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Gornell Lam School Library
“incnai¢
A TREATISE
ON THE
‘LAW OF TRADE-MARKS.
A TREATISE
ON THE
LAW OF TRADE-MARKS
AND ANALOGOUS SUBJECTS,
(FIRM-NAMES, BUSINESS-SIGNS, GOOD-WILL, LABELS, &c.)
BY
WILLIAM HENRY BROWNE,
OF THE BAR OF THE SUPREME COURT OF THE UNITED STATES.
BOSTON:
LITTLE, BROWN, AND COMPANY.
1873.
A S4-29P-F
t6BHS
B48/78 oY
Entered according to Act of Congress, in the year 1878, by
WILLIAM HENRY BROWNE,
In the Office of the Librarian of Congress, at Washington.
HF
3189
Bae
eu
CAMBRIDGE:
PRESS OF JOHN WILSON AND SON.
PREFACE.
A COMPREHENSIVE collation of authorities upon the Law of
Trade-marks, with a clear enunciation of the settled princi-
ples which govern it, is not to be found in any language. A
long-continued experience in the application of the Law of
Trade-marks, has led the author to undertake to meet this
want, so generally felt by the Bench and Bar. The attention
of commercial nations is becoming more fully awakened to
the great subject of protection to maker and consumer, that
protection which guarantees the integrity of signs of trade.
As evidence of this, witness the many commercial treaties and
conventions between the principal governments, and the recent
introduction of the term “ Trade-mark”’ into diplomatic com-
pacts; and witness the stringent remedial enactments of
nearly all countries in regard to the symbol of trade.
Our first legislative recognition, as a nation, of the neces-
sity for protection to Trade-marks, was the Act of Congress,
July 8, 1870. It had a stimulating effect upon our own
people; although the principal object that it had in view, it
must be confessed, was the matter of reciprocity.
Producers are beginning, generally, to realize the truth that
a Trade-mark is of value, far exceeding in worth a temporary
and territorially-limited patent or copyright; and they open
their understanding to the fact that the longevity of the sym-
bol of trade is equal to that of trade itself; while it also has
\N N I VE
ays
vi PREFACE.
a world-wide universality of operation. The natural right
being conceded, the remedy for its violation must follow just
so soon as the tribunals of justice shall have unbarred their
portals to all alike. The members of the legal profession,
including practitioners before the Patent Office, and all who
have given the subject a thought, have a right to expect that
some one will bring order out of Chaos, and reduce the theory
and practice to well-defined rules, based upon adjudicated
cases.
In 1860, Mr. Upton published his book on the Law of Trade-
marks. Down to this time, that is the only American treatise
upon the subject. That gentleman earned the gratitude of the
profession for his extrication of the matter from the doubt and
confusion in which it lay ; for with us this portion of the law
was then but poorly understood. Since Mr. Upton’s book
appeared, great progress has been made in the settlement of
the rules and doctrines of Trade-marks and analogous sub-
jects, as is attested by the fact that the greater number of
adjudications thereon have since been made.
In England, Mr. Lloyd put forth an excellent little treatise
on the Law of Trade-marks, &c., of about eighty pages duo-
decimo; the greater portion of which first appeared in the
“Solicitor’s Journal” during the year 1861, and the early
part of 1862. A second edition was issued in 1865.
In France, in 1855, was published the Code International
de la Propriété Industrielle, Artistique et Littéraire, by MM.
Pataille and Huguet; and in 1865 appeared an Appendice to
the same, by the former gentleman. This is a work of great
merit, containing as it does much and various information in
regard to treaties, commercial conventions, and other congru-
ous matters; but to us it is limited in value, other than as a
book for reference. In 1855, those gentlemen also commenced
PREFACE. vil
the issue of a periodical entitled Annales de la Propriété, ete.,
principally composed of decisions of the tribunals of commerce
and courts of France, and sometimes of Belgium, Switzerland,
and other countries, in patent, copyright, and trade-mark eases.
The publication still continues under the able editorship of
M. Pataille, assisted by other jurists and writers of recognized
ability. The seventeen volumes of this work contain a mine
of wealth, not only in the terse, logical decisions of the courts,
but also in the able contributions of essayists. It will be seen
that many references thereto are made in the following trea-
tise; for the principles involved in their deliberations are
applicable to our own controversies.
In Belgium, in 1848, the zealous Jobard sent forth his
Création dela Propriété Intellectuale, which, although mainly
devoted to the discussion of patent and copyright matters, still
incidentally furnishes food for reflection on the subject of our
present investigation. The same may be said of more recent
books by the same author.
Our libraries are not rich in the possession of German lore
on this subject; and the few accessible books in the German
language are mostly elementary, containing but little in the
matter of judicial decisions. Klostermann’s work, entitled
Die Patentgesetegebung aller Lander, ete. (Berlin, 1869), has
enough upon the law of Trade-marks to satisfy any one that
the principles thereof are understood and applied in all coun-
tries in the same way, and to the same extent.
In 1871 appeared a volume of nearly 800 pages, entitled
“ American Trade-mark Cases,” gathered by Mr. Rowland
Cox. This collection is convenient and valuable, inasmuch as
it contains or embraces the principal published decisions of
the courts of the various States of this Union; and in an
Appendix the decisions of the English courts.
Vill PREFACE.
We have also Fisher’s English Digest, and other Digests by
able American editors. These all are useful, if they do no
more than point the direction in which the inquirer shall seek
- more full and explicit authoritative enunciations of legal prin-
ciples. It is, however, to be regretted that these collections
of decisions are not carefully classified, so that a Trade-mark
proper may at a glance be distinguished from analogous sub-
jects. The titles are too general. This fault — for so it must
be termed —is not attributable solely to the collectors of
decisions, but in some measure to the judges and reporters,
who do not properly label their wares before they send them
forth to the world. These frequently bear false marks. In
the hurry of practice, the counsel cites a case as authority,
and to his chagrin finds that it will not bear the test of anal-
ysis. The supposed Trade-mark case turns out to be one of
good-will of a hotel, a contest about the right to a sign over
the door of a dry-goods shop, or something else quite value-
less for the purpose required. Careless terminology is suspi-
ciously like the outgrowth of a careless habit of thought.
The Law of Trade-marks must be gathered from the reports
of judicial decisions of all civilized countries, not the least
valuable of which are those of commercial tribunals of the
Continent of Europe. In the discussion of ordinary legal
topics, we must be content with the adjudications of courts
under the sway of the common law of England; but in this
matter, with Mansfield, we go below the surface, and seek the
origin of the fundamental rules of our subject in the immuta-
ble law that Nature herself ordained. Local law could do no
more than affect the remedy for a violation of a Trade-mark
proper. Therefore, we go to the very foundation of right, to
the law that has no place nor time.
PREFACE. Ix
This work would have been incomplete without a brief
history of proprietary-marks of various kinds. It includes,
also, a statement of the foundation of title to a Trade-mark ;
by whom, and how, the same may be acquired; the character-
istics that entitle it to protection; what is deemed a violation
of the right; the remedies, preventive, remunerative, vindica-
tory ; and the practice and forms.
It also treats of analogous subjects, as mere labels, stamps,
envelopes, advertisements, and other things frequently mis-
taken for and cited as the universal mark of commerce; and
also of the names of establishments of trade, of inns, &.; of
names of firms; of names of literary publications, and other
matters, all controlled, more or less, by the same principles,
although variant in nature.
Perhaps not the least interesting matter will be the decisions
of the Patent Office in the treatment of applications for regis-
tration, mostly never before printed. The rules and forms of
practice in the Office must, it is believed, prove to be of some
value to the practitioner.
Much valuable material may be found in the Appendix, in-
cluding an alphabetical list of eleven hundred registered cases,
with short descriptions, &c.
So far as possible, the latest decisions of the courts of Eng-
land, France, and other European nations, as well as those of
our own land, have been consulted and cited.
W. H. B.
Wasuineton, D.C., January, 1873.
CONTENTS.
[The figures refer to the sections.]
InpEXx To CASES CITED .
CHAPTER I.
INTRODUCTION
CHAPTER IL.
PRorecTION OF TRADE-MARK PROPERTY .
CHAPTER III.
DEFINITION AND NaTuRE oF A TRADE-MARK
CHAPTER IV.
INDICATION OF ORIGIN OR OWNERSHIP
CHAPTER V.
EXAMPLES OF TRADE-MARKS
CHAPTER VI.
Act oF ConGRess oF 1870 EXPLAINED
CHAPTER VII.
PROTECTION AND REMEDIES UNDER THE ACT .
CHAPTER VIII.
INFRINGEMENTS .
xv
20
80
144
195
278
330
385
xil CONTENTS.
CHAPTER IX.
Remepies — Law anv Equity
CHAPTER X.
DEFENCES .
CHAPTER XI.
DaMAcGEs
CHAPTER XII.
RicHTS ANALOGOUS TO THOSE OF TRADE-MARKS .
CHAPTER XIII.
PracricE IN Parent OFrFIcE GENERALLY
CHAPTER XIV.
INTERFERENCES IN PaTENT OFFICE
CHAPTER XV.
ABANDONMENT OF TRADE-MARK .! .
APPENDIX.
[The figures refer to pages.]
451
474
499
221
565
617
674
TREATIES AND Conventions. — Austria, 557.— Belgium, 558. —
France, 558. — German Empire, 559. — Russia, 559.
Laws or Various Counrrirs. — Austria, 560. — Bavaria, 563.
— Belgium, 563. — Canada, 564. — Denmark, 565. — Eng-
land, 565.— France, 569. — Holland, 572. — Prussia, 572. —
Rome, 572.— Russia, 572. — Sardinia, 573. — Saxony, 573.
— Spain, 578. — Wirtemberg, 573.
Parent Orrice Forms.— Application for Registration, 574. —
Transfer of Trade-mark, 578. — Preliminary Interference,
&c., 578. — Interference, &c., 582.
CONTENTS. xiii
Forms or Preapines, &c. — Declaration in Federal Courts, 586.
— General Demurrer to Declaration, 590.— Plea in Abate-
ment, 591. — Replication, 591. — Notice of Motion for leave
to amend, 592.— Complaint at Common Law in State
Courts, 592. — Bill in Equity, Federal Courts, 594. — Order
to show cause why Injunction should not issue, 596.—
Answer to Bill, 597. — Decree for Injunction, 598.
TABLE OF CASES REGISTERED AS TRADE-MaARKS, 601.
Invex. — 641.
INDEX TO CASES CITED.
A.
SECTION
Abadie & Co. v. Proudhon & Co. 224
Abington v. North Bridgewater 288
Adams & Hammond v. Edwards et al. & 676
Ainsworth v. Walmesley “66, 199, 205, 312, 360
Aldrich é al. v. Bngham 619
Almy v. Harris. om Ree ee A ee we 424
American Hide, &c., Co. v. American Tool, &c., Co. . . . «678, 682
Ames v. King . # oe ws 427
Amoskeag Manuk Co. v. ‘Garner :
“36, 310, 311, 450, 497
Ampekens Manuf. Co. v. Spear . . . 36, 93, 153, 235, 462, 685, p. 598
Armistead v. Blackwell .
Arnold v. Bishop .
Aubertin v. Vix et al.
Auburn, &e. v. Douglass
Badoit v. André
Banks v. Gibson
Bardin v. Gobert et al.
Bardou v. Lassausée . et. dae
Bardou eé al. v. Sabatou et als.
Barnett v. Kiibler .
Barrows v. Knight
Batty v. Hill
Bautain v. Mercklein .
Beard v. Turner
Bell v. Daniels .
Bell v. Locke
Bernard v. Emonds
Berthelon v. Vergé
Binninger v. Wattles .
Bisson-Aragon v. Aragon
Blackwell v. Armistead .
Blanchard v. Hill . -
192, 653
319
48
508
170
530
601
212
398
166
216, 426, p. 590
she 5 597
527
497
502
105, 107, 550
200
535
597
187
.. 659, 660
395, 458, 500
XV1 INDEX TO CASES CITED.
SECTION
Blanchard v. Reeves . st bias? ate ie Wa SE? TR) apse a Eh» 467
Blofield v.Payne. . . . . . . 1 we ss + 468, 500, 507, 541
Bloss v. Bloomer . gone se Soe a ew B74, 443
Boardman v. Meriden Hritanwia Co. 2 oe ee ew ee 148, 230, 395, 538
Bonnet et als. v. Henry Delisle poke 527
Bournhonet & Basille v. Tisseron e¢ al. . 179
Boyd v. Browne Sm Stem fare iit Ek a “be: SETI, ES ws 336
Bradley @ Norton: ace Ge gi ote Oe 663
Braham v. Bustard, . . md gh _sbhete,. Ws ahaa eS 4 245
Brooklyn White Lead Co. v. . Masury. . oe ee. . 183, 191, 657, 659
Brown v. State of Maryland . . . . 1. 1 1 ee ee 301
Brow: Warband! a. a0 0 we) 4.44) a Ge Ro aemise ao om ap 258
Brunswick v. Dunning . 2. 1 ww eee ee 299
Bryce oy Dorr. 2g Oe eee ‘ee Gl gee we de 508
Burgess v. Burgess . 6 1 ww ee ee ee é _ 482
Burnett v. Phalon. . 2. 2. 1... wee ‘ 937, 397, 450, 657
Bury v. Bedford . . 2. 2. 2... ee (862, 866, 487
Byass'y. Sullivan. 6 «6 2 @ @ 4 6 6 be 8 Bw 8 427
C.
Cahoon v. Ring . . . i tye, ae RA a Goad cles Se 355
Caminade & Co. v. Cuidinails oe es Rehan, Sie yet. Meme van. Biers 527
Candee, Swan, & Co. v. Deere & Cs. BSS. Boat 8 Sicls, fy. 597
Carey 6. Collie 2 see we Ba me A 809
Carmoyv.Samson . . . . 1. 1 1 ee eee ee 440
Carpentier v. Canives . 2. 1. 2... ewe ee ee 414
Carterv. Baker . . . . . we ee) 805, 513, 517
Carver v. Pinto Leite . . . . . ee ee 473
Castille». Dennery 2 2 4.) & 4 owe ke Rw ee: 552
Caswelle. Davis 2. 9: 2 4 @ & 2 8 ww Hb we ee 220
Chabrier v. Peillon . 2. . 2... ee ee 598
Chaize v. Fromentelle 2. 2. 2... . ww. ee 536
Chappell v. Davidson. ©. 2... 1 kw ee en 549
Chappellv. Sheard 2 2... ew eee 557
Cheever v. Wilson . . > Se iy trans: eh ee Ge. ae le (i 289
Chevet v. Lemasson . . . . . 1. ew ee 527
Childv. Adamset als. . 2... 2... ee 328
Choynski v. Cohen . . ol Ue aS ee a ae cd OO
Christofle & Co. v. Deleidénrier S Bites Bee PA de, des a 2?, 61
Christy v.Dande. ©. 2. 2... ee 261
Christy vs Murphy . -. . 1... ww. Le... 65, 528
Churtonv. Douglass. 2. 2... kk, 526
Clarkw: Clark. . 6 6 ¥ © & 6 eb be ee ew 388, 427
Clark v. Freeman. . 2. 2. 2. 2. ew 1... 898, 555
Clayton v. Stone . . . ee fon -fehvryen feet athens Ban 22 108
INDEX TO CASES CITED.
Clement v. Maddick .
Clertan et al. v. Carpentier .
Clicquot v. Rondeau et als.
Clinton et al. v. Douglass. eo tam Nal Pgh Zo tke aS Bees
Coats v. Holbrook . 2... 1. ee ee ee 36,
Cocks v. Chandler . be Oe ye ae ae j
Coffeen v. Brunton . . é "458, 460, 462, 468,
Cohen & Co. v. Maris and Widow Robert .
Colladay v. Baird .
Collins Co. v. Brown
Collins Co. v. Cohen .
Colton v. Thomas .
Compere v. Bajou eé als.
Comstock v. White Sts
Congress eeere BEE, Co. v Heh Rock Conevess Spring
Co... . . . 89, 146, 191, 247, 360,
Conover v. Baga j
Corwin v. Daly.
Covel v. Maxim
Cowing v. Rumsey et af. a
Cox v. Land and Water Journal Ga,
Crawshay v. Thompson . ee iahesas 2 ae
Croftv. Day . . Sed te: Ts 98, “201, 374, 393, 422,
Crompton v. Belknap Mills . ‘ pe tasst 23 :
Crutwell v. Lye wo Footage a ee Sa
Curtisv. Bryan . . . . . . 1. we ws 201, 874,
D.
Dalbanne & Petit v. Colleuille & Co. e eos ow
Dale v. Smithson . . 2. 2 1. 1 ee ee ee 374, 458,
Davis v. Garrett bs Gece See cb LY EP ae al iS
Davisv.Kendall . . . . 2... eee ee 273, 468,
Day v. Woodworth 4b) GR) to teen ty. A, ca A neers Bo WN acs
Dayton v. Wilkes. . . fe GR ae 4 cain G06;
De Bussy (Charles) v. Charles Weal eter
Delaware & Hudson Canal Co.v. Clark . . . . . 144, 189,
Denis & Mounier v. Vignier, Dodart, & Co. .
Dental Vulcanite Co. v. Wetherbee .
Derringer v. Plate 2 2. ee ee ee eee ee A,
Dietrichsen v. Cabburn . Sota: oe
Dixon Crucible Co. v. Guggenheim . . 37, 114, 172, 360, 396,
Dorvault v. Hureaux .
Dorvault v. Teissier & Co. .
Dougherty v. Van Nostrand :
Dugué & Co. v. Bobot-Descoutures .
Xvi
SECTION
550
236
455
98
336, 496
542, 546
501, 538
252
186, 312
301
301, 360
540
209
38, 563
657, 661
513
65, 895
648
507, 513
559
395, 458
423, 538
325
523, 526
426, 492
216
494, 538
518
516, 563
519
108, 550
556
657, 661
253
689
360, £24
562
420, 541
529
529
526
603
Xviil INDEX TO CASES CITED.
E.
Eames & Sealey v. McDougal .
Eberman v. Reitzell . ‘
Eddleston * v. Vick
Edelston v. Edelston .
Ellis v. Zeilen & Co. .
Ely v. Monson . 2
Estibal v. Petit- -Denenge
Faber v. Faber
Faivre v. Duguaire et al.
Falkinburg v. Lucy
Farina et al. v. Camus
Ferguson v. Davol Mills .
Fetridge v. Merchant
Fetridge v. Wells. Rs
Filley v. Fassett 2. 6. 2. 6. es
Foote v. Silsbee
Forsythe v. State .
Fowle v. Spear.
Frances (The) case
French v. Rogers .
Galy ». Mauchien & Co.
Garnier v. Berthe . F :
Garnier e¢ al. Carthusians v. Rivoivs
Garnier v. Paul Garnier .
Garnier v. Lindiére et als.
Gilbert & Co. v. Benedictus
Gillis v. Hall.
Gillott v. Kettle
Gillott v. Esterbrook . ‘ ‘
Glen & Hall Manuf. Co. v. Hall
Glenny v. Smith
Goodyear v. Dunbar .
Goodyear v. Hullihen
Gourbeyre v. Bodevin
Gout v. Aleploglu .
Gravelet (dit ‘* Blondin ») 4 v. Avriadil
* In the reports this name is spelled two ways
SECTION
638
373
72, 73, B41.
411
418
466
551
421
184, 657
"88, 148, 255, 538, 657
302
149, 234
38, 244, 374, 462
. 148, 241, 244, 327, 372, 488
148, 150, 664, 682, 685
503
373
874, 429, 475, 491
295
323
564
407
ji 409
408, 410, 582
409
441
425
36, 446
: 226, 401, 446, 512, 544, 685
401, 442
531
464
324
236
222, 343
213
: this is probably correct.
INDEX TO CASES CITED.
Green v. Folgham .
Guerineau v. Mignon fe Ls
Guislain & Co. v. Labrugnére .
Guyon v. Sewell
Hall v. Barrows 2
Halbron v. Malespine
Hammond v. Douglass
Harrison v. Taylor
Hawkins v. Lambert .
Hayden v. Phillips
Heath v. Wright ‘
Heidsieck v. Souris, Dresel, et als,
Hérold v. Gerbeau
Hine v. Lart
Hobbs v. Francais
Hogg v. Emerson .
Hogg v. Kirby .
Holloway v. Holloway
Holmes et als. v. Holmes et wale:
Holtzer & Co. v. Lendenberg & Co.
Hovenden v. Lloyd
Howard v. Henriques
429, 475, 491
xix
SECTION
562
236
397, 450
503
312, 360
416
526
497, 660
633
619
455
679
150, 612
485
508
108, 458, 474, 548
430, 541
354
50
543
83, 92, 95, 96, 528
Howe v. The Howe Madiine Go. bh a oe . . . 201, 422, 423
Howe v. Searing . . . 2... 83, 98, 99, 210, 522, 524, 526
Hudson v. Osborne BP uae, Aaa a . 437
J.
Jackson v. Nichols 633
Jansen v. Ostrander . 299
Jenkins e¢ al. v. Putnam 633
Jones v. Pearve .. . 627
Jurgensen v. Alexander . 427
K,
Kemp v. Herman . 302
Kenyon v. Wesson 627
Knott v. Morgan . 413, 560
L.
Lagarde v. Piper . 400
Laker v. Damon 510
xXx INDEX TO CASES CITED.
Lalande e¢ al. v. Appel ef als. .
Laurens v. Laurens
SECTION
85, 141
527
Leather Co. ». American Leather Co. 30, 41, 64, 83, 85, 87, 96, 126, 141,
Leather, &c. v. Hirschfield .
Lee v. Haley
Leech v. Doorgachurn a al.
Lemercier v. Millin
Lemoine v. Ganton
Leroy v. Calmel 5
Levigoureux eé¢ al. v. Lecompte & Co.
Levy v. Bizet
Lewis v. Langdon
Lockwood v. Bostwick
Lord Byron v. Johnstone
Lorimier & Bovet v. Dubois
Lowell v. Lewis
Marsh ». Billings .
Marshall v. Ross
Martell & Co. v. Badoureau & "Patte.
Massez v. Joly .
Matsell v. Flanagan .
Mauprivez v. Buchet e¢ als.
McAndrew v. Bassett
McCardel v. Peck .
McCartney v. Garnhart .
Merrimack Manufacturing Co. v. Guenter :
Messerole v. Tynberg
Michel (Désiré) & Co. v. Achard & Co.
Michel (Nestor) v. Stremier a
Millaud v. Caron . ‘
Millaud v. Marian et als.
Millaud v. Le Petit Journal du N ord.
Millington v. Fox. . .
Ministére, &e. v. Compagnie de VEst
Moet v. Couston : . :
Mondin & Co. v. Sari ef ls,
Moorman v. Hoge
Morison v. Moat
Morison v. Salmon
Mottley v. Downman.
Mowry v. Whitney
Muller v. Compagnie immobiliére
360, 374, 477, 657, 661
505
498
74
529
683
49, 682
187
236
526
360, 397
554
539
508
. 458, 501, 505, 561
72
456
434
36, 107, 874, 550
; 165
| 52, 184, 657
97, 528
ny 403
256, 462, 538
67, 216
190
236
417
417
fees 417
312, 393, 468
71
471
j 534
841, p. 625
562
429
102, 462
624
529
INDEX TO CASES CITED. Xxi
N.
Newbury v. James . .
Newby v. Oregon Central R. R. Ca, “et ails,
Newman v. Alvord ds Her (ero
SECTION
562
2 353
182, 188, ‘538, 657, 659
oO.
O'Hara v. Hawes . 319
P,
Page v. Ferry . 503
Palmer v. Harris . 3 374, 481
Panckoucke v. Witfershaim 415
Parker v. Brant 464
Parker v. Helme 503
Parker v. Sears ae eG cwlse, te Sat 464
Partridge v. Menck . . . . 32, 35, 256, 374, 386-387, 462, 489, 496
Pasley v. Freeman ee ek Hos & es 336
Perry v. Truefitt A, 393, 479, 532, 66f
Peterson v. Humphrey 524
Phalon v. Wright . 166, 484
Phelps v. Brown 614
Pidding v. How bs 480, 491
Pinaud & Amour v. Pineau. 527
Pisano v. Lawson . 801
Potter v. Holland . 855
Prudon v. Brousse e¢ al. . 605
Purser v. Brain 549
R.
Ransom v. the Mayor, &. . 355, 502
Reg. v. Closs 453
Reg. v. Gray & Godin. 452
Reg. v. S. Jones . 452
Reg. v. J. Smith . 452, 453
Rian v. Bernheim . ‘ 165
Ricque ef als. v. Forges et al, ote 268, 585
Rodgers v. Nowill . . . 367, 428, 458, 507
Rodgers & Son v. Philp & Sclomons 684
Reederer & Co. v. Roederer . 438
Rogers v. The Amado 295
Ross v. Ross . . 288
Rowley v. Heughtan . : 612
XXil INDEX TO CASES CITED.
Ss.
SECTION
Salignac & Co. v. Lavanier & Co. . . A> ath oe IES GS a" a 599
Samuelv. Berger. . . 2 2. 1 7 eee ee ee ee 861, 474
Sargentv.Romeu. . . 2 1. 2 2 ee ee eee ee (50, 216
Schorthose v. Hogg . . ue ih the ee. a 3 529
Schrauder v. Beresford & Co. StoXs ete, ey es “Ae Ee 383, 449, 626, 661
Seixo v. Provezende. . . . . ww we eee es) 885, 405, 661
Serrell a: Collins: 2-5. 4: se a a a a we 355
Seymour v. McCormick. . . . . . os Tele, Ape, 503
Sickles». Borden. . . 2. 1. 1 ew ee ee ee 515
Singleton v. Bolton . . 2. . 1 1... «180, 867, 395, 458, 500
Smith v» Woodruff . . . . . . we ee . . 476, 493
Snowden v. Noah. . . . . 1 ww ee ee 36, 104, 107, 550
Somborn v. Menseretal. . . . 2... ee ee 356
Southern v. How. . . . . . ww ee ee "63, 395, 500
Southronv. Reynolds . 2. 2. 1 ww ee ee 17
Spaulding Page <<. Geico se we Ww ee Se 515
Spaulding,o,"Packer) 6 = ¢ 4 & &¢ Bo * & & Be @ 515
Spencer & Sonv. Peigney . . . 2. 2... . . . . 178, 686
Spottiswoode v. Clarke . . . 2... . «681, 257, 462, 549
Stephens v. De Conto . . be ee a ee O85, 111, 550
Sternberzer v. Thalheimer & Hinols Be tee Gan che . 857, 383, 638
Stevens v. Keating 2. 2... 1. ew we ee 463
Stewart v. Smithson Nee Gaede cit. ES ABA cela Bes SE) ee dnote % 495
Stokes v. Landgraff . . Se iG) oh) hex ca, od Ae dese, SLOteLOOs D9?
Stone v. Caviaw. SD igh Ey tert AG cam it, Ske. hy SAL Gedy ove 560
Stonebraker v. Stonebriker ye Rn hoe te ek ce hes ey 435
Stubs v. Astieretals. . 2... . . kl, . 48, 178, 688
Swifte. Dey 2-4. kk ee ee a we . 86, 118, 450
Sykesv. Sykes. 2. 2. 1 2 2 201, 395, 422, 423, 461
T.
Taylor v. Carpenter (3 Story, 458) . . . . - . . 21, 36, 685
Taylor v. Carpenter (2 Wood. & M.1). . . 21, "65, 301, 336, 503, 685
Taylor v. Carpenter (11 Paige, 292). . . . - + « . 65, 496, 501
Pegmeyer: vKeris: 4 4 2 we fi ae ow we he 627
Ternaux v. Bournhonet. . . . . . . ee 527
Thibierge v. Dupontefals, . . . . ln 165
Thomas v. Weeks. . . 2... ergs a? bala gs 4 qe oe 661
Thomson v. Winchester. . . POG Oe Bo Boe eek 203
Thunot-Duvotenay v. Degorce- Cadot i) el dy ee ee ee 553
Tipping v(Clarke sa kw ee OR GS 562
Tournachon v. Tournachon. . . . 2... ie ee i a, & 213
Tracy o. Swattwout . 2 5 ee kk ke we 503
INDEX TO CASES CITED. Xx
U.
SECTION
Upmann v. Elkan. . . ds Had, God. fe Beate eet 472
U.S. v. Hudson & Gaodain os Saar AP ctchey Shed tte te. ok 450
Vv.
Venus (The) case... 6 1 we ee ee ee ee 290, 295
W.
Walch, Brooks, & Kellogg v. M. J. Cole &@Co. . . 1 we. 662
Walton v. Crowley . . . . . « @ el ay e - 1860;, 402
Ward v. Ward. . . .. .. es at le at! Gp! aes 682
Warton». Klug... che OE es Bn ee Tak 439
Wedgwood ét als. v. Smith et ale. oe hoa ee: 216
Welche: Knott. . 2. 5 # © « © % we H 8 & # we w a 393
West: 0. RIG6~ <8 ae ee es a he Gs, ae Oe 502
WrestGa: @.HUnt: a ce eo ae Re ge 299
Wheaton v. Hubbard. . . 1. 1. eee ee ln 424
Whittaker » Cutter. 2. 2. 1. 1. 1. ew Sow ‘ 325
Whitely v. Swayne . . . 1... . Bie fie, ao SP as 322, 329, 651
Whittemore v. Cutter... ee eee 508
Williams v. Johnson. . . . x ove VD gs) ete epetien Ue be) DE B97
Williams v. Spence . 2. 1 1. ee ee ee ee 597
Williams v. Williams . . #8 Sy i 2 Bu 562
Winans v. N. Y. & Erie R. R. ‘Co. ee ee ee ee e 4 335
Wintermute v. Redington . . 2. «© . 2. we ss 503
Woodward v. Lazar . . . ww eee ew we) 92, 528
Woolam v. Ratcliff 2... . 2 ee ee 412
Wolfe v. Goulard . . a te er eos. cet: seas 596, 660
Wolfe e¢ als. v. Udolpho Wolte Co. Ke et) Pare he he Ea oy 596
Wotherspoon v. Currie . 2 1 ww ee ee eee. (184, 185
Youatt v. Winyard . . . . : bs ak Fy 652
LAW OF TRADE-MARKS.
CHAPTER IL.
INTRODUCTION.
Antiquity of Proprietary Marks. — Some Ideas as to their Use by the Ancients.
— Symbolical Language of Trade-marks. — Vouchers of Authenticity of
Articles of Commerce. — Of what may Marks consist.—Seals, Coins, Em-
blems. — To be respected must be protected. — Use by Manufacturers,
Traders, Booksellers, &c.
§ 1. Antiquity of the Subject.— The proprietary instinct is
an implantation of nature. The claim to property is asserted
by means of symbolism. A man may be permitted the free
use of an estate; but his enjoyment of it must necessarily be
imperfect unless his title be attested by the symbolical marks
borne by the title-deed. Upon the genuineness of those marks,
consisting of words, signatures, and seals, depends his faith.
If any of those signs prove to be false, the absolute right to
the property is illusory. Who would purchase even a toy for
a child without feeling assured that he was being dealt with
in good faith? He desires a particular article, the make of
some especial manufacturer. He glances at a mark upon the
thing offered. It is sufficient. It has a peculiar sign upon it.
Faith guides him. The same faith has governed men in their
commercial transactions through all past ages, and must con-
tinue to do so for all the future.
§ 2. Seals and emblems of ownership were coeval with the
birth of traffic. The numerous relics of prehistoric antiquity,
1
2 LAW OF TRADE-MARKS.
which have floated down to us on the current of Time, fully
authorize this conclusion. That such marks were always in
use at less remote periods, we gather from the records of
chroniclers, on whose lips the signet-royal of Death was im-
pressed thousands of years agone. In truth, no organized
system of trade could safely be conducted without the aid of
symbols of ownership, or of origin; for the simplest mode of
exchange of goods, to be trustworthy, must be subject to faith
in the authenticity of emblems attesting the probity of the
vendor. We may reasonably assume, therefore, that marks
were found to serve an important purpose from the beginning
of competition in manufactures and the incipiency of commer-
cial spirit. What more natural than to affix a mark of identity
to any thing we make or possess! It is not done through a
churlish or selfish motive, but merely to avoid confusion and
dispute.
§ 8. Such emblems had their origin in a general ignorance
of reading the combinations of cabalistic characters that we
call writing. A written certificate of the genuineness of any
article of merchandise could not be understood by the no-
madic peoples who desired to barter natural products for some-
thing made by the hand of skilled artisans. A simple emblem,
as a crescent, a sun, a star, an animal, or other object copied
from nature er devised by fancy, when once associated with a
particular class of goods, or the handicraft of a certain man,
would readily be understood. Perhaps Tubal-cain — he who
in the first ages of the world was “ the instructor of every artif-
icer in brass and iron ” — was wont to impress on his utensils
and weapons a peculiar emblem of authenticity. Faith, the
very soul of commerce, thus gave mutual advantages. The
maker was protected against unfair competition of inferior
workmen, and the purchaser had a guaranty of excellence.
The mark was as easily read as were the marks that distin-
guished the cattle of Jacob from those of Laban. It spoke an
emphatic language: When you see me, know that I have come
INTRODUCTION. 3
from So-and-so. From the day that such signs were used by ar-
tisans to indicate the product of their skill, or by merchants to
vouch for the honesty of commodities sold or traded by them,
base imitators must have existed, for dishonesty is not the
junior of art. He who could forge a piece of metal could also
forge a symbol. Thence arose the necessity for restrictive laws
and retributive penalties ; for from the beginning of the world
the protection of the helpless and innocent has been a supreme
object of legislation. ‘The law was made for transgressors,”
and to the law the wronged, the weak, the simple, look for
redress from the rapacity of wicked men, and for the conserva-
tion of their rights. We can readily conceive how easy was
the transition from the process of marking animate property
to inanimate, from the branding of flocks and herds to the
branding or otherwise marking of manufactures. The history
of the word chattel informs us that in the early ages beasts
constituted the chief part of a man’s property. The word
signifying cattle came to mean all other kinds of movable
property the subject of bargain and sale, so the symbol of own-
ership might as well be applied to one kind of personal prop-
erty as another. The object of affixing a mark was gain, just
as itis now. It is meant to insure an adequate reward for
acceptable workmanship, or to be evidence of authenticity.
§ 4. Seals are the most sacred of proprietary marks; and
from early antiquity they have been used. The seal has ever
been a distinguishing mark of ownership; of security, as in
the case of sealing the den of lions upon Daniel, and the door
of the sepulchre wherein was laid the body of the Saviour ;
of affection, as in the language of the-Church to her Lord in
the Song of Solomon: “Set me as a seal upon thy heart, as
a seal upon thine arm;” of honor, of secrecy, of attestation,
of authenticity. The ségi/um or signet of a monarch or man in
authority has always been deemed ah instrument of power.
Many noble families have in use ancestral seals which have
descended to them from distant generations, and which they
4 LAW OF TRADE-MARKS.
regard with reverent pride. The seal is a figure frequently
mentioned in Scripture. We read of the inscription on one,
“The Lord knoweth them that are his;’! and St. John tells of
the mighty host who were sealed in their foreheads? We
speak of the seal of baptism, the seal of holy communion, the
seal of matrimony, and, most solemn of all, the seal of death.
§ 5. Soon after the Norman conquest, in consequence of
their presence being required to give validity to every species
of legal documents, sraLs became instruments of the greatest
moment; and heraldic insignia, with a representation of the
‘knightly shield, upon whose field they were displayed, were
exactly suited to fulfil all the requirements of the seal-engraver.
By such means heraldry became interwoven as well with the
peaceful concerns of every-day life as with the display or mar-
tial splendor and turmoil of war. Heraldry may be regarded
as a science, insomuch as it possesses a system, a classification,
and a language of its own, — which language speaks forth in
many a hundred trade-marks. But in this work it is simply
as a token of proprietorship and authenticity, and as a fertile
source of business emblems, that we regard the seal. Whether
as a sign, a word, a brand, —in all cases the legal significance
is the same. A brand (from the Anglo-Saxon, brand, to burn)
is a seal of ownership imprinted on casks or other wood-work
with hot iron; derived from the custom of burning criminals
with heated metal. Seal-marks of rank, profession, trade, are
infinite in style, but each is sacred to its possessor or origina-
tor. No man has any more right to plunder his neighbor’s
emblem, whether private or professional, than he has to steal
his gold or his wife. In hereditary dignities, the seal, regarded
as a precious jewel, attached to the title, and the most rare
and exquisite gems are often employed in their construction.
Heraldic devices are frequently highly prized as commemora-
tive of family honors. Virgil assigns to Aventius « insigne
1 2 Tim. ii. 19. 2 Rev. vii. 3.
INTRODUCTION. 5
fraternum” upon his shield, — his hereditary device, derived
by him from his father.1 Badges are likewise proprietary
marks: “ Might I but know thee by thy household badge,” ?
says Shakespeare ; and again he says, ‘For sufferance is the
badge of all our tribe.””> The label, another heraldic term, is
only connected with trade-marks so far as being a groundwork
for figures or other devices.
§ 6. Sign-boards are yet another description of proprietary
marks. The ancient Egyptians, Greeks, Romans, seized this
idea of advertising, and displayed sign-boards with inscriptions
denoting their trades, further embellished with the most strik-
ing emblems thereof. We have no reason to think that the
shrewd Oriental and Latin merchants were in those ancient
days a whit behind their successors in the great bazar of life in
devices to influence trade. On the contrary, they seem to have
been exceedingly fertile and ingenious in symbols and other ad-
juncts of popularity. Amongst the ruins of Herculaneum and
Pompeii have been discovered signs crudely painted, or graven
in stone, or modelled in relievo in terra-cotta and inserted in
the pilasters at the side of the open shop-fronts. Thus there
have been found a goat, the sign of a dairy ; a mule drawing a
mill, the sign of a baker; and, at the door of a school, the uot
very seductive sign of a doy undergoing a birching at the hand
of the master. At the shop of a perfumer were represented
various items of his traffic. There were also the signs of the
anchor, the ship, a sort of chess, and chequers. In Herculane-
um, at what was probably the door of a shoemaker, was a painted
Amorino, or Cupid, carrying a pair of ladies’ shoes, one on his
head, the other in his hand. Complex or simple sign-boards
seem to be indispensable to priident trading, and the most illit-
erate rustic has sufficient tact to fashion a trade-mark peculiar
to himself, and not to be infringed on by another. From the
custom of setting up a green bush at the door of a vintner,
1 Aneid, vii. 2 Henry VI., Part 2, Act 5. # Merchant of Venice, Act 1.
6 . LAW OF TRADE-MARKS.
arose the Italian proverb, “Al buon vino non bisogna frasca.”
From the Romans undoubtedly our forefathers adopted the
sign-board. A thousand-or-so years ago reading was a rare
acquirement with the commonalty; consequently to write the
trader’s or owner’s name would be of little avail. Those that
could, advertised their names by rebuses; thus, for instance, a
hare and a bottle stood for Harebottle, and two cocks for Cox.
Others, whose names no rebus could represent, adopted pictorial
objects according as genius or imagination suggested. What
more convenient than for an innkeeper to emblazon on his sign-
board the family crest of the lord of the estate whereon he
lived! Luther was generally represented by the symbol of a
swan; thus, “The Bible and Swan” was the characteristic
sign of an inn in honor of Luther. Did not Lord Mountgarrat
derive his title from the fact that one of his ancestors was a
man of letters, probably a briefless barrister who had his
dwelling in an attic? Temporary or accidental emblems have
ofttimes become permanent associations, as in the case of the
style of paper termed foolscap. In the reign of Charles the First,
all English paper bore in water-marks the royal arms. Crom-
well’s parliament, to cast indignity upon the memory of that
unhappy monarch, substituted the fool’s cap and bells. Al-
though in the course of time those symbols were discontinued,
the name sticks. ‘
§ 7. It may not seem irrelevant here to allude to the inter-
esting law-case which was decided by a water-mark on paper.
On the demise of a wealthy person, a forged will was produced
so cunningly executed, that, although by the parties concerned
it was known to be false, the fact could not be legally proven.
As the counsel of the rightful heir sat studying the case over
one night in his office, he chanced to hold the document up
before the candle, and there, to his deep satisfaction, he dis-
covered in water-marks the figures of the year in which the
paper was made. It was a period of several years after the
date in whieh the false will was said to have been executed.
INTRODUCTION. 7
§ 8. If one kind of workman might profitably employ indi-
vidual marks, so might any other. The mechanics in the
quarries, making ready, stones for the temple of Solomon,
availed themselves of this mode of proving their claims to
wages. Recent discoveries confirm the tradition. The cin-
ders of burnt Jerusalem have been cut through, and turned
up to the light. The seal of Haggai, in ancient Hebrew char-
acters, has been picked up out of the siftings of the rich
moulds deposited by the treasures of Jewish pride. The first
courses of stones, deposited by Phenician builders, have been
reached. Quarry-marks, put on in vermilion, have been
copied, — known to be quarry-marks by the trickling drops of
the paint, still visible; only they are above the letters, show-
ing that when they were affixed the stones lay with the under-
side uppermost.! The same practice continues in vogue to this
very day where many men are employed. The engineer and the
architect know each mark, and thus can instantly fix the origin
of every piece of work. The practices of antiquity are exhib.
ited and copied by our own artisans, who stop not to think
whether they are not pursuing the practices of other forerun-
ners of several thousand years ago. We see the tile-maker stamp
his products with his private mark ; and sometimes the common
building-brick is impressed with its author’s seal, rude though
it be. The most ancient bricks recovered from the ruins of the
temples of Nineveh and Egypt have many kinds of marks of
origin.
§ 9. The condition of man as an inhabitant of the earth, and
the relations and intercourse of men as members of a com-
munity, involved the necessity of a circulating medium. A
tertium quid —a third commodity of a certain value — became
necessary as a medium of exchange. At different periods the
medium of exchange has been represented by various commodi-
ties, which at this day would be the very objects of barter.
é
1 See the First Statement of the Palestine Exploration Society, 1871.
8 LAW OF TRADE-MARKS.
The ancient Greeks, with a limited commercial intercourse,
used as a currency the cattle that grazed upon their land.
These had one advantage, that of being able to transport them-
selves, under charge of drivers. Homer (in his episode of
Glaucus and Diomed, where the former is represented as hav-
ing given his golden armor, worth a hundred oxen, for the
brazen armor of the latter, worth but nine?) chronicles the use
of cattle as a medium of exchange. Yet at that time the
Greeks had talents of gold, but they were too valuable to use as
current specie. Then as the use of coin superseded the more
cumbrous living standard of value, the term “ oxen” or “ cat-
‘tle’ was transferred to the representative coin. They used
stamped bars, the rude mark serving the same end that the
image and superscription did at a later period.. That plan
again failed to receive full confidence, so it was supplanted by
actual coinage, which many authorities date from about seven
centuries before the Christian era.2, Homer, however, speaks of
brass money as being in existence nearly twelve centuries B.c.
To the Lydians is ascribed the invention of gold and silver coin.
At Rome, under Servius Tullius, money was coined about 578
B.c. Julius Cesar was the first person who obtained permis-
sion from the senate to stamp his image on the national coin;
that honor having previously been reserved for the gods or
defunct heroes. It was probably about the time that Daniel
was cast into the lions’ den that those famous pieces of gold
called Darics, from Darius the Mede, were coined; their fine-
ness and beauty causing them to be preferred to all other money
throughout the whole Kast. Spanheim informs us that upon
the coins of Tenedos and those of other cities a field-mouse is
engraven ; together with Apollo Smintheus, the driver away of
field-mice, on account of his being supposed to have freed cer-
tain tracts of ground from those animals. Shekels that have
Samaritan inscriptions were generally coined by Simon the
11Gillie’s Ancient Greece, vol. i. p. 11.
2 Snowden’s Mint Manual of All Nations.
INTRODUCTION. 9
Maccabee. The first money coined in England was under the
Romans at Colchester.
§ 10. There must have been an interval of over one thousand
years during which the precious metals were known and used
before the ingenuity of man was able to apply them to the pur-
poses of coinage. 1860 years B.c., Abraham, for a burial-
place for his wife Sarah, purchased the cave of Machpelah ;
* and,” says inspired writ, ‘‘ Abraham weighed to Ephron the
silver which he had named in the audience of the sons of Heth,
four hundred shekels of silver, current money with the mer-
chant.” 1 We must conjecture that the money alluded to was
the simple bullion, perhaps marked but not coined. A cur-
rency of authenticated coin has always been an essential ele-
ment of civilization.
§ 11. It is an indisputable fact that in all ages of the world,
and among all races of men, some form of symbolical expres-
sion has been in use and in favor. It was the badge of good
faith. Caveat emptor! Let the purchaser beware! See that
the seal is on the bale of goods, the marks on the fabrics! The
people of the ancient nations had need of symbols as well as
we. Until within the last few years the arts practised in
India were nearly as numerous as those known in Europe and
America. The Persians, Babylonians, Assyrians, and the still
more ancient Egyptians, had their multifarious products of
skilled labor. In Nineveh, the people made warlike arms, and
worked in gold. They glazed earth, made beads, and wrought
famous embroideries. The Etruscans were eminently skilled
in the arts both of use and beauty. All those nations main-
tained commerce. Much of the prosperity of the cities of
Asia Minor was due to the trade with India. We find that
the Hindoos, a manufacturing and mercantile people, 1200 or
1300 years B.c., had their emblematic marks for merchandise.
Those persons who were unable to write used the most distin-
1 Gen. xxiii, 14-16.
10 LAW OF TRADE-MARKS.
guishing symbol of their craft. Thus, the cultivator used the
plough ; the carpenter, the gimlet; the iron-smith, a pair of
pincers ; the shopkeeper, a pair of scales; the musical instru-
ment maker, a lyre, a pipe, or a trumpet. The learned used
symbols that might be intelligible to the unlearned. In short,a
monogram, a letter, some device drawn on the article made, to
denote the place of its manufacture, the artist employed, the
date, was all that was requisite to constitute a proprietary
mark.
§ 12. Fragments of pottery bearing peculiar marks of work-
men are everywhere found in the ancient cities of the East ;
“ pottery,” as Brogniart has remarked, “affording the best
records of the early ages of man, as bones do of the earth.” }
Commerce required its hieroglyphics, and commerce was uni-
versal. The situation of Babylon, at the head of the Persian
Gulf, was admirably adapted for trading purposes; hence,
from the time of its destruction, it was succeeded by other
cities until the foundation of Bagdad. Thus spices, ivory,
ebony, dyes, gums, pearls, leather, silk, and cotton-stuffs, —
every sort of serviceable commodity, were floated on the Eu-
phrates and the Tigris, or brought in caravans of camels to the
grand central mart, each species of product bearing some
unmistakable impress of the mercantile enterprise which ex-
ported it. We read of Babylonish carpets and tapestry, and
the various other tissues and cloths so famed for brilliancy and
richness of hues; and as early as the time of Joshua, mention
is made among the spoils of Jericho of “a goodly Babylonish
garment.”
§ 18. Many relics of pottery found in different parts of the
Assyrian empire exhibit upon their surfaces marks which prove
that an engraved mould had been employed in their manufac-
ture. The Chinese, the only people who profess to possess an
exact chronology from the remotest antiquity to the present
1 See Lecture by Prof. J. Forbes Boyle, F.R.S., on Arts and Manufactures
of India.
INTRODUCTION. 11
time, are our preceptors in the style and mode of affixing
marks to articles of fictile manufacture. We do as they did
long before the Christian era. Their official annals record, as
the inventor of pottery, the Emperor Hoang-ti, to whom they
assign a date of 2698 years B.c.; and they tell us that under
his reign there was a superintendent of pottery named Ning-
fong-tsee.1 The Chinese had a priority of 1600 years over the
invention of European porcelain ; yet we find proofs of their
trade-marks. These are of two sorts.2 One kind is composed
of Chinese characters, which tell under what reign the article
was made; the other by designs in color, or engraved names
of men, or of establishments, indicating the author of a vase,
the place of manufacture, or the destination of the article, as
for the use of the emperor or other dignity. On a piece of
pure white china of great antiquity there was found stamped
a factory-mark.
§ 14. When the pioneers in the art of printing were ponder-
ing their new invention, during the transition period from
block-printing with detached letters, Gutenberg, in 1436, en-
tered into an agreement with John Riffe, Anthony Heilman,
and Andrew Dreizehn, in which affair the three associates were
to furnish the necessary funds, while Gutenberg was to pay
them one-half of any profits, the other half being for himself.
After a time the association broke up, differences arose about
the liquidation, and a lawsuit was the consequence. By the
records of this suit, it appears that they kept their invention
a secret, and called themselves ‘“‘ Spiegelmachers” (makers of
looking-glasses). The speculum was their protecting symbol.
Aldus Manutius, the famous Venetian printer, adopted the
dolphin and anchor as his mark, borrowing the idea from a
silver medal of the Emperor Titus, presented to him by Car-
dinal Bembo. In 1503, the olive-tree was the sign of Henry
1 Marryat’s Pottery and Porcelain. London, 1857.
2 Histoire et Fabrication de la Porcelaine Chinoise. Translated from the
Chinese by Julien. Paris, 1856.
12 LAW OF TRADE-MARES.
Estienne, a bookseller and printer, whose firm for several gen-
erations continued to be the leading publishers and printers in
Paris. The booksellers generally had a wood-cut of their
signs for the colophon of their books, so that their shops might
become known by the inspection of the cut. For that reason,
Benedict Hector, one of the early Bolognese printers, gives
this advice to buyers, in his “ Justinus et Florus:” “ Pur-
chaser, beware, when you wish to purchase books from my
printing-office. Look at my sign, which is represented on the
title-page, and you can never mistake. For some evil-disposed
printers have affixed my name to their incorrect and faulty
works, in order to secure a better sale for them.” Jodocus
Badius, of Paris, gives a similar caution: “We beg the
reader to notice the sign, for there are men who have adopted
the same title, and the name of Badius, and so filch our
labor.” In the preface to the Livy of 1518, of Aldus, before
mentioned, a similar fraud is exposed: ‘“ Lastly, ] must draw
the attention of the student to the fact that some Florentine
printers, seeing that they could not equal our diligence in cor-
recting and printing, have resorted to their usual artifices. To
Aldus’ Institutiones Grammatice, printed in this office, they
have affixed our well-known sign of the dolphin wound round
the anchor. But they have so managed, that any person who is
in the least acquainted with the books of our production, cannot
fail to observe that this is an impudent fraud; for the head
of the dolphin is turned to the left, whereas that of ours is
well known to be turned to the right.”
§ 15. An acquaintance with booksellers’ marks or signs, as
expressed in the title-pages of their books, is of some use, be-
cause many books have no other designation of origin. We
find an anchor, the mark of Raphelengius, at Leyden; the
same, with a dolphin twisted around it, the mark of the Ma-
nutii, at Venice and Rome; the Arion, denoting a book pub-
lished by Oporinus, at Basle; the Caduceus or the Pegasus, on
the publications of the Wechelénses, at Paris and Frankfort;
INTRODUCTION. 13
the cranes of Cramoisey; the compass of Plantin'’ of Ant-
werp ; the sphere in a balance of Janson or Blaow, at Amster-
dam ; the lily of the juntas at Venice, Florence, Lyons, and
Rome.! Many publishers also made use of monograms com-
pounded of the initials or other letters of their names. These
furnish a clew to the discovery of the printer, where they
occur on books without the printers’ names. He who desires
to examine a treasure-house of lore upon this subject to as-
sure himself how general was the adoption of proprietary
marks by painters, designers, engravers, and sculptors, can con-
sult the Dictionnaire des Monogrammes, Marques figurées,
Lettres initiales, Noms abrégés,” &c., of Francois Brulliot,
published at Munich in 1832-3-4, and to be found in the
Astor Library in the city of New York, and in the Congres-
sional Library.
§ 16. We can trace proprietary marks a long way back in
the history of England. In the Archeologia for 1812, a roll
of 219 swan-marks is given, together with the ordinances re-
specting swans in the river Witham, in Lincoln, the same be-
longing to various gentlemen. This paper bears the date
of 1570. The marks consisted of nicks, the nicking being
done by swan-herds, appointed by the king’s license. A regis-
ter of all the marks was kept. None but freeholders were to
have marks, and those were to be perfectly distinct from those
used by other gentlemen. For instance, the company of the
vintners had two nicks on their bills. This mode of indicating
exclusive proprietorship is still annually illustrated by the
guilds of London, who are entitled to claim the cygnets found
with their old birds.
§ 17. The case of Southron vy. Reynolds,” in England, in 1865,
was in regard to a violation of a trade-mark used on clay pipes
made at Broseley. the right of the plaintiff was disputed because of his
recent appropriation of the symbol to stamp his liquorice, just
as a claim based upon mere prescription might be challenged.
The Lord Chancellor said that he had been much pressed by
the defendants’ counsel to declare that there was not sufficient
time between the termination of the month of July and the
13th of September following for the plaintiffs to acquire a right
of property in the particular trade-mark. The substance of
the argument of defendants is this: that, supposing the court
interfere upon the ground of property in a trade-mark, that
1 Annales de la Prop., etc., tome vi. p. 29. 2 Thid., tome i. p. 45.
310 Jur. (N.s.) 550.
WHO TAKES TITLE. 387
property must be regarded as the offspring of such an ante-
cedent user as will be sufficient to have acquired for the arti-
cle stamped general notoriety and reputation in the market,
and that the property cannot be held to exist until the fact of
the general user, that notoriety and that public reputation have
been proved to exist. The plaintiffs won.
§ 53. Who may acquire Property in a Trade-mark.— As a
general proposition, any person who, in law, is capable of ac-
quiring and holding any species of property, may hold a title
to a trade-mark.
§ 54. Yet this sweeping assertion must be subjected to some
qualification ; for unless the person be a trader, that is, unless
he or she be engaged in mercantile business of some kind,
such a title could not be acquired, as we shall hereafter more
clearly see. The reason of such a condition is this: the
object selected as a trade-mark does not become such by the
mere act of selection. Something more is requisite to perfect
an act of adoption. What is that something? It is the union
of the abstract representation of the object with a vendible
commodity. Instantly the inchoate right becomes perfect, and
title rests in the appropriator.
§ 55. But we shall see that certain persons cannot become
traders, and consequently cannot place themselves in a posi-
tion to obtain such a title. Take as an extreme hypothesis
the case of the person holding the office of Archbishop of
Canterbury. He could not become possessed of a title to a
trade-mark, for the law inhibits him from engaging in secular
pursuits of a mercantile nature. A corporation is an artificial
person, and under an act of Congress of July 8, 1870, the
right of a corporation to a trade-mark is distinctly recognized.
But, when we come to consider the provisions of that act, we
shall be easily convinced that it is not every corporation that
can avail itself of the protection promised thereby. Why?
Because the corporation may not be a trading corporation.
For instance, a rector of a parish in Massachusetts, New York,
38 LAW OF TRADE-MARKS.
Maryland, and other States where the Church of England once
held legal sway, is a corporation sole. Yet no sane person
would dream of such a corporation, or any other of a purely
ecclesiastical nature, manufacturing or selling goods.
§ 56. Nor can every natural person hold title in a trade-
mark; for some persons are under interdict, — are felons under
sentence of death, or are not of sound mind. This phase we
shall also more fully investigate hereafter.
§ 57. The conditions upon which a right can be enjoyed and
guaranteed are few and simple. Be he citizen or alien, the
owner has protection provided he is engaged in lawful busi-
ness, conducfed with sincerity.
§ 58. Who is an Infringer.— He who imitates in whole or in
part the peculiar emblem or mark to which another has the
right of exclusive use, provided he use it to indicate the same
class of goods. The imitator may be the pirate himself, or he
may be an innocent vendor of the article bearing the mark.
Both are in intendment of law infringers, although the one
may be guilty of gross roguery and the other be free from the
imputation of turpitude. The law will correct the illegal act
of either, but will deal more leniently with the unintentional
trespasser.
§ 59. So similar in external appearance are different articles
of merchandise, that, without peculiar indication of some kind,
one would be in uncertainty. Some pledge of integrity is de-
manded. We see acurious mark: it is enough—it conveys
to the mind full assurance of excellence, or what we are happy
in believing to be such. Some such guaranty is required in
these days.when traffic moves swiftly, in harmony with agen-
cies of steam and electricity. A glance! It is enough. Down
goes the cash, and the change is effected. But what if the sig-
nal with its blazon of truth be false! Confidence is outraged,
—and that is a thousand-fold worse than the immediate loss
of money, for a scar of suspicion is left. Severe measures
must be enforced to restrain the commission of crime which
WHO AN INFRINGER. 89
has no small resemblance to that of wretches who display false
signal-lights. Avarice and treachery! Piracy must be re-
strained by the iron grasp of justice, that laudable industry
may flourish, and competition, the life of trade, be stimulated
to ever-fresh efforts for excellence. An adequate security and
protection may be found in the extension of the powers of
courts of justice in the endeavor to uphold a, high mercan-
tile morality. In this there is no restraint of the freedom of
trade, no fostering of monopolies. Hach man stands upon his
own merits, just as a knight at a tourney has his own color to
identify him with valor and high emprise. Infamy would await
the base dastard who took the pennon not belonging to him.
So should it be in the mammoth contest for the well-earned
meed of honorable and laborious enterprise.
§ 60. Protection. — What avails a mere naked title to any
thing, unless the law protect it! Any man may copy an
emblem or a mere representation of an object,—no matter
whether it be of the rudest character or whether it be de-
lineated with all the grace and beauty of accomplished art, —
unless the exclusive property in it be secured by local law in
another person. We say local, for a right to exclusively make
and sell a representation of an object, or a fanciful picture, or
other mark of taste, rests upon nothing more extensive than
the laws of the country which has invested it with the egis of
defence. One nation does not respect the defensive law of
another in respect to such work of art, unless bound to do so
by a treaty or compact. The people of one country, then, may
with impunity prey upon the people of any other in respect to
works of genius, unless, upon the condition of reciprocity,
mutual forbearance shall have been stipulated. This reflec-
tion begets an idea!
§ 61. It is not the act of imitating that is unlawful in regard
to a trade-sign or mark. Then what is the wrongful act? It
is this: the placing of that mark upon vendible goods, for the
purpose of fraud. For fraud, actual or constructive. Of this
40 LAW OF TRADE-MARKS.
species of cheating, furtive and mean, the honest, the confid-
ing, are the victims. But then the law protects the innocent
against fraud? Yes! Now we perceive that fraud is the
basis of the law’s intervention: that kind of fraud which a
person practises when he writes or paints or stamps or brands
a certain sign upon articles for sale, with the design that the
public shall take them to be the manufacture of some person
else, or to have emanated from some place which is not the
true one. This is a matter of property. A trader’s business
fails because another trader has illicitly copied his mark of
honest dealing. He loses what should come to him as just
profits, and the purchaser is deceived into paying for a false
article. A double wrong is done. Unless the law intervene
to preserve the credit of the mark, all faith in its integrity
shall soon be destroyed. Commerce is wounded. Real tan-
gible rights are struck at: money is lost. That in the eye of
the law, as administered, is a greater wrong than to kidnap
and sell the children of another’s brain. Property has been
despoiled, and that by the simple act of causing a certain
symbol to utter a falsehood. Property must be protected.
§ 62. Whose Rights are protected? — Those of the manu-
facturer or merchant who has lost his just profits, or of him
who has been cajoled out of his money? or both? We must
examine into the theory of protection ; for upon a right under-
standing of it frequently depends the possibility of redress.
§ 68. When we look at the case in Cro. Jac.,! we find that,
for an imitation of a mark placed upon cloth, an action upon
the case was brought by him who bought the cloth, for deceit,
which action was adjudged to be maintainable. In Southern
v. How,? which is believed to be the same case, a different
version is given. In Comyn’s Digest, “ Action on the case for
deceit,” A. g., the case is thus cited: “So” (¢.e., an action
will lie) “if a clothier sell bad cloths upon which he put the
mark of another who made good cloths.” Comyn does not say
1 Cited by Upton, p. 10. 2 2 Popham, 144.
WHOSE RIGHTS PROTECTED. 41
by whom the action may be maintained; but as he cites Cro.
Jac. only, it may be inferred that he considered the case as
establishing the right in the purchaser, which it certainly
would, if that report is correct. In Southern v. How the case
is certainly cited as a distinct affirmance of the right of a
manufacturer to maintain an action for an unauthorized use
of his trade-mark. Lord Rolle, however, expressly states that
*Doderidge did not say whether the action was brought by
the clothier or by the vendee ;”’ but he adds, “ semble que gist
pur le vendee”’ (2 Roll. 28). Therefore, if we depend upon the
old books, we are left in doubt as to who is the protected party.
But, fortunately, the question may be said to be settled in
these days; although in the minds of some chancellors there
is a lingering doubt whether the public have any right to pro-
tection in such a case.
§ 64. We may safely assume that it is the moral, if not the
legal, duty of a court to protect the public against fraud, per-
petrated by means of false tokens. The maxim quoted by
Lord Cranworth in the case of the Leather Companies !— “Vigi-
lantibus, non dormientibus leges subveniunt’’— is not always
approved doctrine; for not only the watchful but the careless
should be guarded against wily craft and cunning. The morals
of a nation are like those of an individual: they must be
guarded by the supervising power, whatever that may be. In
this matter it is the court of justice trying the question of
infringement upon a mark of trade. The law of gravitation
seems to operate in morals as in physics; there is an in-
creased momentum at every stage of descent. Of this we have
had melancholy proof in recent developments in some portions
of our country, where corruption soiled even the ermine of
the judge. When we read of excessive stickling for legality,
we are apt to suspect that moral obligations have not due
weight. When a rogue stands convicted of his offence, why
not punish him to the extent of his merits? In trade-mark
111 Jur. (y.8.) p. 618.
42 LAW OF TRADE-MARKS.
cases there is a great laxity ; as if the community at large had
no interest in the upholding of mercantile honor. Spasmodic
pretences to severity do not help the matter. Let punishment
be sure, like the bodily pain which follows every excess as
a manifestation of Divine will, and fraud must decrease.
Whether by corporal pain or pecuniary mulct, the effect would
be beneficent. The law should protect the weak and the
simple.! Is the child or the illiterate clown to be plundered
at the will of any charlatan or knave? Is the law to lend its
aid only to the vigilant, who require it not? It must be that
the exponents of justice have sometimes, by mistaking the
intent of the law, become false oracles. If the reasoning some-
times used is good in one case, then why not in another? If
the confiding purchaser of wares may be cheated with im-
punity, why not also suffer the pickpocket to ply his craft
unmolested against the youthful, the thoughtless, the unsus-
pecting ? Would it be a good defence for a vendor of brass
watches bearing the mark of the American, the Elgin, or any
other reputable watch company, to plead that prudent exami-
nation would have detected the fraud? Verily not. Does one
prudent person in a thousand keenly scrutinize each article he
buys? What percentage of ordinarily cautious persons closely
examine the printed national currency, to see that it bears all
its legitimate marks? We come to the conclusion that the
rule of caveat emptor should be changed into caveat venditor,
demanding sincerity in the seller, rather than extreme caution
in the purchaser.
§ 65. There seems to be a contrariety of opinion among
judges, both in law and equity, as to the real principle upon
which is founded the duty of judicial intervention. Some
judges, remarkable for probity in private life, appear to permit
the ermine to stifle sentiments of the nobler morality, and to
deal with the rigid letter of the law, rather than with its
equitable spirit. They base their action entirely upon the legal
1 See opinion of Kindersley, V. C., in Glenny v. Smith, 11 Jur. (n.s.) 964.
CLASS OF GOODS. 43
right of the party complainant, and treat as a matter of little
or no consequence the fact that the public at large have some
right to protection. Conceding that a court cannot go outside
of the immediate case presented, is it not true that the rights
of the public may be guarded and vindicated by holding the
simulator of trade-marks to a rigid responsibility ? Woodbury,
J., in one case,! uttered the true doctrine: “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 vindicated on
any sound principle.” Robertson, J., in the case of Corwin v.
Daly? said that “the origin of the favor shown to trade-marks
was the protection of the public, and not merely of the ‘indi-
vidual dealer ;”” and in speaking of the scope or design of a
bill in chancery, invoking protection for honest trade, Lott,
Senator, said: “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 merit of the
article brought into the market, and does not require a resort
to a false or fraudulent device or token.” 3 “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 attachments
and domestic society,’”’ said another judge.*
§ 66. Class of Goods. — Protection will not be given unless
in connection with the class ef goods to which the mark has
been applied. Vice-Chancellor Wood,’ in 1865, remarked that
1 Taylor v. Carpenter, 2 Wood. & M. 1. 2 7 Bos. 222.
3 Taylor v. Carpenter, N. Y. Ct. of Errors, 11 Paige, 292.
4 Christy v. Murphy, 12 How. Pr. R. 77.
5 Ainsworth v. Walmesley, 44 L. J. R. 252.
44 LAW OF TRADE-MARKS.
the court had 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 particular 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 stamp
a lion on iron; but when he has appropriated a mark toa
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 being the goods of the
owner of the mark.”
§ 67. As the first adopter of a mark does not acquire any
exclusive right to its use, except in connection with the specific
class to which he has applied it, it is not uncommon for the
same mark to be placed upon different classes by different
owners. The word “MaGnoLia” may properly serve to indi-
cate a certain manufacture of gin for one proprietor,t and a
certain brand of whiskey for another ;? for although both con-
tain a large proportion of alcohol, the fluids cannot be said to
belong to the same class; and the fanciful appellation of
‘«« BismaRcK’? may in compliment to the statesman be used
for cement,? notwithstanding the fact that. another had pre-
viously appropriated it for paper collars.*
§ 68. The importance of a specific mention of the class of
merchandise to which a certain emblem is to be attached as
a trade-mark, may be. illustrated by the letters “I XL” (I
excel). To guard against looseness in practice, the statute
requires that the class, ‘“‘ and the particular description of goods
comprised in such class,” shall be set forth in the application.
10. & W. A. Waters, No. 544. 2 Mills, Johnson, & Co., No. 241.
3 Wendt & Rammelsberg, No. 585.
* Messerole v. Tynberg, 4 Abb. Pr, R. (n.s.) 410, and 86 How. Pr. R. 14.
CLASS OF GOODS. 45
Time out of mind, the manufacturing establishment of Wosten-
holm, in England, has used the letters IX L upon cutlery.
The exclusive right to the use of that symbol had at common
law become vested in that firm,—so far as it was actually
stamped upon certain articles. It could properly have been
appropriated for marking all kinds of cutlery, fine and common,
large and small. The mark was known all over the world,
and by it was understood that the house of Wostenholm had
manufactured the steel fabrics thus stamped. The Examiner
was well aware of the existence of that mark, and recognized
its import. It was his duty to refuse registration to any one
else who claimed property in that mark, as applied to the
particular class of goods made and so marked by the English
house. It did not matter that no official notice of the use of
the mark in a foreign country had been filed. It was enough
that a claimant must have been the prior adopter of it.
§ 69. An American firm, doing business at Evansville, Ind.,
applied for registration of that mark for a chopping-aze. They
did not pretend to have adopted the symbol before the year
1870, many years after it had acquired a universal reputation
through the English firm of Wostenholm. Held, chopping-
axes are not included in the particular class of goods in which
the Wostenholms used the mark. Registration allowed.t
§ 70. In January, 1872, Wostenholm & Son, of England,
filed an application for the registration of the said symbol,
“TX L,” as a trade-mark for cutlery. They set forth the long
term of years during which their firm had used it for the same
purpose. The certificate of registry was duly issued? In
March, 1872, a manufacturing company in Hartford, Conn.,
filed an application for a mark, newly adopted, of which
the said symbol is the essential part. It was to be applied
to scythes. The case was suspended until evidence was
furnished that the English firm of Wostenholm did not
make scythes. The adoption by the Hartford company was
1 Boetticher, Kellogg, & Co., No. 83. 2 Wostenholm & Son, No. 666.
46 LAW OF TRADE-MARES.
therefore lawful, and the mark was registered for the third
time.!
§ 71. A Lack of Truth debars a trade-mark from protection.
The tale told by the symbol must be sincere. The instant it
ceases to be truthful, in spirit as well as in letter, it becomes
an instrument of fraud, and is not lawful. A qualification,
true in itself, may become fraudulent by the manner in which
it is used. In a case before the Tribunal of Correction of
Thionville? in 1865, it was held, where a French gunmaker
establishes himself and his manufactory in a foreign country,
and places his name on his products as “ of Paris,” although
really a Parisian, it is bad faith in him. His intention was
evidently to cause purchasers to believe that he was the person
of that name, who carried on business in that city. When
his .merchandise was brought into France to compete with
honest goods, his deception was sufficient authority for con-
fiscating it.
§ 72. An Untrue Use of the word “ Patented,” or its equivalent.
If a trade-mark represents an article as protected by a patent,
when in fact it is not patented, such a statement primd facie
amounts to a misrepresentation of an important fact, which
would disentitle the owner of the mark to relief in a court of
equity against a pirate. That is clearly so when the pre-
tended patent had never existed. In the case of Edelston v.
Vick,5 Vice-Chancellor Wood intimated a 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 in-
troduced, had been continued after it had ceased to be true.
Lord Kingsdown, in the Leather Cloth case, declined to assent
to that distinction. He thought that if the word “ patent”
be not so used as to indicate the existing protection of a
1 Greenwoods Scythe Co., No. 788.
2 Ministére Public et Bernard v, Compagnie de Est, Ann. de la Prop.
tome xi. p. 202.
3 Leather Cloth Co. v. Am. Leather Cloth Co., 11 Jur. (n.s.) 518.
4 Flavel v. Harrison, 19 Eng. L. & Eq. 16. 518 Jur. 7.
UNTRUTH IN MARK. AT
patent, but merely as part of the designation of an article
known in the market by that term, then he quite agreed in
that view. He said that 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 protected, it can make no difference
whether the protection never existed or has ceased to exist.
In the more recent case of Marshall v. Ross, in 1869, it was
held that the use of the word “ patent” as part of the descrip-
tion in a label or trade-mark of goods not protected by a
patent, is not such a misrepresentation as to deprive the owner
of his right to be protected against an infringement of his
label, where the goods have from the usage of many years
acquired the designation in the trade generally of patent. Sir
W. M. James, V. C., said that he could grant the plaintiff
the relief which justice requires without interfering with the
decision of the House of Lords in the Leather Cloth Com-
pany’s case above cited; for the word “ patent”? may be used
in such a way as not to deceive the public. For instance, he
said, the term “ patent-leather boots” is in constant use; but
no one supposes that it is thereby intended to convey the im-
pression that the leather is protected by any patent. In this
case, it was shown that the term “ patent thread” had been
used in the trade for many years past, and was the name by
which thread of a certain class is known by manufacturers,
and in the trade. It had in fact, he said, become a word
of art.
§ 78. The case of Hdelston v. Vick, in the High Court of
Chancery, in 1853, is as follows: T. took out letters-patent,
which expired in 1844, for the manufacture of solid-headed
pins, and carried on the business under the firm of T. &
Co., till 1838. In such business T. used parti-colored labels,
in pink and green, in which the pins were described as
1 L, T. Rep. 21 (x.s.) 260; Law Rep. (Eq,) 8, 651.
48 LAW OF TRADE-MARKS.
“Patent Pins, exclusively manufactured by T. & Co.,” and
had engraved plates and blocks for striking off said labels.
In 1838, T. assigned to S. the letters-patent, together with
his business and good-will, and the right to use the plates,
labels, &c., and the name of “T. & Co.” In 1839, 8. became
bankrupt. His assignees carried on the trade till 1841,
when they assigned the business, patent, plates, labels, &c.,
with the right to use the name of “T. & Oo.,” to Hdel-
ston, the plaintiff, who continued the business and the use of
the labels. In 1858, Edelston discovered that Vick, the de-
fendant, was using labels like those of the plaintiff. Held,
first, That Edelston was entitled to restrain such palpable
imitation. Secondly, That Edelston was not disentitled to sue
by reason of the representation on his label being no longer
accurate, although the pins were not still protected by patent,
nor manufactured strictly according to the patent, nor exclu-
sively or at all by T., who had long since retired. Thirdly,
That Vick was not to be precluded altogether from represent-
ing that his pins were manufactured according to T.’s (ex-
pired) patent, but he was not to do so in a manner liable to
mislead.
§ 74. Argument is not necessary to persuade any thinking
person of the necessity that exists for the protecting in-
strumentalities of the law. In olden times in England, the
trade-guilds and corporate bodies looked especially to the
maintenance of a high character of workmanship on broad-
cloths, cutlery, hardwares, and other principal manufactures.
The penal law of that country is severe upon the reprobates
who turn the lawful weapon of defence into the weapon of the
robber, by simulating the marks that commerce uses as a
safeguard. The crown has its distinguishing broad-arrow for
some kinds of property, and its yellow thread in cordage ; and
the possession of either kind by a private individual is pre-
sumptive evidence of felony, as much as the possession of false
118 Jur. 7.
NECESSITY FOR PROTECTION. 49
dies or tools for counterfeiting the currency. Our own gov-
ernment finds it necessary by similar stringent measures to
protect its own peculiar marks, as, for example, in the matter
of the various-colored threads scattered through the fibre of
the paper on which the national securities are printed. Nearly
all nations have observed the absolute necessity of severe
penal laws to the same end; while not a few have adopted the
same rules as ours in regard to the fraudulent invasion of
private rights. The more flourishing becomes commerce, the
more general are piracies of this kind. While we may reason-
ably infer from circumstances that no ancient nation was ex-
empt from such roguery, we have indubitable evidence that
all nations of our own times are wonderfully enterprising in
this respect. Almost all articles of merchandise possessing
a high reputation in Europe are extensively imported into the
United States. Their excellences and ready sale excites the
cupidity of the fraudulent dealer; and therefore Heidseick
champagne, other wines and brandies, Piesse and Lubin’s
extracts, and all the various descriptions of toilet articles,
Rodgers’s cutlery, Worcestershire sauce, Burton ales, Irish
linen, French silks, Scotch shawls, in short the innumerable
other articles of luxury or of necessity, are imitated, falsely
marked, and sold. These frauds are committed under the
very eyes of the honest manufacturer, and carried out with so
much satanic skill as to elude any but the most vigilant search.
Our country has probably been the greatest victim. Even
fabrics in which our workshops excel have been brought from
Belgium, France, Switzerland, and put into competition with
the genuine goods. The reputation of American watches has
brought an avalanche of miserable imitations from Geneva, till
Congress has been compelled to pass a statute expressly for
the purpose of interposing a barrier against them.! The Ger-
mans imitate the Irish marks on linen ; the French, the English
marks on ales, cutlery, &c.; the English, the French marks on
1 Act of March 8, 1871.
4
50 LAW OF TRADE-MARKS.
wines. No nation can claim precedence of any other in such
illicit competition, so far as means allow. In the Supreme
Court of Calcutta, in 1854,! the native defendant was shown
to have pirated the English trade-marks on gray shirtings of
an inferior quality. That case developed the fact that such
imitations had been carried to a considerable extent. We
are told that it was the custom at Worcester, England, to copy
a great variety of Chinese and Japanese patterns on porcelain,
and with such good effect that the copies were frequently mis-
taken for originals. The marks were simulated exactly.?
§ 75. M. Jobard, more than a score of years since, expressed
his sorrow that the revolution in France in 1793 had broken
down the law of obligatory marks, that honorable source of
confidence and of commercial prosperity, which lost to France
all the openings of the Orient. The Levantines, habituated
for centuries to the sincerity of the marks guaranteed by the
arms of the city of Nimes, Avignon, Lyons, &c., with horror
observed the inroads of counterfeiters. The Turkish mer-
chants, no longer confiding in the honor of the French, them-
selves repaired to Marseilles, Beaucaire, Lyons. But they were
cheated as easily near by as afar off; several of the principal
ones having paid at Lyons for golden fabrics (by order of the
Grand Seigneur) unwittingly delivered brass to him. He be-
headed them. Thus much for implicit faith in trade-marks.®
§ 76. We may instance the injury done to national confi-
dence by false coinage, the simulation of the mark of the
sovereign. Private coinage is not allowed. Coin is intrin--
sically worth nothing, or next to nothing, beyond its weight
of gold or silver, in mass. The public faith is a sufficient
guaranty of the genuineness of a coin. Counterfeit coins are
almost always of inferior composition and value, and are fabri-
cated for the purpose of imposing them upon the public as
« 1 Leech v. Doorgachurn Seal et al., Journal So. Arts, vol. vii. p. 271.
2 Binn’s Century of Potting in Worcester (London, 1865), p. 93.
3 Organon, etc.
NECESSITY FOR PROTECTION. 51
genuine, and gaining the difference. And yet it is possible
that the public may be deceived and at the same time not
injured. This may be illustrated by a case which occurred in
Tunis in 1828. A coinage of new piastres was effected under
the direction of the Bey, and on account of his government, the
sovereign reaping the enormous profit of more than forty per
cent. Piastres of a similar impression, weight, and value, were
fabricated in Europe, and found their way to Tunis, where
they entered into the circulation, and procured for their makers
a division of the spoils. Still the piracy was no less in law,
even had the counterfeiters furnished a superior:coin; the rule
being that the public may not be deceived, even for its own
benefit. Not many years ago, the base silver money of Hayti
was imitated by artisans in this country, upon similar specu-
lative ideas. It may also be remembered that, during our late
civil war of the rebellion, the worthless notes of the Confederate
States were imitated by lithographers and printers in the
North, and, being more artistically executed than were the
genuine, were all the more greedily sought for. Yet the man
who sold a cow for a pretty-looking counterfeit note, was
declared in law to be cheated, even although the genuine note
was doomed never to be redeemed; for his contract was for a
genuine promise to pay. The cases fairly illustrate the prin-
ciple of trade-marks, so far as the obligation to deliver to the
purchaser the thing bargained for, whatever its intrinsic value.
§ 77. None of the actors in the following case would have
had any standing in court, as applicants for protection. Years
ago, the wine-growers of Mont Rachet and of Chablis heard that
monks in Bourdeaux were exporting white wine to Turkey,
under the name of mineral water. So thrifty an example was
not to be despised; so white wine from Burgundy was sent to
the Turks under the same disguise, and was declared by the
consignees as well as by the exporters to be as good mineral
water as that of Bourdeaux. Here was a case of competition
1 Eckfeldt and Du Bois, Manual of Coins and Bullion.
52 LAW OF TRADE-MARKS.
in business by unfair means. Suppose that the pious fathers
of Bourdeaux had prosecuted their rivals in trade for the
imitation of their mark, to wit, the meaningless, arbitrary
symbol, “Mineral Water,” could a ‘suit have been main-
tained? No! But nobody was deceived? True; but the
business was immoral. Immoral to sell wine? No! but
immoral to sell to Turks, because their religion forbids them
to drink it.
§ 78. Manufactures and commerce are, it is plain to per-
ceive, twin sisters. As they began life together, so in the race
do they keep side by side. The plastic hand of the cunning
workman moulds and fashions and shapes; while the merchant,
scattering his products afar in all directions, by barter receives
from afar the products of other countries. All the world should
be enabled to test the genuineness of goods by the mark placed
upon them. When the distinguishing symbol is once published,
it should be susceptible of being read as easily as the child or
the dog, by intuition or by instinct, reads the marks that
nature has legibly written on the countenance of man. The
first glance of the eye decides. This is a rule in connection
with trade-marks.
§ 79. How shall we judge a Mark ?— We must learn some-
thing of its peculiar nature; for it is not every heterogeneous
assemblage of objects that comes within the category of trade-
marks; nor every Protean representation, that may be one
thing to-day, another thing to-morrow. We must apply a
touchstone to any thing claiming to be the symbol of trade.
We must learn to discern the true from the false, —7.e., the
one having the true essence from that which has but a faint
semblance of reality. We need not err. There are certain
tests. But this leads us to another chapter, which treats of
the nature of the thing.
DEFINITION AND NATURE OF A TRADE-MARK. 53
CHAPTER III.
DEFINITION AND NATURE OF A TRADE-MARK.
\
Necessity for Definition.— Difficulty of Defining.— All Nations use substan-
tially the same Definition. — The Technical Mark not to be confounded with
its Analogues. — Statutory Definitions. — Trade-marks as applied to News-
papers, Books, &c.— Mere Names of Hotels, Shops, &c., not Trade-marks. —
So, also, of mere Labels, Advertisements, Notices. —No Abstract Right to
Symbol of Manufactures or Commerce. — Merchandise: what ? — Resumé—
Essential Characteristics of a Trade-mark.
§ 80. A DEFINITION of the term trade-mark is requisite, in
order that we may know exactly what we are discussing. This.
definition is not without difficulty. To arrive at certainty
therein, we must examine the laws and the judicial decisions
of various countries, whose jurisprudence on this subject is
harmonious with that of our own tribunals. Indeed, this
species of property cannot advantageously be considered simply
in its relationship to a locality; but it must be viewed in con-
nection with affinitive subjects embraced by the all-pervading
spirit of commerce. Names sometimes deceive. The difficulty
of defining this thing called a trade-mark has been recognized
by the ablest minds.
§ 81. We must seek the differential quality by which a
trade-mark is discriminated from its analogues, or we shall
find our ‘ideas tripped up by the improper use of names.
Nomenclature does not consist in the mere naming of tools,
but is the expression of distinctions which convey in a single
word the nature of the thing meant. When we use the terms
trade-mark, label, sign, envelope, design, etc., we mention
54 LAW OF TRADE-MARKS.
things which are analogues of each other, and are not similar
in their natures.
§ 82. The exposition of the comprehension of a notion is
called its definition, says Sir William Hamilton.1 For example,
the concepts man, horse, dog, &c., are contained under the
general concept animal; and the concepts triangle, square,
cirele, rhombus, rhomboid, &c., are contained under the general
concept figure (concept and notion being convertible terms).
The same clear thinker says that conception, the act of which
concept is the result, expresses the act of comprehending or
grasping up into unity the various qualities by which an object
is characterized. It has been for lack of a clear conception of
the natures of the things which they had occasion to discuss
or comment upon, that at times judges, essayists, and reporters
have misused terms, and named one thing when they meant
another. The uninitiated are misled by the wrongful use of
terms; and find to their sorrow, in court, that what they
supposed were veritable trade-marks, are mere labels or adver-
tisements, not within the pale of the law’s protection. The
opinions abounding with fallacious odzter dicta remind one of
the illustration used by Sir William Hamilton :? “ In countries
where bank-notes have not superseded the use of the precious
metals, large payments are made in bags of money, purporting
to contain a certain number of a certain denomination of coin,
or at least a certain amount in value. Now these bags are
often sealed up, and passed from one person to another, with-
out the tedious process, at each transference, of counting out
their contents, and this upon the faith that, if examined, they
will be found actually to contain the number of pieces for
which they are marked, and for which they pass current.”
Still the door is open to error and fraud. In the same way,
we too frequently accept the loose sayings of a judge for law,
because they bear the judicial impress; but when, from abun-
dant caution, we open and examine the bag purporting to
1 Logic, lect. viii. 2 Logic, lect. x.
DEFINITION AND NATURE OF A TRADE-MARK. 55
contain pure gold, we find but withered leaves. In no unkind
spirit, we scan the words that should be the fortresses of
thought, and find a heap of chaff. No one has the right to
complain of our attempt to separate the chaff from the wheat.
Locke tells us, in speaking “Of the Abuse of Words,” that
some take so little care to lay by words which in their primary
notation have scarce any clear and distinct ideas which they
are annexed to, that by an unpardonable negligence they
familiarly use words which the propriety of language has fixed
to very important ideas, without any distinct meaning atall....
Men having been accustomed from their cradles to learn words
which are easily got and retained, before they knew or had
framed the complex ideas to which they were annexed, or
which were to be found in the things they were thought to
stand for, they usually continue to do so all their lives; and,
without taking the pains necessary to settle in their minds
determined ideas, they use their words for such unsteady and
confused notions as they have, contenting themselves with the
same words other people use, as if their very sound necessarily
carried with it constantly the same meaning.
§ 83.. Thus, a careless speaker applies the term trade-
mark to a mere label, although such mere label is not pro-
tected by law, unless by some local statute ;1 or to a mere
advertisement ;? or to the good-will of a shop ;® or to the sign
of an inn or hotel.4 It is true that we may read and analyze
for ourselves ; and it is quite as true that we accept the phrase-
ology of a judge on trust. The universality of a term, says
Watt, in his book on logic, is many times restrained by the
particular time, place, circumstance, &c., or the design of the
speaker; as when it is said in the Gospel that “all men did
marvel,” it reaches to only those men who heard of the mira-
cles of our Saviour. By a careful perusal of a case, we may
1 Falkinburg v. Lucy, 85 Cal. 52.
2 Leather Co. case, 11 Jur. (w.s.) 518.
3 Howe »v. Searing, 10 Abb. Pr. R. 264; 6 Bos. 354; and 19 How. Pr. R. 19.
Howard v. Henriques, 3 Sand. S. C. 725.
56 LAW OF TRADE-MARES.
generally ascertain the import of the language of a judge while
he is attempting to expound the law; but, unfortunately, we
find that he is sometimes completely in the mist. “The one
exclusive sign,” says Aristotle, “that a man is thoroughly
cognizant of any thing, is that he is able to teach it.” We
may, therefore, conclude that if a judge cannot convey to the
mind of another person an intelligent idea of his meaning, he
must himself be deficient in the understanding of his subject.
We require a definition, and that definition the analysis of a
complex concept into its component parts or attributes.
§ 84. A definition is a brief enunciation of the law govern-
ing a particular subject, or branch of a subject, known by a
particular name. Thus, the law of contracts is, in outline,
stated in the definition of the word contract. Out of an accu-
rate definition can be drawn a vast amount of law. But, in the
nature of legal things, a definition can never be established by
adjudication. The absolute truth of this proposition appears
when we consider that the object of every law-suit is, so far as
the law of the case is concerned, to determine the rights of
the parties as growing out of certain facts admitted or proved.
But facts, as shown in courts of justice, are just as variant in
nature from a definition as is a triangle from an emanation of
the mind. There is no concord or harmony between the one
and the other. Yet, although a court cannot adjudge a defini-
tion to be so and so, it may, in assigning reasons for its judg-
ment, take into the account the idea of the true principle of a
definition. In other words, the judge, in giving the opinion of
himself and his associates upon the law as applied to the facts,
may state what he and they deem the true definition to be.
But this statement is a mere dictum: it creates no law; it is
of no higher authority than are similar statements made by
text-writers ; and indeed it is not so likely to be found correct
as is theirs.1’ In his treatise on trade-marks, Lloyd? states his
opinion that there would be much convenience in having a
1 Bishop’s First Book of the Law, §§ 261, 262, 2 Second ed., p. 88.
DEFINITION AND NATURE OF A TRADE-MARK. 57
statutory definition of a trade-mark, which should distinguish,
as was done by the old French law, between the marques de
fabriques, or trade-marks properly so called, consisting of a
stamp affixed to or incorporated with a manufactured article,
and the use of a name, or label, or a sign-board, or placard,
and all those less permanent marks of distinction which are
used in trade ; and again separating from them all cases which
involve literary or industrial property.
§ 85. The French have probably given this subject as keen
and thoughtful a scrutiny as any jurists in the world; and yet,
in the report of the commission to examine the project which
crystallized into their legislative act of the 23d of June, 1857,
it is said: ‘‘ In what do marks consist? The plan of the law,
avoiding the peril of a definition, and leaving to doctrine and
to jurisprudence the task of defining, has remained mute in
this respect.”? The Council of State concurred in this idea of
the impolicy of attempting an exact enunciation of the ele-
ments which constitute this thing, and said: “The mark is
any sign serving to distinguish the products of a manufacturer,
or the objects of commerce, and the law cannot enumerate the
signs.” The Court of Paris, in 1859, calls it the character-
istic sign by means of which commerce distinguishes the
products of one’s manufacture, or the objects of.his commerce.!
By resorting to what was until lately the universal language
of diplomacy, — the French, — and which is a safe guide to the
meaning of all leading nations when speaking upon this sub-
ject, we find that the trade-mark of English-speaking countries
is the same thing as the marque de fabrique et de commerce of
continental Europe. This is placed beyond all question by
the “ Code International de la Propriété Industrielle,” &c., by
MM. Pataille and Huguet (Paris, 1855), and the Appendix
thereto (1865), by the former eminent jurist. Our term is so
translated, and so its synonym in the English ‘“ Merchandise
Marks Act,” of 1862. All treaties and conventions of com-
1 Lalande et Liot v. Appel et als., Ann. de la Prop., etc., tome v. p. 248.
58 LAW OF TRADE-MARKS.
merce agree in this respect. The uniformity of expression
proves that the same thing is understood by all alike ; and that
in the minds of statesmen and jurists there is no doubt as to
what is meant by the general comprehensive term trade-mark.
As corroborating instances of this prevalent understanding, see
our treaty with Russia,! where the phrase “ trade-marks affixed
to merchandise” is rendered in the counterpart des marques de
Sabriques apposées dans Vautre sur certaines marchandises ; and
see, also, our conventions with Belgium? and France.2 The
German term Fabrikzeichen is translated into the same words
in French. We find a more comprehensive definition of the
term mark of trade, in German.®
§ 86. This perfect agreement leads to the inevitable conclu-
sion that a trade-mark is not a new kind of creature ; and that
its meaning, purpose, and value are well known to all manu-
facturing and commercial peoples, and requires no definition
in a treaty, every word of which is subjected before ratification
to the most rigid scrutiny. The manifest object of the many
national compacts was reciprocity of protection, and not to give
vitality to the thing. When we come to fully consider the
subject, it will be amply demonstrated that, as much as any
other species of property, a right to a distinctive mark of au-
thenticity has its foundation in immutable law; and we will
perceive that any arbitrary law —as a treaty, a convention, or
a statute— cannot be the parent of this ideographic sign.
The right pre-existed: a compact only recognizes that right,
and opens the door to a remedy for encroachment thereon.
§ 87. The mark may consist in the name of the manufac-
turer or the merchant (provided it be written, printed, branded,
or stamped in a mode peculiar to itself) ; in a seal, a letter, a -
1 Jan. 27, 1868. 2 Dec. 20, 1868. 3 April 16, 1869.
4 Technologisches Worterbuch, in three languages. Paris, 1855.
5 “ Unter den Waarenbezeichnungen (Fabrikzeichen, Marken) werden die-
jenigen Zeichen verstanden, welche dazu bestimmt sind, die in den Handel
gebrachten Erzeugnisse als von einem bestimmten Urheber oder Zwischenhin-
dler herriihrend zu bezeichnen.” Klostermann on Trade-marks, &c. Berlin, 1869.
DEFINITION AND NATURE OF A TRADE-MARK. 59
cipher, a monogram, or any other sign or symbol that can
serve to distinguish the products of one man from those of
another. It may be any symbol or emblem, however unmean-
ing in itself, as a cross, a bird, a quadruped, a castle, a star, a
comet, a sun; or it may, and frequently does, consist of a com-
bination of various objects, copied from nature, art, or fancy ;
and if such symbol or emblem comes by use to be recognized
in trade as the mark of the goods of a particular person, no
other trader has a right to affix it to goods of a similar de-
scription! It may be adhesive or non-adhesive. It may be
put inside of the article, or on the outside. It may be written,
printed, stamped, painted, stencilled, branded, or otherwise,
and either on the article itself, or on its case, covering, en-
velope, or wrapper?
§ 88. We must not be misled by a sweeping definition. We
must judiciously compare, reason, generalize. Mere words
may deceive. The physiology of the thing called a trade-mark
must be examined and carefully analyzed. It has an indi-
viduality of nature. Meaningless in itself, when placed in a
certain juxtaposition, it involves an idea, as the digit 9 does
not represent the word nine, but the idea itself of the number.
It is the legitimate hieroglyph. It is the emblem of a man;
and it virtually says that the vendible object to which it is
attached is the workmanship, or the selected article, of the
owner of the mark. It is intended to strike the eye by its
clearly defined character, and sometimes the ear by its sound
when spoken of, and thus excite inquiry; and for this reason
it must be peculiar in form, although possibly not susceptible
of utterance in sound.
§ 89. We may readily understand why a nondescript vignette,
1 Leather Cloth Co. v. Am. Leather Cloth Co., 11 Jur. (w.s.) 513.
2 The French law of June 28, 1857, says: “ Sont considérés commes marques
de fabrique et de commerce les noms sous une forme distinctive, les dénomina-
tions, emblémes, empreintes, timbres, cachets, vignettes, reliefs, lettres, chiffres,
enveloppes, et tous autres signes servant 2 distinguer les produits d’une fabrique
ou les objets d’un commerce.”
60 LAW OF TRADE-MARKS.
a grouping of flowers and fruits, an elaborate landscape having
no striking features, or a mere advertisement, or common print
of a man’s name, should not be regarded as the distinctive
mark that the law of commerce requires. It should possess
such salient features as might at once arrest attention and put
the intended purchaser on the alert. If such an undefined
object could possibly be regarded asa valid trade-mark, what
would be the consequences? There would be neither protec-
tion for the owner nor guaranty for the buyer; for any other
combination of flowers and fruits, of houses and trees, having
the same pictorial effect, might be mistaken for it.
§ 90. It is not very remarkable that casual readers should
fall into the error of confounding the technical trade-mark of
commerce with rights protected upon principles analogous to
those upon which trade-mark decisions rest,—such as the
good-will of an establishment of trade and literary rights, —
especially when we find at times a judge, a commentator, or
a reporter, falling into the same error. The importance of
observing the distinction will be more manifest as we proceed
in this investigation. It should be borne in mind that a trade-
mark carries the idea of a man’s personality, like his ordinary
autograph, and therefore preserves its essential characteristics
wherever it may go. This is not so with a quasi trade-mark,
as the name of a hotel or shop of trade, or the title of a stage-
coach, or mere literary property, or a patent for an invention
or a discovery; for such things have no inherent extra-terri-
torial force, and for recognition depend upon compact, or the
tacit acknowledgment of nations other than those where such
rights originated.
§ 91. With rare exceptions, this important distinction is
observed. Mr. Lloyd, in his treatise on trade-marks,) pre-
serves the line between the good-will of a trade so far as it
is contained in the title and style of a partnership, or the
name of a trader, or the description of his place of business,
1 London, 1865,
DEFINITION AND NATURE OF A TRADE-MARK. 61
and property in a name or distinguishing style, as connected
with a literary publication or a work of art. So do also the
continental writers and jurists; for although in their tribunals
a single action may, it seems, embrace a claim for damages for
infringement of a patent, a demand based on a trespass on the
good-will property by false representations, the piracy of a
label and violation of a mark, and may unite a demand for
both civil and criminal penalties, —7e., when all the alleged
wrongs shall have arisen from one transaction, — yet we find
that the different classes of injuries are separately considered
in arriving at a conclusion, although constituting the warp and
woof of the same web ; and in adjusting remedies each species
has its own peculiar redress. This mode of procedure, so
different from that of countries under the domination of the
common law of England, springs from the flexibility of the
Code Napoléon. Yet this complexity need cause no confusion
of ideas, except in the minds of superficial readers and unre-
flecting dabblers in law.
§ 92. In the case of Woodward v. Lazar} in the Supreme
Court of California, in 1868, before all the justices, the name
of a hotel was treated as a trade-mark. It was an appeal from
an order refusing to dissolve an injunction by which the
defendants were restrained from using the name of “ What-
Cheer House,” as the title or name of a hotel in the city of
San Francisco. Norton, J., in delivering the opinion of the
court, said: “It has been decided, and with good reason, that
the name established for a hotel is a trade-mark, in which the
proprietor has a valuable interest, which a court of chancery
will protect against infringement. Howard v. Henriques, 3
Sand. S. C. 725. The point of dispute in the case is as to
whom the name ‘What-Cheer House,’ as a business-sign,
belongs. The plaintiff claims that it belongs to him, as the
keeper of the hotel, which he continued to conduct under that
name after he surrendered the leased premises; while the
1 21 Cal. 448.
62 LAW OF TRADE-MARKS.
defendants claim that it is the designation of the building in
which the business under that name was first conducted, and
became theirs when they became owners of the building.”
Now let us examine the case cited by the judge, and decide for
ourselves whether or not there was not a mistake made in the
name of the thing, —a mistake quite as wide of the truth as
would be the confusion of the terms freehold, mortgage, lease,
all relating to landed property, yet distinct in their natures.
Names are sometimes things.
§ 93. In Amoskeag Manufacturing Co. v. Spear, in 1849, a
distinguished jurist, Mr. Justice Duer, inadvertently misused
terms. The defendant had pirated plaintiffs’ label, making
it correspond in size, color, fancy border, position, general
arrangement and size of the letters, including the alleged trade-
mark, the capital letters “AC A.” These letters were decided
not to be a trade-mark, being merely indicative of quality.
What, then, was the trademark? Nothing. Compare the
language of the two labels. That of the plaintiffs read thus:
“ AMOSKEAG Manuracturinc Company. Power Loom. Yds.
ACA. AmoskEaG Fauis, N. H.” That of the defend-
ant read thus: “ LoweLL Premium Tickine. Power Loom.
Yds. ACA. Warranted Inpico Buus.” The judge
had a clear conception of all the principles involved, and his
decision was unquestionably correct. The extraordinary powers
of a court of equity had been invoked to prevent the continu-
ance of fraud. In what did that fraud consist? In a“ designed,
studied, elaborate imitation ”’ of the label of the plaintiffs, said
his Honor. The defendant endeavored by a false representa-
tion to effect an unlawful purpose. To quote the judge’s own
words: “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 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
‘1 2 Sand. S. ©. 599.
DEFINITION AND NATURE OF A TRADE-MARK, 63
fraud, and the prevention of a mischief that otherwise may
prove to be unbearable.” The remedy. could not be denied.
The error of the judge manifestly consisted but in the loose
use of one word for another, those words being in no sense
convertible terms. The words were uttered more than twenty
years before the first case of the kind had been reached in the
highest court in the land, and were uttered in a case which
required no definition of species. If there had been any need
of a nice discrimination of technical terms, the acute mind of
the judge would have seized upon it, and, by using the exact
word, would have prevented the possibility of misunderstanding.
The objectionable phraseology was this: ‘“ When I compare the
original trade-mark of the plaintiffs,’ &c. The correct word
was label, not trade-mark. It must be obvious at a glance to
any one, who has acquainted himself with the law and prin-
ciples of trade-marks, that the single element that could possibly
be a trade-mark was the “ACA” symbol. The three letters
were found not to constitute a lawful trade-mark, and were
stricken from the injunction. Nothing, thereafter, remained but
words in ordinary use, common to all the manufacturing world.
But, if this was not a trade-mark case, what was it? Answer:
it was a case of unlawful competition in trade, by means of a
simulated label.
§ 94. In another place it will be seen that the Patent Office
took action upon this question, and decided the three letters
“ACA” to be at least a primd facie trade-mark, from its
long user and universal recognition.
§ 95. The case of Howard v. Henriques, in 1851, was de-
cided by five out of six judges of the Superior Court of the city
of New York, when that court was composed of as able minds ©
as any in the land. The plaintiff was proprietor of a hotel
known as the “ Irvine Hous,” or “ Invinc Hore,” and which
was opened and named by him “Irvine House,” in 1848.
The defendants opened another hotel in the same city, which
1 3 Sand. S. C. 725.
64 LAW OF TRADE-MARES.
they named the “Irvine Horex.”’ An injunction was granted,
by one of the justices of the court, restraining the defendants
from using the name thus taken by them. A motion was made
to dissolve this injunction. Observe, the plaintiff’s house,
although originally designated by him as the Irving House,
very soon became generally known also as the Irving Hotel,
and was designated by both names indiscriminately for more
than a year before the defendants opened their hotel. All
these facts appear in the opinion of the court, delivered by Mr.
Justice Campbell. 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 applied to a hotel; that the prin-
ciple 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 practised
without being easily detected, or, at all events, frauds could be
practised operating injuriously upon the party claiming the
trade-mark, and also upon the public. The answer of the
court was that there would be no more necessity for the plain-
tiff to place in large letters upon the front of his building,
‘“‘ This is the Irving House,” in order to designate it and secure
an appropriation of the name, than there would be to write on
the public edifices of the city, “This is the City Hall,” and
“This is Trinity Church.” As to the second objection of the
defendants the court spoke thus: “ We think that the princi-
ple of the rule is the same, to whatever subject it may be ap-
plied, and that a party will be protected 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 4 prosperous business. We are not disposed to interfere
with the lawful pursuits of any one. Every man may, and
DEFINITION AND NATURE OF A TRADE-MARK. 65
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 deceit-
ful or other practice impose upon the public; and he must not,
by dressing himself in another man’s garments, and by assum-
ing 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 entitled. To make the
application: If one man has, by close attention to the comfort
of his guests, and by superior energy, made his hotel desirable
for the traveller, and caused its name to become popular
throughout the land, another man ought not to be permitted
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 belongs to him alone.”
§ 96. The perusal of this case of Howard v. Henriques
relieves the mind from all doubt or embarrassment as to the
meaning of the court. The counsel had been reasoning from
analogy; and the court pursued the train of ideas thereby
evolved. No one in that case assumed that the mere name of
a hotel could be a trade-mark, but argued upon principle.
How could any one so assume? Did the proprietor of the
name affix it to any vendible article? No. But, it may be
replied, he did use it upon all the bills rendered to his guests,
on cards, and in numerous advertisements circulating through-
out the country. True; but advertisements are not trade-
marks.! Nothing short of the sheerest sophistry could twist
the title of a hotel into a mark of commerce, a visible mark
affixed to a thing sold, or for sale. We cannot detect the
essential elements of the thing technically so known. Then,
if not a case of trade-mark, what was it? It was exactly what
the Superior Court, by the lips of Mr. Justice Campbell, called
it, the “ good-will” of the establishment. The case did not
call for a definition. All that was required was substantial
1 Lord Chancellor, in Leather Co. v. Am. Leather Co., 11 Jur. (n.s.) 513.
5
66 LAW OF TRADE-MARES.
justice, upon the allegation of an invasion of an equitable
right.
§ 97. McCardel v. Peck, before the Supreme Court of New
York, in banc, in 1864, is a case that is sometimes cited to
prove that the name of a place of business is a trade-mark. The
misconception is the fault of the syllabus of the reporter. The
matter in dispute was the right to use the name of a restau-
rant known as the “ McCarpret Hovss,” in the city of Albany.
The court certainly did not treat the case as any other than a
question of the right to the good-will. The language of Mil-
ler, J., who delivered the opinion, misled the reporter. He
said: “The use of names and trade-marks in business, when
made valuable, has always been protected by the courts, and
any improper appropriation of them without the authority of
the owner will be restrained by injunction.” He said in an-
other place, “ the use of a name or trade-mark.” This is all
that was said of trade-marks: “‘ Names and trade-marks ;”’
and “a name or trade-mark.” It needs no great power of dis-
crimination to perceive that the employment of the conjunc-
tions implied a distinction between name and mark.
§ 98. Howe v. Searing, 1860,7 is another case that is quoted
in support of the theorem that the name of a place of business
is essentially a trade-mark. Buta careful examination of that
case will show that the majority of the court placed it in its
proper category. The plaintiff,a baker by trade, brought an
action to restrain the defendant from designating the bakery-
establishment kept by him, in the city of New York, as
‘‘ Howe’s Bakery,” and from otherwise using the name of
Howe, so as to induce the public to believe that the business
carried on at his place was conducted by the plaintiff. It was
not in anywise discussed as any thing other than what it really
was, — “the good-will of the business of baking.” All the
authorities commented upon by the learned Judge Hoffmann,
who delivered the opinion of the court, are good-will cases.
1 28 How. Pr. R. 120. ? 10 Abb. Pr. R. 264; 6 Bos. 854; and 19 How. Pr. R. 14.
DEFINITION AND NATURE OF A TRADE-MARK. 67
He adopted the language of Vice-Chancellor Wood, in Clinton
et al. v. Douglass:} “The name of a firm is a very important
part of the good-will of the business carried on by the firm.
A person says, I have always bought 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.” Mon-
crieff, J., dissenting, said: “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 transfer of the ‘ good-will ;’
and, if it was not the thing itself, it was an integral part of it.”
§ 99. What warrant had the dissenting judge to use the
technical term trade-mark ? We look in vain for any author-
ity to sustain his remark. Consider the circumstances. The
plaintiff, who had been doing a lucrative business as a baker at
No. 482 Broadway, sold the lease of the premises, with all the
stock, wagons, and fixtures, and the good-will of the concern,
to one Baker. Baker subsequently sold back to Howe the
right to resume business at another place, No. 850 Broadway,
in the same city ; and still later sold the lease to Searing, the
defendant, subject, however, to Howe’s right to conduct busi-
ness in hisown name. Searing continued the old sign-name,
to the prejudice of the plaintiff’s rights, and in a way calcu-
lated to mislead the public. Howe had a clear title to his own
name; and so, indeed, had any other Howe the same right,
and if he chose could put up a sign informing the public of
the location of his place of business. Searing, the defendant,
had no right to use Howe’s name. Hence the suit. The
mere name of Howe could not be a valid trade-mark, for it
was not the exclusive property of the plaintiff. It was nota
trade-mark unless intended to be stamped upon, or otherwise
affixed to the articles sold. It was at best a mere advertising
sign. Even if stamped upon the bread, it would not be a
trade-mark ; for it would not indicate origin. The purchasers
11H. 8.N. Johns. 176.
68 LAW OF TRADE-MARKS.
could not tell by the mere name what one of many persons of
the same name had baked the bread. Conclusion: the re-
marks of Mr. Justice Moncrieff were not a judicial decision,
and must be classed with unauthoritative obiter dicta.
§ 100. We must not infer from the foregoing decisions that the
name of a place of business cannot become a valid trade-mark.
If it possess the true characteristics of such a mark ; if it be not
_ generic, merely descriptive, or one that any other person in the
same trade may truthfully use; and if it be affixed to a vendible
article, then it may be made a trade-mark as well as any other
symbol. The case of Choynski v. Cohen,! in the Supreme Court
of California, in 1870, before all the justices, is in point. The
plaintiff claimed the exclusive right to the name, “ ANTIQUARIAN
Boox Stors,”’ which name was placed upon his sign, stamped
upon all articles sold by him, and used in his correspondence.
Held, to be a mere designation of trade.
§ 101. It was of little or no moment in the cases cited what
term a judge may have used to express an idea. Substantial
justice did not depend upon preciseness of terminology. It is,
however, of moment in our present purpose to accurately define,
lest by looseness of language we fall into looseness of applica-
tion of principles, and so end in egregious error. In judicial
matters, a rose by any other name may not smell as sweet. A
name is sometimes of the very essence. We could not arrive
at any result other than this: the name of a hotel and a trade-
mark are not convertible terms.
§ 102. The British “‘ Merchandise Marks Act,’ of 1862, says
that “the word ‘mark’ shall include any name, signature,
word, letter, device, emblem, figure, sign, seal, stamp, diagram,
label, ticket, or other mark of any other description; and the
expression ‘trade-mark’ shall include any and every such
name, signature, word, letter, device, emblem, figure, sign,
seal, stamp, diagram, label, ticket, or other mark as aforesaid
lawfully used by any person to denote any chattel, or (in
1 39 Cal. 501.
DEFINITION AND NATURE OF A TRADE-MARK. 69
Scotland) any article of trade, manufacture, or merchandise,
to be an article or thing of the manufacture, workmanship, or
production, or merchandise of such person, or to be an article
or thing of any peculiar or particular description made or sold
by such person; and shall also include any name, signature,
word, letter, number, figure, mark, or sign which in pursu-
ance of any statute or statutes for the time being in force
relating to registered designs is to be put or placed upon or
attached to any chattel or article during the existence or con-
tinuance of any copyright or other sole right acquired under
‘the provisions of such statutes or any of them.” This language
savors more of enumeration than definition, and may possibly
mislead by its breadth of expression, embracing as it does
things incongruous in their several natures, as registered
designs and copyright matters. Being a statute applicable
only to British courts, its form of expression cannot be taken
as an infallible guide for our present purpose. Many of the
terms used cannot be understood unless taken with their
judicial definitions, as name, word, label, &c. It should, how-
ever, be observed that the expression “ trade-mark” not only
includes every mark lawfully used by a person to denote any
chattel to be an article of the manufacture, workmanship, or
production of such person, but also to be an article of the
merchandise of such person, or to be an article of any peculiar
or particular description made or sold by such person. This
will include such cases as Mottley v. Downman,! where it was
contended that the right to use the trade-mark was attached to
a particular place and works, and to cases where the articles
are distinguished by the name of a person who did not manu-
facture them, and to similar cases.”
§ 103. Is the NAME OF A NEWSPAPER a trade-mark? This
question has been thoroughly discussed pro and con. in the
Patent Office, but has probably not been definitively decided
13M.&C.1.
2 See notes of H. B. Poland, Esq., to the English Act of 1862.
710 LAW OF TRADE-MARKS.
by any court. Upon an application for registration, all the
authorities bearing upon this point were examined. Ifa tech-
nical trade-mark, the application would be favorably acted on ;
if not, it would be rejected. The matter being ex parte, the
pleasing task of collating judicial decisions devolved upon the
Office. We will let the cases cited again pass in review.
§ 104. Snowden v. Noah, in the Court of Chancery of New
York, before Sandford, Chancellor, in 1825,! was treated by
counsel and by the court as a good-will case. The chancellor
said: “‘The defendant Noah was the editor, but not the pro-
prietor, of the newspaper establishment called the ‘ National
Advocate ;’ and immediately after the sale of that establishment
by its former proprietor to the 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.” After some other remarks, he continued: ‘“ 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 dis-
tinctly avowed ; and an open appeal is made to the friends of
the ‘ National Advocate’ 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 pro-
prietor of the ‘ National Advocate,’ or merely an exercise of
the common right to print and publish a new journal, and to
obtain for it patronage... . The only circumstance in this
1 Hopkins’s Ch. R. 347.
DEFINITION AND NATURE OF A TRADE-MARK. 71
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 Snowden’s paper to apprise all persons that these are
really different papers. . . . I do not perceive that any person
can be misled in this respect. . . . The good-will of an estab-
lished trade, the custom of an inn, and the right of a publisher
of books, may be injured by acts of deception and piracy; but
the injury for which redress is given in such cases results from
the imposture practised upon the customers of an existing
establishment, or upon the public.” It is evident that the
chancellor did not contemplate the case as a mere infringement
of a trade-mark right, or he would not have mingled the matters
of an injury to trade, to the custom of an inn, and the right of
a publisher of books. If he had regarded the name “ National
Advocate” as a trade-mark, then he must necessarily have
passed upon the question, whether the name that the defendant
had adopted was not an infringement of that trade-mark. Yet
he chose to discuss the question in controversy under the com-
prehensive idea of an injury to the good-will. Therefore that
case does not solve our inquiry.
§ 105. Bell v. Locke, in the same court, before Walworth,
Chancellor, in 1840, was a similar case. This case came before
the court upon an order for the defendant 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 infringe-
ment of the rights of plaintiff, who published the ‘‘ Democratic
Republican New Era.” THe CHancettor: “ The allegation in
the complainant’s bill is, that the defendant has assumed the
name of the complainant’s newspaper. for the fraudulent pur-
pose of imposing upon the public, and supplanting him in
the good-will of his established paper, by simulating the name
1 8 Paige, 75.
72 LAW OF TRADE-MARKS.
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, I should have
no difficulty in making this order absolute.” He observed,
further on in his opinion, that “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 latter by
actually deceiving its patrons.”1 This case comes closer to
our notions of one involving the mark of trade or commerce ;
and although the chancellor used the term good-will and did
not mention the term trade-mark, we conclude that the latter
term was strictly applicable.
§ 106. In Dayton v. Wilkes,? at a special term of the Superior
Court of the City of New York, in 1859, Hoffman, J., in regard
to the right to use the name of “ Porter’s Spirit of the Times,”
said: “‘ It has been very correctly argued, by the counsel for the
plaintiff, that the analogy of the rules as to trade-marks should
apply to this case.” It is manifest that the court did not re-
gard the thing in controversy as a mere trade-mark ; nor was
it necessary for the solution of the matter. We must look
further.
§ 107. Matsell vy. Flanagan,’ at a special term of the Court
of Common Pleas, in 1867, is of assistance in elucidating the
mooted question. The plaintiffs were, and had long been the
publishers and proprietors of the ‘ National Police Gazette,’
which was commonly known to the public as the “ Police
Gazette.” The defendants prepared and published a news-
paper, in imitation of the plaintiff’s newspaper, with nearly
the same title and device, which misled and deceived pur
chasers. So the complaint alleged, and so the court found.
The language of Brady, J., relieves us from any doubt as to the
1 8 Paige, 76. 2 17 How. Pr. R. 510.
32 Abb. Pr. R. (y.s.) 459.
DEFINITION AND NATURE OF A TRADE-MARK. 13
class of wrongs to which he assigned a case of the kind. After
reciting the power of the court in trade-mark cases, he con-
tinued: “The enforcement of the doctrine that trade-marks
shall not be simulated does not depend entirely upon the
alleged invasion of individual rights, but as well upon the
broad principle that the public are entitled to protection from
the use of previously appropriated names or symbols, in such
manner as may deceive them, by inducing or leading to the
purchase of one thing for another.” This case was treated as
purely an infringement of a trade-mark ; and the court, in com-
menting upon Snowden v. Noah and Bell v. Locke, treated it
as a parallel case.
§ 108. Stephens v. De Conto, at a special term of the Supe-
rior Court of the City of New York, in 1868, has a somewhat
different complexion. The plaintiffs owned and published a
newspaper called “ La Cronica.” The single question in con-
troversy was as to restraining the publication by the defendant
of the paper called “ El Cronista.” Monell, J., discussed some
of the general principles of ‘ good-will,’ and assumed the case
to be of that nature, if indeed any right at all existed; and, in
delivering his opinion, he wandered off into fields foreign to
the real nature of the case presented. He said: “If this case
was to be determined solely upon whether the similarity, if it
could be established there was any, of the names ‘ La Cronica ’
and ‘ Kl Cronista’ could mislead the public into the belief that
they were the same, I should have no difficulty in reaching the
conclusion, upon the evidence, that no such effect could or
would result... . I do not understand that the protection
which the law affords to ‘ trade-marks, even assuming the
name of a newspaper to be a trade-mark, goes so far as is
claimed in this case. The protection which has been granted
to that species of property has never, I believe, been extended
over any thing that was the subject of a patent or a copyright,
but is confined to appropriations of names designating some
1 4 Abb. Pr. R. (n.8.) 47, and 7 Robertson, 343.
14 LAW OF TRADE-MARKS.
particular manufacture or business. There can be no such
property in a newspaper, which is the only continuing portion
of it. The contents of each issue are the composition or crea-
tion of the editor or contributors, are varied each day, and
when given to the public all literary proprietorship in them is
lost. And the law of trade-marks, like the law of copyright,
cannot be applied to a work of so fluctuating and fugitive a
character. Clayton v. Stone, 2 Paine, 392. I do not mean to
say that a newspaper proprietor cannot appropriate, and, by
long use, acquire a property in a name, which the courts will
protect against piracy. In this respect the analogy of trade-
marks would apply. Dayton v. Wilkes, 17 How. Pr. R. 510.
And I have no doubt that the names, so long appropriated and
used, of ‘ The New York Herald, or ‘The Sun,’ would be pro-
tected as trade-marks, against the assumption of those names
by another proprietor. But that I understand to be the extent
of the rule, and that any mere assimilation of the name — un-
less it was clearly to deceive the public — would not be unlaw-
ful.” The injunction was accordingly dissolved, and the
complaint dismissed with costs. This opinion has been quoted
a number of times on each side of the question, which is evi-
dence that it has misled. Let us hastily analyze it. What
was the point? It was this: Was the use of the name “ El
Cronista” an infringement upon the exclusive right in the
name of another newspaper, “La Cronica”? The general
contents of the respective papers had nothing to do with the
contest. The judge said the protection given to trade-marks
had not been extended over any thing that was the subject of
a patent or a copyright. Nothing more true. But the name
of a newspaper is not the subject of a patent or of a copyright,
as we shall see hereafter in this treatise. But the judge ex-
pressly conceded that the long-used names of certain papers
would be protected as trade-marks. That is our case, so far
as this decision goes. With it is exhausted our American
authorities on this point. We look in vain for an English case
DEFINITION AND NATURE OF A TRADE-MARK. 75
that exactly touches the present question. Hogg v. Kirby 1 was
cited in each of the foregoing discussions ; but it does not help
us in reaching a determination. In no instance have we the
opinion of more than one chancellor or judge. Let us think
whether the true principle cannot be deduced therefrom.
§ 109. The question recurs, Is the name of a newspaper a
trade-mark? If not, upon what principle is it protected ? The
question arose in the Patent Office upon an application to reg-
ister the name of a paper. It was suggested that, as the name
had been copyrighted, protection must be sought under sec-
tion 86 of the law in relation to copyrights.? It is there pro-
vided, that any citizen of the United States, or resident
therein, who shall be the author, inventor, designer, or pro-
prietor of any book, map, chart, dramatic or musical composi-
tion, engraving, cut, print, &c., may, upon complying with
certain specified conditions, have the sole liberty of printing,
publishing, and vending the same, &c. The heading of said
paper consisted of an ornamental engraving on wood, commonly
known as a wood-cut. It was also a print. Did those literal
facts determine the right? We will examine for ourselves.
The librarian of Congress, not being a judicial officer in any
sense, was not required to pass upon the legality of copyright-
ing the thing presented to him for that purpose. The fee was
paid: the act was done. But does a mere newspaper-heading
come within the spirit and meaning of the law? The Consti-
tution ® gives power to Congress “ to promote the progress of
science and the useful arts, by securing, for limited times, to
authors and inventors the exclusive right to their respective
writings and discoveries.” We can nowhere else find the
power to legislate upon copyrights. The rights of inventors
and authors, as long settled in Great Britain, were familiar to
the framers of the Constitution; and, as Mr. Justice Story
1 2 Ves. 226.
2 An Act to revise, consolidate, and amend the statutes relating to patents
and copyrights, July 8, 1870.
3 Art. I. sec. 8, sub-sec. 8.
76 LAW OF TRADE-MARKS.
says,! it is doubtless to this knowledge of the common-law
and statutable rights of authors and inventors that we are to
attribute this constitutional provision, being beneficial to all
parties. It was beneficial to authors and inventors, because it
maintained their rights to the product of their intellectual
labor ; and beneficial to the public, as it would promote the
progress of science and the useful arts, and admit the people
at large, after a short interval, to the full possession and en-
joyment of all writings and inventions without restraint. In
short, the only boon which could be offered to inventors to dis-
close the secrets of their discoveries would be the exclusive
right and profit of them, as a monopoly, for a limited period.
A copyright is limited by time: a trade-mark is not. A copy-
right is limited territorially, but a trade-mark acknowledges no
boundaries. They are unlike in their natures.
§ 110. Literature, invention, and the fine arts needed a fos-
tering hand, and found it. The consideration paid by them
for a monopoly was a surrender to the public after a limited
time. The consideration was the coin of their brains. Au-
thors! What claim has the adopter of a trade-mark to be
considered an author? He may adopt any symbol, the sign
of any thing in heaven above or in the earth beneath ; it may
be a representation of a real object, or it may be entirely fabu-
lous. It does not require any genius for one to call a news-
paper by the name of sun, moon, or star. The name of a
newspaper is a sign to arrest attention, as it catches the eye.
It points to something else. The heading is not offered for
sale. Its office is simply to inform the public that the paper
on which it is printed is the Herald, the Sun, or the Globe,
as the case may be. The public care not a straw whether the
heading be ornamental or plain; for the advantage in buying
it is the intelligence, the editorials, the advertisements. The
purchaser does not glance at the heading, the title, the name,
except to be assured that he is getting the newspaper of his
1 Story on the Constitution, vol. ii. § 1152.
DEFINITION AND NATURE OF A TRADE-MARK. 177
choice. He takes no delight in gazing upon the name or head-
ing as a work of art. But the copyrighted article is the thing
that is sold. The book, the map, the dramatic composition,
the engraving, cut, photograph, &c., is the thing bought. The
name of a newspaper is but the guide to the thing. In the case
of the heading of a newspaper, if its owner should elect to
abandon it after a certain period, what value would he render
to the public? Nothing. If considered as a work of art,
what would be the measure of damages for infringement? 1
As a penal law, the statute must be strictly construed. Again,
it would be absurd to suppose that Congress intended to in-
clude such a thing, from the requirement of deposit in the mail
before publication,? a description of the article, and within ten
days after publication the transmission of two copies to enrich
the library of the nation. The heading of the “ Herald” as a
work of art! We cannot:conceive a mere newspaper heading
to be a subject for copyright.
§ 111. In Stephens v. De Conto, the judge mentioned “the
subject of a patent,” — meaning, doubtless, a design-patent.
Is such a heading the subject of a patent? Examine: Mr.
Upton, in his work on Trade-marks,’ has taken the correct posi-
tion in the construction of the Act of 1842, for patents for de-
signs. The language, “any new and useful pattern, or print,
or picture, to be either worked into or worked on, or printed or
painted or cast, or otherwise fixed on any article of manufac-
ture,” &c., has been relied on as conferring a right to an
exclusive privilege that may be made to serve the purpose of
designating articles of merchandise. He says: “It is quite
obvious that such was not the purpose of the law; but, on the
contrary, it was manifestly intended that the design for which
such protection was provided, should constitute a portion of
the manufactured article, either as an ornamental adjunct, or
as controlling its figure or proportions, by no means as a mere
1 See sec. 100 of Copyright Law of 1870. 2 Sec. 90 same act.
3 Albany, N. Y., 1860, pp. 17, 18.
18 LAW OF TRADE-MARKS.
name or designation by which to identify or distinguish the
article.’ He maintains that the right thus acquired is in no
sense a trade-mark property... We must agree with him that
the construction sometimes given to that act was quite unwar-
rantable. The design that is patentable is «esthetic. The
mark of manufactures or of commerce is not essentially a thing
of taste. The abstract symbol has no intrinsic value. The
value is in the article to which it is affixed.
§ 112. The Supreme Court of the United States in its first
trade-mark case, in 1872, said: ‘* Property in a trade-mark, or
rather in the use of a trade-mark or name, has very little
analogy to that which exists in copyrights, or in patents for
inventions.”’ ?
§113. In Swift v. Dey,? Robertson, Ch.J.,said: “ A-patented
design may be adopted as a trade-mark, by consent of the
patentee, and thereby its use by others for the same purpose
prevented. There is no rule, however, which makes the test
of the infringement of such rights the same in both cases. The
defendants may be liable in both the Federal and State courts:
in the former, for imitating the design; in the latter, for pass-
ing off, by means of such design, spurious wares as being the
plaintiff's: and the cause of action would clearly not be the
same.”
§ 114. Paxson, J., in The Dixon Crucible Co. v. Guggenheim!
expressed an opinion that “the name of a newspaper is a
trade-mark, as much so as a label stamped upon a bale of
muslin,” although it is true that that was not the exact question
before the court.
§ 115. From the foregoing train of reasoning, we deduce
this conclusion: A newspaper, being a vendible article, is as
much a matter of merchandise as any thing can be. It would
1 See case of Whyte, Comr’s Dec., 1871, p. 874.
2 President, Managers, &c., of Del. & Hudson Canal Co. v. Clark, Patent
Office Official Gazette, March 26, 1872.
8 4 Robertson, 611.
4 38 Am. Law Times R. (St.) 288, and 2 Brewster, 321.
DEFINITION AND NATURE OF A TRADE-MARK. 79
not be bought unless it contained or bore an authenticating
sign. That sign is its name. Each issue may be ephemeral,
and be at once consumed; but the name, its emblem, is per-
manent and invariable, and is the stamp of genuineness. We
see, therefore, that the Office was unquestionably right in
admitting the name of a newspaper to registration as a trade-
mark.!
§ 116. Trade-marks on Books.— Can printed books be pro-
tected by trade-marks? Yes, as mere merchandise; no, as
literary productions. They are articles of manufacture, and
may bear a particular mark to designate their author, or the
merchant who sells them. Sometimes they are impressed with
a peculiar symbol, to indicate the place of sale: but not so
much so as in preceding ages, especially the sixteenth and
seventeenth centuries, and the earlier portion of the last; for
then every shop had its emblematic sign, as a dolphin, a lion,
the king, &c., and a representation of that sign indicated the
place of sale quite as well as could the name of the merchant
or publisher. The mark of the dolphin, for example, would
satisfy the purchaser, for he would reflect that he had always
obtained correct editions of books at that place — the Dolphin.
In Savary’s “ Dictionnaire Universel de Commerce,’’? we find
that in France, and probably in other European countries, the
legalized mark of a bookseller was an image placed by him
under the title of a book, or on the first page thereof. This
establishes the fact that books were regarded as proper objects
for the reception of trade-marks.
§ 117. But it must be borne in mind that it is as merchandise
merely, and not as intellectual creations, that books are pro-
tected by the mark of commerce. Whyso? Because a book, |
as such, has its protection under the copyright law. If printed,
ample remedy is afforded by the copyright law of July 8, 1870.
1 F. C, Barksdale, No. 424 (‘‘ Our Society”). -
2 Copenhagen, 1761, title Marque. (Under this head may be found much
interesting information in regard to the compulsory use of trade-marks in the
various branches of manufactures.)
80 LAW OF TRADE-MARES.
‘
That is the security which the Constitution and the statute
provide for infringement upon works of literary genius, even
though the pirate change the title of the book, and, as it were,
hoist a false fag. It is the contents of the book that would be
copied, and not its emblem, title, or mark.
§ 118. There seems to be no sufficient reason why the title
of a book may not be deemed a valid trade-mark; e. g.,
when, two centuries ago, in England, the five Presbyterian
divines (Stephen Marshal, Edward Calamy, Thomas Young,
Matthew Newcomen, and William Spurstow) combined the
initials of their names, which made the word SMECTYMNU-US,
and adopted it as their joint signature, they had a valid trade-
mark if they had chosen to use it as such. It was good for the
publication bearing that name, and would be entitled to pro-
tection as a trade-mark for any books the owners of the newly
coined word might offer for sale. ‘
§ 119. Here is a case which is usually classified with trade-
mark cases; but, if we keenly scrutinize and analyze for our-
selves, we may conclude that, although of the nature of a
trade-mark, the thing in controversy has but little claim to
the name. We examine Williams v. Johnson, before the
general term of the Superior Court of the City of New York,
in 1857. Under the principle that a rose by any other name
may smell as sweet, the court contented itself with rendering
substantial justice, without caring about too much nicety in
terms. We will soon be able to answer this pertinent question :
Ts not this an instance of unfair competition in trade, by means
of false labels? A wrong was done. Let us try to name it.
§ 120. The plaintiff alleged that, in or about the year 1845,
he and his brothers were manufacturers of soap at Manchester,
Conn., and made a particular kind of soap, to which, in order
to identify it as their manufacture, they gave the name of
“¢ GENUINE YANKEE Soap.” It was made in cakes of about two
inches square, each cake covered with tin-foil; upon one side
1 2 Bos. 1.
DEFINITION AND NATURE OF A TRADE-MARK. 81
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 octagonal 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.” The said soap
was put up in pasteboard boxes, containing one dozen cakes
each, and each box was covered with a brown paper wrapper,
with the words thereon: “One dozen Genuine Yankee Soap,
warranted superior to any foreign compound for shaving and
the toilet. Manufactured at Manchester, Conn., by Williams
& Brothers, Chemists and Apothecaries. To prevent counter-
feits, their signature will be upon each cake.”
§ 121. It was alleged that the defendant manufactured soap
of an inferior quality, put up in a style and manner precisely
similar to the plaintiffs’; that it was cut up into cakes of the
same size as those of the plaintiffs’, each cake encased in tin-
foil; and upon each cake were three labels of the same form
as the plaintiffs’. Upon one were printed the words: ‘“ GENUINE
YanKEE Soap, manufactured at New York, by L. Williams ¢
Co. To prevent counterfeits, their signature will be upon each
cake.” Upon another were printed the words: ‘ Tar 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 were the words, in writing, or in a resem-
blance to writing: “ L. Wittiams & Co.” Each box was covered
with a brown paper wrapper, with the words thereon: ‘“ One
Dozen Genuine Yankee Soap, warranted superior to any foreign
6
82 LAW OF TRADE-MARKS.
compound for shaving and the toilet. Manufactured by L.
Williams ¢ Co., New York. To prevent counterfeits, their
signature will be upon each label.”” Upon these several labels the
arrangement of the lines, the form of the letters, and style of
printing were, in almost every particular, an exact copy of the
labels‘ used by the plaintiffs. It was further alleged that the
name of L. Williams & Co. was fictitious, and used to deceive.
§ 122. The defendant’s answer denied that the plaintiffs had
any exclusive right to use the designation “Genuine Yankee
Soap,” averring that that term 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; and that the
article known in the market by that name had been for years
manufactured by different manufacturers of soap in different
parts of the United States, and sold by that name, and could
not be appropriated by the plaintiffs. It further denied that
the name L. Williams & Co. was fictitious, or used as a color-
able imitation, assimilating the trade-mark of the plaintiffs,
and deduced the title of the defendant to its use from a firm
of that name, who had assigned the business and name to the
defendant.
§ 123. An injunction was granted at special term, restrain-
ing the defendant from “selling, or in any way disposing of
any soap in boxes or otherwise, with labels or wrappers con-
taining the words ‘Genuine Yankee Soap’ printed or written
thereon ; and from advertising, selling, or offering to sell, any
soap whatever (unless the same has been manufactured by or
procured from the plaintiffs), as and for the ‘ Genuine Yankee
Soap,” &c. From the order so made, the defendant appealed.
§ 124. In delivering the opinion of the court in bane, Wood-
ruff, J., said: “The defendant is engaged in a gross and
palpable endeavor, by imitating the marks and labels used by
the 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’
DEFINITION AND NATURE OF A TRADE-MARK. 83
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.” After characterizing the acts
of the defendant as a fraud upon the plaintiffs, the learned
judge said of the latter: ‘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 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., instead of Williams & Brothers, as
manufacturers. But the latter designation imports a false-
hood, 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 manu-
factured by the plaintiffs. Whether upon taking 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 dnd sell 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 manufac-
ture, it is a fraud on the part of the defendant to use it... .
Without deciding whether the defendant may or may not use
84. LAW OF TRADE-MARKS.
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, hor any
other like labels, devices, or handbills used by the plaintiffs,
as set forth in the bill of complaint, or any other similar labels,
devices, 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.”
§ 125. A nutshell could contain this case, so far as trade-mark
law is concerned. None of the words on the plaintiffs’ labels
are susceptible of being turned into trade-marks, except
“Genuine” and “Yankee.” The court did not decide their
nature. It was not necessary so todo. We are warranted in
going one step farther. Neither of those words can be made
a trade-mark, nor are they such when combined.
§ 126. In the endeavor to ascertain the true nature of a
trade-mark, we will examine Zhe Leather Cloth Co. v. The
American Leather Cloth Co. The plaintiffs’ alleged trade-
mark reads as follows: “Crocker InrsrvationaL LEATHER
CLora Company, Newark, N. J..U.S.A. West Ham, Essex,
Eneuann,”’ which words formed a circle. Within and near
the top of that circle is the representation of an American
eagle, with outstretched wings, and, over the eagle, the word
“Excelsior.” Below the eagle are the words: “ Crockett &
Co. Tannep LeatHer CLotH. Patentep Jany. 24,56. J. R.
& C. P. Crocxerr, Manuracturers. + 12 Yps. +.” Besides
that, within the circle are two other similar crosses, and this
character from the printer’s font:*-—-—-—
§ 127. To enable a party to obtain the intervention of
a court for an infringement of a trade-mark, he must first
establish the fact of his having a trade-mark. He cannot
apply that name to any thing that he chooses, despite its
utter lack of suitableness for the purpose. The law ‘will
examine and apply the proper term of the thing presented.
111 Jur. (n.s.) 518.
DEFINITION AND NATURE OF A TRADE-MARK. 85
Now, what is the essential constituent element of this
stamp? Is it the eagle, the words, or both? We must
not be misled by the application of the term trade-mark to the
whole stamp, or label, even by a court. In the House of Lords,
on appeal from the Lord Chancellor, Lord Cranworth said:
“The plaintiffs’ trade-mark, if trade-mark it is to be called, is
contained in a circle. . . . Each of the trade-marks, it is true,
as well that of the plaintiffs as that of the defendants, contains
within its periphery an eagle, but not at all resembling each
other. The rest of the device, if it is to be called device, con-
sists merely of words intended to indicate the nature or quality
of the article, the place of its manufacture, and the names of
the manufacturers.” Lord Kingsdown, in the same case, uses
this language: ‘“‘ The plaintiffs’ trade-mark, or what they call
such,” &c. It is undeniable that he used the term trade-mark
to indicate the subject before the court; but it was not neces-
sary to define that particular subject. The term was a con-
venient one by which to express the collocation of words and
the eagle. The real question under consideration was, whether
the defendants had been guilty of a fraud upon the public, in
selling their goods as the plaintiffs’. The Lord Chancellor,
whose decision was in process of affirmation, then rose to
speak. His language, as to the matter of defining, relieves us
from embarrassment. He saw the necessity of giving the alleged
trade-mark its true name. He said: “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
necessary 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 consideration 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’
86 LAW OF TRADE-MARKS.
goods, which is here denominated a ‘ trade-mark,’ as something
which, according to the anterior usage and application of the
word ‘trade-mark’ by no means resembles or comes within
the description of any thing 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 compare them together, taking them as
if they were simply — what in reality they are — two advertise-
ments, each affixed, by way of label, to the articles manufac-
tured by the parties respectively. . . . 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 defend-
ants have borrowed their advertisements, and described their
goods in substantially the same manner.”
§ 128. What language could more clearly convey the idea
that, independent of the two eagles, there was not one ingre-
dient of a real trade-mark in either of the labels presented ?
The distinction between a mere advertisement and the technical
commercial emblem is important.
§ 129. An abstract right in a symbol has no existence. The
subject must be considered in its concrete relation. Herein
a trade-mark differs from a patent or a copyright. The former
exists the instant it is issued; and the latter as soon as entered.
The patentee, or the author, may not choose to immediately
avail himself of the benefits of the grant; and still the right
exists in full vigor, unless, of course, the invention or the book
be dedicated to public use by abandonment. But the registry of
a trade-mark does not ipso facto make the mark, but merely
operates as evidence of adoption, and the right to it is inchoate,
and does not become a perfect right until the owner con-
DEFINITION AND NATURE OF A TRADE-MARK. 87
summate his intention and stamp the symbol upon an article
of merchandise which he desires to sell. When that is done,
he will have entered into possession of the exclusive right to
affix that particular symbol to the class of goods to which it
has been appropriated. The symbol and the article for sale
are complements of each other; and it would be as illogical to
term such symbol a trade-mark before affixing it to goods in
trade as to term one’s loose autograph his signature, although
the exact representation of the signature which he intends to
apply to an instrument in writing.
$180. A trade-mark is nothing more nor less than one’s
commercial signature to his goods; and the mark and the
goods bear the same relation to one another as do the positive
and the negative forces of electricity to each other; and in
their apposition they mutually uphold and sustain. We must
be cautious to discern between things whose natures differ,
and assign to each its peculiar and appropriate sign, by words
which fit close to the thoughts, or the mind will be confused’
by a jumble of marks of commerce, of patented designs, of
copyrights, of labels, of advertisements, and other matters
of incongruous natures. A definition should instantly convey
the true idea of the thing, and indicate the precise species of
a genus. A trade-mark is in its nature separate and distinct
from every thing else in the world ; and yet we frequently hear
of writers, lawyers, judges, by the most heedless use of thes
term, leading others into error. Things must be called by
their right names. § 191, ante.
® Journal du Palais, 1854, p. 129.
PRACTICE IN PATENT OFFICE. 463
TAIRES DE VIGNOBLES.” Perr cur.: The words “ Propriétaires
de Vignobles”’ (Vineyard Proprietors) is a generic qualifica-
tion belonging to an indefinite number of proprietors, and can-
not indicate to commerce the origin of the article to which they
are affixed. Dismissed.}
§ 600. An application was made for the registration of the
words ‘Great Lightening Ink Eraser.” These words, being
descriptive of the article to which they were intended to be
affixed, could not be favorably entertained. The Examiner made
a suggestion that the interpolation of a single letter had quite
changed the meaning of the essential word. Any ink eraser
would lighten the ink marks, and therefore might truly be
called a lightening ink eraser. The diminution of weight was
not the exact point. The verb could be taken in but one
sense. It could not possibly be meant to imply that the ap-
plicants’ eraser burst or darted forth with an instantaneous
illumination. That would be nonsense. The second vowel
made the trouble. The word should have been written “ Licut-
ning.” The use of the metaphor would then have imported
that, with the quickness of the electric flash, the stains of ink
would be caused to disappear. That improper spelling would,
in ninety-nine cases in a hundred, defeat the cause of the per-
son who claimed the word. The rule of idem sonans could not
save it. A man is supposed to have meant what he said, es-
pecially when suing for a penalty.
§ 601. An inventor may give the products of his genius, or
skill, or good fortune, a distinctive appellation of infinitely
great value to him than a patent for the machine or discovery.
This is a matter that is worthy of the consideration of applicants
for registration. The object is to select, or rather invent, a des-
ignation peculiarly applicable to the thing of which a monopoly
1 The report of this case states that, during the progress of this suit in France,
Salignac in the name of his company had obtained from the Lord Chancellor of
England an injunction, and sequestration of certain goods so marked found in
the London Docks. If so, it doubtless was on the ground of unfair competition ;
for there is nothing of the nature of a trade-mark in the whole case.
464 LAW OF TRADE-MARKS.
is desired. Now for an illustration of this idea. In or about
the year 1814, John B. Logier obtained from the British Gov-
ernment a patent for fourteen years, for an instrument for
guiding the hands of learners on the piano-forte. He com-
pounded two Greek words, signifying “to form the hand,”
and named his machine the “ Chiroplast.”” He acquired great
reputation and a considerable pecuniary profit from the favor-
able reception of the instrument. If it had occurred to him
that this new word was a valid trade-mark, it would have mat-
tered little that his patent expired in fourteen years; for the
mark would have virtually given him a monopoly so long as
the public called for the “ Chiroplast.” As it was, the word
is now generic. —In Bardin v. Gobert et al., the plaintiff had
obtained a patent for a species of ornamental feathers produced
by his invention of detaching the epidermis of all kinds of
natural feathers, and dyeing them of all colors, as ornaments
of various sorts for head-dresses, finery, flowers, embroideries,
lace-work, and tissues. This constituted a new product of com-
merce. It needed a name. He composed one, — “ FAILLAN-
TINE.” This meant his patented article, and nothing else.
It was a perfect trade-mark.
§ 602. Propriety must be the standard in the selection of
something intended to serve as a symbol of commerce.” Com-
merce extends throughout the world; therefore a mark should
be valid in all lands or it is valid in none. The moral, relig-
ious, or political sensibilities of any people must not be shocked
by the perversion of an emblem sacred in their eyes. There is
no necessity for so doing, for the objects suitable for use as
trade-marks are as infinite in number as the sands of the sea-
shore. A violation of this rule is not only in bad taste, but is
also an outrage. The spirit of commerce is conciliatory. We
must not blindly follow the loose, random sayings of judges,
that any emblem may be lawfully employed for this purpose.
1 Annales de la Prop., tome xii. p. 880.
2 See case §§ 342-344; also cases in § 870, ante.
PRACTICE IN PATENT OFFICE. 465
To be a “ lawful trade-mark” the emblem must not transgress
the rules of morality or public policy. The law will not aid
any person to blasphemously bring obloquy upon objects and
symbols consecrated to religion. But what is religion, in its
relation to commerce? It is the recognition of God, as an ob-
ject of worship, love, and obedience. All peoples worship God
under some form or other, or at least think that they do. Their
religious prejudices must not be trampled upon. We tolerate
all religions, true or false. A reader of these lines may be a
Chinaman. His joss must not be caricatured. If a scoffer
should endeavor to curry favor with an infidel class by the pro-
fane use of an Agnus Dei, or of any symbol of the Alpha and
Omega, or the Ineffable Name, or even of angels, apostles,
saints, and martyrs, or of a thousand objects depicted by an-
cient art, and hallowed by associations, would any court of
justice sustain a claim to a trade-mark so composed? No!
This is a rule of universal application. The Office hesitated to
permit a representation of the Evil One himself to be registered
asa trade-mark. The device is set forth in the specification as
“a smiling, halfdrunken demon or devil in a sitting posture,
with the left leg raised at an angle of about forty-five degrees,
while the right one is folded under it, and his tail passes over
his right ankle. The demon wears a broad-brim hat with
conical top and feathers, and in his arms and hands he carries
six bottles.” Enough! the frightful thing might possibly con-
vey a moral lesson by an association of ideas. The bottles
turned the scale. It had been recognized in Germany ; and
was registered. Suppose, for the sake of further illustration
of this topic, that the fiend had borne the likeness of a human
being venerated by a large class of followers. It would have
been in law an atrocious libel, and must have been rejected on
that account.
§ 603. We have seen that a colored bordering of a woven
fabric may be as valid a trade-mark as any other device, espe-
1 Walter & Shaeffer, No. 434.
80
466 LAW OF TRADE-MARKS.
x
cially when announced as such, and recognized by the trade, and
consequently will be protected like any other symbol of com-
merce! But a mark must be well defined, and its nature be
calculated to effect its object. As to what would be deemed an
encroachment upon such a delineation, we have a decision of
the Court of Cassation of France, made in May, 1872 (Dugué
& Co. v. Bobot-Descoutures?)). Both parties manufactured
drillings. The complainants in their act of deposit — cor-
responding to our filing for registration — described their mark
as composed of eight threads, arranged thus: two of violet, four
of white, and then two of violet. The court said that it thence
follows that the distinctive element of this mark is the number
of threads, their disposition, and the alternation, as described.
The defendants used four deep lilac threads, disposed so as to
intertwine like a chain; whence it follows that the number of
threads are not the same in both marks. The color is not the
same, the complainants having two colors, while the defendant
has but one color, — deep lilac. The disposition of threads is
different: the violet and white of the complainants alternating,
as stated, while in the defendants’ the color is a unit. To dis-
regard the number and disposition of threads in the complain-
ants’ mark, were to suppress one distinctive element, and to
take it without the basis they have adopted to characterize the
peculiar products of their manufacture. If their fabric be
examined, in piece or in roll, there can be no hesitation in dis-
covering the lack of resemblance between the two marks. In
a word, from any point of view, no imitation can be discerned
upon which to found a claim to damages, whether under the
statute of 1857, or at common law (arts. 1882 and 1383 of the
Civil Code). Both marks were recognized as valid.
§ 604. When a large number of persons are interested in a
trade-mark, either as members of a joint-stock unincorporated
company, or as the personal representatives of a deceased
person, or as guardians of infants, any of the number may be
1 See § 268, ante. ? Annales de la Prop., tome xvii. p. 305.
PRACTICE IN PATENT OFFICE. 467
selected to make the application for registration, for their joint
benefit. In one case, the papers were executed by one such
person, in his own behalf and “ as the representative of, and for
the joint and equal use of the heirs at law,” &c.; and yet he
asked that the registration should be made in his name, he
having adopted a trade-mark for the benefit of all the others.
He afterwards filed an unauthenticated certificate purporting to
be signed by’ seven others as “the only heirs at law and legal
representatives of Alpha Richardson, deceased,” in which he,
the applicant, was recognized as “ the representative of the heirs
at law.” Papers so inartificially prepared could not receive a
very favorable consideration. The complication might easily
have been avoided in this way: If all the parties had adopted a
trade-mark for their united interest, or had inherited such
mark, they were tenants-in-common thereof, and one might
have been appointed attorney-in-fact by and for the others; or,
regarded as a copartnership, a single member of the concern
might quite as well have done the business of obtaining regis-
tration. In either case, the petition should have been assim-
ilated to the form prescribed for a firm. All the parties would
then have acted through one, and the certificate of registry
might have issued in the names of all, or to them as a
firm.
§ 605. The following case is a curious instance of the ideas
that are sometimes entertained in regard to the constitution of
a trade-mark. It came up in the. Court of Paris, in 1865
(Prudon v. Brousse et al). The plaintiffs made up cigarette-
paper in the form of a roll or endless-band, with sections
indicated, being kept rolled by means of a caoutchouc band,
which they patented. They then made a deposit of what they
assumed to be their trade-mark, z.c., the cylindrical form of
their product. The Tribunal of Commerce of the Seine having
rejected their suit, they appealed. The appellate court affirmed
the judgment, saying that although that peculiar form of the
1 Journal du Palais for 1865, p. 1125.
468 ° LAW OF TRADE-MARKS.
complainants’ product had been used by them exclusively for a
number of years, it could not constitute the commercial prop-
erty known as a trade-mark.
§ 606. Here is another singular case, filed by a firm of sol-
icitors largely engaged in patent practice. The symbol was
described as the picture of a tiger, or the word “ Tiger,” but
the essential element was stated to be “the idea of a tiger.”
The Examiner was perplexed. Fac-similes must be furnished
by all applicants. A fac-simile is that which is made exactly
like the mark impressed upon the vendible commodity; an
exact copy of the writing, engraving, stamp, or brand. How
to get a fac-simile of an idea was the embarrassing question.
It was not understood how a mental conception, a thought, a
sensation, or whatever it might be termed, could be impressed
upon, or otherwise affixed to goods; but out of a feeling of
respect the matter was fully considered. The Examiner sug-
gested that a trade-mark must necessarily consist of a visible
and invariable form. The solicitors did not accept the hint.
Thus the matter stands. If they had been content with the
excellent delineation of a tiger filed by them, or with the word
“Tiger,” or both together, the case would have been of easy
solution. This shakes our faith in the maxim, Utile per inutile
non vitiatur ; for here is something serviceable which is com-
pletely neutralized by a useless adjunct.
§ 607. Rejection because of False Suggestion. — The applica-
tion-papers may be perfect in form, and, so far as verbal lan-
guage goes, quite impregnable, and yet be open to assault.
The sworn statement is not always conclusive. The case as
presented is liable to dissection, and hideous deformities to
be exposed to view. The allegations may be true in letter,
and false in spirit. The Office will penetrate the surface, and
endeavor to reveal any latent fraud. The circumstances are
compelled to testify, and keen examination, like the spear of
Ithuriel, forces the truth from unwilling witnesses. The
declarations of good faith may be overturned. Spurgeon says
PRACTICE IN PATENT OFFICE. 469
that no one is more like an honest man than a thorough rogue.
There seems to be no end to the devices of unworthy traders,
to trick their rivals and the public; nor can there well be until
bounds shall have been set to human ingenuity. Yet, to war-
rant a refusal to register, there must be sufficient evidence of
unfairness to overcome the natural presumption of honesty
and fair dealing. For that reason, many suspicious cases are
allowed to pass muster, and to go into the field of active strife
armed with the certificate of the Patent Office, with the chance
that justice may eventually overtake them. The Office is not
bound to hunt for motives not made apparent by the papers ;
yet if the ex parte case cannot look one fairly in the face, the
blandest words shall not save it from condemnation. It has
been vehemently said that the Office is not the conservator of
the morals of the community, nor does it aspire to be. But it
has a duty to perform, and that duty is to carefully scan each
proposed case, and, if necessary, to probe it through and
through. A self-styled trade-mark may upon examination be
found to be a brazen-faced counterfeit. Any objection to
validity which might be made in subsequent judicial proceed-
ings may be anticipated in an application for registration ;! and
fraud is certainly the most formidable foe that can appear.
§ 608. The fraud which would justify a refusal to register a
proposed trade-mark may be, 1. Actual or positive fraud;
2. Constructive fraud. That is, it may be the intentional
employment of any cunning, deception, or artifice, to circum-
vent, cheat, and deceive purchasers ;* or it may consist in such
acts which, — though not originating in evil design and con-
trivance to perpetrate a positive fraud or injury, yet by their
necessary tendency to deceive and mislead, or to violate public
1 “The Commissioner of Patents shall not receive and record any proposed
trade-mark which is not and cannot become a lawful trade-mark.” Sec. 79, Act
of July 8, 1870.
2 Dolum malum esse omnam calliditatem, fallacium, machinationem ad cir-
cumveniendum, fallendum, decipiendum alterum adhibitam. Dig. 4, 3, 1, 2;
Poth. Obl. a. 28. *
470 LAW OF TRADE-MARKS.
or private confidence, — are deemed equally reprehensible with
positive fraud, and therefore are prohibited by law, as acts done
malo animo.1 The public must be protected, at least to the
extent of declining to recognize a mark as the valid symbol of
honest traffic, when bad faith is apparent. Fraud is not to be
judged of by the event only, but also by the design.? Even the
appearance of evil is a sufficient justification for rejecting an
application. Without making invidious distinctions between
the various classes of cases presented for registration, we may
use the following by way of illustration.
§ 609. The words ‘‘ Hamburger Tropfen” (Hamburg Drops)
were proposed for registration, as a trade-mark for a certain
kind of medicine. The Office replied that it is difficult to
conceive upon what principle such words could be upheld as a
lawful trade-mark. They are printed upon a label which is
‘entirely in the German language, and which, beyond a doubt,
is addressed to German-speaking people. To them the said
words are plain “ Hamburg Drops,” and nothing more. The
words are therefore descriptive, that is, if the medicine truly
consists of drops coming from or made in Hamburg. Any
person in Hamburg has a right to manufacture “ drops,” and
as much right to give those drops the geographical name of
“Hamburg.” But there is another objection. The label upon
which the said words are printed has upon it the representa-
tion of an ornamented mortar-and-pestle, beneath which are the
words “ Handels Marke,” besides a caution, and a fac-simile of
the signature, “Dr. August Koenig.” These words clearly
indicate the previous appropriation of the said representation,
as a trade-mark, and that by some one other than the appli-
cants. By reference to the application-papers, it will be per-
ceived that the medicine of the applicants, upon which article
it is proposed to use the words “ Hamburger Tropfen,” is man-
1 1 Story Eq. Jur. § 258-440.
2 Fraudis interpretatio semper in Jure Civile non ex eventu duntaxat sed ex
consilio quoque consideratur. Dig. 50, 17, 79.
3 A. Vogeler & Co., ex parte, 1872.
PRACTICE IN PATENT OFFICE. AT1
ufactured by them at Baltimore, Maryland. Such a label is
calculated to mislead the public. For both reasons, the appli-
cation was rejected.
§ 610. The words “ American Sardines,”’! as applied to cer-
tain fish prepared for food, were refused registration, for a
similar reason. The objections were, the descriptive nature of
the words on one hand, and their tendency to mislead on the
other. The written argument of the applicant’s counsel admits
that the fish to which these words are applied are not really sar-
dines, but are “ menhaden,” or “ moss-bunkers,”’ which, cooked
in any ordinary way, are not eatable, owing to their numerous
fine bones, and were therefore used only for making oil until
treated by the applicant’s patent process. The words “ Amer-
ican Sardines” cannot, in view of this fact, be held to be
descriptive. But a more formidable objection remains for con-
sideration, said the Office, — the tendency to mislead the pub-
lic. The counsel attempt to meet this objection by insisting
that no one who has ever seen a sardine could mistake the so-
called American Sardines for the genuine Mediterranean fish ;
for, say they, the applicant’s fish are “at least six times as
large, though supposed to be of the same (herring) family.”
The Office replied, as follows: The truth is this, the inferior
fish, the moss-bunkers, are put up by the applicant in tin boxes
similar in size and general appearance to those containing the
genuine delicate fish, brought from the vicinity of Sardinia. It
is not possible for any unadvised purchaser to draw comparisons
between the appearance or sizes of the applicant’s preparation
of fish and the genuine, until the box is opened; and the box
is not opened until after purchase. By that time the mischief
will have been done. It may be that the wholesale dealer
would not in the least degree be misled by the misuse of the
word “Sardines,” or by the appearance of the box with its
French words on a brass label; and retail dealers might be
cautious enough to look at the English words on said label,
1 Case of “The American Sardine Company,” 1872.
472 LAW OF TRADE-MARKS.
and draw the correct inference; but they are not the only
classes who are to be shielded from deception. The careless,
the ignorant, the inexperienced, must be protected; for they
buy on the faith of a single glance of the eye at the outside of
the box bearing the attractive appearance of a genuine package
of sardines. It is denied that there is any intention on the part
of the applicant to mislead. That is not material in our pres-
ent investigation. The real question is this: Is the use of the
name, “ American Sardines,” as applied to a box resembling
the genuine sardine-box, calculated to mislead the public in
the purchase of an article of merchandise? It is not necessary
for the determination of this question that any purchaser shall
actually have been deceived. Would the public be likely to be
misled? They would be. Then, the proposed trade-mark can-
not have the sanction of registration. As to the bona fides of
the applicant in adopting said words: Why apply the words
“sardines ?’? As moss-bunkers, perhaps the article would not
sell. It is said that the words “‘ American Sardines” are not
given to the fish themselves, but to the fish as prepared under
a peculiar process. The public would buy the prepared fish as
genuine sardines, which they are not. Even if the American
prepared fish are superior in taste and nutritious qualities to
the Mediterranean fish, there is no reason why a purchaser
should not have exactly what he calls for. Application finally
rejected.
§ 611. An application was made for the registration of
the words “ Richardson’s Patent Leather Splitting Machine.”
These words being purely descriptive of the article upon which
they were placed, the case was rejected upon that technical
ground. Upon a close inspection of the papers, it was observed
that the applicant set forth that he had adopted a trade-mark
consisting of those words, while in another place in the same
documents he alleged that the mark had been in use for up-
wards of twenty years. The statements are objectionable for
repugnance. That is not all that may be said. To use a mild
«
PRACTICE IN PATENT OFFICE. 473
expression, the mode of relating the facts is very suggestive.
Under this gentle aspect, what motive lies concealed? The
phraseology — “ for a term of upwards of twenty years” — is
simple and indefinite enough, and may reasonably be inferred
to mean at least twenty-one years. A patent granted prior to
March 2, 1861, expired in fourteen years, unless extended, in
which case its duration would have been prolonged for seven
years. In either event, the monopoly must have ceased. What
would have been the practical effect of a recognition -of this
assemblage of words as a trade-mark? For all time, the idea
must thereby have been conveyed that a patent upon the ma-
chine was still in force, and the monopoly, which Govern-
ment had limited, might by an ingenious manceuvre have
been perpetuated.
§ 612. We need be at no loss to find precedents on this point
of false suggestion. Where one person had adopted as his
H bias
trade-mark the word “-—"” he was an infringer who used the
?
words “The Heroine” for the same class of merchandise.!
So, when one person distinguished his black cotton stockings
from those made by others, by six plain lines one above an-
other, and about the eighth of an inch apart, going round each
stocking near the top of the leg, and the word “ Erxiopran ”
printed in Egyptian characters below said lines in a segment of
a circle, and another person stamped lines and characters some-
what similar on his stockings.? So, also, in the “ Chemical
Paint” case, the “‘ Cocoaine” case, the ‘ Hau de la Floride”
case, and many other instances that may be found in this book.
The intent is to deceive.
§ 613. Litigation not unduly encouraged. — Applications for
registration are frequently made with the idea of obtaining
thereby a primd facie title, as the basis of judicial proceedings.
It may be well worth the while of a capitalist to be enabled, by
the production of a certificate of registry, to throw the burden of
1 Rowley v. Houghton, 2 Brewster, 308.
2 Hine v. Lart, 10 Jur. 106.
474 LAW OF TRADE-MARKS.
proof upon an adverse party ; and by obtaining a preliminary
injunction founded thereon fetter, if not destroy, the business
of another. We will suppose that some article has a transient
popularity. The moment of demand must be seized. The
delay of a few months may be fatal to success; for fortunes
sometimes depend upon instantaneous action. The article is
known by a certain mark, and that mark is a name. That
name is the talisman that works prosperity. Whoever has the
sole right to stamp that magic symbol on his goods, wares,
merchandise, has the monopoly. An injunction is applied for.
The proof of registration affords strong presumptive evidence
of title. The provisional injunction is granted. Weeks, months,
perhaps years, must elapse before the controversy can be de-
termined upon its merits. In the mean time, the enjoined party
suffers irreparable injury. It matters little who shall eventu-
ally win the battle. Craft, insolence, and abundant pecuniary
means, will by that time have reaped the golden harvest. This
is not a fancy sketch. It has been exemplified in more than
one instance; and the Office has been cautioned thereby. The
moral responsibility of a want of due caution rests upon the
public officer. He is to guard against error, intentional or
innocent. He who is persuaded that he has a right may be
guilty of a mistake, and not of deceit.1 Whatever may be the
cause of a misstatement of facts, the legal result is the same:
the thing proposed cannot become a lawful trade-mark. Thus,
where it was alleged that the trade-mark consisted essentially
of the words “ Rip Van Winkle,” and a triangle enclosing the
applicant’s initials, and it was found that another house had
the words “ Rip Van Winkle” as a mark for the same class of
merchandise, the application was rejected.2. The imitation was
only in part, but was sufficient to cause confusion, and likely to
provoke litigation.
1 Nemo videtur dolo exequi, qui ignorat causam cur non debeat petere. Dig.
56, 17, 177.
2 Case of Fechheimer & Workum, ex parte, 1872.
\
PRACTICE IN PATENT OFFICE. 4°75
§ 614. Surrender and Reissue cannot, in strict parlance, be
said to be applicable to a trade-mark case. But it sometimes
happens that errors creep into certificates, or application-pa-
pers. If the error is on the part of the Office, the party can-
not be prejudiced thereby; and the correction will be made
without cost to the applicant.? If, after a party obtain regis-
tration of a trade-mark, he discover that the certificate of
registry is inoperative,-or invalid by reason of a defective or
insufficient statement or specification, or by reason of too
great a breadth of claim, which error has arisen by inad-
vertence, accident, or mistake, and without any fraudulent or
deceptive intention, he may be permitted to surrender his cer-
tificate, and obtain another. In one case of the kind the
mark consisted of an elaborate design, consisting of a cross,
crown, wreath, vines and bunches of grapes, and a number of
words. In the centre were the words “ Sazerac de Forge &
Sons.” The two latter words should have been in French, —
“ et Fils.’ This was a mere clerical error. The holders of
the certificate filed a new application, paid the full fee, and
asked for a new certificate. The Office suggested that the
original certificate should be surrendered. That being done,
the amended case was registered.
§ 615. Money paid as Fee, when returnable. —It is provided
by statute, “That the Treasurer of the United States is au-
thorized to pay back any sums of money to any person who
shall have paid the same into the Treasury, or to any re-
ceiver or depositary, to the credit of the Treasurer, as for fees
accruing at the Patent Office, through mistake, certificate
thereof being made to said Treasurer by the Commissioner
of Patents ;”* but a mere change of purpose, after: the pay-
1 Phelps v. Brown, 1 Fisher, 479.
2 Case of James Cochrane, Commissioner’s Decisions, 1869, p. 60, and case
of Havemeyer et als., ibid., 1870, p. 5.
8 Ives, Beecher, & Co., No. 547.
4 Sec. 71 of An Act to revise, &c., the statutes relating to patents and copy-
rights, of July 8, 1870.
476 LAW OF TRADE-MARKS.
ment of money, will not entitle a party to demand such a
return.’
§ 616. The money must actually have been paid through
mistake, to authorize a return. In any case, where the Office
had no jurisdiction of the subject-matter filed, such return
will be made; as, for example, where a non-trading corpora-
tion filed an application for the registration of a mark, which
was therefore not a trade-mark, in contemplation of law, the
money was returned. So, in a case where an applicant trans-
mitted a fee which he desired to be applied for copyrighting a
picture, which matter is solely within the cognizance of the
Librarian of Congress. But when the Office has undoubted
jurisdiction of the class to which the case belongs, the fee will
have been earned the moment of the first action by an officer.
The Government does not undertake to warrant a valid title,
or any title at all. The party is presumed to know the true
state of facts, as well as the law, before he applies for registra-
tion. If his application is rejected for any cause, the money
paid will be retained, by way of costs.
1 No, 111, Rules of Practice of Patent Office.
INTERFERENCES IN PATENT OFFICE. ATT
CHAPTER XIV.
INTERFERENCES IN PATENT OFFICE.
Skill demanded. — Definition. —In what Cases declared. — Preliminary. — Dec-
laration and Dissolution. — Notice. — Grounds for declaring. — Compulsory
Testimony. — Access to Testimony filed. — Printed Copies of Testimony. —
Postponement. — Information in pending Cases.— Sources of Evidence.
— Rules for taking and transmitting Testimony. — Case closed. — Hearing. —
Appeal. — Practice exemplified. —‘‘ Durham” Case. — Decision of Exam-
iner. — Of Commissioner. — Of Court. — “ Bouquet” Case. — Multiplicity
of Legal Questions. — “‘ Paul Jones” Case.
§ 617. Interferences frequently demand the most skilful
management, and bring into requisition all the acumen and
learning of the ablest lawyers, so far, at least, as regards the
taking of testimony, and the application of the rules of evi-
dence. This presupposes an intimate acquaintance with the
law of the case in hand.
§ 618. The matter must be as carefully conducted as
though it were pending in a court of equity ; indeed, the prac-
tice is moulded upon that of such a tribunal. As in contro-
versies in courts, substantial rights may be frittered away by
an inartificial mode of procedure; by a failure to evoke
evidence of material facts, owing to a slovenly mode of exam-
ining witnesses ; or by such irregularities in practice as are
* beyond toleration when the interests of another party are at
stake.
§ 619. True it is that the Office earnestly strains after the
furtherance of justice ; but to this — as to all worthy endeavors
elsewhere — there is practically a limit; and litigants must
generally be left to rest as best they may upon the beds made
478 LAW OF TRADE-MARKS.
by themselves. An issue is joined, testimony is taken, objec-
tions and points are made, arguments are heard, and the Office -
decides upon the whole matter as presented. Leading and
other improper questions and the answers to them are ruled
out, and, may-be, whole depositions are eliminated for want of
proper care having been given; for manifest lack of good-faith ;
or for some other fault, although it may be the result of sheer
ignorance or carelessness. In case of surprise, relief will be
given to an innocent party. Thus, upon a motion to reopen
an interference in order to receive testimony which had been
delayed until after the day of hearing by the fault of the officer
before whom it had been taken, the decision of the Examiner
was suspended, and the case set for immediate hearing upon
the testimony and arguments by that time in. But after one
party had filed his preliminary statement and taken his testi-
mony, the Commissioner refused to open the case and allow
the other party to file a preliminary statement and take testi-
mony, where, although not originally a party, it appeared that
he had had knowledge of the pendency of the interference, and
the proceedings under it.”
§ 620. It may here be remarked, that seeming mere irregu-
larities are sometimes the manifestations of subtlety and craft
of tricky practitioners. Their object is to discover the weakness
of the adversary, and then by feigned surprise, or plausible
excuse, obtain permission to take additional testimony. Such
persons can usually find witnesses to supply all deficiencies
in the evidence. When such a motive becomes apparent, the
Office is sometimes called upon to exercise some ingenuity to
circumvent villany, for rogues like them care little for frowns
of indignation.
§ 621. An Interference is defined to be an interlocutory pro-
ceeding for the purpose of determining which of two or more
persons, each or either of whom claims to be the first adoptor
1 Hayden v. Phillips, Commissioner’s Decisions of 1870, p. 171.
2 Aldrich et al. v. Bingham, id. p. 90.
INTERFERENCES IN PATENT OFFICE. 479
of a trade-mark, really did first adopt it. It may also be re-
sorted to for the purpose of procuring evidence of an alleged
abandonment of the mark in controversy.
§ 622. It will be declared in the following cases: First. When
the parties have pending applications before the Office at the
same time, both or all of the parties claiming priority of title
to the same mark, — or one substantially the same, — used to
indicate the same class of merchandise. Second. When an
applicant — having been rejected upon a previously-registered
trade-mark — claims an older subsisting title.
§ 623. Under the rule as to an older subsisting title, this
case may arise, and may as well as not be anticipated in this
place. A. may have in good-faith registered his mark, sup-
posing that no one else in the world had appropriated it for the
same purpose ; and as a fact it may be that no other person
had any right to ask for registration, when A. made his appli-
cation. He then stood alone before the Office, with a primd
facie case, at least. If any other person had a better right to
the thing, that right was not made manifest. Accordingly, his
claim is admitted, and a certificate of registry duly issued.
We concede that A. was the only person who had a legal right
to registry. By virtue of a treaty subsequently made with
some foreign country, B. comes in and demands that his trade-
mark be registered in pursuance of the treaty stipulations. His
proof is clear that he had adopted the mark long before A.
What is to be done? A. acted in ignorance of B.’s right, and
in perfect honesty. To deprive him of the exclusive right to
the use of his symbol of trade may do him irreparable injury.
He was diligent ; he was truthful. At the time of registration,
he was the only person in the world who had any standing
before the Office.
§ 624. The solution of the question is easy to him who has
studied the principles upon which rest the laws of a right to a
trade-mark. The question thus far presented is one of regis-
tration. We must pass that by, and come to the real ques-
480 LAW OF TRADE-MARES.
tion, — Who had the prior right to the use of the mark? If it
were a claim to letters-patent for an invention, or to a copy-
right, the junior applicant might well be refused relief; for
patents and copyrights are the creatures of arbitrary law, and,
the courts say, have no foundation in nature. But not so ina
matter of property in the conventional symbol that is the sub-
stitute fora man’s name. That is founded upon immutable
law, as we have before seen. Such being the case, B.’s priority
of right must prevail; and for this reason: It was not his right
but his remedy which was in abeyance. The treaty which
demolished the partition-walls admitted him to all the privileges
of the most-favored persons. But then he ousted another from
a vested right? No: it was only an apparent right; for if
the Patent Office had had any knowledge that any one else in
any country had an older title, the application for registration
would have been refused. B. had all the time a perfect com-
mon-law right, and could have sued in our courts as an alien
friend, without the slightest regard to the matter of treaty or
convention. — We could readily imagine other cases just as
curious, and yet within the limits of probability. A. might,
for instance, set up that, even if B. had once had a title to
exclusive use, he had abandoned all right to the same; and
that thereupon he, A., was the first to appropriate it to his sole
use. B. having established his claim, the next step is to issue
to him a letter of registry. That will be to have two outstand-
ing titles to the same property at once. Yes, until a court shall
have enjoined one from the use of the symbol, or the wrong-
doer shall have voluntarily relinquished all claim to it. The
Commissioner has no power to cancel a certificate of registra-
tion already issued ; for that is a matter for judicial cognizance
upon a suit to be brought by the Government, either in its own
name or the name of the Attorney-General; or by some form
of proceeding which can give official assurance of the sanction
of the proper authority.1_ But the Commissioner may, if he find
1 Mowry v. Whitney, Sup. Ct. U.S., April, 1872: Official Gazette of Patent
Office, May, 1872.
INTERFERENCES IN PATENT OFFICE. 481
that another was the prior adoptor, give him also a certificate
of registry ; and thus place both parties on the same footing
before the courts and the public. His authority for so doing
is found in the proviso to the 79th section of the trade-mark
law of July 8, 1870.
§ 625. Preliminary Interference. — Before the declaration of
an interference proper, a preliminary interference will be de-
clared. Jn that, each party will be required to file a state-
ment under oath, giving a detailed history of the circum-
stances of his adoption of the mark; the extent and manner
of application to merchandise ; and the particular description
of goods to which it was by him affixed; and giving, so far as
practicable, the exact date of each step in the act of appropria-
tion. This statement must be sealed up before filing (to be
opened by the Trade-mark Examiner only); and the name of
the party filing it, and the subject-matter of the case, must be
indicated on the envelope.
§ 626. As just intimated, the real point sought to be evolved
is the exact time of adoption ; and, as circumstances, the man-
ner of application, place of adoption, and the class and species
of vendible articles to which it was applied. It should also
appear who made the original appropriation, whether the claim-
ant or some one from whom he derived title; and if done
through an agent, that fact should be stated. The case of
Schrauder v. Beresford § Co., hereinafter given, shows the
importance of a circumstantial detail of facts, and especially
the necessity for setting forth the exact date of placing the
symbol upon goods offered for sale.
§ 627. The statute requires that the length of time, if any,
during which the trade-mark has been used shall be stated in
the application; and the statement is generally conclusive -
against the affirmant in any subsequent proceeding; for it
would not be just to allow him to fix a date under oath, and
afterwards, when another claimed a prior title, to come in and
alter the date so as to anticipate his opponent’s title. In one
81
482 LAW OF TRADE-MARKS.
ease,! the Commissioner held that such preliminary statement
should always be regarded as conclusive against the party
making it, restricting him to the date, and substantially to the
history therein set forth, while, by a well-known rule of law, it
can never be used as evidence against the adverse party in
interference ; and in another case, it was said that if testi-
mony, taken upon an interference, tends to set up an earlier
date than was claimed in the preliminary statement of the
same party, it must, at least, be viewed with grave suspicion.”
The stringency of this rule is sometimes relaxed, upon over-
whelming evidence of unintentional error, and of perfect good
faith ; although, of course, the presumption is always against
him who would attempt to vary a statement made under the
solemnity of an oath. In a patent case, the Commissioner
said: “ The object of the preliminary statement is to serve asa
pleading, in which each party, in ignorance of his opponent’s
case, sets forth the history and date of his own invention.
This he must know better than any one else, and he will be
held to make a full and accurate disclosure, without evasion
or reservation. He must distinctly state the date which he
proposes to prove as that of invention, and he must set forth
the substantive act of invention, upon which he proposes to
rely. ...Itis proposed to put an end to the practice which, it
is to be feared, has prevailed to too great an extent, of striv-
ing on each side to learn an opponent’s date of invention, only
to manufacture such proof as may be necessary to fix an ear-
lier date.” Yet cases do sometimes arise when this rule
cannot, in accordance with justice, be enforced to its fullest
extent ; as, for example, where, in one instance not reported in
print, the evidence was clear that by unavoidable mistake the
date was incorrectly stated, one numeral having been mistaken
for another in transcribing. Even in such a case, the evidence
of good-faith must be beyond reasonable doubt.
1 Kenyon v. Wesson, Commissioner’s Decisions, 1871, p. 91.
2 Tegmeyer v. Kerns, id. p. 285.
3 Schenck v. Rider, id. p. 185.
INTERFERENCES IN PATENT OFFICE. 483
§ 628. The oath should be made by the party himself, unless,
as may occur, he be not the most cognizant of the facts.
One may be able to state that he adopted a mark for his mer-
chandise, without being able to fix the exact date of the con-
summation of his intention, — that is, the actual stamping or
otherwise marking of his goods; for he may possibly have acted
through an agent at a distance from him. By virtue of the
maxim, Qui facit per alium, facit per se, the physical act of
his agent would enure to his (the principal’s) benefit, though
the one were at the moment in Boston, and the other in San
Francisco. In making the oath to the preliminary statement,
as in any other case of litigation, of course the best available
evidence should be advanced.
§ 629. The preliminary statements are not open to the
inspection of the opposing parties until both shall have been
filed, or until the time for filing both shall have expired; nor
then, until they shall have been inspected by the Examiner of
Trade-marks, and are found to be sufficiently definite as re-
gards the declaration of dates.
§ 630. If the party upon whom rests the burden of proof
fail to file a preliminary statement, or if his statement fail to
overcome the primd facie case made by the respective dates of
application, or if it show that he has abandoned his alleged
trade-mark, the other party will be entitled to an immediate
adjudication of the case upon the record; unless a presump-
tion arise that his claim of right to registration is affected by a
dedication of his mark to the public, in which case the inter-
ference may be proceeded with. Although the statement of
one party may admit his lack of title to exclusive use of the
mark in dispute, he may be prepared to prove the same lack of
title in his opponent.
§ 631. If the earlier applicant fail to file a preliminary
statement, no testimony will subsequently be received from
him tending to prove that he adopted the mark at a time prior
to that fixed in his application. The preliminary statement
484 LAW OF TRADE-MARKS
can in no case be used as evidence on behalf of the party mak-
ing it. Its use is to determine whether the interference shall
be proceeded with, and to serve as a basis of cross-examina-
tion by the other party.
§ 682. If either party require a postponement of the time
for filing the preliminary statement, he must present to the
Examiner his reasons therefor, in the form of an affidavit, and
prior to the day previously set.
§ 638. Declaration and Dissolution. — An interference will
not be declared until the subject-matter involved is decided
to be registerable; and, when once declared, it will not be
dissolved without judgment of priority, unless it be found
that neither party is entitled to a certificate of registry, or that
no interference in fact exists. And at whatever stage it is
ascertained that there is no conflict between the claims of the
parties, it will be dissolved, whether before the Examiner or
the Commissioner; for to continue it would be a waste of time,
and would avail nothing.’ Thus it will be dissolved, ipso facto,
by the withdrawal of one of the parties;? or it will be dis-
solved upon one of the parties striking out from his specifica-
tion the only element of conflict;® or it be found that the
registration of one will be no bar to the other.4
§ 634. Judgment based upon Concession of Priority will not be
given unless such concession be evidenced by a writing, under
the signature of the party himself. If there have been an as-
signment of the trade-mark, the assignee must join in the con-
cession, although not a nominal party. The withdrawal of one
party does not entitle the other to a decision in his favor on the
question of priority ;° for it may be that his withdrawal is by
way of nonsuit, with an intention to renew the contest when
better prepared ; or it may be by collusion, when neither party
has any right.
1 Jenkins et al. v. Putnam, Commissioner’s Decisions, 1870, p. 156.
2 Eames & Sealey v. McDougal, id. 1871, p. 206.
3 Hawkins v. Lambert, id. 278. 4 Jackson v. Nichols, id. 278.
5 Hames & Sealey v. McDougal, supra.
INTERFERENCES IN PATENT OFFICE. 485
§ 635. Notice to Parties. — When an interference is declared,
notice will be given to both parties, or to their attorneys.
When one of the parties has received a certificate of registry,
duplicate notices will be sent to him and to his attorney of
record. Where one of the parties resides abroad, and has no
known agent in the United States, in addition to the notice
sent by mail, notice may be given by publication in a news-
paper of general circulation in Washington, D. C., once in a
week for three successive weeks.
§ 636. If there be more than two parties, the times for tak-
ing testimony shall be so arranged, if practicable, that each
shall have an opportunity for so doing in his turn, each being
held to go forward and prove his case against those who shall
have filed their applications before him.
§ 637. As the parties are to prove the facts by the adduction
of evidence before the Examiner, and have, consequently, to
provide themselves with the proper documentary or other testi-
mony, it is essential that they should each be apprised of the
specific nature of the question to be tried, for the guidance of
the parties in preparing their proof. The notice of interference
sent by the Office to the parties states the point in issue. For
example, in a complex mark there may be one prominent ele-
ment, as in the “ Paul Jones” case, hereinafter given, where
that name of a naval hero was really the whole case, although
it was displayed upon a flag flying on a ship under full sail.
The parties entered into the contest with the knowledge of
that name being the only material point of inquiry.
§ 638. Grounds of Interference. — Marks do not conflict unless
they are identical in form, or have such a near resemblance to
each other that the public may confound them, and thus pur-
chase the goods of one man when intending to obtain those
of- the other. Although there may be some points of resem-
blance, that will not warrant the declaration of an interference,
unless confusion be likely toensue. Take the following case as
an illustration. One person obtained a certificate of registry
486 LAW OF TRADE-MARKS.
(No. 709, March 19, 1872) for a trade-mark for shirts, drawers,
&c., which mark was described as consisting of “a balance, a
shield, and the word ‘ CenreNNIAL’ arranged as shown, num-
bers designating the size and quality of the goods being, if
desired, marked upon the shield.” Other persons, composing
a partnership, subsequently obtained a certificate (No. 809, May
7, 1872) for a trade-mark, for substantially the same class of
merchandise. The mark of the latter was described as consist-
ing of the word “ CENTENNIAL,” which word was alleged to be
generally arranged as shown in the label filed, the central or
middle part being covered by a pictorial representation of the
Declaration of Independence, within a wreath, which wreath
is held and crowned by the American eagle, below which is a
character symbolical of the word “ Centenniau.” The word
‘¢ CENTENNIAL”’ alone constitutes the mark, all the remainder
being dispensed with at pleasure. Counsel for the earlier
party, on becoming apprised of the second case, made this
point: That the record showed sufficient grounds for the dec-
laration of an interference, and that the later adoptors had no
right to appropriate a word which was one of the essential
elements of the trade-mark of the other claimant; and it was
suggested that the latter, who was the prior adoptor, was pre-
pared to discard all the other elements of his mark, and confine
his claim to the one word. The Examiner held that the speci-
fications on file were the eriterta of action; and that as they
did not disclose any conflict of claims, inasmuch as the two
things were so dissimilar that they were not calculated to
deceive, it was not a proper case for an interference. If the
prior applicant limited himself to the use of the word in com-
bination with other things, it was his misfortune. Thus the
junior applicants were left with a broad claim to the word
_“ CENTENNIAL,” which they might use in combination or not,
at pleasure. Thereupon, for the purpose of obtaining an adju-
dication on the question of priority of adoption, the senior reg-
istrant filed a new application, in which he claimed the word
INTERFERENCES IN PATENT ,OFFICE. 487
“‘ Centennial” as the essence of his trade-mark. That proceed-
ing raised a simple question of fact, to be decided upon an
interference trial.
§ 639. Compulsory Testimony. — Previously to the passage of
the Act of Congress of March 2, 1861, it was within the option
of witnesses to give their testimony or not, so that there were
frequent failures of justice. That Act provides, “ That the
Clerk of any court of the United States for any district or
Territory wherein testimony is to be taken for use in any con-
tested case pending in the Patent Office, shall, upon the appli-
cation of any party thereto, or his agent or attorney, issue a
~ subpeena for any witness residing or being within said district
or Territory, commanding him to appear and testify before any
officer in said district or Territory authorized to take deposi-
tions or affidavits, at any time and place in the subpena
stated; and if any witness, after being duly served with such
subpeena, shall neglect or refuse to appear, or, after appearing,
shall refuse to testify, the judge of the court whose clerk
issued the subpcena may, on proof of such neglect or refusal,
enforce obedience to the process, or punish the disobedience as
in other like cases.””? The Act further provides that the wit-
nesses shall be allowed the same fees as are allowed to wit-
nesses attending the courts of the United States; and they are
not compelled to attend at any place more than forty miles
from the place where the subpcena is served, unless the fees
are paid or tendered in advance. As parties in interest are
competent witnesses in the Patent Office, as in the Federal
Courts, they may testify upon deposition on their own behalf ;
but whether they are intended to be included within the pro-
visions of the section above quoted is a disputed point. As a
fact, however, it may be stated that in practice in interference
cases, a party has been compelled to appear and testify against
his own interest; and it is equally true that parties generally
do not contest the matter, but prefer to testify.
1 Sternberger v. Thalheimer & Hirsch, Nov. 1872.
2 Re-enacted as sec. 44 of the Patent Act of July 8, 1870.
488 LAW OF TRADE-MARES.
§ 640. Parties have Access to Testimony on file prior to the
hearing, in presence of the officer in charge ; and copies may
be obtained by them at the usual rates.
§ 641. Printed Copies of the testimony greatly facilitate the
examination of cases; and they are required in all cases when
the testimony is written otherwise than in a fair and legible
hand?
§ 642. Postponements.—If it become necessary for either
party to have the time for taking his testimony, or for the hear-
ing, postponed, he must make application to the Trade-mark
Examiner for such postponement, and must show sufficient
reason for it by affidavit filed before the time previously ap-
pointed has elapsed, if practicable; and must also furnish his
opponent with copies of his affidavits and with reasonable
notice of the time of hearing his motion.
§ 643. A motion to open an interference for a rehearing, after
a decision swb silentio, will be refused where there has been
gross negligence in preparing for it. There is a case® where,
four months after the decision had been made, and after fre-
quent allowances of additional time, the party had the cool
assurance to ask for a still further opportunity. His motion
was denied. Up to that time he had taken no proof, offered no
affidavit except his own to show what proof he desired to offer,
or that any evidence did exist; and his own affidavits gave no
details, but were most general in their statements. The Office
regarded his persistent waste of time as intended simply for
delay, although he made affidavit to the contrary. This is an
extreme case; for it is seldom that repeated postponements
would be countenanced, unless by the consent of the adverse
party.
§ 644. Information in Relation to Pending Cases is given so far
as it becomes necessary in conducting the business of the Office,
but no further. Thus, where an interference is declared be-
1 Rule 118. 2 Thid.
3 Covel v. Maxim et at., Commissioner’s Decisions, 1869, p. 78.
INTERFERENCES IN PATENT OFFICE. 489
tween two pending applications, each of the contestants is en-
titled to a knowledge of so much of his opponent’s case as to
enable him to conduct his own understandingly.!
§ 645. Sources of Evidence.— As in equity cases, these are
principally four. First. The intelligence of the tribunal, or
the notice which it judicially takes of certain things, and the
things which it presumes; secondly. The admissions of the
parties, contained in their specifications and statements, which
serve as pleadings; thirdly. Documents; and, fourthly. The
testimony of witnesses.
§ 646. As arule, the parties may by written consent make
almost any thing evidence, unless the effect would be injurious
to the public; as, for example, the admission that one of the
parties has a good title when the contrary is clear. No such
admission of an adversary would be deemed sufficient to warrant
the issue of a certificate of registration where the Office had
judicial cognizance of the untruth of the admission; for not
only is the case to be decided upon the issue joined by the par-
ties, but the interests of the community at large are to be looked
after.2. The law of evidence as settled by the courts is used in
the matter of interferences, so far as applicable. Official papers ;
the precise state of our relations with a foreign government; the
dates of public events, such as proclamations of war and peace,
which may affect the forensic privileges of parties; treaties, and
conventions with foreign powers, — will all be judicially recog-
nized. The principal source of evidence is the testimony of
witnesses taken upon deposition. The rules of practice of the
Patent Office prescribes the regulations for taking and transmit-
ting testimony in an interference case, viz. : —
Before the deposition of a witness or witnesses is taken by either
party, due notice shall be given to the opposite party, as hereinafter pro-
vided, of the time and place when and where such deposition or depositions
will be taken, with the names and residences of the witness or witnesses then
and there to be examined, so that the opposite party, either in person or by
attorney, shall have full opportunity to cross-examine the witness or wit-
1 Rule 128. 2 See sec. 79, Act of July 8, 1870.
490 LAW OF TRADE-MARKS.
nesses: Provided, That if the opposite party, or his counsel, be actually
present at the taking of testimony, witnesses not named in the notice may be
examined, but not otherwise; and that neither party shall take testimony in
more than one place at the same time, nor so nearly at the same time as not
to allow reasonable time to travel from one place of examination to the
other.
The notice for taking testimony must be served by delivering a copy to
the adverse party, or his agent or attorney of record or counsel, as provided
in Rule 77,' or by leaving a copy at the party’s usual place of residence with
somé member of the family who has arrived at the years of discretion; and
such notice shall, with proof of service of the same, and a certificate, duly
sworn to, giving the manner and time of making the service,” be attached to
the deposition or depositions, whether the party cross-examine or not.
The magistrate before whom the deposition is taken must append thereto
his certificate, stating the time and place at which it was taken, the name of
the witness, the administration of the oath, at whose request the testimony
was taken, the occasion upon which it is intended to be used, the names of
the adverse party (if any), and whether they were present; and immediately
upon the close of the examination he shall securely seal up all the evidence.
&e., and forward the same forthwith to the Commissioner of Patents, making
upon the envelope a certificate, giving the title of the case and the date of
sealing and addressing the package.
If either party shall be unable, for good and sufficient reasons, to procure
the testimony of a witness or witnesses within the stipulated time, it shall be
the duty of said party to give notice of the same to the Commissioner of
Patents, accompanied by statements under oath of the cause of such inability,
and of the names of such witnesses, and of the facts expected to be proved by
them, and of the steps which have been taken to procure said testimony, and
of the time or times when efforts have been made to procure it; which notice
to the Commissioner shall be received by him previous to the day of hearing
aforesaid. Copies of the papers, and notice of any motion based upon them,
must also be served upon the opposite party, as provided in rule 50. [This
provides that reasonable notice of all motions, and copies of the motion pa-
pers and affidavits, must be served upon the opposite party or his attorney.
Proof of such service must be made before the motion will be entertained by
the Office; and motions will not be heard in the absence of either party,
except upon default after due notice. Motions will be heard in the first
instance by the officer or tribunal before whom the particular case may be
pending; but an appeal from the decision rendered may be taken to the
Commissioner in person. ]
1 Rule 77 provides that if there be no attorney of record, the service of notice
may be made upon any attorney or agent who takes part in the service of notice,
or in the examination of witnesses of either party.
2 Notwithstanding this phraseology, an admission of service by the adverse
party or his agent, attorney, or counsel, duly appointed, will be deemed equiv-
alent to the sworn certificate. See form of proof of service in the Appendix.
INTERFERENCES IN PATENT OFFICE. 491
The official records of the Office, and other books and documents con-
tained in the library, may be used at the hearing; but notice of any special
matter contained therein, upon which a party relies, should be given to the
opposite party previous to the day set for closing testimony.
The folios of each deposition must be numbered consecutively, and the
name of the witness be plainly and conspicuously written at the top of each
folio. It is deemed desirable that the testimony be taken upon legal-cap
paper, with a wide margin on the left-hand side of the page, and that only
one side of the sheet be written upon.
The testimony may be taken in narrative form; but, if either party
desires it, it must be taken in answer to interrogatories, having the ques-
tions and answers committed to writing in their regular order by the magis-
trate, or, unless by consent, by some person not interested in the case,
either as a party thereto or as attorney. The deposition, when complete,
must be signed by the witness.
No evidence touching the matter at issue will be considered upon the day
of hearing which shall not have been taken and filed in compliance with these
rules; but no notice will be taken of any merely formal or technical ob-
jection which shall not appear to have wrought a substantial injury to the
party raising it; and in such case it should be made to appear that, as soon
as the party became aware of the objection, he immediately gave notice
thereof to the Office, and also to the opposite party, informing him at the
same time that, unless corrected, he shall urge his objection at the hearing.
§ 647. Case closed. — When no testimony shall have been
taken by the party upon whom rests the burden of proof, or
when testimony shall have been taken by such applicant, but
not by the other party during the time assigned to him, the
case will be considered to be closed; and, upon motion duly
made before the Examiner at the expiration of the time assigned
to the parties respectively, it may be set for hearing at any time
not less than ten days thereafter.
§ 648. Hearings. — All interference cases pending before the
Commissioner on appeal, or before the Examiner of Trade-
marks, will stand for argument at one o’clock on the day of
hearing, unless some other hour be specially designated. If
either party then appear, he will be heard; but a contested
case will not be taken up for oral argument after the day of
hearing, except by consent of both parties. If the engagements
of the tribunal before whom the case is pending are such as to
prevent it from being taken up on the day of hearing, a new
492 LAW OF TRADE-MARKS.
assignment will be made, or the case will be continued from
day to day until heard. Unless otherwise ordered before the
hearing begins, oral arguments will be limited to one hour for
each counsel.?
§ 649. Appeals. — In cases of interference, appeals pro formé
may be taken to the Commissioner in person, and without the
payment of an appeal-fee. The appeal must be accompanied
by a brief statement of the reason therefor; and both parties
will be required to file briefs of their argument at least five
days before the hearing. Printed briefs are in all cases pre-
ferred, the practice of courts being followed in the citation of
cases and making of points.
§ 650. It is not unusual in such appeals for the parties to
file voluminous abstracts of testimony, sometimes running to
the extent of thousands of pages. At least enough of the case
should be shown to meet the exact points in controversy, and
enable an intelligent understanding to be had of the facts. The
more caution should be observed, as in this class of cases the
decision of the Commissioner is final. In patent cases, a dis-
satisfied party may appeal to the Supreme Court of the District
of Columbia sitting im banc, but an interference is expressly
excepted by the law?
§ 651. The remarks of the court in a certain patent case,? in
regard to granting reissues, are also as applicable in matters
of interference: ‘The Commissioner is supposed to have all
the qualifications necessary to an intelligent decision of that
question, and there are strong reasons why his action should
be regarded as final. Such I understand to be the doctrine
of the Supreme Court of the United States, as announced in
numerous reported cases.” 4
§ 652. The practice in an interference case can best be ex-
1 This is in substance the provisions of rule 49 in patent cases, and is now
adapted to trade-mark interferences.
2 Sec. 48, Patent-Law Act of July 8, 1870.
3 Whitely v. Swain, 4 Fisher, 128.
4 4 How. 404; 15 id. 52; 17 id. 84; Law’s Dig. 617.
INTERFERENCES IN PATENT OFFICE. 493
plained by taking the record of an actual controversy as to the
right to the exclusive use of a trade-mark. We will thus see
not only the formal part of the proceedings which characterize
“such a matter, but will also have a curious exhibition of the
contrarieties of the human mind, as shown in the ideas of
counsel and the opinions of judicial officers. It will, in addi-
tion, furnish a commentary upon the “ glorious uncertainty ” of
trade-mark law, when its settled principles are not rigidly ad-
hered to. It is, besides, offered in evidence of the necessity
which up to this time has existed, for some person who has
made it a special study to write a treatise on the subject.
§ 653. We will take, for example, the case of Lowis L. Arm-
istead v. William T. Blackwell. The applicant stands in the
position of plaintiff, as he attacks the title of Blackwell, who
had previously registered as a trade-mark the words “ DurHam
Smoxine Tosacco.” The Office having informed Armistead,
through his solicitor, that another party claimed priority of
title, both parties were required to file preliminary statements
by a certain day.
§ 654. Armistead answered by a sworn statement of his ver-
sion of the origin, &c., of the mark, partly from his own knowl-
edge, and partly upon information and belief, deducing his title
through one Wesley A. Wright, and taking it back to 1860.
Blackwell also filed his statement, setting forth that, in 1865,
one J. R. Green, from whom he claimed title, was engaged in
manufacturing tobacco in North Carolina at the time of the
approach of the armies of the United States under command of
General W. T. Sherman, and the retrograde movements of the
army of General Joseph E. Johnston, of the so-called Confed-
erate States, and in the vicinity of the town of Durham. That
when the armistice antecedent to the surrender of the army of
General Johnston was promulgated, the two armies occupied
positions adjacent to said town of Durham, and the town and
vicinity became common ground to each army ; that said Green
sold large quantities of smoking-tobacco to the soldiers; and
494 LAW OF TRADE-MARKS.
from the fact of the circumstances of the surrender at that
place, he believed that the name “ Durnam” would be popular.
He said that the word “ Durham ” was first applied to smoking-
tobacco in 1865.
§ 655. The preliminary statements conflicted as to the date
of the adoption of the word “ Durham” as a mark for tobacco,
and as to the ownership of the right to its exclusive use. The
controversy could not be determined without further action.
The statements furnished insufficient data for final judgment.
The preliminary interference was at an end.
§ 656. An interference proper was then declared, and due
notice served upon the parties, by mail. The notice was in the
form of an official letter from the Commissioner of Patents,
informing the parties that their claims to the exclusive use of
the mark were adjudged to interfere with each other, and that
a hearing would be granted them upon a certain day; that the
testimony of the applicant must be closed at a day fixed, and
that of the respondent at a later day; and that, at a still later
day, rebutting testimony, but no other, might be taken after the
closing of the testimony-in-chief. Ample time was given by
the Office, regard being had to the location of witnesses and
parties.
§ 657. The next step in the litigation was the taking of tes-
timony in behalf of the applicant, for he was obliged to prove
his case before his adversary could be called on to respond.
Due notice having been given, Armistead proceeded to take
depositions, the respondent appearing by counsel and cross-
examining. A similar course was then pursued by the other
side; just as if the cause were pending in a Circuit Court of
the United States. Then came the hearing, after which this
decision : —
INTERFERENCES IN PATENT OFFICE. 495
In the U. 8. Patent Office.
LOUIS L. ARMISTEAD, or Vircinia v. WILLIAM T. BLACKWELL,
or NortH Caro.ina.
Interference — Trade-mark.
Browne, Special Hxaminer :
This matter was brought on for argument before me, the un-
dersigned, on Monday, April 15, 1872, when it was elaborately
argued by A. H. & R. K. Evans for the applicant, and by
Cox & Cox for the respondent.
Voluminous testimony was filed and commented upon, it con-
sisting principally of the record of a suit in the Circuit Court of
the United States for the Western District of Virginia, between
the same parties, and involving substantially the same main
issue.
Before attempting to sift the testimony and apply the law,
it is necessary to have a clear conception of the exact point in
controversy.
Wherein consists the trade-mark in dispute ?
There are two theories on this subject. The applicant in-
sists that the essence is comprised in a single word, “Durham,”
used in conjunction with the words “ Smoking Tobacco.” By
referring to the specification of applicant, filed December 6,
1871, we find that those are the words claimed by him. In the
specification of the respondent, filed April 14, 1871, and regis-
tered October 3, 1871, we find that he describes his trade-mark
as consisting of the words “ Durham Smoking Tobacco, manu-
factured by W. T. Blackwell.”’ The bill in equity in the suit
above-mentioned, among other things, prays that the applicant
be restrained from using any trade-mark containing the word
“ Durham.”
What is the essential part of the mark ?
It cannot be the words “ Smoking Tobacco.” for such names
496 LAW OF TRADE-MARKS.
in common use cannot be appropriated. The rule upon the
subject of generic words, or words denoting quality, is so uni-
versally settled and acquiesced in, that authorities need not be
cited in support thereof. Nor can the words “ Manufactured
by W. T. Blackwell,” for such language is in the nature ofa
mere advertisement, and cannot, by any possibility, be deemed
to constitute any part of the symbol known to commerce as a
trade-mark. (See Falkenburg v. Lucy, in the Supreme Court
of California, 35 Cal. 521; and also the Leather Cloth Co. v.
The American Leather Cloth Co., in the House of Lords, 11
Jur. (N.s.) 513.) Therefore the proposition that the applicant
has simulated the trade-mark of the respondent by a part-im-
itation cannot be entertained. The whole, if any part, of the
lawful mark has been pirated. If any word in Blackwell’s’ reg-
istered mark possesses the essential attributes of the symbol
known to commerce as a trade-mark, that word is ‘“‘ Durham.”
But the respondent’s counsel, in their first point, deny that
by any possibility this word can be a trade-mark, and say it is
liable to almost every objection that can be suggested. In
support of this idea, they cite the recent case of The Delaware
and Hudson Canal Co. v. Clark, in the Supreme Court of the
United States. (Official Gazette, 1872, p. 279.)
Let us pause and consider the position of the respondent.
“ Durham” being the only word that can possibly be deemed
essential in this case, how stands Blackwell if it cannot be
supported as such? Lis objection is a two-edged sword. If
one fails upon that point, so must the other.
What did the case cited by respondent’s counsel decide? It
simply reaffirmed the doctrine of the Brooklyn White Lead Co.
v. Masury (25 Barb. 416). When two or more persons manu-
factured white lead in the city of Brooklyn, each had the right
to describe: his product as Brooklyn white lead. The exact
point which turned that case against the defendant was this:
he had fraudulently assumed the word “ Company ” or “ Co.”
for the purpose of diverting the plaintiff’s trade. It was purely
INTERFERENCES IN PATENT OFFICE. 497
an instance of unfair competition in business. Careful analysis
will demonstrate that it was not a trade-mark case, notwith-
standing the fact that it is ofttimes referred to as such. In
the case against Clark, above cited, known as the Lackawanna
coal case, the court held that the name of a region of country
cannot be appropriated to the exclusion of others who produce
or who sell a similar article coming from the same region ;
therefore, as the complainants are not the sole owners of the
coal-mining district of the Lackawanna, they have no exclusive
right to the use of the words “ Lackawanna Coal.”
The same counsel also cited Mewman v. Alvord (49 Barb.
588). In that case the court substantially concedes that the
plaintiffs, by their prior appropriation of the name of the town
of Akron, in connection with the words cement and lime, ac-
quired no exclusive right to its use as against any one who
could use it with equal truth. A careful examination of that
case will disclose the fact that it was not strictly a case which
involved a technical trade-mark; for to be a trade-mark, the
right to its use must be exclusive. A laborious perusal of pub-
lished authorities has failed to produce an instance of any court
of any country admitting the possibility of the existence of a
“neighborhood trade-mark.’ For our present purpose it is
sufficient to refer to sec. 77 of the Act of Congress of July 8,
1870, in regard to trade-marks, which promises protection only
to the person entitled to the exclusive use of any lawful trade-
mark. ;
Therefore it is perfectly clear that if the word “ Durham” is
used for the purpose of indicating to the public that the mer-
chandise to which it is affixed is manufactured or sold at a
place called Durham, it is not what the law recognizes as a
trade-mark ; but it comes within the principle of Falkenburg.y.
Lucy, and the Leather Company case, above cited, and is a
mere advertisement. Now comes an important question:
Did the applicant use the said word “ Durham” as the name
of a locality ?
82
498 LAW OF TRADE-MARKS.
In an ordinary case of litigation, it would be sufficient to
reply that the party making an objection is estopped by his
admissions upon the record. If the objection were tenable,
then this interference should be dissolved, for neither party
would have any standing before this tribunal. But it is neces-
sary to proceed further, for this reason: By section 79 of the
Trade-mark Act of 1870, the Commissioner of Patents is pro-
hibited from recording any proposed trade-mark which is not
and cannot become a lawful trade-mark. This section confers
judicial functions, at least to the extent of inquiring into the
legality of every proposed trade-mark offered for registration,
ex parte or otherwise.
This matter cannot be decided upon any thing in the nature of
pleadings, or upon concessions. Consent cannot give jurisdic-
tion. The applicant must not only have as good a right as any
one else, but his right must be perfect. He must succeed, if at
ali, by his own strength, and not by the weakness of his adver-
sary. If the Office erred in granting registration to Blackwell,
that is no reason why it should repeat the error for the purpose
of placing the parties upon the same footing before the courts, as
one of the counsel suggested. Even if the Office should refuse
registration, the rejected party might still fall back upon the
common law, as a party litigant. This brings us back to the
consideration of the question as to the meaning of the word
“ Durham,” as used.
If the word is used in its geographical sense, it means but
one place: a village in North Carolina. That is expressly
conceded by both parties, and is warranted by the evidence.
It was at a place bearing that name, or one nearly like it, that
the applicant or his assignor commenced business as a manu-
facturer of smoking-tobacco, so long ago as 1859 or 1860. It
is there that the respondent alleges that he now carries on the
same kind of business. It is there that a number of wituesses
reside and manufacture tobacco. We have not the slightest
suggestion that any other place named “ Durham” is meant.
INTERFERENCES IN PATENT OFFICE. 499
Tt is true that several towns in the United States have that
name; but they are excluded from consideration in this case,
as the name means a place in North Carolina, if any thing.
Is there such a place as Durham in North Carolina? We
would be left in some doubt upon this point if we depended
entirely upon the language of the witnesses. Some of them
speak of “ Durham; ” some of “ Durham’s;” some of “ Duar-
hams,” and some of * Durham’s Station.” Which is correct ?
We turn to the official list of post-offices, and find that it is
spelled Durham’s; the apostrophe probably signifying, ellipti-
cally, Durham’s Station. We finally hesitate to take judicial
notice of the fact, and ask for the official certificate of the
Acting First Assistant Postmaster-General, on file as an exhibit
in this case. This is dated March 25,1872. It says: ‘On
examining the records of the Department it is ascertained that
there is a post-office in Orange county, North Carolina, by the
name of Durham’s, and that Presly J. Mangum is the present
postmaster,” &c. That settles the question. The name is
“ Durham’s.”
The word “ Durham,” as used by both parties, is not so
used to indicate any locality. We may reasonably so infer.
The Office has virtually so ruled in granting registration to
Blackwell. The evidence on file abundantly proves it. On
the part of Blackwell and his predecessors, a representation
of a Durham-bull was, and still is, used in connection with
the word “ Durham.” What is it used for? The evidence
overwhelmingly shows, that it is used to indicate to the public
that the tobacco having that name had a peculiar excellence.
That indication may be true, or it may not. The purchaser
asks for the “ Durham ” brand, because it is his choice. Wit-
nesses swear that it has a peculiar flavor, and say that ever
since 1860 it has been known and used as a superior kind of
manufacture. It would be idle to doubt that the article has
agreeable properties, from the manner in which the tobacco
is flavored with certain aromatic herbs, or- other ingredients.
500 LAW OF TRADE-MARKS.
It is not pretended by auy one that the tobacco is raised at
Durham’s Station; or that, if it were, that the soil of that lo-
cality possesses any peculiar properties to make tobacco grown
thereon better than any other. The witnesses swear that it is
the peculiar flavoring imparted by the tonqua-bean and other
ingredients. What ground is there for rational doubt? The
article manufactured in a particular manner is the thing
meant.
If that were not so, then all the tobacco-manufacturers at
Durham’s had a right to use the same name. But Blackwell
could not have so meant when he commenced to use the word
“Durham ;”’ for in his sworn statement, filed April 14, 1871,
in applying for registration, he positively sets forth ‘ that no
other person, firm, or corporation has a right to use said trade-
mark, or any one substantially the same, or one wherein or
whereon the word ‘ Durham’ is used in connection with the
words ‘ smoking-tobacco,’ upon any tobacco or package contain-
ing the same.” This is irrefragable evidence to show that he
did not then consider the word “ Durham ” as the mere name
of a place; for at Durham’s Station, at that very time, there
were a number of other independent manufacturers, all equally
entitled to use the name of their village as a geographical des-
ignation.
This does not concede, as law, that a geographical name can-
not be the subject-matter of a trade-mark. It generally can-
not be, for the reason given in the Lackawanna case. Mr.
Justice Strong, in delivering the opinion of the court in that
case, said: “Could such phrases as ‘Pennsylvania wheat,’
‘Kentucky hemp,’ ‘ Virginia tobacco,’ or ‘ Sea-Island cotton,’
be protected as trade-marks?” All have an equal right to use
those names when they truthfully indicate the goods to which
they are applied. But this rule has some exceptions. A word
which in one sense may be coincident with the proper designa-
tion of a region of country or a town, may be put to another
office. The leading authority on this point is the celebrated
INTERFERENCES IN PATENT OFFICE. 501
“ Anatolia” case, McAndrew v. Bassett (10 Jur. (n.8.) 550).
The Lord Chancellor therein said: ‘Iam told that this word
‘ Anatolia,’ being a general expression, — being in point of fact
the geographical designation of a whole country, — is a word
common to all, and that iy it, therefore, there can be no prop-
erty. 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 cannot exist, but prop-
erty in that word as applied by way of stamp upon the
liquorice does exist the moment the liquorice goes into the
market so stamped, and obtains acceptance and reputation
in the market, whereby the stamp gets currency as an indica-
tion of superior quality, or of some other circumstances that
render the article so stamped acceptable to the public.” The
Congress and Empire Spring Co. v. The High Rock Congress
Spring Co. (57 Barb. 525, and 4 Am. Law Times R. (St.)
168) affirm the same doctrine, “ Congress Spring” being
there held, under its peculiar circumstances, to be a perfectly
good trade-mark.
In France the same ruling has been made in the Tribunal
Civil of the Seine (Faivre v. Duguaire, Annales de la Propriété,
etc., tome viii. p. 238), where it was held that the words
“ Mount Carmel,” although a geographical name, was, as a
fancy designation, a good trade-mark. These rulings are all
consistent with reason, and harmonious with the current of
decisions.
We now come to the question of priority of adoption.
The testimony in the two hundred and twenty-nine pages of
the record has been sifted.
Blackwell’s witnesses furnish a considerable amount of nega-
tive testimony as to the time of the first use of the word by
any one asa trade-mark. They do not go further back than the
year 1865, when the predecessor of Blackwell commenced to
use it. If uncontradicted, their statements would be convinc-
ing, notwithstanding the fact which some of them disclose
502 LAW OF TRADE-MARKS.
that they are also manufacturers of smoking-tobacco, and are
interested in defeating Armistead. But the applicant brings
forward a large number of witnesses, whose statements over-
whelmingly establish the fact, beyond doubt, that the word
was used some years before 1865., Wright, the predecessor
of Armistead, swears that he used the word in 1860, and
continued to use it after he had removed his factory from
Durham’s, and until he entered the army (Rec., pp. 236, 237).
If faith should be placed in the oaths of apparently entirely
credible witnesses, then, beyond the shadow of a doubt, the
word was used in 1860, and ever since, to designate a peculiar
kind of tobacco.
What tobacco was that? It was a peculiarly-flavored smok-
ing-tobacco, which acquired its reputation so far back as 1860.
It was the smoking-tobacco that Wright made; substantially
that for which he subsequently obtained letters-patent. This
is not a mere inferential conclusion. It is fully corroborated
by the evidence.
The applicant, Armistead, deduces any title he may have to
the trade-mark from Wesley A. Wright, who at one time cer-
tainly did possess a certain trade-mark. That trade-mark was
affixed to a certain label containing a number of other words,
as “ Morris & Wright’s Best Spanish Flavored Durham Smok-
ing Tobacco,” or whatever the words may be. The counsel
for Blackwell argues that Armistead must take the whole
brand used by his predecessor or assignor, and that he cannot
change or vary it in the least.
That would be true if the whole brand or label were a trade-
mark, but the brand or label was but the vehicle of the mark
of commerce, that symbol which becomes associated with a
particular article of merchandise. We have seen that the
only essential element of the trade-mark is the word “ Dur-
ham.” When an exclusive title to that was once acquired, its
owner might use it as an isolated emblem, or he might com-
bine it as he pleased. The courts of all nations concur in this
doctrine. !
INTERFERENCES IN PATENT OFFICE. 508
Tt has also been suggested by the counsel that the word
“ Durham ” is insufficient as a mark, because it does not in-
dicate origin or ownership. That question is definitively set
at rest by the decision of the New York Court of Appeals in
Burnett v. Phalon (8 Keyes, 594), which held that the single
word “ Cocoaine”’ possessed all the essential elements of a com-
mon-law trade-mark.
CONCLUSION.
As facts I find —
First. That the firm of Wesley A. Wright, the assignor to
Louis L. Armistead, the applicant, was the first to adopt and
use a trade-mark, the essential element of which was the word
“Durham,” for smoking-tobacco.
Second. Thatthe word “ Durham” was not originally adopt-
ed as the distinctive name of a locality, or to denote that the
tobacco to which it was affixed by him was manufactured or
sold at any place named Durham; but that it was purely a
fancy designation, adopted as an arbitrary symbol to denote
his peculiar product.
Third. That the said symbol has by long use become asso-
ciated with the particular manufacture of smoking-tobacco
described in Wright’s patent.
Fourth. That the said symbol was never abandoned or dedi-
cated to the public by said Wright.
Fifth. That whatever property said Wright had in the said
word “ Durham” was transferred by him to said Armistead.
Asa conclusion of law, I find that the said Wright had a
legal title to the said word ‘“ Durham” as a trade-mark for
smoking-tobacco, and that the applicant acquired title from
hin.
Priority is therefore awarded to the said Louis L. Armistead,
and his claim of right to registration of said trade-mark is
admitted.
§ 658. The foregoing opinion having been filed and entered
of record, the Office notified the parties of the result, and
504 LAW OF TRADE-MARKS.
allowed thirty days for appeal, as is usual (although where
circumstances render it expedient the period may be lengthened
or shortened). The only appeal was, of course, to the Commis-
sioner in person, and not to the Board of Appeal (the Exam-
iners-in-chief ), as in patent cases, for section 10 of the Act of
July 8, 1870, does not apply to trade-mark cases.
§ 659. This appeal to the Commissioner is in the nature of
a rehearing, for there is no statutory provision in regard to a
revision of the decision of the Examiner of Trade-marks ; his
decision being in theory the act of the Commissioner. This
explanation is useful as general information, and also to ac-
count for one circumstance at the hearing of the appeal, to wit,
the introduction of new evidence, not presented to nor con-
sidered by the Examiner, as to the geographical import of the
word “ Durham.”?! The two decisions are thus reconciled, as
to the question of fact. The law of the case is concurred in.
We will now read the opinion of —
Leceerr, Commissioner :
Blackwell obtained, October 8, 1871, the registry of the
following as a trade-mark: “ Durham Smoking Tobacco, man-
ufactured by W. T. Blackwell, Durham, North Carolina.”
1 “ Aw Act to incorporate the Town of Durham, in the County of Orange.
“ Be it enacted by the General Assembly of the State of North Carolina, and it is
hereby enacted by the authority of the same, That the town of Durham, in the county
of Orange, be, and the same is hereby, incorporated by the name and style of
the town of Durham, and shall be subject to all the provisions contained in the
111th chapter of the revised code.
“ Be it further enacted, That the corporate limits of said town shall extend one
half-mile in all directions from the warehouse of the North Carolina railroad in
said town.
“ Be it further enacted, That this act shall be in force from and after its ratifi-
cation.
“In General Assembly read three times, and ratified this 22d day of Decem-
ber, a.p. 1866.
“R. Y. McApen, Speaker House of Com.
“M. C. Manty, Speaker of Senate.”
The date of this act should be noted by the reader, as it has a bearing on
the question of Durham being a geographical term or not.
INTERFERENCES IN PATENT OFFICE. 505
December 6, 1871, Armistead applied for the registry of the
following as a trade-mark: ‘“ Durham Smoking Tobacco ;” and
as he claimed the exclusive right to the use of these words, his
application was placed in interference with the registered trade-
mark of Blackwell for the purpose of determining who first
adopted and used on packages of smoking-tobacco the words
“ Durham Smoking Tobacco.”
Blackwell manufactures his tobacco at Durham, North Caro-
lina ; Armistead, at Lynchburg, Virginia. Armistead claims
the right to use the label-mark under an assignment from one
Wesley A. Wright, who formerly manufactured smoking-to-
bacco at Durham, North Carolina. The evidence shows that
Wright invented a flavoring-compound for smoking-tobacco as
early as 1860, for which he has since obtained a patent, and in
company with one T. B. Morris, under the firm-name of Morris
& Wright, manufactured smoking-tobacco at Durham, and
that the tobacco obtained some reputation under the name
“ Best Spanish Flavored Durham Smoking Tobacco.” It is by
no means clear, however, whether this name was first given
use by the manufacturers, or by the merchants who retailed
it, or by the consumers who bought and used it. This
tobacco, on account of its flavor, has become a favorite, and
the distinctive words in the name adopted must have been
“ Best Spanish Flavored,” and not “Durham.” In 1861 Mor-
ris & Wright seem to have dissolved partnership, and Wright
moved about two miles from Durham, where he continued to
manufacture smoking-tobacco for a few months, and then gave
up his business and went into the rebel army. There is no
pretence that he resumed this business before 1869, when he
again commenced the manufacture of smoking-tobacco at Lib-
erty, Virginia, using the following brand: “ Original Durham,
W. A. Wright, Originator,” the label also embracing the rep-
resentation of a bull’s head looking to the left. In 1870, said
Wright, in company with J. R. Stewart, manufactured smoking-
tobacco at Stewartville, Virginia, and branded it “ Durham
506 LAW OF TRADE-MARKS.
Smoking Tobacco.” After this he assigned the right to manu-
facture under his patent, and also the right to use the brand
“ Durham Smoking Tobacco,” to Armistead, the applicant. If
Wright had an exclusive right to this brand, then Armistead
is entitled to have it registered ; otherwise, not.
Armistead attempts to fix the origin of this label back as far
as 1860, when it was used in connection with the words “ Best
Spanish Flavored ;”’ but in doing so he shows that it was first
used by Morris & Wright, and by proving this he proves that
Wright did not have the exclusive title to the label. If this is
the origin of the mark claimed, then, to make Armistead’s title
to the same good, he should be able to show that he holds un-
der Morris as well as under Wright. Wright could not convey
to Armistead the exclusive right to use what belonged to Mor-
ris & Wright.1. But there is nothing of record to show that
Armistead holds or claims to hold any thing, directly or in-
directly, from Morris. An exclusive right to use is necessary,
under the statute, to secure registration.
Wright used the word “ Durham” upon a small portion of
the smoking-tobacco he manufactured during the year 1861
near Durham, North Carolina. This is the utmost that can be
claimed, from the testimony, as to any use of the word by him
alone before 1869. That such use of the name of a town where
he did business should give him the right to carry such name
into another State, and to use it to the exclusion of all other
people in the United States, even the citizens of the town of
Durham, is too preposterous to require more than a simple
statement for its refutation.?
Blackwell claims under an assignment from one J. R. Green,
and proves that Green first used the word “Durham” upon
smoking-tobacco in 1865. That Wright used this word to
mark packages of smoking-tobacco before Green did the tes-
1 As partnership assets in hands of the survivor ?
2 Tf it was, as he claims, an arbitrary symbol, and not the mere designation
of a place, why could he not use it exclusively all the world over?
INTERFERENCES IN PATENT OFFICE. 507
timony does not leave a shadow of doubt; and if the case was
a proper one for a judgment of priority I should unhesitatingly
give it to Armistead as assignee of Wright. But it is not such
acase. The words “ Durham Smoking Tobacco” cannot con-
stitute a legal trade-mark, and therefore cannot be registered.
Neither would adding the name and place of business of the
manufacturer help the matter. There is nothing registerable
in either Blackwell’s or Armistead’s labels, and the Office
blundered when it gave a certificate of registration to Black-
well. It should not repeat that blunder by giving a like cer-
tificate to Armistead.
The Examiner, it seems, refused to register for Blackwell
the words “ Durham Smoking Tobacco ;” but, when the words
“Manufactured by W. T. Blackwell, Durham, N. C.,’”’ were
added by amendment, registry was admitted. There is noth-
ing in this label except the name “ W. T. Blackwell” to which
Blackwell had any exclusive right, and this name cannot be
regarded as any part of the trade-mark. The parties have evi-
dently been misled as to their rights by misreading some court
decisions. Courts of equity have often granted injunctions
against the fraudulent use of words which the same courts
would not for a moment sustain as trade-marks. An example
of this is found in what is known as “ the Akron Cement Case,”
or Newman v. Alvord (Cox,41T). Newman lived at Akron, and
manufactured from the quarries of that neighborhood water-
cement, which he put up in barrels and labelled “ Akron
Water Lime,” and added his own name as manufacturer.
Many of his neighbors were engaged in the same business, all
using the words “Akron Water Lime,” or “ Akron Cement,”
but each attaching his own name. This lime, under the brand
“ Akron Cement,” became popular, and one Alvord, living and
_ doing business in Cleveland, commenced branding his water-
lime “ Akron Cement,” adding his name and proper place of
manufacture. Newman, one of the manufacturers at Akron,
applied for and obtained an injunction enjoining Alvord against-
508 LAW OF TRADE-MARKS.
using the word “ Akron” as any portion of his label. The
court granted the injunction solely on the ground that Alvord
used the word “ Akron” for the purpose of making the public
believe that it was the genuine Akron cement, and thereby ob-
taining by fraud trade that rightfully belonged to Newman and
others in Akron. The learned judge was very careful to say,
however, that Newman had no ezelusive right to the use of the
words “ Akron Cement,’ but that the same might be used by
any citizen of Akron, thereby holding that while ‘“ Akron Ce-
ment” was not a legal trade-mark, yet it was within the prov-
ince of a court of equity to grant an injunction against its
fraudulent use.
The same doctrine was held in the case of The Brooklyn
White Lead Co. v. Masury. In this case Masury adopted
as a label for his paint “ Brooklyn White Lead and Zine Com-
pany.” As both did their manufacturing in Brooklyn, the
court held that the respondent had a right to use the words
“ Brooklyn White Lead;”’ but as the word “Company” was
added for the purposes of fraud, a decree was entered enjoining
Masury from using the word “ Company.” No one, however,
would hold from this that the word ‘‘ Company,” as attached
to a firm or corporation name, could be regarded as a trade-
mark. The court enjoined against fraud, but with no intention
of defining a trade-mark. Many other cases to the same effect
might be referred to, but these are enough.
The words ‘“ Durham Smoking Tobacco”’ may be used with
impunity by any persons engaged in manufacturing smoking-
tobacco at Durham, and for that reason no one person lias any
exclusive right to their use. By the statute an exclusive right
to use the proposed trade-mark must be established before
registry can be allowed.
By application of the doctrine held in the “ Akron Cement”
case any person living at Durham, and engaged in manufact-
uring smoking-tobacco, might enjoin any person not living there
who should fraudulently use the word “ Durham”’ on tobacco-
INTERFERENCES IN PATENT OFFICE. 509
labels for the purpose of obtaining trade that otherwise would
goto Durham. This may be true, and yet the words “ Dur-
ham Smoking Tobacco” not be a legal trade-mark. These
partics have already had adjudicated between them a question
involving nearly all of the points here discussed. In the case
of Blackwell v. Armistead, lately decided in the United States
District Court for the Western District of Virginia, Justice
Rives very fully and ably discusses this whole matter on sub-
stantially the same testimony submitted in this case. The
trade-marks, as discussed by him, differed from the marks
under consideration here in this: One of them had, in addition
to the words “ Durham Smoking Tobacco,” the representation
of a bull’s head, and the other of the full-size view of a bull.
So far as the questions are the same, I believe the holdings in
this are substantially the same as held by the learned judge in
that case.
As neither party is entitled to registration, the interference
must be dissolved, and registration refused to Armistead. If
I had power to cancel the certificate granted to Blackwell, I
should certainly do so.
§ 660. Let us now peruse the opinion of his Honor, Judge
Rives, who based his opinion upon the identical testimony which
was transcribed from the records of his court for the use of the
Special Examiner in the Patent Office. The decision will stand
upon its own merits, so that the annotations cannot add to nor
detract from its wisdom. With the most profound deference
for the learning of the Judge, it is with hesitation that any
errors of judgment shall be pointed out, — errors as to the law ;
for with facts we need not trouble our heads. The whole case
is a study, from beginning to end, and simply as a study is it
so fully set forth.
1 That is, as to the question of fact of “Durham” being a mere name of a
place.
510 LAW OF TRADE-MARKS.
U. 8. Circuit Court for the Western District of Virginia, March Term, 1872,
W. T. BLACKWELL, anv J. S. CARR, PARTNERS
UNDER THE STYLE or WM. T. BLACKWELL,
v.
L. L. ARMISTEAD.
| In Chancery.
Bill to enjoin Violation of Trade-mark.
OPINION.
Rives, J.—The preliminary injunction in this case was
founded on the statements of the bill. In pursuance of the
notice required by statute, the defendant appeared and con-
tested its emanation upon ez parte affidavits assailing the title
of the plaintiffs. But in that incipient state of the proceed-
ings it would not have been proper, if at all practicable, to
pass upon the merits of this defence; and the only question
then was, whether the case, as presented by the bill and affected
by this adverse testimony, was still such as to require this stay
till the merits of the controversy could be developed by further
pleading and testimony. The propriety of this interposition by
the court will scarcely be now questioned, as these further
proceedings have shown the case to be one of perplexity and
doubt.
The pleadings have now been perfected. The defendant’s
answer was duly filed, issue taken upon it, and the cause set
down for final hearing. A vast volume of testimony has also
been taken, some of it contradictory, and a vast deal of it
irrelevant and impertinent. It is to be regretted that the zeal
of counsel or the anxiety of parties should have so augmented
the bulk of this testimony as to make a needlessly expensive
record of it, and to devolve upon all engaged in its examina-
tion 'a wearisome amount of unprofitable reading. Still it is a
subject of congratulation that the cause is now fully developed
in all its aspects and bearings, and has been argued with a dis-
INTERFERENCES IN PATENT OFFICE. 511
criminating force and fulness of research alike masterly and
instructive, and calculated to produce settled convictions one
way or the other.
Our first task is to acquire accurate and precise ideas of the
issues made by the pleadings. If this be done, and then the law
be properly applied, it seems to me we can reach a safe con-
clusion almost without resorting to the voluminous testimony.
The plaintiffs! claim a trade-mark, designed in 1865 or 1866,
and continuously used ever since. It is exemplified and made
a part of their bill. The descriptive terms are, “ Genuine
Durham Smoking Tobacco,” and the symbol or device is the
side view of a Durham bull? They assert that this trade-mark
has been violated by the defendant in using, under date of
January, 1871, this term: “ The Durham Smoking Tobacco,”
and the symbol or device of “a bull’s head,” * with a note of
the sale to the defendant of Wright’s patent for the manufact-
ure of “Genuine Durham Smoking Tobacco.” This latter
trade-mark of the defendant is also exemplified in the bill and
placed in juxtaposition and contrast with plaintiffs’ trade-
mark.*
The answer, while calling for full proof of the allegations of
the bill, does not directly deny this statement, but rests the
defence upon three chief grounds: 1. The prior use of this
trade-mark by Wright (under whom the defendant claims), as
far back as 1860; 2. That the defendant’s trade-mark is not an
infringement of the plaintiffs’, but is wholly dissimilar; and,
3. That the plaintiffs, by fraudulent representations in the prem-
ises, have deprived themselves of all equitable assistance.
1 This being an equity suit, the term ‘‘complainant” should be used. A
lapsus calami.
2 This symbol is really the trade-mark. ‘The descriptive terms” cannot
possibly be a mark of commerce. By what magic process is the animal repre-
sented shown to be a “ Durham bull?”’ One witness swears that it is a cow.
3 Is it possible as a matter of fact that a bull’s head could be mistaken for the
side-view of the animal? If not, how could there be infringement ?
# This recognizes the existence of two distinct marks. If there is piracy, it
thence follows that there is but one mark.
512 LAW OF TRADE-MARKS.
The main contest is considered by all parties and the coun-
sel in this case to rest upon the priority in the use of this dis-
puted trade-mark.. The defendant does not pretend that
Wright, under whom he claims, ever used the identical trade-
mark set up by the plaintiffs. On the contrary, he takes
especial pains to show that he placed no particular value on
the term “ Durham,” which he now asserts belonged in common
to his and plaintiffs’ brands. The discovery which he had
made, and for which he seeks protection, was his preparation for
or mode of treating smoking-tobacco, so as to mitigate its nox-
ious qualities and impart to it an agreeable flavor. This is
the merit he claims; this the process he has patented. The
testimony and the answer concur in proving that the whole
merit of this smoking-tobacco, and its celebrity, were due to
the use of the flavoring he gave his tobacco. He was con-
fessedly the first to commence its manufacture at Durham’s
Station! There was nothing in the locality he could have
reasonably counted upon to commend his manufacture to the
public.2 But, if we are to accredit the defendant’s answer and
his testimony in this cause, it was his discovery of the fla-
voring compound on which he plumed himself. Accordingly
it was this which he emblazoned on his stencil-plate. Take
his own statement for the present, and what was his brand ?
“ Best Spanish Flavored Durham Smoking Tobacco.” What,
in view of the pleadings and evidence in this cause, is the
characteristic — the vital element — of this trade-mark ?3
Manifestly, “ Best Spanish Flavored.” That was the only con-
1 Observe, that the name of the place was “Durham’s Station.” It did not
become “Durham” until the tobacco business had built it up, about six years
thereafter.
2 That is the very reason why it was a trade-mark. If the locality had power
to draw public favor, then the name could not be a fancy designation.
3 This is an instance of the inadvertent use of the term “trade-mark.” The
words “ Best Spanish Flavored” cannot by any possibility constitute essential
elements of what the law recognizes as a trade-mark. This is the test: Could
any manufacturer acquire the erclusive right to use words so common to our
language? No!
INTERFERENCES IN PATENT OFFICE. 518
spicuous and discriminating element of this trade-mark.
“ Durham,” if indeed a part of it, was, upon the defendant’s
own showing, subordinate and insignificant. Now, the plain-
tiffs concede in the fullest manner Wright’s superior title to
the use and brand of his flavoring compound, and disclaim in
their process any infringement of it; nor does it appear there
has been any, nor indeed any formal complaint of it.
The pretension of the defendant, then, amounts to this:
that because, in 1860, he branded his smoking-tobacco “ Best
Spanish Flavored, Durham,” wholly because of the mode in
which he flavored it, no subsequent manufacturer of the arti-
cle at Durham, without the use of his process, shall brand his
as “ Genuine Durham Smoking Tobacco” with a symbol which
he never used. My reply is that, under the circumstances of
his use of the name “ Durham,” there was nothing in it so
descriptive’as to restrain succeeding manufacturers at the same
place from engrafting it on their brand, so long as they laid
no claim to nor made any use of his “ Best Flavored Spanish”
compound, which he indeed appropriated by this first and
original use of this only conspicuous term on his stencil-plate
in 1860-61.2 It must be remembered that Wright was only in
the infancy of this manufacture at Durham; and that others
followed and developed it till the plaintiffs instituted their
brand in 1865 and 18668
1 Compare this case with that of the Carthusian monks, § 582, where it was
held that Chartreuse had become a symbol to denote their particular manufacture,
possessing all the essential characteristics of a trade-mark.
2 This is conceding that words in ordinary use in our language — as is this
purely-descriptive phrase — may be appropriated by the first person who makes
the combination. All the authorities are quite the other way.
8 Let us suppose that — as was the fact in this suit — the coiner of a new word
or symbol, as “‘ Cocoaine ” (which we will borrow for the sake of illustration), were
to establish a manufactory, around which a large village sprung up, the village
of Cocoaine, would he cease to be the owner of the symbol as his trade-mark ?
Would the name become a mere geographical designation which all might use ?
Certainly not. If the owner of the mark removed to another State, could it be
pretended that all who had settled at Cocoaine could use the name, as the denom-
ination of the originator’s class of goods? And if the word “Durham” was
merely a geographical term, why was it necessary to adopt the representation of
383
614 LAW OF TRADE-MARKS.
Conceding, then, all the defendant claims by virtue of his
purchase from Wright, he fails, in my opinion, to rebut the
plaintiffs’ title by proving a brand as used by Wright pre-
viously, wherein “ Best Flavored Spanish” was the distinguish-
ing attribute, and “ Durham,” under the circumstances at that
time, a mere unmeaning incident. Thus stands this point in
the light of the pleadings alone, the allegations of the plaintiffs
on the one hand, and the denials and defences of the defendant
on the other.
The testimony as to the fact whether the,term “ Durham”
was ever upon the stencil-plate of Morris & Wright is contra-
dictory. Butin my mind it preponderates against the exist-
ence of that name in that brand. Counsel have adroitly insisted
that the testimony against it is negattve, and cannot from its
nature, however commanding, overcome clear affirmative proofs.
The proposition of law involved in the statement is ¢orrect ; but
the whole inquiry is into a fact, namely, What was the stencil
used by Morris & Wright? Some, on the one hand, who had
used it, declare with emphasis it was “ Morris & Wright’s
Best Spanish Flavored Smoking Tobacco ;” others, but mainly
Wright and his two sons — the latter at the time but boys —
stated it as ‘Morris ¢ Wright’s Best Spanish Flavored DuRHAM
Smoking Tobacco.’ The proofs, therefore, on both sides, are
equally affirmative. If, then, it be left in doubt, we must look
to the probabilities of the case to turn the scales. What motive
could have existed with Wright, all whose reliance was upon
the merits of his flavoring compound, to invoke the name of a
small, thriftless station on a railroad, settled by only two or
three families, with a store and this factory, — to invoke its
name to give celebrity to the preparation to which he solely
a side-view of a bull? Ifit is geographical, so then must be its great original the
ox and “Durham” on the label for mustard. (See case of Harrison v. Taylor,
11 Jur. (w.s.) 408.)
1 Because it was a mere unmeaning incident, a mere arbitrary symbol, hav-
ing no reference to the place of manufacture, it could be a valid trade-mark.
INTERFERENCES IN PATENT OFFICE. 515
looked for his reward?! It seems to me extremely improbable,
upon ordinary grounds of reason and human action, to suppose
that he used * Durham” on his stencil at all. On comparing
and weighing the testimony on both sides, I am constrained to
adopt the conclusion that he did not. Neither he nor his
vendee, therefore, have any claim to contest, under this state
of the evidence, the validity of the plaintiffs’ trade-mark and
his original and paramount title thereto.
It cannot be denied that it is abundantly proven in this cause,
that the manufacture of Morris & Wright, and of those who
succeeded them at Durham, was known, called, and distin-
guished in the market as “ Durham” smoking-tobacco. It is
on this notorious fact in the cause that the able and ingenious
argument has been raised that the public, by its voice, may
appropriate and consecrate to an individual property in a desig-
nation by which he may choose to denote any product of his
industry. But I can find no warrant for such proposition in
the law on this subject. On the contrary, it is distinctly laid
down by the authorities, that it is only the actual use of the
mark, device, or symbol by the dealer which entitles him to it,
and gives him the right to be protected in the enjoyment of it.?
The doctrine on this subject has grown with commerce, and
has assumed the form and title of a distinct body of law under
the moulding hand of able judges, who have sought in their
decisions to establish its guiding principles, and of acute com-
mentators and essayists, who have exerted the powers of a
superior analysis and discrimination to extricate from doubt
the true maxims of this beneficent code of business ethics.
So much of it as is necessary or material for our present in-
quiry is comprehended in a single proposition. It is the semi-
1 A manufacturer relies upon the reputation of his product. The trade-mark
is the index that points to it. It was the patented article, the peculiarly-flavored -
compound, that was the object of value. The public cared not a rush where it
was made.
2 It was known and distinguished by the name of “ Durham.” Then the
name must have been attached to it.
516 LAW OF TRADE-MARKS.
nal principle of the whole doctrine. The simple statement of
it is, that the dealer has property in his trade-mark. This is
allowed him because of the right which every man has to the
rewards of his industry and the fruits of his discovery, and be-
cause of the wrong of permitting one man to use as his own
that which belongs to another. In regard to the latter, it may
be well said, that any imitation of a trade-mark, calculated to
deceive the unwary customer, differs from an absolute forgery,
not in the nature, but rather in the extent of the injury. The
dissimilarity to the expert wholesale dealer may be such as to
save him from the imposition, but too slight, and that perhaps
by design, to diminish sales to the incautious purchaser. But
upon the success of fraud depends, ultimately, the extent of
the injury. Let the spurious fabrication meet with the same
sale, among private and individual consumers, as the genuine
article, and the wholesale dealer loses all motive for the exer-
cise of his skill in detection when he, perhaps, can reap better
profits from the spurious, and therefore cheaper, than from the
genuine article. In this way a simulated trade-mark may work
the same mischief, and to the same extent, as a forgery, defy-
ing detection at the hands of the eapert.
With this brief view of the law, I proceed to examine the
second ground of defence: that the defendant has not infringed
the trade-mark of the plaintiffs. This is scarcely the subject
of argument. It must be referred to ocular examination and
decision. Place the respective trade-marks side by side, con-
trast the labels, the words, and the devices, and each one’s
vision must determine for himself whether the imitation is such
as to deceive the unpractised and unwary customer. It matters
not that now, in the critical inspection of them, and aided by
ingenious counsel, we can clearly discern differences between
the two. The true question is, whether, taking the “ tout en-
semble,” Armistead’s trade-mark might not pass with the un-
wary for that of Wm. L. Blackwell & Co.; and, if that be so,
the wrong is done, and the title of the latter to be protected by
INTERFERENCES IN PATENT OFFICE. 517
this court is consummated. For my part I do not see how
trade-marks so similar could escape being confounded in the
market. One reads, “ Genuine Durham Smoking Tobacco ;”
the other, “ The Durham Smoking Tobacco.” This use of the
definite article makes these phrases equivalent. To remove all
doubt, and aid the deception, in the note of sale of the patent
to Armistead, it reads, for “ Genuine Durham Smoking To-
”1 Thus the language, to this extent, of the labels is
identical. Now, as to the symbols or devices, one is the side
view of the Durham bull; the other, that of his head, on a
medallion. The one symbolizes, by a part, the name “ Dur-
ham” as effectually as the other does by the whole. The color
of the paper is also the same. Whether this simulation be the
product of accident or design does not matter.? It is the prov-
ince of this court to suppress it in either case. It is a little
curious, however, to note that Wright’s first label, at Liberty
or in Bedford, was wholly different, and that, after his son had
seen plaintiffs’ trade-mark in Kentucky, and after his return
to his father, the present trade-mark, as transferred to the
defendant, was adopted by Wright.
The third and last ground of defence is that the plaintiffs
have forfeited their right to relief in this court by reason of
their false and fraudulent pretensions. This is upon the an-
cient and familiar principle that those who do iniquity must
not ask nor expect equity. It is worthy of all acceptation. It
is a hoary maxim, hallowed by its age, and, unlike some other
equally sacred antiquities, it is as yet unassailed by the spirit
of change or reckless progress. I adhere to it. But the
charges are serious and demand investigation.
bacco.
1 The judge having already ruled out the word “Durham” as “subordinate
and insignificant,” we may discard it. The so-styled trade-mark, then, consists
of ‘‘ The Smoking Tobacco; ” and the alleged piracy reads, ‘‘ Genuine Smoking
Tobacco.” This is not an error, for the recorded opinion shows it.
2 Read this again. The representation of the side-view of a bovine quadruped
is the simulation of another representation of the mere head of a bull! Could
one possibly be mistaken for the other? If not, the coexistence of the two
pictures could not amount to infringement. This being a question of fact, we
will let it go. We are in pursuit of law.
518 LAW OF TRADE-MARKS.
The first is, that the plaintiffs sent out business-envelopes
and business-cards, giving the year 1860 as the date of the
establishment of their enterprise. In the absence of expla-
nation, this might well impugn the bona fides of the plaintiffs,
as in their bill they fix it no earlier than 1865. But was
this statement by mistake or design? Have the plaintiffs failed
to account for it? A junior member of the firm was cxamined,
and showed how it all occurred innocently, and without intent
to deceive. He ordered the printing and gave the date; soon
after the packages were received and opened in the presence of
Dr. Blackwell, the latter saw the error of date and corrected
it; and the witness stated that he proceeded to correct the
misdate by writing the figure (5) over the cipher in 1860, so
as to make the date 1865, as corrected by Dr. Blackwell, but.
that some might have gone out before the correction. The
exhibits made by the defendant of these envelopes and cards
corroborate, rather than conflict with, the witness. That
should not be taken for fraud which is proved by an unim-
peached witness to have been a mistake on his part. Besides,
there was no reasonable motive for such misrepresentation ; the
plaintiffs had nothing to gain by it, but much to lose, on the
hypothesis of the counsel for the defendant.
The next is a charge of falsehood in representing that the
label was secured by copyright. There is not a particle of
proof to that effect. Argument and ridicule alone are relied
on to show the inapplicability and absurdity of a copyright for
such a print. The language of the statute is certainly com-
prehensive enough to embrace a label of this kind! (Act of
July 8, 1870, § 86, U.S. Stats. at Large, vol. xvi. p. 212). The
object of such copyright is to secure to “the author, inventor,
or designer” of any such “ print” the sole liberty of printing
1 This is a misconception of the extent and office of the copyright law. It
was never intended to permit a mere label to be copyrighted. See reasonings
upon this point in previous sections. The Librarian of Congress has felt himself
obliged to issue a circular, to warn applicants for copyrights against this error,
and to inform them that trade-marks are not subjects of copyright.
INTERFERENCES IN PATENT OFFICE. 519
and vending the same. It forbids the surreptitious use and
the illegal sale of his labels. This is a perfectly legitimate
resort to copyright in such a case and for such a purpose. It
would, indeed, be absurd and ridiculous if the object were,
as sarcastically portrayed by counsel, to protect the designer
against the unlawful multiplication of such yeleped works of
art. The dealer seeks merely by his copyright to keep the
printing and vending of his labels in his own hands and under
his control. It has been resorted to in other cases, as for
instance in the case of Wolfe v. Goulard (Cox’s Am. Trade-
mark Cases, p. 227), for the label of “ Schiedam Schnapps.” }
There is nothing unreasonable: or incredible in this claim of
the plaintiffs to a copyright for their label; nor is there any
thing in the testimony or the law to Jead us to discredit it
and brand it as a falsehood.
It seems to me, therefore, that both these charges are un-
founded. They spring from the heat of forensic contests. They
pertain to the polemics of the bar. Their effect is to provoke
recrimination. Hence, the plaintiffs’ counsel retaliate by im-
puting falsehood to the defendant in dating his purchase of
Wright Ist of January, when he had stated in his answer
he would not buy till he had ascertained his title by certifi-
cates ; and those very certificates bore the subsequent date of
the 6th of that month. The imputation seems plausible; but
the transaction is susceptible of a more charitable construction,
which I deem it my duty to put upon it. Dates are commonly
immaterial, and often misapplied in business transactions. The
main fact is doubtless correctly stated by the defendant, though
he is made himself to confront it by a mistaken date.
Iam glad, therefore, to have it in my power to state that
there is nothing in this cause to affect the fair fame of the par-
ties, plaintiff or defendant. They are, doubtless, respectable
1 An unhappy citation. See the case as commented on, and the late case
(ubi supra) decided by Pratt, J., involving the validity of Wolfe’s miscalled trade-
mark.
520 LAW OF TRADE-MARKS.
men, and enterprising manufacturers of tobacco in their re-
spective communities. They are engaged, as I believe, in the
honest pursuit of their rights-as they respectively understand
them. The defendant has acted on the information of another,
under whom he claims. He has obeyed the order of this court.
The only thing I have to regret is, that the same deference was
not paid by another manufacturer, who, though no party to this
suit, could not have been ignorant of it from his near relation
to the defendant. But the plaintiffs have not chosen to bring
him before this court, save by proving his acts in the use of
the simulated mark, notwithstanding the injunction upon his
brother.
I am sure the plaintiffs and the defendant, as enterprising
dealers, will find their ultimate interests subserved by the doc-
trine I have sought to expound and maintain as to their trade-
marks. Whoever may now be the loser by it may soon have
occasion to invoke it for his own protection ; and they, whose
rights are now sustained, must learn thereby to respect those
of other competitors in their business, at the same time that
they take encouragement to themselves from their present suc-
cess. All intelligent men, engaged in manufactures or other
enterprises, must sooner or later become reconciled to losses,
in whatever favored quarter they may fall, that may be fairly
viewed as penalties for the infraction, however unintentional,
of laws, well settled, designed, and calculated to vindicate the
honor, advance the morals, and promote the interests of trade.
For these reasons I decree the perpetuation of the injunction,
and order an account to be taken by a master, of the profits
made by the defendant from his sales under the simulated
trade-mark aforesaid.?
§ 661. The following decision will give another example of
the treatment of a trade-mark interference, and also furnish
1 This controversy ended in smoke. The parties came together, and spoiled
‘the lawyers’ hopes of a determination by the Supreme Court. Moral: much
xemains to be learned.
INTERFERENCES IN PATENT OFFICE. 521
points of practice and law which may serve a useful purpose.
Attention is particularly invited to the points of counsel, and
the concession made by one side, which was sufficient in itself
to warrant judgment for the other side without the necessity of
recourse to the testimony.
In the U. S. Patent Office.
GEORGE SCHRAUDER, Aprpriicanr v. RICHARD BERESFORD &
CO., RresponDENTS.
Interference — Trade-mark.
Browne, Special Examiner :
The hearing was had on the 27th day of June, 1872. Knight,
Brothers, for the applicant, and Fisher & Duncan, for the re-
spondents. Schrauder’s alleged trade-mark, as set out in his
specification, consists simply of the word “ Bouquet,” which
word is printed upon suitable labels, and then applied to barrels,
tierces, boxes, wrappers, or other packages or receptacles for
containing cured meats. For the purpose of increasing the
pictorial effect of the trade-mark, said word “ Bouqunr’”’ may
be associated with a branch or wreath of flowers, or with other
appropriate ornaments ; but such flowers or ornaments are not
to be considered as forming any part of the mark.— It is
for cured meats.
Beresford & Co.’s alleged trade-mark is stated in their speci-
fication as consisting of a bouquet, which is thus described:
“Two sprigs of leaves, having their stems at the bottom of the
lithograph,! and fastened together by a ribbon, are bent around
the bouquet, so that their ends nearly touch, and so as to form
an oval. Within this oval is the bouquet, composed of various-
colored flowers, ears of grain, and several varieties of leaves.
1 The picture is not a lithograph, but is an impression from an engraving on
type-metal. Accuracy upon all points is desirable.
522 LAW OF TRADE-MARKS.
“ The bouquet is supported by an urn-shaped holder. Above
the bouquet, and near the top of the oval, upon a colored back-
ground, are the words ‘ Richard Beresford & Co.:’ just below
this firm title are the words, ‘ Extra Sugar Cured ;’ while across
the face of the bouquet is the word ‘ Bouquet.’ Beneath the
word ‘ Bouquet,’ and across the middle of the bouquet-holder,
is the word ‘Hams.’ Under the latter, and across the foot of
the bouquet-holder, are the words ‘ Cincinnati, O.’
“The enclosing sprigs may be dispensed with ; also the words
above mentioned be changed ; also the holder of the bouquet be
dropped ; also the coloring of the bouquet, &c., be varied, or
dispensed with, without materially altering the character of our
trade-mark, the essential feature of which is the bouquet.”
This mark is for hams and breakfast-bacon.
It must be observed that the mark claimed in one case con-
sists of nothing but the single word “ Bouquet ;” and in the
other consists of the representation or picture of a bouquet.
The question that arises in this instance is sw generis. It is
believed that the precise point here suggested has not been de-
cided by any tribunal. The name of an object is brought into
conflict with a picture of the object. The former addresses
itself more particularly to the ear, the latter to the eye. Schrau-
der entirely dispenses with the pictorial illustration, and still
retains a word which, as an arbitrary symbol, is susceptible of
constituting a valid trade-mark; but to Beresford & Co. the
picture is indispensable. It is necessary to decide, at the very
entrance of the discussion, whether the two things can be
brought into antagonistic relations.
Section 79 of the Act of Congress of July 8, 1870, in regard
to trade-marks, prohibits the registration of any proposed trade-
mark which is not, and cannot become, a lawful trade-mark ;
and, like the common law, its spirit is to deny protection to
any mark which is calculated to deceive the public, and to lead
to the purchase of one man’s product for that of another. Al-
though there is not the slightest ground for imputing bad faith
INTERFERENCES IN PATENT OFFICE. 523
to either of the parties hereto, still the probable effect upon the
minds of purchasers must be anticipated and guarded against.
The Office must withhold that which may possibly be turned
into an instrument of wrong, or even of annoyance in trade.
As an aid to solution, let us take a hypothetical case. A
customer inquires thus: “Have you the ‘ Bouquet’ brand of
hams?” ‘“ We have.” He is satisfied with the bare assertion,
and gives his order. He does not particularize the bouquet as
a picture, or the article marked with the word “ bouquet.”
Confusion arises, to the injury of some one. Now, it is one of
the characteristics of a trade-mark that it possess a distinctive
individuality, so that it may not be confounded with any other,
whether by means of vision or of sound. The very possibility of
such a mistake is sufficient. That decides the question. The
two things conflict, — the word “ Bouquet” and the bunch of
flowers, called a bouquet. This is the doctrine of the case of
Seixo v. Provezende, 12 Jur. (v.s.) pt. i. p. 215.
Another preliminary question arises. Do both parties apply
their marks to the same class of merchandise, and the same
particular description of goods? If not, then the claims do not
conflict. Schrauder’s is for “‘ cured meats ;” Beresford & Co.’s
for “‘hams and breakfast-bacon.” The evidence settles that
question in the affirmative. Both parties mean the same kind
of merchandise, although employing different modes of expres-
sion.
In applying the evidence, the parties have proceeded upon
two widely-different theories as to the law of the case. The
applicant, Schrauder, has regarded the symbol only in its con-
crete relation, 7.e., as an emblem affixed to merchandise ; while
the respondents, Beresford & Co., have wandered into the
domain of authorship and invention, and claim the proprietor-
ship of the design as an abstraction. This is best shown by
the points presented for consideration, as follows : —
524 LAW OF TRADE-MARES.
For ScuraupeEr.
1
Under the common law of trade-marks, the mark itself is
nothing — has no intrinsic value at all — its value is only after
some protracted! connection with a particular article of manu-
facture or merchandise, as an index or badge of genuineness.
It had no legal force or intrinsic value, until its use with a
given article of merchandise had given it such, and then not of
itself separately, but only as and when attached to such an
article.
2.
In this respect it differs radically from even a design-patent,
which is presumed to possess some artistic quality or merit.
Not so a trade-mark, which may be a word, a line, — any mark
not expressing quality.
Another expressive evidence of its radical difference from
even a design-patent is that, whereas in such patent the recip-
ient must be either the designer, or hold by assignment from
him, ownership in a trade-mark is created by simple adop-
tion and use,—and in fact in the present case neither party
claims to have taken any part in getting up the design.
4,
(This is principally a commentary on the evidence, and need
not be quoted.)
5.
As far as appears, the adoption of the mark by each party
was spontaneous. We know that Schrauder’s was, and impute
no other origin to Beresford & Co.’s, although it is impossible
to overlook the singular delay in uttering Beresford & Co.’s., —
Beresford & Co.’s being a cheap, poor concern in type-metal. If
Schrauder’s was not used in getting it up, at least they had
1 Not strictly correct. The title may vest co instanti, by affixing the mark.
See §§ 52, 129.
INTERFERENCES IN PATENT OFFICE. 525
good opportunity to so use it; but, as before said, this point
we regard as not in the controversy ; and we also regard it as
not a material point.
6.
The great and material point for Schrauder, we consider, is
the use of the bouquet brand on heavy shipments of his choice
sugar-cured meats, far in advance of use by any one else, and
by which alone the mere form of words acquired any value or
significance whatever.
7.
(Comments upon testimony.)
8.
Schrauder was the first to take steps to protect his mark by
registration, and would have been the first on record in the
Office, had he employed a solicitor; but, as before intimated,
our strong, only, and sufficient point is, that Schrauder was, by
many months, the first to use the mark as a brand on goods.
9.
It is understood that the Office is guided in adjudicating such
interferences as the present by modes of procedure, and rules
of action, established in interferences between applications for
patents, so far as the same are applicable. The radically-dif-
ferent nature and ground of claim for trade-marks have an
important bearing on this; for whereas, in applications for
patents, the invention or design per se is presumed to be new
and valuable in itself, no such presumption accompanies a
claim for a trade-mark. It does not need to be new or meri-
torious in itself, — that question is of no import in the slightest
degree, and does not arise. James, who claims to have gotten
up or suggested the mark for his employers (Beresford & Co.),
admits that he took the idea from a perfume-bottle of X
Bazin, so marked.
526 LAW OF TRADE-MARKS.
10.
Schrauder has gone to great outlay, and has fully identified
his goods with the mark, and would be a serious sufferer to be
now deprived of its use, after being the one to give it force and
value in the only way in which it could be given, namely, by
attaching it to goods. There is no evidence that Beresford &
Co. would suffer any serious loss from any cause. *
For Beresrorp & Co.:
Theodore H. James, agent of your applicants, conceived? of
this trade-mark, and studied out its details, before George
Schrauder, or his lithographer, or any other person had thought
of it. James not only conceived of the trade-mark first, but in
May, full a month before Schrauder, he very fully and com-
pletely described his bouquet-brand to William Porter: said
that the flowers should be in the form of a bouquet in a holder ;
stipulated that the bouquet should be of various colors ; specified
that the word “ bouquet” should be placed on the trade-mark ;
inquired about the probable cost of getting up a lithograph of
the trade-mark; stated clearly that this trade-mark of a bouquet
of flowers was to be applied to hams; and finally ordered Por-
ter to get up such a lithograph. This transaction took place
in the month of May, 1871, and from four to six weeks earlier
than the first conception of the application of flowers to a brand
for hams, &c., for Schrauder. . . . While it may be true that
Schrauder’s lithographer, so far as appears from the testimony,
first reduced the design of a bunch of flowers for a ham-brand
to a sketch, and pasted it as his trade-mark on hams, yet the
present case is one of those cases in which the question who
first reduced the trade-mark to a sketch does not enter.
1 This point is rather inartificial in construction. The question is purely one
of right, independent of all consequences to the interest of the parties.
2 The idea of conception or invention cannot enter into a trade-mark case.
INTERFERENCES IN PATENT OFFICE. 527
2.
Because first James, in May, described his trade-mark? fully.
He had thoroughly conceived it, and he so described it to
Porter that any man of common sense could understand
and use his design. 1. He mentioned then to Porter a bunch
of flowers; 2. He described their sliape: they were to form a
bouquet; 3. He mentioned their support; 4. They were to be
put in a holder, and the flowers were to be of a varicty of col-
ors; 5. The word “ Bouquet” was to be added to the trade-mark ;
6. The article to which the trade-mark was to be applied was
mentioned : that article was hams; 7. The name of the parties
for whom the trade-mark was intended —7?.e., Richard Beres-
ford & Co.— was added. Thus it will be seen that all the
main features of the trade-mark, with the details, were stated
by James to Porter, when he ordered the latter, in May, 1871,
to get up the lithograph for the trade-mark he, James, had
described.
8.
Here was the trade-mark invented? and described by James
in May, 1871, in such clear and accurate language, and in such
full details, that any man of ordinary intelligence and sense
could understand and use his trade-mark.
4.
The rule is, that where the substance of an invention 3 con-
sists in the application of a device, &c., for a specific purpose,
the person suggesting the device and its application is the
inventor, though some one else puts the invention into practice.
(See Thomas v. Weeks, 2 Paine, C. C. 92.) No negligence
can be imputed to your applicants. They are “ winter-curers,”
and proved this by their own and their opponents’ witnesses,
1 It never was James’ trade-mark, as he had never reduced it to possession by
adoption. The proper word is design.
2 See above note on this point, and title ‘ Invention.”
8 This is a natural mistake of patent solicitors. They fall into the error of
confounding an attribute of commerce with the subject of invention.
528 LAW OF TRADE-MARKS.
that, having invented, through James, their trade-mark in
May, 1871, they, being “ winter-curers,” and not curing their
hams until the succeeding fall and winter, would not need
their trade-mark labels until that time.!_ Your applicants, then,
submit that said James was the first and original inventor of
the trade-mark now in controversy ; and that, as the assignees?
of said James, they are entitled to the exclusive use of said
trade-mark for ham and breakfast-bacon, é&c.
It is obvious at a glance that the respondents, Beresford &
Co., have not only mistaken the real issue, but have also based
their case upon an inapplicable theory.
By reference to the specifications, — which serve the same
purpose in this interference as do pleadings in courts, — it must
be seen that Schrauder claims nothing but the word “ Bov-
quet,” although for pictorial effect he chooses to associate that
word with a nosegay, bouquet, or bunch of flowers, call it by
what name one may. The essential part of the respondents’
mark is the bouquet itself. Inquiry and comment should there-
fore have been directed by them, not only to the date of adop-
tion of the bunch of flowers, but also to the adoption of the
word which is its proper designation. It is because either
the eye or the ear might mislead a would-be purchaser that the
claims of the parties have come into collision. But the evi-
dence, as to facts, is so clear that the error of counsel, in points
and argument, cannot prejudice the rights of a party.
The law of the case has been mistaken. They have treated
the mark, the emblem, the symbol of commerce, as an inven-
tion, and have attempted to apply principles which are utterly
inconsistent with the idea of a trade-mark. If the bouquet in
controversy be regarded as a design, the subject of a patent,
then it would be proper to treat of the conception of the thing,
and of the perfecting of the invention ; but it is only the wildest
1 This admits their adversary’s case. See, also, point 1, conceding that
Schrauder first pasted the mark on hams.
2 The application was not filed by Beresford & Co., as assignees, If assignees,
they would have had to deduce their title from James.
INTERFERENCES IN PATENT OFFICE. 529
flight of fancy that could possibly conceive of a trade-mark as
a patentable design. It is true, that the copy of something
patented as a design may possibly be adopted as a trade-mark,
as may the representation of an infinite number of objects in
nature and art; but the ideas of esthetics and trafficking
have not ever been associated in the manner supposed by the
counsel.
It is hardly necessary for the present purpose to assert the
truth that a design, as contemplated by the patent laws, means
an artistic or useful conformation or delineation, which is
intended to be incorporated with an article of manufacture,
and is inseparable from it. In no legal sense could the emblem-
atic picture of the respondents be deemed a design. And if it
were a design, as understood by the law in relation to patents
for inventions, it could not possibly have any bearing upon a
case of trade-mark law.
We must utterly repudiate the idea of a right of property in
the symbols constituting a trade-mark,.apart from the use or
application of them to a vendible commodity. (Leather Cloth
Co. v. American Leather Cloth Co., House of Lords, 1865, 11
Jur. (w.s.) 513; Perry v. Truefitt, 6 Beav. 66; Congress ¢
Empire Spring Co. v. High Rock Congress Spring Co., 57 Barb.
526; and all the authorities.)
For the purposes of this discussion, it is not of the slightest
avail to inquire who first sketched, drew, or invented the design
now claimed as a trade-mark. Other irrelevant matters must
also be ruled out; the only important question is this: Who
first applied the symbol to the vendible commodities dealt in
by the parties hereto? Upon the determination of that single
question of fact rests the whole of the case. Let us resort to
the testimony.
The witness Moers is positive that he saw Schrander’s labels
affixed to packages of cured meats three or four weeks prior
to September 8, 1871, and the witness Milholland says that
shipments of meats bearing said labels were made by Schrauder
84
530 LAW OF TRADE-MARKS.
a few days after the 10th day of August, 1871. The labels
are clearly identified, and all bear the trade-mark described by
Schrauder in his specification. All the evidence corroborates
the statements of these witnesses. It is undoubtedly true that
Schrauder had appropriated the mark in August, 1871, and
that he from that time continued to affix it to his merchandise.
It is proven that he was doing a large business in the sale of
cured meats. The lithographer Strobridge, who furnished the
lithographed labels, testifies that he supplied Schrauder with
500 labels for tierces of his meats; with 10,000 labels of another
size; and with 500 labels for boxes. The said labels all bore
the trade-mark described and claimed by Schrauder; and all
were used in his place of business until the supply was ex-
hausted, and more were required. He, then, had the owner-
ship of the mark claimed by him, unless some other person or
persons had adopted it before he had.
When did Beresford & Co. adopt the bouquet? Their
printer testifies that he delivered their labels to them either in
September or October, 1871, the charge for them having been
made on the 7th day of November following. Their clerk,
James, testifies that the first time he saw the bouquet-brand
used was in January, 1872, when he saw it affixed to a ham
bought from Schrauder. There is no pretence on the part of
Beresford & Co. that they affixed the mark to their merchan-
dise before that time; and indeed they account for their delay
in its use by the fact that they were “« winter-packers,” while
their adversary Schrauder was a “ summer-packer:” é.e., the
latter worked in the warm season, while they could only work
during the cool season. They relied upon the adoption of the
abstract symbol, and did not make it a trade-mark. Schrau-
der’s earlier business compelled him to use it in August; and
by his act, in affixing it to the goods sold by him,— to wit, cured
meats, consisting of hams, &c.,— he did all that the law re-
quires to reduce the emblem to possession, and thus he made it
a trade-mark.
INTERFERENCES IN PATENT OFFICE. 531
There seems to have been a confusion of ideas in the minds
of Beresford & Co. as to the real nature of their device, the
representation of a bouquet. By the testimony of James, their
clerk, it appears that in September or October, 1871, they,
through him, applied to the Librarian of Congress for a copy-
right of the picture, — although the thing had not the slightest
claim to be a literary or artistic production, and was not in-
tended to be sold as such, — and that a copyright was issued,
bearing date the 26th or the 29th of October.
Whatever may have been their intention as to securing to
themselves any possible property in the picture, it is manifest
that the thing could no more be copyrighted than it could be
patented; for the designer of the picture was neither an author
nor an inventor, within the meaning of subsection 8 of section
8 of article 1 of the Constitution. Says Lord Cranworth, in the
“ Leather Co.” case before cited: “‘ The word ‘ property,’ when
used with respect to an author’s right to the production of his
brain, is used in a sense very different from what is meant by
it when applied to a house orawatch. It means no more than
that the author has the sole right of printing or otherwise mul-
tiplying 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 manufac-
tory, the article to which it is affixed was manufactured.”
So, in the Supreme Court of the United States, in the case
of The President, §c., of the Del. & Hud. Canal Co. v. Clark
(Official Gazette, March 26, 1872), the court said that ‘“ Property
in a trade-mark, or rather in the use of a trade-mark or name,
has very little analogy to that which exists in copyrights, or in
patents for inventions.” This is the received doctrine of all
the courts. Inventive or literary genius has nothing to do
with the index of proprietorship termed a trade-mark.
Even if the respondents, Beresford & Co., had “ originated
the trade-mark for which they . . . seek protection,” as stated
in their sworn application, they did not perfect it by actual use
532 LAW OF TRADE-MARKS.
— Ignorantia legis neminem excusat. But it seems that on the
naked question of moral right, they were not the designers of
it; but either James, or the engraver, or Schrauder’s lithog-
rapher, was the first designer of it. But this is outside of the
law of the case, and is touched upon only for the reason that
counsel of experience and acknowledged ability in patent law
have misconceived the theory of trade-mark law, and made it
necessary that some notice be taken of it.
Schrauder’s counsel made a point that their client was the
first to take steps to protect the mark by registration. The
fact is, as appears by the records, both parties filed their applica-
tions on the same day, February 26, 1872; but Schrauder’s
papers were incomplete, and had not been prepared with as
much care as had those of Beresford & Co., and therefore the
case of the latter was first examined. But the fact of priority
of filing cannot affect the title, its advantage consisting but in
the circumstance of throwing the onus probandi on the junior
applicant, i.e., he who had been the latest to complete his
papers.
The evidence being clear that George Schrauder, the appli-
cant, was the first adoptor of the trade-mark in controversy,
judgment of priority is accordingly awarded to him.
§ 662. A multiplicity of legal questions arise upon the trial
of an interference before the Patent Office. The following
ease of Walch, Brooks, § Kellogg v. M. J. Cole & Co., involves
a number of nice points worthy of notice. Any matter affecting
the title to the thing in controversy may be shown, subject,
of course, to the established rules of evidence. — After reciting
certain facts not necessary now to be considered, the decision
of BrowneE, Special Examiner, proceeds : —
§ 663. Motion to allow a New Party to come in.— After the
declaration of interference, a motion was made for the substi-
tution of one John H. Farwell as a party in place of M. J.
Cole & Co. It is in evidence that the latter had upon their
INTERFERENCES IN PATENT OFFICE. 538
own petition been declared bankrupt, and one Henry D. Hyde
had been appointed assignee. Farwell filed an instrument
purporting to be an assignment and transfer of the trade-mark
in controversy. There is no evidence of the authenticity of
said instrument; and, indeed, it is not perceived what legal
right the assignee in bankruptcy of the individual and partner-
ship estates of M. J. Cole & Oo. had to make the transfer ; for
the trade-mark had not been included in the schedule of assets.
(See case of Bradley v. Norton, 33 Conn. 157.) If there had
been the formality of including it among the assets, the evi-
dence warrants the conclusion that, in contemplation of law,
the bankrupts had really no trade-mark property to convey.
As Farwell took nothing by his so-called assignment, his motion
to be permitted to come in as a party litigant was necessarily
denied.
§ 664. The Essential Part of the Mark.— It was assumed, for
the purposes of this interference, that the name ‘‘ Paul Jones,”
the conspicuous element in the mark, was that by which the
whiskey would be bought and sold, and known in the market.
The evidence shows that it was the prominent, essential, and
vital feature of their mark, as it is also of that of their oppo-
nents. (See Filley v. Fassett, 44 Mo. 173.) The inquiry was
therefore directed to those words, without which, as a com-
ponent part of the mark, neither party would have desired to
make a contest. :
§ 665. As to Title to Trade-mark.— The first question to be
settled is this: Did M. J. Cole & Co. have any property in
those words, as a portion of a trade-mark to be affixed to
whiskey ? The testimony of Cole, of Gilmore the clerk, and
of Hunt, the partner, established as a fact beyond any reason-
able doubt that Cole & Co. devised the symbol for their own
benefit, although one of their present opponents assisted therein.
The mark was to be used in connection with whiskey, which
M. Murphy & Co., the predecessors of Walch, Brooks, & Kel-
logg, were to manufacture in Cincinnati, Ohio, and of which
534 LAW OF TRADE-MARKS.
M. J. Cole & Co. were to have the exclusive sale in Boston,
Mass. The title was clearly understood to be in M. J. Cole &
Co., notwithstanding the fact that, for the sake of convenience,
the branding-tool was made in Cincinnati, at the expense of
M. Murphy & Co.
§ 666. Good Faith.— The bona fides of the latter firm and
their successors may well be doubted, in connection with the
possession of the branding-tool. It was used upon whiskey
sold to other persons in the West and South; and, contrary to
the contract, expressed or implied, made with M.J. Cole & Oo.
To the latter-named firm, if to anybody, belonged the mark.
But there is one material fact disclosed by the evidence which
determines all their title. The words “ Paul Jones” were
used as a portion of a brand, the other part of which was
“ Paris, Kentucky, Bourbon.” Cole says (155, 158 X ans.),
“Tf anybody bought the whiskey supposing that it was made
in Paris, Kentucky, he would have been deceived.’ He says
that it was thought that that brand would take better with the
trade. (173 X ans.)
§ 667. Imposition upon the Public. — But one conclusion can
be deduced from the evidence in regard to the bona fides of
M. J. Cole & Co. in adopting that which they allege to be their
trade-mark. Their intent was manifestly to impose upon the
credulity of the whiskey-drinking public, by inducing them to
purchase as genuine “ Kentucky Bourbon Co. Whiskey” an
article manufactured at Cincinnati, Ohio. The device had its
inception in fraud, and therefore was worthless for the legitimate
purposes of a trade-mark, even if the Cincinnati whiskey were
proven to be as valuable as that made in Kentucky. Numerous
Judicial decisions support this view of the law. The public
have a right to the genuine thing. M.J. Cole & Co., therefore,
never had any legal property in the words composing the al-
leged trade-mark.
§ 668. No Title in Assignee. — As they had no trade-mark to
assign when going into bankruptcy, it follows that their as-
signee took no such property with the assets.
INTERFERENCES IN PATENT OFFICE. 535
§ 669. Could an Abstract Symbol be assigned ? —It is not
necessary to discuss the question of the possibility of such an
incorporeal interest being conveyed, unless as an incident to
the transfer of the good-will of the business; for there is no
evidence to act upon, in relation to the transfer of the good-
will.
§ 670. Good Faith of Respondents.— How does the case
stand, as regards Walch, Brooks, & Kellogg? They claim as a
trade-mark the words “ Paul Jones, Paris, Kentucky, Bour-
bon,” &c. The said mark is intended to be applied to whiskey
manufactured by them at Cincinnati, Ohio. Their own testi-
mony is conclusive upon that point. Indeed, they do not make
the slightest pretence that the whiskey manufactured by them
is distilled in the State of Kentucky.
§ 671. Want of Equity.— There is no more equity on their side
than on the other. The argument of their counsel at the hear-
ing, That the words constitute a mere arbitrary symbol, and
that no deception was intended by them, does not require long
consideration. The only meaning that general purchasers
would be likely to attach to the words would be that the whis-
key was distilled at Paris, Bourbon County, Kentucky.
§ 672. Conclusion. — Walch, Brooks, & Kellogg have not pre-
sented a lawful trade-mark for registration.
§ 678. Judgment. — The interference is therefore dissolved,
and both applications rejected.
536 LAW OF TRADE-MARKS.
CHAPTER XV.
ABANDONMENT.
How Question may arise.—Error in arguing from. Supposed Analogies. —
When Symbol is discarded by one Person, any other may adopt it.—If
Symbol becomes Free to the Public, its Technical Trade-mark Existence is
extinguished. — Distinction between Abandonment of Trade-mark and that
of other kinds of Property. — What amounts to Abandonment. — Difficulty
of laying down Rule. — Intention is a Necessary Element. — Evidence
thereof must be Clear. — Forbearance to prosecute is not Fatal.— Abandon-
ment in one Country is Abandonment in all Countries. — Conclusion.
§ 674. Abandonment sometimes is alleged as an affirmative
defence, while it may incidentally be drawn into question in
ex parte proceedings upon application for registration. It is
advisable, therefore, to ascertain the import of the term, as ap-
plied to a trade-mark case, and to consider the facts that may
constitute it. But, at the very threshold of the investigation,
we must be on our guard not to fall into error in attempting to
reason from wrong premises or false analogies.
§ 675. A common mistake is this: in confusing notions of
other kinds of rights with that right which consists in property
in a certain emblem or device, with which a manufacturer or
merchant stamps his wares and merchandise. A trade-mark
differs essentially from all other matters of property. For that
reason, we cannot hope to arrive at an intelligent understand-
ing of the subject, unless we sedulously keep several points in
view. Those are distinctions between the dedication or derelic-
tion of tangible property, deliberately yielded into the common
stock of the community or of the world, and the forsaking of a
claim to the exclusive use of a mere shadow of incorporeal
property, as is the emblem or device which is to become a
ABANDONMENT. 537
trade-mark. We have a clear idea of the utter forsaking of
lands, and of the casting of a jewel or coin into the sea, or
upon the highway; and we can clearly conceive the idea of an
abandonment of the right to a patent for an invention, or an
exclusive claim to the product of a person’s literary labor ; but
the subject of cession, actual or tacit, of the right to prohibit
all other persons from marking goods in a certain mode, or with
a peculiar symbol, is a matter that is somewhat more difficult
of comprehension. Let us inspect the lines of demarcation.
§ 676. Property belongs to him who first makes declaration
of an intention to appropriate it to his own use; and the title
remains in him, by the principle of universal law, till he does
some other act which shows an intention to abandon it; for
then it becomes, naturally speaking, publict juris once more,
and is liable to be again appropriated by the next occupant.!
Thus a valuable thing deliberately cast away is an express
abandonment of private claim to its possession, and the finder
becomes its owner. So a conveyance of land by deed, or a
long-suffered adverse possession, is conclusive evidence that
the former owner intended to divest himself of title, in favor of
the party who shall have succeeded to the possession. So, also,
if an inventor from a motive of patriotism, generosity, despair,
or any other cause, acquiesce in the public use of his invention
for two years, he is debarred from subsequently obtaining a
patent therefor ;? or he may abandon his claim to a monopoly at
any instant, and the right to the invention passes at once into
the public stock. In all such cases, whether of tangible prop-
erty or of incorporeal rights emanating therefrom, there is
something to affect the senses, and the land, or jewel, or inven-
tion embodied in a machine or composition of matter, can be
seen and felt; and property in the object or thing may truly be
said to exist. Not so with the symbol that a trader has made
the peculiar mark of his goods. We have seen heretofore that
1 2 Blackst. Com. 9.
2 Adams & Hammond v. Edwards et al., 1 Fish. 1.
538 LAW OF TRADE-MARKS.
there cannot be property in an abstract symbol, whether that
be an original design, or word, or emblem ; for it is only an
index to a certain article of merchandise. That undeniable
truth being conceded, how can we draw a parallel between the
relinquishment of a hold upon something which in itself is prop-
erty, and another thing which until actually affixed to a ven-
dible commodity is purely ideal! The land and jewel continue
to be property under all circumstances; but a trade-mark
ceases to be property the moment that its exclusive use ceases,
and it resumes its ideal state. Its conjunction with a corporeal
thing is like the union of soul and body.
§ 677. The thing abandoned may be instantly and simulta-
neously seized by a large number of persons, and that either in
fact or by operation of law, as in case of a right of common, or
aright to use an invention; and when the original owner’s
grasp is once released, the exclusive right is gone from him for
ever. He cannot regain it, as in the case of a coin tossed by
him into the public street, and which he may be the first to
again pick up. A trade-mark may be discarded and be re-
sumed, unless in the mean time it be taken possession of by
another individual, or by a number of persons with united in-
terests, or by the community in general. In the latter case,
the thing may truly be said to be extinguished, for when all
may use there is lacking the essential element of an exclusive
right. We are supposing that the mark is one that is not per-
sonal in its nature, but one which is associated rather with an
object of commerce than with a certain person. Yet we read
of instances in which courts have held that a man’s name may
lose all idea of personality, and become merely a generic desig-
nation. But we will not stop to discuss exceptional cases.
-§ 678. Now, as to the extinguishment of a trade-mark. Sup-
pose, for the sake of illustration, that a word that has been
coined by a manufacturer to indicate a peculiar product be in-
tentionally disused by said manufacturer, and that all other
1 See §§ 178-181, ante.
ABANDONMENT. 539
persons in the same line of business by common consent adopt
the word as the most suitable name for the thing, — as was the
case as to the word “ Lucilene,” a name given to purified pe-
troleum,! — then that name falls into the domain of commerce,
and is not susceptible of reappropriation by him who first used
it, as a fanciful denomination for his article of manufacture.
But suppose, again, that, after having deliberately abandoned
the mark, the late owner change his intention, while the title
is still in abeyance, he may repossess himself of it, just as he
might upon reflection recover the jewel flung into the sea or
upon the highway. The case of the inventor is quite different.
He has no right to his invention at common law. The right
which he derives is a creature of the statute and of grant, and
is subject to certain conditions incorporated in the statutes and
the grant. He does not get his right to a patent on the ground
of any inherent natural right which he has.?
§ 679. Hereby we see the impropriety of arguing upon deci-
sions made under allegations of abandonment of an invention ;
for as the idea of invention does not enter into the contempla-
tion of the law applicable to trade-mark property,? we must
dismiss the false analogy from mind. To complete and per-
petuate the act of abandonment, there must be a tender, an
acceptance, and an adoption. The only mode by which a trade-
mark can be adopted is by user in the actual affixing of the
mark to merchandise.4 How is it with an invention? If the first
inventor choose to abandon the result of his genius, after per-
fecting it so as to be applicable to a practical useful purpose,
and another and later inventor obtain a patent therefor, he fails
to obtain any benefit, not being the first inventor of the par-
ticular thing. Why? Because the title to the invention passed
to the public, the instant that the only person who had a right
1 See § 252, ante.
2 American Hide and Leather, &c., Co. v. American Tool, &c., Co., 4 Fish.
284.
8 §§ 346, 847, ante. 4 §§ 62, 382-884.
540 LAW, OF TRADE-MARKS.
to a patent dedicated his invention to the common stock of
property. But in the case of discontinuance of the use of a
trade-mark the public gain nothing thereby, except the nega-
tive benefit of precluding an individual from profiting by the
exclusive use of itasasign. Thus in a case! in the Court of
Paris, in 1870, when the plaintiff’s claim to the exclusive use
of the representation of a golden bee, as a trade-mark for hats,
was rejected, what did the public gain by the decision that the
emblem was not a private mark? The court said, among other
things, that, whether as an emblem, or as an ornament, the
bee is common property. Any person might therefore use it as
an ornament for a hatter’s label ox in any other mode; but the
plaintiff had no exclusive right to “‘a bee in his bonnet.”
There is no advantage to the public in the liberty of adorning
their furniture or hats with golden bees; but there is always
presumed to be benefit in the use of an invention, of which
benefit the use is the strongest kind of evidence. If the right
of everybody to use an emblem, name, or word, were to exempt
him from the annoyance of litigation, that might be deemed a
positive benefit, but that such is not the truth must be evident
to all. We have seen many proofs to the contrary in the fore-
going chapters of this book. As evidences of our right to call
a thing by its true name, we might cite authorities by the
score. The name may originally have been the coinage of a
manufacturer to designate his peculiar product; but it may
have instantly become the only true and proper denomination
of the article, wherefore all might use it.
§ 680. What amounts to Abandonment of a trade-mark? It
is more difficult to lay down a rule in this matter than in the
case of corporeal property. The latter we may see and handle.
The product of invention affects the perceptive faculties. We
cannot see a trade-mark unless it is in full vigor. We may see
a perfect representation of a signature or of an emblem of com-
merce, but the trade-mark itself is visible only as an affix of
1 Herold v. Gerbeau, Annales de la Prop., tome xvi. p. 76.
ABANDONMENT. 541
some corporeal vendible object. Hence one difficulty in de-
termining the exact moment when one must be held to have
abandoned a trade-mark. A manufacturer or merchant may
discontinue the stamping or branding of his products for many
years before he discontinues the sale of the goods marked by
him, and may destroy his dies, brands, or stencil-plates; for
he may have laid up a large stock of his wares or products, or
he may have launched them upon the ocean of commerce.
Our Government employs a fac-simile of the very peculiar au-
tograph of Mr. Treasurer Spinner, as a proprietary mark for
national securities, to be sold or exchanged for gold or other
valuables. The printing of bonds and notes bearing that trade-
mark may for ever cease, but the paper evidences of debt re-
main afloat, and the mark continues to be constructively, if not
actually, in use. The nation will not have abandoned the mark
by discontinuing the printing of it. By a parity of reasoning,
a private owner of a trade-mark does not necessarily abandon
it by ceasing to stamp it on goods as his sign-manual or
peculiar emblem.
§ 681. The criterion manifestly is this: Was there an inten-
tion to abandon? Without such intention there could not be
abandonment, although it is equally true that the intention
may be inferred from circumstances of neglect as well as of
positive dereliction, and the party would be concluded thereby.
A person may temporarily lay aside his mark, and resume it,
without having in the mean time lost his property in the right
of user. Abandonment, being in the nature of a forfeiture,
must be strictly proven. For example, if the proprietor of the
word-symbol “ Cocoaine”’ should be met in a suit with the alle-
gation that he had lost all exclusive right to the use of that
trade-mark, it would be incumbent on the party making that
defence to show that he had, by clear and unmistakable signs,
relinquished his claim to it as a trade-mark, so that other
manufacturers or vendors of preparations of cocoa-nut oil had
actually employed it as a generic term. If that point were
542 LAW OF TRADE-MARKS.
established, it would be manifest that the trade-mark had ex-
pired. That is what is meant in French-speaking countries by
the expression, “to let fall into the public domain” (lazsser
tomber dans le domaine public). We must examine the sur-
roundings of each case of imputed surrender, to be enabled to
settle such question of deliberate yielding up.
§ 682. Would it constitute abandonment for the proprietor
of a trade-mark to calmly look on while another files a claim
in the Patent Office for the identical mark? No. Wherefore?
For the reason that assertion of title and the recording thereof.
do not create any thing beyond a rebuttable presumption
of property. So said the Court of Cassation of France, in
1864, in affirming a decision of the Court of Paris... Per cur.:
The deposit does not constitute an exclusive property in the
mark. That is necessary only for the purpose of enabling the
owner to obtain redress for infringement. It is necessary to
inquire always if the right existed previous to the deposit, and
if the depositor has not renounced it.— This ruling is simply
an enunciation of a doctrine that is universally maintained. It
is the law of common sense. No one can obtain a title to lands
by placing a forged paper upon record ; for, although having all
the external appearance of truth, it may have been forged, or
never delivered, and therefore not be a deed in law. So of a
symbol previously appropriated by another as his trade-mark.
The registrant takes nothing by his stealthy motion, and the true
owner is not despoiled thereby ; although the attempt at fraud
may furnish grist for the judicial mill. In an analogous case,?
Clifford, J., held that actual abandonment must be proven, and
that it is not possible to hold that the use of an invention
without the consent of the inventor, while his application was
pending in the Patent Office, could defeat the operation of the
letters-patent afterwards duly granted. It may be that the
owner of the trade-mark was under a disability to register, as
1 Leroy v. Calmel, Annales de la Prop., tome x. p. 193,
2 Dental Vulcanite Co. v. Wetherbee, 8 Fish. 87.
ABANDONMENT. 543
in the case of a resident of France previously to the making of
the late convention of 1869. Yet his title was perfectly valid
at common law. Section 82 of the statute of July 8, 1870,
clearly recognizes this truth, for it makes it penal for any per-
son to “ procure the registry of any trade-mark or of himself
as the owner thereof... by making any false or fraudulent
representations or declarations, verbally (¢.e. orally) or in
writing, or by any fraudulent means,” &&. Now, it is obvious
that if one, by mere registration, could divest another of a
common-law right, said section could never have been written.
Section 83 of the same statute carefully preserves all common-
law remedies for a wrongful use of even unregistered trade-
marks. We see, therefore, that it is not abandonment for an
honest trader, through inability or indisposition, to lie on his
oars while another person attempts to commit an act of piracy.
The wrong-doer is “ hoist by his own petard.” It must, how-
ever, be conceded that a long-continued neglect to attack a
trespasser may be a circumstance tending to prove an intention
to abandon. In one case,! after the commencement of a suit
based upon infringement, the real defendants (although con-
cealed behind others) made an attempt to appropriate the
infringed trade-mark, by going through the form of registering
it as theirs, under the Missouri statute of March, 1866. The
court, by Currier, J., scouted the idea that the law could be
made available for such a nefarious purpose, and said, as to
that statute: “It was not designed to weaken or abridge any
existing rights, or any future right to a trade-mark which
might be acquired in the usual way, or to legalize, in any form
or measure, piracy in trade-marks.” Shepley, J., instructed
the jury in a patent case? that “‘ abandonment means a general
abandonment to the public, and must be shown affirmatively
and positively, as affecting the interest of the party ;
it is dedication to the public; a giving up of the claim to the
1 Filley v. Fassett, 44 Mo. 173.
2 Am. Hide, &., Co. v. Am. Tool, &c., Co., 4 Fish. 305.
544 LAW OF TRADE-MARKS.
monopoly in the invention.”’ In the case of an easement,! the
court said “the presumption of abandonment cannot be made
from the mere fact of non-user. There must be other circum-
stances in the case to raise that presumption. The right is
acquired by adverse enjoyment. The non-user, therefore, must
be the consequence of something which is adverse to the user.”
This point of non-user calls up a case that requires comment.
§ 683. In the New York Common Pleas Court, in 1854,
Ingraham, First J., charged the jury that the defendant was
liable for the sale of leather stamped with a former trade-mark
of the plaintiff’s, although at the time of said sale the plaintiff
employed exclusively a mark of a different device; and that
his property in the original trade-mark was not divested by
discontinuing its use. It may possibly be that the reporter of
the case, although a respectable member of the legal profession,
may have misunderstood the language of the judge. On appeal
to the court, in bane, Daly, J., in delivering the opinion of the
court, said, more correctly: ‘“‘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 manufactured by him, thus
purporting to be of his manufacture, and declared by the de-
fendant at the time of sale to be the genuine Lemoine calfskins.”
If we were to stop here, it might be with the erroneous impres-
sion that the learned judge meant that the mark had not been
abandoned by a non-user for three years. He continued:
“The wrong and injury to the plaintiff consisted in the sale of
calfskins falsely purporting and declared to be of his manufact-
ure; 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
1 Ward v. Ward, 7 Exch. 738.
2 Lemoine v. Ganton, 2 E. D. Smith, 343.
ABANDONMENT. 545
case.” This, then, was not an action for infringement of a
trade-mark ; but was an action for fraudulent competition and
deceit, by means of a certain device that had formerly been a
trade-mark. Lemoine had abandoned that device, and it had
ceased to be a trade-mark. The act of abandonment was com-
pleted the instant that he intentionally discontinued its use —
three years before.
§ 684. Laches.— What may be considered such remissness,
carelessness, or neglect, as shall work a forfeiture of right to a
trade-mark? It has sometimes been contended that a forbear-
ance to prosecute infringers amounted to abandonment. But
this view has not received the sanction of our courts. To be
sure, we find in the “ Official Gazette” of the Patent Office of
January 10, 1872, an opinion of Wylie, J., of the Supreme Court
of the District of Columbia, which, taken just as it appears in
print, affirms that such forbearance does amount to abandon-
ment. It would bea piece of gross injustice to the judge to omit
to state that he receded from the position first assumed by him,
and made all the amends in his power by granting a decree in
direct opposition to his published opinion.! From the published
report, it seems that the complainants are an incorporated
company at Sheffield, England, engaged in the manufacture
of fine cutlery, and are the successors of Joseph Rodgers &
Sons, by whom the business was first established more than a
hundred years ago. They alleged that their name and mark
—a star and a Maltese cross—had been infringed. The de-
fendants are respectable booksellers and stationers in Washing-
ton, D. C., and are dealers in fine penknives, scissors, and other
cutlery. An injunction was asked for. The judge said, enter
alia: “I am of opinion that this suit cannot be maintained by
these complainants. . . . These goods have been manufactured
in Germany, and sold extensively in this country under this
spurious trade-mark, for nearly if not quite a quarter of a cen-
tury. These facts must have been known to the complainants
1 Rodgers & Sons v. Philp & Solomons, Off. Gaz. vol. i. p. 29.
85
546 LAW OF TRADE-MARKS.
almost from the beginning. One of the affiants states that he
himself gave verbal notice of them to a clerk of the complain-
ants, at Sheffield, in 1865, and was informed that his employers
were perfectly aware of all that had been done. And yet, in
all this period, the complainants have taken no measures, either
in this country or in Germany, to vindicate the exclusiveness
of their title to the trade-mark in question. They have seen,
looked on, and permitted these German manufacturers to em-
ploy a similitude of their own trade-mark, and under it to
make extensive sales to the people of this country. This long
acquiescence might not possibly debar the complainants from
remedy for their injury as against the German manufactur-
ers. . . . It tended to encourage, and did encourage, our own
people to part with their money in exchange for these goods.
It was in violation of no law or contract, nor was it'a wrong
done to Rodgers & Sons, of Sheffield, when the goods in ques-
tion were bought by the defendants in the city of New York.
The neglect of these English manufacturers to arrest within a
reasonable period, by legal measures, the violation of their rights
in their own trade-mark by the Germans, amounted in law to a
license to the world to buy the goods from the latter under the
imitation trade-mark. All that can be expected of them is to
take care that they are not cheated themselves, and that they
defraud no one in their turn. It could not be tolerated that
manufacturers, like patentees, should have the right as long
as they should have a trade-mark — it might be for a hundred
years, as in the case of these complainants — to send agents
all over the country, and interfere with the business of every
man who happened to have bought goods manufactured by
other companies, and sold under an imitation trade-mark.”
Excellent! a title to roguery by prescription. Plea of a pirate
that he and his ancestors had been so long engaged in the
business of plundering foreign craft, that his right in the prem-
ises had become perfect, and a prayer that the indictment be
quashed! We might regard this opinion of the judge as a
ABANDONMENT. 547
gleam of judicial pleasantry, were it not for the solemn style of
the document asa whole. By consulting a previous part of
this same opinion, we find that the defendants say in their
answer that the goods were purchased with the knowledge that
they were manufactured in Germany; “that goods of this
manufacture, and stamped with this trade-mark, have been
well-known to persons engaged in the business for nearly if
not quite twenty-five years, as being different from those made
by the English house of Joseph Rodgers & Sons; that they are
of equally good quality with those produced by the English firm,
and can be sold for thirty-three per cent less than these.” We
are all well aware by this time that it is no defence that the
spurious wares are as good as the genuine.! If that could be
received as a defence to a prosecution for infringement, fare-
well to protection! Nor is it a valid answer that the trespass
is of long-continuance. There is, therefore, no just defence to
the bill filed in the case under discussion. So, upon reflection,
thought Judge Wylie. Out of a feeling of tenderness for the
reputation of a judge, as well as to demolish a false authority,
let us now place in print the sequel, which by some fatality
has never found its way into the “ Official Gazette,” or (it is
believed) any other legal periodical or book of reports. On
the 5th day of February, 1872, the cause came on to be heard
before the same judge. He decreed a perpetual injunction
against the defendants, their servants, agents, or employés,
restraining them from passing, putting up, selling, or offering
for sale, penknives, pocket-knives, or other articles of cutlery
other than those manufactured by the complainants, having
imprinted, stamped, or in any wise marked thereon a star and
Maltese cross, or any device substantially similar to, or in any
manner imitating, said device of a star and a Maltese cross
adopted and used by the complainants, Joseph Rodgers & Sons,
as their trade-mark, &c.,&c. In consideration of the honorable
conduct of the defendants, in accepting the situation with good
1 See authorities cited in note to § 336, ante.
548 LAW OF TRADE-MARES.
grace, while not throwing any obstacles in the way of a righteous
result, the complainants remitted the costs. Let us now learn
what other judges have said upon the matter of abandonment
of trade-marks.
§ 685. Story, J., once spoke thus: 1 “ Again it has been said
that other persons have imitated the same spools and labels of
the plaintiffs, and sold the manufacture. But this rather ag-
gravates than excuses the misconduct, unless done with the
consent or acquiescence of the plaintiffs, which there is not the
slightest evidence to establish; or that the plaintiffs ever in-
tended to surrender their rights to the public at large, or to the
invaders thereof in particular.” The circumstances of this
case are very similar to those in the Rodgers & Sons suit; and
the defence therein made set forth infringements by others
upon the plaintiffs, an English house. — And now comes another
witness upon the same side of the question. As to the pretence
of right in plundering foreigners, Woodbury, J., said: 2 “I am
not aware of any principle by. which a usage in this or a for-
eign country is competent evidence in defence of awrong. .. .
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 he knew that
marks of theirs as well as of others were used in this way, and
without redress, in this country as well as abroad. . . . But I
am not aware that a neglect to prosecute, because one believed
he had no rights, or from mere procrastination, is any defence
at law, whatever it may be in 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 before taking out letters. . . . There is something very
abhorrent in allowing such a defence to a wrong, which con-
sists in counterfeiting others’ marks or stamps, defrauding
1 Taylor v. Carpenter, 8 Story, 458.
2 Taylor v. Carpenter, 2 Wood. & M. 1.
ABANDONMENT. 549
others of what had been gained by their industry and skill, and
robbing them of the fruits of their ‘good name,’ merely be-
cause they have shown forbearance and kindness. .. . It is
rather an aggravation to the plaintiffs that many others have
injured them.” — Lest the false doctrine be not sufficiently
exploded, we may cite further authorities, powerful enough to
pulverize the absurdity. When discussing the idea of acquies-
cence operating as an absolute surrender of an exclusive right,
Duer, J., said: 1 “* The consent of a manufacturer to the use or
imitation of his trade-mark by another may, perhaps, be justly
inferred from his knowledge and silence; but such a consent,
whether expressed or 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.” Potter, J., eighteen years
later used substantially the same language,? and held that it is
no defence that the fraud has been multiplied, and further held
that acquiescence cannot be inferred, and is revocable if it
could be. Upon appeal to the general term, two of the judges
held that it was no acquiescence in the plaintiff, where it did
not appear that he had discovered any individual whom he
could attack as an offender, although the plaintiff knew that
persons were trespassing upon him. The third judge thought
that the knowledge of the fact of such infringement for more
than twenty years would be treated as an acquiescence by him.
But not one of the members of the court hinted that such ac-
quiescence could amount to entire abandonment. Currier, J.,
in speaking for the whole court,’ took the same position that
had been before maintained, and said that the infringement of
the plaintiff's mark by others in no way aided the defence.
Said he: “ The depredations of others on plaintiff’s rights fur-
nish no excuse to the defendants for similar acts on their part.
1 Amoskeag Manuf. Co. v. Spear, 2 Sand. S. C. 599.
2 Gillott v. Esterbrook, 47 Barb. 455.
3 Filley v. Fassett, 44 Mo. 173.
550 LAW OF TRADE-MARKS.
It is rather an aggravation to the plaintiff that others have also
injured him. And courts have not shown any disposition to
encourage that line of defence.” We hardly need to pursue
the theme, for the weight of judicial authorities all tend the
same way, in vindication of the venerable maxim,— Jus et
fraus nunquam cohabitant.
§ 686. Yet a sense of truth compels us to cite two French
cases which seem to assert that right and fraud may not only
inhabit the same house, but may dwell together in harmony.
The first is a judgment of the Court of Cassation.1 It has
such an air of moral obliquity about it as almost justifies the
animadversions of the eminent jurists who have criticised and
condemned it. If we carefully scan all the facts, we may pos-
sibly come to the conclusion that the judgment is reconcilable
with the maxim above quoted, and also with that cited and re-
lied upon by the demandants’ counsel, — Contra non valentem
agere non currit prescriptio. It was admitted by the tribunal of
first instance, that, for more than half a century, the files
made and sold by the house of Spencer & Stubs, now Spen-
cer & Sons, of Sheffield, England, had enjoyed an incon-
testable industrial renown ; and that for many years— thanks
to the immunities given on the Continent to the counterfeiting
of foreign products — the manufactures of the demanders had
been imitated in innumerable quantities, with the mark and
name of the genuine house, all of which was done without the
acquiescence of the demanders. By long usage, continued
the mouth-piece of the tribunal, the name and mark had come
to be the characteristic indication of a product; and therefore
the owners had lost all right to the exclusive use by the effect
of a sort of prescription of fact, longi temporis, for the wame
and mark had ceased to indicate origin or ownership. The
advocate-general Bédarrides asks, on appeal, “ Of what prescrip-
tion do they speak? The tolerance of usurpation, can that
serve to found a right?”? The Court of Paris, on appeal, dis-
1 Spencer & Son v. Peigney, Annales de la Prop., tome x. p. 197.
ABANDONMENT. 551
coursed thus: Considering that, for more than fifty years, the
mark composed of a crescent, a Z reversed, and the name of
Spencer has been adopted by French industry in the fabrica-
tion of a species of files; that this mark does not designate the
origin, nor even the nature, of the fabric; that the French fab-
ricants have rendered it common in France, and have given to
it a just celebrity: considering that Spencer & Son, in availing
themselves of article 12 of the treaty of commerce between
France and England of the 10th of March, 1860, had not the
power to take a mark which had become the property of French
industry; that for the purpose of distinguishing their products
they could only take a mark peculiarly their own, and that what
they really did deposit with the clerk of the Tribunal of Com-
merce of the Seine is a mark composed of a crescent, a Z re-
versed, the name of Spencer, and the name of their place of
manufacture, — Sheffield: considering that it is only to the last
mark that Spencer & Son have an exclusive right ; that Peigney
has respected their property on this point, and in placing on
the files made by him the mark which for long years had be-
come proper to French commerce, he has committed no tort;
and adopting in full the reasons of the judges below, let the ap-
peal go for naught, and order that the judgment appealed from
have full and entire effect, and condemn Spencer & Son to the
costs of appeal.
§ 687. We must constantly bear in mind that this decision
of law is based upon the question of fact determined in the
tribunal below. The mark had lost its pristine integrity. Its
individuality was annihilated. It might be likened to a ship
decoyed by false lights and dashed into fragments on the rocks,
to become a common prey. The mischief had been done be-
yond redress. The mark had lost all power to distinguish the
manufacture of any particular person or company. It had be-
come, through an unfortunate concurrence of circumstances, the
mere sign of a class of goods. We perceive, therefore, that this
cannot be deemed, even in theory, to be a case of abandonment.
552 LAW OF TRADE-MARKS.
The law will protect a man’s life, but it cannot restore vitality.
A dead man must remain dead. The tribunal of last resort,
the Court of Cassation, was bound by the fact established be-
low. It said, inter alia: Inasmuch as Spencer & Son have
deposited in France another mark, differenced from the pre-
ceding by the addition of the name of their place of manufact-
ure,—Sheffield, they have an incontestable exclusive right of
property in that; but as this latter mark has not been usurped,
the judgment must be affirmed.— Our wrath subsides, when
thus reaching the inevitable conclusion, that the demanders were
virtually conquerors. The Supreme Court had not the power
to overturn a fact found. It did the best it could by intimat-
ing in clear language that the trivial addition of the name of a
place made a new mark. — As the house of Spencer & Son
never intended to abandon their trade-mark, it had not been
abandoned.
§ 688. The case of Stubs v. Astier et als.,2in the Court of
Paris, in 1864, on appeal from the Tribunal Civ. of the Seine,
involved the same principle. The Tribunal condemned the
defendants, confiscated the spurious goods, consisting of cut-
lery, and imposed a fine. Hence the appeal. The appellate
court said that the mark claimed by the complainant as his
peculiar property had long been in France the index of a prod-
uct of superior quality, and had ceased to be an indication of
the origin of manufacture, but had become the very desig-
nation of the nature of the product of which it is the denom-
ination. That a mark so long known to the public to cover
products of a superior quality would operate to the exclusion
of all others was manifest, and it would cause considerable
damage to French industry to deprive it of the fruit of labor,
to enrich Peter Stubs; that such a result would, in effect, ex-
tinguish the just stipulations of reciprocity, contained in the
treaty of commerce made March 10,1860. It must also be
1 Medicina mortuorum sera est. (Quintil.)
2 Annales de la Prop., tome x. p. 212.
ABANDONMENT. 5538
considered that Peter Stubs can assure his rights, in the wise
limits that the law has traced, by giving to the mark used by
him in France a peculiarity of appearance that can suffice to
prevent confusion between his products and those of other per-
sons. He will then havé obtained all the advantages that the
said treaty intended for foreigners. — When we reflect upon this
judgment and that one immediately preceding it, we come to
the conclusion that the courts did not desire to countenance
fraud in the slightest degree. The originally trustworthy marks
had, through misfortune, — brought on indeed by piracy,—lost
all power to indicate origin or ownership. By a slight modifica-
tion of the device, a perfectly-valid trade-mark could be estab-
lished. The public would know whose products they were
purchasing, and the foreign manufacturers would reap the ad-
vantages legitimately belonging to them. We reach another
conclusion: these two cases do not militate against the gener-
ally-accepted rules in abandonment cases.
§ 689. Abandonment in one Country is Abandonment in all
Countries. — Commerce is not bounded by territorial limits.
The whole of the habitable Globe is hers. It is true that the
owner of a counterfeit mark may not have the means of pursu-
ing pirates in foreign lands, but his rights remain undiminished.
It is only the remedy that is lacking. Reprisals upon trade
must continue in most countries until reciprocity of protection
is guaranteed by treaties or conventions ; but certainly it cannot
be pretended that there is an abandonment when one has no
possible opportunity of attack or defence. Our Government
does not forfeit its exclusive right to certain proprietary marks,
because they are counterfeited in Europe. It is a well-known
fact that when an American merchant visits certain Belgian,
German, and Swiss manufactories, he is asked what English
maker’s trade-mark he desires to have stamped upon his pur-
chases. Doors, similar to those used by vendors of paper-
hangings, are swung open, and all the trade-marks of British
manufacturers are displayed by the shameless depredators.
554 LAW OF TRADE-MARKS.
The victims are well-aware of this practice ; but their hands are
tied. They are strangers and foreigners, and have no stand-
ing in court, until enfranchised by treaty stipulations. Do
they forfeit their rights by reason of mere lapse of time? No.
There not being any intention to abandon their marks, it fol-
lows that their marks are not abandoned. Abandonment must
be as broad as the domain of commerce. The converse of this
proposition is that if one retain his right to a trade-mark in
one country he retains it in all. If the trader were compelled
to repel every assault upon his property, under pain of forfeit-
ure of title to it, what would be the consequence? He would
have to constantly be in a belligerent attitude, and to be ubiqui-
tous. He would soon fall into the “ Slough of Despond.”
Might would inevitably usurp the place of Right. Is he, then,
not compellable to assert his right? Certainly he is, but only
within reasonable limits. The law does not demand the per-
formance of impossibilities. The wisdom of all nations attests
the correctness of this idea.
§ 690. Conclusion deduced from the Foregoing.— The phrase
‘abandonment of a trade-mark” means an intentional discon-
tinuance of it. The original proprietor may readopt it, unless
in the mean time another person shall have lawfully possessed
himself thereof; or unless the device shall have become a mere
designation of quality or kind of product. In the latter case,
the trade-mark is extinguished. If readopted, it has all its
original force and vigor. If a trade-mark be purely personal
in its nature, it cannot be appropriated by another by virtue of
abandonment; for otherwise a false credit might be gained
thereby.
§ 691. It may now be said of the subject of Abandonment,
as of other matters preceding it in this book,—the natural
resting-place has been reached. But the writer does not intend
to abandon the study of this interesting branch of jurisprudence,
— the Law of Trade-marks. The same inquiring spirit which
has impelled his pen will watch the gradual completion of a
ABANDONMENT. 555
system that is yet in its infancy, the foundation of which is laid
in the doctrines collected in these pages. At every step he has
been cheered by additional light. Even Japan, by the lips
and pen of one of her representatives, has furnished valuable
information upon cognate subjects, although not in a shape
available for our present purpose. From clear indications, we
are justified in the belief that all civilized nations will soon
unite in a harmonious code for the protection of the trade-
mark, as the surest guaranty of universal commercial faith.
In the mean time, beneath the touch of able jurists throughout
the domain of Commerce, rough stones shall become as polished
corners of the Temple, and present theories be permanently
established in the intellectual superstructure.
APPENDIX.
TREATIES AND CONVENTIONS.
ConvENTIOoN between the United States and the Austro-Hungarian
Eimpire. Proclaimed June 1, 1872.
ARTICLE I.
Every reproduction of trade-marks which, in the countries or
territories of the one of the contracting parties, are affixed to cer-
tain merchandise to prove its origin and quality, is forbidden in the
countries or territories of the other of the contracting parties, and
shall give to the injured party ground for such action or proceed-
ings to prevent such reproduction, and to recover damages for the
same, as may be authorized by the laws of the country in which
the counterfeit is proven, just as if the plaintiff were a citizen of
that country. °
The exclusive right to use a trade-mark for the benefit of citizens
of the United States in the Austro-Hungarian Empire, or of citi-
zens of the Austro-Hungarian Monarchy in the territory of the
United States, cannot exist for a longer period than that fixed by
the law of the country for its own citizens. If the trade-mark
has become public property in the country of its origin, it shall be
equally free to all in the countries or territories of the other of the
two contracting parties.
Agticte II,
®
If the owners of trade-marks, residing in the countries or terri-
tories of the one of the contracting parties, wish to secure their
rights in the countries or territories of the other of the contracting
parties, they must deposit duplicate copies of those marks in the
Patent Office at Washington, and in the Chambers of Commerce
and Trade in Vienna and Pesth
1 See the note to Article II. of Convention with France.
558 APPENDIX.
ApDITIONAL ARTICLE to the Treaty of Commerce and Navigation
between the United States and Belgium, of July 17, 1858.
Proclaimed July 30, 1869.
The high contracting parties, desiring to secure complete and
efficient protection to the manufacturing industry of their respective
citizens, agree that any counterfeiting in one of the two countries
of the trade-marks affixed in the other on merchandise, to show its
origin and quality, shall be strictly prohibited, and shall give ground
for an action of damages in favor of the injured party, to be pros-
ecuted in the courts of the country in which the counterfeit shall
be proven.
The trade-marks in which the citizens of one of the two countries
may wish to secure the right of property in the other, must be
lodged, to wit: the marks of citizens of the United States at Brus-
sels, in the office of the clerk of the Tribunal of Commerce; and
the marks of Belgian citizens at the Patent Office in Washington.
ConvENTION between the United States of America and France
concerning Trade-marks. Proclaimed Aprii 16, 1869.
ARTICLE I.
Every reproduction in one of the two countries of trade-marks
affixed in the other to certain merchandise to prove its origin and
quality, is forbidden, and shall give ground for an action for dam-
ages in favor of the injured party, to be prosecuted in the courts of
the country in which the counterfeit shall be proven, just as if the
plaintiff were a subject or citizen of that country.
The exclusive right to use a trade-mark for the benefit of citi-
zens of the United States in France, or of French subjects in the
territory of the United States, cannot exist for a longer period
than that fixed by the law of the country for its own citizens.
__ If the trade-mark has become public property in the country of
its origin, it shall be equally free to all in the other country.
Articue II.
If the owners of trade-marks, residing in either of the two
countries, wish to secure their rights in the other country, they
must deposit duplicate copies of those marks in the Patent Office
TREATIES AND CONVENTIONS. 559
at Washington,! and in the clerk’s office of the Tribunal of Com-
merce of the Seine, at Paris. |
Convention between the United States and the German Empire.
‘ Proclaimed June 1, 1872.
ArTICLE XVII.
With regard to the marks or labels? of goods, or of their pack-
ages, and also with regard to patterns and marks of manufacture
and trade,’ the citizens of Germany shall enjoy in the United
States of America, and American citizens* shall enjoy in Germany,
the same protection as native citizens.
AppirionaL Articte to the Treaty of Navigation and Commerce
between the United States of America and the Emperor of
Russia, of the 18th of December, 1832. Concluded and
signed at Washington, January 27, 1868.
The high contracting parties, desiring to secure complete and ef-
ficient protection to the manufacturing industry of their respective
citizens and subjects, agree that any counterfeiting in one of the
! Many errors have been committed in consequence of a misconception of
the scope and meaning of the language of this article. The Commissioner
of Patents, on the 6th of December, 1872, made a decision thereon of which
the following is an extract: “That clearly means that a resident of this country
wishing to secure protection for his trade-mark in France must give construc-
tive notice to the people of that country, by depositing duplicate copies in the
clerk’s office of the Tribunal of Commerce of the Seine; and so of a resident
of France, who is required to deposit his mark in this Office. So far as the
tribunals of this country are concerned, the mere deposit of copies of a mark in
this Office, by residents of this country, does not amount to registration. ‘The
Act of Congress of July 8, 1870, is the governing rule in the latter case” (Matter
of Lanman & Kemp).
Before the passage of the Act of 1870, many residents of the United States
deposited copies of their marks in the Patent Office. That was done without
authority of law, and consequently no certificate of such deposit can be
received in evidence. This is an important point.
2 The use of this word must not be permitted to mislead into the idea that
labels are technical trade-marks ; for, as has been shown in the foregoing treatise,
they are only mere vehicles for trade-marks.
8 These five words mean trade-marks proper.
4 Observe the broad term, which must be limited to citizens of the United
States.
560 APPENDIX.
two countries of the trade-marks affixed in the other on mer-
chandise to show its origin and quality, shall be strictly prohibited
and repressed, and shall give ground for an action of damages in
favor of the injured party, to be prosecuted in the courts of the
country in which the counterfeit shall be proven.
The trade-marks in which the citizens or subjects of one of the
two countries may wish to secure the right of property in the
other, must be lodged exclusively, to wit: the marks of citizens of
the United States in the Department of Manufuctures and Inland
Commerce at St. Petersburg, and the marks of Russian subjects at
the Patent Office in Washington.
LAWS OF VARIOUS COUNTRIES.
AUSTRIAN LAW OF DECEMBER 7, 1858.
I. General Provisions.
Art. 1.— Under the name of trade-marks are understood, in
the present law, the particular signs serving to distinguish in com-
merce the products and the merchandise of one manufacturer from
the products and merchandise of another (emblems, ciphers, vign-
ettes, &c., constituting such signs).
Art. 2.— When a manufacturer desires to secure the exclusive
use of a trade-mark, he must register it, conformably to the provi-
sions of the following chapter.
Art. 3.— A person cannot obtain an exclusive right to marks
consisting of signs in general use in commerce for particular mer-
chandise, nor to marks which consist only of letters, words, or
numerals, nor of the arms of the State or of its provinces.
Art. 4.— The exclusive right to a trade-mark only prohibits
other manufacturers from the right to use the same mark on the
species of merchandise belonging to the production or objects of
commerce and industry to which the protected mark has been ap-
propriated.
Art. 5.— The right to an exclusive mark is inherent in the in-
dustrial enterprise to which the mark is attached. This right is
extinguished with the enterprise. A change of the enterprise
changes also the proprietorship. In this case, however, the new
LAWS OF VARIOUS COUNTRIES. 561
proprietor is obliged to have within three months the mark tran-
scribed in his name under penalty of forfeiture, except always in a
case where the manufacture shall be continued by the widow or a
minor heir of a manufacturer, or on account of an estate in succes-
sion or in bankruptcy.
Arr. 6.— No person shall arbitrarily take the name, the firm-
title, nor the escutcheon or denomination of another manufact-
urer or native, to designate merchandise or products.
Art, 7.— All that is stated in the present law in regard to
trade-marks shall apply equally to marks borne on packages,
boxes, vases, envelopes, &c.
Art. 8.— The present law does not change any of the provi-
sions in regard to particular marks ordained for certain classes of
merchandise, especially the provisions as to stamping.
II. Registration of Marks.
Art. 9.— The mark of which a manufacturer desires to secure
the exclusive right (art. 2) must be deposited in duplicate at the
Chamber of Commerce and Industry of the district in which his
manufactory is situate and carried on. One of the copies shall re-
main on deposit at the Chamber of Commerce and Industry, and
be attached to the register of inscription; the other is returned to
the depositor furnished with the statements designated in the fol-
lowing article.
Art. 10.— On each of the two copies the employé or function-
ary appointed for the purpose by the Chamber of Commerce and
Industry shall write:— a, the number of the order of registry;
6, the day and hour of presentation; c, the name of him for whom
the mark has been registered; d, the designation of the commercial
enterprise to which the work is appropriated ;— to which he shall
affix his signature and seal of office.
Ant. 11.—The registration is subject to a tax of 10 florins,
which shall be paid into the fund of the Chamber of Commerce
and Industry.
Art. 12.— From the day and the hour of the presentation of the
mark at the Chamber of Commerce and Industry commences the
right of the depositor to the exclusive use of the mark, and it is as
of this period that his right of priority shall be judged, in case the
same mark shall be deposited by another person in the same Cham-
ber or in other Chambers of Commerce and Industry.
Art. 13.— To obtain the transcription of the right to a mark,
in the sense of article 5, the applicant must present the proof of
36
562 APPENDIX.
acquisition of title to the industrial enterprise in question. The
transcript is subject to the same tax as the first registration.
Arr. 14.—The Chamber of Commerce and Industry shall al-
ways keep the register of marks open to the inspection of the
public.
IIL. Usurpations, Contraventions, and Penalties.
Art. 15.—Every usurpation of right to a mark, whether by
reason of unlawful appropriation or the counterfeiting of a mark
for the sale of merchandise bearing the spurious mark, shall give
the right to the injured party to demand the final cessation of
unlawful use of said mark, and its suppression on merchandise
invested therewith and intended for sale. The injured party may
also demand the destruction of instruments and appliances used
exclusively or principally to counterfeit said mark. The right of
the injured party to recover damages for the harm suffered in
consequence of the usurpation of his right to the mark shall be
adjudged according to the provisions of the civil code.
Art. 16.—It is counterfeiting when the marks in question can-
not be distinguished one from the other without requiring an in-
spection more keen than ordinary.
Art. 17.— The provisions contained in article 15 are also ap-
plicable against those — a, who illegally appropriate the name, the
firm-title, the escutcheon, or particular denomination of the com-
mercial establishment of an industrial centre or producer, to des-
ignate merchandise intended for sale; and those — 0, who expose
for sale products or merchandise marked with an interdicted sign
of this nature.
Art. 18. —If the usurpation (arts. 15 and 17) has been know-
ingly committed, the wrong-doer is amenable to damages in
from 25 to 500 florins, independently of the penalties which may
have been pronounced against him, according to the provisions of
the general penal code.
Art. 19.— In case of repetition of the offence, the penalty shall
be doubled. In case of further repetition, the wrong-doer shall be
amenable, independently of damages, to an imprisonment of from
one week to three months.
Arr. 20.—If the fine should be such as might too sensibly
affect the pecuniary means of the condemned, or exhaust the re-
sources needed by him for the subsistence of himself and family, or
hinder him from satisfying the judgment for damages, the fine
shall be converted into an imprisonment of one day for each sum
of 5 florins.
LAWS OF VARIOUS COUNTRIES. 563
Arr. 21.—The judge of the misdemeanor may also order the
judgment to be made public.
Art. 22.—The amount of fines shall go into the funds of the
poor of the place where the wrongful act shall have been com-
mitted.
IV. On Authorities and Mode of Procedure; and V. On
Transitory Provisions, are not of general interest.
BAVARIA.
In Bavaria, a law of March 5, 1840, regulates property in trade-
marks, labels, &c. From) the time of the passage of that law the
mark has not been obligatory, but may consist of the name of the
fabricant, accompanied by the indication of his place of manufact-
ure; or in any emblem whatever.
To’secure the exclusive property in the mark chosen by him, the
manufacturer must make before the police authorities of his district
a declaration of the mark adopted by him, and deposit a represen-
tation and one copy of it. This declaration is to be inscribed in
a special register, and a certificate delivered to the declarant. This
register is public, so that all may take notice of it.
The punishment for counterfeiting is a fine of from 10 to 50 florins,
doubled for a second offence, besides temporary or final suspension
from the manufacturing or other industry of the counterfeiter, ac-
cording to circumstances. This is in addition to damages to the
party injured.
This law is applicable to foreign trade-marks and firm-names,
always upon the condition that the owners affix to their products
their names and places of domicile, or make the declaration or
deposit with the police authorities in one of the districts of the
Kingdom of Bavaria, — Provided the same protection shall be
accorded and assured to Bavarians in the country of the foreign
manufacturer.
BELGIUM. .
The French legislative rules still govern in the matter of trade-
marks. Thus there are still in vigor the decrees of 1801 relative
to hardware and cutlery ; the law of 1808 relative to manufactures,
fabrics, and workshops; the imperial decree of 1810 containing
provisions for the suppression of the counterfeiting of trade-marks
on hardware and cutlery; and the imperial decree of 1809 relating
to the conseils de prud’ hommes.
564 APPENDIX.
To the said laws are added the royal decree of 1818 relative to
marks of makers of pipes, and that of 1820 concerning manufact-
ure of cloths. The pipes, their labels, boxes, &c., are to bear the
print of the arms of the city or comnfune where made. All kinds
of cloths composed wholly or in part of wool are to bear labels
announcing their national origin. The counterfeiting of the said
marks is to be punished as stated in the laws.
Property in labels, signs, and names of merchants is not protected
in Belgium by any special law; the principles of the common law
being alone applicable to the repression of usurpation of this kind
of property.
CANADA.
“An Act to amend the law relating to the Fraudulent Marking
of Merchandise,” which took effect on the first day of September,
1872, is very similar to the British Act of 1862.
Under the Act respecting Trade-marks, &c., of 1868, it is pro-
vided that “all marks, names, brands, labels, packages, or other
business devices, which may be adopted for use by any person in
his trade, business, occupation, or calling, for the purpose of dis-
tinguishing any manufacture, product, or article of any description
by him manufactured, produced, compounded, packed, or offered
for sale, no matter how applied,” &c., &c., may be registered; and
timber and lumber upon which labor has been expended are deemed
manufactures.
The owner of the mark may petition for the cancellation thereof:
The mark may be assigned. In case of interference of an applica-
tion with a mark already registered, the Minister of Agriculture
shall examine witnesses for the purpose of establishing the owner-
ship, and may order entry or cancellation, or both.
The proprietor of a mark may have the same registered by de-
positing with the Minister of Agriculture a drawing and descrip-
tion in duplicate of such mark, together with a declaration that
the same was not in use to his knowledge by any other person than
himself at the time of his adoption thereof. It shall then be
examined, and if not identical with or closely resembling any regis-
tered mark, it shall be registered, and a certified copy of the draw-
ing and description be returned to the proprietor. The certificate
of the Minister or of his Deputy shall state the day, month, and
yew of the entry in the “Trade-mark Register;” and such cer-
tificates shall be evidence of the facts therein alleged.
LAWS OF VARIOUS COUNTRIES. 565
DENMARK.
The counterfeiting of trade-marks or of stamps is punishable by
the ordinance of 1840, with imprisonment not exceeding four years,
or in minor cases with fines.
ENGLISH ‘‘ MERCHANDISE MARKS ACT” OF 1862.7
Construction of Words.
1. In the construction of this act the word “person” shall in-
clude any person, whether a subject of Her Majesty or not, and
any body corporate or body of the like nature, whether constituted
according to the law of this country or of any of Her Majesty’s col-
onies or dominions, or according to the law of any foreign country,
and also any company, association, or society of persons, whether
the members thereof be subjects of Her Majesty or not, or some
of such persons subjects of Her Majesty and some of them not,
and whether such body corporate, body of the like nature, company,
association, or society be established or carry on business within
Her Majesty’s dominions or elsewhere, or partly within Her Maj-
esty’s dominions and partly elsewhere; the word “mark” shall
include any name, signature, word, letter, device, emblem, figure,
sign, seal, stamp, diagram, label, ticket, or other of any other de-
scription; and the expression “ trade-mark” shall include any and
every such name, signature, word, letter, device, emblem, figure,
sign, seal, stamp, diagram, label, ticket, or any other mark as afore-
said lawfully used by any person to denote any chattel, or (in Scot-
land) any article of trade, manufacture, or merchandise, to be an
article or thing of the manufacture, workmanship, production, or
merchandise of such person, or to be an article or thing of any
peculiar or particular description made or sold by such person, and
shall also include any name, signature, word, letter, number, figure,
mark, or sign which, in pursuance of any statute or statutes for the
time being in force relating to registered designs, is to be put or
1 This Act embraces not only technical ‘“ trade-marks,” but also all other
kinds of “marks” for goods. It contains no provision for registration. Mr.
Roebuck, the chairman of the committee of the House of Commons having the
matter in charge, moved “ That a system of registration of trade-marks be
adopted in this bill.” The motion was put and lost. The Cutler’s Company
of Sheffield register trade-marks for cutlery made in a small district. Many
manufacturers enter their marks at Stationers’ Hall, under a supposed authority
of the copyright law. It is difficult to conceive what legal benefit can be
derived from such entry, beyond fixing a date of claim.
566 APPENDIX.
placed upon or attached to any chattel or article during the exist-
ence or continuance of any copyright or other sole right acquired
under the provisions of such statutes or any of them; the word
“misdemeanor” shall include crime and offence in Scotland; and
the word “court” shall include any sheriff or sheriff-substitute in
Scotland.
Forging a Trade-mark or falsely applying any Trade-mark with
intent to defraud, a Misdemeanor.
2. Every person (&c. &c.) so committing a misdemeanor shall
also forfeit to Her Majesty every chattel and article belonging to
such person to which he shall have so unlawfully applied, or caused
or procured to be applied, any such trade-mark or forged or coun-
terfeited trade-mark as aforesaid, and every instrument in the pos-
session or power of such person, and by means of which any such
trade-mark, or forged or counterfeited trade-mark as aforesaid,
shall have been so applied, and every instrument in the possession
or power of such person for applying any such trade-mark or forged
or counterfeit trade-mark as aforesaid, shall be forfeited to Her
Majesty; and the court before which any such misdemeanor shall
be tried may order such forfeited articles as aforesaid to be de-
stroyed or otherwise disposed of as such court shall think fit.
Applying a forged Trade-mark to any Vessel, Case, Wrapper,
c&c., in or with which any Article is sold or intended to be sold,
a Misdemeanor.
3. (This title sufficiently expresses the subject.)
Selling Articles with forged or false Trade-marks after 31st
December, 1863, Penalty equal to value of Article sold, and a
sum not exceeding 5l. nor less than 10s.
4, (For the present purpose this is sufficiently expressed in the
title.)
Additions to and Alterations of Trade-marks made with intent to
defraud to be deemed Forgeries.
5. (Every addition, alteration, or imitation, with intent to de-
fraud, included.)
Any Person who, after 31st December, 1863, shall have sold an
Article having a false Trade-mark to be bound to give Infor-
mation where he procured it. Power to Justices to Summon
Parties refusing to give Information. Penalty for Refusal, 51.
6. (For the present purpose this is sufficiently expressed in the
title.)
LAWS OF VARIOUS COUNTRIES. 567
Marking any false Indication of Quantity, &c., upon an Article
with intent to defraud, Penalty, a sum equal to the value of
the Article and the further sum not exceeding 51, and not less
than 10s. :
7. (The same may be said of this.)
Selling or exposing for Sale after the 81st December, 1863, Ar-
ticles with false Statement of Quantities, dc.. Penalty not
more than 51. or less than 5s.
8. (Sufficient for present purposes.)
Proviso that it shall not be an Offence to apply Names or Words
known to be used for indicating particular Classes of Manu-
Jactures.
9. (Sufficient for present purposes.)
Description of Trade-marks and forged Trade-marks in Indict-
ments, de.
10. In every indictment, pleading, proceeding, and document
whatsoever in which any trade-mark shall be intended to be men-
tioned, it shall be sufficient to mention or state the same to be a
trade-mark without further or otherwise describing such trade-
mark, or setting forth any copy or fac-simile thereof; and in every
indictment, pleading, proceeding, and document whatsoever in
which it shall be intended to mention any forged or counterfeit
trade-mark, it shall be sufficient to mention or state the same to
be a forged or counterfeit trade-mark without further or otherwise.
describing such forged or counterfeit trade-mark, or setting forth
any copy or fac-simile thereof.
Conviction not to affect any Right or Civil Remedy.
11. The provisions in this act contained of or concerning any
act, or any proceeding, judgment, or conviction for any act hereby
declared to be a misdemeanor or offence, shall not, nor shall any
of them take away, diminish, or prejudicially affect any suit, pro-
cess, proceeding, right, or remedy which any person aggrieved by
such act may be entitled to at law, in equity, or otherwise, and
shall not, nor shall any of them exempt or excuse any person from
answering or making discovery upon examination as a witness or
upon interrogatories, or otherwise, in any suit or other civil proceed-
ing: Provided always, that no evidence, statement, or discovery
568 APPENDIX.
which any person shall be compelled to give or make shall be ad-
missible in evidence against such person in support of any indict-
ment for a misdemeanor at common law or otherwise, or of any
proceeding under the provisions of this Act.
Intent to defraud, &c., any particular Person need not be alleged
in an Indictment, &c., or proved.
12. (Sufficient for present purpose.)
Persons who aid in the Commission of a Misdemeanor to be also
guilty.
18. (Sufficiently expressed.)
Punishment for Misdemeanor under this Act.
14, Imprisonment for not more than two years, with or without
hard labor, or by fine, or both by imprisonment with or with-
out hard labor and fine, and also by imprisonment until the fine
(if any) shall have been paid and satisfied.
Recovery of Penalties.
15. (This provides for summary proceedings, &c.)
Summary Proceedings before Justices to be within 11 and 12
Vict. c. 48.
16. (Sufficient for present purpose.)
In Actions Penalties to be accounted for in like Manner as other
Moneys payable to the Crown, and Plaintiffs to recover full
Costs of Suit.
17. (Sufficient for present purpose.)
Limitations of Actions, &e.
18. Three years next after the committing of the offence, or one
year next after the first discovery thereof by the person proceed-
ing.
After 31st December, 1863, Vendor of an Article with a Trade-
mark to be deemed to contract that the Mark is genuine.
19. (Sufficient for present purpose.)
After the 31st December, 1863, Vendor of an Article with Descrip-
tion upon it of its Quantity to be deemed to contract that the
Description was true.
20. (Sufficient for present purpose.)
LAWS OF VARIOUS COUNTRIES. 569
In Suits at Law or in Equity against Persons for using forged
Trade-marks, Court may order Article to be destroyed, and
may award Injunction, de.
21. (Sufficient for present purpose.)
Persons aggrieved by Forgeries may recover Damages against
the guilty Parties.
22. (Sufficient for present purpose.)
Defendant obtaining a Verdict to have full Indemnity for Costs.
23, (. . . “Unless the court or a judge thereof shall direct that
costs of the ordinary amount only shall be allowed.”)
A Plaintiff suing for a Penalty may be compelled to give Se-
curity for Costs.
24. (Sufficient for present purpose.)
Act not to affect the Corporation of Cutlers of Hallamshire nor
to repeal 59 G. 3, ¢. 7.
25, (Sufficient for present purpose.)
Short Title.
26. The expression “The Merchandise Marks Act, 1862,” shall
be a sufficient description of this act.
FRENCH LAW OF JUNE 23, 1857.
Tirte I,— Of the Right of Property in Marks.
Art. 1.— The mark of manufacture and commerce is optional.
Decrees rendered in the form of regulations of public administra-
tion can always, except in certain cases, declare marks to be obliga-
tory for the products that they specity. As marks of manufacture
and of commerce, shall be considered names under a distinctive form,
denominations, emblems, imprints, stamps, stamped tickets, vign-
ettes, reliefs, letters, ciphers, envelopes, and all other signs serving
to distinguish the products of a manufacturer and the objects of a
commerce.
Art. 2.—No one can claim the exclusive property of a mark,
unless he shall have deposited two fac-similes thereof with the
clerk of the Tribunal of Commerce of his domicile.
Art. 3.— The deposit has effect but for fifteen years. The
property in a mark may always be protected for a new term of
fifteen years by means of a new deposit.
570 APPENDIX.
Art. 4.—Besides the charge for stamp and of registration,
there is a legal charge fixed at one franc for the drawing-up of the
entry of each mark and for the cost of proceeding.
Tiriz II. — Dispositions Relative to Foreigners.
Axr. 5.— Foreigners who possess in France establishments of
manufacture and commerce, enjoy for the products of their estab-
lishments the benefit of the present law upon fulfilling the for-
malities that it prescribes. ,
Art. 6.— Foreigners and the French whose establishments are
situated outside of France, shall equally enjoy the benefit of the
present law for the products of their establishments, if, in the
countries where they are situated diplomatic conventions have
established reciprocity for French marks. In this case, the deposit
of foreign marks shall take place with the clerk of the Tribunal of
Commerce of the department of the Seine.
Tire ITI. — Penalties.
Art. 7.— The punishment shall be a fine of from 50 to 3000
francs, and with imprisonment of from three months to three years,
or of one of these penalties only : —
ist. For such as shall have counterfeited a mark or made use of
a counterfeit, mark ;
2d. For such as shall fraudulently affix to their products or the
objects of their commerce a mark belonging to another ;
3d. For such as shall have knowingly sold or exposed for sale
one product or more than one product invested with a false mark
fraudulently imitative or bearing indications tending to deceive
the purchaser as to the nature of the product.
Arr. 9.— They shall be punished with a fine of from 50 to 1000
francs, and with imprisonment of from fifteen days to six months,
or with one or the other of such penalties : —
Ist. Who shall not have affixed to their products a mark de-
clared to be obligatory ;
2d. Who shall have sold or exposed for sale one product or
more than one product not bearing the obligatory mark for that
species of product ;
3d. Who shall have contravened the provisions rendered in exe-
cution of article 1st of the present law.
Art. 10.— The penalties established by the present law are not
cumulative.
The heavier penalties are only to be pronounced for acts done
anterior to the first act of pursuit.
LAWS OF VARIOUS COUNTRIES. 571
Arr. 11.— The penalties prescribed by articles 7, 8, and 9 may
be increased to double in case of repetition of the offence. It is
such repetition when within the five years anterior a condemnation
shall have been pronounced against the prisoner for one of the
misdemeanors provided for in the present law.
Art. 12.— Article 453 of the penal code shall apply to the mis-
demeanors under the present law.
Art. 13.— Besides, offenders may be deprived of the right of
participating in election of Tribunals and of Chambers of Com-
merce, of Consulting Chambers of Arts and Manufactures, and of
Councils of Selectmen, for a term not exceeding ten years.
The Tribunal may order the posting-up of the judgment in
places to be determined, and its insertion in full in newspapers to
be designated by it; the whole at the cost of the condemned.
Art. 14.— The confiscation of products recognized as contrary
to the provisions of articles 7 and 8, even in cases of acquittal,
may be- pronounced by the Tribunal, besides the apparatus which
especially served for the commission of the wrong.
The Tribunal may order that confiscated products shall be de-
livered to the owner of the mark counterfeited, or fraudulently
affixed, or imitated, independent of, and in addition to ample dam-
ages that may have been given.
It shall prescribe, in all cases, the marks adjudged to be counter-
feited contrary to the provision of articles 7 and 8.
Arr. 15.—In the cases premised in the first two paragraphs of
article 9, the Tribunal shall prescribe always that the marks de-
clared to be obligatory shall be affixed to the products subject
thereto.
The Tribunal may pronounce the confiscation of products, if the
prisoner shall have undergone during the five last preceding years
a condemnation for one of the misdemeanors provided in the first
two paragraphs of article 9.
Titte IV.
Art. 16.— Civil actions relative to marks are brought before
the civil tribunals and judged as summary matters. (The re-
mainder of this title relates to the mode of procedure. Title V.,
which contains the remaining part of the Act, relates to general
and transitory matters, as, for example, the seizure and condemna-
tion of foreign merchandise falsely bearing either the mark or the
name of a resident of France; and other subjects of but local
interest.)
572 APPENDIX.
HOLLAND.
There is no especial law on the subject of protection of trade-
marks and stamps; but the infringement or counterfeiting thereof
is punished by the ordinary penal code.
PRUSSIA.
Legislative enactments protect trade-marks and manufacturers’
names. Whoever shall put a mark upon merchandise or the en-
velopes thereof bearing the name, firm-title, or domicile of another
manufacturer, or who knowingly shall commit to commerce mer-
-chandise bearing false marks, is punished by a fine of from 50 to
1000 dollars, and, in addition thereto, with imprisonment of one
year or more, according to circumstances. These penalties are
equally applicable when a Prussian shall counterfeit the mark of
a foreigner, but only when international treaties or the laws
of such foreigner’s country shall guaranty reciprocity to Prussian
subjects.
ROME.
There exist in what were lately the Pontifical Dominions two
kinds of marks: 1st, the mark affixed to objects made by the
Government; 2d, the private mark placed by each manufacturer
upon his products. This latter mark is not obligatory, and fabrics
bearing such private mark need not the official stamp to indicate
the origin of the goods. However, some kinds of fabrics bear the
Government stamp.
Woollen and cotton cloths have attached to the weft a leaden
seal; and certain tissues and skins, presented at the Custom-house,
accompanied by a certificate of the commercial authority, are fur-
nished by the Government officials with a leaden stamp, as a guar-
anty of nationality.
RUSSIA.
Trade-marks are not obligatory; but stamped products enjoy
very notable advantages. Thus, these products are not confiscated
when found united to foreign merchandise not provided with a
customs-stamp; and when these products are reimported into
Russia, they enter free of custom-house duty.
The originator of a new product must, if he wish to stamp such
product, make a declaration at the Department of Manufactures,
and deposit a copy of his mark, indicating his full name and his
LAWS OF VARIOUS COUNTRIES. 573
place of manufacture. If the proprictor transfer his place of busi-
ness, he should instruct the said Department, which may direct the
stamp to be changed.
The fraudulent application upon Russian products of marks be-
longing to other makers is punished as counterfeiting, and the mer-
chandise falsely marked is delivered over to the one whose mark
has been simulated. If Russian marks are affixed to foreign goods,
the said goods are confiscated, and the wrong-doer fined. The
consequences are the same if Russian products are invested with
false seals imitating those of the Customs, with the fraudulent
intent that the same shall be accepted as products of foreign
origin.
SARDINIA.
The trade-mark has been obligatory ever since the year 1725.
By a royal edict of 1733 each manufacturer and dyer of woollen
stuffs was obliged to affix to his fabrics a mark, a representation of
which was to be deposited with the secretary of his district. For
any violation of the right of mark, a fine was to be imposed and
the merchandise marked with the false mark confiscated. More
recent legislation has imposed new obligations on manufactures of
tissues.
SAXONY.
Trade-marks are not obligatory. The manufacturer whose mark
has been counterfeited may obtain legal redress. But although
the mark is not obligatory, yet where Saxon products are to be
exported to certain countries, especially America, they must be
accompanied with a certificate of origin.
SPAIN.
The mark is obligatory upon cloths only: such ig the regula-
tion of 1832. Thereby the manufacturers were obliged to mark
their cloths according to the degrees of quality, first, second, or
third.
WIRTEMBERG.
By the general regulation of 1836, each manufacturer is obliged
to affix to his products a mark of his name and device. An im-
pression of this mark must be deposited with a Government offi-
cial. Simulation of marks is punished as counterfeiting.
5714 APPENDIX.
PATENT OFFICE FORMS.
APPLICATION FOR REGISTRATION.
PETITION.
1. By a Sore Appricant.
To the Commissioner of Patents:
Your petitioner respectfully represents that he is domiciled? in
the United States, and is engaged in the manufacture and sale of
[melodeons] at [the city of New York, N. Y.], and that he is en-
titled to the exclusive use upon said class of merchandise of the
trade-mark described in the specification hereto annexed, and
shown in the fac-similes to be herewith filed.
He therefore prays that said trade-mark may be registered and
recorded in the Patent Office, in accordance with law.
[Henry H. Braviey.]
2. By a PartNeERsaHIp.
To the Commissioner of Patents :
Your petitioners respectfully represent that they constitute the
firm of [Scott, Newman, & Co.], domiciled in [the United States],
and engaged in the manufacture and sale of [cotton-sheetings] at
[Fall River, Massachusetts]; and that, as said firm, they are en-
titled to the exclusive use, upon said class of merchandise, of the
trade-mark described in the specification hereto annexed, and
shown in the fac-similes to be herewith filed.
They therefore pray that said trade-mark may be registered and
recorded in the Patent Office, in accordance with law.
[Scort, Nrwman, & Co.,
By Martin Scort, a member of the firm.]
1 The statute reads: “any person or firm domiciled in the United States.’
Domicile, in certain cases, being an essential prerequisite to registration, should
be averred.
PATENT OFFICE FORMS. 575
8. By «a CorporaTION.
To the Commissioner of Patents:
. Your petitioner, a corporation created by authority of [section
4 of chapter 80 of the Acts of Congress of 18707], respectfully
represents, that it is engaged in the manufacture and sale of [boots
and shoes] at [Washington, District of Columbia]; and that it is
entitled to the exclusive use, upon said class of merchandise, of
the trade-mark described in the specification hereto annexed, and
shown in the fac-similes to be herewith filed.
It is therefore prayed that said trade-mark may be registered and
recorded in the Patent Office, in accordance with law.
[Wasuineron Ciry Boor anp Suox
[L. 8.] Manvracturine Company,
By Rozert Batx, President.’]
PETITION with PowER oF ATTORNEY.
To the Commissioner of Patents:
Your Petitioner [dc., as in the foregoing forms, to the end of
the prayer, and then continue]; and he hereby appoints Solomon
Sharp, of the city New York, N. Y., as his attorney in the presen-
tation and prosecution of this application, to make the necessary
amendments thereto, and to receive the certificate of registration.
[Name.]
SPECIFICATION.
Specification of a trade-mark used by [Scott, Newman, & Co.],
of Fall River, Massachusetts, for cotton-sheetings.
[Our] trade-mark consists of a [crescent-shaped symbol and the
word “ Excelsior.” These have been and are generally arranged,
as shown in the accompanying drawing, above and below the fig-
1 Or of any other authority of the United States, or of any State or Territory
thereof, as the case may be. Or if the corporation be located in any foreign
country which by treaty or convention affords similar privileges to citizens of the
United States (sec. 77, Act of 1870), the form may be thus: ‘‘a corporation
located in the city of Paris, in the Republic of France,” &c.
2 Or any other officer of the corporation (sec. 77, Act of 1870).
% The signature of the applicant is sufficient to authenticate this instrument,
without its being acknowledged before a public officer.
576 APPENDIX.
ure of a man represented as ascending the side of a mountain and
carrying a banner, upon which is inscribed the word “ Excelsior; ”
and the whole inclosed within an ornamental border, substantially
like that shown in the drawing. But the figure of the man with
the banner may be omitted, or some other device substituted for
it, and the border may be changed at pleasure, or omitted alto-
gether, without materially changing the character of our trade-mark,
the two essential features of which are the crescent-shaped symbol
and the word “ Excelsior” ].
This trade-mark we have used in our business for [ten years last
past. The particular goods upon which we have used, and still use
it, are made of cotton, and known as “sheetings;” and we are ac-
‘ eustomed to print it, in blue ink, upon the outside of each piece of
the manufactured goods. We have also printed it upon labels,
which have afterward been pasted upon the separate pieces of sheet-
ings, and also placed upon the outside of the cases in which the
goods have been packed.
Scorr, Newman, & Co.,
By Martin Scort, a member of the firm.]
Witnesses :
Benjamin F. Lloyd,
Merwin Hallibow. ;
AFFIDAVIT UPON APPLICATION FOR REGISTRATION OF A
TRADE-MARK.
[Commonwealth of oo s8.]
County of Franklin. :
Personally appeared before me, a [justice of the peace],? the
above-named [Martin Scott], who, being duly sworn, deposes and
says that [he is a member of the firm of Scott, Newman, & Co.,
above named]; that [said firm] has the right to the use of the
trade-mark described in the foregoing specification, 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 the
1 Or State of New York, or Territory of Idaho, or Kingdom of Spain, as the
case may be.
2 As to the various officers before whom an oath may be taken for this pur-
pose, see § 821. See, also, as to the proper official seal of a notary public.
PATENT OFFICE FORMS. 577
fac-similes presented for record truly represent the trade-mark
sought to be protected; that the statements in the petition and
specification are true; that he resides in [Boston], and all the
other members of the firm reside at [Fall River, in said Common-
wealth]; and that they are all domiciled? in [the United States
and are citizens? thereof’].
[Martin Scorr.]
Sworn to and subscribed before me this [15th day of July,
1870].
(Joun Jurat,
Justice of the Peace. |
AMENDMENT.
To the Commissioner of Patents :
In the matter of my application for registration of a trade-mark
for melodeons, filed on the 18th day of September, 1872, I hereby
amend my specification by striking out all between the tenth and
thirteenth lines, inclusive, on page 1; by inserting after line nine-
teen on page 2 the words, “This trade-mark I have used in my
business for seventeen years last past;” and by substituting the
word “gilded” for “branded ” in the last paragraph?
Henry H. Brapiey.
APPEAL OF APPLICANT.’
To the Commissioner of Patents :
Str, —I hereby appeal to you in person from the decision of the
Examiner of Trade-marks, dated November 15, 1872, in the matter
of my application for the registration of a trade-mark for cigars.
The following are assigned as reasons of appeal : —
1 Domicile need not be stated when the applicant is a non-resident of the
United States. (See § 287-296, as to the commercial character imparted to one
engaged in commerce abroad.) In such case, the place of residence in a foreign
country must be stated.
2 Or is a citizen of the republic of Mexico, or a subject of the Queen of
Great Britain, &c., &e.
3 This amendment involves the necessity of a new affidavit; for the specifi-
cation is materially changed by the allegation of an additional fact, as to the
length of time the mark has been used.
4 This form may readily be adapted to the case of a partnership, or of a cor-
poration. The appellant may set forth as many reasons as suggest themselves
to his mind. This appeal being in the nature of a rehearing, no fee is required
therefor.
37
578 APPENDIX.
1st. The Examiner erred, in holding that my residence in the
island of Cuba at the time of application debarred me from the
benefits of the Act of Congress approved July#8, 1870, in relation
to the registration of trade-marks, inasmuch as, by his own admis-
sion and by the evidence filed by me, it is clearly shown that I was
then a citizen of the United States.?
2d. He erred, in holding that the words “Improved and Ex-
cellent” do not constitute a lawful trade-mark.
3d. He erred, in holding that a statement of the length of time
the said trade-mark had been used by me is an essential requisite.*
4th. He erred, in (&c..&c.).
[Lemve.t Sronz.]
TRANSFER OF A TRADE-MARK.!
We, Jotham Mills and Abner Clark, of Keokuk, Iowa, partners
under the firm name of Mills & Clark, in consideration of five hun-
dred dollars to us paid by Jarvis Case, of the same place, do hereby
sell, assign, and transfer to the said Jarvis Case and his assigns the
exclusive right to use in the manufacture and sale of stoves a cer-
tain trade-mark for stoves the description and fac-similes of which
trade-mark were duly deposited by us in the United States Patent
Office, and recorded therein; the same to be held, enjoyed, and
used by the said Jarvis Case as fully and entirely as the same
would have been held and enjoyed by us if this transfer had not
been made.
‘Witness our hands this 20th day of December, 1872.
[Joraam Mitts,
ABNER CLARK. ]
Notice oF PrRetiminary INTERFERENCE.
DEPARTMENT OF THE INTERIOR,
U. 8. PATENT OFFICE,
Washington, D. C., , 187.
W. T. P. & C. McC.,, doing business as firm of P. & McC., Bal-
timore, Md.
Please find below a copy of a communication from the Trade-
1 See §§ 290, 291, 295, ante. 2 See § 276, ante. 3 See § 316, ante.
4 The assignment of an abstract symbol as a trade-mark is not within the
range of legal possibility (see § 861). Therefore, unless the purported assignors
had actually reduced the thing to possession, by affixing it as their trade-mark to
the stoves sold by them, they had no title to convey, and this so called transfer is
a nullity in law.
PATENT OFFICE FORMS. 519
mark Examiner, concerning your application for registration of a
trade-mark for whiskey, filed on the day of , 187.
™ Very respectfully,
[M. D. Leaeert, Commissioner. ]
Room No. 10.
In the matter of the alleged trade-mark above referred to, notice
is hereby given that in the particulars hereinafter named, another
party claims to be the first and original adoptor, and that the ques-
tion of priority will be determined in conformity with the rules
and regulations for the conduct of interferences, a copy of which will
be found inclosed?
The preliminary statement (analogous to that called for by rule
58) must be filed on or before the day of , 187 . This
statement must be sealed up: before filing (to be opened only by
the Trade-mark Examiner), and the name of the party filing it, and
the subject, be indicated on the envelope.
In case the party who was first to make application for reg-
istration alone file a statement, no testimony will be required, but
priority of adoption will be awarded to him. In default of such
filing by the earlier applicant, and the other applicant do file the
required statement, no testimony will be received from the former
going to prove the date of his adoption prior to the earliest date of
adoption alleged in his application for registration. In the event
of neither party filmg a statement, a decision will be rendered in
favor of the party who was first to file application.
The subject-matter involved is the symbol of a crescent in
combination with the word “Crescent,” as a trade-mark for
whiskey.?
1 It is not necessary to recite these in full in this place. See the chapter on
Interferences, ante.
2 A copy of this notice is sent by the Office to each party. — Unless it be
intended to let the case go by default, or to rely entirely upon the record made
by the respective applications, the next step in order is to follow the foregoing
instructions.
Great particularity should be observed in wording the statement, as the
result may depend upon its expressions. The facts should be tersely narrated ;
care being taken, however, while avoiding the Scylla of prolixity not to perish
by the Charybdis of a lack of perspicuity. Bear this in mind: while the pre-
liminary statement can never be used as evidence on behalf of the Benny making
it, it may be used as evidence against him.
The examples following may be taken as fair precedents. Truth is more
neceseary than form.
580 APPENDIX.
PRELIMINARY STATEMENT.!
To the Commissioner of Patents:
In compliance with the requirement of official notice of October
2, 1872, and in furtherance of our claim of right to registration of
our trade-mark, we make this preliminary statement.
We commenced business in the city of Baltimore, Md., on the
first day of October, 1867, as wholesale and retail dealers in liquors,
and as rectifiers and compounders of the same. In the course of a
few weeks thereafter we found that it would be beneficial to our
interests to adopt some mark or brand to apply to a particular
quality of rye-whiskey of our manufacture. It was important for
us to adopt such a mark as should distinguish our article of manu-
facture from that of others in the market, as a protection from
encroachment, and to secure to us the benefits of reputation in the
profits arising therefrom. We tried to devise a mark which should
not be like nor resemble any other in use for the same class of
merchandise, and finally, on or about the first day of January, 1868,
adopted that for which we now claim the right of registration.
We were induced to adopt the device of the word “ Crescent”
and the symbol of a crescent from these facts: the distillery where
our whiskey was manufactured is located at Canton, in the extreme
eastern and a growing section of the city; and the whiskey itself
was increasing in favor and general use. These facts suggested to
us the symbol of the East—the crescent— which signifies, to
increase. We adopted it in conjunction with its name. We con-
ceived the idea that these two things would be a suitable designa-
tion for our commodity ; so, after making diligent and thorough
inquiry in this and other cities, and in every possible way, to learn
whether it was like any other brand in the market, or bore a near
resemblance thereto, and finding that it did not, we concluded to
adopt it. This we accordingly did on or about the first day of
January, 1868, and having had a stencil-plate cut (the same stencil-
plate which we are now using, and which was employed in making
the fac-similes filed with our application for registration), we com-
menced at once to affix the same to our goods. This we did by
stencilling the heads of the barrels containing our whiskey.
1 Form is not of so much consequence as substance. Let circumstances be
stated, so that from the detail of simple facts deductions may be made by the
Office. Great care should be taken to state all matters bearing upon the issue.
Too much conciseness must lead to obscurity; and obscurity may possibly be
attributed to a lack of honesty.
PATENT OFFICE FORMS. 581
We were the first to use the said mark to designate said class of
merchandise, and we have never abandoned it, nor permitted any
other manufacturer or vendor to make use of it, all wh ch we are
fully prepared to prove.
[ Signatures. ]
State of Maryland,
City of Baltimore.
On this 7th day of October, 1872, before me, the undersigned, a
Justive of the peace [or other officer, as the case may be}, personally
appeared the above-named William T. P. and Charles Mc-
C. ,and made oath in due form of law to the truth of the
foregoing statement by them subscribed.
[ Signature of officer and title of office.‘
(Another precedent of a Preliminary Statement in the same case.)
To the Commigsioner of Patents :
In regard to the application filed by us, for registration of a
trade-mark, we state as follows :—
At about the time we commenced building our distillery, we
requested Emmart & Quartley, of the city of Baltimore, to execute
some design for us that would answer for a name for our place, and
also for our trade-mark. During the early part of March, 1872, a
sketch was made, which, meeting with our approval, was placed in
the hands of an artist, to be colored. May Ist, it was given to the
engraver, who at once prepared the plates, and upon their com-
pletion, and the printing of the copies, we applied for registration.
By the testimony of A. D. Emmart and A. Quartley we can prove
“that the design is original? with us, and wag chosen by us on
account of the situation of our property, we not knowing at the
time that any one had ever thought of it. The name “Crescent ”
and its symbol is the designation of our distillery. We propose ®
1 If a notary public, or clerk of a court, he should affix his official seal.
2 The question is not, Who originated the design? but, Who first affixed it:
as a mark to merchandise? It is referred to here as a circumstance to support
the parties’ statement. See the case of Schrauder v. Beresford & Co., in the
chapter on Interferences, as to origin of design.
3 This is a fatal admission. Although the persons making this statement
were actually the senior applicants for registration, they show conclusively that
they did not consummate their purpose, 7.c., did not make the device a trade-
mark by affixing it to merchandise. Their adversaries show that they did
stencil the mark upon their barrels containing the product of their manufacture.
582 APPENDIX.
to use the mark on all rye-whiskey made by us. For the exact
dates of the conception and execution of the d'fferent stages of the
work, we can produce the testimony of the persons engaged by us
for that object, as before stated. [Finish substantially as in the
Soregoing precedent. |
Notice oF INTERFERENCE.
DEPARTMENT OF THE INTERIOR,
U. 8. PATENT OFFICE.
Washington, D. C., , 187.
[Name of party to whom addressed. ]
Please find below a copy of a communication from the Trade-mark
Examiner, concerning your application for registration’ of a trade-
mark for whiskey, filed on the day of , 187.
Very respectfully,
[M. D. Luaeertr, Commissioner. |
«
Room No. 10.
The parties hereinafter named are hereby notified that their
claims to exclusive use of a trade-mark specified in Office letter of
the [27th of June, 1872], are adjudged to interfere with each other,
and that a hearing will be granted them on the [21st] day of
[October, 1872].
The testimony of the respective parties must be closed previous
to the dates hereinafter designated.
Rebutting testimony, but no other, may be taken after the clos-
ing of the testimony-in-chief, but the same must be closed previous
to the [7th day of October, 1872].
All testimony must be taken in accordance with the printed
rules previously transmitted.
[George T. Smith, of Cincinnati, Ohio, filed his application May
20, 1827. His direct testimony must be closed before the 26th
day of August, 1872.1— Augustus F. Jones, Cincinnati, Ohio, at-
éorney of record. r
Benjamin Barter of Philadelphia, Penn., filed his application
February 20, 1872, and a certificate of registration was issued to
1 The junior applicant stands in the place of plaintiff, as he attacks the
claim of right of the senior party or parties, —for there may be several persons
standing on the defensive as respondents. Each party is obliged to go forward
and make out his case against those who filed their applications before him.
PATENT OFFICE FORMS. 583
him April 9, 1872. His direct testimony must be closed before
the 23d day of September, 1872.— Dodson & Fogg, Camden, N. J.,
attorneys of record. |
2
Trade-mark Huaminer.
NoticE oF THE TAKING oF TESTIMONY.
Before the Commissioner of Patents, in the matter of the Interfer-
ence declared between the application of George T. Smith,
for registration of trade-mark for whiskey, and the certificate
of registry of Benjamin Barter, dated April 9, 1872.
Sirs,— You are hereby notified that on Monday, August 12,
1872, at the office of Hamilton Roberts, Esq., No. 140 Central
Avenue, Columbus, Ohio, at nine o’clock in the forenoon, I shall
proceed to take the testimony of A. B., C.D., and E. F,, all of
Columbus, Ohio, as witnesses on my behalf.
The examination will continue from day to day, until completed.
You are invited to attend and cross-examine.
[Grorce T. Smita,
By Auge. F. Jonus, his Attorney.]
Cincinnati, O., August 5, 1872.
To Messrs. Dopson & Foae, Attorneys for Respondent.
We hereby admit? due service of notice of which the foregoing
is a copy, this 6th day of August, 1872.
[Dopson & Foae,
Attorneys for Respondent. ]
State of ;
County of t sia
Personally appeared before me, a justice of the peace in and
for said county, Samuel Johnson, who, being duly sworn, says that
he served the foregoing notice upon Dodson & Fogg, attorneys
for Benjamin Barter aforesaid, at one o’clock, p.m., of the 6th day
of August, 1872, by leaving a copy thereof at their office in Cam-
den, N. J., in charge of their clerk.
SamvuEL JOHNSON.
Sworn to before me this 7th day of August, 1872.
?
Justice of the Peace,
1 Unless service be admitted, there must be proof of service either by affi-
davit or by certificate of marshal or sheriff.
584. APPENDIX.
DeEposirion.
Before the Commissioner of Patents, in the matter of Interference
between the application of George T. Smith, for registration
of trade-mark for whiskey, and the certificate of registry of
Benjamin Barter, dated April 9, 1872.
Depositions of witnesses examined in behalf of George T. Smith,
pursuant to the annexed notice, at the office of Hamilton
Roberts, Esq., No. 140 Central Avenue, Columbus, Ohio, on
Monday, August 12, 1872, and following days.
A. B., being duly sworn [or affirmed], doth depose and say, in
answer to interrogatories proposed to him by James G. Fant, Esq.,
counsel for the said George T. Smith, as follows, to wit :—
Question 1. What is your name, age, residence, and occupation ?
Answer 1. My name is A.B. I am twenty-seven years old.
My residence is in Columbus, Ohio. I am a wholesale dealer in
groceries.
Quest. 2. &e.
And in answer to cross-interrogatories proposed to him by
Charles Cavil, Esq., counsel for Benjamin Barter, he saith :—
Cross-question 1. How long have you known the trade-mark in
question ?
Ans. 1. &c.
A,
CERTIFICATE OF OFFICER.
[Zo follow depositions. ]
State of i
County of pe
At , in said county, on the 12th day of August, 1872, and
subsequent days, before me personally appeared the above-named
[give full names of all the witnesses], and made oath that the fore-
going depositions by them respectively subscribed contain the
truth, the whole truth, and nothing but the truth. The said depo-
sitions were taken at the request of , to be used upon
the hearing of an interference between the claim of the said
and that of ——, to the exclusive use of a trade-
mark, before the Commissioner of Patents, on the [21st day of
October, 1872].
The said —— —— was duly notified, as appears by the proof
PATENT OFFICE FORMS. 585
attached to the original notice, hereto annexed, and he attended by
—— ——,, Esq,, his counsel.
Wititiam BuiacksTonn,
Justice of the Peace.
APPEAL IN INTERFERENCE CASE.
LEoPotp WIRTSs
v. Trade-mark Interference.
Wiuson & Dunn.
To the Commissioner of Patents :
Sir, —I hereby appeal to you in person from the decision of the
Examiner of Trade-marks, in the matter of interference between
my application for registration of a trade-mark for spool-cotton
and the certificate of registry issued to the respondents, in which
priority of adoption was awarded to them, the said Wilson & Dunn.
The following are assigned as reasons for appeal :—
1st. The Examiner erred, in holding that to constitute adoption
of a symbol as a trade-mark there must be an actual affixing to
merchandise.
2d. He erred, in holding that the copyrighting of the said sym-
bol was not, in legal effect, an actual adoption.
3d. He erred, in ruling out the deposition of James Johnson,
because of alleged informalities.
4th. [Any other objections, in regular order}
1 Or U. S. Commissioner, or Judge, or Notary Public, or other officer having
authority to administer oaths for general purposes.
The officer, having appended to the depositions the notice under which they
were taken, shall then seal up the testimony, and direct it to the Commissioner
of Patents; and shall also place upon the package a certificate of the taking,
sealing up, and addressing, and the date of sending, &c.
586 APPENDIX.
FORMS OF PLEADINGS, &c.
No. 1.— Breinnines or DECLARATION IN FEDERAL CovRTs.?
Crecurr Court oF THE UNITED STATES.
For the [Southern] District of [New York].
A. B.
Cc. v. D.
Of the dayof ,187 . As yet of term, in the year
of our Lord one thousand eight hundred and seventy :
District of New York, ss.
A. B., who is a citizen of the State of [Ohio], plaintiff in this
suit, by Merwin Hallibow, Esq., his attorney, complains of C. D.,
who is a citizen of the State of [New York], defendant in this suit,
of a plea of trespass on the case: For that whereas the said plaintiff,
before and at the time of the committing of the grievances by the
| Particular attention is invited to the following extracts from ‘‘An Act to
further the Administration of Justice,’ approved June 1, 1872: —
Sec. 4 provides, among other matters, that “all process issued from the
courts of the United States shall bear teste from the day of such issue.”
“Sxc. 5. That the practice, pleadings, and forms and modes of proceeding,
in other than equity and admiralty causes in the Circuit and District Courts of
the United States, shall conform, as near as may be, to the practice, pleadings,
and forms and modes of proceeding existing at the time in like causes in the
Courts of Record of the State within which such Circuit or District Courts are
held, any rule of court to the contrary notwithstanding: Provided, however, That
nothing herein contained shall alter the rules of evidence under the laws of the
United States and as practised in the courts thereof.”
“Sxc.6. That in common-law causes in the Circuit and District Courts of the
United States the plaintiff shall be entitled to similar remedies, by attachment
or other process against the property of the defendant, which are now provided
for by the laws of the State in which such court is held, applicable to the courts
of such State; and such Circuit or District Courts may, from time to time by
general rules, adopt such State laws as may be in force in the State in relation
to attachments and other process ; and the party recovering judgment in such
cause shall be entitled to similar remedies upon the same, by execution or other-
wise, as are now provided by the laws of the State within which said Circuit or
District Courts shall be held in like causes, or which shall be adopted by rules
as aforesaid: Provided, That similar preliminary affidavits or proofs, and similar
security, as required by such laws, shall be first furnished by the party seeking
such attachment or other remedy.”
FORMS OF PLEADINGS, ETC. 587
said C. D., as hereinafter mentioned, did manufacture, vend, and sell
[here state the cause of action in accordance with the suggestions
contained in form No. 2).
By an Aien acarnst A CITIzEN oF THE UNITED STATES.
P. Q., who is a subject of the Emperor [or citizen of the Repub-
lic] of , and an alien, plaintiff, &c., complains of R.§., who is a
citizen of the State of , We.
By a CrrizEn oF THE UNITED STATES AGAINST AN ALIEN.
R. 8., who is a citizen of the State of , plaintiff, &c.,
complains of P. Q., who is a subject of the King of , &e.
By a Corporate Bopy.
The [giving the full corporate name] Company, citizens of the
State of , incorporated by the name aforesaid, by the said
State, and having their principal place of business therein, plain-
tiffs, &e.
No. 2.— DrciaraATION FOR INFRINGEMENT OF A REGISTERED
TRADE-MARE.
Unirep Srares Crrcurr Court.
District of .
E. F.
G. H.
Of the day of ,187 . As yet of term, in the year
of our Lord one thousand eight hundred and seventy ..
E. F., being a citizen of the United States of America, and res-
ident in the city of ) plaintiff in this suit, by Merwin Hallibow,
1 Probably this averment is not necessary when the action is brought in a
Federal court under the trade-mark Act of July 8, 1870. Citizenship, under that
Act, is less a matter of importance than domicile, i.e., the commercial character,
rather than the political status, is the point. But, to avoid all question as to
jurisdiction, it is best to make the allegation so that it may appear whether the
plaintiff sues as a citizen or as an alien. Where the subject-matter confers juris-
diction (as in a suit for infringement of a duly-registered trade-mark), an allega-
tion of citizenship of a particular State is not required. However, abundant
caution cannot harm.
588 APPENDIX.
his attorney, complains of G. H., defendant, of the said
District, of a plea of trespass on the case: For that whereas
he, the said plaintiff, for divers years before, and at the time
of the committing of the grievances hereafter next mentioned,
did manufacture, vend, and sell, and continue to manufacture,
vend, and sell, and still does continue to manufacture, vend, and
sell for profit, divers large numbers of a certain reaping-ma-
chine called the “Harvest Victor,” which said machine the said
plaintiff was then, and still is, used and accustomed to sell, each
machine bearing a representation of “Time,” with a scythe, and
the words “Harvest Victor” in raised characters, as his trade-mark
therefor! And the said plaintiff being then domiciled within the
United States, did cause to be recorded, in the Patent Office of
the United States, a statement of his name, residence, and place of
business; the class of merchandise and the particular description
of goods comprised in such class, by which the aforementioned
trade-mark had been appropriated as aforesaid ; a description of the
said trade-mark itself, with fac-similes thereof, and the mode in
which it has been applied and used; and the length of time during
which the said trade-mark had been used; and having made a pay-
ment of a fee of twenty-five dollars, and complied with the regu-
lations prescribed in such case by the Commissioner of Patents;
and having filed a declaration under the oath of this plaintiff, to
the effect that he then had a right to the use of the said trade-
mark, and that no other person, firm, or corporation, had 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 by him for record truly
represented the trade-mark sought to be protected, therefore he
obtained a certificate of registry of said trade-mark under the seal
of the said Patent Office, certified by the Commissioner of Patents,
bearing date the day of , 187 ,in due form of law, as by
reference to said certificate and a schedule thereto annexed will
fully appear.
And the said plaintiff further says that before and at the time of
committing the grievances hereinafter next mentioned, he had
gained and acquired great fame and reputation with the public on
account of the excellent properties of the said reaping-machine, so
1 Whether a full compliance with all the requirements of the statute in
regard to registration need to be alleged has not been decided by any court.
Perhaps it would be sufficient to simply allege the fact of due registration, evi-
denced by the certificate of the Patent Office, as regularity would be presumed.
At any rate, the exemplification of the record would demonstrate the matter.
FORMS OF PLEADINGS, ETC. 589
by him manufactured, vended, and sold, whereby the said plaintiff
daily acquired and obtained great gain and profit. Yet the said
defendant, well knowing the premises, but: contriving to injure the
said plaintiff in his said sale of said reaping-machine, and to deprive
him of the great gains and profits which he the said plaintiff would
otherwise have acquired by manufacturing, vending, and selling
the said machine, did, on the day of , eighteen hundred
and seventy , and at divers other times before and afterwards,
and before the commencement of this suit, unlawfully and wrong-
fully, injuriously, deceitfully, and fraudulently, against the will and
without the license or consent of the said plaintiff, manufacture
and make, and cause to be manufactured and made, divers, to wit,
100 reaping-machines, marked in imitation of, and bearing an al-
most exact copy of the said plaintiff’s trade-mark, to wit, the said
representation of “Time,” with a scythe, and the words “ Harvest
Victor” in raised characters, as hereinbefore set forth, in order to
denote that the reaping-machine of the said defendant was the
genuine reaping-machine manufactured, vended, and sold by the
said plaintiff; and did knowingly, wrongfully, injuriously, deceit-
fully, and fraudulently vend and sell for his own lucre and gain
the said last-mentioned reaping-machines; by reason of which said
premises the said plaintiff has been greatly injured and deprived
of great profit and advantage, in being hindered and prevented by
the said defendant from selling, vending, and disposing of divers
large numbers, to wit, 100 of the said reaping-machines, which the
said plaintiff would otherwise have sold, vended, and disposed of,
and has thereby sustained actual damage to the amount of two
thousand dollars.
Yet the said defendant, though requested, hath never paid the
same, or any part thereof, to the said plaintiff, but hath refused,
and yet refuses so to do, and therefore the plaintiff brings this
suit.
Merwin Hatuisow,
Attorney, and of Counsel for Plaintiff.
[ Title of the sutt.]
The defendant will please to take notice that the within is a
copy of a declaration filed with the clerk of the United States
Cireuit Court for the District of at and that the
defendant must plead thereto within twenty days after service
hereof on him, or judgment will go by default.
Dated 187. Merwin Hattiizsow,
Plaintiffs Attorney.
To G. H., the above-named Defendant.
590 APPENDIX.
(Or this.)
[ Zitle of the suit.]
The defendant will please to take notice that a rule has been
entered in this suit with the clerk of this court, at his office, in the
city of , requiring the defendant to plead to the declaration
filed in this action, with a copy whereof he is hereby served,
within twenty days after service of a copy thereof and notice of
said rule, or judgment.
Dated’ , 187.
Yours, &c.,
Merwin Hatzizow,
Attorney for Plaintiff.
To G. H., Defendant.
AFFIDAVIT OF SERVICE OF THE DECLARATION.
L. M., being duly sworn, says, that on the day of ,187,
he personally served on the defendant G. H. within named, a copy
of the within declaration and notice of rule to plead as herein
indorsed (or, hereto annexed).
L. M.
Sworn to before me, this day of , 187.
No. 3. — GENERAL DemURRER TO DECLARATION.
[ Title of the cause, as in Form No. 1.|
And the said defendant, by G. G., his attorney, comes and
defends the wrong or injury, when, &c., and says that the said
declaration and the matters therein contained, in manner and form
as the same are above stated and set forth, are not sufficient in law
for the said plaintiff to have or maintain his aforesaid action there- -
of against the defendant, and that he the said defendant is not
bound by law to answer the same.
And this he is ready to verify; wherefore, by reason of the in-
sufficiency of the said declaration in this behalf, the said defendant
prays judgment, and that the said plaintiff may be barred from
having or maintaining his aforesaid action thereof against him, &e.!
G.G., Attorney for Defendant.
1 There may be several objections to the declaration, as, for example, that it
shows no trade-mark in the legal sense, or does not set forth facts of any kind
sufficient to constitute a cause of action. In Barrows v. Knight (6 R. I. 484),
the defendant took the ground that the plaintiff had no right to appropriate the
name of a famous deceased person; and that, even if he had, it was not plainly
set forth that the defendant had infringed thereon.
FORMS OF PLEADINGS, ETC. 591
Pies IN ABATEMENT TO THE JURISDICTION.
[ Title of the cause, as in Form No. 1.]
And the said defendant C. D., by G. G. his attorney [or in his
own proper person], comes and defends the wrong and injury when
[&c.], and says that the court here ought not to take cognizance
of, or sustain the action aforesaid, because he says that the cause
of action aforesaid, if any accrued to the said plaintiff, accrued to
him at Jersey City, within the jurisdiction of the United States
Circuit for the District of New Jersey, and not within the juris-
diction of this court, and this he is ready to verify: wherefore he
prays judgment, if the court here will take further cognizance of,
or sustain the action aforesaid, &c.1
G. G., Attorney for Defendant.
[ Or, C. D., Defendant.]
AFFIDAVIT.
District of: i ‘
C. D., the above-named defendant, being duly sworn, says, that
the above plea is true in substance, and matter of fact.
C.D.
Sworn to before me this day of , 187.
REPLICATION TO THE ForEGorne Puea.
[ Title of the cause, as in Form No. 1.]
And the said plaintiff says that the court here ought to take
further cognizance of, and sustain his action aforesaid against the
said defendant, because the said plaintiff says that the cause of
action aforesaid did arise within the jurisdiction of this court now
here, to wit: at [mame the place], as he hath above in declaring
alleged; and this he prays may be inquired of by the country, and
the said defendant doth the like, &c.
M. H., Attorney for Plaintiff,
1 When both parties are citizens of the same State, and the action is brought
for vindication of a common-law right to the use of a trade-mark, this plea is
available. But if the action is brought under the provisions of the Trade-mark
Act of July 8, 1870, the subject-matter gives jurisdiction, as in a patent or copy-
right case.
o
592 APPENDIX.
Norice oF Motion For LEAVE TO AMEND.
[ Title of the cause, as in Form No. 1.] :
Sir, — Please to take notice that on the affidavit, with a copy
whereof you are herewith served, a motion will be made before the
Circuit Court of the United States for the District of .
before one of the judges of the said court, on the day of
, 187, at o’clock inthe noon, or as soon thereafter as
counsel can be heard, that the plaintiff [or defendant] in this cause
have leave to amend the declaration [or other pleading] filed here-
in, by inserting [or striking out, or substituting, as the case may
be, specifying the amendment proposed], on such terms as the said
court may direct.
Dated , 187. Yours, &e.,
M. H., Attorney for, ée.
To N. O. P., Esq., Attorney for, &c.
No. 4.— Compiamsr at Common Law in Strate Courts.
By and against Partners.
A.B. and C. D., Plaintiffs,
against
E. F. and G. H., Defendants.
The plaintiffs, A. B. and C. D., partners, doing business under
the firm-name of A. B. & Co., complain of E. F. and G. H., doing
business under the firm-name of F. & H., and allege : —
That the said plaintiffs, before and at the time of the com-
mitting of the grievances by the said E. F. and G. H., as part-
ners aforesaid, as hereinafter mentioned, did manufacture, vend,
and sell, and continue to manufacture, vend, and sell, divers
large quantities of lead-pencils for the use of artists and others,
which said Jead-pencils were each stamped in gold with a de-
vice representing a spread eagle with a star over its head, and
the letters “ A. B.” underneath the said eagle, which said device
when so applied constituted the exclusive trade-mark of the said
plaintiffs, to indicate to purchasers and the public that the said
lead-pencils were the product and merchandise of the said plain-
tiffs, and the said lead-pencils when offered for sale in large quanti-
ties were done up in packages of dozens from one dozen up to
FORMS OF PLEADINGS, ETC. 593
twelve dozen in each package, and each package thereof was
wrapped in paper having thereon a label with a deep-blue ground
upon which was stamped in gold the trade-mark before described,
and the said label also contained a printed notice reading as fol-
lows: “Genuine Star anp Eacte lead-pencils, manufactured and
sold by A. B. & Co., Grapuite Brock, Jersey Ciry, N. J. Mone
Genuine without our Trade-mark.’ And the said plaintiffs do
further allege that, before and at the time mentioned, they had
gained and acquired great fame and reputation with the public, on
account of the excellent quality of the said lead-pencils so manu-
factured and sold by them; yet the said defendants, well knowing
the premises, but wickedly and wrongfully, subtly and unjustly,
intending to injure and defraud the said plaintiffs in the sale of the
lead-pencils so manufactured by them, and to deprive them of the
just gains and profits which they the said plaintiffs would other-
wise have made in vending and selling the said lead-pencils, on
the = day of , and at divers other days and times between
that day and the day of the commencement of this suit, at the city
of New York, and divers other places, did wrongfully, knowingly,
injuriously, deceitfully, and fraudulently, against the will and with-
out the license or consent of the said plaintiffs, manufacture, and
cause to be manufactured, divers, to wit, one thousand dozen of
lead-pencils, in imitation of the lead-pencils manufactured and sold,
or offered for sale by the said plaintiffs as aforesaid, and did stamp,
or cause to be stamped, each one of the said lead-pencils manufact-
ured by the said defendants with a mark similar in appearance to
that before described as used by the plaintiffs, and to which they
then had and still have an exclusive right of use, and did pack or
caused the same to be packed in the same manner, and to be
wrapped in paper bearing a label of the same color as that of the
said plaintiffs, upon which was stamped, in silver, a device very
similar to that used by the plaintiffs as their exclusive trade-mark
as aforesaid, which said label contained a notice having the same
general effect as that of the plaintiffs, and reading thus: “The Best
Star and Eacre lead-pencils, made expressly for F. & H. at
Granite Buocg, Jersey City, N. J.— None Genuine without our
House-mark,” in order to denote that said spurious lead-pencils
were the genuine manufacture of the plaintiffs; and the said de-
fendants did knowingly, wrongfully, injuriously, deceitfully, and
fraudulently vend and sell, for their own lucre and gain, the said
last-mentioned lead-pencils, as and for lead-pencils manufactured
and sold by the said plaintiffs, whereas in truth and in fact the said
38
594 APPENDIX.
plaintiffs had never been the manufacturers or vendors thereof, or
any part thereof; by reason of which said premises the said plain-
tiffs have been fraudulently injured and deprived of great advan-
tage which they would otherwise have derived from the sale of
lead-pencils so manufactured and marked by them, and have sus-
tained actual damage to the amount of one thousand dollars, and
have been otherwise greatly injured in the selling and vending of
the said lead-pencils to the further amount of five thousand dollars
and therefore the plaintiffs bring this suit.
Merwin Hatiisow,
Attorney for Plaintiffs.
No. 5.— Brut in Equity.
Crrcuir Court oF THE UNITED ee
For the District of
To the Judges of the Circuit Court of the United States for the
District of inthe . Circuit, sitting as a Court
of Equity.
A. B. & C. D., of , and citizens of the State of , bring
this their bill against E. F., of , and a citizen of the State of
And thereupon your orators, humbly complaining, show
unto your honors that they are the assignees and successors in busi-
ness of & , a firm which was composed of , :
and your orators, and which firm was formerly engaged in the
manufactory and sale of sewing-machines in ; and for .the
period of more than five years your orators and their predecessors
had been engaged in the manufacture and sale of sewing-machines
at the same place; and that during the whole period of time of
such manufacture and sale by them they had exclusively used and
your orators are now so using, and had, and still have the right so
to use, a certain trade-mark for said sewing-machines, which trade-
mark was printed on paper of an ultramarine ground on which is
represented a view of the Princess Penelope weaving, and the name
“ Penelope,” which is the essential part of said mark, printed there-
on; and that no person, firm, or corporation except the said
and your orators have had at any time heretofore, and none except
your orators now have any right to the use of the said trade-mark
or of any trade-mark substantially the same.
They further show to your honors that on the said day of
, 18 , being entitled as aforesaid to the exclusive use of said
FORMS OF PLEADINGS, ETC. 595
trade-mark, and desiring to secure to themselves full and lawful
protection for the same by due registration thereof in the United
States Patent Office, according to law, your orators did deposit in
said Patent Office of the United States for registration their trade-
mark. aforesaid for sewing-machines; and having fully complied
with all the requirements of the Act of Congress in such cases
made and provided, the trade-mark aforesaid was on the day of
,18 ,duly and lawfully registered and recorded in said
United States Patent Office, with protection to remain in force
for thirty years from said date, all of which, with an accurate copy
and description of said trade-mark and the declaration of a mem-
ber of the firm, on which it was registered, will more fully and at
large appear from copies from the Patent Office, duly certified by
, Commissioner of Patents, under his seal of office, and here-
with filed as part of this bill marked ; and thereupon protec-
tion in the exclusive use of the trade-mark aforesaid previously
held and ‘enjoyed by your orators was secured to them for the
period of thirty years from said day of , 18
Your orators, further complaining, respectfully show unto your
honors, that since your orators have had the exclusive right to use
the said trade-mark, to wit, from the day of to the pres-
ent time, the said , of , in the State of , has been
manufacturing sewing-machines in said city of , and has been
unlawfully and without your orators’ consent using, in the sale
thereof, a trade-mark substantially like, and indeed almost identi-
cal with, that of your orators.
To the end, therefore, that your orators may obtain relief in the
premises in this honorable court, where alone adequate relief can
be afforded, they pray : —
1st. That the said E. F. may be made a defendant to this bill,
and compelled to answer each and every allegation thereof, on oath,
as fully and to the same extent as if he were directly interrogated
as to each allegation.
2d. That he may be compelled to render before a commissioner
of this court a full, true, and perfect account of all profits of every
description which he has made, or might have made, by the use of
the simulated trade-mark aforesaid, or by the use of any other
trade-mark for sewing-machines having thereon as a constituent
part thereof the word “ Penelope,” or a representation of the Prin-
cess Penelope weaving, or any trade-mark having such near resem-
blance to that of your orators, as aforesaid, as might be calculated
to deceive; and that he, the said E. F., be decreed to pay over to
them all such profits.
596 APPENDIX.
3d. That the said commissioner be required to ascertain and re-
port to this court, also, what loss and damage has been inflicted
upon your orators by reason of the infringement. of their rights,
and the interference aforesaid with the right of exclusive use of
the trade-mark first-mentioned; and that the said E. F. be. also
decreed to pay to them such damages.
Ath. And may it please your honors, the premises considered, to
grant unto your orators a restraining order against the said defend-
ant enjoining and restraining him, his clerks, attorneys, agents, and
servants from using the simulated trade-mark aforesaid, or any
other trade-mark containing the word “ Penelope,” or being sub-
stantially the same with that of your orators.
5th. And that your orators may obtain the injunction and relief
prayed for, and all such other and further relief as the nature of
their case may require, may it please your honors to award against
the said E. F. a writ of subpeena, &c.
C. D. [ for the firm.]
Kziier & Watson,
Counsel for Complainants.
United States of America, '
Les ss.
District of
At the city of , in the county of , and district afore-
said, this 83d day of —_, 187 , personally appeared before me,
——, U. 8. Commissioner for said district, the above-named C. D.,
and made oath that the facts set forth in the foregoing bill, so far as
they purport to be stated as of his own knowledge, are true; and
so far as they purport to be stated on information and belief, he
believes to be true.
Given under my hand this day of , 187.
?
[L. 8.] U. S. Commissioner for
District of
No. 6.— OrpER To sHow CausE wHy INJUNCTION SHOULD
NOT ISSUE.
In the Circuit Court of the United States for the District
of at : ‘
At Chambers in Vacation. and , citizens and inhabi-
tants of the State of , and partners under the firm and style
of & versus , 4 citizen and inhabitant of the city
of in the State of ‘
FORMS OF PLEADINGS, ETC. 597
This day came the complainants by and their coun-
sel, and presented to me, , Judge of the Circuit Court of the
United States for the District of , at my chambers, in
vacation, their bill of complaint against the defendant ; and
the same, with the affidavit of thereto annexed and the ex-
hibits filed, being read and duly considered, on motion of said
complainants by their counsel aforesaid, it is ordered, that the de-
fendant do, on the of the special term of the Circuit
Court of the United States for the District of at ‘
to be held on the day of , appear before said court and
show cause, if any he have to show, why an injunction should not
issue against him, and accounts be ordered, according to the prayer
of said bill; such course to be shown on said bill on affidavit, pro-
vided copies thereof be served on said defendant, with a copy of
this order, on or before , the day of
Judge, &e.
No. 7. — ANSWER TO THE ForEeGorne Bix.
[ Title of court and caption. ]
The answer of E. F., defendant, to the bill of complaint of A. B.
and C. D., complainants.
This defendant, now and at all times hereafter saving and reserv-
ing unto himself all benefit and advantage of exception which can or
may be had or taken to the many errors, uncertainties, and other
imperfections in the said complainants’ said bill of complaint con-
tained, for answer thereto, or to so much and such parts thereof as
this defendant is advised is or are material or necessary for him
to make answer to, this defendant answering saith: — (1.) That
he has been informed and admits it to be true that, upon applica-
tion by the complainants, registration was granted by the Patent
Office of the United States on the day of ,18 ,as
in said bill alleged, of an alleged trade-mark as described in the
said bill of complaint; and this defendant says that he does
not know and is not informed, save by said bill of complaint,
whether or not the said complainants did properly make applica-
tion for said registration of trade-mark, and did comply with all
the requirements of law, and did have the said certificate of regis-
tration issued to them in due form of law. He leaves the com-
plainants to make such proof thereof as they shall be advised is
material. (2.) And this defendant, on information and belief, de-
‘
598 APPENDIX.
nies that by virtue of any such registration of the said trade-mark
in said bill mentioned, or otherwise, the said complainants became,
or ever were, or either of them ever was, possessed of any exclusive
right to use the said alleged trade-mark in the said certificate of
registration and bill of complaint described, if indeed the trade-
mark and label used by this defendant is in any wise to be regarded
as the same, either in substance or effect with the said trade-mark
claimed by the complainants.
[&e. &e. &e.]
No. 8.— DrcreE For InsuncrTion.1
[ Title of cause, &¢.]
[ Then follows the usual recital of all essential preliminary mat-
ters, as in ordinary cases of injunction. |
It is ordered, adjudged, and decreed, and this court, by virtue of
the power therein vested, doth order, adjudge, and decree, that the
defendants, Calvin Flint Spear and George B. Ripley, and each of
them, and their, and each of their attorneys, servants, and agents
be, and they are hereby perpetually enjoined and restrained from
making, devising, or causing to be made or devised, purchasing or
procuring, any marks, stamps, labels, or tickets, described in the
complaint in this action, as in use by the defendants, upon tick-
ings possessed and sold by them, and that they be in like manner
enjoined and restrained from using the said marks, stamps, labels,
or tickets upon any tickings whatever in their possession, or under
their control, or offered or kept for sale by them, or on their ac-
count, or for their benefit. And that they be in like manner en-
joined and restrained from selling, keeping, or offering for sale any
tickings bearing thereon any such stamp, mark, label, or ticket.
And that they be in like manner enjoined and restrained from
making, devising, or causing to be made or devised, purchasing or
procuring, or in any way or manner using for or upon any tickings
whatever any stamp, mark, label, or ticket similar to the said
stamp, mark, label, or ticket of the plaintiffs, or having thereon the
letters A C A, or being in any manner an imitation, whether in,
whole or in part, of the said stamp, mark, label, or ticket of the
plaintiffs. And that they be in like manner enjoined and restrained
from selling, keeping, or offering for sale any tickings as the real
1 This is taken from the decree of Duer, J., incase of Amoskeag Manuf.
Co. v. Spear, 2 Sand. 8. C. 599 (“A C A” is the essence of the mark).
FORMS OF PLEADINGS, ETC. 599
AC A tickings, which are not so, and for that purpose, ‘from re-
sorting to any device, deceit, fraud, or misrepresentation whatever,
by the use of any stamp, mark, label, or ticket, or otherwise. And
that they be in like manner enjoined and restrained from in any
manner using the letters A C A on goods, or on the wrappers or
covering thereot.
[The foregoing forms of pleadings, &c., are not intended to
furnish models for all the machinery of legal and equitable pro-
cedure. It must be obvious to even the specialist in trade-mark
litigation that these forms merely supplement ordinary books of
practice. He must have recourse to the latter in the majority
of cases.]
TABLE OF CASES
REGISTERED AS TRADE-MARKS,
Unper tHE Act or Coneress or Jury 8, 1870.
Tuesx matters should not be implicitly relied on as precedents ;
for while it is true that the greater number of the cases are valid
in law, having all the essential characteristics of lawful trade-
marks, as laid down in § 148 of this book, many of the remainder
are fatally-defective, while not a few are extremely dubious.
It would be invidious to annotate each case, and thus possibly
injure the claimant thereof by indicating its indefensible features.
Each reader must scrutinize for himself. It cannot fail to be ob-
served, that the majority of worthless, self-styled trade-marks were
registered within the first few months after the passage of the
statute. It took time, study, toil, on the part of the Office, to
learn and apply the principles of the law appertaining to this
rather novel branch of jurisprudence, each day bringing fresh
verifications of the truth that there is no royal road to knowl-
edge. Courts have erred, as well as have practitioners. For some
time the Office, in the discharge of ministerial functions, was sat-
isfied with the statement sworn to by the applicant, and registered
on the faith thereof; but by-and-by the fact dawned upon the
mind that an examination of a judicial nature was required by
the Act. Thenceforth all applications were rejected which did
not at least make out a primd facie exclusive right to the sym-
bol claimed, and which would not probably endure the test of
litigation. It must be apparent to any one who will run an eye
down the following list, that some words or devices filed cannot
possibly be recognized as symbols of manufacture or commerce.
Several heads have already fallen into the basket at the hands of
602 APPENDIX.
‘the executioner of the law. Many other defective marks may be
recast, and put into legal form by a proceeding in the nature of re-
issue. Mere registration does not create a trade-mark. The law will
not recognize nor protect any but legitimate offspring. The spurious
children must be cast out.
For full descriptions, inquirers are referred to the specifications and
fac-similes, copies of which may be obtained from the Patent Office
by any person upon payment of twenty-five cents each. The descrip-
tions in this table must necessarily be very brief. The object has
been to give only the essential word or other symbol. When a reader
looks at the class column, he can then, by looking at the description,
learn whether it is worth his while to send to the Patent Office for a
printed specification and a copy of the mark.
In many of the earlier cases, the specifications referred to draw-
ings thereto annexed, but did not describe the marks. In such cases,
it is sometimes difficult to determine what is the essential symbol.
This list is brought down to the latest day of registration before
going to press. (See ADDENDUM.)
Registrants. Brief Description. Class. No.
Abendroth Bros... . “Cotton Plant,” &. . . . . . Ranges &stoves 306
do. do! . . “Sunny South,” &. . . . do. do. 307
Adams, Blake,& Taylor ‘ G.O.Blake’s Bourbon Co. ee ” &e. Whiskey . . . 708
do. do. do. Apple-tree, and words “Apple-Tree’ Gin. . . . 712
Adams & Fay? . . . “Young America,” &e. . . . . Writing- aie » 912
do. do.. . . . “J. Dessauer’s Inks,” and shield . do. « « 921
do. do... . . . “Black Swan,” &.. . ...~:~ do. x « O22
Adams,G.S. . . . Headless bull, ox-yoke, &c. . . . Mustard & spices 790
Adams, John W. . . Boot upside-down, with horn-blower,
. and words ‘‘Mammoth Shoe” . Boots and shoes 600
Adams & Taylor . . Device, “Honeysuckle, Schiedam,”&c. Gin . . . 658
do. do. . . . ‘Daniel Boone, Paris, Ky.,” &c. . Whiskey. . . 659
do. do. . . . Phoenix, and letters “A. T.,”’ &. . Gin. . . . . 691
do. do . . . “Kentucky Pioneer,” and picture. Whiskey. . . 692
do. do. . . . Withintworings, “Mayflower,’&c. Gin. . . . . 698
Adams & Young. . . ‘‘Lee’sLiniment” . . . . . . Liniment. . 446
Adriance, Platt, & Co.. Word‘ Buckeye” . . Mowing macli’ 7 1075
Aikin, Lambert, & Co. A lozenge, with the snilinte “A th
& Co.,” between two fleurs-delis Watches and
jewelry . . 472
Allen, Shapleigh,& Co. “Crown Teas,” with figureofcrown Teas .. . . 527
Althof, Bergmann, &
Co. . . . . . « Trotting-horse, harnessed inahoop, &c. Toys. . . 799
Altwell, Jr., James. . Letters“CKC” . . . . . . Knitting cotton 660
do. do. do. . . Female sitting in chair knitting
stocking, surmounted by words
“Cabinet Knitting Cotton”. . do. do. . 661
1 See § 278, ante. 2 See § 218, ante. 3 See § 198, ante.
Registrants.
Altwell, Jr., James .
American Club Fish Co.
American Graphite Co.
do. do.
Amer. Standard Tool Co.
American Sterling Co.
American Tube Works
Amoskeag Manuf. Co.!
Anderson & Co., S. H.
Appleby & Helme?.
Armistead, Louis Lee .
do.
Ashcroft, John
do.3
do. do.
Atchison & Bro. .
do. do. do.
Atmore & Son . .
Averill Chem. Paint Sis,
do. do. do.
do. do. do.
do. do. do.4
do. do. do.
do. do. do.
do. do. do.
Ayers, Francis H.
Babcock & Co., J. P.
Backman & Wilson.
1 See §§ 153-156, ante.
8 See § 278, ante.
REGISTERED TRADE-MARKS.
Brief Description.
“Improved Cabinet C. W. C.”.
“The American Club,” with hiero-
glyph of fish
Elaborate design, figure a Piste,
ship, locomotive, &c.
Circle, within which “Plumbago
Railway-Grease” . . . . .
“A.S.T.Co.—Hero” . .. .
« American Sterling ”
Eagle, shield, &c.
Letters“ACA” . .
“Premium Loaf,” with dees of
barrel, &. . i
Landscape, train of cars, &e. 28
Bull’s head, with words “ The Dur-
ham Smoking Tobacco”
“Deer Tongue,” and deer
Coffee-pot, and words ‘“‘ The Mocha
Steam Coffee-Pot”’ ‘
Chain, star, anchor, ks,
“ Atchison’s Sure Cure for Cholera,’’&c.
Atlantic White Lead Co. “Atlantic,” anda circle formed of words.
Letters “A. W. L. Co.,” &e..
“ Atmore’s Mince-Meat” .
A rock, with the word ‘“ Chemis-
try”? upon it, &c.; eagle, bearing
ribbon, with words ‘‘ Economi-
cal, Beautiful, Durable,” &c.
Mixed device, ei words “ Mixed,
ready for use”
Ornamental design, wath se Liquid
Chemical Paint”
“Chemical Paint” . a
“ Chemically-prepared Paine? Pe
“ Averill Chemical Paint” :
Eagle on arock, holding in its beak
a paint-pot and brush, city, let-
tering, &c. . ‘
Arms of Louisiana, and words te
F. H. avers Celebrated Vine-
gar Bitters” ae fa Gee
Word “ Irish”
Border within witich wopy of tend
seer’s painting called “ Monarch
of the Glen,” firm-name, indi-
vidual names, name of brand,
“ Challenge Brand,” &c. .
603
Class. No.
Welting-cord 662
Preserved fish . 285
Plumbago or graph-
ite lubricant 737
Plumbago grease 197
Pistols . . 818
Am. sterl’g metal 694
Seamless metal
tubes . 17
Tickings & cottons 718
Flour 290
Snuff . 61
Tobacco 231
Smoking-tobacco 512
Coffee-pot 608
Coffee 553
Cholera medicine 447
White lead. 71
Refined boiled
linseed-oil 72
Mince-meat . 436
Liquid paint. . 1
Paint 128
Liq. chem. paint 129
Chemical paint. 1380
Paint : 384
Chemical paint. 148
Paint 224
Medicine . 901
Soap 667
Sugar-cur’d hams 1066
2 Not described in specification.
4 See § 251, ante.
604
Registrants.
Backus & Co., F. M.! .
Backus, Frederick M. .
Badger, Benjamin F. .
Badger, Benj. F. . .
Baeder, Adamson, & Co.
do. do. do.
Baker & Bro., H. J?
do. do. do. .
Baker & Bullock
Baker, Carr, & Co. .
Baker, Francis
Baker, Seth W. .
Balch & Co., A. W.3
do. do. do.
do. do. do.
do. do. do.
do. do. do.
do. do. do.
do. do. do.
do. do. do.
Baldwin, Oran S. ‘
Baldwin, Premive, &
Waller... .
Baldy & Co., J.B. .
Barclay, George C. .
Barkhouse Bros. & Co.*
Barksdale, Ford S. .
Barnes, Demas .
do. do.
do. do. eo
do. do.
Barnes, Wallace
Bartlett & Butman .
Bartlett & Co., H.A. .
Bartlett, Robbins, & Co.
Batcheller Manuf. Co. .
Bates, Benjamin.
1 See § 274, ante.
3 See § 218, ante.
APPENDIX.
Brief Description. Class,
“Water White Oil” .
“Fire Engine Oil” .
“Souvenir” .
Oval figure, donuiining the word
“Badger”. . . 2 ew e Razor-strop .
Diamond, anntainins descriptive wonite: Glue
A figure of a crescent . Emery ..
“Crystal” . » 1 ee « « Castor-oil .
CBG BO se Siete do.
Two horns, with saindierenilar block Soap . .
“The Concord Hame, B. C. & Co.” Hames
Bee, and word “ Mills” 3 Salt
Horse covered with blanket, moe
the words “Baker’s Patent
Evaporating Horse-Blankets ”
“Rip Van Winkle Copper Distilled
Whiskey ” ‘ Whiskey .
Words “ Antiquity Whiskey ’ oP oer op do.
Shield, containing a crescent
Hexagon, with letters “A. W. B.
& Co.,” and words “ Crystal Glen.”
Razor-strops .
Whiskey .
“A, W.B.& Co.,” and word “ Pyramid.” do. ete
“ Thirty-three Stars,” and cuts of stars. Gin
“ Santa Claus Schiedam,” and picture. do.
Outline of a bell . Wine
“ Baldwin, the Clothier” . Clothing .
Wings, & words “ The Winged Hat” Hats... .
Four designs: locomotive, female, .
cage, and coach, &c. Mustard
“ Tricopherous ” Preparation for
the hair .
“ Barkhouse Brothers & Company,”
and cut of horse, and words
“Gold Dust,” &c. . Whiskey .
“ Our Society ” . » Newspaper
“Hagan’s Magnolia Balm,” and
magnolia blossom .. . . Balm
“ Mexican Mustang Liniment,”’ &e. Liniment .
“Lyon’s Magnetic Powder,” &e. Insect-powder
“ Lyon’s Kathairon for the Hair”. Preparation for
the hair
Figure of patent level-tempered
clock-spring . . . Clock-springs
“Common Sense” . . . . Trusses a
“Crumbs of Comfort” Stove blacking .
“ Baltimore Kitchener,” & two stars
Ring, stripe, or band, with signature Beer
*
2 See § 274, ante.
4 See § 273, unte.
Horse-blankets .
Wines & liquors
Kitchen-ranges .
Maltese cross, & words “ Gold Cross.” Agricult.-forks .
No.
Refined petroleum 640
Lubricating-oil .
266
96
944
175
890
878
874
473
811
372
791
601
602
852
586
587
588
589
590
351
182
267
626
424
232
233
234
235
474
9383
513
181
176
REGISTERED TRADE-MARKS.
Registrants. Brief Description.
Bates, Benjamin. . . Ring, stripe, or band, of diverse colors.
do. do. » . . ‘ National” ‘
Baxter, James P. . . Three yellow tablets, Re, —-plaboraia
Bayles, James A. . Bayles’ Improved Tree Digger”
Bay State lron Co. i . Photograph of Pig: iron, with words
“Port Henry” : .
do. do. . . “Bay State,” and photographs of
rolled plates
Beardsley Scythe Co. . “ Harvest Victor”
Benson, Charles W. . “Catalina” . . . . ee we
Beresford & Co.,R. . Cancelled . ... oe
do. do. . Word “ Peerless” on davies ,
do. do. Figure of woman, eagle flying, &c.
Bergen & Bainbridge 2 « Dolly Varden,” with designs .
Bernecker, John L.. . Spread eagle, with letters “L” and
“ B” and “ee &”
Bickford, E.F. . . . “ Bickford Reinforced Overshoes,” &e.
Biddle Hardware Co.3 =‘ Wisconsin Wood-Chopper”
Bidwell, John C. . . “J. C. Bidwell, wD Plow-
Works,” &e. ae
Billings, Henry M.. . Ring and bar, with mardi ef Tare
rant’s Seltzer Aperient”. . .
Bishop & Co., R. M. . “ Royal Olive Soap”
Bishop, George Riker . ‘‘Yuh-heh” .
Bishop, William A.. . Monogram, with lettens “with eat of bottle
Female clad in mail, with shield, on
which are the words “ Victor
Sewing-Machine ”
“Saratoga Aperient” .
“The Belfort Brace” .
“ Cheviot Shirts ”’ 5
Lion passant, and words “ Cure a
industria”
“ Cheviot Siitretage””
“The Argyll Brace”
“The Hampton Brace”’
“The Samson Brace” .
“The Queen’s Toilet,” anid mono-
gram of “M. 1.” an
Sheaf of grain, & generally Aewinaane
Fac-simile of signatures “ Fleming
Bros.” and “ C. McLane”
Raised seal & “ McLane’s Liver Pill”
Facsimile of signatures “C. Mc-
Lane” and “ Fleming Bros.”
Figure of a + ania &e., and “ Jacob
Warren” i a
613
Class. No.
Wrought-iron pipe 6
Hams . 894
Gaiters 426
Sewing-machine
needles . . 1056
Lead-pencils . 19
do. 117
Drugs & medicines 971
Cigars . 952
Cement 862
Flour . . 895°
Pistols . . 1036
Mustard 936
Whiskey . . 1012
Rye whiskey . 1057
Cloth cut’g mach’s 995
Cooking-stoves . 3828
Medicine . 611
Sewing-machines 631
Med. preparation 1018
Gents’ furn’g g’ds 270
do. do. 271
Furnishing goods 118
Cheviot shirtings 249
Gents’ furn’g g’ds 296
do. do. 297
Suspenders . 744
Toilet preparation 726
Yeast . 821
Medicine . 756
do. 757
do. 758
Root & herb bitters 98
2 Filley v. Fassett, 44 Mo, 1738.
614
Registrants.
Flint & Co., H.S8.
do. do.
Foote, Arthur W.
Forest-City Varnish, Oil,
and Naphtha Co.
Forest-River Lead Co. .
Forster, Joseph .
Foster, Wm. & Henry .
Francis & Mallon
Frank & Co., Charles .
French, E. D. & W. A.
Frieberg & Workum!
do. do.
Friedman Bros. .
do. do.
do. do.
, Fuller, Irad :
Furber, George C. .
Fusiyama Tea Imp. Co.
Gaff & Co., T. & J. W.
Gaines & Co., W. A. .
do. do. do.
do. do. do.
do. do. do.
Galena Oil Works .
Galt, William M.
Gantz, George F.
Garbutt & Co., E. H. .
Gardiner & Co., L. Y. .
APPENDIX.
Brief Description.
“Dr. H. S. Flint’s Shaker Bitters,”
with figures ..
“Dr. H.S. Flint & Co.’s Celebrated
Quaker Choice Root and Herb
Bitters,” and figure of Quaker
Figure of a man astride the globe,
and words “ Uncle Sam”
Figure of a crown, & word “Crown”
Barrel, on which are fig’s “1840,” &c.
“London Cordial Gin,” signature
and pictorial illustration . . .
Triangles, enclosing “R. D. W. &”
and “H.F.” .
“ Beaverine ” :
“Olive Bitters,” with portrait of
Dr. Aldo Wise
Shield with three eagles’ lined
Triangle, “OK,” “ Cabinet Bour-
bon,” &. . .
Letters “F and Ww.” feicale: heat.
and “40” . : é
“May flowers”... .
“De Soto” : :
“ Mississippi Talley" see
Maltese Cross, name, grain & rapes
Open Bible, and verse therefrom
Monogram, “F. T. L. a with
figure, &e. .
Open diamond, with weg or r letter
in centre
“Old Crow Distillery Copper Dis-
tilled Whiskey,” &e.
do. (substantially same). .
do. (add. “ Franklin Co., Ky. »)
“ Hermitage Distillery Capper Dis-
tilled Pure Rye Whiskey,” &e.
Words “ Galena Oil,” and star .
“Golden Hill” :
Elaborate device, crown, siasiit of
flags, &c., with words “Awarded
to G. F. Gantz & Co.,” &. .
“i. H. G. & Co.,” and words “ All
Right” .
Figure of a star, with Gatre: siete,
or letter
1 Not described in specification.
Class. No.
Bitters. . . . 845
do... . 846
Tobacco . . . 20
Varnish, oil, and
naphtha . . 727
Lead . . . . 847
Cordial gin . . 444
Lastings & serges 427
Boots and shoes -565
Bitters . . . 1028
Painters’, &c.,
supplies . . 1084
Whiskey. . . 89
do. - « » 696
Boots and shoes 878
do. do. 879
do. do. 880
Wines, liquors, &c. 517
Medical compound 99
TEA, ue es 286
Rye and Bourbon
whiskey . . 781
Whiskey . . . 101
do. » . + 102
do. » . + 108
do. . . 104
Lubricating- oil. 772
Flour. . . . 458
Baking-powder. 813
Coffee, spices, &c. 808
Brooms & brushes 100
Registrants. *
Garlick, Charles .
Garrett & Sons, W. E.
Gaullieur & André 1
Gay, Calvin B .
Georger, Charles E.
Gerber & Co., C.
Gibbs, Ross, Field, &
Field % ko
Gillender & Co., A..
Gililand, Samuel .
Gill & Looty 3
Gillett, Allen H. .
Giron, Fréres. .
Globe Collar Co. .
Goodall, J. M.
Goodwin& Co. .
Gordon, Gerald .
Goss, W. H.
Graves, Chester H. .
Great N. Y. Tea Co.
Green, Richard .
Greenwoods Scythe Co.*
do. do.4
do. do.4
do. do.*
do. do.4
do. do.*
do. do.
do. do.
1 See § 278, ante.
8 See § 218, ante.
REGISTERED TRADE-MARKS.
Brief Description.
Quadrangle, figute, and signatures
“Simpson & Co.” and ‘ Alex.
Simpson” . . z
Dragon rampant, with Tati “G.
8.8." &.. .
Map of Senth Florida and Gaba, rnd
words “La Flor del Tropico”
“ Globe Boot and Shoe Store” .
Fem. bust, with word “‘ Carbolicon”
Star of five points, with the words
“Star Ax” . 2...
Two bears, &c., and cock and trum-
pet,&e.. .
“ Solace ”
“ Pain-Banisher ”
Figure of the Apollo Belvidere, wa
words ‘“ Apollo Gin, Schiedam”
Circular brand, proprietor’s name,
and “ Woodcock Rye”
Two ladies on horseback, &c.
Representation of a globe, and the
letter “N”. . :
« Baskerville Pullin Wore,” &e. ‘
“Welcome Tobacco” . ‘
“Nutritious Condiment for Hoses
and Cattle,’ and figure of a
horse, with letter “A” and fig-
ure “1” on his wecy
“ Tamarind Beer,” with ee ofa
tamarind-tree .
‘* Atwood’s Pure Alcohol,” &e. :
Letters “G. N. Y. T. Co.,”
Japanese emblem ‘
Shield, monogram, “ Sea eat pm
and
Words “ Red Racer”
“ Tip-Top ” ‘ Seusiet Baie
“ Queen of the Meatow Pg ht
“Star of the West”
“ King of the Field”
“ Western Dutchman”
“Our Best,” in connection with
firm-name . F
Word “ Harvester”
4 See § 275, ante,
615
Class.
Condition-powd’rs 459
Snuff... . 7
Cigars . 927
Boots and shoes 782
Preparation for
the hair . 162
Axes 593
Woollen goods . 199
Fine-cut chewing-
tobacco 767
Medicine . 728
Gin . 521
Whiskey . 821
Velvet ribbons 1069
Corsets - 953
Writing-paper . 804
Tobacco . 607
Cattle food 794
Tamarind-beer. 848
Alcohol 575
Tea and coffee . 524
Preparations for
the hair 21
Mowing, reaping,
and harvesting
tools . . . 749
do. do. 750
do. do. 751
do. do. . 752
do. do. . 758
do. do. 754
do. do. 773
Corn-knife 774
2 “ Globe” is the essential part,
616
Registrants.
APPENDIX.
Brief Description.
Greenwoods Scythe Co.1 Letters “I X L”
Grover & Baker Sewing
Machine Co. .
Grubb & Co., John .
Hacker & Richardson .
Haines, John P. .
Haley, John J.
Halford Sauce Co. .
Hall & Alger .
Hall, Isaac. . .
Hall, John L. S. .
Hall & Speer .
Hallett & Co., G. W.
Hamilton, T.F. .
Hamilton, W. G.
Hamilton Woollen Co.
do. do.
do. do.
Hammond, J. N..
Hand, Thomas J.
Hardee, Philip M.
Harding, William W. .
do. do.
do. do.
do. do.
do. do.
Harkness, Charles .
Harmon, Merrick, & Co.
Hart,Jr., & Bro., Wm.H.
Harris, Beebe, & Co.
do. do.
do. do.
do. do.
Monogram of the letters ““G” and
“B,” & name of Co., with devices
An orange, and word “ Orange ”
Pair of boots, one worn and one
good...
“ Magic Disk Oil Cans” ‘
Representation of an elephant, ae
duced by grouping of female
figures 3
Crown and star, swith létiers e H s.
Co.,” &. .
“Dr. Henry Humphrey’ 8 Celebrated
Liniment and Pain-Reliever,”
with POrerait of aman.
“Sanseam ” ‘
“Columbo Bitters,” letters i ennes
“Hall & Speer,’ and monogram
ce Pp. G. Ww. Pa 4
A star, with the words sf Tool Co.” ee
A cross, and the word “.Seamless ”
Words “ Steeled Wheels,” moulded
on the wheels . ie ed
“Tycoon Reps”. .
“Red Riding Hood,” Sieure of gi
and wolf, &c. ive ;
“ Niobe Alpaca,” cut of Niobe and
child . é See Ue
“Soda Beer” .
Skeleton bullock’s head, wiih, ova:
resting on heart, plowman, &c.
“Superfine Merino,” and letter “T”
Oblong figure, with rounded base
and top .
Pointed elliptical figure: saith eincle, &e.
Raised indented frame, &c.
Rectangular frame, &c.
Rectangular frame, with central
oval, &. . és ee
ee Patent Wax,” anda hiaiee bee :
“Prime Engine Oil,” with eagle, &c.
Figure of a heart. .
“Flounders” . ..,...
“ Firm Brand”
“Pocahontas ” a
“ Mule Ear,” with daere of the mule
1 See §§ 68-70, 450, ante,
. Class. No.
Mowing, &c., tools 788
Sewing-machines 1019
Sugar-cur’d hams 1078
Boot-heels 188
Oil-cans 566
Medicines 532
“'Table-sauce . 822
Medicine. . . 745
Bk.-seam’d boots 1070
Medicine . 408
Agricult. impl’ts 123
Metal tools, &e. 729
Corsets . 1029
Car-wheels 8
Cotton, wool’f, &c. 716
Cotton & woollen
fabrics 916
do. do. 917
Small-beer 823
Fertilizers 478
Knit goods and
fabrics 497
Photog. albums 683
do. do. 684
do. do. 685
do. do. ” 686
do. do. 687
Candles 390
Engine-oil 439
Shields for neck-
ties 460
Chewing-tobacco 979
Plug chew.-tobac. 928
do. do. 929
do. do. 930
Registrants. %
Harris & Co.,J.N.. .
Harris Manuf. Co.
do. do.
do. do.
Harris, Richmond, &
Shafer .
do. do.
do. do.
Hartman & Co., 8. B. .
Hartwell, Harrison J. .
Hauthaway & Sons, C. L.
Hawley, Alfred A. .
Haworth & Williams
Hay, Henry H.! .
Hedges, William N.
Heller & Brightly
Henarie, Daniel V. B.!
Hennessy & Co., J..
do. do.
Hernsheim, Simon!.
Hill & Co., James R.
Hillebrand & Wolf .
Hine, Charles C.
Hinrichs, C. F. A. .
Hirsch & Co., D.1
do. do?
do. do.t
do. do.
do. do.!
do. do.l
do. do.t
do. do.!
do. dot.
do. dol .
1 Not described in specification.
REGISTERED TRADE-MARKS.
Brief Description.
“Lung Balsam”. .
“ Buck’s Head” .
“Little Champion ” pn%
Cotton-plant, and words “Gem of
the Spindle” .
Complete anchor, with cable, &. .
Coronet, shield with Greek cross, &e.
Map of North America, with spread
eagle, &c. 7
“ Hope,” with picture of 8 an sucker
“The Compound Oxygen Treat-
ment” :
Figure of a diueands or dieatnee: j
‘Repellent ” — peculiar device .
Word “Diamond,” with letter “H”
above and below the word, in-
closed in a rhomboid . :
“L. F..” red letters on vn
ground, &c. Z
Five-pointed star, and qieuapeuen
“H.C. B.P.” .
Transit instrument, and ficmmnanits
Star on shield, &e.
“Jas. Hennessy, Cognac,” witha arm
and hand in mail 3
“Jas. Hennessy & Co., Copnas, ‘pe
torial illustration
“Black,” and veptesetitation of a
horse, in stencil .
“The Concord Harness” .
Star and suspended key
“The Insurance Monitor ”
“ Fire-Proof Chimney,” and picute
of pheenix .
Oval, inclosing words “ Bie Thing; ee
&. .. eo
Elaborate picture of Falstaff
Elaborate picture of Gulliver
Star in oval, words “ Lone Star,” &c.
Lion and serpent in oval, and words
“The Lion” .
Picture of Mephistopheles,
word ‘“‘ Mephisto”
Arms of State of Missouri, &e. .
Picture of Jupiter, &e. . :
“ Defiance,” and picture in oval
“ Success,” &e., in oval
and
617
Class. No.
Medicine . 417
Cotton goods 225
Harvesters 428
Fine cot. shirtings 479
Clothiers & tailors’
trimmings 829
do. do. 830
do. do. 831
Bitters 218
Medicine . 346
Leather-dressing 78
Water-proof mat’! 672
Cigars . . 1037
Medicine . 208
Baking powder. 309
Math. instruments 440
Whiskey . 209
Brandy 854
do. 855
Leaf-tobacco. 272
Harness . » . 567
Locks & hardware 178
Periodical 903
Lamp chimneys 628
Cigars . 22
do. 23
do. 24
do. 25
do. 26
do. 27
do. 28
do. 29
do. 30
do. 381
2 Ditto; see § 218, ante,
618
Registrants.
Hirsch & Co., D.1
do. dol ...
do. do.}
do. do.!
Hirsch & Oppestsimer!
Hodgson & Co., Thos. S.
Hoffheimer Bros.
Hogg, John KK. . .
Holbrook & Merrill .
Holden, Tascott, & Co.
do. do. do.
do. do. do.
Holloway & Co. .
do. do.
Hollwede, Charles F. .
Holman, Andrew J.
Holmes, Henry J.! .
Holmes, Thomas J. .
Home Woollen Co. .
Hooper, Quincy A. .
Hopkins, Andrew J.
Horner, Jr., Joshua.
do. do.
Horton & Son, Eli?.
Hostetter & Smith
Houghton, Edwin F.! .
Hudson & Co., H. C.
Hudson, Thomas 8.
Hughes, D. W.
Hughes, John M.
1 Not described in specification. 2 See §§ 877-879, ante.
APPENDIX.
Brief Description. Class.
“The Power of Fashion,” and picture do.
Crowned eagle, &e.. . . «ss do.
“Legal Tender,” &.,in oval . . do.
“The Pelican,” and picture. . . do.
“FH. & O. Perret, Geneva,” in =
star... Watches .
Keystone, with Maltese cross and
“T.8S.H.&Co” . . Medicine .
Initials “H. B.,” “Fairfax old
Bourbon”. . . . . . Whiskey .
Star, and word ‘ Star iii * She 88. Soap
Ornamental woman’s head, andl
words “The Empress” . . . Cosmetics, po-
mades, &¢c.
“Chicago Enamel Paint-Works,” &c. Paint
“Tascott’s Enamel-Paint” . . . do.
“Chicago Enamel Paint Works” . do.
A serpent, and the words “ Hollo-
way’s Pills” . . . Medicine .
Serpent, and the words “ Holloway’ s
Ointment” .. . do. .
“Tsola Bella,” and proprietor’ sname Varnish
Open book, and words “ Let there
238
135
469
470
471
598
599
863
612
87
480
568
533
5384
535
be light” . . Bibles .
Device, “H.J.H.,” wil cotton-plant Cotton-seed .
“ Holmes’ Boston Perfumer” . . Atomizers for per-
fuming, &e. .
Word “ Home,” with figures . . Shawls, cloakings
“ Rivera’s Pine-Apple Beer,” in
border anddevice . . . Pine-apple beer .
Cut of horse, sulky, and deiver,
and “Go”. . Medicine .
“ Maryland Super- Phosphate,” and
plow... Fertilizers
“ Maryland Sapsephiosphate ei
Tobacco-Sustain,” &e. . . . do.
“The Horton Lathe-Chuck” . . Lathe dinwsies
Trade-name, and picture of St.
George and Dragon . . . . Medicine.
594
518
228
Globe, and “ Cosmoline” across it. Cosmoline, a prod-
uctof petroleum 56
‘« Hudson’s Golden California Mus-
tard,” fac-simile of signature
“H. C. Hudson,” &. . . . Mustard . . 1050
“ Sphynx,” with ie represen-
tation . . Stationers’ hardw. 219
Figure of a man, &e., “iad * ‘Hughes
Missouri Corn Planter” 8 Corn planters 88
“ Hughes’ Carbolic Insect-Powder” Insect-powder . 882
Registrants.
Hurlbut & Shanty .
Husson, Edmond
Hutchinson, Jr., 8. .
Hutchinson & Thomas
Hydraulic Cement Co.
Ingraham & Co., E..
do. do.
do. do.
do. do. é
Ives, Beecher, & Co.
do. do.
do. do.
do. do.
Jackson & Co., J. Al .
Jackson Co.
Jackson & Wiley
Jenkins, Nathaniel ?
Jenkins, Thomas E.
Jennings, Abraham G.
do. do.3
do. do.8
do. do.3
do. do.3
do. do.3
do. do.
do. do.
do. do.
do. do.8
do. do.
Jervey, William E. .
Johnson, Charles E.
Johnson & Co., I. 8.
Johnson & Co.,
Johnson, Frank G.1
Jones, Edward F.
do. do. i
Oliver .
REGISTERED TRADE-MARKS.
Brief Description.
Anchor, or resemblance thereto .
Collar & cuff, and monogram “ E, H.”
Figure of apparatus, and words
“Wicked Oiler”
“The Coat-Fitting Shirt,” with iL
lustration . :
Circle, enclosing directions for ¥ use,
address, and words “ Akron ae
draulic Cement,” &c.
“ Grecian”
“ Venetian ”
“ Tonic”
“ Dorie” 4
“Very Old Brandy,” eaGes & eames
Elaborate design: wreath, crown, &c.
do. do. oval label .
do. do. do.
Picture of Perseus & Andromeda, &c.
Head and upper part of the body of
an Indian, words “ Indian Head
Mills” i
“J. & W.,” donposten peuciaee ;
f Annihilawe 7
Picture of plant Cielait Clic,
with flowers, birds, and leaves .
Bobbin & carriage of a lace machine
2007" ze
ce 190 ”
cc 150 ”
“180”
“300”.
“ Stella” 3
“La Duchesse” .
“ Diamond”
“750”
ce 175 ”
“ Puroline ” i
Griffin holding allay. eacib, ke.
‘«Sheridan’s Cavalry Condition
Powders”
“Villa Paints”
“ Indestructible Schaal Chart” :
“The Binghamton Scale Works,”
and bee-hive .
Picture of shoe, with words “Ankle
Counter ”
Joslin,Palmer,& Williams ‘‘ Real,” and letters “S. A. H.”
1 Not described in specification.
2 See § 278, ante.
619
Class. No.
N’ck-ties, bows, &c. 673
Ladies’ collars,
cuffs, &e. . 481
Oiling apparatus 824
Shirts . 278
Hydrauliccement 347
Clocks . 576
do. 577
do. 578
do. . 579
Brandy 429
do. 547
do. 548
do. . . . . 549
Stomach bitters 39
Cotton sheetings 538
Car, &c., bearings 378
Medicine . 746
do. arg 310
Lace goods 163
Nets and lace 3ll
do. do. 312
do. do. 313
Nets & lace goods 391
do. do. 892
do. do. 893
do. do. 394
do. do. 895
Hair-nets . 717
do .. 718
Tilumin. oils, &c. 164
Printers’ ink. 228
Medicine . 918
Paint . : 879
School charts 40
Weighing scales 200
Shoes, brogans,
and boots 149
Jewelry 730
3 See title ‘‘ Numerals.”
620 APPENDIX.
Registrants. Brief Description. Class. No.
Joslin, William EZ. . . “A. B.C. D.E.F.,” ee
patterns... Shirtings . . 498
Kavanagh & Decker . “The Nonpareil” . . . . . Billiard-tables . 686
Keeler, Ezra W.. . . “Clarence,” and figure ofa cross . Twine,warp, yarn,
ens 2 4 « 289)
Keep, William J. . . Words “Side Burner” . . . . Stoves. . . 624
do. do. a “Side Burning” . . . do. . . . . 625
Kellogg, JohnQ. . “Jurubeba” . . . . . . . . Medicine. . . 896
Kennedy & Co., 8. H.. Device of tree, &e. . . . « » Hemlock linim’nt 1080
Kennedy, Simon H. . Monogram“ K.C.E.P.”. . . . do. » . . 880
Kimball & Co., W.S.. ‘ Peerless,” with cut of eine sun Tobacco... 274
King,S.A. . . . Letter “T,” with figure of a Chi-
nese carrying chests oftea . . Tea ... . 825
King, William . . . Proprietor’s portrait, surmounted
by British arms, above which the
words ‘‘ King’s Sauce Royal,” &c. Table-sauce . 57
Kingsford & Son, T. . “Silver Gloss Starch” . Starch. . . . 768
Knight, B.B. & R, . . “100° Fruit of the Loom 1008,” ad
with fruit. . . . . . Cotton goods 220
do. do. . . . “Fruitofthe Loom” . . . Cotton shirtings 418
Knight, Samuel F.. . Figure ofa turtle, and ineeeiption . Shell-goods . . 1030
Knoepfel, W.H. . . “J. G. B. Siegert’s Angostura :
Bitters” . . Bitters . . . 6580
Knox, Jr., James. Duck, encircled by ensait of ihistle
leaves, with words ‘“ Moveo et
Profigior”. . . . . . . Linenthread . 482
Kohler, John F.. . 2. “AR”, , Bread... 537
do. do. » . . Cream Bread, _ and letters oA R. 7 do. . . . . 658
Kuhlman, Henry . . “Cape-Hood Water-Proof” . . . Water-proof gar-
ments. . . 654
Kupfer, John B.. . . Letters“K.K.C.” . . . . . . Biscuits &crack’rs 856
do. do. . . . “K.C.” (for Kenosha crackers) . , do. do. 941
Kwong On Cheong? . “U.S.” inadiamond... . Tea ... . 409
Lacroix, A.L. . . . Device of pine-apple shape, ‘ind
words “‘ Pine-Apple Strengthen-
ing Cordial Bitters,” &e.. . . Strengthening cor-
dial bitters . 996
Laflin & Rand PowderCo. Various devices, and “ Laflin &
Rand Powder Co., N. Y.,” &. . Gunpowder . . 885
Landenberger & Co. . Shield, with double- headed oer Woven & knitted
and firm-initials . . . . goods. . . 884
do. do. ; do. do. do... do. do. . 835
Landsberg, Silvius. . ‘Genuine Virgin Gold Plate,” and
eagle. . . . . . . ©. . Jewelry and
watches . . 419
Landsberger & Co . Picture of three four-winged bees,
for the letter“B.” . . . . . Wild-blackberry
bitters . . 814
Langdon Manuf. Co. . Letters“G.B.” . . . . . . . Shirtings, &e. . 719
1 See § 194, ante. ? Chinese firm domiciled in the United States, 5 See § 278, ante.
Registrants.
Lanman & Kemp! .
Laroche Freres du Mar-
tinet .
Larrabee & Sons, E.
Lawrence, B. & P. .
Lawrence & Sons, D. .
Lear, Peter
Leberman & Co.
do. do.
Le Clercq, Arthur .
Lee & Brow . .
Lesley, Alex. M.?
Lester, Felix E. .
Levi, Lewis
Lewenthal & Co., R.
Lewis & Co.,A.K.. .
Lincoln & Co., Geo. 8.3
Lippiatt Silver Plate and
Engraving Co.’ .
Littlefield, Alvah
Loring, John P.. .
Lovett, Jane
Low & Co., C. A.
Lowell Manuf. Co. .
Luckemeyer & Co., K.
Luscombe & Co., T. T.
Lynch & Buckingham .
Lynch & Co., J. A..
Mallory & Co., J. F.
REGISTERED TRADE-MARKS.
Brief Description.
Words “Florida Water”
“ Laroche Fréres du Martinet,” with
monogram of “ V. E. Mauger”
Engraving of the “Battle Monu-
ment” of Baltimore, and words
“Monumental Factory ”
Shield, with fleur-de-lis, &e., “ war-
ranted pure linen” aca ee
“Medford Rum,” &c. RB
“Lear’s Lung and Spine Protector”
“Primrose Soap”
“Philada. Soap Co.,
monogram of “p. 8. C. » ‘
Pictures of “ Copying Press, Earth,
and Mercury ” 8
“ALR. L.”
“ Zero”
Phil.,” with
“Green Mountain Beer ’” a
Lozenge, and “ Manhattan Fine
Shirts’...
“oR. Leweuthal & Gy.”
gram of “H. & M.”
Kettle suspended over fire, &e. .
“ Molasses-Gate,” in raised letters
with: mono-
Mythological device, double-headed
bird, &e. : S14) eo Te
Device, reversed Q, &e. i 8h cee G8
Shield, antique letters “J. P. L.,”
monogram .
Rings, containing “ Mrs. Fi ane eto
ett’s Nipple-Salve ”
Letter “1,” inclosed in diamond:
shaped lines
Picture of machinery, alk of a car-
pet rolled
“ Eugenie”
“Silver Polish Bath Briele: a ee,
“Huntoon Governor”’
Propeller-wheel, bearing the words
“The Huntoon Governor” .
Shield-shaped symbol. .
1 Registered in consequence of decision referred to on p. 559.
3 Not described in specification.
621
Class.
Toilet-perfume
No.
1094
Writing-paper and
envelopes 994.
Leather . 1071
Writing-paper 987
Medford rum 165
Apparel for pro-
tecting lungs 569
Soap 189
do. 185
Copying presses 731
Medicine . 833
Refrigerators and
water-coolers 664
Beer 483
Shirts . 179
White lead 769
Whiskey & bitters 275
Molasses-gate 146
Silver & plated ware 41
Quinine tonic bit-
ters. . 1091
Hosiery, trim’ngs 363
Nipple-salve . 508
Tea 240
Carpets 182
Gloves 2 864
Polishing- Waele 805
Governors for
steam-engines 334
Huntoon steam-
governors
Canned goods
2 See § 2738, ante.
68
. 1093
622
Registrants.
Mayer Brothers & Co. .
McBeth, Bentel, & Mar-
gadant. . ...
McBride & Co., 8. W..
McComb, James.J. .
do. do.
McComber, Joel .
APPENDIX.
Brief Description.
Representation of a fish, and letters
SO TRS oe ee ie 2 IE a
“ The Universal Wood Worker” .
“ White Lilly” i
“ Arrow-Tie” . .
“McComb,” with deena ‘of an
ALTOWS Cus Aw ci a che ee
“ The McComber Last,” with Hee
McConnell, Porter, & Co.! “ Scioto”
McCutcheon, Gordon,
& Co.
McDermott, Redding-
ton, Hostetter, & Co.
McKee, John .
McKennon, J. W.
do. do. .
McKeon, Thomas
McKinnon, John A.
McLean & Co., Samuel?
Maddox, William
Magan, M. H. M.
Maguire, I. & C..
Maillard, Henry .
Mallory & Co.,D.D. .
Manhattan Cloth and
Paper Co..
Mansfield, G.H.. . .
Marcelin, Warren, & Co.
Marley & Cook
1 See § 198, ante.
“Red Sea,” and “ McCutcheon,
Gordon, & Co.” .
“Yerba Santa,” lettering,devices, &c.
“McKee’s Corn Salve,” and figures
Monogram, composed of the letters
“B.C. T. D.,” &e. .
“Commercial Safety Paper,” &c. .
«Tron Crown Paint,” and two sailors
Words “McKinnon’s Colic Cure,”
printed on a horse .
“ Railroad Brand,” locomotive, wild
animals, &c. 3
Elaborate device, two bela, ¢ one
having on it the words ‘‘ Maddox
dapaness,.” the other “ eiseas
Balsam ”
Frog drawing a box, on on is
“ Cleansing Powder ” :
Pass in the Andes Mountains, imp
natives leading llamas, cundv-
rango plant, &c.. A
American eagle, &c., sarpant, : an-
chor, &c. ee
Diamond-shaped cee and firm-
name. 0
Circle with firm-name, figure of
Indian with bow and arrows
Picture of a fish .
Word “ Sulphurine”
Monogram of names, bes « The
Acme Shirt”.
Class. No.
Cherry-juice. . 1038
Wood working . 381
Soap . 1058
Cotton-bale ties 314
Cotton-bale bands
and ties . 171
Boot &shoe lasts 250
Fire-br’k, tiles, &c. 510
Flour . 747
Medicine . 69
Corn-salve 451
Chemical test and
detector for
bank-checks 8386
Bank-checks, &c. 981
Paint . . . . 484
Medical compound 42
Worsted goods . 186
Cough balsam . 62
Cleansing powder 865
Medicine . 896
Confectionery and
chocolate . 870
Canned oysters
and fruit . 985
Cloth and paper 688
Fish-lines . 509
Disinfectants, &c. 629
Shirts . 897
2 Not described in specification.
REGISTERED TRADE-MARKS.
Registrants.
Martin & Co.!.
Martin, J. L. .
Marx & Rawolle .
Maryland Fertilizing &
Manufacturing Co. .
do. do. do.
do. do. do.
Massonneau, Charles F.
Mason Manuf. Co. .
Mathews, David P.. .
Mauger, Victor E. .
do. do.
do. do.
do. do.
Maw,Son,& Thompson, s.
Maxwell & Clarke .
Mayo, Israel C.
Mayo, UrialK2. . .
Meneely, HE. A. & G. R.
Mercantile Loan and
Warehouse Co. .
Merrill, R. S., W. B.,
and J. A’.
Messinger, Charles B.
do. do. .
do. do.: .
do. do
Meyer, Julius W.
Miami Powder Co. .
Michigan Stove Co.
Middlesex Co.
Milhau’s Sons, J.
Millard, E.R... .
Miller, Albert W. W.
1 Not described in specification,
Brief Description.
Fancy shield with device .
Female head, with word “ Ozoami”
Monogram, “R. T. G. C.,” &. .
Words “ Tobacco Food”. S-%
Representation of palmetto-tree,
and “ Cotton Food”
Cancelled
“Arnica and Toding,” portrait of
manufacturer, and ‘‘ Trade-mark ”
“‘Mason’s Improved” .
Monogram “D. P. M.”
“Wharfedale ” ‘
“ Goodall Playing Cards 2
“Hughes & Kimber Litho ma-
chines,” and arrow . eS
“ Bichromatic ”
Monogram, ‘S.C. M. M. Tr. ” ane
OOM a ee AR RH
“Game Cock ”
“ Piscatine ”
“Mayoline” . . ‘
“The Meneely Bell- Bonndey oe
Words “ Safe Sure,” so arranged that
same S answers for both words
“Mineral Sperm Oil”. .
PRS GE sa es a
"Cy Ss”. ‘
“ Granger ”
“One A Better ”
Label, with crown, and inotiggeaim
of dealer, &e. . ‘ ;
Mounted ceanen, and “ Miami
Powder Co.,” &e. . j
Arms of Michigan, and words ® “ E
Pluribus Unum,” &e. .
“ Middlesex Yacht Cloth”
Words “ Lanoix Vaccine ” :
Monogram of letters “D.C.” in stan
“ Men’s Furnisher”
2 See §
3 See § 273, ante.
623
Class. No.
Whiskey . 210
Preparation for
the hair 58
Glycerine soap . 364
Fertilizers 645
do. 646
do. 647
Strengthening
plasters 450
Fruit-jars 276
Medical compound
for cattle . 499
Printing-presses 826
Playing-cards 556
Printing machin-
ery & materials 886
Playing-cards . 980
Surgeons’ ins’ts 480
Paints . . 1007
Preserved fish 633
Artificial teeth . 904
Bells 885
Stationery, and
mem. books. 851
Hydrocarbon oil 557
Smoking-tobacco 558
do. 559
Chewing-tobacco 570
Smoking-tobacco 1041
Axes 43
Gunpowder . 909
Stoves, &e. 982
Woollen cloth 655
Vaccine 837
Dressing comp tad 190
Gentlemen’s fur-
nishing goods 258
217, ante.
624 APPENDIX, :
Registrants. Brief Description. Class. No,
Miller & Bro.. . . . Eagle Shirt Factory, and picture of
aneagle . . . . Shirts... . 613
Mills, Johnson, & Co. . ‘“‘R. Bond, Bolshon ‘Go. ES ay, x
and two arrow-heads. . . . Whiskey. . . 191
do. do. do. . ‘“T.0O.P., 1858, Paris, Ky.,” and
two ilamgles a he do. .. . 192
do. do. do. . “I. Seawright, Bourbon Ho Ry.”
eight-pointed star . . do. . . . 198
do. do. do. . “T. Williams, Bourbon Co., Ky” a
with anchor . . do. ... 194
do. do. do. . “S. N. Pike’s Whiskey, ‘iG,
Ohio,” with “XXX” .. . do. ... 215
do. do. do. . ‘John Frazer, Paris, Ky.,Bourbon” do. . . . 201
do. do. do. . ‘8S. N. Pike’s Magnolia Whiskey,”
diamond, &e.. . . . do. .. . 241
do. do. do. . “Dave Jones’ Paris, Ky., Bowben” do. .. . 461
do. do. do. . “ Bourbon,” and two spear-heads . do. .. . 462
do. do. do. . “A Wickliffe,’ arranged in semi-
, circle. . do. . 463
Mitchell, Samuel J... “ Franklin Taghinine Rod Ractory” ” Lightning- rods . 864
Molesworth, William . “ Wm. Molesworth, M.D., Vaginal
Injecting and Vacs, or Suc-
tion Syringe,” with figure . . Vaginal injecting
syringe . . 838
Moline Plow Company! Monogram, &e. . . . . Plows & cultiv’rs 251
Moller & Sons, William Pyramidal figure, with fac- simile . Sugar, syrup, and
molasses. . 150
do. do. do. Aparallelogram,and word“ Sirup’” Syrup. . . 195
do. do. do. ‘Diamond Syrup”. . Syrup & molasses 348
do. do. do. ‘Wm. Moller & Sons’ Block Suva” ” Sugar... . 849
Monies & Pughe. . . Peculiar five- -pointed star. . . Crackers . . . 882
Monks & Sons, J. A. . Stag or elk’s head, and words
“Douglass Elkhorn”. . . . Whiskey. . . 3655
do. do. do, . ‘J. A.M.” and various words er; do. .. . 410
do. do. do. . “J. A.M.” and “ Licking ae
Bourbon,” &.. . . do. eos All
Moore & Co., Jesse. . Stag’s antlers, above firm- sitien ‘ do. ia: a 822
Moore, Thomas E. . . ‘‘Pure Hand-Mash Copper Whis-
key,” and figure of a man stir-
ringamash-tub. . . do. .. . 412
do. do. . « Pure Sour-Mash Copper Whisky, a
with figure of man. . . do. .. . 656
do. do. . « ‘Pure Sweet-Mash Bourbon Whis-
ky,” with cutof tub... . do . . . 657
do. do. . . Sheaf of rye, and words “Pure
Old Rye Whiskies” . . é do. 711
Moore & Co., J.C. . . “ Argus Oil Co.,” eye and arrows . Oils, wax, & tallow 827
Moorman, C.P.. . . “C. P. Moorman — Old Bourbon,”
with crown and cross . . . . Whiskey... 68
1 Not described in specification.
Registrants.
Moorman & Hardy! .
do. do ..
Morehouse, Charles L.
do. do.
do. do.
do. do.
Morgan’s Sons, Enoch.
do. do. do.
Morison, Son, & Hutch-
inson ? ea
Morrison & Co., James
Morse Brothers . .
Murdock, Jr, E.. . .
Myer, Daniel Ww.
Myers & Co., E.3
Myers & Co.
Myers & Co., Lawrence
do. do. do.
Myers & Drummond
do. do.
Nason, James H.
National Rubber Co. .
National Yeast Co. .
REGISTERED TRADE-MARKS.
Brief Description.
Picture of an English crown, and
fac-simile of a barrel of very pe-
culiar construction . .
“J. H. Cutter, Old Bourbon” 2
“Pure Old Rye,” &. . .
“ Arctic Machinery Oil”. . . .
“Crystal Head Light Oil” . . .
“ Amberline Machinery Oil” . .
“Zepher Wool and Factory Oil” .
“Sapolio”., . . 2... b> dis
Human face reflected inapan. .
“The Star Shirt,” with six-pointed
Star « « « ‘
Dial and Maznetic Needle, be: ‘
Word “ Sun,” with or without pic-
torialdesign . ... .
“ Sunshine Polish Oil”
625
Class. No.
Whiskey. . . 64
do .. 90
Machinery oil 151
Illuminating oil 152
Lubricating oil . 158
Factory oils . . 154
Polishing comp’d 323
do. do. 824
Shirts. . . . 202
Sugar-cured hams 697
Prepared plum-
bago . 1042
Substitute for lin-
seed-oil . . 614
“D. W.M.” and figures ‘‘ 1840” in
a triangle . Ague and fever
mixtures. . 1014
Winged shoe, monogram, and
“Shoe Fly”. . . . Prizecandy. . 44
A star, with title of piedadl Wool-detergent
and bleaching
compound 986
“M” in heraldic garter, inovalform. Gin. . . . 365
Cluster of grapes, ‘‘ Royal Sherry,” &c. Sherry wine . 366
“Golden Slug,” &e. . eros . Pressed chewing-
tobacco - 1020
“Pancake” . . . : do. do. . 1021
Palette with pencil end ‘iushies,
and name, &c. Pigment . 229
Word “Anchor,” picture of anchor. Rubber goods 783
Eagles, with words “ National Dry-
Hop Yeast” . . .. . .. Yeast... 127
1 The certificate in this case has been considered by the U. 8. Circuit Court, Cal, Dist., and annihi-
lated (Moorman v. Hoge, Am. Law Review, vol. vi. p. 365, reported in full in California journals)
The
mark is described in the specification as consisting of a barrel of peculiar construction, ‘ of extraordi-
nary length, being thirty-eight inches, made with sixteen wooden and four massive iron hoops;
one and one-fourth inch thick, and has a capacity of fifty gallons,’ &c.
erred in admitting the application to registration.
2 This mark has been sustained in the U. S. Circuit Court (Morison et als. v. Case, 9 Blatchford, 548,
staves
It is also set forth that the
brands and devices were bought by the applicants for the sum of ten thousand dollars.
The Office
and Official Gazette, vol. ii. p. 544), and a perpetual injunction granted. But lest the language of the
specification might mislead, it would be well not to follow the description as a precedent. — It runs thus:
“The name of the ‘Star Shirt,’ both in this form, ‘The Star Shirt,’ and with the device of a six-
pointed star in place of the word ‘Star,’ . and also the said device of the six-pointed star used in
connection with the said words ‘The Star Shirt.’’? The Office is now more particular. A trade-mark
must be invariable, as well as definite and certain.
3 Not described in the specification. 465
626
Registrants.
National Wood-Manu-
facturing Co... .
Navassa Phosphate Co.
Nellis, Aaron J. .
New England Felt-Roof-
ing Company.
Nichols & Co.,J.R. .
Niederlander & Co., J.
Nones & Co., A... .
North-Western Horse-
Nail Co. :
North-Western Fire-
Extinguisher Co.
Norwalk Iron Works .
Oakley, Jesse .
do. do. .
O’Donnell, J. M.
do. do.
do. do.
Ohio Valley Piano Co.!
Oldberg, Oscar
Olzendam, A. P.2
Oppelt, Edmund J. .
Orth, Adam? .
Ottenheimer, Rothschild,
& Co. ;
do. do. dion
do. do. do.
do. do. do.
do. do. do.
do. do. do.
do. do. do.
do. do. do.
Page, G.F. and C. T.
do. do.
Palmer, Elihu B.
Palmer, Kennedy
do.
Palmer, Lorin?
1 See § 278, ante,
APPENDIX.
Brief Description.
“Wood Carpeting,” and two stars.
Class. No.
Wood-carp’g, &c. 519
“ Azotin,”’ in diamond-shaped border Concentrated am-
Monogram “A. J. N.,” with iis
forks, &c.. ote
Figure of a bee-hive with bee
“ Cincho-Quinine” .
Figure of a Chinaman .
“Fleur de Lys,” with cut of fily:
flower, and “ Brandywine. —
:xxx:— A. Nones & Co.”
“ Western Horse-Nail”
“The Babcock Fire-Extinguisher ’’
Star, and words “ Steam Pump ”
Words “ Maltese Soap” .
Figure of a Maltese cross .
“J. M. O’D.” as a monogram, wih
various other devices and symbols
Monogram “J. M. O’D.,” and
“Jas. M. O’Donnell & Bros.” .
“J. M. OD. —O. K. No. ONE —
Jas. M. O’Donnell ”
Words “ Valley Gem ”
Word “ Borobalsamine” .
Crown in a wreath, “A. P. 0.”
“ Standard ”
Monogram in diamond .
Letter“G”
Letters “D | d.” &e.
Word “Comet”... ...
“W.F.,” with cenamnenial hecder,
“G4. 8. » do. do. do.
“X. L.” with or without anchor
ce B. » 3
“ D. , 2 4 ks
“Patna Cow,” with words & Page’s 8
Patent, May 8, 1866”
“ Page’s Patent Tanned Leather,” &e.
“Palmer’s Spanish Dressing” .
Diamond, with monogram “P. H.
& G. 1871”
Crown, wreath, and words “ Golden
Crown”
3 Palmer v. Harris, 60 Penn. 156.
moniate 665
Hay-elevators, &c. 124
Felt roofings . 721
Medicine . 707
Bitters . 898
Flour . 784
Horse-nails .
277
Fire-extinguisher 356
Steam-pumps . 1015
Soap 648
do. 770
Whiskey . 649
do. 850
do. 651
Pianos . 795
Aqueous solidion of
balsamic gums 630
Woollen hose 10
Tobacco . 208
Bitters . 211
Corsets - 1008
do... . 759
do. . . . . 760
do. 761
do. . 762
do. . 1048
do. . 1044
do. . 1045
Leather - 105
do. » . . 441
Dres’g for leather 615
Advertising me-
dium . 500
Cigars, snuff, and
tobacco . 106
2 Not described in specification.
Registrants.
Palmer, O. M.
Parodi, Enrique . 5
Partridge & Co., J.C...
Patent Elastic Felt Co.
Patent Metal Co.
Paton & Co. .
Paullin, Mary A.! .
Pavenstedt & Co., E.
Peake, William I.
do. do.
do. do.
do. do. a Fe
Pearl, Adolph.
Pease, Francis S.
Peck & Snyder? .
Pecker & Co., Seth E..
Pemberton, John S.
Pemberton,Taylor,& Co.
Penn, William H.
Perrin, Marie Eulalie .
Perry & Co. .
Pettit & Barker .
Phalon & Son. ‘
Phelan & Collender .
Phillips, Charles H..
Phillips & Co., E. R.
Phosphor-Bronze Co. .
do. do. .
Pierce, Henry L..
Pike, Amasa H.. . .
Pilkington, Edwin T. .
1 See § 246, ante.
REGISTERED TRADE-MARKS.
Brief Description.
Shield with a mortar, &c.. . . .
“ Superior de J. M® Vichot,” &c. .
Eagles and young, and rock, &c.
“Patent Elastic Felt,” and anchor.
Monogram, “ G. L. 8.”
Word “ Huguenot” .
Cross-enclosed words ‘Mrs. Mar-
ple’s Salve” Z
Representation of a spread fan 3
An otter on a rock, & word “ Otter”
A beaver, and words “Improved
Silk Finish” . .
A marten sable, and words at ‘Turk:
ish Mohair Brilliantine ”
Star, shield, &c.
“Green Seal”. ‘
An eagle, and the words ‘‘ Genus
Lead” . .
Red ball, & words * “ Deadral. Ball” e?
View of Boston Custom-house, &
words “ Custom-House Gin ”’
“e Compound Syrup of Globe-
Flower,” and cut of flower .
Hercules and the ne with
words .
Monogram “ Ww. H. P,, i ‘and f siSeape
Wine Bitters” . .
Monogram, “J A,” “ Cyano, Pan-
creatin” . . . . és
“New American”
“ Pettit’s American Biya: Salve,”
&c., with picture of human eye
OT. lava you,”
“The Standard American Billiard-
Table,” &e. :
Monogram containing letters «Pp,
HILL. LI. P. 8.”
“EE. R. Phillips’ Scotch Liniment,”
in border...
Initials “P.B.C.”. . . .
“ce Sligo oe
A star, with ef Geman Gorcak Choo.
ola
Woman applying warten, & a Magic
Garter ”
“ The Fruits and Flowers,’ illust’d .
and picture of eye, &c.
627
Class. No.
Salve . 212
Cigars . 815
Cigars, tolianeo,
and snuff. 65
Prepared cotton 464
Metal . . 73
Cotton sheetings
and flannels. 889
Salve . 857
Tea. 720
Alpaca 259
Mohair 260
do. 261
Tkessutitamiines 1079
Tobacco 350
White lead, &c. 881
Base balls 46
Gin. 616
Cough-syrup 816
Medical comp’nd 166
Bitters... 938
Medicine . 367
Cooking-stoves. 278
Medicines. 817
Perfume . 825
Billiard-tables 242
Essential oils and
other chemicals 1072
Medicine . 357
Bronze alloys 698
Bronze alloys, &c. 699
Chocolate. 882
Garter. . . . 298
Smoking & chew-
ing tobacco 279
2 Not described in specification.
628 APPENDIX.
Registrants. Brief Description. Class. No.
Pitt & McCann, W.T.&C. Figure of a crescent, and word
“Crescent” . . . . . . . Ryewhiskey . 1031
Place & Co., William H. “Colorine” . . . .. . . . Dyeing & color-
ing compounds 252
Plumb & Burdict . . Diamond-shaped figure, ‘“ Bolt M.
F.R.S.” and monogram. . . Carriage bolts . 967
Pohalski & Co., Pincus ‘Monte Christo,” elaborate design,
figures, ship, and ene equip-
ments .. . . Cigars. . . . 681
Pomeroy’s Sons, L.. . “ West Point Cadet,’ ” in rani letters Gray cloth . . 196
Pommer, Frank L.. . “Malt Extract Lozenges,” &c. . . Lozenges. . . 905
Pope & Baldwin. . . Picture of corn-planter, firm-title,&c. Corn-planter. . 91
Popham, William H. . Figure of a pig or ie e8 . Hog’s lard - 987
Pratt, Charles . . . “Astral Oil” . . mee ew Gils eo ye 10F
Prescott, James L.1. . Monogram on evil, . . . . . Stove-polish. . 109
Procter & Gamble . . Circle, enclosing the moon, stars,
human profile . . . . . . Soaps, candles, oils,
&.. . . . 887
Purley & Co., John. . Egyptian landscape, camels, Bedou-
ins, &c., and words ‘“‘ The Water
of Life » & 4 . Medicine. . . 906
Putnam, SilasS. . . ‘The Putnam Curtain Rixiore* . Curtain fixtures 422
Rall & Co.,J.M. . . “Oilof Soap,” and two barrels . Oilofsoap . . 617
Ralph, Alexander . . Perched eagle, and letters‘‘R.S.S.” Snuff . . . . 748
Rand, Jr., W.J.. . . Venus, and words ‘‘Sea-Moss Cough-
Candy, Troches, & Syrup”. . Sea-moss cough-
candy, troches,
and syrup. . 125
Randolph, R.R.. . . Portrait of King William, &. . . Tobacco . . . 110
Ransom, Lewis E. . . Large letter ““R” and “Trade
Mark”... . . Annatto . . . 1078
Rappleye & Knight. . “The Dollar Reward Soap, ie ‘be. . Soaps... . 481
Rasin, R.W.L.. . . Picture of an island in the Caribbean
Sea, and words “Soluble Sea-
Island Guano” .. . . . . Soluble Sea-Island
guano. . 46
Rawson & Philbrick . Picture of palm-tree, oe and
signature . . ose owe ae OCIBARS Sy a a 292
Redington & Co. . . “ Cabinet Pipe Organ”... Cabinet organs. 336
Redway & Burton . . “Century” . . . Stoves. . . . 520
Reed, William H. . . Lamp, with word « Suntighe? ” . , Burning-fluid . 708
Remington Empire Sew-
ing-MachineCo.. . “Remington Empire”. . . . Sewing-machines 652
Renauld, Frangois, & Co. Medallion having printed thereon
‘‘H. Piper & Co., successors to
Heidsieck 4 Rheims, Marne,” and
words “ Renauld & Francois, sole
Importers in the U.S.”. . . . Champ’ne-wine 1051
do. do. do. Crest, and words “Old Brandy;
trade-mark on capsules and cases;
J. & F. Martell, Cognac,” &c. . Brandy . . . 1052
1 Not described in specification.
Registrants.
Renne & Sons, W. .
Reno, Griffen .
Reud, William R.
Reynolds, Benjamin K.
Rice, Mathias Joslyn
Rich & Burlingham
Rich & Co., Isaac
Richards & Sons, I. D.
do. do. do.
do. do. do.
Richards, Robert G.
Richardson, Boynton,
& Co .. e 8
Richardson, Frank L. .
Richmond, C. C.
Ridenour, Coblentz,& Co.
do. do. do.
Roberts & Co., J. E.
Roberts, Robert J. .
do. do.
do. do.
do. do.
do. do.
do. do.
Robbins, Horace T.
Robur Distillery Co.
REGISTERED TRADE-MARKS.
Brief Description.
* Renne’s Pain-Killing Magic Oil”
“ Dr. Reno’s Catarrh oe and
“ Eureka” i as
“ Oxyzone ”
Figure of a loeaedhae, a B. ac, Reyn-
olds, Pure Bourbon, Harrison
Co., Ky.” .
Triangles, with letters se OM, J. Rice,”
SCs a gS
Foliage and fruit of the oucitabees
tree, &e. :
Letter “I,” in coumbination swith
two fishes .
Thistle, &c. zx
A single lily, with words % White
Lily,” &. . . :
A shell, and the woud ef ‘ Shell e
Rising sun, with the letter “ R.” om
“ Baltimore, Richardson, skis
& Co.” . é
“Dr. Kingford’s Celebrated Pills i
Word “Crosby’s,” with picture or
without . ‘
Picture of a Hindoo duct, |
words ‘‘ Hindoo Pain-Conquer-
or,” blown in the glass
“ Arabian Horse-Powders,”
heads of seven animals
“ Longines ” A
“ Diamond Edge” :
“A Luxury.—R. J. Roberts? Razer
Steel Scissors,” &c.. .
“To the ladies. The peonditors of
the Patent Parabola Needles,” &c.
“R. J. Roberts’ Diamond-Edge
Razor”
“An Exquisite pleacume te ‘shave
with,” “ Diamond-Edge Razor”
“R. J. Roberts’ Razor Steel”
“The Storm King Improved” .
Word “ROBUR” . ae
with
Rock River Paper Co.! “ Building Paper” ‘
do. do. do} Prepared ee Board) or
Paper”
Rockwood Photo-Engray-
ing Co.. Device of rising sun, and words
“ Photo-Chromo Lith.”
do. do. do. Device of rising sun, and words
“ Photo-Engraving ”
1 Applicant claims origin of article.
629
Class. No.
Medicine . 806
do. . . 280
Medicines . 1082
Whiskey . 221
Picture frames, &c. 413
Wood pumps 243
Spiced salmon . 618
Gin 560
Gin 187
do. . . 485
Burning- anid 204
Fire-place heaters 501
Medicine . 486
Axle-oil 771
Liniment . 93
Medicine . 186
Watches . 997
Cutlery 108
Scissors 262
Needles 358
Razors 299
do. , 300
Razor steel 368
Umbrellas 315
Spirits . . 1097
Paper . 281
Prepared plaster-
ing paper. 634
Photo-engravings 337
do. 338
630
Registrants.
Rogers & Burchfield
Rogers & Bro.
Rogers, J. & J.
Roose, William S.
do. do.
Rose, Buckley A.
Rose, Joseph!
Ross & Co., C. H.
do. do.
do. do.
do. do.
do. do.
Rowe, Graves, & Co. .
Rowland, Raphael, & Co.
Rubber Paint Co...
Russell & Seabold .
Russell, Thomas.
Ryan, William? .
San Francisco Pioneer
Woollen Factory
Saratoga ee g
Co.
Schember, John .
Schenck, C. S.
Schmidlapp, Bros.
Schmidt & Curtius .
Schoeffel, Adam .
Schrauder, George *
Schriber, James .
Schroeder, Herman.
1 See § 217, ante,
APPENDIX.
Brief Description.
Monogram of letters “R” and “ B,”
and words “ Siberian Iron”
Hand holding thunder-bolts .
Circle, with the letter “R” therein
View of Stockton Hotel at Cape
May, &e.
A print, with the name “ ‘La Manola’
“Rose Burning-Fluid,” with picture
of a rose
“ Rosebaume ” 5
f onsnienie &e.
“Thompson,” and ‘Pure Rye
Whiskey ”
“J. Jackson,” “ “Old Rye Whiskey,
5 years old” .
“ Patapsco”
“Monongahela,” “ Mountain Dew,”
and “Old Rye Whiskey ”
Map of the State of Ohio, &c.
“Star Monogram Whiskey,”
and monogram
“Rubber Paint,” with viene of
tree, &e.
Statuary design of Hereates aad
Lichta, &c.
“Little Belt,” with cenuiontal
devices .
Star, wreath, &e. .
Medal, with words “ San Francisco
Pioneer Woollen Factory,” &e.
Anchor, with “Sardtoga Seltzer-
Spring Co., 1870” .
“ Dr. Hoffman’s Celebrated German
Liniment”’
Two lions shack and label with
words ‘“ Schenck’s Water-Proof
Tags and Labels” .
Cave, with sea-nymphs, and ron
“Tola” .
“ Musical Note- Paper, witli a stare
of music
Picture of crowing radster, aid
. Sugar-cur’d hams 1059
word “ Excelsior ”
“ Bouquet”
cc A, A. ”
Bust of woman,& wens cg Sehinadiee! 8
Imperial Balm” .
5 See § 661, ante.
Class. No.
Sheet-iron . . 595
Silver-ware . . 796
Wrought-iron
goods. . . 619
Cigars. . . . 80
do .... 81
Burning-fluid . 282
Perfume . . . 807
Liquors . .. 119
Whiskey . . . 3839
do. » . . 840
do. » » « 550
do. » . 652
Vinegar and cider 2838
Whiskey. . . 954
Rubber paint . 582
Medicine. . . 808
Cigars. . . . 1016
Hams. ... 1211
Woollen fabrics 420
Mineral-water . 213
Liniment. . . 268
Tags and labels 1046
Cigars . . . 816
Letter-paper. . 968
Cured meats . 955
Smoking-tobacco 988
Cosmetic. . . 3817
3 Not described in specification.
Registrants.
Schuchardt, Frederick
do.
Scott, Jane
do.
Scranton Stove & Man-
ufacturing Co.
do. do. a
Seaman, Robert F. .
Seely, Samuel S.
Seibert, Jacob H.
Selby & Co., James .
Seligman, Jacob .
Seltzer & Miller .
Shannon, Albert F. .
Sharp & Craig
Sharp, Edward 8.
Sharp, Joel
Shepard & Seaman, H.
W.&R. 2.3
Sherriff, John L.
Shinnick, sical
Gibbons
Shumway, F. P..
Sibley, Solomon .
REGISTERED TRADE-MARKS.
Brief Description.
“Meder Swan Gin,” and figure o
swan. ..
“Swan Gin” .
Shield supporting doc, and words
“The University Medicines,” &c.
Name of company, and words
“ Merry Christmas”
“The Excelsior Range” at
“ Wetterstedt’s Patent Metallic Gon
position”
“Seely’s jaded Cough and Heave
Cure”
Two figures, vispresentiy eondane:
ers, &c. .
Shield, with waiee “ Union Planter”
Words “ Little Jake,” &e..
“ Silver Brook Whiskey ” 8
“Ferdinand Summerfield’s Oriental
Balm” .
“ Non-Explosive,”
oil-can . .
“T. M. Sharp’s ‘Colebmated Dye-
pepsia Pills ” é
Picture of machinery, with Gioning
of engineer, &c.
with figure of
“The Iron Clad Can Co.”
“ Sherriff Palm ”
“Sensation”
“ The Partridge Fork” :
Three lines, and words “ Sibley’s s
Trade-Mark,” “ Cut by this line,”
“For a perfect fit” . . . . -
Silbermann, Heinemann,
& Co.
do. do.
Silicate Slate Co.
Simes, I. F.
Simpson & Co.,E. . .
Singer, Nimick, & Co. .
Sleeper, Wells, & Aldrich
do. do. do.
Smith, Crosby, & Co.1.
Letters “S. H. Co.,” interlaced
“ Honest Measure”
Open book, with words “Silicate
Book-Slate Co.” ,
“Egg Soda” . :
Spread-eagle, holding sar, &e. ;
“Star Cast-Steel” . 4
“ Triumph”
Shield, or shield-like border, with
name, &c. . .
Portrait of Gen. Phil. Sheridan, anil
the words “ Phil. Sheridan ”
1 See § 218, ante.
631
Class, No.
Gin 502
do. 503
Medicine . 452
Stoves 287
Ranges 342
Paints 4387
Medical compound 120
Condensed lye . 785
Corn-planters 144
Men’s clothing, &c. 828
Whiskey . 301
Medicine . 465
Lamp-oil . 736
Medicine . 423
Steam-engine 183
Sheet-metal wares,
&.. . . . 848
Palm-leaf brushes 344
Cooking-stoves . 989
Agricultural forks 786
Shirt-bosoms . 1068
Fringes, rib’ns,&c. 134
Cords, fringes,
ribbons 172
Slates, &c. 205
Soda-water . 829
Wines and liquors 620
Cast-steel 487
Canned vegetables,
&e. 700
do. do. 701
Cigars 244
632
Registrants.
Smith, Elisha T. .
Smith, Hiram!
Smith, Irving C.
Smith, James T..
Smith, Jesse S.
Smith, Nathaniel
Smith, Samuel
Smith, Thos. L. .
Smith, W.P. .
Smith & Co., F. E
Smith & Co., H. D.
Smith & Co., J. Lee
Smith & Harris :
Smith & Son, John C. .
Solms, Sidney J.
Sorrento Wood-Carving
CO; eee
Soule, Kretsinger, & Co.
Southern Fertilizing Co.
Spang, Jacob D.
Spencer, Albert H. .
Spencer Manuf. Co.
do. do.
Spies, Francis ¢
Springfield Iron Works
Staab, Charles P.
Stanley, David A. . .
Starkey, George R. .
1 See § 274, ante.
APPENDIX.
Brief Description.
“HK. T.S.,” in double oval, &e. .
“Star of the West Pump,” and star
“ Goodenough ” , %
A standing guanaco, ant word
“*@uanaco ” ‘
“Dr. J. S. Smith’s Detergent
Powder,” portrait, signature, &c.
“ Magnetic Balm”
“ Excelsior Erymg-Pan Pr
“ Strawberry ”
Half-circle symbol, and words ‘ ee Gen-
trifugal Earth Drill”
“FF. E. Smith & Co.’s Crushed
White Wheat” .° .
Letter “‘S,” in circle
Illustration of a crown .
A curve, formed of 2 senaielndles: &e.
with illustration
and “ Hoosier Doe-
“ Live Indian,”
“ Pekin Mills,”
> Skins” .
Words “ Sorrento-Wood Carving ”
“Gold Medal,” and monogram
“8. K.&Co.” .f. . ;
An anchor, and letters “S. F. Co.,”
&e. Stee he 46 ;
Barrel, with proprietor’s name,
lamps, &ce. .
“ Reliance ”
Diamond-shaped symbol 9 on fhawe,
to signify ‘“ Diamond Specta-
cles,” &c. F
Crescent-shaped symbol on frame,
to signify ‘“ Crescent ae
cles,” &c. .
Bell, and words “ Bell Brand Oite: -
&e.
“The Joe George Plow ”
“Semper Paratus,” on an escurdh-
eon, which bears the upper part
of lion, &e. . . agg
“ Club-House Favorite’ 3
“Oxygenaqua” . .....
Class. No.
Yeast . 561
Pump . 432
Oil-cans 888
Umbrellas and
parasols 94
Detergent powder 70
Medicine . 797
Frying-pan 284
Gin 551
Driven-well points
and drills . 990
Crushed white
wheat . 858
Carriage hardware 521
Paints . 178
Fertilizers 245
Cigars . 230
Woven fabrics . 522
Wood-carvings . 689
Agricultural im-
plements. . 1017
Fertilizers 866
Illuminating-oil 138
Clothes wringer 326
Spectacles and eye-
glasses . 1023
do. do. . 1024
Kerosene and spirits
of turpentine 139
Plows . . 1009
Artists’ materials 621
Whiskey . 488
Compound oxy-
gen-water. . 1064
2 Not described in specification.
Registrants.
Starrett, Helen E.) .
Steel & Co., E. T. .
Steele & Price
Steffan & Co., F.
Stern & Co. . .
Sternberger, Legpala. . ‘
Sternberger, L. & S.
Stevens, Alfred T. .
Stevens, Thomas W. .
Stewart & Co., A. T.
Stickney & Poor .
do. do.
do. do.
do. do.
Stowell & Co.
Strain, John G. .
Straiton, Schmitt, &
Storm ..
Strasburger & Pioiffer .
Strasburger, Fritz, &
Pfeiffer . F
Stuart, Peterson, & Co.
Suire & Co., F. E. .
Swain, Earle, & Co.
Swalley, Jos. W.
Swank, M. J. . Lae
Sweet, Barnes, & Co. .
Swett & Crouch .
Tamin, J. M. O..
REGISTERED TRADE-MARKS.
Brief Description.
“ Starrett Patent Overshoe,” &c.
Combination of the letters ‘‘ H. W.
and H.”
Word “ Cream,” &c.
Shield & crown, lions & monognen
“ Champion Shirts”
Balance, shield, and word “ Gen
tennial ”
Circle, crescent, &c., and word
“* Kelipse ”
“ Stevens’ Combination for Sint
ing, Tinting, or Coloring,” with
the monogram * A. T. 8.”
“V.G. & 8S” in monogram, and
“ Bazaar Shirt ” A
Arms of U.S., Gt. Britain, Germany,
and France, &e., very elaborate .
Globe, with latitudinal and longi-
tudinal lines
Pot, ornamented with ficiwete ae
leaves ;
Figure of a bull . :
Cup and saucer, flowers, &.. .
“Samuel Kidder & Co.’s Aatheretie
Pastilles” .
“J. G. Strain’s Creciané Post Split-
Bottom Chairs, Delaware, Ohio,”
and cut of chair .
Three owls, words ‘Owl Segars,” &c.
Escutcheon, and letter “G”.
Inverted truncated cone,with smaller
cone. .
“ Sunnyside”
Mortar and pestle
“Golden Mustard,” and pues of a
cruet-stand
“Sea-Foam Soap,”
name
“ Centennial”
Lozenge figure, swith, letters ae ‘S, B.
& Co.” . a Boat
and proprietors
Firm-name, and words “ Willow-
Spring Ice,” &.. . . . .
“ Phosphorine ” ee
1 An existing patent.
633
Class No.
Overshoes 871
Cloth or men’s-
wear 147
Baking-powder . 1085
Shawls 897
Shirts . 991
Shirts, shirt-fronts,
Ge as 709
Shirts,draw’rs,&c. 258
Colors and paints 907
Shirts . 908
Dry goods 763
Spices . 674
do. 675
do. . 676
Coffee . 677
1
Pastilles 622
Split-bott’m chairs 504
126
Cigars . ,
. 1065
Harmonicas .
Toys & fancy g’ds 246
Heaters & stoves 710
Chemicals 383
Mustard . 919
Soap . 1060
Cigars . 942
Cutters for har-
vesters 571°
Ice . 798
Alimentary & ied
cal preparat’ns 948
634 APPENDIX.
Registrants. Brief Description.
Taplin, Horace . . Astar, harp, trefoil, & clasped hands
do. do. . . . American flag and staff, and sa a
hands .
Taylor, A.S.. . . “ Taylor’s Champagne Nectar”
Taylor, De Witt Cc. &
George F.. . . . Word“ Perfection” .
Taylor, Jr., E.H. . . “O. F.C.,” &e. 7 ‘
Tenney & Sons, W.H. “Harper’s Ferry Flour ‘from ‘White
Wheat” ‘
Teter & Hite! . . . One star owerlippiae ‘gates, in
cloud Sask ow
Thalheimer & Hirsch . Word “ Centennial,’ and pictorial
Class. No.
Badges, medals,
studs 732
do. do. . 788
A beverage . 872
Refrigerating ap-
paratus 787
Whiskey . . . 1022
Flour . 572
All-healing liniment
and morning-star
lamp-oil AT
designs. . . Shirts,draw’rs,&c. 809
The Tanite Company . “Tanite,” &.. ee Emery-wh’ls,&c. 1047
Thomas & Co.,J. J. . “ Thomas’ Smoothing Hlartow awd
Broad-cast Weeder” Harrows . . 6385
Thomas & Co.,J.L. . ‘ Alexandra” Refined petrol’m 999
Thompson, C.L. . . Five-pointed star. Tonic or cr’m beer 789
Thompson & Steele. . “Dr. Price’s Cream” Baking-powder. 95
Thompson, Steele, & Price
Manufacturing Co. “Dr. Price’s Blood Enricher,” &c. Medicines 453
Thomson & Co., A.. . “Crescent City,” ‘Sugar Refinery,”
« A. Thomson & Co.,” “ Orleans
Molasses,” stars, crescent, &c. Molasses 972
do. do. . . “Crescent City,” “Bouquet Syrup,”
stars, &c... . . Syrup . » 973
do. do. . “Crescent City,” Conteiana Mo-
lasses,” &e. ere Molasses . 974
do. do. . . Pelican,” “Molasses,” & crescent-
shaped symbol 2) as do. 931
do. do. . . “Chalmette,” ‘ Molasses,” and
crescent do. - . . 983
do. do. . . Crescent-shaped spiel Sugars,syrups,&c. 998
Thomson, Langdon,& Co. Picture of a crown ede Corsets, skirts, &c. 589
do. do. do.? “ Thomson’s Royal Batswing ” Skirts . 540
do. do. do. ‘ Thomson’s Glove-Fitting Corsets,”
&e. i re Corsets 541
do. do. do. Picture of cbiset, with zone-like
section . ar do. A 542
do. do. do. “Thomson’s Glove- Fitting,” with, cuts Skirts and eoraete 548
do. do. do. A cross, a crown, and words “ The
Crown Perfumery Company” . Perfumery, &c. . 1025
do. do. do. Picture of a crown, and words “ The
Crown Perfumery See 7 do. . 1026
Thurber & Co., H. K. . Autograph, &c. Yeast powder . 14
do. do. do. . Sheafof wheat, with weds “ Cen-
tury White Wheat Bourbon” . Whiskey . » 16
1 Not described in specification. 2 See § 278, ante.
Registrants.
Thurber & Co., H. K..
REGISTERED TRADE-MARKS. 635
Brief Description. Class. No.
“Century Whiskey,” and mono-
gram “H. T.& Co.” . Whiskey . 889
Thurston, George B.
Tiemann & Co., D. F..
Tilden & Co. . ‘
Tileston, William M. .
Tilton & Co., J. E. .
Tinkham, F. J. . .
Toppan & Winn, C. &
Townsend, Elmer
“Mrs. Thurston’s Celebrated Worm-
Syrup”
Reprecentacian of a siebe.. itt
brush, paint-can, and the hand
Medic. preparat’n 247
Paints, colors,
and painting-
materials . . 1039
“ Bromo Chloralum, Tilden & Co.” Medicine . 421
“Ginger, Tonic, Bitters, Wine,
Spice,” “W.M.T.” . . . . Ginger tonic bit’rs 899
« Autographium ” : . Blank-books . 734
Words “ Lightning Polish’ Be eh Polish for metals 859
s
“Aquapelle” . . . . . Water-proof goods 111
Phrase “ Cable Screw Wire,” with
or without picture ‘ Boots and shoes 140
Townsend, Henry Elmer “ Cable Wire,” with picture of niece
OR WATEE ak oh oe we ee do. do. 264
do. do. “Screw Wire,’ &e.. . . . 1. do. do. 265
Trentman, Monning, &
Son .
Trischet & Bondy, S. &J.
Truex, E. H.
Tucker, J. Aneustis
Tufts, James W.!
Tully & Davenport .
Turner & Co., J. J..
“ White Fawn Baking Powder,” and
figure of a white deer or fawn .
Figure of seated woman, holding
shield and sword, eagle, words
“Fast edges, ne -mark, full
Baking powder . 1018
Turner, John P. .
Tuttle, G. R.?.
Twamley, James? .
Tyler, John T.
Tyzick, James
Underhill Edge Tool Co.
width,” &e. . Velvet ribbons . 939
“ Cod-Liver Oil Jelly ” Cod-liver oil . 764
“ Bay State Bone Supeephoephate?
&. . . . . Fertilizer . 248
“The Arctic Soda Agiparatis 4 Soda water ap-
paratus 678
Female crowned head . Emery. 641
Word “ Excelsior” . Fertilizing comp ’d 16
“ Victoria Jet” 5 : Jewelry 415
“Sterling Cannel Coal’ reg Coal . . . 818
Man’s face, printed or stamped . Elastic webbing 860
Monogram,word “Decrustator,”’&c. Decrustating
compound for
steam-boilers . 1087
Diamond or lozenge shaped symbol,
and words “ Trade-Mark, Black
Diamond,” &c.. Emery wheels or
blocks . . 1061
“Crown Axe,” with or without
picture of an axe. Axes 840
Underwood & Co., Wm. “ Deviled Extremets,” &c.
Union Akron Cement Co. “ Akron Cement,” &c., with picture
of star
1 See § 278, ante.
Deviled extremets 82
Akron cement . 141
2 Not a mere geographical term, because registrant is sole owner of place.
8 See § 584, ante.
636
Registrants.
Union Manuf. Co.
University Publish’g Co.
U.S. Proprietary Medi-
cine Co.}
Utica Cement Co.
Van Wart, Son, & Co.
Ventilating Water-proof
Shoe Co.
do. do.
Victor Scale Co.
Vidvard & Sheehan .
do. do.
Viele, Platt B.
Vincent, Hathaway, & Co.
Walker, Joseph H. .
do. do.
Walker, Oakley, & Co.
APPENDIX.
Brief Description.
“Minnehaha Mills,” figure of man,
fall of water, &c.
Name, with banner and monograte
thereon .
Representation of corporate-seal
“Utica Cement Co.,” stars, &c.
Stars and stripes, with the star and
part of the collar of the order of
St. Michael and St. George .
“ Ventilating Water-Proof Shoe Co.
Works,” and picture of 8 boys .
“Ventilating Water-Proof Shoe
Co.,” “Lic. Stamp” .
Word “ Victor” ,
“Meehan’s Malt Pottesn: ms and Trish
harp . .
Medal, with stars, and wonder Gold
Medal Kentucky Malt Bourbon”
“ Viele’s Golden Laundry-Bluing”
Lozenge-shaped border, lettering,
and monogram of letters “V. H.
& Co.” . ha ‘
“Walker” and “ Boot, Ee antl star :
Combination of words “ Saddle,”
“ Seam,” and “ Boot” ‘
“Walker Tannery,” with device of
tiger, wreath, &c.
Walsh, Brooks,& Kellogg Monogram ‘C. S.,” and words
do. do.
do. do.
do. do.
do. do.
Walter & Fielding
do. do.3
do.
do.
do.
do.?
Walter & Shaeffer .
Walters, Edwin .
do. do. .
Walton, Whann, & Oa.
do. do.
do. do.
1 Not described in specification.
8 See § 198, ante.
do.
do.
“Old Cave Spring’
“Old Woodburn,” and three lini,
Monogram “B.C.,” “Old Buck
Creek Whiskey,” &e. . .
Monogram “C. G.,” “Old Cedi
Grove Whiskey,” &... .
“ Paul Jones,” and fetters zy Ww. B.
& K.” in lozenge :
“ * Richmond * Metallic Paint” vu
“ Vieille Montagne Green”
Demon holding six bottles of nitiog
Crescent or new moon, and word
“Orient” .
Crescent, & words ‘‘ Suiting Valley”
“The Great Fertilizer — Whann’s
Rawbone Superphosphate”’ .
“Virginia Tobacco Guano” .
“Carolina Peanut Guano ”
Class.
Paper .
School-books,
maps, &c.
Medical comp’ds
Hydraulic cement
Saddlers’ h’dware
Boots and shoes
do. do.
Scales .
Whiskey .
do. ek
Laundry-bluing
Ginger-ale
Boots and shoes
Boots .
Leather
Whiskey .
do.
do.
do.
do.
Paints .
do. . .
Pipifax bitters
Whiskey .
do.
Fertilizer .
do.
Commercial fer-
tilizers
2 Bee § 218, ante.
187
868
433
992
583
584
49
180
226
438
883
288
9382
289
489
490
491
492
702
493
494
434
830
8738
75
319
642
Registrants.
Ward & Co.
Ware, Marshall, & Co.
Ware, Jr., Preston
Warfield, Alex.
Warfield & Co.
Warren, Edwin A. .
Waters, C.& W. A.
Waterston & Son,George
Watson, R. H.
Wattles, Joseph W.
Wattson & Clark!
Wayne, Edward S. .
Weaver, James E.
Webber & Co., J. T.
Weber, Bernhard
Webster & Co., H.
Weed Sewing-Machine
Co.
Weed & Co., W. A.
Weil & Woodleaf
Weisenberger, Philip .
Weeks & Dupee .
Wells & Stell, W. S.
and J. J.
do. do. do.
Wells, William N.! .
Wendt & Rammelsberg
REGISTERED TRADE-MARKS.
Brief Description.
Letters and figure in saaimaieait
“B4+A.N. Y.”
The word “ Gavotte” . .
Monogram of letters “ W. A. R. Be o
Letter “S,” within which are the
words “ Warfield’s Cold-Water
Soap. Best in the World” .
“Mecca,” with firm initials .
“Warren’s Not Poisonous Hair-
Restorer ” ea %
“Magnolia Gin,” and flowers
Picture of a bee, “‘ The First Wax-
Maker”. *
Shield and border, with ‘a of a
ship .
Bust of an Indian chief, with cor-
onet of feathers, and necklace of
talons, &e..
“WX C” ina parallelogram .
“ Wayne’s Diuretic Elixir of Bu-
chu, Juniper,” &. -
Pearl wheat, letters “J. E. W., a
and two ears of wheat .
Cut of mortar, having the words
““ Webber’s ibaa Bit-
ters” %
Three cherubs colon: a ehair,
Horse-shoe, and words “ Kentucky
Favorite,” &c.
Letters “F.F.,” for “ Family Fa-
vorite”. .
Angles, with letters “«s, N. Ww. B,, Ee
&e. Sasa F
Lion’s head enclosed in a triangle .
Mixed design of stones, flame, and
words “ Key-stone Non-Explo-
sive,” &c. 4
Word “ Aurantine” .
Figure of a conoid A, “ Medikones,”
&e.
Elongated conoid B,“‘ Medikones,’’&e.
Pythagorean theorem, and dove
“ Bismarck Cement,” &ce. .
1 Not described in specification.
637
Class. No.
Cutlery 755
Gloves . . 596
Boots & shoes . 1033
Soap .. . 69
Lubricating oil . 145
Hair-restorer 445
Gin. 544
Sealing-wax. . 1027
Druggists’ sun-
dries 831
Suspenders and
elastic webbing 50
Superphosphate 60
Medicines 345
Wheat. 623
Strength’g bitters 841
Colors . 597
Whiskey . 142
Sewing-machines 51
Perfumery, drugs,
&e.. 775
Fancy goods . 975
Burning-fluid 121
Chemicals for dye-
ing. 525
Medical prepara-
tions 167
do. do. 168
Medicines. 76
Cement 585
638
Registrants.
Werk & Sons, M.
West Virginia Oil and
Oil Land Co.
Wheeler, A. 4-8
Wheeler, Madden,
Clemson . :
&
Wheeler & Wilson Man-
ufacturing Co. .
White & Alexander!
Whitelaw, Francis M. .
Whiting, George A.
Whitney, James H.
Whittaker & Sons, F. .
Whorley, T. & L.
Wiard & Hough .
Wilder, James Davis .
Willetts, Charles E. .
Williams, Blanchard, &
Con & 4
Williams (Thomas C)
APPENDIX.
Brief Description.
Eagle, with words ‘Golden ”
“Eagle,” &.. . 6. .
and
Representation of the western hem-
isphere, with the word ‘‘ Globe”
across the same . .«
“ Siccohast,” & monogram “A, w.” *
“Improved Conqueror Saw,” with
or without pictorial designs
Shield,stars,& monogram “ W.& W.”
Game-cock. . ae ‘
“Gold Ring Candy ” ne F
Monogram “ W. & Co.” with ‘tiiatto
““Memor et fidelis ” on a shield .
Name, with locket enclosing por-
trait, &e. .
Five-pointed star, letter " Ww, ie
firm motto .
Negro’s head, &c., and “ Celebrated
Tar-Heel ” .
Character eonaiviing of fixe ciieles
“ Wilder’s Liquid Slatinz,” elabo-
rate device . ‘
“Quaker” .
Japan dragon, with drawing, &c.
& Thomas (James, Jr.) Monogram, “T. W. C.,” globe,
and tobacco plants .
Williamson, Edward J.2 ‘“ Melaroma,” and beehive & clans
Willoughby, Hill, & Co.
Wilson Beet:
Co. . .
Wilson, Sorg, & Co.
Winfree & Loyd’
do. do.
do. do.
Winslow & Rogers .
Witherspoon, Wither-
spoon, & Wern .
Wood & Co., Alan .
do. do. do.
1 Not described in specification.
“ Square-Dealing Clothing”.
“Excelsior Wilson,” eagle, &c. .
Border enclosing firm-name and
“Beauty Navy Tobacco ”
“Uncle Bob Lee,” and face .
Figures of two Indians, word “ Hi-
awatha” .
Words “ Pride of Virginia, a figures
of men, &e. :
“ Alexina”
“ Magic Polish,” and figures. 6‘
“ Best Charcoal Bloom, "&e., “XXX”
Monogram “AW”.
2 Bee § 278, ante
Class. No.
Wine . 206
Lubricating oils 48
Paint-drier 832
Saws . 1074
Sewing-machines 181
Whiskey . 17
Candy 820
Ladies’ under-gar-
ments,ruffles,&c. 359
Sewing-machine 399
Sugar-cured hams 920
Tobacco . 810
Plows, cultivators,
&e. 819
Liquid slating, &c. 511
Soap . . 805
Tea... . 214
Tobacco . 400
Beverages 401
Clothing . 735
Sewing-machines 679
Tobacco . 910
do. 402
Smoking-tobacco 689
do. 690
Boots or shoes . 6438
Metal polish . 466
Sheet or plate iron 505
Sheet-iron, &e. . 564
3 See § 218, ante.
REGISTERED TRADE-MARKS. 639
Registrants. Brief Description. Class. No
Woodbury, Booth,&Co. “Endurance” .. . . . . . Working-barrels
for petroleum-
wells . . . 485
Woodbury, Edward W. Figure “A” of a cigar, with label e
attached, words “ Industria Del
Tobacco,” &. . .. . . . Cigars. . . . 900
Worcester Co. Free In-
stitute of Industrial
Science. . . . . Monogram of ‘‘W. and S.,” artist’s
palette, a trefoil on a circular
disk, &. 2... .. Mechanical tools,
&.. 2. . . 911
Worth, Judson G. . . Woman carrying a tray with cup
and glass . ..... . . Teas, coffees, &
spices. . . 842
Wostenholm & Son, Gi “I XL”. . » 2 . . . Cutlery . . 666
Yates, Wharton, & Co. Shield (quartered), “wats, “ Excel-
sior”. . Hats . .. . 869
York & Co., George H. Scroll, and riatioeeata “«@. H. 'y, ;
&Co.” 2... Medicine. . . 174
Young & Co., George T. Name, and “ Liquid Enamel Paint” ” Paint . . . . 885
do. do. do. Name, and “ Always arsching Use PE dOy - asx it OBE
Young & Co., Charles H. “ Motepontan = ureseme: . . Blackings . . 526
do. do. do. “Paris Dressing” . Shoe-blackings . 680
Young, John B.. . . “Crown Brand ester Stuffing”. Compound for
stuffing leather 820
Zeilin & Co.,J.H.2.. . Autographs, monogram, &c.. . . Medicine. . 52
Zoller & Little . . . Rising sun, and words “Rising
Sun”... . . . . . . « Roasted coffees. 1088
1 See §§ 68-70, 450, ante.
2 Many errors are connected with this case. The specification speaks of ‘‘a wrapper or label as a
trade-mark for said medicine, of which the design shown in the annexed drawing is a true copy,” &c.
No drawing is or has been annexed. A copy of the printed label or wrapper was filed. By some fatal-
.ity, that was not signed by the applicants. Singular enough, one person signed it as witness! Yet on
the label there is a perfectly-valid trade-mark. AJlerrorscan yet be cured. See §§ 418, 419, ante.
640
Registrants.
Ames & Co., Henry .
Beckwith, Philo D. .
Brown & Co., J. .
Carey &Co. . . .
De Bary & Co., F. .
Florence Sewing Ma. Co.
Fort Plain Spring Axle
Co . i
George, Hocdr ‘
Hanau, Julius ..
Jenks, Charles W. .
Jewett, Sherman, & Co.
Jowitt & Son, Thomas
APPENDIX.
ADDENDUM.
Brief Description.
“Henry Ames & Co., Standard,”
figure of hog on a banner, and
monogram “H. A. & Co.”
Words ‘‘ Round Oak”.
Word “Liberty” . . .
Device of a dragon .
Elaborate device .
Word “ Bureau ”
“Green Jacket”. . a
BC.” & fis pen, sui fe “70” é
E. front Capitol at Washington .
Words “ Sanspareil,” &e. .
Words “ White Lily” .
Steam-engine, &c.
Class. No.
Sugar-cured hams,
&e. . . 976
Stoves. . 1089
Chewing-tobacco 1090
Oils. . 1092
Champ’ne-wine 1099
Sew’g-machines 1081
Springs andaxles 1095
Liquor packages 671
Leather - 1096
Shirts. 1100
Baking-powders 1098
Files 1101
INDEX.
[References are to the sections.]
A.
ABANDONMENT,
sometimes an affirmative defence, 674.
error in arguing from supposed analogies, 675.
of mark differs from that of other property, 675.
discarded symbol may be adopted by another, 677.
resumed by original proprietor, 677.
when extinguishment of trade-mark, 678.
patent cases do not furnish precedents, 679.
what amounts to, 680.
intention is the criterion, 681, 690.
non-resistance to registration by another, not fatal, 682.
what neglect operates as forfeiture, 684.
forbearance to sue is not abandonment, 685.
distinguished from neutralization of symbol, 686-688.
in one country is in law total abandonment, 689.
ABATEMENT OF APPLICATION, for defect of allegations, 572.
ABRAHAM dealt in money current with merchants, 10.
ABSTRACT SYMBOL,
no property in, 129, 311, 312, 360, 450, 588, 596, 661, 676.
therefore cannot be assigned, 361.
ABUNDANS cautela non nocet, p. 611.
“ACA” case (Amosk. Manuf. Co. v. Spear), 153-156.
recognized and registered, 235.
decree of injunction in. (See Appendix, p. 598.)
ACCESS to testimony filed, 640.
ACCOUNT IN EQUITY,
pending result defendant required to keep, 505, 507, 517, 549.
not ordered when complainant negligent, 497.
innocent vendor of spurious goods not to keep, 471.
upon decree for perpetual injunction, 660 (p. 520).
ACCURACY of definition contains much law, 84.
necessary to prevent misconception, 101.
41
642 INDEX.
ACQUIESCENCE IN USE OF MARK,
: may not amount to abandonment, 684.
defeats right to call for account in equity, 497.
ACQUISITION of title to mark, 53.
ACTS OF CONGRESS in relation to trade-marks, 74, 278-384.
ACTION AT LAW,
as remedy for infringement, 334, 368, 392, 451, 457-458, 462-463.
who may maintain, 63, 334.
in doubtful cases must precede equitable remedy, 462.
must fail when plaintiff has used fraud, 370, 373.
time for bringing, sometimes fixed by Chancellor, 468.
verdict not always conclusive on equity court, 464.
fraud is of the essence of the injury, 458.
discovery, as provisional remedy, 470.
when damages recoverable, 499 e¢ seq.
for fraudulent registry of mark, 367.
ADMINISTRATORS may assign trade-mark, 365.
ADOPTION OF SYMBOL AS A TRADE-MARK,
what amounts to, 52, 382-384, 528 et seq., 679.
avowal of intention is not adoption, 52, 382-384, 662, p. 330 et seq.
registration is not adoption, 682.
must be in connection with specific class of merchandise. (See
Crass, &e.)
AFFIRMATION equivalent to oath, 320.
AFFIXING of mark to merchandise, 143, 311, 312, 382-383.
what amounts to, 382.
penalty for improper: affixing, 334.
word ‘‘ patent,” 357, n.
“ AGENCE des thédtres” case, 534.
“* AKRON ” case (Newman v. Alvord), 182, 188, 538, 598, 657 (p. 497),
659 (p. 507).
ALDUS MANUTIUS, his mark, Dolphin and Anchor, 14.
ALIENAGE no bar to protection, 21, 301.
ALIENATION OF TITLE, by assignment. (See Assignez, AssiGNn-
MENT.)
operation of law, 663.
ALLEGATIONS,
must be clear and distinct, 591.
may be true in letter and false in spirit, 607.
not conclusive upon Patent Office, 607-608.
ALLEGIANCE, question of, on application for registration, 291-292.
ALLSOPP’S LABELS, penal servitude for false use of, 452.
ALLUSIVE NAMES, 198.
AMENDMENTS, :
of application-papers is limited, 577.
enlarging claim must be upon supplemental oath, 578.
must not substitute other symbols, 578.
to be made on sheets separate from original, 579.
INDEX. 643
AMENDMENTS (continued).
strictness of practice required in, 579.
to be filed with Chief Clerk of Patent Office, 579.
forms of. (See Appendix, pp. 577, 592.)
‘AMERICAN SARDINES,” not a valid trade-mark, 610.
AMERICAN WATCHES, piracy upon, 74.
AMERICAN CITIZEN may be commercially a foreigner, 290.
ANALOGUES OF THE TECHNICAL TRADE-MARK,
discrimination necessary, 81, 83, 90, 131.
labels, advertisements, signs, 83, 90-101, 130.
advertisement miscalled a trade-mark, 127, 1383-134.
mere labels, 133-136, 345, 377, 379, 537-538, 541-544, 562-564.
applicant’s own name not a trade-mark, 137.
business-signs, 161, 344, 524 et seg., 528-529, 534-535, 540.
cards, circulars, 311.
firm-names on signs, 521, 524-527, 538.
upon dissolution, 530.
titles of publications. (See Booxs; Sona; JOURNALS.)
names on coaches, 560-561.
“ ANATOLIA ” case (McAndrew v. Bassett), 184, 657 (p. 500).
‘“ ANGOSTURA BITTERS,” registered case, 194.
ANIMATE PROPERTY with owners’ marks, 3, 16.
‘© ANNIHILATOR,” a valid mark for medicine, 273.
ANTIQUITY of proprietary marks, 1-19.
‘““ANY CORPORATION,” meaning of words restricted, 277-300, 305.
‘ANY PERSON,” words qualified and explained, 283-284.
APPEAL FROM TRADE-MARK EXAMINER, (See Forms, pp. 577,
585.)
is only to Commissioner in person, 646, 649.
pro formd, and in nature of a rehearing, 659.
stands for argument at one o’clock, P.m., 648.
reasons for, and briefs of argument, to be filed, 649.
thirty days’ time usually allowed, 658.
APPLICANT’S OWN NAME,
is not a trade-mark, 137, 195, 206, 348.
when combined with other words, 199.
use of may be only a cover for fraud, 200.
APPLICATION FOR REGISTRATION, (See Chapters VI. VII.)
preliminaries to, 565-567.
necessity for forms, 568.
substance more necessary than technical form, 569.
system of examination, 570-575.
papers serve purpose of declaration in action, 571, 573. |
objections taken by the Office, 572-573.
questions not answered in advance of filing, 574.
objections, how met by applicant, 575.
drawing and filing of papers, 576.
power to make amendments limited, 577.
644 INDEX.
APPLICATION FOR REGISTRATION (continued).
design of oath, 580. ‘
prima facie title of applicant to his mark, 581.
indefiniteness of description, 583-585.
(See titl - ‘* Specification.”)
APPLICATION OF MARK TO MERCHANDISE,
is essential to title, 143, 311-312.
mode of making, 313, 315.
“ ARAMINGO MILLS” case (Colloday v. Baird), 186.
. ARMS, national, not a trade-mark, 261.
ART, trade-mark not deemed a work of, 110.
ARTICLE, proper name of, not a trade-mark, 165-177.
ARTIFICIAL PERSON may hold a trade-mark, 55.
but not so unless a trader, 55.
‘“ASPHALTE DE SEYSSEL,” being geographical, not a trade-mark,
598.
ASSESSMENT OF DAMAGES,
direct and immediate consequences to be regarded, 510.
one cannot avail himself of his own neglect, 510-511.
actual damages to be recovered, 513.
plaintiff not held to exact statement, 513.
plaintiff’s loss, not defendant’s gain, the criterion, 513.
rule not same as in patent cases, 515.
ASSIGNEE, must deduce his title, 593 (note 10), 661 (p. 528).
unite in concession of priority of right, 684.
ASSIGNMENT, 359, 360. (See Forms.)
ATTORNEY, comprehensive meaning of term, 566.
care requisite in the selection of, 566-567.
notice to, of declaration of interference, 635.
taking testimony, 646.
may attend examination of witnesses, 646.
AUSTRIAN LAW of 1858, 26, p. 560.
AUSTRO-HUNGARIAN CONVENTION, App. p. 557.
AUTOGRAPH is a valid trade-mark, 204.
so is a fac-simile thereof, 207, 272.
copy of, as means for deceiving the public, 208.
trade-mark for assignee, 209-211.
B.
BADGE as a proprietary mark, 5.
‘“BALM OF THOUSAND FLOWERS” case, 148, 241-244, 448.
BANKRUPTCY, trade-mark included in assets, 663.
BASS & CO.’S case, 448.
the placing of genuine mark on genuine goods not piracy, 448.
BAVARIA, trade-mark law of, 563.
BELGIAN LAW, App. p. 563.
BELGIUM, treaty with, App. p. 558.
“BISMARCK,” a valid trade-symbol, 68.
INDEX. 645
BONA FIDES,
inquired into by Patent Office, 607-611, 613, 619-620, 627, 634, 643,
646, 666-668.
BOOKS, trade-marks for, 14, 15, 161.
protected as merchandise, not as literature, 116.
titles of, sometimes perfect trade-marks, 547 ef seq.
“BORWICK’S BAKING POWDERS” case, criminal, 452.
“BOUQUET” CASE, i
picture of bouquet and word ‘‘ Bouquet” held to conflict, 449, 661.
‘BOURBON WHISKEY,” is this a generic term? 347.
‘““BOVILENE” and * Bovina” case, 397.
“BLANCHARD CHURN ” case discussed, 377-379.
BLASPHEMOUS ALLUSIONS condemned, 602.
‘“BLONDIN ” protected as a pseudonym, 213.
«* BLUCHER,” a man’s name to designate boots, 181.
BRAND, as a mark of ownership, 5.
BREACH OF FAITH, in disclosing secret process, 562.
BREADTH OF CLAIM,
most likely to be founded in simplicity, 586-588.
mistake, by claiming too much, 588, 590.
**BRICK POMEROY,” a valid personal designation, 214.
BRITISH “MERCHANDISE MARKS ACT” of 1862, 85, 102, 301,
App. p. 565.
“* BROSELEY ” PIPE case, 17.
‘«*BROUGHAM,” a man’s name to designate a carriage, 181.
‘“‘BURGESS’ ESSENCE OF ANCHOVY SAUCE,” not a valid mark,
432.
BUSINESS, names protected. (See Chap. XII.)
and styles, in signs and labels, 521 et seq.
place of, must be stated in application for registration, 308.
use of mark for unlawful, defeats remedy, 370.
BUYERS OF GOODS falsely marked, suit by, 63.
C.
‘““CABLE-STITCHED KID GLOVES” rejected, as merely descriptive,
136.
“‘CABLE-TWIST TOBACCO” case discussed and rejected, 167-177.
CHSAR, JULIUS, the first to stamp his image on coin, 9.
“CALCULATED TO DECEIVE,” oath of applicant that mark is not,
820, 327.
“CALENDAR WATCH” rejected, as merely descriptive, 276.
CANADA, law of, App. p. 564.
“CARTE BLANCHE,” champagne-wine case, 438.
CARTHUSIAN MONKS’ trade-mark suits, 407-410.
CASE, action on the. (See AcTIon.)
CAVEAT emptor, 11, 64.
venditor, 64.
646 INDEX.
‘“* CENTENNIAL,” trade-mark interference, 388, 638.
CERTIFICATE, of officer to affidavit, 324.
Commissioner of Patents, to be evidence, 355.
registration is not a patent, 357.
proof of service of papers, 646.
CHARACTERISTICS, essential, of a trade-mark, 143.
CHARGH D'AFFAIRES may administer oath to applicant, 321.
‘* CHARIVARI,” French journal case, 551.
*‘CHARTER OAK,” a valid trade-mark for stoves, 148.
‘* CHARTREUSE” has all essential elements of trade-mark, 410, 582.
CHATTEL, history of word, 3.
“CHEMICAL PAINT” case considered, 251, 259, 612.
CHEMICAL PRODUCTS, name of, not a valid mark, 166.
CHINESE, antiquity of their trade-marks, 13, 215.
perfect system of marking goods, 43. *
imitation of marks in England, 282. .
\ an American citizen when regarded as Chinaman, 290.
‘CHINESE LINIMENT” case (Coffeen v. Brunton), 460, 462, 538.
*¢ CHIROPLAST,” inventor of, had a good trade-mark in name, 501.
CHRISTIAN NAME, law recognizes but one, 196.
CIPHER, as a distinctive sign or mark, 87, 262.
CITIZENSHIP,
not necessary to entitle to registration, 291, 301.
yet must be divulged in application, 287, 578, 594 (note 44).
of State may possibly not be of United States, 594 (note 44).
CLAIM must be clearly defined, 586-588, 590, 592-593.
confined to one class of merchandise. (See Cuass.)
CLAIMANT does not register mark, but a copy thereof, 382.
«CLASS OF MERCHANDISE,”
restricted meaning of phrase, 67, 450.
protection given only in connection with, 66-70, 310-312, 450, 590,
592.
particular description of goods must be alleged, 310.
CLASSIFICATION OF RIGHTS analogous to those of trade-marks,
621.
“CLEAN HANDS,”
complainant in equity must come with, 474 et seq., 488.
false indication of origin of goods is fraud, 480, 483, 485, 487, 489-
490, 493.
misuse of another’s name with his consent is fraud, 474, 478.
deception, although harmless, may indicate fraud, 484, 485.
false name of editor manifests a lack of clean hands, 474.
the vendor of a nostrum has not clean hands, 475-476, 479, 491.
laches is equivalent to a lack of clean hands, 497.
a mere exaggerated statement not fraudulent, 492.
nor is harmless fictitious name of manufacturer, 494.
nor immaterial statement, not calculated to deceive, 480.
CLICQUOT, ta vewve, champagne-wine piracy case, 455.
.
INDEX. 647
‘*COCOAINE ” case, 237, 450, 612.
CODE NAPOLEON, flexibility of, 91.
COINER of new word may use same as trade-mark, 219.
COINS, 76.
COLOR,
as an essential element of a trade-mark, 268-268, 585, 603.
one may neutralize another, 264, 585.
must be definite and certain, if essential, 266, 285.
an important circumstance in infringement case, 267, 413.
as means of deceiving the public, 268.
independent of form cannot be a trade-mark, 170, 271.
as national proprietary signs, 74.
COLORABLE infringements, 385 et seq.
COLTON DENTAL ASSOCIATION, sign case, 540.
COMBINATION, improper application of patent theory, 346, 347.
COMITY OF NATIONS, 21, 22, 301.
demands the protection of all commercial rights, 21, 22.
courtesy due to all friendly strangers, 21.
disregarded at times by France, 23.
protection of mark dependent upon, 305.
COMMERCE and manufacture, twin-sisters, 78.
trade-marks of equal antiquity, 2.
required its hieroglyphics, 12.
COMMERCIAL SIGNATURE, a trade-mark is one’s, 130.
mark should be valid all over the world, 260, 689.
character, imparted by residence in foreign country, 291, 295.
COMMISSIONER OF PATENTS,
to make regulation for registration of marks, 319, 359.
not to receive or record marks not lawful, 334, 607, 657 (p. 498).
nor merely the name of person, firm, or corporation, 334.
nor one improperly claimed, 334.
to issue certificate of registration, 355.
prescribe rules, regulations, and forms for transfer, 359.
strictly follow statutes in ministerial acts, 328, 329.
acts of, not warranted by the government, 355.
has not power to cancel certificates, 624, 659 (p. 509).
may place two parties on same footing, 624.
decision of, in interference cases, final, 650.
to officially notify parties, 656.
appeal to, in person, from Examiner. (See APPEAL.)
COMMON-LAW REMEDIES FOR INFRINGEMENT, (See Action.)
not affected by Act of July 8, 1870, 369.
“COMPAGNIE DES PROPRIETAIRES DE VIGNOBLES” case,
599.
COMPLAINANT, in equity court,
must be free from wrong. (See CLean. Hanps.)
residence, &c., of, in Federal courts. (See ‘‘ Pleadings,” in Appen-
dix).
648 INDEX.
CQMPULSORY testimony, 639.
CONCEPTION or invention of mark is not adoption. (See InvENnTION.)
CONCESSION of priority of adoption, how made, 634.
assignee must join in, 634.
CONDITION PRECEDENT to registration, 282 et seg. (See PRracricx.)
protection. (See Crean Hanps; Pro-
: TECTION.)
CONFEDERATE STATES’ notes counterfeited, 76.
CONFIDENCE indispensable to social compact, 580.
is the object of applicant’s oath, 580.
“ CONFORMATEUR DU TAILLEUR,” sign infringement, 535.
CONGRESS,
provision to protect American watch-makers, 74.
Act of, in relation to registration of trade-marks, 278-384.
does not pretend to create trade-marks, 382.
‘““CONGRESS WATER” trade-mark case, 147, 598.
CONSTITUTION, power conferred on Congress by, 109.
CONTEMPT of witness before Patent Office, how punished, 639.
CONTRA NON VALENTEM agere non currit prescriptio, 686.
CONVENTION, meaning of term as used, explained, 301, 302.
“CONVEYANCE COMPANY ” case (name of coach), 413.
CONVICTION of perjury debars from taking oath, 321.
COPIES,
ten fac-similes of mark to be filed, 314.
of testimony, printed preferred, 641.
COPYRIGHT cannot protect a trade-mark, 109, 110.
not analogous to trade-mark, 112.
protects. book as work of intellect, not as mere merchandise, 117.
difference from a trade-mark or a patent, 109, 129. ,
CORPORATION, protected in use of lawful mark, 2&2, 330.
entitled to trade-mark only as a trader, 55, 297-300, 305.
‘‘any,” limited meaning of word, 55, 297-300.
meaning of term ‘‘ corporation” sometimes misunderstood, 304.
oath to be made by an officer of, 320.
who is such officer, 326.
metre name of, not a trade-mark, 334, 348, 353-354.
COSTS in infringement cases, 469, 471-472.
COUNSEL, selection of, before Patent Office, 566-567.
COUNTERFEITING,
consists, generally, in actual affixing of false mark, 334, 339.
may consist in applying mark to mere box or envelope, 440.
may sometimes be complete without actual use, 456.
workman not allowed to plead his own good faith, 456.
he is guilty who causes act to be done, 441.
COURT of competent jurisdiction, what? 368.
“CRAYONS POLYGRADES” case (Faber v. Faber), 421.
CREDITOR’S DEED, trade-mark may pass to trustees under, 362.
“OREME D' ARGENT,” as applied to a chemical product, 236.
INDEX. 649
CRIMINAL PROSECUTION for simulating mark, 452-455.
‘‘CROCKETT™” case (Leather Co.’s, H. of Lords), 434.
‘““CROWN SEIXO WINE” case, 405-406.
‘““CUNDURANGO OINTMENT, C. O.,” rejected, as merely descriptive,
276.
CUTLERS’ CO. of Sheffield, Eng., registration of marks by, 18, App. p.
565. :
D.
DAMAGES, (for measure of, generally, see Chap. XI.)
statutory provision for, in case of infringement, 334.
fraudulent registration, 367.
depends upon substantial loss to plaintiff, 499.
actual affixing of mark to goods, 334, 500.
sometimes given without proof of specific injury, 501.
no fixed and certain rule for measuring, 502.
compensatory, should be given, 503, 507.
special are not presumed, 504, 509.
must be proved, not based upon mere conjecture, 505.
intent is a prominent element in fixing, 508.
amount of, not dependent on defendant’s profits, 507.
plaintiffs negligence may defeat claim to, 510.
difficulty in fixing amount in trade-mark case, 512-515.
patent and copyright cases no standard, 513-516.
exemplary, when allowed, 519-520.
DAMNUM absque injuria, 430, 431, 499, 500.
DANGER in superficially reading Trade-mark Law of 1870, 278.
“DAY & MARTIN’S BLACKING” case, 423.
“DEAD RED.BALL” as a mark for a base-ball, 585.
DEBITUM et contractus sunt nullius loci, 22.
DECEIT, protection of public from, 36, 39.
DECEIVE, “ calculated to,” mark must not be, 320.
Patent Office will judge for itself on this point, 327.
DECEPTION of public, 36, 39, 127, 374, 3938, 395, 487-491.
design of, defeats claim to remedy, 370, 374, 487-491.
equity cognizance does not depend upon this point, 37, 38, 393.
no defence that spurious article is equal to genuine, 496, 505.
DECLARATION, (See Forms of, App. p. 586.)
under oath, of exclusive right to use of mark, 320.
to be made by person, or officer of corporation, 320.
can only be made by one who is a competent witness, 321.
must state every thing that is of the essence, 591.
of interference, in what cases, 622, 633, 638.
DEFENCE, (See Chap. X.)
that complainant has been guilty of deceit. (See CLean Hanns.)
bad faith in lying by, 497.
negligence, 510.
to bill for injunction in the ‘‘ Durham Tobacco” case, 660 (p. 511).
(See Form of Answer, in Appendix, p. 597.)
650 INDEX.
DEFENCE (continued). :
no defence that spurious goods are equal to genuine, 496, 505.
plaintiff’s advertisements are exaggerated, 492.
manufacturer’s name is fictitious, 494-495.
complainant delayed, when delay necessary, 498.
DEFINITION and nature of a trade-mark, 80-143.
of the term ‘‘ trade-mark” necessary for certainty, 80.
‘* interference,” 621.
“¢ laisser tomber dans le domaine public,” 681.
DE MINIMTS non curat lex, 499.
“DEMOCRATIC REPUBLICAN NEW ERA” case, 550.
DEMURRER to applicant’s case, 573.
form of. (See Appendix, p. 590.)
DENMARK, trade-mark law of, 565.
DEPOSIT of mark, not necessary to acquire and conserve title, 48-49.
DESCRIPTION of mark must be filed with application, 313.
color in application, 585.
DESIGN, is not the question, but adoption is. (See INVENTION.)
patent for, explained, 111, p. 529.
of the oath of an applicant, 580. :
DESIGNATION of quality cannot be a valid mark, 162-165, 276-277.
trade or occupation, 161.
necessary name of a thing, 166-177, 345.
DEVICE for trade-mark is a matter of fancy, 87, 102.
DICTA not authorities, 84, 99, 391.
DILIGENCE, ‘race of,” not inquired into, in registration, 352. ,
DIRECTOR of corporation not an officer thereof, 320.
DISAGREEMENT of judicial minds, 149.
DISCOVERY,
usually an equitable remedy, 470.
under Judiciary Act of 1789, in actions at law, 470.
in aid of forfeiture, not favored in equity, 470.
DISGUISE not generally assumed for honest object, 44.
DISSOLUTION OF PARTNERSHIP,
in absence of stipulation, each can use old firm-name, 530.
* DOLLY VARDEN” as a trade-mark, 218.
DOMICILE,
person or firm having, in United States, may register mark, 282.
term commented upon and explained, 287-296.
an essential allegation in certain applications, 287, 591.
every person has domicile somewhere, 289.
forensic, 290, 296.
national and commercial may not be identical, 295.
favorable interpretation of term, by Patent Office, 296.
necessary to enable one to sue in France, 302.
and residence not convertible term, 309.
DRAWING and filing of application, 596.
DURATION of trade-mark life unlimited, 109, 1438.
INDEX. ; 651
‘‘DURHAM” may, or may not be, a geographical name, 192, 657.
interference case, three opinions, 653-660.
opinion of Examiner, 657.
Commissioner, 659.
Judge Rives, 660.
E.
“EAU DE LA FLORIDE,”
infringed by ‘‘ Haw de la Fluoride,” 397, 450, 612.
EGYPTIANS, ancient, sign-boards of, emblem, &e., 6.
ELECTION of xemedies, 506.
‘* ENGLISH’S BROOMS” case considered and criticised, 162-168, 597.
ENGLISH COURTS, open to alien and subject alike, 178.
‘““ENGLISH EMBASSY CHEMIST,” shop-sign case, 529.
royal arms, as water-marks upon paper, 6.
EMBLEMS OF OWNERSHIP, (See TrapE-MARKs.)
coeval with birth of traffic, 2.
had origin in general ignorance of reading language, 3,’
as signs of ancient Egyptians, Greeks, Romans, 6.
used in all ages, among all races of men, 11.
of old-time booksellers and printers, 14, 15, 116.
pipe-makers in England, 17.
goldsmiths in England, 19.
variety of, 87.
nondescript vignettes, groups of flowers and fruits, not legal, 89.
comprehensiveness of British Act of 1862, 102, App. p. 565.
one’s autograph is his emblem, 204.
EQUALITY in value of spurious with genuine goods, no defence, 496, 505.
EQUITY, (See Crean Hanps; Prorecrion ; Forms, App.)
acts only when legal title is clear, 31, 451, 462, 464-465.
jurisdiction attaches only because of injury to owner of mark, 37.
when case clear, duty of equity court to act promptly, 467.
verdict at law not conclusive in equity, 464.
restrains even an innocent misuse of mark, 468, 471-472.
may compel discovery, 470.
“ ERVALENTA-WARTON ” infringed by ‘‘ Revalenta Arabica,” 439.
ESSENCE OF MARK, ascertainment of, 429.
cannot consist of mere name of user, 195, 202.
designation of quality, 164.
necessary name, 166 ef seq.
ESSENTIAL CHARACTERISTICS of a trade-mark, 143.
ESTIMATING DAMAGES. (See Chap. XI.)
ESTOPPEL by reason of previous declarations, 627, 631.
« ETHIOPIAN ” trade-mark case, 612.
ETRUSCANS eminently skilled in arts of use and beauty, 11.
EVIDENCE, (See Testimony.)
of false use of unessential elements may be important, 132.
652 : INDEX.
EVIDENCE (continued).
fraudulent intent deduced from slight circumstances, 268.
sources of, before the Patent Office, 645.
judicial notice taken of certain facts, 646.
certificate of registration to be evidence, 355.
EXAGGERATED STATEMENTS,
in advertisements, not conclusive evidence of fraud, 492.
EXAMINATION,
of application for registration of mark. (See Chap. XIII.)
inspection of papers as to formalities, 570 et seq.
sometimes involves a course of special pleading, 571.
plea in abatement, or in bar, 572.
various grounds of objection by Office, 572.
demurrer to quasi declaration of applicant, 573.
oath of applicant not conclusive upon Office, 581.
EXAMINER OF TRADE-MARKS, judicial functions, 574.
EXAMPLES of indefinite descriptions, 583-584.
vicious application-papers, 592-594.
EXAMPLES OF TRADE-MARKS, general discussion, 175-295.
autograph good for the purpose of trade, 204.
or fac-simile of the same, also valid, 207, 211.
pseudonyms protected as trade-marks, 213-214.
fancy names of men, 216.
products, 236-248, 245, 273-275.
variation of one’s patronymic, 217.
fictitious names and sobriquets, 218.
neologisms, 219.
newly-compounded words and names, 220.
letters of the alphabet as marks, 234.
device of fancy, including name, 246-250.
necessary name of article of which one has the monopoly, 251.
picture of public building belonging to State, 258.
national arms combined with other things, 261.
heraldry, 260, 263.
monograms and ciphers, 262.
marks depending upon color, 263-268.
EXCELLENCE,
excites cupidity of fraudulent dealers, 74.
of spurious goods, no defence to infringer, 496, 505.
sometimes is sufficient protection to the ingenious, 29.
EXCLUSIVE USE of symbol the foundation of title, 143, 303.
cannot be claimed of a mere geographical name, 182, 185.
designations of trades o¥ occupations, 161.
necessary name of thing, 164-165, 189.
description, 166-167.
one’s surname, 423.
EXEMPLARY DAMAGES, 519.
EXTERNAL APPEARANCE of goods demand peculiar marks, 59.
INDEX. 653
EXTINGUISHMENT of trade-mark. (See ABANDONMENT.)
“EXTRACT OF NIGHT-BLOOMING CEREUS,” a deception, 484.
LX TURPI CONTRACTU non oritur actio, 370.
F.
_PABRIKZEICHEN, the German of ‘ trade-mark,” 85.
FAC-SIMILES,
ten to be filed except in case of drawings, 314.
must be attested by oath of applicant, 320.
of autographs are valid trade-marks, 207.
definition of term ‘‘fac-simile,” 606.
«“ FAILLANTINE,” as fancy name of thing, 601.
FAITH guides the purchaser, 1, 76, 145.
FALSEHOOD in mark cuts off right to protection. (See Crean Hanns.)
FALSE models of application-papers, 592-594.
suggestion a cause of rejection, 607-612, 666-667, 670-671.
representation by applicant, 328, 592.
use of marks, penalty for, 334.
FAMILY NAMES, considered, 196-197. ,
FANCY NAME, used as trade-mark, 236-251. (See Exampius.)
given to products of one’s industry, valid (‘‘ Pearls of Ether”) case,
236.
nice discrimination required to determine what is, 240.
must be clear of the idea of fraud, 242.
may become generic, 252.
Instances of fancy names, from men and things : —
‘* Anatolia,” liquorice, 184.
‘«« Angostura,” bitters, 194.
‘ Annihilator,” medicine, 273.
‘+ Arctic,” soda apparatus, 273.
‘* Balm of Thousand Flowers,” dentifrice, 148, 241.
‘* Bay State,” iron, 193.
‘*Cashmere Bouquet,” toilet-soap, 273.
“« Charter Oak,” stoves, 148.
‘** Cocoaine,”’ preparation of cocca-nut oil, 237.
“« Congress Water,” mineral spring, 146.
“« Créme @ Argent,” chemical product, 236.
“ Crystal,” castor-oil, 273.
‘« Damascus Blade,” scythes, 249.
‘* Deer Tongue,” tobacco, 2738.
* Diamond,” soap, 273.
“Dolly Varden,” fancy paper and envelopes, 218.
«« Everlasting,” pills, 273.
«Flor del Tropico,” cigars, 273.
“¢ Gaslight,” illuminating oil, 273.
“*Gold dust,” whiskey, 273.
‘* Harvest Victor,” scythe, 273.
654 “INDEX.
FANCY NAME (continued).
“Kentucky Pioneer,” whiskey, 193.
“King of the Field,” scythe, 273.
‘«¢ Marieland,” whiskey, 194.
“‘Melaroma,” beverage, 273.
“Mineral Sperm,” illuminating oil, 273.
‘¢ Pain Killer,” medicine, 273.
“« Poudre Brésilienne,” chemical product, 236.
“ Queen of the Meadow,” scythe, 273.
“Roger Williams,” long-cloth, 216.
“Royal Batswing,” ladies’ corsets, 273.
‘Royal Victoria,” 216.
‘¢Samson Brace,” suspenders, 273.
“‘ Sunny South,” stove, 273.
“Tip Top,” scythe, 273.
“Valley Gem,” piano-forte, 273.
‘*Water White,” refined petroleum, 273.
‘Western Dutchman,” scythe, 273.
‘« Wisconsin Wood Chopper,” axe, 193.
‘¢ Young America,” writing-ink, 218.
‘s Zero,” water-cooler, 273.
(See Exampies oF TRADE-MARKS.)
FEDERAL COURTS,
form of action in, unchanged, 337.
forms of pleadings. (See Appendix, p. 586 et seq.)
FEE payable upon application for registration, 318.
is not a pledge or deposit, but an unconditional, payment, 318.
cannot be reclaimed, unless paid by mistake, 318, 615-616.
FEES of witnesses in interference cases, 639.
FELON’S OATH cannot be received, 283, 321.
««FERRO-PHOSPHORATED ELIXIR OF CALISAYA BARK,”
as a newly-coined name, held to be a valid trade-mark, 220.
FICTITIOUS NAME of manufacturer, innocent use of, 494.
FILING of declaration in Patent Office, 320.
statement, to be noted and certified, 355.
application for registration, 576.
* amendments with Chief Clerk of Patent Office, 579.
representation or copies of mark creates no title, 682.
FIRM, may register a trade-mark, 282.
definition of the term ‘‘ firm,” 286.
mere name of, not registerable as a mark, 334, 348.
name on signs protected in equity, 521, 524, 526-527, 531, 538-539.
by whom used, on dissolution, 530.
FORCE for thirty years, protection under certificate qualified, 330-331.
FOREIGN COUNTRY,
resident of, upon what conditions allowed to register here, 282.
deemed a citizen of that country commercially, 290, 301.
before whom to take oath, 321.
INDEX. 655
FORENSIC DOMICILE, 290.
FORGERY at common law defined, 453.
or counterfeiting of labels, &c., punished by local laws, 454.
of will detected by means of water-mark, 7.
FORM,
or peculiar disposition of letters a valid personal sign, 165.
of natural object, given by chemical means, 166.
is implied in the use of the term ‘‘ mark,” 269.
of a product cannot be a trade-mark, 605, App. p. 625, note.
FORMS,
necessity for, 568. i
technical, less desirable than substance, 569.
of applications for registration, App. p. 574 et seq.
Commissioner to prescribe, for transfer of mark, 359, 363.
FOUNDATION of title to trade-mark, discussed generally, 46-51.
rests upon mere adoption and use, 46.
does not depend upon statutory law, 47, 48-51.
is in immutable law of nature, 86.
FRANCE, trade-marks optional in, as a rule, 18, 281.
has made more than thirty treaties for protecting labor, 25.
law of 1857, in regard to deposit of trade-marks, App. p. 569.
Convention of United States with, App. p. 558.
treaty of England with, cited, 178.
FRAUD, vitiates every contract into which it enters, 370.
upon the public is not ground for private suit, 30, 37-38.
evidenced by circumstances, 132, 183, 185, 201, 223, 226-228, 238,
268, 375, 885-401, 485 et seq.
is essence of action on the case for deceit, 336.
no right of action can arise out of, 370, 373, 384.
actual or constructive, 608.
a lack of sincerity is a badge of, 71.
necessity for protection against, 74.
who protected by law against, 62-65, 393.
part-imitation of another’s trade-mark, is fraud, 34, 225.
is the basis of judicial intervention, 61.
of dishonest merchants, 74.
committed in the use of one’s own true name, 200, 388-390.
the word ‘‘ patent,” 72, 357.
assigning use of one’s name, 361.
perversion of mark, 443-447.
not fraud for stranger to place genuine mark on genuine goods, 448.
to use another’s symbol for different class, 450.
FRAUDULENT representations in Patent Office, action for, 367.
intent precludes registration, 320, 327, 592, 607-612.
FRAUDULENTLY-OBTAINED TRADE-MARK, no action upon, 370,
372.
FRENCH TRADE-MARK LAW, (See Appendix, p. 569.)
courts do not admit foreigners not domiciled, 178, 281, 302.
656 INDEX.
FRENCH TRADE-MARK LAW (continued).
laws as to citizens abroad, 293.
definition of term ‘‘ trade-mark,” 87.
G.
“‘ GAUNTLETT-PIPES,” marks upon, 17.
“GAZETTE NATIONALE” or ‘* Moniteur Universal” case, 415.
GENERIC TERMS, must be avoided, 131.
cannot be trade-marks, 161, 164-165, 203, 344.
men’s names may become, 178-181, 203.
fancy names of things may become, 252.
phrase explained, as applied to trade-mark law, 251.
carelessness in use of, 310.
GENEVA, enlightened liberality to foreigners, 22, 51.
imitation of American watches in, 74.
GENIUS does not enter into idea of trade-mark. (See INVENTION.)
“GENUINE YANKEE SOAP” case, 119, 125, 597.
GENUINENESS OF MARKS, faith of purchaser depends on, 1, 145, 151-
152.
ceases with use on false goods. (See PERVERSION. )
GEOGRAPHICAL NAME, mere, not a trade-mark, 182-183, 185, 187-
191, 659.
may cease to be such, 184, 657 (p. 500).
when is a word merely such? 192-194.
GEOMETRICAL FIGURE, as a trade-mark, 269.
GERMAN definition’of term trade-mark, 85.
law as to protection of marks, App. pp. 572, 573.
GERMANY, official inquiries in, as to patent laws, 28.
convention with, in regard to trade-marks, App. p. 559.
“GEYSER SPRINGS ” not a trade-mark, 276, 598.
‘““GOLDEN CROWN CIGARS” case (Palmer v. Harris), 481, 483.
GOLDSMITHS’ Company mark, 18, 19.
hall-mark, 19.
‘“GOLSH’S FRICTION MATCH” case. (See Partridge v. Menck.)
GOOD FAITH, assurance of, necessary, 1. (See Bona Fivzs.)
symbol, as a badge of, 11.
GOODS of same class of different owners, different marks, 87. (See
Crass.)
GOOD-WILL signs distinguished from trade-marks, 83, 96-99.
of establishment protected against fraud, 104-105, 521 et seg. (See
Chap. XII.)
assignment of, may incidentally include trade-mark, 210, 359, 360.
name of firm, business, &e. (See Sian-Boanrps.)
on dissolution of firm, to whom it belongs, 530.
“GRAND HOTEL DE LA PAIX” case of unfair competition, 529.
GRAND SEIGNEUR, capital penalty for deceit in marks, 76.
INDEX. 657
GRANT,
objection to injunction in some cases, 31.
the registration of a trade-mark is not a, 357, 383.
distinguished from mere recognition of title, 383.
‘*GREAT LIGHT(E)NING INK ERASER” case, 600.
GREEKS, ancient, sign-boards of, 6.
had cattle for currency, 9.
GREEN BUSH, as vintner’s sign, 6.
GREEN SEAL for bottles, held to be a valid trade-mark, 170.
“GROCERIES,” too indefinite a word to denote class, 310.
GROUNDS OF INTERFERENCE, 638.
GUARANTY of excellence, a mark should be, 8, 27, 78, 145.
success, in the protection by law of mark, 40.
public faith, in genuineness of coin, 76.
. GUILDS,
in olden times maintained high character of goods, 74.
GUTENBERG, mark of himself and associates, 14.
H.
HAGGAT, seal of, found in exploration of Jerusalem, 7.
‘HALL MARKS” on gold and silver products, 19.
‘““HALL’S VEGETABLE SICILIAN HAIR RENEWER” case, 425.
‘‘HAMBURGER TROPFEN ” case rejected, 609.
HAMILTON, Sir William, cited as to definition, &¢., 82.
*‘ HARDWARE,” too indefinite to describe a class of goods, 310.
HAREBOTTLE, a hare and a bottle as his rebus, 6.
HAYTIAN COIN counterfeited, 76.
HEARINGS,
before Commissioner, on appeal, at one p.m., 648.
oral arguments generally limited to one hour each, 648.
printed briefs of arguments preferred, 649.
how much of case to be shown in brief, &., 650.
final, are before the Patent Office, 650.
notice of. (See Appendix, p. 582.)
HENNESSY, James, name used fifty-five years in commerce, rejected, 137.
HERALDRY, a science with system, classification, language, 5.
trade-marks frequently borrowed from medieval, 260.
caution to be observed in copying devices, 260.
colors of English, — blue, red, black, green, purple, 263.
HERCULANEUM, emblematic signs in, 6.
HEREDITARY DIGNITIES, seal importing, 5.
“HEROINE” trade-mark infringement case, 612.
HINDOOS, 1200 or 1300 years B.c., had merchandise-marks, 11.
HISTORY of proprietary marks. (See Chap. I.)
the Crusades, book-title case, 553.
word ‘‘ chattel,” 3.
42
658 INDEX.
HOLLAND, patents abolished in, 28.
protection of trade-marks in, p. 572.
‘“HOLLOWAY'S OINTMENT ” case, similarity of names, 430.
HOMER mentions brass money as existing twelve centuries B.Cc., 9.
HONESTY, marks vouch for honesty of traders, 3, 27, 78, 145.
disguise does not generally indicate, 44.
a lack of, debars from protection. (See Crean Hanps; Prorec-
TION.)
an essential characteristic of a trade-mark, 143.
HOTEL, name of, not a trade-mark, 83, 90, 96-97.
protected in equity court, 528-529.
“ HOTEL DE LA PAIX” case, unfair competition by signs, 529.
‘“HOWE’S BAKERY,” good-will case, sign of business, 98.
“ HOWQUA’S MIXTURE” case, 480.
“HUDSON G. WOLFE’S BELL SCHNAPPS” case, 596.
I.
IDEA, not a subject for registration, 606.
IDEM SONANS, 527, 600.
IGNORANT MISUSE of word “ patent,” not penal, 357.
IGNORANTIA LEGIS neminem excusat, 661.
ILLOGICAL USE of term ‘ trade-mark patent,” 357.
IMITATION in part, may be a colorable infringement, 33, 58.
harms as much as entire counterfeit, 34.
without use, is not infringement, 42, 60, 61, 839.
IMPOSITION upon public not ground for private action, 30, 37, 393.
incidentally considered by court, 36;
cause for refusing registration. (See Bona
Fipgs.)
INCORPORATED COMPANY may register trade-mark, 305.
INCREASED IMPORTANCE of trade-marks, 28.
INDEFINITENESS of allegation may defeat application, 583 et seq.
INDIAN, may he register a trade-mark? 294.
INDICATION of origin, or ownership, discussed, 144 et seq.
is the office of trade-mark, 144.
mere trade or occupation not a trade-mark, 161.
quality, kind, or nature, not exclusive property,
148, 154, 157, 160, 163-166, 177-181, 276-277.
place may possibly be valid mark, 184, 193-194.
INDICTMENT for simulating marks. (See Chap. IX.)
INDIVIDUALITY an essential characteristic of trade-mark, 143, 342.
INFORMALITY may vitiate act of Office, 328-329, 591.
INFRINGEMENT, generally considered, 385-450.
wherein it consists, 32, 385.
frequently difficult to determine, 33, 386.
criterion of, the probability of deceiving purchasers, 33.
mere imitation of abstract symbol is not, 42.
INDEX. 659
INFRINGEMENT (continued).
part-imitation may be, 228, 237-239, 268, 385.
colorable imitation is, 387.
actual physical resemblance not the only question, 385.
Instances of : —
by means of similarity of surname, 388-390, 395, 430-432, 435-436.
to fancy name, 434.
using ‘‘ Bovina” for ‘‘ Bovilene,” 397.
‘* Cocoine” for ** Cocoaine,” 397.
“Eau de la Fluoride” for ‘‘ Eau de la Floride,”
397.
“‘Job,” a real name coinciding with fancy name,
398.
“‘ La Presse libre” for ‘‘ La Presse,” 416.
“‘ Moniteur officiel” for ‘* Moniteur universel,”
415.
“* Petit Journal de la France” for “ Petit Jour-
nal,” 417.
‘* Petit Journal de la Somme” for ‘ Petit Jour-
nal,” 417.
“* Petit Journal du Nord” for ‘* Petit Journal,”
417.
** Revalenta arabica” for ‘* Hrvalenta-Warton,”
439.
crown and anchor for anchor, 411.
picture of bill of exchange, substantially copied,
414.
fac-simile of signature, 427.
marking box or envelope, but not the goods, 440.
filling bags bearing genuine mark with inferior goods,
443-444,
shifting genuine mark to false or inferior goods, 444-
446.
figures “303” a part of genuine mark, 401.
labels, 93, 120-128, 201. (See LaBzts.)
sign of place of business, 92, 95-99.
name of newspaper, 104-115.
mark on books in the olden time, 14.
name.of natural product, 146-147.
green-seal on mineral-water bottle, 170.
INFRINGER, who is, 58.
may be the pirate himself, or innocent vendor, 58, 468.
agent, 472.
INITIAL LETTERS of name may by accident become valid mark, 212,
398.
not sufficient for legal signature, 308.
INJUNCTION, (See Remeprzs.)
an objection to granting, 31.
660 INDEX.
INJUNCTION (continued).
against use of another’s name, 527, 531, 539-541, 554, 556. *
an old firm title, 524, 526-527.
title of book, 547, 553.
publication, 548-550, 557.
place of amusement, 528.
hotel. (See SiGN-BosRDs.)
INJURIA SINE DAMNO, 499.
‘“ INJURIOUS in itself,” meaning of phrase in statute, 370-371.
restraint upon trade-protection of mark is not, 36.
INNOCENT VENDOR may be an infringer, 58.
not compelled to account, or pay costs, 471-472.
INN SIGN, not a technical trade-mark, 83, 90, 96-97.
IN PARI DELICTO, potior est conditio defendentis, 370.
INTENT, express or implied, an element in fixing damages, 508, 520.
must be proven to convict of misuse of word ‘‘ patent,” 357.
INTENTION to adopt is not adoption without use, 311-312, 382-384.
one having an, may register proposed mark, 282,
310.
permanently reside creates domicile, 289.
return to one’s original country defeats domicile here, 309.
INTEREST OF COMMERCE, the trade-mark law is in the, 296.
INTERFERENCE, subject generally considered. (See Chap. XIV.)
when may be declared, 352, 622, 655-656.
demands skilful management, 617-619.
practice in, modelled on equity practice, 618.
defined to be an interlocutory proceeding, 621.
preliminary, first declared, 625.
object of, 626.
effect of, 627.
oath in, by whom to be made, 628.
statement not open to inspection until filing completed,
629.
evidence for party filing it, 631.
adjudication of case on preliminary statement, 630.
declaration and dissolution of interference, 633.
judgment based upon written concession of priority, 634.
notice to parties of declaration of, 635, 637, 656, App. p. 582.
in what order of time testimony taken, 636..
grounds of interference, 638.
access to testimony, 640.
printed copy of testimony, when required, 641.
postponement of taking testimony, or of hearing, 642.
motion for a rehearing, 643.
information of opponent’s case, 644.
sources of evidence, 645-646..
closing of case, 647.
hearing, 648.
INDEX. 661
INTERFERENCE (continued).
appeal from Trade-mark Examiner, 649, 658-659.
examples of actual trials and opinions, 653 et seq.
INSTANT PERFECTION of title to trade-mark, 52, 54.
INSTRUMENT in writing, as evidence of assignment, 363.
INVARIABILITY is an essential attribute of a trade-mark, 143, 342.
INVENTION has nothing to do with trade-mark law, 346-347, pp. 527
(note), 528-529, 539.
INVENTOR alone has right to apply word ‘ original” to product, 546.
IRREGULARITY in making oath, &c., fatal to protection, 316, 325, 340.
“IRVING HOUSE” case. (See Howard v. Henriques.)
“I XL,” instance of same symbol for different owners, 68-70, 450.
J.
JACOB’S CATTLE distinguished by their marks, 3.
JAPANESE MARKS pirated in England, 74.
“JERUSALEM DELIVERED,” fraud upon public, 553.
“« JOB,” originally formed of initials J. B., and lozenge, 398.
JODOCUS BADIUS, caution against pirate of book-mark, 14.
“JOHNSON’S AMERICAN ANODYNE LINIMENT ” rejected, 135, 345.
JOINDER OF ISSUE in Patent Office, 575.
JOINT OWNERS of marks, application by, 604.
JOURNALS, or newspapers, 104-115, 550, 558. (See InrrINGEMENT.)
J. STYLES not a legal name, being too indefinite, 308.
JUDGMENT BY DEFAULT,
when defendant in action fails to make discovery, 470.
in interference case, 630.
based upon concession of priority, 634.
of Commissioner in interference is final, 650.
JUDICIAL OFFICERS,
sometimes confound technical terms, 90, 92-93, 98, 108, 222.
disagreements of, in conclusions, 65, 149, 244.
before whom oath may be made, 321.
JUNIOR applicant in Office, not chargeable with laches, 352.
adoptor of mark must fail, 623-624.
JURAT, valid although not dated, 323.
JURISDICTION,
of chancery attaches because of injury to owner of mark, 37, 39, 65.
the subject-matter must give to Patent Office, 298.
gives to the Federal courts, 353, App, p. 587.
JURISPRUDENCE has resolved innumerable questions by light of natural
justice, 26.
JURY, inquiry by, in equity suit, in discretion of court, 466.
to fix damages for infringement, 502.
JUS ET FRAUS nunquam cohabitant, 685.
JUSTICE not dependent upon niceness of terminology, 101.
“ JUSTINUS ET FLORUS,” of Bernard Hector,
caution in, against piracy of trade-mark for book, 14.
662 INDEX.
K.
‘“¢K ” within two concentric circles, decision examined, 149.
‘*KATHAIRON ” case (Heath v. Wright), 491.
KNIGHT IN ARMOR known by device on shield, 254.
KNIGHTS TEMPLARS’ renowned banner ‘‘ Beauseant,” 263.
KLOSTERMANN on Trade-marks, definition in, 85 (note).
L.
LABELS,
are not technical trade-marks, but mere vehicles for them, 155, 271-
272.
are usually protected only by local laws, 83, 148.
mere analogues of trade-mark, 81, 521.
and wrappers, connecting-link between good-will and trade-mark
property, 537.
made instruments of fraud, 538, 541-544.
instances of infringement of mere labels, 396, 418-419, 430-432,
477-480.
“LACKAWANNA COAL” case (Delaware and Hudson Canal Co. v.
Clark), 190, 598, 657.
LACHES,
junior applicant not amenable to charge of, 352.
what not deemed as when one is seeking evidence, 498.
bad faith in plaintiff to lie by a long time, 497.
as applied to question of abandonment, 684.
“DLA CIVETTE” sign-infringement case, 536.
LACK OF TRUTH, debars from protection 71. (See Crzan Hanns.)
“LA CRONICA” newspaper case, 550.
“LA FLOR DEL TROPICO,” a valid trade-mark for cigars, 273.
«¢ LAMARTINE,” valid as fanciful denomination, 216.
LANGUAGE of trade-marks easily read, 3.
heraldry speaks forth in many trade-marks, 5.
“LA PRESSE” infringed by ‘‘ La Presse libre,” 416.
LATIN merchants, distinctive signs of trade, 6.
language, in Middle Ages, effect of on men’s names, 197, 213.
“LA VALENTINE CEMENT” not a valid mark, 190.
LAW OF NATIONAL DOMICILE, effect of, 293.
LAW OF TRADE-MARKS,
is in the interest of commerce, 296.
founded in natural right, 297.
commerce affords redress for infringement, 47.
protects a man in selling his own goods, 183,
“LAWFUL TRADE-MARK,” as used in Act of July 8, 1870, 341, 352,
372, 381.
not to be refused registration, 195, 282, 334, 352.
INDEX. 663
LAWS OF VARIOUS COUNTRIES, (See Appendix.)
necessity for examining, 80.
LEGAL DEPOSIT of marks simply declarative, not attributive, 50.
LEGAL INTERPRETATION and principles of construction, 278.
LEGAL TITLE, must be clear before equity will intervene, 31, 155.
LEGALITY OF ACTS of public officers may be questioned, 829.
LEGISLATION, on subject of trade-marks,
has been vague, uncertain, incomplete, 26.
of various countries. (See Appendix.)
States of this Union referred to, 451, 454.
“LES OISEAUX DE PROIE,” a publication case, 522.
LETTERS,
initial, as marks for painters, designers, sculptors, &c., 15.
fabrics of gold and silver in England, 19.
sometimes designations of products, 87.
LEX NON COGIT ad impossibilia, 363.
LEX SEMPER dabit remedium, 337.
LIBELS cannot be valid marks, 602.
LIMITATION OF PROTECTION, under Act of July 8, 1870,
generally is fixed at thirty years, 331.
when goods manufactured abroad, may expire at any time, 331.
‘“LIST OF HOUNDS” not exclusive property, 559.
LITIGATION not unduly encouraged by Patent Office, 613.
LIVY OF ALDUS, of 1518, piracy of trade-mark, 14.
LOCAL laws alone protect works of art, 60, 81.
peculiarities and customs in making oath, 321.
“LONDON CONVEYANCE COMPANY,” name on coach, 560.
“LONDON DISPENSARY ” case shop-sign, 529.
«LONE JACK,” a valid trade-mark of fancy, 218.
LUTHER represented by symbol of a swan, 6.
LYDIANS, inventors of gold and silver coin, 9.
M.
‘“*MACASSAR OIL” case, in France, 23.
‘* MAGNOLIA ” a valid trade-mark for alcoholic liquors, 67.
MALA GRAMMATICA non vitiat chartam, 286.
MANUFACTURER,
has right generally to place his name on his products, 420.
may use his name as instrument of fraud, 425, 430-432, 434-436,
438.
of quack medicines not entitled to invoke aid of equity, 475. ,
unlawfully engaged, or deceiving public, &c., refused protection,
370-375.
MANUFACTURING AND TRADING CORPORATIONS,
the only kind of corporations that can have trade-marks, 277-300.
‘*MARIELAND” held not to be merely geographical, 193.
664 INDEX.
MARKS, generally. (See TrapE-maRk.)
sometimes distinguished from trade-marks, Eng. Act of 1862, p. 565.
upon animate property, 3, 16.
registration of swan-marks in England, 16.
seals, the most sacred proprietary marks, 4.
of sovereign upon coin, a guaranty of genuineness, 76.
trade, &c., property under law of nations, 22, 48-50.
assuming increased importance, 28.
may resemble each other and essentially differ, 33.
of workmen in quarries of Solomon’s temple, 8.
MARQUE DE FABRIQUE ET DE COMMERCE of France, Belgium,
&e., means same as ‘‘ trade-mark” in English, 85.
MARRIED WOMEN as traders, marks protected, 285.
incapacity of, at common law, 285.
MASONIC SYMBOLS,
not calculated by their nature to serve as trade-marks, 342-344.
impossible to divest them of ordinary signification, 344.
liable to misinterpretation, and to deceive public, 344.
MASSACHUSETTS STATUTES referred to, 299, 427.
MEANING OF PHRASES AND TERMS,
‘¢any person” or firm, &e., in Act of July 8, 1870, 283.
‘‘any ” corporation, has a restricted and limited sense, 297-300.
‘* exclusive use within the United States,” in Act of 1870, 305.
‘in force for thirty years” (trade-mark to be), 331, 333.
“ Jawful trade-mark,” 341-347.
‘‘merely the name of a person, firm, or corporation,” 348-350.
“mark rightfully used at the time of the passage of this Act,” 352.
“ origin or ownership,” indication of, 144-160.
MEASURE OF DAMAGES FOR INFRINGEMENT, (See Chap. XI.)
nominal damages, at least, always given, 501, 504.
defendant’s profits is a usual guide, 502.
compensatory damages is the rule, 502-503.
special damages must be set forth in declaration, 504, 509.
proven, not presumed, 505.
difficulty of fixing a rule for trade-marks, 509, 512-517.
patent and copyright cases no criterion, 513-516.
exemplary damages, when allowed, 519-520.
“MEDICATED MEXICAN BALM” case (Perry v. Truefitt), 248, 479.
‘““MEEN FUN” case (Hobbs v. Francais), 485.
MELANCHTHON, change of surname into Greek, 213.
«“ MELAROMA,” a valid trade-mark for a beverage, 273.
MEMBER OF FIRM to make sworn declaration of right, 320.
MEN’S AND WOMEN’S NAMES, as denominations of fancy : —
" Albert, 185; Alexina, 348; Bismarck, 216; Daniel, 348; Dolly Var-
den, 218; Falstaff, 218; Gulliver, 218; Job, 398; Lamartine,
216; Minnie, 557; Our Fritz, 218; Paul Jones, 218; Phil Sher-
idan, 218; Rip Van Winkle, 218; Roger Williams, 216; and,
Uncle Bob Lee, 218.
INDEX. 665
MERCHANDISE,
definition of term, as used in Act of July 8, 1870, 139-142, 298,
811.
books protected by trade-mark, merely as merchandise, 116-117.
symbol not a trade-mark, unless affixed to merchandise, 143, 310-
311.
class must be specified, 310.
MERCHANDISE MARKS ACT (British) of 1862, 26, 102, 301, 453, p.
565.
comprehensive enumeration of kinds of marks, 102, p. 565.
deemed equivalent to treaty or convention, 301.
MERCHANTS, aliens, protection under Magna Charta, 301.
MICHAEL ANGELO signed paintings by monogram, 262.
“MINERAL SPERM” as fancy name for illuminating-oil, 273.
“MINNIE, DEAR MINNIE” case, name of song, 557.
MISREPRESENTATIONS, (See Crean Hanps; Prorecrion.)
in a trade-mark, destroy its legal efficacy, 72, 327, 370, 372, 374.
in procuring registry of mark, actionable, 357.
not amounting to fraud, does not vitiate, 72-73, 494-495.
defeats application for registration, 259, 327, 351, 370, 372, 375.
in misuse of word ‘‘ patent” or equivalent term, 357.
statutory penalty for such misuse, 357.
in permitting one’s name to be misused, 361.
literally true, false in intent, 71.
MODE of affixing mark to be stated in application, 313, 315.
MODELS of vicious application-papers, 592-594.
‘“* MOLINE PLOW ” case, qualifying marks, 597.
MONEY paid as fee, when returnable, 615-616.
“‘ MONITEUR” of Paris, newspaper infringement, 415.
MONKS OF BORDEAUX marked wine as mineral-water, 77.
MONKS OF LA GRANDE CHARTREUSE,
suits for infringements of their trade-marks, 407-410.
MONOGRAMS, used as marks for many centuries, 262.
Dictionnaire des Monogrammes, Marques, &e., 15.
‘* MONTICELLO ” not merely a geographical name, 193.
MORALITY must be inviolate in mark, 64, 370-373, 602.
‘““MORISON’S UNIVERSAL MEDICINE” case, 429, 562.
“MORSE’S INDIAN ROOT PILLS,” 563.
MOTION,
to postpone taking testimony or hearing, 642.
open interference for rehearing, bad faith, 619, 643.
bring in a new party, interference, 603.
fix time for hearing, 647.
where motion heard in first instance, 646.
on appeal, 646.
“MOUNT CARMEL” held not to be merely geographical , 184, 657.
“MRS. MARPLE’S SALVE” case, 246.
“MUSICAL NOTE PAPER” not a trade-mark, 134.
666 INDEX.
N.
‘«NADAR,” a pseudonym protected, 213.
NAME, what is a? 196.
of person, firm, &c., not a trade-mark, 195, 202.
fancy, of famous living or dead person, 216, 348, 426.
a country may be a valid trade-mark, 184, 193-194.
product solely made or sold by inventor of name, 220,
251.
newspaper, a valid trade-mark, 115, 415-417, 558.
books, 116-117, 547-549, 553.
a song, ‘‘ Minnie,” 557.
to be a valid mark must not be generic. (See Chap. III.)
of a man may lose idea of personality, 178-181.
cannot be assigned as a mark for another, 361.
sometimes illegal for himself, in trade, 200, 209, 434, 436,
438.
included among English local marks, 102, p. 565.
frequently changed in Middle Ages, 213.
of applicants to be written in full, 308.
may generally be attached to goods, bond fide, 390.
fraud may be inferred from usurping another’s, 396.
one’s name sometimes usurped without redress, 393, 555-556.
of old commercial house protected, 524, 526-527, 531.
a trader or firm protected, 521, 539-541.
firm, on dissolution of partnership, 530. ‘
coach, 560-561.
NATIONAL,
bonds and bills, colored threads in paper, 74.
arms, not susceptible of private use as marks, 261.
flags blended with other objects to catch eye, 265.
comity regarded by the courts, 301.
conflicts dissolve partnership, 370.
“NATIONAL POLICE GAZETTE” case (Matsell v. Flanagan), 550.
NATIONALITY, commercial, may differ from political, 290-291.
NATURAL LAW, foundation of trade-mark rights, 46-51.
NEGLIGENCE. (See Lacuszs.)
NEOLOGISM, coiner of, may have title thereto, 219-221.
“NEW ERA” omnium gatherum case, 590.
“NIGHT BLOOMING CEREUS” not a valid mark, 166, 484.
NIHIL quod est contra rationem est licitum, 297.
NINEVEH, ancient, bricks with marks, 8.
“NOMS DE PLUME,” 213-214.
NONDESCRIPT,
picture, vignette, &c., not valid marks, 89.
NON-RESIDENT CITIZEN regarded as a foreigner, 290-291.
NOSCITUR A SOCIIS, 182.
INDEX. 667
NOTARY PUBLIC, may administer oath to applicant, 321.
must in all cases affix official seal, 321.
certificate of, to affidavit, how made, 324.
NOTICE, of motion to take testimony, how served, 646.
proven, 646.
for further time, 646.
to Office of inability to procure testimony, 646.
by Office of interference, 656, p. 582.
not taken of mere formal objection, 646.
NUMBERING of folios of depositions, 646.
NUMERALS, merely, not legal trade-marks, 225-233, 442.
oO.
OATH required of applicant for registration, 320.
design of, is confidence, 580.
perverted by applicant or solicitor, 580.
OCCUPATION, name of, is not a valid mark, 161.
OFFENCES,
against morality or good faith defeat remedy, 370.
public policy in any wise, 370.
in fraudulently procuring registration, 367.
affixing ‘‘ patent” or equivalent term, 357.
OFFICER OF CORPORATION to make oath, 320.
mere director is not such officer, 326. :
“OINTMENT OF IMMORTALITY,” hypothetical, 242, 374,
“OLD LONDON DOCK GIN” nota valid mark, 597.
‘*OLD MOORE’S FAMILY PICTORIAL ALMANACK” case, 287, 549.
ONE’S OWN NAME, what is it? 196.
the law knows but one Christian name, 196.
surname changed at pleasure, 196.
dispensed with, legally, 196.
translated into another tongue, 196.
used by himself as means of fraud, 200-201, 209, 361.
may generally be lawfully used in trade, 201-202.
sometimes be misused, without remedy, 393.
not protected, unless pecuniary loss ensued, 393.
not an essential part of trade-mark, 206.
prohibited from registration as a trade-mark, 334, 348.
autograph is his emblem of himself, 204.
not merely bis name, 204.
pseudonym valid as mark of commerce, 213.
“ORIGIN OR OWNERSHIP,” indication of, discussed, 144-160.
essential characteristic of trade-mark, 143-144, 148.
name originally geographical may suffice, 184, 192-194.
‘“‘ORIGINAL,” or equivalent term, may be enjoined, 546.
proprietor takes precedence independent of registration, 49, 356.
“© OU, the Old Man who lives in solitude,” old Chinese mark, 215.
668 INDEX.
P.
“PAIN KILLER” (Perry Davis’) case, 273, 563.
“ PAPIER CREME DE LA RIZ” held to be valid mark, 224.
‘““PARCHMENT DEED” held to be merely descriptive, 276.
PARIS, old booksellers of, had trade-marks, 14.
“PARSON’S PURGATIVE PILLS, P. P. P.” not a trade-mark, 345.
PARTNERSHIP,
name or title of, protected, 521, 526.
with survivor, 526.
upon dissolution, 530.
«* PATENT,” or “patented,” untrue use of term, 72.
may sometimes be used when patent expired, 72-73.
penalty of misuse of, 357.
PATENT CASES do not furnish rule for trade-mark cases, 513, 515, 676,
679. :
PATENT OFFICE OF THE UNITED STATES,
place of deposit of foreign marks, pp. 557-560.
registration, under Act of 1870, 308.
officers and employés of, may register marks, 358.
will judge for itself in all cases, 327, 341, 351-352, 875, 607-612, 624.
does not possess powers of cancellation, 352, 624.
errors of, corrected without cost, 614.
will return fee when paid by mistake, 615-616.
preliminaries to application for registration in, 308 et seg., 565 et seq.
rules of practice in, cited, 319.
practice in, generally, 565-616. (See INTERFERENCE.)
does not grant a ‘‘ patent” for trade-mark, 357.
«PAUL JONES” may be a valid trade-mark, 218, 637.
“PAYSON’S INDELIBLE INK” case, curious, 271.
«PEARLS OF ETHER,” a valid fanciful mark, 166, 236.
PENALTIES,
for infringement of mark, Act of 1870, 334.
fraudulent representations or registry, 367.
by indictment at common or local law, 451-455.
under treaties and conventions. (See Appendix.):
laws of various countries, App. p. 560 et seq.
PENNSYLVANIA STATUTES referred to, 396, note, 539.
PERSON, definition of term, in law, 283.
PERSONA ECCLESLZ, a corporation sole, 299.
a minister of parish not a corporation meant by Act of 1870, 299.
PERSONAL TRADE-MARK, rule as to assignment of, 366.
PERSONALITY, a man’s name may lose all idea of. (See Nam.)
PERVERSION of mark by transference to spurious goods, 443-447.
‘“«PESSENDEDE ” was not decided to be a trade-mark, 222.
“PETIT JOURNAL” newspaper case, 417.
“ PHARMACIE DE L'AMBASSADE D' ANGLETERRE,” sign, 529.
INDEX. 669
PHRASES explained. (See Meaninc or Purases and TERMS.)
“PICTORIAL ALMANAC” case, 257.
PICTURE, as a trade-mark, 255-259.
PIRACY ON TRADE-MARKS. (See Inrrincement; REMEDIES.)
may be committed by part-imitation, 385 e¢ seq.
action on case for deceit, 392.
equitable remedy, 393, 451, 462 et seq.
indictment in State courts, 452, 454.
PIRATE, on sea or land, a common enemy, 24.
PLACE OF BUSINESS to be alleged by applicant, 308-309.
‘*POLICE GAZETTE” case, 550.
POMPEI, ancient, commercial signs in, 6.
POSTPONEMENTS in interference cases, 642.
POTIOR est conditio defendentis, 495.
PRACTICE in Patent Office, 565-616.
interference cases exemplified, 652 et seq.
PRELIMINARY INTERFERENCE,
detailed sworn statement required, 625.
statement serves as a pleading, 627.
when open to inspection of adversary, 629.
adjudication upon preliminary statement, 630.
for want of such statement, 630.
not evidence for party filing it, 631.
forms of statement. (See Appendix, p. 580.)
PREREQUISITES OF LAW cannot be dispensed with, 329.
PRESUMPTION OF FRAUD, against infringer, 501, 505, 518.
must arise from evidence, not conjecture, 505.
PRIMA FACIE RIGHT not always questioned by Office, 581.
PRINTED COPIES of testimony, 641.
PRINTED PUBLICATIONS,
books protected by trade-marks, 116-118.
as merchandise, not literature, 117.
by titles as trade-marks, 118, 547.
newspaper headings may be valid trade-marks, 103-115, 558.
infringed by part-imitation, 415 et seq.
name of song may be protected, 557.
PRIORITY OF ADOPTION, concession of, 634.
“PRIZE MEDAL” not a valid trade-mark, 597.
PROCURING REGISTRY of mark by fraud, penalty for, 367.
PROFIT of defendant, not the measure of damages, 507-508.
PROPERTY IN A TRADE-MARK,
does not depend upon arbitrary law, 46, 51, 676-677.
protected by common law and by statutes, 47.
exists throughout domain of commerce, the world, 47, 51, 689.
uot protected by some nations unless mark deposited, 48-50, p. 560
et seq.
cannot exist without an affixing to merchandise, 46.
title to, may be acquired instantly, 52.
670 INDEX.
PROPERTY IN A TRADE-MARK (continued).
all persons in trade may hold title, 53-56.
a non-trading corporation cannot have, 55, 297 et seq.
“PROPRIETAIRES DE VIGNOBLES” not a valid trade-mark, 599.
PROPRIETARY MARKS. (See Emptems; Marks; TRADE-MARKS.)
PROTEAN REPRESENTATION not a trade-mark, 79.
PROTECTION, theory of, as to trade-marks, 20, 306.
to alien friends as well as our own people, 21.
stipulated by treaty sometimes, 48, pp. 557-560.
sometimes dependent upon domicile, 47, 287.
residents abroad protected only by treaty or convention, 301.
to whom extended, generally, 62-65, 282.
duration of protection under Act of July 8, 1870, 330 et seq.
has always existed, in one form or another, 335.
must always exist in connection with class of goods, 66-70.
withheld, for lack of truth, 71-72, 357, 370, 374-375, 487-491.
unlawful business, 370.
immorality, 373, 602.
impropriety of emblem, 342-344, 602.
non-fulfilment of conditions of registration, 279, 316,
822, 825, 828-329.
PRUSSIA, (See ‘‘ Convention with German Empire,” p. 559.)
protection of trade-marks in, p. 572.
PSEUDONYM may be a valid trade-mark, 213-215.
PUBLIC OFFICER held to strict accountability, 329.
PUBLIC POLICY a ground for refusing protection, 370, 602.
Q.
QUACK MEDICINES discountenanced, 475-476.
QUADRUPED as a trade-mark, 87.
QUALITY, mere indication of, not a trade-mark, 164, 657, 658.
QUARRY-MARKS in ruins of Solomon’s Temple, 8.
QUASI TRADE-MARKS. (See Chapter XII.)
“QUEEN OF THE MEADOW ” a valid trade-mark, 275.
QUI FACIT per alium facit per se, 628.
QUOD AB INITIO non valet, tractu temporis non convalescit, 225.
R.
“RACE OF DILIGENCE,” not applicable to registration, 352.
RAPHELENGIUS, bookseller at Leyden, trade-mark, 15.
“RAZOR STEEL” not a valid trade-mark for cutlery, 164, 276.
“READING SAUCE” label case, 542-548, 546.
RECIPROCITY in protection of trade-marks, 301, 332.
American citizens resident abroad dependent upon, 291.
Act of July 8, 1870, intended to promote, 290.
by treaties and conventions, pp. 557-560.
INDEX. 671
“RED RACER” a valid mark for implement, 275.
REGISTRATION, optional in this country and some others, 18, p. 560
et seq.
does not create title to a trade-mark, 225, 876-383, 592, 682.
certificate of, primd facie evidence of certain facts, 355.
conditions precedent to registration. (See Chap. VI.)
renewal of, under Act of July 8, 1870, 330-333.
a “patent” is not granted for a trade-mark, 357.
of doubtful cases deprecated, 229, 310.
fraudulent marks punished, 367.
mere names of persons, &c., prohibited, 334, 341.
marks not “lawful” prohibited, 334, 341.
refused as descriptive, instances, 133-188, 167-177, 276-277,
345, 347.
for deceit, 870, 375, 609-611.
impropriety of emblem, 342-344, 602.
REGISTERED TRADE-MARKS, examples of, 273-275.
list of 1100, with brief descriptions, &c., p. 602 et seq.
REGISTRANT, name of each, down to January, 1873, p. 602 et seq.
REGULATIONS, Commissioner of Patents to prescribe, 319, 359.
REISSUE, after surrender, 614.
REJECTION OF APPLICATION FOR REGISTRATION,
on account of lack of title, &c., 572.
REMEDIES, law and equity, 451-473.
election of, 506.
REMEDY, a figurative expression, 337.
right to, rests upon two maxims, 337.
at common law not affected by the statute, 369.
action on the case, 334, 338, 392.
at law refused for fraud, deceit, &c., 370.
injunction, 334, 338, 393 et seq.
invariably granted when necessary, 447.
RENEWAL OF REGISTRATION, 330-333.
RESIDENCE,
in foreign country imparts national character, 290, 295.
to change domicile must be voluntary, 289.
in non-reciprocating country debars from registration here, 291.
a citizen of United States held to be commercially a Chinaman, 289.
definition of term under Act of July 8, 1870, 309.
person may have more than one, 309.
as distinguished from domicile, 287, 293, 295, 309.
must be alleged by applicant for registration, 307.
“REVALENTA ARABICA,” infringement on ‘‘ Hrvalenta-Warton,” 439.
‘“GREVERE HOUSE” coach case, 458.
“RICHARDSON’S PATENT LEATHER SPLITTING MACHINE,”
not a trade-mark, 611.
672 INDEX.
RIGHTS analogous to those of trade-marks, 521-564.
“RIGHTFULLY USED,” meaning of term in Act of 1870, 352.
RIGHT USE of words, necessity for, 300.
legal terms, 83-84, 130.
“RIP VAN WINKLE” a valid trade-mark, 218, 613.
RODGERS’ CUTLERY spuriously imitated, 74, 428, 684.
“ROGER WILLIAMS” a valid trade-mark of fancy, 216, 426.
ROMANS, ancient, signs and trade-emblems, 6.
coined money, 578 years B.c., 9.
ROME, protection of trade-marks in, p. 572.
“ROSEBAUME” (from Rose, the owner), valid mark, 217.
ROWLAND & SONS’ case in France, 302.
“ROYAL BATSWING,” valid mark for corsets, 273.
“ROYAL VICTORIA ” a valid trade-mark, 216.
RUSSIA, treaty with, as to trade-mark, p. 559.
trade-mark laws of, p. 572.
8.
“SAMSON BRACHE,” valid mark for suspenders, 273.
SARDINIA, trade-mark law of, p. 573.
SAXONY, trade-mark law of, p. 573.
‘**SCHENCK WATER-PROOF TAGS,” &e., not a valid mark, 133.
“ SCHIEDAM SCHNAPPS” case, 596.
SCIOLISTS confound technical terms, 131.
SCIOTO ‘for a product of Scioto Co., query, 193.
SCOTLAND, Merchandise Marks Act of 1862, p. 565.
SEALS of ownership coeval with traffic, 2.
most sacred of proprietary marks, 4, 5.
SECRET PROCESS, breach of faith in divulging, 562 et seq.
‘* SERPENT” not a trade-mark for artificial serpent, 166.
SIC UTERE tuo ut alienum non ledas, 420.
SIGNATURE, as authenticating mark, 1.
a trade-mark is one’s commercial signature, 130.
itself as a trade-mark, 204-206, 350.
fac-simile of, as a trade-mark, 207-211.
SIGN-BOARDS, are not trade-marks, 96-99, 101, 535.
protected by courts of equity, 521, 528-529, 535.
‘““SIMMONS’ GENUINE LIVER MEDICINE” case, 418, p. 625.
SINCERITY, an essential requisite of mark, 71, 143, 242, 327, 370.
“SIR JAMES CLARICS name usurped with impunity, 393, 555.
SMECTYMNU-US, initials of five men’s names, 118.
“SNOW FLAKE STARCH” not valid if for imitation, 174.
SONG, name of, protected as quasi mark, 557.
SPAIN, trade-mark law of, p. 573.
SPECIAL DAMAGES not recoverable unless pleaded, 502, 504, 509.
INDEX. 673
SPECIFICATION OF APPLICANT FOR REGISTRATION,
considerable degree of accuracy required, 570.
must be written in the English language, 570.
essence of mark must be evolved on papers, 587-588.
indefiniteness defeats protection, 588-590.
breadth of claim, how best attained, 586.
simplicity and breadth go together, 587.
too great breadth defeats object, 588.
degree of specificness required, 591 et seq.
difficulty in describing colors, 585.
rules of propriety in selecting emblems, 602.
allegations true in letter false in spirit, 607.
but one class of merchandise in certificate, 590.
hypothetical cases analyzed, 592.
amendment, how made, 572-573, 577.
requiring supplemental oath, 578.
form of, p. 577.
‘« SPIEGELMACHERS, assumed name of early printers, 14.
the speculum their symbol, 14.
««STANHOPE,” man’s name for a carriage, 181.
“STAR OF THE WEST” a valid trade-mark, 275.
STATEMENT, by applicant for registration, 308-320.
upon preliminary interference, 625 et seq.
‘“STONEBRAKER’S MEDICINES,” &c., case, 435-436.
‘“‘ SUNLIGHT,” valid mark for illuminating-oil, 274.
“SUNNY SOUTH” valid mark for stoves, 273.
SURNAME, subject considered, 196.
dispensed with, or changed at pleasure, 196.
translated into foreign tongue, 196-197.
SURRENDER and reissue, 614.
“SWEET OPOPANAX OF MEXICO” case, 493.
SYMBOLS of ownership. (See Marks; TRraDE-MARE.)
T.
TECHNICAL MARK. (See TrapzE-Mark.)
must be distinguished from its analezues, 80 et seq., 130-183.
label, notice, advertisement, card, &c., is not, 183, 155, 271-272.
mere descriptive designation not such mark, 134, 166-177, 180, 208.
label with coupon, in nature of license, is not, 140.
to be sold as merchandise, is not, 141-142.
cannot consist of mere numerals, 225, 233, 442.
designation of occupation or business is not, 161.
quality of article is not, 164.
genus is not, 164-165.
TERM OF PROTECTION, under registration Act, 330-333.
is generally fur thirty years, 330.
on foreign-manufactured goods may expire sooner, 330-332.
43
674 INDEX.
TERM OF PROTECTION (continued).
may be renewed six months before expiration, 330.
expiration of, does not affect common-law rights, 330.
in various countries, App. p. 560 et seq.
TERMS EXPLAINED.. (See Meaninc or Pnrases AND TERMS.)
TESTIMONY, in Patent Office cases,
of witnesses, principal source of evidence, 646.
subpeena for witness to appear, 639.
parties may testify on own behalf, 639.
access to, and copies of testimony, 640.
when testimony must be printed, 641.
postponement of time for taking, 642, 646.
taken upon notice to adverse party, 646.
cross-examination of witnesses, 646.
folios to be numbered consecutively, 646.
form may be narrative, or interrogative, 646.
must comply with rules, 646.
taking of, by one party only, case closed, 647.
testimony sealed and at once forwarded, 646.
objection to consideration of, at hearing, 646.
abstracts of testimony, 650.
“ THOMSONIAN MEDICINE” case, 459.
TICKETS or labels to be sold are merchandise, not marks, 141 142
“‘ TIGER ” case, idea sought to be registered, 606.
TIME required for gaining perfect title to mark, 52, 129.
TITLE OF BOOK protected in equity, 547 et seq.
may possess all characteristics of trade-mark, 558.
TITLE TO A TRADE-MARK,
may generally be held by any person, 53, 57.
exceptions, persons under legal incapacities, 283.
a necessary incident of trade, 54, 297-300.
non-trading corporation cannot hold, 55, 297-300.
when assignee in bankruptcy may hold, 663.
TRADE-MARK, definition and nature of. (See Chap. III.)
antiquity of, 1-3.
depends on natural right, not arbitrary law, 46-50, 86, 129, 682.
time required for perfection of title to, 52.
may be resumed after being discarded, 677, 690.
right to use is necessarily exclusive in nature, 303.
must be carefully distinguished from its analogues, 80, 130-131.
should be susceptible of being easily read, 78.
oflice of, to designate article as product of him who uses it, 39, 144,
516.
should be index of truthfulness and good-faith, 348.
does not act as injurious restraint upon trade, 36.
is sometimes more valuable than patent, 29.
who may acquire property in, 58-57.
differs essentially from patent or copyright, 112, 515, pp. 531, 675.
INDEX. 675
TRADE-MARK (continued).
is one’s commercial signature to his goods, 180.
may be used on any manufacture or object of commerce, 146.
product of nature as merchandise, 147.
is a short phrase between buyer and seller, 147.
to be valid must be recognized by public, 151.
credit given to it is highest evidence of its validity, 150.
is frequently the purchaser’s only guide, 152.
indication of place, 437.
should strike the eye by clearly-defined character, 88, 145.
ear sometimes, when pronounced, 88, 145.
impress memory as it does merchandise, 269.
proper symbol only can become, 127, 342, 602.
it may have been merely a name of region, 184, 193-194, 249, 273.
man’s name, 216, 218.
may consist of one’s autograph, 204.
fac-simile of signature, 207.
a pseudonym, 213-215.
derivation from one’s name, 217.
peculiar hand-writing, 249.
name of new product, 245, 251, 601.
multifarious objects, 87, 602.
meaningless in itself, when affixed is owner’s emblem, 88.
its nature distinct from all other property, 130, 253-254, 675.
the less descriptive of goods the better, 243.
valid from mere long user and reputation, 317.
confidence of public the test of validity, 145.
color may be an essential element. (See Cotor.)
when mark assigned. (See ASSIGNMENT.)
has certain essential characteristics, viz. : —
application to merchandise, 54, 66-70, 129, 310-312, 335, 680.
duration limited only by volition, or trade, 46-47, 143, 331, 681.
exclusiveness of right to use, 143, 303, 679.
individuality (free from confusion), 89, 266, 269, 342, 353-354,
605.
invariability of form, 143, 269, 583-585, 588, 596-597, 606.
universality of owner’s right, 26, 109, 143, 260, 689.
use in lawful business, 143, 370.
sincerity and good-faith, 71, 148, 327, 370, 872-375, 607-612, 667.
TRANSFER OF A TRADE-MARK. (See AssignMEnt.)
Commissioner of Patents to make regulations for, 359.
at common law, 360.
as affected by law of domicile, 293.
applicant claiming under, must set forth title, 803.
TREATY or convention for protection of marks, 282-302.
British Act of 1862 equivalent to convention, 301.
American citizen resident abroad protected here under, 301.
with various nations. (See Appendix.) ,
676 INDEX.
TRIAL BY JURY,
constitutional right to, exists only at law, 466.
within discretion of equity court, 466.
TRICKS OF TRADE, not always guarded against, 448.
TRUTH and good faith. (See Clean Hanns.)
U.
UBI JUS IBI REMEDIUM, 337.
‘“UDOLPHO WOLFE’S AROMATIC SCHIEDAM SCHNAPPS”
case, 596.
UNIVERSALITY of owner’s right to trade-mark, 26, 109, 143, 260, 689.
UPTON on Trade-marks cited, 68, 111.
USE OF PROPRIETARY MARKS. (See Trapg-mark.)
by ancients, 1-13.
in lawful business essential, 143, 370.
name of firm after dissolution, 524, 530.
by survivor, 526.
assignee, 525-527.
Vv.
VAGUENESS OF LEGISLATION as to trade-marks, 26.
VALIDITY OF DOCUMENTS dependent on seals and signs, 1, 5.
“VALLEE D’AURE” a mere geographical name, 187.
‘VALLEY GEM,” good trade-mark for piano-fortes, 273.
“VALVE JAR” rejected, as merely descriptive, 134.
‘“‘ VEGETABLE SICILIAN HAIR RENEWER” case, 425.
VENDIBLE COMMODITY, only object of trade-mark, 54, 66-70, 129,
810-312, 335, 680.
VENETIAN PRINTERS’ MARKS, 14, 15.
“VICTORIA ” a valid trade-mark, 185.
VIGILANTIBUS, non dormientibus, leges subveniunt, 64.
VINTNERS’ SYMBOL, a green bush, 6.
W.
WAARENBEZEICHNUNGEN ODER FABRIKZEICHEN, MAR-
KEN, 85.
WATER-MARK on paper detects forgery, 7.
“WATER WHITE,” a valid mark for refined petroleum, 274.
WECHELENSES’ marks on publications, 15.
WEDGWOOD'S reliance upon trade-marks, 29.
family name, as mark, for centuries, 216.
‘“¢ WELLINGTON ” as a fancy name for boots, 181.
“WESTERN DUTCHMAN ” a valid trade-mark, 275.
“WHAT CHEER HOUSE” case, 92.
INDEX. 677
‘“WILLOW SPRING ICE” merely descriptive, 247.
‘WINSLOW'S (Mrs.) SOOTHING SYRUP ” case, 201, 426.
WIRTEMBERG, trade-mark law of, 573.
“WISCONSIN WOOD CHOPPER,” a valid mark for axe, 193.
“WISTAR’S BALSAM OF WILD CHERRY” case, 491.
WITNESS. (See Trstimony.)
name of, to be in full on application-papers, 308.
how compelled to testify in Patent Office case, 639.
allowed same fees as in Federal courts, 639.
when fee must be paid in advance, 639.
party a competent witness on own behalf, 639.
WORDS,
may constitute trade-marks, 1, 219-220.
effect of a careless use of, 88, 108, 131.
WOSTENHOLM & SON’S “I X L” case, 68-70, 450.
“WOVEN WIRE MATTRESS” case, rejected, 277.
WRAPPERS, as quasi trade-marks, 537 et seq.
WRONG-DOER cannot qualify his own wrong, 518.
restraint of. (See REMEDIES.)
WRONGFUL INTENT, inquiry into, in fixing damages, 508
X.
“«X” formed of two fishes crossed, as mark for fish, 250.
“oX,” “XK,” “XXX,” mere indications of degree, not trade-marks, 162-
163, 597.
Y:.
“YANKEE SOAP” case, 119-125, 597.
«“ YELLOW MOSS CHEWING TOBACCO,” not descriptive, 173.
“YOUNG AMERICAN ” a valid trade-mark for ink, 218.
Z.
“ZERO” a valid mark for water-coolers, 273.
Cambridge: Press of John Wilson & Son.
KF 3180 B88
Author Vol.
L
illiam Henry.
Copy
a treatise on the law of
trade-marks & analogous sub.
Title