5 ! ) I KF3178.P9Ti e 887 VerSi,yLlbrary A lwSmmnS k cases decided b v »* 3 1924 019 300 387 Cornell University Library The original of this book is in the Cornell University Library. There are no known copyright restrictions in the United States on the use of the text. http://www.archive.org/details/cu31924019300387 american Trade-Mark Cases DECIDED BY The Courts of the United States, both State and Federal, and by the Commissioner of Patents, AND REPORTED BETWEEN 1879 and I 887- WITH AN Index Digest of the Cases Published. BY BENJAMIN PRICE and ARTHUR STEUART, OF THE BALTIMORE BAR. BALTIMORE: CUSHINGS & BAILEY, LAW PUBLISHERS. I887. Entered according to Act of Congress, in the year 1887, by BENJAMIN PRICE and ARTHUR STEUART, In the Office of the Librarian of Congress, at Washington. 3)7$ t%$7 PRINTED BY WILLIAM K. BOYLE & SON, BALTIMORE. PREFACE. This book contains a collection of cases covering a period of ten years within which the law relating to trade-marks has received much attention from the Courts, and the principles thereof have been simplified. We may venture to express a hope that this collection of the late cases arranged as nearly as practicable in the order of their date, and containing learned discus- sions upon the law relative to trade-marks in nearly all its branches, may assist the profession and the Courts in working out the problems submitted to them. The cases have been gathered from over one hun- dred and fifty volumes, many of them inaccessible to the practitioner. Much care has been taken to pre- pare and arrange head notes to make them full and further to assist the readers, the numerals placed in front of the notes refer to corresponding numerals in the body of the decision where the subject-matter of the head note will be found. The book has been pre- pared during active practice and at such spare times iv PREFACE. as could be given to it, we request therefore the in- dulgence of the profession for errors and omissions. This volume forms a link in the chain of collected decisions upon trade-marks of the Court of the United States, two volumes of which have been published by Mr. Rowland Cox, Cox's American Trade-Mark Cases and Cox's Manual of Trade-Mark Cases. The last one was published in 1879. We take up the cases where he left off. A digest of trade-mark cases was also published in 1879 by Mr. Coddington. The digest at- tached to this volume covers the period from the date of that publication to the present time. INDEX ~No. Case. Page. ii. Actien Gesellschaft Apollinaris Brunnen vs. Somborn, 61 92. Adriance, Piatt & Co., Ex Parte 577 86. American Grocer Publishing Co. vs. Grocer Publish- ing Co 546 177. American Solid Leather Button Co. vs. Anthony, Cowell & Co '.- 1105 in. Ames, Ex Parte 722 165. Anheuser Busch Brewing Association vs. Clarke 1052 148. Anheuser Busch Brewing Association vs. Piza 952 170. Apollinaris Co. vs. Scherer i°75 167. Atlantic Milling Co. vs. Rowland, et al 1063 137. Atlantic Milling Co. vs. Robinson, et al. 904 117. Avery & Sons vs. Meikle & Co - 753 4. Ayers, et al. vs. Rushton.... 15 10. Blackwell &: Co. vs. Dibrell & Co 39 78. Brigham, Ex Parte 474 131. Buckland vs. Rice, et al. 864 134. Bunker, et al. vs. Kenna, et al 883 103. Burton vs. Stratton, et al 668 21. Caire's Appeal.. 116 161. Carbolic Soap Co. vs. Thompson, et al 1033 56. Carroll vs. Ertheiler 353 114. Clemens vs. Belford, Clark & Co 733 104. Collins Co. vs. Oliver Ames & Sons Corporation 679 41. Collins vs. Reynolds Card Manufacturing Co 262 54. Connell, et al. vs. Reed, et al. 347 52. Conrad vs. Joseph Uhrig Brewing Co 316 35. Consolidated Fruit Jar Co., Ex Parte 209 VI INDEX. No. 'Case. Page. 1 6. Dausraan and Drummond Tobacco Co. vs. Ruffner, et al. .'. 9° 174. Davis vs. Davis, et al... 1092 151. De Kuyper, et al. vs. Witteman, et al. 965 119. Desmond's Appeal 794 74. Dixon Crucible Co., Joseph vs. Benham 446 70. Dreydoppel vs. Young, et al. 423, 121. Eggers vs. Hink 809 116. Electro-Silicon Co. vs. Hazard, et al. 745 61. Electro-Silicon Co. vs. Levy 370 55. Electro- Silicon Co. vs. Trask 350 14. England, Assignee, vs. New York Publishing Co., et al. 77 31. Enoch Morgan's Sons' Co. vs. Hunkele 176 12. Enoch Morgan's Sons' Co. vs. Schwachofer 63 26. Enoch Morgan's Sons' Co. vs. Troxell, et al 140 100. Enoch Morgan's Sons' Co. vs. Troxell, et al 628 147. Estes, et al. vs. Belford, Clarke & Co., et al. 949 172. Estes, et al. vs. Leslie, et al 1085 182. Estes, et al. vs. Leslie, et al n 1 139. Estes, et al. vs. Williams, et al. 915 150. Estes, et al. vs. Worthington 962 5. Fairbanks, and others vs. Jacobus 21 84. Fairchild, Ex Parte 537 68. Farnum & Co., Ex Parte 409 180. Fay's Administrators vs. Fay 1125 23. Filley vs. Child 122 85. Fleischmann vs. Schuckmann 541 158. Fleischmann, et al. vs. Starkey 993 9. Frese & Co. vs. Bachof. ^ 87. Frieberg & Workham, Ex Parte 55^ 95. Funke vs. Dreyfus & Co., et al. 594 175. Gail, et al. vs. Wackerbarth, et al 109& 105. Ginter vs. Kinney Tobacco Company, et al ' 694 149. Glen Cove Manufacturing Co. vs. Ludeman gey INDEX. vil Ho. Case. Page. 63. Godillot vs. Harris, et al. 384 24. Godillot vs. Hazard, et al 128 141. Goodyear Rubber Co. vs. Goodyear's Rubber Mfg. Co 920 34. Halliday Bros., Ex Parte 206 44. Hanford, et al. vs. Westcott, et al -. 273 6. Harrington vs. Libby ' 25 17. Hazard vs. Caswell and Massey 95 64. Hegeman & Co. vs. Thomas & O' Byrne 390 72. Hewer vs. Dannenhoffer, et al. 433 58. Heyman, Ex Parte 361 73. Hier, et al. vs. Abrahams, et al 438 154. Hill vs. Lockwood, et al 977 156. Holt, et al. vs. Menendez, et al. 986 130. Horton Manuf'g Co., N. Y. vs. Horton Manuf g Co., Ind 857 96. Hostetter, et al. vs. Adams, et al. 605 122. Hostetter, et al. vs. Fries, et al 713 109. Humphrey's Specific Homeop. Medicine Co. vs. Wenz 713 18. Hurricane Patent Lantern Co. vs. Miller & Co., et al. 104 32.. India Rubber Co. vs. Rubber Comb and Jewelry Co. 179 79. Insurance Oil Tank Co. vs. Scott 477 112. Jacoby, et al. vs. Lopez, et al. 726 91. Julian vs. Hoosier Drill Co., et al 367 42. Kidd vs. Johnson 266 125. Kipling, Ex Parte 837 113. La Croix vs. May, et al 731 7. La Societe Anonyme, &c. vs. Baxter, and others 27 135. Landreth, Ex Parte 887 89. Larrabee & Co. vs. Lewis 560 107. Lauferty vs. Wheeler, et al. 700 69. Lawrence Manufacturing Co. vs. Lowell Hosiery Mills, et al , 418 Vlll INDEX. No. Case. Pa S e - 22. Lea, et al. vs. Deakin n° 142. Leclanche Battery Co. vs. Western Electric Co 929 157. Leclanche Battery Co. vs. Western Electric Co 990 127. Lee & Shepard, Ex Parte 845 155. Lehigh Valley Coal Co. vs. Hamblen, et al 983 20. Leidersdorf, et al. vs. Flint 109 71. Leidersdorf, et al. vs. Flint 427 47. Lichtenstein vs. Mells Bros 288 136. Liggett & Myer Tobacco Co. vs. Hynes 898 97. Lorillard & Co. vs. Drummond Tobacco Co., et al... 612 179. Lorillard, et al. vs. Pride 1117 115. Lorillard, et al. vs. Wight 739 no. Low, et al. vs. Hart 717 140. Luyeties, et al. vs. Hollender, et al. 918 138. Lyon, Dupuy & Co., Ex Parte 907 118. Manhattan Medicine Co. vs. Wood, et al 783 39. Manufacturing Company vs. Trainer 224 82. Marshall, et al. vs. Pinkham 497 166. McCann, et al. vs. Anthony i°S4 2. McNair, et al. vs. Cleave, et al. 6 153. McVeagh, et al. vs. Valencia Cigar Factory, et al.... 970 169. Meyer vs. Devries, et al. 1070 133. Morgan, et al. vs. Rogers 878 3. Morse vs. Worrell 8 108. Mrs. G. B. Miller & Co. Tobacco Manufactory vs. Commerce 704 129. New Haven Patent Roll, Spring Bed Co. vs. Farren, et al 854 123. Oakes vs. Tonsmierre, et al 817 59. Oliver, Ex Parte ,g, 163. O'Rouke vs. Central City Soap Co 1043 57. Ottoman Cahvey Co. vs. Dane, et al oc% 37. Pace, Talbot & Co., Ex Parte 216 83. Pepper vs. Labrot, et al. cjc INDEX. IX So. Case. Page. 178. Portuondo vs. Monne, et al 11 15 62. Potter, et al. vs. McPherson, et al 376 173. Pratt Manufacturing Co. vs. Astral Refining Co., et al 1088 25. Roberts vs. Sheldon, et al 134 28. Robertson vs. Berry, et al. 153 162. Royal Baking Powder Co. vs. Davis, et al 1037 15. Royal Baking Powder Co. vs. Mason, et al 86 66. Royal Baking Powder Co. vs. McQuade, et al 401 128. Royal Baking Powder Co. vs. Sherrill, et al 847* 48. Royal Baking Powder Co. vs. Sherrill, et al 291 1. Royal Baking Powder Company vs. Royal Baking Company 1 168. Royal Baking Powder Co. vs. Vouwie, et al 1065 160. Rogers & Bro. vs. C. Rogers & Bros 999 99. Rogers Manfg Co., William vs. Rogers and Spurr Manf'g Co 621 164. Sanders vs. Jacob 1048 49. Sawyer vs. Horn , 294 81. Sawyer vs. Kellogg , 493 90. Sawyer vs. Kellogg 564 176. Schumacher & Ettlinger vs. Schwenke, ct al 1098 8. Seabury and Johnson vs. Grosvenor 29 106. Selchow, et al. vs. Baker, et al. 697 [24. Selchow, et al. vs. Baker, et al. 826 [32. Siegert, et al. vs. Abbott 867 65. Shaver vs. Shaver, et al 392 toi. Shaw Stocking Co. vs. Mack, et al. 639 33. Sheppard & Co. vs. Stuart, et al. , 193 19. Simpson vs. Wright & Bro 107 13. Singer Manufacturing Co. vs. Larsen 73 98. Singer Manufacturing Co. vs. Riley, et al. 614 75. Singer Manufacturing Co.- vs. Stanage 450 77. Skinner, et al. vs. Oakes, et al 461 88. Smith vs. Sixbury 557 38. Sorg vs. Welsh 220 X . INDEX. No. Case. Va.se. 152. Stachelberg, et al. vs. Ponce 9^7 60. Straiton & Storm, Ex Parte 366 80. Strasburger & Co., Ex Parte 4 88 159. Southern White Lead Co. vs. Cary, et al 996 181. Symonds vs. Greene, et al 1192 120. Taper-sleeve, &c. of Penna. vs. Taper-sleeve, &c. of Iowa 801 94. Tetlow vs. Savournin 59 z 76. Thorton, et al. vs. Crowley 455 93. United States, ex rel. &c. vs. Marble 582 45. United States vs. Roche 278 40. United States vs. Steffens 242 51. Van Biel vs. Prescott, et al. 314 43. Washburn & Moen Manufacturing Co. vs. Haish 270 67. White vs. Schlect 404 171. Wiesel, Ex Parte 1082 126. Willcox & Gibbs' Sew. Mach. Co. vs. The Gibbens Frame 840 30. Williams, et al. vs. Adams, et al 172 102. Williams, et al. vs. Brooks, et al. 654 46. Woodman vs. United States 282 29. Wright, et al. vs. Simpson 166 27. Young vs. Jones Bros. & Co 15a INDEX OF CASE TITLES. No. Case. "A.J. Bowen" Case 87 "Adriance, Piatt & Co." Case 92 "Albany Beef" Case m "Alderney Manufacturing Co." Case , 107 ' 'American Grocer ' ' Case 86 ' ■' American Solid Leather Button ' ' Case 177 ' 'Amoskeag ' ' Case 39 "Angostura Bitters" Case , 132 "Anti- Washboard Soap" Case 163 Apollinaris vs. Apollinis 11 "Atzvood's Vegetable Bitters" 118 1 Plow ' ' Case 117 ' ' Barbed Wire Fence ' ' Case 43 "Bayard Tobacco Label" Case 37 Beer Label with Red Band 165 ' 'Best Brewing Company ' ' Case 45 ' 'Black Swan ' ' Case 21 "Blackwell Durham Tobacco" Case 10 "Boker's Bitters" Case 95 "Brown Windsor Soap" Case ; ■ no ' 'Budweiser Beer ' ' Case 52 "Buck Cigar" Case 153 ' ' Capcine Plaster ' ' Case 8 "Champion Flour" Case 137 11 INDEX OF CASE TITLES. No. Case. Champion Flour ' ' Case x 6 7 Charter Oak ' ' Case 2 3 Chatterbox ' ' Case 1 39 Chatterbox' ' Case 1 4 7 Chatterbox ' ' Case 1 5 ° Chatterbox'' Case i7 2 Chatterbox' ' Case 182 Cherry Pectoral" Case 4 Chestnut Grove Whiskey ' ' Case 44 Clysmic Water ' ' Case 154 Collins &* Co." Case -.. 104 Colored Tin Tag ' ' Case 115 Conserves Alimentaires" Case .- 63 Cresylic Ointment" Case 161 Cross-Bar Tobacco ' ' Case 16 Crystalline ' ' Case 123 De Kuyper Label ' ' Case 151 Design Patent ' ' Case 127 Dixon Stove Polish" Case 74 Dr. Hayncs' Arabian Balsam ' ' Case 133 Dreydoppel' s Borax Soap" Case 70 Drum Collar" Case 67 Eagle and Mortar" Case 64 East India Remedy ' ' Case 54 Electro-Silicon ' ' Case 55 Electro-Silicon ' ' Case 116 Electro-Silicon" vs. "Nevada Silicon" 61 Established 1780" Case 7 1 Eureka Packing ' ' Case 181 Excelsior Stove ' ' Case 33 INDEX OF CASE TITLES. Xlll No. Case. "Fairbanks' Scale ' ' Case 5 "Fair child'" Case 84. ' ' Fay's Patent Roofing ' : Case 1 80 "523" Case 69 ' ' Frank Leslie ' ' Case 14 ' ' G. Sewing Machine Frame " 126 ' ' Galaxy ' ' Case 2- "Goodyear Rubber Co." Case 145 "■Goodyear Rubber Co." Case .- i4r "Hagerstown Almanack" Case 28' ' 'Hamburg Tea ' ' Case 9 "Henry Lee Cigar" Case .^ 176- "Hoosier Drill" Case 91 ' 'Horton Manufacturing Co." Case 130 ' 'Hostetter Bitters Extract ' ' Case 122 "Hostetter's Bitters" Case 96 ' 'Httnyadi Janos ' ' Case ,. 170 ' 'Hurricane Lantern ' ' Case 18 "L X L Auction Store ' ' Case 47 "Lnsurance Oil" Case 79 "Lnvigorator Spring Bed" Case 58 1 'Julienne ' ' Case 24 ' 'Kollerina Label" Case 171 1 'La Favorita ' ' Case 156 "La Normandi" Case 152. "Lancaster and a Rose" Case 68 ' 'Landreth Peas ' ' Case 1 46 xiv INDEX OF CASE TITLES. No. Case. 4 'Leclanche Battery " Case z 4 2 "Leclanche Battery 1 ' Case I S7 "Lehigh Valley Coal Co." Case ■•■ J 55 < 'Liggett t5r* Myer' s Star Tobacco ' ' Case 138 "Lone Jack" Case 56 "Magnolia Whiskey" Case ; 4 2 4 'Magnetic Balm ' ' Case 88 4 'Maizena vs. Maizharina " 149 4 'Mark Twain" Case 114 4 'Mason's Fruit Jar" Case , 35 4 'Moodie Label" Case 143 4 'Mrs. Mills' Cream" Case 36 4 'National System of Penmanship" Case 62 "Navy Tobacco" Case 175 "New York Dental Rooms" Case 164 4 'Nigger Hair Smoking Tobacco" Case 71 Numbers of Homeopathic Specifics 109 ' ' Old Coon vs. Old Bachelor ' ' ■ Case 166 ' ' Old Oscar Pepper Distillery ' ' Case 83 "Ottoman Cahvey Company" Case 57 4 ' Oxide of Zinc ' ' Case 7 "Parabola " Case „ 25 4 'Patent Spring Bed' ' Case 12 o ' 'Peter Oakes Candy ' ' Case ,■ 1 2 ? 4 'Peter Oakes" Case '. 77 "Philadelphia Beer Barrels" Case 12 i "Pond Lily Wash" Case 29 4 ' Pratt's Astral Oil" Case I73 "Pride Cigar ' ' Case » *, 4 'Puck Cigar" Case II2 INDEX OF CASE TITLES. XV No. Case. Raleigh ' ' Case 59 Railway Time-Keeper" Case 80 Red Bag" Case 135 Red and Yellow Soap Label" Case 174 Registration Fee" Case , 46 Rising Sun vs. Rising Moon 2 'Rogers ' ' Case " 160 'Rogers Silverware ' ' Case 99 'Royal Flavoring Extract ' ' Case 48 'Royal Extract" Case 128 'Royal Baking Powder ' ' Case 1 'Royal Baking Powder ' ' Case 15 'Royal Baking Powder ' ' Case 50 'Royal Baking Powder" Case: 162 'Royal Baking Powder ' ' Case , 168 'Rubber Comb Co." Case 32 'Rye and Rock" Case 51 'Salvation Oil vs. St. Jacobs Oil" 169 'Samaritan ' ' Case , 119 'Sapolio vs. Saphia" Case 12 'Sapolio vs. Pride of the Kitchen Soap " 26 'Sapolio vs. Pride of the Kitchen Soap' ' 100 'Satin Polish" Case 78 'Sawyer's Crystal Blue" Case 90 'Sawyer's Crystal Blue" Case 48 'Sawyer's Crystal Blue" Case 81 'Shaver I Vagon ' ' Case 65 'Shawknit 830" Case 101 'Silex ' ' Case 72 'Sliced Animals" Case • 100 'Sliced Animals" Case 124 'Smith' s Needles" Case 76 vi INDEX OF CASE TITLES. No. Case. Smith, Snyder & Co's" Case 27 Singer Sewing Machine ' ' Case 13 Singer Sewing Machine" Case : 75 Singer Sewing Machine " Case 9& Snowflake ' ' Case -. 89 Southern White Lead Co." Case 159 St. Louis Lager Beer"' Case 184. Striped Barrel" Case 34 Straight Cut Tobacco ' ' Case 1 05 Taper-sleeve Pulley" Case 120 Tayler' s Hair-Pins ' ' Case 102 Tidal Wave Tobacco Label" Case 38 The Mrs. G. B. Miller & Co. Best Smoking Tobacco" Case. to8 The Ribbon ' ' ' Case 60 35" Case 41 Tin Pail ' ' Case 6 Tin Tag Label" Case 97 Tin Tag" Case 179 Trade Secret" Case 94. Triumphant Flour ' ' Case 138 Trommer s Extract of Malt" Case 131 Twin Brothers Yeast" Case 103 Vienna Model Bakery ' ' Case 58 Worcestershire Sauce ' ' Case 22. Wilcox 6" Gibbs Label" Case 03 Yankee Soap ' ' Case \ ^o Yellow Label" Case icg AMERICAN TRADE-MARK CASES, 1879 to l88 7> WITH A FEW CASES DECIDED BEFORE 1879 BUT NOT REPORTED UNTIL AFTERWARDS. 1 NEW YORK SUPERIOR COURT, * Special Term. — : March, 1873. Ix Equity. Royal Baking Powder Company vs. Royal Chemical Company. Royal Baking Powder. application to restrain infringement of trade-mark. defendants used the words Royal London Baking Powder. Held: . That the plaintiffs are entitled to the exclusive use of the term "Royal," as their trade-mark, on labels attached to Baking Powder manufac- tured by them, and in connection with the words "Baking Powder." * Not reported. NEW YORK SUPERIOR COURT. Royal Baking Powder Company vs. Royal Baking Company. 1 2. That the use by the defendants of the word " Royal," on labels affixed to Baking Powder, made by the defendants, or printed or written on boxes, labels, or otherwise however, in connection with Baking Pow- der made by them, is a violation of the plaintiffs' rights. 3. That the, plaintiffs are entitled to a perpetual injunction against the defendants, as demanded by them in their complaint. 4. That the plaintiffs are entitled to the costs of this act. This cause was to restrain the use by defendants of a label alleged to be an infringement upon the trade-mark of complain- ant. The facts are stated in the opinion. Van Vorst, J.: This cause having been tried at the Special Term of this Court, before me, without a jury, and the proofs and allegations of the parties having been heard, I find the following facts: That the plaintiffs commenced to manufacture and sell a com- pound, to be used for leavening bread and cake, and for other culinary purposes, known to dealers in, and consumers of, said compound, as Baking Powder, and that, in order to distinguish the said Baking Powder, manufactured and sold by them, from all other baking powders, they gave it the name of Royal Baking Powder, and adopted said term "Royal" as their trade-mark. That before the adoption of the term "Royal" as a trade-mark by the plaintiffs, no baking powder had been manufactured or sold to which the name "Royal Baking Powder" had been given, or to which it had been in any way attached. That from the time of the adoption of said name or trade- mark by the plaintiffs, they have affixed, prior to the sale thereof, on every can, box, and package of Baking Powder manufactured and sold by them, in conspicuous letters, the said name or trade- mark, "Royal Baking Powder." That from July, one thousand eight hundred and sixty-six, up to the present time, the plaintiffs have been continuously engaged in manufacturing and selling in cans, boxes and packages, Baking Powder, with their said trade-mark affixed thereto, and ever since the adoption of said trade-mark by them, Baking Powder of their MARCH, 1873. 3. Royal Baking Powder Company vs. Royal Baking Company. manufacture has been well known to the public throughout the United States, by the name or trade -mark " Royal Baking Pow- der," so that dealers in and consumers of Baking Powder well know that the said term "Royal," prefixed to the words "Baking Powder," indicates that the article to which the name is given, or to which it is attached, is manufactured and sold by the plaintiffs, and the said trade-mark was well known to the defendants long prior to their infringement on the same, as hereinafter mentioned, ■as the trade-mark of the plaintiffs. That in or about the month of May, one thousand eight hun- dred and seventy-one, the defendants, so imitating the labels and trade-marks of the plaintiffs, and especially by the use of the term "Royal," on labels affixed to packages of baking powder, orga- nized a corporation, purporting to be formed under the statutes of the State of New York, . to which they gave the name of "Royal Chemical Co.," and thereupon commenced to manufacture Baking Powder, and put the same up in tin cans, boxes, and packages, and to sell the same, and they affixed to every can, box, or pack- age of Baking Powder, manufactured and sold by them, prior to the sale thereof, a label containing the word "Royal," in connec- tion with the words "Baking Powder," with the words "Chemical Company," between, and that the term "Royal" was so used by the defendants that the public, in purchasing the Baking Powder manufactured and sold by the defendants, were led to believe that they were purchasing Baking Powder manufactured by the plain- tiffs, and the name "Royal Chemical Company" was adopted for the purpose of enabling them to accomplish that purpose, if possi- ble, with impunity. That the use by the defendants of the term "Royal," on their cans, boxes, and packages of Baking Powder, manufactured by them, and the use by them of the term "Royal," in any manner, in connection with Baking Powder, was and is calculated to deceive purchasers and consumers of Baking Powder into the belief that they were and are purchasing the Baking Powder manufactured by the plaintiffs, and is an infringement of the plaintiffs' trade-mark. That the use of the name "Royal London Baking Powder," on labels affixed to packages, as in the answer alleged, was not adopted 4 NEW YORK' SUPERIOR COURT. ' Royal Baking Powder Company vs. Royal Baking Company. X prior to, but after the use of the term, < 'Royal" was adopted by the plaintiffs as their trade-mark, and was not used until the month of August, in the year one thousand eight hundred and sixty-seven; that the Baking Powder to which said labels were affixed, was not manufactured in England, but was manufactured in the City of New York, and not as thereon alleged, by Austin, Marshal, Hall & Co., of London, but by a person in New York, who used their name; that the labels which purport to be printed by "George Barwood & Co., Printers, 402 Oxford Street," were in fact printed in the City of New York. That the use of the "Royal" by the defendants, on labels affixed to Baking Powder manufactured by them, has not been by the privity, consent, or acquiescence of the plaintiffs, and the plain- tiffs have used due diligence in giving public notice of their rights to their trade-mark, and in preventing infringements thereof. I do, therefore, find and declare the following conclusions of law: First. — That the plaintiffs are entitled to the exclusive use of the term "Royal," as their trade-mark, on labels attached to Bak- ing Powder, manufactured by them, and in connection with the words "Baking Powder." Second. — That the use by the defendants of the word "Royal," on labels affixed to Baking Powder, made by the defendants, or printed or written on boxes, labels, or otherwise however, in con- nection with Baking Powder made by them, is a violation of the plaintiffs' rights. Third. — That the plaintiffs are entitled to a perpetual injunc- tion against the defendants, as demanded by them in their com- plaint. Fourth. — That the plaintiffs are entitled to the costs of this act. Decree. This cause having been tried at a Special Term of this Court, before the Hon. Hooper C. Van Vorst, one of the Justices thereof, without a jury, and the proofs and allegations of the parties having been heard, the said Court gave its decision in writing in favor of MARCH, 1873. L Koyal Baking Powder Company vs. Royal Baking Company. :he plaintiffs, and against the defendants, with costs; which deci- sion has been filed with the Clerk of this Court. Now, in pursuance thereof, it is hereby adjudged that the plain- riffs are entitled to judgment on all the issues, and judgment is hereby rendered in favor of the plaintiffs, and against the defend- mts thereon, and it is hereby also adjudged that the plaintiffs are entitled to the exclusive use of the term "Royal," as their trade- mark, on labels attached to Baking Powder, manufactured by them, and in connection with the words "Baking Powder." And it is iiirther adjudged, that the use by the defendants, of the word- ■ 'Royal" on labels affixed to Baking Powder, made by the defen- dants, or printed or written on boxes, labels or otherwise how- soever, in connection with Baking Powder made by them, was in violation of the plaintiffs' rights. And it is further adjudged, that the defendants, their agents, :lerks, workmen, servants, and attorneys, perpetually refrain, and they are hereby perpetually enjoined and restrained, from using :he term or designation "Royal," on or around or in connection with any cans, boxes, or other packages, of any nature or kind whatever, containing Baking Powder, or in any sign, invoice, Dillhead, card, circular, advertisement, in connection with Baking Powder, and from using the name "Royal Baking Powder," and :rom selling and disposing of any Baking Powder with the word : 'Royal" attached thereto, except On such Baking Powder as is obtained from the plaintiffs. And it is further adjudged, that the plaintiffs recover of the de- fendants their costs and disbursements in this action. COURT OF COMMON PLEAS, PHILADELPHIA. M^Nair, et al. vs. Cleave, et al. S IN THE COURT OF COMMON PLEAS, PHILA- DELPHIA. In Equity. McNair, et al. Galaxy Publishing Company, Cleave, et al. The Galaxy Publishing Company, (Limited). Decided 27 June, 1874. Reported 10 Phila., 155. Galaxy Case. bill for injunction to restrain infringement of trade-name. Plaintiffs alleged that they were co-partners trading as the Galaxy Pub- lishing Company. There was no corporation, merely a co-partnership. Held: 1. That the name which they adopted with their manner of using it, was a fraud on the public. 2. Ev.en if no actual fraud was intended, it does not help their case, a Court of Equity will assist no one in carrying on such a scheme as. this. Thomas J. Ashton, Esq., for the plaintiff. JUNE, 1874. McNair, et al. vs. Cleave, et al. Opinion delivered June 27, 1874. Paxson, J., The plaintiffs allege that they are co-partners, trading as the 'Galaxy Publishing Company;" that they are entitled to the ex- :lusive use of the said name as a trade -mark; that the defendants ire also co-partners under an agreement duly recorded, in which :hey style themselves "The Galaxy Publishing Company, Hin- ted." The plaintiffs claim that the use of this name by the de- endants is an infringement of their rights, and seriously interferes with their business. The application is for a prelininary injunction to restrain the ;he defendants from the further use of said trade-mark. 1. The plaintiffs are not in a position to invoke the aid of a Zourt of Equity. The name which they have adopted, with their nanner of using it, is a fraud upon the public. The words "Gal- ixy Publishing Company," implies that they are incorporated. \s if purposely to strengthen this impression, the plaintiffs add to :he name just cited the words "William McNair, president, ind Charles Robson, secretary and treasurer." This appears printed upon their envelopes, bills, letter heads, etc. President of vhat? Treasurer of what? It would seem difficult to understand, rom the sounding title and official display of names, that there vas nothing behind it all but two gentlemen doing business as co- sartners. 2. It may be that no actual fraud was intended, and that the idoption of the name, and designation of officers was regarded by he plaintiffs as a mere device which would harm no one and night benefit them. I give them the benefit of this doubt. It does not, however, telp their case. A Court of Equity will assist no one in carrying m such a scheme as this. The familiar rule that he who seeks equity must do so with :lean hands, is decisive of this motion. Injunction refused. COURT OF COMMON PLEAS, PHILADELPHIA. S Morse vs. Worrell. 3 COURT OF COMMON PLEAS, PHILADELPHIA. In Equity. Morse vs. Worrell. Decided 21 November, 1874. Reported 10 Phila., 168. Rising Sun vs. Rising Moon. Plaintiff's trade-mark was " The Rising Sun " Stove Polish, with vignette of the sun. Held, on motion for preliminary injunction, that defendants would not be restrained from .using the words "Rising Moon," with vignette of the moon. SUR MOTION FOR SPECIAL INJUNCTION. IF. W. Montgomery, Samuel Wagner, Jr., Esqs., and Hon. F. Carroll Brewster, for complainants. Victor Quillon, Esq., for defendant. NOVEMBER, 1 874.' S Morse vs. Worrell. PAXSON, J.: The rules of law governing trade -marks are now well settled. The difficulty lies in the application of those principles to the iacts of a particular case. Thus it is well understood that a man may have a property in a trade-mark, and that a Court of Equity will interfere by injunctions to prevent a piracy of such trade- mark. Yet what constitutes an infringement is a mixed question 3f law and fact, often difficult to determine. In such investiga- tions we may be aided to some extent by experts. Much, how- ever, must depend upon an actual inspection of the trade-mark, ind of the alleged imitation. The plaintiffs claim to be the manufacturers of an article known is "The Rising Sun Stove Polish." It is put up in packages of :he form known as parallelopipedons, about four inches in length oy an inch and a quarter in diameter, and covered with a wrapper Df red paper, upon which is printed certain letters, and a device Df a rising sun, which it is claimed, constitutes the plaintiffs' trade- mark. When his wrapper is folded, so as to enclose one of the olocks of stove polish, it presents upon one side thereof a device evidently intended to resemble the sun rising over or beyond two "rills, the one on the right lying in deep shadow; the one on the eft lighter, but shaded, while the sun is a semi-circle, sur- ■ounded by wide divergent rays, printed in black on the plain :olor of the paper. Over this device are the words " The Rising 5un," printed in bold letters upon a curved line, and surrounded ay scroll work. Under the device are the words " Stove Polish," ilso in a curved line, and a small portion of which only is visible lpon this side of the block. The other three sides are covered with printed matter, in smaller ype, of various sizes, descriptive of the article, laudatory of its nany virtues, with cautions 1 against imitations, a statement of the :>rice, and directions for its use. Then follows, upon the fourth ide of the block, the name of the manufacturers, < ' Morse Bros. , iole Proprietors, Canton, Mass.," also the words, "Entered ac- :ording to Act of Congress, in the year 1870, by Morse Bros., in he office of the Librarian of Congress, at Washington," followed >y the words " A patent granted us for the words ' sun' as applied IO COURT OF COMMON PLEAS, PHILADELPHIA. Morse vs. Worrell. 3 to prepared plumbago by United States, October 20, 1872, with or without prefix or affix, and any violation or infringements of any of the copyrights or trade-marks we shall immediately prose- cute to the extent of the law." It is proper to say, in this con- nection, that the words, " this trade-mark patented," are printed in dim letters immediately under the vignette of the rising sun. The plaintiffs produced a certificate from the United States Patent Office, showing that their trade-mark had been registered under the Act of Congress. In said certificate the following ap- pears as the plaintiffs' description of their said trade-mark: " This trade-mark is composed of the word ' Sun,' either preceded or not by an adjective, such as the word - Rising,' as shown in the drawing, or < Morning,' ' Evening,' ' Setting,' < Shining,' or Rad- iant,' or other adjective, to qualify or express the quality of, or some circumstances respecting the sun . This word ' Sun, ' when thus used in connection with prepared plumbago or black lead, is to be either stamped upon each separate cake, bar or stick of the plumbago, or by printing or stamping indicated upon the box or case containing it, or upon a wrapper or label to be used with the same; it being best, as well as so intended, to add to the same a word or words sufficient to designate the purpose for which the prepared plumbago or black lead is to be used — -as, for instance, 'Stove Polish,' -Lumber Pencil,' 'Lubricator,' etc. " In the said illustration of my trade-mark there is also a design showing a sun as rising from and beyond hills; the words < The Rising Sun,' and the words 'Stove Polish,' being placed respec- tively above and below the said design, and relieved by scroll lines." "It is not intended to limit this trade-mark to the design here- inbefore described and shown, as said design is, in many in- stances, not employed, and when employed, is for effect, taste and appearance, the trade-mark consisting in the adaptation of the word 'sun' to prepared plumbago or black lead." The defendant's preparation of plumbago is put up in packages of the same size and shape as those of the plaintiff's, 'and covered with wrappers of a similar color. On one side of the parallel- opipedon there is a vignette of a moon rising out of the ocean, or NOVEMBER, 1 874. II Morse vs. Worrell. a. large sheet of water. Immediately over the moon are the words "Rising Moon," printed on a curved line; to the left, and on a line with the moon, is the word "Stove," and on the right the word " Polish." On the second and third sides are directions for use, etc., and on the fourth side the words " Manufactured of Pure Carburet of Iron, at the Eagle Black Lead Works, Nos. 244, 246 ind 248 North Front street, Philadelphia," and in smaller type at the bottom the additional words, "Entered according to Act of Congress, in the year 187 1, by Howard Worrell, in the office of :he Librarian of Congress, at Washington." Over seventy-four affidavits were submitted on behalf of the plaintiffs by persons claiming to be experts and dealers in almost ;very State in the Union, alleging that the plaintiff's article was videly known to the trade and has a large sale. Most of the affi- iavits say that, in their judgment, the label of the defendant was in imitation of the plaintiff's trade-mark, and calculated to de- rive purchasers; that in some instances parties had actually been nisled. On the other hand, the affidavits submitted on behalf of the de- fendant, though far less numerous, are equally strong, and allege hat there is no imitation, and that the difference between the two abels is so radical that no person of ordinary intelligence could be leceived, or mistake the "Rising Sun" for the "Rising Moon Stove Polish." In determining a question of this kind some regard must be had the character of the article, its price, and the average intelli- gence of the persons who are likely to be its chief purchasers and :onsumers. When an article is costly, is used principally by per- ons above the ordinary standard of intelligence, and is likely to ie inspected closely, the danger of deception would necessarily be ess than in the case of an article of stove polish, sold at retail for en cents, and used chiefly by the humbler and more ignorant lasses. The large number of affidavits submitted in this case has led me 3 consider the weight that ought to be attached to the opinions of ersons professing to be experts. The conclusion to which I have rrived is, that while we will regard such affidavits so far as they 12' COURT OF COMMON PLEAS, PHILADELPHIA. Morse vs. Worrell. aid us, and throw- light upon the case, the Court must at last ex- ercise its independent -judgment upon actual inspection of the trade -mark and its alleged imitation. As before observed, this is a mixed question of law and fact. Many of the professed experts may have but crude notions of what in law constitutes a trade- mark, or its violation. It does not follow as a matter of law that because one label resembles another in many respects it is neces- sarily such an imitation as a Court of Equity would declare an in- fringement of a trade-mark. A careful examination of the two articles in question certainly discloses a strong general resemblance. Placed side by side upon the shelf of a country store, and viewed at some little distance, the similarity is striking. But when we come to analyze this general resemblance, it will be found to consist mainly of the color of the wrapper and the shape and size of the article. It is almost need- less to say that the plaintiffs cannot have a trade-mark in red paper or parallelopipedons. I do not mean to say that even the color of the paper and the shape and size of the package are not to be considered in any case in settling the question of the imitation of a trade-mark. Where there is an imitation with any colorable differences, the fact of the use of a similar wrapper, and the same size and shape for the article itself, may add great strength to the charge of an intent to deceive. But of themselves they are not enough to constitute an infringement. Leaving out these two points of resemblance, what else is there? It is not pretended that upon the second, third and fourth sides of the parallelopipedon there is any imitation. They are distinctly and radically different. Both the style and the matter of the printing are dissimilar. If there is any infringement at all, it must be upon the first side, containing the vignette. We will consider first the lettering. The words "Stove Polish" are clearly no part of the trade-mark. They constitute the name by which the article is known to commerce, it is a principle too well settled to need the citation of authorities, that no one can appropriate as a trade-mark, the commercial name of any article known to trade. Nor do the plaintiffs claim a trade-mark in the word "Rising," except in its application to the word "Sun," and, NOVEMBER, I 874. I 3 Morse vs. Worrell. that is not used by the defendant in his label. He uses the word "Moon," which is of entirely different sound and signification. The real point in the case is the vignette. The plaintiffs allege that the defendant's moon is an imitation of their sun. Yet the defendant's device resembles the moon quite as much as the plain- tiffs' device resembles the sun. Neither is executed in the highest style of art. There is, however, a marked difference between them, and when it is considered that the one is appropriately labelled a moon and the other is appropriately labelled a sun, there ought not to be any serious difficulty in distinguishing the one from the other. The embarrassment of this branch of the plaintiffs' case consists in the fact that they have taken for a device one of the heavenly bodies which in shape closely resembles another of the heavenly bodies. They may, perhaps, be entitled to use the "Sun" as a device or symbol for their trade-mark, but it does not follow that they may in the same manner appropriate the entire planetary system, with its attendant moons, rings and comets. It is unnecessary to refer at length to the plaintiffs' description of their trade-mark filed in the Patent Office. It may be that they are not absolutely restricted in this proceeding to the clairn there made, as it is not instituted under the Act of Congress authorizing the registration of trade-marks and providing penalties for its violation. We are not called upon to decide this question, as the claim now made does not vary materially from what is claimed in the description filed in the Patent Office. The latter is certainly evidence, as being the statement of the plaintiffs them- selves as to what they consider their trade-mark. Nor do I attach any importance to the use of the word "Pat- ented" upon the plaintiffs' label. It must be borne in mind that it is the trade -mark, not the manufactured article, that they claim to be patented. But it may be registered in the Patent Office, and a certificate granted therefor, which was done in this case, and was probably what the plaintiffs really meant when they stamped their label with the words "this trade-mark patented." When a manufactured article is stamped as "patented," when in point of fact no patent has been obtained for it, the law" regards such a 14 COURT OF COMMON PLEAS, PHILADELPHIA. Morse vs. Worrell. 3 transaction as deceptive, and a Court of Equity would refuse to enjoin for an infringement of a trade-mark for this reason alone. The plaintiffs' device of a. sun rising over and beyond hills is almost a fac-simile of the one at the head of the editorial columns of the New York Daily Sun. It does not appear in this proceed- ing who is entitled to the credit of originating it, nor is it, per- haps, material. I have referred to the points of difference between the trade- marks of the plaintiffs and the alleged imitation for the purpose of showing that the case as now presented is not clear enough to justify the Court in interfering by a preliminary injunction. This is the extent of our present decision. It is quite possible that the general resemblance between the two labels before alluded to is not the result of accident. There may be a case in which differ- ences are designedly introduced, yet such a combination pro- duced with the aid of the color of the wrapper and size and shape of the article as to amount to an infringement. In such cases the line of distinction between the genuine and the simulated trade- mark is a very nice one. The defendant's label, in my judgment, lies very close upon the border. We will determine upon which side of the line it is after the plaintiffs shall have established their right at law, or upon final hearing. The injunction is refused. FEBRUARY, 1 877. I 5 Ayers, et al. vs. Kushton. 4 COURT OF COMMON PLEAS OF NEW YORK. (City). In Equity. James C. Ayers, et al., Respondents, VS. Frederick V Rushton, Appellant. Decided 5 February, 1877. Reported 7 Daly's Rep. 9. Cherry Pectoral Case. Common Descriptive Words cannot be subject of trade-mark. 1. Words in common use as descriptive of medicines for particular diseases, or which merely indicate by its common name, an ingredient of a medicine, cannot be appropriated by a manufacturer of such medicines as a trade-mark, nor can a combination of such words be so appro- priated. Caswell v. Davis, 58 N. Y., 223, followed as controlling. 2. Plaintiffs invented and prepared a medicine for chest diseases, to which they gave the name of " Cherry Pectoral," and which was extensively known and sold as ''Ayers' Cherry Pectoral;'' one of the ingredients was extract of wild cherry, and the word "pectoral " had been, before the invention of plaintiffs' medicine, applied to medicines for chest diseases. Held: 16 COURT OF COMMON PLEAS OF NEW YORK. Ayers, et a!, vs. Rushton. 4 That the plaintiffs could not claim the exclusive use of the words " Cherry Pectoral," as a trade-mark. Everet P. Wheeler, for appellant. John Sherwood, for respondents. Appeal by the defendant from a judgment in favor of the plain- tiffs, granting a perpetual injunction against manufacturing a compound called "cherry pectoral,'-' and using that name upon bottles, labels, or wrappers, and selling any compound by that name, and against imitating the plaintiffs' trade-mark "cherry pectoral." The defendants appealed upon the judgment roll in- cluding the findings of fact and law made at special term. Joseph F. Daly, J.: The findings of the learned Judge at special term that "the articles put up, advertised and offered for sale, and sold by defend- ants under the title and name < Cherry Pectoral ' is well calcu- lated to deceive and mislead purchasers and induce them to believe that the said article of defendant is that of the plaintiffs:" and that "the defendant, with the wrongful intent to induce pur- chasers to believe that the articles sold by him was the same as that of the plaintiffs, and with the wrongful intention of securing to himself the benefit of the plaintiffs' trade-mark, has imitated the trade-mark of the plaintiffs so closely as to mislead and de- ceive purchasers;" and that "the use by defendant of the words, name and title < Cherry Pectoral ' is a wrongful and unlawful imitation of the words, name and title < Ayer's Cherry Pectoral,' the plaintiffs' trade-mark:" are not, in my opinion, sustained by the sixth and ninth findings in , which the several compounds, packages, labels and wrappers of the plaintiffs' and defendant's preparations are set forth, and in which the defendant's acts in presenting his compound to the public and endeavoring to make sales of it, are minutely described. From these findings it appears that both preparations are nearly alike in color, taste and smell, although defendant has lately altered his compound slightly, in these particulars; that they are both put up in oblong flat, clear FEBRUARY, 1 877. 1 7 Ayers, et al. vs. Rushtcm. glass bottles; that plaintiffs' bottles contain about six ounces and defendant's about five and a half ounces; that plaintiffs' bottles are stamped "Ayer's Cherry Pectoral," and defendant's (I assume in the absence of any finding on that point) are not stamped; that plaintiffs' bottles are in a paper wrapper of a deep orange color, and defendant's bottles in a white paper wrapper; that plaintiffs' wrapper bears the printed words (the color of the ink not speci- fied in the finding) "Ayers' Cherry Pectoral for the various affec- tions of the lungs and throat, such as Colds, Coughs, Croup, Asthma, Influenza, Hoarseness, Bronchitis, and incipient con- sumption, and for the relief of consumptive patients in advanced stages of the disease. Prepared and sold by J. C. Ayers, Lowell, Massachusetts. Price one dollar;" and defendant's wrappers bear the words, printed in red ink, "Cherry Pectoral, Rushtori, F. V.," and upon an inside wrapper "Cherry Pectoral," and after some printed words of description and recommendation, the words. "For Sale, wholesale and retail, by Rushton & Co., n Barclay Street, New York, formerly of No. n Astor House;" that defendant advertised by posters, placards and signs the words "Cherry Pectoral," for sale at 1 1 Barclay Street, and placed signs in front of his store with the words "Depot of the Cherry Pecto- ral Company" thereon; that he conspicuously placed in his store a placard with the words "Ayers' Cherry Pectoral, one dollar. Rushton's Cherry Pectoral, fifty cents. Which will you have?" That he instructed his clerk to answer to purchasers who called for Ayers' Cherry Pectoral, that his Cherry Pectoral was not Ayers', and to ask persons inquiring for Cherry Pectoral, which they wanted, Rushton's or Ayers', and to say that Rushton's was much better; that bottles containing said preparations are almost uniformly sold in closed opaque paper wrappers. We have then, the indisputed circumstances that the defendant has been careful to distinguish his preparation from plaintiffs', by a marked difference in the color of the wrappers, the lettering and the arrangement of the words printed on the wrapper, and by distinctive announcements, the signs in his store, and through his clerks. In fact, he seems to have taken precautions to prevent the two compounds from being confounded in the eyes of pur- COURT OF COMMON PLEAS OF NEW YORK. Ayers, et al. vs. Rushton. chasers; and to prevent purchasers being misled or deceived into buying his medicine under the impression that it was plaintiffs' medicine. Defendant certainly did take advantage of the celebrity of plaintiffs' preparation to which the name of "Cherry Pectoral" seems, from the findings, to have been exclusively applied in the trade, in the last thirty years or more, to gain a readier market for a preparation of his own which he called "Cherry Pectoral;" whatever popularity Ayers' Cherry Pectoral had acquired as a medicine for throat and lung affections, he hoped to gain advan- tage from by calling his medicine a Cherry Pectoral, thus inducing persons to try his compound, if they could be persuaded that one Cherry Pectoral was as good as another. To this extent, and a very great extent it is no doubt, defendant proposed to build up a business upon and avail himself of, the fame which years of sale and a great expenditure of money for advertising on the part of plaintiffs and their predecessors had acquired for the well-known preparation they manufactured, but there is clear proof that he did not intend to incur any penalty for imitation of devices, labels, or marks, or for attempts to impose his compounds upon the public as the article plaintiffs manufactured. He kept with- in the letter of the law, if he were at liberty to call his prepara- tion "Cherry Pectoral." It appears from the findings, that Ayers' Cherry Pectoral is a medicine for the relief and cure of affections and diseases of the lungs and throat, of which medicine the extract of wild cherry is one of the beneficial ingredients. The word "cherry" describes, therefore, one of the ingredients of the compound, and the word "pectoral" describes the use and application of the medicine. The findings show that "pectoral" as an adjective referring to medicine for the throat and lungs, was known to scientific men, and was found in books of surgery, &c, before plaintiffs' com- pound was invented; and that medicines for the throat and lungs called "Pectoral Syrup," and "Pectoral Wine" appear in medical books prior to the plaintiffs' use of the word; that a medicine called "Britton's Pectoral Syrup" had been made and sold in Northamptonshire, England, before that time; that in dictionaries FEBRUARY, 1877. 19 Ayers, et at. vs. Rushton. published before plaintiffs' manufacture of "Cherry Pectoral," began in 1842, and of standard dictionaries of the English lan- guage, show that the word "pectoral" as a noun, as well as an adjective, was and is a common established word in the language signifying a medicine for coughs, for the stomach and lungs, for the breast and for diseases of the breast. (Johnson's Diet., Ed. 1799; Dungthon's Med. Diet., Tit. "Pectorals;" Pees' Cyclo- paedia; Richardson' s Diet.; Blunfs, 1681; Philip' s "New World of Words;" Glossographia Anglicania, 1707; Cole's Diet., 1717; Jersey's Eng. Diet., 1721; £ alley' s Diet., 1763; Johnson, 1763; Ash, 1765; Allison, 1813; Worcester). The word "pectoral" therefore, is common property, as descriptive of a medicine for diseases of the chest, breast, lungsand throat, and no person can acquire an exclusive right to its use in that sense. The word "cherry" indicating an ingredient or the sole or chief ingredient, as an extract or tincture of wild cherry in a medicine cannot become the exclusive property of any person to describe the medi- cine in the compounding of which it is used. The same must of course be said of a descriptive term made up of the two words "cherry" aud "pectoral," used to describe the ingredients and use of the compound. The late case of Caswell v. Davis, (58 N. P., 223), is con- trolling as a decision directly in point. No attempt is made by defendant to infringe plaintiffs' trade- mark in the name of "Ayers," in which they have an exclusive property, and the injunction prayed for against the use of the name "Cherry Pectoral" should have been denied. Van Hoesen, J., concurred. Judgment reversed, and new trial ordered, costs to abide event. 20 U. S. C. C. SOUTH. DIST. OF NEW YORK. Fairbanks, and others vs. Jacobus. 5 5 IN THE CIRCUIT COURT OF THE UNITED STATES, FOR THE SOUTHERN DISTRICT, NEW YORK. In Equity. Thaddeus Fairbanks, and others, vs. Samuel H. Jacobus. Decided 15 October, 1877. Reported 14 Blatch., 337. Fairbanks' Scale Case. 1. E. and T. Fairbanks & Co.., manufacturers of scales, alleged that Jacobus made scales by using, to make the iron castings thereof, the corresponding parts of a scale made by them, to form the moulds for the castings, and that the general shape and arrangement and color and external appearance of such scales, were imitated from the Fair- banks' scales so nearly that only an expert in scales could distinguish the differences between them. 2. A trade-mark is always something indicative of ownership, by adoption and repute, and is something different from the article itself, which the mark designates. 3. Any one may make anything in any form and may copy with exactness that which another has produced, without inflicting any legal injury, OCTOBER, 1877. 21 Fairbanks, and others vs. Jacobus. unless he attributes to that which he has made a false origin, by claim- ing it to be the manufacture of another person. 4. The words " Fairbanks' patent" were cast in the scales made by both parties. All the patents which Fairbanks & Co. had, had expired. Fairbanks & Co. applied for an injunction to restrain Jacobus from using the words " Fairbanks' patent " on his scales, and from making or selling an imitation of Fairbanks & Co's scales. Held: That the application must be denied; that the words " Fairbanks' patent " were not a trade-mark; and that Jacobus did not represent his scales to be of the make of Fairbanks & Co. 5. In trade-mark cases, it is by no means of course to grant preliminary injunctions even where the plaintiffs'. case seems to be made out. Lucius E. Crittenden, for the plaintiffs. fieed and Drake, for the defendants. Johnson, J.: This motion is made for a preliminary injunction to restrain the defendant from the use of the words "Fairbanks' patent" upon platform scales, and from making or selling an imitation of Fair- banks' scales. This preliminary relief is sought substantially upon the grounds of imitation of the articles made and sold by the plaintiffs, and of violation of the plaintiffs' alleged trade- mark. No question of violation of patent rights is involved, for there is no claim by the plaintiffs that the scale complained of is, either in the whole, or in any part, an invasion of any existing patent owned by the plaintiffs. Indeed, it is not claimed, on the part of the plaintiffs, that any part of their scale alleged to be imitated is protected by any existing patent, or that any existing patent owned by them applies to their own scale, except a small and unessential, though useful, ad- dition to the scale frame, by which the oscillation of the weigh- ing beam is prevented, under certain circumstances. This addi- tion, which the scale complained of does not possess, is secured by an existing patent to the plaintiffs, and bears the proper words re- quired by statute "Patented Feb. nth, 1862," cast upon it. 1. The alleged imitation as claimed by the plaintiffs, consists in this, that the scale complained of as to the iron castings enter- 22 U. S. C. C. SOUTH. DIST. OF NEW YORK. Fairbanks, and others vs. Jacobus. E> ing into its structure, was made by using the corresponding parts of a scale made by the plaintiffs, to form the moulds for those castings; and that the general shape and arrangement, as well as the color and external appearance, are imitated from the plain- tiffs' scale so nearly that only an expert in scales could distinguish the difference between them. While, as matter of fact, I should, after an inspection of the two scales, not think the discrimination so very difficult, yet it may be taken to be not only very difficult, but impossible, to discriminate between them. That fact does not give the plaintiffs any right. Their patents, while they existed, (and those concerned terminated in or about 1845), protected them in the essential structure of their invention, but exterior form, painted color, and such non-essentials, were not, and could not be, the subjects of the patents, and did not, and could not, secure these to the plaintiffs. Much less could these be secured as a trade-mark, for, a trade-mark is always something indicative of origin or ownership, by adoption and repute, and is something different from the article itself which the mark designates. An invention of structure a patent for the invention secures; a design is secured by a patent for that. 3. Apart from these, any one may make anything in any form, and may copy -with exactness that which another has produced, with- out inflicting any legal injury, unless he attributes to that which he has made a false origin, by claiming it to be the manufacture of another person. Any other doctrine is impossible to be main- tained; for, otherwise, all the colors, all the unessential forms, could be monopolized as trade-marks, and exclusive rights would be created, not limited in time, as patents are, founded upon no public utility, and subject to no control but the will of the adopter. I think there is no difference in the cases on this subject. (Amos- keag Co. v. Spear, 2 Sand/. S. C. R., 599; Gillottv. Esterbrook, 47 Barb., 455; Newman v. Alford, 49 Barb., 588). I conclude, therefore, that there is no invasion of the plaintiffs' rights, in the purposed and actual identity, both of structure and appearance, in the scales in respect to which the defendant is sued, with those which the plaintiffs manufacture. OCTOBER, 1877. Fairbanks, and others vs. Jacobus. 4. The case does not, however, rest here. On the base of the plat- form of what I may call the defendant's scale, are cast the words "Fairbanks' patent" with the number indicative of size, 11, and upon the weight beam are stamped the words "Fairbanks' patent." These are all the words which appear upon these scales, which can be the foundation of a charge of invasion of trade-mark, and, indeed, are all the words or figures upon any part of the scale. The same words appear on corresponding parts of the plaintiffs' scale, and, if they constitute a legal trade-mark, I shall assume, for the present purpose, that the defendants' scales violate it. Are these words a name of origin, or a name of quality, indicating structure? Whatever they are in the one scale, they are, also, in the other. In some of the plaintiffs' scales their origin is signi- fied by a quite different mark: "Fairbanks Standard, made only by E. & T. Fairbanks & Co., St. Johnsbury, Vermont." This is a valid trade-mark of the plaintiffs, but does not appear upon their scale produced in Court. The other words must be understood as claiming that the thing on which it appears is protected by a pat- ent. Especially is it thus localized and referred to the particular parts on which it appears, when, upon another part, is found the proper patent mark, which is necessary to support an action for an infringement, in the absence of notice, under section 4900 of the Revised Statutes. This gives significance to the use of the other marks, and makes the conclusion almost irresistible, that the purpose of the other words, on the beam and the frame, are to impress upon the incautious public, that the scale is the subject of a patent, and, therefore, not open to competition in manufacture or sale. I agree, on this point, with the position of the plaintiffs' counsel, in his printed points, that "it is an error to suppose that even the patentee may so stamp his articles and deceive the public after the expiration of his patent," citing Leather Cloth Co. v. Am. Leather Cloth Co., (Am. Trade-Mark Cases, 688-713). And I add, in confirmation of this view, the decision of Judge Cadwal- lader, in the Eastern District of Pennsylvania, October 4th, 1875, in Consol. Fruit Jar Co. v. Dorflinger, (1 N. Y. Weekly Digest, 427), upon reasons which seem to me quite satisfactory, and by 24 U. S. C. C. SOUTH. DIST. OF NEW YORK. P'airbanks, and others vs. Jacobus. 5 ■which, on a motion for a preliminary injunction, I ought to be guided. It is, of course, no answer, that the defendant is, at least, guilty of the same fault, or even a greater. The plaintiffs fail to make 'these words out to be a lawful trade-mark, and, of course, cannot maintain upon them their claim for relief. As to the charge that trie defendant threatens various supposed wrongs to the plaintiffs, in imitating their manufacture, and that he represents his scales to be of the plaintiffs' make, the allega- tions are not so made out as to satisfy my mind of their sub- stantial truth. (By am v. Bullard, i Curtis C. C. R., ioo). I doubt whether the defendant meant anything beyond the assertion of a right to use the words on the scale, which had been for many years openly used by him and his predecessors, under claims of right, and for some time, at least, and to some extent, with the know- ledge of the plaintiffs or their predecessors. Certainly, if the words "Fairbanks Patent" do not mean to assert the existence of a patent securing the scales, but only that they are made in conformity with, and embody the invention of, the expired Fairbanks' patent, they are free to all the world. What is not free is, to pretend that a scale is made by one person, which is, in fact, made by another. 5. In trade-mark cases, it is by no means of course to grant preliminary injunctions, even where the plaintiffs' case seems to be made out; and I shall, therefore, leave the further considera- tion of the case to the final hearing, when the questions as to the defendant's claim of right to the use of the words "Fairbanks' patent" and other questions of fact just referred to, and the unex- plained circumstances and terms of the writing claimed to have extinguished the right of Chamberlain, can, if necessary, be further considered. The motion for an injunction must be denied, and the order heretofore made, granting an injunction till the deci- sion of the motion, must be vacated. FEBRUARY, 1 877. ' 25 Harrington vs. Libby. 6 IN THE CIRCUIT COURT OF THE UNITED STATES, FOR THE SOUTHERN DISTRICT, NEW YORK. In Equity. George Harrington vs. James L. Libby Decided 8 February, 1877. Reported 14 Blatchf., 128. Tin Pail Case. The exclusive use of a tin pail with a bail or handle to it, the tin orna- mented with a geometrical pattern, and used to contain paper collars for sale, and sold with the collars, cannot be claimed as a trade-mark, either under the statute or by virtue of the general law of trade-marks. lames A. IVhitnex, for the plaintiff. » Edmund Wetmore, for the defendant. Johnson, J.: The plaintiff claims to be entitled to the exclusive use of a tin pail with a bail or handle to it, the tin ornamented with a geome- 26 U. S. C. C. SOUTH. DIST. OF NEW YORK. Harrington vs. Libby. ® trical pattern, and used to contain paper collars for sale and sold with the collars. This claim is not made on the ground that he is the inventor and patentee of pails thus made, or of the material used in making them, or of the art of selling collars by giving away a tin pail, with them. But the claim is that this is a trade- mark, and entitled to protection as such, either by force of the statute of the United States on the subject, or by virtue of the gen- eral law of trade-marks. It appears that the ornamented tin pail which the plaintiff employs is a common article in commerce, and that pails made of tin, ornamented orunornamented, are and have long been in use for all such purposes as any one chose to apply them to. The question whether any one can seize upon such an article and make title to its exclusive use for a special purpose, by calling it a trade-mark, must be far from clear in favor of the claimant. The forms and materials of packages to certain articles of merchandise, if such claims should be allowed, would be rapidly taken up and appropriated by dealers, until some one, bolder than the others, might go to the very root of things, and claim for his goods the primitive brown paper and tow string, as a peculiar property. It will be observed, that it is not a mark at all which is claimed, but the whole enveloping package, the whole surface of which is covered by the ornamental pattern. There is no name, no symbol, no assertion of origin or ownership. The case strongly resembles that of Payson's Indelible Ink, (Browne on Trade-Marks, sees. 271, 272), where the claim was rejected, on the ground, that, if maintained, the effect would be to gradually throttle trade. The case of Moorman v. Hoge, (2 Sawyer, 78), seem to me quite in point. In favor of maintaining the right to the barrel in question in that case, all circumstances of fact concurred, but the Court held that the law did not recognize an exclusive right to an un- patented package, nor permit its assertion. I concur in the prin- ciples maintained in that case, and think the plaintiff has failed to show such a right in the premises as can entitle him to a preliminary injunction. The motion must be denied. JUNE, 1877. 27 La Societe Anonyme, &c. vs. Baxter, and others. 7 UNITED STATES CIRCUIT COURT, SOUTHERN DISTRICT OF NEW YORK. Ix Equity. La Societe Anonyme des Mines et Fonderies de zuic de la vleille montagne Charles H. Baxter, and others. Decided 12 June, 1887. Reported 14 Blatchf., 261. Oxide of Zinc Case. The right of A. to a trade-mark in connection with the dry, white oxide of zinc, is not infringed by the sale of a paint composed of a white oxide of zinc, ground in oil, and untruly represented as containing white oxide of zinc made by A., such trade-mark never having been applied by A. to that article ground in oil. Daniel D. Lord, for the plaintiff. Dickerson 6° Bcaman, for the defendant. Blatchford, J.: On the allegations of the bill, the plaintiff can claim their trade- mark only for the dry white oxide of zinc. It does not appear that U. S. C. C. SOUTH. DIST. OF NEW YORK. La Societe Anonyme, &c. vs. Baxter, and others. they ever sold that article ground in oil, or ever applied such trade- mark to that article ground in oil. The fact that the defendants sell a paint composed of a white oxide of zinc ground in oil, and represent it as containing white oxide of zinc made by the plain- tiffs, when it does not contain white oxide of zinc made by the plaintiffs, is no violation of any trade-mark of the plaintiffs. The defendants have not sold the dry white oxide in that state. It is not shown that the plaintiffs have sold such oxide ground in oil. It is true that the oxide is intended to be ground with oil, for a paint. So, flour is intended to be made into bread. But, if a baker should falsely stamp his bread with the mark of a particular brand of flour, the maker of such brand, if having a trade-mark therefor, could not claim that the baker had violated his trade-mark. And so of any other raw material which enters as an ingredient into a compound or article of manufacture, The application must be denied. JUNE, 1877. 29 Seabury and Johnson vs. Grosvenor. 8 UNITED STATES CIRCUIT COURT, SOUTHERN DISTRICT OF NEW YORK. In Equity. George J. Seabury and Robert W. Johnson vs. John M. Grosvenor. Decided 16 June, 1877. Reported 14 Blatch., 262. Capcine Plaster Case. Where a person who claimed property in a trade-mark, had acquired it, if at all, by the use, in circulars, of fraudulent and deceptive and untrue language as to the origin and qualities of the article in respect of which the trade-mark was claimed. Held: That he had lost his right to claim the assistance of a Court of Equity to protect his trade-mark. Rowland Cox, for the plaintiffs. Joseph W. Howe, for the defendants. Blatchford, J.: The evidence is clear that the plaintiffs were systematically and knowingly carrying on a fraudulent trade. Although they may 30 U. S. C. C. SOUTH. DIST. OF NEW YORK. Seabury and Johnson vs. Grosvenoi;. 8 have omitted the fraudulent and deceptive and untrue language from their circulars before this suit was commenced, yet if they have any property in the trade -mark which they claim the title to, they acquired such property by the use, for a considerable time, of such language in the circulars which accompanied the articles they sold, and in respect of which the trade-mark is claimed. Such language was to the effect, that a celebrated chemist had recently discovered a vegetable principle of great value, and, prior to making it generally known, had introduced it into hos- pitals, and had generously extended its use to the most successful physicians; that the flattering and astonishing results which char- acterized its action, at once stamped it as the most remarkable principle ever discovered; that the powerful remedy was named Capcine; and that it was used in plasters prepared by the plain- tiffs, and called "Benson's Capcine Plasters." A registered trade-mark is claimed in the word "Capcine." Courts of Equity refuse to interfere in behalf of persons who claim property in a trade-mark acquired by advertising their wares under such repre- sentations as those above cited, if they are false. It is shown that there is no such article as Capcine, known in chemistry or medi- cine, or otherwise. The authorities are clear, that, in a case of this description, a plaintiff loses his right to claim the assistance of a Court of Equity. {Lee v. Haley, L. R., 5 Chy. Appeal Cases, 159; Leather Cloth Co. v. American Leather Cloth Co., 4 De G.,J. &> S., 142). The motion for an injunction is denied. OCTOBER, 1877. 31 Frese & Co. vs. Bachof. UNITED STATES CIRCUIT COURT, SOUTHERN DISTRICT OF NEW YORK. In Equity. I. C. Frese & Co. vs. Edward Bachof. Decided October Term, 1877. Reported 13 Official Gazette, 635. Hamburg Tea Case. I. In a meritorious cause of action, properly brought in the firm-name for violation of firm-rights, leave will be given before final decree, to join a member of the firm who had been omitted as a party to the suit. 1. Long-continued use of a particular form of package and of particular colors for its wrappers, papers of directions and labels, having served to distinguish the complainants' article in the trade, the appropriation of such peculiarities in form and color by another dealer for packages of the same article will be restrained. Arthur v. Briesen, for complainants. Brodhead 6° Wright, Elliott F. Shepard, and Simon Sultan, for defendant. 32 U. S. C. C. SOUTH. DIST. OF NEW YORK. Frese & Co. vs. Bachof. Motion to Amend Bill. Upon leave given before entry of final decree, motion was made and granted to join as party to the cause a firm member who had been previously omitted in an action brought and maintained in the firm-name. Costs were disallowed, except so far as they had accrued since curing the defect of non-joinder by the appearance of the omitted partner. (Test suit. Similar judgment entered by stipulation against Th. Briedenfeld and Klein, Fleet & Co.) Opinion. — March 22, 1878. Wheeler, J.: This cause has been heard on bill, answer, replication, proofs, and argument. The bill is brought by Christel F. H. Frese alone, claiming to stand upon rights acquired by a firm of methods of identifying their wares, of which he alleges himself to be now the sole mem- ber. The defendant does not admit any right to the orator, but leaves him to his proof. The proof shows Johann Siegmund Schroder to be a member of the firm equally with the orator, and whatever right it does show in respect to the matter of the bill, it shows to belong to the firm. As the case stands, the orator has no right to be protected in this form, and if it should proceed to a decree the bill would have to be dismissed. 1. But the bill is brought in the firm -name and right, and has been litigated in that right, and the want of the oiher member is a defect that can be cured by amendment. {Lewis £f Co. v. Locke, 41 Vt. , 11). Under such circumstances, where a case appears to be meritorious, it is not usual to proceed to a decree without affording an opportunity to amend upon some terms. {Story'' s Eq. PL, section 236). This consideration makes it neces- sary to inquire into the merits of this case. The orator's firm has not any patent on the compound called " Hamburg Tea." The manufacture and sale of that article are OCTOBER, 1877. 33 Frese & Co. vs. Bachof. open to all persons. Nor is it in the bill directly alleged, nor does the bill appear to proceed on the ground that this was appropriated and used by them to identify their production. So, for aught that appears, all persons are at liberty to apply that name to their own manufactures. The proof shows clearly that the name of the orator's firm has long been used in this business, and that the wares of the firm of this sort came to be known by it. It also shows that this firm is a successor of the former one. Whether it is or not, is a question of fact, and this fact could be and has been established by parol proof. The trade -marks of the firm were partnership property, and would pass to the successors. (Ce>//. Part., sec. 165). The defendant does not claim the right to use the firm-name of the orator's firm, nor their registered trade-mark, and, there is no question made about those. But the orator claims that his firm and their predecessors have long been accustomed to pack this article in long cylindrical packages with pink wrappers, and to have crimson papers of directions, and yellow ones of warning, tied in with each package, and their firm- name printed across a white label within a circle pasted across the ends of the string, and the same embossed with the words "Ham- burg, Hoffensack, 6" on another white label pasted on the pack- age, so that the package by its form and colors would be at once known by its general appearance without taking time to read any- thing on it, and that their wares have come to be well-known as theirs by the appearance of the packages. 2. They have the exclusive right to sell their wares as their own, and no other person has any right, by any means, to palm off any other wares than theirs as theirs. And if any person does utter any other wares than theirs as theirs an action at law would lie. And whenever there is danger that this would be done so often as to occasion multiplicity of suits, or so as to work irreparable in- jury, a Court of Equity would interfere by injunction. The ora- tor's proof shows that the firm has long used this style of package. It also appears that the defendant at first openly used the style of package, and firm-name; that, in obedience to warning, he discontinued the use of the name on the outside of the package, and that, under the pressure of legal proceedings, he has stopped 3 34 U. S. C. C. SOUTH. UIST. OK NEW YORK. Frese & Co. vs. Bachof. 9 the use of that altogether, and also of the words " Hoffensack 6," but that he still continues the exact form and style of pack- age, substituting his own name merely for that of the firm on the labels. The exact question is, whether this is a simulation of his wares for those of the orator's firm calculated to have them pass for the orator's firm's wares. Probably no mere form of a package would ever alone amount to a representation capable of indicating 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 quite apparent that when they had been so long used by the orator's firm for holding this par- ticular compound, when offered for sale, the mere appearance of the packages would amount to a representation that they con- tained that article of manufacture. It is equally obvious that the very slight changes made by the defendant in the general appearance of his packages used by him now, would not put the general public purchasing such articles on their guard, and that the use of such packages for a similar article would amount to a forcible representation that it was the same article that the orator's firm had been accustomed to pack in that way. And when the mode in which the defendant commenced using such packages, and the various steps by which he has been brought to his present method are considered, there does not seem to be any fair question but that his use of them now is 'for the purpose of passing off his wares for those of the orator's firm. Upon this view of the case, it seems that, with the proper par- ties before the Court, the defendant should be restrained by in- junction from making the use he does of these symbols. Let the cause stand, with leave to the orator to move for an amendment if he shall see cause within thirty days; otherwise let a decree be entered dismissing the bill of complaint wifh costs, but without prejudice. OCTOBER, 1877. 35 9 Frese & Co. vs. Bachof. Opinion. — -Motion to Amend Bill. This cause has been further heard on the motion of the orator to amend; the affidavit of A. v. Briesen, solicitor, in support thereof and briefs of counsel. From the whole case it appears that the firm of I. C. Frese & Co. consisted of two members. This cause was brought by one member, in the name of the firm, without joining the other mem- ber. The whole litigation has been carried on with reference to a right of the firm to protection and relief against the defendant; and it has been carried on in precisely the same manner that it would have been if the other member had joined in the bill as an ■orator, so far as has been made to appear or is claimed. The cause of action that has been litigated is exactly the same that the bill will cover if the amendment is allowed and made. It is urged in opposition that the Court has no power to permit an amendment to be made that will change the cause of action. This is considered to be true when the amendment would bring in a cause of action not before involved; and that is the sense in which the remark of the Supreme Court of Vermont, in Lewis & Co. v. Locke, (41 Vt., n), quoted in the defendant's brief, was used. A necessary amendment always changes a cause of action in another sense, as when it changes what would be no cause of action to a good one, or one that the proof will not support to one that it will, or one imperfectly described to one well described. In this case the cause of action in the name of the firm is well set forth, but the firm itself is not properly described and represented. r. The amendm'ent will cure that imperfection, which is precisely what was done in the case cited. And it may be done at this stage of the cause. (JTremaine & Co. v. Hitchcock, 23 Wall., 518). It is also argued that the orator should not be favored because he seeks to restrain dealing in the well-known compound involved called "Hamburg Tea." But that is not the relief sought, nor that to which the firm is thought to be entitled; but it is that the defendant shall not pass off tea of this sort, of his own or others' manufacture, for that of the orator's firm. This is not claiming any monopoly, nor fostering one, but is merely 36 U. S. C. C. SOUTH. DIST. OF NEW YORK. Frese & Co. vs. Bachof. & claiming and protecting a right of that firm that is common to all persons. On the whole, it is considered that the amendment should be allowed, but that the orator should .recover no costs of the pro- ceedings in the cause while it was so situated that it could not pro- ceed to a final decree in his favor; and the defect was one of which he must have had knowledge, although probably he had no know- ledge of its effect. Let an order be entered granting leave to amend the bill of complaint by permitting said Johann Siegmund Schroeder to ap- pear as a party complainant therein in his right as a member of the firm of I. C. Frese & Co. at any time before the 15th day of May, 1878; and upon such appearance, let a decree be entered for the orators according to the opinion hereinbefore filed, with costs to the orators after the appearance; and if he does not sc« appear, let a decree be entered dismissing the bill of complaint with costs, but without prejudice. Decree. This cause having come on to be heard upon the' bill of com- plaint herein, the answer of the defendant, E. Bachof, the repli- cation of the complainants to such answer, the amendment to the bill of complaint duly entered in the order book, and the proofs — oral, documentary, and written — taken and filed in said cause, and the same having been argued by counsel for the respective parties. And it appearing that the firm of I. C. Frese &: Co. is exclu- sively entitled to the style and arrangement of packages men- tioned in the bill of complaint for containing the medical com- pound known as "Hamburg Tea," manufactured and sold by said firm, and also to the exclusive use of its registered trade-mark, mentioned in said bill of complaint, and that the defendant has. infringed the rights of the complainants by manufacturing, using, and selling what purports to be ".Hamburg Tea," in packages of substantially the same style and arrangement as those to which the complainants' firm, of I. C. Frese & Co., is exclusively enti- OCTOBER, 1877. 9 Frese & Co. vs. Bachof. tied, and also by applying to said packages the complainants' said. registered trade-mark. Now, therefore, in consideration thereof, it is ordered, adjudged and decreed, and the Court doth hereby order, adjudge, and de- cree as follows, viz: 1 . That the said complainants do recover of the defendant those •costs and charges and disbursements in this suit — to be taxed — • which accrued after Johann Siegmund Schroeder has been made a party complainant herein in his right, as a member of the com- plainants' firm of I. C. Frese & Co. 2. That the said complainants do recover of the defendant the damages which the complainants have sustained by, and compen- sation for the manufacture, use, and sale by said defendant of medical or other goods contained in packages made in imitation ■of the style and arrangement of complainants' packages, set forth in the bill of complaint, or resembling the same so nearly as to be •calculated to deceive. 3. That the said complainants do recover of defendant the damages which the complainants have sustained by, and compen- sation for, the manufacture, use and sale, by the defendant of medical or other goods contained in packages to which the com- plainants' registered trade-mark No. 1946, or substantially the same, or so nearly resembling it as to be calculated to deceive, was •affixed. 4. That Joseph M. Denel, of the city of New York, N. Y., be appointed master to ascertain and take and state and report to the Court the number of packages containing medical or other goods manufactured or put up, and the number sold, by the defendant, •or on his behalf, in infringement of the style and arrangement of the complainants' packages, and the number of such packages now on hand; and also the number of packages manufactured or put up, and the number sold by the defendant, or on his behalf, hav- ing the complainants' registered trade-mark No. 1946, or sub- stantially the same, or so nearly resembling the same as to be calculated to deceive, affixed thereto, and the number of such packages on hand; and also the gains, profits, and advantages which the said defendant has received, or which have arisen or Frese & Co. vs. Bachof. accrued to him by reason of such infringements, and the damages suffered by the complainants, and the compensation due the com- plainants by virtue thereof. 5- That the said master, on such accounting, shall have the right to cause an examination of said defendant, and of other witnesses, to be had ore tenus or otherwise, and shall have the right to order the production of the books, vouchers, and documents, and other memoranda of said defendant, his agents, servants, and attorneys;' and that the said defendant and other necessary witnesses attend for such purpose before said master from time to time, as such master shall direct. 6. That a perpetual injunction be issued in this suit forthwith against the said defendant, restraining him, his clerks, agents, servants, attorneys, and workmen, and all claiming or holding under or through him, according to the prayer of the bill of com- plaint for such injunction, but in accordance with the opinion filed in this cause. JANUARY, 1878. 39 1 O Blackwell & Co. vs. Dibrell & Co. IO UNITED STATES CIRCUIT COURT, EASTERN DISTRICT OF VIRGINIA, AT ALEXANDRIA. In Equity. W. T. Blackwell & Co. W. E. Dibrell & Co. Decided 13 January, 1878. Reported 3 Hughes C. Ct., 151. BlackweW s Durham Tobacco Case. Estoppel. In order for one suit to constitute an estoppel upon any party to another suit, four conditions must co-exist, viz: 1st. There must be an identity of the cause of action. 2nd. These must be an identity of parties to the suit. 3rd. There must be an identity in the character or quality of the respective parties, and 4th. There must be an identity of the thing in question. Defendants do business in Richmond, Va., and advertise and sell, as Durham smoking tobacco, tobacco which they put up in Richmond, and which they obtain from any source available to them other than Durham. Such a practice necessarily deceives every purchaser who, in purchasing this Durham smoking tobacco, believes that he is pur- 40 U. S. C. C. EAST. DIST. OF VIRGINIA. Blackwell & Co. vs. Dibrell & Co. lO chasing the fine tobacco put up in the place of that name in North Carolina. 3. The right to use a trade-mark is forfeited by non-user for a period of eight years, and cannot be resumed in prejudice of one who had used it exclusively during the period of abandonment. 4. The assignment by one partner of all his interest in a firm to his co-part- ners carries with it, if not expressly reserved, the right to the exclusive use of a trade-mark of the firm. 5. The right of exclusively using the word Durham in labels on smoking tobacco, belongs to the manufacturers of the article in the town of Durham, North Carolina. 6. A trade-mark consisting of a word and symbol arbitrarily assumed, may be lost by non-use by its owners, especially if the disuse continues as long as eight years. 7. The right of exclusively using the word "Durham" in connection with the picture of a Durham bull in labels ou smoking tobacco, belongs to W. T. Blackwell & Co., of that town. 8. If an equivalent trade-mark, without any knowledge of the first, be originated and devised by another person during such period of disuse, that other person may thereby acquire a right of exclusive use in the second trade-mark. 9. If this second trade-mark during such period of abandonment, acquires a public and valuable geographical and commercial signification, so that the use of the original trade-mark as an arbitrary one, would operate to deceive and defraud the public, a Court of Equity may enjoin against such use of the original one. Mr. Solicitor General Samuel F. Phillips and W. A. Maury of Washington; Mr. Legh R. Page, of Richmond; Mr. John IV Daniel, of Lynchburg; and Messrs. Merriman, Fuller and Ashe, of North Carolina, appeared for the complainants; and Mr. JV H. Broivne, of Washington; Mr. George Harding, of Philadelphia; and Messrs. Williams and Digges, of Lynchburg; and John O. Stigcr, of Richmond, appeared for the defendand. In Chancery. Some time before the year i860, the North Carolina Railroad was laid off over the farm of Dr. Bartlett Durham, in Orange JANUARY, 1878. 41 1 O Blackwell & Co. vs. Dibrell & Co. County, North Carolina. A station was established there, and called Durham Station. This spot shortly became the seat of a small tobacco factory, a blacksmith's shop, a tavern, and the residence of two or three families. It remained an insignificant place until after the civil war, in 1865. It then began to grow up under the effect of a very prosperous tobacco business, which had risen there. In 1866, it was incorporated as a town, and called Durham. Now it is a place of several thousand inhabi- tants, and of a very large business. The original tobacco factory of i860 was conducted by the firm of Morris & Wright. This firm principally manufactured plug tobacco, but it utilized its clippings and waste tobacco by putting it in bags and disposing of it as smoking tobacco. Some time before, or in 186 1, one of the partners of this firm Wesley A. Wright, (who is connected with the defence in this suit), sold out all his interest to the other partner, Morris, and went off into the neighborhood, where he manufactured tobacco in a rude way for a year, and then joined the Confederate Army, and disappeared from Durham Station. To that place he has not returned, either to reside or do business. He seems to have paid a visit there about i87ior 1872. We first hear of him after the war, as a tobacco manufacturer, in 1869, in Liberty, Virginia. He then went to Stewartsville, near Liberty. Hearing that J. R. Green, a successor to Morris & Wright, at Durham, was using the Durham bull as a trade-mark, he adopted the device of the head and neck of a short-horn bull on his tobacco. While at Lynchburg, in 1871, Wright sold to L. L. Armistead a patent which had then recently obtained, No. 111,712, for a compound liquid flavoring — which he used in making an improved smoking tobacco called "Durham Smoking Tobacco," in which appella- tion he used the word Durham as an arbitrary term for the smok- ing tobacco made with the said patented flavoring liquid. Record, p. 211. All right to use the word thus derived by Armistead,- was sold by Armistead in September, 1872, to the firm of W. T. Blackwell, then consisting of W. T. Blackwell and Julian S. Carr, of Durham, N. C. Record, p. 207. It appears from the answer of defendants, Dibrell & Co., that they are and have U. S. C. C. EAST. DIST. OF VIRGINIA. Blackwell & Co. vs. Dibrell & Co. 1 O been using "with the consent and by the authority of the said Wesley A. Wright, a label substantially the same" as that used by the complainants, and filed by them as an exhibit, to wit: A label, having the words and devices, "established i860, at Durham, N. C, the original Durham Smoking Tobacco, W. A. Wright, originator and patentee." The original factory of Morris & Wright, at Durham's Station, went on under different proprietors, and its business has gradually developed into that now conducted by W. T. Blackwell & Co. , the complainants in this suit. It is probably the largest manu- factory of smoking tobacco in the world. Those who profess to know, ascribe the prosperity which has at- tended this business to the peculiar excellence of the tobacco grown in several counties North of Durham, which market their product at that place. They say that it is through the influence of the climate or soil, or both, that the tobacco raised in the counties of Alamance, Orange, Caswell, Person, and Granville, in North Carolina, three-fourths of which is brought to Durham, has this quality. It is probable that there is more demand for Durham tobacco as a smoking tobacco than for any other grown in the United States. It is regarded as superior to all other articles for making granulated tobacco on account of its bright color and fine natural flavor; its being chiefly flue, sun, or air cured, and thin in the leaf and sweet. Nineteen-twentieths of the tobacco manufactured at and sent from Durham is grown in the counties named. Durham is the principal market for the tobacco of these counties. A circumstance which is claimed to have given this tobacco the most sudden and wide-spread celebrity was the following : Just at the close of the war the factory at Durham, which has been mentioned, had come down by assignment and succession to, and was then conducted by, one J. R. Green. At the time that Sherman's and Johnston's armies were in Orange County, Green happened to have a large quantity of loose leaf tobacco lying in bulk on the floor of his factory. Of course this was a prey which soldiers of either army as they passed along eagerly seized upon, and the evidence is that the whole of this loose tobacco was thus. JANUARY, 1878. 43 IO Black-well & Co. vs. Dibrell & Co. carried away, and as the armies were soon disbanded much of it is conjectured to have been carried to distant parts of the Union. At all events, the excellent quality of this smoking tobacco speedily obtained wide-spread advertisement and celebrity, and ever since then orders have come to Durham from every quarter of the United States. J. R. Green found his business growing up rapidly under his hands. He at once adopted as his brand or label, and put it upon his bags, the words, "Durham Smoking Tobacco." He connected with these words the side figure of a short-horn bull, as a symbol of the word Durham ; and he had a full size painting of such a bull placed broadside upon his factory, in conspicuous view of the railroad, as ^.n advertisement of his business to all travellers. Green having died, his 'business passed by succession and assignment to Blackwell and others, and is now conducted by W. T. Blackwell & Co., the complainants in this cause. The name Durham placed in Green's brand was, of course, suggested by the place where the species of tobacco in which he dealt was. principally marketed, and was intended as descriptive of that to- bacco. It indicated tobacco grown in what Wheeler called the "Golden Belt of North Carolina." The trade-mark of a Durham bull was naturally assumed as a symbol of the word Durham, which had come to characterize the particular growth and quality of tobacco which is marketed and manufactured at Durham. Those who claim under Wright disclaim that the word Durham, as used by him and them, has any reference to the place, Dur- ham's Station, or Durham, in North Carolina, or to the tobacco marketed there by planters. They claim that Wright, when he manufactured tobacco near Durham's, a place then of utter in- significance, used the word Durham as an arbitrary term ; that his tobacco was flavored with certain liquids invented and artifi- cially concocted by him; that it was this flavoring, and not the soil or climate of the region trading at Durham, that gave his tobacco its excellence, and that the name Durham, and the device of a Durham bull were suggested to him about the year i860, by see- ing the brand of Durham mustard on a tin box. Wright's testi- mony on this head is as follows : Was in business at Liberty, 44 U. S. C. C. EAST. DIST. OF VIRGINIA. Blackwell & Co. vs. Dibrell & Co. 1 O Va., in 1869 ; tllat was the nrst time the bull's head was used ; first view was to adopt the entire bull in connection with the word Durham ; the reason of not doing so was that his two sons in Ken- tucky wrote him that J. R. Green, of Durham, N. C, had adopted the bull on his brand, and he did not wish to interfere with any- thing that was ahead of him ; first conceived the idea of using the word Durham, and the bull in connection with, it in i860; and the reason why he did not carry it out until 1869 was his inability to do so for the want of funds ; the idea was first suggested by pick- ing up a card [can ! ] of Durham mustard with the vignette of a bull on it. Wright claims that Morris & Wright used the word Durham on their labels in i860, and that he himself used the word in his label when living near Durham in 1861; but the evidence on this point is not at all conclusive. On the other hand, the complainants deny that the word Durham was used at all before 1865 '6r 1866, either on the labels of Mor- ris & Wright or of any of the successive firms which followed the original firm of Morris & Wright in the business at Durham's, if it was used, however, they claim the right to the exclusive use of it as successors and assignees of Morris, who bought out Wright's interest in the business of Morris & Wright. They insist, more- over, that Durham as descriptive of tobacco, is a geographical term, which first gained its significance just after the war, in 1865- 66; that it derived its significance solely from the use of it by J. R. Green; and that, as Green's successors, they are entitled to the exclusive use of it. They patented a trade-mark in 1870 (No, 122J, .their patent describing their trade-mark as "painted on glazed paper, upon which is represented a side view of a Durham bull and the words Genuine Smoking Tobacco." In 187 1 a suit was brought in the Superior Court of North Caro- lina by W. T. Blackwell against W. A. Wright, {Blackwell v. Wright, 73 N. C, 310), in which the complainant, claiming a right to the exclusive use of the word Durham as a descriptive term for his smoking tobacco, on the same label with his symbolic trade- mark of the side view of a short horn bull, sought to enjoin the defendant Wright from using the word Durham as a description JANUARY, 1878. 45 IO Blackwell & Co. vs. Dibrell & Co. of his smoking tobacco upon a label similar in color, material, and general appearance, having on it the head and neck of a short horn bull. The suit was a trade-mark suit, and the complaint contained no charge of fraud in deceiving the public, and no prayer for an injunction to prevent the use of a label deceptively assimi- lated to that of the complainant. The suit, after going to the Supreme Court of North Carolina, was dismissed on demurrer to the complaint, the demurrer being based on the ground that the com- plainant did riot, by formal allegations of assignments, trace his title to the exclusive use of the trade-mark in question from J. R. Green. In the same year a suit was brought in the United States Circuit Court for the Western District of Virginia, at Lynchburg, by W. T. Blackwell and J. S. Carr, partners, trading under the firm-name of W. T. Blackwell, against L. L. Armistead. See infra, p. 163, and Blackwell v. Armistead, Brown on Trade-Marks, 510. In that suit the complainants claimed the exclusive right to use the trade-mark already described, including the word Durham and the side view of short horn bull; charged an infringement of it by Armistead, as assignee of William A. Wright, in the use of the label of Wright, also already described; and prayed an injunction against all further use of the last named label. In this suit the complainants prevailed, and a perpetual injunction was granted; and the matters in controversy were afterwards compromised. Under this condition of facts, the complainants, W. T. Black- well & Co., a firm now consisting of W. T. Blackwell, James R. Day and Julian S. Carr, of Durham, N. C, have brought their bill into this Court against W. E. Dibrell and W. W. Phillips, partners, doing business in Richmond, Va. , under the firm-name of W. E. Dibrell & Co. The complainants claim an exclusive right to use the trade-mark described in their patent (No. 122); they charge that the defendants are using the device and trade- mark which has been described as an imitation of their own and in infringement of their exclusive right; they allege that the defendants nowhere put their own name upon their labels, and that they disclose by such concealment an intention to defraud the complainants and the public generally, and they charge also, that 46 U. S. C. C. EAST. DIST. OF VIRGINIA. Black-well & Co. zv. Dibrell & Co. lO by the use of said label and trade-mark the defendants are practic- ing a fraud and deception by which the public are deluded, and induced to buy the said smoking tobacco as and for smoking tobacco made in Durham by the complainants. They charge also that the decree in the suit of Blackwell v. Armistead 'estops Wright and all others claiming under him from using the Wright label. The bill prays'for an account and for a perpetual injunction. The answer of defendants denies the right of complainants to the exclusive use of the word Durham in their label; denies that the AVright label is a fraudulent simulation of Blackwell' s; founds their own title to use it upon the title of Wright, originating in i860, and claimed to be still subsisting, and denies any intention to defraud the complainants or deceive the public. The answer also claims that Blackwell and W.T. Blackwell & Co., are estopped from claiming the exclusive use of the word Durham in their label by the decree of the Supreme Court of North Carolina in the case of Blackwell v. Wright. The following opinion was delivered by Hughes, J.: It is useless to review all the points relied upon by counsel on each side in their able argument in the cause. I shall consider only those questions upon which, in my judgment, the case really turns. I shall first deal with the objection of estoppel or res judicata, urged by each party against the other. 1. In order for one suit to constitute an estoppel upon any party to another suit, four conditions must co-exist, viz: 1st. There must be an identity of the cause of action. 2d. There must be an iden- tity of parties to the suit. 3d. There must be an identity in the character or quality of the respective parties ; and 4th. There must be an identity of the thing in question. See Smith v. Turner, 1 Hughes, 375. These conditions of identity do not exist between the present case and either of the cases of Blackwell v. Wright or Blackwell v. Armistead. These cases therefore, do not operate as estoppels, nor do they at all affect the one now under consideration, except so JANUARY, 1878. 47 IO Blackwell & Co. vs. Dibrell & Co. far as they are precedents of authority upon the principles which were decided by them. In Blackwell v. Wright the decision was upon demurrer to the complaint; and, in technical effect, it was only that Blackwell had not traced his title to his trade-mark by proper allegations from Green; while, on the merits, the decision went only so far as to determine that the allegations of the com- plaint did not make a case of exclusive right to the trade-mark for the plaintiff. The complaint there did not charge that Wright's use of the trade-mark was a fraud upon the public, or pray for an injunction on that ground. None of these allegations can be made •of the complainant's bill in this case. In Blackwell v. Armistead 'it is true that the decision was upon the principal questions raised in the present case ; but owing to the ■character of the pleadings it was based upon grounds narrower and more technical than those upon which I propose to found the pres- ent decision. That suit was a trade-mark case. This is more, and involves the question of the fraudulent use of a trade-mark, to the injury of the public at large, as well as of the complainants. Therefore neither of the two cases which have been urged in estoppel govern even as precedents the present one, which I shall now proceed to consider. Two questions arise as to the pleadings and evidence : 1st. The first is, whether the defendants have any right at all to use a label in which the word Durham is used as descriptive of smoking tobacco, and in which the figure of a short -horn bull is used as a symbol of the word Durham ; their right to the exclusive use of it not being claimed. 2d. The second question is, whether the complainants have a right to the exclusive use of such a label. In considering the first question, I shall for the sake of brevity speak of the defendants' right to use the label described as Wright's, inasmuch as their title to use such a label could come, under the evidence in this cause, only from Wright. Has, .then, Wright, or his assignees, now, or have they at any time since 1865, had any right at all to use a label having in it the word Durham, as descriptive of smoking tobacco, and having also in it the figure of a short horn bull, or any part of that animal, as 48 U. S. C. C. EAST. DIST. OF VIRGINIA. Blackvvell & Co. vs. Dibrell & Co. 1 O a symbol of the word Durham? Of course their- title to use the word and the symbol stands on the same basis ; if it falls as to the word.it falls also as to the symbol of the word. There can be no doubt of Green's original right to the exclusive use >of the full figure of a short horn bull as a trade-mark. That is virtually conceded by Wright himself in his testimony. As to the word Durham as descriptive of smoking tobacco, the right to use it is in this cause claimed by defendants, who do business in Richmond, Va., and who advertise and sell, as Dur- ham smoking tobacco, tobacco which they put up in Richmond, and which they obtain from any source available to them other than Durham. 2. Such a practice necessarily deceives every purchaser who, in purchasing this Durham smoking tobacco, believes that he is pur- chasing the fine tobacco put up in the place of that name in North Carolina. Dibrell & Co., claim solely from Wright. What then, is Wright's title under which this deception comes about? He claims that he did not, in 1861, sell his right in the label used by Morris & Wright, to his partner, Morris, when he sold all his interest in the business. He claims that he. derived the word Durham and the device of a short horn bull from a Dur- ham mustard box. He pretends that neither the word nor the device, as invented and used by him, was descriptive or geograph- ical in purport, but that they were arbitrary symbols, and that having been so at the beginning he and his assignees have still a right to use them. 3. The objection to this pretension lies not merely in the im- probability of the origin of the word Durham and its symbol which Wright recounts, or in the unsatisfactory character of the evidence on which his original right to use the word and its sym- bol is based, or in the presumption that when he sold in 1861, he sold all his interest to Morris; but it lies also in these two facts, viz: 1st. That whatever title Wright had to the use of the word Durham after leaving Morris in or about the year, 1861, was lost by non-use, his disuse continuing through a period of eight or nine years after he left the vicinity of Durham's; and 2nd. That during this long period of disuse, the brand of Durham smoking JANUARY, 1878. 49 1 O Blackwell & Co. vs. Dibrell & Co. tobacco acquired a definite and peculiar meaning with dealers and consumers; the word Durham ceasing to be (even if it ever was) a mere arbitrary term, and having obtained a geographical signification as to the place — Durham, and a commercial signifi- cation as to the articles of tobacco manufactured at Durham. During the interval of disuse, the phrase Durham tobacco had come to indicate that portion of the product of a particular region of country which was marketed at the place called Dur- ham's or Durham. The phrase "Durham Smoking Tobacco" had come to indicate in all markets, and among all dealers and con- sumers, the smoking tobacco marketed and manufactured at this place of Durham, in North Carolina. It was not until after this signification had attached to the phrase that Wright adopted (or, as he pretends, returned to), the use of the word Durham, which he had abandoned. If, as he claims, the word Durham had in fact been used by him at first as an arbitrary trade-mark, and if, in addition, he had continued the use of it without interruption down to 1866, and on to the present time, that use by him would itself have prevented the other and local signification from attaching to the brand and word; for in that case, Durham smoking tobacco would have described two tobaccos: first, those marked and manufactured at Durham, and, second, those sprinkled with Wright's "Durham" juice. But he did abandon its use; he stood by for some eight years, and allowed a peculiar c'ommercial and local signification to at- tach to the word Durham as descriptive of smoking tobacco, and not until after that local and commercial signification had come to identify the tobacco labelled with the word all over the country as coming from a particular region, and as having a particular quality, and not until after this brand had come to be worth thousands of dollars to the manufacturers of this particu- lar tobacco at this particular place, did he begin or resume the use of the .deyice, which he claims to have derived from the mus- tard can. 2. To put that word now on tobacco grown elsewhere than at Durham, even though sprinkled with his "Durham" decoction, 4 50 U. S. C. C. EAST. DIST. OF VIRGINIA. Blackwell & Co. vs. Dibrell & Co. 1 O is, in the light of the evidence in this case, to pass them off as. tobaccos coming from Durham, and is to deceive and defraud all who deal in and purchase the commodity as smoking tobacco from Durham. It has so come to pass from Wright's non-use for eight years, that to manufacture and sell other tobaccos at all and brand them with the word Durham is to deceive the public, no matter what liquid may be used on them. Under existing circumstances, to manufacture even Durham tobacco elsewhere than at Durham, and to sprinkle them with a foreign liquid, is to deceive the public generally, and those who put up the genu- ine article at that place particularly. The manufacture of these tobaccos at that place is the best guarantee which the public and the trade can have, that the com- mercial article labelled Durham Smoking Tobacco, and sold in all markets, is genuine, and prepared under the fewest tempta- tions to adulteration. 3. That the right to use a trade-mark may be lost by abandon- ment or disuse is too clear to need argument or the support of authority. The law of the subject is stated in the chapter on Abandonment, sections 674 to 691, of Brown on Trade-Marks. It cannot be pretended that in Green's first use of his label, in 1865 or 1866, he had any intention of taking up an old label at second hand, or had any knowledge or belief that Wright, or any one else, could claim the label which he then devised as en- tirely novel and peculiar. The field was open to his enterprise and invention, for establishing his business and inventing his label and trade-mark just as he -did. Green's adoption in 1865 or '66 of the word Durham, as de- scriptive of the best tobacco of North Carolina put up by him, and of the bull as a symbol of the word, was naturally suggested by the fact of his business. If Wright had ever had such a label, which I do not feel that the evidence warrants us to believe, it was in 1865-66 unknown in Durham; had been abandoned even then for some four years; had never signified anything but tobacco- sprinkled with Wright's decoction; and had never borne the valu- able and creditable commercial signification which the climate and soil and good husbandry of North Carolina and the enterprise of a Durham manufacturer were about to give it. JANUARY, 1878. 51 1 O Black-well & Co. vs. Dibrell & Co. By the several facts of Wright's non-user of the label for eight years; of its never having, even as claimed by him, had any but an arbitrary significance as tobacco sprinkled with a species of artificial treacle, and of its having during a long period of disuse acquired a new, wholly different, and well and widely known 1 geographical and commercial signification , Wright lost his right of using the label altogether. His use of it now operates neces- sarily to mislead and deceive the public as to the source of pro- duction and quality of the article bearing the label, thereby de- frauding them: and the Court will therefore make a decree of per- petual injunction against the further use of it. As to the second question, whether Blackwell & Co., have an exclusive right to the use of the label described in the pleading, I think on the evidence submitted that they have. We have no hesitation in so deciding as against the defendant in this cause, and will incorporate in the decree of the Court an order for an account of profits against the defendant as prayed in the bill. 5. The label arid trade-mark of complainants was established in 1865 by J. R. Green. His business and that of his successors built up the insignificant and obscure place, Durham's Station, into the flourishing town "Durham." The town grew up during the first four or five years of the > use of the label, and owed its growth in chief part to the business indicated by the label. In that respect the case is similar to that of the trade-mark Cocoa.ine, Burnett v. Phalon, 3 Keyes, 394. In respect to the commercial article bearing the geographical name, it is similar to that of 'the Akron cement, Newman v. Alwood, 51 New York, 189. The right of the complainants in this case has the double strength of that of the proprietors' of the trade-mark Cocoaine, and of that of the Akron cement. The use of the principal characteristics of their trade-mark by manufacturers not conducting their business at Durham is a deception put upon the public, and may be en- joined on that ground alone, irrespectively of the trade-mark right. 4. The use of the trade-mark invented by Green under which he and his successors built up his trade, and built up the town of Durham, like the use of the word Akron to the proprietors of the commercial article bearing that name, belongs exclusively to the 52 U. S. C. C. EAST. DIST. OF VIRGINIA. Blackwell & Co. vs. Dibvell & Co. 1 O successors of Green, and the Court should secure its exclusive use to them. I have some doubt whether in a litigation between Blackwell & Co., on the one hand, and defendants not doing business in the town of Durham on the other, it was competent for the Court to decree that Blackwell & Co. have the exclusive right to the use of the word and symbol characterizing their trade-mark; but it is certainly competent for us to render a decree responsive to the issue made up by the allegations and denials of the bill and answer, one of which is this right' of exclusive use claimed by Blackwell & Co. As between the complainants and defendants in this suit, therefore, we may so decree, even though other persons than the defendants to this record be not bound by the decree. Judge Bond concurred in the decree, but is not responsible for every position taken in the opinion. This trade-mark had been the subject of a previous suit in the Circuit of the Western District of Virginia. The following was the decision of Judge Rives on similar questions to those decided as just reported by the Circuit Court of the Eastern District of Virginia. United States Circuit Court, Western District of Virginia, at Lynchburg, March Term, 1872. IV. T. Blackwell and J. S. Carr, partners under the style of IV. T. Blackwell v. L. L. Armistead. In Chancery. Rives, J.: The preliminary injunction in this case was founded on the statement in the bill. In pursuance of the notice required by statute, the defendant contested its allegations upon ex parte affi- davits assailing the title of the plaintiffs. But in that incipient state of the proceedings it would not have been proper, if at all practicable, to pass upon the merits of their defence; and the only question there was, whether the case as presented by the bill and affected by this adverse testimony, was still such as to require this JANUARY, 1878. 53 1 O Blackwell & Co. vs. Dibvell & Co. stay, till the merits of the controversy could be developed by fur- ther pleading and' testimony. The. propriety of this interposition by the Court will scarcely be now questioned, as these further pro- ceedings have shown the case to be one of perplexity and doubt. The pleadings have now been perfected. The defendant's answer was duly filed, issue taken upon it, and the cause set down for final hearing. A vast volume of testimony has also been taken, some of it contradictory, and a vast deal of it irrelevant and imper- tinent. It is to be regretted that the zeal of counsel or the anxiety of parties should have so augmented the bulk of this testimony as to make a needlessly expensive record of it, and to devolve upon all engaged in its examination a wearisome amount of unprofitable reading. Still it is a subject of congratulation that the cause is now fully developed in all its aspects and bear- ings, and has been argued with a discriminating force and fulness of research alike masterly and instructive, and calculated to pro- duce settled convictions one way or the other. Our first task is to acquire accurate and precise ideas of the is- sues made by the pleadings. If this be done, and then the law be properly applied, it seems to me we can reach a safe conclusion almost without resorting to the voluminous testimony. The plaintiffs claim a trade-mark, designed in 1865 or '66, and" Continu- ously used ever since. It is exemplified and made a part of their bill. The descriptive terms are " Genuine Durham Smoking To- bacco," and the symbol or device is the side view of a Durham bull. They assert that this trade-mark has been violated by the defendant in using, under date of January, 187 1, these terms; "The Durham Smoking Tobacco," and the symbol or device of "a bull's head," with a note of the sale to the defendant of Wright's patent for the manufacture of "Genuine Durham Smok- ing Tobacco." This latter trade-mark of the defendant is also exemplified in the bill and placed in juxtaposition and contrast with the plaintiffs' trade-mark. The answer, while calling for full proof of the allegations of the bill, does not directly deny this statement, but rests the defence upon three chief grounds: 1. The prior use of this trade-mark by Wright (under whom the defendant claims) as far back as 54 U. S. C. C. EAST. DIST. OF VIRGINIA. Blackwell & Co. vs. Dibrell & Co. 1 O i860. 2. That the defendant's trade-mark is not an infringe- ment of the plaintiffs, but is wholly dissimilar; and 3. That the plaintiffs, by fraudulent representations in the premises, have de- prived themselves of all equitable assistance. The main contest is considered by all parties and the counsel in this case to rest on the priority in the use of this disputed trade- mark. The defendant does not pretend that Wright, under whom he claims, ever used the identical trade-mark set up by the plain- tiffs. On the' contrary, he takes especial pains to show that he placed no particular value on the term "Durham," which he now asserts belongs in common to his and plaintiff's brands. The dis- covery which he had made, and for which he seeks protection, was his preparation for a mode of treating smoking tobacco, so as to mitigate its noxious qualities and impart to it an agreeable flavor. This is the merit he claims ; this the process he has patented. The testimony and the answer concur in proving that the whole merit of this smoking tobacco, and its celebrity, were due to the use of the flavoring he gave his tobacco. He was con- fessedly the first to commence its manufacture at Durham's Sta- tion. There was nothing in the locality he could have reason- ably counted upon to commend his manufacture to the public. But, if we are to credit the defendant's answer and his testimony in this cause, it was his discovery of the flavoring compound on which he plumed himself. Accordingly, it was this which he em- blazoned on his stencil plate. Take his own statement for the present, and what was his brand? "Best Spanish Flavored Durham Smoking Tobacco." What, in view of the pleadings and evidence in this cause, is the characteristic, the vital element of this trade-mark? Manifestly, "Best Spanish Flavored." That was the only conspicuous and discriminating element in the trade- mark. "Durham," if indeed a part of it, was, upon the defend- ants' own showing, subordinate and insignificant. Now, the plaintiffs concede in the fullest manner Wright's superior title to the use and brand of his flavoring compound, and disclaim in their process any infringement of it ; nor does it appear that there has been any, nor, indeed, any formal complaint of it. The pretension of the defendant, then, amounts to this; that because, in i860, he branded his smoking tobacco "Best Spanish JANUARY, 1878. 55 1 O Blackwell & Co. vs. Dibrell & Co. Flavored Durham," wholly because of the mode in which he flavored it, no subsequent manufacturer of the article at Durham, without the use of his process, shall brand his as "Genuine Dur- ham Smoking Tobacco" with a symbol which he never used. The reply is that, under the circumstance of his use of the name "Durham," there was nothing in it so descriptive as to restrain succeeding manufacturers at the same place from engrafting it on their brand, so long as they laid no claim to nor made any use of his "Best Spanish Flavored" compound, which he, indeed, ap- propriated by this first and original use of this only conspicuous term on his stencil plate in 1860-61. It must be remembered that Wright was only in the infancy of this manufacture at Dur- ham, and that others followed and developed it till the plaintiffs instituted their brand in 1865 or 1866. Conceding, then, all the defendant claims by virtue of his pur- chase from Wright, he fails, in my opinion, to rebut the plaintiffs' title by proving a brand as used by Wright previously, wherein "Best Spanish Flavored'''' was the distinguishing attribute, and "Durham," under the circumstances at that time, a mere un- meaning incident. Thus stands this point in the light of the pleadings alone, the allegation of the plaintiffs on the one hand, and the denials and defences of the defendant on the other. The testimony as to the fact whether the term "Durham" was ever upon thestencil-plate of Morris & Wright is contradictory. But in my opinion it preponderates against the existence of that name in that brand. Counsel have adroitly insisted that the testimony against it is negative, and cannot from its nature, however commanding, overcome clear affirmative proofs. The proposition of law involved in the statement is correct; but the whole inquiry is into a fact, namely: What was the stencil used by Morris & Wright? Some, on the one hand, who had used it, declare with emphasis it was "Morris & Wright's Best Spanish Flavored Smoking Tobacco;" others, but namely, Wright and his two sons — the latter at the time but boys — stated it as "Morris <3° Wright's Best Spanish Flavored Durham Tobacco." The proofs, therefore, on both sides are equally affirmative. If, then, it be left in doubt, we must look to the probabilities of the case 56 U. S. C. C. EAST. DIST. OF VIRGINIA.- Blackwell & Co. vs. Dibrell & Co. lO to turn the scales. What motive could have existed with Wright,, all^ whose reliance was upon the merits of his flavoring compound, to invoke the name of a small, thriftless station on a railroad, settled by only two or three families, with a store and this fac- tory, to invoke its name to give celebrity to the preparation to which he solely looked for his reward ! It seems to me extremely improbable, upon ordinary grounds of reason and human action, to suppose that he used " Durham'" on his stencil at all. On comparing and weighing the testimony on both sides, I am con- strained to admit the conclusion that he did not. Neither he nor his vendee, therefore, have any claim to contest, under this state of the evidence, the validity of the plaintiffs' trade-mark and their original and paramount title thereto. It cannot be denied that it is abundantly proven in this cause, that the manufacture of Morris & Wright, and of those who suc- ceeded them at Durham, was known, called, and distinguished in the market as "Durham" smoking tobacco. It is on this noto- rious fact in the cause that the able and ingenious argument has. been raised, that the public, by its voice, may appropriate and consecrate to an individual, property in a designation by which he may choose to denote any rJroduct of his industry. But I can find no warrant for such proposition in the law of this subject. On the contrary, it is distinctly laid down by the authorities, that it is only the actual use of the mark, device, or symbol by the dealer which entitles him to it, and gives him the right to be protected in the enjoyment of it. The doctrine on this subject has grown with commerce, and has assumed the form and title of a distinct body of law under the moulding hand of able Judges, who have sought in their deci- sions to establish its guiding principle, and of acute commenta- tors and essayists, who have exerted the powers of a superior- analysis and discrimination to extricate from doubt the true maxim of this beneficent code of business ethics. So much of it as is necessary for our present inquiry is com- prehended in a single proposition. It is the seminal principle of the whole doctrine. The simple statement of it is, that the dealer has property in his trade-mark. [ANUARY, 1878. 57 1 O Blackwell & Co. vs. Dibrell & Co. 5. This is allowed him because of the right which every man has to the rewards of his industry and the fruits of his discovery, and because of the wrong of permitting one man to use as his own that which belongs to another. In regard to the latter, it may be well said that any imitation of a trade-mark, calculated to deceive the unwary customer, differs from an absolute forgery, not in the nature, but rather in the extent of the injury. The dissimilarity to the expert wholesale dealer may be such as to save him from the imposition, but too slight, and that perhaps by design, to diminish sales to the incautious purchaser. But upon the success of fraud depends, ultimately, the extent of the in- jury. Let the spurious fabrication meet the same sale among private and individual consumers as the genuine article, and the wholesale dealer loses all motive for the exercise of his skill in detection, when he, perhaps, can reap better profits from the spurious, and therefore cheaper, than from the genuine article. In this way a simulated trade -mark may work the same mischief, and to the same extent as a forgery, defying detection at the hands of the expert. With this view of the law I proceed to examine the second ground of defence, that the defendant has not infringed the trade- mark of the plaintiffs. That is scarcely the subject of argument. It must be referred to ocular examination and decision. Place the respective trade-marks side by side, contrast the labels, the words, and the devices, and each one's vision must determine for himself whether the imitation is such as to deceive the unpracticed and unwary customer. It matters not now, in the critical inspec- tion of them, and aided by ingenious counsel, we can clearly dis- cern differences between the two. The true question is, whether, taking the "tout ensemble,'' Armistead's trade-mark might not pass with the unwary for that of William L. Blackwell & Co.; and if that be so, the wrong is done, and the title of the latter to be protected by this Court is consummated. For my part, I do not see how trade-marks so similar could escape being confounded in the market. One reads "Genuine Durham Smoking Tobacco;" the other " The Durham Smoking Tobacco." This use of the definite article makes these phrases equivalent. To remove all 58 U. S. C. C. EAST. DIST. OF VIRGINIA. Blackwell & Co. vs. Bibrell & Co. 1 O doubt, and aid the deception, in the note of the sale of the patent to Armistead, it reads, for << Genuine Durham Smoking Tobacco." Thus the language, to this extent, of the label is identical. Now, as to the symbols, or devices ; one is the side view of the Durham bull ; the other, that of his head, on a medallion. The one sym- bolizes, by a part, the name "Durham" as effectually as the other does by the whole. The color of the paper is also the same. Whether this simulation be the product of accident or design does not matter. It is the province of this Court to suppress it in either case. It is a little curious, however, to note that Wright's first label, at Liberty or in Bedford, was wholly different ; and that af- ter his son had seen plaintiffs' trade-mark in Kentucky, and after his return to his father, the present trade-mark, as transferred to the defendant, was adopted by Wright. The third and last ground of defence is that the plaintiffs have forfeited their right to relief in this Court by reason of their false and fraudulent pretensions. This is upon the ancient and famil- iar principles that those who do iniquity must not ask nor expect equity. It is worthy of all acceptation, it is a hoary maxim, hal- lowed by its age, and unlike some other sacred antiquities, as yet unassailed by the spirit of change or reckless progress ; I adhere to it. But the charges are serious and demand investigation. The first is that the plaintiffs sent out business envelopes and business cards, giving the year i860 as the date of the establish- ment of their enterprise. In the absence of explanation this might well impugn the bona fides of the plaintiffs, as in their bill they fix it no earlier than 1865. But was this statement by mis- take or design ? Have the plaintiffs failed to account for it? A junior member of the firm was examined, and showed how it all occurred innocently, and without intent to deceive. He oidefed the printing and gave the date ; soon after the packages were re- ceived and opened in the presence of Dr. Blackwell. The latter saw the error of date and corrected it ; and the witness stated that he proceeded to correct the misdate by writing the figure (5) over the cipher in i860, so as to make the date 1865, as corrected by Dr. Blackwell, but that some might have gone out before the cor- rection. The exhibits made by the defendant of these envelopes JANUARY, 1 8^8. 59 1 O Blackwell & Co. vs. Dibrell & Co. and cards corroborate rather than conflict with the witness. That should not be taken for fraud which is proved by an unimpeacbed witness to have been a mistake on his part. Besides there was no reasonable motive for such misrepresentation ; the plaintiffs had nothing to gain by it, but much' to lose, on the hypothesis of the counsel for the defendant. The next is a charge of falsehood in representing that the label was secured by copyright. There is not a particle of proof to that effect. Argument and ridicule alone are relied upon to show the inapplicability and absurdity of a copyright for such a print. The language of the statute is certainly comprehensive enough to embrace a label of this kind. Act of July &th, 1870, sec. 86, United States Statute at Large, vol. 16, p. 212. The object of such copyright is to secure to "the authors, inventors, or designer" of any such << print" the sole liberty of printing and vending the same. It forbids the surreptitious use and illegal sale of his labels. This is a perfectly legitimate resort to copyright in such a case and for such a purpose. It would, indeed, be absurd and ridiculous if the object were, as sarcastically portrayed by counsel, to protect the de- signer against the unlawful multiplication of such ycleped works of art. The dealer seeks merely by his copyright to keep the printing and vending of his labels in his own hands and under his control. It has been resorted to in other cases, as, for instance, the case of Wolfe v. Goulard, Cox American Trade-Mark Cases, 227, for the label of "Schiedam Schnapps.'" There is nothing unreasonable or incredible in this claim of the plaintiffs to a copyright for their label, nor is there anything in the testimony or the law to lead us to discredit it and brand it as a falsehood. It seems to me, therefore, that both these charges are unfounded. They spring from the heat of forensic contests. They pertain to the polemics of the bar. Their effect is to provoke recrimination. Hence, the plaintiffs' counsel retaliate by imputing falsehood to the defendant in dating this purchase of Wright's the 1st of Janu- ary, when he had stated in his answer he would not buy till he had ascertained his title by certificates, and those very certificates bore the subsequent date of the 6th of that month. The imputation seems plausible, but the transaction is susceptible of a more chari- 6o U. S. C. C. EA'ST. DIST. OF VIRGINIA. Blackwell & Co. vs. Dibrell & Co. 1 O table construction, which I deem it my duty to put upon it. Dates are commonly immaterial, and often misapplied in business trans- actions. The main fact is doubtless correctly stated by the defen- dant, though he is made himself to confront it by a mistaken date. I am glad therefore to have it in my power to state that there is nothing in this cause to affect the fair fame of the parties, plaintiff or defendant. They are doubtless respectable men, and enter- prising manufacturers of tobacco in their respective communities. They are engaged, as I believe, in the honest pursuit of their rights as they respectively understand them. The defendant has acted on the information of another, under whom he claims. He has obeyed the order of this Court. The only thing that I have to regret is, that the same deference was not paid by another manu- facturer; who, though no party to this suit, could not have been ignorant of it from his very relation to the defendant. But the •plaintiffs have not chosen to bring him before this Court, save in proving his acts in the use of the simulated mark, notwithstand- ing the injunction upon his brother. ' I am sure the plaintiffs and defendant, as enterprising dealers, will find their ultimate interests subserved by the doctrine I have sought to expound and maintain as to their trade -marks. Whoever may now be the loser by it may soon have occasion to invoke it for his own protection, and they whose rights are now sustained, must learn thereby to respect those of other competitors in their business, at the same time that they take encouragement to them- selves from their present success. All intelligent men engaged in manufactures and other enterprises must sooner or later become reconciled to losses in whatever quarter they may fall, that may be fairly viewed as penalties for the infraction, however uninten- tional, of laws well settled, designed, and calculated to vindicate the honor, advance the morals, and promote the interests of trade. For these reasons I decree the perpetuation of the injunction, and order an account to be taken by a master, of the profits made by the defendant from his sales under the simulated trade -mark aforesaid. JANUARY, 1878. 6l 1 1 Actien Gesellschaft Apollinaris Brunnen vs. Sombom. 11 UNITED STATES CIRCUIT COURT, SOUTHERN DISTRICT OF NEW YORK. In Equity. Actiex Gesellschaft Apollinaris Brunnex vs. Julius Sqmborn and Lazarus Somborx. Decided 16 January, i Reported 14 Black., 380. Apollinaris vs. Apollinis. The use, cm labels and bottles, of the word Apollinis, in connection with the representation of a bow and arrow or anchor, was restrained by preliminary injunction, on account of the similarity between them and the word Apollinaris, and the representation of an anchor, as before used by the plaintiff, as being calculated and designed to induce the supposition, by users and dealers, that the waters of the defendant, so marked, were the waters of the plaintiff; but the plaintiff was ordered to give a bond to pay all damages to the defendant, if it should be finally determined that the plaintiff was not entitled to the injunction. Rowland Cox, for the plaintiff. .Edward T. Bartlctt, for the defendants. 62 U. S. C. C. SOUTH. DIST. OF NEW YORK. Actien Gesellschaft Apollinaris Bruimen vs. Sombom. X 1 Wheeler, J.: Upon the hearing of the motion of the orator for a prelimi- nary injunction in this cause, it is considered, that the use, by the defendants, on their labels and bottles, of the word Apollinis, in connection with the representation of a bow and arrow, or anchor, as ,used by them, on accouut of the similarity between them and the 'word Apollinaris and the representation of an anchor, as before used by the orator, is calculated to lead those using and dealing in such waters, to suppose that the waters of the defendants so marked are the waters of the orator; and as there is no other reason apparent, but that the use of these symbols was adopted for that purpose, wherefore, it is ordered, that, upon the filing a bond to the defendants, in such penal sum as shall be fixed by the clerk, as a master of this Court, with good surety approved by him, conditioned for the payment of all damages to the defendants, in case it shall finally be deter- mined, in this cause, that the orator is not entitled to this injunc- tion, a writ of injunction do issue, to restrain the defendants from the further use of the word Apollinis, and such representations of an anchor, or bow and arrow in connection with the sale of their waters, until further order in the premises. JANUARY, 1878. 63 1 3 Enoch Morgan's Soils' Co. vs. Schwachofer 12 NEW YORK SUPREME COURT, FIRST DEPART- MENT. In Equity. Special Term. Enoch Morgan's Sons' Company vs. Schwachofer. Decided January, 1878. Reported 5 Abbott's Pr., New Cases, 265. Sapolvo vs. Sophia. TRADE-MARK. COLORABLE IMITATION. The doctrine of relief in equity, against infringement of trade-marks, rests upon the principle, that no one should be permitted so to dress his goods for sale, as to enable him to induce purchasers to believe that they are the goods of another. To sustain an action in a State Court for an injunction against an infringement or imitation of trade-mark or labels, plaintiff, although his label contains a registered trade-mark, need not prove an imitation of that mark. It is enough if the general effect of the defendant's wrapper and label, constitute a wrongful imitation of those of plaintiff, although defendant may have replaced the symbol or "trade-mark," with a clearly different device. 64 SUPREME COURT OF NEW YORK. Enoch Morgan's Sons' Co. vs. Schwachofer. 12 3. It is quite difficult in actions of this character, to precisely draw the line between those cases in which the plaintiff is entitled to relief, and those in which relief should be denied. The decisions are conflicting and many of them irreconcilable. 4. Upon principle, no man should be allowed to sell his goods as the goods of another, nor should he be permitted to so dress his goods as to enable- him to induce purchasers to believe that they are the goods of another. 5. In such cases the Court has power to interfere, and should exercise the power. ■6. Courts will interfere where it is apparent that there is an imitation of plaintiff's label, whether as to color, shape, or inscription, which imita- tion is calculated and intended to deceive the general public. 7. Defendant enjoined from dressing his goods in wrappers so closely resembling the plaintiff's, as to enable him to deceive the public and perpetrate a fraud. [Note of Austin Abbott, to syllabus 1. Earlier cases have ■sought for various theories in support of this branch of equity jur- isprudence; some authorities put it on the basis of property in plaintiff violated by defendant, others on the basis of fraud and deceit actually committed to the injury of the plaintiff: others on damage to him by interference with his trade; and more still, on several of these elements: all, however, seeking for a guide in analogy to other classes of actions for injuries to property, or for fraud. In many cases, therefore, the Courts have laid down rules drawn from these analogies, which have limited in various Incongruous ways, the relief that the Court might otherwise pro- perly give. And much of the conflict in the cases arises from the inherent difficulty of limiting a branch of equity jurisdiction, which has its own peculiar necessity and natural limits, by rules which have their origin and propriety in the peculiar character of ■other branches. The elements of property and of fraud are usu- ally involved, incidentally at least, and. considerations of public policy have infused wholesome energy into the modern line of decisions on this subject. The true basis of relief, however, and its just limits are found not in resorting to rules appropriate to other classes of cases, but JANUARY, 1878. 65 1 2 Enoch Morgan's Sons' Co. vs. Schwachofer. in application of the test announced in the case in the text. The gist of the cause of action is in the fact that defendant is sailing under false colors to the danger of plaintiff's legitimate trade. The -extension of the principle beyond cases of trade- marks, in which it seems to have originated, to the protection of signs, labels, wrappers, colors, and the like, illustrate the true basis of the doctrine. In Massachusetts, where the Court has been very cautious in granting relief, and has hesitated to extend the 'rule, the style and color of label have been recognized as proper subjects of protec- tion beside what is usually understood as a ''trade -mark." In Dixon v. Dixon which has never been reported, the plaintiff ' s labels contained the following words: "Stove Polish, Dixon's Prepared Carburet of Iron, Price 10 cents. Prepared from pure carburet of iron only by John Dixon & Co. black lead crucible manufacturers and practical chemists, Jersey City, N. J." [Here followed recommendations]. One of the imitations by John Dixon and oneMeyer had "John Dixon & Co's" instead of "Dixon's." Another had the words "Prepared from pure carburet of iron only by George M. Dixon, wholesale druggist, northwest corner of ***** * and Main Streets, Cincinnati, Ohio," instead of corresponding clause in the genuine. The decree by Bigelow, J., awarded a permanent injunction according to the prayer of the bill, protecting both the general style and color of package, contents of labels and trade cards. Defendants violated the injunction, and were convicted of a con- tempt in so doing by Hoar, J. For other and more recent authorities, see McLean v. Fleming, U. S. Supreme Court, 18 Alb. L.J., 38; Colman v. Crump, 70 N. Y, 573; Caswell v. Davis, 58 N. Y, 223, and cases cited; Taylor v. Gillies., 59 N. Y, 331, and cases cited; Talcott v. Moore, 6 Hun, 106]. \_Note of Austin Abbott to syllabus 2. So when one trader sells an unpatented production of his own in bottles or casks indelibly 5 66 SUPREME COURT OF NEW YORK. Enoch Morgan's Sons' Co. vs. Schwachofer. 13 marked with his known design, the Court will restrain' a rival trader from selling a similar production in the same bottles or casks, although the rival trade puts a label of his own thereon. Ch. Div. Appeals, 1878; Rose v. Loftus, 38 Law Times Rep., N. S. ,435; L. P- Singer Machine Manuf. Co. v. Wilson, L. R., 3 App. Cas. H. L., 376]. John Henry Hull and Clarence A. Seward, for the plaintiff. /. H. Stanbrough and 7". Kugelmann, for the defendant. Trial by the Court. Enoch Morgan's Sons' Company, a manufacturing corporation formed under the laws of New York, sued John T. Schwachofer for an infringement of the trade-mark and labels, &c, of Sapolio, described in the complaint as consisting of a human face reflected in a polished pan; of-the word "Sapolio;" of wrapping a cake of Sapolio in an argentine foil covered paper, so as to present a silvery surface to the outside of the package, and encircled by an ultramarine colored band of paper, of about half the width of the package, extending entirely around it, and printed in gold letters. The defendants, under the name of the East River Chemical Works, had, for some time, been engaged in selling an article called Saphia, of substantially the same properties as Sapolio,. and put up in a cake of very nearly the same size and shape, wrapped in similar argentine foil covered paper, and encircled in like man- ner with the plaintiff's article by an ultramarine colored band of paper, printed in gold, bearing upon one side the word "Saphia," or the "Queen's Brilliant," and on the other side the symbol of a woman's face, looking at an article held up in one hand. The printing of the symbol and of the lettering upon "Saphia" was in gilt, and bore the same general resemblance to that of the plaintiff's "Sapolio," as would be presented by a cake of nearly the same dimensions, encircled in the same kind of silver paper and banded around by a blue colored paper band. Other facts appear in the opinion. An application for a preliminary injunction had been denied. JANUARY, 1878. 67 1 2 Enoch Morgan's Sons' Co. vs. Schwachofer. Lawrence, J.: It is quite difficult, in actions of this character, to precisely draw the line between those cases in which the plaintiff is entitled to relief, and those in which relief should be denied. The decisions are conflicting, and many of them irreconcilable: but, in this case, after fully considering the evidence, I am of the opinion that the plaintiffs are entitled, to a portion, at least, of the relief which the complaint demands. 4th. Upon principle, no man should be allowed to sell his goods •as the goods of another, nor should he be permitted so to dress his goods as to enable him to induce purchasers to believe that they are the goods of another. In the consideration of this case, I shall lay out of view the United States Statute in relation to trade-marks, because that provides that "nothing in this chapter shall 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 pro- visions of this chapter had not been enacted." I do not, there- fore, regard the plaintiffs as being compelled, in order to obtain the relief they seek in this action, to show that there has been an imitation of the trade-mark which the plaintiffs have filed in the patent office. See Popham v. Wilcox, 14 Abb. Pr., N. S., 206. It would seem that the true rule is laid down in the case of Edleston v. Vick, (23 Eng. L. cV Eq,, 51, 53), where Vice-Chan- cellor Wood, adopting the language of Lord Langdale in Croft v. JDay, (7 Beav., 84, 87-), says: "That what is proper to be done in cases of this kind de- pends on the circumstances of each case. * * * * That for the accomplishment of a fraud in each case two circumstances are required — first, to mislead the public; and next, to preserve Jiis own individuality." Commenting further upon the language of Lord Langdale in Croft v. Day, the Vice-Chancellor proceeds: "Now, in' that case of Croft v. Day there were, as Lord Lang- dale said, many distinctions between the two labels; and in this case before me, just as in that case of Croft v. Day, any one who takes upon himself to study the two labels, will find even more marks of distinction than were noticed in argument. But in this 68 SUPREME COURT OF NEW YORK. Enoch Morgan's Sons' Co. vs. Schwachofer.. 13 case, as in that, there is the same .general resemblance in color. Here there is the same combination of colors, pink and green; there is the same heading, 'Her Majesty's Letters-Patent' and 'solid-headed pins,' and the name Cream Baking Powder. ' ' The firm of Steele & Price filed a bill against one Richards and his associates, stating that Steele & Price had adopted a trade-mark to designate a certain baking powder which they manufactured, called < < Cream Baking Powder. ' ' The defendant had also commenced manufacturing baking pow- ders, and was putting upon the market a commodity under the name of "Star Cream Baking Powder;" and the question was there made that the word "Cream" had reference to the quality of the baking powder — that is, that it was the best in the market. The position was argued very strenuously by the defendants' coun- sel that it was a term of quality, not an arbitrary term ; but in that case, which was decided by Judge Drummond, the Court held that the defendants had no right to use the word "Cream," and that any prefix or suffix they used with it would not give them the right to use it in connection with the manufacture of goods similar to those made by the complainants ; that the complainants had the exclusive right to use that term to designate goods of their manufacture. It seems to me the case was, in all respects, analogous to this. I do not recollect that the case has ever been reported. An oral opinion was delivered by Judge Drummond immediately on the close of the argument, and I presume it never got into the reports. 2. In regard to the last point made, that by reason of the defendants using their own name upon the wrapper or envelope the public are not deceived, it would perhaps be enough to say that when goods acquire a specific name the purchaser rarely looks to see who has manufactured the goods. As, for instance, if, as a matter of fact, these needles have acquired among the trade and among consumers or users the designation of < < Parabola, ' ' to the extent that the purchaser would simply ask for " Parabola needles, ' ' he might be supplied with the parabola needles manufactured by Clark & Sons, instead of those manufactured by the complainant, to the direct injury of the complainant and the abridging of his trade. Another case very analogous to this, upon this point, was also before this Court. A suit was brought by Procter & Gamble against McBride & Co., of this city, to enjoin the use of a trade- mark which had been adopted by Procter & Gamble for a certain 138 U. S. C. C. NORTH. DIST. OF ILLINOIS. Roberts vs. Sheldon, et al. 25 brand of soap which they manufactured. Procter & Gamble claimed' that they had introduced to the public, under a trade- mark of their own, a brand of soap under the term and designa- tion of "Mottled German Soap," and they had adopted as a trade-mark upon their packages those words with a circle, with a moon and stars in the middle. The defendants, McBride & Co., who were manufacturers in this city, had put upon the market a brand of soap which they termed " S. W. McBride's German Mottled Soap," and they had marked these words upon the outside of their packages in combination with a 1 crescent, within which was a single star instead of a number of stars. That, I think, was the distinction, so that it presented a stronger case for the defendants than this, because we find upon inspection that the defendant's labels are almost identical to the eye — that is, the reading upon them is essentially the same. In one case it is "Roberts' Par- abola gold burnished sharps." Upon the other label or package, upon the same colored paper and with the same colored ink, is printed "William Clark & Sons' Parabola gold burnished sharps," so that there is a similar use of terms or letters, and the same use of the word "Parabola," and the only distinction is that between "Roberts" and "William Clark & Sons." Now, in the case I mentioned, the defendants had departed much more widely from the complainant's trade-mark. They had 'changed the arrangement of the words, so instead of its being " Mottled German Soap " it was " German Mottled Soap," and instead of a circle containing several stars it was a crescent con- taining a single star, prefixed by the name of each maker ; and it was argued in that case there could be no possibility of intelli- gent consumers being deceived. So strong was the case made before me, on an application for an injunction, that I refused the injunction ; but after the proofs were taken, and the case brought to hearing before Judge Drummond, he sustained the infringement and ordered a perpetual injunction against the defendants. It was also shown in that case that "mottled German soap" or "mot- tled soap" had been in common use in the trade for nearly fifty years, and that "mottled soap" was a commodity well known to the trade ; but Judge Drummond sustained that trade-mark as the JANUARY, 1879. 139 25 Roberts vs. Sheldon. exclusive property of the complainant, and held that the defend- ants' infringed. 3. In the light of that case, which has never been questioned, it seems to me that the mere fact that the defendants in this case have used the words " William Clark & Sons," so as to designate them as the manufacturers, does not defeat the complainant's right to the exclusive use of this word < < Parabola ' ' as designating his manufacture, and that there is a liability to impose upon the trade and on the public, from which the complainant has a right to be protected. With these views I shall order an injunction on the complain- ant's filing a bond in the penal sum of $5,000, conditioned for the payment of any damages which the defendant may sustain by reason of the issuing of the injunction, and also require complain- ant to put in his proof within thirty days after the answer in this, case is filed as a condition of the granting of the injunction. 140 SUPREME COURT STATE OF NEW YORK. Enoch Morgan's Sons' Co. vs. Troxell, et al. 26 26 SUPREME COURT, STATE OF NEW YORK. Special Term. In Equity. Enoch Morgan's Sons' Company vs. Benjamin F Troxell, and others. Decided February, 1879. Reported 57 Howard's Pr. Rep., 121. Sapolio vs. TroxeW s Pride of the Kitchen. Trade-mark. When injunction will be granted. When proven that the public has been deceived. What damages will be given. The plaintiffs were the manufacturers and vendors of a new article of soap, put up in the form of a pressed cake, wrapped in silver-foil paper, encircled with an ultramarine blue colored paper band, printed in gold letters. The defendants manufactured a similar article, and introduced it to the market in an ordinary envelope. It diduiot sell well, and they therefore enveloped their soap in a wrapping substantially the same as the plaintiffs, though having minute variations. Held: i. That an injunction will be gi'anted, where the differences between the trade-mark and an infringement can be detected upon a brief, though careful comparison, if it be apparent that the object in putting up the infringing articles, was simply to gain custom by general resemblance to the genuine article. FEBRUARY, 1 878. 141 2 3 . Enoch Morgan's Sons' Co. vs. Troxell, it al. z. That where it is proven that the public, asking for the genuine article in buying from retail grocers, are supplied with an article in the simu- lated wrapping, and take it without detecting the simulation, it is sufficiently proven that the public have been fraudulently deceived. 3. That damages will be given only for such sales as have taken place after the commencement of the action, where it is shown that the plaintiffs knew of the infringement, but took no steps to arrest it. This was an action for the infringement of a trade-mark of "Sapolio," in the dress, or manner of putting up the same for sale. It was referred to a referee, with power to hear and determine. Clarence A. Seward and John Henry Hull, for plaintiffs. E. More, for defendants. J. S. Bosworth, Referee. There are firmly settled rules of law applicable to trade-marks and the infringement thereof. The difficulty which is encoun- tered in new cases lies in the application of these rules to the facts presented for the consideration of the Court. Judge Allen, in his opinion in Popham agt. Cole, (66 N. Y, 74), says: "The imitation of a trade-mark, with a design to deceive the public, and which is liable to deceive them, and ena- ble the imitator to pass off his goods as those of him whose trade- mark is imitated, is a fraud upon the latter^ and a false represen- tation to the public, and the injured party may have relief to the extent that the imitation is deceptive and liable to mislead. * * * * The question in this, as in every other case, is whether there is such resemblance between the two as to deceive a person" using ordinary caution." The same learned Judge in his opinion in Coleman agt. Crumb, (70 N. Y, 578), said, "It is an infraction of that right to print or manufacture or put on the market for sale 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 resem- blance to the used trade-mark, will be liable to deceive the public and lead to the purchase and use of that which is not the manu- facture of the proprietor, believing it to be his. It is not neces- 142 SUPREME COURT, STATE OF NEW YORK. Enoch Morgan's Sons' Co. vs. Troxell, et at. 3 6 cessary that the symbol, figure or device used or printed and sold for use, should be a facsimile, a precise copy of the original trade- mark, or so close an imitation that the two cannot be distinguished ■except by an expert, or upon a critical examination by one fami- liar with the genuine trade-mark. If the false is only colorably different from the true, if the resemblance is such as to deceive a purchaser of ordinary caution, or if it is calculated to deceive the careless and unwary, and thus to injure the sale of the goods of the proprietor of the trade-mark, the injured party is entitled to relief." In Goldman agt. Hunt, (122 Mass., 148), the Court said: "All the authorities agree that the Courts will not restrain a defendant from the use of a label on the ground that it infringes the plaintiffs' trade-mark, unless the form of the printed words and the words themselves, and the figures, lines and devices are so similar that any person, with such reasonable care and observation as the pub- lic generally are capable of using and may be expected to exer- cise, would mistake one for the other." Where there is such a resemblance between the two as to deceive a purchaser using ordinary caution, or whether that resemblance is such as is calculated to deceive the careless and unwary, or whether the "figures and lines and devices are so similar that any person, with reasonable care and observation, such as people are ■capable of using and as people are expected to exercise, would mistake one for the other," would seem to be answered satisfac- torily by clear proof that a person, desiring to obtain "Sapolio," mistook for it articles manufactured by the defendants, and bought and paid for the latter, believing that they were furnished with the former. In Woolam agt. Ratcliff, (1 H. &> M., 259), the plaintiff put up bundles of silk, manufactured by him, in a particular form, which the case describes, and he used to place under the centre string a label containing the following words: "St. A*****" .which represented 'St. Albans,' where the plaintiff's manufactory was and, which was well-known in the trade as the plaintiff's trade-mark. The defendant, in that suit, made up a quantity of silk in bundles, in exact imitation of the FEBRUARY, 1 879. I43 J36 Enoch Morgan's Sons' Co. vs. Troxell, et til. plaintiff's bundles, and affixed a label exactly like that of the plaintiff, except that the mark 'St. A*****' was omitted. The Chancellor, Sir W. Page Wood, in his opinion, said: >< Then it is said that the plaintiff has a very striking mark, by which any one could be satisfied, whether any particular goods were sup- plied by the plaintiff or not, and we have not attempted to imi- tate that mark, and this would be no answer. If I had any proved instance, in which goods supplied by the defendant had been actually sold as goods of the plaintiff, a case which might very well happen, at least in a foreign market, &c, &c." The Vice-Chancellor deemed it established that in the English market, "St. A*****" would have been necessary and sufficient as the indicia of the plaintiff's goods, and he did not think that in their absence the goods could have been sold in England as the plain- tiff's manufacture, notwithstanding the circumstances of sus- picion. He concluded by saying : "still, I have no evidence that any one has, in fact, been deceived. I do not feel myself justi- fied in holding that such has been the case." The leading facts established by the evidence in this case, are in brief as follows : The firm of Enoch Morgan's Sons were engaged in business in 186 1. The survivors of that firm made an assignment of its business to the plaintiffs in 1869. Enoch Morgan's Sons, the plaintiffs' predecessors, manufactured a compound for cleaning and scouring, commonly called, "scouring soap," to which they gave the name of "Sapolio." It was in the form of a pressed and stamped cake, inclosed in a tin-foil paper wrapper, encircled b,y an ultramarine blue and gold band, and packed in a box con- taining half a gross. On this band were printed in gold letters, the words, "Sapolio, for cleaning and scouring;" and there was upon the band, also a human face reflected by a polished pan. This band went round the cake lengthwise. This was the first scouring soap put up in this form or style, or to which this name was given, or to which this device was affixed. In their advertisements they state, in substance, the style in which Sapolio was put up. 144 SUPREME COURT, STATE OF NEW YORK. Enoch Morgan's Sons' Co. vs. Troxell, et al. 26 In 1872, William S. Troxell, now deceased, manufactured a scouring soap which he called "the Pride of the Kitchen." At that time it was made in the form of a thick paste, and was put up in tin boxes. The result of this manufacture being unsatisfactory, Troxell had a conversation with one Wood, who was then in his employ, in respect to getting up something different. Troxell bought a cake of "Sapolio," took it to his office and kept it there, and finally came to the conclusion that to ordinary obser- vation, both on its face, and in its appearance, a sample cake which Wood made was the same as "Sapolio." Wood procured one Bliven to engage with Troxell in the manu- facture of this scouring soap. Bliven testified that, after Troxell had come to terms with him, he had conversations with him as to the manner of putting up the soap. Troxell wished to make two kinds — one like the "Sapolio" manufactured by Enoch Morgan's Sons, and another which he called "toilet soap." They commenced to manufacture mineral soap and made several tons of it in the form of bars, which Troxell attempted to put upon the market. After a few days, he said to Bliven, "I think it best to put it up in cakes as I find objection among the dealers to buy it in bars. I think we better put it up as near the style of Sapolio as possible." He then asked Bliven if he would have the die procured, and Bliven told him that he would not do so as he thought it would be an infringement on the soap already in the market : Troxell said that he would take the responsibility. Bliven thereupon had the die made, and. manufactured several hundred weight of soap, and put it up tightly pressed with the die. In the spring of 1873, the conclusion was reached to make the soap in the form of a pressed cake, and the question of wrapping them then came up, — what should be the style of the wrapper? Bliven said, " I told Troxell I did not see the utility of putting a binding around it ; he suggested a red band and blue band, but he wanted to get a soap which he could put on the shelf beside 'Sapolio,' so that persons could not see the difference be- tween the two. Troxell, in all his conversations, seemed to FEBRUARY, 1 879. 145 26 Enoch Morgan's Sons' Co. vs. Troxell, et al. desire to imitate, as closely as possible, 'Sapolio,' without mak- ing himself absolutely liable. He used that language." Wood testified, substantially, that Troxell said that he wanted to get up a trade-mark similar to the face looking into a pan, and, during the time Wood was with him, produced several sketches of a monkey looking at his reflected image in a pan. Troxell finally concluded that his device was as near as he could get it, and it was subsequently placed upon the defendants' manu- facture. The plaintiff has proved that in some thirty different stores kept by retail grocers, when the article "Sapolio" was asked for, "Pride of the Kitchen" was delivered to the customer without any explanation. In several ' of these stores repeated occurrences of this character have been proven. Many of these witnesses were housekeepers, who had used "Sapolio" for years, and did not know there was such an article as "Pride of the Kitchen" in the market, although they had used it so long. The only things in their recollection, and impression as to the exterior ap- pearance of it were the size and the form of the cake, and its being in a foil wrapper surrounded by a band of ultramarine blue. They did not have in mind whether the blue band went around lengthwise, or around its sides. When "Pride of the Kitchen" was delivered to them in reply to a request for "Sa- polio," they did not discover the deception until they began to use the article, when they discovered, on taking off the wrapper of the cake, that it crumbled, which they had never known "Sa- polio" to do, also, that it scratched articles which they tried to clean and polish with it. Grocers were induced to do this because .they made more money on "Pride of the Kitchen" than on "Sapolio." The defendant Parshall purchased a half interest in " Pride of the Kitchen," and became partner with Troxell about July 1st, 1874, under the firm name of W. L. Troxell & Co. Parshall at this time was interested in the profits of the firm of H. K. & F. B. Thurber, and bought and held their half interest. They paid for this half interest. They were capitalists in business, making sales of " Pride of the Kitchen ' ' to grocers who retailed it. After- 146 SUPREME COURT, STATE OF NEW YORK. Enoch Morgan's Sons' Co. vs. Troxell, et al. S6 wards W. L. Troxell died, and B. F. Troxell, the present defend- ant, as his administrator, sold the business, out to Parshall, and then bought a half part in his own name. When Parshall became a partner, the defendants' article was put up with bands of three or four different colors, orange, red, blue and green. The de- fendants afterwards discontinued entirely the use of all colors, except red and blue, and in 1876 they discontinued the use of the red bands, and from that time have continued to use the blue band alone. The reason they assign for this is that they had used up the red paper, and were informed by grocers, that it faded more than the blue; that it was more trouble to put up soap in that color than in bands of the first color; but the defendants conceded that it was no more trouble to put the first colored band around their soap than the one which they have latterly used, and I think it clear on the evidence that paper for the band of permanent red color could be obtained for substantially the same price as blue paper, and it is evident that, with a red band, the manufacture of the defendants would much less resemble " Sapolio." 1. A careful, though brief, inspection and comparison of the two styles of soap would disclose differences to the eye in the two articles. On the " Sapolio " the blue bands go around the cake length- wise. On "Pride of the Kitchen" the blue band is wider, and goes around the sides of the cake. On the latter are printed the words 'fTroxell's Pride of the Kitchen — trade-mark — soap for scouring and polishing." Between the word "trade" and the word << mark" is the device of a monkey with his head reflected in a pan. On the blue band, which goes around the cake of " Sapolio," are printed the words " for cleaning and polishing — manufactured by Enoch Morgan's Sons' Company, 440 West Street." There is also on it a device of the human face reflected in a pan. It is very obvious, therefore, that any person who can read, on carefully comparing the two, not only could, but would detect differences between the imprints upon the labels; and, if they could not read, they would discover differences in the width of the blue band,. and that one went around the length of it, and the other FEBRUARY, 1 879. 147 36 Enoch Morgan's Sons' Co. vs. Troxell, it al. around the sides of it, yet it may be true that as " Sapolio " has become well-known in the market, and is regarded with favor, that the defendants might believe that their " Pride of the Kitchen " had such a general resemblance to " Sapolio," both in respect to the size of the cake and as to its dress, that any grocers who kept "Sapolio" could place it by "Pride of the Kitchen" and deliver it to persons applying for "Sapolio;" such persons would not discover the differences, and would take it supposing that they were receiving " Sapolio." 2. It is established by the evidence that persons who bought of grocers, although they called for "Sapolio," and wanted it, on having " Pride of the Kitchen " handed to them in answer to their application did not discover the difference, but took " Pride of the Kitchen," believing it was " Sapolio." The evidence tends strongly to the conclusion that " Pride of the Kitchen" was put up as it is put up, after it was produced in the form of a pressed cake, with a view to make it resemble "Sapolio," with the intent that it might be, and in the expecta- tion that it would be, delivered by retail grocers for "Sapolio," and in the belief that, as to its general resemblance, such pur- chasers would not discern the differences between the two, and would take one for the other. An effect has been given to this intent. The defendants have realized their expectations. There was an intent on the part of the defendants to mislead the public, and the public has been misled, and the plaintiffs have' been sub- jected to loss and damage thereby. Fraud and damage are thus coupled together as cause and effect. 3. The defendants object to the plaintiffs' right to any damages, on the ground that, knowing of the defendants putting up " Pride of the Kitchen," they have not complained or objected to it other- wise than by bringing this action. That, of course,' cannot excuse the defendants from putting up subsequently thereto any cakes of "Pride of the Kitchen," calculated to mislead the purchaser, and in fact misleading them. Enoch Morgan's Sons did not antici- pate any result adverse to their business from any attempt to in- troduce "Pride of the Kitchen," so long as it was put up with bands of various colors, and was attempted to be sold on its merits. 148 SUPREME COURT, STATE OF NEW YORK. Enoch Morgan's Sons' Co. vs. Troxell, et al. 2© The defendants discontinued the red band in October, 1875, but this fact did not become known until the winter of 1876 to the present plaintiffs. They did not have any information until the winter of 1876-7, which led them to suspect that any such decep- tion was used to make. sales of the "Pride of the Kitchen." On being satisfied by proof that it was so used, they put their inquiries, and, when they had collected such evidence as they supposed would enable them to establish an intent on the part of the defendants to mislead the public, and that the public had been misled, they com- menced this suit, and about the same time commenced another action against the manufacturers of a soap called "Saphia," and notified others who had put up scouring soap in imitation of " Sa- polio." All abandoned voluntarily, except those who were en- joined, and these defendants. Nevertheless, Enoch Morgan's Sons could have notified the defendants, on discovering what they had done and were doing, that the plaintiffs objected to an in- fringement of their rights. For all practical purposes, I think the plaintiffs must be presumed to have known, at and from the time of their purchase, what persons comprising the firm of Enoch Mor- gan's Sons' Company knew in this regard: and, under the circum- stances, though with some hesitation, I conclude that the defend- ants should not be required to account for sales made prior to the commencement of this action. An objection to this conclusion arises from the fact that prior sales are found, upon the evidence, to have been effected by a designed attempt to mislead the public, which was successful, and, since the commencement of this suit, the defendants have omitted from the blue bands placed around the cake put up the design of the monkey looking at and reflected from the pan. In their testimony it is alleged that they abandoned this device, because they considered it did not amount to anything, and did not believe it had been the means of selling a cake of soap: yet it is declared, in words printed on their blue band to be their "trade-mark." If the conclusions on this subject are correct, it justifies the opinion that "Sapolio," in the recollection and impression of purchasers, was regarded as a cake of soap of certain form and size, and inclosed in : a silver-foil paper wrapper, surrounded by FEBRUARY, 1 879. • I49 26 Enoch Morgan's Sons' Co. vs. Troxell, et al. an ultramarine blue band, and that, in ignorance of there being otBer soap put up in like form and appearance, they would take, from the grocers giving them "Pride of the Kitchen," in answer to a call for "Sapolio," the article handed to them, without dis- covering that they had not received what they asked for and wished to purchase. It is also possible that not only careless and unwary purchasers but purchasers of ordinary caution, using such care as such pur- chasers ordinarily exercise, may have been deceived and received from grocers, "Pride of the Kitchen," having on it a band of orange red, instead of "Sapolio," believing that they were re- ceiving the latter. The evidence tends to show that some purchasers were in fact misled; but I give the defendants the benefit of all doubts on this question, and charge them with only those sales proved to have been made of soaps made by them since the suit was brought, and actually sold. 3. The amount thus sold appears to have been 1,901 boxes, and I compute and allow the damages thereon at $4,752.58, for which the plaintiff is entitled to judgment, with relief by injunc- tion also, to the extent that the imitation prepared by the de^ fendants is deceptive and calculated to mislead. 150 . U. S. C. C. EAST. DIST. OF VIRGINIA. Young vs. Jones Bros. & Co. 27 27 UNITED STATES CIRCUIT COURT, FOR THE EASTERN DISTRICT OF VIRGINIA. In Equity. Young vs. Jones Bros. & Co. Decided 18 February, 1879. Reported 3 Hughes, 274. Smith, Snyder 6° Co's Case. RIGHTS OF PARTNERS IN TRADE-NAME AND MARKS OF DISSOLVED FIRM. The exclusive right to use the trade-mark o£ a firm does not pass to any member of the firm by mere implication; but such member may use it,, provided he do so in a manner not to deceive the public. Hughes, J.: A bill was filed by the plaintiff on the 15th of January last, complaining of a violation of his trade-mark by the defendants, and making a case for a temporary restraining order under sec- tion 718 of the Revised Statutes; and the order was given, to stand until the 1 2th instant. A rule was given against the com- plainant, returnable on the 12th instant, which is now heard. FEBRUARY, 1 879. 15 I 27 Young vs. Jones Bros. & Co. The defendant files his answer and affidavits. The complainant files affidavits, and the case is heard on the defendant's motion to dissolve the temporary restraining order, and on the complain- ant's motion for a preliminary injunction until the cause shall be finally heard on plenary proofs. Smith, Snyder & Co. was a firm which established a valuable European reputation for a certain manufacture of sumac and bark, and their brand became valuable as a trade^mark. They were succeeded by the firm of Jones, Snyder & Young, which acquired an exclusive fight to their trade-mark or brand, " Smith, Snyder & Co." The firm of Jones, Snyder & Young was composed in part of the firm of Jones, Bros. & Co., which was engaged in another business. This latter firm became insolvent, and went into bank- ruptcy. Previously to doing so, and in contemplation thereof, and by consent of all parties concerned, this firm of Jones, Bros. & Co. sold to N. J. Young, senior member of the firm of Jones, Snyder & Young, " all their right, title, interest, property, claim, and demand in or to the assets of the firm of Jones, Snyder & Young, as set forth in an itemized schedule ' ' annexed to the assignment. This schedule contained a list of property and ship- ments of the firm, and did not enumerate either the good-will or trade-mark, either of the firm of Jones, Snyder & Young, or of the original firm of Smith, Snyder & Co. The question in this case is, whether the name and business of the firm was an asset of Jones, Snyder & Young. The interests of trade-mark and good-will are omitted from express mention in this or any oral contract which accompanied the assignment to Young of the effects of Jones, Snyder & Co. It is well-settled law that upon the dissolution of a partnership each partner has a right, in the absence of stipulation to the con- trary, to use the name and style of the partnership in any way consistent with the facts of their business which does not have the effect of deceiving the public. He may say, "successor to the late firm'," and may make like representations. In the absence of express stipulations each partner may use the good-will of the former partnership. It is also held that rights in the trade-mark are analogous to rights in the good-will of a partnership. In the 152 U. S. C. C. EAST. DIST. OF VIRGINIA. Young vs. Jones Bros. & Co. 27 absence of express stipulation at the time of dissolution, each partner may go on and use the trade-mark of the firm. This does not pass inferentially under a general assignment ; but it is like a man's skill in any kind of pursuit, it remains with him. See for this principle Banks v. Gibson, n Jurist, (N. S-), 680. It has been a matter of some debate and contrariety of decision by the Courts, whether one surviving partner after the death of the other succeeds to the good-will of the firm ; the better opinion now being that he does not. Hammond v. Douglass, 5 Vesey, 539. Even where the good-will of a prosperous business of eight years' duration has been sold by its proprietor along with the lease of the , premises, and all the Stock, wagons, and fixtures used in the busi- ness, which consisted of "Howe's bakery," it was held in a lead- ing case that the vendee had not the fight to use the name "Howe ' ' of the vendor, that not having been expressly mentioned in the contract of sale. Howe v. Searing, 10 Abb. Pr. R., 264; Collyer on Partnership, last edition, 236; 2 Kent ' s Commentaries, 2,1 2, in notes. On the want of right in the complainant, and not on the title to the trade-mark of the defendants, the injunction must be dis- solved. FEBRUARY, I 879. I 53 2 8 Robertson vs. Berry, et at. 28 COURT OF APPEALS OF MARYLAND. Caroline V. Robertson vs. Millon A. Berry And Otho Swingley, Copart- ners, AND OTHERS. Decided 28 February, 1879. Reported 50 Md., 591. "JTagerstown Almanack" Case, % Property right of an author or publisher in the title, na?ne, or particular marks of his work. Pt otection in equity against their use and imitation by another.. What constitutes a fraudulent or colorable imitation. Property right in the devices, emblems and title-pages of an almanac. 1. On appeal from an. interlocutory order granting an injunction, the Court in determining whether the order shall be affirmed or reversed, is con- fined to the case made by the bill and exhibits, without reference to the averments of the answer which appears in the record. 2. A publisher or author has either in the title of his work, or in the application of his name to the work, or in the particular marks which 154 COURT OF APPEALS OF MARYLAND. Robertson vs. Berry, et at. 2 8 designate it, a species of property similar to that which a trader has in his trade-mark, and may, like a trader, claim the protection of a Court of Equity against such a use or imitation of the name, marks, or desig- nation, as is likely in the opinion of the Court, to be a cause of damage to him in respect of that property. This doctrine, in cases where the facts are sufficient to sustain it, has been held applicable to such periodical publications as newspapers, magazines and almanacs. To entitle a complainant to relief, he must clearly show a property right in himself, and a fraudulent or colorable imitation by the defendant. 3. It is impossible to lay down any general rule as to what degree of resemblance between the symbols, marks and devices used on one publication and those on another, is necessary to constitute n fraudu- lent, or colorable imitation. All that can be done is to ascertain in every case as it occurs, whether there is such a resemblance as that ordinary purchasers, purchasing with ordinary caution, are likely to be misled. 4. A property right may be acquired in the devices, emblems and title- pages of an almanac, by adoption and user. Appeal from the Circuit Court of Baltimore City. The facts of the case are stated in the opinion of the Court. The cause was argued before Bartol, C. J., Brent, Miller, Alvey, and Robinson, J. £. T. Wallis, for the appellant. Upon the general law of trade-marks, the appellant's counsel referred to Stonebraker v . Stonebraker, 33 Md., 263, 268; Canal Co. v. Clark, 13 Wallace, 322. No person has a right to monopolize the name of a place or a geographical district, as an element in a trade-mark. (Canal Co. v. Clark, ubi supra). The registration of a trade-mark is not conclusive, in favor of the right to claim it. Moorman v. Hoge, 2 Sawyer, 78. And, indeed, the whole trade -mark legislation of Congress is uncon- stitutional. (Leidersdorf v. Flint, 6 Reporter, 737). Gruber's title to his trade-mark, if he had any, and if it were assets, could only pass by way of administration. (Cecil v. Rose, 17 Md., 101, 102; Same v. Clarke, Ibid, 520, 521). FEBRUARY, 1 879. I 55 28 Robertson vs. Berry, et al. And, the recent and ancillary administration by Mr. Gans on the estates of Gruber and his descendants, post litem motam, were too long after Gruber' s death to give any validity retroactively to the trade -mark claims set up by his descendants as derived from him. But the good -will of a. printing office, which is all that the parties really claimed, until of late, and with a view to this con- troversy, is not assets, {Seligman v. Marshall, 17 Md. , 569). The appellees, having derived no title or right lawfully from Jacob Gruber, and having printed their almanac for many years under a false pretence of such title, and sometimes as individuals, now one, now many, have no right under Gruber upon which they can maintain their present proceeding or appeal to a Court of Equity. They have no standing in Court, upon the ground of a violation of their own original rights created and secured by their own dealing with the alleged trade-mark, and their own skill and labor since Gruber's death; for that is not the case made by their bill, and to maintain their interlocutory injunction they must rest on their bill only. Edgar H. Gans and John P Poe, for the appellees. The marks used by the appellees can in their own nature be trade -marks, either singly or in their collection, for a trade-mark may consist in any sign or symbol, or a picture made up of many objects, that can distinguish the goods of one man from those of another. {Browne on Trade-Marks, sees. 87, 259, 269). The only possible objection that can be urged against these marks, being trade-marks, is, that the thing which they designate, being the subject of a copyright, cannot be protected by a trade- mark. But this objection confounds literary property with mer- chandise. A book or magazine, as literary property, is protected by its copyright, but as a piece of merchandise may be protected by a trade-mark, just as any other vendible article. {Browne on Trade-Marks, sees. 116, 117, 118. 553. 55 8 J Spottiswoode v. Clark, 10 Juris., 1043; Swift v. Day, 4 Robertson, 611). The property in these marks, is shown to be in the appellees. An inspection of the will of John Gruber shows that of these 156 COURT OF APPEALS OF MARYLAND. Robertson vs. Berry, et al. 28 trade-marks he died intestate. After his death his distributees continued to have an inchoate title in said trade-marks until, the year 1878, when their title was made complete by the distribution of the administrator, d. b. n. c. t. a., who was appointed in that year. (Cecil, Adm'r of Owens v. Negro Rose, 17 Md., 92; Dixon Crucible Co. v. Guggenheim, Am. Trade-Mark Cases, 559, 576). The first aspect of the case treats the alleged wrong as an in- fringement of property rights, and regards the infringement of the marks as a wrong remediable by injunction, even though innocently done. (Stonebraker v. Stonebraket , 33 Md., 252-268, Amoskeag Mfg. Co. v. Spear, 2 Sand. S. C, 609; Browne oil Trade-Matks, sec. 393; Millington v. Fox, 3 Mylne d" Craig, 33 8 -35 2 )- But the case in its second aspect, is a case of unlawful compe- tition by the use of simulated labels. The law recognizes the good-will of a business as valuable prop- erty. When that good -will is preserved by the use of labels or names which serve the purpose of pointing out to the trade generally the property of the owner of the good-will, a Court of Equity will enjoin the use of a fraudulent imitation of those labels and names, even though they are not and cannot be trade-marks. (Guerand v. Dandelet, 32 Md. , 561; Warfieldv. Booth, 33 Md., 63; Witthaus v. Mattfeldt <&•» Co., et al., 44 Md. , 303). The principle upon which the Court proceeds, that no man has a right to sell his own goods as the goods of another; or in other words, no man has a right to dress himself in the colors, or adopt and bear symbols to which he has no peculiar and exclusive right, and thereby personate another, for the purpose of inducing the public to suppose that he is that other person, or that he is selling the goods of that other person, while he is really selling his own. The party injured is protected, not on the ground of the in- fringement of a trade-mark, for he may be protected in the use of that which is not a trade-mark, thus: B may be enjoined from running an omnibus having upon it such names, words and de- vices as to form a colorable imitation of those which had been previously placed on the omnibus of A, — {Knott v. Morgan, 2 Keene, 213); or he maybe enjoined from using a name for his FEBRUARY, 1879. 157 28 Robertson vs. Berry, et at. hotel which had been previously appropriated by A, under which A's hotel had become pqpular and secured a large custom; (How- ard v. Henriques, Sand/. S. C, 725); or in the use of a geogra- phical name which he cannot honestly use — {Lea v. Wolff, 15 Abb. Pr., 1; Wotherspoon v. ,Currie, 22 L. Times, N. S., 260; Browne on Trade-Marks, sec. 96); though in all of these cases the name cannot be a trade-mark. His right is to be protected against fraud which entails damage, and fraud may be practiced against him by the imitation of labels, and names which cannot be trade-marks, quite as effectually as by the imitation of trade- marks, {Croft v. Day, 7 Beavan, 84, 88; Eadleston v. Vick, 18 Jur., 7; Browne on Trade-Marks, sees. 537-539; Burke, v. Cassin, 45 California, 467; Slonebraker v. Stonebraker, 33 Md. , 252, 262, 263, 268.; Holloway v. Holloway, 13 Beavan, 309; Matsell v. Flannagan, 2 Abb. Pr., (N. S.~), 459; Williams v. Johnson, 2 Bos., 1; Blofeld v. Payne, 2 B. 6° Ad. , 410; Gil- lottv. Esterbtook, 47 Barb., 455). A comparison of the almanacs shows that the appellant has imitated the appellees' almanac in all its essentials, even in the name << Hagerstown Almanack," and that the only substantial difference is that the appellant calls her almanac << T. G. Robert- son's Hagerstown Almanack," whilst the appellees' publication is called "J. Gruber's Hagerstown Town and Country Alma- nack." This imitation is clearly an infringement, and under the allegations of the bill, a fraudulent simulation. (Scixo v. Prove- zende, 1 Ch. Afp., 196; Amoskeag Manuf'g Co. v. Spear, 2 Sandf. S. C, 305; Boardmanv. Britannia Co., 35 Conn., 402; Millington v. Fox, 5 Mylne <5r= Craig, 338; McLean v. Fleming, 6 Otto, 245-56 and 7; Eddlestonv. Vick, 18 fur., 7; Lockwoodv. Bostwick, Am. Trade-Mark Cases, 535-8; Kerr on Lnjunctions, 483, 485)- Miller, J., delivered the opinion of the Court. This appeal is from an order granting an injunction restraining the appellant from publishing and circulating a certain almanac for the year 1879, known as "T. G. Robertson's Hagerstown Almanack," with the same emblems, devices, marks, represen- 158 COURT OF APPEALS OF MARYLAND. Robertson vs. Berry, et at. 3 8 tations, title and back, outside pages, , style, shape and general appearance as have characterized the publications of the same for previous years, and from printing, publishing and circulating any other almanac in colorable • imitation of the almanac of the com- • plainants, known as "J. Gruber's Hagerstown Town and Country Almanack," and calculated to deceive and impose upon the pub- lic, and to create in their minds the belief that such almanac is really and truly the almanac of the complainants. ■ 1. In determining whether this order shall be affirmed or re- versed this Court is confined to the case made by the bill and exhibits, without reference to the averments of the answer which appears in the record. (McCann v. Taylor, 10 Md., 418). It is immaterial to the decision of the case, in the view we have taken of it, whether the devices, marks, pictures and words, in the manner in which they are collected and combined upon the two outside pages of the complainants' almanac, be regarded as a trade-mark proper or as wrappers or labels, or as the title or the particular external marks which an author or publisher affixes to v his work to distinguish it, because the grounds of relief in equity are substantially the same in either case. 2. A publisher or author has either in the title of his work or in the application of his name to the work, or in the particular marks which designate it, a species of property similar to that which a trader has in his trade-mark, and may like a trader claim the protection of a Court of Equity against such a use or imitation ■ of the name, marks or designations, as is likely in the opinion of the Court to be a cause of damage to him in respect of that prop- erty. {Kerr on Injunctions, 478; Browne on the Law of Trade- Marks, sec. 553). This doctrine, in cases where the facts are suffi- cient to sustain it, has been held applicable to such periodical publications as newspapers, magazines, and almanacs. (Matsellv. Flanagan, 2 Abb. Pr., 459; Hogg v. Kirby, 8 Ves., 215; Spottis- woode v. Clark, 10 Jurist, 1043). But here, as in cases of trade- marks proper, the complainants must show a property right in themselves, and a fraudulent or colorable imitation by the defend- ant, and we shall therefore proceed to consider whether these two FEBRUARY, 1 879. I 59 28 Robertson vs. Berry, et al. essential requisites to relief in equity are made out by the bill and exhibits before us. 1st. And first, assuming the complainants or some of them have established their own right to the symbols, marks and devices, as used on their almanac, has there been such an imitation of them by the defendant on her almanac, as to entitle the former to have the publications by the latter enjoined? 3. Upon the question of resemblance, the authorities all agree that it is impossible to lay down any general rule as to what de- gree of resemblance is necessary to constitute the fraudulent or colorable imitation. All that can be done is to ascertain in every case as it occurs whether there is such a resemblance as that ordi- nary purchasers purchasing with ordinary caution are likely to be misled. (Kerr on Injunctions, 483; McLean v. Fleming, 6 Otto, 245). In the case last cited there is a very complete review of the authorities, and the Court says : < ' Much must depend in every case upon the appearances and special characteristics of the entire device: but it is safe to declare, as a general rule, that exact simi- litude is not required to constitute an infringement or to entitle the complaining party to protection. If the form, marks, con- tents, words, or the special arrangement of the same, or the gene- ral appearance of the alleged infringer's device is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose that he was purchasing the genuine article, then the similitude is such as entitles the injured party to equitable protection, if he takes seasonable measures to assert his rights and to prevent their continued invasion." In the case of Seixo v. Provezende, Law, 1 Ch. Appeals, 192, Lord Chan- cellor Cranworth expresses substantially the same views thus : "what degree of resemblance is necessary from the nature of things, is a matter incapable of definition, a priori. " "All that Court's of justice can do is to say that no trader can adopt a trade-mark so resembling that of a rival as that ordinary purchasers purchasing with ordinary caution are likely to be mis- led. It would be a mistake, however, to suppose that the resem- blance must be such as would deceive persons who should see the two marks placed side by side. The rule so restricted would be l6o COURT OF APPEALS OF MARYLAND. Robertson vs. Berry, et al. 28 of no practical use. If a purchaser looking at the .article offered him would naturally be led, from the mark' impressed on it, to suppose it to be the production of a rival manufacturer, and would purchase it in that belief, the Court considers the use of such a mark to be fraudulent." Among other authorities to the same effect, and as having an important bearing upon the case before us, we refer to {Holloway v. Holloway, 13 Beav. 209; Amoskeag Manuf. Co. v. Spear, 2 Sandf., 599; Swift v. Day, 4 Robertson s Sup, Ct., 611 ; Williams .v Johnson, 2 Bosworth, 1; Lea v. Wolff, 6 Abb. Pa., (N. £.), 1; Gillottv. Esterbtook, 47 Bdrb., 45 5; Burke v. Cassin, 45 Cal., 467; Boarman v. Meriden Bri- tannia Co., 35 Conn., 402; Howard v. Henriques, 3 Sandf., 725; Knott v. Morgan, 2 Keen, 213, Perry v. Truefitt, 6 Beav., 66; Croft v. Day, 7 Beav., 84; Wotherspoon v. Gurrie, 22 Law Times, (N. S.), 60; and Canal Co. v. Clark, 13 Wallace, 322). In the present case we are clearly of opinion the imitation is such as is well calculated to mislead ordinary persons purchasing with ordinary care. It is unnecessary, even if it were practicable, to present a detailed description in words, showing the resemblance of the first or title pages of these two almanacs, as it appears to the eye. It is plain enough to the eye of the observer, but diffi- cult to be described. There is a difference in the names and in some of the words used, and there are several marks of distinc- tion in all symbols or pictures and the border enclosing them, which a careful inspection soon discloses, but there is exact simi- litude in the color, size, shape, and ir. the different type in which the more or less prominent words and figures are printed, as well as in the paper, and binding of each. These make the resemblance at first sight quite sufficient to deceive the " ordi- nary run of persons," even if the two were lying side by side on the counter of a bookstore, or in a newspaper stall, while the back outside pages of each are in every respect identical. This part of the complainants' case is, in our opinion, clearly made out. 4. 2nd. As to the property right, On this subject the authorities all declare that the right of property in the plaintiff must be clearly shown. (Witthaus v. Mattefeldt &> Co,, 4 Md., 303). From the averments of the bill, to which we are confined, it FEBRUARY, 1879. 161 S8 Robertson vs. Berry, et at. appears that about the year 1835, John G ruber, the ancestor of some of the complainants, commenced the publication of an almanac to which he gave the name of "J. Gruber's Hagerstown Town and Country Almanack," and for the purpose of distin- guishing it from all other publications of almanacs he adopted and made use of certain devices, emblems, representations, marks, and pictures, which he combined and collected in a manner en- tirely new and original, and these are the same as those now used on the almanac of the complainants. He continued this publication annually from 1835 to his death in 1858, and by his skill in the order and arrangement of the calendar; and the variety of the miscellaneous matter inserted therein, he acquired the good-will of the public and a large circulation for his alma- nac, and it was a source of profit and revenue to him during his life-time, and the emblems and devices before described became identified with his said publication and were the means by which it was known and distinguished by the trade. This, according to the averments of the bill, was the origin of the emblems and devices in which the complainants now claims a property right. In our opinion that right does not depend upon the derivation of a legal title from John Gruber, either through his will, or by the administration de bonis non c. t. a., taken out long after his' death,Tor the purpose of obtaining title to, and distributing, as assets of his estate, these alleged trade-marks and the good-will of this printed publication, and we therefore dismiss from con- sideration all the averments of the bill on this subject. But it seems to us that the claim and right can be well tested upon another ground. The bill shows that in 1854, Gruber being then aged and infirm and unable to perform the manual labor for the printing and issuing of the almanac, continued its publication through the agency of William Stewart and Thomas G. Robert- son, by a letter of license and authority to them which was printed on the second page of each issue. For many years prior to his death and before this agency of Stewart and Robertson, the surviving members of his family had contributed their labor in the publishing and preparation of these almanacs for the market. After his death his widow and executrix continued the 1 62 COURT OF APPEALS OF MARYLAND. Robertson vs. Berry, et al. 28 annual publication during her life, on account of herself and the other surviving members of the family, and did so through the business management of Robertson, notice of which was printed on each number, and during her life it was a source of revenue to her and and her family and was their only means of support. The widow died in 1866, and the annual publication was con- tinued by fhe family, also under the business management of Robertson, notice of which was also printed in each number. In 1874, one of the daughters died, after which two other daughters, for the use of themselves and the surviving members of the family of John Gruber, continued the publication and are now by their assignees, (who are also complainants,) printing and publishing this almanac. During all this- period from the death of Gruber, nearly twenty years, the publication was continued in his name and two of his daughters sue in this case as copartners trading under the name and style of "J. Gruber." It was so continued, and is now annually published by the complainants in the same style, with the same emblems, pictures and devices, with the same title pages, distribution and arrange- ment of matter, which had distinguished it during the life of Gruber. His family, by the manner in which they have con- ducted the publication, have retained the good-will of the public, increased its circulation, and at the present time under their management, and that of their assignees and agents, its circula- tion is extensive, and good-will attendant upon it valuable, and since Gruber's death it has always been, and is now known to the trade and public generally by the same emblems, devices, marks and representations before stated. The sole and exclusive right of Gruber's family so to publish and sell this almanac was acknowledged and acquiesced in by all persons, and especially by Robertson, the husband of the defend- ant, who was the agent of Gruber and his family, as before stated, and afterwards by his widow, the defendant; for, upon Robert- son's death in 1869, his executors contracted with the members of the Gruber family for its publication for the period of five years, and the latter authorized and permitted the executors to publish it for the time, and they did so up to the year 1875, and FEBRUARY, 1 879. 163 28 Robertson vs. Berry, et al. during this period Mrs. Robertson and her children received all the revenues and profits arising from its sale, except the sum of $450 per annum, which was paid to the family of Gruber as a royalty for the license so to print and publish. After this and during the years 1876, 1877 and 1878, Mrs. Robertson com- menced and continued the publication of her almanac, which the "bill charges to be a fraudulent imitation of that of the complain- ants. Without noticing at length many other allegations of the bill, the facts thus stated show that the complainants have ac- quired a property right in the devices, emblems and title pages in question by adoption and user. That such right may be so acquired appears to be well established by authority. Thus in Eddleston v. Vick, 18 Jurist, 8, it was held and expressly decided lay the Vice-Chancellor, Sir W. Page Wood, that the right of property in certain labels or engraved papers or wrappers in which pins manufactured by the plaintiffs were put up, could be acquired Ly user alone. "If," says his lordship; "the plaintiff or those under whom he claims, has used this label continuously for a •certain space of time, that is enough to enable him to prevent others from using it and making a profit out of the reputation "which that label has acquired in the market." The plaintiff in that case was not the original inventor or proprietor of the labels or engraved papers or wrappers, but claimed from the assignees in bankruptcy "of a former partner of the original proprietor and inventor. He had, however, carried on the business and used the labels for a period of more than eleven years, and by this alone Tie was held to have acquired a right of property in them. So in Canal Company v. Clark, 13 Wall., 322, the Supreme. Court ■say: " Undoubtedly, words or devices may be adopted as trade- marks, which are not original inventions of him who adopts them, and Courts of Equity will protect him against any fraudulent appropriation or imitation of them by others." In, such cases the adoption and use must be under such circum- stances of good faith, as to satisfy the Court that the plaintiff is not himself practicing a fraud upon the public. He must explain how he came to such adoption and use, or in other words, he 164 COURT OF APPEALS OF MARYLAND. Robertson vs. Berry, et a!. 38 must come into Court with clean hands. It seems to us very clear that such explanation is abundantly given by the bill in this case, and the adoption and user thus made out entitle the complain- ants to the injunction prayed for. It is scarcely necessary to add that a Court of Equity interferes in such cases to prevent fraud, and this is the broad ground upon which its jurisdiction rests. 3rd. It was suggested and contended in argument, that the averment that the complainants are credibly informed and verify believe, and therefore charge, that the defendant has'printed, pub- lished and issued, or caused to be printed, published and issued, within the last few days, an edition of her almanac for the year 1879, in the same fraudulent and colorable imitation of that of the complainants, is not sufficient to justify the granting of the injunction. But without stopping to inquire whether this aver- ment by itself would be sufficient, we find referred to in the bill, and filed as an exhibit with it, a copy or number of the defend- ant's almanac for the year 1879, exhibiting precisely the same appearance and characteristics as those of the two previous years, and equally resembling that of the complainants. This is quite sufficient to satisfy the Court upon the point suggested. The order appealed from will therefore be affirmed; and in so doing we must be understood as intimating no opinion upon any other question than the one directly before us, viz., that the aver- ments of the bill are sufficient to justify the granting of the in- junction prayed for. Order affirmed, and cause remanded. MARCH, 1879. 165 29 Wright, et al. vs. Simpson. 29 IN THE UNITED STATES PATENT OFFICE. Francis Wright, et al. vs. T. J. Simpson. Decided 17 March, 1879. Reported 15 Official Gazette, 968. "Pond Lily Wash" Case. . Upon the dissolution of a copartnership terminable at the pleasure of either partner, neither is entitled to the exclusive use or to the regis- tration of its trade-mark, unless by virtue of special stipulations. . Under a partnership agreement which provides that a firm may be dissolved at the pleasure of either partner, and that one of the partners shall retain his exclusive knowledge of the formula for the manufacture of the article sold by the firm, neither partner is entitled, upon a. disso- lution, to the exclusive use of a trade-mark adopted and used by the firm. While such an agreement does secure to the possessor of the formula, the secret which was his own property and not the property of the firm, it does not confer upon him the trade-mark, which was the property of the firm, and not his own. The title to the trade-mark having originated in its adoption by the firm for the merchandise manufactured and sold by the firm, and not in the 166 UNITED STATES PATENT OFFICE. Wright, et al. vs. Simpson. . 2& possession of the formula, the exclusive knowledge of such formula, by- one of the copartners, is not decisive of his right to the exclusive use- of the firm trade-mark. His right to use the trade-mark after the- dissolution of the firm, whatever it may be, he holds as a former mem- ber of the firm, and it is not an exclusive right. 5. In such case, neither party can, after the dissolution of the firm, sepa- rately register its trade-mark. 6. The fact that an illegal registration has been granted to one of the copartners, will not justify a grant of a second illegal registration to. the other. 7. The case would be different if either copartner had sold his entire interest in the firm to the other, or acquiesced in an assertion by the other of entire ownership of the business and exclusive right to the trade-mark as successor of the firm; but an attempt by the partner not in possession of the formula, to use the trade-mark by affixing it to an article manufactured without the formula, and therefore either spurious, in fact or genuine by accident, if it be an unlawful use of the trade- mark, and a fraud upon the public, is none the less evidence of a pur- pose not to relinquish the party's interest in the trade-mark, nor to- recognize the exclusive right of the other party. Appeal from the Board of Examiners-in-Chief. Trade-mark, (Pond Lily Wash.) Wright's trade-mark regis- tered July 31, 1877. Simpson's application filed October 6, 1877. Mt. L. Hill, Mr. P. B. Stillson, and Mr. G. IF. Balloch, for Wright, et. al. Mr. G. W. Dyer and Mr. D. Breed, for Simpson. Paine, Commissioner : On the 6th day of August, 1875, T. J. Simpson and Francis- Wright entered into partnership under written articles, of which the following only are material to the question presented by this case : "The object of this agreement is to form a copartnership for the general manufacture and sale of a preparation of washing-fluid (now known as Pond Lily Wash) in the United States. "The name and title of said firm shall be T. J. Simpson & Co- MARCH, 1879. 167 29 Wright, et al. vs. Simpson. "Said Simpson, owning solely the Receipt for said washing-fluid, and being skilled in the art of making said fluid, in consideration of the engagements and services of said Wright, as hereinafter stated, doth contribute to said firm the use of said receipt, (but in no way further conveys said receipt apart, or parts with it,) and to advance at the beginning of the business such sufficient sum of money as may be needed to start the same. "And said Wright, on his part and in consideration of the fore- going, doth agree to devote his time and energies to the business of the firm. "And it is mutually agreed that said Wright shall attend to the sale of the goods so manufactured as aforesaid, keep the books of the firm, collect its dues, and settle its accounts, and generally attend to the usual office duties, and in all ways in his power de- vote himself to the business, and that he shall have one-fourth (1^) part of the net profits of the business. "And it is likewise agreed that said Simpson shall give his skill and time in and to the manufacture of the goods, as aforesaid, and contribute any improvement he may make or discover in the art aforesaid to the use and benefit of the concern, and he shall take and have three-fourths (^) part of the net profits of the business. "Either partner wishing to withdraw from the business engage- ment may do so upon making a written statement of the reasons for his withdrawal; also, a statement of his interest, based upon a cash valuation, which shall not be placed upon the market before offering it to his partner upon such terms as he will take or give. "This agreement shall continue for the space of time agreeable to both parties." Under this contract Simpson & Wright, as copartners, manu- factured the article in question, and adopted as their trade-mark for this manufacture of the firm the words "Pond Lily Wash;" but they did not register the trade-mark. They might have done so during the existence of the firm, for as co-partners they were en- titled to its exclusive use. 1 68 UNITED STATES PATENT OFFICE. Wright, et al. vs. Simpson. 29 Simpson a'lone had knowledge of the formula by which the mer- chandise was manufactured; but that did not determine the owner- ship either of the merchandise or trade-mark applied to it. The secret was Simpson's, not the firm's; but the business, the mer- chandise, and the trade-mark were the firm's and not Simpson's. Simpson, as partner, held a three-fourths interest in the business in the merchandise and in the trade-mark, and Wright, as copart- ner, held a one-fourth interest in each. The exclusive possession of the formula by Simpson had no more bearing upon the copart- nership rights than the exclusive possession of the formula by an employee of the firm would have had. If a workman who possessed the secret of mixing this "Pond Lily Wash' ' had been employed by the firm to prepare the mixture at a stipulated compensation for his labor and the use of his formula, under a contract which secured to him the possession of his secret, such workman would have had no interest, as owner, in the business or in the merchandise or in the trade-mark. These would have been the exclusive property of the copartnership. The trade -mark would have been a trade-mark for the merchandise as merchandise of the firm, and not as merchandise in any other con- dition of ownership. As between Simpson and Wright the same principles obtain. Simpson held his interest in the trade-mark wholly as one of the copartners, and not at all as the possessor of the secret of the mix- ture. Simpson could not have registered the trade-mark in his own name during the existence of the firm, for he had not the right to its exclusive use. The firm, and the firm only, could have lawfully registered the trade-mark. If, upon a dissolution of the firm, the workmen had been, under his contract, at liberty to use the formula which he alone possessed, that would not have given him the right to the trade-mark which the firm had owned and used upon their own goods. He would have recovered the use of a recipe which was his own, but would not have appropriated a trade-mark which was not his own. Now, two modes of terminating this copartnership between Simpson & Wright were marked out in the partnership articles. In the first place, either party might have presented a written march, 1879. 169 39 Wright, ct al. vs. Simpson. statement of his reasons for withdrawing from the firm, and sold out his interest to his partner, if he would buy it on the terms pre- scribed, and, if not, to any other purchaser. But if neither party chose to sell out his copartnership interest under that provision of the contract, he could, at his pleasure, under the concluding clause of the contract, have terminated the existence of the firm. In Jan- uary, 1877, Wright terminated the existence of the firm, not by selling out his interest under the paragraph providing for such sale, but by terminating the copartnership under the last clause of the contract. 1. A trade-mark can only be registered by a person, firm, or corporation entitled to its exclusive use. Upon the dissolution of a copartnership terminable at the pleasure of either partner, neither is entitled to the exclusive use or to the registration of its trade-mark, unless by virtue of special stipulations. 2. Under a partnership agreement, which, like this, provides that a firm may be dissolved at the pleasure of either partner, and that one of the partners shall retain his exclusive knowledge of the formula for the manufacture of the article sold by the firm, neither partner is entitled upon a dissolution to an exclusive use of a trade- mark adopted and used by the firm. , 3. While such an agreement does secure to the possessor of the formula the secret which was his own property, and not the prop- erty of the firm, it does not confer upon him the trade-mark, which was the property of the firm, and not his own. The fact that Simpson kept his secret did not, after the dissolution of the firm, entitle him to the trade-mark, or its exclusive use, any more than would the exclusive knowledge of the formula by one of the em- . ployees of the firm have entitled such employee to the trade-mark, or its exclusive use, after its dissolution. 4. The title of the trade-mark originated in its adoption by the firm for the merchandise manufactured and sold by the firm, and not in the possession of the recipe for its manufacture. After the dissolution of the firm Wright had no claim to the ex- clusive use of the trade-mark. His right to it was only the right which one of two partners has to the trade-mark of a dissolved co- partnership. It was not an exclusive right. It was, at the most, 170 UNITED STATES PATENT .OFFICE. Wright, et al. vs. Simpson. 29 only a right whieh he could enjoy in common with the other part- ner; but, as I said, the law prohibits the registration of a trade- mark by any person, firm, or corporation not entitled to the ex- clusive use of the trade-mark. Wright's registration, therefore, was illegal. Besides, he could not manufacture the article to which the trade-mark belonged, unless by accident, for he was ignorant of its composition. Whatever right Simpson, on the other hand had to use the trade-mark after the dissolution of the firm he held as late member of the dissolved firm. It was not an exclusive right. The circumstance that he alone knows the secret, and alone has the power to manufacture the "Pond Lily Wash," is not decisive of his right to use the firm trade-mark. So far as that element of the case is concerned, his attitude is not different from that of a former employee remaining in possession of the secret after the dissolution of the firm. His right is as good as that of the registrant, and no better. 5. Whatever they might have been able to do if they joined in an application for registration, neither Wright nor Simpson can separately register this trade-mark. 6. The fact that Wright & Brother have already obtained an illegal registration cannot justify the grant of an illegal registra- tion to Simpson, who has not an exclusive right to the use of the trade-mark. 7. This would all be different if Wright had either sold his en- tire interest in the firm to Simpson, or acquiesced in an assertion by Simpson of entire ownership of the business and exclusive right to the trade -mark as successor of the firm of T. J. Simpson & Co. In that case the principle correctly stated by the Assistant Com- missioner in his decision of November 2, 1878, would have been applicable. But Wright did not sell his interest in the firm to Simpson; nor did he acquiesce in any pretensions on the part of Simpson to an exclusive right to the trade-mark of the firm. On the contrary, he attempted to use it himself by affixing to it an article manufactured without the formula, and therefore either spurious in fact or genuine by accident. If this was an unlawful use of the trade-mark, and also, as is alleged, a fraud upon the public, it was none the less evidence of a purpose, on the part of MARCH, 1879. 171 29 Wright, et al. vs. Simpson. Wright, not to relinquish his own interest in the trade-mark, nor to recognize Simpson's right to its exclusive use. Neither of these claimants has any right to the registration of the trade-mark in question. On the merits of the case, neither party is entitled to an award of priority, either of adoption or of right. Not on account of the essential validity of their title, but solely by virtue of their actual registration, Wright &: Brother are able to maintain their precedence, so far as this office is concerned. If it were in my power it would be my duty to cancel their regis- tration. But although registration has been unlawfully granted to Wright & Brother, it cannot be granted to Simpson. The judgment of the Board of Examiners-in-Chief is reversed. 172 U. S. C. C. NORTH. DIST. OF ILLINOIS. Williams, et al. vs. Adams, et al. SO 30 CIRCUIT COURT UNITED STATES, NORTHERN DISTRICT OF ILLINOIS. In Equity. James B. Williams, et al. Charles L. Adams, et al. Decided April, 1879. Reported 8 Bissell, 452. ' ' Yankee Soap ' ' Case. 1. Trade-Mark. Abandonment. Abandonment of a trade-mark is not made out by showing numerous infringements in which the owners of such trade-mark have not acquiesced. 2. " Yankee." The term " Yankee," applied as the name or label upon soap. Held: To be a valid trade-mark. Bill to restrain the use of a trade-mark. The alleged trade -mark is the use of the word "Yankee," as a label or mark to designate the complainants' manufacture of a certain kind of shaving soap. The bill set up that the firm of APRIL, 1879. 173 3 Williams, et al. vs. Adams, et al. Williams Brothers, in 1846, commenced at Manchester, Connecti- cut, the manufacture of a superior article of shaving soap, or toilet soap, to which they gave the name " Yankee Soap," or "Yankee Shaving Soap." That shortly afterwards the business place of the firm was removed from Manchester to Glastonbury, Connecticut, and the complainants' firm, as successors of the original manufacturers, have succeeded to all the rights of the original firm of Williams Brothers ; and that the defendants were putting upon the market an inferior article of shaving soap, which they labeled "Yankee Williams' Shaving Soap." The complainants claimed the exclusive right to use the word "Yan- kee," having adopted it at an early day as a trade-mark, desig- nating their manufactured goods. H. B. Hurd, for complainants. Banning 6° Banning, for defendants. Blodgett, J.: I am satisfied that the complainants' case is fairly made out The proof shows that they did enter upon the manufacture of this class of soap, as the bill alleges, and adopted this word "Yan- kee" as the mark or designation of their goods, and have used it from the time of its adoption to the present. The defendants, on the contrary, claim that the complainants have abandoned the use of this word as their trade-mark ; that they have allowed other manufacturers to infringe upon it by putting their soaps upon the market under the designation of "Yankee," as, for instance, "Yankee Jim," "Yankee Sam," and under other labels in which the word " Yankee " is the con- trolling or leading term, whereby complainants' exclusive claim of right to the use of the word < ' Yankee ' ' has been infringed ; and that complainants have so acquiesced in these infringments as to have abandoned their exclusive right to the use of the word "Yankee." I do not find this position sustained by the testimony. The complainants seem to have been diligent in prosecuting all persons who infiringed upon their rights within a reasonable time after 174 u - s - c - c - NORTH. DIST. OF ILLINOIS. Williams, et al. vs. Adams, et al. 30 they became aware of such infringment. It is true that the proof shows that quite a large number of manufacturers are putting shaving soaps upon the market under the term or description of "Yankee," such as " Yankee Sam Soap," "Yankee Jim Soap," and the "Yankee Soap," which last is precisely like the complain- ants, and there are various other imitations of the complainants' goods, shown in the proofs. i. But I do not understand the rule to be, that if a party in- fringes upon another's trade-mark there is any fixed time in which he must bring suit in order to save his rights. Certainly there is no such neglect on the part of the complainants proved here, as would show an intention to abandon their trade-mark. The other point, that the word "Yankee" cannot be adopted by any person as a trade-mark, is presented with a good deal of vigor and ingenuity by defendants' counsel, and with a show of authority. A Mr. Browne has written a book on trade-marks, which to some extent, I think, is accepted by the profession as an authority, in which he sums up his own conclusion as to the prin- ciple decided in a certain trade-mark case, and says: "It clearly appears from the foregoing case, that words designating localities, 'places or persons, such as London Dock Gin, Yankee Soap, etc., cannot be adopted or used as a trade-mark." {^Browne on Trade- Marks, sections 1 19-125, 597). It is sufficient to say in reference to this paragraph, that Mr. Browne is not a Court; that he was simply enforcing his own individual views or conclusions from certain adjudged cases. Now, it seems to me by all the analogies, that a manufacturer, especially a manufacturer thirty years ago, would have had the right to adopt the term "Yankee" as applicable to some specific kind of goods, and make it a valid trade-mark. We must remember that the term was not as generally applied then as it is now. At that time, certainly, the term "Yankee" was applied to the inhabitants of but a small portion of the United States — to a small portion of the New England States. For instance, in Western Massachusetts they would speak of the inhabitants of the eastern part of that State, and along the coast from Boston to Portland, Maine, as "Yankees." The eastern APRIL, 1879. 175 SO Williams, et al. vs. Adams, et a!. shore people were called "Yankees" in New England. In the Southern, and perhaps some of the Western States, all people in the New England States were spoken of as "Yankees," and -since our unfortunate national rebellion, it has been quite common at the South to speak of all persons who remained loyal to the Fed- eral Government as "Yankees." The term has been enlarged by use, undoubtedly, very much within the last fifteen or twenty years. In 1846, the time the complainants entered upon this manufacture, the term " Yankee 'i was restricted, and, applied solely as a nickname or -epithet to the inhabitants of some parts of the New England States, but it was not a term describing a specific locality, or place, or person. It is not a geographical term, nor a proper name, but a designation applied by the dwellers in one locality to the dwellers in another place. It was not the name of any certain locality, and it seems to me complainants had the right to adopt it as their trade -mark. If it has since that time, by a more general use and definite application, come to designate any certain locality — which is not conceded — such subsequent events cannot defeat complainants' right. The complainants have made such a case as entitles them to an injunction, perpetu- ally restraining defendants from using the word < ' Yankee ' ' in any label or mark upon their soaps, and the case will be referred to the Master to take proof as to the damages which the complain- ants have sustained. 176 U. S. C. C. DISTRICT OF NEW JERSEY. Enoch Morgan's Sons' Co. vs. Hunkele. 3 1 31 UNITED STATES CIRCUIT COURT, DISTRICT OF NEW JERSEY. In Equity. Enoch Morgan's Sons' Co. vs. Hunkele. Decided 30 April, 1879. Reported 16 Official Gazette, 1092. Demurrer to bill charging fraud. 1. Differences between the original and the simulated trade-mark, which, in the absence of fraud, may be sufficient to repel the charge of in- fringement, will not be regarded upon demurrer. 2. To demur is to confess the allegations of fraud and of deceptive intent, in the use of the imitation mark charged by the bill, and upon over- ruling the demurrer, an injunction will be allowed, and defendant ordered to answer on the merits. Mr. John Henry Hull and Mr. A. Q. Keasbey, for plaintiffs. Mr. Win. G. Cummins and Mr. E. More, for defendant. Nixon, J.; The demurrer admits all the allegations of the bill of com- plaint. The only question, therefore, before the Court is whether a sufficient cause of action appears upon the face of the bill. APRIL, 1879. 177 3 1 Enoch Morgan's Sons' Co. vs. Hunkele. The complainant, a corporation created and organized under the laws of the State of New York, avers that it is the successor of the firm of Enoch Morgan's Sons; that the said firm invented and prepared a new manufacture of soap, especially designed for cleansing and polishing; that to indicate the genuineness of their manufacture they devised and for the first time applied as a trade- mark the word << Sapolio," a device of a human face reflected by a polished pan, a uniform size, form and color of cake, the stamp thereon of the words "Enoch Morgan's Sons' Sapolio," an en- velope or wrapper therefore of argentine-foil-colored manila paper, having printed on the inside thereof certain words and de- vices in black type upon a cream-colored ground, a band of ultra- marine blue paper for encircling the cakes when so enveloped and wrapped, with printing in gold letters; that large sums of money were expended by the firm in advertising the said manufacture, whereby it became widely known under the trade-ma.rk aforesaid, and was so largely purchased and used by the public that its manu- facture and sale under the said mark became pecuniarily valuable to the complainant; that, well knowing these facts, certain manu- facturers in New York and elsewhere, since January 1, 1874, have fraudulently endeavored, and are still endeavoring, to avail them- selves of the benefits of the said advertisements and of the popu- larity and reputation of the said manufacture, and of the trade- mark under which the same is sold, by fraudulently simulating the cake and appropriating the trade-marks, and are daily engaged in unlawfully and fraudulently selling the same as for the genuine manufacture of the complainant; that said simulated manufacture and appropriated trade-mark have a tendency to deceive, and do deceive, the public, exercising all the caution which purchasers usually exercise, and induce it to purchase said simulated manu- facture as and for the genuine manufacture of the complainant, to the deception of the public and to the injury of complainant; that the defendant, designing to aid the manufacturers in their attempt to defraud the complainant and deceive the public, has purchased soap of these fraudulent manufacturers, and kept the same on hand as the genuine "Sapolio" made by complainant, with the design to impose the same upon purchasers as the genuine article, and 12 178 U. S. C. C. DISTRICT OF NEW JERSEY. Enoch Morgan's Sons' Co. vs Hunkele. S 1 when applied to by customers for "Sapolio," which was well known to them and the public as an article manufactured by the complainant, has sold and delivered to such customers, without explanation, the simulated cake, and has given to them bills for the same as "Sapolio," so that customers, deceived by the gene- ral appearance thereof and not observing the difference, which might be detected on a closer observation, have accepted the same as the genuine article of the complainant ; and that the said acts have been intentional, willful, and fraudulent. Stripped of all verbiage, the charge is that the defendant has fraudulently simulated the manufacture of the complainant, and that he has successfully deceived the public by inducing it to pur- chase the simulated for the genuine article. 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 upon. 1. The defendant insists that there are such differences in his mode of using and combining the colors on the wrapper that no careful purchaser need be deceived if he exercise ordinary care and prudence. This may be true, and, in the absence of fraud, and upon the merits, the Court may not be willing to hold that an infringe- ment has been shown. But the fraud has been confessed by the demurrer, and such confession entitles the complainant to an in- junction. 2. The counsel for the defendant says that the demurrer was filed after duly considering the authority of Ellis v. Zuillen, (42 Geo., 91), and Barrens v. Knight, (6 R. I., 434), and yet it was held in both of these cases that where a fraudulent intent was admitted the imitation need only be partial to sustain the action. The demurrer is overruled, and twenty days' time is given to the defendant to answer the complainant's bill on the merits. MAY, 1879. iy 9 43 S3 India Rubber Co. vs. Rubber Comb and Jewelry Co. 32 SUPERIOR COURT OF NEW YORK. The India Rubber Company, Plaintiff and Respondent, The Rubber Comb and Jewelry Company, et ai,., Defendants and Appellants. Decided 16 May, 1879. Reported 45 N. Y. Sup. Ct., 258. "Rubber Comb Co." Case. fraudulent simulation of labels, injunction. t. In this case the following facts appeared: The labels used by defendants in their business, were in undoubted imita- tion of those used by plaintiff, and the greater part of the details were so like the corresponding details of plaintiff's labels, that it was plainly defendants' intention to represent that the goods upon which the same were to be placed, were made by plaintiff. Held: That the plaintiff was entitled to protection against this. -2. The manner in which defendants printed their name upon the labels in question, was likely to draw attention, from the difference between it and plaintiff's name, and lead the ordinary reader to believe it to be plaintiff's name. Held: l8o SUPERIOR COURT OF NEW YORK. India Rubber Co. vs. Rubber Comb and Jewelry Co. 32 That in such case, the intent'being evident, the plaintiff is responsible for the effect produced, though the name used was its proper corporate name. 3. As to that part of the judgment herein against the use of portions of the labels, the Court Held: Whether a name can be a trade-mark or not, there is no doubt that a defendant may be enjoined from using a plaintiff's name. It was contended that plaintiff's name really expressed a kind of trade, and that, as the trade is open to all, there can be no exclusive right to words that intelligibly designate the same. But it appeared that there had been a purpose to use a name, in imitation of plaintiffs, on a label, and the case made it proper to consider whether there was not danger of a use of it apart from the same. No closeness of reasoning, based on the fact that it l.as never been used by itself, is called for in a case which discloses a meditated general wrong. Nor is it material that the name is described in the pleadings and findings as a trade-mark. 4. As to the use of the numbers " 2," "101 " and "32," the principles of Gillott v. Eslerbrook, (48 N. Y., 375), apply. In that case, and this, the numbers were selected arbitrarily, and were used to distinguish one pattern or character of goods from another, and the plaintiff is entitled to. protection in his use of the same. 5. The Court further Held, as to the continuance of the injunction: such an actual use and danger or threat of further use, appeared that the plaintiff, if otherwise entitled, would not be deprived of his remedy by injunction, though shortly before the service of summons, &c, the defendant had stopped using the labels in question. 6. So far as the right to an injunction is concerned, there is no need of proof that any one has been, or is likely to be deceived by the simu- lated label. If a Court cannot judge, from the resemblance, the effect likely to be produced, it certainly may infer, from a fraudulent intent in circumstances which would permit its consummation, that it is likely that the intent will be successful. Before Sedgwick and Van Vorst, JJ. This is an appeal from an interlocutory judgment entered upon the decision of the Special Term of this Court, perpetually enjoin- ing the defendants from using any and all of the plaintiff's labels and trade-marks set forth in the complaint, and ordering a refer- ence to ascertain the amount of the plaintiffs' damages sustained thereby. MAY, 1879. l8l 3 3 India Rubber Co. vs. Rubber Comb and Jewelry Co. The action was for an injunction against the defendants using plaintiff's labels and trade-marks, and for damages. Jacob cV Koch, attorneys, and Ye am an cr Curtis, of counsel for appellants, urged : I. The words "The India Rubber Comb Company," the only trade-mark claimed or described in the complaint, are not and can- not become or be made a trade -mark, {Browne on Trade- Marks, sees. 138, 161, 162, 164, 350, and cases cited). The complaint has not been amended, to claim that anything else enters into the composition of the trade-mark, (see also, In re Simpson, 10 Off. Gaz. Pat.) The numerals cannot of themselves be a trade-marl?, such as 101, 2 and 32, (Browne on Trade-Mark, sees. 225-233, 443). If the engraving or picture of plaintiff's factory may be used as a trade-mark, so may the engraving or picture of the defendant's factory, especially as they are so unlike as never to deceive or mislead. If the trade-mark claimed be valid, then the defendants have not used it. The plaintiffs use the words "India" and " N. Y.," the defendants do not. The defendants use the word "Jewelry," which the plaintiffs do not. The defend- ants use the monogram, while the plaintiffs do not. The plain- tiffs use the words, (expressing a fraud and falsehood), "sole manufacturers of Goodyear's Gutta Percha Combs," which the defendants do not. The defendant company has the right to use its own corporate name, and has done so. The plaintiffs never had any trade-mark or property in the numerals 101, 2 and 32, as claimed. It was not the first or only one who used them, and if it ever acquired any such right, it has been abandoned to the public by acquiescence in their long use by other traders and manufacturers. Fifteen years' public, open and notorious use by others, is an insurmountable obstacle to the present assertion of exclusive right. II. If a liberal construction of the complaint would make it a cause of action for fraudulent simulation of labels as distinguished from trade-marks, what some writers call unfair and immoral competition, (a case not claimed in the complaint), then the plaintiff cannot recover, for the reasons above expressed, espe- 182 SUPERIOR COURT OF NEW YORK. India Rubber Co. vs. Rubber Comb and Jewelry Co. 82 cially the differences, pointed out under figure 4 of point I, and also for the following reasons: 1. No intent to defraud has been shown, which must be done to entitle plaintiff to injunction. 2. No actual or successful fraud or deceit has been shown by a single instance of sale of defendants' goods as and for plaintiff's, nor of anyone calling for or ordering plaintiff's goods and getting defendants' instead, which is necessary to entitle plaintiff to judgment for damages or for an accounting. 3. No attempt was made to show either such fraudulent intent, or such actual fraudu- lent sales. 4. It has not been shown, nor has any attempt been made to show, that any ordinary purchaser looking at either the- goods or the labels would mistake the defendants' for the plaintiff's. 5, Neither the plaintiff nor the defendants retail goods. They both sell to jobbers, who supply retail dealers, who supply con- sumers. They each sell at wholesale, in large, paper-wrapped packages, as exhibited in Court, the plaintiff putting on these large packages a green label with black letters, and the defendant a white label with blue letters. Nothing could be more distinctly and even glaringly different. If any witness had come into Court and said he had been deceived or could be deceived by mis- taking one of these labels for the other, the Court would simply not have believed him. III. The case of Gillottv. Estcrbrook, (48 N. ¥.), does not hold that numbers by themselves may be a trade-mark, but only that they can be used in connection with other things, The plaintiff 's trade -mark is described as "The India Rubber Comb Co.," without numbers. When this was offered for registration at Washington, and rejected, as stated by plaintiff's counsel, the engraving of the factory was added, and it was then registered. The trade-mark and specifications as registered not claiming the right to the use of numbers 101, 2, 32, nor in any way alluding to them, is conclusive evidence that they had never been relied upon as a trade-mark, or, if so relied on, had been abandoned. The claim and sworn application state << our trade-mark" consists of the words "India Rubber Comb Company, arranged in con- nection with a representation of our factory at College Point, Long Island." The document further states that this trade-mark MAY, 1879. 183 3 2 India Rubber Co. vs. Rubber Comb and Jewelry Co. may be accompanied by a border, but proceeds to allege that the essential features are the words "India Rubber Comb Company, arranged in connection with a representation of the India Rubber Comb Company's factory at College Point, Long Island." Thus the numbers 101, 2 and 32 are expressly excluded in two ways; by stating what may accompany the trade-mark, and by stating the essential features of the trade -mark. They further say << this trade-mark we have used in our business for three years last past." The plaintiff cannot have two trade-marks, nor dozens or hun- dreds of them, as it would have if each label with a different number on it be a different trade-mark. In its complaint it de- scribes one without number, sues the defendant on that descrip- tion, and to sustain the cause of action puts in evidence a certifi- cate of registration making no claim to numbers as a part of its trade -mark, and containing a specimen label with numbers not mentioned in the complaint or the evidence, to wit: 1 doz., — No. 4, — T}4 inch. The plaintiff must abide by it own description and registration. It cannot register, one thing and claim another. IV. There was an element, a finding of fact, in Gillott v. Es- terbrook, that broadly distinguishes it from this case. The trial Judge found, and the Court of Appeals expressly rely upon the finding, " that the said use by the defendants of said numerals 303, was with a knowledge by them of the rights of the plaintiff to the same, and with the intent to obtain for themselves the profits and advantages to which the plaintiff was exclusively enti- tled in the use of his said trade-mark, and to mislead the public, and to defraud the plaintiff in that respect." In this case we have not the knowledge by defendants of plaintiff's rights, if it had any, and any such knowledge, as well as the right, is nega- tived by the long and general use by others. Neither have we the intent to obtain plaintiff's profits; nor the intent to mislead the public and defraud the plaintiff, all which are found in the case of Gillott, and none of which are proved in this case. V. Particular attention is called to the case of Singer Manu- facturing Co. v. Wilson, 2 Ch. Div. App., 434), a late English case, which perhaps, more nearly than any other case, contains the whole law of trade-marks and fraudulent imitations of labels. 184 SUPERIOR COURT OF NEW YORK. India Rubber Co. vs. Rubber Comb and Jewelry Co. 3 2 The case of Boardman v. Meriden Britannia Co., (Cox Trade- M., Cas., 490), is not similar in its facts. The case, like Gil- lott's No. 303, holds that a number can only be a part of a trade- mark in connection with other things. When any mark, symbol or device is used merely to indicate the name, quality, style, or size of an article, it cannot be protected as a trade -mark, (see also Coddingtori s Digest of Trade-M., 265). VI. Although, by the long-continued use of certain letters, figures, words, marks or symbols, which do not of themselves and were not designed to indicate the origin or ownership of the goods to which they are attached, but only to designate the nature, kind, or quality of the different varieties of the article, and because so marked the goods have become known as those of the manufac- turer who first used them, such fact cannot alter the original meaning of the words or symbols, or the intent with which they were first used as denoting the name of the thing or its general or relative quality, or take from others the right to employ them in the same sense. (Camdee v. Deere, 64 ///. , 439). VII. There is no case to be found in which a plaintiff has been allowed to sell the same goods under more than one trade-mark. The idea of identity, oneness, is necessary to and so embraced in the conception of a trade-mark, as applicable to a certain kind or line of goods, that divisibility or plurality at once destroys both the conception and the thing. The same trader or manu- facturer may have one trade-mark for his woolen goods, another for his cotton goods, another for his silk goods, and another for his combs, if he makes so many articles. But he cannot have three trade-marks for the same comb. In this case the plaintiff has declared on one trade-mark, its corporate name: "The Indian Rubber Comb Company;" it has put in evidence eight, all differing in some respects from each other, and has recovered on five, three being always annexed to one article. VIII. The motion to dismiss plaintiff's complaint, and again, at conclusion of plaintiff's testimony, should have been granted. And even if there had been any grounds for retaining the com- plaint as to the defendant company, the motion to dismiss as to the individual defendants, Sonneborn, Dittenhoefer and Cohn, MAY, 1879. 185 32' India Rubber Co. vs. Rubber Comb and Jewelry Co. should have been granted. There was no evidence whatever upon which to base a judgment against them. It is proved, and no attempt made to contradict it, that they were not in the busi- ness, individually or personally. That they were officers of the defendant, the Rubber Comb and Jewelry Company, can in no way make them personally responsible. If they had been manu- facturers, on thejr own account, they could not be joined, It would be a case of alleged wrongs by different parties, There- fore the objection of improper joinder of parties should have been sustained, and all these three defendants should have had judg- ment for costs. Abbott & Fulle?-, attorneys, and Messrs. Fuller e^ Gilhooly, of counsel for respondent, urged: I. The plaintiff's name, "The India Rubber Comb Company," used on or in connection with its manufacture, is a valid trade- mark, of which the plaintiff is entitled to the exclusive use {Newby v. Oregon Central Rw. Co., 1 Deady, 609). In the Matter of the India Rubber Company, (Off. Gaz. Rat., November 30, 1875), the opinion of the Commissioner contains a citation and discussion of the cases on this point, and he holds that said words constitute a valid trade -mark. (See, also, Colmanv. Crump, 70 N. Y, 578). This particular trade-mark, to wit: the words "The India Rub- ber Comb Company," has been sustained by the Superior Court in the case of India Rubber Co. v. Meyer. II. The plaintiff is entitled to the exclusive use of the numbers " 101 " and "32," as applied to combs, and the number "2," as applied to hair-pins, (see Gillott v. Esterbrook, 48 N. Y, 374, 377)- III. The plaintiff is entitled to the exclusive use 'of the cut or representation of a building, as shown in the exhibits annexed to the complaint, in connection with combs, and any simulation of such cut should be enjoined. Such a device is a good trade- mark, (Smith v.. Reynolds, 10 B latch/., 100; Kinney v. Basch, [unreported; J Coddington Dig. Trade- M., 85; Fader v. Hover, Id., 242; Colman v. Crump, 70 TV. Y, 573). l86 SUPERIOR COURT OF NEW YORK. India Rubber Co. vs. Rubber Comb and Jewelry Co. 3 2 IV. The defendants are joint tort feasors, and as such may be sued jointly. The defendant, Dittenhoeffer, is the president of the Rubber Comb and Jewelry Company; the defendant, Sonne- born, is secretary and treasurer; and the defendant, Cohn, is a salesman and corporator, (see Goodyear v. Phelps, 3 B latch/., 91; Poppenhusen v. Falke, 4 Id. , 493). V. Where the imitation of plaintiff's trade-mark is close, and the manner in which defendant's articles are put up nearly resem- bles the plaintiff's, the law must presume it to have been resorted to for the purpose of inducing the public to believe the article is that of the platntiff, whose trade. mark is imitated and for the pur- pose of supplanting him in the good-will of his business. ( Curtis v. Brxan, 2 Dalv, 312; Taylor v. Carpenter, n Paige, 292/ Brahan v. Bustard, 9 Law Trials, N. S., 199; A". C. , 2 jYem R., 572; Amoskeag Manufg Co. v. Spear, 2 Sand/., 599-608; Edelsten v. Edelsten, 9 Jur. N. S., 479; Colman v. Crump, 70 N. Y., 593). And in order to entitle plaintiff to relief, it is not necessary that the imitation should be so close as to deceive persons seeing the two trade-marks side by side, (Seixo v. Provezendo, Law R., 1 Clt., 192). In a recent case in the House of Lords. (IVotherspoon v. Currie, 42 Law J. R. A r . S. Cli., 130), Lord Chelmsford lays down the rule, that, to establish a case of infringe- ment, it is sufficient if the resemblance is such as to be likely to make unwary purchasers suppose that they are purchasing plain- tiff's articles. See, also, in the case of Blackwell v. Armistcad, 5 Amer. Law Trials, 85), decided in 1872. VI. In the case of Gillott v. Esterbrook, (45 N. Y., 374), the Court of Appeals held that the use and advertisement of a trade- mark by others for a period of fifteen years, where plaintiff had no knowledge of such practice, or acquiesced in the same, did not preclude the owner from enforcing his sole right, And in a suit to enjoin defendants from selling "Charter Oak" stoves bearing a certain trade-mark, the fact that parties in other localities man- ufactured "Charter Oak" stoves, and sent them into the market to compete with plaintiff's manufactures, in no way aids the de- fence, unless it appears that the plaintiff assented to or acquiesced in such infringement of his rights. (Supreme Ct. of Mo., Filler MAY, 1879. 187 3 2 India Rubber Co. vs. Rubber Comb and Jewelry Co. ?'■ Fassett, 44 Mo., 168). So, in the case of Kinahan v. Bolton, 15 Irish Ch., 75), the Lord Chancellor held that in order to prove acquiescence by a firm in the piratical use of their trade- mark, knowledge of such use must be proved, and that is not accomplished by the proof of publication of advertisements, which could have been an invasion of the rights of the firm if those adver- tisements have been issued, not steadily or uniformly, but inter- changeably with other advertisements in some respects similar, but not infringing the rights of the firm, VII. In the case of Dale v. Smithson (12 Abb. Pr., 237J, the General Term of the Common Pleas expressly held that the plain- tiff is entitled to protection in the exclusive use of his trade-mark, although it contains a fictitious name as the name of the manu- facturers of the article, provided it does not misrepresent the quality and substance of the manufactured article, and it is not used with fraudulent intent. In the case of Curtis v. Bryan (36 How. Pr., 33) the General Term of the Common Pleas held that false and exaggerated statements in advertisements of the manu- factured article, not contained in the label sued on, do not deprive the owner of his right to protection in his exclusive use of his trade- mark. VIII. The main inquiry in such cases is, are the ultimate cus- tomers deceived? {Coats v. Holbrook, 2 Sandf. Ch., 586; 3 Barn. cV Cress., 541; 5 Dowl. & R., 292). IX. A reference was properly ordered to ascertain the amount of damages sustained by the plaintiff {Blackwell v. Armistead, 5 Amer. Law Times, 85, decided in 1872; Taylor v. Carpenter, Cox Amer. Trade- M. Cases, 32; Blofield v. Payne, 4 Bam. dr A., 410; 3 Mylne & Cr., 338; Bailey v. Taylor, 1 Buss. & M., 73; Whittingtonv. Woolen, 2 Swanst., 428). See also a decision of the General Term, Supreme Court, first department, Dec. 30, 1875, in the case of Faber v. Horsey [unreported]; Coddington Dig. Trade- M., 242). X. The well-known case of Boardman v. Meriden Britannia Co., (5$ Conn., 402, and Cox Amer. Trade-M. Cas., 490) resembles in almost every particular the one at bar. SUPERIOR COURT OF NEW YORK. India Rubber Co. vs. Rubber Comb and Jewelry Co. - 3 2 By the Court, — Sedgwick, J.: The answer of the defendant corporation admits that it is, and since its organization, has been, engaged in the sale of combs and hair-pins, "and that it has affixed thereto labels similar to those shown in plaintiff's Exhibit A i, and used Exhibits B i, C i and D i, for only a short time, and but few of them; but denies that the same were fraudulent imitations of plaintiff's labels." 5. This answer was sworn to December 14, 1877. The corpo- ration defendant was incorporated January 16, 1877. The testi- mony bearing on the time through which the defendant used the labeft, and the admissions of the answer, sufficiently showed such an actual use, and danger or threat of further use, that the plain- tiff, if otherwise entitled, would not be deprived of his remedy by injunction, even if the Court were satisfied that shortly before the service of summons the defendant had stopped using them. - The labels, Exhibits C 1 and D 1 , seem to have been those not used by the defendant corporation. The defendant, Sonneborn, in his answer, alleges that these labels were devised and used be- fore, but not after, the incorporation of defendant. His evidence did not clearly show that these labels had not been used after the incorporation, and on the whole case it appeared that the admis- sion of the answer of the defendant corporation was correct. 1 . These labels were in undoubted and designed imitation of plaintiff's labels, Exhibits C and D. The defendants used as their name, which it was not, the words, "The India Rubber Comb and Jewelry Co.," and the greatest part of the other details were so nearly like the corresponding details of plaintiff's labels that there could be no doubt that defendant's intention was to represent by their labels that the goods on which they were to be in some fash- ion placed were goods made by the plaintiff, and in the nature of things it was likely that the intention would be successfully carried out. 2. With these facts in their minds the defendants proceeded to devise or use for combs the labels Exhibit A 1 and Exhibit B 1, and made as much of an imitation as the first, excepting the word "India" is left out. The right to use their name, as changed into "The Rubber Comb and Jewelry Co.," is maintained, on the MAY, 1878. 189 3S India Rubber Co. vs. Rubber Comb and Jewelry Co. ground that the defendant, having been incorporated by the latter name, there was a clear legal right to use it upon their goods. Without adverting to an important consideration that they, under the statutes of this State, took and composed that name according to their pleasure, with perhaps a view to the future, which may lead to different rights to those that refer to a name involuntarily bestowed upon a natural person, it is certain that there is some limitation of the use of a lawful name. If a right name is used intentionally in a manner that draws attention from a difference between it and another name, so that the effect produced is that of the other name, there is a responsibility for the effect. It is, as to the effect, not the use of the right name. In the present case the way in which the defendants printed their name: "The Rubber Comb and Jewelry Co.," viz., upon pieces of paper like those used by the plaintiff, in ink of a like color, and at the top of several colorable imitations of a picture of factory, of description of goods, and of the words, "warranted not to warp or split, and can be cleaned in warm water," was likely to draw the attention from the difference of name, and to lead the ordinary reader not to perceive it, but to think that it was plaintiff's name. The labels themselves, and the testimony in the case, keeping in mind that the labels were made shortly after what was beyond doubt an intentional imitation, prove that the use of defendant's name on the later ones was intended to produce an impression that it was the plaintiff's name. A little fact is very significant to show that the defendants had in mind the character of plaintiff' s.labels when they made theirs. On plaintiff's labels was "warranted not to warp or split, and can be cleaned in warm water." The defend- ants, on their first label, copied this in its very words. On their later, they placed, "warranted not to warp or split, and can be cleaned in hot water. ' ' It would seem as if the change of < 'warm' ' to "hot" was a preparation of evidence. 2. In such case it is so easy to give a distinguishing mark that shall have no doubt about it, that it can almost be said that merely the failure to do it shows an actual purpose not to do it. The sum of this part of the case is, that the plaintiff proved that the labels of defendant, when placed upon goods, were a representation that igo SUPERIOR COURT OF NEW YORK. India Rubber Co. vs. Rubber Comb and Jewelry Co. 3 3 the goods were the manufacture of plaintiff. The law gives pro- tection against this. Here maybe noticed the allegation that plaintiffs had abandoned any exclusive right they may have had by acquiescing in the use of this kind of labels by others, for years. The facts did not sus- tain the allegation. If there were proof (which was not clear) that there was such a use by others, there was no proof of acquies- cence by plaintiffs in it. As to the sale of goods by the plaintiffs, under the name of the United States Company, the defendant's requests to the Court do not claim that the labels or marks in question were used. I can- not ascertain from the evidence that the defendants attempted to prove it. Another allegation is that the label of plaintiff should not be protected, because it had on its face the words "sole manufac- turers of Goodyear' s India Rubber and Gutta Percha Combs," and that this was false and fraudulent to purchasers. Whether it was or was not false was a question of fact. The Court could not take judicial cognizance of what Goodyear' s India Rubber and Gutta Percha Combs were. It was possible that a party should be the only manufacturer of such combs, and that at least a claim to be so was not fraudulent. The burden was upon defendant to show the falsity and fraudulent intent, but no testimony as to them was given. 6. It is also claimed that there was no proof that any one in the market had been, or by an expert, that any one was likely to be deceived into the belief that goods having defendants' labels were made by plaintiff. So far as a right to a preventive remedy by injunction is concerned, I do not think that such proof was necessary. If a Court could not judge from a resemblance that it was likely to produce the effect that the original or true one would produce, and which, I think, it can, certainly it. may infer from a fraudu- lent intent of a person in circumstances which would admit the consummation of it, that it is likely that the iutent will be suc- cessful, and others will be deceived. MAY, 1879. igi 32 Ir.dia Rubber Co. vs. Rubber Comb and Jewelry Co. For these reasons, the judgment against the use of the labels must be sustained, and I proceed to that part against the use of portions of it. 3. Whether a name can be a trade-mark, technically, is doubted hy the learned counsel ; but I do not understand them to doubt that a defendant may be enjoined from using the plaintiff's name. The position was not taken, if it be sound ; and as to this, im- pression is given that what the words of plaintiff's name really expressed is a kind of trade, and that, as the trade is open to all, the plaintiff can have no exclusive right to words that intelligibly designate the trade. On the facts, I think it was shown that there had been a purpose to use a name in imitation of plaintiff's on a label, and the case made it proper to consider whether there was not danger of a use of it apart from the labels. No closeness of reasoning, based on the fact that it has never been used by itself, is called for in a case which discloses a meditated general wrong. It does not seem to be material that the name is said, in the pleadings and findings, to be a trade-mark. The material thing is stopping its use by defendants. 4. As to the use of the numbers, " 2," "101," and "32," I am not able to see that the principles of Gillott v. Esterbrook, (48 N- Y., 375), should not be applied. In that case and in this, the numbers were used to distinguish one pattern or character of goods from other patterns. In this case, the defendant's labels prove that the numbers were useful in the market to designate these patterns. The numbers were selected arbitrarily, and of them- selves expressed no size or quality. The findings as to defend- ant's knowledge of the plaintiff's use of the numbers to designate their goods, and of the fraudulent intent as to plaintiffs and third persons, were substantially the same in the two cases. It was not shown in this case that the plaintiff had acquiesced in the use of these numbers by. others. I am of opinion, however, that the terms of the judgment were too broad in restraining the defend- ants from using in any way the cut or representation of a factory, on their goods. The plaintiff had never used that as a trade- mark by itself, in the same sense that the numbers were used. The defendants are still at liberty to use a picture of a factory in 192 SUPERIOR COURT OF NEW YORK. India Rubber Co. vs. Rubber Comb and Jewelry Co. 32 a proper manner. The judgment should have been confined to the use of an imitation, colorable or other, of the picture of a factory, used by plaintiff. This is, however, hardly more than a matter of form, which could have been corrected upon suggestion, on the settlement of the judgment. The judgment should be modified by striking out the absolute prohibition of the use of a picture of a factory, and confining the imitation to a picture like that used by the plaintiffs. The case disclosed individual acts by the defendants other than corporation, jointly with the corporation, and there was a joint liability to the plaintiff. The judgment, after being modified in the manner that has been stated, is affirmed, with costs. Van Vorst, J., concurred. JUNE, 1879. 193 S3 Sheppard & Co. vs. Stuart, et al. 33 COURT OF COMMON PLEAS, PHILADELPHIA. Sheppard & Co. vs. Stuart & Peterson. Decided 3 June; 1879. Reported 13 Phil., 117. "■Excelsior Stove" Case. The principle is well settled that a manufacturer may, by priority of ap- propriation of names, letters, marks or symbols of any kind to dis- tinguish his manufacture, acquire a property therein as a trade-mark, but said mark must indicate the "true origin or ownership" of the goods to which the mark is applied. In cases involving the question of trade-mark, the evidence must show the first appropriation of the device by the claimant; its application by him to his goods or business; and that the trade or public recognize the article or business by that device as made or sold by him or be- longing to him. In no other way can a mark or device indicate "true origin or ownership." Although a man may not intend to injure another, yet he will not be allowed to adopt the marks by which the goods of such other person are designated, if the effect of adopting them would injure such other person. Permission to one who is merely a dealer to place his name on articles bearing the trade-mark of the manufacturer, especially if such permis- 13 194 ' COURT OF COMMON PLEAS, PHILADELPHIA. Sheppard & Co. vs. Stuart, et at. 3 3 sion was in accordance with the custom of the trade, is no indication of an abandonment of the trade-mark by the manufacturer. 5. The plaintiffs have the right to use the word "Excelsior" as » trade- mark. Leonard Myers, Esq., attorney for Isaac A. Sheppard & Co. P. K. Erdman and George W. Thorn, Esqs., attorneys for Stuart, Peterson & Co. FlNLETTER, J.: In i860 the plaintiffs commenced business. Their establish- ment was designated the "Excelsior Stove Works." In 1864, they began to manufacture the "Excelsior" range. They adver- tised largely, and it came into general use. It became very popu- lar; so much so that parties advertising houses for sale would name the < ' Excelsior ' ' range as one of the conveniences to recommend the property ; and builders in Philadelphia frequently stipulated for the "Excelsior" range in their specifications. More than forty thousand were sold in fifteen years. In 1877, the defendants began to make a range with similar characteristics, and placed upon it the words "New Excelsior," " Improved Excelsior," and "Excelsior." It differs only in ex- ternal ornamentation from the plaintiffs', and is substantially the same. Its component parts correspond in size and shape with the component parts of the plaintiffs' range. The plaintiffs' range can be repaired by castings made from the patterns of the defend- ants' range. Upon the several parts of the defendants' range the word "Excelsior" is imprinted. The defendants advertised in the Public Ledger as follows: "Excelsior Ranges for sale. Excelsior Ranges of the different kinds and sizes, double ovens, single ovens, right and left ; and hot air Excelsiors always on hand for sale to dealers and builders. "Grates, cross-pieces, water-backs, or 1 cast-iron fire plates, to fit all Excelsior ranges, always on hand. "Stuart, Peterson & Co., < < Broad and Noble Streets. ' ' JUNE, 1879. 195 83 Sheppard & Co. vs. Stuart, et al. In addition they placed a sign-board over their office at Broad and Willow streets, with the words "Excelsior Ranges" upon it. It is clearly established that "Excelsior" upon plaintiffs' ranges indicated to the trade, and to the public, that such ranges were made by them. Their range is widely known to the trade and to the public as the "Excelsior" range. Builders generally connect it with the firm of Sheppard & Co., and it is generally known as Sheppard 's "Excelsior." There can be no doubt that direct injury has resulted to the plaintiffs from the conduct of the defendants. If has suggested the idea that plaintiffs had ceased to manufacture the < « Excelsior ' ' range ; and that their range had been improved by the defend- ants. The defendants deny that the use of the words " New Excelsior ' ' and the " Improved Excelsior" is either intended or calculated to deceive the public or to induce them to purchase as, and for, the Tanges of the plaintiffs. It may be that the defendants did not intend to deceive the public ; but it can scarcely be said that these •devices were not calculated to do so. What other idea is suggested by the words, " New Excelsior " and " Improved Excelsior," than that a newer improved < ' Excelsior ' ' is made ? It can be neither a "New Excelsior," nor an "Improved Excelsior," without suggest- ing an important and valuable change in the old "Excelsior." Of what use can these names be unless they call to mind the old "Excel- sior?" And of what use would that be unless it also recalled the usefulness and popularity of the old ? It should not be forgotten in this connection that the defendants say their " object was simply to produce a light, cheap range, which could be sold in competition with the cheap ranges of the plaintiffs. ' ' If this were otherwise it may not be said that the assumption of the name "Excelsior" was not calculated to deceive the public, and injure the plaintiffs. It may be that the defendants did not intend to injure the plaintiffs ; but if their conduct produced injury they must be held to have intended that injury, In Horn v. Last, ro Jur., 106, it was held, refusing a motion to dissolve an injunc- tion, that defendants having made so complete a copy of plaintiffs' mark, must be taken to have done so with an intent to give an 196 COURT OF COMMON PLEAS, PHILADELPHIA. Sheppard & Co. vs. Stuart, et al. 3 3 advantage to which they were not entitled. Judge Paxson, in Dixon Co. v. Guggenheim, 7 Phila. R., 408, cites English cases which held that: "A man though not intending an injury to another should not be allowed to adopt the marks by which the goods of another are designated, if the effect of adopting them would be to prejudice the trade of such other person. It is not necessary to aver or prove wrongful intent on the part of another." If, therefore, the plaintiffs are entitled to use the word "Excelsior" as a trade-mark, it would follow that the defendants should be enjoined. The defendants contend that the plaintiffs are not entitled to claim the word "Excelsior" as applied to their ranges as a trade- mark, because — 1. Hicks, Wolf & Co., of Troy, New York, have used the same word upon flat top ranges since 1861, continuously. 2. The word is a fancy title for stoves of various kinds in the trade generally. 3. Orr, Painter & Co., made and sold similar ranges with the word "Excelsior" upon them. 4. The ranges of defendants have improvements. 5. That defendants' ranges are different. 6. The word Excelsior as used by plaintiffs does not indicate that they are owners of the ranges. 7. The plaintiffs have placed other names upon some of their ranges. 8. The plaintiffs have put the names of buyers upon the ranges in near connection with the word "Excelsior," and have thereby abandoned the word to general use. 9. Defendants have been making them for two years, and the plaintiffs did not forbid them until about a year ago. The first and second reasons may be disposed of by the remark that the evidence shows that the ranges referred to were not the same as plaintiffs. The plaintiffs do not claim property in the word "Excelsior." Their claim is that they have first appropri- ated that word to a specific article of their manufacture. To the third it may be said that it does not appear that plain- tiffs permitted or acquiesced in the use of the word "Excelsior" JUNE, 1879. 197 S3 Sheppard & Co. vs. Stuart, et al. by Orr, Painter & Co.; or that they knew of such use of it as would imply acquiescence or permission. It is perhaps sufficient to say that no improvement in the range or difference in appearance would justify the defendants in the use of the word "Excelsior." If the improvements and changes make a different kind of range they would have the right. But the improvement and changes have not substantially altered the character and appearance of defendants' ranges from that of the plaintiffs' . 1. It is also contended that the word "Excelsior," as used by the plaintiffs, is not a trade-mark, but a fancy name to indicate a particular kind of stove, because it does not indicate origin or ownership. To sustain this position many authorities were cited, but that which was most relied upon was Ferguson v. Davol Mills, 7 Phila., 256, in which Allison, P. J., says: " The simplest case of a trade-mark is the name and address of the claimant, and it is absolutely requisite that a device or symbol should per- form the office of a finger-board ; should indicate the name and address of the manufacturer to invest it with the attribute and entitle it to the protection of a trade-mark." This language is clear, vigorous and decisive ; and there can be no doubt that the cause was determined upon this principle alone. It will be seen from an examination of the authorities cited by the learned Judge, that he is not fully sustained by them in this advanced position. They affirm only that a trade-mark should indicate the "true origin or ownership of the article offered for sale." The learned Judge was justified, perhaps, in thus giving a sensible form to what was before a meaningless phrase, adopted and continued in almost every trade-mark case without necessity, without application to the cases, and without definition or explanation. In the Dixon Co. v. Guggenheim, 7 Phila., 408, Judge Paxson adopts as "well sustained by reason and authority," the doctrine of "true origin or ownership." In justice to him it should be observed that it was not raised in the case before him, and his at- tention was not directed to its full import. In his very able and carefully prepared opinion, he cites the decisions which declared "Revere House," "New York Hotel," "The Captain's Live and 198 COURT OF COMMON PLEAS, PHILADELPHIA. Sheppard & Co. vs. Stuart, et al. S3 Let Live Oyster and Dining Rooms," to be. trade-marks. He also says: "The name of a newspaper is a trade-mark;" and with proper judicial indignation adds: "Can it be supposed that if some one were to commence the publication in this city of a Public Ledger of the same size, price and style as the one published by Mr. George W. Childs, that a Court of Equity, upon a proper ap- plication, would not promptly arrest the career of such a piratical craft by an injunction! " And yet neither of these words indi- cate "origin or ownership." It is not now important to ascertain how and when this doctrine originated. It has been followed as an axiom. And yet to the- thoughtful it must always have been a perplexing enigma. It is submitted that in neither of the cases cited by Judge- Allison is the question of "the true origin and ownership" raised,, or discussed, or denned. The question raised and decided was,, that words which designated the article itself, or its attributes, were not trade-marks. This is so in all the cases which we have been able to examine. As illustrative of all we may take the lan- guage of C. J. Duer, in Amoskeag Co. v. Spear, 2 Sand. S. C. J?., 509: "A mark can only be protected as a trade-mark when it is used merely as indicating the true origin and ownership of the article offered for sale ; never when it is used to designate the article itself." We may be allowed in'this connection to say, that we have not been able to find any case except Ferguson v. Davot Mills, in which the doctrine of "true origin or ownership" is. distinctly avowed. It might, perhaps, be useful at this , stage to ascertain what a trade-mark is, and what it indicates. Stokes v. Landgraff, 17 Barb., 608, Strong, J., says: "The principle is well settled that a manufacturer may, by priority of appropriation of names, let- ters, marks, or symbols of any kind to distinguish his manufac- ture, acquire a property therein, as a trade-mark." "The right of trade-mark is said to be best termed an exclusive right arising from first use." Bouvier. "The rule sometimes laid down on this subject is: that if a name, sign, mark, brand, label, word, or device of any kind, can be advantageously used to designate the goods, property, or JUNE, 1879. igg 3 3 Sheppard & Co. vs. Stuart, et at. particular place of business of a person engaged in trade, manu- facture, or any similar business, he may adopt and use such as he pleases, "which have not before been appropriated . ' ' Story's Equity, sec. 951. "The physiology of a thing called a trade-mark must be ex- amined and carefully analyzed. It has an individuality of nature. Meaningless in itself, when placed in a certain juxtaposition, it involves an idea. It virtually says that the vendible object to which it is attached is the workmanship or the selected article of the owner of the mark. It is intended to strike the eye, and sometimes the ear by its sound when spoken of, and thus excite . inquiry. It should possess such salient features as might at once arrest attention, and put the intended purchaser on the alert." Browne on the Law of Trade-Marks, sec. 88. In The Amoskeag Manuf. Co. v. Spear, Chief Justice Duer says: ' ' Every manufacturer has an undoubted right to distinguish his goods by a peculiar mark or device, in order that they may be known to be his." How is a mark or device to indicate "true origin or owner- ship;" or to indicate the name and address of the manufacturer? In and by itself alone this is impossible. It is only by use as the device of him, who distinguishes his goods by it, in order that they may be known as his, that it can ever indicate "true origin or ownership." In Allegheny Fertilizer Company v. Woodside, 1 Hughes, 115, Giles, J., says: "But it is argued that the name adopted ('Eureka') did not sufficiently indicate < origin or ownership ' to be regarded as a trade-mark. This was a mistake. It served to distinguish the complainant's manufacture as effectually as names ever serve to distinguish things." In the Meriden Britannia Co. v. Parker, 39 Conn., 450, the trade-mark consisted of the words "1847, Rogers Bros., A. 1." The Rogers Bros, were superintendents of the petitioners. Th* respondents contended that the said trade-mark did not indicate the true origin of the goods. Held, that the representation that the Rogers Bros, were the manufacturers was true in a certain sense, but that the petitioners were in another sense the manufac 200 COURT OF COMMON PLEAS, PHILADELPHIA. Slieppard & Co. vs. Stuart, et al. 3 3 turers. "Like all other symbols and devices used as trade-marks its import was not at first perhaps fully understood. The effect as well as the value of a trade-mark is the work of time and ex- pense. This probably was no exception to the rule. However this may be, it seems to have been well understood by the trade at the date of this petition, that goods bearing that stamp were manufactured by the petitioners. Held, that the trade-mark suffi- ciently indicated the origin and ownership of the goods." In the Delaware and Hudson Canal Company v. Clark, 13 Wal- lace, 311, Strong, J., says: "Hence the trade-mark must either by itself or by association point distinctly to the origin or owner- ship of the articles to which it is applied. The first appropriator of a name or a device pointing to his ownership, or which by being associated with articles of trade has acquired an understood refer- ence to the originator or manufacturer of the articles, is injured whenever another adopts the same name for similar articles." 2. In other words, the evidence must show the first appropria- tion of the device by the claimant, its application by him to his goods or business; and that the trade or public recognize the article or business by that device as made or sold by him, or be- longing to him. In no other way can a mark or device indicate "true origin or ownership." The evidence in this case is conclusive that the plaintiffs first appropriated the word < ' Excelsior " to a specific article of their manufacture ; that they have continuously used it for the last fif- teen years, during which time they have made and sold more than forty thousand ; that the whole trade recognized them as the makers of the articles to which the word "Excelsior" was at- tached. This device therefore pointed out the "true origin and ownership" of the goods, and thereby became a trade-mark. It would be useless to waste time in collating the single and collective words and devices which have been held to be trade- marks. The word "Excelsior" alone has been repeatedly held to be a good trade-mark. In Wins or v. Ciyde, 9 Phil., 513, (affirmed by the Supreme Court), " Keystone Line " was held to be a good trade-mark. JUNE, 1879. 20I S3 Sheppard & Co. vs. Stuart, et al. 3. It is further contended that inasmuch as the plaintiffs, at the request of a few purchasers, placed another name upon a few ' of their ranges, and erased the word ' ' Excelsior, ' ' they thereby abandoned their right to the use of the word as a trade-mark. These instances can only be regarded as special contracts for the goods without the trade-mark. They can in no sense be regarded as a representation to the public of the abandonment of the trade- mark and the adoption of another. It is the purchaser who changes the name, and it is nowhere held that the purchaser of an article protected by a trade-mark is bound to maintain the name upon the article. He buys for use and consumption, and may retain the mark or not as he pleases. The province of a trade-mark is to bring seller and buyer to- gether, that the one may sell his merchandise, and the other ob- tain the particular goods the reputation of which has won his con- fidence. When this is done the office and object of the trade- mark is accomplished. The seller has no longer any control over or interest in the article. It belongs wholly to the purchaser, and with it the incident, the trade-mark. As he may consume or destroy, or alter or change the article, so may he its name. What he may do himself, he may do by another ; what he may do by another, he may do by the seller. If he can do this after pur- chase, he may certainly contract to have it done before purchase. This is a matter in which the general public can have no interest, and therefore have no interest or concern which should be con- sidered. It in no way affects the usefulness of the article. But why should it be held that the manufacturer must place the trade-mark upon all of his goods ? He may prefer, for his own advantage and the protection of the public, to place it only upon his best, and leave the inferior nameless, or give them another name. Honesty and fair dealing and his own interest would suggest this. And if this be done it should not be regarded as an abandonment. 4. The evidence discloses the fact that the plaintiffs in some cases, when requested by dealers, placed the dealer's name upon the range in proximity to the word "Excelsior." It is shown, how- ever, that this is a custom of the trade known to and acted upon 202 COURT OF COMMON PLEAS, PHILADELPHIA. Sheppard & Co. vs. Stuart, et al. 33 by all dealers and manufacturers. It is proved that even when the names of dealers were thus placed upon the ranges, they were still known and recognized by the trade, dealers and manufac- turers, as ranges made by the plaintiffs. It is contended that this was permitting those dealers to hold themselves out as the manufacturers of such ranges, and was therefore an abandonment. It must be observed that there is nothing in connection with the names of these dealers to indicate that they are the manufac- turers, and there is no evidence that any one ever supposed they were the manufacturers. On the contrary, there is ample evi- dence even in the affidavits of the defendants, that they were still regarded- as manufactured by the plaintiffs. Why then should we force the inference that these names indicated the names of the manufacturers, for the benefit of one who wrong- fully appropriates to himself another's industry, enterprise and property? i In considering acts from which acquiescence or abandon- ment are or may be inferred, it should not be forgotten that a trade-mark is property. In all cases of litigation, it may fairly be said to be valuable property. The man who lends his horse frequently or permits another to use it is never said to have aban- doned his horse to the public, or to acquiesce in any claim to use the horse at pleasure. Much less can these acts justify the stranger who breaks into the stable and steals the horse. What injury can arise from this practice? Who can be de- ceived or betrayed into any error or injury thereby? The public who buy for consumption have the article they expected, and bargained for, with its name, the trade-mark, upon it. They have in addition, as a further security, the name and indorse- ment of the dealer. They therefore have no cause of complaint, and the public who do not purchase, have no right to complain. What is it to the man who does not buy, or want to buy, that these names may possibly indicate that the owners of the names have the right to manufacture the ranges? Such acts do not denote abandonment. The owner of a store does no injury to his right of property in his store, or its con- JUNE, 1879. 203 S3 Sheppard & Co. vs. Stuart, et al. tents, or his business, by permitting the- names of some of his employees to be placed on the inside or outside of the building, as is customary in this city. The rights of property are not so easily frittered away. It might be that acts like these, might betray a person into a violation of the right of property in a trade-mark. If they did he would be excusable, but it would confer upon him no right to further use the mark against the protest of the owner. The defendants make no such pretence as this. They do not pretend that they were induced to believe that plaintiff had conferred upon these dealers the right to manufacture the range and use the trade-mark. On the contrary, they have shown by their own evi- dence that they knew all about the matter, and that it was done in pursuance of a well established custom of their trade. How can the probability that the public might believe these dealers to be the manufacturers with _ the right to use the trade -mark, give the defendants the right to use the trade-mark when they know the fact to be otherwise. In considering a question of trade-mark the customs of trade should not be ignored. The true doctrine, perhaps, should be to consider them in the light of and in aid of such customs. 4. What the customs of trade allows, the law should allow: for such customs must be for the general good as well as the good of the special trade, commercial custom made a promise in writing to pay in thirty days a promise to pay in thirty-three days. It is suggested then that the custom, which the plaintiffs recognized, should not work a forfeiture, especially when no one was thereby betrayed into the belief that any one, other than the plaintiffs, had manufactured the articles. An explanation of this custom may be found in the fact that the ranges as made both by the plaintiffs and defendants are not complete for use as they make and sell them. They are not ranges to the public or to the consumer until they are set up and encased in brick, as the movements of a watch are not a watch until encased. It is the dealer who makes them fit for use. It is his trade and business to build in the ranges. When the range is completed it is his manufacture. The plaintiffs and defendants 204 COURT OF COMMON PLEAS, PHILADELPHIA. Sheppard & Co. vs. Stuart, et al. 3 3 have furnished him with only one of the component parts — one of the'materials. The manufacture of the movements.of a watch may have a trade- mark for his own work; it is or may be, so far as he is concerned, a completed work. Can it be said that he loses his right to that trade-mark because he permits another manufacturer, whose busi- ness it is to extend his work to make it fit for use, to place his name upon the thing called a watch? Why then should it be said that the plaintiffs lose their right to their trade-mark for the article they furnish to the trade, because they permit the dealer who uses their article, to furnish for the public a completed range, to place his name upon it. To the plaintiffs and the defendants the dealers are the public. The evidence shows that they are the sole purchasers. And it also shows that no dealer or other person has been deceived by the dealer's name upon the ranges into believing that he was the manufacturer of the parts made by the plaintiffs. On the con 7 trary, the evidence of the respondents shows that even when such names are upon the ranges, they are still recognized and regarded as the ranges of the plaintiffs. It would therefore be stretching an inference to the bounds of probability, to infer from such a license that plaintiffs had aban- doned their right in the trade-mark to this community. Even if we are altogether in error in all this, it will be observed that it is conceded that the exercise of this custom of the trade by the plaintiffs was simply a license. It needs no citation of author- ities to show that a license is not an abandonment — not even evi- dence of abandonment. It is perhaps the highest evidence of the assertion of the right and acquiescence therein. This doctrine was recognized in Winsor v. Clyde, 9 Phil., 513. It has been strongly urged that the plaintiffs have lost their right of action by their delay in bringing suit, or in asserting their claim. It may be that even a wrong-doer may sometimes successfully defend upon this ground. It must, however, be such a delay as would lead a reasonable person to suppose that the owner had abandoned his device, or such as induced the defend- ants to act, or under such circumstances as required the owner JUNE, 1879. 205 S3 Sheppaid & Co. vs. Stuart, et al, to assert his right. Even in such cases the title in the trade-mark is not lost or deemed abandoned, but the owner is estopped from asserting it to prevent another from using the device. It is evi- dent therefore that each case must be decided upon its own facts. There can be no fixed rule, and time is only a matter of evidence to be considered with all others. There is no evidence in this case that the defendants were encouraged or misled into their wrongful acts, or that the plaintiffs were silent when they were called upon to speak. The evidence shows that they moved with as much celerity as was consistent with a proper vindication of their right. The delay seems to have been no greater than was necessary for a prudent, careful preparation for the legal conflict. 5. The conclusions to which we have come are, that the plaintiffs have a right to the word "Excelsior" as a trade -mark; that the defendants have wrongfully used that trade-mark to the injury of the plaintiffs, and should be enjoined therefrom. The motion to continue the special injunction is therefore allowed. 206 UNITED STATES PATENT OFFICE. Ex Parte Halliday Bros. 34 34= IN THE UNITED STATES PATENT OFFICE. Ex Parte Halliday Bros. Decided 18 June, 1879. Reported 16 Official Gazette, 500. "Striped Barrel" Case. A "representation of a barrel consisting - of light and dark wood, the staves being alternately composed of each color," cannot be registered as a trade-mark for flour packed in barrels similar to that represented in the picture, because in such application it is descriptive, not, indeed, of the quality of the flour itself separated from its package, and, there- fore, not in marketable form, but of the marketable commodity, the barrel of flour. But when applied to sacks of flour, or to barrels of flour having staves all of one color, it is an arbitrary symbol, and is registrable as a trade-mark. If the applicant shall by amendment exclude from the subjects of the trade-mark, flour packed in barrels with staves of different colors, they will be entitled to registration, provided they were the first to adopt the trade-mark. Interlocutory Appeal. Trade-Mark. — Application filed April 26, 1879. Messrs. Prindle 6° Co., for appellants. JUNE, 1879. 20£ 34 Ex Parte Halliday Bros. Paine, Commissioner : The applicants seek to register as a trade-mark for wheat flour the — Representation of a barrel constructed of light and dark wood, the staves being alternately composed of each color. The trade-mark is to be affixed to packages containing wheat flour manufactured by them, by stamping, printing, branding, or in any well-known manner, and is also to be used in circulars, illustrated catalogues, labels, brands, &c. The Primary Examiner refuses registration of the trade-mark on the ground that "it does not amount to an arbitrary symbol." 1. Such a representation cannot constitute a trade-mark for flour packed in barrels similar to that represented by the picture. Such a trade-mark is inadmissible, not because the construction of a barrel is incapable of protection by a trade-mark applied to it, although it is true that it cannot be so protected, as was decided in the cases of Moorman v. Hoge, (1 Sawyer, 79), and Harrington v. Libby, (12 Official Gazette, 188), but because when applied to the flour-barrel which it represents it becomes descrip- tive — descriptive not of the quality of the flour itself separated from the package, and therefore not in marketable form, but of the marketable article, the barrel of flour. All who have a right to sell flour in such barrels have a right to use in their trade pictorial representations of the same barrels. But when such a representation is applied as a trade-mark to sacks of flour, or to barrels of flour having staves of one color only, it is not descrip- tive, but is an arbitrary, symbol. And while it is true that all who have the right to vend flour in such variegated barrels have a right to place this representation on such packages and to u§e it in the sale of flour so packed, it is not true that all who have the right to vend flour in several different packages have a right to use a representation of one of those packages as a trade -mark for another, to the exclusion of the right of registration of such a trade-mark for such a package in favor of the applicant who first adopted it. If the applicants shall by amendment exclude from the subjects of the trade-mark flour packed in barrels with staves of different 208 UNITED STATES PATENT OFFICE. i ,Ex Parte Halliday Bros. 34 colors they will be entitled to registration, provided they were the first to adopt the trade-mark. The decision of the Primary Examiner refusing to register the representation of the trade-mark for "wheat flour," without regard to the packages in which it may be sold, is affirmed. AUGUST, 1879. 209 35 Ex Parte Consolidated Fruit Jar Co. 35 IN THE UNITED STATES PATENT OFFICE. Ex Parte Consolidated Fruit Jar Company. Decided 26 August, 1879. Reported 16 Official Gazette, 679. Mason 's Fruit Jar Case. 1. The name of a patented article which was a valid common law trade- mark in 1870, cannot be registered for a period to extend beyond the expiration of the patent in favor of an applicant who is not the owner of the trade-mark or the patent. 2. The word "Mason," in the collocation "Mason's Fruit Jar," was a valid trade-mark at common law in 1870. 3. The validity of a common law trade-mark is not affected by the fact that the owner of the trade-mark is also the owner of «t patent covering the article to which the trade-mark is applied. The expiration of the patent does not terminate the existence of the trade-mark. 4. An assignee of a common law trade-mark which was in use before 1870, and of a patent covering the article to which the trade-mark was ap- plied, is protected by the statutory provisions, which preserves the right to register common law trade-marks which were in use before 1870. 5. "While the fact that a term has become generic is fatal to its subsequent adoption as a trade-mark, it is not fatal to its continued use, nor to its registration by the lawful assignee of those whose use rendered it gen- 14 2IO UNITED STATES PATENT OFFICE. Ex Parte Consolidated Fruit Jar Co. 35 eric any more than to its continued use or registration by the assignors themselves. Appeal from the Examiner of Trade -Marks. — Rehearing. Trade-Mark. — Application of Consolidated Fruit Jar Com- pany, filed April 12, 1877. Messrs. Foster &° Co. , for appellants. Paine, Co mm issioner : Applicant demands registration of trade -mark consisting of the word "Mason" in the , collocation "Mason's Fruit Jar." The application has been rejected on two grounds : First, that the name of a patented article is incapable of use as a lawful trade-mark after the expiration of the patent; and second, that the name "Mason" had by long use, 'become generic in its application to fruit-jars. The denial of registration by the Examiner and Assistant Com- missioner, based upon these grounds, was authorized by the record of the case as it stood at the time of the rejection, and as it now stands. While the sworn application showed that the applicants had adopted this trade-mark, it did not then., and does not now, show that they had used it a single day. It not only did not show that they had obtained the trade-mark by assignment from those who had used it before 1870, but by the averment that the applicants had adopted the trade-mark, it negatived such an acquisition. It is true the application sets forth that the trade-mark has been used seventeen years, but the applicants do not aver that it has been used by them or by their assignors. The averments taken together are consistent with an authorized adoption of a trade- mark which had been used by others, and the word "adopt," is inconsistent with the idea of an assignment. The applicants, therefore, occupy on the record the attitude of third persons seek- ing the registration as a trade-mark of the name of a patented AUGUST, 1879. 211 35 Ex Parte Consolidated Fruit Jar Co. article for a period of time which would extend beyond the life of the patent, which name had become generic by long use. 1. But now the applicants assert that by assignment they have become the owners, not only of certain patents with which this trade-mark has been associated, but also of the trade-mark itself, and that it has been used by their assignors seventeen years ; that it was used as a common law trade-mark nearly eight years before 1870. 2. This was a valid trade-mark at common-law, subject, of ■course, to the rights of other persons of the same name, whatever they might be. 3. The fact that the owners of the trade -mark also owned cer- tain patents with which it was connected did not change its •character as a common law trade-mark. Nor would the expira- tion of these patents, even if they had covered the article as a whole, and not merely certain parts of it, have terminated the -existence of the trade-mark which had been used during the life •of the patent. 4. If the applicants are the legal assignees of the patents and ■of the trade-mark, they are protected by the statutory provision which preserves the right to register common law trade -marks which were in use before 1870. 5 . While the fact that the term has become generic would be fatal to its subsequent adoption by these or any other applicants, it certainly is not fatal to its continued use or to its registration by the lawful assignees of those whose use rendered it generic, any more than to its continued use or registration by the assignors themselves. Otherwise a trade-mark, as soon as it should be- come valuable enough to be generic, would expire. If the applicants shall. so amend their application as to show in their oath that they are the assignees of this trade-mark ; that it has been used by their assignors for seventeen years, and that they are also the lawful assignees of the patents relating to parts of this fruit -jar, under which the jar bearing the trade-mark in question Ms been sold, they will be entitled to registration. 212 U. S. C. C. DISTRICT OF CALIFORNIA. Taylor vs. Bothin. 3 6 36 CIRCUIT COURT UNITED STATES, DISTRICT OF CALIFORNIA. In Equity. James S. Taylor VS. Henry E. Bothin. Decided i September, 1879. Reported 5 Sawyer, 584. "Mrs. Mills' Cream' 1 Case. 1. Joint Trade-Mark. Where two persons, associated in business for the manufacture and sale of a commodity, jointly adopted a trade-mark for it, they are equally entitled to its use after the dissolution of their connection; and if one of the parties obtain letters of registration in his own name, he may be compelled to transfer an equal interest to his associate. This was a suit in equity to compel the defendant to transfer to the complainant letters of registration by which a right to use a certain trade-mark was obtained. The facts appear in the opin- ion of the Court. John L. Boone, for complairiant. SEPTEMBER, 1 879. 213 36 Taylor vs. Bothin. David Freidenrich, for defendant. Mr. Justice Field : It appears from the evidence in this case that, previous to the first of August, 1876, the complainant had discovered a process for making a valuable yeast powder, and that during that year he was engaged under a contract with other parties in its manufac- ture and sale in the City of San Francisco, designating the powder as Sea Moss baking powder; that his contract with his associates having come to an end from their inability to furnish the required means, he applied to the defendant and proposed a connection with him in its manufacture and sale. At the time the defendant was engaged in the business of selling coffee and spices, and knew nothing about the manufacture of yeast powders. After satisfying himself of the quality of the powder, the defend- ant agreed to give the complainant space in his establishment for its manufacture, the defendant to sell it as sole agent. As the complainant was without means and had a family to support, it was stipulated that he should receive an advance of ten dollars a week for four weeks, and if the business proved a success he was afterwards to receive one-half of the profits. The business proved a success, and at the end of the first year the parties agreed to con- tinue their connection for another year, with a stipulation that the complainant should relinquish his half interest in the profits of the yeast powder business, and receive in return one-fourth of the profits of the entire business of the defendant, including that aris- ing from the manufacture and sale of the yeast powders and that arising from dealing in coffee and spices. After the first arrangement was made between the parties, and before any powders were manufactured, the complainant informed the defendant that another designation than that of Sea Moss should be given to the powder, as his former associates might lay some claim to the use of that designation. The name of "Mrs. Mills's cream' ' for that of Sea Moss was accordingly suggested and adopted. The powders manufactured and sold under the name of "Mrs. Mills's cream yeast powders" came into general use, and the business accordingly became very profitable. 214 U. S. C. C. DISTRICT OF CALIFORNIA. Taylor vs. Bothm. 3© During the second year of the connection, after a large demand for the powders had been created, the defendant, apparently ap- prehensive that the complainant might withdraw the manufacture from his establishment, secretly applied to the Patent Office at Washington and obtained letters of registratiou, giving him an ex- clusive right to the use of the name, "Mrs. Mills's cream," as a trade-mark of the powders. The complainant, therefore, brings this suit, and prays the Court to adjudge the trade-mark to be his • property, and to order the defendant to transfer the letters of registration to him, or that such, other and further relief may be granted as the nature of the case may require. Upon the statement of these facts, the only serious question for deliberation is whether the complainant is entitled to the .exclu- sive use of the trade-mark or only to a joint or equal use of it with the defendant. Had the name been suggested and used by the complainant before the business connection with the defendant, there would be no doubt of his exclusive right to it. But having been suggested and adopted after that connection was formed, upon a consultation of the parties on the subject, and then used for their joint benefit, we are led to the conclusion that they are equally entitled to its use after that connection ceased. Clearly the defendant has no such exclusive right, and the representations which he must have made to obtain the letters of registration re- quired by law, "that no other person, firm or corporation" had the right to use. are inconsistent with the facts. It matters not whether the arrangement between the-parties constituted a partner- ship, or whether the complainant was to receive a portion of the profits of the business as his salary; in either case, it was his pro- cess of making a valuable powder, which was to be used, and it was to his discovery that the name was to be given. We do not understand that when the complainant said he gave his process to the defendant he intended to abandon all right to the use of it, and to the manufacture of the powder designated by its new name, but only that he made the defendant acquainted with the secret of the process — the manner in which the powder was to be made. Having imparted that knowledge, and the two, in conjunction, SEPTEMBER, 1 879. 21 5 3 6 Taylor vs. Bothin. having subsequently adopted the name, they must be regarded as equally having the right to use it. A decree must be entered for the complainant, adjudging him equally entitled with the defendant to the use of the trade-mark in question, and directing the defendant to execute a transfer to the complainant of an equal interest in the letters of registration, and it is so ordered. 2l6 UNITED STATES PATENT OFFICE. Ex Parte Pace, Talbot & Co. 37 37 IN THE UNITED STATES PATENT OFFICE. Ex Parte Pace, Talbot & Co. Decided 17 September, 1879. Reported 15 Official Gazette, 909. "Bayard" Tobacco Label Case. 1. The name "Bayard" and portrait of a United States Senator by that name held to be proper matter for a trade-mark in chewing tobacco. 2. Any proper word or phrase, whether the name of a person, firm or cor- poration, or a geographical term; may be registered as a. trade-mark unless the same is descriptive of the quality of the goods, or is the name of the applicant or manufacturer, or place of manufacture, or is deceptive. 3. The name of the applicant or the firm manufacturing the goods cannot be registered as an essential part of the mark. Appeal from the Examiner of Trade-Marks. Trade-Mark.— Application of Pace, Talbot & Co., filed July 21, 1879. Mr. Wm. H. Brown, for appellant. SEPTEMBER, 1879. 217 37 Ex Parte Pace, Talbot & Co. Doolittle, Acting Commissioner: The applicants' alleged trade-mark is described as consisting — 1. Of the name "Bayard," in connection with the portrait within an oval, intended to represent a Senator of the United States of that name, from the State of Delaware, and beneath it is our firm -name. Said name "Bayard" and portrait may be transposed, as may also our firm-name, without materially chang- ing the character of our trade-mark, the essential features of which are "Bayard" and the portrait. The mark is to be applied to chewing tobacco manufactured by Pace, Talbott & Co., of Danville, Virginia. Section 4939 of the Revised Statutes provides that — The Commissioner of Patents shall riot receive and record any proposed trade-mark which is not and cannot become a lawful trade-mark, or which is merely the name of a person, firm, or cor- poration, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons. In regard to the phrase "merely the name of a person, firm, or corporation, ' ' Browne in his work on Trade-Marks, holds as follows: 2. This has been construed to mean the name of the party ap- plicant. In some instances the Courts have held that the names of historical persons of note could be used as fancy names, and, therefore, be valid trade-marks. In one instance the proposed mark consisted of the word "Alexina." The Special Examiner refused registration because "Alexina'' is merely the name of a woman, and cited instances. This decision was reversed on ap- peal to the Commissioner in person, who held that the name was an arbitrary symbol as used by the applicant. In another case, where an applicant had used for the period of twenty-one years, as a trade-mark for bridle-bits and stirrups, the word "Daniel," as a fanciful name, it was admitted to registry. If this word "Daniel" were the name of the applicant, it wpuld not be valid for the purpose, but being a pure designation of fancy — meaning, mayhap, him who was thrown into the den of lions — these is no objection to it. Even if another person, whose real name is Daniel, were to set up in a similar business, he would not be permitted to stamp his goods with the simple name adopted as 2l8 UNITED STATES PATENT OFFICE. Ex Parte Pace, Talbot & Co. 37 above stated, but would be compelled by a Court of Equity, if he used it at all, to use with it some distinguishing mark, or his ini- tials, to avoid the possibility of confusion. (Sees. 348, 349). I regard this a correct construction of the statute. In decisions cited by the Examiner, especially Farrier's Case, the names of the applicants and manufacturers of the goods were sought to be in- corporated as an essential part of the mark, and it was not held that the name of an individual, firm, or corporation, when merely arbitrary and fanciful in its signification, could not be the proper subjects of a trade-mark. It is not intended that any proper word, whether the name of a person, firm, or corporation, or a geo- graphical or other term, be denied registration as a trade-mark, unless the same is descriptive of the quality of the goods, or is the name of the applicant or manufacturer, or place of manufacture, or is deceptive. It would render the statute ridiculous to construe it literally. Although the name Socrates and Plato have been and may be the names of persons, yet, when applied to soap and chewing tobacco, for instance, would hardly be regarded as objectionable trade- marks, if it appeared that they were not the names of the appli- cants or manufacturers. The United States Supreme Court in Canal Co. v. Clark (13 Wallace, 311) announces the general doctrine, as follows : "Words in common use, with some exceptions, maybe adopted, if at the time of their adoption they were not employed to desig- nate the same or like articles of production. The office of a trade- mark is to point out distinctively the origin or ownership of an article to "which it is affixed, or, in other words, who are the pro- ducers. This may in many cases be done by a name, a mark, or a device well known, but not previously applied to the same article." In mentioning the exceptions to this rule, the Court held that a person has no right to the exclusive use of any words, letters, or symbols which are meant to indicate their names or quality, or which, from the nature of the fact they are used to signify, others may employ with equal truth, and, therefore, have an equal right SEPTEMBER, 1879. 219 3 *? Ex Parte Pace, Talbot & Co. to employ for the same purpose; and that these objections applied with equal force to geographical and other words and names. No individual or firm can prevent others of the same name from applying that name to the same class of goods actually made by them, unless the effect in the particular instance is to deceive the public. The distinction made by the statute between the mark which is to accompany the name of the person, firm; or corporation, and the name itself, is clear, and it is entirely inconsistent with its plain language to hold that such arbitrary mark and the name are on the same footing, and that both are essential parts of the mark. Of course the mark must always be accompanied by the name of the person, firm, or corporation using it, or intending to use it, otherwise neither the office nor the public would be informed of the origin or ownership of the goods- to which* the trade-mark is to be applied, and this is its sole office. The peculiar arbitrary, selected matter constituting the essen- tial mark is in itself the subject of assignment. It may pass from one hand to another — be to-day borne by one firm and to-morrow by another — but the mark itself remains the same and is not changed by the company it keeps. 3. In conclusion, it is held that the name sought to be registered by applicants is an entirely fanciful and arbitrary designation, and a proper subject of a trade-mark, but the name of the firm must not be represented as constituting an essential part thereof. 220 UNITED STATES PATENT OFFICE. Sorg vs. Welsh. 3 3 38 IN THE UNITED STATES PATENT OFFICE. Paul J. Sorg vs. Henry Welsh. Decided 19 September, 1879. Reported 16 Official Gazette, 910. "Tidal Wave" Tobacco Label Case. 1. A concession of priority of adoption, use and right of a trade-mark amounts to an acknowledgment of ownership by the one giving it, in the one to whom it is given. ^. Where one who has obtained the registration of a trade -mark for an entire class of merchandise is found to be the proprietor of the mark for part only of the class, it would seem that his registration was void, in view of the doctrine of Smith v. Reynolds, (3 Official Gazette, 214). 3. Different persons may apply the same mark to different kinds of goods in the same class, provided their nature and resemblance are not so nearly the same as that the identity of the trade-mark would deceive the public as to origin or ownership. 4. Where the registered trade-mark covered the class of manufactured tobacco broadly, and the later applicant confined his application to plug-tobacco, the declaration, as in other interference cases, should have been confined to the issue made by the later applicant. SEPTEMBER, 1879. 22 1 38 Sorg vs. "Welsh. If there is not sufficient distinction between fine cut chewing-tobacco and plug-tobacco to justify registration of the same mark for both kinds by different parties, then a concession of adoption for plug-tobacco would be an acknowledgment of ownership of the mark on chewing- tobacco. Appeal from the Examiner of Trade-Marks. Trade-Mark. — Application of Paul J. Sorg, filed March 27, 1879. Registration of Henry Welsh, July 15, 1879. Mr. Jas. L. Norris, for Sorg. Mr. Edwin H. Browns for Welsh. Doolittle, Acting Commissioner: July 15, 1879, there was registered in behalf of Henry Welsh, of New York, a trade-mark upon tobacco consisting of the words "Tidal Wave," The registration appears to have been lor the en- tire class of manufactured tobacco, as the specification states that it is appropriated to long and short cut smoking-tobacco, plug and other chewing-tobacco, cigars and cigarettes. March 27, 1879, Paul J. Sorg, of Middletown, Ohio, applied for the registration of the same trade-mark, restricting his appli- cation to plug chewing-tobacco; whereupon the Examiner of trade- marks declared an interference June 25, 1879. July 14, 1879, Welsh, the registrant, filed the following docu- ment signed by himself : I hereby concede to Paul J. Sorg, priority of adoption, use and right on the word symbol "Tidal Wave" as a trade-mark for plug- tobacco. Both parties now seek to give this concession force, and avoid the further continuance of the interference, by a motion to "re- form the issue" and restrict the same to "plug chewing-tobacco." The concession was dated New York, July 8, 1879. 1 . It is something more than a mere concession of priority as generally understood, and amounts to an acknowledgment of ownership by Welsh in Sorg of the trade -mark for one species of 222 UNITED STATES PATENT OFFICE. Sorg vs. Welsh. 3 8 the general class of manufactured tobacco to which Welsh had ap- propriated the same. It is manifest, therefore, that Welsh had, at the time of the reg- istration of the words "Tidal Wave" as a trade-mark for manu- factured tobacco generally, no right to the broad use of it, as claimed. Such being the case, the doctrine applied by the Court in the case of Smith v. Reynolds and Jacobs (3 Official Gazette, 214) to a similar state of facts is here pertinent. 2. It having been shown that the plaintiffs had registered their trade-mark for the class of "paints" generally, but that the de- fendants were the prior owners and users of the trade-mark upon a particular description of paints, the Court held : The plaintiffs have not restricted themselves to any particular description of goods comprised in such class. Their registration must stand or fall as a whole for that to which they declare in their registration they intend to appropriate it. There is no pro- vision in regard to trade-marks, such as there has been and is in regard to patents for inventions, that the suit may be maintained where the grant is valid as to a part but not as to the whole. It follows, therefore, that the registration of this trade-mark in the form in which it was made conferred no right on the plaintiffs in respect to anything purporting to be covered by it. It would follow, it seems, from this doctrine, that Welsh, not being the owner of the trade-mark for all the species of manu- factured tobacco on which he received registration, procured an invalid registration; and, as the statute contemplates registra- tion to the rightful owner only, the mark in question should be registered as the property of Sorg on the article of plug-tobacco. But is is not necessary to rest the case upon the above doctrine. 3. Applicants are not compelled to register a trade-mark upon a whole class of goods, but may restrict it to a particular descrip- tion of goods within that class. The law requires, in fact, that an applicant shall state the particular description of goods com- prised in the class to which he applies, or intends to apply, his trade-mark. • Different persons may apply the same mark to different sorts of goods in the same class, provided the nature and resemblance of SEPTEMBER, 1 879. 223 3 8 Sorg vs. Welsh. the goods are not so nearly the same as that the identity of the trade-mark would deceive the public as to their origin or owner- ship. Now, the later applicant, Sorg, had restricted himself to use of the trade-mark on plug-tobacco. There is a well recognized dis- tinction in the trade and among consumers between fine-cut chew- ing-tobacco and plug-tobacco, and as the interference arose solely on the last application, the issue, as declared by the Examiner of Trade-marks, was unnecessarily broad. 4. It should have been confined, as all other interferences should be, to the precise issue made by the later applicant. So confined, the concession of Welsh would have force, and the continuation of an inference undesired by both parties avoided. 5. Or, admitting, as contended by the Examiner of Trade- marks, that there is not sufficient distinction between fine-cut chewing-tobacco and plug-tobacco to justify registration of the same mark for both, then the concession of Welsh should have force, as it would be a substantial acknowledgment of owner- ship in Sorg to the trade-mark in question on "chewing-tobacco." Examiner's decision reversed. SUPREME COURT OF UNITED STATES. Manufactering Company vs. Trainer. 39 39 SUPREME COURT OF THE UNITED STATES. Manufacturing Company Trainer. Decided October, 1879. Reported ioi U. S., 51. ' 'Amoskeag ' ' Case. 1. Fetters or figures, affixed to merchandise by a manufacturer, for the pur- pose of denoting its quality only, cannot be appropriated by him to his exclusive use as a trade-mark. 2. An injunction will not be granted at his suit to restrain another manufac- turer from using a label bearing no resemblance to the complainants, except that certain letters, which alone convey no meaning, are in- serted in the centre of each, the dissimilarity of the labels being such that no one will be misled as to the tiue origin or ownership of the merchandise. Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania. The facts are stated in the opinion of the Court. SEPTEMBER, 1 879. 225 39 Manufacturing Company vs. Trainer. Mr. George M. Dallas and Mr. James E. Gowen, for the ap- pellant. Mr. Samuel Dickson, contra. Mr. Justice Field, delivered the opinion of the Court: This is a suit in equity to restrain the defendants, D. Trainer & Sons, from using on ticking manufactured and sold by them the letters "A. C. A." in the sequence here named, alleged by the complainant to be its trade-mark, by which it designates ticking of a particular quality of its own manufacture; and to compel the defendants to account for the profits made by them on sales of tick- ing thus marked. It appears that the complainant, the Amoskeag Manufacturing Company, a corporation created under the laws of New Hamp- shire, commenced the manufacture of ticking at Amoskeag Falls, in that State, some time prior to 1834, and marked its products with a label or ticket consisting of a certain device, within which were printed, in red colors, the name of the company, its place of manufacture, the words "Power Loom," and in the centre the single letter "A" or "B" or "C" or "D," according to the grade of excellence of the goods, the first quality being indicated by the first letter and the decreasing quality from that grade by subsequent letters in the alphabet. The device, apart from the words mentioned, was a fancy border in red colors, square outside and elliptical within, and the words in the upper and lower lines of the label were printed in a line corresponding with the inside curve of the border. In the year 1834, or about that time, the company introduced an improvement in its manufacture, by which it produced a grade of ticking superior to any which it had previously manufactured. For the goods of this quality it used in its label or ticket, in place of the single letter "A," the three letters "A. C. A." The orig- inal device, with its colored border and printed words, indicating the company by which and the place where the goods were manu- factured and retained; the alteration consisting in the substitution of the three letters "A. C. A." in place of the single letter "A." Subsequently the company changed its place of manufacture from 15 226 SUPREME COURT OF UNITED STATES. Manufacturing Company vs. Trainer. 39 Amoskeag Falls to Manchester, in the same State, and a corres- ponding change was then made in the label. The three letters mentioned were placed in the label or ticket on all goods of the very highest quality manufactured by the complainant, the single letter being retained in the labels placed on other goods to indi- cate a lower grade or quality. The combination of the three letters was probably suggested, as is stated, by the initials of the words in the company's name, — Amoskeag Company, — with the letter "A" previously used, to denote the best quality of goods it manufactured. It is contended by the complainant that the combination was adopted and used to indicate, not merely the quality of the goods, but also their origin as of the manufacture of the Amoskeag Company. It is upon the correctness of this position that it chiefly relies for a reversal of the decree dismiss- ing the bill. On the part of the defendants the contention is that the letters were designed and are used to indicate the quality of the goods manufactured and not their origin; that it was so adjudged many years ago in a case to which the company was a party in the Superior Court of the City of New York, which adjudication has been generally accepted as correct, and acted upon by manufac- turers of similar goods throughout the country: and that the letters, as used by the defendants on a label or ticket having their own device, and in connection with words different from those used by the complainant, do not mislead or tend to mislead any one as to the origin of the goods upon which they are placed. The general doctrines of the law as to trade-marks, the symbols or signs which may be used to designate products of a particular manufacture, and the protection which the Courts will afford to those who originally appropriated them, are not controverted. Every one is at liberty to affix to a product of his own manufacture any symbol or device, not previously appropriated, which will dis- tinguish it from articles of the same general nature manufactured or sold by others, and thus secure to .himself the benefits of in- creased sale by reason of any peculiar excellence he may have given to it. The symbol or device thus becomes a sign to the public of the origin of the goods to which it is attached, and an SEPTEMBER, 1879. 227 •3 9 Manufacturing Company vs. Trainer. assurance that they are the genuine article of the original producer. In this way it often proves to be of great value to the manufacturer in preventing the substitution and sale of an inferior and different article for his products. It becomes his trade-mark, and the Courts will protect him in its exclusive use, either by the imposi- tion of damages for its wrongful appropriation or by restraining others from applying it to their goods and compelling them to ac- count for profits made on a sale of goods marked with it. The limitations upon the use of devices as trade-marks are well ■defined. The object of the trade-mark is to indicate, either by its own meaning or by association, the origin or ownership of the article to which it is applied. If it did not, it would serve no useful purpose either to the manufacturer or to the public; it would afford no protection to either against the sale of a spurious, in place of the genuine article. This object of the trade-mark and the consequent limitations upon its use are stated with great clear- ness in the case of Canal Company v. Clark, reported in 13 Wallace. There the Court said, speaking through Mr. Justice Strong, that "no one can claim protection for the exclusive use of a trade-mark or trade name which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured, rather than protected, for competition would be destroyed. Nor can a generic name or a name merely descriptive of an article of trade, -of its qualities, ingredients, or characteristics, be employed as a trade-mark, and the exclusive use of it be entitled to legal protec- tion." And a citation is made from the opinion of the Superior Court of the City of New York in the case of the present com- plainant against Spear, reported in 2 Sandford, that "the owner of an original trade-mark has an undoubted right to be pro- tected in the exclusive use of all the marks, forms, or symbols that were appropriated as designating the true, origin or ownership of the article or fabric to which they are affixed; but he. has no right to the exclusive use of any words, letters, figures, or symbols which have no relation to the origin or ownership of the goods, but are ■only meant to indicate their names or quality. , 228 SUPREME COURT OF UNITED STATES. * Manufacturing Company vs. Trainer. 39 I. "He 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." Many adjudications, both in England and in this country, might be cited in illustration of the doctrine here stated. For the pur- pose of this case, and in support of the position that a right to the exclusive use of words, letters, or symbols, to indicate merely the quality of the goods to which they are affixed cannot he acquired, it will be sufficient to refer, in addition to the decisions mentioned in Wallace %.t\& Sandford, to the judgment of the Vice-Chancellor in Raggett v. Findlater, where an injunction to restrain the use by the defendants upon their trade label of the term "Nourishing Stout," which the plaintiff had previously used, was refused on the ground that "nourishing" was a mere English word denoting quality. Law Rep., 17 Eq., 29. Upon the same principle let- ters or figures which, by the custom of traders, or the declaration of 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 any one, like the adjectives of the language. If, now, we apply the views thus expressed to the case at bar, we shall find the question involved to be of easy solution. It is clear from the history of the adoption of the letters "A. C. A." as narrated by the complainant, and the device within which they are used, that they were only designed to represent the highest quality of ticking which is manufactured by the complainant, and not its origin. The device previously and subsequently used stated the name of the manufacturer, and no purpose could have been subserved by any further declaration of that fact. And besides, the letters themselves do not suggest anything, and require expla- nation before any meaning can be attached to them. That expla- nation when made is that they are placed in the device of the com- pany when it is affixed to the finest quality of its goods, while single letters are used in the same device when it is attached to goods of an inferior quality. They are never used by themselves, but merely as part of a device containing, in addition to the SEPTEMBER, 1879. 229 39 Manufacturing Company vs. Trainer. border in red, several printed terms. Alone the letters convey no meaning; they are only significant as part of the general device ■constituting the trade-mark. Used in that device to denote only quality; and so understood, they can be used by others for a simi- lar purpose equally with the words "superior" or "superfine," or ■other words, or letters, or figures having a like signification. We are aware that there is in the record the testimony of several witnesses to the effect that they understood that the letters were intended to indicate the origin as well as the quality of the goods to which they were attached, but it is entirely overborne by the patent fact that the label previously disclosed the name in full of the manufacturer and by the history of the adoption of the letters, as narrated by the complainant. As it was pertinently observed in the case in Sandford, if purchasers of the ticking read the name of the company, the letters can give no additional information, ■even if it be admitted that they are intended to indicate the name of the company. And if they do not read the name as printed, the letters are unintelligible. If an explanation be asked of their purpose in the label, the only reasonable answer which can be given is the one which corresponds with the fact that they are de- signed merely to indicate the quality of the goods. But there is another and equally conclusive answer to the suit. 2. The label used by the defendants is not calculated to mis- lead purchasers as to the origin of the goods to which it is at- tached. It does not resemble the device of the complainant. Its border has a different figure; it is square outside and inside. It has within it the words "Omega," and "Ring Twist," as well as the letters "A. C. A." Neither the name of the complainant, nor of the place where its goods are manufactured, nor the words "Power Loom" are upon it. The two labels are so unlike in every particular, except in having the letters "A. C. A." in their centre, that it is impossible that any one can be mislead in sup- posing the goods, to which the label of the defendants is attached, are those manufactured by the complainant. The whole structure ■of the case thus falls to the ground. There is no such imposition practised upon the public, and no such fraud perpetrated upon the manufacturers, in attempting to dispose of the goods of one 230 SUPREME COURT OF UNITED STATES. Manufacturing Company vs. Trainer. 39' as those of another, as to call for the interposition of a Court of Equity. Decree affirmed. Mr. Justice Clifford, dissenting: Symbols or devices used by a manufacturer or merchant to dis- tinguish the products, manufactures, or merchandise which he produces, manufactures, or sells, from that of others, are called and know by the name of trade-marks. They are used in order that such products, manufactures, or merchandise may be known as belonging to the owner of the symbol or device, and that he may secure the profits from its reputation or superiority. (15 Am. Cyclopedia, 832). Equity Courts in all civilized countries have for centuries af- forded protection to trade-marks, the object of such protection being not only to secure to the individual the fruits of his skill, industry, and enterprise, but also to protect the public against fraud. Property in a trade-mark is acquired by the original applica- tion to some species of merchandise or manufacture, of a symbol or device not in actual use, to designate articles of the same kind or class. Devices of the kind, in order that they may be entitled to pro- tection in a Court of Equity, must have the essential qualities of a lawful trade -mark; but if they have, the owner becomes enti- tled to its exclusive use within the limits prescribed by law, the rule being that he who first adopts such a trade-mark acquires the right to its exclusive use, in connection with the particular class of merchandise to which its use has been applied by himself or his agents. Prior use is essential to any such exclusive claim, as the right to protection begins from such actual prior, use; nor does the right to protection extend beyond the actual use of the device. Hence the use of it on one particular article of manufacture or merchandise will not prevent another from using it on another and different class of articles, the rule being strictly applied that SEPTEMBER, 1 879. 23 I 3 9 Manufacturing Company vs. Trainer. the right to protection in equity is limited to the prior use of the symbol by the owner. Sufficient appears to show that the plaintiffs, at an early period in the fourth decade of the present century, engaged in the manu- facture of a fabric known as ticking, of various grades and qual- ity, and that subsequently they made a valuable improvement in the mode of manufacturing the fabric, which enabled them to pro- duce a very superior article. Before the introduction of the im- provement they had been in the habit of marking their products in that species of manufacture with one of the first four letters of the alphabet, to designate the different grades of their manu- facture when offered for sale in the market. Thirty-four years ago or more they introduced the new improvement in the manu- facture of the fabric, and adopted the distinctive trade-mark, of which a fac -simile is exhibited in the transcript. When examined, it will be seen that it consists of the corporate name of the com- plainants, with a rough engraved surrounding, and the letters "A. C. A." plainly and conspicuously printed in the centre of the circular outside edge. Conclusive proof is exhibited that the peculiar combination of letters adopted by the complainants as a symbol of trade origi- . nated with them, and that it suggested itself to them as compris- ing the initial letters of their familiar corporate name, with the addition of the letter "A" at the close, which had previously been used by them as indicating the best quality of the fabric manufactured by them before they made the alleged improve- ment, Single letters of the kind are frequently used as a mark of quality; but- the proofs in this case show to a demonstration that the peculiar combination of letters adopted by the complainants at the period mentioned, were not adopted to denote quality merely, but as an appropriate and distinguishing trade-mark, symbol, or device, to indicate to the public and to purchasers that the fabric which bears the mark was of the manufacture of the manufacturing company of the complainants. Beyond all doubt, they adopted the symbol or device, and affixed it to the fabric of their trade to indicate the origin and ownership of the article. 232 SUPREME COURT OF UNITED STATES. Manufacturing Company vs. Trainer. 39 • Few manufactured products bear in their own external appear- ance sufficient evidence of their real character to protect the pur- chaser against fraudulent imitations.- Integrity in manufacture and uniformity in quality are high recommendations to purchasers, and manufactured goods falling within that category are much preferred, both by the purchasers and consumers of the same; and when by long experience the public have learned to associate these elements of recommendation with a special symbol or brand, the wide and profitable sale of the articles bearing the same is assured, and the exclusive possession and use of the symbol or brand be- comes of great value to the real owner.' Purchasers are also inte- rested that such a trade-mark should receive protection, as it is a guaranty of genuineness, and its value is proportioned to the business reputation of the owners of the same and of the excel- lence of their manufactures. 4 Johns. Cyclopedia, part 2, p. 916. Infringement by the respondents is charged, and the complain- ants pray for an injunction and for an account. Service was made, and the respondents appeared and set up various defences, as follows : 1 . That the alleged trade-mark was never designed or used as such, but merely to designate one of the grades of the fabric which the complainants manufactured. 2. That the com- plainants are estopped by a prior decision of a Court of compe- tent jurisdiction to set up that the alleged symbol is a trade-mark. 3. They admit that they mark their goods with the letters "A. C. A.," but they deny that the mark is fraudulent or that it is cal- culated to deceive the public. 4. They deny that their conduct is in the slightest degree fraudulent or inequitable, or that the sale of their goods injures the complainants. Proofs were taken, hearing had, and the Circuit Court entered a decree dismissing the bill of complaint. Prompt appeal was taken by the complainants to this Court, and they assign the fol- lowing causes of error: 1. That the Circuit Court erred in enter- ing a decree dismissing the bill of complaint. 2. That the Court erred in not granting the injunction as prayed. 3. That the Court erred in not decreeing that the co'mplainants are entitled to an account. 4. That the Court erred in not sustaining the bill of complaint. SEPTEMBER, 1879. 233 39 Manufacturing Company vs. Trainer. Attempt is made in argument to show that the symbol of the complainants was not adopted by them for any other purpose than to designate the grade or quality of the fabric which they manu- facture and sell in the market; but it is a sufficient answer to that proposition to say that it is wholly unsupported by evidence, and is decisively overthrown by the proof introduced by the complain- ants. Words or devices, or even a name in certain cases, may be adopted as a trade-mark which is not the original invention of the party who appropriates the same to that use. Phrases, or even words or letters in common use, may be adopted for the purpose, if at the time of their adoption they were not employed by another to designate the same or similar articles of production or sale. Stamps or trade-marks of the kind are employed to point to the origin, ownership, or place of manufacture or sale of the article to which it is affixed, or to give notice to the public who is the producer, or where it may be purchased. Canal Company v. Clark, 13 Wall., 311, 322. Subject to the preceding qualifications a trade-mark may con- sist of a name, symbol, figure, letter, form, or device, if adopted and used by a manufacturer or merchant in order to designate the goods he manufactures or sells, or to distinguish the same from those manufactured or sold by another, to the end that the goods may be known in the market as his, and to enable him to secure such profits as result from his reputation for skill, industry, and fidelity. Upton, Trade- Marks, 9; Taylor v. Carpenter, 2 Sand/., (AT. Y.), Ch., 603. Brands or stamps called trade-marks, says Waite, may consist of a name, figure, letter, form, or device, adopted and used by a manufacturer or merchant in order to designate the goods that he manufactures or sells, and to distinguish them from those manu- factured or sold by another, to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry, or enterprise. 6 Waite, Actions and Defences, 21. Such a manufacturer or merchant who first adopts such a trade- mark, and is accustomed to affix the same to a particular fabric 234 SUPREME COURT OF UNITED STATES. Manufacturing Company vs. Trainer. S& of his manufacture or sale to distinguish it from all others, has a property in it, and may maintain an action for damages if used by another, or he may restrain another from using by application to a Court of Equity. Hall v. Barrows, 4 De G.,J. 6° S., 140, 156; S. C, 12 W. R., 322, 323. Judicial protection is granted in such a case upon the ground that the honest, skillful, industrious manufacturer or enterprising merchant who has produced or brought into the market an article of use or consumption that has found favor with the public, and who by affixing to it some name, mark, device, or symbol which serves to distinguish it as his and from that of all others, shall receive the first reward of his honesty, skill, or enterprise, and shall in no manner and to no extent be deprived of the same by another who to that end appropriates the same, or a colorable imi- tation of the same to his production, so that the public are or may be deceived or misled. Wolfe v. Barnett cr Lion, 24 La. An., 97; Newman v. Alvord, 15 N. Y., 189, 196; Lee v. Haley, Law Rep., 5 Ch. Ap., 155; Blackwell v. Wright, 73 N. C, 310, 3i3- Nothing can be better established, says the Master of the Rolls, and nothing ought to be otherwise than fully established in a civilized country, than that a manufacturer is not entitled to sell his goods under the false representation that they are made by a rival manufacturer. Singer Manufacturing Co. v. Wilson, 2 Ch.D., 434, 440; Browne, Trade-Marks, sec. 385; Osgood v. Allen, 1 Holmes, 185, 194, "When we consider," says Duer, "the nature of the wrong that is committed when the right of property in a trade-mark is invaded, the necessity for the interposition of a Court of Equity becomes more apparent. He who affixes to his own goods an imitation of an original^ trade-mark, by which those of another are distin- guished and known, seeks by deceiving the public to divert to his own use the profits to which the superior skill and enterprise of the other had given him an exclusive title, and endeavors by a false representation to effect a dishorforable purpose by committing a fraud upon the public and upon the true owner of the trade- SEPTEMBER, 1879. 235 3 9 Manufacturing Company vs. Trainer. mark. Amoskeag Manufacturing Co. v. Spear, 2 Sandf. , (JV. Y. ),. S99, 605; The Collins Company v. Brown, 3 Kay & J., 223, 428. Thirty years and more before the suit was commenced the plain- tiff company adopted the trade-mark in question and affixed the .same to their improved manufacture of ticking, and it appears from the evidence that they have continuously from that date to the day the bill of complaint was filed, used the same as the sym- bol to designate that peculiar manufacture, which of itself is suffi- cient to show, if any thing in the nature of proof can be, that the first defence set up in the answer ought to be overruled. Much discussion of the second defence cannot be required, as the statement of the proposition that the complainants are es- topped to ask relief in this case, because they were partially unsuc- cessful in a prior suit against another party, is quite sufficient for its. refutation. Neither argument nor authority is necessary to show that it has no foundation in law or justice, and it is equally clear that the supposed analogy between an admiralty decree in rem and a decree dismissing a bill in equity for the invasion of a trade-mark is illusory, unfounded, and without the slightest legal effect. Suppose that is so, still the respondents deny that the trade- mark which they use is in the slightest degree fraudulent, or that it is calculated to deceive the public. They admit that they use the letters "A. C. A.," but they deny that in any other respect they have used the trade-mark adopted by the complainants. Manufacturers and merchants have severally the unquestioned right to distinguish the goods they manufacture or sell by a pecu- liar mark or device, so that the goods may be known in the market as the product or sale of the owner of the trade-mark or device, in order that they may thus secure the profits which the superior repute of the goods may be the means of giving to the producer or seller. Gillott v. Esterbrook, 48 TV. K, 374, 376. Confirmation of that proposition is found in all the reported cases, and it is equally true that the owners of such trade-marks, are entitled to the protection of a Court of Equity in the exclu- sive use of the symbols they have thus adopted and affixed to their goods, the foundation of the rule being that the public interest as 236 SUPREME COURT OF UNITED STATES. Manufacturing Company vs. Trainer. 39 well as the interest of the owner of the trade-mark requires that protection. 2 Story Eq. Jur., sec. 951. Such a party has a valuable interest in his trade or business, and having appropriated a particular label or trade-mark indicat- ing to fhose who wish to give him their patronage that the article is made or sold by him, or by his authority, or that he carries on business at a particular place, he is entitled to protection against any other person who attempts to pirate upon the good-will of his customers or of the patrons of his trade or business by sailing un- der his flag without his authority or consent. Partridge v. Meuck, 2 Barb. (N. Y.), Ch., 10 1. Redress is given in such cases upon the ground that the party charged is not allowed to offer his goods for sale, representing them to be the manufacture of the first and real owner of the trade- mark, because by doing so he would be guilty of a misrepresenta- tion, and would deprive the real owner of the profits he might make by the sale of his goods which the purchaser intended to buy. Compensation for such an injury was in early times given to the injured party by an action of deceit at common law, long before the Court of Chancery attempted to exercise jurisdiction to grant relief for such wrongful acts. In such an action it is doubtless true that the plaintiff is required to allege that the party charged, infringed the trade-mark with a fraudulent intent, and to prove the charge as alleged, in order to secure a verdict and judgmeut for redress. Certain early cases in equity may be found where it is held that it is requisite that the allegation and proof in a Chan- cery suit should be the same ; but the practice in equity has long been settled otherwise, the rule now being that the injury the owner of the trade-mark suffers by the offering for sale in the market of other goods side by side with his, bearing the same trade -mark entitled the real owner of the trade-mark to protection in equity, irrespective of the intent of the wrong-doer, it being held that the injury done to the complainant in his trade by loss of custom is sufficient to support his title to relief. Neither will the complainant be deprived of remedy in equity, ■even if it be shown by the respondent that all the persons who bought goods from him bearing the trade-mark of the real owner SEPTEMBER, 1 879. 237 3 9 Manufacturing Company vs. Trainer. were well aware that they were not of the complainant's manufac- ture. If the goods were so supplied by the wrong-doer for the purpose of being re-sold in the market, the injury to the com- plainant is sufficient to entitle him to relief in equity. Nor is it necessary, in order to entitle the party to relief, that proof should be given of persons having been actually deceived, or that they bought goods in the belief that they were of the manufacture of the complainant, provided that the Court is satis- fied that the resemblance is such as would be likely to cause the one mark to be mistaken for the other. Edelston v. Edelston, 1 De G.,J. & S., 185; Mc Andrew v. Bassett, 4 Id., 380; Sebastin, Trade-Marks, 70. Two trade-marks are substantially the same in legal contem- plation, if the resemblance is such as to deceive an ordinary purchaser, giving such attention to the same as such purchaser usually gives, and to cause him to purchase the one supposing it to be the other. Gorham Company v. White, 14 Wall., 511; Mc- Lean v. Fleming, 96 U. S., 245, 256; Adams, Trade-Marks, 107. Difficulties attend the effort to describe with precision what re- semblance is necessary to constitute an infringement,, and perhaps it is not going too far to say that the term is incapable of exact definition as applied to all cases. Grant that, and still it is safe to say that no manufacturer or merchant can properly adopt a trade-mark so resembling that of another engaged in the same business as that ordinary purchasers buying with ordinary caution are likely to be misled. Positive evidence of fraudulent intent is not required where the proof of infringement is clear, as the liability of the infringer arises from the fact that he is enabled through the unjustifiable use of the trade-mark to sell a simulated article as, and' for the one which is genuine. McLean v. Fleming, supra. Unless the simulated trade-mark bears a resemblance to that which is genuine, it is clear that the charge of infringement is not made out, and it is doubtless true that the resemblance of the simu- lated one to the genuine must be such that the former is calculated to deceive or mislead purchasers intending to buy the genuine goods ; but it is a mistake to suppose that the resemblance must 338 SUPREME COURT OF UNITED STATES. Manufacturing Company vs. Trainer. 3 9 be such as would deceive persons seeing the two trade -marks placed side by side. Exact definition may not be attainable, but if a purchaser looking at the article offered to him, said Lord Cran- worth, would naturally be led from the mark impressed on it to suppose it to be the production of the rival manufacturer, and would purchase it in that belief, the Court considers the use of such a mark fraudulent. Franks v. Weaver, 10 Beav., 297. Apply that rule to the cases before the Court, and it is sufficient to control the decision ; but the Chancellor went much further, and said, that if the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particu- lar name, he thought that the adoption by a rival trader of any mark which would cause his goods to bear the same name in the market, may be as much a violation of the rights of the owner as the actual copy of his device. Seixo v. Provezende, Law Rep., 1 Ch., 192, 196, When the entire trade-mark is copied, the case is free of diffi- culty, as the rule is universal that the infringer is liable ; but the question is, when may it be said that a trade-mark has been taken by another ? Answers to that question are found in several cases, of which no one is more satisfactory than that given by the Master of the Rolls in a recent case. He says that a trade-mark to be taken need not be exactly copied, nor need it be copied with slight variations, but it must be a substantial portion of the trade- mark, to which he adds, that it has sometimes been called the material portion, but that, as he states, means the same thing, and he then remarks that it means the essential portion of the trade-mark, and finally concludes the subject by saying that < < what the Court has to satisfy itself of is that there has been an ■essential portion of the trade-mark used to designate goods of a similar description." Singer Manufacturing Co. v. Wilson, 2 Ch. £>., 434, 443; Cod. Big., sec. 342. Argument to show that the rule is applicable to the case before the Court is unnecessary, as the proposition is self-evident ; and if so, it is impossible to see how any one can vote to affirm the judgment of the Circuit Court. Beyond all question, the letters "A, C. A." are the essential feature of the trade-mark adopted SEPTEMBER, 1879. 239 39 Manufacturing Company -vs. Trainer. by the complainants, and the defendants admit in their answer and in argument that they use the same three letters in the same combination. Complete imitation is not required by any of the well-consid- ered cases. Instead of that, it is well settled that the proof of infringement is sufficient if it shows even a limited and partial imitation, provided the part taken is an essential portion of the symbol. None of the cases show that the whole must be taken, nor is it necessary to show that any one has in fact been deceived, if the imitation is such as to prove that it is calculated to deceive ordinary purchasers using ordinary caution. Proof of actual in- tent to defraud is not required, but it is sufficient if the Court sees that the trade-mark of the complainant is simulated in such a manner as probably to deceive the customers and patrons of his trade and business. Filleyv. Fassett, 44 Mo., 168, 178; Coats v. jHolbrook, 2 Sand/. (TV. ¥.), Ch., 586, 626. Courts of justice do not always use the same language in de- fining what is the requisite similarity in the two trade-marks to •entitle the complainant to relief; but they substantially concur that if it be such that the public may be led to believe while they buy the goods of the respondent that they are buying 'an article manufactured by the complainant, the proof of similarity is suffi- cient. Hirst v. Denham, Law Rep., 14 Eq. , 542, 552. For the purpose of establishing a case of infringement, it is not necessary to show that there has been the use of a mark in all respects corresponding with that which another person has ac- quired an exclusive right to use, if the resemblance is such as not only to show an intention to deceive, but also such as to be likely to make unwary purchasers suppose that they are purchasing the article sold by the party to whom the right to use the trade-mark belongs. Wotherspoon v, Currie, Law Rep., 5 Ap. Cas., 5,08- 519; 5. C, 27 L. T., N. S., 393. Chancery Courts will protect the property rights of a party in his trade-mark, and for its invasion the law will award compensa- tion in damages. Legal redress will be accorded when it is shown that the symbol or device used by the wrong-doer is of such a •character that by its resemblance to the established trade -mark' of 240 SUPREME COURT OF UNITED STATES. Manufacturing Company vs. Trainer. 39 the complainant it will be liable to deceive the public and lead to the purchase of that which is not the manufacture of the proprie- tor, believing it to be his. It is not necessary that the symbol or device should be a fac- simile or a precise copy of the original trade-mark, or that it should be so close an imitation that the two cannot be easily dis- tinguished by one familiar with the genuine device ; but if the false or simulated one is only colorably different, or if the resem- blance is such as may deceive a purchaser of ordinary caution, or if it is calculated to mislead the careless and unwary, and thus to injure the sale of the goods of the proprietor of the true device, the injured party is entitled to redress. Co/man v. Crump, 70 N. Y-; 573; 578; Glenny v. Smith, 11 Jur. N. S., 964. Trade-marks usually exhibit some peculiar device, vignette, or symbol, in addition to the name of the party, which the proprie- tor had a perfect right to appropriate, and which, as well as the name, is intended as a declaration to the public that the article is his property. Imitations frequently drop both the name and certain parts of the surroundings, and substitute their own name with a different vignette; but if the peculiar device is copied, and so copied as to manifest a design of misleading the public, the omission or variation ought to be wholly disregarded. Proof of an intention to defraud is not required; but it is plain that the respondents acted with a design, and it would be absurd to suppose that they had no further object than the mere imitation of the trade-mark which they copied. On the contrary, it is ob- vious that they expected to gain an advantage in the sale of their goods by attaching their simulated device to fabrics resembling in appearance and quality the fabric of the complainants. Of course they meant to secure to their goods a preference in the market which they otherwise would not have commanded ; and it is dif- ficult, if not impossible, to see how any such advantage could be gained unless the simulated trade-mark would enable them to sell their fabrics as that of the injured party. Amoskeag Manufac- turing Co. v. Spear, supra; Fetridge v. Wells, 13 How. (N. Y.~), Pr. 386. SEPTEMBER, 1 879. 24I 39 Maunfacturing Company zj-. Trainer. Proprietors of a trade-mark, in order to bring the same under the protection of a Court of Equity, are not obliged to prove that it has been copied in every particular by the wrong-doer. It is enough for them to show that the representations employed, bear such resemblance to their symbol or device as to be calcu- lated to mislead the public who are purchasers of the article, and to make it pass for the one sold by the true owner of the trade- mark. Walton v. Crowley, 3 Blatchf., 440-447. Candid men cannot read the record in this case without being forced to the conclusion that the respondents took the essential feature of the complainants' trade-mark, which they had used for forty years to designate the fabric of ticking which they manufac- tured, and which had become known throughout the United States as the authorized symbol to indicate that description of goods, and if so, it follows to a demonstration that the decrees of the Circuit Court should be reversed. 36 242 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 40 SUPREME COURT OF THE UNITED STATES. United States vs. Steffens. United States VS. Wittemann. United States vs. Johnson. Decided October, 1879. Reported 100 U. S., 82. Trade-Mark Law unconstitutional. 1. Property in trade-marks has long been recognized and protected by the common law and by the statutes of the several States, and does derive OCTOBER, 1879. 243 40 United States vs. Steffens, &c. its existence from the Act of Congress providing for the registration of them in the Patent Office. 2. A trade-mark is neither an invention, a discovery, nor a writing, within the meaning of the eighth clause of the eighth section of the first Article of the Constitution, which confers on Congress power to secure for limited times to authors and inventors the exclusive right to their respective writings and discoveries. 3. If an Act of Congress can in any case be extended, as a regulation of commerce, to trade-marks, it must be limited to their use in "commerce with foreign nations, and among the several States, and with the Indian tribes." .4. The legislation of Congress in regard to trade-marks is not, in its terms or essential character, a regulation thus limited, but in its language embraces, and was intended to embrace, all commerce, including that between citizens of the same State. 5. That legislation is void for want of constitutional authority, inasmuch as it is so framed that its provisions are applicable to all commerce, and cannot be confined to that which is subject to the control of Congress. The first two cases were brought here on certificates of division in opinion between the Judges of the Circuit Court of the United States for the Southern District of New York, the last was brought here on a certificate of division of opinion between the Judges of the Circuit Court of the United States for the Southern District of Ohio. Steffens was indicted under the fourth and fifth sections of an Act of Congress entitled "An Act to punish the counterfeiting of trade-marks and the sale or dealing in of counterfeit trade-mark goods," approved August 14th, 1876. 19 Stat,. 141. The first count in the indictment charges him with knowingly and willfully having in his possession counterfeits and colorable imitations of the trade-marks of G. H. Mumm & Co., of Rheims, France, manufacturers and sellers of champagne wine. The second count charges him with knowingly and willfully selling counterfeited representations and colorable imitations of the trade-mark of said G. H. Mumm & Co. Wittemann was indicted under the fifth section of that Act. The indictment consists of six counts, and they charge: 1st, The 244 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 counterfeiting and forging; 2nd, The having in possession colora- ble imitations of; 3rd, The buying; 4th, The selling; 5th, The offer- ing for sale; and 6th, The dealing in colorable imitations of the private trade-mark belonging to and used by the firm of Kunkle- man & Co., of Rheims, France, manufacturers and dealers in wine know as the "Piper Heidsick" brand of champagne wine. Johnson, McNamara, and Reeder were prosecuted under that Act by a criminal information containing seven counts, of which the first, fourth and sixth are founded upon a trade-mark consist- ing of the letters "0 K," registered in the United States Patent Office by Charles F. O'Donnell, April 2, 1878, for use upon packages of whiskey, and respectively charge the defendants with counterfeiting, affixing a colorable imitation, and dealing in and selling packages of whiskey to which was attached a colorable imitation of said trade-mark, and the second, third, fifth, and seventh counts are founded upon another trade-mark, consisting of a seal and ribbon, the latter secured by the seal of a package containing whiskey, registered by Charles F. O'Donnell, May 21, 1878, and respectively charge the defendants with counterfeiting, making a colorable imitation, affixing a colorable imitation, and dealing in packages of whiskey to which was attached a colorable imitation of said trade-mark. Sees. 4 and 5 of the Act of 1876 are as follows: "Sec. 4. That any person or persons who shall, with intent to defraud any person or persons, knowingly and willfully cast, en- grave or manufacture, or have in his, her, or their possession, or buy, sell, offer for sale, or deal in, any die or dies, plate or plates, brands or brands, engraving or engravings, on wood, stone, metal, or other substance, moulds, or any false representation, likeness, copy, or colorable imitation of any die, plate, brand, engraving, or mould of any private label, brand, stamp, wrapper, engraving on paper or other substance, or trade-mark, registered pursuant to the Statutes of the United States, shall, upon convic- tion thereof, be punished as prescribed in the first section of this Act. "Sec. 5. That any person or persons who shall, with intent to defraud any person or persons, knowingly and willfully make, OCTOBER, 1879. 245 40 United States vs. Steffens, &c. forge, or counterfeit, or have in his, her, or their possession, or buy, sell, offer for sale, or deal in, any representation, likeness, similitude, copy, or colorable imitation of any private label, brand, stamp, wrapper, engraving, mould, or trade-mark, reg- istered pursuant to the Statutes of the United States, shall, upon conviction thereof, be punished as prescribed in the first section of this Act," Sec. 4937, Rev. Stat., is as follows: "Any person or firm domiciled in the United States, and any corporation created by the authority of the United States or of any State or Territory thereof, and any person, firm, or corpora- tion resident of or located in any foreign country which by treaty or convention affords similar privileges to citizens of the United States, and who are entitled to the exclusive use of any lawful trade-mark, or who intend to adopt and use any trade-mark for exclusive use within the United States, may obtain protection for such lawful trade-mark, by complying with the following require- ments: "First, By causing to be recorded in the Patent Office a state- ment specifying the name of the parties and their residences and places of business, who desire the protection of the trade-mark, the class of merchandise, and the particular description of goods com- prised in such class, by which the trade-mark has been or is in- tended to be appropriated; a description of the trade-mark itself, with fac -similes thereof, showing the mode in which it has been or is intended to be applied and used; and the length of time, if any, during which the trade-mark has been in use. ' < Second. By making payment of a fee of twenty-five dollars in the same manner and for the same purpose as the fee required for patents. " Third. By complying with such regulations as may be pre- scribed by the Commissioner of Patents. To each indictment there was a general demurrer. The Judges of the Circuit Court were opposed in opinion upon the following questions: "Can the Act of Congress, approved Aug. 14, 1876, entitled < An Act to punish the counterfeiting of trade-mark goods 246 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 and the sale of or dealing in counterfeit trade-mark goods,' under which this indictment is found, be upheld, wholly or in part, as a law necessary and proper for carrying into execution any of the powers vested in the Congress by the Constitution of the United States?" To the information against Johnson, McNamara, and Reeder, there was a general demurrer, and thereupon a question arose for decision whether the said Act of Congress • < is within the consti- tutional power of Congress, or whether the same fs unconstitutional, null and void;" and the opinions of the Judges of the Circuit Court were opposed. The Attorney- General, for the United States. The validity of the Act of July 8, 1870, which provides for the registration of trade-marks, and gives remedies by civil actions for infringing them, was recognized by Mr. Justice Clifford, who delivered the opinion of the Court in McLean v. Fleming, 96 U. S., 245. The first sentence of the opinion is as follows: — "Protection for lawful trade-marks maybe obtained by indi- viduals, firms, or corporations entitled to the same, if they com- ply with the requirements prescribed by the Act of Congress; ' ' and the provision is, that a trade-mark duly registered as required shall remain in force thirty years from the date of such registration, subject to an exception not necessary to be noticed. 16 Stat. ,210; Rev. Stat., Sees. 4937; 4941." Here it is clearly intimated that protection for trade-marks is rightfully provided by that Act. If it is invalid, no such protec- tion could be in that mode obtained ; but if protection to trade- marks by civil remedies is within the power of Congress, so also are the Statutes punishing as a crime the pirating upon property in them. But in that case, and in several others which are cited on the margin of page 955 of the Revised Statutes, the constitu- tionality of the Act was not discussed. In them and others {Smith v. Reynolds, 10 B latch., 85; Smith v. Reynolds, 13 Id., 45 J Osgood v. Rockwood, n Id., 310; Moorman v. Hodge, 2 Law, 78), it was assumed rather than directly affirmed. OCTOBER, 1879. 247 ■4:0 United States vs. Steffens, &c. In the Sixth Circuit, Judge Swing pronounced the law to be constitutional. In the Seventh Circuit, a contrary decision was made. In each case the question was argued and decided upon clause 8th of Section 8, Article 1, of the Constitution, and the opinion was advanced that it is the only provision by which the authority of Congress on the subject of trade-marks is conferred. The argument drawn from the likeness which property in the use of trade-marks bears to that in patents and copyrights, and from the fact that Congress, in legislating upon these three mat- ters, has, both in the original Act and the Revised Statutes, classed them together, demands careful consideration. Undoubtedly, in the legislative mind they were kindred subjects, and it was thought that the power of Congress over them might be derived from the same source. I shall, however, not dwell upon this view of the question. 1. I maintain the, constitutionality of the statute upon which the indictments and the information are found, upon the ground that it regulates commerce within the power given to Congress by clause 3 of Section 8 of Article 1 of the Constitution, which pro- vides that the Congress shall have power "to regulate commerce with foreign nations, and among the several States, and with the Indian tribes." "Commerce is a term of the largest import. It comprehends intercourse for the purposes of trade in any and all its forms, in- cluding transportation, purchase, sale and exchange of commo- dities, between the citizens of our country and the citizens or subjects of other countries, and between the citizens of different States. The power to regulate it embraces all the instruments by which such commerce may be conducted. So far as some of these instruments are concerned, and some subjects which are local in their operation, it has been held that the States may provide regu- lations until Congress acts with reference to them ; but where the subject to which the power applies is national in its character, or of such a nature as to admit of uniformity of regulation, the power is exclusive of all State authority." Welton v. State of Missouri, 91 U.S., 275. This is a full and clear statement of 248 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 what is meant by "commerce," and of the extent of the power of Congress over it. The purchase and sale of commodities, then, are included in the term "commerce," and the power of Congress over it em- braces all the instruments, aids, and appliances by which it is prosecuted. True, such trade and intercourse must be foreign, or among the citizens of the different States, or with the Indian tribes; but if the instrumentalities employed as aids to such trade and commerce are not local in their operation, and are of such a nature as to admit of uniformity of regulation, the power of Con- gress not only applies to them but is exclusive. 2. Trade-marks are important instrumentalities, aids, or appli- ances by which trade, especially in modern times, is conducted. They are the means by which manufacturers and merchants iden- tify their manufactures and merchandise. They are the symbols by which men engaged in trade and manufactures become known in' the marts of commerce, by which their reputation and that of their goods are extended and published; and as they become better known, the profits of their business are enhanced. Hence the use of trade-marks has become universal, and in all trade and business of any extent they are necessary auxiliaries. Among commercial nations there is a growing tendency to uni- versal recognition of these emblems of commerce. Browne, Trade- Marks, sec. 302. Their use as aids to the exchange of commodities in- the great markets of the world is so generally recognized, and they are considered as so vitally important to the protection of commerce, that they have been made the subject of treaties between the United States and France, the German Empire, Belgium, Austria, Russia, and other powers. The English Merchandise Marks Act of 1862, affords the same protection to foreigners that it does to the subject of Great Britain. Browne, Trade-Marks, p. 565. 3. The subject of trade-marks is not one of local, but of com- mon, interest to all commercial nations. Their operation and the benefits derived from their use are not confined to particular localities, States, or countries. They not only admit, but in order to their efficiency require, uniformity of regulation. OCTOBER, 1879. 249 40 United States vs. Steffeiis, &c. 4. Congress has endeavored to effect this uniformity, first, by- providing for the registration of trade-marks, and, as remedies for the violation of the owners' rights in them, an action on the case for damages and a bill in equity to enjoin the offending party. Sees. 4937, 4941, 4942, Rev. Stat. But these civil reme- dies proved inadequate to effectually prevent pirating upon trade- marks. They do not materially differ from those which pre- viously existed. Congress, then, following the examples of Prussia, France, and England, (Browne, Trade-Marks, pp. 560-572), passed the Act of August 14th, 1876, 19 Stat., 141. The offences therein de- fined are charged in the indictments and the information. Further specification is unnecessary; for the demurrers are general, and the ground of each is that the entire Act is unconstitutional. Its constitutionality in its application to the trade-marks of the sicbjects of foreign countries is the question presented by the in- dictments. The purpose and the natural and reasonable effect of the Acts are to protect the producer or the importer of foreign goods in his right of selling them in the United States, and thus carry out in good faith and enforce our treaty stipulations on the subject. The Act is a regulation of foreign commerce. The convention with France of the 16th of April, 1869, (16 Stat., 771), forbids the reproduction, in either of the two coun- tries, of the trade-marks affixed to merchandise in the other, and gives the injured party an action for damages, just as if he were a citizen or subject of the country where the act of counterfeiting was committed. It provides, in the second article, that the owner of trade- marks residing in either of the two countries, in order to secure their rights in the other, must -deposit duplicate copies of their marks in the Patent Office at Washington, and in the clerk's office of the Tribunal of Commerce of the Seine at Paris. Here is a mutual covenant concerning trade-marks. Whatever protection the laws of either country give to its own citizens or subjects is extended to the citizens or subjects of the other. Such is the intent of the treaty. 250 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 The law of France of June 23, 1857, provides not only a civil action, but also a criminal proceeding which prescribes severe penalties against those who counterfeit trade-marks, or in any way fraudulently deal in false representations of trade-marks. It de- clares that foreigners shall equally enjoy its benefits for their pro- ducts, if, in their countries, diplomatic conventions have estab- lished reciprocity of French marks. Browne, Trade-Marks, 569. Congress, in order to afford an effective remedy for the evil, and extend the same protection to French importers that France gives, to our producers and merchants in her markets, has enacted that the forger of trade -marks and the dealer in forged trade-marks shall answer at the bar of criminal justice in the Courts of the United States. The end is lawful, within the power of Congress; the means are appropriate. But it is said that, in passing the Statutes of Aug. 14, 1876, and July 8, 1870, Congress has exceeded its power, because in their ap- plication they cover cases arising wholly within the several States, and make acts committed within their jurisdiction — acts which are not directed against the operations of the general government — crimes against the United States; that they not only regulate foreign and inter-State commerce, but affect the domestic concerns- of the several States. The fraudulent dealing in trade-marks plainly interferes with, and thwarts the power and duty of the United States to protect foreign and inter-State trade. Moreover, it is impossible to limit the effect of the wrong-doing within the confines of a State. It extends to all places where there is a market for the goods which are simulated by the false device. -But the answer to the objection is, that the subject of these Statutes is a general interest of commerce upon which Congress, has power to legislate. The operation of trade-marks is co-exten- sive with trade, and it is no objection to the law regulating them that it touches the internal concerns of a State. In the Wheeling Bridge Case (18 How., 421), it was observed by the Court : "It will not do to say that the exercise of an ad- mitted power of Congress, conferred by the Constitution, is to be OCTOBER, 1879. 251 40 United States vs. Steffens, &c. withheld, if it appears or can be shown that the effect and opera- tion of the law may incidentally extend beyond the limitation of the power. Upon any such interpretation the principal object of the framers of the instrument in conferring the power would be sacrificed to the subordinate consequences resulting from its exer- cise." The power of Congress to tax imports, is exclusive, and yet this constitutional provision very seriously limits the power of the States over their internal affairs. It was held in Brown v. Maryland (12 Wheat., 419) that the States can in no way or manner tax the sale of imported goods be- fore they are incorporated and mixed up with the mass of the property of the country. Mr. Justice Strong, delivering the opinion of the Court in State Tax on Railway Gross Receipts (15 Wall., 284), construes the ruling in Brown v. Maryland as applying to other persons than the importers, who sell foreign goods by unbroken bale or package. See also Welton v. State of Missouri, 91 U. S., 275. Here it is very plain that, by this authoritative exposition of the Constitution, not only the power of a State over its internal com- merce, but its right to tax property within its jurisdiction, is inter- fered with and limited. So, where States, in the exercise of their power to legislate con- cerning the police, morals, or health of the community, have en- deavored to regulate the sale of particular articles, as of spirituous liquors, their laws are invalid, so far as they affect the sale of im- ported goods by the importer while they are in the original pack- age and not mixed up with the general mass of salable com- modities. License Cases, 5 How., 504; Commonwealth v. Kim- ball, 24 Pick., (Mass.~), 359. In License Cases, the Court decided that a State might regulate the sale of liquors in the original packages as imported from another State, in the absence of legislation by Congress upon the same subject; but when Congress exercised its power to regulate inter- State commerce, State laws, so far as they conflict with the action of Congress, must yield. Here, too, the power of the States over their internal concerns is materially diminished. 252 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 So, also, in regard to the regulation of pilotage. That is within the power of Congress. Cooley v. Board of Wardens, 12 How., 299. A general law regulating pilotage upon all the navigable waters of the United States materially affects the internal com- merce of many States, and yet parties have been indicted and con- victed for a violation of its provisions. United States v. Farnham, 2 Black., 528; United States v. Warren, 4 McLean, 463; United States v. Taylor, 5 Id. , 242. In the regulation of trade with the Indian tribes the action of the law, especially when the Constitution was adopted, was chiefly within a State; but the Court asserted that "the power of Congress comprehends navigation within the limits of every State in the Union, so far as that navigation may be in any manner connected •with commerce with foreign nations, or among the several States, or with the Indian tribes." Gibbins v. Ogden, 9 Wheat., r. In this connection I refer to United States v. Holliday, (3 Wall., 407), and United States v. Forty-three Gallons of Whiskey, 93 U. S.,, 188. Congress having power to legislate upon the subject of trade- marks as a general interest of commerce, it is submitted that the legislation of Congress, the purpose of which is to give them uni- form protection throughout the country, is constitutional, however it may affect the internal affairs of the States. If it be insisted by the defendants that the Act by its terms can also be applied to trade-marks for goods not intended for inter- state or foreign commerce, the reply is, that excluding from opera- tion the provisions which are in that regard objectionable, a valid ■enactment, susceptible of being enforced in all proper cases, may remain. Where a law which is constitutional under certain limi- tations exceeds them, it may still be operative within its legitimate sphere, and be void only for the excess. Mr. George Hoadley, contra. Mr. Justice Miller delivered the opinion of the Court. The three cases whose titles stand at the head of this opinion are criminal prosecutions for violation of what is known as the OCTOBER, 1879. 253 40 United States vs. Steffens, &c. trade- mark legislation of Congress. The first two are indictments in the Southern District of New York, and the last is an informa- tion in the Southern District of Ohio. In all of them the Judges of the Circuit Courts in which they are pending have certified to a difference of opinion on what is substantially the same ques- tion ; rfamely, are the Acts of Congress on the subject of trade- marks founded on any rightful authority in the Constitution of the United States? The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first seen in sees. 77 to 84, inclusive, of the Act of July 8, 1870, entitled "an Act to revise, consoli- date, and amend the statutes relating to patents and copyrights." 16 Stat., 198. The part of this Act relating to trade-marks is embodied in chap. 2, tit. 60, sees. 4937 to 4947, of the Revised Statutes. It is sufficient at present to say that they provide for the regis- tration in the patent office of any device in the nature of a trade- mark to which any person has by usage established an exclusive right, or which the person so registering intends to appropriate by that Act to his exclusive use ; and they make the wrongful use of a trade-mark, so registered, by any other person, without the owner's permission, a cause of action in a civil suit for damages. Six years later we have the Act of Aug. 14, 1876, (19 Stat., 141), punishing by fine and imprisonment the fraudulent use, sale, and counterfeiting of trade-marks registered in pursuance of the stat- utes of the United States, on which the informations and indict- ments are founded in the cases before us. 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 Eng- land and of this country, and by the statutes of some of the States. 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. :2 54 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 i . 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 pro- tection existed long anterior to that Act, and have remained in full force since its passage. These propositions are so well understood as to require 'neither the citation of authorities nor an elaborate argument to prove them. As the property in trade-marks and the right to their exclusive use rest upon the laws of the States, and, like the great body of the rights of person and of property, depend on them for security and protection, the power of Congress to legislate on the subject, to establish the conditions on which these rights shall be enjoyed and exercised, the period of their duration, and the legal reme- dies for their enforcement, if such power exist at all, must be found in the Constitution of the United States, which is the source ~ of all the powers that Congress can lawfully exercise. In the argument of these cases this seems to be conceded, and the advocates for the validity of the Acts of Congress on this sub- ject point to two clauses of the Constitution, in one or in both of which, as they assert, sufficient warrant may be found for this legislation. z. The first of these is the eighth clause of sec. 8 of the first Article. That section, manifestly intended to be an enumeration of the powers expressly granted to Congress, and closing with the declaration of a rule for the ascertainment of such powers as are necessary by way of implication to carry into efficient operation those expressly given, authorizes Congress, by the clause referred to, "to promote the progress of science and useful arts, by secur- ing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." As the first and only attempt by Congress to regulate the right of trade-marks is to be found in the Act of July 8, 1870, to which we have referred, entitled "An Act to revise, consolidate, and amend the statutes relating to patents and copyrights," terms which have long since become technical, as referring, the one to inven- tions and the other to the writings of authors, it is a reasonable OCTOBER, 1879. 255 40 United States vs. Steffens, &c. inference that this part of the statute also was, in the opinion of Congress, an exercise of the power found in that clause of the Constitution. It may also be safely assumed that until a critical ■examination of the subject in the Courts became necessary, it was mainly if not wholly to this clause that the advocates of >the law looked 'for its support. Any attempt, however, to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and •sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties. 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 estab- lish it by registration, neither originality, invention, discovery, science, nor art is in any way essential to the right conferred by that Act. If we should endeavor to classify it under the head of writings of authors, the objections are equally strong. In this, as in regard to inventions, originality is required. And while the word writings may be liberally construed, as it has been, to in- •clude original designs for engravings, prints, &c, it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engrav- ings, and the like. The trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it. At common law the exclusive right to it grows out of its use, and riot its mere adoption. By the Act of Congress, this exclusive right attaches upon registration. But in neither case does it depend upon novelty, invention, discovery, or any work of the brain. It requires no fancy or imagination, no genius, no laborious thought. It is simply founded on priority of appropriation. We look in vain to the statute for any other qualification or condition. If the symbol, however plain, simple, old, or well-known, has been first appropriated by the claimant as Ms distinctive trade-mark, he may, by registration, secure the 256 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 right to its exclusive use. While such legislation may be a judi- cious aid to the common law on the subject of trade-marks, and may be within the competency of Legislatures whose general powers embrace that class of subjects, we are unable to see any such power in the constitutional provisions concerning authors and inventors, and their writings and discoveries. The other clause of the Constitution supposed to confer the re- quisite authority on Congress is the third of the same section which, read in connection with the granting clause, is as follows: 3. "The Congress shall have power to regulate commerce with foreign nations, and among the several States, and with the Indian tribes." The argument is that the use of a trade-mark — that which alone gives it any value — is to identify a particular class or quality of goods as the manufacture, produce, or property of the person who puts them in the general market for sale; that the sale of the article so distinguished is commerce; that 'the trade-mark is, therefore, a useful and valuable aid or instrument of commerce, and its regu- lation by virtue of the clause belongs to Congress, and that the Act in question is a lawful exercise of this power. Every species of property which is the subject of commerce, or which is used or even essential in commerce, is not brought by this clause within the control of Congress. The barrels and casks, the 'bottles and boxes in which alone certain articles of commerce are kept for safety and by which their contents are transferred from the seller to the buyer, do not thereby become subjects of con- gressional legislation more than other property. Nathan v. Lou isiana, 3 How., 73. In Paul v. Virginia, (8 Wall., 168), this Court held that a policy of insurance made by a corporation of one State on property situate in another, was not an article of commerce, and did come within the purview of the clause we are considering. "They are not," says the Court, " commodities to be shipped or forwarded from one State to another, and then put up for sale." On the other hand, in Almy v. State of California, (24 How., 169), it was held that a stamp duty imposed by the Legislature of California on bills of lading for gold and silver transported from any place in that State to another out of the OCTOBER, 1879. 257 *3zO United States vs. Steffens, &c. State, was forbidden by the Constitution of the United States, because such instruments being a necessity to the transaction of commerce, the duty was a tax upon exports. The question, therefore, whether the trade-mark bears such a relation to commerce in general terms as to bring it within con- gressional control, when used or applied to the classes of com- merce which fall within that control, is one which, in the present case, we propose to leave undecided. We adopt this course be- cause when this Court is called on in the course of the administra- tion of the law to consider whether an Act of Congress, or of any other department of the government, is within the constitutional authority of that department, a due respect for a co-ordinate branch of the government requires that we shall decide that it has transcended its powers only when it is so plain that we cannot avoid the duty. In such cases it is manifestly the dictate of wisdom and judicial propriety to decide no more than is necessary to the case in hand. That such has been the uniform course of this Court in regard to statutes passed by Congress will readily appear to any one, who will consider the vast amount of argument presented to us assail- ing them as unconstitutional, and he will count, as he may do on his fingers, the instances in which this Court has declared an Act of Congress void for want of constitutional power. Governed by this view of our duty, we proceed to remark, that a glance at the commerce clause of the Constitution discloses at once what has been often the subject of comment in this Court and out of it, that the power of regulation there conferred on Con- gress is limited to commerce with foreign nations, commerce among the States, and commerce with the Indian tribes. While' bearing in mind the liberal construction that commerce with foreign nations means commerce between citizens of the United States and citizens and subjects of foreign nations, and commerce among the States means commerce between the individual citizens of dif- ferent States, there still remains a very large amount of commerce, perhaps the largest, which, being trade or traffic between citizens of the same State, is beyond the control of Congress. '7 258 SUPREME COURT OF UNITED STATES. United States vs. Steffens, &c. 40 f 4. When, therefore, Congress undertakes to enact a law, which can only be valid as a regulation of commerce, it is reasonable to expect to find on the face of the law, or from its essential na- ture, that it is a regulation of commerce with foreign nations, or among the several States, or with the Indian tribes. If not so limited, it is in excess of the power of Congress. If its main pur- pose be to establish a regulation applicable to all trade, to com- merce at all points, especially if it be apparent that it is designed to govern the commerce wholly between citizens of the same State, it is obviously the exercise of a power not confided to Congress. We find no recognition of this principle in the chapter on trade- marks in the Revised Statutes. We would naturally look for this in the description of the class of persons who are entitled to reg- ister a trade-mark, or in reference to the goods to which it should be applied. If, for instance, the Statute described persons engaged in a commerce between the different States, and related to the use of trade-marks in such commerce, it would be evident that Con- gress believed it was acting under the clause of the Constitution which authorizes it to regulate commerce among the States. So if, when the trade-mark has been registered; Congress had pro- tected its use on goods sold by a citizen of one State to another, or by a citizen of a foreign State to a citizen of the United States, it would be seen that Congress was at least intending to exercise the power of regulation conferred by that clause of the Constitu- tion. But no such idea is found or suggested in this Statute. Its language is : "Any person or firm domiciled in the United States, and any corporation created by the United States, or of any State or Territory thereof, or any person residing in a foreign country which by treaty or convention affords similar privileges to our citizens, may by registration obtain protection for his trade-mark." Here is no requirement that such person shall be engaged in the kind of commerce which Congress is authorized to regulate. 5. It is a general declaration that anybody in the United States, and anybody in any other country which permits us to do the like, may, by registering a trade-mark, have it fully protected. So, while the person registering is required to furnish "a state- ment of the class of merchandise, and the particular description OCTOBER, 1879. 259 40 United States vs. Steffens, &c. of the goods comprised in such class, by which the trade-mark has been or is intended to be appropriated," there is no hint that the goods are to be transported from one State to another, or be- tween the United States and foreign countries. Sec. 4939 is intended to impose some restriction upon the Commissioner of Patents in the matter of registration, but no limitation is suggested in regard to persons or property engaged in the different classes of commerce mentioned in the Constitution. The remedies pro- vided by the Act when the right of the owner of the registered trade-mark is infringed, are not confined to the case of a -trade - mark used in foreign or inter-state commerce. It is therefore manifest that no such distinction is found in the Act, but that its broad purpose was to establish a universal system of trade-mark registration, for the benefit of all who had already used a trade-mark, or who wished to adopt one in the future, without regard to the character of the trade to which it was to be applied or the residence of the owner, with the solitary exception that those who resided in foreign countries which extended no such privileges to us were excluded from them here. It has been suggested that if Congress has power to regulate trade-marks used in commerce with foreign nations and among the several States, these statutes shall be held valid in that class of cases, if no further. To this there are two objections: First, the indictments in these cases do not show that the trade-marks which are wrongfully used were trade-mark used in that kind of commerce. Secondly, while it may be true that when one part of a statute is valid and constitutional, and another part is uncon- stitutional and void, the Court may enforce the valid part, where they are distinctly separable, so that each can stand alone, it is not within the judicial province to give to the words used by Congress a narrower meaning than they are manifestly intended to bear, in order that crimes may be punished which are not de- scribed in language that brings them within the constitutional power of that body. This precise point was decided in United States v. Reese, 92 U. S., 214. In that case Congress had passed a statute punishing election officers who should refuse to any person lawfully entitled to do so the right to cast his vote at an 260 SUPREME COURT OF UNITED STATES. United States vs. Steffeiis, &c. 40 election. This Court was of the opinion that, as regarded the section of the statute then under consideration, Congress could only punish such denial when it was on account of race, color, or previous condition of servitude. It was urged, however, that the general description of the of- fence included the more limited one, and that the section was valid where such was in fact the cause of denial. But the Court said, through the Chief Justice: "We are not able to reject a part which is unconstitutional and retain the remainder, because it is not possible to separate that which is constitutional, if there be any such, from that which is not. The proposed effect is not to be attained by striking out or disregarding words that are in the section, but by inserting those that are not there now. Each of the sections must stand as a whole, or fall together. The lan- guage is plain. There is no room for construction, unless it be as to the effect of the Constitution. The question, then, to be determined is, whether we can introduce words of limitation into a penal statute so as to make it specific, when, as expressed, it is general only. * * * * To limit this statute in the manner now asked for would be to make a new law, not to enforce an old one. This is no part of our duty." If we should, in the case before us, undertake to make by judicial construction a law which Congress did not make, it is quite probable we should do what, if the matter were now before that body, it would be unwilling to do; namely, make a trade-mark law which is only partial in its operation, and which would complicate the rights which parties, would hold, in some instances under the Act of Congress, and in others under State law. Cooley, Const. Lim., 178, 179; Com- monwealth v. Hitchings, 5 Gray, (.Mass.), 482. In what we have here said we wish to be understood as leaving untouched the whole question of the treaty-making power over trade-marks, and of the duty of Congress to pass any laws neces- sary to carry treaties into effect. While we have, in our references in this opinion to the trade- mark legislation of Congress, had mainly in view the Act of 1870, and the civil remedy which that Act provides, it was be- cause the criminal offences described in the Act of 1876 are by OCTOBER, 1879. 261 40 United States vs. Steffens, &c. their express terms, solely referable to frauds, counterfeits, and unlawful use of trade-marks which were registered under the pro- visions of the former Act. If that Act is unconstitutional, so that the registration under it confers no lawful right, then the criminal enactment intended to protect that right falls with it. The questions in each of these cases being an inquiry whether these statutes can be upheld in whole or in part as valid and con- stitutional, must be answered in the. negative ; and it will be so certified to the proper Circuit Courts. 262 SUPREME COURT, STATE OF NEW YORK.. Collins vs. Reynolds Card Manufacturing Co. 41 41 NEW YORK SUPREME COURT, FIRST DEPART- MENT. In Equity. Special Term. Collins The Reynolds Card Manufacturing Co. Decided October, 1879. Reported 7 Abbott's New Cases, 17. "35" Case - trade-mark in numerals. A manufacturer has the right to distinguish the goods manufactured by him by any peculiar mark or device he may select and adopt by which they maybe known as his in the market, and he is entitled to protection in a Court of Equity in the exclusive use of the peculiar mark or symbol appropriated by him designating or indicating the true origin or owner- ship of the article to which they are affixed. In this case the labels do not contain the name of the plaintiffs as makers but the evidence satisfies me beyond a doubt that the figures "35" were known and recognized by dealers, when employed, as carte de visite mounts, as referring to the particular kind of card which was manufac- tured by the plaintiffs, Held: OCTOBER, 1879. 263 4 X Collins vs. Reynolds Card Manufacturing Co. That the plaintiffs have a trade-mark in those figures and are entitled to be protected in a Court of Equity. 3. Rule laid down by Judge Van Brunt in Kiminv v. Basch, 16 Law Reg,, N. S., 596, approved and quoted as follows: "If the use of any word, numerals or symbols is adopted for the purpose of defrauding the pub- lic, the Courts will interfere to protect the public from such fraudulent intent even though the person asking the intervention of the Court may not have the exclusive right to use the words, numerals or symbols." 4. The plaintiff is entitled to an injunction restraining the defendants from using the figures "35" in designating the cards made by them whether upon the cards themselves, or upon the labels of their boxes. Trial by the Court. The action was brought by Alfred M. Collins, Henry H. Col- lins, and Edward Cope, to restrain defendant from using the number " 35 " and an imitation of the plaintiffs' label. Plaintiffs manufacture most of the cards used for photographic mounts in this country. Their cards of various sizes and kinds are boxed, each kind by itself, in a paper box, with a label on one end of the box. The cards themselves are perfectly plain in appear- ance, and the boxes and labels are not marked with the manufac- turers' name or with any peculiar device, except that upon the labels, numbers running from 1 to upwards of 50 are printed ; a different number being employed for each kind of cards. The numbers are purely arbitrary, and are used by the plaintiffs for the double purpose of distinguishing the different kinds of their cards as among themselves, and also as of designating to the trade cards of their manufacture, and of distinguishing them from cards of all other manufacturers. The numbers were first selected by the plaintiffs, and had been exclusively used by them for this purpose, and with this effect in the photographic card trade, until certain of them were adopted by the defendant. The plaintiffs' cards are generally ordered, in the trade, simply by the numbers. Flamen B. Candler and George Richards, ( Van Winkle, Cand- ler cf Jay, Attorneys), for plaintiffs. Homer A. Nelson and A. Bell Malcomson, (Cochrane & Mal- comson, Attorneys'), for defendants. 264 SUPREME COURT, STATE OF NEW YORK. Collins vs. Reynolds Card Manufacturing Co. 4 1 Lawrence, J.: This case cannot be distinguished, in any opinion, in principle, from that of Gillott v. Esierbrook. 1 . In that case the Court held that a manufacturer has the right to distinguish the goods manufactured by him, by any peculiar mark or device he may select and adopt, by which they may be known as his in the market, and that he is entitled to the protec- tion of a Court of Equity in the exclusive use of the peculiar mark or symbol appropriated by him, designating or indicating the true origin or ownership of the article to which they are affixed. In that case the plaintiff had impressed the figures " 303 " upon his pens, and the pens were put up in boxes with a label on top, containing the name of the maker and numerals, and the pens were known and ordered by dealers as 303 pens. 2. In the case at bar, the labels do not contain the name of the plaintiffs as makers, but the evidence satisfies me, beyond a doubt, that the figures "35" were known and recognized by dealers, when employed, designating carte de visite mounts, as referring to the particular kind of card which was manufactured by the plaintiffs. And under the authorities, I am of the opinion that the plain- tiffs" have a trade-mark in those figures, and are entitled to be protected from its infringement by a Court of Equity. ( Gillot v. Esterbrook, 48 {N. K), 374; Kinney v. Basch, 16 Am. Law Reg., N. S., 596). The case presented upon the trial of this action forces me to the conclusion that the defendants deliberately appropriated the figures "35" for the purpose of inducing the public to believe that the goods which are offered for sale by the defendants are the goods of the plaintiffs. Judge Van Brunt, in the case last cited, has well expressed the rule which is applicable to such cases. 3. The learned Judge says: "If the use of any words, num- erals or symbols is adopted for the purpose of defrauding the public, the Courts will interfere to protect the public from such fraudulent intent, even though the person asking the intervention of the Court may not have the exclusive right to the use of these OCTOBER, 1879. 265 4 1 Collins vs. Reynolds Card Manufacturing Co. words, numerals or symbols." (See Lee v. Haley, L. R., 5 Ch. App., 155; Wotherspoon v. Currie, L. R., 5 H. L., 508; Coleman v. Crump, 70. N Y., 573; Newman v. Alvord, 51 N. ¥., 189; Enoch Morgan' s Sons' Co. v. Schwachofer, 5 Abb. New Cas., 265). 3. I am of the opinion that the plaintiff is entitled to an in- junction restraining the defendants from using the figures "35," in designating the cards made by them, whether upon the cards them- selves, or upon the labels of their boxes, but on the proof before me, I cannot say that there is such a resemblance between the boxes used by the defendants and the plaintiffs as will justify me in restraining the defendants from putting up their goods in drab colored boxes after shey thall have abandoned the use of the figures "35." 266 SUPREME COURT OF UNITED STATES. Kidd vs. Johnson. 42 42 IN THE UNITED STATES SUPREME COURT. In Equity. Kidd vs. Johnson. Decided October, 1879. Reported 100 U. S., 617. "Magnolia IF/iiskcv" Case. The owner of a trade-mark which is affixed to articles manufactured at his establishment may, in selling the latter, lawfully transfer therewith to the purchaser the right to use the trade-mark. Appeal from the Circuit Court of the United States for the Dis- trict of Louisiana. The facts are stated in the opinion of the Court : Mr. M. F. Morris, for the appellant. Mr. E. M. Johnson, contra. OCTOBER, 1879. 267 42 Kidd vs. Johnson. Mr. Justice Field, delivered the opinion of the Court. The question presented in this case relates to the ownership of a trade-mark used by the complainants on packages and barrels con- taining whiskey manufactured and sold by them in Cincinnati, and arises out of the following facts : In 1849, one S. N. Pike, doing business in that city as a whole- sale dealer in whiskey, adopted as a trade-mark for his manufacture the words, " S. N. Pike's Magnolia Whiskey, Cincinnati, Ohio," enclosed in a circle, which he placed on packages and barrels con- taining the liquor. Between that date and 1863 he was in partnership with different persons doing business there under the name of S. N. Pike & Co. In 1863, having dissolved his con- nection with others, he took as partners two of his former clerks, Tilney and Kidd, continuing he original firm-name, and soon afterwards opened a branch house in New York City. The same trade-mark was used by the new firm, as it had been by the pre- ceding firm, without any change. At this time, and subsequently until its sale in 1868, the real property in Cincinnati, and the stills, tubs, engines, boilers, tubing, and all apparatus in his dis- tillery, for the consideration of $125,000, to the firm of Mills, Johnson & Co., who were also engaged in the manufacture and sale of whiskey at that place. At the same time, Pike executed and delivered to the purchasers a separate instrument, stating that, having sold his premises to them, he extended to them and their successors the use of all his brands formerly used by him in his Cincinnati house. Mills, Johnson & Co. continued for some years the manufacture and sale of whiskey on the premises thus purchased, using, without objection from any one, the brands previously used by S. N. Pike & Co. They were succeeded in business by the complainants, who, it is admitted, are entitled to all the rights which they pos- sessed in the trade-mark in question. S. N. Pike died in 1872, and his surviving partners formed a new partnership, under the name of George W. Kidd & Co., which was subseqnently dissolved,, and to its business Kidd, the appellant in this case, succeeded. The complainants finding that whiskey bearing this trade-mark, manufactured by the firm of Tyra, Hill & Co., of St. Louis, was 268 SUPREME COURT OF UNITED STATES. Kidd vs. Johnson. 48 sold in large quantities by dealers in New Orleans, filed the pre- sent bill to enjoin the dealers from selling or trafficking in whiskey contained in packages thus marked. By an amendment to the bill the defendant Kidd was made a party/ He filed an answer and cross-bill, asserting title to the trade-mark as surviving partner of the firm of S. N. Pike & Co., and setting forth that Tyra, Hill & Co., were acting under a license from him. The principal question for determination is, whether the com- plainants, claiming under the sale of Pike to their predecessors, or the defendant Kidd, claiming as survivor of S. N. Pike & Co., have the exclusive right to the trade-mark mentioned. The Court below decided that the complainants possessed the exclusive right, and our judgment approves of the decision. It is admitted that Pike' was the owner of the trade-mark when he took two of his clerks into partnership and formed the firm of S. N. Pike & Co. He did not place his interest in the trade-mark in the concern as a part of its capital stock. He allowed the use . of it on packages containing the whiskey manufactured by them ; but it no more became partnership property from that fact than did the realty itself, which he also owned, and on which their business was conducted. He was engaged in the same business before the partnership as afterwards, and taking his clerks into partnership changed in no respect, beyond its terms, their relation to his. individual property. Their subsequent conduct, moreover, plainly shows that they claimed no interest in the trade-mark. They knew of his conveyance of its use to Mills, Johnson & Co., on the ist of October, 1868, when they removed their own busi- ness to New York, and made no objection to the transfer. Their subsequent correspondence discloses beyond question their know- ledge of the transfer and recognition of his power to make it. That transfer was plainly designed to confer whatever right Pike possessed. It, in terms, extends the use of the trade-mark to Mills, Johnson & Co., and their successors. Such use, to be of any value, must necessarily be exclusive. If others also could use it, the trade-mark would be of no service in distinguishing the whiskey of the manufacture in Cincinnati ; and thus the company would lose all the benefit arising from the reputation the whiskey OCTOBER, 1879. 269 '42 Kick! vs. Johnson. there manufactured had acquired in the market. The right to use the trade-mark is not limited to any place, city, or State, and, therefore, must be deemed to extend everywhere. Such is the uni- form construction of licenses to use patented inventions. If the owner imposes no limitation of place or time, the right to use is deemed co-extensive with the whole country, and perpetual. The claim of Kidd to the trade-mark as survivor of the part- ners in the firm of S. N. Pike & Co., is without any merit. Pike, in his life-time, repudiated any ownership in the trade-mark after his. sale, and Kidd knew that fact, and never even pretended that the firm had any such right until after Pike's death. As to the right of Pike to dispose of his trade-mark in connec- tion with the establishment where the liquor was manufactured, we do not think there can be any reasonable doubt. It is true, the pecuniary 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 par- ticular establishment and acquires a special reputation in connection with the place of mauufacture, and that establishment is trans- ferred either by contract or opperation of law to others, the right to the use of the trade-mark may be lawfully transferred with it. Its subsequent use by the persons to whom the establishment is trans- ferred 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. Such is the purport of the language of Lord Cran- worth in the case of Leather Cloth Company v. American Leather Cloth Company, reported in 1 1 Jur. N. S. See also Ainsworth v. Walmesley, 44 L. J., 355; and Hall v. Barrows, 10 Jur. N. S. 55- The present case falls within this rule. Decree affirmed. 270 U. S. C. C. NORTH. DIST. OF ILLINOIS. Washburn & Moen Manufacturing Co. vs. Haish. 43 43 'UNITED STATES CIRCUIT COURT, NORTHERN DISTRICT OF ILLINOIS. In Equity. Washburn & Moen Manufacturing Co. vs. Jacob Haish. Decided October, 1879. Reported 4 Fed. Rep., 900. "Barbed Wire Fence" Case. 1. A person has no right to mark his goods with any words or terms indi- cating that they are manufactured under a patent which he does not own and has no right to use. 2. A defendant, having so marked his goods, will not be allowed to defend himself by denying the validity of such patent. 3. An injunction will be issued to restrain a false and fraudulent libel upon the title of the complainant's patent. Messrs. Coburn and Thacher, for the complainant. Mr. I. V. Randall, for the defendant. Blodgett, J.: The bill in this case charges that complainant is owner of a patent for an improvement in barbed wire for fencing purposes, OCTOBER, 1879. 271 48 Washburn & Moen Manufacturing Co. vs. Haish. No. 74,379, issued by the United States to Michael Kelly, dated the nth day of February, 1868, and reissued on the 8th day of February, 1876; that defendant, Jacob Haish, under the name Jacob Haish, J. Haish & Co., and Jacob Haish & Co., who is a manufacturer of barbed wire for fencing purposes, has issued cir- culars and used tags and marks and put upon packages of barbed fence wire, words and terms stating and indicating that the wire manufactured and sold by him is made under said reissued pat- ent, and also that he is owner of one-half of said reissued patent, to the great detriment of complainant's business. Complainant prays injunction restraining defendant from issuing any circulars or using any words or packages indicating that his goods are manufactured under said reissued patent. Defendant admits the issue of said circulars and the use of tags and markings, substantially as charged in the bill, and also admits that he is not the owner of said reissued patent, and alleges that he is the owner of certain patents for barbed wire, under which he manufactures, and that he marks his goods with words showing that they are made under his said patents. He further alleges that said reissued patent is void, and that complainant has no right to the protection thereof. 1. I am very clear that the defendant has no right, upon the admitted facts in the case, to mark his goods with any words or terms indicating that they are manufactured under complainant's patent. He has the right, and it is his duty, to mark his goods with his own patent mark; but this does not give him the right to put upon the goods, any indicia showing that they are under another man's patent or a patent which he does not own and has no right to use. Several reasons occur to me why he should not be allowed to do this. In the first place, the owner of a patent has the right to regulate the quality of goods bearing his patent mark. The value of a patent to its owner may largely depend upon the quality of goods manufactured under it. By manufac- turing and selling a poor article purporting to be made under complainant's patent, the value of the patent itself may be seri- ously impaired and the complainant damaged. In the second place, the public would be imposed upon and led to believe that 272 U. S. C. C. NORTH. DIST. OF ILLINOIS. Washburn & Moen Manufacturing Co. vs. Haish. 43 they were purchasing a genuine article made by the patentee or under his patent. This reason applies the more forcibly because the law makes it the duty of a patentee or those manufacturing goods under a patent to mark his goods with the word "pat- ented," with the date of the patent; and persons purchasing such goods with the belief that they were made and vended by the patentee,- or those acting under his license, might be liable to an action for infringement by the owner of the patent; and, thirdly, such an act is a direct violation of the property interest which the law vests in the owner of a patent. No man has the right to violate this right of property any more than he has to trespass on another's land or other tangible property. Nor can the defend- ■ ant question the validity of this patent in this collateral way. If the patent is not valid, defendant has no right to impose upon the public by marking his goods with terms indicating that they are protected by a patent. 2. He cannot be allowed to use that to which complainant has at least the exclusive prima facie right, and then defend himself by denying the validity of the patent. Again, the effect of de- fendant's admitted acts is to call in question the complainant's title to this reissued patent. 3. He is in effect guilty of libel upon the complainant's title by asserting that he is the owner of half the patent; and this may work great injury to the complainant. Whether complainant can recover the damages in this action which it may have sustained by these admitted acts of the defendant is not now in question. The only relief at present invoked is the prevention of future damage to complainant, and to this extent, it seems to me, a case is made out for injunction. An injunction will be issued restraining defendant, his agents, attorneys, servants, and associates, from marking any barbed fence wire or packages of barbed fence wire with any words or letters indicating that said wire is manufactured either in whole or part, under or pursuant to the said Reissued Patent No. 6,902. NOVEMBER, 1 879. 273 ■^'l Hanford, et al. vs. Westcott, et al. 44 UNITED STATES CIRCUIT COURT, DISTRICT OF NEW JERSEY. In Equity. Hanford, et al. vs. Westcott, et al. Decided io November, 1879. Reported 16 Official Gazette, 1181. " Chestnut Grove Whiskey''' Case. 1. The Commissioner of. Patents has authority under the statute and rules of the Patent Office to institute an interference between opposing claimants for registration of the same trade-mark for the purpose of determining the ownership of the same. 2. The decisions of the Secretary of the Interior in 13 Official Gazette, 963, and of the Commissioner of Patents in Hoosier Drill Company vs. In- gals, (14 Official Gazette, 785), considered and approved. 3. The decision of the Examiner of Interferences, not appealed' from, in such an interference is conclusive upon the parties and their privies, and cannot be questioned in any other tribunal. 4. The successful party in such an interference is entitled to a provisional injunction against the licensees of the unsuccessful party when no doubt exists as to the infringement. 274 U. S. C. C. DISTRICT OF NEW JERSEY. Hanford, et al. vs. Westcott, et at. *1-# z»z>evlin v. Devlin, 69 Id, , 212). It is not necessary that the act complained of should have been prompted by an evil intent or improper motive, but it is sufficient to justify an action that the resemblance in the devices is such as to produce the belief in the minds of the buyers* that in procuring the one class of goods they are really obtaining the others, and in that way producing injury to the trade and business of the party entitled by the priority of his right to the protection afforded by the law. (Coleman v. Crump, supra; Royal Baking Powder Co. v. Sherrill, MSS. , Op. Van Vorst, /.) The plaintiff has been extensively engaged in the manufacture and sale of baking powder; the article manu- factured is put up in round tin boxes with red and yellow labels upon them; upon the red label are the words in large type, "Royal Baking Powder," the first word being in a curve at the upper part of the box, and the other words similarly placed at the lower part of the box. An ornament or device is also placed in the centre between those words. The yellow label covers the residue of the box, containing at the upper part in large type the words "Royal Baking Powder," followed by directions for use, printed on each 312 SUPREME COURT, STATE OF NEW YORK. Royal Baking Powder Co. vs. Jenkins, it al. 50 side the centre of the label in English and German, followed by the name of the manufacturer. The top of the box contains the words impressed in the tin, "Full weight, i lb., Royal Baking Powder, absolutely pure." These labels, colors, wordings and devices combined together constitute sufficient to create a trade- mark or trading device, distinguishing the plaintiff's manufactures from those of others engaged in the same line of business. It is very obviously more than the use of words which cannot be exclu- sively appropriated to the business of any person or firm, for it is a combination or arrangement of words and other things novel in itself, which others would have no occasion to resort to or use in the ordinary course of their own business affairs, and for that reason the use and enjoyment of that combination would impose no restraint on the proper rights and privileges of other dealers. It constitutes a device -invented, used, and appropriated by the plaintiff, which the law will secure the advantage of to the plaintiff, against all persons afterwards colorably using it to advance the success and prosperity of their own manufacture and trade carried on by the sale of a similar article. The defendants are engaged in the same line of business, manu- facturing and selling baking powder. Their manufacture is put up in round tin boxes of the same forms, sizes, and shapes as those used by the plaintiff, having red and yellow«labels on each box, containing in similar large letters on curved lines on the red label the words "Royalty Baking Powder" with a different ornament or device in centre from that in the centre of the plaintiff's red label, and at the upper part of the yellow label, in similar type, and placed upon the label in the same form, the words "Royalty Baking Powder," followed by printed directions in English and German on each side the centre of the label, with the names of the manufacturers at the foot. There are other slight but unimport- ant differences in the label not requiring attention, and the letter- ing in the cover to the boxes is wholly omitted by the defendants. i . But the general appearance of the boxes and labels is so nearly identical as to be well calculated to deceive ordinary ob- servers. And from the degree of attention which purchasers would FEBRUARY, 1880. 3 13 50 Royal Baking Powder Co. vs. Jenkins, et al. usually bestow on their purchases, the defendants' manufacture would pass very well in trade for that of the plaintiff. 2. The differences are so slight that they would be very apt to escape attention unless a comparison could be made by having both the articles under the immediate inspection of the buyer. 3. And that, under the authorities, is sufficient to entitle the plaintiff to the restraining interposition of this Court; without it the business of the plaintiff would be exposed to an unfair advan- tage in favor of the defendants, and its customers and trade di- verted to them under the belief, deceptively produced, that they were still dealing in the plaintiff's manufacture. 4. The motion made must be allowed to prevail and the injunc- tion continued until the hearing and decision of the action. 3 14 SUPERIOR COURT OF NEW YORK CITY. Beil vs. Prescott, et a!. 5 1 51 SUPERIOR COURT OF THE CITY OF NEW YORK. In Equity. Nathan Van Beil, Appellant, vs. Henry W. Prescott, et al., Respondents. Decided 2 February, 1880. Reported 46 N. Y., 542. "Rye and Rock" Case. Trade-mark words "Rye and Rock" are descriptive and cannot be appro- priated as a trade -111 ark. Appeal by the plaintiff from a judgment dismissing the com- plaint. A. H. H. Dawson, for appellant. John A. Foster, for respondent. Curtis, Ch. J.: This was an action brought by the plaintiff to restrain the de- fendants from the use of the name '-Rye and Rock," as applied to a mixture of rock candy dissolved in rye whiskey. DECEMBER, 1 879. 315 5-1 Beil vs. Prescott, et al. Plaintiff, in his complaint, claims that he adopted, in 1878, the words "Rye and Rock" as his trade-mark. The Court, at General Term, said : "We concur-in the views of the learned Judge at the Special Term that the words 'Rye and Rock' form a description of the , article of which the liquid to which plaintiff applied the words is compounded; and, therefore, it is not a trade-mark. A tradef-mark is an arbitrary sign or name. Any person who has a right to make the liquid has a right to give a description of it. "We are also of the opinion that the plaintiff was not the first to adopt the words 'Rye and Rock, 1 as indicating the compound in question." Speir, J., concurred. Judgment appealed from affirmed, with costs. 316 ST. LOUIS COURT OF APPEALS. Conrad vs. Joseph Uhrig Brewing Co. 52 B2 IN THE ST. LOUIS COURT OF APPEALS. In Equity. Charles Conrad, Respondent, vs. Joseph Uhrig Brewing Company, Appellants. Decided 3 February, 1880. Reported 8 Mo. App., 277. "Budweiser Beer" Case. 1. The rights of a manufacturer to his particular trade-mark is one which the law fully recognizes. ■*l. If the marks are so different that the ordinary buyer cannot be deceived no wrong is done to the public. 3. It is not important to determine whether the device simulated is techni- cally to be called a trade-mark or a label * * * The entire device simulated was that which had been adopted by a merchant to designate goods manufactured for him, and under his direction, and sold by him * * * * jj e jj a( j introduced his goods extensively under the desig- nation he had adopted, and was entitled to its exclusive use as a trade- mark. 4. The injury done was not in calling the beer sold by defendant Budweiser beer, but in affixing to the bottles a mark calculated to deceive the FEBRUARY, l8So. 317 5 3 Conrad vs. Joseph Uhrig Brewing Co. ordinary purchaser into the notion that the bottled beer of Uhrig was the article so carefully prepared by Conrad, by whatever name it might be called. 5. Where a label adopted by a merchant to designate goods purchased by him, and for which he had built up a large trade, has been simulated by another merchant, placed upon inferior goods, and put upon the market, an action in the nature of an action for deceit will lie, at the suit of the former. 6. Specific damages need not be shown in such a case, but the jury may assess such damages as they may on the whole evidence, be satisfied has been sustained. 7. That the label bears a name the use of which could not in equity be pro- tected as a trade-mark, will not prevent a recovery, where the label is imitated in size, shape, color, device and general appearance. 8. Where the words in a label adopted as a trade-mark are substantially true, and contain nothing calculated to deceive the public; although not literally true, Held: to be a distinction without a difference. Appeal from the St. Louis Circuit Court. Everett W. Pattison and Rudolph Schulenburg, for the appellant : The combination used is not valid as a trade-mark ; and an action at law will not lie for the infringement of a label. Falk- enburg v. Lucy, 35 Cal., 52; Browne on T.-M., sec. 137. The plaintiff's label or trade-mark contains a representation calculated to deceive the public, and is not entitled to protection: Fetridge v. Wells, 4 Abb. Pr., 144; Pidding v. How, 8 Sim., 479 ; Perry v. Truefitt, 6 Beav., 66 ; Partridge v. Mench, How. App. Cas., 547 ; Phalon v. Wright, 5 Pa., 464; Leather Co. v. American Co., 1 Hen. &* M., 271 ; Morgan v. Mc Adams, 3 C. L. J. (N. S.), Ch., 228; Mc Andrew v. Bassett, 10 Jur., (N. S.~), 550; Hobbs v. Francais, 19 How. Pr., 567 ; Palmer v. Harris, 60 Pa. St., 156; Hagerty v. Shine, 7 Cent. L. J., 291; Stock- dale v. Orwleyn, 7 Dow. 6° R., 625; Ford v. Foster, 7 Ch. App. Cas., 626. There was no infringement ; the defendant had the same right as the plaintiff to manufacture the beer and use the name. Gillet v. Esterbrook, 47 Barb., 465 ; Casswell v. Davis, 58 N. ¥., 223 ; 3 18 ST. LOUIS COURT OF APPEALS. Conrad vs. Joseph Uhrig Brewing Co. 5 3 Thompzon v. Winchester, 19 Pick., 216 ; Davis v. Kendall, 2 R. I., 566; Lazenby v. White, 41 L.J. {N. S.), Ch., 354; Canham v. Jones, 2 Ves. & Bea., 218 ; Candee v. Deere, 54 ///., 439, 46 1 . Fraud of the very essence of an action at law for violation of a trade-mark : Browne on Trade-Marks, sec. 458; Blanch- ard v. Hill, 2 Atk., 484; Crawshay v. Thompson, 4 Man. 6° G., 357 ; Rogers v. Norvill, 5 C. B., 109; Edelstein v. Edelstein, 1 De G., J. & S., 185, 199. Damages: Squier v. Gould, 14 Wend. ,159^ Strong v. Whitehead, 1 2 Wend. , 64 ; Johnson v. Robert- son, 8 Port., 486 ; Shipman v. Burrows, 1 Hall, 399; Ov?/? z/. Boite, 1 Saund., 241, 243, note 5. ,ff. .£. Rombauer and Finkelhberg &° Rassieur, for the respondent. There was here such an appropriation by the defendant of the mark, symbol, or device of the plaintiff as will enable the latter to maintain an acti6n against the former for violation of a trade- mark. Croft v. Day, 2 Beav., 84; Pophan v. Wilcox, 14 Abb. Pr. (N. S.') 206 ; Sohe v. Griesendorf, 1 Wils., (J~nd.~), 60; Filley v. Fasset, 44 Mo. , 168-178; Brown v. Mercer, 37 N. Y. Superior Ct., 265 ; Browne on T.-M., sees. 385-386. While geographical and generic terms in themselves cannot be appropri- ated as a trade-mark, yet they will be entitled to protection when used in connection with other symbols and devices, as a trade- mark, against one who uses the same terms in connection with the same devices and similar symbols and with intention to deceive. Brintinger v. Waattles, 28 How. Pr., 206; Newman v. Alvord, 49 Barb., 588 ; Lea v. Wolf, N. Y. Superior Ct., 626 ; Lead Co. v. Massury, 25 Barb., 416; Coffin v. Brumton, 4 McLtan, 516; Knott v. Morgan, 2 Keen, 213; Mc Andrews v. Bassett, 10 Jur. , (JV. S.), 550. There was here no such intentional or material misrepresentation by the plaintiff as will deprive him of protection. Smith v. Woodruff, 48 Barb. , 438 ; Curtis v. Byran, 36 How. Pr. , 33; Fettridge v. Merchant, 4 Abb. Pr., 156; Browne on T.-M., sees. 492, 493; Stewart v. Smithson, 1 Hill, 49. Damages: Graham v. Plate, 40 Cal., 593; Pelts v. Eichele, 62 Mo., 171 ; Marsh v. Billings, 7 Cush., 322; Taylor v. Carpen- ter^ Woodb. & M., 1 ; Browne on T.-M., sec. 503. FEBRUARY, l88o. 319 5 2 Conrad^j. Joseph Uhrig Brewing Co. Bakewell, J., delivered the opinion of the Court; This is an action in the nature of an action of deceit for dam- ages for using what the plaintiff in his petition claimed as his trade-mark. The answer was a general denial. There was a verdict and judgment for the plaintiff for $4,175. It appears that the plaintiff had been for many years engaged in the wine and liquor business in St. Louis on a large scale, under the trade-name of C. Conrad & Co. For nearly two years before the institution of this suit he had been putting up an excellent quality of beer, which he had, at great expense, introduced to the the trade ; and which was very favorably received in other cities, particularly in California and Texas. Budweis is a small town in Bohemia, where very good beer is made, and as plaintiff,, who is not a brewer, seems to have believed by some peculiar process. It appears, however, that the Budweiser process of making beer is not peculiar to Budweis. The beer which the plaintiffs put up was manufactured for him by Anheuser & Co., a large brewing house in St. Louis. The directions of Conrad were that it should be brewed of imported hops and barley. It was brewed altogether from the best imported hops, which were imported and furnished for that purpose to Anheuser & Co., by Conrad himself. These imported hops are superior to any American hops. The barley was not imported ; but it was the best, carefully selected Ameri- can barley, and as good as any foreign barley. In brewing, the mash is prepared by infusion, or by decoction, or by a process in which the two modes are combined. In Budweis, the mash is prepared by infusion ; and this beer is so prepared. It costs to prepare it about two dollars a barrel more than the ordinary beer manufactured by Anheuser & Co., and is a better beer; and is described by the experts examined, as being an 'uncommonly good beer — a hop beer, of good color, bright and inviting in appearance. Conrad testifies that he has a peculiar process of bottling his beer, which is his secret and which improves the beer. The defendant claims, and Uhrig swears, that the Conrad method of bottling is the same used by the defen- dant, and is a known European process. For the purpose of protecting his interests, Conrad employed a lithographer to get 320 ST. LOUIS COURT OF APPEALS. Conrad vs. Joseph Uhrig Brewing Co. 5S up a peculiar label. This label is somewhat in the shape of a neck- tie. In the centre are three "C's;" on each flap is a peculiarly- shaped crown, wreathed with barley and hop-leaves. The words on the label are : "We guarantee that this beer is brewed especially for our own trade, according to the Budweiser process, of the best Saazer hops and Bohemian barley, and war- ranted to keep in any climate. Take notice that all our corks are burned with our trade-mark. The world renowned Budweiser lager beer. Trade-mark, Australia, Europe, Asia, Africa, America. ' ' Conrad considered that he had bought this design. The engraver says that he did not understand that Conrad bought the design ; that the stone still belonged to the engraver. Defendant manufactured an inferior and cheaper beer. After plaintiffs' beer had acquired a reputation, the president of defend- ant procured from the same engraver a label of the same size, shape and color, and having the same general appearance, and the same peculiar devices of a crown and wreaths. Examination would show that the two labels were not the same ; but the retail purchaser would readily take one for the other. On defendant's label were three < Nelson Smith, for respondent. A person for whom goods are manufactured is entitled to pro- tection in the use of the device or symbol which is invented and adopted by him to designate the goods which he sells thereunder. (Amoskeag Manuf. Co. v. Spear, 2 Sand/., 599; Walton v. Craw- ley, 2 Blatchf., 440;. Even though the vendor had no direct relation to the manufacturer, he has a right to protection. (Part- ridge v. Monck, 2 Barb. Ch., 103; Taylor v. Carpenter, 2 Sand/. Ch., 603, 614; 11 Paige, 292). The property and right to pro- tection in such case is not in the goods, but in the device or symbol adopted by the plaintiff. (IVotherspoon v. Currie, L. R., JUNE, 1880. 387 S3 Godillot vs. Harris, et al. 5 H. L., 508). The plaintiff's label with the words, marks, pic- tures, symbols, and arrangement thereof, embracing his mono- gram, constituted a good trade-mark. (Co/man v. Crump, 70 N. Y-> 7S3J Taylor v. Carpenter, 2 Sandf. Ch., 603, 614; n Paige, 292; Partridge v. Monck, 2 Barb. Ch., 103; £. C, 1 How. Ct. of App. Cases, 547; £. C. , Cox's American Trade- Mark Cases, 72; Morrison v. Case, 9 Blatchf., 548). A picture of a public build- ing belonging to the State, or of a foreign nation, maybe adopted as a trade-mark and will be protected. {Brie v. Tarband, Browne on Trade-Marks, sees. 258, 259, 262). The rule that there can be no right to the use of generic words, nor words merely indi- cating name or quality, only applies when the words are expressed in English; it has no application when the words used are in a foreign or dead language. {Raggett v. Findlater, L. R., 17 Eg. Cases, 36; Fordv. Forster, L. R., 7 Ch. App., 611; n Abb. L. J., 169; Wotherspoon v. Currie, L. R., 5 H. L., 508; Brahamv. Bustard, 1 Hem. 6° Mill., 447). A word which indicates a mere fancy name will be protected in favor of the person who first adopts it. {Knott v. Morgan, 2 Keen, 213; Croft v. Day, 7 Bea- van, 85; Mesrole v. Tynberg, 4 Abb., [TV. S.~\, 410; Newman v. Alvord, 49 Barb., 588; Rilletv. Cartier, n Abb., \_N. S.~\, 186; Carver v. Bowker, Sebastian' s Trade-Mark Cases, 581; In re Rotherham, Id., 647; S. C, 27 W. R., 503). The moment a person has selected a symbol or device to indicate his mark, and applies the mark to his goods, the act is complete and his right consummated; no particular duration of time as to the user is necessary. {Browne on Trade-Marks, sec. 252; Taylor v. Carpen- ter, 2 Sandf. Ch., 603, 614; n Paige, 292; Partridge v. Monck, 2 Barb., 103; S. C, 1 How. Ct. App. Cases, 547). Danforth, J.: We can discover no ground upon which the judgment in this case should be reversed. 1. It. is not essential to property in a trade-mark that it should indicate any particular person as the maker of the article to which it is attached. It may represent to the purchaser the quality of the thing offered for sale, and in that case is of value to any per- 388 COURT OF APPEALS, STATE OF NEW YORK. Godillot vs. Harris, et al. 63 son interested in putting the commodity to which it is applied upon the market. This was the plaintiff's position. He was not the actual manufacturer of the "Julienne," but the trial Court found, and there is evidence to sustain the finding, "that it was manufactured and put up in Paris, expressly for him." 2. He devised the ingredients, and became the importer of the prepared article. To designate the substance, when so prepared for sale, he designed and had engraved and printed, a label, which he attached to the packages containing it. He was interested in the result of sales, and although these were made in the jiames of third persons, and not his own, his legal right to protection is the same. By any increase in the market demand for the commodity, he was benefited, and by every thing which either supplanted it or dimin- ished the public estimate of it, he was a sufferer. The defendant subsequently offered for sale substantially the same kind of goods, and placed upon the packages a label very similar to that used by the plaintiff. It is in most respects a copy, and except upon close inspection seems to be literally a copy. The plaintiff's mono- gram "A. G." is omitted, but that of one of the defendants, " F. G." is put in its place. A purchaser having in mind the article he wanted would not notice the difference, while the crown and armorial bearings, representing the arms of the City of Paris, with the persuasive words, " conserves alimentaires, " the word Paris desig- nating its origin, and the word "Julienne" the thing itself, are identically the same. A buyer, however deliberate, would be easily deceived by the resemblance, and while the compound pur- chased might be equally as good as that of the plaintiff's, it is clear that the plaintiff would have lost the sale of his preparation, and so received injury. This is a very brief statement of the plaintiff's case, but it exists in the finding of the trial Court, and in the evidence. It is sufficient to warrant and require the judgment which has heen pronounced. (If os tetter v. Vowinkle, i Dill. C. C, 329). The conclusion of the trial Judge has received the approbation of the Supreme Court, and is concurred in by us. It stands not only upon principle, but upon authority. The plaintiff acquired the right to the exclusive enjoyment of the trade-mark, not done by devising it, but << by its prior use and application in JUNE, 1880. 389 68 Godillot vs. Harris, et al. the manner in which it has been imitated by the defendant." (Walton v. Crowley, 3 Blatchf. C. C, 440), and this is so, although the goods were manufactured for him, and not by him- self, for he had the same legal right to affix and maintain a special trade-mark in one case as in the other. ( }Valton v. Crowley, supra; Amoskeag Manuf. Co. v. Spear, 2 Sand/., 599; Taylor v. Carpenter, 2 Sand/. Ch., 614). To the same effect is the decision of this Court in Congress Spring Co. v. High Rock Spring Co., (45 N. Y., 291), where the rule laid down in Amoskeag Manu/. Co. v. Spear, supra, is cited and enforced. I have examined the evidence contained in the case, and am satisfied that it maintains the findings of fact made by the trial Court. Nor do the cases cited by the learned counsel for the appellant support his contention that error was committed in the conclusions of law depending upon those facts. The defendants' claim in this matter seems to be without merit. They appear to have deliberately invaded the- plaintiff's right, and the latter to be clearly entitled to the relief which has been given to him by the judgment appealed from. I think it should be affirmed with costs. All concur. Judgment affirmed. 390 COURT OF COMMON PLEAS, NEW YORK CITY. liegeman & Co. vs. Thomas & O'Byrne. 64 64 IN THE COURT OF COMMON PLEAS, NEW YORK CITY. In Equity. Hegeman & Co., Appellants, vs. Thomas & O'Byrne, Respondents. Decided 7 June, 1880. Reported 9 Daly, 264. "Eagle and Mortar'" Case. The plaintiff had a right of trade-mark in a symbol -which consisted of an eagle with outstretched wings, perched on a mortar, in which rested a pestle, which device was used upon labels for medicinal purposes and other articles. Held: That the use of this symbol by the defendant, as a prominent feature of labels for similar preparations and articles, was an infringement of the plaintiff's rights, although another name appeared conspicuously upon such labels instead of the name of the plaintiff, and notwithstanding the fact that symbols of a similar nature were shown to be in general use by druggists and apothecaries for purposes of ornament. Appeal from the judgment of this Court, entered upon findings of a Judge on a trial without a jury. JUNE, 1880. 39I 64 Hegeman & Co. vs. Thomas & O'Byrne. The action was brought to restrain an alleged infringement by the defendant of a right of trade-mark claimed by the plaintiff. The facts are stated in the opinion of Larremore, J. Upon the trial before the Court without a jury, the Judge found for the defendant, and directed that the complaint be dismissed upon the merits, and judgment for the defendant was entered upon his find- ings. Geo. F. Setts, for appellant. James M. Fisk, for respondent. Larremore, J. : It was not disputed upon the trial that the firm of which William Hegeman was a member, had for many years used as a symbol or trade-mark upon the label affixed to its preparations "an eagle with outstretched wings, perched upon a mortar in which rested a pestle." Nor was it denied that in March, 1878, the corporation of Hegeman & Co., the plaintiff, was formed pursuant to the statute in such case made and provided, and that it acquired by sundry assignments all the property and effects of said firm, including the good-will of said firm, and all its right, title interest in and to all trade-marks, preparations, labels and proprietary interests belonging to said firm. It also appeared that said trade-mark was recorded in the Patent- Office of the United States pursuant to law, and duly registered therein, whereby the plaintiff claims a right to the exclusive use of the same for the period of thirty years, from December 4, 1877, the date of such registration. The plaintiff in its complaint alleges that the defendant, know- ing the premises and in utter disregard thereof, has wrongfully and fradulently prepared and offered for sale medicinal preparations and other articles with intent to deceive and defraud the public, and the buyers and consumers thereof, and has caused to be attached thereto, a label very similar to the plaintiff's, and con- taining thereon an imitation of its trade-mark, for which it asks damages and prays an injunction. The defendant claims that plaintiff never had any exclusive right to said trade-mark, as the 392 COURT OF COMMON PLEAS, NEW YORK CITY. Hegeman & Co. vs. Thomas & O'Byrne. 64 same had been and was in general public use by druggists prior to such registration; that on or about February 24, 1876, the said firm of Hegeman & Co., sold and assigned to one Joseph H. Collins the drug store owned by said firm, at No. 399 Broadway, including the fixtures, and the right to sell medicines and pack- ages bearing the alleged trade-mark ; and that the defendant has succeeded to and become lawfully possessed of all the rights of said Collins in the premises. Issues were joined and tried, and the complaint was dismissed. Judgment was rendered in defend- ant's favor, and plaintiff appeals. The learned Judge who tried the cause placed his decision squarely upon the ground that there was no simulation of the trade-mark, and consequently that there was no attempt or design to deceive the public on the part of the defendant. He bases his conclusion upon Singer Manuf. Co. v. Wilson, (16 Moak Eng., 846, 847), and deduces therefrom the proposition that by reason of the conspicuousness of Collins' name upon the labels affixed to his preparations no one could be misled or induced to believe that a sale of another article or preparation was intended. The case upon which he relies was reversed by the House of Lords (38 Law T. Rep., 303), and the question involved is relegated to the au- thorities by which we have hitherto been controlled. These are so numerous and so well understood that the mere citation of a few of them will suffice for our present purpose. Witherspoon v. Currie, 5 H. of L., 508; Rose v. Loftus, 38 Law T. Rep., 409; Millington v. Fox, 3 Mylne 6° C, 338; Lea v. Wolf, 13 Abb. Pr. U. S., 390; Colman v. Crump, 70 N. Y., 573. Independent of plaintiff's right acquired by the registration, how stand the facts as disclosed by reputable witnesses on the trial? The plaintiff's testimony shows that for many years the symbol hereinbefore described had been used by the firm of Hege- man ■& Co., or its assigns, as a trade-mark in nearly all their preparations. Collins, in his testimony, assumes this fact, and claims an assignment of the trade-mark for his benefit. But the sales and assignment to him conveyed no such right. The subse- quent user by him and his vendee derives no warrant of authority JUNE, 1880. 393 64 Hegeman & Co. vs. Thomas & O'Byrne. from the purchase of the store fixtures and good-will of the premises No. 399 Broadway. Contrasting defendant's testimony with this, the case is shorn of its fair proportions. Admitting that the symbol ornamented the doors of druggists and apothecaries, the question remains, what right had defendant to its use upon the label of his prepara- tions? The line of his testimony in this respect was unsatis- factory. If he had nothing to gain by the use of "an eagle with outstretched wings, perched upon a mortar in which rested a pestle, ' ' why did he use it ? He could have invented and con- structed a new device, to which (as he claims) the name of Joseph A. Collins as an addendum would have been a sure passport to success. Distrusting, however, the use of that name alone as a surety, he employs plaintiff's symbol to further his object. Upon the proofs and specimens presented it is apparent that the defendant has simulated the plaintiff's trade-mark and should be enjoined from its further use, and that the judgment appealed from should be reversed and a new trial ordered, with costs to abide the event. Van Brunt, J. . The finding of the learned Judge who tried this cause in the Court below established a common-law right of trade-mark in the plaintiffs to the symbol alleged to be simulated by the defendants. His finding, however, that the label used by the defendants is in no respects an infringement of the right of the plaintiffs in their trade-mark does not seem to me to be supported by the evidence as presented in the case. As the labels are there shown, the most prominent feature upon both is the eagle with outstretched wings, perched upon a mortar 1 in which rests a pestle, and it is this device which would be the first to attract the attention of any purchaser. Pictures are much longer retained in the mind than words, and a purchaser who had entirely forgotten the words upon a label will remember the device displayed thereon, and seeing the same de- vice upon the label upon an article he will take it for granted that it is the same. 394 COURT OF COMMON PLEAS, NEW YORK CITY. Hegeman & Co. vs. Thomas & O'Byrne. 64 I think that the use of the symbol in the manner in which the defendants make use of it upon their trade-mark is a clear in- fringement of the plaintiff's rights. Judgment should be reversed, new trial ordered, costs to the appellant to abide the event. Judgment reversed, and new trial ordered, with costs to abide event. JUNE, 1880. 395 65 Shaver vs. Shaver, et al. 65 SUPREME COURT OF IOWA. In Equity. Shaver vs. Shaver, et al. Decided 21 June, 1880. Reported 54 Iowa, 208. " Shaver Wagon" Case. TRADE-MARK. 1. Protection of — Jurisdiction. — Courts of Common Law and of Equity will, in the absence of any statute upon the subject, protect the pro- prietor of a trade-mark in its exclusive use. 2. Requisites of. — The exclusive right to a trade-mark is acquired by its use, which the law does not require shall be continued for any pre- scribed length of time. 3. Illegal use of. — The use, by another, of a trade-mark used to indicate the quality of an article sold, though placed on articles of equally good quality, and without any intention to defraud either the proprietor or the public, will be restrained by a Court of Chancery, and this, although it is not copied with the fullest accuracy, if the copy is calculated to deceive and may be taken for the original. 396 SUPREME COURT OF IOWA. Shaver vs. Shaver, et al. 6 5 4. Rules applied. — Where the plaintiff, who was a manufacturer of wagons for sale, had uniformly for some years painted upon the sides of the wagons made by him, the words " Shaver Wagon, Eldora," it was Held, that the painting of the same words upon wagons made and' offered for sale by the defendants, in the same general style as those upon plaintiff's wagons, was an infringement of his rights, which would be enjoined by a Court of Equity. Appeal from Hardin Circuit Court. E. W. Eastman, W. V. Allen and Brown 6° Bindford, for appellants. Porter .&> Moir and Huff & Reed, for appellee. Action in Chancery to enjoin defendants from the use of a trade- mark. Upon the final hearing, a decree was entered granting the relief sought in plaintiff's petition. Defendants appeal. The facts of the case appear in the opinion. Beck, J.: I. Counsel for defendants maintain that the right to the exclu- sive use of a trade-mark, by the person first adopting it, is not recognized by the common law, and that, in the absence of statutes, the Courts will not afford relief to the person injured, by awarding damages for the unauthorized use of the trade-mark, or restrain, by injunction, such use. This position finds no support in the books. For three hundred years the common law has recognized the right of the proprietor of a trade-mark to its ex- clusive use, and has awarded damages for the deprivation of such use. Southern v. How, Popham (King's Bench), 143-4. The right has been, without interruption, recognized and pro- tected by the Courts of England and the United States from that day to the present, in the absence of statutes declaring the exist- ence of such right, or providing regulations for its exercise, and remedies for its deprivation. Many cases involving the subject have been decided by the Courts. They are too numerous to be cited here. For a collection thereof see American Trade-Mark Cases, by Rowland Cox. JUNE, 1880. 397 65 Shaver vs. Shaver, et at. The jurisdiction of Chancery to restrain the use of a trade- mark, without the consent of the proprietor, was first recognized at a later day. In 1742, Lord Hardwicke denied it, (Blanchard v. Hill, 2 Atkyns, 484), but within the last fifty years it has been repeatedly exercised in England and in this country. I have not found an American case denying it. It has been expressly held that the right to the exclusive use of a trade-mark, where statutes exist regulating and protecting it, does not depend upon such statutes. Derrangerv. Plate, 29 Cal., 292; Filley v. Fassett, 44 Mo., 173. Using the language of Ames, Chief Justice, in Barrows v. Knight, 6 R. I., 434, we conclude that "it never could have been a question that a designed imitation by the defendant of the trade-mark of the plaintiff, whereby the former fraudulently passed off his goods in the market as goods manufactured by the latter, and to his injury, would support an action." We may express with equal positiveness the conviction that the rule is firmly settled that Chancery will, in a proper case, by in- junction, protect the proprietor of a trade-mark in its exclusive use. II. Chancery affords protection to the exclusive use of a trade- mark upon the ground of the injury sustained by the proprietor when it is appropriated by another, and of the fraud and decep- tion practiced upon the public. The law will never fail to pro- tect a citizen in the enjoyment of the fruits of his industry and enterprise. When through these he has acquired a reputation which brings him trade and patronage, he is entitled to its bene- fits as fully as to the enjoyment of property acquired in the same manner. The means and instruments he adopts to indicate to the public his place of business and the goods he manufactures and sells, whereby trade is acquired, cannot be appropriated by another. The people who have bought his goods and given him patronage, or who have a knowledge of the reputation he has acquired in his business, and, therefore, desire to purchase the articles he manufactures and sells, ought not to be deceived and induced by fraud to trade with another. Chancery will restrain the injury to the trader and public by such fraudulent acts. 398 SUPREME COURT OF IOWA. Shaver vs. Shaver, et at. 65 III. We will briefly state certain principles and rules pertain- ing to the subject of trade-marks, which, in our opinion, are applicable to the case before us. 2. A trade-mark is a name, sign, symbol, mark, brand, or de- vice of any kind, used to designate the goods manufactured or sold, or the place of business of the manufacturer or dealer in such goods. The exclusive right in a trade-mark is acquired by its use, which the law does not require, shall be continued for any prescribed time. 3. IV. The trade-mark is often intended to indicate the qual- ity of the goods, and it is unlawful to appropriate it to indicate goods of a quality equal to those manufactured or sold by its pro- prietor. Taylor v. Carpenter, n Paige, 292; Coats v. Holbrook, 2 Sandf. Ch. R., 586. V. The use of a trade-mark ignorantly or innocently, with no intention to defraud or deceive the proprietor or the public, will be restrained by Chancery. Millington v. Fox, 3 Mylne 6° Craig, 338; Cartier v. Carlisle, 31 Beavan, 292. VI. In order to authorize the interference of Chancery, it is not necessary that the trade-mark should be copied with the fullest accuracy. An imitation which varies from the original, in some particulars, will be restrained. The rule is, that if the imitation is calculated to deceive and may be taken for the origi- nal, its use will be restrained. Filley v. Fassett, 44 Mo., 173; Boardman v. The Meriden Britannia Co., 35 Conn., 402; Falken- burg v. Lacy, 35 Cal., 52; Woodward v. Lazer, 21 Cal., 448; Seixo v. Provezende, L. R., 1 Ch. App., 192; JVitherspoon v. Carrie, S. R., 5 Eng. and Irish App., 508; Bradley v. Norton, 33 Conn., 157; Davis v. Lendall, 2 R. I, 566. In support of the doctrines we have above stated, see the cases cited in the notes in 2 Hilliard on Torts, p. Ch. 2, et sea. ; 2 Story's Eq. Jurisp. , (Eleventh Ed.), sec. 95 1 ; High on Injunctions, chap. XVI; Addison on Torts, (Fourth Ed.), p. 874, et seq., and many decisions collected in American Trade-Mark Cases, by Row- land Cox. 4. VII. We are now required to determine the facts of the case before us, which we find to be as follows: The plaintiff has been JUNE, 1880. 399 6 5 Shaver vs. Shaver, et al. for many years engaged in the manufacture of wagons at Eldora. His business has never been extensive, and his sales are largely confined to the county in which he lives. The business, for a time, was prosecuted by copartnerships composed of plaintiff and the defendants, his brothers, and another person. Upon dissolution of these copartnerships, plaintiff continued the business and ac- quired all the property of the firm. For several years the plain- tiff conducted the business on his own account, and some time before his brothers had commenced business for themselves, they had been employed by plaintiff. In 1874, plaintiff adopted as>a trade-mark the words, "Shaver Wagon, Eldora," which was at first, with some variation in form, painted conspicuously on all wagons manufactured and sold by him. He adhered to a general style of work and painting, and his trade-mark for the last few years^as been painted upon his wagon in substantially the same form and manner. The defendants, more than two years after they ceased to be copartners of plaintiff, commenced the manu- facture of wagons and painted thereon the identical words used as a trade-mark by plaintiff. They changed somewhat the form of inscribing the words, and painted their own initials near the trade-mark. The wagons in general style, and in painting, re- sembled those manufactured by plaintiff, and were not inferior thereto. They did but little at the business before this suit was commenced, constructing and selling but one or two wagons. We are clearly of the opinion that the trade-mark of plaintiff is used by defendants with so little variation that their wagons would be readily taken to be of the manufacture of plaintiff. The imitation used by defendants, we have no doubt is calculated to deceive customers, and thus defraud them and injure and de- fraud plaintiff. Applying the doctrines we have above announced, we are of the opinion plaintiff has made out a case calling for the interposition of the power of equity to enjoin defendants from the further use of his trade-mark. VIII. It is said that plaintiff is not entitled to the relief he claims, for the reason that defendants, before the suit was com- menced, had made but one or two wagons. But this objection is completely answered by the consideration that defendants, in their 400 SUPREME COURT OF IOWA. Shaver vs. Shaver, et al. 65 pleadings, admit the use of the trade-mark, in the manner we have above stated, and, as we understand the records, have con- tinued to use it since the suit was commenced, and claim that they have a right so to do. They propose to continue its use. Under these circumstances, equity will restrain their further use of plaintiff's trade-mark. IX. The Court below excluded evidence offered by defendants tending to establish the following facts: That the < ' scroll work ' ' upon which plaintiff caused his trade- mark to be painted, was generally used in painting wagons; that plaintiff had never called the words, "Shaver Wagon, Eldora," his trade-mark, and had not instructed his partner to put it on; that the wagon sold by defendants was disposed of without regard to the trade-mark; that the painting of defendants wagons is readily distinguishable from that of the plaintiff's, and that they are different in size; that defendants' wagons were not sold be- cause of any notoriety on account of the trade-mark, and that defendants had not sought to increase their sales by means of the trade-mark. When it is remembered that the gist of the action is the use of plaintiff's trade-mark and not the imitation of the wagons he con- structed; that no formal act or declaration is necessary in order to adopt a trade-mark which rests upon use alone; that if defendants, without fraud and innocently, used plaintiff's trade-mark, when these things are remembered, it will be readily seen that the pro- posed evidence was correctly excluded . It may be further remarked, that if defendants honestly expected no advantage in the sale of their wagons by the use of the trade-mark, they would not have at- tempted to appropriate it, and would not tenaciously cling to its use at the expense of a law suit. If, as they say, it is a matter of so little importance, they have acted a very unwise part in incur- ring so much expense in efforts to establish their right to use plaintiff's trade-mark. In our opinion, the decree of the Court below is in accord with the law and facts of the case. It is, therefore, Affirmed. JULY, 1880. 401 SS Royal Baking Powder Co. vs. McQuade, et al. 66 UNITED STATES CIRCUIT COURT, NORTHERN DISTRICT OF ILLINOIS. Special Term. In Equity.* The Royal Baking Powder Company vs. Peter G. McQuade and Marvin S. Morris. Decided 12 July, 1880. "Royal Baking Powder." Action brought to restrain defendant from using the word "Loyal" to denote a brand of " Baking Powder." Held: 1. That the word "Loyal" was substantially idem saltans with the word "Royal," and when rapidly spoken by people not accustomed to the nice distinction of speech, they might be taken for the same word. 2. The adoption of a label which in colors, in its design and collocation of the letters, and even of the vignette and in all the characters which strike the eye, is so identical with that of the plaintiff, that it confirms the impression which would be created by the use of the general name, or generic term, that there was an intention on the part of the manu- facturer of defendant's goods, to avail himself of the reputation of the plaintiff. *Not reported. 26 402 U. S. C. C. NORTH. DIST. OF ILLINOIS. Royal Baking Powder Co. vs. McQuade, et al. 66 3. The class of persons who would naturally be sent to a grocery store to buy this class of goods, would be such as might be imposed upon readily by the similarity of these two names. 4. Injunction ordered until the hearing of the cause, and until the further order by this Court. This was an action brought to restrain the use by the defend- ants of a label containing the word "Loyal" to denote a brand of baking powder, on the ground that it was a palpable imitation of complainant's trade-mark "Royal." • Opinion. Blodgett, J.. I think that it is very manifest there was an intention on the part of the manufacturer of this, the defendants', powder, to ob- tain the benefit of whatever labor and effort the complainant has used to give reputation and character to his goods. 1. There is the adoption, in the first place, of a word which is substantially idem sonans with the word "Royal." The words are not, of course, precisely the same, but when rapidly spoken by people not accustomed to notice the nice distinctions of speech, they might be taken for the same word. 2. There is also the adoption of a label which in colors, in its design, and collocation of the letters, and even of the vignette, and in all the characters which strike the eye, is so identical with that of the plaintiff, that it confirms the impression which would be created by the use of the general name, or generic term; that there was an intention on the part of the manufacturer of defend-' ants' goods to avail himself of the reputation of the plaintiff. It is true that the defendants have announced on the face of their label that this is not the "Royal," but that is in a place where it would perhaps be the last thing that would be read, and that after the goods had been obtained and paid for, and it is after all a reservation which would avail the defendants nothing. It is an explanation which comes too late in the transaction to really ex- culpate the defendants. The make-up generally of the package is so similar, and the imitation of the name is so similar, as to create naturally, and be calculated to create, the impression upon JULY, 1880. 403 66 Royal Baking Powder Co. vs. McQuade, ct al. people who are not particular in reference to terms, that they were buying the "Royal" when they were buying the "Loyal." 3. The class of persons who would naturally be sent to a gro- cery store to buy this class of goods would be such as might be imposed upon readily by the similarity of these two names. Decree. And now on this day comes the complainant by Dexter, Her- reck & Allen, its solicitors, and moves the Court to grant a writ of injunction pursuant to the prayer of said bill, and thereupon said motion coming on to be heard oh the bill, and affidavits filed herein, and the complainant appearing by its solicitors, and the defendant by Charles E. Pope, his solicitor, and it appearing to the Court that the defendant Morris has been served with notice of said motion, and the Court having heard the arguments of counsel, and being fully advised in the premises, duly order that * * * * an i n j unc tion be awarded to restrain the defendants, Peter G. McQuade and Marvin S. Morris respectively, and each of them and the respective servants, agents and workmen of the said defendants and every and each of them, from affixing or causing to be affixed to any cans, boxes or packages containing baking powder or other compounds manufactured for or bought, procured or sold by them, or otherwise using or employing, or causing, or permitting to be used or employed any label or labels having thereon the word "Loyal," like the labels attached to exhibits "C," "H," and "I," in said bill mentioned, or any label or labels similar to or colorably differing from the labels made or used by the complainant as in the complainant's bill mentioned, or so contrived and prepared as to represent or lead to the belief that the baking powder or other compound manufac- tured or sold by the defendants is the manufacture of the com- plainant; and also from selling, consigning or otherwise dispos- ing of any baking powder, or other compound, in cans, boxes or packages having or bearing thereon any such label or labels as in the said bill mentioned, or any labels only colorably differing from said labels of the complainant, until the hearing of this cause, and until the further order of this Court. 404 COURT OF COMMON PLEAS, PHILADELPHIA. White vs. Schlect. 67 67 COURT OF COMMON PLEAS, PHILADELPHIA. In Equity. White vs. Schlect. Decided 17 July, 1880. Reported 14 Phil., 88. ' 'Drum Collar ' Case. An injunction will be dissolved where the plaintiff has slept upon his rights for more than a year after it was granted, and has not prosecuted the case further. Where the bill disclosed no other title than an assignment to plaintiff of a registered trade-mark, which registry has since been declared void as based on unconstitutional legislation, and the answer sets up a total denial of originality or appropriation by the registered owner, and alleges common use of the symbol for eight years in the same manner by defendants and others, the injunction will be dissolved. Held, that a trade-mark, to be valid, must indicate the true origin or ownership of the goods on which it is used, and that a mere device of of a " drum," without moie to identify it with its proprietor, does not confer on plaintiffs the exclusive right of appropriation, and the bill JULY, l88o. 405 *$'? White vs. Schlect. will be dismissed fov want of title; following Davol Mills, 7 Phila., 253, ' and Dixon v. Guggenheim, 7 Phila., 408. The doctrine of Shcppardv. Stewart, 13 Phila., 117, dissented from. 4. It is the settled doctrine of the Courts of England as well as America's, that a special injunction will be dissolved upon the coming in of an answer or affidavits denying the equities of the bill. Thomas J. Diehl, Esq., for plaintiff. Pierce Archer, Esq., for defendant. Alison, P. J.. A special injunction was granted in this case to restrain the de- fendant in the use of a device or design as a trade-mark, to which plaintiff claimed to be entitled by assignment -to him by Edward J. Frost, who claimed to be the inventor, and to have first appro- priated it to paper boxes, in which were put up for sale paper col- lars, having on the outside a representation of a "drum," which trade-mark was known in the market as indicating the "drum col- lar." This device of a drum constituted the trade-mark, to the exclusive use of which plaintiff claimed to be entitled, and that the right was to him a valuable one, which was infringed by the defendant. The claim of Frost, from whom plaintiff derives title, is made to rest mainly, so far as the right is disclosed by the averments of the bill, upon the registration in the Patent Office of the United States of the said trade-mark, and a certificate issued to him by the Commissioner of Patents, on the 5th day of Decem- ber, 1876, which protected the same for a period of thirty years. The Act of Congress authorizing the issuing of such certificates has, since the granting of the special injunction, been declared to be unconstitutional by the Supreme Court of the United States, and we are therefore to look to the remaining portions of the bill as disclosing grounds for equitable protection by special injunction, in order to properly decide the question which is now before us on bill and answer, on the motion of the defendant to dissolve the special injunction. An examination of the bill discloses no other averment of title, except the alleged assignment of Frost, by virtue of the aforesaid certificate. The claim to priority of invention and appropriation is nowhere distinctly asserted, and rests chiefly 406 COURT OF COMMON PLEAS, PHILADELPHIA. White vs. Schlect. 67 on the inferences to be drawn from the fact, that claiming to be the inventor and appropriator of the trade-mark, the said certifi- cate was issued to Frost in due form of law, which the plaintiff claims established prima facie his right to the exclusive use of said trade-mark. The affidavits of Frost and others, which were considered on the motion for the special injunction, fully warranted the granting of the order, which defendant now claims should be set aside; these affidavits have, however, spent their force, and on the motion to dissolve the injunction on the coming in of the answer, the motion is to be granted or denied upon this ground, or the sufficient or insufficient denial of the equity of the bill; a special injunction being always granted until answer or further order. The answer, after setting up that the only claim of the plaintiff, according to the registered letters, was "essentially of the repre- sentation of a drum," having, no name, description, symbol or letters, indicating the plaintiff or any one else as the owner, pro- prietor or designer thereof, and that all the boxes issued by the plaintiff bear the name of the <" printed in large hollow block numerals. This device had been stamped for many years on hosiery of »a certain grade, and was known and recognized as indicating that the goods so marked were of the plaintiff's manufacture. Before this, the plaintiff had used an eagle and scroll in combination with other numerals as a trade-mark, upon the same grade of hosiery; and the wreath and eagle of the present device, without the numerals '■523," or any other numerals, had been previously used on other grades of its goods. The stamp adopted by the defendant, in alleged imitation of the plaintiff's stamp, consists of an eagle surmounting a double circle or garter, on which are printed the words "extra finish iron frame," and beneath which are the figures "523," printed in large hollow block numerals, of the size and description used by the plaintiff, and occupying the same position with reference to other parts of the device. This stamp the defendant has placed upon hosiery goods made by it for the purpose of imitating the plain- tiff's stamps, and in order that such goods might be supposed to be of the plaintiff's manufacture; and it was found by the Judge that the plaintiff's customers had been misled and deceived there- in - . The eagje and garter were used by the defendant before the alleged trade-mark of the plaintiff was adopted; and, at the argu- ment, the plaintiff made no claim to the exclusive use of them, when not combined with the numerals "523." 420 SUPREME COURT OF MASSACHUSETTS. Lawrence Manufacturing Co. vs. Lowell Hosiery Mills, it al. 69 The only question presented upon this report, therefore, is- whether the plaintiff's stamp, including the figures, constitutes such a trade-mark as the law will protect. The statutes of this Commonwealth protect a person who uses any peculiar name, let- ters, marks, devices or figures, upon an article manufactured or sold by him, to designate it as an article manfactured by him. Gen. Sts., ch. 56, sec. 1. It has been said that there can be no ex- clusive right to use marks, figures and letters which are intended merely to indicate the quality of the fabric manufactured, as dis- tinguished from those marks which are intended to indicate its origin, because one has no right to appropriate a sign or symbol or mark, which, from the nature of the fact it is used to signify, others may use with equal truth, and therefore have an equal right to employ for the same purpose. Manuf. Co. v. Trainer, 101 U. S., 51. And in Canal Co. v. Clark, 13 Wall., 311, it was de- clared by Mr. Justice Strong, that no one can claim protection for the exclusive use of a mark which would practically give him a monopoly in the sale of any goods other than those of his own manufacture. See also Gilman v. Hunnewell, 122 Mass., 139. Letters and figures, when used only for the purpose of denoting quality, are from the very nature of the use incapable of exclusive appropriation. These considerations would be decisive, if the plaintiff claimed the exclusive right to the numerals "523," when used only to in- dicate the quality, and not with reference to the origin of the goods. But such is not the plaintiff's position. Its claim is that the purpose of using these figures in connection with the other parts of its trade-mark, was to aid the buyer in distinguishing its goods from similar goods made and sold by others. 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 curious 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 produc- ing designs, which the increasing variety of modern trade-marks shows is not wholly neglected, and it maybe that even numerals or SEPTEMBER, l88o. 42 1 69 Lawrence Manufacturing Co. vs. Lowell Hosiery Mills, et al. letters of the alphabet can be combined and printed in such unusual and peculiar forms, that the result would be quite sufficient for use as a trade-mark. The difficulty of giving to bare numbers the effect of indicating origin or ownership, and of showing that the numbers used were originally designed for that purpose, was recognized in Boardman v. Meridcn Britannia Co., 35 Conn., 402. But it was said in that case, that, if once shown to have been used for that purpose, and to have had that effect, it would not be easy to assign a reason why they should not receive the same protection as trade-marks. The numbers in that case were, however, associated with the name of the plaintiffs, and with the form, color and general arrangement of the labels used, and were held by virtue of that connection to form an important part of the trade-mark itself. See also Gillott v. Esterbrook, 48 N. Y., 314; Glen & Hall. Manuf. Co. v. Hall, 61 N. Y., 226; Kinney v. Allen, 1 Hughes, 106; Ransome v. Bentall, 3 L. J. (JV. S.), Ch. 161. In coming to this conclusion, the Judge who heard the present ■case found that the plaintiff adopted and used the numerals "523" as part of its trade-mark; and this finding is supported by the evidence. It appears that these figures were selected arbi- trarily; that they were of unusual and distinctive form; that they were added to the original device, consisting of the eagle, the wreath and the plaintiff's name, at the time when the word " trade- mark" was also added; and that the whole, so composed, has been used as one trade-mark ever since. This mark was recog- nized and known as the plaintiff's mark, and goods so marked were described and called for as "523's." The defendant's imitation was produced by using the same figures, printed in the same style, and placed as to the other parts of the device in the same relative position as the plaintiff's. These numerals constituted one of the most prominent features in the plaintiff's design, and, when used in connection with the rest of the defendant's mark, were calculated to aid in deceiving the public. It is not necessary that the resemblance produced should be such as would mislead an expert, or such as would not be easily 422 SUPREME COURT OF MASSACHUSETTS. Lawrence Manufacturing Co. vs. Lowell Hosiery Mills, et at. 6& detected if the original and the spurious were seen together. It is enough that such similitude exists as would lead an ordinary purchaser to suppose that he was buying the'genuine article and not an imitation. McLean v. Fleming, 96 U. S., 245; Gorham Co. v. White, 14 Wall., 511; Metzler v. Wood, 8 Ch. D., 606. The imitation in this case accomplished the result intended; and the entry must be Decree for the plaintiff. OCTOBER, 1880. 423 70 Dreydoppel vs. Young, et al. 70 COURT OF COMMON PLEAS, PHILADELPHIA In Equity. Dreydoppel • vs. Young, et al. Decided 2 October, 1880. Reported 14 Phil., 226. "Dreydoppel' s Borax Soap" Case. 1 . The commercial name of an article which every man has a right to make and sell, cannot be appropriated as a trade-mark. 2. But when coupled with other distinctive features, the whole may be so appropriated. 3. Printed copies of the medals awarded by United States Centennial . Commission, and the French Republic, with the words Dreydoppel's Borax Soap printed underneath, held to be as a whole, a valid trade- mark. 4. A man cannot openly appropriate and sell in the market, the commercial reputation which another has acquired by his industry and skill. 424 COURT OF COMMON PLEAS, PHILADELPHIA. Dreydoppel vs. Young, et al. 70 5. Even if the resemblance between the plaintiff's wrappers and those used by the defendants was accidental, the plaintiff would be entitled to protection against its injurious results to his trade. 6. The former practice of the Courts of Chancery in England of dissolving an injunction upon the filing of an answer denying the equity of the bill, was abolished by the Statute 15 and 16 Vict. ch. 86, sec. 59, which enacted that thereafter, the' answer should be regarded merely as an affidavit, and that affidavits may be recorded and read in opposition thereto. Motion for a Special Injunction. William D. Wither all, Esq. , for plaintiff. E. P. Smithers, Esq., for defendant. Thayer, P. J.: 1 . It is true that no one can appropriate as a trade-mark the com- mercial name of an article which every man has the right to make and sell. 2. The plaintiff, therefore, has no exclusive right to the name "Borax Soap." 3. He has however, acquired a right to the trade-mark as a whole which he has adopted, consisting of printed copies of the medals awarded him by the United States Centennial Commission, in 1876, and the French Republic at the Exposition Universelle Internationale, held at Paris in 1878, with the words "Dreydop- pel's Borax Soap" printed underneath, and he is entitled to pro- tection against such a fraudulent imitation of his wrappers and labels as will enable the defendants to deceive the public and in- jure his business. It is too plain to admit of doubt that the de- fendants in the present case have studiously copied the plaintiff's wrappers, not only their general design, arrangement and appear- ance, but their very phraseology, and to increase the counterfeit resemblance they have added devices which may be readily mis- taken for the medals of the plaintiff by unlettered persons, or persons not making a careful and critical comparison between the two. There is such a general resemblance of forms, words, ar- rangements, symbols and accompaniments, that the one wrapper OCTOBER, 1880. 425 70 Dreydoppel vs. Young, et al. might easily be mistaken for the other. In its general appearance the one is a servile imitation of the other, the differences being merely colorable, and evidently designed to evade the conse- quences of the unlawful infringement of the plaintiff's rights, and to preserve a sufficient individuality to enable the defendants to reap the benefit of their fraud. 4. It is distinctly proven by a number of witnesses that in point of fact the fraud has been successful, and that the defendants' soap, which is ordinarily sold for a less, price than the plaintiffs, has, by means of this fraudulent imitation of the wrapper, been sold by grocers as the plaintiff's soap, and for the same price. Upon, such dishonest practices a Court of Equity will lay its strong hand, that those who are guilty of them may learn -that, although in their opinion there may be no such thing as a morality in trade, a man cannot openly appropriate and sell in the market the com- mercial reputation which another has acquired by his industry and skill. 5. Even if the resemblance between the plaintiff's wrappers and those used by the defendants was accidental, the plaintiff, accord- ing to all the decisions, would be entitled to protection against its injurious results to his trade. But there are internal evidences of the most convincing character that the resemblance is by no means accidental, but that -it is an intentional imitation, carefully de- signed, and worked out with much ingenuity. The only wonder is that the defendants should have the hardihood to deny it delib- erately in their answer. But their answer upon such an applica- tion as this is only to be regarded as an affidavit, and entitled to be considered along with the other evidence in the cause. 6. The former practice of the Courts of Chancery in England, of dissolving an injunction upon the filing of an answer denying the equity of the bill, was abolished by the Statute 15 and 16 Vict., c. 86, s. 59, which enacted that thereafter the answer should be regarded merely as an affidavit of the defendant, and that affi- davits may be received and read in opposition thereto. The Supreme Court of this State has decided that the new practice in- troduced in England by the statute was adopted -in this State by 426 COURT OF COMMON PLEAS, PHILADELPHIA. Dreydoppel vs. Young, tt al. "7 O virtue of rule 88 of the equity rules adopted in 1865. The Warren. cV Franklin Railroad Co. v. The Clarion Land Co., 4 P F. Smith, 28. An interlocutory injunction is awarded to restrain the defend- ants from the use of the wrappers complained of, or of any other wrappers or labels having a suhstantial resemblance in words, de- sign, arrangements, devices, or general appearance to those used by the plaintiff. NOVEMBER, 1880. 427 7 1 Leidersdorf, et al. vs. Flint. 71 SUPREME COURT OF WISCONSIN. In Equity. Leidersdorf, and another vs. Flint. Decided November, 1880. Reported 50 Wis., 401. "Nigger Hair Smoking Tobacco" Case. Trade-Mark. (1) Rule as to demurrer to the complaint in actions, to restrain use of trade -mark. (2) What relief may be demanded in such cases. 1. In an action to restrain defendant from using a trade-mark alleged to have been devised by him in imitation of that of plaintiffs, and to be in fact deceptive to purchasers, etc., if fac similes of the two trade- marks are annexed to the complaint, it will not be held, on demurrer, that the one is not sufficiently similar to the other to mislead, and to constitute an infringement, unless the dissimilarity is so marked as to leave no doubt in the mind of the Court; but the question of infringe- ment will be reserved until the coming in of the proofs. 428 SUPREME COURT OF WISCONSIN. Leidersdorf, et al. vs. Flint. 7* X 2. In such an action, plaintiff may without misjoinder, ask for an accounting as to profits and for damages. Appeal from the County Court of Milwaukee County. The action is brought to restrain the infringement by defend- ant of plaintiff's trade-mark, and for damages. The parties are dealers in tobacco in the City of Milwaukee. 'It is stated in the complaint that the plaintiffs and their predecessors, to whose right they have succeeded, for eleven years last past "have manufactured, and sold a special article of smoking tobacco, put up in packages of a certain form, in paper wrappers of a particular color and mark, and stamped with the words and name 'Nigger -Hair Smok- ing Tobacco,' and otherwise distinctively marked and designated as hereinafter set forth; that during all the said period of eleven years they have exclusively used and are now using, and had and still have the right so to use, the said name and mark hereinafter more particularly described as a trade-mark for such smoking to- bacco; and that no other person than the said firm has at any time had the right to make use thereof, or of any like mark or name, or of any near resemblance thereto." Then follows a par- tial description of the trade-mark. A fac simile of it is annexed to and made a- part of the complaint. It is impracticable to re- produce it here, and it is unnecessary to give a minute description of it. It is sufficient to state that the most marked feature of it is a representation of the head of a negro surmounted with a copious crop of wool, and having a large ring pending from the nose and another from the ear. Below the figure is the name of the brand, and the firm-name and residence of the manufacturers. The complaint further alleges that "said smoking tobacco is known to the trade, and to the public, and to the buyers and con- sumers thereof, by the name of 'Nigger-Hair Smoking Tobacco,' and by the plaintiff's own peculiar device and trade-mark afore- said; that the said tobacco is a low-priced tobacco, and is to a very large extent bought and consumed by a class of people who cannot read, and whose necessities and manner of living do not require them to practice more than ordinary caution when pur- NOVEMBER, 1880. 429 "7 1 Leideisdorf, el a/, vs. Flint. chasing the commodities most frequently procured; and to this class of people the said tobacco has become known and is easily recognized, largely by reason of the said peculiar and distinctive trade-mark aforesaid." It is then charged that in 1878 the de- fendant devised a trade-mark in imitation of the plaintiff's said mark, which he placed upon the wrappers of an inferior quality of tobacco manufactured by him, and which so closely resembled the plaintiff's trade-mark that purchasers were deceived thereby, and bought the defendant's tobacco when they supposed they were buying the genuine "Nigger Hair." This alleged imitation rep- resents the head of an Indian with a ring in his ear, but none in his nose. Under the vignette are the words "Big Indian" instead of "Nigger Hair," printed in similar type, and the name and residence of the manufacturer. A fac simile of the defendant's mark is also annexed to the complaint, and marked "Exhibit B." That of the plaintiffs is referred to as "Exhibit A." The complaint then proceeds as follows: "And the plaintiffs further say they are informed and believe that said defendant so as aforesaid continued to use said imitation of plaintiffs' trade-mark, until, believing he could retain and keep the trade so as aforesaid already attracted and diverted to him by means of further using a less close and striking resemblance to plaintiffs' trade-mark, he artfully contrived and executed certain changes in his said imitation of plaintiffs' trade-mark, so as to be able to assert the pretence and excuse that he had ceased using the imitation shown at Exhibit B, whereas, in fact, the said modifi- cation and changes were not in the chief characteristic of said label, and the same still presents to the public the impression and idea that the same is the badge or mark of the plaintiffs so as aforesaid described, and now does strongly resemble the plaintiffs' trade-mark in all its chief and most essential features; a copy of which said second device of the defendant, and a specimen of the same, together with its paper wrapper, is hereto attached and marked 'Exhibit C "And the plaintiffs further allege that the imitations aforesaid are calculated to deceive the general public, and especially the 43° SUPREME COURT OF WISCONSIN. Leidersdorf, et al. vs. Flint. "? 1 small purchasers and consumers of tobacco, and that the form, size, color and devices of the packages of tobacco of the defend- ant are intended to be and are in such imitation of and resem- blance to those of the plaintiffs, as are contrived and calculated to, and actually do, mislead the public in that regard, and cause among consumers the idea that the two articles of tobacco are identical, and are manufactred by the plaintiffs. ' < And the plaintiffs further say that for several months last past, beginning at a date which is unknown to them, the defendant has manufactured and sold smoking tobacco in packages of the kinds above described, and has, as they are informed and believe, put forth the same in the market, and has endeavored to procure others to sell and deal in the same, as the identical 'Nigger-Hair' tobacco of the plaintiffs. And the plaintiffs are informed and believe that in many instances the said tobacco of the defendant has been sold as and for the said 'Nigger-Hair' tobacco, on account of the simi- larity of the appearance of the packages and marks as hereinbefore stated." Exhibit C is very much like Exhibit B, except that it displays no ring in the ear of the Indian, and the words "Big Indian" thereon are placed in a different position. The prayer of the complaint is for an injunction, for an ac- counting as to profits, and for damages. The defendant demurred to the complaint on the grounds—/™/, that it does not state facts sufficient to constitute a cause of action; and second, that several causes of action are improperly united therein. The Court over- ruled the demurrer, and the defendant appealed from the order. For the appellant, there was a brief by Jenkins, Elliott &f Wink- ler, and oral argument by Mr. Jenkins. For the respondents, there was a brief by Carpenter & Smith, and oral argument by Winfield Smith. Lyon, J.: Doubtless if the fac similes of the various trade-marks of the parties are disregarded, the complaint states a cause of action in NOVEMBER, 1880. 43 1 "7 1 Leidersdorf, et al. vs. Flint. equity for an injunction to restrain the infringement of the plain- tiffs' trade-mark. This is not controverted. But it is urged in support of the demurrer, that, inasmuch as these marks are at- tached to and really made a part of the complaint, they cannot be disregarded, but have the force and effect of averments; and that they show on their face, notwithstanding averments to the contrary, that no one could be misled, as charged, by the marks used by the defendant. 1. It may well be that two trade -marks are so entirely dissimilar that a Court can properly say on demurrer that one is not and cannot be an infringement of the other, and this, although the pleading demurred to avers that it is an infringement and misleads the public. But to justify such a ruling the dissimilarity should be so marked as to leave no doubt in the mind of the Court. We do not think this is such a case. Although in several par- ticulars there are differences between Exhibit A on the one hand, and Exhibits B and C on the other, (and this is especially so as between Exhibits A and C), yet there are some points of resem- blance common to all of them. By a mere inspection of them we are not prepared to determine whether B and C, or either of them, so nearly resemble the plaintiffs' trade-mark that ordinary purchasers, proceeding with ordinary caution, are likely to be misled thereby. This, we understand, is the test of infringement in such cases. Much less are we prepared to hold that there is no such resemblance in the face of the positive averments in the com- plaint that there is. From an examination of some of the cases we are led to believe that the usual practice is to reserve the ques- tion of infringement until the coming in of the proofs. In cases of any doubt this seems to be the better and safer practice; for the evidence will undoubtedly throw more or less light on the question. We have concluded to adopt that course in this case. Hence, without intimating any opinion as to whether the fdc similes of defendant's trade-marks, considered alone, are or are not infringements of plaintiffs' trade-mark, we hold, for the pur- poses of the demurrer; that the complaint states a cause of action in equity. This leaves the question of infringement to be deter- 432 SUPREME COURT OF WISCONSIN.- Leidersdorf, et al. vs. Flint. "7 1 mined as an original question upon the pleadings and proofs, in case the defendant answers denying the infringement. The other cause of demurrer assigned, to wit, the improper joinder of several causes of action, was not argued by the learned counsel for the defendant. 2. It is quite apparent that there is no such misjoinder in the complaint. By the Court: The order overruling the demurrer is affirmed. NOVEMBER, l88o. 433 72 Hewer vs. Dannenhoffer, ct al. 72 COURT OF APPEALS, STATE OF NEW YORK. In Equity. John N. Hewer, Appellant, 'OS. Nicholas Dannenhoffer, et al., Respondents. Decided November, 1880. Reported 82 N. Y., 499. "Si lex" Case. The parties hereto were formerly partners in the business of manufacturing glass chimneys for lamps, and they adopted the word "Silex" as a trade-mark. The firm was dissolved in June, 1877; the defendants sold to the plaintiff their interest in the real estate used for the busi- ness, and in certain specified personal property connected with it. Nothing was said at the time about the good-will of the business, or the trade-mark, and there was no reference to it in the bill of sale. Thereafter the plaintiff continued the business at the same place, using the same trade-mark. In October, 1877, defendants commenced and thereafter carried on the same business in the same city, using the same trade-mark. In an action to restrain such use, Held: That assuming the word "Silex" could be used as a trade-mark, and that the firm while it existed, had the exclusive right so to use it, such exclusive right was not acquired by plaintiff, and the action was not 28 434 COURT OF APPEALS, STATE OF NEW YORK. Hewer vs. Dannenhoffer, et al. "7 3 maintainable; that after the dissolution, either of the late partners could use it until in some way he had divested himself of that right; that as the trade-mark was not in its nature local, it did not pass as an incident to what was sold, that it was incumbent upon the plaintiff to show himself vested by some agreement, with the exclusive right to use it, and that this he had failed to do. Congress and Empire Spring Co. v. High Rock Spring Co., (45 N. Y.), dis- tinguished. Appeal from order of the General Term of the City Court of Brooklyn, reversing a judgment in favor of defendants, entered upon a decision of the Court on trial at Special Term, and grant- ing a new trial. This action was brought to restrain defendants from the use of the word "Silex" as a trade-mark and for damages, etc. The facts sufficiently appear in the opinion. John O' Byrne, for appellant. The word "Silex" is the proper subject for a trade-mark to designate the origin and ownership of glass chimneys. {Burnett v. Phalon, 3 Keyes, 594; 5 Abb., \N. Y.~\, 212; Schneitzer v. Atkins, 19 Law Times, [iV. S.~], 6; Prot v. Cabridens, 20 Ann. de la Pro., 369; Coddington on Trade- Marks, 449; Godillot v. Hazard, 12 J. & S., 427-431; Rillett v. Cartier, n Abb., \N. S.~\, 186). The trade-mark passed, without express mention, with the assignment of the business. {Leather Cloth Co. v. Ameri- can Leather Cloth Co., n Jurist, \N. S.~\, 513; Congress <&» Em- pire Spring Co. v. High Rock Congress Spring Co., 45 N. Y, 291; Shipwright v. Clemens, [1871], 19 Wend., 599; Dixon Crucible Co. v. Guggenheim, 7 Phila., 408; Lockwoodv. Bostwick, 2 Daly, 521; Ainsworth v. Walmsley, 14 Law Times, \JSf. 5.], 220; Hud- son v. Osborne, 39 Law Jour., \_N. S.~\, Ch. 79; Hazard v. Cas- well & Massey, Daily Reg., Dec. 16, 1878; Glen &> Hall Manuf. Co. v. Hall, 61 N. Y, 226). When defendants relinquished all claim to the Long Island Flint Glass Works, they relinquished all right to that which particularly designated its products, which the law will not permit them to carry away and exercise in another NOVEMBER, 1880. 435 7 2 Hewer vs. Daimenhoffer, ct al. place. {Samuel v. Berger, 24 Barb., 163: Browne on Trade- Marks, sec. 361, et sea). Geo. H. Fisher, for respondents. The trade-mark in suit is not a proper trade-mark. {Bump's Law of Trade-Marks, 347 ; Webster Diet., titles Silex, Silicia, Silicic Acid, Glass; American Cyclopcedia, title Glass; Law's American Dig., 1789-1862, 686; Browne's Law of Trade-Marks, 102-19 1 ; U. S. Act concerning Trade-Marks in U. S. R. S., or Cox s Am. Trade- Mark Cases, or Bump' s Trade- Marks ; 1 Phil- lip's Ev., \_4th Am. Ed.~\, 626). Words may not be appropriated by one to mark an article of his manufacture, when they may be used truthfully by another to inform the public of the ingredients which make up an article made by him. {Caswell v. Davis, 58 A'. Y., 223, 2.34). Earl, J.: For over three years prior to June, 1877, the plaintiff and de- fendants, under the firm name of Hewer & Dannenhoffer, carried on the business of manufacturing glass chimneys for lamps, in the City of Brooklyn. Their place of business was called "The Long Island Flint Glass Works," and they adopted the word " Silex" as a trade-mark for the designation of their goods. In June, 1877, the firm was dissolved and the defendants sold to the plaintiff their interest in the real estate whereon the busi- ness was conducted, and also in certain personal property con- nected with the business; and thereafter the plaintiff continued the same business at the same place, using the same trade-mark. In the month of October, thereafter, the defendants commenced to carry on the same business in the City of Brooklyn, and they used the same trade-mark for the designation of the goods manu- factured by them. The plaintiff claiming, that at the time of the sale to him of the real estate and personal property, as above mentioned, he ac- quired the exclusive right to the trade-mark which had been used by the firm, commenced this action against the defendants to re- cover damages for the wrongful use of the trade-mark by them, 436 COURT OF APPEALS, STATE OF NEW YORK. Hewer vs. Damienhoffer, et al. 7*S and to restrain its further use. The Court, at Special Term, de- cided the case in favor of the plaintiff; but, upon appeal, the General Term reversed the judgment of the Special Term, and granted a new trial on the ground that the exclusive right to the use of the trade-mark had not been acquired by the plaintiff, and this appeal is from the order granting the new trial. I will assume, -for the purposes of this case, ' that the word "Silex" could be used as a trade-mark, and that the firm of Hewer & Dannenhoffer, while it existed, had the exclusive right to use it; and yet I am of opinion that the judgment at Special Term was properly reversed, for the reasons given in the opinion pronounced at the General Term. After the dissolution of the firm, either one of the persons who constituted the firm could use the trade-mark, until in some way he divested himself of the right to use it. It is undoubtedly true that the defendants could, by agreement, vest the exclusive right to use it in the plaintiff. The question is whether they did. And this question must be determined upon the facts found at Special Term, or upon facts not disputed. There was a deed of real estate to the plaintiff, and there was a bill of sale specifying the personal property sold to the plaintiff. It was found that nothing was said at the time of the sale to the plaintiff about the good-will of the business or about the trade-mark, and there was no reference to the trade-mark in the bill of sale; and there was no agreement on the part of the defendants that they would not engage in manufacturing the same kind of goods, or that the plaintiff should have the exclusive right to continue in Brooklyn the business before carried on by the firm. The deed and bill of sale showed what the defendants sold to the plaintiff. There is no finding that they were executed or taken by the plaintiff in consequence of any fraud or mistake, and hence they must be held to embody the contract between the parties. {Pickering v. Dowson, 4 Taunt.,- 779; Munford v. Mc- Pherson, 1 Johns., 414; Durgin v. Ireland, 14 TV. Y., 322; Pol- len v. Le Roy, 30 Id. , 549). A trade-mark is a specie of property which may bt; sold or transmitted by death with the business in which it has been used. NOVEMBER, l88o. 437 *7*S Hewer vs. Dannenhoffer, et al. {The Leather Cloth Company v. The Am. Leather Cloth Company, 4 De Gey, J. 6f S., 137; »S- C. , 11 House of Lords Cases, 523; The G. & H Manuf. Co. v. Hall, 61 N. ¥., 226). There was no finding and no evidence that the defendants intended by their sale to the plaintiff to divest themselves of their property in this trade-mark. This property did not pass as incident to what was sold. It was no necessary part of what was sold. The trade- mark was not in its nature local. It did not import that the goods upon which it was placed were manufactured or produced in any particular locality. It could truthfully be used upon goods manufactured anywhere, and in these respects it was unlike the trade-mark under consideration in the case of The Congress and Empire Spring Co. v. The High Rock Congress Spring Co. , 45 (N. Y., 291). Under the circumstances of this case it was incumbent upon the plaintiff to show that the exclusive right to use the trade-mark was actually, by agreement, vested in him, and this he failed to show. The order appealed from should, therefore, be affirmed, and judgment absolute rendered against the plaintiff with costs. All concur. Order affirmed and judgment accordingly. 43§ COURT OF APPEALS, STATE OF NEW YORK. Hier, et al. vs. Abrahams, et al. "?& 73 COURT OF APPEALS, STATE OF NEW YORK. In Equity. John P. Hier, et al., Appellants, Abraham Abrahams, et al., Respondents. Decided 16 November, 1880. Reported 82 N. Y., 519. "Pride Cigar" Case. 1. Trade-marks may consist of pictures, symbols, or a peculiar form or fashion of label, or they may consist simply of a word or words. i. Where the trade-mark is of the first kind, to constitute an infringement, there must be such an imitation as to amount to a false representation, liable to deceive the public. 3. Where, however, the trade-mark consists of a word, it continues to be the distinguishing mark of the manufacture to which it is applied, in whatever form it is printed or represented, and its use by another, in any form, applied to similar articles, is unlawful and may be restrained. 4. The use of the word by another is not justified, although used in con- nection with different words from those in connection with which it is ured by the party who has appropriated it as a trade-mark. NOVEMBER, 1880. 439 73 Hier, et al. vs Abrahams, et al. 5. To entitle a party to restrain another from continuing the unlawful use of his trade-mark, it is not essential to show an actual intent to defraud. 6. Nor is it essential that the party shall first establish a legal right to the trade-mark, in an action at law. Plaintiffs, for three years before the commencement of -this action, had adopted and used the word "Pride" as a trade-mark in the manufac- ture and sale of, and to designate their cigars. Defendants, with knowledge of this, used the same word on the labels and boxes of cigars manufactured by them. Held: That said word, as applied to cigars, was arbitrary, not descriptive of the article, and one which could lawfully be appropriated as a trade-mark, and that plaintiffs were entitled to an injunction restraining its use by defendants. Also Held, that as the infringement charged was the appropriation of a word, not an imitation of a symbol or label, it was no defence that defendant's labels did not resemble those of plaintiffs. Appeal from the order of the General Term of the Supreme Court, in the Fourth Judicial Department, reversing a judgment in favor of plaintiffs, entered upon a decision of the Court on trial at Special Term, and granting a new trial. This action was brought to restrain the defendants from in- fringing upon plaintiff's alleged right to the use of the word "Pride" as a trade -mark, a'nd for damages, &c. The facts are set forth sufficiently in the opinion. John C. Hunt, for appellants. In equity, aside from the statute, plaintiffs are entitled to the relief asked for, (4 Add. [M. 5.], 410; 48 iV. Y, 374; 61 Id., 226; 2 Daly, 521 ; 49 Bard., 588 ; 51 N. Y, 189; 45 Id., 291; 1 Weekly Dig., 529 ; 8 Id., 514 J 7 Aid., N. C, 17 ; 21 Aid. Law Jour. 340; s Weekly Dig., 283). Defendants are precluded by admissions in the answer, from denying that plaintiffs had a prior adoption of the word "Pride." (38^. Y, 28). W. E. Lansing, for respondents. Protection to trade -marks rests upon the principle of prevent- ing a fraudulent appropriation of a name, by which only the pro- 44-0 COURT OF APPEALS, STATE OF NEW YORK. Hier. et al. vs. Abrahams, et al. 73 ducts or manufacture of another is designated, and of shielding the public against deception. {Wolfe v. Burke, 7 Lans., 155). To entitle a party to relief, the resemblance must amount to a false representation of facts indicated by the genuine mark ; that is, of the manufacture or proprietorship of the article. (Popham v. Cole, 66 N. K, 75; Amoskeag Manuf. Co. v. Spear, 2 Sandf., 599). Where the points of difference are so promi- nent and striking as to produce the impression that the articles are different, an action for the injunction cannot be maintained. (Talcott v. Moore, 6 Hun., 106; 2 Sandf. Ch., 622; Howard' 's App. Cases, 547 ; 66 N. Y, 69). The Court is not bound to interfere when ordinary attention will enable purchasers to dis- criminate between the trade-marks used by different parties. (2 E. D. Smith, 387; 25 Barb., 79; Upton's Trade-Mark, 203, 4, 8, 14; 47 N. Y, 104). A party cannot appropriate a word in common use as his trade-mark so as to exclude others. (18 How. Br., 64 ; 7 Lans., 151 : 56 N. Y, 115 ; 57 Barb., 524; 6 Hun, 106 ; Caswell v. Davis, 58 N. Y, 234, 235). A trade-mark is protected only when it denotes the origin and the manufacture of the article ; that is, that the origin and manufacture is in the plaintiff. (17 Barb., 608; T Id., 226; Upton's Trade-Marks, 100, 177; Fetridge v. Wells, 13 How., 385). When a trade- mark does indicate the origin and manufacture of the article, the party must have the exclusive right to use the same. (Upton's Trade-Marks, 23, 98, 99, 209 ; 2 Batb. Ch., 103 ; 2 Sandf. Ch., 599). Plaintiff's right being disputed, the application could not be allowed until they had established ti legal right in an action at law. (2 Sandf. Ch., 599, 622 ; 3 Abb. Pr., 166; 13 How. Pr., 342; 2 Barb. Ch., 101 ; 3 Abb. Pr., 318 ; 18 Barb., 64; 24 Id., 163)- Rapallo, J.. The plaintiffs, composing the firm of Hier and Aldrich, and be- ing engaged in the business of manufacturing cigars in the city of Syracuse, claim to have adopted as a trade-mark, to be placed on boxes of cigars manufactured by them, the word "Pride," and that this trade-mark was infringed by the defendants, who were NOVEMBER, 1880. 441 73 Hier, et al. vs. Abrahams, et al. also manufacturers of cigars in the same city, doing business under the firm-name of Abrahams & Co. The trial Court found as facts that the plaintiffs had, for three years before the commencement of the action, adopted and used as their trade-mark, in the manufacture and sale of cigars, the word "Pride," and that the defendants, well knowing-the adop- tion and prior use of said word by the plaintiffs, as a trade -mark for cigars manufactured and sold by the plaintiffs to the public, imitated and used the said word " Pride," on the labels and boxes of cigars manufactured and vended by the defendants, and the said defendants, in violation of plaintiffs' rights, did manufacture and sell cigars under the color of such labels, to the public, whereby the said public were deceived into believing that they were pur- chasing cigars manufactured by the plaintiffs, and plaintiffs were damaged thereby. The Court held that the plaintiffs were entitled to protection in the use of their said trade-mark "Pride," and that the defendants were not entitled to use the same, and awarded a perpetual in- junction, with a reference to ascertain the damage of the plaintiffs should apply therefor before the entry of judgment. The appli- cation was not made, and judgment was entered for a perpetual injunction simply, with costs. On appeal to the General Term, this judgment was reversed, but on what ground does not appear, as no opinion was delivered. The judgment or order of reversal does not state that it was upon any question of fact, and consequently all that we have to con- sider is whether any error of law appeals, calling for the reversal. The facts found clearly justify the judgment rendered. The word "Pride," as applied to cigars, was an arbitrary word, not descriptive of the article, and one which the plaintiffs could law- fully, appropriate as a trade-mark. No prior appropriation of it by the defendants, or any one else, is alleged in the pleadings, or found, nor does anything appear in the findings of fact showing the conclusions of law to be erroneous. The counsel for the respondents argues in support of the rever- sal, that the defendants' labels, as they appear in the pleadings, 442 COURT OF APPEALS, STATE OF NEW YORK. Hier, et al. vs. Abrahams, et al. 73 do not resemble the plaintiffs' labels. That the words, pictures and color of the labels are different. The infringement charged is not an imitation of a symbol or label, but the appropriation of a word. i . Trade-marks are of two kinds. They may consist of pic- tures or symbols or a peculiar form and fashion of label, or simply of a word or words, which, in whatever form printed or repre- sented, continue to be the distinguishing mark of the manufac- turer who has appropriated it or them, and the name by which his products are known and dealt in. This distinction is recognized in the statutes for the protection of trade-marks as well as in the cases. The Act of 1862, (chap. 304), sections 1 and 3, make it a misdemeanor, punishable by fine and imprisonment t© counter- feit or imitate the stamp, brand, wrapper, label or trade-mark of a manufacturer, etc., or to keep for sale goods upon which coun- terfeit labels or trade-marks are placed. And section 4 makes it a like misdemeanor to affix to any package, any label, etc., which shall designate the article by a word or words, which shall be wholly or in part the same to the eye, or in sound to the ear, as the word' or words previously used by any other person to desig- nate goods manufactured by him. 2. Where the trade-mark consists of a picture or symbol, or in any peculiarity in the appearance of the label, the imitation must be such as to amount to a false representation, liable to deceive the public and enable the imitator to pass off his goods as those of the person whose trade-mark is imitated. And when there is such an absence of resemblance that ordinary attention would enable customers to discriminate between the trade-marks of different parties, the Court will not interfere. The case of Popham v. Cole, (66 N. Y., 75), is an illustration of this rule. In that case the trade-mark was on lard, and consisted of the figure of a hog, with the name of the manufacturer and the words "prime leaf lard." The words being merely descriptive of the article, could not be appropriated as a trade-mark, but the figure of the hog was claimed to be protected as such. It represented a large, fat, well- conditioned domestic hog, while the alleged infringement repre- sented a small, lank and lean wild boar, and the lettering and NOVEMBER, 1880. 443 7*3 Hier, et al. vs. Abrahams, et al. arrangement of the two were entirely different, and it was held that no deceptive imitation was established. 3. But where the trade-mark consists of a word, it may be used by the manufacturer who has appropriated it, in any style of print, or on any form of label, and its use by another in any form is unlawful. The statute requires only that the imitation should be either the same to the eye, or in sound to the ear as the genuine trade-mark, and this accords with the authorities. The goods be- come known by the name or word by which they have been desig- nated, and not merely by the manner or fashion in which the word is written or printed, or the accessories surrounding it, and the unlawful use of the name or word in any form may be re- strained.* In the case of the Akron Cement Company, [Newman v. Alvord, 51 TV". Y, 189), the trade-mark consisted of the name "Akron." The genuine label was "Newman's Akron Cement Co., manufactured at Akron, New York. The hydraulic cement known as the Akron water lime." The label held to bean in- fringement was "Alvord's Onandaga Akron Cement or Water lime, manufactured at Syracuse, New York." The judgment was a perpetual injunction restraining the defendants from using the name "Akron." In the Congress Spring Co. v. High Rock Spring Co., (45 N. Y, 291), the trade-mark was the word "Congress," and was used by the proprietors by branding the words "Con- gress Water" on their bottles. The infringement was a brand of "High Rock Congress Spring Water" and was restrained. In Gillett v. Esterbrook, (48 N. Y, 374), the trade-mark was "303." "Joseph Gillott extra fine" on steel pens, and the pens were known as 303 pens. The figures did not express any size or qual- ity of the pens, but were selected* arbitrarily by the plaintiff. The infringement was, "303" "Esterbrook and Co. extra fine," and the pens were put up in boxes similar to those of plaintiff. It was held that the plaintiff had acquired an exclusive right to the use of the figures " 303" as a trade-mark. In the present case the word "Pride" was the trade-mark. Plaintiffs' labels were "Hier & Aldrich's," and beneath that in large letters in a different type "Pride" and beneath that "Havana;" on the inside of the box was a similar label except that 444 COURT OF APPEALS, STATE OF NEW YORK. Hier, et al. vs. Abrahams, et al. 73 between the firm name and the word "Pride" was the picture of a cigar. Defendant's label was "The Pride of Syracuse," and beneath that < 'Abrahams & Co. " The injunction was only against the use by the defendants of the word "Pride" as a trade-mark on cigars. Its use in connection with different words or names from those in connection with which the plaintiffs use it, does not sanc- tion its being pirated any more than did the like use of the word "Akron," "Congress" or the figures "303" in the cases cited, or a like variation in many others that might be cited. In the Akron cement case the difference between the labels was quite as striking as in the present case. 4. The dissimilarity in the form or accessories of the label can make no difference. The trade-mark consisted in the word simply, and the plaintiffs might have printed it on any form of label they might fancy, without losing the protection of the law. The de- fendants had no right to adopt it by merely putting it on a label of different fashion from that which the plaintiffs had been in the habit of using. 5. It is also claimed that it was not established that the defend- ants used plaintiff's trade-mark with intent to defraud, and the case of Low v. Hall (47 N. Y., 104) is cited. That was an action for a .penalty under section 4 of the Act of 1862, chapter 306, as amended by section 3 of chapter 209 of the Act of 1863, and by that statute the intent to defraud is made an essential element of the offense. An actual intent to defraud can hardly be deemed necessary to entitle the plaintiffs to restrain the defendants from continuing the unlawful use of the plaintiffs' trade-mark whereby the plaintiffs are sustaining damage. The defendants cannot justly contend that they are entitled to continue to injure the plaintiff's business by acts which are in violation of their legal rights, on the ground that they do not intend to defraud them. The violation of their rights is in legal contemplation a fraud, and the finding that the defendants, with knowledge of those rights, invaded them and caused them damage, would justify an intend- ment, if one were necessary, that they did so with intent to de- fraud. NOVEMBER, 1880. 445 74 Hier, et al. vs. Abahams, ct al. 6. The only other points made by respondent's counsel are that the finding that the plaintiffs had adopted the word "Pride" as their trade-mark is unsupported by evidence, because their trade- mark, if any, was "Hier & Aldrich's Pride" with the figure of a cigar, and that the plaintiffs were not entitled to an injunction because their right was disputed and the injunction could not be allowed until they had established a legal right in an action at law. The first point has already been answered, and the second is not sustained by the authorities, but is in conflict with the cases already referred to. The order of the General Term should be reversed and the judgment at Special Term affirmed, with costs. All concur. Order reversed, and judgment affirmed. 446 U. S. C. C. DISTRICT OF CONNECTICUT. Joseph Dixon Crucible Co. vs. Benharn. ' 7*4 74 CIRCUIT COURT UNITED STATES, DISTRICT OF CONNECTICUT. In Equity. ' Joseph Dixon Crucible Company vs. Benham. Decided 22 November, 1880. Reported 4 Federal Rep., 527. "Dixon Stove Polish." TRADE-MARK— WRAPPERS AND LABELS— STOVE POLISH. Imitation of wrappers, labels, arrangement of printed characters, and language on wrappers and labels. HELD: That there was a conscious attempt to imitate the form in which the suc- cessful article had been presented to the public. Injunction granted against the use or imitation, colorable or otherwise, of the plaintiff's wrappers, labels or trade-mark. Morris IF Seymour, for plaintiff. II C. Baldwin, for defendant. NOVEMBER, l88o. 447 74 Joseph Dixon Crucible Co. vs. Benham. Ship.man, D. J. : This is a bill in equity, brought by a citizen of the State of New Jersey against a citizen of the State of Connecticut, to restrain the defendant from the use of the plaintiff's trade-mark, and for an account. The trade-mark had never been registered in pursuance of any Act of Congress. Joseph Dixon commenced the manufacture of stove polish in Taunton, Massachusetts, at least as early as in the year 1840, and was engaged in the business until 1868, either alone or as a mem- ber of the firm of Joseph Dixon & Co. He removed to Jersey City, in the State of New Jersey about the year 1849. The plain- tiff corporation was formed in 1868, and has been continuously manufacturing said article to a large extent. At a certain time during the period (the precise time being the only matter in dispute) Mr. Dixon commenced to put up his stove polish in elongated cubes, wrapped about by a blue paper wrapper, with printing thereon in black ink, surrounded by a heavy, double black rule or border. The ends of the wrapper were held in place by a yellow label covering the ends of the cube, with printing thereon in black also, surrounded by a double black rule. The same form, style, language, and appearance of the cube, wrapper, and label have been continued to the present time, except that the word "prepared" was substituted for "pure" in the year 185 1 or 1852, and the necessary changes of the name of the manu- facturers have been made. Fac similes of the present styles of wrapper and label, with the printed matter thereon, are given in the bill. The answer denies only the priority of the use of the trade-mark by the plaintiff. Slight evidence of the truth of the allegations, which were not denied, was given by the plaintiff; but it may be considered as proved that large amounts of money have been spent by the plaintiff and its predecessors in the manufacture of the article contained in this kind of wrapper; that the article has at- tained an established and high character, and that its form and appearance are well known to the public. The wrappers and label, and the arrangement of the printed characters, and the language of the wrappers and labels, have become a well-known 448 U. S. C. C. DISTRICT OF CONNECTICUT. Joseph Dixon Crucible Co. vs. Benham. 74 trade-mark, indicating to all purchasers that the article which is contained in the wrappers is the Dixon polish, and is made by the plaintiff. The good-will of the business, and the right to the ex- clusive use of the trade-mark, are valuable to the plaintiff. Joseph Dixon duly and legally assigned and transferred all his rights in the trade-mark to the plaintiff. The defendant, a manufacturer of stove polish, under the name of the New England Lead Works has, since 1876 or 1877, put up his article in wrappers and labels almost identical in appearance, arrangement, style of printing, and language with the plaintiff's wrappers and labels, except the necessary changes of name and address. It is not denied that two wrappers and labels are sub- stantially identical. The question in the case is as to priority of use. The defendant contends that he has continuously used sub- stantially the same form and style since 1853, and that the adop- tion of this style by Mr. Dixon was after that date. The plaintiff's theory is that it has satisfactorily shown that Dixon commenced the use of this trade-mark at least as early as 1847. The defendant's theory is that he commenced the manu- facture of stove polish in the year 1844, and that in 1853, and before Dixon's use of the wrapper, he began to put up his article in elongated cubes, in a blue wrapper, with a yellow label, under the name of the. Straitsville East India Lead Works; that, with the exception of the years between 1863 and 1867, when he was en- gaged in other business, he continued the use of these wrappers and labels until 1876 or 1877, when he changed to the present style, and adopted the name of the New England Lead Works, and inserted his own name as proprietor. Mr. Benham has kept a country store in Straitsville, a village in the town of Naugatuck, and has had from $500 to $1000, in- vested in the stove-polish business. It is manifest that the bulk of the product having the "East India" label was sold to pedd- lers, as this article was not known to the trade. He testifies, in answer to the question "Who composed the printed matter on your first label on the cube?" "I am not certain; I think Giles (Josiah Giles, a printer in Hartford) got the label up. I left it NOVEMBER, 1880. 449 "7*4 Joseph Dixon Crucible Co. vs. Benham. with him to get the label up. It was either him or a man named Hurlburt." He further testifies, in substance, that this wrapper was used till 1876 or 1877-, when he changed to the New England Lead Works Wrapper. The printing was done by the Waterbury Print- ing Company. In answer to the question, "Did you send them a copy from which you instructed them to print a certain number of labels?" He said: "I do not know whether I took up one of Exhibit A, (the East India wrapper), or sent them one when I made the change; that is, whether I took up a package like Ex- hibit A, or took up a label or sent them one." It is clearly proved that in the latter part of 1876, the Water- bury Printing Company made for the defendant as near an imita- tion of the plaintiff's wrapper and label as was possible, with the necessary alteration of names, and that the Dixon trade-mark was furnished by some one to the printing company for that purpose. Indeed, it is manifest from a comparison of the two wrappers that one was copied from the other. There is not so close a re- semblance between the latter and the wrapper of the New Eng- land Lead Works. The "directions" are entirely different. But it is apparent, from reading the descriptions of the polish which are printed on each wrapper, that the two had but one author; they are almost identical. Did Dixon copy from Benham, or did Benham copy from Dixon ? It is sufficiently established that Dixon commenced the use of his wrapper as early as in 1848. Benham does not claim to have commenced until 1853. I have no doubt that the mind and the hand which prepared the Benham wrapper for the press in 1835 used the Dixon wrapper as a pattern, and that there was a conscious attempt to imitate the form in which the successful article had been presented to the public. It did not appear that the plaintiff was chargeable with laches after it discovered the defendant's wrappers and labels. Let there be a decree for an injunction against the use or imita- tion, colorable or otherwise, of the plaintiff's wrappers, labels, or trade-mark, and for an accounting. 29 450 U. S. C. C. EAST. DIST. OF MISSOURI. Singer Manufacturing Co. vs. Stallage. 75 75 CIRCUIT COURT UNITED STATES, EASTERN DISTRICT OF MISSOURI. In Equity. Singer Manufacturing Company vs. Stanage. Decided March, 1881. Reported 6 Federal Rep., 279. "Singer Sewing Machine" Case. 1. Trade-Mark — Patented Article — Specific Designation. — Where a word indicates a patented machine of peculiar mechanism, such word cannot be protected as a trade-mark upon the expiration of the patent. 2. Same — "Singer" Machine. — Certain patented sewing machines were known as the "Singer" machines. Held: That the .word "Singer" even if a trade-mark became common property upon the expiration of the patent. Taylor &* Pollard, for plaintiff. Marshall 6° Barclay, for defendant. Treat, D. J.: This is a suit for an alleged violation of plaintiff's trade-mark. It seems that the plaintiff has pursued its controversy on both MARCH, I 88 I. 451 75 Singer Manufacturing Co. vs. Stanage. sides of the Atlantic, generally with success. The decisions of the foreign and American Courts have been cited and examined. While reference is made in many of them to actual or supposed patents, issued and expired, no one of said cases, except that by Judge Drummond, states with directness what should be the turn- ing point in the controversy. The case of the plaintiff against Wilson (3 Appeal Cases, 376), turned more on questions of prac- tice than on the rules by which the rights of the parties were to be ultimately determined. That case and others in England, and the great number of cases in American Courts, (notably, Manufg Co. v. Trainer, 101 U. S., 51), ought to make clear the rules controlling this litigation. It would be tedious and unprofitable to review the many authorities cited. In the case from the Eng- lish House of Lords, {supra'), and in the case [supra) from the United States Supreme Court, there were differing opinions on the merits. Each of the many cases cited has its distinctive peculiari- ties, and, while all Courts agree that property interests in trade- marks should be protected, there is a strange diversity of reason- ing as to the true basis on which such interests should rest. It is not necessary for the solution of the rights of parties liti- gant in this suit to enter upon so wide a field of analysis or dis- cussion. At the opening of the argument, this Court directed the attention of counsel to what seemed to be a matter of large moment, but as the pleadings and evidence had been prepared in the light of leading English and American cases, the cause pro- gressed at great length, calling for the rernark that despite these cases a large amount of irrelevant testimony was presented; or rather, that while counsel had been diligent in their preparation, not knowing what views this Court might entertain, much of the evidence seemed to apply rather to infringements of patents than a violation of trade-marks. Still, many of the leading cases have taken that course, to what seems to be a confusion of rights. This case furnishes an apt illustration. The plaintiff and its predecessors had, in connection with others, through patents, a monopoly as to certain sewing machines known as the "Singer" machines. When these patents expired every one had an equal right to make and vend such machines. If the patentees or their 452 U. S. C. C. EAST. DIST. OF MISSOURI. Singer Manufacturing Co. vs. Stanage. "75 assignees could assert successfully an exclusive right to the name "Singer" as a trade -mark, they would practically extend the patent indefinitely. The peculiar machine which had become known to the public under that name during the life of the pat- ents was so known as a specified article of manufacture, and at the expiration of the patent would still be known on the market by that designation, irrespective of the name of the special manu- facturer. No one had an exclusive right to the use of the generic name. If one wished to acquire a trade -mark in connection therewith he could do so. distinctively. The plaintiff accordingly adopted specific devices, including its own name, whereby its pro- ducts could be distinguished. The defendant adopted a different device, with the name of his manufacturer, "Stewart," and ad- vertised the sale sometimes of the "Stewart" machines, and sometimes of the "Stewart Singer" machines, attaching his name as "late general manager of the Singer Manufacturing Co." It is contended that, although he and others had an indubita- ble right to manufacture and sell the "Singer" machines — that is, machines known as such in the market — so far as their mechan- ism is concerned, they had no right to advertise or sell them by their right names, with or without a prefix. How is it that the plaintiff corporation acquired a monopoly of the name, whereby it could exclude, after the expiration of the patent, all others from making or vending the machines under the only name known to the public? A review of the many cases cited leads to the following conclu- sions: First. That when a patented article is known in the market by any specific designation, whether of the name of the patentee or otherwise, every person, at the expiration of the patent, has a right to manufacture and vend the same under the designation thereof by which it was known to the public. Second. That the original patentee or his assignees have no right to the exclusive use of said designation as a trade-mark. Their rights were under the patent, and expired with it. Third. If a corporation or person wished to establish a trade- mark or name, indicative of its own special manufacture of such MARCH, l88l. 453 75 Singer Manufacturing Co. vs. Stanage. a machine or product, the right must grow up, just as all other rights of the kind are established — by use and acquiescence. Thus, as every one at the expiration of the patent had a clear right to manufacture and vend what was known as the < < Singer ' ' sewing machine, the plaintiff could acquire no exclusive right to the name "Singer," but could by proper trade-mark appropriate to itself names or devices indicating its own manufacture of such machines. Fourth. The plaintiff did adopt special names and devices to indicate what it put on the market as its manufacture, viz., "The Singer Manufacturing Company," imprinted on the shield and arm of the machine, etc. The defendant placed on its shield and arm the words, "The Henry Stewart's Manufacturing Co.," with another device*. Now, as each corporation had an equal light to make and vend that class of machines known in the mar- ket as "Singer" machines, and as the defendant used neither the name nor device of the plaintiff, there is no violation of the plain- tiff's trade-mark or name. While the Courts are prompt to pro- tect the property rights of any skilled person in his trade-mark or name, whereby he may have in the market the benefit of his skill and reputation, they must also guard against every effort to secure a monopoly not arising therefrom. When a marketable product is publicly known and designated by a generic name, no one should be permitted to shut out all just competition by claiming the ex- clusive right' to use that name. If there is a peculiar excellence, real or supposed, in his manufacture, he can establish by his trade- mark or name the right to protection against the piracy thereof; but he cannot go further and insist that, independent of his skill or manufacture, he can cover by his trade-mark or name whatever may properly distinguish the common article which every one has a right to make or vend. Fifth. Inasmuch as the word "Singer" indicates a machine of peculiar mechanism, and every one has a right to make such a machine, the word "Singer" attached to such machines is com- mon property. Sixth. The distinctive names and devices of the plaintiff cor- poration were not used by the defendant, and no one of ordinary 454 u - s - C. C. EAST. DIST, OF MISSOURI. Singer Manufacturing Co. vs. Stanage. 75 .intelligence could suppose that the "Stewart" manufacture was the manufacture of the plaintiff. Each had its distinctive and detailed names and devices, so that there was no probability that the machine made by one would be mistaken for the manufacture of the other. These views dispose of the case, yet it is important to remark that the plaintiff is seeking, after the expiration of one or more patents, to perpetuate a monopoly under the guise of a trade- mark. The propositions involved have undergone so much judi- cial investigation in transatlantic and cisatlantic Courts, that a summary disposal of the question may seem inadequate to the exigency of the case; yet each of said cases would show, if prop- erly analyzed, that the general rule is admitted by all. There are many technical objections interposed with respect to evidence offered; yet, giving the objector the largest benefit there- from, there still remains the clear fact that the plaintiff, even if its assignment covered the name as a trade-mark, (which is very doubtful), is seeking to create a monopoly for the practical exten- sion of a patent beyond its legal term. The plaintiff has estab- lished no such right, nor has the defendant consequently violated any of the plaintiff's rights. The bill will, therefore, be dismissed at plaintiff's cost. MARCH, i88j. 455 76 Thornton, et al. vs. Crowley. 7S SUPERIOR COURT OF THE CITY OF NEW YORK. In Equity. John Thornton, et al., Appellants, vs. Robert Crowley. Respondent. Decided 7 March, 1881. Reported 47 N. Y. Sup. Ct., 527. "Smith's Needles." TRADE-MARK— INFRINGEMENT OF— WHAT CONSTITUTES. 1. Where the special features of complainant's trade-mark have been for many years used upon labels of the same character by persons engaged in the same trade, and the appearance of said labels apart from the names, is such as results from an ordinary and rightful use in an appropriate manner, without intention of making by such use, a definite effect of the whole taken together, and these particulars are not so employed by complainants that an original design or combination has resulted which can be perceived by itself apart from its components, and the labels of defendants could be mistaken for those of plaintiffs only on account of a resemblance in these particulars used in an ordi- nary and rightful manner, and the name of defendant appearing promi- nently on his labels and is conspicuously different from the firm-name upon plaintiff's labels. Held: 456 SUPERIOR COURT OF NEW YORK CITY. Thornton, et al. vs. Crowley. '7© That defendant was entitled to a dismissal of the complaint on the merit. Appeal from judgment dismissing plaintiff's complaint upon the merits. Cook & Schuck, attorneys, and Douglas Campbell and George C. Lay, of counsel for appellants. Albert G. McDonald, attorney, and Charles IV. Sloane, of counsel, for respondent. Freeman, J.: This action was brought to restrain the defendant from the use of two labels used by him. The plaintiffs brought it as the rep- resentatives of the firm of James Smith & Son, of England, who are manufacturers of needles and whose labels it is claimed the defendant fraudulently simulated. The complaint! alleges, among other things, " that before the needles manufactured by said James Smith & Son are distributed to dealers in the United States, by the plaintiffs, they are usually packed into small packets or wrappers of twenty-five needles, each bearing the firm-name of James Smith & Son, as a trade- mark, printed, pressed or stamped on labels of two colors, red and blue, etc., etc., fac similes of which labels are annexed; that such needles are known throughout the United States by two prin- cipal colors of packages or wrappers, viz : red and blue, the red label containing a crown-stamped or pressed in said label, with the words and letters ' Jas. Smith & Son's Genuine Drill'd Ey'd Sharps (*) warranted, John Thornton,' running from No. i to 12, separate and assorted ; and the blue label containing the royal British coat of arms printed in black ink, with the words or letters ' Jas. Smith & Son's Improv'd Drill'd Ey'd Sharps,' running from No. 1 to 12, separate and assorted ; 'warranted, John Thornton,' all of which appears more plainly and fully in the foregoing labels forming a part of this complaint ; and that the needles of the other manufacturers have never been enclosed in packets bearing labels of precisely the shade of colors nor the design of said labels and the printing and impression thereon, and adopted by said MARCH, l88l. 457 76 Thornton; et al. vs. Crowley. James Smith & Son as aforesaid, except in a simulated form by the defendant; Robert Crowley, as hereafter more particularly re- ferred to, and others." The Court at General Term, said : "It is now so well settled that it is no longer necessary to cite authorities, that a trade-mark may consist) of marks, forms, symbols or even words in common use, provided they are used in such a way as to designate the true origin or ownership of the article and have not already been appropriated by others in connection with the same article. In case of prior appropriation of part, or parts, by others, the com- bination of the plaintiff, as a whole, must be new, and intended and calculated to designate origin or ownership. No right accrues to the use of mere generic words used to designate the article or its quality. " In every case in which the interference of a Court of Equity is sought for the protection of a label or trade-mark, the plaintiff must, first of all things, bring himself within these rules. When he has done that, the Court, upon proof of infringement, will liberally protect him, not because he has any property in the word or words of the combination, but upon the principle that defend- ant's imitation constitutes a fraud upon one who has established a trade-mark and a reputation. Plaintiffs' prior and exclusive right to the use having been established, the test is whether the imitation is calculated to deceive purchasers. Upon the question of tendency to deceive, it may not be necessary to sljow that a person giving ordi- nary attention, or any attention, is likely to be misled. Perhaps it is sufficient that the careless and unwary may be misled. Upon this point the authorities are not uniform. But before the Court can be called upon to apply any test at all, plaintiffs' prior and exclus- ive right must be clearly established. "In the case at bar, the plaintiffs failed to establish such prior and exclusive right as was necessary to sustain the action." After consideration of the testimony, the Court further said : "Upon this state of facts the learned Chief Justice who tried the case below, was correct in finding : " 'First. The particulars, except the firm-name of James Smith & Son, and the name of agent, which make up the labels used by 458 SUPERIOR COURT OF NEW YORK CITY. Thornton, et at. vs. Crowley. "7 6 the plaintiffs and set forth in the complaint, have been used for many years in labels of the character as such labels of the plain- tiffs commonly and rightfully by persons engaged in the needle trade. " ' Second. The appearance of such labels of the plaintiffs apart from the names aforesaid is such an appearance only as results from an ordinary and rightful use of these particulars in an appro- priate manner without the intention of making by such use a definite effect of the whole taken together. " ' Third. These particulars are not so employed in such labels of plaintiffs that an original design or combination has resulted which can be perceived and considered by itself apart from its components. " 'Fourth. The labels of the defendant which are set forth in the complaint could be mistaken for the aforesaid labels of th'e plaintiffs only on account of a resemblance in these particulars used in an ordinary and rightful manner as aforesaid. "'■Fifth. The name of defendant's firm appears prominently on his aforesaid labels, in the ordinary mode of observation, would be read first, and is conspicuously different from the firm-name upon the plaintiffs' aforesaid labels.' " Upon these findings, the defendant was entitled to a dismissal of the complaint on the merits." The case of Walton v. Crowley (3 Blatchf., 440), is distinguishable in this, that in that case the defendant claimed the privilege of using a label similar to that of James Smith & Son, with the name of Smith at the top, on the ground that a firm of like name existed in this country, needles of which firm he had on sale. It was the use of this name which chiefly caused the Court to order the temporary injunction.- The present case is analogous to Popham v. Wilcox, (38 Supr. Ct. 274; affirmed 66 N. ¥., 69), and should be determined by the same rule that was applied there. Judgment affirmed, with costs. Speir, J., concurred. march, 1 88 1. 459 "7 "7 Skinner, et al. vs. Oakes, et al. 77 IN THE ST. LOUIS COURT OF APPEALS. In Equity. H. H. Skinner, et al., Respondents, vs. Annie Oakes, et al., Appellants. Decided 8 March, i88i. Reported io Mo. App., 45. " Peter Oakes' " Case. 1. A conveyance good inter partes, made in fraud of creditors, can only be impeached by the creditors themselves. 2. Affidavits filed in support of a motion for a new trial will not, on appeal, be considered as evidence of anything affecting the merits of the case. • 3. A man who voluntary parts with the right to use his own name as a trade-mark, cannot voluntarily recall it by marrying or carrying on business in his wife's name; nor can she, by marrying him, acquire any higher right to use his name as a trade-mark than he himself had. 4. A trade-mark which consists of the name of a third person, is not such a species of property as can be disconnected from the business with which such person was formerly connected, and sold from man to man. 5. Where the assignee of the naked right to use a trade-name, claims the exclusive right to sell goods bearing this name, he must show that the 460 ST. LOUIS COURT OF APPEALS. Skinner, et at. vs. Oakes, et at. T"7 name was originally used to designate goods of a certain quality or description, and is being used by him to designate, substantially, goods of the same quality or description, and that the use of the name does not operate to deceive the public into the belief that the goods are made by the man whose name they bear. 6. Where goods are sold and delivered, but owing to a secret contract, the right to a part of the thing sold is subject to be defeated, an innocent purchaser for value takes a title unaffected by the terms of the secret defeasance^ of which, owing to the laches of the original vendor, he had no notice. Appeal from the St. Louis Circuit Court, Boyle, J. W. H. H. Russell and David Murphy, for the appellants. The use of the word "Oakes" wrongs the appellants and is a fraud upon the public, and its use should be enjoined. Fetridge v. Wells, 13 How. Pr., 387, 389, 394; Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. Cas., 544, 546; Upton on Trade-Marks, 26-53; Carmichael v. Latimer, 11 R. I., 407-410; Little v. Page, 44 Mo., 412; Griffin v. Pugh, \\Mo., 326. "The good-will of an establishment is an accessory thereto; separate therefrom, it is of no value. And the same rule applies to trade- marks." Upton on Trade- Marks, 27; 2 Pars, on Cons. (6th ed.), side p. 378, 379; Kidd v. Johnson, 10 Otto, 620; Churton v. Douglas, 1 Johns. Eng. Ch., 176. A party is not entitled to use a proper name as a trade-mark, except in connection with some mark, symbol or device, both of which must be in fact true; and even then there can be no infringement of a trade-mark in the use of it, except by affixing it to articles manufactured or prepared by another, or so simulating it as to cause purchasers to be misled and deceived. Seixo v. Provezendo, L. R., 1 Ch., 192; Browne on Trade- Marks, sect. 361; Partridge v. Menck, Cox's Trade- Mark Cas., 80; Corwinv. Daly, Id., 265; Canal Co. v. Clark, 13 Wall., 323-326; 2 Pars, on Con. (6th Ed.), 257; Meneely v. Meneely, 62 N. Y., 431 et seq.; Fleming v. McLean, 6 Otto, 252. A person who, in connection with his business, sells the right to use the/a<; simile of his autograph as a manufacturer's mark, to be affixed to his goods, may, in the absence of a covenant restraining MARCH, l88l. 461 "7 "7 Skinner, et at. vs. Oakes, et at. him from again engaging in the same business, at once engage therein, and in the same street, and even the next door, and use his own name. Canal Co. v. Clark, 13 Wall., 323; Churton v. Douglas, x Johns. Eng. Ch., 176; Crutwell v. Lye, 17 Ves. , 335; Hallv. Barrows, 10 Jur. , (U. S.~), 55; Williams on Pers. Prop., 258; Howev. Searing, Cox's Trade-Mark Cas., 253. The agree- ment between Probasco and Oakes, either in its several parts or as an entire contract, shows the intent of the parties to be that the use of the name "Oakes' Candy" was limited to Probasco as a personal license or privilege only; that in consideration of the continuation of Oakes as the manufacturer, its use was lawful; but not after that connection ceased, or, at the farthest, after Probasco abandoned the business and the establishment ceased to have an existence. And it matters not whether this determination of the license or privilege was the result of the agreement or by opera- tion of law. Upton on Trade-Marks, 80; 2 Pars, on Con. (6th Ed."), side p., 664; Curtis on Pat., 197; Kidd v. Johnson, 10 Otto, 618; Howe v. Searing, Cox's Trade-Mark Cas., 244. Dryden o° Dryden, with Harris Baldwin, for the respondents. It is competent for a person to so sell his name as to deprive himself of the right to use it in his own business, and to give that right to another. Probasco v. Bouyon, 1 Mo. App., 244; Stone- breaker v. Stonebreaker, 33 Md., 257', 268; Cox's Trade-Mark Cas., 596; Codd. Dig. of Trade-Marks, sec. 611; Ayer v. Hall, 3 Brews., 512, 513; Dixon Crucible, Co. v. Guggenheim, 2 Brews., 330-332. Peter Oakes has not, nor have he and his co-defend- ants combined, the right to the name "Oakes" in the manufacture and sale of candy in this city, because he has bound himself by a valid agreement to abstain from its use in that connection. Pro- basco v. Bouyon, 1 Mo. App., 246; Crutwell v. Lye, 17 Ves., 346. If a substantial part of a trade-mark has been pirated, relief will be granted. Filley v. Fassett, 44 Mo., 178. If the trade-marks are simulated in such manner as will probably deceive customers or patrons, the piracy will be checked at once by injunction. Churton v. Douglas, 1 Johns. Eng. Ch., 184; Clark v. Clark, 462 ST. LOUIS COURT OF APPEALS. Skinner, et al. vs. Oakes, el al. 7"7 Cox's Trade-Mark Cas., 206; Brooklyn White Lead Co. v. Masury, Id., 210; Bradley v. Norton, Id., 331. Thompson, J., delivered the opinion of the Court. This was a suit in equity to restrain an alleged piracy of certain trade-marks, and for an account. It appears that prior to May 17, 1869, Hiram S. Probasco and the defendant, Peter Oakes, were partners, in St. Louis, engaged in the manufacture and sale of candies. On that day they dissolved partnership, Oakes sell- ing out to Probasco, by a contract of sale duly acknowledged and recorded, which conveyed to Probasco, his executors, administra- tors, and assigns, all of the Oakes interest in the partnership as- sets, and "also the good -will of the business and name of the firm of Probasco & Oakes, and the exclusive right to make and sell Oakes'' candy, and to use the name thereof;" the contract further reciting, "it being the intent hereof to convey to said Probasco all my interest in all the property and assets of said firm of Pro- basco & Oakes, and all the franchises -thereof. " This statement of the facts brings us to the point in the history of these transactions in which the rights of Probasco under the contract were determined in this Court, in the suit of Probasco v. Bouyon, 1 Mo. App., 241. The rights there declared to exist in Probasco under this contract are the same rights claimed by the plaintiffs in this suit, derived, as is alleged, from Probasco, by two subsequent sales and transfers. It was there adjudged that by the above instrument of sale Probasco acquired the rights of the previous firm of Probasco & Oakes to the use of the name of "Oakes" ih the manufacture and vending of the candies which Probasco & Oakes had previously manufactured and sold under that name. It was also held that Oakes could so sell his name as to deprive himself of the right to use it for his own manufacture, and give that right > to another, under the circumstances of the case as shown in evidence. It was further held, that "Oakes may make and sell candy, but not under the name, the use of which he has, for this purpose, sold. He may make and sell the very same candies, and is not obliged to conceal the fact that they are made and sold by him; but he may not, in St. Louis, advertise MARCH, I 88 I. 463 7 7 Skinner, el al. vs. Oakes, et a/. them, either by sign over his shop door, or by label on the boxes in which they are packed, or in any other general and public way, as Oakes' candies." We are not asked to review this decision, or to modify it; if we were, we could not do so consistently with well-settled rules of law, adherence to which is of the very highest importance. That decision, not having been reversed by a higher tribunal, is not only a rule of property generally, for the government of other like cases, should any arise, but it is in a peculiar sense the law of this particular case. It is a solemn adjudication of the rights of Probasco under the contract in question, on the faith of which the two sales under and by virtue of which the plaintiff's claim must be taken to have been made, for they were both made subse- quently to its rendition. The books abound in cases which would support the conclusion reached by this Court in that case, could it be reopened for controversy. On the twenty-eighth day of May, 1877, after the rights of Probasco in the premises had thus been settled by this Court, he sold out the business to W. J. Hammon, and executed to him a separate bill o,f sale, in which he undertook to convey to him, and, if the instrument is good, did convey to him, the trade-mark, name, good-will, and reputation connected with the manufacture, production and sale of certain candies and confections, commonly known and called "Oakes' Candies," "Oakes' Home-Made Candies," and "Oakes' Pure Home-Made Candies," reciting that such trade -mark, name, good-will, and reputation had been there- tofore purchased by him from Peter Oakes, and concluding with the words, "I hereby sell and convey to said W. J. Hammon all the rights and privileges connected, as aforesaid, with such candies and confections, which I may have, or did at any time derive from said Peter Oakes. ' ' An attempt was made, under objection, to prove that 'this was not a bona fide sale, but merely a fraudulent conveyance, designed to hinder and delay the creditors of Probasco. This evidence should have been excluded; but its admission worked no harm to the plaintiffs, for the Court, in finding the issues in their favor must have disregarded it. It was wholly immaterial that this 464 ST. LOUIS COURT OF APPEALS. Skinner, et al. vs. Oakes, et al. *7*7 conveyance may have been made to hinder, delay, and defraud the creditors of Probasco. 1 . It is well settled that a conveyance in fraud of creditors can only be impeached by the creditors themselves. It is good as between the parties and their privies As no creditors of Pro- basco/ nor anyone claiming rights under such creditors of Pro- basco, are before the Court complaining of this sale, it is as good, for the purposes of this suit, as though Hammon had purchased of Probasco bona fide, and at full value. A question of more importance is presented in a fact which did not appear in the suit of Probasco v. Bouyon. On the same day (May 17, 1879) that Oakes executed and delivered to Probasco the bill of sale above quoted from, a further agreement was entered' into, on a separate sheet of paper, between Oakes and Probasco, delivered to Oakes and retained by him, and never re- corded, which provided that Oakes should work for Probasco for two years at manufacturing candy, at a stated salary, and which also contained this provision. "And the said Probasco, on his part, covenants with the said Oakes, that should he, said Probasco, sell out his said business of candy making and selling within said two years, or at any other time, then said Oakes shall be released from all obligations under this agreement, and the right and privilege of making and selling 'Oakes' Candy,' and of using said name, 'Oakes,' shall revert to said Oakes." The testimony is, that when Probasco sold to Hammon the rights in reference to "Oakes' Candy" which he had acquired from Oakes under the contract of May 23, 1877, Hammon had no knowledge of this agreement, and that when Hammon undertook to sell the same rights to Skinner, Skinner had no knowledge of it. 2. The affidavit to the contrary that Oakes filed, on motion for a new trial, is not evidence: for reasons which will be stated here- after. The position of the defendants, as we understand it, is that these two contracts, the bill of sale, and this agreement made on the same day between Oakes and Probasco, were parts of the same contract, relating to the same subject-matter; that they are to be taken and construed together, and treated as though they MARCH, 1 88 I. 465 77 Skinner, et al. vs. Oakes, et al. had been drawn up on the same piece of paper and embodied in one instrument; that the operation of these two instruments was no more than to convey to Probasco a right in the manufac- ture and sale of "Oakes' Candy" personal to himself, and which he could not convey to another; that Probasco could not convey to Hammon, nor Hammon to Skinner, any higher rights than Probasco in fact acquired from Oakes under the two instruments, taken together; and that, by the terms of the agreement, when- ever Probasco should undertake to sell his rights under the con- tract, they should revert to Oakes. And it is urged that the effect of these two instruments was nothing more than to make a con- ditional sale of the right to manufacture and vend "Oakes' Candy," so as to bring the case within the rule laid down in the following cases by the Supreme Court of this State: Parmlee v. Catherwood, 36 Mo., 480; Little v. Page, 44 Mo., 412; Griffinv. Pugh, 44 Mo., 326, and Ridgeway v. Kennedy, 52 Mo., 24. These cases are not authority for the position taken. They go no further than to hold that where personal property is sold and delivered upon agreement that the title is not to pass until the purchase money is paid, until that condition is performed, the vendor, if guilty of no laches, can recover it from an innocent purchaser of the vendee. This rule, it may be observed, was found so productive of fraud, so injurious to innocent purchasers, and of such a tendency to obstruct the free transfer of personal property, that in 1877 it was repealed by the Legislature, 1 Rev. Stats., sec. 2505. It was, however, a rule of property at the time the sale of Oakes to Probasco was made; and if we could see that it governed the contract in question, we should not hesitate so to declare. 6. But there is a wide distinction between a sale which is made conditional upon the payment of the purchase-money, and a sale — such as the one in question — where the purchase -money is paid, the vendee put in possession, and allowed to remain in such possession for a long time, but where his right to a part of the thing sold is subject to be defeated by an event which may never occur, under a secret contract not embodied in the recorded bill of sale or known to the subsequent purchaser. If we look to the 3° 466 ST. LOUIS COURT OF APPEALS. Skinner, et al. vs. Oakes, et al. , "7*7 equities of the case, there can be no room for argument. Oakes should have been more careful to put this contract of defeasance in the bill of sale itself, or else to notify Hammon and Skinner of it before they purchased. If we look simply to the authority of the cases just cited, they do not govern; for there the. title did not pass to the vendee, while here it did pass. 2. It is seriously urged in the defendants' supplemental brief, that it is shown by the affidavits of Oakes and Sickles in support of the defendant's motion for a new trial that Hammon was per- sonally served with a written notice of this agreement, in August, 1877, just after the sale of Probasco to Hammon. It is scarcely necessary to suggest that no ex parte affidavit filed in support of a motion for a new trial can be looked to as evidence of anything affecting the merits of the case. Parties must produce their testi- mony in such a manner as to afford the other side the right of cross-examination. Affidavits in support of a new trial, when they relate to matters which may have materially affected the rights of the party moving for the new trial, and which do not appear on the records of the Court, and are unknown to the Court itself, are admissible. That a party has been surprised by testimony intro- duced against him, or that he has discovered new evidence on a material point, or that a juror has been guilty of misconduct, are instances of this. But we know of no rule of practice under which a party can be permitted to file affidavits of matters directly affecting the merits of the case and the issues which have been tried, of which he might have introduced evidence at the trial, so .as to make the evidence to overthrow the judgment which has been rendered. The affidavits of Oakes and Sickles should have been stricken from the files. But even if these affidavits were evidence, they would have no effect, for they merely show that after Ham- moia bought the rights in controversy from Probasco he was noti- fied of the secret agreement. This, therefore, would not affect his title, nor prevent him from conveying a good title to Skinner, •even though Skinner, at or before his purchase of the right, had known of the agreement. 3. A point is made in behalf of the defendant Annie Oakes, that .before the plaintiff's acquired the alleged right to use the MARCH, I 88 I. 467 "77 Skinner, et al. vs. Oakes, et al. name of Oakes in the manufacture of candies, she, by marrying with Oakes, had acquired a right to use his name in the same con- nection, of which the plaintiffs cannot lawfully deprive her. There is nothing in this point except novelty. Peter Oakes could not confer upon Annie McLaughlin, by marrying her, any higher rights in the use of his own name than he himself had. A son cannot acquire from his father the right to use his father's name as a trade-mark, if the father had parted with the right by contract. (Filkins v. Blackman, 13 Blatch., 440), and we do not see how a wife could stand in a better position as to the name of her hus- band. There remain two questions in the case, either of which is of more serious import. There is nothing in the record to show that Hammon sold to Skinner any property whatever, except the naked right to use the trade-marks in question. 4. The first question therefore, is, whether a trade-mark which consists of the name of a person is such a species of property that it can be disconnected from the business with which such person was formerly connected, and sold from man to man. The second is, whether the use of the name of the third person in such a way does not involve such a fraud upon the public as will prevent a Court of Equity from protecting it. The first question cannot be answered intelligibly without some consideration of the grounds upon which Courts of Equity proceed in protecting trade-marks. 4. The principle on which all cases on the subject of trade- marks unite is, that one man will not be permitted, by imitating the distinctive name or mark used by another person to designate articles of the latter' s manufacture, to impose articles of his his own manufacture upon the public as the articles of the former. The cases so holding -rest upon two considerations: First, that it would be a fraud on the rights of the former person thus to permit his trade-mark to be imitated ; second, that it would also be a fraud on the public. See Gilman v. Hunnewell, 122 Mass., 139 ; McLean v. Fleming, 96 U. S. 245, 251 ; Col- man v. Crump, 70 N. Y, 573; Fairbanks v. Jacobus, 14 Blatch., 337; Devlin v. Devlin, 67 Barb., 290; Amoskeag Manuf. Co. 468 ST. LOUIS COURT OF APPEALS. Skinner, et al. vs. Oakes. et al. 7T v. Garner, 54 How. Pr., 297 ; Curtis v. Bryan, 2 Daly, 312 ; S. C, 36 How. Pr., 33; Amoskeag Manuf. Co. v. Spear, 2 Duer, 607; Peterson v. Humphrey, 4 Abb. Pr., 394; Howe v. Howe Machine Co., 50 Barb., 236; Sykes v. Sykes, 3 Barn. & Cress., 541 ; Burgess v. Burgess, 3 De G., M. cV (7., 896, 904; Burke v. Cassin, 45 CaL, 467 ; Emerson v. Badger, ioi Mass., 82; .£/&■ z/. Zeilin, 42 twz., 91 ; Zore-Mark — Examination. — Under the Trade-Mark Act of March 3, 1 88 1, and the rules now in force, examination will be made of the presumptive lawfulness of the trade-mark proposed for registration. Same — Only Lawful Marks Registered. — The present Act excludes from registration prospective trade-marks and those not used in foreign commerce or commerce with the Indian tribes; but there has been no such essential change in the law as to warrant the Office in registering as a trade-mark, matter which the Courts would not regard as such. Same — Description. — The words "time-keeper" are not the proper subject for a trade-mark for watches, their only office being to indicate the nature of the goods to which they are applied. Compound Trade-Marks. — Proposed trade-marks consisting in part of marks already registered by others, are objectionable when it appears that they would be liable to deceive the general purchaser. Oath as to Foreign Commerce. — Under section 3, of the present Act, the applicant will be required to specify some particular foreign nation or Indian tribe with which he has commercial relations. MAY, l88l. 489 SO Ex Parte Strasburger & Co. Appeal from the Primary Examiner. Watches. — Application filed April 23, 1881. Mr. A. Pollok, for the appellant. Marble, Commissioner: The applicants seek to register as the essential elements of their mark the representation of a locomotive, together with the words "railway time-keeper." The Examiner objects to the words ' ' time-keeper ' ' on account of their descriptive nature, and to the word "railway" as antici- pated by a prior registration. With reference to the words "time-keeper," the applicants take the position that the objection to the descriptiveness of the pro- posed trade-mark has no standing under the present trade-mark Act and rules adopted in conformity therewith. The argument, . as I understand, is based upon certain changes which have been made in the phraseology of the present law. The Act of July 8, 1870, provided that — "The Commissioner of Patents shall not receive and record any proposed trade-mark which is not and cannot become a law- ful trade-mark, or which is merely the name of a person, firm, or corporation unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons." (Sec. 4939, R. S.). Section 3, of the Act of March 3, 1881, provides that "no al- leged trade -mark shall be registered unless the same appears to be lawfully used as such by the applicant in foreign commerce or commerce with Indian tribes, as above mentioned, or is within the provision of a treaty," &c. As is well known, the present law was drawn up to meet the views expressed by the Supreme Court in the cases of United States v. Steffens; Same v. Witteman; Same v. Johnson, et a/., (16 O. G., 999). In those cases the Court held that trade-mark legislation can only be had under what is known as the "commerce clause of the Constitution," 490 UNITED STATES PATENT OFFICE. Ex Parte Strasburger & Co. 80 and that only such trade-marks can be registered as are in actual use in foreign commerce. 2. Accordingly, the present law makes no provision for the registration of prospective trade-marks, if they may be so called, or of trade-marks not in use in foreign commerce; but in other respects, as I read it, the law is unchanged. I find in the passage quoted, two prerequisites named as essential to a valid registration; first, that it shall appear that the proposed trade-mark is lawfully used as such; and, second, that it shall appear that it is used in foreign commerce or in commerce with Indian tribes. It is clear that the oath of the applicant cannot establish the existence of the first of these conditions, where it appears, upon inspection, that a proposed trade-mark consists of words in general use, to which the applicant can have no exclusive right, or that the proposed trade-mark is not, in fact, a trade-mark in contemplation of law. i. The trade-mark rules now in force and adopted in conform- ity with the present Act follow substantially the wording of the law upon the point under discussion, and have substantially the same effect. That the construction of the law here adopted is the true one, is borne out by examination of the other provisions of the law. The law further provides that the applicant, in addition to fil- ing fac similes of his proposed mark, shall submit a description of the trade-mark itself; that a trade-mark shall not consist of the mere name of the applicant; that a trade-mark shall not be regis- tered which is identical with a registered or known trade-mark, and which so nearly resembles some other person's lawful trade- mark as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers; that the Commissioner of Patents shall decide the presumptive lawfulness of claim to the alleged trade -mark; that he shall investigate the question of pri- ority of right between rival claimants, and that the registering of a trade-mark shall be prima facie evidence of ownership. The intent of the law in requiring that the applicant shall file a description of the trade-mark itself is not to be misunderstood. It was considered necessary that the applicant should point out the exact scope of his trade-mark, discriminating the essential MAY, l88l. 491 8 Ex Parte Strasburger & Co. from the non-essential portions thereof, that the Commissioner may determine that the subject proposed for registration is in fact a trade-mark, that it does not clash with prior registrations, and that if such be found to be the case, the question of priority of right may be properly determined, and that the applicant may in the end issue from the Patent Office with a prima facie right. It would be anomalous in an Act purporting to give color of ■title to confer upon the officer administering the law jurisdiction of other questions of title and not of the fundamental question, viz., whether or not the subject-matter fall within the purview of the law. 2. I should be reluctant to adopt this construction of the law were the language less clear than I find it. I am unable, there- fore, to agree with the applicants that there has been such an essential change in the law as to warrant the office in registering as a trade-mark matter which the Courts would not hold to be such. 3. With reference to the descriptiveness of the words "time- keeper" in their proposed application, there can be little doubt. They are in common use as applied to watches, clocks, and other species of chronometers, and this I do not understand the appli- cants to deny. The words must, therefore, upon familiar doc- trines, be erased from the recital of the essential portion of the mark. 4. The applicants contend that while the right to the separate use of the word < ' railway ' ' has been secured to another, that it may yet form a part of their compound trade-mark. If the views above expressed as to the effect of the present law and rules are correct, the essentials of the applicant's mark can comprise no more than the representation of a locomotive with the single word "railway." While I am not prepared to say that a trade-mark registered to another, may not be under some circumstances fan- cifully and arbitrarily compounded with other words and symbols to form a valid trade-mark, I am of the opinion that the use of the word "railway," even when used in connection with the rep- resentation of a locomotive, would be confusing and deceptive to 492 UNITED STATES PATENT OFFICE. Ex Parte Strasburger & Co. 80 the general purchaser, and interfere to that extent with the rights already secured to the prior registrant. In the case of I. Bush 6° Co., (10 O. G., 164), it was pro- posed to register the word " Centennial," which had already been' registered by another as one of the essential elements of an other- wise lawful trade-mark. The Commissioner said: 4. "I do not, however, think it a safe practice to permit the registration of a compound trade -mark, one of whose distinguish- ing features has already been appropriated and registered by another, as applied to the same class of merchandise. The ten- dency would be to mislead purchasers as to the true origin of the article sold under such mark, and the policy of the law is to dis- countenance such a proceeding." Coggin, Kidder dr Co., (16 C. D., 34?), was referred to and approved. The applicants will be required before registration to erase from their specification and fac similes all reference to the word "rail- way. ' ' 5 . I approve also the action of the Examiner in requiring the applicants to file a new oath, which shall designate the particular nation or Indian tribe in commerce with which their alleged trade-mark has been used. The statute relating to trade -marks provides, section 3, "that it shall appear to be lawfully used as such by the applicant in foreign commerce or commerce with Indian tribes." It is clearly within the power of the Commissioner, therefore, to require appli- cants to specify some foreign nation or tribe with which the ap- plicants have commercial relations, in order that it may be made to appear that such is the fact. (Ex parte Keppler v. Schwarz- mann, C. D., May 2, 188 1). The action of the Examiner is affirmed. JUNE, l88l. 493 8 1 Sawyer vs. Kellogg. 81 CIRCUIT COURT UNITED STATES, DISTRICT OF NEW JERSEY. In Equity. Sawyer VS. Kellogg. Decided i June, 1881. Reported 7 Federal Rep., 720. "Sawyer's Crystal Blue" Case. TRADE-MARK— INJUNCTION. A label which had been in use in substantially the same form tor a dozen or more years prior to suit brought, consisted of a blue wrapper pasted around a small bottle holding bluing, and contained in separate compartments, various inscriptions in letters of silver bronze. The first compartment contained the general designation of the article, in the words " Sawyer's Crystal Blue and Safety Box." The other com- partments contained, in finer print, commendations of the quality of the article, directions for its use, and the name of the party by whom it was prepared. Held, under the special circumstances of the case, That the use of a label of the same size, color and type, and of the same general appearance, with corresponding compartments, and similar, although not identical, designation, should be enjoined. — Ed. 494 U. S. C. C. DISTRICT OF, NEW JERSEY. Sawyer vs.. Kellogg. 8 1 Bill for Injunction. Rowland Coy, for complainant. George Putnam Smith, for defendant. Before Bradley and Nixon, JJ. Bradley, Circuit Justice : This case, with its special, circumstances, seems to us to be a very clear one. The complainant's label, which he alleges that the defendant has wrongfully imitated, had been in use sub- stantially in the same form for a dozen or more years prior to the bringing of the suit. It consists of a blue wrapper, pasted around a small bottle holding the bluing, and containing, in separate compartments, various inscriptions in letters of silver bronze. The first compartment contains the general designation of the article, in the words, << Sawyer's Crystal Blue and Safety Box." The other compartments are in finer print, and contain ( commendations of the quality of the article, directions for use; and the name of the party by whom it was prepared. The label complained of, and admitted to be prepared and used by the defendant, is of the same size, color, and type, and of the same general appearance, as that of the complainant, being divided into compartments corresponding with those in his label. The inscriptions although not identical, appear very like. The general designation is in these words ; "Sawin Soluble Blue and Pepper Box." Placing the two labels side by side it is easy to distinguish them. But ordinary persons, in the habit of buying the complainant's bottles, would be very easily deceived into buy- ing the defendant's for them, the general appearance being so similar in every respect. That the defendant's label is a designed imitation of the complainant's scarcely admits of a doubt. Such perfect similarity could hardly have been the result of chance. We do not mean to say that it would be a justification if it were accidental. But it is apparent that it was designed. Sawin is not the defendant's name; why, then, did he use Sawin's name and not his own? It was evidently done for the purpose of making a closer june, 1881. 495 8 1 Sawyer vs. Kellogg. imitation of Sawyer's label. The defendant, it is true, alleges that he does not put up the bluing for himself, but for a firm by the name of Barron & Co., who directed him to adopt the label in question. But this is no excuse for him unless Barron & Co. were entitled to use the label. The defendant attempts to show that they had such a title by having hired from Sawin the right to use his name. This pretext is too shallow. It is shown, indeed, that Sawin did manufacture bluing, and used a label of his own, but it was wholly- unlike the label in question. The use of his name by Barron & Co., in the label complained of, was evidently obtained for the purpose of making it more closely resemble Sawyer's. Sawin's bluing had no such reputation in the com- munity as to make it an object to hire his name. As the label stands it speaks a falsehood. The article covered by it is not "Sawin's Soluble Blue," and it is not "prepared by W. E. Sawin, Jr.," as stated at the foot of the label. It evidently speaks this falsehood for a purpose, and that purpose, we are satis- fied, is to obtain a closer imitation of Sawyer's label. It is no excuse for the defendant that he does this work for other persons. He is just as guilty as if he did it for himself. All who are con- cerned in the commission of a tort are alike amenable to the party injured. It is suggested, however, that the label complained of is the same in all respects which the defendant had used for several years prior to its adoption by Barron & Co., with the exception of the caption, in which Sawin's name has been introduced in- stead of his own. This only goes to show that the adoption of Sawin's name was regarded as important in carrying out the plan of Barron & Co. The question readily suggests itself, why did they prefer Sawin's name to Kellogg's in the caption of the label? No sufficient reason is shown except that it enabled them more closely to imitate the complainant's. No doubt Kellogg would have been perfectly willing, and glad, to have used his own name, and then the' label would, at least, have told the truth. It is un- nessary to add that the argument assumes that Kellogg's label it- self was free from objection as an imitation of that of the com- 496 U. S. C. C. DISTRICT OF NEW JERSEY. Sawyer vs. Kellogg. 8 1 plainant. Whether it was so or not may be a question, but one which it is not necessary now to determine. It is further suggested that the complainant has lain by for several years, whilst the defendant has been publicly using his own label, and has thus acquiesced in its use. To this suggestion it may be proper to reply that the complainant had a ■ patent for the article of bluing, which he was prosecuting and endeavoring to substantiate, but in which he finally failed. His failure to es- tablish his patent (which would have covered all his rights) ought not to preclude him from falling back on his right to the trade- mark. No essential delay has occurred since the termination of the proceedings on the patent. But, at -any rate, an acquiescence in Kellogg' s use of his own label was no acquiescence in his use of the new and altered label having Sawin's name in the caption. We think the case is with the complainant, and that a decree should be made in his favor. Lei; a decree be made accordingly- Note. — See Sawyer v. Horn, i Fed. Rep., 24. JUNE, 1 88 1. 497 82 Marshall, et al. vs. Pinkham. 82 SUPREME COURT OF. WISCONSIN. In Equity. Marshall, and another vs. Pinkham. Decided 22 June, 1881. Reported 52 Wis., 572. "Marshall's Rheumatic Liniment" Case. (1-6) Infringement of trade-mark. (7) Injunctions in such cases. (8) Acquisition of title to personalty under mill. 1. Words in common use, merely descriptive of the character, composition or quality of the article to which they are applied, cannot be exclusively appropriated and protected as a trade-mark. 2. The -office of a trade-mark is to point out the true origir. or ownership of the goods to which it is applied, or to designate the dealer's place of business. 3. The ground upon which actions for the infringement of a trade-mark are ' maintained is, that the law will not allow one person to sell his own goods as and for the goods of another. 4. The fact that an article, prepared according to a certain recipe, but not protected by a patent, has for some time been made and sold only by 32 498 SUPREME COURT, STATE OF WISCONSIN. 1 Marshall, et al. vs. Pinkham. 82 a certain manufacturer, does not render it unlawful for any other person, acquainted with its composition, to manufacture and sell the same. 5. The proper name of the manufacturer of an article, cannot be made => trade-mark so as to prevent any other manufacturer of the same name from affixing such name to a similar article made and sold by him. where no unfair means are vised to mislead purchasers into a belief that such article is manufactured by the person who first sold and continues to sell a like article under that name. • 6. M. having a recipe (not discovered or invented by himself, or protected by a patent) for a liniment used for the cure of rheumatism and other diseases, communicated it to the various members of his numerous family, and permitted each of them, for his or her own benefit, to manufacture the article and sell it with a certain label attached, (fur- nished by M.) containing the words " Old Dr. M's Celebrated Lini- ment," and certain other words descriptive of the liniment, and a certain vignette, and with the address of the particular member of the family manufacturing the article, at the bottom of such label. Each member of the family engaged in such manufacture appears to have had, by their mutual agreement, some particular route or routes to which his sales were confined. After M's death, his widow continued for some years to manufacture fhe liniment, and to sell it (with said label attached) on the routes last occupied by M. ; and she then sold the material and paraphernalia of her business to the plaintiff, one of the sons of M. Held: That plaintiff has no exclusive right as against the other children of M. or their assigns, (nor even as against the public generally), to manufac- ture said liniment or to the use of said label or the name "M." as descriptive of the article sold. 7. An injunction restraining the use of a trade-mark will not be granted upon the pleadings in a doubtful case, but the Court will wait until the proofs are heard. 8. Where there is a will, but no executor named therein, and no adminis- tration had, no title to personal property of the testator can -be ac- quired under the will. Appeal from the Circuit Court for Fond du Lac County. This was an action by Charles H. Marshall and Mary W., his wife, to restrain the defendant and his servants and agents from preparing, putting up or offering for sale a certain alleged imita- JUNE, 1 88 1. 499 8S Marshall, et al. vs. Pinkham. tion of "Marshall's Rheumatic Liniment," or any compound bearing the name of Marshall's Liniment or any imitation of said name, or bearing certain labels described in the complaint, or any imitation of plaintiffs' label or trade-mark, and also to have defendant adjudged to account to plaintiffs for all profits realized by him upon previous sales of said compound sold by him with any imitation of plaintiffs' labels or trade-mark, etc. The case is thus stated by Mr. Justice Cassaday: "It is very difficult, if not impossible, to gather from the printed case, or bill of exceptions, or briefs of counsel, an accurate history of the several labels in question. It would seem, however, that about 1857 Samuel Marshall and his wife, Mary J. Marshall, the parents of the plaintiffs, Charles H., resided at Fond du Lac with seven children, and in rather straightened circumstances. Three of the children were boys — John W., Samuel A., and Charles H.; and four were daughters, all of whom were subsequently married, One, Sarah G., became Mrs. Warren, then Mrs. Benson; another, Mrs. Harris; another, Mrs. Hardee A. Robinson; and another, Mrs. Julia F. Smith. Mrs. Smith testified that she was the young- est of the family, and thirty-five years of age, and lived with her father until 1868, when she was married; from which we may infer that she was born in 1844 or 5, and left her father's when she was about twenty-three. Charles H. testified that he was born in, 1842, and went into business with his father when he was twenty-one, which was not till 1863; from which we may infer that he was only fifteen years old in 1857, and that all his brothers and sisters, except Julia, and perhaps another, were older than him- self. About 1857 the old gentleman, Samuel Marshall, seems to have had a secret recipe for a mixture or compound constituting a certain liniment, which he claimed would cure rheumatism and various other diseases, and which he occasionally made up and gave to such persons as were willing to try it. There is no evidence that he was the inventor or originator of the recipe, and the infer- ence is that he was not. For a time, while in the employ of others, he sold it as he had opportunity, without any label, but 500 SUPREME COURT, STATE OF WISCONSIN. Marshall, et al. vs. Pinkham. 8S only a slip of paper attached with the word "Liniment" written upon it. Soon after, he commenced peddling it in a small basket; arid on his second trip John W. went out with him, and subse- quently alone. Also his sons-in-law, Warren, Harris and Rob- inson, and his son Samuel A., made and sold quantities of it, with his knowledge and consent. It appears, from some of the witnesses, that his first label was 'Marshall's Liniment; put up by Marshall & Son, 14, 15, and 16 Oak street,' Fond du Lac. "It seems that plaintiff Charles H., before he became of age, worked with the others in putting up and peddling out this lini- ment. In 1863, and on, Charles H. becoming twenty-one years of age, he went into the business with or under his father, in what he terms the 'partnership' between his father, his brother John W. , and himself, which lasted, according to his statement, until the latter part of 1868, or the forepart of 1869, when it was dissolved or broken up. It is a little difficult to understand just what Charles H. meant by 'partnership.' He testifies: 'We were interested in the labels, and we bought stuff together; that was as far as the part- nership extended. Each one made and sold what he could, and pocketed the proceeds; but when we ordered a lot of labels, they were paid for together, and lots of other stock we bought together — we bought it together and divided. We all had an equal right to manufacture, sell and label it — my father and my brother and me.' He further testified that about the time they dissolved, in 1868-9, 'we began to have some orders, and he (father) had the letter box and took the orders and filled them, and that was the end of the partnership; he didn't give any share of the profits to us two. After we dissolved, for a little while, I was speculating around, at nothing in particular; that was only for a short time, from three to six months. Then I went back into the patent- medicine business with my wife: that is, I didn't go into it myself, but I went to selling it. After the dissolution, I think John W. sold for the old gentleman for a little while, and then he moved away — left the country.' ' 'Each of the children seems to have known the secret — the recipe or formula for making the liniment; but the labels seem to have been obtained mostly from the old gentleman, who permitted each and JUNE, 1881. 501 82 Marshall, et al. vs. Pinkham. all the children to make the liniment and sell the same from house to house. Charles H. testified that the old gentleman barred him out, and would not let anybody use his labels, after he stopped the partnership, because he wouldn't let anybody have any of the orders that came in, and that dissolved the firm. It appears from other testimony that each peddled and sold the liniment on differ- ent routes; that they ran into each other's custom, and took cus- tomers the one from the other, and then there arose a dispute and controversy between them; and that John W. and Charles H. then undertook to form a partnership with their father and mother, putting all their father's and mother's property into the firm, but that the mother refused to execute the paper and it fell through, and then they 'finally divided between themselves certain routes, each reserving customers not on their own regular routes, and sub- sequently traded some of their customers and exchanged a corres- ponding number of their labels; that the label used had been changed by the old gentlemen to ' Old Dr. S. Marshall's Cele- brated Liniment,' with certain other words descriptive of the lini- ment, and a certain vignette of a horse's head; that, long prior to the making of her will, hereinafter mentioned, he gave to each of his children, and especially Mrs. Sarah G. Benson and Haidee Ann Robinson, under whom the defendant claims to act, the secret recipe or formula for making the liniment, and the right to manufacture and sell the same, with said label or labels upon it as a trade-mark, and that they had severally, with his knowledge and consent, from time to time made such sales with such labels or trade-marks thereon, and their own address at the bottom; but Charles H. testified that such change in the label was made shortly after such dissolution, and that the horse's head was never used while they were in partnership, and that he never used the horse's head label himself; that he used the label 'Marshall's Rheumatic Liniment,' about two or three years before his father death, but did not use the label 'Old Dr. S. Marshall's Celebrated Liniment' before his death. It also appears that Samuel Marshall died July 6, 1870; and that his widow, Mary J. Marshall, continued to manufacture 'said liniment and cause the same, with said label affixed, to be sold upon the routes last occupied by her husband, 502 SUPREME COURT, STATE OF WISCONSIN. Marshall, et al. vs. Pinkham. 82 until the Spring of 1872, when Charles IT. bought out the mate- rial and paraphernalia belonging to his mother's business, and gave therefor his note for $400. "About 1877, the mother, Mary J. Marshall, died; and subse- quently it was ascertained that her husband, Samuel Marshall, had, some time during the last two years of his life, executed a last will and testament, but which had been lost, and which was established as a lost will and admitted to probate, February 26, 1880, and in and by which he gave to his wife, in general terms, all his property, but named no executor or executrix, and there is nothing to show that his estate was ever settled, or that any ad- ministrator of his estate was ever appointed. It also appears that from 1869 to the time of suit the plaintiffs manufactured and sold such liniment, with a label affixed describing it as ' Marshall's Rheumatic Liniment,' and other descriptive words, and closing with 'All orders directed to M. W. Marshall, P. O. box 70, Fond du Lac, Wisconsin,' being Exhibit A. This suit is to restrain the defendant, claiming under a right or license from Mrs. Benson and Mrs. Robinson, from manufacturing said liniment, and selling the same, with a label affixed describing it as 'Old Dr. S. Marshall's Celebrated Liniment,' and with other descriptive words, and a certain vignette of a horse's head, and closing with 'Sterling Medicine Co., Proprietors, Fond du Lac, Wisconsin,' being Ex- hibit G. "Upon the trial the Court found, in effect, that the plaintiffs had no exclusive right to the use of the label or trade -mark, and that the defendant was entitled to judgment dismissing the com- plaint." From the judgment entered in accordance with such finding, the plaintiffs appealed. For the appellants there was a brief by Shepard &» Shepard, and oral argument by T. W. Shepard and T. U. Pinney. Geo. E. Sutherland, for the respondent. Cassoday, J.: 1. A trade-mark performs a distinctive office. As such its use may be protected by the Courts. But this does not authorize a JUNE, l88l. 503 82 Marshall, et al. vs. Pinkham. monopoly upon fragments of the language, nor the exclusive ap- propriation of words in common use descriptive of common ob- jects and qualities. It has often been decided that words which are merely descriptive of the kind, nature, style, character or quality of the goods or articles sold, cannot be exclusively appro- priated and protected as a trade-mark. In Caswell v. Davis, 58 N. Y, 223, it was held that "words or phrases in common use, and which indicate the character, kind, quality and composition of an article of manufacture, cannot be appropriated by the manufacturer exclusively to his own use as a trade-mark." Accordingly, where the plaintiffs prepared a medi- cine, the principal ingredients of which were iron, phosphorus' and elixir of calisaya bark, to which they gave the name of "Ferro- Phosphorated Elixir of Calisaya Bark," and so labeled the bot- tles containing it, the Court "held that this phrase could not be protected as a trade-mark." For the same reason it was held in Taylor v. Gillies, 59 N. Y, 331, that as the words "gold medal" indicated quality, and that in some competitive exhibition a gold medal had been awarded to the article for its excellence, the use of them could not be appropriated as a trade-mark. So it was held that "Lackawanna Coal" was descriptive, and could not be appropriated as a trade-mark. Canal Co. v. Clark, 13 Wall., 311. See also Perry v. Truefitt, 6 Beavan, 66; Corwin v. Daly, 7 Bos- worth, 222; Williams v. Johnson, 2 Bosworth, 1; Amoskeag Manufg Co. v. Spear, 2 Sand/. (,S. C), 599; Fetridge v. Wells, 13 How. Pr., 387-8; Partridge v. Monck, 2 Barb. Ch., 101; Pop- ham v. Cole, 66 N. Y., 69. From these authorities it is evident that the words "Rheumatic Liniment," "Celebrated Liniment," and the other words in the label in question, descriptive of the liniment sold, could not be appropriated as a trade-mark. 2. It seems to be the office of a trade -mark to point out the true source, origin or ownership of the goods to which the mark is applied, or to point out and designate a dealer's place of busi- ness, distinguishing it from the business locality of other dealers. Such is substantially the rule laid down by many authorities. Dunbar v. Glenn, 42 Wis., 118; Gillott v. Esterbrook, 48 N. Y, 374; Amoskeag Manufg Co. v. Spear, 2 Sand/. (5. C), 599; 504 SUPREME COURT, STATE OF WISCONSIN. Marshall, et al. v;. Pinkham. 82 Fetridge v. Wells, 13 How. Fr., 385; Barrows v. Knight, 6 R. I., 434; Tilley v. Fassett, 44 Mo., 168; Boardman v. Meriden Bri- tannia Co., 35 Conn., 402. There are many cases holding this doctrine, but these, and those above cited on the question of de- scription, sufficiently indicate the rule. The words "Marshall's Liniment," "Marshall's Rheumatic Liniment," "Marshall's Celebrated Liniment," "Old Dr. S. Marshall's Celebrated Lini- ment," used in the various labels before us, could only, therefore, be protected as trade-marks in so far as they pointed out Marshall or old Dr. S. Marshall as the true originator or owner of the lini- ment to which they were attached. Of course, the address at the bottom of each label, by whomsoever used, indicated where and of whom the liniment could be obtained; and as it was sold almost wholly by being peddled out, no special mark or symbol was ne- cessary or used to designate the dealer's place of business, dis- tinguishing it from the business locality of other dealers, unless it was the vignette of the horse's head, which the plaintiffs never used and to which they make no claim. If the plaintiffs' label is entitled to the. relief prayed for, it must be on the theory that they are entitled to the exclusive use of not only the word " Mar- shall's," but the words "Old Dr. Marshall's," as continuing to point out the true source, origin or ownership of the mixture, compound or liniment to which it was first applied by the father. True, old Sarhuel Marshall had a recipe of the mixture as early as 1827, but there is no pretence that he was the inventor, discoverer or originator of it. As stated, the father disclosed the secret to all his children, and each of them put it up, affixed the label in use, and sold or caused it to be sold for his or her own benefit, during the father's life-time, with his knowledge and in accordance with his often expressed wish. Upon his death it would seem that such sales were continued by the widow and some. of the children as before. Can this Court say, upon the facts of this case, that Charles H. had, prior to his father's death, by adoption and use acquired the exclusive right to the use of the word "Marshall's," or the words "Old Dr. S. Marshall's," as a trade-mark upon the mixture so put up and sold by him and his wife. JUNE, 1.88 1. 505 82 Marshall, et at. vs. Pinkham. 3. It must be remembered that the theory upon which actions for the infringement of a trade-mark are maintained, is that the law will not allow one person to sell his own goods as and for the goods of another. It is to prevent fraud and imposition upon the public, as well as the invasion of private rights. In Singleton v. Bolton, 3 Douglass, 293, the plaintiff's father sold a medicine called "Dr. Johnson's Yellow Ointment." After his death, his son, the plaintiff, continued to sell the same medicine, marked the same way. The defendant also sold the same medicine, with the same mark upon it, and so the plaintiff brought the action for infringement, but was non-suited. A rule for a new trial was discharged by Lord Mansfield, who said: "If the defendant had sold a medicine of his own under the plaintiff's name or mark, that would be a fraud for which an action would lie. But here both the plaintiff and defendant used the name of the original inventor, and no evidence was given of the defendant having sold it as if prepared by the plaintiff. The only other ground on which the action could be maintained, was that of property in the plaintiff, which was not pretended, there being no patent, nor any letters of administration." In Canham v. Jones, 2 Vesey cr Beanies, 218, it appears that one Swainson was for thirty years the sole proprietor of the secret or recipe for preparing the medicine called "Velno's Vegetable Syrup," which he had purchased for ^6,000, and by his will be- queathed the same to the plaintiff, who, after the testator's death, continued to make and sell the same preparation as specified by the recipe. The defendant had been employed in preparing the syrup for Swainson, but never knew the complete composition, as Swainson always added other essential ingredients; but after his death the defendant made at his residence and sold a medicine under the name of "Velno's Vegetable Syrup," and represented that it was precisely the same as that made and sold by the late Mr. Swainson. On demurrer it was held that the bill could not be maintained. Plumer, V. C, said: "The bill proceeds upon an erroneous notion of exclusive property now subsisting in this medicine, which Swainson, having purchased, had a right to dis- pose of by his will, and, as it is contended, to give the plaintiff 506 SUPREME COURT, STATE OF WISCONSIN. Marshall, et at. vs. Pinkham. 8J3 the exclusive right of sale. If this claim of monopoly can be maintained, without any limitation of time, it is a much better right than that of a patent." The Court then goes on to state that the case did not come within the class of cases "in which the Court had restrained a fraudulent attempt by one man to invade another's property," nor where one appropriates to himself the benefit of another's good -will, nor of one person falsely represent- ing himself to be another, or his trade or production to be the same as another, thus combining imposition on the public with injury to the individual. The Vice-Chancellor, in closing, said : "The defendant does not hold himself out as the representative of Swainson, setting up a right in that character to the medicine pur- chased by him, but merely represents that he sells, not the plain- tiff's medicine, but one of as good a quality. He is perfectly at liberty to do so. If any exclusive right in this medicine ever ex- isted, it has long expired." In The Leather Cloth Co. v. The American Leather Cloth Co., n Jurist, JV. S., 513, Lord Cranworth, among other things, said: "Difficulties, however, may arise where the trade -mark consists merely of the name of the manufacturer. When he dies, those who succeed him (grandchildren, or married daughters, for in- stance), though they may not bear the same name, yet ordinarily continue to use the original name as a trade-mark; and they would be protected against any infringement of the exclusive right to that mark. They would be so protected, because, according to the ways of the trade, they would be understood as meaning no more by the use of their grandfather's or father's name, than that they were carrying on the manufacture formerly carried on by him. Nor would the case be necessarily different, if, instead of passing into other hands by devolution of law, the manufactory were sold and assigned to a purchaser. The question in every such case must be, whether the purchaser, in continuing the use of the origi- nal trade-mark, would, according to the ordinary usages of trade, be understood as saying more, than that he was carrying on the same business as had been formerly carried on by the person whose name constituted the trade-mark." Page 516. JUNE, l88l. 507 82 Marshall, et al. vs. Pinkham. The case before us differs from most cases in the fact that the name of the father had, for many years during his life, been at- tached to this mixture or liniment, whether put up and peddled out by his children or himself, and that it was the reputation of the liniment acquired by such peddling, instead of a particular place of trade, which gave it whatever value it had. 4. Upon the authorities cited it would seem to be very certain that Charles H. never acquired an exclusive right to the use of the word "Marshall's" or "Old Dr. S. Marshall's," upon the lini- ment put up by him, as against his father, mother, brothers or sisters. If the plaintiff, Charles H., never acquired any such ex- clusive right as against them, it would •seem quite doubtful whether he ever acquired it as against any one. By such diffusive use it maybe that the word "Marshall's" had ceased to perform the office of a trade-mark, as above defined, if it ever in fact had that office. A trade-mark is to prevent fraud and imposition, not to inaugurate and perpetuate them. If old Samuel Marshall, surrep- titiously or by favor of another, obtained the secret or recipe, and made up the mixture and sold it as "Marshall's Liniment," thus representing that he was the inventor or originator of the mixture when in fact it was discovered by another, it would seem to have been an imposition upon the public in its inception. Should such imposition be regarded as condoned by Samuel Marshall's long- continued use, and by his establishing for it a good reputation on account of its virtues and healing properties, yet it may be doubt- ful whether it would, as against the public, survive the appropria- tion and use by each member of his numerous family, and be pro- tected as the trade-mark of each, a decade after his death. The question occurs, whom does the word "Marshall's" point out as the true source, origin or owner of the original genuine mixture, or what particular place of business or sale has it designated dur- ing these many years? If it never in fact, truly so pointed out or designated, or if by its distinctive use, or by the change from "Marshall's" to "Old Dr. S. Marshall's," it ceased to perform that function, then it can no longer be protected as a trade-mark. In Burgess v. Burgess, 17 Eng. L. &> £., 257, John Burgess, the father of the plaintiff, had for some years manufactured and 508 SUPREME COURT, STATE OF WISCONSIN. Marshall, et al. vs. Pinkhaui. 82 sold, at No. 107 Strand, "a fish sauce," under the name of "Bur- gess's Essence of Anchovies." Then he took the plaintiff, his son William R., into partnership, and continued the business under the firm name of "John Burgess & Son," selling the same article under the same name. John died, and the plaintiff, William R., continued the business at the same place, in the name of the old firm, selling the same article under the same name, and employed the defendant, his son William H., on a salary in the business. Subsequently a difficulty arose between father and son, and the latter left the service of the former, and went into business for himself at another place, and commenced selling the same kind of fish sauce under the same name of "Burgess's Essence of Ancho- vies," at what he advertised as "Burgess's Fish Sauce Warehouse, late of 107, Strand," but at a lower price; and the bill charged that the sales were made as and for the article manufactured and sold by the plaintiff, and to deceive and defraud the plaintiff and the public. The Vice-Chancellor granted the injunction stopping the defendant, in so far as his advertisement indicated that he was the same man, and conducting the same business, as "late of 107 Strand," but refused to restrain him from manufacturing and sell- ing "fish sauce," under the name qf "Burgess's Essence of Ancho- vies;" and the appeal therefrom was dismissed. In giving the opinion of the Court, Knight Bruce, L. J., said : "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 them in their own name, and not the less so that they bear the same name as their father; and nothing else has been done in that which is the question before us ***** He (the defendant) carries on business under his own name, and sells essence of anchovy as 'Burgess's Essence of Anchovy,' which it is ***** j^ e only ground of complaint is the great celebrity which, during many years, has been possessed by the elder Mr. Burgess's essence of anchovy. That does not give him such exclusive right, such a monopoly, such a privilege, as to prevent any man from making essence of anchovy, and selling it under his own name." ^. C, 17 Jurist, 292. JUNE, 1 88 I. 509 82 Marshall, et al. vs. Pinkham. In James v. James, L. R., 13 Eg. Cas., 421, it was held, per Lord Romilly, M. R., that "any person who has, without the use of unfair means, become acquainted with the mode of compound- ing a secret, unpatented preparation, may, after the death of the original discoverer, make and sell the compound, describing it by the name of the discoverer; provided he does not lead the public to suppose that his preparation is the manufacture of the succes- sors in business of the original discoverer; but he must not assert that his is the only genuine article, or suggest that the article manufactured by the successors of the original discoverer is spurious." iS. C, 2 Eng. , 365. In Massam v. Thorby' s C. F. Co., 6 Ch. Div., 574, it was held, per Malins, V. C., that "any person who has become acquainted with the process of manufacturing an article which is in general secret, is entitled to manufacture it; and if the name of the first manufacturer has become attached to the article, any person after- wards manufacturing it is entitled to describe it by the name of such original manufacturer; and if he happens to be of the same name as the original manufacturer, he may use his name in de- scribing his business, or allow it to be used by a company formed by him for the purpose of earring on the business, notwithstand- ing that the representatives of the original manufacturer continue to carry on the old manufacture under the old name." £. C. , 23 Eng., 175. In Meneely v. Meneely, 62 N. Y., 427, it was held that "a per- son cannot make a trade-mark of his own name, and thus debar others having the same name from using it in their own business. Every man has the absolute right to use his own name in his own business, even though he may thereby interfere with and injure the business of another bearing the same name, provided he does not resort to any artifice or do any act calculated to mislead the public as to the identity of the establishments, and to produce injury to the other beyond that which results from the similarity of the names." To the same effect are Gilman v. Hunnewell, 122 Mass., 139; CarmichaeL v. Latimer, n R. I., 395. In Lea v. Deakin, 18 A. L. R., 3,22, Judge Drummond refused to restrain-the application of the word "Worcestershire," to sauce, on 5IO SUPREME COURT, STATE OF WISCONSIN. Marshall, et al. vs. Pinkham. 82 the ground that the name had become generic, and that persons residing at a place of that name in England, and who there manu- factured the sauce and sold it by that name, did not thereby ac- quire the exclusive use of the same as a trade-mark. In Cheavin v. Walker, 5 Ch. Div., 850, (S. C, 22 Eng., 513), S. Cheavin and his son, G. Cheavin, manufactured and sold filters, which had been patented by the father, S. C, under the title and marked with the label as "S. Cheavin's Improved Patent Gold Medal Self-Cleaning Rapid Water Filters. ' ' After the father died, and the patent having expired, G. C. substituted his name in the place of his father's, and continued the manufacture and sale under the same name so modified, above which was a medal- lion containing the royal arms, surmounted by the words "By Her Majesty's Royal Letters Patent." The defendant left the employ of G. C, and began manufacturing and selling in the same town for himself filters similar in appearance to G. C's, and inscribed with "S. C's Patent Prize Medal Self-Cleaning Rapid Water Filters; Improved and Manufactured by Walker, Bright- man & Co.;" and it was held by the Court of Appeals, reversing the Vice-Chancellor's decision: — "First, that the label used by the plaintiff was not a trade-mark, but only a description of the article as made according to S. C's patent, which was common to all the public; secondly, that there was nothing in the defendant's label calculated to mislead the public by a fraudulent imitation of the plaintiff's label, thirdly, that the plaintiff's label coupled with the medallion of the royal arms, constituted a false representation that the patent was still subsisting, and disentitled the plaintiff to relief by injunction." In Singer Manufg Co. v. Wilson, 2 Ch. Div., 434, (S. C, 16 Eng., 827), it was held, in effect, on appeal, affirming the decree of the Master of the Rolls dismissing the bill, that "when a manu- facturer, A. (Singer), has acquired a reputation in the market, so that the goods made by him are commonly known by his name, but is not possessed of any patent, a rival manufacturer, B. (Wil- son), being entitled to imitate A's goods, is entitled also, pro- vided that he does not place A's name on his own goods, to ad- vertise his goods and offer them for sale by the name of A. (Singer), JUNE, l88l. 5IO 8 2 Marshall, et al. vs. Pinkham. if he takes care to state clearly at the same time that the goods which he sells are manufactured by himself." That case was sub- sequently reversed in the House of Lords, but without prejudice to any question in the case, in the event of further evidence being given, which was thereby authorized. 3 Appeal Cas., 376; £. C, 24 Eng., 272. The syllabus of the case may seem to be in con- flict with some of the cases cited, but it was really reversed on account of the irregularity of the proceedings, and because it was not essential for the plaintiffs to prove actual intent to deceive purchasers to make out & prima facie case; but that if the defend- ant's advertisements were calculated to mislead an unwary pur- chaser of the machines into the belief that he was purchasing those manufactured and sold by the plaintiffs, then they were prima facie entitled to an injunction; and all other questions were expressly reserved by the Lord Chancellor until further evidence should be adduced. Applying the rules governing the authorities cited, to the case at bar, we are forced to conclude that any citizen had a perfect right to manufacture and sell the mixture or liniment formerly manufactured and sold by old Samuel .Marshall. 5. It is equally clear that any of the Marshall children, or any other person by the name of Marshall, having acquired a know- ledge of the compound, had a perfect right to manufacture and sell it, by himself or others, in his own name, even against the protest of old Samuel Marshall, provided he did not do it in such way as to be likely to mislead ordinary purchasers, proceeding with ordinary caution, into the belief that they were purchasing the liniment manufactured and sold by old Samuel Marshall him- self. If this could be rightfully done, contrary to his wish and against his protest, it most certainly could be done by his children, as it was, with his expressed approbation. If such right to manufacture and sell existed as against old Samuel Marshall him- self, then it most certainly did as against any one of his children. If none of his children could, in the case supposed, be restrained by the father during his life, it is equally certain that they could not be restrained by another, or even his representative, after his death. It would also seem to follow, from the cases cited, that 512 SUPREME COURT, STATE OF WISCONSIN. Marshall, et al. vs. Pinkham. 82 on the death of old Samuel Marshall (assuming that no one suc- ceeded to the good-will of his business), any citizen would have the legal right to manufacture liniment composed of the same in- gredients and made in the same way as he manufactured that sold by him, and also, in making sales, to describe it as such. 6. Upon that assumption the words " Old Dr. S. Marshall's Celebrated Liniment" were merely descriptive of the compound, and, if truthfully applied by the defendant in making sales, no one could rightfully complain, as no one had any patent upon it or exclusive right to the use of any words which ap'tly describe it. Upon his death, with no successor to the good-will of his business, those words would cease to indicate origin or ownership, and hence, cease to be a trade -mark. There is no pretence that old Samuel Marshall ever, in the manufacture and sale of this liniment, perpetrated any actual or constructive fraud or deceit upon the business of Charles H. but on the contrary Exhibit B, which Charles H., testified thai he never used, and which it appear that the father, and other children under his aurhority, did use, closes with these word : " N. B. , Dr. Marshall will hold himself responsible for the genuineness of no preparation which does not bear his own trade-mark of the horse's head." From this it would naturally be inferred that, in the opinion of the father, Charles H. was not selling the genuine mixture ; but the fact that Charles H. knew the formula or recipe would seem to indicate that he did sell the same compound. That postscript or notice does not seem to have been used by the defendant or any of the children after the death of the father. There is noth- ing in the finding, and there seems to be no evidence, which would warrant us in holding that the defendant did anything in adver- tising and selling his mixture to lead the public to suppose that he was the successor of old Samuel Marshall, or that his was the only genuine article, or that the plaintiffs' mixture was spurious, or that he was selling the same as, and for the liniment manufactured by the plaintiffs ; and without some of these things being done there would seem to be no ground for an injunction, within the doctrine of the above authorities. JUNE, I88I. > 513 82 Marshall, et at. vs. Pinkham. Again, the long delay of Charles H to assert an exclusive right to use the words " Old Dr. S. Marshall's Celebrated Liniment," would of itself, on a proper showing, seem to be an impediment to his protection in the exclusive use of them. Beard v. Turner, 13 L. T. P., 746; Flavell v. Harrison, 19 Eng. L. cV Eq., 15; Lea v. Deakin, 18 A. L. P., 322. 7. There is still another view of this case deserving notice. There is no claim that old Samuel Marshall, much less Charles H. actually discovered or invented the mixture or compound. There is no pretence that either had the exclusive right, during the life of the father, to manufacture and sell it under the name of "Marshall's Rheumatic Liniment," or " Old Dr. S. Marshall's Celebrated Liniment.'' These facts being admitted, it would seem to be at least extremely doubtful whether Charles H. ever acquired the exclusive right to their use as a trade -mark ; and if such exclusive right was doubtful, it would seem to be contrary to the practice in equity to grant an injunction in the first instance. In Farina v. Silverlock, 6 De Gex, M. &* G-, 214, it was held, by Lord Chancellor Cranworth, that, "in a case where the mark consisted of a label in a certain form, and it was shown that in many instances labels the same as or similar to it might be sold for a legitimate purpose, the Court, in the absence of any proof of actual fraud, refused to restrain the printing and sale of such labels until the manufacturer, who alleged that they were used for a fraudulent purpose, had established his case by an action at. law. " In Spottiswoode v. Clark, id Jurist, 1043, it was held by the Lord Chancellor, on a bill to restrain the defendant from selling a mark alleged to be a fraudulent imitation of the plaintiff's, "that, it not being perfectly clear that the plaintiff had a legal right, the injunction prayed for by the bill ought not to be granted." This is especially the rule where the plaintiff is him- self seeking to deceive the public. Pidding v. How, 8 Simons, 417; Motley v. Downman, T,Mylne-& Cfaig, 1; Clark v. Free- man, 11 Bevan, 112; Flavell v. Harrison, 19 Eng. L. cV Eq., 15; Perry v. Truefitt, 6 Beavan, 66. Mr. Browne tersely states the true rule when he says: "The right to the use of the mark must be exclusive of all other persons. A trade-mark is an emblem 33 514 SUPREME COURT OF WISCONSIN. Marshall, et al. vs. Pinkham. 8 2 of a man just a much as his written signature, and is used to denote that an article of merchandise has been made by a certain person, or that it has been sold or offered for sale by him. If the same mark were to be used by different persons for the same species of goods, it would lead to inextricable confusion ; and its true and only legitimate purpose would be overturned, for then it would lack the essential element of an indication of origin or ownership." Section 303. From this it would seem that Charles H. never had in himself any such exclusive right in the words in question as would authorize a Court of Equity to restrain others from using the same bona fide in the sale of their own goods, and without any tendency to deceive. The only remaining question is, whether the wife of Charles H. got such exclusive right by way of the alleged purchase from the mother, and the discovery after her death of the existence of a lost will left by the father, and the establishment of it as such, and the admitting of it to probate. 8. As suggested on the argument, neither the mother, Mary J., ' nor the plaintiff, Mary W., could get any title to the personal property, business, and good-will of the business of old Samuel Marshall, except through an administration upon his estate, and an order of distribution ; and as no order of distribution was ever made, nor administrator or administratrix was ever appointed , it follows that the plaintiff, Mary W., got nothing through the alleged purchase. Murphy v. Hanrahan,\o Wis., 485. To the same effect is Singleton v. Bolton, supra. As no exclusive right of either of the plaintiffs was invaded, they were not entitled to an injunction by reason of any mere absence of such right on the part of the defendant. By the Court : The judgment of the Circuit Court is affirmed. JULY, l88l. 515 8 3 Pepper vs. Labrot, et at. 83 CIRCUIT COURT UNITED STATES, DISTRICT OF KENTUCKY. In Equity. Pepper vs. Labrot, and another. Decided July, 1881. 1 Reported 8 Federal Rep., 29. "Old Oscar Pepper Distillery" Case. Trade-Mark — " Old Oscar Pepper Distillery" — Descriptive of Place of Manufacture — Sale of Premises — Right of Purchaser to Trade-Mark. The complainant, in 1874, was the owner by inheritance, of a tract o£ land on which his father, during his life-time, for many years had carried 011 a distillery, manufacturing whiskey, which, from the name of the distiller, became known as " Old Crow Whiskey," and the distillery as Oscar Pepper's Old Crow Distillery. The complainant erected a new distillery and manufactured whiskey, branding on the heads of the barrels " Old Oscar Pepper Distillery; Hand-Made Sour Mash; James E. Pepper, Proprietor, Woodford County, Ky.," and used the same as a trade-mark in circulars, bill-heads, letter-heads, etc. Subse- quently the complainant became bankrupt, and his distillery premises, 5 16 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et al. 83 buildings, machinery, etc., were sold by his assignee under the name of the " Old Oscar Pepper Distillery," and became the property of the defendants, who operated the same by the manufacture of whiskey, using the trade-mark adopted by the complainant, substituting their own names as proprietors. A bill was filed by complainant to enjoin the use of the trade-mark, the defendants filing a cross-bill asking to be protected in their claim to its exclusive use. Held: i. That the trade-mark was a description of the place of manufacture, and did not designate, either expressly or by association, the personal origin of the product. / 2. That the complainant, having ceased to be the owner of the distillery and proposing to use the name on whiskey to be manufactured else- where, had no right to the exclusive use of the trade-mark as against the defendants, who could use it as a truthful description of their own production. 3. That the complainant had no right to use it at all, because to do so would be to deceive and mislead the public by a false representation in respect to the place of the manufacture of his goods. 4. That the defendants, by virtue of their ownership of the Old Oscar Pepper Distillery, succeeded to the exclusive right to use that name for their premises and place of manufacture, and to brand it on the packages of their merchandise for the purpose of truly indicating it as a product of a distillery well known by that name. t Trade-Mark. — Bill for injunction and account, and cross-bill for injunction. Final hearing upon pleadings and proofs. Barrett & Brown and John Marshall, for complainant. 1 . Complainant's trade-mark embodied his family name, and was therefore peculiarly appropriate. See Ainsworth v. Walmesly, 44 L. J., 252. The right to use the name passed from father to son as a. personal right, not as a chattel real. See Dixon Crucib'le Co. v. Guggenheim, Cox's Trade-Mark Cas., 577. 2. Did the trade-mark pass to the assignee in bankruptcy and from him to defendants by their purchase ? A general assignment under State laws does not carry a trade-mark. Bradley v. Norton, 33 Conn., 157. Vendee in bankruptcy acquires no right as against bankrupt to a trade -mark which he used to designate his own preparations. Hemboldv. Hembold Co., 53 How. Br., 453. JULY, l88l. 517 83 Pepper vs. Labrot, et al. 3. Conveying the distillery as the < 'Old Oscar Pepper Distillery' ' did not give defendants a right to use the term as descriptive of their whiskey. Dixon Crucible Co. v. Guggenheim, Cox s Trade- Mark Cas., 577; Howcv. Searing, Id., 244; McAydlev. Peck, Id., 312; Woodward v. Lazar, Id., 300. By purchasing the realty, the vendee does not acquire the right to trade-marks used upon it, and one may use his trade -mark in a new place, though it was local in its original significance. Wotherspoonv. Currie, 23 L. T. Rep., 443; $£.&/. App., 508. W. Lindsay, for defendants, cited. — Leather Cloth Co. v. Am. Leather Cloth Co., Cox s Am. Trade- Mark Cas., 704; Congress Spring Co. v. High Rock Congress Spring Co., Id., 630; Kidd v. Johnson, 100 U. S., 620; G. &* H. Manuf'g Co. 'v. Hall, 61 A 7 . Y., 229; Carmichael v. Latimer, n R. I., 407; Hallv. Barrows, 4 De Gex, Jones 6° Smith, 151; Booth v. Jar- rett, 52 How. Pr., 169; Canal v. Clark, 13 Wall., 325, referred to in Mr. Justice Matthews' opinion; and also Llewellen v. Ruth- erford, 49 Barb., 588; Newman v. Alford, 49 Barb., 588. Before Mr. Justice Matthews and Barr, D. J. Matthews, Circuit Justice: This is a bill in equity filed October 23, 1880, the complainant being a citizen of the State of New York, and the defendants citizens of Kentucky. It is alleged that both parties are, and have been, engaged in the manufacture and sale of whiskey. The complainant claims to be the originator, inventor, and owner of a certain trade-mark' and brand for whiskey made by him, consisting of the words "Old Oscar Pepper," and also of an abbreviation thereof, consisting of the letters " O. O. P." He alleges that the said words and let- ters were and are a fanciful and arbitrary title and trade-mark and brand intended to designate and identify whiskey of his manufacture, the use of which he began in 1874, continued since by branding and marking the words on each barrel, and using the letters as an abbreviation in correspondence and contracts con- Sl8 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et al. 83 cerning the article; the whiskey so designated having acquired that name, and being well and favorably known thereby. He says that the said words and trade-mark were made up in fact of the family name <>f the complainant, and embodied the name of his father, and had never before been so used. He avers that the whiskey made by him, and so branded, marked, and known, was very carefully manufactured, and of excellent quality, and of great reputation in' the market, commanding a ready sale at pro- fitable prices, and was identified by said trade -mark as of the complainant's make, whereby the said trade-mark has become of great value to him. He alleges that the trade-mark, "Old Oscar Pepper," was used by him by burning the sarrie upon and into the heads of barrels containing whiskey made by him, in a form set out as an exhibit to the bill. A copy is here set out as follows: '6* CAB -*v Distillery. ~*K - Hand Made * SOUR MASH Jas. E. Pepper, O Proprietor, a^ The same device on a smaller scale was printed upon the letter heads and bill-heads and business cards used by him in corres- ponding, and other business, concerning his whiskey; and was also attached to and pasted upon all small packages and samples of the whiskey made by him, and was used to identify, and was universally recognized as identifying, the whiskey made by him. On November 13, 1877, the complainant procured a certificate of the registration of said trade-mark under the laws of the United States. JULY, l88l. 519 S3 Pepper vs. Labrot, et al. The bill charges that the defendants have sought to appropriate the complainant's trade-mark to their own use, and are using, upon barrels of whiskey made by them, a similar device, a copy of which is exhibited. It is as follows: O* 0AB *£ , <> DISTILLERY. yt> ESTABLISHED ^ 1S38 IHAND MADE SOUR MASH Labrot & Graham, ,< ^i PROPRIETORS. A/ It is alleged that this is done by the defendants with the wrong- ful and fraudulent design to procure the custom and trade of per- sons who are or have been in the habit of buying, vending, or using the genuine whiskey made by the complainant, and of ille- gally and fraudulently promoting the introduction and sale of the defendants' own whiskey, under the cover and reputation of the complainant's trade-mark, and of inducing unsuspected persons to purchase the whiskeys of defendants as and for the genuine "Old Oscar Pepper" whiskey, manufactured by the complainant. It is charged, also,' that with like intent the defendants are using the same device and trade-mark upon their letter-heads, and busi- ness cards, and other papers and advertisements, and upon pack- ages containing their whiskey. It is also charged that this con- duct of the defendants is injurious to the complainant in the sale of his whiskey, and in the profits thereof, and that, by reason of the inferior quality of the whiskey sold by defendants under such trade-mark, the reputation of the complainant's whiskey is greatly prejudiced and injured in the markets of the country, and a fraud and deception practiced upon the public, many of whom are in- 520 U. S. C. C. DISTRICT OF KENTUCKV. Pepper vs. Labrot, e! al. 83 disced to purchase the defendants' whiskey, believing it to be the manufacture of the complainant. The bill accordingly prays for an injunction and an account. The defendants filed an answer in which they admit that they have been and are engaged in manufacturing and selling whiskey, their distillery being in Woodford County, Kentucky, and long known and designated as the "Old Oscar Pepper Distillery." They deny that the complainant is the originator or owner of the trade- mark or brand for whiskey made by him, as claimed, and deny that the, words "Old Oscar Pepper," or the abbreviation of them, by letters " O. O. P.," have ever been used as an arbitrary or fanciful title or trade-mark for whiskey, or that they were ever so used by the complainant, and allege that they were never used by him except in connection with the word "distillery," and then only for the purpose of showing that the whiskey in reference to which they were so used, was manufactured at and was the pro- duct of the Old Oscar Pepper Distillery. The defendants claim that the use of the same by the complainants as a brand for their whiskey, manufactured elsewhere, would be a fraud on the public, as well as on the defendants. They say that several years since the complainant became the owner of 33 acres of land in Wood- ford County, Kentucky, known as the land used by Oscar Pepper for distillery purposes, upon which there was a distillery, and ma- chinery, warehouse, and other improvements; that said distillery, during the life-time of Oscar Pepper, the father of the complain- ant, became famous because of the superior quality of the whiskey there produced, which was attributed, by dealers in whiskey, to the peculiar character and properties of the water used in the pro- cess of distillation; that in 1874, the complainant, in company with one E. J. Taylor, Jr., with whom he was associated in busi- ness, operated said distillery, and formally named it the "Old Oscar Pepper Distillery," and procured a large number of iron signs to be made and distributed throughout the country, contain- ing a correct drawing of the distillery and warehouse building, and an accurate view of the old Oscar Pepper homestead or dwell- ing, which drawing and view they surrounded with the words, in a circular form, above the same, "Old Oscar Pepper's Distillery," JULY, l88l. 521 83 Pepper vs. Labrot, et al. and below, in a straight line, "Woodford Co., Kentucky," and thus, as is claimed, fixed and determined the name of said distil- lery;. They also procured an iron brand to be made, and with it burnt into the head of each barrel of whiskey manufactured in said distillery, the words — o Hand Made \\ SOUR MASH" I \\ James E. Pepper, / for the purpose, as is alleged, of identifying it as the product of the Old Oscar Pepper Distillery. It is also alleged that the com- plainant advertised his business in a circular, as follows: "Having put in the most thorough running order, the old dis- tillery premises of my father, the late Oscar Pepper, (now owned by me), I offer to the first-class trade of this country, a hand -made sour mash, pure copper whiskey of perfect excellence. The cele- brity attained by the whiskey made by my father was ascribable to the excellent water used, (a very superior spring), and the grain grown on the farm adjoining by himself, and to the process ob- served by James Crow, after his death, by William F. Mitchell, his distillers. I am now running the distillery with the same dis- tiller, the same water, the same formulas, and grain grown upon the same farm." He also circulated a similar certificate from his distiller, Mit- chell, who said: , "I am employed by James E. Pepper as distiller, and the whiskey I now make is from the same formula as the celebrated 522 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et al. 83 Crow whiskey manufactured by James Crow and myself for his father, (the late Oscar Pepper), at the same place, and is of the same excellence, being identical in quality. I use the same water, the same grain, the same still." It is also alleged that the complainant, in March, 1877, was declared a bankrupt, and that among other assets the tract of land and the distillery thereon, with all the appurtenances and fix- tures, were sold by the assignee, and by mesne conveyances be- came vested in the defendants, who have since operated the same for the manufacture of whiskey; and that the complainant in the meantime has been, and is now, operating a distillery in Fayette County, Kentucky, as the sole place of the manufacture of his whiskey, and that consequently he cannot use the brand formerly used by him while operating the "Old Oscar Pepper Distillery," without making a false and fraudulent representation as to the place of manufacture. The defendants admit that since they have owned and operated the Old Oscar Pepper Distillery, they have used the brand set out in the pleadings, but merely for the purpose of identifying their whiskey as the product of that distillery, as follows: They claim the right so to do by virtue of their ownership of the distillery, of which they say that is the proper name. JULY, l88l. 523 83 Pepper vs. Labrot, et al. On November 23, 1880, the defendants also filed their cross- bill, setting up in substance the same facts, and claiming that they are entitled to the exclusive use as a trade-mark of the brand described in the pleadings as used by them, and praying to be protected therein by a perpetual injunction. •■ To this cross-bill the complainant filed his answer, insisting upon his claims to the injunction and right to the exclusive use of the trade-mark, "Old Oscar Pepper," and the abbreviation of "O. O. P.," as applied to whiskey. He alleges that his father, during his life-time, Oscar Pepper, operated a distillery on the premises mentioned, and manufactured an article which became well and favorably known to the trade as "Crow" or "Old Crow" whiskey, from the name of the distiller, and that in con- sequence the distillery became known as the "Old Crow Distil- lery;" that after his father's death, the distillery tract having come into his possession, he leased it to W. A. Gaines & Co., who continued the manufacture of whiskey under the same trade-name and mark of "Crow," or "Old Crow," but that afterwards the complainant, having gone into the business himself, built on the same site an entirely new distillery, and manufactured whiskey which he called by the name of "Old Oscar Pepper," and so marked and branded the packages, and thereby originated and adopted it as his trade-mark to identify and distinguish the whiskey made by him, and it became well and favorably known as such. He says that in the manufacture of his whiskey, he used neither the same distillery building at which the "Crow" whiskey was manufactured, nor the identical spring of water which had been used in connection with it, but another spring in the same vicinity of the same quality; all springs of water in the same geological formation throughout the Counties of Woodford, Fayette, Bour- bon, Harrison, and the blue-grass section of Kentucky being sub- stantially alike in quality, and the whiskey made from one indis- tinguishable from that made, with equal care and skill and by the same process, at any other. And the complainant insists that the name " Old Oscar Pepper" was never applied to the distillery premises until after he had adopted it as the name of whiskey made by him, and then only 524 U, S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et al. 83 as indicating the place where he made his "Old Oscar Pepper" whiskey; and that it was not the name of the distillery which was applied to designate the whiskey made there, but the name of the whiskey which was applied to designate the distillery at which it was made, so far as it was ever so known or called. He charges that the use by the defendants of the words "Old Oscar Pepper Dis- tillery," as descriptive of the locality, is a subterfuge and evasion, their real intent being to use the words as describing their make of whiskey, and thereby wrongfully to use complainant's trade- mark and pirate his trade. General replications perfect issue arising both on the original and cross-bills, and the cause has been submitted on final hearing upon the pleadings and proofs. It is manifest that the controversy between the parties, in the first instance, is one of fact. The construction of the complainant is, that the words "Old Oscar Pepper" and the abbreviation of them, " O. Q. P. /'con- stitute a brand or mark originally adopted by him to designate, whiskey as made by him, without reference to the place of manu- facture; and that by use and recognition it has become associated in the minds of dealers and the public with the article manufac- tured by him, so as to constitute its name in the trade, whereby to distinguish it from a similar article made by any and all others. On the other hand, the defendants claim that the words in ques- tion were originally used, and their use subsequently continued, merely to designate the fact that the whiskey contained in the pack- ages so marked or spoken of in advertisements, circulars, signs, etc., on which the mark was burned or printed, was made at the distillery so designated; and that that was done because the distillery, or its predecessor on the same site, had acquired a repu- tation in connection with the manufacture of whiskey which was sufficient to recommend any article made at the same place. Undoubtedly the interference, from the plain meaning of the words themselves, supports strongly the claim on the part of the defendants. The complainant's brand or mark, as claimed and used by him, is "Old Oscar Pepper Distillery, Woodford Co., Ky.," James E. JULY, l88l. 525 8 3 Pepper vs. I.abrot, et al. Pepper, proprietor; the words "hand-made sour mash" describe the quality of the whiskey; and as to the rest, the plain and une- quivocal meaning is that it is the product of the "Old Oscar Pepper Distillery," of which James E. Pepper is proprietor. The complainant in his testimony endeavors to explain his use of the word "distillery" in this connection, so as to make its use consistent with his claim that the words "Old Oscar Pepper" were intended to designate the whiskey and not the distillery. He says: "In branding the ends of my barrels, I put the word 'distillery' to show that the 'Old Oscar Pepper' whiskey was a straight whiskey made by me, and at my own distillery, and not a compounded whiskey; and the use of the word 'distillery,' on the heads of the barrels following the trade-mark, indicated a straight whiskey as distinguished from a compounded whiskey." But the explanation does not seem sufficient. The use of the word "distillery" does, indeed, seem to advertise the fact that the whiskey is distilled, and not rectified, but it does so by designa- ting the spirits contained in the package as the product, not merely of a distillery, but of the particular distillery known as the "Old Oscar Pepper Distillery," of which James E. Pepper is pro- prietor. It is true that Beecher, one of the firm of Ives, Beecher & Co., the merchants who sold the complainant's whiskey in New York, testifies that the whiskey acquired its reputation under the name of "Old Oscar Pepper" or "O. O. P." whiskey, and known by that • name, and inquired after and bought and sold by that designation. He says my firm buy whiskey under the name of "Old Oscar Pep- per." But he immediately explains that "we buy as ' Old Oscar Pepper,' whiskey to be made at the distillery where James E. Pep- per first made the whiskey known to the trade by that name." (Answer to the twenty-third interrogatory). And in answer to the seventh cross-interrogatory he says : "At the time my firm commenced dealing in 'Old Oscar Pep- per' whiskey, that name added to the reputation and salability of the whiskey, for the reason that that was the name of James E. Pepper's father, and his father had made good whiskey at that 526 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et al. 83 very distillery for several years previous to the making of any by James E. Pepper." It is beyond dispute that Ives, Beecher & Co. introduced the complainant's manufacture of whiskey to the trade under the name of Old Oscar Pepper whiskey, upon the credit of the old distillery of Oscar Pepper, and recommended them as of superior excellence because they were the product of that distillery. This was done by advertisements in circulars, containing certificates and affidavits, one from James E. Pepper himself, that he had put in the most thorough running order "the old distillery of my father, the late Oscar Pepper, now owned by me;" that "the celebrity attained by the whiskey made by my father was ascribable to the excellent water used (a very superior spring) and the grain grown on the farm adjoining by himself, and to the process observed by James Crow, after his death by W. F. Mitchell, his distillers;" that "I am now running the distillery with the same distiller, the same water, the same formula, and grain grown upon the same farm, consequently my product being of the same quality and excell- ence." Another certificate and affidavit so published was from his mother, in which she stated that her son, James E. Pepper, is the owner of the old distillery property, situated in the County of Woodford, State of Kentucky, formerly owned by her deceased husband, Oscar Pepper, and known as the "Old Crow Distillery." "The buildings have been thoroughly improved. Mr. W. F. Mitchell, who distilled for the late Oscar Pepper, succeeding James Crow, is employed by my son, and the product is of the highest excellence, and recognized as fully up to the standard of the cele- brated old product from the same stills." And the distiller, Mitchell, also certifies: "I use the same water, the same grain, and the same still." It does not avail the complainant now to repudiate these repre- sentations, or to insist that they are altogether immaterial. It may be true, as he now says, that in point of fact his distillery was altogether distinct as a building and machinery from that so long operated by his father, and that he did not use the same spring of water and the same stills; and it may be equally true that, so far as the intrinsic quality of the whiskey is concerned, the circum- JULY, l88l. 527 83 Pepper vs. Labrot, et al. stances referred to were altogether unimportant, for the reason that the product of equally good materials, made in the same geo- logical region, in the best manner known to those engaged then in the manufacture, could not be distinguished from the favorite article known by the name of any particular distillery. Neverthe- less, it remains quite certain, from the proofs in this case, that the complainant succeeded in establishing a market for his manu- facture, upon the special belief of the public that it must be like that made by his father, because made at the same locality and with all the advantages it was thought to confer. In other words, he sought and obtained for his own manufacture, by the use of the name of his father's distillery, the reputation established by Oscar Pepper for his own. Oscar Pepper manufactured at his distillery for many years pre- vious to his death in 1865, probably as early as 1838, and the dis- tillery was known in the neighborhood, as some witnesses testify, as Oscar Pepper's distillery. This, indeed, would be most natural. Afterwards, the whiskey distilled there under the management of James Crow became extensively and favorably known as "Old Crow" whiskey, and the distillery acquired the name of the Old Crow Distillery; and that name was used after the death of Oscar Pepper, by successive lessees of the establishment, as a trade-mark to designate its production; but during that period the name of Oscar Pepper, as formerly connected with it, appeared in the brands and marks used by Gaines, Berry & Co. while they were carrying it on. They styled themselves on business cards "Lessees of Oscar Pepper's 'Old Crow' Distillery." In 1874 the trade-mark of "Old Crow" having previously, by Gaines, been transferred to the product of another distillery owned or operated by him or his firm,' the complainant came into possession of his own distillery, and it became known as the "Old Oscar Pepper Distillery." The deed directly to the complainant of the distillery premises, made by a commissioner in pursuance of a decree for partition, refers to an accompanying plat in which the "Old Crow Distillery" is designated; but early in 1875 an agreement was made by the complainant with one E. H. Taylor, Jr., reciting that the former was owner of the premises upon which is situate the old 528 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et al. 83 distillery, which was operated and run by the said Oscar Pepper in his life-time,, and providing means for a thorough reparation of said old distillery, and of operating the same for the purpose of manufacturing copper whiskey of the grade, character, and de- scription of that which was made by the said Oscar Pepper in his life-time, when James Crow and W. F. Mitchell were his distillers. The complainant having, upon his own petition, been declared a bankrupt, filed the required schedule of his assets and liabilities, in which he described the tract of land inherited from his brother as including the "Old Oscar Pepper Distillery;" and as such it was known at the time the title became vested in the defendants. The clear result of the whole evidence seems, in our opinion, to be that the complainant adopted the name of "Old Oscar Pepper Distillery" as the name of his distillery, in order that the whiskey manufactured by him there might have the reputation and what- ever other advantages were to result from that association. That distillery having now become the property of the defend- ants by purchase from the complainants, can they be denied the right of using the name by which it was previously known in the prosecution of the business of operating it, and of describing the whiskey made by them as its product? Can the complainant be permitted to use the brand or mark formerly employed by him, to represent whiskey made by him elsewhere as the actual product of this distillery? Both these questions, in our opinion, must be answered in the negative. The most recent statement of the law applicable to this subject by the Supreme Court of the United States is found in the case of The Anwskeag Manuf g Co. v. Trainer, 101 U. S., 51. In that case Mr. Justice Field said : "The general doctrines of the law as to trade-marks, the sym- bols or signs which may be used to designate products of a particu- lar manufacture, and the protection which the Courts will afford to those who originally appropriated them, are not controverted. Every one is at liberty to affix to a product of his own manufacture any symbol or device not previously appropriated, which will dis- tinguish it from articles of the same general nature manufactured JULY, l88l. 529 83 Pepper vs. Labrot, et at. or sold by others, and thus secure to himself the benefit of increased sales by reason of any peculiar excellence he may have given to it. The symbol or device thus becomes a sign to the public of the origin of the goods to which it is attached, and an assurance that they are the genuine article of the original producer. In this way it often proves to be of great value to the manufacturer in prevent- ing the substitution and sale of an inferior and different article for his products. It becomes his trade-mark, and the Courts will protect him in its exclusive use, either by the imposition of dam- ages for its wrongful appropriation, or by restraining others from applying- it to their goods, and compelling them to account for profits made on a sale of goods marked with it. The limitations upon the use of devices as trade-marks are well defined. The ob- ject of the trade-mark is to indicate, either by its own meaning or by association, the origin or ownership of the article to which it is applied. If it did not, it would serve no useful purpose either to the manufacturer or to the public. It would afford no protection to either against the sale of a spurious in place of the genuine article. This object of the trade -mark, and the consequent limi- tations upon its use, are stated with great clearness in the case of Canal Co. v. Clark, 13 Wall., 1. There the Court said, speak- ing through Mr. Justice Strong, that no one can claim protection for the exclusive use of a trade-mark or trade-name which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed. Nor can a generic name, or a name merely descrip- tive of an article of trade, of its qualities, ingredients, or character- istics, be employed as a trade-mark, and the exclusive use of it be entitled to legal protection." In the case of Canal Co. v. Clark, 13 Wall., 322, it is stated that the — "Office of a trade-mark is to point out distinctively the origin or ownership of the article to which it is affixed; or, in other words, to give notice who was the producer." And that there are some limits to the right of selection will be manifest. It is further said, in that case : 34 "530 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et at. 83 "When it is considered that in all cases where rights to the ex- clusive 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 manufacturer 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. This is the doctrine of all the authorities." "And it is obvious that the same reasons," continues the opinion in that case, "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 manu- facturers, apply with equal force to the appropriation of geogra- phical names designating districts of country. Their nature is such that they cannot point to the origin (personal origin) or owner- ship of the article of trade to which they may be applied. They point only at the place of production, not to the producer, and could they be appropriated exclusively — the appropriation would result in mischievous monopolies." In the same opinion, Mr. Justice Strong quoted, with approval an extract from the opinion in the case of the Amoskeag Manuf. Co. v. Spear, 2 Sandford, Sup. Ct., 509, as follows : "The owner of an original trade-mark has an undoubted right to be protected in the exclusive use of all the marks, forms, or symbols that were appropriated as designating the time, origin, or ownership of the article or fabric to which they are affixed ; but he has no right to the exclusive use of any words, letters, figures, or symbols which have no relation to the origin or owner- ship of-the goods, but are only meant to indicate their names or quality. He 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." Following and applying the principle expressed in the last sen- tence of this extract, Mr. Justice Strong, in the opinion from which we are still quoting, says : "It is only when the adoption or imitation of what is claimed to be a trade-mark amounts to a false representation, express or JULY, l88l. 531 S3 Pepper vs. Labrot, et a/. implied, designed or incidental, that there is any title to relief against it. True, it may be that the use by a second producer, in describing truthfully his product, of a name or a combination of words already in use by another, may have the effect of causing the public to mistake as to the origin or ownership of the product ; but if it is just as true in its application to his goods as it is to those of another who first applied it, and who, therefore, claims an exclusive right to use it, there is no legal or moral wrong done. Purchasers may be mistaken, but they are not deceived, by false representations, and equity will not enjoin against telling the truth." Tried by these principles, it would seem that the trade-mark ■claimed by the complainant cannot be sustained as a designation of whiskey manufactured by him without reference to the place of its production, and that it is not, therefore, a lawful trade-mark at all, in the proper sense of that term. It is rather the trade- name of the distillery itself, of which he was at one time the pro- prietor, but which now is the property of the defendants. Neither by its own meaning, nor by association, does it indicate the per- sonal origin or ownership of the article to which it is affixed. It does not seem to give notice who was the producer. It could be applied by him, with truth, to his goods only while he was owner of the distillery named, and then only, not to all whiskey of his manufacture, but only to that actually produced at that distillery. It can now be used without practicing a deception upon the public only by the defendants. It points only at the place of production, not to the producer. If a trade-mark at all, in any lawful sense, it is only in its use in connection with the article which it truth- fully describes ; that is, whiskey which is actually manufactured at the Old Oscar Pepper Distillery, in Woodford County. In the case of Hall v. Barrows, 4 De Gex, Jones i5^ Smith, 157, there was a trade-mark altogether distinct from the name of the works, being the initials of the names of two of the original firms which owned the works, stamped upon the iron produced at the works. The question was whether, in a sale of the works and business to a surviving partner, the trade-marks should be val- 532 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et al. 88 ued as passing in the sale. The Lord Chancellor, Westbury, said : " There is nothing in the answer or evidence to show that the iron marked with these initials has, or ever had, a reputation in the market because it was believed to be the actual manufacture of one of the two original firms. Now, if I adopted the distinction drawn by the Master of the Rolls between local and personal trade- marks, I should be more inclined to treat this mark as incident to the possession of the Bloomfield Iron Works, for it has been used by the successive owners of such works, and seems to have been used by the last partnership in no other right. In this respect the case resembles that of Motley v. Dowman, 3 My I. &* Cr. 1. " But it is unnecessary to pursue this further, for I am of opinion that these initial letters, surmounted by a crown, have become, and are, a trade-mark, properly so-called — that is, a brand which has reputation and currency in the market; as a well-known sign or quality ; and that as such the trade-mark is a valuable property of the partnership, as an addition to the Bloomfield Works, and may be properly sold with the works, and therefore properly included as a distinct subject of value in the valuation to the sur- viving, partners. "It must be recollected that the question before me is simply whether the right to use the trade-mark can be sold along with the business and iron works, so as to deprive the surviving partner of any right to use the mark in case he should set up a similar busi- nesss. Nothing that I have said is intended to lead to the con- clusion that the business and iron works might be put up for sale by the Court in one lot, and that the right to use the trade-mark might be put up as a separate lot, and that one lot might be sold and transferred to one person, and the other lot sold and trans- ferred to another ; the case requiring only that I should decide that the exclusive right to this trade-mark belongs to the partner- ship as part of its property, and might be sold with the business and work and as a valuable right, and if it might be so sold, it must be included in the valuation to the surviving partner." It will be observed with what pains the Lord Chancellor guards against the conclusion that, even in such a case, the title to the JULY, 1881. 533 83 Pepper Vs. Labrot, et at. trade-mark could be separated from that of the establishment "upon the product of which it had always been used, even when the trade-mark was not the mere name of the place of manufacture, but a trade-mark proper, denoting the personal origin of the manufactured article. The case of Kidd v. Johnson, 100 U. S. , 617, is to the like effect. The trade-mark in that case — " S. N. Pike's Magnolia Whiskey, Cincinnati, Ohio" — was a trade-mark proper ; that is, indicated the personal origin of the manufacture, and was not the mere name of the place of manufacture. Pike sold his establishment to be carried on for the same business by his successors, and with it, the right to use his brands. The Court said, in deciding the case, (p. 620): "As to the right of Pike to dispose of his trade-mark in con- nection with the establishment where the liquor was manufactured, we do not think there can be any reasonable doubt. " 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 manufac- tured at a particular establishment, and acquires a special reputa- tion in connection with the place of manufacture, and that ■establishment is transferred either by contract or operation of law to others, the right to the use of 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. Such is the purport of the language of Lord Cranworth in the case of Leather Cloth Co. v. American Leather Leather Cloth Co., reported in 11 Jur. (N. S.), 513. See, also, Ainsworth v. Walmesley, 54 L. J., 355, and Hall v. Burrows, 10 Jur. (TV. S.), 55." The observations of Lord Cranworth in the Leather Cloth Cases, referred to in this citation, are as follows : 534 U. S. C. C. DISTRICT OF KENTUCKY. Pepper vs. Labrot, et a/. Q 3. <y the use of a symbol or figure, or letter, or other form of device or name. It was distinctly said, for instance, in Coleman v. Crump, (70 N. Y, 578), "neither is it necessary to establish guilty knowledge or fraudulent intent on the part of the wrong- doer. It is sufficient that the proprietary right of the party and its actual infringement is shown." And in the more recent case of Hier v. Abrahams, (82 N. Y, 504), the Court said: "But where the trade-mark consists of a "word, it may be used by the manufacturer who has appropriated it in any style of print, or on any form of label, and its use by another in any form is unlawful, * * * and this accords with the authorities., The goods became known by the name or word by which they have been designated, and not merely by the man- ner or fashion in which the word is written or printed, or the ac- cessories surrounding it, and the unlawful use of the name or word in any form may be restrained." And the doctrine is declared in that case also, that an actual intent to defraud can hardly be deemed necessary to entitle the plaintiffs to restrain the defendants from continuing the unlawful use of a trade-mark, whereby the plaintiffs are sustaining damage; and it is said that the violation of such a right is, in legal con- templation, a fraud. If in this case, for example, it can be • shown that, any confusion is occasioned by the use of tlie name by the defendants in their business, it is a damage. It would involve investigation, and it would, no doubt, lead to labor or create an element which would not necessarily enter into the business of the plaintiff and require consideration if the defendant's paper were not published. The case of Howard v. Henriques, (3 Sandford, 725), sustains the proposition that the use by the defendants of an imitation of the name of the plaintiff's paper should he be restrained. In that ■case 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 " indiscriminately. The defendants named their house the " Irving Hotel." There was no question 552 SUPREME COURT, STATE OF NEW YORK. American Grocer Publishing Co. vs. Grocer Publishing. Co. 8© of resemblance between the two hotels or the two signs. It was. the name that was protected, not the name which plaintiff took, but one of the names by which his hotel was known. In Clement v. Maddick, (5 Jur., \N. S.J, 592), the proprietor of Bell's Life in London and Sporting Chronicle obtained an in- junction 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. In Ingram v. Stiff, '(5 Jur., \N. £.], 947), the London Journal,, a weekly paper, restrained the defendant from publishing a daily London journal. And Mr. Brown in his treatise upon trade- marks, sections 415 to 418, presents a very interesting synopsis of some French cases. In one of the plaintiff's journals, the Moniteur Universal had become known as the Moniteur. The defendant's paper adopted the title Moniteur Official of the French Empire. It was held that the title of a journal is property, and the use of the word Moniteur, either singly or with the qualification Official was en- joined, for the reason that it incontestibly appeared that the Moni- teur Universal, whether as a daily, political or literary Sheet, or as an historical collection, had always been known by the simple title Moniteur. In another case in which the publication was The Press; the Free Press was enjoined, although the papers belonged to different parties and addressed themselves to different classes of readers. In another, the defendants having adopted the title Petit Jour- nal, which was the title of the paper published by the plaintiffs, added the words de la Somme, which were printed in smaller char- acters. 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 usurpation of prop- erty, and consequently an act of unlawful competition. An in- junction was therefore granted forbidding the further use by the defendants of the words Petit Journal. The French cases are in harmony with the decision made in Howard v. Henriques, {supra). In the Dixon Crucible Company v. Guggenheim, (2 Brew., 321), it was said: "The name of a newspaper is a trade-mark, as much OCTOBER, l88l. . 553 86 American Grocer Publishing Co. vs. Grocer Publishing Co. so as a label stamped upon a bale of muslin. Can it be supposed that if some one were to commence the publication in this city of a < Public Ledger ' of the same size, price and style as the one published by George W. Childs, that a Court of Equity would not promptly arrest the career of such a piratical craft by an injunc- tion ! " And in Stevens v. De Conto, (7 Robt., 343), Judge Mo- nell said: "And I have no doubt that the name so long appropri- ated and used of the New York Herald, or the Sun, would be protected as trade-marks." 3. The authorities, with the enlarged doctrine as announced by the Court of Appeals in the cases to which reference have been made, have no doubt of the right of the plaintiffs to the interpo- sition of this Court to protect it from the publication of any paper called the Grocer, or the American Grocer, the plaintiff's publica- tion being well known by either or both of these names. And the result of this review must therefore be to reverse the judgment of the Special Term, and to order a new trial, with costs to abide the event. Judgment reversed, and new trial ordered, with costs to abide the event. Davis, P. J., and Daniels, J., concurred. 554 UNITED STATES PATENT OFFICE. Ex Parte Frieberg & Workham. 8*7 87 IN THE UNITED STATES PATENT OFFICE. Ex Parte Frieberg & Workham. Decided 5 October, 1881. Reported 20 O. G., 1164. "A. J. Bowen" Case. TRADE-MARK. 1. A trade-mark is an arbitrary character or characters without special meaning, adopted by persons, firms or corporations, for the purpose of identifying the goods manufactured by them or of which they have the sale. Persons have the right to adopt any device or form of words possessing these characteristics as their trade-marks, so long as public property is not violated. 2. The long use of the name of a particular person with * particular class of goods manufactured by that person, or in his name, serves to inden- tify those goods as particularly as any other characters, device or collection of words. 3. The name of a person in connection with other marks, may form proper subject matter for trade-mark registration by the business successors of such person. Appeal from the Examiner of Trade-Marks. Trade-Mark.— Application filed August 22, 1881. OCTOBER, l88l. 555 8 T Ex Parte Frieberg & Workham. Messrs. Abraham 6° Mayer, attorneys for the applicants. Marble, Commissioner: Appeal is taken from the decision of the Examiner of Trade- Marks in refusing to register as a trade-mark subject-matter de- scribed as follows: The words "J. A. Bowen"' and the arbitrary symbols of a shield on which is emblazoned the arms of the United States. These have generally been arranged as shown in the accompanying fac simile, the words "J. A. Bowen," in a curved line, forming the upper part of a circle and the word "Bourbon," in an inverted curved line, forming the lower part of a circle. Between these words is the representation of a fancy shield upon which appears .the Stars and Stripes, that form the conventional armorial bear- ings of the United States of America; but the word "Bourbon" may be omitted without materially altering the character of our trade-mark, the essential features of which are the words "J. A. Bowen" in connection with the shield having emblazoned thereon the Stars and Stripes, that form the conventional armorial bear- ings of the United States of America, the whole surrounded by a plain circular border. It is stated in the application that this alleged trade-mark has been continuously used in the business of the applicants as a trade- mark on whiskey since the year 1857. The application was re- jected by the Examiner because applicants refused to erase there- from the words "J. A. Bowen," the attorneys of applicants hav- ing admitted that he was the person whom the applicants suc- ceeded in business. The Examiner's objection to the registration of said trade-mark is stated as follows: Their use of this name is evidently intended to inform the pub- lic of the fact that they are the successors in business of J. A. Bowen, and are now engaged in the distillation of liquors for- merly sold under his name. It would seem to the Examiner that this is simply a transfer of a "good-will" and nothing more. 1. A trade-mark is an arbitrary character or characters without special meaning, adopted .by persons, firms, or corporations for the purpose of identifying the goods manufactured by them or of 556 UNITED STATES PATENT OFFICE. Ex Parte Frieberg & Workham. 87 which they have the sale. Persons have the right to adopt any device or form of words possessing these characteristics as their trade-marks so long as public propriety is not violated. It may be true in this case, as it is in many cases, that the name of a person associated with a particular trade or business carries with it the good -will of the establishment with which' he was connected. If it is the good-will simply that is sought, then it should not be registered as a trade-mark; but if the name of a person possessing the characteristics of a trade-mark in itself, not an applicant, is adopted by any person, firm, or corporation to identify their par- ticular goods, I see no good reason why it may not be used as a trade-mark and be registered as such. On the contrary, there are many reasons why it may be so used. 2. The long use of the name of a particular person with a par- ticular class of goods manufactured by that person, or in his name, serves to identify those goods as particularly as any other charac- ter, device, or collection of words. This is all that is requited to make it a legal trade-mark. Whether persons other than the per- son whose name is used have the right to use such name is another question. In this case it is claimed that the applicants have used this name with the device mentioned as their trade-mark upon their goods since the year 1857. 3. This is sufficient prima facie evidence of their legal right to use it. The decision of the Examiner is overruled, and the certificate of registration will issue in due course. OCTOBER, I 88 I. 557 •88 Smith vs. Sixbury. 88 SUPREME COURT, STATE OF NEW YORK, In Equity. Nathaniel Smith, Appellant, vs. Benjamin Sixbury, Respondent. Decided October, i88i. Reported 25 Hun, N. Y., 232. "Magnetic Balm" Case. TRADE-MARK— WHAT WORDS MAY BE USED AS. 1. Any words selected arbitrarily, not expressive of the quality or charac- ter of the article, and not previously appropriated by any other person to designate a similar commodity, may be used as a trade-mark for such article. 2. The plaintiff had been engaged during the last twenty-five or thirty years, in compounding, manufacturing and selling a liquid medicine which he called "Barker & Smith's Magnetic Balm." Prior to that time, one Barker, a physician, had been engaged in manufacturing and selling a medicine which he called "Magnetic Balm." The plaintiff had purchased from him his interest in and the recipe for the said medicine. The medicine contained no magnetism or electricity. Held: 558 SUPREME COURT, STATE OF NEW YORK. Smith vs. Sixbury. 88 , That the plaintiff was entitled to be protected in the use of the words " Magnetic Balm," as against any person subsequently attempting to use the same. Appeal from a judgment, entered upon the report of a referee, dismissing the complaint, with costs. Butterfield &" Phillips, for the appellant. Lansing <5^ Rogers, for the respondent. Smith, J.: The plaintiff has been engaged during the last twenty-five or thirty years in compounding and manufacturing at the City of Syracuse and selling in certain counties in the northern part of this State, and in other parts of the United States, a liquid medi- cine which he has designated by the name of Barker & Smith's Magnetic Balm. One William Barker, a practicing physician, was engaged some thirty years ago in manufacturing and selling at Syracuse a medicine which he called "Magnetic Balm," and his recipe and interest in the medicine -were purchased by the plaintiff. The plaintiff claims to have adopted the words "Mag- netic Balm" as a trade-mark to be placed on the glass bottles in which the medicine manufactured by him is usually put up for sale. He has also been accustomed for several years to inclose each bot- tle of medicine in a paper wrapper on which is printed a label headed with the words "Barker & Smith's Magnetic Balm," con- taining a description of the properties of the medicine and direc- tions for its use, and having on the side inclosed in brackets the words "Trade-mark, Magnetic Balm." The plaintiff alleges that the. defendant, who is engaged in manufacturing and selling a like medicine at the City of Watertown, has wrongfully used the plain- tiff's said alleged trade-mark and imitated his label, and is still doing the same. This action is brought to restrain the defendant from using said trade-mark and imitating said label, and to re- cover damages. The referee found substantially among other things, the facts above stated; but he found also, as matter of law, that the words OCTOBER, l88l. 559 8 8 Smith vs. Sixbury, "Magnetic Balm,' as used by the plaintiff, do not constitute a trade-mark, and on that ground, as is to be inferred from his re- port, he ordered the complaint to be dismissed. In this we think the referee erred. He had found, as a fact, that the medicine compounded by the plaintiff contained no mag- netism or electricity. That being the case, the word "magnetic," as applied to the compound, was an arbitrary word not descriptive of the article, and one which the plaintiff could lawfully appro- priate as a trade-mark. The view which the referee probably took of the matter suggested by the finding of fact contained in his re- port, that "the word magnetic, when not used in its strict scienti- fic signification, denotes something wonderful, quick, or attrac- tive." 2. We are at loss to discover upon what evidence that finding is based. There is none warranting it in the printed case, which purports to contain all the evidence. And we know of no au- thority in lexicography for holding that the word "magnetic," as applied to a liquid compound, such as the plaintiff's medicine is shown to be, has any such meaning as is given to it by the referee, or is descriptive of any quality of such compound. 1. The rule is, that any word; selected arbitrarily, not expres- sive of the quality or character of the article, and not previously appropriated by any other person to designate a similar com- modity, may be used as a trade-mark for such article. (Gillott v. Esterbrook, 48 N. Y, 374; Newman v. Alvord, 51 Id., 189; Hier v. Abrahams, 82 N. Y, 519.) There is no evidence that any other person had adopted the words "Magnetic Balm" to designate a similar article before they were used by the plaintiff and his assignor, Barker. There are several other questions in the case upon which it is unnecessary to comment. For the error above pointed out the judgment should be-reversed, and a new trial ordered before another referee, costs to abide the event. Ordered accordingly. Talcott, P. J., and Hardin, J,, concurred. 560 SUPREME COURT, STATE OF GEORGIA. Larrabee & Co. vs. Lewis. 89 89 SUPREME COURT OF GEORGIA. In Equity. Larrabee & Co. Lewis. Decided 18 November, 1881. Reported 67 Ga., 562. "Snow flake" Case. 1. A trade-mark, to be protected from infringement, must designate the origin or ownership of the article to which it is applied. A mere general description by words in common use of a kind of article, or its nature and qualities, cannot of itself become a trade-mark. {«). " Snowflake," as applied to bread or crackers, is a mere description of whiteness, lightness and purity. (/'). An arbitrary word, not descriptive of the character or quality of the article to be sold, may be used to designate particular goods, and become a trade-mark. 2. In Georgia, to have a word or words claimed as a trade-mark, protected by injunction from use by another, it should appear the defendant's use of them was with intent to deceive or mislead the public. Trade-Mark. — Before Judge Hillyer, Fulton County, at Cham- tiers. OCTOBEk, l88l. 561 8 9 Larrabee & Co. vs. Lewis. Lanier & Anderson, Harrison & Peeples, for plaintiffs in error. Mynatt & Howell, for defendant. Crawford, Justice. Larrabee & Company, manufacturers of crackers and biscuits, and using the word "Snowflake" as their trade-mark, filed a bill to enjoin T. S. Lewis from the use of the same in his business, upon the ground that the said complainants had been engaged for more than two years in their said manufacture, and had used, and ■still claimed the right to use exclusively, their said trade-mark as against all other persons whomsoever. And yet, notwithstanding their said right, the said defendant being also a manufacturer of crackers and biscuits, has unlawfully, and without their consent, -used in the sale thereof their said trade-mark of "Snowflake." To this bill the defendant filed a demurrer up6n the grounds: (1st.) That the complainant had no right to appropriate the word "Snowflake" as a trade-mark. (2nd.) That it was not alleged that the defendant had used the word "Snowflake" "with intent to deceive or mislead the public." This demurrer was sustained by the Chancellor, and that judg- ment is complained of as error. 1st. The first question made is whether the word "Snowflake" can be used and appropriated as a trade-mark. 1. A trade-mark is defined to be the name, symbol, figure, let- ter, form, device used by a manufacturer or merchant to designate the goods he manufactures or sells, to distinguish them from those manufactured or sold by another, to the end that they may be known in the market as his, and to secure such profits as result from a reputation for superior skill, industry or enterprise. Up- ton's Law of Trade-Marks, 99. The trade-mark must designate and distinguish the owner's production from the general manu- facture of the same article, and cannot consist of a word belong- ing to the general public describing truly a known product. 53 How, (N. Y.) Pr., 453; S. C.,6 Am. L. T., 20. A mere general description by words in common use of a kind of article, or its nature and qualities, cannot of itself be the sub- ject of a trade-mark. 122 Mass., 139, 148. 36 562 SUPREME COURT, STATE OF GEORGIA. Larrabee & Co. vs. Lewis. 8 9 1. A trade-mark which designates the true origin or ownership of the article manufactured or sold, will be protected, but words which have no other relation to the origin or ownership of the goods than merely to indicate the name or quality, will not be protected. Nor will words be protected which all persons may use with equal truth as to the nature of a fact which they are used to signify, because all alike have the right to employ them for the same purpose. And so, too, a name merely descriptive of an article of trade, of its qualities, ingredients or characteristics, can- not be employed as a trade-mark, and the exclusive use of it en- titled to legal protection. 2 Sand., (JV. Y), 599; 7 N. V. Leg. 06s., 301; 7 Phil. (Penti.'), 253; 35 Conn., 402; 13 Wall, 311; 1 Holmes, 185; £. C, 6 Am. L. T., 20; 58 N. Y. {Sick.'), 223. That one may use an arbitrary word, when not descriptive of the character or quality of the article to be sold, seems to be settled by the rulings of a various Courts; noted instances of which are "Pride" as the trade-mark for cigars, " Charter Oak," for stoves, "Lone Jack" for tobacco. These words not being in anywise descriptive of the character or quality of cigars, stoves or tobacco, hey have been protected. (82 TV" Y. Sick., 522544 Mo., 168; Cox's Manual of Trade-Mark Cases, No. 669). 1. (a). With these rules of law governing the question made by this record, can the word " Snowflake " be classed as one not des- criptive of the character or quality of the articles under which they are to be sold? In its common and ordinary sense it is un- derstood to be descriptive of whiteness, lightness and purity, words which of necessity belong to the public — common alike to all. When applied, therefore, to crackers and biscuits, it affirms unquestionably that they are white, light and pure. Whether used to describe the quality or style of this sort of merchandise or not, it does signify those facts which others by its use may express with equal truth, and therefore have an equal right to its use for that purpose. The Collins Go. v. Cowen, 3 Kay cV Johnson, 428. It is to be remembered that this word has no device or symbol whatsoever in connection with it: — << Larrabee 's Snowflake Bis- cuit," the defendant's label being "Lewis's Snowflake Biscuit." If we are right therefore, in our construction of the ordinary use OCTOBER, l88l. 563 8 9 Larrabee & Co. vs. Lewis. and meaning of the word, then any one may make a label, and sell " Snowflake " biscuit, that is, such as are white, light and pure. 2. 2d. The second ground of the demurrer was that there was no allegation in the bill that the defendant had used the word snowflake "with the intent to deceive or mislead the public." Without reference to what may have been ruled in other States on this subject, our statute makes the intention to deceive and mislead the public by the use of similar trade-marks, names or devices to encroach upon the business of another, a fraud for which equity will grant relief. When one comes, therefore, asking the relief provided, he should come according to the rule prescribed. It is insisted, however, that the complainants could not look into the mind of the defendant and discover his intent. If this were necessary, intention could never be proved. Words, acts and conduct prove intent, and are the usual and ordinary means adopted by Courts of justice to establish it, and we see no more difficulty in this than in other cases. It was further urged on the argument that under our statute, not only trade-marks, but names are forbidden to be used as well, and this being a name, that although the plaintiffs could not bring themselves within the technical meaning of trade-mark, still they would be entitled to protection against the use of a similar name, There occurs to us no reason why, if the word used cannot be protected as a trade-mark, it should be as a name, if obnoxious to the same objections. That names can and will be protected, we have already seen, and to such names we apprehend the statute refers. Judgment affirmed. 564 U. S. C. C. DISTRICT OF NEW JERSEY. Sawyer vs. Kellogg. 9 90 CIRCUIT COURT UNITED STATES, DISTRICT OF NEW JERSEY. In Equity. Sawyer Kellogg. Decided 19 November, 1881. Reported 9 Federal Rep., 601. "Sawyer's C/ystal Blue" Case. 1. Trade-Marks — Accounting. — K., who was engaged largely in the business of packing blues, on his own account and for others in the trade, put up the blues covered by the infringing trade-inark for the firm of B. & Co., who sold them, paying K. for the work and labor of packing them. K. was adjudged an infringer, an injunction issued against him, and the decree directed an accounting. On motion to strike from the decree the clauses directing an accounting, Held: That the complainant was entitled to an accounting to enable him to ascer- tain what profits were made by K. by his work and labor, and what damages resulted therefrom. 2. Laches in Bringing Suit. — In England the rule is stringent in trade- mark cases, that lack of diligence in suing, deprives complainant in equity, of the right to an injunction or an account. Our Courts are NOVEMBER, l88l. 565 90 Sawyer vs. Kellogg. more liberal in this respect. A long lapse of time will not deprive the owner of a trade-mark of an injunction against an infringer, but a reasonable diligence is required of a complainant in asserting his rights, if he would hold a wrong-doer to an account for profits and damages. This rule, however, applies only to those cases where there has been an acquiescence after a knowledge of the infringement is brought home to the complainant. 3. Costs. — In trade-mark cases, the ordinary rule is that a decree for an infringement and an injunction carries costs; and this rule applies, though no demand was made before suit, that the defendant should cease to use the infringing trade-mark. On Motion to Amend Decree. George Putnam Smith, for the motion. Rowland Cox, contra. Nixon, D., J.. This is a motion to strike from the decree entered in the above case the clauses which direct an accounting and the payment of costs. 1. As to the accounting. The counsel for the defendant rests his application to strike out on two grounds: First, because the proofs show that the defendant is not the person liable to account to the complainant. The evidence is that the defendant was largely engaged in packing blues on his own account and for dthers in the trade; that all the blues covered by the infringing trade- mark were put up by him for the firm of James S. Barron & Co., dealers in wooden ware, rope, and cordage in New York, who placed the same upon the market; that he made no sales to any one of the articles thus packed, but received pay from his em- ployers solely for the work and labor of packing. The bill of complainant prays for an injunction, and for profits and damages. Having been adjudged an infringer of the trade-mark of the com- plainant, an injunction has been issued against him. Under the above state of facts, should he be compelled to account for profits and damages? We have no doubt about the propriety of the refer- ence or of the liability of the defendant, if it can be shown on the accounting that profits were made by his work and labor, or 566 U. S. C. C' DISTRICT OF NEW JERSEY. Sawyer vs. Kellogg. 90 that damages resulted to the complainant therefrom. If he did not sell, the profits on the sales are not chargeable to him; but if any profits came to him for preparing the article for those who did sell, they belong to the complainant, and the object of the accounting is to ascertain that fact. And if the defendant has damaged the complainant by the unlawful use of his trade-mark, the nature and extent of the damage is a proper subject of inquiry. Second, because the complainant has forfeited his right to an account by laches in bringing his suit. 2. In England the rule is stringent in trade-mark cases that lack of diligence in suing deprives the complainant in equity of the right either to an injunction or an account. Our Courts are more liberal in this respect. A long lapse of time will not deprive the owner of a trade-mark of an' injunction against an infringer, but a reasonable diligence is required of a complainant in asserting his rights, if he would hold a wrong -doer to an account for profits and damages. This rule, however, applies only to those cases where there has been an acquiescence after a knowledge of the in- fringement is brought home to the complainant. Such is not the present case. Although the defendant began the packing of bluing in the packages complained of early in the year 1878, there is no evidence that the complainant knew it until a short time before the suit was brought. 3. As to the matter of costs. We find nothing in this case to take it out of the ordinary rule that a decree for an infringement and an injunction carries costs. The only reason suggested by the counsel for the defendant was that no demand was made before suit that the defendant should cease to use the label. We have never understood that in such cases a demand was necessary, nor that an infringer, who stoutly contests the suit to the end, should be relieved from the payment of the costs which have been in- curred in consequence of his wrong-doing and his litigation. The motion to strike out is overruled, but, under the circum- stances, without costs, on the motion, to the complainants. NOVEMBER, 1 88 I. 567 91 Julian vs. Hoosier Drill Co., et al. 91 SUPREME COURT OF INDIANA. In Equity. Julian vs. The Hoosier Drill Company, et al. Decided November, 1881. Reported 78 Ind., 498. "Hoosier Drill" Case. Trade-Mark — Damages — Injunction. — Property in the use of a word as a trade-mark, to designate manufactured goods, such as the word " Hoosier," to distinguish a grain drill, may be acquired by adoption and exclusive use, and when acquired, the unauthorized use by another of the mark, to designate similar goods, is a wrong which may be compensated by damages and prevented by injunction. Same. — A trade-mark used to designate goods manufactured under letters-patent, is assignable with the letters-patent, and the right to damages accrued for infringement is also assignable. Same — Non-User — Abandonment — License. — Property in a trade- mark may be abandoned and thereby lost, but a complaint for infringe- ment, which shows non-user for a year, does not disclose an intention to abandon; and without such intention there is no abandonment by mere non-user. Such, non-user might possibly imply a gratuitous 568 SUPREME COURT OF INDIANA. Julian vs. Hoosier Drill Co., et al. 91 license to others to use the mark for the time being, and thereby pre- clude the recovery of damages for the time; but this license is revoca- ble, and does not preclude the remedy by injunction for the future. Appeal from the Wayne Circuit Court. T. J. Study, J. B. Julian, and J. F. Julian, for appellant. Wood, Boyd, and H. C. Fox, for appellees. Morris, C: The appellant brought this suit against The Hoosier Drill Com- pany, to recover damages for an alleged infringement of her rights to the use of the word "Hoosier," as a trade-mark. John Ingels, as the administrator of Joseph Ingels, who refused to join with the appellant as plaintiff, was made a defendant to answer as to the interest of his intestate in the suit. The first paragraph of the complaint states, that the appellant's assignor, Joseph Ingels, prior to the 20th day of March, 1876, invented and discovered certain new and useful inventions and improvements in grain drills, and that the same were secured to him by various letters patent, issued by and out of the United States Patent Office at divers times, the first on the 6th day of January, 1863, and the last on the 4th day of October, 1870; that on or about the 6th of January, 1863, the said Joseph Ingels. commenced the manufacture and sale of said grain drills in the town of Milton, Wayne County, Indiana, and continued the manufacture and sale of said drills down to the 20th day of Janu- ary, 1876, during which time he manufactured 20,000 of said drills under said letters patent; that, at the time said Ingels- commenced the manufacture of said drills, he devised and adopted, as his trade-mark to be used, and which he used on said drills, to designate the grain drills which he was manufacturing and selling, the word "Hoosier" as the name of said drills, and that he affixed and inscribed the same to and upon all such drills by him manufactured and sold, and sold the same throughout this and the adjoining States of the Union, in which there was a great demand for them, as they were well-known, and the "Hoosier NOVEMBER, l88l. 569 91 Julian vs. Hoosier Drill Co., et al. Drill," so manufactured by him, was regarded as superior to any grain drill manufactured, by farmers, dealers in agricultural im- plements and those using the same; that neither at, nor prior to, the time said Joseph Ingels devised and adopted said word, sym- bol, or term "Hoosier," as his trade-mark, was the same, nor had it been, used by any other person as a trade-mark upon any grain drill or drills; that said Ingels continued to own said trade- mark and letters patent, and the right to manufacture grain drills under said letters patent, and the exclusive right to use said trade- mark on grain drills, until the 27th of February, 1877; that from the 20th of March, 1876, to the 27th day of February, 1877, the Hoosier Drill Company was engaged in the manufacture of drills similar to those invented by said Joseph Ingels, and, without license so to do, unlawfully and wrongfully used and affixed to the drills manufactured by the appellee, during said period, said trade-mark, "Hoosier," and sold them with such trade-mark in- scribed thereon, and that such trade-mark, so inscribed on said drills, enhanced the value of each drill upon which it was so inscribed, in the sum of two dollars, and that altogether said Joseph was damaged §5,000; that the said Hoosier Drill Com- pany owed said sum to said Ingels, and that, on the 27th of Feb- ruary, 1877, he sold and transferred, for a valuable consideration, said claim to the appellant. The second paragraph of the complaint is like the first, except that it alleges that Joseph Ingels devised and adopted the word "Hoosier" as a trade-mark in the year 1857, and that he was then engaged in the manufacture and sale of grain drills, and then, and continuously thereafter, until the 27th day of January, 1877; tnat he used on said drills by him manufactured and sold, as a trade-mark and name to designate the particular drill by him made and sold, the word "Hoosier." That on the 27th day of February, 1877, the said Ingels transferred and assigned to the appellant' all of said letters patent, by an instrument in writing, duly executed by him, and also all the right to and property in said trade-mark which he then had or owned, and the exclusive right to use said trade-mark upon grain drills. 570 SUPREME COURT OF INDIANA. Julian vs. Hoosier Drill Co., et al. 91 It is then averred, that, from the time the appellant purchased said letters patent and said trade -mark, she had the right to man- ufacture and sell grain drills with said trade-mark affixed thereto and inscribed thereon, and the exclusive right to use the same; that, ever since she became the owner of said trade-mark, the said Hoosier Drill Company has been engaged in the manufac- ture and sale of grain drills manufactured and sold by said Ingels, and has, during all said time, manufactured and sold 10,000 of said drills with the trade -mark of the appellant affixed thereto and inscribed thereon, unlawfully, wrongfully and without leave or license so to do; that said trade-mark, so affixed by said com- pany to said drills, enhanced the value of each drill two dollars; that, since she became the owner of said letters patent and said trade-mark, it has been her intention to engage in and continue the manufacture and sale of grain drills under said letters patent, and to use said trade-mark thereon, as soon as she could make arrangements so to do; that said trade-mark was and is of great value in the sale of grain drills, and particularly in the sale of the drills manufactured by said Hoosier Drill Company; that said company had realized $5,000 from the use of said trade- mark since her purchase of the same, for which she demands judg- ment. She also asks that the appellee be enjoined, etc. The appellee, The Hoosier Drill Company, appeared and de- murred to the complaint, on the following grounds: 1 st. There is a misjoinder of causes of action in each of said paragraphs. 2nd. The plaintiff has no capacity to sue. 3rd. There is a defect of parties plaintiffs. 4th. There is a defect of parties defendants. 5th. The said paragraphs do not, either of them, state facts sufficient to constitute a cause of action against defendant. The Court sustained the demurrer, and, the appellant declining to amend, judgment was rendered for the appellee. The sustaining of the demurrer is assigned as error. 1. It seems to be agreed by the counsel for the parties, that the word "Hoosier" maybe adopted, used and applied as a trade- mark. The case of Congress &* Empire Spring Company v. High NOVEMBER, I 8 8 1 . 571 91 Julian vs. Hoosier Drill Co., et at. Rock Congress Spring Company, 45 N. Y., 291, and other cases that might be referred to, fully justify this conclusion. Codding- ton on Trade- Marks , sec. 680, et seq. It is not seriously questioned that Joseph Ingels used the word "Hoosier" as a tra3e-mark, and that, by affixing it to and in- scribing it upon grain drills manufactured by him and sold in this and adjoining States, as alleged in the complaint, he adopted it as his trade-mark, so as to secure the exclusive right to it as a trade-mark, to designate the kind of grain drills by him manu- factured and sold. It seems also to be agreed, that a party may have a property in a trade-mark, and that his right to and property in it may be transferred and assigned. But the parties are not agreed as to the manner in which, nor as to the circumstances under which, such assignment may be made. It is insisted by the appellees that, upon the facts stated in the first paragraph of the complaint, no cause of action exists in favor of the appellant. First. Because it appears that, during the time the appellee used the trade-mark, the said Ingels, the appellant's assignor, was not engaged in manufacturing grain drills; that he had abandoned the business of manufacturing and selling drills from the 20th day of March, 1876, until and after the 27th day of February, 1877, the period, -as stated in said paragraph, during which the appellee used the same, and that he thereby relinquished and abandoned the use of said trade-mark to the public, so that any one had a right to use and adopt it. Second. Because the claim of the said Joseph Ingels to damages for the infringement of his right to said trade-mark was not as- signable. It is also insisted by the appellee that, upon the facts stated in the second paragraph of said complaint, there was no valid assign- ment to the appellant of said trade-mark; that, if there was a valid assignment, no damages are shown to have accrued to the appellant. Assuming that Joseph Ingels had adequately appropriated the word "Hoosier" as a trade-mark, which, as before remarked, is 572 SUPREME COURT OF INDIANA. Julian vs. Hoosier Drill Co., it al. 91 hardly questioned by the appellees, that he had, as stated in the first paragraph of the complaint, ceased from the 20th of March, 1876; until the 27th of February, 1877, to manufacture and sell the grain drills to which he had been for years accustomed to affix the words as a trade-mark, can it be fairly and legally inferred that he had, by such temporary suspension of the business, aban- doned to the public his right to and property in the trade-mark ? We think not. The question of abandonment is one of intention, and the burden of establishing it lies upon the party who affirms it. Unless, therefore, it clearly and affirmatively appears from the facts stated in the complaint, it must be brought forward as a defence by answer. From the facts stated in the complaint, it appears that Joseph Ingels had secured to him by letters patent, the exclusive right as the original inventor to useful and valuable improvements in grain drills, which right under such letters, had some years to run after the 27th of February, 1877. He had been, as the complaint avers, engaged for several years in the profitable manufacture and sale of his improved drill, and had at all times affixed to, and inscribed upon such drills, the word "Hoosier" as his trade-mark. In view of these facts, it cannot be inferred, from less than a year's suspension of the business by Ingels, that he intended to abandon either his business or his right to said trade-mark. 3. The suspension must be, presumptively at least, attributed to indisposition or inability, rather than to an intention to aban- don valuable rights. Browne says that the question of abandon- ment is one of intention, and that "A person may temporarily lay aside his mark, and resume it without having in the meantime lost his property in the right of user. Abandonment, being in the nature of a forfeiture, must be strictly proven." It is incum- bent upon those alleging the defence of abandonment, to show that the right had been relinquished to the public by clear and unmistakable evidence. Browne on the Law of Trade-Marks, sec. 681; Dental Vulcanite Co. v. Weiherbee, 3 Fish Pat. Cas., 87; American Hide, etc., Co. v. American Tool, etc., Co., 4 Fish Fat. Cas., 284, 305. NOVEMBER, l88l. 573 9 1 Julian vs. Hoosier Drill Co., et al. In the latter case, Shepley, J., in instructing the jury, says: " Abandonment means a general abandonment to the public, and must be shown affirmatively and positively as affecting the interest of the party." True, this was said as to the rights of a patentee, but the principal is the same whether applied to a patent or a trade-mark. It is also insisted that as it is not alleged in the complaint that Joseph Ingels, did not, at the time, know that the appellee was using said trade-mark, he must be presumed to have known it, and that it was his duty to object promptly to the appellee's usurpation of his rights, and that, if he did not, ,he must be held to have acquiesced, and thus estopped himself to complain. The facts stated in the complaint do not show acquiescence on the part of Joseph Ingels in the alleged invasion of his rights by the Hoosier Drill Company. Did it affirmatively appear in the first paragraph of the complaint, that, with knowledge of the facts, Joseph Ingels had stood by and seen the appellee use his trade-mark without objection, though it would not establish abandonment, it would be a sufficient answer to the claim for the damages set forth in the first paragraph of the complaint. But such acquiescence is not alleged in the first paragraph of the complaint. If there' was ac- quiescence on the part of Joseph Ingels, it must be shown by answer. Browne on the Law of Trade-Marks, sees. 684 and 685; Taylor v. Carpenter, 3 Story, 458; Taylor v. Carpenter, 2 Woodb. & M., 1; Amoskeag Manuf. Co. v. Spear, 2 Sand/., 599. We do not think it can be assumed from the facts stated in the complaint, that the alleged infringements of the rights of Joseph Ingels by the appellee resulted, at most, in but nominal damages to him. True, it must appear, in order to maintain the action to secure substantial relief, that substantial loss must have been sus- tained by him in consequence of the mal-appropriation of his trade-mark, but the ground of the action, the wrong, is the affix- ing of the trade-mark to drills which the public purchase, thereby erroneously supposing them to have been the product of Ingels. Browne on Trade-Marks, sees. 499, 500. It is said that no cer- tain and fixed rule for damages can be established in cases like this. Taylor v. Carpenter, n Paige, 292. Browne says, sec. 574 SUPREME COURT OF INDIANA. Julian vs. Hoosier Drill Co., et til. 91 503: "The criterion is indemnity, and in estimating the actual damage, the rule is to give the value of the use of the thing dur- ing the illegal user, or, in other words, the amount of profits. * * * The proper measure of damages, in case of violation of a trade-mark, is generally the profit realized upon the sale of goods to which the spurious marks were attached." 1. We think we canhot say, as matter of law, that, upon the facts stated in the first paragraph of the complaint, Ingels was not entitled to damages. 2. We also think it was competent for Ingels to sell and trans- fer, by assignment, his claim for damages to the appellant. By section 783 of the Code, the cause of action set forth in said paragraph would survive. Such a claim is assignable. Fome- roy on Remedies and Remedial Rights, sec. 147, and oases there cited. We conclude that the Court erred in sustaining the demurrer to the first paragraph of the complaint. • The objections to the second paragraph, urged by the appellee, are, that the facts stated do not show a valid assignment of the trade-mark to the appellant by Joseph Ingels, or that, if there was a valid assignment, she had, by non-user, abandoned her right. 2. It is alleged in the second, as well as the first paragraph of the complaint, that Joseph Ingels, by letters patent, had secured the exclusive right to manufacture and sell the grain drills to which the trade-mark in question had been affixed for years; that, under those patents, he had been engaged in manufacturing the grain drills patented from 1863, to March, 1876, using the word "Hoosier," by affixing to his drills, as his trade-mark; that on the 17th day of January, 1877, Ingels transferred and assigned all of said letters patent to the appellant, by an instrument in writing, duly executed by him, and also all the right to and prop- erty in said trade-mark, which said Ingels then had or owned, and the exclusive right to use said trade-mark upon grain drills. This assignment and transfer carried with it to the assignee the exclusive right to manufacture and sell the grain drill specified in the letters patent, and to carry on the business of making and selling the same. It was a transfer to appellant of the right to NOVEMBER, l88l. 575 91 Julian vs. Hoosier Drill Co., et ah carry on the business in which Joseph Ingels had been engaged, and in connection with which he had used said trade-mark. As incident to the right thus transferred to the appellant, Joseph Ingels might, as he is averred to have done, assign to her his right to and property in said trade-mark. The assignment, and the right to make it, did not, in any way, depend upon the time at which the appellant might engage in business. Nor was it neces- sary to the validity of the transfer of the trade-mark, that the place of business or drills actually manufactured should be trans- ferred. It was enough if the right to engage in the business was assigned; as incident to the assignment of this right, it was quite competent to assign the right to the trade-mark. In the case of The Dixon Crucible Co. v. Guggenheim, 2 Brewster, 321, it was held that the property in a trade-mark will pass by an assignment, by operation of law, to any one who takes, at the same time, the right to manufacture or sell the particular merchandise to which the trade-mark has attached. Edleston v. Vick, 23 Eng. L. &* Eq., 51, is not unlike this case, and fully sustains the assignment. Marsh v. Billings, 7 Cush., 322; Croft v. Day, 7 Beavan, 84; Coddington, Trade- Marks, sec. 122. It appears from the complaint that the appellant purchased the right in question in February, 1877, and that this suit was com- menced in February, 1880. It is alleged in the complaint that she had always intended to engage in the business as soon as she could, and that she still intends to do so. Did she only seek to recover damages, it may be that the delay would preclude her, but she asks in this paragraph, that the ap- pellee shall be enjoined from further use of the trade-mark. We think the delay, under the circumstances, will not preclude her from this relief. She did not intend to abandon, and therefore has not abandoned, her right, as to the future, to the exclusive use of her property in the trade-mark. 2. Inability may prevent the use of the mark, but it will not confer upon others the right to use it, or constitute an abandon- ment. Browne, Trade-Marks, sees. 684, 685, and cases there cited. 576 SUPREME COURT OF INDIANA. Julian vs. Hoosier Drill Co., et al. 9 X In the case of Amoskeag Man/. Co. v. Spear, supra, Judge Duer says: "The consent of a manufacturer to the use or imita- tion of his trade-mark by another may, perhaps, be justly inferred from his knowledge and silence; but such a consent, whether ex- pressed or implied, when purely gratuitous, may certainly be with- drawn, and when implied, it lasts no longer than the silence from which it springs; it is in reality no more than a revocable license." We think the demurrer to the second paragraph should have been overruled. It may be proper to add, that the first, second, third and fourth grounds of demurrer are not discussed by counsel, and, as we think, they could not be sustained, they have not been particu- larly considered. Per Curiam. — It is therefore ordered, upon the foregoing opin- ion, that the judgment below be in all things reversed, at the costs of the appellee. NOVEMBER, l88l. 577 9 3 Ex Parte Adriance, Piatt & Co. 92 IN THE UNITED STATES PATENT OFFICE. Ex Parte Adriance, Platt & Co. Decided 29 November, 1881. Reported 20 Off. Gaz., 1820. "Adriance, Platt &" Co." Case. , Trade-Mark — Name of Applicant. — It ;s the opinion of the ablest jurists, that a person's name cannot be an essential element of his trade-mark, and such is the settled practice of the Patent Office. , Same — Same — Essential and Non-Essential. — It is deducible both from the Act of 1870, and from the present law, that others -may use with impunity the name of the registrant, either by itself or in connec- tion with other arbitrary symbols than those secured by the registra- tion, but that the symbol itself cannot be used by others in any con- nection. This distinction may be expressed by the words " material " and "immaterial," or "essential" and "non-essential," according to the phraseology preferred. The name of the person, firm or corporation, does not acquire an arbi- trary significance by association with an otherwise valid trade-mark, and cannot therefore be included as an essential feature of such trade- mark. Appeal from the Primary Examiner. 37 578 UNITED STATES PATENT OFFICE. Ex Parte Adriance, Piatt & Co. 98 Trade-Mark. --Reaping and Mowing Machine. Application filed March 30, 1881. Messrs. A. M. Smith & Co., for the applicants. Marble, Commissioner : Applicants seek to register as a trade-mark in this case the word "Adriance," which is the surname of one of the members of the firm, together with the symbolical representation of the upper half of a cog-wheel. Appeal is taken from the action of the Primary Examiner in refusing to permit the applicants to include the proper name "Adriance" as an essential portion of the mark. Prior to the trade-mark Act of July 8, 1870, there was some uncertainty in the decisions of the Courts as to a trader's right to the exclusive use of his name as a trade-mark upon his goods. It has been held however, as a general rule, that every one is en- titled to the bona fide use of his own name in connection with his business. {Burgess v. Burgess, 17 Furr., 292; Clark v. Clark, 25 Bar. ', 76; Faber v. Faber, 49 Bar., 357). In many instances traders have been enjoined from using a rival's name to the prejudice of his trade. {Brooklyn White Lead Company v. Masury, 25 Bar., 416). In some instances persons have been enjoined from using their own names, under circum- stances showing an intention to defraud others of the fruits of their skill and reputation. {Dixon Crucible Company v. Guggen- heim, 2 Brewster, 321; Croft v. Day, 7 Beav., 84; Sykes v. Sykes, 3 B. &> d, 541). The statute referred to, however, while leav- ing the question of what constitutes a lawful trade -mark precisely where it was at common law, expressly declares that for the pur- poses of registration in the Patent Office, it shall not consist of a mere name of a person, firm, or corporation unaccompanied by a mark sufficient to distinguish it from the same name when used by others. Under this statute no mere name was registrable as a trade-mark, with the exception of those in use, as such, prior to the passage of the Act. (India Rubber Comb Company, 8 O. G., 905; Rubber Clothing Company, 10 0. G., ion). In the prac- NOVEMBER, l88l. 579 98 Ex Parte Adriance, Piatt & Co. tice under this statute, the office called upon the applicant for registration to discriminate between the essential and the non-es- sential features of his trade-mark, basing this requirement upon the provision of the law requiring an applicant for registration of a. trade-mark to file a description thereof. ( Volta Belt Company, 8 0. G., 144)- Under the law and practice as thus understood, it has been customary, I believe, to exclude applicants' names from the recital of the essential portions of the mark. Commis- sioner Leggett early announced that while names of persons, firms, or corporations may be used in trade-marks, provided they are accompanied by original devices to which others have not an equal right, in such case the original devices really become the trade- marks. (Dawes v. Fanning, 2 O. G., 27). 1. It is the opinion of the ablest jurists that a person's name cannot be an essential element of his trade-mark, and such is the settled practice of the Patent Office. {Browne on Trade-Marks, paragraphs 197-206). 2. The name of a corporation cannot be regarded or registered as an essential part of the mark. (Ex parte Alcide F. Poirrier, manuscript decision, July 24, 1879). 1. Reference is made by the appellant to the peculiar phraseology •of the Act of 1870, as support for the position that when the name of a person or firm is accompanied by a mark sufficient to distin- guish it from the same name when used by others, the name itself may become an essential portion of the mark. I am unable to see the force of this position. The law clearly makes a distinc- tion between the name and the mark (trade-mark) which accom- panies it, and it is therefore clearly evasive of the law to place both name -end mark upon the same footing, and to regard each as equally essential. (Ex parte Pace, Talbott & Co., 16 0. G., 909). The effect of the law, as it seems to me, was to announce what is clearly deducible from the decisions of the Courts, that the applicant's name is matter of description which, in the ab- sence of proof that it has become a lawful trade-mark, others who have an equal right may use. The full text of the law would have been that no mere descriptive or general term, or mere name of the person, firm, &c, unaccompanied by a mark, shall be 580 UNITED STATES PATENT OFFICE. Ex Parte Adriance, Piatt & Co. 9 3 registered; but while the principles relating to the use of descrip- tive terms generally, are well established and therefore not referred to specifically in the Act, there was supposed to be some uncer- tainty at common law as to the status of a manufacturer's name. The very emphasis of the law, therefore, in specially prohibiting such names from registration is laid hold of as an argument to avoid it. The law has clearly made that distinction between proper names which others may have equal right to use and trade- marks, which has always been recognized by the Courts as exist- ing between descriptive matter in general and arbitrary symbols, and which in the Patent Office is expressed by the terms "essen- tial" and '"non-essential." It is deducible both from the Act of 1870 and from the present law, that others may use with impunity the name of the registrant, either by itself or in connection with other arbitrary symbols, than those secured by the registration, but that the symbol itself cannot be used by others in any con- nection. This distinction may be expressed by the words " ma- terial" and' " immaterial," or "essential" and "non-essential," according to the phraseology preferred. 3. In the case of Ex parte Farnum &• Co., (18 O. G., 412), I had occasion to hold that a geographical term acquired no arbi- trary significance from association with an arbitrary symbol; and in the present case I feel constrained to hold, by parity of reason- ing, that the name of thp person, firm, or corporation does not acquire an arbitrary signification by association with an otherwise valid trade-mark, and cannot therefore be included as an essen- tial feature of such trade-mark. This conclusion, I think, will be found to be in harmony with the decisions of the Courts so far as they are applicable to the subject. An examination of the authorities will, show that in those cases where the manufacturer's name has been associated in use with an arbitrary symbol, the Courts have uniformly refused to enjoin others who had an equal right from rising the name alone, and have disregarded as imma- terial, changes in alterations, or omissions of the name, where the use of the symbol has been retained; and in short, have treated the use of the symbol as the test of infringement, and the symbol itself as the vital portion of the mark. {Ambskeag Manufactur- NOVEMBER, l88 1. 581 93 Ex Parte Adriance, Piatt & Co. ing Company v. Spear, 2 Sand., 605; Boardman v. Meriden Print Company, 35 Conn., 402; Walton v. Crowlet, 3 Blatchf., 440; Millington v. Fox, Cox's Trade- Mark Cases, 338; Burnett v. Phalon, 9 Beav., 192; Fitridge v. Merchant, 4 Abb. Pr., 158; Davis v. Kendall, 2 R. I. , 569; Upton on Trade- Marks ; Knott v. Morgan, 2 Keen, 213). I am unable to see any force in the point raised by counsel that the word "Adriance" is not the full name of the firm, but only of one member of the firm. This fact does not establish for the name an arbitrary character, nor confer upon the firm an ex- clusive right to use it as against other persons of that name. The Examiner is affirmed. 582 SUPREME COURT FOR DISTRICT OF COLUMBIA. United States, ex re I. &c. vs. Marble. 94: 93 SUPREME COURT OF THE DISTRICT OF COLUMBIA. In Equity. The United States, ex rel. The Wilcox & Gibbs. -Sewing Machine Co. vs. E. M. Marble. Decided 30 November, 1881. Reported 22 Off. Gaz., 1366. "Wilcox dr Gibbs" Label Case. 1 . That which constitutes a trade-mai-k may be registered in the United States Patent Office as a Label — Proprietor may elect. 2. Supreme Court of the District of Columbia will Issue Manda- mus to Register — ■ When. I. The several Acts of Congress regarding the registration of prints, de- signed to be used as labels, do not exclude from registration a label containing matter which might be registered as a trade-mark; nor does the fact that a label bears such distinguishing marks as entitle it to- registration as a trade-mark, exclude it from registration as a label, if the owner desires it to be registered as such. Whether the Commis- NOVEMBER, 1 88 r. 583 94 United States, ex rel. &c. vs. Marble. sioner of Patents is to regard it as the one or other wholly depends upon the will of its proprietor. 2. The owner of a label entitled to registration under the law made appli- cation to the Commissioner of Patents for its registration. Applicant had complied with all the requirements of the law; but the examiner in charge of that department of the Patent Office rejected the appli- cation on the ground that the label was not of the class entitled to registration, whereupon applicant, instead of appealing to the Commis- sioner of Patents, as he might have done, petitioned this Court for a mandamus to compel the Commissioner to register the label. The Commissioner in his answer to the rule to show cause, recited the facts of the failure of the applicant to appeal to the Commissioner from the examiner's decision, but at the same time approved of and indorsed the reasons of the examiner for refusing to register the label. Held: That a peremptory mandamus to register the label should issue, and so ordered. Statement of Case. This was an application for mandamus against the Commissioner of Patents, which was ordered to be heard in the General Term in the first instance. The petition set forth that the relator, a corporation under the laws of the State of New York, had, on or about the 3rd day of May, 1 88 1, made application under the Act of Congress approved June 18, 1874, entitled "An act to amend the laws relating to patents, trade-marks and copyrights," to the Commissioner of Patents for the registration of a label designed to be used for hosiery or other knit goods made in accordance with certain im- provements for which it had obtained letters patent of the United States, and had paid to the said Commissioner the sum of six dol- lars, .the fee required by law in such cases, and that thereupon it become the duty of said Commissioner, under the said Act of Con- gress, to cause said label to be registered; yet the said Commis- sioner had refused to register said label or cause the same to be registered, to the great injury of relator, &c. The petition con- cluded with a prayer that an alternative writ of mandamus be issued directed to said Commissioner, commanding him to cause said 584 SUPREME COURT FOR DISTRICT OF COLUMBIA. United States, ex rel. &c. vs. Marble. 94 label to be registered or show cause for his refusal so to do. The writ having issued, the answer of respondent was as follows : The respondent, E. M. Marble, 1 Commissioner of Patents, makes return to the order of the honorable the Supreme Court of the District of Columbia, in the above entitled matter, to show cause why a writ of mandamus should not issue against him as prayed by the relator, as follows: It appears by the records and files of this office that on May 3, 1881, the relator filed an application for the registration of what is alleged to be a label, paying the fee of six dollars, the amount required by law for the registration of labels; that on the 6th of the same month applicant was notified by the examiner having charge of the registration of labels, that the monogram formed of the let- ters W and G, forming part of the alleged label, could not be reg- istered because it amounted to a trade-mark; that subsequently, arid on the 10th of the same month, Mr. Pollok, the attorney of said corporation, having filed his power of attorney, requested to be advised on what ground the label was rejected, stating that the same was a label and not a trade-mark; and that on the 14th of the same month the said examiner again informed applicant, through its attorney, that the application could not be allowed for the reasons given in his former letter. It will thus be seen that all action taken in the office upon the application of the relator was by the examiner having charge of applications for the regis- tration of labels. While it is true-that the Commissioner of Patents is charged with the transaction of all business done in the Patent Office, it is also true that he cannot and does not know of the pendency of individual applications, except such as are brought to his atten- tion on appeal or by inquiry for instruction by examiners. The first actual knowledge that the respondent had of the pendency of the application in question was the service upon him of the order to show cause why the writ of Mandamus should not issue com- pelling him to register applicant's alleged label. The practice of the office allows parties whose applications are rejected by exami- ners to have the decisions of the examiners rejecting such applica- tions reviewed on appeal by the Commissioner. No appeal of this NOVEMBER, l88l. 585 94 United States, ex rel. &c. vs. Marble. kind was taken by applicant, although its attorney, at least, must have known and did know what the practice of the office in such cases is. It is respectfully submitted, therefore, that the applica- tion for a writ was premature, for the reason that the respondent should not be called upon to show cause why such writ should not issue until the cause or matter which the relator complains of has been brought to his personal attention. It cannot be said that applicant's petition has been denied by the Commissioner of Patents, in view of the practice of the office, until the Commis- sioner has some personal knowledge of his application, and while applicant has a remedy in the office for the correction of what he believes to be erroneous action, he has no ground to ask for the intervention of this Court by writ of mandamus to compel an officer to do what upon application to that officer might have been done. For further answer I respectfully submit that the Commissioner of Patents must determine what is and what is not proper subject- matter for registration as a label. The statute says : " There shall be paid for recording the title of any print or label, not a trade-mark, six dollars, which shall cover the expense of furnishing a copy of the record under the seal of the Commissioner of Patents to the party entering the same." The Statute also prescribes that a fee of twenty-five dollars shall be paid for the registration of a trade-mark. It becomes neces- sary, therefore, in each and every case for the officer whose duty it is to receive and register labels and trade-marks to determine upon the receipt of such applications whether they belong to one or the other class, and upon such determination to require the payment of the fee which the law prescribes. Such has been the practice of this office since the passage of the laws providing for the registration of trade-marks and of labels. A trade-mark is defined by Webster to be : " A distinguishing mark or device used by a manufacturer on his goods or labels, the legal right in which is recognized by law." A label is defined to be : "First, a tassel; second, a narrow slip of silk, paper, parchment, &c, affixed to anything denoting its contents, ownership and the like, as the label of a bottle or a package; third, a ribbon or silk, a slip of paper, parchment, &c, 586 SUPREME COURT FOR DISTRICT OF COLUMBIA. United States, ex rel. &c. vs. Marble. 94: attached to a diploma or legal document to hold the appended seal; fourth, any paper annexed to a will by way of addition, as a codicil." It must be presumed that Congress in passing the laws providing for the registration of trade-marks and labels intended that certain fees should be paid for the registration of what was then known and recognized as labels and as trade-marks. It is not competent for a party to state that this or that is a label, and this or that is a trade-mark, and thus determine its character. Whether it is a label or whether it is a trade-mark must be determined by the defi- nition which has been given and accepted every where as clearly and fully covering the meaning of those words. The action taken by the examiner in this case was in accord- ance with the well-settled rulings and decisions of the office. He refused to allow applicant to register as a label subject-matter clearly and undeniably included within the definition of a trade- mark, as he would have denied the registration of any application for a trade-mark or subject-matter properly registrable as a label. I Submit that the writ should be denied for the following rea- sons : First, because the registration of the alleged label has never been denied by the respondent; ,second, because the alleged label contains subject-matter clearly registrable as a trade-mark, and therefore not registrable under the statute as a label. E. M. Marble, Commissioner of Patents. A report of the Examiner having charge of the registration of labels, addressed to the Commissioner, giving his reasons for re- fusing to register the label, accompanied the foregoing answer, and was as follows : Sir: In the matter of the application of the Willcox & Gibbs Sewing Machine Company for registration of a label, wherein, on petition of A. Pollok, Esq., a rule to show cause why registration has been refused by the office has been issued by the Supreme Court of the District of Columbia, and referred to me by yourself for report as to the examiner's action on the case, I have the honor to report : NOVEMBER, 1 88 I. 587 94 United States, ex rel. &c. vs. Marble. On the 3rd of May, 188 1, the above named company duly filed an application for the registration of a label for hosiery, pay- ing the fee of six dollars required by law. On the 6th of May a letter was written to applicants (not at that time represented by attorney) in which they were informed that the monogram formed of the letters W and G, forming part of the alleged label, could not be registered for the reason that it amounted to a trade -mark. On the 10th of May, Mr. Pollok, now appearing as attorney for the applicant, filed an argument in which he questioned the right of the office to determine that matter presented as a label could be rejected for the reason given, and advised the office that the label was not a trade-mark. The examiner's second letter merely repeated the former action, citing a decision of the Com- missioner in support thereof. The case, having been twice rejected, was now in condition for appeal to the Commissioner in person, the usual and recognized recourse in label cases when registration has been refused by the examiner, but the record shows no such step taken in that direc- tion. As regards the merits of the case, the examiner is guided in his practice by former decisions based upon the Act of June 18, 1874, - by which the office is necessarily governed. This Act distinctly excludes trade -marks from the protection it was designed to afford. In the case of Simpson 6-* Sons, (10 0. G., 333), the Acting Commissioner sustained the examiner in his refusal to register a label in which the arbitrary word "Eddy- stone" was included. He says: "Applicant will be permitted to register the name of his firm, their place of business, descrip- tion of the nature, quality and quantity of his parcels as a label; but he cannot be allowed to claim the arbitrary words and fanci- ful figures mentioned as part of the label. These should be registered as trade-mark." In the case of Ex parte Thaddeus Davids 6* Co., (26 O. G., 94), cited in examiner's second letter, the Commissioner held that "the presence in a label of matter registrable as a trade- mark excludes the whole from registration." 588 SUPREME COURT FOR DISTRICT OF COLUMBIA. United States, ex rel. &c. vs. Marble. 94 There appears never to have been any question in the office that a monogram, such as that shown in applicant's fac simile, consti- tused a registrable trade-mark. The fact that from time immemorial monograms "have been regarded as trade-marks, is set forth in Browne on Trade-Marks, paragraphs 15 and 262, and the Office practice has been ill accord- ance with this doctrine. The examiner cannot find that it has ever been disputed ; but it is clearly laid down in the Commissioner's manuscript decision in the case of Ex parte The Dr. Harter Medicine Company, July 29, 1879. This was an appeal from the examiner's refusal to register a trade-mark in which certain descriptive matter was shown in connection with a monogram, and the Acting Commis- sioner said : "Applicant may amend his application and restrict the trade-mark to the monogram and shield. The balance of the label should be registered as a label." With the doctrine and practice so clearly established, as these rulings indicate, there has never been any room for question as to the propriety of the examiner's action. If applicant deemed it erroneous it was so because the decisions on which it was based were erroneous, and this the applicant has an opportunity to show whenever he chooses to avail himself of the rehearing by the Com- missioner in person, to which he is entitled. Respectfully submitted, F. A. Seely, Examiner of Trade-Marks. M. A. Pollok, for the relator. Mr. Justice James delivered the opinion of the Court: The relator claims the right to have its label registered in the Patent Office, as a label designed to be used on an article of manufacture, under the Act of June 18, 1874. In order to ascer- tain the intent of that Act it will be necessary to refer to the statutory provisions relating to the same matter existing at the time of its passage. NOVEMBER, 1 88 1 . 589 94 United States, ex rel. &c. vs. Marble. Section 4937 of the Revised Statutes provided as follows : "Any person domiciled in the United' States * * * who intends to adopt and use any trade-mark for exclusive use within the United States, may obtain protection for such lawful trade-mark by com- plying with the following requirements : First. By causing to be recorded in the Patent Office a statement specifying the names of the parties * * * who desire the protection of the trade- mark ; the class of merchandise, and the particular description of goods comprised in such class by which the trade-mark has been or is intended to be appropriated ; a description of the trade-mark itself, with fae similes thereof, showing the manner in which it has been or is intended to be applied or used, and the length of time, if any, during which the trade-mark has been in use. Second. By making payment of a fee of twenty-five dollars," etc. Section 4939 excluded from the class of registrable trade-marks any mark which was merely the name of a person unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons. These sections applied to trade-marks which were in the form of labels bearing distinguishing marks. It was at the same time provided by section 495 2 that — '•' Any citizen of the United States, or resident therein, who shall be the author, * * * designer, or proprietor of any * * * engraving, cut, print, &c, shall, upon complying with the provisions of this chapter, have the sole liberty of printing, * * publishing, * * and vending the same." Sections 4956 and 4957 contain the provisions referred to — namely, for the deposit of copies and the recording of a description of such engraving, cut, or print in the office of the Librarian of Congress. As the application of these sections did not depend upon the importance of the print, they of course included prints which were to be used merely as labels. It is plain that these contemporaneous provisions relating to trade-marks and prints authorized any person who owned a label bearing distinguishing marks to have it recorded in the Patent Office as a trade-mark; or, if he preferred to do so, to have it registered in the office of the Librarian of Congress as a mere 59° SUPREME COURT FOR DISTRICT OF COLUMBIA. United States, ex rel. &c. vs. Marble. 94 print. It must bear such distinguishing marks in order to be ad- mitted to record as a trade-mark; but the fact of bearing them did not exclude it from registry as a print. i. The Librarian of Congress had no discretion to refuse to recognize it as a print because it could be recognized by the Com- missioner of Patents as a trade -mark. Whether it should be treated as the one or the other depended wholly on the will of its pro- prietor. It was for him to determine whether he would adopt it as his trade-mark, and whether he would make the declarations necessary to that end. When the registering of such prints as were designed to be used as labels on manufactures was transferred from the office of the Librarian of Congress to the Patent Office, by the Act of the 18th of June, 1874, was this choice of the owner of the label as to the character which it should have and the pur- poses which it should serve taken away? The first section of that Act provides that no person shall maintain an action for the infringement of his copyright of any book, ' < print, cut, engraving, &c, unless he shall give notice thereof by inscribing upon some visible portion of such books, prints, engravings," certain words. The third section provides — • That in the construction of this Act the words "engraving," "cut," and "print," shall be applied only to pictorial illustra- tions or works connected with the fine arts, and no prints or labels designed to be used for any other article of manufacture shall be entered under the copyright law, but may be registered in the Patent Office. And the Commissioner of Patents is hereby charged with the supervision and control of the entry or registry of such prints or labels in conformity with the regulations pro- vided by law as to copyright of prints, except that there shall be paid for recording the title of any print or label, not a trade- mark, six dollars, which shall cover the expense of furnishing a copy of the record, under the seal of the Commissioner of Patents, to the party entering the same. After the passage of this Act the Commissioner of Patents was charged with two distinct duties relating to labels. If any per- son intending to adopt a particular label as his trade-mark de- sired to obtain protection for it, the Commissioner was bound, NOVEMBER, I 88 I. 591 94 United States, ex rel. &c. vs. Marble. provided it bore the necessary distinguishing marks, to cause to be recorded the statement of the owner specifying the facts pre- scribed by the statute. He was now required to register also labels which were not trade-marks; but was he clothed with power to control the entry of labels so far as to determine that a label which by reason of its distinguishing marks, might have been entered as a trade-mark should not be admitted to registry as " a label, not a trade-mark?" The only reference to any control to be exercised by him, is found in the clause which provides that he ' shall have "control of the entry or registry of such prints or labels in conformity with the regulations provided by law as to copyright prints;" but this is merely the same control which has been exercised over the registering of labels as copyright prints by the Librarian of Congress by authority of section 4948 of the Revised Statutes, and in conformity with the regulations found in sections 4956 and 4957, and such control did not, as we have already said, include authority to exclude from the registry any particular print on the ground that it should more properly be entered at the Patent Office as a trade-mark. Of course, then, when this control over the, registry of the same prints now called " labels which are not trade-marks" was transferred to the Com- missioner of Patents, it had only the same limited application, and did not include any discretion to determine whether a parti- cular label should be classed as a trade-mark or as only a label. If Congress had intended to take away from the owner of a label his former right to determine what use he should make of it and how he would have it entered, that intention would have been plainly expressed. The actual intention was merely to change the place of registry. When an applicant for registry complies with all the requirements of the law and the lawful regulations, as the relator appears to have done, the function of the Commissioner is merely ministerial. 2. The peremptory writ will issue accordingly. The Chief Justice, and Justices Wylie and James sat in this case. 592 COURT OF COMMON PLEAS, PHILADELPHIA. Tetlow vs. Savournin. 9 5 94 COURT OF COMMON PLEAS, PHILADELPHIA. In Equity. Tetlow vs. Savournin. Decided , 1882. Reported 15 Phil., 170. ' ' Trade Secret ' ' Case. A defendant to a bill to enjoin the use of a trade-mark, cannot by alleging injurious qualities in the plaintiff's goods, compel him to disclose the ingredients of which they are composed. Rule for an Attachment. Allen H. Gangewer, Esq., for the rule. Furman Sheppard, Esq., contra. The plaintiff, manufacturer of cosmetics, filed a bill against the defendant, charging him with imitating his labels and trade-mark, and praying an injunction. The answer denied that the plaintiff had any standing to complain, and alleged that his product was , i882. 593 9 5 Tetlow vs. Savoumin. injurious. The case being before an examiner, the plaintiff was asked by his adversary of what ingredients his goods were com- posed, which he, under instruction of counsel, declined to disclose, whereupon this rule was taken. Counsel for the rule claimed the right to show what substances were contained in the cosmetic made by the plaintiff, in order that the Court might judge whether it was such a preparation as ought to be protected. No one can give the information better than the man who makes it. Counsel against the rule replied that the whole commercial value of such proprietary manufactures depends upon secrecy as to their composition, and protested against depriving a man of his property by such a proceeding as this. If these questions must be answered, every manufacturer will be at the mercy of any one who desires to extort from him an account of his processes, for an attempt to restrain an infringer would result in the disclosure of all that makes the invention valuable. The unreported case of Brooks v. Schofield, C. P., "No. 4, Dec. T., 1877, was referred to as in favor of the objection. In 21 How, P- E. (JV. ¥.), 100, a similar question was allowed, but only on the ground that the plaintiff, in his examination-in-chief, had opened the subject, and had thus made the question relevant on cross-examination. Rule discharged. 38 594 SUPREME COURT, STATE OF LOUISIANA. Funke vs. Dreyfus & Co., et al. 9 5 95 SUPREME COURT OF LOUISIANA. In Equity. Ludwig Funke, Jr. vs. Joseph Dreyfus & Co. Same vs. Jacob Gottschalk. Decided January, 1882. Reported 34 La. Ann. R., 80. "Bolter's Bitter' s" Case. 1. The evidence establishes the proprietary interest of plaintiff in his trade-mark; also, the medicinal properties of his bitters, and that he is not guilty of fraud in using the word " imported " on his labels. i. The unauthorized use by other parties of plaintiff's trade-mark, is no justification of defendant's acts of infringement; but, on the contrary, such circumstance is, under the authorities, one of aggravation. JANUARY, 1882. 595 95 Funke vs. Dreyfus & Co., et at. Appeal from the Fifth District Court for the Parish of Orleans. Rogers, J. Levy & Kruttschnitt, for plaintiff and appellee. I. The manufacturer or merchant who has produced or brought into market an article of use or consumption that has found favor with the public, who, by fixing to it some name, device or symbol, or his autograph or fac simile of autograph, which serves to dis- tinguish it as his, shall receive the reward of his skill or enterprise, and shall not be prejudiced by infringement or imitation of his trade-mark by others. Courts will restrain the wrong-doer. Wolfe v. Barnett, 24 An., 97; Insurance Oil Co. v. Scott, 33 An., 948; 13 Wall., 322; 6 Otto, 245; 100 U. S. S. C, 617; 1 Cooley on Torts, 359; Upton on Trade- Marks, 97; Coddingtori s Digest, sec. 589, etseq.; Browne on Trade-Marks, sec. 207; Cox' s Manual, 73. II. Owners of trade-marks will not be deprived of remedy against piracy of their marks because of any alleged misrepresenta- tions, by them, unintentionally made, especially when, in a reasonable sense, the statements are substantially true. Equitable remedy is refused only where there is a fraudulent design in a material matter. Thus, the use of the word "patent," where goods were originally patented; or the word "imported," where they were originally imported, or where the main ingredients are imported, will not vitiate a trade-mark or prevent infringement, especially where the wrong-doer himself uses the same words. Ins. Oil Co. v. Scott, 33 An., 948; High on Injunctions, 674. See also, the cases reported in Cox's Manual of Trade-Mark Cases, 58, 67, 81, 102, 108, 118, 152, 215, 273, 288; Conrad v. Brewing Co., St. Louis Court of Appeals, October Term, 1879; Coddington's Digest Trade-Mark Cases, sees. 561, 565, 570, 571; American Trade-Mark Cases, 282, 589; 39 Conn., 450; 35 Conn., 402. III. Long, unlawful use, by others, of the trade-mark of plain- tiff, can vest no right in them or others, to such use. Knowledge and acquiescence of the owner must be proved. It is never pre- sumed. 24 An., 97; Cox's Manual Trade-Mark Cases, Nos. 638, 642, 228; Coddington's Digest Trade-Mark Cases, sees. 57, 58, 596 SUPREME COURT, STATE OF LOUISIANA. Funke vs. Dreyfus & Co., et al. 95 62, 64; American Trade-Mark Cases, pp. 101, 536, and Browne on Trade-Marks, sec. 685. IV. While punitive or exemplary damages are not given in trade-mark cases, enough is allowed to cover all losses caused by the wrongful acts of the defendant — loss by injury to the reputa- tion of the article imitated, caused by sale of inferior goods; loss from depreciation in price, caused by competition; and defendant is compelled to account for all profits realized from the illicit trade. Even where no specific damages are proved, plaintiff may recover. He is entitled to all the profits made by defendant, and his remedy is not limited to the profits. Browne on Trade-Marks, sees. 503, 505; 4 McLean, 529; 7 Cushing, 322; Coddington's Digest Trade-Mark Cases, sees. 246 and 105 1-2; Cox 's Manual Trade-Mark Cases, Nos. 111, 347, 354. V. The prescription of one year is not applicable to claim for profits against an infringer of trade-marks; the prescription is ten years. Such infringer is, by the lex mercatoria, a trustee — a negotiorum gestor. 1 . By both the commercial law and civil law, he who uses the name and trade-mark of another, is an agent or a negotiorum gestor, and, as such, is bound to account for the profits. Browne on Trade-Marks, sec. 187; Kerr on Injunction, sec. 381; Amer. Law Review, N. S.,June, 1880; 6 Waifs Action, 36; Coddington Dig. {French Decisions'), sec. 1052; Cox's Manual T.-M. Cases, No. 347; C. C, 2301, 2311; C. N., 1376; Bouvier' s Diet. , "JVegotiorum Gestor," and authorities there cited. For English decisions see 2 Daniels Chancery Practice, sec. 1649 (note"/, $Beavan, 578; 34 Beav'an, 595; n /wist, 2V. S., 408; 14 Weekly Reporter, 166. 2. The uniform commercial law of other States is the law of Louisiana, unless positive injunctions of La. Statutes forbid. Hen- neri 's Digest, 795; 2 M., 304; 7 M., 460; 12 M., 498; 5 La., 403; 2 R. R., 124; 4 An., 210; 6 An., 781. 3. Prescription for a term less than ten years cannot be pleaded by a trustee, agent or negotiorum gestor. Longue's Digest, 571; 15 An., 143; 19 An., 142; 12 An., 632; 17 An., 246; 20 An., 381; 21 An., 406; 22 An., 151; 27 An., 132. JANUARY, 1882. 597 9 5 Funke vs. Dreyfus & Co., et at. Chas. S. Rice, for defendants and appellants. 1. Under the pleadings, plaintiff was bound to establish his title to the alleged trade-mark; to prove the medicinal and valuable — intrinsically — qualities of his "preparation;" and to show the truthfulness of the representations in his alleged trade-mark and the advertisements accompanying it. 2. There is no legal evidence of title in the record. 3. There is no evidence in the record of any medicinal or in- trinsically valuable qualities in plaintiff's "preparation." The traverse in the answer of the allegation in the petition of its possession of these qualities, and the failure of plaintiff to make such proof, supported by the refusal of plaintiff to disclose the materials of which and the manner in which his "preparation" is compounded, are conclusive of the truth of the traverse. 14 An., 81. 4. The plaintiff's "preparation" is a quack "preparation" and is not entitled to protection. Am. Trade-Mark Cases, 180, 68, 471, 644, 226, et seq., 154, 311; Coddington's Digest, sees. 567, 661 to 663, 664. 5. By the use of the word "Imported" as part of the alleged trade-mark, as well as the representation of a crown thereon; and the advertisement accompanying each package, representing plain- tiff as "sole agent for the proprietors," the plaintiff was and is guilty of misrepresentation and fraud on the public: the "prepara-. tion" being compounded in the United States, and not in a foreign country; and plaintiff is not entitled to the protection of a Court of Equity. Am. Trade-Mark Cases, 290, 527, 640; Browne on Trade- Marks, sec. 491; and cases referred to in body of brief, recently decided in San Francisco, 36 Law Journal, ch. 328. 6. The open and notorious use of the alleged trade-mark for, at least, twenty years last past, and the inferences and proofs that such use was and must have been known to the plaintiff, and his acquiescence in such use, estop him from relief by injunction, and, at all events, from any recovery of damages. Browne on ■ Trade-Marks, sees. 497, 510-512; Coddington's Dig., "Acquies- cence, ' ' page ij, et seq. 598 SUPREME COURT, STATE OF LOUISIANA. Fuuke vs. Dreyfus & Co., el al. 5 7. By whatever rule the plaintiff is entitled to measure any re- covery, the amount of his recovery is damages — his claim for which is prescribed by lapse of one year. C. C, 2315; Browne on. Trade-Marks, sees. 502, 503 and 504; Coddingtori s Dig-, Damages, sec. 235, et seq.; Upton on Trade- Marks, pp. ii,\to 246; Graham v. State, 40 Col., 593; S. C, Sedgwick's Leading Cases on the Measure of Damages,: 716; Sedgwick on the Measure of Damages, $th Ed., 675, note. Levy, J., delivered the opinion of the Court: Similar judgments, based on the same evidence in both these cases, have been rendered, and they are consolidated for trial be- fore this Court. The defendants are the appellants. Plaintiff alleges infringements of his trade-mark of a prepara- tion known as "Boker's Bitters," by defendants, and in his suits prayed for and obtained injunctions, and sought damages on ac- count of said infringements. There were judgments in the lower Court, perpetuating the injunctions and awarding to plaintiff, in each of the suits, damages to the extent of five hundred dollars. In his petition, plaintiff alleges that, since February, i860, he has manufactured a medicinal preparation, or bitters, of great value, which has been successfully used as a specific in certain dis- eases; that this preparation has always been made of the best Cologne or French spirits, mixed with other ingredients of good quality and valuable curative properties, and to this preparation the name of "Boker's Stomach Bitters" was given many years since, and is the peculiar name by which it has always been* known in the markets of this and other countries; that it has been offi- cially recognized by the United States Commissioner of Internal Revenue, who has decided it to be a medicinal preparation which, if properly stamped, may be sold by druggists and apothecaries, without rendering them liable to ,pay a special tax as liquor dealers; that these "Bitters" were first manufactured in 1828, by John G. Boker; from 1828 to January, 1853, their manufacture and sale was conducted by said John G. Boker, in conjunction with his brother, E. Boker, in the name of John G. and E. Boker; E. Boker died in 1853, and the business was then conducted under JANUARY, 1882. 599 9 5 Fuuke vs. Dreyfus & Co., et al. the style of John G. and his son, J. Boker, the former continuing as sole owner of the trade-marks, and receipts and manufacture. On the 29th of February, i860, John G. Boker sold the business, the good-will, the trade-marks, receipts, and everything pertain- ing to the manufacture and sale of the "Bitters" to plaintiff, who was the son-in-law of said John G. Boker; that since said sale, plaintiff has been the sole and undisputed owner of said business, receipts and trade-marks, labels, and rights to use the same, and signatures of the old firms, and has had the exclusive right to manufacture and sell said Bitters, and has manufactured and sold them in large quantities, made of the best and finest materials; that, in 1853, the manufacturers adopted as a name and trade- mark, the words: "Boker's Stomach Bitters;" that from that date, they branded on the boxes or packages containing this preparation these words, and on the top of the boxes: "J. G. & J. B. Boker," and since, after notice to that effect, there has been an additional label with a fac simile of the signature of said firm; that at the same time and ever since, the manufacturers, for the further purpose of distinguishing the said Bitters, have affixed to every bottle thereof, a red label with the words: "Stomach Bit- ters, imported by J. G. & J. B. Boker, New York," printed thereon, and elaborated ornamentally, which they made part of their trade-mark for labels, and to avoid counterfeiting they put up their bitters in bottles of peculiar shape, easily distinguished from bottles generally used for other bitters; that his assignor in- vented the name "Boker's Stomach Bitters," and he was first to use the same, and the symbols, bottles and insignia described as trade-mark; that his said business has involved great expenditure of money and labor; that said trade-mark has become very valu- able to him, etc.; that the defendants have for several years ille- gally manufactured and sold, and are still manufacturing and selling an inferior quality of bitters, which they represent to be the bitters manufactured and sold by plaintiff, and with the in- tention to deceive the public, and fraudulently derive advantage thereby, they have used the same form of bottles, adopted by plaintiff, and have affixed thereto a notice similar to plaintiff's, and a counterfeit of the signatures of John G. and J. Boker, and 600 SUPREME COURT, STATE OF LOUISIANA. Funke vs. Dreyfus & Co., et al. 95 a counterfeit and close imitation of the red label of plaintiff and the words thereon, and the symbols and insignia surrounding said words, and with same intent, have imitated and counterfeited on the boxes used by them the labels and words selected and used by plaintiff and his assignor, as set forth above. He also alleges that the sale of inferior bitters by the defendants, as the genuine "Boker's Stomach Bitters " has greatly injured the reputation of plaintiff's preparation, and this has materially injured plaintiff in his business. Defendant filed an exception of no cause of action and also answered, denying that the words used by plaintiff constitute a trade-mark, and alleging that, even if they do, plaintiff has no right or ownership therein entitling him to the exclusive use and appropriation of the same; that for more than twenty-five years the pretended trade-mark has been and is now in commgn public use, and this has not been objected to, but has been acquiesced in by plaintiff and his assignor, and that no exclusive right to the same can be maintained. Further, they aver that the representa- tion on the labels that the said compound is imported, is false and fraudulent, and intended as a fraud upon the public, and, therefore, plaintiff is not entitled to the exclusive use or the pro- tection demanded by him. He avers also that plaintiff holds out to the public, not that he is the owner, but that he is the agent of the proprietors, whose names are not discovered; that, if he is agent, he is without right to stand in judgment; that if such rep- resentation is not true, then he is guilty of fraud and deceit upon the public, which estops him from demanding the interposition of this Court. They also deny that the preparation is possessed of medical and curative qualities, and aver that such representations are a fraud and estop plaintiff's demand. The defences set up in the answer maybe thus summarized, and will be considered in their order: ist. That plaintiff has not proved by legal evidence his pro- prietary interest in the trade-marks and labels. The testimony of many witnesses in the record proves satisfac- torily that plaintiff and his vendors for a great number of years JANUARY, 1882. 6oi 9 5 Funke vs. Dreyfus & Co., et at. have been in the ownership of the, trade-mark and labels, and this testimony was not objected to. 1. The objection to the admissibility of the copy of the Act of sale to plaintiff, as evidence, was not ruled upon, and no bill of exception was taken to its admission. We think the ownership is fully proved. 1 Dillon' s U. S. C. C. R., 329; 9 La., 424. 2nd. That plaintiff has failed to prove that these bitters have medicinal properties. The testimony, and, indeed, the universal opinion on the sub- ject makes it clear to our mind, that bitters are regarded as tonics and are useful in the correction of many disorders of the stomach; that these particular bitters have been in general use, as such, for a very long time; that they are pure and made of good materials; that the United States Internal Revenue Department recognized them as valuable and exempted them from the special liquor tax, which exemption is only made in cases of liquors which are re- garded as forming part of medicinal preparations. 100 U. S. R., 617; 6 Wait 's Actions, 27, 24a, 97. 3rd. That plaintiff is guilty of fraud in representing on his labels that the bitter is "imported," and is thus disentitled to to equitable remedy. The evidence satisfies us that the use of this word on the label was not made for the purpose of deceiving the public or with fraudulent intent. In the case of Wolfe v. Barrett &>•> Lion, 24 A., 97, .this Court held: "but if the trade-mark consists of something else, as the plaintiffs own name combined with a sonorous appellation, well calculated to express origin and ownership, as well as to attract the attention and impress the memory of buyers, it is only neces- sary that he should manufacture, without exclusive right, or repre- sent a manufacturer." And we think the true rule, as applicable to this case, is correctly stated in the following passage, (from Up- ton on Trade- Marks, 97), to be this: "That the honest, skillful and industrious manufacturer or en- terprising merchant, who has produced or brought into the mar- ket an article of use or consumption that has found favor with the public, and who, by affixing to it some name, mark, device or 602 SUPREME COURT, STATE OF LOUISIANA. Funke vs. Dreyfus & Co., et at. 05 symbol, which serves to distinguish it as his, and to distinguish it from all others, has furnished his individual guaranty and assur- ance of the quality and integrity of the manufacturer, shall re- ceive the first reward of his honesty, skill, industry or enterprise; and shall in no manner and to no extent be deprived of the same by another, who, to that end, appropriates and applies to his pro- ductions the same or a colorable imitation of the same name, mark, device or symbol, so that the public are, or may be, deceived or misled into the purchase of the productions of the one, supposing them to be those of the other. 17 Barbour, 608; 3 Sanford, 725; 25 Barb., 416." In the case of Insurance Oil Tank Co. v. Scott, recently decided by us and reported in 33 A., 946, this Court considered and passed upon a question much like this; in the last named case, the word patented being used upon the labels or plates, when it was con- tended that the article had not been really patented. We there held: "Defendant urges that the use of the abbreviation < Pat.,' mean- ing patented, in the trade-mark, is a fraud on the public and a violation of law, which deprives plaintiff of the right of redress. It is undoubtedly true that the affixing of the word < patent ' to an unpatented article, 'for the purpose of deceiving the public,' is prohibited, under penalties, by the laws of the United States; U. S. R. S., sec. 4901; and that a representation in a trade-mark that an important article is protected by a patent, prima facie amounts to a misrepresentation of an important fact, which would disen- title the owner of the mark to relief in a Court of Equity, as against a pirate. Browne on Trade-Marks, sec. 572; Coddingtori s Digest Tr.-M. Cases, sec. 548; 38 Conn., 450. But to have such effect, the use of the word < patented ' must be < with the purpose of deceiving the public,' and if such fraudulent intention does not exist, and the use of the word may be explained in any rea- sonable sense consistent with truth and honesty, the party will not be prejudiced. High on Injunctions, sec. 674; Coddingtori 's Dig., sees. 570, 571." Also : "It maybe, as contended by defendant, that the oil sold by him under plaintiff's trade-mark is equal, in all respects, to the oil of plaintiff. But, if defendant may use JANUARY, l882. 603 95 Funke vs. Dreyfus & Co., et at. this mark, other less conscientious dealers may employ it for inferior and dangerous oils; and the public would thereby be de- prived of the security now enjoyed in the purchase of oil so marked, and the business of plaintiff would be destroyed." Ibid. "De- fendant has no right, in justice or in law, to trade upon the repu- tation and business sagacity and enterprise of plaintiff, which are represented by and embodied in its trade-mark." Ibid. See also Coddington's Dig., sees. 546, 543, 558, 561, 565, 570, 571; Cox" Manual of Trade-Marks, 117, 195, 591, 106, 180. The use of the words << Sole Agent," by plaintiff, which is dwelt upon by the defence, has been satisfactorily explained and falls under the above reasoning, because they were not used for the purpose of deceiving the public or with fraudulent intent. 4th. Defendants contend that, from long use by others they were justified in imit'ating the trade-mark, and they supposed acquies- cence on the part of the owner. 2. The doctrine of acquiescence is ably and elaborately dis- cussed in Browne on Trade- Marks, sec. 585. That author says: "Story, J., once spoke thus: Again it has been said that other persons have imitated the same spools and labels of the plaintiffs, and sold the manufacture. But this aggravates rather than excuses the misconduct, unless done with the consent or acquiescence of the plaintiffs, which there is not the slightest evidence to establish; or that the plaintiffs ever intended to surrender their rights to the public at large or to the invader in particular." 3 Story, 458. In another case, Woodbury, J., said: "lam not aware of any principle by which a usage in this or a foreign country is compe- tent evidence in defence of a wrong. ' ' "But I am not aware that a neglect to prosecute, because one believes he had no rights, or from mere procrastination, is any defence at law, whatever it may be in equity." "There is something very abhorrent in allowing such a defence to a wrong, which consists in counterfeiting others' marks or stamps, defrauding others of what had been gained by their industry and skill, and robbing them of the fruits of their 'good name,' merely because they have shown forbearance and kindness." "It is rather an aggravation to the plaintiff that many others have injured them." 2 Woodb* M., 1; 44 Mo., 173. 604 SUPREME COURT, STATE OF LOUISIANA. Funke vs. Dreyfus & Co., et at. 95 5 th. Defendant invokes the prescription of one year. We do not think it tenable. We concur with counsel for the plaintiff and the authorities cited by him, that the "infringer who illegally appropriates an invention to his own use, making profit thereby, may be treated as his trustee in respect to such profits and com- pelled to account therefor in equity." Browne on Trade-Marks, sec. 507; Longue 's Dig., p. 571; 19 A., 492, &V. Under the circumstances of the case, however, we are not dis- posed to increase the damages allowed by the lower Court. The judgments appealed from are, therefore, affirmed at cost of the appellants. Rehearing refused. FEBRUARY, 1 882. 605 9 6 Hostetter, et al. vs. Adams, et al. 96 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Hostetter, and another, vs. Adams, and another. Decided 18 February, 1882. Reported 10 Federal Rep., "Hostetter' s Bitters" " Case. 1. The label and method of preparation for market of " Hostetter's Cele- brated Stomach Bitters," is infringed by that adopted for " Clayton & Russell's Celebrated Stomach Bitters," inasmuch as the latter is plainly copied from the former by design, and its general effect is such as to deceive an ordinary observer having no cause to use more than ordinary caution. 2. The plaintiffs' mark of trade is the entire style of their bottle and label, of which the name of their article forms a part, and the other details of design and lettering. A. H. Clark, W. W. Goodrich and /. Watson, for plaintiffs. W. A. Arnoux and A. Dutcher, for defendants. 606 U. S. C. C. SOUTH. DIST. OF NEW YORK. Hostetter, et al. vs. Adams, ei al. 96 Blatchford, C, J.: The bill alleges that the plaintiffs are, and for 27 years or more have been, partners doing business as Hostetter & Smith, and dur- ing that time engaged in making and selling a medicine known as " Hostetter' s Celebrated Stomach Bitters;" that they have the sole ownership of the good-will, labels, or trade-marks of said bitters; that said bitters have acquired a reputation as a safe and valuable medicine; that, in order to designate said bitters as of their own compounding and as genuine, and to prevent fraud by having spurious bitters sold as and for the genuine, they from the begin- ning devised certain labels, tokens, or trade-marks, and a certain manner of putting up said bitters, placing them upon the market in a style different from that in use by manufacturers or dealers in like articles, and that they have adhered to said style' up to the present time; that said bitters are placed by them in square bot- tles, of uniform size, known as No. 6, containing about one and a half pints, and having blown therein the name "Dr. J. Hostet- ter's Stomach Bitters," and upon these bottles they cause to be pasted labels or trade-marks, and the bottles then have revenue stamps put on them, and are packed in square boxes, each box containing a dozen bottles, and, so boxed, are sold to dealers; that the defendants are making and selling a spurious and inferior article of bitters, prepared in imitation of, and intended to be sold as and for, the genuine Hostetter' s Celebrated Stomach Bit- ters of the plaintiffs' own manufacture, and calculated to deceive the public and consumers, and to enable the defendant to reap the profits of the reputation and sale of them; that, with like intent, the defendants have printed a false label or trade-mark in imita- tion of, and closely resembling, one of the plaintiffs' labels, said false label being well calculated to mislead and deceive customers of the genuine bitters; and that the defendants use the bottles of the plaintiffs, from which the genuine bitters have been used, and pack them in the same manner, in cases of the same shape, one dozen bottles in each case, in which manner they are sold. The bill prays for an injunction restraining the defendants from using said spurious label, and for other proper relief. The case has been heard on pleadings and proofs. FEBRUARY, 1 882. 607 96 Hostetter, ct al. vs. Adams, el al. The plaintiff's bottle is of dark glass and has a four -sided body, the sides being of equal size and the faces rectangular. On one side is an engraved label with a white body. This label is sub- stantially as long and as wide as the face of the bottle. Near the top, in four lines, in black, are the words " Hostetter's Celebrated Stomach Bitters," one word in each line. The third and fourth lines have letters of the same size and character, larger than the letters in the first and second lines. The letters in the first line are larger than those in the second line, and of different character from them, and from those in the third and fourth lines. The letters in the first line and those in the fourth line each of them form a curve, the convexity of which is upward. The second and third lines are horizontal. The letters in the first, third, and fourth lines are shaded. Underneath the fourth line is a horse without harness vaulting in the air towards the left, with his hind feet on the ground and his fore-feet in the air, mounted on his bare back by a naked man, with a helmet on, and a flying robe over his right arm, and in his two hands a spear, with which he is striking at a dragon below him on his left. The open mouth of the dragon is near the left knee of the rider, and the point of the spear is just above that knee. The body of the dragon passes under the horse, and his tail comes around the right hind leg of the horse and nearly reaches the body again. In a fore-paw of the dragon, near the end of his tail, appears to be a piece broken off from the head of the spear. The horse has flying mane and a sweeping tail. The horse, man, and dragon are dark on a white ground. Below them is a shield, commencing at a little below the middle of the length of the label. The shield has a dark ground. On it are let- ters printed in white. There are 16 lines of letters. Lines 1, 2, 4, 7, 8, 9, 10, 12, 13, 14, and 15 are the same size of type. The reading of the 16 lines, divided' into lines, is this: (1) "The best evidence of the merit of an article is" (2) "the disposition to produce counterfeits;" (3) "and we regard it as" (4) "the strongest testimony to the value of" (5) "Hostetter's" (6) "Celebrated Stomach Bitters" (7) "that attempts of that description have" (8) "been frequent." "A due consideration of" (9) "the public welfare has induced us to" (10) "obtain a 608 U. S. C. C. SOUTH. DIST. OF NEW YORK. Hostetter, et al. vs. Adams, et al. 9 6 fine engraving, of which" (u) "this is &fac simile,'" (12) "and to append our note of" (13) "hand, which cannot be" (14) "counterfeited without" (15) "the perpetration" (16) " of a felony." The word "and" and the word "as," in line 3, are smaller than the other letters. The words "we regard it," in line 3, and also lines 5, 6, n, and 16, are on a black ground darker than the rest of the ground, and the letters are somewhat larger than the rest. All the letters in the shield are capitals. The line of the top of the shield consists of two curves of equal length, start- ing from an apex in the middle of the width and concave up- wards, and having a uniform sweep, and alike, and rising each to a point as high as the starting point, and then each falling off by a short concave upward curve, to a point. Then the two sides of the shield sweep around downward, by equal curves, to the center of the width of the label and the lower point of the shield, completing the outline of the shield. The space on each side, between the outer edge of the shield and a border around the label and a horizontal line running across at the lower point of the shield, is filled in with engraved work of waving, irregular figures. Underneath the shield, in a parallelogram, is a promis- sory note for one cent, payable to the bearer on demand, signed "Hostetter & Smith." In the middle of the width of the upper part of the note in a small circle, having in it the head and bust of an aged man with a long white beard. There is a border around the whole label. The defendants' bottle is of the same size, color, shape, and material as the plaintiffs', and many of the defendants' bottles are old bottles of the plaintiffs with the name "Hostetter" blown in the glass. The. side which has that name on it is covered by the defendants' label. The defendants buy such old bottles when 'empty which the plaintiffs have sold in the market with bitters in. On one side is an engraved label with a white body. This label is substantially as long and as wide as the face of the bottle, and is of the same size as the plaintiffs' label. Near the top, in four lines in black, are the words "Clayton & Russell's Celebrated Stomach Bitters," one word in each line. The third and fourth FEBRUARY, 1 882. 609 96 Hostetter, et al, vs. Adams, ct al. lines have letters of the same size and character, larger than the letters in the first and second lines. The letters in the first line are larger than those in the second line, and of a different character from them, and from those in the third and fourth lines. The letters in the first line and those in the fourth line each of them form a curve, the convexity of which is upward. The second and third lines are horizontal. The letters in the first, third, and fourth lines are shaded. The appearance presented by those four lines, as to the size and character and shading of the letters in the corresponding lines, and as to ornamentation in flourishes and dashes, is identical with the appearance presented by the corres- ponding four lines in the plaintiffs' label, as to the same particu- lars, except the difference resulting from substituting the words "Clayton & Russell's" for the word "Hostetter's." Underneath the fourth line is a horse, with harness and caparison and saddle upon him, vaulting in the air towards the right, with his hind feet on the ground and his fore feet in the air, mounted by a man with clothing on his trunk and feet, and a helmet, with wings on his head, and in his right hand a spear, with which he is striking at a scorpion on the ground in front of him. The horse has a sweep- ing tail. The horse, man, and scorpion are dark on a white ground. They and the four lines above them occupy respectively the same space up and down as the corresponding parts in the plaintiffs' label. Below them, commencing at the same point as in the plaintiffs', is a shield, which has a dark ground, with letters printed on it in white. There are 15 lines. The lines are all the same size of type, and the size of the type in line 1 in the plain- tiffs'. The reading of the 15 lines, divided into lines, is this: (1) "The bitters of Clayton & Russell will be" (2) "found a highly aromatic liquid and en-" (3) " tirely free from injurious substances." (4) " One wineglassful taken three times" (5) "a day before meals will be a swift" (6) "and certain cure for dys- pepsia a" (7) "mild and safe invigorant for delica-" (8) " te females a good tonic preparation " (9) "for ordinary family pur- poses a" (10) "powerful recuperant after the" (11) "frame has been reduced by" (12) " sickness an excellent app-"(i3) "etizerand an agreeable" (14) "and wholesome" (15) "stimulant." 39 6lO U. S. C. C. SOUTH. DIST. OF NEW YORK. Hostetter, el al. vs. Adams, et al. 96 All the letters in the shield are capitals. The line of the top of the shield is made up of four curves, and corresponds in z.11 respects with the line of the top of the shield in the plaintiffs." The shield is the same size and shape as the plaintiffs', and has a corresponding space on each side, filled in with engraved work, waving in character, though larger in detail than in the plaintiffs. The lower point of the shield comes down to the same point as in the plaintiffs'. Underneath the shield, in a parallelogram, are the words: "Vendors do not require a liquor dealer's license, being -a medical compound." There is a border around the whole label of about the same width as in the plaintiffs', though of a different character. There is a narrow space of white in the de- fendants' all around the lower parallelogram, and the side lines of white are carried up on each side of the top of the shield, and these continue down around the outer edges of the shield, dif- fering in these respects from the plaintiffs' . The words begin- ning with " one wineglassful," to the end, at "stimulant," are formed in a label of gold letters, printed on a bronze ground, which is on another face of the plaintiffs' bottle. i . It is shown that there are no such persons as Clayton & Russell, and that the defendants' label was prepared from the plaintiffs' by intentionally making the parts in it which are like corresponding parts in the plaintiffs', to be so like. It is plain that it is a copy from the plaintiffs' by design. \ r ariations are made of such a character as to be capable of discernment and description. But the general effect to the eye of an ordinary person, acquainted with the plaintiffs' bottle and label, and never having seen the defendants' label, and not expecting to see it, must be, on seeing the defendants', to be misled into thinking it is what he has known as the plaintiffs'. The size, color, and shape of the bot- tle, — the four lines of letters at the top of the label being, as to the three lower ones, identical, and as to the upper one, differing only in the name, — the general effect of the horse and his rider, the size and shape and color of the shield, the white letters in it, and their size and arrangement in lines contracting in length towards the lower point of the shield, the whole in black on white ground, and the border, give an affirmative resemblance FEBRUARY, 1882. 6ll 96 Hostetter, et al. vs. Adams, et al. calculated to deceive an ordinary observer and purchaser, having no cause to use more than ordinary caution, and make him be- lieve he has before him the same thing which he has before seen on the plaintiffs' bottle and expects to find on the bottle he is looking at. The differences which he would see on having his attention called to them are not of such a character as to over- come the resemblance to the eye of a person expecting to see only the plaintiffs' bottle and label, and having no knowledge of another. The testimony to the above effect is of great strength. 2. The plaintiffs have no exclusive right to make the bitters. Their trade-mark is not in the words "Celebrated Stomach Bitters," nor have any exclusive right to a bottle of the size, shape, and color of the one which they use. But the entire style of their bottle and label, of which those words form a part, is, in connection with the other particulars above mentioned, in which the defend- ants' bottle and label are like theirs, the mark of their trade. Williams v.Johnson, 2 Bos. , 1; McLean v. Fleming, 96 U. S., 245; Frese v. Bachof, 14 Blatchf,, 432; Coleman v. Crump, 70 JV. Y., 573; Morgan's Sons' Co. v. Troxell, 23 Hun, 632, and Cox's Manual, Case 674; Sawyer v. Horn, Cox ' s Manual, Case 667; Mitchell v. Henry, 43 Law Times Rep., (N. S.~), 186. The evidence as to transactions after the filing of the bill is admissible. It comes in not to show infringement, but to charac- terize the practical use of the subject-matter of the suit. The objection as to the recalling of witnesses is overruled. The plain- tiffs are entitled to an injunction, and to a reference to a Master to take an account of profits, and to the costs of the suit. 6l2 U. S. C. C. SOUTH. DIST. OF NEW YORK. Lorillard & Co. vs. Drummond Tobacco Co., et al. 97 97 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. P. Lorillard & Co. vs. Drummond Tobacco Co., and others. Decided 28 February, 1882. Reported 14 Federal Rep., hi. "Tin Tag Label" Case. Neither a letter nor a. horseshoe, nor any such simple device can be claimed as a label. Gifford 6° Gifford, for plaintiffs. S. S. Boyd, for defendants. Blatchford, C. J.: The first claim of the reissue (■'Improvement in Plug Tobacco," granted to Charles Seidler, October 24, 1876), is the only one in- volved in this suit. That claim has not been directly sustained in any suit on final hearing. It was not directly sustained in the suit against Dohan. The third claim was infringed and sustained ♦ FEBRUARY, 1 882. 613 9*7 Lovillard & Co. vs. Drummond Tobacco Co., et al. in that suit, and the novelty of that claim was put upon the ground of a distinction between metallic letters too large to have enough to answer the purpose of a label, and a label with letters on it. If in that suit the first and fourth claims were considered, the word "label" in those claims did not require, for the purposes of the infringement, that any label not having letters on it should be considered. The defendants' device in this case is a plain metallic horseshoe with no letters on it. It may be a trade-mark, but as such it is not like the plaintiffs' device as a trade-mark. As anything else, it is no more a label than the letters which, in the Dohan Case, were held not to be labels, were labels. A single letter, recog- nizable as such, is quite as much a distinguishing mark made by a piece of separate material as is a piece of metal of the form of a horseshoe. The letter B would be called the letter B, and the plain horseshoe would be called a horseshoe; but, to sustain the patent, neither can be called the label referred to in it. The motion is denied. See Hostetter v. Adams, 10 Fed. Rep., 838. 614 U. S. C. C. WEST. DIST. OF TENNESSEE. Singer Manufacturing Co. vs. Riley, et al. 98 98 CIRCUIT COURT UNITED STATES, WESTERN DISTRICT OF TENNESSEE. In Equity. Singer Manufacturing Co. VS. Riley, and others. Decided 7 April, 1882. Reported ii Federal Rep., 706. ' 'Singer Sewing Machine ' ' Case. TRADE-MARK— USE OF TRADE" NAME AND MARK— AFTER PATENT EXPIRED. Where a patentee uses his name and marks to designate his invention, and also the product of it, as manufactured by himself, so that the public cannot separate the one from the other, he cannot acquire any right to the exclusive use of the name and marks after the patent has ex- pired. Held, therefore, That the Singer Manufacturing Company, of New Jersey, has no exclusive property or trade name in the word " Singer," and that their shuttle device, as a trade-mark, had not been violated by the devices used on the Williams machine, of Montreal, or the Sigwalt machine, of Chi- cago, the alleged imitations not being calculated to deceive a pur- chaser. APRIL, 1882. 615 9 8 Singer Manufacturing Co. vs. Riley, et at. Application for Injunction. The bill and amended bill allege that the plaintiff manufactures and sells "Singer Sewing-Machines;" has done so for many years, in all the countries of the' world; and that by their excellence the machines have acquired a valuable reputation. It claims a trade name for the use of the word "Singer," and alleges that the de- fendants are fraudulently using it for purposes of injury to the plaintiff and to deceive the public. They also claim a trade-mark in certain devices described in the bill, which it is alleged the de- fendants have violated. The prayer is for an injunction. The answer denies that the defendants have ever pretended to sell machines of plaintiff's manufacture, and avers that they sell ma- chines as good or better in point of manufacture. But defendants admit that they do use the name "Singer," either alone or in combination with other descriptive names of machines they sell. They explain this by averring that one Singer procured a patent for an invention of sewing machines of great excellence of mechani- cal construction, and enjoyed a monopoly of the patent for many years, until recently, when the patent expired and Congress re- fused to renew it; that this peculiar patented construction was from the beginning designated by the word "Singer," and the name was used to describe it throughout the world. Defendants aver that they have always been careful not to represent their goods as manufactured by the plaintiff, nor to deceive any one on that point. They deny the use of the same devices or such simi- lar ones as are calculated to deceive, and produce samples of their own and plaintiff's machines in support of the denial. Affidavits are filed with both the bill and answer, and also the circulars and advertisements of the defendants. U. W. Miller, for plaintiff, cited: Coates v. Halbrook, Cox Trade- Mark Cases, 20, 27; Taylor v. Carpenter, Id., 45, 57; Coffeen v. Brunt on, Id., 85, 86; Davis v. Kendall, Id., 114; Howard v. Henriques, Id., 129; Walton v. Crowly, Id., 172; Brooklyn White Lead Co. v. Mausury, Id., 210; Clark v. Clark, Id., 210; Dale v. Smithson, Id., 282; Cotton v. 6l6 U. S. C. C. WEST. DIST. OE TENNESSEE. Singer Manufacturing Co. vs. Riley, et a!. 9 8 Thomas, Id., 507; Amoskeag Mantifg Co. v. Garner, Id., 540; Dixon Crucible Co. v. Guggenheim, Id., 559, 562, 569; Congress Spring Co. v. High Rock Spring Co., Id., 599, 624; Filley v. Fassett, Id., 530; S. C, 44 Mo., 168; Holmes v. Holmes, 27 Ct., 278; Meriden Britannia Co. v. Parker, 39 Ct., 450; Newby v. Oregon Cent. R. R., 1 Deady, 609; Kimball v. Singer Manufg Co., 45 Scottish Jurist, 201; Dunbar v. Glenn, 42 Wis., 134; Canal Co. v. Clark, 13 Wall., 322; Mclean v. Fleming, 96 U. S., 245, 251; Braham v. Bustard, 1 Hem. 6° Miller, 447; Eddie- ton v. Fick, 23 .£«§-. Z. 6^ _££■., 51; Singer Manufg Co. v. Wil- son, 3 App. Cas. L. R., 389; Witthausv. Mattfeld, 44 Md., 303; Browne, Trade-Marks, pp. 33, 34, j^«. 396, 496; Coddington Trade-Mark Dig., 415, 416, 418, 429, 453; Singer Manufg Co. v. larsen, 13 Chi. Leg. N., 59; U. S. v. Roche, 1 McCrary, 385, 2 Daniell, Ch. 1648, et nota; 3 Wa«V, ^4f. & Def, 195, 741, 742; 20 ^4w. Zaav ^?^-, 34; 9 Reporter, 603, 737; Patridge v. Menck, 2 Barb., 10 1; Franks v. Weaver, 10 Beav., 297; Singer Manufg Co. v. Brill, Superior Ct., Cincti., July Term, 1880; Singer v. Lemaire, Belgium, MSS.; Warren v. Wing, Superior Ct. N. Y. Referee 's Report, Jan. 13, 1881; Singer Manufg Co. v. Phillips, Kv. Dist., Oct. 11, 1880; Singer Manufg Co. v. Kayser, N. Y. Supreme Ct. , Jan. , 1879. H. F. Dix and IF. IF. Goodwin, for defendants, cited : Bell v. Locke, 8 Paige, 75/ Fairbanks v. Jacobs, 14 Blatchf., 337; Singer Manufg Co. v. Wilson, L. R., 2 Ch. Div., 434; Tucker Manufg Co. Case, 9 0. G., 45 5 ; Singer Manufg Co. Stanage, 6 Fed. Rep., 297; Singer Manufg Co. v. Loog, London Daily News, Dec. 15, 1880; Manufg Co. v. Trainer, 101 U. S., Si- Hammond, D. J.: 1. The application for a preliminary injunction must be denied. The case of Singer Manufg Co. v. Stanage, 6 Fed. Rep., 279, so fully expresses the conclusions to which I have come that it is not necessary to repeat the argument to be there found in favor of this judgment, although I have given the subject an extensive investi- APRIL, 1882. 617 9 8 Singer Manufacturing Co. vs. Riley, el al. gation. The bill before me would, perhaps, entitle the plaintiff to an injunction, for it makes no mention of any patent, nor any reference to the fact that for many years i he plaintiff's manufacture of sewing machines was thus protected, whatever may be said of those patents in their relation to the question of fact, which the House of Lords was unable to determine in Singer v. Wilson, L. R., iApp. Cos., 376. The answer, however, avers that the plaintiff used its alleged trade name and trade-mark to designate the principles of con- struction of sewing machines under the patents, and, while de- nying all allegations of misrepresentation and deceit, explains that the defendants only used the name "Singer" to represent that the machines sold were of that construction, and never to represent that they were machines manufactured by the plaintiff. The affi- davits of plaintiff's witnesses only show that the defendants repre- sented theirs as genuine "Singer" machines, and are hot incon- sistent with the averments of the answer; while the defendants' witnesses swear that they were told that the machines were of superior manufacture to those of the plaintiff, but that they were "Singer" machines. Hence, however, the proof at the hearing may affect the case, as it now stands there can be no injunction in any view of the question. So, in reference to the labels and other devices claimed as trade- marks, the proof here is not satisfactory of any counterfeiting or misrepresentation by defendants. The respective machines have been brought into Court, and I must say 1 do not see how any person could be deceived by mistaking one for the other, if any reliance is placed on the devices as distinguishing characteristics. It is true, the general appearance of the machines is somewhat the same, as two tables or desks are alike, but even here some of the defendants' machines are dissimilar to those of the plaintiff in hav- ing the box used to cover the machinery on the table ornamented with moulding. The labels affixed to the arms of the machine are in no way alike, except that they are brass and oval, and are placed in relatively the same spot on the machines. The well- known device of the plaintiff, consisting of a shuttle, needles crossed, and the letter S made with the representation of the 6l8 U. S. C. C. WEST. DIST. OF TENNESSEE. _ k Singer Manufacturing Co. vs. Riley, et al. 9 8 thread .surrounded by a partial wreath of a plant and the words "The Singer MFG. Co." and "Trade-Mark," is replaced in the other labels by entirely dissimilar devices. The one is a lion's ' head in bold relief, surrounded by the words "C. W. Williams MFG. Co., Montreal," and "Trade-Mark," while the other is a monogram of S. and M. upon a rough, flat surface, made by a chasing of parallel horizontal lines, surrounded with a raised dotted line, indented at opposite sides in the shape of a small seg- ment of a circle, the words "The Sigwalt Sewing Machine Co., Chicago, 111.," being imprinted around the entire device. The said shuttle device is also cast in the frame-work of the leg or stand of one pattern of the plaintiff's machine. It is, of course, in that form more rude, but is plainly enough recognizable as the same device as that on the brass label. The corresponding device on the Williams machine is a large and well-defined horseshoe, surrounding the letter S (broad in its construction, and in no way resembling the S. of the shuttle device) and the word "Trade- Mark." I am well aware that mere dissimilarity of detail is not a defence in cases like this, and the location of the mark on the package or article has much to do with the intention to deceive. Some of the cases have carried this principle to a great length, to prevent the fraud of using another's trade name or labels, or even form of packages. But the fraud consists in an imitation calculated to de- ceive and I think none of the best considered cases would hold that a trader could acquire an exclusive right to use an oval brass label on the fbre-arm, and the letter S on the leg, of a sewing machine. It must be so ruled to declare against these devices of the defendants' machines, for they are not otherwise like those of the plaintiff. The precise attitude of the English cases on this question is stated in a review of them by the Solicitors' Journal, reproduced in the Central Law Journal, vol. n, pp. 3, 25, 84, 106. Vice- Chancellor Bacon's opinion in Singer Manuf'g Co. v. Loog, L. R., 18 Ch. Div., 395, 401, in favor of the plaintiff's claim, held that the plaintiff had established a right to the word "Singer" as its trade-mark and property, and that the defendant, whose un- APRIL, 1882. 619 9 8 Singer Manufacturing Co. v;. Riley, et al. licensed use of the name was clearly proven, had entirely failed to show that the name "Singer" was known to the trade as descrip- tive of sewing machines of a particular construction or character not necessarily of the plaintiff's manufacture. But the opinion of the Court of Appeals, overruling this judgment of the Vice-Chan- cellor, says of the circulars and advertisements and devices, what as well applies to this case, that the documents set forth how the machines were manufactured, and there was nothing to lead any purchaser of them to suppose that he was buying machines manu- factured by the plaintiff. The plaintiff company had no monopoly in the manufacture of sewing machines', their patent having ex- pired some years ago, nor had they any property or right in the word "Singer" in the sense that they could restrain anyone from describing his goods as "Singer's," however he might qualify or explain his use of that word. Lord Justice James said aside from the brass label he could not "see anything which could deceive any human being." In that case the label, which was voluntarily discontinued, unlike the labels in this case, contained upon it the word "Singer" jn combination with others calculated to deceive a purchaser into the belief that he was buying a machine manu- factured by the plaintiff. L. R., 18 Ch. Bin., 395, 412. The case of Singer v. Phillips, in the Circuit Court for the Dis- trict of Kentucky, was ex parte, the bill being taken for confessed, and a formal decree entered for the plaintiff. There was no opin- ion or judgment such as could be considered an authority binding on this Court. Our patent laws protected the plaintiff for many years in a monopoly to that extent that it needed no trade -marks for any other purpose than to designate the comparative excellence of the inventions protected. It and its licensees could have, while the patent lasted, no rival manufacturers of "Singer's sewing ma- chines," and their work, as manufacturers of them, could not, therefore, be brought into competition with any one. Nor do I think the suggestion of counsel that there were many parts of the machine and principles of mechanical action and combination not patented affects the question as long as any part of it was so patented. The word had come to be descriptive of peculiarities, 620 U. S. C. C. WEST. DIST. OF TENNESSEE. Singer Manufacturing Co. vs. Riley, et al. 9 8 not of manufacture by a particular person, but inherent in the machine itself, and when this is so no right to an exclusive use can arise, whether there be a patent or not. It is a part of the history of our inventions, known to the Courts as well as others, that the names of inventors are used to dis- tinguish their inventions, and there have been "Howe," "Singer," "Grover & Baker," Wheeler & Wilson," etc., to indicate the dif- ferent kinds of patented sewing machines. It is the consideration now due to the public, when the patents have expired, that it shall have the unobstructed benefit of these inventions, and there is not the least foundation in principle or reason for allowing the patentees to continue to enjoy as much of the monopoly as they can save by the claim to use exclusively the trade names and marks by which they identified and secured to themselves the reputation of their inventions. These go along with the invention as a dedication to the public for purposes of description and identification, and the patentees should not by this means be permitted to take any advantage by them where they have so commingled their marks for the invention, and their marks for their own manufacture, that the public cannot separate the two as in this case. The following additional authorities may be instructively consulted on the general subject. 25 Abb. L. J., 203; 21 Abb. L. J., 444; London Law Times, Jan. 1, 1881; Levy v. Walker, L. R., 10 Ch. Div., 436; Singer Manuf'g Co. v. Loog, L. R., 11 Ch. Div., 656; Ewing v. Johnson, L. R., 13 Ch. Div., 434; Massam v. Thorley Cattle Food Co., L. R., 14 Ch. Div., 748; S. C, Id., 736; Pepper v. Labrot, 8 Fed. Rep., 29; Sawyer v. Kellogg, 7 Fed. Rep., 720; Sawyer v. Horn, 1 Fed. Rep., 24; Carroll v. Ertheiler, Id., 688; Dixon v. Benham, 4 Fed. Rep., 5 2 7- Injunction refused. APRIL, 1882. 62 1 9 9 William Rogers Manf'g Co. vs. Rogers & Spurr Manf'g Co. 99 CIRCUIT COURT UNITED STATES, DISTRICT OF MASSACHUSETTS. In Equity. William Rogers Manufacturing Co. Rogers & Spurr Manufacturing- Co. Decided 22 April, 1882. Reported ii Federal Rep., 495. ''Rogers Silverware 1 '' Case. 1. Trade-Mark — Right. — The right to use a trade-mark is one which depends on use. 2. Same 1 — Use of Name. — Any one has a right to the use of his own name in business, but he may be restrained from its use if he uses it in such a way as to appropriate the good-will of a business already es- tablished by othersof that name, nor can he, by the use of his name, appropriate the reputation of another by fraud, either actual or con- structive. j. Same — Enjoining use of Name. — Any one who rightfully uses a name of established reputation as part of a trade-mark in a particular busi- ness may enjoin its interfering use by others. F. Chamberlain, and O. H. Piatt, for complainants. 622 U. S. C. C. DISTRICT OF MASSACHUSETTS. William Rogers Manf'g Co. vs. Rogers & Spurr Manf'g Co. 09 T. W. Clark, and B. S. Parker, for defendant. Lowell, C. J.: The plaintiffs allege that one William Rogers, of Hartford, had been a skillful manufacturer of silver-plated ware long before 1865, and had acquired a high and valuable reputation; and in that year a copartnership was formed between one Birch and one Pierce, who agreed with William Rogers that the firm should be called the William Rogers Manufacturing Company, and agreed with him and his son, William Rogers, Jr., that they might adopt and use -as trade-marks, "J"v, Wm. Rogers & Son," and "1865, Wm. Rogers Mfg. Co.," and that they were soused until 1872, when the present corporation was formed, and bought all the stock, good-will, etc., of the firm; that the two companies, suc- cessively, have used these trade-marks, from 1865 t0 the time of filing the bill, by stamping them upon their goods, and have taken great pains with the manufacture of the plated spoons, forks, and knives which they have put upon the market, and thus their goods have become favorably and extensively known as the "Rogers" and "Rogers & Son" goods, and are inquired for by these names; that both these names are of great value and distin- guishing appellations in the trade, and the spoons, forks, and knives so stamped have acquired and possess a special value; that on or about January 1,' 1880, Lorenzo Spurr and George W. Spurr, associated as George W. Spurr & Co., manufacturers of sil- verware, at Greenfield, knowing the premises, combined and con- federated with David C. Rogers and George E. Rogers, a son of said David, to cheat and defraud the complainants by stamping their spoons, forks, and knives with the names, "Rogers" and "Rogers* & Son" and "Rogers & Son, -., 436; Massam v. Thorley Co., L. R., 14 Ch. £>., 738. 40 626 U. S. C. C. DISTRICT OF MASSACHUSETTS. William Rogers Manf'g Co. vs. Rogers & Spurr Manf'g Co. 99 It was unnecessary for the plaintiffs to send around pictures of William Rogers and his son, as they have done. Such a method of advertising is more appropriate to the trade in patent medi- cines. But I do not quite see the injury to the public in this course of action. I think there is little doubt, upon the facts proved, that the reputation which the goods marked Rogers & Son, and Rogers & Bro., and Rogers Bros., have now acquired, depends upon the conduct of those who now use those names, and not upon any supposition in the minds of the purchasers that the per- sons who originated the business still conduct it. Under these circumstances it does not seem to me that the plaintiffs have dis- entitled themselves to relief. 2. A great deal was said in argument about the natural right of a man to use his own name in any business that he chooses to adopt. This, however, as I have said, is the case of a defendant corporation which has adopted a name to suit its business: and of persons, having the name, who have adopted a trade-mark to let out for hire to other persons. Even if we grant all that has been said about the freedom to use names, (and I grant upon that subject much more than has been argued, for I set no limits to that freedom, excepting inter- ference with acquired rights), the books are full of cases in which defendants have been restrained from using their own names in a way to appropriate the good-will of a business already established by others of that name. Croft v. Day, 7 Beav., 84; Metzlerv. Wood, L. R., 8 Ch. D., 606; Fallwoodv. Fall-wood, L. R., 9 Ch. D., 176; Levy v. Walker, L. R., 10 Ch. D., 436; Mass am v. Thorley, L. R., 14 Ch. D., 748; McLean v. Fleming, 96 U. S., 245; Devlin v. Devlin, 69 TV. Y , 212; Filkins v. Blackman, 13 Blatchf., 440; Stonebraker v. Stonebraker, $$ Md. 252; Shaver v. Shaver, 54 Iowa, 208; (S. C, 6 N. IV Rep., 188); Churtonv. Douglas, Johna. (Eng.), 174. See 25 Albany Law /., 203. "All these cases in equity depend upon an appropriation by one person of the reputation of another, sometimes actually fraudu- lent, and sometimes only constructively so. "It should never be forgotten in these cases that the sole right to restrain anybody from using any name that he likes in the APRIL, 1882. 627 99 William Rogers Manf'g Co. vs. Rogers & Spurr Manf'g Co. course of any business that he chooses to carry on, is a right in the nature of a trade-mark; that is to say, that 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 business is my business, and so by fraudulent misstatement, de- prive me of the profits of the business, which would otherwise come to me.' ' Per James, L. J., Levy v. Walker, L. R., 10 Ch. D., 447-8. The reason why artificial trade-marks are absolutely protected, without inquiry into motives, etc., is that the defendant has no natural right to such a symbol, and has the whole world of nature from which to choose his own. The same principle, in my judg- ment, applies to corporate names; but here I am met by authori- ties hesitating to take this ground, as I have said. The defend- ants insist that there is no sufficient evidence that purchasers would be misled. The purpose being what it was, it would not need a great deal of evidence to prove it successfully accomplished. There is evidence that buyers at retail would be very likely to be de- ceived. But the defendants say, again, "Rogers" has become a mere designation of a particular kind of ware, like Thompsonian medi- cines, or Singer sewing machines. Thompson v. Winchester, 19 Pick., 214; Singer Co. v. Arsen, Cox, Dig., No. 659. But the evidence does not support this defence. The Rogers name does not express a certain sort of goods, but serves as a warranty of good workmanship, because all those persons who have used it have followed faithfully the excellent example of the original Rogerses, who insisted on honest work. It is further argued that the Rogerses are so many that the Court cannot find an intent to appropriate the reputation of one of them more than another; and that, if any suit will lie' it must be by all those who use any trade-mark whose distinctive feature is the name Rogers. 3. I believe it to be true that the Greenfield Rogerses did not inquire, nor did the defendants care, whose reputation they were 628 U. S. C. C. DISTRICT OF MASSACHUSETTS. William Rogers Manf'g Co. vs. Rogers & Spurr Manf'g Co. 99 making available; but I am of opinion that any one of those who rightly uses the name, may enjoin its interfering use by others. Profits stand on a different footing. As at present advised, I should say that the profits made from the name Rogers belong to all those who rightly use" it. It is possible, however, that the plaintiffs may be able to prove facts which will give them special profits. They are entitled to, at least, an injunction, costs, and nominal damages, and, if they choose to take the burden of going to a Master, I am bound to permit them. Interlocutory decree for the complainants. MAY, 1882. 629 1 IOO Enoch Morgan's Sons' Co. vs. Troxell, et al. IOO COURT OF APPEALS, STATE OF NEW YORK. In Equity. Enoch Morgan's Sons' Co., Respondent, vs. Benjamin F. Troxell, et al., Appellants. Decided 30 May, 1882. Reported 89 N. Y., 292. "Sapolio vs. Pride of the Kitchen Soap.'' 1 Where there is a simulation of trade-mark, and the intent becomes a sub- ject of inquiry, the form, color and general appearance of the package may be material; but the party cannot appropriate an ordinary and usual form of package and fashion of label, and exclude all others from its use, or from the use of anything resembling it; to sustain an action restraining such use there must be an imitation of something that can legally be appropriated as a trade-mark. The mere idea represented by some figure, on an article sold for polish- ing purposes, that it will make things bright enough to be used as mir- rors, cannot be appropriated as a trade-mark. An action cannot be maintained to restrain a defendant from selling his own goods in packages and with labels, he has a legal right to use, and which did not infringe upon any trade-mark of the plaintiff, and 630 COURT OF APPEALS, STATE OF NEW YORK. • . Enoch Morgan's Sons' Co. vs. Troxell, et al. IOO because of fraudulent representations and devices on the part of de- fendant to palm off his goods as those of the plaintiff's. 4. Plaintiff prepared and sold a soap for cleaning and polishing, which was put up in square cakes, wrapped in paper coated with tinfoil, with a band of blue paper about it, on which, on one side of the package, is printed in gold letters the label, " Sapolio, for cleaning and polish- ing, manufactured by Enoch Morgan's Sons' Co., 440 West Street, New York." On the other side, "Enoch Morgan's Sons' Sapolio,"' with the device of a human face opposite to and reflected in a pan. Defendant thereafter prepared and sold a soap put up in cakes of a. different shape from those of plaintiff, wrapped in tinfoil, with a band of blue paper; on one side printed in large gilt letters, " Troxell 's Pride of the Kitchen Soap," then the small figure of a monkey looking at some indistinct object held in his hand, on each side of which is the word -'trade-mark," and below in small letters the words, "scour- ing and polishing." On the other side is printed in large letters, the words, " Pride of the Kitchen Soap," and six lines in small letters describes its uses. Held: That the facts did not show any infringement of a trade-mark; and that an action was not maintainable to restrain defendants from so preparing and selling their soap. E. M's Sons' Co. vs. Troxell, (23 Hun, 632), reversed. Appeal from judgment of the General Term of the Supreme Court, in the First Judicial Department, entered upon an order made February 4, 1881, which affirmed a judgment, in favor of plaintiff, entered upon the report of a referee. (Reported below; 23 Hun, 632). This action was brought to restrain defendant from an alleged infringement upon plaintiff's trade-mark. The material facts are stated in the opinion. E. More, for appellants. Defendants cannot be restrained in the use of their trade-mark, although it has a general resemblance to plaintiff's, as they have neither copied or simulated plaintiff's, nor appropriated anything they had not a right to. (Amoskeag Case, 2 Sand/., 606, 608; 58 N. Y, 233; Gillott v. Esterbrook, 47 Barb., 455; Wolfe v. Burke, 56 N. Y, 115, 122; 7 Lans., 151; Browne on Trade- MAY, 1882. 631 f — IOO Enoch Morgan's Sons' Co. vs. Troxell, et al. Marks, sees. 271-2; Faberv. Faber, 2 Abb., \_N. S.~\, 115; Fal- kenburghv. Lucy, 35 Cal. , 52; Coddington on Trade-Marks, sees. 19-159; Blackwell v. Wright, 73 N. C, 310; L. R., 41 Ch., 359; 46 Id., 707; 42 Z. 2". J?,?/., \N. S.~\, 857; Cw£ z/. Stark- weather, 12 .4iv., 181; Enoch Morgan's Sons v. Schwachofer, 55 How., 38). Where there is a particu- lar infringement, where defendant has attempted to imitate some- thing which was plaintiff's exclusive property, the rule, as appli- cable to shelf goods, is that the purchasers must read the label, unless it is sold and known by the mark. (1 How. App. Cas., 358; 2 Sand/. Ch., 625; 11 H. of L. Cases, 36 Z.y.,504; Cole- man v. Crutnp, 70 N. Y, 578). If defendants' package is fair competition the ijudgment cannot be sustained, either as to dam- ages or injunction, on the outside pretence that they caused their goods to be sold as plaintiff's. (Matthews v. Coe, 19 N. Y, 61). Sam'/ Hand, for respondent. A manufacturer of a valuable commodity, who affixes any in- dicia thereto, whereby the genuineness of its origin is assured, thereby becomes vested with an exclusive right to use such indicia in the sale of such commodity. ( Colloday v. Baird, 7 Upp. Can. , L.J., 132; McAndrews v. Bassett, 10 Z. T, [_N. £.], 442; Ap- polinaris Co. v. Norris, 23 Id., 242). The character of the mark is not of judicial prescription. Whatever the manufacturer first appropriates, a Court of Equity will protect. ( Wotherspoon v. Currie, 27 Z. T, \_N. S.~], 303; Coleman v. Crump, 7 N. Y.,, 573; Enoch Morgan's Sons' Co. v. Schwachofer, 55 How., 37; Same v. Troxell, 23 Hun., 632; Perry v. Truefitt, 6 Beav., 66; Coats v. Holbrook, 2 Sandf. Ch., 594; Williams v. Johnson, 2 Bosw., 6; Cook v. Starkweather, 13 Abb. Pr., [iV. S.~\, 392; Pop- ham v. Wilcox, 38 N. Y, Sup. Ct., 280). If a trade-mark may be constituted of labels, names, marks, letters, symbols, form, appearance, color, style, rim, glazed or shellacked preparations, packages, cases and vessels, then such mark is infringed by the use 632 COURT OF APPEALS, STATE OF NEW YORK. • Enoch Morgan's Sons' Co. vs. Troxell, et at. IOO of any such mark thereof, a fortiori, may it be infringed by the use of that which is the most conspicuous and striking portion thereof. (Hostetter v. Vanwinkle, 1 Dill, 329; Wotherspoon v. Currie, 27 L. T, \_N. S.~], 303; Taylor v. Carpenter, 3 Story, 548; Braham v. Bustard, 9 L. T, \_N. S.], 199; Wool/nan v. Ratcliff, 1 H. &• M., 259; Amoskeag Co. v. Spear, 2 Sandf., Sup. Ct., 599). The question is, would the public be deceived? {Thompson v. Laight, 18 Bfav., 164; Walton v. Crowley, U. S. C. C, S. D., N. Y., 3 Bl. C. C, 440; Clark v. Clark, 25 Barb., 76; R. Cox, 206; Cotton v. Thomas, 7 Phila., 257; 2 Brewst., 308; R. Cox, 507; Filley v. Fassett, 44 Mo., 173; R. Cox, 538; 8 Am. L. Reg., [_N. S.~], 402; Popham v. Wilcox, 14 Abb. Pr., \N. S.~\, 206; Colman v. Crump, 8 /. cf S., 548; 70 iV. l r ., 573; 16 Alb. L. J., 352; McLean v. Fleming, 96 U. S., [6 Otto'], 245; 13 £7. .9. /W. Gaz., 913; Hennessey v. White, 6 W. IV. & A. B. Eg., 216, 221; Swift v. Dey, 4 Robt., 611; Z\ Cot, 319; Boardman v. The MeridenB. Co., 35 Conn., 402; A 3 . &, 490; Moses v. Sargood, £wing&* Co., Nov. 22, 1878). Absolute identity is not required. (Seixo v. Provezende, L. R. C/i., 192; 12 Jur., \N. S.~\, 215; 14 L. T, [N. S.~\, 314; 14 W. A'., 357; Bradley v. Norton, 33 Conn., 157; Cox, 331; Barrows v. Knight, 6 A 5 . J., 434; Got, 238; Harrison v. Taylor, 11 Jur., \_JV~. S.~\, 408; 12 L. T, [N. S-~\> 339J Wotherspoon v. Currie, L. R., 5 H. of L., 508; 42 Z. J. Ch., 130; 27 L. T, [A 7 ". S.~\, 393; 22 Id., 260; 18 Weekly Rep., 562; 42 Z. J. Ch., 130; 23 Z. T, \_N. S.J, 443; 18 Weekly Rep., 942; Z. A., 5 ZZ 0/ Z., 517; Stephens v. Peel, 16 Z. Zl, [iV. 6 1 .], 145; ^7;/ v. Geisendorf, Wilson, \Ind.~\, 60; MeridenB. Co. v. Parker, 39 Conn., 450; 12 ^4;«. A<^., 401; 13 Am. L. Reg., [IV. S.~\, 153; McLean v. Fleming, 96 cZ 5., [6 Otto], 241. In case where it appears that the defendant has adopted the plaintiff's trade-mark, and it is proved that the de- fendant's object in doing so was to pass off his own goods as those of the plaintiff, the Court will, without further inquiry, restrain the defendant. (Hope v. Evans, 30 Z. T., [N. S.~\, 204). The Court will also restrain a defendant where there has been such de ception, although proof of the defendant's object be wanting, if it appear that any one has in fact been deceived, being thereby MAY, 1882. 633 IOO Enoch Morgan's Sons' Co. vs. Troxell, et al. induced to buy the defendant's goods as being the goods of the plaintiff. (Colman v. Crump, 70 TV. Y, 578; Seixo v. Prove- zende, 4 L. T, [TV S.~\, 314; Edelstein v. Vick, 11 Hare, 78; Taylor v. Taylor, 53 L. T Ch., 225; Enoch Morgan 1 s Sons' Co. v. Schwachofer, 55 How. Pr., 37; 17 Alb. L. J. Notes of Cases, 1867, 134; Lea v. Wolf, 13 Abb., [TV. S.~\, 389; Godillot v. Hazard, 49 How., 9; Popham v. Wilcox, 38 TV. Y. Sup. Ct., 280; 66 TV Y., 74; Lockwood v. Bostwick, 2 Daly, 521; Kinney v. Basch, 16 Am. L. Reg., 597; Coddington's Dig. of Trade-Marks, 411). Plaintiff is entitled to an injunction against the defend- ants, for the reason that their sales tend to deceive the public, and to produce a confusion of goods. ( Wooddam v. Ratcliff, 1 H. & M., 259; Amoskeag Co. v. Spear, 2 Sand/., 399; Wolfe v. v. Hart, 4 Vict., \_Australia~], L. R. Eq., 125; Perry v. T7-uefitt, 6 Bean., 73; Binninger v. Wattes s, 28 How., 207; Wolf v. Goul- ard, 18 How. Pr., 64; Burgess v. Burgess, 17 L. &■ E., 257; Amoskeag Co. v. Spear, 2 Loud.. S. C, 599; Fettridge v. Wells, 13 How., 385; Leighton v. Bolton, 3 Dow., 293; Merrimack Co. v. Garner, 4 E. D. Smith, 487; Croft v. Daly, 1 Beav., 84; Corwin v. Daly, 7 Bosw., 222). The fact that the two labels are different on comparison of the infringement with the genuine, is of itself no defence. {Lockwood v. Bostwick, 2 Daly, 521; Dixon Crucible Co. v. Guggenheim, 2 Brewst., \_Penn.~\, 321; Philadelphia Legal Gazette, April 8, 1870; Swift v. Day, 4 Robt., 612-13; Millington v. Fox, Myl. 6- Cr., 353; Coffeen v. Brun- ham, 4 McL., 516; Knott v. Morgan, 2 Keen, 213). Plaintiff was not guilty of Jaches. ( Taylor v. Carpenter, 2 Woodf. 6° M. , 1; Amoskeag Co. v. Spear, 2 Sandf, 599; Rogers v. Nowill, 22 z. /., [TV. 5.], £%., 404; 17 ^W z - ^ -£?■> 8 3; $■ c -> *7 /«r., 109; Gillott v. Esterbrook, 48 TV. Y, 374; 47 7?a;^., 445; Wolfv. Barnett, 24 Za. ^4«., 97; Lazency v. White, 41 L. /., [TV S.~\, Ch., 354; Taylor v. Carpenter, 2 Woodf. & M., 120; Rodgers v. Rodgers, 31 Z. Z, [TV. £.], 285; McLean v. Fleming, 6 0#. Appeal, 241), or so as to appropriate the good-will of a business established by others of that name. ( Wil- liam Rogers Manuf g Co. v. Rogers, etc. Co. 11 Fed. Rep., 495. See Gillis v. Hall, 7 Phila., 422; Ainsworth v. £ entity, 14 Week. Rep., 630). 654 SUPREME COURT OF ERRORS, CONNECTICUT. Williams, et al. vs. Brooks, et al. 102 102 SUPREME COURT OF ERRORS, NEW HAVEN COUNTY, CONNECTICUT. In Equity. John A. Williams, amd others, vs. George A. Brooks, and another. Decided June, 1882. Reported 50 Conn., 278. "Tay lev's Hair-Pins" Case. The plaintiffs were partners under the name of " D. F. Tayler & Co.," and for several years had manufactured and sold hair-pins, which were well known and had a ready sale as " Tayler's Hair-Pins" and " D. F. Tayler & Co's Hair-Pins," the device on the packages, which were put up in pink and yellow wrappers, being used exclusively by them and being well known to the trade. The defendants were also engaged in the manufacture and sale of hair-pins, and had procured from one L. B. Taylor, the right to mark their packages " L. B. Taylor & Co.," to which was added the words " Cheshire, Conn." In a suit for an injunction against the use of their device, it was found that "the size and color of the labels and wrappers, and the device printed thereon used by them, resembled the plaintiffs' labels, wrappers and devices thereon, to such a degree that they were liable to deceive careless and JUNE, 1882. 655 102 Williams, et al. vs. Brooks, et al. unwary purchasers who buy such goods with but little examination, but that purchasers who read the entire trade-mark and label could not be deceived. It was further found that the defendants adopted the label and device in good faith and in the belief that they were not infringing the plaintiffs' rights. Held: That an injunction should be granted. (One Judge dissenting.) 2. And that the injunction should be " against such a use by the defendants of the name of ' S. B. Taylor & Co.,' in connection with any device upon pink or yellow wrappers, inclosing hair-pins of their manufac- ture, as that the combination would be liable to lead purchasers to believe that hair-pins manufactured by them were manufactured by the plaintiffs. 3. The defendants were not excused for the use of the label and device, by the fact that they acted in good faith, and believed that they were hot infringing the rights of the plaintiffs. The injury to the plaintiffs remained the same; 4. The purpose to be effected by an injunction ill such a case, is not pri- marily to protect the purchaser, but to secure to the manufacturer the profit to be derived from the sale of his goods to all who may desire and intend to purchase them. ,5. And Held that, for the purpose of proving the defendants' packages with their labels so closely resembled those of the plaintiffs as to mis- lead an ordinary purchaser, wholesale dealers in hair-pins might testify as experts. Suit for an injunction against the use of a trade-mark and for an account and payment of profits; brought to the Superior Court. Facts found by a committee, and case reserved, upon the report and a remonstrance against its acceptance, for the advice of this this Court. The case is fully stated in the opinion. C. R. Ingersoll, and H. E. Pardee, for the plaintiffs. H. Stoddart, and H. L. Hotchkiss, for the defendants. Pardee, J.: 1. The plaintiffs are now, and for ten years last past have been, partners under the name and firm of D. F. Tayler & Co., at Bir- mingham, England, manufacturing among other articles hair-pins of different sizes and qualities, some of them known as "best 656 SUPREME COURT OF ERRORS, CONNECTICUT. Williams, et al. vs. Brooks, et al. -> 102 , double japanned," "plain," and "curvilinear;" these were gathered into ounce packages, the curvilinear in pink, the plain in yellow paper; these were made into pound packages; these last into packages weighing six, twelve, and eighteen pounds, wrapped in brown or drab paper, and in this last form were brought into the United States, where by reason of their superior quality they had a good reputation and ready sale under the name of "Tayler's Hair-pins," "Tayler's Plain Hair-pins," and "D. F. Tayler & Co's Hair-pins." The device or trade-mark printed upon the wrapper of each ounce package has been used exclusively by the plaintiffs during the past ten years upon their pins sold in the United Statos, and has become, and is, in combination with the pink and- yellow wrappers, well known to the trade. The device upon each ounce package can be seen only in part when these are gathered into pound packages. 1. Since 1879 tne defendants have manufactured, put up, and sold in the United States, curvilinear and plain hair-pins in ounce packages; the former in pink and the latter in yellow wrappers, upon which there is the printed statement that the hair-pins were manufactured by L. B. Taylor & Co., Cheshire, Connecticut, and the finding is that "the size and color of the labels. and wrappers and the trade-mark or device printed thereon on the ounce pack- ages used by the defendants * * * resemble the plaintiffs' labels, wrappers and devices thereon used on ounce packages * * * to such a degree that they are liable to deceive careless and unwary purchasers, who buy such goods hastily and with but little examination; but purchasers who read the entire trade-mark and label on the defendants' goods cannot be deceived, nor mis- take the defendants' goods for the plaintiffs'." The defendants; used their label with full knowledge of the plaintiffs' trade-mark and of the reputation of their hair-pins in the United States. All manufacturers of hair-pins put them in ounce packages, combining the ounce into pound, and the pound into packages of six or more pounds; and many inclose the ounce packages in pink and yellow paper. JUNE, 1882. 657 XOS Williams, et al. vs. Brooks, et al. Generally, the defendants sold their hair-pins to jobbers in six pound packages or more, rarely retaining them in ounce pack- ages. Nothing in the appearance of the six pound packages would mislead jobbers or wholesale dealers as to the place of manu- facture. The defendants have always sold their pins as of domestic manufacture, and for a less price than, that obtained by the plain- tiffs; and when their ounce packages are looked at separately, the words " Cheshire, Conn." plainly appear; but when these are gathered into pound packages the whole of the printed label is not seen. In 1869, Levi B. Taylor and his father Milo A. Taylor, were manufacturing hair-pins in Massachusetts as partners under the name of L. B. Taylor & Co., and inclosing ounce packages in wrappers having printed thereon a label substantially like the one of which the plaintiffs now complain. In that year, upon the death of the father, Levi B. Taylor sold the tools, machinery and stock, together with a quantity of these wrappers, with the right to use the same, to the Connecticut Cutlery Company of Nauga- tuck in this State, and subsequently became president thereof. In 1875, when the defendants began to manufacture hair-pins at Ches- hire in this State, Levi B. Taylor closed his connection with the Connecticut Cutlery Company, and became and still continues to be a travelling salesman for them, his remuneration depending upon the amount of sales effected by him; and it was orally agreed between them that they should have the right to use the name of "L. B. Taylor & Co.," upon such hair-pins of full weight as they should manufacture and that he should have the exclusive sale of them. Both parties have observed this contract, and under the authority thus given the defendants placed the name of "h. B. Taylor & Co.," upon packages of hair-pins; the name being printed in imitation of the signature made by L. B. Taylor. In 1879, the defendants having manufactured and sold hair- pins inclosed in a wrapper upon which was printed a device and a statement that the pins were manufactured by " L. B. Taylor & Co.," and which resembled the one used by the plaintiffs, the latter claimed damages for the injury resulting therefrom to their 42 658 SUPREME COURT OF ERRORS, CONNECTICUT. * Williams, et al. vs. Brooks, it al. IOS business. A compromise was effected, and as part consideration therefor the defendants signed an agreement thereafter to desist from any infringement of the plaintiffs' legal or equitable rights in or to their device within the United States. The committee annexed a copy thereof to his report, marked as exhibit 13. The device and label complained of were subsequently adopted by the defendants upon the advice of counsel, in good faith, and in the belief that it is not an infringement of the plaintiffs' rights. Conceding as a general rule to all persons the privilege of se- lecting the name under which they will transact business, yet the defendants have no right to destroy or diminish the property of plaintiffs in the name of "D. F. Tayler & Co.," and in the device and vignette with which it is connected, applied to the manufac- ture and sale of hair-pins, by so printing the name of "L. B. Taylor & Co.," not borne by either of them, but purchased solely for use in connection with this particular branch of their business, as part of a device and vignette upon a pink or yellow wrapper inclosing an ounce of hair-pins, as that- their entire de- vice 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 injury to the plaintiffs remains the same. In Croft v. Day, 7 Beav. , 84, the Master of the Rolls said (p. 89): " My decision does not depend upon any peculiar or exclu- sive right the plaintiffs have to use the name of 'Day & Martin,' but upon the fact of the defendants using their name in connec- tion 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 himself, to which he is not. in fair and honest dealing entitled. * * * He has the right to carry on the business of a blacking manufacturer honestly and fairly; he has the 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 pre- JUNE, 1882. 659 102 Williams, et al. vs. Brooks, et al. vent him from using it in such a way as to deceive and defraud the public." In Thorley 's Cattle Food Co. v. Massam, 42 Law Times (N. S.), 851, Bramwell, L. J., said: "It is said it is hard if a man has the name of Thorley that he cannot make food and call it 'Thorley's Food.' So he may, but if unfortunately for him some, preceding Thorley has carried on the business of making cattle food in such a way that by the name 'Thorley's Cattle Food' is understood the manufacture of that man, then the second Thorley, or the man who assumes his name, must take care so to conduct his business that he is not mistaken for the original Thorley, and if he willfully, or even I should say without willfulness, does carry on his business so as to be mistaken, he must be restrained from doing it; and really there is no hardship upon him at all." In Holloway v. Holloway, 13 Beav., 209, the Master of the Rolls said : '"'The defendant's name being Holloway he has a right to constitute himself a vendor of Holloway' s pills and oint- ment, 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 believe that he is selling the plaintiff's pills and ointment." 4. The purpose to be effected by this proceeding is not primarily to protect the consumer, but to secure to the plaintiffs the profit to be derived from sale of hair-pins of their manufacture to all who may desire and intend to purchase them. It is a matter of com- mon knowledge that many persons are in a greater or less degree careless and unwary in the matter of purchasing articles for their own use; but their patronage is not for that reason less profitable to the manufacturer; and when such persons have knowledge of the good qualities of the plaintiff's hair-pins and desire to purchase them, the law will not permit the defendants to mislead them. In Meriden Britannia Company v. Parker, 39 Conn., 450, the finding is that the respondent's stamps "resembled the petition- ers' trade-mark * * * to such a degree that they are calcu- lated to deceive unwary purchasers and those who buy such goods hastily and with but little examination of the trade-mark, * * * but purchasers who read the entire trade-mark on the respondent's 660 SUPREME COURT OF ERRORS, CONNECTICUT. Williams, et al. vs. Brooks, et a!. 102 goods * * * cannot be deceived." The Court said : "The fact that careful buyers are not deceived does not materially affect the question. It only shows that the injury is less, not that there is no injury. Another class of purchasers to whom large quanti- ties have been sold are deceived. Such purchasers, perhaps will have no reason to complain, as they, if they are- injured by the de- ception, must attribute the injury to their own want of diligence. But the petitioners stand on entirely different ground. No amount of diligence on their part will guard against the injury. An in- junction is their only adequate remedy; and to that we think they are entitled." In Singer v. Wilson, 3 L. R., Appeal Cases, 376, LordO'Hagan said. "I think we should be cautious in holding that although a person of intelligence and observant habits might, in a case like this, by exercising reasonable vigilance, escape misleading, there should be no restrictive interference to prevent others from being misled. It is a question of degree, of more or less; there can be no rigid rule, and the special facts must be considered in every case. There are multitudes who are ignorant and unwary, and they should be regarded in considering the interest of traders who may be injured by their mistakes. ' If one man will use a name, the use of which has been validly appropriated by another, he ought to use it under such circumstances and with such sufficient precautions that the reasonable probability of error should be avoided, notwithstanding the want of care and caution which is so commonly exhibited in the course of human affairs." The defendants insist that the committee erred in receiving their written promise to abstain from any infringement of the plaintiffs' rights in or to their trade-mark. The objection is not well taken. The complaint is that the defendants have willfully disregarded the plaintiffs' rights; it was the privilege of the latter to Drove this al- legation; and this written promise of the defendants bore directly upon the question of their good faith in the formation and use of their present device; and although this alone, of all items of evi- dence bearing upon that question introduced on one side and the other, is set forth in connection with the report of the committee, yet, inasmuch as the finding is that the defendants acted in good JUNE, 1882. 66l 102 Williams, et al. vs. Brooks, et al. faith, we are unable to see that its presence works any injury to them. Indeed neither its presence nor its absence can at all affect the advice to be given to the Superior Court. 5 . For the purpose of proving that the defendants' ounce pack- ages of hair-pins so closely resembled those of the plaintiffs as to mislead an ordinary purchaser and consumer, the plaintiffs offered the testimony of several persons, who were or had been wholesale dealers in hair-pins in New York and Philadelphia, as experts. The committee received the evidence, notwithstanding the de- fendants' objection. We see no error in this. In Gorham Company v. White, 14 Wallace, 511, the testimony of die-sinkers, designers, editors of scientific publications, solicitors of patents, and dealers, was received upon the question whether ordinary purchasers would be misled by the similarity between two designs for forks and spoons. And in In re Worthington Co' s Trade-Mark, 14 L. R., Chan. Div., 8, brewers deposed that in their opinion a proposed trade-mark for ale would be calculated to deceive "as the two marks might, and probably would, be exhib- ited together in houses where fermented liquors are sold." Jessel, M. R., said : "Now is such a trade-mark intended to deceive, or is* it calculated to deceive? I have evidence before me to show that people would be deceived." In the first cited case especially, some of the testimony was from witnesses who are not shown to have ever been dealers in any manner in the articles concerning the appearance of which they expressed an opinion. The question in the case before us is, does the defendants' trade- mark so closely resemble that of the plaintiffs' that it is liable to deceive purchasers; a matter which is to be determinad by the eye, largely by the eye of the trier doubtless. And in view of these authorities we think it may properly be instructed by men who have looked at the packages in question with the interested and careful eye of the dealer. The trade -mark for injury to which the plaintiffs complain is not theirs by creation, but by purchase, and one of them identifies it by stating the time and place of its origin and the mode of acquisition by themselves. He deposes, partly upon information and partly of knowledge, that it was established by Daniel Foot 662 SUPREME COURT OF ERRORS, CONNECTICUT. Williams, et al. vs. Brooks, et al. 102 Tayler and Henry Shuttleworth, of Gloucestershire, more than thirty-seven years since, and that it passed in 1843 from them to John Alfred Williams and Peter Eddleston and from these last to the plaintiffs. But the finding of the committee is as follows: — "When the firm composed of John Alfred Williams and Peter Eddleston was dissolved does not appear, nor how Peter Eddies- ton's interest was transferred to the present firm, if it ever was. Nor does it appear how the interest of Daniel Foot Tayler was transferred to the firm composed of John Alfred Williams and Peter Eddleston, if it ever was." In the absence of proof of injury to the plaintiffs in the past and the finding being only that the ounce packages of the defend- ants "are liable to deceive purchasers," our advice to the Superior Court will concern the future only. The Superior Court is advised to pass a decree restraining the defendants from such use of the name of "L. B. Taylor & Co.," in connection with any device upon pink or yellow wrappers in- closing hair-pins of their manufacture, as that the combination will be liable to lead purchasers to believe that hair-pins manufac- tured by the defendants were manufactured by the plaintiffs, when, upon a further bearing to be had for that purpose only by said Court, the plaintiffs shall complete the proof of title in themselves to the device and trade-mark claimed in their complaint. In this opinion Park, C. J., and Loo.mis, J., concurred. Carpenter, J., (dissenting): I cannot concur in the result to which my brethren may have come. The only ground for an injunction is to prevent the de- fendants from defrauding the plaintiffs. To justify an injunction it should be reasonably certain that the plaintiffs will be defrauded. There is no intention to defraud, for it is expressly found that the defendants acted in good faith. It is not found that the defend- ants, in a single instance, or others, have sold the defendants' goods as the plaintiffs'; and it is not reasonably certain that such will be the result in the future. The only part of the finding which indicates such a result is the following: — "The size and JUNE, 1882. 663 102 Williams, et al. vs. Brooks, et al. color of the labels or wrappers and the trade-mark or device printed thereon on the ounce packages used by the defendants as hereinbefore stated, resemble the plaintiffs' labels, wrappers and device thereon used on ounce packages as hereinbefore stated, to such a degree that they are liable to deceive careless and unwary purchasers who buy such goods hastily and with but little exami- nation; but purchasers who read the entire trade-mark and label on the defendants' goods cannot be deceived or mistake the defend- ants' goods for the plaintiffs' . ' ' It will be observed that the name "Taylor & Co.," as an essen- tial or material feature of the case is carefully executed. Three things only are important — the device, and the size and color of the labels. The plaintiffs claim nothing from the device or trade- mark proper. Hence that may be laid out of the case. In re- spect to the size the finding is that "in general all hair-pin makers put up their goods in similar sized packages, wrapped around with a paper of the size and shape of exhibit No. 1," — the plaintiffs' wrapper or label. As to color, it is found that "pink and yellow papers of substantially the same shape and size and shade of the paper used by the plaintiffs in this case are used by other hair-pin manufacturers in putting up their goods for market." How, under this finding, the plaintiffs can have any right superior to that of the defendants, to the use of labels of the size, shape and color of those used by other manufacturers generally, is beyond my comprehension. But assuming, as I think a majority of the Court must assume, that the imitation consists in' the general arrangement and appear- ance of the labels, including of course the name as an important feature of it, still I contend that the plaintiffs have suffered and are in danger of suffering no legal damage. "Liable to deceive" purchasers. That is not equivalent to finding that they will be deceived, or that the arrangement is calculated to deceive. And it certainly falls far short of showing that it is reasonably certain that they will be deceived. It indicates a possibility but not ne- cessarily a probability. A man is liable to be struck by lightning, but hardly one in a million ever experiences it. If that is ob- jected to as an extreme case,' take another il!irti\.tion. Every man 664 SUPREME COURT OF ERRORS, CONNECTICUT. Williams, et al. vs. Brooks, et al. XOS who travels by railroad or steamboat is liable to be injured by some accident, and yet hardly one in ten thousand is so injured. I use these illustrations for the purpose of showing that a liability ordinarily imports less than a liability. It will be claimed however that the word as used in this finding is used in a different sense, or at least that it must be interpreted with reference to the subject-matter to which it is applied. That •I readily grant; and I concede all that I think can be reasonably claimed, that it shows that there is an even chance that some pur- chasers will be deceived. What if some few of the many millions of those who use hair-pins are led to purchase the defendants' goods supposing them to be the plaintiffs' ? When we consider that it is only consumers that are liable to be deceived — for it is expressly found that dealers are not — and that each consumer purchases in small quantities, paying therefor a mere trifle, it is obvious that the loss of profits to the plaintiffs from that source will be very small and that it will require large numbers of per- sons to be thus misled before the loss will be appreciable. The finding fails to show that that will be the result The loss of profits may and probably will be infinitesimal. Courts of Equity do not grant injunctions for trifling matters. On the other hand the loss may be considerable; but that is uncertain; the Court is called upon to act, not upon facts but upon conjecture. It seems to me much better that the plaintiffs should be required to wait until they can show positively that they will suffer material damage before asking for an injunction. Again, it is only the careless and unwary that are liable to be deceived. The consumer who knows the plaintiffs' goods and really desires to buy them will be vigilant and know what he buys. He cannot be deceived. The consumer who does not know them, or who has no particular preference for them, will be careless and unwary, or in other words indifferent. No manufac- turer has a better right than others to the trade of that class. That is open to legitimate competition; and when a customer is secured by one, so long as there is no fraud actual or constructive and no deception, there can be no injury in a legal sense to another. JUNE, 1882. 665 IOS Williams, et al. vs. Brooks, el al. I take it that this proposition cannot be controverted, that no injunction can properly issue unless the defendant represents or is about to represent in some manner or by some means that the goods which he makes and sells are the goods of another. When his purpose to do so clearly appears the case is free from difficulty and Courts will protect the injured party in respect to all classes of purchasers. But when, as in this case, the resemblance is not designed, but is incidental, and results solely from the similarity of names in connection with the style and manner of preparing the goods for market, which style and manner are common to all manufacturers, the case is different, and Courts ought to proceed with more caution. This distinction is an important one, and seems to me not to have been considered by the majority of the Court. To cases of the former class the language of the Courts as cited in the majority opinion may well apply. But it cannot be applied indiscriminately to cases of the latter class without danger of doing injustice. There is a rule however applicable to these cases which is well established. I quote from some of the authorities, both English and American: — In 7". W. Thorlef s Cattle Food Co. v. Massam, 42 Law Times, (JV. S.), 856, Baggallay, L. J., says: — "Have the company, in offering for sale the article manufactured by them, made represen- tations which were calculated to induce a reasonable belief on the part of those to whom the offers were made that the articles were manufactured by Joseph Thorley?" In Leather Cloth Co. v. American Leather Cloth Co., n House of Lords Cas., 535, the Lord Chancellor says: "All which can be done is to ascertain in every case as it occurs whether there is such a resemblance as to deceive a purchaser using ordinary cau- tion." In McLean v. Fleming, 96 U. S. Reps., 245, Clifford, J., says: "Colorable imitations which require careful inspection to distinguish the spurious trade-mark from the genuine are suffi- cient to maintain the issue'; but Courts of Equity will not interfere when ordinary attention by the purchaser would enable him at once to discriminate the one from the other. When 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 666 SUPREME COURT OF ERRORS, CONNECTICUT. Williams, et at. vs. Brooks, et at. 102 the exercise of ordinary care and caution in such matters, it is sufficient to give the injured party a right of redress if he has been guilty of no laches. What degree of resemblance is necessary to constitute an infringement is incapable of exact definition as ap- plicable to all cases. All that Courts of justice can do in that re- gard is, to say that no trader can adopt a trade-mark so resemb- ling that of another trader, as that ordinary purchasers, buying with ordinary caution, are likely to be misled. When, therefore, a party has been in the habit of stamping his goods with a par- ticular mark or brand, so that the purchasers of his goods having that mark or brand know them to be of his manufacture, no other manufacturer has a right to adopt the same stamp; because, by doing so, he would be substantially representing the goods to be the manufacture of the person who first adopted thestamp, and so would or might be depriving him of the profits be might make by the sale of the goods which the purchaser intended to buy." This last remark is substantially in the language of Lord Chancel- lor Cranworth in Seixo v. Provezende, L. Reps., i Ch. Ap., 196. "The Court is not bound to interfere where ordinary attention will enable purchasers to discriminate between the trade-marks used by different parties." Popham v. Cole, 66 New York, 76. If the trade-mark "would not probably deceive the ordinary mass of purchasers an injunction will not be granted." Blackmell v. Wright, 73 N. Car., 310. "All the authorities agree that the Court will not restrain the defendant from the use of a label on the ground that it infringes the plaintiff's trade-mark, unless the form of the printed words, the words themselves, and the figures, lines and devices, are so similar that any person with such reason- able care as the public generally are capable of using and maybe expected to exercise, would mistake the one for the other." Gil- more v. Hunnewell, 122 Mass., 139. These quotations indicate to my mind the true rule. The imi- tation or resemblance must be of such a character as to amount to a representation that the goods which the defendants make are goods made by the plaintiffs. It necessarily follows that' before there can be any legal injury the representation must be believea by the purchaser. The careful and vigilant purchaser examines JUNE, 1882. ' 667 IOS Williams, et al. vs. Brooks, et al. and takes pains to know before he purchases; and if he purchases the defendant's goods for the plaintiffs', it is because he believes them to be such. On the other hand the careless and unwary pur- chaser takes little or no pains and purchases without any real belief on the subject. He may have a vague and indefinite notion, tut it does not amount to a belief, so that it can be truly said of him that he has been misled. This illustrates at once the distinction, and the reasonableness of the rule, for which I am contending. The careless and unwary purchases the goods made by one man, not because he believes they were made by another, but because he is so far indifferent that he takes no pains to ascertain. He has not been legally mis- led. The cautious man purchases them because he believes they were made by another. He has been misled. Hence the propriety of the rule that the imitation must be cal- culated to deceive purchasers of ordinary caution. For these reasons I think the injunction should not issue. 668 U. S. C. C. EAST. DIST. OF MICHIGAN. Burton vs. Stratton, et al. lOS 103 CIRCUIT COURT UNITED STATES, EASTERN DISTRICT OF MICHIGAN. In Equity. Burton vs. Stratton, and others. Decided 3 July, 1882. Reported 12 Federal Rep., 696. "Twin Brothers Yeast" Case. \ 1. Trade-Marks — Mere Words — Generic Name. — The difficulty is in distinguishing cases where the property has acquired a generic name as indicating the quality of the article rather than its origin and owner : ship. The only satisfactory rule we have been able to gather from the authorities is that each case is matter for the Court to determine, not alone from the mark itself, but from the testimony, whether the words have become so well known as to stand in the public eye as denoting the character and quality of the article and not its origin or ownership. Mere words may become valid trade-marks, when they are merely arbitrary or are indicative of origin or ownership in the original proprietor. j.. Same — When Protected. — Words which have acquired a significance in the market as expressive only of the name or quality of an article cannot be appropriated as a trade-mark. But if the primary object of JULY, 1882. 669 103 Burton v;. Stratton, et at. the trade-mark be to indicate origin or ownership, the mere fact that the article has obtained such a wide sale that the mark has also be- come indicative of quality, is not of itself sufficient to debar the owners of protection, or make it the common property of the trade. To hold otherwise would be to deprive the owner of the exclusive use of his trade-mark just at the time when it had become most valuable to him, and stood most in need of protection. But if the name be suffered to come into general use without objection from the proprietor, it may become merely generic, or indicative of quality. 3. Same — An Appurtenance — Sale or Assignment of. — A trade-mark, indicative of origin or ownership in the proprietor of a certain busi- ness, may be sold or assigned by him as an appurtenance of such business, and the assignee may become entitled to the exclusive use of such mark, even as against such proprietor himself. Held: That the right to use the words " Twin Brothers," in connection with por- traits of the twins, had been lawfully assigned to the plaintiff, and that he was entitled to an injunction against one of the twins who had set up a separate establishment, and was making use of this trade-mark in manufacturing yeast. • This was a bill in equity to enjoin the use of a trade-mark.. The bill set forth that the plaintiff had, for a long time, made a certain yeast, put up m wrappers and labels, specimens of which were at- tached to his bill; that since 1877 he had claimed the words, de- vices, figures, and arrangements shown by said label as a trade- mark, especially employing the figures of two heads in an oval setting, and the words "Twin Brothers Improved Dry Hop Yeast," and "Twin Brothers" in connection with the yeast as a trade- mark; that the defendant Stratton and his brother Thomas J. Strat- ton were the two men represented by the two figures; that they originated the yeast, and were the original owners of the trade- mark; that defendant, Jackson B. Stratton, before 1867, made and sold this yeast under the name of "Twin Brothers Improved Dry Hop Yeast" in the State of Ohio, and in 1867 complainant and said defendant Stratton formed a partnership and made and sold this yeast; that late in the year 1867 complainant bought out from said Stratton his interest in the partnership and trade-mark, pay- ing therefor #4,000; but he continued to employ Stratton, under various agreements, until the year 1877, in the manufacture of this 670 U. S. C. C. EAST. DIST. OF MICHIGAN. Burton vs. Stratton, et al. IOS yeast; that in 1869 'he purchased from Thomas J. Stratton the factory theretofore leased from him, and. his interest in the trade- mark, and had since continued to use the same, with the wrap- pers and labels, and particularly the term "Twin Brothers Yeast," both separately from and in connection with the bust figures shown upon the wrappers; that at the time of his purchase from the de- fendant the yeast was not extensively known, and the demand therefore was not large, but that since said purchase the business has been greatly extended and the demand for the yeast is now large and constant; that defendant Stratton and others were mak- ing a spurious article and selling the same as "Twin Brothers Dry Hop Yeast," and using wrappers and labels like those of the plain- tiff; that the spurious article is a fraud upon the public, who pur- chased it believing it to be the genuine Twin Brothers yeast made by the plaintiff. Prayer: — That the defendants be enjoined from imitating the label, and from selling any yeast made by them, " or any other person than the plaintiff, as and for the "Twin Brothers" yeast, and in using the name of Twin Brothers in any way, shape, or form in connection with the sale of yeast. The defendant claimed an absolute right to use the words "Twin Brothers Yeast," in so far as they constituted the original trade-mark of Stratton Brothers, on the ground that Stratton never sold his interest in such trade-mark to complainant; that a Court of Equity will not protect plaintiff in the use of his trade-mark, although he bought it of Stratton, because in using it he repre- sents to the public that he was the originator, and that it indicates an origin in himself, when such is not the truth; that Twin Broth- ers is a generic name of a compound made under Stratton's dis- covery; and that the defendants or any other person making the genuine article may sell it under its proper name. They deny the charge that the yeast made by them is a spurious article, and claim that it is the genuine original compound discovered by de- fendant Stratton, and- substantially the same as made by the com- plainant. C. F. Burton and Alfred Russell, for plaintiff. JULY, 1882. 671 IOS Burton vs. Stratton, et al, H. C. Winser, for defendant. Brown, D. J.: We think there is a decided preponderance of testimony in favor of the plaintiff's theory that at the lime his partnership with the defendant Stratton was dissolved he purchased not only his inter- est in the business, but also his moiety of the trade-mark. Indeed, the defendant seems to have had very little else of any value to sell. Plaintiff had put but a thousand dollars into the venture. Defendant had contributed nothing but his attention and skill. The partnership lasted but eight or nine months, and the business, done was very limited. They would get a little meal and make a small quantity of yeast; then they would shut up the factory and go out and sell it, get a little more meal, and start again. After conducting the business in this way about six months the demands of their creditors became so urgent that plaintiff was obliged to advance $300 more to continue it. Soon after, an investigation of the books showed' their affairs to be in such a precarious condi- tion that defendant Stratton wanted to go out of the business, and the plaintiff bought his interest and paid him $4,000. At the time of the sale there appears to have been no stock on hand, and the factory had been shut down for some six weeks. Under these cir- cumstances it seems to us quite improbable that they could have made ten or twelve thousand dollars in nine months, or that there could have been debts due the firm to the amount of $8,000. Add to this the testimony of several witnesses who swear that defend- ant stated to them repeatedly, and in regretful manner, that he had sold his interest in the trade-mark, and had nothing else to sell to the plaintiff, and his subsequent conduct after he left plain- tiff's employ in commencing to sell under the name of the "Standard Yeast," we can entertain but little doubt of the fact, notwithstanding the agreement was not in writing. The principal question involved in this case is whether the words "Twin Brothers" are a trade-mark of such a character as entitles the plaintiff to be protected in his monopoly of them. The point is certainly not free from difficulty. There are few classes of cases irr the whole domain of the law so difficult to reconcile as those 672 U. S. C. C. EAST. DIST. OF MICHIGAN'. Burton vs. Stratton, et al. XOS wherein the validity of a trade-mark is discussed. The following proposition, however, may be considered as settled: 1. That a Court of Equity will enjoin unlawful competition in trade by means of a simulated label, or of the appropriation of a name; as where the defendant appropriates the name of a hotel conducted by the plaintiff, or imitates his label upon preparations. Howard v. Henriques, 3 Sand/., 725, (Irving House Casey, Wood- ward v. Lazar, 21 Cal. , 448, {What- Cheer House Case); Howe v. Searing, 10 Abb. Pr., 264, (Howe's Bakery Case); McCardell v. Peck, 28 How. Pr., 120, (McCardell House Case); Williams v., Johnson, 2 Bosw., 1, (Genuine Yankee Soap Case); Day v. Croft, 2 Beav., 488, (Day &* Martin Blacking Case); Davis v. Kendall, 2 R. I., 566, (Pain- Killer Case); Meriden Britannia Co. v. Par- ridge, 39 Conn., 450. The ground of interference in this class of cases is fraud; that is, the attempt, to palm off the goods of the defendant as the goods of the plaintiff. 2. A Court of equity will not protect a person in the exclusive use of a word which expresses a falsehood; as, if the article bears the word "patented" when in fact it is not patented, or exhibits an untruth as to the place of manufacture or composition of the arti- cle. Leather Cloth Co. v. American Leather Cloth Co., n H. of L., 531; Browne, Trade-Marks, sec. 72; Flavel v. Harrison, 10 Hare, 467; Partridge v. Menck, 1 Barb. Ch., 101; Pidding v. How, 8 Simmons, 477, (Howqua Mixture Case); Palmer v. Harris, bo Pa., 156, wherein the trade-mark indicated that certain cigars were made in Havana, when in fact they were made in New York; Fetridge v. Wells, 1 3 How. Pr. , 385 , (Balm of Thousand Flowers Case); Phalon v. Wright, 5 Phila., 464, (Night- Blooming Cereus Case); Cocks v. Chandler, L. R., n Eq., 446, (Reading Sauce Case); Connwellv. Reed, 128 Mass., 477, (East Indian Remedy Case). 3. That no one can extend his monopoly of a patented trade- mark. By the expiration of the patent the public acquires the right not only to make and sell the article, but to make and sell it under the name used by the patentee. Singer Manuf'g Co. v. Stanage, 6 Fed. Rep., 279; In re Richardson, 3 0. G., 120; Tucker Manuf'g Co. v. Boyington, 9 0. G., 455. JULY, 1882. 673 103 Burton vs. Stratton, et at. 4. A person cannot, by means of a trade-mark, monopolize the name of the place where the article is manufactured. Canal Co. v. Clark, 13 Wall., 311, {Lackawanna Coal Case); Brooklyn White Lead Co. v. Masury, 25 Barb., 416. Nor the ordinary numerals or letters. Manu/'g Co. v. Trainer, 101 U. S., 51, (A. C. A. Case); Am. Manu/'g Co. v. Spear, 2 Sana!/., 599; Avery v. Meikle, 23 Alb. Law J., 443. This proposition has, however, been dis- puted. See Gillott v. Esterbrook, 48 N. Y, (The 303 Case); Board/nan v. Meriden Britannia Co., 35 Conn., 402. Nor can a person monopolize a name expressive of the character or compo- sition of an article. Caswell v. Davis, 35 N. Y, 281, (Ferro- Phosphorated Elixir 0/ Calisaya Bark Case). 5 . So where the words used are expressive only of the name or quality of the article, and have acquired that significance in the market. Am. Manu/'g Co. v. Spear, 2 Sand/., 599; Manu/'g Co. v. Trainer, 10 1 U. S., 51; Stokes v. Landgraff, 17 Barb., 608; Corwinv. Daly, 7 Bosw., 222, (Club House Gin Case); Ferguson v. Davol Mills, 2 Brewster, 314; Choynskiv. Cohen, 39 Cal., 501, {Antiquarian Book Store Case); Phalonv. Wright, 5 Fhila., 463; Singleton v. Bolton, 3 Doug., 293, ( Case 0/ Dr. John- son' s Yellow Ointment); Thomson v. Winchester, 19 Pick., 214, (Thomsonian Medicine Case); Benninger v. Wattles, 24 How.Pr., 204, (Old London Dock Gin Case); Raggett v. Friedlater, L. R., 14 Eq., 29, (The Nourishing Stout Case). In order that mere words may be upheld as a trade-mark they must be merely arbitrary, or they must indicate the origin or ownership of the article or fabric to which they are affixed. Am. Manu/'g Co. v. Spear, 2 Sand/., 597; Canal Co. v. Clark, 13 Wall, 322; Falkinburg v. Lucy, 35 Cal., 52; Browne, Trade- Marks, sec. 216; Durham Tobacco Case, $ Hughes, 157; Wother- spoonv. Currie, L. R., 5 £. &> L. App., 508, (The Glenfield Starch Case); Ford v. Foster, L. R., 7 Ch. App., 611, (Eureka Shirt Case); Hier v. Abrahams, 82 N. Y., 519, (Pride Tobacco Case); Mc Andrew v. Bassett, 10 Jur., (N. S.), 550; S. C, 12 Week. R-, 777, (Anatoleo Case); Lee v. Haley, L. R., 5 Ch., 155, (Grimes Coal Co. Case); Seixo v. Provezende, L. R., 1 Ch., 192, 43 674 U. S. C. C. EAST. DIST. OF MICHIGAN. Burton vs. Stratton, et al. XOS (Seixo Wine Case); Braham v. Bustard, i Hem. & M., 447, (Excelsior Soap Case). There are cases which appear to differ from those above cited, but we think most if not all of them, can be distinguished from them. The defendant takes the ground in this case that the words "Twin Brothers Yeast" is a generic name, and indicates, not the origin or ownership of the article, but its specific quality, and that it has acquired in the market a reputation under that name. This defence appears to be somewhat of an after-thought, and it is doubtful whether it is properly before the Court, since no allu- sion is made to it in the answer, and it was not until the case had been at issue a year and the proofs taken that defendant made an affidavit to the effect that "Twin Brothers Yeast" was the generic name of a specific article of merchandise, and that he was the only person who ever was or ever could be able to manufacture it. The defence, too, seems to be somewhat inconsistent with the previous testimony. Upon being called as a witness Stratton swore that he made a discovery of a yeast compound, and that he did not get it patented because he considered it of more value to him as a secret than as a patent. He had imparted the secret to the employees of the plaintiff. He had also imparted it to the Judds, who manufactured "Judd Bros." yeast according to his formula; tha-t he had also imparted the secret to one Hopper, who made the same yeast under the name of the "National Yeast;" that while a member of the firm of A. G. Smith & Co., he manu- factured and sold the same yeast under the name of the "Stand- ard" yeast, and that he manufactured the same yeast for a firm in Toledo, who sells it under the name of the "Lion Brand." 1. The difficulty is in distinguishing cases where the property has acquired a generic name, as indicating the quality of the article rather than its origin or ownership. One would say at once that Congress Water was an example of a generic name, since it is universally known by that name in the market; and yet the Court of Appeals in New York sustained it as a trade- mark, apparently upon the ground that complainants were the ex- clusive owners of the spring known as the Congress Spring, and JULY, 1882. 675 1 O S Burton vs. Stratton, et al. that the right to use the name was passed as appurtenant to the property. The only satisfactory rule we have been able to gather from the authorities is that in each case it is a matter for the Court to determine, not alone from the mark itself, but from the testi- mony, whether the words have become as well-known as to stand in the public eye as denoting the character and quality of the article and not its origin or ownership. Thus, if it should ap- pear that the article had been manufactured and sold by a num- ber of dealers under a particular name, this would be decisive that the plaintiff had no right to the exclusive use of that name. Most if not all of these generic names were at first indicative of the origin, but finally, by constant use, ceased to subserve that purpose and have become indicative of the quality. An example of this is "Fowler's Solution of Arsenic," which clearly indicates origin, but the article is nevertheless put up'by druggists all over the country, and this name has become public property. We think that most if not all the cases upon this subject, when care- fully examined will be found to have turned upon the extent to which the name is used, rather than upon the name itself. Thus, in the A. C. A. Case, 101 U. S., 51, it was said by the Court that it was clear, from the history of the adoption of the letters as narrated by the complainant and the device itself, that they were only intended to represent the highest quality of ticking manufactured by the plaintiff, and not its origin. It appeared that other letters were used to indicate inferior grades of the same article. In Stokes v. Landgraff, 17 Barb., 608, it appeared it was a practice of manufacturers of glass to designate the several quali- ties by names similar to those used by the parties to the action, and not by words or figures, in terms expressing the qualities. In Corwin v. Daly, 7 Bosw., 222, it appeared that the words "Club House" had been applied to articles of merchandise, including gin of a special quality, for a number of years. See, also, Fer- guson v. Davol Mills, 2 Brewster, 314; Thompson v. Winchester, 19 Pick., 214; Wolfe v. Goulard, 18 How. Br., 64. (Scheidam Schnapps Case'). 6y6 U. S. C. C. EAST. DIST. OF MICHIGAN. Burton vs. Stratton, et al. 103 2. But if the primary object of the trade-mark be to indicate the origin or ownership, the mere fact that the article has obtained such a wide sale that the mark has also become indicative of qual- ity is not of itself sufficient to debar the owner of protection or make it the common property of the trade. To hold otherwise would be to deprive the owner of the exclusive use of his trade- mark just at the time when it had become most valuable to him and stood most in need of protection. But if the same be suffered to come into general use without objection from the original pro- prietor, it became merely generic, or indicative of quality. Applying these principles to the case under consideration, it is pertinent to observe that no such defence is set, up in either of the answers to the original bill, which was filed in December, 1880. In the answer of Orange Judd it is expressly averred that he is manufacturing Judd Brothers yeast; that for a number .of years he manufactured yeast for the complainant of precisely the same kind as he is now manufacturing, and which said complainant sojd as Twin Brothers yeast. He admits that he is selling to said Jackson B. Stratton and Asa Judd the yeast manufactured by this defendant, which, as Before stated, is precisely the same kind of yeast he before manufactured for the plaintiff. He further avers that what Stratton and Asa Judd (his brother) do with the said yeast this defendant does not know except from hearsay, but he denies that he is directly or indirectly using the "Twin Brothers'' trade-mark, or any mark except that owned by himself, to wit, the trade-mark of Judd Brothers; and further, that if Stratton and Asa Judd are using complainant's trade-mark, it is upon their own responsibility and without any agency or authority from him. He further, in paragraph 7, says that he is now and has been sell- ing to the trade — large quantities of the same kind of yeast which he has been selling said defendants Stratton and Asa Judd; that all said yeast sold by him is sold under the name of "Judd Brothers Yeast." The testimony also shows, as heretofore stated, that the same yeast was sold under the name of Standard yeast and of the Lion yeast. The first intimation we have of the claim now set up is con- tained in the affidavit of Jackson B. Stratton, filed in Decern- JULY, 1882. 677 IOS Burton vs. Stratton, et al. bar, 188 1. His original defence was that he did not sell his inte- rest in the trade-mark. It is true that in several of the contracts entered into between the plaintiff and defendant Stratton the yeast is spoken of as the Twin Brothers yeast; and sometimes of the "kind and quality" known as Twin Brothers yeast; and so it was undoubtedly known, as between the parties themselves, as representing the yeast of the compound of which Stratton pos- sessed the secret; but this is no answer to the fact that it was manufactured and held out to the public under different names, such as were most convenient for Stratton. Upon the whole, it does not seem to us that the words "Twin Brothers," under the testimony, can be considered as indicating to the public the qual- ity of the yeast, though it certainly does indicate origin and ownership in the persons whose likenesses appear on the trade- mark. The question whether this trade-mark was such a one as could be the subject of assignment to the plaintiff, and lawfully used by him, is not free from difficulty. He was not one of the Twin Brothers, nor are either of the heads in the oval figure rep- resentations of himself or of any one now connected with ' him in business. But the cases are numerous in which it has been held that a party may lawfully assign and sell not only a trade-mark indicative of origin in himself, but even the right to use his own . name in connection with a particular business. 3. Several of these are cited in the recent opinion of Mr. Justice Matthews in the case of Pepper v. Labrot, 8 Fed. Rep., 29, in which the right to use the words "Old Oscar Pepper" were held to pass to an assignee in bankruptcy of the proprietor of a distil- lery and premises, even as against such former proprietor himself, who had set up a separate establishment in another county. The comments of Justice Field in this connection in Ridd v. Johnson, 100, U. S., 517, are decisive of the right of a party'to sell a trade- mark used in connection with a certain business, though it be in- dicative of origin in himself. In the case under consideration it seems to me clear that the Strattons could lawfully transfer to the complainant, in connection with their sale to him of their interest in the business, the exclusive right to use their trade-mark. Whether such trade-mark could be assigned separate from the 678 U. S. S. C. C. EAST. DIST. OF MICHIGAN. Burton vs. Stratton, et al. IOS business to which it was appurtenant, or whether it would pass by a sale of the business alone, we are not called upon to de- cide. Complainant paid a valuable consideration for this trade- mark, and we think he should be protected by injunction in his right to use it. See Shaw Stocking Co. v. Mack, post, 707, and note, 717. JULY, 1882. 679. 1 04 The Collins Co. vs. Oliver Ames & Sons Corporation. 104 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. , The Collins Company vs. Oliver Ames & Sons Corporation. Decided 3 July, 1882. Reported 18 Federal Rep., 561. "Collins 6° Co." Case. TRADE-MARK— FIRM-NAME— INFRINGEMENT. Prior to 1834, S. \V. Collins, D. C. Collins, and another, copartners as Collins & Co., made edge-tools, using as a trade-mark "Collins & Co." In 1834, they assigned to the Collins Manufacturing Company, a cor- poration, the right to such trade-mark. In 1843, the right to make all articles of metal was conferred on the corporation, and its name was changed to the Collins Company, the plaintiff. It always stamped " Collins & Co." on its productions. In 1856, the firm of Oliver Ames & Sons began to put the stamp and label " Collins & Co." on shovels made by it, and sent to Australia. The plaintiff had not up to that time made shovels, but it had a market in Australia for the articles it made and stamped " Collins & Co." The object of Oliver Ames & Sons in putting the stamp " Collins & Co.' - on the shovels, was to avail themselves of the credit and reputation and market which the plaintiff 680 U. S. C. C. SOUTH. DIST. .OF NEW YORK. The Collins Co. vs. Oliver Ames & Sons Corporation. 1 04 had established for itself for articles stamped " Collins & Co." The plaintiff, at the time of bringing this suit, had not sent or sold any shovels to Australia. The defendant, in succession to Oliver Ames & Sons, continued to do what the latter so began to do in 1856. Held: That the acts of Oliver Ames & Sons, and of the defendant, were always unlawful. The plaintiff having had, from 1843, the right to make all articles of metal, and having gone on from that time, both before and after 1856, extending its manufacture beyond edge-tools into digging tools, such as picks and hoes, and having always put the mark " Col- lins & Co." on its best quality of articles, the fact that it did not, be- fore 1856, make a digging tool such as the shovel on which, in 1856, Ames & Sons put the mark " Collins & Co.," does not warrant the conclusion that that mark was not, in 1856, the mark of the plaintiff's trade in respect to such shovels. John Sherwood, for plaintiff. William M. Ev arts and Charles C. Seaman, Jr., for defendant. Blatchford, J.: Prior to May, 1834, Samuel W. Collins, David C. Collins and John F. Wells, as copartners under the name of Collins & Co., had been carrying on, in the State of Connecticut, the business of making and selling axes and other edged tools. They have been in the habit of using as a trade -mark the words " Collins & Co." stamped on the articles which they made. They failed in business. In May, 1834, the Legislature of Connecticut created a corpora- tion by the name of " The Collins Manufacturing Company," to be located in the town of Canton, in that State, << for the purpose of manufacturing edged tools." In October, 1834, the corpora- tion in said firm assigned to said corporation " the reputation and good-will of the business heretofore carried on by the said firm of Collins & Co., of manufacturing and vending axes and other edge- tools, also the right to stamp the name of Collins & Co., on the articles manufactured by the said corporation." From that time until April 3, 1835, the corporation had Samuel \V. and David C. Collins in its employ. On the latter date each of those persons executed an agreement with the corporation, whereby he agreed to continue in its employ for five years from September 27, 1834, and it agreed to employ him for that time, and he assigned to the- JULY, 1882. 68l 1 04 The Collins Co. vs. Oliver Ames & Sons Corporation. corporation "the reputation and good -will of the business here- tofore carried on by Collins & Co., of manufacturing and vending axes and other edge-tools, also the sole and exclusive right to stamp the name of Collins & Co., Hartford, on the articles manu- factured by said corporation," and he agreed not to sell any axes or other edge-tools having on them the name of Collins or Collins & Co., except such as should be made by said corporation, its suc- cessors or assigns. The consideration of each agreement was an annual salary, and certain shares of the capital stock of the cor- poration. In May, 1843, the Legislature of Connecticut altered and enlarged the charter of the corporation, so that it should have " power to manufacture iron and steel, and other metals, and any article composed of said metals, or either of them," and en- acted that the name of the corporation should be "The Collins Company," instead of " The Collins Manufacturing Company," these provisions being conditioned on their acceptance by the cor- poration at a future meeting of the same, duly convened. In October, 1844, such a meeting was duly convened, and at it the stockholders accepted the said alterations of the charter. The capital of the corporation was originally $300,000. The Legis- lature increased it in 1863 to $500, 000, and in 1866 to $1,000,000. The factories of the corporation have always been at Collins- ville, in the town of Canton, in Hartford County, Connecticut; about 16 miles from Hartford. The manufacturing business of the old firm of Collins & Co. had been carried on at Collinsville. It had an office in Hartford. The charter of the corporation was obtained for the benefit of the creditors of the firm, and the pro- perty of the firm passed into the possession of the corporation, and became a part of its capital stock. The complaint in this suit alleges that the plaintiff corporation has, from its organization, been engaged in making " axes, hatch- ets, adzes, picks, and other agricultural and mechanical tools and implements;" that it has always used as its trade-mark the name of "Collins & Co.," but has placed and now places that name upon such goods only as have obtained a high standard of excellence; that said trade-mark name was intended to and did inform the purchasers that the goods upon which it appeared were 682 U. S. C. C. SOUTH. DIST. OF NEW YORK. The Collins Co. vs. Oliver Ames & Sons Corporation. 1 04 of the manufacture of the plaintiff exclusively; that its goods, made at Collinsville, have been and are almost exclusively sold on commission in the City of New York, by a firm there called Collins & Co., which has existed since 1849; that the goods of the plain- tiff ' < have been and are sold in large quantities in all parts of this country, in Mexico, in most countries of South America, and in the West India Islands, in England, Germany, Russia, and other countries of Europe, and also in parts of Asia and Africa, and in Australia; that the plaintiff, for more than 30 years last past, has gradually increased and extended its manufacture from "axes, hatchets, broad-axes, picks, mattocks, and other similar tools and implements, such as hoes of various descriptions, machetes, and other cane-cutting implements for use in the West Indies and South America, and also, about the year 1857, special implements and tools for digging Peruvian guano, and, soon afterwards, other implements and tools, such as spades and plows;" that, for more than 20 years last past, it has made and sold shovels of various forms, patterns, and descriptions, and its trade, especially for ex- port, in such shovels has beenand is now successful and profitable; and that the best qualities of the said tools and implements of the plaintiff's manufacture have been and are stamped with the said name and word "Collins & Co." and the shovels so made and sold by it have been and are now stamped or branded and labeled with the said name and words " Collins & Co." The defendant is a corporation created by the State of Massa- chusetts, having its factories at North Easton, in that State, and largely engaged in making shovels, spades, scoops, and other similar implements and tools. The complainant alleges that, in the autumn of the year 1879, the plaintiff for the first time discov- ered that shovels had been and were being sold in the City of New York, having stamped or branded upon the iron the name and words " Collins & Co.," " Cast Steel," and that upon the handles thereof were pasted or fastened labels, which had the following words printed or engraved thereon: "Best Cast Steel, Manufac- tured and Warranted by Collins & Co., North Easton, Mass., U. S. A.;" that_the said shovels were in fact made and so stamped or branded and labeled by the defendant, and not by the plaintiff; JULY, 1882. 683 1 04 The Collins Co. vs. Oliver Ames & Sons Corporation. that said shovels were sold by the defendant in the City of New York; that the statement and representation contained in and made by said stamps or brands and labels, that the said shovels were made by "Collins & Co.," is false; that no such firm as " Collins & Co." is or has been engaged in any such manufacture at North Easton, Massachusetts; that no firm in the country, in the same business, bears the name of " Collins & Co." other than that represented by the plaintiff, or its said commission house of Collins & Co. » of New York; that the shovels made by the de- fendant, and so branded, stamped, and labeled " Collins & Co.," have been and are now being sold by it in the City and State of New York, and elsewhere in the country, and considerable quan- tities thereof have been exported to foreign countries, such as Australia, South Africa, and elsewhere; that the use of the name of "Collins & Co." on shovels or any other article by the defendant is unauthorized; that said name has been taken and is so used by the defendant to induce purchasers to believe that said goods were and are made by the plaintiff; that the effect of such use and misrepresentation by the defendant is also to defraud the plaintiff in its trade, and to injure its reputation; that in De- cember, 1879, the defendant was requested by the plaintiff to discontinue the use of the name of " Collins & Co." on shovels, tools, 'and implements made and to be made by the defendant, but it refused to do so; that the defendant makes and sells shovels with the name of "Collins & Co." thereon, and said shovels are of an inferior quality to those of the plaintiff, and also of an in- ferior quality to those of the defendant upon which it uses its own name, and the reputation and trade of the plaintiff are injured by the said acts of the defendant; and that the plaintiff has thereby sus- tained damages to a large amount. The prayer of the complainant is that the defendant be enjoined from stamping or branding the name or words "Collins & Co." or " Collins" on any shovel or implements of its manufacture, and from placing any labels with the name or words " Collins & Co." or "Collins" on any shovels or implements of its manufacture, and from selling or disposing of any shovels or implements with the name " Collins & Co." or "Collins" thereon, and from using in any manner the name or 684 U. S. C. C. SOUTH. DIST. OF NEW YORK. The Collins Co. vs. Oliver Ames & Sons Corporation. X 04 words " Collins & Co." or " Collins" as a trade-mark upon any shovels, implements, or other articles, and from using in any man- ner the plaintiff's trade-mark of " Collins & Co." or the name of "Collins." It also prays for an accounting and for $10,000 damages. This suit was brought in the Supreme Court of New- York, and was removed into this Court. The complaint was put in, in the State Court. The answer and the replication to it were put in, in this Court. The answer states that it treats the com- plaint as a bill of complaint. The answer denies that the reputation of any goods of the plain- tiff's manufacture has been injured or impaired by any imitation or infringement by the defendant, and that the defendant has imi- tated or infringed any of the goods or marks or trade-marks of the plaintiff. It avers that the defendant and its predecessors are, and have been for upwards of 75 years, largely engaged in the business of manufacturing shovels, spades, scoops, and similar implements and tools. It admits and avers that, in the autumn of 1879, as well as for upwards of 23 years before that time, shovels of the manufacture of the defendant and its predecessors were being and had been sold in the City of New York, having stamped or branded on them the name and words "Collins &Co., Cast Steel," or put in similar words, and having pasted or fastened on the handles thereof labels which had the following words, or such or similar words, printed or engraved thereon; "Best Cast Steel, Manufac- tured and Warranted by Collins & Co., North Easton, Mass., U. S. A.;" and that such shovels, bearing such marks and labels thereon, were in fact manufactured, and so stainped and branded or labeled, by the defendant and its predecessors, as well as by other manufacturers, and not by the plaintiff. It avers that the defendant and its predecessors had been in the habit of manu- facturing shovels, and stamping, branding, and labeling them with the said words, or with such or similar words, from time to time since the year 1856, and that the plaintiff and its predecessors have known that fact for many years last past, and since about the time of the use thereof by the predecessors of the defendant, in the year 1856. It admits and avers that the defendant and its prede- cessors have made such shovels from time to time since the year JULY, 1882. 685 1 04 The Collins Co. vs. Oliver Ames & Sons Corporation. 1856, as aforesaid, and that no such firm as "Collins & Co." is or has been engaged in any such manufacture at North Easton, in Massachusetts; that the shovels made by the defendant, and so branded, stamped, and labeled "Collins & Co.," have been and are now being sold by it in this country, and that large quanti- ties thereof have been exported to foreign countries, such as Aus- tralia, South Africa, and elsewhere; that such sale and export have been going on in the usual and ordinary course of business of the defendant and its predecessors for 25 years or thereabouts; and that neither the plaintiff, nor the Collins Manufacturing Company, nor any firm of Collins & Co., ever manufactured any shovels branded, stamped, or labeled with the name of Collins & Co., or any shovels whatsoever, until long after such shovels of the de- fendant, so branded', stamped, and labeled, had been introduced into the market and sold and exported to a large amount, and had acquired a high reputation in consequence of the quality of the material of which they were manufactured, and the care and skill exercised in the manufacture and selection thereof, or even manu- factured or sold any such shovels until within the last few years, if at all. It denies that the use by the defendant of the name "Collins & Co." on shovels, or any other articles upon which such name may be used by it, is unauthorized or involves any false rep- resentation in respect thereto, or that said name has taken, or has been or is used, by the defendant to induce purchasers to believe that said goods were or are manufactured by the plaintiff, or that the effect of such use, or of any representations by the defendant in respect thereto, is either to deceive purchasers or the public, or to defraud the plaintiff in any way, or to injure any good name or reputation which it may have. It avers that, in using the same, the defendant used only its own trade-mark, to which it became en- titled by reason of the use of such mark by it and its predecessors upon its and their shovels since the year 1856. It admits that in De- cember, 1879, the defendant was applied to by the plaintiff to dis- continue the use of. the name of "Collins & Co." upon its shovels, and that it refused to discontinue such use thereof, asserting that it had the lawful right to use such name upon the shovels manu- factured and sold by it. It admits and avers that the defendant 686 U. S. C. C. SOUTH. DIST. OF NEW YORK. The Collins Co. vs. Oliver Ames & Sons Corporation. 1 04 makes and sells, and it and its predecessors have, for nearly 25 years, made and sold, considerable quantities of such shovels, with the name of " Collins & Co." thereon; and that such desig- nation is used by it upon a quality of shovels inferior to the very superior grade of shovels upon which it uses its own name. It denies that such shovels are of an inferior quality to any shovels manufactured by the plaintiff; that the reputation of the plaintiff or its trade is injured or impaired by any acts of the defendant; or that the plaintiff has thereby sustained any damages. It avers that, if the plaintiff is now manufacturing any shovels, and is stamping the same with the brand of " Collins & Co.," and sell- ing the same either for domestic consumption or export, it is wrongfully acquiring great benefit and advantage from the use which the defendant and its predecessors have heretofore made of such title of " Collins & Co." upon shovels of its and their manu- facture, and is infringing upon rights which the defendant has heretofore acquired by such use of such name in connection there- with. It avers that, in the year 1856, Oliver Ames, Oakes Ames, and Oliver Ames, Jr., of North Easton, in the State of Massachu- setts, were doing business as copartners under the firm name of Oliver Ames & Sons, and were engaged, as they and their prede- cessors, for upwards of 50 years, had been, in the manufacture, at said North Easton, of shovels and spades; that for the very highest grade of shovels manufactured by the said firm, which was of superior excellence and comprised only shovels and spades selected with great care from the production of their factories, the name of O, Ames was used as the trade-mark of said firm; that for grades of the shovels and spades manufactured by said firm which, although inferior to the first grade above mentioned, were superior to most of the shovels and spades manufactured by other persons or parties, other names and trade-marks were applied, which were selected for the purpose; that in the month of April, 1856, the name "Collins & Co." was by said firm stamped upon and used to designate certain of the shovels which were manufac- tured by.it; that, since that time, the said name of "Collins & Co." has been, from time to time, stamped by the said firm and its successors, including the defendant, upon shovels and JULY, 1882. 687 104 The Collins Co. vs. Oliver Ames & Sons Corporation. spades manufactured by it and them; that such firm and its suc- cessors, including the defendant, have thereby acquired a right to the use of such name upon and in connection with the shovels and spades manufactured by said firm and its successors, includ- ing the defendant; that such firm of Oliver Ames & Sons con- tinued until the year 1876, new members being admitted to such firm from time to time, and the original members thereof having died; that such firm continued, notwithstanding such changes in the membership thereof, to carry on its business of the manufac- ture of shovels and spades without interruption, and to own and enjoy the marks and trade-marks thereof, and to carry on the business of manufacturing shovels and spades at the same place, and in the same factories, and with the same establishment, until the said year 1876, when the defendant, then a corporation under the laws of Massachusetts, succeeded to and became, by transfer from the said firm, the owner of all its rights, property, marks, and trade-marks, including the right to the use of the name or mark "Collins & Co." upon shovels, and the brands, stamps and labels therefore used in connection therewith by the said firm; that the defendant thereby acquired the right of the said firm to the use of the said name, brands, stamps, arid labels, and has since continued to exercise the right to the use thereof, which has now been enjoyed by the defendant and its predecessors for nearly 25 years; that if the firms of Collins & Co., and the Collins Manufac- turing Company, and the plaintiff, exist and have existed, they have all acquiesced in and assented to the use by the defendant and its predecessors of the name of the said "Collins & Co.," and the brands, stamps, and labels above mentioned, in connection with shovels, in the like manner to that in which the same are now used by it in connection therewith, and have ratified and approved the same, and are estopped now from objecting thereto; that neither of said firms of Collins & Co., nor the said Collins Manufacturing Company, nor the plaintiff, made any use of the name " Collins & Co." upon or in connection with any shovels manufactured by it or them, or either of them, or ever manufactured any shovels upon which it or they or either of them could or might have used such name, until such use thereof had for many years been made 688 U. S. C. C. SOUTH. DIST. OF ISfEW YORK. The Collins Co. vs. Oliver Ames & Sons Corporation. 1 04 by the predecessors of the defendant and by the defendant; and that any attempted use of the name "Collins & Co." by the plaintiff, after the acquisition by the defendant of the rights which it had so acquired in respect to the use of such name or mark, was and is an infringement upon the rights of the defendant to the use of such name or mark upon and in connection with shovels manufactured by it. The circumstances under which the firm of Oliver Ames & Sons the predecessors of the defendant, began to use the mark "Col- lins & Co." on shovels, were these: on the twenty-first of March, 1856, John W. Quincy, a merchant in the City of New York, wrote the following letter to Oliver Ames & Sons: Messrs. Oliver Ames & Sons. Gents.: — A party here has an order from Australia for the fol- lowing shovels: they must be exactly to order as to weight and size. His order is for Collins' shovels, but I have no doubt that your shovels are wanted. I gave him your list prices and 5 per cent, for cash. These parties' name are J. & R. Osborn, and if they write you, please turn them over to me, or give them five per cent, for cash. I expect my,advertisement brought them, and I want to make part of advertisement out of these folks. Their order runs thus: "100 dozen best and lightest bright D handled shovels, C. S., well packed in cases; should weigh only 3^ pounds; handles to measure 23 to 24 inches only. "25 dozen C. S. spades, with extra long strap and side strap, if made so. "12 dozen long-handle shovels, square. "12 dozen long-handle shovels, round. "The above is exact copy of order, and the party wishes us to furnish the price of each. As the first lot of 100 doz. are lighter than your regular shovels, I told him I would write you, and get an answer at once direct, and inform him. "Please say how soon you can furnish them if wanted, and the probable cost of packing. Your immediate answer will oblige. "Yours, truly, John W. Quincy." "New York, March 21, 1856." JULY, 1882. 689 104 The Collins Co. vs. Oliver Ames & Sons Corporation. On the twenty-fourth of March, 1856, Oliver Ames & Sons re- plied to Mr. Quincy by letter, but neither it nor a copy of it is produced. To that letter Mr. Quincy replied as follows, March 26, 1856: New York, March 26, 1856. Messrs. Oliver Ames & Sons. Gents.: — Your favor of the 24th inst. is at hand. The party gave me the order; he thinks the 100 dozen shovels are to be square point, as the order does not say round point. Please send them as per our letter of the 21st inst. Please have a label made for them thus: ; Made expressly for C. G. Stevens,' and get a stamp for the shovels, Collins & Co., and keep the stamp for our use, as we expect to get further orders for them; or, if you prefer it, I will get them made here and sent to you. We would like the shovels made and forwarded as soon as practicable. "To be packed in boxes and strapped as usual for shipping. These boxes are to be shipped to England and put in custom-house (bond) there and then they go to Australia free of duty. It costs less to ship this way than to pay duty direct to Australia; you will, therefore, have them packed right. "Yours, truly, John W. Quincy." Mr. Quincy was at that time, and before and after, a dealer in the shovels made by Oliver Ames & Sons. The shovels so ordered were made by Oliver Ames & Sons, and were stamped or branded "Collins & Co." by them. At that time the selling firm of Col- lins & Co. existed in New York. The plaintiff did not at that time make shovels, but the articles which it did make were sent to Australia, and it had an established reputation for the excellent quality of such articles. The shovels then and theretofore made by Ames & Sons had the reputation of being the best shovels made. It is very clear that when Quincy stated to Ames & Sons that the order he had received was for "Collins' Shovels," he understood, and he meant that Ames & Sons should understand, and they did understand, that the order as given, was for shovels made or to be 44 690 U. S. C. C. SOUTH. DIST. OF NEW YORK. The Collins Co. vs. Oliver Ames & Sons Corporation. 104 made by the Collins Company, that is, the plaintiff. But Quincy knew that the plaintiff made no shovels and that Ames & Sons did make shovels. So he showed to those who came to him the shovel list of Ames & Sons. For some reason, a party in Australia, wanting shovels, had ordered "Collins' shovels," although there were none. Other articles of the plaintiff's manufacture were found in Australia, of high repute and good quality, articles of steel, kindred in character to shovels. It would be natural to think that, as other good articles of steel were of the Collins' make, the way to surely get a good shovel was to get one of Collins' make; and it would be natural to assume that there were Collins' shovels. The letter of Quincy shows that he informed those who came to him with the order that ,there were no Collins' shovels, and also informed them that he proposed that the order should be filled with shovels made by Ames & Sons. This was very well, and, so far, was fair dealing. The proposal was acquiesced in, for the arrangement was that Quincy should write to Ames & Sons and obtain the prices at which the articles would ,be furnished. It would appear that Ames & Sons, in reply, desired to know whether the order was given absolutely or not to Quincy; for Quincy re- plied that the party had given the order to him. He then re- quested Ames & Sons to fill it, and also directed that, besides the label "Made expressly for C. G. Stevens," which it must have been intended should be pasted on the wooden part of each shovel and each spade, each shovel of the 100 -dozen order should have on it, impressed on the metal, the mark "Collins & Co.," to be made by a stamp. As it was understood that these articles were to go to Australia, both Quincy and Ames & Sons must have had some object in view connected with Australia. Quincy states, in his second letter, that he wishes the stamp to be kept for his use in filling further orders for like shovels, meaning further orders from Australia. He and the defendant could have intended noth- ing but that the idea which had come from Australia that there were Collins', though incorrect in fact, should become to the minds of people in Australia a realized idea, by their seeing on shovels the stamp " Collins & Co.," and deriving therefrom the belief that the same Collins & Co. which had made the axes and JULY, 1882. 691 1 04 The Collins Co. vs. Oliver Ames & Sons Corporation. other articles before familiar to them had made these shovels. It appears that the axes and other articles made by the plaintiff, and which before that time were known and used in Australia, were stamped "Collins & Co." Therefore, although the shovels made by Ames & Sons under this order and subsequently, stamped "Collins & Co.," and sent to Australia and elsewhere, may in- trinsically have been of high quality, yet the only object of the defendant in putting the stamp "Collins & Co." upon them must have been to avail himself of the credit and reputation and market which the plaintiff had established for the article it made and sold with the stamp "Collins & Co." upon them. There was no other purpose in this. Clearly, those who purchased shovels made by Ames & Sons, and stamped " Collins & Co.," would believe that such shovels were made by the plaintiff, for there was no other Collins & Co. than the plaintiff. ' This was an unlawful appropria- tion of the plaintiff's trade-mark. It is true that the plaintiff up to that time had made no shovels. It is also true that Ames & Sons and the defendant have built up a business in shovels stamped "Collins & Co." But the plaintiff had a right to make shovels, and it had made kindred articles of metal, and its good name and reputation in its business were wholly connected with the use, in its trade, of the mark " Collins & Co." Quincy's first letter . shows that the nature of the plaintiff's trade was such that per- sons in Australia, desiring shovels, expected to find shovels made by the plaintiff, which shovels, if found, would have borne the stamp "Collins & Co." If, when the inquiry was made of Quincy, he, had produced the shovels, the make of Ames & Sons, already made and stamped " Collins & Co.," in the same condition as when they were afterwards made on the order, the purchaser would have believed that the shovels were the make of the plaintiff, that being what the order really asked for, if nothing had been said or shown to indicate that they were not made by the plaintiff. As the fact was, the impression produced in Australia, by the shovel itself, with the stamp "Collins & Co.," was the same, al- though the persons who visited Quincy were informed that the shovels were the make' of Ames & Sons. 692 U. S. C. C. SOUTH. DIST. OF NEW YORK. The Collins Co. vs. Oliver Ames & Sons Corporation. X 04 It is true that the plaintiff's business in shovels has been very- small, while that of Ames & Sons and the defendant has been very large. It is also true that the plaintiff has never sold or sent any shovels to Australia. It is also true that Ames & Sons and the defendant have put the stamp "Collins & Co." on only a particular description of shovel or spade, in all 52,000 dozen since 1856, while their make of shovels for the last 10 years has been from 100,000 dozen to 120,000 dozen a year. The 52,000 dozen have gone abroad wholly, largely to Australia. But the question of profit to the defendant or damage to the plaintiff is aside from the question of the right of the plaintiff to its trade- mark. In view of the circumstances under which Ames & Sons adopted the mark "Collins & Co.," on the shovels, it must be held that they had no right to adopt it, and that its use by them was always unlawful. The animus of the defendant is shown in the representation in the label on the shovel that "Collins & Co." is a firm making shovels in North Easton, and that the shovel stamped " Collins & Co." was made by that firm at that place. To the user or pur- chaser of the individual shovel in Australia, the mark "Collins & Co." on the steel or the wood would be all that was needed to induce him to believe that he was using or buying a shovel made by the same ' < Collins & Co. ' ' which made the excellent edge- tools, while in the United States it could be asserted that every dealer would know that there was no firm of " Collins & Co." at North Easton making shovels, and so that representation would there deceive no one, and would not there induce the belief that the shovels were made by the plaintiff. It is strongly urged, on the part of the defendant, that a mark or stamp, to be a trade-mark, must be the mark of an existing trade; that the mark "Collins & Co." on shovels, when adopted by Ames & Sons, became the mark of a trade in shovels carried on by Ames & Sons; that the plaintiff had no trade in shovels at the time, that the mark "Collins & Co." thus became the mark of Ames & Sons' trade in shovels, and the property of Ames & Sons in respect to shovels made by them, by prior right; that any use of that mark on shovels afterwards by the plaintiff became wrongful JULY, 1882. 693 104 The Collins Co. vs. Oliver Ames & Sons Corporation. as against Ames & Sons or the defendant; and that the plaintiff has no right in the premises which it can enforce against the defend- ant. This view is specious but unsound. The plaintiff having from 1843 the right to make any article of iron, steel, or other metal, and having gone on from that time, both before and after 1856, extending its manufacture beyond edge-tools, into digging tools, such as picks and hoes, and having always put the mark "Collins & Co."- on its best quality of articles, the fact that it did not before 1856 make a digging tool such as the shovels on which, in 1856, Ames & Sons put the mark " Collins & Co." does not warrant the conclusion that that mark was not in 1856 the mark of the plaintiff's trade in respect to such shovels. The plaintiff is entitled to a decree for a perpetual injunction, as prayed in the bill, and for an accounting before a Master as to profits and damages, and for the costs of the suit. 694 U. S. C. C. SOUTH. DIST. OF NEW YORK. Ginter vs. Kinney Tobacco Company, et al. lOS 105 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Ginter vs. Kinney Tobacco Company, and others. Decided 15 July, 1882. Reported 12 Federal Rep., 782. "Straight Cut Tobacco" Case Trade-Mark— " Straight Cut."— The term "straight cut," as ap- plied to cigarettes, is a term descriptive of the ingredients and charac- ter of the article used, and cannot be appropriated as a trade-mark, so as to preclude another from advertising cigarettes made of straight cut tobacco. Same — Use of Term Tending to Deceive. — The use of a term by complainant in a manner calculated to mislead the public in reference to the components or nature of the article to which it is applied, tvill not be tolerated. Wm. D. Shipman, for complainant. Charles B. Meyer, for defendants. JULY, 1882. 695 105 Ginter vs. Kinney Tobacco Company, et al. Wallace, C. J.: 1. So far as appears upon this motion the term " straight cut," as applied to cigarettes, is a term descriptive of the ingredients and characteristics of the article, and therefore the complainant can- not appropriate it as a trade-mark and enjoin the defendants from advertising their article as "straight cut cigarettes." In the preparation of smoking tobacco several different pro- cesses of cutting the leaf are employed, and the product is desig- nated by the term which describes the particular process which it has undergone, such as straight cut, curly cut, long cut, and fine cut. " Straight cut " designates that particular product in which the plant has been so cut and treated at the time of cutting as to pre- serve the fibers long, even, straight and parallel when prepared for sale or use. It is stated also that the choicer varieties of the plant are usually selected for this mode of treatment, and the pro- duct is especially desirable for cigarettes. In view of these facts it is evident that when the term is applied to cigarettes it implies that they are made of straight cut tobacco. The complainant advertises his tobacco as straight cut, curly cut, etc., but always adds some further appellation, such as Twin- Pet straight cut, Perfection curly cut, etc. In a circular of May 1, 1 88 1, he states that his "straight cut tobaccos are cut from the choicest varieties of Virginia gold and sun-cured leaf, and are cut to lie straight in the boxes, and are very desirable for making cigarettes. ' ' He now insists that the term was selected and has been employed by his business predecessors and himself as an arbitrary designation of his particular article, and that neither his cigarette nor the defendants' are made of straight cut tobacco. All this, if true, does not help the complainant's case, but to the contrary furnishes an additional reason why he should be denied the assistance of a Court of Equity. Not only has he Employed a name to which he could not acquire an exclusive right, but he has used it in a manner calculated to mislead the public, although, perhaps, not intentionally on his part. A purchaser cognizant of the differences in the preparation of smoking tobacco would legi- timately infer that the complainant's cigarettes were in fact made of straight cut tobacco. 696 U. S. C. C. SOUTH. DIST. OF NEW YORK. Ginter vs. Kinney Tobacco Company, et al. 105 2. No principles are better settled in the law of trade-marks than that a generic term, or a name merely descriptive of the in- gredients, quality, or characteristics of an article of trade, cannot be the subject of a trade-mark, and that the use of a name or term which is likely to deceive the public in reference to the com- ponents or nature of the article to which it is applied will not be tolerated. The motion for a preliminary injuction is denied. See Burton v. Stratton, ante, 696, and note, 704; Shaw Stock- ing Co. v. Mack, ante, 707, and note, 717, OCTOBER, 1882. 697 XO© Selchow, et al. vs. Baker, et al. 106 COURT OF COMMON PLEAS OF NEW YORK. In Equity. Elishu G. Selchow, et al. vs. James S. Baker, et al. Decided October, 1882. Reported 64 How's Pr., 212. " Sliced Animals" Case. TRADE-MARK— ARBITRARY FANCY NAMES,' SUBJECT OF— INJUNCTION. Plaintiffs invented a name for certain puzzles or games, and applied thereto the names of "sliced animals," "sliced birds," and " sliced objects." Held: Upon motion to continue injunction, that these names were arbitrary fancy names and the proper subject of a trade-mark. Motion for Injunction-. Malcolm It. Lawrence, for motion. Blatchford, Seward, Griswold &* Da Coste, opposed. 698 COURT OF APPEALS, STATE OF NEW YORK. Selchow, et al. vs. Baker, et al. IO© J. F. Daly, J.: The plaintiffs are inventors of certain games or puzzles for children, to which they have given the name "sliced animals," "sliced birds," and "sliced objects," according to the pictures used in the play. The puzzles are constructed as follows: strips of cardboard, six and three-quarter inches long by an inch and a quarter wide, have a portion of the picture of an animal, a bird, or any object printed on them, with a single letter of the name of the thing represented in the left-hand corner of the strip. The puzzle is to find the strips containing the other portions of the picture and the other letters of the name, and to place such strips above or below each other so that the whole picture and the whole name are formed. The plaintiffs manufacture the picture strips as follows: the whole picture and the names are printed in colors on a single sheet of cardboard, which is then cut into strips of the sizes above mentioned. I am satisfied that the names given by plaintiffs to these games, viz.: "Sliced animals," "sliced birds," and "sliced objects," must be considered fanciful and arbitrary designations which do not describe the thing manufactured nor its character. They convey no correct idea whatever of the game, or the things used' in it or the proceeds by which it is manufactured. The true designation of the thing and of the game is "divided picture cards," and no other description will convey even a faint idea of them. Neither the card nor the picture on it is sliced, as the term is commonly and properly understood. The name "sliced animals" conveys no intimation that the pictures of ani- mals printed on cards have been cut in strips, and does not truly or in any manner describe the character, game or puzzle. A significant fact in support of this view is that, as appears by de- fendants' own affidavits, games and puzzles made of divided boards or blocks, on which maps, pictures, words, &c, were printed, have been manufactured and sold for over twenty years past under the names of "dissected maps," "spelling games," and under other names; but in no instance has the name "sliced " been applied until plaintiffs chose it to distinguish their articles. OCTOBER, 1882. 699 lOS Selchow, et al. vs. Baker, et al. If the name were the natural and proper designation of the goods it would have been naturally applied to them long before. Motion for injunction granted so far as the use of the names complained of is concerned, with ten dollars costs. yOO COURT OF COMMON PLEAS, NEW YORK. Lauferty vs. Wheeler, et al. 107 107 COURT OF COMMON PLEAS OF NEW YORK. Special Term. In Equity.* Emanuel Lauferty .vs. Thomas Wheeler, et al. Decided October, 1882. Reported 63 How's Pr., 488. " Alder ney Manufacturing Co.'" Case. Trade-Mark — Law of. — The use of the words "Aldemey Manufacturing Company;" not a violation of the Statute of 1833, forbidding the use of the words & Co., unless representing an actual partner. 1. Where the plaintiff had used the words "Aldemey Manufacturing Com- pany," as a trade-mark in relation to the oleomargarine manufactured by him, and had originated and first adopted the word "Aldemey" in that connection, and it formed an integral part of the label stamped upon all the goods manufactured by him, and defendants, by being incorporated under a like name, claim the right to deprive him of the exclusive use of that word in the new connection in which he had placed it. Held: That an injunction lies restraining defendant from the use in any way of the word "Aldemey" in connection with the manufacture and sale of oleomargarine. OCTOBER, 1882. 701 IO "7 Lauferty vs. Wheeler, et al. 2. The use of the words "Alderney Manufacturing Company" is not a violation of the Statute of 1833, forbidding the use of the words "& Co.," or "and Company," unless representing an actual partner. Condert Bros. , for plaintiff. William H. De Wolf and Theodore Fitch, for defendant. Van Brunt, J. : The defendants in this action claim the injunction should be dissolved upon the following grounds: 1st. That the words Alderney Manufacturing Company never was the trade-mark of the plaintiff. 2d. That his use' of these words was a violation of the statute and an attempt to mislead the public. 3d. That the plaintiff is carrying on his business in violation of the laws of this State in respect to the coloring of the oleomargarine manufactured by him. 4th. That he is violating the United States statute in hav- ing the word "patent, Sept.," upon the goods sold by him, when he has no patent. 5th. That the plaintiff could not acquire a trade-mark in the words "Alderney Manufacturing Company." We will very briefly consider these propositions in their reverse order. It is to be observed that the plaintiff in this action does not claim any right to the exclusive use of the words " Manufacturing Co." as any part of his trade-mark, but limits his claim to the exclusive use of the word Alderney in connection with oleomar- garine. The papers in this case seem to show that the plaintiff has used this word in connection with the oleomargarine manufactured by him; that he originated; that he first adopted it, and" that it forms an integral part of the lable stamped on all goods manufac- tured by him, different grades being marked by additional symbols. In respect to oleomargarine, the use of the word "Alderney" is entirely arbitrary, and in no respect descriptive of the article, and the case of Hier agt. Abrahams (82 N. Y., 519), sustains as a trade-mark the application of such arbitrary words, even if used in connection with others. The plaintiff does not make a trade- mark of his name, but he has adopted a word as part of his trade-mark and the defendants, by being incorporated under a 702 COURT OF COMMON PLEAS, NEW YORK. Lauferty vs. Wheeler, et al. 107 like name, claim the right to deprive him of the exclusive use of that word in the new connection in which he had placed it. The fourth ground is that the plaintiff is violating the United States statute in having the words "patent, Sept." upon the goods sold by him. It is to be observed that it is not claimed that the ■use of the word "patent" has been resorted to by the plaintiff until very recently. It appears that application had been made on the 9th of June, 1882, for a patent for an improvement in process of manufacturing of oleomargarine butter, by Henry Lau- ferty, and that on the thirty-first of August notice was received from the United States Patent Office that the application had been examined and allowed, and that under this process the plaintiff has been manufacturing. It further appears that Mr. Lauferty was informed that his letters patent would be forwarded to him in September. This motion being heard in that month, and there is no evidence that prior to that time the word "patent" was used. Although perhaps not strictly entitled to use the word until the actual receipt of the letters patent, the case differs from that of the Consolidated Fruit Jar Company agt. Berrell, in that in the latter case there was not the slightest pretence that there was any patent applied for or about to be issued. The third objection does not seem to be well taken. I cannot see but that .the application for a patent being allowed, and the right of a patent complete, the mere formality of delivering a patent only remaining to be performed, brings the manufacturer certainly within the spirit of the exception contained in the laws of 1882. 1. The second ground for a dissolution of the injunction is that the use of the words Alderney Manufacturing Company is a viola- tion of the statute. I have read the statute in vain to find any prohibition therein contained which is applicable to the case at bar. The statute of 1833 merely prohibits the use of the name of a partner not interested in the business, and the use of the words "and company" or "&Co." unless representing an actual partner. The plaintiff in this action does not use the name of a partner not interested in the business, neither does he use the words " and company " " or & Co." in any form. Therefore there does not seem to be any violation whatever of any statute. The OCTOBER, 1882. 703 107 Lauf erty vs. Wheeler, et al. case of Crawford agt. Collins, (45 Barb., 270) expressly holds that the giving to a firm the name of a company is no viola- tion of law, and that the parties to a co-partnership may give it just such names as they please (except, of course, as prohibited by statute). The case of McNair, et al. agt. Cleare, et al., (1 Phil., 155), differs materially from the case at law. In the case of Galaxy Publishing Company, upon the billheads, envelopes, letter-heads, &c, appeared the name of a president and secretary, the Court holding that this was an attempt to hold out to the world that the firm was a corporation, and that this was a fraud. But even if the case was entirely in point, I should follow the law as laid down by our Courts. I cannot see possibly how any fraud can be perpetrated upon the public by parties engaged in business assuming as a firm-name words which might be equally applicable to a corporation. The creditors of a firm cannot suffer if instead of dealing with a corporation they are dealing with a firm, because if they were dealing with a corporation they can reach only the property of the corporation, but if they are dealing with a firm they can reach not only the property of a firm but also the indi- vidual property of its members. The first objection leems to have been already discussed. I think that it clearly appeared that the plaintiff has used the word " Alderney," together with others, in connection with his business for a considerable period of time prior to the organization of the defendant. Perhaps the undertaking upon the injunction should b,e in- creased in amount. 2. An injunction will be issued restraining the defendants from , the use in any way of the word "Alderney " in connection with the manufacture and sale of oleomargarine, upon the plaintiffs giving an" undertaking in $2,500. 704 SUPREME COURT, STATE OF NEW JERSEY. Mrs. G. B. Miller & Co. Tobacco Manu'y vs. Commerce. 1 08 108 SUPREME COURT, STATE OF NEW JERSEY. In Equity. The Mrs. G. B. Miller & Co. Tobacco Manu- factory" vs. Matthias Commerce. Decided November, 1882. Reported 45 N. J. L., 18. •'The Mrs. G. B. Miller & Co. Best Smoking .Tobaceo" Case. A declaration charging defendants with fraudulently and falsely selling goods of his own fabrication, as the manufacture of the plaintiff, by which the plaintiff was deprived of sales in the market, sets forth an actionable injury. On Demurrer to Declaration. The following is the declaration filed by the plaintiff : The Mrs. G. B. Miller & Co. Tobacco Manufactory complaint of Matthias Commerce, being in the custody of the sheriff of the County of Hudson, of a plea of trespass on the case. NOVEMBER, 1882. 705 X 08 Mrs. G. B. Miller & Co. Tobacco Manu'y vs. Commerce. For that whereas they, the said plaintiffs, for divers years before, and at the time of the committing of the grievances hereinafter next mentioned, did manufacture, vend and sell, and still do con- tinue to manufacture, vend and sell for profit, divers large quanti- ties of a certain smoking tobacco, called "Mrs. G. B. Miller & Co. Best Smoking Tobacco," which said smoking tobacco the said plaintiffs were then and still are, used and accustomed to manufacture, put up, and sell in packages respectively wrapped up in blue paper wrappers, having the following, amongst other words, printed thereon, that is to say, "Mrs. G. B. Miller & Co. Best Smoking Tobacco, 97 Columbia Street, New York," to wit : at Hoboken, to wit : at Jersey City, in the County of Hudson. And whereas the said plaintiffs, before and at the time of com- mitting the grievances hereinafter next mentioned, had gained and acquired great fame and reputation with the public on ac- count of the excellent quality of the said smoking tobacco so by them manufactured, vended and sold, and continued to be manu- factured, vended and sold as aforesaid whereby the said plaintiff, daily acquired and obtained great gain and profit, to wit : at, &c, aforesaid. Yet the said Matthias Commerce, well knowing, the premises, but wickedly and wrongfully, subtly and unjustly intending to injure the said plaintiffs in their said sale of the smoking tobacco and to deprive them of the great gain and profits which they, the said plaintiffs, would* otherwise have acquired by manufacturing, vending and selling the said smoking tobacco as aforesaid, to wit : on the eighteenth day of January, one thousand eight hundred and seventy-eight, and on divers other days and times between that day and the day of the com- mencement of this suit, to wit : at Jersey City in the County of Hudson, aforesaid, did wrongfully, knowingly, injuriously, deceit- fully and fraudulently, against the will and without the license or consent of the said plaintiffs, manufacture and make and cause to be manufactured and made, divers, to wit : ten thousand packages of smoking tobacco of the size, shape, color and general appear- ance of and in imitation of the said smoking tobacco manufac- tured and sold by the said plaintiffs as aforesaid, and did wrap 4S yo6 SUPREME COURT, STATE OF NEW JERSEY. Mrs. G. B. Miller & Co. Tobacco Mami'y vs. Commerce. X 08 and cause to be wrapped up the said last-mentioned packages of smoking tobacco in blue paper, having the following amongst other words printed thereon, that is to say: "The Mrs. C. B. Miiller & Co. Best Smoking Tobacco, 437^ Grove Street, Jersey City," in order to denote that such smoking tobacco was the genu- ine Mrs. G. B. Miller & Co. Best Smoking Tobacco, manufac- tured, vended and sold by the said plaintiffs, and did knowingly, wrongfully, injuriously, deceitfully and fraudulently vend and sell, for his own lucre and -gain, the said last-mentioned packages of smoking tobacco, by the name and description of the Mrs. G. B. Miller & Co. Best Smoking Tobacco, which had been manufac- tured, vended and sold by the said plaintiffs, whereas in truth and irf fact the said plaintiffs had never been the manufacturers, venders or sellers thereof, or any part thereof. By reason of which said premises, the said plaintiffs have been fraudulently, deceitfully, wrongfully and injuriously hindered and prevented by the said Matthias Commerce from selling, vending and disposing of divers large quantities, to wit, ten thousand packages of the said Mrs. G. B. Miller & Co. Best Smoking To- bacco, which the said plaintiffs would otherwise have sold, vended and disposed of, and the said plaintiffs have also been deprived of divers great gains and profits, which would otherwise have ac- crued to them, the said plaintiffs, from the sale thereof, and have been otherwise greatly injured in the selling and vending of the said Mrs. G. B. Miller & Co. Best Smoking Tobacco, to wit : at, &c, aforesaid to the damage of the said Mrs. G. B. Miller & Co. Tobacco Manufactory of five thousand dollars, and therefore they bring their suit, &x. Argued at November Term, 1882, before Beasley, Chief Jus- tice, and Justices Knapp and Dixon. E. D. Deacon, for the demurrer. S. A. Bess on, contra. Knapp, J., delivered the opinion of the Court. The foregoing declaration, to which the defendant has filed a demurrer, avers that the plaintiffs prepared, vended and sold, for NOVEMBER, 1 882. JOJ 1 08 Mrs. G. B. Miller & Co. Tobacco Manu'y vs. Commerce. profit, a certain kind of smoking tobacco called and well-known to the public as "Mrs. G. B. Miller & Co. Best Smoking To- bacco," which they were accustomed to sell in packages wrapped in blue paper, with the words "Mrs. G. B. Miller & Co. Best Smoking Tobacco, 97 Columbia Street, New York," printed thereon ; and that the defendant, intending to injure them in their sales and deprive them of their profits, deceitfully and fraud- ulently prepared and made smoking tobacco in packages of the same size, shape, color and appearance, with the words "The Mrs. C. B. Miiller & Co. Best Smoking Tobacco, 437^ Grove Street, Jersey City," in imitation of the goods of the plaintiffs, and fraudulently represented and sold the same as the article manufactured, vended and sold by the plaintiffs, when, in truth, the plaintiffs had not manufactured the same; by reason of which the plaintiffs were deprived of the sale of their goods and the con- sequent profits. The question is whether this state of facts presents an action- able injury. It is not called for in this case to follow the demurrant in his •discussion of the rules specially applicable to suits for the appro- priation of others' trade-marks. The case here presents a griev- ance analogous to that in some, but not all its features. Trade-marks are protected as such, as a species of property; not that one. can have an exclusive right in the signs, words or sym- bols used per se ; because one may stamp his cloth with the same • mark or sign that another has acquired the exclusive right to use on his manufacture of iron. But when one has caused a particu- lar 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 right in such mark in connection with that species of manufacture, which it protects by action or injunction against any unlicensed use of it by others. Intentional fraud in such use is not essential to entitle the owner to protection. The injury is complete if the same label or mark is used which recommends the article to the public by the established reputation of another. Coffeen v. Bunton, 4 McLean, 516; Dale v. Smiths on, 12 Abb. 708 SUPREME COURT, STATE OF NEW JERSEY. Mrs. G. B. Miller & Co. Tobacco Manu'y vs. Commerce. 1 OS Pr., 257; Ainsworth v. Walmsly, L. R., 1 Eq., 518. To vio- late such right is a legal fraud. But there is another type of injury to the same substantial right, distinguished mainly. by the essential feature presented, of actual fraudulent intent in its perpetration. This wrong the Courts have ever been equally swift to redress. It is said that the markets are free and open to make -and sell any lawful commodity which one has sufficient skill and energy to fabricate and vend, unless there exist in some other the protection which the law of patents affords, and this is doubtless true; but every one should be and is required to depend for his success upon his own character and fame, and the quality of his own productions. He may not sail under false colors and sell his productions for those of others. To do so is to impose upon the public, and specially to defraud him whose right place in the market is filled with spurious goods. That is not fair competition; it is closer akin to piracy. The inventor of an unpatented article has no exclusive right to make and vend it; but if others make and sell it, they have no right to put it upon the public as the manufacture of the inventor, nor to adopt his label or trade -mark, nor one so like his as to lead the public to suppose thatthe article to which it is affixed is the man- ufacture of the inventor. Davis v. Kendall, 2 R. I., 366. The legal wrong is in fraudulently supplanting the maker of the genuine article by a false one sold as his own; whether it be by the adoption of his mark or by any deceit and false represen- tation likely to deceive the public and accomplish that end, is material only in form. The injurious result is the same if the wrong be committed in either way. The cases differ only in their requirements of proof. In Wotherspoon v. Currie, 5 L. R., (H. L. Cos.), 508, it is said by Lord Chelmsford that where a trade-mark is not actually copied, fraud is a necessary element in the consideration of every question of this description — that is, that the party accused must have done the act complained of with the fraudulent design of passing off his own goods as those of the party entitled to the ex- clusive use of the trade-mark. NOVEMBER, 1 882. 709 X 08 Mrs. G. B. Miller & Co. Tobacco Marm'y vs. Commerce. Crawshay v. Thompson, 4 M. 6° G. , 357, is a case in pointed illustration of the legal rule in frauds of this character. The declaration there alleged that the defendants fraudulently sold certain bars of iron as and for, and under the false color and pre- tence that the same were bars of iron of the genuine manufacture of the plaintiff. The right of recovery on proof of the averment was not questioned. The earlier English cases bearing on the Subject are there referred to and need no citation here. The declaration here does not count upon the unlawful adop- tion by defendant of plaintiff's trade-mark, but charges that the defendant sold his goods under the representation and pretence that they were the genuine goods manufactured by the plaintiff, which representations and pretences were false and fraudulent: whereby they were to an extent injurious to them — shut out of the market: and that as devices in aid of their fraud, they fabricated deceptive imitations of the plaintiff's labels and packing. The cases upon this subject all hold this to be an actionable injury. The underlying principle is that one who, by making representa- tations, knowingly false, causing injury to another, is liable for the consequences of his falsehood. The following are cases bearing on upon this subject: Sykes v. Sykes, 3 B. 6° C, 541; Archbold v. Sweet, 5 C. & P., 219; Blofeld v. Payne, 4 B. 6" Ad., 410; Thompson v. Winchester , 19 Pick., 214; Lemoine v. Santon, 2 £. D. Smith, 343; Marsh, et at. v. Billings, et at., 7 Cush., 322; Holmes v. Holmes, et al., 37 Conn., 278; Morison v. Talman, 2 M. &> G., 385. In the case last cited the declaration used was in form and in all its essential averments like the one before us, and was brought under criticism on motion in arrest of judgment. The point principally made against it was that action would not lie for such fraud, but on the sufficiency of the averment of a false repre- sentation by the defendant that the goods sold by him had been prepared by the plaintiff. It was held sufficient by all the Judges, and judgment passed for the plaintiff. A precedent is found for this declaration in Sykes v. Sykes, above referred to. Also in 2 Chitty PL, 697, 698. 7IO SUPREME COURT, STATE OF NEW JERSEY. Mrs. G. B. Miller & Co. Tobacco Manu'y vs. Commerce. 1 08 The case of Marsh, et al. v. Bilings, et al. , supra, was an action grounded upon the same character of injury as that counted upon by the plaintiff in this suit. The defendant there was charged with holding himself out as, and falsely representing himself to be, authorized by the proprietor of a large hotel to convey guests between the hotel and the principal railway station, and using upon his coaches the signs and devices with which the plaintiff marked his carriages, thus obtaining passengers in fraud of the plaintiff, who, by agreement with the proprietor of the hotel, had the, exclusive patronage of the house and the sole right to place the hotel name upon his vehicles. The same principle was there applied, and the right of action maintained— not on the ground that the defendant might not rightfully carry passengers between the hotel and railway, nor on the ground that he might not put the name of the hotel on his coaches as indicating where he would carry persons to whom he might honestly engage his services, but on the ground that he could not fraudulently take away the plain- tiff's passengers by passing himself off upon the public as possessed of patronage and privilege which the plaintiff held exclusively, or designedly use in aid of his fraud the signs which the plaintiff had rightfully adopted. Indeed, the cases are in entire harmony in maintaining the prin- ciples upon which the plaintiff's action proceeds. The demurrer should be overruled, with costs. NOVEMBER, 1 882. 71 1 109 Humphreys' Specific Homeop. Medicine Co. vs. Wenz. 109 CIRCUIT COURT UNITED STATES, DISTRICT OF NEW JERSEY. In Equity. Humphreys' Specific Homeopathic Medicine Co. vs. Wenz. Decided 24 November, 1882. Reported 14 Federal Rep., 250. Numbers of Homeopathic Specifics. 1. Trade-Mark — Numbers. — Numbers constitute a lawful trade-mark when they indicate origin or proprietorship, and are used in combina- tion with words and other numerals. 2. Same— Words. — The words " homeopathic specifics," standing alone, cannot be appropriated as a trade-mark; but can be when used in con- nection with serial numbers. 3. Number alone may be Employed. — The complainant was the first to adopt such a. method of putting up homeopathic medicines, and by reason thereof certain specific remedies have come to be known in the trade by numbers alone. 4. Same— Violation by Imitation of.— The use of another name, such as " Reeves' improved," in place of " Humphreys'," before the words 712 U. S. C. C. DISTRICT OF NEW JERSEY. Humphreys' Specific Homeop. Medicine Co. vs. Wenz. 109 " homeopathic specifics," does not take the defendant out of the class of imitators; such prefix does not meet the difficulty, as the remedies are purchased by the public by the numbers alone, and the defendant has made use of such numbers. 5. Resemblance — Intent to Deceive and Mislead. — If the resem- blance is such as not only to plainly suggest an intention to deceive, but is calculated to mislead the public, who are purchasers of the article, and thus to injure the sale of the goods of the proprietor of the original device, the injured party is entitled to redress. A. J. Todd, and A. Q. Keasbey, for complainant. /.• Frank Fort, for defendant. Nixon, D. J.: The bill of complaint filed in the above case alleges that the complainant is a corporation, organized under the laws of the State of New York, by the name and title of "The Humphreys' Specific Homeopathic Medicine Company;" that for upwards of 20 years past it has manufactured and sold a series of 35 homeo- pathic specific medicines or remedies, which have been put up in bottles containing thereon labels and wrappers having printed thereon the words "homeopathic specific," in connection with numbers in a series, and particular reference to diseases or infir- mities for which the medicines in the bottles are intended as spe- cifics; that the complainant's designation of said series of homeo- pathic specific medicines is by the words "homeopathic specific," and by numbers in a series as follows: No. 1, fever, congestion, inflammations; No. 2, worm fever or worm disease; No. 3, colic, crying, and wakefulness of infants; No. 4, diarrhoea of children and adults; No. 5, dysentery, gripings, bilious colic; No. 6, cholera, cholera morbus, and vomiting; No. 7, coughs, colds, hoarseness, bronchitis; No. 8, toothache, face-ache, neuralgia; No. 9, headache, sick headache, vertigo; No. 10, dyspepsia, bil- iousness, costiveness; and so on, upwards, in the same serial order, to 35 ; that by reason of the use of numbers in serial order, in connection with the words "homeopathic specific," the books and pamphlets of the complainant, descriptive of its homeopathic specifics, and the directions therein contained relating to their use, NOVEMBER, 1882. 713 109 Humphreys' Specific Homeop. Medicine Co. vs. Wenz. could be referred to by the defendant in the sale of his "homeo- pathic specifics," and such books could be used with the defend- ant's medicines to a large extent in the treatment of diseases, with the serial order of specifics put up and sold by him, equally as well as with the serial order of specifics put up and sold by the complainant. The bill further claims that the complainant was the first to use specifics in homeopathy, and the first to adopt the < < homeopathic specifics," and to use in connection with these words numbers to designate the medicines and the diseases for which such medicines are intended as specific; that such adoption is not descriptive, but denotes origin and ownership; that the use of said numbers in connection with these words is wholly arbitrary, as symbols to denote origin and ownership; that such use has become so acknow- ledged and acquiesced in by the public that the specifics are now known by numbers only, and are ordered and called as such, in- stead of by the names of the particular complaints or diseases or remedies therefor; and that its medicines thus put up in bottles labeled as "homeopathic specifics," and numbered in series, have acquired a high reputation throughout the United States and have commanded and still command an extensive sale and have become a great source of profit to the complainant. The charge is that the defendant has infringed the complainant's trade-mark by taking bottles of about the size of complainant's, putting labels thereon, and printing in conspicuous letters the words "homeopathic specifics," and numbering the series from 1 to 40, as the complainant's are numbered from 1 to 35; that in regard to the most usual remedies for the most common complaints or diseases he has adopted the same numbers for the same diseases, that complainant has used for many years; and that the effect of such imitations is to deceive the public by making purchasers be- lieve, when buying the specific of the defendant, that they are obtaining the complainant's remedies. An application is now made for an injunction to restrain the defendant, pendente lite, from the continued use of such labels in connection with numbers. y\\ U. S. C. C. DISTRICT OF NEW JERSEY. Humphreys' Specific Homeop. Medicine Co. vs. Wenz. 1 09 The case presents an interesting question. A trade-mark is any- proper mark by which goods and wares of the owner or manufac- turer are known in the trade. Courts of Equity have two objects in view in granting injunctions against their imitation: (i) To secure to the individual adopting one the profits of his skill, in- dustry, and enterprise; (2) to protect the public against fraud. There are limitations upon the devices or symbols that may be adopted. To be lawful they must have reference to origin or ownership, and not to quality. They must not be of such a char- acter that their use will give a monopoly in the sale of any goods other than those produced by the person who invokes the protec- tion of the Court? 1. Mere numbers are never the objects of a trade-mark, where they are employed to indicate quality, but they may be where they may stand for origin or proprietorship, in combination with words and other numerals. These principles are elementary, and have been stated in order to test the case by them. 2. It cannot be successfully maintained that the words "homeo- pathic specifics," standing alone, can be appropriated by any one as a trade-mark; they are too broad, and if allowed would give the taker a monopoly in a school of medicine which Hahnemann, its founder, threw open to all disciples. Canal Co. v. Clark, 13 Wall., 311. A "specific" in medicine, says Dunglison, is a substance to which is attributed the property of removing directly one disease rather than any other. A "homeopathic specific," therefore, is a remedy pertaining to homeopathy which exerts a special action in the prevention or cure of a disease. The name can no more be appropriated, and is no more the property of Humphreys, than any other practitioner of the homeopathic system of therapeutics. But I do not understand that the complainant's solicitor claims this. What is contended for is the right to use these words in connection with serial numbers. 3. Humphreys was the first to adopt such a method of putting up homeopathic medicines, and the proof is that certain remedies for particular complaints or diseases have come to be known in the trade by the number which he adopted to designate them; NOVEMBER, 1882. 715 1 09 Humphreys' Specific Homeop. Medicine Co. vs. Wenz. that the defendant has in several instances applied the same num- bers to the same remedy; and that such an imitation is calculated to impose upon unwary purchasers, who are in the habit of buy- ing Humphreys' specifics by the numbers with which he indicates them. 4. The defendant insists that the use of the words "Reeves' Improved" before "homeopathic specifics," takes him out of the class of imitators or . infringers, as they sufficiently reveal to pur- chasers that they are not getting Humphreys' remedies; but that prefix to "specifics" does not meet the difficulty, which is that some of these remedies are purchased by the public by numbers, and that he has copied the complainant's numbers for the same specifics. Besides, it is now well settled that to entitle the pro- prietor of a trade-mark to relief, or to establish a case of infringe- ment, it is not necessary to show that the imitation is exact in all particulars. 5. If the resemblance is such as not only to plainly suggest an intention to deceive, but is calculated to mislead the public, who are purchasers of the article, and thus to injure the sale of the goods of the proprietor of the original device, the injured party is entitled to redress. Walton v. Crowley, 3 Blatchf., 440. It is difficult to believe that there was no intention to deceive in this case, although the defendant swears that adopting the same numbers which Humphreys has used was purely accidental. He states in his affidavit < < that the names of diseases claimed to be cured by the remedies of the defendant are different by the num- bers from those of the complainant, and that whatever similarity there may be in diseases and numbers arises from accident and not intention. Humphreys' specifics for fevers, diarrhoea, colds, dyspepsia, rheumatism, whooping-cough, gravel, nervous debility, urinary difficulties, painful menses, and epilepsy, are respectively num- bered, 1, 4, 7, 10, 15, 20, 27, 28, 30, 31, and 33. The defend- ant has printed his list with the same diseases or complaints desig- nated by precisely the same numbers. If this was an accident and not intention it is one of the most remarkable coincidences that ever occurred, and is a serious tax upon human credulity. 716 U. S. C. C. DISTRICT OF NEW JERSEY. Humphreys' Specific Homeop. Medicine Co. vs. Wenz. 1 09 A preliminary injunction must issue against the defendant, re- straining him from using the above numbers, in connection with the remedies for the above diseases or complaints, until the fur- ther order of the Court. See Burton v. Stratton, 12 Fed. Rep., 696, and note, 704; Shaw Stocking Co. v. Mack, Id., 707, and note 715; Ginterv. Kinney Tobacco Co., Id., 782; Wm. Rogers Manuf'g Co. v. Rogers Manuf'g Co., n Fed. Rep., 495; Singer Manuf g Co. v. Riley, Id., 706; Hostetter v. Adams, 10 Fed. Rep., 838. DECEMBER, l8«2. 717 llO Low, et a!, vs. Hart. HO COURT OF APPEALS, STATE OF NEW YORK. In Equity. Alfred Low, et al., Respondents, vs. Francis X. Hart, Appellant. Decided 12 December, 1-882. Reported 90 N. Y., 457. " Brown Windsor Soap" Case. 1. Where, in an action to restrain the infringement of a trade-mark, it is shown that defendant has in his store, and offers for sale, a spurious article, with an imitation ot plaintiffs' trade-mark thereon, although but a single sale is proved, it is sufficient to sustain an injunction against a continuance of the wrong. 2. An action for such injunction will not be defeated solely on the ground that on the day it was brought defendant happened not to have any of the article on hand. 3. Declarations of the clerk, made at the time of the sale and in connec- tion therewith, are competent evidence. 4. Costs in such an action are in the discretion of the Court. 718 COURT OF APPEALS, STATE OF NEW YORK. Low, et al. vs. Hart. 1 1 O Appeal from judgment of the General Term of the Supreme Court, in the First Judicial Department; entered upon an order made January 28, 1881, which affirmed a judgment in favor of plaintiffs, entered upon a decision of the Court on trial at Special Term. The nature of the action and the material facts are stated in the opinion. Charles H. Smith, for appellant. It was error to receive in evidence the declaration of the defend- ant's clerk, made on the sale of the soap, for no clerk is an agent to admit that his employer is committing or about to perpetrate a trespass or a tort. (Clark v. Met. Bk., 3 Duer, 241; Terry v. Fargo, 10 Johns., 114; Brisbane v. Adams, 3 N. Y., 129). The complaint for injunction should have separately alleged the use of the label was with wrongful intent. (Hosteller' s Bitters Case, Daily Reg., Feb. 21, 1882). To sell an article in imitation of another's is not actionable in the State Court, for injunction. (Comstock v. White, 18 How., 421; Southern v. How, Popham, 144; Taylor v. Carpenter, 2 W. & M., 1; Hart v. Mayor of Albany, 9 Wend., 571; Jerome v. Ross, 7 Johns. Ch., 315). The plaintiffs' remedy is 'not this bill in equity for injunction, but at law for damages.' (Coulter v. Murray, 4 Daly, 506; Hudson Co. v. N. Y. & E. R. R. Co., 9 Paige, 323; Marshal v. Peters, 12 How., 218; People, ex rel. Floyd v. Conklin, 5 Hun, 452; Sav- age v. Allen, S4iV. Y., 463; Code, sees. 603-4; Spooner v. Mc- Cornell, McLean, 388). The accidental sale of a package of three cakes of spurious soap on one occasion is not evidence of a habit or intention of making sale of spurious soap time after time for five years. (Sauder v. Hoffman, 62 N. Y., 248). One sale, four months before this suit, to plaintiffs' agent, who knew what he was buying and was not deceived, does not authorize the wholesale inference that the defendant was and is selling the soap and is amenable to injunction. (Mason v. Lord, 40 IV. Y, 484; Moetv. Canston, 10 L. T. (N. S.~), 395). H. G. Batcheller, for respondents. The general rule, in equity, is to allow costs to the prevailing party. (Hovey v. Stevens, 3 W. & M. \TJ. S.~\ 17, 18). The DECEMBER, 1882. 719 llO Low, et at. vs. Hart. right to an injunction usually carries with it the right to costs. (Moet v. Canston, 10 L. T. \_J\F. S.~\, 391; S. C, 33 Beav., 578; Sevres v. C? Sullivan, 1 Month. Law Bui., 43; Burgess v. Hotlcy, 26 Beav., 249; Burgess v. Hill, 25 Id., 244). It was of no con- sequence whether witness 0' Sullivan was employed by plaintiffs or whether he was deceived. The question to be decided was, whether the bogus label "D" was calculated to deceive the incau- tious and unwary. It was immaterial when plaintiffs first notified defendant of the existence of the bogus label and imitation of their soap, or whether he was notified at all. Ignorance is no excuse. {Coleman v. Crump, 70 N. Y., 573). Rapallo, J.: This action was brought to restrain the infringement by the de- fendants of the plaintiffs' trade-mark. It was admitted by the pleadings that the plaintiffs were the manufacturers, in England, of an article of soap, and the pro- prietors of a trade-mark, under which they sold it, and which con- sisted of the name of "Low's Highly Perfumed Brown Windsor Soap," and a wrapper illuminated with colors and type. The complaint further alleged that' the defendant, during five years preceding the commencement of the action, wrongfully offered for sale in the City of New York and elsewhere, an article in imita- tion of plaintiffs' article, put up in similar packages, with precisely similar labels; that the imitation was calculated to, and did de- ' ceive the public, and the plaintiffs sustained damage thereby. These latter allegations were denied: and the defendant set up, in his answer, that the plaintiffs' label was not within the terms of the Act of Congress concerning trade-marks. {U. S. Rev. Stat., sees. 4937-4947), and was not a trade-mark within the limits of the United States. 1 . On the trial the plaintiffs proved a single sale of the spurious article at defendant's store, by defendant's clerk in charge thereof, on the 19th of July, 1878. The sale was made to a detective in the employ of plaintiffs. The detective testified that he asked the clerk whether he had any of Low's Brown Windsor Soap, and he said he had the article. The defendant's counsel objected to this 720 COURT OF APPEALS, STATE OF NEW YORK. Low, et al. vs. Hart. 1 1 O evidence on the ground that the defendaut was not present, but the Court overruled the objection, and exception was taken. The witness then testified that the clerk said the article was genuine, and he could give witness any complement of it he wanted. Wit- ness then produced the package, and marked it for identification. That he was familiar with the genuine article and the imitation of it, and that the article he purchased was an imitation, and had upon it the false label attached to the complaint, and which was proved by plaintiffs' agent to be an imitation of plaintiffs' label. 2. This action was commenced on the 5th of October, 1878, and the Court found as a fact that at that time the defendant did not have on hand for sale, or otherwise, any of the imitation soap or labels. The testimony of the defendant shows that his dealings in the article were very trifling, and he denied knowledge that the article sold by him was not genuine. It was proved, however, that the difference in price between the genuine article and the imitation was very great, but the defendant, although he recollected pur- chasing the soap from various parties, failed to recollect any of the prices paid. No damages were asked for, and the Court awarded a perpetual injunction, with costs. The imposition of these costs is the prin- cipal subject of the appeal, and the defendant contends that the evidence was not sufficient to authorize the awarding of the injunc- tion. 1. Although the proof does not establish an infringement by the defendant to any great extent, yet we think that where it is shown that a dealer has the imitated article in his store, and offers it for sale as genuine, even though but a single sale is proved, that is sufficient to sustain an injunction against a continuance of the wrong, and that an action for such injunction will not be defeated solely on the ground that on the day it is brought, the dealer hap- pens not to have any of the article on hand. 3. The declarations of the clerk in charge at the time of the sale, made in connection therewith, were we think competent. It was his business to sell, and offer for sale, the merchandise in the store, and what he said and did in these respects must be taken to DECEMBER, l882. 72I X IO Low, et a/, vs. Hart. have been authorized by his employer. Though the case is com- paratively a slight one, we think it is sufficient to sustain the judg- ment for an injunction. As to the question of costs, these were in the discretion of the Court. It is apparent, from the opinion of the Court, that the consideration which influenced it in awarding costs, was that the defendant, though conceding the proprietorship of the plaintiffs, contested their right to protect their trade-mark in this country, on the ground that they had not brought them- selves within the provisions of the Act of Congress (a position en- tirely untenable), and thus put the plaintiffs to unnecessary litiga- tion and expense. 4. The judgment should be affirmed, with costs. All concur. Judgment affirmed. 46 722 UNITED STATES PATENT OFFICE. Ex Parte Ames. 1 1 X 111 IN THE UNITED STATES PATENT OFFICE. Ex Parte Ames. Decided 19 December, 1882. Reported 23 O. G., 344. "Albany Beef Case. TRADE-MARK— " ALBANY BEEF." The fact that the applicant has devised for the first time a practicable method of canning sturgeon would not entitle him to the exclusive use of the words " Albany Beef," as a trade-mark for such canned stur- geon, it appearing that such words have gone into use as a name for sturgeon. Trade-Mark. — Canned Sturgeon. Appeal from the Primary Examiner. Application filed November 1, 1882. Mr. F. V. Briescn, for the appellant. DECEMBER,' 1882. 723 1X1 Ex Parte Ames. Marble, Commissioner. Appeal is taken from the decision of the Examiner refusing to register the words "Albany Beef" as a trade-mark for canned sturgeon. In his letters respecting the application the Examiner states, on information, that these words have long been in use ' in Albany and its vicinity to designate sturgeon, a food fish which is very common in that market. The applicant, without denying the statements of the Examiner, ■states that he seeks to register these words as a trade-mark solely for use upon canned or preserved sturgeon. He claims that he has discovered a method of preserving and canning sturgeon for which he has a pending application in this office, and that he is the first and only person who has succeeded in preserving sturgeon, and is therefore entitled to the exclusive use of the words "Albany Beef ' upon the commodity invented by him. The appli- cant relies upon the case of Societe la Anonyme, et al. v. Baxter, et al., (14 0. G., 679). There does not seem to have been any question in that case as to the validity of the trade-mark. The decision, in fact, does not state what the trade-mark was. The only question seems to have been whether the mark was applied by the parties to the same class of goods. The mark was applied by the plaintiffs to dry white oxide of zinc, while the defendants applied the mark to that article when ground in oil, and the deci- sion was that the defendants were entitled to use the mark upon the goods manufactured by them, notwithstanding they contained as an ingredient an article made by the plaintiffs. The Court said : It is true that the oxide is intended to be ground with oil for a paint. So flour is intended to be made into bread. But if a baker should falsely stamp his bread with the mark of a particular "brand of flour, the maker of such brand, if having a trade-mark therefor, could not claim that the baker had violated his trade- mark, and so of any other raw material which enters as an ingre- dient into a compound or article of manufacture. The question in the present case is not whether the sturgeon as prepared by the applicant differs essentially or in its ingredients from fresh sturgeon as offered in the markets, but whether the descriptive or the proper name of one of these commodities can be 724 UNITED STATES PATENT OFFICE. Ex Parte Ames. X 1 1 appropriated as a trade-mark for the other. Canned sturgeon is no less sturgeon, and if the words " Albany Beef" are recognized in the trade as a proper designation for sturgeon, the applicant has as little claim to the exclusive right to use the words ' ' Albany Beef" upon canned sturgeon as the word "sturgeon" itself. If by reason of his invention or discovery the applicant has been able to produce a new article of manufacture, and shall secure to him- self an exclusive monopoly in the manufacture and sale of the same by duly obtaining a patent therefor, he will of course be entitled to the use of such apt and descriptive terms as he shall see fit to adopt as the name of such article. Thus, if it shall appear that he was the first to can sturgeon, he might, perhaps, be entitled to the exclusive use of the words "canned sturgeon," since no one else would be entitled to make or offer for sale such goods while his patent was outstanding. It does not appear as a matter of fact, however, that the appellant has the exclusive right to manufacture and sell preserved sturgeon, no patent having been thus far issued for such invention. Even should such a patent be granted for preserved sturgeon as a new article of manufacture, the applicant would not be entitled to appropriate for his exclu- sive use as the name thereof the words " Albany Beef," which had already gained currency as the name of the fish itself without re- ference to its state or manner of treatment. Thus the inventor who was the first to preserve and can corn, beef, or other commo- dities would nob by that fact be entitled to the exclusive use of the proper names "corn" and "beef" as a trade-mark for those commodities. The very purpose of applicant's process, as I un- derstand, is to preserve and extend the market for sturgeon, and whatever may be the applicant's mode of treatment the fish itself, of course, forms the basis and largest ingredient of the article, and the word "sturgeon," or the equivalent phrase "Albany Beef," would be descriptive of that fact when applied to the goods. The applicant notes a formal objection to the reception of the Examiner's statement unsupported by affidavit as evidence of the facts in relation to the use of the words "Albany Beef." I do not understand the applicant to deny, however, the substantial DECEMBER, 1582. 725 111 Ex Parte Ames. truth of the Examiner's allegations. The argument of the brief proceeds upon the assumption that the Examiner is correct in his statement of the facts. In view of these facts, I see no reason for enforcing in this case the provisions of Rule 65 relating to the conduct of proceedings in the matter of applications for patents. That rule does not apply to applications for registration of trade- marks, and applicants have no rights thereunder. The decision of the Examiner is affirmed. 726 UNITED STATES PATENT OFFICE. Jacoby, et al. vs. Lopez, et al. 1 1 S 112 IN THE UNITED STATES PATENT OFFICE. S. Jacoby & Co. Lopez, Fernandez y Ca. Decided 21 December, ii Reported 23 O. G., 342. ' ' Puck ' ' Cigar Case. Trade-Mark — Evidence of Title — Registration under Law of 1874.— A registration of a trade-mark effected under the law of 1874, is evidence of the fact that the persons named therein at that time claimed the right, and were allowed to register the trade-mark, and depended for its legal effect upcn the provisions of the law under which it was effected. Same — Same. — When introduced in evidence in a contested case to support an applicant's right to a registration under the new law, it should be accompanied with evidence identifying the applicant as the person therein named, and showing that the right has been maintained by the continued use of the trade-mark, and that it has not in the meantime passed by assignment or by changes in the composition of the firm to other persons. Trade-Mark. — Cigars. JANUARY, 1883. 727 112 Jacoby, et al. vs. Lopez, et al. Appeal from the Examiner of Interferences. Application of S. Jacoby & Co., filed May 12, 1882. Trade- Mark of Lopez, Fernandez y Ca., registered March 21, 1882. Messrs. V. Briesen &f Beits, for Jacoby & Co. G. H. Wilcox, for Lopez, Fernandez y Ca. Marble, Commissioner. This is an interference instituted to try the question of right to the use of the word "Puck" as a trade -mark for cigars, ciga- rettes, &c, between Jacoby & Co., applicants for registration, and Lopez, Fernandez y Ca., registrants. The applications of the respective parties were pending at the same sime, and it was clearly an inadvertence under the rules that the certificate of registration issued to one of the parties without notice to the other, and the applicants should not be prejudiced thereby in this pro- ceeding. The case will be considered, therefore, as though both parties were still applicants for registration. Lopez, Fernandez y Ca. have submitted no evidence which is admissible under the rules of this office. They filed in the case, without notice to the other side, a certificate of an officer of the general government of the Island of Cuba, to the effect that the word "Puck" was registered at a certain office in Cuba, in 1876, in the name of Martin Bengoechea & Co., under the law then in force; that said trade-mark became the property of Lopez, Fer- nandez y Ca. on the 18th of July, 1881, and that said mark was registered on the 29th of May, 1882, in accordance with the new law, then in force, by said parties, Messrs. Lopez, Fernandez y Ca. The certificate cannot be considered as proper evidence in this case, for the reason that no notice was given to the other side of any intention to read and rely upon the same at the hear- ing and the office has, moreover, no means'of ascertaining the con- ditions upon which registration may be effected in the Island of Cuba, nor of the duties and powers of the officer purporting to make the certificate. The parties offering this certificate them- selves admit the inadmissibility of the same for the purpose of 728 UNITED STATES PATENT OFFICE. Jacoby, ct al. vs. Lopez, et al. 112 proving their rights in this case, and rely entirely upon their hav- ing been the first to file an application in this office. In behalf of Jacoby & Co. notice was duly given to the other side that they would at the hearing read and rely upon the trade- mark certificate No. 5,366, dated November 27, 1877, and the papers pertaining thereto now on file in this office. It is neces- sary, therefore, to consider what effect is to be given to this cer- tificate as evidence of title to the trade-mark in the present appli- cants. It may be observed, in the first place, that this certificate and the papers relating thereto stand as a solitary piece of evidence, unaccompanied by any testimony identifying the registrants therein named with the present applicants. While documentary evidence speaks for itself as to the facts contained therein, it is ordinarily introduced to the cognizance of the tribunal through human testimony. This record in the office, while evidence of the fact that certain proceedings were had under the laws then in force by certain applicants bearing the name of Jacoby & Co., furnishes no evidence that the present applicants, or other persons or firms bearing the same name, are the parties named in such record. The law does not presume identity of persons from an identity of names, but the fact must be established in every case affirmatively by proper evidence. Thus it has been repeatedly held in this office that a foreign patent granted to a person of the same name as the applicant, is not evidence of itself that a foreign patent has been granted to such applicant in a - contested proceed- ing. Aside from this technical defect, however, there is a more serious objection to this certificate when considered as evidence of the present right of the applicants to the trade-mark claimed by them. While public documents are entitled to an extraordinary degree of confidence, and while it is true that it is not necessary that they should be confirmed by the ordinary tests of truth, it is not true that the contents of such documents are admissible as evidence for every purpose. Their legal effect as evidence de- pends largely upon the provisions and purpose of the law in accordance with which they were called into existence. JANUARY, 1883. 729 113 Jacoby, et al. vs. Lopez, et al. It is to be remembered that the trade- mark law under which this registration was effected, has since been declared unconstitu- tional and void. All registrations, therefore, effected under the provisions of that law have lost their status as prima facie evi- dence of present ownership of the trade-mark therein named. That is the immediate result of vacating the certificate. Thus, if a patent were revoked or annulled, it would cease to import the existence of the conditions necessary to constitute the pat- entee the first and lawful inventor. The record made in the Patent Office in the course of applying for and obtaining the cer- tificate of the patent is evidence of the existence of what was supposed at the time to be the applicant's right, depending for its force and effect upon the nature of the right and the provisions of the law then in force. 7. This record, therefore, is evidence that Jacoby & Co. at that time claimed the right and were allowed to register a certain trade-mark under the provisions of the law then in force. The question now before the office is whether Jacoby & Co. have since maintained that right, sothat they have at the present time the exclusive right to the trade-mark in question, and are entitled to register the same under the provisions of the present law. Under the present law an applicant is only entitled to registration where it appears that he is the lawful owner of a legal trade-mark actually used in commerce with foreign nations or with Indian tribes. Under the former statute an applicant was entitled to register his mark, although it had never been in actual use, provided he announced his intention to use the same, and although it had never been used nor was intended to be used in commerce with foreign nations or with Indian tribes. Referring to the application upon which the certificate of 1877 was granted, I find that the applicants there stated that the "said trade -mark has just been adopted and its use just commenced." Accepting this statement as true, it might not be considered suffi- cient to show a legal title to the trade-mark at common law, such as would justify a registration under the present Act. It is well understood that the right to the exclusive use of a word or symbol, as a trade-mark at common law depends upon the fact that it is 730 UNITED STATES PATENT OFFICE. Jacoby, et at. vs. Lopez, et al. 112 actually used in commerce, and has become associated in the pub- lic mind with the origin and ownership of the goods to which it is attached. 2. Assuming, however, that the trade-mark was actually in use, and that the registrants 'had completed a legal title thereto, at the time of the said registration, there is still no evidence that this right has since been maintained by the continued use of the trade-mark, and that it has not in the meantime passed by assign- ment or by changes in the composition of the firm to other per- sons. It is not sufficient in the case of a trade-mark, as in the case of an invention, to show that it has once been recognized and used, but the right thereto can only be maintained by con- stant use of the same upon a particular class of goods. The owner of a trade- mark may forfeit or abandon his right by dis- continuing its use, and it may then fall into the public domain, or be appropriated by another manufacturer as his trade-mark. The evidence, therefore, afforded by this certificate is radically defective, in that it fails to show a present legal title to the trade- mark. The question whether, in a contest of priority, under the present law the parties can only be permitted to trace back their title to the time when they first began to use the trade-mark in commerce with foreign nations or Indian tribes, and whether, therefore, a trade-mark registration effected under the old law, which did not require that the trade-mark should have been used in commerce with foreign nations or with Indian tribes, is evi- dence of an applicant's right to register the mark under the present law, I do not now decide. In the absence of all other evidence, then, I think that the date of filing the respective ap- plications must be taken as the decisive fact. Lopez, Fernandez y Ca., having been the first to file their application, are hereby adjudged to have the prior right and title to the use of the trade- mark in controversy. The decision of the Examiner of Interferences is overruled. JANUARY, 1883. 73] 1 X S La Croix vs. May, et at. 113 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. La Croix vs. May, and others. Decided January, 1883. Reported 15 Federal Rep., 236. . Trade-Marks— Rights of Aliens— Property in, as affected by Acts of Congress.— The fact that one is an alien does not affect his right of property in a trade-mark; but that fact is a necessary allega- tion to establish the requisite diversity of citizenship to confer juris- diction upon a Federal Court. The Acts of Congress fortify the com- mon law right to a trade-mark by conferring a statutory title upon the owner, but "property in trade-marks does not derive its existence from an Act of Congress." ioo U. S., 82. By the express terms of section 10 of the present Act of Congress the common law right in trade-marks is preserved intact. Same— Demurrer. — Where the demurrer was to the whole bill, and the bill was in itself sufficient, aside from the allegations contained in it, upon which the demurrer was taken, the demurrer was overruled. £. W. Weiss, for complainant. 732 U. S. C. C. SOUTH. DIST. OF NEW YORK. La Croix vs. May, et al. 113 JBriesen 6° Betts, for defendants. Wallace, J.: i. The facts alleged in the complainant's bill entitle him to an injunction restraining defendants from the use. of his trade-mark, irrespective of the rights which he acquired by the registration of his trade-mark under the Act of Congress of March 3rd, 1881. Taylor v. Carpenter, 3 Story, 458 ; 2 Wood &° M., 1 ; Taylor v. Carpenter, n Paige, 296. The fact that complainant is an alien does not affect his right of property in a trade-mark; but that fact, as it establishes the requisite diversity of citizenship between the parties to confer jurisdiction upon this Court, is indispensable to the cause of action alleged. The Act of Congress fortifies, the common law right to a trade- mark by conferring a statutory title upon the owner ; but, as was said of a former Act, (See Trade-Mark Cases, 100 U. S., 82,) ,, property in trade-marks does not derive its existence from an Act of Congress." The present Act does not abridge or qualify the common law right, but, by the express term of section 10, preserves it intact. 2. The theory of the demurrer is that the conplainant's statu- tory title upon the allegations of the bill is invalid. It is not necessary to decide the questions raised, because, as the demurrer is to the whole bill, the bill is sufficient if all the allegations con- cerning a registration of the trade-mark were eliminated. Demurrer is overruled. See Burton v. Stratton, 12 Fed. Rep., 696, and note, 704; and Shaw Stocking Co. v. Mack, Id., 707, and note, 717. JANUARY, 1883. 733 114 Clemens vs. Belford, Clark & Co. 114= UNITED STATES. CIRCUIT COURT, NORTHERN DISTRICT OF ILLINOIS. In Equity. Clemens vs. Belford, Clark & Co. Decided 8 January, 1883. Reported 14 Federal Rep., 728. The "Mark Twain" Case. 1. Author and Writer — Right to use of Assumed Name. — An author or writer has no better or higher right in a nom de plume or assumed name, than he has in his baptismal name. 2. Same — Copyright the Sole Protection. — A person becoming an author can secure to himself the exclusive right to his productions only by a copyright under the laws of the United States; and if he publishes anything without so protecting it, it becomes public property, and any person may republish it, and state the name of the author in ' such form in the book as he may choose, either upon the title-page or otherwise, as to show who was the author. 3. Same — Protection of Unpublished Works. — An author has the right to restrain the publication of any of his literary work which he has never published or dedicated to the public. 734 U. S. C. C. NORTH. DIST. OF ILLINOIS. Clemens vs. Belford, Clark & Co. 114 4. Same — False Imputation of Authorship. — An author may restrain the publication of literary matter purporting to have been written by him, but which in fact he never did write; and this rule applies in favor of persons known to the public under an assumed name. 5. Same — Trade Name or Trade-Mark — Not a Substitute for Copy- right. — An author cannot acquire a right to the protection of his writings under an assumed name as a trade name or trade-mark, and no pseudonym, however ingenious, novel or quaint, can give one any more rights than he would have under his own name, or defeat the policy of the law that the publication of literary matter without protec- tion by copyright has dedicated such matter to the public. Thos. W. Clark, for complainant. Hutchinson 6° Partridge, for defendant. Blodgett, D. J.: The bill in this case states that complainant has, for about 20 years last past, been an author and writer by profession ; that he has been in the habit for said time of publishing articles, sketches, books, and other literary matters, composed by him for publication under the name, assumed by him to designate himself as the author and, writer of such sketches, articles, books, and other lite- rary matter, of "Mark Twain;" that the said designation of "Mark Twain" has been used by him during the last 20 years as riis nom de plume or trade-mark as an author; that his said writings, under the designation of "Mark Twain," have acquired great popularity, and met with a ready and continuous sale, and that no other person has been licensed or permitted by him to use said designation of "Mark Twain" as a nom de plume or designa- tion of authorship; that the exclusive right of selecting for publi- cation and of publishing in any collective form the sketches, arti- cles, or other writings written and originally published by him under the said name of " Mark Twain," so as to make a book or collection of durable form for publication, by right ought to be- long exclusively to him, and is of great value to him in his repu- tation, and a great security to the public as purchasers of the works purporting to have been written by complainant; that the said defendants have made, printed, put out, and sold, in great JANUARY, 1883. 735 114 Clemens vs. Belford, Clark & Co. quantities, a certain book — called upon its title page "Sketches by Mark Twain, now first published in complete form. Belford, Clark & Co., 1880" — containing about 369 pages, many or most of which, in one form or another, are substantially like sketches published prior to the year 1880 by complainant; and that said Belford, Clark & Co. had no authority, leave, or license from complainant, or derived from him, to make publication of the said book or any part thereof; that the defendants in their said book, so published by them, placed upon the page next succeed- ing the leaf whereon the title-page is printed, a preface in these words. "I have scattered through this volume a mass of matter which has never been in print before, (such as < Learned Fables for Good Old Boys and Girls,' the ' Jumping Frog Restored to the English Tongue after Martyrdom in the French,' the < Mem- braneous Croup' sketch, and many others which I need not spec- ify;) not doing this in order to make an advertisement of it, but because these things seemed instructive. Mark Twain." That complainant never gave any authority, leave, or license to the defendants to print or publish any such preface, or any of the representations therein contained, or substantially the same; that complainant has, by the said wrongful acts of the defendants, been greatly injured, and his property in the said nom de plume or trade-mark of "Mark Twain'' as a commercial designation of authorship has been deteriorated and lessened in value ; wherefore he prays damages and profits, and writ of injunction restraining the further publication of said work, and that the plates of such book may be delivered up and destroyed. • To this bill defendants have filed a special and general de- murrer. The position assumed by the complainant in this bill is that he has the exclusive right to the use of the nom de flume or trade- mark of "Mark Twain," assumed by him, and that defendants can be enjoined by a Court of Equity from using such name with- out the complainant's consent. 736 U. S. C. C. NORTH. DIST. OF ILLINOIS. Clemens vs. Belford, Clark & Co. 114 i. It does not seem to me that an author or writer has or can acquire any better or higher right in a nom de plume or assumed name than he has in his Christian or baptismal name. 2. When a person enters the field of authorship he can secure to himself the exclusive right to his writings by a copyright under the laws of the United States. If he publishes anything of which he is the author or compiler, either under his Own proper name or an assumed name, without protecting it by copyright, it be- comes public property, and any person who chooses to do so has the right to republish it, and to state the 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. ' ' In this country an author has no exclusive property in his published works except when he has secured and protected it by compliance with the copyright laws of the United States." Wheaton v. Peters, 8 Pet., 591; Clayton v. Stowe, 2 Paine, 382; Bartlettv. Crittenden, 5 McLean, 33; Pulte v. Derby, Id., 328. "If an author would secure to himself the sole right of printing, publishing, and selling his literary compositions, he must do so under the copyright laws." Stowe v. Thomas, 2 Wall., Jr., 549. The seventh paragraph of this bill charges that many or most of the sketches contained in the book complained of, "in one form or another, are substantially like sketches published prior to the year 1880 by your orator;" 'but it does not aver that they are or ever were protected by copyright, and by implication concedes their publication without copyright. If they were published with- out such protection they become public property, and may be re- published by any one who chooses to do so. 3. Undoubtedly an author has the right to restrain the publica- tion of arfy of his literary work which he has never published or given to the public. Little v. Hall, 18 How., 165 ; Keen v. Wheatly, 9 Amer. Law. Rep., 3; Bartlett v. Crittenden, 5 Mc- Lean, 32. So, too an author of acquired reputation, and, per- haps, a person who has not obtained any standing before the public as a writer, may restrain another from the publication of literary matter purporting to have-been written by him, but which, in fact, was never so written. JANUARY, 1883. 737 114 Clemens vs. Belford, Clark & Co. 4. In other words, no person has the right to hold another out to the world as the author of literary matter which he never wrote ; and the same rule would undoubtedly apply in favor of a person known to the public under a nom de plume, because no one has the right, either expressly or by implication, falsely or untruly to charge another with the composition or authorship of a literary production which 'he did not write. Any other rule would per- mit writers of inferior merit to put their compositions before the public under the names of writers of high standing and authority, thereby perpetrating a fraud not only on the writer whose name is used, but also on the public. The complainant, however, does not charge in this bill that the book in question, either by the title, preface, or any other matter contained in it, attributes to him the authorship of anything which he in fact did not write. The bill rests, then, upon the single proposition, is the com- plainant entitled to invoke the aid of this Court to prevent the defendants from using the complainant's assumed name of "Mark Twain" in connection with the publication of sketches and writings which complainant has heretofore published under that name, and which have not been copyrighted by him ? That he could not have done this if these sketches had been published under complainant's proper name is clear from the authorities I have cited, but the complainant seems to assume that he has ac- quired a right to the protection of his writings under his assumed named as a trade name or trade-mark. This is the first attempt which has ever come under my notice to protect a writer's exclusive right to a literary property under the law applicable to trade-marks. Literary property is the right which the author or publisher of a literary work has to prevent its multiplication by copies or duplication, 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 fictitious name of "Peter Porcupine" than that which was published 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 47 738 U. S. C. C. NORTH. DIST. OF ILLINOIS. Clemens vs. Belford, Clark & Co. 114 the manufacturers of vendible merchandise designate 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 another cannot, by the adoption of a nom de plume, he 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." 5. No pseudonym, however ingenious, novel, or quaint, can give an author any more rights than he would have under his own name. The policy of the law in this country has been settled too long to be now considered doubtful, that the publication 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 choose to do so, can republish any uncopyrighted literary production, and give the name of the author, either upon the title-page, or other- wise, as best suits the interest or taste of the person so republish- ing. Complainant does not say by his bill that the preface to the book in question was not written by him, and that by the publi- cation of this preface, in connection with the sketches, defendants have attributed to him the authorship of something which he never wrote. If he had so charged perhaps he would have made a case entitling him to some relief. The demurrer is sustained. FEBRUARY, 1 883. 739 1 15 Lorillard, et al. vs. Wight. 115 CIRCUIT COURT UNITED STATES, DISTRICT OF MARYLAND. In Equity. Lorillard, and others, vs. Wight. Decided 21 February, 1883. Reported 15 Federal Rep., 383. "Colored Tin Tag" Case. Trade-Mark — Colored Tin Devices. — Where complainants were the first to adopt and use as a mark for their product tin tags variously colored, with the name of their brand and their own name stamped thereon and fastened upon the outside of their plugs of tobacco, al- though their patent therefor was declared void after surrender and reissue, they had the right to the device as a trade-mark, the public having come to know their tobacco by the tags of their peculiar color, shape and size. Same — Infringement. — Where defendants use tin tags which are a close imitation of the tags of complainant, so close an imitation that they are calculated to mislead the retail purchaser, whether so intended or not, it is an infringement of complainants' trade-mark, and such use may be enjoined. 74° U. S. C. C. DISTRICT OF MARYLAND. Lorillard, et al. vs. Wight. 115 Motion for.' Injunction. Cowen er* Cross, for complainants. Charles Marshall, for respondent. Before Bond and Morris., JJ. Bond, J.; This bill alleges that the complainants are largely engaged in the manufacture and sale of plug tobacco; that it frequently- occurred, after a box of tobacco sold by them was emptied, the dealer would refill it with other tobacco not of complainants' man- ufacture, and by means of the labels and trade-marks on the box, sell it for tobacco of complainants. That to prevent this fraudu- lent practice the complainants invented a disk of tin, upon which was stamped their name and the names of the brand of tobacco, placed it upon each plug of tobacco in a box, and varied the colors of the disk so as further to distinguish . to the eye the brands, and sold their product and advertised it as red tin tag or blue tin tag tobacco. The device in the present suit complain- ants allege they first adopted about August, 1879. At one time they placed the tag beneath the last covering or skin of the to- bacco, where it would be held firmly and show through the sur- face. For this process they obtained a patent, which afterwards they surrendered and obtained a reissue, which was subsequently declared void, because it embraced more than the original patent. But the bill alleges that they had constantly used the device of a colored tin tag, with their name and the brand of the tobacco stamped upon it, placed upon the outside of the plug as a trade- mark in order to show a purchaser at retail that each plug of tobacco purchased by him was of the Lorillard manufacture. The complainants allege further that having advertised their tobacco largely as "red tin tag," "blue tin tag," "green tin tag" to- bacco, it is known generally by those names to consumers, who ask for it at the shops by those appellations-, and know that they get Lorillard tobacco when they see the "red tin tag" or "blue tin tag" upon each plug. The defendant, who alleges himself to FEBRUARY, 1883. 74I 1X5 Lorillard; et al. vs. Wight. be a broker and not a manufacturer of tobacco, denies that com- plainants have any trade -mark, but alleges that the use of tags to ■distinguish the grade and quality of many manufactured articles has long been practiced, and that even if the complainants had such a trade -mark defendant has not infringed it, because those whom he represents as broker make tobacco of such different sizes and colors, and use tags with names of brands so different from complainants', that no one would mistake the one for the other. We think the evidence shows that the Lorillards were the first to adopt and use as a mark for their product the tin tags variously •colored, with the name of the brand and their own name stamped thereon and fastened upon the outside of tobacco; that while their patent for -fastening these tags on the tobacco was declared void after surrender and reissue, they clearly had the right to the de- vice as a trade-mark, the public having come to know their tobacco by its having on it tin tags of a peculiar color, shape, and size. This being so, a glance at the device used by the defendant, or those whom he represents as broker, is clearly an imitation of the Lorillard device, or the Lorillards' is an imitation of it. To be sure, the little disk of tin upon the tobacco sold by defendant has upon it different names for the brand, and has not Lorillard's name. But the words are in such small letters that no one with- out the closest inspection would distinguish the difference. But they are of the same size and shape, of precisely the same color and enamel finish, and the minute letters on them are made with same colored ink. The proof shows that the complainants have for a long time, and very extensively, advertised their tobacco as "red tin tag" or •'blue tin tag" plug tobacco. It may not be sold to jobbers al- ways as such, but it is so inquired for by and sold to the consumer. The purchasing public, notwithstanding the size of the plugs of tobacco sold by defendant, and their color and flavor, may differ from the size and color and flavor of Lorillard's plug tobacco, would be deceived by the color of the tag and its resemblance to that of complainants; and think the red-tag tobacco of the one is the red-tag tobacco of the other. The defendant contends that 742 U. S. C. C. DISTRICT OF MARYLAND. Lorillard, et al. vs. Wight. 115 the shape and flavor of the plug sold by him will advise the retail purchaser of the manufacturer. But one seldom determines 'the manufacture by the size of the piece the dealer gives him for his money, and he cannot taste the tobacco till t after he has bought it. Besides, if the size and flavor of the plugs will show the purchasing public they are buying the defendant's or his principal's tobacco, why should he use a tag of any color to distinguish it. For some reason the tags closely resembling those in use by complainants, are placed upon the article sold by him, when, as he claims, the public would know his manufacture by the label on the box, the size and shape of the plug, and its flavor. i. We think the Lorillards were the first to adopt this method of distinguishing the grade and quality of manufactured plug to- bacco; that they have a trade-mark; that the defendant's tin tags, are a close imitation of it — so close that they are highly calcu- lated to mislead and do mislead the retail purchaser, whether it is so intended or not; and that he should be restrained from selling- tobacco having such imitated devices. 2. The defendant has the right to use tin tags, but they must be of such size, shape, and color as will not mislead the public. An order will be passed in accordance with this opinion. Morris, J., concurred. MARCH, 1883. 743 116 The Electro-Silicon Company vs. Hazard, et al. 116 SUPREME COURT, STATE OF NEW YORK. In Equity. The Electro-Silicon Company, Appellants, vs. Edward C. Hazard & Frank Green, Respondents. Decided March, 1883. Reported 89 Hun, N. Y., 292. "Electro-Silicon" Case. TRADE-MARK— WHAT WORDS MAY BE ADOPTED AND USED AS. 1. The plaintiff and its predecessors had for the past twenty years been engaged in preparing and selling a finely pulverized white powder, which they called "Electro-Silicon ," and which was used for polishing gold, silver and other metals. It appeared that the preparation, which was made from an infusorial earth, was first prepared by the plaintiff's predecessors, and sold by them under the name of Electro-Silicon, and also of Silicon, these words being coined for and adopted by them as a trade-mark, a declaration to that effect being filed in the office of the Secretary of State of California, and in the Patent Office at Washing- 744 SUPREME COURT, STATE OF NEW YORK. • -_ The Electro-Silicon Company vs. Hazard, et al'. 116 ton. The powder was sold for many years, and became valuable for the purpose for which it was designed. v.. The words Electro-Silicon or Silicon, are not descriptive of the article, although it contains some silicon in the form of silica or silicic acid; silicon itself is not, and from its nature cannot be an article of com- merce; it exists in very minute quantities, and is an elementary body closely allied to carbon, existing as a dark brown powder or steel grey mass, according to circumstances; it is never found in an uncombined state, but only as a component part of compounds resembling it in some respects, from which it has been separated in very small quan- tities to furnish specimens for cabinets. Held: That the plaintiff had by its adoption and use of the words as a trade- mark, acquired a right so to use them, and that it was entitled to restrain their unauthorized use by the defendants. Appeal from an order of the Special Term denying a motion to continue an injunction. Philo Chase, for the appellant. Hugh Porter, for the respondent. Brady, J.: i. It appears from the papers submitted upon this appeal that about twenty years ago a company in California, called the Electro-Silicon Company, began to put up for sale the article now sold by the plaintiffs under the name of Electro-Silicon. The company, for the purpose of designating and distinguishing and, indeed, identifying its article with itself as the manufacturer and proprietor, gave to it its own name, electro-silicon, with the two words united so as to form a compound word, and determined to use this word as its trade-mark. The original proprietor caused the term thus coined to be regis- tered as such in the office of the Secretary of State of California and in the Patent Office at Washington. There was a change of ownership, but the successors of the company, Coffin, Reddington & Co., and the plaintiffs, who became the owner, put up the article' with the compound title printed upon its boxes and labels. It also appears that the article thus designated has acquired a high reputation, and is extensively sold throughout this country MARCH, 1883. .745 116 The Electro-Silicon Company vs. Hazard, et al. and to a considerable extent in Europe, and that the plaintiff and its predecessors expended large sums of money in advertising and creating the business which is done in the article under the name mentioned, and further that when the original proprietor adopted the compound name mentioned as a trade-mark for its article, no other article of trade had ever been called by the name adopted, or by the designation "Silicon," and that no article of polishing powder besides the plaintiffs' had been sold in the market by the name of "Electro-Silicon" or of "Silicon" except the defendants', which has recently been put upon the market, save an article which was sold under the same name by two persons named Trask and Levy, both of whom were enjoined soon after the infringement was discovered and alleged. It also appears that the plaintiffs' article has been heretofore sold by the defendants, and further that it is not only known by the name of "Electro-Silicon" but by "sili- con" alone, by which term it is often called for by consumers. The article itself is a white finely pulverized powder composed of infusoria, i. primary importance. The resemblances need not be such as would mislead an expert or could not be easily detected if the original and the spurious were seen together. It is enough if such resemblances exist as would lead an ordinary purchaser to suppose he was buying the genuine article and not an imitation. If the differences are only colorable, and there is no reason for the resemblances except the purpose of deceiv- ing the purchaser of one article into the belief of its being the manu- facture of another, the Court will presume a fraud was intended. ii. Though the particular combinations of letters and figures used by ap- pellees were not entitled to protection as part of appellants' trade- mark, yet it appearing that appellees copied those combinations, not for the purpose of indicating the size and quality of their plows, but for the purpose of misleading the public into the belief that appellees' plows were of a kind made by appellants, having an established repu- tation and large sale, Held: That appellees are liable to appellants for damages resulting from loss of trade in consequence of such copying and to an injunction restraining the further sale of such plows. Appeal from Louisville Chancery Court. Messrs. IV. O. & J. L. Dodd, Mr. John Mason Brown, Mr. JP. B. Muir, and Mr. John Marshall, for the appellants. Mr. W. Lindsey, Mr. Geo. M. Davis, and Mr. James S. Pirtle, for the appellees. Hargis, C. J., delivered the opinion of the Court. The appellants brought this action to restrain the infringement of their trade-mark and to prevent the fraudulent usurpation of their trade reputation by the appellees, and to compel them to ac- count for resulting profits. The appellants are manufacturers of plows in the City of Louisville. They brand on the right side of the beam their trade-mark, which is composed of a Maltese cross, 756 COURT OF APPEALS, STATE OF KENTUCKY.. Avery & Sons vs. Meikle & Co. 117 with the letters "A V E R Y" distributed in its center and arms. Immediately above the cross are the words < ' Trade-Mark, ' ' and below it is the word "Copyrighted." To the left of it are the words " B. F. Avery's, Patented," and to the right "Louis- ville Steel, July n, 187 1." The steel series of their plows are branded on the top and near the rear of the beam "Pony," "AO," "BO," and "CO," and their cast series at the same point with " 1^," " 1," " 2," " 3," and "8." Upon the top of the fore part of the beam of each series are stenciled the caution- ary words "Keep all taps screwed up." The appellants' trade- mark, which they printed and referred to in their catalogues and described in their advertisements, is composed of the Maltese cross, with the name "A V E R Y" distributed in its arms and center, surrounded by the words "Trade-Mark" above and "Copyrighted" below it. The appellees, who are also engaged in the manufacture of plows in the City of Louisville, dismantled plows of appellants' steel and cast series, and with great accuracy copied every import- ant and ordinarily noticeable part of them. They then began the structure of two series of plows, one steel and the other cast, so much like appellants' that an ordinary person could not' tell the one from the other. They also imitated, almost to perfection, the interchangeable metal points of appellants' plows. They branded the steel series "PO," "AO," "BO," "CO." The "PO," was followed by the word "steel," and "Louisville " was placed on top of the beam. Their cast series was branded " *^," " 1," "2," "3," "8." Upon the top of the front part of the beam of each were stenciled the cautionary words, "Keep all taps screwed up." These letters, numerals, and words of caution were of the same size and character of type, and placed in pre- cisely the same position on their plows as on those of appellants. The plows were varnished as appellants' were varnished. The resemblance of appellees' plows to those of appellants was com- plete, the only substantial difference being that the appellees placed on both sides of the beam their trade-mark, which consists of an oblong figure and diamond whose angles project over the lines of the oblong with the letter " M ". in the center of both, and encom- "march, 1883. 757 117 Avery & Sons vs. Meikle & Co. passed by the name, " Thos. Meikle & Co." above, and "Louis- ville, Ky\," below. The appellees held a consultation before they attempted the imitation above described, and after due de- liberation and quieting Mr. Meikle's conscience, in the rough, but significant language of one member of the firm, who seems to be its guiding spirit, they determined, "come what may, to take the bull by the horns." Then the work of dismantling and imitation began. Soon their newly dressed and formed series of cast and steel plows were thrown upon the market, and a business of thirty plows per day sprang up to nearly one hundred per day. These increased sales were made to a considerable extent to job- bers, whose names were substituted for appellees' trade-mark and its surroundings, and stenciled on the beams where their trade- mark and name had stood. These jobbers did not pretend to be originators or manufacturers of the plows, and it appears that many persons have been deceived, and unable to distinguish the imitation from appellants' plows. In order to make the imitation series the appellees abandoned their brands, "A," "B," " C," "D," and "F," on their cast, and the numerals "o," "1," *" 2," "3," "4," "5," and "6," on their steel plows, which they have been using, and substituted appellants' brands in their stead, placing the letters on the steel, and numerals on the cast series, so as to correspond precisely with appellants' mode of using them. Whether the conduct of the appellees amounts to an infringe- ment of appellants' trade-mark, or any injury to their legal or ■equitable rights, is the question to be considered. The object of trade-mark law is to prevent one person from selling his goods as those of another, to the injury of the latter and of the public. It grew out of the philosophy of the general rule that every man should use his own property and rights as not to injure the pro- perty or rights of another, unless some priority of right or emer- gency exists to justify a necessarily different manner of use. The intermediate instrument of prevention, which the law protects in its office, is called a " trade-mark," which an owner of goods may adopt and use to indicate their origin or ownership, and to dis- tinguish them from goods of a similar nature belonging to some- 758 COURT OF APPEALS, STATE OF KENTUCKY. Avery & Sons vs. Meikle & Co. 117 body else. This right of adoption and use is subject to various, limitations and qualifications. i. A trade-mark is a sign or symbol primarily confined exclu- sively to the indication of the origin or ownership of the goods to which it may be attached, and it may be composed of any name, device, line, figure, mark, word, letter, numeral or combination or arrangement of any or all of these, which will serve the sole purpose of a trade-mark, and which no other person can adopt or use with equal truth. Fancy names, whether invented or arbitrary,, the names of places, words, where applied to a new process by the inventor; the name of an article, which alone designates its origin or ownership; letters and numerals combined in unusual and peculiar forms, or with other parts composing trade-marks, have been held, under the particular circumstances of the various cases where their exclusive appropriation and use were in question, to be trade-marks or component elements thereof- See Congress Spring Co. v. High Rock Spring Co., (45 N. Y., 290); Burnett v. Phalon, (3 Keys, 594); Marsh v. Billings, (7 Cushing, 322); Woodward v. Lazar, (21 California, 444); Ford v. Foster, (Z. R., 7 Ch., 611); Taylor v. Carpenter, (3 Story, 458); Davis v. Kendall, (2 R. I., 566), in which the words << Eureka Shirt,'" " Persian Thread," "Vegetable Painkiller," "Congress Spring," "Cocaine," "New Era," "Revere House," "What Cheer House," were held subject to exclusive appropriation as trade- marks. In the cases of Wotherspoon v. Currie, (5 H. Z., 508); Mc- Andrew v. Bassett, (\o Jur. , N. S., 550); Seixo v. Provezendc, (Z. R., 1 Ch. Ap., 192); Newman v. Alvord, (49 Barb., 588), the words " Glenfield Starch," "Anatolia Liquorice," "Seixo Wine," " Akron Cement," were protected as trade-marks. For the word "Original" as a trade-mark, see Cocks v. Chandler, (Z. R., 11 Eq., 446). Numerals in the cases of Boardman v. The Meridian Britannia Co., (35 Conn., 402); Gillott v. Esterbrook, (47 Barb., 455), were held to be, in connection with the manu- facturer's name, a lawful trade-mark. Browne on Trade-Marks, section 87, says: " The mark may con- sist of the name of the manufacturer or merchant, (provided it be MARCH, 1883. < 759 117 Avery & Sons vs. Meikle & Co. written, printed, branded, or stamped in a mode peculiar to itself) in a seal, a letter, a cipher, a monogram, or any other sign or symbol that can serve to distinguish the, products of one man from those of another. It may be any symbol or emblem, however unmeaning in itself." 2. Terms which designate merely the name, quality, kind, size, number, or elements of an article or have become its proper ap- pellation, or that merely describe it, or direct the mode of its use, purely generic and geographical terms, and the necessary and common uses in which the English language and Arabic numerals are employed by the people to express their ideas and feelings and to tell the truth, are common property which all may use, but which none may exclusively appropriate as a trade-mark or acquire as absolute individual property. Many authorities have been examined, and might be here cited, to establish each clause of this general statement of the law, but it is not ncecssary to do so. 3. It must not be overlooked, however, in these exclusions, that a trade-mark is indirectly the guaranty of the quality of an article to which it is attached, as well as of its origin and owner- ship, for in all cases the trade-mark, indicating the origin by necessary implication, represents the quality of the article, which is the true source of its reputation in the market. There is no abstract right in a trade-mark. It is property only when appro- priated and used to indicate the origin or ownership of the article or goods. And its real value consists in the confidence and pa- tronage of the public, secured through its instrumentality in acquainting them with the origin and ownership of an article which thus gains reputation for its superior qualities. Of this reputation its owner cannot be deprived without his consent, either by the use of forbidden means or the illegal employment of things otherwise lawful. When a workman or manufacturer has, by skill, care, and fidelity, manufactured a good article, it becomes of the utmost importance tc» him that its origin and ownership should be known, and the law points out to him the means and how he may appropriate them to indicate this important fart, and when he adopts and uses them, and his reputation is thereby built 760 COURT OF APPEALS, STATE OF KENTUCKY. Avery & Sons vs. Meikle & Co. 117 up, it is to him the most valuable of property rights. Sound policy which dictates the protection of the public from imposition, the security of the fruits of labor, the encouragement of skillful industry, and, above everything, the inculcation of truth and honor in the conduct of trade and commerce, and the require- ment that all the contractual relations of life — natural, abstract, and relative — shall be honestly observed, demands that such repu- tation, so gained, shall be free from the grasp of piracy and its infringement accorded the safest and best remedy for redress known to the Courts of Equity. 4. And this is the law of both principle and authority. There- fore the lawful adoption and use of a trade-mark is the invocation of the law applicable to it by the originator or owner of an article for the protection of his reputation as such. When this essential state of facts is shown by a complainant, and that his trade-mark has been infringed, and actual, probable, or possible injurious consequences are or may be the result of the infringement, he is entitled to relief, which is usually granted by injunction and an account of profits. Having premised these general rules of the law of trade-mark, the field of investigation we shall first explore is, whether the appellants' trade-mark embraces either the word "Pony/' the letters "AO," "BO," "CO," or the numerals "}4," "1," "2," "3," "8," or the shape and construction of their plows. We will dispose of the last point first. 5. The shape and construction of the plow do not form any part of the trade-mark of the appellants further than their sub- jection to the use of the mark to indicate their origin and make it necessary to render the trade-mark property, for, as held in Candee, Swann o° Co. v. Deer &• Co., (54 77/., 461), where no patent is held by the owner of plows, "any one, therefore, has a perfect right to make in their exact similitude, even to the < curve of the mold -board' and 'the tip of the handles ' — in the minutest as well as in the most important points — 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 part of the plows as he pleases, MARCH, 1883. 761 117" Avery & Sons vs. Meikle & Co. taking care, however, so to use the brand as not to deceive the public, so as not to create a belief that the plow is the manufacture of another." Other cases, which express it differently, are to the same effect. Fairbanks v. Jacobus, 14 Blatch., 339. The evi- dence shows that as early as the year 1868 the word " Pony " was adopted and used by Kelly, of Texas, on a small one-horse plow, which he was then engaged in the manufactute of, and that the appellants did not adopt or use it prior to 1871. Hence they have not the merit of first appropriation, which is necessary to the exclusive right to the word "Pony," even as a trade-mark. But where the evidence, as in this case, establishes that the word "Pony," is used to indicate the quality and size — to wit: a small steel plow — it cannot for such use become a trade-mark. And it does not matter that " Pony" is not in itself the sign of the idea of size or quality, for if it was substituted for the words which would convey such meaning, and used by appellants for that pur- pose, they could not have acquired, even by prior adoption, an exclusive right to the use of the word "Pony." Amoskeag Manufacturing Co. v. Spear, Cox's T.-M. C, 102. Many years before the appellants adopted "AO," "BO," "CO," it was customary to use letters and combinations of letters to indicate quality, size, and series of plows. "CO" was in use before appellants used it, but whether they used the combination of these letters first or not, the evidence shows that they used it *o indicate the size and quality of the steel series. As to the num- erals "}4>" "1," "2," "3," "8," they were used by appel- lants to denote the size and quality of their cast series. 6. This is the evidence; and although the letters and numerals on both series may have come to indicate to the public the origin or ownership of the appellants' plows, as they did not appropriate them by adoption, use, or claim as a part of their trade-mark, they cannot be treated as part of it simply because they appear capable of serving the same purpose. The printed catalogues and advertisements of the appellants do not claim that these letters or numerals form any part of their trade-mark, yet all through them attention is called to the Maltese cross, and the words in and immediately around it as their trade- 762 COURT OF APPEALS, STATE OF KENTUCKY. Avery & Sons vs. Meikle & Co. 117 mark. Had"AO," "BO," "CO," and " }4," "1," "2," "3," and "8," or any of them, formed apart of appellants' trade-mark, it is unreasonable and contrary to human experience to suppose that the fact would have been ignored for years and excluded from their carefully prepared and printed annual catalogues and adver- tisements. The cautionary words "Keep all taps screwed up" are not the subject of a claim to exclusive use, as has been held and well settled in the cases of Falkinburg v. Lucy, ( Cox, T. -M. C, 465-6), Gillott v. Esterbrook, (Id., 350), Gilman, " " l >" "2," "3," "8?" Why "AC," "BO," "CO," "PO?" No answer can be given except that a man intends the natural con- sequences of his own act, and the consequences of his own act, and the consequences of this act are to take appellant's trade, built up on his reputation, and transfer it to appellees' plows. This departure from the easy and common way of using, those letters and figures, and the adoption of a troublesome, costly, and painfully prepared imitation, both of plows and letters, is attempted to be excused on the alleged ground that appellees were making better plows than appellants. This excuse is so transparent a subterfuge to escape the effects of their conduct that it deserves to be mentioned because of its boldness only, and as an illustra- tion of the intent of appellees. Would they take to pieces one of the appellants' plows, then make theirs like it, brand them at the same point and in the same way, paint them alike, make the same interchangeable metal points, abandon their old letters and adopt the letters and numerals of appellant, if they were making a better plow, and thus run the risk of confusion with inferior? Who would thus dig a ditch to fall into himself? The eyes of 774 COURT OF APPEALS, STATE OF KENTUCKY. Avery & Sons vs. Meikle & Co. 117 capital, trade, and commerce are too keen not to see and avoid such folly. No man in his senses would commit it, and we can- not believe the appellees did so. If they did not, then the reason assigned by them for this elaborate imitation is false, and we must look for another and true reason, which may be easily found, for it lies upon the surface; it is pointed out by the experience of the race. Those letters and figures on the skillful imitations, unless, we deny the evidence of our senses, the plows having been exhib- ited to us, were used to enable appellees to sell their plows as and for those of the appellants, and thereby injure their trade reputa- tion, lessen their sales, and share their profitsand customers. The question must not be confined to what the appellees used, but how and for what purpose they used the indicia copied from appel- lants' plows. If so restricted, the case is plain, for what they used they had a 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 to designate quality and size merely, which is allowable, they did not content themselves, but under the pretence 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 correspond 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, com- ing 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 appel- lants by the artful manner of using and combining artificial signs common to all as signifying quality and number generally. Appellees' counsel cite the following text in support of their view: "If through the lawful and proper exercise by one man of his own rights a damage results to another, even though he might have anticipated the result and avoided it," it is damnum absque injuria. (Coo/ey on Torts, 31.) This is sound law; but if he uses his lawful rights and property in an unlawful or im- proper manner, then, if damage follow, it is damage with injury MARCH, 1883. 775 117 Avery & Sons vs. Meikle & Co. where he so uses his own. as intentionally to injure another. This no man has a right to do, and this is the distinction which appellees' counsel fail to recognize. It is also said that a bad mo- tive may render a bad act worse, but it cannot render a lawful act unlawful. This is also true ; for if a man with a bad motive exercises his rights in an unlawful and improper way, and injury ensues, it is damage without legal injury ; but if he, with a bad motive, exercises his rights in an unlawful manner, and injury is thereby done to another, there is damage and a legal injury. For, instead of exercising his rights in order to their legitimate and full enjoyment, which he may do although it injures another, if he so exercises his rights as not only to enjoy them himself, but to do more, to go beyond and use them in such a manner as to intentionally and fraudulently injure another man's right, it is wrong in principle, condemned by authority, and unsupported by a single analogy, fairly logically applied. The whole argument of appellees' counsel is based upon the false assumption that a legal injury cannot be done by the improper use of lawful means, and that the very act in question is legal. There is a difference between lawful means and the unlawful use of those means. A bad intent, it is indubitably true, cannot render a legal act worse, but this rule must not be misapplied. A bad intent cannot render legal means or things illegal, nor can it render a legal act worse, but a bad intent does make an illegal act done by the use of legal things a good deal worse. This position of the appellees illus- trates the difficulty which Courts of Equity meet in the enforce- ment of -justice in cases of this character. While the limitation to the exclusive use of the language confines the selfish monopo- list to those words, letters, numerals, and symbols which indicate the origin and ownership of his goods, and which no other person can use with like truth, there is a qualification to the manner in which the residue or common stock may be used. No part of it can he diverted from its ordinary functions and perverted to the work of piracy. Though innocent in itself to communicate ideas and represent the product of all labor, its quality, kind, and most minute and general description, they are the most dangerous means with which to misrepresent the goods of one as and for Tj6 COURT OF APPEALS, STATE OF KENTUCKY. Avary & Sons vs. Meikle & Co. 117 those of another, for it is hard to see the difference at first blush, between the lawful and unlawful use of that common stock which it is conceded belongs equally to mankind. Confounding the legality of the means used with the charge alleged in the bill, we are met with the skillful excuse that a bad motive never renders a legal act worse, and particles which, when properly used for lawful purposes would be harmless, are piled up one after another in such a disconnected way as obscures the effect of their combined power until the innocent instruments, having done the work of invading appellants' trade reputation, are made the defence to their own misuse. But whether arising from the common stock or that which is exclusively appropriated, the use must not be fraudulently abused and the rights of others wrongfully taken from them; hence we say that Courts of Equity have jurisdiction, no matter what the means may be, if perverted from their true objects, by which one manufacturer represents and sells his goods as and for those of another. 10. The general rule as to what constitutes infringement is at- tempted to be laid down in various cases ; but it will be found that no rule can be formulated that will anticipate and embrace every act of infringement. So each case must depend mainly upon itself for the rule and proof of this essential pre-requisite to recovery. It is not necessary that the resemblance produced should be such as would mislead an expert, or such as would not be easily detected if the original and the spurious were seen to- gether. It is enough that such similitude exists as would lead an ordinary purchaser to suppose that he was buying the genuine article, and not an imitation. S. C, ,129 Mass., 325. "Although the mark might not deceive if placed side by side with the plaintiffs' mark, it was calculated to obtain for the de- fendants' goods the same name as that by which the plaintiffs' were known and to deceive an ordinary purchaser who had not an opportunity of comparing the marks." Mores v. Salgood, Ewen 6- Co., Cox, T.-M., 636.) "It is a mistake to suppose that the resemblance must be such as would deceive persons seeing the two trade-marks placed MARCH, 1883. yj-j 117" Avery & Sons vs. Meikle & Co. side by side," as was said by Judge Clifford. Manufacturing Co. v. Trainer, 101 U. S., 64. In the case of McAndrews v. Bassett much importance was at- tached to the fact that the defendant had laid aside the mark he had previously used and took up that of the complainant. The Lord Chancellor said : "The fact of its adoption by the defendants is itself pregnant with proof that they regarded it as a thing desirable to be done. They thenceforth use it in preference to what they previously used, and the reason is clearly to be collected from the letter which was the occasion of the first introduction to them of the mark and the occasion of their adopting it." 10 Jur., N. S., 550; Cox's M. T.-M. Cases, 673. In every case (says Vice-Chancellor Wood in the Taylor Per- sian Thread Case) the Court must ascertain whether the differ- ences are bona fide, in order to distinguish the one article from the other ; whether the resemblances and the differences are such as naturally arise from the necessities of the case, or whether, on the other hand, the differences are simply colorable, and the re- semblances are such as are obviously intended to deceive the pur- chaser of the one article into the belief of its being the manu- facture of another person. Resemblance is a circumstance which is of primary importance for the Court to consider, because if the Court finds, as it does almost invariably find in such cases as this, that there is no reason for the resemblance, except for the purpose of misleading, it will infer that the resemblance was adopted for the purpose of misleading." Taylor v. Taylor, 2 Eg. Rep., 290; Cox's M. T.-M. Cases, 70. In Seixo v. Provhende it was said : "If a purchaser, looking at the article offered to him, would naturally be led, from the mark impressed on it, to suppose it to be the production of the rival manufacturer, and would purchase in that belief, the Court considers the use of such mark to be fraud- ulent. But I go further. I do not consider the actual physical resemblance of the two marks to be the sole question for consider- ation. If the goods of a manufacturer have, from a mark or device he has used, become known in the market by a particular 778 COURT OF APPEALS, STATE OF KENTUCKY. Avery & Sons vs. Meikle & Co. 117 name, I think the adoption by a rival trader of any mark which will cause the goods to bear the same name in the market may be as much a violation of the right of that rival as the actual copy of his device." L. R., i Chy., 192; Cox's M. T.-M. Cases, 146. Vice-Chancellor Malins said : "The rule of the Courtis, that a man who has adopted a dis- tinguishing mark has a right to be protected against any other person adopting one sufficiently like it to mislead an unwary public." In the same case, upon appeal, the Lord Chancellor, in 1872, said : " Though no one particular mark is imitated, the combination is very similar, and likely to deceive. It is true that there is no proof that any one has been deceived, or that the plaintiffs have incurred any loss; but where the similarity is obvious, that is not of importance." Abbott v. Bakers' and Confectioners' Tea Asso- ciation, Cox, M. T.-M. C, 213. In the justly celebrated opinion of Judge Duer, in the Amos- keag Man. Co. v. Spear, he said : "In an imitation of the original mark upon an article or goods of the same description, the name of the proprietor may be omitted, another name, that of the imitator himself, may be sub- stituted ; but if the peculiar device is copied, and so copied as to manifest a design of misleading the public, the omission or varia- tion ought to be wholly disregarded. Its object, we may be certain, was not to communicate the truth, but to escape the penalty of falsehood. A fraud is intended, an unlawful gain is meant to be realized ; but it is believed or hoped that an injunc- tion may be avoided and claim for profits or damages be repelled. The fraud, however, if a Court of Equity is true to its principles, w.ill be suppressed and its fruits be intercepted or restored. My conclusions on this branch of the subject are that an injunction ought to be granted whenever the design of a person who imitates a trade-mark, be his design apparent or proved, is to impose his own goods upon the public as those of the owner of the mark, and the imitation is such that the success of the design is a prob- MARCH, 1883. 779 117 Avery & Sons vs. Meikle & Co. able or even possible consequence." Amoskeag Manufacturing Co. v. Spear, 2 Sand., S. C, 599; Cox T.-M. -.Cases, 95. "Even if the wholesale buyer is not misled, but the small re- tailer or the consumer is, the right of action exists," was the language used in Dixon Crucible Co. v. Guggenheim, (2 Brewster, Penn., 335). See also Clark v. Clark, (25 Barb., 76), and Brooklyn White Lead Co. v. Masaury, (Ibid., 416). In the case of Coats v. Holbrook, Vice-Chancellor Sanford said : "A man is not to sell' the goods or manufacture of B under the show of pretence that they are the goods or manufactures of A, who, by superior skill or industry, has established the reputa- tion of his articles in the market. The law will permit no person to practice a deception of that kind, or to use the means which contribute to effect it. He has no right and he will not be al- lowed to use the names, letters, marks, and other symbols by which he may palm off upon buyers as the manufacture of another the article he is selling, and thereby attract to himself the pa- tronage that, without such deceptive use of such names, &c, would have enured to the benefit of that other person who first got up or was alone accustomed to use such names, marks, letters, or symbols." Coats v. Holbrook, 2 Sand. Chy. R., 504; Cox's T.-M. Cases, 221. The Court said in Gillott v. Esterbrook, supra : "The design to defraud by manufacturing and packing pens in all respects similar to the plaintiff's excepting only in the use of the name, appears very plainly. I cannot reason so artificially as to disguise this conclusion from myself." The language of Lott, Senator, in Taylor v. Carpenter, shall close our quotations on the manner infringements have been made and the means and acts which have been declared to be infringe- ments. He said: "Honest competition relies only on the intrinsic merits of the article brought into market, and does not require a resort to a false or fraudulent device or token. That certainly cannot de- serve the appellation which studiously gives to the product of pre- tended superior skill the name and exact resemblance and imita- 780 COURT OF APPEALS, "STATE OF KENTUCKY. Avery & Sons vs. Meikle & Co. 117 tion of the article with which it professes to compete. A disguise is not usually assumed for an honest object. It is a mark more characteristic of deception and fraud. It defeats the very end and object contemplated by legitimate competition, the choice to the public to select between the articles sold, and operates as a deception and imposition on the dealer." 2 Sand. Ch. Rep., 613; .S. C. Cox T.-M. Cases, 45. What is lacking in authority to reach every case of infringe- ment may be easily supplied from the never-failing fountain of justice, where principle finds universal application. What are the facts of this case? The appellees have not used a single letter, figure, or word that belongs to appellants' trade-mark proper, yet by the exact simulation of the plow in every perceivable, point exposed to an ordinary observer and purchaser, and the use of the same coloring and staining, the same relative position .of the let- ters and figures as employed and used by the appellants, avoid- ing the literal appropriation of any part of 'their trade-mark, the appellees have obscured their own and appellants' -trade-mark, but at the same time sought to avoid detection and responsibility . in doing so; and to cause their plows to be taken for and pur- chased as those of appellants. Thus by skillful combination of legal particles, taken one at a time and in the aggregate, leaving the mere trade-mark untouched, they have so confused its force and effect as to destroy its office and real efficiency to distinguish the appellants' plows from all others. 1 . The appellees laid aside their own letters and numerals, which they commonly used to indicate the size, series, and qual- ity of their plows, and literally took up those of the appellants. 2. They quit lettering cast and figuring steel plows," and re- versed that order and adopted the order of use by appellants. 3. They consulted and deliberated before adopting the letters and numerals or imitating the construction of appellants' plows. 4. After the deliberation they so imitated the construction, numerals, and lettering of appellants' plows, that nothing but the reading of their trade-mark and close inspection could dis- tinguish the difference. MARCH, 1883. 781 1 1 7* Avery & Sons vs. Meikle & Co. 5. They made large quantities of plows, leaving off their own trade-mark and name, and substituted therefor the names of job- bers, who were well known in the market to be vendors and not makers of plows, making it in their hands therefore impossible, without the aid of expert knowledge, to tell the difference be- tween a Meikle and Avery plow, as they both had the same in- dicia and were constructed alike, the maker's name being alto- gether suppressed. 6. They have employed small salesmen to sell their plows, who place them on the market one-half dollar cheaper than the Avery plow, and so advertise them as to be taken for those of the appel- lants. The combined force of this evidence is irresistible. It shows an intentional infringement, and not only possible injury, but such facts from which the law presumes some injury at least to be the necessary consequence. If such infringement as this be not enjoined and the profits resulting from it returned, then trade- mark law will never accomplish its prime object, named in the first sentence of this opinion on that branch of the subject we have discussed. The trade-mark and trade reputation pirate always undertakes the difficult task of sailing between the Charyb- dis and Scylla of the law, but he should never be allowed a suc- cessful voyage. If, on the one hand, he escapes the rock by not infringing through instrumentality of the trade-mark itself, he will not, on the other, if Courts of Equity are true to the princi- ples of their own existence, be allowed a safe passage by the use of any means of deceit or false representations known to the in- ventive brain of man. Courts of law and equity have finally become possessed of jurisdiction, through the unfolding process of adjudication, ample to protect a trade-mark, which may be used by all to distinguish their goods from others; to prevent the sales of the goods of one as being those of another by means of fraud and misrepresentation in the use of marks, signs, words, numerals, or symbols; to afford redress for such sales of goods which are a misleading imitation of those of another, for whose manufacture they may be sold, where intentional false representa- tions or fraud, from which damage the sales are made by the use 78.2 COURT OF APPEALS, STATE OF KENTUCKY. Avery & Sons vs. Meikle & Co. ' 1 1 "7 of a trade-mark, or direct or indirect, is presumed and its extent may be proven. In all cases, however, the conduct or adopted means of the imitator must be such as does or would probably deceive the ordinary mass of purchasers. In conclusion, we repeat that this law grows out of the com- mon principle of justice that the rights of each should be so used as not unnecessarily to injure those of others, whose skill has made their goods valuable in their reputation, that finally com- pensates them for their enterprise, industry, and fidelity. We are, therefore, of the opinion that the relief prayed for should have been granted. The thanks of the Court are tendered to the able counsel on both sides of this case, for the great assistance they have ren- dered us in our efforts to arrive at a conclusion in strict obedience to authority and principle. Wherefore the judgment is reversed and cause remanded for further proceedings consistent with this opinion. APRIL, 1883. 783 118 Manhattan Medicine Co. vs. Wood, ei al. 118 SUPREME COURT OF THE UNITED STATES. In Equity. Manhattan Medicine Company vs. Wood, and another. Decided 2 April, 1883. Reported 108 U. S., 218. "Atwood's Vegetable Bitters.'" 1. A Court of Equity will extend no aid to sustain a claim to a trade-mark of an article which is put forth with a misrepresentation to the public as to the manufacturer of the article, and as to the place where it is manufactured, both being originally circumstances to guide the pur- chaser of the medicine. 2. When it is the object of a trade-mark to indicate the origin of manufac- tured goods, and a person affixes to goods of his own manufacture a trade-mark which declares that they are goods of the manufacture of some other person, it is a fraud upon the public which no Court of Equity will countenance. 3. The plaintiff claimed to be the owner of a patent medicine and of a trade-mark to distinguish it. The medicine was manufactured by the 784 SUPREME COURT OF UNITED STATES. Manhattan Medicine Co. vs. Wood, et al. 118 plaintiff in New York; the trade-mark declared that it was manufac- tured by another party in Massachusetts. Held: That he was entitled to no relief against a person using the same trade- mark in Maine. Appeal from the Circuit Court of the United States for the Dis- trict of Maine. Bill in equity to restrain the defendants from using an alleged trade-mark of the complainant, upon certain medicines prepared by them, and to compel an accounting for the profits made from 'its use in their sale of the medicines; also, the payment of dam- ages for their infringement of the complainant's rights. The complainant, a corporation formed under the laws of New York, manufactured in that State medicines designated as "At- wood's Vegetable Physical Jaundice Bitters;" and claimed as its trade-mark this designation, with the accompanying labels. Whatever right it possessed, it derived by various mesne assign- ments from one Moses Atwood, of Georgetown, Massachusetts. The bill alleged that the complainant was, and for a longtime previous to the grievances complained of had been the manufac-- turer and vendor of the medicine mentioned; that it was put up and sold in glass bottles with twelve panel-shaped sides, on five of which in raised words and letters " Atwood's Genuine Physi- cal Jaundice Bitters, Georgetown, Mass." were blown in the glass, each bottle containing about a pint, with a light yellow printed label pasted on the outside designating the many virtues of the medicine, and the manner in which it was to be taken; and stating that it was manufactured by Moses Atwood, George- town, Mass., and sold by his agents throughout the United States. The bill also alleged that the bottles thus filled and labeled were put up in half dozen packages with the same label on each package; that the medicine was first invented and put up for sale about twenty-five years ago by one Dr. Moses Atwood, formerly of Georgetown, Massachusetts, by whom and his assigns and suc- cessors, it had been ever since sold "by the name, and in the manner, and with the trade-marks, label, and description sub- stantially the same as aforesaid;" that the complainant was the APRIL, 1883. 785 .1X8 Manhattan Medicine Co. %is. Wood, ct al. exclusive owner of the formula and recipe for making the medi- cine, and of the right of using the said name or designation, to- gether with the trade-marks, labels, and good-will of the business of making and selling the same; that large sales of the medicine under that name and designation were made, amounting annually to twelve thousand bottles; that the defendants were manufactur- ing and selling at Portland, Me., and at other places within the United States unknown to the complainant, an imitation of the medicine, with the same designation and labels, and put up in similar bottles, with the same, or nearly the same, words raised on their sides, in fraud of the rights of the complainant and to its serious injury; that this imitation article was calculated and was intended to deceive purchasers, and to mislead them to use it instead of the genuine article manufactured by the complain- ant, and had had, and continued to have that effect. The bill, therefore, prayed for an injunction to restrain the defendants from affixing or applying the words " Atwbod's Vegetable Physi- cal Jaundice Bitters," or either of them, or any imitation thereof, to any medicine sold by them, or to place them on any bottles in which it was put up, and also, from using any labels in imita- tion of those of the complainant. It also prayed for an account- ing of profits and for damages. Among the defences interposed were these: That Moses Atwood never claimed any trade-mark of the words used in connection with the medieine manufactured- and sold by him; and assuming that he had claimed the words used as a trade-mark, and that the right to use them had been transferred to the assignors of the complainant, it was forfeited by the representation as to the manu- facture of the medicine on the labels accompanying it; a misrep- resentation continued by the complainant. The cause was heard before Clifford, J., and the bill was dis- missed with costs. From this decree the plaintiffs appealed. Mr. Philo Chase, for appellant. The main part of this brief was occupied with a discussion of the facts. The following points of law were taken: The name adopted was a good trade-mark, assignable, and entitled to pro- 5° 786 SUPREME COURT OF UNITED STATES. Manhattan Medicine Co. vs. Wood, et al. 118 tection in the hands of the assignee. McLean v. Fleming, 96 U. S., 245; Kidd v. Johnson, 100 U. S., 617; Hall v. Barrows, 4 DeG.,J. & S., 150; 33 Z. /. (JV. S.), 204; 10 Jurist (JV. S.), 55; Fulton v. Sellers, Penn. Sup. Ct, 4 Brewster, 42; Field v. Lewis, Seten, 4th Ed. 237. The law will not allow one man to sell his goods as those of another by the use of similar labels. Perry v. Truefitt, 6 Beavan, 66; Croft v. Day, Id., 84; Taylor v. Carpenter, 11 Paige, 292; Coffeen v. Brinton, 5 McLean, 256; Taylor v. Taylor, 2 Eq. Rep., 290; Farina v. Silverlock, 2 Jurist (JV. S.~), 1008; Brooklyn White Lead Co. v. Masaury, 25 Barb., 416; Edels- ton v. Edelston, 9 Jurist, (JV. S.), 479; Boardman v. The Meriden Britannia Co., 35 Conn., 402; Cohan v. Crump, 70 N. Y., 573. A transfer and succession of business of an article carries with it its trade-marks by implication. Shipwright v. Clements, 19 W. R., 599; The Congress and Empire Spring Co. v. The High Rock Spring Co., 45 N. Y., 291. The law presumes when one inten- tionally uses or closely imitates another's trade-marks, merchan- dise, or manufactures, that he does it for the fraudulent purpose of inducing the public or those dealing in the article to believe that the goods are those made or sold by the latter, and of sup- planting him in the good -will of his trade or business. Taylor v. Carpenter, 11 Paige, 292. The rule is that the Court will enjoin any imitation calculated to deceive ordinary purchasers. Craw- shay v. Ttwmpson, 4 Man. 6° G., 385; Davis v. Kendall, 2 R. I., 556; Holmes v. Holmes, &-Y., Company, 37 Conn., 278; IFotherspoon v. Currie, 22 L. T. R., (JV. S.), 260; Hookman v. Pottage, 26 L. T. R., (JV. S.'), 755. To be enjoinable it is not necessary that the imitation should be complete; the imitation may be limited and partial, and still be enjoinable. Lockwood v. Bostwick, 2 Daly (JV. K), 521; Franks v. Weaver, 10 Beavan, 2 9T> Coffeen v. Brinton, 4 McLean, 516; Shrimpton v. Laight, iS Beavan, 164; Walton v. Crowley, supra; Clark v. Clark, 25 Barbour, (JV. Y), 76; Brooklyn White Lead Company v. Masaury, Id., 416; Hostetter v. Bowinkle, 1 Dillon, 329. To be enjoinable it is not requisite that the imitation should be intentionally decep- tive. Willington v. Fox, 3 Mylne 6- Cr., 338; Dale v. Smithson, 12 Abb. Pr. R., (JV. Y). It is no defence that the imitator in- APRIL, 1883. 787 118 Manhattan Medicine Co. vs. Wood, et al. forms purchasers of the imitation. It is no answer for the defend- ants to say that they sold the bitters as • theirs. Coats v. Hol- brook, 2 Sand/. Ch., 586; Chappel v. Davidson, 2 Kay&*J., 123. It is sufficient to establish a case for relief to show that the imita- tion has led or is likely to lead to mistakes. Clement v. Mad- dick, 5 Jurist, (TV. S.~), 592. The plaintiff, in trade-mark cases, is entitled to relief, though the respondent did not know that the mark used was a trade-mark. Kindham v. Bolton, 15 Irish Ch., 75; Harrison v. Taylor, n Jurist, (JV. S.), 408; Hall v. Barrows, 10 Id., (N. S.), 55; Ainsworth v. Wormsley, 12 Id. , 205. The fact that the trade-marks were used in common by the several owners thereof, did not make them common property as to the world. Condy v. Mitchell, 26 W. R., 269; Motley v. Dowman, 3 My. (Sr 3 Cr. , 1; Robinson v. Finlay, 27 W. R. 294; Weston v. Ketcham, 39 N. Y. Superior Court, 54; Rogers v. Taintor, 97 Mass., 291; Sohl v. Geisendorf, 1 Wilson, (Jnd.~), 60. No Statute of Limitations bars the plaintiff of protection of its trade-marks. Taylor v. Carpenter, 3 Story, 458; Taylor v. Carpenter, 2 Wood •& M. , 1 . Mr. Thorndike Saunders, also for appellant. Mr. William Henry Clifford, for appellees. Mr. Justice Field delivered the opinion of the Court. After reciting the facts as stated above, he said: In the view we take of the case, it will not be necessary to con- sider the first defence mentioned, nor the second, so far as to determine whether the right to use the words mentioned as a trade-mark was forfeited absolutely by the assignor's misrepresenta- tions as to the manufacture of the article. It is sufficient for the disposition of the case, that the misrepresentation has been con- tinued by the complainant. 1. A Court of Equity will extend no aid to sustain a claim to a trade-mark of an article which is put forth with a misrepresenta- tion to the public as to the manufacturer of the article, and as to the place where it is manufactured, both of which particulars were ■original circumstances to guide the purchaser of the medicine. 788 SUPREME COURT OF UNITED STATES. Manhattan Medicine Co. vs. Wood, et al. X X 3 It is admitted that whatever value the medicine possesses was given to it by its original manufacturer, Moses Atwood. He lived in Georgetown, Massachusetts. He manufactured the medi- cine there. He sold it with the designation that it was his preparation, "Atwood's Vegetable Physical Jaundice Bitters,'! and was manufactured there by him. As the medicine was tried and proved to be useful, it was sought for under that designation, and that purchasers might not be misled, it was always accom- panied with a label, showing by whom and at what place it was prepared. These statements were deemed important in promot- ing 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 state- ments had ceased to be true. It is not honest to state that a medicine is manufactured by Moses Atwood, of Georgetown, Massachusetts, when it is manufactured by the Manhattan Medi- cine Company in the City of New York. Any one has an unquestionable right to affix to articles manu- factured by him a mark or device not previously appropriated, to distinguish them from articles of the same general character manu- factured and sold by others. He may thus notify the public of the origin of the article and secure to himself the benefits of any particular excellence it may possess from the manner or materials of its manufacture. His trade-mark is both a sign of the quality of the article and an assurance to the public that it is the genuine product of his manufacture. It thus often becomes of great value to him, and in its exclusive use the Court will protect him against attempts of others to pass off their products upon the public as his. This protection is afforded not only as a matter of justice to him,, but to prevent imposition upon the public. Manufac. Co. v. Trainer, 101 U. S., 51. 2. The object of the trade-mark being to indicate, by its mean- ing or association, the origin or ownership of the article, it would seem that when a right in its use is transfered to others, either by act of the original manufacturer or by operation of law, the fact of transfer should be stated in connection with its use; otherwise a deception would be practiced upon the public, and the very fraud APRIL, 1883. 789 118 Manhattan Medicine Co. vs. Wood, et al. accomplished, to prevent which Courts of Equity interfere to pro- tect the exclusive right of the original manufacturer. If one affix to goods of his own manufacture signs or marks which indicate that they are the manufacture of others, he is deceiving the public and attempting to pass upon them goods as possessing a quality and merit which another's skill has given to similar articles, and which his own manufacture does not possess in the estimation of pur- chasers. To put forth a statement, therefore, in the form of a. circular or label attached to an article, that it is manufactured in a particular place, by a person whose manufacture there had acquired a great reputation, when, in fact, it is manufactured by a differ- ent person at a different place, is a fraud upon the public which no Court of Equity will countenance. This doctrine is illustrated and asserted in the case of The Leather Cloth Company, {limited') v. The American Leather Cloth Company, {limited'), which was elaborately considered by Lord Chancellor Westbury, and afterwards in the House of Lords on appeal from his decree. 4 DeG.,J. & S., 137, and 11 House of Lords' Cases, 523. In that case, an injunction was asked to restrain the defendant from using a trade-mark to designate leather cloth manufactured by it, which trade-mark the complainant claimed to own. The article known as leather cloth was an American invention, and was originally manufactured by J. R. & C. P. Crockett, at New- ark, New Jersey. Agents of theirs sold the article in England as « Crockett's Leather Cloth." Afterwards a company was formed entitled "The Crockett International Leather Cloth Company," and the business previously carried on by the Crocketts was trans- ferred to this company, which carried on business at Newark, in America, as a chartered company, and at West Ham, in England, as a partnership. In 1856, one Dodge took out a patent in Eng- land for tanning leather cloth and transferred it to this company. In 1857 the complainant company was incorporated, and the In- ternational Company sold and assigned to it the business carried on at West Ham, together with the letters patent, and full author- ity to use the trade-mark which had been previously used by it m England. A small part of the leather cloth manufactured by the 79° SUPREME COURT OF UNITED STATES. Manhattan Medicine Co. vs. Wood, et al. 1 1 & complainant company was tanned or patented. It, however, used a label which represented that the articles stamped with it were the goods of the Crockett International Leather Cloth Company; that they were manufactured by J. R. & C. P. Crockett; that they were tanned leather cloth; that they were patented by a patent obtained in 1856, and were made either in the United States or at West Ham, in England. Each of these statements or repre- sentations was untrue so far as they applied to the goods made and sold by the complainant. The defendant having used on goods manufactured by it a mark having some resemblance to that used by the- complainant, the latter brought suit to enjoin the use. Vice -Chancellor Wood granted the injunction, but on appeal to the Lord Chancellor the decree was reversed and the bill dismissed. In giving his decision the Lord Chancellor said that the exclusive right to use a trade- mark with respect to a vendible commodity is rightly called prop- erty; that the jurisdiction of the Court in the protection of trade- marks rests upon property, and that the Court interferes by in- junction because that is the only mode by which property of that description can be effectually protected. But he added: " When the owner of the trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff, should not in his trade-mark, or in the business connected with it, be himself guilty of any false or misleading representation; for if the plaintiff makes any material false statement in connection with the property he seeks to protect, he loses, and very justly, his right to claim the assistance of a Court of Equity." .And again: " Where a symbol or label, claimed as a trade-mark, is so con- structed or worded as to make or contain a distinct assertion which is false, I think no property can be claimed in it, or, in other words, the right to the exclusive use of it cannot be maintained." When the case reached the House of Lords the correctness of this doctrine was recognized by Lord Cranworth, who said that of the justness of the principle no one could doubt; that it is founded in honesty and good sense, and rests on authority as well APRIL, 1883. 791 118 Manhattan Medicine Co. vs. Wood, et al. as on principle, although the decision of the House was placed on another ground. The soundness of the doctrine declared by the Lord Chancellor has been recognized in numerous cases. Indeed, it is but an ap- plication of the common maxim that he who seeks equity must present himself in Court with clean hands. If his case discloses fraud or deception or misrepresentation on his part, relief there will be denied. Long before the case cited was before the Courts, this doctrine was applied when protection was sought in the use of trade-marks. In Piddingv. How, 8 Simons, 477, which was before Vice-Chan- cellor Shad well in 1837, it appeared that the complainant was engaged in selling a mixed tea, Composed of different kinds of black tea, under the name of "Howqua's Mixture," in packages having on three of their sides a printed label with those words. The defendant having sold tea under the same name, and in pack- ages with similar labels, the complainant applied for an injunction to restrain him from so doing. An ex parte injunction, granted in the first instance, was dis- solved, it appearing that the complainant had made false state- ments to the public as to the teas of which his mixture was com- posed, and as to the mode in which they were procured. "It is a clear rule," said the Vice-Chancellor, "laid down by Courts of Equity, not to extend their protection to persons whose case is not founded in truth." In Perry v. Truefitt, 6 Beav., 66, which was before Lord Lang- dale, Master of the Rolls, in 1842, a similar ruling was had. There it appeared that one Leathart had invented a mixture for the hair, the secret and recipe for mixing which he had conveyed to the plaintiff, a hair-dresser and perfumer, who gave to the com- position the name of " Medicated Mexican Balm," and sold it as "Perry's Medicated Mexican Balm." The defendant, one True- fitt, a rival hair-dresser and perfumer, commenced selling a com- position similar to that of plaintiff, in bottles with labels closely resembling those used by him. He designated his composition and sold it as "Truefitt's Medicated Mexican Balm." The plain- tiff thereupon filed his bill, alleging that the name or designation 792 SUPREME COURT OF UNITED STATES. Manhattan Medicine Co. vs. Wood, et al. 1X8 of "Medicated Mexican Balm" had become of great value to him as his trade-mark, and seeking to restrain the defendant from its use. It appeared, however, that the plaintiff, in his advertise- ments to the public, had falsely set forth that the composition was "a highly concentrated extract from vegetable balsamic produc- tions" of Mexico, and was prepared from "an original recipe of the learned J. F. Von Blumenbach, and was recently presented to the proprietor by a very near relation of that illustrious physiolo- gist;" and the Court, therefore, refused the injunction, the Mas- ter of the Rolls holding that, in the face of such a misrepresenta- tion, the Court would not interpose in the first instance, citing with approval the decision in the case of Pidding v. How. In a case in the Superior Court in the City of New York — Fet- ridge v. Wells, 4 Abbott, (iV. K), 144 — this subject was very elaborately and ably treated by Chief Justice Duer. The plain- tiff there had purchased a recipe for making a certain cosmetic, which he sold under the name of "The Balm of a Thousand Flowers. ' ' The defendants commenced the manufacture and sale of a similar article, which they called " The Balm of Ten Thou- sand Flowers." The complainant, claiming the name used by him as a trade-mark, brought suit to enjoin the defendants in the alleged infringement upon his rights. A temporary injunction was granted; but afterwards, upon the coming in of the proofs, it was dissolved. It appeared that the main ingredients of the com- pound were oil, ashes and alcohol, and not an extract or distil- lation from flowers. Instead of being a balm, the compound was a soap. The Court said it was evident that the name was given to it and used to deceive the public, to attract and im- pose upon purchasers, that no representation could be more mate- rial than that of the ingredients of a compound recommended and sold as a medicine; that there was none so likely to induce confidence in its use, and none, when false, that would more probably be attended with injurious consequences. And, it also said: "Those who come into a Court of Equity, seeking equity, must come with pure hands and a pure conscience. If they claim relief against the frauds of others, they must themselves be APRIL, I8S3. 793 118 Manhattan Medicine Co. vs. Wood, et al. free from the imputation. 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 privilege 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 char- acter. ' ' See also Seabury v. Grosvenor, 14 Blatchford, 262; Hobbs v. Francais, 19 How., (N. K,) 567; Council v. Reed, 128 Mass., 477; Palmer v. Harris, 60 Penn. St., 156. The doctrine enun- ciated in all these cases is founded in honesty and good sense ; it rebukes fraud and encourages fair dealing with the public. In conformity with it, this case has no standing before a Court of Equity. 3. The decree of the Court below dismissing the bill must therefore be affirmed ; and it is so ordered. 794 SUPREME COURT, STATE OF PENNSYLVANIA. Desmond's Appeal. 1X9 119 SUPREME COURT, STATE OF PENNSYLVANIA. In Equity. Desmond's Appeal. Decided 9 April, 1883. Reported 103 Penn. St. Rep., 126. "Samaritan" Case. 1. A bill filed to restrain an alleged infringement of a trade-mark based upon labels or wrappers, which does not aver a similarity or imitation in the appearance o£ the labels or wrappers, is insufficient and will be held bad on demurrer. 2. The appropriation as a trade-mark of the word "Samaritan" in one com- bination of words, does not prevent its being used as a trade-mark in any other combination. March 27th, 1883. Before Mercer, C, J., Gordon, Pax- son, Trunkey, and Green, JJ., Sterrett and Clark, JJ., absent.. Appeal from the Court of Common Pleas, No. 2 of Philadel- phia County. In equity of January Term, 1883, No. 240. This was an appeal by Thomas Desmond, trading as Desmond & Co., from a decree of the said Court, sustaining a demurrer to APRIL, 1883. 795 119 Desmond's Appeal. and dismissing a bill in equity, filed by said Desmond & Co. against Mahlon K. Smith, Mahlon N. Kline, Washington J. Sel- lers and Silas W. Hellerman, trading as Smith, Kline & Co., to restrain the defendants from alleged infringement of certain reg- istered trade-marks, which were used- in course of plaintiff's busi- ness. The plaintiff averred in his bill that he had engaged in the manufacture of certain compound medicines since 1863, that during that period he had used in their sale and advertisement certain trade-marks, which were duly registered in the office of the clerk of the United States District Court ; that the said medi- cines have been and are distinguished by the names of "Samari- tan's Gift," and "Samaritan's Root and Herb Juices," which names are the aforesaid trade-mark and are of great value to the plaintiff in designating the said medicine ; that one Dr. S. A. Richmond, trading under the name of Dr. S. A. Richmond & Co., and doing business in the City of St. Joseph, in the State of Missouri, intending to invade the rights of complainant, has com- menced to manufacture a compound medicine of a character similar to one of the said medicines manufactured and sold by complainant, and has sold and advertised the same under the trade-marks of complainant, saving a slight alteration in the same, to wit: By substituting the word " Nervine" in the trade- mark of the said Dr. S. A. Richmond & Co., for the words "Gift" and " Root and Herb Juices" in complainant's trade- mark, and the said Dr. S. A. Richmond & Co. have recently largely advertised the same in various parts of the United States, and particularly in State of Pennsylvania, where complainant's medicines are well-known and highly valued. And complainant further complains that by the use of his trade-mark, altered as aforesaid, the said Dr. S. A. Richmond & Co. well knew that they would be able to invade the rights -of complainant, and that the public would be readily deceived in mistaking the medicines so vended by complainant as aforesaid. Further, that the use of his trade-marks so altered as aforesaid has deceived many persons who were willing and anxious to purchase the medicines of com- plainant ; that the said firm of Smith, Kline & Co. are now en- 796 SUPREME COURT, STATE OF PENNSYLVANIA. Desmond's Appeal. 119 gaged in offering for sale the said medicines of the said Dr. S. A. Richmond & Co., under the name of "Samaritan Nervine," at their place of business, Nos. 309 and 311 North Third Street, in the City of Philadelphia ; that the said Smith, Kline & Co. have sold and attempted to sell the said medicine with the trade-marks, labels and wrappers of complainant, so altered as aforesaid, to the great diminution of complainants' profits and business. The plaintiff therefore prayed for a perpetual injunction and an account. An amended bill was subsequently filed, joining S. A. Richmond as co-defendant, and charging further that the said S. A. Richmond "did willfully and knowingly and with intent and design to imitate the same, use the word « Samaritan ; ' * * * that by reason of the imitation and copying of the label thereof by the said Richmond, the public are deceived and led to believe it is the complainants' article they are buying and that complain- ant is a great loser thereby. ' ' The defendants demurred, assigning the following reasons, inter alia: Third. Because the name "Samaritan's Gift" and "Samaritan's Root and Herb Juices," do not constitute trade- marks within the meaning and protection.of the law in such cases. Seventh. Because it is not alleged that there is any imitation or similarity between the appearance of the labels and wrappers alleged to be used by the defendants. Eighth. Because it ap- pears by said bill that the only similarity in the names or words used by the defendants is in the use of the name "Samaritan," and that the name "Samaritan," being the name of a place, and, further, having a well understood, and popular use, derived from the parable of the Good Samaritan, whereby it is popularly used to signify or describe an act, matter, or thing of a charitable or benevolent nature for the purpose of relieving the wounded, sick, or afflicted, no trade-mark can be taken in such a word, it be- longing in this use to the general popular vocabulary. The Court after argument, sustained the demurrer and entered a decree dismissing the bill. The plaintiff thereupon took this appeal, assigning for error the said decree of the Court. APRIL, 1883. 797 119 Desmond's Appeal. Pierce Archer (R. P. Deckert with him), for the appellant. To make out a case of infringement of a trade-mark exact simi- larity is not required, as that would always enable the wrong- doer to evade responsibility for his wrongful acts. 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, it is sufficient: McLean v. Fleming, 6 Otto, 245; Shep- pard v. Stuart, 7 W. JV. C, 498. Any words, phrase, symbols, figure, name, letter, form or device may be used as a trade- mark, and will be protected as such. Thus "Eureka" was upheld as a good trade-mark in Allegheny Pert. Co. v. Wood- side, 1 Hughes, 115; "Charter Oak" in Filley v. Hassett, 44 Mo., 173; '■'■Excelsior 1 '' in Sheppard v. Stuart, supra; "Anatolia" in McAndrew v. Bassett, 10 Jurist,, (N. S.), 550; "Hero" in Rowley v. Houghton, 2 Brews., 303; "Keystone Line" in Winsor v. Clyde, 9 Phila., 513. That the defendants intended to imitate our trade-mark and did imitate it to our injury is ad- mitted by them, when they entered a general demurrer. Ins. Co, v. Drach, 12 W. N. C, 379. Rowland Evans, and R. L. Ashhurst, for the appellee. The demurrer admits only such facts as are well pleaded and not such as are repugnant to each other. 1 Daniel' s Chancery Practice, 566. A mere English adjective or a word which lacks originality cannot claim protection as a trade -mark. Raggett v. Findlater, 17 L. R. Eg., 37; Canal Co. v. Clark, 13 Wall., 320; Glendonlron Co. v. Uhler., 25 .S., 470. That such a word as Samaritan, in its derivative sense a synonym for philanthropic, can- not be exclusively appropriated as a trade-mark, is shown by the fol- lowing cases, in which the words "Schiedam Schnapps," "Charity," "Gold Medal," Centennial," "Mexican Balm," "Night-Bloom- ing Cereus," "Club House," were held to lack the requisite origi- nality. Wolf v. Goulard, i'8 Howard Pr., 64; Isaacs v. Daly, 39 N. Y. Superior Ct., 7 /. & S., 511; Taylor v. Gillies, 5 9 N. Y., 331; Hartell v. Viney, 2 W. JV., 602; Perry v. Truefitt, 6 Beav., 66; Phalon v. Wright, 5 Phila., 464; Corwin v. Daley, 7 Bos., 222. 798 SUPREME COURT, STATE OF PENNSYLVANIA. Desmond's Appeal. X19 The opinion of the Court was filed April 9th, 188-3. Per Curiam. — The original bill declares "that the said medi- cines have been and are distinguished by the names of 'Samar- itan's Gift,' and 'Samaritan's Root and Herb Juices,' and that the said names are the trade-marks of the same, together with certain labels and wrappers hereto annexed marked 'Exhibit A,' and by the said trade-marks the same are distinguished from all other compound medicines." 1 . It does not aver an imitation or similarity in the appearance of the labels and wrappers. An examination of the two shows they are quite dissimilar in names and appearance. It is true •each has the word "Samaritan," but in such different form and combination of words as to preclude one medicine being taken for the other. We do not think the amended bill removes the diffi- culty of the appellant. 2. The appropriation of the word "Samaritan" in one combi- nation of words does not prevent its being used in all other com- binations. Decree affirmed and appeal dismissed at the costs of the appel- lant. 7 Outerbridge, 9. MAY, 1883. 799 1 SO Taper-sleeve, &c. of Pemia. vs. Taper-sleeve, &c. of Iowa. 120 CIRCUIT COURT UNITED STATES, WESTERN DISTRICT OF PENNSYLVANIA. In Equity. Gray, AND OTHERS, doing business under the firm- name of Taper-sleeve Pulley Works, Citizens of the State of Pennsylvania, vs. Taper-sleeve Pulley Works, a Corporation of the State of Iowa. Decided May, 1883. Reported 16 Federal Rep., 436. v "Taper-sleeve Pulley" Case. 1. Trade Name— Right to Sell Article — Injunction.— C, under the style of A. B. Cook & Co., was engaged for several years at Erie, Pennsylvania, in the manufacture and sale of sundry patented devices, to one of which he gave the name "taper-sleeve pulley," displaying on his factory the sign "Taper-sleeve Pulley Works." In 1876, his es- tablishment was sold by the sheriff to W., to whom C. assigned his patents. W. soon sold the establishment to one of the complainants, with the exclusive right to said patents for the territory east of the Mississippi River, and the right also to sell the devices west of said 800 U. S. C. C. WEST. DIST. OF PENNSYLVANIA. Taper-sleeve, &c. of Penna. vs. Taper-sleeve, &c. of Iowa. 1 SO river upon the payment of certain royalties, W. reserving to himself and assigns the right to sell on like terms east of said river. The complainants adopted as their trade name the designation "Taper- sleeve Pulley Works," and in'that name built up a large general trade throughout the United States. In 1882, W. sold to one Christian, the territorial right in said patents in certain States west of the Mississippi, with his reserved right to sell east of that river. Christian and his associates selected Uubuque, Iowa, as their place of manufacture, adopting as their firm-name "Farrar, Christian & Co.," but in Decem- ber, 1882, organized themselves into an Iowa corporation, assuming the corporate name "Taper-sleeve Pulley Works," and issued cata- logues, price-lists and advertisements which are almost exact fac sim- iles of those of the complainants. 2. Held, that while the Iowa corporation, having the right to make and sell the device called the "taper-sleeve pulley," had also the right to so designate the article and advertise itself as a manufacturer and vendor thereof, it had no right to assume the complainants' trade name, "Taper-sleeve Pulley Works," and the complainants were en- titled to equitable protection in the exclusive use thereof. 3. Foreign Corporation — Torts — Injunction. — For a tort committed by a foreign corporation within the State of Pennsylvania, such cdipo- ration is liable to be sued therein if found in the State in the person of an officer or agent upon whom process may be served. J. K. Hallock, for complainants. W. F. McCook, and Clark Olds, for defendants. Acheson, J.: For several years prior to December 16, 1876, A. B. Cook, Jr., under the business name of A. B. Cook & Co., was engaged at the City of Erie, Pennsylvania, in the manufacture and sale of wooden pulleys, pulleys with friction fastenings, dead-pulley rigs, shaft- hangers, etc., under certain letters patent of the United States of which he was then the sole owner. To the pulleys hav- ing friction fastenings Cook gave the name of "taper-sleeve pul- leys," and by that appellation they became known to the trade and public. 1 . On the building leased by him in which he carried on busi- ness, he displayed a sign which read < 'Taper-sleeve Pulley Works. ' ' Upon the date above-mentioned, on an execution against him, the MAY, 1883. 801 1 SO Taper-sleeve, &c. of Penna. vs. Taper-sleeve, &c. of Iowa. entire machinery, stock, etc., of his said establishment were sold by the sheriff to James R. Willard, to whom Cook assigned said patents. From December 16, 1876, to May 26, 1877, Willard was the proprietor of the establishment, and for most of that time he maintained an advertisement in a newspaper of general circulation at Erie, offering the machinery, etc., for sale, in which he designated the concern as the "Taper-sleeve Pulley Works." By an article of agreement dated May 26, 1877, Willard sold to A. H. Gray, one of the complainants, the said property, describ- ing it as "the property known as the Erie Wooden-pulley and Taper -sleeve Coupling Works," together, also, with the exclusive right to said patents for all that part of the United States lying east of the Mississippi River, (except the State of Minnesota;) the article providing that either party thereto, or his assigns, might sell goods manufactured under the patents within the territory of the other, paying for the privilege certain specified royalties; but until Willard or his assigns should engage in the manufacture within the reserved territory, Gray to have «the free privilege of selling therein. Immediately after his purchase Gray took possession of the said property and business, and forthwith adopted the designation t'Taper-sleeve Pulley Works" as his trade name; and under that style and title the entire business has since been continuously con- ducted, — at first, by Gray alone, and then by him and H. C. Crowell, the other complainant, copartners. When Gray took the works the business was confined to a small local trade; but the complainants, by their energy and a liberal expenditure of money, have built up a very large general trade all over the United States and in foreign countries. It is especially large in the States of Ohio, Indiana, Illinois, Wisconsin, Michigan, and Min- nesota. The complainants have agencies at Minneapolis, Chicago, Detroit, Saginaw, Cleveland, Toledo, Cincinnati, St. Louis, New Orleans, Baltimore, Atlanta, New York City, Rochester, and Buffalo, all of which advertise the complainants' wares as the goods of the "Taper-sleeve Pulley Works." The line of goods manufactured and sold by the complainants is much fuller and more complete than was that of A. B. Cook & Co. , and while but Si 802 U. S. C. C. WEST. DIST. OF PENNSYLVANIA. Taper-sleeve, &c. of Pemia. vs. Taper-sleeve, &c. of Iowa. X SO one of the articles made by them can be called a taper-sleeve pul- ley, all of whatever nature have been and are stamped or marked "Taper-sleeve Pulley Works," and by that name the complain- ants' business and their goods are everywhere known. By contract dated July 14, 1882, the said Willard sold and granted to Charles E. Christian, of the said City of Erie, the right to manufacture and sell articles under the said patents in Minnesota, and nine other named States and Territories lying west of the Mississippi River, together with the right to sell such articles east of that river under the stipulations contained in the agreement with Gray of May 26, 1877. Christian soon asso- ciated with himself Charles W. Farrar, Edwin Bindley, and Clark Olds. These persons selected Dubuque, Iowa, as their place of manufacture, and adopted as their firm-name "Farrar, Christian & Co.," and used that style and title (although they had not yet begun to manufacture) until December 13, 1882, when they or- ganized themselves as a corporation under the laws of the State of Iowa, by filing articles of incorporation with the county recorder, assuming the corporate name of "Taper-sleeve Pulley Works.'' The corporation has issued and circulated catalogues, price- lists, and advertisements in the western district of Pennsylvania, and generally throughout the United States, in the name of "Taper-sleeve Pulley Works," some of which are exact fac similes of the complainants' catalogues, price-lists, and adver- tisements, except that the words "Dubuque, Iowa," are substituted for "Erie, Pennsylvania," and the words "A. H. Gray, treasurer," and "H. C. Crowell, superintendent," are omitted. The com- plainants, have used a green label on their taper-sleeve pulleys containing directions for their' use. The defendant company has had printed at Erie, off the form used for the complainants, labels identical in color and otherwise with those of the complainants, and is using them on the article of its manufacture. It has also had printed at Erie circulars from the same type and wood cuts used for printing the complainants' circulars, with such changes only as are necessary to adopt them to its use. On all goods sold by the defendant the name "Taper-sleeve Pulley Works' ' is marked or branded, with the addition "of Dubuque, Iowa." MAY, 1883. 803 ISO Taper-sleeve, &c. of Penna. vs. Taper-sleeve, &c. of Iowa. The foregoing are the material facts of the case, and by the evidence before the Court are established clearly. There are affidavits also to show that, by reason of defendant's said acts, considerable confusion has already arisen among the complain- ants' customers, some supposing the complainants have moved their business to Dubuque, and others thinking they have estab- lished a branch concern there. The complainants seek to have the defendant company re- strained by injunction from using the name "Taper-sleeve Pulley Works." Are they entitled to such relief? It will be observed that the complainants do not claim to have the exclusive right to use the descriptive appellation, "Taper- sleeve Pulley." They freely admit that the defendant, having the right to make and sell that device, has also the right to desig- nate it by the name it has acquired in the trade. Nor do they question the right of the defendant company to advertise itself as a manufacturer and vendor of taper-sleeve pulleys. They object not to honest rivalry. Their complaint is against what they assert is unfair competition, by reason of the unnecessary and hurtful appropriation by the defendant of their long-used and established trade name, by which their wares are everywhere favorably known, -and upon which their good business reputation rests. That a lawful trade-mark, whether consisting of words or de. vices, is entitled to equitable protection, is now so well understood that it is scarcely necessary to cite authorities in support of the principle. "Everywhere" (says the Supreme Court in McLean v. Fleming, 96 U. S., 252), "Courts of justice proceed upon the ground that a party has a valuable interest in the good-will of his trade, and in the labels or trade-mark which he adopts to enlarge and perpetuate it." Hence, one will be protected in the enjoy- ment of his trade name to the same. extent that trade-marks are protected, and for the like reason. Holmes, Booth cV Hayden v. Holmes, Booth & Atwood Manuf'g Co., 37 Conn., 278; New by v. Ohio Cent. R. Co., Deady, 609; Lee v. Haley, L. R., 5 Ch. ■App-, 155. "It is," says Giffard, L. J., "a fraud on a person who has established a trade, and carries it on under a given name, 804 U. S. C. C. WEST. DIST. OF PENNSYLVANIA. Tapev-sleeve, &c. of Fenna. vs. Taper-sleeve, &c. of Iowa. 1 20 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 thebelief that they are dealing with the per- son who has given a reputation to the name." Id. , 161. The present case turns upon the determination of the question, had Gray the right to assume the exclusive use of the name ' ' Taper-sleeve Pulley Works' ' as a business designation ? And why not? True, it did not originate with him, but this of itself is an immaterial circumstance. Canal Co. v. Clark, 13 Wall., 311, 322. It did, however, originate with his predecessor in business, A. B. Cook, Jr., and whatever right he may have ac- quired therein impliedly passed, I incline to think, to Willard, the sheriff's vendee, and from him to Gray. Kerr, Inf., ,479. But if not, Cook having abandoned the same, Gray had the right to appropriate it {Browne, Trade-Marks, sees. 676, 677), if it could be lawfully selected as a trade name. Was it without the limits of rightful selection, as the defendant maintains? It is un- doubtedly accepted law (as we see by reference to Amoskeag- Manufg Co. v. Spear, 2 Sand/., 606), that no one has the right to the exclusive use of any words which have no relation to the origin or ownership of the goods, but are only meant to indicate their names or quality. Speaking on this point, Mr. Justice Strong, in Canal Co. v. Clark, supra, said: "The trade-mark must, either by itself, or by association, point distinctly to the origin or ownership of the article to which it is applied." And two rules are stated by him in restriction of the right of selection. "No one can claim protection for the exclusive use of a trade name or trade-mark which would practically give him a monopoly in the sale of any goods other than those produced or made by himself * * * Nor can a generic name, or name merely descrip- tive of an article of trade, of its qualities, ingredients, or char- acteristics, be employed as a trade-mark, and the exclusive use of it be entitled to legal protection." Is there anything in these rules which the defendant company can invoke to justify it in assuming the business name hitherto in MAY, 1883. 805 1 SO Taper-sleeve, &c. of Pemia. vs. Taper-sleeve, &c. of Iowa. the exclusive use of the complainants? The title when adopted by Gray was novel as a trade name — it is certainly a very pecu- liar trading appellation, — and by long association it has become inseparably identified with the complainants' business, pointing •directly to the origin of all the wares, of every kind, of their manufacture. The title "Taper-sleeve Pulley Works" is not merely descriptive of an article of manufacture or trade, as the words "Lackawanna coal" were (in Canal Co. v. Clark) held to be. Nor does this name, by any means, give the complainants a mo- nopoly in the manufacture and sale of the device called the "taper- sleeve pulley." The defendant may unrestrictedly use that name as descriptive of such pulleys of its manufacture. The distinction between such use of those words and the assumption of the com- plainants' trade name is of easy comprehension, and was well ■understood by the corporators composing the defendant company, whose original purpose it was to carry on their operations under the firm-name of "Farrar, Christian & Co." In Holmes, Booth 6° Hayden v. Holmes, Booth &s° Atwood Manuf'g Co., supra, the defendants were enjoined from using in their corporate title the names of "Holmes" and "Booth," al- though stockholders of the company. In Lee v. Haley, supra, the plaintiff, who had carried on business for some years at No. 22 Pall Mall, under the style of "The Guinea Coal Company," had an injunction to restrain the defendant from carrying on a rival business in Pall Mall under the name "The Pall Mall Guinea Coal Company," notwithstanding it was shown that other dealers in coal calling themselves Guinea coal companies, some with pre- fixes and others without, were carrying on business at various places elsewhere, but in such situations that they were not likely to be mistaken for the plaintiffs. In Brooklyn White Lead Co. v. Masaury, 25 Barb., 416, the defendant, a white-lead manufacturer in Brooklyn, was restrained from the use of the word "Company" or "Co.," although, confessedly, he had the right to describe his -white lead as Brooklyn white lead. It is true, in each of these cases there were circumstances sug- gestive of fraud, or from which at least might be legitimately in- ferred an intention on the part of the respective defendants to 806 U. S. C. C. WEST. DIST. OF PENNSYLVANIA. Taper-sleeve, &c. of Penna. vs. Taper-sleeve, &c. of Iowa. ISO benefit themselves at the expense of the other party. But in this regard how is it with the defendant here ? How comes it that the title "Farrar, Christian & Co." is discarded and the trade name of the complainants substituted ? Why the close imitation by the defendant of the complainants' labels and circulars? The de- fendant company, indeed, in its answer, stoutly denies any fraudu- lent purpose or intention to injure the complainants. But the company must be judged by its acts rather than by its words. It requires a great stretch of charity to acquit the defendant of actual wrongful purpose. But,' whatever the secret intent, the stubborn fact remains that the conduct of the defendant does tend to induce the public belief that its establishment is a branch of the complainants or connected therewith, and it must be taken to intend the natural consequences of its acts. The defendant justifies under the contract of sale between Wil- lard and Christian. But Willard did not thereby profess to pass to Christian the right to use the name " Taper -sleeve Pulley Works;" nor was it in his power to do so. What Christian did acquire, and the defendant may freely exercise, is the right to make and sell the taper-sleeve pulley, and to so designate the article, just as the Brooklyn manufacturer had the conceded right to call his product Brooklyn white lead. It is, however, urged that it is impossible that the works at Dubuque, Iowa, should be confounded with the works at Erie, Pennsylvania, and highly improbable that any one should be mis- led, as the words, "of Dubuque, Iowa," are plainly added to the defendant's name on its goods, and also appear in all its adver- tisements, circulars, etc. But the business of the complainants and defendant, respectively, is not local; their trade is co-extensive with the whole country, and even passes beyond. The complain- ants' most fruitful field of operations lies nearer to Dubuque than to Erie, and into that field the defendant may enter to sell under the reservation in the contract between Willard and Gray. There is credible evidence that no little confusion has actually arisen, and I think such is the unavoidable result of the double use of the same trade name in this business. MAY, 1883. 807 120 Taper-sleeve, &c, of Perma. vs. Taper-sleeve, &c. of Iowa. 2. In my judgment, the complainant's right to equitable pro- tection is as clear, and the necessity for the exercise of the restraining power of the Court is as urgent, as in any' case to which my attention has been called in which the like relief was granted. But the jurisdiction of the Court is disputed, the defendant be- ing a foreign corporation, and a motion has been made to set aside the service of the subpoena and dismiss the bill. The return of the marshal shows a service, on its face entirely regular, upon the president of the corporation, Edwin Bindley; and as a corporation is liable to be sued in a State other than that of its creation and citizenship, if " found" therein, the only question to be settled here is whether the defendant was amenable to the process of the State Courts for the cause of action complained of and the service authorized by the State law. Ex parte Schollenberger, 96 U. S., 369; Merchants' Manuf g Co. v. Grand Trunk Ry. Co., 13 Fed. Rep., 358. In Pennsylvania, by the Act of March 21, 1849, ' n the commencement of any suit or action against a foreign cor- poration, process may be served upon any of its officers, agents, or engineers. Pur. Dig., 287; Lehigh Co. v. Boom Co., 6 Week- ly Notes Cas., 222; Coxe v. Camden & A. R. Co., n Weekly Notes Cas., 386. And suits may be instituted against a foreign corporation by service of process conformably to the Act of 1849, notwithstanding it has failed to establish a place of business in the State, and appoint an agent upon whom service may be made agreeably to the State Constitution and Act of April 22, 1874. Hagerman v. Empire State Co., 97 Pa. St., 534. The president of the defendant company was not in this State casually when served by the marshal. He is a citizen of Pennsyl- vania, and a permanent resident in the western district. The bill charges that he transacts "the business of president of said cor- poration at Pittsburg, Pennsylvania;" and although this is traversed, there is at least slight evidence tending to sustain the averment. However, it is shown that the defendant has procured, labels and circulars, in infringement of the complainants' rights, to be printed within the western district of Pennsylvania, and has caused such circulars to be distributed therein. This, in connec- 808 U. S. C. C. WEST. BIST. OF PENNSYLVANIA. Taper-sleeve, &c. of Pemia. vs. Taper-sleeve, &c. of Iowa. ISO tion with the president's residence therein, it seems to me, is "doing business" sufficiently to make it amenable to the Courts here. But, after all, the foundation Of this suit is a continuing tort, wide-spread in its nature and results; the company's tortious acts being in part actually committed within this State and dis- trict. 3. Now, for a tort committed by a foreign corporation within this State, I have no manner of doubt the corporation may be sued here, if found within the the State in the person of an officer or agent upon whom process may be served. The defendant's motion must be denied. A preliminary injunction will be allowed. Let counsel prepare and submit the form of decree. MAY, 1883. 809 X 2 1 Eggers vs. Hink. 121 SUPREME COURT, STATE OF CALIFORNIA. In Equity. J. F. G. Eggers vs. P. H. Hink. Decided 30 May, 1883. Reported 63 Cal., 445. "Philadelphia Beer Barrels" Case. TRADE-MARK— BUSINESS SIGNS. The object of a trade -m ark is to indicate by its own meaning, or by asso- ciation, the origin or ownership of the article to which it is applied. A sign placed over a man's place of business with a row of beer barrels painted on it, and the letters "P. B." stamped on the head of the barrels, and the words "Depot of the Celebrated" placed above, and the words "Philadelphia Beer," placed below the barrels, would relate only to the description of the beverage dealt in by him, and cannot be protected as a trade-mark. •Appeal from the judgment of the Superior Court of the City of San Francisco. 8lO SUPREME COURT, STATE OF CALIFORNIA. Eggers vs. Hink. 121 The facts are sufficiently stated in the opinion of the Court. John H. Dickinson, for appellant, Cited, Shaffer v. Korbell, 9 Pac. C. L.J., 96; 8 Derringer v. Plate, 29 Cal., 298; Lawrence Manufacturing Co. v. Lowell Hosiery Mills, 10 The Repot ter, 809; Fetridge v. Merchant, Cox's Am. Trade-Mark Cases, 194; Burke v. Cassin, 45 Cal., 469; Falkinburg v. Lucy, 35 Cal., 35; sec. 3199, Pol. Code; Hier v. Abrahams, 82 N. Y., 519; Coddington's Digest of Trade- Marks, sees. 985, 261, 1018. William Leviston and T. D. Riordan, for respondent, Cited, sec. 991 of the Civil Code; sec. 3196 Pol. Code; Browne on Trade-Marks, sec. 133; Amoskeag Co. v. Spear, 2 Sandf, 605; Amoskeag Co. v. Trainer, The Reporter, Sept. 22, 1880; Moorman v. Hoge, 2 Sawy., 78; Falkinburg v. Lucy, 35 Cal. , 501; Choy- inski v. Cohn, 39 Cal., 501; Burke v. Cassin, 45 Cal., 467; Wotherspoon v. Gray, 36 Scot. Jur., 24; Perry v. Truefitt, 6 Beat'., 72; Kinney v. Birch, Codd's Digs. Tr.-M., 1037; ^a^- £>f# v. Findlater, Law R., 17 Eq., 29; Stokes v. Landgraff, 17 Barb., 608; Corwin v. Daley, 7 Bosw., 222. Per Curiam: — The action is to recover damages for a violation of the plaintiff's alleged trade-mark, and to restrain the use of it by the defendant in the future. The deficiency of the complaint is the question for consideration. 1 . According to its averments the plaintiff is engaged in con- ducting a saloon business in the City and County of San Francisco, particularly for the sale of a certain kind of beer known as Phila- delphia Beer; and what he seeks to protect as a trade-mark, and which is used by him as a sign over the doors of his place of busi- ness, and as a label for the beer bottled by him, consists of a row of beer barrels so painted upon the sign and printed upon the labels as to show the top, head and outline of each barrel, with the letters "P. B." indicating and standing for Philadelphia Beer, stamped or printed upon the head of each barrel, together with MAY, 1883. 8ll 1 S 1 Eggers vs. Hink. the words "Depot of the Celebrated" over, and the words "Philadelphia Lager Beer" below the row of barrels. The act of the defendant complained of is the erection by him over his place of business of a sign similar to that of the plaintiff, the chief difference being the insertion of the letters "F. B," indi- cating and standing for " Fredericksburger Beer," in lieu of the letters "P. B," and the insertion of the word " Fredericksburger" where the word "Philadelphia" appears on the sign and label of the plaintiff. The object of a trade-mark is to indicate by its own meaning, or by association, the origin or ownership of the article to which it is applied. Section 99 of our Civil Code pro- vides: "One who produces or deals in a particular thing, or conducts a particular business, may appropriate to his exclusive use, as a trade-mark, any form, symbol, or name which has not been so appropriated by another, to designate the origin or own- ership thereof, but he cannot exclusively appropriate any desig- nation or part of a designation, which relates only to the quality, or the description of the thing or business, or the place where the thing is produced, or the business is carried on " and by section 3196 of the Political Code it is declared: — ' ' The phrase < trade-mark ' as used in this chapter includes every description of word, letter, device, emblem, stamp, im- print, brand, printed ticket, label or wrapper, usually affixed by any mechanic, manufacturer, druggist, merchant or tradesman, to denote any goods to be imported, manufactured, produced, com- pounded, or sold by him, other than any name, word, or expres- sion generally denoting any goods to be of some particular class or description." We do not perceive that either the letters or words upon the plaintiff's sign or label, nor the device as a whole, in any manner indicated origin or ownership. A sign placed over a man's place of business with a row of beer barrels painted on it, would indi- cate that he sold beer; the letters "P. B." stamped on the heads of the barrels, and the words "Depot of the Celebrated" placed above, and the words "Philadelphia Beer" placed below the row of barrels, would indicate that he sold Philadelphia Beer. It 8l2 SUPREME COURT, STATE OF CALIFORNIA. Eggers vs. Hink. X 2 1 does not appear that the plaintiff is the manufacturer of the Philadelphia Beer, nor the sole agent for its sale. For aught that appears any one else has as much right to sell Philadelphia Beer as the plaintiff. In our opinion the sign and label of the plain- tiff relates only to the description of the beverage dealt in by him, and therefore cannot be protected as a trade-mark. Judgment affirmed. MAY, 1883. 813 122 Hostetter, et al. vs. Fries, et al. 122 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Hostetter, and others, Fries, and others. Decided 31 May, 1883. Reported 17 Federal Rep., 620. "Hostetter Bitters Extract'' Case. Name of New Article — Right to Use of. — When a new article is made a name must be given to it, and this name becomes, by common acceptation, the appropriate descriptive term by which it is known and therefore becomes public property, so that all who have the right to manufacture and sell the preparation have the right to designate and sell it by the name by which alone it is known, provided care is ob- served to sell the preparation as the manufacture of the seller, and not the preparation made by another. Trade-Mark — Definition. — A trade-mark consists of a word, mark or device adopted by a manufacturer or vendor to distinguish his produc- tion from other productions of the same article. Same — Name Indicating Kind or Description of Thing. — A name alone is not a trade-mark when it is understood to signify not the par- 8 14 U. S. C. C. SOUTH. DIST. OF NEW YORK. Hostetter, el a/, vs. Fries, et al. 122 ticular manufacture of a certain proprietor, but the kind or description of thing which is manufactured. 4. Same — Injunction Refused. — Complainants claimed the right to use the name "Dr. J. Hostetter's Stomach Bitters," in connection with certain labels, bottles and other devices which designated the prepara- tion as of their own manufacture and indicated its origin, and in their bill they averred that defendants' were selling to the trade an extract out of which it was claimed Hostetter's Bitters, could be made, with directions how to make such bitters, and that the retail dealers were making these bitters and refilling complainants' bottles, with their labels and devices thereon, and thus selling them. Held: That defendants had the right to sell their extract as charged as no pur- chaser could suppose that he was purchasing the preparation made by complainants; that they could not be held responsible for the acts of third parties, and that an injunction would not be granted. A. H. Clark and James Watson, for complainants. /. A. Englehart and A. J. Dittenhoefer, for defendant. Wallace, J.: The motion for preliminary injunction must be denied, because it does not appear from the bill and affidavits that defendants are infringing the complainant's trade-mark. Complainants' prop- erty consists in the right to use the name ".Dr. J. Hostetter's Stomach Bitters" in connection with certain labels, bottles, and other devices, which designate the preparation as of their own manufacture, and indicate its origin. The bill alleges that the defendants are engaged in manufacturing and selling certain essences, oils, and extracts which they represent can be so manipu- lated and used as to produce a good imitation of various well known brands of bitters, among them an imitation of Hostetter's Bitters; that they sell the same to compounders and jobbers, with instructions to the purchaser as to the mode of compounding the bitters and selling them as the genuine article; and that such purchasers compound the essence and sell the bitters made there- by to retail dealers, and the latter procure the second-hand empty bottles that have been sold by the complainants, having the labels thereon, and refill them with the bitters compounded from the JUNE, 1883. 122 Hostetter, et al. vs. Fries, et al. defendants' essences and palm them off upon the public as the genuine bitters of the complainants' manufacture. The complainants have neither the exclusive right to make bit- ters compounded after the formula of Dr. Hostetter, nor the ex- clusive right to sell bitters by the name of Hostetter's Bitters. The preparation never had any name until it was offered to the public and christened. When a new article is made a name must be given to it, and this name becomes by common acceptation the appropriate descriptive term by which it is known, and there- fore becomes public property. If this were not so, any person could acquire the exclusive right to a formula by giving a name to the compound produced, not only when the compound has not been patented, but when it might not be the subject of a patent. All who have the right to manufacture and sell the preparation, have the right to designate and sell it by the name by which alone it is known, provided care is observed to sell the preparation as the manufacture of the seller and not the preparation made by another. A trade-mark consists of a word, mark, or device adopted by a manufacturer or vendor to distinguish his produc- tion from other productions of the same article. A name alone is not a trade-mark when it is understood to signify, not the par- ticular manufacture of a certain proprietor, but the kind or de- scription of thing which is manufactured. Singer Manuf'g Co. v. Loog, 15 Reporter, 538; Wheeler & Wilson Manuf'g Co. v. Shakespear, 39 Law J. C/i., 36; Young v. Macrae, 9 Jur. , (N. S.), 322. Obviously, no one would be deceived into the supposition that the defendants were selling the complainants' production when they only profess to sell an extract from which Hostetter's Bitters can be made. Defendants not only have the right to make and sell the extract, but they have the legal right to make and sell a preparation which they call Hostetter's Bitters, provided they do not employ the bottles, labels, symbols, or devices which have been used by the complainant to distinguish their own production of that preparation, or such equivalents as may deceive the pub- lic in that regard. If the bill had distinctly alleged that the defendauts were engaged in a scheme to put upon the market and 8l6 U. S. C. C. SOUTH. DIST. OF NEW YORK, Hostetter, et al. vs. Fries, et al. 122 palm off upon the public a preparation of their own as the com- plainants' preparation, and these allegations were shown to be true, the defendants could not escape an injunction merely upon the ground that they had not sold the preparation themselves. But all the general allegations of fraud and conspiracy in the bill are resolved into the specific acts of wrong-doing particularly stated; that is, selling the extract and informing their customers how it may be made into Hostetter' s Bitters. The actionable transgression of the complainants' rights, is that committed by the retail purchasers who buy from the defendants' customers — those who use the bottles, labels, and symbols which constitute the complainants' trade -mark. The defendants may be instru- mental in effecting the wrong by providing some of the means employed, but they only do what the law permits them to do. And even if it could be assumed that they contemplated the further wrong-doing of the retailers, the law does not visit motives or intent unaccompanied by a wrongful overt act. The bill, however, does not allege that they are participants in the viola- tion of the complainants' rights further than by selling the ex- tract, and giving instructions how it can be made into Hostetter's Bitters. The motion is denied. < ' See Wilcox cy* Gibbs Sewing Machine Co. v. The Gibbens Frame, infra; Burton v. Stratton, 12 Fed. Rep., 696, and note, 704; Shaw Stocking Co. v. Mack, Id., 707, and note, 717." — (Ed.) JUNE, 1883. 817 133 Oakes vs. Tonsmierre , et al. 123 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF ALABAMA. In Equity. Peter Oakes vs. Henry Tonsmierre and John Craft. Decided June, 1883. Reported 4 Woods, 547. "Peter Oakes Candy''' Case. The sale by a person engaged in manufacturing certain goods, of the right to use his name as a trade-mark, will be valid provided the trade-mark is not used to deceive the public, and a sale of the right to use such trade-mark by the vendee to another person, will not be affected by any contract between the original parties of which the second vendee had no notice. Final hearing on the pleadings and evidence. Messrs. Harry Pillans and E. S. Russell, for complainant. Messrs. W. S. Lewis and Stephens Croom, for defendants. 5 2 8l8 U. S. C. C. SOUTH. DIST. OF ALABAMA. Oakes vs. Tonsmierre, et at. 123 Bruce, Dist. J.: The evidence shows that Peter Oakes, complainant, and one Hiram S. Probasco, in December of the year 1865, in St. Louis, Missouri, entered into a copartnership for the manufacture and sale of candies, under the firm-name of Probasco & Oakes. This firm first called their candies Excelsior candies, but as Probasco testifies, they found this name too long, hard to be remembered, and not easily spoken by children, and they changed the name to Oakes' candies, Oakes' home-made candies and Oakes' pure home-made candies. This firm of Probasco & Oakes carried on the business of mak- ing and selling candies up to May 17, 1869, when Peter Oakes, for a valuable consideration, sold out to his partner, Probasco. The bill of sale is in evidence, and to quote the language, the transfer is of "all my right, interest and estate, it being one-half, in and to the stock of candies, materials, goods, wares and mer- chandise, fixtures, furniture, tools and equipments of the firm of Probasco & Oakes, also the good-will of the business and name of the firm of Probasco & Oakes, and the exclusive right to make and sell Oakes' candy, and to use the name thereof. ' ' On the same date another memorandum of agreement was made, which is also in evidence, by which Oakes agreed to work for Pro- basco, and Probasco agreed to employ him for two years at wages therein specified at manufacturing home-made candies, or at any other work necessary to be done, or -properly appertaining to the business of candy-making and in this memorandum it is pro- vided that "should he, Probasco, sell out his said business of candy-making, and selling within said two years, or at any other times, then said Oakes shall be relieved from all obligation, under this agreement, and the right and privilege of making and selling Oakes' candies, and of using said name, shall revert to said Oakes." Probasco continued the business after the dissolution of the firm, and in addition to the word Oakes, or the words Oakes' candies, in 1870 he devised a trade-mark of two oak trees with the word Oakes across the branches and the word candies on a plank across the trunk of the trees, and used this trade-mark or symbol in his store and upon labels placed upon packages and boxes of candies offered and sold in the market. JUNE, 1883. 819 X23 Oakes vs. Tonsmierre, et al. He continued this business and use of the trade-mark after Oakes sold out to him and after Oakes had quit his employment, which continued after the sale for eighteen months, when Oakes left Probasco's employment, by mutual consent, as he states. In January, 1877, over seven years after the sale from Oakes to Probasco, Probasco sold out to one W. J. Hammon, for a valuable consideration, and in May afterwards, transferred in writing, which is in evidence, "the trade-mark, name, good-will and reputation connected with the manufacture, production and sale of certain candies * * * * commonly known as Oakes' candies." W. J. Hammon carried on the business until the 25th of March, 1878, when he sold out to H. Skinner and N. C. Skinner, who carried on business as Skinner & Co., and who constituted Tons- mierre & Craft, the defendants herein, their agents in Mobile, Alabama, for the sale of Oakes' candies made by Skinner & Co., of St. Louis, Missouri. Tonsmierre & Craft received candies from Skinner & Co., of St. Louis, advertised and sold them as the genuine Oakes candies, and their advertisements sometimes stated that the Oakes candies were made by Skinner & Co., of St. Louis, and sometimes only •stated that Tonsmierre & Craft were the agents for the sale of the genuine Oakes candies. Complainant prays for an injunction against the defendants to r-estrain them from selling or offering for sale * * * * any kind of candies or caramels as Oakes' candies, or to use in any way the name or trade-mark of Oakes, or simulate the same in connection with the manufacturing, selling or offering for sale * * * * anv can dies or caramels as Oakes' candies, except such as may be manufactured by and purchased from Peter Oakes, and that Tonsmierre & Craft be ordered and decreed to account to Peter Oakes for all profits which they have made * * * * and all the profits which Peter Oakes could or would have made on the sales of his genuine candies and caramels, and the prayer is for general relief. The right of the defendants to use the trade-mark in question, which combines the word or name Oakes with the two oak trees, and their right to represent and advertise themselves as the agents 820 U. S. C. C. SOUTH. DIST. OF ALABAMA. Oakes vs. Tonsmierre, et al. 123 for the Oakes candies in the market here in Mobile, depends upon the right of Skinner & Co., of St. Louis to use this trade-mark and the name Oakes, and their right depends upon the right of W. J. Hammon, from whom they purchased it, and their right' in turn depends upon the right of Hiram S. Probasco, from whom they purchased. What right, then, had Probasco to use the trade-mark in ques- tion? either to use the word Oakes alone or in combination with any other mark or device in the sale of the candies made by him. The general principle is that one man will not be permitted, by imitating the distinctive name or mark used by another person to designate articles of the latter' s manufacture, to impose articles of his own manufacture on the public as the articles of the former. The cases so holding rest upon two considerations. ist. That it would be a fraud on the rights of the former person thus to permit his trade-mark to be imitated. 2d. That it would be a fraud ou the public. Skinner o- Co. v. Oakes, et al., 10 Mo. App., 45, and cases there cited. See also, McLean v. Fleming, 96 U. S., 245. The Courts proceed upon the two-fold principle that the public have a right to know that goods which bear the signature or mark of a particular manufacturer or vendor are in fact the goods of such manufacturer or vendor, and that the manufacturer or vendor of such goods had a right to any advantage which might accrue to him from the public knowing that fact. Same authority and cases cited. The evidence shows that Peter Oakes was a practical candy- maker. That he superintended the making of the candies of his firm during its existence, and perhaps it is only fair to infer from the testimony that he continued to do so after he sold out to his partner, and during the eighteen months after the sale that he re- mained in his employ. It does not appear, however, that the candies made and sold by Probasco & Oakes at their place of business in St. Louis, Mo., were called Oakes candies because the man Peter Oakes made or superintended the making of them, but it is shown by the evidence that the reason why these candies were called Oakes candies was because the name was deemed by the firm a proper one to designate their candies. JUNE, 1883. 821 123 Oakes vs. Tonsmierre, et at. They were first called Excelsior candies, but this was a difficult name for children to speak, and Oakes was deemed the better name. Probasco was not a practical candy-maker, yet he was the busi- ness man of the concern, and most probably had as much or more to do with building up the reputation of the candies manufactured by his firm as had his partner Peter Oakes. The evidence on this subject I think repels the idea that the candies of this firm were called Oakes candies because Peter Oakes manufactured them, or that the use of the name was intended to be any guaranty to the public that Peter Oakes actually manufac- tured or superintended the manufacture of them. This case then, does not fall within the rule that one man is not permitted to use the trade-mark of another; for the use of the word Oakes was as much the device of Probasco as it was of Peter Oakes, and the more elaborate mark of the two oak trees, with the words Oakes candies, was the device of Probasco alone. In the case of Skinner 6° Co. v. Oakes, et al. , supra, it is said to be settled law, that the right to use a trade-mark is not a mere personal privilege, but within certain limits it is capable of being bought and sold as other property. "A trade-mark," says Jus- tice Strong, "like the good-will of a store or manufacturing establishment, is a subject of .commerce, and it has been many times held to be entitled to protection at the suit of vendors." Fulton v. Sellers, 4 Brewst., 42, and other authorities. See also, Kid v. Johnson, roo U. S., 617. > 1 In the same case, however, (Skinner v. Oakes,) the Court pro- ceeds: "But when the trade-mark consists of a name, how far is it capable of assignment ? is a more difficult question." It is a name that we are dealing with here, and I cannot do better than to give the answer which the Court gave in that case to the query which is propounded. The Court said: " We think the answer to this question depends upon the effect which the use of the name, in each particular instance, is shown to have upon the minds of the public. If it leads the public to believe the particular goods are in fact made by the person whose name is thus .stamped upon them, or in whose name they are advertised, 822 U. S. C. C. SOUTH. DIST. OT ALABAMA. Oakes vs. Tonsmierre, et al. 1S3 whereas they are in fact made by another person, then such a use of the name will not be protected by the Courts, for to do so would be to protect the perpetration of a fraud upon the people." Tested by this rule, what is there to show that the use of the name or word Oakes by Probasco in the sale of his candies im- plied, or was calculated to imply, any guaranty to the public that the candies were made by Peter Oakes? While Peter Oakes was a member of the firm, it might be a rea- sonable inference on the part of the public that he made the candies; but after he sold out to Probasco, and after Probasco had devised and used in his business the more elaborate trade- mark of the two oak trees with the words << Oakes Candies" upon them, and this had been continued for years after Peter Oakes had ceased all connection with the business carried on by Hiram S. Probasco, how could such use of the name Oakes lead the pub- lic to believe that the goods were made by the man Peter Oakes? On the contrary, it is but common experience that articles bear- ing a particular name are not regarded by the public as being the actual manufacture of the person whose name they bear. It may have been so originally, for it is only natural that the article should be associated with and called by the name of its first maker or vendor; but generally speaking, unless in cases of in- ventions or articles produced by special skill, which are usually protected by letters patent, the public do not in fact believe and are not justified in the conclusion that, because articles bear a particular name, the person of that name is in fact the manufac- turer or vendor of the article. The principle contended for here by the complainant goes to the extent that Probasco, after the sale by Oakes to him, had no right to use the name of Oakes as a trade-mark, because by doing so he was perpetrating a fraud upon the public, holding out the idea that Oakes actually manu- factured the candies which he, Probasco, made and sold, when such was not the fact. But this view of the subject cannot be maintained, and was not maintained in the case of Probasco v. Bouyon, et al., i Mo. App., 241, in which case the Court say: "By the dissolution of the firm, and Oakes' sale to Probasco, the latter acquired the rights of his JUNE, 1883. 823 1S3S Oakes vs. Tonsmierre, et al. firm to the name. Oakes could so sell his name as to deprive himself of the right to use it for his own manufacture, and give that right to another." The Court in this case holds that a trade name may be the sub- ject of a sale — that the name of Oakes was the subject of a sale by PeterOakes to Probasco; but the Court could not so have held if the use of the name Oakes carried with it an assurance to the public that the man Oakes manufactured the candies, for that would have been to protect Probasco in perpetrating a fraud upon the public. So that it is clear that Probasco's right to make and sell Oakes candies did not at all depend upon the fact that Oakes made the candies. The case falls within another principle, which is, that a name may be used as a mere adjective of description or quality, which the public do not understand as any warranty that the per- son whose name is used is the maker of the article; and in these cases the right to use the name may be sold with the right to manufacture and vend the goods, without reference to the ques- tion as to what person or persons actually manufacture them. But it is claimed that though Probasco had the right to carry on the business and use the trade name in question, yet he had no right to sell it, because he had agreed with Oakes in 1869, that should he, Probasco, "sell out his business within two years, or at any other time, .... then the right and privilege of making and selling Oakes candies, and of using said name, shall revert to said Oakes." It may well be questioned if this agreement meant anything more than that, upon a sale by Probasco of his business, that Oakes was then to have an equal right with Probasco's vendee to the use of the name Oakes in the manufacture and sale of can- dies; but if that admits of doubt, still, can it be doubted that a subsequent purchaser for value without notice of this private agreement between the parties would acquire the right to use the trade-mark or name here in question? Probasco was carrying on the business of manufacturing and selling candies, and advertising and designating them by a trade- 824 U. S. C. C. SOUTH. D"lST. OF ALABAMA. Oakes vs. Tonsmierre, et al. XS3 mark, consisting in part of the name Oakes, and he was in the open possession and enjoyment of this trade-mark. The great mark of ownership of personal property is posses- sion, and contracts that the title to personal property shall be in one party, and the possession in another cannot be set up to the prejudice of a bona fide purchaser without notice. In 1877 Probasco sold out to W. J. Hammon for $4,000, and on May 17th executed in writing a transfer of the trade-mark, name, good -will and reputation connected with the manufacture, production and sale of certain candies commonly known as Oakes candies. Here, then, was a sale of the business and trade-mark for value to one Hammon, who had the right to purchase, and who is not shown to have had any notice of the agreement between Oakes and Probasco, which was a private one, never placed upon record, and which, therefore, could not affect the rights of Hammon. It is claimed that in August, after the sale to Hammon, notice was served upon both Skinner and Hammon of this agreement of Oakes and Probasco; but even if Skinner & Co. had notice, they would be entitled to defend , themselves behind Hammon's want of notice. Sugden on Vendors, 531; Boone v. Chiles, 10 Peters, 177. Again, it is claimed that the case of Skinner v. Oakes, supra, shows that the complainant is entitled to recover in this suit. True, in that case the complainants failed to maintain their bill in the Court of Appeals of Missouri, but an examination of the opinion shows the reason for such failure. The Court says: "If we could gather from the record that the plaintiffs are the succes- sors in business of Probasco & Oakes, that they had become the assignees, not merely of the trade-marks and tokens, but also of the establishment and the business, so that they are really carry- ing on the same business, and manufacturing and selling the same goods as Probasco & Oakes, we would have no difficulty in holding that they are entitled to the relief which the Court below awarded them." .... In the case at bar the evidence shows that Skinner & Co. were the successors in business of Hiram S. Probasco, who succeeded the firm of Probasco & Oakes. JUNE, 1883. 825 123 Oakes vs. Tonsmierre, et al. Hammon testifies that he succeeded to the business, making no changes in the methods of manufacturing and selling the candies, and did it for a considerable time at the same shop and number in St. Louis, at which , Probasco had carried on the business. I see nothing unreasonable or impossible in this. If there was anything in the nature of the business of candy making, any art or incommunicable secret known only to the man Oakes, it might be said that Skinner & Co. and Hammon, and even Hiram S. Probasco, did not carry on the same business and manufacture the same goods as did the firm of Probasco & Oakes. But the proof shows that the quality of the candies of Pro- basco & Oakes consisted not only in the skill of Oakes as a candy- maker, but in the use of fine sugars, nuts and flavors; and the weight of the testimony is that the Oakes candies manufactured and sold by Skinner & Co. were quite equal, if not superior, in quality to those manufactured by Peter Oakes. The result of these views is that Skinner & Co. had a right, derived as shown in the evidence, to the use of the trade-mark in question, and that the respondents, Tonsmierre & Craft, as their agents in Mobile, had such right, and the relief prayed against them by the complainant on account of their use of the word or name Oakes is denied. The use, however, of the name Peter Oakes stands upon differ- ent principles, and it is not claimed by counsel that they had any right to use this name, but that it was used by reason of an inad- vertence or mistake, was not intentional, and, in point of fact, it was used to a very limited extent. The rule, however, is that trade-marks are protected not exclu- sively on the ground of fraud, but also on the ground of prop- erty. The testimony shows that Peter Oakes is making and sell- ing candies in his own name, and designating them in the mar- ket by the name of Peter Oakes. So that if insisted upon, the case may go to a Master for an account of gains and profits, on account of the unauthorized though not intentional and fraudu- lent use by respondents of the name of Peter Oakes. 826 COURT OF APPEALS, STATE OF NEW YORK. Selchow, et al. vs. Baker, et al. X 24 124 COURT OF APPEALS, STATE OF NEW YORK. In Equity. Elisha G. Selchow, et al., Respondents, vs. James S. Baker, et al., Appellants. Decided 19 june, 1883. Reported 93 N. Y., 53. "Sliced Animals" Case. 1. While, where a complaint shows no cause of action, the granting of a preliminary injunction is an error in law, which may be reviewed in this Court on appeal, the case must be very clear to justify the Court in deciding the merits of the controversy on a mere motion; and where a doubtful question of law arises on the complaint, the decision thereof should be deferred until a hearing of the case upon its merits. 2. Where a manufacturer has invented a new name, consisting either of a new word or a word or words in common use, which he has applied for the first time to his own manufacture, or to an article manufactured for him, to distinguish it from those manufactured and sold by others, and the name so adopted is not generic or descriptive of the article, and is not used merely to denote grade or quality, but is arbitrary or fanciful, he is entitled to be protected in the use of that name as a trade-mark, JUNE, 1883. 827 124 Selchow, et al. vs. Baker, et al. and this, although it has become so generally known that it has been adopted by the public as the ordinary appellation of the article. 3. Plaintiffs-were manufacturers of certain games or puzzles for children, which consisted of pictures of animals, birds or objects on paste-board, cut into strips or pieces, and the puzzle consisted of putting the "pieces together so as to form the original picture. To distinguish these manufactures plaintiffs had giveu to them the names " Sliced Ani- mals," " Sliced Birds," or " Sliced Objects," according to the charac- ter of the picture, which names were placed upon the boxes containing the puzzles and upon the outside of the packages in which they were put up for sale, and the said articles had become well known by the names thus given them. In an action to restrain defendants from using said names in connection with similar articles manufactured for and sold by them, Held: That the names so given were capable of being appropriated as trade- marks, and plaintiffs, having so appropriated them, were entitled to be protected in their use as such. \ Barnett v. Kubler, (Browne on Trade-Marks, 113, sec. 166); IV. &• W. M. Co', v. Shakespear, (39 L. J., N. S. Chan., 36); S. M. Co. v. Loog, (27 Alb L. J., 270), distinguished. Fetridge v. Wells, (4 Abb. Br., 144), limited. Appeal from the order of the General Term of the Court of Common Pleas in and for the City and County of New York, made November 9, 1832, which affirmed an order of Special Term, granting a preliminary injunction restraining defendants from using the names <•' Sliced Animals," "Sliced Birds," "Sliced Objects," in connection with certain games or puzzles. Plaintiffs' complaint alleged in substance, among other things, that they were, and had been for many years, manufacturers and wholesale dealers in certain games and puzzles, to which they had given the names above stated, invented by them as trade-marks, to distinguish them from the manufactures of others, and which names were placed upon the boxes containing the puzzles and on the packages in which they were put up for sale; under which names they had become widely known to the public. These puz- zles consisted of pictures of animals, birds and different objects upon card-board, cut into strips or pieces, and the puzzle con- sisted in putting them together so as to form the complete picture. 828 COURT OF APPEALS, STATE OF NEW YORK. Selchow, et al. vs. Baker, et al. 124 In July, 1882, defendants began to sell similar articles, using the same names in connection therewith. Plaintiffs asked to restrain such use. Charles M. De Costa and William D. Guthrie, for appellants. The granting of the temporary injunction order was without authority of law, and therefore such order is reviewable on appeal to this Court. {Campbell v. Seaman, 63 N. Y, 569; McHenry v. Jewett, 90 Id. , 58; Allen v. Meyer, 73 Id. , 1, 3; Collins v. Collins, 71 Id., 269, 271; People v. Common Council, 79 Id., 56, 61; Paul v. Munger, 47 Id. , 469, 473). Unless protected by the operation of a statute, such as the Patent Act, no one can have any exclu- sive property or right to manufacture and sell any article to the exclusion of others, although he may be the inventor thereof, and the first person to make and sell the same. {Caswell v. Davis, 58 N. Y, 223; Thomas v. Winchester, 19 Pick., 214, 215). As Mr. Thompson had a right to manufacture and defendants to sell games like those invented and manufactured by plaintiffs, they had a right to use the names by which the games are exclusively known to the public. {Fetridge v. Wells, 4 Abb. Pr., 144; Tay- lor v. Gillies, 59 N. Y., 331, 334; Caswell v. Davis, 58 Id., 223, 2 34> 2 3SJ liegeman v. Hegeman, 8 Daly, 1, 9, 10; Thomson v. Winchester, 19 Pick., 214, 216; Canal Co. v. Clark, 13 Wall., 323, 327; Corwin v. Daly, 7 Bosw., 222, 226; Sherwood v. An- drews, 5 Am. Law Reg., 588, 591; Burton v. Stratton, 12 Fed,- Pep., 696, 700; Marshall v. Pinkham, 52 Wis., 572; Wheeler & Wilson Manuf. Co. v. Shakespeare, 39 L. J., [iV. S.~\, Ch., 36; L. M. Co. v. Nairn, L. P., 7 Ch. Div., 834, 837; Singer Manuf. Co. v.Long, Alb. L.J., Apr. 7, 1833,//. 272, 274; VanBeilv. Prescott, 82 N. Y., 630; Browne on Trade-Marks, 151, sec. 219. The terms "Sliced Animals," "Sliced Birds," and "Sliced Objects," which the plaintiffs claim to appropriate as the trade- marks of the games in question, cannot legally be appropriated as such. {Canal Co. v. Clark, 13 Wall., 311, 322; Manuf. Co. v, Trainer, n Otto, 51; A. Manuf. Co. v. Spear, 2 Sandf, 597; Congress Spring Co. v. High Pock Spring Co., 45 N. Y., 291, 295; Newman v. Alvord, 51 Id., 189, 193; Topham v. Cole, 66 Id., JUNE, 1883. 829 X 24 Selchow, et al. vs. Baker, et al. 69, 75; Caswell v. Davis, 58 Id., 223, 233; Van Beil v. Prescott, 82 Id., 630; Zinter v. Kinney Tobacco Co., 12 Fed. Rep., 782; Ayer v. Rushton, 7 Daly, 9; Browne on Trade- Marks, sees. 134- 136, 164,/. 43; sec. 66, p. 113; sec. 166, p. 141, Upton on Trade- Marks, 22, 25, 26; Larabee v. Lewis, 13 Ga., 270; 25 yi/<5. Z. J. , 203; Raggett v. Findlater, Eng. L. R., 17 jEy. , 29; 7 2 34)- Tn e question being an important one, and there being some evidence upon it, the refusal of the Court to find either way is an error of law for which the judgment must be reversed. (Code, sec. 993). John M. Bowers, for respondent. A trade-mark can consist of a word, and in such case the use of the same word on similar substances, in any shape, manner or or form, or in connection with any words, will be restrained. No imitation is necessary. (Hier v. Abrahams, 82 N. Y, 519; Am. Grocer v. Grocer Pub. Co., 25 Hun, 398). The word "Royal" can properly be used as a trade-mark. (Burton v. Stratton, 12- Fed. Rep., 696; Ford v. Foster, L. R., 7 Ch. App., 611; Bra- ham v. Bustard, 1 Hen. & M., 447; Lee v. Haley, L. R., 5 Ch., 155; Messerole v. Tynberg, 36 How., 14; Caswell v. Davis, 58 N. Y, 223, 234; Van Beelv. Prescott, 82 Id., 630; Taylor v. Gibbs, 59 Id., 331; Amoskeag Co. v. Spear, 2 Sandf., 599; Cor- winv. Daly, 7 Bosw., 233; Binninger v. Wattles, 28 How., 206; Messerole v. Tynberg, 36 How. Pr., 14; Newman v. Alvord, 49 Barb., 588). The imitation having been admitted, plaintiff necessarily becomes entitled to the relief granted below. ( Wil- liams v. Spence, 25 How. Pr., 366; Enoch Morgan's Sons' Co. 54 850 COURT OF APPEALS, STATE OF NEW YORK. The Royal Baking Powder Co. vs. Sherrell, et al. 138 v. Schwachofer, 5 Abb. N. C, 265). To sustain an action of this character it is sufficient, if the ordinary mass of customers, paying that attention which such persons usually do in purchasing, would be easily deceived by the label used by the defendant. An exact imitation need not be shown. (Swift v. Dey, 4 Robt., 611). Plaintiff's right to maintain an action for violation of its trade- mark does not depend upon defendants' intention to violate it. It is enough that an actual violation is shown. {Dale v. Smithson, 12 Abb. Pr., 237; Dixon Crucible Co. v. Guggenheim, Cox's Am. Trade-Mark Cases, 559; 2 Brewst., [Penn.~\, 321; Williams v. Spence, 25 How. Pr., 366; 2 Bosw., 1; Coffeen v. Brumpton, 4 McLane, 516; McLean v. Fleming, 6 Otto, 245; Filley v. Fas- sett, 44 Mo., 173; Potter v. McPherson, 28 N. Y. Sup. Ct., 559; Gorham v. White, 14 Wall., 511; Devlin v. Devlin, 69 N. Y. 214). This use of plaintiff's trade-mark, by placing an addition or tail to it, is no justification for the defendants. (The B'klyn White Lead Co., 25 Barb., 416; Howard v . Henriques , 3 Sand/., Sup. Ct., 725; Newman v. Alvord, 49 Barb., 578; Williams v. Johnson, 2 BoSw., 1; Barrows v. Knight, 6 P. L., 434; Matsell v. Flanagan, 2 Abb. Pr., [N. S.~\, 459; Congress Co. v. High Pock Congress Co., 10 Ld., 348; 9 L. T. P., [iV. 5.], 199; Am. Tr. Cases, 674). No right can.be absolute in a name as a name merely. It is only when that name is used, printed or stamped upon a particular article, and thus becomes identified with a par- ticular style and quality of goods that it becomes a trade-mark. (Powley v. Houghton, Am. Trade-Mat k Cases, 486; McAndrews ' v. Bassett, Cox's Am. Tr. Cas., 669). Even if the word "Royal" had been used by some one before the plaintiff, who had not claimed it as a trade-mark, that would be no justification for the defendants' infringing against the plaintiff who had adopted it as a trade-mark. (Partridge v. Menck, 2 Sand/. Ch., 622; 2 Barb. Ch., 101; 1 How. App. Cas., 558). Rapallo, J.: 1. Letters or figures which, by the custom of traders or the declaration of the manufacturers, are only used to denote quality, are incapable of exclusive appropriation, but are open to use by OCTOBER, 1883. 851 128 The Royal Baking Powder Co. vs. Sherrell, et al. any one, like the adjectives of the language. (Amoskeag Co. v. Trainer, 101 U. S., 51; Amoskeag Manuf. Co. v. Spear, 2 Sandf., 599). The right to use a word or name as a trade-mark, is the right which a person has to use a certain mark or name for arti- cles which he has manufactured, so that he may prevent another person from using it, because the mark or name denotes that arti- cles so marked or named were manufactured by a certain person, and no one can have the right to put the same name or mark upon his goods and thus represent them to have been manufac- tured by the' person whose mark it is. (.Per Sir Wm. Page Wood, in Collins Co. v. Cowen, 3 Kay & Johnson, 428). But there can be no exclusive right to the use of words or marks which have no relation to the origin or ownership of the goods, and are only meant to indicate their quality or grade. In Corwin v. Daly, (7 Bosw.,j2,$), the words "Royal," "Im- perial ' ' and ' ' Princely ' ' are referred to as words denoting the •quality of an article — as indicating its high degree of excellence, such as "superior," "superfine," "extra," and similar words, and the word "Royal" is to be found of frequent use for that purpose, in many cases in the books. It was used by the defend- ants and their predecessors as applied to mustard, which they sold as "Royal Standard " mustard, before its adoption by the plain- tiffs. In Braham v. Bustard (\ Hem. & Mil., 447), the word "Excelsior," in the name "Excelsior White Soft Soap," was sus- tained as a trade-mark. It was objected that this was merely a mark of quality, but Sir W. Page Wood overruled this objection and held that it was used to denote origin, because the plaintiff ■did not sell two or three qualities of soap, calling one of them Excelsior, but only one which they denoted the Excelsior White ■Soft Soap, and that it was like the words "Albert," "Victoria," "Eureka," etc., an arbitrary designation for the sake'of distinc- tion. In the present case, however, it appeared upon the plain- tiff's own showing, in the testimony of Mr. Zeigler, that when their predecessors, Zeigler & Seal, commenced putting up flavor- ing extracts, they did not use the word "Royal," but various "brands, some being called "Concentrated Extracts," and some •"Zeigler & Seal's Extract;" that afterward they put up some 852 COURT OF APPEALS, STATE OF NEW YORK. The Royal Baking Powder Co. vs. S.herrell, et al. 128 under the name of "Royal," and that they used that word as a. distinguishing mark, and that a reputation was established for it as the finest quality the market afforded — one of the favorite qualities. 2. On cross-examination Mr. Zeigler being asked how he came to- use the word • 'Royal," explained that at that time they were hand- ling royal baking powder, and they took it to designate a certain grade of extracts; that they had two or three other brands; one was "London," one "English," and the third "Royal;" that the word "Royal" was applied to a specific article or quality, and the other terms to different qualities or grades; that the "English" brand was the best up to 1873, and then they changed around and made the "Royal" their best grade, that the "London" had always been the poorest. Mr. Wooden, the plaintiff's salesman, testified that the plaintiff did not designate the different grades of its extracts as first, second and third, but in a different way; that one was called "London," another "English," and the other "Royal," and that the name designated the grade; that the "Royal" was the best, and that it only appeared in connection with the name of the plaintiff — The Royal Baking Powder Com- pany — as the manufacturer. Mr. Hoagland, the president of the plaintiff, testified that the name "Royal" was identified with its goods, as indicating a grade of goods of the highest quality. We think this case comes within the principle of the case of Amoskeag Mfg. Co. v. Trainer, (10 1 U. S., 51); Amoskeag Mfg. Co. v. Spear (2 Sandf, 599, 616, 618), and that it appeared that by the custom of the trade and the declaration of the manufac- turers, the word "Royal" was used to denote the quality or grade of the goods. It cannot be said, as in the case of Excelsior White Soft Soap Co., (1 Hem. &° Mill., 447), that it was used simply as a word of distinction to indicate the origin of the goods, because the plaintiff did not sell two or three qualities, calling one of them "Excelsior." The facts are just the reverse. In the case of Hier v. Abrahams, (82 N. Y., 519), relied upon by the plaintiffs, there was no claim that the word < < Pride ' ' was used to denote quality, nor was there any evidence that it was used to denote grade; but it was expressly found that it had been OCTOBER, 1883. 853 138 The Royal Baking Powder Co. vs. Sherrell, et al. adopted by the plaintiffs as a trade-mark for cigars manufactured by them, and that this was known to the defendant, and that he imitated it and used it on cigars manufactured and sold by him, whereby the public were deceived into believing that they were purchasing cigars manufactured by the plaintiffs, and the plaintiffs were damaged thereby. In the present case the evidence shows that the word "Royal" was used on one of their grades of ex-' tracts, for the purpose of designating one of their grades. There was no element of fraud or imitation, for it appears that the de- fendants did not even know of the use of the word by the plaintiff until this action was brought. They used it, not as an imitation of any trade -mark of the plaintiff, but in connection with the word "Standard," to denote a superior quality, as they had pre- viously used the words ''Royal Standard" on mustard, and we are of opinion that this was no violation of any exclusive right of the plaintiff. The motion to dismiss the complaint should, we think, have been granted. The judgment should be reversed and a new trial granted, costs to abide the event. Judgment reversed. All concur, except Andrews, J., absent. 854 SUPREME COURT OF ERRORS, CONNECTICUT. New Haven Patent Roll. Spring Bed Co. vs. Farren, et al. 1 29 129 SUPREME COURT OF ERRORS, HARTFORD. DISTRICT, STATE OF CONNECTICUT. In Equity. New Haven Patent Rolling Spring Bed Co. vs. Willis B. Farren, and others. Decided 9 November, 1883. Reported 51 Conn., 324. "Patent Spring Bed" Case. 1. In order to justify an injunction restraining a party from using a trade- mark, name or other device descriptive of his goods, it should appear that he is in fact so using it as to represent, or induce. the belief that the goods which he manufactures or sells are the goods of the plaintiff, and that there is danger that the plaintiff will in that manner be de- frauded. 2. The plaintiff and Farren Brothers were severally engaged in the manu- facture of spring beds at New Haven, under the same patent, the beds, manufactured being substantially the same, and each claiming to pro- duce the original article. Both had at their offices and agencies various signs, among which the plaintiffs had that of "New Haven Roll- up Spring Bed," and Farren Brothers that of "Farren Brothers' New NOVEMBER, 1883. 855 129 New Haven Patent Roll. Spring Bed Co. vs. Farren, et al. Haven Rolling Spring Bed." A trader who kept for sale the Farren Brothers' beds at Hartford, but who was not their agent or in their employ, attached to one of their beds in front of his store, a placard with the words "The Only Original New Haven'Roll-up Spring Bed," upon it. Held: Not to be a case for an injunction. Suit for an injunction; brought to the Court of Common Pleas in Hartford County, and heard before Bennett, J. Facts found and judgment rendered for the defendants. The plaintiffs ap- pealed. The case is sufficiently stated in the opinion. T. M. Maltbie and W. H. Ely, for the plaintiffs. C. E. Gross, for the defendants. Carpenter, J.: This is a complaint praying for an injunction restraining the defendants from using certain words and phrases in describing the articles manufactured or sold by them. Both the plaintiff and Farren Brothers are engaged in the busi- ness of manufacturing spring beds, in New Haven, under the same letters patent, and the goods produced by both are substantially identical. Each party claims to produce the original genuine article. The plaintiff has displayed at its office and agencies various signs, namely: — "The Genuine New Haven Rolling Spring Bed;" "The Genuine New Haven Roll-up Spring Bed; " "The New Haven Rolling Spring Bed; " and " The New Haven Roll- up Spring Bed." Farren Brothers have displayed at. their office in New Haven signs reading thus: — "Farren Bros' Spring Bed," and Farren Bros' Guarantee Spring Bed;" and at their agencies throughout the State signs reading, "Farren Bros' Rolling Spring Beds;" Farren Bros' New Haven Rolling Spring Beds;" and "Rolling Spring Beds, Farren Bros." But Farren Brothers never used the combination of names, "New Haven Rolling Spring Bed," or "New Haven Roll-up Spring Bed," nor the words "New Haven," as applied to the beds manufactured by them, until about two years before the trial. 856 SUPREME COURT OF ERRORS, CONNECTICUT. Horton Manuf'g Co., N. Y. vs. Horton Manuf'g Co., Ind. X 29 The defendant Bill, who was engaged in the coal business in Hartford, bought beds of Farren Brothers and sold them, but he was never their agent, nor does it appear that he was in their em- ploy. At one time, however, he had the exclusive right to sell their goods in Hartford. In June, 1882, he displayed a placard attached to a Farren Brothers' bed, in front of his store, upon which placard were the words — "The only original New Haven Roll-up Spring Bed." This is in substance the finding upon which the Court of Com- mon Pleas rendered judgment for the defendants, from which judgment the plaintiff appealed. 1. In order to justify an injunction restraining a party from using a trade-mark, the name of a corporation, partnership or in- dividual, or other device descriptive of his goods, it should appear that he is in fact so using- it as to represent, or induce the belief, that the goods which he manufactures or sells are the goods of the plaintiff; and that purchasers do so believe; or at least that there is danger that the plaintiff will in that manner be defrauded. In this case the plaintiff failed to establish- any one of the es- sential requisities. No such representations appear to have been made by the defendants or any of them, no one has been deceived, and the plaintiff is in no danger of being defrauded. 2. Consequently there is no error in the judgment of the Court below. In this opinion the other Judges concurred. December, 1883. 857 1 30 Horton Manuf'g Co., N. Y. vs. Horton Manuf'g Co., Ind. 130 CIRCUIT COURT UNITED STATES, DISTRICT OF INDIANA. In Equity. Horton Manufacturing Co., Jamestown, N. Y. vs. Horton Manufacturing Co., Ft. Wayne, Ind. Decided 29 December, 1883. Reported 18 Federal Rep., 816. "Horton Manufacturing Co." Case. . Individual Name — Use by Partnership — Dissolution. — A partner- ship which is suffered by any one to use his name as a part of the firm s.tyle and title, though it may acquire by such license an exclusive right to the use of the name so long as the partnership continues intact, can- not, upon its' dissolution, confer the same privilege upon its successor. . Laches — Acquiescence — Notice. — Acquiescence by any person in the wrongful use of his name, will not estop him from asserting his rights in equity, unless he has notice during such acquiescence of the facts rendering the use of his name wrongful. J. K. Hallock and C. P Jacobs, for complainant. Ninde & Ellison, for defendant. 858 U. S. C. C. DISTRICT OF INDIANA. Horton Manuf'g Co., N. Y. vs. Horton Manuf'g Co., Ind. ISO Woods, J.: Bill in equity for an injunction against the use of a name by the respondent, and a cross-bill by the respondent for an injunc- tion against the use of the same name by the complainant, both the parties being incorporated under the name, The Horton Man- ufacturing Company. The material facts are as follows: "Sometime prior to 1873, Dr. Theodore Horton was engaged at Bluffton , Indiana, in the manufacture and sale of corn-planters, under letters patent of which he owned a half interest only. This corn-planter was advertised and sold, and became known, as the 'American Hoosier Hand Corn-planter.' William K. Vande- griff, having purchased the other one-half interest in the patent, entered into partnership with Dr. Horton and one Rachel V. Black- stone, under the firm name of T. Horton & Co., and by the terms of their partnership articles, undertook to prosecute the business aforesaid for the period of twelve years from October, 1873, the date of the articles. In the conduct of the business, Mrs. Black- stone was represented by her husband, William A., who was made the book-keeper of the concern. ' ' Soon after the organization of the company, it purchased a patent for a washing-machine, which it proceeded to manufacture and sell, in considerable quantities, under the name 'Improved Western Washing-Machine.' In December, 1879, Dr. Horton sold his interest in this business to Vandegriff and W. A. Black- stone, but reserved his half interest in the letters patent upon the corn-planter l and one-third interest in the patent for the washing- machine; bis vendees agreeing to pay him a royalty upon such articles as they should manufacture under either patent, and at the same time taking of Horton a lease for one year of the build- ing in which the business had been theretofore conducted, with the intention of continuing the business in the same place. Mrs. Blackstone also retired from the firm at this time, leaving her husband and Vandegriff to constitute the new firm, for the con- tinuance of which no definite time was agreed upon. "There is conflict in the evidence upon the questions whether or not certain patterns were included in the sale by Horton to Vande- griff and Blackstone, and whether or not Horton agreed not toen- DECEMBER, 1883. 859 ISO Horton Manuf'g Co., N. Y. vs. Horton Manuf'g Co., Ind. gage again in the same line of manufacture. The preponderance of the evidence seems to be that he did so agree, but upon the understanding, implied but not expressed, that his successors should continue to carry on the business at Bluffton. It was dis- tinctly understood between the parties that Vandegriff and Black- stone should continue the business. The sale and transfer of Horton's interest having been completed, he consented, without, consideration, that the new firm should adopt the- name, "The Horton Manufacturing Company." It did accordingly take this name, and under it prosecute the business at Bluffton, until June, 1880, when the members of the firm concluded to remove, and did remove, to Jamestown, N. Y. Preliminary to this removal the company re -sold to Horton the engine, boiler, shafting, and some other articles used in the business, and settled with him for the rent of the building and for royalties then due. At James- town, the company, under the same name, carried on the same business until March 12, 1881, when its members, said Vande- griff and Blackstone, united with T. J. and J. J. Vandegriff in ( organizing an incorporated company, the complainant, which company has since that time prosecuted the business upon a large scale. "A few months after the removal of the company aforesaid to Jamestown, Dr. Horton, in association with two others, under the firm name of T. Horton & Co., resumed the business at Bluffton, and published a circular to the effect that he had no connection with the company at Jamestown, and that that company was with- out a Horton and was sailing under false colors. "That company put forth a counter circular, claiming to be the lawful successor of the original T. Horton & Co. The new firm of T. Horton & Co. continued in business until June, 1883, when jt was placed in the hands of a receiver, and Dr. Horton associ- ated himself with others in the organization of the respondent corporation, which, under the same name as the complainant, is engaged in and proposes to prosecute the same business as the complainant, and has put forth circulars, cuts, and advertisements which "will tend to confuse the public in respect to the manufac- tures of the two companies. 860 U. S. C. C. DISTRICT OF INDIANA. Horton Manuf'g Co., N. Y. vs. Hortou Manuf'g Co., Ind. XSO "The goods manufactured by the parties, and by the companies which preceded them, have always been advertised and sold and known to the trade by the names aforesaid, which were stencilled or painted upon the respective articles, and in addition there was on each article the phrase 'manufactured by,' followed by the name and place of business of the company which put it upon the market; and in the case of the complainant and its predecessors the goods were marked, besides the name of the particular article, as < Manufactured by the Horton Manufacturing Company, James- town, N. Y. : successors to T. Horton & Co.' ' ' The respondent has an express grant from Dr. Horton of his good-will, letters patent, and of the right to use his name. It does not appear that the Horton Manufacturing Company, as a firm or by act of its individual members, made any formal at- tempt to confer upon the complainant its name or good-will, or the right to use Horton's name, and if that exists it is by force of the fact stated, and not by express grant." For the general principles by which, upon these facts, the rights of the parties must be determined, counsel on either side have cited the opinion in Holmes v. Holmes, etc., Manufg Co., 37 Conn. , 278. Stated generally, the decision announced in that case is to the effect that incorporators of a business company, who had permitted the use of their individual names in the competition of the corporate name, could not, after the business of the company had become established and its manufactures well known under that name, confer upon a. new and rival company or corporation the right to use their individual names in a similar way, to the confusion of the public and consequent detriment of the first company; and this, upon the ground that in the use of a name lawfully acquired, which designates the origin and ownership of its goods, a manufacturing company or corporation will be pro- tected "upon the same principle and to the same extent that individuals are protected in the use of trade-marks." The fol- lowing extract from this opinion illustrates well the views of the Court, and will be found to bear somewhat directly on the case now presented: DECEMBER, 1883. 86l ISO Horton Manuf'g Co., N. Y. vs. Horton Manuf'g Co., Ind. " The principles we have been contending for should, under similar circumstances, be applied to partnerships and corporations alike. It is only when the circumstances change that the prin- ciple becomes inapplicable. A person whose name appears in the firm-name of a partnership, in the absence of anything raising a contrary presumption, will be presumed to have agreed that it should so continue during the existence of the partnership. If, before the partnership expires, he merely sells his interest in the concern to a stranger, he conveys to the purchaser a right in the use of the name during the remainder of the term. If, at the expiration of the term, he sells his interest, with an agreement, express or implied, that the business shall thereafter be continued under the same name, the same rule applies. At the dissolution of the partnership, the partners revert back to their individual rights and responsibilities, and each partner, in the absence of any agreement to the contrary, has an absolute right to control the use of his own name. In all these respects there is no differ- ence between a corporation and a partnership." In respect to the case presented:" If it can be said that the old firm of T. Horton & Co, was not dissolved in 1879, upon the go- ing out of Horton and Mrs. Blackstone, and that Vandegriff and Blackstone took it up as a going concern, then, in the absence of a contrary understanding, they perhaps had a right to go on under the old name. But as, in that case, Horton would have continued liable to the public as a member of the firm, notwith- standing his withdrawal, the more reasonable application of the rule would seem to be that the use of his name could not have been continued without his authority and so the parties themselves seem to have understood. Instead of going on under the old name of T. Horton & Co., to which they do not appear to have supposed they had any right, Vandegriff and Blackstone, with the consent of Horton, determined to adopt, as the style of their firm, the name of " The Horton Manufacturing Company." This consent, having been given without consideration, was probably a mere license, revocable at pleasure. McGowen Eros' Case, 2 Chi. Rep., 313. And if there was in it an element of contract which made it irrevocable, it was a grant to the new firm as then com- 862 U. S. C. C. DISTRICT OF INDIANA. Horton Manuf'g Co., N. Y. vs. Horton Manuf'g Co., Ind. 1 SO posed, and, by force of the language quoted from the Connecticut decision, as well as upon sound reason, was capable of continuing only so long as that partnership should last, and therefore not transferable, either directly or indirectly, to any other person, firm, or organization, without Horton's consent. i. There is certainly no authority, in any case cited by counsel, or which has come under observation, for the proposition that a part- nership, whose name consists in whole or in part of the name of a person who is not a member of the firm, can, without the consent of the owner, transfer the right to another company or corporation to make a like use of such name. A man. might willingly forego the use of his name in favor of an ordinary partnership, which, whether limited or not to a definite term of existence, is liable, upon many contingencies, to come to an end; but from such a grant there could not reasonably be inferred an intention to authorize a trans- fer or assignment to other companies or corporations, whereby the owner might be perpetually deprived of the control of his own name. There may be some cases which seem inconsistent with this view, but upon closer consideration it is believed they are not so. The case of Dixon Crucible Co. v. Guggenheim, 2 Brewst., 321, and the authorities cited, will be found to be instructive. It is doubt- less the law, as in that case it is held, that "the property in a trade-mark will pass by assignment, or by operation of law, to any one who takes at the same time the right to manufacture or sell the particular merchandise to which the trade-mark has been attached;" and if one has made of his own name a trade-mark, and then transfers to another his business, in which his name has been so used, the right to continue such use of the name will doubt- less follow the business as often as it may be transferred. Such was Bajou's Case, decided by the Tribunal of Commerce of Paris in 1854, cited in. 2 Brewst., supra; and such are the many cases there cited, and which might be cited, wherein persons have been enjoined against the use of their own names as marks or labels on goods, when the tendency was to injure others in the rightful use of the same or similar names upon like goods. If, for instance, Horton had called his goods "The Horton Corn-planter" DECEMBER, 1883. 863 1 30 Horton Mamif'g Co., N. Y. vs. Horton Manuf'g Co., Ind. and " The Horton Washing-machine," doubtless his vendees and successors in the manufacture, including the complainant, would have been entitled to continue to mark, advertise, and sell the goods by the same name. But this is manifestly very different from the use of the name, as a constituent part of the name of the company or corporation which should manufacture or sell the goods so marked. The conclusion seems clear that the complainant did not acquire from the Horton Manufacturing Company, the partnership which preceded it, the right to use Horton's name; and as that part- nership was dissolved, or at least abandoned, when the corporation was formed, Horton, if he had ever lost, was then remitted to the full control of his name. 2. The complainant claims further that if it did not in the first instance acquire a right to the use of the name, it did acquire it by long use, and by the acquiescence of Horton in that use to such an extent as to constitute an estoppel against him or any claiming under him. Conceding that there may be such an estoppel, it is not shown in this instance. Besides the circular published by Horton, as already stated, which implied and indicated, it would seem with sufficient plainness, his dissent from the use of his name by the establishment at Jamestown, it does not appear that Horton had notice or knowledge that the partnership had been abandoned and the complainant corporation formed; and without such knowledge it could hardly be said that there is an estoppel; even if the facts were otherwise sufficient. The proposition established that the complainant had no right to the name, and has been using the same wrongfully, the con- clusion seems necessarily to follow that the respondent, by virtue of Horton's grant, acquired a complete right to the name, and is entitled, on the cross-bills to an injunction against its use by the complainant. Decree accordingly. 864 SUPREME COURT, STATE OF OHIO. Buckland vs. Rice, et al. 131 131 SUPREME COURT, STATE OF OHIO. In Equity. Buckland, et al. VS. Rice, et al. Decided January, 1884. Reported 49 Ohio St. Rep., 526. "Trommer' 's Extract of Malt'" Case. Where a trade-mark contains a material misleading representation, a Court of Equity will not protect it. There are however other distinctive features of the trade-marks, labels and circulars, which are not subject to the objection urged to the use of the word "Trommer,"' which the Court below protected by their decrees in this case. Some of these devices the plaintiffs in error wrongfully made use of, and in rendering judgment which the District Court should have rendered, we make our decree the same as that of the Court below, except wherein it protects the defendants in error in the use of the word "Trommer." Error to the District Court of Sandusky County. JANUARY, 1884. 865 181 Buckland vs. Rice, et al.+ R. P 6° H. S. Buckland, for plaintiffs. J. M. Lemmon and William Henry Browne, for defendants. Nash, J.: The defendants in error in the Court of Common Pleas, ask for an injunction to restrain the plaintiffs in error from infringing upon an exclusive right claimed by them in the word "Trommer," used together with the words "Extract of Malt Co.," as a trade- mark upon bottles of a malt extract and advertising pamphlets. The following facts appear from the bill of exceptions: The ex- tract of malt sold by the defendants in error was made by one Gessner, and in accordance with a formula prepared by him. The preparation of this extract was begun in 1874. Many years before that time, Dr. Felix Von Niemeyer, a German physician of some note, published a "Text Book of Practical Medicine," the third American edition of which was printed in 1870. This book was a standard work and became authority with physicians and students of medicine. In this book Dr. Niemeyer stated that in late years he had obtained very good effects from an extract of malt, prepared by Trommer. He also in general terms de- scribed Trommer's malt extract. Ziemssen, in his " Cyclopedia of the Practice of Medicine,' 1 '' a standard medical authority, also speaks of a malt extract prepared by Trommer's receipt. Gessner did not know Trommer's receipt, and it is not claimed that the malt extract sold by the defendants in error was prepared in ac- cordance with Trommer's method, or that their malt extract was like Trommer's extract of malt. When they put their extract upon the market they adopted the word Trommer to be used as a trade-mark upon their labels and in their advertising matter. What was the object in doing this? Why was the name of Gessner — the real author of the extract — concealed and "Trom- mer' ' put forward as the catch word ? 1. There could have been but one motive, and that was that the public should be led to believe that the defendants in error were making an extract of malt like that made by Trommer and men- tioned by Niemeyer and Ziemssen. This object is made more ap- parent by an examination of the advertising pamphlets issued by SS SUPREME COURT, STATE OF OHIO. Buckland vs. Rice, et al. 13X the defendants in error. In these, upon the page immediately following the title page, are printed without note or comment, except to show where they came from, extracts from Niemeyer's text book and Ziemssen's cyclopedia in regard to Trommer's ex- tract of malt, and in such manner as to indicate to the ordinary reader that what these authors had written was in regard to their extract of malt. It is well settled that where any symbol or label claimed as a trade-mark is so constructed or worded as to make or contain a distinct assertion which is untrue, a Court of Equity will not pro- tect it by injunction. Leather Cloth Co. v. American Leather Cloth Co., 4 De Gex, Jones &° Smith, 136; H. of L. Cases, 523; Connell, et al. v. Reed, et al., 128 Mass., 477; Manhattan Medicine Co. v. Wood, 108 U. S., 218. We think that the word "Trommer" was used by the defend- ants in error so as to hold out to the public that they were making a malt extract like that made by Trommer. This was a deception, and to the extent that the District Court by its order protected them in the use of the word '-Trommer" it erred. For this rea- son we reverse the judgment of the District Court. There are, however, other distinctive features of the trade-marks, labels and circulars of the defendants in error which are not sub- ject to the objection urged herein to the use of the word "Trom- mer," which the Courts below were asked to and did protect by their decrees in this case. Some of these devices the plaintiffs in error wrongfully made use of, and in rendering the judgment which the District Court should have rendered, we make our de- cree the same as that of the Court below, except wherein it pro- tects the defendants in the use of the word "Trommer." Judgment accordingly. FEBRUARY, 1 884. 867 13 2 Siegert, et al. vs. Abbott. 132 COURT OF APPEALS, STATE OF MARYLAND. In Equity. Carlos D. Siegert, and others, vs. ■Cornelius W. Abbott and Cornelius F. Abbott. Cornelius W. Abbott vs.- Carlos D. Siegert, and others. Decided 7 February, 1884. Reported 61 Md., 276. "Angostura Bitters" Case. injunction— trade-mark— misrepresentation. 1 . A Court of Equity will not interpose by injunction to protect a claim to a trade-mark or label, where either contains a misrepresentation. The complainants, claiming to be the manufacturers and exclusive proprie- tors of certain cordial or aromatic bitters, popularly known as "Angos- 868 COURT OF APPEALS, STATE OF MARYLAND. Siegert, et al. vs. Abbott. 132 tura Bitters," and claiming as its trade-mark this designation, sought to enjoin the defendants, who, were engaged in the manufacture of an article styled "Angostura Aromatic Bitters," from manufacturing or selling any preparation or article under the name of "Angostura Bitters," and from imitating the complainants' labels in which the bottles containing their bitters were wrapped. The label of the com- plainants, used when their bill was filed, stated that the bitters is pre- pared by Dr. S -, that it was prepared at Angostura, but is now prepared at Port of Spain. Dr. S. died some years before the bill was filed by his successors in the business, and he never lived at Port of Spain. The label also stated that the bottles bore the signature of the complainants, when in fact they bore the signature o„f the original inventor. Held: That the complainants, in consequence of the misrepresentations contained, in their label, were not entitled to relief against the defendants. Appeal from the Circuit Court of Baltimore City. The case is stated in the opinion of the Court. The cause was argued before Alvey, C. J., Miller, Irving, and. Bryan, J. Samuel Wagner, and John M. Carter, for Siegert and others. The fact that the respondents have avoided an exact imitation of the complainants' label will not relieve them. The Courts have had much more frequent occasion to deal with this class of cases, than with those where the bolder plan was resorted to of an exact imitation. Amoskeag Manufg Co. v. Spear, 2 'Sandford S. C, 599; Burnett v. Phalon, 5 Abb. Pr., N. S., 212; Newman v. Alvord, 51 N. Y, 189-193, and Coleman v. Crump, 70 JV. Y, 573-8. In the last case it was held that "It is not necessary that the symbol, figure or device used or printed and sold for use should be a.fac simile or precise copy of the original trade -mark, or so close an imitation that the two cannot be distinguished ex- cept by an expert, or upon a critical examination by one familiar with the genuine mark. If the false is only colorably different from the true; if the resemblance is such as to deceive a purchaser of ordinary caution; or if it is calculated to deceive the careless. FEBRUARY, 1 884. 869 182 Siegejt, it at. vs. Abbott. and unwary, and thus to injure the sale of the goods of the pro- prietor of the trade-mark, the injured party is entitled to relief." The same rule has been recognized by this Court in Robertson v. -Berry, 50 Md. , 591. See also Meridcn Britannia Co. v. Parker, .39 Conn., 460; Lawrence Manufacturing Co. v. Lowell Hosiery Mills, 129 Mass., 328; Filley v. Fassitt, \\Mo., 178; Barrow v. JCnight, 6 R. L., 434-8. In the Federal Courts also, the rule has been adopted. Mc- Lean v. Fleming, 96 U. S., 245. See also Walton v. Crowley, 3 B latch. C. C, 440-7; Gorham Co. v. White, 14 Wall., 511- 527; Hostetter v. Adams, 13 Reporter, 454. The recent English cases are to the same effect:' Seixo v. Provezende, 12 Jurist, N. S., 217; Wotherspoon v. Currie, 27 L. T. R., N. S., 393; Orrv. Johnston, 40 L. T., N. S., 307, 311-313; Taylor v. Taylor, 23 L. J. Ch., 255; Siegert v. Findlater, 26 Weekly Rep., 461. Frudulent intention is not necessary to constitute an infringement. Stonebraker v. Stonebraker, 33 Md., 267-8; Millington v. Fox, 3 My. 6° Cr., 338, 352; Collins Co. v. Walker, 7' W. R., 222; Clement v. Maddick, 33 L. T., 117; Amoskeag Co. v. Spear, 2 Sand. S. C, 599-608; Coleman v. Crump, 70 N. Y., 573-8; Mc- Lean v. Fleming, 96 U. S., 245, 253; Filley v. Fassitt, 44 Mo., 178. Nor is it necessary to show actual deception. Filley v. Fassitt, supra; Abbott v. Bakers' Assn., W. N., 1872, page 31, ■(Cox's Manual, 213, 214); Edelston v. Edelston, 1 DeG.,J. &S., 185, (Cox's Manual, 118). But our Courts have gone farther than this, and have held that not only is the actual imitation unnecessary to constitute an in- fringement, but that the adoption by another, with intent to de- ceive the public, of certain peculiar characteristics of the package, label or wrapper by which a manufacturer's goods had become "known and recognized, amounts also to an infringement. This principle was established in Frese v. Bachof, (reported in 13 U. S. Pat. Gazette, 635, and in Cox's Manual, 346); and the same point has been decided in the State Courts in Williams v. John- son, (2 Bos. N. Y., 1 Cox's Manual, 85), and in Morgan's Sons' Co. v. Troxell, (Cox 's Manual, 415). 870 COURT OF APPEALS, STATE OF MARYLAND. Siegert, et al. vs. Abbott. 13S Henry Stockbridge, and George Hawkins Williams, for C. W., and C. F. Abbott. ' Dr. J. G. B. Siegert never had any valid right, title or claim to- the name "Angostura Bitters" as a trade-mark. In order to acquire or to have that right, Dr. Siegert must have been the first to appropriate that name, must have used it invari- ably in a lawful business, with truth and in good faith, have stamped, attached, or in some way applied it uniformly to his. merchandise, and have been the only one who could rightfully, and with truth, so apply it. This proposition is sustained by all the authorities. A trade- mark is a " technical commercial emblem," " nothing more nor less than one's commercial signature to his goods," and the right to it is perfected " only when the owner stamps the symbol upon an article of merchandise which he desires to sell." 'Browne on- Trade-Marks, sees. 127-130, also, sec. 143; Shaw Stocking Co. v. Mack, 12 Fed. Rep., 707, and note, 717. "A proprietor can have but one trade-mark; that must have a practical existence — not resting in the mind of the owner alone — but be stamped, impressed or attached in some way to the article itself." Candee, et al. v. Deere, et al., 54 III., 439. The doctrine, as enunciated by the Supreme Court of the United States is, "that no one can apply the name of a district or country to an article of commerce, and obtain thereby such an exclusive right to the application as to prevent others from truth- fully using the same designation," and it adopts, as its own, the language of the Supreme Court of New York, that "no one has a 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." It therefore refused 'to enjoin the use of the term " Lackawanna " as applied to an article of merchandise. Canal Company v. Clarke,. 13 Wall., 311, 324, 327. The Supreme Court of Pennsylvania hold the same doctrine, refusing to recognize a right to the exclusive use of the term, "Glendon" as a trade-mark. Glendon Iron Co. v. Uhler. 75. Penn. St. Rep., 467. FEBRUARY, 1 884. l 87 1 13 2 Siegert, et al. vs. Abbott. The principle, contended for by the complainants, that a mere geographical name can be exclusively appropriated as a trade- mark, finds no sanction in the cases cited to sustain it. They only hold that the use may be good as against a wrong-doer, who attempts, by fraudulent means, to divert custom from its legitimate channel. This is shown wherever Courts have occasion to discuss some unguarded expressions dropped in such cases as those of Newman v. Alvord; McAndrews v. Bassett, and Seixo v. Prove- zende; Canal Co. v. Clarke, 13 Wall., 325; Browne on Trade- Marks, sees. 182, 184. The fact, therefore, if it be a fact, that Dr. Siegert made bitters in the town of Angostura, gives him no monopoly of that town or • its name as against one who can use it truthfully. He has no patent or exclusive right to compound ingredients and give them that name, and, if it rightfully belongs to the compound, restrain any one else who produces the same compound from giving it the same name. Anybody else, anywhere in the world, has a right to make the same article, and to sell it under the same name. Again, if the name be used to indicate the origin of the merchan- dise, any person producing merchandise having the same origin has a right so to indicate in its name. The first user could only claim it as against those who would seek to deceive the public by its use. In this case, there is no evidence of any wish or intention to practice any deception upon any one. The answer avers, and the evidence fully sustains it, that the name used by the defendants was applied to the goods made by them before they had any knowledge that there was any article in the public market, or known to the public, bearing the name of "Angostura Bitters," or any person in existence bearing the name of "Siegert." ' ' Angostura bark ' ' was an article that had been known to the medical profession and to the pharmacopoeia as a valuable bitter and tonic for three-quarters of a century -at least. That medici- nal simple; the defendant, or those under whom he holds, had a right to use, and if they so used it that it was the leading charac- teristic of the article manufactured therefrom, they had a right to give it its true name, derived from, or descriptive of, its composi- 872 COURT J OF APPEALS, STATE OF MARYLAND. Siegert, et at. vs. Abbott. 13S tion and properties. See Encyclopedia Britannica, gth Ed., Art. Angostura; Osgood v. Allen, 6 Am. L. Times, 20; Cheavin v. Walker, L. R., 5 Ch. Div., 862-3; Raggett v. Findlater, L. R., 17 Eq. Cas., 29. Neither Dr. Siegert nor the plaintiffs could any more monopo- lize the use of the name "Angostura," as against any one manu- facturing a medicine in any one of the numerous towns bearing that name, or as against any person, anywhere in the world, making a bitters with Angostura bark as its leading ingredient, and truly naming it accordingly, than the canal company could monopolize the name "Lackawanna," or the Glendon Iron Com- pany could monopolize the word "Glendon." "A generic name, or a name that truly describes the article that he makes or sells, every one has a right to attach to the goods that he places upon the market." Thompson v. Winchester, 19 Pick. Rep., 214; Manufacturing Co. v. Trainer, 11 Otto, 10 1 U. S., 54; 58 N. K, 234. But not only had Dr. Siegert no right to monopolize the use of the word "Angostura" as applied to bitters, he never attempted to do so. He never claimed a right to do so. He never called his bitters "Angostura Bitters" at all. During all the time of his making of bitters he always called his article "Aromatic Bit- ters," and never "Angostura Bitters." But if Dr. Siegert had a right to the exclusive use of the name "Angostura Bitters," and it had "devolved" upon the complain- ants, still the label, or wrapper, which they seek to have pro- tected, bristles all over with misrepresentations — is itself a palpa- ble fraud — and forfeits any and all right that they might otherwise have to relief from a Court of Equity. This label or wrapper, in which the name ' 'Angostura Bitters' ' was for the first time used by any of the Siegert race, and which they now seek to have a Court of Equity protect, was adopted by them in the year 1875— after they had removed from the place that had once borne the name Angostura, and ceased to have any connec- tion with it, — twenty-nine years after there ceased (as they allege) to be any such place as Angostura, and five years after the death of Dr. Siegert. And yet in every wrapper used by them since FEBRUARY, 1884. 873 132 Siegert, et al. vs. Abbott. that time, they announce, in all the languages that figure on it, that it is "Aromatic Bitters, or Angostura Bitters, prepared by Dr. Siegert,' 1 &c. They nowhere say or suggest, or hint that the skill and care and experience with which the original discoverer of the article compounded it, are no longer used in its manufac- ture, but it is made by entirely different persons. Their doing so would be the exact truth, but it would advertise the public that the skill and care in which they confided in Dr. Siegert is no longer employed in the manufacture of the goods, and so they conceal that fact from the public, endeavor to extend their trade by falsely asserting that what they offer to sell was ' ' prepared by Dr. Siegert," and then ask a Court of Equity to sustain them in so doing. Partridge v. Mehck, 1 How. App. Cases, 558; Browne on Trade- Marks, sec. 490; Fetridge v. Wells, '13 How. Pr. Rep., 385; Hobbs v. Francais, 10 How. Pr. Rep., 567; Hennessy v. Wheeler, 69 N. Y., 271; and see Connell v. Reed, 128 Mass., 477; Leather Cloth Co. v. American Leather Cloth Co., 4 DeG., J. 6° S., 143, 144, 148, and n H Z. Cases,- $2$; Phalonv. Wright, 5 Phila., 464; Palmer v. Harris, 60 Pa. St., 156; Ginter v. Kinney Tobacco Co., 12 Fed. Rep., 782; Witthaus v. Mattfeldt, 44 Md., 303; Sherwood v. Andrews, 5 Am. Law Rep., (N. S.), 589; Manhattan Medicine Co. v. Wood, et al., 108 U. S. Rep., 218. Neither Dr. Siegert, nor the complainants, who, claim to have a title under him, were the first to use the term " Angostura Bit- ters," and consequently neither he nor they acquired any right by priority of user. Dr. Siegert never called the article made by him "Angostura Bitters/' During all his life he called it " Aro- matic Bitters," and labeled it with that name, advertising it as prepared by himself at "Angostura." For five years after his death these complainants labeled their article in -the same way, and specifically claimed the name "Aromatic Bitters" as their trade-mark, and even prosecuted a competitor in the trade in 1874, for infringing their trade-mark by using the name " Aro- matic Bitters. " Siegert v. Elders, Cox s Manual of Trade-Mark Cases, 243. 874 COURT OF APPEALS, STATE OF MARYLAND. Siegert, et al. vs. Abbott. 182 Irving, J., delivered the opinion of the Court. The bill in this case was filed by Carlos D. Siegert and others, to prevent, by injunction, Cornelius W. Abbott and Cornelius F. Abbott from imitating the complainants' trade-mark and labels, in which they wrapped the bottles of their bitters popularly called "Angostura Bitters," by putting up a compound represented to have similar properties and virtues, in labels so much like those of the complainants, as to be a palpable simulation of them, by which the public was likely to be, and was, deceived into buying the defendants' preparation as and for that of the complainants. The bill also prayed for an account of profits from the sales made by the defendants in that way. The Circuit Court enjoined one of the defendants, Cornelius W. Abbott, and his agents and em- ployees, and forbade him and them to use the labels described in the proof as used by them; but the bill was dismissed as to Corne- lius F. Abbott, and no account of profits was decreed. The com- plainants appealed because Cornelius F. Abbott was not co nomine enjoined, and also because an accounting was not decreed. The defendant, Cornelius W. Abbott appealed because any relief was granted. A motion has been made to dismiss the complainants' appeal, on the alleged ground, that they have estopped themselves from prosecuting the same, by taking proceedings, after decree grant- ing partial relief and awarding them costs, to enforce the payment of the costs. The whole case being open for review on the appeal of the defendant in the suit, and, on careful consideration, being of opinion that there was error in the decree, and that the bill ought to have been dismissed, we have "found the motion unim- portant, and have not considered the legal question it raises. i. It is a general rule of law, that Courts of Equity, in cases of this kind, will not interfere by injunction where there is any lack of truth in the plaintiff's case; that is, where there is any misrepresentation in his trade-mark or labels. Browne on Trade- Marks, sec. 71, and sec. 474, et sea. The respondents invoke the application of this rule to the complainants' case, as made, which they contend contains a misrepresentation. on the face of the label, at its very beginning. FEBRUARY, 1 884. -875 132 Siegert, et at. vs. Abbott. The heading of the label, as used when the bill was filed, is in three different languages, but the translation of the Spanish and German is the same as the English, which reads "Aromatic Bit- ters, or Angostura Bitters, prepared by Dr. Siegert, at Angostura, now Port of Spain, Trinidad." Here is, certainly, a statement that the article is prepared by Dr. Siegert; that it was prepared at Angostura, but is now prepared at Port of Spain. It is a conceded fact that Dr. Siegert died in 1870. The bill so charges. He never lived at Port of Spain. The complain- ants, his sons and successors in business, removed to Port of Spain, several years after his death. One of the complainants was asso- ciated with Dr. Siegert in the business as his partner, and alleges- that, as survivor, he succeeded to the business; and subsequently he associated his brothers, the other complainants, with him as partners in the trade. A late case in the Supreme Court of the United States, (Man- hattan Medicine Co. v. Wood, 108 U. S., 218), decided in April, 1883, since the decision of the learned Court from which this. appeal was taken, seems to be conclusive against the right of the complainants to the relief asked. There the complainants sold a medicine, put up in glass bottles with panel -shaped sides, on five of which, in raised letters, the words "Atwood's Genuine Physical Jaundice Bitters, Georgetown, Mass." are blown in the glass. Twenty-five years ago the medicine was manufactured by Moses Atwood, in~ Georgetown, Massachusetts, and was sold by his agents throughout the United States. The complainant in the suit was a corporation under the laws of New York, to which, by successive mesne assignments, the sole right to use the recipe and manufacture the compound had passed; and that right was being exercised in. New York City, when a bill was filed against one Wood for using their trade-mark and labels, or simulating them, for a medicine manufactured by Wood in Portland, Maine. The Court says, that Dr. Atwood sold his " Atwood's Vegetable Jaun- dice Bitters" with this designation, that it was manufactured by him. "As the medicine was tried and proved to be useful, it was sought for under that designation, and that purchasers might not be misled, it was always accompanied with a label showing 876 COURT OF APPEALS, STATE OF MARYLAND. Siegert, et al. vs. Abbott. 133 by whom and at what place it was prepared. 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 Georgetown, Massachusetts, when it is manufactured by the Manhattan Medicine Company in the City of New York." The Court further says: "The object of the trade-mark being to indicate, by its meaning or association, the origin or owner- ship of the article, it would seem that when a right to its use is transferred to others, either by act of the original manufacturer or by operation of law, the fact of the transfer should be stated in connection with its use, otherwise a deception would be prac- ticed upon the public and the very fraud accomplished, to pre- vent which, Courts of Equity interfere tp protect the exclusive Tight of the original manufacturer." Because of these untruthful statements, the Supreme Court held that the complainants were not entitled to the aid of a Court of Equity, and relief was denied. Numerous cases were cited by the Court in support of the law as laid down by them, among which are The Leather Cloth Company v. The American Leather Cloth Company, 4 DeG., J. &S., 137, and 11 Clark H. L. Cases, 523; Pidding v. How, 8 Sim., 477, and Perry v. Truefitt, 6 Beav., 66. A more exactly analogous case can hardly be imagined. It is true a removal from "Angostura" or "Ciudad Bolivar" to •"Port of Spain," is noted in the label; but it is so noted as to leave the impression that Dr. Siegert, the inventor and original manufacturer, had so removed and was continuing his manufac- ture at "Port of Spain." Although Dr. Siegert died in 1870, and a new firm was compounding the bitters at a place where he never did live and compound them, when the simulation by de- fendants was begun and committed, no intimation is to be found in the label that he is dead, and that complainants as his legal successors are conducting the business under his name and signa- ture, 3,/ac simile of whose signature is preserved on the label. It should be remarked, that in the note of warning against counter- FEBRUARY, 1 884. 877 132 Siegert, et al. vs. Abbott. feits, at the left hand of the label, it is stated the bottles bear the complainants' signature,' which inspection shows to be, not theirs, but the original inventors. We are unable to distinguish this case from the Manhattan Medicine Company case, from the opin- ion in which we have quoted, and which we think it proper to follow in a case of this nature, in the absence of a statute of the State controlling the subject. The complainants have relied on Siegert v. Findlater, 26 Weekly Reporter, 459, wherein the present complainants after the death of their father, were awarded injunc- tion by Justice Fry, in England. The same point respecting misrepresentation seems to have beeii made in that case, and to have been made in the pleading; but just how it was pleaded does not appear. The learned Judge, however, overrules the objection, but his reasoning is most unsatisfactory. We do not see how the misrepresentation of the fact that Dr. Siegert is per- sonally compounding these bitters is announced and explained by the statement that he has removed to Port of Spain in the Island of Trinidad. The point is treated, in that case, as if the mis- representation was solely of the place of manufacture, which, in fact, is the most harmless part of the misrepresentation. Upon that question we cannot regard the Findlater decision as of suffi- cient authority to control the case as now presented to us. In the case of Robertson v. Berry & Co., 50 Md., 591, wherein the property right of a publisher to the title and name of his work, is recognized in analogy to the law of trade-marks, and relief was granted against imitation, the point, on which we dispose of this case, did not arise, and the case is distinguishable from this. This decision, therefore, is not intended to depart from any of the principles therein established. For the reasons we have assigned, the decree in this cause must . be reversed and the bill of complaint must be dismissed. Decree reversed, and bill dismissed. Sy8 U. S. C. C. DISTRICT OF RHODE ISLAND. Morgan, et al. vs. Rogers. 1SS 133 CIRCUIT COURT UNITED STATES, DISTRICT OF RHODE ISLAND. In Equity. Morgan, et al. vs. Rogers. Decided 12 February, 1884. Reported 26 O. G., 11 13. "Dr. Hay ties' Arabian Balsam" Case. Trade-Marks — A Trade-Mark may be Conveyed with the Prop- erty with which it is Associated. — As an abstract right, apart from the article manufactured, a trade-mark cannot be sold, the reason being that such transfer would be productive of fraud upon the public, but in connection with the article produced, 'it may be bought and sold like other property. Trade-Marks will Pass Under Bill of Sale without Specific Mention. — For a trade-mark to pass under a bill o£ sale, it is not necessary that it should be specifically mentioned. If a trade-mark is an asset, as it is, there is no reason why it should not pass under the term "assets," in an instrument which conveys the entire partnership" property. The fact that the complainants agreed to turn over the property to the Millers after they had been paid, cannot operate to divest them of the FEBRUARY, 1884. 879 1SS, Morgan, et al. vs. Rogers. exclusive right to the trade-maik if they acquired such under the mortgage. Mr. Nathan F. Dixon, Mr. J. Van Sqntvoord, and Mr. A. Chester, for the complainants. Mr. Benj. F. Thurston, and Mr. J. C. B. Woods, for the de- fendant. Colt, J. : It appears by the bill and evidence that the complainants had from time to time advanced large sums of money to the firm of J. Miller & Sons, who were carrying on the business, in Providence, R. I., of the manufacture and sale of certain proprietary medi- cines, notably the compound known as "Dr. Haynes' Arabian Balsam." To secure the complainants, Miller & Sons executed a chattel mortgage to them, dated June 1, 1875. On or about March 22, 18,76, the complainants took possession under the mort- gage and proceeded, through an agent, to carry on the business of the manufacture and sale of these medicines. Subsequently, on February 13, 1877, Miller and Sons conveyed to the defendant, Rogers, the exclusive right to use their trade-marks and to make and sell their medicinal compounds. The present suit is brought to restrain the defendant from using these trade-marks. The main question in the case turns upon the meaning of the following clause in the mortgage: "The following articles of personal property, now in our possession, and now in and upon the premises known and desig- nated as numbers (8) eight and (12) twelve High street, in said City of Providence, viz: The entire property, stock, furniture and fixtures, and other articles now in and upon said premises, together with all debts and book accounts, assets and effects of every kind and nature belonging to said firm. of J. Miller & Sons." The complainants contend that the above recital includes all trade-marks then owned and used by Miller & Sons in their busi- ness on High street, and, that such was the intention of the con- tracting parties. The defendant claims that this description does not cover any trade-mark, but only the property, stock, accounts, 88o U. S. C. C. DISTRICT OF RHODE ISLAND. Morgan, et al. vs. Rogers. 133 &c, belonging to the -firm; that such was the intention of the parties, and that the proof shows that at most, and independent of the mortgage, the complainants have a parole license to use the trade-mark until reimbursed for their advances to Miller & Sons. The clause of conveyance in the mortgage is very broad in its terms. Clearly the language bears the construction and will bear no other than that the whole property of Miller & Sons upon the premises occupied by them, together with their assets of every kind, passed by way of mortgage to the complainants. The de- scription plainly identifies the property and states what is con- veyed. It is not a case where there is an ambiguity by reason of two inconsistent descriptions in the same instrument, nor is it a case where the instrument fails to point out the subject-matter, so that a stranger after examination might be deceived, but in plain and unequivocal language, and for the large consideration of $48,500, the entire property of the firm of Miller & Sons at their place of business and all the firm assets are conveyed by way of mortgage to the complainants. 1. There is no reason why a trade-mark cannot be conveyed with the property with which it is associated. As an abstract right, apart from the article manufactured, a trade-mark cannot be sold, the reason being that such transfer would be productive of fraud upon the public. In this respect it differs from a patent or a copyright; but in connection with the article produced, it may be bought and sold like other property. It constitutes a part of partnership assets, and is properly sold with the firm prop- erty. (Browne on Trade-Marks, sees. 360, 361; Hall v.. Bar- rows, 10 Jur. N. S., 55; Ainsworth v. Walmesley, 44 L. J. R., 252; Kidd v. Johnson, 100 U. S., 617; Walton v. Crowley, 3 B latch., 440; Congress and Empire Spring Co. v. High Rock Con- gress Spring Co., 57 Barb., 526, and 4- Am. Law Times R., 168; Dixon Crucible Co. v. Guggenheim, 2 Brewster, 321). 2. For a trade-mark to pass under a bill of sale it is not neces- sary that it should be specifically mentioned. In Shipwright v. Clements, (19 Weekly Reporter, 599), there was a sale by one part- ner to the other of all his interest in the partnership, stock in trade, goods, chattels and effects, book-debts, moneys, in the bank, and FEBRUARY, 1 884. 13S Morgan, et al. vs. Rogers. all other property not being on the premises, the defendant covenanting that he would not carry on the trade within one mile of the premises or in any way affect the business to be thereafter carried on by the purchaser, the Court held that this was a sale of the business, and that a trade-mark passed under such a sale, whether specially mentioned or not. If a trade-mark is an asset, as it is, there is no reason why it should not pass under the term "assets" in, an instrument which conveys the entire partnership property. To hold that the trade-mark is not included in this mortgage is to say that the most valuable part of the partnership property is not covered by the words "assets and effects of every kind and nature." The evidence, in our opinion, strongly confirms the construc- tion we have put upon the instrument, and shows that such was the intent of the parties. The complainants proceeded to take possession under the mortgage of the entire property and assets of the firm, to use the trade-marks, and to manufacture and sell the medicinal compounds. At the time possession was taken one of the Millers sent for Mr. Morgan and surrendered the keys. Two of the Millers for months after this continued to sell the medicines under the direction of the agent who was carrying on the business for the complainants. The annual royalty due Dr. Haynes the complainants assumed and paid. The defendant, Rogers, as shown by his letters, understood that the complainants had suc- ceeded to all the rights of Miller & Sons and were running the business. He says, however, that in the fall of 1876, after a con- sultation with the Millers, and after what they said, he took legal advice, and found that the complainants had title under the mort- gage only to the goods and effects of Miller & Sons; but that his mind was not clear on the question of the trade-marks is shown by the fact that subsequently, in his conveyance from Miller & Sons, of February 13, 1877, under which he now claims the right to use these trade-marks, there is a provision that if, at the expiration of two years, he should not be in the exclusive enjoyment of the trade- marks in consequence of any act done by the Millers in conveying or encumbering them, then, at his option, the annuities to be paid to the Millers under the agreement were to cease. 56 882- U. S. C. C. DISTRICT OF RHODE ISLAND. Morgan, et al. vs. Rogers. X33 3. The fact that the complainants agreed to turn over the prop- erty to the Millers after they had been paid cannot operate to divest them of the exclusive right to the trade-marks if they ac- quired such under the mortgage. With such exclusive rig*ht they, as well as Miller & Sons, might hope the debt would soon be ex- tinguished, but without such exclusive right such a result would be most improbable. Upon a proper construction of the clause of conveyance in the mortgage, and upon the evidence showing the intent of the parties, we are satisfied that the relief prayed for should be granted, and that the defendant should be enjoined from the use of the trade- marks. APRIL, 1884. 883 1 34: Bunker, et al. vs. Kemia, et al. 134 SUPERIOR COURT OF COOK COUNTY, CHI- CAGO, STATE OF ILLINOIS. In Equity.* William I. Bunker, et al. VS. Joseph W. Kenna and Reuben A. Hitchcock. Decided April, 1884. This cause coming on to be heard upon the bill of complaint of the complainants, the answer of the defendants thereto, the repli- cation of the complainants, to such answer, and the proofs taken and offered by said parties respectively, and being argued by Messrs. B 'aiming & Banning and Melville W. Fuller, Esq., counsel for the complainants, and Messrs. Peirce &■ Fisher, counsel for the defendants, and- the Court being now fully advised in the premises doth find — 1. That in or about the year 1879, the complainants, Jacob Beiersdorf and William I. Bunker, adopted and began to sell a spring attachment for connecting together the rockers and base- rails of stationary or platform rocking chairs, consisting of abroad, short, spiral spring, with rigidly attached brackets, and having *Not reported. 884 SUPERIOR COURT OF COOK COUNTY, ILLINOIS. Bunker, et al. vs. Kenna, et al. 1 34 ORATORS' SPRING. the external form and appearance shown in the complainants ex- hibits "Orators' Spring;" that they were the first so to adopt and sell such rocking chair attachments, and have ever since their adoption continued the sale thereof; that the external form and appearance of said rocking chair attachments are distinctive and arbitrary; that the complainants' said attachments have become and are generally known in the trade as be ing of their manufac- ture, because and by reason of their said peculiar characteristics; and that the complainants are entitled to and have the exclusive right to make and sell rocking chair attachments having the peculiar characteristics of form and appearance aforesaid. 2. That the defendants, Joseph W. Kenna and Reuben A. Hitchcock, have infringed upon the said exclusive riglits of the APRIL, 1884. 134 Bunker, el al. vs. Kerma, ct a!. DEFENDANTS' SFBING. complainants by the sale of spring attachments for connecting to- gether the rockers and base-rails of stationary or platform rocking chairs, each attachment consisting of abroad, short, spiral spring, with rigidly attached brackets, and having substantially the same external form and appearance as the complainants' said attach- ments, that is to say, having the form and appearance shown in the complainants' exhibit "Defendants' Spring;" that there are structural differences between said exhibits, "Orators' Spring" and "Defendants' Spring," in mode of attaching the bracket- plates to the spiral springs therein; but the same are well calculated to deceive and do deceive the general public having occasion to purchase a stationary base rocking chair with said rocker spring attachments applied thereto. 886 SUPERIOR COURT OF COOK COUNTY, ILLINOIS. Bunker, et al. vs. Kevma, ct al. X 34? 3. That the subject-matter at issue between the parties in sura or value in the controversy exceeds one thousand dollars {$ 1000. 00), exclusive of costs, in amount. It is therefore ordered, adjudged and decreed, and the Court doth hereby order, adjudge and decree, that a perpetual injunction issue in this cause, restraining and enjoining the said defendants, Joseph W. Kenna and Reuben A. Hitchcock, their agents, attor- neys, servants and workmen, and each of them from directly or indirectly selling or offering for sale rocking chair attachments, consisting of broad, short, spiral springs, with rigidly attached brackets, and having the external form and appearance of the com- plainants' said attachments or in colorable imitation thereof, or so. nearly resembling the same as to be calculated to mislead or de- ceive ordinary purchasers desiring to buy the complainants' said, attachments. It is further ordered that neither said complainants nor said de- fendants shall by advertisements, circulars or otherwise make any- representations calculated to embarrass or injure the trade of the other, save only as said representation shall be in strict accord- ance with the findings of this decree. It is further ordered that the defendants pay the costs of this; suit, to be taxed, and that execution issue therefor. APRIL, 1884. 887 135 Ex Parte Landreth. 135 IN THE UNITED STATES PATENT OFFICE. Ex Parte Landreth. Decided 23 April, 1884. Reported 31 O. G., 1441. '■'Red Bag" Case. 1. Neither the color alone nor the form alone of a package, nor the color of an article of commerce can constitute a trade-mark. 2. The doctrine of the United States Courts, so far as it goes, is in entire consonance with that of the Courts of Great Britain and France, that color alone cannot constitute a valid trade-mark. 3. As words, characters and symbols descriptive in their application to any merchandise, cannot be appropriated by any one to his exclusive use, for the same reason ordinary materials sold in the market and adapted for manifold uses, cannot be appropriated to any particular one of these uses by any person to the exclusion of the public from the same em- ployment of them. 4. Colored fabrics being commonly on sale and in use, there can be no legal restriction upon their use by any person for any lawful purpose that suits his convenience. 5. The word "device" is used in respect to trade-marks in a sense totally different from that in which it is employed in connection with mechani- cal contrivances. It does not signify an expedient or scheme for any purpose but an emblematic figure, mark or sign capable of being imprinted or otherwise displayed upon merchandise. UNITED STATES PATENT OFFICE. Ex Parte Landreth. 135 Application of Oliver Landreth, filed January 12, 1884. Butterworth, Commissioner: The following opinion has been prepared by the Examiner of Trade-Marks as his answer to reasons of appeal: The matter presented is a red bag to be used for seed-peas. Applicant specifies certain words of a descriptive character, which may be imprinted on it, but says — "The essential features of my trade-mark is the red bag, and I therefore claim the use, broadly, of a red bag in which the pea- seed is packed for the trade, either plain, or with any or all of the above words or pictures, printed, stamped, woven therein, or otherwise fixed thereon. It is not necessary that the bag be can- vas, as it may be formed of red paper, or of any other fabric; but I prefer canvas on account of its strength." The so-called fac simile filed in the case is not such, but a drawing in black lines, representing in outline a bag gathered at the top and sealed, and having descriptive words printed upon it. The Examiner holds that this is not such a fac simile as the law requires. Although no amendment has been made in this par- ticular, an exhibit has been filed, showing the actual red canvas bag employed by applicant, and this objection is waived pending the appeal. For a better understanding of the merits of the case it is ob- served that in a similar application filed simultaneously with this, a blue bag is claimed as a trade-mark for spinach-seed. In all other respects the cases are identical, and the decision in one con- cludes the office upon the other, and upon an entire series, which, if the decision is favorable, are to be presented by this applicant, involving the use of different colors to distinguish different seeds of his production from those of other parties. It isevident, though not apparent from the single case, that applicant's purpose is to secure the exclusive use of a system of packing seeds, in which each kind of seed shall be indicated and its origin shown by the color of the package alone. It is also evident that were the right of applicant to the exclusive use of such a system recognized by the office it would be impossible to APRIL, 1884. 889 135 Ex Parte Landreth. maintain it in the Courts under trade-mark law, since it would be in any one's power, without infringing a single one of the so- called trade-marks, to employ a similar system or any number thereof, within the almost infinite limits of arithmetical permuta- tion. Perhaps this consideration alone is enough to show the impracticability of making the matter set forth perform the office of a trade-mark. As requested by applicant, both the exhibits referred to are presented herewith. There is no limitation in re- spect to the matter claimed as essential in this case, except the color of the receptacle. As to shape and material, it is limited to nothing, except that it must be such material as can be made into a bag — paper, silk, canvas, leather, india rubber, mosquito- netting, flannel, any textile stuff capable of receiving a red color — and the bag may be of any shape or size, an envelope, a lady's reticule, a gunny-sack, as well as the particular canvas bag shown in the exhibits. Now, the Examiner takes the position that color alone, un- limited by form or specific device, cannot constitute a legal trade- mark. In this position he is sustained by the Office decision in the case of Williamson, cited in Browne on Trade-Marks, (272). The application file shows no reference to the Commissioner, and and no Office record shows it to have been brought to his atten- tion; but the author of the work cited was the Examiner who acted upon the case, and he states in his remarks upon it that the Commissioner was consulted in person. The claim, as shown by the file, was for the colors of two labels or wrappers, or a single color, and color regardless of form was insisted upon. The Examiner was upheld in his rejection. "A contrary opinion (says the author) would virtually-have conceded the right of any man to select a certain color by which his goods should be designated, a peculiarly-colored paper in which his merchandise should be wrapped, and his exclusive right to that color. The effect would have been, if such a wild theory were maintained, to gradually throttle trade." In Harrington v. Libby, (12 0. G., 188), this language was quoted by the Court with approval. (U. S. Circuit Court, So. Dist, N. Y.). The matter involved in this case was a decorated 890 UNITED STATES PATENT OFFICE. Ex Parte Landreth. 135 pail as a package for paper collars. Held that, such pail being a common article of commerce, the right of the claimant was not clear to seize it and make a title to its exclusive use for a special purpose by calling it a trade-mark. Injunction was refused. In the case Moorman v. Hoge, (2 Sawyer, 78), also quoted in the above case, the United States Circuit Court, District of California, held that a barrel of peculiar dimensions could not become a trade-mark irrespective of the brands upon it. Another case having a close bearing on the present issue is that of Tetter for ,a red color in illuminating oil. This was appealed to the Commis- sioner, who reversed the Examiner in a decision, recorded vol. 17, MSS. Decisions, p. 420, and directed the case to issue. So far the authority of the Office appears to be adverse to the Examiner's position; but the present owners by assignment, The Red C Oil Manufacturing Company, in their registration No. 9,952, Janu- ary 9, 1883, have abandoned the whole matter claimed by the former registrant, and restrict themselves to a colored label in which the word and letter "Red C" are prominent and the oil of a red color appears only in their statement as the particular goods on which the trade-mark is used. If they had regarded the mat- ter formerly registered as a valuable or even tenable trade-mark, it is reasonable to suppose they would not have abandoned it, since the value of a trade-mark, if not in direct proportion to its age, is greatly enhanced by long use. It does not appear that any Court ever directly determined upon the legality of this al- leged trade-mark. In the case United States v. Rider in the United States District Court, Maryland, Rider was charged with counter- feiting this trade-mark and was acquitted by the jury. Being a criminal case, it is not reported, and there was no written deci- sion; but the Baltimore American of October 8, 1878, reports that Judge Giles, in giving the case to the jury, expressed his opinion that the color of the oil could not be a valid trade-mark, although registered in the Patent Office. This expression of opinion, along with the failure of the suit, seems to account suffi- ciently for the voluntary abandonment of the alleged trade-mark, and to show that the Commissioner was in error in permitting it to be registered. APRIL, 1884, 135 Ex Parte Landreth. i. The conclusion to be drawn from these various decisions is that neither the color alone, nor the form alone, of a package, nor the color alone of an article of commerce can constitute a trade-mark. If we regard the authority of other nations, it should be added that the British Statutes for registration of trade -marks, both the former law and that now in force, set forth specifically what shall constitute a trade-mark for the purposes of the Act, and in both it will be noticed that color as an element is entirely ignored. This determines the practice of the British Courts, in which this element is treated as a subordinate accessory, needful perhaps as a means of distinguishing form in devices, but otherwise of little value. Such a case as that now presented could not stand a moment in a British Court. Recognized of high authority in trade-mark cases are the decisions of the French Courts. In the case Davey, Bickford, Watson et Cie. contre Nier, in the Tribu- unal Correctional de Nimes (Criminal Court), the Tribunal held that jurisprudence and authors concur that color alone cannot constitute a trade-mark; that independent of color a concurrence of other circumstances is necessary. Plaintiff having appealed from this decision, it was reviewed by La Cour de Nimes. (Answering to a Circuit Court). Regarding the sufficiency of color alone to constitute a trade-mark, the Court used this lan- guage: "Held, that if color cannot sometimes constitute a trade-mark it is because color isolated from all combination can scarcely serve for a distinctive sign. It has been determined that a tint given to a product in the process of manufacture cannot consti- tute a color-mark, and, further, that an artificial color extending to the entire product constitute a commercial quality of the mer- chandise rather than a distinctive mark for it. That in these con- ditions, outside of a patent for invention, color cannot create a monopoly to the exclusion of other manufacturers; but held; that from the moment that color, either by its special arrangement or by its application to certain parts of the product, however simple the arrangement, arrives at forming a distinctive sign capable of 892 UNITED STATES PATENT OFFICE. Ex Parte Landreth. 13S striking the eyes of the purchaser, it enters into the category of signs which can be employed as trade-marks." This case is fully reported in Annales de la Propriate Indus- trielle, vol. 25,/. 81. Adverse to this position, so distinctly enunciated by the French Court, and apparently the accepted doctrine in Europe and America, applicant cites Knott v. Morgan, a British case to be found in Cox' s Manual, (57). In this case no exclusive right in the plaintiff to the peculiar color on his omnibuses was recog- nized. It was not in any sense a trade-mark case; but injunction was granted to restrain the defendant from trading upon the plain- tiff's reputation. Applicant also cites Morgan v. Troxell, {Su- p-erne Court of Mew York, Cox Manual, 674). Here a silver-foil wrapper for soap was employed having a blue band upon it pass- ing around the cake. This arrangement of contrasting colors, simple as it is, brought the case precisely within the category named by the French Tribunal and separates it most widely from such a case as that now in question. In Sawyer v. Horn, (U. S. Circuit Court, Md. District, Cox Manual, 667), laundry-bluing was put. up in package consisting of a blue cylinder with a red top. Under the French ruling this might constitute a trade-mark, but the Court was very cautious not to so pronounce. Injunction was granted, "whether the complainant has a trade-mark or not," because there was no question that the respondent's bluing was so put up as to mislead customers. With the single exception of the Red Oil decision, the Exami- ner is unable to find an authority on either continent in support of such a case as that in issue; and in this decision, while direct- ing the issue of the case, it is interesting to remark that the Com- missioner himself indicated a doubt as to the real validity of the trade-mark. It was a doubt which he resolved in favor of the applicant in view of the fact that from his refusal there was no appeal. He expressed the feeling that while by his refusal he might prevent the applicant from enjoying a right he was possibly entitled to exercise, on the other hand if it should turn out that the matter in question was no trade-mark no harm could result. This decisioiij then, can be regarded only as a reference of the APRIL, 1884. 893 1SS Ex Parte Landreth. question to the final determination of the Courts and of public opinion. If the very language of the decision, however, does not remove it from the category of authorities on the subject, this is done by the subsequent history of the case, and we are left absolutely without an authority of the Offices or of the Courts on which such a case as applicant's can rest for validity. 2. The doctrine of the U. S. Courts, as far as it goes, is in entire consonance wifh that of the British and French, that color alone cannot constitute a valid trade-mark. With these determinations for our guidance it is perhaps need- less to inquire closely into the principles upon which the tribunals of so many lands have based their conclusions. In the judgment of the Examiner these principles are not far to seek. 3. As words, characters, and symbols, descriptive in their application to any merchandise, cannot be appropriated by any one to his exclusive use, for the same reason ordinary materials sold in the market and capable of employment for manifold uses cannot be exclusively appropriated to any particular one of these uses by any one. They are the common property of the public. Be the restriction ever so slight it is still a restriction, and abridgment of the pub- lic right. He who proposes to fence in any part of the highway must show a stronger title than his mere inclination. It is not enough to plead that since all the rest of the broad highway is open to him the traveller is not impeded. Public rights are, and always must be, more jealously guarded than private rights, since they are more liable to encroachment from the lawless and un- thinking. Hence the slightest approach to such an intrusion must be resisted. 4. Red materials, suitable for bags, being commonly on sale and in use, there can be no legal restriction upon their use by any person for any lawful purpose that suits his convenience. If the contrary were true, if it were in the power of the applicant to appropriate to his own use a red bag for peas, it would be equally in the power of the next man to appropriate a blue bag to the same merchandise, and the next a green bag, and so on. Who can say where the line must be drawn? Is there any reason why the trader who chooses should be prevented from adopting a white 894 UNITED STATES PATENT OFFICE. 7 Ex Parte Landreth. 135 bag to distinguish his goods if this door is once opened? Such a suggestion needs no answer. There can be no restriction on the use of white paper or white fabrics for any lawful purpose, and the Examiner can see no reason why this is not just as true of red cloth and red paper or of cloth or paper of any hue or shade com- monly sold and used. In the ordinary definitions given of a trade-mark the Examiner believes he finds one source of the confusio* that exists upon this question in some minds, and at the same time additional reason for the position taken by the Courts. Upton opens his first chapter on the Law of Trade-Marks with this definition: "A trade-mark is the name, symbol, figure, letter, form, or device adopted and used by a manufacturer, etc." The present British law, in its enumeration of the matter which must be contained in a trade-mark for registration, after certain other essentials, none of which involve color, says: "(c) A distinctive device, mark, brand, heading, label, ticket, or fancy word or words not in common use." These may be regarded as fair examples of the languages used by writers in defining a technical trade-mark. If we consider carefully the terms employed — "name, symbol, mark, figure, word," etc. — we find in none of them any ambiguity except in the single word "device," which is employed by every writer. To persons unaccustomed to nice distinctions in the meaning of words this one, with its diversity of meanings, has often been mis- leading. 5. It has been defined, first, a contrivance, scheme, expedient, and the various synonyms of these words; second, artifice, stratagem, trick, and other words of like meaning; and, third, emblem, symbol, type, sign, etc. In the Patent Office it is constantly used to signify a mechanical contrivance. In common language elsewhere and in literature it signifies a trick, a strata- gem, or an expedient for any purpose. This last interpretation, perhaps, is the principal source of confusion, since it leads many to imagine that any expedient they may fix upon to distinguish their goods may constitute a lawful trade-mark. Such is the "device " of putting them up in packages of particular shape or dimensions, which the decisions heretofore cited show to be unten- APRIL, 1884. 895 135 Ex Parte Landreth. able as trade-marks. Such, precisely, is the matter of the present application. It is a device in the sense that it is an expedient. As indicated by applicant in his written and oral statement, it is part of a system by which he attempts to distinguish his goods; but it is in no sense a device as the word is used in the British law and in the treatises on the subject, To determine accurately what this meaning is, it will not be amiss to notice how the word is used by writers upon a subject in some respects analogous, and upon which language has for centuries been used with remarkable precision — to wit, heraldry. When Scott, in Marmion, speaks of Scotland's arms, device, and crest, Embroidered round and round, and elsewhere of the streamers: Various in shape, device, and hue, no close study is necessary to see that whatever specific meaning attaches to the word "device," it is something quite distinct from mere color. It is a design capable of representation by embroid- ery. So in Boutell 's Heraldry, {London, 1864,),/. 15, where it is said — " The shield * * * * has at almost all times been decorated with some device or figure." The last words are used synonymously, and indicate a decorative design or symbol on the surface of the shield. Citations of this character might be multiplied indefinitely. Only one will be given. The author last named, in his work entitled " English Heraldry" p. 13, says: ' ' Among the earliest shields and banners of arms * * * many are found to be without any device whatever, their distinction con- sisting simply in some peculiarity of the coloring." It would be difficult to express more clearly in language that a device and a mere peculiarity in color are two quite distinct things in the art of heraldry. It is not strange that the Americans, to whom heraldry is scarcely known, save as a relic of an institution 896 UNITED STATES PATENT OFFICE. Ex Parte Landreth. X35 in which they have no concern, this specific meaning of the word should have been lost sight of; and; especially, that those to whom its use in the customary Patent Office sense is habitual, shduld fail to recognize its clearly-defined significance when unrelated to a mechanical structure; and yet we cannot conceal from ourselves that the emblematic language of this art is closely analogous to that of trade-marks. The symbols represented on a shield or escutcheon or panel indicated the person or family of their owner: and in the same way the marks impressed or in any way produced by a manufacturer upon his merchandise serve to identify them with their origin. So when trade-marks came to be treated of in statutes and in works of authors the language of arms afforded the readiest and, perhaps, the only terms that could be employed in their discussion. Hence the strict sense of the word " device;" and as in arms it might be a picture, a motto, or any of the cur- ious blazonry of the art, but never a mere surface of solid color, so a device in the trade-mark sense may be almost anything in the range of fancy — a name, picture, monogram, quaint design of any sort, but never can consist in the mere application of color to the merchandise or the packages thereof. Such body-color may be the field on which the trade-mark is exhibited, as the knight's shield constituted the field on which his arms were emblazoned, and nothing more. A single stripe or bar of contrasting color im- posed on such a body, a chevron, or any other mark or distinctive pattern, however simple, may form a sufficient trade-mark, since it constitutes a true "device." The space the Examiner has given to this question indicates the importance he attaches to it. He has studied it more closely be- cause, as before stated, there is no American decision in which it is discussed, except the Commissioner's in the Red Oil Case, and that, for reasons given, cannot now be regarded as authoritative. To grant the registration asked would be, in his judgment, an abrupt departure from established precedents. With the possi- bility that by long use and identification in the minds of pur- chasers with his particular goods, the applicant may acquire rights of some sort analogous to those of trade-marks, in which, in the APRIL, 1884. 897 135 Ex Parte Landreth. interest of commerce, he might be sustained by the Courts, yet the Examiner can find no authority which, inhis opinion, would justify him, in the present conditions, in admitting the matter pre- sented to registration as a trade-mark. The Examiner has very carefully and fully examined the ques- tions raised in the appeal, and I am content to adopt his decision as my own. His action is affirmed. 898 U. S. C. C. WEST. DIST. OF ARKANSAS. Liggett & Myer Tobacco Co. vs. Hynes. 136 136 CIRCUIT COURT UNITED STATES, WESTERN DISTRICT OF ARKANSAS. In* Equity. Liggett & Myer Tobacco Company vs. Hynes. Decided May, 1884. Reported 20 Federal Rep., 883. "Liggett &* Myer's Star Tobacco" Case. 1. Trade-Mark— Infringement.— In a case where it is claimed that a trade-mark has been infringed, to constitute an infringement it is not necessary that the device complained of should be a fac simile of the device of complainants. There may be an infringement without exact similarity. 1. Same— Resemblance.— Two trade-marks are substantially the same in legal contemplation, if the resemblance is such as to deceive an ordi- nary purchaser, giving such attention to the same as such a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. MAY, 1884. 899 136 Liggett & Myer Tobacco Co. vs. Hynes. 3. Same — Liability to Deceive. — The resemblance need not be such as would deceive persons seeing the two trade-marks placed side by side, or as would deceive experts. 4. Same — Intention to Deceive. — There may be an infringement with- out a specific intent to deceive the public. If the effect of the device, when considered alone or in connection with the shape, size, charac- ter and appearance of the article upon which it is placed, is to deceive, the party adopting it must be held to have intended deception, as every man -is held to have intended the necessary, natural and probable con- sequences of his own acts. This is a bill in equity, brought here on account of citizenship ■of the respective parties, to, perpetually restrain the defendant from using the mark attached to complainant's exhibit, " Robert 5. Hynes' Plug Tobacco," on plug tobacco, complainants claim- ing to have an established right to the use of the mark of a "star ' ' affixed to plugs of tobacco as a trade-mark, and complainant's mark is shown on complainants' exhibit, "Liggett & Myer's Plug Tobacco." Specimens or samples of both the complainants' and defendant's goods are produced in Court and offered in evidence; also wood engraving of the same in the brief of the complainant. The star of the complainant was a simple six pointed, star, while that of the defendant had curved indentations between the points -and obtuse angles at the points, which were also six in number. Paul Bakewell, for complainant. Clendenning 6° Sandels, for defendant. Parker, J.: The law is well settled that a party who has appropriated a particular trade-mark to distinguish his goods from other similar goods, has a right or property in it which entitles him to its ex- clusive use, and that this right is of such a nature that equity will protect it by injunction from innovation. Hostetter v. Van Win- kle, 1 Dill, 329. The leading principle upon which the law of trade-mark is based, is that the honest, skillful, and industrious manufacturer, or enterprising merchant, who has produced or brought into the market an article of use or consumption that has 900 U. S. C. C. WEST. DIST. OF ARKANSAS. Liggett & Myer Tobacco Co. vs. Hynes. IS© found favor with the people, and who, by affixing to it some name, mark, device, or symbol, which serves to distinguish it as his, and to distinguish it from all others, has furnished his individual guaranty and assurance of the quality and integrity of the manu- facture, shall receive the first reward of his honesty, skill, in- dustry, or enterprise, and shall in no manner and to no extent be deprived of the same by another, who to that end appropriates and applies to his production the same, or a colorable imitation of the same name, mark, device, or symbol, so that the public are or may be deceived or misled into the purchase of the productions, of the one, supposing them to be those of the other. 6 Watt, Act. &f Def., 23, and authorities there cited. The question to be considered in this case is, whether the con- duct of the defendant amounts to an infringement of the plain- tiff's trade-mark, or an injury to his legal or equitable rights. As was well remarked by the Kentucky Court of Appeals in the case of Avery v. Mickle : "The object of the trade-mark law is to prevent one person from selling his goods as those of another, to the injury of the latter and of the public." It grew out of the philosophy of the general rule that every man should so use his own property and rights as not to injure the property or rights of another, unless some priority of right or emergency exists to jus- tify a necessarily different manner of use. It is true, in this case, that the trade-mark upon the tobacco of defendant is not a fac simile of that upon the tobacco of the plaintiff. If it was, it would, of course be an infringement. They are not exactly similar. But to constitute an infringement exact similarity is not required; there may be an infringement without it. The Supreme Court of the United States in Gorham Co. v. White, 14 Wall., 511, declares: "Two trade-marks are substantially the same in legal contemplation, if the resemblance is such as to deceive an 'ordinary purchaser," — giving such atten- tion to the same as such a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. The same Court, in McLean v. Fleming, 96 U. S., 255, says: "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 HAY, 1884. 901 136 Liggett & Myer Tobacco Co. vs. Hynes. purchaser in the exercise of ordinary care and caution in such matters, it is sufficient to give the injured party a right of redress." Nor need the resemblance be such as would deceive persons see- ing the two trade-marks placed side by side, (Manuf g Co. v. Trainer, 101 U. S., 64), or such as would deceive experts, per- sons, because of their peculiar knowledge from their being whole- sale or retail dealers, or in any other way specially conversant with the trade-mark simulated. But the tradesman brings his privilege of using a particular trade-mark under the protection of equity if he proves, or it is apparent or manifest to the Court by inspection, that the representation employed bears such a resem- blance to his as to be calculated to mislead the public generally, who are purchasers of the article, to make it pass with them for the one sold by him. If the indicia or signs used tend to that result, the party aggrieved will be entitled to an injunction. This principle is sustained by the cases above referred to; by Walton v. Crowley, 3 B latch/., 440; 2 Story Eq. Jur., 951; 2 Kent Comtn., 453; and a long and unbroken line of authorities, American and English. The difference in the trade-marks of the plaintiff and defend- ant, in this case, would, perhaps, be at once detected by the in- telligent user of tobacco, looking for his favorite brand, just as the man of luxurious tastes would discern his favorite brand of champagne. But the plaintiff is entitled to protection if the trade-mark of defendant would deceive the ordinary purchaser, purchasing as such persons ordinarily do. 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 man- ner in which they usually order it. There is no proof in this case, coming from living witnesses, that the defendant adopted the trade-mark complained of with the specific intent of selling his tobacco as that of plaintiff, or that he expected to deceive the public. But if it is apparent to the Court from an inspection of the two articles, or the Court is able to see by such inspection, that plaintiff's trade-mark is so simulated as probably to deceive customers or patrons of his trade or business, there is a good ground for the Court to enjoin. Filley v. Fassett, 902 U. S. C. C. WEST. DIST. OF ARKANSAS. Liggett & Myer Tobacco Co. vs. Hynes. IS© 44 Mo., 178. If the effect of the simulated trade-mark is to de- ceive the public into the belief that the article upon which it is placed is the article of some other manufacturer, then it is a de- ception, whether it was the actual intention of the person using the simulated trade-mark to deceive or not, as the principle of law applies that persons are held to'have intended the necessary, natural, and probable consequences of their acts. In looking at the trade-mark to see. whether it is so far an imi- tation of another as to deceive ordinary customers exercising ordinary care when purchasing, we must not look at the device alone, but we must also examine the article upon which it is placed, and if there is a resemblance in it to another article bear- ing the trade-mark that is claimed to have been infringed, and if this resemblance when blended with the appearance of the. device, has a tendancy to deceive the ordinary public into the belief that they are buying the other article, then the very nature of the ar- ticle becomes potential evidence in the case to show a purpose to deceive. In this case, if the device of defendant was upon a plug of tobacco different in shape from that of complainant, the chance of deception would be so slight that no Court could find from the appearance of the two designs, that the ordinary public would be deceived. Now, while there is no trade-mark in the shape of the plugs of tobacco of the complainant, and consequently the de- fendant could make his plugs in any shape he pleases, without being guilty of an infringement, yet when he makes his plugs in such a way as to give them the general appearance of complain- ants' . and puts on thein a device of such a character, and of such shape and appearance, as that the customer generally, when he sees the shape and appearance of the plug, and the device on it, will be deceived into the belief that it is complainants' tobacco that he is buying, there is a state of case presented by blending the size, nature, structure, and appearance of the plug with the device which would not exist if we viewed either the plug of to- bacco or the device separately. Taking this as the true rule, and applying it in this case, I am forced to the conclusion that the ordinary mass of purchasers MAY, 1884. 9.O3 136 Liggett & Myer Tobacco Co. vs. Hynes. would be deceived, after paying ordinary attention when purchas- ing, into the belief that they were buying the tobacco of complain- ant, when in fact they were getting the tobacco of the defendant. Ordinary care, in this connection, means the care that men ordi- narily exercise when buying chewing tobacco. Entertaining this view of the case, I think complainant is en- titled to an injunction enjoining defendant from using the device adopted by him; and it will be so ordered. 904 . U. S. C. C. SOUTH. DIST. OF NEW YORK. Atlantic Milling Co. vs. Robinson, et al. 137 137 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Atlantic Milling Company vs. Robinson, and others. Decided 6 May, 1884. Reported 20 Federal Rep., 217. ' ' Champion Flour 1 ' Case. 1. Trade-Mark — Right to the Symbol Inseparable from right to sell Commodity. — The right to the exclusive use of a word or symbol as a trade-mark, is inseparable from the right to make and sell the commodity which it has been appropriated to designate. 2. Same — May be Peculiar to a Factory and pass with it. — A trade- mark may be appropriated by a manufacturing company as well as an individual, and pass with the property to their successors. 3. Same — Measure of Damages. — The measure of damages is limited by the extent to which the unlawful use of the design by the defendant, has interfered with the sale of plaintiff's commodity. Briessen 6° Steele, for complainants. A. V. Briessen, of coun- sel. L. H. Arnold, Jr., for defendant Robinson. Geo. H. Forster, for defendant Rowland. MAY, 1884. 90S 137 Atlantic Milling Co. vs. Robinson, et al. Wallace, J.: The proof shows that in 1861, the firm of Alexander H. Smith & Co., then the proprietor of the Atlantic Mills, at St. Louis, Missouri, adopted the word "Champion," and employed it to distinguish a particular quality of flour made and sold by them. From that time until the present it has been used as a trade-mark, either by that firm or the several firms and corporations that be- came the proprietors of the property and business of the Atlantic Mills. The flour to which it was applied was particularly adapted for the southern export trade, and became generally known and recognized as the production of the Atlantic Mills by the word which was thus used to designate it. The complainant has not made proof of any formal transfer by Alexander H. Smith. & Co. to any of the succeeding proprietors of the Atlantic Mills, of the right to use the trade-mark; and complainant has acquired that right it is because it passed upon the purchase of the mill property and business as an accessory thereof, to each purchaser who became the proprietor of the prem- ises, including the complainant, without any agreement respect- ing the trade-mark. 1. The right to the exclusive use of a word or symbol as a trade-mark, is inseparable from the right to make and sell the commodity which it has been appropriated to designate as the production or article of the proprietor. It may be abandoned if the business of the proprietor is abandoned. It may become identified with the place or establishment where the article is manufactured or sold, to which it has been applied, so as to desig- nate and characterize the article as the production of that place or establishment, rather than of the proprietor. A trade-mark of this description is of no value to the original proprietor, be- cause he could not use it without deception, and therefore would not be protected in its exclusive enjoyment. Such a trade-mark would seem to be an incident to the business of the place or establishment to which it owes its origin, and without which it can have no independent existence. 2. It should be deemed to pass with a transfer of the business, because such an implication is consistent with the character of the 906 U. S. C. C. SOUTH. DIST. OF NEW YORK. Atlantic Milling Co. vs. Robinson, et at. 137' transaction and the presumable intention of the parties. Dixon Crucible Co. v. Guggenheim, 3 Amer. Law T., 228; Hudson v. Osborne, 39 L. J. Ch. (J\T. >S.), 79; Shipwright v. Clements, 19 Weekly Rep., 599. The defendant controverts the right of the complainant to the exclusive use of the word "Champion" as a trade-mark, by the testimony of two. witnesses, to the effect that they used it or saw it used as a brand upon flour before it was adopted by Alexander H. Smith & Co. The testimony of the witness Potter fails to show the use of the word, in the instances to which he refers, prior to 1867, and is therefore valueless. The witness Reamey testifies that he used it for branding the flour of nine different firms, as long ago as 1857. None of the persons for whom it was so used have been produced, although many .of them were acces- sible. If Reamey's statement is correct, it could have been readily corroborated. The failure to do so is significant. His statement is not supported by any extrinsic evidence, and is not deemed sufficiently reliable to defeat the complainant's right. 3. Upon the accounting to ascertain damages, the fact is not to be overlooked that, in the instances in which the trade-mark has been used by the defendants in connection with the names of other manufacturers than the complainant's, damages are mea- sured by the extent to which the unlawful use of the word " Cham- pion ' ' has interfered with the sale of their flour. Their right to an injunction is not affected, because the appropriation of their trade-mark has been a limited one, and it is not incumbent on them to show that it has been copied in every particular. It is sufficient if his trade-mark has been copied to an extent calcu- lated to mislead purchasers, and cause the article to which it has been applied to pass as their article. The cases Gillott v. Ester- brook, 48 N. Y, 374; Newman v. Alvord, 51 N. Y, 189; Hier v. Abrahams, 82 N. Y., 519, and Walton v. Crowley, 3 Blatch. A decree is ordered for complainant. JULY, 1884. 907 138 Ex Parte Lyon, Dupuy & Co. 138 IN THE UNITED STATES PATENT OFFICE. Ex Parte Lyon, Dupuy & Co. Decided i JULy, 1884. Reported 28 O. G., 191. ' ' Triumphant Flour ' ' Case. 1. No applicant may register a trade-mark unless he can establish, first, that he has the right to use it, and no one else has; second, that it is not identical with the registered or known trade-mark of another person, and beyond this he must show that he is using the trade- mark which he so owns, in commerce with foreign nations or Indian tribes. 2. The statute does provide that the trade-mark sought to be registered shall be used in foreign commerce, but it does not in terms provide, nor in fair intendment convey the idea, that a party may acquire the right to use somebody else's trade-mark, merely by using it in such trade. 3. Where the records of this Office disclose that certain parties registered a trade-mark under the law of 1870, that such trade-mark was their property, that they had been using it in this country for ten years next preceding the date of their application for registration, and there is no evidence that they have ever abandoned such trade-mark, Held: That section 3, of the Act of 1881, and the spirit of the whole statute, authorize the Patent Office to take notice of the facts recited in said records, in determining "the presumptive lawfulness of claims to the alleged trade-mark" by subsequent applicants for registration, and the Examiner was justified in rejecting the application for registration on the facts disclosed in said record. 908 UNITED STATES PATENT OFFICE. Ex Parte Lyon, Uupuy & Co. 1S8 Appeal from the Examiner of Trade-Marks. Trade-Mark for Wheaten Flour, "Triumphant." Application filed December 21, 1883. Mr. R. H. Eddy and Messrs. Voorhees & Singleton for the applicants. Dyrenforth, Acting Commissioner; The applicants seek to register as a trade-mark for wheat flour the word "Triumphant." The Examiner refuses registration upon the ground that the mark too nearly resembles the trade- mark of Imbs, Meyer & Co., (the word "Triumphant" appro- priated to flour), their certificate being No. 3,472, and dated February 29, 1876, in the application for which it is stated that the trade-mark had been " used ten years last past." The applicants do not deny the near resemblance of their trade- mark to the trade-mark registered by Imbs, Meyer & Co., that it so nearly resembles a mark appropriated to the same class of goods that one might be mistaken for the other, but contend, it is understood, that the citation is not proper, in that Imbs, Meyer & Co., having registered under the law of 1870, since held uncon- stitutional, and not having renewed their registration under the present law, there is no competent evidence that the word is still used as a trade-mark, the certificate and record under the old law not being competent evidence of ownership. The question is clearly raised on this appeal, whether the Examiner may properly reject an application for registration of a trade-mark on reference to a prior registration of the same thing by another party, made under the Act of Congress approved in 1870, subsequently and recently declared to be unconstitutional. In other words, is the registration made under the Act of 1870, which is on the file in the Patent Office, and which was made in conformity to the law as it then stood, evidence of anything? If so, of what? The ques- tion is worthy of careful consideration, as it is arising constantly, and a precedent must be established. JULY, 1884. 909 1 S 8 Ex Parte Lyon, Dupuy & Co. The Act of Congress, approved March 3, 1881, (passed to cure the defects in the Act of 1870), which provides for the registra- tion of trade-marks, is very carefully worded, and, in my judg- ment, was so worded with direct reference to preventing the practice of fraud upon those who had, under a prior law, and in accordance with the terms thereof, registered their trade-marks, and also protect the public against imposition. No one adopts the trade-mark of another, or a trade-mark which is similar in appearance to that of another, except for the purpose of deriving benefit therefrom. The benefit hoped for results from the repu- tation of the trade-mark. If it has not been in use except for a very short period, it is substantially worthless, since one device or symbol, when first appropriated, is about as good as another, the value of a trade-mark depending upon the superior quality of the article of commerce to which it is attached, or its desirability to the public, since it becomes indicative, after a long use, of that peculiar quality, and the article in the market becomes known and designated by that particular trade-mark. If the trade-mark is valuable, it is because of its use in connection with an article of peculiar quality. If it has been used in connection with an article of commerce which is of inferior quality or undesirable, the trade- mark is not only worthless, but it is palpable that its use would be absolutely injurious. So it follows as a corollary that where an applicant has adopted as his own and seeks to register a trade- mark which is the fac simile of that used by another, attached to the same class of merchandise, he does it, if knowingly, to avail himself of the property and rights of that of another person or firm, and with the intent "to deceive purchasers," and this is precisely what the law seeks to prevent. The question here -raised is, what shall be regarded as sufficient evidence that' an applicant is not entitled to the trade-mark he seeks to register. It is understood that the applicants in this case admit that their trade-mark is substantially the same as that reg- istered in 1876 by Imbs, Meyer & Co., which is cited as a reference; but make the point that, inasmuch as the registration was not authorized by law, therefore it cannot be accepted by this Office as evidence of the existence of such trade- 9IO UNITED STATES PATENT OFFICE. Ex Parte Lyon, Dupuy & Co. 138 mark, nor of prior use or ownership by others, nor, in fact, of anything which could tend to defeat the registration of the trade- mark they present. Now, let me examine the case at bar in the light of what I regard as the obvious intent and meaning of this statute. The application under, consideration is in proper form, and, in the absence of any showing against it, entitles applicants to registration of the trade-mark as prayed. They are, however, met by a reference, which, if at all competent as evidence, raises a presumption that applicants' declaration that " no other person, firm, or corporation has a right to such use, (use of the trade- mark), either in the identical form or in such near resemblance, thereto as might be calculated to deceive ' ' the public, is errone- ous; and, further, the reference cited, if considered as evidence, negatives the allegation in the pending application that the trade- mark sought to be registered is not — ' ' Identical with a * * * known trade-mark owned by another and appropriate to the same class ai merchandise, or which so nearly resembles some other person's lawful trade-mark as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers." If the reference is competent as evidence tending to establish the facts disclosed therein, clearly the applicants must be required to meet it by additional evidence to sustain the declaration con- tained in their application be refused. Applicants do not offer to meet the reference cited; do not intimate in reply to it that Imbs, Meyer & Co., have abandoned their trade-mark, or that they (the applicants) have in a lawful way, in view of any previous right of Imbs, Meyer & Co., acquired the right to use it now. Their answer to the reference is that the Act of Congress, under the pro- visions of which Imbs, Meyer & Co., registered that trade-mark, was, by the Supreme Court, held to be unconstitutional, and therefore the registration was nil in law, and the Commissioner of Patents is not authorized to regard the record of registration at all for any purpose whatever; that to all intents and purposes the applicants are in the same position, so far as the Office can take notice, as if Imbs, Meyer & Co., had never registered or at- tempted to register the trade-mark in controversy, and the JULY, 1884. 911 XS8 Ex" Parte Lyon, Dupuy & Co. Office had in no wise received any intimation whatever of the fact that they owned, or claimed to own, a property right therein. Is that position based on reason or authority? I am satisfied that it does not rest on sound reason, and hence, I think, not upon authority. "A trade-mark becomes the exclusive property of one only when he has, prior to any one else, appropriated and used it to indicate the origin, ownership, and quality of an article to which it is attached. Its value rests on reputation and on its implied guaranty that the article is of a certain quality. Its object is to prevent one person from selling his goods as those of another of established reputation, to the injury of that other." See Avery c^ Sons v. Meikle &" Co., 27 O. G., 1027. If the trade-mark in question, or one substantially the same, has been for many years in use by Imbs, Meyer & Co., on the same character of merchandise, (flourj, in connection with which applicants propose to use and do use it, one thing is clear, and that is that the trade-mark is of value, for no firm will use a trade- mark which has a bad reputation, as such would destroy the trade instead of building it up. If it is valuable, it may be assumed that value results from the fact that Imbs, Meyer & Co., have used it in connection with flour of superior quality. It follows that if applicants use that identical trade -mark, or one substantially identi- cal with it, the result must be to "cause confusion or mistake in the mind of the public or to deceive purchasers." In that case the law requires that registration should be denied. 1. But it might be urged that the use and ownership mentioned in the Statute have reference only to the right to use that particu- lar trade-mark in commerce with the Indian tribes and foreign nations, and that no other character or quality of title or owner- ship or use can be considered. That view, in my judgment, were but a thin disguise and subterfuge under the protection of which one party would be seeking to appropriate property that does not belong to him, and by the same token to practice a fraud on the public. The statute does not say in words, nor does it by fair intendment convey the idea, that a party may appropriate and have registered as his own' the old and well-established trade-mark 912 UNITED STATES PATENT OFFICE. Ex Parte Lyon, Dupuy & Co. 138 of his neighbor by proving that he has sent a few (one or more) packages of goods with the trade-mark attached to the Indian tribes, or one or more to some foreign nation, and thereupon pre- dicate a perfect right to register that trade-mark, thus clouding his neighbor's title to his property, if not in fact robbing him of it altogether. 2. The statute does not provide that the trade-mark sought to be registered shall be used in foreign commerce or with the Indian tribes; but it does not provide that a party may acquire the right to register somebody else's trade-mark, and so secure prim a facie evidence of ownership, simply by using it in such trade. The statute provides that a trade-mark sought to be registered shall not be identical with a registered or known trade- mark owned by another, etc. It also provides that applicant shall state under oath that he has the right to use such trade-mark, and that no other person, firm, or corporation has the right to such use, either in the identical form, or in any such near resemblance thereto as might be calculated to deceive. In my judgment, it is .clearly wrong, in view of the effect which would result, to read the statute as if the words " in commerce with foreign nations or In- dian tribes" were interpolated after the word "registered," and after the word "deceive" in the second section, and after the word < ' merchandise ' ' and after the word ' < purchaser ' ' in the third section. Such construction could not have been intended by Congress. i. On the contrary, no applicant may register a trade- mark unless he can establish, first, that he has the right to use it, and no one else has; second, that it is not identical with the registered or known trade-mark of another person; and beyond this he must show that he- is using the trade-mark which he owns in commerce with foreign nations or Indian tribes. The owner- ship does not give the United States jurisdiction. It is the use in commerce with foreign nations or Indian tribes that confers it. But the statute makes not merely the use but also the exclusive ownership a prerequisite to registration. To give the Statute the construction contended for is to use the law not to prevent fraud and imposition, but to shield and protect both. The proposition JULY, 1884. 913 138 Ex Parte Lyon, Dupuy & Co. that an owner of a trade-mark may assert his common law right, notwithstanding registration by another, is not of importance in determining the question here presented'. It is a novel suggestion that the statute of the United States authorizes one party to ap- propriate the property of another unless the common law can afford a remedy to prevent it, which the Court will utilize to that end. In passing upon the sufficiency of the reference I endeavor to act upon principles of common sense. The registration of Imbs, Meyer & Co., was complete under the law of 1870, and estab- lished not only the title to the trade-mark in controversy, but that they had been using it for ten years. There is no pretence that that record does not disclose the exact truth. The point made is that the law under which that solemn act took place and the record of it was made up was unconstitutional, and, ergo, I must shut my eyes to what that record discloses. But the statute says that applicant shall not be entitled to registration of a trade- mark which is identical, or substantially identical with the regis- tered or known trade-mark of another. This record discloses to me that applicants are seeking to register substantially the known trade-mark of another — to wit : that of Imbs, Meyer & Co. It is true that these parties may have abandoned their trade- mark, but abandonment is not to be presumed. If it had become worthless, no other person would have sought to appropriate it, or that which is substantially identical with it. It is said that to act upon the record of registration made under the law of 1870 would be, in effect, the same as citing a rejected application for a patent. This is error. If there is any simi- larity, it is more like citing a patent itself, and the full record of public use. To decide otherwise would be to open Pandora's box and turn loose fraud upon individuals and imposition upon the public. On the other hand, the construction I give the statute cannot work any hardship. Certainly it is no injustice to an ap- plicant to require him fairly to establish that he is the owner of the property he seeks to appropriate as his own. If a former reg- istrant has abandoned his property, it is easy to ascertain and prove the fact. If applicants .have by purchase or otherwise legally 58 9H UNITED STATES PATENT OFFICE. Ex Parte Lyon, Dupuy & Co. 138 acquired the right to the property, it could not be difficult to estab- lish that fact. It is contended that the registration of a trade-mark confers no title thereto. Neither does the registration of a deed to land confer title. But the certified transcript of the record is evidence of title, and the statute permits registration of a trade-mark as a means of preserving in a public record evidence of ownership, and since it is evidence of ownership care has been taken in the statute to provide against fraudulent registration. It is said that I am giving the registration under the law of 1870 the same force and effect as if it had been made under the statute of 188 1 . This is palpable error. I find here in this Office a public record — public in the sense that it is open and notorious, and may be seen and read by all men — in which is recorded a fac simile of trade-marks, with a full statement of ownership, and period of use, etc., all under the sanction of an oath. This public record discloses that Imbs, Meyer & Co., in 1876, registered a trade- mark, proved that it was their property; that they were using it attached to flour; that they had been so using it for ten years next preceding the date of their application for registration. Now, I do not hold that that registration has the force and effect of a registration made under the present law. Nothing of the kind. 3. But I do hold that I am properly authorized under the pro- vision of section 3 of the Act of 1881, and by the true spirit and intent of the whole statute, which is to prevent and not to con- nive at fraud and imposition, to take notice of the facts recited in that record, in determining << the presumptive lawfulness of the claim to the alleged trade-mark" by the applicants. I hold, therefore, that the Examiner was clearly justified in rejecting ap- plicant's petition of registration on the reference of Imbs, Meyer & Co., which disclosed that they were and had been for many years using that identical trade-mark, or one substantially the same, on flour; that they had been so using it for a long time be- fore the applicant's claim to have known of it or sought to use it. The decision of the Examiner is approved and affirmed. JULY,, 1884. 915 139 Estes, et al. vs. Williams, et al. 139 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. ESTES, AND OTHERS, Williams, and others. Decided 31 July, 1884. Reported 21 Federal Rep., 189. 1 < Chatterbox ' Case. COPYRIGHT— FOREIGN PUBLISHER— AMERICAN ASSIGNEE- USE OF A NAME— RIGHT OF ACTION. The publisher of "Chatterbox" in England, having assigned the exclusive right to use and protect that name in this country, the assignee may maintain his action against any other person who undertakes to publish books under that name in the United States. J. L. S. Roberts, for orators. Waller M. Rosebault and Roger Foster, for defendants. Wheeler,' J.: Mr. James Johnston, of London, England, appears to have pub- lished a regular series of juvenile books of uniform appearance, 9l6 U. S. C. C. SOUTH. DIST. OF NEW YORK. Estes, et al. vs. Williams, et al. 189 and in a style of peculiar attractiveness, and called them the Chat- terbox, until they have become widely known and quite popular by that name, in that country and this. He assigned the exclu- sive right to use and protect that name in this country to the orators for 10 years from January i, 1880. The defendants have since that time commenced the publication of a series of books, and called them by that name, and made them so similar in ap- pearance and style to those of Johnston as to lead purchasers to think they are the same. As a matter of fact 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 publish 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 defend- ants have the right to reprint the compositions and illustrations contained in these books, including the titles of the several pieces and pictures. Jollie v. Jaques, 1 Blatchf., 618. 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. These principles are discussed, settled, and applied in McLean v. Fleming, 96 U. S.; 245- It has been argued that there have been various publications from earlier times by the same name, so that no new right to the use of that name could be acquired. This would be true, doubt- less, as to all such publications as those to which the name was applied, but not as to those essentially different. The fact of these other publications bears only upon the question of fact as to whether Johnston's work had come to be known by this name, JULY, 1884. 917 139 Estes, et al. vs. Williams, et al. and the defendants by using the name represent that their work is the same. The conclusion stated as to the fact has been reached after consideration of what is shown as to these other publica- tions. Johnston had the exclusive right to put his own work, as his own, upon the markets of the world. No one else had the right to represent that other work was his. Not the right to prevent the copying of his, and putting the work upon the markets, but the right to be free from untrue representations that this other work was his when put upon the markets. This gives him noth- ing but the fair enjoyment of the just reputation of his own work, which fully belongs to him. It deprives others of nothing that belongs to them. The question then arises whether Johnston could transfer his right, or any part of it, to the orators, so that the defendants, in what they have done and are about to do, trespass upon the ora- tor's rights, and not upon Johnston's. He could not do all this himself; he must act by and through others. No reason is ap- parent why he could not give them the exclusive right to put his work on the market as his, as he had that right. This seems to be what he undertook to do. They had that right, and the profits of its enjoyment would, belong to them. The defendants would deprive them, and not Johnston, of the profits. The injury would be to them and not to him, and they are, in this view, entitled to the remedy. It is objected that they also trespassed upon Johnston's rights before they acquired them. This may be true, and, if so, they may be liable for the damages. Such a trespass would not pre- vent them from acquiring a lawful right in a lawful manner. Had such trespasses been so frequent and long-continued that the work had come to be known to be the work of others, or had lost iden- tification as the work of Johnston, the course of the defendants might not amount to any representations that their work was his; but the evidence does not show this, as the case is now understood the orators appear to be entitled to relief. Let there be a decree for an injunction and an account. 9l8 U. S. C. C. SOUTH. DIST. OF NEW YORK. Luyeties, et al. vs. Hollender, et al. 140 140 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Luyeties, and others, vs. Hollender, and others. Decided 9 August, 1884. Reported 21 Federal Rep., 281. 1. The rights and remedies concerning trade-marks generally depend upon the laws of the States, common or statutory, and not upon the laws of the United States. 2. Laws of the United States now in force, relate only to trade-marks specially used in connection with foreign nations or with Indian tribes. 3. Courts of United States have not jurisdiction between citizens of same State, unless the trade-mark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial inter- course with an Indian tribe. Samuel T. Smith, for orators. Louis C. Raegener, for defendants. AUGUST, 1884. 919 140 Luyeties, et al. vs. Hollender, et al, Wheeler, J. : 1. Rights and remedies pertaining to trade-marks generally depend upon the laws of the State, common and statutory, and not upon the laws of the United States. Trade-Mark Cases, 100 U. S., 82. 2\ The laws of the United States now in force, under which this trade-mark was registered, relate only to trade-marks specially used in commerce with foreign nations, or with the Indian tribes. Act of March 3, 1881, (21 St. at Large, ch. 137, sec. 1). 3. They are particularly restricted so as not to give cognizance to any Court of the United States in an action or suit between citizens of the same State, unless the trade-mark in controversy is used on goods intended. to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe. Id. , sec. n. The goods on which the trade-mark in question is used are not intended to be transported to any foreign country, nor for any Indian tribe, but are mineral waters sold for consumption in the City of New York; and the parties are all citizens of the State of New York. As this case is now presented, the orators are not entitled to maintain it in this Court, and this motion for a preliminary in- junction must be denied. 920 U. S. C. C. SOUTH. DIST. OF NEW YORK. Goodyear Rubber Co. vs. Goodyear's Rubber Mfg. Co. 141 141 UNITED STATES CIRCUIT COURT, SOUTHERN DISTRICT OF NEW YORK. In Equity. Goodyear Rubber Company vs. Goodyear's Rubber Manufacturing Co., et al. Decided 15 August, 1884. Reported 30 O. G., 97. "Goodyear Rubber Co." Case. 1. Trade Name— Right op Corporation to Acquire— Infringement by another Corporation.— A corporation may acquire a property right to the use of a name other than its original corporate name as a trade-mark, or as incidental to the good will of a business, as well as an individual; and when it has acquired such a right, it cannot be deprived thereof by the assumption of such name subsequently by another corporation, whether the latter selects its name by the act of corporators who organize under the general laws of the State, or the name is selected for it in a special Act by a legislative body. 2. Same-Priority-Evidence~Intunction~"Goodyear Rubber Com- pany"— "Goodyear's Rubber Manufacturing Company."— Upon examination of the evidence in case at bar, Held: AUGUST, 1884. 92I 1 4= 1 Goodyear Rubber Co. vs. Goodyear's Rubber Mfg. Co. That the "Goodyear Rubber Company" was entitled to an injunction restraining the defendant from using the name "Goodyear's Rubber Manufacturing Company." Mr. IV. IV. MacFarland, for the complainant. Mr. F. H. Belts and Mr. Stephen P. Kellogg, for the defendants. Wallace, J.. The complainant is a corporation organized under the laws of New York, in 1872, by its present corporate name. The defend- ant is a corporation organized under the laws of Connecticut, in 1847, by its present corporate name. Each corporation seeks to enjoin the other, the complainant by bill and the defendant by cross-bill, from using the name "Goodyear's Rubber Mfg. Co." Both parties concede this name to be practically identical with complainant's name. The parties are competitors in the manu- facture and sale of rubber goods, and have their principal places of business in the City of New York. Each insists that it has acquired the right to the use of the name in dispute, and that such name has become a valuable adjunct of its business, and each insists that the other has endeavored, and is now attempting, by a wrongful use and appropriation of the name, to divert the custom of the other. As each party concedes that the right to use the name for the purposes of its business is a valuable property right, and asserts that such use by the other is vexatious, embarrassing, and necessarily tends to pecuniary injury, the controversy mani- festly resolves itself mainly into a question of title to the name. It is incumbent upon one of the parties to establish a lawful right to use the name as against the other, and the party which does this will be entitled to the relief prayed for. 1. The name of a corporation has been said to be the "knot of its combination," without which it cannot perform its corporate functions. {Smith, Merc. Law, 133)- It has neither the right nor the power to change the corporate name originally selected without recourse to such formal proceedings for the purpose as may be authorized by the laws under which it has been incorpo- rated, or by the consent of the authority from which its charter is 922 U. S. C. C. SOUTH. DIST. OF NEW YORK. Goodyear Rubber Co. vs. Goodyear'? Rubber Mfg. Co. 141 derived. Nevertheless, it may become known by another name by usage, and the Courts have frequently treated acts done and contracts entered into by corporations under another name as though done or entered into by it with the true name. Minot v. Curtis, 7 Mass., 441; South School Dist. v. Blakeslee, 13 Conn., 227; Eastham v. Blackburn Ry. Co., 23 Law J. Exch. N. S., 199; Boisegerard v. N. Y. Banking Co., 2 Sandf. Ch., 23. There is no reason why a corporation may not acquire a property right to the use of another name as a trade-mark, or as incidental to the good -will of a business, as well as an individual, and if it has acquired such a right it will of course be protected in its enjoy- ment to the same extent as an individual would be. It cannot be deprived of the right by the assumption of the name subsequently by another corporation, and it is immaterial whether the latter selects its name by the act of corporators who organize under the general laws of a State, or whether the name is selected for it in a special Act by the legislative body. Manifestly, if the defend- ant had no right to use the name by which the complainant was incorporated, or one practically identical with it, at the time of the latter' s incorporation, the title of the complainant is clear, because it adopted the name formally, publicly, and legitimately for all its corporate purposes. The defendant insists that it had acquired a prior right to the use of the name; that this right took its origin as early as 1862, and by a gradual process of develop- ment had ripened into a good- title before complainant was incor- porated. Neither party makes any claim of exclusive right to use the word "Goodyear" alone, that word having become a generic term of description applied to a large class of India-rubber fabrics before either party became a corporation, or to the word " Good- year" in combination with "Rubber." There were trading con- cerns, called the "Goodyear Metallic Shoe Co." The "Good- year Rubber Works," and the "Goodyear Rubber Emporium " before either party claimed the right to the name in controversy. The defendant's theory, as sustained by the proofs, is that, be- ginning in 1862, when it ceased to confine itself to the manufac- ture of gloves, and engaged in manufacturing and selling rubber AUGUST, 1884. 923 141 Goodyear Rubber Co. vs. Goodyear's Rubber Mfg. Co. goods generally, its customers occasionally addressed it in their correspondence by various abbreviated names, such as "Good- year's Rubber Mfg. Co.," "Goodyear Rubber Co.," "Good- year's Co.," " Goodyear's I. R. Company," "Goodyear Com- pany," and other abbreviations; that the use of such abbreviated addresses by its customers gradually increased, so that in 187 1 the defendant received nearly two hundred letters addressed to the "Goodyear Rubber Company," and nearly one hundred to the "Goodyear Rubber Mfg. Co." On the other hand, the proofs show that during this time the defendant received many thousands of letters yearly; that the letters addressed to it by other names were comparatively a small number, averaging not over five hundred a year, but embraced upwards of seventy varieties of names, and that its correct corporate name was usually adopted by its corres- pondents and patrons. It is not claimed that the officers or agents of the defendant were accustomed during any part of this period to use any other than its corporate name, or assumed the right to dp so until after the complainant commenced business. To the contrary, they were solicitous and painstaking to correct the tendency of its customers to address it by any other than its corporate name; and it was their practice to send envelopes to customers with its cor- rect name printed upon them, to prevent the occurrence of such mistakes. Concisely stated, the question would seem to be, whether the defendant can appropriate to itself the various mis- nomers applied to it by the carelessness or inaccuracy of a com- paratively small number of its customers during a period of ten or eleven years, notwithstanding the zealous and active measures of its managers to repress the practice, aud their success in pre- venting it from ripening into a general usage. It would hardly be contended that an individual could found a claim of possessory right to any species of property upon the un- authorized conduct of other persons, or maintain that he had ■adopted a name symbolizing his products or identifying his per- sonality with his business by protesting against its use, and of course a corporation does not occupy a different position. The proof shows that there was no general recognition of the defend- 924 U. S. C. C. SOUTH. DIST. OF NEW YORK. Goodyear Rubber Co. vs. Goodyear's Rubber Mfg. Co. 141 ant among its customers by any other than its corporate name, and no adoption by the defendant of a different name, and it must be held that the occasional or persistent use of the misnomer by a few of the defendant's customers, gave no privilege to the defendant to a monopoly in the use of the name. If the proofs warranted the inference that the complainant assumed a name by which the defendant was known for the fraudu- lent purpose of deceiving the public and supplanting the defend- ant in the good-will of its business, the Court would not only refuse to assist the complainant, but would intervene to protect the defendant. A careful reading of the proofs do not disclose the existence of any such design, Or of any intention to adopt a name with which the defendant had already become appreciably identi- fied. The case is destitute of evidence to indicate that the com- plainant's corporators were aware or had reason to suppose that the defendant had become known to any extent by any other name than its corporate name. So far as appears, they had no knowledge that defendant's customers ever addressed it by other names. Nor is there anything in the proofs to justify the insinu- ation that the complainant was organized for the purpose of an- noying the defendant by illegitimate competition. It does appear that the persons who organized the complainant had been the managers and agents of another corporation, the Rubber Cloth- ing Company, which for many years had been a competitor of the defendant at the City of New York; that propositions for a consolidation of this company with the' defendant had been some- what discussed between their respective managers without result, and that shortly afterward the complainant was organized. For a time its affairs were transacted at the office of the Rubber Cloth- ing Company, and the two concerns maintained very intimate re- lations, as might be expected from the circumstance that the managers were the same persons in both. But the salient facts that the new corporation started with a cash capital of five hun- dred thousand dollars and engaged in new branches of trade, while the old company continued in business, sufficiently refute any theory that complainant was not a bona fide concern. If it should be conceded that the two concerns were practically one, AUGUST, 1884. 925 141 Goodyear Rubber Co. vs. Goodyear'R Rubber Mfg. Co. and that the main object of the complainant's organization was to enable the Rubber Clothing Company to assume a new name — one which would represent a corporation dealing in rubber articles generally, instead of in clothing only — -there would be no occa- sion for censure, because the new name was better adapted to de- scribe the business of the corporation. The Rubber Clothing Company had long ceased to manufacture and sell clothing only, and had become engaged in selling rubber goods generally. It was undoubtedly intended by those who organized the new con- cern to engage in the general rubber trade upon a more exten- sive scale than that of the old company. The name selected was an appropriate one, and those who adopted it had a perfect right to do so, provided they did not know or have reason to believe that by doing so they would interfere with the business of the defendant. The fact seems to be that both the Rubber Clothing Company and the defendant were doing business under names that were somewhat misleading to such persons as had not learned, by business intercourse with them, that they were manufacturers and dealers in rubber goods generally. It would have been en- tirely proper for either of them to adopt a new name. The com- plainant adopted a new name first, and if it was only the Rubber Clothing Company with a new name, the defendant had no right to complain so long as the name did not serve to engender un- fair competition and deceive the trade. As has been said, how- ever, it was a new concern with a large capital, and contemplat- ing enlarged business operations, and the proofs do not show that its corporators were moved to select its name by any illicit motive toward the defendant. If the name selected was one calculated, by its similarity to defendant's name, to lead to confusion of business, and to confounding the identity of the two corpora- tions, it might well be urged that those who adopted it should abide by the consequences, although they were innocent in their intentions, and not ask a Court of Equity to protect them against the inconveniences which might follow. But the defendant, not content that the consequences shall rest where they fall, insists upon the exclusive right to use the name, and since the complain- ant assumed it, has issued notices and circulars to the trade, and 926 U. S. C. C. SOUTH. DIST. OF NEW YORK. Goodyear Rubber Co. vs. Goodyear's Rubber Mfg. Co. 141 put up a sign calling itself by the complainant's name. Upon the same theory it can also claim the exclusive right to use the multitude of misnomers applied to it from time to time by its careless customers. It has a distinctive name of its own, which it formally adopted, and which has been carefully preserved by its agents until the complainant selected one. It ought not to complain now, because the latter was the first to avail itself of the choice of selection out of all unappropriated names. Certainly, it cannot be permitted to appropriate the complainant's name or one substantially identical, and by asserting itself as the Good- year Rubber Company, mislead the public to the detriment of the complainant. A decree is ordered for complainant, and the cross-bill of the defendant is dismissed. U. S. Circuit Court — Southern District of New York. Goodyeai Rubber Company v. Goodyear India Rubber Glove Manufacturing Company and Goodyear's Rubber Manufacturing Company. On Motion for rehearing and to resettle decree, before Hon. William J. Wallace, Circuit Judge, after argument of counsel, on motion — Judge Wallace : There is no ground for the motion for rehear- ing. The use of the name "Goodyear Manufacturing Company," in Boston does not seem material. The injunction in this case is based on interference in trade. If the plaintiff and defendant had been in different cities, there might have been no interfer- ence. It is the proximity of one store to the other, and the tend- ency of the defendants' acts to divert the plaintiff's custom that makes the trouble. Mr. Betts: The defendant is not to blame for that. The plain- tiff followed our location and established its store near us. I AUGUST, 1884. 927 141 Goodyear Rubber Co. vs. Goodyear's Rubber Mfg. Co. wish I could be able to satisfy your Honor of what I know to be the fact that this trouble and confusion has been altogether caused by the plaintiff's action. Judge Wallace : I only know what I find on record in this case, and I have read that very carefully. Now, Mr. McFarland, there are two points in regard to the form of decree. I think the first decree was wrong in charging the costs upon the dismissal of the cross-bill. The costs ought to be made general costs in the case. ■ Then there is the form of injunction to be considered. Mr. Betts : I hope your Honor will expressly limit the decree to the two names "Goodyear Rubber Co." and "Goodyear Rub- ber Manufacturing Company." Any abbreviations of those names is too general, and it enables Mr. McFarland to contend that you intend to enjoin such names as ' ' Goodyear Rubber Company, ' ' or "Rubber Company," or "Goodyear's Manufacturing Company." Those are all abbreviations which I do not understand to be the case; but the decree is being used so in other litigations. I hope your Honor will express this clearly in the decree. Judge Wallace : I think my opinion is sufficiently clear on this point. I do not think it necessary to put it in the decree. I cer- tainly did not intend to enjoin "Goodyear Company" any more than "Rubber Company." That is not the abbreviation meant. Mr. Betts: Well, it is being used so, and, as this opinion of your Honor's and decree will be used in different Circuits, because these rubber companies have their business all over — even in Cali- fornia — and other suits may be brought against agents in other States, it ought 1 to be clear. Judge Wallace: The plaintiff cannot contend that it has a right to "Goodyear Company." Mr. McFarland, do you claim you have a right to that name ? Mr. McFarland : I hope your Honor will not go into that matter, and will leave the decree as it is. That matter is before other Courts. If your Honor should consider the matter of chang- ing the decree at that point, I hope you will hear me for five minutes or ten minutes on it. 928 U. S. C. C. SOUTH. DIST. OF NEW YORK. Goodyear Rubber Co. v;. Goodyear's Rubber Mfg. Co. 141 Mr. Betts : He does claim it, and I hope your Honor will em- body in the decree a statement which will remove misapprehen- sion. Judge Wallace : Mr. McFarland, you may hand in a new form of decree precisely like the old one, except that the costs are made general costs in the case, and I will consider whether any alterations of the injunction clause are necessary. AUGUST, 1884. 929 14S Leclauche Battery Co. vs. Western Electric Co. 142 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Leclanche Battery Company vs. Western Electric Company. Decided 25 August, 1884. Reported 21 Federal Rep., 538. "Leclanche Battery' Case. TRADE-MARK— VALIDITY OF MARK IN DOUBT-PRELIMI- NARY INJUNCTION. Where it is very doubtful whether the name claimed as a trade-mark does not describe the articles themselves and the kind of them, and indicate that they are made according to the patent known by the name claimed rather than that the patentee made them, a preliminary injunction should not be granted. Edward N. Dicker son, Jr., for orator. George P. Barton, for defendant. 59 930 U. S. C. C. SOUTH. DIST. OF NEW YORK. Leclanche Battery Co. vs. Western Electric Co. 14S Wheeler, J.: The orator seeks, by motion for a preliminary injunction, to have the defendant restrained from using the words, < < Pile Le- clanche" and "Disque," and the orator's style of label, upon batteries of the defendant's manufacture. Leclanche was a pat- entee of an electric battery. One form of his batteries was known as the "disque." The word "Pile" has been used to signify a battery. The prominent feature of the label is a cut of medals awarded to Leclanche' s batteries. The question, of course, is whether these words and this label improperly indicate that the batteries come from the orator, or are merely descriptive of their style and qualities. The patented batteries, of course, would become known to some extent as Leclanche batteries, and the word "disque" would naturally follow that form. These words would become apt to describe the batteries and that kind of them, and would indicate that they were made according to the patent, rather than that the patentee, or the orator bearing his name, made them. Singer Manuf'g Co. v. Stange, 6 Fed. Rep., 279; Burton v. Stratton, 12 Fed. Rep., 695; Hostetter v. Fries, 17 Fed. Rep., 620; Willcox &■ Gibbs S. M. Co. v. The Gibbens Frame, Id., 523. As the medals were awarded td the patented batteries, the representation of them upon the labels would be indicative of the reputation of these batteries rather than of their origin. Under these circumstances and authorities, the question whether these things all together amounted to an unlawful representation of the source of the batteries, is so doubt- ful, that the granting of a preliminary injunction does not appear to be warranted. Motion denied. SEPTEMBER, 1884. 931 143 Ex Parte Moodie. 143 IN THE UNITED STATES PATENT OFFICE. Ex Parte Moodie. Decided 22 September, 1884. Reported 28 O. G., 1271. "Moodie Label" Case. 1. Congress intended to devolve upon the Commissioner o£ Patents, the duty of determining the character of the subject-matter offered for registration under the label and trade-mark law. 2. The proper construction of the statute is that the subject-matter of an application for label, shall be that which may be properly claimed as a label, and not be merely subject-matter for a trade-mark. .3. But the statute does not mean to imply that if certain subject-matter is fonnd to be incapable of registration as a trade-mark, it can neverthe- less be registered as a label, for it may not be descriptive of the quality or nature of the goods, and therefore fail to constitute a label. 4. In the case at bar the Examiner properly refused to register as a label, matter which, gaged by the established rules, constitutes only subject- matter for a trade-mark. Appeal from the Primary Examiner. Registration of a Label. Elhanan L. Moodie's application "filed April 9, 1884. 932 UNITED STATES PATENT OFFICE. Ex Parte Moodie. 143 Messrs. Goefiel cV Raegener, attorneys for Moodie. Butterworth, Commissioner: This case brings up before me for consideration two questions: First, has the Commissioner of Patents discretionary power under the statute to refuse to register as a label what, in his opinion, is subjec.t-matter only for a trade-mark? Secondly, if matter offered' for registration as a trade-mark be not a trade-mark, by reason of non-adoption and use as such, may it therefore be registered as a label, although not coming within the known and recognized defi- nition of the term label? i. As to the first point, I am satisfied that Congress intended to devqlve upon the Commissioner of Patents the duty of deter- mining the character of the subject-matter offered for registration under the trade-mark and label law. Section 3 of chapter 301, Revised Statutes, contains the following clause: "except that there shall be paid for recording the title of any print or label not a trade-mark, six dollars," &c. The words "not a trade- mark' ' plainly indicate that some one must decide whether ,or not the proffered label is really nothing but a label. Who is to de- termine this? The same section says: "And the Commissioner of Patents is hereby charged with the supervision and control of the entry or registry of such prints or labels," &c. The trade -mark law of 1881, in section 3, speaks of the "al- leged trade-mark." The whole tenor of the statutes is that the Commissioner of Patents shall determine the question of fact in executing the law — viz., as to whether or not the alleged trade- mark is actually a trade-mark; otherwise the Office would be regis- tering as trade-marks matter which the Courts would unhesitat- ingly declare to be only labels, and vice versa. Much confusion and hardship might readily arise where parties are r-elying for protection upon a mere label, believing it to be a valid trade- mark, because registered as such. Cases have arisen in the Courts where parties have sued for infringement of an alleged trade-mark which, upon investigation, turned out to be nothing more than a label. (Ckeavin v. Walker, Cox 's Manual of Trade- Mark Cases, SEPTEMBER, 1 884. 933 143 Ex Parte Moodie. 294; Gilman v. Hunnewell, Id., 303). Yet if the Office is to blindly accept the opinion of the applicant as to whether he has a trade-mark or a label, or be governed by his preference as to what he will call the subject-matter of the application, incidents of this sort must inevitably continue to arise, and the Patent Office would be in the unenviable position of deliberately mislead-' ing the public, whose servant it is. In suc^Ji an abstract matter as this there are likely to be many differences of opinion among per- sons unfamiliar with the law, however well settled the principles may be upon which a right decision must be based. 2 . The Courts are sometimes confusingly loose in their language respecting trade-marks, classing as such what are really but labels. It would conduce, therefore, to greater uniformity and regularity in the practice of the Office to have some one person decide whether or not an "alleged trade-mark" is actually what it is al- leged to be. It seems to me that Congress so intended. I am aware of the decision of the Supreme Court of the Dis- trict of Columbia in The United States, ex rel. The Willcox fir" Gibbs Sewing Machine Co. v. E. M. Marble, (22 O. G., i3"66). But that was practically an ex parte proceeding and not fully argued, and, as I conceive, did not have careful consideration. The transfer to the Commissioner of Patents of the supervision and control of the entry or registry of prints or labels designed to be used for articles of manufacture, not pictoral illustrations or works, was evidently for the purpose of bringing them under the control of the officer who registered trade-marks. Why? Because trade-marks and labels are so intimately connected that confusion might arise were they supervised by separate and independent officials. Furthermore, the fee for registering such prints or labels was at the same time raised from one dollar to six dollars. This was evidently in view of some extra work which would be entailed in the entry or registry of these prints or labels. If simple registry were all that were necessary why was not the same fee charged as for registering other prints or labels by the Librarian of Congress ? It seems more reasonable to view the extra fee as an equivalent for additional labor, which can be no other than an investigation of the alleged label to see whether it does not in fact amount 934 UNITED STATES PATENT OFFICE. Ex Parte Moodie. 143 only to the subject-matter of a trade-mark. The Act requires this fee of six dollars to be paid for the registry of any label "nof a trade-mark. ' ' Why are these three words added ? Because a different fee is required for the registry of a trade-mark, and it is to guard against the registry of one for the other' that both are placed in the hands of one officer. An expert in both, he better than any one else, can determine which fee the applicant shall pay and the Government shall receive in any given case. The Act inferentially says that any alleged print or label which is a trade-mark shall pay the trade-mark fee, instead of the six dollars charged for a print or label << not a trade-mark." I am aware that it is urged that adoption and use are essential to a trade- mark; that before any symbol or device can be designated a trade-mark it must have been adopted by some person, firm, or corporation, and used in connection with some article of merchan- dise. That is true. But it does not follow that that which is only ' a symbol or sign, and does not in anywise indicate the contents of the package, &c, which is the plain office of a label, can be de- nominated or made the subject-matter of a label. In other words, it does not follow because a certain symbol or device is not a trade-mark, because it has not been adopted and used as such, it may therefore be registered as a label, in the absence of these characteristics and essentials which are inseparable from a label under every known and recognized definition of the term label. And here is the fallacy of the argument presented to me in this case. It is assumed that because the device or symbol presented for registration is not a trade-mark, because of non-use as such, that therefore it may be registered as a label; simply because the applicant is pleased to call it a label and prefers to register it as such. This is fallacious. It does not have the requirements of a label and it has none of the elements of a label, but is the subject- matter of a trade-mark under every known definition of a trade- mark. If the argument of counsel in this case is correct, the definition of what is known in law as a << label" and what is known as a " trade-mark " amount to nothing. They can in nowise serve as a guide in determining what is a label and what the subject-mat- SEPTEMBER, 1884. 935 143 Ex Parte Moodie. ter of a trade-mark. It is all to be determined and definitely settled by the simple preference of the applicant. He may pre- sent to this Office what is well known to be subject-matter for a trade-mark which presents not one of the elements of a label, and simply because he is pleased to call it a " label" it is to be registered as such. I am aware also that a point can be made on the peculiar phraseology of the statute where the phrase is used, "except that there shall be paid for the title of any print or label, not a trade- mark, six dollars," &c. It may be said that to be a trade-mark, in contemplation of this language, it must have been used as, such. I dissent entirely from that proposition, for that involves the absurdity I have before mentioned, that to be a label and have the necessary characteristics of such it is only necessary that the ap- plicant should call the subject-matter of his application a label. 2. The better construction of the statute, and the proper one, it seems to me, is that the subject-matter of an application shall be that which maybe properly claimed as a label and not be merely subject-matter for a trade-mark. The second part of this inquiry follows naturally upon what has been said above. The characteristics of a trade-mark are well settled and have been carefully formulated by text writers. The fundamental purpose of a trade-mark is to distinguish the goods manufactured by its owner from those of another manufacturer. It is the commercial signature of the producer. It says to the public, these goods were made by so and so, at such and such a place, and are therefore such and such a quality. As to what it may consist of, many definitions have been given. Upton's is as follows: "A trade-mark is the name, symbol, figure, letter, form, or device adopted and used by a manufacturer or merchant in order to designate the goods that he manufactures or sells, and dis- tinguishes them from those manufactured or sold by another, to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry, or enterprise." Browne says: 936 UNITED STATES PATENT OFFICE. Ex Parte Moodie. 143 ' < The trade-mark may consist in the name of the manufacturer or merchant (provided it be written, printed, branded, or stamped in a mode peculiar to itself), in a seal, a letter, a cipher, a mono- gram, or any other sign or symbol that can serve to distinguish the products of one man from those of another. It may be any symbol or emblem, however unmeaning in itself, as a cross, a bird, a quadruped, a castle, a star, a comet, a sun; or it may and frequently does consist of a combination of various objects, copied from nature, art, or fancy; and if such symbol or emblem comes by use to be recognized in trade as the mark of the goods of a particular person, no other trader has a right to affix it to goods of a similar description. It may be adhesive or non-adhesive. It may be put inside of the^ article or on the outside. It may be written, printed, stamped, painted, stenciled, or branded, or otherwise, and either on the article itself or on its case, covering, envelope, or wrapper." {Browne on Trade-Marks, sec. 87). But what is a label? Worcester defines it as follows: "A small piece of paper or other material containing a name, title, or descrip^on, and affixed to anything to indicate its nature or contents." The distinctive feature of a label is that it is descriptive. It tells one the contents of the package to which it is affixed. It is composed of words in ordinary use, used with their ordinary sig- nificance. It is such a placard as might be written by any one who had such goods to sell, irrespective of their origin. The protection afforded by the statute, is similar to that of a copy- right. It covers the arrangement and dress of the subject-matter, not the subject-matter itself. Anybody else may take the same ideas and dress them up in another way and protect that arrange- ment by copyright or registration. 3. Nor does the statute mean to imply that if certain subject- matter is found to be incapable of registration as a trade-mark it can nevertheless be registered as a label. An alleged trade-mark may, as before stated, be found to lack the essential characteristics of a trade-mark, or to be untenable as. such by reason of prior rights, or because it is merely a colorable imitation of some other mark, and yet not be registerable as a label because it is not de- SEPTEMBER, 1 884. 937 143 Ex Parte Moodie. scriptive of the quality or nature of the goods, or because it has the outward appearance of being a trade-mark, and so is calculated to deceive. So, too, a so-called "label" or "trade-mark" may be found to be merely a design, and the proper subject of a patent. 4. In the case at bar the Examiner has properly refused to reg- ister as a label matter which, gauged by the established rules, constitutes only subject-matter for a trade -mark. The appeal is dismissed. 938 SUPREME COURT, DISTRICT OF COLUMBIA. U. S., ex rel. Moodie vs. Butterworth. 144 144 SUPREME COURT, DISTRICT OF COLUMBIA. In Equity. United States,, ex rel. Elhanan L. Moodie, • i'S. Benjamin Butterworth, Commissioner of Patents. Decided 27 December, 1884. Reported 30 O. G., 97. STATEMENT OF THE CASE. Butterworth, Commissioner: Prior to the issuance of the order hereinafter referred to the Examiner of Trade-.Marks and Labels had been for some time ac- customed, under the construction given to the decision of the Supreme Court of the District of Columbia in the case of The United States, ex rel. The Willcox &- Gibbs Sewing Machine Co. v. E. M. Marble, Commissioner of Patents, (22 O. G., 1366), to register as a label that which was subject-matter only for a trade-mark, the applicant in each case being permitted to deter- mine for himself whether he would register as a label or trade- mark, and deciding absolutely what was and what was not proper subject-matter for a label or trade-mark. On the attention of the DECEMBER, 1884. 939 144 U. S., ex rel. Moodie vs. Butterworth. Commissioner being called to this matter the following order was issued : "The Examiner of Trade-Marks will determine in each case whether that which is presented for registration is in fact a label or trade-mark. If it is the latter, it will in no case be registered except upon the payment of the fee fixed by law — to wit: twenty- five dollars." The petitioner in this case, (Moodie), on April 9, 1884, pre- sented an application covering subject-matter for a trade-mark, and requested to have it registered as a label. The Examiner re- fused, and appeal was taken to the Commissioner, who sustained the decision of the Examiner, (see 28 O. G., 1271), the point being that the law devolved upon the Patent Office the duty of determining in each instance whether that which was sought to be registered as a label was in fact a label or only subject-matter for a trade-mark. Thereupon applicant filed in the Supreme Court of the District of Columbia a petition for a writ of mandamus to compel the Commissioner to register the subject-matter presented in accordance with the request preferred, to the Examiner. The case was fully argued by Messrs. Goepel cV Raegener, for the peti- tioner, and Mr. Frank T. Brown, counsel for the Patent Office. On the 2 2d instant the Court in an oral opinion sustained the de- cision of the Commissioner, and dismissed the bill. A statement of this case is published for the reason that the opinion seems to obtain that it is entirely within the discretion of the applicant whether he will register that which is subject-matter only for a trade-mark as a label; that it is his province unques- tioned to determine whether the subject-matter so presented is in fact a label or subject-matter only for a trade-mark, and that his determination in that behalf is final. The Court has not sustained that view. 94° U. S. C. C. EAST. DIST. OF MISSOURI. Goodyear Rubber Co. vs. Day, et al. 145 145 CIRCUIT COURT UNITED STATES, EASTERN DISTRICT OF MISSOURI. In Equity. Goodyear Rubber Company Day, and another. Decided ii October, 1884. Reported 22 Federal Rep., 44. "■Goodyear Rubber Co." Case. 1. Trade-Marks — Infringement. — No manufacturer will be permitted to stamp upon or attach to his goods, the name of another manufacturer. *. Same — Name of Patent. — Semble, that after the expiration of a patent, no manufacturer of the patented article can appropriate the name or the principal part of the name of the patent as a trade-mark. This is a suit to restrain the defendants from advertising or sell- ing rubber goods, not manufactured by the complainant, with the name of "The Goodyear Co." in any manner annexed or attached thereto. Thos. T. Gantt and A. &- John F. Lee, for complainant. McFarland, Reynolds &■" Harrison, for defendants. OCTOBER, 1884. 941 145 Goodyear Rubber Co. vs. Day, et at. Treat, J., (orally), The litigation connected with this Goodyear rubber business I am fully conversant with, as the Reports are full of it, and during 20 odd years I have had to look into the matter in causes pending before me. It seems to the Court this is an effort to appropriate the name, "Goodyear." The patent has expired. Now, if, after the termination of the patent, a man can adopt the name of the patent, and use it as a trade-mark, he is, in violation of the laws of the United States, getting an exclusive right which does not belong to him. The case before Judge Wallace, as I heard it read, is substantially between two corporations, in which the Goodyear Rubber Co., charged that the Goodyear Rubber Manu- facturing Co., a defendant, had used the name " Goodyear Rubber Co.," which it had no right to do. It dropped the word " Manu- facturing;" therefore it was enjoined by Judge Wallace against using the name of that particular corporation. Now, Judge Donahue has gone a step further than I am willing to go, in say- ing that any man can appropriate "Goodyear," the generic term, and thereby practically extend the patent ad infinitum by using that name. 1. The name of this corporation is "The Goodyear Rubber Co." The quality of its goods is offered as superior to any other. Whether superior or inferior is a matter of no conseqnence. No man has a right to use the name and palm off his goods marked in that name. Has the defendant done so? It seems some cases were bought of boots and shoes with the mark of "Goodyear" upon them. For the purposes of this case I will say that is all. I will therefore require him to keep an account of all the goods he sells under that name. As at present advised in regard to it, I do not think there is any infringement of the trade-mark, but it will not hurt him to keep an account. If, after a full development of the facts, it turns out otherwise, he must suffer. Mr. Gantt. You refuse the preliminary injunction? The Court. I do; but will cause the defendant to keep an account of all the goods he sells, either in your name or of the " Goodyear Co." In determining the question, as at present ad- 942 U. S. C. C. EAST. DIST. OF MISSOURI. Goodyear Rubber Co. vs. Day, et at. 145 vised, I think one man has as good a right to use the name of " Goodyear" as another. Mr. Gantt. No doubt about the word " Goodyear?" The Court. Well, << Goodyear Rubber Co." That is the point. Your name is the " Goodyear Rubber Co." It will be ordered that the defendant keep an account of all goods by him sold in the name of the Goodyear Rubber Co. or the Goodyear Co. Mr. Gantt. I will ask that the account include what he has sold or may hereafter sell. The Court. I can't order him to keep an account of what has been done. He will have to account for it if you maintain your bill. But hereafter he will keep an account of all sales in those names. That is all I can do now. The rest will be a matter of damages, if you maintain your suit. OCTOBER, 1884. 943 146 Landreth, et al. vs. Landreth. 146 CIRCUIT COURT UNITED STATES, EASTERN DISTRICT OF WISCONSIN. In Equity. Landreth and others, vs. Landreth. Decided 27 October, 1884. Reported 22 Federal Rep., 41. "Landreth Peas" Case. TRADE-MARK— USE OF SURNAME— PARTIES OF SAME NAME- DECEPTION AND FRAUD— INJUNCTION. While a party cannot be enjoined from honestly using his own name in advertising his goods and putting them on the market, where another person, bearing the same surname, has previously used the name in connection with his goods in such manner and for such length of time as to make it a guaranty that the goods bearing the name emanate from him, he 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, and thereby inducing pur- chasers to believe that they are purchasing the goods of such other person. 944 U. S. C. C. EAST. DIST. OF WISCONSIN. Landreth, et al. vs. Landreth. 146 George Harding and Francis T. Chambers, for complainants. Nash cV Nash, for defendant. Dyer, J.: This is a suit for an injunction to restrain the defendant from using a certain label which the complainants allege they have adopted as their trade-mark in the sale of a certain variety of seeds known as " Landreth' s Extra Early Peas." A motion has been made for a preliminary injunction, and at the present stage of the case, I do not deem it necessary to do more than to announce briefly and quite informally my conclusions upon certain points concerning which my mind is free from doubt. There are some questions in the case upon which more light may be thrown by further, and more elaborate argument and the disposition of which, I think, should be postponed until the hearing on the merits. At present, I can hardly think the defendant has not the right to raise and sell the seed known as " Landreth's Extra Early Peas;" nor am I now of the opinion that he should be restrained from putting the peas on the market in bags of various sizes, fastened in the manner shown, and identified by such a metallic seal as it appears he now uses. Further, it is not clear that the defendant has not the right to advertise his peas as "Landreth's Extra Early Peas," provided he does so in such manner as to clearly inform the public that the peas are of his own growth and production. It seems to me this case is not, accurately speaking, one of trade-mark or trade name. It is rather a case in which the question appears to be whether the defendant, by the use of certain labels or inscriptions on the bags in which his peas are put upon the market, is not selling his own goods as the goods of Landreth & Sons, of Philadelphia. The complainants, in 1&73, placed upon their bags and adopted this inscription, printed in blue ink, and in the following form: OCTOBER, 1884. 945 146 Landreth, et at. vs. Landreth. * -a* Below which is printed the quantity of peas contained in the bag, as, for instance, " 1-4 Bus.," and the year. It is very satis- factorily shown that, by this form and character of label, the com- plainants' bags have become known and recognized by dealers and by the public as containing peas produced and sold by the complainants; and it would appear that this form of designation of their goods has become, by use and public recognition, valua- able to them. It is, so to speak, the recognized flag under which they sail in the trade. The defendant, in 1883, having com- menced the business of producing and selling a variety of peas which he advertises as "Landreth's Extra Early Peas," at Mani- towoc, in this State, placed upon the bags in which his peas were sold, the following inscription, printed in blue ink: ^ LANDRETHS' % .«*& BARtj^ # V ' % PEOVIDED **-*£ IS V$»* 60 94 6 U. S. C. C. EAST. DIST. OF WISCONSIN. Landreth, et al. vs. Landreth. 146 Below this label is printed the quantity of peas contained in the bag, as, for example, "1-4 Bus.," and the year. That this was a substantial adoption of the complainants' label, in its col- location of words and general appearance, cannot be doubted. The deviation is so slight as not to be observable, except as the two labels are placed side by side. It is equally clear that an ordinary purchaser, accustomed to rely on the inscription upon the complainants' bags as designating the peas grown and sold by them, would be readily led to suppose, upon ordinary observation of the defendant's label, that the peas put up in his bags and sold by him were the goods of the complainants. In short, the de- fendant's label is a very plain imitation of that previously adopted by the complainants. There is nothing in the defendant's label to fairly distinguish his production of << Landreth' s Extra Early Peas' ' from that of the Philadelphia producers. Even admitting that the defendant has the right to use the same words as those which constitute the complainants' label, he has no right to use them in such form or such style of arrangement, as to lead the public to suppose that the peas contained in his bags are peas grown and sold by the complainants. This is so, without regard to any question of technical trade-mark or trade name. The authorities in abundance declare this to be the law. In McLean v. Fleming, 96 U. S., 254, the Supreme Court say: "Nor is it necessary, in order to give a right to an injunction, 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 complain- ant, and that he persists in- so doing after being requested to de- sist." Of course, a party cannot be debarred from the right to hon- estly use his own name in advertising his goods and putting them on the market, but where other persons bearing the same surname have previously used the name in connection with their goods, in such manner for such length of time as to make it a guaranty that the goods bearing the name emanate from them, they will be pro- tected against the use of that name, even by a person bearing the same name, in such form as to constitute a false representation of OCTOBER, 1884. 947 14© Landreth, et al. vs. Landreth. the origin of the goods. To illustrate: The complainants and the defendant bear the same surname. Each is a dealer in "Land- reths' Extra Early Peas." While the defendant has the right to use his own name in advertising his peas and putting them on the market, he has not the right to use it in such manner as to lead dealers and purchasers to suppose that, when in fact purchasing his peas, they are purchasing the peas grown and sold by the complainants. Adjudged cases thus enunciate the law. As is stated in one of them, "no man has the right to dress himself in colors or adopt and bear symbols, to which he has no peculiar or exclusive right, and thereby personate another person, for the purpose of inducing the public to suppose, either that he is that other person, or that he is connected with and selling the manu- facture of such other person, while he is really selling his own." See, also, Hollow ay v. Holloway, 13 Beav., 209. Many other cases of similar and uniform purport might be cited. Now, as I have said, the defendant's label, is, as it seems to me, a palpable imitation of the complainants' In the color of ink used, in the arrangement of the words, and in the general style of the label, he has, so to speak, dressed his goods in the garb previously adopted by the complainants. Whether intended or not, this necessarily operates as a fraud upon them, and upon the public. If the defendant has the right to use the same words as those which constitute the complainants' label, he ought to ■accompany them with some clear indicia of the source of the goods. He seems to have done so in his late issue of circulars and advertising cards. In the absence of anything in the inscrip- tion he places on his bags, distinctly denoting that he is the pro- ducer and seller of the peas in which he deals, called "Landreths' Extra Early Peas," he evidently leads or may lead purchasers to believe that in purchasing his peas they are purchasing the peas grown and sold by the complainants. This appears from affida- vits presented on this motion. Such abandonment of their label or inscription by the complainants as deprives them of the right to be protected in the use of the same, is, I think, not shown. The case seems to be a clear one for a preliminary injunction to the extent indicated, and upon the execution by the complain- 94-8 U. S. C. C. EAST. DIST. OF WISCONSIN Landreth, et al. v$. Landreth. 146 ants nf a bond in the usual form, in the sum of $2,000, with surety to be approved by the clerk, an injunction, pendente lite, will issue, restraining the defendants from placing on the bags used by him in putting his peas on the market, a label or inscrip- tion resembling in design, form, and arrangement, or collocation of identical words, the label or inscription of the complainants, as does the label now used by the defendant. The printing of the letter " A " over the word " Landreths'," by the defendant, on the bags of peas more recently sent out by him, does not, in the form and style in which it is printed, relieve his label of its tendency to mislead. DECEMBER, 1 884. 949 147* Estes, et al. vs. Belford, Clarke & Co., et al. 147 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Estes, et al. vs. Belford, Clarke & Company, et al. Decided 3 December, 1884. Reported 30 O. G., 99. Chatterbox vs. Chatterbook. 1. The infringement of a trade-mark is a trespass upon the rights of the owner, by using it as a false representation that the wares of the in- fringer are those of the owner, for which an action of trespass on the case would lie at common law, in which all participating would be principals and proper defendants. 2. A bill in equity lies in this Court only on account of its preventive relief, and perhaps to save multiplicity of suits, as in case of the in- fringement of a patent. Root v. Railway Co.] 105 U. S., 189. 3. Where the reading matter of defendants' publication was different from the complainants', but the name, style and arrangement were the same, and it was clear that the latter had been adopted for the advantage they gave. Held: That taking this advantage was injurious and illegal. 95° U. S. C. C. SOUTH. DIST. OF NEW YORK. Estes, et al. vs. Belford, Clarke & Co , et al. 147 Mr. J. L. S. Roberts, for the orators. Mr. J. A. Hyland, for the defendants. Wheeler, J.: i. The infringement of a trade-mark is a trespass upon the rights of the owner by using it as. a false representation that the wares of the infringer are those of the owner, for which an action of trespass on the case would lie at common law, in which all participating would be principals and proper defendants. 2. A bill in equity lies in this Court only on account of its preventive relief, and perhaps to save multiplicity of suits, as in case of the infringement of a patent. Root v. Railway Co., 105 U. S., 189. The defendants Belford and Hart are the per- sons who are actively engaged in, and therefore principals in, all the infringement complained of. They are agents of the other defendant, a corporation of Illinois, which ought to be proceeded against so far as it can be, and the Court might in its discretion decline to proceed against these other defendants if the plaintiffs neglected to proceed against that one. But the plaintiffs have used all diligence in proceeding against the cor- poration, and have only been put off in that by its efforts not to be found and held here. There is no reason, therefore, why the right- to an injunction against these defendants should not be decided on its merits. 3. The case made is clearly within the former decision. Estes v. Williams, 21 Fed. Rep., 189. The matter of the defendants' publication is different from that of the plaintiffs, although it is of the same general class of juvenile reading and illustration. If put up in ordinary form, under a name without reputation, it would have- to stand on its own merits as a literary and artistic production; but the name, style, and arrangement of the plain- tiffs' work is taken, and- the reputation and popularity of it thereby appropriated. An ordinary purchaser would be very much guided by the name and style of the publication. It is not bought gene- rally for what is known to be in it, but for what is to be found in it. The standard would be expected to come up to that of the former publications of the same name and the character of that OCTOBER, 1884. 951 147 Estes, et al. vs. Belford, Clarke & Co., et at. would be principally relied upon. This name is nothing of itself apart from the work to which it has been applied by the orators and those upon whose right they stand. It is quite clear that the name and style of the work are adopted for the advantage they give, and that taking this advantage is injurious to the orators. The motion for a preliminary injunction is granted against the defendants Belford and Hart. 952 U S. C. C. SOUTH. DIST. OF NEW YORK. Anheuser Busch Brewing Association vs. Piza. 148 148 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Anheuser Busch Brewing Association vs. Pisa. Decided , 1885. Reported 24 Federal Rep., 149. "St. Louis Lager Beer" Case. TRADE-MARK— GEOGRAPHICAL NAME— "ST. LOUIS LAGER BEER"— FRAUDULENT SIMULATION OF LABELS— INJUNC- TION. 1. Complainant, a brewer in St. Louis, Missouri, made and exported to Panama and South American ports, beer in bottles, with a label bearing the words "St. Louis Lager Beer." Defendant, a shipper of beer from New York City, and a competitor of complainant in trade in Panama and South America, labeled his bottles "St. Louis Lager Beer." Held: That although complainant could not have an exclusive property in the words "St. Louis" as a trade-mark, or the exclusive right to designate his beer by the name of " St. Louis Lager Beer," yet, as his beer had always been made at that city, his use of the designation upon his , 1885- 953 148 Anheuser Busch Brewing Association vs. Piza. labels was legitimate; and th,at defendant, whose beer was made in New York, should be enjoined from diverting his trade by simulating his labels, or representing in any other way, his products as those of complainant. t. It is no answer for the defendant, where the complainant asks for pro- tection, to say that it has no exclusive right to designate its products in the manner it has, although this might very properly be asserted by a competitor selling beer made at St. Louis, or who by reason of any circumstance, might be entitled to represent his product as originating there. 3. This case is similar in some of its facts, to that of Newman v. Alvord, 51 N. Y„ 189. 4. It is unnecessary for present purposes, to consider whether the complain- ant has a valid trade-mark or cair have a technical trade-mark in the name "St. Louis." It is sufficient that it was lawful for the complain- ant to use the name to designate its property, that by doing so it has acquired a trade which is valuable to it, and that the defendants' acts are fraudulent and create a dishonest competition detrimental to the complainant. Wallace, J. : 1. The complainant, a corporation doing business at St. Louis, Missouri, has for many years been accustomed to export its beer in bottles with a label bearing the words, " St Louis Lager Beer." It had acquired a considerable market for its products in South America and Panama. During this time there were many other manufacturers and vendors of lager beer at St. Louis, but so far as appears none of them had an export trade, and none of them were accustomed to use labels with the words "St. Louis Lager Beer" printed' upon them. 2. The defendant is a shipper of beer at New York City, and a competitor of the complainant in trade at Panama and various places in South America. The affidavits show beyond doubt that in these places the beer, which is known as "St. Louis Lager Beer" is in demand, and it is doubtless because of this fact that the defendant, whose beer is made in New York, labels his bottles so as to represent that his beer is made at St. Louis, and so as to represent that his firm are the' sole agents of the "St. Louis Lager Beer" at New York. He alleges that purchasers of beer at 954" U. S. C. C. SOUTH. DIST. OF NEW YORK. Anheuser Busch Brewing Association vs. Piza. 148 Panama and the other places in question in South America, do not discriminate between the complainant's article and other beer made in the United States, but buy it simply because they suppose St. Louis lager beer is beer produced in the United States as dis- tinguished from German and English beer. 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. 3. Although the complainant cannot have an exclusive prop- erty in the words. "St. Louis" as a trade-mark, or an exclusive right to designate 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 de- fendant is diverting complainant's trade by any practice designed to mislead its customers, whether these acts consisted in simulat- ing its labels, or representing in any other way his products as those of the complainant, the latter is entitled to protection. 4. It is no answer for the defendant, when the complainant asks for protection, to say that it has no exclusive right to desig- nate its products in the manner it has, although this might very properly be asserted by a competitor selling beer made at St. Louis, or who, by reason of any circumstances, might be entitled to represent his product as originating there. Canal Co. v. Clark, 13 Wall., 322. It must be assumed, upon the facts as they are now disclosed, that complainant, by its enterprise and the quality of its product, had acquired a foreign market for its beer, under the designation of "St. Louis Lager Beer," that no one else, having a right to use this designation, was a competitor of the complainant in this market until the defendant became one; and that the defendant has attempted to interfere with the complainant's trade and di- vert it to himself by selling a different article under the same name, and in this behalf has been guilty of false and deceitful conduct toward the public. It is manifest that the complainant's trade must be more or less injured by the defendant's acts. , 1 88s- 955 148 Anheuser Busch Brewing Association vs. Piza. 5. The case is similar in some of its facts to that of Newman v. Alvord, 51 JV. Y., 189. There the plaintiff used the word "Akron" to designate a cement manufactured by him at the vil- lage of Akron, New York. The defendant, who was a manufac- turer at another place in the same State, was enjoined from desig- nating his cement as "Akron Cement," although he prefixed his own name and added the real place of its manufacture. In the opinion delivered in that case by Earl, J., it was assumed that other persons at Akron had the right equally with the plaintiff to call their cement "Akron Cement," but he added: "Yet it is quite clear that the plaintiffs, upon the facts, are enti- tled to protection against the defendant. It is sometimes said in the cases to which our attention has been called that the claimant to a trade-mark must have the exclusive right to it. This form of expression, I apprehend, is not strictly accurate; the right must be exclusive against the defendant. It is generally sufficient in such cases if the plaintiffs have the right and the defendant has not the right to use it. The principle upon which the relief is granted is, that the defendant shall not be permitted, by the adoption of a trade-mark which is untrue and deceptive, to sell his own goods as the goods of the plaintiff, thus injuring the plaintiff and defrauding the public." The following cases, in which a party has been protected in the use of the name of a place to distinguish a particular business or product, are apposite: " Glenfield Starch," in Wotherspoon v. Currie, L. R., 5 H.L., 508, 513; "Anatolia Liquorice," Mc- Andrew v. Bassett, 10 Jur. (JV. C), 492; " Seixo Wine," in Seixo v. Provezende, L. R., 1 Ch. App. Cas., 192. 6. It is unnecessary for present purposes to consider whether the complainant has a valid trade-mark or can have a technical trade-mark in the name "St. Louis." It is sufficient that it was lawful for the complainant to use that name to designate its prop- erty; 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. Upon the argument of this motion, the impression was entertained that 956 U. S. C. C. SOUTH. DIST. OF NEW YORK. Anheuser Busch Brewing Association vs. Piza. 146 the " Piza label No. 2 " was not such a simulation of the complain ant's label, as would be likely to mislead purchasers. Upoi further consideration this impression has been removed. It is no unreasonable, in view of the defendant's purpose to deceive th< public by adopting this label, to resolve any doubt which ma] remain in favor of the complainant. The motion for an injunction is granted. JANUARY, 1885. 957 149 Glen Cove Manufacturing Co. vs. Ludeman. 14=9 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Glen Cove Manufacturing Company vs. Ludeman. Decided 2 January, 1885. Reported 22 Federal Rep., 823. "Maizena vs. Maizharina." 1. The complainant registered in December, 1881, as a trade-mark for com flour, the word "Maizena," and an allegorical picture representing the cultivation of corn and the preparation of flour. In December, 1882, the defendant registered for the same purpose the' word "Maiz- harina," accompanied with a pictorial representation of a man carrying a quantity of maize under his arm. Prior to the last mentioned date, the complainant had acquired a good common law title to his trade- marks. Held: That as to the picture there is not, but that as to the word there is infringe- ment. 2. To entitle to relief, it is not necessary that the imitation should be so close as to deceive persons seeing the tw-o marks side by side. It is sufficient if there is such a degree of resemblance as would deceive ordinary purchasers using ordinary caution. 95 8 U. S. C. C. SOUTH. DIST. OF NEW YORK. Glen Cove Manufacturing Co. vs. Ludeman. 149 3. A word used as a trade-mark is addressed to the eye as well as to the ear, and cannot be disassociated from its surroundings when the inquiry is whether it is a colorable imitation. 4. Registration of a trade-mark is only prima facie evidence of ownership, and the validity of the title so evidenced is always open to judicial inquiry. Mr. Francis Forbes, for the complainant. Mr. Fred. Ingraham, for the defendant. Wallace, J.: 1. The complainant moves for a preliminary injunction restrain- ing the defendant from violating its right to the exclusive use of two trade-marks used by it in commerce with foreign nations and applied to a preparation of corn flour for food, both of which it procured to be registered in the Patent Office, December 6, 1881, under the provision of the Act of Congress of March 3, 1881. The first consists of the word "Maizena," and the second is an allegorical picture representing the cultivation of the corn and the preparation and cooking of the flour by Indians. Both are applied by printing upon the packages in which the corn-flour is put up for sale. The defendant is the registered owner of a trade-mark for corn- starch, which consists of the Word << Maizharina," accompanied with a pictorial representation of a man carrying a quantity of maize in his arm, registered in the Patent Office, December 5, 1882. Both parties are manufacturers here of the corn flour, and put it up here for sale in foreign countries, and both use their respective trade -mark upon the packages containing the flour or starch in the same way. The complainant or its predecessor in business was the originator of the trade-marks it has registered, had used them for many years to designate its corn flour, and had acquired a good common law title to them before the defendant undertook to employ either the word or the picture registered by him. It is quite obvious that the defendant's word and picture as ap- plied by him to the packages of his corn flour put up for export- JANUARY, 1885. 959 1 49 Glen Cove Manufacturing Co. vs. Ludeman. ation to Germany and Cuba in connection with the similarity of his packages in form, size, color-printing, and other characteristics to the complainant's are well calculated to lead purchasers to con- fuse the identity of the products of the respective parties. As thus used by him, it would seem clear that he has purposely sim- ulated the complainant's devices for distinguishing its product from those of others, and if the case turned on the principles which obtain ordinarily in equity when the use of a common law right of property in a trade-mark is the subject of controversy, it would be the duty of the Court to order an injunction. Granting that the word and picture of the defendant are different from those of the complainant, a Court of Equity would enjoin the defend- ant from using them with such accessories as would lead purchasers to confound the one with the other, not because of the infringe- ment of complainant's trade-mark, but because the defendant would not be allowed by any deceitful practice to impose upon the public to the prejudice and injury of the complainant. But both parties are citizens of this State, and the jurisdiction invoked is therefore founded solely on the Act of Congress for the protection of trade-marks, and can only be exercised accord- ing to the statute which invests the Court with authority to hear the controversy. The complainant is here upon his statutory title to enforce his statutory rights in the enjoyment of his trade-marks, and the single question is, therefore, whether these have been in- vaded. If. the defendant has appropriated either of these trade- marks, the complainant, as the party aggrieved, by the language of the Act (section 7), " shall have his remedy according to the course of equity to enjoin the wrongful use of such trade-mark." The complainant's trade-mark in the picture has not been in- fringed. There is such a substantial dissimilarity between this picture and that used by the defendant as to eliminate from the case any theory of a colorable imitation. Whether its trade- mark in the word "Maizena" has been appropriated by defend- ant's use of the word " Maizharina " is a more doubtful question. Although the defendant uses the word "Maizharina" upon pack- ages of his corn flour put up for the German market, it does not follow that the article will be sold exclusively in that market, and 960 U. S. C. C. SOUTH. DIST. OF NEW YORK. Glen Cove Manufacturing Co. vs. Ludeman. 149 the tendency of the word to mislead purchasers of the article into the belief that it is the complainant's product does not depend solely upon the inquiry whether it may mislead German purcha- sers. The defendant's act is committed here, and whether it is a wrong or is justifiable must be ascertained upon the principles of our jurisprudence, and not upon those of the law of Germany. Unless the complainant's trade-mark is used on goods intended to be transported to a foreign country, by the terms of the Act of Congress the Court can take no cognizance of the wrong in a suit between citizens of the same State. (Section n). If it is so used, the Court will not be concluded by the result of an inquiry whether it is used with an intent to mislead purchasers in the country where the goods are to be ultimately sold, because the goods may be sold here or in some country other than the one where they are to be ultimately sold, and the Act of Congress contemplates a complete protection to the right which it creates. If the decision were to depend solely upon the question of a substantial similarity in the sonorous properties between the word used by the complainant and that used by the defendant, deci- sions in analogous cases furnish sufficient authority for granting an •injunction. Thus the word " Cocoine" has been held to be an infringement of a trade-mark in the word "Cocoaine," {Burnet v. Phalen, 3 Keyes, 394); "Bovina" of the word "Boviline," (2 Daly, 521); the word " Appolinis" of the word " Appolinaris," (14 Blatch., 380); "Hostetler" of the word "Hostetter," (i, Dillon, 329). The rule is well settled, that to entitle the pro- prietor of a trade-mark to relief against an illegal appropriation it is not necessary that the imitation should be so close as to deceive persons seeing the two marks side by side. 2. It is sufficient if there is such a degree of resemblance that ordinary purchasers using ordinary caution are likely to be de- ceived. But the question whether the defendant has colorably imitated the complainant's trade-mark is not to be solved merely by .con- sidering the resemblance between the words themselves. If the defendant has dressed his word in such accessories that it may be JANUARY, 1885. 961 149 Glen Cove Manufacturing Co. vs. Ludeman. mistaken for the complainant's word, that circumstance is not to be overlooked. 3. A word used as a trade-mark is addressed to the eyes as well as to the ears of purchasers of the article to which it is applied. It cannot be disassociated from its surroundings when the inquiry is whether as used it is a colorable imitation of another's trade- mark. The defendant has artfully garbed and draped a word used by him bearing a close resemblance to the complainant's word, so that its identity is rendered more indistinguishable from that of the complainant's than it is intrinsically. The defendant insists that his certificate of registry is a decision of the Commissioner of Patents that he is entitled to the word " Maizharina " in connection with his picture as a trade-mark, notwithstanding the complainant's trade-mark in the word "Mai- zena," which is a judicial determination, and is conclusive as between the parties. The sufficient answer to this proposition is that the Act of Congress makes the registration of a trade-mark only prima facie evidence of ownership. (Section 7). The in- quiry is therefore always open as to the validity of the title to a trade-mark evidenced by the registration. 4. The registration could not confer a title to the trade-mark upon the complainant if some other corporation or individual had acquired a prior right by adoption and use, nor could it vest de- fendant with a title as against the complainant's common law title. In this view the only office of registration is to confer juris- diction upon the Court to protect a trade -mark when the proprietor has obtained the statutory evidence of title, and the only function of the .Commissioner of Patents is to determine whether an appli- cant has a presumptive right to the trade-mark. An order is granted for an injunction in conformity with this opinion. 61 962 U. S. C. C. SOUTH. DIST. OF NEW YORK. Estes, et at. vs. Worthington. 150 ISO CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Estes, and others, Worthington. Decided 5 January, 1885. Reported 22 Federal Rep., 822. ' < Chatterbox ' ' Case. Trade-Mark — Injunction — Laches. — When delay of the owner of a trade-mark to prosecute infringers has been of a tendency to mislead the public, or the defendant sought to be enjoined, into a false security, 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. Same — Use of Trade-Mark by Others. — Where the extensive use of a trade-mark by others, with the implied acquiescence of the owner, has contributed to give a reputation and create a demand for the arti- cle 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. Same — Complainant Guilty of Fraud. — A complainant who has refused to recognize the rights of the original foreign proprietor of a JANUARY, 1885. 963 150 Estes, et at. vs. Worthington. trade-mark until he thought it would be more profitable to purchase his rights in this country, and thus obtain a monopoly, reserving the right to annul the contract at his discretion, will not be entitled to a prelimi- nary injunction against alleged infringers of the trade-mark, but be left to his rights at final hearing. Motion for Preliminary Injunction. J. L. S. Roberts and G. G. Frelinghuysen, for complainants. Scudder & Carter, for defendant. Wallace, J. : The validity of the complainants' title to a trade-mark in the word " Chatterbox," as applied to juvenile books, and which they acquired by purchase from James Johnstone, of England, in the year 1880, has been established, and is not open to controversy upon the case made by defendants. Estes v. Williams, 21 Fed. J?eJ>., 189. The only doubt as to the complainants' right to a preliminary injunction is suggested by the fact that the various publishers of such books since 1876 have been permitted without prosecution to apply the word to their publication of juvenile books in this country, and have used it as a trade-mark in hostility to the real proprietors; and among them were the complainants themselves, who did so for two or three years before they pur- chased the right of Johnstone. Laches in prosecuting infringers has always been recognized as a sufficient reason for denying a preliminary injunction; some- times, apparently, by way of discipline to a complainant who has manifested reluctance to burden himself with the expense and vex- ation of a law-suit, and delayed legal proceeding until his patience was exhausted. See Bovill v. Crate, L. J?., 1 Eq. Cas., 389. "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 de- fendant sought to be enjoined into a false security, and a sudden injunction would result injuriously, it ought not to be granted sum- marily, but the complainant should be left to his relief at final hearing. So also where as in this instance the extensive use of 964 U. S. C. C. SOUTH. DIST. OF NEW YORK. Estes, et al. vs. Worthington. X50 the trade-mark by others with the implied acquiescence 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 inter- vention assist the owner to secure these fruits. The complainants do not occupy a position that commends them to a Court of Equity; because they seem to have refused to recognize the rights of Johnstone, the original proprietor of the trade-mark, until they thought it would be more profitable to purchase his rights in this country and obtain a monopoly here in the use of the trade-mark. By their contract of purchase they reserved the right to annul the contract at their option. They should be left to their rights at final hearing according to the usual course of equity. The motion is denied. JANUARY, 1885. 965 151' De Kuyper, el at. vs. Witteman, et at. 151 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. De Kuyper, and others, vs. Witteman, and others. Decided 12 January, 1885. Reported 28 Federal Rep., 871. "De Kuyper Label" Case. TRADE-MARK— INFRINGEMENT— PRINTING AND SELLING IMITATION LABELS TO THIRD PARTIES. Printing and selling labels in imitation of a trade-mark, with the purpose of enabling the parties to whom the labels are sold to palm off their goods upon the public as the goods of the owner of the trade-mark, is a violation of the rights of such owner. Rowland Cox, for plaintiff. B. B. Foster, for defendant. Wallace, J.: The demurrer in this case is without merits. The complain- ants, upon the facts shown in the bill of complaint, have a good 966 U. S. C. C. SOUTH. DIST. OF NEW YORK. De Kuyper, et al. vs. Witteman, et al. 151 title to their trade-mark, and a case for its protection irrespective of their statutory rights under the registration in the Patent Office. As the necessary diversity of citizenship exists between the parties,, they are entitled to invoke the jurisdiction of this Court. Upon the allegations of the bill the defendants are actively en- gaged in assisting third persons to use the complainants' trade- mark in violation of their rights. The mere act of printing and selling labels in imitation of the complainants' might be innocent, and, without evidence of an illicit purpose, would not be a viola- tion of the complainants' rights. It is otherwise, however, when this is done with the obvious purpose of enabling others by the use of the labels to palm off their goods upon the public as the goods, of the complainants. The demurrer is overruled, with costs. Defendants may answer upon payment of costs. FEBRUARY, 1 88 5. 967 15S Stachelberg, et al. vs. Ponce. 152 CIRCUIT COURT UNITED STATES, DISTRICT OF MAINE. In Equity. Stachelberg, and others, vs. Ponce. Decided 23 February, 1885. Reported 23 Federal Rep., 430. "La Non/iandi" Case. Trade-Mark — Use by Assignee or Purchaser — Deception^In- fringement — Injunction. — A trade-mark must either by itself or by association, point to the origin or ownership of the article to which it is applied. Canal Co. v. Clark, 13 Wal., 311. It imports that the article is made by the original proprietor, not only as matter of justice, but to prevent imposition on the public. Manhattan Medicine Co. v. , Wood, 108 U. S., 218. An assignee or purchaser of a trade-mark from the original proprietor must in the use thereof indicate that he is assignee or purchaser, or he will not be entitled to protection in the use of the mark assigned. Clarence Hale, for complainants. William Henry Clifford, for defendant. 968 U. S. C. C. DISTRICT OF MAINE. Stachelberg, et at. vs. Ponce. X52 Colt, J.: In this suit the complainants claim the exclusive right to the use of the trade-mark "La Normandi," or "Normandi," which is ap- plied to a brand 6f cigars, and charge the defendant with infringe- ment in using the words "E. P. Normanda," or "Normanda," or "Normandie," upon a brand of cigars made and sold by him. The complainant Stachelberg obtained, by assignment from one Asher Bijur, of New York, tbe exclusive right-to use this trade- mark, and he subsequently conveyed the right to the firm of Stachelberg & Co., the complainants. It appears that Bijur was the originator of the trade-mark, and had used it for some years, building, up quite an extensive sale for this brand of cigars by rea- son of their good quality. The original trade-mark bore the name of the maker, "A. Bijur," and also the initials "A. B." Upon the assignment of the trade-mark to Stachelberg, he substi- tuted his own name, "M. Stachelberg," and the initials "M. S." In this form the trade-mark was registered by Stachelberg & Co. in 1876, under the United States law, which has since been de- clared unconstitutional. Trade-Mark Cases, 100 U. S., 82. In this case, therefore, the complainants stand on their common law rights. The defendant denies the charge of infringement, and rests his defence on various grounds. Whatever may be thought of the re- maining defences, there is one point which we think is well taken, and therefore fatal to any relief prayed for in the bill. In the use of the trade-mark the complainants do not state it was obtained by assignment or purchase from A. Bijur. Bijur originated the trade- mark, and it thus became a sign of the quality of the article he sold, and an assurance to the public that it was the genuine pro- duct of his nianufacture. A trade-mark must, either by itself or by association, point distinctively to the origin or ownership of the article to which it is applied. Canal Co. vs. Clark, 13 Wall., 311. It imports that the article is made by the original proprie- tor, and therefore genuine, and the law protects the original pro- prietor, not only as a matter of justice, but to prevent imposition on the public. Manhattan Medicine Co. v. Wood, 108 U. S-, 218; S. C, 2 Sup. Ct. Rep.,»A,Tfi. FEBRUARY, 1885. 969 152 Stachelberg, et al. vs. Ponce. Now, in order that the public may not be deceived, it is essen- tial that an assignee or purchaser of the original proprietor should indicate in the use of the trade-mark that he is assignee or pur- chaser, — Sherwood v. Andrews, 5 Amer. Law Reg. (N. S.~), 588, — otherwise the public are misled into purchasing the goods of another manufacturer or vendor as those of the original proprietor. If these complainants have any right of action against the defend- ant, it is upon the ground that, by copying the trade -mark "La Normandi" in substance, he is misleading the public by false rep- resentations into the purchase of his cigars as those made by A. Bijur, the original proprietor of the trade-mark. Canal Co. v. Clark, supra. And so these complainants, in failing to give notice that they are the purchasers and assignees oi the trade-mark from A. Bijur, are practicing the same deception towards the public which they charge against the defendant. The fact that the name "M. Stachelberger," is attached to the trade-mark can no more relieve the complainants of the charge of misrepresentation as to the public than the use of the name "E. Ponce" or "E. P." can relieve the defendant of such a charge. It is the use of the fanci- ful words "La Normandi," or words of substantial similarity, that is calculated to mislead. The ' Supreme Court, in Manhattan Medicine Co. v. Wood, supra, declare that the object of a trade- mark being to indicate by its meaning and association the origin or ownership of the article, it would seem that when a right to its use is transferred to others, either by act of the original manufac- turer or by operation of law, the fact of transfer should be stated in connection with its use, otherwise a deception would be practiced upon the public, and the very fraud accomplished, to prevent which Courts of Equity interfere to protect the exclusive right of the original manufacturer. Under the rule laid down in Manhattan Medicine Co. v. Wood, the complainants have no standing in a Court of Equity, and the bill must be dismissed. 970 CIRCUIT COURT, COOK COUNTY, ILLINOIS. McVeagh, et al. vs. Valencia Cigar Factory, et al. 153 153 CIRCUIT COURT OF COOK COUNTY, ILLINOIS. In Equity. McVeagh, et al. vs. Valencia Cigar Factory, et al. Decided , 1885. Reported 32 O. G., 1124. < 'Buck Cigar ' ' Case. TRADE-MARK— ASSIGNMENT OF. A trade-mark cannot be assigned as a mere abstract right and independent of or disconnected from the business in which it is used. Messrs. Kraus & Mayer and Mr. John H. Hammond, for the complainants. Messrs. Moses, Newman &■» Reed and Messrs. Banning 6° Ban- ning, for the defendants. Moran, J.: (Orally:) The bill in this case was filed to restrain the use of what is claimed to be a trade-mark — that is, the use of the word , 1885. 97 1 IBS McVeagh, et al. vs. Valencia Cigar Factory, et at. "Buck," ill connection with certain figures on a scroll. The bill alleges that for many years prior to 1884, a certain firm styled Louis Cohn & Son, was engaged in the business of manufactur- ing and selling cigars at wholesale, and that as early as 1862, the. firm, or one of the members of the firm, invented and first used this trade-mark in connection with the manufacture of a certain brand of cigars; that about the year 1884, the firm of Cohn & Son made a contract with the complainants for the purpose of manufacturing for the exclusive use of the complainants and sale by them of this certain brand of cigars having a certain trade- mark hereinafter referred to; that under the contract the com- plainants sold great quantities of the cigars manufactured for them by said Cohn & Son under that trade-mark; that some time in July, 1884, the firm of Cohn & Son became insolvent, and failed for a large amount, and had no visible assets; that among the creditors of the firm was Henry Oppenheimer, and that for the purpose of making some payment to him, the firm of Cohn & Son made a contract with Oppenheimer, by which they at- tempted to transfer or assign all the firm's right, claim, and inte- rest to the trade-mark, which is described in this way: "To the following trade-mark and all rights and interests thereunder of the said firm of Louis Cohn & Son, to wit, the 'Buck' trade-mark. The said trade-mark having, as herein- before alleged, been used by the firm of Louis Cohn & Son in connection with and as the name of a certain brand of cigars." The bill further alleges that Cohn & Son also by the contract guaranteed said Oppenheimer the sole and exclusive right to use said trade-mark and all the figures, pictures, and designs, which the said firm of Cohn & Son had theretofore used in connection with the trade-mark, and they agreed that all the rights tranferred to Oppenheimer by said contract should inure to and belong to Oppenheimer's executors, administrators, and assigns; that said Cohn & Son also sold to Oppenheimer the exclusive right to sell cigars in connection with said trade-mark; that a true and cor- rect copy of said contract is hereto attached and marked "Exhi- bit A." The bill then goes on to allege that shortly after that sale to Oppenheimer, Oppenheimer sold to Franklin McVeagh 972 CIRCUIT COURT, COOK COUNTY, ILLINOIS. McVeagh, et al. vs. Valencia Cigav Factory, et al. 153 & Co., who are the complainants in this bill, in consideration of $500, and transferred ' to McVeagh & Co., all the rights that he gained by the contract with Cohn & Son. It is alleged that the complainants had, while the cigar manufactured under the trade- mark had been furnished to them by Louis Cohn & Son, sold great quantities of it, and advertised it extensively, and that it came to be a well-known brand of cigars substantially through the efforts of complainants. The bill goes on, then, to allege that the defendants have started a factory for the manufacture of cigars, and that they have taken the same word "Buck," and put it upon their cigar-boxes, and have used substantially the same symbols — that is, they have used the two animals bringing their heads together in a belligerent attitude, and so on, in every re- spect similar to the label or alleged trade-mark designed by Cohn & Son. The allegation in the bill that Cohn & Son sold to Oppenheimer, and engaged to give to Oppenheimer the sole and exclusive right to manufacture cigars under that brand is not borne out — that is, that allegation of the bill, the bill referring as it does to a correct copy of the contract, the copy of the contract being filed controls the allegations of the bill, and the contract contains no sale whatever to Oppenheimer of any right to sell or manufacture cigars. When we examine "Exhibit A," it is a sale of the two trade-marks known, the one as "Buck" and the other as "Punch" — "said trade-marks having been used by us in con- nection with and as the name of certain brands of cigars, and hereby grant to Oppenheimer the sole and exclusive right to the exclusive use of the said trade-marks, and do further sell, transfer and assign to said Oppenheimer all the figures, pictures, and de- signs which we have heretofore used in connection with said trade-marks, and all the rights and interests hereby conveyed and transferred to said Henry Oppenheimer, shall inure- to and be- long to said Henry Oppenheimer, his executors, administrators, and assigns." The contract does not attempt to protect the manufacture by Oppenheimer of any particular brand of cigars or any cigars at all. In fact the contract is simply a bare sale or attempted sale of a word which is undoubtedly a word capable of being used as , 1885. 973 X5S McVeagh, et al. vs. Valencia Cigar Factory, et al. a trade -mark — that is, it is a fanciful word, an arbitrary term, applied to and used in connection with a certain article manufac- tured and sold, which word is not descriptive of the article, and • is not used to designate the place where the article is manufac- tured; simply an arbitrary fanciful name which, it is well estab- lished -by the authorities, may be adopted by any person and applied to his goods, and used by him to designate the ownership or origin of a particular brand or quality, it might be, of goods, and those goods may become known and get a reputation under that fanciful and arbitrary name. Now, the question arising in this suit is not whether such a name can be a trade-mark, nor whether Louis Cohn & Son, as they allege, originated this trade-mark, designed it, and used it in connection with their manufacture and sale of cigars. Whether or not they had got a good trade -mark is not the question. Mani- festly for all the purposes of this cause, it may be assumed, that in the hands of Louis Cohn & Son and in their use, and as ap- plied by them to a brand of cigars manufactured by them, this was a trade-mark, in the use of which they would be protected by the operation of an injunction issuing from a Court of Equity. The sole question in the case is whether such arbitrary sign or trade-mark can be assigned or sold, no matter what the consider- ation may be, or be transferred as a bare sign, as a bare trade- mark, a word, a fanciful term, to some other person regardless of the question whether that person is engaged in the business of manufacturing the article in connection with which the term has been used, or regardless of the fact whether that person takes the good-will of the business, buys out the entire business, and takes the business in connection with which the sign or arbitrary trade- mark had been used. I have examined very carefully all the authorities cited by coun- sel in the case, and the question seems to me to be free from all doubt. There is no case that can be found, none cited by coun- sel at all, which in any manner supports the proposition that a bare trade-rnark, aside from the property, can be assigned, sold, or a good title given to it. The philosophy underlying the his- tory of the law in connection with trade-marks, and the final ab- 974 CIRCUIT COURT, COOK COUNTY, ILLINOIS. McVeagh, et al. vs. Valencia Cigar Factory, et al. X5S solute recognition of trade-mark property, forbids the conclusion that anything of that kind can obtain. It is not necessary for me to go farther in the matter of this opinion than the elementary books on this question of trade-marks. In one of the cases the Court say: ' ' Inasmuch as the Court protects the owner of trade-marks, he is entitled to authorize another when he hands over his business to him to place that mark on his goods. That is a right which should be protected by a Court in Chancery, may be disposed of for value, may be bought and sold, and is, therefore, in that sense of the word property." That is the language of Vice-Chancellor Wood in Ainsworth v. Walmsley, (JLaw Reports , i Equity, 618). That language' states as fairly, perhaps, as it has been stated, although it has been repeated by various Courts, the extent to which the Courts go. "He is entitled to authorize another when he hands over his business to him to place that mark on his goods." Now, of course, that does not mean that he is to sell out his whole busi- ness, but if he has some particular or special article manufactured in a special manner, for which he has a trade-mark and to which he has acquired a property, and he sells out the right to another person to manufacture that particular article and to supplant him in the business of carrying the manufacture of that particular article under the trade-mark which he obtained. It is not neces- sary that a man should sell out his whole establishment to do that, but it must be the manufacture and sale of an article where there is some special method with reference to it, which could not, in the nature of the case, apply to the manufacture of cigars. The'y are a general commodity, and may be manufactured by any and all persons, with reference to which there is no specialty. The only advantage that can be gained by a name, by the use of a trade-mark, is in the particular excellence of that cigar, or its particular cheapness, its particular flavor, the particular tobacco of which he sees fit to manufacture it, not mixing it and not re- ducing its quality, so that the smokers acquire a taste for that particular cigar which is manufactured under that name, and which the consumer purchases under that name. Any person, , i88s. 975 15 3 McVeagh, et al. vs. Valencia Cigar Factory, et al. however, may manufacture the same cigar in the same way, and the right to manufacture a cigar in that way is not the subject of transfer. That is, a man could have no property in the right to the manufacture of a cigar in that way at all. The same question has been in various other ways stated by Chancellors. In sub- stance, says Vice-Chancellor James: "There is no distinction between the sale of the business or good -will by a trader himself and the sale by his assignees in bankruptcy. Therefore in the sale of a business by a trader's assignees in bankruptcy, the trader has no right to open a store after his discharge and use the trade-marks of his old business, or in any other way to represent himself as carrying on the identi- cal business which was sold out, although he has a right to set up again in business of the same kind next door to his old place of business. In such a case it is one objection that a purchaser might come for the assistance of a Court in Chancery, alleging that he has continued to use the name of the old business which he found there — that is, the application of a trade-mark to a busi- ness that had some fanciful name. The property in a trade-mark passes by assignment and by the operation of law to any one who takes at the same time the right to manufacture and sell the par- ticular merchandise to which said trade-mark has been attached. There is no property in it as a mere abstract right. [Dixon Cru- cible Company v. Guggenheim, 2 Brewster, 321). Property in a trade-mark may be obtained by transfer from one who has made the primary acquisition, though it is essential that the transferee should be possessed of the right either to manufacture or sell the merchandise to which the trade-mark has been attached." In Browne on Trade-Marks, the question has been treated, and the rule as it has been deduced from the cases is, "that the prop- erty or right to a trade-mark may be passed by assignment or by operation of law to any one who takes at the same time the right to manufacture and sell the particular merchandise to which such trade-mark has been attached. As a mere abstract right having no reference to any particular person or property, it is conceded that it cannot exist and so cannot pass by assignment or descend to a man's legal representatives. A trade-mark and the right to a trade -mark accrue to the owner from its adoption and use for 976 CIRCUIT COURT, COOK COUNTY, ILLINOIS. McVeagh, ei al. vs. Valencia Cigar Factory, et al. X5S the purpose of designating the particular goods which he manu- factures or sells, and indeed has no separate abstract existence, but is appurtenant to the goods designated." It is not necessary to multiply authorities on the rule. The authorities point all one way. The authorities supposed to devi- ate in any respect from this established rule, which I have read, will be found on a close examination to support the rule instead of to depart from it. Now, in this case there was no sale to either Oppenheimer or McVeagh &r Co. of a factory where this "Buck" cigar was made, or of the business of Louis Cohn & Son. To say that the sale to McVeagh & Co. was a right to sell, under the name of "Buck," any cigars that they saw fit to put into the box under the name of "Buck," would be simply to say that the contract undertook to give to McVeagh & Co. the exclusive right to use that word "Buck" for the purpose of imposing upon the public, because to allow them to sell any brand of cigars under the name of "Buck," would be to allow them to use the reputa- tion gained by Louis Cohn & Son under that name to sell some- thing else, perhaps, which of course would not be supported at all by the authorities. So that it comes to this: The bill is based solely upon the transfer of a bare fanciful term or word in con- nection with the scroll and device that was used by Louis Cohn & Son, to a person for that person to sell and use as if it were his property. It might as well be sold to a doctor as to be sold to a man carrying on the grocery business. The transfer of it to a physician or surgeon or to a livery stable keeper, would pass it just as completely as it can possibly pass in an assignment by such a contract. It is not necessary in this opinion for the Court to say whether the defendants have any trade-mark or not. That is, outside of this case, and it is of no consequence. The point is whether there is any trade-mark now in existence that is the sub- ject of property to any person which can be protected by any operation of a Court of Chancery. If there is any such property it is not in these assignees. They could not gain it under the circumstances, and, therefore, as the bill is demurred to the de- murrer, must be sustained, and the injunction must be dissolved. march, 1885. 977 154 Hill vs. Lockwood, et al. 154 SUPREME COURT, STATE OF WISCONSIN. In Equity. Hill vs. Lockwood, and another. Decided 3 March, 1885. Reported 22 N. W. R., 581. " Clysmic IVater" Case. 1. Affidavits on which an order restraining defendant from acts alleged to be an infringement of plaintiff's trade-mark, and a breach of his con- tract, considered, and order affirmed, without deciding the case on its merits. 2. Preliminary injunction restraining the use of plaintiff's trade-mark will not be dissolved. Where plaintiff's legal title is clear and the infringe- ment is manifest. Appeal from Circuit Court, Waukesha County. Appeal from an order denying a motion to dissolve a tempo- rary injunction, granted at the commencement of the action upon ex parte affidavits. The plaintiff owns a parcel of land in the 62 978 SUPREME COURT, STATE OF WISCONSIN. Hill rs. Lockwood, et al. 154 village of Waukesha, on which there is a spring, the water of which, as she alleges and the defendants admit, is valuable for its curative qualities". She purchased this land in January, 1879, of Warner and Showerman, at the instigation (as she alleges) of the defendant Lockwood, who then had a contract with her grantors for the purchase of the water from the spring, at a stipulated price, for exclusive sale by him in certain States. After plaintiff made the purchase she entered into a contract with Lockwood to sell him such water at the same price, and gave him the exclusive ■right to sell the same for 20 years. She agreed not to sell the water to any other person during that term. Lockwood did not expressly agree to purchase any specific quantity of the water. At the time the contract between Lockwood and the plaintiff's grantors was made, (which was in May, 1878), and before it. was executed, the parties agreed that the spring should be named "Clysmic." It is described in such contract as the spring of Warren and Showerman, "now called and to be known as the Clysmic Spring. ' ' Under both contracts the owners of the spring shipped the water thereof from time to time, as required, to Lock- wood, at New York City, in barrels labeled "Clysmic," and he carbonated and bottled the water, placing it upon the market, and made large sales thereof. The bottles containing it were marked " Clysmic," and Lockwood advertised it extensively as "Clysmic Water," from Waukesha Springs. He also duly regis- tered that name as his trade-mark in the United States Patent Office, soon after he entered into such contract with the plaintiff. Afterwards Lockwood purchased a small piece of land adjoining the land of the plaintiff, dug a well thereon, found water, and in February, 1884, commenced shipping the same from such well to New York, which he there bottled and sold as "Clysmic Water," the same as he did the water from plaintiff's spring. From that date he shipped the same quantity from each source every alter- nate week, and when the action was commenced, had used 600 barrels from his own well. The contract price with plaintiff was one dollar per barrel. The plaintiff maintains that the name "Clysmic" is a trade name applied to her spring, of which she is the proprietor; that MARCH, 1885. 979 154 Hill vs. Lockwood, et al. Lockwood has no legal right to use it in connection with the sale of water from his well, or from any source other than the spring on her land; and that his unauthorized use of it as aforesaid is a fraud upon her which ought to work a forfeiture of the contract. The demand for judgment is that the contract be declared for- feited and abandoned by Lockwood, by reason of such alleged fraud; also fpr damages and an injunction. An accounting is demanded as to the amount of water which he has sold from his own well under such trade name. The defendant French is the agent and manager of Lockwood's business at Waukesha, in charge of his well and the plaintiff's spring, and is made a party to the action solely for that reason. The Circuit Judge granted a tem- porary injunction restraining the defendants from using the name "Clysmic" in the sale of any water other than that drawn from the spring on plaintiff's land. The defendants moved, on verified answers and affidavits, that the injunction be dissolved. The motion was resisted, and many other affidavits were read in oppo- sition thereto. The >Court made an order denying the motion, "which is the order appealed from. Jenkins, Winkler and Smith and C. H. Van Alstine, for respon- dent. Finches, Lynde and Miller, for appellants. Lyon, J.: The chief purpose of this action is to procure the cancellation •of the contract between the plaintiff and Lockwood. The claims for an accounting and for damages are merely incidental, and are •comparatively of minor importance. Whether Lockwood has committed any fraud upon the plaintiff which may work a for- feiture of his contract with her, depends upon the question whether, under the contract he has the right to affix the name "Clysmic" to water from his own well for sale in the market. The contract does not, in express terms, confine his use of that name to water taken from plaintiff's spring; but the plaintiff maintains that to be the spirit of the contract, and the clear meaning and intention of the parties thereto, manifested by the 980 SUPREME COURT, STATE OF WISCONSIN. Hill vs. Lockwood, ct al. 1 54= history of Lockwood's connection with the spring, by various pro- visions in such contract, as well as in his contract with Warner and Showerman, and by all the surrounding circumstances under which both contracts were made. i. The case comes before us on ex parte affidavits alone, for the pleadings are nothing more. For this reason we are very reluct- ant to pass upon the merits of the controversy on this appeal. Indeed, it would be improper to go any further in that direction than ; we are compelled to go, in order to determine the appeal. Otherwise we might unjustly prejudice the rights of one or the other of the parties on the final hearing. Mere ex parte affidavits are, at best, a very unsafe basis for judicial action. They are usually drawn by counsel, and are frequently sworn to by affiants without a clear knowledge of their contents. Thus we have in the record before us an affidavit to a fact made by a person, and another affidavit of the same person denying the fact first sworn to, and stating that he did not understand the contents of his first affidavit. Besides, the affidavits here are in direct conflict on some points, which seem to us now to be quite material to a correct determination of the case, on its merits. For example, the- complaint alleges that the curative properties of the water of plaintiff's spring had been well known for several years before 1878, and the owners had shipped to, and sold the same in, dif- ferent parts of the United States during all those years. Also that as early as 1877 the same was so shipped to New York City, in barrels, marked "Clysmic." All this is denied in the answers, and in the affidavits read in support of the motion to dissolve the injunction. It is stated therein that Lockwood first discovered the efficacious qualities of the water in the fall of 1877, and that in May, 1878, he "discovered, invented, adopted, and appropri- ated" as his own the word "Clysmic," as his trade-mark and symbol, to distinguish as his, and as sold and dealt in by him, all mineral waters which he might thereafter place upon the market. It is further stated in some of the affidavits that Lockwood in- duced the plaintiff to purchase the spring, and enter into the con- tract with him, by promising to use his best effort to establish and MARCH, 1885. 154 Hill vs. Lockwood, et at. extend the business of selling the water, and by assuring her that when the contract should expire, she would have a spring with a name and reputation of great value. This is substantially denied in the opposing affidavits. The affidavits are so conflicting, in- conclusive, and unsatisfactory, on what Ave now regard as mate- rial questions of fact in the case, that we deem it our duty, as an act of justice to all the parties, to abstain from determining the merits of the action on this interlocutory appeal any further than is absolutely necessary to the decision of the questions pre- sented by such appeal. We must, of course, determine whether the complaint states sufficient facts to authorize the allowance of a temporary injunction. 2. The learned counsel for the defendant invokes the rule that "it is only when the legal title is clear that a Court of Equity will interfere by injunction to restrain the use or colorable infringe- ment of a trade-mark." We are of the opinion that the allega- tions of the complaint show a clear legal right in the plaintiff to the exclusive use of the trade name " Clysmic," and hence that the injunction was properly allowed in the first instance. We are not prepared to hold that the affidavits read on the hearing of the motion to dissolve the injunction, considering all of them on both sides, as well as the pleadings, sufficiently dis- prove the plaintiff's right to an injunction, so as to render it the duty of the Court to dissolve it. We believe it the safer and better course to let the injunction stand until the proofs are in. The Court can then determine the facts intelligently, but cannot do so on these affidavits alone. We come to the conclusion the more readily because the learned Circuit Judge so held, and be- cause the injunction is of but little importance to Lockwood. He still has control of plaintiff's spring, and can continue to have all the water therefrom required in his business. There is no claim that the supply is insufficient. He is only restrained from selling the product of his own well as "Clysmic Water." If the trial of the cause results in establishing his right to do so, proba- bly the cost of the water taken from plaintiff's spring, which, but for the injunction, he would have taken from his well, will be as- 982 SUPREME COURT, STATE OF WISCONSIN. Hill vs. Lock-wood, et al. 154 sessed as damages in proceedings on the undertaking for the in- junction. True, Lockwood claims more serious injury, but the injury complained of is more properly the result of the effort to annul his contract. v The order of the Circuit Court denying the motion to dissolve the injunction is affirmed. MARCH, 1885. 983 155 Lehigh Valley Coal Co. vs. Hamblen, et al. 155 CIRCUIT COURT UNITED STATES, NORTHERN DISTRICT OF ILLINOIS. In Equity. Lehigh Valley Coal Company vs. Hamblen, and others. Decided 9 March, 1885. Reported 23 Federal Rep., 252. "■Lehigh Valley Coal Co." Case. 1. Trade-Name — Foreign Corporation assuming same Name — In- junction. — A United States Circuit Court cannot interfere by injunc- tion, at the instance of a corporation organized under the laws of another State, and prevent any necessary step from being taken, undei the Statute of the State in which such Court is located, in the creation of a corporation bearing the same name as the foreign corporation. 2. Same — Relief, when Granted. — Whether relief could be granted after the creation of the corporation, and use of the name of the foreign corporation in fraud of its rights, is not determined. F. Ullmann, for complainant. Beck & Roberts, for defendants. 984 U. S. C. C. SOUTH. DIST. OF ILLINOIS. Lehigh Valley Coal Co. vs. Hamblen, et al. 155 Gresham, J. : The complainant company was organized under the laws of Pennsylvania, in 1875, for the purpose of mining anthracite coal in that State, and selling the same there and elsewhere. It owns valuable coal mines in Pennsylvania, and does a large and lucrative business. For a number of years it has had an extensive and profitable business in the West and Northwest; and for con- venience in the management of that business it has maintained an agency at Chicago, where it owns real estate, including a dock worth $200,000, and has on hand coal worth $400,000. The de- fendants in this suit, wishing to create a corporation in Illinois, bearing the same name as the complainant, to carry on the same business, filed their articles of association with the Secretary of State on the twenty-sixth of December, 1884, under the general laws of Illinois, authorizing the creation of corporations. The Secretary of State thereupon issued to the defendants a license as commissioners to open books for subscription to the capital stock of the new corporation, to be known as the Lehigh Valley Coal Company. This suit was brought to prevent the defendants, by injunction, from receiving stock subscriptions, or taking any other steps necessary to be taken under the statute, in the creation of the new corporation. The object of the defendants in causing an Illinois corporation to be created, bearing the same name as the complainant com- pany, is obvious. They hope, by this means, to secure the benefit of part, at least, of the patronage which the complainant has ac- quired. Unwilling to engage in open, manly competition with the complainant and others carrying on the same business, the defendants resort to a trick or scheme whereby they hope to deceive the public, and obtain an unfair advantage of the com- plainant. Such conduct might be fairly characterized more harshly; and it is with extreme reluctance that I deny the com- plainant the relief prayed for. The complainant is a foreign corporation, and it is only by comity that it is doing business in Illinois at all. The State can say to it any day « Go ! " and it must go. That being so, I do not see that the complainant has a legal right to say a corpora- MARCH, 1885. 985 155 Lehigh Valley Coal Co. vs. Hamblen, et at. tion shall not be created in Illinois bearing its (the- complainant's) name. If the State of Illinois may create a corporation bearing the same name as the complainant, — and it certainly can, — this Court has no right by injunction to prevent anything from being done under the State law which is necessary in the creation of such a corporation. The commissioners perform a function under the laws of the State in the formation of the corporation. If they are not officers of the State they are instrumentalities em- ployed by the State. If they can be enjoined from receiving stock subscriptions under the license issued to them by the Secre- tary of State, I do not see why the latter might not be enjoined from issuing a license, or doing anything else under the State statute. The general law authorizing the Secretary of State to issue a license to commissioners to receive stock subscriptions pro- vides that no license shall be issued to two or more companies having the same name. Before bringing this suit the complainant should have brought to the attention of the Secretary of State the matters alleged in the bill. He might, on a proper application, have revoked the license to the defendants, unless they adopted another name for their company. I do not think this Court can interfere by injunction, at the instance of a foreign corporation, and prevent any necessary step from being taken under the statute of this State in the creation of a corporation. I do not say what may be done if the defendants succeed in creating their corporation bearing the complainant's name, and a suit shall be brought by the complainant to prevent individuals claiming to be officers or managers of such corporation from in- terfering with the complainant's business, as already stated. The temporary injunction heretofore granted is dissolved, and the bill is dismissed. 986 U. S. C. C. SOUTH. DIST. OF NEW YORK. Holt, et al. vs. Menendez, et al. X 5 6 156 UNITED STATES CIRCUIT COURT, SOUTHERN DISTRICT OF NEW YORK. In Equity. Holt, et al. vs. Menendez, et al. Decided 13 March, 1885. Reported 32 O. G., 136. "La Favorita" Case. 1. A junior partner retiring from a firm is held to have retained no interest in a trade-mark used by the firm and originated by its senior member, particularly when the weight of evidence indicates that he released all right to their brands. 2. A casual and fortuitous use of the trade-mark by another for a short time will not impair the right of one who subsequently adopted it and gave it celebrity. 3. The use of a trade-mark for flour by one who selects and sells flours manufactured by others is a valid use. 4. As the complainant here is in laches in bringing suit, (eleven years after knowledge of the infringement,) and as the circumstances justified the defendant in believing that he was licensed by silence, the relief granted must be limited to an injunction. MARCH, 1885. 987 15 6 Holt, cl ctl. vs. Menendez, et al. Mr. S. St. J. McCutchin and Mr. Rowland Cox, for the com- plainants. Mr. John Henry Hull, for the defendants. COXE, J.: This is an action to restrain the infringement of a trade-mark. The complainants are engaged in the flour and commission busi- ness in the City of New York, under the firm-name of Holt & Company. The firm was organized forty years ago, and, with the inevitable changes wrought by time, has continued in the same business ever since. In 1861 they commenced to use, and have since continuously used, to distinguish a certain flour pre- pared by them, the trade-mark in question — "La Favorita. " The trade-mark was registered in the Patent Office February 28, 1882. The defendants, admitting the use of the name "La Favorita," contend that they are privileged to use it for the reason that the flour sold by them was procured from S. Oscar Ryder, who from 1861 to 1869 was a member of the firm of Holt & Company, and thus acquired a right to the trade-mark, which, in the absence of an express relinquishment, he retained after his withdrawal from the firm. The defendants insist, also, that the use of the words " La Favorita " as a brand for flour did not originate with the complainants; that as they use it to distinguish flour manufactured by others and merely selected by them, there can be nothing to support a trade-mark; and, finally, that, whatever rights the complainants once had have been forfeited by inexcusable laches in asserting them. 1. The position that Ryder retained an interest in the trade- mark after his connection with the firm had been severed cannot be maintained. Holt & Company was a firm of character and influence. For years it had preserved its credit and good name unshakened and unimpaired. The trade-mark "La Favorita" was originated — so far, at least, as the New York market was con- cerned — by its senior member. The brand was inseparable from and almost synonymous with Holt & Company. Whatever value it had was. due to the exertions and reputation of the members of the 988 U. S. C. C. SOUTH. DIST. OF NEW YORK. Holt, et al. vs. Meneudez, et al. 156 firm. Its meaning as a brand for flour had been imparted to it by them. The moment its use became general, it ceased to be valuable. Ryder had been a clerk, and from that position was promoted to a partnership. His retirement was an event of but little more" importance than the change of a book-keeper or sales- man. The firm still lived. It was the intention of the remain- ing partners to continue to transact the old business in the old way. That Holt & Company, desiring to retain the good-will of the firm unimpaired, should have permitted Ryder to despoil them of the distinguishing brands upon which their success largely depended without a word of remonstrance is hardly creditable; but when to the presumption thus arising is added, the positive testimony that at the time of his withdrawal Ryder expressly re- leased all right to the copartnership brands, followed by his equivocal denial, it is very clear that the defence based upon his title must fail. Proof and probability unite in pointing to this conclusion. Regarding the defence of want of originality, it must be said, in addition to the fact that it is not pleaded, that the evidence relied on is not free from uncertainty and doubt. But even should the finding be made that a few years before it was adopted by Holt & Company the name "La Favorita" was used at St. Louis as a brand for flour, it must also be said that the use was casual and fortuitous and continued for a short period only. 2. As a distinguishing brand for flour at St. Louis it was soon abandoned and forgotten. There is no merit in the proposition that the complainants' trade-mark cannot be sustained for the reason that the flour is not manufactured by them. The proof is uncontradicted that selection and classification require skill, judgment, and expert knowledge, and add value and reputation to the flour when made by those in whom pur- chasers have confidence. The case of Godillot v. Harris, (8i N. Y., 267), seems conclusive upon this point. Upon the question of laches, however, I am constrained to say that the complain- ants' conduct has been such that the relief granted must be limited to an injunction. Ryder commenced using the brand in 1869, and has used it continuously since. That the complainants knew MARCH, 1884. 989 156 Holt, et al. vs. Menendez, et al. of this — certainly as early as 1871 — is not disputed. That they protested at all is denied. 4. Certainly there was no vigor or courage shown by them until just prior to the commencement of this suit, in 1882. That they did not consent is true; but it is equally true that, for men who believed their rights invaded, their course was inconsistent and misleading. Ryder might well have imagined that they did not intend to call him to an account. The circumstances were such as to justify the belief on his part that he was licensed by silence to use the trade-mark. It would be inequitable to compel him to pay for its use during the long years that the complainants slept upon their rights. In endeavoring to reach a just result the Court should not overlook the fact that the delay in commencing the suit was unreasonable, and that some of the evils of which the complainants complain are attributable to their own laches in this regard. The facts seem to, bring the case within the doctrine of McLean v. Fleming, (96 U. S., 245). There should be a decree in favor of the complainants for an injunction, with costs. 990 U. S. C. C. SOUTH. DIST. OF NEW YORK. Leclanche Battery Co. vs. Western Electric Co. 157 157 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Leclanche Battery Company Western Electric Company. Decided 27 March, 1885. Reported 23 Federal Rep., 275. "Leclanche Battery Co." Case. 1. Trade-Mark — Name of New Article — Right to Use of. — When an article is made that was theretofore unknown, it must be christened with a name by which it can be recognised and dealt in; and the name thus given to it becomes public property, and all who deal in the article have the right to designate it by the name by which alone it is recog- nizable. 2. Same— Name, when not a Trade-Mark.— A name alone is not a trade-mark when it is applied to designate, not the article of a particu- lar maker or seller, but the kind or description of thing sold. 3 Same— Imitation of Labels— Injunction.— Although the name ap- plied by a complainant to his goods may not afford protection as a trade-mark, where others are guilty of imitating the labels used by him in making sales thereof, they will be enjoined. MAR.CH, 1884. 157 Leclanche Battery Co. vs. Western Electric Co. Dickerson &> Dickerson, for complainants. Geo. P. Barton, for defendant. Wallace, J.. The complainants cannot maintain their claim to the exclusive right to use either the word " Disque " or " Pile Leclanche" as a trade-mark, when applied to the batteries manufactured and sold by them. As owners of the right to manufacture and sell the Leclanche batteries until the expiration of the patent granted to the assignee of Leclanche, they have been accustomed to use the word "Disque" on the labels pasted on the glass jar which forms part of the battery, and the word "Pile Leclanche" blown in the glass. Neither of these words are arbitrary names selected to denote the article as the production of a particular proprietor. They are appropriate, and are intended to indicate that the bat- teries are of a specified form, and are made according to the patent of Leclanche. "Disque" describes the form of the bat- tery, and is used to distinguish it from the prism and other forms of porous-cup batteries. "Pile" is synonymous with battery, and "Pile Leclanche" is the designation in French of Leclanche' s battery. 1. When an article is made that was theretofore unknown, it must be christened with a name by which it can be recognized and dealt in;- and the name thus given to it becomes public prop- erty, and all who deal in the article have the right to designate it by the name by which it is recognizable. Hostetter v. Fries, 17 Fed. Rep., 620; Singer Manuf g Co. v. Stanage, 6 Fed. Rep., 279. As soon as Leclanche invented his battery in France, it was neces- sarily given the name " Pile Leclanche," and that name could never again be appropriated exclusively as a trade-mark even by the inventor himself. 2. A name alone is not a trade-mark, when it is applied to designate, not the article of a particular maker or seller, but the . kind or description of thing which is being sold. Singer Manuf ' g Co. v. Loog, 15 Reporter, 538; Wheeler & Wilson Manuf g Co. v. Shakespear, 39 Law J. Ch., 36; Young v. Macrae, gfur., (JV. S.), 322; Canal Co. v. Clark, 13 Wall., 311. 992 U. S. C. C. SOUTH. DIST. OF NEW YORK. Leclanche Battery Co. vs. Western Electric Co. 157 3. The defendants have imitated the label of the complainant to the minutest details, except the signature at the bottom. The complainant is entitled to protection against the unlawful compe- tition in trade thus engendered by the simulation of its label; and upon this ground a decree is ordered in its favor. See Willcox &° Gibbs Sewing Machine Co. v. The Gibbens Frarne, 17 Fed. Rep., 623; Burton v. Stratton, 12 Fea. Rep., 696, and note, 704; and Shaw Stocking Co. v. Mack, Id., 707, and note, 71 7. — Ed. may, 1885. 993 XS8 Fleischmann, et al. vs. Starkey. 158 CIRCUIT COURT UNITED STATES, DISTRICT OF RHODE ISLAND. In Equity. Fleischmann, and others, vs. Starkey. Decided 14 May, 1885. Reported 25 Federal Rep., 127. "Yellow Zavel" Case. TRADE-MARK— COLOR OF LABEL APART FROM NAME OR DEVICE. The color o£ a label, apart froin a name or device, cannot be the subject matter of a trade-mark. Chas. E. Michell and Oscar Lapham, for plaintiffs. C. H. Johnson and C. F. Parkhurst, for defendant. Colt, J. : The complainants are the owners of certain trade-marks used upon their packages of compressed yeast, and they charge the defendant with an unlawful imitation of the same. It is clear, 63 ' 994 U. S. C. C. DISTRICT OF RHODE ISLAND. Fleischmami, et al. vs. Starkey. 15 8 on a comparison of the labels, that the defendant is not guilty of any infringement unless the use of a yellow colored label makes him chargeable. The petition is taken by the complainants that the essential part of their trade-marks consists of a label having a yellow color, and that, therefore, they cover all yellow colored labels used upon compressed yeast, and that the use by the de- fendant of a yellow colored label upon the compressed yeast made and sold by him constitute an unlawful imitation of their trade- marks. The defendant has taken no testimony. The evidence of the complainants goes to prove that yeast with a yellow label sells readily, while yeast with a white label, or any color other than yellow sells with difficulty, — the cause of this being the repu- tation acquired in the market of the article manufactured by the complainants; and, further, that the public are deceived into buy- ing other and inferior yeast having a yellow label as the genuine yeast made by them. This case narrows itself down to the ques- tion whether a label of a single color, like the one in controversy, is the lawful subject of a trade-mark apart from any name, figure, or device with which it may be connected, so that a person who adopts a similar color upon his label may be charged with an un- lawful imitation. Color often serves as the ground-work of a trade-mark, and it may be a very essential element in its compo- sition. In determining the question of infringement it is often a very important circumstance. Browne, Trade-Marks, 263, 265, 267. But the term "mark" implies form rather than color, and it consists of some peculiar name, symbol, figure, letter, or device whereby one manufacturer distinguishes his goods from like goods sold by other persons. Falkinburg v. Lucy, 35 CaL, 52. The color of a label, apart from a name or device, can hardly be the subject-matter of a trade-mark. The effect would be that a single manufacturer might acquire the exclusive right to the use of labels of a certain color, or to the colored paper in which his goods might be wrapped. This might seriously interfere with trade and with legitimate competition. Browne, Trade-Marks, 127, 272. Whatever view may be taken by the French Courts in the cases referred to by the learned counsel for complainants, we know of no American or English authority which goes to this extent. On may, 1885. 995 158 Fleischmami, et al. vs: Starkey. the contrary, so far as the point has been touched upon in the adjudicated cases which have come to our notice, an opposite con- clusion seems to have been reached. Falkinburg v. Lucy, supra; Faberv. Faber, 49 Barb., 357. It follows that the defendant, in using a label of a yellow color, is not guilty of any infringement of complainants' trade-marks, and that the bill should be dismissed. 996 U. S. C. C. NORTH. DIST. OF ILLINOIS. Southern White Lead Co. vu Cary, ct al. 15£? 159 CIRCUIT COURT UNITED STATES, NORTHERN DISTRICT OF ILLINOIS. In Equity. Southern White Lead Company vs. Cary, and others. Decided io October, 1885. Reported 25 Federal Rep., 125. "Southern White Lead Co." Case. [. Trade-Marks — Infringement of. — The complainant in a trade-mark suit is entitled to relief, if the marks or brands used by the defendants sufficiently resemble the complainants' marks or brands to be mistaken for them. 2. Same — Injunction. — An injunction should be granted if the defendants adopt the brand for the purpose of selling their goods as and for the goods of the complainant, or for the purpose of enabling others to do so, and the complainant has been injured or is likely to be injured thereby. In such case it will not be sufficient for the defendants to show that no deception is in fact practiced on those with whom they deal personally; but an injunction will be granted if consumers to whom the goods are intended to be resold are or maybe deceived. 3. Same — Using Name of Place to Deceive. — Where manufacturers at one place falsely mark or brand their goods as manufactured at OCTOBER, 1885. 997 159 Southern White Lead Co. vs. Cary, et al. another, for the purpose of inducing trade which would otherwise go to manufacturers at such other place, such false marking will be con- sidered as fraudulent, and a " resort to a palpable trick," and, the complainant being injured thereby, the infringing manufacturers will be enjoined from thus using the name of the place where the com- plainant carries on its business. Banning cV Banning, for complainant. Dent, Black 6° Cratty Bros. , for defendants. Gresham, J., {orally). The complainant is a large manufacturer of white lead at St. Louis. It stamps or stencils upon the upper end or head of its kegs the words "Southern Company, St. Louis." These words encircle the head of the keg; St. Louis forming the lower half of the circle, and "Southern Company" the upper half; and they enclose the words "Warranted strictly pure white lead in pure linseed oil." The complainant uses another brand or mark, in addition to the one already described, by simply stenciling a red crescent upon the upper half of the head of the keg. St. Louis has an established reputation for the manufacture and sale of pure white lead, and the complainant has had and maintained for years a large trade at that place as a manufacturer of this article. The evidence clearly shows that the complainant's lead is pure. The defendants are manufacturers of white lead at Chicago. They brand upon the heads of their kegs "Southwestern, St. Louis;" surrounding the words "strictly pure white lead;" and the words "Southwestern, St. Louis," appear in the same form as the words "Southern Company, St. Louis," appear upon the complainant's keg, and the letters are the same in size and appearance. The crescent, however, does not appear on any of the defendants' kegs. The defendants also paste upon the sides of their kegs a label containing the words: " The white lead in this package is guaranteed strictly pure, ground in bleached oil, and for purity, whiteness and durability is not excelled by any lead manufactured. " It is shown by analysis, and not denied, that while the com- plainant's manufacture is unadulterated and free from impurities, the defendants' contains on an average only 50 per cent, of lead. The complainant claims a trade -mark in its two brands, one with- 998 U. S. C. C. NORTH. DIST. OF ILLINOIS. Southern White Lead Co. vs. Cary, et al. 159 out the red crescent, and the other with it; and this bill is filed to enjoin the defendants from infringing the first of these trade-marks. I shall not stop to inquire whether the complainant's claim to trade-mark is or is not well-founded, as I think it is entitled to an injunction on another ground. The defendants so brand the heads of their kegs as to naturally mislead and induce persons purchasing for consumption to suppose they are purchasing the complainant's lead, when they are getting an inferior article. The brand used by the defendants is so like the complainant's as to induce the public to mistake the one for the other. The de- fendants 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 deceived. i. The complainant is entitled to relief 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 the complainant, or for the purpose of enabling retail dealers to do so, and the complainant has been injured by this fraud, or is likely to be in- jured 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. 3. The defendants manufacture their adulterated and greatly in- ferior 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 com- plainant ? Realizing that they could not engage in open, manly competition with the complainant, 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 defendants' kegs can and have been sold as the complainant's. 2. A temporary injunction will be granted restraining the de- fendants from branding upon their kegs the words "Southwestern" and "St. Louis." OCTOBER, 1885. 999 ISO Rogers & Bro. vs. C. Rogers & Bros. 160 SUPREME COURT, STATE OF CONNECTICUT. In Equity. Rogers & Brother vs. C. Rogers & Brothers. Decided 30 October, 1885. Reported i New Eng. Rep., 411. "Rogers" Case. "Where, in a suit by persons using "Rogers & Bro. A I," as a trade- mark, to restrain the use of " C. Rogers & Bros. A i," by others, the finding of the Court below was that the word "Rogers" is the only misleading character, and that the manner of using the marks is that employed in the trade generally, the Appellate Court, being controlled as to the facts, by the findings, cannot say, as matter of law, that the use of the mark sought to be enjoined is misleading. The fair and honest use of one's own name, in the ordinary course of business, in the manner in which other manufacturers of similar goods are accustomed to use their names, in the preparation for sale, or sale of goods, cannot be enjoined; although a possibility may exist that the • goods of one will be purchased to some extent by persons who knew no distinction, or even supposed them to be the goods of another. IOOO SUPREME COURT, STATE OF CONNECTICUT. Rogere & Bro. vs. C. Rogers & Bros. ISO Appeal from a judgment of the Superior Court, refusing an in- junction. The plaintiff is a Waterbury corporation having a partnership name. The defendants are a Meriden partnership in name and ir. fact, consisting of three brothers of the name of Rogers. The plaintiff makes silver-plated spoons, -forks, and knives, stamping them in the usual' way and places with the name in an abridged form, prefixed by a star and followed by a mark to indicate that they are "A No. i" in quality, the whole mark being "*Rogers & Bro., A i." The defendants, having been for many years in the silver-plat- ing business, have recently commenced making spoons and forks, which they stamp, in the usual way and place, with their own name and the customary mark of high quality employed by spoon and fork makers, their mark being "C. Rogers & Bros., A i." The complaint alleges that the plaintiff has a trade-mark, of which the name "Rogers" is the vital part, and charges a fraudu- lent infringement of the -plaintiff's rights by the defendants. The complaint was served August 8, 1883, together with an in- junction issued by the Judge of the Hartford City Court. On motion, the injunction was suspended until the Superior Court, should be in session. A substituted complaint was filed on the opening of the Superior Court, other pleadings following. The case was then heard on the merits; the issues were found for the defendants; the complaint was dismissed; the injunction was dis- solved. This appeal was thereupon taken. Messrs. O. H. 6* J. P. Piatt, for plaintiff. "Rogers & Bro. A 1," stamped on the back of the shank of forks and spoons, and upon the blades of knives, has become and is a pure, technical, legal trade-mark, the right to use which is the plaintiff's property. That one may have a trade-mark in a specific and particular use of his name, either separately or in combination with words, symbols or devices, in connection with his goods, is abundantly sustained on principle and by the authori- ties. Singer v. Wilson, Cox Man. Tr.-M., 477; Cloth Co. v. Cloth Co., Id., 223; Upt. Tr.-M., 102. OCTOBER, 1885. IOOI ISO Rogers & Bro. vs. C. Rogers & Bros. What constitutes a trade-mark ? It is the appropriation and use by a trader of some name, symbol, device, or combination, which he may lawfully appropriate and use to mark his goods, so that when people see the goods so marked they will know them to be his goods. Bradbury v. Breton, Cox Man. Tr.-M., 320; Singer v. Kimball, Id., 413; Stokes v. Langraff, Id., 121; U. S. v. Stiffens, 100 U. S., 82, {XXV, Law Ed., 550). By the English Act, the "Name of an individual or firm, printed, impressed or woven in some particular and distinctive manner," constitutes a trade -mark. Sebast. Tr.-M., 18. The recent English and American cases recognize the right of a trade-mark in a man's name, when the elements of the Trade- Mark Act are wanting. The whole progress of trade-mark law has been and still is toward more ample and complete protection. Hall v. Barrows, Cox Man. Tr.-M., 215; Cloth Co. v. Am. L. C. Co., Id., 223; Ainsworth v. Wamsley, Id., 257; Fulton v. Sel- lers, Id., 279; Rogers v. Rogers, Spurr & Co., n Fed. Rep., 445; Thorley v. Massam, 42 L. T. Rep., N. S., 851; Sebast. Tr.-M., 25. In the case of Meriden Britannia Co. v. Parker, in which the defence insisted that a personal name could not be a trade-mark, expressly held that the combination " 1847, Rogers Bros., A 1," constituted the plaintiff's trade-mark, and as expressly held that the use by Parker of the stamp " C. Rogers & Bros., A 1," was an infringement. The stamp of the present plaintiff, referred to in the opinion, is unhesitatingly called a trade-mark and decided to be entitled to protection. Meriden Brit. Co. v. Parker, 39 Conn., 450. There are cases holding that a geographical descriptive or generic name cannot be made a trade-mark, and it is largely upon the reasoning in such cases that the claim is urged that a personal name cannot become a trade-mark. Canal Co. vs. Clark, 13 Wall., 311, is specially cited for this purpose, but there is no parallel between such cases and this case. The manufacturer's name is always used to inform the public by whom the goods are made; it necessarily implies origin and ownership; but a geogra- phical, generic, or descriptive name can have primarily no such 1002 SUPREME COURT, STATE OF CONNECTICUT. Rogers & Bro. vs. C. Rogers & Bros. 160 significance. To stamp spoons "Waterbury," "German Silver," "Silver-Plated," would not primarily identify them as the goods of any particular maker, consequently such names want the first element of a trade-mark; but the use of the manufacturer's name is the strongest possible assertion that he is the maker of the goods on which it is stamped, consequently the best name for a trade- mark. But when a geographical, generic, or descriptive name comes by use and association to tell who makes the goods to which it is attached, it becomes a good trade-mark. Up to that moment it is true that any one may use it; after that moment no one may use -it in a manner as to pass his goods as the goods of another. Stokes v. Langraff, supra ; Wotherspoon v. Currie, Cox, Man. Tr.-M., 329; Newman v. Alvord, Id., 282; Mc Andrew v. Bas- sett, Id., 234. If a trade-mark in one's name is property, no one, whatever his name, whatever his business, whatever his intent, may take, appropriate or injure it. The fact that one bears a name, a cer- tain use of which makes it easy to appropriate the property of another, is a specially valid reason why he should be carefully guarded in the use of his name, rather than be given special op- portunity to possess himself of what truly belongs to us. It is a reason why the Court should be strict in the administration of equity. Stokes v. Langraff, Cox, Man. Tr.-M., 131; Blackwell v. Wright, Id., 466; Bradbury v. Beeton, Id., 320; Gilmanv. Hunnewell, Id., 541; Ainsworth v. Walmsley, Id., 257. The true rule as to what a man in business may do under and with the name which he has chosen as a business designation, is well stated by Judge Lowell in Rogers v. Rogers, Spurr &• Co., 11 Fed. Rep., 495: "Even if we grant all that has been said about the freedom to use names, and I grant upon that subject much more than has been argued for; I set no limits to that free- dom, except interference with acquired rights; the books are full of cases in which defendants have been restrained from the use of their names in a way to appropriate the good-will of a business already established by others of that name." The case is in this respect analogous to that of Williams v. Brooks, 50 Conn., 278-280. There the trade-mark was the plain- tiff's name. OCTOBER, 1885. IOO3 ISO Rogers & Bro. vs. C. Rogers & Bros. " In combination with pink and yellow" wrappers, well-known to the trade. * * * All manufacturers of hair-pins put them in ounce packages, combining the ounce into pound, and the pound into packages in pink and yellow paper." The defendants put up curvilinear hair-pins in pink, and plain hair-pins in yellow wrappers, and in ounce packages, and printed on such pink and yellow wrappers that the hair-pins were manu- factured by L. B. Taylor & Co., Cheshire, Conn. The pink and yellow wrapper was certainly as common to the hair-pin trade as the stamping of the maker's name is to the spoon trade. They were not necessary to the hair-pin trade. Nor is stamping the owner's name necessary to the spoon trade. Ch. J. Hargis, of the Kentucky Court of Appeals, concluding .his opinion in the case of Avery &* Son v. Mickle 6° Co., March, 1883, 27 Official Gaz., No. 10, p. 1027, comprehensively sums up the law applicable to this case and all cases: "In conclusion, we repeat, that this law grows out of the common principle of justice that the rights of each should be so used as not unnecessarily to injure those of others, whose skill has made their goods valuable in their reputation, that finally compensates them for their enter- prise, industry and fidelity." There is nothing in the adjudged cases which authorize the de- fendants to stamp "C. Rogers & Bros. A 1," on their articles, either because it inheres in their name, or because it is a neces- sity of their business, if the effect is the probable misleading of purchasers, and consequent injury of the plaintiff. The defendants mainly rely on Burgess v. Burgess, 17 Eng. L. & E., 257; Meneely v. ' Meneely, 62 N. Y., 427; Carmichael v. Latimer, n R. I, 395; McLean v. Fleming, 96 U. S., 245, (XXIV, Law Ed., 822); Clark v. Clark, 25 Barb., 76; Faber v. Faber, 49 Barb., 358, Comstock v. Moore, 18 How. Pr., 424, and on the reporter's note to Meriden Brit. Co. v. Parker, 12 Am. Rep., 401. A careful examination of these cases will show that none of them are cases in which the plaintiff seeks to have the defendant enjoined against the use of a stamp on goods claimed to infringe the plaintiffs' trade-mark stamp. 12 Am. Rep., 401, expressly 1004 SUPREME COURT, STATE OF CONNECTICUT. Rogers & Bio. vs. C. Rogers & Bros. ISO says that neither Meneely v. Meneely, nor Faber v. Faber, were trade-mark cases. In addition to the cases already cited, in which Judges have distinctly said that a trader's name used in connection with his goods might become a good trade-mark, the following are cited in which the defendants have been enjoined against the use of their own names in a way calculated to deceive. Croft v. Day, 7 Beav., 84; Metzler v. Wood, L. R., Ch. D., 606; Fullwood v. Fullwood, L. R., 9 Ch. D., 176; Levy v. Walker, L. R., 10 Ch. D., 436; McLean v. Fleming, supra; Howe v. Howe Machine Co., 50 Barb., 236; Shaver v. Shaver, 54 Lowa, 208; Thorley Cattle Food Co. v. Massam, 42 L. T. Rep., N. S., 851. In Gilman v. Hunnewell, 122 Mass., 139, label and stamp are placed on the same footing. "A person may have a right in his own name as a trade-mark, as against a person of a different name, but he cannot have such a right against another of the same name, unless the defendant uses the form of a stamp or label so like that used by the plaintiff, as to represent that the defendant's goods are those of the plaintiff's manufacture." McLean v. Fleming, supra, is directly to the point that proof of intentional fraudulent result is unnecessary, and if the case is understood to say that there was no legal .trade-mark as against the defendants in that case, the fact that the injunction was granted, although no intention to defraud was shown, makes it perfectly conclusive. Filley v. Fassett, 44 Mo., 173; Dale v. Smithson, 12 Abb. Pr., 237; Dixon C. Co. v. Guggenheim, Am. Tr.-M. Cas., 559; Amoskeag Co. v. Spear, 2 Sandf. Super. C, 599- The recent English cases are very clear on this question. Thor- ley 1 s Cattle Food Co. v. Massam, supra; Orr, Ewing c^ Co. v. Johnston 6° Co., 40 L. T., (iV. S.), 307. Our Connecticut cases had reached the same point earlier, and hold that evidence of fraudulent design or intent is unnecessary. It is the result with which the Court deals; the act is the same, the injury the same. Bradley v. Norton, 33 Conn., 157; Holmes v. Holmes, etc. Mfg. Co., 37 Conn., 278; Meriden Brit. Co. v. Barker, 39 Conn., 450; Williams v. Brooks, 50 Conn., 278. OCTOBER, 1885. 1005 ISO Rogers & Bio. vs. C. Rogers & Bros. The rule, and the just rule, is that whatever a defendant does to cause his goods to be mistaken for the goods of another will be prohibited. The defendant must sell his goods as his own, not as the goods of another. Seixo v. Provezende, 12 Jur. JV. S., 215; Kinnehan v. Bolton, 15 Irish Ch., 75; Harrison v. Taylor, Am. Trade-Mark Cases, 675; Gillott v. Esterbrook, Am. Tr.-M. Cas., 340; Ewing 6° Co. v. Johnston &* Co., supra. An apparently serious claim is made by the defence, that the plaintiff is not entitled to relief, because it has made representa- tions with respect to its trade-mark which are untrue. It would seem, after the decisions in Meriden Brit. Co. v. Par- ker, and Rogers v. Rogers, Spurr c^ Co., to be unnecessary to dwell on this claim. In the former case the claim was made that the mark itself told an untruth as to who manufactured the goods, and in ' the latter case the claim was based upon the assertion that the plaintiff, by circulars and advertisements, induced the public to believe that the original Rogers Brothers, or some of them, were still in the plaintiff's service. It is not claimed, in this case, that the trade-mark in itself does now or ever did contain an untruth. As to the matter of price-lists, circulars and advertisements, they contain nothing which is materially deceptive, and the rule respecting such statements is well expressed by Judge Lowell, in Rogers v. Rogers, Spurr &* Co. See also, Curtis v. Bryan, 36 How. Pr., 33; note to Piddingv. Howe, Am. Tr.-Mark Cases, 640; Davis v. Kennedy, 13 Can. Ch., 523. In Holmes, Booth c^ Haydens v. Holmes, Booth 6° Atwood Mfg. Co., 37 Conn., 278, the Court practically held the latter corporation must take care, in the selection of its name, not to infringe upon the rights which a prior corporation had to use its corporate name in business. See also, Newby v. Oregon Cent. R. Co., Deady, 609. Mr. C. R. Ingersoll, for defendants. There has not been adduced out of the multitude of trade-mark cases, in this country or Great Britain, a single one in which a I006 SUPREME COURT, STATE OF CONNECTICUT; Rogers & Bro. vs. C. Rogers & Bros. ISO person has been enjoined, under any circumstances whatever, from stamping his own name, simply and in the ordinary way, upon the goods of his own manufacture. On the contrary, the cases are numerous where such an injunction has been refused, even where the purpose of the person so stamping his goods was mani- fested, by accompanying indicia, to be deceptive. In Holloway v. Holloway, 13 Beav., 209, there was a clear , case of fraudulent purpose, but the Master of the Rolls limited his injunction to the misleading additions and refused an injunc- tion against the name. In Burgess v. Burgess, 17 L. of Eq., 257, the defendant was clearly induced by the popularity of the old concern to go into the same business, and he was enjoined from certain misleading acts, but he was allowed to use his own name with whatever ad- vantage might belong to it. In Meneely v. Meneely, 62 N. Y., 427, the Court says, that "If the evidence showed any attempt by the defendants by means of catalogues or by other contrivance to induce the belief that the firm of Meneely, or the managers of the plaintiff's foundry, these acts might have been restrained," but not the use of the' name. In Clark v. Clark, 25 Barb., 79, there was a wrongful purpose evidenced by misleading devices accompanying the name, and the use of the device was enjoined, but not the use of the name. And the law, in this respect, , is correctly summed up by the annotator to Meriden Brit. Co. v. Parker, 12 Am. Rep., 401. Although a deceptive purpose is shown by the use of misleading marks or devices or affirmative acts, accompanying the name, "The use of such mark or device or the practice of such acts will be restrained, but not the use of the name." In James v. James, L.R., 13 Eq., 421, the label complained of was "Lieut. James' Horse Blister." The inventor of the ar- ticle was Lieut. Robert James. The defendant was named Robert Joseph James. He made the article known as "Lieut. James' Horse Blister," put on it that label, with the name of Robert James, dropping the Joseph. The Court says: "The defendants must not lead the public to suppose that this is actually the manu- OCTOBER, 1885. IOO7 ISO Rogers & Bro. vs. C. Rogers & Bros. facture of Lieut. James himself; they must put the words Robert Joseph James on their labels, and they must not make the labels so much alike as to make them appear to denote that the article is made by Robert James. The expression in the plaintiffs' ad- vertisement that none is genuine without the signature of the pro- prietors is on the top label of every pot, to counterfeit which is forgery. This is perfectly true. All that any other person is entitled to, is to put his own name on the top of the pot." In Fullwood v. Fullwood, L. R., Ch. Div., 176, the plaintiff's firm was R. J. Fullwood & Co., and the defendants E. Fullwood & Co. They were both manufacturers of annatto. The descrip- tive cards and wrappers of the defendants were enjoined, but not the use of the name. The Court says: "Of course, I need not say that the defendants are entitled to carry on their business under the firm which they have adopted, if they are so minded, and to carry it on where and as they like, provided that they do not represent themselves to be carrying on the business which has •descended to the plaintiff. But it appears to me that in the cards and wrappers which the defendants are proved to have used, they have been attempting to represent that the business which they carry is now the proprietor." There is another class of cases referred to in this discussion, but which clearly have no bearing upon the question just con- sidered. They are cases like Meriden Brit. Co. v. Parker; Holmes, Booth & Haydens v. Holmes, Booth &* Atwood ; Rogers Co. v. Rogers and Spurr. These are not cases of a defendant stamping his goods with his own name. On the contrary, in each of those cases, the defendants took for that purpose the name of the plaintiff, or a name resembling the plaintiff's, when they either had a different name of their own, or, as in the case of the cor- porations, they could just as conveniently have taken some other name than a name resembling the plaintiff's. The name which was thus taken, was for the party taking it a sham name, and therefore deceptive. The " Thor ley's Cattle Food Case" Mass am v. J. W. Thor- ley's Cattle Food Co., 42 L. T., N. S., 851, combines the char- acteristics of several classes of cases already adverted to, where 1008 SUPREME COURT, STATE OF CONNECTICUT. Rogers & Bro. vs. C. Rogers & Bros. ISO the fraudulent method of a defendant in carrying on his business, so as to represent it to be the business of the plaintiff, has been restrained. A careful examination of that case will show those characteristics to be: i. The assuming a name resembling the plaintiff's, for the pur- pose of carrying on a competing business, as in Rogers v. Spurr, and Holmes, etc. v. Holmes, etc. J. W. Thorley was taken into the defendant company for the purpose of a figure head. 2. The false representations by means of labels, advertise- ments and method of putting up the packages of goods, which accompanied the trade words, "Thorley's Cattle Food," by which the impression was given, to the public that the "Thorley" in those words was the plaintiff and not the defendant, as in the class of cases represented by Hollowoy v. Holloway. 3. The fact that the term "Thorley's Food for Cattle" had come to have a commercial meaning, designating an article, which was only made at the plaintiff's factory, as in the " Glen- field Starch Case." James, L. J. says, "Thorley's Food for Cattle" meant that food which for many years was manufactured at works belonging to Joseph Thorley, and afterwards was manu- factured by his executors • carrying on his business at the same works. "Thorley's Food for Cattle never became an article of commerce as distinguished from the particular manufactory from which it had proceeded." The " Glenfield Starch Case," Wotherspoon v. Currie, 5 (Z. R. Eng. and Irish App.'), H. L. 508, relied on by James, L. J., in the Thorley Food Case, is a case where a right of trade-mark was allowed in the name of a locality combined with the article. The case is not entirely reconcilable with the decision by the Supreme Court of the United States, in the Canal Co. v. Clark, 13 Wall., 311, (80 U. S. Bk. 20, Law Ed., 581); but the differ- ences do not concern us here. There are two facts clearly found by the Court in this case, and upon them the decisions is based. 1. "The word 'Glenfield' had acquired a secondary significa- tion or meaning in connection with a particular manufacture; in short, it had become the trade denomination of the starch made OCTOBER, 1885. lOt>0 ISO Rogers & Bio. vs. C. Rogers & Bros. by the appellants. It was wholly taken out of its ordinary mean- ing." It was "a name which had become exclusively a designa- tion of an article manufactured by the appellants." 2. The defendant's use of the word was a sham, and as he used it, told a falsehood. His true place of business was in Pais- ley, hot Glenfield. And the Court enjoined the falsehood. It was the case of a man's assuming a name not his own, because it resembled the plaintiff's. The decision has no application to the facts of the present case, because: 1. The word "Rogers" on a silver-plated spoon can- not have any other meaning than -the ordinary meaning, that the spoon was manufactured by some person of that name. 2. The defendant, having no other name than "Rogers," cannot tell a falsehood when he stamps the spoons of his manufacture with that name. One of the very latest trade-mark cases in the English Courts, Singer Mfg. Co .v -Loog, 1880, L. R., 18 Ch. Div., 399, plain- tiff's counsel, who were among the most eminent at the English bar, made this concession in argument: "In order to justify the use by the defendant of the name of a rival trader, in connection with the articles which he sells, he must show either that he him- self has a right individually to the name, or that the article in question is a specific article, known by a specific name, and that as in the case of Wellington boots or Hansom cabs, he is unable to designate the article in any other way than by its known name." Messrs. Charles E. Mitchell and George A. Fay, also for de- fendants. A trade-mark is a mark applied to articles of trade to tell the buyer who the maker is. A business man, or a business corpora- tion having a personal name, instead of an arbitrary symbol, can- not be heard to complain, because other persons, having the same name, adopt the same business and conduct it in the usual way. See Meneely v. Meneely, 62 N. Y., 427; Carmichaelv. Latimer, n R. I., 395; McLean v. Fleming, 96 U. S., 245, (Bk. 24, Law 64 IOIO SUPREME COURT, STATE OF CONNECTICUT. Rogers & Bro. vs. C. Rogers & Bros. XSO Ed., 822); Burgess v. Burgess, 3 De G., M. &• C. , 904; Croft v. Day, 7 Beav., 84; Holloway v. Holloway, 13 Beav., 209; Clark v: Clark, 25 Barb., 76; Faber v. Faber, 49 Barb., 358; Comstock v. Moore, 18 How. Pr., 424; Decker v. Decker, 52 How. Pr., 218; Devlin v. Devlin, 67 Z>., 176; Stonebraker v. Stonebraker, 33 Md. , 252; Gilman v. Hunnewell, 122 Mass., 139; Meriden Brit. Co. v. Parker, 39 Conn., 450; Holmes, Booth & 1 Hay dens v. Holmes, Booth & Atwood Mfg. Co., 37 Conn., 278; Williams v. Brooks, 50 Conn., 280; JP»». Rogers Mfg. Co. v. Rogers 6° ,5/>«rr 7^-. C0. , 11 7^//. jfo/. , 495 . The affix " A 1 " is a quality mark. The finding says: "The mark • A 1 ' has been frequently used by manufacturers of such ware for many, years as a mark of quality, and is so regarded in the trade." The finding is conclusive upon the question of fact, because: "When any mark, symbol, or device, is used merely to indicate the name, quality, style or size, of any article, it cannot be protected as a trade-mark." Boardman v. Meriden Brit. Co., 35 Conn., 413. But the combination "A 1," cannot be lawfully appropriated for any other purpose than to indicate quality. In Shaw Stocking Co. v. Mack, 12 Fed. Rep., 711, Coxe, J., says: "It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1,2,3 and 4, or the A, B, C and D, to distinguish the first, second, third and fourth quality of his goods respectively. Why? . Because the general significa- tion aiid common use of these letters and figures are such that no man is permitted to assign a personal and private meaning to that which has, by long -usage and universal acceptation, acquired a public and generic meaning." In Candee v. Deere, 54 ///. , 439, it was held that no exclusive right could be claimed in the letters and figures "A No. 1," "A X No. 1," "No. 1," "X No. 1," "No. 3," and "B No. 1," used to designate the different qualities of the plows. In Mfg. Co. v. Trainer, 10 1 U. S., 55 (JBk. 25, Law Ed., 995), the Court says of the letters A. C. A., used in addition to the manufacturer's name : "Used in that device to denote only quality, and so understood, they can be used by others for a simi- OCTOBER, 1885. IOII ISO Rogers & Bro. vs. C. Rogers & Bros. lar purpose equally with the words 'superior' or 'superfine,' or other words, or letters or figures having a like signification." Only numbers arbitrarily selected can be appropriated to indi- cate origin and thus become parts of lawful trade-marks. In Boardman v. Meriden Brit. Co., 35 Conn., 402, the num- bers were arbitrarily selected and it was expressly found. that the "spoons were known by their respective numbers, and more gen- erally ordered, bought and sold by the numbers on the labels." See also, Lawrence Mfg. Co. v. Lowell Hosiery Mills, 129 Mass., 325, 327; Gillott v. Esterbrook, 48 N. Y., 374. The plaintiff has no lawful trade-mark. The most satisfactory definition of a trade-mark is that contained in High on Lnjunction, 672. "A trade-mark is a particular sign or symbol, which by exclusive use, becomes recognized as the distinguishing mark of the owner's goods and for the protection of which the aid of equity may be invoked." A mere possibility of mistake, no Court can guard against. "All that Courts of justice can do, in that regard, is to say that no trader can adopt a trade-mark, so resembling that of another trader, as that ordinary purchasers buying with ordinary caution are likely to be misled." McLean v. Fleming, 96 U. S., 251, {Bk. 24, Law Ed., 830). Again : "We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same; if the resemblance is such as to deceive an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other." Gorham Co. v. White, 14 Wall., 528,(81 U. S., XX, Law Ed., 737)- Stoddard, J., delivered the opinion of the Court : As we understand the findings and rulings of the Superior Court, practically, the only question left for the determination of this Court is. in respect to the plaintiff's exclusive right, as against these defendants, to stamp the word "Rogers" upon silver-plated fiat ware, such as knives, forks, spoons, etc. ,. In considering this subject it must constantly be borne in mind that all questions of 1012 SUPREME COURT, STATE OF CONNECTICUT. Rogers & Bro. vs. C. Rogers & Bros. ISO fact are finally disposed of by the Superior Court, and that this- Court cannot, even by inference, supplement such finding, or sup- ply omitted facts. Under our practice, this Court is controlled by the rinding as it comes to us. The case stands upon an answer denying the material allegations of the complaint, and in so far as the Superior Court omitted to find the allegations and claims true they must be regarded as not proved. The defendants stamped upon the shanks of spoons and forks- manufactured by them the combination of words "C. Rogers & Bros. A i." The plaintiff's stamp is "Rogers & Bro. Ai." The finding states in detail the use by several different partnerships or corporations of stamps all bearing the common distinctive word "Rogers," and differing from each other in all other material re- spects except in the use of this common and conspicuous word "Rogers," one concern using a stamp with the word "Rogers" alone. The finding then proceeds : "By reason of the numer- ous stamps on spoons, forks and knives, containing the word 'Rogers,' as before mentioned, and of the efforts of the various concerns who have used such stamps since 1847 to promote the sale of their goods as 'Rogers' goods,' the word 'Rogers' has be- come the conspicuous and familiar part of such stamps with a large class of retail buyers; and while jobbers and dealers and those retail buyers who are informed of the facts, readily dis- tinguish between the stamps of the different manufactories by the words or symbols which such stamps do not possess in common, those retail buyers of the articles who buy by the stamps or the single article look only to the word 'Rogers,' and are for this reason liable to confound the various stamps; but generally the re- tail buyers who desire any information on the subject of the make of the goods rely upon the dealer for such information." It appears from the extract that there are two governing facts : 1, that the word "Rogers" is the conspicuous, familiar, material and valuable thing in the various so-called trade-marks; 2, that the stamps of the defendant is liable to be mistaken for that of the plaintiff because of the use of the word "Rogers," and by that limited class alone who "look only to the word 'Rogers.' " And again the case states : "Between the stamps so used by the de- OCTOBER, 1885. IOI3 ISO Rogers & Bro. vs. C. Rogers & Bros. fendants and the stamps used by the plaintiff upon similar articles manufactured by them, respectively, the dealers and jobbers in such articles have no difficulty in distinguishing. And this is also true of those retail buyers who look beyond the word 'Rogers.' But those who regard the word 'Rogers' only, would be liable to ■confound one with the other, as is the case of the various 'Rogers' stamps hefore' mentioned. Retail buyers sufficiently acquainted with the various 'Rogers' stamps in the market to distinguish be- tween the same would have no difficulty in distinguishing between the two stamps of plaintiffs and defendants; but the general re- semblance between the two stamps is such that a person knowing that of the plaintiff and not knowing that of the defendants might, ■upon referring to it, but not reading it attentively, mistake it for that of the plaintiff. Thus, with reiteration the Court below em- phasizes the fact that the word 'Rogers' is the controlling word, the one thing that is the basis of all possible confusion or mistake in the use of two stamps." There is no finding nor suggestion of fact that any other part of the defendants' stamp is answerable in any degree for that lia- bility of mistake. If any other, part of the stamp, in configura- tion, collocation or combination of words, figures or symbols, or in other respects, contributed, in any manner, to deceive possible purchasers, and enable the defendants to sell their goods as those of the. plaintiffs, it should so have been found by the trial Court. This Court cannot find such facts, from an inspection of the stamp itself. This is not a case where this Court can pronounce as mat- ter of law that the defendants' stamp in other particulars so re- sembles that of the plaintiff's as to amount to a representation that the goods are the plaintiff's goods. In this particular the case at bar differs from many of the cases cited in briefs of counsel. In some of the English cases relied upon, and in other instances, the Court determined from the evidence in the particular case whether the stamp was of objectionable character, thus exercising a com- bined jurisdiction over fact and law. In our Courts, as before stated, these jurisdictions are separated, the fact being committed to the Superior Court, and the law to this Court. IOI4 SUPREME COURT, STATE OF CONNECTICUT. Rogers & Bro. vs. C. Rogers & Bros. ISO It is said that "this stamp, ■., 179; Devlin v. Dev- lin, 69 N. Y., 214; Landreth v. Landreth, 22 Fed., Rep., 41; Shaver v. Shaver, 54 Iowa, 213; Stone brake r v. Stonebraker, 33 Md. , 268; Williams v. Brooks, 50 Conn., 278; Meriden Brit. Co. v. Barker, 39 Conn., 450. Upon the other hand there has been, from the first to the present time, a general consensus of judicial opinion that the use of a personal name in a fair, honest and ordinary .business man- ner, could not be. prevented, even.if damage resulted therefrom. Croft v. Day, 7 Beav.-, 84; Holloway v. Holloway, supra; Bur- OCTOBER, 1885. I02I ISO Rogers & Bro. vs. C. Rogers & Bros. gess v. Burgess, 3 D. M. & G., 896; Faber v. Faber, 49 Barb., 357; Clark v. Clark, 25 Barb., 80; Meneely v. Meneely, 62 N. Y., 427; Comstock v. Moore, 18 .£foze>. /V., 424; Gilman v. Hun- newell, 122 Mass., 139; McLean v. Fleming, 96 U. S., 252, (2?£. 24, Law Ed., 831); Carmichael v. Latimer, 11 i?. /., 395; Z««- rtfo/A 0. Landreth, 22 Zy C, 338; Welch v. Knott, 4 Kay 6° /., 747; Leather Cloth Co. Case, Cox Trade-Mark Cas., 223. DECEMBER, 1885. 1047 163 O'Rouke vs. Central City Soap Co. There is no evidence in this case that his competition interfered with the business of Clark & Benefiel, or Stephens, their successor, • or that he was the cause of the subsequent abandonment of the business by them; but if it be once conceded that a person may acquire a good title to a trade-mark by appropriation, without the consent of the lawful owner, it would enable a manufacturer, by the use of large capital or superior energy, to drive competitors out of business by seizing their trade-marks, and using them for' that very purpose, provided the lawful owner is unable or unwill- ing to assert his rights by resort to the Courts. We think that no Court would hesitate to pronounce against a title so obtained. We find it difficult to distinguish such a case in principle from the one under consideration, as it might be impossible to prove that the lawful owner was compelled to" discontinue by reason of such competition. We see no objection to the defendant availing it- self of this defence. To maintain his bill for an infringment, the plaintiff is bound to show an exclusive right to the use of this trade-mark. If it appear that the words were in common use to designate the article manufactured, or if the exclusive right to use them was vested in another, we apprehend that the plaintiff is no more entitled to an injunction than is the patentee of an inven- tion who fails to show that he is the first and original inventor of the thing patented. {Wolfe v. Goulard, 18 How. Br., 64; Man- hattan Medicine Co. v. Wood, 14 O. G., 519; Congress o° E. S. Co. v. High Rock Co., 57 Barb., 526). In this respect, both stand in the position of a plaintiff in ejectment, who must re- cover upon the strength of his own title, and not upon the weak- ness of the defendant's. Indeed, it is a good defence to an ordi- nary action of replevin, that the right to the possession of the property is in a third person. {Dermott v. Wallach, 1 Black., 96; Schulenberg v . Harriman, 21 Wall., 44). The fact that de- fendant has no better right to the use of the trade -mark than the plaintiff, would certainly not entitle the latter to an injunction. Upon the whole, we have come to the conclusion, that the plaintiff never acquired an exclusive right to the use of the words "anti-washboard," and that his bill should he dismissed. IO48 COURT OF APPEALS, ST. LOUIS, MISSOURI. Sanders vs. Jacob. 1 64 164 COURT OF APPEALS OF ST. LOUIS, MISSOURI. In Equity. Robert T. Sanders, Respondent, vs. Daniel Jacob, Appellant. Decided 22 December, 1885. Reported 2 West. Rep., 408. "New York Dental Jiooms" Case. j. The use of a trade name to designate a business, so like that of another person in the same business, as to raise a strong probability of mis- leading and deceiving the public or to show a design to so mislead and deceive will be restrained. 2. Laches of the plaintiff will not avail as a defence in a proceeding to restrain the use of a trade name where the defendant adopted the name with a fraudulent intent. Appeal from the St. Louis Circuit Court. Affirmed. The facts are stated in the opinion. Messrs. L. D. Stewart and Presley N. Jones, for appellant. The names must bear such a resemblance as is calculated to mislead the public generally. DECEMBER, 1885. IO49 X 64 Sanders z'.r. Jacob. The resemblance must be such that ordinary persons proceed- ing with ordinary care would be deceived. McCartney v. Gam- hart, 45 Mo., 5.93; High, Inf., 691, 1088; Gil/nan v. Hunnewell, 122 Mass., 139; Wolfe v. Goulard, 18 How. Pr., 64; Singer Mfg. Co. v. Wilson, 3 C. L. J., 706; Colloday v. Baird, 4 Phila., 139; 5. C. , Cox, Am. T.-M. Cas., 257; Swift v. Dey, Cox, Am. T.-M. Cas., 319; Walton v. Crowley, 3 £ latch., 440. When ordinary attention on the part of the customers will enable them to discriminate, the Courts will not interfere. Fop- ham v. Cole, 66 JV. Y., 69. Reasonable diligence must be used for making the application for relief, and proceedings should be instituted at once. High, Inf., 681; Isaacson v. Thompson, 20 Week. Rep., 196; Del. 6° Hud. Canal Co. v. Clark, 7 B latch., 112; Amoskeag Mfg. Co. v. Garner, Cox, Am. T.-M. Cas., 541. Messrs. C. P- &J. D. Johnson, for respondent. The resemblance between the two names " is sufficiently clear to raise the probability of mistake upon the part of the public, or design and purpose to mislead and deceive upon the part of the defendant;" for which reason the injunction was properly granted. McCartney v. Gamhart, 45 Mo., 595; Sanders v. Utt, 16 Mo, App., 322; Mclean v. Fleming, 96 U. S., 251, 253, (Bk. 24, L. Ed., 831). Thompson, J., delivered the opinion of the Court. In 187 1 the plaintiff began the practice of dentistry at No. 820 Washington Avenue in St. Louis, under the business name and style of "New York Dental Rooms." In 1872 he caused the words " New York Dental Rooms" to be registered as the trade name by which he designated his business. He advertised his business extensively under this name, and, in the course of time, built up a large and lucrative- practice at a cheap scale of prices, principally among laboring people. In 1880 or 1 88 1 the defendant opened a dental establishment as No. 808 Washington Avenue, a few doors east of the plaintiff's, on the same side of the street, under the name of the "Newark Dental Rooms." About two months prior to the bringing of the 1050 COURT OF APPEALS, ST. LOUIS, MISSOURI. Sanders vs. Jacob. 1 64 present action, the defendant removed from that number to a place but two doors from the place of business of the plaintiff, a single shop or store separating them. He displayed a sign bear- ing the words "Newark Dental Rooms," similar in appearance to the signs of the plaintiff. He used a printed form of contract with his customers which bore a marked resemblance to that used by the plaintiff. Persons in search of the plaintiff's establish- ment for the purpose of having work done, sometimes went into the Newark Dental Rooms by mistake, and had the work done there. After the defendant established this business with this sign and trade name near the plaintiff, the plaintiff's business fell off to an appreciable extent. Aside from the resemblance of the defendant's trade name and sign to that of the plaintiff, the evi- dence gives us the impression that it was adopted for, the purpose of deceiving the public and attracting the customers of the plain- tiff into trie establishment of the defendant, and that this purpose was known and participated in, not only by the defendant, but by some of his employees. These facts were shown by the plain- tiff's witnesses, and the defendant offered no evidence of any kind. Upon this state of case, upon a petition in equity by the plain- tiff, a decree was rendered perpetually enjoining the defendant from in any manner using the word "Newark," or any word similar in sound or appearance to the word "New York," in or upon any sign, card or advertisement, or otherwise, in connec- tion with or in carrying on the practice of dentistry in the City of St. Louis. From this decree the defendant prosecutes this appeal, urging that there is no equity on the face of the petition; that the facts do not justify the relief granted, and that the plain- tiff's right to relief is barred by his laches in not making objec- tion sooner. i. We are of opinion that the decree is right, and that it should be affirmed. The case falls within the rule stated in McGartney v. Garnhart, 45 Mo., 593, that, to justify an injunction in such a case, it should appear that the resemblance between the two trade names is sufficiently close to raise a probability of mistake on the part of the public, or to show a design to mislead and deceive on the part of the defendant. In the case of the " What DECEMBER, 1885. 1051 1 64 Sanders vs. Jacob. Cheer Restaurant,'" which was analogous to the present case, we applied this rule and sustained an injunction. Gamble v. Stevenson, 10 Mo. App., 581; see also Sanders v. Utt, No. 3052, of this Court. In the present case both of these elements concur. There was sufficient resemblance between the two signs to raise a probability of mistake on the part of the class of customers that frequented the plaintiff's place of business. The evidence further shows that such mistakes actually occurred. It further satisfies us that the defendant intended that they should occur. The question of laches would be a serious one if there were no element of fraud in the case on the part of the defendant. The Statute of Limitations does not in terms apply to a case of this kind, nor in applying the doctrine of laches is the analogy of the Statute of Limitations necessarily to afford the rule of deci- sion. If the defendant had adopted this trade name innocently, and had gone on honestly practicing his trade under that name for four years, without objection on the part of the plaintiff, and had built up an extensive business under that name, we should say that it would be contrary to the maxims of equity to enjoin him from further practicing under that name at the suit of the plaintiff at this late day. 2. But where the element of fraud supervenes, lapse of time does not purge the defendant's conduct of this taint. The wrong is a continuing one; the injury done to the plaintiff and the de- ception practiced upon the public, both of which the law takes into consideration in these cases, accumulate. Then, if the de- fendant at a recent period of time aggravates the wrong, as he is shown to have done in this case, by moving his place of business still nearer to that of the plaintiff, and by there erecting signs similar in appearance to those of the plaintiff, it makes, we think, a plain case for equitable interposition. The judgment of the Circuit Court will be affirmed. It is so ordered. All the Judges concur. 1052 U. S. C. C. DISTRICT OF MARYLAND. Anheuser Busch, Brewing Association vs. Clarke. 165 165 CIRCUIT COURT UNITED STATES,. DISTRICT OF MARYLAND. In Equity. Anheuser Busch Brewing Association VS. Clarke. Decided 20 January, 1886. Reported 26 Federal Rep., 410. Beer Label -with Red Band. Where a manufacturer has applied a peculiar and distinctive label to designate his goods, and has so used it that his goods are identified by it, a Court of Equity will restrain another party from adopting and using one so similar that its use is likely to lead to confusion by pur- chasers exercising the ordinary degree of caution which purchasers are in the habit of exercising with respect to such goods. On motion for preliminary injunction. Rowland Cox, for motion. William Pinkney Whyte, for defendant. Morris, J.: The general rule of law applicable to this case is that if a manufacturer has applied a peculiar and distinctive label to desig- JANUARY, 1886. 1053 165 Anheuser Busch Brewing Association vs. Clarke. nate his goods, and has so used it that his goods are identified by it, a Court of Equity will restrain another party from adopting and using one so similar that its use is likely to lead to confusion by purchasers exercising the ordinary degree of caution which purchasers are in the habit of exercising with respect to such goods. McLean v. Fleming, 96 U. S., 245. The complainant's affidavits show that the complainant was the first to use for bottled beer a label with a diagonal red band, with the name of the kind of beer appearing in white letters on the red band, and that he has been habitually using this label for two years. The label is a very noticeable and distinctive one by reason of the diagonal red band. The result of the effect upon the eye from seeing a number of bottles is that it is a beer labeled with a diag- onal red band, and the more frequently one sees it the more this one effect is deepened. It does appear altogether probable that a consumer who had been used to getting bottles labeled with complainant's label would more and more rely on the diagonal red band as its distinctive mark, and would be likely to accept the respondent's beer with his diagonal red label on it as supply- . ing what he was in the habit of getting. There is nothing in the difference in the labels calculated to counteract this, and I think it is a strong case of similarity likely to deceive. The respondent's statements and explanations of how he came to hit upon this 'label for his own use are not satisfactory. It appears that it was suggested to him by a bottler in Washington, named Christian Abner, who was a rival of a bottler of complainant's beer, and using complainant's label in the same city, named Edward Abner. Nothing is shown by the affidavits to repel the suspicion which naturally arises, that the subsequent adoption of such a very similar label by one of the two rivals in the same city could not be accidental, but must have been for the purpose of confusion. On the case, as shown by the affidavits, I think the complain- ant is entitled to the injunction as prayed. 1054 COURT OF APPEALS OF MISSOURI. McCaim, et al. vs. Anthony. 166 166 COURT OF APPEALS OF MISSOURI. In Equity. G. H. McCann, et al., Appellants, vs. G. H. Anthony, Respondent. Decided 23 February, 1886. Reported 3 Western Rep., 436. ' ' Old Coon vs. Old Bachelor ' ' Case. A label bearing six distinct points of resemblance to a label used by another person in the same business whose goods had acquired a mar- ket reputation, is such an imitation of the latter label as should be enjoined, where it appears that at least two persons were deceived thereby, and where the defendant's sales have increased, without other cause being shown, since the adoption of the label by the defendant. . Appellate Courts, in equity proceedings, defer to the conclusions of fact arising in the cause, but not necessarily to its conclusions on questions of law. Appeal from the Greene County Circuit Court. Reversed. Suit in Equity for an injunction. The case is stated in the opinion. FEBRUARY, 1886. IO55 166 McCann, et at. vs. Anthony. Messrs. Bakewell & Bake-well, for appellants. Courts of Equity will with great jealousy protect a manufacturer or trader from unlawful competition in his business, and will over- ride -all technicalities to reach justice in a particular case. Avery v. Meikle, 27 Off. Gaz., 1027; Williams v. Johnson, 2 Bosw., 1; Wamsutta Mills v. Allen, Cox's Manual, No. 660; Harrison v. Taylor, 11 Jur. , JV. S., 408; Morgan v. Schwac- hofer, 5 Abb. Prac., JSf. C, 265; Gamble v. Stephenson, 10 Mo. App., 581. The principle of Perry v. Truefitt, 6 Beav., 66-73, ^at no one has a right to put off his goods as the goods of a rival dealer, and that " he cannot therefore be allowed to use name, marks, letters or indicia, by which he may induce purchasers to believe that the goods that he is selling are the goods of another person," is constantly recognized by the Courts as applicable in cases not strictly of technical trade-mark. Croft v. Day, 7 Beav., 84; Holloway v. Hollo-way, 13 Beav., 209; Dixon Crucible Co. v. Guggenheim, 2 Brewst., 321; Stone- braker v. Stonebraker, 33 Md., 252; McLean v. Fleming, 96 U. S., 245, (Bk.24, L. Ed. 828); Knott v. Morgan, 2 Keene, 213-219; Lager Beer Case, Fed. Rep., 28 July, 1885,/. 149; Seixo v. Pro- vezende, L. R., 1 C/i. App., 192; Landreth v. Landreth, 29 Pat. Off. Gaz., 1 131. The jurisdiction rests on fraud on the part of the defendant. The fact that actual fraudulent intent is not shown, or that it is disproved, does not defeat the remedy injunction. Story, Eg., sections 951, 95A; High, Lnj., sections 676-680, 675 «; 678; n. Browne, Trade-M., section 188; Perry v. True- fitt, 6 Beav., 66; Brooklyn Water Lead Co. v. Masury, 25 Barb., 416; Hostetter v. Vo-winkle, 1 Dill., 329; Pro-wett v. Mortimer, 2 Jur. N. S., 414; Lngram v. Stiff, 5 Jur. N. S., 947; Amos- keag Mfg. Co. v. Spear, 2 Sanfd. Super. Ct., 599; Filley v. Fas- sett, 44 Mo., 173; Field v. Lenn, Selon, 237; Taylor v. Taylor, 23 Eng. L. & Eq., 281; Wotherspoon v. Currie, L. R., 5 Eng. & Lr. App., 508; Peterson v. Humphrey, 4 Abb. Pr., 394. Nor is it material that the simulated label or package has not been shown actually to have deceived any one. If the simulated IO56 COURT OF APPEALS OF MISSOURI. McCann, et al. vs. Anthony. X66 label is likely to deceive, evidence of actual deception is unneces- sary. High, Inj., sections 675, 691 n; Codd. Tr.-M., 282, 201-207, 482; Moorman v. Hoge, 2 Sawyer, 78; Glen Cove Mfg. Co. v. Ludemann, U. S. C. C, S. D. N. ¥., /any. 2, 1885, 32 Fat. Off. Gaz., No. 2; Edelsten v. Edelsten, 1 De G., J. &' S. 185; McAndrew v. Bassett, 10 Jur. N. S., 550; 33 L. J,. Ch., 561; Filley v. Fasset, 44 Mo., 173; L. T. Notes of Cases, 187 \, p. 199; Lockwood v. Bostwick, 2 Daly, 521; Freese v. Backoff, 13 U. S. Pat. Off. Gaz., 635 (U. S. C. C, S. D. N. K) Nor need the fraudulent label be parallel with that which it imi- tates. Nor is it material that, seen side by side, the two labels, or the two packages, would not deceive the ordinary purchaser. Browne, sections 223, 234, 267, 268, 397; High, Inj., sections 675, 690 n; Coleman v. Crump, 70 N. Y., 573; Chappell v. Sheard, 2 Kay &J-, 117; Cook v. Starkweather, 13 Abb. Pr. N. S., 392; Millington v. Fox, 3 Myl. & Cr., 338; Sohl v. Geisen- dorf, 1 Wilson, {Ind.'), 60; Glenny v. Smith, 2 Drew. 6° Sm., 476; Walton v. Crowley, 3 Blatchf., 440-447; Lea v. Wolf, 13 Abb. Pr. N. S., 389; 46 How. Pr., 157. Nor is it material that defendant may have ceased to deceive since the beginning of the trial. Walker Patents, 464; Landreth v. Landreth, 29 Pat. Off. Gaz., 1 1 31. Nor need the plaintiff show a registered trade-rriark. Trade-Mark Cases, 100 U. S., 82 (Bk. 25, L. Ed., 550); Mc- Lean v. Fleming, 96 U. S., 245, supra; Lee v. Haley, L. R., 5 Ch., 155; Wotherspoon v. Currie, L. R. 5 H. L., 508; Massam v. Thorley's Food, 6 L. R., Ch. D., 574. Mr. Francis H. Sheppard, for respondent. The Appellate Court will not reverse on weight of evidence in law cases. The reason for this rule applies in equity, and the Appellate Court is unwilling to disturb the decision of the Chan- cellor below, except in cases free from doubt. Dogget v. Lane, 12 Mo., 215; Wilson v. Maxwell, 57 Mo., 146; Davis v. Fox, 59 Mo., 125; Cornett v. Bertelsmann, 61 FEBRUARY, 1886. 1057 166 McCann, et al. vs. Anthony. Mo., 126; Gimbel v. Pignero, 62 Mo., 243; Sharpe v. Me Pike, 62 Mo., 307; Chouteau v. Allen, 70 Mo., 336; Hodges v. Black, 76 Mo., 537; Hodges v. Black, 8 Mo. App,, 393; Boyle v. Jones, 78 Mo., 406; yWy z». Farmer's 6° Traders' Bank, 81 M?., 410. Nor every imitation will be enjoined, but only such as are likely to do harm. Is it a colorable imitation? Is it likely to deceive buyers? Does it give to the imitator an unfair advantage? These are the questions the Court asks, and it "does not decide cases in favor of fools and idiots." Singer Mfg. Co. v. Wilson, 3 C. L. J., last two paragraphs on p. 707, and first 011 p. 708; Mage e Furnace Co. v. Le Barrow, 8 C. L. J., 198; 2 Kent Com., 12th Ed., 336, 481, note 1, B. 2; High, Inf., 2d Ed., 713, section 1088; McLean v. Fleming, 96 U. S., 245, (24 L. Ed., 828); Conrad v. Uhrig Brewing Co., 8 Mo. App., 277. Smoking tobacco is the general name of a kind of goods, and every manufacturer is free to use it. 2 High, Inj., 2d Ed., 689, section 1063; Filley v. Fassett, 44 Mo. , 176; Armstrong v. Kleinhens, 1 C. L. J., 180. Old Bachelor, — Old Coon. Old is a generic word. Rising Moon no infringement of Rising Sun. Morse v. Carroll, 1 C. L. J. , 612. The word Old and the red color have been used by respondent unrestrained for a number of years. Filley v. Child, 8 Reporter, 230; 2 High, Inj., 2d Ed., 721, sec- tion 1 100. The difference in detail and in general appearance between the two labels is marked and striking (with or without the notice, Not Old Coon), and appellants are not entitled to relief. 2 High, Inj., 2d Ed., p. 712, sec. 1086; Conrad v. J. Uhrig Brewing Co., 8 Mo. App., 282. One may even use another's trade name, if he do it in good faith and so as to show that the goods are his own and not the others. 2 High, Inj., 2d Ed., 700, sec. 1075; Id., 715, sec. 1091. Thompson, J. , delivered the opinion of the Court. This is a suit in equity to enjoin a colorable imitation of a label by which the plaintiffs have long marked an article of smok- 67 ios8 COURT OF APPEALS OF MISSOURI. McCaim, et al. vs. Anthony. 166 ing tobacco of their manufacture, called "Old- Coon Smoking Tobacco," which has acquired a valuable reputation in the mar- ket. This label is in form, size and color substantially as fol lows: KEGISIEKED MAY 4th, 1880. The plaintiffs have used this label continuously since the year 1874, and have built up a large trade in this brand of tobacco. Their business has always been carried on at Springfield, Missouri. The defendant has also been engaged in manufacturing smoking tobacco at Springfield, Missouri, for several years past, and has for several years manufactured a brand of smoking tobacco called "Old Bachelor Smoking Tobacco." In the year 1883, the plain- tiffs began putting their << Old Coon Smoking Tobacco" in cloth bags, retaining the above label, which they had previously used on the paper bags in which they had been accustomed to put up the same tobacco. Soon afterwards, namely, in the fall of 1883, the defendant began putting up his " Old Bachelor Smoking To- bacco" in cloth bags of the same size, at the same time changing his label, which previously had borne no colorable resemblance to FEBRUARY, 1886. I059 166 McCaim, et al, vs. Anthony. the above label of the plaintiffs, to a label of the form, size and color substantially as follows, with the exception of the words, "Not Old Coon;" Printed in same color as the other (except that "Not Old Coon" is in black) same process, on white paper, not varnished. As soon as the plaintiffs discovered that the defendant was put- ting up his tobacco with this label, they took the advice of coun- sel, and, under their instructions, a letter was written by their attorney to the defendant on the 29th of December, 1883, notify- ing him that his label deceived the public. The defendant replied that if that was so he would make some change in his label so that the public would not be deceived; and accordingly he made a change by printing on his label in large black letters the words "Not Old Coon," as above shown. The defendant sent one of these labels to the plaintiffs' attorney, who replied that the change did not amount to anything, and afterwards commenced this action. Two witnesses for the plaintiffs gave evidence to the effect that they had been deceived by the defendant's label into a supposition that the tobacco was the plaintiffs' tobacco known as Io6o COURT OF APPEALS OF MISSOURI. McCami, et al. vs. Anthony. 166 "Old Coon." On the other hand the defendant introduced several witnesses, residents of Springfield, who testified under ob- jection, after being shown these two labels, that they could not be deceived into taking one for the other, and that in their opinion no one would be deceived into purchasing one for the other at a different time or place. We do not think it necessary to rule upon the question of the propriety of admitting this last testimony, because the counsel for both parties were so candid as to state on the argument, what seems very obvious to us, that the whole case must be decided upon a comparison of the two labels, there being no conflict in the testimony. We may also say at this point, that in our view, that portion of the argument advanced in favor of the defendant, which presses upon our attention a consideration of the presump- tions which obtain in support of the judgment of the Circuit Court and of the consideration to which the finding of that Court is en- titled in a cause in equity, is entirely misapplied here. In a suit in equity, where the facts are in dispute, an Appellate Court will, according to the settled practice in this State, defer very consider- ably to the finding of the Court below. Nor is it doubted that, where the question for decision is merely a question of law, the conclusions of the learned Judges of the Circuit Courts are en- titled to respectful and considerate attention at the hands of the Appellate Courts; but nevertheless, in such cases, the Appellate Courts are bound to give judgment according to their views of the law. 2. Here, the facts being undisputed, the sole question is, what conclusion of law is to be applied to the facts; and deferring very considerably to the opinion of the learned Judge who decided this case, we nevertheless think that the plaintiffs are entitled to the substantial relief prayed for. We have had several cases of this general nature before us; the principles upon which they are to be determined are pretty well settled and understood; and there is no very serious difference as to those principles between the counsel of the opposing parties and the Court. The govern- ing principles is, that one manufacturer shall not be allowed to impose his goods upon the public as the goods of another manu- FEBRUARY, 1 886. ,Io6l 166 McCami, it a/, vs. Anthony. facturer, and so derive a profit from the reputation of that 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 manu- facturer. Nor is it required that the imitation be so close as to de- ceive cautious and prudent persons, it is sufficient that it be so close as to deceive the incautious and unwary, and thereby work substan- tial injury to the other manufacturer. Nor is it necessary to prove that actual fraud was intended by the manufacturer employing the simulated trade-mark, trade name, sign, label or other device, in order to entitle the other manufacturer to relief in equity, or to an action for damages at law. Here, as in most other civil actions, 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 con- sequence of the act, and gives its judgment accordingly. These principles are embodied and discussed with more or less distinct- ness in the following cases: Filley v. Fasset, 44 Mo., 168; Conrad v.Joseph Uhrig Breiving Co., 8 Mo. App., 277; Gamble v. Ste- phenson, 10 Mo. App., 581; Sanders v. Jacobs, No. 3388 of this Court. Applying these principles to the case before us, it is perceived that the defendants' label resembles the plaintiffs in three distinct particulars of form, size and color. 1. In form, it is an oblong like that of plaintiffs. It also has an oval vignette in the centre, and the plaintiffs' has a circular vignette in the upper centre. It also has the words designating the number of the factory printed in the left hand margin on a white field, the letters reading from the top downwards, as in the plaintiffs'. It also has the notice required by the Internal. Revenue Law printed on a correspond- ing white field on the right hand margin, the letters reaching from the bottom upwards, as in the plaintiffs'. 2. In size it is the same as the plaintiffs'. 3. In color the whole background is red, the most conspicuous of the colors, as in the plaintiffs'. Leavirg out of view the fact that defendant began putting up his tobacco in cloth bags soon after the plaintiffs began putting up their tobacco 1062 COURT OF APPEALS OF MISSOURI. McCann, et al. vs. Anthony. 16© in the same kind of packages, which the defendant explains by stating that smoking tobacco could no longer be sold in paper packages, we find that there are no less than six distinct points of resemblance between the two labels: i. The general form; 2. The oval vignettes; 3. The lettering on the white field on the left-hand side; 4. The lettering on the white field on right-hand side; 5. The size; 6. The general color. In view of these points of resemblance it is scarcely probable that when the defendant designed this label he did not have in his mind the distinct pur- pose of making as close an imitation of the plaintiffs' label as he felt it safe to do. Now, as he admits in his testimony that since he adopted this label his trade has increased, and does not state any facts which lead to the inference that this increase has been due to any other cause than his success in making this colorable imitation of the plaintiffs' label, we think it a fair conclusion that he had the purpose in view of banking, so to speak, on the plain- tiffs' reputation, and that he has measurably succeeded in so doing. We do not think that the printing of the words "Not Old Coon" upon the defendant's label affords a sufficient reparation of the wrong. The defendant can easily repair the wrong without much expense to himself, and without destroying the plate upon which his label is printed, by adopting a color upon the background distinctly different from. red, or by making a new plate and chang- ing the other distinctive characteristics of form and size above pointed out. The judgment of the Circuit Court will be reversed, and the cause remanded with directions to enter a decree perpetually en- joining the defendant, his agents and servants, from manufactur- ing, selling or offering for sale any smoking tobacco manufactured by him, or by any other than the plaintiffs, having affixed upon the packages or bags containing the same the label described in the petition as used by the plaintiffs, or any other label having such characteristic features as to constitute a colorable resemblance of the plaintiffs' label. It is so ordered. All the Judges concur. FEBRUARY, l886. I063 16 "7 Atlantic Milling Co. vs. Rowland, et at. 1S7 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Atlantic Milling Company VS. Rowland, and others. Decided February, 1886. Reported 27 Federal Rep., 24. 1 ' Champion Flour' ' Case. TRADE-MARK— INFRINGEMENT— DAMAGES— PROFITS. Where a party has mad* profits by the sale of goods in violation of the rights of another in a trade-mark, the owner of the trade-mark is entitled to them, whether the same profits would have been made by him or not, and not to any more if they would, for the same profit could not be made by both. Antonio Knauth, for orator. Fred'k P. Foster, for defendants. Wheeler, J.: The final decree establishes the right of the orator to the use of the word "Champion" as a trade-mark for flour; that the defend- ants have infringed upon that right; and that the orator is entitled to recover of them the profits to the defendants and damages to 1064 U. S. C. C. SOUTH. DIST. 01'" NEW YORK. Atlantic .Milling Co. vs. Rowland, et at. 1ST* the orator, due to the infringement. The Matter has reported, that the defendants have used the trade-mark in the sale of 900 barrels of flour, and have made a profit of 25 cents per barrel through that infringement, amounting to $225, and that the orator has suffered damages to that amount thereby. The defendants except to this finding only. The principal question is whether it is warranted by the evidence. The evidence' tended to show that flour of the orator's having that mark was in the same market, that it would bring 25 cents more per barrel on account of that mark, and that the defendants used the mark in making the sales. The defendants' evidence tended to show that the flour would not bring any more on account of the mark, and that they lost, on all the lots making up the 900 barrels, except one, $43, and on that one made only $7.50. All questions as to the weight of conflict- ing evidence were for the Master. The defendants might get 25 cents per barrel more on account of the trade-mark, and still lose on the whole transaction. The profits due to the trade-mark only, and. not the profits of the whole business were the subject of in- quiry. Garretson v. Clark, 15 Blatchf., To; S. C, 11 1 U. S., 120, and 4 Sup. Ct. Rep., 291. The general loss 'would be less on account of what the trade-mark brought more. It is argued that the evidence does not show that the orator would have made this profit if the defendants 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. But the Master seems to have inferred that they would, and therefore to have found that the orator was damaged by the loss of profits to the same extent that the defendants saved by them. The fact that the flour of the orators bearing this mark was in the same market would seem to be sufficient to warrant this finding. Faber v. Hovey, 1 IVklx. Dig., 529; S. C, 73 N. Y., 592. Exceptions overruled, report accepted and confirmed, and de- cree to be entered accordingly. MARCH, 1886. 1065 16S The Koyal Baking Powder Co. vs. Vouwie, et al. 1S8 CIRCUIT COURT UNITED STATES, NORTHERN DISTRICT OF OHIO, EASTERN DIVISION. In Equity.* The Royal Baking Powder Company vs. John H. Vouwie, and Henry J. Vouwie, Partners as Vouwie Bros. Decided March, 1886. "Royal Baking Powder" Case. BILL OF COMPLAINT WITH PRAYER FOR INJUNCTION- LABEL. 1. There must be a general resemblance, similarity of form, color, design, identity aud arrangement of words, so as to mislead persons who exercise ordinary caution in purchasing articles on which such label is placed. 2. The label of respondents, by reason of such general similarity and re- semblance to that of complainant, would readily impose upon buyers of ordinary care and prudence. 3. It is therefore an infringement, and its further use in such resembling form enjoined. * Not reported. 1066 U. S. C. C. NORTH. DIST. OF OHIO. The Royal Baking Powder Co. vs. Vouwie, et al. 168 The bill of complaint sets forth the incorporation of complain- ant, and the manufacture and sale by it of baking powder; that it adopted, affixed and used as a name for the article manufactured, the name "Royal" as a trade-mark. That such corporation for the purpose of introducing and selling powder, put the same up in cylindrical cans, with the said name affixed thereto, and also placed thereon labels of a peculiar color, wording, device and design, and has continued to so use and affix said name and labels. The complaint then sets forth and describes minutely and par- ticularly the color, wording, device and design of the said label, and makes profert of such cans with the labels described affixed thereto. It further alleges that the said package or cans, with the said label, colors, wording, device and design, combined together, con- stitute a trade-mark or trading device, distinguishing the baking powder manufactured and sold by complainant from that of others engaged in similar lines of business, that the baking powder so manufactured, put up, and sold by complainant is absolutely pure, healthful and of superior quality; that, put up in such form and manner, it has had a very large sale in all parts of the United States, and has become well known to the public throughout the United States by the peculiar color, wording, device and design of the labels affixed to the cans or packages containing said bak- ing powder, so that dealers in and consumers of baking powder well knew that baking powder put up in said cans with the labels of the peculiar color, wording, devices and design affixed thereto indicated that the baking powder so put up and distinguished was manufactured and sold by complainant. The complainant further sets forth that the defendants are engaged in the manufacture of a so-called baking powder; that the article manufactured by them is not pure, healthful and of good quality, but is manufactured from burnt alum and other impure, deleterious and cheap ingredients detrimental to the health; that the article manufactured by de- fendants is put up in cans, in general size and appearance like the cans used by complainant; that defendants have so reproduced, copied and imitated the label of complainant "that their label MARCH, 1886. 1067 168 The Royal Baking Powder Co. vs. Vouwie, et at. resembles that of complainant, except in the centre piece and name of manufacturers; and in color, design, general arrangement of words and in general appearance, the label of said defendants is largely similar to the said label of complainant and could not be readily distinguished therefrom." And complainant then al- leges that defendants affix their labels to cans of baking powder manufactured by them, and makes profert of such cans with de- fendants' label affixed thereto. The bill prays, among other things, that defendants may be per- petually enjoined from using their said label on, around, or in connection with any cans, boxes, or packages of any kind con- taining baking powder, or from selling baking powder with such labels attached. Opinion. Welker, J.-: The complainant alleges that it had adopted as a trade-mark a certain label, and for a long time had affixed the same to cans and other packages of baking powder manufactured by it; that the article manufactured by it is identified and distinguished by the label so affixed; and it complains that the respondents are using a certain label in connection with similar cans and packages of bak- ing powder manufactured by them, and in violation of the com- plainant's right to the exclusive use of its said label, or trade- mark. Both of these labels are described and set forth in the complainant's bill. The respondents do not controvert the right of the complainant to the exclusive use of its label. The only question is whether the respondents' label is an in- fringement of that of the complainant. These labels are not ex- actly alike. In cases where the infringed label or trade-mark is not a.fac simile of the infringed in all respects, the rule for deter- mining whether there is an infringement seems to be this : 1. There must be a general resemblance, similarity of form, color, design, identity, and arrangement of words, so as to mis- lead persons who exercise ordinary caution in purchasing articles on which such label is placed, and prevent such persons from 1068 U. S. C. C. NORTH. DIST. OF OHIO. The Royal Baking Powder Co. vs. Vouwie, et al. 1S8 readily distinguishing between the original and imitation label, and so buy the one for the other. It is well said that "a sufficient distinctive individuality must be presented as to procure for the person himself the benefit of that deception which generally re- semblance is calculated to produce." In this case, upon examination and comparison of the alleged imitation label of the respondents with that of the complainant's genuine label, it appears that it is an exact imitation, save the centre figure and the rfame of the company and manufacturer — the one using the words "Forest City Baking Powder Company" and the name of respondents, "Vouwie Bros.," the other "Royal Baking Powder Company." The color, wording, the arrange- ment of words and designs, with the above exception, of the two labels are identical — the general form and appearance the same. 2. The label of the respondents, by reason of such general similarity and resemblance to that of the complainant, would readily impose upon buyers of ordinary care and prudence. The general effect of it is misleading, and calculated to deceive, and thus secures to the respondents the benefits growing out of such general resemblance to the label of the complainant. 3. It is therefore an infringement of complainant's right, and its further use by the respondents in such resembling form should be enjoined. And it is so ordered. Decree. In the case of the Royal Baking Powder Company v. John H. Vouwie and Henry J. Vouwie, partners, as Vouwie Bros. This cause came to be heard at this Term, Tuesday, March 2, 1886, in the City of Cleveland, in the said District, Present, Hon. Martin Welker, District Judge, and was argued by counsel, and thereupon, upon consideration thereof, it was ordered, ad- judged and decreed as follows : That the sole and exclusive right to use the label affixed by complainant to cans and other packages of baking powder manu- factured by it, as described and set forth in the bill of complaint, is in the said complainant, and the use by said defendants of the label described in said bill as being used on, around and in con- MARCH, 1886. IO69 168 The Royal Baking Powder Co. vs. Vouwie, et al. nection with cans, boxes or other packages containing baking powder manufactured by defendants, is in violation of the said exclusive right of complainant. It is further ordered, adjudged and decreed that a perpetual in- junction be and hereby is issued against said defendants and each of them, their agents, attorneys, clerks, servants and workmen, enjoining and restraining them from using in any manner what- ever, on, around or in connection with cans, boxes or other pack- ages containing, or purporting to contain baking powder, either of the said labels described and set forth in said bill; and from offering to sell, selling or in any manner disposing of cans, boxes or other packages containing, or purporting to contain baking powder with the said labels or either of them affixed thereto. The said complainant having waived all claim for damages for or on account of the use by defendants of the labels described in said bill, it is further ordered, adjudged and decreed that said complainant do recover of said defendants its costs and expenses herein, to be taxed at $ = — for which execution may issue as upon judgment at law. IO70 COURT OF APPEALS OF MARYLAND. Meyer vs. Devries, et al. 169 169 COURT OF APPEALS OF MARYLAND. In Equity. Adolph C. Meyer vs. Christian Devries, et al. Decided 9 March, 1886. Reported 64 Md., 532. "Salvation Oil vs. St. Jacobs Oil- 1 . An appeal lies from an order of Court which so modifiies and changes an injunction, as to effectually extinguish it to the extent of its opera- tion. :z. One may publish the fact of the pendency of proceedings in Court, if no reference is made to any discussion of the question involved or to any- thing tending in any way to anticipate or hinder the administration of justice at the hearing, and an injunction restraining such publication of legal proceedings, may be modified so as to permit the publication within this limit. Appeal from the order of the Circuit Court of Baltimore City, modifying an injunction. Affirmed. MARCH, 1886. 107 1 169 Meyer vs. Devries, et at. The facts sufficiently appear in the opinion. Argued before Alvey, Ch. J., and Miller, Irving, Robinson, Ritchie, Stone, and Bryan, JJ. Mr. Thomas R. Clendenin, for appellant. Prior to an adjudication, the appellees had neither the right to advertise the case which they had brought, nor their remedy by means of or in connection with the case, if such advertisements were calculated to act injuriously to the appellant. That it is improper to make publications in reference to a case prior to its conclusion and that such publications maybe restrained by injunction will be shown by the following citations and author- ities. Reports of preliminary proceedings are regarded as having a tendency to pervert the public mind, and it is libelous to publish them. Rex v. Fisher, 2 Camp., 563. It is a contempt of Court to publish preliminary proceedings. Rex v. Clement, 4 Bam. 6° Aid., 2 [8; Holt, Libel, 158, chap. 9; Re Cheltenham, etc., Wagon Co. 17 IV. R., 463. It is libelous to publish the preliminary examinations before a magistrate. Holt, Libel, 161. The mere publication of ex parte evidence before a trial was highly criminal. Holt, Libel, 162, note. It is improper to make publications before the hearing of a cause. Tichborne v. Mostyn, L. R., 7 Eq., 55. Pending litigation, the Court will restrain publication of ac- count calculated to prejudice the case of the opponent. Coleman ■v. West Hart. R. Co., 8 W. R., 734. In Stiles v. Nokes., 7 East, 503, Lord Ellenborough observes: " It must not be taken for granted that the publication of every matter which passes in a Court of justice, however truly represented, is, under all circumstances and with whatever motive, justifiable; but that doctrine must be taken with grains of allowance. ' ' Holt, Libel, 160, notes. Lord Hardwicke considered persons concerned in the business of the Court as being under the protection of the Court, and not IO72 COURT OF APPEALS OF MARYLAND. Meyer vs. Devries, et al. 169 to be driven to other remedies against libels upon them in this re- spect. Ex parte Jones, 13 Ves., 238. In order to obtain an injunction in an action to restrain the issue by defendants of trade circular, which the plaintiff alleged to be libelous, and injurious, to his trade, it is sufficient if the plaintiff shows that the libel is calculated to injure his trade. It is not necessary that he should prove actual damage. Thomas v. William, L. R., 14 Ch. £>., 864. The case of Thorley's. Cattle Food Co. v. Massam, L. R., 14 Ch. £>., 773, is an important one, where an injunction was asked for, decided among other things the following: 1. That the Court can interfere by injunction. 2. That such a statement as there was made was calculated to injure the plaintiff. 3. That evidence of injury was unnecessary, but if the Court can see that the advertisement in itself is calculated to injure, that is quite sufficient, without any positive evidence that injury has been sustained. The Court has power to issue an injunction restraining the de- fendant from publishing concerning the plaintiff, to the injury of his trade, matter which a jury would have found to be libelous, and this power may be exercised by the Judge who tries the case. ■ Saxby v. Esterbrook, L. R., 3 C. P. JDiv., 339. "A full and adequate remedy at law " means such a remedy at law as ousts the jurisdiction of Court of Equity. Kunkel v. Fitz- hugh, 22 Md., 567; Webb v. Ridgely, 38 Md., 364. Difficulty of adequate redress at law and the probability. of a multitude of suits authorize injunction. Also irreparable injury; and it is granted more liberally than formerly. Lucas v. Mc- Blair, 1 2 Gill 6° J. , 12. Courts of Equity decline to lay down any rule which shall limit their power and discretion as to the particular cases on which injunctions shall be granted or withheld. And there is wisdom in this course, for it is impossible to foresee all the exigencies of so- ciety which may require their aid and assistance to protect rights or redress wrongs. Story, Eq. Jur., 156. MARCH, 1886. 1073 169 Meyer vs. Devries, et at. That publications may be restrained, see, Quartz Hill Conn. Gold Min. Co. v. Beall, L. R., 20 C/i. D., 501; Hermann Loog v. Bean, L. R., 26 Ch. £>., 306; Littler v. Thompson, 2 Beav., 129. Messrs. Charles Marshall and Thomas IV. Hall, for appellees. Bryan, J., delivered the opinion of the Court: The appellant filed a bill in equity against the appellees, in which it was alleged that they had published a certain statement in the Baltimore American, and that it was their purpose to dis- seminate and distribute it uniyersally, as well in this State as elsewhere. This statement purported to be an abstract of a bill of complaint, charging that he had infringed their trade-mark by which they designated a certain medical preparation which they manufactured under the name of St. Jacob's Oil. The appellant's bill of complaint averred, with a particularity not necessary now to repeat, that he would sustain irreparable damage unless the appellees were restrained from their proceed- ings, and prayed an injunction. The Circuit Court enjoined the appellees from the further publication and dissemination of the said statement, and from any other publication in reference to the suit brought by them. Afterwards, during the succeeding term, on the petition of the appellees, the Court modified the injunction so as to permit them to make known to all persons who might be interested, that a suit had been instituted by them to restrain the appellant from selling "Salvation Oil," upon the claim by them that the manufacture and sale thereof was an infringement of their trade-mark "St. Jacob's Oil," and that they intended to endeavor to prevent all dealers from selling " Salvation Oil," and to hold them respon- sible for violation of said trade-mark. This order changed and limited the original injunction. It ef- fectually extinguished it to the extent of its operation. Nothing more could be effected within its limits, by the most formal orders of dissolution. 68 1074 COURT OF APPEALS OF MARYLAND. Meyer vs. Devries, el al. X 69 We think that an appeal properly lies from it. But we think that the Circuit Court did not err in passing it. There is no appeal from the original order for an injunction, and its propriety is not a question before us; but the modification subsequently made by the Court merely gave the appellees permission to exercise a right which seems to us very clearly to belong to them. The order merely authorizes the notification of a fact, to wit: the pendency of proceedings in Court; no reference is made to any discussion of the question involved, or anything tending in any way to anticipate or hinder the administration of justice at the hearing. Order affirmed with costs, and cause remanded. MARCH, 1886. IO75 3- TO Apollinaris Co. vs. Scherer. 170 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Apollinaris Company, Limited, vs. Scherer. Decided 16 March, 1886. Reported 16 Federal Rep., 18. ' 'Hunyadi Janos' ' Case. TRADE-MARK— INFRINGEMENT— CONTRACT FOR EXCLUSIVE RIGHT TO SELL "HUNYADI JANOS" WATER— PURCHASE FROM PARTIES TO WHOM OWNER RIGHTFULLY SOLD— RESELLING. ' The owner of a spring of mineral water in Hungary, entered into a contract with complainant giving him the exclusive right to export and sell the water under its name of "Hunyadi Janos," which he adopted as a trade-mark in Great Britain and America. Defendant applied to the owner to purchase the bottled water but was refused, and purchased it from those to whom it had been sold in Germany, and sold it in the United States hi bottles with the same label as that used by complain- ant, except that defendant's bottles, like all those sold by the owner, were stamped with the words "Caution. This bottle is not intended IO76 U. S. C. C. SOUTH. DIST. OF NEW YORK. Apollinaris Co. vs. Scherer. l'T'O for export, and if exported for sale in * * * America, * * *■ the public is cautioned against purchasing it; " while complainant's bottles were stamped "Sole Exporters." Held: That complainant was not entitled to an injunction to restrain defendant from selling the water. Roscoe Conkling and Henry Melville, for complainant. Wayne MacVeagh and Emile Beneville, for defendant. Wallace, J. : The complainant has applied for an injunction pendente lite to restrain the defendant from importing into the United States or selling here any water under the name or designation " Hunyadi Janos," or offering to sell any water in bottles with that name upon them, or with labels like those adopted and used by the complainant to designate and distinguish the water from other mineral waters. The defendant is importing and selling here the water of a certain mineral spring of Hungary owned by one Andreas Saxlehner. The waters are known as "Hunyadi Janos," the spring having been christened by that name by Saxlehner, and the name as applied to the water having been adopted by him as a trade-mark. Prior to the time of the acts complained of Saxlehner transferred to the complainant the sole right to ex- port the waters from Hungary to Great Britain and America, and to sell them in these countries and use the trade-mark. For the more effectual protection of their respective rights Saxlehner and the complainant adopted labels to be affixed to the bottles of water to be sold by each bearing the name "Hunyadi Janos" and other distinguishing devices. The labels used by Saxlehner contained the following printed notice: " Caution. This bottle is not intended for export, and if ex- ported for sale in Great Britain, her colonies, America, or other transmarine places, the public is cautioned against purchasing it. Andreas Saxlehner." The labels used by the complainant contained in the place of this notice the following: MARCH, 1886. 1077 170 Apollinaris Co. vs. Scherer. "Sole exporters. The Apollinaris Company, Limited, Lon- don." Thereafter all water sold by Saxlehner to purchasers in Ger- many and other parts of Continental Europe was sold in bottles with the label which had been adopted for him, and all the water sold by the complainant in Great Britain and the United States was sold in bottles with the -label adopted for its use. The complainant established an agency for the sale of the water in this country, but, as it now asserts, is unable to maintain its own prices for the article because the defendant purchases the water in Germany from persons to whom it has been sold by Sax- lehner, imports it, and sells it here at lower prices. It is shown that the defendant purchases the water in bottles under the label adopted by Saxlehner containing the cautionary notice, and that he does this after having applied to Saxlehner to sell him the water and been refused and informed by Saxlehner of the com- plainant's rights. The bill of complaint proceeds in part upon the theory that defendant is infringing the complainant's trade-mai'k in the name and label applied to the water, but all the averments in this be- half may be disregarded as irrelevant to the real question in the case. No doubt is entertained that the name when applied to the water is a valid trade-mark, and that the complainant should be protected against the unauthorized use of the_ trade-mark by another. The complainant would be entitled to this protection entirely irrespective of the registration of its trade-mark in the 'Patent Office. The same observations apply to the use of the label. The complainant has a common law right to the name and the label as a trade-mark by which its mineral waters are identified; and as the necessary diversity of citizenship exists be- tween the parties to confer jurisdiction upon this Court, the only effect of registration is to afford and perpetuate the evidence of the. complainant's title. But the defendant is selling the genuine water, and therefore the trade-mark is not infringed. There is no exclusive right to the use of a name or symbol or emblematic device except to denote the authenticity of the article with which IO78 U S. C. C. SOUTH. DIST. OF NEW YORK. Apolliiiaris Co. vs. Scherer. 170 it has become identical by association. The name has no office except to vouch for the genuineness of the thing which it distin- guishes from all counterfeits; and until it is sought to be used as a false token to denote that the product or commodity to which it is applied is the product or commodity which it properly authen- ticates, the law of trade-mark cannot be invoked. The real question in the case is whether the defendant is un- lawfully interfering with any exclusive right of the complainant to control the sale of the water in the territory ceded to the com- plainant for that purpose by Saxlehner. It is manifest that the acts of the defendant tend to deprive the complainant of the substantial advantages which it expected to obtain from the privi- lege transferred to it by Saxlehner. It can no longer maintain its own prices for the mineral water, or hold out the inducement it formerly could to the agents it has selected to introduce the article to the patronage of the public, and build up a trade. It can no longer protect itself as efficiently against the chances of a spurious article being palmed off upon the public as its own. It is therefore measurably deprived by the acts of the defendant of the profits and benefits which it contemplated when it pur- chased from Saxlehner the exclusive right of importing the water into this country and selling it here. If the complainant could acquire an exclusive right to sell the water here the case would be plain. If it could not, it still remains to consider whether the defendant has violated any duty which the law recognizes in his relations to the transaction. There would seem to be no doubt that the agreement between Saxlehner and the complainant was a_ valid one. He had the right to dispose of his property in the product of his spring as he saw fit, and it is not apparent how the transfer of a part of his exclusive right to vend the water, by which a territorial division in its enjoyment was created, can be deemed obnoxious to any principle of public policy as tending to create a monopoly or an unlawful restraint of trade. If Sax- lehner were now endeavoring to compete with the complainant in the sale of the water in the ceded territory, his conduct would furnish a ground for equitable jurisdiction and the remedy of an injunction because of the inadequacy of a remedy at law. Bisp. MARCH, 1886. 1079 17 Apollinaris Co. vs. Scherer. Eq. , 463. It is equally clear that if the defendant were co-operating with Saxlehner collusively to violate the complainant's right to the exclusive sale of the water he also would be restrained. In such a case the foundation of equitable redress would be the breach of covenant on the part of Saxlehner, and the defendant when acting in aid would be identified with Saxlehner and amenable to the remedy as though he were Saxlehner himself. But it is im- portant to bear in mind that the case would be one for equitable cognizance and the remedy of an injunction, merely upon the ground that the complainant's damages arising from the breach of covenant could not be reparably redressed at law. It was not possible by any contract or grant between Saxlehner and the complainant to create a territorial title to the products of the spring; no such title is known to the law of personal prop- erty. No analogy can be drawn from the law of patents for in- ventions, because the title to this species of property is purely statutory; and it is by force of arbitrary law alone that the title in the incorporeal property can be sub-divided into territorial parts. The decisions which have been relied on in argument as sustaining the right of the owner of a patent to prevent a sale pr use of the patented thing outside of the territorial limits for which a license has been granted, although the license authorized a sale and the sale was made within the territorial limits of the license, have therefore no application to the present case. The rights of complainant rest purely in covenant. If Saxlehner himself should sell the water here the purchaser would acquire title to the article with all the rights of a proprietor to use it or to do with it as he might see fit. Suppose the purchaser should be fully aware at the time of buying that Saxlehner had covenanted with the complain- ant that the latter alone should have the privilege of selling the water here, could it be seriously questioned that the purchaser would nevertheless acquire a perfect title ? Although the defend- ant was fully aware when he bought the water which he has im- ported from those to whom Saxlehner had sold it of the terms of the agreement between Saxlehner and the complainant, that cir- cumstance does not help the complainant's case. There was no io8o u. s. c. c. south, dist. of new voric. Apollinaris Co. vs. Scheier. 170 breach of covenant on the part of Saxlehner; on the contrary, he did all that was in his power to carry out the agreement be- tween himself and the complainant. The defendant did not ex- pressly or impliedly assume not to sell the water within the terri- tory ceded to the complainant; on the contrary, he repudiated any recognition of such an obligation. The insuperable difficulty in the way of the complainant is that any purchaser of the water, wherever he purchases it, acquires a valid title to treat it as his own property. Upon the first impression it would seem that the defendant cannot be justified in a course of conduct which is calculated if not deliberately prompted by the design to deprive the complain- ant of the benefit of its contract with Saxlehner, and that there must be some principle of equity which can be invoked to pre- vent him from doing that which Saxlehner himself would not be permitted to do. The interposition of a Court of equity is fre- quently invoked and always successfully to restrain unlawful com- petition in trade. All practices between rivals in business which tend to engender unfair competition are odious and will be sup- pressed by injunction. Croft v. Day, 7 Beav., 84; Harper v. Pearson, 3 Law T., (iV. S.), 547; Stevens v. Paine, 18 Law .T., (N..S.), 600; Glenny v. Smith, n Jut:, (iV. S.~), 964; Mack v. Petter, 41 Law J. Ch., 781; Burgess v. Burgess, 3 De Gex,. M. cV G., 896; Glen cV H. Manufacturing Co. v. Hall, 61 N. Y., 226; Goodyear Rubber Co. v. Goodyear s Manufacturing Co., 21 Fed. Rep., 276; Geninv. Chads ey, 2 Brewst., 330; Avery v. Meikle, 17 West.Jur., 292; Bell v. Locke, 8 Paige, 75. But the adjudications which illustrate the principle rest upon the ground that a merchant or trader is entitled to protection only against dishonest or perfidious rivalry in his business. He will be pro- tected against the fraudulent or deceitful simulations by a compe- titor of tokens which tend to confuse the identity or business of the one with the other, and against the false representation of facts which tend to mislead the public and divert custom from the one to the other. Anything short of this, however, is lawful competition. Accordingly the Courts will not attempt to pre- vent the sending of circulars or advertisements by one to the MARCH, 1886. I08l 170 Apollinaris Co. vs. Scherer. customers of a competitor in business although designed to alien- ate patronage, if they contain no deceitful or misleading state- ments. The law does not deal with motives which are not accompanied by a wrongful overt act. If the defendant is legally justified in buying where he can and selling as he chooses, it is not material whether he is actuated by a desire to annoy the complainant or to promote his own pecuniary interests. The complainant is without remedy and the motion for an in- junction must be denied. 082 UNITED STATES PATENT OFFICE. Ex Parte Wiesel. 1 7* 1 171 IN THE UNITED STATES PATENT OFFICE. Ex Parte Wiesel. Decided 30 March, 1886. Reported 36 O. G., 689. "Kallerina Label" Case. The Act o£ June 18, 1874, providing for the registration of labels in the Patent Office, did not intend to provide for such registration of a label which was in fact a trade-mark. Where a label which " bears such distinguishing marks as entitle it to registration as a trade-mark" is proposed for registration, the "function of the Commissioner" is not "merely ministerial," and he is at liberty to refuse such registration. Appeal from Principal Examiner. Label. — Application of John M. Wiesel, filed November 12, 1885. Messrs. Dodge 6° Son, for the applicant. Montgomery, Commissioner : The principal Examiner refuses to register as a label the word "Kollerina." From such refusal applicant appeals to the Com- missioner. On the argument it was admitted by counsel for ap- MARCH, 1886. 1083 1 T* 1 Ex Parte Wiesel. plicant that this word "might be a trade-mark," and it was said that it was in fact » a true label bearing a trade-mark." In the written argument of counsel it is said that no dispute is made, but that the word " Kollerina," if it were presented alone, and if the necessary adoption and use had occurred, might be regis- tered as a trade -mark. In the case of The United States, ex re I. The Willcox cV Gibbs Sewing Machine Company, V. E. M. Marble, (1882, C. D., 445), the Supreme Court of the District of Columbia held that under the old statute, which was in force prior to and at the time of the passage of the Act of June 18, 1874, the owner of a label bear- ing distinguishing marks, was entitled to have recorded in the Patent Office as a trade-mark, or •'< if he preferred to do so, to have it registered in the office of the Librarian of Congress as a mere print." It was further held that the Librarian of Congress .1 ad no dis- cretion to refuse to recognize it as a print, because it could be recognized by the Commissioner of Patents as a trade-mark; and further, that whether it should be treated as the one or the other depended wholly upon the will of its proprietor. It was further held that such Act of June 18, 1874, transferring the registration of prints which were designed to be used as labels from the Librarian of Congress to the Patent Office, did not de- prive such proprietor of this right to choose, but simply "changed the place of registry." And, further, that the "function of the Commissioner of Pat- ents was merely ministerial," and he was bound to register a label when proposed, even though it "bear such distinguishing marks as entitled it to registration as a trade-mark." In the case of The United States, ex rel. Theodore Schumacher and Ettlinger, V. E. M. Marble, Commissioner, (3 Mackey, 32), the same Court substantially reaffirmed the doctrine of the fore- going case. In both cases a mandamus issued to compel the registration. It seems to me very clear that the Act of June 18, 1874, did not intend to provide for the registration of a label which was in fact a trade-mark. Still, I should feel impelled to respect 1084 UNITED STATES PATENT OFFICE. Ex Parte Wiesel. 171 and follow the doctrine of these cases, were it not for what has since transpired in the case of Ex parte Moodie, (28 O. G., 1 271), or unless I was impressed, as my immediate predecessor seems to have been, that the Court in the first two cases above mentioned, had not given the subject careful consideration. I am free to say, however, that the course which was pursued in the Moodie Case above cited, seems to have relieved the Commissioner from any obligation which might have rested upon him to follow the doctrine of such two cases. In the Moodie Case, Commissioner Butterworth held that a label which was in fact a trade -mark, was not entitled to registration as a label, and he therefore refused such registration. Applicant applied to this same Court for a mandamus , and the Court denied the writ. It follows, therefore, that Ex parte Moodie stands in this office to-day as the latest determination and ruling upon this" subject, which ruling stands unreversed and not vacated. I feel compelled to say that the doctrine laid down by my pre- decessor in this Moodie Case, entirely meets my own views. The action of the Examiner must therefore be affirmed, and the regis- tration refused. In conclusion, I take occasion to say, that should applicant desire to secure a review of this case in the Supreme Court of the District of Columbia, upon application for mandamus, or other- wise, I should be very glad to afford all facilities in my power, and to aid as much as possible in securing a decision of the dis- tinct question upon the merits, and in case of such determination, whatever may be the ruling of the Court, it will be followed and observed in this office. APRIL, 1886. 1085 1 >7 ' S Estes, et a/, vs. Leslie, et at. 172 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Estes, and others, VS. Leslie, and others, Decided 8 April, 1886. Reported 27 Federal Rep., 22. ' ' Chatterbox' ' Case. TRADE NAME— CHATTERBOX— INFRINGEMENT. The use of the word "Chatterbox," in connection with the same method of selection and illustration of stories, form of binding and vignette, by- defendants, Held, an infringement of complainant's right in the name. John L. S. Roberts, for orators. Charles E. Rushmore, for defendants. Wheeler, J.: This case is similar to Estes v. Williams, 21 Fed. Rep., 189, in respect to the right of the orators to the exclusive use of the name << Chatterbox" upon their series of juvenile publications in I086 U. S. C. C. SOUTH. DIST. OF NEW YORK. Estes, et al. vs. Leslie, et al. X "/"S this country. No occasion appears for repeating what was there said. The question of laches is more relied upon here as a de- fence than it was there. .There is a question as to the effect of a decree in favor of the defendants against the orators, entered by consent in the Court of Common Pleas of New York in 1881; and a question whether the use of that name by the defendants, upon their publication, amounts to any misrepresentation as to their source. Mr. Johnston, from whom the orators derive their right, ap- pears to have had the exclusive use of this name for his series of publications, both in England and this country, without interfer- ence, from 1866 to 1876, and his works to have become well- known by that name in both countries. By that means he had acquired a clear right to that name for the admittance of his works among customers. ' So far as is shown, he vindicated this right as often as it was invaded to his knowledge until the time when he conveyed it to the orators in 1880. Since then they have not, for any length of time, abandoned it, but have continually as- serted it in one way or another, although not against all trespass- ers at once. No right as against these defendants appears to have been lost in this manner. Collins Co. v. Ames, 20 Blatchf., 542; .S. C, 18 Fed Rep., 561. The operative part of the decree of the Court of Common Pleas restrained the orators from selling any publication called the "Chatterbox" or "Frank Leslie's Chatterbox," with the name "Frank Leslie," or the address "Frank Leslie's Publish- ing House, 53, ss and 57 Park Place, New York," thereon. This did not extend to the name "Chatterbox," and no right to its use was decreed to either party, or affected by the decree in any man- ner. Whether the use which defendants make of the name is calcu- lated to put their publications in the place which those of the ora- tors would otherwise take, is principally a question of fact, and is the most important one open in this case. The publication of Johnstone were composed of selections of stories, sketches, and poems, with pictorial illustrations intended for, and interesting to, the young; printed with a head-line, "Chatterbox," on each APRIL, 1886. 1087 17S Estes, et al. vs. Leslie, et al. page; bound in square. form, in illuminated boards, with vignette slightly varying in style from one number to another, and the name " Chatterbox " prominently on the front, and with a plain cloth back. The selections had been made with such care and skill, and the illustrations and style of binding made so attrac- tive, that they had acquired great popularity, and found large sales, as well in this country as elsewhere. The same method of selection and illustration, square form, style of binding, and vig- nette, as well as name on the cover, have been taken by the de- fendants. The name is the only thing in question in this case, but the adoption of so many other features tends to show the in- tent with which the name is used. All these things together lead plainly to the conclusion that the name has been appropriated to gain an advantage from the reputation and popularity which John- stone's work had acquired under it, and that this appropriation of it is calculated to make the works of the defendants pass for his to some extent. It is true that the name "Frank Leslie" 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 Leslie and of that publishing 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 ap- ply the name of the orators' publications to their imitations. Let a decree be entered for orators for an injunction and an account, with costs. 1088 U. S. C. C. WEST. DIST. OF PENNSYLVANIA. Pratt Manufacturing Co. vs. Astral Refining Co., et al. 173 173 CIRCUIT COURT UNITED STATES, WESTERN DISTRICT OF PENNSYLVANIA. In Equity. Pratt Manufacturing Company Astral Refining Co., Limited, and others. Decided 30 April, 1886. Reported 27 Federal Rep., 492. "Pratfs Astral Oil" Case. 1 . Trade-Mark— "Astral Oil."— The appearance of the word "Astral," in a combination of words constituting a trade-mark, does not pre- clude its use in all other combinations formed for the like purpose. Held, therefore, That the plaintiff's trade-mark, "Pratt's Astral Oil," applied to refined petroleum, was not infringed by the use of the words "Standard White Astral Oil," to designate the defendants' refined petroleum. 2. Same— Known Use of Word.— An oil burning, lamp called "Astral Lamp," having been long well known and in common use, semble, that the word "Astral" was without the range of lawful appropriation as a trade-mark for refined petroleum. 3. Same— Relief Refused.— Relief will not be granted against the use of a brand which points unequivocally to origin, and except in the com- mon use of the words "Astral Oil," so differs from the plaintiff's brand that purchasers will not mistake the one for the other. APRIL, 1886. io 8q IT'S Pratt Manufacturing Co. vs. Astral Refining Co., et al. C. Heydrick, for complainant. J. W. Lee and Martin Carey, for respondents. Acheson, J.: This is a suit by the Pratt Manufacturing Company, a corpora- tion of the State of New York, against the Astral Refining Com- pany, Limited, a partnership association formed under the laws of the State of Pennsylvania, and the managers thereof, to restrain the defendants from using the- words -'Astral Oil," either alone or in connection with other words, as a brand or mark upon pack- ages of refined petroleum, and from the use of the word "Astral" as part of their partnership name; and also to compel the defend- ants to account for the profits of refined petroleum so branded, sold by them; the plaintiff alleging such use of said words or word to be an infringement of its trade-mark. It appears that Charles Pratt, who carried on the business of refining petroleum in the State of New York, in the year 1869 adopted as a trade-mark in his business the words "Pratt's Astral Oil" which he continued so to use until the year 1874, when he transferred his business and his right and title to said trade-mark to the plaintiff company, which has since continued the said busi- ness, and the use therein of said trade-mark, — the plaintiff having, on October 25, 1881, obtained registration of said trade-mark agreeably to the provisions of the Act of Congress of March 3, i88r. The bill alleges that the plaintiff "has, at great expense, introduced the particular grade and quality of refined petroleum manufactured by it into the market, not only of this country, but of foreign countries, under the name 'Pratt's Astral Oil,' by which name your orator's product long since became and now is widely known." The evidence, however, shows that in actual practice the plaintiff does not designate its refined petroleum by the words "Pratt's Astral Oil" simply, but by a brand of this character, viz: Within a circular border, and following the upper arc of the circle, are the words "Pratt's Astral Oil;" within and follow- ing the lower arc of the circle is the word "New York;" above "New York" are the figures and word "46 Broadway;" and in the 69 1090 U. S. C. C. WEST. DIST. OF PENNSYLVANIA. Pratt Manufacturing Co. vs. Astral Refining Co., et a!. XT' 3 center of the circle is a peculiar device or design, beneath which is the word "trade-mark." The refinery of the defendant company, which is situated on the Allegheny Valley Railroad, near Oil City, Pennsylvania, was built, and the name "Astral" given to it, about January or Feb- ruary, 1 88 1. While the works were in course of erection, the railroad company established a station at that point, and called it Astral; and on April 28, 1884, a post office of the same name was established there. About April 1, 1884, the limited partnership of defendant was organized, and purchased said works, and has since operated them. It is satisfactorily shown that neither the parties who originally applied the word "Astral" to these works, nor the defendants when they adopted it as part of their partnership name, had any knowledge whatever that the word was used by the plain- tiff. Upon the heads of their petroleum barrels the defendants' brand, in circular form, the words "The Astral Refining Com- pany, Limited, Oil City, Pa.;" and in the centre of such circle are the words, "Standard White Astral Oil." This is the entire brand, and the whole is in large and conspicuous letters. Surf) being the material facts of the case, is the plaintiff entitled to the relief sought? It will be observed that the plaintiff in effect claims an exclusive- property in the use of the words "Astral Oil," as applied to refined petroleum; and also in the use of the word "Astral," as applied to the business of refining petroleum. Can this pretension be sustained ? I think not. In the first place, I strongly incline to the opinion that the word "Astral" was with- out the range of lawful appropriation as a trade-mark for refined petroleum by reason of the fact that long before it was employed by Charles Pratt the appellation had been given to an oil-burning lamp well known and in common use. Now, very naturally, the public might associate the words "Astral Oil" with the "Astral Lamp," and thus the exclusive use of those words as a trade-mark would have a tendency to give the plaintiff an unfair and hurtful monopoly in contravention of that rule of law which forbids the use of anything as a trade-mark which would destroy competition. Canal Co. v. Clark, 13 Wall., 323. Then in the second place, the appropriation of the word "Astral" in one combination of APRIL, 1886. 1091 IT'S Pratt Manufacturing Co. vs. Astral Refining Co., et al. words does not preclude its use in all other combinations. Such -was the determination of the Supreme Court of Pennsylvania in respect to the word "Samaritan," as applied to compound medi- cines. Desmond' 1 s Appeal, 13 Wkly. Notes Cas., 303. The plaintiff's trade-mark consists, not of the word "Astral" alone, nor yet of the two words "Astral Oil." The prefix "Pratt's" is the distinguishing word in the plaintiff's combination, and, in truth, is indispensable; for, according to the averment of the bill, it is by the name "Pratt's Astral Oil" that the plaintiff's product is known in the markets of the world. Is it credible that purchasers possessing ordinary intelligence, and observing reason- able care, would confound "Standard White Astral Oil" with "Pratt's Astral Oil?" Moreover, the plaintiff's packages of re- fined petroleum are designated by a peculiar brand of which the ■said name forms a part. Now, the brand used by the defendants' is not in imitation of the plaintiff's, but essentially differs there- from. Indeed, it seems to me to be quite impossible that any purchaser would mistake one for the other. The brand of the de- fendant company, so far from tending to mislead buyers, points directly and unequivocally to the origin of the contents of the packages. There is not a particle of proof that the defendants have at- tempted to practice deception upon the public, or to perpetrate any fraud upon the plaintiff; but, on the contrary, the defendants' ■entire good faith is affirmatively shown. There is, then, no ground whatever for granting relief to the plaintiff. That the bill must be ■dismissed, is a conclusion in consonance with well-considered and authoritative decisions. Desmond's Appeal, supra; Gilman v. Hunnewell, 122 Mass., 139; Manufacturing Co. v. Trainer, 101 U.S., 51. Let a decree be drawn dismissing the bill, with costs. 1092 U. S. C. C. DISTRICT OF MASSACHUSETTS. Davis vs. Davis, et al. 1 T"^ 174 CIRCUIT COURT UNITED STATES, DISTRICT OF MASSACHUSETTS. In Equity. Davis Davis, and others. Decided 5 May, 1886. Reported 27 Federal Rep., 490. "Red and Yellow Soap Label" Case. Trade-Marks— Infringement. — Soap packed in a box, with alternate red and yellow wrappers, so as to produce a representation of a trade- mark of the same combination of colors, is not an infringement of that trade-mark. What will be Protected.— A peculiar method of arranging soap in a box is not a trade-mark which can be legally registered. Motion for Preliminary Injun ction. W. B. H. Dowse and E. B. Hale, for complainants. T. L. Wakefield, for defendants. MAY, 1886. 1093 174 Davis vs. Davis, et at. Carpenter, J.: This bill is brought to enjoin certain alleged infringements of the trade-mark of the complainants, registered June 2, 1885, and numbered 12,279. It appears that the trade-mark of the com- plainants, and also the alleged infringements thereof, are used in commerce with the Dominion of Canada. The trade-mark is de- scribed as follows in the statement annexed to the certificate of registry : "Our trade-mark consists of a label bearing a representation of the device or design produced by the means and arrangement used by us in packing our cakes or bars of soap in boxes. We fold each cake or bar of soap in either a red or a yellow wrapper, and pack the cakes or bars thus folded in a box, so that the red and yellow wrappers alternate. * * * As the label is a re-produc- tion of the appearance which the soap presents when packed, as described, in a box, it is obvious that bars or cakes of soap simply wrapped and arranged in a box, as described, is one method of producing our trade-mark, * * * th? essential feature of which is the device produced by the combination and alternate arrangement of red and yellow spaces, substantially as described." This trade-mark, although, in the words of the statement, it "consists of a label," is not attached in any way to the soap sold by complainants. In practice the label is made of the same size as the box of soap, measuring on the inside, and is placed in the box on the upper layer of bars of soap, and is by the retail trades- man taken out, and used as a show card. The complainants allege that the respondents infringe this trade- mark in two ways : First, they give to their customers a shallow box containing cakes of the same length and breadth as those sold by them, but much thinner, and inclosed in red and yellow wrap- pers, and arranged alternately by colors, as in the drawing of the trade-mark. This shallow box is exposed to view by the retail tradesman, and serves the purpose of a show-card advertisement. The trade-mark of the complainants, therefore, is a representation, or, if the word may be allowed, a picture, of the top of an open box of soap. It seems entirely clear to me that such a trade- mark cannot be infringed by the use of a real box of soap, of 1094 U. S. C. C. DISTRICT OF MASSACHUSETTS. Davis vs. Davis, et al. 1 7*4: whatever size or shape, or whatever may be the color or arrange- ment of the wrappers. It seems to me to be impossible to say- that any physical object can be, in the nature of things, a color- able imitation of a picture or representation of that object. Still further, it is to be observed that there is a very great difference in appearance between a box of soap, and a printed label represent- ing the upper layer of soap therein contained. The most careless observer could not confound one with the other. I therefore con- clude that there is no infringement by the use of the advertising box, unless, indeed, it be an infringement of the rights of the complainants to sell soap wrapped in red and yellow wrappers, arranged alternately in the box in which it is packed. But the complainants claim, in the second place, that their trade-mark is infringed by the sale of soap wrapped and arranged in boxes in the same manner used by them. Undoubtedly the terms of the statement are broad enough to cover the boxes of soap sold by respondents. The statement expressly says that "bars or cakes of soap simply wrapped and arranged in a box, as described, is one method of producing our trade-mark." But I am of opinion that the registration, in so far as it can be interpreted to cover the sale of boxes of soap, is entirely void, for the reason that the object or thing thus included in the description is not such a thing as can lawfully be "registered as a trade-mark. A trade-mark is some arbitrary or representative device attached to or sold with merchandise and serving to designate the origin or manufacture of that merchandise. I do not think that the mer- chandise itself, or any method of arranging the various packages, can be registered as a trade -mark. In the very nature of the case, as it seems to me, the trade-mark must be something other than, and separate from, the merchandise. It is not, of course, claimed that the colors used in the wrappers can be in themselves the sub- ject of a trade-mark registration; nor is it claimed that the wrap- pers themselves constitute the trade-mark. The claim is that the trade-mark consists in the arrangement of the colors in the wrap- pers. This seems to me to be no less than a patent for an idea, under the guise of the registration of a trade-mark. I do not think that, in any possible view, the claim can be sustained. MAY, 1886. 1095 1 74 Davis vs. Davis, et al. There is evidence, also, which makes it most probable that the method of packing soap in alternate red and yellow wrappers was adopted by B. T. Babbitt, of New York, at about the same time it was adopted by the complainants. Taking that view of the evi- dence which is most favorable for the complainants, it appears that for about four years before their application for registration Bab- bitt had used the alleged trade-mark without objection or inter- ference. The complainants, indeed, produce samples of the boxes of soap sold by themselves and by Babbitt, and they point out that the colors used by Babbitt are of widely different quality and shade from those used by themselves. Undoubtedly the colors used by Babbitt are pale and dull, and those used by complain- ants are strong and bright. But Babbitt uses red and yellow, and the statement of the trade-mark specifies no particular shade or quality of color. It would be, I think, difficult to say on this evidence that complainants had the exclusive right to use their alleged trade-mark at the time they made application for registra- tion. The motion for preliminary injunction will be denied. IO96 U. S. C. C. EAST. DIST. OF LOUISIANA. Gail, et til. v*. Wackerbarth, et al. 175 175 CIRCUIT COURT UNITED STATES, EASTERN DISTRICT OF LOUISIANA. Ix Equity. Gail, et al. Wackerbarth, et al. Decided 16 June, 1886. Reported 37 O. G., "894. "Navy Tobacco" Case. TRADE-MARKS— IMITATIONS OF OTHER GOODS— INJUNC- TION. Parties will be restrained by injunction from using packages made in imita- tion of others in the trade, and calculated to deceive the buying public and to defraud the original users of such packages; but such imitation must be sufficiently close to have that effect or the injunction will be refused. On Motion for injunction pendente lite. Mr. Joseph P. Horner, for the complainant. Mr. J..R. Beckwith, for defendant. Pardee, J.: There is no one characteristic or mark common to the packages of tobacco of complainants and defendants that either one can JUNE, 1886. 1097 1 'T'S Gail, ct al. vs. Wackerbarth, et al. have exclusive right to. There remains, then, but the question whether the defendants' packages, in form, size, color, lettering, and marks combined, are made in imitation of complainants' packages, and are calculated to deceive the buying public, and thus defraud the complainants of their rights. The form and size or shape of the defendants' packages are identical with complain- ants' ; but this shape is the common one and of long standing for all manufacturers of the article, and seems to be required to meet the stamp Act of the Government and for convenient handling by consumers, the shape being oblong, about five and a half inches by two and a half inches, and one and a quarter inch thick, a package easily placed in the pocket. The common color is blue; but they are of decidedly different shades, and if color is an ob- ject to the purchaser the defendants' packages could not be easily passed off to a purchaser who desired complainants' goods. The only common lettering is the word << Navy," and in this there is a great similarity. The size of the letters and the circular form are very similar. There are no common or similar marks, except that each has a black border or fringe on the face, but similar only in general appearance. Both packages show lead-foil at the ends as an outside wrapper. The packages of each have a distinct and prominent trade-mark on the face of the package; but there is no similarity, the defendants' mark being a naked muscular arm holding a heavy hammer poised for striking, while the com- plainants' mark is the letter "G," inclosing a tomahawk in a diamond background, with the words "Trade-mark" under the letter "G." Over the defendants' trade-mark is the word " Union ' ' in plain, prominent letters, while over the complainants' mark are the words "Smoke" and "Chew" in a sort of script. By inspection of the packages in evidence I can see no improper imitation, unless it is in the color and in the shape given to the word ' < Navy. ' ' The showing made by the answer and exhibits clearly meets the complainants' bill and affidavits as to intended imitation and fraud and as to effect on trade. As the case stands at present, I am compelled to refuse the in- junction prayed for. IO98 COURT OF COMMON PLEAS, NEW YORK. Schumacher & Ettlinger vs. Schwenke, et al. 176 176 COURT OF COMMON PLEAS FOR THE CITY AND COUNTY OF NEW YORK.. In Equity. Schumacher & Ettlinger Schwenke, Jr., et al. Decided 26 June, 1885. Reported 36 O. G., 457. ' 'Henry Lee Cigar ' ' Case. 1. The fact that a label has been registered as a trade-mark under the United States Act of March 3, 1881, does not abridge the powers of the State Courts at common law to determine whether or not the matter on such label can be considered a trade-mark. 2. A manufacturer of labels may impress them with a uniform device to indicate them as of his manufacture, but the labels themselves cannot constitute his trade-mark. 3. The office of a trade-mark is to authenticate the article on which it is borne as the product of the owner of the trade-mark, and is a repre- sentative or substitute for the owner's signature. 4. Labels sold to cigar manufacturers and used upon their merchandise become the brand or pretended trade-mark of the cigar manufacturer, and not of the lithographer. It is impossible that the same label can be the trade-mark of both. JUNE, 1886. 1099 XT' 6 Schumacher & Ettlinger vs. Schwenke, et al. 5. By the use which a merchant makes of a label in applying it to a pack- age containing the product of his manufacture it may become for him a trade-mark, for it maybe a distinctive mark, without being the object of his commerce; but as to the printer of such label, it can be nothing but the special object of his industry. 6. When a printer publishes a label intended to convey to the public the impression that it covers cigars of superior excellence, and sells such label to anybody to cover just such cigars as the manufacturer chooses to apply it to, the label is no guarantee of excellence, or even of any certain brand of cigars, and the publisher is chargeable with facilitating others in making false representations. 7. When the owner of a trade-mark applies for injunction to restrain another from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trade- mark, or in the business connected with it, be himself guilty of any false or misleading representations; for if the plaintiff makes any material false statement in connection with the property he seeks to protect, he loses his right to claim the assistance of a Court of equity. 8. The fact that the plaintiff's marks are themselves a close imitation of those of a third party will be good ground for withholding the aid of a Court of Equity. This is a motion for a preliminary injunction in an action to restrain the defendants from using or causing to be used the name "Henry Lee" upon any labels or advertising-prints offered for sale as such, and from preparing, putting up, selling or offering for sale any labels or prints with these words upon them. Messrs. Briesen cV .Steele, for the plaintiffs. Messrs. Goepel 6° Raegener, for the defendants. Bokkstaver, J.: The plaintiffs are a corporation, and both the plaintiffs and de- fendants are engaged in the lithographing business, and have produced many different designs intended to be used as labels or tickets, to be attached to articles of merchandise. In September, 1881, the plaintiffs, or their predecessors in busi- ness, claim to have registered, under the Act of March 3d, 1881, the words " Henry Lee " as a trade-mark to designate certain labels manufactured or sold by them, and claim that they are entitled to the exclusive use of said name as a trade-mark upon these labels. tlOO COURT OF COMMON PLEAS, NEW YORK. Schumacher & Ettlinger vs. Schwenke, ct al. 176 They also claim that by their care and efforts these labels bearing the name "Henry Lee" have been well and favorably known all over the United States and" in foreign countries. They claim, further, that the defendants have produced and sold labels bear- ing the words " Henry Lee " in violation of their rights. A comparison of the labels manufactured by the plaintiffs and defendants clearly shows that the one is a close imitation of the other, and the defendants do not deny this, although they deny that the labels made by them were ever sold as labels pro- duced by plaintiffs, and aver that they have always sold them as their own labels. The labels of both parties are in two parts, in- tended one for outside and the other for inside use. Plaintiffs' outside label has over the words " Henry Lee " the words "Vuelta Abajo," and beneath " Fabrica de Tabacos Esquisitos Tobacos hechos espresamente para personas de Gusto," and the inside label has on the left side of the words "Henry Lee " the words "Es- quisitos Tabacos hechos," and on the right "para Personas de Gusto." Defendants' outside label has above the words "Henry Lee " the words " Vuelta Abajo," and beneath " Fabrica de Taba- cos de la Vuelta Abajo, Grand General y Diplomator de los Estados Unidos." The inside label has on one side of the words " Henry Lee" "Fabrica de Tabacos," and on the other " De Vuelta Abajo." Both plaintiffs' and defendants' inside labels have a, medallion purporting to be a likeness of the revolutionary hero, Henry Lee, and is ornamented by various medals intended to give the impression that they had been awarded to manufacturers of cigars of superior merit. It is apparent from an inspection of both labels that they are designed to be. used by cigar -box makers and manufacturers of cigars, and that they are valueless for any other purpose and could not be used by or sold to the public generally. Plaintiffs do not seek to stop a cigar dealer or the public from using the name "Henry Lee," but ask that they be protected against interference with their trade by rival manufacturers of labels, and claim that labels are an article of merchandise. This presents the question whether tickets or labels composed and sold by lithographic printers, not to the public generally, but to any JUNE, 1886. HOI IT'S Schumacher & Ettlinger vs. Schwenke, et al. one engaged in a special branch of business, to be used by such persons as labels on goods made by them, can be the subject of a trade-mark. As far as I have been able to ascertain, this precise question has never been decided in this country nor in England. In Scoville v. Toland, et al., (6 West. L. I., 84), it was decided that labels to be used on bottles containing a medicated prepara- tion were not the subject of a copyright, and in the opinion the Court says: "Like other labels, it was intended for no other use than to be pasted on the vials or bottles containing the medicine; as a com- position, distinct from the medicine, it can be of no value. * * * This is not the case with other compositions intended to instruct or amuse the reader. * * * It is the application made of the label, and not its republication, which constitutes the injury. As a label, without the application, it could be of no value to the defendant, as no one will purchase it. * * * In fact, the medicine is so inseparably connected with the label that the lat- ter is only valuable to identify the former." 1. The fact that plaintiffs' label was registered as a trade-mark under the Act of March 3, 1881, only amounts to prima facie evidence of plaiptiffs' right and title to use the words "Henry Lee" as a trade-mark- on labels, and does not, as I conceive, abridge the powers of the State Courts at common law to deter- mine whether or not the words so used on labels can be considered a trade-mark. 5. The plaintiffs' business is manufacturing labels, and the labels so manufactured are the special object of their commerce, and it seems to me that the article of merchandise cannot itself be a trade-mark. 2. A device or design uniformly impressed upon labels manu- factured by plaintiffs, indicating that they were the manufacturers of them, would properly be a trade-mark, but the labels them- selves cannot be. The plaintiffs have, as I understand, manufac- tured and sold many different designs or labels. It cannot be possible that if they were to impress a different name on each variety of labels manufactured by them, they could thereby claim a trade-mark in each variety of label, for if they might have a I 102 COURT OF COMMON PLEAS, NEW YORK. Schumacher & Ettlinger vs. Schwenke, et al. IT'S thousand different trade-marks for their one business of litho- graphing, which, I think, cannot be tolerated. 4. As before rerharked, it is manifest that these labels are de- signed to be used by cigar -box makers and the manufacturers of cigars. When thus used, it is apparent that the labels, including the words "Henry Lee," &c, are intended to convey to the pub- lic the impression that the cigars covered by them are of a par- ticular brand or make — i. e. , the labels then become the brand or pretended trade-mark, not of the lithographer, but of the cigar manufacturer. Now it is impossible that one and the same label can be the trade-mark of both the lithographer printing it and the cigar manufacturer using it. It will be remembered that these labels are not sold to any particular manufacturer, nor are the plain- tiffs careful that they should be used only on cigars of a certain •quality, but are sold to cigar manufacturers generally, and are used by them to cover cigars of any quality or manufacture, and are when thus used the guarantee of nothing, and are in fact, calculated to deceive the public. To uphold the plaintiffs' con- tention would, I think, tend to destroy all value in trade-marks as an authentication of the goods covered by them. 3. The office of a trade-mark is to point out distinctively the origin or ownership of the article to which it is affixed, or on which it is impressed, and to give notice who was the producer — in other words, to authenticate the article to which it is affixed, or on which it is impressed, as the product of the owner of the trade-mark, and is a representative of or substitute for the owner's signature. From the nature of the case, these labels cannot in -any way perform that office. Although this question has not been decided in this country, it was directly passed upon in France in the case of Lalande, et al. v. Appel, et al., (Annales de la 'Prop., &c, tome 5, p. 248). In that case the plaintiffs, who were litho- graphers, complained that the defendants had counterfeited the designs upon tickets or labels intended to be sold to vendors of liquors and cosmetics, to be placed by them upon flasks or bottles. In deciding the case the Court held that the plaintiffs' claim was ill-founded, because the tickets in question were the special ob- JUNE, 1886. 1103 176 • Schumacher & Ettlinger vs. Schwenke, et at. jects of their commerce, and therefore could not be regarded as trade -marks; that the trade-mark regulated by the law of the 25th of June, 1857, is the characteristic sign by means of which the public distinguishes the products of commerce or objects of commerce; that the mark itself cannot be an object of commerce; that by the use which a merchant makes of a ticket in applying to a vase containing the product of his manufacture, it is possi- ble that the ticket may become for him a trade-mark, subject to the fulfilment of all legal formalities, for it may be then, as to him, a sign or distinctive seal of his products, without being the very object of his commerce; but as to the plaintiffs, the tickets can be nothing but the special objects of their industry. 5. I therefore conclude that labels such as these cannot be the subject of a trade-mark. 6. There is a second reason why the present motion should not be granted. Good faith and fairness of dealing is exacted before an action of this description can be maintained. The labels published by the plaintiffs are obviously intended to convey the impression to the public that they cover cigars of a superior manufacture, or from tobacco grown in that part of the Island of Cuba, having the highest reputation for excellence, whereas, in truth and in fact, they sell them to anybody and cover just such ■ cigars as the manufacturer chooses to put in them, and are no guarantee of excellence, or even of any certain brand of cigars, and thus they are chargeable with facilitating others in making false representations. 7. When the owner of a trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trade-mark, or in the business connected with it, be himself guilty of any false or misleading representations; for if the plaintiff makes any material false statement in connec- tion -with the property he seeks to protect he loses, and very justly, his right to claim the assistance of a " Court of Equity.'' {Manhattan Medicine Co. v. Wood, 108 U. S., 218, 224). The rule is well settled that the party claiming protection against the II04 COURT OF COMMON PLEAS, NEW YORK. Schumacher & Ettlinger vs. Schwenke, et al. IT'S fraudulent conduct of another must himself be free from the im- putation of fraud. N. Y. Card Co. v. Union Card Co., (39 Hun, 611), and cases there cited. 8. There is a third reason why this motion should not be granted. A comparison of plaintiffs' label with that used on the brand of cigars known as the " Henry Clay" cigar will make it plain that plaintiffs' label is as close an imitation of the "Henry Clay" label as the defendants' is of plaintiffs'. For these reasons, and others that might be adduced, the mo- tion for an injunction is denied, with ten dollars costs. JULY, 1886. I 105 177 Am. Solid Leather Button Co. vs. Anthony, Co-well & Co. 177 SUPREME COURT, STATE OF RHODE ISLAND. In Equity. American Solid Leather Button Company vs. Anthony, Cowell & Co., et al. Decided 3 July, il Reported 2 New Eng. Rep., 630. "American Solid Leather Button" Case. Where marks— such as arbitrary combinations of figures— indicating style or quality also indicate origin, they may be a subject of trade- mark and their use as such protected. The sight of a familiar symbol inducing one to purchase goods to which the symbol does not properly belong, to the injury of him who devised it to mark his own goods, is the gravamen of the law of trade-marks. A complainant in a suit to restrain the use of a trade-mark, cannot main- tain an exclusive right to the use of certain numbers which had been used by a third person, and become known to the trade as applied to the same styles of goods before complainant used them. Bill in equity for an injunction and account. 70 II06 SUPREME COURT, STATE OF RHODE ISLAND. Am. Solid Leather Button Co. vs. Anthony, Cowell & Co. 1 7 "7 The suit was brought to restrain the use by defendants, in labels on goods manufactured by them, of certain numbers, which had been adopted and used by the complainant in labels on similar goods manufactured by it. The label used by the complainant is as follows: " iooo Solid Leather Upholstery Nails, Patented October 18, 1881. Style No. — . Shade No. — . Manufactured by the American Solid Leather Button Company, Providence, R. I." The label used by the defendants is as follows: " iooo Solid Leather Upholstery Nails. Style No. — -. Shade No. — . Manufactured for Anthony, Cowell & Co., Providence, R. I." The facts are further stated in the opinion. Messrs. W. IV. 6° S. T. Douglas, for complainant. The use of the complainant's numbers, arbitrarily selected, in connection with the name, to indicate the origin of the goods, although such numbers also indicate, without expressing, the style of the goods, makes these numbers, together with the name, a good trade-mark. Lawrence v. Lowell, 129 Mass., 325; Meriden Britannia Co. v. Parker, 39 Conn., 450; Ransome v. £ entail, 3 L. J., {N. £.), Ch., 161; Gillott v. Esterbrook, 48 N. K, 374; Boardman v. Meriden Britannia Co., 35 Conn., 402; Kinney v. Allen, 1 Hughes, 106. See also Shaw Stocking Co. v. Mack, 21 Blatchf., 1. The imitation of the complainant's label, if it be considered that the name and numbers of the complainant cannot be called ' a trade-mark at common law, is a fraud upon the public and calls for the interposition of the Court. Burke v. Cassin, 45 Cal., 467, and cases cited; Edlesten v. Vick, 23 Eng. L. 6* Eq., 51; Alexander v. Morse, 14 R. L., 156. The defendants argue that their labels have not, as a matter of fact, deceived their customers, being accompanied by declara- tions that the goods were not made by the complainant, but this is no defence. Where the Court is of opinion that the use of the mark or device is likely to deceive, it will not require evidence of JULY, 1886. I 107 177 Am. Solid Leather Buttcm Co. vs. Anthony, Cowell & Co. actual deception or of actual fraudulent intent. Davis v. Ken- dall, 2 R. I., 566, approved in Barrows v. Knight, 6 R- I-, 438; Glenny v. Smith, 2 Drew &* Sm., 476; Curtis v. Bryan, 2 Daly, 312. In Filleyv. Fassett, 44 Mo., 168,/. 178, by the Court: "If the name, as used by the defendants, was calculated to mislead, the intention to mislead is to be inferred therefrom;" citing — Fet- .ridge v. Merchant, 4 Abb. Pr., 159; Craw shay v. Thompson, 4 Man. & G., 385. "Nor is it necessary to show thai? any one has in fact been de- ■ceived, or that the party complained of made the goods; " cit- ing — Amoskeag Mfg. Co. v. Spear, 2 Sand/. S. C, 607; Clark v. ■Clark, 25 Barb., 79. "Nor is it necessary to prove intentional fraud. 'If the Court •sees that the complainant's trade-marks are simulated in such a manner as probably to deceive customers or patrons of his trade ■or business, the piracy should be checked at once by injunction.' " Coffeen v. Brunt on, 4 McLean, 516, 519; Partridge ,v. Menck, -2 Barb. C/i., 101. In Coats v. Holbrook, 2 Sandf. Ch., 596, the identical defence which the defendants make here was set up. At page 597 the Court says: "But it is said that upon their sale to the jobber, by whom it was to be again sold to the retailer, the defendants told the jobber that it was an imitation of Coats' thread; in short, that they sold it as a spurious article. But what then? Did they imagine that the jobber would be equally frank and communica- tive to the retail merchants and shop-keepers, and that every one of the latter would carefully inform every customer who bought a spool that the thread was an imitation of Coats' made in New Jersey, and only three cord instead of six? The idea is prepos- terous. Trade-marks, names, labels, etc., are not forged, coun- terfeited or imitated with any such honest design or expecta- tion." The same principles are held .in the French Courts. Codding- ion, Trade- Mark Dig., 461, 462. See also Edelsten v. Edelsten. 1 DeG.,J. & S., 185; Edelsten v. Vick, n Hare, 78. IIOS SUPREME COURT, STATE OF RHODE ISLAND. Am. Solid Leather Button Co. vs. Anthony, Cowell & Co. 177 The degree of imitation need not be such as to deceive an ex- pert or a person comparing the two marks or labels, but only such as would be likely to mislead an ordinary purchaser. Seixo v. Provezende, L. R., i Ch. App. Cas., 192; Lockwood' v. Bostwick, 2 Daly, 521: It is much closer than was shown in Alexander v. Morse, supra. Mr. W. R. Perce, for defendants. The words "1000 Solid Leather Upholstery Nails" are descrip- tive only, and by the well-known rule cannot, therefore, be ex- clusively used by the plaintiff. The words " Patented October 18, 1881 " are not contained in the label used by defendants. The words "Shade No " are not claimed as the plaintiff's mark, but are the well-known trade-mark of a third party. The- words "by the American Solid Leather Button Company" are' not found in the label used by defendants. The words " Provi- dence, R. I.," indicating the place of manufacture are descrip- tive only. The defendants' (Anthony, Cowell & Co's) name and address appear on the label by them used. The only matter, therefore, which is common to both labels and which can possibly be regarded as a trade-mark, is the words "Style No. ." With reference to them the law is well settled. In Corwin v. Daly, 7 Bosw., 222, it was held that no dealer in any commodity has a right to be protected by injunction in the exclusive use simply of a name by which' to designate it, which does not express its origin and ownership, but merely its quality, kind, texture, composition, utility, destined use or class of con- sumers. In Stokes v. Landgraff, 17 Barb., 608, it was decided that no exclusive right to the use of words, marks or devices which do not denote the goods or property or particular place of business of a person, but only the nature, kind or quality of the article in ques- tion in which he deals, can be sustained. In Amoskeag Mfg. Co. v. Spear, 2 Sand/. S., C, 599, it is said that there is no exclusive right in the use of marks, symbols or letters which indicate the appropriate name, mode or process of manufacture, or the peculiar or relative quality of the fabric manu- JULY, 1886. 1 109 1 "7 V Am. Solid Leather Button Co. vs. Anthony, Coivell & Co. factured, as distinguished from those marks which indicate the true origin or ownership. In Filley v. Fassett, ^Mo., 173, the Court holds that the mark must point out the source and origin of the goods, and not be merely descriptive of the style, quality or character of the goods themselves. In Falkinburg v. Lucy, 35 Cal., 52, it is said that the owner of the trade-mark will be protected by the Courts in its exclusive use, but only so far as it serves to indicate origin and ownership of the goods to which it is attached, to the exclusion of such symbols, figures and combinations of words which may be interblended with it, indicating their name, kind or quality. In Boardman v. Meriden Britannia Co., 35 Conn., 402, it was decided that if the numbers are used solely to indicate the differ- ent patterns, styles or sizes, the defendant ought not to be re- strained from their use. In the case at bar there can be no doubt as to the meaning and purpose of the use of the numeral. The words themselves fully state the intent. The number is a style number and nothing else. It is expressly so called. The bill of complaint states that said numbers indicate the style of the goods. The words and numerals •do not indicate origin or ownership of the goods, but simply designate a nail of a peculiar style, pattern, size, color or quality, as distinguished from other nails of other styles, patterns, sizes, colors or qualities. There is no pretence that the style or pattern belongs exclusively to the plaintiff. These words and figures are incapable of exclusive appropriation. Mfg. Co. v. Trainer, 10 1 U. .S'., 51, (Bk. 25, L. Ed., 993); Aiiisworth v> Walmeshy, 35 L. J.. Ch., 352; Cox Am. Trade- Mark Cas., 678; Carmichel v. Latimer, 11 R. L, 395, 407; Candee v. Deere, 54 ///., 439. See also Ferguson v. Davol Mills, 2 Brews., 314; Faber v. Faber, 49 Barb., 357. 2. It is the essence of the wrong in trade-mark cases that the defendant, by means of a simulated trade-mark, is selling his goods as those of the plaintiff's manufacture; and it is only to the ex- tent that this false representation is directly or indirectly made that relief is granted in equity. 1 IIO SUPREME COURT, STATE OF RHOE)E ISLAND. Am. Solid Leather Button Co. vs. Anthony, Cowell & Co. 1 TT Davis v. Kendall, 2 R. I., 566; Osgood v. Allen, i Holmes, 18.5; Barrows v. Knight, 6 R. L, 434; Popham v. Cole, 66 N. Y., 69; Burgess' v. Burgess, 3 DeG., M. cV G., 896; Carmichel v. Latimer, 11 R. I., 407; Singer Mfg. Co. v. Wilson, 24 W. R., 1023; Candee v. Deere, §\IH., 439; Amoskeag Mfg. Co. v. Spear, 2 Sandf. S. C, 599; JV. Haven Rolling Spring Bed Co. v. Barren? 19 Rep., 456; Cope v. Evans, L. R., 18 Eq., 138. See Rep., 456; Cope v. Evans, L. R., 5 Eng. S° I. App., 508; Partridge v~ Menck, 2 Sandf. C/i., 622; Blackwell v. Wright, 73 -A 7 ". C , 310; Rowley v. Houghton, 2 Brews., 303; Swift v. Dey, 4 Robt., 611;. Calladay v. Baird, 4 Phila., 139. If the defendants' nails were not sold as the wares of the plain- tiff, nor went into the general market, nor were ever resold, but the defendants' customers actually knew that the nails were not made by the plaintiff and were not deceived in this respect, the plaintiff has no right to complain. Edelsten v. Ed&lsten, 1 DeG., J. 6*5,, 185; Woo Ham if. Rat- cliff, 1 Hem. cV M., 259, 263; Cope v. Evans, supra. The labels in controversy differ so much that" a person with reasonable care and observation would not be misled by the de- fendants' label into a belief that defendants' goods were made by the plaintiff. Leather Cloth Co. v. American Cloth Co., 11 H. L. Cas., 523;. Davis v. Kendall, 2 R. L., 566; Partridge v. Menck, 2 Sandf Ch., 622. See particularly the report of this case in How. Appl Cas., 553, where the trade-marks are illustrated and compared;. Popham v. Cole, Rowley v. Houghton, Swift v. Dey, Blackwell v~ Wright and Colloday v. Baird, supra. There is nothing in the plaintiff's label to indicate that it is- claimed as a trade-mark, and even if all the preceding points are overruled, the defendants submit that the plaintiff is not entitled to relief, because it has not in any manner notified the defendants, of its claim of trade-mark, although knowing their use of such label, but have allowed the defendants to use the same for a long time, in ignorance of its claim. Such laches defeats the right to an injunction or to an account. JULY, 1886. III1 1 7 7 Am. Solid Leather Button Co. vs. Anthony, Cowell & Co. Beard v. Turner, 13 L. T. N. S., 747; Cox, Am. Trade-Mark Cas., 717; Estcourt v. Estcourt Hop Essence Co., 32 L. T. Rep., 80. In this case the plaintiff delayed bringing his suit for only ten months. Holt v. Mencndez, 23 Fed. Rep., 869; Amoskeag Mfg. Co. v. Garner, 6 Abb. Pr. N. S., 265; Amoskeag Mfg. Co. v. Spear, 2 Sandf. S. C, 599; High, In/., 681. Stiness, J., delivered the opinion of the Court. The complainant is a manufacturer of buttons and nails with solid leather heads. In order to distinguish the different styles which it manufactures, it has assigned certain numerals, arbitra- rily chosen, e. g. 30, 40, 60, 70, in, etc., to designate each style of head, on its advertising cards and packing boxes. The several styles made by the complainant have become associated with and known by these numerals in the trade, and the numerals are commonly made use of in orders and other designations of a style desired to be referred to. The defendants Anthony, Cowell & Co., have procured from other parties, nails of different styles, similar to those made by the complainant, and have designated them by the same numerals adopted by the complainant to designate the corresponding styles of its manufacture; whereupon the complainant, claiming the several numerals adopted by it as its trade-mark, brings this bill for an injunction and account. 1. The first question presented for our decision is, whether the use of an arbitrary combination of figures to designate the styles of goods which a person makes is entitled to protection. The defendants claim that no protection can be given, because such figures, . by denoting the style or quality simply, and not origin of the goods, deceive nobody, and hence the rights of the com- plainant are not infringed. There is some diversity in decisions upon this point, arising mainly from different assumptions of fact by the Courts. Undoubtedly, if it be assumed that a given mark indicates quality only, and not origin, it will follow that pur- chasers of goods so marked have not been mislead thereby into I 1 12 SUPREME COURT, STATE OF RHODE ISLAND. Am. Solid Leather Button Co. vs. Anthony, Cowell & Co. 177 the supposition that - they were buying complainant's goods, and hence he would show no case for relief. All of the cases cited by the defendants in support of their claim that numbers indicating style or quality cannot be protected are based upon such an as' sumption. Where the premises are true, no fault can be found with the conclusion. But it by no means follows, as a rule of law., that marks indicating style or quality may not also indicate origin, and thus be a subject of trade-mark. A person has the right to affix to his goods any device, symbol or name, which he may in- vent, to distinguish such goods from those made by other people. When the symbol becomes known in connection with his name, it serves as a sign and pledge of the origin of the goods. People do not often stop to read all that may be printed on a label ; nor do they always know the changes that are made in firms or busi- ness names. 2. Hence it is that the sight of a familar symbol inducing one to purchase goods to which the symbol does not properly belong, to the injury of him who devised it to mark his own goods, is the gravamen of the law of trade-marks. Within limits, which are well defined, a combination of letters or figures, arranged for convenience or to attract attention, may serve the purpose of a trade-mark, as well as a device invented or arbitrarily selected. So a person may have different symbols for different grades of goods, which in the same way, will indicate both quality and origin, with respect to the goods so marked. A manufacturer may adopt such symbols, not simply to mark a style or quality, but his style and his quality as well. He is en- titled to have his style and his quality protected from misrepre- sentation, and to have the benefit of any favorable reputation they may have gained. The doctrine applicable to cases of this character is clearly set ■ forth in Shaw Stocking Co. v. Mack, 2t Blatchf., i, 6, as follows: "It is very clear that no manufacturer would have the right exclusively to appropriate the figures i, 2, 3, and 4, or the letters A. B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively. Why? Because the JULY, 1886. 1113' 177 Am. Solid Leather Button Co. vs. Antjiony, Co-well & Co. general signification and common use of these letters and figures are such that no man is permitted to assign a personal and private meaning to that which has, by long usage and universal accepta- tion, acquired a public and generic meaning. It is equally clear, however, that if, for a long period of time, he had used the same figures in combination, as '3214' to distinguish his own goods from those of others, so that the public had come to know them by these numerals, he would be protected. The Courts of last resort in Connecticut, in Masschusetts and in New York have distinctly held this doctrine, Boardman v. Meriden Britannia Co. 35 Conn., 402; Lawrence Co. v. Lowell Mills, 129 Mass., 325 ; Gillott v. Esterbrook, 48 N. Y., 374, the numerals sustained being respectively, '2340,' '523,' and '303.'" In this case the numerals "830" had been adopted to mark a style of hose made by the complainant, viz : a mottled drab, and although the label used by the defendants bore their own and not the complainant's name, an injunction was granted against their use of the numerals, upon the ground " that the complainant had used these numerals long enough to convey to any one versed in the nomenclature of the trade a precise understanding of what goods were intended when the numerals were used alone discon- nected from any intrinsic information." The defendants in the case last quoted, as in the case before us, were dealers and not manufacturers. In Mfg. Co. v. Trainer, 101 U. S., 51, (Bk. 25, L. Ed., 993), strongly relied upon by the defendants, the Court based its de- cision upon the fact that the letters "A. C. A." denoted quality simply, and not origin. Judge Clifford dissented from this con- clusion of facts. If, as stated in that case, indication of origin is "entirely overborne by the patent fact that the label discloses the name in full of the manufacturers," we do not see why any trade-mark, coupled with the the name of the real macufacturers, might not be used; for, according to the language of the opinion, the indication of origin by the use of the trade-mark would be "overborne" by the discloser of the maker's name. We do not think the Court meant lhat the case should go to this extent. It simply found that the letters in that case did not indicate origin, and hence dismissed the bill. I 1 14 SUPREME COURT, STATE OF RHODE ISLAND.' Am. Solid Leather Button Co. vs. Anthony, Cowell & Co. 177 Applying the rule which we have here recognized, we come to the questions of fact in this case. It appears from the testimony that the numbers "60" and "70" were used by T. F. N. Finch, and had become known to the trade as applied to the same styles, before the complainant used them. If this be so, the complain- ant cannot appropriate these numbers to its exclusive use. The only other numbers proved to have been used by the defendants, Anthony, Cowell & Co. are "30" and "in." We think these numbers indicate origin as well as style. The fact that orders for goods refer to numbers, which have become associated with a particular style of nail only by the complainant's association of the number with the style, raises a natural inference that persons ordering by that number suppose they are ordering goods of a style made by the complainant. We therefore think that in the use of these numbers as against the defendants, Anthony, Cowell & Co., the complainant is entitled to protection according to the prayer of the bill. 1 As to the other defendants, in the absence of testimony to show their use of any numbers claimed by the com- plainant other than " 60 " and " 70," this bill must be dismissed. JULY, 1886. in; 17S Portuondo vs. Monne, et a!. 178 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Portuondo VS. Monne, and others. Decided 14 July, 1886. Reported 28 Federal Rep., 16. TRADE-MARK— PRELIMINARY INJUNCTION. Preliminary injunction denied where affidavits of defendants make it doubtful whether the plaintiff has so had exclusive use of symbols sought to be restrained, as to make their use by defendants likely to- pass their wares as his. Franklin Swayne, for orator. Wingate & Cullen, for defendants. Wheeler, J. • The plaintiff shows that he has used the symbols mentioned in his bill of complaint to designate cigars made by him, and that the defendants make use of the same. But the affidavits of de- fendants show that the same symbols were used by others upon IIl6 U. S. C. C. SOUTH. DIST. OF NEW YORK. Porluondo vs. Monne, el al. XT' 8 cigar boxes before, or about the time, the plaintiff began to use them. These affidavits make it doubtful whether the plaintiff has so had the exclusive use of the symbols that the use of them by the defendants serves to pass their cigars as those of the plain- tiff. This question cannot safely be determined upon the affi- davits, but should be established by evidence regularly taken in due course. The plaintiff does not appear to be entitled to a preliminary injunction. Motion denied. JULY, 1886. II I 7 IT'S Lorillard, et al. vs. Pride. 179 CIRQUIT COURT UNITED STATES, NORTHERN DISTRICT OF ILLINOIS. In Equity. Lorillard, et al. vs. Pride. Decided 26 July, 1886. Reported 36 O. G., 11 50. "Tin Tag" Case. 1. Trade-Marks as Affected by Common Rights.— Tin being one of the common metals 'in use by the public for a very large variety of pur- poses, and being easily stamped or impressed with letters, figures or characters, or cut into various shapes, and taking readily different colors or shades besides its natural metallic luster, and like paper, becoming readily the vehicle or material for receiving whatever im- pression or color may be stamped upon it. Held: That the attempt of complainants to appropriate tin to their exclusive use in marking plug-tobacco, without regard to its color, shape or the characters or letters it bears, is not within the scope and purpose of the law of trade-marks. 2. Trade-Marks not Available to Perpetuate Rights Secured by Patents.— Complainants having attempted to secure to themselves by IIl8 U. S. C. C. NORTH. DIST. OF ILLINOIS. Lorillard, et al. vs. Pride. IT'S means of a patent, the exclusive use of tin as a badge for their plug- tobacco, and their goods having acquired the name of "Tin Tag" goods while they were acting under their patent. Held: That when the patent was declared void the right to so indicate or mark such goods became public, and complainants cannot perpetuate or continue this right by claiming it as a trade-mark. '3. An Arbitrary Term Distinguished from the thing Signified Thereby.— The use of arbitrary terms, such as "Tin Tag" or "Wood Tag," by a manufacturer to indicate goods produced or sold by him, might be allowed if the person so using the name or words branded them upon his goods, or in any way gave the goods the name; but that would give no right to the exclusive use of the tin or -wood as a material to designate the goods. Messrs. Banning &° Banning, Messrs. Tillotson & Kent, and Mr. Rowland Cox, for the complainants. Mr. H. S. Oakley, Messrs. S. A. & R. H. Duncan, and Mr: B. F. Thurston, for the defendant. Blodgett, J.: The bill in this case avers that complainants are the most ex- tensive manufacturers of tobacco in the United States; that they have been engaged in said business for many years; that their goods are sold throughout the United States and in foreign coun- tries; that during the year 1874 they adopted as a trade-mark for their plug-tobacco a tag or piece of tin, and called their tobacco "Tin Tag Tobacco;" and that they have been successful in ■establishing the tin tag as a badge of identification or mark of their goods, and the term "Tin Tag Tobacco" is a designation by which their goods bearing that mark are bought and sold; that the adoption of the tin tag as a trade-mark for their goods was original with them; that prior to such adoption it had never been used as a mark for plug-tobacco; that they have now, and have had since the year 1874, the right to its exclusive use as a trade- mark for their plug-tobacco; that the same is now, and has been since 1874, known to the public as their trade-mark, and when- ever and wherever a piece of tin is seen affixed to a plug of to- bacco, it means the tobacco of complainants; that the use of their trade-mark — to wit, a piece or tag of tin — has been continu- JULY, 1886. 1 1 19 179 Lorillard, et al. vs. Pride. ous from the date of its adoption as aforesaid. Complainants aver that they have the exclusive right to employ a tin tag, what- ever its appearance, color, or shape, and state that they bring this bill for the purpose of establishing and maintaining their exclu- sive right to the use of the piece of tin of any shape as a trade- mark for plug-tobacco, and to prevent the use upon plug-tobacco not made by them of pieces of tin which would cause said to- bacco to be sold in the market as "Tin Tag Tobacco" or "Tin Tag Plug." The bill further charges that the defendant, in fraud of com- plainants' right, has, since the adoption of complainants' said trade-mark, sold large numbers of plugs or pieces of chewing tobacco not made by complainants, to which have been affixed pieces of tin of various shapes — such as star-shaped or circular and rectangular pieces of tin — and that by so placing on the market and selling plug-tobacco with pieces of tin affixed thereto defendant has fraudulently violated and infringed upon complain- ants' trade-mark, intending by so marking such plug-tobacco with a piece of tin to make the public believe that the tobacco so sold by him was the manufacture of complainants. The bill prays an accounting by the defendant of the profits made by him upon the sale of tobacco marked with pieces of tin or tin tags, and that the defendant be forever enjoined and restrained from in any manner using the tin tags in connection with the sale of plug-tobacco not made by complainants to be sold as and for "Tin Tag Tobacco." The answer of the defendant in substance admits that complain- ants in 1874, and from that time to the commencement of the suit, had practiced the marking of their, plug-tobacco, but avers that said tags carried also letters or marks impressed or embossed upon the same — such as "Lorillard & Co.," "Climax," "Bul- lion," &c. — and that it is by means of these names that com- plainants' tobacco is known and sold in the market, and not by the exclusive and single desigation of "Tin Tag Tobacco," and that the piece of tin alone does not constitute complainants' trade-mark or designate their goods. II20 U. S. C. C. NORTH. DIST. OF ILLINOIS. Lorillard, et al. vs. Pride. 179 The answer further denies that complainants have, or ever had, the exclusive right to the use of a piece of tin irrespective of its appearance, color, or shape as a trade-mark or badge of identifi- cation upon their tobacco, and charges that long prior to the adoption by complainants of their tin tags, Neudecker Bros.-, of Richmond, Virginia, had adopted a piece of tin ca'rrying the words "Patent Process," as a mark to distinguish it as a peculiar kind of plug tobacco manufactured by them. 'Defendant further charges that the, tobacco sold by him was manufactured by the firm of Liggett & Myers, of St. Louis, Mis- souri, and bore upon its tin tags evidence that it was so manufac- tured by Liggett & Myers, and that it in no way deceived, or tended to deceive, the public as to the origin or manufacture of said tobacco, but that, on the contrary, the purchasers and the public well knew that said firm was in the habit of stamping or making their tobacco with tin tags of peculiar shape, indicating that they were the manufacturers thereof. It appears from the proof that sometime in the year 1874, Mr. Charles Siedler, one of the complainants' firm, invented a mode of marking or distinguishing plug-tobacco by embedding into the surface of the plugs a metal tag or label, and that he obtained a patent for said process on or about January 22, 1875; that this patent became the exclusive property of the complainants, and for several years the complainants insisted upon the validity of this patent, and asserted their exclusive right by virtue of this patent to mark their tobacco with tin tags, and thereby indicate its origin, and that the use of the tin tag and the designation of complainants' goods by the words "Tin Tag" originated from the attempt of complainants to enforce their exclusive right to the use of a metal tag under this patent, and not to the adop- tion of tin or the words " Tin Tag " as a trade-mark. It further appears that in June, 1876, complainants registered in the Office of the Commissioner of Patents a trade-mark con- sisting of a bright metallic tag, preferably of a circular form, firmly affixed to one of the sides or faces of plugs of tobacco, and that in September, 1876, the firm of Liggett .& Myers, of St. Louis, whose tobacco is sold by the defendant, also registered in JJ^LY, 1886. 1 12 I l^S Lorillaid, et al. vs. Pride. the Patent Office of the United States a trade-mark for plug-to- bacco, consisting of a bright metallic tag or label of circular out- line, having a lustrous or metallic appearance, and provided at its centre with a circular aperture; and that they also at the same time registered as a trade-mark for plug tobacco a bright metallic tag or label in the form of a five-pointed star, with a cir- cular aperture at its centre; that said Liggett & Myers, also, in November, 1876, registered in the Patent Office, as a trade-mark for plug tobacco, a bright metallic tag with rectangular outline and a rectangular opening at its centre, and also that in Decem- ber, 1876, complainants registered as trade-marks for plug-to- bacco the fanciful or arbitrary words "Tin Tag Plug," and also the words " Tin Tag Tobacco." It also appears that from the time complainants began to mark their tobacco plugs with tin tags, under and in pursuance of the Siedler patent, various other manufacturers, including Liggett & Myers, commenced the marking or labeling of their plug-tobacco with tin tags of various forms, and that there is now, and has been for many years, upon the market brands of tobacco made by different manufacturers, marked or indicated by tin tags of very many different forms and colors, each of these colors or forms usually indicating the name of the manufacturer. It will thus be seen that complainants' claim to the exclusive right of using tin as a mark or indicia of their goods has not been acquiesced in by the public, but that other manufacturers have used tin in some form for the purpose of indicating tobacco of their manufacture. 1 . The bill asserts broadly the complainants' exclusive right to employ a tin tag, whatever its appearance, color, or shape, as a trade-mark for their tobacco, and insists that no other person has a right to use tin for the purpose of marking their tobacco, and the case has been argued by complainants' counsel, and the proofs taken solely for the purpose of asserting before the Court this right so put forward in the bill. I think there can be no doubt from the proof that the com- plainants were the first to attempt the use of tin as a special mark to indicate and designate their manufactured goods; and I think 7i I 122 U. S. C. C. NORTH. DIST. OF ILLINOIS. Lorillard, et al. vs. Pride. 179 there can be no doubt that from the time they began to mark their goods with tin tags in pursuance of the Siedler patent, their goods began to be known, and finally came to be widely known, as " Tin Tag Tobacco;" and did the case turn upon the right of the complainants to the use of the arbitrary words ' ' Tin Tag ' ' or < ' Tin Tag Tobacco, ' ' as required in some of their registered trade-marks, there would be but little difficulty perhaps in the case, because the popular designation which their tobacco ob- tained by reason of its bearing a tin tag upon it in pursuance of the patent was this short and expressive description " Tin Tag." But the frame of this bill is that no person other than com- plainants has a right to use upon plug-tobacco a piece of tin of any shape or color, or with any legend or mark or sign upon it, as a manufacturer's or dealer's mark or designation of the origin of the goods. i. Tin is one of the common metals in use by the public for a . very large variety of purposes; it is easily stamped or impressed with letters, figures, or characters, or cut into various shapes, and takes readily different colors or shades besides its natural metal- lic luster, and, like paper, becomes the vehicle or material for receiving whatever impression or color may be stamped upon it. It seems to me it would be as reasonable to assume that the com- plainants could have adopted paper, or wood, or a piece of cloth or leather, as a badge or indicia of their goods, as that they could have -taken a piece of tin. That they had a right to appropriate to their exclusive use a piece of tin without regard to its color, shape, or the characters or letters it bears, does not seem to me to be within the scope and purpose of the law of the trade-marks. 2. It also appears that complainants' first effort was to secure to themselves the exclusive right of tin as a badge for their goods by means of the Siedler patent, and that their goods acquired the name of "Tin Tag" goods, while they were acting under their patent, and that it was not until after their patent had been held void, that they fell back upon their right to use tin as a trade- mark. Having adopted this use of tin and given to their goods the name of "Tin Tag Tobacco," while they were claiming the rights given them by the patent, it seems to me that they have no right now to perpetuate a monopoly which the Courts decided JULY, 1886. I 123 IT'S Lorillard, et al. vs. Pride. they could not have by falling back upon the popular name given their goods in pursuance of the patent. If their goods properly became known and designated in the market as "Tin Tag" goods, by virtue of their marking them or tagging them in pur- suance of their patent, the right to so indicate or mark the goods became public when the patent expired or was declared void, and they cannot perpetuate or continue this right by claiming it as a trade-mark. 3. I have no doubt from the proof in this case that the desig- nation of plug-tobacco as "Tin Tag" or "Tin Tag Tobacco" was first applied to tobacco manufactured by complainants, but com- plainants did not brand or mark their goods with the words "Tin Tag," but the term or name of "Tin Tag" was popularly applied to the goods by dealers and buyers by reason of the tin tag put on them under the claims of the patent. If complainants had from the outset marked their goods with this fanciful or arbitrary designation of "Tin Tag Plug" or "Tin Tag Tobacco" as a trade-mark, their exclusive right to its use might be sustained; but complainants did not brand or mark these words upon their goods. The public gave the name of " Tin Tag " to the goods because the plugs had tin tags affixed to them. It also appears from the proofs that the firm of Liggett & Myers, whose agent defendant is, have never marked their goods with the words "Tin Tag." Liggett & Meyers and other manu- facturers have also, from the time complainants' goods first" began to be known to the trade by the name "Tin Tag," denied and resisted complainants' exclusive right to the use of a piece of tin without regard to its color, shape, or devices, as a trade-mark, and have persistently marked their own goods with pieces of tin of various shapes, colors, and letterings; and, naturally enough, all goods so marked with tin labels or tags are designated in the trade by the term "Tin Tag" goods. I think it may be taken as ■established by the proof that the words "Tin Tag" do not now •designate complainants' goods or goods manufactured by com- plainants upon the market or to the trade, and that plug-tobacco made by other manufacturers is now designated and sold by the name of "Tin Tag" tobacco, although not labeled or branded ■with such name, because they bear a tin label or tag of some form. 1 124 U. S. C. C. NORTH. DIST. OF ILLINOIS. Lorillard, et al. vs. Pride. IT'S But if the public has been imposed upon, or the goods of others have been sold as the goods of complainants to the damage of complainants, it is because complainants were unfortunate in the selection of a designation for their goods, and made their claim to the use of tin as their trade-mark more broadly than the law- will permit, and if goods of other manufacturers are now known and sold by the name of "Tin Tag," it is not because they are so branded, named, or designated, but as a short and popular mode of describing all goods marked with tin tags. If other dealers have the right to use tin as a material from which to make a tag or label, they cannot be held to violate complainants' rights- because the public designate all goods marked with a tin label as "Tin Tag" goods. 3. If complainants had put upon the market goods with paper, wood, or leather tags, and such goods had come to be popularly known and designated in the trade as "Paper Tag," "Wood Tag," or "Leather Tag," complainants could not by such use acquire the right to prevent all other persons from putting a paper, wooden or leather tag upon similar goods, because the use of such materials is a right common to all and cannot be exclu- sively appropriated by anyone. The use of arbitrary terms — such as "Tin Tag" or "Wood Tag" — by a manufacturer to indicate goods produced or sold by him might be allowed if the person so using the name or words branded them upon his goods, or in any way gave the goods the name; but that would give no right to the exclusive use of the tin or wood as a material to designate the. goods. A person may appropriate any word, figure, or emblem as a trade-mark; but that does not give an exclusive right to the use of the well-known material substances upon which the word, figure, or emblem may be impressed or engraved. I am therefore of opinion; that this bill should be dismissed for want of equity; but this disposition of the case is made without prejudice to the complainants' right to sue upon any of its specific trade-marks depending upon the coloring, design, shape, or let- tering on the tin label. OCTOBER, 1886. 1 125 180 Fay's Administrators vs. Fay. 180 COURT OF CHANCERY, NEW JERSEY. Ix Equity. Fay's Administrators vs. Fay. Decided 12 October, 1886. Reported 4 Central Rep., 241. "Fay's Patent Roofing" Case. The use of words (here, " patent roofing ") merely designating the kind of business one is engaged in, cannot be protected as a trade-mark. To recover for the " good will " of a business transmitted from one per- son to another it must appear affirmatively that there was a "good will" connected with the business, of some value in itself. Proof merely that the business is profitable is not enough. Administrators cannot maintain a bill to have their co-administrator account for the " good will " of their intestate's business. continued by their co-administrator with their consent, all the administrators being equally in the wrong for not turning such good will into cash as an asset of the estate. Payment for the " good will " of s. business must be claimed at the time of the transfer of the business. 1 126 COURT OF .CHANCERY, NEW JERSEY. Fay's Administrators vs. Fay. 1 80 On bill for relief. Dismissal advised. The facts are stated in the conclusions of the Vice-Chancellor.. Mr. J. J. Crandall, for complainants. ' Mr. B. D. Shreve, for defendant. Bird, V. C, filed the following conclusions: This bill is filed by two of three administrators against the- third, to compel him to account for the profits of business which they allege he carried on in continuation of the same as carried on by the intestate in his life-time under a patent right called "patent roofing." Briefly, the insistment is that the intestate, by means of his patent, carried on and established a profitable busi- ness under such patent and by the name of "patent roofing," which name, from long use, became a trade-mark of great value;, and that the defendant having appropriated it to his own use, by- advertising " patent roofing " and using bill-heads with the same phrase on, became responsible to the complainants as administra- tors for the value of such business conducted under this so-called trade-mark, "patent roofing." First, it is proved to a demonstration that the alleged patent was worthless, so that there does not seem to be the slightest foun- dation for a claim on that score. i. Second, can a valuable right, such as the law protects, arise to- any citizens under such circumstances? Was the phrase "patent roofing" adopted as a trade-mark? Did the intestate adopt that sign in order to distinguish his business from all his fellows in the market? Or did he use that phrase as expressive of his rights under the license issued by the Government ? I am constrained to believe the latter. I can pick up no bit of evidence that he intended to use the phrase in the former sense and to protect it as a trade-mark. To my mind the testimony is most clear that the intestate used the phrase, << patent roofing," not so much for the purpose of carrying on business under that mark, but simply to designate to the world the kind of business he was engaged in. It seems to me that this was done in the same sense in which OCTOBER, 1886. I 127 ISO Kay's Administrators vs. Fay. hundreds of other dealers make known the special branch of busi- ness they may be engaged in. Under this category come dealers in boots and shoes, in dry goods, and groceries, and the like. It strikes me that if the bill in this case can be sustained, then every person beginning either of the above vocations in dangerous' proximity to one already in the field, could be pro- ceeded against. The law does not foster and protect monopolies in trade on any such general principles. 2. Third: but it is said by the complainants that the intestate, in his life-time and at the time of his death, enjoyed what is termed a "good-will," in the legal sense and that it was transmitted to them as his representatives. That the good : will contemplated in the law is transmitted thus I have no doubt. It is a subject of barter as any other right or thing is. But the good-will must be shown fo have some value in that sense, as distinguished from other dealers. Nothing in this direction has been presented. It does not appear that there was anything so special about the busi- ness or the mode of conducting it, or the place, as to give it pecu- liar prominence and profit in the estimation of business men, or to secure to the owner advantages above all others which the law ought to protect him in. It seems to me that it would be quite dangerous for the Courts to hold that every man who has a voca- tion has a good-will in connection therewith which the law sus- tains ; hence, I conclude that before the Courts can aid in such cases it must appear affirmatively that there is a good-will of some value, independent cf every other consideration. The complain- ants urge that they have shown that this business was profitable to the intestate in his life-time ; but this is so far successfully assailed as to render their position too uncertain to found a decree upon. But they say the same business was continued by them for several months after the death of the intestate, at a profit of Si 00 per month ; and this they press as the true standard of value. Every- one will see that the greatest injustice might be committed by basing a decree upon the many contingencies arising or inter- vening in every such case; for example, the condition of the market, the activity of business generally, the skill or industry of the managers and the like. 1 128 COURT OF CHANCERY, NFW JERSEY. Fay's Administrators vs. Fay. 1 80 3. Fourth, if the complainants' showing be sound, then instead of charging their co-administrator with the estimated value of the good-will, I would charge them with great neglect of duty in not selling such good-will, as was most plainly their duty in the very beginning, rather than carry on a venture at the risk of loss. With this neglect upon them, they are before the Court without any claims upon its favor, unless : Fifth, it is because their co -administrator is the defendant, and the person charged. Considering that when the Court finds both parties in the wrong it leaves them there and will aid neither, the fact that the co-administrator now has the trade and is carrying on the business will not justify them in filing their bill. All three are alike accountable to the estate. All were alike bound to turn this good-will into cash and available asset, if anyone could be found to pay cash for it. Sixth, I cannot conclude that the defendant is liable under the circum'stances, if I am in error in all of the foregoing conclusions. The complainants and defendant, as administrators, carried on the business of selling patent roofing for the estate, at the same place where the intestate had, from the month of May until Octo- ber, when all parties interested agreed to sell all the office furni- ture and the machine, which it is claimed was patented, to the defendant for $50, and to rent the establishment to him for $10 per month. 4. If there existedany such thing as good -will, it passed by fair implication, to the defendant. If it did not pass it still subsists or exists, and they have the right of power and it is their duty to sell it for the benefit of the estate. They had no right to make the sale of the office furniture to the defendant and allow him to proceed, under their own eyes, with the business until it^has become of some value, and now to come to this Court and ask for him to account. 4. If they intended to make this claim, they should have done so at once, hot allowing him to proceed as if by plain right. I will advise that the bill be dismissed, with costs. OCTOBER, 1886. 1 129 181 Symonds vs. Greene, et al. 181 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Symonds vs. Greene, and others. Decided 15 October, 1886. Reported 28 Federal Rep., 834. "Eureka Packing" Case. 1. Trade-Mark— Infringement— Preliminary Injunction— "Eureka" Former Decrees. — A preliminary injunction should be granted to protect the use of the word "Eureka," used by plaintiff to designate a kind of steam-packing made by him, upon a showing that the plaintiff had used the name since' 1875, although another firm used it to a limited extent for another kind of packing from 1872 to 1874, especially when plaintiff has had two decrees establishing his right to the name as a trade-mark in the locality where the former use thereof occurred. ■2. United States Circuit Court — Jurisdiction — Amount in Dispute Infringement of Trade-Mark — Profits. — In a suit to restrain the infringement of a trade-mark, the amount in dispute, as determining the jurisdiction, does not depend ou the profits sought to be recovered. Motion for preliminary injunction to restrain the use of the "word "Eureka." I 130 U.. S. C. C. SOUTH. DIST. OF NEW YORK. Symonds vs. Greene, et a/. 181 Sanford H. Steele, for plaintiff. IV. H. L. Lee, for defendants. Wheeler, J.: 1. This is a motion for a preliminary injunction to restrain the use of the word "Eureka," in trade, in connection with steam and hydraulic packing. There is no question but that the orator commenced using that name for packing made by him in 1875, and has continued that use since that time, nor but that the defen- dants use that name in connection with that kind of packing, not of the orator's make in trade; nor but that a firm known as Sell- ers Bros, gave that name to a kind of steam-packing patented by William Beschke in 1872, at Philadelphia, and used it in connec- tion with that packing until early in 1874; nor but that the pro- fits on the sales of defendants are much less than $500. The defendants insist that the motion should be denied for want of jurisdiction of the cause in this Court; because of the use of the name by Sellers Bros.; and because the name indicates a class of those goods, instead of representing them to be the orator's. 2. As jurisdiction is not given to this Court in this class of cases, except where the matter in dispute exceeds the sum of $500, there would be difficulty in maintaining the jurisdiction if the profits to be recovered were the measures of the orator's rights involved; but that is not so understood. An injunction may be of much greater value to the orator than any amount he may show himself entitled to, and it cannot be said now that such value may not exceed the limit required. The use of that name by Sellers Bros, was so long ago, and so limited, that it cannot fairly be considered to now have any effect upon the indication by it of source of the goods to which it has forso many years since been applied. When the orator first began to use it, it might have indicated that the goods were Sellers Bros., and might not, but now it would not indicate to any one in the trade that the goods were Sellers Bros., nor would the fact of their former use of it now confuse its signification. It is not applied to the kind which Beschke patented, — to indicate that OCTOBER, 1886. I 131 181 Symonds vs. Greene, et al. kind of goods, — and does not appear to be a name which any class of goods has acquired, and does not appear to be the trade name of the plaintiff's goods. Still, if the plaintiff adopted the name on account of value which it had acquired from its use by- Sellers Bros., he would not appear to have any just right to it now which a Court of equity ought to protect. But Sellers Bros, terminated their contract with the patentee apparently on account of its unprofitableness. The plaintiff did not take up that man- ufacture, but commenced making a different kind, and there is not enough in the case to show that he appropriated the name wrongfully when he took it. The plaintiff has had two decrees in the Courts of Pennsylvania establishing his right to this name as a trade-mark, as against others, for his packing; and these cases were instituted at Phila- delphia, where that use of the name by Sellers Bros, was princi- pally had, and where the defence could have been made if avail- able. On the whole case as it now stands, the orator appears to be entitled to the injunction asked. Motion granted. 1132 U. S. C. C. SOUTH. DIST. OF NEW YORK. Estes, et al. vs. Leslie, et al. 182 182 CIRCUIT COURT UNITED STATES, SOUTHERN DISTRICT OF NEW YORK. In Equity. Estes, and others, vs. Leslie, and others. Decided 24 November, 1886. Reported 29 Federal Rep., 91. Chatter-box vs. Chatter-book. TRADE-MARKS— INFRINGEMENT— "CHATTERBOOK"— " CHATTERBOX." The name "Chatter-book," printed upon the cover of the defendants' books of the juvenile character of the general appearance of the complain- ants' books, being in the opinion of the Court an imitation of the name "Chatter-box," which by association, when used upon books of a juve- nile character, points "distinctly to the origin or ownership" of the books to which it is applied, an injunction pendente lite is granted against its use. Motion for Preliirjinary Injunction. G. G. Frelinghuysen, for complainants. Fullerton 6° Rushmore, for defendants. NOVEMBER, l886. II33 X82 Estes, et al. vs. Leslie, et al. Shipman, J.: The name "Chatter-book," as printed upon the cover of the defendants' books, is in my opinion, an imitation of the name "Chatter-box," which, by association, when used upon books of a juvenile character, points "distinctively to the origin or owner- ship" of the books to which it is applied and used by the defend- ants, of the name "Chatter-box" upon the books which are repre- sented by the exhibits in the case, the same being books of a juvenile character, of the general appearance, style, and manner of cover of complainants' books, should be enjoined pendente lite. DIGEST. Numbers refer to paragraph, case and page. Abandonment. Permission to one who is merely a dealer to place his name on articles bearing, the trade-mark of the manufacturer, especially if such permis- sion was in accordance with the custom of the trade, is no indication of an abandonment of the trade-mark by the manufacturer. 4 — 33 — 201-203. A trade-mark consisting of a word and symbol arbitrarily assumed, may be lost by non-use by its owners, especially if the disuse continues as long as eight years. 6 — 10 — 51. A person cannot appropriate a trade-mark belonging to another without his consent and afterward acquire a good title by the abandonment thereof by the first proprietor, but if the trade-mark has been long abandoned and disused by~one party, another may by adoption and use acquire property rights in it. 2 — 162 — 1047. The right to use ^ trade-mark is forfeited by non-user for a period of eight years, and cannot be resumed in prejudice of one who had used it exclusively during the period of abandonment. 3 — to — 48-50. The plaintiff having acquiesced for a long time in the manufacture and sale by defendant, of cooking-stoves containing certain improvements patented by plaintiff, and to which the name " Charter Oak " had been applied as a trade-mark, and the patent having expired, defendant cannot be prevented from calling such stoves by the name of " Charter Oak," so long as he does not represent them as being made by the plaintiff, or induce others to believe that they are made by the plaintiff. 1 — 23 — 122. Abandonment of a trade-mark is not made out by showing numerous in- fringements in which the owners of such trade-mark have not acqui- esced. 1 — 30 — 174. Property in a trade-mark may be abandoned and thereby lost, but a com- plaint for infringement, which shows non-user for a year, does not disclose an intention to abandon; and without such intention there is no abandonment by mere non-user. Such non-user might possibly imply a gratuitous license to others to use the mark for the time being, and thereby preclude the recovery of damages for the time; but this license is l-evocable, and does not preclude the remedy by injunction for the future. 3 — 91 — 572. See also, 1 — 1S1 — 1130. 1 136 DIGEST. Accounting. K., who was engaged largely in the business of packing blues, on his own account and for others in the trade, put up the blues covered by the infringing trade-mark for the firm of B. & Co., who sold them, paying K. for the work and labor of packing them. K. was adjudged an infringer, an injunction issued against him, and the decree directed an accounting. On motion to strike from the decree the clauses directing an accounting, Held; That the complainant was entitled to an accounting to enable him to ascertain what profits were made by K. by his work and labor, and what damages resulted therefrom. 1 — 90 — 565. Administrators. Administrators cannot maintain a bill to have their co-administrator ac- count for the "good will" of their intestate's business continued by their co-administrator with their consent, all the administrators, being equally in the wrong for not turning such good will into cash as an asset of the estate. 3 — 180 — 1128. Albany Beef. The fact that the applicant has devised for the first time a practicable method of canning sturgeon would not entitle him to the exclusive use of the words "Albany Beef," as a trade-mark for such canned stur- geon, it appearing that such words have gone into use as a name- for sturgeon. 1 — III — 723. Affidavits. 4— 56— 3S 6 - Aliens. The fact that one is an alien does not affect his right of property in a trade- mark; but that fact is a necessary allegation to establish the requisite diversity of citizenship to confer jurisdiction upon a Federal Court. The Acts of Congress fortify the common law right to a trade-mark by conferring a statutory title upon the owner, but ''property in trade- marks does not derive its existence from an Act of Congress." 100 U. S., 82. By the express terms of section 10 of the present Act of Congress the common law right in trade-marks is preserved intact. 1— 113— 732. Amendment. In a meritorious cause of action, properly brought in the firm-name for violation of firm-rights, leave will be given before final decree, to join a member of the firm who had been omitted as a party to the suit. 1 — 9—32-35-37. DIGEST. Answer. * ii37 The former practice of the Courts of Chancery in England of dissolving an injunction upon the filing of an answer denying the equity of the bill, was abolished by the Statute 15 and 16 Vict., ck. 86, sec. 59, which enacted, that thereafter the answer should be regarded merely as an affidavit, and that affidavits may be recorded and read in opposition thereto. 6 — 70 — 425. It is the settled doctrine of the Courts of England, as well as America, that a special injunction will be dissolved upon the coming in of an answer or affidavits denying the equities of the bill. 4 — 67 — 408. Appeal. An appeal lies from an order of Court which so modifies and changes an injunction, as to effectually extinguish it to the extent of its opera- tion. 1 — 169 — 1073. Apollinaris. The use, on labels and bottles, of the word Apollinis, in connection with the representation of a bow and arrow or anchor, was restrained by preliminary injunction, on account of the similarity between them and the word Apollinaris, and the representation of an anchor, as before used by the plaintiff, as being calculated and designed to induce the supposition, by users and dealers, that the waters of the defendant, so marked, were the waters of the plaintiff; but the plaintiff was ordered to give a bond to pay all damages to the defendant, if it should be finally determined that the plaintiff was not entitled to the injunction. 1 — 11 — 62. Arbitrary Words. Where a manufacturer has invented a new name, consisting either of a new word or a word or words in common use, which he has applied for the first time to his own manufacture, or to an article manufactured for him, to distinguish it from those manufactured and sold by others, and the name so adopted is not generic or descriptive of the article, and is not used merely to denote grade or quality, but is arbitrary or fanciful, he is entitled to be protected in the use of that name as a trade-mark, and this, although it has become so generally known that it has been adopted by the public as the ordinary appellation of the article. 2— 124—830-836. Plaintiffs invented a name for certain puzzles or games, and applied thereto the names of "sliced animals," "sliced birds," and "sliced objects." Held: Upon motion to continue injunction, that these names were arbitrary fancy names and the proper subject of a trade-mark. 1 — 106 — 698. 72 1 138 DIGEST. Plaintiffs were manufacturers of certain games or puzzles for children, which consisted of pictures of animals, birds or objects on paste-board, cut into strips or pieces, and the puzzle consisted of putting the pieces together so as to form the original picture. To distinguish these manufactures plaintiffs had given to them the names "Sliced Ani- mals," "Sliced Birds," or "Sliced Objects," according to the charac- ter of the picture, which names were placed upon the boxes containing the puzzles and upon the. outside of the packages in which they were put up for sale, and the said articles had become well known by the names thus given them. In an action to restrain defendants from using said names in connection with similar articles manufactured for and sold by them Held: That the names so given were capable of being appropriated as trade-marks, and plaintiffs, having so appropriated them, were entitled to be protected in their use as such. 3 — 124 — 832. See also, 1 — 25 — 136. Assets. For a trade-mark to pass under a bill of sale, it is not necessary that it should be specifically mentioned. If a trade-mark is air asset, as it is, there is no reason why it should not pass under the term "assets," in an instrument which conveys the entire partnership property. 2 — 133—880. See also, 3 — 180 — 1128. Assignee. Where the assignee of the naked right to use a trade-name, claims the exclusive right to sell goods bearing this name, he must show that the name was originally used to designate goods of a certain quality or description, and is being used by him to designate, substantially, goods of the same quality or description, and that the use of the name does not operate to deceive the public into the belief that the goods are made by the man whose name they bear. 5 — 77 — 472. An assignee or purchaser of a trade-mark from the original proprietor must in the use thereof indicate that he is assignee or purchaser, or he will not be entitled to protection in the use of the mark assigned. 2 — 152 — 969. The publisher of "Chatterbox" in England, having assigned the exclusive right to use and protect that name in this country, the assignee may maintain his action against any other person who undertakes to publish books under that name in the United States. 1 — 139 — 915. Assignment. A trade-mark, indicative of origin or ownership in the proprietor of a certain business, may be sold or assigned by him as an appurtenance DIGEST. "39 of such business, and the assignee may become entitled to the ex- clusive use of such mark, even as against such proprietor himself. 3—103—672-677. As an abstract right, apart from the article manufactured, a trade-mark cannot be sold, the reason being that such transfer would be productive of fraud upon the public, but in connection with the article produced, it may be bought and sold like other property. 1 — 133 — 880. The assignment by one partner of all his' interest in a firm to his co-part- ners carries with it, if not expressly reserved, the right to the exclusive use of a trade-mark of the firm. 4 — 10 — 51. A trade-mark cannot be assigned as a mere abstract right and independent of or disconnected from the business in which it is used. 1 — 153 — 970. The proprietary right which a man has acquired in a trade-mark, or in the use of his name, or in any name, general or otherwise, which desig- nates a particular business established and carried on by him, involv- ing what is known as the "good-will" of the business, is in the nature of property, and transmissible by assignment or bequestj and will pass with the sale of the business to which the name or trade-mark is attached, or under a general assignment for the benefit of creditors, which, by its terms, transfers all the insolvent's property for the pay- ment of his debts, although it may not be specified in the schedule annexed to the assignment, or in the one which, under the General Assignment Act of this State, is subsequently made out and filed. 2 — 53—329- See also, 5 — 77 — 472. 2 — 152 — 969. 2— 91—574- 4— 77—467. 2—133—880. Authorship. An author may restrain the publication of literary matter purporting to have been written by him, but which in fact he never did write; and this rule applies in favor of persons known to the public under an assumed name. Astral Oil, 1 — 173 — 1089. Band of Ribbon. A band of ribbon of such shape and so attached to the wares of a manu- facturer as to enable them to be readily distinguished in the market, may properly be allowed registration as a trade-mark. 1 — 60 — 367. Bayard Cigar. The name "Bayard" and portrait of a United States Senator by that name held to be proper matter for a trade-mark in chewing tobacco. 1 — 37 — 217. ii40 digest. Business Signs. The object of a trade-mark is to indicate by its own meaning, or by asso- ciation, the origin or ownership of the article to which it is applied. A sign placed over a man's place of business with a row of beer barrels painted on it, and the letters "P. B." stamped on the head of the barrels, and the words "Depot of the Celebrated" placed above, and the words "Philadelphia Beer," placed below the barrels, would relate only to the description of the beverage dealt in by him, and cannot be protected as a trade-mark. I — 121 — 810. See also, r — 17 — 97. Bill of Sale. 2—133—880. Cause of Action. A declaration charging defendants with fraudulently and falsely selling goods of his own fabrication, as the manufacture of the plaintiff, by which the plaintiff was deprived of sales in the market, sets forth an actionable injury. 1 — 108 — 705. See also, 2—177 — 1112. Cherry Pectoral. Plaintiffs invented and prepared a medicine for chest diseases, to which they gave the name of " Cherry Pectoral," and which was extensively known and sold as "Ayers' Cherry Pectoral;" one of the ingredients was extract of wild cherry, and the word " pectoral " had been, before "the invention of plaintiffs' medicine, applied to medicines for chest diseases. Held: That the plaintiffs could not claim the exclusive use of the words " Cherry Pectoral," as a trade-mark. 2 — 4 — 18. Class of Mechandise. Different persons may apply the same mark to different kinds of goods in the same class, provided their nature and resemblance are not so nearly the same as that the identity of the trade-mark, would deceive the public as to origin or ownership. 3 — 38 — 222. Where the dominating characteristic of a trade-mark is a name by which the manufacturer's goods have become familiarly known to the public, another manufacturer has no right to designate his goods by that name, even though he accompanies it with a different device. 1 — 56 — 356. Although the revenue laws distinguish between cigarettes and smoking tobacco, there is 'no such substantial difference as will justify a manu- facturer of cigarettes in applying to them a name which has become the well recognized designation of another manufacturer's smoking tobacco. 2 — 56 — 356. DIGEST. II4I Prior to 1834, S. W. Collins, D. C. Collins, and another, copartners as Collins & Co., made edge-tools, using as a trade-mark "Collins & Co." In 1834, they assigned to the Collins Manufacturing Company, a cor- poration, the right to such trade-mark. In 1843, the right to make all articles of metal was conferred on the corporation, and its name was changed to the Collins Company, the plaintiff. It always stamped " Collins & Co." on its productions. In 1856, the firm of Oliver Ames & Sons began to put the stamp and label " Collins & Co." on shovels made by it, and sent to Australia. The plaintiff had not up to that time made shovels, but it had a market in Australia for the articles it made and stamped " Collins & Co." The object of Oliver Ames & Sons in putting the stamp " Collins & Co." on the shovels, was to avail themselves of the credit and reputation and market which the plaintiff had established for itself for articles stamped " Collins & Co." The plaintiff, at the time of bringing this suit, had not sent or sold any shovels to Australia. The defendant, in succession to Oliver Ames & Sons, continued to do what the latter so began to do in 1856. Held: That the acts of Oliver Ames & Sons, and of the defendant, were always unlawful. The plaintiff having had, from 1843, tlie r 'g nt to make all articles of metal, and having gone on from that time, both before and after 1856, extending its manufacture beyond edge-tools into digging tools, such as picks and hoes, and having always put the mark " Collins & Co." on its best quality of articles, the fact that it did not, before 1856, make a digging tool such as the shovel on which, in 1856, Ames & Sons put the mark "Collins & Co.," does not warrant the conclu- sion that that mark was not, in 1856, the mark of the plaintiff's trade in respect to such shovels. 1 — 104 — 680. Class of Purchasers. The class of persons who would naturally be sent to a grocery store to buy this class of goods, would be such as might be imposed upon readily by the similarity of these two names. 3 — 66 — 403. Clean Hands. 8 — ij6 — 1 106. Collocation of Words. The appearance of the word "Astral," in a combination of words consti- tuting a trade-mark, does not preclude its use in all other combina- tions formed for the like purpose. Held, therefore, That the plaintiff's trade-mark, "Pratt's Astral Oil," applied to refined petroleum, was not infringed by the use of the words "Standard White Astral Oil," to designate the defendants' re- fined petroleum. 1 — 173 — 10S9. See also, 2 — 119 — 798. I 142 DIGEST. Color. Neither the color alone nor the form alone of a package, nor the color of an article of commerce can constitute a trade-mark. I — 135 — 891. The doctrine of the United States Courts, so far as it goes, is in entire consonance with that of the Courts of Great Britain and France, that color alone cannot constitute a valid trade-mark. 2 — 135 — 893. Colored fabrics being commonly on sale and in use, there can be no legal restriction upon their use by any person for any lawful purpose that suits his convenience. 4 — 135 — 893. The color of a label, apart from a name or device, cannot be the subject- matter of a trade-mark. 1 — 158 — 993. Common Law. The decision of the Supreme Court of the United States holding the trade- mark legislation of Congress to be unconstitutional and void, does not affect the validity or impair the force of a decree enjoining the use by defendant of a certain label or trade-mark, it appearing that the in- junction suit wherein said decree was rendered was not a statutory but a common law proceeding. 1 — 45 — 279. The right of the proprieter of a trade-mark to the exclusive use of the same, and to protect and enforce his exclusive right by proceedings'in Chancery, exists by virtue of the common law, and independently of the statute. 2 — 45 — 280. Property in trade-marks has long been recognized and protected by the common law and by the statutes of the several States, and does not derive its existence from the Act of Congress providing for the regis- tration of them in the Patent Office. 1 — 40 — 247-254. Courts of Common Law and of Equity will, in the absence of any statute upon the subject, protect the proprietor of a trade-mark in its exclu- sive use. 1 — 65 — 396. See also, 1 — 140 — 919. 1 — 176 — 1101. Common Material. Tin being one of the common metals in use by the public for a very large variety of purposes, and being easily stamped or impressed with letters, figures or characters, or cut into various shapes, and taking readily dif- ferent colors or shades besides its natural metallic luster, and like paper, becoming readily the vehicle or material for receiving whatever impression or color may be stamped upon it. Held: That the attempt of complainants to appropriate tin to their exclu- sive use in marking plug-tobacco, without regard to its color, shape or the characters or letters it bears, is not within the scope and purpose of the law of trade-marks. 1 — 179 — 1121- 1 122. DIGEST. "43 As words, characters and symbols descriptive in their application to any merchandise, cannot be appropriated by any one to his exclusive use, for the same reason ordinary materials sold in the market and adapted for manifold uses, cannot be appropriated to any particular one of these uses by any person to the exclusion of the public from the same em- ployment of them. 3 — 135 — 893. Compound Trade-Mar KS. Proposed trade-marks consisting in part of marks already registered by others, are objectionable when it .appears that they would be liable to deceive the general purchaser. 4 — 80 — 490-491. Numbers constitute a lawful trade-mark when they indicate origin or pro- prietorship, and are used in combination with words and other nume- rals. 1^—109 — 714. The words "homeopathic specifics," standing alone, cannot be appropri- ated as a trade-mark; but can be when used in connection with serial numbers. 2 — 109 — 714. Commercial Reputation. A man cannot openly appropriate and sell in the market, the commercial reputation which another has acquired by his industry and skill. 4 — • 70—425. Competition Unlawful. Though the particular combinations of letters and figures used by ap- pellees were not entitled to protection as part of appellants' trade- mark, yet it appearing that appellees copied those combinations, not for the purpose of indicating the size and quality of their plows, but for the purpose of misleading the public into the belief that appellees' plows were of a kind made by appellants, having an established repu- tation and large sale, Held: That appellees are liable to appellants for damages resulting from loss of trade in consequence of such copying and to an injunc- tion restraining the further sale of such plows, n — 117 — 781. Where the reading matter of defendants' publication was different from the complainants', but the name, style and arrangement were the same, and it Mas clear that the latter had been adopted for the advantage they gave. Held: That taking this advantage was injurious and illegal. 3 — 147 — 950. It is unnecessary for present purposes, to consider whether the complain- ant has a valid trade-mark or can have a technical trade-mark in the name "St. Louis." It is sufficient that it was lawful for the complain- ant to use the name to designate its property, that by doing so it has acquired a trade which is valuable to it, and that the defendants' acts I 144 DIGEST. are fraudulent and create a dishonest competition detrimental to the complainant. 4 — 148 — 954. Copyright. United States Courts have exclusive jurisdiction of actions for an in- fringement of a copyright. An author's property in his manuscript is lost by its publication. What combination of words -will be protected as a trade-mark. What degree of similarity must be shown to justify an injunction restraining the use of another's trade-mark. 1 — 62 — 378. A person becoming an author can secure to himself the exclusive right to his productions only by a copyright under the laws of the United States; and if he publishes anything without so protecting it, it be- comes public property, and any person may republish it, and state the name of the author in such form in the book as he may choose, either upon the title-page or otherwise, as to show who was the author. 2 — 114—736. Constitutional Law. The legislation of Congress upon the subject of trade-marks, of July 8, 1870, is unconstitutional. 1 — 20 — in. It cannot be sustained under the powers to legislate, in favor of authors and inventors, nor under the power to regulate commerce. 2 — 20 — 1 15. See also, 5 — 40 — 258. Corporations. Plaintiffs alleged that they were co-partners trading as the Galaxy Pub- lishing Company. There was no corporation, merely'a co-partnership. Held: That the name which they adopted with their manner of using it, was a fraud on the public. 1 — 2 — 7. A company claiming to have been incorporated under the laws of another State, commenced doing business in this State under its assumed cor- porate name. Subsequently, another company became incorporated by the same corporate name as the former, under the laws of this State, and commenced business in the same city in which the former company was already established. The company organized under the laws of this State, sought to restrain the persons composing the other company from continuing to do business under the corporate name, alleging that the defendants' pretended corporation no longer existed, but it was held that was not sufficient ground for the relief sought. If the de- fendants were no longer incorporated, or if their original organization as a corporation was illegal, they still had a right to prosecute their business as partners, and under any name they might adopt. 1 — 57 — 359- DIGEST. "45 A corporation is entitled to have its trade-mark as well as a private indi- vidual, and may sue for its infringement. 2 — 79 483. For a tort committed by => foreign corporation within the State of Penn- sylvania, such coi-|» ration is liable to be sued therein if found in the State in the person of an officer or agent upon whom process may be served. 3 — 120 — 808. A corporation may acquire a property right to tlfe use of a name other than its original corporate name as a trade-mark, or as incidental to the good-will of a-business, as well as an individual; and when it has acquired such a right, it cannot be deprived thereof by the assump- tion of such name subsequently by another corporation, whether the latter selects its name by the act of corporators who organize under the general laws of the State, or the name is selected for it in a special Act by a legislative body. 1 — 141 — 921. A United States Circuit Court cannot interfere by injunction, at the in- stance of a corporation organi7ed under the laws of another State, and prevent any necessary step from being taken, under the Statute of the State in which such Court is located, in the creation of a corpora- tion bearing the same name as the foreign corporation. 1 — 155 — 985. Whether relief could be granted after the creation of the corporation, and use of the name of the foreign corporation in fiaud of its rights, is not determined. 2 — 155 — 985. See also, 2 — 32 — 189. Costs. In trade-mark cases, the ordinary rule is that a decree for an infringe- ment and an injunction carries costs; and this rule applies, though no demand was made before suit, that the defendant should cease to use the infringing trade-mark. 3 — 90 — 566. Damages. Specific damages need not be shown in such a case, but the jury may assess such damages as they may on the whole evidence, be satisfied has been sustained. 6 — 52 — 324. The measure of damages is limited by the extent to which the unlawful use of the design by the defendant, has interfered with the sale of plaintiff's commodity. 3 — 137 — 906. That damages will be given only for such sales as have taken place after the commencement of the action, where it is shown that the plaintiffs knew of the infringement, but took no steps to arrest it. 3 — 26 — 1 47- 149. As the complainant here is in laches in bringing suit, (eleven years after knowledge of the infringement,) and as the circumstances justified the defendant in believing that he was licensed by silence, the relief granted must be limited to an injunction. 4 — 156—989. I 146 DIGEST. Where a party has made profits by the sale of goods in violation of the rights of another in a trade-mark, the owner of the trade-mark is entitled to them, whether the same profits would have been made by him or not, and not to any more if they would, for the same profit could not be made by both. 1 — 167 — 1063. See also, 11 — 117 — 781. 1— 9 1 — 574-* 1 Deceit, Action of. Where a label adopted by a merchant to designate goods purchased by him, and for which he had built up a large trade, has been simulated by another merchant, placed upon inferior goods, and put upon the market, an action in the nature of an action for deceit will lie, at the suit of the former. 5 — 52 — 323. Deception of Public. The sight of a familiar symbol inducing one to purchase goods to which the symbol does not properly belong, to the injury of him who devised it to mark his own goods, is the gravamen of the law of trade-marks. 2 — 177 — 1112. If the marks are so different that the ordinary buyer cannot be deceived no wrong is done to the public. 2 — 52 — 321. The use of a trade name to designate a business, so like that of another person in the same business, as to raise a strong probability of mis- leading and deceiving the public or to show a design to so mislead and deceive will be restrained. 1 — 164 — 1041. Complainants claimed the right to use the name "Dr. J. Hostetter's Stomach Bitters," in connection with certain labels, bottles and other devices which designated the preparation as of their own manufacture and indicated its origin, and in their bill they averred that defendants were selling to the trade an extract out of which it was claimed Hos- tetter's Bitters could be made, with directions how to make such bit- ters, and that the retail dealers were making these bitters and refilling complainants' bottles, wiih their labels and devices thereon, and thus selling them- Held: That defendants had the right to sell their extract as charged as no purchaser could suppose that he was purchasing the preparation made by complainants; that they could not be held responsible for the acts of third parties, and that an injunction would not be granted. 4 — 122 — 816. It is not sufficient that traders may not be misled by the resemblance which a proposed trade-mark bears to another, but the distinction must be sufficient to prevent the deception of ordinary purchasers or con- sumers. 1 — 21 — 117. The use, by another, of a trade-mark used to indicate the quality of an arti- cle sold, though placed on articles of equally good quality, and without DIGEST. 1 147 any intention to defraud either the proprietor or the public, will be restrained by a Court of Chancery, and this, although it is not copied with the fullest accuracy, if the copy is calculated to deceive and may be taken for the original. 3—65 — 398. The resemblance need not be such as would deceive persons seeing the two trade-marks placed side by side, or as would deceive experts. 3 — 136—901. That where it is proven that the public, asking for the genuine article in buying from retail grocers, are supplied with an article in the simu- lated wrapping, and take it without detecting the simulation, it is sufficiently proven that the public have been fraudulently deceived, z — 26 — 147. That the injunction was properly issued if it appeared that persons, desiring to purchase the plaintiffs' publication, might well accept that of the defendants, supposing and believing it to be the plaintiffs, even though persons engaged in the trade of buying the books with an intention to re-sell them, might not be misled by the resemblance, and though the difference could be readily detected by a comparison of one book with the other. 4 — 62 — 381. An injunction should be granted if the defendants adopt the brand for the purpose of selling their goods as and for the goods of the complain- ant, or for the purpose of enabling others to do so, and the complain- ant has been injured or is likely to be injured thereby. In such case it will not be sufficient for the defendants to show that no deception is in fact practiced on those with whom they deal personally; but an injunction will be granted if consumers to whom the goods are in- tended to be resold are or may be deceived. 2 — 159 — 998. See also, 4 — 80 — 490. 11 — 117 — 781. Defences. The infringer cannot justify his wrongful act by showing that the plain- tiff has violated some general law of the State, not affecting his right to have a trade-mark, but on a different subject. 3 — 79 — 483. The unauthorized use by other parties of plaintiff's trade-mark, is no justification of defendant's acts of infringement; but, on the contrary, such circumstance is, under the authorities, one of aggravation. 2 — 95 — 601. It is no answer for the defendant, where the complainant asks for pro- tection, to say that it has no exclusive right to designate its products in the manner it has, although this might very properly be asserted by a competitor selling beer made at St. Louis, or who by reason of any circumstance, might be entitled to represent his product as originating there. 2 — 148 — 954. ii48 digest. Delay. An injunction will be dissolved where the plaintiff has slept upon his rights for more than a year after it was granted, and has not prosecuted the case further. 1 — 67 — 407. Demurrer. A bill filed to restrain an alleged infringement of a trade-mark based upon labels or wrappers, which does not aver a similarity or imitation in the appearance of the labels or wrappers, is insufficient and will be held bad on demurrer. 1 — 119 — 798. In an action to restrain defendant from using a trade-mark alleged to have been devised by him in imitation of that of plaintiffs, and to be in fact deceptive to purchasers, etc., if fac similes of the two trade- marks are annexed to the complaint, it will not be held, on demurrer, that the one is not sufficiently similar to the other to mislead, and to constitute an infringement, unless the dissimilarity is so marked as to leave no doubt in the mind of the Court; but the question of infringe- ment will be reserved until the coming in of the proofs. 1 — 71 — 431. Where the demurrer was to the whole bill, and the bill was in itself suffi- cient, aside from the allegations contained in it, upon which the de- murrer was taken, the demurrer was overruled. 2 — 113 — 732. Differences between the original and the simulated trade-mark, which, in the absence of fraud, may be sufficient to repel the charge of in- fringement, will not be regarded upon demurrer. 1 — 31 — 178. To demur is to confess the allegations of fraud and of deceptive intent, in the use of the imitation mark charged by the bill, and upon over- ruling the demurrer, an injunction will be allowed, and defendant ordered to answer on the merits. 2 — 31 — 178. Design Patent. The Office, after having adjudicated certain subject-matter patentable as a design, and granted a patent therefor, thereby giving the patentee the exclusive right to use the same for the term of years mentioned therein, cannot register as a trade-mark substantially the same design, and give to another and different party the right to use it as a trade-mark. 1 — 127—845. Descriptive Names. Words in common use as descriptive of medicines for particular diseases, or which merely indicate by its common name, an ingredient of a medicine, cannot be appropriated by a manufacturer of such medicines as a trade-mark, nor can a combination of such words be so appro- priated. Caswell v. Davis, 58 N. Y., 223, followed as controlling. 1 — 4—18. DIGEST. H49 The word "Parabola," registered June 27, 1871, by Robert J. Roberts, of New York, as a trade-mark for needles, held not to be descriptive, but an arbitrary term adopted by complainant to distinguish his needles from those of other manufactures, and his right to so select and apply it affirmed. 1 — 25 — 136. Trade-mark words "Rye and Rock" are descriptive and cannot be appro- priated as a trade-mark. 1— 51 — 314. The law is well settled that words merely descriptively used, are not proper subjects for trade-mark registration. Canal Co. v. Clark, 13 Wall., 311. 1 — 58 — 362. The use of descriptive words objectionable, for two reasons, first, because the public will be apt to understand the words as merely descriptive, and will not therefore associate them with origin or ownership, and second, because others can employ a merely descriptive word upon their wares with equal truth and consequently with equal right, j. — 58-362. The term " straight cut," as applied to cigarettes, is a term descriptive of the ingredients and character of the article used, and cannot be appro- priated as a. trade-mark, so as to preclude another from advertising cigarettes made of straight cut tobacco. 1 — 105 — 695. A name alone is not a trade-mark when it is understood to signify not the particular manufacture of a certain proprietor, but the kind or descrip- tion of thing which is manufactured. 3 — 122 — 814. A word merely descriptive of an article of trade, of its qualities, ingre- dients or characteristics, cannot become a lawful trade-mark by virtue of a change in its orthography to that of a foreign language in which it possesses the same meaning. 1 — 125 — 838. A word that is descriptive of the nature and quality of a compound, cannot be claimed and allowed as ait exclusive trade-mark. 1 — 111 — 1035. See also, 1 — m — 723. 1 — 121 — 810. 2— 4— 18. 1 — 89 — 561. "Device." The word "device" is used in respect to trade-marks in a sense totally different from that in which it is employed in connection with mechani- cal contrivances. It does not signify an expedient or scheme for any purpose but an emblematic figure, mark or sign capable of being imprinted or otherwise displayed upon merchandise. 5 — 135 — 894. Directions for Use. Where the alleged imitation by the defendants, of the plaintiffs' trade- mark consisted, among other things, in the directions for the use of the article, which directions were identical with those printed on the plaintiffs' label. Held: 1 1 SO DIGEST. That this did not constitute an infringement of the plaintiffs' trade- mark. 2 — 18 — 105. Division Marks. Every manufacturer has the right to indicate points or lines of division by marks upon his goods or packages. 3 — 16 — 93. A registration trade-mark for plug-tobacco, consisting of one longitudinal line dividing the plug into equal parts, and a series of transverse lines crossing the plug at right angles with the longitudinal line, and at equal distances from each other, will not prevent the use of a trade-mark for tobacco, consisting of a series of seven Greek crosses stamped on the centre of the surface of the plug at equal distances from each other, and a series of half crosses on the margin opposite the full crosses, as guides for cutting the plug into pieces. 2 — 16 — 93. Dress of Goods. The doctrine of relief in equity, against infringement of trade-marks, rests upon the principle, that no one should be permitted so to dress his goods for sale, as to enable him to induce purchasers to believe that they are the goods of another. 1 — 12 — 67. Duty of Competitor in Business. Requiring defendant to refrain from selling any Singer Sewing Machine, without indicating in some distinct manner, that said machines were not manufactured by the Singer Sewing Machine Company. 4 — 13 — 75. Equity Jurisdiction. A bill in equity lies in this Court only on account of its preventive relief, and perhaps to save multiplicity of suits, as in case of the in- fringement of a patent. Root v. Railway Co., 105 U. S., 189. 2 — :47 — 950. Established 1780. The words "Established 1780," or "Established A. D. 1780," which have been conspicuously displayed and used upon the signs, labels, bill- heads, &c, of a drug house for a great number of years, may strictly and rightly be denominated a trade-mark, and the right to the exclusive use of such words will be protected by a Court of Equity. 1 — 17 — 97- 98-100. Estoppel. In order for one suit to constitute an estoppel upon any party to another suit, four conditions must co-exist, viz: 1st. There must be an identity of the cause of action. 2nd. There must be an identity of parties to the suit. DIGEST. njj 3rd. There must be an identity in the character or quality of the respective parties, and 4th. There must be an identity of the thing in question. 1—10—46. Evidence. 2 — 26 — 147. 3— no— 720. See also, 3 — 136 — 901. 10 — 117 — 776. Experts. It is enough that such similitude exists as would lead an ordinary purchaser to suppose that he was buying the genuine article and not the imita- tion; and it is not necessary that the resemblance should be such as would mislead an expert, or such as would not be easily detected if the original and spurious were seen together. And Held that, for the purpose of proving the defendants' packages with their labels so closely resembled those of the plaintiffs as to mislead an ordinary purchaser, wholesale dealers in hair-pins might testify as experts. 5 — 102 — 661. 4— 101—645. Expired Patent. Right to use of Name. If a sewing machine has acquired a name which designates a mechanism or a peculiar construction, parts of which are protected by patents, other persons, after the expiration of the patents, have the right to construct the machine and call it by that name, be- cause the name only expresses the kind and quality of the machine. 1— 13— 73- The validity of a common law trade-mark is not affected by the fact that the owner of the trade-mark is also the owner of a patent covering the article to which the trade-mark is applied. The expiration of the patent does not terminate the existence of the trade-mark. 3 — 35 — 211. Where a word indicates a patented machine of peculiar mechanism, such word cannot be protected as a trade-mark upon the expiration of the patent. 1 — 75 — 452. Where a patentee uses his name and marks to designate his invention, and also the product of it, as manufactured by himself, so that the public cannot separate the one from the other, he cannot acquire any right to the exclusive use of the name and marks after the patent has ex- pired. 1 — 98 — 616. While no one has the right to make and sell his own wares as the wares of another, every one has the right to make and sell any wares not protected by patents; and a manufacturer of a patented article, after the expiration of the patent, has a right to represent that it was made I IS2 DIGEST, according to the patent, and to use the name of the patentee for that purpose. 1 — ; I26 — 843. Where frames for sewing machines in the form of the letter G, have been so extensively manufactured and sold by the inventor during the time they were protected by patents, that the machine containing this feature has come to be known in the trade thereby, after the expiration of the patents, the patentee cannot, by claiming such form or shape of frame as a trade-mark, prevent others from using such frames in sewing machines manufactured and sold by them. 2 — 126 — 844. Semble, that after the expiration of a patent, no manufacturer of the patented article can appropriate the name or the principal part of the name of the patent as a trade-mark. 2 — 145 — 941. Complainants having attempted to secure to themselves by means of a patent, the exclusive use of tin as a badge for their plug-tobacco, and their goods haying acquired the "name of "Tin Tag" goods while they were acting under their patent. Held: That when the patent was declared void the right to so indicate or mark such goods became public, and complainants cannot per- petuate or continue this right by claiming it as a trade-mark. 2 — 179 — 1122. Fairbanks' Scales. The words "Fairbanks' patent" were cast in the scales made by both parties. All the patents which Fairbanks & Co. had, had expired. Fairbanks & Co. applied for an injunction to restrain Jacobus from using the words " Fairbanks' patent " on His scales, and from making or selling an imitation of Fairbanks & Co's scales. Held: That the application must be denied; that the words " Fairbanks' patent " were not a trade-mark; and that Jacobus did not rep- resent his scales to be of the make of Fairbanks & Co. 4—5 — 23. Foreign Commerce. Laws of the United States now in force, relate only to trade-marks spe- cially used in connection with foreign nations or with Indian tribes. 2 — 140 — 919. Under section 3, of the present Act, the applicant will be required to specify some particular foreign nation or Indian tribe with which he has commercial relations. 4 — 80 — 492. See also, 3 — 140 — 919. Foreign Language. 1— 125— 83S. Fraud. Rule laid down by Judge Van Brunt in Kiminy v. Basch, 16 Law Reg., N. S., 596, approved and quoted as follows: "If the use of any word, DIGEST. II53 numerals or symbols is adopted for the purpose of defrauding the pub- lic, the Courts will interfere to protect the public from such fraudulent intent even though the person asking the intervention of the Court may not have the exclusive right to use the words, numerals or symbols." 3—41—264. It is not necessary, under the rules of law as they now prevail in this State in regard to trade-marks, to determine whether there was an intent to do wrong or not; it is sufficient that the proprietary right of the complainant and its actual infringement is shown. 3— 86— 551. See also, 2 — 68 — 413. 3—159—998. 10 — 117 — 776. 2 — 21 — 117. 4— 136— 901. 3— 24—131. 3—150-963. Generic Name. "Worcestershire Sauce " is a Generic Term. The term " Worcestershire Sauce," has become generic as applied to a certain kind of table sauce, and cannot be exclusively appropriated by the complainants, simply because they reside in Worcestershire, England. 1 — 22 — 119. While the fact that a term has become generic is fatal to its subsequent adoption as a trade-mark, it is not fatal to its continued use, nor to its registration by the lawful assignee of those whose use rendered it gen- eric any more than to its continued use or registration by the assignors themselves. 5 — 35 — 211. The commercial name of an article which every man has a right to make and sell, cannot be appropriated as a trade-mark. 1 — 70-7424. But when coupled with other distinctive features, the whole may be so appropriated. 2 — 70 — 424. Words which have acquired a significance in the market as expressive only of the name or quality of an article cannot be appropriated as a trade-mark. But if the primary object of the trade-mark be to indi- cate origin or ownership, the mere fact that the article has obtained such a wide sale that the mark has also become indicative of quality, is not of itself sufficient to debar the owners of protection, or make it the common property of the trade. To hold otherwise would be to deprive the owner of the exclusive use of his trade-mark just at the time when it had become most valuable to him, and stood most in need of protection. But if the name be suffered to come into general use without objection from the proprietor, it may become merely generic, or indicative of quality. 2 — 103 — 672-676. A name alone is not a trade-mark when it is applied to designate, not the article of a particular maker or seller, but the kind or description of thing sold. 2 — 157 — 991. 73 I I 54 DIGEST. See also, 2 — 124 — 830 1— 13— 73 1 — 122 — 814 1— 157— 991 1 — 103 — 672 1— 142— 930 3— 13— 75 Geographical Name. Defendants do business in Richmond, Va., and advertise and sell, as Durham smoking tobacco, tobacco which they put up in Richmond, and which they obtain from any source available to them other than Durham. Such a practice necessarily deceives every purchaser who, in purchasing this Durham smoking tobacco, believes that he is pur- chasing the fine tobacco put up in the place of that name in North Carolina. 2 — 10 — 48-49. A geographical name, although also the name of an historical personage, is not a proper subject for trade-mark registration. The word "Raleigh" refused. 1 — 59 — 364. As a rule geographical names cannot be allowed registration as trade- marks. 1 — 68 — 410-417. Undoubtedly Courts of Equity have granted injunctions to restrain the fraudulent use of words of this character; but the grounds of such de- cisions have been invariably, I think, the fraud of the defendants, and not any exclusive right of the plaintiff. Examples quoted, C. D. 1872, p. 128; Newman v. Alvord, 49 Barb., 588; Brooklyn White Lead Co. v. Masaury, 25 Barb., 416. 2 — 68 — 413-417. The plaintiff, who first applied the word "Vienna" to baked bread and other articles, having been engaged in the manufacture, in the City of New York, of an article known as " Vienna Bread," and which he has for many years past sold with a label thereon containing the words "Vienna Model Bakery," can maintain an action restraining the use by other parties, of a label in imitation of his own, and in particular, from applying the word "Vienna" to baked articles. 1 — 85 — 542. Where manufacturers at one place falsely mark or brand their goods as manufactured at another, for the purpose of inducing trade which would otherwise go to manufacturers at such other place, such false marking will be considered as fraudulent, and a " resort to a palpa- ble trick," and, the complainant being injured thereby, the infringing manufacturers will be enjoined from thus using the name of the place where the complainant carries on its business. 3 — 159 — 998. See also, 1 — 22 — 119. Good-Will. Payment for the "good-will" of a business must be claimed at the time of the transfer of the business. 4 — 180 — 11 28. DIGEST. "55 To recover for the "good-will" of a business transmitted from one per- son to another it must appear affirmatively that there was a "good- will" connected with the business, of some value in itself. Proof merely that the business is profitable is not enough. 2 — 180 — 11 27. See also, z — 53 — 329. Idem Sonans. Action brought to restrain defendant from using the word "Loyal" to denote' a brand of " Baking Powder." Held: That the word " Loyal " was substantially idem sonans with the word "Royal," and when rapidly spoken by people not accustomed to the nice distinction of speech, they might be taken for the same word. 1 — 66 — 402. The adoption of a label which in colors, in its design and collocation of the letters, and even of the vignette and in all the characters which strike the eye, is so identical with that of the plaintiff, that it confirms the impression which would be created by the use of the general name, or generic term, that there was an intention on the part of the manufacturer of defendant's goods, to avail himself of the reputation of the plaintiff. 2 — 66 — 402. Imitation. To sustain an actioti in a State Court for an injunction against an infringe- ment or imitation of trade-mark or labels, plaintiff, although his label contains a registered trade-mark, need not prove an imitation of that mark. It is enough if the general effect of the defendant's wrapper and label, constitute a wrongful imitation of those of plaintiff, although defendant may have replaced the symbol or "trade-mark," with a clearly different device. 2 — 12 — 70. Upon principle, no man should be allowed to sell his goods as the goods of another, nor should he be permitted to so dress his goods as to enable him to induce purchasers to believe that they are the goods of another. 4 — 12 — 67. •Courts will interfere where it is apparent that there is an imitation of plaintiff's label, whether as to color, shape, or inscription, which imita- tion is calculated and intended to deceive the general public. 6 — 12 — 70. Parties will be protected from the imitation of their packages so far as they are peculiarly designed and shaped for the purpose of distinguishing their goods, and from the imitation in color, design, style and lettering combined of the labels used to mark said packages. 2 — 161 — 1036. Parties will be restrained by injunction from using packages made in imita- tion of others in the trade, and calculated to deceive the buying public and to defraud the original users of such packages; but such imitation must be sufficiently close to have that effect or the injunction will be refused. 1 — 175 — 1096. I I 56 DIGEST. See also, i — n — 62. 1 — 119: — 798. 6 — 101 — 645. Indicia. Loiig-contimied use of a particular form of package and of particular colors for its wrappers, papers of directions and labels, having served to distinguish the complainants' article in the trade, the appropriation of such peculiarities in form and color by another dealer for packages of the same article will be restrained. 2 — 9 — 33—37. It is not important to determine whether the device simulated is techni- cally to be called a trade-mark or a label * * * The entire device simulated was that-which had been adopted by a merchant to designate goods manufactured for him, and under his direction, and sold by him * * * * he had introduced his goods extensively under the desig- nation he had adopted, and was entitled to its exclusive use as a trade- mark. 3 — 52 — 321. The injury done was not in calling the beer sold by defendant Budweiser beer, but in affixing to the bottles a mark calculated to deceive the ordinary purchaser into the notion that the bottled beer of Uhrig was the article so carefully prepared by Conrad, by whatever name it might be called. 4 — 52 — 322. That the label bears a name the use of which cquld not in equity be pro- tected as a trade-mark, will not prevent a recovery, where the label is imitated in size, shape, color, device and general appearance. 7 — 5 2 — 3 2 3- The plaintiffs' mark of trade is the entire style of their bottle and label, of which the name of their article forms a part, and the other details of design and lettering. - 2 — 96 — 611. A word used as a trade-mark is addressed to the eye as well as to the ear, and cannot be disassociated from its surroundings when the inquiry is whether it is a colorable imitation. 3 — 149 — 961. Defendants use cans of piecisely the same size and shape of those of plaintiff, to which are affixed labels of same colors and general design, with the words Coral Baking Powder thereon. Held: That the words "Coral Baking Powder" is not in itself an infringe- ment of plaintiff's trade-mark, "Royal Baking Powder," but the general arrangement of the Words being the same, the devices upon the can being very much alike, and the labels of the same color and general appearance, purchasers might be easily de- ceived into buying the one for the other. 1 — 162 — 1041. Infringement. In a suit to restrain the use of trade-marks alleged to be simulated, if it appears by the testimony that the marks used by the defendants, though resembling those of the plaintiffs in some respects, have not DIGEST. IIS7 deceived and are not likely to deceive the ordinary mass of purchasers paying the attention which such persons usually do in buying the article in question, an injunction will not be granted, i 18 105. The plaintiffs were the manufacturers and vendors of a new article of soap, put up in the form of a pressed cake, wrapped in silver-foil paper, encircled with an ultramarine blue colored paper band, printed in gold letters. The defendants manufactured a similar article, and introduced it to the market in an ordinary envelope. It did not sell well, and they therefore enveloped their soap in a wrapping substantially the same as the plaintiffs, though having minute variations. Held: That an injunction will be granted, where the differences between the trade-mark and an infringement can be detected upon a brief, though careful comparison, if it be apparent that the object in putting up the infringing articles; was simply to gain custom by general resemblance to the genuine article. 1 — 26 — 146. The manner in which defendants printed their name upon the labels in question, was likely to draw attention, from the difference between it and plaintiff's name, and lead the ordinary reader to believe it to be plaintiff's name. Held: That in such case, the intent being evident, the plaintiff is responsible for the effect produced, though the name used was its proper cor- porate name. 2 — 32 — 189. The defendant had no -right to imitate the trade-mark of the plaintiff, by using in his label or trade-mark any of the prominent or distinguish- ing words of said plaintiff's trade-mark. 3 — 45 — 280. A Court of Equity will restrain the fraudulent imitation of a package and label, although they do not technically constitute a trade-mark, where the public are thereby misled into purchasing the goods of the imitator as those of the original manufacturer. 1 — 49 — 294. Action by '"Royal Baking Powder Company" against defendants to restrain ' them from the use of the word "Royalty" in connection with the manu- facture and sale of baking powder. The defendants are engaged in the same line of business. Their manufac- ture is put up in round tin boxes of the same forms, sizes and shapes as those used by plaintiff, having red and yellow labels on each box, containing similar large letters on curved lines on the red label and the words "Royalty Baking Powder" with a different ornament or device in centre from that in the centre of the plaintiffs' red label, and at the upper part of the yellow label in similar type and placed upon the label in the same form the words "Royalty Baking Powder," followed by printed directions in English and in German on each side of the centre of the label with the names of the manufacturer at the foot. Held: That the general appearance of the boxes and labels is so nearly identical as to be well calculated to deceive ordinary observers. 1— 50— 312. I 1 58 . DIGEST. The plaintiff had a right of trade-mark in a symbol -which consisted of an eagle with outstretched wings, perched on a mortar, in which rested a pestle, which device was used upon labels for medicinal purposes and other articles. Held: That the use of this symbol by the defendant, as a prominent .fea- ture of labels for similar preparations and articles, was an in- fringement of the plaintiff's rights, although another name ap- peared conspicuously upon such labels instead of the name of the plaintiff, and notwithstanding the fact that symbols of a similar nature were shown to be in general use by druggists and apothecaries for purposes of ornament. 1 — 64 — 391. Trade-marks may consist of pictures, symbols, or a peculiar form or fashion of label, or they may consist simply of a word or words. 1 — 73 — 442. Where the trade-mark is of the first kind, to constitute an infringement, there must be such an imitation as to amount to a false representation, liable to deceive the public. 2 — 73 — 442. Where, however, the trade-mark consists of a word, it continues to be the distinguishing mark of the manufacture to which it is applied, in whatever form it is printed or represented, and its use by another, in any form, applied to similar articles, is unlawful and may be restrained* 3—73—443- The use of the word by another is not justified, although used in con- nection with different words from those in connection with which it is used by the party who has appropriated it as a trade-mark. 4 — 73 — 444. Where the special features of complainant's trade-mark have been for many years used upon labels of the same character by persons engaged in the same trade, and the appearance of said labels apart from the names, is such as results from an ordinary 'and rightful use in an appropriate manner, without intention of making by such use, a definite effect of the whole taken together, and these particulars are not so employed by complainants that an original design or combination has resulted which can be perceived by itself apart from its components, and the labels of defendants could be mistaken for those of plaintiffs only on account of a resemblance in these particulars used in an ordi- nary and rightful manner, and the name of defendant appearing promi- nently on his labels and is conspicuously different from the firm-name upon plaintiff's labels. Held: That defendant was entitled to a dismissal of the complaint on the merit. 1 — 76 — 456. Where, in an action to restrain the infringement of a trade-mark, it is shown that defendant has in his store, and offers for sale, a spurious article, with an imitation ot plaintiffs' trade-mark thereon, although but a single sale is proved, it is sufficient to sustain an injunction against a continuance of the wrong. 1 — no — 719. DIGEST. I I 59 Au action for such injunction will not be defeated solely on the ground that on the day it ivas brought defendant happened not to have any of the article on hand. 2 — no — 720. Declarations of the clerk, made at the time of the sale and in connec- tion therewith,- are competent evidence. 3 — no — 720. When plaintiff shows that he has adopted a legal trade-mark, that it has been infringed, and that actual probable or possible damages have or may result from its infringement, he is entitled to relief usually in the form of an injunction and an account of profits. 4 — 117 — 760. As to what facts constitute infringement of a trade-mark or trade repu- tation, no rule can be formulated that will embrace every act of in- fringement, and the original and alleged imitation are of primary importance. The resemblances need not be such as would mislead an expert or could not be easily detected if the original and the spurious were seen together. It is enough if such resemblances exist as w T ould lead an ordinary purchaser to suppose he was buying the genuine article and not an imitation. If the differences are only colorable, and there is no reason for the resemblances except the purpose of deceiv- ing the purchaser of one article into the belief of its being the manu- facture of another, the Court will presume a fraud was intended. 10 — 117—776. In a case where it'is claimed that a trade-mark has been infringed, to constitute an infringement it is not necessary that the device com- plained of should be s.fac simile of the device of complainants. There may be an infringement without exact similarity. 1 — 136 — 899. No manufacturer will be permitted to stamp upon or attach to his goods, the name of another manufacturer. 1 — 145 — 941. Printing and selling labels in imitation of a trade-mark, with the purpose of enabling the parties fo whom the labels are sold to palm off then- goods upon the public as the goods of the owner of the trade-mark, is a violation of the rights of such owner. 1 — 151 — 965. The complainant in a trade-mark suit is entitled to relief, if the marks or brands used by the defendants sufficiently resemble the complainants' marks or brands-to be mistaken for them. 1 — 159 — 998. Soap packed in a box, with alternate red and yellow wrappers, so as to produce a representation of a trade-mark of the same combination of colors, is not an infringement of that trade-mark. 1 — 174 — 1093. The fact that the plaintiff's marks are themselves a close imitation of those of a third party will be good ground for withholding the aid of a Court of Equity. 8 — 176 — 1106. Injunction. It is the settled doctrine of the Courts of England as well as America, that a' special injunction will be dissolved upon the coming in of an answer or affidavits denying the equities of the bill. 4 — 67 — 408. Il6o DIGEST. Property in the use of a word as a trade-mark, to designate manufactured goods, such as the word " Hoosier," to distinguish a grain drill, may be acquired by adoption and exclusive use, and when acquired, the unauthorized use by another of the mark, to designate similar goods, is a wrong which may be compensated by damages and prevented by injunction. I — 92 — 570. In order to justify an injunction restraining a party from using a trade- mark, name or other device descriptive o£ his goods, it should appear that he is in fact so using it as to represent; or induce the belief that the goods which he manufactures or sells are the goodsof the plaintiff, and that there is danger that the plaintiff will in that manner be de- frauded. 1 — 129 — 856. See also, 6 — 70 — 425. 1 — 169 — 1073. 4—155— 989. 2— 31— 178. 4— 44— 277- Intention. Where a trade-mark is calculated to mislead, even if, no one has been actually deceived an intention to deceive will be presumed. 2 — 21 — 117. In this case the following facts appeared: The labels used by defendants in their business, were in undoubted imita- tion of those used by plaintiff, and the greater part of the details were so like the corresponding details of plaintiff's labels, that it was plainly defendants' intention to represent that the goods upon which the same were to be placed, were made by plaintiff. Held: That the plaintiff was entitled to protection against this. 1 — 32 — 188. Although a man may not intend to injure another, yet he will not be allowed to adopt. the marks by which the goods of such other person are designated, if the effect of adopting them would injure such other person. 3 — 33 — 201. Even if the resemblance between the plaintiff's wrappers and those used by the defendants was accidental, the plaintiff would be entitled to protection against its injurious results to his trade. 5 — 70 — 425. To entitle a party to restrain another from continuing the unlawful use of his trade-mark, it is not essential to show an actual intent to defraud. 5—73—444- In Georgia, to have a word or words claimed as .a trade-mark, protected by injunction from use by another, it should appear the defendant's use of them was with intent to deceive or mislead the public. 2 — 89 — 563- The defendants were not excused for the use of the label and device, by the fact that they acted in good faith, and believed that they were DIGEST. H6! not infringing the rights of the plaintiffs. The injury to the plaintiffs remained the same. 3 — 102 — 660. The purpose to be effected by an injunction in such a case, is not pri- marily, to protect the purchaser, but to secure to the manufacturer the profit to be derived from the sale of his goods to all who may desire and intend to purchase them. 4 — 102 — 659. There may be an infringement without a specific intent to deceive the public. If the effect of the device, when considered alone or in con- nection with the shape, size, character and appearance of the article upon which it is placed, is to deceive, the party adopting it must be held to have intended deception, as every man is held to have intended tie necessary, natural and probable consequences of his own acts. 4— 136— 901. See also, 3 — 8.6 — 551. Interference. The Commissioner of Patents has authority under the statute and rules of the Patent Office to institute an interference between opposing claim- ants for registration of the same trade-mark for the purpose of de- termining the ownership of the same. 1 — 44 — 274. The successful party in such an interference is entitled to a provisional injunction against the licensees of the unsuccessful party when on doubt exists as to the infringement. 4 — 44 — 277. Insurance Oil. The words "Insurance Oil" are a legal trade-mark. 5—79 — 484. Joint Trade-Mark. Where two persons, associated in business for the manufacture and sale of a commodity, jointly adopted a trade-mark for it, they are equally entitled to its use after the dissolution of their connection; and if one of the parties obtain letters of registration in his own name, he may be compelled to transfer an equalinterest to his associate. 1 — 36 — 213. Judicial Notice. Where the records of this Office disclose that certain parties registered a trade-mark under the lawof 1870, that such trade-mark was their property, that they had been using it in this country for ten years next preceding the date of their application for registration, and there is no evidence that they have ever abandoned such trade-mark, Held: That section 3, of the Act of 1881, and the spirit of the whole statute, authorize the Patent Office to' take notice of the facts recited in said records, in determining "the presumptive law- fulness of claims to.the alleged trade-mark" by subsequent ap- plicants for registration, and the Examiner was justified in re- Il62 DIGEST. jecting the application for registration on the facts disclosed in said record. 3 — 138 — 914. Jurisdiction. In such cases the Court has power to interfere, and should exercise the power. 5 — 12 — 67. Courts of United States have not jurisdiction between citizens of same State, unless the trade-mark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial inter- course with an Indian tribe. 3 — 140 — 919. In a suit to restrain the infringement of a trade-mark, the amount in dis- pute, as determining the jurisdiction, does not depend on the profits sought to be recovered. 2 — 181 — 1130. Label. The proper test in distinguishing between trade-marks that savor of de- scription and labels that imperfectly describe, is to consider whether the public will on the whole regard the mark as an arbitrary symbol denoting only the origin and ownership of the goods, or as an adver- tisement of some desirable quality of the goods themselves. 1 — 78 — 475- The several Acts of Congress regarding the registration of prints, de- signed- to be used as labels, do not exclude from registration a label containing matter which might be registered as a trade-mark; nor does the fact that a label bears such distinguishing marks as entitle it to registration as a trade-mark, exclude it from registration as a label, if the owner desires it to be registered as such. Whether the Commis- sioner of Patents is to regard it as the one or other wholly depends upon the will of- its proprietor. 1 — 93 — 590. Congress intended to devolve upon the Commissioner of Patents, the duty of determining the character of the subject-matter offered for registration under the label and trade-mark law. 1 — 143 — 932. The' proper construction of the statute is that the subject-matter of an application for label, shall be that which may be properly claimed as a label, and not be merely subject-matter for a trade-mark. 2 — 143 — 933-935- But the statute does not mean to imply that if certain subject-matter is found to be incapable of registration as a trade-mark, it can neverthe- less be registered as a label, for it may not be descriptive of the quality or nature of the goods, and therefore fail to constitute a label. 3—143—936. In the case at bar the Examiner properly refused to register as a label, matter which, gauged by the established rules, constitutes only subject- matter for a trade-mark. 4 — 143 — 937. Complainant, a brewer in St. Louis, Missouri, made and exported to Panama and South American ports, beer in bottles, with a label DIGEST. I 163 bearing the words "St. Louis Lager Beer." Defendant, a shipper of beer from New York City, and a competitor of complainant in trade in Panama and South America, labeled his bottles "St. Louis Lager Beer." Held: That although complainant could not have an exclusive property in the Avoids "St. Louis" as a trade-mark, or the exclusive right to designate his beer by the name of " St. Louis Lager Beer," yet, as his beer had always been made at that city, his use of the designation upon his labels was legitimate; and that defendant, whose beer was made in New York, should be en- joined from diverting his trade by simulating his labels, or representing in any other way, his products as those of com- plainant. 1 — 148 — 953. Although the name applied by a complainant to his goods may not afford protection as a trade-mark, where others are guilty of imitating the labels used by him in making sales thereof, they will be enjoined. 3—157—992. Where a manufacturer has applied a peculiar and distinctive label to designate his goods, and has so used it that his goods are identified by it, a Court of Equity will restrain another party from adopting and using one so similar that its use is likely to lead to confusion by pur- chasers exercising the ordinary degree of caution which purchasers are in the habit of exercising with respect to such goods. 1 — 165 — 1052. A label bearing six distinct points of resemblance to a label used by another person in the same business whose goods had acquired a mar- ket reputation, is such an imitation of the latter label as should be enjoined, where it appears that at least two persons were deceived thereby, and where the defendant's sales have increased, without other cause being shown,' since the adoption of the label by the defendant. 1 — 166 — 1061. The Act of June 18, 1874, providing for the registration of labels in the Patent Office, did not intend to provide for such registration of a label which was in facta trade-mark. Where a label which " bears such distinguishing marks as entitle it to registration as a trade-mark " is proposed for registration, the "function of the Commissioner" is not "merely ministerial," and he is at liberty to refuse such registration. 1 — 171 — 1082. A manufacturer of labels may impress them with a uniform device to indi- cate them as of his manufacture, but the labels themseives cannot con- stitute his trade-mark. 2 — 176 — 1101. See also, 1 — n — 62. 2 — 66 — 402. 2— 12 — 70. 6 — 12 — 70. 2 — 161 — 1036. 7— S 2 — 3 2 3- 1 164 DIGEST. Laches. In England the rule is stringent in trade-mark cases, that lack of diligence in suing, deprives complainant in equity, of the right to an injunction or an account. Our Courts are more liberal in this respect. A long lapse of time will not deprive the owner of a trade-mark of an injunc- tion against an infringer, but