KE Betws B fea P ce 4 CORNELL UNIVERSITY LAW LIBRARY The Moak Collection PURCHASED FOR The School of Law of Cornell University And Presented February 14, 1893 IN MIEMORY OF JUDGE DOUGLASS BOARDMAN FIRST DEAN OF THE SCHOOL By his Wife and Daughter A. M. BOARDMAN and ELLEN D..WILLIAMS Cornell ae Library KF 3178.C87 1871 American trade mark cases :a compilation AA r AMERICAN TRADE MARK CASES A COMPILATION OF ALL THE Reported Trade Mark Cases DECIDED IN THE AMERICAN COURTS PRIOR TO THE YEAR 1871 WITH AN APPENDIX CONTAINING THE LEADING ENGLISH CASES Anp THe Unitrep States Act IN RELATION To THE REGISTRATION or Trapz Marks, wiTH ConsTRuUcTIONS oF THE ComMIssIonERS OF PATENTS AFFECTING THE SAME EDITED BY ROWLAND £OX Counsellor at Law, and Editor of the American Law Times CINCINNATI Rosert Crarkxe & Co 1871 Entered, according to Act of Congress, in the year 1871, - By ROWLAND COX, In the office of the Librarian of Congress, at Washington. PREFACE. This volume contains, substantially, all the cases relating to Trade Marks that have been decided in the United States, prior to the year 1871, with an Appendix, in which will be found matter germane thereto. The cases are arranged in chrono.ogical order, and are given in almost every instance in the language of the original reporter, such alterations only being made as appeared to be necessary. It is hoped that the work will be found of very great value to those who are interested in the subject to which it relates. Embracing as it does all that the American Courts have said and done, to the intelligent reader it must present the advantages of both a text-book and volume of reports. It is believed to contain the whole body of American law, affecting trade marks, and is arranged as a compilation of cases from a conviction that the nature of the subject is such that in no other manner can it be as safely and satisfactorily treated. The Index and Table of Cases cited, afford, it is thought, a more convenient means of collation and reference than could have been effected by any system of annotation. Wasuincton, D. C. ROWLAND COX. November, 1871. TABLE OF CASES. Ainsworth v. Walmesley - Alexander—Jurgensen #. - Alvord—Newman v. - - Am. Leather Cloth Co.— Leather Cloth Co. v. - Ames vw. King - Amoskeag Man. Co. v. Garner Amoskeag Man. Co. v. Spear B. Baird—Colloday o. - Barrows—Hall v. - - Barrows v. Khight - - Bassett—McAndrew ». - Batty v. Hill - - - Beard w. Turner - = Bell v. Locke - - Berger—Samuel 7 - - Billings—Marsh v. - Binninger v. Wattles. Blanchard v. Hill - - Blofield v. Payne - - Bloomer—Bloss v, - - Bloss v. Bloomer - s Boardman v. The Meridian Brit. Co. - - Bolton—Singleton v. - - Bostwick—Lockwood ». - Bradley v. Norton - - Braham gv. Bustard - - 678 298 404 688 151 541 87 257 668 238 669 669 717 11 178 118 318 633 635 200 200 490 634 555 331 674 Brooklyn White Lead Co. 2. Masury - - - Brunton—Coffeen v. - Brunton—Coffeen v. - Bryan—Curtis vy. - - Burgess v. Burgess Burnett v. Phalon - - Burnett v. Phalon - - Bustard—Braham wv. - Byass v. Sullivan - - Cc. Carlan—Stone v. - - Carpenter—Taylor ». (Be- fore Story, J.) - Carpenter—Taylor v. (Be- fore Woopsury, J.) Carpenter—Taylor v. (Be- fore N. Y.C’t of Appeals.) Caswell v. Davis - - Choyuski ». Cohen - Christy v7. Murphy - - Clark v. Clark - - Clark—Spottiswoode v7. - Coats v. Holbrook - Coffeen v. Brunton - - Coffeen v. Brunton - Cohen—Choyuski v. - Colloday v. Baird - - Colton v. Thomas Comstock v. White - Cong. & Emp. Spring Co. v. High Rock Cong. Sp’g Co. 210 82 132 434 664 292 376 674 278 115 14 32 45 429 593 164 206 653 20 82 132 593 257 5°7 232 599 vi TABLE OF CASES. Corwin v. Daly - Couston—Moetv. - - Croft v. Day - - - Crowley—Walton v. - Currie—Wotherspoon v. Curtis v. Bryan - Se D. Dale v. Smithson - - Daly—Corwin v. - - Davis—Caswell v. = - Davis v. Kendall - - Davol Mills—Ferguson v. Day—Croft v. De Conto—Stephens v. - Derringer v. Plate - - Dey—Swift v. - - Dixon Crucible Co. v. Gug- genheim - - E. Edelsten v. Edelsten - - Edleston v. Vick - . Estérbrook—Gillott v. - F, Faber v. Faber : 7 Falkinburg v. Lucy + 7 Fassett—Filley v. - - Ferguson v. The Davol Mills Fetridge v. Merchant - Fetridge v. Wells - - Filley v. Fassett - - Flanagan—Matsell v. = Fowle v. Spear - Fox—Millington v. - Francais—Hobbs v. + - G. Ganton—Lemoine v.- Garner—Am. Man’f’g Co. v. 265 675 649 166 720 434 282 265 429 112 516 649 442 324 319 559 667 666 340 401 448 530 516 194 180 530 367 67 642 287 | 142 54t Garner—Mer. Man’f’g Co.v. Gillis v. Hall - - Giilis v. Hall - - - Gillott v. Esterbrook .- Gillott v. Kettle - - Goulard—Wolfe v. - Gout v. Aleploglu Se Guggenheim—Dixon Cruci- ble Co. v. - - - Guilhon v, Lindo - - H. Hall v. Barrows = we Hall—Gillis v. - - - Hall—Gillisv. - - Harris—Palmer v. - - Harrison v. Taylor < Heath v. Wright - - Henriques—Howard v. - . High Rock Cong. Sp’g Co.— Cong. & Emp. Spring Co. v. Hill—Batty v. - Hill—Blanchard v. - Hine vy. Lart - - Hobbs v. Francais - - Holbrook—Coats v. - - Holloway v. Holloway - Houghton—Rowley v. - Howard v. Henriques” - 155 589 596 340 148 226 636 559 295 668 580 596 523 675 154 129 599 669 633 656 287 20 662 486 129 How—Pidding v. - - 640 How—Southern v. - 633 Howe v. Howe Machine Co. 421 Howe v. Searing - 244 Humphrey—Peterson v. - 212 Huntington—Rudderow v. - 106 J. Johnson—Williams vy. - 214 Jurgensen v. Alexander - 298 TABLE OF CASES. vil K, . N. Kendall—Davis v. « - 212 | Newman v. Alvord - 404 Kettle—Gillott v. - - 148 | Noah—Snowden v. - I King—Ames v. - = - 51 Norton—Bradley v - 331 Knight—Barrows v. - 238 | Nowill—Rodgers v. - 660 Knott v. Morgan - - 637 P. L. Palmer v. Harris - = 523 Landgraff—Stokes v. - 137 Partridge v. Menck = 72 Tarte Mine as. & . - 656 Payne—Blofield v. - - 635 Lazar—Woodward v. - 300 Peck—McCardelv. - a Leather Cloth Co. v. Am. Pee ee ee Leather Cloth Co. - - 63g | Peterson v. Humphrey 212 ‘Lemeiné a. Canton ta Phalon—Burnett v. - 292 Lindo-Culhonpe ~< = 295 Phalon—Burnett v. 371 Locke— Palins. s 7 Phalon v. Wright - - 307 Lockwood v. Bostwick - 555 Pidding v. How 5 640 Lucy—Falkinburg v. = =~ 448 Plate—Derringer v. - 324 R. M. McAndrew v. Bassett - 669 eee McCardel v. Peck - 312 See ee > 0 vias Rowley v. Houghton - 486 Marsh ‘v Billings ae Rudderow v. Huntington 106 Masury — Brooklyn White : Lead Co. v. - 210 Matsell v. Flanagan - - 367 S Menck—Partridge v. = 72 | Salmon—Morison v. - 643 Merchant—Fetridge v. - 194 | Samuel v. Berger - 178 Meriden Brit. Co.—Board- Searing—Howe v. - - 244 man v. - 490] Singleton v. Bolton - 634 Merrimack Man. Co. v. Gar- Smith v. Woodruff - 373 ner - - - - 155 | Smithson—Dalev. - 282 Messerole v. Tynberg - 479 | Smithson—Stewartv. - 175 Millington v. Fox - -. 642 | Snowden v. Noah - I Moet v. Couston - - 675] Southern vy. How - 633 Morgan—Knottv. = - 637 | Southorn v. Reynolds - 688 Morison v. Salmon - 643 | Spear—Am. Man’f’g Co. v. 87 Murphy—Christy vy. + - 164 | Spear—Fowle vy, - - 67 viii TABLE OF CASES. Spence—Williams v. - = 305 Spottiswoode v. Clark - 653 Stephens v. De Conto - 442 Stetson—Town v. - - 514 Stewart v. Smithson 175 Stokes v. Landgraff - - 137 Stone v. Carlan - - 115 Sullivan—Byass v. - - 278 Swift v. Dey - 319 T. Taylor v. Carpenter. (Be- fore Story, J.) - - 14 Taylor v. Carpenter. (Be- fore Woopsury, J.) - 32 Taylor v. Carpenter. (Be- fore N.Y. C’t of Appeals.) 45 Taylor—Harrison v. - 675 Thomas—Colton v. - = 507 Thomson v. Winchester 7 Town v. Stetson - - 514 Truefitt—Perry vu. + - 644 Turner—Beard v: - Tynberg—Messerole v. Vv. Vick—Edleston v. = Ww. Walmesley—Ainsworth v. Walton v. Crowley Wattles—Binninger v. Wells—Fetridge v. White—Comstock v. Williams v. Johnson. Williams v. Spence Winchester—T homson Wolfe v. Goulard - Woodruff—Smith v. Woodward v. Lazar Wotherspoon v. Currie Wright—Heath v. Wright—Phalon v. 717 479 666 678 166 318 180 232 214 395 226 373 300 720 154 397 Table of Cases Cited. (This table embraces only the cases cited in the opinions.) A. Ainsworth v. Walmesley, 470. Amoskeag Manufacturing Co. v. Spear, 138, 150, 174, 178, 184, 199, 222, 229, 271, 272, 274, 308, 309, 315, 319, 321, 322, 347, 364, 369, 400, 410, 413, 420, 438, 459, 470, 502, 515, 520, 539» 554 563, 570, 573, 574, 605, 621, 622, 626, 732. B. Bailey v. Taylor, 55. Bajou’s Case, 567, 587, 598. Barrows v. Knight, 484, 733. Bell v. Locke, 36, 53, 55, 85, 129, 204, 268, 369, 372; 509. Benson v. Fash, 455. Bewles v. Stewart, 373. Binney’s Case, 553. Binninger v. Wattles, 414, 418, 470, 484, 5155 554. Blanchard v. Hill, 36, 84, 91, 269, 327, 564. Blatchford v. N. Y. & N. H.R. R. Co., 455. Blofield v. Payne, 40, 42, 86, 92, 129, 554. Braham v. Bustard, 484. Brinckerhoff v. Brown, 64. Brooklyn White Lead Co. v. Masury, 231, 272, 273, 369, 400; 409, 419, 479. 515, 5545 562, 607. Brooks v. Gibson, 630. Brown v. Maryland, 41. Burgess v. Burgess, 229, 232, 319, 409, 414, 418, 515, 605, 733. Burnett v. Phalon, 272, 274, 309, 4145 431, 4325 470, 476, 554, 733- Cc, Canham v. Jones, 36, 84, 97, 115, 163, 184, 308. Carnes v. Nesbitt, 591. Chissum v. Dewes, 247. Christy v. Murphy, 272, 273, 509, 567. Churton v. Douglass, 225. Clark v. Clark, 230, 400, 413, 470, 562, 569, 607. Clark v. Freeman, 163, 570, 697. Clement v. Maddick, 259, 272, 2732 733- Clinton v. Douglas, 250. Coats v. Holbrook, 56, 100, 117, x TABLE OF CASES CITED. 117, 129, 138, 204, 221, 242, 259, 369, 400, 470, 569. Coats v. Piatte, 259. . Coffeen v. Brunton, 174, 259, 260, 262, 272, 273, 308, 321, 470, 475, 484, 566, 569. Colegrove v. N. Y., etc, R. R. Co., 372. Colloday v. Baird, 307. Collins Co. v. Brown, 328, 566. Collins Co. v. Cowen, 271, 365, 417, 521, 566, 627. Colton v. Thomas, 568, 569, 576. Conkendorfer v. Preston, 34. Cook v, Collingridge, 249. Cooters v. Hunter, 553. Corwin v. Daly, 294, 319, 322, 365, 369, 391, 396, 413, 414, 417, 418, 470, 515, 520, 564. Coulter v. Cowen, 519. , Crawshay v. Collins, 247. Crawshay v. Thomson, 85, 92, 268, 271, 277, 369, 511, 554, 558, 566, 569. Croft v. Day, 92, 102, 116, 129, 161, 260, 270, 319, 369, 417, 427, 428, 488, 510, 511, 528, 554, 566, 569, 575, 587, 696. ‘Crutwell v. Lye, 6, 247, 252. D. ‘Dale v. Smithson, 569. Davies v. Hodgson, 249. Davis v. Kendall, 242, 259, 484. Day v. Binning, 28, 36. Dayton v. Wilkes, 259, 447. Delondre v. Shaw, 56, 58. Dent v. Turpin, 683. Dixon Crucible Co. v. Guggen- heim, 598, 627, 630. Dougherty v. Van Nostrand, 247. E. Edelsten v. Edelsten, 484, 554. Edleston vy. Vick, 510, 562, 575, 713. Elves v. Crofts, 248. F, Falkinburg v. Lucy, 596. Farina v. Silverlock, 415. Fetridge v. Merchant, 273, 274, 285, 239, 540. Fetridge v Wells,.196, 230, 271, 274, 276, 285, 309, 312, 319, 320, 348, 413, 418, 439, 459, 479, 5193 5545 573, 574, 606, 622. _Filley v. Fassett, 569, 733, 735. Flavell v. Harrison, 312, 439, 528, 713. Fowle v. Spear, 155. Fowler v. Burns, 455. French v. Maccale, 590. G, Genin v, Chadsey, 567. Gibbons v. Ogden, 628. Gillott v, Esterbrook, 536, 563, 733- Gout v. Aleploglu, 27, 84, 272, 273, 565. Gout v. Parkinson, 36, Gray v. Ohio, 553, 554. H. Nall v. Barrows, 484, 554, 631 582. Hammond v. Douglas, 246, 247. Hammond v. H.R. Lete. Co., 373: > TABLE OF CASES CITED. xi Harper v. Pearson, 484. Hartwell v. Kingsley, 455. Hascall v. Mad. University, 455. Hine v. Lart, 272. Hitchcock v. Coker, 248. Hogg v. Kirby, 6, 12, 86, 163, 252, 369, §cg. Hollins v. Mallard, 455. Holloway v. Holloway, 163, 192, 439. Howard v. Henriques, 138, 259, 262, 263, 272, 274, 303, 316, 417, 484, 509, 567. Howard v. Woodward, 590. Howe v. Howe Machine Co., 470, 579. Howe v. Searing, 316, 554, 574. Huggins v. King, 373. J. Jacques v. Areson, 455. K, Kesler v. Taylor, 586. Knott v. Morgan, 13, 28, 36, 53, 55, 84, 92, 102, 129, 161, 197, 263, 270, 272, 274, 294, 369, 416, 476, 484, 509, 511, 565. Krom v. Hogan, 455. ane Leather Cloth Co. v. Am. Leather Cloth Co., 528. Lee v. Haley, 627. Lemoine v. Ganton, 369. Lewis v. Chapman, 554. Lewis v. Langdon, 246, 249, 569. M. McAndrew v. Bassett, 484, 733- McCardel v. Peck, 445, 554. McCormick v. McCubben, 247. McDonald v. Richardson, 247. Marsh v. Billings, 484, 567, 5755 733: Matsell v. Flanagan, 484. Merrimack Manufacturing Co. v. Garner, 231, 319, 454, 460, 511, 607. Messerole v. Tynberg, 514, 515. Millikin v. Carey, 455. Millington v. Fox, 28, 31, 36, $3, 55, 85, 94, 98, 115, 184, 270, 271, 272, 273, 276, 283, 308, 418, 438, 515, 554, 566, 646, 682, 697. Mills v. Pittman, 65. Morrison v. Salmon, 126, 565, 734: Motley v. Downman, 105, 161 179, 231, 603. N. Newman v. Alvord, 470, 476, 484, 514, 627. F. Palmer v. Harris, 573. Partridge v. Menck, 105, 138, 161, 162, 179, 193, 195, 197; 198, 204, 258, 259, 260, 262, 271, 290, 320, 323, 324, 369, 400, 418, 421, 460, 488, 510, 511, 573, 574, 603. Perry v. Truefitt, 98, 161, 184, 192, 195, 230, 268, 270, 272, 273, 284, 308, 309, 312, 3195 xii TABLE OF CASES CITED. 418, 515, 558, 606, 696, 709, 712. Pidding v. How, 42, 72, 192, 195, 284, 312, 418, 484, 528, 648, 712. Pierce v. Franks, 272. Pierpont v. Fowle, 34. Peterson v. Humphrey, 316, 512. R. Ransom v. Bentall, 28, 36, $4, 566, 733. Rodgers v. Nowill, 129, 566, 570, 587. Roome v. Webb, 455. S. St. Clair v. Tarbox, 44. Samuel v. Berger, 574. Sanborn v. Neilson, 44. Saunders v. Smith, 553 Schoomaker v. R. D. Cliarch, 455. Seely v. Fisher, 163. Seixo v. Provizende, 470, 627. Servoss v. Stannard, 455. Sheldon v. Rockwell, 553. Sherwood v. Andrews, 603. Singleton v. Bolton, 84, 97, 163, 184, 230, 269, 284, 285, 308, 319, 366, 418, 515, 565, 606. Smith v. Adams, 553. Smith v. Woodruff, 476, 484. Snowden v. Noah, 14, 138, 268, 369, 509. Soc. for Prop. Gosp. v. Wheeler, 39- Southern v. How, 36, 268, 564. Spottiswoode v. Clark, 161, 162, 199, 262, 273, 324, $10. Steeper v. Williams, 588. Stephens v. Cady, 445. Stewart v. Smithson, 439. Stokes v. Landgraff, 271, 309, 347> 365, 400, 413, 459, 470s 520, 539, 606, 622, 623, 733. Stone v. Carlin, 129, 272, 274, 484. Stonebreaker v. Stonebreaker, 569. Sykes v. Sykes, 10, 28, 36, 84, 269, 427, 563, 565, 570. 587, 733. Ti Tash v. Adams, 553. Taylor v, Carpenter (before Srory,J.), 30, 36, 41, 55, 259» 272, 328, 417. Taylor v. Carpenter Woopsury, J.), 537- Taylor v. Carpenter (before N. Y. Court of Appeals), 28, 138, 174, 204, 221, 255, 259, 347; 400, 417, 438, 470. ¢ Taylor v. Miller, 37. Taylor v. Taylor, 418. Thomson v. Winchester, 36, 272, 273. Tracy v. Swartwout, 43. (before U. United States v. McDaniels, 34. Ww. Walton v. Crowley, 484. W.& F.R.R. Cov. CL. & 1. Co., 584. Webster v. Webster, 570, 697. Welch v. Knott, 697. TABLE OF CASES CITED. xiii Wheaton »v. Peters, 38. Williams v. Wilson, 247. Whipple v. Walpole, 44. Wolfe v. Goulard, 285, 310, 319, Whittington v. Wooler, 56. 348, 400, 409, 414, 431, 432, Wiggin v. Coffin, 44. 470, 515, 603, 605. Williams v. Johnson, 272, 306, | Wood »v. Sutcliffe, 553. 369, 400, 417, 470, 471, 566, | Wotherspoon v. Currie, 575. 733: Wyette v. Stone, 42. Williams v. Spence, 417. American Trade Mark Cases. SnowDEen v. Noau. Court of Chancery of New York. Before Sanvrorp, Chancellor, Fan- uary, 1825. Reported, Hopkins Ch. R. 347. The name of a newspaper is a proper subject of property and of contract; and a per- son having sold a newspaper establishment, together with the name of the paper, has no right to publish another paper as that which he has sold. But if there be so great a difference between the two as to afford room for reasonable . doubt a court of equity will not interfere by injunction, but will leave the parties to their remedy at law. Plaintiff acquired from defendant the right to publish at the city of New York “The National Advocate.” Defendant subsequently published at said city “* Tae New York National Advocate.” Held, that there was such a difference as to warrant the court in refusing an injunction to restrain defendant. Tue bill in this cause set forth a deed poll, dated the r4th of September, 1824, whereby Henry Eckford, for the consideration of one dollar, assigned to John D. Brown and several others © “all his right, etc., in and to the newspaper entitled the National Advocate, now publishing in the city of New York, at 48 Wall street, with all the books, types, presses, issues, profits, rights, and incidents belonging or appertaining to the said newspaper.” The assignment was in trust, to make sale of the establishment. The complainant then stated that the trustees published the National Advocate daily for the city, and semi-weekly for the country, issuing a very considerable number of papers, and that the income from subscriptions and advertisements was several thousand dollars; that the paper was printed at No. 48 Wall 2 AMERICAN TRADE MARK CASES. Snowden v. Noah. street, where persons were accustomed to carry their advertise- ments; and that the trustees employed agents to print and dis- tribute the paper, and that they owned and were possessed of the printing establishment belonging to the paper, and the books of account, with the lists of the subscribers and their residences, all of which were conveyed to the trustees; that the trustees derived their right from the defendant, Noah Phillips, and one who formerly occupied the tenement No. 48 Wall steet for the purposes of the publication; and that they were proprietors of the establishment, with the good-will of the same, from which they derived a considerable income; that in September last the trustees employed Noah, at a stipulated salary, to edit the paper, but subject to be discharged at will: that on the 8th of Decem- ber he published an advertisement for the sale of the establish- ment, accompanied by certain explanatory remarks, which are set forth in the bill, and which, after giving a detail of the ex- penditures and the income from subscriptions and advertisements, added, ‘‘I can make it apparent to an approved purchaser, that -by attention alone, the profits of the establishment may be fairly . estimated at from $4,000 to $5,000 per annum ;” that the com- plainant became the purchaser for $11,509, intending to purchase the establishment, with its good-will and its books and all appurtenances; that after the purchase on the 14th of Decem- ber, 1824, the trustees accompanied the complainant to the -office of the paper, gave him possession, and discharged Noah. The bill then complains, that Noah interrupted the possession of the complainant at No. 48 Wall street, and forcibly ejected him; that he induced subscribers to withdraw their good-will and patronage ; and that to do this more effctually Noah published, on the 15th of December, a hand-bill, entitled ‘* National Ad- vocate Extra,” and has since continued another regular paper, under the title of ** The New York National Advocate,” which is published at 48 Wall street, where he receives and intercepts advertisements intended for the Natioral Advocate, and has re- tained the subscription and other books, till he had made copies of them, for the purpose of supplanting the complainant and de- priving him of the good-will of the establishment,.etc. That AMERICAN TRADE MARK CASES. 3 Snowden v. Noah. Noah is wholly insolvent, and was discharged in 1824 under the act, etc.; that the trustees paid the rent of the tenement during his occupation; that it was fully and clearly understood between the parties that the good-will of the establishment was to be sold with it, and the premises to be delivered to complainant, and that Noah was privy to that understanding. The bill prays, that the trustees may be compelled to repay the complainant his purchase money, or to put him in posses- sion; that Noah may account for profits received, etc., and for an injunction to prohibit him from publishing any paper under the title of the National Advocate, from sending it to the old subscri- bers, from collecting subscriptions, receiving advertisements, etc. D. B. Ogden, for the complainant, upon the filing of the bill, moved for an injunction according to its prayer. The conduct of the defendant is a gross fraud. He adver- tises the establishment for sale, commends it as very valuable, and advises a purchase. Then, when the purchase is made, he continues the paper with only an immaterial difference in the title ; he continues it at the same place, and there solicits and receives advertisements, sends his paper to former customers, and in effect usurps that very good-will of the establishment which consti- tutes its principal value, and which he has just induced the com- plainant to purchase. Meantime the defendant is insolvent, so that we have no remedy but in prevention. This court will give protection in every case of fraud. In- junctions have been granted to restrain publications in cases of invasions of right far less violent. The counsel then cited and commented upon the cases in 17 Ves. 336; 8 Ves. 215; Eden on Inj. 224-226. The courts will take notice of that which is called the good- will of a trade or business. It is benefit derived frem custom- ers; in this case, the subscriptions, advertisements, etc. The defendant does not treat his paper as a new one, but as a continuation of the former National Advocate. He speaks of the continuation of advertisements and subscriptions. There was nothing of all this in Hogg v. Kirby. It will be urged that 4 AMERICAN TRADE MARK CASES. Snowden v. Noah. the act is lawful. But, if fraudulent, it is not lawful. The case of Hogg v. Kirby goes much further than this. The injury is irreparable to the complainant. No case can be more urgent on that ground. Mr. Spencer, for the defendants, read the assignment of the establishment to show that the place is only mentioned descrip- tively, and not as part of the property sold. The complainant did not acquire the right to issue any paper from No. 48 Wall street, of which the defendant holds the lease in his individual name. He has thena right to issue a paper from that place; and universally he has a right to issue advertisements for who- ever will send them. And he, or any other publisher, has a right to send his paper to the readers of any other paper. It is not alleged that the public are deceived by the title. The real gravamen is that the public prefer Noah’s paper. The trustees had no power to sell the point and spirit, the sprightli- ness, gaiety of heart, and good humor which constitute the char- acter of his paper. Neither did the complainant acquire by his purchase any lien upon the minds of men. As to seducing away subscribers, it is perfectly lawful. It is the spirit of competition in trade. In 8 Vesey the case was that of areal continuation of the for- mer publication and great similarity in its appearance. But in Keene & Hawes, it is admitted that he might publish a similar work as his own, not as plaintiff’s. If advertisements are sent to No. 48 Wall street, it shows the intention of the publishers that Noah shall publish them. True, he did at first intend to continue the paper under the former title. But there was locus penitentie; and he now ex- pressly invites attention to his paper as being distinct from the other, Noah’s Advocate. If there is any doubt, the chancellor will at least suspend the injunction, till we have time to answer. Tue Cuancetror. The defendant Noah was the editor, but not the proprietor of the newspaper establishment, called the National Advocate; and immediately after the sale of that AMERICAN TRADE MARK CASES, s Snowden v. Noah. establishment by its former proprietor to thé complainant, Noah established another newspaper, under the title of the New York National Advocate. This new gazette thus established, is sent to the subscribers of the former National Advocate, and Noah has solicited and continues to solicit the support of the patrons of the former paper and of the public to his newspaper. This is briefly and in substance the case upon which an injunction is now asked. The business of printing and publishing newspapers being equally free to all, the loss to one newspaper establishment, which may follow from the competition of any rival establishment, is merely a consequence of the freedom of this occupation, and gives no claim to legal redress. But a newspaper establishment is also a subject of property ; and so far as the rights of such an establishment are private and exclusive, this species of property, like any other, is entitled to the protection of the laws. The material property of the National Advocate is not here in question. The pririting office, press, types, and other mate- rials of a printing establishment, are subjects of exclusive right ; and the injuries alleged in the bill, in respect to these subjects in this case, are matters for which redress must be sought in the courts of law. The subject in respect to which an injunction is asked, is what is called the good-will of the establishment, or the custom and support which the National Advocate had before received from its subscribers and patrons, or from the public. The effort of Noah is, to obtain for his newspaper the support of the public in general, and especially the custom and good will of the friends of the National Advocate; this object is distinctly avowed ; and an open appeal is made to the friends of the National Advo- cate and to the public, to give their support to the new paper. The question is, whether the acts of Noah are an invasion of the private rights of Snowden, as the proprietor of the National Advocate, or merely an exercise of the common right to print and publish 4 new journal, and to obtain for it patronage. The open appeal made to the public in favor of the new jour- nal, as a new and distinct paper, seems to remove from this case 6 AMERICAN TRADE MARK CASES. Snowden v. Noah. every objection. Noah is at liberty to invite the subscribers and patrons of the National Advocate to give him their support, and they are entirely free to accept or reject his invitation. They, like others, may give their support to either, or neither, or both of these papers. The only circumstance in this case which has any appearance of an undue encroachment upon the rights of Snowden is, that Noah’s new paper is published under a name nearly the same with that of Snowden. But the name of the new paper is sufficiently distinct from the name of Snow- den’s paper, to apprise all persons that these are really different papers. The different titles and the different matters which must appear in two daily gazettes, seem to afford all the infor- mation which can be desired by those who choose to give their patronage to either of these papers. I do not perceive that any person can be misled in this respect, and the whole case seems to be nothing more than an open competition between two newspaper establishments, for the good-will of those who were the patrons of the first establishment, and for the favor of the public. The good-will of an established trade, the custom of an inn, and the right of a publisher of books may be injured by acts of deception or piracy; but the injury for which redress is given in such cases results from the imposture practiced upon the cus- tomers of an existing establishment, or upon the public. When the friends of an existing newspaper and the public are informed by a rival newspaper, that the two papers are not the same, but are distinct establishments, there is no deception; and the detri- ment which either establishment may suffer from the competition of the other, results from the free option of those who choose to give their support to one establishment in preference to the other. This employment is subject to all the incidents of a free compe- tition, and when no. deception is practiced, the award of the public or of those who patronize newspapers, must determine the patronage which each rival press shall receive. The adjudged cases cited in support of this application, are Hogg v. Kirby, 8 Ves. Jr. 215, and Crutwell v. Lye, 17 Ves. Jr. 336. These cases seem to be rather authorities against the AMERICAN TRADE MARK CASES. 7 Thomson v. Winchester. application. In the last of them, the substance of Lord Eldon’s opinion was expressed in the following sentence, which is directly applicable to this case: ‘¢It amounts to no more than that he asserts a right to set up this trade, and has set it up, as the like, but not the same trade, with that sold; taking only those means, which he had a right to take, to improve it; and there is no fact amounting to fraud, upon the contract made with the plaintiff.” It appears to me that every person who is disposed to patron- ize or support the National Advocate, may do so, without being deceived or misled by the existence or publication of the New York National Advocate. The struggle of these parties seems to be merely a competition, in which there is no imposture or deception. I do not perceive any fraud, but if there is any question whether the acts of Noah are a fair competition ora fraudulent interference with the establishment of Snowden, it is a question wholly uncertain; and as a doubtful matter of fact, it should be left to atrial by jury, in the ordinary course of law. The writ of injunction is a most important remedy, but it is used to protect rights which are clear, or at least free from reasonable doubt. Upon all the facts of the case, the motion for an injunc- tion is denied. Tuomson v. WINCHESTER. Supreme Fudicial Court of Massachusetts. Before all the Fustices, March, 1837. Reported, 19 Pick. 214. If a druggist prepares a certain kind of medicine and designates it by the name of a superior medicine invented, prepared, and sold by the plaintiff, and sells it as and for the medicine prepared by the plainciff, the plaintiff May maintain an action against him, without proof of special damage. Where certain medicines are designated by the name of the inventor, as a generic term, descriptive of a kind or class, the inventor is Aot entitled to the exclusive right of compounding or 8 AMERICAN TRADE MARK CASES. Thomson v. Winchester. vending them, unless he has obtained a patent therefor ; and if another person pre- pares such medicines of an inferior quality, and sells them, and by this means all medicines of that class are brought into disrepute, such inventor can maintain no action for any loss sustained by him in consequence thereof, unless they are sold as and for medicines prepared by him. _AcTIon on the case. The declaration alleged, that the plain- tiff had discovered valuable medicinal properties in various vegetable substances and the best manner of compounding the same for medical purposes, to which substances so compounded he had given the name of Thomsonian Medicines; that he used great care and skill in their preparation, by reason of which they had acquired great reputation, and he had made great profit from the sale thereof; that the defendant, well knowing these facts, had prepared certain ,substances in the similitude of the medi- cines prepared by the plaintiff, and had sold the same as and for medicines prepared by the plaintiff himself, and had also sold the same to others, with the intent that they should sell them as and for medicines prepared by the plaintiff; that the medicines so sold by the defendant were represented by him to be such as the plaintiff made and used, but that, in fact, they were made of other and bad materials, and were debased and adulterated; and that the plaintiff’s reputation in his business, and the reputation of his medicines, were much injured thereby, and that he was prevented from selling large quantities of his medicines, which he would otherwise have sold. At the trial, before Morton, J., the plaintiff offered evidence tending to prove that the defendant had prepared medicines of an inferior quality, and had sold the same as pure Thomsonian medi- cines, and as and for medicines prepared by the plaintiff himself. The plaintiff contended that he was entitled to recover in this action without proving any special damage, and that the damage would be implied by law. But the judge ruled other- wise, and instructed the jury that the plaintiff could not re- cover, under this declaration, unless he proved that he had sus- tained actual or specific damage by the loss of the sale of his medicines, ér otherwise. The judge also instructed the jury, that, as the plaintiff did AMERICAN TRADE MARK CASES, "9 Thomson v. Winchester. not declare or rely upon any patent, he could not recover upon the ground of having made any of the discoveries, improvements or inventions set forth in his declaration, and that the only mode by which he could secure to himself any exclusive right, as in- ventor and discoverer, was by obtaining a patent. The jury returned a verdict for the defendant. If these rulings and instructions were erroneous, the verdict was to be set aside, and a new trial granted; otherwise, judgment was to be rendered on the verdict. Sprague & Peabody, for the plaintiff, to the point, that if the defendant made simulated and inferior medicines and sold them as and for medicines prepared by the plaintiff himself, he was liable although no special damage were proved, cited 1 Chitty on Pl. 385, 388; Sykes v. Sykes, 5 Dowl. & Ryl. 2925; Singleton v. Bolton, 3 Doug. 293; 3 Bl. Com. 123; Tile v. Parsons, 2 Carr. & Payne, 201; Ford v. Primrose, 5 Dowl. & Ryl. 2873 Ireland v. Blackwel, Cro. Car. 570; Burtch v. Nickerson, 17 Johns. 2173; Sumner v. Utley, 7 Conn. 2573 [Davies v. Fones, T. Raym. 62; 3 Salk. 325; Reworth v. Wilkes, 1 Campb. 94; Beekford v. Hood, 7 T. R. 620; Stark. on Slander, 15 e¢ seg. 115 et seq.3 Carrington v. Taylor, 11 East, 5713; Keeble v. Hicker- ingill, 11 East, 574, note; Tarleton v. McCauley, Peake’s R. 207; Schaddock v. Briggs, 13 Mass. 248; and to the point, that the plaintiff was entitled to the exclusive right of selling these medicines, although he had obtained no patent therefor, Sykes v. Sykes, 5 Dowl. & Ryl. 2923; Singleton v. Bolton, 3 Doug. 293. Parsons, Stearns, and C. Sumner, for the defendant, to the first point, cited Bayly v. Merrel, 3 Bulstr. 95; Com. Dig., Action upon the case for a deceit, A 13; Pasley v. Freeman, 3 T. R. 513; Pewtress v. Austin, 2 Marsh. 219; Upton v. Vail, 6 Johns. 181; 2 Chitty on Pl. (6th Am. ed.) 697, 698; Bloss v. Tobey, 2 Pick. 328; and to the second point, Phillips on Patents, 4’; Singleton v. Bolton, 3 Doug. 293. SHaw, C. J. The court are of opinion, that if the defend- ant made and sold medicines, calling them “‘ Thomsanian Medi- 10 AMERICAN TRADE MARK CASES. Thomson v. Winchester. cines,” and sold them, or placed them in the hands of others to sell, as and for the medicines made and prepared by the plaintiff, so that persons purchasing the same supposed and believed that they were purchasing the medicines made and preparea by the plaintiff, it was a fraud upon the plaintiff, and an injury to his rights, for which the law will presume some damage. Sykes v. Sykes, 3 Barn. & C. 541; 8. C., 5 Dowl. & Ryl. 292. Such a case, therefore, being proved, the plaintiff will be entitled to recover nominal damage, at least, and something more, if he can make it appear to the satisfaction of a jury that he has sustained more than nominal damage. We have reason to believe that it was so ruled at the trial, and that there was an error in drawing up the report, represent- ing the opinion given upon one point as in fact given upon another; but being bound to take the report as it is, we think the verdict must be set aside and a new trial granted. i The court are also of opinion, that the rule laid down was correct, that without obtaining a patent, the plaintiff had no ex- clusive right or privilege to compound or vend the medicines called ‘*Thomsonian,” although he was the original inventor, and that he had no more right than the plaintiff to make and vend these medicines, or call them Thomsonian, if his term had acquired a generic meaning, descriptive of a general kind, quality, and class of medicines, as, for instance, James’ powders, or Tur- lington’s balsam, and if they were not sold to consumers, or consigned or sold to others, to be sold to consumers, as and for medicines made and prepared by the plaintiff. If the defendant made and sold medicines, calling them Thomsonian as a generic term, designating their general charac- ter, but did not offer and sell them, nor consign them to others to sell, as and for medicines made and prepared by the plaintiff, and if he made and compounded such medicines of bad materials, with inadequate skill, by means whereof the credit and character of all Thomsonian medicines were brought into disrepute, the plaintiff can recover no damage. If he, in fact, suffers loss from that cause, it is damnum absque injuria, It shows no infringement of any right of the plaintiff. The loss AMERICAN TRADE MARK CASES, II Bell v. Locke. he would sustain is common to him and every other druggist, who may show that the whole craft suffer loss, when the public are imposed on by any one of their number, who, for the sake of gain, may compound medicines of cheap and inferior materi- als, and thereby bring that species of medicine, or all species of medicine into disrepute, and deter many persons from taking medicine, and greatly diminish the sale. The right to make and to sell is common to all, if no deceit is practiced by one, in falsely assuming the name and credit of another. In such case, if the plaintiff makes a superior article, and desires to secure to himself the benefit arising from the superior character of his medicines, he must take care so to designate and identify them as to save himself and his customers from mistake and imposition. The consequence is, that imposition, falsehood, and fraud, on the part of the defendant, in passing off his own medicines as those of the plaintiff, would be a ground of action, but that adulteration of his own medicines, without such imposition and fraud, will afford the plaintiff no cause of action. New TRIAL granted. Bett v. Locke. Court of Chancery of New York. Before Wauwortu, Chancellor, Fan- uary, 1840. Reported, 8 Paige, 75. An injunction will lie to restrain a defendant from assuming the name of the complain- ant’s newspaper, for the fraudulent purpose of imposing upon the public, and of supplanting him in the good-will of his paper. But to entitle the complainant to the interposition of the court of chancery, the name of his paper must be used in such a manner as to be calculated to deceive or mislead the public, and to induce them to suppose that the paper printed by the defendant is the same as that which was previously being published by the complainant; and thus to in- jure the circulation and patronage thereof. 12 AMERICAN TRADE MARK CASES. Bello. Locke, Held, that the name “ New Era,” was not sufficiently assimilated to the name “ Dem- ocratic Republican New Era,” the type and other incidents being dissimilar, to entitle plaintiff, the owner of the latter, to an injunction. Tus case came before the court upon an order for the defend- ant to show cause why an injunction should not issue, restraining him from printing publishing, or circulating a newspaper under the name of the ‘* New Era,” it being contended that such name was an infringement of the rights of plaintiffs, who pub- lished the ‘* Democratic Republican New Era.” LT. W. Tucker, for the complainant. W. D. Craft, for the defendant. Tue CHancELtor. The allegation in the complainant’s bill is, that the defendant has assumed the name of the complainant’s newspaper, for the fraudulent purpose of imposing upon the pub- lic and supplanting him in the good-will of his established paper, by simulating the name and dress thereof; with the intent to cause it to be understood, and believed by the community that the defendant’s newspaper was the same as the complainant’s, and thereby to injure the circulation of the latter. If this were in fact so, 1 should have no difficulty in making this order abso- lute.. For although the business of publishing newspapers ought, in a free country, to be always open to the most unlimited com- petition, fraud and deception certainly are not essential to the most perfect freedom of the press. There is indeed no patent right in the names. Yet as the names of party newspapers, in these days, have no necessary connection with the principles which they advocate, and are manufactured as readily as the new names if not the new principles of political parties, there could be very little excuse for the editor of a new paper who should adopt the precise name and dress of an old established paper, which would be likely to interfere with the good-will of the lat- ter by actually deceiving its patrons. In the case of Hogg v. Kirby, 2 Ves. 226, Lord Eldon considered the publication by the defendant, of what upon its face purported to be a continu- ation of the plaintiff’s magazine, to be such a fraud upon the good- AMERICAN TRADE MARK CASES, 13 Bell v. Locke. will of that periodical work, as to call for the interference of the court of chancery. And in the more recent case of Knott v. Morgan, 2 Keen, 213, Lord Langdale granted an injunction to restrain the defendant from running an omnibus, having upon it such names, words, and devices as to form a colorable imitation of those which had previously been placed upon the omnibus of the plaintiff, with the evident intention of obtaining a part of the business of the latter by deceiving the public. And this de- cision of the master of the rolls was subsequently affirmed by Lord Cottenham upon appeal. The defendant in the present case, however, expressly denies that the new paper which he edits is published under the name of New Era with the intention of thereby inducing the public to suppose it is the same paper as the *‘ Democratic Republican New Era.” Neither do I think that the defendant’s paper is such a simulation of the complainant’s present publication as to injure the circulation and patronage of the latter, by deceiving the pub- lic and inducing a belief that it is in reality the same paper. It is true, the two words of the title which are in roman capitals, are the same in both papers except that in the defendant’s pub- lication they are printed upon a much larger type. But surely no one can mistake the wide-spread wings and the warlike atti- tude of ‘the bird of Jove,” which occupies so large a space in the heading of the defendant’s paper, for the very modest device which sustains the Democratic Republicanism of the complain- ant’s New Era. Besides, the defendant’s paper, upon its face, purports to be a revival of an old publication in which he was formerly interested with the complainant, which publication had been voluntarily discontinued by both for more than eighteen months. The particular name, therefore, which he has assumed had been so long derelict, except in its subsequent democratic connection, that even an opposition editor might lawfully have seized upon it, and appropriated it to the use of his political friends, without any danger of deceiving the public, or drawing off the patronage of those who really wished to read the complainant’s daily paper. In the absence of anything which is really calculated to de- 14 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. ceive the intelligent patrons of the complainant’s Democratic Republican New Era, the decision of Chancellor Sandford in Snowden v. Noah, Hopk. Rep. 347, is an authority against this application for an injunction, to restrain the defendant from pub- lishing his paper, entitled ‘‘ New Era, revived by Richard Adams Locke, its original editor.” The order to show cause is therefore discharged with costs. TayLor v. CARPENTER. Circuit Court U. 8., District of Massachusetts. Before ‘Story and Spracue, JJ., October, 1844. Reported, 3 Story, 458. Where the plaintiffs were manufacturers, in England, of ‘ Taylor’s Persian Thread,” and the defendants, in America, imitated their names, trade marks, envelopes, and labels, and placed them on thread of a different manufacture, it was held, thai it was a fraudulent infringement by the defendants of the right of the plaintiff, for which equity would grant relief, whether other persons had or had not done the same, In the courts of the United States, alien friends are entitled to claim the same protec- tion of their rights as citizens. BiLu in equity for injunction and other relief. The bill, in substance, stated, “ That the plaintiffs are subjects of the queen of Great Britain, and for many years past have been very exten- sively engaged in manufacturing and selling cotton sewing thread, as well in the United States as in England, which is put up for sale on spools labeled on the top ‘ Taylor’s Persian Thread,’ and on the bottom ‘ J. & W. Taylor, Leicester,’ with the number of the thread and number of yards on each spool, and with other devices thereon, for the purpose of distinguishing their spool threads, described in the said bill, from spool thread manu- factured by others. A portion of said spools are red and a por- tion of them black, according to the number of yards on each; that the complainants have established agencies in the United AMERICAN TRADE MARK CASES. 15 Taylor v. Carpenter. States for the sale of their threads in Boston, New York, etc., and have employed, and employ, a general agent, viz: B. War- burton, who resides in New York; that in order to guard against frauds the complainants caused their threads to be inclosed in envelopes, some bearing a stamp of a coat of arms and motto, others bearing a stamp, inscription, or caution to purchasers in the following words: ‘The Persian Thread made by J. & W. Taylor is labeled on the top of each spool, Taylor’s Persian Thread, and on the bottom, J. & W. Taylor, Leicester. The above is for the protection of buyers against piratical articles of inferior quality fraudulently labeled with the name of Taylor.’ That the defendant has extensively manufactured and sold spu- rious threads of inferior quality, put up on spools similar to those used by complainants; that this conduct of the defendant has greatly injured the complainants, not only by depriving them of the profits on the sale of large quantities of their own threads, but by the prejudice to the reputation of the article manufactured by them, caused by the inferior quality of the threads sold by the defendants. “The complainants further state, that they have obtained speci- mens of such spurious threads, etc., which they are ready to ex- hibit to the court ; that they filed their bill against the defendant before the chancellor of New York, substantially alleging the same grievances as are set forth in this bill; that the defendant, by his answer, admitted that he had used the name and trade marks of the complainants as set forth in their said bill, but de- nied ‘that the article manufactured by him was inferior to that of the complainants. They charge that the said conduct of the defendant is a fraud, as well on them as on the citizens of this commonwealth and of the United States purchasing said spurious threads as genuine, and they pray for an injunction against the defendant and an account.” The defendant, in his answer, admits that the plaintiffs are aliens residing in Leicester, England, and they, or others using the said name, have been engaged in vending cotton sewing threads in New York and Boston; but he does not admit that they are the manufacturers thereof, but alleges that they purchase 16 AMERICAN TRADE MARK CASES.» Taylor v. Carpenter. and wind it on spools labeled and marked as in their bill set forth, and inclosed in envelopes as in their bill described; that the threads so vended by complainants have acquired a good reputation in the United States, but that the reputation of the same had fallen off before he began to put up threads; that he has been informed, and believes, that during the last three or four years large quantities of thread have been spooled and labeled and packed as “¢ Taylor’s Thread ” or “¢ Persian Thread,” in England, by persons other than complainants, and exported to the United States as thread of the complainants, so publicly that the complainants knew the same, or were legally affected with notice thereof ; that his thread is as good as that of the complain- ants; that he has put up thread on d/ack spools labeled as afore- said, in envelopes similar to those described by complainants as being printed i” raised letters; but that he never put up thread in envelopes bearing a coat of arms, etc., on red spools, or on spools labeled three hundred yards, or with a coat of arms, etc. That he has consigned his thread to F. D. Ellis for sale, as his agent, and always instructed him to inform purchasers that they were of domestic manufacture; that he is informed by Ellis, and believes, that he never pretended that the said threads were those vended by complainants, and that he, the defendant, never sold any under such pretense. On the contrary, they always in- formed purchasers that the said threads were of domestic manu- facture, and not made or put up by the complainants; that the complainants are aliens, and have no exclusive right of vending spool cotton thread put up, labeled, and marked in the manner set forth in their bill; that the defendant has full right and law- ful authority to manufacture and put up on spools, and with Jabels in all respects similar to those of complainants, and to sell the same in the United States without becoming liable to the plaintiffs for so doing. He denies that any citizens of the United States have been damnified. He avers that for six or seven years before, and ever since he commenced putting up threads as aforesaid, divers persons other than the complainants or defendant, have wranufaceuved and put up thread on spools, colored, labeled, etc., in the same manner as alleged by the com- AMERICAN TRADE MARK CASES. 17 Taylor v. Carpenter. plainants, for sale in the United States, so publicly that the complainants, or their agents, either knew the same or were af- fected with notice thereof; that according to the custom of trade, he, the defendant, is not liable or accountable to the com- plainants, or to any foreign manufacturer or trader, for using in the United States their marks, numbers, labels, names, stamps, figures, designs, etc. The defendant admits the commencement of a suit by the complainants against him in New York, and that he answered the same in haste, etc., and he submits that as the matter in dispute here is involved in the suit in New York, he ought not to be held further to answer before the court here. The cause was briefly argued by C. P.& B. R. Curtis, for complainants, as follows: The points of defense set up by the answer seem to be— 1. That the complainants are aliens, and for this cause not entitled to the protection sought by the bill. 2. That persons other than the complainants have manufac- tured and put up for sale, and have vended threads on spools, etc., similar to those of the complainants, and with their knowledge, express or constructive. 3. That the defendant has not sold thread put up on red spools, nor contained in any but one description of complainants’ envelopes. 4. That the defendant has not sold any threads put up, etc., in imitation of the complainants, without giving notice to the purchasers that they were not threads of the manufacture of the complainants. The defendant admits that he has imitated the names, trade marks, etc., of the complainants on lack spools, and has sold a large quantity of them contained in envelopes, with the inscrip- tion in raised letters, set forth in the bill. The depositions filed in the case show that Ellis, the defend- ant’s agent, has sold threads marked, put up, etc., in imitation of the plaintiffs’ threads on both descriptions of spools, and with- out giving notice to the purchaser of its not being genuine “ Taylor’s Persian Thread.” 18 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. No evidence is produced by the defendant to show that other persons have imitated the manufacture of the plaintiffs, and sold the simulated article, with or without plaintiffs’ knowledge. And, if proved, it would be immaterial unless shown to be so general and so well known to the plaintiffs as to be evidence of an aban- donment by them of their names and trade marks. An alien (friend) is entitled to the same civil remedies in the courts of the United States, at law or in equity, that a citizen of the United States enjoys. (Act of Congress, 24th September, 1789, sec. 11.) In Snowden v. Noah, Hopkins R. 347, and Bell v. Locke, 8 . Paige, 75, the doctrine was held that a bill for an injunction might be maintained by a citizen of the United States against one who assumes the name of the complainant’s newspaper, for the purpose of imposing on the public, and supplanting complain- ant in the good-will of his paper. This principle is the same as that which is contended for the plaintiffs. The recent case of Crates v. Thayer, before Judge Story, is also directly in point. That was a bill for an injunction by alien plaintiffs against ‘engravers. An injunction was ordered, not- withstanding the defendant’s exception to the alienage of the plaintiffs. The plaintiffs in this suit are entitled, by the course and pro- ceedings of courts of equity, to call on this court to restrain the defendant from fraudulently using the names of the plaintiffs. An injunction was granted on the filing of the bill, which the complainants now ask to have made perpetual. Srory, J. Ihave not the slightest dount, in the present case, that a perpetual injunction ought to be granted. The case pre- sented is one of unmitigated and designed infringement of the rights of the plaintiffs, for the purpose of defrauding the public and taking from the plaintiffs the fair earnings of their skill, labor, and enterprise. Various grounds of objection are suggested in the answer of the defendant, none of which appear to me to be of any validity. AMERICAN TRADE MARK CASES. I9 Taylor v. Carpenter. First, it is suggested that the plaintiffs are aliens. Be it so. But in the courts of the United States, under the constitution and laws, they are entitled, being alien friends, to the same protec- tion of their rights as citizens. There is no pretense to say that if a similar false imitation and use of the labels of a citizen, put upon his own manufactured articles, had been designedly and fraudulently perpetrated and acted upon, it would not have been an invasion of his rights, for which our law would have granted ample redress. There is no difference between the case of a citizen and that of an alien friend where his rights are openly violated. Another objection is that the defendant has not had all de- scriptions of thread put up on spools, and labeled by the plain- tiffs. That, if true, would make no difference. It is sufficient, if there be a. violation of their rights by the defendant, in imitat- ing and using any of the labels and spools with a view to deceive the public. There is no evidence to establish that the public were either forewarned or forearmed as to the deception. In point of fact it appears from the evidence that the defendant has imitated and sold both descriptions of spools and labels, red and black, of the plaintiffs. ‘Again, it is said that other persons have imitated the same spools and labels of the plaintiffs and sold the manufacture. But this rather aggravates 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 plain- tiffs ever intended to-surrender their rights to the public at large, or to the invaders thereof in particular. I do not quote cases to establish the principles above stated. They are very familiar to the profession, and are not now sus- ceptible of any doubt. 2 Story Eq., sec. 951. I shall accordingly decree a perpetual injunction, 20 AMERICAN TRADE MARK CASES. Coats v. Holbrook. Coats v. Hotsrook. Court of Chancery of New York. Before Sanvrorp, Acting Vice-Chan- cellor, Fuly, 1845. Reported, 2 Sand. Ch. R. 586. No person has a right to use the names, marks, letters, or other symbols, which another has previously got up or been accustomed to use, in his trade, business or man- ufactures. Equity will restrain such deception and fraudulent use of trade marks by injunction, and will decree an account for damages. It is no answer to the suit, that the simulated article is equal in quality to the genuine. Nor that the maker of the spurious goods, or the jobber who sells them to the retail- ers, informs those who purchase that the article is spurious, or an imitation. A commission merchant who sells the spurious article, knowing its character, is liable to a suit to restrain its further sale, by the proprietor of the trade mark, and will be subject to the costs of such suit. The alienage of the person whose trade marks are simulated, and his residence in a foreign country, do not affect his right to their exclusive use, when he has in- troduced them here, Tue bill in this cause was filed on the 3oth of July, 1844, by James, Peter, and Thomas Coats, manufacturers, constituting the firm of J. & P. Coats, of Paisley, in Scotland, against L. Holbrook, T. 5. Nelson, and W. E. Shepard, commission mer- chants in the city of New York, trading under the name of Hol- brook, Nelson & Co. The bill stated that the complainants for several years have ° been the manufacturers and sellers of spool cotton thread used for sewing, and have forwarded the same to their agents for sale in the city and State of New York, and elsewhere in the United States, where they have resident agents to make sales, and to protect their rights. That they have for years dealt in such thread in New York and elsewhere in the United States, and their sales have been very great. That, with a view to make an honest and superior article of thread, they have gone to an ex- pense of upward of $70,000 upon machinery; and they have succeeded in making their thread a first-rate article in the Ameri- can market, as well as to its quality and goodness, as to the fair- i AMERICAN TRADE MARK CASES. at Coats v. Holbrook. ness of the alleged quantity or length at which it is advertised to be sold. No thread in the market sells higher or more readily, and for a long time it has been well known publicly, as well as to the principal dealers. ‘That manufacturers of thread desig- nate the fineness and the number of cords or strands used in making it, by numbers ; the lower numbers indicating the coarser kinds, and the higher numbers the finer quality and larger num- ber of strands. The complainants’ thread as numbered from 8 to 40 are threads of six cords, while those from 40 to 70 are of four cords, and from 70 to 150 are threads of three cords. Their thread when made is wound on wooden spools or reels, each spool containing a length of two hundred yards. At the end of each spool a circular paper label in black and gilt is put on be- fore the thread is ready for sale, and is on it when sold. The label contains the words “J. & P. Coats’ Best Six Corp” on the outer edge of the circle, and within those words the letters, etc., “200 Yps.” and ‘20,” or such other number as the quality of the thread requires ; and these marks distinguish their thread from that of other manufacturers, and has been and is known as such to the public. That the spools, when labeled, are put up in quantities of twelve, in drab or brownish paper wrappers, each parcel being tied with a twine, and having on its outside a label like that be- fore described, and also an engraving or cut, representing three shields, together with a lion and an eagle as supporters, with the following printed under the same: ‘ Best Srx Corp SpooL Cotton, J. & P. Coats. WarRANTED 200 YARDs.” The bill further stated, that finding a spurious and inferior article of thread, bearing a forged label and impression on the wrapper of the character, style, and firm name used by the com- plainants, had been secretly brought into the market and largely sold in the city of New York and other parts of the United States as the thread so made by them, the complainants, by their agent, resident in that city, set about tracing out the wrong- doers, and at length founda retail merchant who had bought the spurious article of a jobber in Cedar street, named Hazleton. That Hazleton, when called upon, gave Holbrook, Nelson & Co., as the venders of the article to him. That the latter firm 22 AMERICAN TRADE MARK CASES. Coats D Holbrook. have for some time been selling and continue to sell a spurious article of cotton thread on spool or reel, as and for the com- plainants’ thread, well knowing it is spurious. That the thread which they are thus selling is put upon spools, with a label at each end, with the complainants’ firm name thereon, and in other respects similar to theirs, and the spools put in wrappers similar to those used by the complainants, and having a similar cut or engraving, and similar words printed under it. The com- plainants attached to their bill specimens of the genuine labels put on the ends of their spools, and of the genuine wrappers used upon the parcels when put up in dozens, with the cut or engraving and printed letters and figures. They also attached specimens of the spurious labels and wrappers put upon the thread sold by the defendants. The latter were an exact imita- tion of the former in the letters and figures printed, and in the gen- eral appearance, color, etc., of the label and the cut or engraving, but the cut itself was not as finished as that on the genuine wrap- pers. The number on the specimen attached was 35. The bill further alleged that the defendants well knew that the com- plainants were such manufacturers and venders of the thread known as J. & P. Coats’, as charged in the bill. That with a fraudulent design to put off an inferior or spurious article, and by that means to draw away the customers the latter would other- wise enjoy in the sale of their thread, the defendants have know- ingly sold. such inferior or spurious thread in large quantities to Hazleton and to others, with a view to have it again sold by jobbers and retailers, so that the same might be fraudulently palmed upon and bought by persons requiring the complainants’ thread as the genuine article so manufactured and sold by them. That the spu- rious label, as well as wrapper, state or show, or would give a buyer to believe, that the thread is one made from or with six cords, and that the quantity on each spool ran or measured to the length of two hundred yards; but in proof of such fraud or cheating, the spurious thread is only made with three cords or strands, and was only about one hundred and fifty yards in length on each spool. That the defendants have sold large quantities of this article as the original article so made and sold by the complainants; and AMERICAN TRADE MARK CASES. 23 Coats v. Holbrook. if they are not the makers of it, they know who are or is the maker and getter-up of the spurious article and of the cut ana label, and the engraver and printer thereof; and the bill claimed a discovery in these particulars. That the complainants were the first to use publicly, in selling their thread in the United States, the label and wrapper before described. That their price has been and is forty-five cents a dozen for cash, and forty-seven and a half cents a dozen at eight months’ credit; whereas the spurious article coming from the de- fendants is selling from twenty-five to thirty-seven and a half cents a dozen. And the complainants have suffered serious injury in consequence of such fraudulent conduct of the de- fendants. The bill prayed for a full and minute discovery; that the defendants might account for all the profits made by the sale of the spurious thread, and be compelled to deliver up to be destroyed all that remains in their hands, as well as all the labels and wrap- pers, and plates, blocks, types, and dies for printing the same ; and for a preliminary and a perpetual injunction against the further sale or use of the spurious thread and the counterfeit labels and wrappers, and that the defendants, pay the costs of the suit. The answer admitted the material allegations of this bill as to the complainants’ manufacture and sale of the Coats’ thread, and its trade marks, standing, and character, and of their being the first to use such marks, upon information derived by the de- fendants since the bill was filed. They stated that .their busi- ness is selling domestic goods on commission. That on the 28th of May, 1844, one Malcolm McGregor, of Newark, in the State of New Jersey, a manufacturer of cotton thread, sent to them to sell for his account, on commission, two cases, each containing one hundred dozen spools or reels of cotton thread. The spools were labeled like those stated in the bill, and when received, and when sold, were put up in quantities of twelve, in yellow paper wrappers, tied with twine, and labeled on each side with labels like those on the spools, but not having any cut oc engraving thereon. Shepard, one of the defendants, in two days 24 AMERICAN TRADE MARK CASES. Coats v. Holbrook. afterward, sold the cases to D. G. Hazleton at the price of twenty-seven and a half cents per dozen, payable in thirty days. In July, Shepard received from McGregor two more cases of the same thread. Of these, one hundred and fifty dozen were in wrappers like those first sent, and fifty dozen were in drab or brownish wrappers, with a cut or engraving, being such wrappers as are described in, and one of which is an- nexed to, the bill. These cases were sold to Hazleton at thirty- seven and a half cents per dozen on a credit of eight months. The defendants also received with the first cases a few sample spools which have not been sold. With these exceptions they have never manufactured, sold, or had in their possession, any cotton thread purporting to be made or manufactured by the complainants, or having like names, marks, or wrappers. On Hazleton’s calling on them, after the agent of the complainants had visited him, they authorized him to furnish their names as the sellers to the agent; but the latter never called on them, or made any complaint, or requested them to desist from selling. Shep- ard knew the thread he received was manufactured by Mc- Gregor, but neither he nor they ever sold any of it, professing it to be complainants’ thread, or made by them, or sold any with a design to put off an inferior or spurious article, or to draw away their custom, or to palm off the thread as the genuine article. On the contrary, Shepard sold it to Hazleton, informing him it was an imitation article, made in this country, and he sold it as a thread made of three strands. He supposed the spool to run each two hundred yards in length of the thread, until since the bill was filed. On measuring one of the spools since, it was found to run one hundred and ninety yards. McGregor was the sole maker and getter-up of the article of thread which they sold. They are informed that he procured an engraver in Boston to prepare the plate for the cuts and labels. The defendants denied all fraudulent conduct, as well as the alleged injury to the complainants from their acts. They would have desisted at once, if they had been informed of the com- plainants’ rights, and been requested to desist. They never had in their possession any of the cuts, engravings, or labels, except AMERICAN TRADE MARK CASES. 25 Coats v. Hoalhrooki those on the thread received from McGregor; nor any of the dies, plates, blocks, or cuts. The answer then set forth the defendants’ offer, after the bill was filed, accompanied with the statement of their connection with the matter, to pay to the complainants’ agents the commis- sions they had received on the sales, to deliver up the sample spools on hand, to pay tne complainants’ costs, and to promise in writing never to receive or sell any more of such thread, provided this suit should be discontinued; which offer was declined, the agent requiring an answer to be put into the bill. The answer alleged that no one of the complainants is a citi- zen or resident of the United States, but they are all subjects of the Queen of Great Britain and Ireland. The defendants examined Hazleton as a witness, who testified that he bought the thread of them as an imitation or a spurious article, and never sold it except in the same manner. Shepard told him it was an imitation of Coats’ thread, was only of three cords, and he would not warrant its length. It was put up in wrappers with labels and an engraving as stated in the bill. Shepard offered to sell the witness a large quantity after his first purchase, but at a higher price. The price then came near to Coats’, and that, with the loss of repu- tation in selling a spurious article, weighed in his opinion against the transaction, He sold nearly all he recéived by the case of a hundred dozens. Charles Edwards, for the complainants, made the following points: I. The complainants are entitled to a perpetual injunction. II. The defendants knowingly dealt in the spurious article, and were ready to furnish large quantities. They must pay full costs. III. The decree should be for a perpetual injunction and costs of suit, with liberty, should the compiainants require it, to have a reference to a master to ascertain and report the amount of their damages, and a decree that the defendants pay the amount of such damages, upon the coming in and confirmation of the master’s report. Taylor v. Carpenter, MSS. 26 AMERICAN TRADE MARK CASES. Coats v. Holbrook. Mr. Edwards cited, Blanchard v. Hill, 2 Atk. 484; Knott v. Morgan, 2 Keen, 213; Ransom v. Bentall, 3 Law Journal Rep., N. S., part 2, p. 161; Gout v. Parkinson, 5 London Legal Ob- server, 496, 1833; Syées v. Sykes, 3 B. & C. 541; S.C., 5 Dowl.. & Ryl. 292; Taylor v. Carpenter, before Judge Story, MS., and in 7 Law Reporter, 437, and case with the same title before Chancellor Walworth. F. Butler Wright and F. Angus Manning, for the defendants, made the following points: I. The material allegations of the bill of complainant are shown to be untrue. The bill should therefore be dismissed with costs. 1. It appears that the defendants have not used: the trade marks of the complainants; because the defendants did not manufacture the thread which was sold by them. They sold it merely in the ordinary course of their business as domestic com- mission merchants, having no interest in the sale, excepting the usual commission, Defendants might have moved upon the answer for a dissolution of the injunction. 2. The facts and circumstances attending the sale by defend- ants, affirmatively show their perfect good faith in the transac- tion. It appears that the purchaser was truly told that the thread sold was a domestic article manufactured in New Jersey ; whilst the bill charges that the defendants had made large sales of a spurious article, falsely and fraudulently representing the same to have been manufactured by.the complainants. Fraud is the basis of the bill, and the charge of fraud wholly fails. Com- plainants have failed to show such a user, much less a fraudulent user of the trade marks, the gist of the whole complaint. 3. The complainants have failed to show a continued inten- tion on the part of the defendants to make further sales. This, in any case, would be necessary proof to entitle them to a per- petual injunction. II. Even though a perpetual injunction should be granted, the decree will be on payment of the defendants’ costs. AMERICAN TRADE MARK CASES. 27 Coats v. Holbrook. 1. The complainants should have inquired of the defendants for the information to be discovered before the filing of the bill. 2. The defendants are involved in a litigation entirely unnec- essary. 3. Costs in a chancery suit rest in the sound discretion of the court upon a view of all the circumstances of the case. III. The prayer for a receiver must be denied, because the sum which the complainants under any view of the case would be entitled to on taking the account, is so small that the court would consider it an abuse of its jurisdiction to bring the cause to a hearing for such a paltry sum. IV. In any event the defendants should be allowed the cost subsequent to the time when they offered to do everything which the complainants in their bill of complaint ask for. Messrs. Wright and Manning cited, JJillington v. Fox, 3 Mylne & C. 338; Townsend v. Lawrence, g Wend. 458; East- burn vy. Kirk, 2 J. C. R. 317. Tue Assistant Vice-CHaNcELLor. ‘The principles appli- cable to this case are well settled. A man is not to sell the goods or manufactures of B. under the show or pretense 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 per- son 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 allowed to use the names, letters, marks, or other symbols by which he may palm off upon buyers as the manufactures of another the article he is selling; and thereby attract to himself the patronage, that without such deceptive use of such names, etc., would have inured to the benefit of that other person who first got up, or was alone accustomed to use such names, marks, letters, or symbols. One of the earliest cases reported in full is Gout v. Aleploglu, 6 Beav. 6g, note, and 1 Chitty’s Gen. Pr. 721. Gout had been in the habit of manufacturing watches for the Turkish market, where they were known by the marks engraved on them, and 28 AMERICAN TRADE MARK CASES. Coats v. Holbrook. had acquired great repute. The marks were on the inside of the watch, and consisted of his name, in Turkish characters, and the Turkish word, “‘ pessendede,”’ which signifies warranted or approved. ‘There was also ‘‘R. G.,” and a crescent put in relief, and a sprig and crescent. The defendant procured Park- inson to make watches for him, and had engraved on the same part of the watch as Gout was accustomed to do, the words, “ Ralph Gout,” and “* pessendede,” in Turkish characters, which watches the defendant consigned to Constantinople, and sold there to the prejudice of the complainant’s trade. Vice-Chan- cellor Shadwell granted an injunction restraining Aleploglu from sending, or permitting to go, to Constantinople, or Turkey, or to any other place, and from selling and disposing of any watches with Gout’s name or the word ‘ pessendede”’ thereon in Turkish characters, or any watches in imitation of Gout’s watches; and also restraining the defendant and Parkinson from manufacturing or vending such watches. A similar decision was made in the plow case, Ransom v. Bentall, before the vice-chancellor, 3 Law Journal Rep. N. S. 161, and the omnibus case, 2 Keen, 213, Knett v. Morgan, be- fore Lord Langdale, Master of the Rolls, and Day & Martin’s blacking, Day v. Binning, 1 Coop. Ch. R. 439, V.-C. Shadwell. Another, in an action at law for damages, will be found in Sykes v. Sykes, 3 Barn. & C. 541, where the manufacture simu- lated was shot belts and powder flasks, stamped “¢ Sykes’ Patent.” And in Millington v, Fox, 3 Mylne & Cr. 338, the principle was sustained by Lord Cottenham, in a suit relative to the “ Crawley ” steel. In Taylor v. Carpenter, before the chancellor decided on the merits, December 3, 1844, 4 Barbour’s Abstract of Chancellors’ Decisions, 68, I prepared the bill as counsel. The complain- ants, residing in England, had long been the manufacturers of cotton thread, known as “ Taylor’s Persian Thread,” which had acquired an extensive and valuable reputation in the United States, where they sold large quantities of it. Their thread was. put up upon spools, with a printed paper label on each end of the spool, and a certain number of the spools were placed in a AMERICAN TRADE MARK CASES. 26 Coats v. Holbrook. paper envelope, which was stamped with the name of the thread. The defendant had commenced the manufacture, in Massachusetts, of a simulated Taylor’s Persian Thread, and had introduced it into the city of New York for sale. His imitation extended to the appearance and color of the spools and paper labels and en- velopes, as well as the use of the name and title of the thread. In his defense, the defendant insisted that his manufacture was equal in quantity and value to the genuine article, and that the complainants were subjects of a foreign government, and that he, as a citizen of the United States, had a right to use the marks and names in question. The chancellor held that the quality of the imitation was immaterial, and that the alienage of the complainants did not alter their rights; and he decreed a perpetual injunction, with costs, together with an account as to damages. A suit between the same parties, soon after the filing of the bill here, was instituted in the Circuit Court of the United States, in Massachusetts, on the equity side of the Court. Judge Story sustained an injunction granted on filing the bill. The defendant put in an answer, and proofs were taken, upon which the cause came to a hearing before the same eminent judge, in November, 1844. The answer admitted the imitation of Taylor’s black spoo]s and their stamped envelopes, but al- leged that the defendant had never sold any of his manufacture as genuine Taylor’s thread, nor without informing purchasers that they were of his own manufacture; and it set up that the Taylors were aliens, and that the defendants were not account- able to any foreign manufacturer for using, in this country, the names, trade marks, etc., of such manufacturer. The answer also alleged that the defendant’s thread was equal, in quantity and quality, to Taylor’s. It was also set up that other persons were engaged in imitating the complainants’ names, spools, and labels. he proofs disclosed that the defendant had imitated and sold both the red and the black spools and labels. Judge Story, in a pointed opinion, with a copy of which I have been furnished, scouted these various grounds of defense, and de- 390 AMERICAN TRADE MARK CASES. Coats v. Holbrook. creed a perpetual injunction, with the costs of the suit. Taylor v. Carpenter, defectively reported in 7 Law Reporter, 437. The legislature of this State has recently declared its repro- bation of this kind of piracy, in the ‘‘act to punish and prevent frauds in the use of false stamps and labels,” passed May 14, 1845. Laws of 1845, chap. 279, p. 304. This act makes it an offense punishable by fine and imprisonment, either to coun- terfeit such stamps or labels with intent to defraud, or to vend goods, etc., thus stamped without disclosing the fact to the pur- chaser. In this case the attempted imposition upon the public, by the manufacturer of the simulated article, is too barefaced to be questioned. The defendants are merely venders of the spurious goods, and they suppose that they are, on various grounds, ex- empted from the consequences which would be visited upon the manufacturer. Thus, it is said that they have not used the trade marks of the complainants; that they merely sold for McGregor on commission in the usual course of their business, and have acted in perfect good faith. Indeed, they go so far as to say in their answer that they had no information of the com- plainant’s rights, or of their manufacturing Coats’ thread, until after the defendants had sold for McGregor. How this could be true of the defendants, who sold McGregor’s thread as an imitation article made in this country (such is the statement in the answer), I can not understand. Then as to the good faith and morality of the transaction; and in all that I have to say, I refer to the defendant who alone acted in the sales. The defendants received for sale from Mc- Gregor an imitation thread, carefully put up, labeled and stamped as thread made by J. & P. Coats. They probably knew that there was such a house as J. & P. Coats, who made the genuine thread. If they did not they knew perfectly well that some person other than McGregor made such genuine thread ; that it was called ‘* Coats’,” and it was in high repute in this market. ‘They therefore knew that the article they were selling was spurious ; that it was going out to the public under false and deceptive colors, and was designed and well calculated to take AMERICAN TRADE MARK CASES, 31 Coats v. Holbrook. in purchasers who were in pursuit of the genuine thread. They admit that they knew it was only a three-cord thread, although it was stamped and labeled * 7. & P. Coats’ best six cord.” Knowing all these things, they sold it, and so far as they could, put it in the way of imposing upon and swindling the commu- nity. But it is said upon their sale to the jobber, by whom it was again to be sold to the retailer, the defendants told the jobber, truly, 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 communi- cative to the retail merchants and shopkeepers, 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 preposterous. Trade marks, names, labels, etc., are not forged, counterfeited, or imitated with any such honest design or expectation. McGregor’s thread was labeled and stamped with Coats’ name and marks, so that it might be palmed off upon the consumer as being made by Coats. And every man who sold it, whether he made five per cent. or fifty per cent. by the operation, lent himself to the perpetration of the fraud. I have looked into the point of good faith in reference to costs, and not because I deemed it to be of any consequence in respect of the injunction. See Millington v. Fox, above cited. The question of costs remains to be disposed of. There was no occasion for the complainants to apply to the defendants before filing their bill. ‘They found the latter participating in a gross violation of their rights, under circumstances where it was not supposable that the defendants were ignorant of the wrong. The same consideration shows that the litigation can not be deemed to have been unnecessary. The costs subsequent to the bill and injunction stand upon a somewhat different footing from the others. The defendants had disclosed the manufacturer to the com- plainants’ agent, and offered to give up their profits on the sale, 32 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. to pay the costs up to that time, and to stipulate in writing not to sell any more of the spurious thread. If it had turned out they were ignorant of the spuriousness of the thread which they sold, the case would have been within the opinion expressed by Lord Cottenham in Millington v. Fox, and I think they would have been relieved from the subsequent costs. But the offer was not made till about the time the answer was due; in fact, it was on the day the answer was filed. It was not accompanied with a proffer of a perpetual injunction, to which the complainants were entitled, and for which the pro- posed stipulation was not a reasonable substitute ; but it required the bill to be dismissed. And finally, it turns out by the answer, that the defendants were not guiltless of abetting McGregor’s fraud. I can not, under these circumstances, relieve them from any part of the costs. Decree for a perpetual injunction and the costs of suit. Taytor v. CARPENTER. Circuit Court United States, District of Massachusetts. Before Woov- Bury aud Spracuk, JJ., October, 1846. Reported, 2 Wood. & M. 1. An alien friend may bring an action in the courts of the United States for damages sustained by reason of the piratical use of his trade marks. And a custom abroad to use such marks is a bad one, and can not affect the law here. The proper measure of damages is the profit realized upon the sales of goods to which the spurious marks were attached; and it is of no consequence that such goods were equal in quality to the genuine. Such a suit is not barred unless an acquiescence for a period equal to the time fixed by the statute of limitations be shown, or the marks were dedicated to the public, as is prescribed in respect to patents for inventions. Vindictive damages are not to be allowed in an action for the violation of a trade mark. AMERICAN TRADE MARK CASES. 33 Taylor v. Carpenter. Turis was an action on the case, brought by the plaintiffs, citizens of Great Britain, against the defendant, a citizen of Massachusetts, for imitating and using the trade marks of the plaintiffs, on thread made by the defendant, and selling the same as and for plaintiffs’ thread, to his damage in the sum of twenty thousand dollars. The defendant pleaded the general issue, and, at the trial, a verdict was found for plaintiffs for eight hundred dollars. The defendant moved for a new trial upon various alleged misdirections and omissions by Judge Sprague, before whom the case was tried, Choate and Plympton, for the motion. B. R. Curtis, contra. Woopsury, J. 1. The first cause assigned for a new trial is, that the judge admitted a document to prove a bill and answer in chancery in New York, which was not legal evidence. 2. The second objection is, that a witness, Warburton, was allowed to testify as to the amounts of certain sales, etc. 3. The third objection as to orders rests on the same founda- tion. 4. So does the fourth objection. . : . : 5. The fifth objection is, that the court, under an allegation of sales by the defendant, . - allowed evidence to be given, etc. 6. The sixth objection is that the court excluded evidence of a general custom in the United States, England, etc. . > pis 7. The seventh exception is similar to the sixth, except that the custom is to have the marks of aliens thus imitated, with a view to have the goods received and used there as if made by those aliens. In respect to these two objections, I am not aware of any principle by which a usage in this or a foreign 34 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. country is competent evidence in defense of a wrong. To be sure it may be weighed by a court in settling the law, if a usage existed here and was ancient and universal, as such an usage sometimes makes law, when there is nothing in it forbidden by the constitution or acts of Congress. 1 Blackstone, 62, 75; 1 Hale’s History of C. L. 1, 2; 1 Reeves’ History of Law, 1; 3 Salk. 112; 1 Taunt. 241; United States v. Mc Daniels, 7 Pet. 15. A custom may be good, though against private rights. 1 Law Rep. 217. And though against a bad by-law. 1 Saund. 312, note; 7 Dowl. & R.747. But usage can not alter a law (7 Peters, 15), though it may be shown against those acquainted with the usage, and conforming to it, to show the law is re- scinded, which might otherwise apply, as in case of non-payment of notes. See Pierpont v. Fowle, post; Conkendorfer v. Preston, 4 How. 317. Again, this usage was not offered to the court to prove what was law here or abroad, but to the jury; nor was it offered as an ancient usage, which is the gist of it, when affecting the law. Nor as one ever existing and tolerated in this country by judi- cial decisions, Nor offered to the jury in mere mitigation of damages, for which purpose it might be competent, so far as re- gards smart money or any vindictive damage, if any such were permissible in a case like this. 2 Green]. Ev., sec. 266; see Scott’s N. P. 574-594. The defendant now argues that this evidence was competent to show an acquiescence by the plaintiff, in the use of his marks, or to show a dedication of them to the public, as they knew that marks of theirs as well as others were used in this way, and without redress, in this country as well as abroad. On this he cites § Scott, 562; Bul. N. P. 30a; 1 Story, 282; 2 Greenl. Ev., sec. 250; 3 Barn & C. 543; 8 Sim. 477. . But I am not aware that a neglect to prosecute, because one believed he had no rights, or from mere procrastination, is any defense at law, whatever it may bein equity (1 Story, 282), except under the statute of limitations pleaded and relied on or under some positive statute, like that as to patents, which avoids the right, if the inventor permits the public to use the patent some time be: , ‘AMERICAN 1‘RADE MARK CASES. 35 Taylor v. Carpenter. fore taking out letters. It will be seen, likewise, that the defend- ant had the benefit of this evidence under another head more appropriate. There is something very abhorrent in allowing such a defense 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. A custom ought to be at least moral and reasonable in order to be upheld. Bacon’s Abr., ‘* Custom,” C. A party can hardly set up his own bad conduct or character in defense to an action, nor justify them when prosecuted, be- cause they may not have been materially worse than those of some other persons. 15 Pick. 506. It is rather an aggravation to the plaintiffs that many others have injured them, as wel] as the defendant. And it is only an argument ad hominem to them, that in England an alien in a case like this can not recover (if such be the usage and law), but can not affect our own sense here of what is moral toward others, what is due to our own self-respect in punishing frauds, and what seems to be demanded from us, both by justice and law, however others may conduct in like cases. 8. The eighth objection is, that the court refused to instruct the jury that the plaintiffs could not recover, because citizens and residents of Great Britain, or foreigners. This seems to be the point most labored and most relied on. The first inquiry under this head is, whether the subject matter ‘here is one over which this court has jurisdiction, and can be prosecuted here at all by an alien friend. Being an action for a wrong or tort to a foreigner gives this court general jurisdiction. But being an action for a particular kind of wrong, an inju- rious deceit to the damage of the plaintiffs, practiced here, though they live abroad, is said to give them no cause of action. It 1s not argued that such conduct toward a citizen by another citizen may not have been held to be actionable, as many suits and legal proceedings of that kind have been sustained (25 Am. 36 AMERICAN TRADE MARK ‘CASES. Tavlor v. Carpenter. Jur. 273; Hopkins R. 347; Bell v. Locke, 8 Paige, 75; Thom- son v. Winchester, 19 Pick. 214; Eden on Inj. 226; Knott v. Morgan, 2 Keen, 213; Day v. Bainning, 1 Cooper, 489'; Adilling- ton v. Fox, 3 Mylne & C. 338; 4 Barn. & C. 541; Can- ham v. ‘fones, 2 Ves. & B. 218); but the counsel ‘for the defendant question the soundness on which these cases have pro- ceeded, and rely on Blanchard v. Hill, 2 Atk. 484, in support of their views. But in Blanchard v. Hill it was merely decided that the court would not enjoin one tradesman from using the same mark with another, a generic one, ‘“‘the Great Mogul.” They admitted, as in Southern v. How, Popham, 144, it was de- cided right, that if one used the same mark “to draw away cus- tomers from the other,” or “to put off bad goods,” or with any fraudulent design, it was actionable. Ransom v. Bentall, 3 L. J., N.S. 1613; Gout v. Parkinson et al., 5 Lond. Leg. Obs. 495; 8 Ves. 2153; so Thomson v. Winchester, 19 Pick. 2143 8 Paige, 75; 4 Man. & G. 386; Sykes v. Sykes, 3 Barn. & C. 541; S.C, 5 Dowl. & R. 292. The law is to be deemed settled then as between citizens, that a suit lies for such a wrong because it violates what one has ap- propriated and made profitable. It impairs public security also in the quality of the article. Scott, N. R. 573. It has been recently held, that if the quality of an article, such as pork, sold under one’s brand, is inferior, the maker of the brand is liable, and it is made expressly punishable or actionable by the French code (B. 3, tit. 2, sec. 4) to use another’s mark. In the next place, in this country, proceedings have been sus- tained in favor of aliens as to their marks, as well as citizens, holding that the former have all the rights in such personal mat- ters here, as citizens, against forgery and deceit, and can resort to this court for their protection. Taylor et al. v. Carpenter, 3 Story, 458; same case on appeal, How. App. Cases, 547. The solicitude has been such to remove any doubt on this point that, in the largest commercial state in the Union, on the 14th of May, 1845, an act was passed not only forbidding the counterfeiting of marks on goods, but punishing it with imprison- ment, and inflicting a like punishment on one who sel/s such AMERICAN TRADE MARK CASES, 37 Taylor v. Carpenter. merchandise with forged marks knowingly. See N. Y. Statute, May 14, 1845. The exceptions to this position, as to the rights of foreigners, I take to be twofold, if no more. One is, that it is not recip- rocal, no such right being granted to exist, and which may be prosecuted by our citizens in Great Britain, where this plain- tiff resides. But this might be a good reason for legislation by Congress, not allowing aliens to have any rights, or to prosecute them in this court, unless they are reciprocal, and allowed to our people in their respective countries. But no such discrimination has ever been made by Congress, and no court could make it by mere construction, without an exercise of- judicial legislation. The cannibal of the Fejees may sue. here in a personal action, though having no courts at home for us to resort to. Another exception is, that the right to one’s marks, if existing at all in foreigners, must be vindicated and prosecuted in conformity to the patent laws, and not by an action on the case like this, independent of those laws. In support of this is urged the analogy from the decision in Taylor, v. Miller, 4 Burr. 2377, that if a common law right ex- isted to the copy of a book, and to sue for violations of it, the interest given by the statute of Anne was a substitute or merger of the common law right, and no suit could be main- tained except under the statute. See also Phillips on Patents, g1; Wm. B. 403. But it has been held here, in the cases before cited, that the ac- tion in this instance still lay at common law, though this point was, perhaps not raised and pressed there so elaborately as here. Nor is it pretended that the right of action here, as at common law, is expressly taken away by the statute. But if taken away, it is done merely by implication. I have no doubt the statute in this case meant to confer some benefit as to copyrights and marks on aliens, which the latter did not before possess, instead of stripping them of any old rights. Our law as to the mere patents and copyrights seems to pro- 38 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. ceed on the ground, that at common law they did not exist. But here no claim is made for them or under them. It is made not for copying, but copying and selling as if the original, and thus is for deceit and fraud. The statute under- takes to confer patents and copyrights when desired, and it was adjudged in Wheaton v. Peters, 8 Peters, 591, that no copyright, as by common law, existed here to a book. But any claims or rights, which did exist before in the manuscript, or in a mark, or for deception and fraud, remain untouched. This last right is to any particular tool or machine, made by an individual; and any injury to it, or deceit in relation to it, may be prosecuted as at common law. : But a mere open and acknowledged copy or imitation of it might probably not be prosecuted, except under the statute. The statute confers such additional protection under a constitu- tional injunction, though with a more sparing hand on foreigners than citizens. There is still another exception, which is urged to this right existing at common law in aliens. It is, that a trade mark may be regarded merely as a generic name, when it comes here from abroad; and that our people have a right to use any generic name-for their goods which they please. : Thus, that ‘* James’ Fever Powders” are now rather a generic name to distinguish a certain chemical substance, than a mark of any individual in which he has a monopoly. See 19 Pick. 216. It is contended that no property exists here in mere words or marks, and that they are unlike the good-will in a trade or store for business. And it is further urged, that if a foreigner can obtain no redress in such a case, and a citizen might, he should not complain, and may remain at home, as in many things he is not allowed here all the rights and privileges of a citizen, and ought not to be. But an alien is not now regarded as “the outside barbartan” he is considered in China, and the struggle in all commercial AMERICAN TRADE MARK CASES. 39 Taylor v. Carpenter. countries for some centuries has been to enlarge his privileges and powers as to all matters of property and trade. It was one of the grievances in Magna Charta, as well as the Declaration of Independence, that the naturalization of foreigners had beer too much obstructed. So too heavy taxation of alien merchants was guarded against in Magna Charta, allowing them ‘to go and come, and buy and sell, without any evil tolls.” 1 Stat. at Large, art. 30; Thomp- son on Charters, 55. It is hence, undoubtedly, that Montesquieu observed, ‘‘that the English have made the protection of foreign merchants an article of their national liberty ;” and Thompson on Charters, p. 232, says, that once they enjoyed it even in war, ‘in common with the clergy and husbandmen, in order that those who prayed, ploughed, and trafficked, might be at peace.” For many years it has been held that pleas of alienage are to be discouraged ; ‘and are a defense not favored in the law. 8 D. & E. 71, 166; 2 Bl. R. 1326; 13 East, 332; 10 Ibid. 326; 9 Ibid. 3213 1 Bos. & Pul. 163, 170; Stephen Pl. 67; Soc. for Prop. Gosp. v. Wheeler et al., 2 Gall. 127 ; Even as long ago as the time of Lord Ch. J. Hale, he saith, “that the law of England rather contracts than extends the dis- ability of aliens, because the shutting out of aliens tends to the loss of people, who, when laboriously employed, are the true riches of any country.” Bac. Ab., “Aliens,” C, note; Went. 427; 2 Roll R. 94. The modern system of reciprocal treaties with foreign nations, adopted by us, has, for a quarter of a century, been breaking down the barriers against aliens. The alien being a resident abroad, makes no difference in his right, or in our jurisdiction, if the subject matter of - the action arises here. If he is an alien, in order to give jurisdiction (7 Peters, 413), he may reside either abroad or here. Again, the complaint here is not so much taking the mark of the plaintiff, as a generic or any other name, as it is selling the thread with such a mark, as and for the plaintiffs’, That is the 40 AMERICAN TRADE MARK CASES. _ Taylor vs ‘Carpenter. gist of the wrong, That is a deceit and injury. See cases first cited, as to 2 Atk. 484. And I do not see why it is not one of those injuries to the personal rights and personal property of the plaintiffs, which, when committed here, should be redressed here in favor of alien friends, no less than citizens. We print, to be sure, foreign books, as Hallam’s History, and put ‘‘Hallam’s History” on the title page. But we do not add to it the words showing it to be a London, or Paris, or Dublin edition, and sell it as such and for such. If we did, it would be reprehensible, and to be discountenanced. So in manufactures, we may strive to imitate the good fabrics of other countries, or try to'surpass them. That is one thing, and is commendable. But if we go farther and adopt their peculiar marks, and sell our goods as and for theirs, we deceive and injure foreigners who owned them, and this, whether the~ fabric be of as good quality or not. 8 Paige, 75; Blofield v. Payne, 4 Barn. & A. 410. If it is inferior, we injure our own people also, in a pecuniary view, as well as in the moral tone of trade, and in national liber- ality. It is said) we are not bound to sacrifice our interests to pro- mote those of others. Chitty on Con. 26. But that is a very differént thing from taking what is valuable from them without acknowledgment or compensation. So we may be, it is said, “reasonably selfish.” But we should not cheat, lie, and deceive to the injury of individuals, whether aliens or citizens Comity and courtesy are due to all friendly strangers, rather than imposition or pillage. Taking their marks and using them, as and for theirs, to their damage, is like preying on a visitor, or inhospitably plundering a wreck on shore. To elevate our own character as a nation, and the purity of our judicial tribunals, it seems to me we ought to go as far in the redress and punishment of these deceptions as can be vindi= cated on any sound principle. Some of the statutes passed in what we consider a compara- AMERICAN TRADE MARK CASES. 41 Taylor v. Carpenter. tively barbarous age, are not without admonitory lessons on this subject. Beside, one referred to, the 9. Edw. 3d, St. 2, ch. 1, empow-. ers-alien merchants to sell and buy freely anywhere, and to have redress, if disturbed, and damages. 1 Stat. at Large, 212. And. 27 Ed. 3d, St. 2, ch. 18, 19, provides that as such merchants “can not often long tarry in one place, we will and grant that speedy right be to them done from day to day and from hour to hour, according to the laws,” etc. 1 Stat. at Large, 281. Again, in the third article of our treaty of 1794, with Eng- land, each power is authorized in America “freely to carry on trade and commerce with each other.” So we are under treaty. obligations to Great Britain and most other European powers, to admit their merchandise on favorable terms, and: to allow their merchants to trade here as those of favored nations. But it would be a mockery of such provisions and engagements, if we prevented them from selling their goods after arriving here (Ch. J. Marshall, in Brown v. State of Maryland, 12 Wheat. 447), unless noxious to health or morals; or if we made onerous dis-' criminations against them, or prevented their receiving the pro- ceeds of their goods, or abstained from yielding protection against injuries to them, or to their marks, See Taylor v. Carpenter, 3 Story, 461. I am not satisfied, then, that the judge did wrong in not charging on this point as desired by the defendants. Nor am I dissatisfied with the verdict in law or fact, in this respect. g. The ninth objection is, that the judge did. not. charge that the plaintiffs had forfeited their right: to sue,.if they knew for a long time these forgeries and sales and did not sue. We have before shown that there is no legal principle to bar such a suit, unless the delay to prosecute is equal to the time fixed in the statute of limitations, or as in patents, the inventor permits a public use so-long, as by the express statutory provision, to be estopped 10. The tenth objection is, that the judge did not instruct the jury that it was competent to infer from certain depositions in 42 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. the case, that the plaintiffs had abandoned their marks to be used by the public. But the further statement under this head, as to what the judge did charge the jury on this point, repels the idea that any error occurred. For he instructed them that, if the use was for such a length of time, and under such circumstances, as to indi- cate a dedication or abandoment of the marks to the public, or a license to use them, the plaintiff could not recover. This ac- cords with the views in Wyette v. Stone, 1 Story, 282, and Pidding v. How, 8 Sim. 479. 11. The eleventh objection is, that the court did not instruct the jury that, if the thread made by the defendant was not in ferior in value to the plaintiffs’, the latter ought not to recover. I concur in the judge’s views that it was no defense as to the plaintiffs’ injury, as the defendant could not have sold his thread so extensively, and thus lessened the plaintiffs’ sales, without ac- companying it by the mark of the plaintiffs, which had obtained an established reputation. The public might not have so much reason to complain if they got as good an article. They would, however, run more risk, not having the guarantee of goodness which they expected, as Taylor’s forged name and mark were palmed on them as gen- uine. 4 Barn. & Ad. 410; 3 Barn. & C. 5413; 4 Man. & G. 179, Nor would they have the remedy against the plaintiffs which they otherwise might have if the article proved inferior to what had been sold under. the genuine brand. To be sure, the plaintiffs, in their declaration, aver that thé thread sold by the defendant was inferior in quality. But the proof of this is no condition precedent to recover damages for the loss of sales, though it would be to recover damages for loss for any injury to the character of their thread. Not proving that last injury, they did not recover for it; but proving large sales by the de- fendant, as and for the plaintiffs, they proved a probable loss of such sales by themselves, and ought to recover for that, as they lost the usual profits on sales to that amount. Blofield v. Payne, 4 Barn. & A. 410. 12. The next objection was, that the plaintiffs, in such last AMERICAN TRADE MARK CASES, 43 Taylor v. Carpenter. case, should recover only nominal damages. But the actual damage suffered by loss of sales by the plaintiffs, which was the ground of recovery, was just as great as if the thread had been inferior, though the credit of their mark and thread might not suffer as much thereby, if it did at all. 13. The next objection conveys an idea not exactly correct, as the judge informed the jury, that though a large dealer, buy- ing of the defendant, might know or be told that the mark was imitated, yet if the defendant knew the thread was to be sold again at retail, without giving that information, and it was so sold, the plaintiffs should recover. This was undoubtedly right; for the defendant was thus ac- cessory to the eventual sales of the thread under a forged stamp as if a true stamp, and he thus took the profits of sales, which would otherwise have gone to the plaintiffs and their agents. 3 Barn. & C. 541; 5 Dowl. & R. 292.' 14. On the question of damages, however, in respect to giv- ing ‘¢ exemplary ” ones, there is some doubt whether the charge was in the exact form deemed proper under modern analyses and decisions on this point. 3 Am. Jur. 287-308, by Metcalf; 2 Greenl. Ev., sec. 266-272; 19 Pick. 216; 7 Law Rep. 530. That the jury should have given more than nominal damages, I have no doubt; and I have as little doubt that there were mate- rials enough in the case from which to estimate actual damages, such as the probable extent of sales by the defendant under these marks, and the loss of sales and profits therein by the plaintiffs. The jury would, in a case like this, if a known and deliberate imitation, often renewed and very prejudicial to the plaintiffs, not be very nice in their data and inferences, but be sure to give enough to cover all losses, and ample indemnity. 2 Ma. & Sel. 77; 13 Conn. 320; 6 Cowen, 254; 7 Man. 251. Not ‘¢ smart money,” or ‘vindictive damages,” but full atonement for the wrong done. 8 Car. & P. 7; 7 Man. & G. 1033; 5 Watts, 3753 5 Taunt. 442. In a case like this, if in any, no reason exists for giving greater damages than have actually been sustained, or what have been called compensatory. Tracy v. Swartwout, 10 Pet. 81. 44 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. There is nothing peculiarly atrocious in the conduct of the de- fendant to be punished: by damages, and in no other way, as a public example, considering the blamable usages which exist on this subject. So in very corrupt or flagitious wrongs, if a crimi- nal prosecution lies for the public offense, I do not see much justification for what are called vindictive damages there, or smart money in the civil suit, as the criminal one covers them. Sinclair v. Tarbox, 2 N. H. 135. Yet what may be allowable in other cases it may not be proper to decide here, but leave them to be considered when those of a different character from this occur. See Sedgwick on Dam- ages, 39; 2 Greenl. Ev., sec. 253-256, and books before cited ; Sanborn v. Neilson, 1 N. H. 501; Whipple v. Walpole, 10 Ibid. 130. If here, by ‘“Sexemplary damages,” the judge meant a full in- demnity for the individual wrong in every equitable view, and thus, by such an example, operating in a preventive manner the more effectually against a repetition of such injuries, then no error happened on his part. So, if he, in the hurry of the trial, used language which the jury were likely to construe as going beyond that. range of in- demnity, yet, in point of fact, the jury did not give more than was sufficient to make the plaintiff whole, but rather less than that amount. This state of things does not seem to constitute a good ground for a new trial, It would be idle and worthless, even to the defendant, to have another trial, with no probability of lessening the amount of the verdict. My associate, who tried the cause, entertaining this opinion as. to the verdict for $800, and. seeing nothing myself which, is apparently exorbitant in that sum, I do not feel justified in dis- turbing it. Wiggin v. Coffin, 3 Story, II. SpraGUE, D. J., expressed his concurrence. New TRIAL refused, and judgment on the verdict. AMERICAN TRADE MARK CASES. 45 -Taylor ». Carpenter. TayLtor v. CARPENTER. Court for the Correction of Errors of New York, December, 1846. On Appeal from Watworts, Chancellor. Reported, 11 Paige, 292, and 2 Sand. Ch. R. 603. There is no difference between citizens and aliens, in respect of their rights in trade marks, or their claim to have such rights protected in our courts. The court of chancery will grant an injunction against the unauthorized use of a manufacturer’s or vender’s trade marks, and will decree the payment of the dam- ages sustained thereby. Where one intentionally uses or closely imitates another’s trade marks, on merchandise or manufactures, the law presumes it to have been done for the fraudulent pur- “poses 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 supplanting him in the, good will of his trade or business. And, in such a case, it is wholly immaterial whether the simulated article is, or is not, of equal goodness and value with the genuine. “The right thus protected does not partake of the nature and character of a patent or copyright. Per Spencer, Senator. The defendant who is found to have pirated trade marks must pay the costs of suit. ‘The venders of an article of trade or manufacture, who have established or become entitled to a particular trade mark, which they use to distinguish such article, are entitled to be protected in its use, although they do not manufacture the goods. Per Lort, Senator. The protection of trade marks is among the highest incentives to ingenuity, exertion, and fidelity, and one of the greatest securities to the public against imposition. Per SPENCER, Senator. ‘Tue bill was filed berore the chancellor by John Taylor and William Taylor against Daniels Carpenter, in March, 1843. The stating part of the bill was in these words: ‘*Humbly complaining—show unto your honor your orators, John Taylor and William Taylor, of the borough of Leicester, in that part of the kingdom of Great Britain called England; that for many years past they have been very extensively engaged 46 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. in manufacturing sewing cotton thread at Leicester aforesaid, and vending the same in large quantities, not only in England, but throughout the United States, and in particular in the city and State of New York. That their said thread is, and for many years has been put up for sale in spools, and labeled on the top of the spool ‘Taylor’s Persian Thread,’ and on the bottom of the spool ‘J. & W. Taylor, Leicester,’ each spool usually con- taining two hundred yards or three hundred yards of thread—and the spools containing two hundred yards being black, and labeled ‘200 yds.’ on the bottom of the spool, and those containing three hundred yards being red, and labeled ‘300 yds.’ on the bottom of the spool—and on the center of the same label, on the bottom of each spool, is stamped the symbol or print of a lion rampant. ‘Your orators further show unto your honor, that their said thread has been, and is manufactured of various sizes and numbers, to meet the wants of the trade; and by means of the care, skill, and fidelity with which your orators have conducted the manu- facture thereof for a series of years, their said thread has acquired a great reputation with the trade throughout the United States, and large quantities of the same are constantly required from your orators to supply the regular demand for the consumption of the country. And your orators have established agencies for the sale thereof, to the wholesale dealers and jobbers in the cities . of Boston, New York, Philadelphia, and New Orleans; and in addition thereto, your orators employ Benjamin Warburton, now residing in said city of New York, as thejr general agent for the United States, in relation to the sale of their said spool sewing cotton thread. ‘And your orators further show unto your honor that their said thread is known and distinguished by the trade and the pub- lic as ‘‘Taylor’s Persian Thread ;’ and that your orators were the original manufacturers thereof, and the first who introduced the same to the public. That your orators’ said general agent, about three weeks since, hearing that complaints were made of the quality of ‘Taylor’s Persian Thread,’ proceeded to investigate the cause of such complaints, and thereupon ascertained that a AMERICAN TRADE MARK CASES. 47 Taylor v. Carpenter. spurious article of spool sewing cotton thread was offered for sale by sundry jobbers in the said city of New York, as and for your orators’ Persian thread; and that such complaints had arisen from the fraudulent imposition of such spurious article upon the public. “Your orators further show unto your honor, that their said agent further ascertained upon inquiry, and your orators charge the facts to be, that the said spurious thread so sold, and offered for sale in the said city of New York, was furnished to the said jobbers by one Daniels Carpenter, of Foxborough, in the State of Massachusetts; that the said Daniels Carpenter, disregarding the rights of your orators, and fraudulently designing to procure the custom and trade of persons who are in the habit of vending and using your orators’ said ‘Persian Thread,’ and to induce them and the public to believe that his said thread was in fact manufactured by your orators, has engaged extensively in the manufacture of sewing cotton thread and caused the same to be put up for sale in spools similar to those used by your orators, and so colored, stamped, and labeled, as to resemble exactly the said spools used by your orators. And the said spool sewing cotton thread, prepared by the said Daniels Carpenter, and sold by him, and in which he is engaged in selling, as aforesaid, is an exact imitation of the same article which your orators,had been manu- facturing as aforesaid, and selling in the United States for many years before the said Daniels Carpenter commenced his said fraud- ulent imitation thereof. And the said spurious article, although inferior in quality to the genuine Persian thread manufactured by your orators, can only be distinguished therefrom, so exact is the said Daniels Carpenter’s imitation, as aforesaid, by a careful examination of its quality, and by its falling short in the number of yards contained on each spool, from the number marked thereon as the contents thereof. And that the general appear- ance of the spurious article is the same as that of your orators’ genuine thread, and well calculated to deceive those dealing in the purchase and sale thereof. “Your orators further show unto your honor that their said general agent has obtained specimens of the said spurious Per- 48 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. sian thread, so sold by the said Daniels Carpenter; that in the “specimens thus obtained the thread is put upon black spools of the same size and appearance with those used by your orators; on the top of which spurious spools there is pasted a round paper label, partly gilt, on which is printed in a circle the words *Taylor’s Persian Thread,’ and in the center of the circle the number of the thread, and on the other end or bottom of such spurious spools there is pasted-a round white paper label, on which is printed in a circle the words ‘J. & W. Taylor, Lei- cester,’ and across the label the words ‘200 yds.,’ and in the center of the label there is impressed the figure or symbol of a lion rampant. And in all these particulars of the labels on each end of the said spurious spools of thread, they are exactly like the labels on the respective ends of the spools of your orators’ genuine Persian thread, as hereinbefore stated. “Your orators further show unto your honor, that they have not yet ascertained the extent to which the said Daniels Carpen- ter has carried his said fraudulent imitation of your orators’ said thread. But your orators’ said general agent has found the same offered for sale to the trade in three wholesale or jobbing houses in the said city of New York, as ‘Taylor’s Persian Thread.’ From which your orators believe, and they therefore charge on their belief, that the said Daniels Carpenter has been, and is engaged in selling his said fraudulent and spurious imitation of your orators’ Persian ‘thread to a large extent, in various places in the United States, and as your orators are informed and believe, the said Daniels Carpenter is expected daily to arrive in the city of New York to make further sales of his said imitation of your orators’ thread. “‘Your orators further show unto your honor, that the said fraudulent and inequitable conduct of the said Daniels Carpenter is not only injuring them in the sales of their said genuine Per- sian thread, and the profits which they would otherwise reason- ably make thereon; but by’the inferior quality and false measure of the said spurious Persian thread is greatly prejudicing the reputation of your orators’ said Persian thread in the market ; and, unless the said imitation is discontinued or prevented, will AMERICAN TRADE MARK CASES. 49 Taylor v. Carpenter. ultimately destroy the character and standing of the genuine article. ‘And your orators also charge that the said spurious article is a fraud and deception upon such of the citizens of New York, and of the United States, as purchase the same, believing it to be the genuine article manufactured by your orators.” The bill prayed for a discovery, and for an injunction and account in these words, viz: ‘‘And that the said Daniels Car- penter, and his attorneys, solicitors, counselors, agents, and servants, may be enjoined and restrained from manufacturing, selling, or offering for sale, directly or indirectly, any spool cot- ton sewing thread, manufactured by him, or any other person than your orators, under the denomination of Taylor’s Persian Thread, or on spools with the words Taylor’s Persian Thread, or J. & W. Taylor, Leicester, printed, painted, written, or stamped, or attached or pasted thereon; or on spools so made or having any label, printing, or device thereon, in such manner as to be a colorable imitation of your orators’ said Persian thread, usually known as ‘ Taylor’s Persian Thread.’ And that the said Daniels Carpenter may be decreed to account to your orators for all the profits which he has made by the sale of his said fraudulent imitation of your orators’ thread, and all the profits which your orators would have made on the sales of their genu- ine thread but for the said Daniels Carpenter’s equitable and wanton piracy of their said names, spools, and labels.” The bill also prayed for general relief, and for process of sub- pena and injunction. In his answer the defendant stated as follows: ‘That he is not acquainted with the complainants, but he is informed and he believes that they are subjects of Great Britain, and not citizens of the United States; and he is willing to, and does admit, that they reside in Leicester, in England; and that he is informed and believes that the complainants, or some other person of the same name with the complainants, have been en- gaged in vending sewing cotton thread, but in what quantities, or where in England, he is unable to answer ; but he is informed and believes, and therefore admits, that such thread has been 50 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. vended in large quantities throughout the United States, includ- ing the city of New York; but he is informed and believes, that the complainants are not the manufacturers of the thread so vended by them. And he admits that the thread so sold by the complainants, or persons of the same name, for many years has been put up for sale on spools, and labeled and marked as in the bill of complaint, for such purpose, is set forth. And that such thread has been and is manufactured of various sizes and numbers to meet the wants of the trade. ‘And this he further admits, that the thread so vended by the complainants, and so marked and labeled, has acquired a great reputation in the trade throughout the United States, and that such a reputation is founded on the manufacture thereof, and that large quantities are required to supply the regular demand for the consumption of the country. And he is informed and believes, that the complainants have established agencies in the places and for the purposes mentioned in the said bill, and that Benjamin Warburton is their general agent in the United States. And he admits that such thread is distinguished by the trade and ipublic as ‘ Taylor’s Persian Thread,’ but he does not know, nor ‘is he informed save by the said bill, that the complainants were ‘the original manufacturers thereof, or the first who introduced the same to the public. ‘That this defendant is a citizen of the United States, and of ithe State of Massachusetts, residing at Foxborough in that State; and that he has engaged, though not extensively, in the manu- facture of sewing cotton thread, which he has caused to be put up for sale on spools similar to those used by complainants, and so colored, stamped, and labeled as to resemble exactly, or as nearly as the same could be done, the spools sold by the com- plainants. And he admits, that the spool sewing cotton thread prepared by him and sold by him, which he is engaged in selling, is an exact imitation of the same article which the complainants had been selling in the United States for many years before the defendant commenced manufacturing his thread in imitation thereof. “That the thread so manufactured and put up and sold by AMERICAN TRADE MARK CASES. gl Taylor ». Carpenter. him in imitation of the thread vended by the complainants, 1s in all respects as good as the thread vended by them, and each spool so put up by the defendant contains as many yards of thread as a spool of like appearance vended by the complainants. “That he has furnished his thread in the city of New York to the firms of Russell, Mattison, Taylor & Co., and Shepard & Howe, to be sold, and has sold some of his thread to other houses in that city, but they well knew this defendant manufac~- tured the same; and as he is informed and believes neither of those firms or houses ever sold, or offered for sale any of said thread, pretending or stating that it was the same as that vended by the complainants, but on the contrary they always informed the purchasers thereof, that the same was manufactured by this defendant. “And this defendant submits to this court that the said com- plainants, subjects of Great Britain, and not citizens of the United States, could not and did not acquire by reason or means of any matters or things set forth in the said bill of complaint, nor have they now, any exclusive right or rights of vending spool sewing cotton thread, put up or to be put up and labeled, or marked in the manner set forth in the bill; but that this defend- ant has full right and lawful authority, to manufacture thread in the United States, and to put up the same on spools, and with labels in all respects similar to the thread, spools, and labels vended by the complainants, and to sell and dispose of the same in any part of the United States, so prepared, put up, and labeled. And he prays the same advantages from this objection, as if stated by way of plea or demurrer. ‘He admits that the statements continued in the bill, in rela- tion to the spools, labels and marks on which the thread manu- factured by this defendant is put up, are correct and true; and that he has been, until the service of the injunction issued in this cause, engaged in selling his thread, put up, labeled, and marked as aforesaid, to some extent, but not to a large extent, in various places in the United States. And he supposes, and therefore admits, that the introduction of the thread so manufactured by him, in the market, does lessen the amount of sales of thread by 52 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. the complainants, and to that extent the complainants may be injured; but he denies that the reputation of the thread vended by the complainants is at all injured by the means stated in the bill. And he also denies that the thread manufactured by him is inferior in quality, or false in the measure, as charged in the bill. “ He admits that such of the citizens of the United States, and of the State of New York, as purchase the thread manufac- tured by him, believing it to be the thread vended by the com- plainants, are mistaken, and to that extent deceived; but he expressly denies that those citizens are thereby injured, or in any manner damnified. “He says, that before he commenced the manufacture and putting up of the thread as stated, other citizens of the United States had been in the habit, and still continue to manufacture sewing cotton thread, and to put up the same on spools labeled, colored, and marked in imitation of the thread and spools so vended by the complainants, and to sell the same in various parts of the United States.” A general replication was filed to the answer; but no proofs were taken in the cause. After the replication was in, the defendant moved to dissolve the injunction on his answer. When the chancellor decided that motion, it being agreed that it involved the merits of the cause, and the defendant desiring a speedy disposition of the suit with a view to an appeal, a final decree was then made by the assent of the parties, on the 6th of January, 1845. By this decree the injunction was made perpetual, the defendant was charged with the costs of the suit, and the complainants were permitted, at their election, to take a reference to a master to ascertain the damages which they had sustained by reason of the defendant’s simulating their name and trade marks. If they so elected the cause might be set down for further directions upon the master’s report; otherwise the decree was to be considered as final. The following opinion was delivered by his honor the chan- cellor, on deciding the cause, which was argued by AMERICAN TRADE MARK CASES. 53 Taylor v. Carpenter. Murray Hoffman, for the complainants, and ‘Joseph Blunt, for the defendant. THe Cuancettor. The fact that the complainants are sub- jects of another government, and the defendant is a citizen of the United States, as stated in the answer, can not alter the rights of the parties, or deprive the complainants of the favora- ble interposition of this court, if those rights have been violated by the defendant. So far as the subject matter of the suit is concerned, there is no difference between citizens and aliens. And the only question proper to be considered is, whether the defendant has the right, as he insists he has, to pirate the trade marks of the complainants with impunity, and to palm off upon the community a simulated article as the genuine Taylor’s Per- sian thread, manufactured and put up for sale by them. In the case of Bell v. Locke, 8 Paige, 75, 1 had occasion to examine the question, whether an injunction bill could be sus- tained for the fraudulent assumption of the name of the com- plainant’s newspaper, for the purpose of deceiving the public and supplanting him in the good-will of his business; and I then came to the conclusion that this court had jurisdiction to inter- fere for the protection of the complainant’s rights in such a case. I then referred to the case of Knott v. Morgan, 2 Keen, 213, where the present master of the rolls, in England, granted an injunction to restrain the defendant from running an omnibus, having upon it the simulated names and devices which were pre- viously in use by the complainant, for the purpose of inducing the public to believe that it was the complainant’s omnibus, and thus to deprive the latter of a part of the good-will of his busi- ness by this fraudulent device. Since the case of Bell v. Locke was before me, the case of Millington v. Fox, 3 Myl. & Cr. 338, was decided by Lord Cottenham, which fully sustains the claim made by the com- plainants in the present case. There the complainants had for many years been engaged in the manufacturing of steel of a par- ticular name or mark thereon, indicating the person by whom it $4 AMERICAN TRADE MARK CASES Taylor v. Carpenter. was manufactured. The defendants, without being aware that this was the trade mark of the complainants, or of any individual, commenced the manufacture and sale of steel with the complain- ants’ marks thereon. And a perpetual injunction was granted against the use of such marks, although the lord chancellor was satisfied no fraud was intended. He says, that having come to the conclusion that the com- plainants were entitled to the marks in question, they -had an undoubted right to the assistance of a court of equity to enforce that title by a perpetual injunction. But as the defendants had given notice of their intention to abandon the use of the marks, as soon as they discovered that they belonged to the complain- ants, they were not charged with costs. A case is also cited by Lord Henly in his treatise upon injunctions, where a manufac- turer of blacking was restrained from using labels in imitation of those used by the complainant in that case. See also Ransom v. Bentall, 3 Law Journal, 161. In the case under consideration, the defendant admits that he has intentionally pirated the complainants’ names, as well as their other marks, and that he put up the spools of thread manufac- tured by him, and stamped and marked with the marks, and so ‘colored, scamped and labeled as to resemble exactly, or as nearly as could be done, the spools used by them. ‘After such an avowal, no one can doubt for a moment that he did it for the fraudulent purpose of inducing the public, or those who were dealing in the article, to believe that it was in fact the thread manufactured and put up by the complainants, and with the intention of supplanting them in the good-will of their trade and business, And it is wholly immaterial, whether the simulated article manufactured by the defendant is, or is not of equal goodness and value to the real ‘* Taylor’s Persian Thread,” manufactured and put up for sale by the complainant. They are, therefore, entitled to the relief prayed in this bill. The injunction must be made perpetual, and the defendant must pay to the complainants their costs of this suit; and if the complainants wish it, they may have a reference to a master to ascertain and report the amount of their damages, and a decree, AMERICAN TRADE MARK CASES. as Taylor v. Carpenter. that the defendant pay the amount of such damages upon the coming in and confirmation of the master’s report. The defendant appealed from the decree of the chancellor to the Court for the Correction of Errors, where the cause was ar- gued in October, 1846, by the same counsel who were heard before the chancellor, and the decree was affirmed on the 30th of December, 1846, by a vote of twenty-two against two. The following opinions were delivered in that court: BEARDSLEY, Justice. ‘The complainants below, the Taylors, reside in England, and are extensive manufacturers of thread, which they sell in the United States, particularly at New York. Their thread has for a long time been put up in spools, labeled on the top of the spools, ‘* Taylor’s Persian Thread,” and on the bottom of the spools, “ J. & W. Taylor, Leicester.” The defendant, Carpenter, has been engaged in the manufac- ture of thread in Massachusetts in imitation of the complainants’, and which he has labeled like theirs. His thread, labeled in this spurious manner, he has sold and offered to sell in the city of New York. An injunction was granted on the bill. The case was heard on bill, answer, and replication, and a decree entered making the injunction perpetual, with costs, etc., and directing a reference to a master to ascertain the damages the complainants had sus- tained by the fraudulent use of their trade marks. 1. The injunction was proper. The complainants have a right to call upon the court to restrain the defendant from fraud- ulently using the words and devices which they had previously taken for the purpose of distinguishing their property. Knote v. Morgan, 2 Keen, 213; Millington v. Fox, 3 Mylne & C. 338; Bell v. Locke, 8 Paige, 75. A man can not be permitted to sell his own goods under the pretense that they were the work of another, when the fact is not so. Taylor v. Carpenter, de- cided by Judge Story. 2. An order for an account is also proper that the remedy may be complete in the case. 3 Mylne & C., supra; Bailey v. Tay- 56 AMERICAN TRADE MARK CASES. Taylor v, Carpenter. lor, x Russ. & M. 73; Whittington v. Wooler, 2 Swanst. 428; Delondre v. Shaw, 2 Sim. 237, was decided on the ground that the plaintiffs had not any interest in the labels and seals. The vice-chancellor said, the court can not protect the copyright of a foreigner; and therefore the fact that the seals were in- vented by Pelletier, a foreigner, did not aid the case. 3. A final decree was proper. The case had been heard on the pleadings. So, at least, I understand the decree as printed at page nine. We can not say whether it were in a condition for final hearing if either party objected. Probably the pleadings disclosed the whole case, and it was by consent heard in full on the merits when the motion to dissolve the injunction was made. The decree should be affirmed with costs. Lott, Sezater. The principal question involved in this case is so fully discussed by the chancellor and by Mr. Justice Story (whose opinion in a cause between the same parties in the United States Circuit Court, Massachusetts district, decided in October term, 1844, has also been laid before this court), that it would, in my opinion, be an act of supererogation to attempt to add to the views presented by them. It is sufficient to say that I concur in those views, and in the result at which they arrived. See also Coats v, Holbrook, 3 N. Y. Leg. Obs. 404, where the subject is elaborately and ably examined. It may be proper, however, to advert to one of the grounds insisted on and urged by the opening counsel of the appellants, in favor of the reversal of the decree appealed from. He appears to assume that the aid of the court of chancery was invoked by the complainants to secure them against a fair, honest, and legitimate competition in their business. Such is not the scope or design of their bill. Its object is to prevent the commission of a fraud, not only on them and to the prejudice of their rights, but on the public, by the sale of an article with an imitation of their ‘ trade mark” thereon in such a manner as to deceive purchasers, and through the false representations thus held out, to deprive the owners thereof of the profits of their skill and enterprise. Honest competition relies only on the intrinsic merits of the AMERICAN TRADE MARK CASES, 57 Taylor v. Carpenter. article brought into the market, and does not require a resort to a false or fraudulent device or token. ‘Tvhat certainly can not deserve the appellation which studiously gives to the product of the pretended superior skill the name and exact external resem- blance and imitation 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 exposed to sale, and operates as a deception and imposition on the dealer. It is to prevent such a course of transaction and dealing, that the interposition of the court of chancery is asked, and I have no doubt it is within its proper jurisdiction to restrain a pro- ceeding of such a character by injunction. It was urged that although it might be a proper case for such relief, if it were a controversy between citizens of the United States, yet that ‘the complainants are foreigners, and not entitled to ask the interfer- ence of the courts of this country except upon the ground ot reciprocal courtesy and comity on the part of their own country, and upon this ground they can not contend, as the legislation of England is eminently hostile to the commercial interest of other nations.” From this position I entirely dissent. It was well said by the counsel for the respondents ‘‘that it is an inauspicious time for the success of such an argument, when the land is sounding with congratulations at the relaxation of England’s commercial code; when it has been asserted by one of her emi- nent statesmen, that the foundations of an amity are now laid which the convulsions of nations shall not shake nor time corrode.” But be that as it may, I trust our courts will never recognize a different rule of right and justice between any class of suitors ; that their records will never show that a fraud by a citizen is sanctioned because it is practiced on a foreigner in the prosecu- tion of a legitimate business within our jurisdiction, or that a suitor is denied the ordinary remedy to protect him in the en- joyment of his rights because he is a ‘‘ foreigner.’ The honor of our country aad the character of its jurisprudence forbid 58 AMERICAN TRADE MARK CASES, Taylor v. Carpenter. that justice and equity shall ever be administered on such nar- row, proscriptive, and inequitable principles. Every dictate of enlightened wisdom requires that a foreigner, especially in a commercial country, shall be entitled to the same protection of his rights as a citizen. If other nations are chargeable with wrong and injustice in this respect, it is certainly no reason why we should follow their exampie. Retaliation in a course of injustice is not a salutary principle to enforce in the administration of justice. But I do not think that England is amenable to the charge to the extent suggested by the counsel of the appellant. All that was decided’ in De- londre {F Pelletier v. Shaw, 2 Sim. 237, cited by him in support of it, is that ‘the court will not protect the copyright of a for- eigner.” The vice-chancellor, however, expressly recognizes the rule that an injunction will be granted to restrain the fraudulent sale of a spurious article, but he says that he could not intend a fraud where none was alleged. It is immaterial, in my opinion, that the complainants were not admitted by the answer to be the manufacturers of the arti- cle. It was conceded that they were the venders, and that they were extensively engaged in the sale thereof in the city of New York and throughout the United States; that they had established agencies in that city, and in several other cities in the Union; and that large quantities were required to supply the regular demand for the consumption of the country. There is nothing shown to impeach or question their right to sell. They, therefore, are the parties to be affected by any fraudulent interference with their sales. ‘Their thread was distinguished by the trade and public as **Taylor’s Persian Thread,” and had acquired a great reputation throughout the United States. It was upon spools with certain marks, which afforded the public the means of identifying it. The thread manufactured by the defendant was prepared in exact imitation of the article sold by the complain- ants, and was put on spools similar to those used by them, and so colored, stamped, and labeled as to resemble them exactly, or as nearly as could be done. It is evident, therefore, that this device was calculated, and no doubt intended, to secure to the AMERICAN TRADE MARK CASES. 59 Taylor v. Carpenter. defendant in the sale of his thread, the benefit of the reputation which the complainants had acquired. It is immaterial whether the thread was of the same or inferior quality. The natural effect of the transaction was to palm on the public a different article from that which they intended to buy, and to interfere with the right of the complainants to profits which the reputation of their article justly entitled them to. The defendant, it is true, alleges in his answer that the deception was made known to the firms or houses to whom he made sales of his thread, and that they never stated or pretended in selling or offering it for sale that it was the same as that vended by the complainants, but on the contrary, that “‘they always informed the purchasers thereof that the same was manufactured by the defendant.” Although this is an allegation, from its very nature not entitled to much credit, yet assuming it to be true, it does not alter the case The thread was an article of general merchandise, and the deception may not have been communicated to dealers or pur- chasers in small quantities. Indeed, it appears incredible that a studied effort should be made to counterfeit an article, yet that the fraud should be as extensively circulated as the reputation of the article itself. The object of such a course is not easily seen, and it is requiring more credulity than is ordinarily possessed to give the allegation credit. The only point remaining to be considered is the objection made to the form of the decree. It purports to have been made on ‘‘a hearing on the pleadings therein, upon a motion to dissolve the injunction issued in the cause,” and is final. It is insisted that such a decree could not be made on a mere motion to dissolve an injunction. If that be concedea, yet it does not clearly and satisfactorily appear that it was so made. The chancellor, in his opinion in support of it, says the case was heard upon bill and answer, as upon a final hearing, and the decree, although it states that it was made upon a motion to dis- solve the injunction, also declares that the cause had ‘‘been brought to a hearing on the pleadings therein ;” terms peculiarly appropriate to a final hearing, and not usual nor applicable upon 60 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. such a motion, ‘These apparently conflicting recitals or decla- rations are reconcilable on the assumption that although it was originally brought on as a mere motion, yet that it was finally, by agreement, considered as a final hearing on bill and answer. The notice in pursuance of which it was heard is not in the case, nor is it shown by the certificate of the register what is the true state of the facts. In this uncertainty we are bound to assume that the decree which is final, was properly made. It is the duty of the party seeking a reversal, clearly to satisfy the court of the error, if any, in that respect. This he has failed to do. Indeed, it is questionable whether the objection can be taken as the ground of an appeal; it partakes more of the nature of an irregularity. At all events, it was reasonable that the attention of the court below should have been called to it by the party now seeking advantage of it, while it might have been corrected without the costs and expense of an appeal. Upon the whole I agree with the counsel for the respondents, that “the interests of trade, the comity of nations, the protec- tion of our citizens, require that so palpable and unblushing a fraud upon the rights of others, as is disclosed in this case, ought not to be permitted to pass unredressed. The decree of the chancellor ought therefore to be affirmed, SPENCER, Senator, The decree of the chancellor is sought to be reversed upon two grounds: First, that it was prematurely pronounced; and, second, that it is contrary to law; in other words, that it is erroneous on the merits. It is true, that when the motion was made to dissolve the pre- liminary injunction which had been issued, a replication to the answer had been filed. The chancellor, instead of simply denying the motion, made the injunction perpetual, and decreed the pay- ment of costs by the defendant, and directed a reference to a master to report damages, etc., if the complainant should elect within thirty days to take it, It may not be as usual to pronaunce a final decree after the AMERICAN TRADE MARK CASES. 61 Taylor ». Carpenter. filing of a replication without taking or closing proofs, as it is when a cause is brought to a hearing on bill and answer. But before a decree will be reversed for this reason it must be made to appear that some substantial rights have been lost, or a valid defense cut off, or that the decree is founded on erro- neous principles, The replication does not affect any of the matters admitted by the answer. It only puts in issue any denial of facts charged in the bill, and any new matters of fact set up in avoidance by the answer. The complainant is then at liberty to prove the facts charged and denied, and to disprove the new matter set up in the answer which the defendant has attempted to establish by proof; and such proofs on both sides must be confined to the allegations contained in the pleadings. On looking with some care into the bill and answer, it seems to me that every material fact stated and charged in the bill is admitted by the answer; and that none of the denials or new matter stated in the answer, if fully proved on the part of the defendant, would in any degree alter the merits of this case. The cause may be now, therefore, decided on its merits. The principle involved in the merits is one of great impor- tance to a manufacturing and commercial community; but it is not novel in its character, or in its application to the present case. It involves the question whether or not our law and courts will protect persons in the enjoyment of the legitimate and well- deserved fruits of their own ingenuity, industry, integrity, and fidelity to the public. And it does not at all trench upon the rights of others, by a course of conduct equally deserving and praiseworthy, to enter the lists of competition and bear off the palm. But it will not allow them by falsehood, fraud, and forgery to filch from another his good name, and share it in common with him, or destroy or impair it. The right claimed by the complainant does not partake of any considerable, if in any degree, of the nature and character of a patent or copy: _at,as urged by the counsel for the defendant. He is at full liberty to manufacture and vend the same kind of 62 AMERICAN TRADE MARK CASES. Taylor ». Carpenter. thread to any extent he pleases and whenever he chooses. He is only required to depend for success upon his own character and fame. He may make his spools red, black, or white, or he may adorn them with his country’s stripes, and stamp upon them its spread eagle instead of the ‘‘rampant lion” of the complainants’ country. He is only required not to pirate upon the rights of others. It is of no small importance to a manufacturer or vender of flour or salt, or to a packer of provisions, that his brand should inspire confidence in the public mind, and thereby secure a ready sale ; and so of every other manufacturer. And the assurance that he can securely enjoy its exclusive benefit is always found to be among the highest incentives to ingenuity, laborious ex- ertion, and honorable and faithful conduct, and is one of the greatest securities to the public against imposition. I would not in the smallest degree relax or restrict this salutary rule of law. It has, in my opinion, been rightly applied in the present case. The cases cited in the opinion of the chancellor and the opin- ion of Mr. Justice Story, in a similar case between these parties, fully sustain its application here. The circumstance urged upon the consideration of this court, that the complainants are British subjects and the defendant is a citizen of Massachusetts, is not worthy of serious refutation. The countries being at peace, the citizens of the one and the subjects of the other are alike entitled to the same measure of justice in our courts. Nor is it worthy of the dignity of this court or of our country to inquire into the truth of the suggestion made by the counsel for the appellant, that the courts of Great Britain do not afford the same protection to our citizens in like cases that the respond- ents ask and seek at our hands. It is enough for us to know that we administer equal and exact justice to all who invoke it. In my opinion, the decree of the chancellor should be affirmed. Bartow, Senator, I fully agree with the learned chancellor in his opinion on the merits of this case. It is with an ill grace AMERICAN TRADE MARK CASES. 63 Taylor v. Carpenter. that the defendant below asks our courts of justice to protect him in the fraud he is practicing upon the rights of even a foreigner. It was not necessary for the complainants to be under a copy- right if they could obtain one in their country, or to be citizens in order to claim protection against counterfeits and forgeries of their labels and marks. The defendant might exercise the right of manufacturing the same kind of spool and thread and put it in the market, and the complainants could not find fault with the competition. But he can not complain if he is compelled to act under his own name and responsibility, or at least is restrained from deceiving the purchaser and filching the good name of another manufacturer. And there is no apology or justification, legal or moral, for his counterfeiting the labels or marks of the complainants in order to succeed -in market by false colors, under the repute the com- plainants’ thread had meritoriously gained, and thereby rear up an unmerited success and competition. Such a course was fraud- ulent in intention and effect, and should be discountenanced by all honest business communities. But it is said the decree rendering the injunction perpetual was premature, and should be reversed. If the decree was pre- maturely entered, it would present a question of regularity which should have been treated as such below and at the proper time. But the defendant has treated it as on the merits, without resorting to the proper practice to avail himself of the question as one of irregularity. I shall consider the case, therefore, as on a submission on bill and answer. The defendant, it is true, denied some material allegations of the bill; but they had a bearing upon the question of damages, rather than the relief on the merits. He admitted sufficient to sustain the bill without fur- ther proof, and to entitle the complainants to their perpetual injunction. He could not subsequently deny and disprove those admissions of his answer, and the proof admissible could bear only upon the question of the amount of damages. Although the complainants put in a general replication, it was not a denial of the admissions of the defendants of the statements of their bill. If it were, it would also be a denial of the bill itself, so far as 64 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. the statements which were admitted were concerned. It is neither the office nor interest of a replication to go so far. Whilst the decree properly rendered the injunction perpetual, it left the question as to damages open to proof; and if the complainants did not see fit to take any testimony on that sub- ject, the defendant can not complain. The decree, therefore, was right, and should be affirmed. Wricnt, Senator. In the statement of the case by the chan- cellor, which precedes his opinion, it is said that the case was heard before him on bill and answer; and he has proceeded to make a final decree in the cause upon that assumption, when, in fact, a replication had been filed, and the cause never was in readiness for a final decree. The motion to the chancellor was simply for an order dissolving the injunction, and he could only, in the then state of the cause, grant or deny that motion, leaving all the questions arising upon the case, so far as the replication put in issue any facts set up, or not admitted in the answer, to be determined upon the final hearing of the cause. I say the chancellor has madea final decree. It is settled that granting a perpetual injunction is a final decree, and it must necessarily be so, as it overcomes all defense, and assumes that the case made by the complainant is fully sustained, either by proof, or by admissions in the answer. 1 Barbour’s Ch. Pr. 615. In the present case a replication has been filed, and the effect of that is to put in issue, by the complainant, every allegation in the answer. And yet a final decree can only be made, or the cause be brought to a hearing, on bill and answer, when every fact and allegation in the answer is admitted to be absolutely true; and it makes no difference, as to the rule and practice, whether the answer be responsive to the bill or not. 1 Hoff- man’s Ch. Pr. 4953 Brinckerhoff v. Brown, 7 Johns. Ch. Rep. 217. The complainant, by filing a replication, confesses that upon the bill and answer he would not be entitled to the relief sought by his bill. He, in effect, asserts that the defense set up is not AMERICAN TRADE MARK CASES, 65 Taylor v. Carpenter. true in point of fact, and calls upon the defendant to sustain his allegation by proof, and does not merely insist that the facts thus alleged, if true, are insufficient to bar the relief sought ; and his replication also confesses that he has made allegations in his bill which are not admitted by the answer, and which he is bound to prove before he can claim the relief asked by his bill. Ddzd/s v. Pittman, 1 Paige, 490. It necessarily follows, from this view of the practice and well-settled course of proceedings in the court of chancery, that the final decree made upon the motion to dissolve the injunction is irregular and should be reversed. It is equally clear to my mind that, if the case is to be decided upon the assertion that no issue was made upon the answer by a rep- lication, the complainants must fail. In this aspect of the case, the absolute verity of the answer is to be taken; and, if it does not admit the full truth of the case as made by the bill, or sets up facts to meet the equity relied upon, the bill must be dis- missed. It is alleged as a substantive and material fact in the bill, that the complainants are manufacturers as well as venders of the thread, the trade marks of which they allege the defendant has simulated. This is, as I think, denied in the answer. Most certainly they have no right to call upon the defendant in this case to account for using a mark upon thread which they simply vend in the market, and in regard to which, so far as the right to use a trade mark is concerned, they are imposing upon the pub- lic a trade mark not their own. The maker and vender is enti- tled to protection against a piracy of dis trade mark, not the person who buys to sell. The public are. led to believe, when they see a trade mark upon any article of merchandise, that the person whose name is there used is the only maker and vender of that article, and that it has certain qualities which distinguish it in value above all others of a like kind. But if any one who sells has the right to use the trade mark—as he certainly has un- less the manufacturer interferes and objects—then I do not see the principle upon which the complainants here have any other or greater rights growing out of the use of this trade mark, than any other vender of the article ; and it will hardly be assumed 66 AMERICAN TRADE MARK CASES. Taylor v. Carpenter. that every seller of “ Persian Thread ” in Great Britain has the right to come here and claim the powerful interposition of the court .of chancery to protect him in using a mark to which he has no higher or more just claim than the mere uss of it upon his spool of cotton thread. The complainants, therefore, were bound to establish the allegations in the bill, that they were the manufacturers of the ‘ Persian Thread,” before they could ask relief, Another ground assumed in the bill is, that the appellant has so exactly imitated the trade marks of the respondents as to de- ceive and impose upon purchasers, who supposed they were buy- ing the genuine ‘‘ Persian Thread.” The appellant does not ad- mit that any such deception has been committed upon a single purchaser, He admits, to be sure, that his mark and the mark of respondents are identical, but says that every individual in New York who purchased his thread knew it to be his own manufacture ; and that he is informed, and believes, that neither of the houses to whom he sold his “* Persian Thread” ever sold, or offered to sell it, as the thread manufactured by the com- plainants, but that they, in every instance, sold it as the thread manufactured by the appellant. This allegation in the answer ‘is also to be taken as true, if a final decree is to be made in this stage of the cause; and it clearly shows that the appellant had never attempted to sell his thread in New York as the thread of the respondents. The bill further alleges, that the thread manufactured and sold by the appellant is inferier in quality to the genuine “ Persian Thread,” and therefore the sale of the real article of the re- spondents is injured in the market. The answer expressly de- nies this, and how the chancellor can sustain the allegation that this is an immaterial fact, I am at a loss to discover. The com- plainants expressly claim an account against the appellant for all the profits which he has made by the sale of his fraudulent imita- tion of their thread, thereby making it a very material question in settling the amount of damages which the respondents have sustained whether their thread is any better than the thread of the appellant. AMERICAN TRADE MARK CASES. 67 Fowle v. Spear. Upon the whole case, I atn satisfied that the decree is wrong, and should be reversed. If the respondents can, by proper evi- dence, bring their case within the rule which forbids the piracy of a trade mark, they will be entitled to the aid of the court of chancery; but upon this case, as made by the bill and answer merely, I think they must fail. Decree affirmed, with costs. Fow.e v. SPEAR. Circuit Court United States, Eastern District of Pennsylvania. Before Kane, J., November, 1847. Reported, 7 Penn. L. F. 176. A court of equity will not, in a contest between persons who profess to be manufacturers of quack medicines, interfere to protect the use of trade marks by injunction. A complainant, whose business is imposition, can not invoke the aid of equity against the piracy of his trade marks. Hence, protection to the words, “ Dr. Wistar’s Balsam of Wild Cherry,” was refused. Tuts was an application for an injunction, upon notice given to the defendant, to restrain him from using wrappers, labels, and bottles resembling those used by the complainant in his busi- ness of selling ‘‘ Wistar’s Balsam of Wild Cherry.” The bill, filed November 17, 1847, stated that Lewis Williams, in 1844, was proprietor and possessor of the original receipt for preparing and compounding a certain valuable medicine invented by Dr. Henry Wistar, of Virginia, called ‘* Wistar’s Balsam of Wild Cherry,” and that the said Williams prepared the same and sold it in Philadelphia, and all the principal cities of the United States, with great profit and advantage; that about the 2oth of May, 1844, Williams transferred to Isaac Butts, of New York, and his assignees, the sole and exclusive right to manu- 68. AMERICAN TRADE MARK CASES. Fowle v. Spzar. facture and sell the said medicine in various states and places, including all the eastern part of the State of Pennsylvania, which right Butts, on the 1st of March, 1845, conveyed to complainant, together with all the apparatus and appurtenances used in manu- facturing the medicine, and all stereotype plates, pamphlets, and bottle molds used in vending the same. The bill contained, as part of it, the advertisements, wrappers, and labels used in ad- vertising the medicine by Fowle, and a bottle filled with the medicine and stamped with the words, ‘‘ Wistar’s Balsam of Wild Cherry, Philadelphia, I. B.,” was deposited with the bill, and referred to as an exhibit. The bill then further alleged, that the defendant, for the purpose of selling some composition which he called “the original Dr. Wistar’s Balsam of Wild Cherry,” and inducing persons to purchase the same as com- plainant’s medicine, had caused to be manufactured bottles, which exactly resembled in size and shape those used by com- plainant, and caused the same inscription to be stamped thereon, except two letters, ‘I. B.,” for which defendant substituted “W. & Co.,” but which, as was done by complainant, defend- ant covered with the label he used, and also used wrappers and labels substantially the same as complainants. “The wrappers, advertisements, and label used by the defendant formed part of complainant’s bill, and one of the bottles used by the defendant was deposited with the bill, and referred to therein as an exhibit. The facts and allegations set forth in the bill were supported by the complainant’s special affidavit thereto, and the affidavits of three other persons were filed in support of certain of the mate- rial facts and allegations thereof. A motion was made for an injunction upon the filing of the bill, and notice given to the defendant, who appeared to oppose it, but no answer was filed, or any affidavits read on his part. Ingraham, for complainant, in support of the motion for an injunction, This case being heard upon the bill and affidavit produced by complainant, the only question is, as to the relief alforded by the law. The application is to restrain the use by the defendant of the complainant’s trade marks, upon the well- AMERICAN TRADE MARK CASES. 69 Fowle v. Spear. known principles which courts of law and equity both enforce. The principle of protection is, that every man has a right to the means of distinguishing his own property from that of another. Blofield v. Payne, 4 Barn. & Adol. 401, where it was decided that although you sell your own goods, you can not use a wrap- per resembling that of another person, and thus represent them as his; and this principle has been applied to a case where no mistake could have been made by a purchaser. Lewis v. Lang- don, 7 Sim. 421. Kang, J. Is there any case in which a court of equity has interfered to protect a quack medicine? Ingraham. The bill alleges that this is a valuable medicine, and that is uncontradicted ; besides, it is not very easy to under- stand what is meant by a guack medicine, and what is meant by a quack, is still harder to define. Kane, J. Ina late trial for libel, in this city, it seemed to be the result of the understanding of the most eminent of the fac- ulty who were examined, that a quack meant a practitioner who prescribed or recommended a secret medicine. Ingraham, That is certainly very intelligible and of easy ap- plication, for, unless I am greatly mistaken, the names of the most eminent of the faculty are to be found to certificates recom- mending ‘* Swaim’s Panacea ;” but the answer to the suggestion is, that if the plaintiff has a right to the claim he makes and appellation he assumes, another person can not use his own name, if it be the same as plaintiff’s, in such a way as to produce an eventual deception. Sykes v. Sykes, 3 Barn. & C. 541; Croft v. Day, 7 Beav. 84; Hine v. Lart, 2 Sand. Ch. R. 600. Damages are recovered at law in such cases. Southern v. How, Poph. 144. And equity interferes by injunction. Dolland v. Bell, Harris v. Callaghan, Rolls, 1825, and Patridge v. Fatman, C. C. of Penn., May, 1847, were cited, and also the case of Tom Pouce or General Thumb, in the ‘* Tribunal de Com- merce,” at Paris, May, 1845, Stratton v. Rogueplau, in which Roqueplau was enjoined from using and announcing in play bills or placards, that one Duhamel would appear in the character of Tom Pouce, which name had become the property of young 70 AMERICAN TRADE MARK CASES. Fowle v. Spéar. Stratton, and therefore no one else could use it. These cases were cited from newspaper reports. Gout v. Aleploglu,6 Beav. 69, n.; Coats v. Holbrook, Taylor v. Carpenter, 2 Sand. Ch. R. 586, 603, were also cited and commented on, and also 2 Keen’s Ch. R. 213, and 2 Man. & Gr. 385. It is not at all mate- rial that the acts complained should be knowingly done. Mil/- ington v. Fox, 3 Mylne & C. 338, which case, for the process was secret there, and Croft v. Day, decided the very point pre- sented for adjudication, the resemblance ‘being sufficient to mislead the ordinary run of purchasers.” Goodman, with whom was Guillou, resisted the motion. This - claim to protection of mere names is of recent origin, and may be traced to the protection afforded in England to persons who have served apprenticeships before they are permitted to work at atrade. It will not be extended here so as to protect a use- /ess compound by protecting the shape of bottles, and any desig- nation that may be used to sell articles not clearly of a useful nature; and that is the answer to Croft v. Day, for there is no allegation that Day & Martin’s blacking itself is protected by a patent. The case in Popham is clearly on that ground; and Lord Hardwicke’s determination not to protect a complainant in the exclusive use of the **Great Mogul” on packs of cards any more than he would prevent ‘one innkeeper from setting up the same sign with another,” 2 Atk. 485, proceeded upon the same principle. The spirit of our patent laws is on the same principle; it must be for some “useful” invention; and in England the doctrine has been applied in practice to publi- cations not deemed of a meritorious character, the piracy of which will not be interfered with by injunction. The cases of Walcott v. Walker, 7 Ves. 1, and Southey v. Sherwood, 2 Meriv. 439, illustrate the course of courts of equity; and the case of Pidding v. How, 8 Sim. 477, is conclusive that in this stage of the cause such a court will not interfere, any more than it will in any doubtful case, 3 Paige Ch. R. 214. In addition to the cases referred to by the complainants, Eden on Injunction, 70; Drewry on Injunction, 2353 and Cannon v. Fones, 2 Ves. & AMERICAN TRADE MARK CASES. 71 Fowle v. Spear. B, 218; Daniel’s Ch. Pr., 1869--70 (Boston ed., 1846), and 3 Dougl. 293, were cited, as also Snowden v. Noah, Hopk. Ch. R. 347. Kane, J. I have considered the application for an inter- locutory injunction in this case, and have come to the con- clusion that it must be refused. The bill sets forth: in substance that the complainant is the manufacturer of a secret medicine, which he calls ** Dr. Wistar’s Balsam of Wild Cherry,” and that he sells it in bottles of a peculiar form, inclosed in wrappers, which bear certain devices and directions. On one of these wrappers, which is made part of the bill, the balsam is described as ‘ta valuable family medi- cine for consumption of the lungs, coughs, colds, asthmas, bron- chitis, croup, whooping-cough, difficulty of breathing, pains in the side or breast, liver complaints, etc.,” to which another paper, also among the exhibits, adds, ‘influenza, hoarseness, pains, or soreness of the chest, etc.” The bill then charges that the defendant has fabricated a different medicine, and is selling it in bottles of the same form, bearing almost the same title, and inclosed in wrappers, which proclaim in the same words exactly the same virtues for the spurious as are asserted by the plaintiff for the genuine balsam. The defendant has not answered or filed any responsive afhdavit. I should most anxiously avoid every appearance of discourtesy toward parties who have been so honorably represented before me, but, speaking from the,record, this is plainly a contest, real ur simulated—and whether it be one or the other, neither the highly respectable counsel nor the court can know—between the venders of a quack medicine, the elements and action of which are not disclosed by the evidence. For aught that appears it may be innocent enough; but though ‘‘ valuable,” as it is sworn to be, to the party who compounds and sells it, it is readily conceivable that to him who buys it it may be far other- wise. It is not the office of chancery to intervene, by its summary process, in controversies like this; ‘‘aon nostrum tantas componere.” 72 AMERICAN TRADE MARK CASES. Partridge v. Menck. Looking at the incongruous group of diseases for which the bal- sam prescribes itself to public credulity, I must apply the prin- ciples of the vice-chancellor’s decision in Pidding v. How, 8 Sim. 477, that a complainant whose business is imposition can not invoke the aid of equity against a piracy of his trade mark. The only remedy in such a case is at law. Morton dismissed. Partripce v. MENCK. Court of Appeals of New York, Fanuary, 1848. On Appeal from Sanv- FoRD, Vice-Chancellor, and Wauwortu, Chancellor. Reported, 2 Sand. Ch. R. 622; 2 Barb. Ch. R. 101, and 1 How. App. Cases, 558. In a suit to restrain the use of trade marks alleged to be simulated, if it appear that the marks used by the defendants, though resembling the complainants in some respects, would not probably deceive the ordinary mass of purchasers, paying the attention which such persons usually do in buying the article in question, an in- junction will not be granted. An imitation is colorable and will be. enjoined, which requires a careful inspection to distinguish its marks and appearance from those of the manufacture imitated, In chese cases the question is not whether the complainant was the original inventor or proprietor of the article made by him, and upon which he now puts his trade mark; nor whether the article made and sold under his trade mark by the de- fendant is equal to his own in quality or value. But the court proceeds on the ground, that the complainant has a valuable interest in the good will of his trade or business; and having appropriated to himself a particular label, sign, or trade mark, indicating to his customers 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 one who attempts to pirate upon the good will of his friends or customers or the patrons of his trade or business, by using such label, sign, or trade marks, without his consent or authority. Where the case is one of doubt in respect of the alleged piracy, the court should not grant or retain an injunction until the cause is heard on pleadings and proofs, or until the complainant has established his right by an action at law. If a label contain a misrepresentation upon its face, it will not be protected by injunc- tion, AMERICAN TRADE MARK CASES. 73 Partridge v. Menck. Tuis case came before the vice-chancellor of the first cir- cuit, on a motion founded upon the bill and answer, to dissolve the preliminary injunction granted by an injunction master on filing the bill. It appeared by the bill that one A. Golsh, who formerly re- sided in the city of New York, commenced the manufacture of a certain kind of friction matches, usually known as locofoco matches, for which he acquired a great patronage. His matches were put up in small paper boxes usually of brown paper, made with a cap or cover, which when placed on the box covered about a third of its length; and his trade marks were cut repre- senting a straw bee-hive surrounded by flowers and foliage, with the words, “* A. Gotsu’s Friction Marcues,” above the hive. Both the cut and the words were printed on a label, which was pasted upon the front of each box. Under the bee-hive was inserted, on the label, usually in two panels, the street and num- ber of the manufactory, and between what streets it was situ- ated, and the place, ‘* New York,” under all. The complainant succeeded Golsh in the business and became entitled to use his trade marks, and had continued to manufac- ture. and sell the same article of matches, using those trade marks, and sometimes a label somewhat varied from the one described: His business had extended so that large quantities of his matches were exported to the West Indies, Mexico, and -South America. The bill charged that the defendants, Menck & Backes, had been and were engaged in making friction matches for sale in New York, purporting to be the Golsh matches. It set forth two labels as being used by the defend- ants upon the brown paper boxes in which they put up their matches. One contained the device of the bee-hive and foliage, over which were printed the words, “ Mencx & Backes’ FRric- tion Marcues, late chemist TO A. GOLSH,” the words “ late chemist” being in caps smaller than the rest; and under the bee-hive were printed in two panels the number and street in which their manufactories were situated, and under all, the place, “ New York.’ The other label contained a better executed bee- hive, with flowers and foliage, the same printed words under it, 74 AMERICAN TRADE MARK CASES. Partridge v. Menck. similarly arranged, and over it the words, ‘‘ Menck & Backes’ Friction MatcHes, MADE By J. Backes, LATE CHEMIST For A. GOLSH ”—the words ‘¢ A. Golsh” being much larger and more prominent than those above them, , The bill alleged that this was a piratical and fraudulent inva- sion of the complainant’s trade marks, and had greatly injured him in the sale of the genuine A. Golsh matches. “That the de- fendants, by the use of their label, intended to deceive purchasers of matches, and lead them to buy theirs, supposing them to be the genuine article, which was known as the Golsh matches. That the other defendant, Samanos, advertised to receive orders for the spurious matches at his store, and was selling them in large quantities in behalf of himself and his co-defendants. The bill prayed for an injunction against the further manufacture and sale and advertising for sale by the defendants of matches so put up and labeled, or of any matches with the word ‘A. Golsh” and a bee-hive labeled on the boxes. The defendants in their answer admitted that Golsh estab- lished the manufacture and sale as alleged, and that the complain. ant succeeded to his business and used his trade marks. ‘They stated that both Golsh and the complainant had at times used other and different marks. “They admitted that they had used and intended to use the label lastly above described on their boxes of matches, but denied that they had for a long time be- fore filing the bill used the Jabel first charged upon them in the bill, or ever used it to any great extent. They stated that the defendant Backes’ was employed by Golsh himself, in the man- ufacture of his matches, and that Golsh communicated to him the mode and mystery of the manufacture as conducted by him, and they apprised the public of the fact by the words on this label. They denied the piracy and fraud charged in the bill, and averred that they always sold the matches as their own manu- facture, and not as Golsh’s or the complainant’s, and never in- tended to have purchasers so believe. That their matches were made in the same mode as Golsh’s, and were better than those made by the complainant. AMERICAN TRADE MARK CASES. 75 Partridge v. Menck. The motion before the vice-chancellor was argued by E. H. Owen and F. B. Cutting, for the defendants, and A. H. Dana and C. Edwards, for the complainants. Tue Vice-CHancetior. My views of the law relative to trade marks were fully stated in the case of Coats v. Holbrook, which was referred to in the argument, and they remain un- changed. In this case the question arises upon a motion to dissolve the injunction, so that I am to be governed as to the facts by the statements contained in the answer. Thus it appears that the defendant, Backes, was formerly a chemist in the employ of A. Golsh; and therefore the label describing him as “late chemist for A. Golsh” is true’ It further appears that the boxes used by the defendants, when the top or cover is put on, exhibit the whole of the words which I have quoted; and when the top is removed the label shows the additional words above those quoted, ** Menck & Backes’ Friction Matches made by J. Backes,” in legible capital letters. Then, in the lower compartments of the label, the places where the de- fendants make and sell them are legibly printed, and ave different from those on the complainant’s label. The mark of the bee- hive is a strong puint of resemblance between the two labels, and although the defendants’ is upon a ground so black and so entirely filled with flowers and herbage as to be manifestly dis- tinguishable on a comparison with the complainant’s label, yet if the case stood on that point only, I should think the imitation was so close as to be calculated to deceive ordinary purchasers. But taking the whole label together as it appears on a single box of matches when offered for sale, the resemblance of the bee-hive is qualified by the distinct terms, “late chemist for A. Golsh ;” so that the article does not purport to emanate from either A. Golsh, or from his successor. Now, although the court will hold any imitation colorable, which requires a careful: inspection to distinguish its marks and 76 AMERICAN TRADE MARK CASES. Partridge v. Menck. appearance from those of the manufacture imitated, it is cer- tainly not bound to interfere when ordinary attention will enable a purchaser to discriminate. It does not suffice to show that persons incapable of reading the labels might be deceived by the resemblance. It must appear that the ordinary mass of pur- chasers paying that attention which such persons usually do in buying the article in question would probably be deceived. Tested by these rules, I do not think that the defendants’ label is an unlawful invasion of the complainant’s trade mark. The complainant’s matches are sold as ‘* A. Golsh’s.” The de- fendants’ are sold as the manufacture of a ‘‘late chemist for A. Golsh.” And any purchaser looking for the ‘*A. Golsh” matches would see at a glance that the defendants’ article was not his, but that it came from some person lately his chemist. Though the words, ‘‘ late chemist for,” are smaller than the words ‘¢A. Golsh,” on the defendants’ label, they are perfectly plain and distinct, and printed in a type only a trifle smaller than the capitals used in our recent published reports. The use of the bee-hive, I must say, leaves a shade of doubt in my mind, but it is not sufficient to warrant me in retaining the injunction on the case as disclosed by the answer. The injunction must be dissolved, The complainant appealed from this order to the chancellor, and the cause was argued before him on the appeal, by S. M. Woodruff and M. T. Reynolds, for the appellant, and Edward Sandford, for the respondent. THe CHANCELLOR. Since the decision of this court in the case of Taylor v. Carpenter, in chancery, December 3, 1844, and which was recently affirmed by the Court for the Correction of Errors, there is no doubt of the power of the court of chan- cery to interfere by injunction to prevent the pirating of trade AMERICAN TRADE MARK CASES. 77 Partridge v. Menck. marks. The question in such cases is not whether the com- plainant was the original inventor or proprietor of the article made by him, and upon which he now puts his trade mark, or whether the article made and sold by the defendant under the complainant’s trade mark, is an article of the same quality or value. But the court proceeds upon the ground that the com- plainant has a valuable interest in the good-will of his trade or business. And that having appropriated to himself a particular label, or sign, or trade mark, indicating to those who wish to give him their patronage that the article is manufactured or sold by him, or by his authority, or that he carries on business at a par- ticular place, he is entitled to protection against a defendant who attempts to pirate upon the good-will of the complainant’s friends or customers, or the patrons of his trade or business by sailing under his flag without his authority or consent. In many cases it may be difficult to determine whether the complainant’s trade mark has been actually pirated in such a manner as to be likely to deceive and impose upon his cus- tomers, or the patrons of his manufactures or business, and in cases of doubt the court should not grant or retain an injunc- tion until tke cause is heard upon the pleadings and proofs, or until the complainant has established his right by an action at law. But if the court sees that the complainant’s trade marks are simulated in such a manner as probably to deceive his cus- tomers or the patrons of his trade or business, the piracy should be checked at once by injunction. In this case I am not satisfied that the label used by the de- fendants will probably have the effect to deceive and impose upon those who are in the habit of buying and using the matches made and sold by the complainant, by inducing them to believe they are of his manufacture. I do not find it distinctly charged in the complainant’s bill, that he has been in the use of his.second label before Menck & Backes assumed the use of their label. But even if there was such a charge, there is about as much difference between that label and the one now used by the defendants, as there is be- tween theirs and the complainant’s first label, which was origi- 78 AMERICAN TRADE MARK CASES. Partridge v. Menck. nally used by Golsh, except as to the form, and appearance of the bee-hive. One difference between the original or Golsh label and the label of the defendant is, that all the printed words and figures on the Golsh label are in black letters upon a white ground, while those on the defendants’ label are in white letters upon a black ground. The Golsh label is also shorter than the defendants’, only reaching upward upon the box to the bottom of the cover, and leaving the whole printed part of the label above the bee-hive containing the words, “A. GOLSH’S Friction MATCHES,” distinctly visible below the cover of the box, while the printing on the defendants’ labels runs -up under the cover of the boxes, leaving nothing visible above the bee-hive except the printed words, ‘*Late Chemist for A. Golsh ;” and the names of the streets and avenues, and the numbers of the building at which the matches are made, at the bottom of these two labels, are entirely different. So that without removing the covers from the boxes, the words upon the two labels strike the eye at once as being very dissim- ilar. And if the covers are removed for the purpose of seeing the parts of the labels which are under them, or to look at the matches, nothing will be found on the Golsh label concealed by the cover of the box; but upon the upper part of the de- fendants’ label will be found the words, ‘*Menck & Backes’ Friction Matches, made by J. Backes,” printed in small caps. The bee-hive upon the Golsh label is so badly made that it is necessary to look at the cut some time to discover what it was intended for; but that upon the defendants’ label is an elegantly constructed device, which no one who had seen an old-fashioned straw bee-hive in the days of his boyhood could for a moment suppose was intended to represent anything else. Indeed, the difference in appearance between these two labels is so great even while the covers remain upon the boxes, that it is hardly possible to suppose a person who had been in the habit of buy- ing and using boxes of matches with the Golsh label, would sup- pose those with the defendants’ labels were the same article from the resemblance between the two labels, AMERICAN TRADE MARK CASES. 79 Partridge #. Menck. It is not necessary that I should notice all the differences in appearance between the defendants’ label and the second label of the complainant. It is sufficient to say that the word Golsh does not appear upon the complainant’s second label, below the cover of the box, and that the only words upon that label, be- low such cover and above the bee-hive, are ‘* Matches without sulphur.” But neither of those words appear upon the defend- ants’ label below the cover, and the two last words are not to be found on any part of their label. The only real resemblance between the complainant’s second label and the defendants’ label, either with or without removing the covers from the boxes, are the bee-hives and the black ground upon which the words and figures of the labels appear. The vice-chancellor was therefore right in refusing to retain the injunction, and the order appealed from must be affirmed with costs. The complainant again appealed to tne court of appeals, where the cause was argued by Dana, Woodruff and Leonard, for appellant, and E. H. Owen, contra. Garopiner, J. If the statements of the bill are analyzed, it will be found that the complainant claims the exclusive right to impose upon the public matches made by himself as those man- ufactured by A. Golsh. He alleges that ‘“‘the label heretofore spoken of, which was used by said Golsh, had an imprint of a bee-hive, and the words, ‘A. Golsh, Friction Matches, 124 Twelfth street, be- tween 5th and 6th avenues, New York,’ which label has been and now is used by your orator without variation.” In every essential particular, as it respected the complainant, the state- ment of the label was false. The matches were not Golsh’s matches, in the sense in which it was intended that purchasers 80 AMERICAN TRADE MARK CASES. Partridge 7. Menck. should understand these terms. He was in Europe, and had no interest or agency in their manufacture. Verbal declarations to a purchaser of the same kind, with a view to a sale of this article, it was conceded, would have been fraudulent. That they were made to assume a more permanent form, and one better calculated to impose upon those who relied upon the rep- utation, personal skill, and integrity of Golsh, can make no difference in the character of the transaction. It is no sufficient answer to this view of the subject that the complainant obtained from Golsh the secret of the manner in which his matches were prepared, or that he manufactured an article in all respects equal to that offered by the former proprietor. , So also did the de- fendants, if we may trust their answer. Nor does it alter the case that the complainant purchased the right to use the name of A. Golsh. The privilege of deceiving the public, even for their own benefit, 1s not a legitimate subject of commerce; and at all events, if the maxim that he who asks equity must come with pure hands, is not altogether obsolete, the complainant has no right to invoke the extraordinary jurisdiction of a court of chan- cery in favor of such a monopoly. The bill is therefore defecté ive for want of equity, and for this reason, as well as for those assigned by the vice-chancellor and chancellor, I think the order of the latter should be affirmed. Wricut, J. A person having adopted and used a particular label or trade mark, to indicate to those who deal with him that an article is manufactured or sold by him, or by his authority, others without his assent have no right, with the view of de- riving advantage from the same, to use such label or trade mark without change, or even with such colorable difference as is calculated to deceive the proprietor’s customers or the patrons of his trade or business. Such label or trade mark, when it has become known, Is a species of property; and the owner will be protected against the attempt of others to appropriate to them- selves, by its use, the benefit which such owner is entitled exclusively to enjoy. But there can be no harm done to the AMERICAN TRADE MARK CASES. 81 Partridge 7. Menck. owner of which he has the right to complain, unless his label or trade mark be appropriated without change, or unless it is simu- lated in such a manner as probably to mislead his customers or the patrons of his trade or business, inducing them to suppose that in purchasing the article marked, they are purchasing that manufactured or sold by such owner. In this case the appellant alleges that the respondents have been offering matches for sale with a label made in imitation of that used by him. This is denied in the answer of the respondents, but the answer admits that the labels annexed to the appellant’s bill of complaint are of the kind used by the respondents. Specimens of labels, as used both by the appellant and respondents, are annexed to such bills. The question of similarity, therefore, can only be de- termined by inspection. Upon inspection, I am unwilling to conclude that the label used by the respondents bears such a resemblance to that used by the appellant as to deceive the customers of the latter, or ordinary purchasers, or that a purchaser may not readily discrim- inate between them by ordinary attention. The only approach to similitude is in the use of the imprint of the bee-hive and of the name “SA. Golsh,”’ but even here there is a distinguishing difference. In all other respects there is no similarity. With ordinary attention, no person can be deceived or misled, and consequently the appellant will not be deprived, by the use of the respondents’ label, of any gains or profits beyond what inight be expected from a fair and successful competition in business. This case is peculiar in one respect. The label of the appel- lant is. calculated to deceive the purchasers of matches, inducing all unacquainted with the agreement between him and Golsh to believe that they are purchasing an article manufactured and sold by Golsh himself, when in truth Golsh has no concern in the manufacture or interest in the business, and has left the country. It is unnecessary at this time to inquire whether, under such circumstances, a court of equity would be bound to protect the 82 AMERICAN TRADE MARK CASES. Coffeen v, Brunton. appellant, as the dissimilarity in the labels is a sufficient ground on which to determine the case in favor of the respondents. The decree of the chancellor should be affirmed, Orper affirmed unanimously. -CorFEEN v. Brunton. Circuit Court United States, District of Indiana. Before McLean, Js May, 1849. Reported, 4 McLean, 516. Where a label or mark of another is used by an individual, with a fraudulent intent to recommend to purchasers an article similar in appearance to one favorably known in the market, an injunction will be granted. -In commercial transactions good faith is required. And where a deception is attempted to be practiced, by recommending a spurious article as genuine, to the injury of a party, chancery will restrain the aggressor. 'In such a case at law, nominal damages will be given where no specific injury has been . proved. ‘In such cases the inquiry is, whether the label or mark is so assimilated to the label or mark of the complainant, as to deceive purchasers. _ And it seems not to be essential that there should be a fraudulent intent proved. ‘This principle as well applies for the.protection of foreigners as citizens. «Hence, where plaintiff was the manufacturer of “ Chinese Liniment,” and defendant made “Ohio Liniment,” the latter was enjoined from issuing circulars which rep- resented the two medicines to be the same. ‘McLean, J. In his bill the plaintiff represents that he was ‘the inventor of a certain medicine, called the “* Chinese Lini- ment,” at great labor and expense; that the medicine was found to be efficacious in the cure of many diseases; and on being made known to the public was purchased extensively, so as to afford a great profit to the plaintiff. It was sold in small bottles, with a suitable label, and accompanied by another paper containing ° AMERICAN TRADE MARK CASES. 83 Coffeen v. Brunton. directions for taking and applying the medicine in various com- plaints. And the complainant represents that the defendant, in the early part of the year 1848, in combination with one John Loree and others, fraudulently issued to the public a preparation called “ Ohio Liniment,” having upon the bottles containing it labels, with directions exactly similar to that used by the com- plainant for his “ Chinese Liniment,” and that the said Brunton pretends that Loree was the inventor of said liniment, and so represents by hand-bills and advertisements ; and that by these ‘representations, which are charged to be false, the defendant has induced the public to believe that the composition sold by him contains the same ingredients as the ‘“‘ Chinese Liniment,” and that by such means it is extensively purchased and used to the injury of the complainant, and the great benefit of the defend- ant. All which representations are alleged to be false, etc. The complainant has not obtained a patent for his alleged in- vention; and if, in this respect, the allegations of his bill be admitted in regard to the invention, yet this gives him no ex- clusive right of property in the medicine. Any other individual has a right to make and sell the same medicine. An exclusive right, as the inventor, can only be obtained under the patent law by a compliance with its provisions. Nor has the complainant an exclusive right to the label, as it is not a book, within the provisions of the statute. On neither of these grounds can the complainant claim an injunction. But if there be found in the representations of the defendant that his liniment is the same as the ** Chinese Liniment,” which recom- mends it to the public to the injury of the complainant, it may be ground for the equitable interposition of this court. Suppose the article sold by the defendant is not only different from the “Chinese Liniment,” but greatly inferior to it, the effect must be to destroy in the market the value of the plaintiff’s liniment. And this is an injury for which a court of law can not give ad- equate compensation. However valuable the plaintiff’s inven- tion may be, yet if it be discredited by a worthless article, it would be impossible, in any reasonable time, to restore the public 84 AMERICAN TRADE MARK CASES. Coffeen v. Brunton. confidence in the genuine article. In this consists the injury ; and the fraud arises from the false representations that the com- position is the same. In Blanchard vy. Hill, 2 Atk. 484, Lord Hardwicke said, “ Every particular trader has some particular mark or stamp; but I do not know any instance of granting an injunction here to restrain one trader from using the same mark with another ; and I think it would be of mischievous consequence to do it.” And he further remarks, “It is not the single act of making use of the mark that was sufficient to maintain the action, but the doing it with a fraudulent design to put off bad cloths by this means, and to draw away customers from the other clothier.” And in support of this doctrine he referred to Popham, 151, where it was held that an action at law would lie against a cloth- worker for using the same mark as another in the same trade. The doctrine of Lord Hardwicke is sustained by subsequent decisions. In Singleton v. Bolton, 3 Doug. 293, Lord Mansfield said, ‘“‘If the defendant had sold a medicine of his own under the plaintiff’s name or mark, there would be a fraud for which an action would lie.” In the case of Sykes v. Sykes, 3 B. & C. 541, it was held that the defendant was liable for attempting to sell an article which he falsely represented as manufactured by the plaintiff. In Canham v. ‘Fones, 2 V. & B. 218, it was held that the defendant had a right to sell the same kind of medicine, of as good or better quality than the plaintiff’s. The court de- cided in the case of Knott v. Morgan, 2 Keen, 213, that a com- pany who run omnibuses, and who were named on their carriages, “The London Conveyance Company,” had a right to call upon a court of chancery to restrain another company who called themselves ‘The London Conveyance Company,” as the words and devices were substantially the same, which would deprive the plaintiffs of profits arising from their established character. And in this case the doctrine of Lord Hardwicke limiting the interference of the court to cases of fraud, is much shaken, if not overruled. In the case of Gout v. Aleploglu, 6 Beav. 69, and 1 Chitty’s Gen, Pr. 721, ‘° The vice-chancellor granted an injunction re- AMERICAN TRADE MARK CASES, 85 Coffeen v. Brunton. straining the defendants from manufacturing and vending watches with the word ‘ Pessendede’ in Turkish characters, or with the plaintiffs’ cypher engraved on them, the plaintiffs having been in the habit for many years of supplying watches for the Turkish markets with those marks and words upon them, although -the defendants used such word and cypher with their own name, and not the names of the plaintiffs, and the word ‘ Pessendede’ signified in the Turkish language ‘ warranted.’ The court there held that in this. case the principle of fraudulent representation applied.” And in Afillington v. Fox, 3 Mylne & C. 338, the court carried the doctrine further, for they granted an injunction where certain marks had been used in ignorance of any other right. From the above it would seem that an intentional fraud is not necessary to entitle the plaintiff to protection, but that where the same mark or label is used, which recommends the article to the public by the established reputation of another, who sells a simi- lar article, and the spurious article can not be distinguished from the genuine one, an injunction will be granted, although there was no intentional fraud. And I am inclined to think that this is a correct view of the principle, for the injury will be neither greater nor less by the knowledge of the party. If he has adopted the same mark which will cause his article to be taken for another in the market, which is known and approved of, it is an injury which the law will redress. In commercial dealings the utmost good faith should be observed, and no one is per- mitted to go into the market with a deception of this character, so as to profit by the ingenuity, good faith, or established repu- tation of another. ‘*A man may have no abstract right to use a particular mark,” as was remarked by Judge Creswell, in Crawshay v. Thompson, 4 Man. & Gr. 386, but when such a mark is used to deceive purchasers, to the injury of a third party, an action will lie. In Bell v. Locke, 8 Paige, 75, Chancellor Walworth held a fraudulent use of the mark was a ground for relief. = Day & Martin, manufacturers of blacking, complained of Bin- ning, who also manufactured blacking, and sold it in bottles simi- 56 AMERICAN TRADE MARK CASES. Coffeen v. Brunton. iar to theirs, and labeled with this difference only: Day & Mar- tin described their blacking as ‘t manufactured” by Day & Martin, whilst Binning described his as ‘equal to Day & Mar- tin’s.” The words, ‘equal to,” were printed in very small type. In that case an injunction was granted, on the ground that the label of the defendant would deceive the purchaser. It has been stated, by Judge Story, that where one of our own citizens fraud- ulently uses the mark of a foreigner, to recommend an article of domestic manufacture, he is liable to an action. In this re- spect there is no difference between a citizen and an alien, In an action at law, Blofield v. Payne, 4 Barn & Ad. 410, the declaration stated that plaintiff, being the inventor and manu- facturer of metallic hones, used certain envelopes for the same, denoting them to be his, and that defendant wrongfully made other hones, wrapped them in envelopes resembling the plain- tiff’s, and sold them as his own, whereby the plaintiff was pre- vented from selling many of his hones, and they were depreci- ated in value and reputation, those of the defendant being in- ferior. And the court held that the plaintiff was entitled to some dam- ages for the invasion of his right by the fraud of the defendants, though he did not prove that their hones were inferior, or that he had sustained any specific damage. Where a right is invaded by a fraudulent act, though no spe- cific injury be proved, some damages, at law, must be given. In the case above cited, on a motion for a new trial, Judge Patter- son said, ‘It is clear the verdict ought to stand.” A publisher of a magazine or newspaper can not assume the name of one previously published, or represent the new publication as a con- tinuation of the former, when it is not so, Hogg v. Kirby, 8 Ves. 213. In the case under consideration, in his label, the plaintiff calls his medicine the ‘Chinese Liniment;” the defendant calls his the “* Ohio Liniment ;” but from the body of the label and of the directions for the use of the medicine, it is clear that the lan- guage of the defendant is so assimilated to that of the plaintiff as to appear to be the same medicine, the alteration being only AMERICAN TRADE MARK CASES, 87 Amoskeag Manufacturing Co. 2. Spear. colorable. ‘There would seem to be no doubt that the intention of Loree, who prepared the liniment sold by the defendant as his agent, was to avail himself of the favorable reputation ac- quired by the ‘Chinese Liniment” in the sale of his, and by most persons it would be received as the same medicine. From the hand-bill published by Loree, the medicine sold by him is as- serted to contain the qualities or ingredients of the ‘¢ Chinese Liniment,” and some other ingredients, which renders it more efficacious. In his bill the plaintiff avers that, this allegation is false, and especially in saying that the ‘Ohio Liniment” con- tains the ingredients of which the ‘¢ Chinese Liniment” is com- posed, The case is considered as coming within the principles above cited, and an injunction is granted to enjoin the defendant from using the label or directions accompanying the liniment he sells, as aforesaid, or other labels or directions, or any advertisements or hand-bills respecting the same words which are used by the complainant in his label and directions, and which tend to pro- duce an impression on the purchaser and the public that the lini- -ment sold by the. defendant contains the same ingredients as the ‘Chinese Liniment,” and is, in effect, the same medicine. On the filing of the answer a motion will be heard to dissolve the injunction. Tue AmoskeaG MawnuracturinGc Co. v. SPEAR. Superior Court of the City of New York. Before Dusr, J., Special Term, October, 1849. Reported, 2 Sand. 8. C. 599. Every manufacturer, and every merchant for whom goods are manufactured, has an un- questionable right to distinguish the goods that he manufactures or sells by a pecu- liar mark or device, so that they may be known as his in the market, and he may thus secure the profit which their superior repute as his may be the means of gaining. 88 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. v. Spear. He is entitled to the protection of the law in the exclusive use of the trade mark thus appropriated by him. One who affixes to his own goods a copy or imitation of the trade mark of another, commits a fraud upon the public and upon the owner of such mark. As to the latter, there may be such a damage as not to admit of compensation. An injunction will be granted with great caution, and not where the legal right is doubtful. The wrong consists in the sale of the goods of one person as being those of another, and it is only to the extent in which the false representation is directly or indirectly made that an injunction ought to be granted. The imitation will be enjoined although it be but partial. Even if the proprietor’s name is omitted, and the imitator’s substituted, yet if the peculiar devices or sym- bols be so copied as to manifest a design to mislead the public, and will probably produce that effect, an injunction will be granted. 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 qual- ity of the fabric manufactured, as distinguished from those marks which indicate the true origin or ownership. An acquiescence by the owner of a trade mark in its use by another, is in the nature of a revocable Jicense, and confers no right after the license is withdrawn. Where plaintiff used the words, ‘‘Amoskeag Manufacturing Company, Power Loom; Yds. »A C A; Amoskeag Falls, N. H.,” and defendant the words, “ Low- ell Premium Ticking, Power Loom; Yds. »A C A 3; Warranted Indigo Blue,” the shape and color of the labels being the same, an injunction was granted. Tuis was a motion to dissolve or modify an injunction which had been granted, ex parte, on giving security. The plaintiffs were a corporation, engaged in the manufacture of cotton goods, at Amoskeag Falls, in the State of New Hamp- shire. _ The principal article made by them was a kind of cloth, called ‘‘ tickings,” and by much care and skill, and at great expense, they had brought this article to such a state of perfec- tion, that the best quality had obtained a high reputation through- out the country. For many years prior to the commencement of the action, they had used a printed label, affixed to the outside of each piece of ticking of the first quality made by them, for the pur- pose of designating it as such ; and this label contained the sep- arate letters, in large conspicuous capitals, A C A, so that this quality of tickings, of their manufacture, became commonly AMERICAN TRADE MARK CASES. " 89 Amoskeag Manufacturing Co. wv. Spear. known in the trade as the “A C A tickings.” The entire label consisted of the following words and letters, and thus stamped: ‘* Amoskeag Manufacturing Company, Power Loom, Yds, A C A, Amoskeag Falls, N. H.” The words were printed in red colors; the label had a fancy border, square externally and elliptical within; and the words contained in the upper and lower lines of the label were printed in a line corresponding with the interior curve of the border. It was averred by the plaintiffs that the letters “A.C. A.” were intended to denote, as follows: A C ,” Amoskeag Com- pany, and “A,” first quality. The defendants were extensive dealers in domestic goods, and among others, in an article of ticking, manufactured at Lowell, in Massachusetts. To this, they caused to be affixed a label, and the same had been used by them for five years before the action was brought, corresponding with that of the plaintiffs’ in size, color, fancy border, position, general arrangement, and size of the letters; and also containing, in large capitals, the letters “A CA” The words of the defendants’ were as follows, and thus arranged: ‘Lowell Premium Tickings, Power Loom, Yds., A C A, Warranted Indigo Blue.” It was averred, that, notwithstanding the difference in the words of the defendants’ label, its imitation of the plaintiffs’ was so close, and its general resemblance so perfect, that, by means of their label, the defendants had sold, and were then selling their tickings as and for the genuine tickings of the plaintiffs’ manufacture, to the great injury of the plaintiffs’ reputation, as well as to their pecuniary damage. A preliminary injunction was granted, restraining the defend- ants, according to the prayer of the complaint, from using on their tickings any label such as that which they had used, or any label similar to the plaintiffs, or an imitation of it, or having thereon the letters “A C A” The answer of the defendants denied that the letters““A C A” in the plaintiffs’ label, were used to denote, or were understood by the trade to denote, ““Amoskeag Company” and “ first qual- ity ;” but that they referred altogether to the quality of the tick- go AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. v. Spear. ; ings; and it denied that the plaintiffs’ tickings were known as the “A C A tickings,” without the addition of the name or place of manufacture ; but that they were known as the “*Amos- keag A C A tickings,” and that they were known as the “Amoskeag A C A tickings,” in like manner as their own were known as the “* Lowell Premium A C A tickings.” The answer also averred, that all manufacturers of -tickings used letters to denote the different qualities, and that, in every case, the name of the maker or place of manufacture was added, to enable the public to distinguish between articles of similar quality made by different manufacturers. The answer also denied that the. use of the defendants’ label was intended to enable them to sell their tickings as those man- ufactured by the plaintiffs, or that it had produced that result ; and admitting that they had sold their tickings as the genuine “A C A tickings,” they averred shat it was always with the. designation that they were ‘¢ Lowell,” and not ‘* Amoskeag,” tickings. Upon these facts and averments two questions arose : First, as to the defendants’ imitation of the plaintiffs’ trade mark, otherwise than by the use of the letters “A C A ;” and, second, as to the use of-those letters. (The above succinct statement of the facts is taken from Mr. Upton’s work on Trade Marks.) The following are copies of the plaintiffs’ and defendants’ labels, surrounded by the same borders: (PLAINTIFF'S LABEL) MANUFACTURING « ZAG co os* Mw POWER-LOOM. x ; Yas. ig & OS SKEAag FALLS, (DEFENDANTS LABEL.) ELL PREMIUM TICKING 40 POWER-LOOM. Yds. ACA WwW. : 4RRANTED np1Go BLY AMERICAN TRADE MARK CASES. gl Amoskeag Manufacturing Co. v. Spear. D. Lord, for the motion. A. F. Smith, and W. Kent, contra, ww Duer, J. Iam satisfied that this injunction ought not to be wholly dissolved, and equally so, that upon the case, as it now stands, it can not be sustained in the full extent to which it has been granted, I shall first state the general rules that, as I conceive, belong to the subject, and then endeavor to apply those rules to the special facts in this case. It has been said, that the doctrine of an exclusive property in trade marks has prevailed from the time of the Year Books, 2 Keen, 218; but it is certain that the jurisdiction in relation to such marks, that courts of equity now exercise, is of recent origin. Originally, the party claiming to be the owner of a trade mark was left to establish his right, and seek his remedy in a court of law. Lord Hardwicke refused an injunction in a case in which, at the present day, one would certainly be granted ; and he accompanied the refusal with the remarks, that ‘‘he knew of no instance of granting an injunction to restrain one trader from using the trade mark of another, and that, in his opinion, it would be of mischievous consequence to do so.” — Blanchard vy. Hill, 2 Atkins, 284. The apprehension of mischievous consequences, that this eminent judge felt and ex- pressed, experience has shown to be groundless, and the doctrine which he rejected is now established, and established, as all admit, upon just and rational grounds. Every manufacturer, and every merchant for whom goods are manufactured, has an unquestionable right to distinguish the goods that he manufactures or sells by a peculiar mark or device, in order that they may be known as his in the market for which he intends them, and that he may thus secure the profits that their superior repute, as his, may be the means of gaining. His trade mark is an assurance to the public of the quality of his goods, and a pledge of his own integrity in their manufacture and sale. To protect him, therefore, in the exclusive use of the mark that he appropriates, is not ony the evident duty of a 9 92 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. v. Spear. court, as an act of justice, but the interests of the public, as well as of the individual, require that the necessary protection shall be given. It is a mistake to suppose that this necessary protection can operate as an injurious restraint upon the freedom of trade. Its direct tendency is to produce and encourage a competition, by which the interests of the public are sure to be promoted ; a competition that stimulates effort and leads to excel- lence, from the certainty of an adequate reward. When we consider 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 distinguished and known, seeks, by deceiving the public, to intercept and divert to his own use, the profits to which the superior skill and enterprise of the other had given him a prior and exclusive title. He endeavors, by a false representation, to effect a dishonorable purpose. He commits a fraud upon the public, and upon the true owner of the trade mark. The purchaser has imposed upon him an article that he never meant to buy, and the owner is robbed of the fruits of the reputation that he has successfully labored to earn. In this case, there is a fraud coupled with a damage, and a court of equity, in refusing to restrain the wrong-doer by an injunc- tion, would violate the principles upon which a large portion of its jurisdiction is founded, and abjure the exercise of its most important functions, the suppression of fraud, and the prevention of a mischief that otherwise may prove to be irreparable. The principles that have now been stated, as the foundation of the jurisdiction of the court, are already expressed or neces- sarily implied in nearly all the decisions; and I refer, especially to the language of the judges in Blofield v. Paine, 4 B. & Ad. 410, and in Crawshay v. Thompson, 4 Man. & Gr. 357, and to the lucid opinions of the master of the rolls in Knott v. Morgan, 2 Keen, 213, and in Croft v. Day, 7 Beav. 84. It is not, how- ever, to be denied that the power of granting an injunction to restrain an unauthorized use of trade marks, ought to be exer- cised with great caution, so as not to transgress the limits that a e AMERICAN TRADE MARK CASES. 93 Amoskeag Manufacturing Co. v. Spear. just regard to the rights. of individuals and the interests of the public must be admitted to prescribe. It is not to be exercised so as to involve a violation of the principles upon which it is founded; it is not to be exercised so as to create a monopoly, unjust to other manufacturers, and of necessity prejudicial to the public. 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 true origin or ownership of the article or fabric to which they are affixed; but he has no right to an 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 name or quality. He has no right to appropriate a sign or sym- bol which, from the nature of the fact which it is used to signify, others may employ with equal truth, and therefore have an | equal right to employ for the same purpose. Were such an ap- propriation to be sanctioned by an injunction, the action of a court of equity would be as injurious to the public as it is now beneficial; it would have the effect, in many instances, of cre- ating a monopoly in the sale of particular goods, as exclusive as if secured by a patent, and freed from any limitation of time. The importance of the distinction that I have endeavored to explain, in its application to the present case, will hereafter appear. At present it is sufficient to say, that in all cases where a trade mark is imitated, the essence of the wrong consists in the sale of the goods of one manufacturer or vender as those of another; and it is only when this false representation is directly or indirectly made, and only to the extent in which it is made, that the party who appeals to the justice of the court can have a title to relief. It is evident, however, that in order to convey a false impres- sion to the mind of the public, as to the true origin and manu- facture of goods, it is not necessary that the imitation of an original trade mark shall be exact or perfect. It may be limited and partial—it may embrace variations that a comparison with the original would instantly disclose; yet a resemblance may still exist that was designed to mislead the public, and the effect in- tendea may have been produced; nor can it be doubted that, 94 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. gv. Spear. whenever this design is apparent, and this effect has followed, an injunction may rightfully be issued, and ought to be issued. To select a case of very partial imitation: No person can be justified in affixing to his own goods, whether by stamp, label, or otherwise, the name or style .of another person, firm, or com- pany, known to be the manufacturers of similar goods, although all other particulars contained in the real trade mark of those manufacturers may be wholly omitted. Such a use of the names or style of other manufacturers is, generally speaking, conclusive evidence of a fraudulent intent; but even where no fraud can be justly imputed, where the use of the name or style originated in mistake, and not in design, although the party may be exempted from damages and cost, the continuance of the use may be justly restrained, since it involves a violation of a right of - property that, if persisted in, with a knowledge of the fact, would be fraudulent. In Millington v. Fox, 3 Mylne & Cr. 338, the defendants had stamped upon the steel which they sold, the words ‘¢ Crowley,” or ‘Crowley Millington,” not knowing or believing that these were the names of other manufacturers, and were stamped by them upon steel of their own manufacture, but supposing that the words were descriptive of the particular kind or quality of the steel. Their mistake, however, was ren- dered apparent by the evidence, and upon this ground, Lord Cottenham, while he wholly acquitted them of any fraudulent design, decreed a perpetual injunction. Such I conceive is the true explanation of a decision, the authority of which the learned counsel for the defendants strenuously denied, while, on the other hand, it was urged by the counsel for the plaintiffs as sup- porting a doctrine much broader than it appears to warrant. Nor is it by any means necessary, in order to render the imi- tation of a trade mark culpable, and justify the interference of the court, that it shall contain any forgery (for, as such, the act, when intentional, deserves to be branded) of the name of the owner of the original mark, or of the person from whom he derived his title. In addition to the name of the proprietor the original mark may exhibit some peculiar device, vignette, or symbol, stamped, printed, or engraved, which he had a perfect AMERICAN TRADE MARK CASES. 95 Amoskeag Manufacturing Co. v. Spear. right to appropriate, and which, as well as:the name, was in- tended as a declaration to the public of his right of property, and was adopted as an additional security against its invasion. 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 substituted— 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. Its object, we may be certain, was not to communicate the truth, but to escape the penalty of false- hood. A fraud is intended, an unlawful gain is meant to be realized, but it is believed or hoped that an injunction may be avoided, and a claim for profits or damages be repelled. The fraud, however, if a court of equity is true to its principles, will 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 imi- tates 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 probable or even possible consequence ; and that an injunction must be granted whenever the public is in fact misled, whether intentionally or otherwise, by the imitation or adoption of marks, forms, or symbols which the party who first employed them had a right to appropriate; and this for the plain reason that when a right of property has been thus acquired, it must be pro- tected. “It must not, however, be inferred from these remarks, that an injunction ought to be granted whenever there exists such a resemblance between trade marks as may induce a belief in the mind of the public that they belong to or designate the goods of the same trader or mauufacturer. It is not enough that the ‘public may be misled, or has been misled. As already intimated, the resemblance must arise from the imitation or adoption of those words, marks, or signs which the person who first em- ployed them had a right to appropriate, as indicating the true origin or ownership of the article or fabric to which they are 96 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. v. Spear. attached ; and the resemblance, when it induces error and gives a title to belief, must amount to a false representation, express or implied, designed or accidental, of the same fact. A trade mark is frequently designed to convey information as to several distinct and independent facts, and therefore contains separate words, marks, or signs, applicable to each, thus indicating not only the origin or ownership of the article or fabric to which it is attached, but its appropriate name, the mode or process of its manufacture, and its peculiar or relative quality. It is certain, however, that the use, by another manufacturer, of the words or signs indicative only of these circumstances, may yet have the effect of misleading the public as to the true origin of the goods, but it would be unreasonable to suppose that he is there- fore precluded from using them as an expression of the facts which they really signify, and which may be just as true in relation to his goods as to those of another. Purchasers may be deceived ; they may buy the goods of one person as those of another ; but they are not deceived by a false representation— they are deceived because certain words or signs suggest a mean- ing to their minds which they do not in reality bear, and were not designed to convey. We may draw an illustration from the present case. The goods of the defendants, to which their trade mark is attached, are certainly ‘“tickings.” They are woven by a ‘‘power loom,” and they are the first quality of the tickings which they manufacture or sell. Hence, they have a perfect right to print or stamp upon their lable the words “¢ Tick- ings,” ‘* Power-loom,” and “ First Quality,” or ‘¢ Superfine; ” nor can I believe that their right to do so would in the slightést degree be impaired or affected were it proved that the plaintiffs had previously, and for a long series of years, used the same words in their own trade mark upon similar goods, and had founded upon such use a claim of exclusive property. Nor would the case, in my judgment, be altered, should it appear that, owing to these circumstances, the plaintiff’s tickings had become generally known in the market as ‘¢ Power-loom Tick- ings,” or ‘¢ Superfine Tickings,” so as to induce a general belief that all tickings upon which these words were labeled were in AMERICAN TRADE MARK CASES, 97 Amoskeag Manufacturing Co. w. Spear. reality their manufacture. This error, however general, could never confer the right of property which it supposes to exist. The counsel for the defendants strenuously insisted that names can not be appropriated; that a just title to their exclusive use can never be acquired ; and he doubtless referred to those names, general or specific, of things, words, or qualities, which form a part of our common language, and which all of us, therefore, have a right to employ when we wish to communicate the facts they are used to signify ; and thus explained, the proposition, so far from being at all doubtful, is a certain, and in its application to cases like the present, a luminous and a guiding truth. The positions that have been thus stated and illustrated appear to me so evidently true as not to require any support ftom authority. But the authorities are in fact numerous and deci- sive, and to a few of the cases I shall now refer. The earliest case is Singleton v. Bolton, 3 Doug. 293. The plaintiff's father, and after his death the plaintiff, had been for a long time in the practice of selling a particular medicine, under the name of ‘*Doctor Johnson’s Yellow Ointment.” Defend- ant had commenced selling the same ointment under the same name; and for this supposed invasion of his exclusive right,. the plaintiff brought his action. Although these facts were proved upon the trial, the plaintiff was nonsuited, and the nonsuit was confirmed by the court of King’s Bench. Lord Mansfield, in giving the opinion of the court, said that it was not pretended that the plaintiff had any exclusive right in the medicine itself, and the defendant had therefore an equal right to prepare and sell it under the same name that the plaintiff used, there being no evidence to show that he sold it as if prepared by the plain- tif; in other words, there being no false representation. In this case, the words “‘ Doctor Johnson” were the name of the inventor of the medicine, but by long use they had become a part of the proper name of the medicine itself, which name all: persons had consequently an equal right to employ. The case of Canham v. Jones, 2 Ves. & B. 218, was decided by the vice-chancellor (Sir Thomas Plumer) upon the same principle. The bill was filed to restrain the defendant from preparing and ‘ 98 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. v. Spear. selling a medicine called ‘* Velno’s Vegetable Syrup,” and it asserted that the plaintiff had acquired an exclusive right in the medicine itself, and in the use of the name by which it was generally known. To this bill there was a general demurrer, and upon the argument the plaintiff’s counsel did not attempt to maintain his case upon the ground that he could justly claim an exclusive right in the medicine; but they insisted that he had acquired the right, by prior occupation, of using exclusively the particular name by which the medicine was called, and that the defendant was guilty of a fraudulent invasion of this right in selling the composition prepared by himself by the same name. The vice-chancellor was, however, of the opinion that, as the plaintiff had no exclusive right in the medicine, it was a neces- sary consequence that he could have none in the use of its name, and therefore allowed the demurrer. Perry v. Truefitt, 6 Beav. 66. The plaintiff was the original ‘vender of a medicine, which he labeled as ‘* Perry’s Medicated ‘Mexican Balm.” The defendant afterward prepared and sold ‘the same, or a similar medicine, which he labeled as ‘* Truefitt’s ‘Medicated Mexican Balm.” The bill was in the usual form for .an injunction and an account; an injunction was denied, but although the master of the rolls, when he refused it, retained ithe bill for the purpose of enabling the plaintiff to establish his right by an action at law, he was evidently of opinion that his ‘legal right could never be established. His opinion evidently ‘was, that as the words ‘‘ Medicated Mexican Baim” might be just as true a description of the medicine of the defendant as of ‘that of the plaintiff, the former had an equal right to use them. This opinion seems to cover the whole ground. ‘* Balm” was ‘the general ‘‘ Mexican Balm,” the specific name of the medi- ‘cine, and the word ‘* Medicated” indicated its quality and the mode of .its preparation. No action at law was brought by the plaintiff, plainly from the conviction of his counsel that he could not succeed, and the bill was finally dismissed with costs. In Millington v. Fox, had the defendants been right in the sup- ‘position that the words ‘¢ Crowley,” and ‘¢ Crowley Millington,” were descriptive only of the kind or quality of the steel upon AMERICAN TRADE MARK CASES. 99 Amoskeag Manufacturing Co. 2. Spear. which they were stamped, it is manifest, both from the argu- ments and admissions of the counsel, and the reasoning of the chancellor, that a perpetual injunction would not have been de- creed. I shall now proceed to apply the observations that have been made to the facts in this case. When I compare the original trade mark ‘of the plaintiffs with that set forth in the complaint, of which the defendants have now relinquished the use, I find it impossible to doubt that the latter is a designed, studied, elab- orate imitation of the former. ‘They are the same in form, size, and color. It is only by a very close inspection that the orna- mental borders can beat all distinguished. In the center of each we find the same words and letters, in the same relative posi- tions, “* Power Loom,” ‘‘yds.,” “A C Aj” and the only differ- ences are that at the top, immediately under the vignette, the words “‘ Lowell Premium Tickings” are substituted in the label of the defendants for the words ‘“ Amoskeag Manufacturing Company” in that of the plaintiffs, and at the bottom the words “Warranted Indigo Blue,” for ‘ Amoskeag Falls, N. H.”—va- riations, scarcely impairing, far less sufficient to destroy, a gen- eral resemblance that was calculated to deceive the public; and by which the evidence is abundant and conclusive to show that many dealers have been in fact deceived. Under these circum- stances, I can not attach any importance to the denial by the defendants in their answer of any intention to injure or defraud the plaintiffs. They acted with a design, and it would be absurd to suppose that this design had no further object than the mere imitation of the trade mark which they copied. In attaching their simulated label to tickings resembling in appearance and quality those of the plaintiffs, they undoubtedly meant to gain an advantage in the sale. [hey meant to secure to their goods a preference in the market, that they would not otherwise have commanded; nor can I understand how this advantage could be gained, unless their tickings were to be sold and purchased as those of the plaintiffs. Had they only wished to secure a prefer- ence in their goods, as their own, an imitation of the trade mark .of other manufacturers was worse than useless. It had a direct 190 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. v. Spear. tendency to defeat that object ; and it is manifest that had such been their object, no such imitation would have been attempted or thought of. It would not have been attempted or thought of, but, from the hope of gain, it was to be the means and in- strument of realizing. I can not, therefore, escape from the conviction that the real motive of the defendants was an expec- tation of the benefits to result to themselves from the error of purchasers, and from the imposition upon purchasers that subor- dinate dealers. would be tempted and enabled to practice ; and I assent entirely to the observations of the vice-chancellor in Coats v. Holbrook, 2 Sand. Ch. R. 586, that even where no false representation is directly made, the imitation of a trade mark, prompted by such motives, is, in judgment of law, a fraud, the profits of which must be accounted for, and the continuance of which a court of equity is bound to inhibit. It is said, however, and was strongly pressed upon the argument, that the defendants have provided an effectual security against the imposition of dealers and mistakes of purchasers, by substituting, upon their label, the words “ Lowell Premium Tickings,” in place of “* Amoskeag Manufacturing Company,” in that of the plaintiffs; but I can not think so. I can not think that this security is provided, or was meant to be provided; for not only may the substituted words, as is proved to have been the case, from their position, wholly escape the attention of purchasers; but, when read, they may not have the effect of altering the erroneous be- lief that the general resemblance of the labels is calculated to produce. ‘The words are exceedingly ambiguous; they are not a declaration that the tickings are not manufactured by the plain- tiffs, but are entirely consistent with the supposition that they are, as the label upon which they are found is in other respects that of the plaintiffs. “They may be well construed as an asser- tion that tickings, belonging to the plaintiffs, corresponding in quality with those to which the label is attached, had gained at Lowell the premium to which the words refer; nor is it at all improbable that many purchasers have thus understood them, and have believed that the very fact that such a premium had been gained was the cause of an alteration in the label. If the de- AMERICAN TRADE MARK CASES. Iol Amoskeag Manufacturing Co. vw. Spear. fendants were personally asked whether the tickings which they sell are the manufacture of the plaintiffs, it would be an equivo- cation to reply, abstaining from a positive negative, ‘* They are Lowell Premium Tickings;” and it is this equivocation which they stamp upon their label, and which they utter to all who purchase the tickings to which that label is attached. I do not pretend to know the exact meaning of the words ‘‘ Lowell Pre- mium Tickings,” nor have the defendants or their counsel at- tempted to explain them. ‘Their apparent meaning, that which at once strikes the mind, is that tickings of the same fabric as those which the words are used to designate, in a competition at Lowell, had gained a premium as the best quality of American tickings ; and if this assertion is untrue, whether injurious or not to the plaintiffs, it is a fraud upon the public. It is possible that the defendants may attach a different meaning to the words, and that the meaning which they attach to them may be true; but if so, as the words are equivocal, and are calculated to deceive the public, their use, until their true meaning is explained, ought to be discontinued, and I hope will be discontinued. Were it in my power, however, to view the conduct of the defendants in a more favorable light than I am now able to do; could I wholly acquit them of any fraudulent intent, it still remains true, that they have imitated and adopted those parts of an original trade mark, which the plaintiffs had a right to appro- priate, for the purpose of securing their own title as manufac- turers, and that the public has been misled by the resemblance in the labels thus produced ; and I have already stated, that the concurrence of these facts is alone sufficient to render it the duty of the court to interfere by an injunction, The allegation that there has been such an acquiescence for some years on the part of the plaintiffs, in the conduct of the defendants, as to bar the former from the relief they now seek, Ican not regard. Not only is the allegation sufficiently dis- proved, but I am satisfied that the doctrine of an acquiescence operating as an absolute surrender of an exclusive right, is inap- plicable to the case. The consent of a manufacturer to the use or imitation of his trade mark by another may, perhaps, be 162 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. ». Spear. justly inferred from his knowledge and silence; but such a con- sent, whether expressed or implied, when purely gratuitous, may certainly be withdrawn; and when implied, it lasts no longer than the silence from which it springs. It is, in reality, no more than a revocable license. The existence of the fact may bea proper subject of inquiry in taking an account of profits, if such an account shall hereafter be decreed; but even the admission of the fact would furnish no reason for refusing an injunction. As a mecessary consequence of what has been said, I must retain all that part of the injunction, which precedes the words, “Sor having thereon the letters A C A,” to which I add the words, ‘‘or being a colorable imitation thereof.” I borrow these last words from the form of the injunction which was granted and framed by the master of the rolls in Knott v. Morgan, and which he afterward followed, in Croft v. Day; and I adopt them, in the sense in which he doubtless employed them, as denoting such an imitation as is designed and calculated to mis- lead the public as to the true origin or ownership of the article or fabric to which it is attached. I pass now to the question which the parties evidently con- sider as practically the most important, namely, whether the residue of the injunction shall be stricken out or retained? The injunction, as it now stands, prohibits the defendants from using any stamp, mark, or label, for or upon any tickings having thereon the letters “A C A,” and the propriety of continuing this prohibition in force depends upon the fact whether the plain- tiffs have shown an exclusive title to the use of these letters upon their own tickings as declaratory of their right of property as manufacturers. If they have, the prohibition must be retained, but if the letters “A C A,” as used by them, are merely an in- dication of the reJative quality of their tickings, it must be expunged. As the plaintiffs could ‘not have acquired by their prior occupation, an exclusive right in the use of the words, ‘* First Quality” or ‘* Superfine,” they can not have acquired a right by similar means to an exclusive use of any letters, marks, or other signs, which are merely a substitute for the words, and intended to convey the’same meaning, AMERICAN TRADE MARK CASES. 103 Amoskeag Manufacturing Co. v. Spear. It is immaterial whether words, or letters, or figures, or any other signs are used, if the single fact, which they are used to indicate or declare, is a truth that other manufacturers or dealers have an equal right to express and communicate. The complainant avers that the letters ‘A C A” signify as follows: ‘‘A C; Amoskeag Company,” and ‘‘A,” best quality —and several of the witnesses, whose affidavits are produced, swears that the letters are so understood by them, and, as they believe, are so generally understood. On the other hand, these allegations are explicitly denied by the defendants, who aver in their answer that it is the universal practice of manufacturers to distinguish the various qualities of their goods by one or more letters of the alphabet, and that the letters “A C A” in the label of the plaintiffs, are only used and intended to be under- stood as a declaration to the public, that the tickings to which the label is attached are the best quality of those which they manufacture. Such are not the exact words, but such is the substance of the averments in the answer, and the conclusion to which my reflections have led me, is that these averments are true. It was doubtless of importance to the plaintiffs to make known to the public by a declaration in their label, that they are the manufacturers of the excellent tickings which they send into the market, and for this reason the name of their corporation, “A moskeag Manufacturing Company,” appears in full upon their label. The purchasers of the tickings either read these words or they do not; if they do, the letters ‘“A C A,” even if they under- stand them as indicating the name of the company, give them no additional information; if they do not, the meaning of the letters, if such is their meaning, will not be understood. To the first, the letters thus interpreted are useless; and to the second, unintelligible; it is a self-evident truth that initial letters can never communicate the knowledge of a name to those who were previously ignorant of it. The only purpose they can answer is that of recalling a name already known, Nor is this all; the letters ““A C,” considered as initials, would not probably have the effect even of recalling the name which they are said to sig- | nify; to answer this purpose, it is plainly necessary that the 104 AMERICAN TRADE MARK CASES. Amoskeag Manufacturing Co. v. Spear. initial letter of each word comprising the name, whether of an individual or of a corporation, should be given, and this, where initials are used as the substitute for a name, is the, universal practice. Here the letter ““M” is omitted, yet the word ‘¢ Manufacturing” is an essential part of the corporate name; it is therefore highly improbable that the letters “SA C” were used by the plaintiffs in a sense in which it was most unlikely that others would understand them. They probably adopted these letters because they were partly the initials of their corporate name, but it is not, Iam persuaded, for the purpose of signifying that name, and thus indicating their ownership that they employ them; their value and meaning is wholly different. The final letter “* A,” we are told, is alone used to designate the quality of the tickings; it alone signifies that they are the best quality of those which the plaintiffs manufacture; but if this were true, the letters “A C” might be erased, and the final ‘* A,” as a designation of that quality would alone be sufficient. It is, how- ever, admitted that such is not the fact. Another label which the plaintiffs attach to their tickings was produced upon the hearing, resembling in all respects that set forth in the complaint except that the single letter ‘‘ A,” is found in the same place as the three letters, ““A C A,” and it was admitted that this label is only attached to tickings of the second quality—while that containing the three letters is reserved and is used exclusively for those of the best. The conclusion is not to be resisted ; it is to designate the best quality of tickings that the three letters are used, it is this purpose which they answer and none other. The plaintiffs aver in their complaint that they have invented a stamp or label, the same which they set forth “by which to designate the best quality of their tickings ;” but how have they effected this object? Strike from their label the letters “ A C,” there is no such designation; restore them, it is found. As the use of the three letters conjointly is, therefore, necessary to ex- press the meaning which the plaintiffs admit that they intended to convey, I am forced ta believe that it was for this purpose that they were first adopted, and are alone employed. It is doubtless true, as is stated in the complaint, and sworn in many AMERICAN TRADE MARK CASES. Io$ Amoskeag Manufacturing Co. v. Spear. of their affidavits, that the tickings of the plaintiffs, to which their A C A label is attached, have for many years been known in the market as the “AC A tickings,”’ but this fact neither alters the meaning of the letters, nor takes from others the right to employ them. If the letters designate only the quality of the goods and not their origin or ownership, the tickings of the defendants, if the best quality of those which they sell, are as truly “*A C A tickings” as those of the plaintiffs. The words, “Power Loom,” are found upon the label of the plaintiffs, yet it is not contended that I could restrain the defendant from using the same words as they have done upon their own. If there exists a distinction, I am unable to perceive it. The claim of an exclusive right rests in both cases upon the same grounds; it is valid in both, or in neither. Were my opinion upon this question less clear and decided than it actually is, I should still be unable to retain the injunc- tion in its present form. The rule is fully settled, and is recog- nized in nearly all the cases, that in suits of this nature an in- junction is never to be granted in the first instance, if the exclusive title of the plaintiff is denied, unless the grounds upon which it is denied are manifestly frivolous, When the title is disputed, the course is to let the motion for an injunction stand over until the plaintiff has established his legal right in an action at law. The obligation of following this general rule was dis- tinctly admitted by our late chancellor, in Partridge v. Menck, 2 Sand. Ch. R. 625. In Afotley v. Downman, 3 Mylne & C. 14, where the rule was followed, Lord Cottenham uses the strong expression that ‘‘ he can not conceive a case in which the court will interfere at once by an injunction so as to prevent the defendant from disputing the plaintiff’s legal title.” The legal title of the plaintiffs, in the present case, to the exclusive use of these significant letters, A C A, is denied, and certainly not upon frivolous grounds, since I have not understood the counsel for plaintiffs to deny that if the averments in the answer shall be sustained by proof, the title as claimed can not be supported. By our present practice, I can not direct an action at law to enable the plaintiffs to establish their right, for if I rightly under- 106 AMERICAN TRADE MARK CASES. Rudderow v. Huntington. stand the provisions of the code, the present suit is such an action, and in reality every complaint, whatever the nature of the facts set forth, or the relief that is sought, is at once a decla- ration at law and a bill in equity. I can give to the defendants, however, the benefit of the general rule, by so modifying the injunction as not to restrain them from using the letters AC A, until the legal right of the plaintiff shall have been established by the verdict of a jury in this suit, and I am satisfied that it is this course I should be bound to follow even were my opinion as to their legal right widely different from that which I have ex- pressed. The injunction must, therefore, be modified by strik- ing out all that part of it which commences with the words ‘* or having thereon,” and ends with the words, ‘ticket or other- wise.” No costs are given to either party, and I presume none are desired. I ought not to close this opinion without expressing my thanks to the counsel of the parties for the singular ability, learning, and candor with which they conducted the argument. The task of a judge, when thus assisted, is comparatively light, and his errors hardly to be excused. RuppDErRow v. HuntTIncron. Superior Court of the City of New York. Before Oaxuey, C. J., and VanpERPooL avd Sanprorp, JJ., General Term, October, 1849. Reported, 3 Sand. §. C. 252. Where goods were sold by an auctioneer, without any warranty or misrepresentation, and the same turned out to be spurious, and the labels upon them counterfeit: Held, that it was no defense to an action upon a note given in the purchase price ; there being no proof that the auctioneer knew the fact of the spurious nature of the goods, or that he had any better means of judging of their genuineness than the buyers possessed. The statute of 1845, making it a penal offense to vend merchandise, having thereon forged or counterfeited trade marks, knowing them to be such, etc., without dis- AMERICAN TRADE MARK CASES. 107 Rudderow v. Huntington. closing the fact to the purchaser, would prevent the vender from recovering the _ price of the goods sold, if he were aware of their spuriousness. But it must appear that the vender knew the marks to be forged or counterfeited, or that there was a warranty of the genuineness of the goods, or some misrepresenta- tion on his part, to prevent a recovery. The original fraud in the counterfeiting of trade marks does not attach itself to the goods in the hands of an owner ignorant of the offense and fasten upon him the penalties of a wrong of which he is innocent. THis was an action against the defendant Law as the maker, and the other defendants as the indorsers, of a promissory note of $176. The answer admitted the making and indorsement of the note, its non-payment at maturity, and notice to the indorsers. It set up, as a defense, that the same was given upon a purchase by the defendant Law, from the plaintiffs, of sixteen boxes of what was supposed to be Thompson’s Eye-Water, which, with the labels, trade marks, and signatures, turned out to be spurious and counterfeit, and that, on the discovery of the spurious character of the article, and within three days of its purchase, the defendant Law had tendered the same to the plaintiffs and demanded the note in suit to be given up, which was refused. The reply denied all knowledge as to the spurious character of the eye-water, and alleged that the same was consigned to the plaintiffs in due course of trade, and sold by them without a warranty or repre- sentation as to its character. ‘That the plaintiffs were auction- eers, and as such sold articles to purchasers at the risk of the latter; and that, according to the rules of sale, which were -posted up in their salesroom, no allowance was to be made for any deficiencies, etc., unless application was made the day after the sale. At the trial, in June, 1849, it appeared in evidence, on the part of the defendants, that an advertisement was published in the Journal of Commerce of a sale, by the plaintiffs, of ‘sixteen boxes of Thompson’s Eye-Water.” That the defendant Law thereupon employed a person to attend the sale, with directions to purchase, and the same was bid off by him at $176. That three days after the sale, the article was discovered to be a spuri- 108 AMERICAN TRADE MARK CASES. Rudderow v. Huntington. ous article, and that the labels and directions which came upon the bottles were counterfeited. The genuine ‘¢‘ Thompson’s Eye-Water” was manufactured by a person who had purchased the secret from the original inventor at a large price, and the ar- ticle was known by the labels used by the manufacturer. That the labels upon the article sold by the plaintiffs bore a strong re- semblance to the labels used upon the genuine article. That immediately on the discovery of the spurious character of the article purchased, the defendant Law went to the plaintiffs and offered to deliver it back, and demanded the note which had been given on the purchase. It appeared in evidence, on the part of the plaintiffs, that, at the time of sale, Mr. Rudderow, the auctioneer, was asked whether the article was genuine, and he replied, ““ You know more about it than we do.” A druggist who was present also testified that he did not suppose it to be a genuine article from its appearance, and from what was remarked among the bidders, and also from the low price at which it sold, being one dollar and eighty-four cents a gross, while the genuine was worth from six to eight dollars. It also appeared that the defendant Law, previous to his offer to deliver back the eye-water, had already disposed of a portion of it to different persons. It was proved that, after the giving of the note by the defendants, the plain- tiffs, supposing the sale was regular, no objections having been made to it within the time specified, had paid to the consignors of the article in question the amount of the sale, after deducting their charges and commission. A verdict was taken, and judgment rendered pro forma for the plaintiffs for the amount claimed, subject to the opinion of the court, on a case to be made, and an appeal by consent. W. H. H. Moore, for the appellants: 1. The sale of the eye-water, with counterfeit labels, trade marks, and signatures, was illegal. Session Laws, 1845, chap. 279, Pp» 3043 Coats v. Holbrook, 2 Sand. Ch. R. 586; Taylor v. Carpenter, 11 Paige, 292; 2 Steph. Comm. 114, 250. 2. The note being given in consideration of such sale, can AMERICAN TRADE MARK CASES. 10g Rudderow v. Huntington. not be enforced. Nellis v. Clark, 20 Wend. 24; S.C.in Error, 4 Hill, 424; 2 Kent’s Comm., 6th ed., 466; 22 Am. Jurist, Jan., 1840; Langton v. Hughes, 1 Maule & Sel. 5933 Cannan v. Bryce, 3 Barn. & Al. 1833 Armstrong v. Toler, 11 Wheat. 258. These were wicked in themselves, and contrary to law. Plaintiffs had no right to sell without examining, else they could sell stolen or prohibited goods. Same principle applies to a coun- terfeit bill. See 22 Wend. 385, where the money had been paid over, yet the vender held liable. 3. John Rudderow & Co., the auctioneers, not disclosing the names of their principals, and themselves attempting to enforce the note, are to be treated in every respect as principals. A4Zills v. Hunt, 20 Wend. 431; 5. C.17 Ibid. 385 5 Hoffman v. Carow, 22 Ibid. 285. A. F. Willard, for the respondents : 1. The defendant Law, having purchased the goods in ques- tion at a public sale, when an opportunity was offered for their inspection, he is precluded by the application of the rule, caveat emptor, from affirming that the goods are worthless, or different from what he supposed himself purchasing. No fraud or mis- representation appears to have been made; on the contrary, all that was said and done at the sale had a tendency to put the vendee on his guard. Under such circumstances, it is no defense to an action for the purchase money that the. goods were value- less. Welsh v. Carter, 1 Wend. 185; Fobnson v. Titus, 2 Hill, 606; Swett v. Colgate, 20 J.R. 196; Hart v. Wright, 17 Wend. 267; Oneida Manufacturing Co. v. Lawrence, 4 Cow. 4405 Seixas v. Wood, 2 Caines, 48; Hyatt v. Boyle, 5 Gill & Johns. tro. The plaintiffs have acted fairly and in good faith. There was no warranty. 2. In the present case, however, there is no such failure of consideration as can defeat an action upon a promissory note. The defendant Law sold a part of the goods in question, and received the value of the same; he cam not, therefore, allege a total failure of consideration. 3. The contract of sale remains unrescinded, and must be T1O0 AMERICAN TRADE MARK CASES. Rudderow #. Huntington. enforced in accordance with its original terms. As the defend- ant had already sold a part of the property the contract remains unrescinded, 4. The plaintiffs are to be regarded as bona fide holders, for a valuable consideration, without notice of any defect of the note in question, and, therefore, no allegation of a failure of con- sideration will avail against them. SANDFORD, J. There is no doubt that the plaintiffs are to be treated as principals in this transaction, and there is nothing in the point that they are bona fide holders of the note for value. The defendants contend that the sale of this eye-water, with counterfeit trade marks, ¢etc., was illegal, and the note given in consideration of the sale can not be enforced; and that the sale was illegal, independent of the statute of 1845. 1. As to the statute of 1845, the first section makes it a penal offense to forge or counterfeit trade marks or labels. The second section provides that every person who shall vend any merchandise, having thereon any forged or counterfeit trade marks or labels, knowing the same to be forged or counterfeited, without disclosing the fact to the purchaser, shall be liable to the same punishment of imprisonment as is specified in the first section, or to a fine, in the discretion of the court. Now we have no doubt ‘that this statute would prevent any one who has committed. the offense defined in the second sec- tion from recovering the price of goods thereby sold. The difficulty in this case is, that the plaintiffs are not proved to have known the stamps and labels on the eye-water to be forged or counterfeited. The evidence on that point is entirely insufficient to warrant any such conclusion. 2. It is true, as the defendants allege, that before the statute these spurious manufactures were so far unlawful that courts of equity would restrain by injunction their preparation and their sale. There is no decision going the length of holding that on a sale of such articles the seller could not recover the price because he knew the same were spurious. Whether such ought to be the rule of law is a point foreign to this case. AMERICAN TRADE MARK CASES. III Rudderow vy. Huntington. Here the plaintiffs, in the usual course of trade, sold an in- voice of eye-water. They made no warranty, nor any repre- sentation that was untrue. So far as it appears in proof, the purchaser had as good an opportunity to judge and to ascertain whether it was genuine or spurious as the sellers had. Surely there is nothing illegal’ in the transaction. The original fraud or crime in the preparation of these counterfeit trade marks, does not attach itself to the goods in the hands of owners igno- rant of the offense, and fasten upon them the penalties of a wrong of which they are innocent. If the authorities cited to us, in which parties toa sale, fraudu- lent as against creditors, were precluded from the aid of the courts to enforce contracts growing out of the sale, had held, also, that no subsequent owner of the property fraudulently sold, however ignorant of the wrong, could ever maintain a suit for the price on his own sale to another, they would have furnished a principle decisive of this case. We are asked to go to that extent in the application of the maxim ex turpi contractu non oritur actio; and the simple statement of the proposition, it seems to us, shows that it is utterly inadmissible. The case of stolen goods is not analogous. No title passes on such a sale, however honest or remote from the transgressor. We are also referred to the receipt of counterfeit bank notes in payment, which does not discharge the party paying them. That also is inapplicable to a sale of goods. ‘The buyer must take care to see and know for himself what he is purchasing. A creditor receiving in payment a forged note or spurious coin receives nothing, and the debt remains undischarged, THE JUDGMENT at the special term must be affirmed. 112 AMERICAN TRADE MARK CASES. Davis v. Kendall. Davis v. KENDALL. Supreme Court of Rhode Island. Before all the Fustices, September, 1850. Reported, 2 R. I. 566. The inventor of an unpatented medicine has no exclusive right to make and vend the same, but if others make and vend it, they have no right to vend it as the manu- facture of the inventor, nor to adopt his label or trade mark, nor one so like his as to lead the public to suppose the article to which it is affixed is the manufacture of the inventor; and they are equally liable for the damage whether such trade mark be adopted by fraud or mistake. The plaintiff having first applied the name, “ Pain-Killer,” to a medical compound made and sold by himself, it was held that the application of the same name to a similar compound sold by the defendant, bottled and labeled in a somewhat similar way, was an infringement of the plaintiff’s trade mark. THIs was an action on the case against the defendant for pi- rating the plaintiff’s trade mark. It appeared that the plaintiff was the original inventor of a medical compound sold by him, by the name of Pain-Killer; that he had been the first to apply this word to such a compound, and that, after such compound had become extensively and favorably known, the defendant manufactured and sold a similar compound, by the name of “ 7 A. Perry's Vegetable Pain-Killer.”” The defendant’s medicine was put up in bottles of similar size with those of the plaintiff, though of somewhat different shape. The plaintiff’s label was a paper pasted on the body of the bottle, on the upper part of which was the word Pain- Killer, printed in a scroll, below which were the words, “Manufactured by Perry Davis,” and below this an engraving, intended to represent the plaintiff, surrounded by an oval circle bounded on either side by a simple wreath, and having in its lower margin the words, “ The original inventor, No. 74 High St., Providence.” Below the circle, in small type, were the words, ‘* Copyright secured,” and the price of the bot- tle; and at the bottom of the label the words, ‘* Destroy this label as soon as the bottle is empty. This will prevent fraud.” The de- AMERICAN TRADE MARK CASES. 113 Davis v. Kendall. fendant’s label was similarly affixed to the bottle. At the upper part were the words, ‘¢ F. 4. Perry’s Vegetable Pain-Killer,” un- derneath which was represented the bust of a man, and beneath this the words, ‘* Manufactured in Providence, R. I. Price 30 cents. Copyright secured.” The devices on the plaintiff’s label were on a light ground, those on the defendant’s upon a dark ground. The case was tried to the court upon_an agreed state- ment of facts, Carpenter and Bradley, for the plaintiff, contended that when- ever an article of a specific manufacture was universally sold with a given mark upon it, that mark, whether a letter, a figure, a stanza of poetry, ora name, became the vender’s trade mark, and invested him with a right of property which was infringed whenever the same mark was so applied to articles of another’s manufacture as to mislead the unwary public to purchase them, in the belief that they were purchasing the article to which such mark was originally applied. ‘The word Pain-Killer was the plaintiff’s trade mark, he having first invented the term and used it in this particular way, and though he had thus acquired no exclusive right to the use of the word generally, he had an exclusive right to its use as by him applied. If the defendant had used this term in such a way as to mislead the public, and gain for himself the benefit of a reputation which belonged solely to the plaintiff, the plaintiff was entitled to judgment; and whether such use by the defendant was intentional or accidental was immaterial. 23 Am. Jurist, 138; 1 Chitty’s Pract. 731; 2 Story’s Eq. Jur., sec. 951; Taylor v. Carpenter, 3 Story, 4583 Coats v. Holbrook, 2 Sand. Ch. R. 586; Knott v. Morgan, 2 Keen, 213; Thomson v. Winchester, 19 Pick. 2143 Millington v. Fox, 3 M. & C. 338; 21 Merch. Mag. 1993 14 Ibid. 330. Ames, for the defendant, contended that there was a distinction between trade marks and names. A trade mark was a mark used as a symbol to designate articles made or sold by a particu- lar person; names were either purely arbitrary or the names of the maker or vender, or such as were descriptive of the article. I1l4 AMERICAN TRADE MARK CASES. Davis v. Kendall. If one man adopted the trade mark of another, which had ac- quired a reputation, or either of the first two classes of names, he manifestly could have done it only for the purpose of. bene- fiting by the reputation of the articles, the trade mark or name on which were adopted; and so if the defendant had labeled his article “* Perry Davis’s Pain-Killer,”’ or had imitated the plain- tiff’s label so that the public would be deceived, he would be liable. But the word Pain-Killer was a term descriptive of the article sold, and as there was no patent right to the English lan- guage, so the plaintiff could not prohibit the application of a common English word to an article described by it. The analy- sis of the cases showed that the manufacturer of an article had no right to any particular name, but must further show that the person using such name intended to pass off his manufactures as those of the person whose name or mark he used, or that he had used this name or mark in such a way that people of ordinary ‘intelligence would be misled. Blofield v. Payne, 4 Barn. & A. .410; Blanchard v. Hill, 2 Atk. 484; Millington v. Fox, 3 M. & C. 339; Bell v. Locke, 8 Paige, 75; Sykes v. Sykes, 3 Barn. & sC. 541; Coats v. Holbrook, 2 Sand. Ch. R. 594. ‘GreEENE, C. J. The plaintiff has no patent and no exclusive ‘right to the:compound called Pain-Killer. He invented the com- ‘pound and gave it the name Pain-Killer, and this seems to have been the first application of that term to a medical compound. The plaintiff, though not entitled to the compound, is entitled ‘to his trade mark, and the law recognizes and will protect this tight. ‘Trade marks may be, first, the name of the maker; second, -symbolical.; third, the name of the compound. Of this last _kind is the trade mark of the plaintiff, Pain-Killer. All are-entitled.to make and vend this compound, and to vend it as a similar article to that made and sold by the plaintiff; but no one but the plaintiff has a right to sell it as a medicine manu- factured by the. plaintiff. The adoption .of the same label as the plaintiff’s will, of AMERICAN TRADE MARK CASES. 115 Stone v. Carlan. course, be actionable; and so the adoption of a label so like the plaintiff’s as to mislead the public would be actionable. If the difference be merely colorable, it will not avail the de- fendant. But if the defendant states in his label that the article which he sells was made by himself, although he calls it by the same name as the plaintiff, he will not be liable ; because he has a right to make and vend the compound, if he vends it as his own and not as made by the plaintiff. Canham v. ones, 2 Ves. & B. 218. If the defendant, without fraud, use the trade mark of the plaintiff, he is still liable. If the right be violated it matters not whether it be by fraud or by mistake. A“illington v. Fox, 3 My]. & C. 339. The whole question in this case is whether the defendant’s label is to deceive the public, and to lead them to suppose they are purchasing an article manufactured by the plaintiff instead of the defendant. The agreed statement of facts does not find that the defendant’s label has deceived any one, and I do not think it will do so; but my associates think otherwise, and judgment must, therefore, be returned for the plaintiff. Jupcmenr for the plaintiff. STONE v. CARLAN, Superior Court of the City of New York. Before CamppeLt, J., Special Term, 1850. Reported, 13 Mo, L. R. 360. The plaintiffs agreed with A., the proprietor of a hotel, to pay him a certain sum for the privilege of using the name of A., and of his hotel, on certain coaches of the plaintiff’s used for the conveyance of passengers to and from the hotel of A., and on certain badges worn by the drivers of those coaches, the plaintiff giving surety to A. for the good conduct of himself and servants in the conveyance of such passengers. . 116 AMERICAN TRADE MARK CASES. Stone vw. Carlan. He/d, that the plaintiff had an exclusive right as against third parties in the use of the name of A.’s hotel on his coaches and badges; that he was entitled to an injunc- tion to restrain the use by any other party on coaches or badges of the name of A.’s hotel, or of any device or sign which might induce a stranger to believe that the defendants were connected with the hotelof A, The name “ Irving House,” when used as above, protected, THE important facts of the case appear in the opinion of the court. F. Graham, for defendants. H. A. Mott and ¥. F. Brady, for plaintiff. CampseLL, J. A motion is made for an injunction restrain- ing the defendants from using the names “Irving Hotel,” “Irv- ing House,” “Irving,” etc., upon the coaches and upon certain badges worn by defendants upon their arms and hats. The complainants have an agreement with the proprietors of the Irving House in this city, under which they are permitted to use the name of such proprietors, and the name of their hotel, upon their coaches and the badges of their servants, the complainants paying therefor a stipulated sum, and having also entered into bonds for the faithful discharge of these duties. All the porters are engaged in carrying passengers and their baggage to and from the hotels, boats, railroad depots, etc. It was well remarked by the master of the rolls, in Croft v. Day, 7 Beav. 84, that, ‘* No man has a 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.” It is perfectly manifest that to do these things is to commit a fraud, and a very gross fraud. I stated upon a former occasion that, in my opinion, the right which any person may have to the protection of this court does not depend upon any exclusive right which he may be supposed to have to a particular name, AMERICAN TRADE MARK CASES. 117 Stone wv. Carlan. or to a particular form of words. His right is to be protected against fraud ; and fraud may be practiced against him by means of a name, though the person practicing it may have a perfect right to use that name, provided he does not accompany the use of it with such other circumstances as to effect a fraud upon others. I entirely concur in the foregoing views. The ques- tion is, whether the defendants have committed a fraud. I can not doubt that their intention was to mislead, and to induce travelers to believe that they were servants of the proprietors of the Irving House. This is a large and popular hotel, well known in the country, and many a traveler may wish to resort to it on his arrival in this city, who at the same time may not know whether the carriages of the proprietors are painted red or white, or whether the exact designation is that of the Irving House or Irving Hotel. Such traveler may wish to intrust himself and his baggage to the servants of the hotel, feeling that in doing so he would be protected against loss or damage by the responsi- bility of the proprietors. Now, in this case it can hardly be doubted but that the object of the defendants was to induce the belief on the part of the travelers that they were the servants of this hotel. ‘To induce such belief, it was not necessary that the resemblance of all carriages and badges should be complete. From the very circumstances of the case, it would not be neces- sary to have a perfect resemblance in order to commit evena gross fraud. It is not necessary to go, in this case, the length of the ordinary cases of trade marks, though this case might ‘come within the rules of those cases. See Coats v. Holbrook, 2 Sand. Ch. R., and notes and cases there cited. The false pre- tenses of the defendants would, I think, necessarily tend to mislead. The defendants have a perfect right to engage in a spirited competition in conveyance of passengers and their bag- gage. They may employ better carriages than the plaintiffs. They may carry for less fare. They may be more active, en- ergetic, and attentive. The employment is open to them, but “they must not dress themselves in colors and adopt and bear symbols” which belong to others, I had some doubt, at the 118 ‘ AMERICAN TRADE MARK CASES. Marsh v. Billings. time of the argument, whether the complaint should not have been made by the proprietors of the Irving House, but on further reflection think that the suit is well brought. The plaintiffs are the real parties in interest. It is possible that, owing to the general liability of the proprietors as innkeepers for the loss of the property of guests, the proprietors might also be entitled to an injunction restraining the defendants from hold- ing themselves out as the servants of the hotel. An injunction must issue as prayed for against all the defend- ants. Marsu wv. BILLINGS. Supreme Fudicial Court of Massachusetts. Before all the Fustices, March, 1851. Reported, 7 Cush, 322. M. agreed with S., the lessee of the Revere House, to keep good carriages, horses, and drivers, on the arrival of certain specified trains, at a railroad station, to convey passengers to the Revere House, and in consideration thereof, S. agreed to employ M. to carry all the passengers from the Revere House to the station, and author- ized him to put upon his coaches and the caps of his drivers, as a badge, the words * Revere House.” A similar agreement, previously existing between S. and B., had been terminated by mutual consent; but B. still continued to use the words “ Revere House,” as a badge on his coaches and on the caps of his drivers, although requested not to do so byS.; and his drivers called “* Revere House ” at the station, and diverted passengers from M.’s coaches into B.’s. In an action on the case brought by M. against B., for using said badge and diverting passengers, it was held that M., by his agreement with S., had an exclusive right to use the words “ Re- vere House,’’ for the purpose of indicating that he had the patronage of that house for the conveyance of passengers; that if B. used those words for the pur- pose of holding himself out as having the patronage and confidence of that estab- lishment, and in that way to induce passengers to go in his coaches rather than in M.’s, this would be a fraud on the plaintiff, and a violation of his rights, for which this action would lie, without proof of actual, specific damage; and that M. would be entitled to recover such damages as the jury, upon the whole evidence, should be satisfied that he had sustained, and not merely for the loss of such passengers, as he could prove td have been actually diverted from his coaches to the defendant’s. ! AMERICAN TRADE MARK CASES. Img Marsh ». Billings. ‘THIs was an action of trespass on the case. The declaration contained two counts, the first of which stated that the plaintiffs, on the 16th of January, 1849, and ever since, had purchased for a valuable consideration, and were possessed of the sole and exclusive right and privilege of representing and acting for Paran Stevens, the lessee of the hotel or public house in Boston, known. as the Revere House, at the station of the Boston and Worces- ter Railroad Company, i Boston, in and about the carriage and transportation for hire of such passengers arriving at the station as should require the services and aid of hackmen and hacks authorized by Stevens to act for and represent him in this behalf, to transport them and their baggage from the station to the Re- vere House, and of the exclusive right of using, wearing, and placing upon their carriages and servants, stationed at said station, the name, badge, and designation of “* Revere House ;” and that, to enable them to exercise their said rights and privileges beneficially, the plaintiffs had been put to great outlay and ex- pense, and had bought and maintained two carriages at a great expense, to wit: the sum of four thousand dollars, and had hired and kept divers servants at great wages; and, at the time of the committing by the defendants of the grievances complained of, were used and accustomed to obtain and transport for hire, from the station to the Revere House, a great number of such passengers and their baggage; and by reason of the transporta- tion of such passengers and baggage, great profits and advantages had accrued, and still ought to accrue to the plaintiffs. Yet the defendants, well knowing the premises, but contriving and un- justly intending to injure the plaintiffs in the exercise of their said business or occupation, and to deprive them of great parts of their said profits and advantages,* without the license or con- sent of the plaintiffs, or of Stevens, and against the will of the plaintiffs, and of Stevens, did unlawfully, on the 16th of Janu- ary, 1849, and on divers other days since that day, and before the purchase of this writ, keep and maintain, and caused to be kept and maintained, at said station a large number of carriages and servants, with the name, badge, or designation of “ Revere House,” marked, placed, or worn upon them and each of them, 120 AMERICAN TRADE MARK CASES. Marsh ». Billings. in imitation of and as the name, badge, and designation worn and used by the plaintiffs as aforesaid, and in order to denote to such passengers that said coaches and servants were authorized by Stevens to transport them and their baggage from the station to the Revere House, and did knowingly and deceitfully represent and cause their said servants to represent to such passengers that said coaches and servants were authorized and placed by Stevens at the station to transport for hire said passengers and their bag- gage from the station to the Revere House; by means of which a great number, to wit: five hundred of such passengers were induced to enter the defendants’ carriages with their baggage, and to desert and leave the carriages of the plaintiffs, and the plaintiffs thereby lost the profits and advantages which would otherwise have accrued to them from transporting for hire said passengers and their baggage from the station to the Revere House, and were subjected to great loss in their said business or occupation. ‘ The second count was precisely like the first as far as the star (*) above, and then alleged that the defendants did unlaw- fully, on the 16th of January, 1849, and on divers other days since that day, and before the purchase of this writ, interfere and cause their servants to interfere with the plaintiffs, in the exercise of their said business or occupation, and in the obtain- ing and transportation by the plaintiffs of such passengers and their baggage from the station to the Revere House, insomuch that many passengers, to wit: five hundred, who were then and there about to enter the plaintiff's carriages, were prevented from so doing, and the plaintiffs were thereby prevented from obtain- ing and transporting for hire such passengers and their baggage in such plenty as they would otherwise have done, and from realizing the profits and advantages which ought to have accrued to them in their said business and occupation, and were therein subjected to great loss. At the trial before Bigelow, J., in the court of common pleas, the plaintiffs, to prove their case, called as a witness Paran Stevens, the lessee of the Revere House, who testified that on the first day of May, 1849, he made a verbal agreement with AMERICAN TRADE MARK CASES. 121 Marsh ». Billings. the plaintiffs, by which they agreed to keep coaches at the station of the Boston and Worcester railroad in Boston, to carry passen- gers arriving at the station by the ‘‘ long trains,” who might de- sire to go to the Revere House, and further agreed to keep good horses and coaches, and to employ first-rate drivers to do the work of conveying passengers, to the acceptance of the passen- gers and of Stevens; in consideration of which he agreed to em- ploy the plaintiffs to carry all passengers who might wish to go from the Revere House to the station, and authorized the plain- tiffs to put on their coaches and on the caps of their drivers, as a badge, the words “‘ Revere House.” He further testified that a similar agreement had existed between him and the defend- ants, from the time when he first opened the Revere House until first’of May, 1849, when it was terminated by him with the assent of the defendants, because the defendants did not do the work to his satisfaction; and that the defendants, under this agreement, had placed the words “Revere House” on their coaches and on the caps of their drivers. It further appeared in evidence, that after the first of May, 1849, and during the times alleged in the plaintiffs’ writ, the defendants continued to carry the words “ Revere House” on their coaches and on the caps of their drivers; that their coaches and drivers so marked were kept at the station of the Boston and Worcester railroad, and on the arrival of the ‘long trains” their drivers were in the constant habit of calling out ‘“‘Revere House,” in loud tones, in the presence and hearing of the passengers by said trains. It also appeared that some time in July, 1849, Stevens requested one. of the defendants to discontinue the use of the words ‘‘Re- vere House” on their coaches and on the caps of their drivers ; but that he refused so to do, saying he had a right to use them. There was also some evidence that the defendants, by their agents, on one or more occasions stated to persons desiring con- veyance to the “Revere House,” that they were the agents em- ployed by the “ Revere House,” or by Mr. Stevens, to convey passengers, and that the plaintiffs were not, or words to that effect, by means of which statements some passengers were di- verted from the coaches of the plaintiffs, and induced to go in . 122 AMERICAN TRADE MARK CASES. Marsh v. Billings. the coaches of the defendants. Upon this point, however, the evidence was contradictory. One person in the employ of the defendants, called as a witness by the plaintiffs, testified that on one occasion he induced three persons to leave the coach of the plaintiffs and go in the defendants’ coach, by stating to them that his coach was the regular coach, and that they had got into the wrong coach. The plaintiffs also offered evidence that the defendants, during the time alleged in the plaintiffs’ writ, car- ried large numbers of passengers from the station to the Revere House. The plaintiffs, on the foregoing evidence, contended that they had an exclusive right to the use of the words ‘‘ Revere House” on their coaches and on the caps of their drivers; that these words were in the nature of trade marks, and that their action would lie on showing that the defendants had used these words in the manner above stated. But the judge instructed the jury that no person had the legal right to claim the exclusive privilege of conveying passengers from the station of the Boston and Worcester railroad to the Revere House; that any person, who saw fit to engage in it, had a right to carry on the business, and to indicate, by suitable signs on his coaches, by badges on the caps of his drivers, and by calling at the station, in the hearing of passengers, the place to and from which he conveyed passengers; that the plaintiffs in this case could not recover damages of the defendants, merely by showing that the defendants had on their coaches and on the caps of their drivers the words “‘Revere House,” and that they had called out ‘‘ Revere House” in the hearing of passengers in the station, and thereby obtained the conveyance of passengers from the station to the Revere House. But if, on the whole evidence before the jury, the burden of proof being on the plaintiffs, the jury were satisfied that the plaintiffs were author- ized by Stevens to hold themselves out as his agents at the sta- tion for the transportation of passengers thence to the Revere House, and the defendants knowing this, by means of false rep- resentations that they were the agents of Stevens for this pur- pose, or that the plaintiffs were not, induced persons to go by the AMERICAN TRADE MARK CASES, 123 Marsh 2. Billings. coaches of the defendants, instead of going by the coaches of the plaintiffs, and that thereby passengers were actually diverted from the plaintiffs’ coaches, then the plaintiffs might recover of the defendants such damages as the plaintiffs had shown they had sustained in consequence of such false representations and the loss of passengers thereby occasioned. The jury returned a verdict for the plaintiffs, assessing dam- ages in the sum of seventy-five cents, and the plaintiffs excepted to the instructions of the judge. W Sobier, for the plaintiffs: 1. The plaintiffs do not claim the exclusive right to convey passengers from the Boston and Worcester railroad station to the Revere House, nor the exclusive right to the use of the words ‘Revere House.” The first count in the declaration charges the defendants not merely with using the badges which the plaintiffs have a right to use, but with using the name “Revere House,” in imitation of the plaintiffs’ badges, and thereby inducing passengers to believe that the defendants were authorized by that house. The second count is for interfering with the plaintiffs’ business. Stevens, the lessee of the Revere House, had a right to grant plaintiffs the privilege of marking their coaches and the caps of their drivers with the words ‘‘ Revere House,” to denote their employment by that establishment ; the defendants, in persisting in ‘using the same marks and badges, interfered with the plaintiffs’ privilege; and this interference is a sufficient cause of action. ‘The reason why, no action on the case for such an injury is to be found in the book is, that where the courts have full equity jurisdiction the remedy by injunction is more summary. The acts of wearing and ‘using these badges were of them- selves fraud, and the jury should have been instructed that the use of the marks and badges by the defendants was prima facie evidence of an intent to hold themselves out as the authorized agents of Stevens; or, at least, that if they believed the defend- ants to have worn the badges and marks in question, for the purpose of inducing, in the public, the belief that they were 124 AMERICAN TRADE MARK CASES. Marsh z. Billings. authorized agents of the Revere House, it would be such an interference with the plaintiffs’ rights as would support this action. This case is precisely analogous to those in which trade marks were imitated, as in Syses v. Sykes, 3 B. & C. 5413 Blofield v. Payne, 4 B. & Ad. 410; Rodgers v. Nowill, 5 Man. G. & S. 109; Taylor v. Carpenter, 3 Story, 4583; Coats v. Holbrook, 2 Sand. Ch. R. 586; or the name of a newspaper, asin Bell v. Locke, 8 Paige, 75; or the names, marks, and devices on an omnibus, as in Knott v. Morgan, 2 Keen, 213. See also 2 Story on Eq., sec. 951; and Stone v. Carlan, 13 Law Rep. 360, is precisely in point. 2. Upon the question of damages the plaintiffs were held to a rule much too strict. The jury should have been allowed to give damages for the obstruction of the plaintiffs’ rights, and to estimate the injury actually resulting to their business from the defendants’ acts, taking into consideration the number of pas- sengers carried by the defendants from the station to the Revere House. See analogous cases for the ‘infringement of patent rights ; Whittemore v. Cutter, 1 Gall. 478, 483; Earle v. Sawyer, 4 Mason, 1; Lowell v. Lewis, 1 Mason, 182. But in the case at bar, the judge required the plaintiffs to prove the specific number of passengers actually diverted from the plaintiffs’ to the defendants’ coaches. This they could not, from the nature of the case, do with precise accuracy. In Keeble v. Hickeringill, 11 East, 573, note (a), which was an action on the case for de- signedly frightening away wild fowl from the plaintiff’s decoy pond, Lord C. J. Holt, to the objection, that the declaration did not state the number or nature of the wild fowl frightened away answered that it was not possible for the plaintiff to know hs number or nature thereof. And he held that the action well lay for the disturbance of the plaintiff’s right. This being an action of tort, and the tort being of a willful nature, the jury were at liberty to give such damages as upon the whole evidence they should consider reasonable. Sedgw. on Dam. 488, and cases cited ; Leland v. Stone, 10 Mass. 459, 4623 Weld v. Bartlett, 10 Mass. 4703 Stone v. Codman, 15 Picle, 29 : Richards v. Farnham, 13 Pick. 451. vet AMERICAN TRADE MARK CASES, 126 Marsh gv. Billings. W. Brigham, for the defendants: Stevens, the lessee of the Revere House, had no exclusive right to convey passengers from the railroad station to his house, nor had he the exclusive right to put upon his coaches, or the caps of his servants, the words ‘“‘ Revere House.” His business is that of keeping a public house, and not the transportation of passengers, and his authority as an innholder does not extend beyond his own premises. Rev. St., c. 47, sec. 5. Having no such right himself he could assign none to the plaintiffs. The de- fendants, in common with all other citizens, have a right to con- vey passengers from the Boston and Worcester railroad station, through the public streets, to any public house, subject only to such regulations as the mayor and aldermen may prescribe; and they have a right also, by suitable declarations, indications, and signs, to inform passengers that they can and will take them to the places designated. The use by the defendants of the words “Revere House” did not indicate that they were the authorized servants of that house, but only that that was their destination. The cases of trade marks bear no analogy to the present. Whenever actions have been maintained for using trade marks and the like, it has been on the ground that the plaintiff bad a property in, and an exclusive right to, the thing used. Carring- ton v. Taylor, 11 East, 5713; Sykes v. Sykes, 3 B. & C. 541; Rodgers v. Nowill, 5 Man. G. & S. 109; Taylor v. Carpenter, 3 Story, 458; Coats v. Holbrook, 2 Sandf. Ch. 586; Croft v. Day, 7 Beav. 84. Kuott v. Morgan, 2 Keen, 213, 219, cited by the plaintiffs, went upon the ground of fraud. The master of the rolls, in granting an injunction in that case, said: ‘It is not to be said that the plaintiffs have any exclusive right to the words ‘Conveyance Company, or ‘ London Conveyance Company,’ or any other words; but they have a right to call upon this court to restrain the defendant from fraudulently using precisely the same words and devices which they have taken for the purpose of distinguishing their property, and thereby depriving them of the fair profits of their business by attracting custom onthe false representation that carriages, really the defendants’, belong to and are under the management of the plaintiffs.” Here the judge 126 AMERICAN TRADE MARK CASES. Marsh v. Billings. allowed the plaintiffs to recover so far as there was any false rep- resentation or fraud, but not otherwise. The only case which supports the plaintiffs’ position is Stone v. Carlan, 13 Law Rep. 360, decided by a single judge of the Superior Court of the city of New York, and the authorities cited do not bear out the decision. The opinion was delivered at March term, 1852. Fietcuer, J. This is an action on the case, sounding in tort. The principle involved in the merits of the case is one of much importance, not only to persons situated as the plain- tiffs are, but also to the public. But this principle is by no means novel in its character, or in its application to a case like the present. It is substantially the same principle, which has been repeatedly recognized and acted on by courts, in reference to the fraudulent use of trade marks, and regarded as one of much importance ina mercantile community. Vast numbers, no doubt, of the strangers who are continually arriving at the stations of the various railroads in the city, have a knowledge of the reputation and character of the principal hotels, and would at once trust themselves and their luggage to coachmen supposed to have the patronage and confidence of these estab- lishments. Not only much wrong might be done to individuals situated like the plaintiffs, but great fraud and imposition might be practiced upon strangers, if coachmen were permitted to hold themselves out falsely as being in the employment, or as having the patronage and countenance of the keepers of well-known and respectable public houses. It was said, in behalf of the de- fendants, that the lessee of the “*‘ Revere House” had no exclu- sive right to convey passengers from the Worcester railroad to his house, nor had he the exclusive right to put upon his coaches or the badges of his servants the words ‘‘ Revere House,” and could confer no such exclusive right on the plaintiffs; that the defendants, in common with all other citizens, have a right to convey passengers from the Worcester railroad to any public house, and have a right to indicate their intention so to do by marks on their coaches and on the badges of their servants. AMERICAN TRADE MARK CASES. 127 ‘Marsh v. Billings. This may all be very true, but it does not reach the merits of the case. The plaintiffs do not claim the exclusive right of using the words ‘ Revere House,” but they do claim the exclu- sive right to use those words in a manner to indicate, and for the purpose of indicating, the fact that they have the patronage and countenance of the lessee of that house for the purpose of trans- porting passengers to and from that house to and from the rail- roads. The plaintiffs may well claim that they had the exclusive right to use the words “ Revere House” to indicate the fact that they had the patronage of that establishment, because the evi- dence shows that such was the fact, and that the plaintiffs, and they alone, had such patronage of that house, by a fair and ex- press agreement with the lessee. For this privilege they paid an equivalent in the obligations into which they entered. The de- fendants, no doubt, had a perfect right to carry passengers from the station to the Revere House. And they might perhaps use the words ‘“‘ Revere House,” provided they did not use them under such circumstances and in such a manner as to effect a fraud upon others. The defendants have a perfect right to carry on as active and as energetic a competition as they please, in the conveyance of passengers to the Revere House or any other house. The em- ployment is open to them as fully and freely as to the plain- tiffs. They may obtain the public patronage by the excellence of their carriages, the civility and attention of their drivers, or by their carefulness and fidelity, or any other lawful means. But they may not by falsehood and fraud violate the right of others. The. business is fully open to them, but they must not dress themselves in colors and adopt and wear symbols which belong to others. The ground of action against the defendants is not that they carried passengers to the Revere House, or that they had the words ‘‘ Revere House” on the coaches and on the caps of the drivers merely, but that they falsely and fraudulently held them- selves out as being in the employment, or as having the patron- age and confidence of the lessee of the Revere House, in viola- tion of the rights of the plaintiffs. The jury would have been 128 AMERICAN TRADE MARK CASES. Marsh », Billings. well warranted by the evidence in finding that the defendants used the words “‘ Revere House” not for the purpose of indi- cating merely that they carried passengers to that house, but for the purpose of indicating, and in a manner and under circum- stances calculated and designed to indicate, that they had, and to hold themselves out as having, the patronage of that establish- ment. Upon the evidence in the case, the jury should have been instructed that if they were satisfied by the evidence that the plaintiffs had made the agreement with the lessee of the Revere House, as stated, they had, under and by virtue of that agree- ment, an exclusive right to use the words ‘“‘ Revere House”’ for the purpose of indicating and holding themselves out as having the patronage of that establishment for the conveyance of pas- sengers ; and that if the defendants used those words, in the man- ner and under the circumstances stated in the evidence, for the purpose of falsely holding themselves out as having the patron- age and confidence of that house, and in that way to induce passengers to go in the defendants’ coaches, rather than in those of the plaintiffs’, that would be a fraud on the plaintiffs and a violation of their rights, for which this action would lie, without proof of actual or specific damages; that if the jury found for the plaintiffs, they would be entitled to such damages as the jury, upon the whole evidence, should be satisfied they had sus- tained; that the damage would not be confined to the loss of such passengers as the plaintiffs could prove had actually been diverted from their coaches to those of the defendants, but that the jury would be justified in making such inferences as to the loss of passengers and injury sustained by the plaintiffs as they might think were warranted by the whole evidence in the case. Though the instructions, as given, may have been intended to conform substantially to these views, yet, upon the whole, it seems to the court that the principles of the law, upon which the rights of the parties were to be determined, were not stated with all that distinctness and accuracy, which the practical im- portance of the case requires. The principles of law which govern this decision are so fully settled by numerous decisions, AMERICAN TRADE MARK CASES. 129 Howard wv. Henriques. that it seems unnecessary to go into any particular examination of authorities, but it is sufficient merely to refer to some leading cases. Coats v. Holbrook, 2 Sand. Ch. R. 586; Blofield v. Payne, 4B. & Ad. 410; Morrison vy. Salmon, 2 Man. & Gr. 3853; Knott v. Morgan, 2 Keen, 213; Croft v. Day, 7 Beav. 84; Rodgers v. Nowill, 5 Man. G. & S. 109; Bell v. Locke, 8 Paige, 75; Stone v. Carlan, 13 Law Rep. 360. NEw TRIAL ordered. Howarp v. Henriques. Superior Court of the City of New York. Before Oaxtey, C. J., and Campsett, Duer, Mason, avd Sanprorb, JJ., General Term, March, 1851. Reported, 3 Sand. 8. C. 725. The principle upon which trade marks are protected is not confined to personal prop- erty. It applies to a name, applied or appropriated to real property; as to a public hotel. Where the proprietor of a hotel opened it under the name of Irving House, and it very soon became generally and equally known as the Irving House and Irving Hotel, and was kept by him while thus designated, it was held that he had a right to the use of those names to the exclusion of other persons in the same city or town; and on their subsequently setting up a hotel called Irving Hotel, they were restrained from the use of that name by injunction. Tue decision.of the court contains a statement of the facts. John Graham, for defendants. F. E. Burrill, Fr., for the plaintiff. CampzELL, J. This action was commenced by the plaintiff, who is the proprietor of a hotel in this city, known as the Irving House ot Irving Hotel, and which was opened and named by him 130 AMERICAN TRADE MARK CASES. Howard v. Henriques. ““Trving House,” in the fall of 1848, against the defendants, as proprietors of another hotel in this city, which they have also called the Irving Hotel, and which was opened and named by the defendants during the past summer. An injunction was granted by one of the justices of this court, restraining the de- fendants from using the name of Irving Hotel for their house, after an early day designated. A motion is made to dissolve this injunction. The plaintiff’s house, although originally designated by him as the /rving House, very soon became generally known also as the /ruing Hotel, and was designated by both names indis- criminately for more than a year before the defendants opened their hotel. It was urged by the defendants’ counsel, first, that the plaintiff had not appropriated the name, because no such name appeared on the external walls of his house. And second, even if it did so appear, the name was not the subject of appropriation as ap- plied to a hotel; that the principle upon which trade marks and .other similar rights had been protected, was applicable alone to ‘personal property, to manufactured articles, to such things as .were necessarily movable, and in reference to which frauds could be practiced without being easily detected, or at all events frauds could be practiced operating injuriously upon the party claiming the trade mark and also upon the public. There can be no doubt of the appropriation of the name by the plaintiff for his hotel. It was on all his bills rendered to his guests; on cards, on large cards placed in other hotels throughout various portions of the country, and in cabins of steamboats and steamships, accompanied by an engraved view of the building, and was so designated in numerous advertisements in public news- papers circulating throughout the country. If we were permitted to speak from our own knowledge, we should say that the fact of ‘such name being applied by the plaintiff to his hotel was, at the time the defendants applied the same name to their hotel, and is now, notorious. There would be no more necessity for the plaintiff to. place in large letters upon the front of his building, ‘* This is the Irving House,” priation of the name, than there would be to write on the public in order to designate it and secure an appro- AMERICAN TRADE MARK CASES, 131 Howard v. Henriques. edifices of the ‘city, “* This is the City Hall,” and, ‘¢ This is Trinity Church.” Upon the second objection of the defendant, I at first had some doubt, which by a more careful consideration, and by con- ference with my associates, has been removed. We think that the principle of the rule is the same, to what- ever subject it may be applied, and that a party will be pretected in the use of a name which he has appropriated and by his skill rendered valuable, whether the same is upon articles of personal property which he may manufacture, or applied to a hotel where he has built up a prosperous business. We are not disposed to interfere with the lawful pursuits of any one. Every man may and ought to be permitted to pursue a lawful calling in his own way, provided he does not encroach upon the rights of his neighbor or the public good. But he must not, by any deceitful or other practice, impose upon the public; and he must not, by dressing himself in another man’s garments, and by assuming another man’s name, endeavor to deprive that man of his own individuality, and thus despoil him of the gains to which by his industry and skill he is fairly enti- tled. To make the application: If one man has, by close atten- tion to the comfort of his guests, and by superior energy, made his hotel desirable for the traveler, and caused its name to become popular throughout the land, another man ought not to be per- mitted to assume the same name in the same town, and thus deprive him who first appropriated the name of some portion of the fruits of that good will which honestly belong to him alone. It can hardly require argument to show that the use by the defendants of the same name for their hotel interferes with the plaintiff’s business, and the fact is fully established by the affida- vits. Sucha result, under the circumstances, would seem to be inevitable. If the defendants may use the name, others may do the same, and the public would be inconvenienced by the con- fusion which would necessarily arise. There is no hardship in enforcing the rule against these de- fendants. There is an abundance of names by which they can 132 AMERICAN TRADE MARK CASES. Coffeen v. Brunton. designate their hotel; and if they can succeed, by their own efforts, by their skill and careful attention, in building up a profit- able business, in causing their hotel to become known and pop- ular through the land, they will in turn be entitled to protection against those who may seek to deprive them of the advantages which they may thus honestly acquire. The three of my associates, the Chief Justice and Justices Duer and Mason, who were present at the argument, together with Justice Sandford, who granted the injunction, concur with me in the opinion that the injunction must stand. The motion to dissolve it must be denied, with costs, Correen v. BRuNTON. Circuit Court United States, District of Indiana. Before McLean, J., May, 1851. Reported, § McLean, 256. A party is not entitled to ah injunction to protect him against another person who has assumed the same label, as to a medicine or drug claimed to have been invented by the complainant, unless his right is clear. If they were concerned in getting up the medicine, both contributing to the compound as a partnership action, neither can claim the exclusive right. In such a case, the court will leave the parties to their legal right. Injunction should only be granted where the right is clear, and where, from its nature, a remedy at law would be inadequate. McLean, J. This bill was brought by the complainant to enjoin the defendant from using a label or any other representa- tion which would mislead the public in purchasing his liniment for that which is manufactured and sold by the complainant. The charge in the bill is, that the label of the defendant is so assimilated to that of the plaintiff as to lead to this imposition, AMERICAN TRADE MARK CASES. 133 Coffeen v. Brunton. by which the defendant is greatly benefited and the plaintiff in- jured; that the complainant, at great expense, has established his business, and that his medicine, called the “Chinese Lini- ment,” is in great demand as an efficacious remedy in many cases of disease and injuries, and that the.defendant is enabled to sell his liniment by assuming the false fact that it is the same as the plaintiff’s. The defendant, in his defense, sets up that John Loree, of whom he purchased, is the inventor of the “ Chinese Liniment,” having furnished the defendant with a recipe for making the same, except two ingredients, which were added on their mutual consultation ; that the complainant agreed to take the said Loree as a partner into the business so soon as he could advance capi- tal, until which time he was constituted the general agent of the complainant to sell the medicine, and was so designated in his handbills. But when he had procured the necessary capital, the complainant refused to take him as a partner; that Loree then made his liniment, called the “ Ohio Liniment,” which contains the same ingredients of which the complainant’s liniment is composed, with the addition of two or three others, which make it more valuable. A great number of depositions were taken on both sides, which show, on the part of the complainant, that in the early part of the year 1846 he went to Cincinnati and remained there several weeks, to make what he called the “Chinese Liniment.” He selected several ingredients from the store of Mr. Burdsell, a very respectable druggist, and concocted the liniment, and gave it the name of the Chinese Liniment,” procured vials, had labels and handbills printed, and thus prepared the article for sale. Neither Mr. Burdsell or any other witness has stated of what ingredients this liniment is composed. The witnesses state they do not know of what the compound is made, but all of them agree in saying it is a valuable medicine, and they give the same character to the liniment of the defendant. The following letter, written by the complainant, is relied on as sustaining the answer: 134 AMERICAN TRADE MARK CASES. Coffeen v. Brunton. “Brug Baty, August g, 1845. “Dr. Joun: We had expected to have heard from you before this time. I got home in two weeks after I left your house. I made myself some acquainted with the prospect of selling the liniment we have been talking of. It appears to me the pros- pect is first rate, if the thing is properly managed. I divided the little I took with me among more than a dozen persons, who say they look with great anxiety for the thing to come out. If I had the receipt, I would take pains to ascertain what would be the cost of preparing it in quantity. Mr. Freeman says he would like, when he goes east, to bring any stock that we may want, which would make it come cheaper than to procure the stock in this country. I feel fully confident that a nice business may be done. The country is ripe now as ever it was for a thing that is new. If you will send me the receipt, I will go to Cincinnati and ascertain, as near as I can, what will be the whole cost, including the necessary handbills to accompany the article, and also the expense of the vials. They ought to be done up in the neatest manner. It seems to me that they would look well of a square form, about four inches long, and holding three oz. By going to the glass factory, any form can be ob- tained. When you send the receipt, write out the names of the articles very plain, so as to avoid any mistake, as the whole list , will not be shown to any apothecary. I think we ought to have always a supply on hand. ‘I have no doubt if I had a supply when I went to Kentucky, I could have sold twenty or thirty dollars’ worth.” This letter was dated in August, 1845, and it appears from the evidence that the recipe was forwarded to the complainant by one of his daughters, in August, 1845, some months before he went to Cincinnati to prepare the medicine. And in regard toa small amount referred to in the above letter, it is in proof that in June, 1845, Loree brought to the house of the complain- ant, a jug full, as he said, of the ingredients of which the lini- ment was made, and the daughter of the complainant assisted him in making the liniment. A part of this probably was taken by him to Kentucky. . AMERICAN TRADE MARK CASES. 135 Coffeen v. Brunton. On the 28th of February, 1846, the complainant writes to the defendant from Cincinnati, that ‘‘everything seems to be going as favorably as we can desire. There is one universal burst of praise in favor of the liniment,” etc. ‘‘I have as favorable and flattering expressions from gentlemen of the highest respecta- bility as I could desire, and shall append them to the bills I am now getting printed, of which I will send you some as soon as they are done,” etc. ‘* Our great object must be to move the thing and give it notoriety. One hundred thousand bottles, I have no doubt, could be sold in the United States, if they were only in the market, in a year.” From these letters and other evidence in the case, it satisfac- torily appears that the defendant was engaged with the com- plainant in making this medicine. The recipe spoken of by Loree, obtained from a Dr. Diffendafter, with whom it is alleged he studied medicine, named many of the materials out of which, in all probability, the compound was made. Two or three other ingredients, the defendant admits, were added to those named in the recipe, and, it is probable, though there is no positive evidence on the subject, that the complainant, at Cin- cinnati, when compounding the ingredients, may have added some others. And that this is the ground on which he declares the defendant is ignorant of the ingredients which compose the “Chinese Liniment.” However this may be, I can not doubs that the defendant was at first actually concerned in getting up and bringing out the medicine, and that a partnership between the parties was contemplated. Some time after the defendant had commenced his general agency in selling the medicine, the parties quarreled, and afterward had a compromise, in which, from some of the witnesses, the defendant seems to have relin- quished his interest. But that compromise does not appear to have been carried out, and the defendant asserted his right, and prepared the ‘Ohio Liniment,” and through his agents, hand- bills, etc., distributed it through the country. These facts are referred to, to show, that in a case like the present, where rights are contested between the parties, chancery will not interfere and enjoin a party from using labels, or marks, 136 AMERICAN TRADE MARK CASES. Coffeen v. Brunton. to recommend his article, though it may, to some extent, be substituted for that of the plaintiff. “The matter of right must first be determined by an action at law, or otherwise, and this is not the object of the present bill. Both medicines are highly recommended by those who have used them, and several of the witnesses think they are composed of the same ingredients. If the “Ohio Liniment ” is the same as that of the plaintiff, he, having no exclusive right to it, is not injured by the representa- tions of the defendant. To entitle a complainant to protection against a false repre- sentation, it is not essential that the article should be inferior in quality, or that the individual should fraudulently represent it, so as to impose upon the public; but if, by representation, it be so assimilated as to be taken in the market for an established man- ufacture, or compound of another, the injured person is entitled to an injunction. The injury is not the less, though the false representations be made without a knowledge of such inter- ference. False marks, or brands, are generally fraudulently as- sumed. As where, in the manufacture of cotton cloth, a mark is assumed intentionally, of a manufacture whose products stand high in the market, it will be considered as fraudulent. No one can interfere with another’s business, ingeniously, for his own benefit, with impunity. This is an important commercial prin- ciple of extensive application. And as in such cases the dam- ages can not be ascertained at law, relief will be given by injunc- tion. But where, as in the present instance, there is a controversy between the parties, whether both were not concerned in the establishment of the business, it is not a case for an injunction. The bill is not framed with a view to adjusting such a contro- versy. The right of the plaintiff who claims protection in this form must be clear. If it be controverted, chancery will leave the parties to their remedy at law; or, at least, to such a pro- ceéding as shall present the whole merits of the controversy, and enable the court to decide it. I concur in the opinion of my brother judge, that the applica- tion for a rehearing must be overruled. AMERICAN TRADE MARK CASES. 137 Stokes ». Landgraff. Stokes v. LANDGRAFF. Supreme Court of New York. Before Strone, J., Special Term, Octo- ber, 1853. Reported, 17 Bard. 608. 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 articles in which he deals, will be sustained. Hence the court refused to protect the use of the words, ‘ Cylinder,”* “ Lake,” “New York,” “Galen.” Motion by defendants to vacate an injunction, The plaintiff was a manufacturer of glass, at the village of Clyde, in the town of Galen, in the county of New York. His complaint alleged that he was entitled to the exclusive use of the words, Gaten, Lake, CytinpeR, Wayne, New York, which had long been used by his predecessors and himself ta denote the qualities of glass made at his establishment, and to distinguish the same from that made by others. The defendants were manufacturers of glass at Cleveland, in the county of Oswego. A temporary injunction was granted to the plaintiff, which the defendants applied to have vacated. The other facts will be found in the opinion of the court. Vandenbergh and Fenkins, for the motion, Goodwin, contra. SrronG, J. The principle is well settled that a manufacturer may, by priority of appropriation of names, letters, marks, or symbols of any kind to distinguish his manufactures, acquire a property therein, as a trade mark, for the invasion of which an action for damages will lie, and in the exclusive use of which he may have protection, when necessary, by injunction. The wrong, in such a case, for which those remedies are given, con- 138 AMERICAN TRADE MARK CASES. Stokes v. Landgraff. sists in misrepresenting to the public, by the use of that trade mark, goods, or wares of another person as having been manu- factured by the true proprietor of that mark, and thereby de. priving him, to a greater or less extent, of the benefit of the good-wil] of his establishment, and the reputation of his articles. The same principle extends to all brancnes of business where the like reason for its application exists. In all cases where names, signs, marks, brands, labels, words, or devices of any kind can be advantageously used to designate the goods, or property, or particular place of business, of a person engaged in trade, or manufactures or any similar business, he may adopt and use such as he pleases, which are adapted to that end, and have not been before appropriated; and no other person can lawfully imitate them, and by that means sell his own goods, or property, or carry on his business, as the goods, property, or business of the former. If any one does so, the remedies before referred to are allowed by law to the party injured. The law on this subject is quite fully presented in Coats v. Holbrook, 2 Sand. Ch. R. 586, and the extended note to that case, embracing several authorities in this State, and many English cases. Taylor v. Carpenter, 11 Paige, 2923; Partridge v. Menck, 2 Barb. Ch. R. 1013 Amos- keag Manufacturing Company v. Spear, 2 Sand. S.C. 599; How- ard v. Henriques, 3 Id. 725 3 Snowden v. Noah, Hopkins’ Ch. R. 347: In respect to 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 articles in which he deals, a different rule prevails. No property in such words, marks, or devices can be acquired. There is obviously no good reason why one person should have any better right to use them than another. “They may be used by many different persons at the same time, in their brands, marks, or labels on their respective goods, with perfect truth and fairness, They signify nothing, when fairly interpreted, by which any dealer in a similar article could be defrauded. ‘This doctrine will be found fully sustained by the cases above referred to, AMERICAN TRADE MARK CASES, 139 Stokes v. Landgraff. Are the words, forming part of the marks or brands of the plaintiff on his boxes or packages of glass, the use of which by the defendants in their marks or brands on their boxes or pack- ages of glass, in imitation of the marks or brands of the plain- tiff, is complained of, employed by the plaintiff to designate his glass, or glass manufactured at his manufactory, and do they, as used by the plaintiffs and the defendants, convey that idea; or are they employed by both to indicate merely the qualities of their respective manufactures? If the former, then so far as the right of the plaintiff to the marks or brands used by him, and the imitation of them by the defendants is established, the in- junction must be retained; but if the latter, the injunction must be dissolved. It is alleged by the plaintiff in his complaint, that from the time of the erection of his manufactory, “certain marks or brands had been adopted and used by his predecessors, and are continued by the plaintiff to distinguish the several qualities of window glass manufactured and sold by them and by the plain- tiff, to wit: the word ‘Galen’ to denote the first quality, the word ‘ Lake’ to denote the second quality, the word ‘ Cylinder’ to denote the third quality, the word ‘ Wayne’ to denote the fourth quality, and the word ‘New York’ to denote the fifth quality, of glass manufactured at the said works; and that the said marks or brands have ever been, and now are, used to denote and distinguish the respective qualities above mentioned.” After an allegation of priority of use by the proprietors of the plaintiff’s manufactory, the plaintiff proceeds to say, “that the said marks or brands are placed in Roman letters upon each box or package of glass manufactured by the plaintiff, to designate the quality of the glass contained in the respective boxes or packages, and to distinguish the glass manufactured by the plaintiff from that manufactured by other persons or at other manufactories.” In respect to the imitation of the marks or brands of the plaintiff by the defendants, it is alleged in the complaint that the defendants ‘‘have manufactured for sale large quantities of window glass, greatly inferior in quality and value to that manufactured by the plaintiff, and caused it to 140 AMERICAN TRADE MARK CASES. Stokes w. Landgraff. be put up in boxes or packages, and fraudulently caused the said boxes or packages to be branded or marked with the words, ‘Galen,’ ‘ Lake,’ ‘Cylinder,’ ‘ Wayne,’ and ‘ New York,’ or some or one of them, in imitation of the several brands or marks used by the plaintiff, and with intent to cause it to be believed by the purchasers, builders, and the public, that such glass was manu- factured at the glass works belonging to the plaintiff, and to ena- ble the defendants to sell the said glass as the manufacture of the plaintiff.” The defendants, in their answer, deny that those words are used by the plaintiff to distinguish the glass manufactured by him from that manufactured by other persons, or at other man- ufactories ; and insist that they are used by the plaintiff and de- fendant to distinguish the several qualities of their glass. They also deny that they have employed those words for the purpose of selling their glass as the manufacture of the plaintiff, or that their glass is inferior to the plaintiff’s. Annexed to the answer are transcripts of the several marks or brands both of the plaintiff and defendants, -from which it appears that in each of the plaintiff’s marks or brands, in addi- tion to one of the words above named in his name, and the vil- lage where his manufactory is situated, with a representation of the size and number of feet of glass, as ** Stokes—Clyde—Ga- len, 8 12—50 feet ;”’ or ** Stokes—Clyde—Gylinder, 8X 12—50 feet,” etc.; and that each of the defendants’ marks or brands hav- ing either the words ‘‘ Galen,” ‘ Lake,” or ** Cylinder” has, in addition, the name ‘‘ Landgraff,” with a representation of the size and quantity of glass, as ‘“ Landgraff’s Galen, 8X 12—50 feet,” or ‘* Landgraff’s Cylinder, 8X12—50 feet,” etc. The brand of the defendants having the name “New York” is in this form, ** Cleveland, New York,” with a similar representa- tion of size and quality to those above given. Affidavits have been used on both sides, from which, and also from statements in the answer, it appears that it is the practice of manufacturers of glass to designate the several qualities by names similar to those used by the parties to this action, and not by words or figures, in terms expressing the qualities. In neither AMERICAN TRADE MARK CASES, I41 Stokes v. Landgraff. of the brands of the plaintiff or defendants, containing either of the words mentioned, is any other indication of quality. In regard to the words ‘Cylinder,’ ‘‘ Lake,” and New York,” I am entirely satisfied that there is no propriety or even plausibility in the claim that they are used, by the plaintiff, in part, to distinguish his glass or glass of his manufacture. They are not adapted to that end. Other words are employed for that purpose; the name of the plaintiff and the name of the village where his manufactory is located. Neither of the words ‘‘Cyl- inder” or ‘* Lake,” in its ordinary sense, expresses the manufac- turer or manufactory, or where the manufactory is. Besides, the practice of manufacturers of glass above stated, and the ap- pearance of the plaintiff’s marks or brands in connection with it, show they are used to denote quality, and the plaintiff admits that is, in part, their object. The word ‘‘ Wayne,” being the name of the county in which the town of Galen and the village of Clyde are situated, is not in any of the brands of the defendants. The word “Galen” might properly be used to signify the place of the manufactory, but it was wholly unnecessary, and no motive for its employment for that object appears. The place is fully and sufficiently designated without that word. In view of the facts above referred to, I am constrained to believe it is used for the same purpose only as the words ‘‘ Lake” and “Cylinder,” and that it is so understood by dealers in glass generally. It is possible that consumers of glass may, to some extent, be led to believe, by the use of the words in the defendants marks or brands, that the boxes or packages upon which those marks or brands are, contained glass manufactured at the plaintiff’s manufactory; but a similar deception might be produced by the use, by both parties, of any words representing quality merely. If an impression is derived from the words which was not in- tended to be made by them, and different from their natural meaning, and injury thereby results, it must, I think, be attrib- uted solely to the practice referred to in designating qualities, 142 AMERICAN TRADE MARK CASES, Lemoine v. Ganton. by which the true qualities must necessarily, to a considerable extent, be concealed from the consumers. Having come to the conclusion that the words in question are used by both parties as indicative of quality only, it is unneces- sary to consider the question raised, as to the superior right of the plaintiff to the use of some of them, and whether the imita- tion by the defendants of the plaintiff’s marks or brands is such as to entitle the latter to complain. The motion must be granted with ten dollars costs. INJUNCTION vacated. [Notre.—This decision was affirmed upon appeal at a general term held by Jonnson, WeELLEs, and Strona, at the city of Rochester, im September, 1854. ] LEMOINE v. GANTON. Court of Common Pleas of the City of New York. Before Incrawam, C. J., and Daty, J., General Term, Fanuary, 1854. Reported, 2 E. D. Smith, 343. An action to recover damages for violating a trade mark will Nie, although, at the time the article was sold by the defendant, the plaintiff employed another mark, and had ceased to use the one imitated. The wrong and injury to the plaintiff consist in the sale of an article falsely purporting and declared to be of his manufacture, whether the deceit be perpetrated by coun- terfeiting his present trade mark, or one formerly used by him, The credit and reputation which a man acquires by his care or skill in the manufac- ture of a particular article, is a species of property which the law recognizes and protects; and when an article, not of his manufacture, is sold with the mark or symbol affixed, which he has devised to designate his own goods, an injury results to him, in the effect upon the reputation of his goods, provided the article so sold is inferior thereto, and in the diminution of the demand for his goods, in case such article is equal or superior in quality. AMERICAN TRADE MARK CASES, 143 Lemoine v. Ganton. Whether the owner of a trade mark has a right of action for its violation, in reference to a specific article, which he has himself purchased through an authorized agent, quere? His recovery, in case an action could, under such circumstances, be sus- tained, would be limited to nominal damages. Tuts action was brought to recover damages for the infringe- ment of a trade mark devised by the plaintiff, who was a manu- facturer of calfskin leather, in France. On the trial, which was conducted before Ingraham, First J., and a jury, it appeared in evidence, that, about a year before the sales by the defendant of skins differently manufactured, but bearing the plaintiff’s trade mark, a new mark had been adopted and the use of the one in question wholly discontinued by the inventor, Lemoine. One of the sales complained of was made to the plaintiff him- self through an agent residing in New York, and authorized to purchase. The complaint in the action was verified by the plaintiff’s agent above mentioned, in an extended deposition, wherein sev- eral allegations respecting the origin of the trade mark, the use thereof by the defendant, and other matters relating to the con- troversy between the parties, were stated to be true upon the affiant’s own knowledge. Upon the trial, he was called as a principal witness for the plaintiff; and on his cross-examination, the fact was elicted for the purpose of impeachment, that he did not and could not actually know the truth of several averments made in his verification of the complaint, some of which were shown to be at variance with the facts. The verification in question was in the English language, of which the witness, who was a Frenchman, had so little knowledge, that his testimony was necessarily given through an interpreter. On resuming his direct examination, the witness, in answer to questions which were objected to, stated that part of the deposition was read over to him, part in English—which he could not understand—and part in French, before he verified it; that he was not capable of reading it himself; that he did not know what portions were read in the two languages respectively; and, in reply to the question also objected to, “What kind of knowledge did you 144 AMERICAN TRADE MARK CASES, Lemoine v. Ganton. mean in the affidavit by your own knowledge?” he stated, that he ‘“‘ made a supposition,” from circumstances which he men. tioned. The judge charged, among other things, that the defendant was liable for the sale of leather stamped with a former trade mark of the plaintiff, although at the time of the sale the latter employed exclusively a mark of a different device, and that his property in the original trade mark was not divested by discon- tinuing its use. Also, that the plaintiff was entitled to recover nominal damages, even if a sale was made by the plaintiff’s pro- curement. The proof of the plaintiff’s property in the trade mark in question, rested solely upon the evidence of the. plain- tiff’s agent, in reference to which the jury were instructed as follows: ‘“*The witness, Boscher, makes out the necessary proof, if he is to be believed. Unless the matter of his affidavit annexed to the complaint is explained, he is not entitled to the same credit as the other witnesses. That affidavit did not state the truth. It is not pretended, on the part of the plaintiff, that it is true. It is said, in explanation, that he is foreigner, and does not understand English, especially when read to him, as it is claimed his affidavit was, and that he confounded knowledge by information, with what is known to the law as personal knowl- edge. But he had no right to swear to an affidavit the contents of which he did not know, and it is for the jury to say what de- gree of credit ought to be given him under the evidence bear- ing on that point. If he has willfully sworn falsely in one thing, he is not to be believed in anything. But if he has only erred in one statement, and his testimony is confirmed by the other facts in the case, he may be believed so far as he is con- firmed.” Exceptions were noted to the submission to the jury of the question of credibility, under the circumstances proved, and other portions of the charge were also excepted to. A verdict was found for six cents. A motion for a new trial, made by the defendant at special term, was denied, and an ap- peal was prosecuted from the decision thereon. AMERICAN TRADE MARK CASES. 146 Lemoine v. Ganton. Edwin W. Stoughton, for the defendant, cited Kuott v. Morgan, 2 Keen, 213, 2193; Curtis on Copyright, 219, and on the ques- tion of evidence, Cowen & Hill’s Notes, part i., p. 396; Dunlop v. Patterson, 5 Cowen, 243, 246; State v. Fim, 1 Devereaux, 508; Newell v. Wright, 8 Conn. 319; Allen v. Young, 6 Mon. 136. Fohn Cochrane, for the plaintiff, Daty, J. The question put to the witness, Boscher, was allowable under the circumstances. His credibility was the mat- ter in question. ‘The defendant sought to impeach it by show- ing, on an examination of the witness in his own Janguage, on the trial, through the means of an interpreter, that he had no positive knowledge of the facts stated in an affidavit he had made in English to be true ‘tof his own knowledge,” and the defendant succeeded in doing so. ‘If it be intended,” says Abbott, C. J., in the Queen’s case.(4 Brad. & Bing. 314), “*to bring the credit of a witness into question by proof of any- thing he may have said or declared touching the case, and he admits the words or declarations imputed to him, the witness has the opportunity of giving such reason, explanation, or exculpa- tion of his conduct, if any there be, as the particular circum- stances of the transaction may happen to furnish.” Now if a witness has sworn to a deposition drawn up in a language not his own, and with which he is but imperfectly acquainted, and it appears, upon his examination in his own tongue, that he has not any positive knowledge of facts stated in the deposition to be true of his own knowledge, I think it is perfectly competent to show by the witness that he did not understand the full import of the language used in the deposition, and that all that he in- tended to convey was his conviction of the truth of the fact from circumstances which had come to his knowledge. I am not quite sure that even an ignorant witness, who has sworn to a deposition in his native language, might not be suffered to state, where his credibility was in question, that he had a different un- derstanding of the language used than such as would be given to it by a court and jury; but certainly a foreign witness, but 146 AMERICAN TRADE MARK CASES. Lemoine v. Ganton. imperfectly acquainted with the English language, should be per- mitted to do so. The explanation of the witness, in every such case, goes to the jury for what it is worth, upon the general] question of his credibility. Here the witness swore that he did not understand the English language, and several witnesses, sub- sequently called to the point, swore that his knowledge of it was very imperfect. He stated that he was incapable of reading the affidavit him- self; that a part of it was read to him in English and a part of it in French, which part in English and which in French he could not remember. He was then asked what kind of knowledge he meant in the affidavit by his own knowledge, which was the question objected to, and his answer showed that he meant sim- ply his conviction or belief, from circumstances which had come to his knowledge, that the fact was as he had stated it to be. I think there was no error in permitting him to give the explana- tion. The charge of the judge in respect to the effect to be given -to Boscher’s testimony came fully up to the request made of him. He called the attention of the jury to the materiality of his evi- ‘dence, remarking that it made out the necessary proof of the -existence of a trade mark, if he was to be believed. He called their attention to the fact of the affidavit, the untruth of some -of the statements made by the witness in it, and the explana- tion given by him, and told the jury that it was for them to say ‘what degree of credit ought to be given to him, and that if he shad willfully sworn false in one thing, he was not to be Believed in anything. This was going as far as the law requires, and was fully up to the defendant’s request. The fact that the plaintiff had discontinued the use of this trade mark for three years, would not deprive him of a right of action against the defendant for selling leather which was not manufactured by the plaintiff, but stamped in the same manner in which the plaintiff had formerly designated the leather manu- factured by him, thus purporting to be of his manufacture, and declared by the defendant at the time of sale to be the genuine Lemoine .calfskins. The credit and repuation which a man AMERICAN TRADE MARK CASES, 147 Lemoine v. Ganton. acquires by his care or skill in the manufacture of a particular article, is a species of property which the law recognizes and protects; and where, as a means of extending his reputation and guiding purchasers, he affixes some mark or symbol to designate that the article is of his manufacture, he is injured by the sale of an article manufactured by another, with his peculiar symbol or trade mark affixed to it. If the article is inferior to his own, he is injured in reputation; and even if it be of a similar quality and kind, its sale goes so far to diminish the sale of his own ar- ticle, and thus works a pecuniary damage. The wrong and injury to the plaintiff consisted in the sale of calfskins falsely purporting and declared to be of his manufac- ture; and it makes no difference whether that object was effected by counterfeiting the trade mark which he uses at present, or one that he formerly used. An injury results to him in either case. One of the sales was shown to have been brought about by the procurement of the plaintiff’s agent, and in respect to that he has no claim for damage. It is equivalent to a sale made to himself, by which he neither gains nor loses. Perhaps he would, in that case, as the judge held, be entitled to recover nominal damages, on the ground that the sale of the article in his name, being a wrongful act, would be sufficient to give a right of action. But it is not necessary to pass upon that ques- tion. It was not proved that the other sale was by his procure- ment, though the judge in his charge assumed that the plaintiff’s counsel had substantially conceded the fact. The judge told the jury that they were at liberty so to find the fact, but the jury having rendered a verdict in favor of the plaintiff for nom- inal damages, we may, in support of the verdict, assume that they found the fact to be otherwise. The motion for a new trial should therefore be denied. Orper denying a new trial affirmed. 148 AMERICAN TRADE MARK CASES, Gillott v. Kettle. GILLoTT v. KETTLE. Superior Court of the City of New York. Before Oaxrey, C. J., and Bosworts, Horrman, and Stusson, JJ., General Term, March, 1854. Reported, 3 Duer, 624. The plaintiff was a manufacturer of steel pens, which were put up for sale in boxes. Those containing pens of the first quality were labeled No. 303, and those con- taining pens of an inferior quality were labeled No. 753. The complaint charged that the defendant was in the practice of removing the labels from the boxes Jast mentioned, and putting thereon labels numbered 303, closely imitating the plain- tiff’s labels bearing that number. Held, that this practice of the defendant was a fraud upon the public and the plaintiff, and being a fraud productive of damage could be restrained by injunction. Tuis is an appeal by the defendant from an order enjoining him, as hereinafter stated. The papers on which the injunction was granted show that the plaintiff is, and for a long time has been, extensively engaged in the manufacture of steel pens, at Birmingham, in England; that the pens made by him are well known as such in the market, and are extensively sold, as well in the United States as in the country in which they are made; that large quantities of them are sold in boxes containing one gross each; that each box is labeled in a manner and with a label having devices on it, which indicate that the plaintiff is the manufacturer of the pens, and in consequence of which they are bought and sold in the market as pens made by him; that the labels have numbers or marks impressed on them which indicate, and which are recognized by ,dealers as indicating, an actual difference in the quality of the pens. The pens in boxes numbered 303 are bought and sold as being an extra fine-pointed, and are in fact such. The pens in boxes numbered 753 are of an inferior quality, are bought and sold as such, and that num- ber is understood by dealers to denote that they are an inferior pen. The former are sold by the plaintiff at about seventy-five and the latter at about eighteen cents a gross, AMERICAN TRADE MARK CASES. 149 Gillott v. Kettle. From the boxes containing the plaintiff’s label or trade marks, and bearing the number 753, the defendant was in the practice of removing the plaintiff’s label, and putting on in place thereof labels which he made or caused to be made closely imitating the genuine labels of the plaintiff, which bear the number 303 ; that this act was productive of great injury to the plaintiff, by destroy- ing public confidence in his honesty and bringing the pens made by him into discredit by reason of his inferior pens being disposed of as being his best pens. The defendant was enjoined, by an order made by Mr. Justice Hoffman, from continuing this prac- tice, and from that order the defendant appeals. A. H. Wallis, for appellant. G. C. Goddard, for respondent. Boswortu, J. The fraud complained of consists in selling an inferior article of the plaintiff’s manufacture as being one of a superior quality. The fraud, to the extent that it may be successful, is twofold. The public is defrauded by being in- duced to buy the inferior for the superior article. The plaintiff is defrauded by an unjust destruction of confidence that his pens are put up for sale and assorted with reference to the quality, indicated to dealers by the Jabels on the boxes which contain them. From an order restraining the continuance of this fraud- ulent practice the defendant has appealed. This case differs from those in which a manufacturer seeks to restrain third parties from using and placing upon articles made by themselves the device or trade mark of the former, by which articles of his own manufacture are known to be his, and are recognized as such in the market. The ground on which a court of equity exercises jurisdiction in those cases is the pre- vention of fraud, and of damages consequent upon it, that might be irreparable. In this case the defendant has not attempted to sell an article made by himself, by fraudulently creating the impression that it was made by the plaintiff. But he has at- tempted to sel] an article made by the plaintiff to be sold as an 150 AMERICAN TRADE MARK CASES. Gillott vw. Kettle. inferior one of his own manufacture, and so labeled by him as to denote to dealers that fact, by removing the label and putting in its place a spurious one so nearly imitating another genuine label used by the plaintiff on his best quality of pens as to be calculated to induce a belief that it was put on the boxes by the plaintiff himself, and which Jabel denotes to traders that the boxes on which it is placed contain pens of a better quality than was indicated by the label for which the spurious one was sub- stituted. By such a practice the defendant ‘‘endeavors by a false rep- resentation to effect a dishonest purpose; he commits a fraud upon the public and upon the manufacturer. ‘The purchaser has imposed upon him an article that he never meant to buy, and the manufacturer is robbed of the fruits of the reputation that he had successfully labored to earn. In such a case, there is a fraud coupled with damage, and a court of equity, in refus- ing to restrain the wrong-doer by injunction, would violate the principles upon which a large portion of its jurisdiction is founded, and abjure the exercise of its most important functions—the suppression of fraud and the prevention of a mischief that other- wise may prove to be irreparable.” These were stated, and as we think correctly, by Mr. Justice Duer in the Amoskeag Manufacturing Co. v. Spear, 2 Sand. 8. C. 606, to be the principles on which rests the jurisdiction exercised to restrain the violation of a right acquired to use particular trade marks. , Fraud and damage resulting from it always entitle the injured party to relief. The remedy by injunction is invariably granted when the nature of the injury is such that a preventive remedy is indispensable and should be permanent. It is obvious that in cases like this, if the injured party is obliged to seek redress by actions to recover damages, there will be no end to litigation, and certain and adequate relief must be unattainable. We all concur in the conclusion that the order appealed from is not erroneous, and that it should be affirmed with costs. AMERICAN TRADE MARK CASES. Tot 4 Ames v. King. Ames v. KING. Supreme Judicial Court of Massachusetts. Before all the Fustices, Octo- ber, 1854. Reported, 2 Gray, 379. In Massachusetts a bill in equity to restrain the fraudulent use of trade marks can not be maintained, under St. 1852, c. 197, without alleging and proving that such use was for the purpose of falsely representing the articles so marked to be manufac- tured by the plainciff. Tus was a bill in equity to restrain the use of the plaintiffs’ trade marks. The case was set down for a hearing on the bill and answer, which was under oath. The bill alleged that the plaintiffs were shovel manufacturers in Easton, under the name of O. Ames & Sons; that they stamped their shovels with the words ‘“*O. Ames,” to denote that they were of their manufacture, and to distinguish them from shovels manufactured by other persons; that in the process of finishing their shovels this mark was so much erased upon about one-third of them, that it appeared to be only ‘*4mes,” and not “OQ. Ames,” and that the plaintiffs’ shovels were generally known in the market, and quoted in prices current, as ** Zmes’s shovels,” and not as ‘OQ. Ames’s shovels;” that the plaintiffs enjoyed a good reputation with the public for the quality of their shovels, and that in California, the principal market for such shovels, the plain- tiffs’ shovels commanded a higher price than shovels made by other manufacturers and bearing different marks; that the defendant was a manufacturer of shovels at Raynham, and made shovels of a shape similar to plaintiffs, and well knowing the trade mark above mentioned to be the trade mark of the plaintiffs, and that they had the sole right. to use it, and also well knowing the good reputation enjoyed by the plaintiffs as manufacturers of shovels, but contriving to injure and defraud the plaintiffs and the public, had fraudulently marked a large quantity of shovels made by him, which were much inferior to the plaintiffs’ shovels, with the word 152 AMERICAN TRADE MARK CASES. Ames v. King. Ames, in imitation of the plaintiffs’ mark, and in order to denote that the same were made by the plaintiffs, and that it was very difficult, if not impossible, for any one but a dealer in shovels to determine from the mark or stamp alone that said shovels were not of the plaintiffs’ manufacture; that the reputation of the plaintiffs had been greatly injured in the market, by the sale of shovels bearing marks and stamps in imitation of their said mark, not of their manufacture, but of inferior quality ; and the amount of their sales and profits rendered less than they otherwise would have been; and that still greater injury would be received, if shovels so marked should continue to be manufactured and sold by the defendant or any other person, and that such injury was incalculable and irreparable. The answer admitted most of the allegations in the bill; burt denied that the plaintiffs bad the sole right to use the word “Ames” upon shovels, and denied that the defendant ever stamped or marked any shovels with the name “Ames,” with intent to imitate the plaintiffs’ shovels or their mark, or to rep- resent the same to be the manufacture of the plaintiffs, or to injure, defraud, or deceive the public or the plaintiffs, or any other person; but admitted that he did make and stamp two hundred dozen shovels with the name of ‘‘Ames;” under these circumstances and for these purposes: The defendant for several years had been a manufacturer of shovels for different dealers in that article; and it had been his* custom, when requested, to stamp shovels with the name of the dealer for whom he manu- factured them. In the spring of 1852, he received an order for two hundred dozen shovels for a dealer whose name was Edward B. Ames, accompanied with a request to stamp them ‘“tAmes;” and in pursuance of this order and request, stamped the same “Ames,” but not ‘*O. Ames,” and solely to denote that they were sold, or kept for sala, by Edward B. Ames, and were made expressly for him. The defendant then alleged that said shovels were made on the same terms as shovels of the same quality made by him for other dealers, and that he did not know or believe, and had no reason to know or believe, that said shovels were ever sold or offered for sale, or intended for sale, as and AMERICAN TRADE MARK CASES. 193 Ames v. King, for shovels of the plaintiffs’ manufacture; and that he never marked or stamped any other shovels with the name of Ames. C. F. Reed, for the plaintiffs. E. H. Bennett, for the defendant. BicELow, J. Inasmuch as this court has no general juris- diction in cases of fraud, we can take cognizance of this cause only so far as special jurisdiction is given by St. 1852, c. 197, entitled “‘an act further to protect trade marks.” By reference to that statute it will be found that the only power conferred by it on this court is to authorize the restraint by injunction of the fraudulent use of trade marks, and other similar devices, em- ployed ‘‘ for the purpose of falsely representing any article to be manufactured by” a person or firm, who did not in fact make it. To enable a party to maintain a bill in equity under this statute, he must therefore allege and prove such fraudulent use for the purpose of effecting such false representation, This case is set down for hearing on bill and answer. The answer is sworn to, the oath of the defendant thereto not having been waived by the plaintiffs. By a familiar rule in proceedings in chancery, when a case is set down for hearing on bill and answer, without proofs, the answer of the defendant under oath is conclusive as to all material facts averred in the bill, and fully and distinctly denied by the answer. In the case at bar, the bill states a case clearly within the statute above cited. But the essential averments in the bill, of a fraudulent use of the plain- tiffs’ name by the defendant, for the purpose of falsely repre- senting articles to have been made by them, which were in fact manufactured by the defendant, are particularly and fully tra- versed by the answet. It is very clear, therefore, upon the case, as it is now presented, that the plaintiff can not maintain his bill. Bix. dismissed. No 154 AMERICAN TRADE MARK CASES. Heath v. Wright. Heatu v. WricHT. Circuit Court United States, Eastern District of Pennsylvania. Before Kane, J., October, 1855. Reported, 3 Wall. Fr. Chancery will not interfere by injunction in questions of trade marks between the venders of patent medicines, being quack medicines; such questions having too little merit to commend them on either side. THis was an application by the complainant for an injunction to restrain the defendant from using the name ‘“‘ KATHAIRON” for a compound for toilet purposes, manufactured and vended by both parties. The complainant alleged that this term was his trade mark, which the defendant denied, alleging that the word “* Kathairon” was in common use, like that of magazine, etc. Both Kathairons consisted essentially of a mixture of castor oil and brandy; and it appeared by the labels'upon the bottles which contained the respective “‘ Kathairons,” that the complainant claimed for his that it would infallibly cure ‘‘Scald-head, Tetter, Ringworm, Erysipelas, Itch, Barber’s Itch, Shaving Pimples, Salt-rheum, Chapped Hands, Stings, Cuts, Chilblains, Swell- ings, Inflammations, Rheumatism,” etc., and that it would ‘almost instantly relieve sympathetic attacks of Nervous Head- ache,” besides ‘‘restoring the hair and preventing it from turn- ing gray.” ‘*It would be labor lost,” his label declared, ‘to enumerate the wonderful properties of this invaluable prepara- tion; its reputation, co-extensive with the civilization of the globe, makes all praise superfluous, all exaggeration impossible.” The claim of the defendant was not quite so extensive. He declared his to be a “* sovereign remedy for tetter, itch, scald-head, salt-rheum, ringworm.” He made mention of its power to cure erysipelas, but professed that it was able to cure barber’s itch, chapped hands, chilblains, stings and bites of insects, infamma- tions, swellings, etc., beside preserving the hair and keeping it AMERICAN TRADE MARK CASES. 16s Merrimack Manufacturing Co. v. Garner. from turning gray,’ and dispelling nervous headache. And he averred that Ais “ Kathairon had had millions of patrons.” Kang, J. It is impossible for me to distinguish this case in principle from that of Fow/e v. Spear, which was before me on a similar motion some years ago. I then refused an injunction, against the vender of a patent medicine at the suit of his brother quack, who complained that his label and envelope of certificates had been imitated, on the ground that the special action of chan- cery could not be involved in a controversy which had so little merit to commend it on either side. InjuNcTIon refused. Tue Merrimack Manuracturinc Co. v. GARNER. Court of Common Pleas of the City of New York. Before Incranam, C. J., and Dary and Wooprurr, JJ., General Term, November, 1855. Reported, 2 Abd. Pr. R. 318, and 4 E. D. Smith, 387. ’ An injunction should not be granted at the commencement of a suit brought to enjoin the defendants from the use of plaintiff’s trade mark, and to recover damages, etc., unless the legal right of plaintiff, and the violations of it by defendants, are entirely clear. Hence where plaintiff’s label was, “ Merrimack Prints, Fast Colors, * Lowell, Mass.,” and defendants’, “ English Free Trade, Warranted Fast Colors,” the court refused to continue an injunction. Tuts action was brought by the Merrimack Manufacturing Company against Thomas Garner, Darius R. Mangam, and L.- Mortimer Thorn. The complaint stated that the plaintiffs were a corporation, established at Lowell, Massachusetts, and en- gaged in the manufacture of cotton goods, known as “‘ prints; ” that their goods had acquired a high reputation; that they had 156 AMERICAN TRADE MARK CASES. Merrimack Manufacturing Co. v. Garner. been accustomed since their incorporation in 1822 to use upon the prints manufactured by them certain tickets or trade marks, varying somewhat in orm and device, but containing the distin- guishing words, Merrimack Prints,” and by such usage had acquired an exclusive right to the use of the name ‘ Merri- MACK” as a trade mark; that in 1851 they adopted, and had since extensively used, a label of a particular device, containing the words ‘* Merrimack Prints,” to the use of which label they had acquired an exclusive right ; that the defendants, being engaged in New Yorkin the manufacture of cotton prints, after- ward fraudulently prepared a ticket similar to that adopted in 1851 by plaintiffs, having the word ‘* MerRIMacK”? conspic- uously inserted, and had used it in the sale of their goods as an imitation of plaintiffs’ trade mark; that by reason of this imi- tated trade mark many persons had been induced to purchase prints manufactured by the defendants, in the belief that they were of the plaintiffs’ manufacture, whereby plaintiffs had sus- tained much damage. The complaint prayed an injunction re- straining defendants from using the imitated ticket, or the words %¢ Merrimack” or **Merrimack Prints;” for an account of profits realized by defendants upon sales of goods made by them and sold with an imitation of plaintiffs’ trade mark, and for judg- ment for such profits and for damages. Attached to the complaint were specimens of the two tickets referred to. ‘They were of nearly the same size, each of them being about six inches long by four wide, and in the shape of a parallelogram scolloped at the corners. Both of them were printed on straw-colored paper of almost precisely the same shade. Each of them consisted of a border line with corner ornaments, an oval wreath of flowers within the border and an inscription within the oval wreath. The border lines were almost precisely the same. The corner ornaments differed con- siderably. In the plaintiffs’ label they were light vines whose tendrils extended out upon each side of the parallelogram toward the opposite corner, but there was a considerable space between them. In the defendants’ label the design of the corner orna- ments was different, being much heavier and the arms of each AMERICAN TRADE MARK CASES, 157 Merrimack Manufacturing Co. 7. Garner. ‘xtended out and met those of its neighbor in the opposite cor- ner, so that the four together formed a continuous border around the label. The design of the oval wreath of flowers, which was the most conspicuous ornament in the plaintiffs’ label, was almost precisely the same in both tickets, but it was much more nicely executed in the plaintiffs’ label than in the defendants’. At the foot of each wreath was a blank space left for the inser- tion of the number of yards in the piece. This number in the plaintiffs’ label was printed; in the defendants’ it was written with a pen. The inscription in the plaintiffs’ label consisted of two lines curving with the sides of the wreath and a sort of ornamental scroll between them. The upper lines contained the words, “ MERRIMACK PRINTS,” the lower line, “ Fast Corors, * Lowett, Mass.” ‘This inscription in the defendants’ label consisted of three lines, the upper and lower of which were curved like the lines in the plaintiffs’ inscription, and the middle one occupied the place of the scroll used by the plain- tiffs; the words were: ENGLISH FREE TRADE. MERRIMACK STYLE. WARRANTED FAST COLORS, In general, the defendants’ label was heavier or darker and more coarsely executed than the plaintiffs’. On the complaint, which was verrified, and one additiona} affidavit, the plaintiffs obtained at special term a temporary injunction, which the defendants now moved to dissolve. Defendants’ motion was based upon their verified answer, which stated as follows: That the only way in which the kind of goods manufactured by the plaintiffs and defendants, and known as Merrimack Prints, were distinguished or described by dealers in such goods, was by reference to the names of the manufacturers of them; that the plaintiffs had no exclusive right in the manufacture of the goods known as Merrimack Prints, or in the use of the term Merrimack or Merrimack Prints; that the plaintiffs had not confined themselves to any peculiar design in their tickets, but had fre- 158 AMERICAN TRADE MARK CASES. Merrimack Manufacturing Co. ». Garner, quently changed them, and had used since the year 1851 a vari- ety of labels beside that mentioned in the complaint, specimens of which were attached to the answer; that the defendants were engaged as. agents in the sale of goods manufactured by the Dutchess Company, a New York corporation, whose goods were of a finer quality than those made by plaintiffs, but were sold at a lower price; that the Dutchess Company had, since 1851, used the ticket mentioned in the complaint, but had also, during the same time, used various other tickets, specimens of which were also attached to the answer; that the words ‘** Mer- rimack Style,” on their labels, were taken from a label affixed to similar goods imported from Great Britain previous to 1850, and not from any label made by plaintiffs. And the answer denied that the ticket used by defendants was an imitation of any trade mark of the plaintiffs, or that the defendarits had ever sold any of the goods manufactured by the Dutchess Company, as goods manufactured by the plaintiffs, or that the plaintiffs had sustained any of the damage alleged in the complaint. Neither of defendants’ labels attached to the answer particu- larly resembled any of those used by plaintiffs. On the hearing of the motion the plaintiffs offered a number of affidavits of dry goods merchants doing business in New York, to the effect that ‘* Merrimack Prints” were known in the trade as prints manufactured by the plaintiffs; that there was no such thing known in the trade as a ‘‘ Merrimack Style,’’ meaning a particular style of goods independent of the factory from which they came, but that where the word Merrimack was used on prints, the trade always understood that the goods were made by the plaintiffs. These affidavits were offered in support of the allegations in the complaint. The defendants objected to their being received. The principal authorities cited upon the argument before the special term were the following: In support of the motion, Canham v. Fones, 2 Ves. & B. 218; Singleton v. Bolton, 3 Doug. 293; Perry v. Truefitt, 6 Beav. 66; Spottiswood v. Clark, 2 Phillips, 154; 2 Sand. Ch. R. 622; Craw- AMERICAN TRADE MARK CASES. 14g Merrimack Manufacturing Co. v. Garner. shay v. Thompson, 4 Man. & G. 357; Rogers v. Nowill, 5 C. B. 1103 Seely v. Fisher, 11 Sim. 581; Clark v. Freeman, 11 Beav. 112; Holloway v. Holloway, 13 Ibid. 209; cases cited in 2 Sand. Ch. R. 586, 600; Bramwell v. Holcomb, 3 Man. & G. 738; Saunders v. Smith, Ibid. 711; Rochdale Co. v. King, 2 Sim. N. S. 78. In support of the injunction: Coats v. Holbrook, 2 Sand. Ch. R. 594; Perry v. Truefitt, 6 Beav. 66; Howard v. Henriques, 3 Sand. S. C. 725, Amosk. Man. Co. v. Spear, 2 Sand. S. C. 599; Croft v. Day, 7 Beav. 84. The motion to dissolve the injunction was denied, the follow- ing opinion being rendered: - Wooprurr, J. After a careful consideration of the subject and an examination of the authorities upon which counsel relied on the argument, my conclusions are: First. That the plaintiff is not at liberty to read affidavits on the motion to dissolve the injunction, to support the allegations in the complaint, and the affidavits which were presented on the argument have been therefore excluded. Whether in a case in which the defense rests upon new matter set up in the answer in avoidance of the facts charged in the complaint, but admitting the charges to be true, the answer may be regarded as itself an affidavit of such new matter, I do not think it now necessary to admit or deny. Second. That upon the contplaint and answer, the complainants’ trade marks have been and are so simulated as probably to deceive those who desire to purchase the complainants’ goods, and so as (although perhaps not to deceive those who purchase directly from the defendants themselves) to deceive the great mass of consumers, especially the unskilled and all who are not on the alert to detect devices adopted to facilitate sales, by which false impressions respecting the origin of the goods are produced. That the specific differences between the two labels are so ambiguous, and convey to the purchaser so little information, that the exhibition of the defendants’ goods, bearing che label in 160 AMERICAN TRADE MARK CASES. Merrimack Manufacturing Co. ». Garner. question, unaccompanied by any further information, can not fail to induce customers to believe that the goods are of the plaintiffs’ manufacture; that is, are ‘* Merrimack Prints.” That the defendants’ answer does not suggest any sufficient reason or motive for the use of the label complained of, or of the term ‘“‘ Merrimack,” in connection with the equivocal styles or otherwise, unless accompanied by words clearly and intelli- gibly excluding the idea that the goods are made by the plaintiff, and that although the defendants deny any actual intent to de- fraud, their acts tend directly to that result. ~ That just liberty to compete with the plaintiffs in the fullest and freest manner does not require that the defendants should use the label in question, but, on the contrary, fair and open competition, by its very terms, imports that the goods of the de- fendant should be exhibited in such wise that the defendants shall themselves gain the reputation and credit which the excel- lence claimed for their goods will secure to the manufacturers. That the injunction can not operate to prejudice the defend- ants in a frank and fair endeavor to compete with the plaintiffs in respect to the description and quality of their goods, unaccom- panied by devices to mislead the public in respect to the actual origin of the goods sold; and although this furnishes no reason for granting an injunction if the plaintiffs do not otherwise show themselves entitled thereto, it relieves the remedy from any im- putation of harshness toward the defendants. And that the delay of the plaintiffs in asserting their rights has not been such as ought to deprive them of the injunction, if, in the judgment of the court, they are otherwise plainly entitled to such protection. The injunction, in its spirit and manifest design, must be sus- tained. Some modification of its terms may be proper. The defendants should be restrained from using the label specified in the complaint, and also from using a label containing the word * styles,” or any other ambiguous or equivocal word or words, unless accompanied by terms which plainly exclude the idea that the goods (to which it may be affixed) are manufactured by the FF AMERICAN TRADE MARK CASES, 161 Merrimack Manufacturing Co. v. Garner. plaintiffs, or are Merrimack Prints. And the injunction may be modified accordingly. The cost of the motion should abide the event of the suit. From the order of Judge. Woodruff, the defendants appealed. W. 8. Dodge and D. Lord, for appellants. A, F, Smith, for respondents. Daty, J. Courts of equity have not interfered in cases of this kind, except in aid of a legal right, and if the fact of the plaintiff’s property in the trade mark, or if the defendant’s inter- ference with it, has appeared at all doubtful, the plaintiff has been left to establish his case first by an action at law. Motley v. Downman,3 Mylne & C. 13 Croft v. Day, 7 Beav. 84; Spot- tiswood v. Clark, 2 Phillips, 154; Partridge v. Mfenck, 2 Sand. Ch. R. 626. “Unless the case be very clear,” says Lord Cottenham, in Spottiswood v. Clark, ‘‘it is the duty of the court to see that the legal right is ascertained before it exercises its equitable juris- diction.” ‘ Unless it is so clear that there can be no reasonable doubt with regard to the legal right, it is better that the court should not exercise its equitable jurisdiction.” And again, he says, in Motley v. Downman,** Although sometimes, in a very strong case, it interferes in the first instance by injunction, yet in a general way it puts the party upon asserting his right by trying it in an action at law.” To the same purport was the holding of Lord Langdale in Croft v. Day. ‘‘ There are cases,” he says, “like that of the London Conveyance Company, Kuott v. Morgan, 2 Keen, 213, in which the injunction is granted at once; there are cases like that of the Mexican Balm, Perry v. Truefitt, 6 Beav. 66, in which the injunction is refused until the plaintiff has established his right at law.” In the case now before us, the property of the plaintiffs in the trade mark used by them is not in dispute, but the question is whether that used by the defendants is either a fraudulent imita- tion of it, or such an imitation as would ordinarily deceive pur- 162 AMERICAN TRADE MARK CASES. Merrimack Manufacturing Co. v. Garner. chasers. There isan undoubted resemblance. The words used to designate the particular kind of goods in both labels are in- closed in a floral wreath of the same description. But this, of itself, is not enough. Partridge v. Menck, 2 Sand. Ch. R. 622; 2 Barb. Ch. R. 1013; Spottiswood v. Clark, 2 Phillips, 154. In the first of these cases, the embellishment of a bee-hive was used upon both labels, and in the latter case, the almanac pub- lished by the defendant was embellished, like that of the plaintiff, with a wood-cut of the Greenwich Observatory upon the cover. In the words printed upon the two labels, in the present case, there is a difference, and an obvious one. The words on the plaintiffs’ label are, “‘ Merrimack Prints, Fast Colors, Lowell, Mass.,” on that of the defendants, “ English Free Trade, Merri- mack Style, Warranted Fast Colors.” The existence of any fraudulent intent, or of any intention to imitate the plaintiffs’ labels, and to pass their goods off for those of the plaintiff, is denied by the defendants in their answer, and we are left to de- termine, so far as the present relief is asked for, whether we can say, upon a mere comparison of the labels, that the effect of that used by the defendants would be to deceive the public, and thereby operate injuriously to the plaintiffs; and upon that com- parison alone I think the case is not so clear to me as to war- ‘rant the granting of an injunction in the first instance. The ‘rule laid down by Vice-Chancellor Sandford, in Partridge v. Menck, is this: The court will hold any imitation colorable which re- quires a careful inspection to distinguish its marks and appear- cance from those of the manufacturers imitated. It is certainly not bound to interfere where ordinary attention will enable a purchaser to discriminate. “It does not suffice to show,” he says, “that persons incapable of reading the labels might be deceived by the resemblance. It must appear that the ordinary mass of purchasers, paying that attention which such persons usually do in buying the article in question, would probably be deceived,” and, applying that rule to the labels in the present case, I think we can not say that the ordinary mass of purchasers would be deceived by the defendants’ label. Their label is not only distinguished from that of the plaintiff AMERICAN TRADE MARK CASES. 163 Merrimack Manufacturing Co; v. Garner. by the words “ English Free Trade,” to which a very significant meaning may be attached, but instead of Merrimack Prints, we have Merrimack Style. Now there can be no doubt but that the defendants have a right to imitate and sell the same style of goods as those manufactured by the plaintiffs. Singleton v. Bolton, ee 293; Hogg v. Kirby, 8 Ves. 215; Canham v. Fones, 2 es. & B. 2183; Seely v. Fisher, 11 Sim. 581; Holloway v. Holloway, 13 Beav. 209. And the plaintiffs have no ground of complaint unless the label used upon the article in imitation would lead purchasers to suppose that they were buying goods actually manufactured by the plaintiffs. It is alleged in the answer that the goods of the plaintiffs are widely known as the “ Merrimack Style,” from their width and description. The. same style and description of printed goods is not otherwise known among the trade, and that the only way of informing the public that the defendants’ goods were of the same style and description, was by comparing them with or likening them to the goods of the plaintiffs. It may be, from the views expressed in some of the cases, that the defendants would not be at liberty to manufacture and vend an inferior article, and put it forth to the public as of the same kind and quality as that of the plaintiffs, though [think it exceedingly doubtful if they could be restrained in such a case. Clark v. Feeeman, 11 Beav. 112. In the pres- ent case, however, it is alleged in the defendants’ answer, that the finest qualities of the article sold by them with the label aforesaid are superior to the finest quality of prints manufactured and sold by the plaintiffs. I think the injunction should have been dissolved, and the parties left to try the issue of an actual imitation involving un- doubtedly the question of fraudulent intent and of actual injury, raised by the pleadings, and then, if the plaintiffs succeed in establishing a case of actual injury to them by the use in the market of the defendants’ label, the court would restrain the defendants by injunction from making use of that label thereafter. WooprvrFF, J., dissented. I retain still the views expressed by me in my opinion at special term, which may, for the pur- poses of this occasion, be taken as my opinion on this appeal. 164 AMERICAN TRADE MARK CASES. Christy 7. Murphy. Curisty v. Murpay. Supreme Court of New York. Before Crerke, J., Special Term, Febra- ary, 1856. Reported, 12 How. Pr. R.77. A court of equity will protect by injunction the name of an enterprise undertaken for the amusement of the public. The use of the name “ Christy’s Minstrels "’ protected, F. S. Stallknect, for plaintiff. F. M. Van Cott, for defendants. CLeRKE, J. It is now well established that the court will grant an injunction against the use by one tradesman of the trade marks of another. Will this protection be extended to enterprises undertaken for the purpose of affording amusement or recreation to the public? ; With regard to trade it may be alleged that the interests of commerce and the encouragement of industry manifestly re- quire and deserve the interposition of the court; while the well- being of society is not sufficiently concerned to require the ex- tension of this species of protection to undertakings of which the main, if not the sole object, is at best mere pastime. This can be the only ground to which it can be plausibly claimed that the court can make any difference in interposing relief be- tween the present case and an ordinary case of trade marks. But I have been unable to discover any essential difference in kind, in reference to this subject, between establishments formed for the purpose of trade and those formed for the purpose of mere amusement. There may be, in degree, a difference, and a considerable difference, in the respectability and utility of such undertakings; but while neither exercises or is necessarily cal- culated to exercise any demoralizing influence, I consider one as well entitled to the protection of the law as the other. AMERICAN TRADE MARK CASES. 165 Christy v. Murphy. “Man does not live by bread alone;” that is, the complete enjoyment, even of his physical existence, does not depend upon mere food or raiment, or other material substances, but upon the exercise of the various and numerous mental and moral faculties with which God has endowed us. It may be as necessary to laugh as to eat, and J am persuaded that if people would eat Jess and laugh more, their moral as well as physical well-being would be materially improved. The greatest of poets says: “ The love of pleasure is man’s eldest born; Wisdom, her younger sister, though more grave, Was meant to minister, and not to mar Imperial pleasure, queen of human hearts,” It is undoubtedly the duty of courts to regard with disfavor every establishment having any tendency to corrupt the public morals, to create idle or dissipated habits, to encourage a craving for undue excitement, or to impair the taste for domestic attach- ments and domestic society. Nothing has been shown, in this motion, to induce me to be- lieve that the establishment of the plaintiff had any tendency to produce effects of this description. His entertainments may not be of that kind in which men of the highest refinement and deli- cacy of culture would take any particular delight, but they serve a very salutary purpose if they afford diversion and music to the million at a small expense, and without the dissipation and silly display of places of much greater pretensions. The plaintiff organized and established, in 1842, a band of per- formers of negro minstrelsy, which he shortly afterward named, after himself, “‘Christy’s Minstrels.” He was the first who es- tablished this species of entertainments. When he commenced it he incurred some expenditure of time, labor, and money, and continued it with success in this city until the fall of 1854, when he suspended it here and went to California. After an absence of some months he returned. He has not yet resumed his per- formances, but declares that it is his intention soon todoso. In the meantime, the defendants (most of whom belonged to his band, but were merely employed by him as performers at a cer- 166 AMERICAN TRADE MARK CASES. Walton v. Crowley. tain stipend) have assumed the style and name of “ Christy’s Minstrels,” and he asks the court to enjoin them against con- tinuing the use of this name. For the reasons I have mentioned I think he is entitled to its exclusive use; and, unless he has given to the defendants a li- cense to use it, his application must be granted. The defendants have furnished no satisfactory evidence of such a license; and if they had, unless they could also show it was irrevocable, they would have no right to continue the use of this name one moment after he signified his intention to discontinue or withdraw the privilege. THE MOTION to continue the injunction granted, with ten dol- lars costs. WaL_tTon v. CROWLEY. Circuit Court United States, Southern District of New York. Before Betts, J., March, 1856. Reported, 3 Bl. C. C. 440. The owner of goods, which he exposes to sale in market in his own right, is entitled to the exclusive use of any trade mark devised and applied by him to the goods, to distinguish them as being of a particular manufacture or quality, although he is not himself the manufacturer, and although the name of the real manufacturer is used as part of the trade mark; and the assignee of the whole right in such trade mark, and of the property in the goods to which it is attached, is entitled to the enjoyment of the exclusive right thereto, and may maintain an action, in his own name, for any wrongful use by others of such trade mark, to the like extent as the originator thereof. The mere affidavit of a defendant, without a formal answer, will not be sufficient to bar the equity of a complaint arising out of the facts of the bill. Th o privilege of a party to the exclusive enjoyment of a trade mark, does not rest upon a right of property therein, but on its prior use and application in the manner in which it has been imitated and employed by the defendant. A tradesman, to bring his privilege of using a particular trade mark under the protec- tion of equity, is not bound to prove that it has been copied in every particular by AMERICAN TRADE MARK CASES. 167 Walton vw. Crowley. another. It is enough for him to show that the representations employed bear such resemblance to his as to be calculated to mislead the public generally who are the purchasers of the article, and to make it pass with them for the one sold by him, THis was an application for a provisional injunction, founded upon a bill and an affidavit of the plaintiff. It was opposed on an affidavit of the defendant without any answer. : The bill set forth that one James Smith, in England, had, under the name of James Smith & Son, been for twenty years a manufacturer of needles for sewing; that, more than twenty years ago, Smith agreed with the plaintiff’s father, James Walton, who resided in Philadelphia, that he should be the sole purchaser of all the needles made by Smith which should come to the United States; that this agreement was carried out by Smith, and all the needles made by Smith which came to the United States were sent to the plaintiff’s father, packed under his direc- tion, and were sold by him in papers having on them printed labels, devices, and trade marks, which were devised and first used by him, the words ‘‘ Jas. Walton” being also on each paper, in small writing letters; that the labels covering the first quality of needles were printed on a red ground; that such red ground formed a part of the trade mark; that, on account of the merit of the needles, and the care and expense in devising and applying the labels, devices, and trade marks, the needles had acquired a standard value in the United States; that the annual sales of the plaintiff’s father, under his exclusive contract, aver- aged from twenty to twenty-five millions of needles each year ; that, on the rst of July, 1851, the plaintiff became, by assign- ment from his father, proprietor of the whole of his business, good will, and trade, in vending the needles made by Smith, and of all the right to use such devices, labels, and trade marks, and was, by the assent of Smith, substituted in place of his father, in the exclusive right of purchasing such needles for sale in the United States; that the plaintiff has since continued annually to sell, in the United States, from twenty to twenty-fve millions of such needles, in papers covered by such labels, devices, and trade marks, in pursuance of such assignment; that he had re- 168 AMERICAN TRADE MARK CASES. Walton v. Crowley. cently discovered that the defendant had counterfeited such la- bels, and had been selling in the United States needles with such counterfeited labels, of inferior quality, and at a less price than the price at which the plaintiffs could afford to sell such needles with genuine labels; that such counterfeited labels were such close imitations as readily to deceive the public, and especially hundreds of uneducated women and workmen who buy needles by retail; that none of the needles sold by the defendant under the counterfeit labels were ever made by Smith, or in England; that the defendant got up the labels knowing that the plaintiff was the exclusive importer of Smith’s needles, and that no one else was entitled to import them into the United States with such labels, and that the defendant when selling such needles described them in bills rendered as ‘‘Smith’s needles.” A schedule to the bill contained three of the plaintiff’s labels, with needles inclosed, as made up for selling. No.1 had a label on the front and another label on the back. The label on the front was printed in white letters, on a red ground, occupying nine lines, and was as follows: “Jas. SmMirH & Son. [A crown.] Gznuine Drittep Ey’p SHarps. (7) WARRANTED. cKmes Watton.” The label on the back was printed in black letters on a red ground, occupying thirteen lines, and was as follows: “Manufactured and warranted by Fas. Smith & Son, Astwood, near Redditch. Beware of the imitation labels. The genuine are signed Samed Dalton. ae No. 2 of the plaintiff’s labels was, both as to its front and its back, like No. 1, except that instead of “(7)” it had “(g),” and the red ground of the front of No. 2 was lighter than the ‘ed ground of the front of No. 1, and the red ground of the back of No. 2 was a different shade of red from either the front or the back of No. 1, or the front of No. 2. No. 3 of the plaintiff’s labels was a front label like the front of No. 1, except that instead of “(7)” it had “ (5),”’ and was a larger sized label than the front of No. 1, and the red ground was a different shade of red from the front of No. 1. AMERICAN TRADE MARK CASES. 169 Walton vw, Crowley. A schedule to the bill contained specimens of the labels used by the defendant. They were three in number. No. 1 had its front printed in white letters on a red ground, and its back printed in black letters on a red ground. ‘The front of No. 1 occupied nine lines, and was as follows: “ Jas, SMiTH & Son. [4 crown.] Genuine Drittep Ey’p SHARPS. (7) WARRANTED. % Geowdy, The color of the red ground of the front of No. 1 of the de- fendant’s labels was the same shade of red as the red ground of the front of No. 1 of the plaintiff’s labels. The back of No. 1 of the defendant’s label occupied thirteen lines, and was as follows: “Manufactured for Fas. Smith &F Son, and warranted by (R. Crowley). Beware of the imitation labels. The genuine are signed K. Crowley,” The color of the red ground of the back of No. 1 of the de- fendant’s labels was the same shade of red as the red ground of the back of No. 1 of the plaintiff’s labels. , The front of No. 2. of the defendant’s labels was like the front of No. 1 of the defendant’s labels, except that, instead of “(7)” it had (8). The back of it was like the back of No. 1 of defendant’s labels. The front of No. 3 of the defendant’s labels was like the front of No. 1 of the defendant’s labels, except that, instead of “(7)” it had “(5 to 10).” In the labels of the plaintiff and of the defendant the figures were in a circle and were printed in white. The labels of the defendant and of the plaintiff were all of them pasted on a piece of black paper, in which the needles were contained. The affidavit of the plaintiff set forth that on the rath of Jan- uary, 1856, the defendant called on the plaintiff in Philadelphia, after this suit was commenced, and said he had called to see if he could make an arrangement to stay proceedings in the suit; that he had made the labels, not for himself, but for J. H. Smith & Son, of Baltimore; that he received from them an order to make the labels, and made them according to their instructions ; that they were insolvent, and that in consequence the needles 179 AMERICAN TRADE MARK CASES. Walton w. Crowley. and labels still remained in the defendant’s hands; that he pro- posed that the plaintif should appoint some one to go to New York, and take possession of the counterfeits on hand, and take off the labels and return the needles to the defendant; that the defendant proposed to pay all the expenses that might be incurred by such proceeding, and to pay all counsel fees and court charges in the suit, provided the plaintiff would stay proceedings in it, and said that, if the plaintiff would not agree to that proposi- tion, he, the defendant, had plenty of money to spend in law, and had much experience in law matters; that the plaintiff told the defendant that his excuses and proposition were lame, that he had not asked the plaintiff’s permission to use the labels, and that the plaintiff would seek the protection of the law against all infringements of his rights; that he had made search concern- ing said J. H. Smith & Son, and had reason to believe that no such firm now existed, or had for many years existed, in or near Baltimore; and that the defendant’s statement relating to the existence of that firm, and the order for the labels, was wholly fictitious. The affidavit of the defendant set forth that, for more than twenty years he had been a manufacturer and dealer in sewing needles in the United States, and had acquired an extended reputa- - tion, and his name, as manufacturer and warrantor, on the labels covering such needles, was much relied upon; that, on the roth of August, 1854, he received an order from James Smith and James H. Smith, doing business in Baltimore under the style of James Smith & Son, for 732,000 needles, in papers of twenty-five needles in each, to be labeled with the name of James Smith & Son, and the name of the defendant to be put thereon as manufacturer and warrantor, the labels to be on a red ground, with the device of a crown thereon, making a label similar to labels of that description in general use by the trade, and which were then and there spoken of or referred to, and of which those annexed to the bill and those annexed to the defendant’s affidavit were specimens and examples; that the labels and devices in the schedule annexed to the defend- ant’s affidavit, or most of them, had been in use by the trade in the United States for a long period and quite as long as the use AMERICAN TRADE MARK CASES. I71 Walton v. Crowley. ee thereof by the plaintiff; that the red ground anda crown thereon had been commonly used by the trade for upward of thirty years and prior to the use thereof by James Smith, or James Smith & Son, of England, or the plaintiff; that it was a common label; that the defendant had never heard of any persons claim- ing an exclusive right to its use except the plaintiff, nor of his claim until the commencement of this suit; that the words on the labels, “genuine drilled ey’d sharps,’’ were words of uni- versal use in the trade, and were so used to distinguish the qual- ity and character of the needles inclosed, as was also the figure on the labels, which merely indicated the size of the needles; that the plaintiff was not the only manufacturer of ‘‘ genuine” needles, or of “drilled ey’d”’ needles, or of “‘sharps,’’ but that the same were made and so styled by every needle manufacturer, those words being well understood as merely descriptive of the style and character of the needle; that, in pursuance of the order of James Smth & Son, the defendant got up for them, by way of sample, a few thousand of the labels referred to in the bill, but that, they having failed about that time, their order was never fulfilled, and no more of the labels were ever gotten up; that only a portion of those that were gotten up were delivered to said James Smith & Son, and that the balance being left on the defendant’s hands, he was authorized by said James Smith & Son to sell them for his own benefit, and had disposed of some portion of them; that it was untrue that the plaintiff’s label, an- nexed to the bill, was devised and first used by the plaintiff’s father, or by James Smith or James Smith & Son, of England, but that, at the time the plaintiff’s’ father commenced to useit, it was a com- mon label; that it was untrue that the label gotten up by the de- fendant was gotten up in fraud of the plaintiff, or with a view of obtaining rules which would otherwise be made by the plaintiff, or with a view of deceiving the purchasers of needles; that it was untrue that the defendant’s labels were intended to be an imita- tion of the plaintiff’s, but that the difference was easily percepti- ble in the sale thereof; that it was never pretended by the defendant that his needles were the plaintitt’s needles; that the plaintiff’s needles and the defendant’s needles had always had 172 AMERICAN TRADE MARK CASES. Walton v. Crowley. on them the back label; that such back label was originally used about fifty years ago by R. Hemming & Sons, whose back label was exhibited in a schedule annexed to plaintiff’s affidavit; that the plaintiff’s back label was an imitation thereof; and that the use of a crown upon labels covering needles was first adopted by the defendant’s father, and used by him forty or fifty years ago. A schedule annexed to defendant’s affidavit contained various specimens of front labels of various manufacturers of needles, all of which were printed in white letters on a red ground, and were 48 in number. Of these 48, 47 had upon them a crown, 41 had upon them the words, ‘‘drill’d ey’d sharps,” and 32 had upon them the words “genuine drill’d ey’d ‘sharps, warranted.” Of these 32, 22 had figures in circles, printed in white, 4 having so printed ‘“*5 to 10,” 7 having so printed ‘*5-1o,” and 11 having so printed single figures. “The words in said 48 speci- mens of labels were arranged in lines under each other, in the same manner as in the plaintiff’s and the defendant’s labels. The back label before referred to of R. Hemming & Sons, was printed in black letters on a green ground, and was half the length of the plaintiff’s back label. It occupied five lines and read thus: ‘* Manufactured and warranted by R. Hemming & Sons, Forge Needle Mills, Redditch.” f Charles Edwards, for the plaintiff. Daniel D. Lord, for the defendant. Betts, J. On ordinary observation, the labels used by the two parties in this case would not be apt to be distinguished the one from the other—the size, shape, vignette, coloring, and marking being so nearly identical as to make them easily pass for the same, and the only difference discernible, on considerable scrutiny, being in the name of the warrantor, stamped upon them in letters so small as not readily to attract notice, Tt is this apparent similitude or counterfeiting which is the grievance complained of. A tradesman, to bring his privi- lege of using a particular mark under the protection of equity, AMERICAN TRADE MARK CASES. 173 Walton v. Crowley. is not bound to prove that it has been copied in every particular by another. It is enough for him to show that the representa- tions employed bear such a resemblance to his as to be calculated to mislead the public generally who are purchasers of the article, and 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 allowed an injunction staying the aggression until the merits of the case can be ascertained and determined. 2 Story Eq. Juris., sec. 951; 2 Kent, 453, and notes, 7th ed. I can not regard the denial by the defendant’s affidavit alone, of the equity of the bill, as sufficient to defeat the motion for an injunction, resting, as it does, upon the positive oath of the plaintiff, and his long and unquestioned use of his design and mark, The affidavit has not the weight and effect of an answer. The allegations are, moreover, corroborated by facts set up in an additional affidavit, and not denied by the defendant, that he offered to destroy the labels prepared by him, and pay the ex- _ penses incurred by the plaintiff in this action, if the suit could be stayed, and by the further statement, not denied or explained by the defendant, that no such persons or firm as those named in the defendant’s affidavit, as having ordered the labels prepared by him, could be discovered or heard of in Baltimore, on inquiry there for them. These are matters of signal importance, and demanded a clear explanation by the defendant in his affidavit, addressed to the equitable consideration of the court. The cause is, in its general features, plainly within the scope of those cases over which courts of equity exercise the juris- diction now applied for. The principles of the rules upon which injunctions are granted to suppress this description of wrong, and the extent to which the relief is carried, are largely dis~ cussed and distinctly settled in the summary of the adjudications, in late publications. 2 Kent, 7th ed., 473, and notes; 2 Eden on Inj., by Waterman, 271, notes; 2 Story’s Eq. Juris., sec. 951. It is objected that the billl is.defective in substance, because James Smith & Son are not made parties, and that an injunction will be denied upon a bill which would be pronounced virtually insufficient on demurrer. 174 AMERICAN TRADE MARK CASES. Walton v. Crowley. Bills of this description are not maintainable upon the ground that the plaintiff has a right of property in the trade mark. The relief is given because the mark is a sign or representation, im- porting, and so understood and acted upon by the public, that the article to which it is attached is the manufacture or produc- tion which is generally known in market under that denomi- nation, Coffeen v, Brunton, 4 McL. 516. The owner of the goods which bear the :ndicia is considered to be prejudiced in his interests, if others can be permitted to come into the market with the same representation, and thus delude purchasers by vending inferior articles, or diminish the owner’s business by ac- quiring sales to themselves under color of his reputation. The party, then, whose interests are directly affected by the wrong, is entitled to proceed in his own name to procure its suppression ; and the person for whom goods are manufactured has the same legal right to affix and maintain a special trade mark as the man- ufacturer himself. Amosk. Man. Co. v. Spear, 2 Sand. 8. C. 5993 Taylor v. Carpenter, 2 Sand. Ch. R. 614. The plaintiff was not the inventor of this label or trade mark, | nor the one who originally adopted it, but he is the assignee of it, and of the good-will of the trade. He stands, thus, in the same relation to the defendant as his assignor would, and what- ever privilege the law accorded to James Walton, in the pos- session and use of the trade mark, passed to and can be enjoyed by the plaintiff under the assignment. I think that the plaintiff is entitled, upon his bill and the proofs before me, to an injunction in the cause until the further order of the court. Oroper accordingly. AMERICAN TRADE MARK CASES. 175 Stewart v. Smithson. STEWART v. SMITHSON. Court of Common Pleas of the City of New York. Before IncRaHaM, C.J., avd Dary and Brapy, JJ. General Term, May, 1856. Re- ported, 1 Hilt. 119. In an action to restrain the defendant’s use of the plaintiff's trade mark upon an article intrinsically valuable, it is no defense that the trade mark in question is a false and fraudulent one, used by the plaintiff with intent to deceive, and that the article which is accompanied by it is not what the trade mark indicates it to be. In such an action, the trade marks containing these words, respectively, one of them, “H. & M.’s patent thread, Barnsley,” and the other, “G. & W.’s celebrated patent thread, Berwick :” Held, that it was no defense that the threads were not patented, and were not made by the persons whose names they bore, nor by their assignees or successors, nor at the places designated on tne trade marks, but that the trade marks were false and fraudulent, and a motion to amend the answer by inserting allegations to that effect was properly denied. APPEAL from an order at special term denying a motion for leave to amend an answer. This action was brought to enjoin the defendants from using the plaintiffs’ trade mark, and for an accounting. The complaint alleged that the plaintiffs were the manufac- turers of a linen thread called ‘* Hall & Moody’s patent thread,” and marked “ Barnsley,” which was well known in the market by that name, and to which a trade mark of that name was attached, which belonged to them, and which they had used for a number of years. Also, that they were the manufacturers of another kind of thread called ‘Grant & Wilson’s celebrated patent thread,” and marked ‘ Berwick,” to which that name was appended as a trade mark, and by which it was well known in the market. It also averred that the defendants were using the plaintiffs trade mark, to their damage, selling an inferior thread and at a lower price, but marked in the same way. The answer consisted mainly of a denial of the allegations in the 176 AMERICAN TRADE MARK CASES. Stewart v. Smithson. 4 plaintiffs’ complaint, accompanied with averments that the thread which the defendants sold was manufactured by F. W. Hayes & Co., in Ireland, and was sent to them and sold by them as agents of Hayes & Co. After issue joined, the defendants moved to amend their answer by adding the following allega- tions : : “And the defendants, on information and belief, state that the mark claimed by the plaintiffs, and set out in the third sec- tion of the complaint, viz: ‘Hall & Moody’s patent thread, Barnsley,’ was and is a false and fraudulent mark, used by the plaintiffs with intent to deceive and defraud, and that the thread containing said mark, sold or kept for sale by the plaintiffs, was not and is not patent, and that no patent for said thread has ever existed ; nor was said thread manufactured by Hall & Moody, nor by any person or persons their assignees or successors, nor was said thread manufactured at or brought from Barnsley—all which the plaintiffs well knew.” And also the following allegations as to the trade mark called “Grant & Wilson’s celebrated patent thread, Berwick,” viz: “‘And the defendants, on information and belief, say that the mark claimed by the plaintiffs, and set out in the ninth section of the complaint, viz: ‘Grant & Wilson’s celebrated patent thread, Berwick,’ was and is a false and fraudulent mark, used by the plaintiffs with intent to deceive and defraud, and that the thread containing said mark, sold or kept for sale by the plain- tiffs, was not and is not patent thread, and that no patent for said thread has ever existed; nor was said thread manufactured by Grant & Wilson, nor by any other person or persons their assignees or successors, nor was said thread manufactured at or brought from Berwick—all which the plaintiffs well knew.” A number of affidavits were introduced, on the part of the plaintiffs, on the motion, for the purpose of contradicting these allegations, but their consideration is not necessary here, inas- much as the motion was denied upon the ground that the pro- posed amendments constituted no defense. From the ordet denying the motion the defendants appealed. AMERICAN TRADE MARK CASES. 177 Stewart v. Smithson. Robert Gillen, for appellants. Martin and Smiths, for respondents. Brapy, J. The defendants, in the amendments which they asked leave to make to their answer at special term, have not alleged sufficient facts to constitute a defense. The mere fact that names used on a trade mark are fictitious would not author- ize the use of it by strangers. The question to be determined in these cases is, whether the mark used by the party claiming the protection of the court is owned by him, without regard to its form, which such party has a right to design according to his judgment or his fancy. If the defendants had alleged that the firm names used on the marks never existed, that would, for the reason stated, furnish no justification for their use of it, and it would not have presented a defense in this action. They have not done so, however, nor have they alleged that firms whose names do appear on the mark did exist, and that the use of their names by the plaintiffs was wholly unauthorized. If they had alleged this, then, in the application of the maxim, potior est conditio defendentis, the courts might relieve them from any disturbance by the plaintiffs. The amendments offered do not contain anything meritorious, as suggested by Judge Wood- ruff, and do not contain a strictly legal answer to the plaintiffs’ claim. This is a sufficient reason why the favor of the court should not be extended to them, and the order of the special term must be afirmed. 178 AMERICAN TRADE MARK CASES. Samuel v. Berger. SAMUEL v. BERGER. Supreme Court of New York. Before Davies, J., Special Term, Decem- ber, 1856. Reported, 24 Barb. 1633; 13 How. Pr. R. 342, and 4 Abb. Pr. R. 88. Where plaintiff had purchased the exclusive right to the use of a trade mark, it was held that he could not enjoin the sale of goods to which the trade mark had been attached by its original owner prior to the purchase thereof. Motion for an injunction, This action was brought by Morris L. Samuel and Edwin M. Dunn, against Albert Berger and others. The complaint sought an injunction to restrain defendants from the use of a trade mark which plaintiffs claimed as assignees; and the plaintiff now moved for an injunction ‘pending the suit. Other facts, which appeared upon the motion, .are stated in the opinion. David Dudley Field, for the motion. EE. W. Stoughton, opposed. Davies, J. The rule governing the interference of courts in ‘this and like cases, is well laid down by Duer, J., in The Amos- -keag Manufacturing Company v. Spear, 2 Sand. 8. C. 599. He “says: “ At present it is sufficient to say that in all cases where a trade mark is imitated, the essence of the wrong consists in the sale of the goods of one manufacturer or vender as those of anothers and:it is only when this false representation is directly -or indirectly made, and only 20 the extent in which it is made, that the party who appeals to the justice of the court can have a title to relief.” Applying these principles to the facts in this case, we shall see that the plaintiffs invoke a rule of law which the defendants AMERICAN TRADE MARK CASES. 179 Samuel v. Berger. might claim to be applied to them, but which wil] not avail the plaintiffs. The plaintiffs say that Brindle, as a watchmaker, had acquired a reputation as such, and that all watches manufactured by him were stamped with his name; that Sylvester J. Samuel purchased from Brindle the right to stamp Brindle’s name on watches man- ufactured by Samuel; and that Samuel assigned to the plaintiffs the right to stamp Brindle’s name on watches manufactured by them. The defendants have on hand for sale the watches manufac- tured by Brindle, and stamped with his name; and this court is called upon to restrain them by injunction from selling the gen- uine, and thus to protect the plaintiffs in selling the simulated article, The plaintiffs ask the court to aid them in passing off upon the public watches manufactured by them, and held out to the public as made by Brindle, when in truth the watches made by Brindle, and stamped by him with his mark, are those which the defendants seek to sell. If the defendants were seeking to make sale of watches man- ufactured by them as those manufactured by Brindle, and the right of the plaintiff to use his name as a trade mark was clear, then the injunction should go; but they can not call on this court to aid them in passing off the watches made by them as those manufactured by Brindle. Another rule enunciated by Judge Duer, in the case above cited, is to be applied in this case. He says, 2 Duer, 618: ‘* The rule is fully settled, and is recognized in nearly all the cases, that in suits of this nature an injunction is never to be granted in the first instance if the exclusive title of plaintiff is denied, unless the grounds upon which it is denied are manifestly frivo- lous. When the title is disputed, the course is to let the motion for an injunction stand over until the plaintiff has established his legal right in an action at law.” Partridge v. Menck, 2 Sand. Ch. R. 622. The case of Aotley v. Downman, 3 My). & Cr. 1, is in point. There the court argued that the fraud, if any, was on the part 180 AMERICAN TRADE MARK CASES, Fetridge v. Wells. of plaintiffs, who persisted in using a name which designated tin plates manufactured at particular works after they had ceased to occupy the same, and had removed to a distance of over forty miles and established other works. Lord Chancellor Cottenham thought the right so doubtful that he refused the injunction. I am satisfied, from an examination of the cases on the sub- ject of trade marks, that in no case like the present has an injunction been issued, and to issue one in this case would be violating all the rules laid down in the books as applicable thereto. When the power of the court has been invoked, it has been to restrain the defendant from making his goods and selling them as and for the goods manufactured by the plaintiff, on the ground that such a fraud was an injury to the plaintiff, and tended to mislead and deceive the public. No such case is presented, and the motion for injunction must be denied with costs. FEetripGe v. WELLS. Superior Court of the City of New York. Before Durr, J., Special Term, Fanuary, 1857. Reported, 4 Abb. Pr. R. 144, and 13 How. Pr. R. 385. A variation between two labels which it requires a close inspection to detect must be regarded as immaterial. A name in some cases may be a valid trade mark, but this is only true when it denotes’ either origin or ownership, never when it is used to designate the article itself, and has by common use become its proper appellation. Equity will not interfere to protect a party in the use of a trade mark where the name or place claimed as such is intended and calculated to deceive the public, AMERICAN TRADE MARK CASES. 181 Fetridge v. Wells. Where an injunction restraining the use of a trade mark is dissolved on the ground that the mark is fa'se and fraudulent, and that the plaintiff is therefore not en- titled to the protce ion of a court of equity against the infringement shown, and the defendant is equally guilty, the order dissolving the injunction should be with costs. Hence, the plaintiff having used the words “‘ Balm of Thousand Flowers,” the court refused to enjoin the use by defendant of “‘ Balm of Ten Tnousand Flowers.” Motion to dissolve an injunction. This was an action for an injunction to restrain the defend- ants from using a trade mark claimed by plaintiff. The plaintiff had purchased a receipt for making a certain cos- metic which he had for a long time sold under the name of “THE BALM OF THOUSAND FLOWERS.” The defendants had engaged in the manufacture and sale of a similar article, which they styled, “CTHE BALM OF TEN THOUSAND FLOWERS.” The plaintiff claimed title to the name used by him as a trade mark, and brought this suit to procure the defendants to be en- joined from employing any imitation of it. A preliminary in- junction was granted by Mr. Justice Hoffman, which defend- ants now moved to dissolve. Other facts respecting the use by plaintiff of the trade mark claimed, the alleged infringement by defendants, the nature and. composition of the cosmetic sold by plaintiff, etc., are fully set forth in the opinion in this case, and also in that of Mr. Justice Hoffman, in the case of Fetridge v. Merchant. The two cases arose upon the same state of facts, and should be read in con- nection. Blatchford, Seward &F Griswold, for the motion. Brown, Hall & Vanderpool, and E. W. Stoughton, opposed. Duer, J. This is a motion on the part of defendants to dis- solve an injunction which was granted by Mr. Justice Hoffman, and by which the defendants are restrained from selling, or 182 AMERICAN TRADE MARK CASES. Fetridge v. Wells. offering for sale, directly or indirectly, any preparation or com- pound manufactured by them, or either of them, or by any person or persons other than the plaintiff or the firm of W. P. Fetridge & Co., under the name, etc., of ‘‘ Balm of Thousand Flowers,” or selling, or offering for sale, any preparation or com- pound having printed, painted, written or stamped on the bottles containing the same, the words ‘¢ Balm of Thousand Flowers,” or having or using any label or wrapper, printing or device, in such manner as to be a colorable imitation of those used by the plaintiff, or by the firm of William P. Fetridge & Co., to desig- nate or distinguish the plaintiff’s preparation or compound usually known as “‘ Balm of Thousand Flowers.” It is apparently a case of great interest to the parties, and has been very fully and ably argued by their respective counsel; and in compliance with their wishes, I have attentively considered all the questions which it involves, although in relation to many of them it will not be necessary nor expedient that I should now express or intimate an opinion. Without rejecting the evidence of my senses, I can not doubt that the label or trade mark which the defendants admit that they propose to use, from its general resemblance to that of the plaintiff and his firm, is well calculated to mislead the public, by inducing the belief that the articles to which it is affixed are in reality prepared or manufactured by the plaintiff’s firm. Nor can I doubt that the label was framed with this design, since the imitation is so close, minute, and exact as, in my opinion, to ex- clude the supposition of any other motive. It is true that the name of R. H. Rice, as proprietor, is printed on the label, but it is so printed as not to attract, but almost certainly to elude observation. A variation must be re- garded as immaterial which it requires a close inspection to detect, and which can scarcely be said to diminish the effect of the fac simile which the simulated label in all other respects is found to exhibit. Hence, were this the only question in the case, I should have no difficulty in holding that the injunction, which is sought to be dissolved, must, to some extent, be retained and enforced; but it is proper to add that, upon no supposition, AMERICAN TRADE MARK CASES. 183 Fetridge v. Wells. would I consent to retain it for all the purposes for which it has been granted, and for which its continuance has been asked. The position so strenuously insisted on, that the plaintiff’s firm have an exclusive property in the words ‘‘ Balm of Thou- sand Flowers,”’ or, which is the same thing, an exclusive right to use those words in a trade mark, I wholly reject. It is not necessary to deny that a name may, in some cases, be rightfully used and protected as a trade mark, but this is only true where the name is used merely as indicating the true origin or ownership of the article offered for sale, never where it is used to designate the article itself, and has become, by adoption and use, its proper appellation. When a new preparation or compound is offered for sale, a distinctive and specific name inust necessarily be given to it. The name thus given to it, no matter when or by whom im- posed, becomes by use its proper appellation, and passes as such into one common language. Hence, all who have an equal right to manufacture and sell the article, have an equal right to desig- nate and sell it by its appropriate name, the name by which alone it is distinguished and known, provided each person is careful to sell the article as prepared and manufactured by himself, and not by another. When this caution is used, there is no deception of which a rival manufacturer, not even the manufacturer by whom the distinctive name was first invented or adopted, can justly complain; and so far from there being any imposition upon the public, it is the use of the distinctive name that gives to purchasers the very information which they are entitled to have. In short, an exclusive right to use on a label or other trade mark the appropriate name of a manufactured article, ex- ists only in those who have an exclusive property in the article itself; and it is not pretended that the plaintiff or his firm have any exclusive property in the preparation or compound to which the well-sounding name of ‘¢ Balm of Thousand Flowers” has been given. It is only the seductive name that they clajm as their exclusive property, and doubtless from their experience of its value in the extension of their sales. This, however, is a species 184 AMERICAN TRADE MARK CASES. Fetridge v. Wells. of property that, in my opinion, is unknown to the saw, and that can only be given to one by the infringement of the rights of all. My views on the general question of an exclusive right to sell an article by its distinctive name were fully expressed in the case of The Amoskeag Manufacturing Company v. Spear, 2. Sand. 8. C. 599, and, as I think is there shown, are sustained by express decisions of the King’s Bench in Singleton v. Bolton, 3 Doug. 2933 of Vice-Chancellor Plumer, in Canham v. Jones, 2 Ves. & B. 218; and of the lord chancellor, Lord Cottenham, in Millington v. Fox, 3 Myl. & Cr. 338. It is true there are some observations of the master of the rolls in Perry v. Truefitt,6 Beav. 66, that seem to favor an opposite doctrine; but when that case is examined, it will be found that the plaintiff claims an exclusive property, not merely in the name, but in the composition to which it was applied; and it is admitted, and is sufficiently obvious, that an exclusive property in the subject carries with it, in all cases, an exclusive right to the use, as a trade mark, of its appropriate name. The remarks that I have now made would suffice for the decision of this motion, were the only question that of the simi- larity of the trade marks, but there is another, and a grave and important question, to which the counsel for the defendants have earnestly directed my attention: that question is, whether even upon the supposition that all the material allegations in the com- plaint are true, the conduct and proceedings of the plaintiff and his firm have not been such as justly to preclude them from any claim to relief in a court of equity. This question, it is true, is not raised in the answer of the defendants, but it is raised by the facts which the affidavits and other papers before me have disclosed, and, in my opinion, itis emphatically the question that, as a judge in equity, I am bound to consider and determine. It may be true that the defendants, if permitted to use in their contemplated sales a trade mark apparently the same as that of Fetridge & Co., would commit a fraud upon the plaintiff and upon the public; but if the plaintiff and his firm are them- selves engaged in the execution of a systematic plan for deceiv- ing the public; if they have been and are endeavoring, con- AMERICAN TRADE MARK CASES. 18 wa Fetridge v, Wells. stantly and daily, to multiply their sales and swell their profits by false representations of the composition, qualities, and uses of the liquid compound which they invite the public to buy, it is strenuously, insisted that a court of equity would violate its principles and abuse its powers by consenting to aid them by an injunction or otherwise, in accomplishing their design, and to this proposition I yield my fullest assent. 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 fraud of others, they must be free themselves from the imputation. If the sales made by the plaintiff and his firm are effected, or sought to be, by misrepresentation and falsehood, they.can not 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 character. It is, therefore, a necessary inquiry whether the privilege, which the plaintiff now claims may be protected by the court, is of this character, and in pursuing the inquiry I shall confine myself to facts that are certainly material, and are undeniably proven. 1. As to the name of the precious compound for which this cont2st is waged—*t Balm of Thousand Flowers”— it is eupho- nious and attractive: but was it honestly given, and is it hon- estly used? Is it calculated to deceive. the public, and is it with this view that it was first imposed and is now employed ? Or is it an unmeaning and harmless coinage, by which none are misled, or were meant to be misled? Is it a representation, in- tentionally false, of the composition and qualities of the prepara- tion offered for sale, or am I to believe, as the able counsel for the plaintiff endeavored to persuade me, that it is what he termed a fancy name, having no reference whatever to the na- ture and qualities of the subject to which it applies, and there- fore a name by which none are, were meant to be, or can be deceived ? 186 AMERICAN TRADE MARK CASES. Fetridge v. Wells. Now, as to the answers which truth, and the evidence before me, require to be given to these questions I have no doubt. That the name “ Balm of Thousand Flowers” is, in one sense, a fancy name, may be at once admitted; that it is so in the sense of the plaintifF’s counsel, I do not and can not believe. On the contrary, I am fully convinced that the name “ Balm of Thou- sand Flowers” was invented, and is now used, to convey to the minds of purchasers the assurance that the highly-scented liquid to which the name is given, is, in truth, an extract or distillation from flowers, and therefore not merely an innocent, but a pleas- ant and salutary preparation. Not only is this the meaning that the words used naturally suggest, but in my opinion it is that which they actually and plainly express, and were designed to convey. The word ‘* Balm” is certainly not a fancy phrase. It hasa clear and definite meaning. In its literal and proper sense, as distinguished from it, metaphorical, it means an aromatic vege- table juice, whether extracted from trees, shrubs, or flowers. Webster’s Dict.; Johnson’s Dict. Substitute, then, the defi- nition for the word, and we have on every label on the bottles which the plaintiff sells a positive assertion that the liquid in- closed is the aromatic juice of unnumbered flowers. It is said that we can not suppose that the words ‘thousand flowers” were meant to be literally understood, but it by no means follows that the entire name, of which they are a part, is therefore fanciful and unmeaning. The word “thousand,” I do not doubt, is used and is understood in a sense in which its use is familiar and fre- quent—that is, as designating a large and indefinite number. Not only is the meaning I have stated that which the name “Balm of Thousand Flowers” naturally suggests, and, as I think I have proved, actually expresses, but we have the clearest evidence that it was for the purpose of conveying this meaning to the mind of the public that the name was first chosen by the inventor of the compound, and that it is for the same purpose that it has been retained and is now employed by the plaintiff and his firm. The inventor is a French chemist, Dr. Le Fontaine, of New AMERICAN TRADE MARK CASES. 187 Fetridge v. Wells. Haven; and his affidavit is among those that the defendants have produced. He says, in terms, that ‘“‘he especially chose the name Balm of Thousand Flowers, because at the time he used, in the manufacture of the compound, honey, which being a natural balm, extracted from a thousand flowers, he considered the name very appropriate.”’ A plain confession that he chose the name as signifying and asserting the fact that the balm was an extract from flowers, and that he used honey to justify his choice and the assertion, The use of honey was very soon discon- tinued; so that the pretext which it provided for the use of the name has for many years past ceased to exist. But although Fetridge & Co., whom the plaintiff represents, have found it convenient to drop the use of honey, they have carefully retained, and are striving anxiously to retain, the signifi- cant name, the adoption of which the ingredient of honey served to excuse; and they have, moreover, taken effectual means to remove any possible doubt as to the meaning in which they wish that the name shall be understood by all by whom their com- pound is purchased. Around every bottle which they sell, and within the outside label, a printed paper entitled ‘¢ Directions ” (to the contents of which I shall hereafter more fully advert), is carefully wrapped, and passes into the hands of every purchaser. In this paper they add to a very elaborate statement of the manifold and almost miraculous virtues of the “Balm of Thou- sand Flowers” these words: ‘It is an innocent, safe, and effi- cacious compound of purely vegetable, medicinal, and powerful substances, and the very balm and extract of healing blossoms,” Neither my attention, nor that of the counsel, was directed to these words on the hearing, but it is plain that they put an end to the refuge of a fancy name as an escape from the charge of an intention to deceive. They are a direct assertion that the compound is, as its name imports, an extract from flowers. Is this assertion true, or is it a representation to the public, inten- tionally false, of the composition and qualities of the compound to which it refers? The necessary answer is readily given, for it so happens that here-also the evidence is conclusive. When Le Fontaine sold to the plaintiff his recipe for manu- 188 ° AMERICAN TRADE MARK CASES. Fetridge v. Wells. facturing his balm, he sold it asa secret, but in the course of these proceedings the secret has been disclosed, and the original recipe, confirmed by the oath of Le Fontaine, and not denied by the plaintiff, is now before me. It appears, then, that this pre- tended balm is produced by a mixture, in certain fixed proportions, of palm oil, ley or potashes, alcohol, and sugar; and that when this mixture has, by the operation of fire, been fully compounded and prepared, it is rendered fragrant, doubtless to favor the deceit of its name, by the addition of some strong perfume, such as lemon or bergamot, lavender or musk. The result is, that this Balm of Thousand Flowers, extracted from blossoms, redolent of health, is a soap—a liquid soap—highly scented it is true, and, it may be, as a soap, useful and valuable, but still a soap, possessing the usual and known qualities of soap and nothing more. The proof is, therefore, complete, that the name was given and is used to deceive the public; to attract and impose upon purchasers; that in the sense that the plaintiff means it shall convey, it is a representation to the public that he finds to be useful and knows to be false. Let it not be said that it is of little consequence whether this representation be true or false. No representation can be more material than that of the ingre- dients of a compound which is recommended and sold as a med- icine. ‘There is none that is so likely to induce confidence in the application and use of the compound, and none that, when false, will more probably be attended with injurious, and, per- haps, fatal consequences. Nor is it possible to excuse or palliate the proceedings of the plaintiff by saying that there is no reason to believe that the deception which he has practiced has been successful, for that it has been eminently successful I can not doubt. Of the extent to which the public has been deceived, the immense sales which, it is stated, have been made, the value which the plaintiff attaches io the name, ‘* Balm of Thousand Flowers,” and his anxiety and determination to retain, if possible, its exclusive use, seem alone a conclusive proof. He has spent, it is said, and profit- ably spent, more than one hundred thousand dollars in advertising AMERICAN TRADE MARK CASES. 189 Fetridge v. Wells. his compound for sale; but had he dropped its fictitious and deceptive name, and advertised it by its true name of a ‘ Liquid Soap,” and had made known to purchasers that its main ingre- dients were those blossoms of health, oil, ashes, and alchohol, I apprehend that this large sum would not have been expended at all, or would have been expended in vain. Strip his compound of its false and borrowed name, its imagi- nary blossoms, reduce it from a balm into a soap, and its sales will be those of a soap, not of a quack medicine held forth to the world as curing nearly all the diseases that “ flesh is heir to.” 2. I have said enough to justify the decision I am prepared to make; but there are other facts to which, in the full discharge of my duty, I deem it necessary to advert; and in cases of this description there is a duty owing to the public as well as to the parties. It is painful to say that, in the mode of acquiring his title, the plaintiff was guilty of a deliberate attempt to deceive the public; but such is the fact. The written agreement between him and Le Fontaine, whose recipe he purchased, is in evidence before me. It states that the consideration of the transfer was the sum of $7,500, to be paid in cash, and that of $2,500 in promissory notes, falling due at different periods; and on the day following the date of this agreement, the plaintiff published an advertise- ment in one or more newspapers at Boston, where he then re- sided, stating that he had purchased from the inventor the Balm of Thousand Flowers for the price of $10,000. This statement, although not wholly false, was a very great exaggeration. Of the $7,500 to be paid in cash, not one dollar was paid or ever meant to be paid. The $2,500 in notes was the whole consideration of the transfer. The facts are proved by Le Fontaine and others, and are not controverted. The intent of the transaction is evident. ‘The advertisement was published to create a false impression of the real value of the purchase. The agreement was framed to silence the doubts of those who might choose to inquire, and to be used as conclusive proof that the advertisement was true. I will not say that the 190 AMERICAN TRADE MARK CASES. Fetridge v. Wells. title thus acquired is not valid in law, but I can not believe that it deserves to be aided by an injunction from a court of equity. 3. I pass now to the paper of directions, which, as I have already said, is wrapped round every bottle that the plaintiff sells, and therefore goes into the hands of every purchaser. The representations which it contains are made by the plaintiff, and if false are certainly entitled to no more favorable a con- struction than if made orally instead of being printed. This paper is a very singular, and I would fain hope, a unique document, and its tone, intent, and character will be fully shown by the few choice extracts that I propose to make. It begins thus : “ The Balm of Thousand Flowers is a delightful compound, highly and delicately scented by its own ingredients” (doubtless not meaning ashes and alcohol, but its ‘healing blossoms’’). ‘Tt imparts beauty, comfort, and health to the skin, which, by persevering in the directions, will become and remain free from all blemishes and imperfections, and, precisely as nature intended it to be, preserving a juvenile appearance even to middle or old age.” Again: “Tt effectually cures pimples, blotches, chilblains, all kinds of eruptions, ulcers, wounds, cuts, burns, ringworms, erysipelas, and St. Anthony’s fire, and is a sovereign remedy for canker in the mouth or elsewhere.” So much for the skin. Now to the miracles that the balm works upon the hair: “ This highly perfumed balm gives life to the hair; an unsur- passed gloss is imparted to it, and it becomes beautifully curled and firm. It promotes its increase and nourishes its roots. Jt insures with certainty a new growth of beautiful hair to those wha even for years, by sickness or otherwise, have been deprived of it. It prevents the hair from changing its natural color, and becoming white or gray.” As to the teeth, the promises are not quite so large; they will merely, if fulfilled, put an end, in a measure, to the occupation of dentists, by rendering and preserving the teeth perpetually AMERICAN TRADE MARK CASES. Igt Fetridge v. Wells. white and perpetually sound. “It quickly renders them white as alabaster, removes the tartar, prevents ulceration, and prevents their decay.” It is to the young, however, that this priceless balm offers its choicest gifts and blessings—increase of strength, unfading beauty, and never-ending youth. Its use will prove to the young” (I give the exact words) “a luxury, an antidote, and a cure of diseases; they will increase in energy, be full of elasticity, health, and beauty, and be mirrors of admiration.” Enough—all that I have quoted may possibly be true, but if so, it would seem that so long as the Balm of Thousand Flowers may be procured, it will be folly to grow old, and a mistake to die. The able counsel for the plaintiff, to whom I always listen with pleasure, and not unfrequently with instruction, approached skillfully this part of his case and treated it with much ingenious pleasantry. That his client’s praises of the “Balm of Thou- sand Flowers’’ were somewhat extravagant, he was far from denying; on the contrary, he insisted that their very extrava- gance was proof that they were harmless, and were rather fitted to provoke mirth than criticism and censure; and it must be admitted that it would be difficult, even for a judge of the most approved and habitual gravity, to read this paper of directions without a smile. But we cease to smile when we remember that these falsehoods—for such they are—are printed and circu- lated with the intent that they shall be believed, and that, in fact, there are thousands upon thousands who read them and believe. We cease to smile when we remember that the plain- tiff, who boldly claims the aid of a court of equity, is filling his pockets by abusing the credulity of the young, the inexperienced, the weak, and the ignorant, and that he resorts to misrepresenta- tion and falsehood to induce those to purchase who would not otherwise buy, and those who buy to give a higher price than they would otherwise pay. If this is not deceiving and defraud- ing the public, what is? I have seldom deemed it necessary to cite authorities when there is a clear, plain, firm ground of principle to stand upon ; and I know that I stand upon this ground, in holding that this 192 AMERICAN TRADE MARK CASES. Fetridge v. Wells. injunction ought to be dissolved; still, there are a few cases to which, as containing a very distinct recognition of the principle upon which I act, it may be expedient to refer, remarking at the same time that in not one of them was the misrepresentation that was held to bar the plaintiff’s claim to relief by any means as serious and aggravated as those which it has been my duty to expose. In the case of Pidding v. How, 8 Sim. 477, the plaintiff, who was a dealer in tea, sold a mixture of different teas, which he prepared, under the name upon the label, which was his trade mark, of ‘‘ Howqua’s Mixture.” The defendant stole the name and the label, and affixed them to a mixture of his own. The plaintiff, however, in advertising his mixture for sale, had made a false representation of the mode in which it was procured, and of the teas of which it was composed, and upon this ground alone the injunction, which he had obtained, was dissolved. The vice-chancellor, in delivering his judgment, said: ‘There has been such a degree of representation that I take to be false, about the mode of procuring and making up the plaintiff's mixture, that in my opinion a court of equity ought not to interfere to protect him. As between the parties, the course pursued by the defendant has not been a proper one, but it is a clear rule laid down in courts of equity not to extend their protection to persons whose case is not founded in truth.” In the case of Perry v. Truefitt, 6 Beav. 66, the master of the rolls referred with marked approval to this doctrine of the vice- chancellor, and in the case before him denied the injunction, and dismissed the bill, mainly on the ground that the plaintiff had falsely represented that the ‘medicated balm” which he sold was the invention of a German chemist of known skill and great celebrity. I can not believe that the master of the rolls, in the subsequent case of Holloway v. Holloway, 13 Beav. 213, the authority which was chiefly relied on in the argument before me by the plaintiff’s counsel, meant to overrule the cases I have cited, since, in his opinion, he omitted to refer to them; but if Holloway v. Holloway is to be construed as it has been contended it ought to be, as an express decision that the vender of a quack AMERICAN TRADE MARK CASES. 193 Fetridge o. Wells. medicine may publish whatever falsehoods he may please to invent in relation to the composition and virtue of his nostrum, and yet claim protection for his sales in a court of equity, I can only say that it is a doctrine I can not and will not follow. I prefer to follow the doctrine of our Court of Appeals in Partridge v. Menck, How. App. Cas. 547. The plaintiff in this case was a manufacturer of matches, and he printed in his label on his boxes the words, “A. Golsh’s Friction Matches,” thus falsely representing Golsh to be the manufacturer; yet, in truth, in doing this, he was guilty of no fraud either upon Golsh, or upon the public—not upon Golsh, for he had purchased Golsh’s secret, and was licensed to use his name—not upon the public, for the matches were as good as those which Golsh himself had manufactured, being made by the very process which he had used. Purchasers, although deceived, were not defrauded; yet the manifest intention of the plaintiff to deceive the public was held to be of itself a sufficient reason for denying him the relief which he claimed, and Mr. Justice Gardiner, in delivering his opinion, expressed himself, as he was wont to do, in a few weighty words. “The privilege of deceiving the public,” he said, ‘even for their own benefit, is not a legitimate subject of commerce; and at all events, if the maxim that he who asks equity must come with pure hands, is not altogether obsolete, the complainant has no right to invoke the extraordinary jurisdiction of a court of equity in favor of such a monopoly.” Certainly the ptiintiff in the ptesent case has no better right, and hence the injunction that, if continued, would secure to him such a monopoly, must be dissolved. The motion for its disso- lution is, however, granted without costs, since, although the plaintiff might be justly required to pay costs, the defendants have certainly no title to receive them. They represent Rice, whose conduct and proceedings have been just as blamable as those of the plaintiff—there is not a shade of difference between them, 194 AMERICAN TRADE MARK CASES. Fetridge v. Merchant. Fetrripce v. MEeRcHANT Superior Court of the City of New York. Before Horrman, J., Special Term, Fanuary,1857. Reported, 4 Abb. Pr. R. 156. Where it appears in an action to restrain an infringement of plaintiff's trade mark, that defendant has deliberately, and without any previous connection with the particu- lar business, adopted the emblems and appellations employed by plaintiff, simply to break in upon the trade and profit of the latter, an injunction should be granted, notwithstanding that it may appear to the court that the trade mark claimed by plaintiff was intended and calculated to deceive the public. The public in such case should be left to its own guardianship. The distinction, in the law of trade marks, between a proper name and a “ fancy” name—considered. An injunction should not be granted at the commencement of a suit brought to enjoin the defendant from the use of plaintiff’s trade mark, unless the legal right of plaintiff and the violation of it by defendant are very clear. ‘Morron to dissolve a preliminary injunction. This action grew out of the same state of facts which gave rise ‘to the case of Fetridge v. Wells. The two cases should be read .together. The present case, like that preceding, came up on a motion by defendants to dissolve a preliminary injunction granted by Mr. Justice Hoffman. Hull & Stocker, for the motion. ‘Brown, Hall & Vanderpool, and E. W. Stoughton, opposed. Horrman, J. The subject of the right to specific trade marks, and the case in which a court will interfere by injunction for their protection, has, of late years, been much considered, and some general rules have been fixed with reasonable certainty. The extent and application of other principles, invariably invoked in these discussions, is less clearly determined. 1. I apprehend that the questions as to the nature of the AMERICAN TRADE MARK CASES. 195 Fetridge ». Merchant. deception upon the public which will prevent the court from giving its protection, falls within the latter class. It is con- stantly insisted, and the position is sanctioned by some judges, that when the article in question is innocuous, or in some degree useful, no absurd panegyric or extravagant price is a reason for denying the interference. In short, as counsel once said before me, if a man should compound tallow with some high scent and beautiful coloring matter, and term it ‘* The Ointment of Im- mortality,” he has a right to appropriate so much of public cre- dulity as he can in this designation. On the other side, it is well settled that when the deception consists in palming upon the public articles of the party’s own manufacture or composition for those of another who has ob tained celebrity or notoriety, the court will remain inactive. This was the character of the deception practiced in Partridge v. Menck. That case is reported when before the vice-chancellor and chancellor, in 2 Sandford’s Chancery Reports, 622. It is also reported in the Court of Appeals in Howard’s Appeal Cases, 548. Gardiner, Justice, places his decision upon the ground that the plaintiff was selling matches of his own manufacture as those of “A. Golsh,” which had acquired considerable reputa- tion. The decisions in Pidding v. How, 8 Sim. 475, and in Perry v. Truefitt, 6 Beav. 66, rest upon the same principle. I have always considered that upon this branch of the subject the conduct of the defendant has a material influence. Has he deliberately, without any previous connection with the particular business, but simply to break in upon the trade and profit by the notoriety obtained by another, adopted his emblems and appella- tions? If he has, then, in my view, the question should be judged of solely as between the immediate parties, and the public should be left to its own guardianship. Such has undoubtedly been the case here. The defendants have avowedly and designedly adopted and used this name and these symbols of the plaintiff, to interfere with his trade and par- ticipate in his gains. This is enough to prevent me from placing my decision upon the ground of the plaintiff having deceived the public. I abstain 196 AMERICAN TRADE MARK CASES. Fetridge 7. Merchant. from urging the reasons of my opinion in this particular, which the different views of other judges, and especially of Mr. Justice Duer in the case of Fetridge v. Wells, just decided, instruct me may be wholly wrong, because my conclusion in this case will turn upon another point. 2. Another proposition is, that a name or appellation may be appropriated as a trade name; that this may be given to a com- pound, or article, every ingredient or portion of which is open to the use of every one, but the sale of which, under that appel- lation, is not lawful to any other person. It would scarcely be going too far to say, that the further removed such an appellation is from actually representing the article in question, the more exclusive and decided becomes the right to it. ‘ Medicated Mexican Balm”? had nothing in its composition peculiar to the land of Montezuma, 6 Beav. 66; and “Chinese Liniment” was, in all its ingredients, a stranger to the Celestial Empire, 4 McLean, 516. It appears to me that the term “ Balm of Thousand Flowers,” is of this character. The article is a liquid soap, or perfumed liquid soap. That name would be the name of the article, be- cause it would indicate its nature. The ingredients are palm oil, potash, sugar or honey, alcohol, and some strong scent, or a compound of strong scents. The connection from the use of honey, if employed by the plaintiff, is-remote and fanciful. The term is, in my opinion, extrinsic, and not indicative. . I am compelled, then, to differ in this particular from the learned judge in the case of Fetridge v. Rice, in Boston. He treats the phrase “as the proper name and appellation of the article.” But Judge Giles, of Maryland, considers it as ‘a fancy name’—not one representing the ingredients or composition of the preparation.” He proceeds upon the ground of its not having been an original appropriation by the plaintiff. 3. Another rule is, that even if the term used may be used in common, yet it may be employed by one with such peculiar emblems, colors, and devices, as to give to him an exclusive right. Strictly, the right of appropriation in such instances re- sults from the peculiar emblems. AMERICAN TRADE MARK CASES. 197 Fetridge v. Merchant. The case of Knott v. Morgan, 2 Keen, 219, is a striking ex- ample of this rule, where the use of the words ‘“‘ Conveyance Company,” or “London Conveyance Company,” was open to all, but the devices on the coaches were so similar as to justify the court in interfering. The case of Partridge v. Menck, 2 Sand. Ch. R. 622, is an instance of a dissimilarity which induced the court to refuse interference. Tried by this rule, the present case is a doubtful one. The test is stated in Cranshaw v. Thompson, 4 Man. & Gr. 385: “Is there such a similarity as would impose upon ordinary persons? If it is calculated to mislead, the intention to deceive would be manifest.” The resemblances are marked. The boxes in size, shape, edging of the cover, and color of the body, as well as of the label used, are almost identical. There is a slight difference in the height of the boxes. The labels on them are of the same golden color. The differences are undoubtedly plain when scrutinized. The emblem at the top is a little different. There is the name of “‘Merchant’s,” a star, and the letter X, on the defendant’s box. These are visible and likely to attract attention. When the boxes are opened, the arrangement of the number of bottles is so similar that no one would find a difference with- out a careful scrutiny. Some of the bottles appear to have had wrappers; and these wrappers are wholly different. Those of the plaintiff are covered with advertisements of his books, and those of the defendant’s are plain. The difference of the inner papers are marked. The form of the top is somewhat raised; but the name on the defendant’s, the star, and the X, form very noticeable differences. It is justly observed by Butler, who appears to be a candid witness, that the dealers in quantities could not be deceived, but a chance purchaser might perhaps be so. I look upon the case in this aspect as so doubtful, that it will in truth depend upon the decision of the next and very impor- tant question, viz: whether the plaintiff has a right to the ap- propriation, by first use or otherwise, of the term or name in 198 AMERICAN TRADE MARK CASES. Fetridge ». Merchant. question. If he has, the differences will not protect the defend- ant. If he has not, they will effectually do so. I proceed to examine that question. : 4. The rule may be stated in the language of Chancellor Walworth, Partridge v. Menck, 2 Sand. Ch. R. 625: ‘ The question in such cases is not whether the plaintiff is the original inventor or proprietor of the article made by him, and upon which he now puts his trade mark, or whether the article made or sold by the defendant under the complainant’s trade mark is an article of the same quality or value. But the court. proceeds upon the ground that the complainant has a valuable interest in the good will of his trade or business. He has appropriated to himself a particular label, sign, or trade mark, indicating that the article is manufactured or sold by him.” In other words, invention of the article to be sold is not an element of decision. But the first use or appropriation of the designation or name is the material question. This brings me to a point of most difficulty inthe case. Did the plaintiff first appropriate the term so as to give him a prior right? Dr. Fontaine was the first person who employed it in the United States. This was in 1846. He manufactured an article which he termed ‘ Dr. Fontaine’s Balm of Thousand Flowers,” and he says that the same term was used for cosmetics in Europe, in their different languages. A large number of witnesses depose to the following effect. I use the language of one of them, Bazin, a perfumer of fifteen years: ‘* That to his knowledge the terms ‘ Balm and Thousand Flowers,’ and ‘ Balm of Thousand Flowers,’ have been in com- mon use in this country and in foreign countries, in their re- spective languages, for more than ten years, as applied to nu- merous kinds of cosmetics and fancy soaps.” Similar statements are made by other witnesses. One says, that it has been so constantly used and applied to cosmetics for twenty years, in this country and elsewhere, that he has come to consider it a descriptive name of a cosmetic. These affidavits are met by counter-statements of numerous dealers, to the effect that they have never met with or heard of AMERICAN TRADE MARK. CASES. 199 Fetridge v. Merchant. a cosmetic under that name, except those in question in ‘his case. They have had more or less opportunities to have ac- quired such knowledge; and it is urged, and with much force, that the defendants have not proven one instance of its use, except what may be traced to Fontaine, to the plaintiff, or the defendant. One new question might arise upon facts which the weight of affidavits seems to establish: whether, if the term was first used in this country by Dr. Fontaine, in 1846, and was acquired from him by the plaintiff, its general use in other countries, in their several languages, would justify the employment by others. Fontaine states that he found it first in a French writer. It was commonly adopted elsewhere; it may be that any one would have the right to use it here, merely translating it. My conclusion upon this leading point of the case is, that the title of the plaintiff to appropriate the term to himself is not made out, that considerable doubt exists respecting it, and hence, that it is precisely the case in which the rule of Lord Cottenham, in Spottiswood v. Clark, and of this court, in The Amorkeag Man- ufacturing Company v. Spear, should prevail. 2 Sand. 604. The order will be to discharge the injunction order, upon the defendants entering into an undertaking in the penalty of $2,500, to keep an account of their sales, and render the same when required by the order of a competent court. The plaintiff will establish in this action his legal title, if he can, as well as any other ground of relief upon the trial. Such undertaking will only be considered as security for keeping the account and rendering it. Orper to be settled upon two days’ notice. 200 AMERICAN TRADE MARK CASES. Bloss v. Bloomer. Bioss v. BLooMER. Supreme Court of New York. Before Srronc, Wiuues, and Smits, JJ., General Term, March, 1857. Reported, 23 Barb. 604. It being the policy of the law to protect the rights of individuals in respect to their own inventions, labels, and devices, and the legislature having passed an act to punish and prevent fraud in the use of false stamps and labels, it seems to be implied that individuals shall not themselves attempt or allow any imposition upon the public by the false and fraudulent use of such labels, devices, etc. Accordingly held, that it was an offense against the spirit of the law, equally injurious to trade and commerce, and equally an imposition upon the public, to palm off spurious goods under the cover of genuine labels and devices. And that contracts to do this were clearly against public policy, and should not be upheld and enforced by the courts, A contract for the sale and purchase of a quantity of empty papers or bags for seeds with the plaintiff’s label thereon, to be filled with seeds by the purchaser, and the seeds thus put up to be offered for sale by the purchaser of such papers, in a specified county, and not elsewhere, was therefore held to be void. APPEAL from an order made at a special term, overruling a demurrer to the second cause of action set forth in the complaint. The first cause of action need not be stated. In the second count of the complaint and for a second cause of action, the plaintiffs alleged that on the rath day of December, 1854, at Rochester, the plaintiffs and the defendant entered into an agree- ment whereby the plaintiffs agreed to sell, and did sell, to the defendant twenty thousand, or thereabouts, empty papers or bags for seeds with the plaintiffs’ label thereon, and two thou- sand papers or bags of seeds with the plaintiffs’ label thereon, for the sum of $52.27; that the defendant agreed on his part to pay the said sum for the seeds and for the bags; to fill said empty bags with seeds of good quality, and sell or dispose of them so filled, and the bags of seeds purchased of the plaintiffs, with their labels upon the same, in the county of Dutchess, in the State of New York, and nowhere else. That the said AMERICAN TRADE MARK CASES. 201 Bloss v. Bloomer. quantity of bags of seeds and empty seed bags, with the plain- tiffs’ labels thereon, were then and there delivered to the defendant except a small quantity of empty seed bags, which were delivered a few days thereafter; and that the plaintiffs fulfilled, in every particular, their part of the said agreement, but that the defendant neglecting his duty in that behalf, and wrongfully intending to injure the plaintiffs in their said business, and in their reputation as seedsmen, did not fill said empty bags with seeds of good quality, and did not sell or dispose of said bags of seeds and empty seed bags to be filled with his own seed, which were sold to him by the said plaintiffs as aforesaid, in the said county of Dutchess, as he by the said agreement had agreed to'do, but filled said empty seed bags with seeds of a poor qual- ity, and sold or disposed of them, together with the bags of seeds sold to him by the plaintiffs as aforesaid, at divers other places, and in divers other counties than the said county of Dutchess ; by reason of which premises the plaintiffs had suffered damages to the amount of $200. The defendant demurred to the second cause of action, and specified the following grounds of objection thereto, to wit: 1. That it did not state facts sufficient to constitute a cause of action. 2. That the alleged-agreement set forth in the com- plaint in respect to the filling of seed bags by the defendant, with his own seeds, and selling them as seeds raised and put up by the plaintiffs, was an agreement to defraud and deceive the public, and no cause of action could arise from its breach by the defendant. 3. That the condition annexed to said alleged agreement to sell all the said seeds when put up in bags as therein set forth, nowhere else except in the county of Dutchess, was repugnant to, and inconsistent with, the right of ownership in the defendant, as purchaser of the articles sold by the plain- tiffs to the defendant, and was therefore void. 4. That the entire agreement therein set forth was void, as being against public policy and in restraint of trade. The special term overruled the demurrer, and the defendant appealed. 202 AMERICAN TRADE MARK CASES. Bloss v. Bloomer. F. E. Cornwell, for the appellant: The second count of the complaint contains no cause of action, because: I. The contract is on its face a cheat and imposition upon buyers. It can not be performed without practicing deceit upon the public. The plaintiffs could not permit an indiscriminate use of their labels in this way by third persons without being parties to the fraud. They virtually say to the public by their labels, ‘These are our seeds, raised and put up by us; you may depend upon it, you are buying a genuine article; you have our experience and care as seedsmentorelyon.” This is a falsehood and deceit, a false representation in a material point. And for granting the right to make such false representations, they can not, upon any correct principle, be entitled to be paid. The defendant could not be compelled to fulfill such a contract. It would be compel- ling him to cheat the community because he had agreed to do so, Suppose, for illustration, an agreement between two persons to palm off upon the community flour of some other description as “Genesee Flour,” by putting a false brand upon the barrel, could either party collect damages of the other for failing to carry out the agreement? ‘This is not an action for the value of the article sold. It has been paid for. It is simply an action for damages. Suppose again, an agreement by which A. sells to B., for the purposes of resale, a horse at a certain price; and as a part of the contract B. agrees with A. to resell the horse as of a particular breed, and to represent him to be such; both knowing the representation to be false. B. violates the agreement; can any action be maintained by A. for any damages he may sustain by sucha breach? Clearly not; for the agree- ment itself is against good morals. ‘‘A claim which is founded upon a transaction which is either malum prohibitum or malum in se, can not be enforced by an action of any kind.” Eberman v. Reitzell, 1 Watts & Serg. 181, cited in r U.S. Dig. Supple- ment, 67. See also Fuller v. Dame, 18 Pick. 472, where it was held that an agreement on which that action was brought, was invalid, as ‘‘ contrary to public policy, and to open, upright, and fair dealing.” A contract to do an illegal or immoral act is invalid, and will not be enforced in courts of justice. Forsythe AMERICAN TRADE MARK CASES. 203 Bloss v. Bloomer. v. State, 6 Ham. 21. ‘Fraud avoids a contract ab initio, both at law and in equity, whether the object be to deceive the public or third persons, or one party endeavor thereby to cheat the other. For the law will not sanction dishonest views and prac- tices, by enabling an individual to acquire, through the medium of his deception, any right or interest. Chitty on Contracts, 678, and cases there cited. One of the cases cited in Chitty is that of a contract for the sale of a picture as one painted by a particular master, which in fact was not painted by him. If it be objected under this head that the contents of the labels are not set forth in the counts, so as to show what the plaintiffs profess by it to do. or to furnish, we say in reply that that cir- cumstance is in support of the demurrer. For unless it be assumed that the labels advertised that the seeds were raised and put up by the plaintiffs, then the court fails to show that the plaintiffs have any interest which can be injured, and conse- quently no fact is averred from which the damage can be seen to arise. And it is thus a further objection to the court that the contents of the labels are not spread out in the complaint. II. The restraint upon the sale as to territory is void. The purchase of the articles sold by the plaintiffs and payment of the price transferred the ownership to the defendant. And the unlimited right of sale of the articles purchased, is the very essence of ownership. Nothing short of a copyright could give the plaintiffs control of territory. And even then such control is gone when they have parted with their title. The free right of sale is one of the essential attributes of title. Black. Com. 138; 2 Kent’s Com. r10; Bouv. Law Dic., tit. Property; 12 How. Pr. R. 255. If real estate be devised in fee, a subse- quent clause in the will providing that the devisee shall not sell, is void, as repugnant to the right of ownership. Here the articles were sold at a given price, which was paid. The plaintiffs could no longer exercise any control over the article. It was a full transfer, as in any other case of sale at their counter. The de- fendant might destroy his purchase, or plant, or use, or sell it where he pleased, without being liable to account for his acts to the plaintiffs. 204 AMERICAN TRADE MARK CASES. Bloss v. Bloomer. y F. Van Voorhis, Fr., for the respondents: I. The second count in the complaint contains a complete cause of action. It sets forth a contract between the parties and a breach of the same on the part of the defendant, in conse- quence of which the plaintiffs have sustained damages. II. The agreement is not an agreement to defraud or deceive the public. If the defendant had fulfilled the agreement on his part, by putting into the bags purchased of the plaintiff seeds of a good quality, no one could be injured in any manner, ITI. The condition in the agreement, that the defendant shall sell the seeds in Dutchess county, and nowhere else, is not inconsistent with the right of ownership of the defendant. IV. The agreement is not in restraint of trade. The law relating to contracts in restraint of trade has no application to this case. Story on Contracts, 551; Aditchell v. Reynolds, Wms. R. 181; 1 Smith’s Leading Cases, 430; Lawrence v. Kidder, 10 Barb. 641; 5 Mass. R. 223; 7 Cowen, 307; 2 Parsons on Contracts, 252, 254. V. The agreement is not against public policy. ‘An agree- ment is not void on this ground, unless it expressly and unques- tionably contravenes public policy and be manifestly injurious to the interests of the state.” Chitty on Contracts, 664, 658, 659. E. Darwin Smitu, J. The legislature, in an act entitled ‘an act to prevent and punish fraud in the use of false stamps and labels,” passed May 14, 1845 (Session Laws of 1845, ch. 279, p- 304), has declared it a misdemeanor either to counterfeit such stamps or labels with intent to defraud, or to vend goods, etc., thus stamped, without disclosing the fact to the purchaser.”” And this court protects the title of the author or inventor of any names, marks, letters, or other symbols which any manufacturer, trader, or other person has devised and appro- priated or been accustomed to use in his trade or business, and restrains by injunction any unauthorized use thereof to his preju- dice. Taylor v. Carpenter, 11 Paige, 2925 Coats v. Holbrook, 2 Sand. Ch. R. 586; Partridge v. Menck, Id. 622; 2 Barb. Ch. R. ror; Bell v. Locke, 8 Paige, 75. AMERICAN TRADE MARK CASES. >) Oo mn : Bloss v. Bloomer. If the legislature and the courts are thus sedulous to protect the rights of individuals in respect to their own inventions, labels, and devices, it would seem to be implied that such individuals should not themselves attempt or allow any imposition upon the public by the false and fraudulent use of such labels, devices, or names or inventions, for the sale of spurious or simulated articles. The fact that the defendant contracted to purchase, and the plaintiffs to sell a large number of empty papers, or bags, for seeds, with the plaintiff's labels thereon, implied, as was doubt- less the fact, that the plaintiffs had acquired a high credit with the public for the good qualities of their seeds, and that their labels upon bags or papers of seeds would secure for them a ready sale. and at appreciating prices. Money received by the defendant in the sale of the seeds he was to put in these bags and papers sold to him by the plaintiffs, would be money obtained by deceit and fraud, if not by false pretenses. Perhaps the pro- vision in the contract, that the defendant should fill the bags with seeds of a good quality, might save the parties from a con- viction for a conspiracy to commit an act “injurious to trade or commerce,” under subdivision 6, of section 8, chapter 1, of part 4, of the Revised Statutes. But if it be a crime to counterfeit labels, words, or devices previously appropriated to distinguish property, or to vend goods thus stamped, without disclosing the fact to the purchaser, it is equally an offense against the spirit of the law, equally injurious to trade and com- merce and equally an imposition upon the public, to palm off spurious goods under cover of genuine labels and devices. Contracts to do this are clearly against public policy and should not be upheld and enforced by the courts. ‘The demurrer in this case to the second cause of action—as the consideration is entire—is well taken, and the decision of the special term should be reversed. 206 AMERICAN TRADE MARK CASES. Clark v. Clark. CLarRK v. CLARK. Supreme Court of New York. Before Mircuert, Davies, and Roose- vELT, JJ., General Term, May, 1857. Reported, 25 Bard. 76. The law of trade marks is of recent origin, and may be comprehended in the proposi- tion that the dealer has a property in his trade mark. The ownership is allowed to him, that. he may have the exclusive benefit of the reputa- tion which his skill has given to articles made by him, and that no other person may be able to sell to the public, as his own, that which is not his. An imitation of his mark, with partial differences, such as the public would not observe, does him the same harm as an entire counterfeit, and will be enjoined accord- ingly. A party will not be restrained, by injunction, from using his own name, unless he so use it as to mislead. ; APPEAL from an order made at a special term, dissolving an injunction, The injunction restrained the defendant from mak- ing, devising, or causing to be made or devised, and from pur- chasing, procuring, or using on any cotton sewing thread or packages or spools thereof in their possession, or under their control, or by or for them or either of them, imported into, or sold or offered, or kept for sale, within the United States, any parti-colored label, ticket or trade mark of a like design, arrange- ment, lettering, coloring or combination of lettering and color- ing, to that used by the plaintiffs, as in the complaint stated, or being a colorable imitation thereof; also, from selling or offering for sale, within the United States, any cotton sewing thread or spools or packages thereof, bearing thereon the label, ticket or trade marks, or either of them, in the complaint complained of ; or any label, ticket or trade mark having a gold leaf colored center ground, or displaying blue, black, silver-leaf and gold-leaf colors, or lettered in the Egyptian, antique, or gothic style, or in colors of lettering in the complaint described as used by the plaintiffs in their trade mark, or any other label, ticket, or trade AMERICAN TRADE MARK CASES, 207 Clark v. Clark. mark, being a colorable imitation of that of the plaintiffs as in the complaint set forth; also, from the further publication, within the United States, of the advertisement, in the complaint com- plained of, or any advertisement implying that the thread sold by them was the thread manufactured by the plaintiffs, and estab- lished and known in the United States as Clark’s thread, as in the complaint alleged. Other facts are stated in the opinion. Martin & Smiths, for the appellants. EL. W. Stoughton, for the respondent. Mircuett, J. The plaintiffs are manufacturers at Mile End, Glascow, of spool cotton. In 1843, they used their present trade mark, consisting of four concentric circles; the inner one in gold, and the next in silver; the whole bounded by two con- centric black lines. In the inner circle is the number of the cotton; in the next, ‘J. Clark, Jr. & Co., Mile End, Glas- cow,” at the bottom. In the next circle are the words, ‘Six cord cabled thread, warr’d 200 yards.” In the outer circle are the words, ‘Sole agent, Wm. Whitewright, New York.” J. & J. Clark & Co. are also manufacturers of the same article at Seed Hill, Paisley, and the defendant is their agent. “They have both sold largely of the article in the United States. The defendant, some years after the plaintiffs’ trade mark was well known, adopted one for his cotton to be sold in the United States, consisting of concentric spaces of precisely the same dimensions as those of the plaintiffs, of the same colors, in the same order, with the letters in black, or in gold, as the plaintiffs’. There is the same number for the inner circle, with the same kind of stamp. In the next circle are the words, ‘* Clark & Co., Seed Hill, Paisley ;” ‘‘ Clark & Co.” being at the top, as in the plaintiffs’, and the same words as far as they go, as in the plain- tiffs’, and the other words below and in the reverse order, as are also the plaintiffs’; though these last words are entirely different from the plaintiffs’. Then, in the next circle, ‘Six cord cabled thread warr’d 200 yards,” precisely as in the plaintiffs’, in black 208 AMERICAN TRADE MARK CASES, Clark v. Clark. ground and gold letters; and in the outer circle, the words, “Sole Agent, George Clark, New York.” The words, ‘Sole Agent—New York,” being the same as the plaintiffs’, in every respect, even to their position; the place of their beginning and ending, and the stamp for the letters, being exactly alike, also, in both. . There is thus an evident design to imitate the plaintiffs’ mark, and it is successfully carried out by actually transferring the face of the plaintiffs’ dye to the defendants, in all respects, except that the plaintiffs have on theirs, “Wm. Whitewright, Mile End, Glascow,” ‘J. Clark, Jr. & Co.,” where the defendants have “George Clark,” ‘Seed Hill, Paisley,” ‘“‘ Clark & Co.” The effect of this imitation must be that all except very cautious pur- chasers would be deceived. Some who may have known that’ Wm. Whitewright was the agent of the plaintiffs, would natu- rally suppose that George Clark had been substituted. So that the difference in the names of the agents would not prevent deception. The name, ‘Clark & Co.,” is so near to “J. Clark, Jr. & Co.” that it would pass for the same; especially when placed in the same position, in the same kind of letters, and on the same ground. The difference in residence being stamped so as to read in the reverse of the rest of that circle might pass unnoticed. The law of trade marks is of recent origin, and may be com- prehended tn the proposition that a dealer ‘* has a property in his trade mark.” The ownership is allowed to him, that he may have the exclusive benefit of the reputation which his skill has given to articles made by him, and that no other person may be able to sell to the public, as his, that which is not his. An imitation of his mark, with partial differences such as the public would not observe, does him the same harm as an entire coun- terfeit. If the wholesale buyer, who is most conversant with the marks, is not misled, but the small retailer or the consumer is, the injury is the same in law, and differs only in degree. The right of action must exist for the last, as well as the first. If all consumers do not discriminate in the end, it would be indif- ferent, even to the wholesale buyers, from which of the two AMERICAN TRADE MARK CASES, 209 Clark v. Clark. they bought, and thus the extent, also, of the injury would be as great as if they also were deceived. It would follow that the defendants in this case should be enjoined from using the mark which they now use, and from any imitation of it with only colorable differences. But the injunction should not be as broad as it was originally granted. It should be so expressed that the defendants might distinctly understand what is prohibited. Their firm name is J. & J. Clark & Co. They manufacture six cord cabled thread; they have George Clark as their agent in New York. All this they may express,:as well as the number of their thread. But they should express it so as not to appear to imitate the plaintiffs. This could be done by inserting their firm name, instead of only a part of it, by changing the order of the colors in the concentric circles, and the style of the letter- ing and figures, and the position of the letters. There will be still a similarity between the labels of the two that may mislead some. But this results from two persons of nearly the same name being engaged in the same business, and the undoubted right of each to use his own name, and to describe the article which he sells by its well-known name; but does not result from an imitation of the mark of the other. The injunction should be modified accordingly. The plaintiffs complain that the defendants caused to be in- serted in the newspapers an advertisement that ‘¢ Clark’s Spool Cotton was sold wholesale only by George A. Clark,” and that their cotton had obtained the designation of ‘¢ Clark’s Spool Cot- ton.” The defendants show that this advertisement was inserted in consequence of the plaintiffs having previously caused to be inserted in the daily papers an advertisement that ‘* Clark’s Spool Cotton, the genuine article, has the name of Wm. Whitewright on every spool.” Both parties deal in spool cotton, and as both. are of the same name, each is entitled to have his called by the: name of ‘* Clark’s Spool Cotton.” The advertisement of each was, therefore, unjustifiable. “The defendants’ advertisement, if intended only indirectly to negative the plaintiffs’, must be con- sidered as part of a war of advertisements, in which neither has the right to call upon the court to interfere in his behalf, until 210 AMERICAN TRADE MARK CASES. Brooklyn White Lead Co. v. Masury. he lays down the hostile weapons which he has assumed, and comes, in a peaceful attitude, to ask for the protection of the law. For this reason the injunction should not be continued, as to the advertisement, unless the plaintiffs stipulate to forbear such advertisements as they have published. The injunction should be modified in this respect also. e Brookityn Waite Leap Company v. Masury. Supreme Court of New York. Before Mircuetr, Roosevett, and PEa- Bopy, JJ., General Term, September, 1857. Reported, 25 Barb. 416, It is to protect a party’s right of selling his own that the law of trade marks has been introduced. The right must include the privilege of selling to all—to the incau- tious as well as to the cautious. .Any false name that is assumed in imitation of a prior true name is in violation of this right, and the use of it will be restrained by injunction, Where the plaintiff, an incorporated company, had been engaged in the manufacture of white lead, at Brooklyn, for more than twenty years, and of marking their kegs & Brooklyn White Lead Company,” or “ Co.,” and the defendant had been en- gaged in the same business, at the same place, for a lesser period, and had re- cently changed his mark, upon his kegs, so that it read “ Brooklyn White Lead and Zinc Company:” He/d, that this was an imitation of the plaintiff's trade mark, with only a colorable difference, the effect of which imitation would be to deceive the public, and to make the defendant’s paint pass as the plaintiff’s. The defendant was therefore restrained, by injunction, from using the word “ Com- pany,” or “ Co,” ApprEAL from an order made at a special term dissolving an ‘injunction. The injunction restrained the defendant from sell- ing or offering for sale the spurious white lead mentioned in the complaint, manufactured by him, or by any other person, with the stamp or trade mark used by the defendant, and described in the complaint thereon: and from selling any white lead manufac- tured by any person or body other than the plaintiffs, under the AMERICAN TRADE MARK CASES. 211 Brooklyn White Lead Co. ». Masury. denomination of the plaintiff’s white lead, or any denomination simulating that of the plaintiff’s, or put up in kegs or otherwise with the plaintiff ’s stamp or trade mark thereon, or the stamp or trade mark used by the defendant, and described in the com- plaint thereon ; and from putting any stamp thereon in such a manner as to be a colorable imitation of the plaintiff’s stamp. The facts on which the injunction was granted appear sufficiently in the opinion of the court. YT. H. Rodman, for the appellant. W. W. Niles, for the respondent. MircueLt, P.J. The plaintiffs have been engaged in the manufacture of white lead for more than twenty years, and have been in the habit, for that period, of marking their kegs with their name; adding the words, ‘premium lead, warranted pure.” Since 1849, the defendant has been engaged in the same business: he and the plaintiffs manufacturing in Brooklyn, and each having a store in New York. The defendant, at first, labeled his kegs “* Brooklyn White Lead,* Pure, 100 lbs.” To that the plaintiffs did not object. They knew it, and may be considered as having assented to it, and led the defendant to con- : tinue to use that name, and enabled him to obtain a reputation for it as his own, by their acquiescence. As they both dealt in the same article, and both manufactured it at Brooklyn, each had the same right to describe it as Brooklyn white lead; and it is shown that many other companies had used the same designa- tion. But within some few years (how many does not appear) the defendant has changed his mark, and assumed one to which he has no title, and which is an imitation of the plaintiffs’, with only a colorable difference, that of * Brocklyn White Lead and Zinc Company.” He has no such company, and that part of his new title seems to have been adopted to imitate the plaintiffs’, and to make his paint pass as theirs. Such would be its effect with any but the most cautious. It is to protect the plaintiffs’ right of selling his own, that the law of trade marks has been 212 AMERICAN TRADE MARK CASES. Peterson v. Humphrey. introduced. It must include a right to sell to all, to the incau- tious, as well as to the cautious. Any false name that is as- sumed in imitation of a prior true name is in violation of this right, and the use of it should be restrained by injunction. The defendant should be enjoined from the use of the word “ Company,” or ‘* Co.” He says others are interested with him in the business. That would justify him in calling his paint by the name of Masury & Co.’s, but not by a title, as of an in- corporated company, strongly resembling the plaintiffs’. He has, within a few years, added to his business the making of zinc paint. He may, therefore, continue to use the title, ‘ Brook- lyn White Lead and Zinc,” only omitting the name ‘‘ Company” or “Co.” The injunction should be so modified. The order appealed from should also be so modified, without costs. Peterson v. HumMPHREY. Supreme Court of New York. Before Mircuett, J., Special Term, May, 1857. Reported, 4 Abb. Pr. R. 394. An injunction will lie, at the suit of one against another, his former copartner, re- straining the continuance of the use of the signs containing the old firm name without sufficient alterations os additions to give distinct notice of a change in the firm. ; The absolute refusal of the defendant, before suit brought, to remove such signs, exon- erates the plaintiff from any obligation to offer to contribute to the expense of the removal, or to allow reasonable time therefor. To render a person liable for misrepresentations, as to the credit of another, by the use of false signs or trade marks, it must be shown that the sign or mark was false in fact, so known to the party using it, used with the intention to deceive, and of a character calculated to mislead a person using ordinary caution. To sustain an injunction it is sufficient to show the fact of falsity, and that the effect will necessarily be to deceive, AMERICAN TRADE MARK CASES. 213 Peterson v. Humphrey. Motion to dissolve an injunction. The facts in the case are stated in the opinion. MircHeLt, J. Peterson & Humphrey were in business in Broadway and failed. Some arrangements were made with their creditors by which they were enabled to enter into a new busi- ness, and each is now in business on his own account—Hum- phrey at the former store in Broadway, and Peterson in Canal street. Humphrey’s present firm is the owner by assignment of the old debts of the late firm. Before the failure there was a broad sign above the second story of the store on Broadway, in the name of the firm, ‘Peterson & Humphrey,” and another over the entrance door. Peterson lately requested Humphrey to remove these signs, and receiving a refusal, the next day com- menced his action, and obtained an injunction to prevent the use of the signs. Before that the sign on the door had above it the name “‘ Humphrey & Co.,” and the word “ formerly,” read ‘‘ Humphrey & Co., formerly Peterson & Humphrey.” This last is true, and the word “‘ formerly” is so distinct, and in such large letters, that nobody can be deceived by the last words. But the sign above the second story may mislead, and the injunction against it should be sustained, but not as to the lower one. The defendant says that the plaintiff should have offered to pay part of the expense of removing the old signs, and allowed a reasonable time to do it. The absolute refusal of the defendant to remove them dispensed with such obligation. The old signs would be a holding out to the world that the old partnership was still continued, and might make Peterson liable as a continuing partner, if he sanctioned its continuance there; ‘he is, therefore, entitled to have it removed. The defendants have removed the objectionable part by covering over the name of Peterson with a piece of carpet; that is enough, if the carpet is retained so as effectually to cover that name, for it answers the purpose of preventing a deception. The injunction prevents the defendant from using the signs— that is, the boards—or from leaving them in any conspicuous place, er any sign bearing the old firm name, In this it is too so as to 214 AMERICAN TRADE MARK CASES. Williams v. Johnson. broad. The title to the “‘boards” has passed to the assignees, and the plaintiff has no ownership in them. The defendants are also enjoined from publishing any notice to the effect that the business formerly carried on by Peterson & Humphrey will be continued by them. This, ina restricted sense, is correct; but it should be explained so that the defendants be at liberty to publish in any form that Humphrey is one of the members of the late firm, and carries on the same kind of business as formerly. The rule as to the liability of a third person for a false rep- resentation as to the credit of another, although originating in the common law courts, contains the true elements of the lia- bility for false signs or trade marks, with perhaps a slight modi- fication. The sign or mark must be false in fact, and be so known to the party using it, and have been used with the in- tention to deceive, and be of such a character as would mislead a person using ordinary caution. The injunction may be proper without any other proof of the knowledge of the falsity, or of the intention to deceive, than that which arises from the fact that there is falsity, and that the effect will necessarily be to deceive. Such inferences in a common law action are inferred by a jury. THE injunction should be modified accordingly. Wi iiaMs v. JOHNSON. Superior Court of the City of New York. Before Durr, C. J., and Horrman and Wooprurr, JJ., General Term, June, 1857. Re- ported, 2 Bos. 1 A manufacturer of goods, who, in order to designate his own manufacture, has adopted names, marks, and labels, which are peculiar, and not theretofore used, is entitled to be protected by a court of equity in the use thereof, as trade marks, against fraudulent or deceptive imitation by others. AMERICAN TRADE MARK CASES. 215 Williams v. Johnson. This is true, although the article manufactured by him is composed of well-known in- gredients, in general use for that purpose, and which any person may combine and sell at his pleasure; trade marks in such case being appropriately employed to de- note a manufacture of the article, by the person using them, and to notify those who buy and use the article, that his peculiar skill, in combining the ingredients, have been employed therein. An injunction will be granted to restrain the use by another of labels, devices, or hand- bills, in imitation of or simulating such trade marks. Whether a mere name of an article, or a designation of a place of manufacture, can or can not become the subject of protection, as a trade mark, the court will restrain the use thereof in such a combination, with peculiar devices and labels, as will tend to deceive the public, and induce the erroneous belief in the minds of dealers and consumers, that the articles are manufactured by the person introducing or adopting the same, to distinguish his goods. Slight differences calling for scrutiny, or concealed by artifice, so as to escape the atten- tion of the unwary, are not sufficient to protect the imitator of a trade mark from liability. Plaintiff made soap which was labeled, “Genuine Yankee Soap, * ® ® Manu- factured at Manchester, Conn., by Williams & Bro.” Defendants used the fol- lowing label: “ Genuine Yankee Soap, Manufactured at New York, by L. Will- jams & Co.” The court adjudged the former to be a valid trade mark, and re- strained defendants from using the latter. AppPEAL from an order made at special term, before Mr. Jus- tice Slosson, granting an injunction to restrain the defendant, pendente lite, from selling, disposing of, or advertising, or offer- ing for sale, any soap (not manufactured by the plaintiffs) put up in boxes, wrappers, or labels, in a form and style, alleged in the bill of complaint, to be a fraudulent imitation of the boxes, wrap- pers, labels, etc., used by the plaintiffs, to désignate their own manufacture. The complaint herein alleged that, in or about the year 1845, the plaintiff, James B. Williams, and his brothers, were manu- facturers of soap at Manchester, Connecticut ; that they manu- factured a particular kind of soap, to which, in order to identify it as their manufacture, they gave the name of “ GENUINE YANKEE Soap,” Made in cakes of about two inches square, each cake covered 216 AMERICAN TRADE MARK CASES. Williams v. Johnson. with tin-foil; that upon one side of each cake was attached an octagonal pink label, with the words printed thereon: “GENUINE YANKEE Soap, manufactured at Manchester, Conn., by Williams && Brothers, Chemists and Apothecaries. To prevent counterfeits, their signature will be upon each cake.” Upon the other side of each cake was attached another octag- onal pink label, with the words printed thereon: “ THE GENUINE YANKEE SOAP is warranted superior to any foreign compound for shaving and the toilet, affording a copious and. heavy lather, which does not dry on the face, leaving the skin soft and smooth.” And at one end of each cake was attached another pink label with the words in writing, or in resemblance to writing; “ Williams & Bros.” That the said soap was put up in paste-board boxes containing one dozen cakes each, and each box covered with a brown paper wrapper, with the words thereon: ‘* One dozen Genuine Yan- kee Soap, warranted superior to any foreign compound for shav- ing and the toilet, manufactured at Manchester, Conn., by Will- iams & Brothers, Chemists and Apothecaries. To prevent coun- terfeits, their signature will be upon each cake.” Upon these several labels, the arrangement of the Jines, the form of the letters, and style of the printing, was peculiar, and, in some degree, fanciful. The complaint states that under the above designation, and put upin the manner described, Williams & Brothers, in or about 1845, introduced their said soap into the market for sale, and it was favorably received, because extensively known by purchasers and dealers, and obtained a large sale, and the demand therefor greatly increased. That subsequently, by changes in the busi- ness of Williams & Brothers, and by transfer to them, the plain- tiffs succeeded to the manufacture of this soap and the exclusive AMERICAN TRADE MARK CASES. 217 Williams v. Johnson. right to use the style, designation, and labels, and mode of pack- ing above described, and still continue to manufacture and sell the same; and that by reason of the superior quality of the said soap, and the favorable reputation which it maintained, the man- ufacture and sales thereof had, at the time of the defendant’s in- terference, become and were large, extensive, and profitable. That the defendant, well knowing these facts, and with intent to deceive and defraud the public who deal in or use the said soap, has manufactured, or caused to be manufactured, and is continually manufacturing, etc., and has in his possession, large quantities of soap of an inferior quality, which he puts up in a style and manner precisely similar to that in which the plaintiffs’ is put up. That it is cut up into cakes of the same size as those of the plaintiffs’, each cake encased in tin-foil, and upon each cake three pink labels of the same form used by the plaintiffs, upon one of which are printed the words: “ GENUINE YANKEE SOAP, manufactured at New York, by L. Williams & Co. To prevent counterfeits, their signatures will be upon each cake.” Upon another are printed the words: , “THe GENUINE YANKEE SOAP is warranted superior to any foreign compound for shaving and the toilet, affording a copious and heavy lather, which does not dry on the face, leaving the skin soft and smooth.” And upon the third are the words, in writing, or in a resem- blance to writing: “TL. Williams & Co? That each box is covered with a brown paper wrapper, with the words thereon: “ One Dozen Genuine Yankee Soap, warranted superior to any Soreign compound for shaving and the toilet, manufactured by L. 218 AMERICAN TRADE MARK CASES. Williams v. Johnson. a Wiliams & Co., New York. To prevent counterfeits, their signa- ture will be upon each cake.” Upon these several labels, the arrangement of the lines, the form of the letters, and style of printing, was, in almost every particular, an exact copy of the labels used by the plaintiffs, and the complaint states that the name of L. Williams & Co. is fic- titious, and is used to deceive, etc. The plaintiffs alleged damage, etc., and prayed an injunction. ‘The defendant answered the complaint, denying that the plain- tiffs had any exclusive right to use the designation ‘* Genuine Yankee Soap,” or the marks and labels above described ; denying that the soap made by him was inferior to that made by the plaintiffs; that the plaintiffs had sustained any damage by any wrongful act of his; averring that the term ‘* Genuine Yankee Soap,” described a particular style and quality of soap, and did not identify the person or persons by whom, or the place where, it was manufactured; that the article known in the market by that name ‘has been for years” manufactured by different man- ufacturers of soap in different parts of the United States, and sold by that name, and that it could not be appropriated by the plaintiffs, “The answer denies that the name, L. Williams & Co., is fictitious, or used as a colorable imitation, assimilating the trade mark of the plaintiffs. On the contrary, it states, that so early as 1850, there was a firm in New York, composed of L. Williams and others, carrying on business under the name of L. Williams & Co., for and on account of whom the said article of Genuine Yankee Soap, as now made by the defendant, was made until L. Williams & Co. went out of business in 1856, and that such soap bore their name, and had acquired a favorable name and reputation, and that the rights of L. Williams & Co. to manufacture said soap, and to use the bills, labels, name, and trade marks used by L. Williams & Co., has been transferred to the defendant, being the same now used by him. The plaintiffs, in support of their motion, produced the affida- vits of several dealers in soap; to the effect that the article, known in the market as ‘‘Genuine Yankee Soap,” is known as the AMERICAN TRADE MARK CASES. 219g Williams v. Johnson. manufacture of Williams & Brothers, of Connecticut. That that name does not denote the name of the article merely to distinguish it from other kinds of soap, but to denote that it is the manufacture of Williams & Brother. That it was first introduced into the market by Williams & Brothers, by whom the name was adopted to distinguish it as their manufacture, and as their trade mark. That the several deponents dealt therein several years before they were aware that imitations thereof were sold. That they have never known any soap to be made and sold in the market, as and for ** Genuine Yankee Soap,” by any others than Williams & Brothers, except such as were put up in boxes and accompanied by labels and wrappers which were close imitations of those used by Williams & Brothers, and thus calculated to deceive the public by inducing the belief that such imitations were the manufacture of said Williams & Brothers. An injunction was granted at Special Term, restraining the defendant from “selling, or in any way disposing of any soap in boxes or otherwise, with labels or wrappers containing the words, ‘Genuine Yankee Soap,’ printed or written thereon; and frou advertising, selling, or offering to sell any soap whatever (umes. the same has been manufactured by, or procured from, the plaintiffs), as and for “Genuine Yankee Soap;’ and also from using in any manner the words or name ‘Genuine Yankee Soap,’ in connection with soap manufactured or offered for sale by him; and also from assimilating in any way, or making, or using any colorable imitation of said name, ‘Genuine Yankee Soap,’ or of the words Williams & Brothers, or either of them as adopted and used by the plaintiffs.” From the order so made the defendant appealed. F. C. Dimmick, for the appellant. Waldo Hutchins, for the respondent. Wooprurr, J. The defendant is engaged in a gross and palpable endeavor, by imitating the marks and labels used by the 220 AMERICAN TRADE MARK CASES. Williams v. Johnson. plaintiffs, to deceive the public and obtain patronage which would in all probability be attracted to the plaintiffs. This the defendant is doing, not only by closely imitating the plaintiffs’ marks and labels, but by falsely representing his soap as a Yankee manufacture, and made by persons named Williams, when, in truth, it is made in the city of New York by the defendant, William Johnson. No words can describe or give a conviction of the fraud the defendant is practicing, so clearly as the inspection of the marks and labels, and on that inspection no candid mind will say that the conduct of the defendant is not properly characterized by the language above employed unless it be thought that terms of more severe reproach were due him. There is no claim by the plaintiffs that soap is not an article composed of well-known ingredients, which any person may combine and sell as soap of his manufacture at his pleasure. If there are distinguishing peculiarities wherein the plaintiffs’ soap has gained a name or reputation, we do not perceive that such peculiarities lie in anything but the skill employed in com- bining the ingredients. In all the benefits arising from that skill, and the reputation acquired thereby, the plaintiffs should be protected, so far as, consistently with the rights of others, it may be done. Whatever marks or devices are employed by the plaintiffs to denote that the soap is made by them, and is combined by the same skill that was employed in the making of soap heretofore made and sold by them bearing the same marks and devices, are entitled to protection—as, for example, if the plaintiffs had chosen to stamp their soap with some impression having no other meaning than to distinguish their manufacture from that of others, and had given it out as their mark, and, by this dis- crimination, soap of their manufacture had acquired reputation and sale, they would be plainly entitled to protection. They have adopted, in reference to their manufacture (of an article which any and every one may manufacture and sell, if he please,) a form and size of cake, a particular mode of covering and packing, a combination of three labels on each cake, an AMERICAN TRADE MARK CASES. 22,1 Williams v. Johnson. exterior handbill upon the box, and have so arranged the whole as to suggest to any one desiring to purchase their soap, upon an inspection, that the article is theirs, and made by them, like that heretofore made, sold, and known as their manufacture. All this the defendant has copied, with an exactness which is calculated to deceive even the wary, much more to entrap those who are not in the exercise of a rigid scrutiny. It is true that the defendant has put upon his labels New York as the place of manufacture, and L. Williams & Co., in- stead of Williams & Brothers, as manufacturers. But the latter designation imports a falsehood, and tends rather to create than destroy the impression that the soap is made by the plaintiffs ; and the use of the word New York, in its obscure printing, if it be read, falls far short of suggesting to the public that it is not the soap manufactured by the plaintiffs. Lott, Senator, in Taylor v. Carpenter, 2 Sand. Ch. R. 613, says, ‘* 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 can not deserve the appellation, which studiously gives to the product of pretended superior skill the name and exact resemblance and imitation 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.” The late Vice-Chancellor Sandford, in Coats v. Holbrook, 2 Sand. Ch. R. 504, states the general rule to be well settled, as follows: “ A man is not to sell the goods or manufactures of B. under the show or pretense that they are the goods or manufac- tures of A., who, by superior skill or industry, has established the reputation 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 allowed, to use the names, letters, marks, and other symbols by which he may palm off upon buyers, as the manufac- 222 AMERICAN TRADE MARK CASES. Williams v. Johnson. ture of another, the article he is selling, and thereby attract to himself the patronage that without such deceptive use of such names, etc., would have inured to the benefit of that other per- son who first got up or was alone accustomed to use such names, marks, letters, or symbols.” It will be seen that in the cases referred to, as in the present, the imitation enjoined against embraced, not merely names, but a simulated mode of putting up the goods, even including the pe- culiar spools and wrappers or envelopes employed by the plaintiffs. The same general principles are stated and illustrated with great force and clearness in the case of The Amoskeag Manufac- turing Company v. Spear, in this court, 2 Sand. S. C. 599, by Mr. J. (now Ch. J.) Duer, and in reference to the variations in the labels used by the defendant, by the use of the words New York as the place, and L. Williams & Co. as the name of the manufacturer, his observations are singularly appropriate: ‘In order to convey a false impression to the mind of the public as to the true origin or manufacture of goods, it is not necessary that the imitation of an original trade mark shall be exact or perfect. It may be limited and partial. It may embrace varia- tions that a comparison with the original would instantly dis- close ; yet a resemblance may still exist that was designed to mislead the public, and the effect intended may have been pro- duced. Nor can it be doubted that, whenever this design is apparent, and this effect has followed, an injunction may right- fully be issued, and ought to be issued.”” And in that case it is held that a style, as well as a name of a manufacture, is entitled to protection, and its unauthorized use is conclusive evidence of a fraudulent intent. It is so palpable as to admit of no reasonable doubt that the devices employed by the defendant were calculated and intended by him to secure the benefit of the reputation which the plain- tiffs had acquired. He is in this respect entitled to no favor. The court, in considering the propriety of enjoining him pending the litigation, will not feel called upon to be zealous to aid him by refined distinctions, so that he may evade the letter and vio- late the scope and spirit of the adjudged cases. AMERICAN TRADE MARK CASES. 223 Williams gv. Johnsen. We have no hesitation in saying that his acts are a clear in- fringement of the plaintiffs’ rights. He has copied the form, appearance, color, style and substantial characteristics in all re- spects which distinguish the plaintiffs’ goods. The form of the present injunction is, perhaps, not that which is best adapted to secure the plaintiffs what they are clearly en- titled to, and in this respect the terms of the injunction may be made to conform more clearly to the views which governed this court in the case of the Amoskeag Company v. Spear, above re- ferred to. Whether, upon the taking of the proofs in the cause, it will appear that the particular words ‘* Genuine Yankee Soap,” are to be deemed descriptive of the kind of soap which any one may make and sel] by its proper name, or are terms properly designating the plaintiffs’ manufacture, and so to be descriptive of their peculiar skill in making an article already in known and common use by its proper and only generic name, soap, is perhaps not free from doubt. It is quite clear that so far as it indicates the place of manufacture, it is a fraud on the part of the defendant to use it. Still the case referred to decides that, though it be in this particular a fraud on the part of the defend- ant, the plaintiffs can not have an injunction unless it shall ap- pear that it designates their own manufacture, and that its use by the defendant operates to the prejudice of a right acquired by them. Without deciding whether the defendant may or may not use either of the words ‘‘ Genuine,” or “ Yankee,” in any possible combination, we think it sufficient to say that he may not use the labels, or devices, or handbills which he is using, nor any other like labels, handbills, or devices, in imitation of, or simu- lating the labels, devices, or handbills used by the plaintiffs, as set forth in the bill of complaint, or any other similar labels, de- vices, or handbills calculated to deceive the public, or create the belief that the soap he sells is the soap made or sold by the plaintiffs under the name of Genuine Yankee Soap. If the defendant desires that the injunction order be made to conform to this latter view of the subject, his counsel may pre- pare and serve an order to that effect, in which case the plaintiffs’ 224 AMERICAN TRADE MARK CASES. Dayton v. Wilkes. counsel may submit amendments, and the same will be settled on two days’ notice. The costs of the appeal, ten dollars, will abide the event of the suit. ORDERED accordingly. Dayton v. WILKES. Superior Court of the City of New York. Before Horrman, J., Speciat Term, September, 1859. Reported, 17 How. Pr. R. 510. On the dissolution of and winding up of a partnership, where a valuable part of the partnership consists in the good-will of the business carried on by the partners (publishing a newspaper), such value, as much as the furniture of the office or debts due to the firm, must be protected and disposed of for the benefit of the creditors of the firm, or of the partners jointly. Where there is a dissolution of a partnership in the business of publishing a newspaper, and the whole title to the paper is owned by one of the partners or a purchaser under the firm, the court has no right, in the absence of any covenant or restric- tion on the subject, to restrain or interdict the establishment, by the other partner, of another paper devoted to the game objects, provided the latter paper is sufhi- ciently distinguished from the former to prevent the doctrine of piracy of trade marks from applying. Motion to dissolve injunction. ? Charles “fones, for plaintiff. Fames M. Smith, for defendant. Hopkins, J. It is established by the papers before me that the plaintiff has the legal title to the partnership property, in connection with the defendant or his assignee, and that Tom- linson was only mortgagee. It is also established that the plain- tiff and defendant were partners, and that, in fact, a dissolution has legally taken place by the assignment of the latter. AMERICAN TRADE MARK CASES. 226 Dayton v. Wilkes. The usual consequences follow; the partnership must be wound up; the parties enjoined from interfering with the prop- erty, and a receiver be appointed to collect and dispose of it. All this is conceded by counsel, and the only question of moment relates to the intended publication of a sporting paper by the defendant, and the propriety of the temporary injunction, which prohibited such publication. The valuable part of the partnership property consists in the good-will, so to term it, of the paper—that is, the celebrity which it has acquired under the name of Porter’s Spirit of the Times, and the probability of that title continuing to attract custom. This value is partnership property as much as the furniture of the office or a debt to the firm, and this must be protected and disposed of for the benefit of the creditors of the firm or of the partners jointly, On the other hand (there being no covenant or restriction upon the subject), the court has no more right to prohibit the establishment of another paper de- voted to the same objects than it would have to interdict the establishment of a bookstore by one partner in a book firm, after dissolution, on his own account, under his own name, and conducted with his own resources. It has been very correctly argued by the counsel of the plaintiff that the analogy of the rules as to trade marks should apply to this case. I apprehend that if the whole title to **Porter’s Spirit of the Times” were now in a purchaser under the firm, the defendant could not, within those rules, be prevented from publishing the paper he now proposes to send forth. Its headings, its vignette, its dis- tribution into four columns instead of three, are sufficient to distinguish it from the present paper and to prevent the doctrine of piracy from applying. The late case of Churton v. Douglass, before Vice-Chancellor Wood, March, 1859, 1 H. V. Johnson’s Rep. 174, see Monthly Law Reporter for July, 1859, p. 172, illustrates and supports the views now expressed. The full protection of the property in the paper requires, however, that the receiver be empowered to carry it on until sufficient time is allowed to dispose of it advantageously. - 226 AMERICAN TRADE MARK CASES. Wolfe . Goulard. The order for an injunction will be continued, except so far as it prohibits the defendant from publishing any paper, which will be omitted. A receiver will be appointed with the usual powers, and is to be authorized to edit and publish the paper for the period of weeks, within which time he is to sell the same. No costs on this motion to either party. Wotre v. GouLarD. ‘Supreme Court of New York. Before Incrauam, J., Special Term, October, 1859. Reported, 18 How. Pr. R. 64. ‘When a person forms a new word to designate an article made by him, which has never been used before, he may obtain such a right to that name as to entitle him to the sole use of it as against others who attempt to use it for the sale of a similar article; but such an exclusive use can never be successfully claimed of words in ‘common use previously, as applied to similar articles. Words as used in any lan- guage can not be appropriated by any one to his exclusive use to designate an arti- cle sold by him, similar to that for which they were previously used. That is, no “person can acquire a right to the exclusive use of words, applied as the name of an article sold by him, if in their ordinary acceptation they designate the same ora similar article. ‘Eizld, that if the plaintiff in this case can eventually sustain his legal right by action, .to the use of the name of ‘Schiedam Schnapps,” as applicable to a certain kind of gin alleged to be manufactured and sold by him, he may then obtain the relief by injunction he asks for; until then he is not entitled to it, as his right is ex- pressly denied by the defendant. Motion by defendant to dissolve injunction. Gilbert Dean, for defendant. AMERICAN TRADE MARK CASES. : 227 Wolfe v. Goulard. Charles O’ Conor, F. B. Cutting, and H. E. Davies, Fr., for plaintiff. IncRaHAM, J. The plaintiff in his complaint avers that he has for a long time past been, and now is, the manufacturer and seller of a certain kind of gin known as ‘‘Schiedam Schnapps,” of the composition of which he is the original inventor, different from any other kind of gin, and superior to any other; that he first invented and adopted the term ‘‘ Schiedam Schnapps,” as a label, trade mark, or sign of the gin so sold by him, which pre- viously was wholly unused, and never before known in the market as any designation for gin of any kind; that he had used the term ‘‘Schiedam Schnapps,” as designating the article he sold, from 1848 to the present time, and claims the exclusive right to such name. He also avers that he used a peculiar shaped bottle, and pre- pared a label, for which he obtained a copyright. He charges the defendant with having imitated the bottle used by the plaintiff, with having adopted the term Schiedam Schnapps, and. with using wrappers of the same color and resembling the plaintiff’s. He charges the defendant with sell- ing a spurious and inferior imitation of the article he sells, under the same name, except substituting the name of Voldner for Wolfe, but calling the. article so sold by the same name, “‘Schiedam Schnapps,” and he prays for a perpetual injunction. An injunction was granted, restraining the defendant from selling any imitation of the plaintiff’s gin, or any other article under the name of Schiedam Schnapps, and from the use of any imitations of plaintiff’s labels, etc. The defendant now moves to dissolve this injunction. In his answer he denies the allegations in the plaintiff’s com- plaint, but admits that for ten years past he has been selling common Holland gin, under the designation of ‘*Schiedam Schnapps,” and has used square bottles with a label such as were previously used by Burnett & Oldner, and which were sold by them as Voldner’s Schiedam Schnapps. He avers that the arti- cle sold by Burnett & Oldner, and subsequently by himself, was 228 AMERICAN TRADE MARK CASES. Wolfe v. Goulard. a better article than Wolfe’s,.and denies that it was ever desired to have this article taken for, or confounded with that sold by Wolfe. . He also claims that the gin he sells is manufactured in Schiedam; that the term schnapps is used there to represent an alcoholic drink, and was so used there, long before it was adopted by the plaintiff, and was so used in Schiedam long before the plaintiff was born. Upon the argument of this motion, several affidavits have been produced on both sides, to sustain the views of the respect- ive parties. Among them are a large number of affidavits on the part of the defendant, showing that the term ‘ Schiedam Schnapps” had been in use at Schiedam, as applicable to liquors, long anterior to 1848; and a large number on the part of the plaintiff, showing that the term had never been applied to liquors sold in this market, or used as a designation of any kind of gin or liquor, until they were so used by plaintiff. From the course of the argument before me, and the statements of the counsel, it was apparent that the main object of the action and injunction was to restrain the defendant from selling any arti- cle under the name of Schiedam Schnapps. The shape of the bottles was only used for the purpose of showing the intended imitation. It can not be that any person may not use square glass bottles, or colored wrappers, for the sale of an article of trade, whether previously used by another or not. The labels offered in evidence can not in any sense be said to be an imita- tion, either in color, name, or contents, and as the plaintiff has a copyright of his label, if it should be used by others he has an ample remedy in another proceeding. ‘ The question, then, on this motion is limited to the sole inquiry whether the plaintiff has sucha right to the use of the term “ Schiedam Schnapps,” to designate the liquor which he sells, as to entitle him to an injunction restraining the defendants from using it. It was admitted on the argument that the word “ Schiedam,” being the name of a town in Holland, could not be so appropriated by the plaintiff, and that the word “ Schnapps” was a word adopted from the German language, meaning a AMERICAN TRADE MARK CASES. 229 Wolfe v. Goulard. dram. Both parties admit its use in Holland with that signifi- cation. The defendant also claims and produces some evidence to show that in Schiedam it is used to designate gin. When a person forms a new word to designate an article made by. him which has never been used before, he may obtain such a right to that name as to entitle him to the sole use of it as against others who attempt to use it for the sale of a similar article, but such an exclusive use can never be successfully claimed of words in common use previously, as applicable to similar articles. If the affidavits on the part of the defendant are correct, which state that the word schnapps is used in Schiedam to designate gin, then the use of the words could not be restrained either there or here, any more than the use of the words New York gin could be claimed by any one exclusively for gin manufac- tured in New York. Words, as used in any language, can not be appropriated by any one to his exclusive use to designate an article sold by him similar to that for which they were previously used. In Burgess v. Burgess, 17 Eng. L. & Eq. 257, it was held that a person had a right to make and sell any article called “Essence of Anchory,” although the plaintiff and his father had for a long term of years been making and selling such an article under that name, originally invented by them; and that, too, when the sauce was sold in bottles of the same shape as the plaintiff used, with labels, wrappers, and catalogues, bearing a general resemblance to those used by him. In the Amasheag Manufacturing Co. v. Speer, 2 Sand. S. C. 599, Duer, Justice, says: “Tt is certain that the use by another manufacturer of the words or signs indicative only of these circumstances, that is, indicating the origin of the article, its appropriate name, the mode or process of its manufacture, etc., may yet have the effect of misleading the public as to the true origin of the goods, but it would be unreasonable to suppose that he is, therefore, pre- cluded from using them as an expression of the facts which they 230 AMERICAN TRADE MARK CASES. Wolfe v. Goulard. really signify, and which may be just as true in relation to his goods as to those of another.” In Stokes v. Landgraff, 17 Barb. 608, this point was fully discussed by Strong, Justice. After showing the cases in which he may, by priority of appropriation, obtain a right to the use of many letters, marks, or symbols of any kind as a trade mark, he adds: “ In respect to words, marks, or devices, which do not denote the goods or property, or par- ticular place of business of a person, but only the nature, kind, or quality of the articles in which he deals, a different rule pre- vails. No property in such words, marks, or devices can be acquired.” Mr. Justice Duer, in Fetridge v. Wells, 13 How. Pr. R. 355, says: ‘“‘A name may rightfully be used as a trade mark, but this is only true when the name is used merely as indicating the true origin or ownership of the article offered for sale, never where it is used to designate the article itself; and has, become, by adop- tion and use, its proper appellation. ‘“The name, no matter when or by whom imposed, becomes by use its proper appellation. Hence, all who have an equal right to manufacture and sell the article, have an equal right to designate and-sell it by its appropriate name, etc., provided each person is careful to sell the articles as prepared and manufactured by himself, and not by another.” The exclusive right to use as a trade mark the appropriate name of a manufactured article, exists only in those who have an exclusive right to the article itself. So it was held by Lord Mansfield in Singleton v. Bolton, 3 Doug. 293, that although the plaintiff had been selling a par- ticular medicine, under the name of “Dr. Johnson’s Yellow Ointment,” yet the defendant had an equal right to prepare and sell it under the same name, there being no evidence to show that he sold it as prepared by the plaintiff. , In Perry v. Truefitt, 6 Beav. 66, the plaintiff claimed to be the inventor of Perry’s Medicated Mexican Balm, and applied for an injunction to restrain the defendant from selling a similar medicine, which he called Truefitt’s Medicated Mexican Balm, but the injunction was not granted. In Clark v. Clark, 25 Barb. 75, Mr. Justice Mitchell held, AMERICAN TRADE MARK CASES. 231 Wolfe v. Goulard. . in the general term of this district, that a manufacturer might use the same word as another to designate his manufacture, but Must not use it so as to imitate an article previously sold by an- other. In Brooklyn White Lead Company v. Masury, 25 Barb. 4.16, the court held that although the plaintiffs had sold their lead under the name of Brooklyn White Lead, for a long time, yet that the defendant might assume the same name to describe a similar article sold by him, and only restrained him from add- ing the word “Co,” thereunto, as used by the plaintiffs; and in Merrimack Manufacturing Company v. Garner, 4 E. D. Smith’s R. 387, it was said, the defendants have a right to imitate and sell the same style of goods as those manufactured by the plain- tiffs, and the plaintiffs have no ground of complaint, unless the label used upon the article in imitation would lead persons to suppose that they were buying goods actually manufactured by the plaintiffs. From these cases and various others which might be cited, it is apparent that no person can acquire a right to the exclusive use of words, applied as the name of an article sold by them, if in their ordinary acceptation they designate the same or a similar article. Upon the true meaning of this word in Holland, there is contradictory testimony. I do not deem it necessary upon this motion to decide it. Enough is shown at least to make it very doubtful whether the plaintiff can have any right to the exclusive use of this name. His right to it is expressly denied by the defendant, and when that is the case, an injunction is never granted in the first instance until the plaintiff has estab- lished his legal right to it by an action. 2 Barb. Ch. R. 101; Motley vy. Downman, 3 Mylne & Craig, 14. If the plaintiff in this action establishes his right to this name exclusively, he may then obtain the relief he asks for; until then he is not entitled to the injunction. [ think, also, there is difficulty in sustaining this injunction foranother reason. There is no pretense that the defendant ever sold his manufacture as that of Wolfe. On the contrary, he placed upon his bottles and labels, m large and plain characters, the name of Voldner as the manufacturer, Iam at a loss to see how he can be charged 232 AMERICAN TRADE MARK CASES. Comstock #. White. with selling it as an imitation of the plaintiff’s article. The plaintiff's name is not used. The defendant sells under the name of a different person (whether real or fictitious is immate- rial), so plainly that no one, who does not wish to be deceived, could for a moment suppose he was buying an article manufac- tured by Mr. Wolfe, as was said by Bruce, F. J., in Burgess v. Burgess. The ground of complaint is the great celebrity which the plaintiff's manufacture had obtained, and which might be affected. This does not give him an exclusive right, monopoly, or privilege, so as to prevent any man from making the same article and selling it under his own name. I deem it, however, unnecessary to discuss these questions any further, for the reason that, even if the plaintiff can eventually sustain his right to the use of this name, he is not entitled to the injunction under affidavits denying his right thereto, until he has obtained a judgment establishing such right to be beyond dis- pute. The motion to dissolve the injunction is granted, with ten dollars costs. Comstock v. WHITE. Supreme Court of New York. Before SuTHERLAND, J., Special Term, February, 1860. Reported, 18 How. Pr. R. 421, Without a patent from the government no one has an exclusive right to manufacture and sell pills as a useful invention. Therefore an injunction will not be granted to restrain an innocent defendant from manufacturing, advertising, or selling by any name, designation, or trade mark whatsoever, pills precisely like those manufactured and sold by the plaintiff, and by the name designated by him, or pills composed of the same elementary con- stituents, But where it appeared that the defendants, in having connected shiemeelies with the plaintiffs in the business of manufacturing, advertising, and selling pills by a par- AMERICAN TRADE MARK CASES. a8 Comstock v. White. ticular name or designation, and having induced the plaintiffs to expend large sums of money in advertising, etc., the pills so manufactured; and then suddenly and without notice, in an unjustifiable manner and apparently from improper motives, severed their connection with the plaintiffs and set up the same business for themselves : Held, that an injunction should be granted, restraining the defendants from using the name or designation used by the plaintiffs, in designating, marking, labeling, ad- vertising or selling the pills manufactured by the plaintiffs; and also restraining the defendants from using either of the labels or trade marks of the plaintiffs, or any other labels or trade marks, made so similar to the plaintiffs as would be calculated to deceive the public. If the pills are an innocent humbug, the defendants have no right to deprive the plain- tiffs of the reputation and customers which the plaintiffs’ money has been the means of acquiring for the pills and themselves ; especially as thé expenditure was in a great measure induced by the defendants. _Morion to dissolve injunction. The facts will sufficiently appear in the opinion of the court. SUTHERLAND, J. There is nothing in the papers submitted on this motion to show that the defendants, White & Moore, or either of them, individually or as partners, ever had, in fact, the exclusive right to compound, manufacture, and sell the pills called ‘“‘ Dr. Morse’s Indian Root Pills,” although it does appear from these papers that White & Moore, by the yellow labels or wrappers, used them around the pill boxes prior to the partner- ship between the plaintiffs and the defendant White, represented and advertised Moore as the proprietor of the pills, and stated that none could be genuine without the signature of A. B. Moore. Neither White nor Moore could have had this exclusive right of manufacture and sale without a patent from the government; and it is not to be presumed that the government had secured to either of them, or would secure to any one, an exclusive right to manufacture and sell these pills as a useful invention. The plaintiffs, therefore, did not and could not acquire from the defendants, White & Moore, or from either of them, an exclusive right to manufacture and sell these pills, either by the written agreement of the roth of August, 1855, between them 234 AMERICAN TRADE MARK CASES. Comstock v. White. and White, or by the written agreement subsequently entered into between the plaintiffs and White, as partners, and the de- fendant Moore; and as I find nothing in the papers to show that the plaintiffs have otherwise acquired, or now have this exclusive right of manufacture and sale, I conclude that they in fact have no exclusive right to manufacture and sell the pills. From aught I see, the defendants and all other persons have the same right, or as good right, as the plaintiffs, to mix or com- bine the chemical, mineral, or vegetable constituents composing these pills, round them into shape, advertise, and puff them as pills and a sovereign remedy for nearly all the ills that ‘‘ flesh is heir to.” Conceding that White, before entering into partnership with the plaintiffs, represented to them that he was the owner or pro- prietor of the pills, and that Moore represented himself to be the owner or proprietor in the written agreement between him and the plaintiffs and White, the plaintiffs must be presumed to have known the law; and they, therefore, had no right to under- stand or rely upon such representations, as meaning or affirming that either White or Moore had an exclusive right to manu- facture and sell the pills. Conceding, then, such representations to have been made by the defendants (White, however, denies that he made any such rep- representations), the fact of such representations having been made by the defendants to the plaintiffs would not author- ize the court to restrain the defendants from the mere manu- facture and sale of pills, because the plaintiffs had no right to rely on sych representations as affirming an exclusive right of manufacture and sale, If, therefore, there is any clause or provision in the injunction in this case as it now stands, which prohibits the defendants, or either of them, from manufacturing, advertising, or selling by any name, designation, or trade mark whatsoever, pills precisely like those manufactured and sold by the plaintiffs by the name of “Dr. Morse’s Indian Root Pill,” or pills composed of the same elementary constituents, the injunction must be so far modified or dissolved. AMERICAN TRADE MARK CASES. 235 Comstock v. White. I do not see why the defendants have not the same right to manufacture, advertise, and sell pills that the plaintiffs have. The material questions in this case are, whether the defend- ants have a right, as against the plaintiffs, in advertising and sell- ing the pills manufactured by them, to use the name or designa- tion, “ Dr. Morse’s Indian Root Pills,” or a trade mark, label, or wrapper, so much like that which the plaintiffs have used and are using, in advertising and selling pills manufactured by them, as to be likely to deceive the customers of the plaintiffs and others, and induce them to believe that they are buying pills made by the plaintiffs, when in fact they may be buying pills made by the defendants. It is very clear, too, that the injunction in this case, must be dissolved, or modified, so far as it restrains the defendants, or either of them, from using their own names, or the name of either, or the partnership name of A. J. White & Co., in the business of manufacturing, or in advertising, or selling these pills, or any other pills. It appears that the defendants are partners, and that the name of the firm is A. J. White & Co. I do not see upon what principle the defendants can be pro- hibited from using their own names, or the name of either, or the partnership name of A. J. White & Co. If the defendants have the right to make, advertise, and sell pills precisely like those made and sold by the plaintiffs, the de- fendants must havea right to use their own names, or the name of either, or the partnership name “A. J. White & Co.,” in the business of manufacturing, advertising, and selling them. The fact, that while the defendant White was in partnership with the plaintiffs in the business of making and selling the pills, the firm name was A. J. White & Co., does not appear to me to affect or impeach the right of the defendants, as partners in the same business, to use the same partnership name, such co- partnership between White and the plaintiffs having been dis- solved. Nor can I see how defendants, by their conduct or acts in severing their business connection with the plaintiffs, and in seizing and removing the property of the former firm of A. J. 236 AMERICAN TRADE MARK CASES. Comstock v. White. White & Co., however unjustifiable, could forfeit their right in forming the new partnership to use the same firm name. The remaining questions presented by this motion are questions of more difficulty. I think, however, after a careful consideration of al] the facts and circumstances of the case, and a careful examination of the very able briefs submitted by the counsel, and of most of the numerous cases cited by them, that the injunction in this case should be retained, and the motion to dissolve it should be de- nied, so far as it restrains the defendants, or either of them, from using the name or designation, ‘*Dr. Morse’s Indian Root Pills,” in designating, marking, labeling, advertising, or selling the pills manufactured by them. I think the plaintiffs have a right, as against the defendants, to the exclusive use of the name, designation, or trade mark, “ Dr. Morse’s Indian Root Pills,” in designating, marking, label- ing, advertising, or selling the pills manufactured by them I am careful to say, I think the plaintiffs have this exclusive right against the defendants, and I do not mean to say, or express an opinion, that they would have this exclusive right as against Dr. Rogers, if he is not really a fictitious person, or as against a stranger, who had never been in any way connected with either the plaintiffs or defendants in manufacturing and selling pills by that name or designation. I put my opinion on this point, on the special facts and cir- cumstances of this case; and particularly on the conduct or acts of the defendants, in connecting themselves with the plaintiffs in the business of manufacturing, advertising, and selling pills by such name or designation, inducing the plaintiffs to expend large sums of money in advertising and puffing, with all the verbose exaggerations which belong to the stereotyped quack literature of the day, the pills so manufactured; and then, in suddenly, without notice, in an unjustifiable manner, and apparently from improper motives, severing their connection with the plaintiffs, and setting up the same business of pill-making, pill-puffing, and pill-vending for themselves. I think, also, the injunction should be retained, so far as it restrains the defendants from using either AMERICAN TRADE MARK CASES. 237 Comstock v. White. of the Jabels or trade mark referred to in the complaint in this action, and annexed to it as exhibits “*C,” ‘*D,” and “F,” or any other label or trade mark, so much like these labels, or either of them, as to color of ground, vignette, name of pills, and gen- eral appearance, as to be likely to be easily mistaken for either of those Jabels. It appears that the plaintiffs, or the former firm of A. J. White & Co., composed of the plaintiffs and the defendant White, originated the labels or trade marks, C and D, with the excep- tion of the name of the pills thereon, and exclusively used them, or one of them, with the name of the pills thereon, during the time the defendants were connected with the plaintiffs, in the business of making and vending pills, and that the plaintiffs are now using D, It also appears that the defendants, after dissolving their con- nection with the plaintiffs in the way they did, commenced using the label or trade mark F, which has the name or designation “Dr. Morse’s Indian Root Pills,’ prominently thereon, and so closely resembles label D in vignette, color of ground, and in other particulars, as hardly to be distinguished from it. I look upon the questions between the parties, in this case, as questions of property, of money, of profit or loss. Both parties have a right to make the pills, and to advertise, puff, and sell them. Those who sell the most will make the most money ; but in this competition for humbugging the public (if pills are a humbug), the defendants have no right to deprive the plaintiffs of the reputation and customers which the plaintiffs’ money has been the means of acquiring for the pills and themselves, and the expenditure of which money was, in a great measure, in- duced by the defendants themselves. It does not appear that the pills are positively injurious; it is not to be believed that they have a tithe of the wonderful and benign curative or preventive capacity claimed for them in the eloquent pictorial advertisements of the parties, but it is not for defendants to say the plaintiffs are humbugging the public, and are, therefore, not entitled to any relief against them, when the defendants have been and still are engaged in the same work. 238 AMERICAN TRADE MARK CASES. Barrows v. Knight. As to the public: If these pills are an innocent humbug, by which both parties are trying to make money, I doubt whether it is my duty, on those questions of property, of right and wrong between the parties, to step outside of the case, and abridge the innocent individual liberty, which all’ persons must be presumed to have in common, of suffering themselves to be humbugged. The injunction must be modified in accordance with this opinion, without costs to either party on this motion. Barrows v. KNIGHT. Supreme Court of Rhode Island. Before all the Fustices, March, 1860, Reported, 6 R. I. 434. The name of “ Roger Williams Long Cloth” is capable of being appropriated by a manufacturer to cotton cloth of his manufacture, to distinguish it from cloth of the same general description manufactured by others; and if to the knowledge of the public, it be so appropriated by the plaintiff, a person who stamps the name of “ Roger Williams ” on his cloth of similar description, with the design and effect of fraudulently passing it upon the market as and for cloth manufactured by the plaintiff, to the lessening of the gains and credit as a manufacturer of the latter, is liable to him for the injury caused thereby. Demurrer to a declaration in case, for fraudulently imitating the plaintiff’s trade mark. The declaration was as follows: “Providence, Sc. Supreme Court, March Term, 1860. Cor- nelius Barrows, of Providence, in said county, manufacturer, . complains of Benjamin B. Knight, of Attleborough, in the State ‘of Massachusetts, and Robert Knight, 2d, of Cranston, in said county of Providence, copartners, doing business as manufactur- ers and bleachers in Providence, in said county, under the name and style of B. B. & R. Knight, summoned by the sheriff in an action of the case; for that the plaintiff, for a long space of time before, and at the time of committing the grievances hereinafter complained of, carried on the business of manufacturing cotton cloth, and made and sold for profit a large quantity of cotton AMERICAN TRADE MARK CASES. 239 Barrows v. Knight. cloths, which he was accustomed to mark with the words ‘‘ Roger Williams Long Cloth,’’ in order to denote that they were manu- factured by him, the plaintiff, and to distinguish them from goods of the same description manufactured by other persons. And the plaintiff says that he enjoyed great reputation with the public on account of the good quality of the said goods so manufactured by him, and made great gain by the sale of them; yet the said defendant, well knowing the premises, but wickedly, wrongfully, and unjustly intending to injure the plaintiff in his aforesaid business and sale of his goods, and to deprive him of the gain and profits he would otherwise acquire, to wit: on the first day of May, a. p. 1858, and on divers other days and times between that day and the day of the commencement of this suit, to wit: at Providence, did wrongfully, knowingly, injuriously, deceitfully, and fraudulently, against the will and without the license or consent of the plaintiff, mark and stamp, and caused to be marked and stamped, a great quantity of cotton cloth man- ufactured by them the defendants, and purchased and belonging to them the defendants, and bleached by them the defendants, with the words ‘*Rocer WILLIAMS,” in imitation of the said mark and stamp of the plaintiff, and in order to denote that the said cloth so manufactured by them the defendants, and so pur- chased and belonging to them, and bleached by them, was of the manufacture of the plaintiff; and did knowingly, wrongfully, and deceitfully, on the several days and times aforesaid, sell for their own lucre and gain the said cloth so manufactured, purchased, and bleached as aforesaid, and marked and stamped as aforesaid, as and for cloth of the manufacture of the plaintiff, whereby the plaintiff was prevented from selling a great quantity of cotton cloth manufactured by him, and thereby defrauded of great gain and profit which would otherwise have accrued to him from the sale thereof, and greatly injured in reputation; the said cloth so manufactured, purchased, bleached, and sold by the defendant, being greatly inferior to that manufactured by the plaintiff; to the damage of the plaintiff five thousand dollars as laid in his writ, dated the gth day of October, A.p.1859. Wherefore he sues, etc.” To this declaration there was a general demurrer and joinder. 240 AMERICAN TRADE MARK CASES. Barrows v. Knight. Markland, for the defendant: There are two objections to this declaration: it shows no trade mark, in the legal sense, adopted by the plaintiff, and no imitation of that which is set forth as the plaintiff’s trade mark, on the part of the defendant. First. The plaintiff has no right to appropriate the name “Roger Williams,” as descriptive of his cloth, so as to exclude the defendant from the use of it. It is not the plaintiff’s name, or the name of the article manufactured, nor is it symbolical of either; but a common name, merely, which the defendant has as much right to use as the plaintiff. Amoskeag Manufacturing Co. v. Spear, 2 Sand. 8. C. 599; Rogers v. LMasury, 17 Eng. L. & Eq. 83; Marsh v. Billings, 7 Cush. 322. The words “* Long Cloth,” employed by the plaintiff in connection with the name, does not help him; it is merely descriptive. Stokes v. Landgraff, 17 Barb. 608. Second. The mark used by the. defendant must so closely resemble that used by the plaintiff as to be calculated to deceive and to induce persons to believe the defendant’s goods to be of the plaintiff’s manufacture. Davis v. Kendall, 2 R. I. 566; Ames vy. King, 2 Gray, 379. There is no such resemblance between ‘“‘ Roger Williams,” used by the defendant, and “ Roger Williams Long Cloth,” claimed as his trade mark by the plain- tiff. To entitle him to go to the jury upon the question of imitation, the plaintiff should have framed his declaration spe- cially, as in Marsh v. Billings, 7 Cush. 322. Ina case of this sort the questions of fraud and injury, as appears from Davis v. Kendall, supra, are not open to inquiry, although the matter would not seem to be free from doubt. Flavell v. Harrison, 19 Eng. L. & Eq. 153 Taylor v. Carpenter, 2 Sand. Ch. R. 603, e seq; 2 Story’s Eq. Jurisp. g51a, and notes. If the questions of fraud and injury are not open, the allegations in the declaration, in that behalf, do not help the plaintiff to the jury. Hart, for the plaintiff: A manufacturer, by priority of appropriation, may acquire a property in any words, marks, figures, devices or symbols, designed AMERICAN TRADE MARK CASES, 241 Barrows v. Knight. to indicate the origin or ownership of the goods, or the particular place of business of the manufacturer, for the invasion of which an action for damages will lie. But in words, marks, etc., which indicate simply the name, nature, kind, or quality of the goods, no property can be acquired. Amoskeag Manufacturing Co. v. Spear, 2 Sand. 8. C. 5993 Coats v. Holbrook, 2 Sand. Ch. R. 586; Taylor v. Carpenter, 2 Sand. Ch. R. 603; Stokes v. Land- graff, 17 Barb. 608; Sykes v. Sykes, 3 B. & C. 541; Davis v. Kendall, 2 R. I. 566; 2 Hilliard on Torts, 206, et post, and cases cited. Though the imitation be only colorable or partial, if cal- culated or likely to deceive, an action will lie. Amoskeag Manu- facturing Co. v. Spear, 2 Sand. 8. C. 599; Partridge v. Menck, 2 Sand. Ch. R. 622; Davis v. Kendall, 2 R. I. 566; Coffeen v. Brunton, 4 McLean, 516. See also on this point 2 Hilliard on Torts, 207, 208; 2 Story’s Eq. Jurisp. (7th ed.) 258, 259, and cases cited. i Whether or not the alleged imitation is likely to deceive, is a question of fact for the jury. It is sufficient here if the decla- ration discloses a partial imitation. An examination of the cases where injunctions have been refused or actions not maintained, shows the mark to have been used to indicate the name, nature, kind, or quality of the articles, or where a manufacturer, selling an article under his own name, has sought to prevent the use of the name or title of the article by another person having the same name with himself. See Burgess v. Burgess, 17 Eng. L. & E. 257; Gillott v. Kettle, 3 Duer, 624; or where there has been some fraudulent representation on the part of the plaintiff, as in Pidding v. How, 8 Sim. 477; or Perry v. Truefitt, 6 Beav. 66; or Flavell v. Harrison, 19 Eng. L. & E. 151, cited by de- fendant’s counsel. Ames, C. J. 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. Indeed, such a concurrence 242 AMERICAN TRADE MARK CASES. Barrows v. Knight. of fraud and injury constitutes the most flagrant form of this species of wrong; and this court can with no justice be said. to have intimated the contrary, when it recognized in Davis v. Kendall, 2 R. I. 570, that equity would restrain the invasion of a trade mark as well when the consequence of mistake, as when contrived of fraud. The declaration before us charges the defendant with the worst form of this species of tort; that he knowingly and fraudulently stamped his goods with the words “ Roger Williams,” in imitation of the trade mark of the plain- tiff, in order to denote that they were manufactured by the latter, and knowingly and deceitfully sold his cloth, so stamped, as and for cloth manufactured by the plaintiff to the lessening of the plaintiff’s sales, and credit as a manufacturer of cotton cloth. It is argued, however, that the declaration does not set forth, in the name of ‘Roger Williams Long Cloth,” as applied by the plaintiff to distinguish cotton cloth manufactured by him, that which can legally be a trade mark; since it is neither the name of the plaintiff, nor descriptive of the nature or qualities of the article manufactured by him, nor is it symbolical of either. We are not aware of any legal restriction upon a manufacturer’s choice of a name for his trade mark, any more than of his choice of asymbol, so that the name be so far peculiar, as applied to manufactured goods, as to be capable of distinguishing, when known in the market, one manufacturer’s goods of a certain description from those of another. ‘ Roger Williams,” though the name of a famous person, long since dead, is, as applied to cotton cloth, a fancy name, as would be so applied, the names of Washington, Greene, Perry, or of any other heroes, living or dead, It is quite as peculiar and significant, in such an appli- cation, as *¢ Persian Thread,” ** Mexican Balm for Hair,” “ Veg- etable Pain-Killer,” ‘* Houqua’s Mixture,” for tea, or *“ Ethio- pian,” for stockings, or the numerous other fanciful names which have been treated as appropriate trade marks. Coats v. Holbrook, 2 Sand.Ch. R. 559, note of cases. Now, the declaration states that the plaintiff had Jong used this name, stamped upon his cot- ton cloth, to distinguish his cloth from cloth of the same descrip- AMERICAN TRADE MARK CASES, 243 Barrows v. Knight. tion manufactured by others, and enjoyed reputation with the public on account of the good quality of the goods by him man- ufactured, and made great gains by the sale of them. If this was so—and whether it was must be matter of proof to the jury—it is clear, that the defendant had no right to defraud him of his profits or good name, by falsely and deceitfully passing off his own goods for those of the plaintiff, whether by verbal misrepre- sentations, or by imitating any mark put upon them by the plain- tiff by which the public could, and were accustomed to, identify them. The declaration further alleges, in substance, that the defend- ant, well knowing the plaintiff’s said mark, and for the purpose and with the effect of such deception, did stamp the words, “ Roger Williams,” upon cotton cloth not manufactured by the plaintiff, and to his serious injury. Certainly under the rule, so well settled, that a partial imitation of a trade mark, if calculated to deceive, will support an action, this is a sufficient allegation of an invasion of the plaintiff’s rights. ‘The court can not, as a matter of Jaw, decide that such partial use of the designation of his goods appropriated by the plaintiff was not designed, cal- culated, and effectual to carry out the fraud charged, and must leave that, as well as the prior allegation, to be settled upon the evidence by the jury. The demurrer is, therefore, overruled; but under the senane ment of the parties, suggested at the argument, the defendant has leave to withdraw his demurrer without costs, and to plead over to the merits. 244 AMERICAN TRADE MARK CASES. Howe v. Searing. Howe v. SEARING. Superior Court of the City of New York. Before Horrman, Pierrepont, and Moncreir, JJ., General Term, March, 1860. Reported, Io Abb. Pr. R. 2643 6 Bos. 354, and 19 How. Pr. R. 14, The naked sale of the good-will of a business does not transfer a right to the use of the vender’s name of trade. After the sale of the business-stand and good-will, the vender, Howe, by agreement with his vendee, obtained the privilege of resuming the business at another stand, covenanting not in any manner to interfere with the business carried on at the former stand, known as “‘ Howe’s Bakery.” Held, that this was no recognition of the vendee’s claim to use Howe’s name, APPEAL from a judgment of special term. The action was brought by the plaintiff, a baker by trade, to restrain the defendant from designating the bakery establishment kept by him at No. 432 Broadway, in the city of New York, as “Howe’s Bakery,” and from otherwise using the name of Howe in the business, so as to induce the public to believe that the business carried on at 432 Broadway was conducted by the plaintiff. Upon the trial at special term, it was proved that about eight years ago the plaintiff was carrying on this business at 432 Broadway, and had done a large and lucrative business there, and, during all the time he carried on the business, the premises had been known by the name of ‘* Howe’s Bakery,” and that during that time they had gained great celebrity by that name; that about eight years ago Howe sold out his lease of the premi- ses, and all the stock, wagons, and fixtures used by him in the business, together with the “good-will” of the concern, to one Baker, and covenanted not to resume the same business in the city of New York without Baker’s consent; that Baker there- upon commenced the same business at the same place, keeping up the old signs, and continuing to use the name of Howe upon ‘ AMERICAN TRADE MARK CASES. 245 Howe v. Searing. S the wagons and bread-tickets, the same as his predecessor had done; that Howe at first assented to this use of his name in Baker’s business, but after the lapse of some time remonstrated in a friendly way against it; that subsequently, and shortly before the commencement of this suit, Howe, desiring to return to the business, bought of Baker the privilege of resuming the business at 850 Broadway, covenanting, however, in the agree- ment made, ‘not in any manner to interfere with the business carried on at No. 432 Broadway ‘“nown as Howe’s Bakery,” immediately after this agreement with Baker, Howe did resume his business of a baker at 850 Broadway, and has since con- tinued the same there; that Baker afterward sold out his lease, stock, wagons, fixtures, etc., used in the business at 432 Broad- way, to Searing, the defendant in this action, conveying to him all the rights acquired by Baker by his purchase from Howe, subject to Howe’s right to do business by virtue of the subse- quent agreement alluded to; that afterward the defendant con- tinued the same business at the old stand, and also continued the use of the name of Howe on the signs, wagons, bread-tickets, etc., used in connection with the business at 432 Broadway. It was also proved, on the trial, that the use of Howe’s name by the defendant, as stated, was calculated to mislead the public, and had induced persons to deal at 432 Broadway, under supposition that they were dealing with Howe, who would otherwise have dealt at Howe’s place. Judgment was rendered in favor of plaintiff, and a decree was entered in the action restraining the defendant from in any man- ner using Howe’s name in the business at 432 Broadway. From this judgment the defendant appealed to the general term. Luther R. Marsh, for the appellant: 1. The right to use Howe’s name passed to Baker and his assignees, by the conveyance to Baker in the original agreement, of the good-will of the concern. 2. By years of acquiescence in the use of the name by Baker, 246 AMERICAN TRADE MARK CASES. Howe v. Searing. Howe has estopped himself from disputing the right of Baker’s grantee to use it. 3. Howe’s recognition of the premises as ‘“‘ Howe’s Bakery,” in his subsequent agreement with Baker, is conclusive evidence of what Howe understood had passed, and intended should pass, by the conveyance of ‘‘ good-will.” Lawrence Worrall and Moses Ely, for the respondent. Horrman, J. The first and the most important question in the cause is, what right passed to Baker, under the sale and trans- fer to him, in January, 1852, of the leasehold premises, stock, and trade, with ‘‘the good-will of the business of baking, now or heretofore carried on by me in the city of New York.” The authorities do in general describe the good-will of a trade “Cas a probability that the old customers will resort to the old place.” Judge Story describes it as ‘“‘the advantage or benefit which is acquired by an establishment, beyond the mere value of the capital, stock, funds, or property employed therein, in consequence of the general public patronage which it receives from constant or habitual customers, on account of its local position or common celebrity or reputation for skill or affluence, or punctuality, or from accidental circumstances, or even from ancient partialities or prejudices. Story, sec. gg. It is, I apprehend, a well-settled rule that the good-will of a partnership business does not survive to a continuing partner. It belongs to the firm as much as the ordinary stock in trade, and must be disposed of in some manner for the benefit of the firm. The case of Lewis v. Langdon, 7 Sim. 421, which seems to assert a different rule, is not the law of the court on this point, for which it is frequently cited. Story on Partnership, sec. 99. But the decision turned upon the right to use the name of the old firm with a modification, and it is hereafter more particularly noticed, Hammond v. Douglass, 5 Ves. 539, does indeed explicitly - decide, that the good-will, speaking of it generally, does survive to the remaining partner; that a sale of it can not be compelled AMERICAN TRADE MARK CASES. 247 Howe v. Searing. by the representatives of the deceased partner; that it is not partnership stock of which the executor may compel a division, but belongs of right to the survivor. In the case of Dougherty v. Van Nostrand, 1 Hoff. Ch. R. 68, before me, as assistant vice-chancellor, I thought that this case could not be supported. I have acted at special term in this court on two cases, after a reconsideration of the point upon the same principle as in Dougherty v. Van Nostrand. Vice-Chancellor Sandford, in Wilkams v. Wilson, 4 Sand. Ch. R. 379, decided in’ the same manner, recognizing Dougherty v. Van Nostrand. Good-will resolves itself into reputation. That, in the ab- sence of proof to the contrary, or express agreement, must be presumed to have been the result of joint skill, capital, and in- dustry, when built up by the parties themselves ; or by a joint purchase, when it has been reared by a predecessor. As the acquisition was joint, the value must be shared. Mr. Bell, in his Commentaries, observes (vol. 2, p. 645,) that the good-will of a mercantile or literary establishment seems to form a part of the common stock. He cites Crawshay v. Collins, 15. Ves. 2273; Cruttwell v. Lye, 17 Ib. 3353 McCormick v..McCubben, 4th July, 1822, 1 Shaw & B. 540. Lord Eldon concurred in Sir Samuel Romilly’s doubt as to the decision in Hammond v. Douglass; and that is equivalent to an express overruling it. It was Lord Eldon’s manner of doing so, In the late case of AZcDonald v. Richardson, 1 Giffard, 81, be- fore Vice-Chancellor Stuart, this point seems to be taken for granted. A surviving partner had carried on the same business for some time after the death of his associate, and was called upon in the suit to account. The chief clerk was directed to ascertain the value of the testator’s share of the good-will of the partnership business, among other things. The survivor was also executor, but it is plain this could not be the ground of a charge. ; Chissum v. Dewes, 5 Russ. 29, settled, that the mortgagee of 248 AMERICAN TRADE MARK CASES. Howe v. Searing. a lease, under which the business was carried on, was entitled to receive the avails of the lease and good-will. The latter con- stituted the chief part of the value. The good-will of a trade, says Tindall, Ch. J., in Hitchcock v. Coker, 6 Adolph. & E. 438, 446, “tis a subject of value and price. It may be sold, bequeathed, or become assets in the hands of the personal representative of a trader. If the restric- tion as to time is held to be illegal, because extending beyond the period of the party carrying on the trade himself, the value of such good-will, considered in these various points of view, is altogether destroyed.” In Elves v. Crofts, 10 Com. B. 241, 1 J. Scott, a butcher assigned, for the residue of his term, premises in which he had carried on business, together with the fixtures and good-will of the trade. He covenanted that he would not, at any time there- after, either by himself, or as agent or journeyman for another, set up or be employed in the trade or business of a butcher, within five miles from the premises assigned. It was held not an unreasonable restraint in respect of time or distance, and that the covenant did not cease on the expiration of the term, or on the covenantee’s ceasing, by himself or his assigns, to carry on the business assigned. The court referred to Hitchcock v. Coker, ut supra, as decided in the Exchequer Chamber, and as settling that a restriction, reasonably limited as to space, but enduring for the life of the party restrained, was valid, as the only effectual mode of securing to the covenantee the full benefit of the good-will of his trade. *¢ Cases may be conceived in which, notwithstanding the facts found by the jury, that the covenantee had ceased, either on the premises or elsewhere, or by any assignee or licensee to carry on the business, the good-will assigned might not be at once extin- guished; and if consideration of time or degree be permitted to affect the right to enforce such covenant, its value would be diminished, and the salable quality of the good-will, which, according to all the recent authorities, is deserving protection, would be affected. It seems also to be well settled, that when a partnership is AMERICAN TRADE MARK CASES, 249 Howe ». Searing. dissolved, and there is no express stipulation upon the subject, the remaining partners are not under any obligation to refrain from settling up the same trade or business, and forming a new establishment for carrying on the same, after the sale of the late business. The master of the rolls stated this rule in Davies v. Hodgson, 25 Beav. 177, referring toCook v. Collingridge, as reported by Mr. Collyer, section 322. The first decree in that case is found in Jacob’s Reports, 623, and Mr. Collyer gives the directions of Lord Eldon, drawn by himself upon a petition for further carrying out the decree. These points may be deduced from the minute provisions of this decree. A partnership having terminated by lapse of time, there was nothing to prevent some of the members forming a new estab- lishment to carry on the same business. ‘That the good-will, treated as the value of the chance of customers continuing to deal, could not be estimated upon the same principles as when a retiring partner sold his whole interest to continuing partners, and retired from the trade altogether. A buyer of the premises, the leasehold, shop, etc., would purchase something which could not be treated as of no speculative value, or not to be regarded in the sale. He would get the chance of retaining the custom- ers—getting them to come to the old place; but this chance, and therefore the value, would be materially affected by the prob- ability of the customers following the former members to their new establishment. Nothing is found in this case as to the former name by con- tinuing partners, in any form, whether modified or not. In Lewis v. Langdon, 7 Sim. 421, before noticed, Stephen Brookman and Joshua Langdon carried on business under the firm of Brookman & Langdon. Brookman died, and then Lang- don died; the latter appointing William Langdon his executor and residuary legatee. He died, and administration was granted to Fruzan Langdon, his widow. The business was carried on at the same place and under the same firm name, by Joshua Langdon, William Langdon, and Fruzan Langdon in succession. Fruzan Langdon took the plaintiff, Lewis, into partnership. 250 AMERICAN TRADE MARK CASES. Howe v. Searing. Fruzan Langdon then died, having appointed Augustus Lang- don and two others her executors. James Lewis then took the plaintiff, Warren, into partnership, and they carried on the busi- ness at a different place from the original location, under the firm of James Lewis & Co., successors to Brookman & Lang- don. The bill was to restrain them from using that name in the business. There was an agreement in the case, which does not seem to me of much importance on the main question. The vice-chancellor said: “I can not but think, when two partners carry on a business together, under a given name, that, during the partnership, it is the joint right of them both to carry on the business under that name, and that upon the death of one of them, the right which they before had jointly, becomes the separate right of the survivor.” It is to be observed, upon this case, that the defendant had not a shadow of right to the use of the firm name. The plain- tiff had the right, so far as any existed in Joshua Langdon, as survivor of Brookman & Langdon. Had a representative of Brookman been defendant, the question would have distinctly arisen. In Clinton et al. v. Douglass, 1 H: R. N. Johns. 176, before Vice-Chancellor Wood, 1859, the business had been carried on for some time under the firm name of John Douglass & Co. By a written instrument, the defendant sold to the plaintiff “all his shares, rights, and interests in the trade or business carried on by him and the plaintiffs at Bradford, in copartnership, and under the firm of John Douglass & Co. and the good-will thereof.” Other and comprehensive words were used to transfer the whole of the partnership goods and property, and the assignor’s title therein. The defendant also leased to the plaintiff for seven years, the premises at which the business had been carried on. Notice of the dissolution of the old firm was given, and the style of the new firm was Clinton, Bankhart & Huet (late John Douglass & Co). The location of the old business was at Hall Jugs, Bradford. The defendant subsequently opened a store for the same busi- ness, next door to that of the plaintiff leased by him, and pla- AMERICAN TRADE MARK CASES, 251 Howe z. Searing. carded it with the name of John Douglass & Co. An injunction was granted, restraining the defendant, until the hearing of the cause, ‘“‘from resuming or carrying on the business of snuff- merchant, at or about the immediate neighborhood of Bradford, either alone or in partnership with any other person, under the style or firm of John Douglass & Co., or in any other manner holding out that he is carrying on the business of snuff-merchant, in continuation of or in succession to the business carried on by the late firm of John Douglass & Co.” The vice-chancellor enters into a very elaborate argument in the case. He holds expressly that the authorities are conclusive to the point, that the sale of the good-will of a business without more does not imply a contract, on the part of the vender, not to set up a similar business himself. Upon a sale of the good- will, the vender is not precluded from carrying on a precisely similar business, with all the advantages from his own labor and industry, and from the regard people may have for him; and that in the place next door, for example, to the very place where his former business was carried on. But he also held, that the name of a firm—that style under which its business has been carried on—is part of the good-will and passes with a sale. ‘* The name of a firm is a very impor- tant part of the good-will of the business carried on by the firm. A person says, I have always bought good articles at such a place of business; I know it by that name, and I send to the house of business identified by that name for that purpose. That the name is an important part of the good-will of a busi- ness is obvious, when we consider that there are at this moment large banking-houses, and brewing firms, and others in this me- tropolis, which do not contain a single member of the individual name exposed in the firm. The defendant ‘‘ parted with the right to the plaintiff of rep- resenting themselves to be carrying on the identical business, which had been carried on by the firm of John Douglass & Co. But they did not get the right to call themselves by that name simpliciter. This they had not claimed, but only to use the words, ‘late John Douglass & Co.;’ in other words, the right to 252 AMERICAN TRADE MARK CASES. Howe ». Searing. identify their house of business as the house of business formerly carried on by John Douglass & Company. That name had become well known. The business was identified by that name. It is not as if he were calling himself "ohn Doug/ass alone, and carry- ing ona similar business under that name.” The judgment in Cruttwell v. Lye, 17 Ves. 346, distinctly admits that, although you may set up a similar business, you are not entitled, when you have sold the good-will of the business, to represent that you are continuing the identical business; not to say that you are the owner of that which you have sold. The defendant has not contracted against setting up business in oppo- sition to the business sold by him to the plaintiff; but he must set it up fairly and distinctly as a separate’ business, and not as the old-established business which he has sold. : I have quoted largely from this case as none other that I am aware of has entered so fully into the subject. In Cruttwell v. Lye, referred to, 17 Ves. 346, Lord Eldon said: “©The question is, whether, upon a fair understanding or repre- sentation agreeably to the fact, this person is carrying on ‘the plaintiff’s trade, and in this view of the case I refer to Hogg v. Kirby, 8 Ves. 215, where the defendant had a clear right to pub- lish a similar work, under the same title, as the plaintiffs, repre- sented as distinct and original, but was prevented from publishing his book as the work of the plaintiff which had been partly pub- lished. So there can be no doubt that the court would interpose against that sort of fraud which is attempted by setting up the same trade, in the same place, under the same sign or name, the party giving himself out as the same person.” The law of France, in relation at least to commercial partner- ships, is very explicit upon this subject. The 21st article of the Code of Commerce is, ‘‘ The name of the associates can alone constitute the firm name (/a raison sociale), This is intended to forbid persons who succeed to the business of a deceased mer- chant from continuing it under his name. Credit is altogether personal. It does not transmit itself by cession or inheritance. It is won by actions and capacity. It is not right, then, that a. successor should avail himself of a fallacious credit in appropri- AMERICAN TRADE MARK CASTS, 253 Howe v. Searing. ating a firm’s name extinguished by the death of one of those who gave it the value. Troplong: le Droit Civil, tome 12, n. 372. Loi sur I’ article 21 of the Code of Commerce. M. Troplong adds, ‘t One is astonished that such a contrary practice prevailed formerly in France, and exists in England. It is a source of fraud upon a confiding public. The retirement or decease of one of the associates effaces the firm’s name. Another must be created.” Thus does the case stand upon all the authorities that I have found bearing upon it ; and it would leave it without any direct authority, or even dictum, in favor of the defendant, except that late and important case before Vice-Chancellor Wood. But it is to be noticed that, by a statute of our State, entitled ‘fan act to prevent persons from transacting business under fictitious names,’ passed April 29, 1833 (Laws of 1833, ch. 28r), it is enacted, that, “No person shall hereafter transact business in the name of a partner (guere, person) not interested in his firm;” and where the designation ‘‘and Company,” or “ Co.,” is used, it “¢shall represent an actual partner or partners.” By section 2, the violation of this provision is made a misde- meanor. By a statute passed April 17, 1854, Laws of 1854, ch. 400, a copartnership name may be continued by some or any of the copartners, their assignees or appointees, provided a cer- tificate, as prescribed by the act, is filed in the county clerk’s office, and published as directed. But by section 4, the provis- ions are only to apply to firms having business relations with foreign countries. A bill to extend this provision is now before the legislature.’ It seems to me that the principle and object of the statute extends to such a case as the one before us. It recognizes the principle as one of public policy, that the business must be trans- acted under the name of the actual parties doing it, and not under other names. It applies to persons in existence, as well as when a partner has retired or is dead. It accords with the French law, and involves or warrants the proposition, that the , 254 AMERICAN TRADE MARK CASES. Howe v. Searing. naked sale of the good-will of a business does not transfer a right to the use of the vender’s name of trade. : We do not think that there is anything in Howe’s inaction, or the employment of term of Howe’s Bakery, in the instrument of the 28th day of April, 1858, which can entitle the defendants to use the name. The judgment below must be affirmed, with costs. PIERREPONT, J., concurred. MoncrtEF, J., dissenting. Whether or not the term, “ good- will,’ under all circumstances, includes the name under which the business originated, or was continued, or became a thing of specific value, is not, in the present instance, necessary to de- termine. A person not a lawyer would not imagine that when the “© good-will”? and trade of a retail shop were sold, the vender might, the next day, set up a shop within a few doors, and draw off all the customers. The ‘‘ good-will” of such a shop, in good faith and understanding, must mean all the benefit of the trade, and not merely a benefit of which the vender might, the next day, deprive the vendee. This was the language used by the vice-chancellor, in 2 Madd. Ch. R. 188, 219, in which the decision of Lord Eldon, 17 Ves. 346, was cited, and in reply to the proposition there laid down, ‘‘ that good-will was the proba- bility that the old customers will resort to the old place.” Story defines ‘‘ good-will” to be the advantage or benefit ac- quired by an establishment, beyond the mere capital or value of its stock, in consequence of the general public patronage and en- couragement which it receives from constant or habitual cus- tomers, on account of its local position, or common celebrity, or reputation for skill and affluence, or punctuality, or from the ac- cidental circumstances or necessities, or even from ancient par- tialities or prejudices. Courts of equity are frequently called upon to interpose and prevent a person from using the name of another in a business or concern, for the fraudulent purpose of imposing on the public, AMERICAN TRADE MARK CASES. 255 Howe ». Searing. and supplanting the other in the good-will of his concern. 3 Kent, 5th ed. 64, note; 2 Kern. 313; 6 Beav. 72; 8 Paige, 75; 4 Ib. 479; 2 Barb. Ch. R. ror; 2 Sand. Ch. R. 617; affirm- ing Taylor v. Carpenter, per Spencer, Senator. The plaintiff adopted, appropriated, and used the words or ’ and by that name his establishment became known, and was extensively patronized, and was a thing having specific value. The plaintiff so avers in his complaint. If the plaintiff, previous to the transfer, in 1852, to Baker, the assignor of the defendant, had sought the aid of equity to restrain a person, of the same surname, engaged in the same business in the city of New York, from using the words, ‘‘ Howe’s Bakery,” the claim would have rested, not upon any exclusive right of the plaintiff to appropriate and monopolize these words, the one be- ing peculiar to neither, and truthful as to both, and the other a generic term not capable of appropriation, but that the word had been long used by him, and had become known as indicating ar- ticles manufactured or made at, or vended from his establish- ment or place of business. The ground of interposition is, that a name having been taken for the purpose of distinguishing prop- erty, the defendant is not permitted, on the false representation that articles, really the defendant’s, belong to, or were made, or sold under the management of the plaintiff, or came from his place of business, thereby depriving the plaintiff of the fair prof- its of his business. name, ‘ Howe’s Bakery,’ The name or words, ‘* Howe’s Bakery,’ was nothing but a trade mark, and, as such, is now sought to be protected by the plaintiff. The name or trade mark passed by the assignment and trans- fer of the “ good-will,” and if it was not the thing itself, it was an integral part of it. The contract of the parties leaves no room for conjecture as to their intention. The stock in trade, fixtures, etc., were specifically mentioned ; the leases were distinctly set forth; the art and mystery of the business was provided for by an express coyenant, to teach whomsoever the vendee might select; and lastly, not least, after 256 AMERICAN TRADE MARK CASES. Howe vz. Searing. agreeing for the sale of the ‘‘ good-will,” it was stipulated that the vender, plaintiff, should not directly or indirectly engage or be connected in the same business, in the city of New York, without the consent of the vendee, Baker. Again, this clear understanding of the ‘parties, and this con- struction of their agreement, is definitely fixed by the long ac- quiescence of the vender, and by his requesting and obtaining leave to commence the business at a particular place, and use the name within those bounds. It seems to me the statute has no application to the case un- der consideration; the title clearly indicates the intent to pre- vent mischief by the use of a fraudulent, because entirely ficti- tious designation, the word ‘*Co.,” with no physical existence to represent it. The name ‘“‘ Howe” had a physical existence to support it. It was not, therefore, fictitious. The name ‘“‘ Howe” required nothing to sustain it. As a trade mark, it is immaterial whether it was the name of animate or inanimate creation, or the purest effort of fancy, on the part: of its originator; possibly the more original in its character, the better would be the protection offered to it—the nearer it ap- proach to the right to be patented. The plaintiff can not avail himself of the statute, even if it did apply. Having agreed to dispose, and actually conveying the thing alleged to be prohib- ited, it does not lie with him to complain of his own violation of law, or a fraudulent representation to his vendee. No such point was taken by the plaintiff upon the argument of the appeal. The plaintiff might dispose of his credit. That is nothing more than a reputable name or character, and its influence. The injunction should have been refused, and the complaint dismissed. The judgment of the special term should be reversed, etc. AMERICAN TRADE MARK CASES. 257 Colladay o. Baird. Cotiapay v. Barrb. Court of Common Pleas of the County of Philadelphia. Before Luvuow, . J., 1860. Reported, 4 Phila. 139. A person who has appropriated to himself a particular label, sign, or trade mark, indi- cating that a certain article is made or sold by him or his authority, and with which label or trade mark the article has become identified, is entitled to the pro- tection of a court of equity, which will enjoin any one who attempts to pirate upon the good-will of his friends or customers by using such label, sign, or trade mark without his authority. But there must be, between the genuine and fictitious marks, such general similarity or resemblance of form, color, symbols, designs, and such identity of words and their arrangement, as to have a direct tendency of misleading buyers who exercise the usual amount of prudence and caution; and there must also be such a distinctive individuality in the mark employed by the counterfeiter as to procure for him the benefit of the deception resulting from the general resemblance between the genu- ine and counterfeit labels or trade marks, THE facts appear in the opinion. Luptow, J. The complainant, in his bill, alleges that he is the manufacturer of a certain style of goods known in the mar- ket as “Araminco CHEcK;” that, at great labor, care, and expense, he has been able to produce a superior article, which he now manufactures and sells in large quantities, especially in the city of New York; that in the year 1854, he devised and adopted a certain trade mark, or name, to wit: the words ‘“Ara- mingo Mills,’ and that he caused tickets, or labels, bearing the said trade mark, to be lithographed and printed. These labels, or tickets, the complainant used, by placing one of them on the outside of each piece of goods forwarded, to market for sale; and thus the trade mark became identified with the goods manufac- tured by the complainant, although his name does not appear upon the label as manufacturer. The complainant further alleges, that tne defendant, intending to deprive him of the 258 AMERICAN TRADE MARK CASES. Colladay v. Baird. exclusive use and benefit of his trade mark, cunningly devised a label upon which the words “Aramingo Mills” appear; and thus, by a colorable artifice succeeded in defrauding him of a portion of his well-earned reputation and profit, having introduced an article of check into the New York market, and sold the same, in appearance similar, but in fact inferior to the article manufac- tured by him, the complainant. 7 The defendant declares that true it is that the goods so manu- factured are so made at a place called the “Aramingo Mills,” but that these mills have long been known by that name, and that the complainant has no exclusive right to the use of the name as a trade mark; that the defendant also manufactures his goods at the same establishment, being in fact the lessor of the complainant; he further denies that he ever, in any way, in- tended or did introduce his goods into the market by a fraudulent device; and that, although upon the label now used by him the words “Aramingo Mills” appear, yet that he has a perfect right to use them, especially as he intends to succeed in business by his own name and fame as a manufacturer, and has, therefore, among other things, inserted his name in full upon the label. This brief statement of the bill filed, and the affidavits pre- sented, will enable us clearly to understand the true principle involved in this case, and while we have been unable to discover, in print, any adjudged case of authority in Pennsylvania, yet the subject is not new, and has repeatedly received the attentive consideration of jurists both in this country and in England. The principle has been firmly established that while a manufac- turer-has no copyright in a label, he yet may adopt a‘trade mark, which so far becomes his own property as to entitle him to the protection of courts of law and of equity. In Partridge v. Menck, 2 Sand. Ch. R. 622, the principle is stated, and we think accurately, thus: ‘©The court proceeds upon the ground that a complainant has a valuable interest in the good-will of his trade or business, and having appropriated to himself a particular label, sign, or trade mark, indicating that the article is made or sold by him or by his authority, or that he carries on business at a particular place, he AMERICAN TRADE MARK CASES. 259 Colladay v. Baird. is entitled to protection against one who attempts to pirate upon the good-will of his friends or customers, or the patrons of his trade or business, by using such label, sign, or trade mark, with- out his consent or authority. The leading English cases at law and in equity upon this sub- ject will be found collected in a note to Coats v. Holbrosk, 2 Sand. Ch. R. 599; also Clement v. Maddick, 16 Leg. Intg. 236. While in Taylor v. Carpenter, decided by Judge Story, and said to be badly reported, in 7 Law Reg. 437; in Coats v. Hol- brook, Taylor v. Carpenter (a New York case), Partridge v. Menck, as also in Coffeen v. Brunton, 4 McLean, 516, Howard v. Henriques, 3 Sand. 8. C. 725, where the name of a hotel was treated as a trade mark, Davis v. Kendall, 11 Am. L. Reg. 680, Dayton v. Wilkes, 16 Leg. Int. 292, Coats v. Piatte, 19 Leg. Int. 213, will be found the leading American views upon this subject down to a recent period of time, and which fully sustain the principle which we have heretofore stated. While the general principle is thus established, a difficulty frequently arises in determining the particular circumstances of each case; or, as in this instance, in determining how far one may use a name adopted by another as a trade mark, and yet not con- flict with his legal or equitable rights. It may be remarked, in general, that while an imitation or fac simile, or a mere colorable artifice, will bring the offending party clearly within the rule, no decision has ever yet declared the right of a manufacturer to be absolute in a name as a name merely; it is only when that name is printed in a particular manner upon a particular label, and thus becomes identified with a particular style of goods, or when a name is used by a defend- ant in connection with his place of business (and not his manu- factured goods), under such circumstances as to deceive the public and rob another of his individuality, and thus destroy his fame and injure his profits [see Howard v. Henriques, 3 Sand. S. C. 725, a case which will be hereafter commented upon], that it becomes a trade mark, or in the nature of a trade mark, and as such entitles its possessor or proprietor to the protection of courts of justice. Hence the true rule to test the question of 260 AMERICAN TRADE MARK CASES. Colladay v. Baird. the piratical use of a name is not simply to discover that a name has been used in a particular manner by a defendant, but to determine how far the use of it, in the manner said to be piratical, has either in fact deceived the public or is calculated to deceive persons of ordinary intelligence. In Croft v. Day, 7 Beav.«88, the master of the rolls lays down the following rules: 1. There must be such a general resemblance of forms, words, symbols, and accompaniments as to mislead the public. 2. A sufficient distinctive individuality must be presented so as to procure for the person himself the benefit of that deception which general resemblance is calculated to produce. The vice-chancellor, in Partridge v. Menck, 2 Sand. Ch. R. 624, applies the following tests : 1. The court will not interfere when ordinary attention will enable purchasers to discriminate. 2. It must appear that the ordinary mass of purchasers, pay- ing that attention which such persons usually do in buying the article in question, would probably be deceived. ' These principles run through all the cases, so that while one, who ignorantly or by design uses an imitation or fac simile of the trade mark of another, is within the rule, so also is that defendant who employs a colorable artifice not, strictly speaking, a fac simile or imitation. And to this last point, see Coffeen v. Brunton, 4 McLean, above cited. Let us now apply these principles and tests to the case in hand. ‘The label of complainant is printed upon paper of a pinkish hue, bearing at the top thereof in large capitals, and in a semi- circular form, the words: ARAMINGO MILLS. Immediately beneath these words is a circular vignette, sup- ported upon each side by two oval vignettes; below, in large capitals, is the words ‘“‘CHEecKks” and * WaRRANTED,” and then in small capitals, “‘Inpico Brug.” AMERICAN TRADE MARK CASES. 261 Colladay v. Baird. The label of defendant is printed upon paper of a “ buff ” tint, with a fanciful and deep pink border, within which, in an oval space, the following words are printed and arranged thus; SUPERIOR DOMESTIC POWER LOOM GOODS, Manufactured by WirtiiaM Bairp, At Aramingo Mills, Franxrorp, Pa, Warranted Fast Colors. The words “ar ARaminco Mitts,” are printed in small capitals. The most casual observer will at once discover that these two labels differ in many important particulars. The label of complainant is nearly one-third larger than that of defendant; the color of the ink used is different, as well as the size of the letters; the one has three distinct vignettes, the other none whatever; the words upon each of the labels, except the two, “ Aramingo Mills,” are different; the most ignorant person must at once, at a glance, detect these differences so far as they relate to the general appearance of the labels—even the objectionable words themselves present marked features which can not escape the observation of any one. In the complain- ant’s label they strike the eye at once, because they are printed, as we before said, in large capitals, at the top of the label and in black ink ; while in the defendant’s they are introduced near the end in small capitals, of a pinkish tint, and, although distinct, present no striking peculiarities. The label of the defendant can not be said to be in any sense an imitation or fac simile of that of complainant; nor can it be said to be even a colorable imitation, device, or artifice. If, then, we sustain the present motion, we are driven to the posi- tion that the mere use of the words “ Aramingo Mills” upon the label of defendant renders him liable for the piratical appro- priation of a trade mark. 262 AMERICAN TRADE MARK CASES. Colladay 2. Baird. That the legal effect of such a position would be doubtful appears, we think, by an application of the principles and tests heretofore referred to in this opinion. If, from: abundant caution, we were disposed to adopt a most liberal doctrine—one radical in its practical operation—and grant this motion, a particular reference to a few of the adjudged cases, presenting facts most strongly in favor of the complain- ant’s views, will convince us that the decision would be one of doubtful propriety. In Partridge vy. Menck, the name “ A. Golsh” was the valuable portion of the label, because the friction matches made by him had acquired an extensive reputation with the trade as ‘* Golsh’s Matches,” and although it appeared that the defendant had printed, certainly upon one of the labels used by him, this same name, but in connection with the words “‘ late chemist for,” in small capitals, yet the vice-chancellor dissolved the injunction upon the ground that a purchaser seeking for the Golsh match would at once, upon reading the label, discover the difference between the maker of that and any other article. The chancel- lor upon appeal affirmed this decision. So in Spottiswood v. Clarke, an English case, reported in 2 Sand Ch. R.. 638, the lord chancellor dissolved an injunction which the vice-chancellor had granted, with liberty to the plaintiff to bring an action at law,-where the plaintiff in the case was the owner of a publication called ‘* The Pictorial Al- manac,” and the defendant of one called ‘* Old Moore’s Family Pictorial Almanac,” although the covers of each book were to a certain extent similar, both being decorated with a pictorial rep- resentation of the Observatory at Greenwich, and in the title, as printed on the cover, making use of nearly the same expres- sions. The two strongest cases which can be cited in favor of the complainant, are Coffeen v. Brunton, 4 McLean, 516, and Howard v. Henriques, 3 Sand. S.C. 725. In each of these the princi- ples applicable to the subject under consideration were carried much further than in any other of the adjudged cases. In the first the plaintiff insisted upon his right to the use of the name AMERICAN TRADE MARK CASES. 263 Colladay v. Baird. “Chinese Liniment,” and that his right had been interfered with by one who printed the words “¢ Ohio Liniment” upon his label. Judge McLean granted the injunction, but upon the ground that ‘‘ from the body of the label and of the directions for the use of the medicine, it is clear that the language of the defendant so assimilated to that of the plaintiff as to appear to be the same medicine, the alterations being only colorable.” This case is clearly distinguishable from the present; here the differ- ences between the two labels as to the words *“‘ Aramingo Mills” are such as to guard the purchaser, In Howard v. Henriques, the court went one step further, and declared that the proprietor of a hotel, called the ‘‘ Irving House ” or “¢ Irving Hotel,” had—although the name did not ap- pear upon the building—such a right to it as to secure the protec- tion of the court against one who endeavored to use it in con- nection with and upon his place of business. This case, strong as it is, can, we think, easily be distinguished from the present, The “ Irving House” or ** Hotel” became identified with a particular building ; here the goods are identified, not with the ‘¢ mills ”’—that is the building—but with the label bearing the words “t Aramingo Mills.” They are known in the market by the label, and the label alone. Besides, while the principles established before the decision in Howard v. Henriques may have been correctly extended to meet that case, yet, in weighing its authority, it ought not to be forgotten that the cir- cumstances attending it were peculiar, for the name in dispute was that of a hotel, and although not displayed upon any partic- ular part of the building, was, asa matter of fact, as well known as the “ City Hall” or the ‘ Trinity Church,” and the as- sumption of the name under the circumstances was a palpable fraud, and so considered by the court. In the omnibus case, Knott v. Morgan, 2 Keen, 213, the de- vice was clearly colorable, for, in addition to the fact that the omnibuses bore the same external decorations, the carriages were named ‘* The London Conveyance Company,” and “* The Lon- don Conveyancer Company,” an artifice well calculated to de- Ceive a transient traveler. 264 AMERICAN TRADE MARK CASES. Colladay v. Baird. In conclusion, having endeavored to show that this case does not fall within the principle applied to cases involving the use of a trade mark by means of an imitation, fac simile, or colorable artifice, and which relate to personal property, to manufactured articles, and to such things as are necessarily movable, we might refuse this motion, because the complainant puts his case upon the ground that he has been injured by the piratical use of his Jabel; willing, however, to go further, and grant the relief sought, if the facts established required it, we have examined the law upon the question of the use of a name merely, and for the purpose of illustrating the principle we have cited at length the leading cases upon the subject. The result of this examina- tion has been to lead the mindtoa serious doubt. This doubt has been strengthened from a knowledge of the fact that the defend- ant manufactures his goods at the “‘ Aramingo Mills,” or in an establishment occupied by the complainant, and which, for some years, has been known by that name. Without, therefore, deciding the question (which is also a matter of doubt) as to the real intention of the defendant in using the objectionable words upon his label, in the present state of the law, we are not prepared to say absolutely that the use of the name printed as it in fact is upon defendant’s label is a violation of the law; we must, therefore, adopt the judicious course pointed out in Partridge v. Menck, and Spottiswood v. Clarke, and leaving the complainant to maintain his right by an action at law, refuse to grant this motion. The motion for a special injunction is refused. AMERICAN TRADE MARK CASES. 265 Corwin v. Daly. Corwin v. Daty. Superior Court of the City of New York. Before Pierrerony and Ros- ERTSON, J J., General Term, Fune, 1860. Reported, 7 Bos. 222. 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, ownership, or place of manufacture or sale, but merely its quality, kind, texture, composition, utility, destined use or class of consumers, or some other attribute which it has in common with other similar commodities. So held in regard to the designation of gin by the term ‘Club House,” it being es- tablished that such name had been long in use as designating a superior kind of gin used in such establishments. There may be an exclusive right in names expressing qualities or attributes where form- ing part of a device peculiar to the manufacturer or vender of the article. Whether the right of using a trade mark, adopted by a dealer to indicate his own commodities, can be transferred to another so as to enable the latter to restrain a third person who has previously used the same trade mark, from continuing its use, and whether the appropriation of such device as a trade mark can be contin- ued forever by constant assignments of it, guere ? The employment of particular words or insignia, as a trade mark, must be confined to the place where they are used, and its exportation to other places can not interfere with the right acquired by others previously using them in such places, AppEAL by John T. Daly and William H. Daly, the defend- ants, from a judgment at special term, substantially ordering the defendants to desist from the use of the words, ‘* Club House,” as a prefix to designate gin sold by them. The plain- tiffs are William S. Corwin and Albert Webb. The facts, as they appeared on the trial, from the evidence, pleadings, and ad- missions, were as follows : Certain distillers manufactured, before the year 1857, at Rot- terdam, in Holland, a certain kind of gin, fora Mr. William S. Campbell, to be imported by him into the United States, and branded the casks containing it with the words, “Cius House,” 266 AMERICAN TRADE MARK CASES. Corwin v. Daly, and the letters W. S. C., which were the initials of his name. He, on its arrival in this country, drew it off into square glass flasks, holding somewhat less than a quart, and having thereon a dark paper label, with the words ‘‘ CLus House Gin” thereon, in gilded letters. These flasks were put up in wooden boxes, painted green outside, with the words, ‘‘ Club House Gin,” and over them the letters W. S. C., which are also the initials of one of the plaintiffs, in white paint. In 1857, Campbell transferred to the plaintiffs all his right to the gin, with the marks on the vessels containing it. The defendants also bottle gin imported by. them, in square flasks similar to those used by the plaintiffs, but having the words, “Crus House, 7 TZ. Daly,” blown on one of their shoulders, and a white paper label, with the words, ‘* Lonpon Crus House Gin, sole importer, Wm. H. Daly,” printed in black thereon. Such flasks are put up in unpainted wooden boxes, nearly of the same size as those used by the plaintiffs, with the words ‘* London Club House Gin,” painted in black on the outside. The plaintiffs, after the defendants had the words before men- tioned blown on their flasks, imitated it by having the initials W. S.C. and the words “ Club House Gin,’ blown on theirs. They also, after the defendants had exported their gin to Cali- fornia, with the marks and in the vessels already described, fol- lowed them, by exporting their gin, and there advertising it as the only true “¢ Club House Gin.” No insignia, devices, or means are alleged in the complaint to have been used by the defendants, to mislead any one or injure the plaintiffs, other than those already stated. One witness testified that the words ‘“‘Club House,” as ap- plied to articles of merchandise, had been used to designate those of superior quality, for twenty years, in Dublin and London. Another, that they had been applied to gin. And a third, that “London Club” had been applied to the same article for several years past, and all concurred in the opinion that it was a name for mere quality. No intent, by the defendants, to use the title, “ Club House,” AMERICAN TRADE MARK CASES. 267 Corwin v. Daly. to induce any one to believe their gin the same as that of the plaintiffs, or the use of any other means for that purpose, was contained in the finding of facts. The plaintiffs alleged in their complaint that, in Rotterdam, there existed associations called clubs, and that.gin, similar to that manufactured there and imported by them, was consumed in the houses occupied by such clubs, where the best articles of the kind were generally believed to be consumed. The evidence showed that the defendants only shipped their gin to and sold it in California, and that the plaintiff followed them into that market, after the former had sold it there, with the title of “ Club House Gin.” E. H. Owen, for plaintiffs and respondents. FP. H. Upton, for defendants and appellants. Rosertson, J. The sole remedy sought by and allowed to the plaintiffs in this case seems to have been the right of exclu- sive employment of the words, ‘*Club House,” to designate their gin, and the defendants were not restrained from using any particular devices accompanying them, or any particular mode of printing, painting, branding, or carving them, on any vessel containing them; or any labels or signs indicating what the com- modity was, or where sold. Their offense, if any, therefore, was in using such names to express the commodity sold. They were not prohibited from their use, as a penalty for selling their article as that of the plaintiffs, because there was no evidence of any oral or written representation, or artifice, used by the defend- ants to pass their gin off as the plaintiffs’ except the title, “* Club House,” and the charge in the complaint to that effect is not sus- tained, except by that evidence. The color of the labels and of the letters on them, on the flasks—the color of the boxes, and of the letters on them—are entirely different. The names on the flasks were first blown there by the defendants; they added to the name of the article, both on the flasks and boxes, that of one of the defendants, and prefixed the name, “‘ London,” to the name 268 AMERICAN TRADE MARK CASES. Corwin w. Daly. on the box. There could be no pretense that the most casual and ignorant observer would not discriminate the articles, much less persons who knew what they were going to buy, Crawshay v. Thompson, 4 Man. & G. 357; Snowden v. Noah, Hopk. 347; Bell v. Locke, 8 Paige, 75; and, therefore, as I shall presently show, the plaintiffs are not entitled to any relief. No fraudulent intent in the use of the title, “Club House,” is charged in the complaint, proved by the evidence, or found by the court. The decision must, therefore, have rested exclusively on the ground either that a plaintiff having made use of a title to designate his: wares, no one else has a right to use the same to designate similar wares, or that the subsequent use by such other person of such title is in law or fact a representation that his wares are the same. There is, also, no finding by the court, whether the addition of ‘*London,” or the defendants’ names, was not sufficient to distinguish them, which has been held to be fatal to a claim of the same kind, Snowden v. Noah, Bell v. Locke, ubi sup., Perry v. Truefitt, 6 Beav. 73; and, therefore, I must assume that they were taken as matter of law not to be sufficient. The right of a plaintiff to the exclusive use of a name, of course, can only grow out of the principle that the subsequent use of it, by an- other, amounts to a representation that his wares are the same. Of course it will not be contended, that if he has confined its use to a particular commodity, ke can prevent it being applied to others of a different kind. Such a copyright in a name would be more extensive and durable than those granted by authority of the Federal constitution, although its grant by the courts of a state might somewhat trespass upon the exclusive powers of the General government. Gibbons v. Ogden, 9 Wheat. 1. Courts have upheld rights to devices, although, as I think, contrary to the spirit and even letter of that instrument. The origin of the favor shown to trade marks was the protection of the public, and not merely the individual dealer. The first case containing this doctrine reported, on which all the others seemed to depend, is found in a note of Doddridge, J., to the case of Southern v. How, Popham, 143, and Cro. Jac. 471, and referred to by Lord Hard- AMERICAN TRADE MARK CASES. 269 Corwin v. Daly. wicke, in Blanchard v. Hill, 2 Atk. 484, and then the action was brought by a purchaser. In Blanchard v. Hill, Lord Hard- wicke makes the right of action grow out of the fraudulent de- sign both of putting off an inferior article, and drawing away customers ; he possibly may have meant that either was sufficient, and that both were not necessary. The doctrine was recognized as law by Lord Mansfield, in Singleton v. Bolton, 3 Doug. 393, and enforced in Sykes v. Sykes, 3 Barn. & C. 541, and thoroughly sifted and defined in the elaborate and important case of Craw- shay v. Thompson, ui sup. In that case a bold attempt was made to make the defendant liable for the use of trade marks, without reference to his intention, but it was thoroughly canvassed and rejected by the entire bench; so that, at common law, an action will not lie without proof of an intent to deceive, and it is by no means clearly settled that courts of equity will interfere with- out some evidence of fraud. They operate by their remedial powers to prevent the continuance of a wrong, and reach the past action of the offender by converting him into a trustee for the injured party; so that now, even though the article sold with the simulated mark be equally good with the genuine, the owner of the latter is entitled to preventive relief, although the public may not have been the sufferer. It seems impossible now to discover the first assumption of this jurisdiction, or its reasons. Every reported case in courts of equity, however, that IT have been able to find, recognizes, as I construe them, two princi- ples: First, the necessity of an intent to injure the originator of the trade mark, by passing off the wares of the offender as those of the former; and, secondly, that if the trade mark consists of words, they must indicate ownership and origin, and not merely other attributes, such as quality, kind, texture, composition, util- ity, destined use, or class of consumers. ‘The encouragement of this exclusive use of a word, not indicating ownership or ori- gin, as a name of anything, is not a matter of public policy; no great ingenuity or powers of invention are taxed or stimulated thereby. The injury to the public, by the mysterious fascina- tion of far-fetched or high-sounding names and strange devices, investing a worthless commodity with the charms of an unknown 270 AMERICAN TRADE MARK CASES. Corwin v. Daly. origin and pompous title, is, generally, greater than any benefit to those who first adopt it. It is somewhat singular that an ar- ticle only known as the product of a particular person’s skill and labor, and for its excellence as such, rises more slowly in popu- lar favor than those dignified by fanciful names, suggested by a capricious fancy or barbarous taste, and often concealing even baneful compositions, although, when risen, it remains longer stationary. Courts of equity, I think, have not undertaken to sustain any such result by the principles adopted by them, but repudiate any exclusive right to mere epithets. In almost every one of a series of cases decided by the able master of the rolls, Lord Langdale, he repeats the principles reg- ulating the use of words as part of a trade mark. ‘Thus parties were restrained by him, in Perry v. Truefitt, ubi sup., in the use of a name, from “‘attracting custom which would have other- wise gone to the person first using it.” iIn Knott v. Morgan, 2 Keen, 219, he stated that the plaintiff could ‘ zot have any exclusive property in mere words used as a title,” and held the only question to be, whether the defendant imitated insignia as well as a title. He drew the distinction be- tween the abuse of a name as an instrument of fraud, and its proper use, in Croft v. Day, 7 Beav. 74, and distinctly repudi- ated any exclusive right to the use of aname. His very words were: ‘The right which any person may have to the protec- tion of this court does not depend upon any exclusive right which he may be supposed to have to a particular name or form of words. His right is to be protected against fraud, and fraud may be practiced by means of a name, though the person practicing it may have a perfect right to use that name, provided be does not accompany its use with such other circumstances as to effect a fraud upon others.” Inthe case of Perry v. Truefitt, in volume 6, Id. 73, the same learned judge exhibited dissatisfaction with AZi//- ington v. Fox, 3 My). & Cr. 338, which he seems to have sup- posed went to the extent of prohibiting the adoption of a mark, by which the goods of another are designated, if it prejudice the trade of the latter, without regard to the intent of such use, or the circumstances accompanying it, which doctrine was AMERICAN TRADE MARK CASES. 271 Corwin v. Daly. repudiated in Crawshay v. Thompson, He remarked, no other case had gone that length; but it will be found, on examination, no such doctrine was sustained in the case of Millington v. Fox, ubi sup. The same doctrine, as to the use of words, is laid down by the learned vice-chancellor of England (Sir W. Page Wood), in The Collins Co. v. Cowen, 3 Kay & J. 428; in a few lines he expresses the whole law of trade marks by names. He says: “¢ There is no such thing as property in a trade mark as an abstract name, It isthe right which a person has to use a certain name for articles which he has manufactured, so that he may prevent another person from using it, because the mark or name denotes that articles so marked were manufactured by a certain person, and no one else can have the right to put the same name upon his goods, and thus represent them to have been manufactured by the person whose mark it is.” This principle will be found not to have been swerved from in any case, whatever additional means may have been adopted to perpetuate a fraud. The same principle has been adhered to in our own courts. In Partridge v. Menck, 2 Sand. Ch. R. 622, Walworth, Chan., confined the character of the name which was to be a trade mark to one “‘indicating the manufacture and sale of the article by the party injured, or that he carries on his trade at a particular place.” In The Amoskeag Manufacturing Company v. Spear, 2 Sand. S. C. 599, the late lamented chief justice of this court, said : “ The owner of a trade mark has no right to an exclusive use of any words, letters, figures, or symbols, which have «vo relation to the origin or ownership of the goods, and are only meant to indicate their quality. He has no right to appropriate a sign or symbol which, from the nature of the fact it is meant to signify, others may employ with equal truth, and therefore have an equal right to employ for the same purpose.” In Fetridge v. Wells, 4 Abb. Pr. R. 144, the same learned judge in this court, recog- nizes the same principle, that ‘a name can only be protected as a trade mark when it is used merely as indicating the true origin and ownership of the article.” In Stokes v. Landgraff, 17 Barb. 608, the Supreme Court of this State held, that mo prop- erty could be acquired in words, marks, or devices, which do not 272 AMERICAN TRADE MARK CASES. Corwin v. Daly. denote the goods or property, or particular place of business of a per- son.” In the case of Burnett v. Phalon, recently decided by Justice Pierrepont, in this court, he holds distinctly, that “Sa man- ufacturer can not acquire property in words known to the lan- guage, and in common use, to designate things or their quali- ties.’ The court, in Thompson v. Winchester, 19 Pick. 254, went so far as to refuse to prohibit the defendant from using the plaintiff’s own name when it appeared to have come, by use, to signify an article generally, and not its mere origin or ownership. The doctrine of The Amaskeag Manufacturing Company v. Spear, ubi sup., is fully upheld in this court, in the case of Williams v. Fobnson, 2 Bos. 1, and an injunction was refused, unless the trade mark designated the plaintiff's manufacture. The cases stated are sufficient to show the strong current of authority, al- though others might be added. A host of cases are appealed to as holding an opposite doctrine, all of which, on examination, will be found fully to concede that already laid down. Among these are Kuott v. Morgan, ubi sup., already referred to; Hine v. Lart, 10 Lond. Jur. 106; Gout v. Aleploglu, 1 Chit. Gen. Pr. 721; S. C. 6 Beav. 69, n., and 7 Am. Jur. 277; Perry v. Truefitt, ubi sup.; Millington v. . Fox, ubi sup.; Coffeen v. Brunton, 4 McLean, 517; Brooklyn White Lead Co. v. Masury, 25 Barb. 416; Clement v. Madaicks, 22 Law R. 4283 Spottiswoad vy. Clark, 10 Lond, Jur. 1048, cited in 2 Sand. Ch. 628; Christy v. Murphy, 12 How. Pr. R. 773 Taylor v. Carpenter, 3 Story, 458; Pierce v. Franks, 122 Law J., cited in 2 Sand. Ch. R. 600; Stone v. Carlan, 13 Law R. 360; and lastly, Howard v. Henriques, 3 Sand. S. C. 375, in this court; yet all of these contain distinctive features of their own which sustain the decisions as consistent with the principle already alluded to. Thus, the word “ Ethiopian,” which was the trade mark in Hine v. Lart, was printed in a curved form, in Egyptian char- acters, in a particular shade of a dark color, with certain rings of the same color above and below it, upon black stockings. The only difference between the original and imitation was the shade of color, The injunction was given against the use af the AMERICAN TRADE MARK CASES. aire Corwin w. Daly. wevice, not the word “‘ Ethiopian.” The Turkish word for war- ranted, Pessendede, with the initials R. G. above it, a crescent and other devices, being the trade mark imitated in Gowt v. Aleploglu, the injunction was against using the device, not the words. An injunction was refused in Perry v. Truefitt, among other things, because every word in ‘Medicated Mexican Balm,” which was the trade mark, was perfectly capable of being applied to a different composition, besides other grounds. The baptismal name of one of the plaintiffs, which was also the first name in their firm, was branded on their iron when sold, as a trade mark, in AZillington v, Fox, 3 Myln. & Cr. 338, and an injunction was granted, although the article had acquired in the trade, by long usage, such name as its title, although originally a proper name; in that respect hostile to the case of Thompson v. Winchester, ubi sup. The circumstance of the name being that of the plaintiffs seems to have been overlooked by Lord Lang- dale, in Perry v. Truefitt, ubi sup., when expressing his dissatis- faction with the case of Millington v. Fox. But costs were refused in that case because the defendant had not been guilty of any intentional wrong. In Coffeen v. Brunton, 4 McLean, 517, the names were entirely different, one being the “ Ohio,” and the other the “ Chinese ” liniment ; but the body of the label and the directions for their use, were printed alike, and other means used to deceive the unwary into the belief they were the same article. The injunc- tion was only against the use of similar labels, nothing being said about the names. These last two cases are cited in Fetridge v. Merchant, 4 Abb. Pr. R. 156, as authority for a proposition contained in it, which, on a close examination, they will be found not to sustain. The plaintiff's own name, with a colorable alteration, was printed in the Brooklyn White Lead Co. v. Masury. The injunc- tion in Clement v. Maddick was confined to a colorable imitation of the style of printing the names. In Spottiswood v. Clark, the injunction was dissolved, the use of the same title only being complained of. The plaintiff’s own name had been used in Christy v. Murphy. The form or mode of branding, imprinting, 274 AMERICAN TRADE MARK CASES. Corwin v. Daly. or using the name, was taken as part of the trade mark ia Taylor v. Carpenter, and Pierce v. Franks. The case of Stone v. Carlan, like that of Kyott v. Morgan, ubi sup., turned upon the mode of painting the names on the sides of carriages. None of the cases so enumerated, therefore, impugn the doc- trine that names having a definite and established meaning in the language which do not indicate ownership or origin, or something equivalent, can not be appropriated by one.so as to €xclude sim- ilar use by others. They also steer clear of the principle adopted in Burnett v. Phalon, which was that letters, Jike other devices, may be combined to form a trade mark, even although they form a pronounceable word; provided they do not form a word indicating, in its ordinary sense, an attribute of the article not equivalent to ownership or origin. With that limitation, the proposition in Fetridge v. Merchant, ubi sup., that a name may be given “to an article or compound, every ingredient or por- tion of which is open to the use of every one, but the sale of which, under that appellation, is not lawful to any other person but the giver,” is sound; otherwise, the doctrine of that case is directly opposed to the case immediately preceding it, in the same book, Fetridge v. Wells, 4 Abb. Pr. R. 144, which has been already quoted. The only remaining case to be examined, if it be a case of trade mark at all, is that of Howard v. Henriques, 3 Sand. S. C. 725, in this court. In that case, the plaintiff had for a long time kept an inn in high repute, called the Irving Hotel. The de- fendant started a rival establishment with the same name. In that case the name used did not designate any attribute of the hotel; it did not intimate that it was better or worse, in a good’ or bad situation, frequented by respectable people or suspected characters, well or ill kept, much or little frequented, cheap or dear; it might have been either under the same name. It would seem, also, that the defendant employed the name to entice cus- tomers to his house, as being that of the plaintiff, and made it an instrument of deceit. It was not even laid down in that case generally, that the adoption of a name for a hotel, excluded all others from adopting the same name. Such a principle would AMERICAN TRADE MARK CASES. 275 Corwin v. Daly. be a blow to giving charitable and other institutions, even muni- cipal towns and private individuals, names borne by others, for fear of interfering with their business. Such a privilege can not be acquired at common law 4s a copyright; it could hardly be acquired in equity by an injunction against invaders. If it could, the namé of everything in the language might be appropriated so as to deter every one from using an epithet for his wares, lest he should be invading some prior right. The energetic, fair, and open competition of commerce should not be so cramped, or the novel but dull use of a name be confounded with the hard- earned reputation of the wares themselves, if sold, known, and distinguished by the name of the maker or dealer. The term ‘Club House” does not indicate ownership or origin, and does signify some other attribute, as quality or kind, as distinguished by the nature of the place of its consumption or class of consumers. The title was suggested, as the plaintiffs themselves allege, by the existence in the city where the article was manufactured, of associations called clubs, whose places of meeting were termed ‘Club Houses,” where the best articles of the kind were really, or believed to be consumed ; and it was undoubtedly adopted to indicate a high degree of excellence. The evidence in this case shows the constant use, for a quarter of a century, of these words to indicate a superior quality, in- cluding the article in question (gin), being in fact the natural result of the high standard required in such institutions. It meant no more than royal, imperial, or princely would do. The general rule is against appropriating mere words as a trade mark. The exception is of those indicating ownership or | origin, having no reference to quality or use. The words in question come directly within the definition in Amoskeag Manu- facturing Company v. Spear before cited. They are but “a sym- bol, which, from the nature of the fact they are used to signify, others might employ with equal truth, and therefore have an equal right to employ for the same purpose,” and no better test could be used. Can any one say they have no idea of the char- acter claimed for the gin by the use of the words in question; and they only imagine them to express that it was made by some 276 AMERICAN TRADE MARK CASES. Corwin v, Daly. particular person? The moment the straightforward and simple mode of indicating ownership by the owner’s name is abandoned, the burden is thrown upon the complaining party of showing that the designation used does not mean something relating to the quality of the article or some other attribute. A title indicating anything untrue in the composition of a com- modity can not be protected asatrade mark. Fetridge v. Wells, 4 Abb. Pr. R. 144. The title in this case would be untrue if intended to indicate origin, and would only be justifiable as in- dicating quality. One of the findings in this case is, that the name employed did not indicate origin or ownership, without initials or names. As the use of the name was not found, as a question of fact, to be with bad intent, it must have been inno- cent; and at least no costs or damages should be allowed against the defendants under the decision of Millington v. Fox, ubi supra. The plaintiffs, however, seem to base their claim somewhat on the grant to them of the use of the trade mark by their assignor, and the contract of the latter with the distillers in Holland. Neither the Rotterdam manufacturers nor Mr. Campbell, of course, could grant any rights they could not acquire themselves; and neither of them could alter the meaning or efficiency of the word ‘“*Club House.” The use of the term might be equally innocent, or equally a medium of imposition, no matter by how many persons in succession it might have been used. Were it a mere question of priority of use, the length of time, openness and continuity of that might have some bearing upon it. But it is doubtful if the right of using a mere trade mark, by itself, can be transferred ke a copyright, so as to make wares not yet in existence the subject of them, and the injury to an assignee of it, greater or less by the use of it by others. The imitation, of a trade mark is entirely a personal injury; it is merely passing off the wares of the imitator as being those of the party injured. I do not see how his borrowing or purchasing the supposed right to use a certain mark to designate his wares can make the offense greater or less. Still less do I see how the relinquishment by the assignor of his trade mark, and the dealing in particular wares, although in favor of a certain person, can prevent the AMERICAN TRADE MARK CASES. 277 Corwin v. Daly. rest of the world from using that trade mark to distinguish their wares. On the other hand, although a name has been used by any one as a trade mark, and is susceptible of being used as such, its previous employment by him, when abandoned, does not prevent any one else from employing it to designate their wares. It is wholly immaterial how long or how much a word has been employed as a trade mark. The employer of it can neither give any special right to another, nor abandon it to the community so as forever to take away the right of employing it to designate his wares. If he can, the first use of the trade mark gives a common law perpetual copyright to it. If that exists in this case, it must be in the tradesmen in London and Dublin, who applied the term ‘* Club House ” to superior arti- cles, and particularly to those who applied it to gin, as testified to by the witnesses. But the question arises, what do the plaintiffs intend by ‘ Club House?” If it means only gin manufactured by the distillers at Rotterdam, then it includes all they make ; and they may equally give the right of using the trade mark to any one. If it means all they make of the kind imported by Mr. Campbell, then he must join in the permission to use it; or if it means that im- ported by the plaintiffs, they must create it as their own trade mark, and then it is proved to have been a designation well known for twenty years. But if “* Club House”? could be and was the plaintiffs’ trade mark, the defendants seem to have used every precaution to pre- vent their commodities from being confounded. The differences already pointed out in the vessels in which they were sold, and the additions to the title, were amply sufficient under the author- ity of the cases cited. Had the question been submitted to a jury which was submitted in Crawshay v. Thompson, ubi sup., there can be no doubt what the result would have been. Moreover, the defendants’ wares are intended for, shipped to, and circulate in the California market alone, where only re- cently the plaintiffs have followed them. Of course, the latter can not claim their trade mark to be prior in time there; they - 278 AMERICAN TRADE MARK CA‘.,” and had engraved plates and blocks for striking off such labels. In 1838, T. assigned the letters patent, together with his business and good-will, and the right to use the plates, labels, etc., and the name of “ 7. & Cy,” to S. In 1839, S. became bankrupt. His assignees carried on the trade till 1841, when APPENDIX. 667 Edelsten v. Edelsten. they agreed to assign the business, patent, plates, labels, etc., and the right to use the name of “ 7.& Cy.,” to E., the plaintiff, who ever since carried on the business accordingly, and used the said labels. In 1853, E. discovered that V., the defendant, was using labels in palpable imitation of the plaintiff’s. It was held, first, that E. was entitled to restrain such palpa- ble imitation by V. Secondly, that E was not disentitled to sue by reason that the representations on his labels were no longer accurate, although the pins were not now protected by patent, nor manufactured strictly according to the patent, nor exclusively or at all by T., who had long since retired. Thirdly, that V. was not to be precluded altogether from representing that his pins were manufactured according to T.’s patent (now expired), but he was not to do so in a manner liable to mislead. EpeELstTrEn v. EDELSTEN. Court of Appeals in Chancery, Fanuary, 1863. Reported, 1 De G., F. & 8. 185. Tue facts of the case were that the plaintiff, who was a wire manufacturer at Warrington, with a view of distinguishing his wire from that of other manufactures, in the year 1852, adopted as a trade mark an anchor on the metal labels, called ‘ tallies,” which were attached to each bundle of wire sent into the mar- ket by the plaintiff’s firm. For this reason the plaintiff’s wire acquired the name of the ‘‘anchor brand wire,” by which it has since been generally known to the trade. It appeared that in consequence of certain wire saved from the wreck of a ship named the Versailles, having come to the hands of the plaintiff, on the tallies of which wire was an anchor surmounted by a crown, inquiries were made, which resulted in the discovery that the wire so branded had been manufactured and sold by the de- fendants, who carried on business as wire manufacturers at Bir- ‘ 668 APPENDIX. Hall v. Barrows. mingham, under the name of “ Edelsten, Williams & Edelsten.” The plaintiff complained of the use by the defendants of the ‘brand of a crown and an anchor as being a colorable imitation of his trade mark, and, after considerable correspondence, filed this bill to restrain them from using such brand, and also prayed that an account might be taken of the profits made by the defendants since they had adopted it. The vice-chancellor made a decree in conformity with the prayer of the bill, which was affirmed on appeal, with costs. Hatt v. Barrows, Rolls Court, March, 1863. Reported, 10 ‘fur. N: 8. 55. A suIT was instituted by the plaintiffs as the executors of one Hall for the account of a partnership in certain iron works car- ried on by him and the defendant Barrows, The business of the firm was very extensive, and they marked upon the iron manufactured and sold by them a trade mark, consisting of the letters B. B. H. surmounted by a crown, which was in use by them when Hall, the testator, died. The interests of the parties in the works, and in the land on which the works stood were the same, and the profits and losses were equally divided between them. The works had been known as the Bloomfield Iron-works, and in 1826 the partners who conducted them were three persons of the name of Bradley, Barrows, and Hall, who used the above trade mark, which consisted of the three initial letters of the firm, and that trade mark was continued by the succeeding ‘firm of Bramah, Barrows & Hall, and on Bramah’s death by the late partners, Barrows and Hall, It was held that the said trade mark could properly be sold with the works; that it constituted a part of the partnership assets, and should be so treated. APPENDIX. 669 Batty v. Hill—McAndrew ». Bassett. Batty v. Hitt. V.C. Wooas Court, May, 1863. Reported, 8 L. T. R. N. 8.791. An exhibitor at the International Exhibition of 1862 ob- tained the prize medal for excellence in pickles and preserved fruits, in which he was a dealer, and had since always placed labels on his bottles, inscribed with the words “ Prize Medal, 1862.” Another tradesman, who had not been an exhibitor, but dealt in articles of a similar kind, placed labels on his bottles with a precisely similar inscription. It was held that the first tradesman had no exclusive right to the use of the words ‘* Prize Medal, 1862.” McAnprew wv. Bassett. Vice-Chancellor Wood’s Court, May, 1863. Reported, 10 Fur. N.S. 550. The exclusive right established to the use of a trade mark, although consisting of the name of a foreign province from which the raw material for the manufactured article was procured, and from which other persons might also procure similar ma- terial in the raw or manufactured state. The use of a trade mark for the period of about six weeks, during which it had be- come known in the market, held sufficient to confer an exclusive right thereto. M. in August commenced selling sticks of liquorice of new manufacture, marked “ Anatolia.” On the 13th of September, some of the goods so marked were sent to B., with a request that he would make up liquorice in the same form and with the same stamp. Liquorice-juice had long been imported from Anatolia, but no one before M. had used the word “Anatolia” as a mark. Held, by one of the vice-chancellors, and af firmed on appeal, that the word ‘* Anatolia ” might be used as a trade mark, and that M. had acquired sufficient property in it to entitle him to an injunction against B. 670 APPENDIX. McAndrew v. Bassett. Tue Lorp Cuancettor. I have no difficulty with regard to the order to be made. But before stating the principle of the order I will shortly recapitulate the facts, as they are proved be- fore me, and about which there is in reality no dispute. The plaintiffs are large manufacturers of liquorice. They appear to have completed their manufactory some time in the month of July, 1861. They immediately began to manufacture liquorice upon a large scale. In the month of August, 1861, they sent to a warehouseman, in London, a large quantity of this liquorice, which they had stamped with the word ‘* Anatolia,’ as a dis- tinguishing mark of a particular kind by way of contradistinction from other kinds of liquorice; they sent, I say, a large quantity of that liquorice to a warehouseman in London. At some time in August (the exact date does not appear), a case of that liquorice so stamped, containing a considerable quantity, was delivered by the warehouseman to a trader of the name of Johnston. By Johnston it would appear to have been distributed among retail dealers ; that is a fact not directly proved, but is to be immedi- ately inferred from what is proved, because it appears by a letter of the 13th of September, produced by the defendants, that certain druggists in Skinner street, Euston road, in the parish of St. Pancras, were possessed as vendible articles of part of the liquorice marked with the word “ Anatolia.” It is stated by the defendants that they obtained that liquorice from a person of the name of Edwards, a fruit-dealer. Edwards makes no affidavit, but as there has been no attempt on the part of the defendants to show that at this time there was any other manu- facturer of liquorice stamping it with the word ‘ Anatolia,” besides the plaintiffs, in the market, I must of course infer that the articles which Voile & Co, had for sale were articles of the plaintiff’s manufacture. Then, on the 13th of September, an order is sent to the defendants for 5% cwt. of this description of liquorice, and the order contains an express direction that it shall be stampted ‘* Anatolia,” and part of the goods manufac- tured by the plaintiffs is sent with the letter to the defendants asa sample. Now, the letter does not stop there, but it con- cludes in these words: ** There are large buyers, and this is APPENDIX. 671 McAndrew ». Bassett. only a sample order—much wanted.” From that letter I am bound to infer that the article had become known in the market. Upon comparison of this article with the sticks previously ex- isting and produced to me, of which I take this marked ‘‘ So- lazzi’’ as an example, there can be no doubt with regard to its superiority in fineness. The letter, however, coming from the defendants, addressed to the defendants by their own customers, is abundant evidence of the fact that the article was known in the market, and also of the fact that the person who gave the defendants the order anticipated that much more would be re- quired. Upon receiving that order it appears that the defend- ants immediately caused a stamp to be prepared for the pur- pose, exactly imitating the stamp on the article sent to them, and that they continued to use that stamp, substituting it for the stamps that they had previously used in their manufacture. There can be no doubt, therefore, that whether knowingly or not they became imitators of the articles sent to them, there can be no doubt that they desired that their goods so manufac- tured should for the future be received in the market upon the footing of that sample article which had been sent to them, I have been much pressed by the d2fendants’ counsel to de- clare that there was not sufficient time between the termination of the month of July and the 13th of September foilowing for the plaintiffs to acquire a right of property in this particular trade mark. The substance of the argument of the defendants is this, that, supposing the court interferes upon the ground of property in a trade mark, that property must be regarded as the offspring of such an antecedent user as will be sufficient to have acquired for the article stamped general notoriety and reputation in the market, and that the property can not be held to exist until the fact of that general user, that notoriety, and that public reputa- tion has been proved to exist. Now I am by no means driven to the necessity of determining when, for the first time, property may be said to be established in a trade mark. The elements of the right to that property may be represented as being the fact of the article being in the market as a vendible article, with 672 APPENDIX. McAndrew v. Bassett. that stamp or trade mark, at the time when the defendants imi- tate it. The essential qualities for constituting that property probably would be found to be no other than these: First, that the mark has been applied by the plaintiffs properly—that is to say, that they have not copied any other person’s mark, and that the mark does not involve any false representation; secondly, that the article so marked is actually a vendible article in the market ; and, thirdly, that the defendants, knowing that to be so, have imitated the mark for the purpose of passing in the market other articles of a similar description. Now I have all those qualities and all those requisites in the case before me. The letter of the 13th of September abundantly proves that the plaintiffs’ manu- facture was known and was uponthe market. The letter of the 13th of September is pregnant with proof that it was accepted in the market as an improved manufacture, and was an article likely to be in demand, The letter of the 13th of September is abundant proof that the defendants imitated the mark in order that their own manufactures might come into the market, and plainly, as they must have known, for the purpose of competing with the article so marked that previously was there. It is im- possible, therefore, to say that a case so circumstanced has not, all the elements of the cases that require the interposition of this court. There is the deliberate imitation of the mark previously existing in the market. The thing is done in order that the rival articles of the defendants’ manufacture may be brought into the market in rivalry with that which is there. Therefore, there is not one single thing necessary for the interposition of the court which is wanting on the present occasion—there is nothing want- ing in the case. Now, [ am told that the defendants were unwilling to contest the right of the plaintiffs. Undoubtedly, when they knowingly imitated the mark they knew there was that mark, and they in- tentionally imitated it. At that time they probably were not aware that it was the mark of the plaintiffs. But if a man finds an article sent to him from the market bearing a stamp, and he intentionally appropriates that stamp, and thenceforth uses it for APPENDIX. 673 McAndrew v. Bassett. the purpose of designating his own article, laying aside the mark that he had previously used, and appropriating that which he ought to have inferred was the property of another, he must take the consequences. If, upon the first notification of their having done wrong to the plaintiffs, the defendants had offered to give up the practice, had entered into an engagement for that pur- pose, and had not contested the plaintiffs’ right, the question of their being liable to the costs of the suit would, of course, have deserved much consideration. But upon being served with no- tice of the plaintiffs’ right, and of the fact of their imitation of it, the course that they think proper to take is to come into court and contest the plaintiffs’ title to the interposition of the court. The result, therefore, is, that the whole of the costs of the suit which they have thought proper to defend and oppose as an un- grounded suit must fall upon the defendants, who have been in the wrong. I am told that this word ‘ Anatolia,” being a general expres- sion—being in point of fact the geographical designation of a whole country—is a word common to all, and that in it there- fore there can be no property. That is nothing in the world more than a repetition of the fallacy which I have frequently had occasion to expose. Property in the word for all purposes can not exist; but prop- erty in that word as applied by way of stamp upon a stick of liquorice does exist the moment the liquorice goes into the mar- det so stamped and obtains acceptance and reputation in the market, whereby the stamp gets currency as an indication of superior quality or of some other circumstances that render the article so stamped acceptable to the public. All these, as I have already said, are undoubtedly found in the present state of things. I am undoubtedly warranted in ascribing to the thing stamped the circumstance of its having value by the very terms of the letter which first introduced it to the defendants, and which was the reason of the defendants adopting it. The fact of its adop- tion by the defendants is itself pregnant with proof that they re- garded it as a thing desirable to be done. They thenceforth use it in preference to what they previously used, and the reason is 674 APPENDIX. Braham v. Bustard. 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. I think the vice-chancellor arrived at a very correct conclu- sion in the matter, and I shall dismiss the appeal with costs. Brauam v. Bustarp. V. C. Wood's Court, August, 1863. Reported,g L. T.R. N.S, 199. Tue plaintiffs were soap manufacturers and made a white soft soap, which was ‘put up in jars or casks, on which labels were fixed, stamped with an ornamental border, and other devices; the words, “ The Excelsior White Soft Soap,’ being the principal part of the trade mark, which also contained the names of the plaintiffs as manufacturers of the article. The defendants were manufacturing chemists, at Manchester, and used labels which contained these words: ‘ Bustard and Co., Excelsior White Soft Soap Works, Collyburst, Manchester,” and there were some other points of resemblance to the plaintiffs’ ‘label, although the intent to deceive was not obvious, except in ‘the use of the words. It was held that the plaintiffs were entitled to the exclusive ‘use of the words ‘* The Excelsior White Soft Soap,” and that the word ‘* Excelsior” was the proper subject of a trade mark. APPENDIX. 675 = Moet v. Couston—Harrison v. Taylor, Moet v. Couston. Rol?'s Court, May, 1864. Reported, 10 L. T. R. N. 8. 395. Parties who had innocently bought and sold as genuine an article which was in fact spurious, were restrained from selling it with the plaintiff’s trade mark, but were not ordered to account for the profits they had made, nor compelled to pay the plaintiff’s costs, The master of the rolls said, substantially, that the right to an injunction usually carries with it the right to costs; but if a plaintiff asks for the costs and for something more than he is entitled to, he will lose the costs he might otherwise have re- ceived. Harrison v. Tay.or. V. C. Wood's Court, Fanuary, 1865. Reported, 11 Fur. N. 8. 408. Injunction granted to restrain the use of the plaintiff’s trade mark by the defendants, though the scienter was not proved, but an account of profits refused on the ground of delay by the plaintiffs in commencing the suit. Tuis was a suit to restrain the Messrs. Taylor Brothers from infringing the trade mark of the plaintiffs, the Messrs. Harrison, to distinguish the mustard prepared and sold by them. The trade mark was adopted by the plaintiffs in 1858, and consisted of the figure of an ox, on which was printed the word “ Durham,” the word Harrison’s being printed above the animal, and the word ‘¢ mustard ” below it. At the Great Exhibition of 1862, the plaintiffs exhibited their mustard, and obtained an award of ‘ honorable mention,” of which they afterward added a notice on their labels. 676 APPENDIX. | Harrison v. Taylor. In May, 1863, the defendants affixed to their canisters and tins of mustard labels containing, as a trade mark, the figure of an ox, in form and attitude like that used by the plaintiff, but without the word ‘“‘ Durham,” and with the name “Taylor” substituted for ‘* Harrison.” The defendants’ label also con- tained the words, “‘ First prize and medal,” printed above the fig- ure of the ox, and below it the words, ‘In any class, Exhibition, 1862.” After the passing of the Exhibition Medals Act, in July, 1863, 26 and 27 Vict., c. 119 (which imposes a penalty on persons who make false representations with respect to grants of medals and certificates by the exhibition commissioners), the de- fendants altered their labels, by adding the word “ox” after the word: “‘ medal,” and changing “exhibition” into “exhibited.” The following explanation of the defendants’ labels was given by an advertising agent named Kennedy. He stated that the defendants, having consulted him as to their advertisements, and as to the choice of a trade mark, allusion was made in conver- sation to the “ bull’s head” used in the same trade by Messrs. Colman, and it was suggested that a better mark would be the whole of an animal. Afterward, in December, 1862, Kennedy went to the cattle show at Islington, where he saw Mr. John Overman’s “prize and medal ox in any class,” and over the animal a picture of it, and the idea occurred to him that this prize ox would serve as a trade mark for the defendants’ mustard. Kennedy accordingly bought the picture and resold it to the defendants, who had copies made of it on a reduced scale, the words, ‘First prize and medal in any class, Exhibition, 1862,” being added, as above described. The defendants and Kennedy deposed that they knew nothing of the plaintiffs’ trade mark in an “ox”? label, or of his honora- ble mention in the Exhibition of 1862, until August, 1863, when it was found that the plaintiffs knew that the defendants were issuing show cards of the above character, and cautioned them not to do so. The plaintiffs, however, did not commence the present suit until May, 1864, and the defense now was delay, and that there APPENDIX. 677 Harrison v. Taylor. had been no infringement, as the plaintiffs’ mark consisted in the combination of the picture of the animal with their own names, and that the really distinctive part of the mark on which cus- tomers in the trade relied was the maker’s name only, though there was some evidence that the plaintiffs’ mustard had been asked for as ‘‘ox mustard.” Sir W. P. Wood, V. C., said that the plaintiffs had estab- lished their claim to the ‘‘ox” mark, and had proved that their mustard was asked for as ‘the ox mustard,” although, pos- sibly, by illiterate persons. This was not contradicted by the evidence that persons in the trade who formed, as it were, a parallel stream of customers, relied on the name and not the mark. It was immaterial whether the defendants knew of the plaintiffs’ mark or not, but he could not help looking with some ‘degree of suspicion at the defendants’ case, though he would ac- cept the explanations given by them as true. There could, however, be no doubt of the object with which Mr. Kennedy had added the words ‘‘ Exhibition, 1862,” and he believed that Kennedy was well aware of the plaintiffs’ trade mark, even if the defendants were not. Upon the question of delay, no doubt the plaintiffs ought to have filed the bill sooner, but the defend- ants had persevered in the use of the mark after being cautioned, Looking at all the facts, the court thought the mark belonged to the plaintiffs, and that the defendant’s labels were an infringe- ment, aad the injunction would therefore be granted to restrain the defendants from using the figure of an ox, or in any other way using plaintiffs’ trade mark. The plaintiffs having delayed so long before coming to the court could have no account of profits. The defendants would have a month’s time to discon- tinue the mark, but must pay all the costs. ! 678 APPENDIX. Ainsworth v. Walmesley. AinswortH v. WaLMESLEY. Vice-Chancellor Wood’ Court, “fanuary, 1865. Reported, 44 L. F. R. 252. The defendants bought a quantity of thread which had been spooled by W. & Co., and bore the name “ J. W. & Co.” upon the spools, but which, as they alleged, they believed to have been manufactured by the plaintiff; and upon a subsequent sale of the thread, they positively represented to the purchaser that the thread was of the plaintiff’s manufacture, and described it in the invoice by certain numbers peculiar to the plaintiffs’ goods, but at the same time informed the purchaser that their immediate venders were J. W. & Co., whose names the spools still bore. The purchaser afterward substituted on the spools the plaintiff's name and marks for the name J. W. &*Co., and packed and sold the spools so altered in old boxes of a peculiar character, in which the plaintiff's thread had been sold. Held, that the representation of the defendants was not such as would justify the court in granting an injunction against them, and the bill was dismissed without costs. Tue plaintiff was an extensive manufacturer of sewing-thread, and his goods were well-known in the market as ‘“ Ainsworth’s Thread.” It was usually sold wound on spools bearing at each end his name and numbers, which differed from the numbers adopted by the generality of manufacturers, ‘The spools of 3-cord thread were packed in boxes, to each of which was at- tached a fly-leaf similar to the following : “ Ainsworth’s Machine Linen Thread is manufactured ex- pressly to meet the requirements of sewing machines, to which end it is all 3-cord. 15 | 18 | 21 | 24 | 27 | 30 | 33 | 38 | 45 | 53 | 60 | 75 | 90 | 105 1o | 12 | 14] 16 | 18 |] 20 | 22 | 25 | 30 | 35 | go | 50 | 60 | 70 Ainsworth’s Nos, 93 | 103] 117| 140] 164] 187] 234] 281] 328] No. of y’ds per 14 oz. APPENDIX. 679 Ainsworth v, Walmesley. “* The above tables show the number and size of Ainsworth’s 3-cord machine threads as compared with other manufacturers ; also the number of yards per $ oz. which each number should contain. ‘Thus Ainsworth’s No. 40 is the same size as other manufacturers’ No. 60, and all other numbers in proportion, as shown above. “ Made in any color and size.” The plaintiff’s system of numbers is explained by the follow- ing paragraph of the bill: ‘* The difference.between the numbers of the plaintiff and of other manufacturers arises in the follow- ing manner. The linen yarn from which thread is made is dis- tinguished by numbers, which represent the number of leas or skeins of three hundred yards of yarn each which go to the pound weight, which consequently represent the fineness of the yarn, These numbers are used by all manufacturers. The 2-cord thread of all manufacturers, including the plaintiff, is distinguished as to fineness by the same number as the yarn from which it is made. The thread of manufacturers, other than the plaintiff, made of three or more cords, is also distin- guished as to fineness by the same numbers as the yarn from which it is made, whereas, on the contrary, the thread of the plaintiff made of three or more cords is distinguished as to fine- ness by the same numbers as the 2-cord thread of similar fine- ness, thus keering the fineness of all threads of the same num- bers a constant. In consequence the 3-cord thread of any manu- facturer, other than the plaintiff, is one-third thicker and one- third shorter for a given weight than the 2-cord thread of the same number, whereas the 3-cord thread of the plaintiff is of the same thickness and of the same length for a given weight as his 2-cord thread of the same number.” The bulk of the plaintiff’s thread was thus marked and au- thenticated, but he also sold goods without his name or marks upon them to certain wholesale houses, who desired to purchase them in that form. These goods were of equal quality with those bearing his name and marks, but they did not reach the hands of retailers as of the plaintiff’s manufacture. Among such purchasers was the firm of Wreford & Co., who had an exten- 680 | APPENDIX. Ainsworth v. Walmesley. sive business as winders. The thread was delivered to them un- wound, and they wound it on spools labeled with their own name, and which they marked, not with numbers according to the usual course, but with letters of the alphabet. Thus, Wre- ford’s letters D. E. F. were equivalent to the plaintiff’s numbers 35 40, 50, respectfully. In September, 1862, the defendants purchased a quantity of thread which had come from Wreford’s stock, and was wound on spools labeled ‘‘ John Wreford & Co.” The defendants at the time of this purchase were assured by the venders that the thread was of the plaintiff’s manufacture, and one of them stated in his affidavit, that the result of some further inquiries which he made, was to induce him to believe that the thread really was of the plaintiff’s manufacture. The court, however, did not think that the facts were such as would naturally lead him to that conclusion. Shortly after this, John Harris, the defendant’s traveler, offered some of this thread for sale by sample, to Mrs. Fell. The sam- ple was wound on one of Wreford’s spools. Mrs. Fell inquired if it was Ainsworth’s thread, and Harris said that he did not ° know. Mrs. Fell then said, that she could sell no other thread than that of Ainsworth’s make. Upon this Harris returned to the defendants and told Walmesley that he could sell the thread if it was ‘* Ainsworth’s.” Walmesley (according to Harris’ affi- davit) went out with a spool, and in a short time returned with one unwound, and he then said, ‘ Harris, this is Ainsworth’s thread; you had better go to Mrs. Fell and tell her it is Ains- worth’s thread.” This Harris did, and Mrs. Fell accordingly bought a quantity of the thread of the qualities denoted by Wre- ford’s letters D. E. F. The thread was delivered on Wreford’s spools, but was in- voiced as machine thread of the Nos. 35, 40, 50, the equivalents in Ainsworth’s system of Wreford’s letters. Trusting to the representations made to her, Mrs. Fell re- moved Wreford’s labels and substituted others which she pro- cured to be made, and which were nearly fac-similes of Ains- APPENDIX, 681 Ainsworth v. Walmesley. worth’s, and she then put the spools up in old boxes which had contained Ainsworth’s genuine thread. The plaintiff, satisfied that Mrs, Fell had acted innocently in the matter, thought it unnecessary now to proceed against her; but he charged that the defendants well knew the falsity of the representation which they instructed Harris to make, and after alleging that he was sustaining great damage in his business and reputation in consequence thereof, prayed that they might be enjoined from selling or exposing for sale or procuring to be sold as thread manufactured by him any thread not so manufactured. Woop, V.C. This isa case of some singularity and difi- culty. The circumstances are not at all creditable to the defend- ant, and there is no doubt that Mr. Ainsworth has been griev- ously wronged. The plaintiff is a manufacturer of admitted reputation. He discovers that Mrs. Fell, who dealt largely in the kind of goods which he manufactured, is selling thread not his, upon spools stamped with his name, and almost exact counterfeits of his spools. And not only so, but, the spools are packed in boxes identical with his boxes, bearing his name, his peculiar numbers, in fact all the indicia by which his thread is known. The thread thus sold as his is undoubtedly spurious, and so greatly inferior to the genuine thread that Mrs. Fell has a difficulty in selling it at half the price. There is, therefore, a clear case of damage to the plaintiff. . He has lost the actual sale of his thread to the persons who bought the counterfeit thread, and his reputation suffers by an inferior article passing current as his. Now, Mrs. Fell was in a certain sense an innocent agent in this transaction: I can not think she was justified in substituting “6 Ainsworth” for the name of Wreford, which she found on the spools when she bought them. She had, however, been delib- erately assured by the defendant Walmesley, that the article sold to her was thread of Ainsworth’s manufacture. Nay, more, she was assured by the invoices that it was Ainsworth’s thread of certain specified qualities; for the spools were invoiced to her not under Wreford’s letters but under the plaintiffs’ numbers. 682 APPENDIX. Ainsworth ». Walmesley. She, then, trusting to these assurances did what she considered herself entitled to do, transferred the name of Ainsworth to the spools sold to her, which originally bore the name of Wreford, believing that they were in real truth the manufacture of Ains- worth. And these assurances were made to her by the de- fendants. The case has been very ably argued on both sides; but some extreme points have been urged on the part of the defendant which J can not pass without notice. First, it was contended that the case was not one of trade mark at all; that no trade mark was used, or alleged to have been used, but that all we had here was this, a simple representation that the thread was Ainsworth’s; that, it was argued, was not a case in which, if the representation had been innocently made, complaint could properly be urged in this court, because a trade mark depends upon property. For that Afillington v. Fox, as explained by Lord Westbury, in Hall v. Barrows, loc. cit., N. 8. 35., Chanc., and the cases which followed it, were cited. Therefore, a trade mark being a case of property, the use of a man’s name was a simple fraud of a different description requiring the scienter in order to constitute a wrong in respect of which this court would relieve. The law on this point, as laid down in the cases before Lord Westbury, I understand to be as follows, and I do not think that any one would be disposed to dissent from it. This court has taken on itself to protect a man in the use of a trade mark as applied to a particular description of article. He has no property in that mark per se, any more than a person has in any fanciful denomination which he may assume for his own par- ticular use without reference to his trade. If he does not carry on a trade in iron, but carries on a trade in linen, and stamps a lion on his linen, another person may sta.ap a lion on iron; but when he has appropriated a mark to a particular species of goods, and when he has caused his goods to circulate with that mark, when that mark has become the known indicium of their being his, the court has said that nobody shall defraud him by using that mark and passing off the goods of another’s manufacture as APPENDIX. 683 Ainsworth ¢. Walmesley. being the goods of the owner of the mark. Inasmuch, then, as the court protects the owner of the mark, he is entitled to au- thorize another, when he hands over his business to him, to place that mark on his goods. Thus the mark is a thing bought and sold, a right recognized and protected in a court of equity, which can be disposed of for money. It is, therefore, in that sense of the word, property. You may say the same of a singer’s voice. A singer may dispose of his voice by contract to one person, and the court will prevent his disposing of that voice to another person. ‘That voice, therefore, is, in this sense, property. That being so, surely all that led the court to inter- fere with reference to trade marks was this—you shall not by using a trade mark, pass off your goods as the goods of the owner of the trade mark. But is not a man’s name a still stronger trade mark than any that can well be devised, subject only to this inconvenience which a name has and a trade mark has not, that two people may be of the same name? If Mr. Jones or Mr. Brown relies on his name, he may find his name a very inadequate security, because there are several persons of the same name, it may be, bona fide carrying on the same trade. But I have not in evidence before me that any other person than the plaintiff has ever been heard of as manufacturing Ains- worth’s thread; and therefore ‘¢ Ainsworth’s Thread” is as good a mark as “Anchor Thread,” or “Lion Thread,” or any other thread which may be described by a particular name. The use, therefore, of that name, whether done scienter or not, is clearly an interference with his business which the court would inter- fere to prevent, the basis of the whole being that you are en- deavoring to palm off the goods of your manufacture or some- body else’s manufacture as being Ainsworth’s. In the case of Dent v. Turpin, 2 J. & H. 139; 8. C. 30 Law J. Rep., N.S. Chanc. 495, I interfered on the ground of the name alone. Somebody else having no right to the name of Dent set up the trade ofa clockmaker under that name. There was a difficulty attend- ing the case because Mr. Dent divided his business into two parts and left it to histwo sons. But in spite of that difficulty I inter- fered, and that case, I think, has not been the subject of an appeal. 684 APPENDIX, Ainsworth v. Walmesley. THe ATTORNEY-GENERAL. Your honor interfered also with reference to a shop in Regent street. [Perhaps the case referred to by the attorney-general is Glenny v. Smith, 6 New Rep. 363; but that was heard by Kindersley, V.C. The reporter has not been able to find any similar case decided by Wood, V. C.] Woop, V. C. Yes. The case of the Hungarian notes (The Emperor of Austria v. Day, lo.cit.) 1 do not think exactly in point, because a bank note has the appearance of government money, and there is, therefore, the double indicium, the general appearance of the note as well as the name which it carries. That being so, the next point I have to consider is, how far in this particular case and under these particular circumstances the defendant is answerable for the use of the name; and here, in one word, has been to my mind, the great difficulty in the case. I confess I think the name has been used without any reason and most unjustifiably, so that if the question was a ques- tion of fraud and depended on scienter, I should be disposed very much to say I have both. But the real difficulty is this: Whatever this gentleman has done, however unjust, has been of a different character from selling simpliciter the thread as Ains- worth’s thread. Of course, for the reasons I have already given, a man, not being an agent of Ainsworth, has no right to set him- self up as an agent of Ainsworth. Of course, no man in like manner having bought a large quantity of thread would have a right to throw it upon the market and say, ‘* Here is Ainsworth’s thread.” But what this gentleman has done is this, he has bought this thread of Wreford, reeled by Wreford, with Wre- ford’s name on the spools; he has then sent it into the market by means of an agent, and it has been handed about on these spools with Wreford’s name on them, and it reaches Mrs. Fell in this condition. Mrs. Fell says, ‘I shall not purchase unless I am assured this is Ainsworth’s thread.” The agent goes back and then returns, and tells her, ‘This is Ainsworth’s thread, and you may buy it as such.” But still there is this fact, that it is sold on Wreford’s spools. Now, taking all this in the strongest way against the defendant, it amounts to no more than a repre- APPENDIX. 685 Ainsworth v. Walmesley. sentation: ‘This is thread of Ainsworth’s that has passed through Wreford’s hands. I do not tell you that I have bought it of Ainsworth direct; on the contrary, there is an intermediate person whom I bought it of, Wreford.”” Construed most strongly, it is merely this: “I sell you thread which I have bought of Wreford, but which I knew to be Ainsworth’s.” That is the whole representation. The case is certainly one of extreme dif- ficulty, and to my mind, of novelty, because it is not telling the person, ‘¢I have any such assurance as this that the thread came direct from Ainsworth’s ;”? but the defendant says, ‘‘I can not tell you that; and, therefore, you have not any security of this being Ainsworth’s thread beyond my word that, having got it of Wreford, I am sure it is Ainsworth’s.” Suppose, for instance, the case had been merely this, the handing over a quantity of Wreford’s reels to Mrs. Fell, and saying, “I know that Ainsworth manufactures for Wreford; I know Ainsworth’s make; I do not tell you, mind, on Ains- worth’s authority, but knowing Ainsworth’s make, I am sure this is his.” It is, I think, clear that would not have been a case of assumption of a trade mark'of a nature which would jus- tify the courts’ interference, and for this reason, that if Mrs. Fell had made exactly the same representation to purchasers in the market, those purchasers would only have their own folly to complain of in trusting to that assertion, because the article would have none of the indicia of Ainsworth on it, but it would have “ Wreford” onit. If Mrs. Fell had simply sold the thread as she found it, stamped as ‘* Wreford’s thread,” and had said, ‘I have been told, and assured by Mr. Walmesley it is Ainsworth’s ; I am sure from his representation it is so,” if the purchaser had said, *¢I do not care about that, I would rather have Mr. Ains- worth’s own make and his own name on the spools,” the pur- chaser would be put on his guard, and Mrs. Feil would be put on her guard. To my mind it was a most unjustifiable repre- sentation to Mrs. Fell that it was Ainsworth’s, but it amounted only to this: “It is from Wreford I derived it, and I give it to you and guarantee it as being of Ainsworth’s make.” Had that been so sold in the market, it would have been sold with that 686 APPENDIX. Ainsworth v. Walmesley. statement, and that statement only—not with the representation of its being Ainsworth’s thread beyond this—that it would have been sold as being Wreford’s reels containing Ainsworth’s thread, a form in which Ainsworth has never sold his thread in the market. So that every purchaser who bought Ainsworth’s, believing it to be Ainsworth’s, would simply have himself to blame if with this totally novel article of Ainsworth’s thread, sold with Wreford’s name and with Wreford’s spools, he bought that as being Ainsworth’s thread. This has been the pinch and the real difficulty of the case. I do not for a moment hold with the argument which the defendant’s counsel have urged before me, that it would have been lawful for this gentleman to have sold this in skeins to Mrs. Fell. He would not have been en- titled to sell this in skeins to this lady, saying it is Ainsworth’s thread. ‘That would be a distinct representation that it is Ains- worth’s, and she and all the world would have a right to sup- pose that it was Ainsworth’s manufacture, it being held forth and sold and disposed of in the market as such, with the advan- tage derived to the defendant from using Ainsworth’s name. But that advantage, I apprehend, he would have no right to derive except by disclosing all the facts. But in this case he has dis- closed the fact which he has never made a secret of, that it is not of Ainsworth’s origin; it has passed through another manu- facturer. If Mrs. fell had sold the article in like manner, it would be liable to all the suspicion of doctoring from having passed through a second hand; it would not be an article repre- sented to the public as coming straight from Ainsworth’s hands. Of course, a direct and deliberate intention to defraud is not what I am considering here. If the defendant, having bought it from Wreford, had unreeled it and skeined it for the express purpose of selling it for Ainsworth’s (because he knew the dif- ficulty which Wreford’s name being upon it would create), the case would assume a different complexion. The only remaining point is the question of the numbers, which certainly appears to me the most unjustifiable act I have met with in the case, not only selling it as Ainsworth’s thread, but selling Wreford’s D as Ainsworth’s 35, and Wreford’s E as . APPENDIX. ; 687 Ainsworth ». Walmesley. Ainsworth’s 40, and so on, thus leading to that which has con- stituted the real injury to the plaintiff, namely, the substitution of the labels. That act was perfectly unjustifiable, but still the name ‘ Wreford” on the spools indicating they had not come from Ainsworth, the original source, it must resolve itself, in the mind of everybody, into a question of belief as distinguished from positive and direct knowledge. ‘You get the thing, indeed, but with the name of another person upon it, and you do not get the pretended guaranty of the original manufacturer, which is the thing which really constitutes the deception in these cases, whether it is trade mark or name, or whatever is the indicium. Now, the case, in that respect, is not only perfectly novel (one cares little about novelty in cases if they fall within a given principle), but I think the principle would not require me to go further than to say that, had this been unskeined and unwound, and sold as Ainsworth’s thread, with or without numbers, the defendant would have been liable, undoubtedly, to the interfer- ence of the court. The principle does not seem to me to re- quire me to hold that that most improper assurance which was given when the article was sold, the identical article bearing at the same time another name or mark, of itself amounts to an adaptation of the plaintiffs’ name, for the purpose of passing off the goods, inasmuch as it always left a question to remain, since both Mrs. Fell and the next purchaser who bought: from her would be held bound to inquire, if they wanted to complain, what the circumstances were which had caused Wreford’s name to appear, whereas the goods had been the manufacture of another person. I hold, therefore, that there is not that distinct and positive misrepresentation which alone could justify the court in inter- fering. But looking at all the facts of the case, I think the de- fendants’ conduct has been unjustifiable. I consider that the circumstances were such as to entitle the plaintiff to a full and complete investigation. Although, therefore, in the result I find myself compelled to dismiss the bill. I dismiss it without costs. d 688 APPENDIX. Southorn v. Reynolds. SouTHoRN v REYNOLDS. V.C. Woods Court, March, 1865. Reported, 12 L. T. R., N. S. 75. Tue plaintiff’s father established the manufacture of clay pipes at Broseley, which were designated as “ Southorn’s Broseley Pipes.” Upon the death of his father the plaintiff, as well as his brother, continued the manufacture of such pipes at Broseley, but at separate establishments and for their separate benefit. The defendant made pipes of a similar character, which he sold as“‘Reynold’s purified clay pipes, made by Southorn, from Brose- ley,” he having a person in his employ whose name was South- orn. It was contended, in behalf of the defendant, that defendant was entitled to use the name Southorn as aforesaid, and that the bill could not be maintained without both of the brothers join- ing therein. The vice-chancellor held that the defendant’s label was a vio- lation of the plaintiff’s trade mark, in which he had a sufficient interest to enable him to maintain the suit. Tue Leatuer Cirots Co. v. THE AMERICAN LEATHER Ciotu Co. House of Lords, May, 1865. Reported, 11 Fur. N. 8. 513. Misrepresentations in a trade mark, amounting to a fraud upon the public, will disen- title the person making such misrepresentations to protection in a court of equity against arival trader; and, as a general rule, a mis-statement of any material fact calculated to impose upon the public, will be sufficient for the purpose; e. g.,a trade mark representing an article as protected by a patent, when, in fact, it is not so protected, or a trade mark falsely representing an article as the production of an artist of special skill or of a place of special adaptation. APPENDIX. 689 Leather Cloth Co. ». American Leather Cloth Co. Though a man may assign his business and the use of his firm and of his trade mark as belonging thereto, that proceeds upon the ground that the use of the name of the firm is not understood in trade to signify that certain individuals, and no others, are engaged in the concern. Though a man may have a property in a trade mark in the sense of having a right to exclude any other trader from the use of it inselling the same description of goods, it does not follow that he can, in all cases, give another person a right to use it or to use his name, because he can not give to them the right to practice a fraud upon the public. What amounts to colorable imitation. Tuis was an appeal from a decree of the lord chancellor reversing a decree made by Vice-Chancellor Wood, and the principal questions upon the appeal were, first, whether the appel- lants were entitled to be protected in the use of a particular stamp or trade mark; and if they were, then, secondly, whether the respondents, by using another stamp or trade mark, had in- fringed the appellants’ rights. The appellants and the respondents were rival joint stock com- panies, engaged in the manufacture of leather cloth, and each company uses its said stamp or trade mark by affixing the same upon its “first quality” goods. Leather cloth was first made in America, and Messrs. John R. and Caleb Pearson Crockett were among the first manufac- turers of it. They carried on business in copartnership together in the city of Newark, in the county of Essex, in the State of New Jersey, under the style or firm of “J. R. & C. P. Crock- ett; and in the year 1852 their leather cloth was introduced into England through Nathaniel Shattswell Dodge and Henry Pomeroy Brewster, who were then carrying on business in co- partnership together as merchants, under the style or firm of “ Dodge & Brewster,” at St. Paul’s Churchyard, in the city of Lon- don. The said firm of Dodge & Brewster dissolved partnership in the year 1854, when a new partnership between the said Na- thaniel Shattswell Dodge and Lathorpe Solomon Bacon and Raf- faelle Louis Grandonati was formed, under the style or firm of “ Dodge, Bacon & Company,” and the said Nathaniel Shatts- 6g0 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. well Dodge, Lathorpe Solomon Bacon, and Raffaelle Louis Giandonati became partners in the said firm of J. R. & C. P. Crockett, and thereupon the name or style of that firm was changed to “J. R. & C. P. Crockett & Co.” In the year 1855 the said firm of “J. R. & C. P. Crockett & Co.” was dissolved, and the members thereof, together with certain other persons, established in America a joint stock com- pany (duly incorporated pursuant to an act of the legislature of the State of New Jersey, in that behalf) under the style of ‘* The Crockett International Leather Cloth Company,” for the pur- pose of carrying on the manufacture of leather cloth in Amer- ica, and in the kingdoms of Great Britain, France, and Germany. On the 20th of October, 1855, the said Nathaniel Shattswell Dodge obtained letters patent in England for an invention of ‘‘improvements in machinery or apparatus for spreading or dis- tributing water proofing or similar compositions over webs or sheets ;” and, on the 14th of January, 1856, he also obtained letters patent in England for an invention of ‘improvements in the preparation or manufacture of' leather cloth.” The leather cloth made according to the last-mentioned invention is a partic- ular species or kind of leather cloth called and known in the trade as “¢ Tanned Leather Cloth,” in order to distinguish it from common or ordinary Jeather cloth, which is not tanned, and is not and never was a patent article. Letters patent for both the said inventions were also obtained in France, and dated respect- ively the 25th of November, 1855, and the 22d of March, 1856. The said firm of Dodge, Bacon & Co. acted as the agents in England of the Crockett International Leather Cloth Company, and the aforesaid patents werein fact the property of that com- pany. The said firm of Dodge, Bacon & Co. procured a lease of a factory and ground at West Ham, in the county of Essex, in England, to be granted to them on behalf of the Crockett In- ternational Leather Cloth Company, and thereupon the said company commenced the manufacture of leather cloth at the said factory, The Crockett International Leather Cloth Company affix APPENDIX. 691 Leather Cloth Co. v. American Leather Cloth Co. upon the “first quality” goods manufactured by them in their trade or business the stamp or trade mark which the appellant, under the circumstances hereinafter stated, then used, and a copy of which trade mark is hereinafter engraved, and distinguished as the appellant’s trade mark. In the year 1857, the Crockett International Leather Cloth Company resolved to sell their busi- ness in England; and by a deed-poll, dated the 2d of May, 1857, under the corporate seal of the said company, and signed by the president thereof, the said company constituted the said Caleb Pearson Crockett its attorney for the sale of the lease, buildings, machinery, tools, and fixtures belonging to the said company, situate at West Ham aforesaid, with the trade marks and good-will of the business of the company carried on there ; and also all goods manufactured and unmanufactured, and in the process of being manufactured, and all materials used for manu- facturing, and other things at the West Ham factory belonging to the said company, and also all patents issued in England or France owned by the said company, or to which the said com- pany was entitled, or in which it had any interest. The appel- lants, the Leather Cloth Company (limited), were formed for the purpose of buying and carrying on the business in England of the Crockett International Leather Cloth Company, and were duly incorporated under the Joint Stock Companies’ Act, 1856, and a certificate of the registrar of joint stock companies in that behalf, bearing date the 22d of May, 1857. By an agreement in writing, dated the 21st of May, 1857, and made between the said Lathorpe Solomon Bacon, Nathaniel Shattswell Dodge, Raffaelle Louis Giandonati, and one Jean Bap- tiste Athanase Lorsont, for themselves jointly and severally, and the said Caleb Pearson Crockett, as the attorney of and for the Crockett International Leather Cloth Company, of the one part, and John Murray, of Whitehall Place, in the county of Middlesex, gentleman, as agent for and on behalf of the then intended “ Leather Cloth Company ” (limited), of the other part, it was agreed that the said Lathorpe Solomon Bacon, Nathaniel Shattswell Dodge, Raffaelle Louis Giandonati, Jean Baptiste Athanase Lorsont, and Caleb Pearson Crockett (thereinafter 692 APPENDIX. Leather Cloth Co. » American Leather Cloth Co. called the parties of the first part) should sell to the said intended company when incorporated, and that the said intended company should purchase, at the price or sum of £20,000 and other the considerations therein mentioned, all those the letters patent ob- tained in France and in England, dated the 2oth of October, 1855, the 25th of November, 1855, the 14th of January, 1856, and the 22d of March, 1856, for the manufacture of American leather cloth, and then belonging to them the said parties of the first part, and the full benefit and advantage thereof, and also the exclusive right of soliciting similar patents in Belgium and in all other countries in Europe, together with all the processes of manu- facture used by them or their agents or workmen up to the day of the said agreement. And it was also agreed that the said parties thereto of the first part would not directly or indirectly carry on, nor would they to the best of their power allow to be carried on by others, in any part of Europe, any company or manufactory having for its object the manufacture or sale of productions in any way similar to the productions which were the subject of the said letters patent and then manufactured in the business or manufactory so carried on at West Ham as aforesaid, and would not communicate to any person or persons the means or processes of such manufacture, so as in any way to interfere with the exclusive enjoyment by the said intended com- pany of the benefits thereby agreed to be purchased. Assignments of the said several patents, and of the lease, were afterward duly made to the appellants, by two several in- dentures, each dated the 8th of July, 1857; and by one of such indentures, which was made between the said Nathaniel Shatts- well Dodge of the first part, the Crockett International Leather Cloth Company, by the said Caleb Pearson Crockett, of the second part, and the appellants of the third part, the said several patents were assigned unto the appellants; and by the second in- denture the said Caleb Pearson Crockett, as such agent and attorney as aforesaid, and by virtue of the power granted to him as aforesaid, granted and designed unto the appellants all the machinery, tools, and fixtures belonging to the Crockett Inter- national Leather Cloth Company at West Ham aforesaid, and APPENDIX. 693 Leather Cloth Co. v. American Leather Cloth Co. the good-will of and in the business theretofore carried on by them at West Ham aforesaid, together with full power and au- thority to and for the appellants to use all and singular the trade marks theretofore used by the Crockett International Leather Cloth Company in the course oftheir business at West Ham. Upon the establishment of the appellants’ company and the com- pletion by them of the aforesaid purchase from the Crockett In- ternational Leather Cloth Company, the appellants commenced and have ever since continued to carry on at West Ham afore- said the business of leather cloth manufacturers, previously car- ried on by the Crockett International Leather Cloth Company, and the appellants adopted and have ever since continued to use in their said business, for the purpose of stamping their first- quality goods, the aforesaid stamp or trade mark previously used for the same purpose by the Crockett International Leather Cloth Company. The Crockett International Leather Cloth Company afterward discontinued its business in Ametica, and the said Messrs. J. R. & C. P. Crockett, with others, then es- tablished another company in America, called ‘‘The Crockett Leather Cloth Company.” The-last-mentioned company has also since ceased to exist 5 but the said Messrs. J. R. & C. P. Crokett have continued and still continue to carry on business as manufacturers of leather cloth in America, in their own names, and their goods are pur- chased by divers persons, and imported into this country, where they are known and sold as “Crocketts’ Leather Cloth.” The respondents, ‘‘ The American Leather Cloth Company (Limited),” were incorporated in the month of August, 1861, for the purpose of manufacturing and selling leather cloth. They carry on business at No. 5 Noble street, Gresham street, in the city of London, and have their manufactory in the Old Kent road, London, and William Wegelin, who, the respond- ents alleged, was formerly in the employment of the Crockett International Leather Cloth Company, was their manager at their works there. Upon the establishment of the respondents’ company, they had prepared and adopted a stamp or trade mark for their first- 694 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. quality goods; a copy of which trade mark is engraved herein- after and distinguished as the respondents’ trade mark. On the 27th of December, 1861, the appellants filed a bill in the Court of Chancery against the respondents (which was afterward amended on the 23d of May, 1862), and they prayed (amongst other things) that the respondents, their agents, servants and workmen, might be restrained, by injunction, from selling or exposing for sale, or procuring to be sold, any leather cloth or any fabric or article similar thereto, having affixed thereon such stamps or trade marks as the appellants used on their first and second-quality goods respectively, or either of such stamps or trade marks, or any other satmp or trade mark so contrived or expressed as, by colorable imitation or otherwise, to represent the fabric or article manufactured or sold by the respondents as being the same fabric or article known as Crocketts’ leather cloth; that the respondents might also, in like manner, be restrained from using, printing, or circulating any trade circulars, price-current lists, or advertisements having stamped or affixed thereon the said stamps or trade marks, or either of them, or any other stamp or trade mark so contrived and expressed as aforesaid, and from directly or indirectly holding themselves out to the public as manufacturers or sellers of Crocketts’ leather cloth. On the rgth of February, 1862, the respondents filed their answer to the said bill, and thereby stated that the said patent of the 14th of January, 1856, had since become void, and in- sisted that the appellants were deceiving the public by repre- senting on their stamps and trade marks that Messrs. J. R. & C. P. Crockett were the manufacturers of the fabrics or articles manufactured and sold by them, the appellants, and by repre- senting on their said stamps and trade marks that the fabrics or articles manufactured by them were protected by patent, while they were not so, and also by affixing on untanned leather cloth manufactured by them a stamp or trade mark representing it to be tanned leather cloth; and the respondents, by their said answer, also insisted that they had not in any way infringed any rights of property which the plaintiffs were possessed of or en- titled to. APPENDIX. 695 Leather Cloth Co. v. American Leather Cloth Co. The appellants afterward gave notice of motion for a decree according to the prayer of their said bill; and evidence at con- siderable length was gone into, both by the appellants and re- spondents, in support of their respective cases. It appeared by the evidence of Jean Baptiste Athanase Lor- sont, the managing director of the appellants’ company, that the appellants affixed the said trade mark used by them as aforesaid upon the whole of their first-quality goods, whether tanned or untanned, but that they made only about one-tenth of their ~ whole produce in tanned cloth. By the decree of his honor the vice-chancellor, Sir William Page Wood, dated the 8th of July, 1863, it was ordered that a perpetual injunction be awarded against the respondents, to re- strain them, their servants and agents, from selling or exposing for sale, or procuring to be sold, any leather cloth, or any fabric or article similar thereto, having affixed thereon a stamp or trade mark with the name of J. R. & C. P. Crockett & Co.” intro- duced thereon in such manner as, by colorable imitation or otherwise, to represent the fabric or article manufactured or sold by the respondents as being the same fabric or article as that manufactured and sold by the appellants, or as being the fabric or article known as Crocketts’ leather cloth. on sre y ooh a Nee a % afte nie Ave £& %, % a , CERO + =e m 5 Pare oe Sistem Coors % ace o 7 PANTUEACIUTES BY THteR AZANWAGER 14 gt WXas +, @° - IRCP. CROCKETTN-C? f --- iz ys S4.wesr anne DLD KENT ROAD, LONDON 696 APPENDIX. Leather Cloth Co. ». American Leather Cloth Co. The respondents appealed to the lord chancellor who delivered the following opinion and decree: Tue Lorp CuHancettor. Upon a review of the numerous cases which have been decided in this court on the subject of trade marks, there appears to be some uncertainty and want of precision in the language attributed to different judges, as to the ground on which a court of equity interferes to protect the en- joyment of a trade mark, and also upon the question whether the right to use a trade mark admits of being sold and transferred by one man to another. At law the remedy for piracy of a trade mark is by an action on the case in the nature of a writ of de- ceit. This remedy is founded upon fraud, and it seems that originally an action was given not only to thé trader whose mark had been pirated, but also to the buyer in the market, if he had been induced by fraud to buy goods of an inferior quality. In equity the right to give relief to the trader whose trade has been injured by the piracy appears to have been originally assumed by reason of the inadequacy of the remedy at law, and the necessity of protecting property of this description by injunction. But although the jurisdiction is now well settled, there is still cur- rent in several recent cases language which seems to me to give an inaccurate statement of the true ground on which it rests. In Croft v. Day, and in Perry v. Truefitt, the late Lord Lang- dale is reported to have used words which place the jurisdiction of this court to grant relief in cases of the piracy of a trade mark entirely upon the ground of the fraud that is committed when one man sells his own goods as the goods of another ; and that learned judge is reported to have said (6 Beav. 73): ‘I own it does not seem to me that a man can acquire a property merely in a name or mark;” and, in like manner, the learned vice- chancellor, whose decision I am now reviewing, is reported to have said (1 Hem. & M. 287; S.C. 32 Law J. Rep., N.5., Chanc. 721): “All these cases of trade mark, therefore, turn not upon a question of property, but upon this, whether the act of the defendant is such as to hold out his goods as the goods of the plaintiff.” But, with great respect, this is not quite an ac- APPENDIX. 697 Leather Cloth Co. v. American Leather Cloth Co. curate statement. First, the goods of one man may be sold as the goods of another without giving to that other person a right to complain, unless he sustains or is likely to sustain from the wrongful act some pecuniary loss or damage. Thus, in the case of Clark v. Freeman, 11 Beav. 1123 S. C. 17 Law J. Rep., N. S., Chanc. 142, the eminent physician, Sir James Clark, applied for an injunction to restrain a chemist from publishing and sell- ing a quack medicine under the name of “Sir James Clark’s Consumption Pills ;”’ but the court refused to interfere, because it did not appear that Sir James Clark had sustained any pecu- niary injury. Secondly, it is not requisite for the exercise of the jurisdiction that there should be fraud or imposition practiced by the defendant at all. The court will grant relief although the defendant has no intention of selling his own goods as the goods of the plaintiff, or of practicing any fraud either on the plaintiff or the public. If the defendant adopts a mark in ignorance of the plaintifF’s exclusive right to it, and without knowing that the symbols or words so adopted and used are current as a trade mark in the market, his act, though innocently done, will be a sufficient ground for the interference of the court, as is plain from the decision of Lord Cottenham in the case of Adillington v. Fox, to which I entirely assent, and from the learned vice-chan- cellor’s own opinion in the case of Welch v. Knott, 4 Kay & J. 74.7, 751. Imposition upon the public, occasioned by one man selling his goods as the goods of another, cannot be the ground of private action or suit. In the language of Lord Thurlow, in Webster v. Webster, 3 Swanst. 490, z., *¢ fraud upon the public is no ground for coming to this court.” Itis indeed true that unless the mark used by the defendant be applied by him to goods of the same kind as the goods of the plaintiff, and it is in itself such that it might be, and was, mistaken in the market for the trade mark of the plaintiff, this court will not interfere, because there is no invasion of the plaintiff ’s right, and thus the mistake of the buyers in the mar- ket, under which they, in fact, take the defendant’s goods as the goods of the plaintiff, that is to say, imposition on the public becomes the test of the property in that trade mark having been 698 APPENDIX. | Leather Cloth Co. v. American Leather Cloth Co. invaded and injured, but it is not the ground on which the court rests its jurisdiction. The representation which the defendant is supposed to make that his goods are the goods of another person, is not actually made otherwise than by his appropriating and using the trade mark which such other person has an exclusive right to use in connection with the sale of some commodity, and if the plaintiff has an exclusive right so to use any particular mark or symbol, it becomes his property for the purposes of such application, and the act of the defendant is a violation of such right of property, corresponding with the piracy of copyright or the infringement of a patent. I cannot therefore assent to the dictum that there is no property in a trade mark. It is correct to say that there is no exclusive ownership of the symbols which constitute a trade kmar apart from the use or application of them, but the word “trade mark” is the designation of marks or symbols when ap- plied to a vendible commodity, and the exclusive right to make such use or application is rightly called property. The true principle, therefore, seems to be, that the jurisdic- tion of the court in the protection given to trade marks rests upon property, and that the court interferes by injunction be- cause that is the only mode by which such property can be effectually protected. ‘The same things are necessary to consti- tute a title to relief in equity in the case of the infringement of the right to a trade mark, as in the case of the violation of any other right of property. First, the plaintiff must prove that he has an exclusive right to use some particular mark or symbol in connection with some manufacture or vendible commodity; and secondly, that this mark or symbol has been adopted or is used by the defendant so as to prejudice the plaintiff’s custom and in- jure him in his trade or business. But 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 representation ; for if the plaintiff makes any material false statement in connec- APPENDIX. 699 Leather Cloth Co. v. American Leather Cloth Co. tion with the property which he seeks to protect, he loses, and very justly, his right to claim the assistance of a court of equity. The question then arises, what amounts to a material false rep- resentation? Supposing a partnership to have been formed a century ago under a style or firm composed of the names of the then partners, and that the firm has been continued by the ad- mission of new partners in an unbroken series of successive partnerships trading under the same original style, although the names of the present partners are wholly different from those in the original firm, is it an imposition on the public that such per- sons should continue to use the style or name of the original partnership? This question must be answered without any doubt in the negative; for it is competent by the law of England to a partnership to adopt any style or firm which does not involve a claim to incorporation, or the assumption of what belongs to others ; and the practice of the trading community in this respect is so common and general that no misleading of the public can result from it. But suppose an individual, or a firm, to have gained credit for a particular manufacture, and that the goods are marked or stamped in such a way as to denote that they are made by such person or firm, and that the stamp has gained cur- rency and credit in the market and become of great value (there being no secret process or invention), could such person or firm, on ceasing to carry on business, sell and assign the right to use such name and mark to another firm carrying on the same busi- ness in a different place? Suppose a firm of A. B, & Co. to have been clothiers in Wiltshire, for fifty years, and that broad- cloth marked thus, ‘A. B. & Co., makers, Wilts,” has obtained a great reputation in the market, and that A. B. & Co., on dis- continuing business, sell and transfer the right to use their name and mark to a firm of C. D. & Co., who are clothiers in York- shire, would the latter be protected by a court of equity in their claim to the exclusive right to, use the name and mark of A. B. & Co.? Iam of opinion that no such protection could be given. It is true that the name or the style of the firm may by long usage become a mere trade mark, and cease to convey any rep- resentation as to the fact of the person who makes or the place 700 APPENDIX. Teather Cloth Co. vy. American Leather Cloth Co. of manufacture; but 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 false, I think no property can be claimed in it; or, in other words, the right to the exclusive use of it can not be protected. The sale of an article stamped with a false statement is pro tanto an imposition upon the public ; and, therefore, in the case supposed, the plaintiff and the defendant would be both in pari delicto, which is consistent with the many decided cases. Further, property in a trade mark is, as has already been ob- served, the right to the exclusive use of some mark, name, or symbol in connection with a particular manufacture, or vendible commodity; consequently, the use of the same mark in connec- tion with a different article is not an infringement of such right of property. If,-therefore, the trade mark includes in itself a clear and distinct description of the commodity to which it is affixed, it is not pirated by the use of a mark which, although in other respects similar, does not contain or give the same de- scription, and which is impressed upon an article which is not of the nature or quality so described. These conclusions seem to follow immediately from the very principle to which a plaintiff seeking protection for a trade mark appeals. He desires to re- strain the defendant from selling his own goods as the goods of another person; but if, by the use of the trade mark in question, the plaintiff himself is representing and selling his goods as the goods of another, or if his trade mark gives a false description of the article, he is violating the rule upon which he seeks relief against the defendant. “These observations seem to apply to the case now to be decided. The plaintiffs are an English company, formed in 1857, with limited liability, for the purpose of making and selling an article called leather cloth, They bought the business of an American company, which was formed for the purpose of carrying on this manufacture in New Jersey, in the United States of America, and at "West Ham, in the county of Essex. The name of that company was, ‘* The Crockett Inter- national Leather Cloth Company.” The original inventors and manufacturers of this article, called APPENDIX. 701 Leather Cloth Co. ». American Leather Cloth Co. leather cloth, were a firm of ‘*Crockett & Co.” in the United States of America, who, upon the formation of the International Company, ceased to carry on a separate business and became shareholders in that company, but have resumed business, and are manufacturers of leather cloth in the United States. The International Company by its agents obtained, in the month of January, 1856, an English patent for tanning the leather cloth, and having done so, they devised an elaborate label, to be attached to the goods manufactured by them, which being in a circular form had its circumference formed by the words ‘* Crockett In- ternational Leather Cloth Company, Newark,” with the initials “N. J.. U. S. A,” meaning New Jersey, United States of America, and also the words, ‘West Ham, Essex, England.” These words and letters formed the periphery or outer rim of the label. Within the circle at the top is the word ‘* Excelsior,”’ below which is an eagle with expanded wings, and beneath the eagle are printed these words, ‘‘ Crockett & Co.’s Tanned Leather Cloth, Patented Jan. 24, 1856, J. R. & C. P. Crockett, manufacturers.” The International Leather Cloth Company carried on business as Jeather cloth manufacturers, both in the United States and in England, until May, 1857. They used the stamp or label which has been described as a trade mark, affix- ing it to the goods which they manufactured. In May, 1857, the plaintiffs’ company was incorporated, and the International Company sold and assigned to the plaintiffs the business carried on by them at West Ham, together with the English letters patent, with full power and authority to use all and singular the trade marks that had been used by the International Company in their business in England. From the time of this sale the plaintiffs have carried on, and now carry on, at West Ham, the manufacture of leather cloth, according to the process originally introduced by Crockett & Co.; and they have constantly used the trade mark which has been described, stamping it on their goods of their first quality. In August, 1861, the defendants were incorporated for the purpose of carrying on the manufac- ture and sale of leather cloth; and they have used asa trade mark, on goods made by them of the first quality, a stamp or qo2 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. label which certainly appears to have been formed upon the model of the plaintiffs’ trade mark. They do not, however, make use of the word patented,” nor do they call their leather cloth “‘tanned.” But it is unnecessary to pursue the inquiry as to difference or identity, for I will assume for the purpose of this decision, that there is so much designed similarity as would induce the court to grant an injunction if the plaintiffs’ title were free from objection. The vice-chancellor’s words, as reported, 1 Hem. & M. 289, are: “I hold that the plaintiffs, having purchased the business, are perfectly entitled to use the trade mark formerly used by their venders.” Now, the plaintiffs’ label or trade mark contains the following assertions or representations: first, that the articles so stamped are the goods of the Crockett International Leather Cloth Company; secondly, that they have been made or manu- factured by J. R. & C. P. Crockett ; thirdly, that they are tanned leather cloth ; fourthly, that the articles are patented by a patent obtained in January, 1856; and, Jastly, that they were made in the United States of America, or at West Ham, in England. Each of those statements or representations is untrue when ap- plied to the goods made and sold by the plaintiffs. Of those several untrue statements the most material are the false repre- sentations made by the plaintiffs’ trade mark, that every piece of cloth so stamped or branded is tanned, and is included in the patent of January, 1856, which was a patent for tanning leather cloth; whereas, it is clear upon the evidence that the goods made and sold by the plaintiffs are not tanned unless specially ordered to be so, and that to the great bulk of the plaintiffs’ manufacture the words “tanned” and ‘‘ patented ” are unduly applied. The vice-chancellor is reported to have said on this point: “Tt seems to me that everybody who takes up an article of this kind knows whether it is tanned or not; therefore, when he sees “tanned leather cloth, patented,’ it can not be made to represent that it istanned.” If those are the words of the vice-chancellor, his honor means to say, that any buyer of ordinary discernment would perceive that the cloth was not tanned, and therefore would not be deceived by the statement that it was. That, APPENDIX. 703 Leather Cloth Co. v. American Leather Cloth Co. however, is not the fact, for the tanning might have been ap- plied to that side which was covered by the composition. But I can not receive it as a rule, either of morality or equity, that the plaintiffs are not answerable for a falsehood because it may be so gross and palpable that no one is likely to be deceived by it. If there is a willfully false statement, I will not stop to inquire whether it is too gross to mislead. The vice-chancellor puts the case of Morrison’s pills, and concludes that the present manufacturer of that medicine, though not bearing the name of Morrison, would be protected in the exclusive use of the appel- lation; and rightly so, because the words ‘¢ Morrison’s Pills” have become the name of the thing sold, in the same manner as “James’ Powders” is the name of a celebrated medicine in- vented by Dr. James, nearly a century ago; and so the words Mackintosh, Brougham, and Wellington are the designations of different articles. So, in the present case, the article made or sold by the plaint- iffs might be properly called and sold by them as Crockett’s Leather Cloth, for that has become the proper designation of the manufacture. The vice-chancellor is apprehensive that if he refuses the plaintiffs relief he must hold that, where the name of a deceased partner is continued in the firm by his surviving partners they would be guilty of a fraud upan the public. To continue the old style of a firm is a very different thing from making false representations with respect to a vendible commodity, in order to give it greater value, and to create a greater demand for it inthe market. The plaintiffs impose upon “the public by selling goods which are, in reality, manufactured by themselves at West Ham, as being the goods of the Cockett International Leather Cloth Company, and as having been man- ufactured by Messrs. Crockett, who were the original inventors and manufacturers; and, further, they describe their untanned goods as being tanned and protected by the patent, which has not yet expired. Their request is to be protected, and there- fore justified, in continuing to make these untrue statements to the public, in order to secure a monopoly for their commodity. 704 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. There is-a homely phrase long current in this court, that a plaintiff must come into equity with clean hands ; that is not so with the present plaintiffs, whose case is condemned by the principles to which they appeal. I must, therefore, with great respect, but without hesitation, reverse the decree of the vice- chancellor and dismiss the bill; but, as I do not approve of the conduct of the defendants, I dismiss it without costs. ‘The de- posit will be returned. From the decision of the lord chancellor the present appeal was taken. Lorp CranworTH. My lords, this case, coming by appeal from a decision of the lord chancellor, I believe it to be more consistent with ordinary usage, and I know it will be more agree- able to his lordship, that some member of your lordship’s house, other than the lord chancellor, should move the judgment of the house. I have therefore undertaken to do it. The object of the bill filed by the appellants in this case was to restrain the respondents from selling leather cloth having the trade mark of the plaintiffs affixed to it, so as to represent the cloth so sold as being cloth manufactured by the plaintiffs. [His lordship here stated the facts of the case, and proceeded. | The ground on which-the lord chancellor proceeded was tha. the trade mark used by the appellants is so constructed and worded as to contain more than one false assertion calculated to mislead those who rely upon it; that it represents the articles stamped with it as being the goods of the Crockett International Leather Cloth Company ; that these goods had been manufac- tured by J. R. & C. P. Crockett, and that they were tanned leather cloth. The lord chancellor was of opinion that, to give protection to such a trade mark, when affixed to goods not of the International Leather Cloth Company, not manufactured by J. R. & C. P. Crockett, and not consisting of tanned leather cloth, would be to make the Court of Chancery ancillary to the protection of fraud; and that it would or might enable manufac- turers and sellers of goods to secure custom to themselves by APPENDIX. 705 Leather Cloth Co. v. American Leather Cloth Co. falsely leading purchasers to believe that they were buying some- thing different from that which the trade was in fact selling. Of the justice of this principle no one can doubt. It is founded on honesty and good sense, and rests on authority as well as principle. Vice-Chancellor Shadwell refused to protect a trade mark whereby the plaintiffs falsely represented the tea they were selling as being something different from what it in fact was. And there are other cases in the books resting on the same principle. The case put, by the lord chancellor, of the sale of a manu- factory of fine cloth at Bradford, in Wiltshire, to traders at Bradford, in Yorkshire, who should afterward carry on the man- ufactory there, would be another illustration of the same princi- ple. If the trader were, in such a case, to stamp his goods with the trade mark, ‘* A. B. & Co., Makers, Wilts.,”’ he would be, under the name of a trade mark, really attempting to deceive purchasers, and would be entitled to no protection, even though that had been the trade mark used by his venders. So in the case of bottles or caskets of wine stamped as being the growth of a celebrated vineyard, cheese marked as the produce of a famous dairy, or hops coming from a well-known hop garden in Kent or Surrey. No protection would be given to the sellers of such goods if they were not really the produce of the places from which they purported to come. But the counsel for the appellants argued that this principle is inapplicable to a case like the present, where the appellants fairly and openly bought the manufacture as carried on in this country, with full right to use the old trade mark. Such a course was, they contended, perfectly honest and consistent with the universal practice of trade. The lord chancellor observes, that the ground on which courts of law and courts of equity have interfered in the case of trade marks has not been well- defined, and has not been made to rest on any satisfactory prin- ciples. The right toa trade mark is a right closely resembling, though not exactly the same as, copyright. The word “ property,” when used with respect to an author’s right to the productions of his brain, is used in a sense very differ- 706 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. ent from what is meant by it when applied to a house or a watch. It means no more than thet the author has the sole right of printing or otherwise multiplying copies of his work. The right which a manufacturer has in his trade mark is the exclusive right to use it for the’ purpose of indicating where, or by whom or at what manufactory, the article to which it is affixed was manufactured, If the word “property” is aptly used with reference to copyright, I see no reason for doubting that it may with equal propriety be applied to trade marks. But I further think that the right to a trade mark may in gen- eral, treating it as property, or as an accessory of property, be sold and transferred upon a sale and transfer of the manufactory of the goods on which the mark has been used to be affixed, and may be lawfully used by the purchaser. Difficulties, how- ever, 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 instance), 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 usages of trade, they would be understood as meaning no more by the ‘use of their grandfather’s or father’s mame 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 ithe original 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. In such a case I see nothing to make it improper for the purchaser to use the old trade mark, as the mark would in such a case in- dicate only that the goods so marked were made at the manu- factory which he had purchased. The counsel for the appellants argued that this was all which APPENDIX. 407 Leather Cloth Co. v. American Leather Cloth Co. their clients had done in this case, and so that the trade mark used by them was one entitled to protection. The Lord Chan- cellor thought otherwise, and I am far from saying that I do not agree with him. But I do not think it necessary to go into this question, which appears to me one of some nicety, for I think it clear that there is in this case no infringement. The defendants’ trade mark is certainly not the same as that used by the appellants. But is it only colorably different? I think it is so different as to make it impossible to say that it is substantially the same. No general rule can be laid down as to what is or is not a mere colorable variation. All that 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. Here the difference is so palpable that no one can be de- ceived. In the first place, the shape is different. The plaintiffs’ trade mark, if trade mark it is to be called, is contained ina circle. The design of the defendants is a semicircle mounted on a parallelogram. It is said that the defendants’ goods may be so rolled as to expose only the semicircle, and so lead to the be- lief that the device in its integrity is a circle. I answer, vigi- lantibus, non dormientibus, leges subveniunt. There might, how~ ever, be some force in the observation if the upper half was the same as, or even if it closely resembled, the upper half of the plaintiffs’ device. But this is not so. The name of the com- pany is different. The word ‘¢ Crockett” is prominently exhib- ited twice in the plaintiffs’ upper half—not once in the defend- ants’. No one taking the trouble to read the two can say that he would be deceived. The gist of the complaint in all these cases is, that the de- fendants by placing the plaintiffs’ trade mark on goods manufac- tured by the defendants, have induced persons to purchase them, relying on the trade mark as proving them to be of the plaintiffs’ manufacture. This necessarily supposes some familiarity with the trade mark. But to any one at all acquainted with the plaintiffs’ trade mark in this case, I can hardly think that, even on the most cursory glance, there could be any deception. Each of the trade marks, it is true, as well that of the plaintiffs 708 APPENDIX. Leather Cloth Co. v. Hunehicaa Leather Cloth Co. as that of the defendants, contains within its periphery an eagle, or that which we suppose was meant to represent an eagle, but not at all resembling each other. The rest of the device, if it is to be called device, consists merely of words intended to indicate the nature or quality of the article, the place of its manufacture, and the names of the manufacturers. No one reading the two could fail to see that they differ in all these par- ticulars. The letters are all printed in very large type, and the diameter of the circle which contains them is above six inches, so that there can be no difficulty in deciphering what is stamped. I mention this because, if, instead of occupying the large space, the whole had been engraved ona stamp of the size of sixpence or a shilling, so as not to be capable of being read with- out a magnifying glass, or even without close examination, the case might have been different. A person purchasing leather cloth so stamped might perhaps fairly say, I did not attempt to decipher what was stamped on the article which I bought: I saw it had on it what appeared to be and what I could not dis- cover not to be the plaintiffs’ stamp, and I therefore took it for granted it was the produce of their manufactory. But this can not apply to a case like that now befeore us, where that which is called a trade mark is in truth an annoucement of the names of the manufacturers, the style of the firm, and the place of the manufacture, in large letters, not only capable of being easily read, but intended to be read by all to whom the goods are ex- posed for sale. The object of the plaintiffs in the use of their device was to announce (I do not say unfairly or dishonestly to announce) to purchasers, that they were buying goods manufac- tured at what was the original International Leather Cloth Com- pany, at West Ham, carried on by the Messrs. Crockett. I do not think that a firm using such a device by way of trade mark can say that a rival manufacturer is guilty of an infringement when he has adopted a device differing in shape, and announcing in letters equally large and legible, the name of a different firm manufacturing goods at a different place. On this short ground I think that the appeal ought to be dis-, missed with costs. APPENDIX. 709 Leather Cloth Co. v. American Leather Cloth Co. Lorp Kincspown. My lords, there are two questions to be decided in this case. First, whether the plaintiffs, the present appellants, have proved their allegation that their right to the ex- clusive use of what is called their trade mark has been violated by the defendants. Secondly, if that fact be established, whether there are such misrepresentations made by the plaintiffs in their trade mark as to disentitle them to protection in a court of equity. The rules of law applicable to both questions are sufficiently clear and simple, though some difference of opinion seems to pre- vail as to the precise principles on which they rest, and great difficulty is often found in applying (in this as in other matters) known rules to the facts of particular cases. The fundamental rule is, that one man has no right to put off his goods for sale as the goods of a rival trader, and he can not, therefore, in the lan- guage of Lord Langdale, in the case of Perry v. Truefitt, “be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person.” A man may mark his own manufacture, either by his name, or by using for the purpose any symbol or emblem, however unmeaning in itself; 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 stamp it upon his goods of a similar descrip- tion. This is what, I apprehend, is usually meant by a trade mark, just as the broad arrow has been adopted to mark ggv- ernment stores ; a mark having no meaning in itself, but adopted by and appropriated to the government. The plaintiff’s trade mark, or what they call such, is of a different description, and, under the second question for consideration, the difference may be material, but for the first question it does not seem to me to be so. In dealing with this point it may be useful to consider, first, what representations the defendants had a right to make 3 and next, what representations they actually have made. The leather cloth of which the manufacture was first invented or in- troduced into this country by the Crocketts was not the subject of any patent. ‘The defendants had aright to manufacture the same article, and to represent it as the same with the article 7i0 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. manufactured by Crocketts. And if the article had acquired in the market the name of Crocketts’ Leather Cloth, not as ex- pressing the maker of the particular specimen, but as describing the nature of the article, by whomsoever made, they had a right in that sense to manufacture Crocketts’ leather cloth, and to sell it by that name. On the other hand, they had no right, directly or indirectly, to represent that the article which they sold was manufactured by Crocketts or by any person to whom Crocketts had as- signed their business or their rights. They had no right to do this, either by positive statement, or by adopting the trade mark of Crocketts & Co., or of the plaintiffs, to whom Crocketts had assigned it, or by using a trade mark so nearly resembling that of the plaintiifs as to be calculated to mislead incautious pur- chasers. These being, as I conceive, the rights of the defendants, and the limits of those rights, what is it that they have actually done, and in what respect have they infringed the rights of the plaintiffs ? That depends upon the question how far the defendants’ trade mark bears such a resemblance to that of the plaintiffs as to be calculated to deceive incautious purchasers. If we compare the statements of the two trade marks, there is no statement in the one which can be considered as identical with, or, indeed, as resembling the other, except this, that both profess to sell leather cloth—a profession which both have a right to make, The defendants describe their article as ‘* leather cloth manu- factured by their manager, late with J. R. & C. P. Crockett & Co.,” clearly showing that they do not pretend that their cloth is manufactured by that firm, or by any persons who have suc- ceeded in business to that firm. The plaintiffs, on the other hand, describe their article as ** Crocketts & Co.’s tanned leather cloth, patented Jan. 24, 56, J. R. & C. P. Crockett, manufac - turers.” Neither in the description of the article to be sold nor of the makers is there anything to be found which could induce any person of common sense to suppose that in buying the de- fendants’ goods he was buying what had been manufactured by the plaintiffs. But it is said that in the form of the stamp, the APPENDIX, 7X11 Leather Cloth Co. ». American Leather Cloth Co. adoption of the American eagle as an emblem, and the colloca- tion of the words J. R. & C. P. Crockett Be Co., there is an obvious imitation of the plaintiffs’ mark likely to lend to a mis- take of the defendants’ goods for the goods of the plaintiffs. On comparing the two stamps there does not appear to me to be any such general resemblance as is relied on, nor do I think that there was in truth any intention to produce such result, though the intention is immaterial if the result be produced. I think that the object of the defendants was of another kind; that their object was not to represent their company as the plaintiff’ company, or their goods as the plaintiffs’ goods, or to produce any confusion between the two, but to represent them- selves as a rival company manufacturing and selling the same article with the plaintiffs, viz., the Jeather cloth invented, or sup- posed to have been invented, by Crocketts in America, and which they desire to recommend to customers by holding out that it is manufactured, not by Crocketts, but by persons wno, having been in the employment of Crocketts, may bz supposed to have acquired complete knowledge of their process. Now these representations are no infringement of the plaint- iffs’ rights, and the purpose which I have supposed accounts for the similarity, as far as there can be said to be any similarity between the trade marks of the two companies. The defend- ants wish to represent that their business consists in manufac- turing and selling, not merely leather cloth, but the particular eater cloth invented in America by Crocketts, and they there- fore take the name of the American Leather Cloth Company. For the same reason they adopt the American eagle as a balge; but their figure has not the smallest resemblance to the same emblem on the plaintiffs’ representation. For the same reason they refer in prominent characters to J. R. & C. P. Crockett & Co. for the purpose of showing that they manufacture the same article which Crocketts manufactured, and have the means of using the same processes which Crocketts used, by the employ- ment of a person who has been in the service of those gentlemen, If this statement be true, the defendants are justified in mak- ing it; but if it be untrue, however reprehensible the statement 712 APPENDIX. Leather Cloth Co. v. Americau Leather Cloth Co. may be, it does not constitute a colorable imitation of the plaint- iffs’ trade mark, or amount to an infringement of their rights. I think, therefore, that the plaintiffs have failed in proving the fact which forms the foundation of their case, and in establish- ing any ground for the interference of the court, and that for this reason, if for no other, the appeal must be dismissed. But it may be proper to make some observations on the second point, which is one of great importance. Nobody doubts that a trader may be guilty of such misrepre- sentations with respect to his goods as to amount to a fraud upon the public, and to disentitle him, on that ground, against a rival trader, to the relief in a court of equity which he might other- wise claim. What would constitute a misrepresentation of this description may, in particular cases, be a reasonable subject of doubt, and it was, in the present case, the ground of the differ- ence between the two judgments under consideration. The general rule seems to be that the mis-statement of any material fact calculated to deceive the public, will be sufficient for the purpose. This was the foundation of the judgment in Perry v. Truefitt, and in the case of Howqua’s Mixture (Pidding v. How), and several other cases, as well as of the lord chan- cellor’s judgment in the case before us. It was said that if this principle be pressed to its fullest extent, it will prevent the use of the name of a firm by any but the original partners, and will, of course, prevent, on a transfer of the business, the right to use the name by any other persons. But the answer to this is, that by usage of trade the name of a firm is understood not to be confined to those who first adopted it, but to extend to and include persons who had afterward been introduced as partners, or persons to whom the original partners have transferred their business. The name of the firm continues to be used in many cases long after all the original traders have died, or ceased to have any interest in the concern, as in the great banking houses of Child and Coutts, and many other mer- cantile houses. If a manufacturing house uses the name of the firm, and stamps the name of its firm upon its goods, though the name of APPENDIX. 719 Leather Cloth Co. » American Leather Cloth Co. the firm no longer represents the same persons as at first, it is no fraud upon the public for the reasons I have already alluded to. For the same reason, the use of the old trade mark of the firm by the new partners or their successors (if the term ‘‘ trade mark” be understood in what I have already said is its proper sense) is no fraud upon the public; it is only a statement that the goods are the goods of the firm whose trade mark they bear. But trade marks, or what are called such, may go much further than this, and contain, as those in the present case do, state- ments materially affecting the value of the goods to which they are affixed. In such cases they must be judged of like state- ments made in separate labels or advertisements. The question will be, are such statements true? and if not, are they misstatements of material facts, and calculated to im- pose upon the public? If a trade mark represents an article as protected by a patent, when in fact it is not protected, it seems to me that such a statement prima facie amounts to a misrepresentation of an im- portant fact, which would disentitle the owner of the trade mark to relief in a court of equity against any one who pirated it. In Flavel v. Harrison, Vice-Chancellor Wood intimated his opinion that this would be so when there never had been any patent atall. But, in the subsequent case of Edleston v. Vick, he seems to doubt whether the rule would be the same if there had originally been a patent, and the statement in the trade mark being true when first introduced, had been continued after it had ceased to be true. I confess that I should have great difficulty in assenting to that distinction. If the word ‘ patent” be not so used as to indicate the existing protection of a patent, but merely as part of the designation of an article known in the market by that term (and this I collect to have been the main ground of his honor’s decision), then I quite agree in his view. In such case nobody is meant to be deceived, or is deceived. A patent may have expired fifty years ago, and yet the name of “patent” may have become attached to the article, and be used in the trade as designating it. But if the trade mark represents the article as protected by patent, when in fact it is not so pro- 714 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. tected, I can not think that it can make any difference whether the protection never existed or has ceased to exist. If, in this case, the true effect of the plaintiffs’ trade mark or label be to represent that the article stamped with it is pro- tected by a patent, whether it be understood to mean tanned cloth, or leather cloth of any other description, then I think it is a misrepresentation of a matcrial fact, calculated to mislead the public, and sufficient to debar the plaintiffs from relief against piracy in a court of equity. And [ agree with the lord chan- cellor in thinking that this is a true meaning of the statement. With respect to the use of the words “J. R. & C. P. Crock- ett, manufacturers,” the question is involved in more difficulty, Though a man may assign his business and the use of his firm, and of his trade mark as belonging to it, that proceeds, in my opinion, upon the ground which I have stated, that the use of the name of the firm is not understood in trade to signify that certain individuals, and no others, are engaged in the concern. Though a man may have a property in a trade mark in the sense of having a right to exclude any other trader from the use of it in selling the same description of goods, it does not follow that he can in all cases give another person a right to use it, or to use his name. If an artist or an artisan has acquired by his personal skill and ability a reputation which gives to his works in the market a higher value than those of other artists or artisans, he can not give to any other person the right to affix his name or mark to their goods, because he can not give to them the right to prac- tice a fraud upon the public. The reference to the Crocketts, in the words to which I have adverted, is obviously not used as representing the name of the plaintiffs’ firm, for that is stated in the circle of the trade mark. Can it be understood as meaning only that the plaintiffs have succeeded to, and are entitled to use the name of that firm? I think that it can not, and that it must be understood to mean that those individuals personally are concerned in the manufac- ture of the goods so stamped. This is a circumstance calculated, 4PPENDIX. 715 Leather Cloth Co. v. American Leather Cloth Co. if true, to give an increased value to the goods, and, being un- true, it seems to me to amount to an imposition on the public. On the whole, I agree with my noble friend in thinking that the appeal must be dismissed, with costs. Tue Lorp CnHancetior. My lords, although I might be well satished, and perhaps it might be the better course to have left the decision of this appeal upon the opinions of my two noble and learned friends and the judgment which I gave in the court below, yet I feel it to be my bounden duty to say that, having attended with great care to the arguments of the appel- lants’ counsel, distinguished as they were by great learning and ability, and having also carefully attended to the judgments which have been delivered by my noble and learned friends, the effect upon my mind has been this: that I am satisfied that I assigned for my decision in the court below a ground narrower than I might have taken as the basis of that judgment. There were circumstances which induced me to think that it was nec- essary to consider the case from the particular point of view which I adopted, and having found that the ground was sufficient for the judgment which I gave, I did not enter into the consid- eration of the wider view of the subject, which has been so forcibly urged by my noble and learned friends. But, in truth, my lords, not only do I concur with them, but I am satisfied that I ought to have regarded this affix to the plaintiffs’ goods, which is here denominated a “‘trade mark,” as something which, according to the anterior usage and application of the words “trade mark,” by no means resembles or comes within the de- scription of anything that has hitherto been properly designated by that name. What is here called by the appellants a “‘trade mark” is, in reality, an advertisement of the character and quality of their goods; and, dropping for a moment all reference to the incorrect and untrue statements contained in that advertisement, I will take only what is called the “trade mark” of the plaintiffs, and the rival or antagonistic trade mark of the defendants, and com- pare them together, taking them as if they were simply—what 716 APPENDIX. Leather Cloth Co. v. American Leather Cloth Co. in reality they are—two advertisements, each affixed, by way of label, to the articles manufactured by the parties respectively. Now, comparing them merely. as advertisements, and taking them in that character alone, we shall at once find that there are a variety of statements in the advertisement of the appel- lants which are not to be found in any form, direct or indirect, in the advertisement of the respondents. The advertisement is the sole foundation of the plaintiffs’ case, and their allegations must be reduced in substance to this: that having advertised and described their goods in a particular manner, the defendants have borrowed their advertisements and described their goods in substantially the same manner. Let us see, then, whether that is at all correct. In the first place, the plaintiffs in their advertisements describe their manufacture as “ Crockett & Co. Tanned Leather Cloth.” The sole denomi- nation applied by the advertisement of the defendants is ‘‘ leather cloth” (which was perfectly well-known independently of “ Crockett & Co.’s cloth”). Further, the plaintiffs state not only that they sell and make Crockett & Co.’s leather cloth, but that it is ‘‘ tanned leather cloth.” An allegation to which there is nothing whatever sim- ilar or corresponding in the advertisement of the defendants. Further, the appellants represent that their article is the man- ufacture of J. R. & C. P. Crockett—for they are described as the manufacturers. Not only is there nothing correspondent to that in the advertisement of the defendants, but what the de- fendants assert is simply not that it is manufactured by Crockett & Co., but that it is manufactured by their manager, who was formerly in the employ of J. R. & C. P. Crockett & Co. If, therefore, these are regarded as being what in reality they are, representations of two different articles, it is impossible to say that the representation which is contained in the advertisement of the one contains either identically or substantially the rep- resentations which are contained in the advertisements of the other. And if you drop the statements in words, and take only the symbols employed in the one case and in the other, it will be found that they differ entirely in their character and effect in the ~~. APPENDIX. 717 Beard v. Turner. two cases. In the one case it will be seen that you have the eagle, with his wings fully extended; in the other case you would have that which is called, I believe, in America, the ““screaming eagle,” armed with his talons, and perfectly differ- ent in character and shape from the other. There is also an- other which seems to be intended to be a representation of a sparrow-hawk, which again is very different from the others. I have added these few observations for the purpose of show- ing not only that the ground which I took in the court below was a ground sufficient for my decision, but also that the grounds which have been now superadded by my noble and learned friends, and which I regret that I did not more fully consider and adopt as the basis of my former judgment, would warrant the same con- clusion, and would perhaps have tended still more in faver of the defendants. I concur entirely inthe motion that has been made that this appeal be dismissed with costs. Decree affirmed and petition of appeal dismissed with costs. BEARD v. TURNER. Vice-Chancellor Wood's Court, February, 1866. Reported, 13 L, FT. Ri, NWS. 34g: A plaintiff laid by for two years before filing his bill for an injunction, having seen la- bels of the defendant exhibited publicly, which he now complained of as being colorable imitations of his label. Held, that such laches disentitled the plaintiff to relief. . ‘ : . A 7 ; - . TreVice-CHANCELLOR. I have one word to say upon acqui- escence, because I do conceive that if I had come toa different view of this case, I am glad to have heard it out, and because it is important with reference to costs if I had come toa different 718 APPENDIX. Beard v. Turner. conclusion, and had misgivings in my mind much stronger than any that arise as to the question about the use of the crown, and as to the bona fides of the defendant in this matter, and whether he was contemplating fraud. I confess that if a person sees the identical thing done of which he complains two years before he files his bill, he places himself in the position which is fully within the authorities cited. The principles laid down are well known: First. If you induce another to lay out money by keeping back a right which you intend at some future time to assert, you may induce him to incur serious expenditure. That was the well- known case before Lord Hardwicke. Where I was wrong in the photographic case, was that in that case there was a slight expenditure. If it had been the building of a house instead of a photographic studio, I have little doubt the conclusion would have been otherwise. If you allow considerable expenditure to be made, you are not allowed afterward to question the title of the person who has made that expenditure. But that rule would not apply to the case before me. I should not consider the making of these dies to be.an expenditure of that kind. But suppose you wish to profit by that act of which you say you have a right to complain, and shall at some future period complain of, then I apprehend this court will say, you: must come here at once, for this reason that you ask in the bill for an account of the profits made by this gentleman upon the sale of these goods. The plaintiff may say: “It may answer my purpose to let the defendant go on selling four or five years, and then at the end of that time to say he is my salesman, and I come for my account of profits.” I know of no instance in which the court has given relief with reference to a trade mark except on a prompt application. By not complaining at the time when you might complain (I do not say that it is your intention, we must judze of the intention by the necessary result), you are lying by, the man continuing to use your property, with the hope (and such is the prayer in your bill filed two or three years after- ward) of obtaining those profits which you stood by allowing him to make under this designation, without apprising him of your intention to make any such use of it. On that ground it APPENDIX. 719 Beard vw. Turner. falls within the principle enunciated by Lord St. Leonards in the Irish case referred to, in which it is stated that it is a fraud to allow a plaintiff to avail himself of delay to obtain benefit for himself. In that case you will not grant him relief. You will assume when he allows another wrongfully to use that which in the plaintiff’s judgment would facilitate a rival in trade, that being so, unless you come quickly, you must make a rival in trade your agent, for the purpose of carrying on that business, and for the purpose of getting an account at the end of four years. When it is said that you had no proof, it should be remembered that you had the die, and people do not stamp their needles and not use them, and the stamping was a fraud under which you could have proceeded. Why not have sent him a letter such as you have sent him now, and the letter now sent I suppose has led to this litigation. Ifit had been ina milder form, perhaps litigation never would have arisen. When you took counsel’s opinion, why not have communicated with him? What right had you to assume, that a person honestly exhibiting his goods at the exhibition, giving his name and address, coming in the exhibition with his articles, would not give you ananswer? Why not try? I apprehend it will not do for a person to say, ‘©T knew this was done two years ago, but I had not then got up my evidence.” What attempt did he make? Whether he wrote to defendant, or whether the defendant received it, or what was done, we know not. It appears to me, therefore, that if I had come toa different conclusion, it might have affected the question of costs, although it would not have affected the question of relief. I could not give a person an opportunity of lying by, and then ask- ing for an account of the profits made by an injury committed. However, in this case, on the whole of the evidence, having seen what has been done by the plaintiff and what has been done by the defendant, I must come to the conclusion that there is not that case of fraud made out which would justify me in inter- fering against the present defendant ; therefore, I can only dis- miss the bill with costs. 720 APPENDIX. Wotherspoon v. Currie. WoTHERSPOON Vv. CURRIE. V. C. Malin’s Court, 1870. Reported, 23 L. T. R. THis was a motion on behalf of William Wotherspoon, of Queen street, Cheapside, and of Paisley and Glasgow, and on behalf of Alexander Abercrombie, starch manufacturers, trading under the style of Robert Wotherspoon & Co., for an injunction to restrain the defendant, John Currie, trading as Currie & Co., of Paisley, from applying the word “Glenfield” to or in connec- tion with starch manufactured by or for him, and from using the word “Glenfield” upon any labels affixed to packets of starch manufactured by or for him, and from selling the same as Glen- field starch. © It appeared that for several years before 1847, Messrs. Fulton & Co., of Glenfield, near Paisley, manufactured powder starch, principally from East India sago, called ‘“*Glenfield Patent Double Refined Powder Starch,” commonly known as “Glenfield Starch.” In January, 1847, the plaintiff, William Wotherspoon, purchased of Messrs. Fulton & Co. their business and works at Glenfield, and the exclusive right of manufacturing starch and selling it under the name of “Glenfield Patent Starch.” The plaintiff after- ward removed his manufactory to Maxwelton, near Paisley, where his starch is now made and sold. The defendant, Currie, rented from Messrs. Fulton & Co., a small building attached to their dyeing-works at Glenfield, and had manufactured starch, which was sold in packets of a similar size and appearance as those of the plaintiff, labeled “The Royal Palace Double Refined Patent Powder Starch, manufactured by Currie & Co., Glenfield.” The plaintiff’s case was that the defendant had taken the small cottage or building at Glenfield for the express purpose of inducing people to believe that his starch was the article made by the plaintiff. For the defendant it was urged that, as he was an actual resident at Glenfield, and his manufactory was there, APPENDIX. 721 Wotherspoon ». Currie. he had as much right to put his address upon the labels of the starch as the plaintiff had, who did not actually reside at Glen- field. An injunction was granted, the vice-chancellor remarking that he had never known acase in which a defendant had been guilty of more reprehensible conduct. Nore.—The injunction granted in'this case was, on appeal, dissolved. 722 APPENDIX. U. S. Statute concerning Trade Marks. Tue Unitrep States STATUTE CONCERNING THE Registration of Trade Marks, WITH CONSTRUCTIONS OF THE COMMISSIONERS OF PATENTS, ETC. An Act to revise, consolidate, and amend tke statutes relating to patents and copyrights. Sec. 77. Who entitled to trade marks, and requirements concern- ing the same. And be it further enacted, That 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 corporation 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 requirements, to wit: First. By causing to be recorded in the Patent Office the names of the parties and their residences and place of business, who desire the protection of the trade mark. Second. The class of merchandise and the particular descrip- tion of goods comprised in such class, by which the trade mark has been or is intended to be appropriated. i APPENDIX. 723 U. S. Statute concerning Trade Marks. Third. A description of the trade mark itself, with fac similes hereof, and the mode in which it has been or is intended to be applied and used. Fourth, The length of time, if any, during which the trade mark has been used. Fifth. The payment of a fee of twenty-five dollars, in the same manner and for the same purpose as the fee required for patents. Sixth. The compliance with such regulations as may be pre- scribed by the Commissioner of Patents. Seventh. The filing of a declaration, under the oath of the person, or of some member of the firm or officer of the corpo- ration, to the effect that the party claiming protection for the trade mark has a right to the use of the same, and that no other person, firm, or corporation has the right to such use, either in the identical form or having such near resemblance thereto, as might be calculated to deceive, and that the description and fac similes presented for record are true copies of the trade mark sought to be protected. Sec. 78. Term for which trade marks shall remain in force. And be it further enacted, That such trade mark shall remain in ‘force for thirty years from the date of such registration, except in cases where such trade mark is claimed for and applied to articles not manufactured in this country and in which it receives protection under the laws of any foreign country for a shorter period, in which case it shall cease to have any force in this country by virtue of this act at the same time that it becomes of no effect elsewhere, and during the period that it remains in force it shall entitle the person, firm, or corporation registering the same to the exclusive use thereof so far as regards the de- scription of goods to which it is appropriated in the statement filed under oath as aforesaid, and no other person shall lawfully use the same trade mark, or substantially the same, or so nearly resembling it as to be calculated to deceive, upon substantially the same description of goods: Provided, That six months prior to the expiration of said term of thirty years, application may be made for a renewal of such registration, under regulations to be 724 APPENDIX. U. S. Statute concerning Trade Marks. prescribed by the Commissioner of Patents, and the fee for such renewal shall be the same as for the original registration ; certifi- cate of such renewal shall be issued in the same manner as for the original registration, and such trade mark shall remain in force for a further term of thirty years: And provided further, That nothing in this section shall be construed by any court as abridging or in any manner affecting unfavorably the claim of any person, firm, corporation, or company to any trade mark after the expiration of the term for which such trade mark was registered. Sec. 79. Remedy for wrongful use of trade marks. And be it further enacted, That any person or corporation who shall re- produce, counterfeit, copy, or imitate any such recorded trade mark, and affix the same to goods of substantially the same de- scriptive properties and qualities as those referred to in the regis- tration, shall be liable to an action on the case for damages for such wrongful use of said trade mark, at the suit of the owner thereof, in any court of competent jurisdiction in the United States, and the party aggrieved shall also have his remedy accord- ing to the course of equity to enjoin the wrongful use of his trade mark and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful use. The Commissioner of Patents shall not receive and record any pro- posed trade mark which is not and can not become a lawful trade mark, or which is merely the name of a person, firm, or corporation only, unaccompanied by a mark sufficient to distin- guish it from the same {name when used by other persons, or which is identical with a trade mark appropriate to the same class of merchandise and belonging to a different owner, and already registered or received for registration, or which so nearly resem- bles such last-mentioned trade mark as to be likely to deceive the public: Provided, That this section shall not prevent the registry of any lawful trade mark rightfully used at the time of the passage of this act. Sec. 80. Proof of registration. And be it further enacted, That the time of the receipt of any trade mark at the Patent Office for registration shall be noted and recorded, and copies of the > APPENDIX. 726 U. S. Statute concerning Trade Marks. trade mark and of the date of the receipt thereof, and of the statement filed therewith, under the seal of the Patent Office, certified by the commissioner, shall be evidence in any suit in which such trade mark shall be brought in controversy. Sec. 81. Rules for transfer of trade marks, And be it further enacted, That the Commissioner of Patents is authorized to make rules, regulations, and prescribe forms for the transfer of the right to the use of such trade marks, conforming as nearly as practicable to the requirements of law respecting the transfer and transmission of copyrights. Sec. 82. Penalty for fraudulent registration. And be it further enacted, That any person who shall procure the registry of any trade mark, or of himself as the owner thereof, or an entry respecting a trade mark in the Patent Office under this act, by making any false or fraudulent representations or declarations, verbally or in writing, or by any fraudulent means, shall be liable to pay damages in consequence of any such registry or entry to the person injured thereby, to be recovered in an action on the case before any court of competent jurisdiction within the United States. Sec. 83. Common law remedies preserved. And be it further enacted, That nothing in this act shall prevent, lessen, impeach, or avoid any remedy at law or in equity, which any party ag- grieved by any wrongful use of any trade mark might have had if this act had not been passed. Sec. 84. No action to be sustained on fraudulent or deceptive trade marks. And be it further enacted, That no action shall be main- tained under the provisions of this act by any person claiming the exclusive right to any trade mark which is used or claimed in any unlawful business, or upon any article which is injurious in itself, or upon any trade mark which has been fraudulently obtained, or which has been formed and used with the design of deceiving the public in the purchase or use of any article of mer- chandise. APPROVED, July 8, 1870. 726 APPENDIX. Rules of Practice affecting Trade Marks. Rutes oF Practice AFFECTING THE Registration of Trade Marks. [ Published, August, 1871.] 84. 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 corporation 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 ob- tain protection for such lawful trade mark by complying with the following requirements, to wit: First. By causing to be recorded in the Patent Office the names of the parties, and their residences and place of business, who desire the protection of the trade mark. Second. 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. Third. A description of the trade mark itself, with fac similes thereof, and the mode in which it has been or is intended to be applied and used. Fourth. The length of time, if any, during which the trade mark has been used. Fifth. The payment of a fee of twenty-five dollars, in the same manner and for the same purpose as the fee required for patents. APPENDIX. 7a7 Rules of* Practice affecting Trade Marks. Sixth. The compliance with such regulations as may be pre- scribed by the Commissioner of Patents. Seventh. The filing of a declaration, under the oath of the person, or of some member of the firm or officer of the cor- poration, to the effect that the party claiming protection for the trade mark has a right to the use of the same, and that no other person, firm, or corporation has a right to such use, either in the identical form or having such near resemblance thereto as might be calculated to deceive, and that the description and fac similes presented for record are true copies of the trade mark sought to be protected. The petition asking for registration should be accompanied with a distinct statement or specification, setting forth the length of time the trade mark has been used, the mode in which it is intended to apply it, and the particular description of goods comprised in the class by which it has been appropriated, and giving a full description of the design proposed, particularly dis- tinguishing between the essential and the non-essential features thereof. 85. Such trade mark will remain in force for thirty years, and may, upon the payment of a second fee, be renewed for thirty years longer, except in cases where such trade mark is claimed for, and applied to, articles not manufactured in this country, and in which it receives protection under the laws of any foreign country for a shorter period, in which case it shall cease to have force in this country, by virtue of the registration, at the same time that it becomes of no effect elsewhere. 86. No proposed trade mark will be received or recorded which is not and can not become a lawful trade mark, or which is merely the name of a person, firm, or corporation only, un- accompanied by a mark sufficient to distinguish it from the same name when used by other persons, or which is identical with a trade mark appropriate to the same class of merchandise and belonging to a different owner, and already registered or received for registration, or which so nearly resembles such last-mentioned trade mark as to be likely to deceive the public; but any lawful 728 APPENDIX. Rules of Practice affecting Trade Marks. trade mark rightfully used at the time of the passage of the act relating to trade marks (July 8, 1870) may be registered. All applications for registration are referred in the first in- stance to a special examiner. From an adverse decision by such examiner upon the applicant’s right to registration, an appeal directly to the Commissioner will lie, no fee being charged therefor. In case of conflicting applications for registration, the office reserves the right to declare an interference, in order that the parties may have opportunity to prove priority of right; and the proceedings on such interference will follow, as nearly as prac- ticable, the practice in interferences upon applications for patents. 87. Whenever it is necessary to represent the proposed trade mark by a drawing or engraving, the same rule as to size, mounting, and number of extra copies will be observed as in the case of designs. 88. The right to the use of any trade mark is assignable by any instrument of writing, and such assignment must be re- corded in the Patent Office within sixty days after its execution, in default of which it shall be void as against any subsequent pur- chaser or mortgagee for a valuable consideration without notice. The fees will be the same as are prescribed for recording assign- ments of patents. APPENDIX. 729 Constructions of Commissioners of Patents affecting Trade Marks. ConsTRucTIONS OF CoMMISSIONERS OF PaTENTS AFFECTING THE Registration of ‘Trade Marks. In the matter of the application of R. W. English for regis- try of a trade mark, November, 1870. FisHer, Commissioner. Applicant offers for registration three labels in the following form: ‘*R. W. English’s X Broom, Buf- falo, New York. Order English’s X Brooms.” The others are precisely the same, except that in one the character XX, and in the other XXX, are substituted for the ‘“‘X” in the first. He describes his trade mark as consisting of the letter X, but pro- poses to use a greater number of such letters to designate vari- ous grades, ¢. g.: X, XX, and XXX, being used to designate first, second, or third quality. The examiner says, ‘The label filed has no new or peculiar characteristic to make it a lawful trade mark. The letters used in printing it are of the ordinary kind, set up in a common way, and the letter X used to express quality, is commonly used for this purpose by all liquor dealers, particularly for marking ale.” The question with reference to trade marks is not whether the particular mark is new in its application to goods of all kinds, but whether it is new in the special application proposed for it. In the case of this species of property a double use is permissible. The fact that a mark has been used for a bottle is no bar to its use by another fora broom. . . . One man may call his knives “XL” knives, and another his baskets ‘“‘ XL” baskets. 730 APPENDIX Constructions of Commissioners of Patents affecting Trade Marks. The use of this mark in no way implies that the baskets were made by the manufacturer of the knives, or vice versa. The letter X when employed to denote a particular article of manufacture, being in no way descriptive, but a new arbitrary character. which may, when adopted and used, indicate the origin and ownership of the goods to which it is applied, may well con- stitute a proper trade mark. The use of such a mark for ale, as has been already indicated, would in no way bar its use for brooms; and upon this point the decision of the examiner is reversed. In my opinion, however, the marks XX and XXX are as dis- tinguishable from X as the latter is from Y or Z, or any other character. If it is desired to register them so as to protect them, they must be registered as independent marks. Applicant can have no exclusive right to the use of the letter X, nor can it be conceded that the multiplication of the letters is an ordinary, mode of indicating quality. For such purpose the use of more than one letter is as arbitrary as the selection of the letter itself. If it were otherwise, the effect would be to destroy-the validity of the trade mark which is founded upon the assumption that it is an ordinary character without ordinary signification, Comm'rs Decisions, 1870, 142. In the matter of the application of C. L. Hauthaway & Sons ‘for registry of a trade mark, April, 1871. .Leccett, Commissioner. The applicants seek to register the words “* beeswax oil” as a trade mark. The primary design of a trade mark is to point out the origin or ownership of the article offered for sale. It must consist of some word or sign, or de- vice, other than the generic name and words descriptive of quality. The name “oil”? is generic. The word ‘‘ beeswax” is doubtless intended to be more or less descriptive of the quality or nature of the oil. Generic names and words descriptive of quality are common property and no one has a right to an exclu- sive appropriation of them. APPENDIX. 731 Constructions of Commissioners of Patents affecting Trade Marks. The decision of the examiner is affirmed, and the registry re- fused. Comm’rs Decisions, 1871, 11. In the matter of the application of Porter Blanchard’s Sons for registry of a trade mark, April, 1871. Leccett, Commissioner. The applicant seeks to have regis- tered as a trade mark the words “‘ The Blanchard Churn,” to be stenciled on the side or lid of the churns they manufacture and sell. The examiner refused the application, and gave as a reason for the refusal, “‘The label of applicant is not sufficient to en- title it to registry as a trade mark; the words should be ac- companied by some sign or mark to distinguish the same from the mere words alone, to the use of which latter other possible parties of the name in the like business might have an equal right.” 1 Section 79 of the act approved July 8, 1870, in the second clause, provides that ‘“‘the commissioner of patents shall not re- ceive and record any proposed trade mark which is not and can not become a lawful trade mark, or which is merely the name of a person, firm, or corporation only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons,” etc. The question, what constitutes a lawful trade mark, is left by the statute just where the common law leaves it, with a single limitation, that it shall not be the mere name of a person, firm, or corporation only, unaccompanied by a maré sufficient to dis- tinguish it from the same name when used by other persons. The only thing about this limitation that is at all ambiguous is the meaning of the word ‘‘mark.”” The examiner seems to un- derstand by this word some device, figure, or emblem, some- thing other than mere words. In this interpretation of the word “ mark,” I am clearly of the opinion that the examiner is wrong. Every man in the United States who is engaged in trade or manufacturing is entitled to the registry of a trade mark if he chooses to adopt one; and to require each person to invent a device or symbol differing from all others in the same trade, would yn APPENDIX. Constructions of Commissioners of Patents affecting Trade Marks. be to require an impossibility; and Congress certainly never thought of attaching such a meaning to the word ‘‘ mark.” This word had obtained a technical meaning before the act of July 8, 1870. The term ‘trade mark” was in very general use, and by such use, and by the constructions and rulings of courts, was made to include not only devices, and emblems, and sym- bols, but single words, and all manner of combinations of words, without devices, Congress took this word ‘‘mark,” with the meaning it had obtained in the compound word “trade mark,” and introduced it into the statute. Previous to the passage of this law the courts had not been uniform in their decisions as to the mere names of persons, firms, or corporations being legal trade marks, and the statute settled this question by saying that the mere name of a person, firm, or corporation only, unaccom- panied by some other “‘ mark,” that is, some other word or words, or letter, or figure, or sign, or symbol, or device—in short, something in addition to the mere name only—should not be registered as a trade mark. I am clearly of the opinion that any word or any combination of words, with the single exception named, that would consti- tute a trade mark under the common law, may be registered as such under the statute of July 8, 1870. The expression, ‘‘ The Blanchard Churn,” certainly is not the mere name of a person only, but the name is accompanied by the marks “‘ The” and ‘¢Churn,” hence it is not excluded by the limiting clause of the statute. ‘The only question, then, is as to whether it is a legal trade mark at common law. In the case of The Amoskeag Manufacturing Co. v. Spear, 2 Sand. S. C. 599, the court says: ‘“‘Every manufacturer and every merchant for whom goods are manufactured has an unquestionable right to distinguish the goods that he manufactures or sells by a peculiar mark or device, in order that they may be known as his in the market for which he intends them, that he may thus secure the profits that their supe- rior repute, as his, may be the means of gaining. ‘The principle is well settled that a manufacturer may, by priority of appropriation of names, letters, marks, or symbols of APPENDIX. 733 Constructions of Commissioners of Patents affecting Trade Marks. any kind to distinguish his manufactures, acquire a property therein as a trade mark. Stokes v. Landgraff, 17 Barb. 608. ‘* A manufacturer of goods who, in order to designate his own manufacture, has adopted names, marks, or labels, which are peculiar and not before used, is entitled to be protected in a court of equity in their use. Williams v. Johnson, 2 Bos. 6. “Though the mark has no other meaning than to distinguish their manufacture from others, if the party has given it out as his mark and by it the article has acquired reputation and sale, he is entitled to protection in it. Ibid. 6. “Any contrivance, design, device, name, or symbol which points out the true source and origin of the goods to which it is applied, or which designates the dealer’s place of business, may be employed as a trade mark, and the right to its exclusive use will be protected by the courts. Filley v. Fassett et al., Supreme Court of Missouri, vol. 8, Am. Law Reg. 402. “© The books are full of authority establishing the proposition that any device, name, symbol, or other thing may be employed as a trade mark which is adapted to accomplish the object pro- posed by it, that is, to point out the true source and origin of the goods to which said mark is applied.” Ibid. These quotations state the broad doctrine on the subject of trade marks as held by the courts, The following are a few among many trade marks that have been sustained by the courts, and that would not be excluded by the limiting clause of the law of July 8, 1870, viz: “ Cocoaine ” as the name of hair oil, Burnett v. Phalon, g Bos. 1923; ‘6 303,” asa mark for pens, Gillott v. Esterbrook, 47 Barb. 545; ‘¢ Sykes’ Patent,” as a mark for shot bolts, Syes v. Sykes, 3 Barn. & Cres. 543; “ Bell’s Life,” as the name of a news- paper, Clement v. Maddick, 22 Law Rep. 428; “H. H. C.” as a mark on plows, Ransom v. Bental, 3 Law J. Reps. N. S. 1613 “Roger Williams Long Cloth,” Barrows v. Knight, 6 R. I. 4343 “Anatolia,” as a brand for liquorice, Adc Andrew v. Bas- sett, 10 Jur. N. S. 550; ‘Revere House,” as the name of a hotel, Marsh v. Billings, 7 Cush. 322; ‘‘ Burgess’ Essence of Anchovies,” Burgess v. Burgess, 17 Eng. Law and Eq. R. 2573 734 APPENDIX. Constructions of Commissioners of Patents affecting Trade Marks. “ Morrison’s Universal Medicines,” Morrison.v. Salmon, 2 Man. & Gr. 385. It is proper here to remark that most of the trade marks here referred to were used in connection with the names of the per- sons claiming them, or with their place of business, or both, and sometimes in connection with other words. There seems, then, to be no more restriction against the choice of words, combinations of words, or names (other than the mere name of a person, firm, or corporation only) for a trade mark than of symbols or devices. The only limitation at common law in the-selection of words or devices for trade marks is, that they be so far original as, when known in the market, to distin- guish the goods of one merchant or manufacturer from those of another, and that they are not generic in their use, nor descrip- tive of quality, nor calculated to deceive the public as to their true origin or ownership. The object of a trade mark is to point out the origin and own- ership of the article offered for sale; and the more clearly the words or devices selected do this, the less objection there should be to their selection and registration as trade marks, so they avoid the limitations named. The combination of the three words, *¢ The Blanchard Churn,” seems to possess the necessary characteristics of a trade mark, and is not excluded by the limitations. The decision of the exam- iner is therefore reversed. Comm’rs Decisions, 1871, 14. In the matter of the application of R. J. Roberts for registry of trade mark, April, 1871. LeccetT, Commissioner. The applicant seeks to register the following label as a trade mark, viz: “ A Luxury. R. J. Rob- erts’ Razor-steel Scissors. The best in the world. The best is the cheapest. For sale here.” The examiner rejects the application, on the ground that the above is not a lawful trade mark under the law of July 8, 1870. I find nothing in the law referred to, nor elsewhere, to sustain the examiner’s opinion. His decision is therefore reversed. Comm’rs Decisions, 1871, 14. APPENDIX. 735 ¥ Constructions of Commissioners of Patents affecting Trade Marks. In the matter of the application of the Dutcher Temple Com- pany for registry of trade mark, September, 1871. Leccett, Commissioner. The applicant seeks to have regis- tered as a trade mark the ‘letter D, encompassed by the figure of a lozenge.” This device is placed upon ‘ Loom Temples,” manufactured by the applicants. The examiner rejects the application on the ground that the proposed trade mark has no feature that indicates ‘origin or ownership.” The examiner’s doctrine on the subject seems to be that everv trade mark must include either the name of its proprietor or his place of business, or both. The object of a trade mark is to distinguish the goods of one manufacturer or merchant from those of another, in the market. The only benefit the proprietor of a trade mark can hope to de- rive from it is that such mark may point out the goods upon which it is found as coming from him, and thereby bring cus- tomers back to him when desiring to make additional purchases. This being the only object a dealer can have in adopting a trade mark, he may generally be trusted to see that it be known where the goods came from on which the trade mark is placed. The origin of goods may be determined in many ways, pro- vided they have upon them some mark by which they may be distinguished in the market from other similar goods. The name of the manufacturer or the name of his place of business are evidently not the only means of determining the origin of marked goods. In the case of Filley v. Fassett (reported in vol. 8, American Law Register, p. 402), tried in the Supreme Court of Missouri, the judge says: “ The books are full of authority establishing the proposition that any device, name, symbol, or other thing may be employed as a trade mark which is adapted to accomplish the object pro- posed by it, that is, to point out the true source and origin of the goods to which said mark is applied.” On the strength of such authority, decision was given in favor 736 APPENDIX, Constructions of Commissioners of Patents affecting Trade Marks. of the plaintiff, sustaining the words ‘¢ Charter Oak,” accom- panied by a figure of an oak tree, cast upon the plates of stoves, as a legal trade mark. In these words and device the court, it seems, found enough to indicate ‘ origin or ownership.” With such a mark permanently attached to the stoves they were read- ily identified in the market, and, of course, could easily be traced to their origin. ‘The fact of the mark opened and pointed the way to the factory where the article was made. It was the owner’s “* ear-mark,” which he placed upon all his goods of the kind, and by which the public came to know the stoves were made by him. There are many other decisions recognizing the fact that mere symbols, or devices, or unmeaning words, may, by continued use, indicate origin, and thereby become legal trade marks, _ A careful reading of the decisions will show that the courts have held with very great unanimity that the person’s name or place are neither absolutely essential to the validity of a trade mark. If it possesses the evidence upon its face that it is put forth or given out as a distinguishing mark of the goods to which it is attached, that is, distinguishing as to origin, and not as to kind or quality, it may have all the requisites of a valid trade mark without naming the person or place whence it came. The very fact that it bears evidence of being the manufacturer’s or dealer’s private mark, by means of which his goods are distin- guished in the market, is sufficient indication of origin to warn against copying by competing dealers, and this answers the pub- lic demand. At common law, the trade mark, to become legal and to vest an exclusive right in the persons adopting it, must have been so long in use as to be known and recognized in the market. That is, a person could not adopt a trade mark to-day and successfully sue for infringement of it to-morrow. Whether the office should demand that a trade mark should have such use before admitting it to registry has been a question with the examiner ; but I am of the opinion that one object of the registry law was to settle this very question. Registry is notice to the world, and supplies the place of Jong use at common law. APPENDIX. 759 Constructions of Commissioners of Patents affecting Trade Marks. The applicant’s device is not a generic name; it is not indi- cative of quality. It does not consist of words or devices that others in the same trade would be likely to select for a similar purpose, and I see no valid reason against admitting it to reg- istry. The decision of the examiner is reversed. Comm’rs Decis- ions, 1871, 48. INDEX. ACQUIESCENCE. . An acquiescence by the owner of a trade mark in its use by an- other, is in the nature of a revocable license, and confers no right after the license is withdrawn. Am. Man. Co. v. Spear. . An acquiescence in the use of a trade mark by others fora period of twenty years does not necessarily preclude the owner from enforcing his sole right. Neither will the issuing of a ** caution” to the public by the owner of a trade mark be con- strued as an irrevocable acquiescence in its use by others. Gi/- Lott v. Esterbrook. . A suit is not barred unless an acquiescence for a period equal to the time fixed by the statute of limitations be shown, or the marks were dedicated to the public, as is prescribed in respect to patents for inventions. Yaylor v. Carpenter, . Ina suit to enjoin defendant from selling ‘«* Charter Oak” stoves, the fact that parties in other localities manufactured ‘ Charter Oak ” stoves, and sent them into market to compete with plaint- iff’s manufactures, in no way aids the defense, unless it appears that the plaintiff assented to or acquiesced in such infringements upon his rights. Filey v. Fassett, See Laces; JurispIcTION, I. ACTION, RIGHT OF. _ Ifa druggist prepares a certain kind of medicine and designates it by the name of a superior medicine invented, prepared, and sold by the plaintiff, and sells it as and for the medicine pre- pared by the plaintiff, the plaintiff may maintain an action against him, without proof of special damage. T'bomson v. Winchester. 88 340 32 530 740 INDEX. Action, Right of. z. Where certain medicines are designated by the name of the in- ventor, as a generic term, descriptive of a kind or class, the inventor is not entitled to the exclusive right of compounding or vending them, unless he has obtained a patent therefor; and if another person prepares such medicines of an inferior quality, and sells them, and by this means medicines of that class are brought into disrepute, such inventor can maintain no action for any loss sustained by him in consequence thereof, unless they are sold as and for medicines prepared by him. did. 7 3. M. agreed with S., the lessee of the Revere House, to keep good carriages and drivers, on the arrival of certain trains, at a railroad station, to convey passengers to the Revere House, and in consideration thereof, S. agreed to eniploy M. to carry all the passengers from the Revere House to the station, and authorized him to put upon his coaches and the caps of his drivers, as a badge, the words ‘‘ Revere House.” A similar agreement, previously existing between S. and B., had been terminated by mutual consent; but B. still continued to use the words “* Revere House,” as a badge on his coaches and on the caps of his drivers, although requested not to do so by S.; and his drivers called «* Revere House” at the station, and diverted passengers from M.’s coaches into. B.’s. In an action on the case brought by M. against B., for using said badge and diverting passengers, it was held that M., by his agreement with S., had an exclusive right to use the words ** Revere House,” for the purpose of indicating that he had the patronage of that house for the conveyance of passengers; that if B. used those words for the purpose of holding himself out as having the patronage and confidence of that establishment, and in that way to induce passengers to go in his coaches rather than in M.’s, this would be a fraud on the plaintiff, and a violation of his rights, for which an action would lie, without proof of actual, specific damage ; and that M. would be entitled to recover such damages as the jury, upon the whole evidence, should be satisfied that he had sustained, and not merely for the loss of such passengers, as he could prove to have been actually diverted from his coaches to the defendant’s. Marsh v. Billings. 118 4. Whether the owner of a trade mark has a right of action for its violation, in reference to a specific article, which he has himself INDEX. 741 Advertisement—Alienage. purchased through an authorized agent, guere? His recovery, in case an action could, under such circumstances, be sustained, would be limited to nominal damages. Lemoine v. Ganton. 142 5. An action on the case may be maintained by a manufacturer against another manufacturer who marks his goods with the known and accustomed mark of the plaintiff, where the mark used by the defendant resembles the plaintiff's mark so closely as to be calculated to deceive, and to induce persons to believe the defendant’s goods to be of the plaintiff’s manufacture, and the defendant uses such mark with intent to deceive, and sells the goods so marked as and for goods of the plaintiff’s man- ufacture; and proof of special damage is not necessary. Rodgers v. Nowill. 660 See SourHern v. How, 633; SourHron wv. ReyNoxps, 688; Damacss, 4; InTENT, 3; Mercuanr, 4, 5. ADVERTISEMENT. A mere false or exaggerated statement in a public advertisement of the manufactured article, tending to recommend its use to the public, will not deprive the owner of a right to be protected in the exclusive use of a trade mark. Curtis v. Bryan. 434 AGENT. Where R., the manufacturer of goods, wrongfully stamped with the trade mark of the petitioner, conducted the business through an agent, who,, with his own knowledge and consent, was held up by R. to the public as the proprietor, and so far as the public could reasonably judge, from all that appeared, was the proprietor: He/d, that an injunction against the farther use of the trade mark by this apparent proprietor should be granted upon a petition brought for that purpose, to which R. was not made a party. Bradley v. Norton, 331 See Practice, 4. ALIENAGE., 1. In the courts of the United States alien friends are entitled to claim the same protection of their rights as citizens. Taylor v. Carpenter, 14; Ibid. 32 z. The alienage of the person whose trade marks are simulated, 742 INDEX, Assignment. Ss and his residence in a foreign country, do not affect his right to their exclusive use, when he has introduced them here. Coat v. Holbrook. . There is no difference between citizens and aliens in respect to their rights in trade marks, or their claim to have such rights protected in the courts. Taylor v. Carpenter. . Protection of trade marks applies as well for the benefit of foreigners as citizens. Coffeen v. Brunton. ASSIGNMENT. . Whether the right of using a trade mark, adopted by a dealer to indicate his own commodities, can be transferred to another so as to enable the latter to restrain a third person who has previously used the same trade mark, from continuing its use, and whether the appropriation of such device as a trade mark can be continued forever by constant assignments of it, guere ? Corwin v. Daly. A general assignment in insolvency is inoperative in respect to passing a right to a trade mark, if the right was not inventoried by the trustee or appraisers, and never claimed by the trustee or creditors of the insolvent, nor in any manner disposed of under the assignment. Bradley vy. Norton. . The sale or transfer of the wood-cuts of a trade mark does not carry with it the property in the trade mark itself, unless under circumstances indicating that such was the intention, and this will not be inferred where they were transferred to be used in the printing of labels to be placed upon an article, which, by agreement, was to be manufactured under the supervision of the proprietor of the trade mark. But there is a right of prop- erty in a trade mark which may be transferred to anoher by assignment. Lockwosd vy. Bostwick. 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 said trade mark has been attached; there is no property in it as amere abstract right. D. C. Co. v. Guggenheim. The plaintiff, as purchaser of Congress Spring, acquired by operation of law the exclusive right to use as its trade mark 20 45. 265 331 555 559 INDEX. 743 Attachment for Contempt—Circulars. such words and symbols as had been used in the sale of such water by those through whom its title was derived. C. & F. S. Co. v. H. R. 8. Co. 599 6. Though a man may assign his business and the use of his firm and of his trade mark as belonging thereto, that proceeds upon the ground that the use of the name of the firm is not under- stood in trade to signify that certain individuals, and no others, are engaged in the concern. L. C. Co. v. Am. L. C. Co. 688 7. Though a man may have a property in a trade mark in the sense of having a right to exclude any other trader from the use of it in selling the same description of goods, it does not follow that he can, in all cases, give another person a right to use it or to use his name, because he can not give to them the right to practice a fraud upon the public. bid. See Epiesron v. Vicx, 666; Hatt v. Barrows, 668 # Mercuanr, 4. ATTACHMENT FOR CONTEMPT.: See Contempt. BOXING—MANNER OF. An injunction will be granted where the design of the defend- ant to defraud the plaintiff is clear, and defendant has used a trade mark an all respects similar to plaintiff’s, except the name of.the manufacturer. But the injunction will not be made to include the manner of boxing an article, the phraseology of cau- tions, and other incidents which are to be considered open to the public. Gifott v. Esterbrook, ; 340 CAUTION. See Acquigscence, 2; Boxine. CIRCULARS. 1. Where the plaintiff was the manufacturer of Chinese Liniment, and defendant made Ohio Liniment, the latter was enjoined from issuing circulars which represented the two medicines to be the same. Coffeen v. Brunton. 82 2. Where the plaintiff has the right to the exclusive use of a trade 744 INDEX, City, Name of—Contract. mark, in a particular article of manufacture, any labels, devices or handbills used by the defendants which are calculated to de- ceive the public into the belief that the article they are selling is the article made and sold by the plaintiff, will be restrained by injunction, and the plaintiff fully protected. Walliams v. Spence. CITY—NAME OF, _See Town. COMMON USE. See Name, 10; Oricin; Worp. CONTEMPT. See Imiration, 14; Practice, 6. CONTRACT. 1. It being the policy of the law to protect the rights of individ- uals in respect to their own inventions, labels, and devices, and the legislature having passed an act to punish and prevent fraud in the use of false stamps and labels, it seems to be implied that individuals shall not themselves attempt or allow any imposi- tion upon the public by the false and fraudulent use of such labels, devices, etc. Accordingly held, that it was an offense against the spirit of the law, equally injurious to trade and commerce, and equally an imposition upon the public, to palm off spurious goods under the cover of genuine labels and devices. And that contracts to do this were clearly against public policy, and should not be upheld and enforced by the courts. A contract for the sale and purchase of a quantity of empty papers or bags for seeds with the plaintiff’s lable thereon, to be filled with seeds by the purchaser, and the seeds thus put up to be offered for sale by the purchaser of such papers, in a speci- fied county, and not elsewhere, was therefore held to be void. Bloss v. Bloomer. z. An agreement not to manufacture a particular article and use a particular trade mark is not in restraint of trade, and on that account invalid. Gillis v. Hadl. 3. A covenant not to do a particular act can be enforced by in- 39: 200 580 INDEX. 945 Costs—Damages. junction, although it is accompanied by a clause providing for stipulated damages. Ibid. See NewspaPer, I. COSTS. 1. A defendant who is found to have pirated a trade mark must pay the costs of suit. Taylor v. Carpenter. 45 2. Where an injunction restraining the use of a trade mark is dis- solved on the ground that the mark is false and fraudulent, and that the plaintiff is therefore not entitled to the protection of a court of equity against the infringement shown, and the de- fendant is equally guilty, the order dissolving the injunction should be with costs. Fetridge v. Wells. 180 3. Parties who had innocently bought and sold as genuine an article which was in fact spurious, were restrained from selling it with the plaintiff’s trade mark, but were not ordered to account for the profits they had made, nor compelled to pay the plaintiff’s costs. Moet v. Couston. , 675 See Mituincton v. Fox, 642. CUSTOM. A custom in Europe to violate trade marks is a bad one, and can not affect the law as it exists in the United States. Tay/r v. Carpenter. 32 DAMAGES. 1, The proper measure of damages in actions for the violation of a trade mark is the profit realized on the sales of goods to which the spurious labels or marks were attached. Taylor v. Car- penter. 32 z. Vindictive damages are not to be allowed in actions for the violation of trade marks. did. 32 3. Ia a case at Jaw in which the violation of a trade mark is proven, nominal damages will be given where no specific injury is proved. Coffeen v. Brunton. 82 4. An action to recover damages for violating a trade mark will lie, although, at the time the article was sold by the defendant, the plaintiff employed another mark, and had ceased to use the "one imitated. The wrong and injury to the plaintiff consist in 746 INDEX. Deceit—Evidence. the sale of an article falsely purporting and declared to be of his manufacture, whether the deceit be perpetrated by counter- feiting his present trade mark, or one formerly used by him. Lemoine v. Ganton. . The expenses of obtaining an injunction can not be embraced within the range of damages for the infringement of a trade mark. Burnett v. Phalon. . In actions for the violation of a trade mark, the judgment can not direct the damages to be assessed by a sheriff’s jury. The proofs must be taken by the court or a referee. Gui/hon v. Lindo. See Action, 1, 3,4, 5; Costs, 3; Contract, 3; Injunc- TION, 1; Practice, 3. DECEIT. See MIsREPRESENTATION. DELAY. See Lacues. ESTOPPEL. One who has fraudulently imitated the trade mark of another, and In offered for sale his own goods as those of the owner of the trade mark, can not be heard to raise the objection that the lat- ter’s goods are injurious to health. Sec ACQUIESCENCE. EVIDENCE. an action for an account and payment of profits and for dam-_ ages, on the ground that the defendant had been unlawfully copying and using the plaintiff’s trade mark or label on bottled porter, the defendant, on being called as a witness, refused to answer the following questions, upon the ground that his answer would tend to convict him of a criminal offense, under the act of April 1, 1850 (Laws of 1850, p. 197), to wit: . Have you, within the last six years, used labels like those set forth in the complaint, on American porter bottled by you? . Were there, on any of the bottles, labels like those of the plaintiff, as set forth in the complaint? . Have you sold porter, within the last six years, as and for an imitation of Byass London Porter? 142 292 295 INDEX. 747 Figures—Good- Will. 4. Did you, at any time during the three years ending May 1, 1857, put American porter in bottles and label them with labels like those attached to the complaint in this action? Held, that the defendant was privileged from answering the first, second, and fourth questions, but was not privileged from answering the third question. Held, also, that the same rule of law which excuses a witness from answering questions which may tend to convict him of a crime or misdemeanor, excuses him from producing books or papers, which may be used as evidence against him, tending to the same result. Byass v. Sullivan. FIGURES. Where figures indicating numbers are associated with the name of the manufacturer upon labels of a certain form, color, and gen- eral arrangement, and in connection with such labels are used by him to indicate his own manufacture, they may, by virtue of that connection, form an important part of a trade mark. Boardman v. M. B. Co. FOREIGNER. See ALIENAGE. FRAUD. See MisrEpRESENTATION, GENERIC NAM See Worp; Name. GOOD-WILL. 1. The naked sale of the good-will of a business does not transfer a right to the use of the vender’s name of trade. , After the sale of the business-stand and good-will, the vender, Howe, by agreement with his verdee, obtained the privilege of resuming the business at another stand, convenanting not in any manner to interfere with the business carried on at the former stand, known as “‘ Howe’s Bakery.” Held, that this was no recognition of the vendee’s claim to use Howe’s name. Howe v. Searing. 278 490 244 748 INDEX. Hotel—Imitation. z. On the dissolution of and winding up of a partnership, where a valuable part of the partnership consists in the good will of the business carried on by the partners (publishing a newspaper), such value, as much as the furniture of the office or debts due to the firm, must be protected and disposed of for the benefit of the creditors of the firm, or of the partners jointly. Dayton vy. Wilke. 224 HOTEL, The name established for a hotel is a trade mark, in which the proprietor has a valuable interest, which a court of equity will protect against infringement. A tenant by giving a particular name to a building, as a sign of the hotel business for which he uses it, does not thereby make the name a fixture of the build- ing, and the property of the landlord upon the expiration of the | lease. Woodward v. Lazar. 300 See Action, 3; Imitation, 13; Injunction, 7. IMITATION. 1. Plaintiff acquired from defendant the right to publish at the city of New York ‘The National Advocate.” Defendant subsequently published at said city «The New York National Advocate.” He/d, that there was such a difference as to war- ‘rant the court in refusing an injunction to restrain defendant. Snowden v. Noah. 1 2. Held, that the name ‘* New Era,” was not sufficiently assimilated to the name “ Democratic Republican New Era,” the type and other incidents being dissimilar, to entitle plaintiff, the owner of the Jatter, to an injunction. Bel/v. Locke. li 3. In a suit to restrain the use of trade marks alleged to be simulated, if it appear that the marks used by the defendants, though resembling the complainants in some respects, would not probably 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. An imi- ‘tation is coiorable and will be enjoined, which requires a care- ful inspection to distinguish its marks and appearance from those of the manufacture imitated. Partridge v. Menck. 72 INDEX. 749 Imitation. 4. In all cases where the violation of a trade mark is alleged, {0o. the inquiry is whether the mark of the defendant is so assimilated to that of plaintiff as to deceive purchasers. Coffeen v. Brun- ton. ? . Imitation will be enjoined although it be but partial. Even if the proprietor’s name is omitted, and the imitator’s substi- tuted, yet if the peculiar devices or symbols be so copied as to manifest a design to mislead the public, and will probably pro- duce that effect, an injunction will be granted. Where plaint- iff used the words, “ Amoskeag Manufacturing Company, Power Loom; Yds. » A.C. A.; Amoskeag Falls, N. H.,” and defendant the words, ‘Lowell Preminum Ticking, Power Loom; Yds. » A. C. A.; Warranted Indigo Blue,” the shape and color of the labels being the same, an in- junction was granted. Aim. Man. Co. v. Spear. . The plaintiff having first applied the name, “ Pain-Killer,” to a medical compound made and sold by himself, it was held that the application of the same name to a similar compound sold by the defendant, bottled and labeled in a somewhat similar way, was an infringement of the plaintiff’s trade mark. Davis v. Kendall. . A tradesman, to bring his privilege of using a particular trade mark under the protection of equity, is not bound to prove that it has been copied in every particular by another. It is enough for him to show that the representations employed bear such resemblance to his as to be calculated to mislead the public generally who are the purchasers of the article, and to make it pass with them for the one sold by him. Wadton v. Crowley. . A variation between two labels which it requires a close inspection to detect, must be regarded as immaterial. Fetridge v. Wells. _ An imitation of a mark, with partial differences, such as the public would not observe, does the same harm as an entire counterfeit, and will be enjoined accordingly. Clark v. Clark. Where the plaintif, an incorporated company, had been en- gaged in the manufacture of white lead, at Brooklyn, for more than twenty years, and of marking their kegs “ Brooklyn White 82 87 11z 166 180 206 . . . 750 INDEX. Imitation. II. Iz. 13. Lead Company,” or * Co.,” and the defendant had been en- .gaged in the same business, at the same place, for a lesser period, and had recently changed his mark, upon his kegs, so that it read “* Brooklyn White Lead and Zinc Company :” He/d, that this was an imitation of the plaintiff’s trade mark, with only a colorable difference, the effect of which imitation would be to deceive the public, and to make the defendant’s paint pass as the plaintiff’s. The defendant was therefore restrained, by injunction, from using the word “Company,” or Co.” Brooklyn White Lead Co. v. Masury. Whether a mere name of an article, or a designation of a place of manufacture, can or can not become the subject of protection, as a trade mark, the court will restrain the use thereof in such a combination, with peculiar devices and labels, as will tend to deceive the public, and induce the erroneous belief in the minds of dealers and consumers, that the articles are manufactured by the person introducing or adopting the same, to distinguish his goods. Slight differences calling for scrutiny, or concealed by artifice, so as to escape the attention of the unway, are not sufficient to protect the imitator from liability. Plaintiff made soap which was labeled, «* Genuine Yankee Soap, . . Manufactured at Manchester, Conn., by Williams & Bro.” Defendants used the following label: ««Gen- uine Yankee Soap, Manufactured at New York, by L. Williams & Co.” The court adjudged the former to be a valid trade mark, and restrained defendants from using the latter. Wid/- tams v. Fobnson. There must be, between the genuine and fictitious marks, such general similarity or resemblance of form, color, symbols, designs, and such identity of words and their arrangement, as to have a direct tendency of misleading buyers who exercise the usual amount of prudence and caution; and there must also be such a distinctive individuality in the mark employed by the counterfeiter as to procure for him the benefit of the deception resulting from the general resemblance between the genuine and counterfeit labels or trade marks. Co//eday vy. Baird. W. leased a lot of land on which he erected a building in San Francisco, and used it as a hotel, to which he gave the name 210 214 257 INDEX. Imitation. 751 14. 15. 16. of ‘What Cheer House.” Before the lease expired he pur- chased an adjoining lot, upon which he erected a larger build- ing, and for a time occupied both buildings as the “‘ What Cheer House,” the principal sign being removed to the one last built. He soon after surrendered the leased lot, with the building which was on it, and continued the business under the same name, entirely in the building which he had erected on the lot he had purchased. Two months afterward, the defendants, having purchased the first-mentioned lot and building, opened there a hotel, under the name of “The Original What Cheer House ”’—the word “ original” being painted on the sign in small letters, and in a manner calculated to deceive the public into the supposition that it was the same name. In an action by W. against defendants, to restrain them from using the name of “ What Cheer House” for their hotel: He/d, that plaintiff was entitled to the relief sought, and that defendants should be enjoined from the use of the name. Woodward v. Lazar. The principle of all the cases of trade marks is, that if persons of ordinary understanding purchasing the article would be placed on their guard, and would be led to inquire, whether they were being deceived by the article they were purchasing, that fact is sufficient for the court to refuse its interference. For the purpose of sustaining a motion to punish for a contempt in violating an injunction as to trade marks, it should appear clearly that the ordinary mass of customers, paying that atten- tion which such persons usually do in purchasing, would be easily deceived by the label used by the defendant. Swift v. Dey. The imitation of a trade mark, which will constitute an in- fringement of this right, need not be a precise copy of the original ; if there is a substantial similarity, so that the com- munity would be likely to be deceived, it is sufficient. Brad- ley v. Norton. Where the plaintiffs had long published a newspaper entitled “The National Police Gazette:” He/d, that a preliminary injunction should be granted in an action to restrain the de- fendants from continuing the publication of a paper entitled the “United States Police Gazette,” and printed in a way 300 319 331 752 INDEX. Imitation. 17. 18. cr actually to deceive purchasers and readers. Matse/l vy. Flana- gan. The principles upon which equity enjoins a defendant from imitating the plaintiff’s trade marks, do not apply to the pub- lication of newspapers, except so far as to protect the proprie- tors of a paper in the use of the name adopted by him for such paper. If, in an action brought to restrain thé publication of defendant’s newspaper, upon the ground he is infringing trade marks adopted by the plaintiff in the publication of a news- paper previously established, it appears that the names of the two papers are so far different, that considering the dissimi- larity of type and general appearance, one is not liable to be mistaken for the other, no injunction can be granted. Stephens v. De Conto. In an action to recover damages for an alleged invasion, by imi- tation, of the plaintiff’s trade mark for the sale ofa certain wash- ing powder, which consisted of a highly colored picture repre- senting a wash-room, with tubs, baskets, clothes-lines, etc., also the following legend interblended with it: ‘Standard Soap Company, Erasive Washing Powder,” followed by directions for the use of the ‘washing powder,” and the place of manufac- ture; the alleged imitation by defendants consisted of a pic- ture and label which were the same as in plaintiff’s alleged trade mark only in the use of the words ‘‘ washing powder,” the directions for the use of the powders, and in use of paper of the same color as that used by plaintiff. He/d, that this did not constitute an infringement of the plaintiff’s trade mark. Falkenburg v. Lucy. . To entitle the owner of a trade mark to an injunction to pre- vent its use by another person, there must be in the copy such a general resemblance of the forms, words, and symbols, in the original, as to mislead the public. A sufficient distinctive individuality must be presented so as to secure for the person himself the benefit of that deception which general resemblance is calculated to produce. The court will not interfere when ordinary attention will enable purchasers to discriminate; and it must also appear that the ordinary mass of purchasers, pay- ing the usual attention in buying the article in question, would be deceived. Rowley vy. Houghton. 367 442 448 486 INDEX. 753 Imitation, 20. 21. 22. 23. 24. Where another manufacturer made spoons similar in character to those of another, though differing somewhat in style, and prepared labels resembling the above, and adopted the same numbers for similar kinds of spoons, the labels being so similar that a purchaser who did not read the name upon them might be deceived, and being adopted with the particular numbers for the purpose of aiding the introduction of his spoons into the market, it was held to be a violation of the trade mark of the first manufacturer, although the second manufacturer put his own name on the labels in the place of that of the first. Boardman v. M. B. Co. The use of a simulated card, advertisement, or sign, calculated to deceive the incautious or unwary, whereby a party may be deprived of his just gains and profits, will be restrained by in- junction. Where defendant’s signs were deceptive, chiefly by reason of the words ‘formerly operator at’’ being in smal] letters, the court compelled their discontinuance until changed. Colton v. Thomas. The imitation of the original trade mark need not be exact or perfect It may be limited and partial. Nor is it requisite that the whole should be pirated. Norisit necessary to show that any one has in fact been deceived, or that the party com- plained of made the goods. Nor is it necessary to prove in- tentional fraud. If the court sees that complainant’s trade marks are simulated in such a manner as probably to deceive cus- tomers or patrons of his trade or business, the piracy should be checked at once by injunction. Filley v. Fassett. A party will be restrained by injunction from using a label as a trade mark, resembling an existing one in size, form, color, words, and symbols, though in many respects different, if it is apparent that the design of the imitation was to depart from the other sufficiently to constitute a difference when the two were compared, and yet not so much so, that the difference would be detected by an ordinary purchaser unless his attention was particularly called to it, and he had a very perfect recollection of the other trade mark. Lockwood v. Bostwick. Defendant was enjoined from making or selling preparations as and for “ Hall’s Vegetable Sicilian Hair Renewer,” where- upon he prepared and offered for sale an article put up in bot- 49° 507 530 555 754 INDEX. Imposition—Injunction, 25. tles materially different from those used by plaintiff, upon the wrapper of which was printed “ R. P. Hall’s Improved Prep- aration for the Hair . . . is entirely different from Hall’s Vegetable Sicilian Hair Renewer, but is compounded by the same inventor, R. P. Hall.” Heéd, That defendant’s wrappers, etc., were a palpable violation of plaintiff's trade mark; that the name “ Hall” could be used, in the premises, by the plaintiff alone. Gillis v. Hall. The plaintiff, Thomas Holloway, sold a medicine as “ Hol-, loway’s pills.’ The defendant, Henry Holloway, com- menced selling pills as “ H. Holloway’s pills,” but in boxes, etc., similar to the plaintiff’s and with a view of passing off his pills as the plaintiff’s. He was restrained by injunction. Holloway v. Holloway. 26. Colorable imitation defined. LZ. C. Co. v. Am. L. C. Co il. See Epristen v. Epevsten, 667. IMPOSITION. See MisrEPRESENTATION. INFRINGEMENT. See Imrrarion. INJUNCTION. No person has a right to use the names, marks, letters, or other symbols, which another has previously got up or been -accustomed to use, in his trade, business, or manufactures, ‘Equity will restrain such deception and fraudulent use by in- _junction, and will decree an account for damages. Coats v. Hol- brook. . Acourt of chancery will grant an injunction against the un- authorized use of a manufacturer’s or vender’s trade marks, and will decree the payment of the damages sustained thereby, Taylor v. Carpenter. . Where the case is one of doubt in respect of the alleged piracy, the court should not grant or retain an injunction until the cause is heard on pleadings and proofs, or until the complain- ant has established his right by an action at law. Partridge v. Menck. e 596 662 689 20 45 72 INDEX. 755 Injunction. 4. a 10. Where a label or mark of another is used with a fraudulent intent to recommend to purchasers an article similar in appear- ance to one favorably known in the market, an injunction will be granted. And where a deception is attempted to be practiced, by recommending a spurious article as genuine, to the injury of a party, chancery will restrain the aggressor. Coffeen v. Brunton. An injunction will be granted with great caution, and not where the legal right is doubtful. 4m. Man. Co. v. Spear. . The wrong consists in the sale of the goods of one person as being those of another, and it is only to the extent in which the false representation is directly or indirectly made that an injunction ought to be granted. Ibid. The plaintiffs agreed with A., the proprietor of a hotel, to pay him a certain sum for the privilege of using the name of A,, and of his hotel, on certain coaches of the plaintiffs used for the conveyance of passengers to and from the hotel of A., and on certain badges worn by the drivers of those coaches, the plaintiff giving surety to A. for the good conduct of himself and servants in the conveyance of such passengers. He/d, that the plaint- iff had an exclusive right as against third parties in the use of the name of A.’s hotel on his coaches and badges; that he was entitled to an injunction to restrain the use by any other party on coaches or badges of the name of A.’s hotel, or of any device or sign which might induce a stranger to believe that the defendants were connected with the hotel of A. The name ‘Irving House,”’ when used as above, protected. Stone v. Carlin: . In such a case, the court will leave the parties to their legal right. Injunction should only be granted where the right is clear, and where, from its nature, a remedy at law would be inadequate. Coffeen v. Brunton. A party is not entitled to an injunction to protect him against another person who has assumed the same label, as to a medicine or drug claimed to have been invented by the complainant, unless his right is clear. did. The plaintiff was a manufacturer of steel pens, which were put up for sale in boxes. Those containing pens of the first 82 87 87 115 132 132 756 INDEX. Injunction. Il. 1z. 13. 14. 15. 16. quality were labeled No. 303, and those containing pens of an inferior quality were labeled No. 753. The complaint charged that the defendant was in the practice of removing the labels from the boxes last mentioned, and putting thereon labels numbered 303, closely imitating the plaintiff's labels bearing that number. He/d, that this practice of the defendant was a fraud upon the public and the plaintiff, and being a fraud pro- ductive of damage could be restrained by injunction. Girt v. Kettle. An injunction should not be granted at the commencement of a suit brought to enjoin the defendants from the use of plaint- iff’s trade mark, and to recover damages, etc., unless the legal right of plaintiff, and the violations of it by defendants, are entirely clear. Where plaintiffs label was, «* Merrimack Prints, Fast Colors, * Lowell, Mass.,” and defendants’, “English Free Trade, Warranted Fast Colors,” the court refused to continue an injunction. Mer. Man. Co.v. Garner. An injunctio should not be granted at the commencement of a suit brought to enjoin the defendant from the use of plaintiff’s trade mark, unless the legal right of plaintiff and the violation of it by defendant are very clear. Fetridge v. Merchant. To sustain an injunction it is sufficient to show the fact of falsity, and that the effect will necessarily be to deceive. Peterson v. Humphrey. An injunction will lie, at the suit of one against another, his former copartner, restraining the continuance of the use of the signs containing the old firm name without sufficient alterations or additions to give distinct notice of a change in the firm. Ibid. Without a patent from the government, no one has an exclusive right to manufacture and sell pills as a useful invention. Therefore an injunction will not be granted to restrain an in- nocent defendant from manufacturing, advertising, or selling by any name, designation, or trade mark whatsoever, pills precisely like those manufactured and sold by the plaintiff, and by the name designated by him, or pills composed of the same ele- mentary constituents. Comstock vy. White. Where it appears that the party infringing intends to continue 148 155 194 212 212 233 17. INDEX. 759 Insolvency—Intent. the wrong, an injunction against such continuance is the sole adequate remedy. Brad/ey v. Norton. On a bill filed to restrain the defendant from selling a work alleged to be a fraudulent imitation of the complainant’s publi- cation: He/d, it not being entirely clear that the complainant had a legal right, and the defendant undertaking to keep an ac- count, that an injunction ought not to be retained. Spottis- woode v. Clark. See Brancuarp v. Hitt, 633; Acenr; Boxtna; Circu- Lars; Costs; Damaces, 5; Imation; Lacues; Mis- REPRESENTATION; Newspaper, 2, 3; Name; Oricin; Purcuaser; Practice; Pustric Amusement; TRabDE Mark; Worp. INSOLVENCY. See AssIGNMENT, 2. INTENT. In cases of violation of trade marks it is not essential that fraudulent intent be proven. Coffeen v. Brunton. . It is no answer that the maker of the spurious goods, or the jobber who sells them to the retailers, informs those who purchase that the article is spurious, or an imitation, Coats v. Holbrook. The right of plaintiffs to maintain an action for a violation of a trade mark does not depend upon the defendants’ intention to violate it. It is enough that an actual violation is shown. Dale v. Smithson. . Where it appeared that the defendants, in having connected themselves with the plaintiffs.in the business of manufacturing, advertising, and selling pills by a particular designation, and having induced the plaintiffs to expend large sums of money in advertising, etc., the pills so manufactured ; and then suddenly and without notice, in an unjustifiable manner and apparently from improper motives, severed their connection with the plaintiffs and set up the same business for themselves: He/d, that an injunction should be granted, restraining the defendants from using the name or designation so used by the plaintiffs. Comstock v. White. 33! 653 82 20 282 232 58 INDEX. Jurisdiction—Laches. 5. An infringement of a trade mark will be enjoined, although * the intent of the infringer may have been entirely innocent. D.C. Co. v. Guggenheim. 559 See ImrraTion, 22. JURISDICTION. 1. Where the plaintiffs were manufacturers, in England, of “ 'Tay- lor’s Persian Thread,” and the defendants, in America, imi- tated their names, trade marks, envelopes, and labels, and placed them on thread of a different manufacture, it was held, that it was a fraudulent infringement by the defendants of the right of the plaintiff, for which equity would grant relief, whether other persons had or had not done the same. Taylor v. Carpenter. 14 2. The ground upon which equity restrains the counterfeiting of trade marks is the promotion of honesty and fair dealing. No one has a right to sell his own goods as the goods of another. Palmer v. Harris. 523 3. In trade mark cases it is not the deception upon the public which gives the court of equity jurisdiction, but the interfer- ence with the just profits of the rightful owner. D.C. Co. v. Guggenheim. 559 See TrapvE Mark. LACHES, 1. A delay of nine years in applying for an injunction to restrain the violation of a trade mark is, if the plaintiff had knowledge of the violation, good cause for refusing an application there- for. Am. Man. Co. vy. Garner. 541 z. Injunction granted to restrain the use of the plaintiff’s trade mark by the defendants, but an account of profit refused on the ground of a delay of about a year by the plaintiffs in commencing the suit. Harrison v. Taylor. 675 3. A plaintiff laid by for two years before filing his bill for an injunction, having seen labels of the defendant exhibited pub- licly, which he now complained of as being colorable imi- tations of his label. He/d, that such laches disentitled the plaintiff to relief. Beard v. Turner. 717 See AcqQuigscENCE. INDEX, 759 Limitations—Merchant. I. 2 LIMITATIONS, See AcQUuIESCENCE. MERCHANT. A commission merchant who sells the spurious article, know- ing its character, is liable to a suit to restrain its further sale, by the proprietor of the trade mark, and will be subject to the costs of such suit. Coats v. Holbrook. It is no answer to the suit, that the maker of the spurious goods, or the jobber who sells them to the retailers, informs those who purchase that the article is spurious, or an imitation, Lbid. i The venders of an article of trade or manufacture, who have established or become entitled to a particular trade mark, which they use to distinguish such article, are entitled to be protected in its use, although they do not manufacture the goods. Taylor v. Carpenter. The owner of goods, which he exposes to sale in market in his own right, is entitled to the exclusive use of any trade mark devised and applied by him to the goods, to distinguish them as being of a particular manufacture or quality, al- though he is not himself the manufacturer, and although the name of the real manufacturer is used as part of the trade mark, and the assignee of the whole right in such trade mark, and of the property in the goods to which it is attached, is entitled to the enjoyment of the exclusive right thereto, and may maintain an action, in his own name, for any wrongful use by others of such trade mark, to the like extent as the originator thereof. Walton v. Crozw/ey. . In an action to enjoin the violation of a trade mark, persons who are not the publishers or makers of the infringing article, and who are engaged as the venders thereof, may be joined as defendants with the former. The acts of both parties are to be regarded as kindred, and both wrong-doers may be joined in one action. It is enough to support an injunction against several persons, that particular acts of fraud, kindred in char- acter, are charged against them. Matse// v. Flanagan. See AssiGNMENT, I, 4. 20 20 45 166 367 760 INDEX. Misrepresentation. I. MISREPRESEN TATION. A court of equity will not, in a contest between persons who profess to be manufacturers of quack medicines, interfere to protect the use of trade marks by injunction. A complainant whose business is imposition, can not invoke the aid of equity against the piracy of his trade marks. Fow/e v. Spear. . If a label contain a misrepresentation upon its face, it will not be protected by injunction. Partridge v. Menck. . Chancery will not interfere by injunction in questions of trade marks between the venders of patent medicines, being quack medicines; such questions having too little merit to commend them on either side. Heath vy. Wr. ght. . In an action to restrain the defendant’s use of the plaintiff’s trade mark upon an article intrinsically valuable, it is no de- fense that the trade mark in question is a false and fraudulent one, used by the plaintiff with intent to deceive, and that the article which is accompanied by it is not what the trade mark indicates it to be. Insuch an action, the trade marks contain- ing these words, respectively, one of them, “ H. & M.’s patent thread, Barnsley,” and the other, “G. & W.’s celebrated patent thread, Berwick.” He/d, that it was no defense that the threads were not patented, and were not made by the persons whose names they bore, nor by their assignees or suc- cessors, nor at the places designated on the trade marks, but that the trade marks were false and fraudulent, and a motion to amend the answer by inserting allegations to that effect was properly denied. Stewart v. Smithson. Equity will not interfere to protect a party in the use of a trade mark where the name or place claimed as such is in- tended and calculated to deceive the public. The plaintiff having used the words ‘Balm of Thousand Flowers,” the court refused to enjoin the use by defendant of “ Balm of Ten Thousand Flowers.” Fetridge v. Wells. Where it appears in an action to restrain an infringement of plaintiff’s trade mark, that defendant has deliberately, and without any previous connection with the particular business, adopted the emblems and appellations employed by plaintiff, simply to break in upon the trade and profit of the latter, an 67 72 154 175 INDEX. Misrepresentation, Io, Il. 12. injunction should be granted, notwithstanding that it may ap- pear to the court that the trade mark claimed by plaintiff was intended and calculated to deceive the public. The public in such case should be left to its own guardianship. Fetridge vy. Merchant. . To render a person liable for misrepresentations, as to the credit of another, by the use of false signs or trade marks, it must be shown that the sign or mark was false in fact, so known to the party using it, used with the intention to deceive, and of a character calculated to mislead a person using ordi- nary caution. Peterson v. Humphrey. . If the plaintiffs are selling an innocent humbug, the defend- ants have no right to deprive them of the reputation and cus- tomers which their money has been the means of acquiring. Comstock v. White. . Although a fraudulent and deceptive trade mark is not to be protected by injunction, yet the fact that a trade mark bears a fictitious name as the name of the manufacturer of the article, does not affect the owner’s right to protection, where it is shown that it is not used with any fraudulent intent, and does not in fact deceive the public. Hence, Thomas Nelson Dale was adjudged to have a lawful right to the exclusive use of the following: “Courtria Flax, Thomas Nelson & Co. War- ranted, Fast Colors and 16 02.” Dale v. Smithson. The court will not interfere, by injunction, to protect a party in the use of trade marks, which are employed to deceive the public, and to mislead them by fraudulent representations con- tained in the labels and devices which are claimed to constitute wholly or in part such trade marks. Hobds v. Francais. A court of equity will not protect a label that contains a mis- representation. Phalon v. Wright. Where the defendant has procured a trade mark closely resem- bling one already in use by the plaintiff, and has attached it to a perfume manufactured by him, adopting the same name and style of packages as the latter, with the intention of counter- feiting the plaintiff’s trade mark, as well as imitating the article and style of packages used by him, and of appropriating, through such counterfeit label, the market obtained for the 194 212 235 282 287 397 762 INDEX. Misrepresentation. 13. 14. 15. 16. 17. 18. perfumery of the plaintiff, and in this design he has been to some extent successful, and has thereby injured the plaintiff, it is a proper case for an injunction to restrain the use of the label or trade mark, notwithstanding the defendant sets up the defense that the plaintiff, in selling his perfume, is attempting to impose upon and defraud the public, if the evidence upon that subject is conflicting. Smith v. Woodruff. One who in and by his trade mark makes representations which deceive the public, can not ask a court of equity to re- strain the use of such deceptive trade mark by another. Curtis v. Bryan. A party attempting to deceive the public by a trade mark con- taining on its face a falsehood as to the place where his goods are manufactured, that he may have the benefit of the reputa- tion of such goods, is guilty of the same fraud of which he complains. A trade mark on Spanish cigars made in New York indicated that they were made in Havana. He/d, that an injunction would not be granted to restrain a counterfeit of the mark. Palmer v. Harris. Although where suit is brought for the infringement of a trade mark which is itself a falsehood, and calculated to deceive and mislead the public as to the true character of the article sold under it, equity will not relieve; yet where there is no in- tention to deceive, and no falsehood is used, an injunction will issue. L. C. Co. v. Guggenheim. The plaintiff had made a new sort of mixed tea, and sold it under the name of “ Howqua’s Mixture;” but, as he had made false statements to the public, as to the teas of which his mixture was composed, and as to the mode in which they were procured, the court refused to restrain the defendant from sell- ing tea under the same name, until the plaintiff had established his title at law. Pidding v. How. If a plaintiff coming for an injunction to restrain a violation of a trade mark appears to have been guilty of misrepresentations to the public, a court of equity will not interfere in the first instance. Perry v. Truefitt. , Misrepresentations in a trade mark, amounting to a fraud upon the public, will disentitle the person making such misrepre- 373 434 523 559 640 644 INDEX. 763 Name. sentations to protection in a court of equity against a rival trader; and, as a general rule, a misstatement of any material fact calculated to impose upon the public, will be sufficient for the purpose: ¢. g., a trade mark representing an article as protected by a patent, when, in fact, itis not so protected, or a trade mark falsely representing an article as the production of an artist of special skill or of a place of special adaptation. L. C. Co. v. Am. L. GC. Co. See Epieston v. Vicx, 666; Sournorn v. REYNOLDS, 688; ApvERTISEMENT; Origin; Trape— Mark. NAME. . The distinction, in the law of trade marks, between a proper name and a ‘fancy ’’ name—considered. Fetridge v. Mer- chant. A party will not be restrained, by injunction, from using his own name, unless he so use it as to mislead. Clark v. Clark. . It is to protect a party’s right of selling his own that the law of trade marks has been introduced. The right must include the privilege of selling to all—to the incautious as well as to the cautious, and any false name that is assumed in imitation of a prior true name is in violation of this right, and the use of it will be restrained by injunction. Brooklyn W. L. Co. v. Masuary. . The name of “ Roger Williams Long Cloth” is capable of be- ing appropriated by a manufacturer to cotton cloth of his man- ufacture, to distinguish it from cloth of the same general de- scription manufactured by others; and if to the knowledge of the public, it be so appropriated by the plaintiff, a person who stamps the name of “ Roger Williams” on his cloth of simi- lar description, with the design and effect of fraudulently pass- ing it upon the market as and for cloth manufactured by the plaintiff, to the lessening of the gains and credit as a manufacturer of the latter, is liable to him for the injury caused thereby. Barrows v. Knight. There may be an exclusive right in names expressing qualities or attributes where forming part of a device peculiar to the manufacturer or vender of the article, Corwin v. Daly. 688 194 206 210 238 265 764 INDEX. Name, 10, . A manufacturer can not claim the exclusive right to the use of a name that is the proper desctiptive appellation of an article, é. g., ‘Night Blooming Cereus.”” Phalon v. Wright. - A court of equity will protect a person in the use of a trade mark, ¢. g., the name of a newspaper, although the name adopted is one that belongs to the language of the country, and may be employed in any way or for any purpose, which will not defraud individuals or deceive the public. Matsel/ v. Flanagan. . A party who originates a word and uses the same as his trade mark, is entitled to be protected in the exclusive enjoyment thereof. Plaintiffs made a cosmetic compound from cocoa, for which they devised the name ‘‘Cocoaine,”’ using such name as their trade mark. Defendants made a cosmetic of similar character, which they styled “‘Cocoine.” He/d, that defend- ants should be enjoined from using the word * Cocoine,” or any other word assimilated to the word “ Cocoaine.” Bur- nett v. Phalon. A manufacturer has a right to put or stamp his own name on the article manufactured by him, and on bands, wrappers, or covers in which they are put up; and any injury which another manufacturer, of the same surname, may suffer‘thereby, must be viewed as an injury without a remedy. Fader v. Fader. Plaintiffs were engaged in the business of manufacturing cement, or water lime, from quarries or beds lying near Akron, Erie county, designated and sold as “‘ Akron Cement,” and “ Akron Water Lime,” the packages containing the same, when sold and offered for sale, having attached to each of them these words: ‘*Newman’s Akron Cement Co., manufactured at Akron, N. Y. The Hydraulic Cement known as the Akron Water Lime.” The defendants being engaged in manufactur- ing and selling a similar article from quarries or beds situated near Syracuse, Onondaga county, and knowing that water lime cement was manufactured and sold by the plaintiffs under the name of “‘ Akron Water Lime,” and “ Akron Cement,” called their own beds the ‘(Onondaga Akron Cement and Water Lime,” and after that they sold the water lime and cement, prepared by them, with a label on each package, having these 397 367 376 401 Il. INDEX. 765 Name. words upon it: “ Alvord’s Onondaga Akron Cement or Water Lime, manufactured at Syracuse, New York;” such water lime or cement being placed upon the market, and sold in the same places where that manufactured by the plaintiffs was sold and used. He/d, that the word “ Akron,” as used by the plaintiffs, was their trade mark, by which they designated the article manufactured and sold by them, and that they were entitled to be protected in such use of it, by an injunction re- straining the defendants from making use of the word “Akron” as their trade mark. He/d, also, that the case was not one of such doubt as to require the plaintiff’s right to be first estab- lished at law. He/d, further, that to defeat the plaintiff’s right to appropriate the term “Akron” on the ground that it had previously been in common use, such a use of it must be shown as would extend to and include the defendants. That until that was done, the use made of it by the plaintiffs might well be exclusive of the defendants without being so as to the inhabitants of Akron. Newman v. Alvord. Elias Howe, Jr., the patentee of a sewing machine, gave a license to his brother, the plaintiff, to use his patented right or combination, in the manufacture of sewing machines. Prior to the year 1857, the plaintiff placed on the machines manu- factured by him his own name, “A. B. Howe.” In 1857, he substituted the name “ Howe” for “A. B. Howe,” and subsequently every machine made by him had the word “Howe” upon it; such word being used to denote the plaint- iff as the manufacturer, and not to denote Elias Howe, Jr., as the inventor. He/d,1. That the fact that the plaintiff was the licensee of the inventor, and could not have manufactured his machine without using the patented combination of the in- ventor, and, therefore, could not have manufactured them without the inventor’s license, did not interfere with or impair his right to adopt and appropriate a trade mark to mark or distinguish the machines made by him from those manufactured by other licensees of the inventor. 2. That the circumstance that licensees did use, and had to use, the patented right or combination of the inventor, in manufacturing their ma- chines, did not affect the question of the right of either of such licensees to adopt and appropriate a trade mark, even as against Elias Howe, Jr., as a manufacturer of sewing machines. 404 766 INDEX. Name. 12. 13. 3. That the plaintiff had a right to adopt and appropriate the word ‘* Howe” as a trade mark, as against Elias Howe, Jr. 4. That the plaintiff had a right to adopt and appropriate his surname as a trade mark, and that Elias Howe, Jr., though his surname was the same, had no right to use his own surname in such a way as to deceive the public, and deprive the plaint- iff of the benefit of the notoriety and market which his ma- chines had gained. That the question as to what was the nature and effect of an arrangement made between the plaintiff and Elias Howe, Jr., and whether it vested in the latter the right to use the trade mark, and to transfer such right to others, being not entirely free from doubt, an injunction to restrain his grantees from using the same should not be granted, until the trial of the cause; it appearing that they were of sufficient ability to respond to any damages the plaintiff might recover. Howe v. Howe Mac. Co. A person who forms a new composition, and invents a new word to characterize it, is entitled to be protected in the exclusive use of such words as his trade mark; and an injunc- tion will issue to restrain others from employing it to designate a similar article. The fact that the word thus claimed is com- pounded of two or more words, whose meaning was previously well known, will not necessarily defeat the right to an injunc- tion if the compound word is new. The plaintiff invented a new medicine, and formed the compound word “ Ferro-Phos- phorated” to designate it, such combined word being new. He/d, that he was entitled to its exclusive use. Caszwe// v. Davis. In an action brought to enjoin the defendant from using the plaintiffs’ trade mark, if the plaintiffs can be pronounced the first to use the word claimed by,them, although it be a popular term, and one in general use, ¢. g., the word Bismarck, as a designation of a particular style of goods made by them, and to have acquired by its manufacture and sale under that name a valuable interest in such designation, the defendant must be estopped from using it for the same purpose. The plaintiffs had the right to appropriate such name, in common with others, for a new purpose, and having done s0, are entitled to avail themselves of all the advantages of their superior diligence 421 429 INDEX. 767 14. 15. 16. 17. Name. and industry. There is no reason for making any distinction between a common word or term used for an original or new purpose which has accomplished its object, and a new design adopted by a manufacturer. Both give currency to the articles to which they are applied, and distinguish them from other manufactures ofa similar character. All the essential requisites to the plaintiff’s right to protection flow from the prior use of a term, symbol, or word, which has created for his manu- facture a celebrity or value; and the burden of showing that the claim of priority is unfounded, or the absence of any injury resulting from its imitation, rests upon the defendant. Mes- serole v. Tynberg. No right can be absolute in a name as a name merely. It is only when that name is printed or stamped upon a particular article, and thus becomes identified with a particular style and quality of goods, that it becomes a trade mark. Rowley v. Houghton. The name of a manufacturer, used by him as a trade mark, may have added to and connected with it some peculiar device as auxiliary to the name in declaring the true origin and owner- ship of his goods; and a wrongful violation of such a trade mark may be effected even though the name of the imitator be substituted for that of the original manufacturer, by such an imitation of the device as indicates a design to deceive, and is calculated to deceive the public as to the true origin and ownership of the goods. Boardman v. M. B. Co. A manufacturer can not acquire a special property in an ordinary term or expression, as his trade mark, the use of which as an entirety is essential to the correct and truthful designation of the particular article or compound. Thus, a dealer in salt fish can not maintain an exclusive claim to the use of the term “dessicated codfish”? as a trade mark. It is only by the prefix of some other word, not previously applied in that connection, and not essential to the truthful! designation of the article produced, that he can be protected in its exclusive use. Town v, Stetson. As “Charter Oak” stoves were not generally known by the particular device which surrounded the name upon them, but by the name itself, the use of the words “ Charter Oak,” separated 479 486 490 514 768 INDEX. Name. 18. 19. 20. 21. 22. 23 24. from the other parts of the trade mark, amounts to an infringe- ment of the maker’s rights. Filey v. Fassett. Terms in common use to designate a trade or occupation, in connection with other words indicating that a particular class of merchandise of the same general description is specially dealt in, can not be exclusively appropriated. The words *« Antiquarian Book Store” can not be protected as a trade mark. Choyaski v. Coben. : The owner of a peculiar product of nature, such as the mineral water of Congress Spring, is entitled to be protected in the exclusive use of a name by which it is designated. C. & FL S8. Cov. H.R. C. 8. Co. Plaintiff’s father invented and made “Dr. Johnson’s Yellow Ointment.” It appearing that plaintiff had no patent, an in- junction was refused. Singleton v. Bolton. Injunction granted to restrain the defendant from running an omnibus having upon it “London Conveyance, etc.,” such words being a colorable imitation of the words and devices on the omnibuses of the plaintiffs. Knott v. Morgan. Plaintiffs protected in the use of the words ‘* Morison’s Uni- versal Medicine.” Morrison v. Salmon. A blacking manufactory had long been carrried on under the firm of Day & Martin, at 97 High Holborn. The executors of the survivor continued the business under the same name. A person of the name of Day, having obtained the authority of one Martin to use his name, set up the same trade at go} Holborn Hill, and sold the blacking as of the manufacture of Day & Martin, go} Holborn Hill, in bottles and with labels having a general resemblance to those of the original firm. He was restrained by injunction. Croft v. Day. Where the manufacturer of an article of trade sells it under his own name, and the article attains great celebrity in the market under that name, the manufacturer does not thereby acquire such an exclusive right in the use of the name or title under which the article has been sold as to prevent the use of it, without fraud, by another person having the same name, in the sale of a similar article manufactured by himself. Burgess v. Burgess. 539 593 599 634 637 643 649 664 INDEX. 76g Nature—Newspaper. 25. 26. 27. The exclusive right established to the use of a trade mark, although consisting of the name of a foreign province from which the raw material for the manufactured article was pro- cured, and from which other persons might also procure simi- lar material in the raw or manufactured state. M., in August, commenced selling sticks of liquorice of new manufacture, marked “ Anatolia.”” On the 13th of September, some of the goods so marked were sent to B., with a request that he would make up liquorice in the same form and with the same stamp. Liquorice-juice had long been imported from Anatolia, but no one before M. had used the word “Anatolia” as a mark. Held, by one of the vice-chancellors, and affirmed on appeal, that the word “Anatolia” might be used as a trade mark, and that M. had acquired sufficient property in it to entitle him to an injunction against B. McAndrew v. Bassett. The name “ Durham” protected. Harrison v. Taylor. The name “Glenfield” protected. Wotherspoon v. Currie. See Pustic AMuseMENT ; Imitation; Oricin ; Worp. NATURE. See Oricin. NEGLIGENCE, See AcQuiESsCENCE. NEWSPAPER. . The name of a newspaper is a proper subject of contract, and a person having sold a newspaper establishment, together with the name of the paper, has no right to publish another paper as that which he has sold. Sowden v. Noab. . If there be so great a difference between the names of two newspapers as to afford room for reasonable doubt as to their similarity, an injunction will not be granted. did. An injunction will lie to restrain a defendant from assuming the name of the complainant’s newspaper, for the fraudulent purpose of imposing upon the public, and of supplanting him in the good-will of his paper. But to entitle the complain- ant to the interposition of the court of chancery, the name of his paper must be used in such a manner as to be calculated to deceive or mislead the public, and to induce them to suppose 669 675 720 770 INDEX, Numerals—Origin and Ownership. that the paper printed by the defendant is the same as that which was previously being published by the complainant; and thus to injure the circulation and patronage thereof. Be//v. Locke. See Goon-Witt, 2; Imiration, 1, 2, 16, 173 ParTNer- SHIP, 3. NUMERALS. The numerals 303 applied to steel pens, and used in connection with the manufacturer’s name held to constitute a valid trade mark; and their use by another manufacturer of a different name enjoined. Gillett v. Esterbrook. ORIGIN AND OWNERSHIP. . 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 manufactured, as distinguished from those marks which indi- cate the true origin or ownership. Am. Maz. Co. v. Spear. 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 articles in which he deals, will be sustained. Hence the court refused to protect the use of the words “Cylinder,” “ Lake,” “New York,” “Galen.” Stokes v. Landgraff. . A name in some cases may be a valid trade mark, but this is only true when it denotes either origin or ownership, never when it is used to designate the article itself, and has by common use become its proper appellation. Fetridge v. Wells, 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, ownership, or place of manufacture or sale, but merely its quality, kind, texture, composition, utility, destined use or class of con- sumers, or some other attribute which it has in common with other similar commodities. So held in regard to the designa- tion of gin by the term “Club House,” it being established that such name had been long in use as designating a superior kind of gin used in such establishments, Corwiz v. Daly. II 340 87 137 180 255 INDEX. 771 5. x ‘© 10. Origin and Ownership. : The owner of a trade mark will be protected by the courts in its exclusive use, but only so far as it serves to indicate the origin and ownership of the goods to which it is attached, to the exclusion of such symbols, figures, and combination of words which may be interblended with it, indicating their name, kind, or quality. Fa/kenburg v. Lucy. A trade mark, adopted by a manufacturer or a trader for his goods, to become entitled to protection as his exclusive prop- erty, must in some manner designate the true origin or owner- ship of the goods. Boardman v. M. B. Co. . A sign, symbol, device, word, or letter which does not indi- cate the true origin or ownership of an article, can not be pro- tected asatrade mark. Protection refused where plaintiff's alleged trade mark was the letter K. Ferguson v. Davol Mills. Any contrivance, design, device, name, symbol, or other thing, may be employed as a trade mark, which is adopted to point out the true source and origin of the goods to which said mark is applied, or even to point out and designate a dealer’s place of business, distinguishing it from the business locality of other dealers. But the mark must point out the source and origin of the goods, and not be merely descriptive of style, quality, or character. By the adoption and use of a name and device adapted to point out the true source and origin of the manufactured article, the manufacturer acquires a property therein which the courts will protect. Fid/ey v. Fassett. Where the trade mark discloses truly the place of manufacture and sale of the goods, and substantially the true ownership of them, the fact that the name on the Jabel is not the exact name of the manufacturers, owing to changes in the persons manufacturing after the manufacture was commenced, will not debar the plaintiffs of their injunction. Hence where plaint- iff, a company, used the words, ‘Stove Polish—Dixon’s Prepared Carburet of Iron,” the defendants were restrained from using “J. C. Dixon’s Stove Polish.” D.C. Co. v. Gug- genbein. The words “ Congress Water” and “ Congress Spring Water,” appropriately indicate the origin and ownership of the water flowing from Congress Spring; and the word “Congress” 448 490 516 530 559 ya INDEX. Ownership—Partnership. used in connection with the sale of such water is a valid trade mark, C. & &. 8. Cov. H.R. CLS. Co. 599 OWNERSHIP. See Oricin. PAPER. A manufacturer has no right to the exclusive use of a particular colored paper, or kind of paper, for covering or inclosing his goods in any particular form. PARTIES. See MercuantT, 4, 5; Practice, 7; Worp, 5. PARTNERSHIP. 1. If two parties are concerned in getting up a medicine, both contributing as a partnership action, neither can claim the exclusive use of the name or trade mark used in connection therewith. Coffeen v. Brunton. 132 1. A party will be restrained by injunction from the continued use of a trade mark belonging to another, which he has used under an agreement and with the consent of the owner, and for the benefit of both, after the owner shall withdraw his in- terest from the business, and claim the use of his trade mark exclusively, unless the party claiming to use it shall show clearly by the agreement that the owner intended to and had forever parted with his right to the use of such trademark. The court may allow the use of the trade mark to a certain extent in such a case, where apparently it will work no injury or damage to the owner, and would be a serious damage to the other party to restrain its use. McCardel v. Peck. 312 3. Where there is a dissolution of a partnership in the business of publishing a newspaper, and the whole title to the paper is owned by one of the partners or a purchaser under the firm, the court has no right, in the absence of any covenant or re- striction on the subject, to restrain or interdict the establish- ment, by the other partner, of another paper devoted to the same objects, provided the latter paper is sufficiently distin- guished from the former to prevent the doctrine cf piracy of trade marks from applying. Daytoa v- Wilkes. 244 See Hatt v. Barrows, 668; INTENT, 4. INDEX. 773 Pleading—Practice and Pleading. PLEADING. Sce Practice. PRACTICE AND PLEADING. . The mere affidavit of a defendant, without a formal answer, will not be sufficient to bar the equity of a complaint arising out of the facts of the bill. /c/ton v. Crozw/ey. . The absolute refusal of the defendant, before suit brought, to remove false or spurious signs, exonerates the plaintiff from any obligation to offer to contribute to the expense of the re- moval, or to allow reasonable time therefor. Peterson y. Humphrey. . An exception to the exclusion of an offer to prove a loss of damages by reason of the defendant’s infringement of a trade mark, coupled with the condition that the witness (party plaintiff) would not disclose the ingredients of the manufac- tured article containing the trade mark, can not be sustained, where the court have previously decided that if the plaintiff claimed damages by reason of a loss of profits, he must, if re- quired, state the ingredients of his compound, although he was not compelled to do so. Burnett v. Phalon. . In an action brought to enjoin the defendants from infringing plaintiff’s trade mark, an answer alleging that the defendants had sold only a very smal] and specified quantity of merchan- dise bearing the label complained of, and that the same was sold to plaintiffs’ agent at their request, and that the use of the label was accidental, without intent to defraud plaintiffs, or imitate their label, and did not represent the article to be the plaintiffs’, is not frivolous. Where, in such case, judgment is ordered for frivolousness of defendant’s pleadings, the judg- ment should either be in the form proper, where nothing is left to be ascertained but the amount of damages, or it should simply adjudge the pleading frivolous, and leave the plaintiff to apply to the court for the relief he seeks. Guilbon v. Lindo. . The violation of a trade mark will be enjoined, and the party violating may be compelled to produce the articles to which the spurious brands were attached, to the end that such brands may be canceled or erased, at the cost and expense of the de- fendant. urgensen v. Alexander, 166 212 292 295 298 - / 74 INDEX. Practice and Pleading. 6. Where an injunction order served is definite and peremptory, the defendant must at once obey it, or procure an alteration or dissolution of it. If he fails to do either, an attachment for contempt may issue against him. McCardelv. Peck. It is unnecessary in a petition for an injunction, brought by one who has the legal title to a trade mark, and is apparently the sole proprietor of the business in which it is used, to join as a party a silent partner in the business, whose existence is un- known to the public. Bradley v. Norton. The plaintiff in an action is entitled to an injunction at the time of issuing the summons upon the complaint alone, if it makes a proper case and is verified inthe manner stated in the one hundred and thirteenth section of the practice act ; but if he ask for an injunction thereafter, he must do so upon affi- davits. Where an injunction has been granted without notice to the defendant, he may move to dissolve, first, upon the papers, whatever they may have been, upon which it was granted; or, second, from the papers upon which it was granted, and affidavits on the part of the defendant, with or without the answer. If the defendant rests his motion on the papers upon which the injunction was granted, the plaintiff can make no further showing, but must stand upon his complaint, or his com- plaint and affidavits, as the case may be; but if the defendant makes a counter showing, by affidavits, with or without the answer, the plaintiff may meet it with a further showing on his part. If the defendant, moving to dissolve an injunction, uses his verified answer for that purpose, he makes it an affi- davit in the sense of the one hundred and eighteenth section of the practice act for all the purposes of his motion ; and, as in the case of his use of affidavits for that purpose without the answer, the plaintiff is equally entitled to reply by way of affidavits on his part. Fas/kenburg v. Lucy. : . In trade mark cases, it is enough, at Icast after verdict, to allege generally that, by means of the premises, the plaintiff was de- prived of the sale of divers large quantities of goods, and lost the profits that would otherwise have accrued to him there- from. Rodgers v. Nowill. See Damaces, 6; Imitation, 14. 313 331 448 660 INDEX. 975 Presumptions—Purchaser. PRESUMPTIONS. 1. Where one intentionally uses or closely imitates another’s trade marks, on merchandise or manufactures, the law presumes it to have been done for the fraudulent purposes 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 supplanting him in the good-will of his trade or business. Taylor v. Car- penter. 45 2. It will be inferred in a case of violation that the design was to obtain in the manufacture and sale of an article, any benefit or advantage that might be gained by its being purchased for an- other article of the same description which was known in the market, and a court of equity will protect a party from any such attempt on the part of a rival to reap the fruits of the enterprise and industry of the other, in makeing his fabric known and recognized by a distinctive trade mark. Lockwood vy. Bostwick, 555 PROFITS. See DamacgEs. PROPER NAME. See Name. PUBLIC AMUSEMENTS. A court of equity will protect by injunction the name of an enter- prise undertaken for the amusement of the public. The use of the name * Christy’s Miastrels ” protected. Christy v. Murphy. 164 . PUBLIC POLICY. See ConTRACT. PURCHASER Where plaintiff had purchased the exclusive right to the use of a trade mark, it was held that he could not enjoin the sale of goods to which the trade mark had been attached by its orig- inal owner prior to the purchase thereof. Samuel v. Berger. 178 See AssIGNMENT. 776 INDEX. Quality—State Enactments. QUALITY . [t is no answer to a suit for the violation of a trade mark that the simulated article is equal in quality to the genuine. Coats . The statute of 1863, of the State of California, concerning trade marks, does not take away the common law remedy for v. Holbrook. 20 . The fact that the goods to which the spurious labels were at- tached were equal in quality to the genuine is of no consequence. Taylor v. Carpenter. 32 . It is wholly immaterial whether the simulated article is, or is not of equal goodness and value with the genuine. ay/or v. Carpenter. 45 . A trade mark that denotes merely quality will not be protected. Gillott v. Esterbrook. 340 See Oricin. REGISTRATION OF TRADE MARKS. Tue Unirep States Stature. 722 Rutes or Practice. 726 Constructions or CoMMISsIONERS INTERPRETING THE UNITED States STATUTE. 729-737 RESTRAINT OF TRADE. See Contract, 2. SALE. See AsstcnMENT ; Goop-WILL, I. SIGNS. See Imiration, 21; Injunction, 143 MusrepReseNTA- TION, 73 PRactIcE, 2. STATE ENACTMENTS. . In Massachusetts a bill in equity to restrain the fraudulent use of trade marks can not be maintained, under St. 1852, c. 197, without alleging and proving that such use was for the purpose of falsely representing the articles so marked to be manufac- tured by the plaintif. Ames v. King. 151 INDEX. 777 State Enactments. the protection of the same from those who do not register their trade mark according to the provisions of the act. Der- ringer v. Plate. The right of property, in a trade mark, is recognized by the common law, and does not, in any manner, depend for its in- ceptive existence, or support, upon statutory law, although its exercise may be limited or controlled by statute. The right of property, in a trade mark, is not limited, in its enjoyment, by territorial bounds, but may be asserted and maintained wherever the common law affords remedies for wrongs, subject only to such statutory regulations as may properly be made concerning the use and enjoyment of other property. Jdid. By the terms * peculiar name,” letters, marks, devices, figures, or other trade mark or name, as used in the statute concerning trade marks (Hittel’s Laws, art. 7, 134,), is not meant the established and proper names by which the “articles” to which they are attached, and by which they are known in the market, nor something indicating their actual kind, character, or quality, but by them is meant, as the subjects of protection against infringement, something new, not before in use—some- thing of the manufacturer’s own invention, or first put to use by him—something peculiar to him, and not common to him and others—something which is intrinsically foreign to the ‘«carticles”? themselves, and only serves to designate them be- cause it has been fancifully put to that use, in disregard of all natural relations. The statute does not vest in the manufacturer or vender, as the case may be, any exclusive property in the “articles”? manufactured or sold, nor in their names or the words which most apply and properly describe them; and even if such were the proper construction of the statute, it would be void for want of power in the legislature to enact it. If the statute goes beyond the common law, and embraces within its protection matter which relates to kind, character, or quality of “articles,” it is not perceived why it does not trench upon the law of copy and patent rights, and is therefore void. It is suggested, but not decided, that the terms used in the statute, to wit: ‘to designate it as an article of peculiar kind, character, or quality,” were inadvertently incorporated in it under a mistaken notion of the functions of a trade mark, and 324 324 778 INDEX. Statutes—Trade Mark. that in respect of those terms the statute can have no intelligi- ble operation. Falkinburg v. Lucy. . The statute of Missouri concerning trade marks, Gen. Stat. 1865, p. 912, was not designed to weaken or abridge any exist- ing rights, or any future right, to a trade mark which might be acquired by appropriation and use. Fil/ey v. Fassett. . A written claim to a disputed trade mark, filed in the office of recorder of deeds in the county of St. Louis, under the act of March, 1866, Gen. Stat. 1865, p. 912, can not avail a manu- facturer in another State. did. STATUTES. See Stare EnactMEnTs. TOWN, NAME OF, See Name, 10, 21, 25, 26, 27. TRADE MARK. . In trade mark cases the question is not whether the complain- ant was the original inventor or proprietor of the article made by him, and upon which he now puts his trade mark, nor whether the article made and sold under his trade mark by the defendant is equal to his own in quality or value. But the court proceeds on the ground, that the complainant has a valuable interest of the good-will of his trade or business; and having appropriated to himself a particular label, sign, or trade mark, indicating to his customers 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 one who attempts to pirate upon the good-will of his friends or customers, or the patrons of his trade or business, by using such label, sign, or trade marks, without his consent or authority. Partridge v. Menck. . Every manufacturer, and every merchant for whom goods are manufactured, has an unquestionable right to distinguish the goods that he manufactures or sells by a peculiar mark or device, so that they may be known as his in the market, and he may thus secure the profit which their superior repute as his may be the means of gaining. 4m. Man. Co. v. Spear. 448 530 530 72 87 INDEX. ‘779 Trade Mark. oS . The inventor of an unpatented medicine has no exclusive right to make and vend the same, but if others make and vend it, they have no right to vend it as the manufacture of the inven- tor, nor to adopt his label or trade mark, nor one so like his as to lead the public to suppose the article to which it is aflixed is the manufacture of the inventor; and they are equally liable for the damage whether such trade mark be adopted by fraud or mistake. Davis v. Kendall, . The credit and reputation which a man acquires by his care or skill in the manutacture of a particular article, is a species of property which the law recognizes and protects; and when an article, not of his manufacture, is sold with the mark or symbol affixed, which he has devised to designate his own goods, an injury results to him, in the effect upon the reputa- tion of his goods, provided the article so sold is inferior thereto, and in the diminution of the demand for his goods, in case such article is equal or superior in quality. Lemoine v. Gan- ton. . The privilege of a party to the exclusive enjoyment of a trade mark, does not rest upon a right of property therein, but on its prior use and application in the manner in which it has been imitated and employed by the defendant. Watton vy. Crowley. The law of trade marks is of recent origin, and may be compre- hended in the proposition that the dealer has a property in his trade mark. The ownership is allowed to him, that he may have the exclusive benefit of the reputation which his skill has given to articles made by him, and that no other person may be able to sell to the public, as his own, that which is not his. Clark v. Clark. A manufacturer of goods, who, in order to designate his own manufacture, has adopted names, marks, and labels, which are peculiar, and not theretofore used, is entitled to be protected by a court of equity in the use thereof, as trade marks, against fraudulent or deceptive imitation by others. Williams v. Fibnson. . This is true, although the article manufactured by him is com- posed of well-known ingredients, in general use for that 112 142 166 206 214 780 INDEX. Trade Mark. 10. II. 12. purpose, and which any person may combine and sell at his pleasure ; trade marks in such case being appropriately employed to denote a manufacture of the article, by the person using them, and to notify those who buy and use the article, that his peculiar skill, in combining the ingredients, have been employed therein. did. . The doctrine of the protection of trade marks does not depend entirely upon invasion of individual rights, but upon the broad principles of protecting the public from deceit. Matsel/ v. Flanagan. A manufacturer of britannia spoons, for the purpose of distin- guishing them from all other britannia spoons in the market, and for the purpose of designating different classes of his own spoons, adopted several different labels of particular size, form, and color, with his own name thereon and some term descrip- tive of the spoons, and in connection therewith certain figures abitrarily chosen, the different classes of spoons being indicated ‘ by fixed numbers. These labels constituted the only trade mark under which he introduced his spoons into market, and under these labels and numbers the spoons had become generally and favorably known, and a large demand had grown up for them, and they were generally bought and sold by the numbers on the labels. He/d, that the labels thus arranged and used were entitled to protection. Boardman v. M. B. Co. The use of a trade mark fora period of six weeks, during which time it had become known in the market, held sufficient to confer an exclusive right thereto. McAndrew v. Bassett. The defendants bought a quantity of thread which had been spooled by W. & Co., and bore the name “J. W. & Co.” upon the spools, but which, as they alleged, they believed to have been manufactured by the plaintiff; and upon a subsequent sale of the thread, they positively represented to the purchaser that the thread was of the plaintiff's manulacture, and de- scribed it in the invoice by certain numbers peculiar to the plaintiffs’ goods, but at the same time informed the purchaser that their immediate venders were J. W. & Co., whose names the spools still bore. The purchaser afterward substituted on the spools the plaintiff’s name and marks for the name J. W.& Co., and packed and sold the spools so altered in old boxes of 214 367 49° 669 INDEX. Word. a peculiar character, in which the plaintiff’s thread had been sold. He/d, that the representation of the defendants was not such as would justify the court in granting an injunction against them, and the bill was dismissed without costs. Ainsworth v. Walmesley. See Biorietp v. Payne, 635; Unirep States STaTUTE ON Trave Marks, 722. WORD. . When a person forms a new word to designate an article made by him, which has never been used before, he may ob- tain such a right to that name as to entitle him to the sole use of it as against others who attempt to use it for the sale of a similar article; but such an exclusive use can never be success- fully claimed of words in common use previously, as applied to similar articles. Words as used in any language can not be appropriated by any one to his exclusive use to designate an article sold by him, similar to that for which they were pre- viously used. That is, no person can acquire a right to the exclusive use of words, applied as the name of an article sold by him, if in their ordinary acceptation they designate the same ora similar article. He/d, that if the plaintiff in this case can eventually sustain his legal right by action, to the use of the name of “Schiedam Schnapps,” as applicable to a cer- tain kind of gin alleged to be manufactured and sold by him, he may then obtain the relief by injunction he asks for; until then he is not entitled to it, as his right is expressly denied by the defendant. Wolfe v. Goulard. . The employment of particular words or insignia, as a trade mark, must be confined to the place where they are used, and its exportation to other places can not interfere with the right acquired by others previously using them in such places. Corwin v. Daly. . Plaintiff protected in the use of the word « Pessendede,” which signifies ‘ warranted,” upon watches. Gout v. Ale- ploglu. _ No absolute right of property can exist in a word. A person may enjoy the exclusive right to use a particular word upon a 678 226 265 636 782 INDEX. Word. particular article, and yet have no right in respect to the same word when applied to another article. The Amoskeag Man- ufacturing Company had for many years manufactured cotton cloths exclusively, to which it applied the word ‘‘Amoskeag,” as atrade mark. The defendants subsequently made prints, and also used the word “ Amoskeag.” He/d, that defendants had not invaded plaintiff’s trade mark. Am. Maz. Co. v. Garner. 541 5. A. and B. filed their bill, alleging their right to a trade mark in the word “ Ethiopian” upon black cotton stockings, ac- quired by A. and a former partner, deceased, praying an in- junction and account of profits. Defendants denied plaintiffs’ right to the mark as a trade mark, stating that other parties used the word prior to A. and his partner, but admitted that they (defendants) had copied the mark from plaintiffs’ stock- ings, and denied any fraudulent intent in so doing. ‘The evi- dence as to plaintiffs’ right to the mark as a trade mark was very unsatisfactory; but held, refusing-a motion to dissolve an injunction, that defendants, having made so complete a copy of plaintiffs? mark, the difference being only nominal, must be taken to have done so with an intent to gain an advantage to which they were not entitled. He/d, also, that although the personal representative of A.’s deceased partner might have a right to participate in the property, if any, of the mark, A. had such an interest as to entitle him to file this bill. Hine v. Lart. 656 6, Protection refused to the words * Prize Medal, 1862.” Batty v. Hill. 669 7. The word * Excelsior”? protected as a trade mark. Brabam v. Bustard, 674 See Name. KF 3178 c87 1871 Author Vol. Cox, Rowland. L Title Copy Am. trade mark cases. Date Borrower’s Name