jrnia al T llpS4-t UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LBRARY A TBEATISE LAW OF TRADE MARKS, DIGEST AND REVIEW ENGLISH AND AMERICAN AUTHORITIES. FRANCIS H. UPTON, L. L. B. Justitia est constans ct perpetua voluntas jus sunm cuiquo tribucndi. Just. Inst. L. 1. T. 1. ALBANY : WEARE C. LITTLE, LAW BOOKSELLER, 1860. Sntered according to act of Congress, in the year ISCO, l)y WEARE C. LITTLE, In ttie clerli's office of the District Court of the United States, for the Northern District of New York. T ■VTEED, PARSONS & COMPANY, PP.INTEP.S AND STEREOTTPERS. PREFACE. The subject of this Treatise has assumed an interest and importance, within the past quarter of a century, not inferior to that attached to any branch of the law connected with the affairs of trade and commerce. The instruments by which the manufacturer or the merchant, is enabled to designate the merchandise that he makes, or sells, so that its identity in the marts of commerce shall be faithfully preserved, are often valuable beyond estimation, for the reason that the merchandise itself, without these, would become comparatively valueless. The manner in which property in these instruments may be acquired ; by whom it may be possessed ; of what such instruments must consist in order to entitle him who adopts and uses them, to protection in their exclusive use as property ; what is in law, a violation of such exclusive right; and what are the remedies by which such violation may be prevented or redressed ; are questions, the answers to which constitute the law of Trade Marks. These answers are only to be found distributed through the books of reports of judicial decisions of the courts of 755623 4 PREFACE. England and the United States, and no attempt has ever yet been made to collate or digest them. The great inconvenience arising from the want of a work in which has been performed the labor of gathering together these scattered authorities, and extracting from them the principles, and doctrines, and rules, which they are found to establish, has been often and seriously felt by the author, in the performance of his professional duties, and is made a subject of complaint by his brethren, both of the bench and bar, whenever a trade mark controversy arises for investigation, discussion or determination. These considerations, to which may be added the very vague and imperfect notions which confessedly exist in relation to this interesting branch of the law, as well in the profession itself, as among laymen, and those whose business interests require some familiarity with its principles, have induced the present undertaking. If it shall be found to have been performed in a manner sufficient to remove, or even to diminish, the inconveniences heretofore experienced — especially, if it have the effect, however partial and limited, of causing juster ideas to prevail concerning the pecuUar character of property of which it treats, and of inducing a more extended familiarity with the principles upon which its recognition and protection are based, the author will have the satisfaction of having discharged a portion, small though it be, of that debt which my Lord Bacon justly holds to be due, from every man to his profession. New York, June, 1860. LIST CASES CITED IN THIS TREATISE. Page. Amoskeag Manufactuking Company vs. Spear, 2 Sand. S. C. R, 608, 85-126 Ames vs. King, 2 Gray, 379, 185 Bailey vs. Taylor, 1 Kus. & M., 73, 234 Bell vs. Locke, 8 Paige, 74, 93 Blanchard vs. Hill, 2 Atkins, 284, 12 Blofield vs. Paine, 4 Barn. & Adolph., 410, 122 Bramwell vs. Halcomb, 3 Myl. & Cr., 737, 234 Burgess vs. Burgess, 17 Eng. Law and Eq. R., 257, 107 Burnett vs. Phalon, N. Y. S. C. (not yet reported), 171 Cantwell vs. Lye, 17 Ves., 335, 61 Canham vs. Jones, 2 Ves. & Bea., 218, 25-117 Chissam vs. Dewes, 5 Rus. R., 29, 61 Christy vs. Murphy, 12 How. Pr. R., 77, 93 Clark vs. Clark, 25 Barb., 76, 145 Clinton vs. Douglass, 1 H. R. V. Johns., 176, 61 Coates vs. Holbrook, 2 Sand. Ch. R., 586, 124 CoFFEEN vs. Brunton, 4 McLsan, 516, 159 Cook vs. Collingridge, Jacob's R., 62, 61 CoRincK vs. McCubben, 1 Shaw & Ballantyne, 540, 61 Crawshay vs. Thompson, 4 Man. & Gr., 357, 122 Crawshay vs. Collins, 15 Ves., 227, 60 Croft, vs. Day, 7 Beav., 84, 81 Clement vs. Maddicks, 22 Law R., 428, 122-234 Compere vs. Bajou, Case 8, Vol. 140, of Paris Court of Appeals, 72 CoRWiN vs. Daly (not yet reported), 187 6 LIST OF CASES. rAGE. Davies vs. Hodgson, 25 Beav., 177, Gl Day vs. Binning, 1 Coop. Ch. R., 489, 120 Delondre vs. Shaw, 2 Simons, 237, 21 Doughty vs. Van Nosteand, 1 Hoff. Ch. R., G8, 61 Douglas vs. Hammond, 5 Yes., 539, 60 Edlestone vs. Vick, 23 Eng. Law and Eq. R., 51, 83 Elves vs. Crofts, 10 Com. Bencli R., 241, 61 Farina vs. Silverlock, 4 Kay & Johns., 650, 229 Fetridge vs. Wells, 4 Abb. Pr. R., 144 ; 13 How. Pr. R., 385, . 36-151 Fetridge vs. Merchant, 4 Abb. R., 136, 41-49-156 Flavel vs. Harrison, 19 Eng. Law and Eq. R., 15, 33 Gout vs. Aleplogu, 6 Beav., 69 ; 1 Chitty's Gen. Pr., 701, . . 120 Hine vs. Lart, 10 Lond. Jur. R., n. s., 161, •. 82-122 Hogg vs. Kirby, 2 Ves., 226, - 93 HoLLowAY vs. HoLLowAY, 12 Bcav., 213, 32 Howard vs. Henriques, 13 Sand. S. C. R., 325, 90 Howe vs. Searing, 10 Abb. Pr. R., 264, 55 Hitchcock vs. Cohen, 1 Adol. & El., 438, 61 Knott vs. Morgan, 2 Keene, 213, 94 Lewis vs. Langdon, 7 Simons, 421, 61 Marsh vs. Billings, 7 Cush., 322, 91 McDonald vs. Richardson, 1 Geff. R., 81, 61 MiLLiNGTON vs. Fox, 3 Myl. & Cr., 338, 119 Motley vs. Downman, 3 Myl. & Cr., 1, '. 27 Morrison vs. Salmon, 2 Man. & Gr., 385, 119 Partridge vs. Menck, 2 Sand. Ch. R., 622, 218 Partridge vs. Menck, How., appeal cases, 34 Perry vs. Trufit, 6 Beav., 66, 32-118-160 Peterson vs. Humphrey, 4 Abb. Pr. R., 394, 62 Pierce vs. Franks, 10 Lond. Jur. R., 25, 122 Ridding vs. Howe, 8 Simons, 477, 31 Ransome vs. Bentnall, 3 Law Jour. R., n. s., 161, 121 RoDGERS vs. NowiLL, 5 Man. Gr. & Sc, 109, 105 Samuel vs. Burger, 4 Abb. Pr. R., 88, 52 Singleton vs. Bolton, 3 Doug., 293, 24-116 Snowden vs. Noah, Hopkins, 347, 93 Southern vs. How, Popham, 144, 11 Spottiswoode vs. Clark, 10 Lond. Jur. R., 1043, 94-235 Stern vs. Carlan, 13 Law R., 360, 234 Stewart vs. Smithson, 1 Hilton, 119, 41 Stokes vs. Laxdgraff, 17 Barb., 608. 86-140 LIST OF CASES. 7 Page. Sykes vs. Sykes, 3 B. & C, 54, 103 Taylor vs. Carpenter, 2 Sand. Ch. R, Gil, 234 Taylor vs. Carpenter, '3 Story K., 450, 20 Taylor vs. Carpenter, 2 Woodbury & Minot, 1, 20 Taylor vs. Carpent'cr, 4 Barb. Ab. of Chancellors' Deci- sions, G8, 20 The Merrimack Man. Co. vs. Garner, 2 E. D. Smith, 387, . . 220 TuE Collins Company vs. Cowen, 3 Kay & Johns., 423, 21-26 The Collins Company vs. Brown, 3 Kay & Johns., 428, 21-122 The Brooklyn White Lead Co. vs. Masury, 25 Barb., 216, . 148 Thomson vs. Winchester, 19 Pick., 214, 109 Welch vs. Knott, 4 Kay & Johns., 747, 122-218 Williams vs. Johnson, 1 Bosworth, 1, 161 Williams vs. Wilson, 4 Sand. Ch. E., 379, , 61 Whittingham vs. Wooler, 2 Swanst, 428, 234 Wolfe vs. Goulard, 18 How. Pr. E., 64, 168 THE LAW or TRADE MARKS. CHAPTER I. Of the Natuee and Charactee op Peopeety in Teadb Maeks. A TRADE MARK IS tliG name, s5mibol, figure, letter, form or device, adopted and used, by a manufac- turer, or merchant, in order to designate the goods that he manufactures, or sells, and distinguish them from those manufactured or sold by another ; to the end that they may be Imown in the market, as his, and thus enable him to secure such profits as result from a reputation for supeiior skill, industry or enterj^rise. The necessity for the use of such distinguishing marks for articles of merchandise, must have arisen 10 THE LAW OF with, the dawn of manufacturing and mercantile competition. Such is the similarity in external appearance, upon a casual, or even a careful inspection, of dif- ferent articles of manufacture, of the same general nature, but of essentially different quality and value, that, without the aid of distinguishing marks, the purchaser would be unable to deter- mine the origin of the goods he was purchasing, and so would be deprived of that assm'ance of the quality of the merchandise, and that pledge of the integrity of the manufacturer or vendor, which the trade mark expresses or implies. We accordingly find, that property in trade marks, exclusive and absolute, has existed and been recognized as a legal possession, which may be bought, and sold, and transmitted, from the earliest days of our recorded jurisprudence. It has been often said, that the doctrine of exclu- sive property in trade marks, has prevailed from the time of the Year Books. This may be so — but on an examination of the record referred to, it is very doubtful if it can be regarded as justifying this ancient recognition of the doctrine. The reci- tal in Cro. Jac. is as follows : "A clotliicr of Gloucestershire made very "good cloth; so that, in London, if they saw TRADE MARKS. 11 "any cloth of his mark, they would buy it, " without searching thereof; and another, who " made ill cloth, put his murk upon it, without "his privity — and an action upon the case was " brought, by him tcho bought the doth, for this "deceit, and adjudged maintainable." In Southern vs. How, Popham, 144, a somewhat different version is given of what is, no doubt, the same case — although it is there said to have taken place in 22 Eliz., and in Cro. Jac, it is referred to the 33 Eliz. In Comyn's Digest ^^ Act ion on the case for deceit " A. g. the case is thus recited : " So " ( i. 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 hy whom the action may be maintained, but, as he cites Cro. Jac. only, it may be inferred that he considered the case as estab- lishing the right in the purchaser, which it certainly would, if that report be correct. In Southern vs. How, in Popham, the case is certainly cited as a distinct affirmance of the right of a manufactm'er 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 12 THE LAW OF vendee," but he adds — '' semhle que gist jjur le vendee''— 2 Roll., 28. At whatever early date property in trade marks may have been recognized, it is only since a com- paratively recent period, that the jurisdiction of Coiu'ts of Equity has been exercised for its j)ro- tection. And it is only since, and as a consequence of, the learned discussions and decisions in these courts, that its natui-e, and character, and extent, have been clearly defined. Prior to the time of Lord Hardwicke, a party claiming to be the owner of a trade mark, was left to establish his right, and obtain his remedy at law. That learned chancellor said — that he "knew of " no instance of granting an injunction to restrain " one trader from using the trade mark of another." Blanchard vs. Hill, 2 Atk., 284 — " and" he adds — " in my opinion it would be of miscliievous conse- " quence to do so." It is certain, that in a case like that before Lord Hakdwicke, no Court of Equity of the present day, either in England or America, would hesitate to grant an injunction to restrain the violation of rights now universally conceded to be just and salutary. It is not easy to understand upon what grounds any reasonable apprehension of " mischievous con- TRADE MAEKS. 13 sequences," could have been entertained, from such an exercise of the powers of a Court of Equity — but whatever they may have been, they have long since been discarded. As the time interests of manufactm-es and com- merce have been more perfectly developed, and more fully understood and appreciated, it has been found, that an exclusive property in trade marks, and its adequate protection by Courts of Equity, not only imposes no restraint upon the freedom of trade, but that its direct and inevitable ten- dency is, to promote and encourage that laudable competition, in which lies the true interest of the public — that competition which stimulates effort, and leads to excellence, because of the certainty of protection in the attainment of its adequate reward. It is now, therefore, the well established doctrine, that the exclusive property of the manufacturer, or merchant, in his trade marks, is of that nature and character, that its adequate security and protection, by the exercise of the highest power of the cotirts, is an imperative duty, as well for the safety of the interests of the public, as for the promotion of individual justice — and a duty which cannot be evaded or denied, without a violation of those principles upon which a large portion of equity 14 THE LAW OF jurisdiction is founded — and its most important functions are exercised. When we come to consider the cliaracter and extent of the wrong that is committed by an inva- sion of the right of property in a trade mark, the just and rational grounds upon which this doctrine has now become firmly established, will be made perfectly apparent. The right of property in trade marks does not partake in any degree of the nature and character of a patent or copyright, to which it has sometimes been referred— nor is it safe to reason from any supposed analogies existing between them. The exclusive right of multiplying copies of original productions of the mind, whether in the form of books, maps, engravings, designs or other of the manifold emanations of human thought, expressed by words or sjmibols — bears no appre- ciable resemblance to a right of property in a mere name, figure, letter, mark, device or symbol — when used as a designation of a thing. The former, which is copyright property, is granted by express statute — and, whatever may have been its origin, is controlled by the limitations and conditions of the law of its being ; it is a pro- perty in the thing itself — the words — letters, TRADE MARKS. 15 designs or syrabols, which are the signs of things, and the forms and cmbodmient of thought. The latter is a property, not in the words, letters, designs or symbols, as things — as signs of thought — as productions of mind — but, simply and solely, as a means of designating things — the things thus designated being productions of human skill, or industry, whether of the mind or the hands, or a combination of both : and this property has no existence apart from the thing designated — or separable from its actual use, in accomplishing the present and immediate pui'pose of its being. It is a right of property, neither created nor controlled by any legislative enactment, but existing at common law, independent of all statute provi- sions, wliich, [recognizing its existence and the great importance of its protection beyond that afforded it by courts of civil jurisdiction], inflict the penalties of a misdemeanor upon its viola- tion.* During the cuiTcnt century, which, beyond all others, has been characterized by a wonderfully increased activity in the multiplication of all con- ceivable productions to supply the material needs or wants of man — natural or artificial — the right of propert}^ in trade marks, has grown to be of * Vide note at the end of this chapter. 16 THE LAW OF immense and incalculable value to the manufac- turer — the merchant — and the public. It is the mean«, and in many instances, the only means, by which the former are enabled to inspire and retain public confidence in the quality and integrity of things made and sold — and thereby secure for them a peraianent and reliable demand — which is the life of manufacturing and mercantile operations. And it is also, in the like instances, the only means, by which the public is protected against the frauds and impositions of the crafty and designing, who are ever on the alert to appropriate to them- selves the fruits of the well earned reputation of others, regardless of individual rights or the public interests. As this peculiar character of property has in- creased in value and estimation, so, it has become more and more important, that the principles of law should be clearly defined and well understood, which lie at the foundation of its existence — which indicate its true nature and character — which pre- scribe rules for its acquisition, preservation and transmission — and which define its violation, and provide the means for its protection, as well in the form of preventive, as of retributive justice. These principles are to be gathered from the TRADE MARKS. 17 discussions and judicial decisions of the courts of England and the United States, and the ensuing chapters of this work will be devoted to the task of extracting and faithfully setting forth those princi- ples, w^hich are considered justly deducible from all the authorities, upon their careful digest and review. Note. — The peculiar phraseology of the Patent Laws of the United States Avhich grant to the inventor or pro- ducer of a new and original design the exclusive right of multiplying copies of the same, have, to some extent, led to the practice, of availing of its provisions to secure what is supposed to be an equivalent to trade mark property. The act of 18-12, is in the following words: " Any citizen or citizens, alien or aliens, having resided one "year in the United States, and taken the oath of his or their " intention to become a citizen or citizens, who by his, her, "or their, own industry, genius, efforts, and expense, may " have invented or produced any new and original design for " a manufacture, whether of metal or other material or mate- " rials ; or any new and original design for the printing of "woolen, silk, cotton or other fabrics ; or any new and original "design for a bust, statue or bas relief, or composition in " alto or basso relievo, or any new and original impression or " ornament ; or to be placed on any article of manufacture, " the same being formed in marble or other material — or any " new and iiseful pattern, or print or picture, to be either ^^ worked into or worked on, ov printed ov painted or cast, or '^ otJierivise fixed on any article of manufacture — or any new " and original shape or configuration of any article of manu- " facture, not known or used by others, before his, her or their " invention or production thereof, and prior to the time of " his, her or their application for a patent therefor, and who " shall desire to obtain an exclusive right or property tlierein, " to make, use and sell and vend the same, or copies of the " same to others by them to be made, used and sold, may 3 18 THE LAW OF " make application, in Avriting, to the commissioner of Patents, " expressing such desire, and the commissioner, on due pro- " ceeding had, may grant a patent therefor," The words whicli we have italicised, are those relied upon, in this law, as conferring a right, available for obtaining, by patent, an exclusive privilege that can be made to serve the purpose of designating articles of mer- chandise. It is quite obvious that such was not the purpose of the law, but, on the contrar}^, it was manifestly intended, that the design^ for which such protection was provided — ^should constitute a portion of the nianuf ictured article, either as an ornamental adjunct, or as controlling its figure or pro- portions — by no means, as a mere name or designation, by which to identify or distinguish the article. But, we are informed that a very literal construction has been placed upon the phraseology of the law — and that under it, patents are granted, upon the application of manufactures or merchants — for devices to be used as mere designations of their merchandise, to be affixed, either to the article itself — or to the package containing it. Whatever right may be thus acquired, is, of course, subject to the conditions of the statute — and, although made subservient to the uses of designating trade marks — is, in no sense, analogous to trade mark property. No higher or better exclusive right to the use of such mark or device can be acquired by such a patent — than may be acquired by its adoption and appropriation by the manufacturer or merchant to designate the articles to which it is affixed, as his production — and it may well be doubted whether such a construction of the statute would have been suggested or sought — but for the privilege, which such a government grant confers, or may be sup- posed to confer, of affixing the word "patent" or "pat- tented " to the article, in connection with which, the right TRADE MARKS, 19 to a design has been secured — and this, to serve the purpose of inducing the public to believe that a patent exists for the thing itself — not for the mere device or mark attached to it. The policy of continuing such an unwarrantable con- struction of the law — resorted to for the accomplishment of such a purpose — is, to say the least, very questionable. CHAPTER II. By whom Property ix Trade Marks may be acquired. No person, who is, in law, capable of acquiring and possessing any species of property, is excluded from the acquisition of property in trade marks. In its adequate protection by the com'ts, there is no difference between citizens and aliens — nor, can it be made a subject of inquiry, how far the comis of the country of the alien complainant, afford to the citizens of the country of his temporary domicil, that protection which he there seeks. Such an inquiry, it has been truly said, would be deroga- tory^ to the dignity of the courts and the country, and of the just boast of all free and enlightened communities, that equal and exact justice is admin- 20 ■ THE LAW OP istered to all who invoke it. The honor of a nation, and the character of its jurisprudence, as well as every dictate of enlightened wisdom, espe- cially in a commercial community, require that the foreigner shall be protected in this character of property, equally with the citizen. Even though other nations were justly chargeable with the wi-ong and injustice of "withholding this protection to aliens, it affords no reason for an imitation of such an example. " Retaliation in a course of injustice, is not " a sakitary principle to enforce, in the admin- "istration of justice." {Taylor vs. Carpenter^ 3 Story's Reports, 450, and imperfectly reported in 7 Law Reporter, 437 — also Taylor vs. Car- penter^ in 2 Woodbury and Minot, 1 — and 4 Barbour's Abstract of Chancellor's decisions, 68— and fully reported in 2 Sand. Ch. R., 603.) In each of these cases — the former, in the Cir- cuit Coiu't of the United States, in Massachusetts, before Justices Story and AVoodbury — and the latter, in the Court of Chancery of New York, and subsequently on appeal in the Court of Errors — the plaintiff was a subject of the Queen of Great Britain — and an attempt was made by the defend- ant's counsel, to show, that the protection claimed, should be granted only to citizens, and that the policy of denying such protection to the foreigner TRADE MARKS. 21 complainant, a citizen of- the United States, had been adopted by the EngHsh courts. In the refusal of the courts, in these cases, to recognize such a doctrine, it was by no means con- ceded, that the case cited and relied upon by the defendant's counsel, justified the deduction di'awn from it. The case referred to, is Delondre et al. vs. Shaio^ 2 Simons, 237, and it will be found, on examina- tion, that the denial of protection by the learned Vice-Chancellor, was limited to the " copyright of a foreigner." More recently, and in one of the latest deci- sions of the English Com*t of Chancery, the very question arose which was made in Taylor vs. Car- penter. In the case of The Collins Co. vs. Broicn, 3 Kay and Johnson, 423 — and The Collins Co. vs. Cowen, 3 Kay and Johns., 428, tlie plaintiffs were citizens of the United States, and manufacturers of edge tools at Hartford, in Connecticut. Upon the objection of alienage being made, the doctrine supposed to have been adopted in Delondre vs. Shaw^ was repu diated by the learned Vice-Chancellor ("VYood), in language quite as strong and indignant as that used by Mr. Justice Story- — or the Chancellor or either of the learned Senators in the Court of 22 THE LAW OF EiTors of New York — and it was not only held that foreigners were equally entitled to protection with citizens, but that it was very doubtful if it should be withheld even from alien enemies. A consideration of the correct legal definition of a trade mark — of the necessity in which its use originated, and of the justice as well as policy of protecting it as property, serves to indicate that class of persons in a mercantile community who become possessed of this species of property and entitled to protection in its enjoyment — for, while, as we have seen, no one is excluded from the right to acquhe, on the other hand, such only do acquire the right, whose position brings them within the true policy and just intendment of the law. It is not the abstract right to the exclusive use of a certain name, letters, mark, device or symbols, which can be acquired and possessed. It is such use only, in connection with, and as a designation of, the particular property to which it is affixed. It follows, therefore, that the exclusive right to the trade mark, can exist in him only, who, in some form, and to some extent, possesses an exclusive right in the property to which it is appended. The fundamental policy of the law is, to pro- tect the manufactm^er, who by his skill and industry, TRADE MARKS. 23 has produced an article of merchandise, that has found favor with the ^^uhhc, and which he has designated by a particular name or mark. We accordingly find, that in nearly all the reported cases in w^iich the right has been recognized, the complainants have been manufacturers, and, as such, possessed of an exclusive right in the desig- nated commodity. It is not doubted that the merchant, who imports and sells the article, may acquire the light, and be alike entitled to protection — but he must acquire it by virtue of his relationship to the manufacturer, which has vested in him an exclusive right to sell. If A., the manufacturer, should sell his produc- tions to B., and also to C, and B. should adopt for it a distinguishing mark, indicating its origin, it would hardly be contended that he could acquire an exclusive property in such mark, and be entitled to its protection, as against E., or any one else, who had an equal right to sell the identical article, by ■virtue of his purchase from the same manufacturer. It seems, therefore, to be the established doctrine, that property in trade marks — so far, at least, as they consist in the proper name of the things designated, or, by long use, have become known by that name, can exist only in those who have the \ exclusiveright to manufacture 0£^to sell the spe- 24 THE LAW OF cific article. And so far as they consist in anything other than the proper name of the thing, whicii is susceptible of becoming a legitimate trade mark, can exist only in the manufacturer or in those entitled to represent the manufacturer. In the case of Singleton vs. Bolton, 3 Doug., 393, which is one of the earliest reported cases in the law of trade marks, it appeared that one " Dr. Johnson," had invented a certain medicine which he called " Dr. Johnson's Yellow Ointment." By long use, that had become the name, by which alone the medicine was known. Without acquiring any rights from the inventor, who had long been deceased, the plaintiff, and his father before him, had, for many years, com- pounded and sold this medicine, under that name. The defendant commenced to make and sell the same ointment, under the same name, and for such supposed invasion of his exclusive right, the plain- tiff brought his action. He was nonsuited, and the nonsuit was affirmed by the Coui-t of King's Bench, upon the ground, as stated by Lord Mans- field, that the plaintiff had no exclusive right in the medicine itself — and therefore, the defendant had an equal right to prepare and sell it under the same name that the plaintiff used — that, having become the proper name of the thing. TRADE MARKS. 25 In the case of Canham vs. Jones, 2 Yes. & Beams, 218, the same principle was asserted. The bill was filed to restrain the defendant from compomiding and selling a certain medicine, called " Velno's Vegetable Sp'up," the plaintiff averring that he had acquired an exclusive right in the medicine itself, and therefore in the use of the name under which it was known and sold. The evidence, however, not sustaining the aver- ment of the plaintiff's exclusive right in the medi- cine, his alleged right to protection in the use of tlie name, was urged upon the ground of prior adoption and long use — but the bill was dismissed, "because," in the language of the learned Vice- Chancellor (Sir Thomas Plumer), "as the plaintiff had no exclusive right in the medicine, it was a necessary consequence that he could have none in the use of its name. The foundation of the bill, is the exclusive right asserted in the plaintiff — that failing — all consequential relief falls with it." This is, unquestionably, the established doctrine — and although, in the discussion of particular cases, judges have sometimes held language which would seem to convey the idea of a property in the trade mark itself — not connected with any merchandise that it designates, a property which, once acquired, becomes vested in him who adopts it, so that he 26 THE LAW OF may, for any time, lay it aside, and then resume its use as an exclusive right — such a doctrine has never been du-ectly asserted, nor could it be main- tained, without a departure from the obvious pur- pose and policy of the law. In the late case, already cited ( Collins vs. Cowen, 3 Kay and Johns., 428), the learned Vice-Chan- cellor declares it to be well settled, that there is no such thing as property in a trade mark, except in connection with its use to identify the goods and wares as those of the manufactm-er who uses it. "It is," lie says, "in fact, a right, which, can "be said to exist only, and can be tested only, "by its violation. It is a right which any per- "son designating his wares or commodities by "a particular trade mark, as it is called, has, "to prevent others from selling wares which " are not his, marked with that trade mark." While, therefore, it may be perfectly tnie, that a trade mark may be made the subject of sale and transfer, so as to confer upon the purchaser the i-ights of the vendor — yet, it must not be supposed that this can be done, apart from a transfer of the right to manufacture or sell the particular mer- chandise, which it had been used, by the vendor, to designate. If a manufacturer, who has adopted and used a particular mark or sjmibol to designate his goods, TRADE MARKS. 27 and thereby has acquired a right to protection in its exclusive use, should abandon his business, with- out transfen-ing it to another, he can no longer be held to possess any exclusive right to the use of the name, entitling him to transfer it to another manufactm'er who makes the same or a similar article. The right to the exclusive use of the name, may, perhaps, upon such abandonment, be acquired by another, by adoption and use — but the transfer, of itself, can confer no right. It would seem, that a trade mark may become so identified with the particular ^^/^-ce of manufactm'e, as to confer upon the person, having, for the time being, tile exclusive right to manufactm-e at that particular place, the exclusive right to use the trade mark upon his goods there manufactured. Such a doctrine was suggested by Lord Cotten- HAM, in Motley vs. Donmman, 3 Myln. & Cr., 1. In that case, tin plates were made at Carmarthen, for a long series of years, marked " M. C," and, under that mark, became universally known as the plates made at the Carmarthen works. S. became a lessee of the factory, and used the mark. He abandoned his lease, and set up a tin plate factory forty miles distant from Carmarthen, and there used the same mark upon his plates. For a num- 28 THE LAW OF her of years thereafter the Cannarthen works remained unoccupied. At length D. took a lease of them, and commenced the business of manufac- turing tin plates, and used the same brand " M. C." S. obtained an injunction to restrain D. in the use of this trade mark — but, upon the hearing, it was dissolved, with liberty to bring an action at law. The learned Chancellor says: "The question is, whether the plaintiff "acquired the right to prevent subsequent ten- "ants of the works at Carmarthen, from using a "mark, which it is clear, was originally derived "from those works. It is a question of con- "siderable nicet}^ and has never risen in any "of the cases cited, and therefore, the court " should be very sure before it concludes the "right, by injunction — particularly without " providing for the trial of the legal right." It may well be doubted, whether the doctiine, apparently countenanced by this decision, would be sustained upon matui'e consideration — for it would certainly appear to be at variance with the principles upon which the jmisdiction in equity, for the protection of property in trade marks, has always been held to rest. That jurisdiction is exercised for a twofold pur- pose: First. To protect the public against the frauds and impositions of unprincipled vendors, who may TRADE MARKS. 29 seek to pass off tlieir spurious wares, as those of approved quality and established reputation, under the name or g-uise of the genuine commodity; and Second. To secure to the skilful and industrious manufacturer, the legitimate fruits of his skill and industry. To hold, that a particular trade mark, may, under any circumstances, be an appurtenant to a particular place, where the goods marked are made, could scarcely be rendered subservient to either purpose. To hold that an honest, skilful and industrious manufacturer, who has adopted as his trade mark, a name or sign, that had been used by him at his former place of manufacture, at a time when all manufactvu'ing operations had ceased at that place, and has continued the use of that name or sign for a series of years — so that, under that name, the article became known, and favorably known, as his — maybe suddenly deprived of his trade mark, by which alone his merchandise is identified in the market, and the exclusive light to its use become vested in another, because that other has become the lessee of the old place of manufacture, at which the trade mark was originally adopted, and long before used — would certainly seem to be subver- sive of each purpose of the law — for the manu- 30 THE LAW OF facturer, would thereby be effectually deprived of the just reward of liis skill and industry — and another party ' sailing- under his colors ' would be placed in a situation, enabling him, with impunity, to mislead the public, and pass off an inferior article upon the consumer. There is manifest danger, if not positive cer- tainty, of such a result, whenever the judicial mind, in the detenuination of controversies con- cerning this peculiar character of property — is induced, by the nature of the circumstances attend- ing any given case, or from any other cause, to lose sight, for a moment, of those fundamental principles, which, we have seen, are the sufficient and only foundation of that equity, jurisdiction, which is exercised for its protection. As it is the supposed skill and industry of the manufacturer, which confers upon him, or those representing him, the right to protection in the exclusive use of the trade mark which he has adopted, to designate his productions — such a right can only be acquired by the honest manufacturer. When a person seeks, by representations which are untrue (whether forming a portion of the trade mark that he has adopted for his wares, or not), to mislead the public into a belief that his commodi- TRADE MAEKS. 31 ties liave an origin otlier than the true one, or that they are compounded or produced, in a manner not in accordance Avith the truth, and thus, endea- vors to estabhsh a reputation for his goods, upon another basis than his skill and industry in their production, he places himself beyond the pale of the protection of the law — and — acquiring no exclusive right to the trade mark that he uses, is entitled to no relief against any one who may see fit to appropriate it. A careful review of the authorities illustrating this important doctrine, cannot fail to be instruc- tive. In the case of Pidding vs. How, 8 Simons, 477, the complainant filed his bill, to restrain the use by the defendant, of his trade mark, on a certain tea — made by a peculiar mixture of different kinds and qualities, called " Howqua's Mixture." It appeared, however, that the complainant had made false representations to the public, in relation to the method of procming and making his mix- ture, and upon this ground, the injunction was denied. "It is a clear rule" says the Yice-Chancellor in his decision — "laid down by courts of "equity, not to extend their protection to per- "sons whose case is not founded in truth." 32 THE LAW OF In Perry vs. Trufitt, 6 Bea., QQ, the doctrine of Picldlng vs. Hoio, was approved and followed. It appeared, in this case, that in 1836, one Leathart invented a certain mixtui'e for the hair, and sold the secret and recipe for his compound to the complainant Perry — who called it "PeiTj's Medicated Mexican Balm." But it also appeared, that the complainant, in his advertisements to the public, had falsely set forth that his compound was prepared from an original receipt of the leai-ned and distinguished " Von Blumenback" — and for this reason, with others, (to be refeiTcd to hereafter in another connection) Lord Langdale, Master of the Rolls, denied the injunction prayed for, to restrain the defendant from selling his compound, under the name of " Trufitt's Medicated Mexican Balm." Tlie decision in the subsequent case of Holloway vs. Holloway, 13 Bea., 213, would seem to involve a relaxation of this salutary doctrine — but, as no reference is made in the opinion of the court, to either of the preceding cases, it cannot be regarded as overruling the doctrine which they had estab- lished. TRADE MARKS. 33 In Flavel vs. Harrison, 19 Eng. Law and Eq. Rep., 15 — the doctrine of Fielding vs. How, was again maintained and rigidly enforced. The plaintiff in this case, had contrived a grate, which he manufactured and sold extensively, and profitably, under the name of " Flavel's Patent Kitchener." It was thus stamped and marked, and by that name had become known. In fact, the plaintiff had never obtained any patent for his invention or improvement. The name, therefore, adoj)ted by the plaintiff, declared an untruth. The defendant, Harrison, had been employed by the plaintiff, and, availing of his situation, had sur- reptitiously procured copies of the plaintiff's list ot customers, and of his plans. Leaving his employ- ment, he commenced lousiness on his own account, by the manufacture and sale of the same article, and stamped it with the identical name used by the plaintiff. Notwithstanding the dishonest practices of the defendant, the court refused to interfere by injunc- tion, solely upon the ground that the plaintiff had himself been guilty of a fraudulent misrepresenta- tion, in the trade mark adopted by him, namely, that the thing to which it was applied, had been patented, when in truth it had not. 34 THE LAW OF (It may be well to state, in this connection, that the use of the word "patent," or words signifying that letters patent of the government have been granted, or that a copyright has been secm'ed by compliance with the statute provisions, by stamp- ing, or in any manner marking or printing the same, upon any article of manufacture, or upon anything which is the subject of copyright — to which, in truth, no patent has been granted or copyright secured — is prohibited by penal enactments, both in England and the United States. But the decision in Flavel vs. Harrison proceeds upon the false representation alone, not upon the statute prohibition.) In the courts of the United States, the question of the right of a complainant to protection, in the exclusive use of his trade mark, who has himself been guilty of a fraudulent imposition upon the public, in the manufacture or business for which he seeks protection, has undergone elaborate dis- cussion. The subject came directly under consideration in the case of Patridge vs. Menck, in the Court of Appeals of New York. (How. Appeal Cases, 547.) In the Court of Chancery, from which the case was taken by appeal, the question does not seem to have arisen — 2 Sand. Ch. R., 622 — but in the TRADE MARKS. 35 Court of Appeals, the case was determined upon an application of the English doctrine. The plaintiff was a manufacturer of friction matches, and caused a label to be affixed to his boxes, having upon it the woi-ds, "A. Golsh's Fric- tion Matches." The defendant was also a match manufacturer, and used the same trade mark upon the labels affixed to his boxes. A. Golsh, it appeared, was the original manufac- turer, but the plaintiff had acquired no exclusive right to use his name or trade mark, although he had purchased his secret, and therefore might be regarded as licensed in some manner, to use his name. The court, however, considered that by its use, he was fraudulently representing to the public that Golsli was the manufacturer of the matches made and sold by him — and this manifest intention to mislead or deceive the public, was held to be, of itself, a sufficient reason for denying to the plaintiff the protection which he claimed, Mr. Justice Gardiner, in his opinion upon this point, briefly and significantly says : "The privilege of deceiving the public even " for their own benefit, is not a legitimate sub- "ject of commerce — and, at all events, if the "maxim, that he who asks equity must come 36 THE LAW OF " with pure bands, is not altogether obsolete, " the complainant has no right to invoke the " extraordinary jurisdiction of a court of equity " in favor of such a monopoly." In the case of Fetridge vs. Wells, 4 Abb. Pr. R., 144 — this doctrine was ably and most elaborately discussed by the late Chief Justice Duer, in the Superior Coui't of the city of New York. The great importance of the principle, as impos- ing the condition of truthfulness and integrity in the manufacturer, as a sine qua non to his right to protection in the trade marks for his merchandise, as well as the very thorough and instructive man- ner in which it is elucidated by this learned judge — which will be found to be characteristic of his disquisitions upon every branch of the law of trade marks that he had occasion to consider — requires something more than a mere passing notice, or brief statement of the conclusions of the court in this case. The plaintiff, it appeared, had purchased a recipe for compounding a certain cosmetic, which he had long used, under the name of " The Balm of a Thousand Flowers." The defendants commenced the manufacture and sale of a similar article, which they designated, " The Balm of Ten Thousand Flowers." TRADE MARKS. Counselloys. Noel De Payrat, durantox, Barbou, and Lexain, " On appeal — after bearing tbe conclusions " and pleadings of Paillet, Counsel for Bajou, "assisted by Dangin, bis Attorney, — Etienne "Blanc, Counsel for Compere, assisted by " Arnault, •bis Attorney, and Blot Lequesne, " Counsel for Morel, assisted by Drelon, bis " Attorney, and baving deliberated thereon, " according to law, — tbe court, seeing tbe simi- " larity, unites tbe appeals in chief and tbe " incidental appeals by Bajou and Compere, 78 THE LAW OF " from the judgment of the Tribunal of Com- " merce, of Paris, of Februar_^ 6th, 1854, and " allows the same." " As regards the appeal in chief — Adopting the " grounds of the previous judges, and consid- " ering, besides, that in the mutual intention " of the parties, at the time of the agreement of " the 1st of April, 1841, the right of placing " upon the gloves which might be manufac- " tured in the future, the stamp till then em- " ployed by Bajou, was one of the essential " ingredients of the contract. " That the stamp, being the only means of " establishing the source of the goods, and of " retaining the custom depending upon it, has " become, by force of the circumstances, an " accessory to the business transferred to Morel " — that it can, consequently, be a matter of " assignment to a second purchaser. " That the arrangements adopted by Bajou, " to make known abroad the trade that he had " commenced carrying on again, have no other " object than to take from the actual owners of " the business, a part of the benefits insured "to them." " As regards the incidental appeal — Consid- " ering that agreements between merchants " ought to be faithfully executed, that the sum " allowed Compere for damages is not sufficient "to repair the injury -v^hich he has sustained, " That it behooves, moreover, to take measures, " fitting to prevent the injury in the future, " has made and makes void the appeal and the " subject thereof — and as the damages have " only been fixed at 6,000 francs, and as inser- TRADE MARKS. 79 " tioii has not been ordered — amending as to " the same, adjudge Bajou by all legal means " to pay to Compere the sum of 10,000 francs " for damages — orders, that the judgment and " this decree be inserted at the expense of " Bajou in two French and two American " papers, at the choice of Compere. The "judgment as to the rest to take effect. " Orders the restitution of the amount depo- " sited on the incidental appeal — adjudges " Compere in the amount deposited on his " appeal. " Adjudges Bajou in the amount deposited " on his appeal, and the expenses towards all " the parties, of which the settled expenses are "as follows: Those caused by Compere 152 " francs 17c. Those caused by Morel 76 francs " 75c. — and this not comprising fees for quali- " fying, registration of original costs, and *' service of the first decree — award is made to " each as concerns him to the attorneys who " have required it, affirming that they have '' advanced the same." There seems to be no doubt, that a right acquired by transfer, to the exclusive use of trade marks by which articles of manufacture have been designated, 80 THE LAW OF and under whicli they have been bought and sold, must be predicated upon a transfer of the right to manufacture or sell the article so designated. If the plaintiff in Singleton, vs. Bolton, could have proved an exclusive right to the medicine that he compounded, by transfer from Dr. John- son, the original inventor, it is obvious, from the lanofuao-e of Lord Mansfield, that he would have been held entitled to protection in the exclusive use of the name " Dr. Johnson's Yellow Ointment." And in the later case of Perry vs. Truffit, if the complainant, who was, in fact, the possessor of the right to manufacture his compound, by purchase of the secret and recipe from Leathart, the inven- tor, had not resorted to false representations as to its origin, and no other objections had existed to his right, it is clear that Lord Langdale would not have denied the injunction. The right to protection in the exclusive use of trade marks may be acquired by operation of law, as well as by an express transfer of the right to manufacture or sell. TRADE MARKS. 81 Upon the decease or bankruptcy of the party possessed of the right, he who, thereafter, becomes lawfully entitled to carry on and continue the business, becomes thereby, vested of the right to the exclusive use of the trade marks of the business. In the case of Lewis vs. Langdon, 7 Simons, 421, the trade mark in question consisted of the name of the partnership &m. The partnership had been dissolved by the death of one of the two partners, and the business was continued by the survivor, with a new partner — and they continued the use of the old partnership name as a portion of their trade mark for their merchandise. One of the executors of the deceased partner, thereupon com- menced the same business, and also used the name of the old firm as a trade mark. On a bill filed by the survivor, with the new partner, the Vice-Chancellor (Shadwell) restrained the executor, by injunction, from the further use of the trade mark. In Croft vs. Day — 7 Beav., 84 — the facts were as follows : Two persons, the one named Day, and the other, Martin, manufactured an article of blacking, put up in bottles, to which was affixed a label with their partnership name (" Day & Mar- tin,") and their place of manufacture, (" 97 High n 82 THE LAW OP Holborn.") This was tlieii* trade mark, under which the article became extensively and favorably- known. One of the partners died, and the business was continued by the sm-vivor, who continued the use of the same trade mark. The surviving part- ner, in his turn, died — and the business was con- tinued, with the use of the same trade mark, by his executor. Thereafterwards, a nephew of the testator, the defendant in the suit, whose name was Day, associated with him, in partnersliip, a person named Martin, and established a blacking manu- factory, using the old firm name as a portion of their trade mark — and also, imitating the labels of the old firm in such a manner, as to the repre- sented place of manufacture, as to produce the impression that the new concern was connected with the old manufacture. Lord Langdale, upon these facts, ordered an injunction to issue. In Hine vs. Lart, 10 Lond. Jm'. Rep., 106, the complainant claimed a right to the exclusive use of the word "Ethiopian," with certain additions, as a trade mark — as having been acquu'ed by them- selves and a former partner deceased— as a desig- nation for black cotton stockings of their manu- facture. Objection was made, among other things, TRADE MARKS. 83 that the personal representatives of the deceased partner, should have joined in the suit. But the Vice-Chancellor (Shad well) said: " Although, it may be true that the personal " representatives of the deceased partner have " a right to use the same mark, yet the com- " plainants have sufficient right to bring for- " ward the case, whether the title is in them " alone, or jointly with the representative." In the case of Edlestone vs. Vick, 23 Eng. Law and Eq. R., 51, it appeared that one T. had pro- cured a patent for a method of making a solid- headed pin — and thereafterwards manufactured and sold the patented article, until the year 1838. Upon his packages he used a peculiar kind of pink and green label, containing the words " Pat- ented Pins, exclusively manufactured by T. & Co.," and he had procured engraved plates and blocks to be prepared, for multiplying copies of his label for use. In 1838, T. assigned his patent, together with the good will of his business, to S., who, after canying on the business, using the same trade mark, and the same character of labels, until 1839, became bankrupt. The assignees in banki'uptcy continued the business, in like manner, until 1841, when they made a sale and transfer to Edlestone the complainant — and thereafterwards, he con- 84 THE LAW OF tinned the business, using the same label and marks. The defendant, Vick, set up a manufactory of the same article, and iised an exact copy, or imita- tion of the complainant's label and marks. It was held that the exclusive right was legally vested in the complainant, by virtue of the several assignments, and of the rights lawfully possessed by the assignees in banki'uptcy, by ojDcration of the bankrupt law — and the defendant was restrained by injunction. In the case of Edlestone vs. Vick, another point arose, and was decided, which may properly be stated here, although the principle involved in it, is more directly connected with that branch of the subject before considered, relating to the legal consequences of a false representation contained in the manufacturer's trade mark. In the case before cited, of Flavel vs. Harrison, as we have seen, the court refused to extend its protection to the plaintiff, against the manifestly fraudulent practices of the defendant, because the plaintiff's trade mark, which had been invaded, contained the false representation that the tiling designated was patented. In the case of Edlestone vs. Vick, at the time of the commencement of the suit, the patent which TRADE MARKS. 85 liaci been obtained for the improved method of making sohd-headed pins, had expired, so that the label used, was no longer literally time. But the couii; held, that inasmuch as a patent had existed for the article, it was not such a fraudu- lent representation as deprived the complainant of his exclusive right to the trade mark, and his claim for protection against its invasion was not thereby forfeited. CHAPTER IV. Of the Requisite Components of Trade Marks, to entitle the manufacturer or merchant by whom they are adopted and appropriated, to protection in their exclusive use as property. The general principles resulting from almost all the cases, in which the question of the requisite characteristics of a trade mark, has been consid- ered, are, perhaps, nowhere more clearly or fully stated, than by the learned judge in the leading American case of The Amoskeag Manufacturing Company vs. Spear — 2 Sand. S. C. R, 599. 86 THE LAW OF " Every manufacturer and every mercliant "for whom goods are manufactured, has an " unquestionable right to distinguish the goods " that he manufactures or sells, by a peculiar " mark or device — in order that they may be " known as his — in the market for which he " intends them, and that he may thus secure "the profits 'that their superior repute, as his, " may be the means of gaining. " The owner of an original trade mark, has " an undoubted right to be protected in the " exclusive use of all the marks, forms or sym- " bols, that were appropriated, as designating " the true origin or ownership of tJie article or ^^ fabric to which they are affixed — but he has no " right to an exclusive use of any words, letters, " figures or symbols, ivkich have no relation to " the origin or oxvnership of the goods, but are " only meant to indicate their name or qucdity. " He has no iHght to appropriate a sign or sym- " bol, which from the nature of the fact which " it is used to signify, others may employ with " equal truth, and therefore have an equal right " to employ for the same purpose." And again, in the previously cited case of Fetridge v. Wells, the same learned judge, says : " A name can only be protected as a trade " mark, lohen it is used merely as indicating the " true origin and oionership of the cirticles offered '"'•for sale. Never — where it is used to designate " the article itself and has become by adoption " and ?^se, its proper appellation. TRADE MARKS. 87 In the case of Stokes v. Lcuidgraff, 17 Barb., 608, the Supreme Court of the State of New York, affirms the same general principles, in the following language : " The principle is well settled, that a manu- " facturer, may, by priority of appropriation, " of names, letters, marks or symbols of kind, " to distinguish his manufactures, acquire a pro- " perty therein as a trade mark, " In all cases where names, signs, marks, " brands, labels, words or devices, of any " kind, can be advantageously used to designate " the goods or property, or particidar place of " business, of a mamfacturer or a, person engaged " in trade, he may adopt and use such as he " pleases, which are adapted to that end, and have " not been before appropriated." " In respect to words, marks or devices which " do not denote the goods, or property, or particidar ^^ place of business, of a person, but only the " kind or quality of the article in which he " deals, a different rule prevails. No property " in such words or devices can be acquired." Upon a careful review of all the authorities, it will be found that the principles thus stated, have been so often expressly affirmed or tacitly recog- nized by the courts, in England and America, that they should be regarded as established elementary principles In the law of trade marks. In the application of these principles to particu- 88 THE LAW OF lar cases, no little difficulty has oftentimes arisen — and it is this, which has elicited more elaborate and learned discussion in the courts, than any other branch of the subject we are considering. If the reasons which lie at the foundation of these principles, and which constitute the true policy and pm'pose of the law, in its recognition and protection of property in trade marks, are perfectly appreciated and always kept in view, it cannot be, but that much, if not all, of the appa- rent embarrassment, in their application to actual controversies, would, of necessity, be avoided. It may not, therefore, be unprofitable, before proceed- ing to consider the several doctrines which have been engrafted upon these fundamental principles — and the cases in which they have been dis- cussed and determined, to attempt a brief state- ment of those reasons and a review of that policy. A right to do anything, or to use anything, con- nected with trade and commerce — to the exclusion of all others, is in the natm-e of a monoply — and, whatever may be the character of the right, its exclusive enjoyment, would seem to be in restraint TRADE MARKS. 89 of tliat perfect freedom, which is the Hfe of trade. Prior to the exercise of the extraordinary- powers of courts of equity, for the protection of exckisive property in trade marks, such were undoubtedly the views that were taken of these asserted rights. In 1754, Lord Hardwicke, as we have seen, in Blanchard vs. Hill, while stating that he knew of no instance in which a trader had been restrained by injunction, from using the marks of another, declared, that such an assertion and maintenance of exclusive right, would, in his opinion, be of "mischievous consequence." It is not a little singular that Lord Hardwicke, in enforcing his views, states what he obviously regards as an extreme case, but which serves as a complete illustration of the different policy which was very soon after adopted, and has ever since prevailed. He says : " An objection has been made that the defen- " dant in using this mark, prejudices the plain- " tiff, bj taking away his customers — but there " is no more weight in this than there would "be in an objection to one inn-keeper's setting " up the same sign loith another^ Nor is there. But the policy of the law as now 12 90 THE LAW OF established, resting upon reasons strictly analogous to those which lie at the foundation of the right of property in trade marks, would undoubtedly protect an inn-keeper who had given a name to his house, by which it had become known to travelers, from the assumption of the same name in the same town by another. In the case of Hoimrd vs. Henriques, 3 Sand. S. C. R., 725 — this precise question arose in the Superior Com't of the city of New York, and that very protection was unhesitatingly accorded to the plaintiff by the court, predicated upon his pos- session of exclusive rights, which Lord Hakdwicke deprecated as a mischievous restraint upon legiti- mate and honest competition. The reasons given by the learned com't in Hoivai-d vs. Henriques, for protecting the inn-keeper in the exclusive right to the use of the name adopted for his hotel, bear so close an analogy to those, upon which exclusive property in a manu- facturer's trade marks is recognized and protected — that we give the language of the opinion : "Every man," says the court, " may, and ought " to be permitted, to pursue a lawful calling " in his own way, provided he does not encroach " upon the rights of his neighbors, or the pub- " lie good. But he must not, by any deceitful " or other practice, impose upon the public — TRADE MARKS. 91 "and he must not, by dressing himself in "another man's garments, and by assuming "another man's name, endeavor to deprive " that man of his own individuality, and thus " despoil him of the gains, to which, by his " industry and skill, he is fairly entitled. To " make the application. K a man has, by close " attention to the comfort of his guests, and by " superior energy, made his hotel desirable for " the traveler, and caused its name to become "popular throughout the land, another man " ought not to be 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 belong to him alone." The case of Marsh vs. Billings, 7 Cushmg, 322, is analogous in principle to that of Hoicard vs. Henriques. In the case of Marsh vs. Billings, decided in the Supreme Court of Massachusetts, the plaintiff had entered into a contract 'with Paran Stevens, the proprietor of a public hotel in the city of Boston, called the " Revere House," by wliicli the plaintiff agreed to keep good horses and carriages at the several railroad stations, on the amval of certain trains of cars, for the carriage of passengers with their baggage to the "Revere House" — and in consideration of his doing this, Stevens agi-eed that the plaintiff's carriages, should bo employed in 92 THE LAW OF transporting travelers from the "Revere House" to such stations or elsewhere. By this contract, the plaintiff was authorized to put the name "Revere House" upon his carnages — and also a badge or label, containing that name, upon the caps of his di'ivers and porters. A similar agreement had previously been made between Stevens and the defendant Billings — but had been terminated by mutual consent, — notwith- standing which, the defendant continued the use of the words "Revere House" on his coaches, and on the badges upon his drivers' caps — and caused his di'ivers to call "Revere House" on the an-ival of a passenger ti'ain of cars at the stations, and thus divert passengers from the plaintiff's coaches to his. It was held, upon these facts, that by virtue of his subsisting agreement with the proprietors of the hotel, the plaintiff had an exclusive right to use the name "Revere House," upon his coaches, and upon the caps and persons of his drivers — for the pm'pose of indicating that he possessed the confi- dence, and was entitled to the patronage, of the house, and that the use of that name by the defendant, was a \aolation of the plaintiff's rights, by fraudulently holding himself out to be possessed of that confidence, and entitled to that patronage TRADE MARKS. 93 — and that an action would lie in such case, without proof of any special damage. The same question, upon substantially similar facts, in relation to a hotel in the city of New York, known as the " New York Hotel," came before the Superior Court, of that city, and was in like man- ner disposed of by that court. No appeal, in this case, was taken from the order allowing the injunction prayed for — and the case is not reported. Upon the same grounds, similar protection has been extended to the proprietors of places of public amusement — Christy vs. Murphy, 12 How. Pr. R., 77 — and to the publishers of newspapers and magazines. In the case of Hogg vs. Kirhy, 2 Ves., 226, Lord Eldon did not doubt that the publication, by the defendant, of what, upon its face, pm'ported to be a continuation of the magazine of the plaintiff, was such a fraud upon the good will of that periodical work, as to call for the interference of a Court of Chancery. The same doctrine was held by Vice-Chancellor Sandford in Snowden vs. A^oah, Hopkins, 347, — and by Chancellor AValworth, in Bell vs. Locke, 8 Paige, 74. 94 THE LAW OF Altliough, in the last two cases, the injunction prayed for was denied — it was upon the ground that, to entitle a" complainant, the publisher of a newspaper, the name of which has been assumed by another, to the inteqDosition of a Com-t of Chan- cery, it must appear, beyond reasonable doubt, that the name of the paper is used in such a manner, as is calculated to deceive or mislead the public, and to induce them to suppose that the paper printed by the defendant, is the same as that which was previously being published by the complainant, and thus to injm-e its chculation and patronage. (See also, Spottiswood vs. Clark, 10 Lond. Jur. Rep., 1043 — "The Family Pictorial Almanac case" — decided by Lord Cottenham.) In the case of Knott vs. Morgan, 2 Keen's Rep., 213 — the like protection was accorded by the Master of the Rolls, to the proprietors of a line of omnibuses, to restrain the defendants from running omnibuses upon the same route, having, painted upon them, the like names, words and devices, in the like colors, as those used by the plaintiffs, upon their omnibuses, with the manifest intention of obtaining a portion of the patronage which the plaintiffs had acquired — and thus by a deception TRADE MARKS. 95 of the public — invading the good will of the plain- tiff's business. The decision of the master of the Rolls (Lord Langdale), was affirmed by the Chancellor (Lord Cottenham), on appeal. No just reason can be assigned why, upon similar grounds, this salutary protection should not be extended, in like manner, to every business and occupation that is not positively immoral in its character, or vicious in its tendency. Thus, we perceive — that the modern doctrine, altogether repudiating the rigid rule of the old law, which withheld protection to property in trade marks, in the apprehension of mischievous consequences resulting from a restraint upon the freedom of trade, is founded upon the assertion that such protection directly produces and encour- ages that salutary competition, by which the best interests of the public are insured — by the stimu- lation of efforts for the attainment of excellence, in the certainty of their being met by an adequate remuneration. Firmly established as is the doctrine which rec- ognizes and protects property in trade marks, and resting, as it does, upon the soundest principles of public policy, and a just appreciation of individual 96 THE LAW OF right — it should, nevertheless, be borne in mind, that it is a doctrine which maintains the existence of a right in one, to the exclusion of all others — and therefore, is a docti'ine, which, from its very- nature, should be applied with the extremest caution, so that its application shall never involve a violation of, or departure from, the principles upon which it is founded. An incautious application of the doctrine, by which, is intended, such an application as departs from the precise purpose of the law, and the true policy which has induced its provisions — must directly and inevitably lead to a trans- gression of those limits prescribed by a just regard to personal rights and public interests — and to the creation of monopolies which are alike injurious to individuals, and prejudicial to the com- munity. Tliroughout the judicial discussions, in the nume- rous cases that are reported, and which may be said to constitute the body of the law of trade marks, whatever may have been the differences of conclusion, upon questions of application, a most perfect uniformity of sentiment will be found to prevail as to the true purpose and fundamental policy of the law. It is invariably declared that the law recog- TRADE MARKS. 97 nizes and protects an exclusive right in the use of trade marks, as property. First — That the honest, skilful and industrious manufacturer, or enterprising merchant — who has produced or brought into the market, an article of use, or consumption, that has found favor with the public — and who, by affixing to it some name, mark, device or symbol which serves to designate it as his — and to distinguish it from all others, has furnished his individual guaranty and assurance of the quality and integrity of his manufacture — shall receive the just reward of his honesty, skUl, industry or enterprise — and shall in no manner, and to no extent, be deprived of jthe same, by another — who, to that end, appropriates and applies to his productions, the same, or a colorable imita- tion of the same name, mark, device or sym- bol — so that the public are, or may be, deceived or misled, into the purchase of the productions of the one, supposing them to be those of the other. Second — That the public may be possessed of that assurance, as to the character and quality of the goods that they purchase, and that pledge or guaranty of integrity in the manufacture and the manufacturer, which, in its relation to the public, it is the duty and office of the trade mark to provide, and in no manner and to no extent, be deprived of that assurance, pledge and guaranty, by the assumption, or colorable imitation, of such trade mark by another. 13 98 THE LAW OF Whenever the question arises, whether any par- ticular name, mark, letters, device or symbol can be appropriated as property — or, rather, whether one who adopts such name, mark, letters, device or symbol, as a trade mark for his productions, is entitled to the protection of the law in its exclusive use — it is obvious that the appropriate answer must depend upon the determination of the ques- tion — whether such name, mark, letter, device or symbol, is used to designate — and does in fact, designate the article to which it is affixed, as the production of the manufacturer who has adopted it — thereby serving to identify and distinguish it from all others, as well as to fmiiish to the j)ublic that assurance of origin and ownership of the article, and that pledge of integrity in its manu- facture, which such a trade mark necessarily carries with it — or whether — on the contrary, the name, mark, letter, device or symbol, is used to denote, and does in fact, denote, nothing more than the kind, character, or quality of the article, or its name simply, or is a mere offspring of the fancy — suggesting to the mind no idea with reference to the article to which it is affixed. In the former case, it is a trade mark, which he who adopts it as such, is entitled to treat as pro- perty, and to be secured in its exclusive use. TRADE MARKS. 99 In the latter case, it is a name, mark, letter, device or symbol, wliicli, neither declaring the origin or ownership of the article, nor serving, in any manner, to distinguish it as the 2:)roduction of any particular manufacturer — one may use with equal truth and propriety as another — and there- fore, such as all must have an equal right to use, — a right that no prior appropriation can limit or impair. It follows, therefore, that a name, mark, letter, device or symbol, adopted as a designation for merchandise, must contain within itself, in some form, a distinct declaration to the public, that he who adopts it, is the manufacturer, or lawful repre- sentative of the manufacturer of the thing" desiff- nated — as a fundamental condition to the protec- tion of the law in its exclusive use, as a trade mark. Were any other name (or whatsoever constitutes the designation) than such as complies with this condition, recognized as a legitimate trade mark — and protected as exclusive proj^erty, the apprehen- sions of Lord Mansfield might be realized, and the operation of the law become as injmious, as it is now conceded to be beneficent. Such recogni- tion and protection, would almost inevitably lead to tlie creation of unjust monopolies in the sale of 100 THE LAW OF particular articles of manufacture — as exclusive, as if secured by a patent, — and more extensive, because subject to no limitation of time. The paramount importance of this branch of the subject, demands the fullest and most careful consideration. In the case of The Collins Co. vs. Cowen (before cited), the learned Vice-Chancellor (Wood) show- ing- the nicest apprehension of the true character of trade mark property — says — after repudiating the doctrine of property in an abstract name, used as a designation: " The rights of property in trade marks, " can be said to exist only, and can be tested " only, by its violation." And what is its violation 1 When A. adopts or imitates, and applies to articles of his manufacture, the name or mark pre- \dously used by B. as a designation for his pro- ductions — the wrong consists, in the sale by A. of his goods, as and for the goods of B. But if the name or mark used by B. in no manner serves to indicate the origin or ownership of his productions — and does not expressly or impliedly declare them to be his — it is obvious that A. in imitating such name upon his productions, does not represent them to be those of B. — and therefore., whatever TRADE MARKS. 101 may be the moral tm-pitude of the act of A., he has yet committed no wrong of which B. has any right to comphiin — for it is only to the extent to which A. has falsely represented, either directly or indi- rectly, that the goods which he sells are those of B. that B. is entitled to redress in damages in a court of law — or the protection by injunction of a court of equity. When, under a certain name, mark or symbol, which fails altogether to indicate the manufacturer, certain merchandise has acquired a favorable repu- tation in the market — it is the reputation of the goods — not of the manufacturer — and one who copies or imitates such a name, thereby, falsely represents that his goods are those which have acquired such reputation — not that they are those of any particular manufacturer. He does not assail the reputation of him who originally adopted the name, because, by refusing to adopt such a name as designates the merchan- dise as his, he has declined to connect his reputa- tion with it. He does not deprive him of his lawful gains — because such gains, predicated upon the trade mark, can be justly claimed by hun alone, who has given to the public an assurance and guaranty of the quality and continued integrity of his manu- 102 THE LAW OF facture, by a trade mark which discloses its true origin and ownership. Where the trade mark fails to do this, the public is as much exposed to imposition from the sale of a spurious and inferior article by the original manufacturer, as by another who has copied or imitated the name. These considerations, connected with the univer- sally conceded purpose and policy of the law, disclose the principles upon which the jurisdiction of the court is rested, in the protection of property in trade marks. A thorough and just appreciation of these principles is essential to their salutary application, in the exercise of such jurisdiction, within the limits prescribed by that purpose and policy. The simplest case of a trade mark fulfilling the condition of the law, and thereby entitling him who adopts it, to protection in its exclusive use, is, the name and address of the manufactm*er. It is precisely to the extent that any name, device or symbol, adopted as a designation for merchandise, is effectual in performing the office of the name and address of the manufacturer, that it complies with the essential requisite to the acqui- sition of an exclusive right to its use. In the large majority of the reported cases of TRADE MARKS. 103 controversies concerning trade marks, the name of the manufacturer or originator of the trade mark m question, has entered into its composition. In such cases, and so far as relates to that portion of the trade mark — and in all cases in -which the manufacturer's name and address constitute the entire designation, no question as to the right to exclusive use can arise — except in those rare instances, in which, even such name has been deceptively and fraudulently adopted — or in those still rarer cases, in which the name of the manu- facturer of the article, has, by long use, become the actual name of the thing itself — by which alone it is known — and has therefore altogether ceased to perform the office of designating the manu- factm'er. These rare exceptions of either character, serve to elucidate and enforce the rule. The case of Sykes vs. Sykes, 3 B. & C, 541, is an instance of the fraudulent use by a manufac- turer, of his own name. The plaintiff was a manufacturer of a peculiai* character of shot belt and powder flask — for which he had attempted to obtain a patent, but failed by reason of some defect in his specification or claim. As a distinguishing mark for his productions, he 104 THE LAW OF adopted and used his siu-name, with the word "patent" added— thus, " Sykes' Patent." Under this name the article became favorably known in the market, and large profits resulted from an extensive sale. (The objection, which, we have seen, was fatal to the claim of the plaintiff, in the case of Flavel vs, Harrison — namely, that the ti'ade mark adopted, implied a false representation that the article desig- nated had been patented, seems not to have been taken in this case — though, from the report of the case, it may be inferred that the contrivance of the plaintiff was original and meritorious, and only not patented because of some formal error in the appli- cation.) The name of the defendant was the same as that of the plaintiff, and he established a manufactory of the same articles, made in the same manner, and adopted his own name as a trade mark, by which he commenced their sale. As the plaintiff had no exclusive right, by pat- ent, to make and sell the article, of course, the defendant could not be restrained from doing the same — but the action was sustained, for the plain- tiff's redress, by reason of the fraudulent designa- tion adopted by the defendant. TRADE MARKS. 105 "Where a man," says the learned judge — (Abbott, C.J.,) — "has adopted a particular " mark for his goods, in order to denote that they " are manufactured hy him, an action on the case " will lie, against another, who adopts the same " mark for his goods (even though that mark " be the proper name alike of both parties), if " it be adopted for the purpose of denoting that " the goods of the defendant are manufactured "by the plaintiff — and therefore, for the pur- " pose of selling them, as and for the goods of " the plaintiff." The case of Rodgers vs. Nowill, 5 Man. Gr. & Scott, 109, presents another instance, of still more manifest fraud, in the use of the manufacturer's proper name as a designation for his productions. The plaintiffs were the well known manufac- turers of cutlery, at Sheffield, and among other articles of their manufacture, was a superior kind of pen and pocket knife, that had attained a just and extended celebrity. Upon the blade of these knives, near the handle, they caused a stamp or mark to be impressed, representing the figure of a crown, with the letters V. and E,. upon either side of it, and beneath, the words, "J. Rodgers and Sons." By this stamp or trade mark, these knives became known, and were sold in the market. The defendants were cutlers, in Sheffield, and 14 106 THE LAW OF had, in their emplojTnent, a man named "William Kodofers, whose father's name was John — and this AVilliam had two brothers in Sheffield, who were also cutlers. The defendants employed William, to manufactm-e an article of pen and pocket knife, similar in external appearance, to those made by the plaintiffs, and caused the same stamp or mark to be impressed upon them with the addition only of the word " Sheffield," to the words " J. Rodgers & Sons." It being manifest that the design of the defend- ants, was, to sell then- goods, as and for the goods of the plaintiffs, it was held that the plain- tiffs were not the less entitled to redress for, and protection against, such a wrong — because it was attempted through the instrumentality of the pro- per names of those who were the manufacturers of the simulated article. To the same effect is the case before cited, of Croft vs. Day — the plaintiff having succeeded to the exclusive rights of the original " Day & Mar- tin" — and the defendant being a descendant or relative of Day, of that firm, and having associated with him a person of the name of Martin, for the piu'pose, by the use of the actual proper names of the parties, as a designation for the blacking made TRADE MARKS. 107 by them to cause it to be believed that their man- ufactui'e was that of the oiiginal estabhshment. In this case, the fraudulent intent was made still more manifest by an imitation upon the label, affixed to the defendant's bottles, of the place of the original manufacturer — "97 High Holborn," which always appeared upon the original "Day & Martin" label The case of Burgess vs. Burgess, 17 Eng. Law & Eq. R., 257 — is an illustration of the rule we are considering — in which the circumstances were deemed to be of that character as to require a modification or limitation of the injunction granted, so as to allow the defendant the use of his own name as a portion of his trade mark. For more than forty years, it appeared, that John Burgess, the father of the defendant, Wm. Robert Burgess, had been engaged in business as an " Ital- ian Warehouseman" at 107 Strand. In 1800 he took his son, the plaintiff, into partnership — and they continued in business, as partners, at the same place, under the finn of " John Burgess & Son," until 1820, when the father died. One chief article of their manufacture, was a certain fish sauce, which they called " Essence of Anchovies," and it was sold and known in the market as " Bm-- 108 THE LAW OF gess' Essence of Anchovies" — and those words, as their trade mark, were printed on the labels which were attached to the bottles and packages contain- ing the article. The defendant, Wm. Harding Bui'gess, was a son of the plaintiff, and for many years was employed on a salary, upon the business premises of his father— 107 Strand. In 1851, he left the employment of his father, and commenced business on liis own account, at No. 36 King "William street — and manufactured and sold a fish sauce of anchovies, which he put up and marked " Burgess' Essence of Anchovies." Over his door he caused to be placed a printed sign, containing the words — "W. H. Bm-gess, late of 107 Strand" — and on each side of his door he caused to be placed a metal plate, with the follow- ing words cut or engraved thereon, " Burgess' Fish Sauce Warehouse — late of 107 Strand." Upon these facts — the learned Vice-Chancellor — (Sir R. T. Kindersley) ordered an injunction restraining the defendant from using the words "late of 107 Strand" — and also the words "Bur- gess' Fish Sauce Warehouse, late of 107 Strand" — but refused the injunction prayed for, to restrain the defendant from using the words "Bm'gess Essence of Anchovies." TRADE MAEKS. 109 The plaintiff appealed from that portion of the Vice-Chancellor's order, which denied the injunc- tion to restrain the use of the name "Burgess" as a portion of the defendant's trade mark, and on the appeal, the Vice-Chancellor's decree was affinned. Lord Justice Turner, in giving the opinion of the court, says: " It is clear, no man can have any right to " represent his goods as those of another — " but in all cases of this kind, it must be made " out that the defendant is selling his goods " as the goods of another. " When a person is selling goods under his " own name, and another person, not having " that name, is using it, it is clear that he is so " using it to represent the goods sold by him- " self as the goods of another. " But when two persons have the same name, " it does not follow, that because the defendant " sells goods under his own name, and it " happens, that the plaintiff has the same " name, he is selling his goods as the goods of " the plaintiff." The case of Thomson vs. Winchester, 19 Pick., 214 — is a singular instance, illustrating the prin- ciple upon which a manufacturer is protected in the exclusive use of his own name as a designating trade mark for his productions, by the exception of the case, in which the name, from whatever 110 ' THE LAW OF cause, lias ceased to be a designation, identifying the article as his manufacture. In the cases before cited, of Singleton vs. Bolton, and Canliam vs. Jones — we have seen that the names, " Dr. Johnson's Yellow Ointment," and " Velno's Vegetable Syi'up," were held to be no longer trade marks, to which any one could claim an exclusive right, although the proper names of the original discoverers or compounders of the articles, constituted a portion of the designation — and this, for the reason that these names had ceased to designate the manufacturers — and by long use had become the proper generic name of the articles themselves. But "Dr. Johnson" and "Velno" had then long been deceased, and no one had succeeded to any exclusive rights wliich they might once have had. The case of Thomson vs. Winchester presents a singular instance of the loss of the designating or distinguishing property of the manufacturer's own name, to indicate the origin and ownership of the article, during the lifetime and business operations of the manufacturer himself. The plaintiff was the alleged discoverer of a method of preparing or compounding certain medi- cines, possessing certain distinctive qualities and properties — which he denominated " Thomsonian TRADE MARKS. Ill Medicines." They were thus marked and labeled, upon the packages in which he caused them to be put up and sold in the market. They acquired a great celebrity, were adopted by a certain class of medical practitioners, and for many years had been very extensively sold and used. They became universally known, where used, simply as " Thomsonian Medicines." That became their proper appellation — and they had no other. No exclusive right by patent was ever obtained by Thomson, the plaintiff — so that the right to manufacture his particular preparations or com- pounds, was open to the public. The defendant prepared, and put upon the market, the same character of medicines — (though alleged to be inferior in quality to those of the plaintiff) — and in designating them, used the same name, "Thomsonian Medicines," upon the labels attached to the packages in which they were contained. The action was brought to recover damages, and to try the title to the name. It was alleged, that by the use of this name, the defendant sold his medicines as and for the genuine "Thomsonian Medicines" of the plaintiff — but 112 THE LAW OF there was no other proof of this averment than such as arose from the use of the name itself Upon these facts, it was held by the learned Chief Justice of the Supreme Com't of Massachu- setts, (Shaw) — that the jury, who rendered a verdict for the defendant in the court below, were correctly instructed — that, inasmuch as the plain- tiff possessed no exclusive right by patent, to manufacture and sell the particular medicines in question — the defendant was at liberty to manu- facture and sell the same character of compound — and that if the term "Thomsonian" had acquired a generic meaning, descriptive of a general kind, quality or class of medicines, and the defendant used it as such generic term, descriptive of the kind, quality and class of medicines that he prepared, he had a right so to do, notwithstanding it was the name of the plaintiff, and originally adopted by him to designate the medicines by him first prepared — provided, he did not sell his medi- cines, as and for those prepared by the plaintiff. The learned judge says : " In a case like this, if the plaintiff makes a " superior article, and desires to secure the " benefit of it, he must be careful so to desig- " nate and identify himself therewith, as to " save himself and the public from mistake " and imposition." TRADE MARKS. 113 These several cases of exceptions to the general rule — for the reasons which make them exceptional cases — serve to illustrate the character of the prin- ciple, upon which the general rule is based. Certainly, no name, or mark, or symbol, that can be devised, more faithfully fulfills the condition of designating the origin and ownership of the manvi- factm'ed article — than the name and address of the manufactm-er. But where this precise name has been previously adopted, and has become known as the brand or trade mark, for his produc- tions, of the particular person whose name it is — if it be used by another person, who happens to have the same name, as a designation for his pro- ductions of a similar character — it is obvious, that by reason of its previous adoption and notoriety, it altogether fails to distinguish and identify the manufacture of the second party — and, on the contrary, that such use must necessarily operate, (as, in such cases, no doubt was the design,) to produce the belief on the part of the public, that they are the productions of the first manufacturer, with whose goods it has become identified. So too, when the name of the manufacturer, by long use, and the force of circumstances, becomes the real name of the article, not only its proper and generic, but its exclusive appellation, it ceases 15 114 THE LAW OF to possess that designating quality, which is the fundamental condition of property in the name, as a trade mark. By far the greater number of reported cases of trade mark controversies, are those in which the designation in question, is composed, in part only, of the name and addi'ess of the manufacturer, the remaining portion, consisting of words, letters, forms, figm'es, names, symbols or devices, which, of themselves, in no manner indicate the origin or ownership of the article, and were not designed to do so — but are expressive of the character, kind or quality of the thing, or, it may be, the name of the thing itself, given it by the inventor or disco- verer, as a new thing — or that by which it was previously known — and in these cases, although such names, letters, figures or devices, forms or colors, do not, of themselves, point out the proprie- tor, yet they may serve as auxiliaries to that portion of the trade mark which performs this office, and become, as it were, so intimately con- nected with the trade mark, strictly so called, by TRADE MARKS. 115 mental association, that an imitation of such names, letters, figm-es, colors, forms or devices, may be quite sufficient to enable the imitator to sell his goods as and for those of the owner of the trade mark, without any use or imitation of the name or address of the proprietor, or of that which serves the like purpose. In these cases, the application of the principles which must control the determination of the ques- tion, to what extent protection can be accorded the manufactm-er or merchant, in the exclusive use of such trade mark — becomes a matter of no little difficulty and embarrassment. It is, accordingly, in these cases, that the law of trade marks has been the most elaborately dis- cussed, its true principles developed, and its purjDOse and policy defined and declared. A careful review of these authorities, properly included within that chapter of this work which treats of "the requisite components of trademarks to entitle the manufacturer to protection in their exclusive use," embraces the most important part of the labor of this treatise, and will necessarily extend this subdivision of the general subject to a much greater length than that of any other. In this review, it will be found, that the doctrines established by the authorities, are generally in 116 THE LAW OF perfect harmony with the settled principles which rest upon, and are referred to, the true purpose and policy of the law. Some of these cases have already been cited, in other connections. It will now be necessary to consider them in more detail, and at greater length. THE ENGLISH CASES. In Singleton-vs. Bolton, 3 Doug., 293 — the name claimed by the plaintiff, as against the defendant, who used it, was, " Dr. Johnson's Yellow Oint- ment." Althoug-h Dr. Johnson was the orig'inal com- pounder of the article, and when fii'st used by him, therefore, the name traly designated its origin and ownership — he had not transmitted or transferred his right, and by long use, it had become the pro- per name of the medicine. As to either party to the action, the name desig- nated the article merely — which neither had an exclusive right to make and sell — and did not TRADE MARKS. 117 denote that it was made by either the one or the other, and, there being- no evidence that the defendant sold his compound as and for that of the plaintiff, the claim of the plaintiff to an exclusive rig-lit to the use of the name, although it was in proof that he and his father before him, had used it, exclusively, for years prior to its appropriation by the defendant — was denied by a nonsuit, and the nonsuit was affirmed by the Court of King's Bench, Lord Mansfield giving the opinion. In the case of Canlmm vs. Jones, 2 Ves. & Bea., 218— the name in question was — "Velno's Vege- table Syrup." Neither party claimed any right from Velno — who fii'st compounded and named the medicine — but for a long time, the plaintiff had been the sole manufactm'er and vendor of the article, by that name. Like the name, in the case of Singleton vs. Bolton, it had become by long use, the proper appellation of the medicine, and had ceased to indicate its origin or ownership — but the plaintiff contended, that his prior occupation, entitled him to the exclusive right to use the name, and this was the sole ground of the equity set up in the bill — a demurrer to the bill was sustained, on the same 118 THE LAW OF principle which governed the King's Bench, in the case in Douglas. In the case of Terry vs. Triiffit, 6 Beav., QQ — the name used in common, by the parties, was " Medi- cated Mexican Balm," but each party used his own surname, as a prefix to the common appellation. The rights claimed by the plaintiff, as we have seen, at the previous citation of the case, were denied, upon proof of fraudulent representations on his part — but, in the opinion given by the master of the rolls, it was manifestly the conviction of the court, that no exclusive right could be acquii'ed to the use of the words in question, upon the basis of a prior adoption or appropriation — and that, unless it could be proved, aliunde, that the defendant had sold his " Medicated Mexican Balm," as and for that prepared by the plaintiff, he had invaded no right of the plaintiff — that those words, just as truly described the medicine of the one party, as they did that of the other. That " Balm " was the general, and " Mexican Balm " the specific name, and the word " Medicated " was a denotement of its quality merely. In the case of Millington vs. Fox, 3 Myl. & Cr., 313 — it appeared that the defendant was a manu- TRADE MARKS. 119 facturer of steel, which he caused to be stamped with the words "Crawley Millington" in the sup- position that those words were descriptive of that particular kind or quality of steel, and had become the proper name of the article. Had such been the fact, it is manifest from the lansruag-e of Lord Cottenham, that the case would have been disposed of, upon the principle which controlled the decisions in Douglas and Vesey 8^ Beames. But it appeared, at the hearing, that the name was that of the plaintiff, and indicated him, as the original manufactm-er of the kind or quality of steel, upon which it was stamped — and a per- petual injunction was therefore granted against the defendant. In Moirison vs. Salmon, 2 Man. & Gr., 385, the plaintiff clauned that he had prepared and sold for many years a certain medicine, put up in boxes and marked and labeled "Mon-ison's Universal Medicine," and that under this name the medicine had acquired a great reputation, with the public — and that the name identified and distinguished it, as his manufactm-e. The defendant prepared and sold a medicine, which he put up and marked and labeled in a similar manner — using the same name. 120 THE LAW OF The name had not become generic — and the manifest intent of the defendant was to pass off his medicine, as that prepared by the plaintiff. A motion in aiTest of judgment, upon a verdict for the plaintiff, was denied. The case of Day vs. Binning, 1 Coop. Ch. E., 489, was another case, growing out of the alleged exclusive right of the plaintiff to the use of the words or name "Day & Martin," and "97 High Holborn" as a designation for the article of blacking. It was disposed of, by an application of the principles recognized in the preceding cases — as was also the case of Croft vs. Day, 7 Bea., 84, brought to maintain the same alleged exclusive rights, and before cited. In the case of Gout vs. Aleplogu, 6 Bea., 69, and 1 Chitty's Gen. Pr., 721 — it appeared, that the plaintiff, Gout, was the manufacturer of watches, which he sent to the Turkish market, where they had acquired a high reputation. They had become known •by the names and devices which he caused to be engraved upon them. These consisted of the name of Gout, in Turkish characters— and the Turkish word Pessendede, TRADE MAEKS. 121 which signifies warranted or approved. In addition to these were the plaintiff's initials R. G., and a crescent in relief — as also a sprig and crescent. The defendant procured one Parkinson, to mannfactui'e watches for him, and caused to he engraved upon them, in the same place where the marks of the plaintiff were engraved upon his watches, the words — Ralph Gout — and Pessendede, in Tui'kish characters, and consigned them to Con- stantinople — where they were sold as and for the watches of the plaintiff. An injunction was granted by the Vice-Chancellor, (Shadwell,) restraining Aleplogu from causing to be made, and consigned to Constantinople, and Parkinson from manu- facturing, watches — with the name of the plaintiff upon them, in any form — or any of the words or devices used by him upon his watches. Of a similar character is the case of Ransome vs. Bentall, 3 Law Jour. Rep., N. S., 161. The parties were manufactm-ers of ploughs — and those of the plaintiff having acquired celebrity, and being distinguished as his, by the stamp of his name, and other marks, upon them, the defend- ant stamped an imitation of the plaintiff's marks upon his plows, with the design to pass them off as the manufacture of the plaintiff. He was restrained by injunction. IG 122 THE LAW OF To the same effect, were the recent cases of The Collins Co. vs. Broion and The Collins Co. vs. Cowen — 3 Kay and Johns., 423 and 428 — the plaintiffs being manufacturers of edge tools at Hartford in the State of Connecticut, upon which they stamped their firm name with other marks of designation — and sent them for sale in the English and other European markets. The defendants manufactured the same character of edge tools in England — and stamped them with the same name and mark — and sent them to the same markets in which the productions of the plaintiff had acquu'ed celebrity. The Vice-Chancellor ("Wood), in an opinion to which we have already alluded, and to which we shall have occasion again to refer, ordered an injunction to issue, against the defendants. See also — Welch vs. Knott — 4 Kay & Johns., 747 ; Crawshay vs. Thompson — 4 Man & Gr., 367; Pierce vs. Franks — 10 Lond. Ju. Rep., 25; Hine vs. Lart — 10 Lond. Ju. Rep., 106 ; Blofield vs. Paine — 4 Barn. & Adol., 410. TRADE MAEKS. 123 THE AMERICAN CASES. A review of tlie American authorities, in wliicli the question has arisen, as to what may be lawfully appropriated to exclusive use, as a trade mark, and as such, become entitled to protection, demands a large space in the pages of a treatise which is designed as an analysis and digest of the law. The reports of the judicial discussions in these cases, are full and elaborate — and the student who seeks to become acquainted with the principles and policy of the law of trade marks, will freely acknowledge his paramount indebtedness to the learned disquisitions of the American judges — and chiefly to those of the State of New York, in whose com*ts, the most important cases have arisen. We are not aware that any case in the American books, will be found, of an earlier date than 1844. In that year, the controversy arose, growing out of the alleged piracies committed by various parties in the United States, upon the rights of John and William Taylor, manufacturers, in England, of a kind of thread, which they denominated " Taylor's Persian Thread," and for the sale of which, to 124 THE LAW OP wholesale dealers, tliey had established agencies at New York, Boston, Philadelphia and New Orleans. "We have already had occasion to cite the several cases in this litigation, in the Court of Chancery — and in the Court of Errors of New York — and in the Chcuit Court of the United States in Massa- chusetts. In these cases, the general and fundamental principles of the law, are fully considered and maintained — but they did not involve the particu- lar question, of what may, and what may not, be appropriated as a trade mark — or, what must be the characteristics of a designation for merchandise, to entitle the manufactm^er to protection in its exclusive use. The same may be said of the case of Coates vs. Holhrook — 2 Sand. Ch. R., 586 — which occurred in the succeeding year. This also was a spool cotton tln-ead case, the plaintiffs being manufac- turers at Paisley, in Scotland, and the defendants, agents of one Malcolm McGregor, of Newark, in New Jersey, who manufactured a simulated article of cotton thread, and passed it off as the manufac- tm'e of the plaintiffs, by an imitation, or rather an exact copy, of their trade mark, in a manner (to use the language of the Vice-Chancellor) "too barefaced to be questioned." TRADE MARKS. 125 The profession is gi-eatly indebted to the learned Vice-Chancellor (Sandford) for an elaborate note appended to his report of this case — which is thus introduced : '' The great importance of the subject of trade " marks and symbols, and the growing interest " which it has excited, have induced the author " to collect, in a note, at the end of this case, " the recent authorities relative to this branch " of the law, both here and in EngLand. Since " the decision of Coates vs. Holbrooke the case " of Taylor vs. Carj)enter, cited in the opinion " of the Court, has been decided, on an ajjpeal " from the Chancellor's decree, in our court of " last resort, so that several of the propositions " held in the case of Coates, are now definitively " settled in this state." " The great interest felt in these questions, " by the manufacturing and commercial world, " is illustrated by the fact, that the judgment " of the Assistant Vice-Chancellor, in Coates vs. " Holbrooke was noticed at some length, in the " London Times, soon after it was pronounced, "and was stated at large, in the Liverpool " newspapers." The only American case, besides that of Taylor vs. Carpenter, included in the note of the learned Assistant Vice-Chancellor — or which had then arisen — is that of Partridge vs. Menck — which we have before cited. 126 THE LAW OF The subsequent cases — we must now proceed to review — and that review will comprise, of neces- sity, the greater portion of our remaining pages. The first and leading case, and that which deserves the most careful consideration, is — The Amoskeag Manufacturing Company vs. Spea?; 2 Sand. Sup. Ct. R, 599. The plaintiffs were a corporation, engaged in the manufactm-e of cotton goods — at Amoskeag Falls, in the State of New Hampshire. The principal article made by them, was a kind of cloth, called "tickings," and by much care and skill, and at great expense, they had brought this article to such a state of perfection, that the best quality had obtained a high reputation tliroughout the country. For many years prior to the commencement of the action, they had used a printed label, affixed to the outside of each piece of ticking of the first quality made by them, for the pm-pose of desig- nating it as such — and this label, contained the separate letters, in large conspicuous capitals, A. C A. — so that this quality of tickings, of their manufactm-e, became commonly known in the trade, as the " A. C. A. tickings." The entire label, consisted of the following words, and letters, and thus stamped — TRADE MARKS. 127 " Amoskeag Manufacturing Company. Power Loom. •Yds.— A. C. A. Amoskeag Falls, N. H." The words were printed in red colors — the label had a fancy border — square externally and ellipti- cal within — and the words contained in the upper and lower lines of the label, were printed in a line corresponding with the interior curve of the border. It was averred by the plaintiffs that the letters "A. C. A." were intended to denote, as follows — "A. C," Amoskeag Company — and "A" first quality. The defendants were extensive dealers in domes- tic goods, and among others, in an article of ticking, manufactured at Lowell, in Massachusetts. To this, they caused to be affixed, a label, and the same had been used by them for five years before the action was brought, corresponding with that of the plain- tiffs in size, color, fancy border, position, general arrangement and size of the letters — and also, containing in large capitals — the letters "A. C. A." The words of the defendants were, as follows, and thus arranged. " Lowell Premium Tickings. Power Loom. Yds.— A. C. A. Wari'anted Indigo Blue^ 128 THE LAW OF It was averred, that notwithstanding the dijffer- ence in the words of the- defendants' label — its imitation of the plaintiffs was so close, and its general resemblance so perfect — that, by means of their label, the defendants had sold, and were then selling, then' tickings, as and for the genuine tickings of the plaintiffs' manufacture — to the great injury of the plaintiffs' reputation, as well as to their pecuniary damage. A preliminary injunction was granted, restraining the defendants, according to the prayer of the complaint, from using on their tickings, any label, such as that which they had used — or any label, similar to the plaintiffs, or an imitation of it — or having thereon, the letters " A. C. A^ The answer of the defendants denied that the let- ters "A. C. A." in the plaintiffs' label, were used to denote, or were understood by the trade, to denote, "Amoskeag Company" and "fii'st quahty" — but that they referred, altogether, to the quality of the tickings — and it denied that the plaintiffs' tickings were known as the "A. C. A. tickings," without the addition of the name or place of manufac- ture, — but that they were known as the " Amos- keag A. C. A. tickings," — and that they were known as the "Amoskeag A. C. A. tickings," — in TRADE MARKS. 129 like manner as their OAvn were known as the "Lowell Premium, A. C. A. tickings." The answer also averred, that all manufactm-ers of tickings, used letters to denote the different qualities, and that, in every case, the name of the maker, or place of manufactm*e, was added, to enable the public to distinguish between articles of similar quality, made by different manufactm'ers. The answer also denied that the use of the defendants' label was intended to enable them to sell their tickings, as those manufactured by the plaintiffs — or that it had produced that result, — and admitting that they had sold their tickings, as the genuine "A. C. A. tickings," they aven-ed, that it was always with the designation that they were "Lowell," and not "Amoskeag," tickings. Upon these facts and averments, two questions arose : First. As to the defendants' imitation of the plaintiffs' trade mark, otherwise than by the use of the letters "A. C. A." and Second. As to the use of those letters. In relation to the first question, the following is stated as the conclusion of law of the court : " That an injunction ought to be granted, " whenever the design of a person who imitates " a trade mark — his design, either apparent or 17 130 THE LAW OF proved, — is to impose his own goods upon the pubhc, as those of the owner of the mark — and the imitation is such that the success of the design is a probable or even a possible consequence — and that an injunction must be granted whenever the public is in fact misled, whether intentionally or otherwise, by the imitation or adoption of marks, forms or symbols, luhich the party loho first employed them^ had a right to appropriate.^'' Enforcing' the great importance of the qualifica- tion of this proposition, contained in the last words, italicised — the court directly proceeds to say : " It must not, however, be inferred from these remarks, that an injunction ought to be granted whenever there exists such a resem- blance between trade marks, as may induce a belief in the mind of the public, that they belong to, and designate the goods of, the same trader or manufacturer." "It is not enough that the public may be misled, or has been misled, — as already inti- mated, the resemblance must arise from the imitation or adoption, of those words, marks or signs, which the person who first employed them, had a right to appropriate, as indicating the true origin or ownership of the article or fabric to which they are attached — and the resemblance, where it induces error, and gives a title to relief, must amount to a false representation, express or implied, designed or accidental — of the same fact. A trade mark is frequently designed to convey infor- TRADE MARKS. 131 " mation as to several distinct and independent " facts — and tlierefore, contains separate words, "marks or signs, applicable to eacli — thus " indicating, not only the origin or ownership " of the article or fabric to which it is attached, " but also its appropriate name, the mode or " process of its manufacture, and its peculiar or " relative quality. "It is certain, however, that the use, by " another manufacturer, of the words or signs, " indicative only of these circumstances, may " yet have the effect of misleading the public, "as to the true origin of the goods. But it " would be unreasonable to suppose that he is " therefore precluded from using them, as an " expression of the facts which they really " signify, and which may be just as true in " relation to his goods, as to those of another. " Purchasers may be deceived. They may " buy the goods of one person as those of ano- " ther ; but they are not deceived by a false " representation. They are deceived because " certain words or signs suggest a meaning to " their minds, which they do not in reality bear, " and were not intended to convey." Applying these principles to the facts of the case, as presented, the question was — whether the defendants had imitated that portion of the plain- tiffs' trade mark, which they liad a right to appro- priate, for the purpose of securing their title as manufacturers, namely, those parts that served to indicate the tme origin and ownership of the 132 THE LAW OF fabric — being all of tlie label, excepting the letters «A. C. A." Upon this the court says : " Upon comparing the original trade mark " of the plaintiffs, with that used by the "defendants, I fmd it impossible to doubt — " tliat the latter is a designed, elaborate, imita- " tion of the former. They are the same in " form, size and color. It is only on a very " close inspection, that the ornamental border " can be at all distinguished. " The variations in the words, scarcely impair- " ing, are quite insufficient to destroy, a general. " resemblance, that was calculated to deceive " the public, and by which, the evidence is " abundant and conclusive, to show that many " dealers have been, in fact, deceived. " I cannot escape from the conviction, that the " real motive of the defendants, was, an " expectation of the benefits to result to them- " selves, from the error of purchasers, and from "the imposition upon purchasers, that subordi- " nate dealers would be tempted and enabled " to practise." It was urged by the defendants, that the substi- tution in their label of the words — "Lowell Pre- mium Tickings" for those of "Amoskeag Manu- factm^ing Company" in that of the plaintiffs, provided an effectual security against the imposition of dealers and the mistakes of pm*chasers — but the court says: TRADE MARKS. 133 "I cannot tliink so — I cannot think that " this security is provided — for, not only may " the substituted words, as is proved to have *' been the case, from their position, wholly " escape the attention of the purchasers, but " when read, they may not have the effect of " altering the belief that the general resemblance " of the labels is calculated to produce. The " words are exceedingly ambiguous. They are " not a declaration that the tickings are not " manufactured by the plaintiffs, but are " entirely consistent with the supposition that " they are." Thus the first question is disposed of by the court — and the injunction is retained as to every portion of the defendant's label — except as to the letters " A. C. A'' or a colorable imitation thereof. The second question, namely, that of the alleged right of the plaintiffs to appropriate those letters in their trade mark, so as to entitle them to protection in their exclusive use, — was, practically — the important question in the case. Applying the principles before enunciated, to the consideration of the question, its determination as the court says, " Must depend upon the fact, whether the " plaintiffs have shown an exclusive right to " the use of these letters, upon their own " tickings — as declaratory of their right as man- " u/adurers. If they have, the prohibition must 134 THE LAW OF " be retained— but if the letters "A. C. A.," " are merely indicative of the relative quality " of their tickings, it must be expunged. As " the plaintiffs could not have acquired by " their prior occupation, an exclusive right in " the use of the words "first quality" or "super- " fine," they cannot have acquired a right by " similar means to an exclusive use of any " letters, marks or other signs, which are " merely a substitute for the words, and " intended to convey the same meaning. It is " immaterial whether words, letters or figures, " or any other signs, are used, if the single " fact which they are used to indicate or " declare, is a truth that other manufacturers " or dealers have an equal right to express and " communicate." Upon this question of fact, the Court then pro- ceeds to review the evidence, and arrives at the conclusion, the correctness of wliicli cannot be doubted, that the letters "A. C. A." were used to designate the best quality of tickings — that it was such purpose which they answered, and no other. The Cornet then says : " It is doubtless true, as stated in the com- " plaint, and sworn in many of the affidavits, " that the tickings of the plaintiff, to which " the letters " A. C. A." in their label, are " attached — have, for many years, been known " in the market as the " A. C. A. tickings " — " but this fiict, neither alters the meaning of "the letters, nor takes from others the right to TRADE MARKS. 135 " employ tbein. If the letters designate only " the quality of the goods, and not their origin " or ownership —the tickings of the defendants, " if the best quality of those which they "sell— are, as truly "A. C. A. tickings" as " those of the plaintiffs." And the court thereupon dissolved that portion of the injunction which restrained the defendants from using the letters "A. C. A." in their labels. The principles laid down by the learned court in this case, may be regarded as established. It is true that a partial dissent from some of the conclusions, has been expressed by a learned judge of the same court, in a subsequent case, to which we shall have occasion to refer — yet they have been repeatedly recognized and affirmed in subse- quent decisions, of the same, of co-ordinate, and of appellate tribunals — and have never, as we are aware, been contravened or departed from, in any case, involving circumstances requiring their rejec- tion or application. Portions of the language made use of by the learned judge, in his elaborate disquisition, have been criticised, as inconsistent witli some of the conclusions — but we believe it will be found, upon a more careful study of the phraseology, that such appearance of hiconsistency, results from an inat- tention to, or an imperfect appreciation of, the 136 THE LAW OF force and sig-nificancy of the qualifying terms, with which the language in question is always con- nected. The principles which we consider justly dedu- cible from this leading authority, may thus be stated : First — That a trade mark, adopted by a manufac- turer or merchant, for his goods, to be clothed with the attributes of property, entitling the appropriator to protection in its exclusive use, must, by word, letter, sign, figure or symbol, designate the true origin or ownership of the m goods. /Second — That where a trade mark is violated, the essence of the wrong done, consists in the sale of the goods of one manufacturer, as and for the goods of another — and therefore, that such violation can only be predicated of a copy or imitation of a trade mark, or those portions of a trade mark which truly designate the origin or ownership of the goods. Third — That a similarity between two trade marks, used by different manufacturers for their goods, although of such a character as to induce a belief in the mind of the public, that they belong to, and designate the goods of the same manu- facturer or trader — is not, of itself, sufficient ground for a prohibition of the use of such trade mark, by him who did not first adopt it. That similarity, to entitle the originator to the protection of the law, must be such as to amount to a false representation, not alone, that TRADE MARKS. 137 the two articles have the same origin, but that the goods to which the simulated mark is attached, are the manufacture of him who first appropriated the trade mark. Fourth — That although, by the long continued use P Lt ^^ certain words, letters, marks or symbols, ^HtOA^ ^ r^^ which do not, of themselves, and were not J I A designed to indicate the origin or ownership K^CKjr ^ y»- ' ^£ ^j^g goods to which they are affixed — the •7 a^A^i-c^ " ^^ — goods so marked, and because so marked, have ,x J. -.■»-,'•'' become known as those of the manufacturer who first used them, such fact cannot alter the ■\i "!'^^^*-*^^^o *^^ name of the thing, or its general ^ (^^La^IShu ^^ relative quality, or take from others, the •y / /* A/~^'^^^^ ^'^ employ them in the same sense. "*" ^"^^ *' ^ Fifth — That a violation of a trade mark, consisting ' Ci'^ ^^-if-f*^^ ty. f^ q£ ^ IVj^Igg declaration, by a copy or imitation of i^eUxi-r those parts of the trade mark imitated, which indicate the true ori2;in or manufacture of the goods — it is not essential to the interposition of judicial restraint, that the imitation should be exact or perfect. Though a limited and partial imitation, containing variations, that a comparison with the original would instantly disclose — it may yet be manifest, that a resem- blance exists, which was designed to mislead, and which has actually misled, the public, or probably, or even possibly, may do so, in that particular which constitutes the wrong. Sixth — That the name and address of the manufac- turer, used by him as a trade mark, may have 18 138 THE LAW OF added to, and connected with it, some peculiar device, vignette, emblem, symbols, forms or figures, adopted as auxiliaries to the name and address, in declaring the true origin and own- ership of the merchandize — an d_ a wrongful viohition of _such a trade mark, may be accom- plished, even though the name of the original manufacturer be omitted, and that of the imita- tor be substituted — bxsuch an imitation of the f 1 peculiar device, vignette, emblem, symbol, 7'vWf(MW form, color or figure, alone, as indicates a j>r urr*^ design, and is calculated to, mislead and deceive the public, as to the true origin and ownership of the goods. Seventh — That a silent acquiescence by the manu- facturer, though for five years' continuance, in , an unlawful violation of his trade mark, by ' another, cannot operate as a surrender of his exclusive rights. That although the consent of the manufactu- rer may be inferred, from his knowledge and silence, yet that such consent, whether express or implied, when purely gratuitous, may be, at any time withdrawn — and when implied by silence, terminates when the silence terminates — it being no more, in fact, than a license, revocable at will. TRADE MARKS. 139 [The statement that the principles of law deduci- ble from the case of The Amoskeag Manufacturing Company vs. Spear, have been recognized and affirmed by subsequent American decisions, should have been qualified, by the exception of the seventh and last conclusion of law, in the order in which are above stated. We are not aware that the principle involved in that conclusion has arisen in any other American case, and it is certainly not in accordance with the English authorities. A silent acquiescence in the use or imitation of his trade mark by another — even for a period of three or four months, his knowledge being proved or conceded, was deemed by the Chancellor, in the case of Flavel vs. Harrison, (19 Eng. Law and Eq. Rep., 15) — sufficient ground for withholding equi- table relief to the manufacturer, until the establish- ment of his legal title. It is quite manifest, that the long acquiescent use by a manufacturer, of the trade mark of another, may, and indeed must, inevitably result in utterly depriving the trade mark in question, of its office of designating the merchandise as that of the origi- nal manufacturer. When it ceases to serve this purpose, surely he who was at first a wrongful 140 THE LAW OF simulator, cannot be said to be longer guilty of tlie wrong, wliicli consists in passing off bis goods as and for tbose of tbe original owner of tlie trade mark — and this being the sole ground upon which a claim of right to exclusive use can be maintained, to allow such claim, after such acquiescence, with such consequent result, would seem to be incon- sistent with the purpose and policy of the law.] In the case of Stokes vs. Landgraff, 17 Barb., 608, decided at a special term of the Supreme Com-t of New York, and subsequently affirmed by a full bench, the leading principles involved in the case of The Amoskeag Manufacturing Comimny vs. Spear, came directly under consideration — and the decision was, in all respects an affirmance of, and in accordance with, those principles. The plaintiffs were glass manufactm-ers, at Clyde village, in the town of Galen, and county of Wayne, in the State of New York. The defendants were glass manufactm-ers at Cleveland, in the county of Oswego. Upon the boxes and packages containing the glass, manufactured by the plaintiffs, they branded TRADE MAEKS. 141 or stamped, in addition to their name and place of manufactm-e, one of the several words, following: "Galen," "Lake," "Clyde," "Cylinder," "Wayne," "New York," — and the plaintiffs aven-ed in their complaint, that these words were adopted and used, by their predecessors and by themselves, to desig- nate the several qualities of the glass manufactured by them — (that is to say, " Galen," to denote the first quality, " Lake," the second, " Cylinder," the thu-d, " AVayne," the fourth, &c.,) and to distinguish the glass, manufactured by the plaintiffs, from that manufactured hy other persons, or at other manufac- tories. The complaint fmiher averred, that the defend- ants manufactured window glass of an inferior quality and value to that manufactured by the plaintiffs, and caused the same to be put up in boxes and packages, which they marked or branded with one or other of the same words used by the plaintiffs, and " with intent to cause it to be believed by purchasers, builders and the public, that such glass was manufactured at the glass works belong- ing to the plaintiffs, and to enable the defendants to sell their glass as and for the manufacture of the plaintiffs." The answer of the defendants, while admitting the use by them, upon their boxes and packages 142 THE LAW OF of glass, of the same words used by the plaintiffs, denied that those words were used by the plaintiffs, '^ to distinguish the glass manufactured hy them, from that manufactured hy other persons, or at other manu- factories''' and averred that they were used by the plaintiffs and defendants alike, solely to distinguish the several qualities of their glass. Annexed to the answer, were copies of the several marks and brands used by the plaintiffs and defendants — from which, it appeared that the entire label or mark in each, consisted of — 1st, the name of the manufacturer, 2d, the place of manu- facture, 3d, the name or word denoting the relative quality, 4th, the size and 5th, the quantity of glass contained in the box or package. Thus, the plaintiff's — " Stokes — Clyde, Cylinder 8X12 — 50 feet" or "Stokes, Clyde, Galen— 8X12 50 feet "—and Thus, the defendant's — " Landgraffs — Galen, 8X12, 50 feet" or Landgraffs, Cylinder, 8X12, 50 feet. It appeared by the evidence, at the hearing, that it was the practise of manufacturers of glass, to designate the several qualities by names similar to those used by the parties in this case, and not by words, or figures, expressing, in terms, the relative qualities. TRADE MARKS. 143 Upon the material issue made by the averment of the complaint and denial of the answer, that the words in question were used to designate the particular manufacture of the plaintiffs, and to dis- tinguish it from all others, the conclusion of fact upon the evidence, is thus stated by the court — that, " The employment of those words is simply " to denote quality, and that dealers in glass " must so understand it." The conclusions of law as presented in the case of ''The Amoskeag Manufacturing Comimny in Spear " and the other cases cited by the comi;, are then affirmed, as applicable to the facts, and are thus clearly stated : " The principle is well settled, that a manu- " facturermay, by priority of appropriation of " names, letters, marks or symbols of any kind, " to distinguish his manfacture, acquire a pro- " perty therein, as a trade mark — for the inva- " sion of which an action for damages will lie, " and in the exclusive use of which, he may " have protection, when necessary, by injunc- " tion, " The wrong, in such a case, for which those " remedies are given, consists in misrepresenting " to the public, by the use of that trade mark, *' goods or wares of another person, as having " been manufactured by the true 2''i'oprietor of ^Uliat mark — and thereby depriving him, to a 144 THE LAW OF " greater or less extent, of the benefit of tlie " good will of his establishment, and the repu- " tation of his articles. The same principle " extends to all branches of business, where the " like reason for its application exists. " In all cases, where names, signs, marks, " brands, labels, words or devices, of any kind, " can be advantageously used, to designate the ^^ goods or loroperty^ or particular place of business ^^ of a person^ engaged in trade or manufacture, "or any similar business, he may adopt and " use such as he pleases, which are adapted to " that end, and have not been before appropri- " ated, and no other person, can lawfully " imitate them, and by that means, sell his own " goods or property, or carry on his business, " as the goods, property or business of the " former. " In respect to words, marks or devices, " which do not denote the goods or property, or '■'■ particular place of business of a person, but " only the nature, kind or quality, of the article " in which he deals, a different rule prevails — " no property in such words marks or devices " can be acquired. There is, obviously, no " good reason why one person should have " any better right to use them than another. " They may be used by many different persons, " at the same time, in their brands, marks or " labels, on their respective goods, with perfect " truth and fairness. They signify nothing, " when fairly interpreted, by which any dealer " in a similar article could be defrauded. It is " possible that consumers of glass may, to some *' extent, be led to believe, by the use of the " words in the defendant's marks or brands, TRADE MARKS. 145 that the boxes or packages upon which those marks or brands appear, contain glass, manu- fjicturecl at the plaintiff's factory — but a similar deception, might be produced, by the use by both parties — of any words, repre- senting quality merely. "If an impression is derived from the words which was not intended to be made by them, and different from their natural meaning, and injury thereby results, it must be attributed, solely, to the practise referred to, in designat- ing qualities, by which the true qualities must necessarily, to a considerable extent, be concealed from the consumers." Upon those conclusions of fact and of law — the injunction against the defendants was dissolved. The case of Clark vs. Clark, 25 Barb., 76, illus- trates the principle that an imitation solely, of tlie devices and their arrangement, which are used in connection witli the name and address of the manu- facturer — where the proper name and address of the imitating manufacturer are substituted for those contained in the original ti*ade mark, may yet be such a fraudulent representation that the goods of the one are in fact the manufactm^e of the other, as to amount to an invasion of the right of pro- 19 146 THE LAW OF perty in the original proprietor, and demand the protection of the law. The plaintiffs were manufacturers of cotton thread at Glasgow, Scotland. This thread was wound upon wooden spools, on the ends of which they affixed their labels. This label was adopted by them as their trade mark and had been so used since 1843. The label consisted of fom' concentric circles — the inner one of gold — the next of silver — the third, black, with gold letters, and the fomlh, of silver — and the whole was encircled by two con- centric black lines. In the inner circle, was the number of the cot- ton — in the next, were the name, and address, of the manufacturers — thus, "J. Clark, Jr., & Co., Mile End, Glasgow," the name being at the top, and the address being at the bottom. In the next cu'cle, were the words "Six Cord Cabled Tln'ead — warr'd 200 yards" — and, in the outer circle, were the words "Sole Agent, Wm. WheeMght, New York." The defendants were manufactm^ers of the same article at Seed Hill, Paisley, in Scotland — mider the firm of J. & J. Clark & Co., and George Clark, one of the defendants, was then* agent in New York. The label used by them, on their spools of TRADE MARKS. 147 cotton tlu'ead, consisted of tlie same number of concentric circles, in the same colors, aiTanged in the same order, with the same letters in black and ofold — the same number for the inner circle — their own name and addi'ess in the next circle, thus, — "Clai-k & Co., Seed Hill, Paisley." The name at the top, and the address, below — the same words, "Six Cord Cabled Thread— warr'd 200 yards" in the next circle, precisely as in the plaintiffs — black ground with gold letters — and in the next circle the words — "Sole Agent, George Clark, New York." Upon these facts, the court say, that it was the evident design of the defendants so to prepare their trade mark, that all but the most cautious customers would be misled — and even such as knew that Wheelright had been the agent of the plaintiffs, might naturally suppose that George Clark had been substituted in his place ; that the firm name of the original manufacturers had been changed, and that they either had two places of manufac- ture, or had removed from Glasgow to Paisley. " Ownership in his trade mark is allowed to " the manuflicturer," say the court, " that he " may have the exckTsive benefit of the repu- " tation which his skill has given, to articles " made by him — and that no other person may 148 THE LAW OF " be able to sell to the jpublic as his, that lohich is " not his.'' " An imitcation of his mark, witli partial " differences, such as tbe public would not " observe, does him tbc same harm as the entire " counterfeit. " If the wholesale purchaser most conversant " with the marks, is not misled, but the small " retailer or consumer is, the injury is the same " in law, and differing only in degree. " A right of action must exist for the last, as " well as for the first. " If all consumers do not discriminate, it " would be indifferent, even to the wholesale " buyers, from which of the two they bought — " and thus, the extent, also, of the injury, would " be as great as if they, also, were deceived." In accordance with these conckisions, an injunc- tion was ordered — and the decree of the special term was affirmed, on appeal, by the full bench. The case of The Brooklyn White Lead Coinpany vs. Masury, 25 Barb., 416 — decided in the same court — illustrates the principle applied to the case of a fraudulent imitation of a trade mark, accom- plished by a false representation of the name of the imitating manufactm-er. TRADE MARKS. 149 The plaintiffs were, and had been for more than twenty years, manufacturers of white lead, at Brooklyn, in the State of New York. They had a store in the city of New York. As a mark or brand upon the kegs containing the white lead of their manufacture, they used their name, " Brooklyn White Lead Company," with the additional words, " premium lead, warranted pure." The defendant was a manufacturer of white lead, also, at Brooklyn, and having a store in New York city. He first used as his mark or brand upon his kegs, the words, " Brooklyn White Lead, pure, 100 lbs" — without connecting his name with the brand. To this, no objection was made by the plaintiffs, for the reason, that as each party made white lead — and each made it, also, at Brooklyn, they had an equal right to declare these facts by the use of the words, " Brooklyn White Lead," in their trade mark. After some time, however, the defendant added the word "Company" to the words before used, when, in fact, the lead of his manufactm-e was not made by a " Company," and there was no other " Company " in Brooklyn, for the manufacture of white lead, than that of the plaintiffs — which was properly designated by the name used in their trade mark, " Brooklyn White Lead Company." 150 THE LAW OF This, with extrinsic evidence, rendered it quite manifest, that the defendant had added the word " Company " to his trade mark, for the sole purpose of misleading purchasers, and inducing the belief that the lead contained in his kegs, was manufac- tured by the plaintiffs — the "Brooklyn White Lead Company." The court says : " With any, but the most cautious pur- " chasers, such would be the effect of the use " of that word in the defendant's trade mark. " The law of trade marks protects manufac- " turers, in their exclusive right to sell their " goods, as well to incautious as to cautious " purchasers — and anj false name, assumed in " imitation of that of the original manufacturer, " is a violation of his exclusive right, and its " use should be restrained by injunction." An injunction was accordingly ordered, restrain- ing the use, by the defendant, of the words " Com- pany," or the abbreviation " Co.," in the trade mark used by him, upon the kegs containing white lead of his manufacture. TRADE MARKS. 151 The case of Fetridge vs. Wells, 4 Abb., 144, also reported in 13 How. Pr. R., 385 — and to which we have ah'eady had occasion to refer, as illustrating the doctrine upon which the protection of the law is withheld from a fraudulent manufactui'er, even against the deceptive and manifestly wrongful contrivances of another — is also significant, as an authority enforcing the principles now under con- sideration. In this case, a preliminary injunction was granted, by which the defendants were restrained from " Selling or offering for sale, directly or indirectly, any preparation or compound, manufactared by them, or by either of them, or by any other person than the plaintiff — under the name of 'Balm of Thousand Flowers' — or selling, or offering for sale any preparation, or compound, having printed, painted, written or stamped, on the bottles, containing the same, the words 'Balm of Thousand Flowers,' or having or using, any label or wrapper, printing or device, in such manner as to be a colorable imitation of those used by the plaintiffs." On the motion to dissolve the injunction, the case came before the same learned judge (afterwards 152 THE LAW OF Chief Justice) Duer — of the Superior Court of the city of New York, to whose vahiable analysis and elaborate elucidation of the elementary prin- ciples in the law of trade marks, in the case of " The Amoskeag Mamifacturing Company vs. Spear!' the profession is so largely indebted. Upon the question of fact, as to the imitation by the defendants, of the plaintiffs' trade mark, the learned judge, says, " Without rejecting tlie evidence of my " senses, I cannot doubt that the label or trade " mark which the defendants admit that they " use, from its general resemblance to that of " the plaintiff, and his firm, is well calculated " to mislead the public, by inducing the belief " that the articles to which it is afl^ed, are, in " reality, prepared or manufactured by the " plaintiffs' firm — nor, can I doubt, that the " label was framed, with this design, since the " imitation is so close, minute and exact, as in " my opinion, to exclude the supposition of " any other motive. " It is true, that the name of E. H. Eice, as " the proprietor, is printed on the label, but it "is so printed, as not to attract, but almost " certainly to elude, observation. A variation " must be regarded as immaterial which it "requires a close inspection to detect — and " which, can be scarcely said to diminish the " effect of the fac simile, which the simulated " label, in all other respects, is found to " exhibit. TRADE MARKS. 153 " Hence, were this the only question in the " case, I should have no difficulty in holding, " that the injunction which is sought to be dis- " solved, must be retained and enforced — " but, it is proper to add, that upon no suppo- " sition, would I consent to retain it, for all the " purposes for which it has been granted, and " for which its continuance has been asked." The learned judge then proceeds to the appli- cation of the principle of lavr, established by the preceding authorities, to the claim made by the plaintiffs, to an exclusive right to the use of the words in their label — " Balm of Thousand Flowers" — and says: " The position so strenuously insisted on that " the plaintiffs' firm have an exclusive property " in the words, ' Balm of Thousand Flowers,' " or, which is the same thing, an exclusive " right to use those words, in a trade mark, " I wholly reject." "It is not necessary to deny, that a name " may, in some cases, be rightfully used and " protected as a trade mark — but this is only " true, when the name is used merely as indi- " eating the true origin and ownershij) of the " article offered for sale — never, where it is " used to designate the article itself, and has " become, by adoption, and use, its proper " appellation. " When a new preparation or compound is . '' offered for sale, a distinctive and specific " name, must necessarily be given it." 20 154 THE LAW OF " The name tlius given to it, no matter " wlien, or by whom imposed, becomes by . "use, its proper appellation — and passes, as " such, into our common language. Hence, " all who have an equal right to manufacture, " and sell the article, have an equal right to " designate and sell it by its appropriate name, " the name by which, alone, it is distinguished " and known — provided each person is careful " to sell the article, as prepared and manufac- " tured by himself, and not by another. " When this caution is used, there is no " deception, of which a rival manufacturer, " not even the manufacturer by whom the " distinctive name was first invented or adopted, " can justly complain — and so far from there " being any imposition on the public, it is the " use of the distinctive name, which gives to " purchasers, the very information which they " are entitled to have." " In short, an exclusive right to use on a " label, or other trade mark, the appropriate " name of a manufactured article, exists only " in those who have an exclusive property in "the article itself — and it is not pretended, " that the plaintiff, or his firm, have any " exclusive property in the preparation or com- " pound, to which the well sounding name, " ' Balm of Thousand Flowers ' has been " given, "It is only the seductive name that they "claim, as their exclusive property — and, " doubtless, from their experience of its value " in the extension of their sales. " This, however, is a species of property, " that, in my opinion, is unknown to the law, TRADE MAEKS. 155 " and tliat can only be given to one, by " infringement of tlie rights of all. " My views on tlic general question, of an " exclusive riglit to sell an article by its dis- " tinctive name, were fully expressed in the " case of ' The Amosheag Manufacturing Com- " pany vs. Spear,^ " &c. Thus, upon tills ground, tlie injunction would liave been dissolved, so far as it prohibited the use of the particular words, claimed as the exclusive property of the plaintiffs, had not the learned judge, as we have already seen — adopted the conclusion, upon another and distinct ground, that it was the duty of the court to deny to the plaintiff all relief, and to withhold from him any protection whatever. In reviewing this case, in its application to another hranch of our subject, we have seen that Mr. Justice Duer denied the relief asked for by the plaintiffs, upon the ground that the trade mark claimed by them, was a tissue of false and fraudu- lent declarations, designed and calculated to impose upon a credulous public. Mr. Justice Hoffman, by whom the preliminary 156 THE LAW OF injunction was granted, expressed dissenting views upon this point. So, also, upon the question, as to what may be appropriated by a manufacturer as his trade mark, and as such, used to the exckision of others, that learned judge, in the case of Fetridge vs. MercJiant, 4 Abb., 136 — has stated his decided dissent from the opinion of Mr. Justice Duer. This dissent did not affect the result of the litigation, for the reason that the same conclusion was reached by Mr. Jus- tice Hoffman, in this case, as by Mr. Justice Duer, in the preceding one — but upon the distinct ground, that the evidence did not clearly establish the plaintiff's title, by priority of appropriation. In the case of Fetridge vs. Merchant, the same plaintiff sought the same relief and protection against another defendant, for the same alleged violation of his trade mark. The learned judge, in relation to the principle we are now considering — says: " Another proposition is, that a name or " appellation may be appropriated as a trade " mark — That this may be given to a com- " pound, or article, every ingredient or portion " of which, is open to the use of every one, " but the sale of which, under that appellation " is not lawful to any other person. " It would scarcely be going too far to say, " that the further removed, such an appellation TRADE MARKS. 157 " is, from actually representing the article in " question, tlie more exclusive and decided, " becomes the right to it. " Medicated Mexican Balm," had nothing in " its composition peculiar to the land of Mon- " tezuma (6 Bea., QQ,) and " Chinese Liniment" " was, in all its ingredients, a stranger to the " Celestial Empire — 4 McLean, 516." " It appears to me that the term 'Balm of " Thousand Flowers' is of this character. " The article is a liquid soap, or perfumed " liquid soap. " That name would be the name of the arti- " cle, because it would indicate its nature — " The ingredients are palm oil, potash, sugar " or honey, alcohol, and some strong scents. " The connection from the use of honey, if " employed by the plaintiff's, is remote and " fanciful. " The term is, in my opinion, extrinsic, and " not indicative." " I am compelled then, to differ, in this par- " ticular from the learned judge in the case of " Fetridge vs. Rice^ in Boston. He treats the " phrase as ' the proper name and appellation " of the article.' " [Sucli, also as we have seen, was tlie conclusion of Mr. Justice Duer in the case of Fetridge vs. Wells:] The learned judge, having determined to rest his decision of the case before him, upon the ground of insufficient proof of prior appropriation, by the plaintiffs, merely states his conclusions upon the 158 THE LAW OF questions now in review, without undertaking to urge, or express, his reasons, for adopting those conclusions. This is to be regretted — for these conclusions are not only at variance with those of other learned judges, and especially with those of the learned judge, who had then just decided the case of Fetridge vs. Wells, but also seem to be in-econ- cileable with the established principles, upon which the junsdiction in equity has been rested for the protection of property in trade marks. If the name devised and given to an article of merchandise, by the manufacturer, (who possesses no exclusive right to manufactm-e or sell the article itself,) was not designed to declare the origin or ownership of the article, the manufacturer, or place of manufactm-e — and can, by no possibility per- form that office, and if the name, or whatever may constitiite the trade mark, that does, dhectly or indirectly, perform that office, is alone entitled to be recognized and protected, as property, for the reason that the imitation of such trade mark only, can accomplish the wrong for which alone the law provides a remedy, namely — the selling of the merchandise of the wrongdoer as and for that of the original appropriator of the trade mark — then, it is not easy to perceive, why, or upon what TRADE MARKS. 159 ground, there should, or can be, any difference between a name that is extrinsic, and one that is indicative. If the name does not pretend to indicate the properties or constituents of the manufactured article, but is a name of fancy, merely, removed as far from any actual representation of the thing, as the " Medicated Mexican Balm " was from the land of Montezuma, does it, for that reason, approach a shade nearer the essential condition of a trade mark, of which the right of property can be predicated, — namely, a denotement that the article, thus denominated, was manufactured, or is for sale, byA. B.? But the case in 4 McLean, cited by the learned judge, as an authority apposite to the doctrine of his opinion, is certainly very far from affording it the smallest support. The plaintiff in that case ( Cqffeen vs. Brunton, 4 McLean, 516,) made no claim whatever to the exclusive use of the words or name " Chinese Lini- ment" — nor did the defendant use the same, or any colorable imitation of the same words — and if such a claim had been made by the plaintiff, and the defendant had copied or imitated that name, — it is manifest from the language of Mr. Justice McLean — that he would not have sustained such 160 THE LAW OP . a claim. What the defendant in that case did, and was restrained from doing, by the injunction of the com-t, was simply, this. He so prepared the label for his medicine, that he called " Ohio Liniment " — in all its general features — and in the language of the printed du-ections for its use, which fonned a part of it — "as to produce an impression on the purchaser and the public, that the liniment sold by the defendant, contained the same ingredients as the 'Cliinese Liniment' — and was, in effect, the same medicine." In the case also, of Perry vs. Truffit, to which the learned judge refers, (not more fortunately than to that of Coffeen vs. JBruntoii) the exclusive right claimed by the plaintiff in the use of the words, "Medicated Mexican Balm," was denied by the Master of the Rolls — and his opinion manifestly was, as Mr. Justice Duer declares, in his review of that case, (vide 2 Sand. S. C. R., 612) that — " As the words "Medicated Mexican Balm" " might be just as true a description of the " medicine of the defendant, as that of the " plaintiff, the former had an equal right to " use them with the latter." In other words — the name, being one of fancy merely, or, at most, indicating the mere quality or character of the article, could not become the TRADE MARKS. 161 exclusive property of any one, who had not an exclusive right to manufacture and sell the article itself. This is certainly the principle resulting from the decision in the case in 6 Beavan — wliich the learned judge in Fet ridge vs. Merchant, intimates as an authority, justifying the \^ews which he there expresses — and, as we have before said, it seems to us, that a departure from this great, leading fundamental principle, would be to launch upon a sea of uncertainty, but whose currents unerringly tend towards those shoals and breakers, which foreshadow the "mischievous consequences" — so earnestly deprecated by Lord Mansfield — who, in Blanclmrd vs. Hill, resisted the first attempts to obtain a legal recognition of property in trade marks. The principles laid down in the case of " The Amoskeag Manufacturing Company vs. Spear," have been recognized as established law by the full bench of the same comi, in the case of Williams vs. Johnson, 2 Bos worth, 1. In that case, it appeared, that the plaintiff, Wil- liams, was a manufactm'er, at Manchester, in Con- necticut, of a particular kind of soap, to wliich he gave the name of " Genuine Yankee Soap." Each cake of his soap was covered with tin foil, and on 21 162 THE LAW OF the top was affixed an octagonal, pink colored label, containing these words : " Genuine Yankee Soap, manufactured at Manchester, Connecticut, by Williams & Bro., Chemists and Apothecaries. To prevent counterfeits, their name will be on each cake." On one side of each cake, was an octagonal, pink colored label, containing these words : " The Gen- uine 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." On the other side of each cake, was another pink colored label, containing the name of the manufactm'ers or plaintiffs' firm, in imitation of writing — as a fac simile of their signature — "Williams & Bro." The cakes of soap, being thus carefully prepared, and labeled, were put up in boxes, each containing one dozen, which boxes were thus marked : " One dozen Genuine Yankee Soap, warranted superior to any foreign compound for shaving and the toilet — manufactiu-ed at Manchester, Connecticut, by Williams & Bro., Chemists and Apothecaries. To prevent coimterfeits, their name will be on each cake." In this, was employed a peculiar and fanciful TRADE MARKS. lb J style of printing, form of letters, and arrangement of lines. Thus 2^i*ep^i*ecl, and labeled, and packed— the soap was bronght into the market, was favorably received, and its sale became very extensive, result- ing in large profits to the manufacturer. The defendant established a manufactory of soap in New. York — prepared the same in cakes, of the same shape and size as the plaintiffs' — covered each cake with tin foil — and affixed pink colored, octagonal labels, on the top and sides — each label containing the precise words used by the plaintiffs on their labels — with the exception that the name (pm'porting to be that of the manufacturer, but which was falsely assumed by the defendant) was " L. Williams & Co.," and the place of manufacture, " New York." The defendant's soap was packed in boxes, each containing a dozen cakes, and each marked " One Dozen Genuine Yankee Soap, warranted superior to any foreign compound, for shaving and the toilet — manufactured by L. Williams & Co., New York. To prevent counterfeits, then' signature will be on each cake." In their mark or label, for the package or box — the arrangement of the lines, the peculiarity of the letters, the style of the printing, were, in every 164 THE LAW OF part, an almost exact copy of that of the plain- tiffs. The learned judge, who gave the opinion of the court, in this case, ( Mr. Justice Woodruff ) char- acterizes the conduct of the defendant as: " A gross and palpable endeavor, by an " imitation of the plaintiffs' marks and labels, to " deceive the public, and obtain the patronage, " of right belonging to the plaintiffs." " The plaintiffs had employed their skill in " the compoundiag of well known ingredients " for the manufacture of soap, and in all the " benefits resulting from that skill, were entitled " to protection." " "What marks or devices," (say the court) " are employed by the plaintiffs, to denote that " the soajj is made hy them, and is combined by " the skill that was employed in the making of " soap, heretofore made and sold by them, " bearing the same mark, are entitled to " protection." " As, for example. If the plaintiffs had " chosen to stamp their soap with some impres- " sion having no other meaning than to distin- " guish their manufacture, from that of others, " and have given it out as their mark, and, by " this description, soap of their manufacture " had acquired a reputation and sale, they " would be entitled to protection." " The marks and labels which they have " adopted, foi- this purpose, the defendant has " copied — and even the single variation in the " change of name, imports a falsehood, and TRADE MARKS. 165 "tends to create, rather than destroy the " impression, that the soap was manufactured " by the plaintiffs." Quoting from Senator Lott, in the case of Taylor vs. Carpenter, the court says : " Honest competition relies only on the in- " trinsic merit of the article brought into " market, and does not require a resort to false " or fraudulent device or token. That, cer- " tainly, cannot deserve the appellation, which " studiously gives to the product of pretended " superior skill, the name and external resem- " blance and imitation of the article, with " which it professes to compete." And again, quoting from Vice-Chancellor Sand- ford, in the case of Coates vs. Holhrook. " A man is not to sell the goods or manu- " facture of B. under the show or pretence, " that they are the goods or manufacture of A. " who, by superior skill or industry, has estab- " lished the reputation of his articles in the " market. The law will not permit a person " to practise a deception of that kind, or to " use the means which contribute to effect it. " He has no right, and he will not be allowed, " to use the names, letters, marks or other " symbols, by which he may palm off upon " buyers, as the manufacturer of another, the " article he is selling — and thereby attract to " himself the patronage, that, without such "deceptive use of such names, &c., would 166 THE LAW OF " have enured to the benefit of that other per- " son, who first got np, or was alone accustomed " to use, such names, marks, letters or symbols." And again, quoting from Mr. Justice Duee, in tlie case of The Amoskeag Manufacturing Com- yamj vs. Spear. " In order to convey a false impression to the mind of the public, as to the true origin and ownership of goods, it is not necessary that the imitation of an original trade mark, should be exact and perfect. It may be limited, and jDartial. It may embrace varia- tions, that a comparison with the original, would instantly disclose — yet, a resemblance may exist, that was designed to mislead the public — and the effect intended, may have been produced, nor can it be doubted, that when this design is apparent, and this effect has followed, an injunction may rightfully be issued, and oua:ht to be issued." But the point in which tins case especially recognizes the authority of that of The Amoskeag Manufacturing Company vs. Spear, and the doctrine there laid down, from which the learned judge dissented, in the case of Fetridge vs. Merchant, relates to the right claimed to the exclusive use by the plaintiffs, upon their labels, of the words " Genuine Yankee Soap." Upon this point the court says : TRADE MARKS. 167 " Whether, upon talcing proofs, it would appear that the words 'Genuine Yankee Soap ' are to be deemed descriptive of this kind of soap, which any one may make and sell by its proper name, or are terms properly designating the plaintiffs' manufacture, and so, descriptive of their skill and industry, in making an article, already in common use, by its proper and generic name of soap, is perhaps not free from doubt. "It is quite clear, that so far as it indicates the place of manufacture, it is a fraud on the^ part of the defendants to use it. Still, the case referred to — {The Amoskeag Manufactur- ing Oomixtng vs. /Spear,) decides — that, though it be, in this particular, a fraud on the part of the defendant, the plaintiffs cannot have an injunction, unless it shall appear, that it designates their oivn manitfacture, and that its use by the defendant, operates to the prejudice of a right acquired by them." And, accordingly, the injunction granted in this case, was "made to conform" to that, in the case decided by Mr. Justice Duek. In that, the prohibition upon the defendants, did not include the letters " A. C. A." In this, it did not include the words " Genuine Yankee Soap." 168 THE LAW OF The case of JJdolplw Wolfe vs. Emile Goulard, 18 How. Pr. R., 64, recently decided by Mr. Justice Ingka-ham, in tlie Supreme Court of New York — in some of its features, is much to the point, upon the branch of the subject embraced in this chapter. The plaintiff in this action, claimed to be the manufacturer and vendor of a certain kind of gin, which he denominated "Aromatic Scheidam Schnapps." He charged the defendant, in his bill, with an imitation of his marks and labels, hy the use of those words, upon an article of gin sold by him. In the case, as presented by the pleadings, or by concessions at the hearing, it appeared that the object of the action was, to restrain the defendant from the use of those particular words, " Aromatic Scheidam Schnapps," — and, if we coiTCctly under- stand it, all question as to the defendant's violation of the plaintiff's rights, by endeavoring to sell his gin, as that of the plaintiff, through the instrumen- tality of an imitation of the form, size and color of the wrapper and labels, and of the words printed thereon, and their peculiar arrangement, were excluded from the consideration of the com-t, upon TRADE MARKS. 169 the motion for an injunction — and the inquiiy was hmited to the question, whether the plaintiff had such a right to the use of the words " Scheidam Schnapps," to designate his gin, as to entitle him to an injunction, restraining the defendant from using them. After a review of the evidence, disclosed by the affidavits, in relation to the proper and accepted signification of the words in question, which tended strongly to the conclusion, as matter of fact, that the word " Schnapps " was in common use in " Scheidam," to designate gin, and that the words were, therefore, simply the proper name of the article, the court proceeds to a consideration of the question of law, and says : " When a person forms a new word, to " designate an article made by him, which has " never been used before, he may obtain such " a right to that name as to entitle him to the " sole use of it, as against others, who attempt " to use it for a similar article. But such an " exclusive right can never be successfully " claimed, of words in common use previously, " as applicable to similar articles." The court then p'oceeds to a consideration of the several authorities upon the question of what may be appropriated as a trade mark, entitling the owner to protection in its exclusive use, and quotes, 22 170 THE LAW of' as autlioritative expressions of the established prin- ciples, the language of Mr. Justice Duer, in the several cases decided by him — as also that of the Supreme Court, in the cases of " Stokes vs. Land- graffl' " Clark vs. Clarkl' and " The Brooklyn White head Company vs. Masiiryl' already referred to ■ — and, in accordance with these principles, the injunc- tion prayed for against the defendant, was dis- solved. Whatever may be the rights of the plaintiff in this action, to restrain the fraudulent and colorable imitation of his labels and trade mark, by the defendant, by which he is enabled to pass off his gin as the plaintiff's — we are at a loss to imder- stand how the litigation can terminate otherwise than in accordance with the decision of Mr. Jus- tice Ingraham, if the sole relief sought at the trial, be that to which the claim of the plaintiff was limited, on the motion for an injunction — namely, to restrain the defendants from the use of the par- ticular words, " Scheidam Schnapps," — and if it be conceded that the words do not, of themselves, tend to indicate the plaintiff, as the manufacturer, or vendor, of the article, we are unable to perceive how any evidence whatever, of priority of appro- priation, by the plaintiff, can be held to vest in him an exclusive light to their use, without a TRADE MARKS. Itl departure from those established prmciples, upon which such exchisive right can alone be rested. At about the same time that the case of Wolfe vs. Goulard was decided in the Supreme Court of New York, that of Burnett vs. Phalon was under consideration in the Superior Court of the city of New York. This case, in some of its featm'es, is of a novel character — and by reason of the peculiarity of some of the views presented by the learned- judge, before whom the hearing was had, on the motion for an injunction (Mr. Justice Pierrepont,) it is worthy of more than a passing notice. The plaintiff was a chemist, residing in Boston, — and in 1856, it appeared, compounded from cocoa- nut oil and other ingredients, a mixture for the hair — and as a designation for his compound, devised a name never before used, and miknown to the language — namely, '' Cocoaine''' — and im- mediately published in all his circulars, and in the principal newspapers throughout the country, and especially in nearly every newspaper in the city of New York, which was the residence of the 172 THE LAW OF defendant, that he had adopted that name as his trade mark — to designate the article as his manu- factm-e — and to secm-e the pubHc, and himself, against imposition, and that all unauthorized use of that name or trade mark, would be promptly prosecuted. It appeared that he had expended in his advertisements, some ten thousand dollars, before the alleged invasion of his rights by the defendant, and it was not pretended, that the defendants were not fully cognizant of his advertisements and notifications, as to this alleged trade mark. The compound met with a rapid sale — which was attended w^ith no inconsiderable profit. Upon each bottle, containing the plaintiff's mix- ture, he afiixed a label, with the following words piinted thereon, and somewhat thus arranged : "A Perfect Hair Dressing, A Promoter of the Growth of Hair, A preparation Free from irritating matter. Burnett's Cocoaine, For preserving and beautifying the Hair, and rendering it dark and glossy." To this, was added a description of the properties of the compound, and its peculiar qualities, together TRADE MARKS. 173 with dii'ections for its use — the whole terminating with these words : " Prepared only by Joseph Burnett & Co., Boston." And the certificate of entry in the office of the Clerk of the District Court of the United States, for the District of Massachusetts — to secure a copyright in the label, under the act of Congress. After the compound of the plaintiff's had been upon the market about two years, the defendants commenced a preparation of a mixtm*e for the hair, a principal ingredient of which was alleged to be, cocoa-nut oil. It was put up by them in bottles, "not very imlike those of the plaintiffs'. " The label affixed by the defendants upon then- bottles, contained — first, the certificate of entry in the office of the Clerk of the District Court of the United States for the Southern District of New York, to secure a copyi'ight in their label, under the act of Congress — and then, the following words, thus aiTanged : " Phalon & Son's Cocoine For the Hair, Prepared From highly purified Cocoa Oil." 174 THE LAW OF To this was added a description of the properties of the compound, directions for its use and appli- cation — and the whole terminating with the words, " Phalon & Sons, Perfumers, Nos. 197, 497, and 517 Broadway, New York." Upon these facts, the plaintiffs claimed that the defendants had violated their trade mark, and claimed damages, and relief by injunction. The defendants, in then answer, averred that the plaintiffs' compound was an imposition — and that theirs was a superior article — and further, that the plaintiffs could have no property in the word " Cocoaine " — and if they could, that the word " Cocoine," adopted by them, was a different name, correctly compounded from the French, and not calculated to mislead the public. At the hearing, no evidence was offered, tending to show any imposition on the part of the plain- tiffs — and the court, in accordance Avith the well settled doctrine, — where the proceedings are in equity^ — which we shall have occasion to consider hereafter, refused to allow any evidence as to the relative qualities of the two mixtures. The evidence did not show such a similarity between the defendants' and the plaintiffs' label or TRADE MARKS. 175 trade mark, in its general featwes, as to induce the belief that the defendants' was contrived to mislead the public, and enable them to sell their mixture, as and for that, manufactured by the plaintiffs. The sole imitation, and that which, it was con- tended, accomplished this result — and manifested this design, was in the use by the defendants, of the word, " Cocoine." The question, therefore, at issue in the case, is thus stated by the court : " If the plaintiffs cannot acquire any property " or exclusive use in this name, word or device " (namely, ' Cocoaine ') thus contrived and " adopted as their trade mark, then, there is no " ground for this action — and if the defendants " have adopted a device or name, so differing " from that adopted by the plaintiffs, as in no " wise to deceive the public or do injury to the " plaintiffs — then the defendants are not liable " in this suit." The court then proceeds to a consideration of some of the leading authorities, and cites, with approbation, the following- language of Lord Langdale, in Croft vs. Day, 7 Bea., 84, as a correct statement of the principle upon which a right of property in trade marks is recognized. " No man has a right to dress himself in " colors, or adopt and bear symbols, to which " he has no peculiar or exclusive right — and " thereby personate another j^et'son, for the pur- 176 THE LAW OF " pose of inducing the public to suppose, " either that he is that other person^ or that he is " connected tvith, and selling the manufacture of " that other person^ while he is really selling his " own." And again, " The defendant's (Day's) contrivances, were " calculated to mislead the biilk of the unwary " public, into the impression that the iiew con- '' cern was connected with the old manufactory ^ " and thus to benefit the defendants, to injure " the plaintiffs, and to deceive the public." The learned judge, having thus clearly recog- nized the leading, fundamental principle, upon which a manufacturer is entitled to protection, in the exclusive use of his trade mark, proceeds to the application as follows : " In the case before us, Burnett contrived a " name, unhnoivn to any language^ and sold his " mixture, under that appropriated designation, " for two years — advertising during the entire " time, and in nearly every important journal, " in the city of New York, that he had adopted " that loord or name as his ' trade mark.^ " " Every man has a right to the reward of " his skill, his energy and his honest enter- " prize, and when he has appropriated as his " trade mark, letters combined into a word " hefore unknown^ and has used that word, and " long puhlislied it to the world, as Ids adopted " trade marh, he has acquired rights in it which " the courts will protect." TRADE MARKS. 177 And still furtlier to impress this doctrine, by a statement of that which is conceived to be not susceptible of appropriation, the learned judge, proceeds : " No one can appropriate a word in general " use, as his trade mark — and restrain others " from using that word. Burnett cannot acquire " property in the words 'Gin,' 'Wine,' 'Brandy' " or ' Ale,' or in any other word known to the " language^ and in common use, to designate " things, or the qualities of things. But the " word appropriated by the plaintiff, is not of " that character," &c. The doctrine thus inculcated by the learned judge, seems somewhat novel in its character. It cannot be deduced from any preceding authority, and does not, as it appears to us, harmonize with the principles previously recognized by the comi, as controlling and defining the conditions upon which property in trade marks can be acquired. Because a manufacturer has coined a word before unknown to any language — and applied that, as a name for his production, he does not thereby designate and distinguish that production as his, any better than if he had used words, known to the language, but never before applied to such a pro- duction? A newly coined word, consisting of an original combination of letters, does not, because 23 178 THE LAW OF it is new, serve in the slightest degree, to point out the true origin or ownership of the article so named, or connect it with the person who contrived the new word? If the plaintiffs, in this case, had simply used the word " Cocoaine " in their label, without addi- tion of their name or address, and merely adding to it a description of the properties of the "Cocoaine" and directions for its use, could any one thereby have received the slightest intimation, as to the origin or ownership of the mixture — who was the manufacturer — or by whom it was sold? And yet, if anything can be regarded as settled, in the law of trade marks — it is this — that an essential condition, an imperative sine qua non to their recognition, as property, entithng the owner to protection in their exclusive use, is, that they shall, in some mode, clearly and truly, designate the origin and ownership of the article — that they shall be a substantial declaration to the public by him who adopts them, that he is the manufacturer — because, in the first place, no wrong against the individual, can be committed, by the invasion of a trade mai'k, otherwise than by the sale of the goods of the wrong doer, as and for the goods of the owner of the trade mark — and this can only be done by a copy or imitation of that, which TRADE MARKS. 179 serves to designate the goods as the manufacture of the owner of the trade mark imitated — and because too, in the next place — so far as the pub- He is concerned, such a designation in a trade mark, as shall denote the time origin and ownership of the manufactm-e, affords the best and safest, if not the only pledge and guaranty against fraud and imposition. It certainly does not seem apparent, that this condition can be, at all fulfilled, simply by the adoption and use of a newly coined word. Again — That the published declarations of a manufacturer, that he has adopted a certain word as his trade mark, can lay the foundation, or even aid in laying the foundation of a right of property in the word, can scarcely be reconciled with the principles, heretofore recognized, upon which such property can be acquired — or with the policy of the law in recognizing and protecting the acquisition. It is the actual use of the trade mark, affixed to the merchandise of the manufactm-er, and this alone, which can impart to it, the elements of property. The mere declaration of a person, how- ever long, and however extensively published, that he claims j)roperty in a word, as his trade mark, cannot even tend to make it his property. The law, alone, does that — and if a manufacturer 180 THE LAW OF advertises to tlie world, that a certain name is his trade mark, which name the law declares to be incapable of appropriation, as exclusive property, and which, not denoting the origin or ownership of the goods, cannot be used by one, to the exclusion of another — his advertisements are vain. The conclusions of the learned judge, in this case, may well be sustained upon the facts — though, as it seems to us, not upon the principles invoked to justify them. Adopting the language of Lord Langdale, in Croft vs. Day, the court asks, as to the defendant's use of the word " Cocoine :" " Was this contrivance calculated to mislead " the bulk of the unwary purchasers, and thus " to benefit the defendants — to injure the " plaintiff, and to deceive the public ?" And to this question, the court says : " I have no doubt that an honest answer " would be in the affirmative." But, in the case of Croft vs. Day, the contri- vances to mislead, adopted by the defendants, were imitations of those 'portions of the plaintiffs' label, which consisted of their name and address — and therefore were calculated to produce the impres- sion, that the new concern was connected with the old manufactory. TRADE MARKS. 181 Sucli can never be the case, assuredly, where the contrivance consists altogether in an imitation of a mere name, which constitutes the entire trade mark — audioes not, in any manner, supply the place or perfomi the office of the name or addi'ess, in indicating- the origin or ownership of the manu- facture. It seems to us, that in this case, the trade mark of the plaintiff, notwithstanding his declarations, and claims, and advertisements, and notifications, was, by no means, simply the word " Cocoaine," — or even that the word "Cocoaine" constituted a principal portion of that which was, strictly, the trade mark. The compound was not called " Cocoaine," but " Burnett's Cocoaine," and every label contained, not only the name, but the address of the plain- tiffs — and also the distinct declaration that they were the manufacturers of the compound. These constituted the trade mark, in the only strictly legal sense of that term — because they alone designated the true origin and ownership of the mixture. The word " Cocoaine " was devised as a name for the article itself, not altogether inappropriate, because somewhat indicative of its properties. Being added to the name and addi-ess of the manu- 182 THE LAW OF facturer, it might be regarded as an auxiliaiy, in serving to identify and distinguish. It may be, therefore, that the word " Cocoaine," having been devised and adopted by the plaintiffs, and by them, for a long while, and extensively, used, in connection with then* name, upon their bottles, labels and packages, became so inseparably associated, with the plaintiffs themselves, that no one could use the same word in his labels, affixed to bottles containing a similar compound, (for the word " Cocoine " is, to all intents, the same,) even though his own name and address were substituted for those of the plaintiff, without actually mislead- ing the bulk of unwary purchasers, and inducing the belief that his compound was, in truth, the manufacture of the plaintiffs. In other words, the bulk of unwary purchasers, who had been in the habit of buying "Burnett's Cocoaine" — seeing what appeared to be the same name upon a bottle or package — would take it for granted that it was the same article which they had before purchased, namely " Bm^nett's Cocoaine," and would not be likely to discover their error, by a close examination of the label, which would reveal the name and addi-ess of the defendants — "Phalon& Sons." In this sense, and in no other, as it seems to us, ^ TRADE MARKS. 183 could the defendants, by tlie use of the word, "Cocoaine" without anything else in common with, or in imitation of, the plaintiff's trade mark, be regarded as attempting to personate the plaintiffs, and to induce the bulk . of unwary purchasers to believe, that the compound contained in the bot- tles, on which that word was used, was the manu- factm'e of the plaintiffs. If this were so, as matter of fact, that is, if the mere use of the word in the label, induced the belief that the defendants' bottles contained the plaintiffs' compound, then, the rights of the plain- tiffs would be invaded by the use of this word, in like manner, — (though indirectly, and not, per- haps, to the like extent — ) as if their name and addi'ess had been copied or imitated and: " Whenever the design of a person who " imitates a trade mark, either apparent or " proved, is, to impose his own goods upon the ".public, as those of the owner of the mark, " and the imitation is such, that the success of " the design is a probable, or even possible, " consequence, an injunction ought to be " granted." We have not been" able to avoid the conclusion, that the doctrines inculcated in the cases of Burnett vs. Flialon — and Fetridge vs. Merchant — in the reported opinions of the learned judges, by 184 THE LAW OF » whom they were respectively heard, on motions to dissolve the preliminary injunctions, involve a departure from the piinciples established by the decisions of the same court, in The Amos- Iteag Manufacturing Company vs. Spear, and Wil- liams vs. Johnson, and so repeatedly recognized and affirmed by other tribunals. If it be not altogether a groundless apprehension, that a departure from these principles, necessitates a sacrifice of what has been justly deemed the tme policy of the law — and inevitably leads, by sure, though stealthy steps, to those "mischievous con- sequences" which always result from the imposition of fetters upon the freedom of trade, and an oppressive restraint upon fairly directed enterprise and honest competition, by the creation of exclu- sive privileges, and arbitrary and unjust monopo- lies, — then the strictures we have ventm'ed uj)on the doctrines involved in these decisions, are not without justification. It is not always easy to look beyond what appears to be a palpable invasion of individual rights, to the possible sacrifice of general interests, which may be involved in the inculcation of that doctrine, which is essential to the particular indi- vidual relief. In view of this, perhaps that would not be TRADE MARKS. 185 unwise legislation, which, — following the example of the legislatm-e of the State of Massachusetts — should prescribe the boundaries of the equitable jurisdiction of the courts, over the subject of trade marks, by pro\ading, that it shall be exercised only, to restrain by injunction the "fraudulent use of such trade marks or devices, as are employed for the purpose of falsely representing any article to be manufactured by a person or firm who did not in fact make it." The case of A?nes vs. King, 2 Gray, 379, illustrates the eifect of such an enactment, in restraining the judicial determination of issues, made by the pleadings, between parties in trade mark controversies — unsustained by extrinsic evi- dence, upon either side. The plaintiffs were manufacturers of shovels, and in order to denote that they were their manu- factui'e, and to distinguish them from the like article made by any other manufactures, they branded them with the name of their fii-m — " 0. Ames & Sons." They became known in the market as " Ames' shovels " — and acquired much celebrity and extensive sale. The defendant was also a manufactm*er of shovels, and branded his productions, with the name "Ames" — as the plaintiifs' averred, in \'io- 24 186 THE LAW OF lation of tlieii* trade mark — in fraud of tliem, and " for tlie pui'pose of falsely representing the article to be the manufacture of the plaintiffs." The answer of the defendant denied the aver- ments of the bill — denied the intent to deceive and defraud — and — admitting that he had used the name " Ames," upon 200 dozen shovels of his manufactm-e, denied that the plaintiffs had any exclusive right to the use of that name, and also denied, that he had employed that word " for the purpose of falsely representing the article to be the manufacture of the plaintiffs," but, on the contrary, averred, that he had received an order for 200 dozen shovels, from a person whose name was " Ames," and that he was desired by the person who gave to him the order, to brand or stamp them by that name, solely for the purpose of denoting that they were kept for sale by him — and he did so, accordingly. The answer to the bill was under oath, a hearing was had upon the bill and answer — and the court held that imder the limitations of the statute, they were not at liberty to consider the circumstances, which otherwise might have been regarded, by a court of equity, as tending to an impeachment of the veracity and good faith of the defendant — and upon this ground the bill was dismissed. TRADE MARKS. 187 We liave just been liu'nislied witli a manuscript copy of the opinion of the Superior Court of the city of New York, in the case of William S. Cor- idn et al. vs. Williaf?i H. Daly et at., pronounced by a full bench of that coiu-t, on the 30th of June, 1860. The case was an important one, — involving many questions of interest in the law of trade marks — but of peculiar importance — as presenting for determination, the distinct question, as to the right to the exclusive use, as a trade mark, — of an abstract name, or of words not indicating the origin, or ownership, or manufacture, of the article desig- nated, — by the manufiicturer or merchant, who fii'st adopted, appropriated or applied such desig- nation. The question is discussed with much learning and ability — and the opinion of the court, (given by Mr. Justice Robertson,) — reviews with great clearness and discriminating fidelity, the prominent authorities bearing upon the question, as well in the English as the American reports. "We are glad to have received our report of this decision, while the sheets of this work are yet in press — and in season for incorporation into its 188 THE LAW OF pages — for, we are not aware of any case, in which the fundamental principles in the law of trade marks, are more fully recognized — more clearly elucidated — or more faithfully applied. The plaintiffs were importers of an article of gin — manufactured at Rotterdam in Holland. The manufacturers of this gin, in 1850, agreed to sell the same for importation and sale in the United States to a Mr. WilHam S. Campbell — and to brand the casks, in which it should be shipped, with the name "Club House" and the initials of Campbell's name, "W. S. C." This they did; and when the gin arrived in the United States, it was prepared for sale, by being drawn from the casks — and put into square bottles — which were packed in green painted cases, each containing twelve flasks. Upon one side of these green painted boxes were painted in white, the letters " "W. S. C," and beneath them, the words, "Club House Gin." The flasks or bottles were blown, with the same initials, and the same name, in the side or the shoulder — and to each flask was TRADE MARKS. 189 also affixed a label, with a black ground and gold letters — containing the same name and the same initials — with other words, indicating the place of mannfactiu'e, (Rotterdam) and the name and address of the importer. The plaintiffs claimed their exclusive rights, by virtue of a transfer of the business, expressly including the trade mark in question, executed to them in 1857, by W. S. Campbell — the initials of whose name corresponded with those of the piin- cipal plaintiff. The defendants were importers of an article of gin from Holland — which they put into square bottles like those used by the plaintiffs — w^ith the name "Club House" and the full name of one of the defendants, "J. T. Daly" — blown in the side — ( This peculiar preparation of the bottle, it seems, was fu'st adopted by the defendants.) These flasks were put into unpainted cases, similar, in size, to those used by the plaintiff, upon which, in black letters, were printed the words — "Old London Club House Gin" — and the name of the other defendant — "Wm. H. Daly." To each flask was affixed a label — with a Avhite ground and black letters, containing the words " London Club House Gin" — and the name and address of "Wm. H. Daly — in fac simile — as the "sole importer." 190 THE LAW OF The flasks of tlie defendants were sealed with a green seal, plain — those of the plaintiffs, were provided with a metallic covering over the cork — with the initials "W. S. C," impressed in the centre — and the words "Club House Gin" around the edge. Neither the assignor of the plaintiffs, nor the plaintiffs, prior to the commencement of this action had shipped their gin to, or sold it in, any other market, than that of New York. The plaintiffs had shipped their gin to Califor- nia — and had never sold it in any other market. The bill of complaint contained the usual aver- ments of piracy and colorable imitation by the defendants, of the plaintiffs' trade mark — and that they were thereby selling their gin as and for the gin of the plaintiffs — and inducing merchants and dealers to purchase of them — who would other- wise have purchased from the plaintiffs. No evidence was offered, tending to sustain these averments — and indeed, it appeared, quite conclu- sively, as well from the actual coui'se of business of the defendants, as from the testimony of many witnesses connected with the trade — not only that the gin of the defendants never had been sold, as and for that of the plaintiffs — and that no one ever had been induced to purchase, or had actually TRADE MARKS. 191 pui'chased, the defendants' gin, supposing it to be tliat of the phiintiffs — hut that — there was no point of similarity between the labels — flasks and cases of the respective parties — which could serve to mislead or deceive — even an unwary customer — and induce him to purchase the defend- ants' gin — under the impression that it was the plaintiffs'. It appears, therefore, to have been conceded at the trial, that the claim of the plaintiffs to protec- tion — was limited to the exclusive use of the words " Club House " as a designation for gin. It was contended that the plaintiffs' assignor, was the first to adopt and appropriate these words for this purpose — and that their use by the defendants, though in a different combination, and connected with words, names or devices, so entirely dissimilar as to preclude the idea of deception, was, neverthe- less, such an invasion of the exclusive right of the plaintiffs in the abstract name, as to entitle them to the relief prayed for. Thus was presented, in the language of the court — the question: " Whether the manufacturer or vendor of an " article, can acquire a right to the exclusive " employment of a word or words, having an " established meaning, to qualify the name of 192 THE LAW OF " sucli article, so as to deprive every other per- " son of the right of using such words, to " designate any other article, apparently simi- " lar — the words, of course — being such as " to have no reference to the origin, ownership " or manufacture of such articles." " This bald question," adds the court — " although often disposed of, perpetually recurs, " apparently only from an expectation of im- " portuning courts into extending the doctrine " of protecting trade marks to the verge of " granting a monopoly, and creating a judicial " copyright — far more durable than that granted " by statute." This preliminary statement of the question, sufficiently foreshadows the manner of its final disposal by the court — but we cannot refrain from extending our quotations from the instructive discussion of principle and authority contained in the elaborate opinion of the com*t. " The protection of trade marks, as they are "called, originated simply with — as it is to " be resolved into — the common law doctrine, " that he who sold his own ware as another's, " was responsible both to the party whose " custom he had fraudulently obtained, and to " him from whom he drew it away — and it " was immaterial in what way he carried on " the imposition, whether by verbal represen- " tations, or simulations of marks, used to " designate the wares, or other indicia of " ownership." TRADE MARKS. 19 J The court then briefly reviews the earlier cases, at law — in Popham, Atkins and Douglas, the decisions of Mr. Justice Doddridge, Lord Hard- wiCKE and Lord Mansfield — and adds : " The practice, however, grew up, of pro- " tecting trade marks against piracy — in a " court of equity, by its more efficient powers, — " out of which, a vast body of law has grown " up, and a mass of elaborate decisions ren- " dered, extending or limiting, the applica- " tion of the principle — and converting the " wrong doer into a trustee for the injured " party, and it will be necessary to pursue its " course through that mass, in order to dispose " of the claim in this case." Preliminary to tliis review of the decisions of the learned Chancellors of England and of the United States — the learned coui't states as deduc- tions from these authorities, the following : " There are two principles steadily adhered " to, in all the cases in equity — so far as we " have been able to perceive. " First — That the intent to pass off the goods of " the defendant as those of the plaintiff, must " exist — although names maybe used, equally " with other devices, as instruments of such " fraud." " Second — That the mere use of the name alone, " not indicating any ownership, origin or man- 25 194 THE LAW OF ufacture of the article sold, and therefore, by itself, not instrumental in representing to a purchaser, that the goods bought by him, of the supposed pirate, were those of the com- plaining party ; and only designating or exaggerating the materials, kind, quality, destined use, or class of customers, of the ' articles sold, was not to be protected — with- out proof of fraudulent intent by others, in such use." The com't tlien adds " The variety of cases which have arisen in " respect to trade marks, grows simply out of " the various ingenious means used by dealers " in similar articles, to defraud each other, " and actually to represent, without appearing " to do so, that the wares sold or articles dealt " in by one, are actually those of another — " these, of course, are, almost, as various, as " the instruments used by dealers as badges of " their ownership or manufacture of articles " sold." " It is a curious feet, that an article, by a " species of loss of individuality, gains more " notoriety, if described by a name, having no " reference to its ownership, than by one, " which does — particularly if its merits are "not of the highest order ^although, at the " same time, it more readily loses its celebrity, " by the competition of new rivals for public "favor, — manufactured articles, designated " only by the name of the manufacturer, rise " more slowly into notice, but as they can TRADE MARKS. 195 " rise only by tlicir merits, tlicy lust much " longer in the public esteem." " If courts were to consult the public good " only, they should lend their aid less cheer- " fully, to the protection of fancy names, than " to those pointing out ownership — but they " have j)laced their judgments entirely on the " ground of relief for a private wrong." " In England — Lord L.ixgdale, the able " master of the rolls, has repeatedly, in a series of cases, laid down the true principles in " various forms, so that it would seem strange, " that he should have deemed it necessary to " repeat it so often, were it not for the pertina- " city of suitors, to carry the doctrine beyond " its legitimate bounds — and acquire a judicial " copyright in a name." The learned court then proceeds to a careful and thorousrli review of the leadinof EnMisli and American cases, citing the language of the judges as establishing the principles laid down — and showing, very clearly, that even those cases, relied upon as countenancing a different doctrine, will be found upon examination " to contain other ingre- dients" — and, so far from repudiating the general principle, serve only to illustrate its correctness. After this review and discussion of authority the com't proceeds : " It has long since been settled, that the " common law gave no copyright in anything. " The princijole that the mere use of a name to 196 THE LAW OF " designate an article, wonlcl give to those so " employing it, the exclusive right to designate " such article by such name, would be giving " a copyright of the most odious kind, without " reference to the utility of the application or " the length of the title — it would be perpetual, " — the words used, would be taken from the " mass of the language, and dedicated to the " gratification of a barbarous taste, a capricious " whim, or an attempt to impose upon the " public, high sounding words and rhodomon- " tade- — for real merit and lasting reputation — " and if the invention of those who appropri- " ated these names, was only equal to their " love of imposition, the whole language might " be laid under embargo, and no tradesman. " would hardly dare to call his wares by " any descriptive language, lest he might inno- " cently invade some person's appropriation " and expose himself to an action for an " account, for all the profits of his business. " Courts ought not to be forward so to cramp " the energetic competition of commerce, and " give to a dull invention of an epithet, the " rewards of successful enterprise." Applying tlie established principle to the case before the court, the conclusion is stated, that the " Use of the words 'Club House' to desig- " nate gin, cannot be confined to the plaintiffs, " unless they indicate its origin, of which there " is no evidence." TRADE MARKS. 197 The court adds: " But this term ' Chib House,' not only does " not mdicate origin, including in that word, " ownership and place of manufacture — or any " other means of designating that the commodity " was that sold by the plaintiffs, — but it does " indicate some other attribute or quality, such " as nature, kind, grade, destined use, or class " of customers, which has nothing to do with " origin, and the cases already cited, confine the " exclusive use of known words in a language, " to those which indicate the origin or owncr- " ship of the article, — otherwise — selling by " the same title, would not tend to represent " them to be the same goods." " The idea seems to have originated with " the existence of a Club House at the place " where the article was made, in which the " best articles of the kind, were really, or, at „ least, were believed to be, consumed — and " it was done, undoubtedly, to indicate the •' quality of the article. Without recurring to " conjecture, the evidence establishes the con- " stant application of this epithet to indicate " articles of a superior quality, and even gin " itself, for nearly a quarter of a century — " a very natural result from the supposed " high standard of articles consumed in Club "Houses. " Such an epithet does no more than ' Hotel' " ' Eoyal,' ' Imperial ' or ' Princes,' or any " other high sounding title would do — and no " one would be bound to suspect that there " lurked beneath those words, the indication of " a particular ownership or manufacture." 198 THE LAW OF " It seems to be assumed that the rale is, " that every existing word can be appropriated " as a trade mark, and that the exceptions are "those, expressing mere quahtj or kind — " whereas, the true rule is — that no words can " be used by themselves, without other devices " as a trade mark — except such as point out " ownershij) or origin — and those which have " no reference, in any possible way, to any other " attribute of the article." " The words in question, come directly within " the deiinition of Chief Justice Duer, in the " ' Amoskeag Manufacturing Company vs. Spear ^^ " before cited — they are a symbol, which, from " the nature of the fact they are used to signify, " 'others might employ with equal truth — and " therefore have an equal right to employ, "for the same purpose' — and no better test " could be applied. " If a person abandons the simple mode of " indicating ownership, by the use of his own " name, he ought, at least, to be required, not " to appropriate as a trade mark, words not " indicating ownership — but some other attri- " bute of the article manufactured — and there- " by forever exclude others from using the " same name, to mean the same thjng — and " thus subject innocent persons, to the risk of " being made liable for infringing on a right " entirely unknown to them. " Impositions upon the public in regard to " such trade marks, deprive the inventors of " any protection. Why should not traps laid " for innocent dealers, be equally under the " ban of courts." TRADE MARKS. 199 Upon tlie subject of the supposed acquisition of property in trade marks by mere priority of appropriation — having premised that it is not easy to understand how priority of invention or use can confer such right — the learned com't adds the following instructive considerations : " The right does not become established, " until the trade mark be so often used, and so " long employed, exclusively and uninter- " ruptedly, as to create the presumption that " everybody would know and acknowledge, " that it was the distinctive badge of the plain- " tiff's ownership, and that the use of it by any " one, must have been intended to deceive pur- " chasers. If other persons had used it previ- " ously — but its use had been discontinued so " long as to give room for the inference, that it " had been abandoned, as an ordinary designa- " tion of any similar articles — and it was then " taken up by a person dealing in the article — " and used exclusively and uninterruptedly, " so long as to give rise to the presumption " that it was universally recognized as the " indicia of his ownership, his right should be " protected as much as though it had then been " used for the first time. But the evidence in " this case, does not come up even to these " requisitions." After a review of the evidence in the case, both as to the originality of appropriation, and exclu- siveness of use, of the words claimed by the plain- 200 THE LAW OF tiffs as their trade mark, and determining tliat it falls far short of that which is required, upon either point, and in any view of those questions — the court then proceeds : " Laying out of view, however, all question " as to the invention or application of the term " in question, as a trade mark by the plain- " tiffs — or to its character as being incapable " of appropriation as such — the question still " remains — have the defendants so emj)loyed " the term as a designation for the gin sold by " them, as to estabhsh an intention to deprive " the plaintiffs of their customers for the article " in question?" After a review of the evidence upon this point, the court says : " I do not see how the defendants could have " taken more precautions to guard against any " inference that they were selling the plain- " tiffs' commodity. They omit the plaintiffs' " initials, and add their own names. That cer- " tainly looks like claiming it as their own — " not the plaintiffs'. They also prefix the " words, 'Old London,' which proves that they " did not intend it should be mistaken for " Eotterdam Gin — and they pack the flasks " in unpainted boxes — while the plaintiffs put " theirs in painted ones." But the conclusive character of the evidence upon this point, resulting from the course of busi- TRADE MARKS. 201 ness of tlie defendants, in connection with that of the plaintiffs — is thus aUuded to by the com*t — with reference to the principle established in the case of Hoivard vs. Henriquez, in which the defendant was enjoined from calling his hotel by the same name, as that established by the plaintiff, in the same town. " There is also anotlier distinction between " this case and that of Hoioard vs. Henriquez, " which is therein recognized. " The defendants' goods are intended for, are " shipped to, and circulate only in, the Califor- " nia Market, as appears by the ninth and " tenth findings of fact — where the plaintiffs " carry on no trade — and though the invention " and application of the term ' Club House ' in " Eotterdam, to a gin manufactured there, may "cross the Atlantic, with it — and be estab- " lished entirely in the exclusive possession of " the plaintiffs, in the New York market — it " cannot cross the Isthmus, double the Cape, or " traverse the desert to reach a country where " the plaintiifs' products are not known — and "where the inhabitants — if they have such " institutions as Clubs, may innocently believe, " that an article sold by that designation, is " thereby meant to be designated as of a higher " quality — and not that sold by the plaintiffs." The decree of the court, in this case, in con- formity with the principles, which it declares to be as well based upon sound reason, as sustained by 26 202 THE LAW OF the entire current authority, is, that the complaint of the plaintiffs be dismissed — with costs. CHAPTER V. Op the violation of Trade Marks and of the remedy FOR SUCH violation. The discussion of the subjects of the preceding chapters, has, of necessity, to a great extent, involved, or required, the consideration of the question, as to what constitutes in law a violation of a trade mark, as well as the appropriate remedy for such violation. The learned Vice-Chancellor, in the case of The Collins Company vs. Coiven, 3 Kay & Johns., 428, declares that a violation of an alleged trade mark constitutes the true and only test by which the right of property in it can be determined. In the application, therefore, of this test, for the purpose of the inquiry into the constituent requi- sites of a legitimate trade mark — and its precise TRADE MARKS. 203 nature and cliaracter, as propert}^, entitling .the • owner to protection, in its exclusive use, that which constitutes a violation of such right, to be restrained by injunction or to be atoned for, in damages, has been so far considered already — that much that may be said under this division, will appear to be little else than a recapitulation. There are, however, some questions, dh'ectly connected with that of the wrong and the remedy, to which no allusion has heretofore been made. In general terms, a violation of a trade mark, consists in the false representation, that the mer- chandise manufactured or sold by the wrong doer, is the merchandise manufactured or sold by another person — effected, by the copying imi- tation, or colorable imitation, by the wrong doer, upon his goods, of the trade mark used to desig- nate and distinguish the goods of the other, as his goods — so that dealers, or consumers, are, or may be, deceived by the representation, and induced to purchase the goods of the wrong doer, supposing them to be those of the owner of the trade mark. Thus, it will be perceived, there are tlu-ee con- ditions which must exist in combination, to consti- tute a violation of the right of property in a trade mark, entitling its owner to equitable relief, in the 204 THE LAW OF fonn of preventive justice, to make more effectual his legal right — or to remuneration in damages for its invasion. First — There must be a false representation; Second — There must be a false representation effected in a certain manner ; and Third — This false representation, thus effected, must be designed or calculated to produce a certain result. First — To constitute such a wrongful invasion of the rights of another, it is not essential that the false representation should be fraudulent, and made with the intent to defraud and deceive. Such an intent will be presumed to have existed upon proof of the facts. In the vast majority of cases, the facts furnish such abundant evidence of a fraudulent intent, as to be wholly irreconcilable with innocence. The case of Millington vs. Fox, 3 Myl. & Cr., 338, affords an instance, however, where the absence of a fraudulent intention was abundantly proved — although, in that case, the wrong com- plained of, consisted in the use by the defendant, of the name of the original manufacturer, the plaintiff himself, which he had stamped upon his steel. TRADE MARKS. 205 It was, in this case, held by the Chancellor (Lord Cottenham) that to airthorize an injunction, the deception need not be intentional. " That a man, tliougli not intending an " injury to another, shall not be allowed to " adopt the marks by which the goods of '• another are designated, if the effect of adopt- " ing them, would be to prejudice the trade of " such other person." In the subsequent case of Perry vs. Trvfit, 6 Bea., Q)Q — Lord Langdale sa5^s, that he is "not aware that any previous case had carried the prin- ciple to that extent." This must be for the reason, that no previous case had presented such a state of facts, as to invoke the application of the principle — sui-ely not — as the language of the learned Master of the Rolls would seem to imply, because the principle itself, is at all strained or doubtful. It is not easy to perceive upon what ground its justice can be questioned — and we are not aware that it has been questioned, in any subsequent decision. The essence of the wrong, is, the selling of the merchandise of liim who commits it, as and for that of him against whom the wrong is committed. If A. manufactures a certain quality of steel. 206 THE LAW OF upon wliicli he stamps his name — and B. not knowing that the name thus stamped upon the steel, is the name of the manufactm-er, but behov- ing it to be a name simply descriptive of the particular kind or quality of the steel, stamps the same name upon the steel of like kind and quality, of his manufacture, which he sells in the market — it is ob\TLOus that he sells his manufacture, as and for that of A., just as effectually, as if he had known that he was violating a legitimate trade mark. In the case of Crawshay vs. Tliompson, 4 Man. & Gr., 357 — this doctrine was distinctly affirmed. There, it was held by Mr. Justice Maule, that the declaration of the plaintiff would have been good, without the express allegation of the scienter, which it contained. In the American cases of Coates vs. Holhrook, 2 Sand. Ch. R., 586 — Taylor vs. Carpenter, Id., 603 — The Amoskeag Mamifacturing iJompany vs. Spear, 2 Sand. S. C. R., 608 — and in Coffeen vs. Brunton, 4 McLean, 516 — the principle laid down by Lord CoxTENHAii, in Millington vs. Fox, is cited with approval. In the case of Coffeen vs. Brunton, Mr. Justice McLean says, alluding to the case of Millington vs. Fox : TRADE MARKS. 207 " From the above, it would seem that an intentional fraud is not necessary to entitle the plaintiff to protection — but that, where the same mark or label is used, which recom- mends the article to the public by the estab- lished reputation of another, who sells a similar article, and the spurious article cannot be distinguished from the genuine one, an injunction will be granted, altliough there was no intentional fraud. And I am inclined to think that this is a correct view of the principle — for the injury will be neither the greater nor less by the knowledge of the party. "If he has adopted the same mark, which will cause his article to be taken for another? in the market where it is known and approved, it is an injury which the law will redress." The good faith, or fraudulent intent, of one who copies or imitates the trade mark of another, becomes material, with reference to the question of costs — and also, it may be, in the determination of the question of the amount of damages, in an action at law, where they are not susceptible of actual measurement, but must be left to the deci- sion of a jury. In the case of Millington vs. Fox, although the defendant was restrained, by the perpetual injunc- tion of the court, he was relieved from the costs of the suit, expressly upon the ground that the facts acquitted him of the charge of fraudulent design. 208 THE LAW OF In tlie case of Crawshay vs. Thompson, whicli was an action on tlie case, in which the defendant had a verdict — it was held that it was properly- left to the jurj^, under the pleadings, and upon the question of damage, to say : " Whether the defendant used the mark, " with the fraudulent intention of supplanting " the plaintiff — or whether it was done in the . " ordinary course of his business, and without " any such intent," Second — The false representation must be made by copying or imitating those names, letters, marks, symbols or devices, which are used by another, upon goods manufactured or sold by him, and which he had a right to appropriate, to designate them as his — and to distinguish them from goods manufactm^ed or sold by others. We have already fully considered the paramount importance of requiring the strictest proof of this, as the essential element of a wrongful invasion of property in a trade mark. We have seen that a violation of the property of another, in a trade mark, cannot be predicated of the copying or imitation merely of such names, marks, letters, symbols or devices, as do not desig- nate the origin or ownership of the goods — but TRADE MARKS. 209 are simply descriptive of the thing" itself — or indicative of its kind, character or quality. No person can, in any manner, acquire an exclusive right to the use of such names, signs, marks, letters, symbols or devices, who has not, at the same time, the exclusive right to manufactm'e or sell the article to which they are applied. As simply denoting the article or its character, or relative or positive quality, such names, marks or devices, may, with equal truth and justice, be applied to the goods of one manufacturer as those of another — and therefore, no priority of appropriation — no originality of conception — no public declaration or long continued use, can avail as the foundation of an exclusive right of property. But, as we have seen, such names, signs, marks, letters, devices or symbols — may be effectively used, as an auxiliary to the name and address of the manufacturer, or to such names, letters, marks or signs as (h indicate the true origin or ownership of the goods, in effecting such designation, and, in such case, the use, or colorable imitation even, of such names, words or marks, only, as cannot be appropriated as property, may be as much a viola- tion of right, as if the name and address of the manufactm-er had been used or imitated, because 27 210 TTTE LAW OF made witli tlie same intent, and calculated to pro- duce the like result. By way of illustration of what is conceived to be the established principle, justly deducible from all the authorities — and resting upon the true policy and piu'pose of the law — and in order to a still further exposition of our views of the pre-eminent importance of this principle — as one necessarily involved in almost every trade mark controversy that can arise — we will state a case : A. B. is the manufacturer or vendor of a certain kind of gin. It is distilled at Scheidam. He calls it "Club House" gin — and this name was never before used, as a designation for gin, or any other article of merchandise. He puts it into bottles of a certain size and form — each bottle is provided with a stiff yellow paper covering — on the side is a label, with a pink ground, containing the words, "A. B's Club House Gin," in vermillion letters, fancifully arranged — and on the same label, in blue letters, several lines, peculiarly arranged, containing a description of the nutritious and health-restoring qualities of the contents of the bottles — ending with the statement that it is manufactured at Scheidam. TRADE MARKS. 211 The gin of A. B., thus put up, marked and labeled, is sold in the market as "A. B's Club House Gin." By that name it becomes known to dealers and the public. So that — whenever ' Club House Gin " is alluded to, or called for, ' the name of A. B. is connected with it, by asso- ciation. By long use, the name, " Club House," in itself possessing no such property, has become suggestive of the origin or ownership of the article. C. D. is also a manufacturer, or vendor, of gin. It is distilled at Rotterdam. Regarding his gin as an article of such quality, as fits it to be used at Club Houses, where none but the choicest pro- ductions are supposed to be consumed, he calls it — "Club House Gin." He puts it into bottles of the size and form, known as the gin bottle* This bottle is provided with no covering or wrapper — but on one side is fixed a label, with a black ground, containing in gilt letters, plainly, but not fancifully printed, the words, " C. D's Club House Gin, Rotterdam," without addition — thus, taking every precaution that the gin that he manu- factures or sells — shall be sold as his, and not as and for that of A. B. — so that there can be no deception, even of the most unwary. Now, according to settled principles, and the 212 THE LAW OF uniform current of authority — this is no violation of the trade mark of A. B. It is a mere use b}^ C. D. of the words " Club House," upon his gin, which word, he had just as much right to use as A. B. had — notwithstanding that A. B. devised and first used the word — and proclaimed that it was his trade mark — and for a long time has employed it as such — iJi'ovided, that in its use, C. D. is careful that there be no such similitude, otherwise, between his trade mark or label and that of A. B. as can mislead any one, or enable him to sell his gin, to the most unwaiy customer, as and for that of C. D. To apply the language of the learned judge, in one of the leading cases. " If the mere use of the words [' Club " House,'] by reason of their long association " with A. B., should have the efiect of mislead- " ing the public, as to the true origin of the " gin, it would be unreasonable to suppose, " that he is therefore precluded from using " them, as an expressing of the facts which " they really signify, and which may be just " as true, in relation to his gin, as to that of " A. B. or another. Purchasers may be " deceived. They may buy the gin of C. D. " as that of A. B. — but they are not deceived " by a false representation. They are deceived, " because certain words suggest a meaning to TRADE MARKS. 213 " their iiiiiKls, wlilch they do not, in reality, " bear, and were not designed to convey." Again, a third manufacturer of gin is E. F. His gin is distilled at Amsterdam. He puts it into bottles, of the size and form, used by A. B. He provides each bottle with a wrapper or covering, of stiff yellow paper, and on one side affixes a label of pink paper, on which, in vermillion and blue letters, in the same fanciful arrangement — in the like form, and of the same size, the precise words are printed, which are contained in the label of A. B. — except — that he neither copies nor imitates the proper name of A. B. but carefully substitutes his own name therefor — and calls his gin, " E. F's Chib House Gin." Now, in such a case, in accordance with the well established principles, and the uniform ciu'rent of authority, E. F. has been guilty of a fraudulent invasion of the right of property of A. B. in his trade mark — notwithstanding that he has not used in his label, any words, letters or marks — which, by themselves, he had not as perfect a right to use, as A. B. had. But these words, letters or marks, have been so used by E, F. — with such an exact similitude, in all respects, to the manner of their use by A. B. — as to divert the attention of the purchaser, from 214 - THE LAW OF the single point of variation, namely, the name and address of A. B. — which E. F, had no right to use, in any manner — and to produce the impres- sion that the Club House Gin of E. F. is in truth, the Club House Gin of A. B. This being so, the variation in the label, by the substitution of the name and address of E. F. for that of A. B., becomes wholly immaterial — for the sole purpose of that variation, when regarded in connection with the elaborate simulation in every other respect — was, not to communicate a truth, but to escape the penalty of a falsehood. "A fraud was designed" (to use the language of the same learned judge) ''an " attempt was made to reahze an unlawful " gain, but it was apparent that the variation " in the label was made, in the delusive belief " or hope, that thereby, an injunction might be " avoided, and a claim for jDrofits, or damages, " might be repelled." But, this is a violation of the right of property in a trade mark, which, upon the principles estab- lished as the basis of the protection which the law extends to such property, will be suppressed, by the extraordinary powers of a court of equity, and its fruits intercepted and restored. Third — A violation of property in a trade mark, consists, not only in a false representation — and a TRADE MARKS. 215 false representation by a copy or imitation of those letters, words, marks, signs, symbols or devices, wliicli another has appropriated, and had a right to appropriate, as designating his manufactnre, and distinguishing the same from all others — but, in the third place, it must be such a false representa- tion, and such a copying, imitation, or colorable imitation, as is calculated to mislead and deceive, and induce the belief that the goods to which the simulated trade mark is affixed, are the goods of the true owner of the trade mark. Upon this point — the question which first pre- sents itself, is — who are the persons to be misled, by the false representations and the deceptive imitations 1 Are tliey dealers in the article 1 Per- sons who purchase to sell again l Are they con- sumers, the public generally 1 Are they persons who exercise caution, prudence and intelligence in then" business affairs — and are not likely to be easly misled — or are they the incautious — the ignorant and unwary 1 There does not seem to be any question as to the true principle here involved. The injury, threatened or committed, by the violation of the right of property in a trade mark, is the unlawful appropriation of the j)rofits, which, of' right, and in justice, belong to him, who by his 216 THE LAW OF superior skill, industry, energy or entei'prize, has established a reputation for his goods, and caused them to be known and sought for, under a particu- lar designation — and also, the injury, threatened or committed, (where, as in most cases, the goods of the imitator are of an inferior value or quality,) to the established reputation of the original manufac- turer, the inferior article, being mistaken for his. Now, it seems to us, obvious, that the question, who are the persons to be misled or deceived — has reference altogether to the extent of the injury tlu-eatened or inflicted. It cannot be any the less a wrong — because very few persons, in a compara- tively unimportant class, can be, or are at all likely to become, subjects of the deception. If the copying or imitation of the trade mark of another, be made, in such a manner as to be manifestly designed and calculated, to deceive any one, it matters not if he be the most unwary, care- less or illiterate purchaser, precisely to that extent, it is a wrong, demanding the interposition of the law, in its redress. Such has often been declared to be the true principle, upon which the jmisdiction of the comis is invoked, for the protection of property in trade marks. In the application of this principle it will be TRADE MARKS. 217 found, that the authorities are not entirely har- monious. Precisely as learned judges are disposed to regard with favor and encoui-agement, this peculiar character of property — or, on the contrary, are inclined to consider it an encroachment upon natural rights, and an obstacle to honest competi- tion, do we find them granting or withholding equitable relief, by their views of the nature and extent of the deception, wliich the alleged simu- lated trade mark discloses. In Croft vs. Day, 7 Bea., 84 — Lord Langdale declares the test to be : " Whether the contrivances of the defend- " ants were calculated to mislead the bulk of " the unwary public." And in Craivshay vs. Thom^'ison, 4 Man. & Gr., 357 — substantially the same test is laid do^vn by Mr. Justice Maule, thus : " The question was, whether the defendants' " marks have so close a resemblance to the " plaintiff's, as to be calculated to deceive the " unwary, and to injure the sale of the plain- " tiff's goods." In Welch vs. Knott, 4 Kay & Johns., 747— the plaintiff was a manufacturer and vendor of soda water in bottles — labeled, 28 218 THE LAW OF " Schweppe & Co., 51 Berners St., Oxford St — Genuine Superior Aerated Waters." The labels were colored and pasted over corks — , Connected vnth the above words was a fac simile sig-natm-e — "J. Schweppe & Co." — with the addi- tion — '* By special appointment," and upon the label was the figure of a crown, &c. The defendant sold soda water in bottles — stamped like the plaintiff's, A label of a similar color, was pasted over the cork. On this label was printed, instead of "J. Schweppe & Co.," the words " Soda Water," in characters similar to those in which the signatm'e was printed on the plaintiff's label — a similar crown — with the other devices, were on the defendants' label. The resemblance was so close, as to deceive the eye upon a casual observation — but a close inspection would disclose the dissimilarities. Yet, upon these facts, the learned Chancellor, (Cranworth) refused the injunction prayed for, in the absence of extrinsic proof " That the defendants had used the label on " their bottles, with the intent — or so as in " fact, to mislead the public." In the case of Partridge vs. Menck, 2 Sand. Ch. R., 622, the facts as they are reported, in relation TRADE MARKS. 219 to the imitation by the defendant, of the i)lain- tiff's label, upon his boxes of matches, were even stronger, as evincing a manifest design to mislead and deceive, than in the case of Welch vs. Knott. Certainly, nothing but such a design, could have induced the copying by the defendant, upon his label, among other things, of the figure of a bee- hive — which was a prominent feature in the label of the plaintiffs. Yet, uj)on careful examination, and especially on the removal of the lid or cover of the box, containing the matches, dissimilarities were discoverable. The learned yice-Chancellor (Sandfoed) denied the injunction, and in doing so — uses the follow- ing language : " Altllo^^gll tlie court will hold any imitation, " colorable, which requires a careful inspection, " to distinguish its marks and appearances, " from those of the manufacture imitated, it " is certainly not bound to interfere, where " ordinary attention, will enable a purchaser " to discriminate. " It does not suffice, to show that persons " incapable of reading the labels, might be " deceived by the resemblance. " It must appear that the ordinary mass of " purchasers, paying that attention, which such " persons usually give, when buying the article " in question, would probably be deceived." 220 THE LAW OF. This decision was sustained by the Chancellor, [Walwokth,] on appeal — and the language of the learned Vice-Chancellor has been often quoted, with approval, in subsequent American decisions. In the case of The Merriinac Manufacturing Company vs. Garner, 2 E. D. Smith, 387 — the decision of the majority of the Court of Common Pleas of the city of New York, in accordance with, and based upon, that of Partridge vs. Menck, denied the injunction prayed for, where the facts seemed to warrant the conclusion that the defendants had deliberately contrived their trade marks, upon the goods of their manufacture, with the fraudulent design of passing them off as the goods of the plaintiffs' manufacture. " Courts are not bound to interfere," — says the learned judge, in giving tlie opinion of the majority of the court — "Where ordinary " attention, will enable a purchaser to discrimi- " nate." An injunction in that case had been granted in the first instance, by Mr. Justice Woodkuff (now of the Superior Court of the city of New York) and his very able opinion given on the hearing before him, was adopted as his dissenting opinion, on the appeal to the full bench. The current of authority upon this point — as tradp: marks. 221 we have seen by tlie cases heretofore reviewed, cannot be regarded as sustaining the views expressed by Vice-Chancellor Sandford — and affirmed in the cases we have cited — and it cer- tainly would seem, upon a careful consideration, that such views, however they may at first appear reasonable and just, are not altogether consonant with the liberal and benignant policy of the law, in protecting property in trade marks. Why should courts withhold then- protection, or refuse to interfere, " where ordinary attention will enable a purchaser to discriminate "?" Upon an examination of the numerous reported cases of alleged violation of property in trade marks, both in the English and American books, it will be found that, in the large majority of instances, the studied design of the fraudulent trade mark imitator, has been, so to contrive his similitudes as to be enabled to say : " Had you been but ordinarily attentive, as " a prudent man always should be, you would " have discovered the dissimilarities, and have " escaped deception ; " — at the same time that his cunning simulations, have all the while been contrived and ingeniously designed, and directed, to accomplish the precise purpose, of diverting all attention from the discrim- 222 THE LAW OF mating dissimilarities — and administering a fatal narcotic to ordinary prudence. The fraudulent imitator is perfectly willing to hazard the detection, which his half concealed marks of dissimilarity, may enable those to make, who are not thrown off then' guard by his skilful simulations, for the sake of the profits which he reaps from those whose attention he succeeds in diverting, and whose piTidence he lulls to sleep. It certainly seems to us, that a rigid application of the doctrine of the case of Partridge vs. Menck, would result in a denial of all effectual rehef in the large majority of cases of pu-acy upon trade mark property. The better doctrine — that which harmonizes with the true policy of the law, and is sustained by the weight of authority, is — that, wherever, upon the face of a label or trade mark, it appears to have been the manifest design, to effect a simili- tude, with an original label or trade mark — so that deception may result, and the goods of the imitator be therehy sold as and for tliose of the true owner of the trade mark — whether such deception might or might not be avoided, by the exercise of ordinary attention and prudence — an injunction should issue. Upon any other doctrine, the puate upon trade mark property, is enabled to base his claim to TRADE MARKS. 223 impunity, upon those very weaknesses of a credu- lous public, to avail of which, were the precise pm-pose and calculated result of his fraudulent contrivances. Should it come to be understood, that, without fear of the law's restraint or redress, one might appropriate to himself, the gains and profits to which another is justly entitled, by the simulation of his trade mark, upon the spurious goods of the wrong doer's manufacture — provided that the simulation be so ingeniously modified, or palliated, as to contain some points of dissimilarity, which may be detected, and enable the purchaser to discriminate between the true and the false, by the exercise of common prudence and ordinary atten- tion — property in trade marks will no longer be protected — for then, every simulation will be thus characterized, as nearly every one is at the present time. If it be, that the doctrine of the cases of Partridge vs. Menck, and The Merrbnack Maufac- turing Company vs. Garner, was adopted from a supposed application of the rule of caveat emptor, the error lies in an incoiTCCt discrimination of the person, against whom the wrong is committed, in the violation of trade mark property. It has never been doubted that an action will 224 THE LAW OF lie at the suit of the purchaser of goods of a spurious character, or inferior quahty, against the fraudu- lent imitator of an original trade mark, who by his colorable imitations, has inveigled him into the pmxhase, on the supposition, that he was buying the well known goods of the genuine manufactm'er. Such was, undoubtedly the early case in the Year Books, of the Gloucestershh^e Cloth Merchant — reported in Cro. Jac. But even in such an action, the rule of caveat ejnptor, however rigidly it may be enforced, in cases where it may be apphed without a violation of the fii'st principles of justice — could not be invoked for the protection of him, whose fraud consists in ingenious and successful contrivances, to the end, that the pm'chaser shall not take care. By way of illustration, — take the facts of the case of Partridge vs. Menck — and suppose that a pur- chaser of the spurious matches of Menck, believing them to be the genuine matches of " Golsh," should bring his action on the case to recover damages for the deceit practised upon him by Menck. The defendant says — "True it is, that the label upon the boxes containing the spmious matches that I sold to the plaintiff, was made to imitate that, upon the boxes of matches which he had previously pm'chased as those of ' Golsh.' " TRADE MARKS. 225 It contained the beehive, and the other devices, arranged in the same manner as in the original labeL It also contained in large letters, of the same character, the name "A. Golsh" — but if the plaintiff had but raised the covering upon my boxes, he would have found over the words " A. Golsh" the words — "manufactured by Menck, late chemist for" — and, although in smaller type than the words "A. Golsh," yet, "perfectly plain and distinct, and printed in type only a trifle smaller than the capitals used in our recent published reports." To be sure, I intended to deceive the plaintiff — but he should not have been deceived. I designed that he should not take care — but he should have taken care. My contrivances were calculated to lull suspicion, to divert attention, — but he should have suspected — ordinary attention and common prudence would have enabled him to detect my contrivances, and avoid the deception — but such attention and prudence has not been exercised, and I invoke, on my behalf, that iiile which declares that the law will not take care of him who refuses to take care of himself." Without any very violent presumption, a person capable of committing such a fraud, may be sup- posed to be possessed of the requisite effi'ontery to seek impunity for the offence, at the hands of a 29 226 THE LAW OF court of justice, upon such grounds as these — but we should unwilKngly beheve that he would be able to find any respectable counselor of the coui't, willing to hazard his professional repute by the serious inteiiDOsition of such a defense. If, then, the doctrine of caveat eiwptor, be wholly inapplicable, in such a case, even at the suit of the purchaser himself — how much less applicable is it — where redress for the wrong is sought by him who could not have avoided the injury, by any care, prudence or attention on his part — and whose damage, by reason of the wrong, is, by many degrees greater, than that of the misled pm*chaser. If the wrong doer may not defend the wrong, as against the purchaser whom he has deceived, by saying, " If you had exercised ordinary attention, you would have escaped the deception " — still less should he be able to do so, as against the owner of the trade mark — whose profits he has appropriated, and whose reputation he has injm'ed, by sajdng, " If this party, this careless pm-chaser, whom you did not know, and could not control, had been a man of common prudence and sagacity, and had exercised ordinary attention, I should not have succeeded in my contrivances to pass off upon him my infenor and spmious goods, as and for your manufacture, and you would then have escaped the TRADE MARKS. 227 injury, which my fraud was designed to inflict upon you." If these views be not altogether iUusory — then, the administration of justice in the protection of trade mark propert}^, in accordance with the true policy of the law, can be predicated only of a strict adherence to the doctrine which declares that : " Whenever, upon the face of a label or " trade mark, it appears to have been the " manifest design, to effect a resemblance to " the label or trade mark of another, so that " deception may result, not as a probability " merely — but as a possibility — and the goods " of the imitator may be thereby sold, as and for " those of the true owner of the trade mark — " an injunction ought to issue — whether the " deception that has produced or might pro- " duce this result might or might not be, or " have been, avoided, by the exercise of ordi- " nary attention and prudence." What, under the circumstances of any particu- lar case — should be considered and held to be sufficient evidence of " ordinary attention " or "common prudence " — would open a wide door for discussion, and the adoption of such a test, as the basis of the equitable jurisdiction of the court — would remove all limit to the exercise of an arbitrary judicial discretion. 228 THE LAW OF But, whether a particular trade mark, alleged to be a fraudulent imitation of another, discloses upon its face, any of the badges of simulation, or whether it be an honest designation, indicating that he who has adopted it, relies only upon the intrinsic merits of his goods, for his success in their sale, is — ordinarily of easy determination. Whenever an imitation is apparent, of any por- tion of the trade mark of another, which has been used by him to designate the merchandise to which it is affixed, as his manufacture, it is per- fectly safe to say — that such an imitation has not been made with an honest object. The honest competitor, who relies solely upon his own skill and industry and enterprise, does not require a resort to simulated devices, or names or marks. His aim and purpose is, so to present his mer- chandise in the market, that it shall be known as his, and never, by any chance, be sujDposed to be that of another, and thus the public be left free to choose between articles avowedly of different origin. TRADE MAKKS. 229 The right of property in trade marks, may- be violated — by the printer, engraver or other mechanic, who prepares the forged or simulated label, brand or mark — as well as by the fraudu- lent manufacturer or dealer, who causes it to be prepared, or adopts and uses it upon his merchan- dise, and such violation may in like manner be prevented or redi'essed, by proceedings in equity or at law. The recent case of Farina vs. Silverlock, 4 Kay & Johns., 650, — is in point, as illustrative of this salutary doctrine. The defendant was a printer, and as such, pre- pared certain labels, in colorable imitation of those used by the plaintiff, upon his bottles, containing the celebrated liquid, known as " Farina's Cologne." These labels were sold by the defendant, to any person applying for them, although it was pre- tended that they had been purchased in good faith by persons, for the purpose of being applied to the bottles containing the plaintiff's own manufac- ture, from which the labels had been lost. But the learned Lord Chancellor ordered an injunction to issue, notwithstanding the possibility that some of the labels might have been purchased, bona fide — and says : 230 THE LAW OF " The ground of tliis equity is — that the " defendant, by knowingly printing labels, in " imitation of the plaintiff's trade mark, and " selling them to any one who asked for them — " was supplying the means of committing, and " was thus a party to, frauds, which courts of " equity, will interfere to stop at their source^ The injury inflicted by the invasion of trade mark property, is by no means limited to the wrongful appropriation by the fraudulent manu- facturer or dealer, of the pecuniary profits which of right appertain to the true owner of the trade mark, whose merchandise the pm'chaser believed himself to be buying". In many cases, by far the greater injury which ensues, results from the loss of that good name and reputation, which the original manufacturer had acquired for his merchandise, by his superior skill and industry, as well as by his integrity— ra repu- tation which is, in one sense, the good will of his business — inspiring and retaining the public confi- dence, and thereby secm-ing a constant demand, and ready sale, for his productions. The fraud, and falsehood, and forgery, of him who copies or imitates his trade mark, and, placing it upon a spurious or inferior article, induces a public belief that the spurious article is the manu- facture of him in whom they had theretofore TRADE MARKS. 231 reposed so much confidence, is, in effect, a robbery of his reputation, which, imchecked, must end in the withdi'awal of pubhc confidence, and the con- sequent destruction of his estabhshed business. It is undoubtedly true, that in some instances, the article to which the simulated trade mark is attached, may be equal in quality and value, to that of the established manufacture — the pm-pose in such case, being", to avail of a reputation already acquired, to facilitate sales, and the more speedily to realize profits. It is obviously quite immaterial to the determi- nation of the question whether an injunction should or not issue, in a case of alleged invasion of trade mark property — to ascertain the relative merits of the respective articles of merchandise. Wherever it is made to appear, by inspection or extrinsic proof, that the trade marks of a manu- facturer or dealer, have been copied or imitated, upon the merchandise or manufacture of another, the law presumes it to have been done, with the fraudulent intent and purpose, of inducing the public, or those dealing in the article, to believe that the goods falsely designated, are those of the original manufacturer, and of thereby supplanting him in the good will of his trade or business. No proof, that the merchandise to which the 232 THE LAW OF simulated trade mark is attached, is equal, or even superior, in quality and value, to that of the true owner of the designating brand, can tend to rebut, or diminish the force of this presumption. We therefore find, that courts of equity, uni- formly refuse to consider the question of superior or inferior quality — or to allow any evidence to be given upon the subject. Wliere, however, redi-ess for the wrong inflicted, is sought at law, in the form of pecuniary damage, the question of the true character of the article which has been passed off as that of the plaintiff, by means of the fraudulent trade mark, may become of vital consequence. It is not doubted, that a jury, in determining the amount of then* verdict, to which a party plaintiff in a trade mark action, may be entitled, by way of indemnity for the wrong inflicted, not only have a right, but are in duty bound, to take into con- sideration the natural and probable consequences of the wrong, as affecting the good name and reputation, and therefore the good will, of the plaintiff's business — and to this end, proof of the spurious or inferior character of the merchandise that has been fraudulently represented as his — may be pertinent and material. TRADE MARKS. 233 Actions at law, for the recovery of damages, as indemnity for an invasion of trade mark property, are comparatively of rare occurrence. The most appropriate, as well as the most efficient remedy, in the large majority of cases, is that relief, Avhich it is the peculiar province ot courts of equity to afford, (in the language of yice-Chancellor, Sir W. Page Wood) " in the fonn of preventive justice, in order to make more effectual a legal right." " The legal right is that which any person, " designating his wares or commodities by a " particular trade mark, as it is called — has — ' " to prevent others from selling wares which " are not his — marked with that trade mark — " in order to mislead the public — and so inci- " dentlj, to injure the person who is the owner " of the trade mark." The remedy in equity for a violation of trade mark property, is not only effectual — as operating to restrain by injunction the continuance of the wrong — but, jmisdiction being once assumed, to this end, it will be exercised to make the remedy complete, and to avoid a multiplicity of suits — by a final decree of pecuniary indemnity — the amount 234 THE LAW OF of wliicli it will determine, if need be, by order- ing a discovery of the evidence in the defendant's possession, contained in books of account, or other- wise — by compelling the rendition of a full and true account by the defendant, of all the sales of the merchandise made by him, marked with the trade mark of the plaintiff, or a colorable imitation thereof — or by reference to a master, or other person, on the application of the plaintiff, to ascer- tain and report the amount of his damages {vide Knott \^. Morgan, 2 Keen, 213; MiUingtonY^.Fox, 3 Myl. & C, 338 ; Bailey vs. Taylor, 1 Rus. & M., 73 ; Whittington vs. Wooler, 2 Swanst., 428 ; Delondre vs. Shaw, 2 Sim., 237 ; Bramhall vs. Hal- comh, 3 Myl. & C, 737 ; Clement vs. Maddicks, 22 Law Rep., 428 ; Stern vs. Carlan, 13 Law Rep., 360; Bell vs. Locke, 8 Paige, 275 ; Taijlor vs. Car- penter, 2 Sand. Ch. R., 611, 612). That the extraordinary powers of courts of eqviity, in restraining by injunction the disposition of articles of commerce, under particular designa- tions, should be exercised with great caution — so as neither to jeopardize general or individual interests — nor to invade the principles and policy of the law, upon which the right of protection is based — will not be denied. But, while on the one hand, such caution should TRADE MARKS. 235 be at all times observed — on the other — it should never be allowed to degenerate into that timidity, which may end, in regarding all cases . as invested with circumstances of doubt, sufficient to require the establishment of the legal right in a court of law — before restraint by injunction should be granted. We have already had occasion to consider this subject at some length, in connection with a review of the opinion of the court in the case of Partridge vs. Menck, when before the Vice-Chancellor, and on appeal to the Chancellor of New York. It is an important subject — involving, as we con- ceive, the whole question of the effectual adminis- tration of preventive justice' — in the protection of the right of property in trade marks. The subject here again arises, as a natural incident to that we are now considering, namely : the remedy for a violation of trade mark pro- perty. Having referred to the American case of Pa7- tridge vs. Menck, as inculcating doctrines, which, if once established, we apprehend would operate as a fatal barrier to the only available and effectual relief in cases of trade mark piracy, in this connec- tion, we refer to the English case of Spottisiooode vs. Cla7-k — 10 Lond. Jur. Rep., 1043 — as illustra- 236 THE LAW OF live of what we cannot avoid regarding in this respect, as containing an expression of conclnsions which can hardly fail to lead to, and tenninate in, a like result. The plaintiff in the case of Sjyottiswoode vs. Clark, was the proprietor of a publication called "The Pictorial Almanac," for 1847, having been pre- pared, and being about to be issued, for that year, in continuation of a series, of the like publication, prepared and issued for the preceding years — each having the like external appearance. The cover was decorated with a pictorial representation of the Greenwich Observatory. The title was printed upon the cover, together with words descriptive of the character and contents of the publication — and in size, color and arrangement, the almanac of each year bore an exact resemblance to that of the preceding year — with the exception only of the figm'es forming the date. The defendant had prepared an almanac for the year 1847, and was about to issue the same, which he called " Old Moore's Family Pictorial Almanac." The contents of the respective almanacs were dis- similar — but the cover prepared for that of the defendant, was almost an exact resemblance of that of the plaintiff — having the same pictorial repre- sentation of the Observatory at Greenwich, the TRADE MARKS. 237 same title and description of contents, in the same words, and printed in the same ^yle. This imitation, it was averred, was intentionally adopted to deceive the public, by inducing the belief that the defendant's almanac was the true continuation of the plaintiff 's series — and thus to injui'e the sale of the plaintiff's publication, by a wrongful appropriation of his patronage. The Vice-Chancellor of England, upon these facts, granted an injunction to restrain the defend- ant, " From selling any almanacs, bound in paper ' wrappers, or covers, or other wrappers, or ' covers, with the title, ' Pictorial Almanac,' ' printed thereon, or having any other title ' printed thereon, so as, by colorable represen- ' tation, or otherwise, to represent the almanacs ' printed and sold by the defendant, to be the ' same as those printed and sold by the plain- ' tiff, for the year 1847." On a hearing, upon the pleadings and proofs, the Vice-Chancellor denied a motion to dissolve the injunction — and an appeal was taken before the Lord Chancellor. Upon the appeal, and without calling for a reply to the argument in favor of the injunction, and for the affirmance of the Vice-Chancellor's decree, the Chancellor (Lord Cottenham,) dissolved the injunction. 238 THE LAW OF His opinion and reasons for this conclusion, are substantially as Mlows : " These cases depend so mucli on their own " circumstances, that all that the court can do, " is, to lay down principles under which such " cases may fall. " I have, before this, had occasion to express " an. opinion, that unless the case be very clear-, " it is the duty of the court to see that the legal " right is ascertained, before it exercises its " equitable jurisdiction. For this there are " good reasons. " The title to relief depends on a legal right, " and the court only exercises its jurisdiction " on the ground that the legal right is estab- " lished" Tliis is, unquestionably, tlie established doctrine. It is as distinctly laid dovrn by the same learned Chancellor in the earlier case of Motley vs. Down- man, 3 Myl. & C, 1 — and has since been repeatedly recognized and affirmed, both in English and American decisions. But, was not the legal right of the plaintiff Spottisicoode clear and undeniable l Is there any doubt, that a proprietor of a periodical publication, has a legal right to prevent another publisher, from issuing a publication of the like general character, so prepared in external appearance, as to be an exact resemblance of that TRADE MARKS. 239 of the original proprietor, and to induce the public belief, that it is the true and genuine publication, in continuation of the series 1 This was expressly held in the case of Hogg vs. Kirhy, 2 Ves., 22G, in which Lord Eldon declared, that "the publication by the defendant, of what purported upon its face, to be, or bore the external semblance of being, a continuation of the magazine of the plaintiff — was such a fraud upon the good will and patronage of the plaintiff's periodical work, as to call for the interference of a Court of Chancery." In the American cases of Snoivden vs. Noah, Hopkins, 347 — and Bell vs. Locke, 8 Paige, 74 — the same doctrine was distinctly affirmed, — so that, in a case like that of Spottiswoode vs. Clark, there would seem to be no doubt as to the plaintift''s legal right. The learned Chancellor proceeds : " One objection to granting an injunction in " the first instance, is, that it promotes after " litigation — the order either grants an injunc- " tion, and compels the plaintiff to bring his "action — or suspends the injunction, with " liberty to the plaintiff to bring an action. " If you compel him to go to a court of law, " you promote litigation, and this course is " forced upon parties, at a time when their 240 * THE LAW OF " feelings are deeply engaged in prosecuting " tlieir imaginary rights." If the effect of granting an injunction in the first instance, were, to promote after litigation, it would indeed be a very serious objection — but sui'ely, the experience of courts of equity, in con- troversies of this nature, abimdantly proves the truth of the converse of this proposition. Why is the plaintiff compelled to bring his action at law, as a consequence of granting the injunction 1 This, to be sm'e, is all that he can do, if an injunction be denied him, and he determine upon a further prosecution of his rights, but if an injunction be granted, in the great majority of trade mark controversies, the protection which that restraint affords, is all the remedy, and the entire relief, that is desired. The efforts of the defendant are directed towards procuring a dissolution of the injunction. To tliis end, he brings to his aid all the facts and. circumstances, which he could invoke in his behalf — in the defense of an action at law — and failing to accomplish this object, the liti- gation, as a general consequence, there terminates. In the case before the Lord Chancellor, an injunction would have been the plaintiff's adequate and complete relief — and the necessity of any after litigation at all, could only have been the TRADE MARKS. 241 consequence of a denial of the injunction, thereby- enabling the defendant to commit the alleged wrong — and competing the plaintiff to seek redress in damages. The Lord Chancellor proceeds : " There is another objection, which is, that " the court expresses a strong opinion, (and it " ought to be a strong opinion,) and then sends " the right to be tried. I think it better that " the court should refrain from expressing such " an opinion." It is obvious that this objection must apply to all cases, alike, and with the like force — if, in truth, there be any force in the objection. But we cannot, we confess, perceive the neces- sity — in the event that the defendant persists in the trial of the legal right, notwithstanding the granting of the injunction by one cornet, and the refusal to dissolve the injunction by another, and an appellate tribunal — of such decision, exercising the slightest influence in the determination of the right, on the trial of the action at law. But suppose that such decision could properly and legitimately be brought before the com't and jury upon the trial, to influence their deteimina- tion — is it not obvious, if the injunction prayed for is denied, or is dissolved after a hearing, in 31 242 THE LAW OF which the plaintiff presents all the evidence that his case allows — that the court, by such decision, expresses an opinion adverse to the right, just as strong, and calculated in like manner, to influence the determination of the issues in the trial of the legal right — against the plaintiff's claim? It certainly seems to us, that if an objection of this nature, be allowed to have any weight at all — precisely to that extent, it must paralyze the arm, in whose strength rests the strong hope of succor and protection, against fraudulent invasions of property in trade marks. " But, after all," says tlie Lord Chancellor again, " the chief objection is, that the court " runs the risk of doing the greatest possible " injustice. Consider what would be the result " in this case. If this publication is not per- " mitted to be issued within the next month, " the principal sale will be lost. This is clear. " It is an almanac for 1847 — and therefore, to " restrain the defendant till after the Spring " Assises — what use would it then be to him, " if he was found to be in the right? You " would take money out of his pocket, and " give it to nobody, and at the same time, a " great and irremediable injustice might be " committed." The answer to all this, is obvious, and is simply this — The plaintiff did not seek to restrain the TRADE MARKS. 243 defendant's publication, at all, but only to prevent his sending it forth, with such a cover or wrapper upon it, as would inevitably accomplish the fraud- ulent purpose manifestly intended — namely, to induce the public to believe that it was the plaintiff 's almanac — and therefore purchase it, as such. And such — and such only, was the Vice-Chan- cellor's injunction, which the learned Chancellor dissolved. To prevent the plaintiff from using a cover for his almanac containing a pictorial representa- tion of the Greenwich Observatory, with title, printing and devices, in substantial resemblance to that used by the plaintiff, was surely no restraint upon the defendant's publication — nor could it be regarded as any hardship upon the defendant, that he should be compelled to adopt a different cover — so that his publication should rest upon its own merits — and not be allowed to depend upon false tokens or misleading representations. " As to the particular facts of tlie case," the Lord Chancellor says : "If the parties " separately sat down to invent a wrapper, " there is certainly a remarkable coincidence " in what they have produced. Both covers " represent a portion of Greenwich Observa* " tory, and profess the work to be, for all sorts 244 THE LAW OF " of persons. It is difficult to believe that all " this is accidental." In other words, the Lord Chancellor did not believe that the defendant's cover bore an acci- dental resemblance to that of the plaintiff — but on the contrary, that it was an intentional imita- tion — if an intentional imitation, then the dishonest and fraudulent purpose is a legal presumption — and this being so, and the right of the plaintiff being unquestionable — it seems to us that this was pre- cisely the case in which the injunction, to the extent for which it was granted by the Vice-Chan- cellor, should have been unhesitatingly sustained. In actions at law for the violation of the right of property in trade marks, where redress is sought in damages — what should be the measure of damages, or the rule by which the amount as adequate indemnity should be determined, m the event that the plaintiff's right is established, is open to discussion. We are not aware of any case in which the question has arisen and been expressly determined. TRADE MARKS. 245 In Blqfield vs. Pmjne, 4 Barn. & Adol., 410, the court held, that wherever the phxintiff has a verdict, he is entitled to some damages, even in the absence of any proof of actual damage. The order usually made by Com'ts of Chancery, that the defendant keep an account of the sales made by him, of the merchandise bearing the alleged simulated trade mark — to the end, that he pay over to the plaintiff the profits resulting from such sales — would seem to indicate a rule of damage. But, in many — and indeed in most cases — such a rule would be an imperfect one — because the damage actually sustained, as the result of an infringement of a trade mark — (we mean, of course, where the loss of reputation does not enter into the account — by reason of the simulated article being of a spurious and inferior quality) — is rather, the loss of the profits which the plaintiff would have realized, by the sale of his merchandise, and which he has been prevented from making, by the fraudulent acts of the defendant, than the amount of the profits actually realized by the defendant. It would, unquestionably, be more easy to ascer- tain the precise sum of the defendant's profits, than to determine that of which the plaintiff has been deprived. 246 THE LAW OF The extent to wHch the defendant's wrongful acts has actually diminished the demand for, and the sale of, the plaintiff's productions, would, in most instances, be merely conjectural, and quite beyond the scope of positive proof. But, wherever that extent can be ascertained by evidence — or wherever a reasonable approxima- tion to it can be had — the plaintiff's indemnity would be better assui-ed by the application of such a rule of damage. The rule of Courts of Chancery, by which a fraudulent defendant is compelled to account for and pay over to, the plaintiff, the profits which have resulted from his sales, is doubtless predicated upon the idea that such profits represent the gains which the plaintiff would have realized but for the defendant's wrongful acts. But in many, probably in most cases, such an idea would be exceedingly fallacious. The civil remedies for the violation of property in trade marks, whether at law or in equity, afford but little protection to the public against the frauds TRADE MARKS. 247 and impositions of those who dress their spmious goods in the guise and habihments of the honest maniifactiu'er, in order to pass them off upon the unsuspicious consumer. The easily won profits that flow from such an appropriation of the reputation of another, present too powerful a temptation to the unscrupulous, to be overcome by the apprehended possibility of being stripped of their disguises, and compelled to relinquish their ill-gotten gains, as the consequence of a costly litigation. Hence it is, and to mark with the strongest terms of reprobation, the turpitude of an act of invasion upon the trade marks of a manufacturer, that legis- lative enactments, like that of the State of New York, (R. S., part IV., title 6, chap. 1, sec. 49,) declare it to be a misdemeanor, punishable by fine and imprisonment, "to forge or counterfeit, or cause to be forged or counterfeited, any representation, likeness or similitude, copy or imitation of the private stamp, wrapper or label usually affixed by any mechanic or manufacturer on his goods, wares or merchandise, or in the sale thereof, with intent to deceive or defraud the purchaser, or manufac- turer, of any goods, wares or merchandise what- ever." AYe do not remember to have seen a report of 248 TKE LAW OF any prosecution under this or any similar penal statute, but, the policy of such enactments, and the necessity of then- rigid enforcement, in all proper cases, cannot fail to be fully acknowledged by all who have a just appreciation of the great impor- tance to the public interests as well as to individual rights, of maintaining inviolate, that peculiar pro- perty which serves to designate and identify the goods, and wares, and merchandise of the artisan, the manufacturer, and the merchant, which minister to the constant necessities of all, and which furnish the sole assurance and guaranty of their genuine- ness, purity and integrity. TAJ3LE OF CONTENTS. CHAPTER I. Page. Of the Nature and Character of Property in Trade Marks, 9 Earliest judicial records of recognition of property in trade marks, 10 Powers of courts of equity first exercised for its protection, .... 13 The peculiar characteristics of property in trade marks, as dis- tinguished from copyright, , 14 The increased value and importance of trade mark property, and the necessity for its adequate protection, 16 CHAPTER 11. By whom Property in Trade Marks may be acquired, 19 By aUens equally with citizens, 19 Property in trade marks, inseparable from a property in the mer- chandize designated, 22 May belong to the dealer as well as the manufacturer, 23 Exclusive right to the proper name of an article of merchandize as a trade mark, can be possessed by such only as have an exclusive right to make or sell the specific article, 23 Wliether the proprietor of a particular place of manufacture may thereby become possessed of an exclusive right to trade marks connected therewith, 27 Such a doctrine in conflict with the policy of tlio law, 28 Property in trade marks, protected only in the possession of the honest manuflicturer or dealer, 3Q Forfeited by fraudulent dealings and representations, 31 250 CONTENTS. CHAPTER III. Page. Of the manner in which Property in Trade Marks may be acquired, 46 By original adoption, appropriation and use, 47 Extent of the originality, required, 48 Property acquired by transfer, 52 Whether transfer of the " good will " of an establishment carries with it the right to the name by which it has been known as a trade mark, 54 Eeview of case of " Howe vs. Searings" 55 The case of " Compere vs. Bajou," 72 Transfer of the exclusive right to manufacture or sell, carries with it the exclusive right to the use of the name as a trade mark, 80 Property in trade marks acquired by operation of law, 81 To whom it goes on dissolution of partnership possessing it, by decease of one of the partners, 82 By bankruptcy, 83 CHAPTER IV. Of the REQUISITE COMPONENTS OF TrADE MaRKS TO ENTITLE THE Manufacturer or Merchant by whom they are adopted and appropriated to protection in their exclusive use AS Property, 85 Statement of general principles, 86 In their application, protection extended to innkeepers, to the exclusive right to the name of hotel, 90 To proprietors of carriages, coaches and lines of omnibuses, 91 To proprietors of places of public amusement, 93 To proprietors of periodical pubhcatious, magazines, newspa- pers, &c., 93 The true purpose and policy of the law, stated, 97 The purpose and policy of the law requires that the trade mark entitled to protection, shall designate the origin and owner- ship of the manufacture, 98 This principle illustrated by the authorities, 100 Cases in which an application of the principle may deprive a manufacturer of the exclusive use of his own name as a trade mark, 105 CONTENTS. 251 Page. Generic names, and terms in common use to designate things or their quahties, not susceptible of appropriation to exclusive use, as trade marks, but only such as indicate the origin, ownership, or place of manufacture, 114 Review of the English cases illustrative of this principle, 116 Review of the American cases illustrative of this principle, 123 Statement of the principles established by the authorities reviewed, 136 Objections stated to the principles of decision of "Fetridge vs. Merchant," .158 Objections stated to the principles of the decision of "Burnett vs. Phalon," 4* 177 "Corwin vs. Daly," latest American case, illustrative of the estab-' lished principles, as to the requisite components of trade marks, to entitle them to protection as property, 187 CHAPTER V. Of the Violation of Trade Marks, and of tue Remedy for SUCH Violation, 202 What is a violation of a trade mark, 203 Fraudulent intent need not be proved, is a legal presumption from the proof of the fact of imitation, 204 If innocence of fraudulent design could be proved it would affect the question of costs in equity, 205 And perhaps, also, that of damages at law, 207 Character of the false representation essential to constitute a violation of trade mark property, 208 False representations by use or imitation of symbols, colors, or devices of any kind, not^Jcr se, indicating origin or owner- ship, or place of manufacture, but used in connection with and auxiliary to such names ; cases stated, as illustrative of the doctrine, 209 The false representation, to constitute an invasion of property in trade marks, must be such as is calculated to mislead and deceive, ■ 215 Statement of the principle as to the nature and character of the deception, and the essence of the injury thereby inflicted,. . 210 Whether the false representation, to constitute a violation of a trade mark, must be such as is calculated to deceive the "bulk of unwary purchasers" only, or such as may deceive any one, .... 217 252 CONTENTS. ' Faox. The latter considered the better doctrine, and objections stated to the principles of the decisions of " Partridge vs. Menck," and of " The Merrimack Manufacturing Company vs. Garner," . . 222 For the protection of trade mark property, courts of equity will proceed as well against those who, in any manner, aid and assist in the violation as against direct invaders, 229 The injury resulting from violation of trade marks, not always hmited to the wrongful appropriation of profits, 230 Injury to reputation of manufacturer or merchant by the sale of a spurious or inferior article, with the false or fraudulent designation, Question of the relative quality of the manufacture of the trade mark imitator, and of the manufacturer whose trade mark is imitated, wholly immaterial on appUcation for an injunction, 231 Materiality, as affecting the question of damage, 232 Eemedy in equity for the violation of trade mark property, the most efficient, appropriate and summary, 233 Necessity for the exercise of caution in extending the extraordi- nary powers of a court of equity for the protection of pro- perty in trade marks, 235 Danger of timidity in the exercise of equity powers over the subject, illustrated by the American case of " Partridge vs. Menck," and the EngHsh case of " Spottiswoode vs. Clark," 236 As to the measure of damage in actions for the violation of trade marks, 244 Violation of trade marks by statutes declared to be a misde- meanor, punishable by fine and imprisonment, 246 I I <:niiTu=r,M'i^®'^'*y °' California 30.5 r2"J^"i',^^^'°NAL LIBRARY FACILITY 305 De Neve Drive - Parking Lot 17 . 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