bros., 128 Fed. 976. 
 berg, 131 Fed. 160. *'- Bulte v. Igleheart Bros., 137 Fed. 
 
 »« Ellis V. Zeilin & Co., 42 Ga. 91- 492 (C. C. A.). 
 1871. " Hostetter Co. v. E. G. Lyons Co., 
 
 "> Plant Seed Co. v. Michel Plant & 99 Fed. 734. 
 Seed Co., 23 Mo. App. 579-1886. 
 
Pleading Defense of "Unclean Hands" 577 
 
 and if the demurrer is overruled, such confession entitles the 
 plaintiff to an injunction.*^ In such an action if it is clearly 
 evident to the court that there has been no infringement he may 
 dismiss the bill of complaint upon demurrer, or its modern equiv- 
 alent of motion.*^ 
 
 The question of the invalidity of a trade-mark as being non- 
 appropriable, e. g., as a geographical word, cannot ordinarily be 
 raised by demurrer.*^ If the rule were otherwise a demurrer 
 would he on the theory that the trade-mark claimed is invalid, 
 because descriptive. This would be overcome by an allegation 
 of secondary meaning.*' 
 
 The court will not readily decide, merely from the form used 
 as a trade-mark, that it is descriptive and invalid, especially 
 where it is alleged to be an arbitrary and fanciful word.*^ 
 
 Where the language of the bill is sufficient, a demurrer will 
 not be sustained on inspection of the accompanying exhibits, un- 
 less these are clearly inconsistent with the language of the bill.*' 
 
 But where the two trade-marks in question are attached to the 
 complaint, and are so palpably dissimilar as to contradict the 
 allegations of the complaint, a demurrer may be sustained. "But 
 to Justify such a ruling the dissimilarity should be so marked as to 
 leave no doubt in the mind of the court." ^ 
 
 A bill of complaint will be sustained upon demurrer, if its alle- 
 gations entitle the plaintiff to some relief, although not to the 
 whole relief prayed for.*^ 
 
 § 317. As to Pleading the Defense of " Unclean Hands." — The 
 
 " Enoch Morgan's Sons' Co. y. " Standard Varnish Works v. Fisher 
 
 Hunkele, 8 Fed. Cases, 724 (Case No. T. & Co., 153 Fed. 928. 
 
 4493). ^ M.J. Breitenbach Co. v. Spangen- 
 
 « Sprigg v. Fisher, 222 Fed. 964. berg, 131 Fed. 160. 
 
 " Jewish Colonization Assn. v. Solo- *' Bluthenthal & Bickart v. Mohl- 
 
 mon, 125 Fed. 994. But the contrary mann, 49 Fla. 275-1905. 
 
 seems to be held in Los Angeles Cream- '" Leidersdorf v. Flint, 50 Wis. 401- 
 
 ery Co. v. J. R. Newberry Co., 21 Cal. 1880. 
 
 Ct. App. 567; 132 Pac. 289 ("Santa " Merriam v. Holloway Pub. Co., 43 
 
 Ana butter" — geographical name). Fed. 450; Holeproof Hosiery Co. v. 
 
 So, also, in Lament v. Leedy, 88 Fed. Richmond Hosiery Mills, 167 Fed. 381 
 
 72, in which the registered trade-mark (bill not demurrable because certain 
 
 "Crystallized Egg" was regarded as words, used together, and complained 
 
 obviously descriptive and unappro- of, might legally be used separately); 
 
 priable. Investor Pvi). Co. v. Dobinson, 72 Fed. 
 
578 
 
 Pleading 
 
 defense of "imclean hands" need not necessarily be pleaded;*^ 
 but the court will less readily sustain this defense, where it is 
 not pleaded, as then complainant is not prepared to meet it.^* 
 
 "In order that a defendant may raise the question it must 
 be pleaded, imless the facts and circumstances appearing in the 
 case are such as would authorize the court, of its own motion, to 
 take notice of the fraud and deceit on the part of a person seeking 
 its protection.^* 
 
 603, 610; California Fig Syrup Co. v. 
 Improved Fig Syrup Co., 51 Fed. 296. 
 ^^ Memphis Keely Institute v. Leslie 
 E. Keely Co., 155 Fed. 964; Uri v. 
 Hirsch, 123 Fed. 568. 
 
 6' Laytrni Pure Food Co. v. Church & 
 Dwight Co., 182 Fed. 24, 32. 
 
 " FaOc V. Imerican W. I. T. Co., 71 
 App. Div. 320 (citing Fleischmann v. 
 Fleischmann, 7 App. Div. 280). 
 
CHAPTER XXI 
 Evidence 
 
 Section 318. Intent of defendant. 
 
 319. Difference between proof of cases involving a fanciful name, or 
 
 mark, and one involving secondary meaning. 
 
 320. Evidence connected with comparison of names or marks used by 
 
 the parties — sunilarity. 
 
 321. What is similarity? 
 
 322. Test of similarity is general impression made, not detailed exam- 
 
 ination. 
 
 323. Similarity does not mean exact likeness. 
 
 324. Care used by average buyer of the class of article in question must 
 
 be considered. 
 
 325. Character of the article, and the habits and intelligence of the 
 
 consumer. 
 
 326. Side by side comparison in the cou'rt room is not a proper final 
 
 test of similarity. 
 
 327. Evidence that the proportion of buyers of any article likely to be 
 
 deceived by defendant's acts is small, is not a defense. 
 
 328. Imitation of salient features. 
 
 329. Necessary physical requirements of the article must be considered. 
 
 330. Distance between competitors a factor in deciding as to similarity. 
 
 331. Deceit of ultimate purchaser, not of middleman, is the important 
 
 consideration. 
 
 332. Similarity of color, shape, size, etc. 
 
 333. Similarity of names. 
 
 334. Evidence to prove secondary meaning. 
 
 335. Proof of instances of actual bona fide deceit of purchasers. 
 
 336. Burden of proof. 
 
 337. Evidence of investigators employed by plaintiff. 
 
 338. Loss of business by complainant as evidence. 
 
 339. Time — presumption of continuance. 
 
 340. Judicial notice. 
 
 341. Weight and credibility of evidence. 
 
 342. Discovery and examination before trial. 
 
 343. Evidence of acts of employees. 
 
 344. Evidence of registration, effect of. 
 
 345. Evidence as to use of a trade-mark. 
 
 346. Inferences and presumptions. 
 
 No attempt will be made here to discuss the general rules of 
 evidence. Unfair competition cases do, however, involve several 
 
 579 
 
580 Evidence 
 
 problems of proof somewhat peculiar to themselves and these 
 will be considered below. 
 
 § 318. Intent of Defendant. — The necessity of proving fraud 
 or fraudulent intent is fully discussed in the chapter on "Intent," 
 to which the reader is referred. The argument which is so often 
 made for defendants in these cases, that plaintiff has failed to 
 prove specific fraud and fraudulent intent on defendant's part is 
 to argue in effect that the defendant's acts are no doubt unfair 
 to the plaintiff, but, as the defendant did not specifically intend 
 by such acts to injure the plaintiff no action lies. The court does 
 not so view the matter. If the court finds that the defendant's 
 acts are unfair to plaintiff, it will presume as a matter of law that 
 these acts' were done with fraudulent intent, not because the 
 court knows the state of the defendant's mind but because every 
 person is presumed to intend the natural consequences of all his 
 acts, knowingly committed. The question, therefore, is not the 
 mental state of the defendant but the effect of the defendant's 
 acts on the plaintiff's business. "It is always a question of fraud, 
 but not necessarily of actual fraud. The act, however innocent, 
 is considered constructively fraudulent, if the result would tend 
 to unfair trade, to confusion of goods, and to interference with the 
 rights of another." ^ 
 
 This is really the whole of the much discussed question of proof 
 of intent in unfair competition cases. Furthermore this is the 
 only practicable workable rule. It is almost impossible to prove 
 intent. To demonstrate the. state of another person's mind is al- 
 most an impossibility. The proof therefore as to the "intent" 
 of the defendant is complete with proof of what he has actually 
 done. 
 
 The application of this rule is seen in the following case: 
 
 The defendant had sold three bottles of whiskey, with com- 
 plainant's trade-mark, "W. H. McBrayer," to detectives, which 
 whiskey was not genuine whiskey of this brand. It also ap- 
 peared that defendant had in his possession a quantity of labels 
 carrying complainant's mark. Adams, J., said: 
 
 "Our conclusion is that the facts in evidence, with the rea- 
 sonable inferences which common experience and observation 
 require us to draw from them, disclose a continuing menace to 
 
 ' Manitowoc Pea-Packing Co. v. Numsen & Sons, 93 Fed. 196-1899 
 
 (C. C. A. 7th Cir). 
 
Fanciful Mabks and Secondary Meaning 581 
 
 complainant's business, which, under famiUar principles of equity, 
 entitles it to injunctive relief," ^ pages 393-4. 
 
 § 319. Difference between Proof of Cases Involving a Fanci- 
 ful Name, or Mark, and one Involving Secondary Meaning. — 
 When proof is exhibited that a fanciful name is already in use 
 as a trade-mark and further proof that after such use commenced 
 another person began to use it as his trade-mark on the same 
 class of goods, the court will presume that the second person acted 
 with fraudulent intent. 
 
 Where the name so used is not fanciful but is used by the 
 plaintiff or by the public to refer to the plaintiff's goods and in 
 such a manner as to give to the word a secondary or trade mean- 
 ing, proof must be exhibited to show that the defendant's use of 
 the name is not in its natural meaning but in its trade or secondary 
 sense. In such case, the defendant's fraud will not be presumed 
 from the mere similarity of the two names; the plaintiff must 
 also prove the existence of the secondary meaning of the name 
 he is using. 
 
 § 320. Evidence Connected with Comparison of Names or 
 Marks Used by the Parties — Similarity. — Unfair competi- 
 tion cases usually involve a comparison by the court of the 
 name or marks used by the plaintiff with those used by the 
 defendant. These may be termed questions of similarity. In the 
 first edition of this book the cases in which this question of sim- 
 ilarity is discussed were placed in a chapter entitled "What is Sim- 
 ilarity? " In the present edition they will be found in this chapter. 
 
 It has been said that proof of imitation or similarity rests in 
 (1) character of the merchandise on which the marks are used; 
 .(2) use to which the merchandise is put; (3) kinds of people who 
 order it; (4) manner in which they order it.' 
 
 These and similar questions must be considered in order to 
 arrive at an accurate understanding of the rules of evidence in 
 these cases. 
 
 §321. What is Similarity? — "Similarity, not identity, is 
 
 ^ Jvliits Kessler & Co. V. Goldslrom, Pneumatic Tool Co., 118 Fed. 852; 
 
 177 Fed. 393-1910 (C. C. A. 8th Cir.). Badische Anilin & Soda Fahrik v. 
 
 Similar proof has been held to justify Klipstein & Co., 125 Fed. 543. 
 an injunction in the following cases: ' I^gget & Myer Tobacco Co. v. 
 
 Leoer Bros. v. PasfieU, 88 Fed. 484; Hynes, 20 Fed. 883. 
 Chicago Pneumatic Tool Co. v. Phila. 
 
582 Evidence 
 
 the usual recourse, where one party seeks to benefit himself by 
 the good name of another." * 
 
 This statement of Judge Bradley has become an axiom of Unfair 
 Competition Law. It is with this sort of similarity, that this 
 chapter deals. 
 
 So long as there are many chancellors, so long will their opinions 
 on such a question differ. The New Jersey court of equity has 
 laid down the following rule: "If the counterfeit so closely re- 
 sembles the genuine as to mislead ordinary purchasers, buying 
 with the care usually exercised in such transactions, the use of the 
 counterfeit should be prohibited. An important part of this 
 rule, as it applies to this case, is that clause of it which directs 
 that, in determining whether the counterfeit so closely resembles 
 the genuine as to be Ukely to deceive the ordinary buyer, the court 
 must take into consideration the degree of care which buyers 
 usually exercise in buying such an article as that which is the 
 subject of the distinguishing mark; for it is a matter of common 
 knowledge that the ordinary buyer does not, as a general rule, 
 exercise as much caution in buying an article for which he pays a 
 few pennies as he does in purchasing a more valuable thing. The 
 instances are very rare, I suppose, where a purchaser exercises 
 as much care in bujdng a bottle of beer as he does in bujdng a 
 bottle of whiskey, a box of cigars, or a hat or a coat." ^ In Payton 
 & Co. V. Snelling, Lampard & Co.,^ Lord Macnaghten said: "I 
 think it is very desirable to bear in mind what Lord Cranworth 
 said on one occasion — that no general rule can be laid down as 
 to what is a colorable imitation or not; you must deal with each 
 case as it arises, and have regard to the circumstances of the 
 particular case." 
 
 "What degree of resemblance is necessary to constitute an 
 infringement is incapable of exact definition, as applicable to all 
 cases. All that courts of justice can do, in that regard, is to say 
 that no trader can adopt a trade-mark, so resembUng that of 
 another trader, as that ordinary purchasers, buying with ordinary 
 caution, are Ukely to be misled." ^ 
 
 § 322. Test of Similarity is General Impression Made, Not 
 Detailed Examination. — In deciding as to what is or is not 
 
 * Celluloid Mfg. Co. v. Cellonite N. J. Eq. 164-1892, at page 169. 
 Mfg. Co., 32 Fed. 94 at p. 97. ^ Kroppf v. Furst, 94 Fed. 150. 
 
 ' Wirtz V. Eagle Bottling Co., 50 » (1901) App. Cas. 308-10. 
 
Test of Similarity is General Impression Made 583 
 
 similar, the court should not depend on elaborate description 
 of the points of resemblance or those of difference; but should 
 decide by the impression created by the name or mark on the 
 ear or eye/ thus deciding the question on the same basis as the 
 purchaser who, in ordinary course of trading, is called upon to 
 judge as to the identity of the defendant's name. It should be 
 said here also that the buyer usually has not the chance of trial 
 by side-by-side comparison. Test of identity is not whether 
 a difference is recognized when the two competing articles are 
 placed side by side, but whether it will be recognized by a pur- 
 chaser when not having opportunity to compare.^ Such simi- 
 larity as will deceive is that likeness which renders, the average 
 buyer unable to distinguish the defendant's name or mark from 
 the memory of the plaintiff's name which he carries in his mind, 
 not such as will enable him to know them apart when the two are 
 put side by side before him. 
 
 Lord Russell, in Ldebig's Extract of Meat Co. v. Chemists Co- 
 operative Society, decided by the British Court of Appeal No- 
 vember 20, 1896,^ held that "one must be guided very largely 
 by the judgment one forms by the use of one's own eye- 
 • sight." 
 
 Fischer v. Blank i" holds that similarity is such resemblance 
 as "is calculated to deceive, and does, in fact, deceive the or- 
 dinary buyer making his purchases under the ordinary conditions 
 which prevail in the conduct of the particular traffic to which the 
 controversy relates. No inflexible rule can be laid down. Each case 
 must in a measure be a law unto itself," " It has often been held, 
 
 ' See Liggett & Myers Tobacco Co. power with a wise and judicial discre- 
 
 V. Finzer, 128 U. S. 182. tion. In cases such as this, it should 
 
 ' McDonald v. Mueller, 183 Fed. presume that the public makes use of 
 
 972-1910. the senses of sight and hearing, and 
 
 » 13 R. P. C. 736-38, 17 L. t. (N. S.) that it is possessed of a sufficient 
 
 298. See also p. 635 for case in court amount of intelUgence to note the 
 
 below. difference the senses convey. The 
 
 '» 138 N. Y. 244-52-1893; 33 N. E. court ought not to interfere with 
 
 1040. the freedom of conduct of trade and 
 
 " Cited in Dunn Co. v. Trix Mfg. with general business competition. 
 
 Co., 50 App. Div. (N. Y.) 75-1900; Its power to restrain should be re- 
 
 63 N. Y. Supp. 333; Munro v. Tousey, served to prevent fraud and imposture 
 
 129 N. Y. 38-43-1891; 29 N. E. 9; from some real resemblance in the 
 
 14 L. R. A. 245n. "A court of equity name and appearance of the publica- 
 
 should proceed in the exercise of its tions.'' 
 
584 Evidence 
 
 also, that direct comparison of the articles is a test of similarity. 
 "The eye, at a glance, takes in the whole of one exhibit and the 
 whole of another; and the comparison thus made of the two is 
 the surest, and the only satisfactory way of satisfying the judg- 
 ment as to the existence of the alleged deceptive imitation." ^^ 
 
 "It is not a question whether the defendant has in all respects 
 imitated the trade-mark of the complainant, but whether he has 
 so imitated it that the purchaser has been imposed on." ^^ 
 
 This was formerly quite generally regarded as the rule. Its 
 fallacy is obvious, however, when one considers how seldom in 
 actual purchase of goods the buyer has the opportunity of plac- 
 ing the various brands of competing goods side by side. 
 
 § 323. Similarity Does not Mean Exact Likeness. — Sim- 
 ilarity does not mean exact likeness — exact facsimile — a pre- 
 cise copy. If the court decides the likeness is sufl&ciently near 
 to cause deception of the ordinary purchaser, this is enough. 
 It need not be such an imitation that the two cannot be dis- 
 tinguished except by an expert or upon a critical examination 
 by a person who knows the genuine article well. It is sometimes 
 even sufficient that there are points of resemblance. The Su- 
 preme Court of the United States has discussed this question in ' 
 McLean v. Fleming. ^^ 
 
 "Much must depend, in every case, upon the appearance and 
 special characteristics of the entire device; but it is safe to de- 
 clare, as a general rule, that exact similitude is not required to 
 constitute an infringement, or to entitle the complaining party 
 to protection. If the form, marks, contents, words, or the special 
 arrangement of the same, or the general appearance of the al- 
 leged infringer's device, is such as woiild be likely to mislead one 
 in the ordinary coiu-se of purchasing the goods, and induce him to 
 suppose that he was pui'chasing the genuine article, then the simili- 
 tude is such as entitles the injured party to equitable protection" 
 (id. p. 253). * * * "Difficulty frequently arises in determining 
 the question of infringement; but it is clear that exact similarity 
 is not required, as that requirement would always enable the 
 wrongdoer to evade responsibility for his wrongful acts. Color- 
 able imitation, which requires careful inspection to distinguish 
 
 "LoriUard Co. v. Peper, 86 Fed. ^"' Enoch Morgan & Sons Co. v. 
 956-1898, at p. 958 (C. C. A. 8th /^wnfceZe, Fed. Case No. 4,493. 
 Cir.) . " 96 U. S. 245-55-1877 : 24 L. ed. 828. 
 
Care Used by Average Buyer 585 
 
 the spurious trade-mark from the genuine, is sufficient to main- 
 tain the issue; but a court of equity will not interfere when ordi- 
 nary attention by the purchaser of the article would enable him at 
 once to discriminate the one from the other. Where the similarity 
 is sufficient to convey a false impression to the public mind, and is 
 of a character to mislead and deceive the ordinary purchaser in 
 the exercise of ordinary care and caution in such matters, it is 
 sufficient to give the injured party a right to redress." id. p. 255. 
 
 Here again is seen the great necessity of refraining from laying 
 down exact rules and limits to be enforced. To be able to do jus- 
 tice in all cases, the court must be governed by elastic doctrines.'^" 
 
 § 324. Care Used by Average Buyer of the Class of Article in 
 Question Must be Considered. — Similarity such as will deceive 
 the critical, well-posted buyer is not the degree of likeness neces- 
 sary to this action. It is the buyer who uses ordinary caution 
 in making his purchase, who is buying with the care usually ex- 
 ercised in such transactions, who must be deceived by this simi- 
 larity. He who buys a bottle of ale does not use as much care 
 as he who buys a watch. He who buys a handkerchief does not 
 usually examine the goods offered him as carefully as he who 
 purchases a suit of clothes." 
 
 The class of persons who customarily purchase an article must 
 be considered, in deciding as to what constitutes similarity. Two 
 names made up of technical words may be entirely distinct to the 
 scholar's eye and ear and yet to an milearned person they appear 
 identical." 
 
 "" Colman v. Crump, 70 N. Y. 573- " WiHz v. Eagle Bottling Co., 50 
 7&-1877. "It is not necessary that N. J. Eq. 164-1892; 24 Atl. 658; 
 the symbol, etc. * * * should be Fairbanh Co. v. Bell Mfg. Co., 77 Fed. 
 a facsimile, a precise copy, of the 869-1896; De Voe Snuff Co. v. Wolff, 
 original trade-mark, or so close an 206 Fed. 420-423. "It may be true 
 imitation that the two cannot be dis- that the cautious and discriminating 
 tinguished except by an expert, or purchaser is not likely to be so misled; 
 upon a critical examination by one but the protection accorded to a trade- 
 familiar with the genuine trade-mark, mark is not limited to the cautious and 
 * * * If the resemblance is calcu- discriminating customer, but em- 
 lated to deceive the careless and un- braces the 'ordinary' or 'unwary' pur- 
 wary; and thus to injure the sale of the chaser as well." 
 goods of the proprietor of the trade- " Fairhank Co. v. Bell Mfg. Co., 
 mark, the injured party is entitled 77 Fed. 869-1896 (C. C. A. 2d 
 to relief." See also Talkot v. Moore, Cir.). 
 6 Hun (N. Y.) 106-1875., 
 
586 Evidence 
 
 The maker of goods, in chdosing a name, is not bound to in- 
 sure the negUgent buyer. Neither he nor his competitor has a legal 
 right to the enjoyment of the trade of the careless or heedless or of 
 those who have no preference as to which brand of goods they 
 purchase. The law of unfair trade is intended to protect the 
 average buyer of the particular article involved, buying under 
 ordinary conditions. The buyer must be considered as he exists. 
 If, in buying certain kinds of goods, the average purchaser is 
 heedless and careless that fact should be fully recognized. 
 
 The method of selling the goods, and the ordinary circum- 
 stances attending their sale must be kept in mind. While the 
 court is not bound to interfere, where ordinary attention will 
 enable the purchasers to discriminate between the trade marks 
 used on the goods manufactured by different parties, neverthe- 
 less, the character of the article as well as the use to which it is 
 put, the kind of people who are likely to ask for it, and the manner 
 in which it is probable it will be bought, must not be lost sight 
 of. 10 
 
 § 325. Character of the Article, and the Habits and Intelligence 
 of the Constuner. — The court will consider the intelhgence which 
 the ordinary purchasers, buying with ordinary caution, will use 
 in buying the article involved.^^ The perceptions of the ex- 
 tremely stupid or extremely brilliant mind are not to be con- 
 sidered. The law presumes that the purchaser whom it must 
 protect en masse, is a man of ordinary intelligence and sense, and 
 it is further presumed that in the buying he will use the degree of 
 care ordinarily and customarily used in buying the particular 
 article in question — no more, no less. In considering whether 
 or not one device is similar to another, it is extremely important 
 to know the intellectual capacity of the purchasers who will be 
 called on to distinguish them. Two marks each composed of a 
 device made of two elephants, for instance, with printed matter, 
 might appear entirely different to one who could read, while, to 
 
 " Popham V. Cole, 66 N. Y. 69- Wis. 401-1880; 7 N. W. 252; Eggers 
 
 1876; 23 Am. Rep. 22, and cases there v. Hink, 63 Cal. 445-1883; 49 Am. 
 
 cited; Morgan's Sons Co. v. Troxell, Rep. 96; Orr Ewing & Co. v. Johnston 
 
 23 Hun, 632-1881; reversed in 89 N. & Co., L. R. 13 Ch. Div. 434-1880; 
 
 Y. 292-1882; 42 Am. Rep. 294; Read Apollinaris Co. v. Scherer, 27 Fed. 18- 
 
 Bros. V. Richardson Co., 45 L. T. N. S. 1886 (C. C. S. D. N. Y.). 
 
 54-1881; Beord V. TMrner, 13 L.T.N. "McLean v. Fleming, 96 U. S. 
 
 S. 747-1866; Leidersdorf v. Flint, 50 245-1877, at p. 251; 24 L. ed. 828. 
 
Character op Article; Habits, etc., of Consumer 587 
 
 one who could not read, they might seem exactly alike. Differ- 
 ences in wrappers for a college man's scarf which, to college 
 students, would be entirely adequate to distinguish the goods, 
 might be utterly inadequate to distinguish two different brands 
 of calico sold to the natives of the South Sea Islands or among any 
 ignorant class of consumers. 
 
 In Johnston & Co. v. Orr Swing & Co.,^^ plaintiffs had been 
 using a label, the main feature of which was a device of two ele- 
 phants. Defendant colorably reproduced this label. The plain- 
 tiffs' mark was the only mark using the figure of elephants known 
 in the Oriental market, where plaintiffs sold their goods; and it 
 became known as the "two elephants." The main resemblance 
 between the two labels was the fact that on each was the figure 
 of two elephants. Held, the label of the defendant might easily 
 mislead the natives. Said the court: "To such persons, or at 
 least to many of them even if they took notice of the differences 
 between the two labels, it might probably appear that these were 
 only differences of ornamentation, posture, and other accessories, 
 leaving the distinctive and characteristic symbol substantially 
 unchanged." No actual deceit was proved. "But in this case, 
 the plaintiffs judged it necessary to proceed without waiting till 
 actual deceit was proved, and I think they judged rightly, for as 
 James, L. J., said (13 Ch. Div. 464) 'the very Ufe of a trade-mark 
 depends upon the promptitude with which it is vindicated'" 
 (id. pp. 229-30). 
 
 "A consumer who has been accustomed to purchase an article 
 in a dress or package which has become familiar to him does not 
 stop to read and examine. Many of the consumers of beer are 
 unable to read, and many are foreigners and unacquainted with 
 the English language. All consumers, whether able to read or 
 not, are in fact guided by the general appearance of the packages 
 or label which is before them."" 
 
 Plaintiffs manufactured French polish in London, and de- 
 veloped a large trade in Bombay, where the goods, from the two 
 red medals on the label, came to be known as "Lai Mohur" or 
 "Lai Chap" (meaning "red medal or stamp"). Defendants 
 then began to sell their polish in Bombay, with labels differing 
 
 « L. R. 7 App. Cas. 219-25-1882. 1902 (C. C. A. 9th Cir.). So also Wil- 
 ^'Kostering v. Seattle Brewing & kinson v. Griffith Bros. & Co., 8 Rep. 
 Malting Co., 116 Fed. 620 at page 621- Pat. Cas. 370. 
 
588 Evidence 
 
 from plaintiffs'; except that they bore two red medals, in much 
 the same position as plaintiffs'. Held, on the evidence, that 
 though defendants' label might not deceive the British public, it 
 tended to deceive the Bombay public. Injunction was granted. 
 
 The inexpensiveness of the article, and the fact that it is often 
 called for by careless and illiterate persons, or foreigners, un- 
 familiar with English, will be taken into account. The bearing 
 of such facts is aptly expressed by Barrett, J., in Morgan's Sons 
 Co. V. Troxell,^ as follows: "While there is an almost ostenta- 
 tious display of variation in matters not likely to attract the 
 attention of the casual purchaser, there is a substantial similarity 
 in the picture to which the eye has become accustomed. In this 
 connection, we must not lose sight of the character of the article, 
 .the use to which it is put, the kind of people who ask for it, and 
 the manner in which it is ordered. Very broad scene painting 
 will deceive an igno^-ant, thoughtless or credulous domestic, 
 looking for an article in common and daily use, and of no par- 
 ticular interest to her personally. The same kind of deception 
 would be instantly detected by an intelligent woman of the 
 world, looking for her favorite perfume, soap or dentrifice, or by 
 a man of luxurious tastes, inquiring for some special brand of 
 champagne." 
 
 § 326. Side by Side Comparison in the Court Room is Not 
 a Proper Final Test of Similarity. — The average purchaser 
 buying by mail or in a shop has no chance to compare the plain- 
 tiff's goods with the defendant's. If he has one article before him, 
 the best he can do is to compare it with his memory of the other. 
 For this reason it is not a fair test of the resemblance of two 
 articles or labels or names to compare them in the court room 
 solely by putting them side by side. 
 
 "It is not necessary that the resemblance should be such as 
 would mislead an expert, nor such as would not be easily detected 
 if the original and spurious were seen together (headnote)." ^^ 
 
 "Now to one scanning the detailed description of these two 
 Dutch scenes, or laying the pictures side by side, there could be 
 no trouble in distinguishing the one from the other. But this 
 is not the test." ^'' 
 
 The test of similarity is not visual comparison but memory 
 
 2» 23 Hun (N. Y.), 632-36-1881. ">" Heileman Co. v. Independmt Co., 
 
 ^o" Shaw Co. V. Mack, 12 Fed. 707. 191 Fed. 48&-97-1911. 
 
Side by Side Compahison Not Final Test 589 
 
 comparison. This fact is often overlooked by courts in unfair 
 competition cases. It has actually happened in more than one' 
 trial of these cases that having the two articles before him the pre- 
 siding judge has actually mistaken the one for the other and yet 
 has felt it his duty to go on taking evidence as to whether they 
 were sufficiently similar as to cause confusion, forgetting that 
 if they were sufficiently similar to be confused when side by side, 
 on his bench in the quiet of a court room, it was practically im- 
 possible for both of them to remain on the market without 
 being constantly confused in the hurry and bustle of everyday 
 trading. 
 
 It is the tendency to carelessness on the part of buyers that 
 makes unfair competition profitable and possible commercially. 
 In Stuart v. F. G. Stewart Co.,^^ appellant began in 1891 to make 
 and sell "Stuart's Dyspepsia Tablets" and advertised them 
 widely. Appellee knew of complainant and his business when, 
 in 1895, he put on the market "Dr. Stewart's Dyspepsia Tablets" 
 in boxes similar to appellants'. Held, "Comparison * * * 
 is not the test of infringement. The purchaser has not the ad- 
 vantage of comparison. A specific article of approved excel- 
 lence comes to be known by certain catchwords easily retained 
 in memory, or by a certain picture which the eye readily 
 recognizes. The purchaser * * * is not bound to study or 
 reflect. He acts upon the moment. He is without the oppor- 
 tunity of comparison. It is only when the difference is so gross 
 that no sensible man acting on the instant would be deceived 
 that it can be said that the purchaser ought not to be protected 
 from imposition. Indeed, some cases have gone to the length 
 of declaring that the purchaser has a right to be careless. * * * 
 However that may be, the imitation need only be slight, if it 
 attaches to what is most salient."" Here the purchaser, de- 
 siring the remedy of the appellant, to which his attention had 
 been attracted by the advertisement, or which pcfesibly he had 
 before purchased, knew the remedy as 'Stuart's Dypepsia Tab- 
 lets,' and that it was in a blue wrapper. The name caught the 
 ear; the color caught the eye. * * * We think it would 
 require more than the care ordinarily used * * * to expect 
 
 " 91 Fed. 243-45-1899 (C. C. A. ^'^ Pillsbury v. Flour Mills Co., 24 
 7th Cir.). U. S. App. 395, 407; 64 Fed. 841, 
 
 847. 
 
590 Evidence 
 
 that * * * a purchaser would deUberate over, or be warned 
 'by, the addition of the prefix 'Dr.'", (id., pp. 245-46). ^^ 
 
 § 327. Evidence that the Proportion of Buyers of any Article 
 Likely to be Deceived by Defendant's Acts is Small, is Not 
 a Defense. — The court will enjoin a defendant even though it 
 appears that his acts in all likelihood will not deceive more than 
 a small percentage of his customers. Such evidence may be com- 
 petent on the question of damages. It is not important if com- 
 petent on question of the right of plaintiff to an injunction.^^" 
 
 § 328. Imitation of Salient Features. — Imitations may be 
 slight and stiU constitute "similarity," if they attach to salient 
 features. Many articles come to be known by a pecuUarity they 
 possess, which is usually described by a catchword. The im- 
 portant question is, What part of the label or name will the 
 buyer look at? What will he actually take in, actually see, when 
 he buys under ordinary conditions? It is a physical fact that the 
 average person will not, can not, take in at a casual glance all, 
 or even a large part, of the detail of what he looks at.^^ The ques- 
 tion is what part of the names or marks, which are alleged to be 
 similar, does the average ordinary buyer see when he looks 
 at them; what feature of a label or container beconies familiar 
 to the average buyer of the article. We do not hear all that is 
 spoken in om- hearing, only a part is noticed by us, with sufficient 
 detail for us to retain an impression of it which we will recall when 
 we hear it again. Few people would be struck with the difference 
 between the names "Stuart's Dyspepsia Tablets" and "Dr. Stew- 
 art's Dyspepsia Tablets," and yet one word in four is different. 
 
 ^^ Meyer v. Dr. Bull Vegetable Medi- fraud, of deceit, or likelihood of con- 
 awe Co., 58 Fed. 884-1893 (C. C. A. fusion between plaintiff and defendant 
 7th Cir.). Plaintiffs sold "BuU's has been discovered in the books which 
 Cough Syrup," and "Dr. Bull's will fit all cases, and it is weU that 
 Cough Syrup." Defendant sold in this is so, for were there such rules 
 similar wrappers, "Dr. B. L. BuU's to be found, eqmty would sometimes 
 Celebrated Cough Syrup." This was be foimd to have so bound herself 
 enjoined. "Bull's Cough Syrup" is, by this same rule as to be unable to 
 in one sense, quite different from render aid in some future case of real 
 "Dr. B. L. Bull's Celebrated Cough injustice. 
 
 Syrup," but the use of the latter was "" Bushmore v. Badger Brass Co., 
 
 enjoined not because of the likeness 198 Fed. 379. 
 
 between them, but to protect the pur- " Blackwell v. Crahb, 36 L. J. Ch. 
 
 chaser, who has no chance for accurate N. S. 504^1867. 
 comparison. No rule of measure of 
 
Physical Requirements Must be Considered 591 
 
 The average buyer seeks a sign, some special earmark of the 
 brand he has in mind. It may be color — or a design — or a 
 peculiar shape or name. Once his eye sees that or his ear hears 
 it, he is satisfied. He is careless — yes, possibly, but if that is 
 the way the average man buys that sort of goods, he may right- 
 fully demand that the law protect him from deceit when he so 
 purchases. There have been cases which have held that a buyer 
 has a right to be careless. He certainly has a right to be careless 
 where the article involved is sold at a very low price and is habit- 
 ually bought by all with Uttle or no inspection. 
 
 § 329. Necessary Physical Requirements of the Article Must 
 be Considered. — Sometimes several articles differing in many 
 ways are made by various manufacturers in the attempt to 
 serve a specific purpose, the physical limitations of which compel 
 all the makers to construct their goods in certain respects in a 
 very similar manner. In the absence of patent rights, no one 
 can monopolize the mechanical elements necessary to this con- 
 struction and no one can appropriate exclusively to himself a 
 name which is based on a description of these common physical 
 limitations. In other words, no principles of construction or 
 names descriptive of them which are essential to a successful 
 practical operation of a device and serve to promote its efficiency, 
 may be appropriated, and proof of similarity in these particulars 
 is not usually evidence of unfair competition.^* 
 
 The limitations of the right of one person to imitate an article 
 manufactured by another are shown in Enterprise Mfg. Co. v. 
 Landers, Frary & Clark.^^ There not only had the defendants 
 conformed their goods to complainant's in size and general shape, 
 but also reproduced in all minor details every line and curve; 
 superfluous metal was put into the driving wheels, giving a very 
 characteristically similar effect. The goods were then dressed 
 with combinations of color and decorations exactly copied or 
 closely simulated as to style of letters and details of ornament, 
 except that on one mill was found the complainant's name and on 
 the other the defendant's. 
 
 This was held to be "a most aggravated case of unfair trading," 
 and that such reproduction of unnecessary lines and curves and 
 simulations of arbitrary designs and striking combinations of 
 
 '* Marvel Co. v. Pearl, 133 Fed. ^^ 131 Fed. 240-1904 (C. C. A. 2d 
 160-1904 (C. C. A. 2d Cir.). Cir.), at p. 241. 
 
592 Evidence 
 
 color would be restrained by a court of equity when they were 
 so close as to show an intent to appropriate the trade of a com- 
 petitor. 2*° 
 
 § 330. Distance Between Competitors a Factor in Deciding 
 as to Similarity. — It has been stated that, in considering the 
 question of unfair competition, the geographical situation of the 
 person who will buy the goods in question is to. be considered. 
 This is true, but not unqualifiedly so. Formerly, it would have 
 been assumed in the absence of most positive proof that a party 
 might carry on his own business under his own name in Chicago, 
 notwithstanding the fact that parties had established business 
 under the same name in New York. Ball v. Best,'^ held that a 
 Chicago house should be enjoined because both did a mail order 
 business, by reason of which a New York house was confused 
 with it, by buyers at points far distant from both Chicago and 
 New York, and an injunction was issued. In Randall v. British 
 & American Shoe Co.,^ it was held, that although plaintiff's shop 
 was five miles fropi defendant's in London there was unfair com- 
 petition from similarity of name. 
 
 The effect of imitation depends very much upon propinquity. 
 In many cases the use of a similar trade-mark, in lofiaUties very 
 remote from each other, would not justify an inference that the 
 establishments were those of a common proprietor, and so would 
 not result in damage or support an allegation of fraud, while 
 if they were near each other such an inference would be legitimate 
 and necessary.^ 
 
 25" Marvel Co. v. Pearl, 133 Fed. 160; eight other shops bearing this name, 
 
 see also Rushmore v. Saxon, 170 Fed. Defendants organized the "London 
 
 1021-1909, C. C. A. 2d cir., June, 1909, American Shoe Company" and, on 
 
 mod. and aft., 158 Fed. 499. objection of the plaintiff, took the 
 
 =i8 135 Fed. 434-1905 (C. C. ■ name "The British & American Shoe 
 
 111-)- Company." Plaintiffs were the first 
 
 " [1902] 2 Ch. 354: 19 R. P. C. 393. to open shops that sold only American 
 
 In 1897, plaintiffs opened shop in Re- shoes. They spent £5,000 in adver- 
 
 gent street exclusively for the sale of tising this business. Defendants' shop 
 
 American shoes under the name was five miles from nearest shop of 
 
 "American Shoe Company." Plain- plaintiff. Actual deceit was shown, 
 
 tiffs, a limited company, dealt largely Held, that both names used by de- 
 
 in English shoes. They adopted the fendants were calculated to deceive, 
 name "American Shoe Company" to '^Cady v. SchvUz, 19 R. I. 193- 
 
 distinguish that business from their 1895; 32 Atl. 915; 29 L. R. A. 
 
 EngUsh business. They later opened 524. 
 
Deceit of Ultimate Purchaser, not or Middleman 593 
 
 § 331. Deceit of Ultimate Purchaser, Not of Middleman, is 
 the Important Consideration. — As has been seen, it is not 
 necessary to support an action for unfair competition that the 
 vendor of goods should do the deceiving. It is enough if he put 
 it in the power of anyone else, middleman or retailer, to deceive 
 the ultimate purchaser. Hence the degree of identity and imita- 
 tion which must be considered is not that which would deceive 
 the jobber or immediate purchaser but the consumer of the goods. 
 "In the sharp contest between the individual manufacturer, 
 who strives to acquire and retain the fruits of industry and 
 honesty, and the field of keen rivals, seeking to wrest from him 
 the prize of the pubhc good-will, the inventive ingenuity of the 
 infringer has conceived a great variety of devices for evading 
 the estabhshed rules of fair dealing. Among the later of these 
 devices are acts professedly within legal limitations, but mani- 
 festly designed to be afterward so made available by other acts 
 as to deceive the public. In such cases courts of equity, looking 
 beyond the original acts, and finding that their ultimate gbject 
 and effect were to enable and induce the retail seller of a fraudu- 
 lent imitation to pahn it off on an unsuspecting public for the 
 genuine article, and thus to contribute to the infringement upon 
 the rights of the original owner, have not hesitated to apply the 
 remedy." ^ 
 
 To entitle plaintiff to relief it is not necessary to prove that 
 any customer of plaintiff has been deceived by anything done by 
 defendant, it being suJSBcient to show that defendant knowingly 
 puts it in the power of retail dealers to deceive their customers.^" 
 The defendant may have sold the goods to one who has in turn 
 sold the goods to other jobbers. The question is, Were the 
 goods an imitation of those of a rival, when they left defendant's 
 hands? Although all the jobbers know whose make of goods 
 they are, yet if the retailer is able, by reason of their get-up, 
 to use them fraudulently, the maker may be held liable to one 
 who suffers loss from the retailer's unfair trading." 
 
 Ambiguity in a name, or the fact that, while similar to that 
 
 ^ Hostetter Co. v. Sommers, 84 Fed. " New England Awl & Needle Co. 
 
 33»-35-1897 (C. C. S. D.- N. Y.). v. Marlborough Awl & Needle Co., 
 
 '"Williamson Corset & Brace Co. 168 Mass. 154^1897; 46 N. E. 
 
 V. Western Corset Co., 70 Mo. App. 386. 
 424-1897. 
 
594 Evidence 
 
 of the plaintiff, it is so different that some people construe it one 
 way and some another, will not prevent injunction from being 
 issued against it. It may still be held similar within this rule. 
 It is not necessarily important that it has been understood differ- 
 ently by different persons. That does not prove dissimilarity.^^ 
 
 § 332. Similarity of Color, Shape, Size, etc. — Generally speak- 
 ing, a trader will not be entitled, even after long and exclusive 
 use, to monopolize a particular color or a particular shape, size, 
 or style for the label or wrapper of a particular class of goods. 
 The trend of the law is strongly toward the proposition that 
 under ordinary circiunstances the adoption of packages of pe- 
 culiar form and color alone, imaccompanied by any distinguish- 
 ing symbol, sign, or seal, is not sufficient to constitute a trade- 
 mark.'^ This general rule has been appUed in a variety of ways. 
 In Fleischmann v. Starkey,^^ for example, it was held that no ex- 
 clusive right could be acquired to use a yellow-colored label for 
 packages of yeast. Nor can there be an exclusive right in the 
 nature of a trade-mark, to the use of a barrel of pecuUar form and 
 dimensions, irrespective of any marks or devices stamped upon 
 or connected with it.'^ In Brown v. Seidel,^^ defendant closely 
 imitated plaintiffs' package in the size, form, wrappings, and 
 color, but in the words and arrangement of the labels, the differ- 
 ence was marked. Plaintiffs were held (one judge dissenting) 
 not to be entitled to an injunction. The court quoted the lan- 
 guage of Heinz v. Lutz,^'' to the effect that "the offending label 
 must be such that it is likely to deceive persons of ordinary in- 
 telligence." And the court doubts whether "the mere resem- 
 blance, accidental or otherwise, in the size and style of putting 
 up packages, is of itself sufficient to justify the interference of a 
 court of equity." 
 
 It does not follow, however; that while the imitation of a par- 
 ticular feature, such as color or shape, would not, if standing 
 alone, be restrained, yet, if there is imitation in several such 
 features producing misleading likeness of general appearance, an 
 
 " Singer Mfg. Co. v. Loog, 8 L. R. " Moorman v. Hoge, 2 Sawy. 78- 
 
 App. Cas. 15-18-1882. 1871 (C. C. Cal.). 
 
 " Philadelphia Novelty Mfg. Co. v. »» 153 Pa. St. 60-72-1893; 25 Atl. 
 
 Rouss, 40 Fed. 585-1889 (C. C. S. 1064. 
 
 D. N. Y.). 37 146 Pa. St. 592-608-1891; 23 
 
 » 25 Fed. 127-1885 (C. C. R. I.). Atl. 314. 
 
Similarity of Names 
 
 595 
 
 injunction will not be issued expressly against the use of a par- 
 ticular feature, such as color, and also generally against the use 
 of all the features in combination. In Sterling Remedy Co. v. 
 Spermine Medical Co.,^^ there was a clear and deliberate imitation 
 of the peculiar and unusual shape and color of labels and style of 
 box adopted by the complainant, as well as of letter press and of 
 the name applied to the goods. Held, that there should be an 
 injunction against the form of tablet and shape of box as well as 
 against the use of infringing names. So also Franck v. Frank 
 Chicory Co.,^^ the use of a particular label was specifically pro- 
 hibited, where there had been imitation in other respects also. 
 The court in such cases is not bound to limit its injunction to the 
 combined use of all the features of imitation. 
 
 § 333. Similarity of Names. — The cases given in the note below 
 are rulings of various courts on what are and are not similar 
 names. The foregoing rules apply in general, but in the last 
 analysis, local conditions, the peculiar facts of each case and 
 other evidences of fraud in addition to the similarity of the names, 
 are all considered by the court.^" 
 
 »«112 Fed. 1000-1901 (C. C. A. 
 7th Cir.). 
 
 « 95Fed.818-1899(C.C.E.D. Wis.). 
 
 *" Civil Service Supply Association 
 V. Dean, L. R. 13 Ch. Div. 512-1879. 
 Plaintiffs had a store in Queen Vic- 
 toria street. In 1877, they opened 
 a store for boots and shoes at Bed- 
 ford, with an entrance on Tavi- 
 stock street. Defendant was a boot- 
 maker having a shop on Bedford 
 street with an entrance also on the 
 Strand. In 1877, defendant placed 
 upon his shop a sign bearing the 
 words "'civil Service Boot Supply" 
 and in his window a card with the 
 words "Civil Service" in large let- 
 ters. It was admitted on the trial 
 that the words "Civil Service" were 
 used by many other shops in London. 
 The court held that it was not shown 
 that the shop of defendant had been 
 represented to any of the witnesses 
 as that of the plaintiffs; that, inas-* 
 
 much as the plaintiffs had never sold 
 boots or shoes until 1877, there could 
 be no impropriety in defendant put- 
 ting up the signs he did. No per- 
 son desiring to get into the Tavistock 
 street shop could have been misled 
 when he went into a shop opening 
 in the Strand. These rules of trade 
 are made for the general public and 
 not for those who are willing to be 
 misled and to believe that when they 
 are going in one street they are go- 
 ing in another. Goodwin v. Ivory 
 Soap Co., 18 R. P. C. 389-92-1901; 
 not trade-mark case. Goodwin began 
 to sell Ivy soap in 1889, and in 1899 
 began action to restrain defendants 
 from selling Ivory soap in England. 
 It was admitted Ivory soap had been 
 sold in England prior to 1889. Held, 
 the two soaps were put up in an en- 
 tirely different manner, so no mistake 
 could result. The only ground plain- 
 tiff has for recovery is similarity of 
 
596 
 
 Evidence 
 
 § 334. Evidence to Prove Secondary Meaning. — Second- 
 ary meaning cannot be proved on the same CAddence that 
 
 name and the consequent liability of 
 resulting deception. Held, on appeal, 
 that "Simply because the word 'Ivy' 
 may have some sort of similar sound 
 to the word 'Ivory,' if you do not pro- 
 nounce the word 'Ivy' properly, the 
 plaintiff asks the court to assume as 
 the inevitable deduction that what the 
 defendants are doing must be calcu- 
 lated to deceive. It is impossible to 
 my mind to make any such deduc- 
 tion from the facts." Cooper & Mc- 
 Lebd V. Maclachlan, 19 R. P. C. 
 27-1901. After 1875, plaintiffs used 
 with their firm name the words "Cas- 
 tle Brewery." They were located 
 in Edinburgh. In 1872, defendants 
 opened a brewery at Govan, which 
 plant they called "Castle Vaults." 
 In 1900, they opened a brewery near 
 Edinburgh which they called "Castle 
 Brewery." The defendant had had a 
 "Castle Brewery" at Glasgow since 
 1888 and had used the name "Castle 
 Beer." No proof of deceit — injunc- 
 tion refused. Upheld on appeal. Lee 
 V. Haky, L. R. 5 Ch. App. Cas. 155- 
 1869. The plaintiffs had, for a series 
 of years, carried on business as coal 
 dealers in Pall Mall, London, under 
 the name of the "Guinea Coal Com- 
 pany." The defendant, who had been 
 their manager, finally set up a business 
 in the same street under the same style 
 of "The Pall MaU Guinea Coal Com- 
 pany," and, while it appeared that 
 there were other Guinea Coal Com- 
 panies in London so that the plain- 
 tiffs did not have the exclusive right 
 to the use of the trade-mark "Guinea 
 Coal Company," yet the court held 
 that they were entitled, as against the 
 defendant, to be protected in the use 
 of the name. " But the principle upon 
 
 which the cases on this subject pro- 
 ceed is, not that there is property 
 in the word, but that it is a fraud on a 
 person who has established a trade, 
 and carries it on under a given name, 
 that some other person should assume 
 the same name, or the same name with 
 a slight alteration, in such a way as to 
 induce persons to deal with him in the 
 beUef that they are dealing with the 
 person who has given a reputation to 
 the name" (id. p. 161). This case 
 goes further than it is necessary to 
 carry the rule in the foregoing case, 
 because the words "PaU MaU Guinea 
 Coal Company" could be truthfully 
 used by both parties. Both sold the 
 coal in Pall Mall for a guinea a ton. 
 Army & Navy Co-operative Society 
 V. Army, Navy & Civil Service Co- 
 operaiive Society of South Africa, 
 Ltd., 19 R. P. C. 574-76-1902. Plain- 
 tiff had been incorporated for thirty 
 years. Held, on hearing for interlocu- 
 tory injunction that the name was cal- 
 culated to deceive. "The plaintiffs 
 have no right to the words 'Army and 
 Navy' or any combination of those 
 words. Their right lies in this, that 
 they may sue if a defendant is fraud- 
 ulently adopting a name for the pur- 
 pose of pretending that his trade is 
 their trade, and if he be not fraudu- 
 lent at all, still the plaintiffs may sue 
 'in property,' if he is adopting a 
 name the result of which will be that 
 the defendant will be taking the 
 plaintiffs' property in the sense that 
 persons will go to the defendant to 
 trade with him when they meant to 
 go to the plaintiffs, meaning to trade 
 with them." Choynski v. Cohen, 39 
 Cal. 501-1870. Plaintiff had for some 
 years conducted a bookstore called 
 
Evidence to Prove Secondary Meaning 
 
 597 
 
 suffices in cases where the mark is purely fanciful. In sec- 
 ondary meaning cases, the mere proof by the plaintiff that the 
 
 the "Antiquarian Book Store." This 
 name was placed on the sign and 
 uniformly used in advertising and in 
 all transactions. He now sought to 
 enjoin defendant from conducting a 
 rival store under the name of the 
 "Antiquarian Book & Variety Store." 
 Held, that plaintiff could claim no 
 exclusive right to use the word "Anti- 
 quarian" as part of his trade-mark or 
 trade name, and that he was entitled to 
 no relief. Weinstock, Lvhin & Co. v. 
 Marks, 109 Cal. 529-1895; 42 Pac. 
 142; 30 L. R. A. 182. Plaintiffs, in 
 1874 opened the "Mechanics' Store." 
 Defendant, in 1887 opened the "Me- 
 chanical Store." "As we view the 
 picture presented by the findings of 
 fact, the question as to what may or 
 may not be the subject of a trade- 
 mark is not the problem to be solved.- 
 That these words are of a kind that 
 may be used as a trade name we have 
 no doubt, and having established 
 that fact we are required to pur- 
 sue the investigation no further. 
 That certain names and designa- 
 tions which may not become tech- 
 nical or specific trade-marks may be- 
 come the names of articles or of places 
 of business, and thereby the use 
 thereof receive the protection of the 
 law, cannot be doubted, for the cases 
 everywhere recognize that fact" (id. 
 pp. 535-36). "* * * And that the 
 words 'Mechanics' Stbre' may be 
 made a trade name, and the user 
 thereof become entitled under the law 
 to protection from pirates preying 
 upon the sea of commercial trade, 
 we have no doubt. We think the 
 defendant should be restrained from 
 the use of the words 'Mechanical 
 Store.' The court has declared the 
 fact to be, and it is not challenged by 
 
 defendant, that these words were 
 used as a designation of his store for 
 the purpose of deceiving the public, 
 and especially plaintiff's customers, 
 and thereby securing the advantages 
 and benefits of the good-will of plain- 
 tiff's business. To say that such 
 conduct on the part of defendant is 
 unfair business competition is to state 
 the facts in the mildest terms" (id. 
 p. 537). Bolander v. Peterson, 136 
 lU. 215-1891; 26 N. E. 603; 11 L. R. 
 A. 350. Complainant, a dealer in 
 snuffs in Chicago, had for some time 
 designated his store and business as 
 "Svenska Snusmagasinet " (Swedish 
 Snuff Store); his store was advertised 
 and well-known^ among Swedes by 
 that name. Defendant was also a 
 dealer in snuffs on the same street, 
 not far from complainant, and. had 
 been using the sign "C. W. Pdterson, 
 Nya Snus Fabrik." He now altered 
 this to "C. W. Peterson, Svenska 
 Snus Magasin," and advertised the 
 store and business as "Fran Snus- 
 magasinet." The snuffs were sold 
 under different brands. Held, that 
 complainant was not entitled to re- 
 strain him from so doing. Mossier 
 V. Jacobs, 66 111. App. 571-1896. 
 Complainants alleged that they had 
 been engaged in business for fifteen 
 years under the style of "Six Little 
 Tailors," and that the defendant had 
 opened a tailoring establishment un- 
 der the name of "Six' Big Tailors." 
 Held, that the name was so similar to 
 complainant's trade name that it was 
 calculated to deceive the unwary, and 
 that its use would be enjoined. In- 
 surance Oil Tank Co. v. Scott, 33 La. 
 Ann. 946-1881. Plaintiff had an 
 illuminating oil specially manufac- 
 tured for it and described it as "In- 
 
598 
 
 Evidence 
 
 defendant is using a name, word or device, which he had adopted to 
 distinguish his goods, does not entitle him to any relief. He 
 
 surance Oil," claiming it excelled in 
 its combination of safety with other 
 qualities. Defendants afterward put 
 on the market oil in packages branded 
 "Insurance Oil" in type exactly like 
 that used by plaintiff. Held, that 
 plaintiff was entitled to the exclusive 
 use of the words "Insurance Oil." 
 Giragosian v. Chutjian, 194 Mass. 504r- 
 1907; 80 N. E. 647. Plaintiff, in 1900 
 began business under the trade name 
 "Oriental Process Rug Renovating 
 Company." About the same time, 
 and before this name had become 
 identified with plaintiff in public 
 reputation, defendant in good faith 
 went into business under the name 
 "Oriental Rug & Carpet Renovating 
 Works." In advertising, he generally 
 prefixed the name "Chutjian Broth- 
 ers" to these words. Neither party 
 used any process peculiar to him- 
 self. Held, that the defendant was 
 entitled to use the trade name adopted 
 by him with or without the proper 
 name prefixed in spite of its resem- 
 blance to plaintiff's. But he should 
 not alter the name to "Oriental Car- 
 pet and Rug Renovating Works" so 
 as to appear first in the telephone 
 directory. Samuels v. Spitzer, 177 
 Mass. 226-1900; 58 N. E. 693. A biU 
 in equity alleged that plaintiff had 
 developed by advertisement and other- 
 wise a large business as a clothier in 
 Rhode Island and southeastern Mas- 
 sachusetts under the name of the 
 "Manufacturers' Outlet Company," 
 and that the name had been copy- 
 righted or registered as a trade-mark. 
 It further alleged that defendant, 
 fraudulently seeking to mislead the 
 pubUc to his own advantage, had 
 established in a neighborhood from 
 
 which a considerable part of plaintiff's 
 trade was drawn a shop for the sale of 
 goods similar to plaintiff's under the 
 name "Taunton Outlet Company," 
 and was thereby deceiving the public 
 and diverting trade from plaintiff. On 
 demurrer, the bill was held to state a 
 cause of action for unfair competition. 
 Miskell V. Prokop, 58 Nebr. 628-1899; 
 79 N. W. 552. Plaintiff had for some 
 years kept a store bearing the sign 
 "Racket Store," and generally known 
 by that name. Defendant then 
 opened a store in the immediate 
 neighborhood under the sign and name 
 "New York Racket Store," the words 
 "New York" being printed in small 
 letters. It appeared that the word 
 "Racket" had been quite often used 
 as descriptive of certain kinds of 
 .stores before plaintiff's adoption of 
 the term. The court below having 
 determined that there was, under the 
 circumstances, no such simulation as 
 amounted to unfair competition, held, 
 that its finding would not be dis- 
 turbed on appeal. Brooklyn White 
 Lead Co. v. Masury, 25 Barb. (N. Y.) 
 416-1857. Plaintiffs had for more 
 than twenty years manufactured white 
 lead at Brooklyn, stamping the kegs 
 with their corporate name. Defend- 
 ant subsequently began to manufac- 
 ture white lead at Brookljm, and at 
 first marked his kegs "Brooklsm 
 White Lead." Later he began to 
 make zinc paint also, and. changed the 
 mark on his goods to "Brooklyn 
 Vfhite Lead & Zinc Company." 
 Held, that he should be required to 
 omit the word "Company" from his 
 mark. United States Frame & Picture 
 Co. V. Harovntz, 51 Misc. (N. Y.) 101- 
 1906; 100 N. Y. Supp. 705; 139 A. D. 
 
Evidence to Pkove Secondary Meaning 
 
 599 
 
 can only obtain it by proving further, that the defendant is 
 using it under such circumstances or in such a manner as to put 
 off his goods as the goods of the plaintiff.^"" 
 
 895; aff'd 204 N. Y. 630-1912. Plain- 
 tiff, the "United States Frame & 
 Picture Company," was a corpora- 
 tion engaged for some years in business 
 at No. 3 Barclay street. Defendant 
 was the brother of its president, and 
 had himself been an employee and 
 officer of the company until 1905, 
 when he left it and engaged inde- 
 pendently in the same line of business 
 at 86 Fulton street under the trade 
 name of "New York Frame & Picture 
 Company.'' It was held that defend- 
 ant was entitled to use this name, but 
 he was enjoined from using, for ad- 
 vertising, stationery closely resembling 
 plaintiff's, and from publication of 
 notices of removal so worded as to 
 lead the unwary to suppose that the 
 plaintiff was referred to. Stirling Silk 
 Mfg. Co. V. Sterling Silk Co., 59 N. 
 J. Eq. 394r-96-1900; 46 Atl. 199. 
 "The name of 'The Sterling Silk 
 Company' is so similar to that of 
 * * * 'The Stirling Silk Manufac- 
 turing Company' that with purchasers 
 at retail, there is danger of confusing 
 complainant's goods with defendants." 
 Commonwealth v. Banks, 198 Pa. St. 
 397-1901 ; 48 Atl. 277. This was a bill 
 in equity by the attorney-general to 
 enjoin the defendant, the proprietor 
 of a purely commercial or business 
 school, from using the name "Univer- 
 sity of Philadelphia," principally upon 
 the ground that the use of the word 
 "University" was misleading and 
 unauthorized. It was also urged that 
 the similarity of the name to that of 
 the University of Pennsylvania led to 
 
 confusion and mistakes, and the court, 
 in granting the injunction) say that 
 therefore the University of Pennsyl- 
 vania, and persons dealing with it, 
 would be entitled "to protection under 
 the law relating to trade-marks, 
 against the use of a name which is 
 similar ir^ point of territorial designa- 
 tion and misleads the public" (at 
 p. 401). Western Grocer Co. v. Caf- 
 farelli, 108 S. W. 413. See also 102 
 Tex. 104 for a further decision of this 
 case. Plaintiff and its predecessors, 
 wholesale grocers at San Antonio, had 
 for some years used the words "Geor- 
 gia Coon," as a trade-mark for their 
 molasses and syrups, which came to 
 be known and were popularly desig- 
 nated simply as "Coon Molasses." 
 Held, that defendants were not en- 
 titled to sell their molasses under the 
 title "New Coon." Germer Stove 
 Co. v. Art Stove Co., 150 Fed. 141- 
 1907 (C. C. A. 6th Cir.). Com- 
 plainants made and sold stoves called 
 "Radiant Home Stoves," and adver- 
 tised them extensively as containing 
 the "XX Century Fire-Pot," by 
 which name a patented fire-pot, used 
 also by other manufacturers, had 
 come to be known. Defendant made 
 and sold, under the name "Twentieth 
 Century Laurel," a stove containing a 
 somewhat similar fire-pot, but the 
 stove was plainly marked with de- 
 fendant's name. Held not to be un- 
 fair competition. Worcester Brewing 
 Co. v. Rueter & Co., 157 Fed. 217- 
 1907 (C. C. A. 1st Cir.). "Sterling 
 Ale" was held to be not purely de- 
 
 <»" Reddaway v. Banham, 13 R. P. Clothing Co. v. Maxton, 1899, A. C. 
 C. 218; 1896, A. C. 199; Cellidar 326; 16 R. P. C. 307. 
 
600 
 
 Evidence 
 
 Secondary meaning is a question of fact. It rests entirely 
 upon evidence produced in support of its existence. The evidence 
 of investigators that they had visited various stores asking for 
 an article under a descriptive name, and in the majority of cases 
 received the complainant's product, is usually considered good 
 evidence of secondary meaning. There are cases, however, to the 
 contrary.*"'' See §337. 
 
 scriptive, but to be entitled to protec- 
 tion against a corporation formed by 
 one who had been in the employ of the 
 original manufacturer, which put on 
 the market "Worcester Sterling Ale" 
 without clearly pointing out to the 
 public the difference in origin. Brown 
 Chemical Co. v. Frederick Stearns & 
 Co., 37 Fed. 360-1889 (C. C. E. 
 D. Mich.). Plaintiff manufactured 
 "Brown's Iron Bitters," while de- 
 fendant, a Michigan corporation, 
 manufactured a similar preparation 
 called "Iron Tonic Bitters." There 
 was a sufHcient differentiation in 
 packages and labels, but in certain 
 cases, at the request of particular 
 dealers, defendant printed at the foot 
 of the label "Brown & Co., New York 
 City," in place of defendant's naine. 
 There was evidence that at least one 
 dealer had attempted to palm off 
 defendant's package as plaintiff's. 
 Held, that plaintiff was entitled to an 
 injunction against this practice with- 
 out regard to the honesty of defend- 
 ant's intentions. Dr. Peter H. Fahr- 
 ney & Sons Co. v. Rwniner, 153 Fed. 
 735-1907 (C. C. A. 7th Cir.). Com- 
 plainant had long advertised and sold 
 a patent medicine under the name 
 "Alpenkrauter." Held, that defend- 
 ant's advertisement of a similar med- 
 icine as "St. Bernard Alpen Krauter" 
 constituted unfair competition. 
 
 «'' KeUogg Toasted Com Flake Co. v. 
 Quaker Oats Co., 235 Fed. Rep. 657-665. 
 Warrington, C. J., said, in regard to 
 the evidence procured by investigators: 
 
 "Another feature of the record is to 
 be noted. In May, 1911, appellant 
 caused 21 women each to call at from 
 15 to 25 retail grocery stores to pur- 
 chase 'Toasted Com Flakes,' with- 
 out disclosing name of manufacturer, 
 and ostensibly in their own behalf; 
 these instructions were carried out in 
 8 cities located, respectively, in Ohio, 
 Illinois, Iowa, Minnesota, and North 
 Dakota. Nine of the women made 
 their purchases in different stores in 
 Chicago, four likewise in Minneapolis, 
 two in Des Moines, and two in Duluth, 
 and each of the rest in a different city. 
 The result was to secure about 80 per 
 cent, of Kellogg's toasted com flakes, 
 and the rest in other brands. It was 
 developed in this testimony that aside 
 from the Kellogg brand there were 
 then 15 other brands of toasted corn 
 flakes on the market, though it does 
 not appear how long before May, 1911, 
 the other brands were or how long 
 since then they have been on sale. It 
 is observable that each of these other 
 brands bore a name, in one instance 
 the initials 'E. C.,' immediately pre- 
 ceding the words 'Toasted Corn 
 Flakes,' in the same way as appellant 
 and its predecessors have used the 
 names 'Sanitas' and 'Kellogg's' 
 preceding those words. It is further 
 to be noticed that these women made 
 their purchases of dealers whose ob- 
 vious interest in the sale of toasted 
 corn flakes and their consequent 
 knowledge of the subject could scarcely 
 be accredited to the ordinary class of 
 
Proof of Actual Deceit of Purchasers 601 
 
 The general rules as to the evidence necessary to prove such cases 
 are discussed in the chapter on "Secondary Meaning." 
 
 Carpenter, J., has said : "That the public is deceived, may be evi- 
 dence of the fact that the original proprietor's rights are being 
 invaded. If, however, the rights of the original proprietor are 
 in no wise interfered with, the deception of the public is no con- 
 cern of a court of chancery." ^^ It is seen from this case that there 
 may be evidence of the defendant's intent to defraud the plaintiff 
 and yet no cause of action — because no existing competition. 
 
 § 335. Proof of Instances of Actual Bona Fide Deceit of Pur- 
 chasers. — Proof of instances of deceit is always interesting and 
 instructive. The absence of such evidence is often the occasion of 
 oratory on the part of defendant's counsel; but as a matter of 
 actual proof of the facts of the issue proof of such instances is 
 valuable largely as demonstrating the industry of the plaintiff's 
 counsel or his good luck in finding out evidence of this character; 
 it is not necessary to establish a cause of action. It was once said 
 that, "If one case of actual deception is proved, there is no more 
 to be said on either side. The case is at an end. Argument really 
 only takes place where there is no proved case of actual decep- 
 tion." « 
 
 This is not the rule usually adopted in these cases. The fact 
 that no actual cases of confusion are proved is not conclusive on 
 the court. Regardless of proof of this sort it must decide on the' 
 facts as to the marks used by the parties and on the evidence of 
 the market conditions surrounding the everyday use of the marks 
 
 real customers; and hence such testi- brands of toasted corn flakes, as, for 
 
 mony lends little aid in support of the instance the cartons of appellant from 
 
 claim of secondary meaning urged those of the defendant." 
 here. It is conceivable that some of *• Borden v. Borden, 201 Fed. 510- 
 
 these dealers, and presumably the 1912 (C. C. A.), citing American 'FTos/i- 
 
 minority, were actually selling one or board Co. v. Saginaw Co., 103 Fed. 
 
 more of the other brands, in as great, 281; 50 L. R. A. 609. 
 if not greater, quantities, than the "Liebig Co. v. Chemists Co., 13 R. P. 
 
 Kellogg brand; and certainly the C. 635. See also T. A. Vulcan v. E. 
 
 minority did not regard the disputed Myers, 139 N. Y. 364; Manufacturing 
 
 words as signifying only the appel- Co. v. Trainer, 101 U. S. 51; Nat. Bis- 
 
 lant's brand. It is, moreover, to be cuit Co. v. Baker, 95 Fed. 135 (C. C. S. 
 
 observed of the testimony of these D.) 1899; Fulkr v. Huff, 43 C. C. A. 
 
 women that they all in substance testi- 453; Hygeia Distilled Water Co. v. Con- 
 
 fied that they had no difficulty what- solidated Ice Co., 144 Fed. 139; 1906.' 
 ever in distinguishing the different 
 
602 Evidence 
 
 whether or not the defendant's acts will be likely to cause eon- 
 fusion. 
 
 Evidence of actual deception or confusion should be offered 
 whenever inspection or comparison and the other facts brought 
 out on the trial leave doubt as to the necessary result of defend- 
 ant's acts. For example, although "Bank of Michigan " was not 
 considered sufficiently similar to "Michigan Savings Bank" to 
 justify an injunction against its use before any business was done 
 under that name, the question was still left open whether subse- 
 quent experience might not demonstrate that the use of the name 
 actually misled the pubhc.*^ 
 
 Instances of actual mistake on the part of purchasers and sim- 
 ilar facts are frequently shown, as, for example, that retailers re- 
 turned defective "French" garters to the makers of "Paris" 
 garters.** Such evidence is valuable but not vital. 
 
 § 336. Burden of Proof. — Where, after a mark has been in 
 use for a considerable period, a rival of the user appropriates the 
 material and essential features of it, the burden of proof is not 
 upon the first user to show the deceitful character of the second 
 user's device; but upon the latter to demonstrate that his device 
 can be used without causing confusion or deceit. Were this not 
 the rule the bona fide users of marks might be subject to con- 
 stant call on the part of infringers to demonstrate the vaUdity of 
 their rights in such marks. Having shown the facts, the length 
 of use of his mark, the conditions under which it is used, and 
 offered evidence as to the marks later adopted and used by the 
 defendant, the burden is then upon the defendant to show that 
 his use of his mark is fair.**" But in an action for unfair competi- 
 
 " Michigan Savings Bank v. Dime Plaintiffs'. In Ford v. Foster (L. R. 
 
 Savings Bank, 162 Mich. 297. 7 Ch. 611) Lord Justice James made 
 
 "A. Stein & Co. v. Ldberty Co., 198 this observation (L. R. 7 Ch. 623); 
 
 Fed. 959, D. C. S. D. N. Y. (1912). 'The plaintiff makes this prima facie 
 
 ""Ford V. Foster, L. R. 7 Ch. 611; case — that he has a plain trade- 
 Orr-Ewing v. Johnson, 13 Ch. Div. 434. mark, a material and substantial part 
 "What, then, is the result of this tak- of which has been taken by the do- 
 ing of a substantial part of the plain- fendants. Then the onus is, under 
 tiffs' ticket? It appears to me that it those circumstances, cast upon the 
 throws upon the defendants the bur- defendants to relieve themselves from 
 den of proving that their ticket did that prima facie liability;' and it ap- 
 not deceive purchasers into the beUef pears to me to be in accordance with 
 that the Defendants' goods were the this view of the Lord Justice that Lord 
 
Evidence of Investigators Employed by Plaintiff 603 
 
 tion based on the use by the defendant of a descriptive word in a 
 secondary sense indicating the plaintiff's business or product, the 
 burden of proof is on the plaintiff to show that the word has 
 acquired such secondary meaning ^^^ and where both the plain- 
 tiff and the defendant claim title to a trade-mark derived from the 
 same source, the plaintiff has the burden of estabUshing his owner- 
 ship.*«° 
 
 § 337. Evidence of Investigators Employed by Plaintiff. — 
 'Evidence of unfair competition is often very difficult to obtain. 
 Often investigators must be used to obtain it through test pur- 
 chases of defendant's goods in the open market. Such investi- 
 gators are not deceived in making purchases, but that does not 
 make their evidence inadmissible or detract from its weight. It 
 is important as showing the course of action pursued by the de- 
 fendant, — ^his normal use of his marks. Such evidence is a 
 valuable aid to the court in deciding as to the effect of his acts 
 on the sale of plaintiff's goods and ujion the minds of buyers. 
 Where there is no proof of sales to persons other than detectives 
 in the employ of plaintiffs, defendant often urges that no injunc- 
 tion should issue, inasmuch as no such course of conduct has been 
 proved as will show by a clear preponderance of the evidence 
 that there was intentional fraud, or that plaintiff has no cause of 
 complaint against a defendant for damages resulting from an act 
 done by defendant at the instance and solicitation of plaintiffs' 
 agents. If the defendant's employees did not know at the time 
 that the purchasers were detectives, evidence of this sort discloses 
 their intent and purpose exactly the same as if the sales were made 
 to purchasers not buying in order to obtain evidence against the 
 seller. 
 In Julius Kessler & Co. v. Goldstrom,'^^^ the Court of Appeals 
 
 O'Hagan, in Singer Machine Manvr hibited in the course of human af- 
 fadurers v. Wilson (3 App. Cas. 376) fairs.'" Sebastian's Law of Trade- 
 said (3 App. Cas. 395) 'If one man Marks (Fifth Ed.), 140; see also Lam- 
 will use a name the use of which has bert Pharmacol Co. v. Bolton Chemical 
 been validly appropriated by another. Corporation, 219 Fed. 325. 
 he ought to use it under such circum- "^ Kellogg Toasted Com Flake Co. v. 
 stances and with such sufficient pre- Quaker Oats Co., 235 Fed. 657. 
 cautions that the reasonable probabil- ^^^ Carroll v. Dulvih Superior Mill- 
 ity of error should be avoided, not- ing Co., 232 Fed. 675. 
 withstanding the want of care and ""^ 177 Fed. 392. 
 caution which is so commonly ex- 
 
604 Evidence 
 
 for the Eighth Circuit in reversing a decree of the lower court, 
 commented upon the argument to the effect that a sale to emis- 
 saries of the complainant did not warrant a decree for an in- 
 fringement of a trade-mark and for an accounting, holding that, 
 notwithstanding the sale to the agent of the complainant, the 
 intent of the defendant was disclosed exactly as if the sale had 
 been to a real purchaser, it appearing that the defendant did 
 not know at the time that the purchasers were acting for com- 
 plainant. The court was of the opinion that the motives and 
 actions were to be judged from the viewpoint of the understand- 
 ing of the facts by the defendant who sold the goods. 
 
 "It is not necessary to prove a course of business in order to 
 warrant an injunction. I do not think that it is incumbent upon 
 the plaintiff to establish a habit by showing very many sales; it 
 is enough that plaintiff has estabhshed several sales from which 
 must be deduced the fact that defendant was willing to make 
 further sales, and that in several of the stores owned by defendant 
 its agents were ready to make sales is clearly estabhshed.*^ " 
 
 § 338. Loss of Business by Complainant as Evidence. — 
 Evidence that complainant's business has fallen off coinciden- 
 tally with defendant's unfair acts, justifies the inference that 
 the business lost was diverted by the defendant's acts.*^ 
 
 § 339. Time — Presumption of Continuance. — It is not safe to 
 depend on any presumption of the continuance of a course of ac- 
 tion proved as of a certain time, especially if it is wrongful. 
 The evidence should be brought down to the time of filing the 
 bill of complaint, — evidence of unfair acts that have been discon- 
 tinued is ordinarily insufficient.*^ 
 
 " Hennessy v. Wine Growers Asso., C. C. S. D. N. Y. (1901) ; Hostetter Co. 
 
 212 Fed. 308-11, D. C. S. D. N. Y. v. Schneider, 107 Fed. 705, C. C. Mo. 
 
 (1914), citing Gorham Mfg. Co. v. (1900); Hostetter Co. v. Sommers, 84 
 
 Schmidt, 196 Fed. 955, D. C. S. D. N. Fed. 333, C. C. S. D. N. Y. (1897); 
 
 Y. {1912);JvlimKessler&Co.v.Gold- Hostetter Co. v. Becker, 73 Fed. 297, 
 
 strmn, 177 Fed. 392; A. B. Dick Co. v. C. C. S. D. N. Y. (1896) ; Hostetter Co. 
 
 Henry, 149 Fed. 424, C. C. S. D. N. Y. v. Brueggeman, 46 Fed. 188, C. C. E. 
 
 (1907); Badische Anilin &c. v. Klip- D. Mo. (1891). 
 
 stein, 125 Fed. 543, 556, C. C. S. D. N. « Shaw & Co. v. Pilling & Co., 175 
 
 Y. (1903); Samvd & Co. v. Hostetter, Pa. St. 78. 
 
 118 Fed. 257, C. C. A. 9th Cir. (1902) ; « Ferguson-McKinney Dry Goods 
 
 Chicago P. T. Co. v. Phil. P. T. Co., Co. v. J. A. Scriven Co., 165 Fed. 655 
 
 118 Fed. 852, C.C.S.D.N.Y. (1902); (C. C. A.)-1908 (no unfair acts 
 
 Hostetter Co. v. Conron, HI Fed. 737, within two years). 
 
Judicial Notice 605 
 
 § 340. Judicial Notice. — Judicial notice will be taken of facts of 
 coimnon knowledge, such as the existence and general character 
 of the organization known as "Boy Scouts," ■** but not of the 
 meaning of foreign words, or of foreign customs. ^° 
 
 § 341. Weight and Credibility of Evidence. — Affidavits in ste- 
 reotyped, form, prepared without seeing the witnesses and sent 
 to a mmaber of persons for verification, are entitled to little 
 credit.'" 
 
 Oral testimony as to matters 30 years old, and indefinite in 
 character, may be rejected, where it appears that written records 
 of the facts are available but are not produced.''^ 
 
 In case of acts clearly wrongful (as, for example, the direct 
 substitution of goods), slight evidence may be enough to warrant 
 preliminary injunction.'^ 
 
 § 342. Discovery and Examination before Trial. — Examina- 
 tion of a plaintiff has been allowed on such matters as reports of 
 sales, ingredients of product, etc. (the matter of ingredients being 
 relevant to an issue raised as to whether plaintiff had truthfully 
 represented its product.)'^ 
 
 Examination of defendants before trial has likewise been allowed 
 as to plaintiff's right to use the trade name in question, and as to 
 an alleged conspiracy of the defendants to infringe plaintiff's 
 right and injure its business.'* 
 
 Discovery of the names of particular purchasers alleged to have 
 been deceived, however, will not ordinarily be required." 
 
 § 343. Evidence of Acts of Employees. — Evidence of admissions 
 by employees of wrongful acts may be sufficient,'" although mis- 
 representations made by employees do not in every case estab- 
 lish fraudulent conduct for which the principal is to be held 
 
 ^Re Excelsior Shoe Co., 40 App. ^' Horlick's Malted Milk Co. v. 
 
 D. C. 480. A. Spiegel Co., 155 Wis. 201-1913. 
 
 " Rossman v. Gamier, 211 Fed. 401, ^* Solar Baking Powder Co. v. Royal 
 
 C. C. A. 8th Cir. (1914). Baking Powder Co., 128 App. Div. (N. 
 
 '» Seeger Refrig. Co. v. White Enamel Y). 550. 
 
 R. Co., 178 Fed. 567, C. C. D. Minn. " United Lace Co. v. Barthels Mfg. 
 
 (1910); Carroll v. Ertheiler, 1 Fed. 688, Co., 213 Fed. 535, D. C. E. D. N. Y. 
 
 C. C. E. D. Pa. (1880). (1914). 
 
 " American Stove Co. v. Detroit Stove " Hostetter Co. v. Conron, 111 Fed. 
 
 Works, 31 App. D. C. 304. 737, C. C. S. D. N. Y. (1901). 
 
 " Holeproof Hosiery Co. v. Wallach 
 Bros., 192 Fed. 534, C. C. A. (1911). 
 
606 Evidence 
 
 liable/^ and sporadic instances of misrepresentations by unidenti- 
 fied employees, though admissible, is entitled to but little 
 weight/^ 
 
 § 344. Evidence of Registration, Effect of. — It has been con- 
 sidered that the registration of a trade-mark in the Patent Ofiice 
 may be treated as affording some evidence in favor of its valid- 
 ity.59 
 
 Registration may be shown to prove what was claimed as a 
 trade-mark at a certain date,*" and as evidence of acquiring 
 secondary meaning," but in a suit for imfair competition, where 
 there is no issue in the pleadings as to any rights arising under a 
 registered trade-mark, the rights of the parties must be deter- 
 mined in relation to the facts as they existed at the time suit was 
 brought, and if the plaintiff subsequently acquires rights by reg- 
 istering his trade-mark, the rights so acquired must be asserted 
 in a separate suit.*^ 
 
 Entries in an account book over 30 years old, in proper cus- 
 tody, have been admitted.*' 
 
 § 345. Evidence as to Use of a Trade-Mark. — Use of a mark, 
 although it occupies too insignificant a place in the total make-up 
 
 " Hostetter v. Brunn, 107 Fed. 707, 215 Fed. 443, 447, D. C. S. D. N. Y. 
 
 C. C. S. D. Cal. (1901). Wellborn, (1914). 
 
 J., p. 707: "The only transactions ^^Hygeia Distilled Water Co. v. 
 
 proven, or attempted to be proven Hygeia Ice Co., 70 Conn. 516, 534 
 
 * * * were instigated by com- (quoting from Insurance Oil Tank 
 
 plainant, and took place between an Co. v. Scott, 33 La. Ann. 946, 952: 
 
 employ^ of the defendant and com- "The authorities of the patent office, 
 
 plainant's agents. The defendant from long experience, are familiar 
 
 himself repudiates said transactions, with the law of trade-marks; and 
 
 and denies positively that he author- their decisions, though not conclusive, 
 
 ized them, or that any similar ones are entitled to great consideration by 
 
 occurred or were ever contemplated the courts in the determination of 
 
 by him in his business. * * * such questions"). 
 
 The question here presented may be ^ Richter v. Reynolds, 59 Fed. 577 
 
 stated thus: Will the court, from un- (C. C. A.)-1893. 
 
 authorized acts of an agent, conclu- '^American Lead Pencil Co. v. 
 
 sively presume against the principal L. Gottlieb & Sons, 181 Fed. 178, C. C. 
 
 a corresponding custom, where the S. D. N. Y. (1910). 
 
 existence of such a custom is nega^ ^^ American Specialty Co. v. CoUis 
 
 tived by other adequate proofs? Co., 235 Fed. 929. 
 
 This question, it seems to me, must "^ fj q q^i^ ^ q^ ^ -^^ j^g^ ^ 
 
 be answered in the negative." Srnis Co., 35 App. D. C. 355. 
 
 " Moebitis v. Louis Dejonge & Co., 
 
Inferences and Presumptions 607' 
 
 of the package in which goods are sold to serve as a trade-mark, 
 and is therefore ineffective as evidence to estabUsh a trade-mark 
 right, may be effective evidence against abandonment, as showing 
 an honest intent to use the trade-mark.®^ Where a plaintiff in 
 some instances used merely half of his trade-mark, but such use 
 was so distinctive as to indicate the trade-mark and only that, 
 such user is evidence of actual use of the trade-mark.''^ 
 
 § 346. Inferences and Presumptions. — The sale of goods may 
 sometimes be inferred from proof of their manufacture.®^ 
 
 So use of articles, such as labels and boxes, may be presumed 
 where they are shown to have been purchased during a long 
 period.®^ 
 
 It may oe presumed that a name used as a tyade-mark and 
 trade name for a patented article during the life of the patent 
 has become "the identifying and generic mark" of the patented 
 article.®^ 
 
 " Waldes & Co. v. International " Wm. Wrigley, Jr., & Co. v. Norris, 
 
 Manufacturers' Agency, 237 Fed. 502. 34 App. D. C. 138. 
 
 «' Waldes & Co. v. International "^ Frank W. Whitcher Co. v. Sneier- 
 
 Manufadurers' Agency, 237 Fed. 502. son, 205 Fed. 767, D. C. D. Mass. 
 
 "American Stove Co. v. Detroit (1913). ("Circlette" for heel pro- 
 
 Stove Works, 31 App. Gas. D. C. 304r- tectors). 
 1908. 
 
CHAPTER XXII 
 
 Intent to Defraud — Must It Be Proved? 
 
 Section 347. Question of intent is a plea raised by defense. 
 
 348. Division of cases as regards intent. 
 
 349. Cases holding that intent is immaterial. 
 
 350. Summary of English rule as to proof of intent. 
 
 351. American cases as to necessity of proof of intent. 
 
 352. First user of a mark, rights of, arising out of priority. 
 
 353. Denial of intent will not avail defendant. 
 
 354. The action for unfair competition is based on injury to the, 
 
 plaintiff, not on the intent of the defendant to injure the 
 plaintiff. 
 
 355. Proof of specific orders to his agents and servants to act fairly will 
 
 not excuse defendant. 
 
 356. Actual injury to plaintiff by defendant must be imminent. 
 
 357. Unimportant facts not a basis of presumption of intent to de- 
 
 fraud. 
 
 358. Fraudulent intent may be presumed. 
 
 359. Presumption of fraud may arise from similarity of name or get-up. 
 
 360. Presumption of fraud arises from so selling goods that vendee may 
 
 pass them off fraudulently. 
 
 361. Presumption may be based on manner in which the truth is 
 
 told. 
 
 Intent, in unfair competition law, is the character which the 
 law imputes to an act, not the purpose which the doer of the act 
 actually had in mind in committing it. 
 
 John Cutler, Esq., editor of "Reports of Patents-Design and 
 Trade-Mark Cases — (the R. P. C") in his lectures on "Passing- 
 Off" — London, 1904, says that: "An intention to imitate or 
 copy, and an intention to pass off are two distinct things. The 
 former may be legal, but the latter never can" (p. 6). 
 
 The law of unfair competition deals with acts which injure 
 or are likely to injure others — ^acts which the law will hold were 
 committed with such a purpose, regardless of whether the actor 
 is shown to have so intended them. 
 
 In unfair competition cases, statements will be found to the 
 effect that definite proof of fraudulent purpose on the part of the 
 608 
 
Question of Intent Is Plea Raised by Defense 609 
 
 defendant is necessary to the action, while other cases hold that 
 the rule is that no such proof need be offered. Some of these 
 statements are considered in this chapter in an attempt to dis- 
 cover the true rule. 
 
 § 347. Question of Intent is a Plea Raised by Defense. — 
 This question is not important in technical trade-mark cases. 
 The property right of a person in a technical trade-mark may be 
 infringed unintentionally as well as fraudulently, and the inno- 
 cent infringement will be restrained irrespective of the question 
 of intention.^ "In the instance of a lawfully registered trade- 
 mark, the fact of its use by another creates a cause of action. In 
 the instance of the use in bad faith of a sign, not in itself sus- 
 ceptible of being a valid trade-mark, but so employed as to 
 have acquired a secondary meaning, the whole matter lies in 
 •pais. ^ 
 
 See § 163 as to Malice in actions based on interference with 
 contract. 
 
 The plea of a defendant that his offense was not intended — 
 that he acted in ignorance of the plaintiff's rights may be im- 
 portant as to the amount of discredit resulting to the defendant 
 from his acts: it does not in the least mitigate the injurious effect 
 upon the plaintiff of what he has actually done. 
 
 Here as elsewhere there may be damnum absque injuria. Equity 
 cannot protect against every wrong that is committed. Some 
 injuries must be suffered for which there can be no remedy. In 
 cases involving names that have acquired. a secondary meaning, 
 the question of fraud is much simphfied, because "when one has 
 caused a particular species of manufacture to be characterized by 
 certain marks or symbols, and given the article such currency in 
 trade that it is identified with the mark, the law holds him to be 
 possessed of a property in such mark."^ The possession of this 
 property interest gives complainant rights, which are practically 
 the same as those of the owner of a technical trade-mark, viz. : 
 rights sufficient to warrant a court in protecting it, regardless of 
 whether or not one injuring it does so with fraudulent intent. 
 
 ^Bay V. Webster, 23 App. Div. 665-1900, at p. 677; 44 L. ed. 363; 
 
 (N. Y.) 601-1897; 49 N. Y. Supp. 21 Sup. Ct. 270. 
 314. 'The Mrs. G. B. Miller & Co. 
 
 ^ Elgin National Watch Co. v. Tobacco M'f'y v. Commerce, 45 N. J. 
 
 IlUnois Watch Case Co., 179 U. S. L. 18-23-1883. 
 
610 Intent to Defraud — Must It Be Proved? 
 
 Nevertheless, in practically all cases involving secondary mean- 
 ing, the plea is interposed that the defendant acted innocently. 
 It is difficult to see what bearing the defendant's motive can 
 have in face of demonstrated injury to the plaintiff if the sec- 
 ondary meaning be fully proven, for the object of the court is not 
 to vindicate the motives of the defendant but to protect the 
 public from confusion and prevent resulting damage to the 
 plaintiff. 
 
 The question, then, is as to the force of the plea, and whether an 
 allegation of such intent on defendant's part is necessary in the 
 plaintiff's bill. 
 
 § 348. Division of Cases as Regards Intent. — The Pennsyl- 
 vania court has divided cases of unfair competition as regards 
 intent thus: "There are two classes of cases involving judicial 
 interference with the use of names, first, where the intent is to 
 get an unfair and fraudulent share of another's business, and 
 second, where the effect of the defendant's action, irrespective 
 of his intent, is to produce confusion in the public mind and con- 
 sequent loss to the complainant."* In both cases the courts of 
 equity administer relief without regard to the existence of a tech- 
 nical trade-mark. A division of these cases is suggested by the 
 United States Supreme Court in Lawrence Mfg. Co. v. Tennessee 
 Mfg. Co.,^ where it says: "The deceitful misrepresentation or 
 perfidious dealing must be made out, or be clearly inferable from 
 the circumstances." 
 
 We will turn, then, to a consideration of the cases, in the 
 effort to discover some principles of guidance as to the necessity 
 of proving intent. The extremes are represented on the one 
 hand by those that hold that it is not what the defendant in- 
 tended, but what he did, that a court must consider; and on the 
 other by those that hold that the action is based on fraud, which 
 must be proven, because there can be no relief against a defendant 
 who had acted in good faith, although to the injury of the plain- 
 tiff. There can be no division of the cases by geographical lines, 
 for both here and in England each view is upheld by cases of 
 authority. 
 
 * Anwrican Clay Manufacturing Co. ' 138 U. S. 537-51-1890; 34 L. ed. 
 of Pa. V. Am. Clay Man. Co. of New 997; 11 Sup. Ct. 396. 
 Jersey, 198 Pa. St. 189-1901, at p. 193; 
 47 Atl. Rep. 936. 
 
Cases Holding That Intent Is Immaterial 611 
 
 This chapter deals, not with the cases in which clear proof is 
 brought out of the deceitful intent of the defendant, in doing the 
 acts complained of, but with those cases in which it is set up as a 
 defense that the alleged wrongful acts were done in ignorance of 
 the plaintiff's right; or, if not in ignorance of these rights, without 
 any purpose or intent of injuring him directly or indirectly. 
 Most of the cases of unfair competition fall in the latter class; and 
 it is frequently a serious question how much proof must be offered 
 by the plaintiff as to the defendant's motive. What are the re- 
 quirements of proof to establish a cause of action, how much 
 knowledge of the defendant's purpose and intent must be shown 
 to give the court grounds on which to grant rehef ? 
 
 § 349. Cases Holding that Intent is Immaterial. — One of 
 the earliest cases on this point is Millington v. Fox,'^ decided in 
 England in 1838. It is mentioned because it is frequently cited 
 here and abroad as first laying down the rule that the defend- 
 ant's intent was not an essential part of the cause of action.^ 
 About the year 1700, the plaintiff's business was founded by 
 Crowley. In 1782, MilUngton became a partner. The business 
 was thereafter carried on by him or his descendants under the 
 name of "Crowley, Millington & Company." The steel they 
 made became known as "Crowley's" steel or "Crowley Mil- 
 lington" steel and was distinguished by certain marks on the 
 steel, the principal ones being either "Crowley" or "Crowley 
 Millington," also the letters "I. H.," being the initials of their 
 principal workman. Six years before the filing of the bill, Fox 
 began to mark steel with these said marks of the plaintiffs. He 
 alleged that "Crowley" and "Crowley Millington" so far as 
 he knew were merely marks, denoting certain kinds of steel that 
 had been universally used in the steel trade for many years and 
 that he had never heard of the plaintiffs' firm. Cottenham, L. C, 
 considered that there was no fraud in the case and that "Crowley " 
 
 ' Millington v. Fox, 3 Myl. & Cr. facturer, whether done scienter or not, 
 
 338-1838. See also Ainsworth v. is an interference with his business 
 
 Walmsley, L. R. 1 Eq. 518-25-1866. which this court will interpose to pre- 
 
 Contention that, while in a trade-mark vent, on the ground that the defend- 
 
 case the scienter need not be proved, ant is endeavoring to pass off the goods 
 
 misrepresentation must always be of his own, or somebody else's manu- 
 
 shown to be willful, not sustained, facture, as the manufacture of the 
 
 Wood, V. C, says: "The use there- plaintiff." 
 fore of the name of another manu- 
 
612 Intent to Defraud — Must It Be Proved? 
 
 and "Crowley Millington" were generally used in conversation 
 at least as descriptive of a particular quality of steel, and added 
 "that circumstance, however, does not deprive the plaintiffs 
 of their right to the exclusive use of those names; and, therefore, 
 I stated that the case is so made out as to entitle the plaintiffs 
 to have the injunction made perpetual" (id., p. 352). There 
 was considerable evidence given to show that the plaintiffs had 
 known for some time that the name had been used by other 
 dealers than the defendants who marked their steel with these 
 names, and it seemed to be a fact, regardless of whether the 
 plaintiffs knew it or not, that much steel had been sold by other 
 firms than the plaintiffs, bearing these names. Perpetual injunc- 
 tion granted. 
 
 In 1870, in Connecticut, the Supreme Court of Errors de- 
 cided Holmes, Booth & Haydens v. Holmes, - Booth & Atwood 
 Mfg. Co.'' a proceeding in equity to enjoin the use of a name. 
 The defense was set up, that, in using the name in question, the 
 defendants had no intention of injuring the plaintiffs. The court 
 said: "There are cases which seem to establish the proposition 
 that neither fraud nor actual intention to do the injury com- 
 plained of is essential to the petitioner's case." * "The groimd 
 on which courts of equity afford rehef in this class of cases is the 
 injury to the party aggrieved, and the imposition upon the 
 pubhc by causing them to believe that the goods of one man or 
 firm are the production of another. The existence of these con- 
 sequences does not necessarily depend upon the question whether 
 fraud or an evil intent does or does not exist. The quo animo, 
 therefore, would seem to be an immaterial inquiry" (id. p. 
 295-96). 
 
 In 1877, the House of Lords in England in Singer Machine 
 Manufacturers v. Wilson * held squarely that intent was not essen- 
 tial to rehef. This case contains a well-considered opinion by 
 Lord Cairns in which he follows Millington v. Fox,^° and contends 
 that, whatever be the intent of the defendant in passing off his 
 goods as those of the plaintiff, the injury to the plaintiff is the 
 
 ' Holmes, Booth & Haydens v. The Beav. 292-1862; Dans v. Kendall, 
 
 Holmes, Booth & Atwood Mfg. Co., 37 2 R. I. 566-1850. 
 
 Conn. 278-1870. »L. R. 3 App. Cas. 376-91- 
 
 8 Citing Millington v. Fox, 3 Myl. 1877. 
 
 & Cr. 338-1838; Cartier v. Carlile, 81 i» 3 Myl. & Cr. 338-1838. 
 
Cases Holding That Intent Is Immaterial 613 
 
 same; and the action of the court must depend on the right of the 
 plaintiff in the mark used or imitated by the defendant, rather 
 than on the intent of the defendant. The case that was the foun- 
 dation for this opinion involved the use of a name of an article on 
 which a patent had expired. Lord Cairns said: "I wish to state 
 in the most distinct manner that, in my opinion, fraud is not neces- 
 sary to be averred or proved in order to obtain protection for a 
 trade-mark. The argument that fraud must be proved assumes 
 that the trade-mark of the plaintiffs has been adopted and used by 
 the defendant, but contends that this use of it is ,to continue with- 
 out restraint even after the improper use has been pointed out, 
 merely because, in the first instance, it took place ignorantly or 
 inadvertently. This argument appears to me to be founded on 
 a misapprehension. A man may take the trade-mark of another 
 ignorantly, not knowing it was the trade-mark of the other; or 
 he may take it in the belief, mistaken but sincerely entertained, 
 that in the manner in which he is taking it he is within the law, 
 and doing nothing which the law forbids; or he may take it 
 knowing it is the trade-mark of his neighbor, and intending and 
 desiring to injure his neighbor by so doing. But in all these cases 
 it is the same act that is done, and in all these cases the injury to 
 the plaintiff is just the same. The action of the court must de- 
 pend upon the right of the plaintiff, and the injury done to that 
 right. What the motive of the defendant may be, the court has 
 very imperfect means of knowing. If he was ignorant of the 
 plaintiff's rights in the first instance, he is, as soon as he becomes 
 acquainted with them and perseveres in infringing upon them, 
 as culpable as if he had originally known them. I have never 
 known any serious doubt entertained on this subject since the 
 case of Millington v. Fox." 
 
 In 1877, also, the New York Court of Appeals held that in- 
 tent was not necessary, in a case not a technical trade-mark 
 case." The United States trade-mark statute was not then in 
 a valid form and was not in force. 
 
 Here, as in other civil actions, the law does not try to pene- 
 
 " Colman v. Crump, 70 N. Y. 573- tent on the part of the wrongdoer. 
 
 8-1877. In 1860, plaintiffs adopted It is sufficient that the proprietary 
 
 as their trade-mark a bull's head, right of the party and its actual in- 
 
 " Neither is it necessary to establish fringement is shown." 
 a guilty knowledge or fraudulent in- 
 
614 Intent to Defraud — Must It Be Proved? 
 
 trate the secret motives with which the act is done. It contents 
 itself with the conclusion that the party intended the natural 
 and probable consequences of his acts.^^ 
 
 What is in the mind of the defendant, what his motive was, 
 whether he actually intended what he accomplished, is always 
 a hard question and sometimes one that cannot be answered. 
 Lord Cairns rightly says there is no difference between the guilt 
 of him who first acted in ignorance of plaintiff's rights and later, 
 on learning of them, continued his reprehensible conduct, and 
 he who set out from the start to injure the plaintiff's business. 
 The real question is not of intent so much as it is of rights — 
 the extent of the rights of each party to the name in question. 
 The opinion in Singer Machine Manufacturers v. Wilson Machine 
 Manufacturers,^^ cites Welch v. Knott,^* where it was said that 
 "the defendant would not be entitled to use the plaintiffs' bottles 
 in such a manner as, in fact, to mislead the public, although there 
 might be no intention on his part to mislead." This doctrine 
 was again enunciated in England, in 1899, in Cellular Clothing 
 Co. V. Maxton & Murray, '^^ where the question whether or not 
 fraudulent intent was necessary to a good cause of action on the 
 ground of unfair competition, was discussed. The court held, 
 citing Millington v. Fox, that fraudulent intent was not necessary 
 to constitute a right to claim protection against the unlawful 
 use of words. "The only observation that I wish to make upon 
 that part of the argument," said the court, "is that it seemed to 
 be assumed that a fraudulent intention is necessary on the part 
 of the person who was using the name in selling goods in such 
 a way as to lead people to believe that they were the goods of 
 another person. That seems to me to be inconsistent with a 
 decision given something hke sixty years ago by Lord Cotten- 
 ham in Millington v. Fox,^^ who goes out of his way to say very 
 emphatically that that is not at all necessary in order to con- 
 stitute a right to claim protection against the unlawful use of 
 words or things — I say things, because it is to be observed that 
 not only words but things, such as the nature of the wrapper, 
 the mode in which the goods are made up, and so on, may go to 
 make up a false representation; but it is not necessary to estab- 
 
 " McCann v. Anthony, 21 Mo. App. " 4 K. & J. 747-51-1857. 
 
 83-1886. 16 (1899) App. Cas. 326. 
 
 " 3 App. Cas. 376-1877. " 3 Myl. & Cr. 338-1838. 
 
Summary of English Rule as to Proof of Intent 615 
 
 lish fraudulent intent in order to claim the intervention of the 
 court." "" 
 
 § 350. Summary of English Rule as to Proof of Intent. — 
 The English rule is summarized by Mr. Cutler " thus: "It is 
 not necessary that the person charged with passing off should 
 be proved to have intended to pass off his goods as those of the 
 plaintiff. The question is, what is the commercial effect of what he 
 is doing? If the effect would be to pass off his goods as those of 
 the plaintiff, then his honesty of purpose or the absence of any 
 intention to deceive is no defense." And Lord Halsbury states 
 it thus: "Where one comes to see where the real question is, it is 
 in a single sentence. Whether the one name is so nearly resem- 
 bling the name of another as to be calculated to deceive? * * * 
 That is the very question your Lordships have to decide. * * f*= 
 In the result it is perfectly immaterial to my mind, for the pur- 
 pose of the decision of this case, whether they were fraudulent 
 or not, * * * it is perfectly immaterial whether they in- 
 tended it or not." ^^ 
 
 § 351. American Cases as to Necessity of Proof of Intent. — 
 The state courts of the United States are far from unanimous 
 on this question. Many follow the rule of the English cases, just 
 considered, while others uphold the stand taken by the United 
 States Supreme Court. Holmes, Booth & Hay dens v. Holmes, 
 Booth & Atwood Mfg. Co.,^^ has been referred to: Pratt's Appeal,'^" 
 a well-considered case, follows the EngUsh rule. 
 
 "" This section as it appeared in the court said in its opinion: "I have care- 
 First Edition of this book cited in fully examined the testimony upon 
 Kansas Milling Co. v. Kansas Flour this point, and can discover no ev- 
 Mills Co., 89 Kansas, 855-1913; 133 idence of fraud or bad faith in the use 
 Pac. Rep. 542. of the trade-mark," and a perpetual 
 
 " "Passing Off," by John Cutler, injunction was granted. On appeal 
 
 Lond., 1907, pp. 5, 6. the court says: "If the defendant's 
 
 ^^ North Cheshire, etc., Brewery Co. print is an imitation of that of the 
 
 V. Manchester Brewery Co. (1899), plaintiffs, if it is calculated to deceive 
 
 App. Cas. 83-85-87. and mislead, the motive of the de- 
 
 " 37 Conn. 278-1870. fendant in adopting it is not material 
 
 ™ 117 Pa. St. 401-1888; 11 Atl. so far as the law of the case is con- 
 
 878. The Master found in his report cemed, however much it might affect 
 
 that the defendant did not intend to it in a moral point of view. The 
 
 perpetrate an actual fraud in adopting protection which equity extends in 
 
 the plaintiff's mark, which had been in such cases is for the benefit of the 
 
 use for seventy years; and the lower manufacturer, and to secure to him 
 
616 
 
 Intent to Defraud — Must It Be Proved? 
 
 In Wirtz v. Eagle Bottling Co.,^^ the defense was set up that 
 no attempt or intent to imitate plaintiff's labels was made by 
 
 the fruits of his reputation, skill, and 
 industry. The protection of the pub- 
 he is another consideration and one 
 that does not usually enter into such 
 cases" (p. 410). Cited in Eckhart 
 V. Consolidated Milling Co., 72 lU. 
 App. 70-1897, at p. 72. 
 
 "The motives of the persons at- 
 tempting the wrongful appropriation 
 are not material. They neither ag- 
 gravate or extenuate the injury caused 
 by such appropriation. The act is an 
 illegal one and must, if necessary, be 
 presumed to have been done with an 
 intent to cause the results which 
 naturally flow from it. Nor will a 
 court of equity refuse to enjoin the 
 wrongful appropriation of a corporate 
 name until the right of the first corpo- 
 ration to the name has been estab- 
 lished by the verdict of a jury in an 
 action at law." Newby v. Oregon 
 Central Ry. Co., Fed. Cas. No. 10,144- 
 1869, at p. 40; 1 Deady 609. , This 
 case arose on petition to enjoin the 
 Oregon Central Railway from using 
 its name. Eckhart v. Consolidated 
 Milling Co., 72 111. App. 70-1897. 
 The names in question were the 
 flour brands "Christian's Superlative," 
 "Pettit, Christian & Company Su- 
 perlative," and "Ceresota." The de- 
 fendants had put up flour in bags of 
 plaintiff bearing these brands. Held, 
 "It is not necessary to show that the 
 defendant acted with fraudulent in- 
 tention" (at p. 72). Citing Pratt's 
 Appeal, 117 Pa. St. 401-1888; 11 Atl. 
 878; Holmes, Booth & Hay den v. 
 Holmes, Booth & Atwood Mfg. Co., 37 
 Conn. 278-1870; FiUey v. Fassett, 44 
 Mo. 168-1869; BlackweU v. Wright, 73 
 N. C. 310-1875; Davis v. Kendall, 2 
 R. I. 566-1850; Coffeen v. Brunton, 
 
 5 McLean, 256-1851; Fed. Cas. No. 
 2,947. In the last mentioned case 
 it is said that, "Where the same mark 
 or label is used, which recommends the 
 article to the public by the established 
 reputation of another who sells a simi- 
 lar article, and the spurious article can- 
 not be distinguished from the genuine 
 one, an injunction will be granted, al- 
 though there is no intentional fraud. 
 And I am inclined to think that this is 
 a correct view of the principle, for the 
 injury wiU be neither greater nor less 
 by the knowledge to the party" (p. 
 1185). 
 
 " Wirz V. Eagle BotOing Co., 50 N. J. 
 Eq. 164-67-1892; 24 Atl. 658. Wirtz 
 ' bottled beer and sold it at wholesale. 
 He invented three labels which he put 
 upon his goods. The defendant imi- 
 tated plaintiff's labels. This case is 
 particularly interesting on the question 
 of intent. The defendant was formerly 
 in the employ of the plaintiff. He saw 
 the preparing of the plaintiff's labels 
 and alleged there was no attempt or in- 
 tent on his part to imitate these 
 labels. "The law, in civil cases, does 
 not attempt to penetrate the secret 
 motive which induced the act brought 
 in judgment, but judges of its legal 
 quality solely by the consequences 
 which have actually and necessarily 
 proceeded from it. It is no less a 
 dictate of justice, than of sound reason, 
 that every person must be understood 
 to have intended to do just what is the 
 natural consequence of his act de- 
 liberately done." The aggrieved per- 
 son, in cases of this class, is not re- 
 quired to show intentional fraud, but 
 he makes a sufiicient case to give him a 
 right to protection when he shows that 
 the defendant is using his label, or one 
 
Ameeican Cases as to Necessity of Proof of Intent 617 
 
 defendant; but it was held that this fact constituted no defense. 
 "The vital question," said the court, "in cases of this kind is 
 not what did the defendant mean, but what has he done? The 
 legal quality of an act, resulting in injury, must be decided, not 
 by the motive with which it was done, but by the consequences 
 which have necessarily resulted from it." 
 
 The oldest of the foregoing cases are founded, not on special 
 provisions of statute, but on general equitable principles laid 
 down in the rough, in cases that preceded any trade-mark stat- 
 utes in England or America. These are general principles and 
 apply to all cases, whether of statutory infringement or of unfair 
 competition as that term is generally understood; and we be- 
 lieve further, that the cases which, long before the statutes, held 
 that intent need not be proven or even presumed to warrant a 
 court in stopping fraud, deceit, and injury, will ultimately be 
 recognized as stating the correct rule. 
 
 In 1877, the Supreme Court first laid down the rule that in- 
 tent must be proven to obtain an injunction against unfair com- 
 petition. In McLean v. Fleming,^^ Clifford, J., wrote: "Positive 
 proof of fraudulent intent is not required where the proof of in- 
 fringement is clear, as the liabihty of the infringer arises from 
 the fact that he is able, through the unwarranted use of the 
 trade-mark, to sell a simulated article as and for the one which is 
 genuine. Nor is it necessary in order to give a right to an in- 
 junction that a specific trade-mark should be infringed; but it is 
 sufficient that the court is satisfied that there was an intent on 
 the part of the respondent to palm off his goods as the goods 
 of the complainant, and that he persists in doing so after 
 being requested to desist" (p, 254. Citing Woollam v. 
 
 This case was decided in 1877, with the Act of 1870 in force. 
 The opinion opens with a reference to it. But this act was de- 
 
 so nearly like it as to render deception resemblance between the two labels 
 
 of public and injury to himself prob- is such that it is probable, in the sale of 
 
 able (citing Miller Tobacco Manufac- the goods of the parties, that one will 
 
 toryv. Commerce, 4:5 'N.J. L. 18-1883). be mistaken for the other, enough is 
 
 "Neither is he required to prove that shown to make it the duty of the court 
 
 persons have actually been deceived, to interfere" (id. pp. 167-8). 
 
 and that his adversary's goods have " McLean v. Fleming, 96 U. S. 245- 
 
 been purchased under the belief that 54-1877; 24 L. ed. 828. 
 
 they were his. If it appears that the " 1 Hem. & M. 259-1863. 
 
618 Intent to Defraud — Must It Be Proved? 
 
 clared unconstitutional by the Trade-mark Cases.^* It was not 
 until 1881 that a valid act was passed. What influence the 
 statute had on this decision it is not possible to discover. It 
 is somewhat remarkable that in so important a case as this the 
 court should overlook the cases just referred to which seem to 
 speak so distinctly the other way. It would seem that had these 
 cases been fully considered, some clear evidence of that consid- 
 eration would appear in the opinion. 
 
 Following McLean v. Fleming, in 1890 the court decided Law- 
 rence Mfg. Co. V. Tennessee Mfg. Co.,^^ which stands distinctly 
 for the necessity of proving intent. "Undoubtedly an unfair 
 and fraudulent competition against the business of the plaintiff, 
 conducted with the intent on the part of the defendant to avail 
 itself of the reputation of the plaintiff to palm off its goods as 
 plaintiff's, would, in a proper case, constitute ground for reUef" 
 (p. 549). This statement is fotmded on Putnam Nail Co. v. 
 Bennett; ^^ New York & R. Cement Co. v. Co-play Cement Co.; ^ 
 W other spoon v. Currie; ^ Thompson v. Montgomery. ^^ The court 
 then added (p. 551), "but the deceitful representation or per- 
 fidious dealing must be made out, or be clearly inferable from the 
 circumstances." 
 
 In 1900, Elgin National Watch Co. v. Illinois Watch Co.^ was 
 decided. It held that "if a plaintiff has the absolute right to the 
 use of a particular word or words as a trade-mark, then if an in- 
 fringement is shown, the wrongful or fraudulent intent is pre- 
 sumed, and although allowed to be rebutted in exemption of 
 damages, the further violation of the right of property will never- 
 theless be restrained. But where an alleged trade-mark is not 
 in itself a good trade-mark yet the use of the word has come to 
 denote the particular manufacturer or vendor, relief against im- 
 f air competition or perfidious dealing will be awarded by requiring 
 the use of the word by another to be confined to its primary sense 
 by such limitations as will prevent misapprehension on the ques- 
 tion of origin. In the latter class of cases, such circumstances 
 must be made out as will show wrongful intent in fact, or justify 
 
 " 100 U. S. 82; 25 L. ed. 550. «« 5 L. R. H. L. Cas. 50&-1872. 
 
 »138 U. S. 537-1890; 34 L. ed. =>» 41 Ch. Div. 35-1889. 
 997; 11 Sup. Ct. 396. '» 179 U. S. 665-74; 44 L. ed. 365; 
 
 M 43 Fed. 800-1890. 21 Sup. Ct. 270. 
 
 " 44 Fed. 277-1890; 10 L. R. A. 833. '' 
 
American Cases as to Necessity of Proof of Intent 619 
 
 that interference from the inevitable consequences of the act 
 complained of." 
 
 Various state and federal courts have adopted a similar rule 
 on the strength of these cases.^^ 
 
 '^Day V. Webster, 23 App. Div. 
 (N. Y.) 601-1897; 49 N. Y. Supp. 
 314. There was no question of tech- 
 nical trade-marks here. Plaintiffs 
 rested upon the introduction of the 
 respective labels. They offered no 
 scintilla of evidence tending other- 
 wise to show that confusion had 
 arisen from the two labels. Court 
 held labels would not confuse and 
 refused to enjoin and that fraud was 
 essence of action for unfair competition. 
 
 Goodman v. Bohls, 3 Tex. Civ. App. 
 183-88-1893; 22 S. W. 11. "And if 
 you further beheve that * * * 
 Goodman placed on the market in 
 said county of El Paso, and sold in said 
 market * * * packages bearing 
 such a resemblance to said package' of 
 the plaintiff as would deceive the pur- 
 chaser using such ordinary care as 
 the purchasers would exercise ordi- 
 narily in purchasing such goods; and 
 if you further believe that defend- 
 ant used such mode and manner of 
 packing said tobacco with the design 
 to sell the same in the said market 
 as the tobacco of the plaintiff and 
 thus secure a sale of his tobacco which 
 except for such resemblance to plain- 
 tiff's packages he would not have, 
 then you will find a verdict for the 
 plaintiff. * * * if the defendant's 
 packages in shape, color, material of 
 packages, size, marks, and devices 
 should so far resemble those of the 
 plaintiff's as would be apt to mis- 
 lead the class of customers generally 
 to whom the same is sold in said 
 market, it is such resemblance as 
 above referred to." This charge up- 
 held on appeal. 
 
 N. K. Fairbank Co. v. Windsor, 
 61 C. C. A. 233-1903; 124 Fed. 200- 
 35 (C. C. A. 2d Cir.). In unfair com- 
 petition cases "there can be no recov- 
 ery unless the court is satisfied that 
 there has been an intent on the part 
 of d'efendants to palm off their goods 
 as plaintiff's. In many of these un- 
 fair competition cases the fraudulent 
 intent is inferred from the facts, 
 sometimes against the sworn protes- 
 tations of the infringer that he was 
 trying to differentiate his packages 
 from those of the complainant not 
 to simulate them. But in all cases 
 where there has been a recovery, in- 
 tentional fraud has been found." 
 
 Von Faber v. Faber, 124 Fed. 603- 
 1903 (C. C. S. D. N. Y.). Decision 
 by Ray, district judge. "Actions to 
 restrain unfair competition in trade, 
 it is said, are based essentially upon 
 fraud. That fraud must be proved. 
 It cannot be inferred from unim- 
 portant similarities not calculated to 
 mislead the purchaser. (Kipling v. 
 G. P. Putnam's Sons, 120 Fed. 631; 
 65 L. R. A. ,873)" (at p. 609). The 
 court cites Lawrence Mfg. Co. v. Ten- 
 nessee Mfg Co., 138 U. S. 537-1890; 
 34 L. ed. 997; 11 Sup. Ct. 396. 
 
 Lamont, Corliss & Co. v. Hershey, 
 140 Fed. 763-4-1905 (Cir. Ct. N. D. 
 Pa.). Preliminary injunction denied 
 where defendant sold chocolate in 
 packages somewhat similar to com- 
 plainant's in size, shape, color, etc., 
 the words and decoration on the 
 wrappers being entirely different. 
 "To make out a case of unfair and 
 fraudulent competition, — an effort, 
 in other words, to steal the trade 
 
620 Intent to Defraud — Must It Be Proved? 
 
 From the foregoing it will be seen that our Supreme Court had 
 departed considerably from the English rule that the question 
 for the court is not the defendant's intent but the commercial 
 effect of what he has done. The attitude of the Supreme Court 
 is not shared by all other American courts. The New York 
 Court of Appeals follows the English rule, its position being based 
 on Vulcan v. Myers ^^^ and Colman v. Crump. '^^ 
 
 § 362. First User of a Mark, Rights of, Arising out of Priority. 
 — A trader adopts a name or brand which he supposes is used 
 by no one except himself. It turns out later that it had been in 
 use by another, prior to his adoption of it, and that his continuing 
 to use it will result in injury to this first user. It has been often 
 held that, in such a situation, the rights are all with the first user, 
 and it is the duty of the one who later adopts the name to distin- 
 guish his use of it.^^ To use the words of Judge Holmes in the 
 Waltham case: "The plaintiff merely on the strength of having 
 been first in the field, may put later comers to the trouble of tak- 
 ing such reasonable precautions as are commercially practicable 
 to prevent their lawful names and advertisements from deceit- 
 fully diverting of plaintiff's custom." '' This being so, if this 
 "later comer" persists in using the name or threatens to do so, 
 the court is justified in assuming he does so with fraudulent in- 
 tent. Such continued action on his part will raise a presumption 
 of fraudulent and deceitful intent or purpose to pass off his busi- 
 
 built up by another, — there must be '^^ 58 Hun, 161. 
 an actual wrongful intent to deceive "* 70 N. Y. 573-1877. 
 the pubUc into the belief that the This section is cited in Kansas Mill- 
 goods of the one party are the goods ing Co. v. Kansas Flour Mills Co., 89 
 of the other, accompanied by such Kansas, 855-1913, 133 Pac. 542. 
 acts and devices as are likely to do '^ American Waltham Watch Co. v. 
 so, or such dupUcation in form and United States Watch Co., 173 Mass. 
 dress of the one by the other as will 85-1899; 53 N. E. 141; 43 L. R. A. 
 produce a confusion calculated to 826; New England Awl & Needle Co. 
 bring this about, of which the party v. Marlborough Awl & Needle Co., 
 complained against is convicted of 168 Mass. 154-1897; 46 N. E. 386; 
 being willing to have the benefit." McAndrew v. Bassett, 4 De G. J. & S. 
 Paul on Trade-Marks (p. 381): "It 380-1864. 
 
 (Equity) will not enjoin the imitation " American WaUham Watch Co. v. 
 
 of labels, bill heads, and commercial United States Watch Co., 173 Mass. 
 
 names of a rival trade unless such in- 85-1899; Nesne v. Sundet, 93 Minn. 
 
 tentions are fraudulently designed, and 299; 101 N. W. 490-1904. 
 have a tendency to occasion damage." 
 
FiBST User of a Mark 
 
 621 
 
 ness as that of the original user.'* This does not mean that it 
 must always be proven that the defendant had in his secret mind 
 the distinct intent and purpose to defraud the plaintiff. "The 
 law does not attempt to penetrate the secret motives or intent 
 with which the act is done, but contents itself with the conclusion 
 that the party intended the natural and probable consequences 
 of the act."*^ The geographic locality of the plaintiff and de- 
 
 >*Turton v. Turton, 42 Ch. Div. 
 128-41-1899. "No man must pass 
 off his goods as the goods of another. 
 That is the principle upon which it 
 goes. Of course, that may be done 
 unintentionally, but where there is 
 a manifest and natural meaning in 
 the words used, that the goods are 
 the goods of somebody else, and the 
 man who uses these terms uses not 
 his name only, but somebody else's, 
 he would be stopped from doing so 
 as soon as he is aware of the facts 
 which make the prima facie inten- 
 tion and result of which he is doing, 
 passing off his goods as goods of some- 
 body else. It was formerly said that 
 no action could be maintained unless a 
 man has done so fraudulently and 
 intentionally, but when he finds out 
 that the natural construction of what 
 he is doing, when the facts are known, 
 is to represent his goods to be some- 
 body else's, then he would be stopped, 
 even though he had originally done 
 that unintentionally, and inno- 
 cently." 
 
 Meldrum v. Shiibert, 2 III. Cu-. Ct. 
 Rep. 293-1904. Complainant leased 
 and had for one season conducted a 
 small theatre, chiefly patronized by 
 residents of the vicinity, under the 
 name of the "Garrick" theatre. De- 
 fendants then leased a large metro- 
 politan theatre, formerly known as 
 the "Dearborn" theatre, and called 
 it the "Garrick" theatre. Prior to 
 complainant's use of the name de- 
 
 fendants had announced the intention 
 to use this name; this was, however, 
 not known to complainant; and de- 
 fendants made no actual use of the 
 name until complainant's first season 
 was over. Held, that defendants 
 should be enjoined from using the 
 name, and that it was not necessary 
 to support an injunction that it should 
 be shown that pecuniary loss would 
 result to complainant from defend- 
 ant's acts. 
 
 " McCann v. Anthony, 21 Mo. App. 
 83-90-1886. 
 
 See also Ball v. Siegel, 116 111. 
 137-1886; 4 N. E. 667; Elgin Butter 
 Co. v. Elgin Creamery Co., 155 111. 
 127-1895; 40 N. E. 616; Allegretti v. 
 AUegretti Chocolate Cream Co., 177 
 lU. 129-1898; 52 N. E. 487; Int. Com,. 
 Y. W. C. A. V. Y. W. C. A. of Chicago, 
 194 111. 194^1902; 62 N. E. 551. 
 
 Investor Pvb. Co. v. Dobinson, 
 72 Eed. 603-1896 (C. C. S. D. Cal.); 
 Gvmdian Fire & Life Assur. Co. v.| 
 Gvmdian & Gen. Ins. Co., 50 L. J. 
 Ch. N. S. 253-1880; Lee v. Haley, 
 L. R. 5 Ch. App. Cas. 155-1869; 
 Knott v. Morgan, 2 Keene, 213-1836; 
 U. S. Mercantile Reporting Co. v. 
 U. S. Mercantile Rep. & Collecting 
 Assn., 21 Abb. N. C. (N. Y.) 115- 
 1888; Matsell v. Flanagan, 2 Abb. 
 Pr. N. S. (N. Y.) 459-1867; Lamb 
 Knit Goods Co. v. Lamb Glove & Mit- 
 ten Co., 120 Mich. 159-1899; 78 N. W. 
 1072; 44 L. R. A. 841; Sanders v. 
 Jacob, 20 Mo. App. 96-1885; Newby v. 
 
622 Intent to Defraud ^^ Must It Be Proved? 
 
 fendant often has an important bearing oh the question as to 
 right obtained by priority of use. 
 
 § 353. Denial of Intent WiU Not Avail Defendant. — The de- 
 nial of intent to injure will not avail a defendant. Under proper 
 circumstances the court will find in his acts evidence of an intent 
 to defraud even in the face of his most expUcit denial that he ever 
 intended to pass off his goods as those of the complainant. "And 
 such intent may be, and often is, made Out, not from direct tes- 
 timony, but as a clear inference from all the circumstances, even 
 when the defendant protests that his intention was innocent."'^ 
 The respondent in Wotherspoon v. Currie " said (see p. 515) : 
 "There is no reason in the world why I should take the name, be- 
 cause I manufacture something superior, and at a cheaper price, 
 therefore, why should I take the name of the plaintiffs?" The 
 comment of the Lord Chancellor on this plea was this: "Well, 
 then, one naturally asks, why should he do anything to lead people 
 to suppose that his name is to be in any way associated with Glen- 
 field, or this inferior article (as he says) with his." The court in 
 Keller v. Goodrich Co.,^^ citing this passage said: "So may we ask 
 here, why should the appellant, doing business in Fort Wayne, 
 Indiana, do anything to associate his name with Akron, in the 
 State of Ohio? The natural presumption is that he expected to 
 derive benefit from it, and secure buyers from among those who 
 had bought and used the Akron dental rubber. If we may as- 
 sume, as we justly may, that he intended to mislead, and not in 
 good faith to convey information, we must carry this assumption 
 to its logical consequences, and assert that his act was likely to 
 accomplish what he intended it should." 
 
 Not only will fraudulent intent be presumed in the face of the 
 defendant's specific disclaimer of such intent, but it will be pre- 
 sumed in the face also of contract provisions, which would tend 
 to show proper motives, when the court is satisfied that it was 
 
 Oregon Central By., Deady (U. S. D. '« N. K. Fairbank Co. v. R. W. Bell 
 
 Oreg.), 609-1869. Mfg. Co., 77 Fed. 869-1896, at p. 870 
 
 Fidkr V. Huff, 104 Fed. 141- (C. C. A. 2d Cir.). Above statement 
 
 1900 (C. C. A.); 51 L. R. A. approved, Hartzler v. Goshen Co., 104 
 
 332; Orr v. Johnston, 13 Ch. Div. N. E. Rep. 34. 
 
 434. 3' L. R. 5 Eng. & Ir. App. 508-1872. 
 
 Payton & Co. v. Snelling, Lam- ''117 Ind. 556-60-1888; 19 N. E. 
 
 pard & Co. (1901), App. Cas. 308 196.' 
 (House of Lords). 
 
Action Based on Injury to Plaintiff 623 
 
 not intended by the parties that these provisions should be car- 
 ried out. In R. Heinisch's Sons' Co. v. Boker,^^ various contracts 
 were made by parties to the action as to the use of name "Hein- 
 isch." It appeared that, while the ostensible objects of the con- 
 tracts were not carried out, the Heinisch name had been so used 
 as to deceive the public. Held: "In these circumstances, it must 
 be presumed that the defendants contemplated the natural con- 
 sequences of their acts, irrespective of those carefully worded 
 provisions of said contract which apparently were never intended 
 to have any effect." 
 
 § 354. The Action for Unfair Competition is Based on Injury 
 to the Plaintiff, not on the Intent of the Defendant to injure the 
 Plaintiff. — Assuming that up to the time an injunction is asked 
 the defendant has acted with entire good faith, firmly believing 
 that he was causing no injury to the plaintiff and usurping none of 
 his rights, still he will be enjoined. His opinion as to the result 
 to the plaintiff of his act is not the test, and it should be dis- 
 regarded by the court. If the court believes the necessary con- 
 sequence of the defendant's action is deceit and this deceit may 
 or does injure the plaintiff, an injunction should issue. The 
 owner of an honest business reputation, or of a valuable brand or 
 name, is entitled to protection as well against persons who injure 
 him innocently as against those who would injure him inten- 
 tionally. In Cuervo v. Landauer,^" the defendant bought labels 
 from a dealer in such articles, and did not know that in using them 
 he would interfere with the plaintiff's business. Nevertheless 
 it was held he should be enjoined. "That defendants did not 
 know that the labels which they bought, as they aver, from a 
 cigar-box maker, were infringements, is no reason for refusing 
 the relief prayed for. The "owner of a trade-mark is entitled to 
 protection against ignorant as well as against malicious infringers." 
 
 It is well established that the use of a corporate name will 
 be enjoined, which, though adopted with perfect good faith, 
 is calculated to confuse and deceive. Ground for such inter- 
 ference is to be found in the detriment to the complainant which 
 cannot be otherwise rertiedied or reached; and further, if it is 
 shown that, although innocent of fraudulent intent at the out- 
 set, on being apprised of the injury he is inflicting on the plain- 
 
 »86 Fed. 765-69-1898 (C. C. S. «63 Fed. 1003-1894 (C. C. S. D. 
 D. N. Y.). N. Y.). 
 
624 Intent to Defraud — Must It Be Proved? 
 
 tiff, the defendant continues to use the offending mark or name, 
 that fact will warrant a very strong presumption of deceitful 
 purpose on his part.*^ 
 
 § 355. Proof of Specific Orders to His Agents and Servants 
 to Act Fairly Will Not Excuse Defendant. — Specific instruc- 
 tions to salesmen to refrain from any statements or represen- 
 tations that would tend to mislead will not prevent this pre- 
 sumption from arising where the facts otherwise justify it. 
 Judge Lacombe has said in Enterprise Mfg. Co. v. Landers, Frary 
 & Clark, '^'^ "It is elementary law that, when the simulation of 
 well-known and distinctive features is so close, the court will 
 assume that the defendants intended the result they have ac- 
 complished, and will find an intent to appropriate the trade of 
 their competitor, even though in their instructions to their own 
 selling agents they may caution against oral misrepresentations 
 as to the manufacture of the goods. There is evidence to show 
 that purchasers have been deceived as to the identity of these 
 mills, but, in the case of a Chinese copy, such as the defendants 
 offer to the pubUc, such proof is hardly needed." ** 
 
 § 356. Actual Injury to Plaintiff by Defendant Must be Im- 
 minent. — Although a definite intent and plan on the part 
 of the defendant to pass off his goods as those of the plaintiff 
 and to injure him in his trade be clearly shown, yet if he never 
 provides himself with the actual or probable means of accom- 
 plishing such a result, there is no basis for a cause of action on 
 the ground of unfair competition, and, in such a case, no pre- 
 sumption of intent to defraud will arise.** 
 
 " Van Hovien v. Hooton Cocoa t& " Dodge Stationery Co. v. Dodge, 
 
 Chocolate Co., 130 Fed. 600-3-1904 145 Cal. 380-90-1904; 78 Pac. 879, 
 
 (C. C. N. J.). "While innocent of held, that it is quite unimportant 
 
 artifice in the beginning, the refusal whether the defendant used the name 
 
 of the defendants to grant this con- Dodge with fraudulent intent or not. 
 
 cession, and their insistence on the If the necessary result was deception, 
 
 continued employment of that which the fact that it acted with an honest 
 
 is shown to be objectionable, and can purpose will not aid it. 
 
 make no material difference to them " They "never used any means cal- 
 
 on any honest basis, may warrant a culated to accomplish it, and they 
 
 somewhat different conclusion as to adopted those admirably suited to 
 
 their present intention, which of it- defeat it. Their intention, therefore, 
 
 self might call for relief." becomes immaterial." Kann v. Dior 
 
 « 131 Fed. 240-1904 (C. C. A. 2d mond Steel Co., 89 Fed. 706-1898, 
 
 Cir.). at p. 712 (C. C. A. 2d Cir.); 32 C. C. A. 
 
Presumption not Based on Unimportant Facts 625 
 
 " The intention alone, without the actual or probable use of 
 means calculated 'to convey a false impression to the public mind, 
 * * * and to mislead and deceive the ordinary purchaser,' 
 furnishes no ground for reUef, because an intent to injure, where 
 no injury is or will be inflicted, causes no legal damages.*^ 
 
 § 357. Unimportant Facts not a Basis of Presumption of 
 Intent to Defraud. — FurthermorOj^ presumption of fraud- 
 ulent intent must be based on facts which are important. "It 
 cannot be inferred from unimportant similarities not calculated 
 to mislead the purchaser." ^* As it is similarity and not identity 
 that the unfair merchant seeks, the apparently unimportant 
 features sometimes become important. He is presumed to know 
 and intend the necessary consequences of his acts, and must 
 usually answer for the probable and ordinary consequences of 
 them.*^ 
 
 § 358. Fraudulent Intent May be Presumed. — Intent is 
 the state of mind in which or the purpose with which one does 
 an act. Again, it is "the character which the law imputes to 
 an act, irrespective of the personal intention of the actor." *^ To 
 prove the state of mind of the defendant when the acts in ques- 
 tion were done, is difficult to say the least — and the question 
 practically narrows itself down in many cases to this: What are 
 the acts from which the law will impute a fraudulent intent to 
 injure a rival's business; what are the facts on which the law will 
 found a presumption of intent to defraud? This question is 
 important in cases where no actual injury is shown: it is of little 
 moment where actual injury is proven. 
 
 324; Hopkins Trade-Marks, p. 256; Cir.); Kann v. Diamond Steel Co., 
 
 Cmtaur Co. v. Marshall, 97 Fed. 785- 89 Fed. 706-1898 (C. C. A. 8th Cir.); 
 
 1899 (C. C. A. 8th Cir.); 38 C. C. A. 32 C. C. A. 324. 
 
 413; Postum Cereal Co. v. American *^ Von Faber v. Faher, 124 Fed. 603- 
 
 Heatth Food Co., 119 Fed. 848-1902 1903, p. 609. 
 
 (C. C. A. 7th Cir.); 56 C. C. A. "Every man, acting inteUigently, 
 
 360. will be presumed to intend the neces- 
 
 " Wrisley Co. v. tawa Soap Co., sary consequences of his acts. Holmes, 
 
 122 Fed. 796-1903 (C. C. A. 8th Booth & Haydens v. Holmes, Booth 
 
 Cir.); McLean v. Fleming, 96 U. S. & Atwood Mfg. Co., 37 Conn. 278- 
 
 245-1877; 24 L. ed. 828; Kann v. 1870, at p. 296. "The same pre- 
 
 Diamond Steel Co., 89 Fed. 706-1898 sumption appUes, with less force per- 
 
 (C. G. A. 8th Cir.); 32 C. C. A. 1324; haps, to the probable and ordinary 
 
 N. K. Fairbank Co. v. R. W. Bell Mfg. consequences." 
 
 Co., 77 Fed. 869-1896 (C. C. A. 2d '' Standard Dictionary, 937. 
 
626 Intent to Defraud — Must It Be Proved? 
 
 The law will presume an intent to defraud even when there is 
 an utter lack of proof of personal intent to deceive on the part 
 of the defendant or even where it is actually shown such an intent 
 did not, in fact, exist. The legal intent, which the law bases 
 upon a person's acts and then imputes to him personally, may 
 exist regardless of whether he actually intended to do harmful 
 acts or not. If, for instance one does innocently acts which 
 are likely to defraud his rival, and on learning their baleful effect 
 he continues them, the law will not regard his claim that his 
 personal intent was to benefit his rival or not to injure him. In 
 England, relief in actions for unfair competition is not dependent 
 upon actual fraudulent intent, where the conduct of defendant 
 would be likely to deceive purchasers as to the origin of the goods. 
 "A person is ordinarily held to intend the consequences of his 
 acts, when he understands his acts, and they are dehberate, es- 
 pecially; and, if such acts by a business competitor are calculated 
 to deceive the trade, the pubUc, and the user, and to pahn off the 
 goods or manufactures of such person for those of his competitor, 
 and such is the actual result, and such person refuses to cease 
 such conduct, the legitimate conclusion is that he intended and 
 intends to cheat and defraud not only the competitor, but the 
 trade, the general public, and the users and consumers. Such 
 acts, persisted in, constitute fraud." ** 
 
 § 359. Presumption of Fraud May Arise from Similarity of 
 Name or Get-Up. — Presumption of fraud may arise from use 
 of similar names. The earher Stand taken by some coiurts was 
 that no one should be allowed to create a monopoly of the use 
 of his own name, to the use of which others who bear it may be 
 equally entitled. In these cases the fact was overlooked that 
 the honest dealer desires a name which can be associated only 
 with his ,own particular business house and which cannot by any 
 chance be confused with the name of some other concern. It 
 may usually be presumed that where a person sets up a business 
 under a name similar to one already in use, even though that 
 name be his own, he is not taking that name because it is neces- 
 sary to take it, nor because using it is essential to his success, 
 but because he hopes by the confusion resulting from using it to 
 get for himself some of the trade which belongs to the established 
 concern. To wish to get all of this trade he can is not condemned 
 " Von Faber v. Faber, 124 Fed. 603-10-1903. 
 
Similarity of Name or Get-Up 627 
 
 by the law, but to try to get it by creating in any way the idea 
 in the minds of the public that his concern is not his, but the older 
 house, is rightly condemned, and here is the gravamen of the 
 injury which is the result of his use of the name. 
 
 Where such a state of facts as this is found, equity does hot 
 wait for definite proof of fraud. Those who honestly desire 
 distinctive reputations for their own goods, do not strive to so 
 get them up as to be likely to resemble other goods of a like 
 sort. They do not start out by adopting the most individual and 
 particular features of the dress and make-up of a rival's goods. 
 Consequently, when a manufactiirer is found doing this, it may 
 safely be presumed he has some object, some definite purpose in 
 mind. When it is further found he has expended large sums in 
 advertising his own business under names or insignia which 
 are similar to those used by a successful competitor, a similar deduc- 
 tion may be made. Any facts which show that a maker or vendor of 
 goods strives to adopt and advertise on his own goods, or in connec- 
 tion with his own goods, distinctive features of the goods of a rival, 
 may be made a basis of a presumption of fraud. Honest rivals 
 do not copy. Men ambitious to succeed on their own merits 
 do not spend money to masquerade as some other person and are 
 particular to avoid anything which promotes a knowledge of a 
 rival's goods. 
 
 Intent is a subtle thing; it cannot be seen, and can only be 
 identified by acts which are seen and which are prompted by it. 
 The statement of a dealer who has copied the get-up of a rival's 
 goods, that he intends to keep his goods as individual as pos- 
 sible and not to injure anyone, falls as valueless when a court 
 finds, by placing his goods beside those of his competitor, that it 
 is difficult to tell them apart; for it must be presumed he in- 
 tended to do that which, if they are to beUeve their eyes, he has 
 actually done. The fact that the designer of the offending mark 
 was an expert, or was a man of intelligence and experience, will 
 be taken into consideration in judging of the effects of the acts 
 done by him. The Circuit Court of Appeals, Second Circuit, 
 has very aptly described the effect of a simulation from which in- 
 tent will be presumed, in N. K. Fairhank Co. v. B. W. Bell Mfg. 
 Co.^'^ "It may fairly be assumed that the individual who de- 
 signed defendant's yellow and black package was an expert, 
 '» 77 Fed. 869-77-1896 (C. C. A. 2d Cir.). 
 
628 Intent to Defraud — = Must It Be Proved? 
 
 familiar with the trade; that the changes he made in the old pack- 
 age were all in the direction of complainant's package is mani- 
 fest; that he was intelHgent enough to make such changes in order 
 to accomplish a definite object will surely not be disputed; and 
 that such object was the production of a package resembling 
 complainant's is the irresistible inference. Business men of 
 ordinary acuteness, who wish to establish a distinctive reputa- 
 tion for their goods with the general public, who seek to have 
 such goods so arrayed that they will always be unmistakably 
 recognized by the public, certainly do not begin by assimilating 
 the elements of their design to those of some one competing man- 
 ufacturer. When they are found doing this, it must be assumed 
 that, for some reason or other, they prefer to have their goods 
 arrayed, not in a distinctive dress, but in one resembling their 
 competitor's; and, when it appears that such competitor has ex- 
 pended upward of $300,000 in advertising his packages, that rea- 
 son is not hard to find. The actions of defendant's own officers 
 are to our minds strong evidence that, in their opinion as experts, 
 their new black and yellow package was one likely to become 
 confused in the minds of the pubhc with the existing well-known 
 package of complainant. Men act from motives, and, unless 
 the new style of package was devised for this very purpose, no 
 motive for its creation is shown in the record, or in anywise sug- 
 gested. That it was the result of a fortuitous aggregation of ele- 
 ments is an hypothesis which cannot for one moment be enter- 
 tained. It was designed by an intelUgent creator, and, so far as 
 we can see, for but a single purpose, and that purpose a species of 
 competition in trade which com-ts of equity hold to be imfair. 
 "We are not left to inferences, however, to determine whether 
 that piupose has been accomplished. In many cases, where 
 simulation is plain, injunctions have been issued without proof 
 of specific instances of deception. Such evidence, however, is 
 always competent, and often illmninative. In the case at bar 
 there is evidence of several instances where purchasers asking 
 for 'Gold Dust' have had defendant's soap powder palmed off 
 on them, being deceived by the general appearance of the pack- 
 age. More persuasive, however, is the evidence of retail dealers 
 who buy from defendant and sell to the consumer. It is the 
 testimony of experts. One of them, a grocer in Wilkes-Barre, 
 Pa., testifies that defendant's salesman, as an inducement to 
 
Presumption or Fraud in Selling Goods 629 
 
 purchase, called his attention to the similarity of the packages, 
 and the possibility of passing off one for the other. The sales- 
 man contradicts this statement, and we give no weight to it; but 
 the grocer further testifies that he perceived the resemblance, 
 bought the defendant's soap powder, and has repeatedly passed 
 it off on customers who asked for "Gold Dust." Another grocer, 
 who keeps both kinds of powder, testified that he has often sub- 
 stituted one for the other, since there is more money for him in 
 selling the defendant's at the same retail price, as it costs 25 per 
 cent, less at wholesale; that, when customers asked for "Gold 
 Dust," he would generally go to the shelves, and hand them de- 
 fendant's soap powder; that some customers were not deceived, 
 but that the packages resemble each other so closely that a dealer 
 can repeatedly, in most cases, substitute one for the other; and 
 that he has known personally of many such cases " (id. pp. 877-78) . 
 
 § 360. Presumption of Fraud Arises from so Selling Goods 
 that Vendees May Pass Them off Fraudulently. — The same 
 presumptions which arise from so marketing goods as to deceive 
 the person who buys at retail, will arise from facts which show 
 that the defendant's acts made it possible for him who bought 
 the goods to again sell them in such a way as to deceive the ul- 
 timate purchaser." 
 
 That evidence of intent is difficult to get, need not be argued. 
 The court is forced to look to small details of the conduct of the 
 defendant oftentimes to find evidence of his real intent. North 
 imitated underwear made in a special manner by Scriven, — and 
 
 "New England Awl & Needle Co. and defendant two years. Held 
 y. Marlborough Awl & Needle Co., by Judge Holmes that defendant con- 
 168 Mass. 154^55-1897; 46 N. E. tended he "did not intend to deceive 
 386. Plaintiff used a bronze colored the public by passing off their goods 
 box, with brown label on top and for the plaintiff's, but this must be 
 one side with printed inscriptions, taken ptetty strictly. They knew that 
 tied with orange string. Defend- they were putting the power to do so 
 ants used box indistinguishable in into the retail dealers' hands. It 
 every way except that instead of the hardly can be doubted that they con- 
 words "Manufactured and warranted templated that the wholesale dealer at 
 by the New England Awl & Needle whose request they put up their awls 
 Company, West Medway, Mass.," it in this form, with full knowledge of the 
 bore the words "Manufactured by plaintiff's prior use, would or might try 
 the United States Awl & Needle Co., to deceive the public, and whether 
 New York." Plaintiff had used their they did or not is immaterial." 
 box for twelve years at time of action 
 
630 
 
 Intent to Defraud — Must It Be Proved? 
 
 his salesmen distinguished between "a" Scriven drawer, meaning 
 one made after the pattern of Scriven's, and "the" Scriven 
 drawer — meaning one made by Scriven himself. This and col- 
 lateral facts were held a basis for a presumption of fraud by the 
 Circuit Court of Appeals (4th Cir.) in 1904.^2 
 
 A further idea of what a court will consider sufficient evidence of 
 intent may be found in Bickmore Gall Cure Co. v. Karns, where the 
 use of a name similar to plaintiff's and other acts of the defendant 
 were held to warrant a presumption of fraud,^^ Here it was 
 
 ^'Scriven v. North, 134 Fed. 366- 
 74r-1904; 67 C. C. A. 348. "There 
 is little direct testimony connecting 
 the defendants or their authorized 
 agents with any positive acts. In 
 the nature of things this would be so, 
 for persons about to engage in un- 
 lawful or questionable undertakings 
 are not likely to proclaim their pur- 
 poses on the house-tops; but there is 
 some testimony which tends to show 
 that the defendants directly, through 
 their authorized agent, endeavored to 
 market their goods, under the guise 
 of the complainants', and that is the 
 testimony of Anderson, who was the 
 manager of their New York branch 
 for several years prior to January 1, 
 1902. He says that he kept a sample 
 of the Scriven drawer on the counter 
 in the New York office; that when 
 customers came in and asked for an 
 elastic seam drawer he would sell them 
 defendants'; if they asked for 'The 
 Scriven drawer,' he would show them 
 defendants' and sell it; and so if they 
 asked for a No. 50. The following 
 questions and answers illustrate the 
 method: 'Then you made a difference 
 between "a" Scriven drawer and 
 "the" Scriven drawer, is that it? 
 A. Yes; when a man asked for a 
 Scriven drawer, I knew that he wanted 
 the side-seam drawer, and I showed 
 him ours. Q. And sold him yours? 
 A. Yes, sir.' And in another answer 
 
 he says: 'We had a sample of the 
 Scriven drawer on our counter, and I 
 have said that it was made the same as 
 Scriven's drawer, with the exception 
 of the crotch pieces in the seat.' The 
 inference seems to be clear that this 
 sample of Scriven's drawers was kept, 
 not for the purpose of showing the 
 difference between the two, but to 
 show the absolute identity between 
 them, so that purchasers, mainly job- 
 bers, who bought to sell again, could 
 see that the defendants' were such an 
 imitation of the Scriven drawers that 
 they could easily be sold again as 
 genuine Scriven." 
 
 " Bickmore Gall Cure Co. v. Karns, 
 134 Fed. 833-1905; 67 C. C. A. 439. 
 "The appellant spent a considerable 
 sum in advertising, and had finally 
 succeeded in establishing a profitable 
 trade, when the appellees attempted 
 to appropriate the phraseology which 
 it had long used, and so to reap the 
 benefit of its efforts and expendi- 
 tures. They learned that the law 
 would not permit this to be done, and 
 then they made some changes; but 
 they were only colorable. The wrong- 
 ful purpose was neither abandoned nor 
 hindered. It was only more speciously, 
 but still potently, pursued. In con- 
 sequence of its long-continued use of 
 the picture of a working horse, in con- 
 nection with the phrase, 'Be sure to 
 work the horse,' the appellant's rem- 
 
Manner in which Truth is Told 
 
 631 
 
 held also that a court would not rest its decision on a minute com- 
 parison of the detail of labels, boxes and names, but on the gen- 
 eral impression that all these features make. 
 
 § 361. Presiunption May be Based on Manner in which the 
 Truth is Told. — Speaking the truth will sometimes furnish a 
 basis for a presumption of fraud. Causing salesmen to make 
 equivocal or literally true statements to customers in such a way 
 as to confuse them, or creating subtle distinctions between 
 brands of goods, in dealing with purchasers or asking customers 
 which of two brands of goods they wish, when the dealer knows 
 they are aware of the existence of but one, will create such a pre- 
 sumption. 
 
 edy had become well known as 'Work 
 the Horse Gall Cure' before the ap- 
 pellees applied to their remedy the 
 picture of four working horses in 
 connection with the words 'Four 
 Horse Gall Cure,' and the phrase 
 'Always work the horse while using 
 the cure.' These matters, with some 
 slight and unimportant variations, 
 prominently appear upon their several 
 packages, circulars, display cards, and 
 directions. Their larger boxes, in 
 which the smaller ones are delivered to 
 dealers, are of substantially the same 
 size, and of exactly the same shape, 
 as those of the appellant. Both are 
 yellow or yellowish in color; and the 
 smaller boxes, in which the respective 
 salves are sold at retail, present like 
 features of correspondence. * * * 
 The true question is not whether the 
 boxes, circulars, advertisements, and 
 directions of the appellees are, in their 
 details, the same, or nearly the same, 
 as those of the appellant, but whether 
 the general effect produced by those 
 of the appellees is such as would be 
 likely to lead ordinary purchasers to 
 accept their gall cure as being that of 
 the appellant; and our consideration of 
 the evidence, and especially of the 
 exhibits, has irresistibly led us to 
 the conclusion that it is. The com- 
 
 plainant would have been entitled to 
 protection against the attempt to de- 
 prive it of its trade or customers even 
 if it had not proved that such attempt 
 had been successful." McLean v. 
 Fleming, 96 U. S. 245-1877; 24 L. ed. 
 828. "The means devised to that 
 end were well calculated to mislead, 
 and it was not essential that any par- 
 ticular person should have been 
 actually misled." Scheuer v. Muller, 
 74 Fed. 225-1896; 20 C. C. A. 161; 
 Swift & Co. V. Brenner, 125 Fed. 826- 
 1903 (C. C. S. D. N. Y.). "But we 
 may add without referring to the 
 testimony in detail, that we think it 
 sufficiently shows that, in at least 
 some of the instances to which it 
 relates, the object designed was ac- 
 compKshed." Hildreth v. McDonald, 
 164 Mass. 16-1895; 41 N.E. 56. Plain- 
 tiff put up candy in paper and printed 
 word "Velvet" in red letters on end 
 of papers and in middle. Defendant 
 used combination of size and shape of 
 candy, which it had a right to do. 
 But in addition it began to print in 
 Roman letters instead of script the 
 word "McDonald" in red ink in 
 middle of its wrapper and not on 
 ends. Held, public were deceived and 
 that the resemblances were not ac- 
 cidental. 
 
632 Intent to Defraud — Must It Be Proved? 
 
 Defendant had been enjoined from use of "Baker's Choco- 
 late," etc., without distinguishing between "W. H. Baker's 
 Chocolate" and "Walter Baker's Chocolate." Thereupon he 
 told his clerks to ask customers Which chocolate they wanted — 
 "We have two Bakers. Which do you want, W. H. or Walter 
 Baker?" Nine out of ten would answer "whichever is best." 
 Salesmen would then give them W. H. Baker's. The court said: 
 "The purchaser was entitled to that which he demanded, to that 
 which had been approved to his taste by experience or which he 
 had been recommended to purchase. In the market there were 
 no ' two Baker's ' products. There was but one, and that was the 
 product of Walter Baker & Co., Limited. The courts had en- 
 joined William Henry Baker from using the word 'Baker' alone, 
 and had required to be prominently placed upon each package 
 the statement that 'W. H. Baker is distinct from the old choco- 
 late manufactory of Walter Baker & Company.' No such 
 statement or representation by the appellee was directed to 
 be made to the inquirer for 'Baker's Chocolate' or 'Baker's 
 Cocoa.' Instead, there is manifested a clear design to mislead 
 and confuse the proposing purchaser with the statement that 
 there were two 'Baker' products in the market. * * * We 
 do not mean to say that it is not within the province of the seller 
 to represent to the proposing purchaser that another article 
 which he has is superior in excellence to that which is called for, 
 and to induce hun by proper argument or statement to pin-chase 
 the other, but he must not represent such other to be the product 
 which the purchaser had called for." ^* 
 
 " Walter Baker & Co., Ltd., v. Slack, 130 Fed. 514-1904 (C. C. A.). 
 
CHAPTER XXIII 
 
 Remedies 
 
 Section 362. Manufacturer's responsibility to consumers for defective goods. 
 
 363. Jurisdiction of courts in unfair competition cases. 
 
 364. Parties. 
 
 365. Injunctions before any act committed — bills in the nature of 
 
 Quia Timet. 
 
 366. Preliminary injunctions. 
 
 367. Final injunctions — general considerations. 
 
 368. The court does not pass upon the measures adopted by the de- 
 
 fendant to correct his unfair acts. 
 
 369. Decree correcting a confusing use of names and signs. 
 
 370. Injunctions against use of color, size, form, etc. 
 
 371. Injunctions against use of family name. 
 
 372. Voluntary discontinuance of infringing acts — effect of. 
 
 373. Injunctions against the use of the name of a former partner or 
 
 former member of a corporation. 
 
 The extent and character of the remedy which the court will 
 grant to the plaintiff is the most vital question in unfair competi- 
 tion law. The rules relating to it are in confusion. The basis on 
 which the relief is given differs with different courts. The prin- 
 cipal point on which opinion differs is the extent to which, in view 
 of modem conditions the rule of caveat emptor should be modified. 
 To what extent should the court protect the public from the 
 substituter, the fraudulent advertiser, and the unfair trader? 
 
 The whole idea of unfair competition law is based on the propo- 
 sition that the defendant is guilty of misrepresentation, either 
 directly or indirectly. 
 
 One theory of remedy is that the defendant should be forbidden 
 to do any act that amounts to a misrepresentation even to the 
 most ignorant or careless purchaser. 
 
 Anothier theory is, that short of actual falsehood in sale of 
 goods, the purchaser must take care of himself and protect himself 
 by the exercise of care and watchfulness. 
 
 Cases can be found taking practically every position between 
 these two extremes. In these cases are found discussions of the 
 characteristics of the "unwary purchaser," the "careless pur- 
 
 633 
 
634 Remedies 
 
 chaser," and the "neghgent purchaser" as bearing on the duty 
 of the defendant to distinguish his goods. 
 
 On the other hand, we find in other cases the rule, that an affirm- 
 ative duty rests on all new-comers in any line of business to dis- 
 tinguish their goods from those of older concerns. From these 
 varied standpoints the court views the acts of the defendant and 
 determines on the relief to be granted. More and more clearly it 
 seems to be recognized that, whatever be the basis of the rehef, it 
 must result in stopping, ending, the confusion caused by the 
 defendant's acts. It must encourage and stimulate honest trading 
 and fair advertising. 
 
 Some years ago a form of statute intended to prevent fraudulent 
 advertising was published by "Printers' Ink,^' and this magazine 
 urged the adoption of statutes of this character. A most unusual 
 response was made to this appeal resulting in the passage of the 
 model statute, sometimes in the exact form suggested and some- 
 times with slight modifications, by a large number of state 
 legislatures and as an ordinance by numerous city governments. 
 This is perhaps the most tangible evidence of the desire of the 
 public for more specific remedies against, commercial fraud and 
 unfairness in the selling of merchandise of general consumption. 
 
 The failure of the "explanatory phrase" naethod of judicial 
 regulation of unfair competition to give practical commercial 
 relief against unfair competition has been commented on, in the 
 chapter on " Family Names." Reference is here made to the dis- 
 cussion to be found in that chapter. With the increase in the 
 efficiency of advertising and business publicity there has been 
 brought home to the public the extent to which the average house- 
 hold suffers actual money loss from unfair competition and com- 
 mercial fraud. The Post Office Department reports annually 
 enormous losses suffered by the public from mail frauds alone. 
 A decided effort on the part of our courts to make the remedies 
 in unfair competition cases more effective commercially is needed 
 if real protection against such frauds is to be available in the 
 future. It often happens that a court in its opinion will condemn 
 a defendant in the strongest terms as guilty of unfair competi- 
 tion, yet will enter a decree that will permit him to continue the 
 use of his offending symbols in a manner hardly less objectionable 
 than before and enjoy the added advantage of doing so under 
 judicial sanction. 
 
Manupacttxrees' Responsibility foe Defective Goods 635 
 
 § 362. Manufacturers' Responsibility to Consumers for Defec- 
 tive Goods. — The responsibility of manufacturers and dealers to 
 the public who buy and consume their goods is increasingly 
 recognized, and rightly so, and remedies have been applied 
 recently in such cases, adequate to satisfy the injuries suffered 
 from disregard of these responsibilities. In the case of Ketterer 
 V. Armour " the plaintiff alleged that she was poisoned by eating 
 pork prepared by Armour & Co., which was infected with tri- 
 chinae. The defendant demurred and contended that inasmuch 
 as it did not deal directly with the consumer, but rather through 
 middlemen, the suit should be dismissed. In overruUng the 
 demurrer. Judges Noyes said: 
 
 "The contention of the defendant is that a manufacturer who 
 deals with the middleman and not directly with the consumer 
 owes the latter no duty whatever except the duty owing to all 
 men to refrain from knowingly and willfully inflicting injury. And 
 as willful injury is hardly conceivable, the claim comes down to 
 this, that a producer of meats can take no steps to detect poison- 
 ous parasites in his products although the danger of their presence 
 is well known and can be guarded against, and yet may sell such 
 products with impunity so far as the demands of poisoned con- 
 sumers are concerned. 
 
 "This contention is based upon the theory that so long as the 
 manufacturer sells only to the dealer or middleman he is a stranger 
 to the consumer; there is no contractual relationship to base a 
 duty upon. It is said that the dealer may sue the manufacturer 
 and that the consumer may sue the dealer but that the consumer 
 cannot sue the manufacturer. In other words if the claim be well 
 founded the middleman has an effective remedy, but he is not 
 injured. The consumer is injured, but he cannot look to the 
 wrongdoer and must sue the local dealer, who is likely to be irre- 
 sponsible and is certainly free from fault. 
 
 "And this contention has support in authority. It is unques- 
 tionably the rule in the case of many manufactured articles where 
 the consequences of negligent manufacture cannot be followed 
 down to their final results. Thus, as is pointed out in one of 
 the cases, a careless manufacturer of iron could not be held re- 
 sponsible for the destruction of a steamer from the bursting of a 
 boiler into the construction of which his imperfect material, 
 
 " 200 Fed. 322. 
 
636 Remedies 
 
 after passing through many hands, had gone. In such cases, and 
 in others less clear, it is said that public policy requires that the 
 remedy for negligence should not be pressed to an impracticable 
 extreme. But I am wholly unable to apply this rule in the 
 present case; much more to apply it in the name of public poUcy. 
 Public policy regards the public good and I am yet to be con-: 
 vinced that the public welfare will be promoted by holding that 
 producers and manufacturers owe no duty to consumers to 
 guard against diseased and poisonous meats and provisions, except 
 in those isolated cases where they happen to sell directly to 
 them. 
 
 "The remedies of injured consumers ought not to be made to de- 
 pend upon the intricacies of the law of sales. The obligation of the 
 manufacturers should not be based alone upon privity of contract. 
 It should rest, as was once said, upon ' the demands of social jus- 
 tice.' The producer should be held responsible for the results of 
 negligent acts which he can readily foresee. There is no analogy be- 
 tween the case where defective material after passing through many 
 hands produces not-to-be-looked-for ill effects. The iron manu- 
 facturer who fails to inspect a piece of iron cannot foresee that it 
 will be used in a boiler and cause a ship to sink. But the meat 
 packer who fails to inspect his products for poisonous parasites or 
 ingredients, knows that poison will poison and that the persons to 
 be poisoned through his neglect will be those who eat his products 
 and no one else. The natural, probable and almost inevitable 
 result of his negligence will be injury to the consumer and, in my 
 opinion, every consideration of law and public policy requires 
 that the consumer should have a remedy." 
 
 § 363. Jurisdiction of Courts in Unfair Competition Cases. — 
 The general rules as to jurisdiction apply to unfair competition 
 cases, and hardly require discussion in this book. Federal juris- 
 diction in cases of this sort, attaches in two classes of cases. First, 
 those arising under the United States trade-mark statutes. 
 Second, mifair competition cases based on diversity of citizenship.^ 
 
 '■A. Leschen & Sons Rope Co. v. that the jurisdiction of the federal 
 
 Broderkk & Bascom Rope Co., 134 court depends solely on whether 
 
 Fed. 571-1904; 67 C. C. A. 418; plaintiff's registered trade-mark is 
 
 afiarmed in 201 U. S. 166-1906; 30 valid, and if not so, jurisdiction of the 
 
 L. ed. 710; 26 Sup. Ct. 425. An action case as one of unfair competition can- 
 
 for infringement of trade-mark. Held, not be assumed. " Much is said in the 
 
Parties 637 
 
 So far as jurisdiction of the Federal courts is concerned, unfair 
 competition cases do not differ from other cases. The general 
 rules in that regard apply. 
 
 The courts are liberal in taking jurisdiction in these cases. In 
 Morris V. Altstedter,^ the defendant did business in New York as 
 well as in Canada. He made inquiry of the plaintiff in New York 
 as to his prices, and then in Canada made goods closely resembling 
 plaintiff's and sold them in Canada. Held, that the New York 
 Court had jurisdiction. 
 
 In Vacuum Oil Co. v. Eagle Oil Co.,^ the defendants shipped 
 oil abroad in barrels unmarked, except for identification, and 
 then branded them abroad with the plaintiffs' marks. A ques- 
 tion of the jurisdiction of the United States Circuit Court over 
 the action arose, and Cross, J., held the scheme having been 
 conceived here and partially carried out here, the court had juris- 
 diction. He says (p. 874): "It cannot be that the arm of the 
 court is too short to reach and stop this fraudulent conduct, or 
 so much of it, at least, as is carried on in this country." The 
 court also held that " the fact that some of the fraudulent acts 
 were committed outside the jurisdiction of this court and outside 
 of the United States will not avail the defendants " (p. 875). 
 
 § 364. Parties. — The fact that the plaintiffs have distinct, 
 different, and unequal interests in the subject-matter of an 
 equitable proceeding will not abate the proceeding, for equity 
 provides for such a contingency and will, in a decree, adjust and 
 define the rights of each. This applies to unfair competition 
 cases.* 
 
 (a) Liability of Directors and Officers in Unfair Competition. — 
 It was held in Armstrong v. Savannah Soap Works,^ that the 
 
 brief of appellant to the effect that without authority to grant any relief 
 the defendant has been guilty of unfair on the ground of unfair trade competi- 
 trade competition by palming off on tion." Citing Elgin National WatchCo. 
 the public ropes of its manufacture as v.IllinoisWatch Case Co., 179 U.S. 665- 
 complainant's rope. This is a sub- 1900; 21 Sup. Ct. 270; 45 L. ed. 365. 
 ject, however,, over which the federal ' 156 N. Y. Supp. 1103-1916. 
 courts have no jurisdiction. Com- ' 154 Fed. 867; affirmed in 162 
 plainant and defendant are both Fed. 671-1908. 
 citizens of the same state, and for ■* Jewish Colonization Ass'n. v. Solo- 
 tins reason jurisdiction is confined to mon & Germanski, 125 Fed. 994-1903 
 the trade-mark as registered. If that (C. C. N. Y.). 
 mark is invalid, the federal courts are ' 53 Fed. 124-1892 (C. C. Ga.). 
 
638 Remedies 
 
 directors of a corporation and, it seems, its agents or employees 
 also, may properly be included as parties defendant in a suit 
 for trade-mark infringement or unfair competition. But directors 
 will not be joined with the corporation as defendants in the 
 absence of an allegation as to them except that they are directors." 
 Where a suit for unfair competition was brought against individ- 
 uals doing business under a corporate name, the corporation, even 
 if it existed and if the individuals were its officers or agents, was 
 not a necessary party.'' 
 
 In Saxlehner v. Eisner & M. Co? executive oflScers of a cor- 
 poration were held hable for infringements of the corporation's 
 rights, where they personally directed the infringement, especially 
 as they controlled the corporation; and the fact that an injunc- 
 tion had been obtained against the corporation, its officers, and 
 agents, did not preclude complainant from obtaining a separate 
 injunction against the officers as individuals. 
 
 (6) Printers who make labels, or manufacturers of wrappers or 
 bottles, or articles which are used unfairly, may be made parties 
 defendant jointly with the trader who actually does the passing 
 off.s" 
 
 (c) Joint Parties. In equity all having interests involved in 
 the suit may join therein for the protection of such rights in the 
 subject-matter as they may have, and the same acts may be 
 proceeded against in one action, although the rights. may be 
 diverse, — as, for example, the infringement of separate patents 
 by one machine.^ 
 
 So, in Northcutt v. Turney,^" it was held that owners of dif- 
 ferent springs, entitled to use a common trade-mark or trade 
 name, might join in a suit to enjoin its use by another. 
 
 In Morse v. Hall,^^ the administrator of a deceased partner 
 joined with members of a firm in authorizing the use of the de- 
 ceased partner's name. Those controlling a corporation are prop- 
 erly joined as defendants in an action against it,^^ as are the 
 
 » Cropper v. Cropper, 23 R. P. C. 696; Hillside Chemical Co. v. Munsm 
 
 388-1906. & Co., 146 Fed. 198. 
 
 ' Elgin Nat. Watch Co. v. Love- = Jewish Colonization Ass'n. v. Sol- 
 land, 132 Fed. 41-1904 (C. C. la.), omon & GermansU, 125 Fed. 994. 
 
 8 147 Fed. 189-1906 (C. C. A. 2d •» 101 Ky. 314. 
 
 Cir.). " 109 Mass. 409. 
 
 8" See Sator v. Schaden, 125 Iowa, " California Fig Syrup Co. v. Im- 
 proved Fig Syrup Co., 51 Fed. 296. 
 
^ Injunctions Before Any Act Committed 639 
 
 organizers and officers who own most of the stock.'' In general, 
 agents and servants may be joined as defendants^ although it 
 would seem that those who are mere workmen in the employ of 
 a manufacturer " should not be so joined. An exclusive licensee 
 should be joined as a complainant with the proprietor.'^ 
 
 (d) Stockholders and Agents of a corporation sued for unfair 
 competition are not proper parties defendant.'" But in William 
 G. Rogers Co. v. International Silver Co." it was held that an 
 individual engaged in business in which he is chargeable with 
 unfair competition and who transfers the business to a corporation 
 of which he becomes a stockholder, may be joined with the corpo- 
 ration as a defendant. Sellers of the offending goods may be 
 joined as defendants with the manufacturers.'^ 
 
 It is not indispensable to join as a defendant the corporation 
 in the name of which certain individual defendants charged with 
 unfair competition were carrying on a business.'* Nor is it neces- 
 sary to join as a defendant the actual proprietor of a business who 
 was unknown to the public and who acted through an agent. ^^ 
 
 §365. Injunctions Before any Act Committed — Bills in 
 the Nature of Quia Timet. — Injunctions will be granted to 
 prevent threatened acts of unfair competition. It is not neces- 
 sary to wait until a name that tends to mislead the public and 
 is likely to be used for that purpose, is actually used in the busi- 
 ness of the defendant. Equity favors him who in such a case 
 acts promptly and before rights or equities (such as those of 
 innocent stockholders) have attached.^' Where an answer avers 
 that the defendant intends to do unfair acts in the future, sub- 
 stantially the same as those complained of, an injunction is war- 
 ranted. This is held in Enterprise Mfg. Co. v. Landers,^^ where the 
 goods, which the defendant had made in imitation of those of the 
 plaintiff, had been offered for sale, but none sold. An injunc- 
 
 " Burrow v. Marceau, 124 A. D. ^' Matsell v. Flanagan, 2 Abb. Pr. 
 
 (N. Y.) 665. (N. Y.) 459. 
 
 "Estes V. Worthington, 30 Fed. ^^ Elgin Watch Co. v. Loveland, 
 
 465. 132 Fed. 41. 
 
 '6 Wallach v. Wigmore, 87 Fed. 469 »» Bradley v. Norton, 33 Conn. 157. 
 
 (preliminary injunction denied where '^^ Edison Storage Battery Co. v. 
 
 such licensee was not joined). Edison Automobile Co. of Washing- 
 
 " HaWs Safe Co. v. Herring-HaOr ton, D. C, 67 N. J. Eq. 44^1904; 56 
 
 Marvin Safe Co., 146 Fed. 37. Atl. 861. 
 
 " 118 Fed. 133. ^' 131 Fed. 240-1904. 
 
640 REMEDrES 
 
 tion will be granted against persons about to fonn a corporation 
 to engage in the same business as plaintiff, under a name so 
 similar to plaintiff's as to be likely to cause confusion and so 
 injure plaintif5f's business, without waiting for business to be 
 actually begun under the corporate name.^' No evidence of 
 actual deceit is necessary to procure such relief. Probability 
 of deception may be enough, but it must be imminent. No sub- 
 stantial pecuniary loss need be proved. The mere fact of very 
 close resemblance of labels has been held enough to warrant an 
 injunction. The Court of Appeals in New York has said: ^* 
 "No evidence was given or offered (in this case) to show that any 
 person had actually been deceived by the imitation of the plain- 
 tiff's trade-mark, and we think that none was necessary for the 
 maintenance of the action. It is the liability to deception which 
 the remedy may be invoked to prevent. It is sufficient if injury 
 to the plaintiff's business is threatened or inuninent to authorize 
 the court to intervene to prevent its occurrence. The owner is 
 not required to wait until the wrongful use of his trade-mark has 
 been continued for such a length of time as to cause some sub- 
 stantial pecuniary loss." ^^ 
 
 Preliminary injunction will be granted against use of a trade 
 name before any use is made of it at all, where it appears that 
 there are other names which are legitimate and proper for the 
 purpose, and that the defendant is threatening to take away 
 another's business by use of the particular name in question. ^^ 
 
 Two corporations, the "Elgin National Watch Company" 
 and the "Elgin Watch Case Company" were held entitled to 
 restrain defendants from completing the incorporation of a rival 
 company, to be located at Elgin, under the name of the "Elgin 
 National Watch Case Company," on the ground that confusion 
 would be sure to result." 
 
 The "Universal Life Assurance Society," which had long been 
 doing a large life insurance business with head offices in London, 
 
 "Hendriks v. Montagu, 50 L. J. '^See also Manufacturing Co. v. 
 
 (Ch.) N. S. 456-1881; Huntley & Trainer, 101 U. S. 51-1879; 25 L. ed. 
 
 Palmer v. Reading Biscuit Co., Ltd., 993. 
 
 10 R. P. C. 277-1893. See §108, "Huntley & Palmer v. Reading 
 
 note 44. Biscuit Co., Ltd., 10 R. P. C. 277- 
 
 2* Taendsticksfabriks Akticbolagat 1893. 
 
 Vulcan V. Myers, 139 N. Y. 364-67- " jjjigin j^^t. Watch Co. v. Eppenr 
 
 68-1893; 34 N. E. 904. stein, 1 111. Circ. Ct. 602-1892. 
 
Pbeliminary Injunctions 641 
 
 was held entitled to an injunction against the registration of the 
 name "Universe Life Assurance Association, Limited." The 
 proposed new company had been advertised as about to engage 
 in the business of life insurance in Great Britain and elsewhere, 
 and had a temporary office in London, but had not yet com- 
 menced business. ^^ 
 
 Again, although infringement has been discontinued before 
 the bringing of the suit, complainant may have an injunction 
 where the acts, or declarations of defendants indicate that they 
 still claim the right to do the acts which the complainant al- 
 leges to constitute the infringement.^^ The complainant is not 
 obliged to rely upon the promises of the defendant to respect 
 his rights in the future. He is entitled to the order of the court 
 if the defendant has been guilty of inequitable conduct. 
 
 § 366. Preliminary Injunctions. — In general, a preliminary 
 injunction will not be granted where the evidence is conflicting 
 and doubtful. Evidence of unfair conduct must be reasonably 
 clear.'" But even where a preliminary injunction is refused, 
 protection in some other form, pending a final hearing, is often- 
 times afforded the complainant, as by requiring defendant to 
 keep an account of sales. In Goodyear Rubber Co. v. Day/^ the 
 claim was that the name "Goodyear" was entitled to be protected 
 as a trade-mark or trade name, although the patent had expired; 
 and that it had not become common property as merely descrip- 
 tive. The court was incUned to think that there was no infringe- 
 ment, and refused a preliminary injunction, but directed an 
 account of sales to be kept by defendant.'^ 
 
 The pubUsher of "The Pictorial Almanack" sought to enjoin 
 the pubUsher of "Old Moore's Family Pictorial Almanack," the 
 cover of which resembled in some points that of the first almanac, 
 but in other points differed conspicuously. The court refused an 
 
 ^Hmdriks v. Mmtagu, 50 L. J. Auwell, 158 Fed. 462-1908 (C. C. 
 
 (Ch.) N. S. 456-1881. E. D. N. Y.). 
 
 "Saxkhner v. Eisrm- & M. Co., "22 Fed. 44^1884 (C. C/ E. D. 
 
 147 Fed. 189-1906 (C. C. A. 2d Cir.), Mo.). 
 
 affir min g 140 Fed. 938-1905 (C. C. " Stirling Silk Mfg. Co. v. Sterling . 
 
 S. D. N. Y.). Silk Co., 59 N. J. Eq. 394-1900; 46 
 
 "'Cantrell & Cochrane v. Witte- Atl. 199. A preliminary injunction 
 
 mann, 109 Fed. 82-1901 (C. C. S. was denied, on condition, however, 
 
 D. N, Y.); Benjamin Moore & Co. v. that defendants should keep an ac- 
 count of profits pending suit. 
 
642 
 
 Remedies 
 
 injunction, but directed an account of sales to be kept, Chancellor 
 Cottenham saying that unless the legal right is very clear in a case 
 of this kind, no preliminary injunction should be granted.^' 
 
 (a) Temporary Relief, Pending Trial. — It frequently happens 
 that an appUcation will show apparent grounds for a preliminary 
 injunction, provided the facts alleged are true, but it is not possi- 
 ble for the court to be certain before trial of the truth of the 
 allegations of these facts. In such cases preliminary relief of a 
 temporary sort may be granted until the facts are passed upon 
 at a final hearing. 
 
 In Rushmore v. Saxon ^* unfair competition in imitating a lamp 
 was alleged. Decision upon most of the questions involved — as 
 
 ^^ Spottiswoode v. Clarke, 2 Phil. 
 154-1846; Van Camp Packing Co. 
 V. Cruikshanks Bros. Co., 90 Fed. 
 814-1898 (C. C. A. 3d Cir.). Pre- 
 liminary injunction held to have been 
 properly denied, where the evidence 
 did not show with certainty that 
 there was such similarity in the dress 
 of goods as to mislead the ordinary 
 purchaser, there being no proof that 
 anyone had actually been misled. 
 N. Y. Asbestos Mfg. Co. v. Ambler 
 Asb. Air-CeU Cov'g Co., 99 Fed. 85. 
 1900 (G. C. E. D. Pa.). Not granted 
 on ex parte affidavits unless clear case 
 made out, where it would result in 
 serious damage to defendant. Baker 
 V. Sanders, 97 Fed. 948-1899 (C. C. 
 E. D. Pa.). Courts are inclined to 
 grant a preliminary injunction against 
 the use of the labels, where a decree 
 has been entered by another court in a 
 suit by the same complainant against 
 a defendant, enjoining the use of the 
 same labels. E. T. Fairbanks & Co. v. 
 Des Moines Scale & Mfg. Co., 96 
 Fed. 97^-1899 (C. C. S. D. Iowa). 
 Refused where complainant had for 
 many years known of defendant's 
 alleged infringement, where answer 
 fully meets the case made by the bill, 
 and where defendant's insolvency is 
 not shown. Centaur Co. v. Marshall, 
 
 97 Fed. 785-1899, 38 C. C. A. (8th 
 Cir.) 413. Refused, where asked 
 to enjoin use of wrappers already 
 abandoned by defendants, or of 
 advertising matter which they agree 
 at the hearing not to use pend- 
 ing the suit. Clear case must be 
 made out, both as to right and to 
 injury. Postal Tel. Cable Co. v. Netter, 
 102 Fed. 691-1900; N. Y. Asb. Mfg. 
 Co. V. Ambler, etc., Co., 102 Fed. 890- 
 1900; Pfeiffer v. Wilde, 107 Fed. 456- 
 1901; Cantrell & ^Cochrane v. Witte- 
 mann, 109 Fed. 82-1901 (conflict of 
 evidence as to priority of form of 
 label); Diamond Match Co. v. 
 Safe Harbor Co., 109 Fed. 154-1901; 
 see Schenker v. Awerbach, 89 App. Div. 
 (N. Y.) 612; National Starch Co. v. 
 Koster, 146 Fed. 259-1906. Not 
 granted on conflicting evidence — 
 where complainant had known of 
 conduct of defendant for a year and a 
 half. C. 0. Burns Co. v. W. F. Burns 
 Co., 118 Fed. 944-1902; Int. Silver Co. 
 v. Simeon L. cfc George H. Rogers Co., 
 110 Fed. 955-1901. Part of the relief 
 sought may be afforded by prelim- 
 inary injunction, while another part 
 is withheld until hearing and final 
 decree. 
 
 ^* 154 Fed. 213-1907. 
 
Preliminary Injunctions 643 
 
 to details of construction and as to certain words used — was 
 postponed till final hearing; but defendant was required, by the 
 preliminary injunction, to enlarge his nameplate so as to make 
 his distinctive name more conspicuous. 
 
 In another case the following order was made: 
 
 "Upon filing a bond for $2,000, conditioned upon final suc- 
 cess in the suit, and which would seem to be amply sufiicient to 
 cover any additional expense to which defendant may be put, 
 complainant may take an injunction pendente lite restraining the 
 defendant, Keller, from selling the candies of Allegretti & Co. in 
 packages bearing the name 'Allegretti,' unless such name be 
 accompanied with the statement, ' No conliection with the original 
 Allegretti of Chicago;' and be further restrained from using said 
 name in signs or advertisements unaccompanied with a like 
 statement." ^^ 
 
 (6) Important and Basic Facts not Usually Decided on Prelimi- 
 nary Hearing. — In the Southern District of New York it has 
 been said to be the practice of the court to delay issuing injunc- 
 tions in trade-mark cases unless convinced that the validity of 
 the mark had been tested.^^ Whether the court would apply 
 this rule when, in a case of unfair competition, the affidavits on 
 application for preliminary injunction show that a representation 
 had been made by the defendant that he was the plaintiff, or 
 his goods were the plaintiff's goods, may be doubted. 
 
 (c) Identity and Quality. — A broad decision as to identity or 
 quality as between two brands of goods will not be rendered on 
 interim application. The "Chartreuse" case well illustrates this 
 point.^^ The monks of the Grande Chartreuse in France had long 
 sold a liqueur, claimed to be made by a secret process, and well 
 known as "Chartreuse," — the name being registered as a trade- 
 mark in the United States. About 1901 the order was judicially 
 dissolved, its members expelled from France, and a receiver ap- 
 pointed, who, under authority of the court, continued the trade- 
 marks formerly used by the monks, and put up the goods in the 
 same manner and with the same labels as they had done. De- 
 fendant was the receiver's agent in the United States. The monks 
 removed to Spain, and there engaged in the manufacture of what 
 
 '^AUegretti v. Kell&; 85 Fed. 643. ^^ Baglin v. Cusenier Co., 141 Fed. 
 "Carmel Wine Co. v. Palestine 497-1905 (C. C. A. 2d Cir.). 
 Hebrew Wine Co., 161 Fed. 654-1908. 
 
644 Remedies 
 
 they claimed to .be the only genuine "Chartreuse," which they 
 sold under a new label and trade-mark. A preliminary injunc- 
 tion restraining defendant from using in this country the bottles, 
 labels, name, and trade-mark formerly used by the monks, based 
 on affidavits largely made on information and belief, and which 
 did not determine the question whether the product is the same 
 originally sold under such trade-mark, was too broad in its terms, 
 and was modified by allowing sales by defendant, provided an 
 additional label was attached to each package reading as follows: 
 "This liqueur is made at the Grande Chartreuse, in France, under 
 the direction of M. Lecouturier, appointed liquidator of the prop- 
 erty of the congregation -of Carthusian monks after its dissolution 
 and expulsion from France" (p. 499). 
 
 (d) Conditions May be Required of Plaintiff Before Injunction 
 Issues. — A preliminary injunction may require, as a conditioii 
 of its issuance, that a stipulation as to future conduct be entered 
 into by the plaintiff with the defendant. Where the defendant 
 manufactured what might properly be designated as "Clark 
 Spool Cotton," and both parties advertised their own goods as 
 the only genuine article as described, the plaintiffs were held not 
 entitled to enjoin defendant from continuing such advertisements, 
 unless plaintiffs would stipulate to discontinue their own adver- 
 tisement of the same nature.** 
 
 In the ordinary case, a preliminary injunction will prohibit 
 the specific imitation complained of and also any other mislead- 
 ing imitation, leaving open the question as to just what may be 
 misleading, after holding that the one in use by the defendant is 
 actually causing deception. 
 
 Lacombe, J., has granted a preliminary injunction against 
 use of packages, samples being annexed to the order, and against 
 the use of "any other packages which by the collocation of 
 bottle, carton, wrappings, labels, colors, and type so simulate the 
 small packages of the complainant as to be calculated to mislead 
 purchasers," and thus leaving it to the parties themselves to de- 
 cide to what packages, bottles, and the like would or would not 
 be similar.'^ ^ 
 
 (e) Injunction Directing Use of Explanatory Phrases. — To 
 find (as has been done in some cases in which explanations 
 
 '8 Clark V. Clark, 25 Barb. (N. Y.) " Hansen v. SiegelrCooper Co., 106 
 
 76-1857. Fed. 690-1900 (C. C. S. D. N. Y.). 
 
Preliminary Injunctions 645 
 
 have been ordered to be affixed by the defendant to his name 
 or label) that the defendant has intentionally attempted to pass 
 off his goods as the plaintiffs, and then to permit him to continue 
 the same acts, with an explanation which gives notice that the 
 defendant is committing a fraud but the public should disregard 
 it, is neither logical nor effective to prevent fraud. 
 
 The explanatory phrase is a compromise growing out of the 
 difficulties of family name and geographic name cases, largely. 
 It is a makeshift. It admits that the use of the name causes 
 fraud and the court's lack of power to prevent that fraud. 
 
 Sometimes a preliminary injunction has been granted directing 
 that any use of the name claimed by the plaintiff shall be accom- 
 panied by a statement that the defendant has no connection 
 with the plaintiff, this being ordered because of the affirmative 
 duty which rests on the defendant to differentiate the name he 
 uses as a trade name from other names which are in use when he 
 adopts his own trade name, leaving the granting of more far- 
 reaching relief to the trial. ^ Compelling defendant to use ex- 
 planatory phrases is a favorite method, in some courts, of solving 
 (if such decrees can really be said to solve or settle the issues in 
 such instances) difficult cases where both plaintiffs have apparent 
 rights to the use of the name or mark involved in the suit. An 
 increasing number of such decrees are found in family name cases. 
 See chapter on "Family Names." Explanatory phrases some- 
 times offer the only solution of a case fair to both sides. In other 
 cases, use of these phrases has been ordered in face of proof 
 that no amount of explanation will eliminate confusion and fraud. 
 Where the article sold by the parties is small and low priced, 
 bought frequently and carelessly by the public, or where the carton 
 wrapper or distinguishing mark is immediately torn off a cheap 
 article by the average buyer of it, the use of explanatory phrases 
 
 *" Allegretti Choc. Cream Co. v. the identity of its own products and 
 Keller, 85 Fed. 643-1898 (C. C. S. those of plaintiff respectively. Held, 
 D. N. Y.). Complainant manufac- that defendant should be restrained, 
 tured confectionery in Chicago, its pendente lite, from selling the goods of 
 products being known also in New AUegretti & Co. in packages bearing 
 York. Defendant was the New York the name "AUegretti" unless accom- 
 agent of AUegretti & Co., competing panied with the statement "no con- 
 manufacturers in Chicago. The court nection with the original ' AUegretti ' of 
 considered that the last-named firm Chicago," and fromadvertising in that 
 hadwiUfuUy created confusion as to name without a similar statement. 
 
G46 Remedies 
 
 is a pure farce. This fact was sunimarized once for all by Lord 
 McNaughton when he said of Stone Ale buyers: "People want 
 beer, not explanations." The object of an unfair competition 
 suit is not explanation of confusion but elimination of confusion. 
 
 Usually there is little reason for directing the use of explana- 
 tions even during the pendency of the action. The use of 
 such phrases is not and never can be a corhplete and effec- 
 tive remedy giving adequate relief to the plaintiff, because 
 there is no certainty that the explanation reaches those who 
 consider buying the goods to which it is attached. Why should 
 a defendant be permitted to use a symbol which is so confusing 
 as to make an explanation necessary and which at the same time 
 renders the explanation futile? If the symbol be a poison that 
 demands an antidote — why permit the use of the poison at all? 
 
 (J) The Necessity Rule. — Elsewhere in this volume the rule of 
 necessity in these cases is discussed. Often there is a clash between 
 the right of the defendant on the one hand to use a name that is 
 in the public domain or is his family name, and on the other the 
 right of the plaintiff to be freed of unfair competition and the 
 right of the public to a reliable means of choosing between the 
 goods of the two parties. Where such a clash exists, the courts 
 usually consider that they are not warranted in depriving the 
 defendant of the use of his name or a name publici juris even 
 though he uses it as an instrument of fraud. It is true generally 
 speaking that every man has a right to the use of his own name, 
 and that every one has a right to use names and words in the 
 public domain. That these principles should be so appUed as 
 to prevent equity from stopping commercial fraud, seems impos- 
 sible, yet such is often the fact. 
 
 It would seem possible to protect the plaintiff and the public 
 in these cases, more effectively than can be done by explanations, 
 by applying to many of them the rule of necessity. This rule is 
 well recognized in cases involving corporate names. The courts 
 take notice of the fact that in choosing a corporate name it is not 
 necessary to adopt any particular name. This being so it is held 
 to be the duty of the incorporators to choose one that will not 
 conflict with the names already in use in the business in which the 
 new corporation is to compete.^* 
 
 " Higgins v. Higgins, 144 N. Y. Oneida Game Trap Co., Inc., 168 A. 
 462-1895; Oneida Community v. D. (N. Y.) 769. 
 
Preliminary Injunctions 647 
 
 Many defendants in cases of this sort have chosen deliberately 
 names that are similar to the names in use by the plaintiff, and 
 have done this without the slightest commercial necessity for so 
 doing. Absolutely no commercial necessity required Chas. S. 
 Higgins to adopt the name Higgins Soap Co. for his new con- 
 cern.*^" The promoters of the Modern Pen Co. were under not the 
 slightest necessity commercially to sell pens under the name 
 "Waterman." They could equally well sell their pens by any 
 one of a thousand other names.^^*" 
 
 The fundamental and outstanding fact in all these cases is that 
 the dealer who is seeking to build up his business on goods pos- 
 sessing pecuUar merit of their own, will do almost anything to 
 escape (and not adopt) methods that will confuse his goods with 
 those of a competitor. If the Modern Pen Co. was not quite con- 
 tent that its pens should be confused with those of another and 
 older concern its officers would go to extreme lengths to prevent 
 the name "Waterman" being in any way associated with its goods, 
 instead of fighting to the Supreme Court for the right to use 
 that name. 
 
 In dealing with defendants who claim superior merit for their 
 goods and yet fight to be able to sell them under some mark that 
 will cause them to be confused constantly with goods of compet- 
 itors, the courts should not stop at explanations and apologies, 
 even in granting interim orders or preliminary injunction appli- 
 cations, but, except in cases where the defendants can show that 
 real commercial necessity compelled them to do as they have done, 
 should apply the rule that he who abuses a right forfeits it; and 
 should forbid such defendants to use geographic, family, and 
 corporate names thus abused, not in all ways, but in the one 
 particular business field in which they have misused them. 
 
 (g) Preliminary Injunction Essential to Justice in Certain 
 Classes of Cases. — In some instances the issuance of a preliminary 
 injunction is most important, if not vital to the protection of in- 
 dustrial property. The effect of a continuing trespass upon real 
 property can usually be estimated with reasonable certainty. 
 The effect of the sale of an infringement or imitating article upon 
 the reputation and future of an article of merchandise, can be 
 
 *'^" Higgins v. Higgins, 144 N. Y., " L. E. Waterman Co. v. Modern 
 462-1895; 39 N. E., 490; 27 L. R. Pen Co., 235 U. S. 88. 
 A., 42. 
 
648 • Remedies 
 
 estimated or measured by no one, with any accuracy. Public 
 confidence in merchandise is under no man's control. It may be 
 lost forever to a plaintiff, if he be denied a preliminary injunction. 
 While he is awaiting trial and overcoming the dilatory tactics of 
 an opponent, the reputation of an article just gaining a place in 
 pubUc confidence may be practically ruined by a "fighting brand " 
 or "competitive brand" of an unscrupulous rival fighting to pre- 
 vent the increase of competition. 
 
 On this point the following statements are most pertinent: 
 "However valualjle the plaintiff's invention may be, yet if it be 
 discredited by a worthless article, it would be impossible, in any 
 reasonable time, to restore the public confidence in the genuine 
 article. In this consists the injury." *" 
 
 "If the complainants be not protected by preliminary injunc- 
 tion against such use, — if, in other words, that question be post- 
 poned to the final hearing, — there is every inducement to the 
 defendant to delay and prolong the litigation, continuing, mean- 
 while, the'assaults upon the good-will of the complainants, so that, 
 even if final decree be at last rendered in favor of complainants, 
 the good-will will have been so seriously and irreparably injured, 
 if not in great measure destroyed, as to leave the complainants 
 practically without remedy." ^' 
 
 § 367. Final Injunctions — General Considerations. — In 
 formulating a final injunction in trade-mark and unfair competi- 
 tion cases, the object of the court is to stop confusion, to eliminate 
 the unfair dealing. Its primary purpose is to protect not the 
 defendant's business but that of the plaintiff. Judge Woodward 
 of New York has said: "The plaintiff is entitled to a practical 
 injunction. * * * It is not the province of a court of 
 equity to aid wrongdoers; it fulfills its mission when it has re- 
 strained the commission of a wrong, leaving the wrongdoer to 
 figure out for himself how far he can disregard the mandate of 
 the court and the requirements of a clean conscience." ** 
 
 The injunction should, however, be no broader than is necessary 
 to give adequate protection to the plaintiff. Where the case 
 
 "McLean, Cir. J., in Coffem v. ** Oneida Community v. Oneida 
 Brunton, 5 Fed. Cas. 1184, 1185-No. Game Trap Co., Inc., 168 A. D. (N. Y.) 
 2946-1849. 769, 782-1915. 
 
 " GarreU v. T. H. Garrett & Co., 78 
 Fed. 472^79; 24 C. C. A. 173. 
 
Measures Adopted by Defendant to Correct Acts 649 
 
 involves a name that is publici juris the injunction should not be 
 too general in terms but should show that it is the trade meaning 
 of the word or name and not its general meaning that is involved. 
 Where the plaintiff possesses full rights to a trade use of a fanciful 
 word or term the injunction may be absolute. Where explanatory- 
 phrases are ordered to be used by the defendant the injunction 
 sometimes specifies the exact form of such phrases. 
 
 As to forms of final decrees, see Cohen v. Nagle*^ enjoining 
 use of name "Keystone Maid Cigars;" also a form of injunction 
 in Meyer v. Dr. Bull Co.*^ The form in Von Faber v. Faber " 
 was in part this: "The complainant is entitled to a decree en- 
 joining and restraining the defendant from using the name 
 'Faber' alone as applied to pencils or rubber stationer's goods, 
 and from using the name 'Faber Pencil Company,' or 'E. Faber 
 Pencil Company,' and from making, selling, or causing to be 
 made or sold, or advertising, or causing to be advertised, any lead 
 pencils, erasive rubber, or rubber bands, bearing thereon, or on 
 the labels, wrappers, boxes, or other coverings affixed thereto, or 
 in which the same are contained, eithef stamp lettering or other 
 marks containing the name 'Faber,' or 'Faber Pencil Co.,' or 
 'E. Faber Pencil Co.,' or any like or similar designation in which 
 the name 'Faber' is used without the prefix 'Eberhard,' or 
 'John E.,' or 'J. Eberhard,' but the defendant may use the 
 word 'Faber' with either of said prefixes, as he may elect." 
 
 See also form of final decree, in Cincinnati U. S. Co. v. Cin- 
 cinnati Shoe Co.^^ 
 
 For form of a decree against the use of a name of a semi-geo- 
 graphical character which is held to have acquired a secondary 
 meaning, see Cohen v. Nagle.*^ 
 
 As to form of prayer for final decree, see Vulcan Detinning 
 Co. V. American Can Co.^° 
 
 § 368. The Court Does not Pass Upon the Measures Adopted 
 by the Defendant to Correct His Unfair Acts. — A final injunc- 
 tion should prohibit the specific infringement or act of unfair 
 
 « 190 Mass. 4^12-13-1906. Walter Baker & Co. v. Baker, 87 Fed. 
 
 « 58 Fed. 884. 209-211. 
 
 " 124 Fed. 603-614-1903 (C. C. S. ■"> 190 Mass. 4^12-13-1893; 76 N. 
 
 D. N. Y.). E. 276. 
 
 «7 Ohio N. P. 135; Enterprise ™69 Atl. 110.3-1908 (N. J. Eq.)- 
 
 Co. V. Landers, 131 Fed. 240, also 1908. 
 
650 "^ Remedies 
 
 competition complained of, and also all simikr infringements or 
 acts. But it is not the province of the court, upon the settlement 
 of the decree, to pass in advance upon a modified form of name, 
 marks or dress proposed to be adopted by defendant to correct 
 the abuses alleged in the plaintiff's bill, and to determine whether 
 or not the corrected form is fair to the plaintiff and lawful. If the 
 court did this it would aid the defendant to come as near as 
 possible to the plaintiff's mark and still keep within the law. 
 Fine distinctions of conduct are not favored in unfair competition 
 decrees. The court assumes that if the defendant be honest, he is 
 seeking to sell his goods on their own merits solely. If he is to 
 do that he has no occasion to split hairs over the resemblance 
 between his goods and those of his rival, for the less they resemble 
 each other the better satisfied he should be. The average defend- 
 ant in these cases seldom harbors any ambition to sell his goods on 
 their own merits. The choosing of a new mark, or name, or label 
 must rest with the defendant, not with the court. His duty in 
 doing that is to keep as far from imitation as possible. He must 
 make his choice unaided by the court. 
 
 The tendency in England is to include in the injimction merely 
 a general direction to the defendant to do no act that will pass 
 off his goods as those of plaintiff. This leaves the details to the 
 defendant to work out as best he can. This procedure is safe in 
 jurisdictions where the rules as to contempt of court are enforced 
 strictly. Such injunctions are consistent with the rule of unfair 
 competition as stated by Woodward, J., in the Oneida Trap Case 
 (supra) i. e., that it is not the part of the court to assist the de- 
 fendant to find a way to market his wares honestly. For the 
 court to frame effective injimctions of this sort would involve 
 placing before the court much evidence as to commercial practices 
 and conditions under which the defendant must carry out the 
 terms of the injunction, much of which evidence is quite irrelevant 
 to the issue in the cause. 
 
 It is undoubtedly proper and wise that the injunction should be 
 definite and specific as to the practices which the defendant is 
 forbidden to continue. 
 
 The Circuit Court of Appeals for the Seventh Circuit has 
 said " that a court should not in advance approve a new form of 
 label proposed to be used, especially where there was deliberate 
 61 Chas. E. Hires Co. v. Consumers' Co., 100 Fed. 809-1900. 
 
Decree Correcting Confusing Use of Names 651 
 
 infringement in the use of the old label; that in such cases it ought 
 not to say how near the infringer may lawfully approximate the 
 label of the complainant, but should cast the burden upon the 
 guilty party of deciding for himself how near he, may with safety 
 drive to the edge of the precipice, and whether it be not better 
 for him to keep as far from it as possible. "^^ The same court 
 has also said: '' "But the court cannot say what shall, so 
 much as what shall not, be done; the limit of which would 
 seem to be that, as already indicated, they shall not use the word 
 'Hooton' * * * except as they clearly and unmistakably 
 state * * * that such cocoa is not the Van Houten cocoa 
 manufactured by the complainants, Van Houten & Zoon." 
 
 This view is not shared by the Circuit Court of Appeals in the 
 Sixth Circuit where an opposite position was taken in Coca-Cola 
 Co. V. Gay-Ola Co.'' 
 
 Recently this same question was discussed by the Appellate 
 Division in New York, and that court followed the ideas of the 
 Seventh Circuit and held: "It is not the province of a court of 
 equity to aid wrongdoers; it fulfils its mission when it has re- 
 strained the commission of a wrong, leaving the wrongdoer to 
 figure out for himseK how far he can disregard the mandate of the 
 court and the requirements of a clean conscience." Woodward, J.^^ 
 
 A court should consider all the defendant's acts together in 
 forming its opinion of his purposes and their results to the plain- 
 tiff, and their relation to his rights. The court should not be 
 nice in limiting the scope of the relief granted, because some of the 
 imitations, if practiced singly and without fraudulent intent, 
 might not constitute unfair competition.*^ 
 
 § 369. Decree Correcting a Confusing Use of Names and 
 Signs. — It is not necessary that two dealers, whose goods or 
 places of business are hkely to be confused with each other should 
 state in their advertising and signs the proprietorship of each 
 store. It is enough, if they So designate their own as to show to 
 the public that it is a different place from that of the rival. 
 
 ''Mitchell V. Williams, 106 Fed. "211 Fed. 942. 
 
 168-1901 (C. C. A. 7th Cir.); Ster- '^ Oneida Community v. Oneida 
 
 ling Remedy Co. v. Spermine Medi- Game Trap Co., Inc., 168 A. D. (N. Y.) 
 
 cat Co., 112 Fed. 1000-1901 (C. C. 769-782-1915. 
 
 A. 7th Cir.). '" Sterling Remedy Co. v. Sper- 
 
 " Van Houten v. Hooton Chocolate mine Medical Co., 112 Fed. 1000- 
 
 Co., 130 Fed. 600-5-1904 (C. C. N. J.). 1901 (C. C. A. 7th Cir.). 
 
652 ' Remedies 
 
 Where defendant built a store next door to plaintiff's store, and 
 failed to distinguish his store so that customers were induced by 
 his signs to go into defendant's store when they were seeking that 
 of plaintiff, a decree ordering defendant to "place signs both in- 
 side and outside his building showing to the world the proprietor- 
 ship thereof" was "too strict, in that it requires the proprietorship 
 of the store to be showh. In this particular we think the decree 
 should be modified so as to require that the defendant in the con- 
 duct of this business shall distmguish his place of business from 
 that in which the plaintiff is carrying on his business in some 
 mode or form that shall be a sufficient indication to the public 
 that it is a different place of business from that of the plaintiff." " 
 
 Such an order should not provide what the new indicia 
 should be, but merely direct that they be of such a character as 
 not to confuse and mislead. 
 
 § 370. Injunctions Against Use of Color, Size, Form, etc. — 
 Where an injunction, if couched in general terms might appear 
 to forbid the exercise of some universal right, such as the use of 
 colors, form, size, or shape, the order may specifically state that 
 it does not forbid the making and selUng of packages or goods 
 of the same size, shape, form, color, etc., as plaintiff's package 
 or goods, provided, they are so made as not to cause deceit of 
 purchasers. The Circuit Court of Appeals, Second Circuit, has 
 met the plea that no monopoly can be given of color, thus: ^' 
 "Injunction should issue against putting up and selling or offer- 
 ing for sale the particular form of package which has been re- 
 ferred to in the bill and put in evidence as 'Defendant's Second 
 Package,' or any other form of package which shall, by reason 
 of the coUocECtion of size, shape, colors, lettering, spacing, and 
 ornamentation, present a general appearance as closely resem- 
 bling the 'Complainant's Package,' referred to in the bill and 
 marked in evidence, as does the said 'Defendant's Second Pack- 
 age.' This would seem to be sufficient; but, since so much has 
 been said about the impossibility of framing any decree which 
 would prevent the sale of the package complained of, and yet 
 not give complainant the monopoly of yellow paper for its wrap- 
 pers, the following clause may be added: This injimction shall 
 
 " Weinstock, huUn & Co. v. Marks, ^s jy_ ^ Fairhank Co. v. R. W. Bell 
 109 Cal. 529-543-1895; 30 L. R. A. Mfg. Co., 77 Fed. 869-78^1896 (C. C. 
 182; 42 Pac. 142. A. 2d Cir.). 
 
Injunctions Against Use of Family Name 653 
 
 not be construed as restraining defendant from selling packages 
 of the size, weight, and shape of complainant's package, nor from 
 using the designation 'Buffalo Soap Powder,' nor from making 
 a powder having the appearance of complainant's 'Gold Dust,' 
 nor from using paper of a yellow color as wrappers for its pack- 
 ages, provided such packages are so differentiated in general 
 appearance from said 'Complainant's Package,' that they are 
 not calculated to deceive the ordinary purchaser." 
 
 Where color is adopted in part as a means of aiding the con- 
 templated fraud, and confusion is caused by its use, so far as the 
 defendant cannot safeguard its use, it may not use the color. 
 This is the substance of the ruling in Coca Cola v. Gay Ola.^^ The 
 court here enjoined the defendant from selling its drink in the 
 same color as plaintiffs' Coca Cola unless some other means 
 could be found of advising the public of the identity of defend- 
 ants' drink. 
 
 § 371. Injunctions Against Use of Family Name. — The law 
 as to the misuse of family names is in confusion. The principal 
 difficulty in such cases is as to the form of remedy which will be 
 ordered by the*court. For a discussion of the fundamental prin- 
 ciples involved, see the chapter entitled "Family Names." The 
 discussion here will be limited to the form of injunctions granted 
 in these cases. 
 
 There are three principal ways in which family names are used 
 in business: (a) as partnership or individual names, — "Tiffany 
 & Co." or "William Brown" ; (6) as parts of a corporate name, — 
 "Higgins Soap Co."; (c) as names of goods, — "Packard Auto- 
 mobile." The remedies granted vary according as the cases fall 
 into one or the other of these classes. 
 
 If the name is used in the first way, usually the in j unctions granted 
 in the past have not forbidden the use of the name entirely, 
 but have directed that explanatory or identifying phrases be used. 
 
 The use of the explanatory phrase, in trade-mark law, is a com- 
 promise or half solution of a vexing question. It is not a solution 
 because it does not eliminate confusion; business demands a rem- 
 edy in these cases that will put an end to confusion not merely ex- 
 plain it. When the defendant is found to be guilty of such use 
 of his name as to pass off his goods as another's, to his profit, he 
 is guilty of fraud. Yet under such a decree he is permitted to con- 
 s' 6th Cir., C. C. A., Mar., 1914, 211 Fed. 942. 
 
654 Remedies 
 
 tinue his fraudulent acts, provided he thereafter explains (to 
 the few who take pains to read the explanation) that his concern 
 is not the one it will naturally, from the name, be supposed to be. ^° 
 
 There are various explanations used in these decrees, or in- 
 junctive orders such as: "not connected with," "not the origi- 
 nal," "not the of ■ — ," etc.; use of full name instead 
 
 of part of name,®^ " is distinct from ," ^^ 
 
 If the name is used as part of a corporate name, the rule is 
 much more strict (see chapters on "Family Names " and " Corpor- 
 ate Names") and the courts often forbid any use whatever of the 
 name in a corporate name of a new concern if confusion will result. 
 
 Where the name is used as a name of goods it is usually used 
 in a nickname sense. "The Ford" is a short description of the 
 car made by the "Ford Motor Company." By such use of the 
 name "Ford" the public gives to the "Ford Motor Co." trade 
 rights in that name: and he who thereafter uses the name 
 as a name for his goods will be held to strict account if confusion 
 and fraud result. 
 
 § 372. Voluntary Discontinuance of Infringing Acts — Effect of. 
 — The fact that defendant has ceased to commit* infringing acts 
 is no reason why an injunction should not issue.^' In Richer & 
 Sons V. Leigh,^^" Patterson, J., said: 
 
 "It may be that the defendant will voluntarily desist from 
 infringing the rights of the plaintiff hereafter, but that possibiUty 
 or even probabiUty furnishes no ground for denying the plaintiff 
 the protection of an injunction. The plaintiff is not compelled 
 to rely upon the defendant's present virtuous intentions. What 
 the defendant did was a wanton invasion of the plaintiff's right 
 as well as a deception practiced upon the public, and a repetition 
 of such acts should be prevented effectually by the restraining 
 order of a court of equity." 
 
 § 373. Injunction Against the Use of the Name of a Former 
 
 «» Waterman v. Modern Pen Co., 235 " ciark Thread Co. v. Clark, 55 N. J. 
 
 U. S. 88; 35 Sup. Ct. 91-1914; and ar- Eq. 658-1897; 37 Atl. 599; Bicker v. 
 
 tide on this decision by John H. W. Leigh, 74 A. D. N. Y. 138; U. S. Frame 
 
 Guiore, 10 Illinois Law Rev. 178. & Picture Co. v. Hormvitz, 51 Misc. 
 
 «' Waterman v. Modern Pen Co., 235 101; Dmnnell v. Co-operative Co., 148 
 
 U. S. 88; 35 Sup. Ct. 91-1914. Fed. 242; Plant v. May, 153 Fed. 229; 
 
 «2 Pmberthy Injector Co. v. Lee, 120 Contra, Van Raalt v. Schneck, 170 Fed. 
 
 Mich. 174-9-1899. 1021; Dodge v. Sewall, 142 Fed. 288. 
 
 «»" 74 App. Div. (N. Y.) 138, 140. 
 
Use of Name of Former Partner 655 
 
 Partner or Former Member of a Corporation. — Where 
 one leaves a corporation which bears his name, the company 
 retaining the right to continue to use the name, an injunc- 
 tion against him for unfair use of his name should forbid its use 
 in general terms. But where there are patents bearing his name, 
 that name may be used to show that goods are made under that 
 patent — as imder the "Penberthy Patent," or the "X Patent," 
 but such use even must be with care that no false impression is 
 given thereby. In Penberthy Injector Co. v. Lee,** the court de- 
 creed "that the said defendants, severally and jointly, and the 
 firm and corporation known as the Lee-Penberthy Manufacturing 
 Company, their counselors, attorneys, soUcitors, agents, serv- 
 ants, and workmen, be, and they are, each and every one of 
 them, enjoined from the use of the name 'Penberthy' in the firm 
 or corporate name in any way, and from the use of the name 
 'Penberthy' upon their product, packages, or advertising matter, 
 or advertisements. But said defendants may indicate that their 
 product is manufactured imder W. Penberthy's patent, if such be 
 the fact, provided that with each and every such statement, and 
 in connection therewith, there shall be also indicated, in type 
 equally as prominent, that 'W. Penberthy is distinct from, and 
 has no connection with, the original Penberthy Injector Com- 
 pany.' " 
 
 An injunction protecting a family name, which is a part of 
 a corporate name and which has been purchased with the good- 
 will of that corporation, should forbid the use of the family name, 
 either alone or in combination, in a corporate name, on goods or 
 in advertisements unless accompanied by information that the one 
 using it is not the person that originally used it or his successor, 
 and that the article is not the product of that first user of the 
 name.*^ The rule laid down in this case should be considered in 
 connection with the rule that the incorporators of a corporation 
 may not adopt a name that will cause confusion.*^ 
 
 The decree may forbid the use of a name unless information 
 that the concern using it is not the same concern which has been 
 
 "120 Mich. 174-79-1899; 78 N. ^^ Higgins v. Higgins Soap Co., lU 
 
 W. 1074. N. Y. 462-1895, and similar cases and 
 
 ^^ Hernng-HaUr-Marvin Safe Co. v. is not now regarded as sufficiently 
 
 Hall's Safe Co., 208 U. S. 554-60- drastic at least, so far as corporations 
 
 1908. are concerned. 
 
656 Remedies 
 
 accustomed to use it, is given every time it is used. In Hall's 
 Safe Co. V. Herring-Hall-Marvin Safe Co.^'' the fonn of the in- 
 junction was as follows: "The defendant, the Hall's Safe Com- 
 pany, * * * are perpetually enjoined from carrying on the 
 safe or vault business in the name of the Hall's Safe Company, 
 or any other name having similarity to the name Hall's Safe & 
 Lock Company, without also giving information to the public that 
 it is not the business formerly carried on by the Hall's Safe & 
 Lock Company, and from markiug, advertising, or otherwise 
 designating its safes and vaults as the products of the Hall's 
 Safe & Lock Company or its successors in business, or pretending 
 that it is carrying on the business started by Joseph Hall, and 
 continued by the Hall's Safe & Lock Company, and from inter- 
 fering in any manner with the exclusive right of the complainant 
 to possess and enjoy the good-will acquired by the Hall's Safe & 
 Lock Company, and from using the trade-name of said last- 
 named company without at the same time so qualifying such 
 trade-name as to show that the trade-name used is not the one 
 formerly used to designate the products of the Hall's Safe & Lock 
 Company" (p. 44). This decree has been affirmed.®* 
 
 «' 146 Fed. 37-1906 (C. C. A. 6th " 208 U. S. 554-1908. 
 Cir.); appealed in 208 U. S. 554^1908. 
 
CHAPTER XXIV 
 
 Defenses 
 
 Section 374. The defense that the plaintiff and defendant are not in com- 
 petition with each other. 
 
 375. The defense that the name, mark, form, shape, or other device in 
 
 question has not been exclusively used by the complainant, but 
 is in common use. 
 
 376. The defense that the defendant's article is as good as the plain- 
 
 tiff's. 
 
 377. The defense that the defendant has no intent to pass off his goods 
 
 as plaintiff's goods. 
 373. The defense that the goods were not marked with any spurious 
 marks or names. 
 
 379. The defense that defendant's marks differ sufficiently from com- 
 
 plainant's to be .capable of registration as distinct marks. 
 
 380. The defense that representations objected to by the plaintiff are 
 
 true. 
 
 381. The defense that the deception is due not to the defendant, but 
 
 to a jobber or retailer or other purchaser from the defendant. 
 
 382. The defense that defendant was only the maker of the label or 
 
 container complained of, and was not responsible for its ultimate 
 use by him for whom it was made. 
 
 383. The defense that defendant was acting only as agent for another, 
 
 and received none of the profits. 
 
 384. The defense that complainant's title was not properly established. 
 
 385. The defense that the offense is too trivial for the court to notice. 
 
 386. The defense that plaintiff's goods are worthless or useless. 
 
 387. The defense that defendant's name is two or more words, while 
 
 plaintiff's is one and hence different. 
 
 388. The defense that plaintiff has acted unfairly toward third persons 
 
 not connected with the suit at bar. 
 
 389. The defense that plaintiff is an impostor and deluding the public. 
 
 390. The misrepresentation must be as to the subject-matter of the 
 
 suit. 
 
 391. The defense that plaintiff \s m£iking misrepresentations in his own 
 
 business. 
 
 392. Misrepresentation usually but not always an affirmative defense. 
 
 393. Misrepresentations by plaintiff discontinued before suing. 
 
 394. Misrepresentations must be intentional and material. 
 
 395. Misrepresentations as to ingredients and the nature and effect of a 
 
 medical preparation. 
 
 657 
 
658 Defenses 
 
 Section 396. Misrepresentations must be as to ingredients that are essential. 
 
 397. Extravagant claims as to efficacy of medicines. 
 
 398. Misrepresentations as to manufacture, place of manufacture, or 
 
 origin of goods. 
 
 399. Misrepresentation as to maker of goods. 
 
 400. Continuing use of name of predecessor. 
 
 401. Misrepresentation as to unessential details. 
 
 402. Misrepresentations implying a claim of monopoly, — Use of 
 
 term "Patented." 
 
 403. Misrepresentation by use of term " Copyrighted " or " Registered." 
 
 404. Misrepresentation by laudatory expressions and exaggerated 
 
 trade phrases. 
 
 405. Miscellaneous cases of misrepresentation deemed harmless. 
 
 406. Claiming falsely to be a corporation. 
 
 407. Use of term "Established in." 
 
 408. Abandonment. 
 
 409. Kinds of laches. 
 
 410. Laches in the sense of mere delay. 
 
 411. First user of mark may revoke license implied from laches. 
 
 412. Presumption of acquiescence where an exclusive right exists. 
 
 413. Material delay bars right to an accounting of profits. 
 
 414. Laches may bar right to order for destruction of offending goods. 
 
 415. Laches which bars right to preliminary injunction. 
 
 416. Acquiescence, in the sense of inaction upon which others have 
 
 the right to rely. 
 
 417. Test by which to determine acquiescence. 
 
 418. Defense that plaintiff violated some Federal statute regarding 
 
 restraint of trade or mbnopoly. 
 
 Various matters are sometimes set up in defense which hardly 
 require separate consideration here, since the questions involved 
 in such pleas have already been discussed in previous chapters. 
 The defenses now referred to, attack the complainant's right to 
 sue, on account of the alleged absence of one or other of the ele- 
 ments of a cause of action for unfair competition. The follow- 
 ing are examples of defenses of this sort. 
 
 § 374. The Defense that the Plaintiff and Defendant are not 
 in Competition with Each Other. — It is a valid defense to an ac- 
 tion of unfair competition that the defendant is not in the same 
 line of business as the plaintiff, and hence is not in direct competi- 
 tion with him. If not in direct competition, the defendant may 
 commit lawfully various acts which between direct competitors 
 would be unfair. 
 
 This question as to when competitive conditions exist is not 
 easy of solution in many cases. The usual test is to decide 
 
Defense or Non-Exclusive Use by Complainant 659 
 
 whether or not the goods sold by the respective parties are of the ' 
 "same descriptive quahties" as the phrase goes: That is to say, 
 are they so sufficiently similar as to cause the name used by the 
 defendant upon his goods to convey the impression that they 
 came from the plaintiff.^ There are cases that hold that it is 
 unlawful to copy or imitate the name of a corporation whether 
 the two companies compete or not. 
 
 It is important to show whether the goods of the parties are 
 sold in the same stores in the community or in stores of the same 
 character, and in big stores in the same departments. Each 
 case is a law unto itself on this question. Precedents are of 
 little value. Commercial conditions which rule in the sale of 
 the goods in question are all important. 
 
 § 376. The Defense that the Name, Mark, Form, Shape, 
 or Other Device in Question has not been Exclusively Used by 
 Complainant, but is in Common Use. — Here certain distinc- 
 tions are to be made. If that which the complainant alleges 
 belongs to him exclusively has really been common property 
 all along, his case obviously fails. But it is not enough that 
 one feature of the goods in question, or of their dress, taken sep- 
 arately, is in common use, because the combination of these fea- 
 tures may produce a general effect, which distinguishes the goods 
 to the pubhc eye, so that defendant has in fact so used even these 
 common features as to cause unfair competition. This has 
 already been dealt with imder the chapter on "Dress." See also 
 chapter on "Simulation of Articles Themselves." 
 
 The general rule in such cases is illustrated by the following 
 statement in Scriven v. North :^ "A stamp with the words printed 
 
 ' Elgin Nat. Watch Co. v. Love- complainant does not deal, and there- 
 
 land, 132 Fed. 41-1904 (C. C. N. D. fore no injury results or can result to 
 
 Iowa). "It is urged that the busi- it. It is true that complainant could 
 
 ness of the defendants as conducted not complain of the use of the word 
 
 by them is not in competition with 'Elgin' by a manufacturer or vendor 
 
 that -of the complainant; that com- of some product not of the same gen- 
 
 plainant manufactures watch move- eral kind as the complainant's. Such 
 
 ments only; that defendants do not a business would not be in competition 
 
 manufacture watch movements, but with it" (p. 51). HeU unfair compe- 
 
 confine their business to sales of tition. 
 
 watches upon mail orders only, and as- ' 134 Fed. 366-1904 (4th Cir.) ; 67 
 
 sortments of jewelry, silverware, and C. C. A. 348. 
 other goods of a cheap class, in which 
 
660 Defenses 
 
 in straight lines would identify the defendants' goods as easily 
 as the oval stamp. Granted that the oval form is in common 
 use, the straight is equally common, and was, in fact, used for- 
 merly by defendants and complainants aUke; and when the 
 proof shows, as it does, that after the complainants adopted the 
 oval form the defendants adopted a stamp resembling it, when 
 they show no good reason for such change, or any reason at all, 
 except that, being a common form, they had the right to use it 
 as well as complainants, and we find, as we do, that there is a re- 
 semblance between the two, and no reason appears for such re- 
 semblance, except that it was calculated to deceive, we must 
 conclude that it was adopted for that purpose. " (p. 375) 
 
 The mere fact that many others besides the defendant have 
 adopted and are using distinctive features originated by the 
 complainant, in other words, that there are many other in- 
 fringers, is no defense unless the originator has lost his rights by 
 abandonment or dedication to the public, or by long continued 
 acquiescence in public use. 
 
 To establish a cause of action of unfair competition it is not 
 necessary to prove an exclusive right in plaintiff. The issue is 
 one not of title or exclusive right but rather of representation, 
 viz.. What does the mark as used by plaintiff represent or mean 
 to the public, and what, in contrast, does the mark used by the 
 defendant represent? If the mark used by the defendant is taken 
 by any substantial number of persons of the public as indicating 
 that the goods come from the plaintiff, then there is unfair compe- 
 tition. 
 
 It is true then that the use by the plaintiff of a common form, 
 or shape, or size, which ordinarily anyone may use, may have the 
 effect of preventing the defendant from using it, where it is not 
 essential to the latter's purpose, or where it is adopted with the 
 purpose of deceiving. 
 
 Speaking of the method used by defendants in making their 
 goods, the court said in Chickering v. Chickering & Sons,^ that 
 it was defendants' duty "to distinguish their pianos from the 
 'Chickering' pianos, and they cannot plead, in avoidance of 
 that duty, that others of different names used that style of letter- 
 ing (old English) . Their duty was to distinguish, not to imitate." 
 
 ' 120 Fed. 69-73-1903 (C. C. A. 7th Cir.). See later decision at 198 
 Fed. 958. 
 
Dependant's Article as Good as Plaintiff's 661 
 
 § 376. The Defense that the Defendant's Article is as Good 
 as the Plaintiff's. — It is obvious on principle, and well settled 
 by the decisions, that it is no defense that defendant's article is 
 as good as, or even better than, complainant's. The defendant 
 must offer his goods for what they are, and trust to their intrinsic 
 merits to win a market. The wrong to complainant, through 
 diverting trade intended for him, is evident, regardless of the 
 quality of defendant's goods. The public in preferring to buy 
 the plaintiff's goods may be losing the chance to* get in the de- 
 fendant's product a better article at a less price. Still the public 
 is entitled to get just what it asks for. The court will not pro- 
 tect in anyone the opportunity to deceive the public even for its 
 own good. 
 
 In the first recorded cases relating to trade names, the courts 
 based their interference on the ground that it was unlawful to 
 sell inferior goods, giving out that they were goods of a known 
 brand with which the pubUc associated a particular grade of 
 merit or quality. In most cases, goods made as copies of other 
 goods are in fact inferior. But Blofeld v. Payne,* a case at law, 
 and Edelsten v. Edelsten,^ a case in equity, long ago held it to 
 be "an actionable injury to pass off goods known not to be plain- 
 tiff's, as and for, the plaintiff's, even though not inferior."^ 
 
 ■* 4 B. & Ad. 410-1833, an action held that the plaintiff was entitled to 
 
 of the case. The plaintiff was the recover some damages by reason of 
 
 manufacturer of a metallic hone for the fraudulent use of his wrapper, and 
 
 sharpening razors, which he wrapped refused to grant a rule to show cause, 
 
 up in envelopes containing directions The case decides that it is no answer 
 
 for its use and other matters; the to such a suit to show that the simu- 
 
 same being intended and serving to lated article is as good as the genuine 
 
 distinguish his hones from those of manufacture, 
 others. The defendants had ob- " i De G. J. & S. 185-1863. 
 tained some of the plaintiff's wrap- 'See Singer Mfg. Co. v. Loog, 8 
 
 pers and used them wrongfully upon App. Cas. 15-1882, at p. 29; Prince 
 
 hones of their own manufacture, and Mfg. Co. v. Prince's Metallic Paint 
 
 sold such hones as and for the plain- Co., 135 N. Y. 24^1892; 31 N. E. 
 
 tiff's for their own gain. No proof -990; 17 L. R. A. 129, note. Owners 
 
 was given of any actual damage, of land on which was Prince's iron- 
 
 The jury found for the plaintiff with ore mine made "Prince's Metallic 
 
 one farthing damages, and stated Paint." Plaintiff, who was successor 
 
 that they thought that the defend- of original owners, represented to 
 
 ant's hones were not inferior to the pubUc that that name meant paint 
 
 plaintiff's. The defendants then made from ore from the original 
 
 moved for a nonsuit, but the court tract and later appUed that name to 
 
662 Defenses 
 
 Cheapness is not an offense, — there are markets where cheap 
 articles are more in demand than costly ones. Every man has 
 a complete right to make as cheap an article as he will, but no 
 person has the right to make or sell a cheap or a costly article, 
 dressed in the guise of a different article made by another, and so 
 deceptively palm it off. This is an injury both to the honest 
 manufacturer and to the pubUc.^ 
 
 § 377. The Defense that the Defendant has no Intent to 
 Pass Off His Goods as Plaintiff's Goods. — The contention that 
 the defendant had no intention of passing off his goods as the 
 goods of the plaintiff is no defense, if, in fact, he was acting un- 
 fairly. This is true, although originally the defendant thought 
 he had a right to so sell his goods, and did it honestly. Intent 
 not to injure a rival is not an excuse.* Proof of good intentions 
 of a defendant does not obviate confusion of goods or repair the 
 injury which the plaintiff is suffering from the defendant's well- 
 meaning but damaging acts. The object of the court is not to 
 analyze the motives and feelings of either party but to protect 
 the good-will of the plaintiff's business (if there be confusion and 
 passing off) from injury. Further cases on this plea will be 
 found in the chapter on "Intent." 
 
 § 378. The Defense that the Goods were not Marked with 
 any Spurious Marks or Names. — It is not a defense to an action 
 for illegal use of a trade-mark or name that no spurious mark is 
 put on the goods themselves by the defendant. Where the mis- 
 representation complained of was done "by an advertisement 
 or misrepresentation in gross," to use Lord Cairns' phrase, it may 
 
 paint made of ore from other tracts, swer to the charge of using a false 
 
 "The jurisdiction of equity to re- and simulated brand that the article 
 
 strain the infringement of trade- covered by the brand is of a superior 
 
 marks is founded upon the right of quality to that which the purchaser 
 
 property in the plaintiff and its desired' to buy. You may not de- 
 
 fraudulent invasion," etc. (id. p. 37). ceive a purchaser for his own bene- 
 
 The fact that the products of the fit" (id. p. 848). 
 
 mines, other than the original miner ^Shepard v. Stuart, Am. T..M. Cas. 
 
 which were used were equal to the (Price & S.) 193; 1 B. Phil. 117; Hia- 
 
 original mine, held no excuse. v. Abrahams, 82 N. Y. 519-1880; 
 
 ■'Scriven v. Nm-th, 134 Fed. 366- Williams v. Brooks, 50 Conn. 278- 
 
 73-1904; 67 C. C. A. 348; PiUsbury 1882; Liggett & Myer Tobacco Co. v. 
 
 V. Pilkbury-Washburn Flour Mills ^2/nes, 20 Fed. 883-1884 (D..C. Ark.); 
 
 Co., 64 Fed. 841-1894 (C. C. A. 7th Gato v. El Modelo Cigar Mfg. Co., 6 
 
 Cir.). From opinion: "It is no an- L. R. A. 823-1889, 25 Fla. .886, , 
 
Defense that Defendant's Marks Differ Sufficiently 663 
 
 be "quite as injurious in operation as the same representation 
 made upon the articles themselves." ^ This defense is a stock 
 plea in substitution cases. There is no more direct form of 
 unfair competition than oral representation of one man's goods 
 as those of another. The same representation by copying of 
 labels or appearance or what not is merely a more subtle form 
 of this grossly fraudulent act. 
 
 § 379. The Defense that Defendant's Marks Differ Suffi- 
 ciently from Complainant's to be Capable of Registration as 
 Distinct Marks. — Tests apphcable to questions of statutory 
 registration do not control questions of unfair competition. 
 There is no statute in this country to compel the owner of a name 
 or mark to register it; It may be absolutely clear that it can be 
 registered, yet he may prefer not to do that. Is he by this de- 
 cision to be barred from showing that a rival is making false 
 representations injurious to him? It would amount to this were 
 this defense available, for much damage may be done by names 
 quite different and by marks which are very dissimilar. This 
 defense is practically an attempt to define what similarity is. To 
 do this would tie the court to a definition, which would be a se- 
 rious error. 
 
 In Mitchell v. Henry, ^'^ it was contended that defendant 
 could register his mark, and hence there was no Unfair competi- 
 tion. Said the court: "The question is not simply whether or 
 no, putting the plaintiffs' and defendants' marks side by side, 
 one might be so different from the other as to be capable of regis- 
 tration as a distinct mark, or whether the plaintiffs have them- 
 selves registered trade-marks which have no greater distinction 
 between them than the distinction between the mark of the 
 plaintiffs and that of the defendants, for slight distinctions be- 
 tween the plaintiffs' marks may distinguish different classes of 
 the plaintiffs' goods, but the question, in my opinion, is whether 
 the defendants are so selling their goods as to pass them off as 
 the goods of the plaintiffs." 
 
 § 380. The Defense that Representations Objected to by 
 Plaintiff are True. — The defense is sometimes set up that the 
 representation by the defendant, to which the plaintiff objects, 
 is a true statement, and the defendant is therefore not in the 
 
 'Sing&r Man. Co. v. Wilson, L..R. '» 15 Ch. Div. 181-93-1880. 
 3 App. Cas. 376-1877, at p. 389. 
 
664 Defenses 
 
 wrong, because, to use the words of the Supreme Court of the 
 United States: "Equity will not enjoin against telling the truth." " 
 This statement has been qualified by a Missouri court, which 
 says that this "remark must be limited to cases where the truth 
 is honestly told, and can have no application to a case where it is 
 told with intent to deceive and does deceive." ^^ The truth can 
 be told dishonestly with fraudulent intent. It might be said 
 that the principal mission of the law of unfair competition is to 
 prevent unscrupulous rivals from telling the truth dishonestly 
 and with intent to injure. The malicious trade rival tries to tell 
 the truth about his own name, about the place where he manu- 
 factures his goods, about his patents, oftentimes with the sole 
 idea of so telling it as to injure the business of his competitor. 
 This the law does not allow. In unfair competition cases, literal 
 or formal truth is not enough. The question is, what impres- 
 sion will be made on the public mind? ^' ^ 
 
 § 381. The Defense that the Deception is Due not to the 
 Defendant, but to a Jobber or Retailer or Other Purchaser 
 from the Defendant. — It is well settled that a manufacturer who 
 puts in the hands of the immediate purchaser the means of de- 
 ceiving the ultimate purchaser is chargeable with imfair com- 
 petition. The possibility that the retailer may not be honest in 
 such matters must be taken into account by the manufacturer. 
 The courts would be without power to give aid in a large number 
 of these cases were their right to grant relief limited to cases where 
 the immediate customer is deceived. Whether "the trade" — the 
 jobbers and retailers — are deceived is not the question. EngUsh 
 decisions are most emphatic on this point. "It was argued that 
 the defendant "" had nothing to do with the deception of the pub- 
 lic. The answer is obvious. Every person, who, intending to 
 buy a bottle of the plaintiff's sauce, gets instead a bottle of the de- 
 fendants' is a customer taken from the plaintiff by this deceit; 
 and if this is extensively done, the danjage to the plaintiff's trade 
 would be serious." " "No man is entitled to represent his goods 
 
 » Canal Co. v. Clark, 13 Wall. (80 ""The word in the opmion is "de- 
 U. S.) 311-1871, at p. 327. fendant," probably error for " plain- 
 
 ^^ American Brewing Co. v. St. tiff." 
 Louis Brewing Co., 47 Mo. App. 14- " Powell v. Birmingham Vinegar 
 1891, at p. 20. Brewery Co., 2 Ch. 54^83-1896. 
 
 18 iV. K. Fairhank Co. v. Swift & 
 Co., 64 111. App. 479-90-1896. 
 
Deception Due to Jobber or Retaiuer 665 
 
 as being the goods of another man; and no man is permitted to 
 use any mark, sign or symbol, device or other means, whereby, 
 without making a direct false representation himself to a pur- 
 chaser who purchases from him, he enables such purchaser to tell a 
 lie or to make a false representation to somebody else who is the ul- 
 timate customer. That being, as it appears to me, a comprehen- 
 sive statement of what the law is upon the question of trade-mark 
 or trade designation, I am of the opinion that there is no such 
 thing as a monopoly or a property in the nature of a copyright, or 
 in the nature of a patent, in the use of any name. Whatever name 
 is used to designate goods, anybody may use that name to desig- 
 nate goods; always subject to this, that he must not, as I said, 
 make directly, or through the medium of another person, a false 
 representation that his goods are the goods of another person. 
 That I take to be the law." ^^ 
 
 American cases are numerous which are equally emphatic. 
 "Undoubtedly, no one who bought from defendant was ever 
 deceived. No effort was ever made to delude the trade into the 
 belief that defendant's salesmen were selling complainant's 
 goods. But equity regards the consumer as well as the middle- 
 man. It is to him, more than to the jobber or wholesale pur- 
 chaser, that the various indicia of origin with which merchants 
 dress up their goods appeal; and courts will not tolerate a decep- 
 tion devised to delude the consximing purchaser by simulating 
 some well-known and popular style of package. * * * We have, 
 then, the case of a manufacturer who is careful always to sell its 
 goods as its own, but who puts them up in a style of package so 
 similar to that used by one of its competitors, earlier in the market, 
 that unscrupulous dealers, who purchase from the manufacturer in 
 order to sell at retail to consumers, are enabled to delude a large 
 number of such retail purchasers by palming off upon them the 
 goods of the manufacturer as those of its competitor. That this 
 is unfair competition seems apparent, both on reason and author- 
 ity." " 
 
 "The testimony is abundant that the goods of defendants were 
 
 ^^ Singer Mfg. Co. v. Loog, 18 Ch. v. Richardson & Co., 45 L. T. N. S. 
 
 Div. 395-412-13-1880. 54-1881; Brown v. Mercer, 37 N. Y. 
 
 " N. K. Fairbank Co. v. R. W. Super. Ct. 265-1874; Singer Mfg. Co. 
 
 Bell Mfg. Co., 77 Fed. 869-78-1896 v. Loog, 18 Ch. Div. 395-1880; Lever 
 
 (C. C. A. 2d Cir.), citing Read Bros. v.Goodmn^SGCh.Biv. 1-1887. 
 
666 Defenses 
 
 sold as Scriven's, and there is sufficient resemblance in make 
 and marks to make that deception easy and practicable, and 
 we do not think it is a sufficient answer to say that there are 
 differences which a careful examination would disclose, or that 
 the retailer to whopi the manufacturer sells is not himself de- 
 ceived, if the goods are put up in such a way and marked in such 
 a way that the ultimate purchaser could be deceived into buying 
 them as Scriven's goods, or that the manufacturer should not 
 be held to liability because the shopkeeper to whom he sells 
 practices a fraud upon his customers. 
 
 The question as to the measure of such Uability and the ex- 
 tent of it might arise upon an accounting, but if he knowingly 
 puts it in the power of the shopkeeper so to deceive he should 
 be enjoined. The power of the coin*ts is not usually invoked for 
 the protection of the strong and shrewd, who commonly can take 
 care of themselves. It is the ignorant and the unwary that gen- 
 erally demand their protection, and courts will be without power 
 to afford a remedy in most cases if their right to grant rehef 
 was limited to those cases where the immediate customers were 
 deceived " (p. 375)." That fact that the immediate vendees of 
 one who infringes a.re themselves not deceived is no consequence. 
 The offense is none' the less an offense because the original vend- 
 ors and vendees may all be parties to it.'* 
 
 It has been held that two frauds are perpetrated in these cases, 
 first on the ultimate buyer and second on the oth^r manufac- 
 turer, who loses trade by it. "The simplest case is where the 
 seller misrepresents to the buyer that the goods which are being 
 offered for sale are the goods, not of the person who made them, 
 but of some other manufacturer. That is a case merely between 
 the buyer and seller. Then comes the case where the manufac- 
 turer, by devices which are to accompany the goods on their sale 
 in the market, gets them up in such a form as to be calculated to 
 deceive the ultimate buyer into the belief that the goods which 
 he, the manufacturer, is putting on the market are the goods of , 
 some other maker. Here, generally speaking, a double fraud is 
 committed; first, there is the fraud which is perpetrated on the 
 
 "Sariven v. North, 134 Fed. 366- Cir.); 17 L. R. A. 354. See also to 
 
 1904; 67 C. C. A. 348. same effect Enoch Morgan's Sons Co. 
 
 '8Le Pa^e Co. v. Russia Cement v. Whittier-Coburn Co., 118 Fed. 657- 
 
 Co., 51 Fed. 941-1892 (C. C. A. 1st 1892 (C. C. N. D. Cal.). 
 
Defendant Only Maker of Label Complained of 667 
 
 ultimate buyer; and, secondly, there is a fraud perpetrated on 
 the other manufacturer, who loses part of his trade. In this 
 class of cases the trade is seldom deceived, the retail dealers know 
 from whom they are buying, and if there is a fraudulent device 
 they are rarely taken in by it. But in such a case the manu- 
 facturer puts an instrument of fraud into their hands. Now it has 
 been said more than once in this case, that the manufacturer 
 ought not to be held hable for the fraud of the ultimate seller — 
 that is, the shopkeeper or the shopkeeper's assistant; but that is 
 not the true view of the case." ^^ (Upheld on appeal.) 
 
 § 382. The Defense that Defendant was Only the Maker of 
 the Label or Container Complained of, and was not Responsible 
 for Its Ultimate Use by Him for Whom It was Made. — A printer, 
 lithographer, or maker of bottles or packages, who furnishes a 
 manufacturer with material adapted to be used by him in unfair 
 competition, is himself hable, if, under the circimastances, he 
 is chargeable with notice of the intended use. 
 
 Complainant brought a suit for infringement of a trade-mark, 
 against the sellers of goods. In this suit, on stipulation, a decree 
 was entered establishing complainant's exclusive right to the 
 trade-mark from that date, but it was provided that neither de- 
 fendant nor its customers should be liable for past infringements. 
 Held, that complaiuant was precluded from proceeding against 
 one who had made and furnished to the defendant in the former 
 suit the offending cartons used by it. The court intimated that 
 a printer, Uthographer or maker of cartons or wrappers, who, 
 with notice, furnishes to a manufacturer material adapted to be 
 used by him in unfair competition, would be liable. 2° See § 284 
 for full discussion of this question. 
 
 § 383. The Defense that Defendant was Acting only as Agent 
 for Another, and Received None of the Profits. — This fact does 
 not constitute a defense. Agents generally, and officers of a 
 corporation, may be made parties to these actions. The fact 
 that they are not interested pecuniarily will not excuse them. A 
 merchant is responsible for unfair competition by his employees 
 if done by them in course of his business. It may not have been 
 ordered or suggested, m fact, it may have been unknown to him," 
 
 ^^ Lever v. Goodwin, 36 Ch. Div. & Co., 146 Fed. 198-1906 (C. C. 
 1-1887. Conn.). 
 
 2» Hillside Chemical Co. v. Munson " Yonge v. Ward, 21 L. T. N. S. 480. 
 
668 Defenses 
 
 or it may have been done contrary to his orders.^^ In all such 
 cases the merchant himself is liable. The fact that the defendant 
 sold infringing goods as agent for a nonresident, is no reason to 
 refuse mjunction on the ground that he does not get the profits.^' 
 
 § 384. The Defense that Complainant's Title was not Prop- 
 erly Established. — Defects in the title, under which complain- 
 ant claims his rights, cannot be availed of by an infringer, so 
 long as Complainant is, at the time, in the actual possession or 
 use of the name, mark, etc. The defendant's act is none the 
 less unfair because instead of passing off his goods as the goods 
 of another he is representing some other man's goods as his, or 
 because he is brought to account by someone whose interest in 
 the injured right is not clear. This is a question between plain- 
 tiff and the true owner of the mark and it does not concern the 
 defendant. It is his duty to act fairly. 
 
 Actual possession and use of a trade name, or of the good-will 
 of a business, on the part of complainant, at the time when al- 
 leged infringement or unfair competition begins, is sufficient; the 
 defendant is not justified by mere invalidity in the transfer under 
 which complainant derived title. This rule was applied where de- 
 fendant alleged that the contract under which complainant de- 
 rived title and its trade-marks, etc., contained a provision in 
 violation of the anti-trust law.^* 
 
 § 385. The Defense that the Offense is Too Trivial for the 
 Court to Notice. — To establish a valid cause of action when the 
 offense seems trivial it must appear either that evidence of an in- 
 tent to continue to commit similar offenses in the future, or that 
 the offense has resulted or will be likely to result in substantial 
 damage to the plaintiff. 
 
 Where the plaintiff sold "John Knight's Primrose Soap" and 
 "Primrose Soap," and proved that on November 24, 1903, de- 
 fendant company sold to one A. H. as "John Knight's Primrose 
 Soap," one bar of a soap not made by plaintiff and inferior in 
 quality, it was held, "the passing off of one bar of soap, by it- 
 self, does not constitute a ground of action, unless one of two 
 
 ^^Grierson v. Birmingham Hotel " R. J. Reynolds Tobacco Co. v. 
 Co., 18 R. P. C. 158-1901. Allen Bros. Tobacco Co., 151 Fed. 
 
 2' WaUer Baker & Co. v. Sanders, 819-1907 (C. C. Va.). 
 80 Fed. 889-1897; 26 C. C. A. 220 
 (2d Cir.) 
 
Defense that Plaintiff's Goods aee Worthless 669 
 
 other things are established: either it was evidence of an inten- 
 tion to continue so doing, or that it occasioned damage to plain- 
 tiffs."^5 
 
 Again in Rutter & Co. v. Smith, ^^ where "there was a sale of 
 one ounce of tobacco, value unknown, on a single day, without 
 any suggestion that anything of the kind had occurred before, 
 and it seemed to the court not hkely to occur again, because the 
 manager who sold the tobacco was no longer in the defendant's 
 service," it was held too trivial a case for injunction, on authority 
 of Leahy, Kelly & Leahy v. Glover.^'' 
 
 § 386. The Defense that Plaintiff's Goods are Worthless, or 
 Useless. — It is not a defense that the plaintiff's goods are tech- 
 nically or scientifically worthless. If there is a market for them 
 they will not be considered worthless by the court. That the 
 public buys them is sufficient proof of their merit. ^^ 
 
 § 387. The Defense that Defendant's Name is Two or More 
 Words, while Plaintifif's is One and Hence Different. — Nor is 
 it a defense to an unfair use of a name that the defendant uses it 
 in two words instead of one, as "Silver Pan" instead of "Silver- 
 pan."^^ Differences between rival names or makes must be 
 reasonably distinct. 
 
 § 388. The Defense that Plaintiff has Acted Unfairly Toward 
 Third Persons not Connected with the Suit at Bar. — This is 
 no defense; such misconduct must relate to the subject-matter 
 of the action.^" But where the plaintiff, a butter concern, was 
 shown to have sent its wrappers to dealers in low-grade butter 
 to use to put up inferior butter under this brand, which normally 
 was used only on a better grade, the court refused relief although 
 the plaintiff discontinued the practice two months prior to 
 suit.^^ See the next few sections for further discussion of this 
 point. 
 
 § 389. The Defense that Plaintiff is an Impostor and Delud- 
 ing the Public. — This defense is valid if the plaintiff is deceiving 
 and imposing some fraudulent or worthless article on the pubUc 
 
 ^^ Knight & Sons v. Crisp & Co., Rushton, Ltd., 20 R. P. C. 477- 
 
 21 R. P. C. 670-1904. 1902. 
 
 2» 18 R. P. C. 49-1901. ^"Sperry & Hutchinson Co. v. L. 
 
 " 10 R. P. C. 141-1891. Weber & Co., 161 Fed. 219-1908 (C. 
 
 ^Hostetter v. Martinoni, 110 Fed. C. 111.). 
 
 624. " Caslroville Co-op. Creamery Co. v. 
 
 ^» Faulder & Co., Ltd., v. 0. & G. Col, 6 Cal. App. 533, 92 Pao. 648-1907. 
 
* 670 Defenses 
 
 by methods that are not open and bona fide. Where a husband 
 and wife had for some years given entertainments or performances 
 under the name of "The Fays," the principal features of which 
 were manifestations of what they claimed to be occult powers, 
 such as mind reading and fortune telling, defendants, fomaer em- 
 ployees, advertised performances of their own in such a manner 
 as to lead some of the public to suppose they were the original 
 Fays. Held, that plaintiffs were precluded from equitable reUef 
 on the ground that they were impostors, and were deceiving the 
 public by claiming mysterious powers which they did not pos- 
 sess.^^ 
 
 § 390. The Misrepresentation Must be as to the Subject- 
 Matter of the Suit. — Misrepresentation may constitute a defense 
 in a suit for unfair competition. In Mossier v. Jacobs,^^ it is said 
 that the doctrine of unclean hands, "considered as a general rule 
 controUing the administration of equitable relief in particular con- 
 troversies, is confined to misconduct in regard to, or at all events 
 connected with, the matter in litigation, so that it has in some 
 measm-e affected the equitable relations subsisting between the 
 two parties, and arising out of the transaction; it does not ex- 
 tend to any misconduct, however gross, which is unconnected 
 with the matter in Utigation, and with which the opposite party 
 has no concern." The doctrine of unclean hands "does not 
 repel all sinners from courts of equity, nor does it disqualify any 
 complainant from obtaining relief there who has not dealt ijn- 
 justly in the very transaction concerning which he complains. 
 The iniquity which will repel him must have an immediate and 
 necessary relation to the equity for which he sues."*^ 
 
 A shirtmaker who sold goods under the name "Eureka Shirts" 
 described himself as patentee. Defendant began to sell shirts by 
 the same name. The plaintiff's description of himself as pat- 
 entee was held no such misrepresentation as to debar him from 
 reUef.'^ 
 
 The fact that plaintiff discontinued the misrepresentations 
 is of no avail, when done pending suit. Such discontinuance is 
 "entitled to but little consideration in determining the bona fides 
 
 82 Fay V. Lambourne, 124 App. 108 Fed. 821-34r^l901 (C, C. A. 8th 
 
 Div. 245-1908 (N. Y.). Cir.) ; 65 L. R. A. 878. 
 
 " 66 111. App. 571-76-1896. " Ford v. Foster, L. R. 7 Ch. 611- 
 
 >* Shaver v. Helkr & Merz Co., 1872. 
 
Plaintiff Making Misrepbbsentaiions in Own Business 671 
 
 of the complainants' position when it appUed for equitable assist- 
 ance.''^" See § 393. 
 
 § 391. The Defense that Plaintiff is Making Misrepresenta- 
 tions in His Own Business. — One of the defenses most commonly 
 set up in suits for unfair competition, is that the complainant 
 has been guilty of illegal conduct regarding, the matter in ques- 
 tion, which is abhorrent to the conscience of the court, as by 
 pubhc false representations as to his goods, and should, therefore, 
 be denied relief on the ground that he does not come into court 
 with clean hands. "The principle is general, and is one of the 
 maxims of the court, that he who comes into a court of equity, 
 asking its interposition in his behalf, must come with clean hands; 
 and if it appears from the case made by him or by his adversary, 
 that he has himseK been guilty of unconscionable, inequitable, 
 or immoral conduct in and about the same matters whereof he 
 complains of his adversary, or if his claim to relief grows out of, 
 or depends upon, or is inseparably connected with his own prior 
 fraud, he will be repelled at the threshold of the court."'^ 
 
 The defense is pecuhar in this; that it does not usually depend 
 upon any consideration of justice to the defendant; but upon 
 considerations of pubhc policy. In this respect it resembles the 
 defense that a contract sought to be enforced is immoral. "Ex 
 turpi causa non oritur actio." A court of equity cannot be ex- 
 pected to protect an exclusive privilege of deceiving the public.^' 
 
 Said Chief Judge Duer, in Fetridge v. Wells, ^^ "If the sales 
 made by the plaintiff and his firm are effected, or sought to be, 
 by misrepresentation and falsehood, they cannot be listened to 
 when they complain that by the fraudulent rivalry of others 
 their own fraudulent profits are diminished. An exclusive privi- 
 lege for deceiving the public is assuredly not one that a court of 
 equity can be required to aid or sanction. To do so would be to 
 forfeit its name and character." 
 
 The misconduct precluding the suitor from rehef most com- 
 
 '^Bear Lithia Springs Co. v. Great any regard to the defendant, who is 
 
 Bear Spring Co., 71 N. J. Eq. 595. using the same efforts and misrepre- 
 
 " Simmons Medicine Co. v. Mans- sentations to deceive the public; but 
 
 field Drug Co., 93 Tenn. 84-1893; 23 on the principle that it will not inter- 
 
 S. W. 165. fere to protect a party in the use of 
 
 '^Hobbs V. Francais, 19 How. Pr. trade-marks which are employed to 
 
 (N. Y.) 567-1860. "The Court does deceive the public" (at p. 571). 
 
 not refuse its aid in such a case, from " 4 Abb. Pr. (N. Y.) 144^48-1857. 
 
672 Defenses 
 
 monly consists of misrepresentations to the public, but does not 
 always take that form. Equity will not come to the aid of those 
 who in business use methods tending to bring opprobrium and dis- 
 grace upon competitors. Where an unincorporated association of 
 wage-earning cigarmakers in the nature of a trade union, devised 
 and caused to be affixed to the boxes of cigars made by its mem- 
 bers a "Union Label," certifying that the cigars had been made by 
 a first-class workman, a member of the cigarmakers' union, and 
 stating it was "an organization opposed to inferior rat-shop, 
 coolie, prison, or filthy tenement-house workmanship," etc., and 
 the defendant was using or about to use an imitation of this label 
 on cigars not made by the members of the union, an injunction 
 was denied, not only on the ground that, as the association did 
 not manufacture nor sell, it could not have a trade-mark, but also 
 that equity would not relieve against the counterfeiting of such a 
 label, since its purpose was to injure nonunion members by covering 
 them with opprobrium, and preventing the sale of their work.^" 
 
 The plea is often interposed that the plaintiff is guilty of viola- 
 tions of some statute such as the Sherman Act. This defense 
 was raised in Coca Cola Co. v. Gay Ola Col'^^ but unsuccessfully."" 
 
 § 392. Misrepresentation Usually but not Always an Affirma- 
 tive Defense. — Misrepresentation usually is treated as an affirma- 
 tive defense, the implication being that the complainant has the 
 benefit of the usual presumption of innocence and that fraud or 
 unconscientious dealing on his part must be affirmatively shown 
 to establish the defense. Sometimes, especially where the repre- 
 sentations are in their nature such as to excite suspicion, it may 
 be the duty of the complainant to allege and prove affirmatively 
 as part of his case the truth of representations made to the 
 pubhc, as, for example, respecting the ingredients or effects of a 
 tonic or medicine. 
 
 Where a manufacturer of a preparation who advertised it as of 
 great medicinal value, and published various details as to its 
 origin, ingredients, and preparation, pleads as part of his affirm- 
 ative case, the truth of the representations thus made to the pub- 
 He, he cannot then cast upon the defendant the burden of prov- 
 
 " McVey v. Brendel, 144 Pa. St. "" Brmm Saddle Co. v. Troxel, 98 
 
 235-1891; 22 Atl. 912; 13 L. R. A. Fed. 620; Camors v. McConnell, 140 
 
 377. Fed. 412; Weyman-Bruton Co. v. Old 
 
 " 200 Fed. 720. Indian Snuff Mills, 197 Fed. 1015. 
 
Misrepresentations Discontinued before Suing 673 
 
 ing their falsity. He cannot complain that the truth of his 
 representations will involve the disclosure of a secret process. 
 He should not pubUsh that which, if true, he is unwiUing to pro- 
 duce evidence to prove to be true.*^ 
 
 § 393. Misrepresentations by Plaintiff Discontinued before 
 Suing. — Misrepresentations that have been discontinued be- 
 fore the beginning of the suit cannot usually be availed of as 
 a defense, even though complainants' trade might have been 
 built up, in part, by means of them. The authorities are not 
 fully in accord as to this, and the principle should be applied with 
 caution, after considering all the circumstances of the particular 
 case. In such matters the conscience of a court of equity is not 
 controlled by any hard and fast rule. 
 
 In Moxie Nerve Food Co. v. Modox Co.'^^ the complainant made 
 and sold a preparation, largely as a beverage, but also as a "nerve 
 food." Fifteen months before suit it discontinued the false 
 statements which it had for many years been making as to the 
 ingredients of the preparation. In spite of the discontinuance, 
 its business had largely increased. The court considered that 
 these earlier misrepresentations did not preclude relief. "The 
 defense of unclean hands, to avail, must be based upon condi- 
 tions existing at the time when the party applies for equitable re- 
 lief. * * * While it is doubtless true that the present business 
 was built in part upon misrepresentation, this is not, in my opin- 
 ion, a sufficient reason for denying rehef to a complainant who has 
 removed the objectionable representations from its labels, wrappers, 
 and other advertisements, and who has endeavored to conduct its 
 business, making only such representations as are considered 
 warranted by a substantial amount of medical opinion" (p. 489). 
 
 In Johnson & Johnson v. Seabury & Johnson^^ the complain- 
 ant was not debarred from rehef by the fact that it had, some 
 years before the suit was brought, falsely represented in its cir- 
 culars that it was exclusively entitled by act of Congress to use 
 certain devices, such as a red cross, these misrepresentations 
 having been discontinued for about three years. It is said here 
 also that the refusal of the court to aid one coming into court 
 
 *^ Moxie Nerve FoodCo.v. Modox Co., " 153 Fed. 487-1907 (C. C. R. I.). 
 
 152Fed.493-1907(C. C. R.I.). Bear "69 N. J. Eq. 69&-706; 61 AtL 
 
 IMhia Co. v. Great Bear Co., 71 N. J. 5-1905. 
 Eq. 595. 
 
674 Defenses 
 
 with unclean hands "is based upon the conditions existing when 
 the party appUes for aid," citing Warden & Co. v. California Fig 
 Syrup Co.^^ But discontinuance of questionable acts before suit 
 will not always restore the suitor to a position entitling him to 
 demand the aid of a court of equity. ^^ 
 
 § 394. Misrepresentations Must be Intentional and Ma- 
 terial. — To preclude complainant from relief, his misrepresenta- 
 tions must be both intentional and material, so as to constitute 
 a deliberate fraud upon the public. Allowance will be made 
 for trade exaggerations. Inaccuracies as to minor matters will 
 be disregarded, and the tendency is to construe the language 
 used in a liberal way. The question is as to the honesty of 
 the intention, and it is important to consider what the actual 
 effect upon the public mind of even inaccurate statements is 
 likely to be, and whether the public will really be misled as to 
 any material point. Misstatements, made in single instances, 
 and quickly withdrawn, will not usually be fatal. They will 
 not be considered as false representations which will prevent a 
 complainant from recovering. "But it is not every departure 
 from the strict truth which will be fatal to the plaintiff's case, 
 especially where no one can reasonably be misled thereby." *' 
 
 Not every exaggerated statement will prevent the plaintiff's 
 recovery; nOr is it necessary that plaintiff should have delib- 
 erately designed to deceive if the statement must inevitably de- 
 ceive.^* This line of demarcation between material and fraudu- 
 lent misrepresentations on the one hand, and immaterial harmless 
 ones on the other, will be better determined through comparison 
 of the cases than by any effort to apply a general rule. 
 
 § 395. Misrepresentations as to Ingredients, and the Nature 
 and Effect of a Medical Preparation. — Deliberate misrepre- 
 sentations as to the ingredients of a food product, medicine or 
 the like, are usually considered material and fraudulent. As 
 is said in Fetridge v. Wells, '^^ "No representation can be more 
 material than that of the ingredients of a compound which is 
 recommended and sold as a medicine. There is none that is 
 so likely to induce confidence in the application and use of the 
 compound, and none that, when false, will more probably be 
 
 « 102 Fed. 334-1900. - « Paul, Trade-Marks, § 212. 
 
 « Seabury v. Grosvenor, 14 Blatchf. « Paul, Trade-Marks, § 315. 
 (U. S.) 262-1877. « 4 Abb. Pr. (N. Y.) 144-51-1857. 
 
Misrepresentation as to Ingredients 675 
 
 attended with injurious and perhaps fatal consequences." Where 
 one who made and administered the "Keeley remedies" for 
 addiction to Uquor, opium and tobacco advertised conspicuously 
 that gold was the principal ingredient, was of great efficacy, and 
 was not injurious, and these were false representations, deliber- 
 ately made, no gold being used in the "Keeley Cure," it was held, 
 that this company was precluded from the right to an injunction 
 against a rival chargeable with unfair competition, and that 
 although such misrepresentations were not pleaded or presented 
 to the court, yet the court would, of its own motion, apply the 
 doctrine of "unclean hands," to discourage fraud upon the 
 public.'" 
 
 In a leading case in the Supreme Court,'' the plaintiff had 
 spent more than a million dollars in advertising "Syrup of Figs" 
 or "Fig Syrup," as it was indifferently called by the public. 
 It had 'prima facie become exclusively entitled, in the first 
 place, to use the name "Syrup of Figs" or "Fig Syrup," regard- 
 less of the form of bottle or package in which it was sold, and 
 in the second place, to use the particular dress in which their 
 goods had been offered to the public, and the defendants then 
 put on the market what they designated as "Syrup of Figs" 
 and "Fig Syrup," their wrappers being a close imitation of those 
 of the plaintiff's. The defendant set up as a separate defense, 
 that the medicine which was to be used as a laxative did not 
 contain figs in any form, but that it consisted of a well-known 
 drug called senna, which has a laxative effect, as a basis, mixed 
 with certain aromatic carminatives. The plaintiffs alleged that, 
 at the outset, the syrup of figs was largely used as one of the 
 ■ingredients and that for this reason the name was proper; but 
 the court held, that this "would be no justification for continuing 
 the use of the term, after the manufacturers and vendors of the 
 medicine ceased to use fig juice as a material ingredient," and 
 that "even if the term was honestly applied in the first instance, 
 as descriptive, it would none the less be deceptive and misleading 
 when, as is shown in the present case, it ceased to be a truthful 
 statement of the nature of the compound. Nor are we disposed 
 to concede that, under the evidence in the present case, the term' 
 
 '» Memphis Keeley Insiitvie v. Leslie " Warden v. California Fig Syrup 
 E. Keeley Co., \bb Fed. 964-1907 Co., 187 U. S. 516-1902; 47 L. ed. 
 (C. C. A.). 282; 23 Sup. Ct. 161. 
 
676 Defenses 
 
 'Syrup of Figs' or 'Fig Syrup' was properly used as descriptive 
 of the nature of the medicine when it was first made. Then, 
 as now, the operative laxative element was senna, and the addi- 
 tion of fig juice was, at the best, experimental, and apparently 
 was intended to attract the patronage of the public by holding 
 out the name of the medicine as 'Syrup of Figs'" (id. p. 537). 
 For these reasons it was held, that the mark and names used 
 were so plainly deceptive as to deprive the plaintiff company 
 of the right to an injunction by a court of equity. 
 
 This decision of the Supreme Court is in conformity with 
 two earlier cases in the federal courts, involving the same facts. ^^ 
 
 A representation as to the ingredients, composition, or origin 
 of the product in order to disentitle to relief, should be clear 
 and direct, and not depend only upon doubtful inference or 
 construction. Mere suggestiveness in the form of a name is 
 rarely enough. For example, the use of the word "Alpenkrauter" 
 as the name of a medicine should not be treated as holding out 
 to the public that the medicine is made from herbs grown on 
 the Alps; the inference is too uncertain.^* 
 
 An owner of a recipe for making a certain cosmetic sold it 
 under the name of "The Bahn of a Thousand Flowers." The 
 defendants commenced to sell a similar article, calling it "The 
 Balm of Ten Thousand Flowers." A temporary injunction 
 was granted, but afterward, upon the coming in of proofs, it 
 was dissolved. It appeared that the main ingredients of the 
 compound were oil, ashes, and alcohol, and not an extract or 
 distillation from flowers. Instead of being a balm, the compound 
 was a soap. It was evident, said the court, that the name was 
 
 52 California Fig Syrup Co. v. ding v. How, 8 Sim. 477-1837; Leaiher 
 Putnam, 66 Fed. 750-1895 (C. C. Chth Co. v. American Leather Cloth 
 Mas8.); California Fig Syrup Co. v. Co., 11 H. L. Cas. 523-1865; Fetridge 
 Stearns &' Co., 73 Fed. 812-1896 (C. v. Wells, 4 Abb. Pr. (N. Y.) 144; 13 
 C. A. 6th Cir.); 33 L. R. A. 56. See How. Pr. (N. Y.) 385-1857; Man- 
 also Fetridge v. Welis, 4 Abb. Pr. haitan Medicine Co. v. Wood, 108 
 (N. Y.) 144^1857. The court founds U. S. 218-1882; 27 L. ed. 706; 2 
 its decision on these cases: Connell Sup. Ct. 436; Clotworthy v. Schepp, 
 V. Reed, 128 Mass. 477-1880; Siegert 42 Fed. 62-1890 (C. C. S. D. N. Y.); 
 v. Abbott, 61 Md. 276-1883; Alden Krauss v. Peebles' Sons Co., 58 Fed. 
 V. Gross, 25 Mo. App. 123-1887; 585-1893 (C. C. Ohio). 
 Prince Mfg. Co. v. Prince' Metallic ^' Dr. Peter H. Fahmey & Sons 
 Paint Co., 135 N. Y. 24-1892; 31 N. Co. v. Ruminer, 153 Fed. 735- 
 E. 990; 17 L. R. A. 129, note; Pid- 1907. 
 
MlSEEPEESENTATION AS TO INGREDIENTS 677 
 
 given to it and used to deceive the public, to attract and impose 
 upon the purchasers, and the plaintiff was held to be entitled to 
 no relief.^* 
 
 In Wolfe V. Burke,^^ the defendant sold Holland gin under a 
 title including the word "Schnapps," describing it as a "super- 
 lative tonic, diuretic, anti-dyspeptic and invigorating cordial," 
 while plaintiff also sold Holland gin under a title of which the 
 word "Schnapps" was part, describing it as "an invigorating 
 tonic and medicinal beverage," and asserting that it "has no 
 equal" as a remedy for various diseases. Its real name and 
 nature were not indicated. The court was of the opinion that 
 the word "Schnapps," whatever may be its signification in the 
 country from which it was imported, was not generally known to 
 mean gin in this country, and therefore held, that the representa- 
 tions of the parties as to the name of the article were calculated 
 to deceive, and said that, while the gin, properly prescribed and 
 taken, probably did possess some medicinal properties, yet "to 
 palm off this or any other liquor in common use exclusively as a 
 medicine and a specific for certain diseases, under names not 
 generally understood by the community, is a species of fraud 
 which a court of equity should not be called upon to protect" 
 (p. 123).^" 
 
 ^^Fetridge v. Welis, 4 Abb. (N. fendant, a rival hairdresser and per- 
 Y.) 144r-1857. fumer, commenced selling a composi- 
 " 56 N. Y. 115-1874. tion similar to that of plaintiff, in 
 ^' Pidding v. How, 8 Sim. 477- bottles with labels closely resembling 
 1837. Plaintiff made a new mixture those used by him. He designated his 
 of tea which he called "Howqua's composition and sold it as "Truefitt's 
 Mixture." He made false statements Medicated Mexican Balm." The 
 as to the teas of which his mixture was plaintiff thereupon filed his bill, 
 composed and as to the mode in which alleging that the name or designa- 
 they were procured. ffeM, that courts tion of "Medicated Mexican Balm" 
 of equity will not extend their protec- had become of great value to him as 
 tion to one whose case is not founded his trade-mark, and seeking to re- 
 in truth. Perry v. Tniefitt, 6 Beav. strain defendant from its use. The 
 66-1842. One Leathart had invented plaintiff, in his advertisements to the 
 a mixture for the hair, the secret and public, falsely set forth that the 
 recipe for mixing which he had trans- composition was a "highly concen- 
 ferred to the plaintiff, a hairdresser trated extract from vegetable bal- 
 and perfumer, who gave to the com- samic productions" of Mexico, and 
 position the name of "Medicated Mex- was prepared from "an original recipe 
 iean Balm," and sold it as "Perry's of the learned J. F. Von Blumenbach, 
 Medicated Mexican Balm." The de- and was recently presented to the 
 
678 Defenses 
 
 Selling a prepared food described as "Fruit Puddine" or 
 "pudding," when there was in fact no fruit in the preparation, 
 was held a misrepresentation sufficient to justify the refusal 
 of a preliminary injunction. ^^ 
 
 A statement on a label that a whiskey is "pure Pepper whiskey" 
 when it is 35 per cent, other whiskey is misrepresentation which 
 will bar recovery in equity. The public are entitled to an ac- 
 curate statement as to the source and ingredients of goods, if 
 any statement is made. "To bottle such a mixtm-e, and sell 
 it under the trade label and caution notices above referred to, 
 is a false representation, and a fraud upon the purchasing public. 
 A court of equity cannot protect property in a trade-mark thus 
 fraudulently used. It is not material whether foreign whiskey 
 mixed with Pepper's is as good or better whiskey than Pepper's, 
 or whether the mixture is better than piu-e Pepper whiskey. 
 The public are entitled to a true statement as to the origin of 
 the whiskey, if any statement is made at all. The complainants 
 and Pepper are not to be protected in a deception of the public, 
 even if it works to the advantage of the pubHc." ^* Selling whiskey 
 as "Rye Whiskey," "Fine Old Whiskey," and "V. O. S.," used 
 in the trade for "Very Old Stock," when the whiskey "fell far 
 short of what the label and lettering would indicate," and "the 
 bottles were so labeled and lettered to induce the public to be- 
 lieve that they were getting a quality of whiskey far superior 
 to what they actually bought," is misrepresentation.^' 
 
 The fact that the preparation about which the misrepresen- 
 tation is made is harmless will not cure such misrepresentation. 
 In Phalon & Son v. Wright ^ the plaintiffs made a perfume called 
 "Extract of Night Blooming Cereus," stating expressly that it 
 was distilled from that flower. In reaUty it was not made from 
 
 proprietor by a very near relation of ™ Kraiiss v. Jos. R. Peebles' Sons 
 
 that illustrious physiologist; " and the Co., 58 Fed. 585-94^1893 (C. C. Ohio), 
 
 court refused the injunction, Lord ^9 j. pp-_ Eppersm & Co. v. BMhen- 
 
 Langdale, M. R., holding that, in the thai, 149 Ala. 125; 42 So. 863-1906. 
 
 face of such a misrepresentation, the Other federal cases are: Paris Medi- 
 
 court would not interpose in the first dne Co. v. W. H. Hill Co., 102 Fed. 
 
 instance, citing with approval Pidding 148-1900 (C. C. A. 6th Cir.); Moxie 
 
 V. Horn, 8 Sim. 477-1837 but granting Nerve Food Co. v. Modox Co., 152 Fed. 
 
 leave to sue at law. 493-1907 (C. C. R. I.). 
 
 " Clotworthy v. Schepp, 42 Fed. 62- «» 5 Phila. 464-1864. 
 1890 (C. C. N. Y.). 
 
Misrepresentation as to Ingredients 679 
 
 any flower, but was an alcoholic compound. Held, that, even 
 if the deception were harmless in its effect, it was not to be disre- 
 garded, and would debar the party making it from equitable relief. 
 
 The fact that a preparation does not contain an ingredient 
 which is mentioned in its name will bar recovery; thus a pre- 
 liminary injunction against the use of the words "Bromide 
 Quinine" will not be granted on the petition of the proprietor 
 of "Bromo-Quinine," when the word "Bromo" was used by 
 him to make the public suppose that bromide was a leading in- 
 gredient of "Bromo-Quinine," whereas the preparation con- 
 tained no bromide.^^ 
 
 Representations that a remedy is made from an herb discovered 
 in Bolivia by a person, when, in all likelihood, neither the per- 
 son nor the herb ever had any existence, will be condemned. The 
 manufactxirer of "Moxie" advertised it not only as a refreshing 
 beverage, but also as "Nerve Food," the chief ingredient being 
 described as a Bolivian herb of great efficacy, discovered by 
 Lieutenant Moxie, and as having medicinal value, especially for 
 nervous diseases. Defendant's evidence made it extremely 
 doubtful whether either Lieutenant Moxie or the Bolivian herb 
 had ever existed, and tended to show that the preparation con- 
 tained no tonic or medicinal ingredient other than a small amount 
 of bitters, and could not have any marked curative effect. By 
 these statements the complainant forfeited any right' to relief, 
 on the ground of its misrepresentations.^^ 
 
 Merchants in Great Britain who sold liver pills which they 
 called "Charles Forde's Bile Beans for Biliousness," advertising 
 that their "beans" were based upon an Australian herb, dis- 
 covered by an eminent scientist named Charles Forde, whereas 
 these statements were wholly false, were denied relief by the 
 Scottish court when a rival began to sell fiver pills under the 
 name of "Davidson's Bile Beans," the general get-up of his 
 packages differing considerably from those of complainant's.^' 
 Complainant used for a lubricant the trade-mark or trade name 
 "non-fluid oil," when it was really a grease. There were some false 
 advertisements to the same effect. HeU, not entitled to refief." 
 
 "^ Paris MedicineCo.Y.W.H.HillCo., ''Bile Bean Mfg. Co. v. Davidson, 
 
 102 Fed. 148-1900 (C. C. A. 6th Cir.). 22 R. P. C. 553-1905 (Ct. Sess.). 
 
 '^ Moxie Nerve Food Co. v. Modox "* N. Y. & N. J. Lubricant Co. v. 
 
 Co., 152 Fed. 493-1907 (C. C. R. I.). Young, 77 N. J. Eq. 321. 
 
680 Defenses 
 
 § 396. Misrepresentations Must be as to Ingredients that 
 are Material. — A misrepresentation to avail the defendant 
 must be as to material facts. The fact that beer claimed to 
 be made of Saazer hops and imported barley was made in part 
 of other hops equally good, and of American barley equal in 
 quality to the imported, was not considered fatal. These were 
 termed by the court distractions without a difference.®^ It is an 
 immaterial misrepresentation to say that a whiskey is pure when 
 it contains a small portion of water. The word means pure in 
 the commercial sense.®® 
 
 § 397. Extravagant Claims as to Efficacy of Medicines. — 
 Extravagant claims as to the efficacy of a proprietary medicine 
 in curing many forms of disease will not ordinarily deprive the 
 manufacturer of relief in an action for unfair competition, as the 
 medicinal value of such a preparation is rather a matter of opinion 
 than of fact.®'' See section of this chapter "Misrepresentation by 
 Laudatory Expressions and Exaggerated Trade Phrases." 
 
 The rule in this regard may be changed ia the future by reason 
 of the Federal act which has made it illegal to offer any remedy 
 as a "cure." 
 
 In Siegert v. Gandolfi ®^ the court, on appeal, showed a disposi- 
 tion to apply a liberal construction to expressions contained in 
 advertisements. There was a statement that the bitters contained 
 no intoxicating ingredient, but this was accompanied by another 
 statement that they consisted of "a mixtm-e of certain bitter, 
 aromatic and carminative substances, together with alcohol, 
 added as a preservative and solvent." These statements were 
 regarded as consisting partly of extravagant laudations, partly 
 of statements for which there appeared to be some basis in med- 
 ical opinion, and partly of statements susceptible of a favorable 
 construction when read with other statements, hence not such 
 fraudulent misstatements as to support the defense of "unclean 
 hands." Another illustration of the apparently growing tendency 
 toward lenient construction of language used in advertising is 
 
 86 Conrad v. Uhrig Brewing Co., 8 Fed. 202. These later cases show that 
 
 Mo. App. 277-1880. i the cases cited in Kohler Mfg. Co. v. 
 
 »» Cahn V. Gottschalk, 14 Daly I Beeshore, 8 C. C. A. 215; 59 Fed. 572, 
 
 (N. Y.), 542-1888; 2 N. Y. Supp. 13. are no longer authority, or at all 
 
 "''Samuel Bros. & Co. v. Hostetter i events are to be applied with great 
 
 Co., 55 C. C. A. Ill; 118 Fed. 257; caution. 
 
 Moxie Nerve Food Co. v. Holland, 141 "« 149 Fed. 100-1906. 
 
Misrepresentations as to Manufacture, Etc. 681 
 
 found in Schuster Co. v. Muller ^^ where the contention that the 
 labels on certain bottles of bitters were deceptive was overruled, 
 the evidence being that the bitters would not have all the effects 
 on the kidneys claimed for them, but that they would be bene- 
 ficial for some purposes, and were good bitters, though contain- 
 ing too much alcohol for children.™ 
 
 § 398. Misrepresentations as to Manufacture, Place of 
 Manufacture, Origin of Goods, etc. — In general, represen- 
 tations that the product is manufactured at a particular place 
 or by particular manufacturers are material. "A court of equity 
 will extend no aid to sustain a claim to a trade-mark of an article 
 which is put fofth with a misrepresentation to the public as to 
 the manufacturer of the article, and as to the place where it is 
 manufactured, both of which particulars were originally cir- 
 cumstances to guide the purchaser," according to the Supreme 
 Court of the United States in Manhattan Medicine Co. v. Wood.''^ 
 In that case the maker of " Atwood's Vegetable Physical Jaundice 
 Bitters," claimed, as successor of the founder of the business, 
 Moses Atwood, of Georgetown, Massachusetts, to be entitled to 
 the old trade-marks, names, and labels of the concern. Com- 
 plainant's labels, however, described the medicine as manufac- 
 tured by Moses Atwood at Georgetown, Massachusetts, although 
 it was now manufactured at New York, and by complainant. 
 
 The court said: "These statements were deemed important 
 in promoting the use of the article and its sale, or they would 
 not have been continued by the assignees of the original inventor. 
 And yet they could not be used with any honest purpose, when 
 both statements had ceased to be true. It is not honest to state 
 that a medicine is manufactured by Moses Atwood, of George- 
 town, Massachusetts, when it is manufactured by the Man- 
 hattan Medicine Company in the City of New York." Where a 
 trade-mark is attached to a product, the reputation of which is 
 based upon superior material and processes, and special care and, 
 skill exercised by the originator of the mark, an assignee of such 
 a business as, for example, the canning of salmon, who continues 
 to use labels falsely, and states that the goods are prepared by 
 the originator, is not entitled to relief against an infringer." 
 
 «' 28 App. Cas. (D. C.) 409-1906. " 108 U. S. 218-1882; 27 L. ed. 
 
 ■">Newbro v. Undeland, 69 Nebr. 706; 2 Sup. Ct. 436. 
 821-1903; 96 N. W. 635. ^'Alaska Packers' Assn. v. Alaska 
 
682 Defenses 
 
 Doubt was expressed whether a geographical term, such as "East 
 Indian," was capable of exclusive, appropriation, but the dis- 
 missal of the bill was placed on the ground that plaintiffs were 
 defrauding the public by using these words "to denote, and to 
 indicate to the public, that the medicines were used in the East 
 Indies, and that the formula for them was obtained there, neither 
 of which is the fact." '^ A statement on a label that goods were 
 made at A., when they were made at T., may not amoimt to an 
 misrepresentation, but if so made as to imply that they were 
 made by the original maker at T., when such was not the fact, 
 that wUl prevent recovery J* Lord Westbury, as Chancellor, 
 held that a false statement that goods were made by an American 
 firm and in part at a place in America, would bar relief.'^ 
 
 A cigarmaker, who sought an injunction restraining defend- 
 ant, a printer of cigar labels, from imitating his labels, was held 
 to have forfeited his right to relief by representing his cigars, 
 which were made in New York City, to be from a particular 
 plantation in Havana. The fact that the untrue statement was 
 in a foreign language was regarded as making no difference. "It 
 is enough," says the court, "that it is a misrepresentation, cal- 
 culated to have that effecton the unwary and unsuspicious." '* 
 Again, where the word "Habana" was conspicuously printed on 
 the cigar label, while only the filled was of Havana tobacco, this 
 
 Improvemenl Co., 60 Fed. 103-1894 tinuing his manufacture at Port of 
 
 (C. C. N. D. Cal.). Spain. This was held to be such 
 
 " Connell v. Reed, 128 Mass. 477- misrepresentation as to preclude reUef. 
 
 1880. " Leather Cloth Co., Ltd., v. Ameri- 
 
 " Siegert v. Abbott, 61 Md. 276- can Leather Cloth Co., Ltd., 4 De G. J. 
 
 1883. Plaintiff's bitters were de- & S. 137; affirmed in 11 H. L. Gas. 
 
 scribed on the label as "Aromatic 523-1865. 
 
 Bitters, or Angostura Bitters, pre- " Palmer v. Harris, 60 Pa. St. 156- 
 
 pared by Dr. Siegert, at Angostura, 161-1869; Symonds v. Jones, 82 
 
 now Port of Spain, Trinidad." Dr. Me. 302-1890; Hegeman v. Hege- 
 
 Siegert had been dead for some years, man, 8 Daly (N. Y.), 1880; Stachel- 
 
 and the factory had been removed to berg v. Ponce, 23 Fed. 430, 1885; 
 
 Port of Spain. The court says that Dixon Crucible Co. v. Cfuggenheim, 2 
 
 it was true that a removal from Brewst. (Pa.) 321-1869; Jennings v. 
 
 Angostura to Port of Spain is noted on Johnson, 37 Fed. 364-1888; Feder v. 
 
 the label; but it is so noted as to Benkert, 70 Fed. 613 (C. C. A. 9th 
 
 leave the impression that Dr. Siegert, Cir.); Felton v. Sellers Co., 4 Brewst. 
 
 the inventor and original manufac- (Pa.) 42-1867 (Sup. Ct. Pa.), 
 turer, had so removed and was con- 
 
Misrepresentations as to Manufacture, Etc. 683 
 
 use of the word constituted a material misrepresentation to the 
 purchasing pubhc, although the trade were not misled." And in 
 Newman v. Pinto,''^ a plaintiff was debarred from relief by the 
 fact that his boxes, taken as a whole, conveyed the misrepresen- 
 tation that his cigars were made in Havana, this not being the 
 fact. The fact that the plaintiff represented that his powder was 
 made by a London concern and was used by the Queen, when 
 actually it was made in New York, debarred him from relief.'' 
 Uri V. Hirsch *" was a suit for infringement of a trade-mark for 
 whiskey. The use of a trade-mark which represented that whiskey 
 was made in Nelson county, Ky., and was "Old Style Nelson 
 County Pure Rye," etc., when the whiskey was not made by 
 him, but purchased from rectifiers, was not made in Kentucky 
 and was not a pure rye but blended, amounted to misrepre- 
 sentations which deprived the user of the label of the right to 
 equitable relief. The fact that the name of the original manu- 
 facturer was used after assignment to his son, and the place of 
 manufacture was indicated as in England after goods had begun 
 to be made in the United States, has been held not a disqualifying 
 misrepresentation.^^ Where trade-mark has come to indicate 
 superior character of goods, and is still used for goods of same char- 
 acter, the exact name of the maker (or place of manufacture) 
 "being unimportant to the public, technically inaccurate state- 
 ments on these prints may be overlooked.^^ 
 
 In Hazlett v. Pollack Stogie Co.,^^ no relief was granted to a com- 
 plainant who continued a business, long advertised as the indi- 
 vidual business of a decedent with marks and insignia distinctly 
 implying that the business was still conducted by the original 
 manufacturer.^* Suggestion of manufacture in Italy (instead of 
 the United States) has been considered to disentitle to relief.*^ 
 "Bottled at the spring," when really bottled at a distant ware- 
 house, has been held to be a material misrepresentation, preclud- 
 ing from relief.*® 
 
 " Solis Cigar Co. v. Pozo, 16 Colo. ^^ Layton Pure Food Co. v. Church & 
 
 388-1891; 26 Pac. 556. Dioight Co., 182 Fed. 24. 
 
 ■" 4 R. P. C. 508-1887 (Ct. App.). «' 188 Fed. 494. 
 
 " Hobbs V. Francais, 19 How. Pr. " Aff'd 195 Fed. 28 (C. C. A., one 
 
 (N. Y.) 567-1860 (N. Y. Super. Ct.). judge dissenting). 
 
 8» 123 Fed. 568-1903 (C. C. W. D. «' De Nobili v. Scanda, 198 Fed. 
 
 Mo.). 341. 
 
 " Jacobs V. Beecham, 221 U. S. 263. '» Bear Lithia Springs Co. v. Great 
 
684 Defenses 
 
 § 399. Misrepresentation as to Maker of Goods. — The Ohio 
 court has gone to the extent of holding that one who represents 
 that he is the maker of a medicine by a formula of his own, when 
 actually it is made by the formula of another person altogether, 
 deceives the public and should be precluded from relief if he asks 
 that his own name, as apphed to the medicine and formula, be 
 protected. In Buckland v. Rice *' complainants used the name 
 "Trommer" as a name for their extract of malt, and included in 
 their advertisements excerpts from standard medical books com- 
 mending Trommer's preparation. Complainants' extract was 
 really prepared by one Gessner, accordiag to a formula of his 
 own, and not according to any formula or method of Trommer. 
 Held, that this was an attempt to deceive the pubhc, such as 
 would preclude reUef against an infringer, so far as concerned the 
 use of the name "Trommer." But a real or apparent inaccuracy 
 of statement as to the origin of goods or their place of manufac- 
 ture has not been deemed fatal to complainant's standing in a 
 court of equity in some cases. Sometimes, for example, the com- 
 plainant, describing himself as the manufacturer, does not in 
 fact directly manufacture, but sells goods made by others pur- 
 suant to his orders or under his direction. In such a case, he is 
 hardly to be charged with fraud toward the pubUc.*^ A person 
 is not guilty of misrepresentation even though he states he is the 
 "sole maker" of an article, when the fact was that he did not 
 make the article at all, it being made by others especially for 
 him.89 
 
 Bear Spring Co., 71 N. J. Eq. as to preclude them from the relief 
 
 595. demanded in their cross-bill. 
 
 8' 40 Ohio St. 526-1884. See also s' Gluckman v. Strauch, 99 App. Div. 
 
 Wolfe V. BarneU dk Lion, 24 La. Ann. (N. Y.) 361-1904; 92 N. Y. Supp. 223. 
 
 97-1872. Plaintiffs who dealt in cigarette papers 
 
 88 Wormser v. Shayne, 111 111. App. sought to enjoin the defendant from 
 
 556-1904, infra; Regent Shoe Mfg. Co. fraudulent imitation of their goods in 
 
 V. Hooker, 75 Nebr. 426; 106 N. W. respect to trade-mark, label, and ap- 
 
 595-1906. The fact that defendants pearance of package. Plaintiffs' label 
 
 advertised the shoes sold by them as bore the words " Gluckman & Son, Sole 
 
 made by themselves, whereas they Manufacturers, Paris;" they had no 
 
 were in fact made by others (though as factory or place of business in Paris, 
 
 defendants claimed under their special but the cigarette papers were manu- 
 
 direction), held not to be such a mate- factured there especially for them, 
 
 rial and fraudulent misrepresentation with their. name on the water-mark. 
 
Continuing Use of Name of Predecessor 685 
 
 § 400. Continuing Use of Name of Predecessor. — There are 
 cases in which the continued use of the name of a predecessor 
 in the business as that of the manufacturer, after he had died 
 or transferred his interest, has been held to be proper and 
 not fatal to the right to reUef; for instance, in Jennings v. 
 Johnson ^ the plaintiff, whose name was Jennings and who was 
 successor to I. S. Johnson & Co., had a right, it was held, to 
 represent on the label that the hniment was prepared by I. S. 
 Johnson & Co., it being common in such cases to retain the old 
 name. Somewhat analogous was the Benedictine case, in which, 
 however, there was no express statement as to who were manu- 
 facturing the cordial. The complainant, a French corporation, 
 manufactured at Fecamp, in Normandy, the "Benedictine" 
 cordial according to the secret recipe formerly used by the Bene- 
 dictine monks of the Abbey of Fecamp. It was sought to enjoin 
 defendant from selling as "Benedictine," under labels and wrap- 
 pers so precisely similar as to be indistinguishable from complain- 
 ants' product, a cordial made by it, at St. Louis, Mo. The de- 
 fense was that complainants' label was untruthful. Held, that 
 the words "Genuine Benedictine Liquor of the Benedictine 
 Monks of the Abbey of Fecamp" did not import that the cordial 
 was still actually made by the monks, but that it was made 
 according to their formula, and that there was, therefore, no 
 misrepresentation.' ^ 
 
 The plaintiff company published the "Gruber Almanack," 
 "J. Gruber's Hagerstown Almanac," which had been issued 
 since 1835 by John Gruber, and after his death by his succes- 
 sors. John Gruber was the ancestor of all but one of the plain- 
 tiffs, and the almanac continued to be published for the benefit 
 of his family. Defendants put upon the market an almanac of 
 very similar name, which resembled plaintiffs' closely in general 
 appearance, but set up in defense to a suit for an injunction that 
 plaintiffs were guilty of false representations, such as advertising 
 their almanac as "printed by John Gruber," the almanac con- 
 taining also a notice, signed "John Gruber," authorizing plain- 
 
 HeZd, that the statement on the label ""S? Fed. 364-1888 (C. C. Me.), 
 
 was substantially, though not exactly, »' Societe Anonyme, etc., v. Western 
 
 true, and did not constitute a false Distilling Co., 43 Fed. 416-1890 (C. 
 
 representation of a material fact so C. E. D. Mo.), 
 as to disentitle them to relief. 
 
686 Defenses 
 
 tiff corporation to publish the almanac. Held, that the alleged 
 misrepresentations were not such as to deceive the public, and 
 were immaterial.'^ 
 
 § 401. Misrepresentation as to Unessential Details. — The 
 tendency is toward liberality in construing the wording of labels. 
 The courts are disposed to apply the rule de minimis non curat 
 lex, and disregard misstatements as to nonessential details which 
 are not likely to have any material effect upon the mind of the 
 public.*'^ Misrepresentation as to details, where there is no 
 fraudulent intention and where the use of the words may be 
 explained in any reasonable sense consistent with honesty, will 
 not preclude relief against unfair competition. Describing goods 
 as "imported," when that is not the fact, or describing one's 
 self as "sole agent," although one is the principal, are not fraudu- 
 lent misrepresentations.'* In Clark Thread Co. v. Armitage,^^ 
 it appeared that in the four years preceding his suit, com- 
 plainant had sent to an agent thirty-one dozen boxes, marked 
 "J. & J. Clark & Co., Paisley," a trade-mark purchased by them 
 from a Scottish firm. Defendant contended this was material 
 misrepresentation, as the thread was not made in Paisley. The 
 court considered that the amount of the sales of those so marked 
 was too insignificant to bar relief. 
 
 In another case one Wormser had for eight years sold 
 "Model Hats" at $1 each, and advertised them by putting a $1 
 bill on each hat in his window. Shayne took up the hat business in 
 store next door, put up the sign "The Medal One Dollar Hats," 
 and "The Medal," and put dollar bills on his hats in his windows. 
 Shayne set up as an aflSrmative defense that the statement ad- 
 vertised by Wormser that he made all his hats, was manufacturer, 
 jobber, and retailer, and hence was able to sell for a dollar was 
 imtrue. In reality his hats were made by another house in 
 Massachusetts. Held, that the representation that he was the 
 manufacturer could not under the circumstances defraud his 
 
 "' Grvher Almanack Co. v. Swing- placed their name and place of busi- 
 
 ley, 103 Md' 362; 63 Atl. 684r-1906. ness conspicuously on the labels. 
 
 »' Hoyt V. Hoyt, 143 Pa. St. 623- Held, that there was no implied mis- 
 
 1891; 22 Atl. 755; 13 L. R. A. 343. representation as to place of manu- 
 
 Plaintiffs sold the cologne manufac- facture. 
 
 tured by them at Lowell as "Hoyt's ^*Funke v. Dreyfus & Co., 34 La. 
 
 Owman Cologne," but did not repre- Ann. 80-1882. 
 
 sent it to be made in Germany, and "74 Fed. 936-1896 (CCA. 2d Cir.). 
 
Claim of Monopoly — Use of Teem "Patented" 687 
 
 customers or the public. That the fact that Wormser had but 
 seven stores and advertised he had ten did not preclude him 
 from relief; that a misrepresentation must be material to pre- 
 clude the relief prayed.^^ 
 
 This case should be considered with care. It is doubtful if the 
 court would take this stand at the present time in view of the 
 growth of the sentiment for accurate as well as honest statements 
 in advertising. 
 
 It is not dishonest conduct to sell, under the name "Port- 
 land," a stove resembling in style and structure a lower-priced 
 stove known on the market as the "Canopy," though differing 
 from it in certain details. As long as there was no other "Port- 
 land" stove it was considered that even if this stove had been 
 the same as that sold by others as "Canopy," he had a right to 
 give it another name."' To say regarding pills of domestic manu- 
 facture that they were "specially packed for U. S. America" 
 did not necessarily imply that they were imported, and fell "far 
 short of being a false representation." '^ 
 
 § 402. Misrepresentations Implying Claim of Monopoly — 
 Use of Term " Patented." — An article is sometimes described 
 as "patented," or a mark or device as "copyrighted" or "regis- 
 tered," where the fact is otherwise. Is that a merely technical 
 inaccuracy, not tending really to mislead the public, or is it 
 intended to convey a false impression, such as that the advertiser 
 has patent rights which give him a monopoly in certain valuable 
 features of his goods? In Flavel v. Harrison,^^ plaintiff made 
 and sold a stove or kitchen range called "Flavel's Patent Kitch- 
 ener," although it had never been patented, and he was denied 
 a preliminary injunction on the ground that he had falsely de- 
 scribed his goods as patented. 
 
 " Wormser v. Shayne, 111 111. App. turers, special rooms and machinery 
 
 556-1904; Plotzker v. Lucas, 24 R. P.. being set apart for their work. HeM 
 
 C. 551-1907 (Ct. Sess. [Scotl.] Outer no such misrepresentation as to pre- 
 
 House). Complainers, who had a elude from relief, 
 
 number of shops for the sale at retail " Van Horn v. Coogan, 52 N. J. 
 
 of shirts and coUars, advertised that Eq. 380-1894; 28 Atl. 788. 
 
 they manufactured their own goods "^ Beecham v. Jacobs, 159 Fed. 129- 
 
 and had a factory at Belfast and 1908 (C. C. A. 2d Gir.). 
 
 Londonderry. They did not manu- «' 10 Hare, 467-1853; 19 Eng. L. & 
 
 facture themselves, but had special Eq. 15. 
 arrangements with certain manufac- 
 
688 Defenses 
 
 Where a company advertised that its method was patented, 
 and its right so to mark exclusive, and no such patent right 
 existed, the Vice-Chancellor of New Jersey said: "It was more- 
 over a falsehood publicly made by advertisements for the ap- 
 parent purpose of influencing dealers, who were adopting the 
 method of having their names woven on the goods by manufac- 
 turers, to deal with complainant only, under penalty of infringe- 
 ment of patent, and it may possibly have had this effect." It 
 was thought that had this false statement appeared in connection 
 with the mark or name on the goods themselves it would clearly 
 have precluded complainant from relief, but that, as it was in 
 fact only a collateral misrepresentation, there might be doubt 
 as to whether it was fatal; but on the groimd — among other 
 things — of this misrepresentation, a preliminary injunction 
 was denied.^ "If a trade-mark represents an article as protected 
 by a patent, when in fact it is not so protected, it seems to me 
 that such a statement 'prima fade amounts to a misrepresentation 
 of an important fact, which would disentitle the owner of the 
 trade-mark to relief in a court of equity against anyone who 
 pirated it." ^ The mere fact that there has originally been a 
 patent will not excuse the continued representation after the 
 patent expired, unless it can be shown that the word "patent," 
 as applied to a particular article, is no longer understood by the 
 trade or the public to imply an actually subsisting patent, but 
 was merely part of the ordinary designation of the article. Edel- 
 sten V. Vick ^ appears to be disapproved by the case just men- 
 tioned. 
 
 Cheavin stamped filters "Improved Patent," and also with 
 the words "By Her Majesty's Royal Letters Patent," with a 
 medallion and the royal arms. The patent had expired some 
 years earlier. This was construed as a representation that the 
 patent was still in force, and disentitled plaintiff to relief, al- 
 though there was doubtless no actual intention to deceive. The 
 court decided it could not assist in the continuance of a mis- 
 representation.* 
 
 ^Stirling Silk Mfg. Co. v. Ster- can Leather Cloth Co., Ltd., 11 H. L. 
 ling Silk Co., 59 N. J. Eq. 394-400- Cas. 523^2-1865. 
 1900; 46 Atl. 199. ' 11 Hare, 78-1853. 
 
 ^ Leather Cloth Co., Ltd., v. Ameri- * Cheavin v. Walker, 5 Ch. Div. 
 
 850-1877 (Ch. App.). 
 
Claim op Monopoly — Use of Term "Patented" 689 
 
 Describing in circulars a product as patented, when the patent 
 has in fact expired some years before, causes the circulars to 
 give the public to understand that the article is protected by a 
 still siibsisting patent, and thus tends to "stifle competition, 
 and to extend the monopoly granted by the patent beyond the 
 term of such grant." ^ 
 
 It makes no difference that the representation as to the patent 
 is made in a part only of the advertising matter. Fraudulent 
 matter in any considerable part of the advertising media tinges 
 the whole with that fraud upon which equity looks with disfavor. 
 On the other hand, in a number of cases the use of the word 
 "patent" or "patented," where there was no patent, has been 
 liberally construed as having a meaning consistent with the facts, 
 or has been disregarded as immaterial. For instance, where a 
 manufacturer of aerated and mineral waters in Dublin and Bel- 
 fast exported considerable quantities of soda water known as 
 "Club Soda," to Jamaica, and suit was brought to restrain de- 
 fendants from selling their own soda under the same name, it 
 was set up that plaintiff was debarred from relief, by reason of a 
 false statement on his label, viz., "Manufactured in Ireland by 
 H. M. Royal Letters Patent." The explanation given by plain- 
 tiff was that this meant "Manufactured in Ireland by means of 
 patented machinery." This explanation was deemed sufficient 
 by the court. Lord Morris remarking that there was nothing 
 in the evidence to throw doubt upon it or to show that anyone 
 had been or could be deceived by those words, and saying: "The 
 appellant's trade is an honest trade, and their Lordships are not 
 prepared to hold that by reason of some words not designed to 
 mislead, and at most equivocal, the appellant has been guilty of 
 a misrepresentation which disentitles him to relief." ^ In Mar- 
 shall V. Ross ^ goods were described as "patent thread," though 
 not really protected by a patent. This was not such a misrepre- 
 sentation as to deprive thcyowner of his right to protection against 
 an infringement of his label. It appeared that the goods had, 
 by the usage of many years, acquired the designation of "patent" 
 in the trade. 
 
 Registering "Insurance Oil" as a trade-mark in the patent 
 
 5 Pr^servaline Mfg. Co. v. Heller » Cochrane v. MacNish & Son, App. 
 Chemical Co., 118 Fed. 103-1902 (C. Cas. 225-1896. 
 C. III). ' L. R. 8 Eq. 651-1869. 
 
690 Defenses 
 
 office, and branding goods "Trade-mark Insurance Oil, Pat., 
 Jan. 5th, 1876," was taken to refer to the registration of the 
 trade-mark, and it was held that deception of the public was not 
 sufficiently shown.^ 
 
 § 403. Misrepresentation by Use of the Term " Copyrighted " 
 or "Registered." — The use of such terms as "copyrighted" 
 or "registered" has been liberally dealt with, in a similar way, 
 in many cases. That the word "copyrighted" was used in con- 
 nection with a trade-mark or trade name on a cigar label, al- 
 though there was in fact no copyright, has been held an unimpor- 
 tant misrepresentation, and probably an unintentional one, and so 
 not available as a defense to a suit for infringement.^ Although 
 not entitled to the use of a word as a technical trade-mark, a dealer 
 had nevertheless registered it as such, and described it on his 
 labels as a "registered" trade-mark. At the time of the regis- 
 tration he knew of no prior use by others, and believed himseK 
 entitled to register it. The statement being literally true, though 
 not perhaps conveying an accurate impression, and the intent 
 having been honest, there was no sugh misrepresentation as to 
 preclude relief.^" 
 
 Where the complainant's label included the words "Trade- 
 mark registered, consisting of name, picture, and autograph, 
 November 11, 1843," and yet there was no provision for regis- 
 tering a trade-mark till long after 1843, and the trade-mark was 
 not registered until 1874; but on November 11, 1843, a book 
 title containing the name of the medicine was filed under the 
 copyright, the statement was not construed as dishonest or mis- 
 leading." 
 
 The case of Johnson v. Seahury^^ involved a misrepresenta- 
 tion, but it will be noted that there were various circumstances, 
 such as the discontinuance of the misrepresentation, which the 
 
 ^Insurance Oil Tank Co. v. Scott, ^Solis Cigar Co. v. Pozo, 16 Colo. 
 
 33 La. Ann. 946-1881. In Cahn v. 388; 26 Pac. 556. 
 
 Gottschalk, 14 Daly (N. Y.), 642- " Sartor v. Schaden, 125 Iowa, 696- 
 
 1888; 2 N. Y. Supp. 13. Plaintiffs' 1&04; 101 N. W. 511. 
 
 label contained the words "Pat. Aug. " C. F. Simmons Medicine Co. v. 
 
 13th, 1872," this being apparently the Mansfield Drug Co., 93 Tenn. 84- 
 
 date of registry of the trade-mark. 100-1893; 23 S. W. 165. 
 
 Held to be an inaccuracy of small "71 n. j. Eq. (1 Buch.) 750; 67 
 
 importance, and not indicative of any Atl. 36-1907 (N. J. Err. & App.), 
 intent to deceive the public. 
 
Laudatory Expressions and Exaggerated Phrases 691 
 
 court took into account in deciding that the misrepresentation 
 was not fatal. The complainant was widely known as a maker 
 of absorbent cotton and gauze, distinguished by the mark or 
 name of "Red Cross." From 1894 to about 1899, it stated in 
 catalogues and price lists, that by act of Congress the American 
 National Red Cross Society was exclusively entitled to the red 
 cross symbol, and that this society had granted to complainant, 
 in recognition of its services in perfecting surgical appliances 
 and medical preparations, the exclusive right to use the red cross 
 trade-mark on this class of preparations. This was not true, 
 but there was some foundation for it, in that the Red Cross So- 
 ciety had agreed not to contest complainant's exclusive right so 
 to use the red cross trade-mark, in case a pending bill, vesting 
 in the society an exclusive right to the red cross symbol, and at 
 first opposed by complainant, should be passed. Considering 
 the fact that the reputation of complainant's goods, under the 
 mark and name in question, had been established before the 
 first publication of the misrepresentation, and that there was no 
 proof that its trade had been built up by the misrepresentation, 
 and also the fact that the misrepresentation had been discontin- 
 ued before suit brought, the court held, that the defense of un- 
 clean hands could not be availed of. 
 
 § 404. Misrepresentation by Laudatory Expressions and 
 Exaggerated Trade Phrases. — While false statements as to 
 material matters of fact will debar a suitor from relief, mere 
 extravagant or exaggerated commendation of the goods, which 
 are more expressions of opinion than statements of facts, will 
 not have that effect. 
 
 Allowance must be made for mere dealers' talk, and for trifling 
 inaccuracies and faults. It is not to be presumed that the pub- 
 lic believe that every statement in an advertisement is a warranty 
 and that as a consequence the advertiser must prove the exact 
 truth thereof on penalty of losing the whole good-will of his 
 business. "If it can be estabUshed in any case that the trade 
 name which the complainant seeks to protect owes its value 
 in any material degree to false representations on his part, 
 we think he is not entitled to the protection of a court of 
 equity. To give him relief would not only perpetuate a false- 
 hood by decree of the court aS. in a case where the false repre- 
 sentation is on the face of the trade-mark or label; but it would 
 
692 Defenses 
 
 enable a man to profit by his own wrong, and the court would 
 be in the position of protecting a property right acquired by 
 fraud. But we think there is no presvunption that a trade 
 reputation is due to the highly colored or false statements in ad- 
 vertisements. Such statements are not so uncommon as to mis- 
 lead an ordinary man; most persons discount them."^^ 
 
 Representing grindstones as made from "selected" or the 
 "best blue Huron grit" was justified if the quality of the ma- 
 terials used was not inferior to what the trade generally had ex- 
 pected as of the grade indicated, "^^ 
 
 "The statement, (sold everywhere,) is on a par with the 
 equally modest suggestion of the defendant, 'that his thread is 
 the latest and best.' This harmless exaggeration is understood 
 and discoimted by all. It is not fraud, but merely ' trade talk.' 
 No one is deceived. No one is injured"" (p. 899). 
 
 In Moxley Co. v. Brawn & Fitts Co.^^ Moxley made oleomar- 
 garine, which he called "The Only High Grade." The words 
 constituted his trade-mark, Moxley having begun to use it in 
 1893. Defendant began to use a close copy of the design of 
 plaintiff's label, and used with it these same words. This phrase 
 was treated as a trade exaggeration rather than as a false state- 
 ment of fact. These words were arbitrary — not capable of 
 exactly defining or describing, the word "only" being used as a 
 bombastic catch word — and the same is true of the phrase 
 "finest goods made." * * * "It is not denied that appellee's 
 butterine is high grade. No one purchasing it with such under- 
 standing would, therefore, be deceived; whether it is the 'only' 
 high grade or not is not, therefore, material. To sustain appel- 
 lant's contention it would have to appear that the alleged mis- 
 representations are not only misleading or untrue, but that they 
 are also material and do in fact mislead." Dadirrian v. Yacubian, 
 98 Fed. 872, cited by appellant's counsel. 
 
 Advertisement of an article as "genuine" may not mean that 
 it is the best or purest grade. This too is a trade expression the 
 meaning of which, as used ordmarily, is well understood. Gen- 
 
 " Johnson & Johnson v. Seabury & " Clark Thread Co. v. Armitage, 67 
 Johnson, 71 N. J. Eq. (1 Buch.) 750; Fed. 896-1895 (C. C. S. D. N. Y.). 
 67 Atl. 36-1907, at p. 38. » 93 111. App. 183-1900. 
 
 ^* Cleveland Stone Co. v. Wallace, 
 52 Fed. 431-1892 (C. C. Mich.). 
 
Laudatory Expressions and Exaggerated Phrases 693 
 
 uine molasses may mean any grade of molasses, so long as it is 
 molasses. To call a jewel a genuine stone from a particular mine 
 would have a much more specific meaning, and he who used ifc 
 would be held to strict correspondence between name and article. 
 Advertising "Georgia Coon" molasses as "genuine molasses," 
 although it was not genuine cane molasses, but largely glucose, 
 has been held not to imply that it was wholly from sugar cane; 
 and, that the public was not deceived, and the plaintiff was not 
 debarred by that act from relief against the infringement of 
 his trade-mark.^" This case was later reversed on other 
 grounds. 
 
 Undoubtedly this decision does not represent the rule in this 
 regard as it exists to-day. In most forums, it would be con- 
 sidered fraudulent to represent an article as "genuine mplasses" 
 when made largely of glucose. The case is referred to only as 
 illustrative of the change in the rule in this respect. 
 
 Extravagant claims on the part of the proprietor of a patent 
 medicine as to its eflScacy, such as statements that it will cure a 
 large number of diseases, such statements being in all probabihty 
 unfounded, have been held in the past not to constitute such fraud- 
 ulent misrepresentations as to preclude the proprietor from relief 
 against a simulating competitor. 
 
 Grosscup, J., has said of such a claim :^^ "It is true that the 
 remedy was advertised by appellant as a cure for more diseases, 
 perhaps, than any remedy could possibly cure. But this, in 
 itself, is not unclean hands. Proprietary medicines, generally, 
 promise more than they do; and for that matter, licensed phy- 
 sicians often do the same. And with proprietary medicines, as 
 with physicians, the object often is to give mere temporary help, 
 under the belief of the patient that he is obtaining a cure. But 
 whether this be an improper use of the public's confidence, or 
 constitutes a practice against public policy, is a question to be 
 decided by the state, through its legislature, and not by the courts 
 under the equitable doctrine of unclean hands; for so far as this 
 case discloses, proprietary medicines are lawful commerce, and 
 are to be given the freedom of mere trade boasting that ordinary 
 commerce is allowed to enjoy" (p. 737). 
 
 '"' CaffarelK v. Western Grocer Co. '• Dr. Peter H. Fahrney & Sons Co. 
 Bros., 102 Tex. 104; 127 S. W. 1018- v. Ruminer, 153 Fed. 735-1907 (C. C. 
 1908. A. 7th Cir.). 
 
694 Defenses 
 
 In Moxie Co. v. Modox,^^ the plaintiff sold a secret preparation, 
 which it represented to have been prepared "from. a simple cane 
 like plant grown near the equator," and which was a nerve food, 
 and which had cured brain and nervous exhaustion as well as 
 paralysis and other serious diseases. The defendant showed a 
 very strong likelihood that these statements were not true, and 
 that the preparation was merely a root beer. The court held that 
 the defendants had been guilty of unfair imitation of the com- 
 plainants' trade-mark and its dress, and had been guilty of unfair 
 competition, but dismissed the bill because of the falsity of the 
 statements made by the complainant. 
 
 The word "Holeproof" applied to socks is not a representation 
 that the socks will never wear out.^^ 
 
 § 405. Miscellaneous Cases of Misrepresentation Deemed 
 Harmless. — Various statements have been held immaterial 
 and harmless — many of which relate to the name of a proprietor 
 or manufacturer. For instance, the use of part of a name for the 
 whole has been held not fraudulent if (1) it was not used with 
 fraudulent intent; (2) no actual deceit resulted. ^^ This case 
 would seem inconclusive in this regard. While perhaps there 
 was good intention and no loss or deceit resulted in that par- 
 ticular instance, it is not difficult to imagine cases where such an 
 act on plaintiff's part might cause deception. 
 
 § 406. Claiming Falsely to be a Corporation. — It has been 
 urged that relief should be denied to those who hold themselves 
 out as a corporation when they are thereby misleading and de- 
 ceiving the public. Misrepresentation of this sort, to justify the 
 coiu-t in refusing the relief must, however, be such as is intended 
 to, or does in fact, mislead or cheat the public. The name "Stand- 
 ard Distilling Company," without more, is not sufficient to warrant 
 the court in assuming as a fact that the complainant thereby 
 
 " Moxie Nerve Food Co. v. Mo- of the name Thomas Nelson was up- 
 
 dox, 152 Fed. 493-1907 (C. C. R. held as not being such a false name as 
 
 !.)• would prevent a court from protecting 
 
 " Holproof Hosiery Co. v. Wallach, it because, (1) not used with fraudu- 
 
 172 Fed. 859. < lent intent, but in some way in which 
 
 2' Dale V. Smithson, 12 Abb. Pr. plaintiff might have used an emblem; 
 
 (N. Y.) 237-1861. Use by plaintiff, (2) no actual deceit to the public re- 
 
 whose name was Thomas Nelson Dale, suited. 
 
Use of Teem "Established In" 695 
 
 intended to mislead and cheat the pubhc, or that the public 
 thereby was cheated or misled.^* 
 
 It is not a valid defense to an action for unfair competition 
 against a corporation that the person whose name forms a part 
 of the corporate name is no longer connected with the corporation. 
 The fact of the name of the person being in the corporate name 
 does not import that he is at the time in question still connected 
 with it.2' 
 
 §407. Ilse of Term "Established in." — The words "Es- 
 tablished in 1812" may not mean that the person or firm using 
 them were actually in business in 1812, or that the building 
 now in use was built in 1812, but "a customer * * * would 
 probably conclude that complainant had succeeded in some way 
 to the rights of those who began making thread in 1812." ^ Such 
 a phrase may be used so as to deceive when the date of the es- 
 tablishing of a concern is important. 
 
 § 408. Abandonment. — By abandonment is meant the volun- 
 tary and intentional disuse or nonuser of the name or mark. 
 With this may also be classed conscious and intentional dedica- 
 tion to the public. 
 
 Abandonment is purely a question of intent. Mr. Justice 
 Brown says: ^ "To establish the defense of abandonment it is 
 necessary to show not only acts indicating a practical abandon- 
 ment, but an actual intent to abandon. Acts which unexplained 
 would be suflScient to establish an abandonment may be answered 
 by showing that there never was an intention to give up and re- 
 linquish the right claimed." Lapse of time is merely one cir- 
 cumstance among others to be taken into account in determining 
 whether or not an intentional abandonment is to be inferred. 
 
 The general rule is that trade-mark rights are not lost by mere 
 non-user, but that there must be an intention to abandon the 
 trade-mark, or a distinct element of estoppel that will make it 
 inequitable to allow the original owner to claim exclusive right to 
 
 28 Block V. Standard Distilling & ^' Clark Thread Co. v. Armitage, 67 
 
 Distributing Co., 95 Fed. 978-1899 Fed. 896-1895 (C. C. S. D. N. Y.), 
 
 (C. C. Ohio). . at p. 898. 
 
 " Dodge Stationery Co. v. Dodge, ^'' Saxkhner v. Eisner & Mendelson 
 
 145 Cal. 380-1904; 78 Pac. 879; Co., 179 U. S. 19-31-1900; 44 L. ed. 
 
 Holmes, Booth & Haydens v. Holmes, 60; 21 Sup. Ct. 7. 
 Booth & Atwood Mfg. Co., 37 Conn. 
 .278-1870. 
 
696 
 
 Defenses 
 
 use the trade-mark after a period of non-user. It is held in Baglin 
 V. Cusenier Co.,^" that neither, non-user nor the adoption of new- 
 marks constitutes an abandonment, where the circumstances 
 surrounding the course taken are consistent with the intention 
 to retain the right to use the old mark. 2*'' Four years' disuse has 
 been held not to constitute abandonment, ^'^ and abandonment 
 has not been held to be inferred where there was a disuse for some 
 years occasioned by a statutory restriction on the sale of Uquor.^^ 
 
 " * * * Trade-mark rights, like others that rest in user, 
 may be lost by abandonment, non-user, laches or acquiescence. 
 Abandonment, in the strict sense, rests upon an intent to aban- 
 don; and we have no purpose to qualify the authority of Sax- 
 lehner v. Eisner, 179 U. S. 19, 31, to that effect." ^^' 
 
 The intention to abandon, however, need not be directly 
 shown; it may be inferred from the circumstances. ^'■'^ 
 
 In the note several cases are referred to in which a period of 
 disuse in connection with the particular circumstances of the case 
 was held to amount to abandonment. ^^^ If a trader has not only 
 
 2^ 221 U. S. 580. 
 
 ''^ In this case Carthusian Monks 
 had been compelled to leave France 
 and their property seized by the 
 French government and ultimately 
 purchased by a new company which 
 by authority of the French law manu- 
 factured a cordial which was called 
 "Chartreuse." The monks had gone 
 to Spain where they manufactured 
 their cordial by the original formula, 
 but were obliged, at least in France, 
 to apply a different trade-mark to it. 
 It was held that in the U. S. the monks 
 were still entitled to protection in 
 their trade-mark "Chartreuse." As 
 to the necessity of showing directly or 
 by inference an intention to abandon, 
 see Saxkhner v. Eisner & M. Co., 179 
 U. S. 19; Metcalf v. Hanover S. M. 
 Co., 204 Fed. 211-216, 240 U. S. 403- 
 19 (1915). 
 
 29° Burt V. Tucker, 178 Mass., 493; 59 
 N. E. nil (there being testimony that 
 there was no intention to abandon). 
 
 ^^ Hannis Distilling Co. v. Geo. W. 
 Torrey Co., 32 App. D. C. 530. 
 
 ^^^ Hanover Milling Co. v. Metcalf, 
 240 U. S. 403-19-(1915.) 
 
 ^^ Edward & John Burke, Ltd., v. 
 Bishop, 175 Fed. 167. In Levering 
 Coffee Co. v. Merchants' Coffee Co., 39 
 App. D. C. 151, certain evidence was 
 considered and held to show an in- 
 tention to abandon. 
 
 29» Blackwell & Co. v. DribdeU * Co., 
 3 Hughes, 151 Fed. Cas. 1475 (eight 
 years' disuse, others having used the 
 mark meanwhile) ; Royal Baking Pow- 
 der Co. V. Raymond, 70 Fed. 376 
 (twenty-three years' disuse after fail- 
 ure in business held to amount to 
 abandonment ^.ndto preclude resuming 
 use of the mark when neither had 
 meanwhile used it.) See . Manhattan 
 Medicine Co. v.PFood, Fed. Cases, 9026. 
 108 U. S. 218, 2 Sup. a. 436. (A 
 case rather of dress and insignia rather 
 than of strict trade-mark.) 
 
Abandonment 697 
 
 discontinued for a considerable time the use of a trade-mark, 
 but has allowed others to use the same and to build up a business 
 on the supposition that he has abandoned it, he may be estopped 
 from showing that he did not intend to abandon. 2''' 
 
 There are also certain acts that terminate the right to use a 
 trade-mark without any actual intent to abandon it. For ex- 
 ample, if one assumes to assign a trade-mark without transferring 
 the business in connection with which it is used, and at the same 
 time discontinues its use, he loses his right to the trade-mark, 
 although the assignee does not acquire any right to use it. In 
 such a case all right to use a trade-mark is extinguished.^'" Again, 
 one may lose the right to use a trade-mark by changing the 
 ingredients of the product to which it is applied, for a mark cannot 
 truthfully be used for different goods from those of which it has 
 been associated. ^^ 
 
 Abandonment is not ordinarily to be inferred from the mere 
 fact that one no longer uses the mark by itself, but only in con- 
 junction with other words or marks.^'*' 
 
 Consent to the appropriation of trade-marks is not to be in- 
 ferred from long silence and knowledge. "The use of one's 
 trade-mark by another is a continuing wrong, and the right to 
 prevent its continuance can rarely be lost by mere delay of 
 assertion. There must be some element of estoppel." ^ Delay 
 will not bar the right to injunction, though it may bar damages. 
 
 "In order to deprive a manufacturer of his right to a trade- 
 mark, the use of which has been practically given up for a period 
 of five years, mere discontinuance of user for lack of demand, 
 though coupled with non-registration and non-assertion of any 
 right, is not enough; there must be evidence of distinct intention 
 
 ^ Pflugh V. Eagle White Lead Star Brewery Co. v. Val Blatz Brewing 
 
 Co., 185 Fed. 769, 772. (For about Co., 36 App. D. C. 534. 
 
 fourteen years complainant had not ''* Eiseman v. Schiffer, 157 Fed. 'i73; 
 
 used the mark, and others were mak- Layton Pure Food Co. v. Church & 
 
 ing "continued, persistent and adverse Dmght Co., 182 Fed. 24. 
 
 use" of the mark and complainant "^ Independent Baking Powder Co. v. 
 
 had had distinct notice that the others Boorman, 175 Fed. 448. 
 
 claimed the right to use it and had '^'' Dr. Dadirrian & Sons Co. v. 
 
 taken no steps to assert their own Hauenstein, 37 Misc. 23; Avenarius v. 
 
 rights.) For another case in which the Kornely, 139 Wis. 247. 
 
 right to a trade-mark was lost by 'o Michigan Condensed Milk Co. v. 
 
 allowing to general use by others, see Kenneweg Co., 30 App. Cas. (D. C.) 
 
 Ford V. Foster, L. R. 7, Ch. App. 611; 491. 
 
698 Defenses 
 
 to abandon"' (headnote).^^ The burden of establishing aban- 
 donment is upon the party affirming it, and intention to abandon 
 will not be inferred from nonuser, especially if only for a short 
 time, as less than one year.*^ 
 
 "Abandonment of the right to the exclusive use of a distinctive 
 package or other dress for his goods by its originator, who has 
 used it generally and continuously for many years, is not shown 
 by the fact that it has been also used, not only by defendant, but 
 by others, unless it further appears that there has been such ac- 
 quiescence by complainant as to indicate, not only a practical 
 abandonment, but also an intention to abandon" (headnote).'' 
 A dedication or abandoimaent to the public of a trade-mark or 
 trade name will not be inferred where the assent or acquiescence 
 of the proprietor does not clearly appear.'^ Mere delay in bring- 
 ing suit does not show intention to abandon, nor preclude pro- 
 tection.'* 
 
 "One who, after using an alleged trade-mark for a short time, 
 abandons it for nearly a quarter of a century, has no right to 
 resume its use after it has been long employed by another, who 
 has built up under it a large and successful business" (head- 
 note) '^ A trade-mark right is to be deemed abandoned by an 
 eight years' nonuser, and cannot be resumed as against one who 
 has used it exclusively during that period (or a substantial part 
 of it), especially if such use has been without intention to appro- 
 priate a mark originated by another.'^ 
 
 Complainants' assignor, Martin, was a member of a firm that 
 had for some years used the name "Marguerite" as a trade-mark 
 or trade name for a tooth brush. Gibson, defendants' prede- 
 cessor, had at the same time been using the name "Margherita." 
 Martin's firm sued Gibson for infringement and he promised to 
 discontinue using the name. The firm then failed, and Martin 
 went on in business, using the same name. When Martin's 
 
 " Mouson & Co. V. Boehm, L. R. '= Williams v. Adams, 8 Biss. 452- 
 
 26 Ch. Div. 398-1884. 1879 (C. C. lU.). Fed. Cas. 17711. 
 
 32 Julian V. Hoosier Drill Co., 78 '« Raymond v. Royal Baking-P(mder 
 
 Ind. 408-1881. Co., 29 C. C. A. (7th Cir.) 245-1898; 
 
 >' Actiengesellschaft V. U. F. v. 85 Fed. 231. 
 
 Amherg, 109 Fed. 151-1901 (C. C. A. " Bhckwell & Co. v. DibreU & 
 
 3d Cir.). Co., 3 Hughes, 151-1878 (U. S. C. C. 
 
 ^*Filley v. Fassett, 44 Mo. 168- Va.). Fed. Cas. 1475. 
 1869. 
 
Kinds of Laches 699 
 
 firm failed, it abandoned the trade-mark or trade name, and 
 Martin's use of it was to be dated from after the failure, and de- 
 fendant was entitled to use the similar name. Injunction de- 
 nied. ^^ 
 
 In a technical trade-mark case a discontinuance of the use of 
 "Radium" as a trade-mark for about a year and a half (the 
 word, meanwhile, being used by others), was deemed an aban- 
 donment.^' 
 
 Somewhat more than five years after defendants began to 
 sell goods under a name similar to plaintiffs', plaintiffs brought 
 suit to restrain infringement and passing off. They had known 
 of the acts complained of for nearly, if not quite, the whole time 
 since they were begun. Defendants had advertised their busi- 
 ness widely and gradually built up a large trade. This delay 
 barred relief.*" 
 
 In another case abandonment was not inferred from nine 
 years' delay to sue infringer.*^ Abandonment of a particular 
 trade-mark is not to be inferred from registering other trade-marks 
 for similar goods, while not registering this.*^ Abandonment (of 
 exclusive claim) may be found from fourteen years' failure to 
 sue or to foUow up the one or two protests made.*^ Abandon- 
 ment, in the strict sense, should be supported by clear intention 
 of owner to discontinue use.** 
 
 § 409. Kinds of Laches. -^ Laches differs from abandonment, 
 in that the element of intention is absent. Cases where this de- 
 fense is set up may be divided into two classes: (1) where there 
 has been mere delay in taking action, and (2) where there has 
 been such acquiescence as to make it inequitable for the suitor 
 to claim the rights originally enjoyed by him against the public 
 at large, or against the particular defendant. The application 
 of the equitable doctrine of laches in unfair competition cases 
 differs somewhat from its appHcation in other branches of equi- 
 table jurisdiction. 
 
 '* Deitsch v. George R. Gibson Co., " Layton P F. Co. v. Church & D. 
 
 155 Fed. 383-1907 (C. C. N. Y.), Co., 182 Fed. 35, 41. 
 
 Hough, J. « Layton P. F. Co. v. Church & D., 
 
 " Eiseman v. Schiffer, 157 Fed. 473- 182 Fed. 24, 27. 
 
 1907 (C. C. N. Y.). "Pflugh v. Eagle White Lead Co., 
 
 " McCaw, Stevenson & Orr, Ltd., 185 Fed. 769. 
 
 V. Lee Bros., 23 R. P. C. 1-1905 (Ch. " Hanover Milling Co. v. Metcalf, 
 
 Div.). 240 U. S. 403 (1915.) 
 
700 Defenses 
 
 § 410. Laches, in the Sense of Mere Delay. — The proprietor 
 of a trade name has no occasion, and is not in duty bound to in- 
 terfere with one using a similar name, unless and until such per- 
 son enters his field and seeks to deprive him of his trade, and until 
 his business is actually affected by unfair competition. Prior 
 inaction on his part does not constitute laches.^^" Even the fact 
 that one's business is encroached upon does not of itself require 
 one to act, under penalty of forfeiting the right to injunctive 
 relief. Mere delay, unless in any particular jurisdiction the case 
 falls within some statute of limitations, is usually no bar to re- 
 lief by injunction. 
 
 The question of laches and estoppel in unfair competition 
 cases has become of much greater importance since the decision 
 of the Supreme Court in the Hanover Star Milling Co. v. Allen 
 & Wheeler Co.,*^ for on acts of estoppel and laches on the part of 
 the first user may now depend the right of the second user to 
 territory which he has occupied by use of the mark in question. 
 Nearly twenty years' delay by a prior user of a trade-mark or name 
 ("Baltimore Club" for whiskey), but almost entirely in different 
 territory, is laches which may preclude a plaintiEf from reUef 
 against a defendant who had developed large business under long 
 use of same name in different territory.^* 
 
 In Fullwood V. Fullwood,'" the defendant alleged that, for be- 
 tween two and three years, plaintiff had known all the material 
 facts in the pleadings, and consequently set up the defense of laches. 
 The court said: "The plaintiff knew of all the material facts 
 which have been brought before me to-day (in 1875); he com- 
 menced his action in November, 1876. In my opinion that 
 delay, and it is simply delay, is not sufficient to deprive the plain- 
 tiff of his rights. The right asserted by plaintiff in this ac-' 
 tion is a legal right. He is, in effect, asserting that the de- 
 fendants are hable to an action for deceit. It is clear that 
 such an action is subject to the Statute of Limitations, and it 
 is also clear that the injxmction is sought merely in aid of the 
 plaintiff's legal right. In such a case the injunction is, in my 
 opinion, a matter of course if the legal right be proved to exist.' 
 
 "" Sartor v. Schaden, 125 Iowa, 696- " Thos. G. Carroll & Son Co. v. 
 
 1904; 101 N. W. 511. Mcllvaine & Baldwin, 183 Fed. 22 
 
 « 208 Fed. 513; 125 C. C. A. 515; (C. C. A. 2d. Cir.) 
 
 affirmed 240 U. S. 403, 1915. " 9 Ch. Div. 176-79-1878.' 
 
First User of Mark May Revoke License 701 
 
 In saying that I do not shut my eyes to the possible existence 
 in other cases of a purely equitable defense, such as acquies- 
 cence or acknowledgment, and the various other equitable defenses 
 which may be imagined. But mere lapse of time, unaccompanied 
 by anything else (and to that I confine my observations) has, in 
 my judgment, just as much effect, and no more, in barring a 
 suit for an injunction as it has in barring an action for de- 
 ceit." 
 
 Citing this case. Chief Justice Fuller in Menendez v. Holt,*^ 
 says: "Nor will the issue of an injunction against the infringe- 
 ment of a trade-mark be denied on the ground that mere pro- 
 crastination in seeking redress for depredations had deprived the 
 true proprietor of his legal right." 
 
 § 411. First User of Mark May Revoke License Implied 
 from Laches. — The doctrine of laches as to stale claims in mat- 
 ters of trust does not apply in full force to unfair competition 
 cases, where acquiescence will not usually be inferred, and even 
 if at one time the facts would justify a presumption of such ac- 
 quiescence, there still exists in the first user a right of revocation 
 of such acquiescence.'** 
 
 Judge Duer, in Amoskeag Manufacturing Co. v. iSpear,^" takes 
 the position that by acquiescence the owner of a mark does 
 not lose his right, whether this acquiescence be expressed or im- 
 pUed; but that his position is rather that of one granting a rev- 
 ocable Ucense, and he is supported in this view by Fuller, C. J., 
 in Menendez v. Holt (supra). 
 
 Duer, J., says: "The consent of a manufacturer to the use or 
 imitation of his trade-mark by another, may, perhaps, be justly 
 inferred from his knowledge and silence; but such a consent, 
 whether expressed or impUed, when purely gratuitous, may cer- 
 tainly be withdrawn, and when impUed, it lasts no longer than 
 the silence from which it springs; it is, in reality, no more than a 
 revocable Ucense. The existence of the fact may be a very 
 proper subject of inquiry in taking an account of profits, if such 
 
 " 128 U. S. 514-23-1888; 32 L. edt In general, acquiescence in the use of a 
 
 526; 9 Sup. Ct. 143. trade name or mark by another is 
 
 *^McCardel v. Peck, 28 How. Pr. deemed to confer only a revocable 
 
 (N. Y.) 120-1864. Controversy re- license, 
 lated to unfair competition by use of «° 4 N. Yi Super. Ct. 599. 
 "McCardel House" as name of hotel. 
 
702 Defenses 
 
 an account shall hereafter be decreed; but even the admission 
 of the fact would furnish no reason for refusing an injunc- 
 tion." 
 
 Judge Fuller's statement is this: "Where consent by the owner 
 tb the use of his trade-mark by another is to be inferred from his 
 knowledge and silence merely, 'it lasts no longer than the silence 
 from which it springs; it is, in reality, no more than a revocable 
 hcense,' "" citing Amoskeag Mfg. Co. v. Spear, supra. He continues: 
 
 "So far as the act complained of is completed, acquiescence 
 may defeat the remedy on the principle apphcable when action 
 is taken on the strength of encouragement to do it, but so far 
 as the act is in progress and hes in the future, the right to the 
 intervention of equity is not generally lost by previous delay, in 
 respect to which the elements of an estoppel could rarely arise. 
 At the same time, as it is in the exercise of discretionary juris- 
 diction that the doctrine of reasonable diligence is applied, and 
 those who seek equity must do it, a court might hesitate as to 
 the measure of rehef, where the use, by others, for a long period, 
 under assumed permission of the owner, had largely enhanced 
 the reputation of a particular brand" (p. 524). 
 
 In Schmidt v. Brieg,^'^ the plea of laches was set up for the first 
 time in the appellate court. The court there said: "The point 
 ought to have been raised at least at the time the motion for a 
 nonsuit was made, the facts having come out in the evidence of 
 the plaintiffs; but conceding for the purposes of the discussion 
 that, notwithstanding the failure of the defendants to set up the 
 plea of laches until this time, we think the contention is not sup- 
 ported by the admitted facts. The action was commenced 
 about two years after the plaintiffs discovered the infringements, 
 and the record shows that plaintiff had, prior to the bringing of 
 this action, brought suit against other infringers, and that the de- 
 fendants not only had notice of this prior litigation, but had 
 changed the color of their label on account of a decision in the 
 court below. The doctrine of laches, as applied to stale claims 
 in matters of trust, does not apply with full force to cases of in- 
 fringement" (p. 681). 
 
 For over fifteen years stationers had been selUng pens of other 
 
 " Julian V. Hoosier Drill Co., 78 " 100 Cal. 672-1893; 35 Pac. 623; 
 Ind. 408-1881; Taylor v. Carpenter, 22 L. R. A. 790. 
 3 Story, 458-1844 (C. C. Mass.). 
 
Presumption of Acquiescence 703 
 
 makers which closely resembled plaintiffs', especially in the use 
 of the arbitrary numeral "303," and it did not appear how far 
 plaintiff had actual knowledge of specific acts of infringement, 
 except that he placed on his boxes a caution to the public against 
 the imitations that were on the market. It was held, that it 
 was no defense that the fraud has been multiplied, and that ac- 
 quiescence could not be inferred, and that it was revocable if it 
 could be. Acquiescence cannot be inferred from a caution to 
 the pubUc.^' 
 
 § 412. No Presumption of Acquiescence where an Exclusive 
 Right Exists. — It has been held ''^ that where a person had 
 long used the name "Blue Lick" for his spring, he had 
 acquired an exclusive right to the name, and whatever money 
 a rival might have expended in the purchase and improve- 
 ment of an artesian well with the purpose of using the words 
 "Blue Lick" as his trade-mark in the sale of water therefrom, 
 was spent at his own risk; for no presumption of acquies- 
 cence by appellees in such wrongful appropriation of their prop- 
 erty could arise, nor could they be thus estopped to assert their 
 rights. 
 
 § 413. Material Delay Bars Right to an Accounting of Profits. 
 — But material delay will, as a rule, bar the right to an account- 
 ing, although the right to an injunction is not lost; but it will 
 not, even though it be a delay of some years, bar the right to 
 an action at law for damages for misuse of a label or name or 
 mark.^^ Where the proprietors of a spring take no action for 
 thirty years against one so labeling and selling artificial water, 
 as water from their spring, they are precluded by laches from 
 demanding an account of profits during that time.^^ 
 
 " Gilhtt V. Esterbrook, 47 Barb, natural water from the Grand Grille 
 
 (N. Y.) 455-1867. Spring, and constitutes unfair com- 
 
 '* Narthcutt v. Turney, 101 Ky. 314- petition as against those seUing the 
 
 1897; 41 S. W. 21. natural water. Amoskeag v. Garner, 
 
 ^^ Saxkhner V. Eisner & Mendelson 54 How. Pr. (N. Y.) 297-1876; 
 
 Co., 179 U. S. 19-1900; 44 L. ed. 60; Cahn v. Gottschalk, 14 Daly (N. Y.), 
 
 21 Sup. Ct. 7. 542-1888; 2 N. Y. Supp. 13. It was 
 
 ^ La RepubliqueFrancaise v.Schultz, held that five years' delay in bringing 
 
 102 Fed. 153-1^00 (C. C. A. 2d. suit, after notice of acts of unfair 
 
 Cir.). Labehng bottles of artificial competition, would bar an accounting 
 
 mineral water as "Vichy (Grand of profits, though not the granting of 
 
 Grille) " implies that the water is the an injunction, Bissell CUIM Plow 
 
704 
 
 Defenses 
 
 If defendants place on goods a cautionary notice, after a former 
 action against them for unfair trading, and it does not prove 
 sufficient to prevent deception, the fact that they attempted 
 to differentiate by the notice may be a reason for refusing to 
 order an accounting of profits against them on a second injunc- 
 tion being issued/'' 
 
 § 414. Laches May Bar Right to Order for Destruction of 
 Offending Goods. — Laches will bar also the right to an order 
 directing destruction or delivery over of goods in hands of de- 
 fendant which infringe those of plaintiff.^* 
 
 Works V. T. M. Bissell Plow Co., 121 
 Fed. 357-1902 (C. C. Mich.), involv- 
 ing a delay of six years, which barred 
 right to damages. Dr. Peter H. 
 Fahrney & Sons Co. v. Ruminer, 153 
 Fed. 735-1907 (C. C. A. 7th Cir.). 
 Complainant notified defendants to 
 desist from the use of a trade name 
 which constituted unfair competition, 
 and defendants refused to do this. 
 Complainant waited four years before 
 proceeding legally against defend- 
 ants. Held, that whatever effect such 
 delay might have upon the right to 
 damages, it did not preclude com- 
 plainant from injunctive relief. Low 
 V. Pels, 35 Fed. 361-1888 (C. C. E. 
 D. Pa.). Plaintiffs were English 
 manufacturers of soap and perfum- 
 ery, especially of a soap widely known 
 as "Brown Windsor Soap." They 
 had never sold their own article ex- 
 tensively in the United States, but 
 for many years imitations had been 
 made and sold there, without inter- 
 ference on the part of plaintiffs, and 
 it had been generally understood that 
 the name and labels were open to the 
 use of the trade. Defendant conceded 
 that plaintiffs were entitled to an in- 
 junction. Held, that they were not 
 entitled to an account of sales or 
 damages. Harrison y. Taylor, 11 Jur. 
 N. S. 408-1865. Defendants delayed 
 bringing suit for trade-mark infringe- 
 
 ment for nearly a year. Held, that 
 although entitled to an injunction, 
 plaintiffs had lost their right to an 
 account of profits. Defendants al- 
 lowed one month in which to discon- 
 tinue using the mark. Worcester 
 Brewing Corp. v. Rvster & Co., 157 
 Fed. 217-1907 (C. C. A. 1st Cir.). 
 Complainant, after becoming aware of 
 unfair competition upon the part of 
 the defendant by the use of the trade 
 name of its product ("Sterling Ale"), 
 waited fifteen months before warning 
 defendant and sixteen months before 
 bringing suit. The circumstances in- 
 dicated that the defendant had no 
 fraudulent intent, and he was shown 
 to have expended a considerable sum 
 in advertising his competing product 
 after complainant had learned of the 
 facts upon which unfair competition 
 was predicated. Held, that (while 
 complainant had not lost the right to 
 an injunction) the right to an ac- 
 counting for profits was waived. In 
 determining the period of delay neces- 
 sary to bar an accounting, it is an 
 important consideration whether de- 
 fendant's infringement was deliberate 
 or unintentional. 
 
 ^^ Dr. A. Reed Cushion Shoe Co. 
 v. Frew, 158 Fed/ 55^-1908 (C. C. 
 N. Y.). 
 
 ^'County Chemical Co. v. Frank- 
 enburg, 21 R. P. C. 722. 
 
Laches which Bars Right to Pkeliminary Injunction 705 
 
 § 415. Laches which Bars Right to Preliminary Injunction. — 
 
 A delay for a considerable period in bringing suit may defeat 
 the right to a 'preliminary injunction, — unless complainant's 
 rights pending final hearing cannot be otherwise protected, and 
 unless at the same time the inconvenience of an injunction to 
 defendant would be much less than the inconvenience to com- 
 plainant of refusing an injunction.^'' Delay in suing, although 
 not precluding ultimate injunctive relief, wUI be considered 
 by the court on an application for a preliminary injunction, and 
 has often been held to bar the right to the interlocutory relief.^" 
 The court will, if necessary, guard against the injury which the 
 sudden imposition of an injunction without notice might cause 
 a defendant. "When delay of the owner of a patent or trade-mark 
 to prosecute infringers has been of a tendency to mislead the 
 public or the defendant sought to be enjoined into a false se- 
 curity, and a sudden injunction would result injuriously, it ought 
 not to be granted summarily, but the complainant should be left 
 to his relief at final hearing. So also where as in this instance the 
 extensive use of the trade-mark by others with the implied ac- 
 quiescence of the owner has contributed to give a reputation 
 and create a demand for the article to which it has been applied 
 which it would not otherwise have acquired, equity should not 
 by any stringent intervention assist the owner to secure these 
 fruits." " 
 
 Other examples of what has and has not been considered such 
 undue delay in suing as will warrant a court in refusing a pre- 
 liminary injunction, are found in the note.^^ 
 
 "'Stirling Silk Mfg. Co. v. Ster- December 5, 1871. "But I find he 
 
 ling Silk Co., 59 N. J. Eq. 394r-1900; (plaintiff) was in possession of nearly 
 
 46 Atl. 199. all the evidence in substance which 
 
 'oBissell Chilled Plow Works v. he now possesses, in the summer of 
 
 T. M. Bissell Plow Co., 121 Fed. last year, and I find no steps taken 
 
 357, at page 375-1902 (C. C. Mich.). until that which is called an offensive 
 
 '^ Estes Y. Worthington, 22 Fed. 822- advertisement appeared. * * * if 
 
 1885 (C. C. S. D. N. Y.). the case stood on the evidence as it is 
 
 '^Isaacson v. Thompson, 41 L. J. now before me, and the application 
 
 (Ch.) N. S. 101-1871. Plaintiff knew had been made in good time, I should 
 
 of what defendant was doing. The have felt it my duty to grant the in- 
 
 four mistakes alleged occurred, two in junction asked for. * * * But as 
 
 December, 1870, one in January, 1871, the plaintiff's case is one which must 
 
 one in May, 1871. This motion was be the subject of judicial decision, and 
 
 made for a preliminary injunction as he has chosen to wait until this 
 
706 
 
 Defenses 
 
 § 416. Acquiescence in the Sense of Inaction upon which 
 Others Have the Right to Rely. — "Acquiescence is where a 
 person who knows that he is entitled to * * * enforce a 
 right neglects to do so for such a length of time that under the 
 cu-cumstances of the case the other party may fairly infer that 
 he has waived or abandoned his right." ^^ 
 
 "Where a person tacitly encourages an act to be done, he 
 cannot afterwards exercise his legal right in opposition to such 
 consent, if his conduct or acts of encouragement induced the 
 other party to change his position, so that he will be pecuniarily 
 prejudiced by the assertion of such adversary claim." ** 
 
 As distinguished from laches, in the sense of mere delay, we 
 
 month of November, the bill having 
 been filed on the 4th of November, 
 1871, and he having known from 
 February, 1871, the danger which had 
 existed all the time, I do not think 
 it is a case in which I am at Uberty 
 to grant him the injunction he asks" 
 (at p. 103). Edward & John Burke, 
 Ltd., V. Bishop, 144 Fed. 838-1906 
 (C. C. A. 2d Cir.). Ten years' ac- 
 quiescence in the conduct of the real, 
 though not the nominal, defendant 
 held to constitute such laches as to 
 bar any right to a preliminary in- 
 junction. C. 0. Burns Co. v. W. F. 
 Burns Co., 118 Fed. 944-1902 (C. C. 
 S. D. N. Y.). "A preliminary in- 
 junction to restrain unfair compe- 
 tition will not be granted on con- 
 flicting evidence, where complainant 
 had known of the purposes and prac- 
 tices of the defendant for a year and a 
 half before commencing suit, during 
 all of which time they were active 
 competitors in business" (headnote). 
 Von Mumm v. Steinrmtz, 137 Fed. 
 168-1905 (C. C. S. D. N. Y.). "Al- 
 though unfair competition, by sim- 
 ulating the dress of complainants' 
 goods, is apparently shown, a prelim- 
 inary injunction will not be granted, 
 where it appears that defendant has 
 
 publicly used the same dress for many 
 years" (headnote). Havana Com- 
 mercial Co. V. Nichols, 155 Fed. 302- 
 1907 (C. C. S. D. N. Y.), Lacombe, J. 
 While mere delay wiU not defeat the 
 remedy by injunction, it may be 
 sufficient ground for denying a pre- 
 hminary injunction. Here the de- 
 fendants alleged that they had sold 
 their goods under the brand com- 
 plained of for nineteen years, and 
 although complainant asserted that 
 this was without the knowledge of 
 itself or its predecessors, the court 
 deferred the determination of aU 
 questions until final hearing. Beard 
 V. Turner, 13 L. T. N. S. 747-1866. 
 After deciding against plaintiff on the 
 merits, the Vice-Chancellor deals with 
 the defense of laches and expresses the 
 opinion that two years' delay in 
 bringing suit would preclude the re- 
 covery of damages. (The language 
 may be broad enough to include in- 
 junctive relief as also cut off by the 
 delay, but the case cannot be treated 
 as an authority to that effect.) 
 
 '' Rapalje & Lawrence's L. Diet, 
 cited in Scott v. Jackson, 89 Cal. 
 258-62. 
 
 '^^ Swain v. Seamens, 9 Wall. 254- 
 274-1869; 76 U. S. 254; 19 L. ed. 554. 
 
Acquiescence in Sense of Inaction, Etc. 707 
 
 have frequently the case in which, during the delay, rights have 
 grown up or equities arisen which make it inequitable to admit 
 the complainant's claims. In such case the defense may most 
 conveniently be termed that of acquiescence. It involves a 
 principle akin to that of estoppel^ If the proprietor of the name 
 or mark has stood by and allowed others to use it under such 
 circumstances and for such a time that his consent, or at least 
 an attitude of noninterference on his part, may reasonably be 
 inferred, he may not cause others who have acted upon the 
 strength of his silence and inaction to lose the results of the work 
 and money expended on the assumption that he consented thereto. 
 At the outset the name or mark was unquestionably his own, 
 but he has allowed the public gradually to appropriate it, until 
 at last it is publici juris. 
 
 Two leading examples of the loss of the exclusive right to use 
 an originally distinctive name through acquiescing in a general 
 appropriation of it, may be found in the Vichy and Hunyadi 
 cases, decided not long since by the United States Supreme 
 Court. 
 
 The proprietors of the original French Vichy mineral water 
 which was named from the place where the springs were located, 
 had failed to interfere in any way, while, for twenty-five years, 
 the defendant had widely sold its "Saratoga Vichy," and various 
 artificial waters were everywhere sold under the name of Vichy. 
 It was held, that knowledge of these infringements was to be 
 presumed from their notoriety, and that the proprietors of the 
 originar Vichy had allowed the name to become general and in- 
 dicative of the character of the water. "A clearer case of laches," 
 says the court, "could hardly exist." ^^ It will be noted that 
 in this case, a sovereign state was the complainant, and it was 
 objected that the defense of laches was not available against a 
 sovereignty. On this point it was considered that where a foreign 
 sovereign of state sues in our court on a private or proprietary 
 right, the rule nullum tempus occurrit regi cannot be invoked, 
 but that the sovereign is subjected like any other party to the 
 defense of laches, and that this is certainly so when the sovereign 
 is practically a nominal party, suing for the benefit of an indi- 
 vidual. 
 
 ^'French Republic v. Saratoga Vichy Spring Co., 191 U. S. 427-37-1903; 48 
 L. ed. 247; 24 Sup. Ct. 145. 
 
708 Defenses 
 
 The rights of the owners of the Hunyadi waters were con- 
 sidered in Saxlehner v. Nielsen,^ where the original proprietor 
 of the name "Hunyadi" as applied to mineral waters, having 
 for years allowed the name to be used for other Hungarian waters, 
 was held to have lost his exclusive right. For- facts in detail, 
 see Saxlehner v. Eisner & Mendelson Co.^'' 
 
 "Where an injunction has been granted by this court, there 
 must, in order to deprive the party who has obtained the in- 
 junction of the right to move for committal upon the breach 
 of it, be a case made out almost amounting to such a license to 
 the party enjoined to do the act enjoined against as would en- 
 title him to maintain a bill against others for doing that act. 
 The party enjoined must, I think, show such acquiescence as 
 would be sufficient to create new right in him." ^ 
 
 § 417. Test by which to Determine Acquiescence. — A lead- 
 ing English case on the subject is Ford v. Foster,^^ which lays 
 down a rule by which to ascertain whether as a result of the 
 inaction and presumable permission of the original owner a 
 name or mark has really become public property, so that it is 
 too late for him to assert his original right. Mellish, L. J., there 
 says: "Then what is the test by which a decision is to be arrived 
 at whether a word which was originally a trade-mark has become 
 publici juris? I think the test must be, whether the use of it 
 by other persons is still calculated to deceive the public, whether 
 it may still have the effect of inducing the public to buy goods 
 not made by the original owner of the trade-mark as if they 
 were his^ goods. If the mark has come to be so public and in 
 such universal use that nobody can be deceived by the use of it, 
 and can be induced from the use of it to believe that he is buying 
 the goods of the original trader, it appears to me, however hard 
 
 «' 179 U. S. 43-1900; 44 L. ed. 77; without knowledge of complainant's 
 
 21 Sup. Ct. 16. rights, on learning of which they had 
 
 »' 179 U. S. 19. Gilka v. Mihalo- desisted. The court, finding no suffi- 
 
 vitch, 50 Fed. 427-1892 (C. C. Ohio), cient evidence that complainants had 
 
 Complainants, who had long sold a had any notice of the infringement 
 
 cordial known as "Gilka-Kummel," until very recently, held that laches 
 
 sought to enjoin defendants from sell- was not to be imputed to them, 
 
 ing in another part of the country an ^ Rodgers v. Nowill, 3 De G. M. & 
 
 imitation cordial. Defendants had G. 614^19-1853. 
 
 been selling in this manner for some »' L. R. 7 Ch. 611-1872. 
 twenty years, but, as they claimed, 
 
Test by which to Determine Acquiescence 709 
 
 to some extent it may appear on the trader, yet practically, as 
 the right to a trade-mark is simply a right to prevent the trader 
 from being cheated by other persons, goods being sold as his 
 goods through the fraudulent use of the trade-mark, the right 
 to the trade-mark must be gone" (at p. 628). 
 
 The test, therefore, is whether or not the public will be so de- 
 ceived, by a general use of the name or mark as to believe when 
 they buy goods bearing that name or mark that they are getting the 
 particular goods of the one who first used the mark. If the name 
 has become dissociated from the personality or ownership of an 
 individual, it is henceforth the general generic name of the article. 
 
 In the "Yorkshire Rehsh" case, Powell v. Birmingham Vinegar 
 Brewery Co.,'"' the court said: "There is another way in which a 
 name originally a good trade name may lose its character and 
 become puhlid juris, i. e., where the first person using the name 
 does not claim the right to prevent others from using it, and al- 
 lows other persons to use it without complaint. The name then 
 comes to denote the article and nothing more; the name becomes 
 pvblici juris and anyone who is at liberty to make the article, 
 can call it by the name by which it is usually known. Ford v. 
 Foster (supra) is the leading authority on this head. No name, 
 however, can become publici juris in this way, so long as the per- 
 son originally entitled to the use of the name asserts his rights in 
 that respect. Moreover it is for those who assert that a trade 
 name has become publici juris, to prove it" (p. 73). 
 
 The fact that there has been long continued use of the name, 
 or a similar name, mark, or dress by others than the claimant, 
 at all events throws the burden upon him to prove the exclusive 
 right, and the larger and more general the use by others has 
 been, the stronger will be the evidence required of him. It is 
 also said that: "Where persons come and object, in whatever 
 form, to the use of a trade-mark which has been used for a great 
 number of years, it does not follow, as a matter of course that the 
 use for a great number of years is an absolute bar to obtaining an in- 
 jimction; but, most certainly, it throws on those who object to the 
 use, the onus of proving that it was originally a fraudulent use, and 
 that it is calculated to deceive; and very much stronger evidence is 
 required in such a case where there has been a longer user." " 
 
 70 2 Ch. 54-1896. " I'"' ^^ Heaton, L. R. 27 Ch. Div. 
 
 570-76-1884. 
 
710 Defenses 
 
 As these cases just cited state, long general use is seldom re- 
 garded as conclusive on the rights of the original owner, but 
 merely throws a burden proportionate to the length of the use 
 on the owner in asserting a right to the mark. In fact, certain 
 cases say that mere delay, "procrastination" as the United 
 States Supreme Court puts it,'^ may be ground for denial of 
 an injunction. 
 
 While, in general, mere delay in the enforcement of a clear 
 right against one who infringes a trade-mark or is guilty of un- 
 fair competition does not bar an action for an injunction, yet 
 long delay under circumstances importing acquiescence in the 
 acts complained of will preclude injunctive relief. This was ap- 
 phed in a case where for eight years there had been acquiescence 
 without objection and with knowledge of the facts.'' 
 
 § 418. Defense that Plaintiff Violated Some Federal Statute 
 Regarding Restraint of Trade, or Monopoly. — Alleging and 
 proving such acts as these do not constitute a defense in unfair 
 competition cases, because the reUef granted in such cases "does 
 not involve the enforcement of the alleged illegal contract." ''* 
 The existence of such contracts to which plaintiff is a party "does 
 not destroy his right to protection against infringement on trade 
 rights." " 
 
 ■'^Menmdez v. Holt, 128 U. S. ■'^Coca-Cola v. Gay-Ola Co., 211 Fed. 
 
 514-1888; 32 L. ed. 526; 9 Sup. Ct. 942; citing Brown Saddle Co. v. Troxel, 
 
 143. 98 Fed. 620; Camors v. McConnell, 
 
 " Prince's Metallic Paint Co. v. 140 Fed. 412; Wey man-Burton Co. v. 
 
 Prince Mfg. Co., 57 Fed. 938-1893 OU Indian Snuff Mills, 1%7 F&A. IQlb; 
 
 (C. C. A. 3d Cir.). Coca Cola v. Nashville Syrup Co., 
 
 " Coca Cola v. Deacon Brmm Co., 200 Fed. 153. 
 200 Fed. 105. 
 
CHAPTER XXV 
 
 Profits and Damages 
 
 Section 419. Damages recoverable in unfair competition cases. 
 
 420. Confusion as to right to profits as distinguished from damages. 
 
 421. Adequate compensation to the plaintiff is, the purpose of the court 
 
 in granting profits and damages. 
 
 422. Damage to reputation of product to be reckoned as well as loss of 
 
 profits. 
 
 423. Deduction of defendant's expenses from profits. 
 
 424. When an account wiU not be ordered. 
 
 425. Profits given to plaintiff may be limited to those resulting from 
 
 defendant's fraud. 
 
 426. What profits may be recovered. 
 
 427. How to determine what are profits. 
 
 428. When laches will bar an accounting. 
 
 429. Notice of infringement. 
 
 430. Damages in suits at law for unfair competition. 
 
 431. Good faith as an excuse for relieving defendant from paying 
 
 damages. 
 
 There is much general similarity between the rules in England 
 and in the United States governing the amount of money recovery 
 that can be had by one unlawfully injured by unfair competition. 
 The most striking difference is that, in the United States the de- 
 fendant's profits are often allotted to the injured party as a part of 
 his damages, while in England, in equity the complainant is re- 
 quired to elect between damages and profits, and cannot have 
 both. 
 
 § 419. Damages Recoverable in Unfair Competition Cases. — 
 In this country, both in the State and Federal courts full and 
 adequate money compensation may be recovered in cases of 
 unfair competition of every kind, including cases of infringe- 
 ment of trade-marks registered under the United States statute. 
 The effort seems to have been made not only to recompense the 
 plaintiff for the wrongful invasion of his rights, but to go further 
 and adjust the rules by which the amount of his money recom- 
 pense is measured, in such a way as to deter parties from in- 
 fringement or misappropriation of industrial property. 
 
 This rule is embodied in the Federal Trade-mark Act which 
 provides: "The several courts vested with jurisdiction of cases 
 
 711 
 
712 Profits and Damages 
 
 arising under the present act shall have power to grant injunctions, 
 according to the course and principles of equity, to prevent the 
 violation of any right of the owner of a trade-mark registered under 
 this act, * * * and upon a decree being rendered * * * the 
 complainant shall be entitled to recover, in addition to the profits 
 to be accounted for by the defendant, the damage, the complainant 
 has sustained. * * * The court shall have the same power 
 to increase such damages, in its discretion, as is given by section 
 sixteen of this act for increasing damages found by verdict in 
 actions of law." ^ 
 
 § 420. Confusion as to Right to Profits as Distinguished from 
 Damages. — In some jurisdictions, equity courts lack power to 
 assess unliquidated damages. In Martin v. Martin^" (N. ,J.), 
 Swayze, J., says: "The general rule is that unliquidated damages 
 for a tort cannot be recovered in equity." In Lampert v. 
 Judge Co.,^'' Roy, J., says: "The remedies in equity and at law 
 are radically different. Equity gives as damages the profits of 
 the defendant, while the law limits them to the loss suffered by 
 plaintiff. Equity restrains future wrongs by injunction. Law 
 seeks to prevent such future violations by inflicting exemplary 
 damages for past offences." 
 
 This difference in the function of the two jurisdictions was 
 recognized in England in the framing of the Judicature Acts, 
 which contain specific legislation giving power to law courts to 
 issue injunctions.^ 
 
 If our equity com-ts are actually limited to awarding to a plain- 
 tiff only the actual profits of the defendant, plaintiffs in equity 
 in many unfair competition suits must go without adequate 
 compensation for the injuries inflicted on them by the defendant, 
 unless two suits are instituted for each cause of action, one in 
 equity for an injunction and one at law for damages. Recognizing 
 this fact many courts have sought to find a way to grant an in- 
 junction and at the same time give complete damage satisfaction 
 in one proceeding. Various means of doing this have been used: 
 
 1. Where plaintiff's loss wiU not be met by the mere profits of 
 defendant, by causing the master to find not only the profits of 
 defendant but also plaintiff's total loss, and assessing against 
 
 1 Federal Trade-Mark Act Feb. 20, '* Lampert v. Judge Co., 238 Mo. 
 
 1905, section 19. 409-1911, 141 S. W. 1095. 
 
 1° 75 N. J. Eq. 257. » 21 and 22 Vict. C. 27. 
 
Adequate Compensation to Plaintiff 713 
 
 defendant not only the profits but an amount as damages suf- 
 ficient to bring the sum up to the total amount of plaintiff's loss.' 
 
 2. By causing the master to find a sum in addition to profits 
 that represents compensation for injury inflicted by defendant 
 upon reputation of plaintiff's goods, provided there be a basis for 
 computing it/ 
 
 3. By causing the master to assess damages and profits on the 
 ground that "an equity court, having once obtained full jurisdic- 
 tion, both of the subject-matter and the parties, will administer 
 full redress including 'damages and profits' technically so called."" 
 
 4. Giving plaintiff damages in addition to profits whete "the 
 circumstances are aggravated." ^ Such is really an award of 
 punitive damages. 
 
 5. Granting an allowance to plaintiff in the nature of punitive 
 damages where an award of profits will not compensate or the 
 damages of plaintiff cannot be accurately measured. 
 
 § 421. Adequate Compensation to the Plaintiff is the Purpose 
 of the Court in Granting Profits and Damages. — In Baker v. 
 Slack,^ Jenkins, J., said: "The injured party is entitled to full 
 compensation for the injury, but how shall that be measured? 
 Manifestly, the profits which the infringer has made would not 
 in all cases be compensation to the injured. The latter's loss in 
 part was in the failure to acquire just and deserved gains; also in 
 the injury to the reputation of his product by reason of the sub- 
 stitution of the spurious article. The latter element is difficult, 
 if not impossible of accurate admeasurement. It can only be 
 approximately compensated by an allowance in the nature of 
 punitory damages resting largely in discretion." ^ 
 
 In Benkert v. Fed&r,'''" Sawyer, J., said: "The trade-mark sells 
 the whole article, however inferior and injurious in that partic- 
 ular, and prevents the sale of the owner's goods of equal amount. 
 At least that is the fraudulent purpose and the natural tendency, 
 whether always accomplished or not; and the injured party 
 should have at least the whole profit resulting from the wrongful 
 
 3 Hmnessy v. Wilmerding, 103 Fed. " Browne on Trade-Marks, 2d ed., 
 90; Forster v. Cutter-Tower, 215 Mass. p. 503. 
 136, 101 N. E. 1083. '" 130 Fed. 514^1904 (C. C. A. 7th 
 
 *Merriam v. Saalfield, 198 Fed. Cir.). 
 359 ' Regis v. Jaynes, 191 Mass. 245. 
 
 'Paul on Trade-Marks, §326. '"34 Fed. 534-535-1888 (C. C. N 
 
 D. Cal.). 
 
714 Profits and Damages 
 
 act, and such I understand and hold the rule to be. The damage 
 may be much more arising from destroying the reputation of the 
 owner's goods." 
 
 In Hennessy v. Wilmerding Loewe Co.,'''' it was said: "with 
 regard to that part of the master's report which awards com- 
 plainants $50 damage, to the reputation of their brandy, re- 
 spondent objects, and contends that the master is not authorized 
 by law to impose damages exceeding the profits reahzed on the 
 eighteen bottles of spurious brandy. The interlocutory decree 
 herein orders a reference to the master 'to take, state, and report 
 an account of profits and damages herein.' * * * 
 
 " Full compensation requires that not only should an account 
 be taken of the profits, but that the damage inflicted upon the 
 reputation of complainants ' goods by the sale of respondent's com- 
 pound imder an imitation of complainants' trade-mark should be 
 assessed by the master. The assessment the master has Inade and 
 fixed the damages at the sum of |50, which this court considers 
 to be a reasonable amount, in view of the circumstances, and for 
 which the master has given sufficient reasons." 
 
 In Foster Mfg. Co. v. CuUer-Tcrwer Co.,''" Sheldon, J., said: "The 
 plaintiff in such a case as this may to be sure suffer some 
 particular loss or damage for which the receipt of the defendant's 
 profit would not compensate him. If, for example, the defend- 
 ant has attempted to undersell him, has introduced what is 
 called a 'cut throat competition,' thus cutting down the plaintiff's 
 profits without correspondingly increasing his own, or if the 
 defendant has cheapened his production by the use of inferior 
 materials, or by unsuitable processes of manufacture, and thus 
 has depreciated the value of the plaintiff's trade-name, or of 
 the work or ssonbols to which the plaintiff has acquired a 
 right, or otherwise has injured the reputation of the plaintiff's 
 goods and thereby caused an appreciable loss to the maker, in 
 addition to that caused by the actual sale which the defendant 
 has made, the plaintiff should be allowed to recover for such a 
 loss besides taking the defendant's profits, if the plaintiff has 
 claimed and is allowed such profits." ^ 
 
 '*■ 103 Fed. 90-93-1900 (C. G. N. D. ' 245; 77 N. E. 774; Fwster Mfg. Co. v. 
 
 Cal.). Cutter-Tower Co., 211 Mass. 223; 97 
 
 ■^ 215 Mass. 136; 101 N. E. 1083. N. E. 749. See above, Rowley v. 
 
 s Citing Regis v. Jayrtes, 191 Mass. Rowley, 193 Fed. 390; 113 C. C. A. 386. 
 
Adequate Compensation to Plaintiff 715 
 
 In Sharpless Co. v. Lawrence f' it was said: "Courts of Equity, 
 in granting injunctive relief in cases of unfair competition, have 
 sometimes decreed that the plaintiffs should recover of defend- 
 ant, not only damages, but the profits, gains and advantages that 
 have accrued to the defendant by reason of his unfair com- 
 petition. Such an enlargement of the scope of the decree is 
 generally made on the ground that the unfair competition is 
 adjudged to have been willful and fraudulent, and the recovery 
 of profits in such cases is a punitive addition to the ordinary 
 decree of compensatory damages." 
 
 In Hamilton-Brown Shoe Co. v. Wolf Bros. & Co.,^ the theory 
 on which profits must be accoxmted for by the infringer of a trade- 
 mark is stated as follows: 
 
 " The infringer is required in equity to account for and yield 
 up his gaias to the true owner, upon a principle analogous to that 
 which charges a trustee with the profits acquired by wrongful 
 use of the property of the cestui que trust. Not that equity as- 
 sumes jurisdiction upon the ground that a trust exists. As pointed 
 out in Root V. Lake Shore & M. S. R. Co. 105 U. S. 189, 214, 26 
 L. ed. 975, 984; and Tilghman v. Proctm, 125 U. S. 136, 148, 31 
 L. ed. 664, 668, 8 Sup. Ct. Rep. 894 (patent cases), the jurisdic- 
 tion must be rested upon some other equitable ground, — in ordi- 
 nary cases, as in the present, the right to an injunction — but the 
 court of equity, having acquired jurisdiction upon such a ground, 
 retains it for the purpose of administering complete reUef, rather 
 than send the injured party to a court of law for his damages. 
 And profits are then allowed as an equitable measure of compen- 
 sation, on the theory of a trust ex maleficio. In the courts of 
 England, the rule seems to be that a party aggrieved must elect 
 between damages and profits, and cannot have both. In this 
 country, it is generally held that in a proper case, both damages 
 and profits may be awarded." 
 
 Where the circumstances are aggravated, complainants are 
 entitled to damages for kijury to the reputation of their goods. 
 Full compensation requires that not only should an account be 
 taken of the profits but that the damage to the reputation of com- 
 plainant's goods by the sale of defendant's product should be 
 assessed by the master. 
 
 ^ 213 Fed. 42^-426-1914 (C. C. A. » 240 U. S. 251. 
 3d Cir.). 
 
716 ProS'I'TS and Damages 
 
 In Williams v. Mitchell, Mitchell v. Williams^ the court said: 
 "The complainants also assert error in that the decree denied 
 compensation for past unfair competition. In this respect, also, 
 we think, the court was in error. The decree declares that the 
 defendants, by their imitation of the complainant's advertise- 
 ments, had been guilty of deceiving purchasers and the public 
 into believing that the game boards of their make were the 
 game boards made by the complainants. It declares an invasion 
 of the complainants' rights, and the complainants are entitled, 
 upon proper proof, to compensation to the extent of the inva- 
 sion." "> 
 
 It has been held, however, that the plaintiff may not recover 
 in addition to the profits made by the defendant, those which 
 the plaintiff lost the opportunity of making, as this would be 
 double compensation for the same sales," but this rule is 
 questioned (see following section.) 
 
 The plaintiff must demand both profits and damages in its 
 pleadings and show that it is entitled to the same on the trial of 
 the action, as an appellate court will not modify a decree ordering 
 either an accounting of profits or the payment of damages, to 
 include both.^^ 
 
 If a suit at law is brought for deceit, the plaintiff must prove the 
 damages he actually sustained as in any other tort action, and in 
 default of such proof can recover only nominal damages." 
 
 Most suits for unfair competition are brought in equity, and in 
 equity the reUef is twofold, the injunction and a decree for an 
 accounting of profits as an element of damage." 
 
 9° 106 Fed. 168-172-1901. Westcott Chuck Co. v. Oneida N. Chuck 
 
 ^0 Regis v. Jaynes, 191 Mass. 245; Co., 199 N. Y. 247; fle^is v. /aj/n«s, 191 
 
 Westcott Chv/ck Co. v. Oneida N. Chuck Mass. 245. 
 
 Co., 199 N. Y. 247; Walter Baker v. » Merriam v. Satdfield, 198 Fed. 
 
 Slack (C. C. A.), 130 Fed. 514. 369; Fairbank Co. v. Windsor, 124 Fed. 
 
 ^^Forster Mfg. Co. v. Cutter-Tower 200; Sawyer v. Kellogg, 9 Fed. 601; 
 
 Co. {supra); Atlantic Milling Co. v. Benkertv. Fader, Si Fed. bM; Avery & 
 
 Rowland, 27 Fed. 24; Fairbank v. Sonsv.Meikle,85Ky.i35; ElModello 
 
 Windsor, 118 Fed. 96. Cigar Mfg. Co. v. Goto, 25 Fla. 886; 
 
 "P. E. Sharpless v. Lawrence, Graham v. Plate, 40 Csl\. 593; Eddsten 
 
 213 Fed. 423 (C. C. A. 3d Cir. 1914) ; & Edelsten v. Edehten, 1 DeGex J. & S. 
 
 Forster Mfg. Co. v. Cutter-Tower Co., 185; Modesto Creamery v. Stanislaus 
 
 supra; Walter Baker v. Slack, 130 Fed. Creamery Co., 168 Cal. 289-1914; 
 
 514. 142 Pac. R. 845; Regis v. Jaynes, 191 
 
 "Singer v. June, 163 U. S. 169; Mass. 245. The last case says: "The 
 
Damages to Reputation of Pkoduct to be Reckoned 717 
 
 § 422. Damage to Reputation of Product to be Reckoned as 
 Well as Loss of Profits. — American courts are not inclined to 
 limit compensation to the profits made by the infringing party, 
 but to allow those as a minimum measure of damages, and, in 
 addition, enough to cover any damage to reputation. Thus in 
 Graham v. Plate, ^^ it was held that where a trade-mark has 
 been infringed, the whole profits from sales of the infringing 
 goods are the minimum measure of damages, and damages are 
 not limited to such profits. This rule is based on the fact 
 that repayment of profits would not in all cases completely 
 indemnify the plaintiff. The damage has been said to consist of 
 .two elements: (1) loss of the plaintiff's profits; (2) injury to the 
 reputation of the product; and an award to cover one will not 
 recompense loss on account of the other. "The question of the 
 true measure of damages in cases of this sort is an interesting one. 
 The injured party is entitled to full compensation for the injury, 
 but how shall that be measured? Manifestly, the profits which 
 the infritiger had made would not in all cases be compensation 
 to the injured. The latter's loss in part inheres in the failure to 
 acquire a just and deserved gain; in the injury to the reputation of 
 his product by reason of the substitution of the spurious article. 
 The latter element is difficult, if not impossible, of accurate 
 measurement. It can only be approximately compensated by an 
 allowance in the nature of punitory damages, resting largely in 
 discretion. But as to the actual loss, is it not more reasonable to 
 say that the loss sustained is the profit which the injured party 
 would have made if the genuine goods had been suppUed, and not 
 the profit which the party inflicting the injury actually made 
 by the imlawful sale? That is to say, ought not the injured party 
 to receive the difference between the cost to him of the manufac- 
 ture of his article and the price at which he is able to dispose of 
 it in the market, together with such sum as the court in its discre- 
 tion should think the genuine article had lost in its reputation by 
 substitution of the spurious article? Should not regard be had to 
 
 general principle that one who has from the sale of the goods upon 
 
 shown that he is entitled to the ex- which the trade-mark has been 
 
 elusive use of a trade-mark may in wrongfully used, is not denied by 
 
 equity recover from an infringer the defendants, and is abundantly sus- 
 
 against whom he obtains an injunc- tained by authority." 
 
 tion the amount of the profits arising " 40 Cal. 593-1871. 
 
718 Profits and Damages 
 
 complainant's loss, rather than to defendant's profits? (citing 
 Hall V. Stern (20 Fed. 788, C. C. S. D. N. Y. ) It has been supposed 
 that the measure of damages in these cases is analogous to the 
 measure of damages allowed for infringement of a patent, but 
 Judge Sawyer suggests that the analogy will not hold." ^^ 
 
 The court will not speculate as to what proportion of the 
 profits made on infringing goods would have been made if the 
 goods had been sold under legitimate names, marks, and indicia. 
 The whole of the net profits are forfeited to complainant. It 
 would be most difficult for the complainant to give speculative 
 evidence as to what part of the defendant's profits were due to 
 the unfair conduct, which would be of sufficient value to warrant 
 the court following it. 
 
 In Saxlehner v. Eisner & Mendelson Co.," it was held that 
 it was not incimibent upon a complainant to show what part of 
 defendant's profits were due to the simulation of label, and sale of 
 the goods which were to be accounted for. The infringing party 
 "will hardly be heard to say that he would have been equally 
 successful had he used honest indicia and labels. It would be 
 casting an intolerable burden upon' the complainant in such cases 
 if, after proving the fraud, the infringement and the profits, he 
 were compelled to enter the realms of speculation and prove the 
 precise proportion of the infringer's gains attributable to his in- 
 fringement" (p. 24). 
 
 § 423. Deduction of Defendant's Expenses from Profits. — 
 There appears to be some conflict in the decisions as to what 
 expenses may properly be deducted from the gross profits upon 
 an accounting of this kind. The better opinion seems to be that 
 the expenses incident to the selling of the infringing goods, or a 
 fair and proportionate part of the general selling expenses of the 
 party, are to be deducted from gross profits, but this rule is 
 questioned by Jenkins, J., in Walter Baker & Co. v. /SZacA;."" The 
 expenses of salesmen, who sold other goods than those com- 
 plained of, should not be charged exclusively against the profits 
 from the goods complained of.^* In the computation upon an 
 
 " Walter Baker & Co. v. Slack, "" Walter Baker & Co. v. Slack 
 
 130 Fed. 514-19-20-1904 (C. C. A. (sMpro). 
 7th Cir.). ^'Saxlehner v. Eisner & Mendel- 
 
 " 138 Fed. 22-1905 (C. C. A. 2d son Co., 138 Fed. 22-1905 (C. C. A. 
 
 Cir.). 2d Cir.). 
 
Deduction of Defendant's Expenses from Profits 719 
 
 accounting for the profits made by a defendant who is found to 
 have carried on unfair competition, there should be deducted 
 from the receipts the cost of manufacture, and a proportionate 
 part of the general selling expenses of the business, in spite of the 
 fact that it does not appear that the selling expenses were in- 
 creased by the sale of the infringing goods. ^^ Where it appears 
 that the unlawful business was carried on in connection with de- 
 fendant's regular business and by the same agencies, so as to in- 
 volve substantially no additional expense, no expenses will be 
 deducted. "The unlawful venture increased the gross profits 
 without sweUing the gross expenses. Furthermore, the wrongful 
 act in question was committed knowingly, without a shadow of 
 excuse" (p. 922). »> 
 
 The case of W. R. Lynn Shoe Co. v. Auburn-Lynn Shoe Co.,^^ 
 is authority for the following rules as to computing the amount 
 due in an accounting of profits. 
 
 Sales under a trade name, condemned as involving unfair 
 competition, but not under unauthorized marks, made to per- 
 sons who knew the goods were made by defendant, or to persons 
 at a distance who knew nothing of plaintiff, are not to be assumed 
 to have been injurious to plaintiff. 
 
 A successful plaintiff is entitled to recover not only an amount 
 equivalent to defendant's profits, but also any losses resulting 
 to its own business from the unfair competition, and if losses can 
 be shown, it is not necessary that they be capable of exact com- 
 putation; if a reasonable estimate can be made, that is enough. 
 Salaries of persons who perpetrate or originate the unfair scheme 
 may not be deducted. ^^ 
 
 "The defendant corporation claimed that in determining its 
 profits made in unfair competition with the plaintiff, there should 
 be included in the cost of manufacture and sale the sums paid as 
 salaries for services to Mr. Lynn, its president and one of its 
 three directors, and to Mr. Lunn, its treasurer and another of its 
 three directors. These salaries were fixed by the board of direc- 
 tors, Lynn and Lunn being a majority thereof. The master de- 
 
 '' Cutter V. Gudebrod Bros. Co., " 100 Me. 461; 69 Atl. 569-1907. 
 190 N. Y. 252-1907; 83 N. E. 16. ^^ W. R. Lynn Shoe Co. v. Auburn- 
 
 2» Societe Anonyme v. Western Distil- Lynn Shoe Co., 103 Me. 334. 
 ling Co., 46 Fed. 921-1891 (C. C. E. 
 D. Mo.). 
 
720 Profits and Damages 
 
 clined to allow these salaries in reduction of profits, and the de- 
 fendant excepted. 
 
 "If the bill and the claims made under the bill were against 
 Lynn and Lunn as a firm or partnership, it is clear that the value 
 of their time, talent and services expended in wronging the plain- 
 tiff by unfair competition should not be deducted from the 
 plaintiff's damages. To do so would compel the plaintiff to pay 
 them for wronging it.^' But the counsel for the defendant corpo- 
 ration claims that Lynn and Lunn were merely its servants, that 
 the sums paid them for carrying on the business must have been 
 paid to other servants if not to them, and hence were a neces- 
 sary and legitimate part of the cost. Rubber Co. v. Goodyear,^^" 
 is cited, where the master allowed as part of the cost of the 
 infringing goods 'the usual salaries of managing officers.' If 
 Lynn and Lunn were nothing more than servants, or even man- 
 aging officers of the corporation acting under the directors, and 
 had no other connection with the wrongs done the plaintiff, there 
 might be some force in the argument. But the record before us 
 discloses that in fact the corporation was practically the servant 
 of Lynn and Lunn, not they its servants. They organized it, 
 directed it, set it and kept it in unfair competition with the plain- 
 tiff. The wrong to the plaintiff was conceived, brought forth and 
 nurtured by them. Whether they wrought the wrong as in- 
 dividuals, or as a partnership, or as a corporation, they were the 
 real wrongdoers. The court should penetrate through the form 
 to the substance. The exception must be overruled. * * *" 
 
 § 424. When an Accoixnt Will Not be Ordered. — A decree for 
 damages or profits does not necessarily follow an injunction. No 
 accounting will be ordered when there is no theory on which a 
 substantial recovery based on a rational rule of damages can 
 be had, or where an attempt to separate the defendant's ille- 
 gitimate profits from his legitimate profits would be based upon 
 conjecture and speculation. ^^ Where damages were only a few 
 dollars, reference to a master to fix amount is properly refused.*^ 
 Interest is properly added to the amount ascertained upon an 
 
 2' Callaghan v. Myers, 128 U. S. 617. " Giragosian v. Chutjian, 194 Mass. 
 
 "»» 9 Wall. 788. 504-1907; 80 N. E. 647; Barnett v. 
 
 " Ludington Novelty Co. v. Leon- Leuchars, 34 L. T. (Ch.) N. S. 495- 
 
 ard, 127 Fed. 155-1903 (C. C. A. 2d 1865. 
 Cir.). 
 
When an Account Will Not be Ordered 721 
 
 accounting for profits, from the time of the commencement of the 
 action. ^^ 
 
 Where suit is brought under the provisions of the Trade-Mark 
 Act, an accounting of profits is refused where the complainant has 
 not complied with the requirements of § 28 of that law as to 
 marking the goods "Registered in U. S. Patent OflBce" or "Reg. 
 U. S. Pat. Off." 27 
 
 It sometimes appears that the amount of profits realized by 
 the defendant is insignificant, ^^ or entirely disproportionate to 
 the expense of taking an accounting. In Ludington v. Leonard,^^" 
 it is said: "We see no reason to differ with the Circuit Court 
 in its refusal to order an accounting. If we could discover any 
 theory upon which a substantial recovery could be had, we would 
 not hesitate to direct a reference, but it is plain that such 
 a proceeding will prove abortive after subjecting both parties 
 to large additional expense and the defendants to unnecessary 
 annoyance. The master would be involved in an inextricable 
 tangle from which it will be impossible to emerge with a sub- 
 stantial recovery based upon a rational rule of damages. * * * 
 An attempt to segregate the profits, if any, resulting from the 
 illegitimate use of the word, would require an excursion into the 
 realms of conjecture and speculation, without hope of any tangi- 
 ble result." 
 
 This case has created a great deal of discussion, and has been 
 cited m support of the view that if great difficulty appears to exist 
 in ascertaining the infringer's profits, no accounting will be 
 ordered.® 
 
 M CtiUer V. Gudebrod Bros. Co., 190 knap Motirr Co., 105 Fed. 63; Little 
 
 N. Y. 25^-1907; 83 N. E. 16; McLean v. Kellam, 100 Fed. 353; LieUg's Ex- 
 
 V. Fleming, 96 U. S. 245; 24 L. ed. tract v. Walker, 115 Fed. 822." See 
 
 828. also Notaseme Hosiery Co. v. Straus, 
 
 "Rossmanny.Garnier, 211 Fed.401. 209 Fed. 495-1916; Saxkhner v. 
 
 2' Regis v. Jaynes, 191 Mass. 245; Eisner, 88 Fed. 61-1898. 
 77 N. E. 774, states: "If it appears '"^ 127 Fed. 155; 62 C. C. A. 269. 
 that the amount of damages to the '« Kessler & Co. v. Goldstrom, 177 
 
 plaintiff, or of profits realized' by the Fed. 392; Hennessey v. Wine Growers' 
 
 defendant, is only insignificant, or that Assn., 212 Fed. 308. See Merriam v. 
 
 no actual damage has been sustained, OgUvie, 170 Fed. 167; Reed v. Frew, 
 
 the court may confine its relief to an 158 Fed. 552; Keystone Type Foundry 
 
 injunction against any further in- v. Portland Pvb. Co., 180 Fed. 
 
 fringement. SaxMnerw.Siegel-Cooper 301. 
 Co., 179 U. S. 42; Bradford v. Bel- 
 
722 Profits and Damages 
 
 This is not always the rule apphed. It is sometimes held that 
 the plaintiff is entitled to his day in court, to a chance to prove 
 his damages and profits if he can. In Florence Mfg. Co. v. 
 Dowd,^ it was said: "This is not a case where this court or 
 the Circuit Court can say in advance that the complainant 
 will be unable to establish the amount of the gains and profits 
 which the defendants have made by reason of the unfair methods 
 employed by them in dressing up their brushes to resemble 
 the complainant's brushes. * * * That the complainant's 
 task seems difficult, and the result an inadequate return for 
 time and labor expended, is not now important. The com- 
 plainant is entitled to its hearing before the master; if it fails in 
 its proof the Circuit Court will deal with the situation when it 
 enters the final decree." Merriam v. Saalfield,^^ quoting Florence 
 Co. V. Dowd, states: "the usual practice contemplates an ac- 
 counting, and (that) such practice should be followed and an ac- 
 counting ordered, unless it is made clearly and certainly to appear 
 that neither upon the existing record, nor upon any record which 
 complainant can make before the master, could there be any 
 substantial recovery. ' ' It dismisses Ludington v. Leonard with the 
 remark, "We are satisfied that such case presented a very different 
 problem of accounting from that now involved." If no actual 
 damage has been sustained, the court will confine its reUef to an 
 injunction against any further infringement. An accounting will 
 not be ordered where the infringing party acted innocently and in 
 ignorance of the plaintiff's rights,'" provided such party stops 
 his'illegal practices after he discovers the truth. 
 
 Where there has been a previous decision between the parties 
 which justified the defendant in beheving that, with some changes 
 in its mark, it would not be chargeable with unfair competition, 
 an accoimting will not be ordered in addition to an injunction." 
 
 29" 189 Fed. 44 (C. G. A. 2d trade-name, has been merely acciden- 
 
 Cir.). tal or without any actual wrongful 
 
 ^* 198 Fed. 369. attempt to defraud a plaintiff, or to 
 
 '0 Regis v. Jaynes, 191 Mass. 245; deceive the public." See Lynn Shoe 
 
 77 N. E. 774, says: "There is some Co. v. Auburn-Lynn Shoe Co., 100 Me. 
 
 conflict in the decisions; but we think 461 ; 62 Atl. 499 (4 L. R. A. N. S. 460) ; 
 
 that the weight of modern authority is Fairbank Co. v. Windsirr, 124 Fed. 
 
 in favor of the rule that an account of 200; Notaseme Hosiery Co. v. Straus, 
 
 profits will not be taken where the 209 Fed. 495. 
 
 wrongful use of a trade-mark, or a " Fairbank Co. v. Windsor, 124 
 
Profits Given to Plaintiff 723 
 
 But a defendant will not be freed from an accounting, where he 
 knows, or must be presumed to know, the probable effect of his 
 act on the rights of another. 
 
 In Regis v. Jaynes,^^"' it was said: "The account is ordered to 
 be taken only since the filing of the original bill, upon the charge 
 made in the supplemental bill. * * * Jt cannot be said that 
 this conduct on their part was in ignorance of the plaintiff's 
 rights; they were at least put upon inquiry, and must be charged 
 with knowledge of what they would have learned upon reason- 
 able inquiry." 
 
 § 425. Profits Given to Plaintiff may be Limited to Those Re- 
 sulting from Defendant's Fraud. — Profits may be refused where 
 the infringement or unfair acts did not materially influence sales. 
 In Rushmore v. Badger Brass Mfg. Co.,^^'' the defendant's lamps 
 resembled complainant's in general shape and appearance. The 
 court there said: 
 
 "The defendant asks that it be relieved from an accounting, or, 
 at least, that the accounting be limited to the damages actually 
 sustained and proved by the complainant. We are inclined to 
 think that the latter request is reasonable and should be granted. 
 
 " * * * We are also convinced that the great majority of the 
 defendant's lamps were sold on their merits and on the established 
 reputation of the defendants, without any reference to the com- 
 plainant's lamps. To award the entire profits made on the sales 
 of defendant's lamps without proof of actual fraud on its part 
 would be inequitable. An accounting covering the entire field of 
 the defendant's sales would involve both parties in a long and 
 expensive examination unwarranted by the probable results. 
 It seems to us unfair that the complainant should recover profits 
 on the sale of lamps by the defendant to persons who never heard 
 of Rushmore, and were well aware that the lamps they bought 
 were made by the defendant, and who bought them because they 
 were so made. A decree for profits and damages does not neces- 
 sarily follow a decree for an injunction. * * * We think the 
 accounting should be limited to sales where it is shown by direct 
 or presumptive evidence that the complainant would have sold 
 the lamps but for the sale by the defendant.''^!" 
 
 Fed. 200; Dr. A. Reed Cushion Shoe 'i'' 198 Fed. 379. See note 38, in/ra. 
 
 Co. V. Frew, 158 Fed. 552. "" In Straus v. Notaseme Hosiery 
 
 31" 191 Mass. 245. Co., .240 U. S. 179, there was found to 
 
724 Profits and Damages 
 
 § 426. What Profits may be Recovered. — The law on this 
 point is by no means settled. Some cases seem to go so far as to 
 say that a knowing infringer is held to account for all profits 
 accruing from sales of goods bearing the infringer's trade-mark, 
 regardless of whether such trade-mark induced the sale.'^ The 
 latter case says: "The general rule undoubtedly is that, on such 
 reference, in a case of unfair competition, it is the duty of the 
 master to fairly take an account of profits reaUzed by the defend- 
 ant upon all articles or goods manufactured or sold by him under 
 the conditions of unfair competition, as estabhshed by the decree 
 of the court. Where the unfair competition consists in the use of a 
 trade-mark in fraud of the complainant's rights, affixed to or 
 covering articles or packages sold by the defendant, complainant 
 is entitled, by way of damages and compensation for the wrong 
 inflicted upon him, to the whole profits realized by the defendant 
 from the sale of articles imder color of the infringing trade-mark. 
 As it is generally impossible to discriminate between sales made 
 by reason of the deception worked by the infringing trade-mark, 
 and of those not so made, courts have required that the whole 
 profits should go to the complainant. The infringer in such cases 
 has no groxmd to complain that he is thus suffering the conse- 
 quences of his own wrong." 
 
 The English rule is the same.^^ In Edelsten v. Edelsten it is 
 said: "At law the proper remedy is by an action on the case 
 for deceit, and proof of fraud on the part of the defendant is 
 of the essence of the action; but this court will act on the principle 
 
 be unfair competition in the use of a erly were enjoined from further use of 
 
 label. The trade name of the goods, the mark in controversy, but, so far 
 
 however, was distinctive and there as the decree charged them with 
 
 were other indications that purchasers profits, it is reversed." 
 
 had been led to select defendant's So in Rvbber ds C. H. T. Co. v. F. W. 
 
 goods by other considerations than by Devoe, etc., Co., 233 Fed. 150, the unfair 
 
 the use of a label resembUng plaintiff's, competition was not found to be " wil- 
 
 The Court said: "Taking all these ful and fraudulent" so as to justify 
 
 considerations into account, coupled the imposition of profits, though dam- 
 
 with the absence of evidence that any ages were allowed, 
 
 deceit or substitution was accom- "'Rowley Co. v. Bowhy, 193 Fed. 
 
 plished in fact, we find it impossible to 390 (C. C. A.) 
 
 beUeve that any considerable part of " See Edelsten v. Edelsten, 1 De 
 
 the petitioner's business was due to Gex, J. & S. 185, and Lever v. 
 
 their goods being supposed to be the Goodwin (1887), 4 Rep. Pat. Cas. 
 
 plaintiff's hose. The petitioners prop- 492. 
 
What Profits may be Recovered 725 
 
 of protecting property alone, and it is not necessary for the 
 injunction to prove fraud in the defendant, or that the credit of 
 the plaintiff is injured by the sale of an inferior article. The 
 injury done to the plaintiff in his trade by loss of custom is suffi- 
 cient to support his title to relief; neither will the plaintiff be de- 
 prived of remedy in equity, even if it be shown by the defendant 
 that all the persons who bought from him goods bearing the 
 plaintiff's trade-mark are well aware that they were not of the 
 plaintiff's manufacture. If the goods were so supplied by the de- 
 fendant for the purpose of being sold again in the market, the 
 injury to the plaintiff is sufficient." ^^ 
 
 Whether or not the plaintiff would have made the profits, had 
 the defendant's acts not been committed, has nothing to do with 
 the rights of the plaintiff. 
 
 In Atlantic Milling Co. v. Rowland, ^'^'^ this rule is stated: "It is 
 argued that the evidence does not show that the orator would have 
 made this profit if the defendant had not. This might be true, 
 and not affect the rights of the parties. If the defendants made 
 profits by their invasion of the orator's rights, the orator is entitled 
 to them whether the same profits would have been made by the 
 orator or not, and not to any more if they would, for the same 
 profits could not be made by both." ^^ 
 
 A recent case qualifies this doctrine by holding that the sale 
 of the article bearing an infringer's trade-mark simply creates a 
 presumption that the sale thereof was effectuated by this false 
 marking, or unfair competition, which may be rebutted by the 
 defendant. 
 
 "Not only does this result follow from adopting the analogy of 
 the patent law, 'but we take this to be the rule also of the trade- 
 mark cases; and when some of them declare that the defendant 
 must respond for his profits on every article which bore the trade- 
 mark stamp upon it, they intend to go no further than to say that 
 
 3« Edektm v. Edekten, 1 De Gex J. 514 (65 C. C. A. 138); Atlantic Milling 
 
 & S., Ch. 185. To the same effect are Co. v. Rowland, 27 Fed. 24; Saxlehner 
 
 Coats V. Holbrook, 2 Sandf. Ch. v. Eisner, 138 Fed. 22; Fairbank Co. v. 
 
 586; Spottiswoode v. Clark, 10 London Windsor, 118 Fed. 96; Graham v. Plate, 
 
 Jurist, 1043; 2 Sandf. Ch. R. 628; 40 Cal. 593 (6 Am. Rep. 639). 
 
 Reading Stove Works v. Howes Co., 201 '*" 27 Fed. 24. 
 
 Mass. 437; 87 N. E. 751; Regis v. '^ Quoted in Fairbank v. Windsor, 
 
 Jaynes, 191 Mass. 245; 77 N. E. 774; 118 Fed. 96; Regis v. Jaynes, 191 Mass. 
 
 Walter Baker & Co. v. Slack, 130 Fed. 245; 77 N. E. 774. 
 
726 
 
 Profits and Damages 
 
 such marking raises a presumption that the sale thereof was 
 effectuated by this false markiag, or unfair competition. They 
 are not inconsistent with the disputable character of this pre- 
 sumption. In many cases, probably in the typical case, it would 
 be practically impossible to dispute the presumption, because, 
 even if it appeared that the first purchaser, like the wholesaler or 
 dealer, knew what he was buying, this would not of itself affect 
 the presumption of a fraud upon the ultimate consumer or user; 
 but, even in the case of a technical trade-mark, if every pur- 
 chaser, immediate and ultimate, knew that he was getting the 
 counterfeit and not the genuine, and bought.it because he pre- 
 ferred the counterfeit to the genuine, there would be no liability 
 for profits." '" 
 
 The weight of authority undoubtedly is that where a fraudulent 
 intent is shown, either in trade-mark or unfair competition cases, 
 and it is impossible to determine what portion of the sales were 
 due to the infringing trade-mark or unfair competition, the plain- 
 tiff should recover the defendant's entire profits on each sale of 
 goods bearing such trade-mark." 
 
 3« Merriam v. Saalfield, 198 Fed. 369. 
 
 " Wolf Bros. & Co. V. HamiUon- 
 Brown Shoe Co., 206 Fed. 611; Mer- 
 riam V. Saxilfield, 198 Fed. 369. This 
 rule is stated in Wolf Bros. & Co. v. 
 Hamilton, etc. (above) to be in analogy 
 to the patent cases, which are re- 
 viewed in Westinghouse v. Wagner, 225 
 U. S. 604. That last case holds at 
 page 618, "Having, by books and 
 other data, proved to the satisfac- 
 tion of the Master the existence 
 of profits, the plaintiff had carried 
 the burden imposed by law, and 
 established every element necessary 
 to entitle it to a decree, except one. 
 As to that, the act of the defend- 
 ant had made it not merely difficult, 
 but impossible to carry the burden of 
 apportionment. But plaintiff offered 
 evidence tending to establish a legal 
 equivalent. * * * The plaintiff 
 had now presented proof to demon- 
 strate its right to the whole of the 
 
 fund because of the fact that the de- 
 fendant had inextricably commingled 
 and confused the parts ' composing 
 it. * * * One party or the other 
 must suffer. The inseparable profit 
 must be given to the patentee or 
 infringer. The loss had to fall on the 
 innocent or guilty. In such an alter- 
 native the law places the loss on the 
 wrongdoer." Quoting Callaghan v. 
 Myers, 128 U. S. 617. In the case 
 of Saxlehner v. Eisner & Mendel- 
 sohn Co., 138 Fed. 22, which was 
 the final link in a long chain of cases 
 between these two parties, the court 
 said: "The evident intent and pur- 
 pose of the defendant was to poach 
 on the reputation established by the 
 Hunyadi Janos water. It started out 
 to get a part of the complainant's 
 profits, and it succeeded, but we are 
 familiar with no principle of law which 
 will permit it to keep these prof- 
 its. * * * It would be casting an 
 
What Pbofits may be Recoveked 727 
 
 Where the profits to the infringing party are largely due to the 
 merits of the article sold, and not to the merit of the original 
 article or trade-mark, and the evidence shows that purchasers 
 knew that the defendant was the maker and had never heard of 
 plaintiffs, the complainant can only recover the profits from such 
 sales as he can show, on direct and presumptive evidence, he 
 would have made but for the defendant's unfair competition.'^ 
 
 The plaintiff is not required to prove the damage which he 
 sustained with mathematical accuracy. It is enough if he fur- 
 nishes evidence upon which the tribunal can make a reasonably 
 probable estimate through the exercise of inteUigent judgment. 
 
 "It is not necessary, however, for the plaintiff in such case to 
 prove the resulting damages in separation from other damages 
 with mathematical certainty or anything like it. He is not to be 
 held to precision, to the exact pound, neither more nor less, nor 
 even to show a distinct separation in time and circmnstance. It is 
 enough if he furnishes evidence upon which the tribunal can make 
 a reasonably probable estimate through the exercise of intelligent 
 judgment. Mere difficulty in making such an estimate does not 
 authorize the tribunal to turn the plaintiff away without any 
 damages. Of course, in a given case the estimate may be too 
 large or too small, as it may be and undoubtedly often is in that 
 large class of cases in which damages cannot be calculated but 
 
 intolerable burden on the complain- tirely apart from the question of actual 
 
 ant in such cases, if, after proving damage, the owner of a trade-mark is 
 
 the fraud, the infringement and the entitled to recover from an infringer the 
 
 profits, he were compelled to enter profits realized by the latter, from sales 
 
 the realms of speculation and prove the under the simulated trade-mark {Gra- 
 
 precise proportion of the infringer's ham v. Plate, 40 Calif. 593; 6 Am. Rep. 
 
 gains attributable to his infringe- 639). The same rule applies to cases 
 
 ment." of unfair competition in which, while 
 
 Regis v. Jaynes et d., 191 Mass. 245; there is no violation of an exclusive 
 
 Forster Mfg. Co. v. Cviter-Tower Co., right in a technical trade-mark, the 
 
 215 Mass. 136; 101 N. E. 1083; Nota- defendant has used devices calculated 
 
 seme Hosiery Co. v. Straus, 209 Fed. to pass off his goods as those of the 
 
 495; Lynn Shoe Co. v. Aubwm-Lynn plaintiff." 
 
 Shoe Co., 100 Me. 461 ; Worcester Brew- =« Rushmore v. Badger, 198 Fed. 379 
 
 ingCorp.v.Rueter,157Fed.2l7; Singer (C. C. A. 2d Cir.); Ford v. Foster, 
 
 Mfg. Co. V. June Mfg. Co., 163 U. S. L. R. 7 Ch. App. 611-1872. See 
 
 169; Modesto Creamery v. Stanislaus also Notaseme Co. v. Straus, 209 Fed. 
 
 Creamery Co., 168 Calif. 289-1914; 142 495. 
 Pac. 845. This last case states: "En- 
 
728 
 
 Pbofits and Damages 
 
 necessarily have to be estimated. Certainly, precision is un- 
 doubtedly very desirable in the assessment of damages in such 
 cases, but it is practically unattainable, and there is less danger of 
 injustice in awarding judgment upon reasonably inteUigent esti- 
 mates than in refusing it wholly." ^' And the fact that making of 
 such an estimate is very difficult is no ground for refusal to allow 
 damages.'"' 
 
 What is above stated as the prevailing rule has now received 
 the approval of the U. S. Supreme Court.*"" 
 
 "^ W. B. Lynn Shoe Co. v. Avbum- 
 Lynn Shoe Co., 103 Maine, 334; 69 
 Atl. 569. See Allison v. Chandler, 11 
 Mich. 542, at p. 554; Hennessey v. Wil- 
 merding-Loewe Co., 103 Fed. 90. 
 
 *" W. R. Lynn Shoe Co. v. Avbum- 
 Lynn Shoe Co. (supra). 
 
 *»" Hamilton-Brown Shoe Co. v. Wolf 
 Bros. & Co., 240 U. S. 251, in which 
 defendant contended that in analogy 
 to a rule adopted in a line of patent 
 cases, "the profits recoverable should 
 be Umited to such amount as may be 
 shown by direct and positive evidence 
 to be the increment to defendant's in- 
 come by reason of the infringement, 
 and that the burden of proof is upon 
 complainant to show what part of de- 
 fendant's profits were attributable to 
 the use of the infringing mark." 
 
 The Court, however, said, by 
 Pitney, J.: "The rule invoked is that 
 which, as pointed out in the last two 
 of these cases, is applicable where 
 plaintiff's patent relates to a part only 
 of a machine or combination or proc- 
 ess, or to particular improvements in 
 a machine or other device. In such 
 case, where the invention is used in 
 combination with other elements of 
 value not covered by the patent, so 
 that plaintiff's patent creates only a 
 part of the profits, he is entitled to 
 recover only that part, and must give 
 evidence tending to apportion the 
 profits between the patented and un- 
 
 patented features. But, as pointed 
 out in the Westinghouse Case (p. 618), 
 there is a recognized exception where 
 the plaintiff carries the burden of proof 
 to. the extent of showing the entire 
 profits, but is unable to apportion 
 them, either because of the action of 
 the wrongdoer in confusing his own 
 gains with those which belong to 
 plaintiff, or because of the inherent 
 impossibility of making an approxi- 
 mate apportionment. There, 'on 
 established principles of equity, and 
 on the plainest principles of justice, 
 the guilty trustee cannot take ad- 
 vantage of his own wrong.' 
 
 " Assuming the asserted analogy to 
 patent cases to exist, a sufficient rea- 
 son for not requiring complainant in 
 the present case to make an apportion- 
 ment between the profits attributable 
 to defendant's use of the offending 
 mark and those attributable to the in- 
 trinsic merit of defendant's shoes is 
 that such an apportionment is in- 
 herently impossible. Certainly, no 
 formula is suggested by which it could 
 be accomplished. The result of ac- 
 ceding to defendant's contention, 
 therefore, would be to deny all com- 
 pensation to complainant. And it is 
 to be remembered that defendant does 
 not stand as an innocent infringer. 
 Not only do the findings of the court 
 of appeals, supported by abundant 
 evidence, show that the imitation of 
 
Determining What Are and Are Not Profits 729 
 
 § 427. Rules for Determining What Are and Are Not Profits. — 
 When an accounting has been decreed it is often a difficult mat- 
 ter to determine just what portion of the sums received by the 
 defendant for its goods, are profits. This is particularly true 
 where the manufacture and sale of the infringing article, is only a 
 part of the defendant's business. The rule of the United States 
 Supreme Court, in patent cases, is that a ratable proportion of the 
 general expense in carrying on the business should be deducted 
 from the profits made by the use of the patented device. See 
 Tremolo Patent,*^'' {Tremaine v. Hitchcock & Co.,) where 
 it is said: "We cannot see why the general expenses incurred 
 by the defendants in carrying on their business, such expenses 
 as store rent, clerk hire, fuel, gas, porterage, etc., do not 
 concern one part of their business as much as another. It may 
 be said that the selling a tremolo attachment did not add to 
 their expenses, and therefore, that no part of those expenses should 
 be deducted from the price obtained for such an attachment. 
 This is, however, but a partial view. The store rent, the clerk hire, 
 etc., may, it is true, have been the same if that single attachment 
 had never been bought or sold, so it is true that the general ex- 
 penses of their business would have been the same, if instead of 
 buying and sellipg one hundred organs, they had bought and sold 
 only ninety-nine. But will it be contended that because buying and 
 selling an additional organ involved no increase of the general ex- 
 penses, the price obtained for that organ above the price paid was 
 all profit? Can any part of the whole number sold be singled out 
 as justly chargeable with all the expenses of the business? As- 
 suredly, no." This rule has been apphed to trade-mark and un- 
 fair competition cases by some courts.*^ 
 
 Several well-considered cases have attempted to substitute 
 another rule: that the defendant must prove the amount of any 
 expense which would not have been incurred, but for the manu- 
 facture and sale of the infringing article, and in default of such 
 
 complainant's mark was fraudulent, *»' 23 Wall. 518. 
 
 but the profits included in the decree " Walter Baker v. Slack, 130 Fed. 
 
 are confined to such as accrued to de- 514; Cutter v. Gudebrod Bros. Co., 190 
 
 fendant through its persistence in the N. Y. 252; C. A. Briggs Co. v. Nat'l 
 
 unlawful simulation in the face of the Wafer Co., 215 Mass., 100; 102 N. E. 
 
 very plain notice of complainant's 87. 
 
 rights that is contained in its bill." 
 
730 
 
 Pkofits and Damages 
 
 proof the gross profits from all sales of such article will be allowed 
 the plaintiff /^ 
 
 But a late case dealing with the question states that the rule of 
 the patent law controls, and is to be apphed "where special cir- 
 cumstances do not make its application unjust." ** 
 
 *2 In Sodeti Anonyme v. Western 
 Distilling Co., 46 Fed. 921, Hazel, J.: 
 " When an unlawful business is carried 
 on in connection with the defendant's 
 regular business, and the same agen- 
 cies are employed in doing that which 
 is lawful, and that which is unlawful, 
 no rule of law of which I am aware re- 
 quires any deduction for expenses in 
 estimating the profits of the unlawful 
 business. In this case the defendant 
 was a distilling company. It has a 
 place of business, a hcense for doing 
 business, travehng salesman, etc. 
 The proof does not convince me that 
 any additional expenses were incurred 
 by the defendant in the manufacture 
 and sale of Benedictine, other than 
 such as the master has allowed. The 
 manufacture of Benedictine was car- 
 ried on in connection with its ordinary 
 business by the usual number of em- 
 ployees. The unlawful venture in- 
 creased the gross profits without 
 sweUing the gross expenses." Quoted 
 with approval in N. K. Fairbank v. 
 Windsor, 118 Fed. 96. _ See above, 
 Saxlehner v. Eisner & Mendelsohn Co., 
 138 Fed. 22, and Regis v. Jaynes, 191 
 Mass. 245. In that case it was said: 
 "The defendants in the case at bar 
 appear to have been carrying on a 
 large business, and they did not offer 
 to show that their general expenses 
 have been at all increased by their 
 taking up the sale of ' RexaU ' goods. 
 * * * To allow them to charge 
 upon the gross profits from these goods 
 any portion of the general expenses 
 ^hich were not increased thereby 
 
 would be to allow them to derive a di- 
 rect advantage from their wrong. 
 They were not precluded from proving 
 and having allowed to them the 
 amount of any expenses which were 
 properly chargeable to these goods.'' 
 Followed by Nelson v. Winchell, 203 
 Mass. 75; 89 N. E. 180; 23 L. R. A. 
 (N. S.) 115D. 
 
 « C. A. Briggs v. Nat'l Wafer Co., 
 215 Mass. 100; 102 N. E. 87, where it 
 is said: "It appears from the master's 
 report that the defendant has made 
 substantial profits from its sale of 
 goods bearing the plaintiff's label or an 
 imitation thereof, unless a deduction 
 is made of a part of its general ex- 
 penses to be determined by appor- 
 tioning them in the ratio which its 
 sales of Boston Wafers bear to its total 
 sales. If such a deduction is made, the 
 defendant has obtained no profits from 
 the sales in question. 
 
 "It has been held by the Supreme 
 Court of the United States that such a 
 deduction should be made in ascer- 
 taining the profits realized by the in- 
 fringer of a patent. The Tremolo 
 Patent, 23 Wall. 518, 23 L. ed. 97. 
 The same rule has been followed since 
 that decision in trade-mark cases and 
 cases of unfair competition, some of 
 which are collected in Regis v. Jaynes 
 & Co., 191 Mass. 245; 77 N. E. 774. 
 In the last named oase this court de- 
 chned to follow the rule of the Tremolo 
 Patent, vM supra, deeming it inappli- 
 cable to the facts before the court. In 
 the Regis case, the defendants were 
 carrying on a large business, of which 
 
Expenses Deducted in Ascertaining Profits 731 
 
 When the entire business of the defendant is the manufac- 
 ture and sale of the article which invades the plaintiff's rights, 
 the former may deduct from the gross profits its legitimate 
 
 their dealings in goods bearing the 
 plaintiff's trade-mark constituted only 
 a small part, and the defendant's 
 general expenses did not appear to 
 have been at all increased by those 
 dealings. Here the defendant's deal- 
 ings in Boston Wafers have been a sub- 
 stantial and integral part of its entire 
 wafer and lozenge business, averaging 
 about ten per cent, thereof; and its 
 general expenses were incurred for 
 this department and its increase and 
 extension just as for any part of its 
 business. The defendant has used 
 considerable and cumulative effort to 
 push and increase these sales, very 
 probably more than it has applied to 
 other parts of its business. While 
 there is no direct evidence on the sub- 
 ject, it seems manifest to us, looking at 
 the master's report, that the defend- 
 ant's general expenses have been at 
 least proportionately increased by this 
 department. The rule adopted in the 
 Tremolo Patent {itbi supra) is the 
 general rule, to be applied where spe- 
 cial circumstances do not make its 
 appUcation unjust." See also Baker 
 V. Slack, 130 Fed. 514 (C. C. A. 7th 
 Cir.)-1904; Regis v. Jaynes & Co., 191 
 Mass. 245-1906. After the decision 
 of this case in 185 Mass. 458, the de- 
 fendant was enjoined from using the 
 word Rex or Rexall in connection with 
 the sale of a dyspepsia cure, and it was 
 decreed that upon filing a supple- 
 mental bill the case should go to a 
 master for an accounting of profits, 
 This supplemental bill was filed, and 
 alleged that since the filing of the 
 original bill the defendants have sold 
 
 many boxes of tablets under the name 
 "Rexall,'' and as "Rexall Dyspepsia 
 Tablets," and prays for an account- 
 ing of damages and profits. Opinion 
 by Sheldon, J., who held at p. 251: (a) 
 "It seems to us that where, as here, a 
 small article is sold with unlawful 
 imitation of a trade-mark it is rather 
 to be treated as an undivided whole, 
 and that as against the wrongdoer it 
 must be taken to be a sale brought 
 about by means of the unlawful trade- 
 mark. The decisions cited in the 
 former part of this opinion go to the 
 full length here stated. If any analogy 
 from patent cases is to be adopted we 
 ought rather to follow the rule that 
 where the infringing device derives 
 its entire commercial value from the 
 patented feature or improvement 
 then the patentee is entitled to the 
 entire profits realized from its sale." 
 (6) p. 252: The defendants in this case 
 appear to have been carrying on a 
 large business, and they did not offer 
 to show that their general expenses 
 have been at all increased by their 
 taking up the sale of Rexall goods. 
 Since the filing of the plaintiff's 
 bill * * * their sale of these 
 goods has been unlawful. To allow 
 them to charge upon the gross profits 
 from these goods any portion of the 
 general expenses which will not in- 
 crease thereby would be to enable 
 them to derive a direct advantage 
 from their wrong. * * * Under 
 the circumstances here existing, we do 
 not think that the rule in the case of 
 the Tremolo Patent, supra, should 
 apply." 
 
732 
 
 Profits and Damages 
 
 expenses/^ the wages or salaries of its employees,^^ and losses 
 actually sustained because of bad debts, or otherwise.^* 
 
 § 428. When Laches Will Bar an Accounting. — Cases fre- 
 quently arise where a court of equity will grant an injunction 
 against future infringement of trade-mark or unfair competition, 
 but refuse to allow an accounting or a decree for damages, be- 
 cause of laches on the part of the complainant in seeking redress.*^ 
 
 The length of time which will constitute such laches as to forfeit 
 
 " In Walter Baker & Co. v. Slack, 
 130 Fed. 514. "It does not seem quite 
 just that the wrongdoer should be 
 permitted to escape without pecuniary- 
 loss to himself, and yet we must re- 
 member that here the appellant has 
 chosen to prove, as the basis of recov- 
 ery, merely the profits which the 
 wrongdoer has made, and in estimat- 
 ing those profits we feel concluded by 
 the ruling of the ultimate tribunal 
 (The Tremolo Patent, 23 Wall. 518, 
 23 L. ed. 97) that, to ascertain the net 
 profits accruing to the wrongdoer, as 
 in ascertaining profits in any other 
 case, the expense of making the sale 
 should be deducted from the gross 
 proceeds of the sale upon the same 
 principle that the cost of the spurious 
 article is deducted from the gross 
 receipts of its sale." Nelson v. J. 
 M. Winchell & Co. 203 Mass. 75; 89 
 N. E. 180. (Holding that a cost sheet 
 of defendants may be used by a mas- 
 ter, as evidence of the cost of shoes 
 manufactured by them, in absence of 
 explicit evidence to the contrary.) 
 Regis v. Jaynes, 191 Mass. 245; 77 
 N. E. 774; W. R. Lynn Shoe Co. v. 
 Auburn-Lynn Shoe Co., 103 Maine, 
 334; 69 Atl. 569. 
 
 *^ Coca' Cola Co. v. Nashville Syrup 
 Co., 215 Fed. 527, in which the salary 
 of the general manager and organizer 
 of a corporation was allowed as a dis- 
 bursement, the general manager being 
 
 a minority stockholder, and no claim 
 being made by the complainant that 
 the corporation was a mere sham or 
 subterfuge. Rubber Co. v. Goodyear, 9 
 WaU. (U. S.) 788; 19 L. ed. 566; W. 
 R. Lynn Shoe Co. v. Auburn Lynn 
 Shoe Co., 103 Maine 334; 69 Atl. 
 569; Regis v. Jaynes, 191 Mass. 245. 
 
 *" W. R. Lynn Shoe Co. v. Auburn 
 Lynn Shoe Co., 103 Maine, 334; 69 
 Atl. 569; Edelsten v. Edelsten, 1 De Gex 
 J. & S. 185, 10 L. T. (N. S.) 780; Nelson 
 V. Winchell & Co., 203 Mass. 75; 89 
 N. E. 180; 23 L. R. A. N. S. 1150. 
 
 " Menendez v. HoU, 128 U. S. 514; 
 McLean v. Fleming, 96 U. S. 245; 
 Edelsten v. Edelsten, 1 De Gex, J. & S. 
 185; Millington v. Fox, .3 My. & Cr. 
 338; Harrison v. Taylor, 11 Jur. N. S. 
 408; Cahn v. Gottschalk, 14 Daly 
 (N. Y.), 542; Fairbanks v. Luckel, 106 
 Fed. 498; Jenkins Bros. v. Kelly & 
 Jones Co., 212 Fed. 328; S. Howes 
 Co. v. Howes Grain Cleaner Co., 
 24 Misc. (N. Y.) 83-1898; 52 N. Y. 
 Supp. 468. 
 
 McLean v. Fleming (supra) states, 
 p. 257: "Cases frequently arise where a 
 court of equity will refuse the prayer 
 of the complainant for an account of 
 gains and profits, on the ground of 
 delay in asserting his rights, even 
 when the facts proved render it 
 proper to grant an injunction to pre- 
 vent future infringement." 
 
Notice of Infringement 
 
 733 
 
 an accounting, differs according to the circumstances of each case. 
 Much depends on the extent of the knowledge of the complainant, 
 and whether the intent of the infringer is fraudulent or not, and 
 the courts decide each case according to the facts. ^^ 
 
 An unreasonable delay constitutes passive acquiescence, which, 
 although it gives the defendant no new right, does protect him 
 from the loss of his profits during the time of the complainant's 
 procrastination in seeking redress.*^ 
 
 § 429, Notice of Infringement. — The complainant is entitled 
 to a reasonable time after first learning of the infringement 
 
 « Menendez v. Holt, 128 U. S. 514; 
 9 Sup. Ct. 143; 32 L. ed. 526; Fair- 
 bank V. Luckel, 106 Fed. 498; McLean 
 V. Fleming, 96 U. S. 245. See also 
 leading English case, Harrison v. 
 Taylor, 11 Jur. N. S. 408, where a delay 
 of nine months was held to bar a right 
 to recovery of profits. 
 
 In Low V. Fels, 35 Fed. 361, four 
 years was held to bar recovery of 
 profits, and in Worcester Brewing Co. 
 V. Rueter & Co., 157 Fed. 217, fifteen 
 months was held an unreasonable de- 
 lay in warning defendant of com- 
 plainant's intention to bring suit, 
 when the defendant acted in good 
 faith. In Fairbank Co. v; Luckel Co., 
 106 Fed. 498 (aff. 116 Fed. 332), it is 
 said: "The length of time of such 
 laches which shall be deemed to be an 
 assent to the use of the trade-mark 
 may differ according to the circum- 
 stances of different cases. Much will 
 necessarily depend upon the extent 
 of the knowledge which the com- 
 plainant possessed of the invasion 
 of his rights and upon the intention of 
 the infringer, whether fraudulent or 
 not." 
 
 In Saxlehner v. Eisner & Mendelsohn 
 Co., 179 U. S. 19, the complainant 
 knew of defendant's infringement for 
 ten years. It was held, that owing to 
 the unsuccessful attempts of com- 
 
 plainant to protect his trade-mark in 
 Hungary, his native country, he was 
 justified in not suing here, and as he 
 brought suit promptly when he was 
 finally successful in Hungary, his 
 conduct was not such laches as would 
 defeat a recovery of the defendant's 
 profits, the latter having acted fraud- 
 ulently. It was said: "It can scarcely 
 be wondered at that, in view of the 
 disabilities under which he labored in 
 his own country, Saxlehner should 
 have thought it futile to undertake 
 the prosecution of his rights in a dis- 
 tant land. As the defendant is unable 
 to call to his assistance any authority 
 from the home government for the 
 use of these simulated labels, and as 
 they and their vendors in Hungary 
 seized upon these labels with knowl- 
 ledge of Saxlehner's rights, it is no 
 hardship to enjoin their further use, 
 and to hold defendant liable for such 
 profits as it may have realized or for 
 such damages as the plaintiff may 
 have sustained by reason of the illegal 
 use." 
 
 " Menendez v. Holt, 128 U. S. 514; 
 McLean v. Fleming, 96 U. S. 245; Wor- 
 cester Brewing Co. v. Rueter & Co., 157 
 Fed. 217; International Silver Co. v. 
 Rogers Corporation, 66 N. J. Eq. 140; 
 57 Atl. 1037, 
 
734 Profits and Damages 
 
 or unfair competition, in which to investigate the facts and be 
 sure that his information is correct.^" 
 
 He should, however, within a reasonable time after he has 
 definite information of the invasion of his rights, warn the in- 
 vader, and give the latter an opportunity to discontinue its ob- 
 jectionable practices. The failure to give such a warning has no 
 bearing on plaintiff's right to an injunction." 
 
 In International Silver Co. v. Wm. H. Rogers Corporation,^^" 
 defendant was incorporated and did business under a name 
 which, as complainant claimed, and the court adjudged, con- 
 stituted unfair competition. Complainant had not begun suit 
 until more than a year after defendant was organized and went 
 into business, and had not notified defendant of its intention 
 to proceed against it, although defendant had during this interval 
 expended large sums in developing its business. Held that no 
 accounting for profits would be ordered. 
 
 The vice chancellor says that the complainant "should not be 
 permitted to stand by, knowing that defendant is devoting its 
 money and efforts to building up a business; wait until after he 
 has made profits, and then come in and demand them as its 
 own." 
 
 Where such notice is given, a delay for a considerable 
 time, whUe negotiations are going on, is not considered 
 laches. ^^ 
 
 Where an infringing label is designed and used in good faith, 
 and in ignorance of complainant's rights, a much shorter delay will 
 be considered laches, than where the infringement was inten- 
 tional.^^ 
 
 § 430. Damages in Suits at Law for Unfair Competition. — 
 Actions at law for unfair competition or infringement of trade- 
 marks are few, but there are good reasons for using this side of the 
 court where damages are the main end sought in the litigation. 
 In cases of this sort, punitive damages may be asked by and given 
 
 60 Worcester Brewing Co. v. Buster & ^2 Nelson v. Winchell, 203 Mass. 75; 
 
 Co., 157 Fed. 217. 89 N. E. 180; 23 L. R. A. (N. S.) 1150. 
 
 " Worcester Brewing Co. v. Rwter, *' The French Republic • v. Saratoga 
 
 157 Fed. 217; The International Silver Vichy Co., 191 U. S. 427; Worcester 
 
 Co. V. Rogers Corporation, 66 N. J. Eq. Brewing Co. v. Rueler & Co., 157 Fed. 
 
 140. 217 ; Saxlehner v. Eisner & Mendelsohn 
 
 61" 66 N. J. Eq. 140; 67 Atl. 1037. Co., 179 U. S. 19. 
 
Good Faith as an Excuse for Relieving Defendant 735 
 
 to a plaintiff. In Lampert v. Judge Co.,^^'^ a verdict for one cent 
 compensatory damage and $500 punitive damages was upheld, 
 and the rule is ihen laid down that an award of nominal damages, 
 as in that case will support a further award of punitive damages. 
 
 The principle of punitive damages is the basis of the rule in the 
 trade-mark statute, permitting the court to treble any award of 
 damage.^'*" This provision of the statute is no doubt a modification 
 of the common-law rule in this regard. 
 
 Judge Blodgett, in Warner v. Roehr,^^° a case for the infringe- 
 ment of a trade-mark, instructed the jury that exemplary damages 
 might be allowed in cases of this character, where the court is 
 satisfied from the proof and from the admissions in the case 
 that the fraud — the intention to defraud — is at the bottom 
 of the matter. Paul on Trade-Marks (§ 324) and Browne on 
 Trade-marks (§§ 519 and 520) hold in favor of such allowance. 
 
 § 431. Good Faith as an Excuse for Relieving Defendant from 
 Paying Damages. — The question has several times arisen 
 whether inadvertence on the part of a defendant, or even the 
 utmost good faith, in regard to the use of a name, mark or other 
 indicia complained of will excuse him to the extent of giving him 
 exemption from an accounting, of profits and damages. 
 
 In N. K. Fairbank Co. v. Windsor, ^^'^ the Circuit Court of 
 Appeals held that the good faith of the defendant was such 
 that it was improper to order an accounting of damages and 
 profits. In this case the acts complained of had been done in 
 reliance on a decision that was reversed, and the acts complained 
 of ceased as soon as this reversal occurred. Judge Lacombe 
 said: "It would be straining the doctrine of implied intent beyond 
 all reasonable bounds to hold that one who bought, made and sold 
 while that decision * * * remained in force intended to 
 enter into an ' unlawful competition,' " 
 
 »« 238 Mo. 409-1914; 141 S. W. "° 29 Fed. Case. 266, No. 17,189a- 
 1095. 1884. 
 
 "'' Section 16, Trade Mark Act of ""* 124 Fed. 200. 
 1905. 
 
APPENDIX 
 
 UNITED STATES STATUTES 
 CONCERNING THE REGISTRATION OF 
 
 TRADEMARKS 
 
 WITH 
 
 THE RULES OF THE PATENT OFFICE 
 RELATING THERETO 
 
 PAGE 
 
 Trade-mark laws of the United States 5 
 
 Act approved February 20, 1905 (as amended) 5 
 
 Act of May 4, 1906 13 
 
 Extract from an act to incorporate the American National Red Cross 14 
 
 Rules governing the registration of trade-marks under the trade-mark acts 15 
 
 Correspondence 15 
 
 Attorneys 16 
 
 Who may register a trade-mark 16 
 
 What may be registered as a trade-mark 17 
 
 The application 18 
 
 Drawing 21 
 
 Examination of applications 21 
 
 Amendments 22 
 
 Interference, opposition, and cancellation .' 23 
 
 Appeals 25 
 
 Abandoned applications .■■••, 26 
 
 Issue, date, and duration of certificate 26 
 
 Assignments _. 27 
 
 Copies and publications 27 
 
 Fees 28 
 
 Repayment of money 28 
 
 Notice of registration 28 
 
 Amendments of the rules 29 
 
 Questions not specifically provided for 29 
 
 Recording trade-marks with collectors of customs 29 
 
 Forms 31 
 
 Petition 31 
 
 Statement for an individual 31 
 
 Declaration for an individual 31 
 
 Statement for a firm 32 
 
 Declaration for a firm 33 
 
 Statement for a corjxjration or association 33 
 
 Declaration for a corporation or association 34 
 
 Declaration for applicants under the ten-year proviso 34 
 
 Declaration for foreigner 35 
 
 Statement for an individual under section 3 of the act of May 4, 1906 36 
 
 Declaration for foreigners under section 3 of the act of May 4, 1906 36 
 
 Notice of opposition. 37 
 
 Application for cancellation of trade-mark 37 
 
 Classification of merchandise under the act of May 4, 1906 40 
 
 Indexes 41 
 
 Index to trade-mark statutes 41 
 
 Index to trade-mark rules 48 
 
 Index to trade-mark forms , '^^ 
 
 [737] 
 
REGISTRATION OF TRADE-MARKS 
 
 TRADE-MARK LAWS OF THE UNITED STATES 
 
 ACT OF FEBRUARY 20, 1905 (AS AMENDED) 
 
 AN ACT To authorize the registration of trade-marks used in commerce with for- 
 eign nations or among the several States or with Indian tribes, and to protect the 
 same. 
 
 Be it enacted by the Senate and House of Representatives of the United 
 States of America in Congress assembled, That the owner of a trade- 
 mark used in commerce with foreign nations, or among the several 
 States, or with Indian tribes, provided such owner shall be domiciled 
 within the territory of the United States, or resides in or is located 
 in any foreign country which, by treaty, convention, or law, affords 
 similar privileges to the citizens of the United States, may obtain regis- 
 tration for such trade-mark by complying with the following require- 
 ments: First, by filing in the Patent Office an application therefor, in 
 writing, addressed to the Commissioner of Patents, signed by the ap- 
 plicant, specifying his name, domicile, location, and citizenship; the class 
 of merchandise and the particular description of goods comprised in such 
 class to which the trade-mark is appropriated; a statement of the mode 
 in which the same is applied and affixed to goods, and the length of time 
 during which the trade-mark has been used; a description of the trade- 
 mark itself shall be included, if desired by the applicant 
 of fIwI^wto^^ *°* ^^ required by the commissioner, provided such descrip- 
 tion is of a character to meet the approval of the com- 
 missioner. With this statement shall be filed a drawing of the trade- 
 mark, signed by the applicant, or his attorney, and such number of 
 specimens of the trade-mark as actually used as may be required by 
 the Commissioner of Patents. Second, by paying into the Treasury of 
 the United States the smn of ten dollars, and otherwise complying with 
 the requirements of this act and such regulations as may be prescribed 
 by the Commissioner of Patents. 
 
 Sec. 2. That the application prescribed in the foregoing section, in 
 order to create any right whatever in favor of the party filing it, must 
 be accompanied by a written declaration verified by the applicant, or 
 by a member of the firm or an officer of the corporation or association 
 applying, to the effect that the applicant believes himself or the firm, 
 corporation, or association in whose behalf he makes the application 
 to be the owner of the trade-mark sought to be registered, and that no 
 other person, firm, corporation, or association, to the best of the appli- 
 cant's knowledge and belief, has the right to use such trade-mark in 
 the United States, either in the identical form or in such 
 of Flb*'il°i909"'*"' °6^i" resemblance thereto as might be calculated to de- 
 ^ ■ ' ■ ceive; that such trade-mark is used in commerce among 
 the several States, or with foreign nations, or with Indian tribes, and that 
 the description and drawing presented truly represent the trade-mark 
 sought to be registered. If the applicant resides or is located in a 
 foreign country, the statement required shall, in addition to the foregoing, 
 
 [739] 5 
 
6 [740] Registration of Trade-Marks 
 
 set forth that the trade-mark has been registered by the applicant, or 
 that an application for the registration thereof has been filed by him 
 in the foreign country in which he resides or is located, and shall give the 
 date of such registration, or the application therefor, as the case may be, 
 except that in the application in such cases it shall not be necessary to 
 state that the mark has been used in commerce with the United States 
 or among the States thereof. The verification required by this section 
 may be made before any person within the United States authorized 
 by law to administer oaths, or, when the applicant resides in a foreign 
 country, before any minister, chargfe d'affaires, consul, or commercial 
 agent holding commission under the Government of the United States, 
 or before any notary public, judge, or magistrate having an official seal 
 and authorized to administer oaths in the foreign country in which the 
 applicant may be whose authority shall be proved by a certificate of a 
 diplomatic or consular officer of the United States. 
 
 Sec. 3. That every applicant for registration of a trade-mark, or 
 for renewal of registration of a trade-mark, who is not domiciled within 
 the United States, shall, before the issuance of the certificate of registra- 
 tion, as hereinafter provided for, designate, by a notice in writing, filed 
 in the Patent Office, some person residing within the United States 
 on whom process or notice of proceedings affecting the right of 'ownership 
 of the trade-mark of which such applicant may claim to be the owner, 
 brought under the provisions of this act or under other laws of the 
 United States, may be served, with the same force and effect as if served 
 upon the applicant or registrant in person. For the purposes of this 
 act it shall be deemed sufficient to serve such notice upon such applicant, 
 registrant, or representative by leaving a copy of such process or notice 
 addressed to him at the last address of which the Commissioner of Pat- 
 ents has been notified. 
 
 Sec. 4. That an application for registration of a trade-mark filed in 
 this country by any person who has previously regularly filed in any 
 foreign country which, by treaty, convention, or law, affords similar 
 privileges to citizens of the United States an application for registration 
 of the same trade-mark shall be accorded the same force and effect 
 as would be accorded to the same apphcation if filed in this country 
 on the date on which application for registration of the same trade-mark 
 was first filed in such foreign country: Provided, That such application 
 is filed in this country within four months from the date on which the 
 application was first filed in such foreign country: And provided, That 
 certificate of registration shall not be issued for any mark for registra- 
 tion of which apphcation has been filed by an applicant located in a 
 foreign country until such mark has been actually registered by the 
 applicant in the country in which he is located. 
 
 Sec. 5. That no mark by which the goods of the owner of the mark 
 may be distinguished from other goods of the same class shall be refused 
 registration as a trade-mark on account of the nature of such mark un- 
 less such mark — 
 
 (a) Consists of or comprises immoral or scandalous matter. 
 
 (6) Consists of or comprises the flag or coat of arms or other insignia 
 of the United States or any simulation thereof, or of any State or munici- 
 pality or of any foreign nation, or of any design or picture that has been 
 or may hereafter be adopted by any fraternal society as its emblem, 
 
Eegistration of Trade-Marks [741] 7 
 
 or of any name, distinguishing mark, character, emblem, colors, flag, or 
 banner adopted by any institution, organization, dub, or society which was 
 incorporated in any State in the United States prior to the date of the adop- 
 tion and use by the applicant: Provided, That said name, 
 of'jan^r'il'is!'' *"' distinguishing mark, character, emblem, colors, flag, or 
 banner was adopted and publicly used by said institution, 
 organization, dub, or society prior to the date of adoption and use by the 
 applicant: Provided, That trade-marks which are identical with a regis- 
 tered or known trade-mark owned and in use by another and appropriated 
 to merchandise of the same descriptive properties, or which so nearly 
 resemble a registered or known trade-mark owned and in use by another 
 and appropriated to merchandise of the same descriptive properties 
 as to be Ukely to cause confusion or mistake in the mind of the public 
 or to deceive purchasers shall not be registered : Provided, That no mark 
 which consists merely in the name of an individual, firm, corporation, 
 or association not written, printed, impressed, or woven in some par- 
 ticular or distinctive manner, or in association with a portrait of the in- 
 dividual, or merely in words or devices which are descriptive of the goods 
 with which they are used, or of the character or quality of such goods, 
 or merely a geographical name or term, shall be registered under the 
 terms of this Act: Provided further. That no portrait of a living individual 
 may be registered as a trade-mark except by the consent of such in- 
 dividual, evidenced by an instrument in writing: And provided further. 
 That nothing herein shall prevent the registration of any mark used by 
 the applicant or his predecessors, or by those from whom title to the mark 
 is derived, in commerce with foreign nations or among the several States 
 or with Indian tribes which was in actual and exclusive use as a trade- 
 mark of the applicant, or his predecessors from whom he derived title, for 
 ten years next preceding February twentieth, nineteen hundred and 
 five: Provided further. That nothing herein shall prevent the registra- 
 tion of a trade-mark otherwise registrable because of its being the name 
 of the applicant or a portion thereof. 
 
 Sec. 6. That on the filing of an application for registration of a trade- 
 mark which complies with the requirements of this act, and the payment 
 of the fees herein provided for, the Commissioner of Patents shall cause 
 an examination thereof to be made; and if on such examination it shall 
 appear that the applicant is entitled to have his trade-mark registered 
 under the provisions of this act, the commissioner shall cause the mark 
 to be published at least once in the Official Gazette of the Patent Office. 
 Any person who believes he would be danaaged by the registration of a 
 mark may oppose the same by filing notice of opposition, stating the 
 grounds therefor, in the Patent Office within thirty days after the pub- 
 lication of the mark sought to be registered, which said notice of opposi- 
 tion shall be verified by the person filing the same before one of the 
 officers mentioned in section two of this act. An opposition may be 
 filed by a duly authorized attorney, but such opposi- 
 
 of MaTTiloT"' ^"^ tio"^ s^^'* ^^ °"'^ *"*^ ^°'^ unless verified by the op- 
 " "■ ■ ■ poser within a reasonable time after such filing. If 
 no notice of opposition is filed within said time, the commissioner shall 
 issue a certificate of registration therefor, as hereinafter provided for. 
 If on examination an application is refused, the commissioner shall 
 notify the applicant, giving him his rea-sons therefor. 
 
8 [742] Registration of Trade-Marks 
 
 Sec. 7. That in all cases where notice of opposition has been filed 
 the Commissioner of Patents shall notify the appUcant thereof and 
 the grounds therefor. 
 
 Whenever application is made for the registration of a trade-mark 
 which is substantially identical with a trade-mark appropriated to goods 
 of the same descriptive properties, for which a certificate of registration 
 has been previously issued to another, or for registration of which another 
 has previously made application, or which so nearly resembles such 
 trade-mark, or a known trade-mark owned and used by another, as, 
 in the opinion of the commissioner, to be likely to be mistaken therefor 
 by the public, he may declare that an interference exists as to such trade- 
 mark, and in every case of interference or opposition to registration 
 he shall direct the examiner in charge of interferences to determine the 
 question of the right of registration to such trade-mark, and of the 
 sufficiency of objections to registration, in such manner and upon such 
 notice to those interested as the commissioner may by rules pre- 
 scribe. 
 
 The commissioner may refuse to register the mark against the reg- 
 istration of which objection is filed, or may refuse to register both of 
 two interfering marks, or may register the mark, as a trade-mark, 
 for the person first to adopt and use the mark, if otherwise entitled to 
 register the same, unless an appeal is taken, as hereinafter provided 
 for, from his decision, by a party interested in the proceeding, within 
 such time (not less than twenty days) as the commissioner may pre- 
 scribe. 
 
 . Sec. 8. That every applicant for the registration of a trade-mark, 
 or for the renewal of the registration of a trade-mark, which application 
 is refused, or a party to an interference against whom a decision has been 
 rendered, or a party who has filed a notice of opposition as to a trade- 
 mark, may appeal from the decision of the examiner in charge of trade- 
 marks, or the examiner in charge of interferences, as the case may be, 
 to the commissioner in person, having once paid the fee for such 
 appeal. 
 
 'Sec. 9. That if an appUcant for registration of a trade-mark, or a 
 party to an interference as to a trade-mark, or a party who has filed 
 opposition to the registration of a trade-mark, or party to an appHca- 
 tion for the cancelation of the registration of a trade-mark, is dissat- 
 isfied with the decision of the Commissioner of Patents, he may appeal 
 to the court of appeals of the District of Columbia, on complying with 
 the conditions required in case of an appeal from the decision of the 
 commissioner by an applicant for patent, or a party to an interference 
 as to an invention, and the same rules of practice and procedure shall 
 govern in every stage of such proceedings, as far as the same may be 
 applicable. 
 
 Sec. 10. That every registered trade-mark, and every mark for 
 the registration of which application has been made, together with 
 the application for registration of the same, shall be assignable in con- 
 nection with the good will of the business in which the mark is used. 
 Such assignment must be by an instrument in writing and duly ac- 
 knowledged according to the laws of the country or State in which 
 the same is executed; any such assignment shall be void as against any 
 subsequent purchaser for a valuable consideration, without notice, 
 
Registration of Trade-Marks [743] 9 
 
 unless it is recorded in the Patent Office within three months from 
 date thereof. The commissioner shall keep a record of such assign- 
 ments. 
 
 Sec. 11. That certificates of registration of trade-marks shall be 
 issued in the name of the United States of America, under the seal of 
 the Patent Office, and shall be signed by the Commissioner of Patents, 
 and a record thereof, together with printed copies of the drawing and 
 statement of the appficant, shall be kept in books for that purpose. 
 The certificate shall state the date on which the application for regis- 
 tration was received in the Patent Office. Certificates of registration 
 of trade-marks may be issued to the assignee of the applicant, but the 
 assignment must first be entered of record in the Patent Office. 
 
 Written or printed copies of any records, books, papers, or drawings 
 relating to trade-marks belonging to the Patent Office, and of certifi- 
 cates of registration, authenticated by the seal of the Patent Office 
 and certified by the commissioner thereof, shall be evidence in all cases 
 wherein the originals could be evidence; and any person making applica- 
 tion therefor and paying the fee required by law shall have certified 
 copies thereof. 
 
 Sec. 12. That a certificate of registration shall remain in force for 
 twenty years, except that in the case of trade-marks previously regis- 
 tered in a foreign country such certificates shall cease to be in force on 
 the day on which the trade-mark ceases to be protected in such foreign 
 country, and shall in no case remain in force more than twenty years, 
 unless renewed. Certificates of registration may be from time to time 
 renewed for like periods on payment of the renewal fees required by 
 this act, upon request by the registrant, his legal representatives, or 
 transferees of record in the Patent Offic.e, and such request may be 
 made at any time not more than six months prior to the expiration of 
 the period for which the certificates of registration were issued or 
 renewed. Certificates of registration in force at the date at which this 
 act takes effect shall remain in force for the period for which they were 
 issued, but shall be renewable on the same conditions and for the same 
 periods as certificates issued under the provisions of this act, and when 
 so renewed shall have the same force and effect as certificates issued 
 under this act. 
 
 Sec. 13. That whenever any person shall deem himself injured by 
 the registration of a trade-mark in the Patent Office he may at any 
 time apply to the Commissioner of Patents to cancel the registration 
 thereof. The commissioner shall refer such appHcation to the examiner 
 in charge of interferences, who is empowered to hear and determine this 
 question and who shall give notice thereof to the registrant. If it ap- 
 pear after a hearing before the examiner that the registrant was not 
 entitled to the use of the mark at the date of his application for regis- 
 tration thereof, or that the mark is not used by the registrant, or has 
 been abandoned, and the examiner shall so decide, the commissioner 
 shall cancel the registration. Appeal may be taken to the commis- 
 sioner in person from the decision of examiner of interferences. 
 
 Sec. 14. That the following shall be the rates for trade-mark fees: 
 
 On filing each original application for registration of a trade-mark, 
 ten dollars: Provided, That an application for registration of a trade- 
 mark pending at the date of the passage of this act, and on which cer- 
 
10 [744] Registration of Trade-Marks 
 
 tificate of registration shall not have issued at such date, may, at the 
 option of the applicant, be proceeded with and registered under the 
 provisions of this act without the payment of further fee. 
 
 On filing each application for renewal of the registration of a trade- 
 mark, ten dollars. 
 
 On filing notice of opposition to the registration of a trade-mark, 
 ten dollars. 
 
 On an appeal from the examiner in charge of trade-marks to the 
 Commissioner of Patents, fifteen dollars. 
 
 On an appeal from the decision of the examiner in charge of inter- 
 ferences, awarding ownership of a trade-mark or canceling the regis- 
 tration of a trade-mark, to the Commissioner of Patents, fifteen dollars. 
 
 For certified and uncertified copies of certificates of registration 
 and other papers, and for recording transfers and other papers, the 
 same fees as required by law for such copies of patents and for recording 
 assignments and other papers relating to patents. 
 
 Sec. 15. That sections forty-nine hundred and thirty-five and forty- 
 nine hundred and thirty-six of the Revised Statutes, relating to the 
 payment of patent fees and to the repayment of fees paid by mistake, 
 are hereby made applicable to trade-mark fees. 
 
 Sec. 16. That the registration of a trade-mark under the provisions 
 of this act shall be prima facie evidence of ownership. Any person who 
 shall, without the consent of the owner thereof, reproduce, counterfeit, 
 copy, or colorably imitate any such trade-mark and affix the same to 
 merchandise of substantially the same descriptive properties as those 
 set forth in the registration, or to labels, signs, prints, packages, wrap- 
 pers, or receptacles intended to be used upon or in connection with the 
 sale of merchandise of substantially the same descriptive properties as 
 those set forth in such registration, and shall use, or shall have used, 
 such reproduction, counterfeit, copy, or colorable imitation in commerce 
 among the several States, or with a foreign nation, or with the Indian 
 tribes, shall be liable to an action for damages therefor at the suit of the 
 owner thereof; and whenever in any such action a verdict is rendered 
 for the plaintiff, the court may enter judgment therein for any sum 
 above the amount found by the verdict as the actual damages, accord- 
 ing to the circumstances of the case, not exceeding three times the amount 
 of such verdict, together with the costs. 
 
 Sec. 17. That the circuit and territorial courts of the United States 
 and the supreme court of the District of Columbia shall have original 
 jurisdiction, and the circuit courts of appeal of the United States and 
 the court of appeals of the District of Columbia shall have appellate 
 jurisdiction of all suits at law or in equity respecting trade-marks regis- 
 tered in accordance with the provisions of this act, arising imder the 
 present act, without regard to the amount in controversy. 
 
 Sec. 18. That writs of certiorari may be granted by the Supreme 
 Court of the United States for the review of cases arising under this act 
 in the same manner as provided for patent cases by the act creating the 
 circuit court of appeals. 
 
 Sec. 19. That the several courts vested with jurisdiction of cases 
 arising under the present act shall have power to grant injunctions, 
 according to the course and principles of equity, to prevent the viola- 
 tion of any right of the owner of a trade-mark registered under this 
 
Registration op Trade-Marks [745] 11 
 
 act, on such terms as the court may deem reasonable; and upon a 
 decree being rendered in any such case for wrongful use of a trade- 
 mark the complainant shall be entitled to recover, in addition to the 
 profits to be accounted for by the defendant, the damages the com- 
 plainant has sustained thereby, and the court shall assess the same or 
 cause the same to be assessed under its direction. The court shall have 
 the same power to increase such damages, in its discretion, as is given 
 by section sixteen of this act for increasing damages found by verdict 
 in actions of law; and in assessing profits, the plaintiff shall be required 
 to prove defendant's sales only; defendant must prove all elements of 
 cost which are claimed. , 
 
 Sec. 20. That in any case involving the right to a trade-mark regis- 
 tered in accordance with the provisions of this act, in which the ver- 
 dict has been found for the plaintiff, or an injunction issued, the court 
 may order that all labels, signs, prints, packages, wrappers, or recep- 
 tacles in the possession of the defendant, bearing the trade-mark of 
 the plaintiff or complainant, or any reproduction, counterfeit, copy, 
 or colorable imitation thereof, shall be delivered up and destroyed. 
 Any injunction that may be granted upon hearing, after notice to the 
 defendant, to prevent the violation of any right of the owner of a trade- 
 mark registered in accordance with the provisions of this act, by any 
 circuit court of the United States, or by a judge thereof, may be served 
 on the parties against whom such injunction may be granted anywhere 
 in the United States where they may be found, and shall be operative, 
 and may be enforced by proceedings to punish for contempt, or other- 
 wise, by the court by which such injunction was granted, or by any 
 other circuit court, or judge thereof, in the United States, or by the 
 Supreme Court of the District of Columbia, or a judge thereof. The said 
 courts, or judges thereof, shall have jurisdiction to enforce said injunc- 
 tion, as herein provided, as fully as if the injunction had been granted 
 by the circuit court in which it is sought to be enforced. The clerk of the 
 court or judge granting the injunction shall, when required to do so by 
 the court before which appUcation to enforce said injunction is made, 
 transfer without delay to said court a certified copy of all the papers 
 on which the said injunction was granted that are on file in his office. 
 
 Sec. 21. That no action or suit shall be maintained under the provi- 
 sions of this act in any case when the trade-mark is used in unlawful 
 business, or upon any article injurious in itself, or which mark has been 
 used with the design of deceiving the public in the purchase of mer- 
 chandise, or has been abandoned, or upon any certificate of registra- 
 tion fraudulently obtained. 
 
 Sec. 22. That whenever there are interfering registered trade-marks, 
 any person interested in any one of them may have relief against the 
 interfering registrant, and all persons interested under him, by suit 
 in equity against the said registrant; and the court, on notice to adverse 
 parties and other due proceedings had according to the course of equity, 
 may adjudge and declare either of the registrations void in whole or in 
 part according to the interest of the parties in the trade-mark, and may 
 order the certificate of registration to be delivered up to the Commis- 
 sioner of Patents for cancellation. 
 
 Sec. 23. That nothing in this act shall prevent, lessen, impeach, or 
 avoid any remedy at law or in equity which any party aggrieved by 
 
12 [746] Registration op Teade-Maeks 
 
 any wrongful use of any trade-mark might have had if the provisions 
 of this act had not been passed. 
 
 Sec. 24. That all applications for registration pending in the office 
 of the Commissioner of Patents at the time of the passage of this act 
 may be amended with a view to bringing them, and the certificate issued 
 upon such applications, under its provisions, and the prosecution of 
 such applications may be proceeded with under the provisions of this 
 act. 
 
 Sec. 25. That any person who shall procure registration of a trade- 
 mark, or entry thereof, in the office of the Commissioner of Patents 
 by a false or fraudulent declaration or representation, oral or in writ- 
 ing, or by any false means, shall be liable to pay any damages sus- 
 tained in consequence thereof to the injured party, to be recovered by 
 an action on the case. 
 
 Sec. 26. That the Commissioner of Patents is authorized to make 
 rules and regulations, not inconsistent with law, for the conduct of pro- 
 ceedings in reference to the registration of trade-marks provided for 
 by this act. 
 
 Sec. 27. That no article of imported merchandise which shall copy 
 or simulate the name of any domestic manufacture, or manufacturer 
 or trader, or of any manufacturer or trader located in any foreign coun- 
 try which, by treaty, convention, or law affords similar privileges to 
 citizens of the United States, or which shall copy or simulate a trade- 
 mark registered in accordance with the provisions of this act or shall 
 bear a name or mark calculated to induce the public to believe that 
 the article is manufactured in the United States, or that it is man- 
 ufactured in any foreign country or locality other than the country 
 or locality in which it is in fact manufactured, shall be admitted to entry 
 at any customhouse of the United States; and, in order to aid the officers 
 of the customs in enforcing this prohibition, any domestic manufacturer 
 or trader, and any foreign manufacturer or trader, who is entitled under 
 the provisions of a treaty, convention, declaration, or agreement be- 
 tween the United States and any foreign country to the advantages 
 afforded by law to citizens of the United States in respect to trade-marks 
 and commercial names, may require his name and residence, and the 
 name of the locality in which his goods are manufactured, and a copy 
 of the certificate of registration of his trade-mark, issued in accordance 
 with the provisions of this act, to be recorded in books which shall be 
 kept for this purpose in the Department of the Treasury, under such 
 regulations as the Secretary of the Treasury shall prescribe, and may 
 furnish to the department facsimiles of his name, the name of the lo- 
 cality in which his goods are manufactured, or of his registered trade- 
 mark; and thereupon the Secretary of the Treasury shall cause one or 
 more copies of the same to be transmitted to each collector or other 
 proper officer of customs. 
 
 Sec. 28. That it shall be the duty of the registrant to give notice to 
 the public that a trade-mark is registered, either by aflBxing thereon 
 the words "Registered in U. S. Patent Office," or abbreviated thus, 
 "Reg. U. S. Pat. Off.," or when, from the character or size of the trade- 
 mark, or from its manner of attachment to the article to which it is 
 appropriated, this can not be done, then by affixing a label containing 
 a hke notice to the package or receptacle wherein the article or articles 
 
Registration of Tbade-Mabks [747] 13 
 
 are inclosed; and in any suit for infringement by a party failing so to 
 give notice of registration no damages shall be recovered, except on 
 proof that the defendant was duly notified of infringement and con- 
 tinued the same after such notice. 
 
 Sec. 29. That in construing this act the following rules must be ob- 
 served, except where the contrary intent is plainly apparent from the 
 context thereof: The United States includes and embraces all territory 
 which is under the jurisdiction and control of the United States. The 
 word "States" includes and embraces the District of Columbia, the 
 Territories of the United States, and such other territory as shall be 
 under the jurisdiction and control of the United States. The terms 
 "person" and "owner," and any other word or term used to designate 
 the appUcant or other entitled to a benefit or privilege or rendered liable 
 under the provisions of this act, include a firm, corporation, or associa- 
 tion as weU as a natural person. The term "applicant" and "regis- 
 trant" embrace the successors and assigns of such applicant or registrant. 
 The term "trade-mark" includes any mark which is entitled to regis- 
 tration under the terms of this act, and whether registered or not, and 
 a trade-mark shall be deemed to be "affixed" to an article when it is 
 placed in any manner in or upon either the article itself or the receptacle 
 or package or upon the envelope or other thing in, by, or with which 
 the goods are packed or inclosed or otherwise prepared for sale or dis- 
 tribution. 
 
 Sec. 30. That this act shall be in force and take effect April first, 
 nineteen hundred and five. All acts and parts of acts inconsistent with 
 this act are hereby repealed except so far as the same may apply to cer- 
 tificates of registration issued under the act of Congress approved March 
 third, eighteen hundred and eighty-one, entitled "An act to authorize 
 the registration of trade-marks and protect the same," or under the act 
 approved August fifth, eighteen hundred and eighty-two, entitled "An 
 act relating to the registration of trade-marks." 
 
 Approved, February 20, 1905. 
 
 ACT OF MAY 4, 1906 
 
 AN ACT To amend the laws of the United States relating to the registration of 
 
 trade-marka. 
 *********** 
 
 Sec. 2. That the Commissioner of Patents shall estabhsh classes of 
 merchandise for the purpose of trade-mark registration, and shall 
 determine the particular descriptions of goods comprised in each class. 
 On a single application for registration of a trade-mark the trade-mark 
 may be registered at the option of the applicant for any or all goods 
 upon which the mark has actually been used comprised in a single class 
 of merchandise, provided the particular descriptions of goods be stated. 
 
 Sec. 3. That any owner of a trade-mark who shall have a manufactur- 
 ing establishment within the territory of the United States shall be ac- 
 corded, so far as the registration and protection of trade-marks used 
 on the products of such estabhshment are concerned, the same rights 
 and privileges that are accorded to owners of trade-marks domiciled 
 within the territory of the United States by the act entitled "An act 
 to authorize the registration of trade-marks used in commerce with 
 foreign nations or among the several States or with Indian tribes, and 
 
14 [748] Rbgistbation of Tkade-Mabks 
 
 to protect the same," approved February twentieth, nineteen hundred 
 and five. 
 
 Sec. 4. That this act shall take effect July first nineteen hundred and 
 six. 
 
 Approved, May 4, 1906. 
 
 ACT TO INCORPORATE THE AMERICAN NATIONAL RED CROSS, AP- 
 PROVED JANUARY 6, 1905 (AS AMENDED JUNE 23, 1910) 
 
 Sec. 4. That from and after the passage of this act it shall be unlawful 
 for any person within the jurisdiction of the United States to falsely 
 or fraudulently hold himself out as or represent or pretend himself to be 
 a member of or an agent for the American National Red CrOss for the 
 purpose of soliciting, collecting, or receiving money or material; or for 
 any person to wear or display the sign of the Red Cross or any insignia 
 colored in imitation thereof for the fraudulent purpose of inducing the 
 belief that he is a member of or an agent for the American National 
 Red Cross. It shall be unlawful for any person, corporation, or associa- 
 tion other than the American National Red Cross and its duly author- 
 ized employees and agents and the Army and Navy sanitary and hos- 
 pital authorities of the United States, for the purpose of trade or as an 
 advertisement, to induce the sale of any article whatsoever or for any 
 business or charitable purpose to use within the territory of the United 
 States of America and its exterior possessions the emblem of the Greek 
 Red Cross on a white ground, or any sign or insignia made or colored in 
 imitation thereof, or of the words "Red Cross" or "Geneva Cross" or 
 any combination of these words: Provided, however, That no person, cor- 
 poration, or association that actually used or whose assignor actually 
 used the said emblem, sign, insignia, or words for any lawful purpose 
 prior to January fifth, nineteen hundred and five, shall be deemed 
 forbidden by this act to continue the use thereof for the same purpose 
 and for the same class of goods. If any person violates the provisions 
 of this section he shall be deemed guilty of a misdemeanor, and upon 
 conviction in any Federal court shall be liable to a fine of not less than 
 one or more than five hundred dollars, or imprisonment for a term not 
 exceeding one year, or both, for each and every offense. 
 
 Sec. 8. That the endowment fund of the American National Red 
 Cross shall be kept and invested under the management and control 
 of a board of nine trustees, who shall be elected from time to time by 
 the incorporators and their successors under such regulations regarding 
 terms and tenure of office, accountability, and expense as said incor- 
 porators and successors shall prescribe. 
 
 Approved, June 23, 1910. 
 
RULES GOVERNING THE REGISTRATION OF 
 TRADE-MARKS UNDER THE TRADE-MARK ACTS 
 
 United States Patent Office, 
 Washington, D. C, October 15, 1913. 
 The following rules, designed to be in strict accordance with the pro- 
 visions of the acts approved February 20, 1905, May 4, 1906, March 2, 
 1907, February 18, 1909, February 18, 1911, and January 8, 1913, for 
 the registration of trade-marks, are published for gratuitous distribu- 
 tion. 
 
 Applicants for registration and their attorneys are advised that their 
 business will be facilitated by the observance of the forms on pages 
 33 to 40. 
 
 Thomas Ewing, 
 Commissioner of Patents. 
 
 CORRESPONDENCE 
 
 1. All business with the office should be transacted in writing. Un- 
 less by the consent of all parties, the action of the office will be based 
 exclusively on the written record. No attention will be paid to any 
 alleged oral promise, stipulation, or understanding in relation to which 
 there is disagreement or doubt. 
 
 2. Applicants and attorneys will be required to conduct their business , 
 with the office with decorum and courtesy. Papers presented in viola- 
 tion of this requirement will be returned; but all such papers will first 
 be submitted to the commissioner, and only be returned by his direct 
 order. 
 
 3. All letters should be addressed to "The Commissioner of Pat- 
 ents"; and all remittances by money order, check, or draft should be 
 to his order. 
 
 4. A separate letter should, in every case, be written in relation to 
 each distinct subject of inquiry or application. Complaints against 
 the examiner in charge of trade-marks, assignments for record, fees, 
 and orders for copies or abstracts must be sent to the office in separate 
 letters. 
 
 5. Letter^ relating to pending applications should refer to the name 
 of the applicant, the serial number of the appUcation, and the date of 
 filing. Letters relating to registered trade-marks should refer to the 
 name of the registrant, the number and date of the certificate, and the 
 merchandise to which the trade-mark is applied. 
 
 6. The personal attendance of applicants at the Patent Office is un- 
 necessary. Their business can be transacted by correspondence. 
 
 7. When an attorney shall have filed his power of attorney, duly 
 executed, the correspondence will be held with him. 
 
 8. A double correspondence with an applicant and his attorney, or 
 with two attorneys, can not, generally, be allowed. 
 
 9. The office can not undertake to respond to inquiries propounded 
 with a view to ascertain whether certain trade-marks have been regis- 
 tered, or, if so, to whom, or for what goods; nor can it give advice as 
 
 [749] 15 
 
16 [750] Registbation of Tkade-Marks 
 
 to the nature and extent of the protection afforded by the law, or act 
 as its . expounder, except as questions may arise upon applications 
 regularly filed. 
 
 10. Express, freight, postage, and all other charges on matter sent 
 to the Patent Office must be prepaid in full; otherwise it will not be 
 received. 
 
 ATTORNEYS 
 
 11. The owner of a trade-mark may prosecute his own application 
 for registration of such trade-mark, but he is advised, unless familiar 
 with such matters, to employ a competent attorney. The office can not 
 aid in the selection of an attorney. 
 
 A. register of attorneys is kept in the Patent Office, on which is entered 
 the names of all persons entitled to represent applicants before the Pat- 
 ent Office in the prosecution of applications for patents, and any regis- 
 tered attorney will be recognized in the prosecution of applications for 
 registration of trade-marks. 
 
 Registration of an attorney merely for the prosecution of an applica- 
 tion for registration of a trade-mark will not be required, but in the 
 absence of registration recognition will be limited to each case. The 
 commissioner reserves the right to decline to recognize any attorney, 
 agent, or other person authorized to be recognized by the preceding 
 provisions of this rule. 
 
 12. Before any attorney, original or associate, will be allowed to 
 inspect papers or take action of any kind, his power of attorney must 
 be filed. General powers given by a principal to an associate can not 
 be considered. In each application the written authorization must be 
 filed. A power of attorney purporting to have been given to a firm or 
 copartnership will not be recognized, either in favor of the firm or of 
 any of its members, unless all its members shall be named in such power 
 of attorney. 
 
 13. Substitution or association may be made by an attorney upon 
 the written authorization of his principal; but such authorization will 
 not empower the second attorney to appoint a third. 
 
 14. Powers of attorney may be revoked at any stage in the proceed- 
 ings of a case upon application to and approval by the commissioner; 
 and, when so revoked, the office will communicate directly with the 
 applicant, or such other attorney as he may appoint. A power of at- 
 torney appointing a second principal attorney will not be entered unless 
 such power of attorney specifically revokes that given the principal 
 attorney of record (rule 8). An attorney will be promptly notified by 
 the docket clerk of the revocation of his power of attorney. ' 
 
 15. For gross misconduct the commissioner may refuse to recognize 
 any person as an attorney, either generally or in any particular case; 
 but the reasons for such refusal will be duly recorded and be subject 
 to the approval of the Secretary of the Interior. 
 
 WHO MAY REGISTER A TRADE-MARK 
 
 16. A trade-mark may be registered by any person, firm, corpo- 
 Act of Feb 20 ^^^^^^' °^. associatiou domiciled within the territory 
 
 1905, a"c. h ■ ' of the United States, or residing in or located in any 
 
 foreign country which, by treaty, convention, or law, 
 
 affords similar privileges to the citizens of the United States, and who is 
 
Registration of Trade-Marks [751] 17 
 
 the owner of. such trade-mark, and uses the same in commerce with 
 foreign nations, or among the several States, or with Indian tribes, 
 upon payment of the fee required by law and other due proceedings had. 
 (See rules 17 and 20.) 
 
 17. Except as provided by section 3 of the act of May 4, 1906, no 
 
 trade-mark will be registered to an applicant residing 
 i905%ec°. 1, 2%nd 4! or located in a foreign country unless such country, 
 i906'8ee°3. ^^'^ *' ^y treaty, convention, or law, afford similar privi- 
 leges to the citizens of the United States, nor unless 
 the trade-mark has been registered by the applicant in the foreign 
 country in which he resides or is located, nor until such applicant has 
 filed in this oflBce a certified copy of the certificate of registration of 
 his trade-mark in the country where he resides or is located. In siich 
 cases it is not necessary to state in the application that the trade-mark 
 has been used in commerce with the United States or among the several 
 States thereof. 
 
 18. The owner of a trade-mark, residing or located in a foreign coun- 
 
 try and who shall have a manufacturing establish- 
 i906,'sec?3. ^^^ *' meut withiu the territory of the United States, may 
 
 register a trade-mark used on the products of such 
 establishment upon complying with the provisions of the act of Febru- 
 ary 20, 1905, as prescribed for owners of trade-marks domiciled within 
 the territory of the United States. 
 
 WHAT MAY BE REGISTERED AS A TRADE-MARK 
 
 19. No trade-mark will be registered to an owner domiciled within 
 
 the territory of the United States unless it shall be 
 1905,'sera. 1, 5?and ai. made to appear that the same is used as such by said 
 1909 'see *i ^^^' ^^' o^"®'' ^^ commcrcc among the several States, or be- 
 tween the United States and some foreign nation or 
 Indian tribe; no trade-mark, except as provided by section 3 of the 
 act of May 4, 1906, will be registered to an owner residing in or located 
 in a foreign country unless said country, by treaty, convention, or law, 
 affords similar privileges to the citizens of the United States; no trade- 
 mark will be registered which consists of or comprises immoral or scan- 
 dalous matter, or which consists of or comprises the flag or coat of arms 
 or other insignia of the United States, or any simulation thereof, or of 
 any State or municipality, or of any foreign nation, or which consists 
 of or comprises any design or picture that has been adopted by any fra- 
 ternal society as its emblem, unless it shall be shown to the satisfaction 
 of the Commissioner of Patents that the mark was adopted and used as 
 a trade-mark by the applicant or applicant's predecessors, from whom 
 title is derived, at a date prior to the date of its adoption by such fra- 
 ternal society as its emblem, or which trade-mark is identical with a 
 registered or known trade-mark owned and in use by another, and ap- 
 propriated to merchandise of the same descriptive properties, or which 
 so nearly resembles a registered or known trade-mark owned and in 
 use by another, and appropriated to merchandise of the same descrip- 
 tive properties as to be likely to cause confusion or mistake in the mind 
 of the public, or to deceive purchasers, or which consists merely in the 
 name of an individual, firm, corporation, or association, not written, 
 printed, impressed, or woven in some particular or distinctive manner 
 
18 [752] Registbation of Teade-Makks 
 
 or in association with a portrait of the individual, or merely in words or 
 devices which are descriptive of the goods with which they are used, or 
 of the character or quality of such goods, or merely a geographical name 
 or term; no portrait of a living individual will be registered as a trade- 
 mark, except by the consent of such individual evidenced by an instru- 
 ment in writing; and no trade-mark will be registered which is used 
 in unlawful business, or upon any article injurious in itself, or which 
 has been used with the design of deceiving the public in the purchase 
 of merchandise, or which has been abandoned. 
 
 20. Any mark, used in commerce with foreign nations or among 
 Act of Feb. 20, the Several States or with Indian tribes, may be regis- 
 
 ^^Ao't^^of^'Feb. 18, tered if it has been in actual and exclusive use as a 
 1911- ' trade-mark ' of the applicant, or his predecessors from 
 
 whom he derived title, for 10 years next preceding February 20, 1905. 
 (See rule 32.) 
 
 THE APPLICATION 
 
 21. An application for the registration of a trade-mark must be 
 Act of Feb. 20, made Ijo the Commissioner of Patents and must be 
 
 1905, aeo. 1. signed by the applicant. 
 
 22. A complete application comprises: 
 
 (a) A petition, requesting registration, signed by 
 1905,'eec.S.^*" ^' the applicant. (See Form 1, p. 33.) 
 1909 'sec' 1 ^^^' '^' (^) -^ statement specifying the name, domicile, 
 location, and citizenship of the party applying, and if 
 the applicant be a corporation or association, the State or nation under 
 the laws of which organized; the class of merchandise (according to the 
 oflBcial classification), and the particular description of goods comprised 
 in such class upon which the trade-mark has actually been used; a state- 
 ment of the mode in which the same is applied and affixed to the goods, 
 and the length of time during which the trade-mark has been used upon 
 the goods specified. A description of the trade-mark itself shall be in- 
 cluded, if desired by the applicant or required by the commissioner, 
 provided such description is of a character to meet the approval of the 
 commissioner. (See sec. 29 of the act of February 20, 1905, and Forms 
 2, 4, 6, and 10, pp. 31, 32, 33, and 36.) 
 
 (c) A declaration complying with section 2 of the act of February 
 20, 1905, as amended by the act of February 18, 1909. (See Forms 3, 5, 
 7, 8, 9, and 11, pp. 31, 33, 34, 35, and 36.) 
 
 (d) A drawing of the trade-mark, signed by the applicant, or his at- 
 torney, which shall be a facsimile of the same as actually used upon 
 the goods. (See rules 36 and 37 and specimen drawing between pp. 40 
 and 41.) 
 
 (e) Five specimens (or facsimiles, when, from the mode of applying 
 or affixing the trade-mark to the goods, specimens can not be furnished) 
 of the trade-mark as actually used upon the goods. 
 
 if) A fee of $10. 
 
 23. The petition, the statement, and the declaration must be in the 
 English language and written on one side of the paper only. 
 
 24. The name of the applicant will appear in the certificate of regis- 
 tration precisely as it is signed to the statement of the application, 
 and, therefore, the signature to the statement must be the correct sig- 
 nature of the applicant, and the name of the applicant wherever it ap- 
 
Registbation of Trade-Makks [753] 19 
 
 pears in the papers of the application will be made to agree with the name 
 as signed to the statement. 
 
 25. No information will be given, without authority of the applicant, 
 respecting the filing of an application for the registration of a trade- 
 mark by any person, or the subject-matter thereof, unless it shall, in 
 the opinion of the commissioner, be necessary to the proper conduct 
 of business before the office. 
 
 26. All apphcations for registration pending in the Patent Office 
 
 at the time of the passage of the act of February 20, 
 1905,'secs, u^^d 24." 1905, may be amended with a view to bringing them 
 
 and the certificates issued under such applications 
 under the provisions of said act, and the prosecution of such appli- 
 cations may be proceeded with under its provisions without the payment 
 of further fee. When such an appHcation is amended to bring it under 
 the act of February 20, 1905, it will be given a serial number and a 
 date of filing under said act. 
 
 A trade-mark, registered under the act of March 3, 1881, may be 
 registered under the act of February 20, 1905, but the application for 
 such registration ■ will be subject to examination in the same manner 
 as other applications filed under said act of February 20, 1905. 
 
 27. An application for registration of a trade-mark, filed in this 
 
 country by any person who has previously regularly 
 i905,'se°!4.^^''' ^' filsd in any foreign country which, by treaty, conven- 
 tion, or law, affords similar privileges to the citizens 
 of the United States an application for registration of the same trade- 
 mark, shall be accorded the same force and effect as would be accorded 
 to the same application if filed in this country on the date on which 
 application for registration of the same trade-mark was first filed in 
 such foreign country: Provided, That such apphcation be filed in this 
 country within four months from the date on which the application was 
 first filed in such foreign country. 
 
 28. Every appUcant for registration of a trade-mark, or for renewal 
 
 of registration of a trade-mark, who is not domiciled 
 mtseta^^^' ^' within the United States, shall, before the issuance of 
 
 the certificate of registration, designate, by a notice in 
 writing, filed in the Patent Office, some person residing within the 
 United States on whom process or notice of proceedings affecting the 
 right of ownership of the trade-mark of which such applicant may 
 claim to be the owner may be served. This notice shall be indorsed 
 upon the file wrapper of the application. 
 
 29. In proceedings relating to an application, or to a registration 
 
 under the act of February 20, 1905, it shall be deemed 
 
 i905*9ef 3^^^' ^''' sufficient to serve notice upon the applicant, regis- 
 
 ' '°°' ' trant, or representative, by leaving a copy of the process 
 
 or notice of proceedings addressed to him at the last address of which 
 
 the Commissioner of Patents has been notified. 
 
 30. A trade-mark may, at the option of the appUcant, be registered 
 
 on a single application, for any or all goods comprised 
 Aot of May 4, jj^ g^ single class of merchandise, provided the particular 
 1906, sec. . description of goods be stated, and provided that the 
 
 mark has been actually used upon all of the goods specified. (See classi- 
 fication of merchandise, p. 41.) 
 
20 [754] Registration of Tbade-Marks 
 
 31. The application must be accompanied by a written declaration, 
 
 verified by the appHcant, or by a member of the firm, 
 i905?8M. 2. ^ ■ ^' or by an officer of the corporation or association apply:- 
 i909,'Beof2.*^^''' ^^' ^°S) to the effect that he believes himself, or the firm, 
 
 corporation, or association in whose behalf he makes 
 the declaration, to be the owner of the trade-mark sought to be regis- 
 tered, and that no other person, firm, corporation, or association, to 
 the best of his knowledge and belief, has the right to use the trade- 
 mark in the United States, either in the identical form or any such 
 near resemblance thereto as might be calculated to deceive; that such 
 trade-mark is used in commerce among the several States, or with 
 foreign nations, or with Indian tribes; that the description and drawing 
 truly represent the trade-mark sought to be registered; that the speci- 
 mens (or facsimiles) show the mark as actually used upon the goods; 
 and that the facts set forth in the statement are true. (See rule 17 and 
 Forms 3, 5, 7, 8, 9, and 11, pp. 34, 35, 36, 37, and 38.) 
 
 32. Where application is made under section 5 of the act of Feb- 
 AotofFeb 18 1911 "^^""y ^^> 1905, ou tlje grouud that the mark has been 
 
 in actual and exclusive use as a trade-mark by the 
 applicant, or his predecessors from whom he derived title, for 10 years 
 next preceding February 20, 1905, the applicant shall, in addition to 
 the requirements of section 2 of said act, make oath to such actual 
 iise of the mark as a trade-mark by himself or his predecessors, or by 
 those from whom title to the same is derived, for the period specified, 
 and that, to the best of his knowledge and belief, such use has been 
 exclusive. (See Form 8, p. 36.) 
 
 33. If the applicant resides or is located in a foreign country, the 
 
 declaration required, unless the application be pre- 
 i905?8ec.'2.^*''' ^°' sented imder the provisions of section 3 of the act of 
 
 May 4, 1906, shall also set forth that the trade-mark 
 has been registered by the appHcant, or that an application for the 
 registration thereof has been filed by him in the foreign country in which 
 he resides or is located, and shall give the date of such registration, or 
 of the application therefor, as the case may be. In such cases it shall 
 not be necessary to state that the mark has been used in commerce 
 with the United States or among the States thereof. 
 If the application be presented under the provisions of section 3 of 
 
 the act of May 4, 1906, the declaration, in addition 
 i906;*8ec°'3.'^*^ *' to the requirements of rule 31, must state that the 
 
 applicant has a manufacturing establishment within 
 the territory of the United States and that the goods upon which the 
 trade-mark is used are the product of such establishment. 
 
 34. The declaration may be made before any person within the 
 
 United States authorized by law to administer oaths, 
 m5!e^^.27"^' ^°' or, when the applicant resides in a foreign country, 
 
 before any minister, charg^ d'affaires, consul, or com- 
 mercial agent holding commission under the Government of the United 
 States, or before any notary public, judge, or magistrate having an 
 oflScial seal and authorized to administer oaths in the foreign country in 
 which the applicant may be, whose authority shall be proved by the 
 certificate of a diplomatic or consular officer of the United States, the 
 declaration being attested in all cases, in this and other countries, by 
 
Registration of Trade-Mabks [755] 21 
 
 the proper ofBcial seal of the officer before whom the same is made, ex- 
 cept that no acknowledgment may be taken before any attorney ap- 
 pearing in the case. When the person before whom the declaration is 
 made is not provided with a seal, his official character shall be established 
 by competent evidence, as by a certificate of a clerk of a court of record, 
 or other proper officer having a seal. 
 
 35. Amendment of the declaration will not be permitted. If that 
 filed with the application be faulty or defective, a substitute declaration 
 must be filed. 
 
 DRAWING 
 
 36. (1) The drawing must be made upon pure white paper of a 
 thickness corresponding to two-sheet Bristol board. The surface of 
 the paper must be calendered and smooth. India ink alone must be 
 used, to secure perfectly black and solid lines. 
 
 (2) The size of a sheet on which a drawing is made must be exactly 
 10 by 15 inches. One inch from its edges a single marginal liiie is to 
 be drawn, leaving the "sight" precisely 8 by 13 inches. Within this 
 margin all work and signatures must be included. One of the shorter 
 sides of the sheet is regarded as its top, and, measuring downwardly 
 from the marginal line, a space of not less than 134 inches is to be left 
 blank for the heading of title, name, number, and date. (See specimen 
 drawing between pp. 38 and 39.) 
 
 (3) AH drawings must be made with the pen only. Every line and 
 letter, signatures included, must be absolutely black. This direction 
 applies to all lines, however fine, and to shading. All lines must be 
 clean, sharp, and solid, and they must not be too fine or crowded. Sur- 
 face shading, when used, should be open. 
 
 (4) The name of the proprietor of the trade-mark, signed by him- 
 Act of Feb. 20, Self or by his attorney of record, must be placed at the 
 
 ^^Art^^of^Feb. 18, lowcr right-hand corner of the sheet within the mar- 
 1909, sec. 1. ' ginal Knes, but in no instance should it encroach upon 
 
 the drawing. 
 
 (5) When the view is longer than the width of the sheet, the sheet 
 should be turned on its side and the heading should be placed at the 
 right and the signature at the left, occupying the same space and posi- 
 tion as in an upright view and being horizontal when the sheet is held 
 in an upright position. 
 
 (6) Drawings transmitted to the office should be sent flat, protected 
 by a sheet of heavy binder's board, or should be rolled for transmission 
 in a suitable mailing tube. They should never be folded. 
 
 (7) An agent's or attorney's stamp, or advertisement, or written 
 address will not be permitted upon the face of a drawing, within or 
 without the marginal line. 
 
 37. The office, at the request of applicants, will furnish the drawings 
 at cost. 
 
 EXAMINATION OF APPLICATIONS 
 
 38. All complete applications for registration are considered, in the 
 
 first instance, by the examiner in charge of trade- 
 Act of Feb. 20, jnarks. Whenever, on examination of an application, 
 ' ^^°' ' registration is refused for any reason whatever, the 
 
 applicant will be notified thereof. The reasons for such refusal will 
 
22 [756] Registhation of Tkade-Mabks 
 
 be stated, and such information and references will be given as may 
 be useful in aiding the applicant to judge of the propriety of further 
 prosecuting his application. 
 
 39. The examination of an application and the action thereon will 
 be directed throughout to the merits, but in each letter the examiner 
 shall state or refer to all his objections. 
 
 40. If, on examination of an application for the registration of a 
 
 trade-mark, it shall appear that the applicant is en- 
 
 i905,''sec°*6.^*' ^' titled to have his trade-mark registered under the 
 
 provisions of the law, the mark will be published in 
 
 the Official Gazette at least once. Such pubhcation shall be at least 
 
 thirty days prior to the date of registration. 
 
 If no notice of opposition be filed within thirty days after such pub- 
 lication, the applicant or his attorney will be duly notified of the al- 
 lowance of his application, and a certificate of registration will be issued 
 as provided in rule 58. 
 
 The weekly issue closes on Thursday, and the certificates of regis- 
 tration of that issue bear date as of the fourth Tuesday thereafter. 
 
 AMENDMENTS 
 
 41. The statement may be amended to correct informalities, or to 
 avoid objections made by the office, or for other reasons arising in the 
 course of examination, but no amendments to the description or draw- 
 ing of the trade-mark will be permitted unless warranted by some- 
 thing in the specimens (or facsimiles) as originally filed. 
 
 42. In every amendment the exact word or words to be stricken 
 out or inserted in the statement must be specified and the precise point 
 indicated where the erasure or insertion is to be made. All such amend- 
 ments must be on sheets of paper separate from the papers previously 
 filed, and written on but one side of the paper. 
 
 Erasures, additions, insertions, or mutilations of the papers and 
 records must not be made by the applicant or attorney. 
 
 43. When an amendatory clause is amended, it must be wholly re- 
 written, so that no interlineation or erasure shall appear in the clause, 
 as finally amended, when the application is passed to issue. If the 
 number or nature of the amendments shall render it otherwise difficult 
 to consider the case, or to arrange the papers for printing or copying, 
 the examiner may require the entire statement to be rewritten. 
 
 44. After allowance, the examiner will exercise jurisdiction over an 
 application only by special authority from the commissioner. 
 
 Amendments may be made after the allowance of an application, if 
 the case has not been printed, on the recommendation of the examiner, 
 approved by the commissioner, without withdrawing the case from 
 issue. 
 
 45. After the completion of the application, the oflSce will not return 
 the papers for any purpose whatever. If the applicant has not pre- 
 served copies of the papers which he wishes to amend, the office will 
 furnish them on the usual terms. 
 
 45a. If an appUcant fail to prosecute his application within one 
 year prior to November 1, 1911, or for one year after the date when 
 the last official notice of any action by the office was mailed to him, the 
 application will be held to be abandoned, as set forth in rule 57a. 
 
Registration of Teade-Maeks [757] 23 
 
 45b. Whenever action upon an application is suspended upon re- 
 quest of an applicant and whenever an applicant has been called upon 
 to put his application in condition for interference, the period of one 
 year running against such apphcation shall be considered as beginning 
 at the date of the last official action preceding such actions. 
 
 45c. Acknowledgment of the filing of an application is an official 
 action. Suspensions will only be granted for good and sufficient cause 
 and for a reasonable time specified. 
 
 45d. Only one suspension will be granted by the examiner of trade- 
 marks. Any further suspension must be approved by the commissioner. 
 
 INTERFERENCE, OPPOSITION, AND CANCELLATION 
 
 46. Whenever application is made for the registration of a trade- 
 mark which is substantially identical with a trade-mark appropriated 
 to goods of the same descriptive properties, for which a certificate of 
 registration has been previously issued to another, or for registration 
 of which another had previously made application, or which so nearly 
 resembles such trade-mark, or a known trade-mark owned and used 
 by another, as, in the opinion of the commissioner, to be likely to be 
 mistaken therefor by the public, an interference will be declared. 
 
 The practice in trade-mark interferences will follow, as nearly as 
 •practicable, the practice in interferences between applications for 
 patents. 
 
 47. Before the declaration of interference, all preliminary questions 
 must have been settled by the examiner in charge of trade-marks, and ' 
 the trade-mark which is to form the subject-matter of the contro- 
 versy must have been decided to be registrable, and must have 
 been published at least once in the Official Gazette of the Patent 
 Office. 
 
 Whenever two or more applicants are found to be claiming substan- 
 tially the same registrable trade-mark, and the application of one of 
 the applicants is ready for publication, the examiner in charge of trade- 
 marks may require the other applicants to put their applications in 
 condition for publication within a time specified, in order that an inter- 
 ference may be declared. If any party fail to put his apphcation in 
 condition for publication within the time specified, the declaration of 
 interference will not be delayed, but after final judgment the application 
 of such party will be held for revision and restriction, subject to inter- 
 ference with other apphcations or registered trade-marks. 
 
 48. The examiner iff charge of interferences may, either before or in 
 his final decision in an interference or opposition, direct the atten- 
 tion of the commissioner to any matter which may have come to his 
 notice which can not be acted upon by him, which in his opinion pre- 
 cludes a proper determination of questions raised by the proceeding, 
 or which amounts to a statutory bar to registration of the mark to 
 any or all of the parties. The commissioner may, before judgment, 
 suspend the interference or opposition and remand the same to the 
 examiner in charge of trade-marks for his consideration of the matters 
 to which attention has been directed. If the case be not so remanded, 
 the examiner in charge of trade-marks will, after judgment, consider 
 any matter affecting right to registration which may have been brought 
 
24 [758] Registration of Trade-Mabks 
 
 to his attention, unless the same shall have been previously disposed 
 of in the proceeding. From the decision of the examiner in charge of 
 trade-marks appeals may be taken as in other cases. 
 
 49. Motions to dissolve an interference upon the ground that no 
 interference in fact exists, or that there has been such irregularity in 
 declaring the same as will preclude a proper determination of the ques- 
 tion of the right of registration, or which deny the registrability of an 
 applicant's mark, should contain a full statement of the grounds relied 
 upon, and should, if possible, be made not later than the thirtieth 
 day after the notices of the interference have been mailed. Such mo- 
 tions and all motions of a similar character, if in the opinion of the 
 Commissioner they be in proper form, will be heard and determined by 
 the examiner of trade-marks, due notice of the day of hearing being 
 given by the office to all parties. If in the opinion of the Commissioner 
 the motion be not in proper form, or if it be not brought within the 
 time specified and no satisfactory reason be given for the delay, it will 
 not be considered and the parties will be so notified. Setting a motion 
 for hearing by the examiner of trade-marks will act as a stay of pro- 
 ceedings pending the determination of the motion. 
 
 When the motion has been decided by the examiner in charge of 
 trade-marks, the files and papers, with his decision, will be sent at 
 once to the docket clerk. 
 
 Motions to shift the burden of proof should be made before, and 
 will be determined by, the examiner in charge of interferences. No 
 appeal from the decision on such motion will be entertained, but the 
 matter may be reviewed on appeal from the final decision upon the 
 question of priority. 
 
 50. The decision of the examiner in charge of trade-marks, upon a 
 motion for dissolution, will be binding upon the examiner in charge of 
 interferences unless reversed or modified on appeal. Unless appeal 
 be taken within the time limited for appeal, the examiner in charge 
 of trade-marks will return the files and papers with his decision to the 
 examiner in charge of interferences. 
 
 51. Any person who believes he would be damaged by the registra- 
 
 tion of a mark may oppose the same by filing a written 
 1905, sees. 6 and 14. ' uoticB of oppositiou. Stating the grouuds therefor, 
 i907'Beo.*2.'^"' ^' within 30 days after the pubUcation of the mark 
 
 sought to be registered, which notice of opposition 
 shall be accompanied by the fee required by law and shall be verified 
 by the person filing the same before one of the officers mentioned in 
 section 2 of the act of February 20, 1905. An opposition may be filed 
 by a duly authorized attorney, but such opposition shall be null and 
 void unless duly verified by the opposer, within a reasonable time after 
 such filing. A duplicate copy of the notice of opposition must be filed, 
 either with the notice of opposition or within a reasonable time after 
 the filing of the same. 
 
 52. Any person, deeming himself to be injured by the registration 
 
 of a trade-mark in the Patent Office, may, at any time, 
 l905^e°^3 ^' make application (see Form 13, p. 37) to the com- 
 missioner to cancel the registration thereof. Such 
 appUcation shall be filed in duplicate, shall state the grounds for can- 
 cellation, and shall be verified by the person filing the same, before 
 
Registration of Trade-Marks f759] 25 
 
 one of the officers mentioned in section 2 of the act of February 20, 
 1905. (See rule 34.) 
 
 53. If it shall appear, after a hearing before the examiner of in- 
 
 terferences, that the registrant was not entitled to the 
 igos'seo! li.^^' ^' use of the mark at the date of his application for 
 
 registration thereof, or that the mark is not used by 
 the registrant, or has been abandoned, and the examiner in charge 
 of interferences shall so decide, the commissioner shall cancel the 
 registration of the mark, unless appeal be taken within the limit 
 fixed. 
 
 54. In cases of opposition', and of applications for cancellation, the 
 examiner in charge of trade-marks shall forward the files and papers 
 to the examiner in charge of interferences, who shall give notice thereof 
 to the applicant or registrant. The applicant or registrant must make 
 answer at such time, not less than 30 days from the date of the notice, 
 as shall be fixed by the examiner in charge of interferences. 
 
 55. The proceedings, on oppositions, and on applications for can- 
 cellation, shall follow, as nearly as practicable, the practice in inter- 
 ferences between applications for patents. 
 
 APPEALS 
 
 56". Every applicant whose mark has been twice refused registration 
 by the examiner of trade-marks for the same reasons, upon grounds 
 involving the merits of the application, may appeal to the commissioner 
 in person upon payment of the fee required by law. Such refusal may 
 be considered by the examiner of trade^na^ks as final. 
 
 There must have been two refusals to register the mark as originally 
 filed, or, if amended in matter of substance, the amended mark, and, 
 except in cases of division, all preliminary and intermediate questions 
 relating to matters not affecting the merits of the application must 
 have been settled before the case can be appealed to the com- 
 missioner. 
 
 Upon receiving a petition stating concisely and clearly any proper 
 question which has been acted upon by the examiner in charge of trade- 
 marks and which does not involve the merits of the trade-mark claimed, 
 the refusal of registration of the trade-mark, or a requirement for di- 
 vision, and also stating the facts involved and the point or points to be 
 reviewed, an order will be made fixing a time for hearing such petition 
 by the commissioner, and directing the examiner to furnish a written 
 statement of the grounds of his decision upon the matters averred in 
 such petition within five days after being notified of the order fixing 
 the day of hearing. The examiner shall, at the time of making such 
 statement, furnish a copy thereof to the petitioner. No fee is required 
 for such a petition. 
 
 67. From the adverse decision of the Commissioner of Patents upon 
 the right of an applicant to register a trade-mark, or 
 1905*860*9^*' '^°' from the decision of the commissioner in cases of inter- 
 ference, opposition, or cancellation, an appeal may be 
 taken to the court of appeals of the District of Columbia in the manner 
 prescribed by the rules of that court. 
 
^6 [760] REGisTBATioisr op Trade-Marks 
 
 ABANDONED APPLICATIONS 
 
 57a. An abandoned trade-mark application is one which has not 
 been prosecuted within one year prior to November 1, 1911, or com- 
 pleted and prepared for examination within one year after the filing 
 of the petition, or which the applicant has failed to prosecute within 
 one year after any action therein of which notice has been duly given 
 or which the apphcant has expressly abandoned by filing in the office a 
 written declaration of abandonment, signed by himself and assignee, 
 if any, identifying his application by serial number and date of filing. 
 
 57b. Prosecution of an application to save it from abandonment must 
 include such proper action as the condition of the case may require. 
 The admission of an amendment not responsive to the last official action, 
 or refusal to admit the same, and any proceedings relative thereto, shall 
 not operate to save the application from abandonment. 
 
 57c. Before an appUcation abandoned by failure to complete or prose- 
 cute can be revived as a pending application it must be shown to the 
 satisfaction of the commissioner that the delay in the prosecution of the 
 same was unavoidable. 
 
 57d. When a new application is filed in place of an abandoned or 
 rejected application, a new petition, statement, declaration, drawing, 
 and fee will be required. 
 
 ISSUE, DATE, AND DURATION OF CERTIFICATE 
 
 58. When the requirements of the law and of the rules have been 
 
 complied with, and the office has adjudged a trade- 
 i905,'seo°ii.^*''' ^°' mark registrable, a certificate will be issued, signed 
 
 by the commissioner, under the seal of the Patent 
 Office, to the effect that the applicant has complied with the law and 
 that he is entitled to registration of his trade-mark. The certificate 
 shall state the date on which the application for registration was re- 
 ceived in the Patent Office. Attached to the certificate will be a pho- 
 tolithographed copy of the drawing of the trade-mark and a printed 
 copy of the statement and of the declaration. 
 
 59. A certificate of registration shall remain in force 20 years from 
 
 its date, except that, in case a trade-mark be previously 
 1905,'seSf 12^*' ^°' registered in a foreign country, such certificate shall 
 
 cease to be in force on the day on which the trade-mark 
 ceases to be protected in such foreign country, and shall in no case 
 remain in force more than 20 years unless renewed. 
 
 60. A certificate of registration may be, from time to time, renewed 
 
 for like periods on payment of the renewal fees re- 
 1905,'secl. 12 and u. Quired, upon request by the registrant, his legal re- 
 presentatives, or transferees of record in the Intent 
 Office, and such request may be made at any time not more than six 
 months prior to the expiration of the period for which the certificate 
 of registration was issued or renewed. 
 
 61. Certificates of registration in force on the 1st day of April, 1905, 
 
 shall remain in force for the periods for which they were 
 i905?eeo 12. ^°' issucd, and shall be Renewable on the same conditions 
 
 and for the same periods as certificates issued under 
 the provisions of the act of February 20, 1905, and, when so re- 
 
Registration of Tbade-Marks [761] 27 
 
 Hewed, shall have the same force and effect as certificates issued there- 
 under. 
 
 62. A certificate of registration shall not be issued to an applicant 
 
 located in a foreign country for any trade-mark, for 
 i905'aeof4.^''''' ^°' registration of which he has filed an application in such 
 
 foreign country, until such mark has been actually 
 registered by him in the country in which he is located. 
 
 ASSIGNMENTS 
 
 63. Every registered trade-mark and every mark for the registra- 
 
 tion of which application has been made, together 
 1905 'see! la*" ^°' wit'^ the application for registration thereof, shall be 
 
 assignable in connection with the good will of the 
 business in which the mark is used. Such assignment must, be by an 
 instrument in writing and duly acknowledged according to the laws 
 of the country or State in which the same is executed. Provision is 
 made for recording such assignments in the Patent Office; but no such 
 assignment will be recorded unless it is in the English language, nor 
 unless an application for the registration of the mark shall have been 
 first filed in the Patent Office, and such assignment must identify the 
 application by serial number and date of filing, or, when the mark has 
 been registered, by the certificate number and the date thereof. No 
 particular form of assignment is prescribed. 
 
 64. An assignment shall be void as against any subsequent pur- 
 
 chaser for a valuable consideration, without notice, 
 1905^*360.^0^^''' ^°' unless it be recorded in the Patent Office within three 
 months from the date thereof. 
 
 65. The certificate of registration may be issued to the assignee of 
 
 the applicant, but the assignment must first be en- 
 igoL'sec* iL *• ^°' tered of record in the Patent Office. 
 
 COPIES AND PUBLICATIONS 
 
 66. After a trade-mark has been registered, printed copies of the 
 
 statement and declaration in each case, with a photo- 
 igos'seca iT'Sid 14 lithographed copy of the drawing of the trade-mark, 
 
 may be furnished by the office upon the payment of 
 the fee. (See rule 69.) 
 
 *67. An order for a copy of an assignment must give the liber and 
 page of the record, as well as the name of the applicant; otherwise an 
 extra charge will be made for the time consumed in making a search 
 for such assignment. 
 
 68. The Official Gazette of the Patent Office will contain a list of 
 all trade-marks registered, giving, in each case, a statement of the 
 goods to which the trade-mark is applied, the name and address of the 
 applicant, the date of filing and serial number of the application, and 
 the date of the pulilication of the trade-mark in the Official Gazette. 
 
28 [762] Registration of Trade-Mabks 
 
 * 
 FEES 
 69. 
 
 On filing each original application for registration of a trade-mark $10.00 
 
 On filing each application for renewal of the registration of a trade-mark.. . . 10.00 
 
 On filing notice of opposition to the registration of a trade-mark 10.00 
 
 On appeal from the examiner in charge of trade-marks to the Commissioner of 
 
 Patents 15.00 
 
 On appeal from the decision of the examiner in charge of interferences, award- 
 ing ownership of a trade-mark or canceling the registration of a trade-mark, 
 
 to the Commissioner of Patents 15.00 
 
 On appeal from the decision of the examiner in charge of trade-marks, on a 
 motion for the dissolution of an interference on the ground of noninterference 
 
 in fact or nonregistrability of a mark, to the Commissioner of Patents 15.00 
 
 For manuscript copies, for every 100 words or fraction thereof .10 
 
 For recording every assignment, power of attorney, or other paper of 300 
 
 wordsorunder 1.00 
 
 Of over 300 and under 1,000 words 2.00 
 
 And for each additional thousand words or fraction thereof, 1.00 
 
 For abstracts of title: 
 
 For the search, one hour or less, and certificate 1.00 
 
 Each additional hour or fraction thereof .6(1 
 
 For each brief from the digest of assignments of 200 words or less .20 
 
 Each additional hundred words or fraction thereof 10 
 
 For searching title or records, one hour or less .50 
 
 Each additional hour or fraction thereof 50 
 
 For a single printed copy of statement, declaration, and drawing 05 
 
 If certified, for the grant, additional .50 
 
 For the certificate 25 
 
 70. All payments of money required for office fees must be made 
 Eev Stat 4935 ^^ Specie, Treasury notes, national-bank notes, Treas- 
 ury certificates of deposit, post-office money orders, 
 
 bank drafts, or certified checks. Money orders and checks should be 
 made payable to the "Commissioner of Patents." Payment may also 
 be made to the Treasurer, or to any of the assistant treasurers of the 
 United States, or to any of the depositaries, national banks, or re- 
 ceivers of public money, designated by the Secretary of the Treasury 
 for that purpose, who shall give the depositor a receipt or certificate 
 of deposit therefor. The duplicate receipt or certificate of deposit must 
 be filed in the Patent Office within ten days after the money is paid. 
 
 71. Money sent by mail to the Patent Office will be at the risk of 
 the sender. Letters containing money should be registered. 
 
 REPAYMENT OP MONEY 
 
 72. Money paid by actual mistake, such as a payment in excess, or 
 Rev. Stat., 4936; ^^^^^ "o* rei^uired by law, or by neglect or misinfor- 
 
 jict ofFeb. 20, 1905! matiou on the part of the office, will be refunded; but 
 a mere change of purpose after the payment of money, 
 as when a party desires to withdraw his application for the registra- 
 tion of a trade-mark, or to withdraw an appeal, will not entitl;- a party 
 to demand such a return. 
 
 NOTICE OF REGISTRATION 
 
 73. It shall be the duty of the registrant to give notice to the public 
 that a trade-mark is registered, either by affixing thereon the words 
 
 "Registered in U. S. Patent Office," or "Reg. U. S. 
 i9os?seo°.'28?^°''' ^°' P^t. Off.," or, when from the character and size of the 
 
 trade-mark, or from its manner of attachment to the 
 article to which it is appropriated, this can not be done, then by affixing a 
 label bontaining a like notice to the package or receptacle wherein the 
 
Registkation of Trade-Mabks [763] 29 
 
 article or articles are inclosed; otherwise, on a suit for infringement, no 
 damages shall be recovered except on proof that the defendant was duly 
 notified of infringement, and continued the same after such notice. 
 
 AMENDMENTS OF THE RULES 
 
 74. All amendments of the foregoing rules will be published in the 
 Official Gazette. 
 
 QUESTIONS NOT SPECIFICALLY PROVIDED FOR 
 
 75. All cases not specifically defined and provided for in these rules 
 will be decided in accordance with the merits of each case under the 
 authority of the commissioner, and such decision will be communi- 
 cated to the interested parties in writing. 
 
 Thomas Ewing, 
 Commissioner of Patents. 
 
 The foregoing rules were approved October 14, 1911, by the Secre- 
 tary of the Interior. 
 
 RECORDING TRADE-MARKS WITH COLLECTORS OF CUSTOMS 
 Tbeasuby Department, September 7, 1909. 
 To collectors of customs and others concerned: 
 
 The attention of officers of the customs and others is invited to the 
 following provisions of section 27 of the act approved February 20, 
 1905, effective April 1, 1905: 
 
 Sec. 27. That no article of imported merchandise which shall copy or simulate 
 the name of any domestic manufacture, or manufacturer or trader, or of any manu- 
 facturer or trader located in anjr foreign country which, by treaty, convention, or 
 law affords similar privileges to citizens of the United States, or which shall copy or 
 simulate a trade-mark registered in accordance with the provisions of this act, or 
 shall bear a name or mark calculated to induce the public to believe that the article 
 is manufactured in the United States, or that it is manufactured in any foreign coun- 
 try or locality other than the country or locality in which it is in fact manufactured, 
 shall be admitted to entry at any customhouse of the United States; and, in order 
 to aid the officers of the customs in enforcing this prohibition, any domestic manu- 
 facturer or trader, and any foreign manufacturer or trader, who is entitled under the 
 provision of a treaty, convention, declaration, or agreement between the United 
 States and any foreign country to the advantages afforded by law to citizens of the 
 United States in respect to trade-marks and commercial names, may require his 
 name and residence, and the name of the locality in which his goods are manufac- 
 tured, and a copy of the certificate of registration of his' trade-mark, issued in accord- 
 ance with the provisions of this act, to be recorded in books which shall be kept for 
 this purpose in the Department of the Treasury, under such regulations as the Secre- 
 tary of the Treasury shall prescribe, and rnay furnish to the department facsimiles 
 of his name, the name of the locality in which his goods are manufactured, or of hia 
 registered trade-mark; and thereupon the Secretary of the Treasury shall cause one 
 or more copies of the same to be transmitted to each collector or other proper officer 
 of customs. 
 
 The provisions of this section give to manufacturers and traders 
 located in foreign countries, which, by treaty stipulations, give similar 
 privileges to the United States, the same advantages as are given to 
 domestic manufacturers and traders. The act does not affect names 
 or trade-marks heretofore recorded in the Treasury Department, and 
 as to them the protection granted so far as concerns prohibition of 
 importation will continue. Nor does the act appear to make it com- 
 pulsory on the part of domestic manufacturers or traders, or foreign 
 
30 [764] Registration of Thade-Mabks 
 
 manufacturers or traders, to register names (not trade-marks) with 
 the Commissioner of Patents, in order to prevent illegal importations. 
 
 Domestic manufacturers and traders and foreign manufacturers 
 and traders, to avail themselves of the privileges of the act, so far as 
 concerns trade-marks, are required to register their trade-marks with 
 the Commissioner of Patents before the Treasury Department can act. 
 
 Apphcations for recording the names and trade-marks in this depart- 
 ment under section 27 will state the name of the owner, his residence, 
 and the locahty in which his goods are manufactured, and in the case 
 of trade-marks should be accompanied with a certified copy of the cer- 
 tificate of registration of his trade-mark issued in accordance with the 
 provisions of the act and the names of the ports to which facsimiles 
 should be sent. In the case of the name of a domestic manufacture, 
 manufacturer, or trader (not registered as a trade-mark in the Patent 
 Office), the application must be accompanied by the proper proof of 
 ownership and proof as to the country or locality in which his goods 
 are manufactured, which must consist of the affidavit of the owner or 
 one of the owners, certified by an officer entitled to administer oaths 
 and having a seal. 
 
 On the receipt by a customs officer of any such facsimiles, with in- 
 formation from the department that they have been recorded therein, 
 he will properly record and file them and will exercise care to prevent 
 the entry at the customhouse of any article of foreign manufacture 
 copying or simulating such mark. 
 
 No fees are charged for recording trade-marks in the Treasury De- 
 partment and customhouses. 
 
 A sufficient number of facsimiles should be forwarded to -enable the 
 department to send one copy to each port named in the application, 
 with ten additional copies for the files of the department. 
 
 Especial attention is invited to the provision in said section pro- 
 hibiting the entry of articles "which shall bear a name or mark calcu- 
 lated to induce the public to believe that the article is manufactured 
 in the United States, or that it is manufactured in any foreign country 
 or locality other than the country or locality in which it is in fact man- 
 ufactured," and collectors and other officers of the customs are instructed 
 to use due diligence to prevent violations of this provision. 
 
 The provisions of the act also apply to Porto Rico, the Philippine 
 Islands, Hawaii, and any other territory under the jurisdiction and con- 
 trol of the United States. 
 
 Attention is also invited to the following provisions of section 3 of 
 the act approved May 4, 1906, effective July 1, 1906: 
 
 Sec. 3. That any owner of a trade-mark who shall have a manufacturing estabhsh- 
 ment within the territory of the United States shall be accorded, so far as the regis- 
 tration and protection of trade-marks used on the products of such establishment 
 are concerned, the same rights and privileges that are accorded to owners of trade- 
 marks domiciled within the territory of the United States by the act entitled "An 
 act to authorize the registration of trade-marks used in commerce with foreign nar 
 tions or among the several States or with Indian tribes, and to protect the same," ap- 
 proved February 20, 1905. 
 
 This department has ruled that affidavits accompanying applications 
 for recording the names of foreign manufactures, manufacturers, or 
 traders (not registered as trade-marks in the Patent Office) may be 
 certified by American consular officers. 
 
 JAMES B. REYNOLDS, Acting Secretary. 
 
FORMS 
 
 The following forms illustrate the manner of preparing papers for 
 applications for registration of trade-marks. Applicants will find their 
 business facilitated by following them. 
 
 (1) PETITION 
 
 To the Commissioner of Patents: 
 The undersigned presents herewith a drawing and five specimens 
 
 (Or facsimiles.) 
 
 of his trade-mark, and requests that the same, together with the ac- 
 companying statement and declaration, may be registered in the United 
 States Patent Office in accordance with the law in such cases made and 
 provided. 
 
 John Doe. 
 
 (Signature of applicant.) 
 
 Dated June 15, 1906. 
 
 (Date of execution.) 
 
 (2) STATEMENT FOR AN INDIVIDUAL 
 
 To all whom it may concern: 
 
 Be it known that I, John Doe, a citizen of the United States of America, 
 
 (Name of applicant.) (Citizenship of applicant.) 
 
 residing at Philadelphia, county of Philadelphia, State of Pennsylvania, 
 
 (Applicant's address.) 
 
 and doing business at No. 1300 Chestnut Street, in said city, have adopted 
 
 (Business address.) 
 
 and used the trade-mark shown in the accompanying drawing ' for 
 canned fruits and vegetables, in class No. 46, Foods and ingredients of foods. 
 
 (Particular description of goods.) (Number and title of class — see classification.) 
 
 The trade-mark has been continuously used in my business (and in 
 the business of my predecessor, Richard Roe,^) since February 1, 1889. 
 
 (Name of predecessor, if any.) (Earliest date of use.) 
 
 The trade-mark is applied or affixed to the goods, or to the packages 
 containing the same, by placing thereon a printed label on which the trade- 
 
 (Or state other mode or modes of application.)' 
 
 mark is shown. 
 
 John Doe. 
 
 (Signature of applicant.) 
 
 (First name must be given in full.) 
 
 (3) DECLARATION FOR AN INDIVIDUAL 
 
 State of Pennsylvania, > g. 
 County of Philadelphia, ) 
 John Doe, being duly sworn, deposes and says that he is the appli- 
 
 (Name of applicant.) i i t i p 
 
 cant named in the foregomg statement; that he believes the foregomg 
 statement is true; that he believes himself to be the owner of the trade- 
 
 1 See rule 22 (6) ^ ^^ applicant has had no predecessors, omit this clause. 
 
 [765] 31 
 
32 [766] Registration op Trade-Marks 
 
 mark sought to be registered; that no other person, firm, corporation, 
 or association, to the best of his knowledge and behef , has the right to 
 use said trade-mark in the United States, either in the identical form 
 or in any such near resemblance thereto as might be calculated to de- 
 ceive; that said trade-mark is used by him in commerce among the several 
 States of the United States (and between the United States and foreign 
 nations or Indian tribes, ^nd particularly with England and Germany) ; ' 
 
 (Names of foreign countries or Indian tribes.) 
 
 that the description and drawing presented truly represent the trade- 
 mark sought to be registered; and that the specimens show the trade- 
 
 (Or facfiimiles.) 
 
 mark aS actually used upon the goods. 
 
 John Doe. 
 
 (Signature of applicant.) 
 
 Subscribed and sworn to before me, a notary public, this 15th day of 
 
 (Official title.) (Date of 
 
 June, 1906. 
 
 execution.) 
 
 [l. s.] Richard Jones, 
 
 Notary Public. 
 
 (Official title.) 
 (4) STATEMENT FOR A FIRM 
 
 To all whom it may concern: 
 
 Be it known that we, John Doe & Co., a firm domiciled in New York, 
 
 (Firm name.) 
 
 county of New York, State of New York, doing business at No. 36 Fulton 
 
 (Domicile.) ^ (Business address.) 
 
 Street, in said city, and composed of the following members, John Doe, 
 Richard Roe, and Henry Poe, citizens of the United States of America, have 
 
 (Names of members of the firm.) (Citizenship of members of the firm.) 
 
 adopted and used the trade-mark shown in the accompanying drawing ^ 
 for surgical bandages, in class No. 44, Dental, medical, and surgical 
 
 (Particular description of goods.) (Number and title of class. See classification.) 
 
 appliances. 
 
 The trade-mark has been continuously used in our business (and 
 in the business of our predecessors, Doe & Roe,') since January 1, 1902. 
 
 (Name of predecessors, if any.) (Earliest date of use.) 
 
 The trade-mark is applied or affixed to the goods, or to the packages 
 containing the same, by placing thereon a printed label on which the trq,de- 
 
 (Or state other mode or modes 
 
 mark is shown. 
 
 of application.) 
 
 John Doe & Co., 
 
 (Firm name.) 
 
 By Richard Roe, 
 
 (Signature of a member of the firm.) 
 
 A Member of the Firm. 
 
 » If applicant docs not have commerce with foreign nations or Indian tribes, this clause should be 
 omitted. 
 
 2 See rule 22 (6). 
 
 3 If applicant has had no predecessors, omit this clause. 
 
Registration of Trade-Marks [767] 33 
 
 (6) DECLARATION FOR A FIRM 
 State of New York, ' ) 
 County of New York, \ ^^^ 
 
 Richard Roe, being duly sworn, deposes and says that he is a mem- 
 
 (Name of aiBant.) 
 
 bar of the firm, the applicant named in the foregoing statement; that 
 he believes the foregoing statement is true; that he believes said firm 
 IS the owner of the trade-mark sought to be registered; that no other 
 person, firm, corporation, or association, to the best of his knowledge 
 and belief, has the right to use said trade-mark in the United States, 
 either in the identical form or in any such near resemblance thereto as 
 might be calculated to deceive; that said trade-mark is used by said 
 firm in commerce among the several States of the United States (and 
 between the United States and foreign nations or Indian tribes, and 
 particularly with France and Spain 0; that the description and draw- 
 
 (Names of foreign countries 
 or Indian tribes.) 
 
 ing presented truly represent the trade-mark sought to be registered; 
 and that the specimens show the trade-mark as actually used upon the' 
 
 (Or facsimiles.) 
 
 goods. 
 
 Richard Roe. 
 
 oi , ., , , (Signature of affiant.) 
 
 bubscribed and sworn to before me, a notary public, this 16th day of 
 
 _ (Official title.) 
 
 January, 1906. 
 
 (Date of execution.) 
 
 [^- sj Harry Brown, 
 
 Notary Public. 
 
 (Official title.) 
 
 (6) STATEMENT FOR A CORPORATION OR ASSOCIATION 
 To all whom it may concern: 
 Be it known that Union Manufacturing Co., a corporation ' duly 
 
 (Name of applicant.) 
 
 organized under the laws of the State of Maine, and located in the city 
 
 (State or country under the 
 laws of whicia organized.) 
 
 of Brunswick, county of Cumberland, in said State, and doing business 
 
 (Location of corporation.) 
 
 at No. 326 Atlantic Avenue, in the city of Boston, State of Massachusetts, 
 
 (Business address.) 
 
 has adopted and used the trade-mark shown in the accompanying 
 drawing,^ for arc and incandescent electric lamps and electric heaters, 
 
 (Particular description of goods.) 
 
 in Class No. 21, Electrical apparatus, machines, and supplies. 
 
 (Number and title of class. See classification.) 
 
 The trade-mark has been continuously used in the business of said 
 corporation ^ (and in the business of its predecessors, John Doe Com- 
 
 (Name of predecessors, if any.) 
 
 pany *) since January SO, 1898. 
 
 (Give earliest date of use.) 
 
 ' If applicant does not have commerce with foreign nations or Indian tribes, this clause should be 
 omitted. 
 
 3 If the applicant be an association, the word "association" should be substituted for the word "cor- 
 poration.'' 
 
 "See rule 22 (6). 
 
 * If applicant has had no predecessors, omit this clause. 
 
34 [768] Registbation of Teade-Makks 
 
 The trade-mark is applied or affixed to the goods, or to the pack- 
 ages containing the same, by placing thereon a printed label on which the 
 trade-mark is shown. <°' ^'^'^ °"'^'' """^^ °'^ """"^^^ °* 
 
 application.) 
 
 Union Manufacturing Co., 
 
 (Name of applicant.) 
 
 By John Doe, Secretary. 
 
 (Signature of officer.) (Official title.) 
 
 (7) DECLARATION FOR A CORPORATION OR ASSOCIATION 
 
 State of Massachusetts, ) 
 County of Suffolk, I ^^•■ 
 John Doe, being duly sworn, deposes and says that he is the secre- 
 
 (Name of affiant.) 
 
 tary of the corporation,^ the apph'cant named in the foregoing state- 
 
 (Official title.) 
 
 ment; that he beheves the foregoing statement is true; that he beheves 
 said corporation • is the owner of the trade-mark sought to be regis- 
 tered; that no other person, firm, corporation, or association, to the 
 best of his knowledge and belief, has the right to use said trade-mark 
 in the United States, either in the identical form or in any such near 
 resemblance thereto as might be calculated to deceive; that said trade- 
 mark is used by said corporation ^ in commerce among the several 
 States of the United States (and between the United States and foreign 
 nations or Indian tribes and particularly with Italy and France ") ; that 
 
 (Names of foreign nations 
 or Indian tribes.) 
 
 the description and drawing presented truly represent the trade-mark 
 sought to be registered; and that the specimens show the trade-mark 
 
 (Or facsimiles.) 
 
 as actually used upon the goods. 
 
 John Doe. 
 
 (Signature of affiant.) 
 
 Subscribed and sworn to before me, a notary public, this 20th day 
 
 (Official title.) (Date of 
 
 of February, 1906. 
 
 execution.) 
 
 [l. s.] William Ghane, 
 
 Notary Public. 
 
 (Official title.) 
 
 (8) DECLARATION FOR APPLICANTS UNDER THE TEN- YEAR PROVISO » 
 
 State of Connecticut, ) 
 County of Fairfield, J ® ' 
 Richard Roe, being duly sworn, deposes and says that he is the ap- 
 
 (Name of applicant.) 
 
 plicant named in the foregoing statement; that he believes the fore- 
 going statement is true; that he believes himself to be the owner of 
 the mark sought to be registered; that no other person, firm, corpora- 
 tion, or association, to the best of his knowledge and belief, has the 
 right to use said mark in the United States, either in the identical form 
 or in any such near resemblance thereto as might be calculated to de- 
 
 ^ J If applicant be an association, the word "association" should be substituted for the word "corpora-, 
 tion." 
 
 2 If the applicant does not have commerce with foreign nations or Indian tribes, this clause should be 
 omitted. 
 
 " In case the applicant is a firm, corporation, or association, the declaration should be modified accord- 
 ingly. 
 
Registration op Tbade-Mabks [769] 35 
 
 ceive; that said mark is used by him in commerce among the several 
 States of the United States (and between the United States and foreign 
 nations, or Indian tribes, and particularly with Russia and Turkey) ; >■ 
 
 (Names of foreign nations or Indian tribes.) 
 
 that the description and drawing presented truly represent the mark 
 sought to be registered; that the specimens show the mark as actually 
 
 (Or facsimiles.) 
 
 used upon the goods; and that the mark has been in actual use as a 
 trade-mark of the applicant (and applicant's predecessors frrnn whom 
 title was derived') for ten years next preceding February 20, 1905, 
 and that, to the best of his knowledge and belief, such use has been 
 exclusive. 
 
 Richard Roe. 
 
 (Signature of affiant.) 
 
 Subscribed and sworn to before me, a notary public, this IBth day 
 
 (Official title.) (Date 
 
 of February, 1906. 
 
 of execution.) 
 
 [l. s.] Charles Mason, 
 
 Notary Public. 
 
 (Official title.) 
 
 ^) DECLARATION FOR FOREIGNER' 
 
 United States Consulate, > 
 London, England, > ' 
 John Doe, being duly sworn, deposes and says that he is the appli- 
 
 (Name of affiant.) 
 
 cant named in the foregoing statement; that he believes the foregoing 
 statement is true; that he believes himself to be the owner of the trade- 
 mark sought to be registered; that no other person, firm, corporation, 
 or association, to the best of his knowledge and belief, has the right to 
 use said trade-mark in the United States, either in the identical form 
 or in any such near resemblance thereto as might be calculated to de- 
 ceive; (that said trade-mark has been registered in England, on June 1, 
 
 (Name of country.) (Date.) 
 
 1900, No. 49316; *) that the description and drawing presented truly 
 
 (Number of registration.) 
 
 represent the trade-mark sought to be registered; and that the sped- 
 
 (Or facsimiles.) 
 
 mens show the trade-mark as actually used upon the goods. 
 
 John Doe. 
 
 (Signature of affiant.) 
 
 Subscribed and sworn to before me, a United States consul, this 20th 
 
 (Official title.) 
 
 day of January, 1906. 
 
 (Date of execution.) 
 
 [seal.] Richard Jones, 
 
 United States Consul. 
 
 (Official title.) 
 
 ' If applicant does not have commerce with foreign nations or Indian tribes, this clause should be 
 
 ■ H applicant has had no predecessors, this clause should be omitted. . 
 
 * In case the applicant is a firm, corporation, or association, the declaration should be modified accord- 
 
 • If the trade-mark has not yet been registered, but an application for registration has been filed in the 
 country where applicant resides or is located, this clause should be omitted and the following substi- 
 
 "that an application for registration of said trade-mark was filed by him on the SOth day of January, 
 1900. in England; " (Date o' fi'>°g) 
 
 (Name of country.) 
 
36 [770] Registration of Tkade-Mabks 
 
 (10) STATEMENT FOR AN INDIVIDUAL UNDER SECTION 3 OF THE ACT OF 
 
 MAY 4, 19061 
 
 To all whom it may concern: 
 Be it known that I, Richard Roe, a subject of the King of England, 
 
 (Name of applicant.) (Citizenship of applicant.) 
 
 residing at London, England, and doing business at No. 26 Thread- 
 
 (AppUoant's reaidenoe.) . (Buaness address.) 
 
 needle street, in said city, and having a manufacturing establishment 
 at Hartford, State of Connecticut, have adopted and used the trade- 
 mark shown in the accompanying drawing ' for the following products 
 of such manufacturing establishment, namely, rubber boots and shoes, 
 
 (Particular description of goods.) 
 
 in Class No. 39, Clothing, 
 
 (Number and title of class. See classification.) 
 
 The trade-mark has been continuously used in my business (and in 
 the business of my predecessor, John W. Brown ») since January 1, 1901. 
 
 (Name of predecessor, if any.) (Earliest date of use.) 
 
 The trade-mark is applied or affixed to the goods, or to the packages 
 containing the same, by placing thereon a printed label on which the 
 
 (Or state other mode or modes of 
 
 trade-^mark is shown. 
 
 application.) 
 
 Richard Rob. 
 
 (Signature of applicant.) 
 
 (11) DECLARATION FOR FOREIGNERS UNDER SECTION 3 OF THE ACT OF 
 
 MAY 4, 1906 4 
 
 United States Consulate, > 
 London, England, | * 
 Richard Roe, being duly sworn, deposes and says that he is the ap- 
 
 (Name of affiant.) 
 
 plicant named in the foregoing statement; that he believes the fore- 
 going statement is true; that he believes himself to be the owner of 
 the trade-mark sought to be registered; that no other person, firm, 
 corporation, or association, to the best of his knowledge and belief, 
 has the right to use said trade-mark in the United States, either in the 
 identical form or in any such near resemblance thereto as might be 
 calculated to deceive; that said trade-mark is used by him in commerce 
 among the several States of the United States (and between the United 
 States and foreign nations or Indian tribes, -and pariicularly with 
 England and Germany^); that the description and drawing presented 
 
 (Names of foreign countries or Indian tribes.) 
 
 truly represent the trade-mark sought to be registered; that the speci- 
 
 (Or facsimiles.) 
 
 mens show the trade-mark as actually used upon the goods; that his 
 manufacturing establishment is located at Hartford, State of Connecticut; 
 
 (Location of manufacturing establishment.) 
 
 and that the goods for which the trade-mark is claimed in this applica- 
 tion are the products of such establishment. 
 
 Richard Roe. 
 
 (Signature of affiant.) 
 
 1 In case applicant be a firm, corporation, or association, the statement should be modified accordinsly. 
 
 ' See rule 22 (b). 
 
 > If applicant has had no predecessor, omit this clause. 
 
 ' In case applicant be a firm, corporation, or association, the declaration should be modified accord' 
 ingly. 
 
 ' If applicant does not have commerce with foreign nations or Indian tribes this clause should be 
 omitted. 
 
Registration of Tbade-Marks [771] 37 
 
 Subscribed and -sworn to before me, a United States consul, this 15th 
 day of June, 1906. 
 
 (Date of execution.) 
 
 [seal.] Richard Jones, 
 
 United States Consul. 
 
 (Official title.) 
 
 (12) NOTICE OF OPPOSITION ' 
 
 To the Commissioner of Patents: 
 
 In the matter of an application for the registration of a trade-mark 
 for sewing machines. Serial No. 1906, filed April 15, 1906, by John 
 
 (Particular goods.) (Number and date of application.) (Name of 
 
 Doe, of San Francisco, Cal., which was published on page 1746, Vol. 
 
 applicant.) (Location or residence of applicant.) (Page. 
 
 ISO, No. IS, of the Oflacial Gazette of June 13, 1906, I, Richard Roe, 
 
 volume, number, and date of the Official Gazette.) (Name of party opposing.) 
 
 residing at No. 12 Clarke street, city of Chicago, State of Illinois, believe 
 
 (Residence or location of party opposing.) 
 
 I would be damaged by such registration and I hereby give notice of my 
 intention to oppose the registration of said trade-mark. 
 The grounds for opposition are as follows: 
 
 (Here state the grounds for opposing registration.) 
 
 Richard Roe. 
 
 (Signature of opposing party.) 
 
 State of Illinois, > 
 
 County of Cook, \ ' 
 
 Richard Roe, being duly sworn (or aflBrmed), deposes and says that 
 he is the f)arty of that name mentioned in the foregoing notice of op- 
 position, that he has read and signed the same and knows the contents 
 thereof, and that the same is true of his own knowledge, except as to 
 the matters therein stated to be alleged upon information and belief 
 and as to those matters he believes it to be true, 
 
 Richard Roe. 
 
 Subscribed and sworn to (or affirmed) before me this 23d day of 
 June, 1906, 
 [l. s.] Charles Kingman, 
 
 Notary Public. 
 
 (Official title.) 
 
 (13) APPLICATION FOR CANCELLATION OF TRADE-MARK ' 
 
 To the Commissioner of Patents: 
 In the matter of trade-mark No. 1898, registered May 23, 1906, by 
 
 (Number of registration.) (Date of registration.) 
 
 Richard Roe, of the city of Portland, county of Cumberland, State of 
 
 (Name of registrant.) (Residence or location of registrant.) 
 
 Maine, I, John Doe, residing at No. 113 Fayette street, in the city of 
 
 (Name of party applying for cancellation.) (Residence or location of the party 
 
 Baltimore, State of Maryland, deem myself injured by said registration 
 
 applying for cancellation.) , - i i> 
 
 and I hereby apply for the cancellation thereof. 
 The grounds for cancellation are as follows: 
 
 (Here state the grounds for cancellation.) 
 
 John Dob. 
 
 (Signature of party applying for cancellation.) 
 
 1 If the opposing party be a firm, corporation, or association, the notice of opposition should be modi- 
 
 ■ If the party applying for cancellation be a firm, corporation, or association, the application for the 
 Qcellation shoulabe modified accordingly. 
 
 cancellation e 
 
38 [772] Registration of Trade-Marks 
 
 State of Maryland, ) ^. 
 
 City of Baltimore, > 
 
 John Doe, being duly sworn (or aflarmed), deposes and says that he 
 is the party of that name mentioned in the foregoing application for 
 cancellation, that he has read and signed the same and knows the con- 
 tents thereof, and that the same is true of his own knowledge, except 
 as to the matters therein stated to be alleged upon information and 
 belief and as to those matters he believes it to be true. 
 
 John Doe. 
 
 Subscribed and sworn to (or aflBrmed) before me this 26th day of 
 June, 1906. 
 [l. s.] John Jones, 
 
 Notary Public. 
 
 (Official title.) 
 
 (14) PETITION FOR RENEWAL 
 
 To the Commissioner of Patents: 
 
 John Doe herewith submits the original certificate of registration 
 
 No. , granted to on , and requests that the same 
 
 be renewed in accordance with the provisions of section 12 of the trade- 
 mark act of February 20, 1905. 
 
 The said John Doe further represents that he is the registrant '■ named 
 
 in said certificate No. ; that he believes himself to be the owner 
 
 of the mark set forth therein; and that he has not abandoned the use 
 of said mark. 
 
 John Doe. 
 
 (Signature of applicant.) 
 
 1 If petitioner is the transferee of record in the Patent Office, the clause "transferee of record in the 
 Patent Office of the registrant" should be substituted for "registrant"; if the legal representative, the 
 clause "legal representative of the registrant." should be substituted for "registrant." 
 
I7w Size vf/fie sheet must be 
 exoct^ /Ox /S inches. See ruleS6(B). 
 
 -This ^pace wust be eiqfft Inched. > 
 
 [773] 
 
CLASSIFICATION OF MERCHANDISE UNDER THE 
 ACT OF MAY 4, 1906 
 
 1. Raw or partly prepared materials. 
 
 2. Receptacles. 
 
 3. Baggage, horse equipments, portfolios, and pocketbooks. 
 
 4. Abrasive, detergent, and polishing materials. 
 
 5. Adhesives. 
 
 6. Chemicals, medicines, and pharmaceutical preparations. 
 
 7. Cordage. 
 
 8. Smokers' articles, not including tobacco products. 
 
 9. Explosives, firearms, equipments, and projectiles. 
 
 10. Fertilizers. 
 
 11. .Inks and inking materials. 
 
 12. Construction materials. 
 
 13. Hardware and plumbing and steam-fitting supplies. 
 
 14. Metals and metal castings and forgings. 
 
 15. Oils and greaces. 
 
 16. Paints and painters' materials. 
 
 17. Tobacco products. 
 
 19. Vehicles, not including engines. 
 
 20. Linoleum and oiled cloth. 
 
 21. Electrical apparatus, machines, and supplies. 
 
 22. Games, toys, and sporting goods. 
 
 23. Cutlery, machinery, and tools, and parts thereof. 
 
 24. Laundry appUances and machines. 
 
 25. Locks and safes. 
 
 26. Measuring and scientific appliances. 
 
 27. Horological instruments. 
 
 28. Jewelry and precious-metal ware. 
 
 29. Brooms, brushes, and dusters. 
 
 30. Crockery, earthenware, and porcelain. 
 
 31. Filters and refrigerators. 
 
 32. Furniture and upholstery. 
 
 33. Glassware. 
 
 34. Heating, lighting, and ventilating apparatus, not including electrical apparatus. 
 
 35. Belting, hose, machinery packing, and nonmetallic tires. 
 
 36. Musical instruments and supplies. 
 
 37. Paper and stationeiy. 
 
 38. Prints and publications. 
 
 39. Clothing. 
 
 40. Fancy goods, furnishings, and notions. 
 
 41. Canes, parasols, and umbrellas. 
 
 42. Knitted, netted, and textile fabrics. 
 
 43. Thread and yam. 
 
 44. Dental, medical, and surgical appliances. 
 
 45. Beverages, nonalcoholic. 
 
 46. Foods and ingredients of foods. 
 
 47. Wines. 
 
 48. Malt extracts and liquors. 
 
 49. Distilled alcoholic liquors. , 
 
 50. Merchandise not otherwise classified. 
 
 Note. — Class 18 was abolished February 24, 1909. 
 
 [775] 39 
 
INDEXES 
 
 INDEX TO TRADE-MARE STATUTES 
 
 [Numbers in italios refer to aeotions of the act of May 4, 1906] 
 
 Subject. 
 
 Abandoned trade-marks, action may not be brought on . . . 
 Action: 
 
 By Commissioner of Patents on application 
 
 For damages 
 
 For an injunction . 
 
 Jurisdiction of United States courts in an 
 
 When barred 
 
 Act of 1881, rights of registrants under 
 
 "Affixed" defined : 
 
 Amendments to applications filed under act of 1881 
 
 Appeals: 
 
 Fees for 
 
 To the Commissioner of Patents 
 
 To the Court of Appeals of the District of Columbia. . 
 
 Patent practice and procedure to govern 
 
 Appellate jurisdiction of United States courts 
 
 Applicant: 
 
 "Applicants" defined 
 
 Citizenship of, to be recited 
 
 Domicile of, to be recited 
 
 Location of, to be recited 
 
 Name of, to be recited 
 
 Statement of, to recite what 
 
 Who may apply for registration 
 
 Applications: 
 
 Action on same by the Commissioner of Patents 
 
 • Conflicting 
 
 Date of, in foreign country must be stated when 
 
 Examination of 
 
 Fees on filing 
 
 Filed under the act of 1881 may be amended 
 
 Length of time of use of mark to be recited in 
 
 May be assigned 
 
 May contain a description of the mark, when 
 
 May include any or aU goods comprised in a single class 
 upon which trade-mark is used 
 
 Must be addressed to the Commissioner of Patents. 
 
 Must be accompanied by a drawing 
 
 Must be accompanied by a written declaration 
 
 Must be accompanied by specimens of the trade-mark 
 
 Must be filed in the Patent Office 
 
 Must be in writing 
 
 Must be signed by the applicant. 
 
 Must contain a description of the mark, when. . . 
 
 Must recite what ■.• • • ■ ■ ■ • • • ■ • • ■ 
 
 Must state how trade-mark is applied or affixed to ttie 
 goods 
 
 Sections. 
 
 Pages. 
 
 21 
 
 
 11 
 
 6 
 
 
 7 
 
 16, 19, 25 
 
 
 10, 12 
 
 19 
 
 
 10 
 
 17,18 
 19, 20 
 
 ■ 
 
 10,11 
 
 21,28 
 
 
 11, 12 
 
 12,30 
 
 
 9, 13 
 
 29 
 
 
 13 
 
 14,24 
 
 
 9, 12 
 
 8,14 
 
 
 8,9 
 
 7, 8, 13 
 
 
 8,9 
 
 9 
 
 
 8 
 
 9 
 
 
 8 
 
 17 
 
 
 10 
 
 29 
 
 1 
 1 
 1 
 1 
 
 1 
 1 
 
 
 13 
 5 
 5 
 5 
 5 
 5 
 5 
 
 6 
 
 
 7 
 
 7 
 
 
 8 
 
 2 
 
 
 5 
 
 6 
 
 
 7 
 
 1,14 
 
 
 5,9 
 
 14,24 
 
 
 9,12 
 
 1 
 
 
 5 
 
 10 
 
 
 8 
 
 1 
 
 
 5 
 
 S 
 
 
 13 
 
 1 
 
 
 5 
 
 1 
 
 
 5 
 
 2 
 
 
 5 
 
 1 
 
 
 5 
 
 1 
 
 
 5 
 
 1 
 
 
 5 
 
 1 
 
 
 5 
 
 1 
 
 
 5 
 
 1 
 
 
 6 
 
 [777] 
 
 41 
 
42 [778] Indexes 
 
 Index to trade-mark statutes — Continued 
 
 Subject. 
 
 Sections. 
 
 Pages. 
 
 Article, if injurious, an action for damages or injunction is 
 
 barred 
 
 Assigmnents: 
 
 Applications for registration may be assigned 
 
 Fees for recording 
 
 Must be acknowledged according to laws of country or 
 
 State in which executed 
 
 Must be in connection with the good will of the business 
 
 Must be in writing 
 
 Record of assignments to be kept in the Patent Office 
 Shall be void unless recorded in the Patent Office within 
 
 3 months 
 
 Trade-marks may be assigned 
 
 Attorney may file opposition 
 
 'Bars: 
 
 To action for damages or injunction 
 
 To re^tration 
 
 Business, n imlawful, bars an action for damages or injuno^ 
 
 . tion , I . . . 
 
 Cancellation, proceedings for 
 
 Certificates of registration: 
 
 In case of foreign registration, shall cease when the 
 
 foreign registration expires. 
 
 Issued under the act of 1881, may be renewed under the 
 
 act of Feb. 20, 1905 
 
 Issued under the act of 1881, shall remain in force. . . . 
 
 May be canceled 
 
 May be issued to foreign applicants haying manufac- 
 turing establishments within the territory of the 
 United States upon the same conditions as to resi- 
 dents of the United States 
 
 May be issued to the assignee 
 
 May be renewed 
 
 Shall bear the seal of the Patent Office 
 
 Shall be signed by the Commissioner of Patents 
 
 Shall not be issued to foreign applicants until they have 
 obtained registration in country of' residence unless 
 applicant has a manufacturing establishment within 
 
 the United States , 
 
 Shall remain in force not more than 20 years 
 
 Shall state date of application ., 
 
 Use of copies of, in pourt as evidence 
 
 Citizenship: 
 
 As Affecting right to register 
 
 Of applicant to be recited 
 
 Class of merchandise to be recited in application 
 
 Classes of merchandise to be established by commissioner 
 
 Coats of arms not registrable 
 
 Commerce: 
 
 Between States 
 
 Foreign applicants need not state that the trade-mark 
 has been used in commerce with the United States or 
 among the States thereof, unless application is made 
 
 under sec. 3 of the act of May 4, 1906 
 
 With foreign nations 
 
 With Indian tribes 
 
 Commissioner: 
 
 Action on application 
 
 Appeals to 
 
 Jurisdiction of, to cancel registrations 
 
 May refuse to register interfering marks, when 
 
 21 
 
 11 
 
 10 
 10 
 
 8 
 8 
 
 10 
 10 
 10 
 10 
 
 8 
 8 
 8 
 8 
 
 10 
 
 10 
 
 6 
 
 8 
 8 
 7 
 
 21,28 
 1, 2, 4, 5 
 
 11,12 
 5,6 
 
 21 
 13,22 
 
 11 
 9,21 
 
 12 
 
 9 
 
 12 
 12,30 
 13,22 
 
 9 
 9,13 
 9,11 
 
 3 
 11 
 12 
 11 
 11 
 
 13 
 9 
 9 
 9 
 9 
 
 3,4 
 12 
 11 
 11 
 
 13,6 
 9 
 9 
 9 
 
 1 
 1 
 1 
 
 5 
 
 5 
 5 
 5 
 13 
 6 
 
 2,3 
 
 1 
 
 5, 13 
 5 
 5 
 
 6 
 
 8 
 
 13,22 
 
 7 
 8 
 
Indexes [779] 43 
 
 Index to trade-mark statutes — Continued 
 
 Subjeot. 
 
 CommiBsioner — Continued. 
 
 To decide presumptive lawfulness of claim 
 
 To pa-esoribe reg[ulations for registration 
 
 To sign the certificates of registration 
 
 Common-law and equitable rights not abridged by statute 
 
 Conflicting applications 
 
 Confusion of the public mind by similarity of marks bars 
 
 registration 
 
 Contempt, action for violating injunction 
 
 Convention with a foreign power as Conferring the right to 
 
 register 
 
 Copies: 
 
 Of actual trade-mark or facsimiles required from ap- 
 plicant •. 
 
 Of printed statements to be kept of record 
 
 Of records of injunction proceedings furnished to courts 
 applying for same 
 
 Of publications, prices 
 
 Of records under official seal to be evidence 
 
 Copying and using registered trade-marks: 
 
 Damages for 
 
 Restraint of 
 
 Counterfeiting, damages tor 
 
 Courts of the United States, jurisdiction of 
 
 Damages: 
 
 Action for, when barred 
 
 For affixing fraudulent trade-mark to merchandise. . 
 
 For false or fraudulent registration 
 
 For wrongful use of registered trade-marks 
 
 I May be increased 
 
 Deceit of the public: 
 
 Action to defend trade-mark used in, not maintainable 
 
 By similarity in marks, bars registration 
 
 Deceptive trade-marks, action under, may not be brought 
 Declaration: 
 
 May be verified, before whom 
 
 Must be in writing 
 
 Must be verified, by whom 
 
 Must contain what 
 
 For foreign applicants 
 
 Under IGi-year proviso 
 
 When false or fraudulent, damages for 
 
 Definitions of "affixed," "applicant," "owner," "person, 
 
 "registrant," "States," "trade-marks," "United States" 
 Description: 
 
 Must truly describe the mark 
 
 Of the goods required 
 
 Of the mark required or permitted, when 
 
 Descriptive trade-marks not registrable 
 
 Destruction of infringing trade-marks 
 
 Domicile of applicant must be recited in the appUcation. . . 
 
 Drawing of the trade-mark required 
 
 Duration of the certificate of registration 
 
 Emblem of fraternal society not registrable 
 
 Equity, aggrieved parties may resort to 
 
 Evidence: 
 
 Copies under seal to be received as 
 
 Of ownership, registration to be prima facie 
 
 Of registry 
 
 SeotioDB. 
 
 Fagea. 
 
 6 
 
 7 
 
 26 
 
 12 
 
 11 
 
 9 
 
 23 
 
 11 
 
 7 
 
 8 
 
 5 
 
 6 
 
 20 
 
 11 
 
 1,4 
 
 5,6 
 
 1 
 
 5 
 
 11 
 
 9 
 
 20 
 
 11 
 
 14 
 
 9 
 
 11 
 
 9 
 
 16, 19 
 
 10 
 
 19 
 
 10 
 
 16 
 
 10 
 
 J 16, 17 
 18, 19 
 
 1 ^^ 
 
 21,28 
 
 11, 12 
 
 16 
 
 10 
 
 25 
 
 12 
 
 16,19 
 
 10 
 
 16, 19 
 
 10 
 
 21 
 
 11 
 
 5 
 
 6 
 
 21 
 
 11 
 
 2 
 
 5 
 
 2 
 
 5 
 
 2 
 
 5 
 
 2 
 
 5 
 
 2 
 
 5 
 
 5 
 
 7 
 
 25 
 
 12 
 
 29 
 
 13 
 
 2 
 
 5 
 
 1 
 
 5 
 
 1 
 
 5 
 
 5 
 
 6 
 
 20 
 
 11 
 
 1 
 
 5 
 
 1 
 
 5 
 
 12 
 
 9 
 
 5 
 
 6 
 
 17, 19 
 
 1 22, 23 
 
 1 10, 11 
 
 11 
 
 9 
 
 16 
 
 10 
 
 11 
 
 9 
 
44 [780] Indexes 
 
 Index to irade^mark statutes — Continued 
 
 Subject. 
 
 Examination of applications: 
 
 Applicant to be notified of the result of 
 
 Commissioner of Patents to cause 
 
 Facsimiles of trade-marks, when to be filed 
 
 False registration, damages for 
 
 Fees: 
 
 Additional fee not required for applications pending at 
 the date of passage of the act of Feb. 20, 1905 . . . 
 
 For copies 
 
 For recording assignments 
 
 For registration or renewal 
 
 If paid by mistake, may be refunded 
 
 On appeal to the Commissioner of Patents 
 
 On filing notice of opposition 
 
 Flags or coats of arms not registrable 
 
 Foreigners: 
 
 Entitled to date of application in country of residence 
 
 in certain cases 
 
 Having a manufacturing establishment within the 
 
 United States entitled to registration when 
 
 Must designate representative in the United States. . . 
 Must first register in country of residence unless ap- 
 plication is made under sec. 3 of the act of May 4, 
 
 1906 
 
 Must give date of registration in country of residence, 
 or date of application therefor, unless application is 
 
 made under see. 3 of the act of May 4, 1906 
 
 Must reside in a country affording similar privileges to 
 the citizens of the United States unless application is 
 
 made under sec. 3 of the act of May 4, 1906 
 
 Need not state that mark has been used in commerce 
 with the United States or among the States thereof 
 unless application is made under sec. 3 of the act of 
 
 May 4, 1906 
 
 Notices for, may be served on their representatives in 
 
 the United States 
 
 When entitled to register 
 
 Foreign nations, registration of trade-mark used in com- 
 merce with 
 
 Foreign powers, conventions or treaties with, and laws of, aa 
 
 affecting right of registration 
 
 Former rights and remedies preserved 
 
 Fraternal society, insignia of, not registrable 
 
 Fraud in obtainmg registration bars an action 
 
 Fraudulent: 
 
 Declaration and registration, damages for 
 
 Trade-marks, damages for affixing same to merchandise 
 
 Geographical terms not registrable 
 
 Goods: 
 
 Particular description of 
 
 Comprised in each class to be determined by commis- 
 sioner 
 
 To be recited 
 
 Identity with other trade-marks, bars registration when . . 
 
 Imitation of registered trade-marks, penalty for 
 
 Immoral or scandalous matter not registrable 
 
 Importation of articles of merchandise bearing unlawful 
 
 trade-marks prohibited 
 
 Indian tribes, registration of trade-marks used in commerce 
 
 with 
 
 Infringement, remedy for 
 
 2, S 
 
 Sections. 
 
 Pages. 
 
 6 
 6 
 
 1 
 25 
 
 7 
 7 
 
 5 
 12 
 
 14 
 14 
 14 
 
 1,14 
 15 
 
 8,14 
 
 14 
 
 5 
 
 9 
 9 
 9 
 
 5,9 
 10 
 
 8,9 
 9 
 6 
 
 4 
 
 6 
 
 3 
 3 
 
 13 
 6 
 
 2,S,4 
 
 5, 13, 6 
 
 2,S 
 
 5,13 
 
 3,4 
 
 13,6 
 
 5,13 
 
 3 
 1, 2, S, 4 
 
 6 
 5, 13, 6 
 
 1 
 
 5 
 
 1,4 
 
 12,23 
 
 5 
 
 21 
 
 5,6 
 
 9,11 
 
 6 
 
 11 
 
 25 
 
 16 
 
 6 
 
 12 
 
 10 
 
 6 
 
 1 
 
 5 
 
 S 
 1 
 5 
 16,19 
 5 
 
 13 
 
 5 
 
 7 
 
 10 
 
 6 
 
 27 
 
 12 
 
 1 
 16, 19 
 
 5 
 10 
 
Indexes 
 Index to trade-mark stattiies — Continued 
 
 [781] 
 
 45 
 
 Subject. 
 
 SectioDs. 
 
 Pages. 
 
 Injunction: 
 
 Action for, when barred 
 
 Against the wrongful use of registered trade-mark. 
 
 May be enforced by proceedings to punish for contempt 
 
 May be enforced in any jurisdiction 
 
 Notice of, may be served wherever defendant can be 
 
 found in the United States 
 
 Injurious articles, action may not be brought on trade- 
 marks used on 
 
 Insignia of fraternal society not registrable 
 
 Interferences: 
 
 Examiner in charge of, has jurisdiction over — 
 
 Cancellations 
 
 Interferences 
 
 Oppositions 
 
 When declared 
 
 Interfering trade-marks, suits, and proceedings in equity. . . 
 Issue of certificates of registration 
 
 To assignees 
 
 Jurisdiction: 
 
 Of the Commissioner of Patents 
 
 Of the examiner in charge of interferences 
 
 Original and appellate, of the United States courts. . . 
 
 Lawfulness of claim to trade-mark to be decided by the 
 
 Commissioner of Patents 
 
 Lawful trade-marks, or those used lawfully, alone regis- 
 trable ; 
 
 Length of time of use of trade-mark to be recited 
 
 List of trade-marks to be published in the Official Gazette. 
 
 Location of applicant to be specified 
 
 Merchandise bearing unlawful trade-marks, importation 
 
 prohibited 
 
 Merchandise: 
 
 Class of, to be recited 
 
 Classification of, to be established by Commissioner of 
 
 Patents 
 
 Mistake, or confusion in the public mind caused by simi- 
 larity of trade-marks, bars registration 
 
 Mode of affixing trade-mark to be recited 
 
 Name of applicant: 
 
 Not registrable, except on certain conditions 
 
 To be specified in the application 
 
 Notice of opposition, and of the grounds therefor, to be 
 
 given to applicants '• 
 
 Notice of registration: 
 
 Kegistrants must give 
 
 Form of ■ •. 
 
 Notice for foreign applicants may be served on their repre- 
 sentatives in the United States 
 
 Oath to declaration may be made before whom 
 
 Opposition: 
 
 May be filed by attorney, but if so filed must be verified 
 
 by opposer within reasonable time. 
 
 May be made by any person who believes he would be 
 
 damaged by registration 
 
 Must be accompanied by fee 
 
 Notice of grounds of opposition shall be given to ap- 
 plicants •,•■•■•.•• 
 
 Notice of, must be filed withm 30 days after pubhcation 
 
 21,28 
 19 
 20 
 20 
 
 11, 12 
 10 
 11 
 11 
 
 20 
 
 11 
 
 21 
 5 
 
 11 
 6 
 
 13 
 7 
 7 
 7 
 
 22 
 6, 11 
 
 11 
 
 9 
 8 
 8 
 8 
 11 
 7,9 
 9 
 
 8, 13 
 
 7,13 
 
 9,- 16, 17 
 
 18, 19 
 
 20,22 
 
 8,9 
 8,9 
 
 8, 10, 11 
 
 6 
 
 7 
 
 5 
 1 
 6 
 
 1 
 
 6 
 5 
 7 
 5 
 
 27 
 
 28 
 28 
 
 3 
 
 2 
 
 14 
 
 7 
 6 
 
 12 
 
 5 
 
 13 
 
 6 
 
 6 
 
 6 
 
 5 
 
 8 
 
 12 
 12 
 
 6 
 5 
 
46 [782] Indexes 
 
 Index to trade-mark statutes — Continued 
 
 Subject. 
 
 Oppositions — C!ontinued 
 
 Notice of, must be verified 
 
 Proceedings under 
 
 Publication of trade-marks in Official Gazette before 
 
 registration to enable opposition to be made 
 
 "Owner defined 
 
 Ownership, registration to be prima facie evidence of . . . 
 Particular description of goods comprised in each class to be 
 
 determined by Commissioner of Patents 
 
 Penalty: 
 
 For false or fraudulent registration 
 
 For imitation of trade-mark 
 
 "Person" defined 
 
 Petition, to contain what 
 
 Portraits of living individuals not registrable without their 
 
 consent in writing , 
 
 Printed copies of statements to be kept of record 
 
 Printed copies of trade-marks to be furnished by the office 
 
 Profits may be recovered 
 
 Publication of trade-marks in the Official Gazette 
 
 Publications, prices of copies of 
 
 Recording: 
 
 Fees for % 
 
 Of assignments 
 
 Records of trade-marks, statements, declarations, etc., to be 
 
 kept 
 
 Refunding of fees 
 
 Refusal of an application 
 
 "Registrant" defined 
 
 Registrants under the act of 1881, rights of 
 
 Registration: 
 
 Authorized by 
 
 Bars to 
 
 By residents of foreign countries 
 
 Certfficates of — 
 
 Duration 
 
 How and when issued 
 
 Renewal of 
 
 Use of, in courts as evidence 
 
 Fees for , 
 
 How effected 
 
 Marks not registrable 
 
 Obtained by false or fraudulent representation, dam- 
 ages for 
 
 Of marks used 10 years prior to Feb. 20, 1905 
 
 Records of, to be kept ■ 
 
 Renewal of, can be made, when 
 
 Right to^ 
 
 As affected by citizenship of applicant 
 
 As conferred by treaty or convention with a for- 
 eign power or by the laws of a foreign country 
 Rules for, to be prescribed by the Commissioner of 
 
 Patents -. 
 
 To be prima facie evidence of ownership 
 
 Use in foreign or Indian or interstate commerce, a pre- 
 requisite to 
 
 Who is entitled to 
 
 Regulations and rules to be prescribed by the Commissioner 
 of Patents 
 
 Remedies for infringements 
 
 SectionB. 
 
 6 
 7 
 
 6 
 29 
 16 
 
 25 
 
 16, 19, 20 
 
 29 
 
 1 
 
 5 
 
 11 
 
 11,14 
 
 19 
 
 6 
 14 
 
 14 
 10 
 
 11 
 15 
 6,7 
 29 
 12 
 
 1, 2, 4, 5 
 1,3,3 
 
 12 
 
 6,11 
 
 12 
 
 11,16 
 
 14 
 
 1,2 
 
 5 
 
 25 
 
 5 
 
 11 
 
 12 
 
 1,4,3 
 
 1,4 
 
 26 
 16 
 
 1 
 1,4 
 
 26 
 16, 19 
 20,23 
 
 Pages. 
 
 7 
 8 
 
 7 
 13 
 10 
 
 13 
 
 12 
 
 10,11 
 
 13 
 
 5 
 
 6 
 9 
 9 
 10 
 7 
 9 
 
 9 
 
 8 
 
 9 
 
 10 
 
 78 
 
 13 
 
 9 
 
 6 
 
 5,6 
 
 5, 6, 13 
 
 9 
 7,9 
 9 
 9,10 
 9 
 5 
 6 
 
 12 
 6 
 9 
 9 
 
 5, 6, 13 
 
 5,6 
 
 12 
 10 
 
 5 
 5,6 
 
 12 
 10,11 
 
Indexes 
 Index to trade-mark statutes — Continued 
 
 [783] 
 
 47 
 
 Subject. 
 
 Renewal of certificate of registration 
 
 Must be made not more than 6 months prior to expirar 
 tion 
 
 Who may request 
 
 Representatives in the United States, foreign applicants 
 
 must designate ._ 
 
 Reproduction and use of registered trade-marks, penalty for 
 
 Resemblance to other marks must be avoided 
 
 Residence of applicants required 
 
 Restrictions: 
 
 On actions for damages or an injunction 
 
 On actions for infringement 
 
 On registration 
 
 Review by Commissioner of Patents of adverse decision.. . 
 Right to use the trade-mark in the United States must be- 
 long exclusively to the applicant 
 
 Rights at common law or equity not abridged 
 
 Rules and regulations to be prescribed by the Commis- 
 sioner of Patents 
 
 Scandalous or immoral matter not registrable 
 
 Schedule of fees 
 
 Similarity to other trade-marks, bars registration, when. . 
 
 Specimens of the trade-mark required 
 
 Statement of applicant: 
 
 To recite what 
 
 Recording of 
 
 Statements, printed copies of, to be kept of record 
 
 "States" defined 
 
 States, registration of trade-marks used in commerce between 
 10 years' use prior to Feb. 20, 1905, permits registration of 
 
 certain marks 
 
 Term of re^tration: 
 
 Duration of , 
 
 Limitation of 
 
 Renewal of 
 
 Time of use to be recited 
 
 "Trade-mark" defined '. 
 
 Trade-marks to be published in OflBcial Gazette 
 
 Transfers of the right of use, how regulated . 
 
 Treasury Department, deposit of trade-mark in 
 
 Treaties, as conferring the right of registration 
 
 United States: 
 
 Citizens of, may obtain registration, when 
 
 Courts of, to have jurisdiction, when 
 
 Definition of the term "United States" as used in the 
 
 act of Feb. 20, 1905 
 
 Unlawful business, use of trade-marks in, bars an action. . . 
 Use: 
 
 If in an unlawful business, bars an action 
 
 If wrongful, common-law and equitable rights unim- 
 
 paJreoV • 
 
 Length of time of, to be recited 
 
 Mode of, to be recited 
 
 Right of, in the United States, must be exclusive with 
 
 the applicant 
 
 Right of, transfers of 
 
 Unlawful, of trade-marks, damages or injunctions 
 
 Verification of declaration, how and by whom made 
 
 Writ of certiorari may be granted by the Supreme Court of 
 the United States ■. 
 
 Sections. 
 
 12 
 
 12 
 12 
 
 3 
 
 16, 19, 20 
 
 5 
 
 1 
 
 21,28 
 
 21,28 
 
 5 
 
 9 
 
 2 
 23 
 
 26 
 5 
 
 14 
 5 
 1 
 
 1 
 
 11 
 11 
 
 29 
 1 
 
 12 
 12 
 12 
 
 1 
 29 
 
 6 
 
 10 
 
 27 
 
 1,4 
 
 1 
 
 f 16, 17 
 [ 18, 19 
 
 29 
 21 
 
 21 
 
 23 
 1 
 1 
 
 2 
 
 10- 
 16, 19, 20 
 2 
 
 18 
 
 Pagea. 
 
 9 
 9 
 
 6 
 
 10, 11 
 
 6 
 
 5 
 
 11,12 
 
 11,12 
 
 6 
 
 5 
 11 
 
 12 
 6 
 ,9 
 6 
 5 
 
 6 
 9 
 9 
 13 
 5 
 
 6 
 
 9 
 9 
 9 
 5 
 
 13 
 7 
 8 
 
 12 
 5,6 
 
 5 
 10 
 
 13 
 11 
 
 11 
 
 11 
 5 
 5 
 
 5 
 
 8 
 
 10, 11 
 
 10 
 
48 [784] 
 
 Indexes 
 
 INDEX TO TRAOE-MARE RULES 
 
 Subjects. 
 
 Rules. 
 
 Pages. 
 
 Abandoned applications 
 
 Abandoned trade-marks 
 
 Act of 1881, rights of registrants under 
 
 Action of the office to be directed to the merits 
 
 Additions to papers not permitted 
 
 Advertising stamp of attorneys not permitted on drawings 
 Allowance: 
 
 Amendments after 
 
 Notice of 
 
 Amendments: 
 
 After allowance 
 
 Form of 
 
 In general 
 
 New matter not permitted in 
 
 To amendment, form of 
 
 To applications filed under act of 1881 
 
 Will give such applications new serial numbers and 
 dates of filing 
 
 To declaration, will not be permitted 
 
 To rules; will be published in the Official Gazette .... 
 
 To statement, when permitted 
 
 Appeals: 
 
 To the Commissioner of Patents 
 
 To the Court of Appeals of the District of Columbia. . 
 Applicant: 
 
 Foreign, must file certified copy of foreign registration 
 in certain cases 
 
 May prosecute his own case 
 
 Should not correspond with office if he has an attorney 
 Applications: 
 
 Abandoned 
 
 Are preserved in secrecy 
 
 Conflicting, practice, etc 
 
 Date of, in foreign country, must be stated, when .... 
 
 Examination of 
 
 Fee on filing 
 
 Filed Hnder act of 1881 may be amended 
 
 Will be given new serial numbers and dates of filing 
 under the act of Feb. 20, 1905 
 
 May be assigned 
 
 May include all goods comprised in a single class upon 
 which trade-mark is used 
 
 Suspension of 
 
 To contain what, form of 
 
 Assignments: 
 
 Fees for recording 
 
 Must be recorded within 3 months 
 
 Orders for copies of, must give liber and page of record 
 
 Provisions regulating 
 
 Attendance of applicants in person not necessary 
 
 Attorneys: 
 
 Correspondence will be held with 
 
 Disbarment of 
 
 In general 
 
 May not act as notary 
 
 45(a) 
 I 67(o-d) 
 
 1 
 
 22 
 
 ,26 
 
 19 
 
 
 
 17 
 
 61 
 
 
 
 26 
 
 39 
 
 
 
 22 
 
 42 
 
 
 
 22 
 
 36(7) 
 
 
 
 21 
 
 44 
 
 
 
 22 
 
 40 
 
 
 
 22 
 
 44 
 
 
 
 22 
 
 42 
 
 
 
 22 
 
 / 41, 42 
 43, 44, 45 
 
 
 
 22 
 
 41 
 
 
 
 22 
 
 43 
 
 
 
 22 
 
 26 
 
 
 
 19 
 
 26 
 
 
 
 19 
 
 35 
 
 
 
 21 
 
 74 
 
 
 
 29 
 
 41 
 
 
 
 22 
 
 56 
 
 
 
 25 
 
 67 
 
 
 
 25 
 
 17 
 
 
 
 17 
 
 11 
 
 
 
 16 
 
 7,8 
 
 
 
 15 
 
 1 45 (a) 
 57 (o-d) 
 
 
 22 
 
 26 
 
 25 
 
 
 
 19 
 
 J 46, 47 
 ' 48, 49, 50 
 
 
 23 
 
 24 
 
 33 
 
 
 
 20 
 
 38, 39, 40 
 
 
 21 
 
 ,22 
 
 22 Cf), 69 
 
 
 18 
 
 ,28 
 
 26 
 
 
 
 19 
 
 26 
 
 
 
 19 
 
 63 
 
 
 
 27 
 
 30 
 
 
 
 20 
 
 45 (6-d) 
 
 
 22-23 
 
 22 
 
 
 
 18 
 
 69 
 
 
 
 28 
 
 64 
 
 
 
 27 
 
 67 
 
 
 
 27 
 
 63, 64, 65 
 
 
 
 27 
 
 6 
 
 
 
 15 
 
 7 
 
 
 
 15 
 
 15 
 
 
 
 16 
 
 11, 12 
 13, 14, 15 
 
 
 
 16 
 
 34 
 
 
 
 20 
 
Indexes 
 Index to trade-mark rules — Continued 
 
 [785] 49 
 
 Subject. 
 
 Attorneys — Registration of 
 
 Stamp of, not permitted on face of the drawing .... 
 
 Substitution of 
 
 Bars to registration 
 
 Cancellation, proceedings for 
 
 Certificate of registration: 
 
 Date of 
 
 Duration of 
 
 Issue of 
 
 Issued under act of 1881, shall remain in force 
 
 May be renewed under act of Feb. 20, 1905 . . . 
 
 May be issued to an assignee 
 
 May be canceled ; 
 
 Renewal of 
 
 Will not be issued to foreign appUcants until they have 
 obtained registration in country of residence, except 
 as provided by sec. 3 of the act of May 4, 1906 .... 
 
 Charges for express, postage, etc., must be prepaid 
 
 Citizenship: 
 
 As aSecting right to register 
 
 Of applicant to be recited 
 
 Class of merchandise to be recited in application 
 
 Coats of arms not registrable 
 
 Commerce: 
 
 Between States 
 
 Foreign appUcants need not state that the trade-mark 
 has been used in commerce with the United States or 
 among the States thereof, unless application is made 
 
 under sec. 3 of the act of May 4, 1906 
 
 With foreign nations 
 
 With Indian tribes 
 
 Commissioner of Patents: 
 
 Appeals to 
 
 Communications to be addressed to 
 
 Petitions to i 
 
 No fee required for 
 
 Communications. (See Correspondence.) 
 
 Conflicting appUcations, interferences, patent practice to 
 
 govern m 
 
 Copies of actual trade-mark required from applicant. . . . 
 
 Copies of pubUcations, prices of 
 
 Copy of foreign registration required of foreign applicants 
 unless appUcation is made under sec. 3 of the act of May 4, 
 
 1906 
 
 Corporations must recite under the laws of what State or 
 
 nation incorporated 
 
 Correspondence: 
 
 Charges for postage, etc., must be prepaid 
 
 Checks, drafts, etc., to be drawn to the Commissioner's 
 
 order 
 
 Decorum and courtesy required. 
 
 Double correspondence not permitted 
 
 Letters relating to application should state what 
 
 Letters relating to registered marks should state what 
 Must be addressed to the Commissioner of Patents. . . 
 
 Must be in writing 
 
 OflSce can not expound the law, etc 
 
 Personal attendance unnecessary 
 
 Separate letter for each subject of inquiry required . . . 
 Will be held with the attorney 
 
 Rules. 
 
 Pages. 
 
 11 
 
 36(7) 
 13 
 17, 19 
 52,53 
 54,55 
 
 40 
 59 
 40,58 
 61 
 61 
 65 
 52 
 60 
 
 18,62 
 10 
 
 16 
 22(6) 
 22(6) 
 
 19 
 
 19 
 
 18,33 
 19 
 19 
 
 56 
 
 3 
 
 56 
 
 56 
 
 46 
 
 22(e) 
 
 69 
 
 17 
 
 22(6) 
 
 10 
 
 3 
 2 
 8 
 5 
 5 
 3 
 1 
 9 
 6 
 4 
 7 
 
 16 
 21 
 16 
 17 
 
 [24,25,26 
 
 22 
 26 
 22,26 
 26 
 26 
 27 
 24 
 26 
 
 17,27 
 16 
 
 16 
 18 
 18 
 17 
 
 17 
 
 17,20 
 17 
 17 
 
 25 
 15 
 25 
 26 
 
 23 
 
 18 
 28 
 
 17 
 
 18 
 
 16 
 
 15 
 15 
 15 
 15 
 15 
 15 
 15 
 IS 
 15 
 15 
 15 
 
60 [786] Indexes 
 
 Index to irade^mark rules — Continued 
 
 Subject. 
 
 Courtesy and decorum required of applicants and attorneys 
 
 Date of certificate of registration 
 
 Deceptive trade-marks not registrable 
 
 Declaration: 
 
 In general. 
 
 May not be amended 
 
 Requisites of 
 
 For foreign applicants 
 
 Under 10-year proviso 
 
 To be verified before whom 
 
 Decorum required from applicants and attorneys 
 
 Description of the trade-mark itself required, when (see 
 
 Statute) 
 
 Descriptive- marks not registrable 
 
 Disbarment of attorneys .' 
 
 Domicile to be recited (see statute) 
 
 Double correspondence not allowed 
 
 Drawing: 
 
 Furnished by the office 
 
 Must not be folded 
 
 Requisites of 
 
 Duration of term registration i 
 
 Emblem of fraternal society not registrable 
 
 English lai^uage to be used in the application papers and 
 
 assignments 
 
 Erasures by applicant or attorney not permitted , 
 
 Examination: 
 
 Applicants will be notified of the result of 
 
 Of applications 
 
 Of applications for registration of trade-marks pre 
 
 viously registered under act of 1881 
 
 Examiner in charge of trade-marks, original jurisdiction of 
 
 proceedings before. 
 
 Express charges must be prepaid 
 
 Facsimile of trade-mark, when to be filed 
 
 Fees: 
 
 Additional fee not required for applications pending at 
 the date of the passage of act of Feb. 20, 1905 . . . 
 
 Now paid 
 
 Refunded, when 
 
 Schedule of 
 
 Flags or coats of arms not registrable 
 
 Foreigners: 
 
 Entitled to date of application in country of residence 
 
 in certain cases 
 
 Having manufacturii^ establishments within the 
 
 United States may obtain registration when 
 
 Must designate representative m United States 
 
 Must file certified copy of foreign registration unless ap- 
 plication is made under sec. 3 of the act of May 4. 
 
 1906 .^ 
 
 Must first register in country of residence unless appli- 
 cation is made under sec. 3 of the act of May 4, 1906 
 Must give date of registration in country of residence or 
 date of appUcation therefbr unless application is 
 
 made under sec. 3 of the act of May 4, 1906 
 
 Must reside in a country affording similar privileges to 
 the citizens of the United States unless application is 
 
 made under sec. 3 of the act of May 4. 1906 
 
 Need not state that mark has been used in commerce 
 
 Rulea. 
 
 2 
 40 
 19 
 
 J 15, 31, 32 
 
 133,34,35 
 
 35 
 
 31, 32, 33 
 
 33 
 
 32 
 
 34 
 
 2 
 
 22(5) 
 19 
 15 
 
 22(6) 
 8 
 
 37 
 36(6) 
 36 
 59 
 19 
 
 23,63 
 42 
 
 38 
 38, 39, 40 
 
 26 
 
 38 
 
 10 
 
 22(e) 
 
 26 
 3, 70j 71 
 72 
 69 
 19 
 
 27 
 
 18 
 28 
 
 17,18 
 18,62 
 
 .33 
 
 17 
 
 15 
 22 
 17 
 
 1 16, 20, 21 
 
 21 
 20 
 20 
 20 
 20 
 15 
 
 18 
 17 
 16 
 18 
 15 
 
 21 
 21 
 21 
 26 
 17 
 
 18,27 
 22 
 
 21 
 21,22 
 
 19 
 
 21 
 16 
 
 18 
 
 19 
 15,28 
 28 
 28 
 17 
 
 19 
 
 17 
 19 
 
 17 
 17,27 
 
 20 
 
 7 
 17 
 
Indexes 
 Index to trade-mark rules- — Continued 
 
 [787] 51 
 
 Subieot. 
 
 Foreigners — Continued. 
 
 with the United States or among the States thereof 
 unless application is made under sec. 3 of the act of 
 
 May 4, 1906 
 
 Notices for, may be served on their representatives in 
 
 the United States 
 
 When entitled to register 
 
 Foreign nations, registration of trade-marks used in com- 
 merce with 
 
 Fraternal society, emblem of, not registrable 
 
 Geographical terms not registrable 
 
 Goods, particular description of, to be recited (see Statute) 
 Goods, to be included in a single registration, must be com- 
 prised in a single class 
 
 Immoral or scandalous matter not registrable 
 
 Indian tribes, registration of trade-marks used in commerce 
 
 with 
 
 Information of certain kinds not furnished 
 
 Injurious articles, trade-marks used on, not registrable. . 
 Insertions by ap|)Ucants or attorneys not permitted .... 
 Interferences: 
 
 Commissioner's attention invited to — 
 
 Irregularity in declaring 
 
 Matter not relating to priority 
 
 Statutory bar to registration 
 
 Examiner in charge of, has jurisdiction over — 
 
 Cancellations 
 
 Interferences 
 
 Oppositions 
 
 From decision of examiner of trade-marks, appeal may 
 
 be taken 
 
 Motion to dissolve, when made 
 
 Decision of examiner of trade-marks binding upon 
 
 examiner of interferences 
 
 Motion to shift burden of proof — 
 
 Made before, and determined by, the examiner of 
 
 interferences ., 
 
 Motion to stay proceedings 
 
 Not delayed by failure to prepare for 
 
 Preliminary questions must be settled by examiner of 
 
 trade-marks befor^ declaration 
 
 Preparation for ; 
 
 Publication of trade-mark must be made in the OflBcial 
 
 Gazette before interference is declared 
 
 Suspension of interference for consideration 
 
 Trade-marks must have been decided to be registrable 
 
 When declared, practice 
 
 Issue of certificates of registration 
 
 To assignee .■ ■ 
 
 Lawful trade-marks, or those used lawfully, alone regis- 
 trable 
 
 Length of time used to be recited (see Statute) 
 
 Letters, rules and regulations governing. (See Correspond- 
 ence.) 
 
 List of trade-marks to be published in the Official Gazette 
 
 MerchaJiidise, class of, to be recited (see Statute) 
 
 Merits, office action to be directed to the 
 
 Mode of applsang and affixing trade-mark to the goods to be 
 recited (see Statute) 
 
 Mutilation of papers not permitted 
 
 Rules. 
 
 17 
 
 Pages. 
 
 17 
 
 29 
 
 19 
 
 17,18 
 
 17 
 
 19 
 
 17 
 
 19 
 
 17 
 
 19 
 
 17 
 
 22(6) 
 
 18 
 
 30 
 
 19 
 
 19 
 
 17 
 
 19 
 
 17 
 
 9,25 
 
 15,19 
 
 19 
 
 17 
 
 42 
 
 22 
 
 48 
 
 23 
 
 48 
 
 23 
 
 48 
 
 23 
 
 52,54 
 
 24,25 
 
 46 
 
 23 
 
 51,54 
 
 24,25 
 
 48 
 
 23 
 
 49 
 
 24 
 
 50 
 
 24 
 
 49 
 
 24 
 
 49 
 
 24 
 
 47 
 
 23 
 
 47 
 
 23 
 
 47 
 
 23 
 
 47 
 
 23 
 
 48 
 
 23 
 
 47 
 
 23 
 
 46,47 
 48,49,50 
 
 23, 24 
 
 58,62 
 
 26,27 
 
 65 
 
 27 
 
 1>4 
 
 5,6 
 
 19 
 
 17 
 
 22(6) 
 
 18 
 
 68 
 
 27 
 
 22(6) 
 
 18 
 
 39 
 
 22 
 
 22(6) 
 
 18 
 
 42 
 
 22 
 
52 [788] Indexes 
 
 Index to trade-mark rules — Continued 
 
 Subject. 
 
 Name of applicant not registrable, except under certain con 
 
 ditions. 
 
 Name of applicant will be made uniform 
 
 Name of applicant to be recited (see Statute) 
 
 New matter not permitted by amendment 
 
 Notary, attorney may not act as 
 
 Notice of allowance /. . 
 
 Notice of opposition, and of the grounds therefor, to be 
 
 given to applicants 
 
 Notice of registration: 
 
 Form of 
 
 Registrants must give 
 
 Notices for foreign applicants may be served on their repre- 
 sentatives in the United States 
 
 Oath, to be made before whom 
 
 Oppositions: 
 
 May be made by any person who believes he would be 
 damaged by registration 
 
 May be filed by attorney 
 
 Must be accompanied by fee 
 
 Notice of grounds of opposition shall be given to appli- 
 cants i 
 
 Notice of, must be filed within 30 days after pubUca- 
 tion 
 
 Notice of, must be verified 
 
 Proceedings under 
 
 Order for copies, to specify what 
 
 Personal attendance of applicants unnecessary 
 
 Petitions to Commissioner of Patents 
 
 No fee required for 
 
 Petition to contain what 
 
 Portraits of Uving individuals not registrable without their 
 
 consent in writing 
 
 Postage must be prepaid 
 
 Powers of attorney: 
 
 Filing of 
 
 Requisites of 
 
 Revocation of 
 
 Printed copies of trade-marks furnished by the office ... 
 
 Priority proceedings, patent practice to govern 
 
 Publication in the Official Gazette: 
 
 Of registered trade-marks 
 
 Of trade-marks before registration 
 
 Publications, prices of copies of 
 
 Recording assignments 
 
 Fees for 
 
 Refunding of fees 
 
 Refusal of an application, office proceedings 
 
 Registrants under act of 1881, rights of 
 
 Registration: 
 
 Barred, when 
 
 Certificate of, date, duration, etc 
 
 Of attorneys 
 
 Of marks used 10 years prior to the passage of the act of 
 Feb. 20, 1905 
 
 Of particular trade-marks, office can not advise as to 
 
 Renewal of 
 
 Who is entitled to 
 
 Remittances, how made 
 
 Renewal of certificates of registration 
 
 Repayment of money, when made 
 
 Rules. 
 
 19 
 24 
 22(6) 
 41 
 34 
 40 
 
 54 
 
 73 
 73 
 
 29 
 34 
 
 51 
 51 
 61 
 
 54 
 
 51 
 
 51 
 
 51, 54, 55 
 
 67 
 
 6 
 
 56 
 
 56 
 
 22 (o) 
 
 19 
 10 
 
 12 
 12 
 14 
 66 
 46 
 
 68 
 40 
 69 
 
 62,63 
 69 
 72 
 
 38,39 
 61 
 
 17, 19, 62 
 
 40,59 
 
 11 
 
 20 
 
 9,25 
 
 60 
 
 16, 17, 18 
 
 3, 70, 71 
 
 60 
 
 72 
 
 17 
 18 
 18 
 22 
 20 
 22 
 
 25 
 
 28 
 28 
 
 19 
 20 
 
 24 
 24 
 24 
 
 25 
 
 24 
 24 
 24,25 
 27 
 15 
 25 
 25 
 18 
 
 17 
 16 
 
 16 
 16 
 16 
 27 
 23 
 
 27 
 22 
 28 
 27 
 28 
 28 
 21,22 
 26 
 
 17,27 
 
 22,26 
 
 16 
 
 18 
 15,19 
 
 26 
 16, 17 
 15,28 
 
 26 
 
 28 
 
Indexes 
 index to trade-mark rules — Continued 
 
 [789] 53 
 
 Subject. 
 
 Representativea in the United States, foreign applicants 
 
 must designate 
 
 Residence of applicants required (see Statute) ... ...... 
 
 Restrictions on registration 
 
 Return of papers lacking in courtesy and decorum 
 
 Return of application papers not allowed 
 
 Review by Commissioner of Patents of adverse decision. 
 
 Scandalous or immoral matter not registrable 
 
 Schedule of fees 
 
 Secrecy, applications preserved in 
 
 Separate letters, when required i 
 
 Signatures of applicants must be uniform 
 
 Specimens of the trade-mark required 
 
 Statement: 
 
 May be amended 
 
 Must recite what 
 
 States, registration of trade-marks used in commerce among 
 
 Substitute declaration, when required 
 
 Substitution of attorneys 
 
 Suspension of applications 
 
 10 years' use prior to Feb. 20, 1905, permits registration of 
 
 certain marks 
 
 Term of registration: 
 
 Duration of 
 
 Renewal of ' 
 
 Transfer of trade-mark rights (see also Assignments) 
 
 Unlawful business, trade-marks used in, not registrable. . . 
 Use: 
 
 Manner, or mode of, to be recited 
 
 Time of, to be recited (see Statute) 
 
 Verification of declaration 
 
 Weekly issue to close on Thursday 
 
 Writing, business to be transacted in 
 
 19 
 18 
 17 
 15 
 22 
 25 
 17 
 28 
 19 
 15,22 
 18 
 18 
 
 22 
 18 
 17 
 21 
 16 
 23 
 
 18 
 
 26 
 26 
 27 
 17 
 
 18 
 18 
 20 
 22 
 15 
 
 INDEX TO TRADE-MARK FORMS 
 
 Subject. 
 
 Application for cancellation of a trade-mark 
 
 Declaration for: 
 
 Applications under 10-year proviso 
 
 Associations 
 
 Corporations 
 
 Firms 
 
 Foreigners 
 
 Under sec. 3 of the act of May 4, 1906 
 
 Individuals 
 
 Notice of opposition 
 
 Petition 
 
 For renewal 
 
 Statement for: 
 
 Associations 
 
 Corporations 
 
 Firms 
 
 Foreigners under section 3 of the act of May 4, 1906 
 
 Individuals 
 
INDEX 
 
 I Beferences aie to pages | 
 
 ABANDONMENT 
 
 assignment may work, 697. 
 
 common-law trade-mark may be lost by, 30. 
 
 defense of, 695. 
 
 estoppel necessary to, 697. 
 
 intention to abandon may be inferred from circumstances, 696. 
 
 intent of, from proof of non-user, 697. 
 
 silence does not work, 697. 
 
 non-user does not constitute, 696. 
 
 is a question of intent, 695. 
 
 what constitutes, 695 et seq. 
 
 what periods of time may work, 698 et seq. 
 
 ABBREVIATIONS. (See Catchwords.) 
 catchwords, family names as, 146. 
 of corporate names, 169. 
 of names of goods, 100. 
 
 surnames, as "Huyler's," "Hire's," etc., 146. 
 use of "& Co.," 114. 
 
 ABSTRACT MEANING 
 
 place names may acquire, 207. 
 
 ABSTRACT NAMES 
 
 differ from business names, 81, 207. 
 
 geographic names may be used for, 223. 
 
 of objects, family names or surnames may be used for, 143. 
 
 ACCOUNT OF SALES 
 
 ordered kept by defendant when injunction not granted, 641. 
 
 ACCOUNTING 
 
 directed of fraudulent sale of goods made by secret process, 358, 359, 
 
 effect of silence or acquiescence on, 701. 
 
 for profits, right to, barred by laches, 703, 732. 
 
 material delay bars right to, 703. 
 
 when not ordered, 720. 
 
 ACQUIESCENCE 
 
 common-law trade-mark may be lost by, 30. 
 distinguished from laches, 699. 
 
 791 
 
792 Index 
 
 I Beferences are to pages I 
 
 ACQUIESCENCE— Continued. 
 
 in sense of inaction, on which others have right to rely, 706. (See Laches.) 
 may grant a revocable license, does not preclude one from asserting his 
 
 rights, 701. 
 no presumption of, arises from exclusive right, 703. 
 test of, 708. 
 
 ACQUIRED MEANING 
 
 (See Secondary Meaning.) 
 
 ACQUISITION 
 
 must be supported by sufScient use, 411. 
 of trade-mark, 409, 410. 
 
 ACTION 
 
 based on injury to business, 328. ' 
 
 basis of. (See Chaptee II.) 
 
 exclusive right not necessary to, 2, 26. 
 
 features of, as to label, 260. 
 
 on trade-mark and for unfair competition do not differ, 3. 
 
 requisites of an action for interference with contract, 345. 
 
 requisites of action for unfair competition, 9. 
 
 right of, based on injury to a man's trade, business or calling, 323. 
 
 depends upon question of fact, 3. 
 who may sue for misuse of geographic name, 200. 
 
 ADDRESSES 
 
 of companies that have been consolidated, 178. 
 street addresses, 112. 
 
 ADJOINING 
 
 stores, fraud resulting from, 686. (See Location.) 
 
 ADMINISTRATOR 
 
 of deceased partner may be party plaintiff, 638. 
 
 ADOPTION 
 
 of trade-mark, 411. 
 
 ADULTERATION 
 
 of goods, 222. 
 
 ADVERTISING 
 
 appropriation of, by competitor, 556. 
 
 by person using nickname of competitor actionable, 100 
 
 development of, effect of, 116. 
 
 effect of, 628. 
 
Index 793 
 
 1 Beferences are to pages | 
 
 ADVERTISING— Continued. 
 inserts, unfair use of, 558. 
 
 on value, 25. 
 matter, misrepresentation in, 689. 
 purposes, use of prices for, 565. 
 right of sons to advertise their connection in business with father who has 
 
 sold his business and is dead, 155. 
 right to advertise facts as to skill, experience, former residence, etc., on 
 
 selling out one's business, 56. 
 the succeeding to another's business, 112. 
 
 use of bhnd, 557. 
 use of false, 556. 
 
 ADVERTISEMENTS 
 
 by one who has sold his business, 56. 
 
 false, of possession of good-will, 37 - 
 
 libelous, injunctions against, 473. 
 
 printing advertisements out of alphabetical order, 487. 
 
 ADVERTISING MATTER 
 
 copying, 248. 
 misrepresentations in, 688. 
 
 AFFIRMATIVE 
 
 duty to differentiate, 171. (See Differentiate.) 
 
 AGENTS 
 
 bribery of competitors', 560. 
 
 defense that defendant acted as agent, not as principal, 667. 
 
 effect of specific orders given to agent to act fairly, 624. 
 
 fraudulent acts of, principal not excused by his orders against such acts, 624. 
 
 may be made defendants although proprietor or principal is not, 638. 
 
 of corporation not proper parties defendant, 639. 
 
 AGENT 
 
 of steamship line may acquire secondary meaning in name as against owner 
 
 of line, 231. 
 of unknown principal may be sued, 639. 
 use of material obtained for a principal may not be used in competition 
 
 against him by agent, 312. 
 
 ALIENS. (See Foreigners.) 
 
 application by, for trade-mark, 431. 
 rights of, as to trade-marks, 410. 
 
 ALLEGATIONS. (See Pleading.) 
 by way of recital, 571. 
 essential, 575. 
 
794 Index 
 
 ( Beferences are to pages ] 
 
 ALLEGATIONS— Continued. 
 
 facts, not conclusions, to be alleged, 571. 
 on information and belief, 571. 
 what held insufficient, 576. 
 what held sufficient, 575. 
 
 ALPHABET 
 
 (See Letters op Alphabet.) 
 
 APPEALS 
 
 to the Commissioner of Patents, 453. 
 to the U. S. Supreme Court, 461. 
 
 APPEARANCE 
 
 general, of an article with its dress or get-up, important, 241. 
 
 APPLICANT 
 
 registration of name of, 433, 438. 
 
 APPLICATION 
 
 for registration, 428. 
 pending, 465. 
 
 APPROPRIATION 
 
 of advertising by a competitor, 556. 
 
 ARBITRARY SENSE 
 
 common words used in, 397. 
 
 ARCHITECTURE 
 
 form or style of buildings, fraud in use of, 259. 
 
 ARTICLES 
 
 manufactured by others, making repair parts for, 285. 
 
 ARTIFICL^L 
 
 or made-up names, 91 et seq. 
 
 ARTISTS 
 
 names of, used in business not transferable, 37. 
 
 ASSIGNMENTS 
 
 (See Transfer.) 
 assignee may not sell assignor's labels in bulk, 50. 
 for benefit of creditors, transfers of names, marks, etc., in, 48. 
 names not assignable in gross, 44. 
 
 of mark or name, must be incidental to transfer of business, 46. 
 of secret carries right to protect it, 316. 
 
Index 795 
 
 1 Beferences are to pages | 
 
 ASSIGNMENTS— Continued, 
 of trade-mark, 454. 
 
 of trade-marks without transfer of business may be valid, 43. 
 trade names and marks not assignable in gross, 44. 
 
 ASSOCIATION 
 
 between a business and a geographic name, 203 et seq. 
 
 between name and user, 120. 
 
 use of word by concern not incorporated, 181. 
 
 ASSUMED NAME 
 registration of, 33. 
 
 ATTORNEY 
 
 sale of practice, 54. 
 
 AUCTION 
 
 purchase of good-will at, 61. 
 
 AWNING 
 
 misuse of, 188. 
 
 AUTHORS 
 
 of different dramatizations of same novel, 533. 
 name, use of, 543. 
 rights in hie work, 510. 
 
 AUTOGRAPH SIGNATURE 
 
 use of, 246. 
 
 without consent of owner, 247. 
 
 BAGS 
 
 copying of, 250. 
 
 for tobacco, similarity in, 272. 
 
 use of marked, already once used, 255. 
 
 " BAKER " 
 
 chocolate cases, 127 et seq., 136, 160. 
 
 BAND 
 
 paper, around loaf of bread, 282. 
 
 BANKRUPT 
 
 may not resume use of his name sold in bankruptcy as trade name, 48. 
 
 BANKRUPTCY 
 
 transfer of names, marks, good-will, etc., in, 48. 
 
796 Index 
 
 I Beferences are to pagea ' 
 
 BASIS OF ACTION 
 
 for unfair competition. (See Action.) 
 
 BILL OF COMPLAINT. (See Pleading.) 
 in the nature of quia timet, 639. 
 must set out facts upon which action based, 571. 
 
 BOND 
 
 (See Injunction.) 
 given pending trial, 643. 
 
 BOOKS, ETC. 
 
 imitation of covers of, 251. 
 
 title of, may acquire secondary meaning, 516. 
 
 names of, 517. 
 
 reprints of, fraud in, 527. 
 
 short names for, 526, note 37. 
 
 title or name of, will be protected from imitation, 518. 
 
 uncopyrighted, may be reproduced, 523. 
 
 BOTTLES 
 
 (See List of Subjects, p. 233.) 
 copying form of, 251. 
 copying shape of, etc., 251. 
 false labels on, 253, 254. 
 misuse of, in selling liquor, 255. 
 refilling those already used, 253, 255. 
 refilling, with inferior goods, 257. 
 shape of, 238, 252, 253. 
 use of falsely marked, 255. 
 use of stock bottles, 244. 
 
 BOTTLING 
 
 goods bought in bulk, fraud in, 254. 
 
 BOX 
 
 copying form of, 250. 
 shape of, 239. 
 
 BOXING 
 
 goods fraudulently, 265. 
 
 BOYCOTT 
 
 by use of letters, circulars, etc., 486. 
 
 BRANDS 
 
 (See Labels.) 
 
Index 797 
 
 I References are to pages | 
 
 BREACH 
 
 procuring, of provisions of lease, 348. 
 
 BREACH OF CONTRACT 
 
 by disclosure of trade secret, 297. 
 
 by which trade secret betrayed, 296. 
 
 caused by one not party to it, 337. 
 
 duration of contract does not affect breach, 348. 
 
 equity protects against unfairly procuring. (See Interfeeence with 
 
 Contract.) 
 inducing, 344 et seq. 
 
 inducing, by offers to save harmless, 568. 
 inducing breach of contract for sale of goods made under secret process, 
 
 357. 
 
 BREWERY 
 
 right to name, on sale of, 42. 
 
 BRIBERY 
 
 as a means of competition, 560. 
 of competitor's employees, 560. 
 
 BUILDINGS 
 
 decorated in an individual way are sometimes signs, 110. 
 
 fraud in location of, 259, 651. 
 
 fraudulent get-up or decoration of, etc., 257. 
 
 good-will of, 32. 
 
 names of, 82. 
 
 sale of, 42. 
 
 BULK 
 
 sale of goods in, for bottling, fraud in, 254. 
 
 of labels of assignor by assignee in bulk unfair, 49. 
 
 " BURGESS V. BURGESS " 
 
 effect of decision in, 121. 
 
 BUSINESS 
 
 absolute right to enter any, not barred by fact one's name already in use 
 
 by another, 124. 
 character or kind of, as regards competition, 105. 
 credit, libel and slander of, 470. 
 
 duty to prevent confusion resting on one who sells, 46. 
 effect of locality on transfers of, 57. 
 effect of moving, 216. 
 
 injuring a rival by pretended competition, 560. 
 injury to another's, actionable, 333. 
 
798 Index 
 
 I Beferences are to pages | 
 
 BUSINESS— Continued, 
 interference with, 333. 
 sale of a, rights of vendor, 38. 
 
 sale of name or business by originator of an article, 56. 
 site, sale of, effect on names, 42. 
 
 BUSINESS NAMES 
 
 considered as transitory or personal, local or fixed, 82. 
 
 differences between them and abstract names of objects, 81, 207. 
 
 distinguished from marks, designs, devices, etc., 80. 
 
 effect of removal of business on, 216. 
 
 general principles, 79. 
 
 libel and slander of, 470. 
 
 names of books^ etc., 517. 
 
 newspapers, magazines, etc., 535. 
 
 plays, 528. 
 secondary meaning of semi-geographic business names, 230. 
 street addresses used as, 112. 
 
 used with phrases such as "Formerly with," "Late of," etc., 86. 
 use of suffix "& Co.," 114. 
 
 BUYING 
 
 carelessly, not a test of similarity, 586, contra, 123. 
 where employer buys material, not a trade secret, 311. 
 what is fair caution in, 264, 265. 
 who is an ordinary buyer, 585 et seq. 
 
 CALCULATED 
 
 to deceive. (See Similarity.) 
 
 CAMEL'S HAIR 
 
 belting cases, 70. 
 
 CAPS 
 
 misuse in get-up of, 258. 
 
 CANCELLATION 
 
 of registration, 456. 
 
 of registration may be ordered by equity court, 464. 
 
 CARELESS BUYERS 
 
 (See PUECHASERS.) 
 
 CARTONS, WRAPPERS, ETC. 
 
 unfair use of, 250. 
 
Index 799 
 
 I Beferences are to pages I 
 
 CATCHWORDS 
 
 (See Abbreviations.) 
 family names as, 159. 
 principal word of name, 590. 
 use of part of corporate name as, 170, 183. 
 
 CAUSES OF ACTION 
 joinder of, 570. 
 
 CAUTIONARY 
 
 notice, use of, 704. 
 
 CELEBRITY 
 
 of trade-mark measure of its value, 74. 
 
 CERTIFICATES 
 
 of registration, 455. 
 
 CERTIORARI 
 
 writs of in trade-mark cases, 461. 
 
 CHANCERY 
 
 court, eflFect of act of 1854 on, 474. 
 
 courts, power of, to enjoin libels prior to English Procedure Acts, 472. 
 
 power of, to protect property rights, 295. 
 
 CHARACTER 
 
 of business of competitors, when same and when not, 105. 
 
 CHARITABLE CORPORATIONS 
 
 names of, 166, 169. (See Corporations.) 
 
 CHEAP GRADE 
 
 fact that defendant makes cheaper goods than plaintiff no defense, 662. 
 
 CHEAPNESS 
 
 not an offense, 662. 
 
 CHILDREN. (See Descendants.) 
 rights of, to family name, 64. 
 right of, to name of father, 153. 
 (See Family Name.) 
 
 CIGAR 
 
 bands, 249. 
 
800 Index 
 
 I Beferences are to pages I 
 
 CIRCULARS 
 
 announcing business change, unfair use of, 57. 
 
 copying reading matter on, 248. 
 
 form of one, held to be proper, 482, 494. 
 
 giving notice of pendency of suit for unfair competition are legal, 496. 
 
 issued to intimidate customers, not fairly warn them, 493. 
 
 issuing, interference with contract by, 369. 
 
 must bad faith be shown to warrant injunction against, 493. 
 
 notices, 57. 
 
 placards, 505. 
 
 reading matter on, 247. 
 
 restraining issuance of, 488. 
 
 use of cautionary, 488. 
 
 CITIES. (See Residence.) 
 names of, right to use, 213. 
 
 CITIZENSHIP 
 
 of parties, effect on jurisdiction in unfair competition cases, 636. 
 
 CLASSIFICATION 
 
 instances of, 436, 437. 
 
 of goods under Trade-Mark Act, etc., 420, 436. 
 
 (See Appendix roB List of Classes Classified by Patent Office.) 
 instances of classifications, 436, 437. 
 same descriptive properties, definitions of, 452. 
 
 CLEAN HANDS 
 
 defense of, must be based on conditions at time of suit, 670. 
 
 defense of, when not sufficient, 320. 
 
 plaintiff must come into court with, 671, 675, 691. 
 
 CLERKS 
 
 (See Employees.) 
 
 CLUBS 
 
 unincorporated, names of, 186. 
 
 COLLOCATION 
 
 of features, copying, 239. 
 
 protected by injunction, 240. 
 
 COINCIDENCES IN MEANING OF NAMES 
 fraud in use of, 101. 
 
 COLOR 
 
 alone not a trade-mark, 594. 
 
 bronzing nail heads, as mark of identity, 279. 
 
Index 801 
 
 t Beferences are to pages ] 
 
 COLOR— Continued. 
 
 cannot be monopolized, 594. 
 
 combination of, with other features, producing likeness enjoined, 239, 595. 
 
 copying a, unfairly, 292. 
 
 different colored rope strands, right to use, 292. 
 
 form of decree against use of, 652. 
 
 injunctions against use of, 652. 
 
 may be appropriated by one person in combination with other features of an 
 
 article, 238 et seq. 
 may be used to make an otherwise proper use, fraudulent, 238. 
 mere diversity of, in get-up of goods not controlling as to fraud, 236. 
 simulation of, 594. 
 trade-mark in, 234. 
 
 COLORABLE IMITATION 
 
 (See SlMUABITT.) 
 
 COLOR SCHEME 
 imitation of, 239. 
 
 COMBINATION 
 
 of color, form, size, etc., protected against unfair competition (with cases 
 
 cited), 239, 258, 270, 282. See also cases cited at p. 273. 
 of companies, effect on corporate name, 178. ' 
 
 of names to produce fraud, 94. 
 
 COMIC STRIPS 
 titles of, 541. 
 
 COMITY 
 
 relative rights of foreign and domestic corporations as to name, 165. 
 
 COMMERCE 
 
 important part played by good-will in, 31. 
 
 COMMON LAW 
 
 gives right of action on injury to a man's trade, business or calling, 323. 
 may be lost by laches, non-user, etc., 30. 
 Procedure Act of 1854, 471. 
 trade-mark, acquisition of, 409. 
 
 definition of, 374. 
 
 extent of territory in which it exists, 29. 
 
 COMMON LAW TRADE-MARE 
 
 definition, 27, 374. 
 
 COMMON TO THE TRADE 
 
 features common to a trade, not protected, 242, 243, 244, 284. 
 
802 Index 
 
 I Beferences are to pages I 
 
 COMMON USE 
 
 defense that article is in, 659. 
 
 resemblance of features in, 244. 
 
 that a form is used commonly in a trade, 242. 
 
 COMMON WORDS 
 
 used in an arbitrary sense, 397. 
 
 COMPANY 
 
 use of word by concern not incorporated, 181. 
 
 COMPARISON 
 
 of articles. (See Similaeitt.) 
 
 of names or marks as evidence, 581. 
 
 unfair comparison of prices, 568. 
 
 COMPETITION 
 
 bribery as a means of, 560. 
 
 by unfair comparison of prices, 567. 
 
 combining to procure discharge of fellow workmen is not, 347. 
 
 definition, 12. 
 
 distance between stands of competitors, 592. (See Locality and Dis- 
 tance.) 
 
 injuring a rival by pretended business, 560. 
 
 interference with trade by simulated, 369. 
 
 limitation of freedom of, 322. 
 
 necessity of, 168, 658. 
 
 of "vendor " of business with vendee after sale, 38, 40, 49. 
 
 unfair use of price as means of, 567. 
 (See Unfair Competition.) 
 
 COMPETITORS 
 
 appropriation of advertising by, 556. 
 bribery of employees of, 560. 
 customers, intimidation of, 493. 
 
 interference with, 368. 
 
 threats made to, 368. 
 defamation of, 550. 
 
 distance between, effect on question of similarity, 592. 
 employment of employee of, 313. 
 enticing away employees of, 330. 
 false statements as to, 486. 
 goods of, defamation of, 478, 550. 
 ideas and methods of, unfair appropriation of, 552. 
 inducing breach of contracts of, 568. 
 interference with contracts of, 344. 
 
 salesmen of, 368. 
 
Index 803 
 
 I Beferences are to pages | 
 
 COMPETITORS— Continued. 
 
 misuse of signs of, 560. 
 
 obstruction of customers of, 550. 
 
 unfair acts of, may be basis of court action, 35. 
 
 use of prices to inflict injury on, 564. 
 
 CONCEALING MARKINGS 
 
 on packages, etc., 248. 
 
 CONCEALMENT 
 
 of part of label or name, effect of, 248. 
 
 CONCURRENCE delayale. 
 
 French term for unfair competition, definition of, 16: 
 
 CONDITIONAL 
 
 contracts between manufacturer and retailer, inducing breach of, 355. 
 sale of goods made by secret formula, 299. 
 
 CONFIDENTIAL 
 
 information. (See Secrets.) 
 
 relation of employer and employee, what is, 309, 311. 
 
 relations, law of, 294. 
 
 CONFUSION 
 
 caused by misuse of signs, 110. 
 
 duty to prevent, resting on one who sells his business, 46. 
 
 explanatory phrases as means of eliminating, in family names, 124. 
 
 CONSENT 
 
 (See Acquiescence.) 
 consequences of one's act presumed to be intended, 622. 
 inferred from acquiescence may be withdrawn, 701. 
 not to be presumed from silence of owner of mark or name used without 
 
 right by another, 697, 701. 
 
 CONSOLIDATION 
 
 of company or corporations, effect on name, 178. 
 
 CONSTRUCTION 
 
 copying features, essential to, 276. 
 names descriptive of, 88. 
 
 CONSUMERS 
 
 (See Purchasing Public, Customers.) 
 export of goods for foreign consumption, effect of that fact on names of 
 goods, 108. 
 
804 Index 
 
 I Beferences are to pages | 
 
 CONTAINERS 
 
 refilling those already used once, 253, 256. 
 use of second-hand or used, 255. 
 use of stock, 239. 
 
 CONTRACT. (See Breach of Conteact.) 
 
 a binding moral obligation, 344. 
 
 as to trade secret and contract on other personal property, distinction be- 
 tween, 298. 
 
 between manufacturer and retailer, procuring breach of, 35^. 
 
 breach of, is there moral justification for? 344. 
 
 forbidding employee to disclose trade secrets, 308. 
 
 for furnishing information, interference with, 342. 
 
 for sale of goods- made under secret process, inducing breach of, 357. 
 
 ignorance of existence of, no defense, 351. 
 
 inducing breach of the contracts of competitors, 344 et seq., 359. 
 
 interference with, by third person, 336. 
 by disclosure of secrets, 297. 
 
 interference with fixed contract and with uncompleted contract, distinc- 
 tion between, 362. 
 
 interference with contracts regarding trading-stamps, 361. 
 
 interference with proposed or prospective, 361. 
 
 justification of interference with, 350. 
 
 of employment, violation of, by betrayal of trade secret, 303. 
 
 of passengers with transportation company, 343. 
 
 partlj^ concluded by salesman prior to his discharge, belongs to employer, 
 314. 
 
 procuring breach of contract not to re-enter business, 351. 
 
 to sell only to specified persons, interference with, 357, 358. 
 
 what constitutes interference with, 344. 
 
 with employee, interference with, 339. 
 servants, " " 338. 
 
 employee implies agreement not to disclose trade secrets, 306. 
 
 CONTRIBUTORY 
 
 acts, to unfair acts, 548. 
 
 COPY 
 
 right to copy exactly goods of others, 286. 
 
 COPYING OR SIMULATING 
 
 (See List, p. 275.) 
 a collocation of features, 239. 
 a name exactly, 92. 
 
 articles on which patents have expired, 288. 
 a single feature or part, 284. 
 
Index 805 
 
 [ Beferences are to pages | 
 
 COPYING OR SIMULATING— Continued, 
 bottles of a competitor, 251. 
 color, 292. 
 
 distinguishing features of article as a whole, 277. 
 duty to differentiate one's goods from those already in market, 282. 
 entire article of rival and placing one's own name on copy, effect of, 283. 
 features necessary to construction of an article, 276. 
 general get-up, 264. 
 identical name of competitor, 92. 
 labels in which name is principal feature, 261. 
 making a facsimile, 278. 
 patented articles, 288. 
 repair parts, 285. 
 salient features, 263, 590. 
 single feature of dress, color, etc., 238. 
 whole article, 278. 
 
 COPYRIGHT 
 
 analogy between action for unfair competition and infringement of, 513. 
 
 enactment of statutes, re, 509. 
 
 jurisdiction of federal and state courts, 545. 
 
 of labels, effect of not procuring, 260. 
 
 publication of literary work condition precedent to obtaining, 510. 
 
 rights on expiration of, 524. 
 
 right to enjoin after expiration of, 526, note 38. 
 
 COPYRIGHTED 
 
 misrepresentation in use of the word, 687, 690. 
 
 CORPORATE NAME 
 abbreviation of, 169. 
 
 adoption by corporation of name used by individual or partnership, 172. 
 affirmative duty on incorporators to differentiate name from existing names, 
 
 171. 
 by incorporating, a business gains no better rights as to the name which its 
 
 incorporators had been using as a partnership or otherwise, 163. 
 charitable corporations, names of, 166, 169. 
 
 ground of protection of name of, against unfair use, 164 note, 
 choosing, 162. 
 
 nickname of rival, 169. 
 claiming falsely to be a corporation, 694. 
 comity as to rights to use a name, 165. 
 consolidation of corporations, effect of on names, 178. 
 corporation not necessary party defendant in action against individuals 
 
 doing business under, 638. 
 difference between, and other names, 161. 
 
806 Index 
 
 I Bereiences are to pages | 
 
 CORPORATE NAME— Continued, 
 dissolution, right to name on, 58. 
 domestic corporation, rights of, as to name against foreign corporation, 165, 
 
 171. 
 duty of incorporations as to choice of name, 162. 
 
 to differentiate corporate names, 171. 
 
 of corporations to avoid confusion in choosing, 152, 162. 
 executive oflScers may be made parties defendant, 638. 
 false or misleading use of, 185. 
 
 family name, effect of use of, in corporate name, 172, 173. 
 foreign corporation must yield to domestic corporations as to name, 
 
 165. 
 intention in selecting, controls, 175, note 29. 
 names of incorporated fraternal societies, 187. 
 names of unincorporated societies, etc., 185. 
 not trade-mark, 169. 
 
 persons controlling corporation, as defendants jointly with corporation it- 
 self, 638. 
 priority in organization, effect on name, 165, note 8. 
 
 in time of use of, 180. 
 protected by unfair competition, 170. 
 
 purchase of right to use a name similar to one already in use, 175. 
 registration of, under State laws, 163. 
 right of incorporator to use his own name in, 173. 
 
 to use family name not given by merely getting permission of person 
 bearing name, 175. 
 rights of foreign corporation as to name borne by domestic company, 
 
 within limits of the home Sta,te, 165, note 8. 
 right to use name of a stockholder, extent of, 177. 
 rights of retiring stockholders and others in, 50. 
 
 of domestic and foreign corporations as to, 165. 
 should be differentiated from partnership names as well as corporate names, 
 
 171. 
 similarity of, to partnership names, and differences, 161. 
 
 of, what is, 187. 
 stockholders not proper parties defendant in action against, 639. 
 State charters, effect on, 163. 
 used as trade catchwords or nicknames, 170, 183. 
 use of "Works," "Company," etc., by unincorporated concerns, 181. 
 
 of part of corporate name as catchword or nickname, 170. 
 
 of name of one of incorporators as part of, may be fraudulent, 179. 
 
 of name of deceased person, 186. 
 what is evidence of fraud in use of, 177. 
 
 CORPORATE STOCK 
 
 acquiring, for purpose of unfair competition, 568. 
 effect of state charter on name of, 163. 
 
Index 807 
 
 ( Beferences are to pages | 
 CORPORATION 
 
 executive ofiScers may be made parties defendants, 638. 
 falsely claiming to be, 694. 
 family names as names of, 172. 
 foreign and domestic, rights of, as to name, 165. 
 injunction against use of name of former member of, 655. 
 names of charitable, 166. 
 
 not necessary party defendant in action against individuals doing business 
 under corporate name, 638. 
 
 CORRESPONDENTS 
 
 list of, belonging to a business house, part of good-will, 35. 
 
 COST 
 
 as element of damage, 717. 
 
 of manufacture deducted from profits, 719. 
 
 COURT 
 
 disclosure of secret in, effect of, 301. 
 
 does not pass on defendant's plans to correct his unfair acts, 649. 
 
 failure of, to work out remedial doctrine, 120. 
 
 jurisdiction of, 460. 
 
 jurisdiction of, in unfair competition cases, 636. 
 
 may destroy infringing marks, 462. 
 
 scope of power of, 462. 
 
 CREDITORS 
 
 assignments for, and transfers in bankruptcy, 48. ' 
 
 CUSTOMERS 
 
 classes of purchasers that the law protects, 586. 
 
 differences in character of, to be considered, 585 et seq. 
 
 have buyers a right to be careless, 123, 264. 
 
 inducing them to cease trading with another dealer enjoined, 337. 
 
 interference with contract of rivals by false representations to, 368. 
 
 intimidation of, 493. 
 
 list of, fraudulently obtained, may be ordered to be destroyed, 317, 318. 
 
 is a trade secret, 316. 
 
 is part of good- will, 34. 
 obstruction of a competitor, 550. 
 right of vendor to solicit, after a sale of business, 38, 55. 
 right to enjoin issuance of circulars threatening prosecution, 488. 
 solicitation of, 558. 
 
 by former partner, 51, 53. 
 
 by retiring stockholder or partner, 51. 
 
808 Index 
 
 I Beferences are to pages 1 
 
 CUT PRICES 
 
 where use of, accompanies unfair or inaccurate description of goods, 567. 
 
 DAMAGES. (See Profits.) 
 
 American methods of assessing damages in equity, 712 et seq. 
 
 as distinguished from profits, 712. 
 
 compensation to plaintiff is purpose of granting, 713. 
 
 elements of, 716. 
 
 exemplary, 372. 
 
 for interference with business, 368. 
 
 for libel, 478. 
 
 good faith as an excuse for relieving defendant from paying damages, 735. 
 
 in estimating, profits taken into account, 372. 
 
 injury to reputation of an article to be considered, 717. 
 
 in suits at law for unfair competition, 734. 
 
 in unfair competition cases, 711. 
 
 measure of elements of, 716. 
 
 plaintiff's losses to be computed in reckoning profits, 719. 
 
 profits, cost of manufacture deducted from, 719. 
 
 deduction of expenses of salesmen, 718. 
 when interest on computed, 721. 
 
 DEALERS' TALK 
 
 misrepresentation in, 691. 
 
 DEATH 
 
 of owner of secret, effect of, 303. 
 
 of person whose name is part of trade name, effect of, 47. "> 
 
 of partner, effect on name, 60. 
 
 effect on use of his name and portrait, 47. 
 
 DECEIT 
 
 actual, need not be shown to warrant injunction issuing, 639. ' 
 
 proof of, unnecessary, but valuable, 601, 628. 
 degree of similarity calculated to cause, 235. 
 of ultimate purchaser, not jobber, is important question, 593. 
 shown by fact that goods are likely to deceive, 620. 
 
 DECEPTION 
 
 may arise from manner of printing words on labels, 237. 
 probability of, 640. 
 
 DECEPTIVE WORDS 
 
 not registrable, 433-438. 
 
 DECOY 
 
 use of prices as, 565. 
 
Index 809 
 
 I Beferences are to pscEes / 
 
 DECREE 
 
 correcting confusing use of names, 651. 
 final, as to corporate name, 655. 
 
 as to use of partnership names, 655. 
 
 form of, 649. 
 
 should not specify acts which defendant proposes to adopt to correct 
 his unfair acts, 649. 
 form of, against unfair use of a color, 652. 
 
 correcting unfair use of form, size, shape, etc., 652. 
 
 DEDICATION 
 
 of mark to public, 290. 
 
 DEFAMATION 
 
 (See DiSPAHAGEMENT.) 
 
 of competitors, 550. 
 
 of goods of competitors, 478, 550. 
 
 DEFENDANTS. (See Pahties.) 
 
 all acts of, should be considered together and not taken singly, 651. 
 
 cannot be deprived of right to use own name, 119. 
 
 effect of warning to, 613. , 
 
 DEFENSES 
 
 abandonment, 695. 
 
 acquiescence in the sense of inaction upon which others have a right to 
 
 rely, 706. 
 claiming falsely to be a corporation, 694. 
 continuing use of name of predecessor, 685. 
 extravagant claims as to efficacy of medicine, 680. 
 first user of mark may revoke license implied from laches, 701. 
 ignorance of contract, 351. 
 
 of plaintiff's rights, 611. 
 kind of laches, 699. 
 laches in the sense of mere delay, 699, 700. 
 
 may bar right to order for destruction of offending goods, 704. 
 
 which bars right to preliminary injunction, 705. 
 material delay bars right to an accounting of profits, 703. , 
 
 miscellaneous cases of misrepresentation deemed harmless, 694. 
 misrepresentation as to unessential details, 686. 
 
 as to manufacture, place of manufacture, or origin of goods, 681. 
 
 as to ingredients and the nature and effect of a medical preparation, 674. 
 
 as to maker of goods, 684. 
 
 by laudatory expressions and exaggerated trade phrases, 691. 
 
 by use of terms "Copyrighted" or "Registered," 690. 
 
 discontinued before suit brought, 673. 
 
810 Index 
 
 I Beferences are to pages | 
 
 DEFENSES— Continued. 
 
 implying a claim of monopoly, — use of term "Patented," 687. 
 must be as to ingredients that are material, 680. 
 misrepresentation must be as to the subject-matter of the suit, 670. 
 must be intentional and material, 674. 
 usually but not always an afiBrmative defense, 672. 
 no presumption of acquiescence arises from an exclusive right, 703. 
 of "unclean hands," 577. 
 
 proof of specific orders to agents to act fairly, 624. 
 question of intent, 609. 
 test by which to determine acquiescence, 708. 
 that act of defendant too remote, 336. 
 that complainant's title was not properly established, 668. 
 that deception is due, not to defendant, but to a jobber or retailer or other 
 
 purchaser from defendant, 664. 
 that defendant has no intent to pass off his goods as plaintiff's, 611, 
 
 622, 662. 
 that defendant was only the maker of the label ot container complained of 
 
 and was not responsible for its ultimate use by him for whom it was 
 
 made, 667. 
 that defendant was acting only as agent for another and received none of 
 
 the profits, 667. 
 that defendant's article is as good as plaintiff's, 661. 
 that defendant's marks differ sufficiently from complainant's to be capable 
 
 of registration as distinct marks, 663. 
 that defendant's name is two or more words while plaintiff's is one, and 
 
 hence different, 669. 
 that goods were not marked with any spurious marks or names, 662. 
 that name, mark, form, shape, or other device in question has not been 
 
 exclusively used by complainant but is in common use, 659. 
 that no attempt was made to imitate, 616. 
 that the offense is too trivial for the court to notice, 668. 
 that plaintiff and defendant are not in competition with each other, 
 
 658. 
 that plaintiff has acted unfairly toward third persons not connected with 
 
 the suit at bar, 669. 
 that plaintiff has not extended his trade to defendant's territory, 73. 
 that plaintiff is an impostor and deluding the public, 669. 
 that plaintiff is in possession of and using trade secret, 320. 
 that plaintiff is making misrepresentations in his own business, 671. 
 that plaintiff violated some federal statute regarding restraint of trade, or 
 
 monopoly, 710. 
 that plaintiff's goods are worthless or useless, 669. 
 that plaintiff's sales have been small, 206. 
 that representations objected to by plaintiff are true, 663. 
 use of term "Established in," 695. 
 
Index 811 
 
 i Beferences are to pages | 
 
 DEFINITE PROPERTY RIGHTS 
 
 may arise in name or mark, 26. 
 
 DEFINITIONS 
 
 acquiescence, 699. 
 
 common-law trade-mark, 374. 
 
 competition, 12. 
 
 concurrence deloyale, 16. 
 
 good-will, 32-34. 
 
 intent to defraud, 608. 
 
 laches, 699. 
 
 malice, 330. 
 
 mark, 373. 
 
 names idem sonans, 95. 
 
 passing-off, 2. 
 
 secret, 294. 
 
 similarity, 582, 583, 595. 
 
 technical trade-marks, 374. 
 
 terms used in Trade-Mark Act, 468. 
 
 trade-mark, 374, 375. 
 
 trade name, 374. 
 
 unfair competition, 12, 31, 174. 
 
 DELAY 
 
 (See Laches.) 
 in bringing suit, when warrants presumption of intent to abandon, 698. 
 instances of, which were held to bar right to preliminary injunction, 705. 
 in suing, when considered as laches, 700. 
 material, bars right to an accounting, 703. 
 
 DELIVERY ROUTE 
 
 a trade secret, 295. 
 
 DENIAL 
 
 of intent to defraud will not avail defendant, 622. 
 
 DEMURRER 
 
 what questions may be raised by, 576. 
 
 DESCENT 
 
 surnames, acquired other than by, 149. 
 transfer by, 62. 
 
 DESCENDANTS 
 
 right of, to use ancestor's name as trade name, 64, 153, 177. 
 
,812 Index 
 
 I Beferences are to pages I 
 
 DESCRIPTIVE NAMES 
 
 describing construction, 88. 
 test as to what are, 395. 
 
 DESCRIPTIVE PROPERTIES 
 
 (See Classification.) 
 
 DESCRIPTIVE WORDS 
 
 foreign, scientific, or unfamiliar words not, 90. 
 not approbriable as trade-marks, 392. 
 
 DESIGNS 
 
 character of property acquired in, 23. 
 distinguished from business names, 80. 
 
 (See chapter on Dress, 233.) 
 ignorantly using one akeady in use, 245. 
 use of, 245. 
 
 DESTRUCTION 
 
 of goods, laches may bar right to demand, 704. 
 of offending articles, when ordered, .462. 
 
 DETAILS 
 
 examination of, is not a test of similarity, 582. 
 external, imitation of, 107, 591. 
 unessential, misrepresentation as to, 629, 686. 
 
 DETECTIVES 
 
 evidence of, 580, 600, 603. 
 
 DEVICES 
 
 defense that it is commonly used, 659. 
 distinguished from business names, 80. 
 
 (See chapter on Dress, 233.) 
 unfair use of, 88, 230, note, 67, 263, 271. 
 use of, 245. 
 
 DIFFERENTIATE 
 
 duty of incorporators to differentiate names of corporations, 171. 
 
 duty to, as to name, 290. 
 
 duty to differentiate one's goods from those abeady in the market, 200, 282. 
 
 DIRECTIONS 
 
 for use, copying, 247, 248. 
 
 DIRECTORS 
 
 as parties defendant, 637. 
 
Index 813 
 
 I Beferences are to pages | 
 
 DIRECTORY 
 
 omission of plaintiff's name from, 487. 
 
 printing advertisements out of alphabetical order in telephone, 487. 
 
 DISCLOSURE 
 
 of secret in court, effect of, 301. 
 (See Secrets, Publication.) 
 of trade secret, 297, 314. 
 by employee, 306. 
 
 DISCONTINUANCE 
 
 of infringement before suit brought, may not prevent issuance of injunction, 
 
 641. 
 of use not abandonment, 697, 698. 
 
 DISCOVERY 
 
 and examination before trial, 605. 
 of secret, by lawful means, 302., 
 
 DISPARAGEMENT 
 
 not of goods of a specific competitor, but of article sold by a number of 
 
 competitors, 550. 
 of rivals and their goods, 470, 550. 
 
 DISSOLUTION 
 
 by death of partner, 60. 
 
 (See CoEPOBATE Names, Partner, Partnership.) 
 of corporation, right to corporate name on, 58, 166. 
 
 DISTANCE. (See Locality.) 
 between competitors, 140, 188. 
 effect on names, 188. 
 effect on question of similarity, 592. 
 
 DISTINCTION 
 
 between abstract names of objects and trade names, 81. 
 corporate and other names, 161. 
 descriptive names and names in public domain, 411. 
 interference with fixed contract and with uncompleted contract, 362. 
 proof of cases involving fanciful name and those involving secondary 
 
 meaning, 581. 
 technical trade-mark and unfair competition cases, 3. 
 trade libel and personal libel, 477. 
 trade-marks and trade names, 386. 
 rights to damages and to profits, 712. 
 unfair competition and infringement of trade-mark, 387. 
 unfair competition from legal standpoint and popular standpoint, 2. 
 
814 Index 
 
 [ Beferences are to pages I 
 
 DISTINCTIVE 
 
 technical trade-mark must be, 379. 
 
 DISTINGUISHING FEATURES 
 
 of article, copying as a whole, 277. 
 
 DOMESTIC CORPORATIONS 
 
 (See CoBPOHATE Names.) 
 rights of, as to name, 165. 
 
 DOUBLE 
 
 meaning, names having, 101. 
 trade names for same article, 101. 
 
 DRAMATIC COMPOSITION 
 
 imitation of, 534. 
 
 • 
 
 DRESS 
 
 (See Labels, Colob, Bottles, Wbappeks, Cartons, Boxes, eI'c.) 
 classification of cases involving, 244 et seq. 
 
 collocation of features, which might be copied singly, is unfair, 239. 
 deception may arise from manner of printing, 2. 
 designs, devices and figures, 245. 
 imitation of single feature, 238. 
 mere diversity of color, not a controlling feature, 236. 
 of goods, features of, as technical trade-marks, 380. 
 
 labels, 259. 
 
 employees, 112. 
 
 stores, 112. 
 
 wagons, 257. 
 or get-up of goods. (See List, p. 233.) 
 
 degree of similarity in, calculated to deceive, 235. 
 resemblance in several features may be fair if these are common to the 
 trade, 242. 
 
 DUTY, AFFIRMATIVE 
 
 to differentiate, 171. 
 (See Differentiate.) 
 
 ELIMINATION METHOD 
 
 in deciding similarity, 240. 
 
 EMACK V. KANE 
 
 case of, 488. 
 
Index 816 
 
 t Beferences are to pages I 
 
 EMPLOYEE 
 
 betrayal of secret by, 304 et seq. 
 
 bound by implied contract not to disclose secrets, 306, 308. 
 
 definition of, as used here, 311. 
 
 doing business under the name of an employee, may be unfair competition, 
 
 151. 
 dress of, 112. 
 evidence of acts of, 605. 
 interference with contracts of, enjoined, 339. 
 inventions of, while in employ of another, 308. 
 manager of a business is an, so far as betrayal of secrets is concerned, 306, 
 
 note 40. 
 may be enjoined from breaking contract with employer, 341. 
 
 from disclosing trade secrets, 341. 
 may not divulge secrets after leaving employer, 314. 
 right of, to exercise own inventive skill, 310. 
 rights of, on leaving employment, 182. 
 
 of one who has left employer, to use employer's name, 86. 
 should receive notice when trade secret imparted to him, 310. 
 secrets discovered by, in course of employment, right to use, 304, 309 et 
 
 seq. 
 
 EMPLOYMENT 
 
 actual or prospective, interference with, 371. 
 
 ENGLISH 
 
 act of 1875, 424. 
 
 cases, summary of, re power of equity to enjoin Ubelous statements, 477. 
 
 cases, effect of, on American Law of Unfair Competition, 192. 
 
 Procedure Acts of 1854 and 1873, 471. 
 
 rule as to intent, summary of, 615. 
 
 Trade-Marks Act, 425. 
 
 effect of, on old equity jurisdiction, 425. 
 
 ENVELOPES 
 
 copying, 250. 
 
 EQUITY 
 
 acts to protect property, 22. 
 
 American methods of assessing damages in, 712 et seq. 
 
 early powers to issue injunctions against Ubel and slander, 472. 
 
 jurisdiction over rights in names and marks acquired by use, 17. 
 
 jurisdiction to enjoin Ubels prior to 1873, 472. 
 
 protects right to use one's own name, 116. 
 
 relief is two-fold, 716. 
 
 will enjoin where bad faith proved, 494. 
 
 will not define similarity exactly, 584, 585. 
 
816 Index 
 
 ( Beferences are to pages ) 
 
 ESSENTIAL ELEMENTS 
 of technical trade-mark, 379. 
 
 " ESTABLISHED IN " 
 
 use of term, when unfair, 695. 
 
 ESTOPPEL 
 
 fraud may estop incorporators from denying knowledge of defendant's 
 rights, 177. 
 
 EVIDENCE 
 
 as to trade secret in court, 301. 
 
 use of a trade-mark, 606. 
 burden of proof, 602, 603. 
 
 on applicant to show exclusive use under Ten Year Law, 447. 
 connected with comparison of names or marks, 581 et seq. 
 deceit of ultimate purchasers is the important consideration, 593. 
 difference between proof of cases involving fanciful name or mark and one 
 
 involving secondary meaning, 581. 
 discovery and examination before trial, 605. 
 inferences and presumptions, 607. 
 judicial notice, 605. 
 loss of business by complainant as, 604. 
 necessity of proving intent, 621. (See Chap. XXII, also.) 
 of acts of employees, 605. 
 of experts as to meaning, 178. 
 of fraud in use of corporate name, 177. 
 of registration, effect of, 606. 
 of intent, character of, 241, 580. 
 
 what constitutes, 629. 
 of investigators, 603. 
 
 of secondary meaning, what constitutes, 70. 
 of similarity, what is, 582. 
 presumption of continuance, 604. 
 proof of actual bona fide deceit of purchaser, 601. 
 registration prima facie proof of ownership, 458 et seq. 
 secured at instance of plaintiff proper, 603. 
 secret motive need not be proved, 614. 
 
 that proportion of buyers of imitating article is small, no defense, 590. 
 to prove secondary meaning, 596. 
 weight and credibility of, 605. 
 
 EXAGGERATION 
 
 in dealer's talk, 691. 
 
 not necessarily misrepresentation, 674, 680, 691. 
 
Index 817 
 
 I Beferences are to pages | 
 
 EXAMINATION 
 
 before trial, 605. 
 
 EXCLUSIVENESS 
 
 of use, 413. 
 
 EXCLUSIVE RIGHT 
 
 burden of proof on claimant to prove, 709. 
 
 to name or mark not necessary to action, 2 et seq., 9, 120. 
 
 EXCLUSIVE USE 
 
 applicant for registration must show, 447. 
 meaning of term, 446. 
 
 EXEMPLARY DAMAGES 
 
 when awarded, 372. 
 
 EXPENSES 
 
 of defendant, deduction of, from profits, 718. 
 
 EXPERT EVIDENCE 
 
 as to similarity, 584. 
 
 EXPERTS 
 
 deceit of, not test of unfair competition, 19. 
 
 marks gotten up by, 627. 
 
 originating marks, held more strictly accountable for effect of same than 
 
 others are, 627. 
 testimony of, as to meaning, not competent, 178. 
 
 EXPERIENCE 
 
 in business, right to advertise after sale of a business, 56. 
 
 EXPLANATORY PHRASES 
 
 and words, use of with family name, 124 et seq. 
 
 as means of eliminating confusion, 124. 
 
 do not cure unfair similarity in packages, 272. 
 
 rule as to, inadequacy of, 124, 133, 134. 
 
 use of by descendants of one whose name has been sold, 63. 
 
 full name instead of a part, 125. 
 
 ordered in preliminary hearing, 644. 
 
 I 
 EXPORT 
 
 names of goods intended for, 108. 
 
 EXTENT 
 
 and manner of use, 414. 
 
 of celebrity of trade-marks, measure of value, 74. 
 
 of geographic rights in mark, 28, 29, 206. 
 
818 Index 
 
 I References sre to pages ] 
 
 EXTENSION OF TRADE 
 
 process of, 29, 30. 
 
 rights of first user to extend his market under his name, 29. 
 
 EXTRAVAGANT 
 
 claims for goods, not misrepresentations, 674, 680, 691, 693. 
 dealer's talk, 691. 
 
 FACSIMILE 
 
 making a, of goods of another, 278. 
 
 (See Similarity.) 
 signature, use of, 247. 
 
 FAIR DEALING 
 
 protected by unfair competition, 18. 
 
 FAIR NAME 
 
 good-will another name for, 31. 
 
 FAIR TRADE 
 
 policy of law to encourage, 11. 
 
 theory that in unfair competition actions court aims to protect, 18. 
 
 FALSE 
 
 claim to be a corporation, 694. 
 
 marks on goods not necessary to relief, 662. 
 
 or misleading name, use of for a corporation, 185. 
 
 representation, 470. 
 
 representations regarding a competitor which are not libelous, 501. 
 
 representations to customers to procure breach of contract, 368. 
 
 FAMILY NAME 
 
 as corporate names, 153. 
 
 as generic or general names of articles, 143. 
 
 as nickname or catchword, 146. 
 
 Baker chocolate cases, 127 et seq., 136. 
 
 changing one's name voluntarily, may be enjoined, 151. 
 
 decisions ordering use of full name, instead of surname alone, 125. 
 
 equity has power to direct use of explanatory words with, 124. 
 
 fortuitous identity of defendant's and plaintiff's names may be medium 
 
 of fraud, 146, note 46. 
 full name, compelling use of, 125. 
 injunction against unfair use of form of, 119, 653. 
 is incapable of exclusive appropriation in trade, 118. 
 may become abstract name of object, 143. 
 
Index 819 
 
 I References are to pages I 
 
 FAMILY NAME— Continued. 
 
 nature of right to use one's own name, 116. 
 or surname as name of corporation, 172. 
 
 as trade-mark, 403. 
 prestige attached by public to, 115. 
 proof of rights in, differs from proof of a trade-mark, 120. 
 purchase of right to use rights of, 63-64. 
 right of son and father to, 159. 
 
 widow to husband's name, 158. 
 rights of descendants as to, 64, 153. 
 
 first user of surname in business, 152, 154. 
 
 purchaser of, 63. 
 right of every man to use his own name, 57, 116, 117. 
 
 every man to use his own name, — presumption that no one parts 
 with that right, 39. 
 right to use, relation of, to loss of business by unfair use of name by another, 
 
 124. 
 Rogers silver cases, 128 et seq. 
 sale of name in bankruptcy or assignment for creditors, 48. 
 
 right to use one's own name for unfair use, 150, 175, 176. 
 
 right to use, in connection with particular article, 154. 
 secondary or acquired meaning of, 137. 
 surname acquired otherwise than by descent, 149. 
 
 unfair use of, cured by use of full name, 125. 
 
 which by usage becomes abstract name, 143. 
 transfer of, cannot be made for unfair use, 150, 175, 176. 
 use of, a natural right, 124. 
 
 by corporation in which there is no one bearing that name, 186. 
 
 first name, 159. 
 
 one's own name, 81, 82, 116, 119, 137 et seq., 184. 
 
 one's own name in corporate name, 174. 
 
 to name a corporation, 152, 174. 
 
 without consent of owner, 247. 
 
 with explanations, 124 et seq., 140. 
 used as common names of articles, 139. 
 voluntary change of, 151. 
 
 « FAMOUS " 
 
 use of word, 148. 
 
 FANCIFUL WORDS 
 use of, 396. 
 
 FATHER AND SON 
 
 use of same name by, in same line of business, 159. 
 
820 Index 
 
 I References are to pages | 
 
 FEATURES 
 
 cases showing unfair use of general features of packages, etc., 261. 
 common to a trade, 242, 243, 244, 284. 
 copying a collocation of, 239. 
 
 single, 284. 
 distinguishing, copying, 277. 
 resemblance in several, 242. 
 
 FEDERAL ACT 
 
 effect of the, 425, 459. 
 
 FEDERAL COURTS 
 
 jurisdiction in unfair competition cases, 636, 637. 
 overt acts done in foreign countries, 637. 
 
 FEES 
 
 repayment of, 458. 
 
 FIGURES 
 
 use of, 288. 
 
 FINAL INJUNCTIONS 
 
 general considerations, 648. 
 procedure in England, 650. 
 province of court in settlement of, 649. 
 
 " FINEST GOODS MADE " 
 use of phrase, 692. 
 
 FIRST 
 
 American v^nfair competition case, 5. 
 
 user of surname in business, rights of, 152, 154, 200. 
 
 FIRST NAME. (See Family Name.) 
 use of, 159. 
 
 FIRST USE 
 
 (See PraoBirr.) 
 
 FIRST-USER 
 rights of, 620. 
 
 FLAGS 
 
 not registrable, 433, 434. 
 
Index 821 
 
 I Beferences are to mKes I 
 
 FOREIGN 
 
 and domestic corporations, rights of, as to name, 165, 171. 
 
 countries, unfair acts done in, jurisdiction of U. S. courts over, 637. 
 
 language, names in, 99. 
 
 market, effect of on use of names, 215. 
 
 names enjoined, 73. 
 
 words as names of goods, 99. 
 
 words as trade-marks, 405. 
 
 FOREIGN CORPORATIONS 
 
 (See Corporate Names.) 
 
 FOREIGNERS 
 
 application by, for trade-mark, 431. 
 rights of, as to trade-marks, 410. 
 
 FOREIGN LANGUAGE 
 
 words from, as names of goods, 99. 
 
 FORM 
 
 (See Shape.) 
 defense that form in question is in common use, 659. 
 imitation of, 107. 
 
 in dress or get-up copied, but nothing else copied, 238. 
 of patented articles, use of on expiration of patent, 288. 
 will be protected in combination with other features of an article, 240, 
 
 241, 271. 
 
 FORMER EMPLOYEE 
 
 (See Employee.) 
 
 FORMER PARTNER 
 injunction against, 655. 
 
 FORMER STOCKHOLDER 
 
 injunction against, 655. 
 
 " FORMERLY 
 
 of," 88, note 12, 109, note 83. 
 of," used as to locality, 56, note 59. 
 operator at," 87, note 9. 
 with," 86. 
 
 FORMS 
 
 circular or notice of pendency of suit, 496. 
 final decree against corporate name, 654. 
 
822 Index 
 
 I Beferences are to pages ] 
 
 FORMS— Continued. 
 
 final decree against use of family name, 653. 
 
 fonn of decree directing correction of unfair use of, 651. 
 
 injunction against use of a color, form, etc., 652. 
 
 against use of name of, 655. 
 
 against ex-partner, 655. 
 
 against former member of corporation, 655. 
 
 against owner of patent, 655. 
 of final decree, 649. 
 
 of unfair competition. (See Unfaih Competition.) 
 petition, prayer in, 649. 
 
 FORMULAS 
 
 transfer of secret, 64. 
 
 FRAME 
 
 likeness in frames of serving machines, 278. 
 
 FRATERNAL 
 
 societies, unincorporated names of, 187. 
 
 FRAUD 
 
 elements of, in use of names and rnark^, 9, 243. 
 in use of corporate name, 177. 
 is basis of action for unfair competition, 18. 
 presumption of, 629. 
 
 FRAUDULENT ADVERTISING 
 
 "Printers Ink" model statute against, 634. 
 
 FRAUDULENT USE 
 
 of coincidence in meaning of names, 101. 
 of trade-marks, 463. 
 
 FRAUDULENT INTENT 
 
 (See Intent.) 
 
 FREEDOM OF TRADE 
 
 discussion of by courts, 323. 
 restriction of, against public policy, 322. 
 unfair competition does not curtail it, 11. 
 
 " FROM " 
 
 use of word, 87, 88 note. 
 
 FUNCTIONS 
 
 of trade-marks, 376. 
 
Index 823 
 
 [ References are to pages 1 
 
 GENERAL IMPRESSION 
 
 is test of what is similarity, 582. 
 
 GENERAL RESEMBLANCE 
 
 of goods, cases involving, 269 et seq. 
 
 GENERAL USE 
 
 word in, when used also in trade sense, trade-mark rights rest on secondary 
 meaning, 67. 
 
 GENERIC 
 
 name cannot be used as a trade name, 391. 
 names of articles, family names as, 143. 
 or secondary meaning of personal name, 137. 
 
 " GENUINE " 
 
 use of word, 148. 
 
 GEOGRAPHICAL NAMES 
 arbitrary use of, 191, 219, 223. 
 as names of natural products, 217. 
 
 association of, with localits' bearing name, must be clear, 203. 
 as trade names must be used truthfully, 226. 
 degree of resemblance in, necessary to create similarity, 208. 
 distinction between local names and names associated with business, 204. 
 effect of moving plant or business, 216. 
 effect of removal of business, 76. 
 extent of district to which name applies, 206. 
 indicating process of manufacture, 190, 213, 219. 
 
 quality, 228. 
 
 origin falsely, 208. 
 
 source falsely, 208. 
 kinds of, 190. (See List of Section Heads.) 
 length of time of use necessary to acquire secondary meaning, 207. 
 may acquire abstract meaning, 228. 
 may be used arbitrarily as trade names, 223, 227. 
 names of cities as, 213. 
 
 not material that plaintiff had no special right to, at time of adoption, 231. 
 or place names, 399. 
 priority in use of, 200. 
 question not so much character of right acquired but kind of use to which 
 
 it is put, 226. 
 registration of, 433, 440. 
 relative location of plants of rivals using same name, effect of, 212. (S^e 
 
 Location.) 
 secondary meaning of, 68, 203, 219. (See Secondary Meaning.) 
 
824 Index 
 
 I Beferences are to pages 1 
 
 GEOGRAPHICAL NAMES— Continued. 
 
 similarity of, degree of resemblance necessary in, 208. 
 
 universal knowledge of use of, not necessary to protect, 205. 
 
 used as one of a combination of words, 402. 
 
 use of, must be truthful and fair, 226. 
 
 who may sue on behalf of several using, 200. 
 
 GEOGRAPHIC EXTENT 
 
 of right in trade-marks based on priority, 28. 
 
 GEOGRAPHIC 
 
 limits in which secondary meaning is protected, 72. 
 location of competitor, 592. 
 
 GET-UP OF GOODS 
 
 cases involving likeness in, 273. 
 copying whole, including name, 264. 
 similarity of, basis of presumption of fraud, 626. 
 (See Dkbss.) 
 
 " GLENFIELD STARCH " 
 case, 193. 
 
 GOOD FAITH 
 
 in use of name, defendant's opinion as to use disregarded, 623. 
 may relieve defendant from pasdng damages, 735. 
 required of vendors of names and marks, 46. 
 
 GOODS. (See Merchandise.) 
 change in manufacture of, 410. 
 defective, responsibility of manufacturer for, 635. 
 duty to differentiate one's goods from those already in the market, 634. 
 fact that plaintiff's goods are worthless or useless is no defense, 669. 
 foreign words as names of, 99. 
 initials as names of, 106. 
 intended for export, names of, 108. 
 libel and slander of, 470. 
 
 made under secret process, inducing breach of contract for sale of, 357. 
 numerals and letters as names of, 103. 
 
 used to designate grade, 103. 
 of competitors, defamation of, 550. 
 of rivals, disparagement of, 470, 550. 
 of same descriptive qualities, test as to, 452. 
 of third party, passing off, 561. 
 of unknown maker, association of name with, 77. 
 on which trade-mark used must be on market, 415. 
 packing of, to conceal markings, 248. 
 
Index 825 
 
 I Beferences are to pages I 
 
 GOODS— Continued. 
 
 sale of inferior goods, or seconds, as usual quality, 563. 
 
 several trade-marks for same, 382. 
 
 style of, numerals to represent, 106. 
 
 substitution of inferior for better grade in containers, 254. 
 
 GOOD-WILL 
 
 and personality, 83, 281, 287. 
 another name for honesty, reliability, 31. 
 association of, with name of concern, 61. 
 
 attaching to personality, the benefit of the public's preference for one par- 
 ticular person, 83, 280, 281, 287. 
 attached to goods, 33. 
 
 attaching to leased premises during lease, 83. 
 basis of protection of, 36. 
 colorable purchase of, 36. 
 definitions, 32, 34. 
 
 effect of locality on sale by partner of share of, 57. 
 elements of, 35. 
 German view of, 37. 
 impairment of, 58, 59. 
 importance of, in commercial life, 31. 
 in hotel name, 34. 
 in interest in trade-mark, 24. 
 intangible interest in mark is, 24. 
 is property, 32. 
 
 is represented by all kinds of commercial insignia, 35. 
 kinds of, 32. 
 local, 33. 
 
 of education and charitable institutions, 167, 168. 
 of partnership, 33. 
 of professional men, 33. 
 of retail shop on sale of, 60. 
 personal, 33. 
 
 purchase of, at auction, 61. 
 relation of, to trade-mark and trade insignia, 35. 
 right of son to good-will of father's business, 155. 
 
 to use list of customers, 34, 316. 
 rights of manufacturer as to his good-will in name under which his goods 
 
 are sold by a customer, 47. 
 sale of, 54, 154, 155. 
 
 of entire property, 38. 
 trade-mark is symbol of, 24, 378. 
 unfair advertisement of possession of, 37. 
 value of, depends on nature of sale, 39. 
 valuation of, 65. 
 which is not transferable, 37. 
 
826 Index 
 
 I References are to pages J 
 
 GRADE 
 
 of goods, numerals and letters used to designate, 103. 
 
 substitution of cheaper grade when better grade called for, 256-257. 
 
 GROUNDS OF ACTION 
 
 for unfair competition, 18, 28. (See Action.) 
 
 GROWTH 
 
 of unfair competition doctrine, 5. 
 
 HAT OF EMPLOYEES 
 
 signs on, 112. 
 
 HISTORICAL 
 
 early cases of unfair competition in America and England, 4. 
 
 HONEST AND FAIR DEALING 
 
 promotion of, ground of action of unfair competition, 18. 
 
 HONESTY 
 
 good-will another name for, 31. 
 
 HOTEL 
 
 good-will in, 84. 
 
 lessee's right to increased value of name of, due to his efforts, 85. 
 
 names of, 82. 
 
 rights of lessee in, 84. 
 
 right of lessee to use name of, 84. 
 
 right of owner of premises in, 83, 84. 
 
 right to name of, on sale of, 42. 
 
 IDEM SONANS 
 
 names, what are, 93, 95. 
 
 IGNORANCE 
 
 of plaintiff's rights no defense, 611. 
 plea of, 351. 
 
 IMITATION 
 
 effect of, depends very largely on propinquity, 592. 
 of articles as a whole, 278. 
 of covers of book, 251. 
 of saUent features, 263, 590. 
 (See Simulation of Articles Themselves, Copying, Similarity.) 
 
 IMMINENT 
 
 actual injury to plaintiff must be, for action for unfair competition, 624. 
 
Index 827 
 
 I Beferences are to pages J 
 
 IMPLIED CONTRACT 
 
 employees bound by, 306. 
 
 IMPORTATION 
 
 of articles bearing infringing marks, 466. 
 
 " IMPORTED " 
 use of term, 686. 
 
 INACCURACIES 
 
 minor, no defense, 674. 
 
 INACTION 
 
 or acquiescence on which others have a right to rely, 706. 
 
 INCORPORATION 
 
 effect gives no right superior to what the concern incorporated had prior 
 
 thereto, 163. 
 of business, effect of, on right to name, 163. 
 under nickname of rival, 169. 
 
 INCORPORATORS 
 
 duty of, as to name, 162. 
 (See CoRPOKATB Names.) 
 
 INDIVIDUAL RIGHTS 
 
 as basis of unfair competition, 21. 
 
 INDIVIDUAL 
 
 use of terms "Works," "Company," etc., by, 181. 
 
 INFERENCES 
 
 and presumptions, 607. 
 
 INFERIOR GOODS 
 
 substitution of, in dress of goods of higher grade, 256. 
 
 INFORMATION AND BELIEF 
 
 allegations on, 571. 
 
 IMMORAL MATTER 
 not registrable, 434. 
 
 INFORMATION 
 
 interference with contracts to furnish. 342. 
 
828 Index 
 
 ( Beferences are to pages ] 
 
 INFRINGEMENT 
 
 appropriation of methods and ideas of competitor, 552. 
 
 court may destroy infringing marks, 462. 
 
 discontinuing before suit is brought, effect of; 641, 654. 
 
 distinction between, and unfair competition, 387. 
 
 giving rebates on transportation charges, 567. 
 
 interference with a competitor's source of raw material, 212. 
 
 liabiUty for, 459. 
 
 local price cutting, 567. 
 
 notice of, 733. 
 
 passing off goods of third party, 561. 
 
 price cutting of branded goods, 568. 
 
 purchase of stock in competing concerns, 668. 
 
 sale of inferior goods, or seconds, as usual quality^ 563. 
 
 use of bogus independent concerns, 560. 
 
 INGREDIENTS 
 
 change of ingredients, 416. 
 misrepresentations as to, 674, 680. 
 
 must be as to those which are material, 680. 
 
 INITIALS 
 
 as names of goods, 103, 106. 
 
 use of, 246. 
 
 "A. G." and "A. G. Co.," 102. 
 
 "A. O.," 286. 
 
 "B. & M.," 100. 
 
 "B. A- S.," 102. 
 
 "B. & A.," 170. 
 
 "B. O.," 286. 
 
 "C. G. v.," 100. 
 
 "C. B.," 106. 
 
 "C. B. & Q.," 170. 
 
 "C. C. G.," 265. 
 
 "C. O.," 286. 
 
 "D. L. & W.," 100. 
 
 "F. I. A. T.," 100. 
 
 "G. E.," 406. 
 
 "H. H.," 105. 
 
 "L. L.," 103. 
 
 "M. F.," and "M. F. H.," 106. 
 
 "N. S.," 406. 
 
 "O. C.," 406. 
 
 "P. B." and "F. B.,» 112, note. 
 
 "8. & W.," 100. 
 
 "T. O. C. & L. Co.," 103. 
 
 "U. M. a," 170. 
 
Index 829 
 
 I Beferences are to pages ) 
 
 INITIALS— Continued. 
 "U. F.," 204, note. 
 "V. O. S.," 678. 
 
 INJUNCTIONS 
 
 against breach of contract by disclosure of trade secrets, 297. 
 
 false charges and threats, 488. 
 
 false statements concerning competitor, 486. 
 
 issuing of threatening circulars, 488. 
 
 libel and slander essential to proper relief, 490. 
 
 use of color, size, form, etc., 652. 
 
 use of family names, scope of, 653. 
 
 use of foreign names, 73. 
 
 use of name of former partner or former member of corporation, 655. 
 
 use of name, portrait or signature of another without his consent, 
 247. 
 before act is committed, quia timet, 479, 639. 
 compelling use of distinguishing marks, 119. 
 directing use of explanatory words or phrases, 124 et seq., 644. 
 English Procedure Acts of 1854, 1873, as related to injunction, 471. 
 final, form and scope of, 648. 
 form of, 319. 
 
 geographic extent of protection against, 206. 
 identity and quality of goods, 643. 
 injury complained of must be imminent, 313. 
 intent to intimidate customers, not fairly warn them, is necessary element 
 
 for, 493. 
 is only efifective remedy in some cases, 323, 490. (See Introduction.) 
 jurisdiction of equity prior to 1873, 472. 
 
 may issue despite discontinuance of unfair acts prior to suit, 641, 654. 
 not granted ex parte unless clear case made out from affidavits, 642. 
 procedure in England, 650. 
 
 refused when defendants agree to discontinue use of offending article pend- 
 ing suit, 642, note, 
 should issue against libel and slander of trade name, etc., when plaintiff's 
 
 rights are clear, 500. (See Preliminary Injunctions, Remedies.) 
 temporary relief before trial, 612. 
 threats of prosecution must be shown to warrant issue of, 491. 
 
 INJURY 
 
 actual injury to plaintiff must be imminent for action for unfair compe- 
 tition, 624. 
 to another's business, actionable, 333. 
 
 INSURANCE AGENT 
 
 not confidential employee, 369. 
 
830 Index 
 
 [ Beferences are to pages ] 
 
 INTENT TO DEFRAUD 
 
 acts planned, but not likely to occur, not basis of presumption of intent, 624. 
 
 acts showing, must be imminent, 624. 
 
 American decisions on, 615. 
 
 cases holding it must be proved, 617. 
 
 cases holding proof of intent is immaterial, 611. 
 
 confusion of authority on, 610. 
 
 contract provisions showing act of, 622. 
 
 definition, 608. 
 
 definition of, the character which the law imputes to an act, 626. 
 
 denial of, unavailing to defendant as a defense, 622. 
 
 disclaimer of, has no effect, 240, 611, 622, 662. 
 
 division of cases as regards, 610. 
 
 English rule, summary of, 615. 
 
 evidenced by small details, 629. 
 
 evidence of, 241, 580. 
 
 what constitutes, 629. 
 intention to imitate and intention to defraud different, 608. 
 is proof of it material to action for unfair competition, 623. 
 lack of, as a defense, 611, 622. 
 must it be proved? 608. 
 
 on defendant's part not important in technical trade-mark cases, 24. 
 presumption of, from seUing goods so that others may pass them off, 629. 
 
 from innocent adoption of name already in use, 620. 
 
 of intent to do what results from one's acts. (See Presumption.) 
 proof of, in use of family names, 185. 
 
 in use of corporate names, 623. 
 
 may warrant plaintiff's recovery of defendant's entire profits, 726. 
 question of, is a defense, 609. (See Malice.) 
 
 plea raised by defense, 629. 
 rights of first user of mark, arising out of priority, 620. 
 to intimidate customers, not to fairly warn them, 493. 
 unimportant facts, not a basis of presumption of, 625. 
 when presumed, 264, 625, 629. 
 
 INTEREST 
 
 when added to amount of damages, 720. 
 
 INTERFERENCE WITH BUSINESS 
 
 by disclosure of secret, 297. 
 
 by false representations to customers, 368. 
 
 statements and threats, 367, 368. 
 by issuance of circulars, 369. 
 by multiplicity of suits, 369. 
 by third person enjoined, 336. 
 by threats of suit, etc., 369. 
 
Index 831 
 
 ( Beferences are to pages | 
 
 INTERFERENCE WITH BUSINESS— Continued, 
 contract must be valid, 348. 
 elements of prima facie case of, 344, 345. 
 grounds of action for', 337. 
 
 ignorance of existence of contract no defense against injunction, 351. 
 justification of, 350. 
 malicious, 329. 
 
 must such acts be accompanied by threats, violence, etc., 341. 
 New York rule as to, 352. 
 
 notice to defendant of existence of contract, 345, 349. 
 of lease, procuring breach of, 348. 
 personal in character, 361. 
 simulated cofiapetition, 369. 
 summary, 344. 
 
 United States Supreme Court position as to, 338. 
 what constitutes, 344. 
 what is legitimate, 364. 
 
 with a competitor's contracts and business generally, 322, 333. 
 with a contract, causing one to refuse to complete it, 345, 349. 
 with a neighbor by acts done on one's own land, 324 et seq. 
 with business generally, 322, 333, 367. 
 
 with conditional contracts between manufacturers and retailers, 355. 
 with competitors' customers, 367. 
 
 salesmen, 368. 
 with contract for furnishing information, 342. 
 with contract for sale of goods made by secret process, 357. 
 with contract by offering goods at lower prices, 350. 
 with contract not affected by duration of contract, 349. 
 with contract not to re-enter business, 351. 
 with contract of employment, actual or prospective, 371. 
 with contracts with retailers as to prices, 356. 
 with contract with opera singer, 340, 341. 
 with contract of passengers with transportation company, 343. 
 with fixed contract and with uncompleted contract, distinction between, 
 
 362. 
 with proposed or prospective contracts, 361. 
 with servants, 338. 
 with trade, 12. 
 
 INTERFERENCE PROCEEDINGS 
 
 in registration of trade-mark, 451. 
 
 INTIMIDATION 
 
 of competitor's customers, 493. 
 
 INVENTED 
 
 or fanciful words, 396. 
 
832 Index 
 
 [ Beferences are to pages ] 
 
 INVENTION 
 
 priority of, against priority of use, 412. 
 
 INVENTOR 
 
 name of, right of buyer of invention to use, 291. 
 originator of article, sale of name by, 56. i 
 
 rights of, to inventions discovered when employed by another, 308. 
 (See Employee.) 
 
 INVESTIGATORS 
 
 (See Detectives.) 
 
 JOBBER 
 
 deceit of ultimate purchaser, not of jobber or retailer, important, 593, 
 
 665 et seq. 
 defense that jobber, not defendant, did the unfair acts, 664. 
 name of, from whom goods bought, a secret of trade, 314. 
 
 JOINDER 
 
 of causes of action, 570. 
 
 JUDICATURE ACT 
 
 of 1873, 472, 474. 
 
 JUDICIAL NOTICE 
 
 will be taken of facts of common knowledge, 605. 
 
 JURISDICTION 
 
 of courts in infringement of cop3Tight cases, 545. 
 
 of courts in infringement of unpublished literary productions, 545. 
 
 of courts in unfair competition cases, 636. 
 
 of courts respecting registered trade-marks, 460. 
 
 of equity to enjoin libels prior to 1873, 472. 
 
 of United States courts over unfair acts done abroad, 637. 
 
 JUSTIFICATION 
 
 discussion of what constitutes, 330 et seq. 
 of interference with contracts, 350. 
 
 KAY 
 
 Lord, summary of law of names, 81. 
 
 KIDD V. HORRY 
 
 case of, 483. 
 
 KNOWLEDGE 
 
 does not warrant inference of consent to use by another, 697, 701. 
 of prior use, must it be shown, 245. 
 
Index 833 
 
 I References are to pages I 
 
 LABELS 
 
 are in reality trade-marks, 235. 
 
 band of paper around loaf of bread, 282. 
 
 color of, 253. 
 
 concealment of a part of, is unfair, 248. 
 
 containing no salient feature, but in which whole get-up, including name, 
 is unfair, 264. 
 
 copying directions for use, 247. 
 
 classification of label cases, 261. 
 
 false, on bottles, 254. 
 
 features of an action as to, 260. 
 
 having general resemblance and likeness in names, but where injunction 
 was refused, 269. 
 
 involving no similarity in name, but in general appearance amounting to 
 unfair competition, 270. 
 
 in which names are not similar and general get-up held not unfair, 273. 
 
 in which the salient feature is a device or catchword which is copied, 263. 
 
 kinds of, 261. 
 
 misleading use of one proper in itself, 248. 
 
 printers of, may be made defendants jointly with persons using labels un- 
 fairly, 638. 
 
 purchaser is not bound to compare carefully, 264. 
 
 reading matter on, 39, 247. 
 
 regulation or stock labels, right to sell, 549. 
 
 removing, 254. 
 
 sale of assignor's labels in bulk by assignee, unfair, 49. 
 
 selling, with intent to defraud, 549. 
 
 simulation of, in which a name is the principal feature, 261. 
 
 taking labels ofi boxes, etc., and putting on others, 254. 
 
 use of autograph signatures in, 246. 
 
 which are not registered or copyrighted, 260. 
 
 which are not trade-marks are protected, 234. 
 
 LABOR CASES 
 
 and doctrine of interference with contract, 335. 
 
 LACHES 
 
 (See Acquiescence.) 
 acquiescence which makes it inequitable to claim rights, 699. 
 common-law trade-mark may be lost by, 30. 
 differs from acquiescence, 699. 
 effect on name, 82. 
 
 in the sense of mere delay in taking action, 700. 
 kinds of, 699. 
 
 material delay may bar right to accounting for profits, 703. 
 may bar right to accounting, 703, 732. 
 
834 Index 
 
 I References are to-pages | 
 
 LACHES— Continued. 
 
 may bar right to demand destruction of offending goods^.TCMii 
 may bar right to preliminary injunction, 705: 
 may be evidence of fraudulent intent, 494. 
 
 one first using, may revoke license implied from use without .right, 701. 
 silence with knowledge presumes a consent lasting only so long as the 
 silence, 702. 
 
 LABOR UNION 
 
 interference with contract by, 328, 335. 
 
 LANBLORD.' > 
 
 influencing tenants not to deal with certain companies, 366. 
 
 " LATE OF FIRM OF " 
 
 use of t^rm, 87 and note^. 
 
 " LATE WITH " 
 
 use of term, 87. 
 
 " LATELY WITH " 
 
 use of term, 268. 
 
 LEASE 
 
 procuring a breach of provisions of, 348. 
 
 LEGAL BASIS 
 
 of action for unfair comijetition, 17. 
 
 LESSEE 
 
 of hotel, right to increased value of name due to his efforts, 85. 
 of theatre, right of, to use name of theatre, 45. 
 rights of, to hotel name, 84. 
 
 LETTERS 
 
 libelous, power of chancery to enjoin, 474. 
 
 may be secret property, 321. 
 
 right to use those written by others, 473. 
 
 LETTERS OF ALPHABET 
 
 and figures, use of, 288. 
 
 as names of merchandise, 103. 
 
 as trade-marks, 406. 
 
 to mark goods for quahty of grade, 103. 
 
 use of, on parts of goods, 107. 
 
 use on repair parts, 107. 
 
Index 835 
 
 I References are to pages | 
 
 LIBEL AND SLANDER 
 
 American cases, 479 etseq. . 
 
 by ex-employee, injunction against, 500; 
 
 case of Emack'V. Kane, 48S. 
 Kidd V. Horry, 483. 
 
 charges of infringement and threats of prosecution made in bad faith, 
 488. 
 
 damages for, 378. 
 
 difference between trade libel and personal libel, 477. 
 
 early cases of injunctions against, 472. 
 
 English procedure acts relating to, 471. 
 
 equity will enjoin to protect property againstj 472 et seq. 
 
 false representations regarding a competitor which are not libelous, 501. 
 
 general American rule, 485. 
 
 importance of question ioi United States, 477. 
 
 instanqe of preliminary injvmction tq prevent injury to business from, 
 479. 
 
 jurisdiction of equity over, prior to Procedure Acts of 1873, 472. 
 
 not Ubelous per se, 496. 
 
 of business names and reputation, 470. 
 
 of goods, 470. 
 
 of reputation, 273^ 
 
 qualification of rule, 486. , 
 
 right, to restrain issue of threa,tening circulars, 488. 
 
 statutes as to libels, effect of, 416. 
 
 do not oust equity of jurisdiction, 504. 
 
 summary, 505. 
 
 summary of English cases, as to original powers of courts of equity to en- 
 join, 4717. 
 
 suits at law against, delay in, 479. 
 
 theory that delay of suit at law a basis for issuing injunction ag3.inst, 492. 
 diat threats must be proven to warrant issuing injunction, 491. 
 
 when preliminary injunction against should issue, 479. 
 
 LICENSE 
 
 first user of name or mark may revoke license implied from laches, 701. 
 •of trade-mark rights, 45. 
 
 revocable (not consent) is to be presunied from silence of owner of mark or 
 name used by others without right, 701. 
 
 LIKENESS 
 
 in get up, cases involving, 273. 
 
 LIST OF CUSTOMERS 
 
 fraudulently obtained, may be ordered destroyed, 316, 318. 
 is secret property, 317. 
 use of, 34, 306. 
 
836 Index 
 
 [ Beferences are to pages | 
 
 LITERARY PROPERTY 
 
 doctrine of unfair competition as applied to, 514. 
 
 jurisdiction of courts in protecting, 545. 
 
 publication of literary work condition precedent to obtaining copyright, 510. 
 
 title of literary work may acquire secondary meaning, 516. 
 
 trade-mark rights arising in connection with, 512. 
 
 unfair competition in the use of, 507. 
 
 use of author's name, 543. 
 
 what constitutes publication of, 511. 
 
 LITHOGRAPHERS 
 
 of labels, etc., liability of, 667. 
 
 LOCATION— LOCALITY 
 
 choice of new stand by vendor of a business, 60. 
 
 distance between competitors' places of business, effect on names, 29, 140, 
 
 188. 
 distinction between name of locality and name associated with business, 204. 
 effect of assignment or lease, 45, 46. 
 
 on name, 45, 46, 73. 
 
 on transfers of a business, 57. 
 
 removal of plant or business on use of geographic names, 216. 
 
 on sale by partner of share of good-will, 57. 
 
 of two persons using same surname as business name in same city, 141, 
 142. 
 fact that plaintiff has not extended his business to defendant's territory, 73. 
 in which a secondary name becomes known, 73. 
 
 in which reputation of goods must exist to create secondary meaning, 76. 
 name of, must be closely associated with goods bearing that name, 203. 
 of competing store set up by ex-stockholder, 176, note 32. 
 of competitors, effect on question of similarity, 592. 
 of markets of parties, effect of, 29. 
 of new stand set up by one who has sold out, 57. 
 
 of plaintiff and defendant has important bearing on question of priority, 622. 
 of plants of rivals, effect on name, 212. 
 of signs, truthful in themselves, may be fraudulent, 110. 
 of stand or store of defendant evidence of fraud, 175. 
 partner who sells share of good-will cannot compete in same, 57, 58. 
 residence in, does not give unUmited right to use name of locality as trade- 
 mark, 211. 
 territorial extent of trade-mark right, 417 et seq. 
 value of name based on usage in particular locaUty, 76. 
 vendor of newspaper can set up new plant in same, 57. 
 
 LOSS OF BUSINESS 
 
 by complainant as evidence, 604. 
 
Index 837 
 
 1 Beferences are to pages I 
 
 LUMLEY V. GYE 
 
 and later cases, 340. 
 
 MADE-UP 
 
 or artificial words, 91. 
 
 MAGAZINES 
 
 locality in which they circulate, effect of, 540. 
 names of, 535. 
 
 MAIL 
 
 address, unfair use of, 223. 
 (See Letters.) 
 
 MAKER OF GOODS 
 
 defense that defendant was merely, for another, 667. 
 misrepresentation as to, 684. 
 
 MALICE 
 
 definitions of, 329, 330. 
 
 does not always create a cause of action, 329. 
 
 does it make an unactionable act actionable? 330. 
 
 injury to another, done with, 329. 
 
 in the sense of ill-will, not a necessary ingredient of action for interference 
 
 with contract, 344. 
 relation of, to interference with business of another, 329. 
 what constitutes justification, 332. 
 
 MANAGER 
 
 of a business is employee, so far as betrayal of secrets is concerned, 307, 
 
 312. 
 rights of former, 87. 
 using name of, as trade name, 151. 
 
 MANUFACTURE 
 
 misrepresentation as to, 681. 
 
 MANUFACTURER 
 
 (See U. S. Supreme Court, Beecham Pill case.) 
 conditional contracts of, with retailers, including breach of, 355. 
 of offending article may be joined with other sellers of article as defendants, 
 639. 
 
 (See Merchandise.) 
 responsibility of, for defective goods, 635. 
 rights of, as to his good will in name under which his goods are sold by a 
 
 customer, 47. 
 secondary meaning of name of, 204. 
 
838 Index 
 
 I ('Btferencesaretopsgesl ^ 
 
 MARKET 
 
 foreign, effect of on use of names, 215. 
 
 location of, of parties, effect of, 29. 
 
 of goods, extent and locality of, important as to names, 207. 
 
 MARKINGS ON PACKAGES 
 
 concealing, 248. 
 
 MARKS 
 
 court may destroy infringing, 462. 
 
 defense that marks are in common use, 659. 
 
 definition of, 373. 
 
 distinguished from business names, 80. 
 
 effect of two persons using same, 29. 
 
 exclusive right to^not necessary to action, 2, 26. 
 
 first user of, rights of, 620. 
 
 fraudulently used, 463. 
 
 gotten up by experts, 627. 
 
 how protected, 234, 235. 
 
 how they differ from trad#^marks, 234, 235. 
 
 importation of articles bearing infringing marks, 466. 
 
 indicating selector, not maker, 381. 
 
 intangible interest in, part of good-will, 24. 
 
 property rights in, which are not technical trade-marks, 23, 26. 
 
 transfer of. (See Transfer.) 
 
 MASTER AND SERVANT 
 
 (See Employee and Agents.) 
 
 MATERIAL, RAW 
 
 use of same by competitors, 212. 
 
 MATERIALMEN 
 
 enjoined for breach of contract with builders, 338. 
 
 MAXIMS 
 
 "damnum absque injuria," 609. 
 
 "ex turpi causa non oritur actio," 671. 
 
 "he who comes into equity must do so with clean hands," 671, 675, 691. 
 
 "nullum tempus occurrit regi," 707. 
 
 "Rem facias, rem, si possis, recte," etc., 27, note 35. 
 
 "sic utere tuo ut alienum non kedas," 137. 
 
 MEDICAL 
 
 preparation, ingredients of, misrepresentations as to, 674. 
 
Index 839 
 
 1 1 'B^ieniBces' are ;to iiages ) 
 
 MEDICINE 
 
 extravagant claims for, 680, 693. 
 
 MERCHANDISE, DRESS OF 
 
 classification of cases involving, 244. 
 
 collocation of features, which might be copied-singly, is unfair, 239. 
 deception may arise from manner of printing, 237. 
 degree of similarity calculated to deceive, 235. 
 designs, devices and figures, 245. 
 general, 233. 
 
 imitation of single feature, 238. 
 ^ mere diveiteity of color not a- controlling feature, 236. 
 resemblance in several features may be fair, if these are common to. trade, 
 
 242. 
 signatures and initiejs, 246. 
 
 MERCHANDISE, NAMES OF 
 abbreviations of, 100. 
 acquired or secondary meaning of, 577. 
 appealing tothe eye as simitar.QS. 
 artificial words or names as, 91. 
 copying exactly a name used by another, 92. 
 degree of similarity calculated to deceive, 235. 
 descriptive of construction necessary to i article; 88. 
 duty to differentiate goi3ds from' those already on the market, 282. 
 foreign words as, 99. 
 initials as, 103, 106. 
 
 may be known by name of goods only, maker being, unknown, 77. 
 numerals and letters asi 103. 
 to designate grade, 103. 
 
 source or origin, 105. 
 
 series, 106. 
 scientific words as, 90. 
 unfamiliar and scientific words as, 90. 
 which have the same sound, idem sonans, 95. 
 
 MIDDLEMAN 
 
 (See Jobber.) 
 
 MISCELLANEOUS 
 
 forms of unfair competition, 547 et seq. 
 
 MISCONCEPTION 
 
 of true meaning and scope ofcdoctrine of unfair competition, 1. 
 regarding right of every man to use his own name in business, 117. 
 
840 Index 
 
 [ Beferences are to pages ] 
 
 MISLEADING 
 
 use of label proper in itself, 248. 
 
 MISREPRESENTATION 
 
 as to ingredients, 674, 680. 
 
 as to maker of goods, 684. 
 
 as to manufacture, 681. 
 
 as to origin of goods, 681. 
 
 as to place of manufacture, 681. 
 
 as to unessential details, 686. 
 
 by laudatory or exaggerated phrases, 691. 
 
 by use of term "Patented," "Copyrighted," or "Registered," 687 a i 
 
 by salesman, 631. 
 
 claiming falsely to be corporation, 694. 
 
 defense that plaintiff is causing, in his business, 671. 
 
 discontinued before suit brought, 673. 
 
 effect of, 385. 
 
 implying claim of monopoly, 687. 
 
 instances of harmless, 694. 
 
 inaccuracies and exaggerations do not always constitute, 674. 
 
 in advertising matter, 688. 
 
 must be as to subject-matter of suit, 670. 
 
 must be intentional and material, 674. 
 
 single misstatements not a, 674. 
 
 to customers to procure breach of contract, 368. 
 
 usually affirmative defense, 672. 
 
 MISSTATEMENTS 
 
 of quaUty or quantity in re-selling unfair, 254. 
 single, not misrepresentation, 674. 
 
 MONOGRAMS 
 
 (See Letters, Devices.) 
 
 MONOPOLY 
 
 fallacy of argument of monopoly in family name cases, 118 et seq. 
 
 false claim of, 687. 
 
 in trade secrets, 298. 
 
 nusrepresentations implying claim of, 687. 
 
 trade-mark does not confer, 379. 
 
 trade secret is not, 298. 
 
 MOTION PICTURES 
 
 may reproduce characters in books, 522. 
 titles of, 532. 
 
Index 841 
 
 I Beferences are to pages i 
 
 MOTIVE 
 
 relation of, to interference with business of another, 299. 
 of defendant, 613 et seq. 
 
 MOVING 
 
 plant or business, effect of, 216. 
 
 MULTIFARIOUSNESS 
 
 (See Pleading.) 
 
 MULTIPLICITY 
 
 of suits, interference with contract by bringing, 369. 
 
 MUSICIANS 
 
 names of, used in business not transferable, 37. 
 
 MUTILATION 
 
 of marks upon packages, 360. 
 
 NAMES 
 
 abbreviations of, 100. 
 
 abstract, of objects, differ from business names, 81. 
 acquired generic or secondary meaning of personal, 137. 
 action on, exclusive right to name not necessary to action for unfair com- 
 petition on, 2, 26. 
 ambiguity in, 82. 
 
 an article may have more than one trade name, 101. 
 artificial or made-up, 91. 
 
 association between name and person using it, 120. 
 association of, with goods of unknown maker, 77. 
 assumed, registration of, 33. 
 attaching to places, 43 et seq. 
 changes in meaning of, through use, 66. 
 changing one's name voluntarily, 151. 
 
 personal names voluntarily, 151. 
 concealment of part of, effect of, 248. 
 considered as transitory or personal, local or fixed, 82. 
 corporate, 161. (See Corporate Names.) 
 
 may be enjoined though adopted in good faith, 623. 
 decree correcting confusing use of, 651. 
 
 directing use of full name in place of mere surname, 125. 
 derived from names of places, right to use, 43, 190. 
 descendants may use father's name fairly, 155. 
 descriptive of construction necessary to an article, 88. 
 differ from marks, designs, etc., 80. 
 
 duty of incorporators to differentiate nanie of new company from existing 
 names, 171. 
 
842 Index 
 
 ( Befetences are to pages I 
 
 NAMES— Continued. 
 
 effect on, of relative locations of plants of rivals, 212. 
 extent of reputation of, necessary to create secondary meaning, 71. 
 false or misleading, use of, 185. 
 family, as generic or general names of articles, 143. 
 incapable of exclusive appropriation, 118. 
 sale of right to use for known fraud. (See Family Names.) 
 father and son, use of same name by, in same business, 158. 
 foreign, 99. 
 
 words as, 99. 
 fraudulent use of coincidences in meaning of, 101. 
 geographic. (See Geoghaphical Names.) 
 idem sonans, 95. 
 
 identity of owners need not be known, 77. 
 initials as names of goods, 106. 
 
 made up of surnames qualified by other words or symbols, 148, 
 making names unduly prominent, may be unfair, 40. 
 may be descriptive indicating general qUa;lities, 3. 
 may be sold so as to preclude owner from again using them in same 
 
 business, 39, 42. 
 names or marks may not be sold distinct from article to which they are 
 
 attached, 43. 
 necessity for protection in one's own name, 116. 
 numerals and letters as names of goods, 103. 
 of buildings, 177. 
 of cities, 213. 
 
 of corporations, effect of state charters on, 163. 
 right to, on dissolution, 166. 
 family names as, 172. 
 of employers, right of ex-employee to use, 86. 
 of goods intended for export, 108. 
 of goods, unfamihar or scientific words used as, 90. 
 of hotel, rights of lessee in, 85. 
 of hotels, 82. (See Hotels.) 
 
 right of owner of premises in, 83, 84. 
 of localities go with places on sale of them, 42. 
 of natural products, 217. 
 of patented articles, 404. 
 of places as trade names on goods, may be sold, 43. (See GEoaHAPmc 
 
 Names.) 
 of places, secondary meaning of, 75. 
 of predecessors, continuing use of, 86. 
 of unincorporated societies and clubs, 186. 
 one's right to use, protected by equity, 116. 
 
 personal or family name, nature of right to use one's own name, 116, 403. 
 place names governed by same rules as other trade names, 226. 
 
Index 843 
 
 (Bereronces are to pages 1 
 
 NAMES— Continued. 
 
 plea of necessity of use of particular name, 173. 
 
 prestige which the public attaches to family names, 115. 
 
 presumption that no one intends to part with right to use his own, 39. 
 
 priority in use of, 86. 
 
 protection afforded by law not limited to exa;ct or fornlal name, 82. 
 
 publici juris, 89. 
 
 test of, when word becomes, 708. 
 purchase of, for fraudulent purpose, 36. 
 recent demand for protection of, 116. 
 
 removal of business house, effect of, on name, 216. (See Sit?i.) 
 right to corporate name on dissolution, 58. 
 
 right to exclude'use by others of certain wotds and names limited, 80. 
 right to'use one's own name in business, 57, 116. 
 
 denied to one who abuses it, 134. 
 rule that it is necessary to show that name capable of exclusive use, 119. 
 sale of, preventing further use of, 40. 
 sale of business name by originator of an article, '56. 
 sale of business site, effect of on, 42. 
 
 sale of one's name to one who has no right to use it, 149 et seq. 
 secondary meaning of, 28. 
 
 substitution of nickname for, creates secondary meaning, 71, note. 
 
 need not be acquired in limited territory only, 73. 
 
 plaintiff must prove existence of,' 70. 
 
 of geographical names, 203. 
 
 a question of priority, not wideness of repute of name, 73. 
 
 of semi-geographical, 230. 
 semi*gecigraphic, "floosier," "Empire State," etc., 230. 
 similarity of, 595. 
 
 as appealing to the eye, 93. 
 
 basis of presumption of fraud, 626. 
 statutes as to choice of, 171. 
 
 substitution of nicknames for, creates secondary meaning, 71, note, 
 summary of law of, by Lord Kay, 81. 
 trade names differ from general or abstract names, 81. 
 
 not assignable in gross, 44. 
 transfer of, for fraudulent purposes, 150, note 54. 
 use of geographic, must be truthful, 226. 
 
 must be reasonable and honest, 173. 
 
 one's own name on goods unfairly copied, 283. 
 
 without consent of owner, 247. 
 value of, based on usage in particular locality, 76. 
 voluntary change of personal, 151. 
 which are not transferable, 37. 
 which indicate origin or source falsely, 208, 681. 
 with double meaning, 101. 
 
844 Index 
 
 [ References are to pages | 
 
 NAMES— Continued. 
 
 "Abricotine," 394, 406. 
 
 "Aetna Iron Works," 182, note. 
 
 "Air Cushions," 89. 
 
 "Akron Cement," 229. 
 
 "Akron Dental Rubber" and "Non-Secret Dental Vulcanite, made ac- 
 cording to an analysis of the Akron Dental Rubber," 237. 
 
 "Alderny," 394. 
 
 "AUegretti," 41, note, 145, note, 184, note, 645. 
 
 " Alpenkrauter " and "St. Bernard Alpen Krauter," 600. 
 
 "Aluminum," 392. 
 
 "Amber Head" and "Amber," 405. 
 
 "American Ball Blue " and "American Wash Blue," 48, note. 
 
 "American Clay Manufacturing Company " and "American Clay Manu- 
 facturing Company of New Jersey," 163, note. 
 
 "American Express " sealing wax, 402. 
 
 "American Girl" shoes, 431. 
 
 "American Grocer " and "The Grocer," 98, 535. 
 
 "American Shoe Company " and "London American Shoe Company," 592. 
 
 "American Watchman's Clock Co.," 181, note. 
 
 "American Wine Co.," 400. 
 
 "Anatolia," 208, 402. 
 
 "Angostura," 73, note, 217, note, 398, 682. 
 
 "Antiquarian Book Store " and "Antiquarian Book & Variety Store," 597. 
 
 "Anti- Washboard," 394. 
 
 "ApoUinaris " and " London Apollinaris," 99, note. 
 
 "Argyrol," 397. 
 
 "Army & Navy Co-operative Society" and "Army, Navy & Civil Service 
 Co-operative Society of South Africa," 596, note. 
 
 "Asbestos" shoes, 439. 
 
 "Atwood's Vegetable Physical Jaundice Bitters," 681. 
 
 "Autola " and "Au-to-do," 435. 
 
 "Balm of a Thousand Flowers" and "Balm of Ten Thousand 
 Flowers," 676. 
 
 "Barber's Knives " and "Edward Barber," 148, note. 
 
 "Beats-all," 448. 
 
 "Bedford Inquirer " and "Bedford Patriot," 57, note. 
 
 "Belgravia" magazine, 528. 
 
 "Bell's Life in London and Sporting Chronicle" and "The Penny Bell's 
 Life and Sporting News," 98, 536. 
 
 "Benedictine," 685. 
 
 "Bestyette," 448. 
 
 "Be Sure to Work the Horse " and "Always Work the Horse," 75, 267, 
 630. 
 
 " Bethesda Mineral Spring" and " Glenn Bethesda Mineral Water," 217, 402. 
 
 "Bingham School" and "William Bingham's School," 158, note. 
 
Index 845 
 
 [ Beferences are to pages | 
 
 NAMES— Continued. 
 
 "Birdsboro Trap Rock," 402. 
 
 "Birthday Scripture Text Book" and "The Children's Birthday Text 
 Book," 526, note. 
 
 "Black Caps " medicine, 439. 
 
 "Black Capsules " medicine, 439. 
 
 "Black Swan Distillery," 44, note, 76. 
 
 "Blount Door Checks," 405. 
 
 "Blue Label," 253. 
 
 "Blue Lick Water," 211, note, 402. 
 
 "Bokol," 406. 
 
 "Bon Ton " and "Gazette du Bon Ton," 538 note. 
 
 "Booth's Theatre," 44, note. 
 
 "Boston Peanut Roasting Co." and "Boston Trade & Peanut Roasting 
 Co.," 179, note. 
 
 "Boston Wafers," 74. 
 
 "Boy Scouts," shoes, 437, 438. 
 
 "Brassiere," 406. 
 
 "Brilliant," 392, 439. 
 
 "British-America," tobacco, 440. 
 
 "Bromo-Caffeine," 394. 
 
 "Bromo Quinine," 385, 679. 
 
 "Brooklyn White Lead Company," 598. 
 
 "Brookwood" whiskey, 437. 
 
 "Brown's Iron Bitters " and "Brown's Iron Tonic," 148, 600. 
 
 "Brothers and Sisters of the Evening Star Society " and "Sons and Daugh- 
 ters of the Evening Star Society," 164, note. 
 
 "Brown Windsor Soap," 704. 
 
 "Budweiser," 99, note, 219, 262, note. 
 
 "Bull Dog Bottling," 230, note. 
 
 "Bull Durham," 213, note. 
 
 "Bull's Head Mustard," 245. 
 
 "Burgess Atomizer," 284. , 
 
 "Caledonia Water " and "Natural Saline Water from the New Springs at 
 Caledonia," 218, note. 
 
 "Camel's Hair Belting," 70. 
 
 "Cameron's " clothing, 147, note. 
 
 "Carbolineum," 397, 435. 
 
 "Carlsbad Sprudel Salz " and "Kutnow's Improved Effervescent Carls- 
 bad," 99, note, 207, note, 210. 
 
 "Carmel," 398. 
 
 "Carroms," 394. 
 
 "Cashmere " and "Violets of Cashmere," 99, note, 227, note. 
 
 "Cascarets " and "Castorets," 98. 
 
 "Cascarets" and "Cascara," 265. 
 
 "Castoria," 251, note, 266, 290. 
 
846 Index 
 
 I Beferences are to pages | 
 
 NAMES— Continued. 
 
 "Castle Brewery," and "Castle Vaults," 596; note. 
 
 "Ca\dtei" cigars, 311,, riQte- 
 
 "Cedarine," 393. 
 
 "Celluloid," 98, 397. 
 
 "Celerj' Compound," 394. 
 
 "Ceresota," 397. 
 
 "Chancellor Club " and "Club," 435. 
 
 "Chantecler " and " Chanticlair," 531, note. 
 
 "Charles Forde's Bile Beans for Biliousness,'' 679. 
 
 "Charley's Aunt" and "Charley's Uncle," 531, note. 
 
 "Charter Oak Stoves," 92, note. 
 
 "Chartreuse," 98, 252, 402, 440, 696. 
 
 "ChatteE-box " aiid."Chatter;Book," 99,-519, 528. 
 
 "Chemico Repair Outfit," 272. 
 
 "Chicago Waists," 228, note. 
 
 "Chickering " pianos, 157, note. 
 
 "Chologestin " and "Chologen," 435. 
 
 "Civil Service Boot Supply," 595, note. 
 
 "Circular Loom," 439. 
 
 "Clark's," 152, note, 262, note. 
 
 "Club Soda," 93, note, 689. 
 
 "Club Cocktails," 397. 
 
 "Clysmic Spring " and "Clysmic Water," 218, note. 
 
 "Coca-Cola'," 394, 448. 
 
 " CgooJ«e " and " Cocaine," 98. 
 
 "Columbia," 400. 
 
 "Col. Willet" with representation of colonial officer, and portrait.of Col. 
 
 Anthony Wayne, 435. 
 "Commercial Advertiser " and "New York Commercial," 98. 
 " Comfort " and " Home Comfort," 99, note, 540., note. 
 "Computing," 392. 
 "Condy's Fluid," 253. 
 
 "Congress " and "ffigh Rqck Congress," 99.,, note, 397. 
 "Conserva di Tomate," 406. 
 
 "Conveyance Company " and "London Conveya,nce Company," 8. 
 "Cottolene " and "Cotosuet," 91, notei,;397. ; 
 "Cough Cherries," 394. 
 "Creamalt." and " Crown Malt," 282. 
 "Cream Baking Powder," 439. 
 "Cromac Springs," 211, note. 
 "Crookston Marble & Granite Works " and "Crookstoa Marble Wflrks," 
 
 77, note^ 181, note. 
 "Crow Whiskey," 448. 
 "Crystal Beer," 439. 
 "CrystaUized Egg," 392. 
 
Index 847 
 
 I Beferences are to pages I 
 
 NAMES— Continued. 
 
 "Cuticura,"98,397. 
 
 "Cutter's Whiskey," and "J. H. CuttCT— Old Bourbon," " J. F. Cutter, 
 son of the late J. H. Cutter," 156, note. 
 
 "Cyclops Machine Works " and "Cyclops Iron Works," 17, note. 
 
 "C. & C." capsules, 393. 
 
 "Dairymaid Brand," 101. 
 
 "Davids" ink, 448. 
 
 "Day &.Martin's Blacking," 8, note, 114, 117. 
 
 "DeBevoise Brassiere " and "H. & W. Brassiere," 100. 
 
 "Deer River Plows," 216. 
 
 "D. F. Taylor & Co." ajid "L. B. Taylor & Co.," 249. 
 
 "DeLong Hook & Eye," 172, note, 405. 
 
 "Democratic Republican New Era" and "New Era, revived by Richard 
 Adams Locke, its original editor," 536, note. 
 
 "DeYoungs " and "The Youngs," 112, note. 
 
 "Dodge's " stationery, 176, note. 
 
 "Don Caesar," and "Don Carlos," 242, note. 
 
 "Dr. Drake's German Croup Remedy " and "Dr. Drake's Famous German 
 Croup Remedy," 148, note. 
 
 "Dr. Eliot's Five-Foot Shelf of Books," and "Dr. Eliot's Famous Five-Foot 
 Shelf of World's Greatest Books," 518. 
 
 " Dridrip," 393. 
 
 "Dr. Morse's Compound of Yellow Dock Root" and "Dr. JViorse'e Im- 
 proved Yellow Dock and Sarsaparilla Compound," 95. 
 
 "Druid Mills," 49, note. 
 
 "Dr. Ward's Liniment," 302. 
 
 "Duryea's Starch," 153, note. 
 
 "Eagle," 397. 
 
 "East Indian," 385, 400. 
 
 "Elastic " bookcases, 394. 
 
 "Elastic Seam " and "Stretchiseam," 92, note, 289, 392. 
 
 "El Cavio " and "El Cabio," 270. 
 
 "El Falcon " and "El Falco,'^ 151, note. 
 
 "Elgin," 400. 
 
 "Encyclopaedia Britannica," 627, note. 
 
 "Erect Form " corset, 90, note. 
 
 "Erminie," 529, note. 
 
 "Ethiopian," 402. 
 
 "Eureka," 93, note. 
 
 "Evergreen," 439. 
 
 "Every Day Soap " and "Everybody's Soap," 269. 
 
 "Extract of Night Blooming Cereus," 678. 
 
 "Farmers' Loan & Trust Co.," 188. 
 
 "Farmers' Loan & Trust Co. of Kansas," 188w 
 
 "Faultless," 393. 
 
848 Index 
 
 [ Beferences are to pages I 
 
 NAMES— Continued. 
 
 "Farthest North. Nansen," and "The Fram Expedition, Nansen in the 
 
 Frozen North," 520, note, 527. 
 "Fels-Naptha Soap" and "Naptha Soap," 72, note. 
 "Fibre Chamois," 395. 
 
 "Flaked Oatmeal" and "Gillespie's Flaked Oatmeal," 90, note. 
 "Flare Front," 283, 393. 
 "Flavel's Patent Kitchener," 687. 
 "Fleischmann, Vienna Model Bakery," etc., and "Schuckmann's Genuine 
 
 Vienna Bakery," 224, note. 
 "Flor de Dindigul" and "Cigarro de Dindigul," 213, note. 
 "Formerly of the Newark Coal Co.," 88, note, 110. 
 "Formerly Operator at the Colton Dental Rooms," 87, note. 
 "Forsythe Waists " and "Foresight Waists," 96. 
 "Frank Leslie's" and "Frank Leslie, Jr.'s Sporting & Dramatic Times," 
 
 151, note. 
 "Fruit Vinegar," 385. 
 "German Household Dyes" and "Excellent German Household Dyes," 
 
 99, note, 267. 
 "German Sweet Chocolate" and "Sweet German Chocolate," 94, 101, 
 
 401. 
 "Germea " and "Golden Eagle Germ," 265. 
 "Georgia Coon," "Coon Molasses" and " New Coon," 599, 693. 
 "Getwell," 439. 
 "Gilka-Kummel," 708, note. 
 "Glenboig," 210, note. 
 "Glenfield Starch," 73, note, 99, 192. 
 "Gold Dust," 33, 96, 271, 628. 
 "Golden Crown " and "Golden Chain," 266. 
 "Gold Medal," 385, 398. 
 "Gouraud's Oriental Cream and Magical Beautifier," and "Creme Oriental, 
 
 by Dr. T. F. Gouraud's Sons," 158. 
 "Grand-Ma's" and "Mother's," 436. 
 "Grape-Nuts " and "Grain-Hearts," 98, 270. 
 "Green Mountain," 213, note, 401. 
 "Green Ribbon" and "Green River," 435. 
 
 "Gruber Almanack " and "J. Gruber's Hagerstown Almanac," 685. 
 "Guinea. Coal Co.," and "Pall Mall Guinea Coal Co.," 87, note, 99, note, 
 
 192, 592. 
 "Guaranteed to Contain Landreth's Extra Early Peas, Provided the Seal 
 
 is Unbroken" and "This Bag Contains Landreth's Extra Early Peas 
 
 Provided the Seal is Unbroken," 152, note. 
 "Guth's Chocolates," 159. 
 "Habana," 682. 
 
 "Half Spanish" cigars, 385, 437. 
 "Hall's Safes," 155. 
 
Index 849 
 
 [ Beferences are to pages | 
 
 NAMES— Continued. 
 
 "Hall's Vegetable Sicilian Hair Renewer" and "R. P. Hall's Improved 
 
 Preparation for the Hair," 41, note. 
 "Hamburg Tea," 241. 
 "Havoline" and "Valvoline," 436. 
 "Hazleton Boiler Company " and "Hazelton Tripod Boiler Company," 
 
 165, note. 
 "Health Food" and "Sanitarium Health Food," 99, note. 
 "Hemy's Royal Modem Tutor for the Pianoforte" and "Hemy's New 
 
 and Revised Edition of Jousse's Royal Standard Pianoforte Teacher," 
 
 526, note. 
 "Henderson" and "Anderson," 436. 
 "Home " and "Home Delight," 99, note. 
 "Hire's Root Beer," 146, note. 
 "Hoff" and "Leopold Hoff," 435. 
 "Hohner " and "Improved Hohner," 99, note. 
 "Honeymoon " and "Honeycomb," 94. 
 "Holeproof," 394. 
 "HoUoway's PiUs," 37, note. 
 "Hero" and "Heroine," 98. 
 
 "Hosford's Acid Phosphate " and "Liquor Acidi Phosphorici," 98. 
 "Hostetter's Bitters," 145, note, 256, 268. 
 "Hotel Dominion " and "New Dominion," 85, note. 
 "Hotel Vonderbank " and "Cafe Restaurant Vonderbank," 42, note. 
 "Howe Grain Cleaner Co.," 180, note. 
 "Howqua's Mixture," 677. 
 
 "Hoyt's German Cologne " and "Hoyt's Egyptian Cologne," 244. 
 "Huntsman Cherry Brandy," 101. 
 "Hunyadi," 398, 708. 
 "Hydronon " and "Hydrocide," 435. 
 " Hygieniques " suspenders, 395. 
 "Hygeia Water," 73, note, 394. 
 "Ideal," 394, 397. 
 "Imperial" beer, 398. 
 "Improved Orb" footballs, 563. 
 "Indian Pond," 401. 
 "Insectine " and "Instantine," 95. 
 "Insurance Oil," 395, 598, 689. 
 
 "International Trust Co." and "National Loan & Trust Co.," 170. 
 "Inter-phone," 393, 439. 
 
 "Ifon-Ox Tablets " and "Compound Iron Oxide Tablets," 97. 
 "Irving Hotel," 84, note, 98. 
 "Italian" underwear, 401. 
 "Ivory Soap," 378, 595. 
 
 " Johann Hoff's Malt Extract" and "Hoff's Malt Extract," 125, note. 
 "John Bull Beer " and "John Bull," 92, note. 
 
850 Index 
 
 [ References are to pages | 
 
 NAMES— Continued. 
 
 "John Knight's Primrose Soap," 668. 
 
 "Johnson's Anodyne Liniment," 268. 
 
 "Junket Tablets " and "Junket Capsules," 72, note. 
 
 "Kaiser " beer, 398. 
 
 "Kantleek," 439. 
 
 "Keepclean," 393. 
 
 "Keystone " line of steamers, 231, note. 
 
 "Key Stone "grease, 397. 
 
 "Keystone Lubricating Co." and "Keystone Oil Co.," 231, note. 
 
 "Keystone Maid" cigars, 231, note. 
 
 "Knights of Pythias " and "Improved Order of Knights of Pythias," 187, 
 
 note. 
 "L'Aiglon," 530, note. 
 "Lake Huron," 401. 
 "Lai Mohur," "Lai Chap," 587. 
 "Lamb Knit" and "Lamb Stitch," 183, note. 
 " La Presse " and " La Presse Libre," 540. 
 "La Tosca Social Club" and "Original La Tosca Social Club,". 186, 
 
 note. 
 "LePage's " and "LePage's Improved Liquid Glue," 40, note, 254, note. 
 "Liebig's Extract of Meat" and "Liebig's Fluid Beef Co.," "Liebig Beef 
 
 Co.," 44, note, 269. 
 "Lightning," 395. 
 "Liliputian Bazaar" and "Liliputian Outfitters," 140. 
 
 "Little Jake," 42, note. 
 
 "Liverpool," 401. 
 
 "Los Angeles Van, Truck & Storage Co.," 402. 
 
 "Ludlow Valves," 405. 
 
 "Lumetta" and "Limette," 98. 
 
 "Magnolia Anti-Friction Metal" and "Magnolia," 93, note. 
 
 "Magnetic Balm," 395. 
 
 "Maizena" and " Maizharina," 98. 
 
 "Mammoth " with picture of prehistoric animal and representation of two 
 elephants, 436. 
 
 "Manchester Brewery Co., Ltd." and "North Cheshire Brewery Co., Ltd.," 
 178, note. 
 
 " Manufacturers Outlet Company " and "Taunton Outlet Company," .598. 
 
 "Mappin's A 1 Quality," 37, note. 
 
 "Marvel" flour, 41, note, 398. 
 
 "Maryland Club Rye Whiskey " and "Maryland Jockey Club Rye Whis- 
 key," 95, note, 402. 
 
 "Marguerite," 398. 
 
 "Matzoon," 406. 
 
 "Mechanical Store " and "Mechanics' Store," 597. 
 
 "Merell£|'nt'9 Bank Company," 188, 
 
Index 851 
 
 I References are to pages ] 
 
 NAMES— Continued. 
 
 "Merchant's Joint Stock Bank," 188. 
 
 "Metropolitan," 398, 401. 
 
 "Metuchen Inn," 86, note. 
 
 "Milkmaid Brand," 101. 
 
 "Minneapolis Flour," 209, 222. 
 
 "Model Hats " and "The Medal One Dollar Hats," 686. 
 
 "Moline," 400. 
 
 "Momja," 397. 
 
 "Moniteur Universal" and "Moniteur Officiel," 539. 
 
 " Monopol Tobacco Works " and "North Pole Tobacco Works," 237. 
 
 "Montserrat Lime Fruit Juice," 253. 
 
 "Morton's Special Delivery" and "Morton's Transfer Company," 147, 
 
 note. 
 "Morning Post" and "Evening Post," 537, note. 
 "Mountain Dew " whiskey, 439. 
 "Mount Vernon Whiskey," 238. 
 
 "Mojde Nerve Food " and "Standard Nerve Food," 268, 679. 
 "Mrs. G. B. Miller & Co.'s Best Smoking Tobacco," etc., and "Mrs. C. B. 
 
 MuUer & Co., Best Smoking Tobacco," 95, note. 
 "Mutt and Jeff " cartoons, 542, note. 
 "National Folding Box Co.," 189. 
 "National Foldmg Box and Paper Co.," 189. 
 "National Shirt Waist Co.," 61, note. 
 "National System of Penmanship" and "Independent National System 
 
 of Penmanship," 98, 519, note, 526. 
 "Navy," 440. 
 "NexUo-beer," 439. 
 "New York Dental Rooms" and "New York Steam Dental Company," 
 
 224, note. 
 "Nick Carter " detective stories, 522, note. 
 "Nickel-In," 398. 
 "No-sag," 439. 
 "No-To-Bac," 393. 
 
 "Norwood" and "Norwood Hall," 85, note. 
 "No Wash Up," 393. 
 "Nubia," 400, 440. 
 " Number 10 South Water St.," 113. 
 "Oakes' Candies," 40, note. 
 "Ohio Liniment" and "Chinese Liniment," 270. 
 "Oil of Pine," 393. 
 
 "Old Coon Smoking Tobacco" and "Old Bachelor Smoking Tobacco,'' 272. 
 "Old Country Soap," 385, 400. 
 "Old Homestead" and "New Homestead," 283. 
 "Old Dr. Marshall's Celebrated Liniment," 64, note. 
 "Old Sleuth Library " and "Young Sleuth, the Keen Detective," 522, note. 
 
852 Index 
 
 I BefeieiiceB are to psges | 
 
 NAMES— Continued. 
 
 "Old Style Nelson County Pure Rye," 683. 
 
 "Old Taylor " and "Fine Old Kentucky Taylor," 147, note. 
 
 "Old Tucker " and "J. C. Tucker," 435. 
 
 "Oneida Traps," 211, 448. 
 
 "Orange Grove," 440. 
 
 "Orient," 400, 4«). 
 
 "Oriental Cream," 439, 440. 
 
 "Oriental Process Rug Renovating Company " and "Oriental Rug & Carpet 
 Renovating Works," 598. 
 
 "Osborne House," 49, note. 
 
 "Oval Blue " and "Bobby Blue," 72, note. 
 
 "Oxford Bibles," 222. 
 
 "Parabola," 397. 
 
 "Parcheesi," 99, 406. 
 
 "Paris " garters, 401. 
 
 "Penberthy" and "Lee-Penberthy," 184, note. 
 
 "Pepper Whiskey," 385. 
 
 "Pepto-Mangan " and "Pepto-Manganate of Iron and Cascara," 90, note, 
 394. 
 
 "Perry's Medicated Mexican Balm " and "Truefitt's Medicated Mesdcan 
 Bahn," 677. 
 
 "Pessendede Watches," 108. 
 
 "Philadelphia Beer," 112, note. 
 
 "Philadelphia Cream Cheese," 225, 227, note, 402. 
 
 "Pillsbury's Best XXXX Minneapolis, Minn.," and "L. F. PiUsbury's 
 XXXXXXX, Best Patent, Minnesota," 146, note. 
 
 "Pinet" and "Pinet's Special Boots and Shoes," 151, note. 
 
 "Pinosyne" and "Peptenzyme," 436. 
 
 "Plant Brothers " and "Michel Plant and Seed Company," 102. 
 
 "Plasmon" and "Plasmonade," 97, note. 
 
 "Police Gazette " and "The U. S. Police Gazette," 539, note. 
 
 "Portland" and "Famous Portland," 99, note, 226. 
 
 "Pride " and "Pride of Syracuse," 99, note, 398. 
 
 "Prince's Metallic Paint," 661. 
 
 "Queen " and "Queen Quality," 99, note, 398. 
 
 "Quinnebog,"401. 
 
 "Racket Store " and "New York Racket Store," 698. 
 
 "Radiant Home Stoves," 599. 
 
 "Radium," 397. 
 
 "Radstock Coal Works," etc., 206, note. 
 
 "Railroad and Engineering Journal" and "The American Railroad Jour- 
 nal," 537, note. 
 
 "Rainbow Twist" and "The Best Twist," 265. 
 
 "Rainer Beer " and "Rhinegold Beer," 267. 
 
 "Reading Biscuits," 214, note. 
 
Index 853 
 
 I Beferences are to pages I 
 
 NAMES— Continued. 
 
 "Receipt of old Dr. Pitcher " and "Formula of old Dr. Pitcher," 266. 
 
 "Red Cross," 385. 
 
 "Remington" and " Remington-Sholes," 174, note. 
 
 "Revere House," 84, note. 
 
 "Rex"and"Rexall,"96. 
 
 "Richon-le-Zion," 402. 
 
 "Rosendale Cement" and "Anchor Rosendale Cement," 200, note. 
 
 "Roof Leak," 393. 
 
 "Rough on Rats " and "Rough on Skeeters," 94. 
 
 "Rowland's Army & Navy Paregoric Tablets" and "Army & Navy 
 
 Paregoric Tablets," 99, note. 
 "Rowley Artificial Limbs," 125, note. 
 "Royal" and "Royal London," 9i9, note. 
 "Royal Baking Powder," 125, note, 262, note, 398. 
 "Roy Watch Case Company" and "Camm-Roy Watch Case Co.," 99 note. 
 "Rubberset," 393. 
 "Ruberoid," 392. 
 
 "Rugby Portland Cement," 203, note. 
 "Sanitas" and "Condi-Sanitas," 99, note. 
 "Santa Ana," 400. 
 "Sapolio " and "Saponit," 99. 
 "SapoUo " and "Sapho," 267. 
 "Saponifier," 251, note, 394, 397. 
 "Saratoga Vichy," 707. 
 "Sarony," 150, note, 176, note. 
 "Sawyer's Crystal Blue and Safety Box," and "Sawin's Soluble Blue and 
 
 Pepper Box," 262, note. 
 "Schnapps," 250, 406, 677. 
 "Sea Island Cotton," 230. 
 "Security," 393. 
 "S^ton," 401. 
 
 "Seixo " and "Seixo de Cima," 212, note. 
 "Self-loading," 439. 
 
 "Shawknit, Seamless Half Hose " and "Half Hose, Double Heels," 106. 
 "She " cigars, 92, note, 549. 
 
 "Sherlock Holmes " and "Sherlock Holmes, Detective," 20, note, 530, note. 
 "S. Howes Company " and "Howes Grain Cleaner Company," 64, note. 
 "Silex," 42, note. 
 "Silverpan," 71, note. 
 "Singer Sewing Machines," 405. 
 "Six Little TaUors" and "Six Big Tailors," 98, 597. 
 "Sliced Animals," 395. 
 "S. N. Pike's Magnolia Whiskey," 47, note. 
 "Social Register " and "Howard's Social Register," 427, note. 
 "Sorosis" and "Sartoris," "Sartoria," "Satoria," 96. 
 
854 Index 
 
 I Beferences are to pages ) 
 
 NAMES— Continued. 
 
 "Sozodont" and "Kalodont," "Zodenta," 436. 
 
 "Spearmint," 393. 
 
 "Sportsman Special Quality," 101. 
 
 "Standard," 439. 
 
 "Standard Scales" and "Standard Computing Scales," 9& 
 
 "Star " and "Lone Star," 99, note. 
 
 "Stein way " pianos, 97. 
 
 " Stephens' Blue Black " and " Steelpen's Blue Black," 95. 
 
 "Sterling Ale," and "Worcester Sterling Ale," 599. 
 
 "Sterling Silk Company" and "Stirling Silk Manufacturing Company," 
 
 599. 
 "St. Louis Lager Beer," 215. 
 "Stonebraker's " and "Dr. Stonebraker's," 150, note. 
 "Stone Ale," 73, note, 197. 
 "Storm's Liver Eegulator," 156, note. 
 "Stuart's Dyspepsia Tablets " and "Dr. Stewart's Dyspepsia Tablets," 97, 
 
 note, 589. 
 "Svenska Snusmagasinet," 406, 597. 
 "Sunlight" and "American Sunlight," 99, note. 
 "Sunshine," 394. 
 "Syrup of Figs," 384, 675. 
 "Taylor's Persian Thread," 401. 
 "Taylor Whiskey," 437. 
 "Tea Rose " flour, 74, 397, 418. 
 "TeUer," 394. 
 "T. Felix Gouraud's Oriental Cream and Magical Beautifier " and "Creme 
 
 Oriental by Dr. T. F. Gouraud's Sons," 158. 
 "The Accident Co.," 180, note. 
 "The American Giri," 401. 
 "The Come Back," 533, note. 
 "The Crown " and "Crown Combined Mowing and Reaping Machine," 43, 
 
 note. 
 " The Good Things of ' Lif e '" and " Spice of Life," 522, note. 
 "The Old Joseph Hall Agricultural Works, No. 10 South Water Street, 
 
 Rochester, New York," and "The Glen & Hall Manufacturing Company, 
 
 Number 10 South Water Street, Rochester, N. Y.," 113. 
 " The Pictorial Ahnanack," 641. 
 "Thermogene," 393. 
 "The Velvet Kind," 393. 
 "Thorley's Food for Cattle," 177. 
 "Tipo," 406. 
 
 "Toasted Corn Flakes," 600. 
 "Tobasco," 400. 
 "Toothache Gum," 267, 392. 
 "Tower Palace " and "Tower Palace Carpet Store," 205, note. 
 
Index 855 
 
 I Beferences are to pages | 
 
 NAMES— Continued. 
 
 "Triplex Blocks," 405. 
 
 "Trowbridge's Chocolate Chips " and "Chocolate Chips," 56, note. 
 
 "Turnin," 401. 
 
 "Tussaud's " and "Louis Tussaud, Limited," 149, note. 
 
 "Twin Brothers," yeast, 42, note. 
 
 "Un Amour Vrai " and "Larmes d' Amour," 523, note. 
 
 "Uneeda " crackers, 397. 
 
 "Union Made " and "Union Leader," 243. 
 
 "United States Dental Association " and "U. S. Dental Rooms," 111, note. 
 
 "United States Frame & Picture Company" and "New York Frame & 
 Picture Company," 599. 
 
 "University of Philadelphia," 599. 
 
 "Vacuum Cup," 393. 
 
 "Valentine" and "Valentine's Valtine Meat Globules," 153, note. 
 
 "Valvoline," 397. 
 
 "Van Stan's Stratena Co. Cement" and "Victor F. Van Stan's Cementive," 
 156, note. 
 
 "Vassar Chocolates," 168. 
 
 "Velvet" candy, 272. 
 
 "Vertical Top " cigar, 291, 405. 
 
 "Victor " and "Victoria," 436. 
 
 "Vienna," 401. 
 
 "Virgin Leaf," 394, 395. 
 
 "Vitae-Ore " and "Vitilizing Ore," 96. 
 
 "Vulcan" and "Vulture," 266. 
 
 "Wahiut Grove Dairy," 258. 
 
 " Wamsutta " and " Wamyesta," 98. 
 
 "Waterfill and Frazier Whiskey " and "WaterfiU and Frazier, Distillers, 
 etc.," 159. 
 
 "Wearever," 394. 
 
 "Webster's Dictionary," 291, 525, 527. 
 
 "West End Distillery, Honeymoon,'' and "East End Distillery, Honey- 
 comb," 94. 
 
 "What Cheer House," 83, note. 
 
 "WhirUng Spray " and "Whirl Spray," 89. 
 
 "White House," 398, 402. 
 
 " Whitstable Oysters," 221, note. 
 
 "Wonderful Magazine " and "New Series Improved," 10. 
 
 "Woodbury's Facial Soap " and "Woodbury's New Skin Soap," 40, note. 
 
 "Worcester " and "Worcester China," 220, note. 
 
 "Worcestershire " and "Improved Worcestershire " Sauce, 220. 
 
 "Worth" and "Our Worth," 435. 
 
 "Yorkshire Relish," 221, 263, 709. 
 
 "Young Women's Christian Association " and "The Young Women'e 
 Christian Association of Chicago," 167, note. 
 
S56 Index 
 
 I Befereuces are to pages ] 
 
 NATURAL PRODUCTS 
 names of, 217. 
 
 NECESSITY 
 
 plea of, of use of particular name, 173. 
 nephew, right to use name of uncle, 154, 155. 
 
 NEWSPAPERS 
 
 have character, reputations and individuality, 538. 
 
 locality served by each, important in fixing rights to names, 540. 
 
 names of, 535. 
 
 one who has sold out a newspaper may set up anew, in same locality, 57. 
 
 sale of, 42. 
 
 NEW YORK COURTS 
 
 position of, 352. 
 
 NEW YORK PENAL CODE 
 
 provision against false statements as to goods, etc., 500. 
 
 NICKNAMES. (See Catchwords.) 
 based on designs used on goods, 245. 
 creating secondary meaning, 71. 
 "Equitable," 170. 
 family names as, 147. 
 for books, 526, note 37. 
 m trade, 82, 100. 
 in trade, value of, 170. 
 
 of competitor, use of in advertisements, actionable, 100. 
 of rivals, incorporating under, 169. 
 or catchwords in trade, corporate names used as, 170, 183. 
 use of part of corporate name as, 170. 
 "Winchester," 170. 
 
 NON-USER 
 
 common law trade-mark may be lost by, 30. 
 
 general rule as to, 695. 
 
 length of, to warrant presumption of intent to abandon, 697. 
 
 NOTICE 
 
 accoimtihg of profits refused when statutory notice not used, 721. 
 
 cautionary, use of, 704. 
 
 improper use of, 170. 
 
 of change of management, going out of business, etc., 502 et seq. 
 
 of infringement, 733. 
 
 of pendency of suit may be given by circular, 496, 505. 
 
 of registration, 467. 
 
Index 857 
 
 t Kefeiences are to pftgeg 1 
 
 NOTICE— Continued. 
 
 of user, 8. i 
 
 to defendant of existence of contract, in actioos for interferences with con- 
 tracts, 345, 348. 
 (See CiRCULAKS.) 
 
 NUMERALS 
 
 as names of goods, 103. 
 
 as trade-marks, 407. 
 
 indicating source or origin, 105. 
 
 to denote grade of goods, 103. 
 
 to indicate style, 106. 
 
 used in a series do not constitute a trade-mark, 106, 107. 
 
 use of, to designate series, 106. 
 
 use on repair parte, 107. 
 
 "30," 104. 
 
 "40," 104. 
 
 "Ill," 104. 
 
 "60," 104. 
 
 "70," 104. 
 
 "R 12," 104. 
 
 "303," 105. 
 
 "H. H. 6," 105. 
 
 "523," 105. 
 
 "830," 106. 
 
 "J^," "1," "2," "3," "8," 286. 
 
 OBLITERATION 
 
 of marks upon packages, 360. 
 
 OBSTRUCTION 
 
 of competitor's eustomeis, 550. 
 
 OFFICERS 
 
 of corporation as parties defendant, 638. 
 duties of as to trade secrets, 320. 
 
 OMISSION 
 
 of name from directory, 487. 
 
 ONE'S OWN NAME 
 
 use of, denied to one who abuses it, 134. 
 
 " ONLY HIGH GRADE " 
 
 use of phrase, 692. 
 
858 Index 
 
 I References are to pages | 
 
 OPPOSITION TO REGISTRATION 
 
 procedure, 448. 
 
 (See Index to Appendix.) 
 
 ORDERS 
 
 giving of, evidence of fraud, 178, 179. 
 
 partly arranged for by agent, prior to agent's discharge, belong to employer, 
 
 314. 
 to agents not to infringe will not excuse defendant, 624. 
 
 ORIGIN 
 
 geographical names which indicate, 190, 228. 
 
 names indicating, falsely, 208, 681. 
 
 numerals indicating, 105. 
 
 of action for unfair competition. (See Chapters I and II.) 
 
 of goods, misrepresentation as to, 681. 
 
 primary function of technical trade-marks must be to indicate, 379. 
 
 " ORIGINAL " 
 
 use of word, 148. 
 
 ORIGINATOR 
 
 of an article, sale of article by, 56. 
 
 of an article, sale of name or business by, 56. 
 
 OWN NAME 
 
 (See Family Name.) 
 
 PACKAGES 
 
 concealing markings on, 248. 
 form of injunction against unfair use of, 652. 
 similarity in, 250. 
 
 similar, unfair use not cured by explanatory phrase, 272. 
 (See Chapteb on Deess.) 
 
 PACKING 
 
 goods fraudulently, 265, note. 
 
 goods so as to pass them off as other goods, 248, 249. 
 
 of goods to conceal markings, 550. 
 
 PARTIES 
 
 administrators of deceased partner as, 638. 
 
 corporation not necessary party defendant in action against individuals 
 
 doing business under corporate name, 638. 
 joint parties, 638. 
 manufacturers and sellers of offending article may be joined as defendants, 
 
 639. 
 
Index 859 
 
 [ References are to pages ] 
 
 PARTIES— Continued. 
 
 officers of corporation may be made defendants, 637. 
 
 plaintiff in action on geographic names, who may be, 200. 
 
 plaintiff, who may join as, 200 et seq., 637, 638. 
 
 stockholders not proper parties defendant in action against corporation, 
 639. 
 
 those controlling corporation may be made defendants, 638. 
 
 to action for unfair competition, 637. 
 
 unknown principal or proprietor may be sued through agent as sole defend- 
 ant, 639. 
 
 who may be made defendants, 637. 
 
 PARTNER 
 
 decree as to use of partnership names by ex-partner, 655. 
 effect of locality on sale of share of good-will by partner, 57. 
 retiring, 53. 
 
 right of, to name, 52. 
 
 right to solicit customers, 51, 53. 
 
 dissolution by death of, 60. 
 right of remaining, to state they are continuing old business, 59. 
 right to partnership name on dissolution, 57. 
 rights of partners in partnership name on dissolution, 57. 
 unfair use of name of former, 58. 
 use by retiring, of own name, limited, 51. 
 
 who sells share of good-will in partnership cannot compete in same locality, 
 57. 
 
 PARTNERSHIP 
 
 dissolution by agreement, 52. 
 
 by death, 60. 
 
 implied contract as to retiring partner resuming business, 57. 
 
 right of family of deceased partner to name, 60. 
 
 right to name in absence of special provision, 59. 
 name of, may be protected against corporations formed with a name similar 
 
 to partnership name, 172. 
 
 similarity of, to corporate names, and differences, 161. 
 name on dissolution, 57. 
 name, right of retiring partner to, 52. 
 rights of one who owns a trade-mark when he enters the partnership, to that 
 
 mark, 87. 
 use of term "Works," Company," etc., by, 181. 
 
 PARTS 
 
 copying a singte feature or part, 284. 
 
 or features, copying many of, of an article, 239. 
 
 of machinery, etc., sale of. (See Repair Parts.) 
 
860 Index 
 
 I Beferences are to paces t 
 
 PASSENGERS 
 
 contract with transportation company, 343. 
 
 PASSING-OFF 
 
 English name for unfair competition, 2. 
 goods of third party, 561. 
 
 PATENTS 
 
 copying articles after expiration of patents, 288. 
 effect of expiration of, 288. 
 
 expiration of, effect on name, 82. 
 effect of expiration of patents on right to make and sell repair parts, 289. 
 expiration of and unfair competition, 288. 
 sale of parts of patMited goods after patent expres, 285, 286. 
 
 PATENT-CLAIM 
 
 misrepresentation by claim of, 687. 
 
 PATENT OFFICE 
 
 rules of , relating to trade-marks. (See Appendix and Index Tbesbisiso.) 
 
 " PATENTED »' 
 
 use of term, 222, 687. 
 
 PATENTED ARTICLES 
 
 and those made by secret process, difference between, 360. 
 
 copying those on which patent has expired, 288. 
 
 names of, 404. 
 
 purchase of, carries right to use name, 291. 
 
 right to control sale of, by contract, 358. 
 
 PENDENCY OF SUIT 
 
 circulars giving notice of, 496. 
 
 PERCOLATION 
 
 of water, stopping of, with intent to injure, 329. ' 
 
 PERIODICAL 
 
 (See Maoazines.) 
 
 PERSONAL LIBEL AND TRADE LIBEL 
 
 difference, 477. 
 
 PERSONAL NAME 
 
 (See Family Name.) 
 acquired generic or secondary meaning of, 137. 
 
Index 861 
 
 I Beferences we to pages ] 
 
 PERSONAL NAME— Continued, 
 early cases dealing with, 121. 
 may become trade-mark susceptible of registration under Ten Year Law, 
 
 445. 
 right to use as business name, 117 et aeq. 
 voluntary change of, 151. 
 
 PERSONALITY 
 
 good-will attaching to, 83, 280, 281, 287. 
 
 PERSONAL RIGHTS 
 
 in hotel names, 84. 
 
 PERSUADING 
 
 another to break a contract, 327 et seq. 
 
 PERSUASION 
 
 procuring breach of contract by, 346. 
 
 use of, to procure breach of contract, injunction against, 338; 
 
 PETITION 
 
 form of prayer in, 649. 
 
 PHOTOGRAPH 
 
 use of, without consent of subject, 247. 
 
 PHOTO PLAYS 
 title of, 533. 
 
 PHYSICAL 
 
 requirements of articles, 591. 
 
 PHRASES 
 
 (See Trade Phkases.) 
 
 PLACARDS 
 
 libelous, injunctions against, 474. 
 
 PLACE 
 
 effect of moving business plant, 216. 
 names may acquire abstract meaning, 207. 
 of mslnufacture, misrepresentation as to, 681. 
 
 name of, right to, 43. 
 
 relation of trade name or mark to, 160. 
 right of buyer of a place to use name on goods made there, 44, 45. 
 (See Location; Geographical Names.) 
 
862 Index 
 
 I Beferences are to pagesf 
 
 PLACE NAMES 
 
 (See Geographical Names.) 
 
 PLANT 
 
 effect of moving, 216. 
 
 PLAYS 
 
 imitation of, 535. 
 
 names of, 528. 
 
 unfair competition in connection with, 528. 
 
 PLEADING 
 
 answer, 574. 
 
 certainty and particularity, 572. 
 
 defense of "unclean hands," 577. 
 
 essential allegations, 575. 
 
 intent to deceive, when necessary, 625. 
 
 (See Chapter II.) 
 jurisdictional facts, 573. 
 what allegations held sufficient, 575. 
 
 insufficient, 576. 
 what questions may be raised by demurrer, 576. 
 
 PORTRAITS 
 
 not registrable, 433. 
 
 registration of, 441. 
 
 transfer of, 47. 
 
 use of, without consent of owner, 247. 
 
 PRAYER 
 
 of petition, form of, 649. 
 
 PREDECESSOR 
 
 continuing use of name of, 685. 
 
 PREFIXES, SUFFIXES, ETC. 
 use of, 159. 
 
 PRELIMINARY INJUNCTION 
 
 (See Injunction.) 
 directing use of explanatory phrase, 644. 
 instances of delay which have been held to bar, 705. 
 laches may bar, 705. 
 
 may require stipulation by plaintiff as to future conduct, 644. 
 on hearing of, important and basic facts will not be determined, 643. 
 pending trial, 642. 
 
Index 863 
 
 I Beferences are to pages ] 
 
 PRELIMINARY INJUNCTION— Continued, 
 sometimes essential to justice, 647., 
 when issued, 640 et seq. 
 will not be granted where evidence conflicting, 641. 
 
 PRESUMPTION 
 
 "Every person must be understood to have intended to do just what is the 
 natural consequences of his act deliberately done," 614, 616, 621, 
 622, 625. 
 of acquiescence does not arise from exclusive right alone, 703. 
 of continuance of acts, as evidence, 604. 
 
 of contract between employer and employee not to disclose secret, 306, 308. 
 of fraudulent intent, 622, 625. 
 
 of fraud, based on selling goods so that vendees may pass them off fraudu- 
 lently, 629. 
 
 based on unimportant facts, 625. 
 
 from acts not likely to happen, 624. 
 
 from general attempts to copy, 627. 
 
 from manner of telling the truth, 631. 
 
 from similarity of get-up or name, 626. 
 
 from similarity of sound of names, 93. 
 
 from threats of suit not followed up by suits, 494. 
 
 from voluntary adoption of or change of name, 151. 
 
 in face of contract provisions, 622. 
 
 in use of name of an incorporator in naming a corporation, 179. 
 of intent cannot be based on unimportant, improbable facts, 625. 
 of intent, from defendant's acts, 264, 581, 622. 
 
 to deceive on part of incorporators from similarity of names, 178. 
 
 to bring about necessary consequences of one's acts, 614, 616, note 21, 
 622, 625. 
 of intent to abandon from proof of non-user, 697. 
 
 arises in face of defendant's disclaimer of intent, 611, 622. 
 
 from making copy of another's goods, 624. 
 of use of article, 607. 
 that no one intends to part with right to use his own name, 39. 
 
 PRICE CUTTING 
 
 local, 567. 
 
 PRICE FIXING 
 
 rule as to, 299. 
 
 PRICE L^STS 
 
 copying, 248, 
 
864 Index 
 
 [ Heteteneea are to psgea 1 
 
 PRICES 
 
 competition by ufifair comparison of prices, 568. 
 ' not a trade secret, 311. 
 
 unfair use of, as means of competition, 567. 
 use of, as decoy, 565. 
 
 to inflict injuiy on competitor, 564. 
 
 PRINCIPAL OR PROPRIETOR 
 
 unknown to public may be sued through agent, 639. 
 
 PRINTERS 
 
 may be parties defendant jointly with person who does unfair aote, 638. 
 of labels, etc., 638. 
 of labels, etc., liability of, 667. 
 
 who contribute to doing of unfair acts may be held liable fca* unfair com- 
 petition, 549. 
 
 PRIORITY 
 
 geographic extent of trade-mark rights based on, 28. 
 
 in organization of corporations, effect on name, 165, note 8. 
 
 in use of name or mark, 86, 413. 
 
 length of time necessary to create right of, 180. 
 
 of use against priority of invention, 412. 
 
 rights of, as to name, not changed by prior incorporation of one who was 
 
 not first one to use ttie name, 181. 
 rights of the one first in the field, 29, 620. 
 rule of, in use of geographic or place names, 200. 
 in use of name of corporation, 180. 
 
 PRIOR RIGHTS 
 
 effect of act on, 464. 
 
 PRIOR USE 
 
 by another will not necessarily preclude registration, 430. 
 knowledge of, not necessary to relief, 245. 
 of place names, knowledge of, 86. 
 
 PRIVATE 
 
 brands, 381. 
 
 PRIVILEGE IN TORTS 
 
 what constitutes, 330 et seq. 
 
 PROBABILITY 
 
 of injury ground of injunction, 639. 
 
Index 865 
 
 r Beferences are to pages I 
 
 PROCESS OF MANUFACTURE 
 
 geographic names indicating, 219. 
 
 PROCURING 
 
 breach of contract. 
 (See Contract.) 
 
 PROFITS. (See Damages.) 
 
 accounting of, barred by laches, 703. 
 
 material delay bars, 703. 
 
 may be ordered against one fraudulently using secret, 314. 
 as distinguished from damages, 712. 
 compensation to plaintiff is purpose of granting, 713. 
 court will not speculate as to, or apportion, 718. , 
 
 damage to reputation of product to be reckoned with loss of, 717. 
 deduction of expenses of defendant from, 718. 
 defense that defendant received none of the, 667. 
 given to plaintiff may be limited to those resulting from defendant's 
 
 fraud, 723. 
 manufacture, cost of, deducted from, 719. 
 notice of infringement, 733. 
 rules for computing amount due as, 719. 
 
 for determining what are and what are not, 729. 
 salaries considered in computing, 719. 
 sales, what are considered as, in computing, 719. 
 use of cautionary notice on goods by defendant, 704. 
 what may be recovered, 724. 
 when an account will not be ordered, 720. 
 when reference to master to determine refused, 720. 
 
 PROFESSIONAL NAMES 
 
 not transferable in business, 38. 
 
 PROOF AFFIRMATIVELY 
 
 of any instances of actual deceit of customers not necessary, 601. 
 
 of cases involving fanciful name and those involving secondary meaning, 
 
 difference between, 581. 
 of ownership of interest in mark only necessary to secure protection, 26. 
 
 PROOF— BURDEN OF 
 
 as to deceit, 602, 603. 
 
 as to exclusive right on claimant, 709. • ^ 
 
 as to name already in use, 145. 
 
 of intent, American cases as to, 615. 
 
 English cases as to, 615. 
 to prove secondary meaning is on plaintiff, 70. 
 
866 Index 
 
 [ Beferences are to pages | 
 
 PROPERTY 
 
 in a business, elements of, 21, 474. 
 
 in marks and names, relation to intent, 608, 609. 
 
 in names not trade-marks, 23, 26. 
 
 in name or mark not necessary to action for unfair competition, 2, 26. 
 
 in names or marks, character of, 17. 
 
 in trade-marks recognized in 1838, 8. 
 
 protection of, by injunction, against libel and slander, 474 et seq. 
 
 rights in good-will of a business, 25, 31. 
 
 rights in marks not technical trade-marks, 23, 24. 
 
 rights in a trade-mark, 388. 
 
 PROPERTY RIGHT 
 
 effect on, of kind of business in which name is used, 26. 
 
 in a trade-mark is a limited right, 26. 
 
 in secondary meaning, 28. 
 
 in trade secrets, 294. 
 
 may arise in name or mark which is not technical trade-mark, 26. 
 
 protected by chancery, 295. 
 
 PROPINQUITY 
 
 effect of imitation depends very largely upon, 592. 
 
 PROPOSED CONTRACTS 
 
 interference with, 361. 
 
 PROTECTION 
 
 afforded by law not limited to exact or formal name, 82. 
 
 limited to goods of same class, 420. 
 
 of trade-mark under Ten Year Law, 444. 
 
 does not create monopoly, 446. 
 of trade secrets, 296. 
 period of, 456. 
 
 PUBLIC 
 
 defense that plaintiff is defrauding and deluding the public, 669. 
 
 protection of, 28. 
 
 protection of, basis of unfair competition, 19, 21. 
 
 right of, to be dealt with fairly, 20, 180. 
 
 PUBLICI JURIS 
 
 when names become, 82, 89, 708. 
 
 PUBLICATION 
 
 divulging secret in confidence does not constitute, 300. 
 of letters, circulars, etc., constituting boycott, 486. 
 
Index 867 
 
 [ Beferenccs are to pages ] 
 
 PUBLICATION— Continued. 
 
 of literary work condition precedent to obtaining copyright, 510. 
 of secret, effect of, 299. 
 what constitutes, 511. 
 
 PUBLIC KNOWLEDGE 
 
 of secondary meaning of name, extent of, 205. 
 
 PUBLIC POLICY 
 
 use of sign or word must not be against, 384. 
 
 use of technical trade-mark must not be against, 380. 
 
 PUNITIVE DAMAGES 
 
 (See Damages.) 
 
 PURCHASE 
 
 by surviving partner of estate of deceased partner, 60. 
 
 PURCHASING PUBLIC 
 
 aim of unfair competition action to protect, 18, 19. 
 
 class of, intellectual capacity of, habits of foreign purchasers, 586. 
 
 class of purchaser the law protects, 586. 
 
 deceit of ultimate purchaser, not jobber, is the important consideration, 
 
 593, 665. 
 may forget name of maker of goods he buys, yet be deceived. 
 
 (See CusTOMEES.) 
 need not compare labels on goods when buying, 264, 
 
 PURCHASER 
 
 actual instances of deceit of, need not be shown, 601, 
 
 care used by average, 585. 
 
 in bulk cannot represent himself as original maker, 254. 
 
 of business of another, right to use name of predecessor, 86. 
 
 trade name passes to purchaser of whole business and good-will, 58, 
 
 QUALITY 
 
 geographic names indicating, 191, 228. 
 
 indicated by letters, words or figures, 398, 
 
 misstating in selling, 254. 
 
 of goods, fact that defendant's goods better than plaintiff's no defense, 661. 
 
 defense that defendant's are cheaper than plaintiff's, 622. 
 refilling containers with cheap goods, 257. 
 right of public to receive quality advertised, 20. 
 
 QUIA TIMET 
 
 applications in nature of, 479, 639. 
 
868 Index 
 
 [ Beferences are to psges 1 
 
 RAW MATERIAL 
 
 use of same by two manufacturers, effect on name, 212. 
 
 READING MATTER 
 
 difference in, disregarded where there are infringements in other features, 
 
 290. 
 on labels, 247. 
 
 RE-BOTTLING 
 
 goods of another, 253. 
 
 RECEIVER'S SALE 
 
 rights of buyer of whole business as to name of the business, 49, note 44. 
 
 REDDAWAY CASES 
 
 discussed, 12, 70, 390. 
 
 RE-ENTER BUSINESS 
 
 contract not to, 351. 
 
 REFERENCE 
 
 to determine profits when refused, 720. 
 
 REFILLING 
 
 (See Bottles.) 
 
 « REG. U. S. PAT. OFF." 
 
 use of phrase, 467. 
 
 effect of not using this notice, 721. 
 
 " REGISTERED " 
 
 misrepresentation by use of word, 687, 690. 
 
 REGISTRATION 
 
 advantages of, 424. 
 
 appeals to the Conunissioner of Patents, 453. 
 
 applicant for, must show exclusive use, 447. 
 
 application for, 428. 
 
 by first user, 28. 
 
 by owners, 426. 
 
 cancellation of, 456. 
 
 by court in equity suit, 464. 
 cannot vahdate trade-mark not previously valid, 427. 
 certificates of, 455. 
 declaration, 429. 
 defense that name of defendant is capable of, 663. 
 
Index 869 
 
 ( Beferences are to pages ] 
 
 REGISTRATION— Continued. 
 
 designation of agent by non-residents, 431. 
 
 does not conclude any property rights in a mark, 426. 
 
 does not create trade-mark, 380. 
 
 effect of, 424. 
 
 effect of evidence of, 606. 
 
 fees, 457, 458. 
 
 foreign applicants, 431. 
 
 fraudulently procured, 465. 
 
 geographical limits of, 73. 
 
 in Treasury Department in aid of custom's service, 466. 
 
 interference proceedings, 451. 
 
 Liability for infringement, 458. 
 
 may be cancelled by order of equity court, 464. 
 
 no importance where name copied in total, 92. 
 
 not essential to validity of trade-mark, 380. 
 
 notice of, 467. 
 
 of assumed name, 33. 
 
 of corporate names, 163. 
 
 of labels, 260. 
 
 of label, effect of not procuring, 260. 
 
 of portraits, 441. 
 
 period of protection, 456. 
 
 ■prima fade proof of ownership, 458 et seq. 
 
 prior use by another will not necessarily preclude, 430. 
 
 rules for conducting proceedings, 465. 
 
 under federal statute, 459. 
 
 Ten Year law, 444. 
 
 does not create monopoly, 446. 
 under United States Trade-Mark Act, 423. 
 
 effect of, 425. 
 who may oppose, 448. 
 
 RELIABILITY 
 
 good-will another name for, 31. 
 
 RELIEF 
 
 temporary, pending trial such as making defendant's name more distinct, 
 642. 
 
 (See REMEDiiiS.) 
 to entitle plaintiff to, not necessary to prove deceit of any customer, 593. 
 
 REMEDIES 
 
 applications in nature of quia timet, 639. 
 confusion of color, form, size, etc., how corrected, 652. 
 of names and signs, how corrected, 651. 
 
870 Index 
 
 [ Beferences are to pages ] 
 
 REMEDIES— Continued. 
 
 court does not pass on defendant's plans to correct his unfair acts, 649. 
 damage to reputation of goods to be considered, 717. 
 destruction and delivery up of offending articles, 462. 
 destruction of list of customers fraudulently obtained, 317, 318. 
 exemplary damages, 372. 
 explanatory phrases, uselessness of, 124, 136. 
 extent and character of, 633. 
 expenses of defendant deducted from profits, 718. 
 family name, injunctions against unfair use of, 653. 
 final relief, scope of permanent injunction, 648. 
 full name, compelling use of, 125. 
 
 important and basic facts not decided on application for preliminary in- 
 junction, 643. 
 inadequacy of present forms of remedy, 136. 
 injunctions against libel and slander of goods, names, etc. 
 
 (See DiSPAEAGEMENT, p. 470.) 
 injunctions before act committed, 639. 
 jurisdiction of courts in unfair competition cases, 636. 
 measures adopted by defendant to correct acts, 649. 
 necessity rule, 646. 
 
 now given in unfair competition cases often inadequate, 136. 
 parties, 637. 
 
 partner's name, injunction against use of, 653. 
 preliminary injunctions, 643. 
 
 on hearing of, important facts will not be determined, 643. 
 
 sometimes essential to justice, 647. 
 responsibility of manufacturer for defective goods, 635. 
 stipulation as to plaintiff's future conduct, 644. 
 temporary relief pending trial, 642. 
 theories as to, 633. 
 use of explanatory phrases, 645. 
 
 REMOVAL 
 
 (See Location.) 
 
 of business, effect of on name, 216. 
 
 of plant or business, effect on use of geographic names, 216. 
 
 REMOVING 
 
 labels, 254. 
 
 RE-PACKING 
 
 goods of another, 254. 
 
 REPAIR PARTS 
 
 are numerals and letters used on, trade-marks, 107, 285. 
 copying, 285. 
 
Index 871 
 
 I Beferences are to pages ] 
 
 REPAIR PARTS— Continued. 
 
 effect of expiration of patents, 289 et seq. 
 making repair parts after patent expired, 285. 
 for articles manufactured by others, 285. 
 use of name belonging to another dealer in marking, 286. 
 use of numerals and letters on, 107. 
 
 REPRESENTATIVES 
 
 bribery of competitor's, 560. 
 
 REPRINTS 
 
 of books, fraud in, 527. 
 
 REPUTATION 
 
 and personality, 83, 281, 287. 
 
 extent of, 71, note. 
 
 libel and slander of, 470. 
 
 need not be known by a majority of people, 205. 
 
 of defendant being greater than that of plaintiff, effect of, 727. 
 
 of product or goods, lost through defendant's acts, to be computed with 
 loss of profits, 717. 
 
 priority of use, not extent of reputation of name, creates secondary mean- 
 ing, 145. 
 
 RE-SALE PRICE 
 
 rule as to, 299. 
 
 RE-SELLING 
 
 unfair to misstate quality or quantity in, 254. 
 
 RESEMBLANCE 
 
 degree of, necessary, 208. 
 
 in general appearance of label unfair competition, 270. 
 
 in several features may be fair, if these are common to the trade, 242. 
 
 RESIDENCE. (See Cities.) 
 
 in a locality does not give unlimited right to use name of locality as trade 
 
 name, 211. 
 right to advertise facts as to former, on sale of business, 56. 
 
 RETAIL DEALER 
 
 conditional contract between, and manufacturer, inducing breach of, 355. 
 deceit of ultimate purchaser, not jobber or retailer, important, 593, 665. 
 defense that deception is due to, 664. 
 
 procuring breach of contract to sell only at specified prices, 357. 
 (See Customer.) 
 
872 Index 
 
 f Beferences are to pages ] 
 
 RETIRING PARTNER 
 
 use by, of own name, limited, 51. 
 
 RETIRING STOCKHOLDERS 
 
 rights of, and others in corporate name, 50. 
 
 RIGHT 
 
 of descendants to family name, 153. 
 
 of every man to use his own name in business, 57, 116, 117, 119. 
 
 of one who first uses surname in business, 152, 154. 
 
 of son to father's name, 159. 
 
 to exclude use by others of certain words and names limited, 80. 
 
 to its name, effect of incorporation of business on its, 163. 
 
 to protection of court does not depend upon any exclusive right to name 
 
 or mark, 9. 
 to use own name, presumption that no one intends to part with, 39. 
 transfer of names and marks by descent, 62. 
 
 RIGHT OF ACTION 
 
 will mere use of mark give, 7. 
 
 RIGHT TO TRADE 
 
 not absolute, but qualified, 11. 
 
 RIVAL TRADERS 
 
 disparagement of, 470. 
 
 have right to use public or family names, 3. 
 
 injury to, by pretended business competition, 560. 
 
 relative loeation of plants of, effect of names, 212. 
 
 ROGERS 
 
 silver cases, 128 et seq., 175. 
 
 RULES OF PATENT OFFICE 
 
 as to trade-marks. 
 (See Appendix and Index Thereto.) 
 
 SALARIES 
 
 of officers, considered in computing profits, 719. 
 
 SALE. (See Transfer.) 
 
 actual, of offmding goods not necessary prerequisite of injunction, 639. 
 
 knd license of trade-mark rights, 45. 
 
 by assignee, 48. 
 
 conditional, of goods made by secret formula, 299. 
 
 of a business, effect of locality on, 57. 
 
Index 873 
 
 ( Beferencea are to pages 1 
 
 SALE — Continued. 
 
 of a name or business by originator of an article, 56. 
 
 of business site, 42. 
 
 of entire business rights of vendor, 38. 
 
 of inferior goods as usual quality, 563. 
 
 of newspaper, 57. 
 
 of secret, 64. 
 
 right of vendor to use names used by concern he has sold, 40, notes. 
 
 SALES 
 
 agent, procuring breach of conditional contract by, 355. 
 
 expense of, deducted from profits, 718. 
 
 necessity of, 416. 
 
 what are to be considered, in computing profits, 719. 
 
 SALESMEN 
 
 equivocal statements by, 631. 
 
 expenses of, deducted from profits, 718. 
 
 interference with competitor's, 368. 
 
 interference with contracts of, 340. 
 
 misrepresentations by, 631. 
 
 order partly arranged for prior to discharge of, belongs to employer, 314. 
 
 SALIENT FEATURES 
 
 (See SmiLAEiTY), 263, 590. 
 
 SCANDALOUS MATTER 
 
 not registrable, 434. 
 
 SCHOOL 
 
 name of, 158. 
 
 SCIENTER 
 
 (See Intent; also p. 611, note.) 
 
 SCIENTIFIC 
 
 words as names, 90. 
 
 SCRIPT 
 
 names written in, may be registered, 433, 438. 
 
 SECONDS 
 
 sale of, as usual quality, 563. 
 
 SECONDARY MEANING 
 
 a question of fact, 77, 600. 
 
 applied to word in general use, when used in trade sense, 67, 75. 
 
874 Index 
 
 [ References are to pagea ] 
 
 SECONDARY MEANING— Continued. 
 
 attaching not to name but to shape or form, 281. 
 
 definitions of, 67 et seq. 
 
 duration of user necessary to acquire, 207. 
 
 (See Names.) 
 evidence to prove, 596. 
 geographical limits of, 72. 
 general discussion, 66. 
 
 in name acquired by agent of steamship line as against owner of line, 231. 
 may be acquired by words in general use, 75. 
 merely association, 67. 
 
 need not be recognized by all people, or even a majority, 73, 205. 
 of family name, 137. 
 of geographic names, 68, 203, 228. 
 of names, 75. 
 
 identification with plaintiff, 70. 
 
 recognition in locality where business is located or goods sold, 76. 
 of personal names, 137. 
 
 of semi-geographic names, "Hoosier," etc., 230. 
 of trade phrases, 75. 
 
 plaintiff must prove existence of acquired meaning, 70. 
 proof in cases of, 70. 
 
 question of priority, not of wideness of repute, 73. 
 questions involved in, 69, 70. 
 
 rules, a legal recognition of value of business reputation, 67. ' 
 statement of general rule, 67, 68, 69. 
 ten year trade-mark law, 78. 
 title of literary work may acquire, 516. 
 
 SECOND-HAND CONTAINERS 
 
 use of, 255. 
 
 SECRET PROCESS 
 
 no monopoly on goods made by, 358. 
 
 SECRET OF TRADE 
 
 accounting of profits for unfair use of, may be ordered, 314. 
 
 approximation of, and unfair use of name of original, 221. 
 
 assignment of, carries right to protect, 317. 
 
 at common law, 295. 
 
 betrayal of, by employee, 303 et seq. 
 
 conditional sale of goods made by, 299. 
 
 contracts of employment sustain implied agreement not to disclose, 306, 
 
 308. 
 definition, 294, 295. 
 
Index 875 
 
 I References are to pages ] 
 
 SECRET OF TRADE— Continued. 
 
 difference between articles made by, and patented articles, as to regulation 
 of sale of,, 360. 
 
 between sale of secret itself and sale of goods made by use of it, 358. 
 disclosure of, by employee, enjoined, 341. 
 disclosure of, by" employees, 304. 
 
 in court, 301. 
 discovered by employee in course of employment, 304, 309. 
 divulging in confidence, not publication, 300. 
 duty of corporate officers as to, 320. 
 effect of death of owner of, 303. 
 
 employee may not disclose, before or after leaving employer, 309. 
 enjoining breach of contract forbidding disclosure of, 296. 
 essentials of action involving, 313. 
 facts of, are property, 294. 
 form of injunction, 319. 
 French penal statute regarding, 296. 
 information as to where one buys material not a secret, 311. 
 
 obtained by agent may not be afterward employed against principal, 
 312. 
 is it a monopoly? 298. 
 
 knowledge of, obtained unfairly, enjoined, 302. 
 lawful discovery of, 302. 
 letters may be secret property, 321. 
 
 list of customers, fraudulently obtained, may be ordered destroyed, 317, 
 318. 
 
 is a trade secret, 316. 
 name of jobber furnishing goods may be, 314. 
 of trade, transfers of, 315. 
 
 one fraudulently using, may be compelled to account for profits, 314. 
 owner of, may do with it as he likes, 296. ^ 
 
 process, goods made by, once sold, pass beyond control of maker, 358. 
 
 inducing breach of contract for sale of goods made by secret formula, 
 357. 
 procuring breach of contract regulating sale of goods made by, enjoined, 
 
 358. 
 property in, 294, 295. 
 protection of, 296. 
 publication of, effect of, 299. 
 right of owner to regulate and limit those to whom and how goods shall be 
 
 sold, 296. 
 sale of article made by secret formula, not publication of formula, 296. 
 to warrant protection, likelihood of injury to plaintiff from disclosure must 
 
 be shown, 313. 
 transfer of, 64, 315. 
 use of, without disclosure to others, 305. 
 
876 Index 
 
 I BefUences are to pages | 
 
 SECRET OF TRADE— Continued. 
 
 which are unlawful, not protected, 312. 
 
 wrongfully discovered, title to, good against all except owner and assigns, 
 303. 
 
 SELECTOR 
 
 of goods may have trade-mark, 381. 
 
 SELLING 
 
 agents may be parties defendant with manufacturers of offending articles, 
 
 689. 
 expenses of infringing goods may be deducted from profits, 718. 
 
 SEMI-GEOGRAPHIC NAMES 
 secondary meaning of, 230. 
 
 SERIES 
 
 numerals to represent, 106. 
 
 SERVANTS I 
 
 fraudulent acts of, not excused by orders of master against such acts, 624. 
 interference with contracts of, 338. 
 statutes against interference with, 339. 
 
 SHAPE 
 
 (See FoBM.) 
 alone, not a trade-mark, 594. 
 cannot be monopolized, 594. 
 
 combined with other features producing likeness enjoined, 595. 
 imitation of, 591. 
 of bottles, 238, 251. 
 of box, 239. 
 of cigars, 279. 
 of loaf 6f breald, 238, 282. 
 oval, 72, note, 
 similarity in, 594. 
 use of shape of patented article on expiration of patent, 288. 
 
 SHORT NAMES 
 
 for books, 526, note 37. 
 
 SIGNATURES 
 
 copying of unfairly, 247. 
 
 use of, 246. 
 
 use of, without consent of owners, 247. 
 
Index 877 
 
 t Beferenceg are to pages } 
 
 SIGNS 
 
 decree correcting confusing use of, 651. 
 
 fraudulently locating, 110. 
 
 may be definitely associated with one locality, 109, 110. 
 
 of competitors, misuse of, 560. 
 
 on vehicles, 112. 
 
 painting building in peculiar way is a sign, 110. 
 
 right of owner to move a sign from place to place, 109. 
 
 right to use signs already in use, 110. 
 
 similarity in, fraudulent, 110. 
 
 SILENCE 
 
 (See Acquiescence.) 
 does not warrant inference of consent to use by another, 697. 
 
 SIMILAR NAMES 
 
 not registrable, 433, 434. 
 
 instances of, as regards registration, 435. 
 
 SIMILARITY 
 
 care used by average buyer, class of persons using articles, method used in 
 
 selling goods, are to be considered, 585, 586. 
 character of article to be considered, 586. 
 color, mere diversity in, not controlling, 236. 
 colorable imitation often constitutes, 584. 
 comparison of articles not test of, 588. 
 comparison by expert not test of, 584. 
 created without cause or reason, evidence of fraud, 627. 
 deceit of careless buyer not considered, 585. 
 
 of ultimate purchaser is important consideration, 593. 
 definition, 582, 583.' 
 
 degree of, in dress of goods, calculated to deceive, 235. 
 direct comparison of articles themselves not usual test of, 588. 
 distance, between competitors, 592. . 
 does not mean exact likeness, facsimile, 584. 
 efifect of cheapness of article, 588. 
 equity will not define it exactly, 585. 
 evidence of, what is, 581, 582. 
 features common to a trade, 242. 
 
 habits and intelligence of consumers to be considered, 586. 
 in color, shape, size, 594. 
 
 in construction, which is necessary to purpose of article, 89, 591. 
 in necessary physical requirements of article, 591. 
 in packages, boxes, cartons, etc., 250. 
 in shape, 594. 
 in size, 595. 
 
878 Index 
 
 f Beferences are to pages I 
 
 SIMILARITY— Continued. 
 
 must deceive ordinary buyer of article, 582, 585. 
 
 not resulting in unfair competition, 89. 
 
 of corporate names, what is, 187. 
 
 of geographic name, degree of resemblance necessary, 208. 
 
 of name or get-up, presumption of fraud may arise from, 626. 
 
 of names, what is, 187, 595. 
 
 having double meaning, 75. 
 
 as appealing to the eye, 93. 
 of salient features, 263, 590. 
 of single feature or part, 284. 
 of whole article, 278. 
 
 shown by general impression, not comparison in detail, 582. 
 side-by-side comparison in court room not proper final test of, 588. 
 similarity in sound, idem sonans, 93, 95. 
 test of, what is, 582. 
 
 not visual comparison, but memory comparison, 588. 
 
 SIMULATION 
 
 (See Copying.) 
 cases where imitation of goods themselves is sole or essential feature, 275. 
 of articles themselves, 275. 
 of distinguishing features as a whole, 277. 
 of general get-up, 264. 
 of label in which name is principar feature, 261. 
 of salient feature of label, 263. 
 rule as to what amounts to, 235. 
 
 SITE OF BUSINESS 
 
 sale of, effect on" names, 42. 
 
 SIZE 
 
 alone, not a trade-mark, 594. 
 
 cannot be monopolized, 594. 
 
 combined with other features producing likeness, enjoined, 594. 
 
 injunction against use of, 652. 
 
 similarity in, 594. 
 
 SKILL 
 
 right to advertise, on sale of busness, 56. 
 
 SOCIETIES 
 
 unincorporated, names of, 186. 
 
 " SOLE AGENT " 
 
 use of term, 686. 
 
Index 879 
 
 [ Beferences are to pages ] 
 
 " SOLE PROPRIETOR " 
 
 misuse of term, 551. 
 
 SOLICITATION 
 
 of customers, 51, 558. 
 
 SOLICITOR 
 
 sale of business by, 54. 
 
 SOURCE 
 
 geographical names which indicate, 228. 
 name indicating falsely, 208, 681. 
 numerals indicating, 105. 
 
 SPRING 
 
 natural, right to name on sale of, 43, 217. 
 
 STATE LAWS 
 
 as to corporate names, 163. 
 
 STATUTE 
 
 "Printers Ink" model statute, 634. 
 
 STATUTES 
 
 Trade-mark Act of 1870, 426. 
 1881, 426. 
 February 20, 1905, 426, a seq. 
 
 STIPULATION 
 
 as to plaintiff's future conduct may be required on preliminary hearing, 644. 
 
 STOCKHOLDER 
 
 (See Corporate Names.) 
 not proper parties defendant in action against corporation, 639. 
 outgoing, rights of, 183. 
 retiring, right to solicit customers, 51. 
 
 right of, in corporation bearing his name, to use name after sale of stock, 51. 
 rights of retiring stockholders to corporate name, 50. 
 rights of stockholder in company bearing same name, 183. 
 use of name of, in name of corporation, limits to, 177, 182. 
 
 STOCK 
 
 articles in common use, use of, 244. 
 bottles, use of, 244. 
 containers, use of, 239. 
 labels, 549. 
 nicknames, use of, 246. 
 
880 Index 
 
 I Beferences are to pages ) 
 
 STONE ALE 
 case, 139, 197. 
 
 STORIES AND BUILDINGS 
 dress of, 110. 
 
 fraud in location of, 259, 651. 
 (See Buildings.) 
 
 STREET 
 
 addresses, 112. 
 
 STYLE OF GOODS 
 
 numerals to represent, 106. 
 
 SUBSTITUTION 
 
 of inferior goods for better goods in marked containers, 256. 
 of names may create secondary meaning, 71 note. 
 
 « SUCCESSOR TO " 
 
 use of term, 86. 
 
 SUFFIXES, ETC. 
 use of, 114, 159. 
 
 SUMMARY 
 
 of English cases re power of equity to enjoin libel, 477. 
 
 SURNAME 
 
 (See Family Name.) 
 acquired otherwise than by descent, 149. 
 qualified by other words or symbols, 148. 
 rights of first user of, 152. 
 unfair use of, cured by use of full name, 125. 
 used as abbreviation, 146. 
 
 SUSPICION 
 
 that defendant may commit unfair act not basis of injunction in trade 
 secret cases, 313. 
 
 TABLET 
 
 of medicine, copying form of, 239. 
 
 TAGS 
 
 similarity in, 249. 
 
 TECHNICAL TRADE-MARK RIGHTS 
 
 territorial extent of, 417. 
 
Index 881 
 
 [ Beferences are to pages ] 
 
 TECHNICAL TRADE-MARKS 
 
 acquisition of, 409. 
 essential elements of, 379. 
 features of dress of goods as, 380. 
 what are, definitions, 373, 374. 
 (See Tbade-Makks.) 
 
 TELEPHONE NUMBER 
 
 unfair use of, 56. 
 
 TEMPORARY 
 
 relief pending trial, 642. 
 
 TEN YEAR XAW 
 
 purpose of, 445. 
 protection afforded by, 446. 
 
 THEATRE 
 
 good-will of, 32. 
 
 right of lessee of, to use name of, 45. 
 
 THIRD ^ARTY 
 
 acts rendered possible through, 548. 
 
 defense that plaintiff has acted unfairly to, 669. 
 
 injunctions against, 549. 
 
 interference with contracts by, 336. 
 
 liable only when guilty of unfair means, 352. 
 
 passing off goods of a, 561. 
 
 rights of, in name, 121. 
 
 transfer of right to use one's surname to, 150. 
 
 THREATENED 
 
 acts may be enjoined before any overt is committed, 639. 
 
 THREATS 
 
 circulars threatening customers made with intent to intimidate, not to 
 fairly warn them, 488, 493. 
 
 injunction against, 482, 494. 
 
 made to competitors' customers of suits against them or the competitor, 369. 
 
 must they accompany acts of interference with contract? 341. 
 
 of prosecution, 491. 
 
 of prosecution, theory that proof of must exist to warrant issuance of in- 
 junction against libel or slander, 491. 
 
 of suit, interference with contract by, 488. 
 
 presumed fraudulent if not followed up by suit, 494. 
 
882 Index 
 
 ( Beferences are to pages 1 
 
 TIME 
 
 lapse of, which shows abandonment, 695. 
 presumption of continuance of, 604. 
 
 TITLE 
 
 defense that title of plaintiff is not established, 668. 
 of book is descriptive, 513. 
 
 may acquire secondary meaning, 516. 
 of plays, unfair competition in connection with, 528. 
 
 TOBACCO 
 
 tags, 249. 
 
 TORTS 
 
 justification in, what constitutes, 329. 
 mahce, 328, 329. 
 privilege, 329. 
 
 TRADE 
 
 interference with, unlawful, 12. 
 
 libel and personal libel, difference between, 477. 
 
 libels not libelous per se, 496. 
 
 or business, resemblance in features common to, 242. 
 
 right to, not an absolute one, 11. 
 
 TRADE-MARK ACT 
 
 federal, annotated, 426 et seq. 
 
 TRADE-MARK LAW 
 
 a development of the common law, 423. 
 Ten- Year Trade-Mark Law, 78, 441-442. 
 unfair competition not a subdivision of, 1. 
 
 TRADE-MARK LEGISLATION 
 
 history of, 426. 
 
 TRADE-MARK RIGHTS 
 
 arising in connection with, 512. 
 
 in literary property same as trade-mark in connection with any other mer- 
 chandise, 512. 
 plaintiff must establish right to exclusive use in case involving, 118. 
 sale and hcense of, 45. 
 will not accrue if goods not on the market, 415. 
 
 TRADE-MARKS 
 
 acquisition of technical, 409. 
 adoption of, 411. 
 
Index 883 
 
 [ Beferences are to pages ] 
 
 TRADE-MARKS— Continued. 
 
 advantages of registration of, 424. 
 
 an article may have more than one, 382. 
 
 assignments of, 454. 
 
 as sign of identity, 46. 
 
 assignment of, without transfer of business, may be valid, 43. 
 
 cancellation by court in equity suit, 464. 
 
 cannot ordinarily be transferred without business, 46. 
 
 change in manufacture of goods affects, 410. 
 
 characteristics of, 46. 
 
 claimant of, need not necessarily be first user, 413. 
 
 classification of, 386. 
 
 consisting of names only, 438. 
 
 deceptively similar, 435. 
 
 definitions of, 374, 375. 
 
 descriptive words and devices, 438. 
 
 descriptive words not appropriable as, 392. 
 
 difference between non-descriptive words and words in public domain, 411, 
 
 415. 
 different, for different grades of same article, 383. 
 differ from labels only in name, 235. 
 
 from trade names, 386, 389. 
 distinctive script, 438. 
 do not confer or imply monopoly, 379. 
 effect of act on, 464. 
 evidence as to use of a, 606. 
 first user of, rights of, 620. 
 foreign words, 405. 
 fraudulently used, 463. 
 functions of, 376. 
 general principles, 373. 
 geographical or place names, 399. 
 geographical extent of rights in, 74. 
 how they may be acquired, 410. 
 included in unfair competition, 388. 
 in connection with portraits, 438. 
 indicating selector, not maker, 381. 
 instances of words denoting quality and not available as, 398. 
 
 descriptive, invalid as, 392. 
 
 fanciful, valid, 396i 
 
 geographical, invalid as, 400. 
 
 suggestive, valid, 393. 
 
 words in common use used in arbitrary sense, 397. 
 law of, and law of unfair competition, difference between, 23, 24, 388. 
 law of, is specialized branch of law of unfair competition, 23. 
 letters of the alphabet, 406. 
 
884 Index 
 
 I Beferences are to pages ] 
 
 TRADE-MARKS— Continued. 
 may be badge of quality, 377. 
 may be created by public usage, 378. 
 must be affixed to goods, 383. 
 must not be against public policy, 384. 
 name of applicant, 438. 
 nature of, 377. 
 
 no difference between, and trade names, as regards rights required, 17. 
 non-essentials of, 380. 
 numerals as, 407. 
 
 on goods of same descriptive quality, 436. 
 personal or family names as, 403. 
 principles involved in action for protection of common-law trade-mark 
 
 distinguishable from those in action for unfair competition, 120. 
 priority of use as against priority of invention, 412. 
 products to which they may be applied, 381. 
 property in, recognized in 1838, 25. 
 property rights in, 388. 
 
 protection limited to goods of the same class, 420. 
 relation of good-will to, 35. 
 registration not essential to validity of, 380. 
 registration of, fraudulently procured, 465. 
 rights of foreigners as to, 410, 431. 
 symbol of good-will, 378. 
 technical, essential elements of, 379. 
 test as to whether public likely to be misled, 420. 
 territorial extent of rights in, 417 et seq., 427. 
 under Ten Year Law, 444. 
 unregistrable, 432. 
 
 use of geographic names as, must be truthful, 226. 
 value of, measured by extent of celebrity, 74. 
 what may be appropriated as, general principles, 391. 
 who may acquire a, 409. 
 who may oppose registration of, 448. 
 words likely to deceive purchasers, 437. 
 
 TRADE NAMES 
 
 definition, 374. 
 
 difference between abstract names of objects and, 81. 
 
 difference between law of, and law of unfair competition, 23, 24. ' 
 
 differ from trade-marks, 76, 386, 389. 
 
 general principles, 79. 
 
 geographical names may be arbitrarily adopted as, 223. 
 
 goods can have more than one, 101. 
 
 libel and slander of, 470. 
 
 no difference between, and trade-marks as regards rights acquired, 17. 
 
Index 8§5 
 
 ( Beferences are to pages 1 
 
 TRADE NAMES— Continued. 
 
 place names are governed by same rules as other, 226. 
 street addresses, etc., 112. 
 summary of rules relating to law of, 81, 82. 
 transfer of. 
 
 (See Transfer.) 
 
 TRADE PHRASES 
 
 secondary meaning of, 75. ' 
 
 TRADE RIGHTS 
 
 geographical extent of, based on priority, 28. 
 
 TRADE SECRETS 
 
 and confidential relations. 
 (See List, p. 294.) (See SECRBra.) 
 
 TRADE TALK 
 
 misrepresentation in, 691. 
 
 TRADE UNION 
 
 inducing strike by, 354. 
 
 TRADING STAMPS 
 
 interference with contracts regarding, 361. 
 
 TRANSFERS 
 
 by attorney of practice, 54. 
 
 by originator of article or business, 56. ~ 
 
 by partners, 51, 57. 
 
 good faith required in, 46, 175. 
 
 in bankruptcy and assignments for creditors, 48. 
 
 name not assignable in gross, 44. 
 
 name or mark may not be sold separate from article to which it is attached, 
 
 43. 
 no one has a right to transfer his surname for use that is unfair, 150, 175, 176. 
 of a business, 153 et seq. 
 
 of business by one using trade name of another under contract, 47. 
 of business, effect of locality on, 57. 
 
 of business site, right of buyer to use name of place as trade-mark, 45. 
 of business site, effect of, on names, 42. 
 of names. 
 
 (See Sale.) 
 of names and marks by descent, 62. 
 of name to third person, 150. 
 of place name used as name of goods when place itself is sold, 43. 
 
886 Index 
 
 [ Beferences are to pages ] 
 
 TRANSFERS— Continued, 
 of portraits, 47. 
 of secrets, 64, 315. 
 of secret by assignment, carries right to protect it, 315. 
 
 TRANSPORTATION COMPANIES 
 
 contracts with, 343. 
 
 TREASURY DEPARTMENT 
 registration in, 466. 
 
 TRIVIAL ACTS 
 
 coiu^ does not notice, 668. ^ 
 
 TRUTH 
 
 defense that defendant's representations are true, 663. 
 equity will not enjoin against telling, 664. 
 must be told honestly, 664. , 
 
 presumption of fraud from manner in which it is told, 631. 
 told fraudulently, 664, 
 
 « UNCLEAN HANDS '» 
 defense of, 577, 670. 
 
 UNFAIR ACTS 
 
 acts contributory to, 548. 
 
 done abroad, jurisdiction of United States Circuit Court over, 637. 
 
 not all, actionable, 2. 
 
 of competitor may be basis of court action, 35. 
 
 tend to do away with competitors, 332. 
 
 UNFAIR COMPETITION 
 
 acquiring corporate stock for purpose of, 568. 
 
 action, grounds of, 17, 18, 284. 
 
 action for, is based on injury to plaintiff, not on intent of defendant, 623. 
 
 acts contributory to unfair acts, 548. 
 
 actual injury to plaintiff must be imminent for action for, 624. 
 
 analogy between action for, and infringement of copyright, 513. 
 
 and similarity, 89. 
 
 and trade-mark cases, difference between, 23, 24, 388. 
 
 awnings, misuse of, 88. 
 
 cases, remedies now ^ven often inadequate, 136. 
 
 confusing uses of term by courts, 647. 
 
 concurrence deloyale, French name for doctrine, 16. 
 
 court seeks to protect good-will in cases >f, 35. 
 
 damages in suits at law for, 734. 
 
Index 887 
 
 I Bererences are to pagea ] 
 
 UNFAIR COMPETITION —Continued, 
 recoverable in cases of, 711. 
 definitions of, 12, 31, 174, 547. 
 differs from technical trade-marks, 23. 
 distinction between, and infringement of trade-mark, 387. 
 division of cases as regards intent, 610. 
 doctrine of, as applied to literary property, 514. 
 does not curtail freedom of honorable trading, 11. 
 does not involve violation of any exclusive right, 2. 
 early cases of, 4. 
 
 exclusive right to name or mark not necessary to action for, 2, 26. 
 failure of "explanatory phrase" method of relief, 634. 
 false statements re competitor, 486. 
 forms of, 2. 
 
 foundation principle of, 3. 
 fundamental rule of, 12. 
 good-will protected by law of, 36. 
 
 grounds of action for, may be protection of individual and of public, 18. 
 grounds for injunction, 19. 
 growth of doctrine, 6. 
 includes trade-mark, 388. 
 in connection with books and book titles, 517. 
 in the use of literary property, 507. 
 is a question of misrepresentation, 10, 15. 
 jurisdiction of courts in cases of, 636. 
 law of, foundation of, 3. 
 legal basis of action for, 17. 
 liability of oflBcers of corporation in action for, 637. 
 miscellaneous and new forms of, 547 et seq. 
 misconception of meaning and scope of doctrine of, 1. 
 name "unfair competition" new, not the doctrine, 11. 
 not a subdivision of trade-mark law, 1. 
 
 not confined to acts directed against owners of trade-marks, 2. 
 not established by proof of similarity in form or general appearance alone, 89. 
 not included in term "trade-mark," 1. 
 omission of name from directory, 487. 
 passing off, English name for doctrine, 2. 
 pasting together pages of almanac containing rival's advertisements, 
 
 487. ■ 
 printing advertisement in telephone book out of alphabetical order, 487. 
 proof of, 89. 
 
 property rights in, 23, 26. 
 right of action depends on question of fact, 3. 
 suits are founded upon damage to trade of complainant,' 27. 
 tendency of present growth of doctrine, 5. 
 theory that in these cases court acts to protect honest and fair dealing, 18. 
 
888 Index 
 
 [ References are to pages ] 
 
 UNFAIR COMPETITION— Continued. 
 
 that in these actions court aims to protect purchasing public, 18, 19. 
 that in these actions court aims to protect, not public, but individual 
 
 rights, 18, 21'. 
 that court aims to protect association between name and user of it, 120. 
 to constitute, features imitated must distinguish plaintiff's goods from others, 
 
 242. 
 unfair comparison of prices, 568. 
 use of nickname of competitor in advertisements, 100. 
 where use of cut prices accompanies unfair or inaccurate description of 
 goods, 567. 
 
 UNFAIR MARKS 
 
 use of, 2. 
 
 UNFAMILIAR 
 
 words as names, 90. 
 
 UNINCORPORATED SOCIETIES. ETC. 
 
 names of, 186. 
 
 UNKNOWN MAKERS 
 
 secondary meaning, rights of, 77. 
 
 UNLAWFUL 
 
 secrets not protected, 312. 
 
 USE. (See Peiority.) 
 
 length, extent and manner of, 414, 415. 
 
 of false advertising, 556. 
 
 of letters, circulars, etc., constituting boycott, 486. 
 
 of prices as decoy, 565. 
 
 to inflict definite injury on a competitor, 564. 
 of sign or word must not be against public policy, 384. 
 presumption of, 607. 
 priority in, 412, 413. 
 
 technical trade-mark must be actually used upon the goods, 380. 
 unfair use of prices as means of competition, 567. 
 
 USELESSNESS 
 
 of plaintiff's goods no defense, 669. I 
 
 USER 
 
 does not always create right in name, 108, note. 
 
 duration of, necessary to acquire secondary meaning, 207. 
 
 duty resting on the newcomer in a commercial field to the older concern 
 
 using the same name, 620. 
 effect of, on name, 7, 8. 
 
Index 889 
 
 I Beferences are to pages ] 
 
 USER— Continued. 
 
 first user of mark, rights of, 620. 
 
 may cause surnames to become abstract names, 143. 
 
 no distinction between names and marks as regards user, 17. 
 
 time of, necessary to acquire priority, 180. 
 
 universal knowledge of, not required as to geographic names, 205. 
 
 VALUATION 
 
 of good-will, 65. 
 
 VALUE 
 
 of names, 76. 
 
 of property rights, 25. 
 
 of reputation and credit of business men, 471. 
 
 of trade-mark in its salient features, 94. 
 
 of trade-marks measured by extent of celebrity, 74. 
 
 VEHICLES 
 
 signs on, 112. 
 
 VENDOR 
 
 competition of, with vendee after sale, 38, 40, 49. 
 
 of a newspaper, 57. 
 
 of names, etc., good faith required of, 46. 
 
 (See Tbansfer and Sale.) 
 rights of, on sale of entire business, 38, 58 et seq. 
 
 VOLUNTARY 
 
 change of personal name, 151. 
 
 WAGONER 
 
 good-will of, 34. 
 
 WAGONS 
 
 dress of, 110. 
 fraudulent get-up of, 257. 
 
 WARNING TO DEFENDANT 
 
 against infringements, etc., 494, 495. 
 effect of, 613. 
 
 WHOLESALERS 
 
 procuring breach of contract to sell only to specified retailers, 356. 
 
 WORD 
 
 common words used in arbitrary sense, 397. 
 foreign, as trade-mark, 405. 
 
890 Index 
 
 I Beferences are to pages ] 
 
 WORD— Continued. 
 
 indicating quality, superiority, etc., 398. 
 
 in general use, when used in trade sense, trade-mark rights rest on sec- 
 ondary meaning, 67. 
 invented or fanciful, 396. 
 separation of name into two or more words, effect of, 669. 
 
 WORKMEN 
 
 (See Emplotees.) 
 
 WORKS 
 
 or factories, good-will of, 32. 
 
 use of term by incorporated company, 181. 
 
 WORTHLESSNESS 
 
 of plaintiff's goods no defense, 669. 
 
 WRAPPERS 
 etc., 241, 250. 
 
 (See List, p. 233.) 
 printing on, fraudulent, 271, 272. 
 rules of similarity of, 250. 
 
 WRAPPING OF GOODS 
 
 this may be fraudulent, 248. 
 
 " & CO. » 
 
 use of abbreviation, 114.