a^ 
 
 As 
 
 Al 
 
 OS 
 m 
 05 
 
 2 3 
 1 m 
 
 
 ,:Z
 
 DENNIS & 
 
 CO. 
 
 INC. 
 
 Law Book 
 
 Publishers 
 
 251 MAIN 
 
 STREET 
 
 BUFFALO 
 
 3, N 
 
 Y 
 
 
 UNIVERSITY 
 
 OF CALIFORNIA 
 
 LOS ANGELES 
 
 SCHOOL OF LAW 
 LIBRARY
 
 /
 
 THE LAW 
 
 OF 
 
 TRADEMARKS, TRADENAMES 
 
 AND 
 
 UNFAIR COMPETITION 
 
 INCLUDING 
 
 TRADE SECRETS; GOODWILL; THE FEDERAL TRADE- 
 MARK ACTS OF 1870, 1881 AND 1905; THE TRADE- 
 MARK REGISTRATION ACTS OF THE STATES 
 AND TERRITORIES; AND THE CANADIAN 
 TRADEMARK AND DESIGN ACT; WITH 
 FORMS. 
 
 BY 
 
 JAMES LOVE HOPKINS 
 
 SECOND EDITION 
 
 CHICAGO 
 
 CALLAGHAN AND COMPANY 
 
 1905
 
 COPYBIQHT 1905 
 BY 
 
 CALLAGHAN & COMPANY 
 
 T 
 
 M. H. VKSTAIi 
 
 BOOK COMPOSITION 
 
 CHICAQO
 
 pit: 
 
 
 AUTHOR'S NOTE. 
 
 Froude, in his essay on the Science of History, said, 
 "Opinions alter, manners change, creeds rise and fall, 
 but the moral law is written on the tablets of eternity." 
 In the law of trademarks is contained the first recog- 
 nition by the courts of the principle that no man should 
 be permitted to pass off his goods as those of another. 
 Does the fact that this department of our law is of so re- 
 cent origin import that, in the past, English speaking 
 traders were more honest in their dealings 1 The answer 
 to that question must be looked for in the pages of his- 
 tory. Even if Napoleon was correct in his assertion that 
 history was ''but a fiction agreed upon," it contains the 
 only evidence available for our purpose. Furthermore, 
 Buckle's theor}^ that history, though conflicting as to the 
 character and achievements of individuals, is still har- 
 monious as to the manners of a given period, leads us to 
 believe that the authors to whom we purpose to briefly 
 refer may, for the purpose of our inquiry, be deemed 
 authoritative. 
 
 Writing of the conditions existing in England during 
 the Anglo-Saxon period, JIume says "Wliatever we may 
 imagine concerning the usual truth and sincerity of men 
 who" live in a rude and barbarous state, there is much 
 more falsehood, and even perjury among them, than 
 among c'ivilized nations; virtue, which is nothing but a 
 more enlarged and more cultivated reason, never flour- 
 ishes to any degree, nor is founded on steady principles 
 of honour, except where a good education becomes gen- 
 eral; and where men are taught the pernicious conse- 
 quences of vice, treachery, and immorality. Even super- 
 
 lU 
 
 
 f\
 
 iv author's note. 
 
 stition, though more prevalent among ignorant nations, 
 is but a poor supply for the defects in knowledge and 
 education; our European ancestors, who employed every 
 moment the expedient of swearing on extraordinary 
 crosses, and relics, were less honourable in all engage- 
 ments than their posterity, who, from experience, have 
 omitted those ineffectual securities. This general prone- 
 ness to perjury was much increased by the usual want 
 of discernment in judges, who could not discuss an intri- 
 cate evidence, and were obliged to number, not weigh, 
 the testimony of the witnesses." 
 
 Daniel De Foe (whom Taine describes as *'one of those 
 indefatigable labourers and obstinate combatants, who, 
 ill-treated, caluminated, imprisoned, succeeded by their 
 uprightness, common sense, and energy in gaining Eng- 
 land over to their side") published in 1725 and 1727 his 
 book, ''The Complete English Tradesman," in which he 
 treats of the ethics of English trade. In that work he 
 refers to the "shop rhetorick" and "flux of falsehoods" 
 used by tradesmen in disposing of their wares, and the 
 common practice of keeping on hand a bag of spurious 
 or debased coin from which to make change. Charles 
 Lamb said this work was "of a vile and debasing ten- 
 dency." The French critic is probably the better judge 
 of De Foe> 
 
 In 1859 Herbert Spencer in his essay on "The Morals 
 of Trade," treats of the ethics of the same tradesmen 
 more than a century later. He refers to "the often-told 
 tale of adulterations," and says "It is not true, as many 
 suppose, that only the lower classes of the commercial 
 world are guilty of fraudulent dealing. Those above 
 them are a great extent blameworthy. On the average, 
 men who deal in bales and tons differ but little in moral- 
 ity from men who deal in yards and pounds. Illicit prac- 
 tices of every form and shade, from venial deception up 
 to all but direct theft, may be brought home to the higher
 
 AUTUOR S NOTE. 
 
 grades of our commercial world. Tricks Innumerable, 
 lies acted or uttered, elaborately-devised frauds, are 
 prevalent; many of them established as 'customs of the 
 trade'; nay, not only established, but defended. * * * 
 We cannot here enlarge on the not uncommon trick of 
 using false trademarks, or of imitating another maker's 
 wrappers. * * * Omitting the highest mercantile 
 classes, a few of the less common trades, and those ex- 
 ceptional cases where an entire command of the market 
 has been obtained, the unifonn testimony of competent 
 judges is, that success is incompatible with strict integ- 
 rity. To live in the commercial world it appears neces- 
 sary to adopt its ethical code; neither exceeding nor fall- 
 ing short of it— neither being less honest nor more hon- 
 est. Those who sink below its standard are expelled; 
 'while those who rise above it are either pulled down to 
 it or ruined. As, in self-defense, the civilized man be- 
 comes savage among savages; so it seems that in self-de- 
 fense, the scrupulous trader is obliged to become as little 
 scrupulous as his competitors. It has been said that the 
 law of the animal creation is— 'Eat and be eaten'; and of 
 our trading community it may similarly be said that its 
 law is— cheat and be cheated. A system of keen compe- 
 tition, carried on, as it is, without adequate moral re- 
 straint, is very much a system of commercial cannibal- 
 ism. Its alternatives are— Use the same weapons as your 
 antagonists or be conquered and devoured." 
 
 If the statements of those three writers are to be ac- 
 cepted as evidence, and they would seem to be the best 
 evidence, as to the ethics of trade in England at the sev- 
 eral periods referred to, it would appear that the present 
 condition of trade as to fairness in competition is far 
 more wholesome. That bettered condition must be at- 
 tributed largely to the judicial evolution of the principles 
 treated in this book. 
 
 In this conclusion, the author is supported by Sir Fred-
 
 vi author's note. 
 
 erick Pollock. In his First Book of Jurisprudence he 
 says, ^'Eules of law may well have, in particular circum- 
 stances, an effective influence in maintaining, reinforc- 
 ing, and even elevating the standard of current morality. 
 The moral ideal present to lawgivers and judges, if it 
 does not always come up to the highest that has been con- 
 ceived, will at least be, generally speaking, above the 
 common average of practice; it will represent the stand- 
 ard of the best sort of citizens. This is especially the 
 case in matters of good faith, whether we look to com- 
 mercial honesty or to relations of personal confidence. 
 With few exceptions, the law has, in such matters, been 
 constantly ahead not only of the practice but of the or- 
 dinary professions of business men." 
 
 Ethical evolution and organic evolution alike are ac- 
 complished slowly, and the possibilities of each are alike 
 limitless. From the days when the Anglo-Saxon judges 
 numbered the witnesses because of inability to weigh 
 their testimony, to the era when the requirement of fair- 
 ness in trade was established, the English-speaking peo- 
 ple have made immeasurable ethical progress. To that 
 progress, the science of law has made many contribu- 
 tions, and has been indispensible. 
 
 We are dealing in the subjects comprised in this book 
 with the highest ethical development of that which we 
 term the common law. The standard set for the regula- 
 tion of competition by the modem decisions evidences 
 the high degree of ethical development of the modem 
 judiciary. It is not to be expected that all of the decis- 
 ions should reach the same altitude as the foremost. To 
 say this, is merely to say that the judges who wrote the 
 opinions were not of equal ability and learning. It is 
 impossible that they should be. But on the whole, the 
 body of cases with which we here deal, forms the most 
 convincing proof which we have of the steady improve- 
 ment of the morals of trade, and the gradual extinction
 
 author's note. vu 
 
 of that "commercial cannibalism" of vrliicli Spencer 
 wrote less than fifty years ago. It is doubtful whether 
 jurisprudence lias, during any corresponding period in 
 the world's history, been of greater value to the advance- 
 ment of civilization than it has in dealing with the sub- 
 jects here considered, during the past half century. 
 
 It is a remarkable fact that in this department of the 
 law which has, less than any other, been hampered by 
 statutes and precedents, and which, more than any other, 
 rests upon a foundation purely ethical, there should be 
 found so great harmony between so many independent 
 jurisdictions, English and American. Such legislation 
 as has been effected in the United States has been desul- 
 tory and comparatively ineffective. Its most admirable 
 quality is its non-interference with common-law trade- 
 mark rights. 
 
 In submitting this more comprehensive work to the 
 profession, it is a subject of gratification to the author 
 that his former book entitled ''The Law of Unfair 
 Trade" has been so generally accepted, and used as a 
 working tool. The present work, it is hoped, will be 
 found more adequate. The late cases have been exhaust- 
 ively dealt with. The addition of the statutes and forms 
 for registration emploj-ed in the several states and terri- 
 tories, and the Dominion of Canada, is intended to facil- 
 itate the business of the practitioner, in registration and 
 litigation outside of the state in which he resides. The 
 forms of pleading have been added to from the best 
 sources. The recently enacted federal trademark act, 
 together with the rules and fonns prescribed by the Com- 
 missioner of Patents for the registration of trademarks 
 and patent office practice under the act, is reproduced 
 in the appendix, while the acts of 1870 and 1881 have 
 been preserved, with their annotations. 
 
 JA]\IES LOVE HOPKINS. 
 
 St. Louis, October 1st, 1905.
 
 CONTENTS 
 
 Sec 
 
 CHAPTER I. 
 
 PREFATORY. 
 
 Page. 
 
 1. The need of legal restraint of unfair trade 1 
 
 2. Trademark defined 3 
 
 3. Tradename defined "^ 
 
 4. Earliest recognition of trademarks 12 
 
 5. The evolution of the law of trademarks 13 
 
 6. The relative protection given by patents and trademarks 13 
 
 7. Trademarks distinguished from patents and copyrights 14 
 
 8. Function ^^ 
 
 9. Nature of the right to a trademark 16 
 
 10. The test of exclusiveness 1"^ 
 
 11. Requisites of a valid trademark 18 
 
 12. Perpetual existence 18 
 
 13. Territorial limitation 19 
 
 14. The necessity of user 20 
 
 15. Trademarks as subjects of sale, assignment or bequest 22 
 
 16. Assignability of distillery brands and the like 34 
 
 17. Unfair competition 35 
 
 18. Historical 36 
 
 19. Unfair competition distinguished from trademark infringe- 
 
 ment 40 
 
 20. Trade slander and libel 46 
 
 21. Are trademarks rights monopolistic in character? 49 
 
 22. Title 51 
 
 23. Licenses 52 
 
 CHAPTER II. 
 
 THE ACQUISITION OF A TRADEMARK. 
 
 24. Who may acquire 55 
 
 25. User 57 
 
 26. Affixing the mark 58 
 
 27. Registration not a means of acquiring 59 
 
 28. Acquisition by assignment 61 
 
 29. Acquisition by an alien 62 
 
 30. Priority of appropriation 62 
 
 is.
 
 X CONTENTS. 
 
 CHAPTER III. 
 
 WHAT CONSTITUTES A VALID TRADEMARK. 
 
 Sec. Page. 
 
 31. The general rule 66 
 
 32. It must be truthful 66 
 
 33. A dishonest label will invalidate 67 
 
 34. The cases of false representation in connection with trade- 
 
 marks 68 
 
 35. Manhattan Medicine Co. v. Wood 71 
 
 36. The similar cases— Assignment must be made public in con- 
 
 junction with the trademark, when 71 
 
 37. Unauthorized use of words "patent" or "patented" 72 
 
 38. Use of such word or a trademark where there has been a 
 
 patent 74 
 
 39. Names of patented articles 78 
 
 40. Generic term, defined 83 
 
 41. Illustrations of generic terms 87 
 
 42. Examples of valid trademarks, fancy, arbitrary or distinctive 
 
 words 96 
 
 43. Generic terms judicially defined 105 
 
 44. The name given an unpatented invention by the inventor 108 
 
 45. Necessary name of product 108 
 
 46. Marks common to the trade Ill 
 
 47. The trademarked article not a trademark 112 
 
 48. Packages as trademarks 112 
 
 49. Method of arranging goods as trademarks 113 
 
 50. Words taken from the dead languages 114 
 
 51. Words and phrases from modern foreign languages 115 
 
 52. Words become generic through use 120 
 
 53. The use of generic names protected 121 
 
 54. The test of "origin or ownership" 126 
 
 55. Geographical names 128 
 
 56. As employed by sole owner of a natural product and its place 
 
 of production 129 
 
 57. When geographical names will be protected as trademarks. . .129 
 
 58. Geographical names — The underlying principle 131 
 
 59. A false geographical name vitiates trademark 135 
 
 60. The right to complain of unfair use of geographical name 136 
 
 61. When relief will be granted against fraudulent use of geo- 
 
 graphical names 136 
 
 62. Proper names as trademark 137 
 
 63. Names of celebrities 139 
 
 64. In general, of one's own name 139 
 
 65. The use of proper names in trade 141 
 
 66. The use of proper names generally 142 
 
 67. Fictitious proper namop 148
 
 CONTENTS. Xi 
 
 Sec. Page. 
 
 68. Revocation of license to use one's own name 149 
 
 69. Corporate names 150 
 
 70. "Secondary meaning" defined 156 
 
 71. Words of double meaning 159 
 
 CHAPTER IV. 
 
 TRADEMARK RIGHTS IN TITLES OF BOOKS AND PERIODICALS. 
 
 72. Trademark in title of a book 162 
 
 73. Trademark in title of periodical 164 
 
 74. Play titles as trademarks 169 
 
 CHAPTER V. 
 THE LOSS OF THE RIGHT TO A TRADEMARK'S USE. 
 
 75. Laches 172 
 
 76. Laches and acquiescence distinguished 174 
 
 77. Acquiescence 175 
 
 78. Abandonment 176 
 
 CHAPTER VI. 
 GOODWILL. 
 
 79. Defined 185 
 
 80. In particular cases Ig7 
 
 81. As a subject of sale 191 
 
 82. Goodwill subject to proceedings in eminent domain 195 
 
 83. Goodwill in its relation to firm and other names 196 
 
 84. Rights of vendor 197 
 
 85. Covenants not to re-engage in business 199 
 
 86. The valuation of goodwill 204 
 
 87. Competition between vendor and vendee 206 
 
 88. Partnership goodwill 210 
 
 89. Remedies 212 
 
 CHAPTER VII. 
 
 TRADE SECRETS; RIGHT OF PRIVACY. 
 
 90. Introductory 219 
 
 91. Where equity will not interfere 220 
 
 92. Protection in equity 221 
 
 93. The right of privacy 231
 
 ill CONTENTS. 
 
 CHAPTER VIII. 
 
 INFRINGEMENT. 
 
 Sec. Page. 
 
 94. Of infringement generally 242 
 
 95. No trademark in form, size, material or color 243 
 
 96. The early adjudications 245 
 
 97. Infringement of color 247 
 
 98. Infringement of size and form 250 
 
 99. Intent and scienter 255 
 
 100. What persons liable 257 
 
 101. Of labels, generally 258 
 
 102. The engraver or manufacturer of the label 259 
 
 103. Of counterfeiting trademarks 260 
 
 104. Of imitation of trademarks 261 
 
 105. Colorable imitation 261 
 
 106. The test of probability of deception 262 
 
 107. The degree of resemblance which constitutes infringement 263 
 
 108. The degree of care expected of the purchaser 264 
 
 109. Infringement must be by use on same class of goods 268 
 
 110. The value of proof of fraudulent intent 271 
 
 111. The manner of establishing fraudulent intent 272 
 
 112. Infringing by refilling trademarked packages 273 
 
 113. Infringement by refitting and reselling worn trademarked 
 
 articles 274 
 
 114. Infringement by applying a manufacturer's trademark to 
 
 goods of his to which he does not intend its application 275 
 
 115. Substitution 276 
 
 116. The use of misleading signs and circulars enjoined 277 
 
 117. Infringement by a dissimilar word or mark 280 
 
 118. Patent oflBce rulings on similarity of alleged conflicting 
 
 marks 292 
 
 119. Miscellaneous matters relating to infringement 293 
 
 120. The use of letters and numerals 295 
 
 121. The judicial test of infringement 299 
 
 122. Restraint of use of misleading advertisements, and the like... 303 
 
 123. Infringement in another jurisdiction 304 
 
 124. Trademarks of variable sound and pronunciation 304 
 
 125. The effect of a plurality of marks for a single article 306 
 
 126. Confusion of mail matter as test of the right to Injunction 308 
 
 127. Hotel names and rights created thereby 310 
 
 CHAPTER IX. 
 REGISTRATION. 
 
 128. Introductory 313 
 
 129. The valid registration acts 313
 
 CONTENTS. xiii 
 
 Sec. Page. 
 
 130. The power of congress to protect trademarks 314 
 
 131. The constitutionality of the present registration act 315 
 
 132. The advantages of registration 320 
 
 133. The disadvantages of registration 322 
 
 134. Interferences 324 
 
 135. Between a registrant and an applicant 324 
 
 136. The preliminary statement 325 
 
 137. The issues in an interference 326 
 
 CHAPTER X. 
 COURTS, PARTIEJS AND CAUSES. 
 
 138. Introductory 327 
 
 139. Jurisdiction of United States circuit courts 327 
 
 140. Jurisdiction of the state courts 331 
 
 141. The elements whereon jurisdiction must be predicated 332 
 
 142. The parties plaintiff 334 
 
 143. The parties defendant 336 
 
 144. Forms of action 340 
 
 CHAPTER XI. 
 THE CRIMINAL PROSECUTION— FEDERAL AND STATE. 
 
 145. The act of 1876 341 
 
 146. Section 3449, Revised Statutes 343 
 
 147. Criminal liability at common law 344 
 
 148. The penal statutes of the several states 345 
 
 CHAPTER XII. 
 
 ACTIONS AT LAW. 
 
 149. The form of action 347 
 
 150. The declaration 349 
 
 151. Defenses 353 
 
 152. Damages 355 
 
 CHAPTER XIII. 
 
 THE ACTION IN EQUITY. 
 
 153. The basis of equitable jurisdiction 361 
 
 154. The bill in equity 364 
 
 155. The defenses in equity 368 
 
 156. The relief in equity 379 
 
 157. Punitive damages in equity 384 
 
 158. Increase of damages in equity 385
 
 xiv CONTENTS. 
 
 Sec. Page. 
 
 159. The defendant's credits upon accounting 385 
 
 160. Label designing as a judicial function 386 
 
 161. Appeals 388 
 
 162. Certiorari 389 
 
 CHAPTER XIV. 
 
 MATTER OF PRACTICE AND EVIDENCE. 
 
 163. Matter of which courts will take judicial notice 391 
 
 164. Expert and other evidence on the question of infringement. . .391 
 
 165. Exhibits 394 
 
 166. Discovery 395 
 
 167. Evidence of recognition by others of plaintiff's right to the 
 
 mark 396 
 
 168. Contempts 397 
 
 169. Affidavits 400 
 
 CHAPTER XV. 
 
 COSTS. 
 
 170. Generally 402 
 
 171. Avoiding costs by submission 402 
 
 172. Submission to avoid costs must be complete 404 
 
 173. Costs refused successful defendant 404 
 
 174. Miscellaneous matters 405 
 
 CONTENTS OF APPENDIX. 
 
 A. Trademark Act of July 8, 1870. Annotated 411 
 
 B. Label Registration Act of June 18, 1874. Annotated. Patent 
 
 Office Rules, and Forms relative thereto 424 
 
 C. Trademark Act of August 14, 1876. Annotated. 442 
 
 D. Trademark Act of March 3, 1881. Annotated 446 
 
 E. Trademark Act of August 5, 1882 463 
 
 F. Trademark Provision of the Tariff Act of 1897. Annotated 466 
 
 G. Trademark Act of February 20, 1905. Annotated. Patent 
 
 Office Rules, and forms relative thereto 468 
 
 H. Trademark Statutes of the States and Territories. Annotated. 
 
 With forms for Registration Applications 515 
 
 I. Canadian Trademark and Design Act, with Rules and Forms... 729 
 
 J. Bills of Complaint and Answers Judicially Approved 746 
 
 Declaration in Warner v. Roehr, Fed. Case No. 17189A 746 
 
 Bill of Complaint in Taylor v. Carpenter, 3 Story, 458 749 
 
 Bill of Complaint in Carson v. Ury, 39 Fed. Rep. 777 755 
 
 Bill of Complaint in McLean v. Fleming, 96 U. S. 245 760
 
 CONTENTS. XV 
 
 Page. 
 Bill Of Complaint in Richmond Nervine Co. v. Richmond, 
 
 159 U. S. 293 '^67 
 
 Bill of Complaint in Saxlehner v. Eisner & Mendelson Co., 
 
 179 U. S. 19 '^'^2 
 
 Bill of Complaint in Hennessy v. Herrmann, 89 Fed. Rep. 
 
 669 "^^^ 
 
 Answer in Benkert v. Feder, 34 Fed. Rep. 534 781 
 
 Answer in Brown Chemical Co. v. Meyer, 139 U. S. 540 784 
 
 K. Forms of Injunction — Interlocutory and Final Decrees 789 
 
 Interlocutory Decree, Benkert v. Feder, 34 Fed. Rep. 534... 789 
 
 Writ of Injunction, Boord & Son v. E. G. Lyons Co 791 
 
 Final Decree, Royal Baking Powder Co. v. Royal Chemical 
 
 Co., Price & Steuart, 1 792 
 
 Injunction, Gillis v. Hall, 2 Brewst. 342 792 
 
 Injunction, Colton v. Thomas, 2 Brewst. 308 793 
 
 Injunction, Gillott v. Esterbrook, 47 Barb. 455 793 
 
 Injunction, Jurgensen v. Alexander, 24 How. Pr. 269 793 
 
 Injunction, Coffeen v. Brunton, 4 McLean, 516 793 
 
 Mandate of Circuit Court of Appeals, Feder v. Benkert, 
 
 76 Fed. Rep. 613 794 
 
 L. Classification of Registered Trademarks 795 
 
 M. American and English Bibliography 797 
 
 N. International Convention of March 20, 1883 798 
 
 O. Trademark Provision of an Act Incorporating the American 
 
 National Red Cross 805 
 
 P. Trademark Laws of Foreign Nations 806 
 
 Q. Trademark Treaties of Foreign Nations 807 
 
 Index 809
 
 ^^^;;J^,-j:C^^ Hru^^ v^i^Y^^ 
 
 TABLE OF CASES 
 
 References are to pages. 
 
 A. Bauer & Co. v. Distillerie de 
 
 la Liqueur Benedictine (56 C. 
 
 C. A. 480), 88, 97. 
 V. Order of Carthusian MonliS 
 
 (56 C. C. A. 484), 283. 
 V. Siegert (56 0. C. A. 487), 88. 
 Abbott V. Bakers & C. Tea Ass'n 
 
 (Seb. 379), 262. 
 Abernethy v. Hutchinson (3 L. J. 
 
 Ch. 214), 225. 
 Acme Harvester Co. v. Craver (110 
 
 III. App. 413): 190. 
 Actiengesellschaft Vereingte Ul- 
 
 tramarine-Fabriken v. Amberg 
 
 (102 Fed. Rep. 551), 374. 
 V. Amberg (48 C. C. A. 264), 374. 
 Adams v. Heisel (31 Fed. Rep. 
 
 279), 5, 113, 243, 291, 419, 450, 
 
 452. 
 Addington v. Cullinane (28 Mo. 
 
 App. 238), 355, 356. 
 Adee v. Peck Bros. & Co. (39 Fed. 
 
 Rep. 209), 6, 78, 121. 
 A. F. Pike Mfg. Co. v. Cleveland 
 
 Stone Co. (35 Fed. Rep. 896), 
 
 136, 137. 
 Ainsworth v. Walmsley (L. R. 1 
 
 Eq. 518), 96, 137, 179, 268, 295, 
 
 298, 370, 374. 
 Air Brush Mfg. Co. v. Thayer (84 
 
 Fed. Rep. 640), 46, 269, 460. 
 Alaska Packers' Ass'n v. Alaska 
 
 Imp. Co. (60 Fed. Rep. 103), 
 
 24, 72. 353. 
 Albany Perforated Wrapping Pa- 
 
 per Co. v. John Hoberg Co. 
 
 (102 Fed. Rep. 157). 308. 
 Albert v. Strange (2 DeG. & Sm. 
 
 652), 225. 
 Alden v. Gross (25 Mo. App. 123), 
 
 90, 394. 
 A. Leschen & Sons Rope Co. v. 
 
 Broderick & Bascom Rope Co. 
 
 (123 Fed. Rep. 149), 459. 
 V. Broderick & Bascom Rope Co. 
 
 (C. C. A., 134 Fed. Rep. 571), 
 
 112, 321. 
 Alexander v. Morse (14 R. I. 153), 
 
 286. 
 Alexander Pirie & Sons v Goodall 
 
 (L. R. 1891, 1 Ch. D. 35), 59. 
 Alff V. Radam (77 Texas, 530), 93. 
 Alleghany Fertilizer Co. v. Wood- 
 side (Fed. Case No. 206), 87, 99, 
 
 114, 302. 
 Allegretti v. Allegretti Chocolate 
 
 Cream Co. (76 111. App. 581), 
 
 23. 
 v. Allegretti Chocolate Cream 
 
 Co. (177 111. 129), 23. 
 Allegretti Chocolate Cream Co. 
 
 V. Keller (85 Fed. Rep. 643), 
 
 45, 144, 268. 
 Allen V. McCarthy (37 Minn. 349), 
 
 56, 419. 
 Allen V. McKeen (1 Sumn. 276), 
 
 174. 
 Allen B. Wrisley Co. v. Buck (95 
 
 Off. Gaz. 2483), 293. 
 V. Geo. E. Rouse Soap Co. (87 
 
 Fed. Rep. 589), 248, 254. 
 
 XVil
 
 XVlll 
 
 TABLE OF CASES. 
 
 All-Arm 
 
 References 
 
 Allen B. Wrisley Co. v. Iowa Soap 
 
 Co. (104 Fed. Rep. 548), 93. 
 V. Iowa Soap Co. (59 C. C. A. 
 
 54), 42, 93. 
 Almy V. California (24 How. 170), 
 
 319. 
 American Book Co. v. Gates (85 
 
 Fed. Rep. 729), 47. 
 American Brewing Co. v. St. Louis 
 
 Brewing Co. (47 Mo. App. 14), 
 
 249, 279. 
 American Cereal Co. v. Eli Petti- 
 
 john Cereal Co. (1), (72 Fed. 
 
 Rep. 903), 135 143, 154. 
 V. Eli Pettijohn Cereal Co. (2), 
 
 (22 C. C. A. 236), 143, 379. 
 American Coat Pad Co. v. Phoenix 
 
 Pad Co. (51 C. C. A. 339), 45. 
 American Fibre Chamois Co. v. 
 
 De Lee (67 Fed. Rep. 329), 99, 
 
 374. 
 American Grocer Pub. Co. v. Gro- 
 cer Pub. Co. (25 Hun, 398), 
 
 256, 376. 
 American Grocery Co. v. Sloan (68 
 
 Fed. Rep. 539), 102, 286. 
 American Novelty & Mfg. Co. v. 
 
 Manufacturing Electrical Co. 
 
 (73 N. Y. Supp. 755), 280. 
 American Solid Leather Button 
 
 Co. V. Anthony (15 R. I. 338), 
 
 296, 418. 
 American Tobacco Co. v. Guest (L. 
 
 R., 1892, 1 Ch. D. 630), 369, 
 
 405. 
 American Waltham Watch Co. v. 
 
 Sandman (96 Fed. Rep. 330), 
 
 130. 
 V. United States Watch Co. 
 
 (173 Mass. 85), 8, 130, 159. 
 American Washboard Co. v. Sagi- 
 naw Mfg. Co. (43 C. C. A. 
 
 233), 58, 87. 
 Amoskeag Mfg. Co. v. Garner (1), 
 
 (55 Barb. 151), 120, 179, 256, 
 
 269, 451. 
 
 are to pages. 
 
 Amoskeag Mfg. Co. v. Garner (2), 
 
 (54 How. Pr. 297), 371, 406. 
 
 V. Spear (2 Sandf., S. C. 599), 
 
 105, 127, 175, 176. 
 V. Trainer (101 U. S. 51), 3, 4, 
 6, 68, 87, 126, 263, 297, 298, 299. 
 Anargyros v. Egyptian Amasis 
 Cigarette Co. (66 N. Y. Supp. 
 626), 284. 
 Anderson v. Liebig's Extract of 
 Meat Co. (45 L. T. N. S. 757), 
 47, 92. 
 V. Rowland (18 Tex. Civ. App. 
 460), 217. 
 Angler v. Webber (14 Allen, 211), 
 
 206. 
 Anglo-Swiss Condensed Milk Co. v. 
 Metcalf (L. R. 31 Ch. D. 454), 
 280. 
 Anheuser-Busch Brewing Ass'n v. 
 Clarke (26 Fed. Rep. 410), 249, 
 294. 
 V. Fred Miller Brewing Co. (87 
 
 Fed. Rep. 864), 45, 124, 137. 
 V. Piza (24 Fed. Rep. 149), 129, 
 137, 268, 294. 
 Ansell V. Gaubert (Seton, 4th ed. 
 
 235), 222. 
 Appeal of Putnam Nail Co. (Cox, 
 
 Manual, No. 725), 402. 
 Apollinaris Brunnen v. Somborn 
 
 (Fed. Case No. 496), 283. 
 Apollinaris Co. v. Brumler (Cox, 
 Manual 429), 253. 
 V. Edwards (Seton, 4th ed. 237), 
 
 96. 
 V. Herrfeldt (4 P. R. 478), 96, 
 
 283. 
 V. Moore (Cox, Manual, Case No. 
 
 675), 96. 
 V. Norrish (33 L. T. N. S. 242), 
 
 55, 96. 
 V. Scherer (27 Fed. Rep. 18), 
 96, 337. 
 Armington v. Palmer (43 L. R. 
 A. 95), 151.
 
 Arm-Bas 
 
 TABLE OF CASES. 
 
 XIX 
 
 References 
 
 Armistead v. Blackwell (1 Off. 
 
 Gaz. 603), 27, 99, 418, 423. 
 Armstrong v. Bitner (71 Md. 118), 
 
 188, 209. 
 V. Kleinhaus (82 Ky. 303), 33, 
 
 179, 335. 
 Armstrong & Co. v. Savannah Soap 
 
 Works (53 Fed. Rep. 124), 
 
 338. 
 Arthur v. Howard (19 Pa. Co. Ct 
 
 81), 101. 
 Arundell v. Bell (52 L. J. Ch. 537), 
 
 190. 
 Asbestos & Asbestic Co. v. Wm. 
 
 Sclater Co. (18 Rap. Jud. Que. 
 
 C. S. 360), 88. 
 Atkinson v. Atkinson (85 L. T. 
 
 Jour. 229), 338, 374. 
 V. John E. Doherty & Co. (121 
 
 Mich. 372), 238. 
 Atlantic Milling Co. v. Robinson 
 
 (20 Fed. Rep. 217), 22, 33, 55, 
 
 98, 178, 335. 
 V. Rowland (27 Fed. Rep. 24), 
 
 38. 
 Atwater v. Castner (32 C. C. A. 
 
 77), 93. 
 Aubin V. Holt (2 K. & J. 66), 191. 
 Auerbach & Sons v. Hall & Hay- 
 ward Co. (Ill Off. Gaz. 80G). 
 
 325. 
 Auten V. Boys (2 DeG. & J. 62 C), 
 
 189. 
 Avery v. Meikle (81 Ky. 73), 5, 
 
 277, 299, 361. 
 v. Wilson (20 Fed. Rep. 856), 
 
 378, 407. 
 Ayer v. Hall (3 Brewst. 509), 208. 
 Ayers v. Rushton (7 Daly, 9), 89. 
 
 B 
 
 Babbitt v. Brown (68 Hun 515), 
 
 11, 291. 
 Backus V. Taylor (84 Ind. 503), 
 
 212. 
 B. A. Corbin & Son v. Miller, 
 
 are to pages. 
 
 Kohlhepp, Giese & Co., (98 
 
 Off. Gaz. 1485), 326. 
 Bagby & Rivers Co. v. Rivers (87 
 
 Md. 400), 199, 211. 
 Bagley v. Peddle (16 N. Y. 469), 
 
 213. 
 Bailly v. Nashawannuck Mfg. Co. 
 
 (51 Off. Gaz. 970), 101. 
 Bain v. Munro (15 Scot. L. Rep. 
 
 260), 190. 
 Baker & Co v. Baker (77 Fed. Rep. 
 
 181), 144. 
 Baker v. Baker (53 C. C. A. 157), 
 
 154. 
 Baldwin v. Von Micheroux (25 N. 
 
 Y. Supp. 857), 22, 34, 228, 
 
 335. 
 Ball V. Best (135 Fed. Rep. 434), ^ 
 
 20, 309. 
 V. Siegel (116 111. 137), 91, 243, 
 
 261, 267, 419. 
 Ball & Socket Fastener Co. v. Cohn 
 
 (90 Fed. Rep. 664), 367. 
 Banks v. Gibson (34 Beavan, 566), 
 
 9, 23, 26, 28, 189. 
 Barber v. Connecticut Mutual Life 
 
 Insurance Co. (15 Fed. Rep. 
 
 312), 186. 
 Barlow v. Johnson (7 R. P. C. 
 
 395), 103, 124, 282, 301. 
 Barnett v. Leuchars (13 L. T. N. 
 
 S. 495), 274. 
 Barrett v. Gomm (74 L. T. Jour- 
 nal 388), 294, 375. 
 Barrett Chemical Co. v. Stearn 
 
 (176 N. Y. 27), 85. 
 Barrows v. Knight (6 R. I. 434), 
 
 103, 139, 361. 
 V. Pelsall (Seb. 530), 297. 
 Barry v. Edmunds (116 U. S. 550), 
 
 358. 
 Bass V. Dawber (19 L. T. N. S. 
 
 625), 402. 
 Bass, Ratcliff & Gretton v. Feigen- 
 
 span (96 Fed. Rep. 206). 16, 
 269, 290, 294, 372, 373, 460.
 
 XX 
 
 TABLE OF CASES. 
 
 Bas-Boa 
 
 References 
 
 Bass, Ratcliff & Gretton v. Gug- 
 
 genheimer (69 Fed. Rep. 271), 
 
 369, 403. 
 Bassett v. Percival (87 Mass. 345), 
 
 197. 
 Batcheller v. Thomson (1), (86 
 
 Fed. Rep. 630), 26, 33, 207. 
 V. Thomson (2), (35 C, C. A. 
 
 532), 80. 
 Bateman v. Fargason (4 Fed. Rep. 
 
 32), 376. 
 Battersby v. Collier (54 N. Y. 
 
 Supp. 363), 48. 
 Battershall v. Bauer (91 111. App. 
 
 181), 209. 
 Battle V. Finlay (1), (45 Fed. Rep. 
 
 796), 97, 110. 
 V. Finlay (2), (50 Fed. Rep. 
 
 106), 16, 97, 328, 373. 
 Batty V. Hill (1 H. & M. 264), 94. 
 Beadleston & Woerz v. Cooke Brew. 
 
 Co. (20C. C. A. 405), 7, 91, 161. 
 Beakin v. Stanton (3 Fed. Rep. 
 
 435), 381. 
 Beal V. Chase (31 Mich. 490), 208. 
 Beard v. Turner (13 L. T. N. S. 
 
 746), 114, 175, 294. 
 Beebe v. Tolerton & Stetson Co. 
 
 (117 Iowa 593), 56. 
 Bein v. Heath (12 Howard 168), 
 
 381. 
 Bell V. Ellis (33 Cal. 620), 186. 
 Bell V. Gibson (75 N. Y. Supp. 
 
 753), 642. 
 V. Locke (8 Paige, 75), 37, 102, 
 
 165, 168. 
 Bell & Bogart Soap Co. v. Petrolia 
 
 Mfg. Co. (54 N. Y. Supp. 663) 
 
 227. 
 Benbow v. Low (L. R. 16 Ch. D. 
 
 93), 396. 
 Benedictus v. Sullivan (12 P. R. 
 
 25), 284. 
 Benkert v. Feder (34 Fed. Rep. 
 
 534), 366, 383, 781, 789. 
 Bennett v. McKinley (13 C. C. A. 
 
 25). 86. 91, 159, 160. 
 
 are to pages. 
 
 Benton v. Ward (59 Fed. Rep. 
 
 411), 227. 
 Bergamini v. Bastian (35 La. Ann. 
 
 60), 197. 
 Berliner Brauerei Gesellschaft v. 
 
 Knight (W. N. 1883, p. 70), 
 
 104. 
 Bickmore Gall Cure Co. v. Karns 
 
 (134 Fed. Rep. 833), 45. 
 V. Karns Mfg. Co. (126 Fed. 
 
 Rep. 573), 393. 
 Bingham School v. Gray (122 No. 
 
 Car. 699), 143. 
 Bininger v. Clark (60 Barb. 113), 
 
 211. 
 Binninger v. Wattles (28 How. 
 
 Pr. 206), 93, 143. 
 Bissell Chilled Plow Works v, T. 
 
 M. Bissell Plow Co. (121 Fed. 
 
 Rep. 357), 17. 
 Black V. Allen (42 Fed. Rep. 618), 
 
 367. 
 V. Ehrich (44 Fed. Rep. 793), 
 
 90, 164. 
 Blackwell v. Armistead (Fed. Case 
 
 No. 1474), 51, 99, 285. 
 V. Crabb (36 L. J. Ch. 504), 294. 
 V. Dibrell (Fed. Case No. 1,475), 
 
 99, 130, 134, 176. 
 V. Wright (73 N. C. 310), 89, 99, 
 
 266. 
 Blakey v. Latham (85 L. T. Jour- 
 nal, 47), 77. 
 Blanchard v. Hill (2 Atk. 484), 
 
 13, 36. 
 Block V. Standard Distilling & Dis- 
 tributing Co. (95 Fed. Rep. 
 
 978), 45, 366. 
 Bloete V. Simon (19 Abb. N. C. 
 
 88), 56, 419. 
 Blofield V. Payne (4 B. & Ad. 410), 
 
 295, 347, 358, 373. 
 Bloss V. Bloomer (23 Barb. 604), 
 
 354. 
 Boardman v. Meriden Britannia 
 
 Co. (35 Conn. 402), 296, 298, 
 
 373.
 
 Bod-Buc 
 
 TABLE OF CASES. 
 
 XXI 
 
 References are to pages. 
 
 Bodega Co. Ltd. v. Owens (23 Ir. 
 
 L. R. 371), 354. 
 Boessneck v. Iselin (82 N. Y. Supp. 
 
 164), 291. 
 Bolander v. Peterson (136 111. 
 
 215), 95. 
 Bolen & Byrne Mfg. Co. v. Jonasch 
 
 (60 N. Y. Supp. 555). 273. 
 Bond V. Milbourn (20 W. R. 197), 
 
 23. 
 Bondier v. Depatie (3 Dorion, 
 
 233), 297. 
 Boon V. Moss (70 N. Y. 465), 192. 
 Booth V. Jarrett (52 How. Pr. 
 
 169), 146, 178. 
 Borthwick v. Evening Post (L. R. 
 
 37 Ch. D. 449), 168. 
 Boston Diatite Co. v. Florence Mfg. 
 
 Co. (114 Mass. 69), 16, 238, 
 
 257. 
 Boutell V. Smith (116 Mass. Ill), 
 
 209. 
 Bowden v. Randolph Tp. (41 N. 
 
 J. Law 462), 638. 
 Bowman v. Floyd (85 Mass. 76), 8. 
 Boynton v. Shaw Stocking Co. 
 
 (146 Mass. 219), 48. 
 Bozon V. Farlow (1 Mer. 459), 191. 
 Bradbury v. Barden (35 Conn. 
 
 577), 191. 
 V. Beeton (39 Law J. Ch. 57). 
 
 168. 
 V. Dickens (27 Beav. 53), 27. 
 Bradford v. Peckham (9 R. I. 250), 
 
 198, 206. 
 Bradley v. Norton (33 Conn. 157), 
 
 98. 
 Rraham v. Beachim (7 Ch. D. 848), 
 
 55. 
 V. Bustard (9 L. T. N. S. 199), 
 
 99, 114, 181. 242, 262. 
 Brandreth v. Lance (8 Paige, 24), 
 
 238. 
 Brant v. Frolich (49 N. J. Law 
 
 336), 638. 
 Brass & Iron Works Co. v. Payne 
 
 (50 Ohio St. 115), 207, 210. 
 
 Braun & Co. v. Blackwell (19 Off. 
 
 Gaz. 481), 421. 
 Brennan v. Emery-Bird-Thayer 
 
 Dry Goods Co. (99 Fed. Rep. 
 
 971), 95. 
 V. Emery-Bird-Thayer Dry Goods 
 
 Co. (47 C. C. A. 532), 95, 158. 
 Brewer v. Lamar (69 Ga. 656), 
 
 146. 
 Brill V. Singer Mfg. Co. (41 Ohio 
 
 St. 127), 79, 243, 253, 419. 
 Bristol V. Equitable Life Assurance 
 
 Society (132 N. Y. 264), 227. 
 Broadhurst v. Barlow (W. N. 
 
 1872, p. 212), 119, 296, 299. 
 Broderick & Bascom Rope Co. v. 
 
 A. Leschen & Dons Rope Co. 
 
 (100 Off .Gaz. 3011), 325. 
 Brooklyn White Lead Co. v. Mas- 
 
 ury (25 Barb. 416), 128. 
 Brower v. Boulton (1), (53 Fed. 
 
 Rep. 389), 21, 60, 64, 321, 449. 
 V. Boulton (2), (7 C. C. A. 567). 
 
 21, 60, 459. 
 Brown v. Braunstein (83 N. Y. 
 
 Supp. 1096), 279, 377. 
 V. Doscher (147 N. Y. 647), 45, 
 
 243. 
 V. Mercer (37 N. Y. Super. CL 
 
 265), 656. 
 Brown Chemical Co. v. Meyer (1), 
 
 (31 Fed. Rep. 453), 124, 188. 
 V. Meyer (2), (139 U. S. 540), 
 
 24, 91, 141, 143, 144, 159, 188, 
 
 784. 
 V. Sterns (37 Fed. Rep. 360), 91. 
 Browne v. Freeman (1), (12 W. 
 
 R. 305), 89. 120. 177. 
 V. Freeman (2). (Cox. Manual, 
 
 424), 46. 89, 120. 
 Bryson v. Whitehead (1 S. & S. 
 
 74), 189. 
 Buckland v. Rice (40 Ohio St. 
 
 526). 70. 
 Buck's Stove & Range Co. v. 
 
 Kiechle (76 Fed. Rep. 758), 
 
 248.
 
 XXll 
 
 TABLE OF CASES. 
 
 Bue-Car 
 
 References are to pages. 
 
 Biierk v. Imhaeuser (Fed. Case 
 
 No. 2107a), 401. 
 Bulena v. Newman (31 N. Y. Supp. 
 
 449), 56, 655. 
 Bulloch, Lade & Co. v. Gray (19 
 
 Jour. Juris. 218), 92, 128. 
 Bullock V. Chapman (2 DeG. & 
 
 Sm. 211), 46. 
 Bulte V. Igleheart Bros. (137 Fed. 
 
 Rep. 492), 24. 
 Bunker v. Kenna (Price & Steuart 
 883), 279. 
 V. Stevens (26 Fed. Rep. 245), 
 402. 
 Bunn V. Guy (4 East. 190), 191. 
 Burckhardt v. Burckhardt (36 
 Ohio St. 261), 23, 213, 215. 
 V. Burckhardt (42 Ohio St. 474), 
 214, 218. 
 Burfield v. Rouch (31 Beav. 241), 
 
 193. 
 Burgess v. Burgess (3 DeG. IT. u 
 G. 896), 128, 140, 141, 144. 
 V Hately (26 Beav. 249), 375, 
 
 402, 404. 
 V. Hills (26 Beav. 244), 256, 283, 
 402, 404. 
 Burke v. Cassin (45 Cal. 467), 94. 
 Burkhardt Co. v. Burkhardt Co. 
 
 (4 Ohio N. P. 358), 26, 31. 
 Burnett v. Hahn (88 Fed. Rep. 
 694), 366, 377. 
 V. Leuchars (13 L. T. N. S. 495), 
 
 403. 
 V. Phalon (1), (21 How. Pr. 
 
 100), 384. 
 V. Phalon (2), (9 Bos. 193), 110. 
 Burt V. Smith (71 Fed. Rep. 161), 
 249, 253, 291, 299, 328, 329. 
 V. Tucker (178 Mass. 493), 63, 
 101, 176, 179. 
 Burton v. Stratton (12 Fed. Rep. 
 696), 22, 70, 79, 104, 108, 120, 
 122, 129, 158, 181, 299. 
 
 Bury V. Bedford (4 DeG. J. & S. 
 
 352), 25, 30, 31. 
 Butler V. Burleson (16 Vt. 176), 
 
 192. 
 V. Fayerweather (33 C. C. A. 
 
 625), 398, 400. 
 Byam v. Bullard (Fed. Case No. 
 
 2262), 393. 
 Byass v. Sullivan (21 How, Pr. 
 
 50), 396. 
 Byron v. Johnston (2 Mer. 29), 43. 
 
 c 
 
 Cady v. Schultz (19 R. I. 193), 4, 
 
 95, 280. 
 Cahn V. Gottschalk (2 N. Y. Supp. 
 
 13), 92, 137, 286. 
 V. Hoffman House (28 N. Y. 
 
 Supp. 388), 92. 
 California Fig Synip Co. v. Im- 
 proved Fig Syrup Co. (51 
 
 Fed. Rep. 296), 88, 122, 338. 
 V. Putnam (66 Fed. Rep. 750), 
 
 88, 122. 
 V. Stearns (1), (67 Fed. Rep. 
 
 1008), 70, 88, 122. 
 V. Stearns (2), (73 Fed. Rep. 
 
 812), 70, 88. 
 V. Worden (95 Fed. Rep. 132), 
 
 68, 88, 122. 
 California Fruit Canners' Ass'n v. 
 
 Meyer (104 Fed. Rep. 82), 
 
 132, 136. 
 Campbell Printing Press Co. v. 
 
 Manhattan R. R. Co. (49 Fed. 
 
 Rep. 930), 381. 
 Candee v. Deere (54 111. 439), 93, 
 
 128, 141, 243, 306. 
 Canham v. Jones (2 V. & B. 218), 
 
 219. 
 Cantrell & Cochrane, Ltd. v. Witte- 
 
 mann (109 Fed. Rep. 82), 259, 
 
 380. 
 Carbolic Soap Co. v. Thompson (25 
 
 Fed. Rep. 625), 89, 249, 338.
 
 Car-Che 
 
 TABLE OF CASES. 
 
 XXlll 
 
 References 
 
 Carey v. New Home Sewing Ma- 
 chine Co. (101 Off. Gaz. 448), 
 
 326. 
 Carey's Appeal (75 Pa. St. 201), 
 
 450. 
 Carmichael v. Latimer (11 R. I. 
 
 395), 24, 129, 143, 179, 335. 
 Carnrick v. Morson (L. J. N. of 
 
 C, 1877, p. 71), 101, 286. 
 Carroll v. Ertheiler (1 Fed. Rep. 
 
 688), 102, 269, 373, 375. 
 Carrington v. Libby (14 Blatch. 
 
 128), 418. 
 Carson v. Ury (39 Fed. Rep. 777), 
 
 41. 57, 260, 755. 
 Cartier v. Carlile (31 Beav. 292), 
 
 256. 297, 299. 
 V. May (Seb. 200), 297, 399. 
 V. Westhead (Seb. 199), 297. 
 Caruncho v. Stephenson (25 Sol. 
 
 J. 929), 115. 
 Carver v. Bowker (Seb. 581), 296. 
 V. Pinto Leite (L. R. 7 Ch. D. 
 
 90), 296, 339. 
 Cassidy v. Metcalf (1 Mo. App. 
 
 593), 200, 208. 
 V. Metcalf (66 Mo. 519), 200, 208. 
 Castle V. Siegfried (103 Calif. 71), 
 
 112. 
 Castner v. Coffman (178 U. S. 
 
 168). 
 Caswell V. Davis (58 N. Y. 223), 
 
 90, 109, 111. 
 
 V. Hazard (121 N. Y. 484), 26. 
 CaufTman v. Schiiler (123 Fed. 
 
 Rep. 205), 268. 
 Cave V. Meyers (Seton, 4th ed. 
 
 238), 76, 172, 272. 
 Cellular Clothing Co. v. Maxton 
 
 (L. R. 1S99, A. C. 326), 11, 
 
 88. 124, 125, 126, 397. 
 Celluloid Mfg. Co. v. Cellonite 
 
 Mfg. Co. (32 Fed. Rep. 94), 
 
 98, 151, 152, 154, 156, 181, 283, 
 
 371. 374, 379. 
 Celluloid Mfg. Co. v. Read (47 
 
 Fed. Rep. 712) , 97. 370, 371, 392. 
 
 are to pages. 
 
 Centaur Co. v. Heinsfurter (28 C. 
 C. A. 581), 79. 
 V. Hughes Bros Mfg. Co. (34 C. 
 
 C. A. 127), 79, 88, 109, 122. 
 V. Killenberger (87 Fed. Rep. 
 
 725), 79, 122, 375. 
 V. Link (62 N. J. Eq. 147), 81, 88. 
 V. Marshall (38 C. C. A. 413), 
 
 79, 256. 
 V. Neathery (34 C. C. A. 118). 
 
 79. 88, 109, 122. 
 V. Robinson (91 Fed. Rep. 889), 
 68, 79, 88, 109, 122. 
 Central Transportation Co. v. Pull- 
 man's Palace Car Co. (139 U. 
 S. 24), 219. 
 C. F. Simmons Med. Co. v. Mans- 
 field Drug Co. (93 Tenn. 84), 
 256. 
 v. Simmons (81 Fed. Rep. 162), 
 45, 249. 
 Chadwick v. Covell (151 Mass. 
 
 190), 23. 
 Champion v. Ames (188 U. S. 321). 
 
 318. 
 Champlin v. Stoddart (30 Hun. 
 300), 219. 
 
 Chancellor of Oxford University v. 
 
 Wilmore-Andrews Pub. Co. 
 
 (101 Fed. Rep. 443), 103. 
 Chapleau v. Laporte (16 Rap. Jud. 
 
 Que. C. S. 189), 360. 
 Chappell V. Davidson (2 K. & J. 
 
 123), 262, 375, 402. 
 Charles E. Hires Co. v. Consumers' 
 
 Co. (41 C. C. A. 71), 243, 253, 
 
 272, 379, 387, 389. 
 Chase v. Mays (121 Mass. 343). 
 
 446. 
 Chattanooga Med. Co. v. Thedford 
 
 (1), (49 Fed. Rep. 949), 31. 
 v. Thedford (2), (58 Fed. Rep. 
 
 347), 31. 
 Cheavin v. Walker (L. R. 5 Ch. 
 
 D. 850), 75.
 
 XXIV 
 
 TABLE OF CASES. 
 
 Chi-Cof 
 
 References 
 
 Chicago Landlord's Protective 
 
 Bureau v. Koebel (112 Ills. 
 
 App. 21), 2S6. 
 Chickering v. Chickering & Sons 
 
 (56 C. C. A. 475), 145, 389. 
 Chissum v. Dewes (5 Russ. 29), 
 
 189. 
 Chittenden v. Witbeck (50 Mich. 
 
 401), 195. 
 Choynsnki v. Cohen (39 Cal. 501), 
 
 88. 
 Christy v. Murphy (12 How. Pr. 
 
 77), 142, 147, 176. 
 Chubb V. Griffiths (35 Beav. 127;, 
 
 372, 402. 
 Church V. Kresner (49 N. Y. 
 
 Supp. 742), 272. 
 Church & Dwight Co. v. Russ (99 
 
 Fed. Rep. 276), 35, 44, 257, 270. 
 Churton v. Douglass (Johns, 174), 
 
 23, 31, 148, 186, 196. 
 Cigarmakers' International Union 
 
 of America v. Goldberg (N. J., 
 
 57 Atl. Rep. 141), 56, 638. 
 Cigarmakers' Protective Union v. 
 
 Conhaim (40 Minn. 726), 4, 56. 
 
 V. Lindner (3 Ohio St. 244), 56. 
 
 City Brewery Co. v. Powell (1897 
 
 A. C. 710), 182. 
 City of Carlsbad v. Kutnow (1), 
 
 (68 Fed. Rep. 794), 55, 129, 
 
 378, 397. 
 V. Kutnow (2), (18 C. C. A. 24), 
 
 55, 134. 
 v. Schultz (78 Fed. Rep. 469), 
 
 55, 129, 134, 386. 
 V. Thackeray (57 Fed. Rep. 18), 
 
 137. 
 V. Tibbetts (51 Fed. Rep. 852), 
 
 45. 
 Clark V. Aetna Iron Works (44 
 
 Ills. App. 510), 156. 
 V. Clark (25 Barb. 76), 143, 144. 
 V. Freeman (11 Beavan 112), 4'6, 
 
 368. 
 V. German Mutual Ins. Co. (7 
 
 Mo. App. 71), 24. 
 
 are to pages. 
 Clark V. Leach (32 Beav. 14), 23. 
 Clark Thread Co. v. Armitage (21 
 
 C. C. A. 178), 146, 284. 
 V. William Clark Co. (1), (55 
 
 N. J. Eq. 658), 377, 
 V. William Clark Co. (2), (56 
 
 N. J. Eq. 739), 383. 
 Clayton v. Stone (2 Paine, 382), 
 
 167. 
 Clemens v. Belford (14 Fed. Rep. 
 
 728), 162, 168, 419. 
 Clement v. Maddick (1 Giff. 98), 
 
 164, 168, 376. 
 Cleveland Stone Co. v. Wallace 
 
 (52 Fed. Rep. 431), 52, 249, 
 
 373. 
 Clinton E. Worden & Co. v. Cali- 
 fornia Fig. Syrup Co. ( 187 U. 
 
 S. 516), 70. 
 Clinton Metallic Paint Co. v. New 
 
 York Metallic Paint Co., (50 
 
 N. Y. Supp. 437), 93, 128, 347. 
 Close V. Flesher (59 N. Y. S. Rep. 
 
 283), 206. 
 Clotworthy v. Schepp (42 Fed. 
 
 Rep. 62), 70, 94, 103, 290. 
 Coats V. Chadwick (L. R., 1894, 1 
 
 Ch. D. 347), 398. 
 V. Holbrook (2 Sandf. Ch. 586), 
 
 19, 62, 262, 338, 373, 375, 402, 
 
 404. 
 V. Merrick Thread Co. (1), (36 
 
 Fed. Rep. 324), 79, 249, 261. 
 V. Merrick Thread Co. (2), (149 
 
 U. S. 562), 141, 300. 
 V. Piatt (17 Leg. Int. 213), 143. 
 C. 0. Burns Co. v. W. F. Burns Co. 
 
 (118 Fed. Rep. 944), 173. 
 Cochrane v. Macnish (L. R., 1896, 
 
 A. C. 225), 98. 
 Cocks v. Chandler (L. R. 11 Eq. 
 
 447), 123, 368. 
 Coe V. Bradley (Fed Case No. 
 
 2941), 33, 284. 
 Coffeen v. Brunton (1), (Fed. Case 
 
 No. 2946), 62, 98, 358, 793. 
 
 
 n* 
 
 . f»
 
 Cof-Cop 
 
 TABLE OF CASES. 
 
 xzv 
 
 References 
 
 Coffeen v. Brunton (2), (5 Mc- 
 Lean, 256). 98, 2(i6, 294, 373. 
 Coffman v. Castner (31 C. C. A. 
 
 55), 93. 
 Cohn V. People (149 Ills. 486), 56 
 
 558. 
 Coleman v. Flavel (40 Fed. Rep. 
 
 854), 303. 
 Colgan V. Danheiser (35 Fed. Rep. 
 
 150), 95. 
 Colgate V. Adams (88 Fed. Rep. 
 
 899), 97, 283. 
 V. Compagnie Francaise (23 Fed. 
 
 Rep. 82), 395. 
 Colley V. Hart (7 R. P. C. 101), 47. 
 Collins V. Reynolds Card Mfg. Co. 
 
 (7 Abb. N. C. 17), 289, 296. 
 Collins Co. V. Brown (3 K. & J. 
 
 423), 19, 62. 
 V. Cowen, (3 K. & J. 428), 19, 62. 
 V. Oliver Ames & Sons (18 Fed. 
 
 Rep. 561), 269, 371, 383, 41)7. 
 V. Reeves (28 L. J. Ch. 56), 19, 
 
 62. 
 V. Walker (7 W. R. 222), 19, 62, 
 
 402. 404. 
 Collins Chem. Co. v. Capitol City 
 
 Mfg. Co. (42 Fed. Rep. 64), 
 
 372, 391. 
 Collinsplatt v. Finlayson (88 Fed. 
 
 Rep. 693), 130, 131, 245, 268, 
 
 362, 366. 
 Colloday v. Baird (4 Phila. 139), 
 
 111. 
 Colman v. Crump (70 N. Y. 573), 
 
 256, 259, 267, 268, 374, 378. 
 Colton v. Thomas (2 Brews. 308), 
 
 793. 
 Columbia Mill Co. v. Alcorn (1), 
 
 (40 Fed. Rep. 676), 392. 
 V. Alcorn (2), (150 U. S. 460), 
 
 58, 63. 126, 128, 132, 159. 
 Comer v. State (103 Ga. 69), 549. 
 Commercial Advertiser Ass'n v. 
 
 Haynes (49 N. Y. Supp. 938), 
 
 167, 168. 
 
 are to pages. 
 
 Commonwealth v. Anselvich (186 
 
 Mass 376), 589. 
 v. Rozen (176 Mass. 129), 57, 
 
 589, 590. 
 Compagnie Laferme v. Hendrick 
 
 (Seb. 512), 402. 
 Compania General de Tobacos v. 
 
 Rehder (5 R. P. C. 61), 262, 
 
 266. 
 Computing Scale Co. v. Standard 
 
 Computing Scale Co. (55 C. C. 
 
 A. 459), 89, 158, 159. 
 Comstock v. White (18 How. Pr. 
 
 421), 101, 143, 219, 375. 
 Condy v. Mitchell (37 L. T. N. S. 
 
 268), 26, 30, 219. 
 Congress & Empire Spring Co. v. 
 
 High Rock Congress Spring 
 
 Co. (45 N. Y. 291), 16, 23, 
 
 55, 98, 129. 
 Connell v. Reed (128 Mass. 477), 
 
 70. 
 Conrad v. Brewing Co. (8 Mo. 
 
 App. 277), 358. 
 Consolidated Fruit Jar Co. v. Dor- 
 
 flinger (Fed. Cas. No. 3129), 
 
 72. 
 V. Thomas (Cox, 665), 172. 
 Continental Ins. Co. v. Continental 
 
 Fire Ass'n (96 Fed. Rep. 846), 
 
 89, 153, 309. 
 V. Continental Fire Ass'n (41 C. 
 
 C. A. 326), 89, 153. 
 Continental Tobacco Co. v. Larus 
 
 & Bro. Co. (C. C. A., 133 
 
 Fed. Rep. 727), 247. 
 Cook & Bernheimer Co. v. Ross 
 
 (73 Fed. Rep. 203), 250. 
 Cook V. Starkweather (13 Abb. Pr. 
 
 N. S. 392). 373, 391, 418. 
 Cooke & Cobb Co. v. Miller (65 
 
 N. Y. Supp 730). 90. 
 Cooper V. Hood (26 Beav. 293), 
 
 23, 194. 
 
 Cope v. Evans (L. R. 18 Eq. 138), 
 115, 392.
 
 XXVI 
 
 TABLE OF CASES. 
 
 Cor-D«y 
 
 References 
 
 Corbin v. E. Taussig & Co. (132 
 
 Fed. Rep. 662), 368. 
 V. Gould (133 U. S. 308), 95. 
 Corliss V. E. W. Walker Co. (1), 
 
 (57 Fed. Rep. 434), 238. 
 V. E. W. Walker Co. (2), (64 
 
 Fed. Rep. 280), 225, 239. 
 Corwin v. Daly (7 Bos. 222), 22, 89. 
 Cory V. Gertcken (2 Madd. 49), 
 
 402. 
 Costello V. Eddy (12 N. Y. Supp. 
 
 236), 188, 199, 200. 
 V. Eddy (128 N. Y. 650), 198. 
 Cotton V. Gillard (44 L. J. Ch. 
 
 90), 21, 22, 25, 102. 
 Cottrell V. Babcock Mfg. Co. (54 
 
 Conn. 138), 198, 206. 
 Cravenette Co. v. Bsnjamin (105 
 
 Fed. Rep. 621), 256. 
 Craver v. Acme Harvester Co. ( 209 
 
 111. 483), 190. 
 Crawford v. Lans (60 N. Y. Supp. 
 
 387), 286. 
 Crawshay v. Thompson (4 M. & G. 
 
 357), 255, 266, 297, 351. 
 Crocker Wheeler Co. v. Bullock 
 
 (134 Fed. Rep. 241), 231. 
 Croft V. Day (1), (7 Beavan, 84), 
 
 28, 38, 41, 140, 335. 
 V. Day (2), (Cox, Manual, No. 
 
 77), 399. 
 Cruess v. Fessler (39 Cal. 336), 
 
 216. 
 Crutwell V. Lye (17 Ves. 335), 43, 
 
 186, 189, 198. 
 Cuervo v. Jacob Henkell Co. (50 
 
 Fed. Rep. 471), 259, 374. 
 V. Landauer (63 Fed. Rep. 1003), 
 
 377. 
 Curtis V. Bryan (2 Daly, 212), 69, 
 
 119, 376. 
 V. Gokey (68 N. Y. 300), 189. 
 V. rape (5 R. P. C. 146), 124. 
 Cutter V. Gudebrod Bros Co. (1), 
 
 (55 N. Y. Supp. 298), 295. 
 V. Gudebrod Bros Co. (2), (61 
 
 N. Y. Supp. 225), 30. 
 
 are to pages. 
 
 D 
 
 Dadirrian v. Gullian (79 Fed. Rep. 
 784), 400. 
 V. Theodorian (37 N. Y. Supp. 
 
 611), 117. 
 V. Yacubian (1), (72 Fed. Rep. 
 
 1010), 92, 118. 
 V. Yacubian (2), (90 Fed. Rep. 
 
 812), 92, 118. 
 V. Yacubian (3), (39 C. C. A. 
 321), 66, 118. 
 Dakin v. Williams (17 Wendell, 
 
 447), 213. 
 Dale v. Smithson (12 Abb. Pr. 
 
 237), 149. 
 Dant V. Head (90 Ky. 255), 23. 
 Daugberty v. Van Nostrand (1 
 
 Hoff. Ch. N. Y. 68), 195. 
 Dausmann & Drummond Tobacco 
 Co. V. Ruffner (Fed. Case No. 
 3585), 244. 
 Davey v. Darey (50 N. Y. Supp. 
 
 161), 47. 
 Davies v. Hodgson (25 Beav. 177), 
 
 189, 205. 
 Daviess County Distilling Co. v. 
 Martinoni (117 Fed. Rep. 186), 
 92. 
 Davis v. A. Booth & Co. (65 C. C, 
 A. 269), 204. 
 V. Davis (27 Fed. Rep. 490), 5 
 
 112, 113, 243, 380, 419, 452. 
 V. Kendall (2 R. I. 566), 103, 
 
 219, 261. 
 V. Kennedy (13 Grant, Up. Can. 
 
 Ch. 523), 62, 103. 
 V. Stribolt (59 L. T. 854), 115, 
 117. 
 Dawes v. Davies (Seb. 426), 265. 
 Dawson v. Beeson (L. R. 24 Ch. 
 
 D. 504), 211. 
 Day V. New England Car Spring 
 Co. (3 Blatchf. 154), 401. 
 V. Woodworth (13 How. 363), 
 351, 357.
 
 Day-Dra 
 
 TABLE OF CASES. 
 
 xwn 
 
 References ai 
 
 Dayton v. Wilkes (17 How. Pr. 
 
 516), 188, 198. 
 Deakin v. Stanton (3 Fed. Rep. 
 
 435). 
 Dean v. Emerson (102 Mass. 480), 
 
 188. 
 Decker v. Decker (52 How. Pr. 
 
 218), 143, 354, 413. 
 Deering Harvester Co. v. Whitman 
 
 & Barnes Mfg. Co. (91 Fed. 
 
 Rep. 376), 15, 126, 128. 
 De Florez v. Raynolds (14 Blatchf. 
 
 505), 393. 
 De Kuyper v. Witteman (23 Fed. 
 
 Rep. 871), 259, 260, 366. 
 Delaware & Hudson Canal Co. v. 
 
 Clark (13 Wall. 311), 84, 92, 
 
 105. 108, 126, 128, 133, 134. 
 DeLong v DeLong Hook & Eye 
 
 Co. (74 Off. Gaz. 809), 144. 
 DeLong Hook & Eye Co. v. Fran- 
 cis Hook & Eye Co. (118 Fed. 
 
 Rep. 938), 244. 
 Del Valle v. Mayer (Seton, 4th 
 
 ed., 236), 339. 
 Dempsey v. Dobson, (174 Pa. St. 
 
 122), 224. 
 Dence v. Brand, (W. N. 1881, p. 
 
 31-), 407. 
 V. Mason (41 L. T. N. S. 573), 
 
 24. 
 Dennison Mfg. Co. v. Thomas Mf;-. 
 
 Co. (94 Fed. Rep. 651), 3, 15, 
 
 40, 96, 106, 128, 297. 
 V. ScharfE Tag Label & Box Co. 
 
 (135 Fed. Rep. 625), 295. 
 Dent V. Turpin (30 L. J. Ch. 495), 
 
 26, 42, 336. 
 Denver Railway v. Harris (122 U. 
 
 S. 597), 358. 
 Derby Dry Plate Co. v. Pollard (2 
 
 Times, L. R. 276), 284. 
 Dering v. Earl of Winchelsea (1 
 
 Cox. Ch. 318). 376. 
 Derringer v. Plate (29 Cal. 292), 
 4, 16, 19, 63, 99. 
 
 e to pages. 
 
 Devlin v. Devlin (69 N. Y. 212), 
 145, 398. 399, 406. 
 v. McLeod (135 Fed. Rep. 164), 
 
 45, 95. 
 V. Peek (135 Fed. Rep. 167), 95. 
 Dewitt V. Mathey (18 Ky. L. Rep. 
 
 257), 56, 179. 
 Diamond Match Co. v. Roeber (106 
 N. Y. 473), 200. 
 V. Safe Harbor Match Co. (109 
 Fed. Rep. 154), 400. 
 Dicks V. Yates (L. R. 18 Ch. D. 
 
 76), 168. 
 Dickson v. McMaster (18 Ir. Jur. 
 
 202), 24, 335. 
 Dixon v. Fawcus (3 Ell. & Ell. 
 537), 260, 262, 406. 
 V. Jackson (2 Scot. L. Rep. 188), 
 104. 
 Dixon Crucible Co. v. Benham (4 
 Fed. Rep. 527), 302. 
 V. Guggenheim (3 Am. L. T. 
 228), 21, 69, 166, 178. 
 Dobell V. Stevens (3 B. & C. 623), 
 
 216. 
 Dobson V. Graham (49 Fed. Rep. 
 
 17), 220. 396. 
 Dodge Stationery Co. v. Dodge (78 
 
 Pac. Rep. 879), 146. 
 Dorman v. Keefer (49 Fed. Rep. 
 
 462), 230. 
 Dover Stamping Co. v. Fellows 
 (163 Mass. 191), 14, 79, 81, 
 253, 255, 590. 
 Dow V. Electric Co. (41 Atl. Rep. 
 
 288), 214. 
 Dowling V. Livingstone, (108 Mich. 
 
 321), 48. 
 Drake v. Dodsworth (4 Kas. 159), 
 
 197, 198. 
 Drake Medicine Co. v. Glessner (68 
 
 Ohio St. 337), 99, 138. 
 Draper v. Skerrett (1), (94 Fed. 
 Rep. 912), 45. 
 V. Skerrett (2). (116 Fed. Rep. 
 206), 42, 90, 330.
 
 xxvni 
 
 TABLE OF CASES. 
 
 Dad-Elm 
 
 References 
 
 Dr. Dadirrian & Sons Co. v. Hau- 
 
 enstein (74 N. Y. Supp. 709), 
 
 92. 
 Dr. David Kennedy Corp. v. Ken- 
 nedy (55 N. Y. Supp. 917), 
 
 148. 
 Drewry & Son v. Wood (127 Fed. 
 
 Rep. 887), 286. 
 Dreydoppel v. Young (14 Phila. 
 
 226), 88, 107. 
 Drummond v. Tinsley (52 Mo. 
 
 App. 10), 272, 333, 391, 392. 
 Drummond Tobacco Co. v. Randle 
 
 (114 111. 412), 143, 150. 
 Du Boulay v. Du Boulay (L. R. 2 
 
 P. C. 430), 140. 
 Ducat V. Chicago (10 Wall. 410), 
 
 350. 
 Duden v. Maloy (11 C. C. A. 119), 
 
 212. 
 Duer V. Corbin Cabinet Lock Co. 
 
 (149 U. S. 216), 14. 
 Duke V. Cleaver (46 S. W. Rep. 
 
 1128), 280. 
 V. Green (16 Off. Gaz. 1094), 
 
 414, 424, 452. 
 Dunbar v. Glenn (42 Wis. 118), 
 
 55, 129. 
 Dunlap V. Schofield (152 U. S. 
 
 244), 324. 
 Dunlan & Co. v. Young (74 N. Y. 
 
 Supp. 184), 373. 
 Dunnachie v. Young & Sons (Ct. 
 
 Sess. Cas. 4th Ser. X. 874). 51. 
 Duwel v. Bohmer (14 Off. Gaz. 
 
 270), 417. 
 Duryea v. National Starch Mfg. 
 
 Co. (25 C. C. A. 139), 143. 
 Dwight v. Hamilton (113 Mass. 
 
 175), 191, 198, 208. 
 
 E 
 
 Earl of Lytton v. Devey (54 L. J. 
 
 Ch. 293), 225. 
 Eastman Co. v. Reichenbach (20 
 
 N. Y. Supp. 110), 220, 222, 223. 
 
 are to pages. 
 
 Eastman Co. v. Reichenbach (79 
 
 Hun 188), 220. 
 Eckhart v. Consolidated Milling 
 
 Co. (72 111. App. 70), 274. 
 Edelsten v. Edelsten (1 DeG. J. & 
 S. 185), 96, 256, 262, 271, 295, 
 347, 351, 373, 402. 
 V. Vick (11 Hare, 78), 76. 
 Edison v. Hawthorne (106 Fed. 
 Rep. 172), 303. 
 V. Hawthorne (48 C. C. A. 67), 
 
 303. 
 V. Thomas A. Edison, Jr. Chem. 
 Co. (128 Fed. Rep. 1013), 446. 
 Edmonds v. Benbow (Seton, 3d 
 ed., 905), 168. 
 v. Boston (108 Mass. 549), 195. 
 Edwards v. Dennis (30 Ch. D. 
 
 454), 57. 
 Eggers V. Hink (63 Cal. 445), 93, 
 
 127, 129. 
 Einstein v, Sawhill (61 Off. Gaz. 
 287), 453. 
 V. Sawhill (64 Off. Gaz. 1533), 
 
 453. 
 V. Sawhill (65 Off. Gaz. 1918), 
 60, 320, 331, 458. 
 Eisel V. Hays (141 Ind. 41), 217. 
 Electro-Silicon Co. v. Hazard (2'J 
 Hun, 369), 99, 110. 
 v. Levy (59 How. Pr. 469), 284. 
 V. Trask (59 How. Pr. 189), 110, 
 284. 
 Elgin Butter Co. v. Sands (155 
 
 111. 127), 155, 558. 
 Elgin National Watch Co. v. Love- 
 land (132 Fed. Rep. 41), 159. 
 V. Illinois Watch Co. (1), (89 
 
 Fed. Rep. 487), 134, 272. 
 V. Illinois Watch Co. (2), (179 
 U. S. 665), 6, 7, 135, 159, 256, 
 315, 446, 459. 
 Elliott's Appeal (60 Pa. St. 161), 
 
 189. 
 Ellis V. Zeilen, (42 Ga. 91), 376. 
 El Modello Cigar Co. v. Gate (25 
 Fla. 886), 358, 366.
 
 Eme-Exp 
 
 TABLE OF CASES. 
 
 XXIX 
 
 References 
 
 Emerson v. Badger (101 Mass. 82), 
 
 52. 
 Emery v. Bradley (88 Me. 357), 
 
 209. 
 Empire Typesetting Machine Co. 
 
 V. Linotype Co. (79 L. T. N. 
 
 S. 8), 47. 
 Employers' Liability Assur. Corp. 
 
 Ltd. V. Employers' Liability 
 
 Ins. Co. (16 N. Y. Supp. 397), 
 
 20. 
 England v. New York Publishing 
 
 Co. (8 Daly, 375), 139. 
 Eno V. Dunn (L. R. 15 A. C. 252), 
 
 269, 371. 
 Enoch Morgan's Sons Co. v. Edler 
 
 (Cox, Manual, 714), 375. 
 V. Hunkele (16 Off. Gaz. 1092), 
 
 381. 
 V. Schwachofer (5 Abb. Pr. N. 
 
 C. 265). 
 V. Troxell (89 N. Y. 292), 243, 
 
 252, 276. 
 V. Wendover (43 Fed. Rep. 420), 
 
 103, 276. 
 V. Whittier-Coburn Co. (118 Fed. 
 
 Rep. 657), 288. 
 Enterprise Mfg. Co. v. Landers, 
 
 Frary & Clark (124 Fed. Rep. 
 
 923), 277. 
 V. Landers, Frary & Clark (65 
 
 C. C. A. 587), 277. 
 E. Regensburg & Sons v. Juan J. 
 
 Portuondo Cigar Mfg. Co. 
 
 (136 Fed Rep. 866), 243, 245. 
 Erlinger v. Bouceau (51 111. 94). 
 Erwin v. Hayden (43 S. W. Rep. 
 
 610), 215. 
 Estcourt V. The Escourt Hop Es- 
 sence Co. (31 L. T. N. S. 567), 
 
 69. 
 Estes V. Leslie (1), (27 Fed. Rep. 
 
 22), 168. 
 V. Leslie (2), (29 Fed. Rep. 91), 
 
 168, 283. 
 
 are to par/es. 
 
 Estes V. Williams (21 Fed. Rep. 
 
 189), 17, 21, 24. 
 V. Worthington (1). (22 Fed. 
 
 Rep. 882), 173, 379. 
 V. Worthington (2), (30 Fed. 
 
 Rep. 465), 338. 
 V. Worthington (3), (31 Fed. 
 
 Rep. 154), 168. 
 Eureka Fire Hose Co. v. Eureka 
 
 Rubber Mfg. Co. (60 Atl. Rep. 
 
 561), 99. 
 Evans v. Smallcombe (L. R. 3 H. 
 
 L. 249), 174. 
 V. Von Laer (32 Fed. Rep. 153), 
 
 93, 129, 260, 273, 274. 
 Exchange Bank v. Wichita Cat- 
 tle Co. (61 Fed. Rep. 190), 
 
 396. 
 Ex parte Adam Roth Gro. Co. 
 
 (62 Off. Gaz. 315), 451. 454. 
 Adriance, Piatt & Co. (20 Off. 
 
 Gaz. 1820), 456. 
 Alden (15 Off. Gaz. 389), 417. 
 American Lead Pencil Co. (61 
 
 Off. Gaz. 151), 458. 
 Anti-Adulteration League (86 
 
 Off. Gaz. 1803), 447. 
 Bassett (55 Off. Gaz. 997), 447. 
 Bloch & Co. (40 Off. Gaz. 443), 
 
 417, 450, 455. 
 Brand Stove Co. (62 Off. Gaz. 
 
 588), 90. 
 Brigham (20 Off. Gaz. 891), 94, 
 
 412. 
 Bronson Co. (87 Off. Gaz. 1782), 
 
 90, 448. 
 Buffalo-Pitts Co. (89 Off. Gaz. 
 
 2069), 448, 449, 456, 462. 
 Butler (87 Off. Gaz. 1781), 102. 
 Caire (15 Off. Gaz. 248), 289, 420. 
 Capitol City Dairy Co. (83 Off. 
 
 Gaz. 295), 94. 
 
 Cigar Makers' Association (16 
 Off. Gaz. 958), 56, 419. 
 
 C. G. Hainline & Co. (58 Off Gaz. 
 947), 425.
 
 XXX 
 
 TABLE OF CASES. 
 
 Ex parte — Cia-Lor 
 
 References 
 
 Ex parte Clark-Jewell-Wells Co. 
 
 (S3 Off. Gaz. 915), 451. 
 Claire (15 Off. Gaz. 248). 420. 
 Coats (16 Off. Gaz. 544), 419. 
 Cohn (1), (16 Off. Gaz. 680), 
 
 417. 
 Cohn (2), (16 Off. Gaz. 680), 89, 
 
 94, 417. 
 Consolidated Fruit Jar Co. (16 
 
 Off. Gaz. 679), 414, 420. 
 Coon (58 Off. Gaz. 946), 454, 
 
 457. 
 Creedmore Cartridge Co. (56 
 
 Off. Gaz. 1333), 420, 456. 
 Davids & Co. (16 Off. Gaz. 94), 
 
 411, 417, 419, 420. 
 Dawes & Fanning (1 Off. Gaz. 
 
 27), 418. 
 Diamond Laboratory Co. (44 
 
 MSS. D. 19), 425. 
 Dr. Earter Med. Co. (106 Off. 
 
 Gaz. 1779), 293. 
 Egyptian Cigarette Co. (85 Off. 
 
 Gaz. 1905), 101. 
 Eldredge Co. (55 Off. Gaz. 1278), 
 
 425. 
 Ervin A. Rice Co., (83 Off. Gaz. 
 
 1207), 88. 
 Fairchild (21 Off. Gaz. 789), 421. 
 Farnum & Co. (18 Off. Gaz. 412), 
 
 81, 130, 418. 
 
 F. H. Gilson Co. (83 Off. Gaz. 
 1992), 448. 
 
 Foley & Co. (87 Off. Gaz. 1957), 
 
 99, 293. 
 Foss (2 DeG. & J. 230), 25, 104. 
 Frieberg & Workum ( 20 Off. Gaz. 
 
 1164), 5, 456. 
 Gale Mfg. Co. (85 Off. Gaz. 
 
 1907), 463. 
 George B. Hurd & Co. (59 Off. 
 
 Gaz. 1763), 457. 
 
 G. F. Heublein & Bro. (87 Off. 
 Gaz. 179), 88. 
 
 Grand Rapids School Furniture 
 
 Co. (87 Off. Gaz. 1957), 103. 
 Grove (67 Off. Gaz. 1447), 455. 
 
 are to pages. 
 
 Ex parte Guenther Milling Co. (86 
 
 Off. Gaz. 1986), 91. 
 Halliday Bros. (16 Off. Gaz. 
 
 500), 418. 
 Hampden Watch Co. (81 Off. 
 
 Gaz. 1282), 102. 
 Hance Bros & White (87 Off. 
 
 Gaz. 698). 89. 
 Hendley (72 Off. Gaz. 1654), 456. 
 Henderson (85 Off. Gaz. 453), 85, 
 
 92. 
 Heyman (18 Off. Gaz. 922), 101. 
 H. J. Heinz Co. (62 Off. Gaz. 
 
 1064), 425. 
 Holophane Glass Co. (100 Off. 
 
 Gaz. 450), 81. 
 Horlick's Food Co. (84 Off. Gaz. 
 
 1870), 92. 
 Hudson (55 Off. Gaz. 1401), 452. 
 Hutchins (100 Off. Gaz. 1330), 
 
 293 
 Indiana Bicycle Co. (72 Off. Gaz. 
 
 654), 105. 
 J. D. Richards & Sons (54 MSS. 
 
 D. 425), 45L 
 Keystone Chamois Co. (101 Off. 
 
 Gaz. 3109), 293. 
 King (46 Off. Gaz. 119), 417. 
 King (Comm. Dec. 1870, p. 109), 
 
 411. 
 Kinney (72 Off. Gaz. 1349), 103, 
 
 151, 454. 
 Kipling (24 Off. Gaz. 899), 455. 
 Kirker, Greer & Co. (Ltd.), (37 
 
 MSS. D. 392), 454. 
 Knapp (16 Off. Gaz. 318), 418. 
 Krusius Bros. (82 Off. Gaz. 
 
 1687), 88. 
 Langdon (61 Off. Gaz. 286), 412, 
 
 447. 
 Lawrence (44 L. T. N. S. 98), 
 
 22, 334. 
 Lazarus, Schwarz & Lipper (64 
 
 Off. Gaz. 1396). 451, 454. 
 Lee & Shepard (24 Off. Gaz. 
 
 1271), 456. 
 Lorenz (89 Off. Gaz. 2067), 103.
 
 Ex parte— Lyo-Wei 
 
 TABLE OF CASES. 
 
 XXXI 
 
 References 
 
 Ex parte Lyon, Dupuy & Co. (28 
 
 Off. Gaz. 191). 60, 411, 457. 
 Lutz (33 Off. Gaz. 1389), 412. 
 Mahn (82 Off. Gaz. 1210), 427. 
 Marsching & Co. (15 Off. Gaz. 
 
 294), 90, 418. 
 Martin (89 Ofi. Gaz. 2258), 71, 
 
 455. 
 McCabe (46 Fed. Rep. 363), 391. 
 Mclunerney (85 Off. Gaz. 149), 
 239. 
 Moodie (28 Off. Gaz. 1271), •il2, 
 
 413. 
 Muir (87 Off. Gaz. 357), 451. 
 Nave & McCord Merc. Co. (86 
 
 Off. Gaz. 1985), 90. 
 Olive Wheel Co. (84 Off. Gaz. 
 
 1871), 93. 
 Oliver (18 Off.' Gaz. 923), 129. 
 Orcutt & Son (8 Off. Gaz. 276), 
 
 425. 
 Pace, Talbott & Co. (16 Off. Gaz. 
 
 909). 420. 
 Palmer (58 Off. Gaz. 383), 425. 
 Palmer (Comm. Dec. 1871, p. 
 
 289), 417. 
 Parlter (13 Off. Gaz. 323), 425. 
 Parker, Holmes & Co. (85 Off. 
 
 Gaz. 287), 90. 
 Pearson Tobacco Co. (85 Off. 
 
 Gaz. 287). 71. 94. 
 Peper (16 Off. Gaz. 678), 419. 
 Punnett (L. R. 16 Ch. D. 226), 
 
 195 
 Rail (85 Off. Gaz. 453). 93. 
 Roasted Cereals Co. (57 MSS. 
 
 D. 455), 447. 
 Roy (54 Off. Gaz. 1267), 446, 
 
 452. 
 Ruckstuhl (56 Off. Gaz. 927), 
 
 425. 
 Safety Powder Co. (16 Off. Gaz. 
 
 136). 94, 417. 
 Schmachtenberg Bros. (51 MSS. 
 
 D. 204), 455. 
 SchoUenberger (96 U. S. 369), 
 
 350. 
 
 are to pages. 
 
 Ex parte Schumacher & Ettlinger 
 
 (1), (19 Off. Gaz. 791), 412. 
 Schumacher & Ettlinger (2), 
 
 (22 Off. Gaz. 1291), 412, 413. 
 Smith (1), (16 Off. Gaz. 679), 
 
 418. 420. 
 Smith (2), (16 Off. Gaz. 679), 
 
 92. 418. 
 Smith (3), (16 Off. Gaz. 764), 
 
 92, 417. 
 Sodafoam Baking Powder Co. 
 
 (96 Off. Gaz. 1239), 293. 
 Spayd (86 Off. Gaz. 631), 91. 
 Spinner (35 MSS. D. 15), 446, 
 
 447. 
 Standard Fashion Co. (89 Off. 
 
 Gaz. 189), 451. 
 Stokes (64 Off. Gaz. 437). 94, 
 
 418. 
 Strasburger & Co. (20 Off. Gaz. 
 
 155), 95, 412, 421, 454, 455, 457. 
 Stuhmer (86 Off. Gaz. 181), 85, 
 
 90, 119. 
 Sullivan & Burke (16 Off. Gaz. 
 
 765). 420. 
 Sutton (108 Off. Gaz. 291). 293.. 
 Thaddeus Davids & Co. (16 Off. 
 
 Gaz. 94), 426. 
 Thompson, Derby & Co. (16 Off. 
 
 Gaz. 137). 95. 418. 
 Tietgens & Robertson (87 Off. 
 
 Gaz. 2117), 100. 4.35. 
 United States Playing Card Co. 
 
 (82 Off. Gaz. 1209). 104. 426, 
 
 427. 
 Velvril Co. (84 Off. Gaz. 807), 
 
 81. 448. 
 Vogel & Son (99 Off. Gaz. 2321), 
 
 293. 
 Waeferling (16 Off. Gaz. 764), 
 
 90. 412, 418. 
 W. B. Belknap & Co. (105 Off. 
 
 Gaz. 745), 293. 
 Weil (83 Off. Gaz. 1802). 96. 
 
 Weisert Bros. (16 Off. Gaz. 680), 
 420.
 
 xxxu 
 
 TABLE OF CASES. 
 
 Fab-Fla 
 
 References 
 
 Ex parte Wiesel (36 Off. Gaz. 
 
 6S9), 412, 413. 
 Willard Chem. Co. (107 Off. Gaz. 
 
 1972), 293. 
 Wolf (80 Off. Gaz. 1271), 91, 
 
 455. 
 W. Simpson & Sons (10 Off. Gaz. 
 
 334), 425. 
 Yale & Towne Mfg. Co. (81 Off. 
 
 Gaz. 801), 96. 
 Young (Seb. 537), 25, 297. 
 Zwack & Co. (76 Off. Gaz. 1855), 
 
 449, 804. 
 
 F 
 
 Faber v. D'Utassey (11 Abb. Pr. 
 
 N. S. 399), 271. 
 V. Faber (49 Barb. 357), 100, 
 
 143. 
 V. Hovey (Codd. Dig. 79), 104. 
 Fairbanks v. Jacobus (Fed. Case 
 
 No. 4608), 90, 121, 243, 254. 
 Falk V. American West Indies 
 
 Trading Co. (180 N. Y. 445), 
 
 34. 
 Falkinburg v. Lucy (35 Cal. 52), 
 
 127. 
 Farben-fabriken T. M. K. (7 R. 
 
 P. C. 439), 94. 
 Farina v. Cathery (L. -T. N. C. 
 
 1867, p. 134), 338. 
 V. Silverlock (1 K. & J. 509), 
 
 16, 259, 260, 333. 
 Farmers' Loan & Trust Co. v. 
 
 Farmers' Loan & Trust Co. 
 
 of Kansas (1 N. Y. Supp. 44), 
 
 151, 168. 
 Farmers Mfg. Co. v. W. R. Harri- 
 son & Co. (96 Off. Gaz. 2062), 
 
 453. 
 Farr v. Pearce (3 Madd. 74), 191. 
 Featherstonhaugh v. Fenwick (17 
 
 Ves. 298), 188. 
 V. Turner (25 Beav. 382), 205. 
 Feder v. Benkert (76 Fed. Rep. 
 
 613), 794. 
 
 are to pages. 
 
 Feder v. Brudno (5 Ohio N. P. 
 
 275), 102. 
 Fennessy v. Clark (L. R. 37 Ch. 
 
 D. 184), 359. 
 
 V. Day (55 L. T. N. S. 161), 
 
 375, 404. 
 V. Rabbits (56 L. T. 138), 382. 
 Ferguson v. Davol Mills (2 Brewst. 
 
 314), 5. 
 Fetridge v. Merchant (4 Abb. Pr. 
 
 156), 97. 
 V. Wells (4 Abb. Pr. 144), 69, 
 
 88, 127. 
 Field V. Lewis (Seton, 4th ed., 
 
 237), 375, 402. 
 Filkins v. Blackman (Fed. Case 
 
 No. 4786), 24, 30, 31, 32, 208. 
 Filley v. Child (Fed. Case No. 
 
 4787), 79, 98. 
 V. Fassett (44 Mo. 173), 98, 99, 
 
 242, 256, 262, 374, 391. 
 Findlay v. Carson (97 Iowa 537), 
 
 198. 
 Finger v. Hahn (42 N. J. Bq. 
 
 597), 209. 
 Finley Rubber-Varnish & Enamel 
 
 Co. V. Finley (32 Atl. Rep. 
 
 740), 229. 
 Fischer v. Blank (138 N. Y. 244), 
 
 88, 119, 249. 
 V. Hayes (6 Fed. Rep. 63), 398. 
 Fish Bros Wagon Co. v. Fish 
 
 Bros Mfg. Co. (1), (87 Fed. 
 
 Rep. 201), 32, 336. 
 V. Fish Bros. Mfg. Co. (2), (37 
 
 C. C. A. 146), 13, 32. 
 V. LaBelle Wagon Works (82 
 
 Wis. 546), 32, 52. 
 Fisher & Co. v. The Apollinaris 
 
 Co. (L. R. 10 Ch. D. 297), 46. 
 Fisk V. Mahler (54 Fed. Rep. 528), 
 
 381. 
 Fite V. Dorman (57 S. W. Rep. 
 
 129), 212. 
 Flagg Mfg. Co. V. Hoi way (59 N. 
 
 E. Rep. 667), 147, 243, 254.
 
 Fla-Geb 
 
 TABLE OF CASES. 
 
 XXXIU 
 
 lieferences 
 
 Flavel V. Harrison (10 Hare, 467), 
 
 69, 73. 
 Fleischmann v. Schuckmann (62 
 
 How. Pr. 92). 135, 373. 
 V. Starkey (25 Fed. Rep. 127), 
 
 243, 249. 
 Fleming v. Newton (L. R. 1 H. L. 
 
 C. 363), 46. 
 FoUet V. Jeffreyes (1 Sim. N. S. 
 
 1), 220. 
 Ford V. Foster (L. R. 7 Ch. App. 
 
 611), 69, 72, 99, 114, 170. 181, 
 
 374. 
 Foster v. Blood Balm Co. (77 Ga. 
 
 216), 299. 
 V. Webster Piano Co. (13 N. 
 
 Y. Supp. 338), 143, 291. 
 Fotheringham v. Express Co. (36 
 
 Fed. Rep. 252), 357. 
 Fowle V. Park (131 U. S. 88), 219. 
 
 V. Spear (7 Pa. L. J. 176). 105. 
 Fralich v. Despar (165 Pa. St. 24), 
 
 222. 
 Franck v. Frank Chicory Co. (95 
 
 Fed. Rep. 818), 249. 
 Frank v. Sleeper (150 Mass. 583), 
 
 24, 297, 299. 
 Frankau v. Pope (11 Cape of 
 
 Good Hope 209), 299. 
 Frazer v. Frazer Lubricator Co. 
 
 (121 111. 147), 24, 145, 208. 
 Frazier v. Bowling (18 Ky. L. 
 
 Rep. 1109). 68, 377. 
 French v. Alter & Julian Co. (74 
 
 Fed. Rep. 788), 380. 
 Frese v. Bachof (Fed. Case No. 
 
 5110), 91. 247. 377. 
 Frohman v. Hopkins Amusement 
 
 Co. (103 111. App. 613). 171. 
 V. Miller (29 N. Y. Supp. 1109), 
 
 98, 170. 
 V. Payton (68 N. Y. Supp. 849), 
 
 171. 
 Frost V. Rindskopf (42 Fed. Rep. 
 
 408). 289. 
 Ft. Stanwix Canning Co. v. Wm. 
 
 McKinley Canning Co. (63 
 
 N. Y. Supp. 704), 287. 
 
 are to pages. 
 
 Fuller V. Huff (43 C. C. A. 453), 
 
 91, 271. 
 V. Huff (99 Fed. Rep. 439), 91, 
 
 272. 
 Full wood V. Fullwood (1), (W. 
 
 N., 1873, p. 93), 272. 
 Fulton V. Sellers (4 Brewst. 42), 
 
 23, 72, 96, 97, 141. 
 Funke v. Dreyfus (34 La. Ann. 
 
 80), 97. 
 
 G 
 
 Gabriel v. Sicilian Asphalt Co. 
 
 (1), (52 N. Y. Supp. 722), 
 
 128. 
 V. Sicilian Asphalt Co. (2), (56 
 
 N. Y. Supp. 30), 129. 
 Gage V. Canada Pub. Co. (11 
 
 Can. Sup. Ct. 306), 28, 97. 
 
 145, 373. 
 Gage-Downs Co. v. Featherbone 
 
 Corset Co. (83 Fed. Rep. 213), 
 
 98, 136. 
 Gail V. Wackerbarth (28 Fed. 
 
 Rep. 286), 249, 391. 
 Gaines v. Sroufe (117 Fed. Rep. 
 
 965), 365. 
 Gaily V. Colts' Patent Fire Arms 
 
 Mfg. Co. (30 Fed. Rep. 118), 
 
 79. 
 Gannert v. Rupert (1), (119 Fed. 
 
 Rep. 221), 169. 
 V. Rupert (2), (62 C. C. A. 
 
 594), 98, 169. 
 Gardner v. Bailey (Fed. Case No. 
 
 5221), 288. 
 Garrett v. T. H. Garrett & Co. 
 
 (24 C. C. A. 173). 144. 146, 
 
 155, 294, 375. 
 
 Garretson v. Clark (111 U. S. 
 120), 383. 
 
 Gartside v. Outram (3 Jur. N. 
 S. 39). 220. 
 
 Gebbie v. Stitt (31 N. Y. Supp. 
 102), 129.
 
 XXXIV 
 
 TABLE OF CASES. 
 
 Gee-Gor 
 
 References are to pages. 
 
 Gee V. Pritchard (2 Swanst. 402), 
 
 46. 225. 
 Gegg V. Bassett (3 Ont. L. Rep. 
 
 263), 23. 
 General Electric Co. v. Re-new 
 
 Lamp Co. (128 Fed. Rep. 
 
 154), 274, 299, 378. 
 George v. Smith (52 Fed. Rep. 
 
 830). 63. 99. 269, 270. 374. 
 George T. Stagg Co. v. Taylor 
 
 (95 Ky. 651), 102, 299, 304. 
 
 323. 
 Geron v. Gartner (47 Fed. Rep. 
 
 467), 297. 
 Gessler V. Grieb (80 Wis. 21). 91. 
 G. G. White Co. v. Miller (50 
 
 Fed. Rep. 277). 16, 98, 286. 
 Giblett V. Read (9 Mod. 459). 28. 
 
 104, 335. 
 Gilka V. Mihalovitch (50 Fed. 
 
 Rep. 427), 172. 
 Gillett V. Lumsden (4 Ont. Law 
 
 Rep. 300). 89, 176. 
 Gillis V. Hall (1), (2 Brewst. 
 
 342), 145. 792. 
 V. Hall (2), (3 Brewst. 509), 
 
 141. 142. 
 Gillott V. Esterbrook (47 Barb. 
 
 455). 175. 179, 295, 298, 373. 
 
 793. 
 V. Kettle (3 Duer, 624), 276. 
 
 296, 298. 373. 
 Oilman v. Dwight (13 Gray, 356), 
 
 191. 
 V. Hunnewell (122 Mass. 139), 
 
 13, 89, 140, 143, 253, 266. 
 Ginter v. Kinney Tobacco Co. (12 
 
 Fed. Rep. 782). 70, 95. 
 Giron v. Gartner (47 Fed. Rep. 
 
 467). 299. 
 Glen Cove Mfg. Co. v. Ludeling 
 
 (22 Fed. Rep. 823), 102. 286, 
 
 321, 328, 354, 365, 372. 413, 
 
 459, 460. 
 Glen & Hall Mfg. Co. v. Hall (61 
 
 N. Y. 226), 179. 297. 
 
 Glendon Iron Co. v. Uhler (75 
 
 Pa. St. 467), 90. 128. 
 Glenny v. Smith (2 Drew. & Sm. 
 
 47G). 256. 
 Globe-Wernicke Co. v. Brown (121 
 Fed. Rep. 185), 99. 
 V. Brown & Besly (57 C. C. A. 
 
 344), 255. 
 V. Fred Macey Co. (56 C. C. 
 A. 304). 255. 
 Glotin V. Oswald (65 Fed. Rep. 
 
 151), 328, 350. 
 Gluckman v. Strauch (91 N. Y. 
 
 Supp. 223), 68. 
 Godillot V. American Grocery Co. 
 (71 Fed. Rep. 873). 299. 
 V. Harris (81 N. Y. 263), 15. 
 V. Hazard (1), (44 N. Y. Super. 
 
 Ct. 427), 4, 57. 
 
 V. Hazard (2), (81 N. Y. 263), 
 
 92. 
 
 Goldstein v. Whelan (62 Fed. 
 
 Rep. 124), 102, 329, 379, 401. 
 
 Goodfellow V. Prince (L. R. 35 
 
 Ch. D. 9), 313. 
 Goodlet V. Railroad (122 U. S. 
 
 391), 350. 
 Goodman v. Bohls (3 Tex. Civ. 
 App. 183), 124. 
 V. Henderson (58 Ga. 567). 189. 
 V. Meriden Britannia Co. (50 
 Conn. 139), 22. 
 Goodyear Co. v. Goodyear Rub- 
 ber Co. (128 U. S. 598), 38. 
 41. 90. 153. 
 Goodyear Rubber Co. v. Day (22 
 Fed. Rep. 44), 79, 153, 380. 
 V. Goodyear's Rubber Mfg. 
 Co. (21 Fed. Rep. 276). 150, 
 153. 
 Gorham Co. v. White (14 Wall. 
 
 511), 392. 
 Gorham Mfg. Co. v. Emery-Bird- 
 Thayer Dry Goods Co. (92 
 Fed. Rep. 774). 369, 375, 398. 
 V. Emery-Bird-Thayer Co. (43 
 C. C. A. 511), 257.
 
 Gor-Har 
 
 TABLE OF CASES. 
 
 XXXV 
 
 References 
 
 Gormley v. Bunyan (138 U. S. 
 
 623), 391. 
 Gouraud v. Trust (3 ilun, 627), 
 
 100, 273. 
 Gout V. Aleploglu (6 Beav. 69), 
 
 119. 
 Graham v. Plate (40 Cal. 593), 
 
 359, 383. 
 Gravel Roofers' Exch. v. Turn- 
 bull (64 Off. Gaz. 441), 335. 
 Gravely v. Gravely (42 Fed. Rep. 
 
 265), 321, 328, 350, 365, 461. 
 Gray v. Taper-Sleeve Pulley 
 
 Works (16 Fed. Rep. 436), 
 
 331. 
 Greacen v. Bell (115 Fed. Rep. 
 
 5o3), 30. 
 Green v. Rooke (W. N., 1872, p. 
 
 49), 90. 
 Greene v. Woodhouse (38 Off. 
 
 Gaz. 1891), 122. 
 Gregory v. Spieker (110 Cal. 
 
 150), 214, 215. 
 Griggs, Cooper & Co. v. Erie Pre- 
 serving Co. (131 Fed. Rep. 
 
 359), 20, 53, 285, 365. 
 Grillon v. Guenin (W. N., 1877, 
 
 p. 14), 104, 115, 376. 
 Grimm v. Walker (45 Iowa 106), 
 
 198. 
 Grow v. Seligman (47 Mich. 607), 
 
 148, 218. 
 Guilhon v. Undo (9 Bos. 605), 
 
 369. 
 Guinness v. Heap (Seb. 617), 285. 
 v. Ullmer (10 L. T. 127), 242, 
 
 259, 265. 
 G. W. Cole Co. V. American Ce- 
 ment & Oil Co. (65 C. C. A. 
 
 105), 256. 
 
 H 
 
 Hagen v. Beth (118 Cal. 330), 
 
 380. 
 Hagg V. Darley (47 L. J. Ch. 
 
 567), 222. 
 
 are to pages. 
 
 Hainque v. Cyclops Iron Works 
 
 (136 Cal. 35), 284, 528. 
 Hall V. Barrows (4 DeG. J. & 
 
 S. 150), 13, 58, 97, 138, 179. 
 
 189, 194, 265, 268, 297, 299, 
 
 374. 
 V. Hall (20 Beavan 139), 188, 
 
 193. 
 Halsey v. Brotherhood (45 L. T. 
 
 N. S. 640), 47. 
 Halstead v. Houston (111 Fed. 
 
 Rep. 376), 280, 304. 
 Hammond v. Brunker (9 R. P. C. 
 
 301), 25, 181. 
 V. Douglas (5 Ves. 539), 189. 
 Hanford v. Westcott (16 Off. Gaz. 
 
 1181), 100, 421, 459. 
 Handy v. Commander (49 La. 
 
 Ann. 1119), 361, 372. 
 Hanley v. Fidelity Ins. T. & S. 
 
 Co. (8 Pa. Dist. R. 207), 228. 
 Hanna v. Andrews (50 la. 462), 
 
 191, 198. 
 Hansen v. Siegel-Cooper Co. (100 
 
 Fed. Rep. 690), 268, 395. 
 V. Siegel-Cooper Co. (2), (106 
 
 Fed. Rep. 691), 285. 
 Hardy v. Cutter (3 Off. Gaz. 468), 
 
 93, 143, 266. 
 Hargraves v. Smith (Seb. 338), 
 
 351. 
 Harper v. Holman (84 Fed. Rep. 
 
 222), 340. 
 V. Lare (93 Fed. Rep. 989), 292. 
 v. Pearson (3 L. T. N. S. 547), 
 
 335. 
 Harper & Bros. v. Lare (43 C. C. 
 
 A. 182), 292. 
 Harris v. Brown (202 Pa. 16), 
 
 149. 
 Harrington v. Libby (Fed. Case 
 
 No. 6107), 113, 243. 
 Harrison v. Taylor (11 Jur. N. S. 
 
 408), 256. 
 
 Harson v. Halkyard (46 Atl. 
 Rep. 271), 143.
 
 XXXVl 
 
 TABLE OF CASES. 
 
 Har-HU 
 
 References 
 
 Hart V. Colley (7 R. P. C. 93), 
 
 268. 
 Kartell v. Viney (Fed, Case No. 
 
 6158), 88. 
 Hatchard v. Mege (L. R. 18 Q. 
 
 B. D. 771), 49, 335. 
 Hansen v. Siegel-Cooper Co. (1), 
 
 (106 Fed. Rep. 690). 
 V. Siegel-Cooper Co. (2), (106 
 
 Fed. Rep. 691), 101. 
 H. A. Williams Mfg. Co. v. Noera 
 
 (158 Mass. 110). 
 Hawley v. Donnelly (8 Paige, 
 
 415), 401. 
 Hay & Todd Mfg. Co. v. Querns 
 
 Bros. (86 Off. Gaz. 1323), 7, 
 
 453. 
 Hazard v. Caswell (1), (57 How. 
 
 Pr. 1), 297. 
 V. Caswell (2), (93 N. Y. 259), 
 
 26, 336. 
 Hazelton Boiler Co. v. Hazelton 
 
 Tripod Boiler Co. (142 111. 
 
 494), 59, 154, 156. 
 
 Hazzopulo V. Kaufmann (23 Sol. 
 
 J. 819), 313. 
 H. B. Chaffee Mfg. Co. v. Selchow 
 
 (131 Fed. Rep. 543), 90, 107. 
 Heath v. Wright (3 Wall. Jr. 1), 
 
 69, 101. 
 
 Hecht V. Porter (9 Pac. C. L. J. 
 
 569), 101, 268, 371. 
 Hegeman v. Hegeman (8 Daly 
 
 1), 23, 25. 
 V. O'Byrne (9 Daly, 264), 373, 
 
 374. 
 ^-^ Heide v. Wallace & Co. (135 Fed. 
 
 Rep. 346), 42. 
 V. Wallace & Co. (129 Fed. 
 
 Rep. 649), 42. 
 Heinisch's Sons Co. v. Boker (86 
 
 Fed. Rep. 765). 
 Heinz v. Lutz (146 Pa. 592), 266. 
 Helmbold v. H. T. Helmbold Mfg. 
 
 Co. (53 How. Pr. 453), 71,91. 
 
 are to pages. 
 
 Hennessy v. Braunschweiger & 
 
 Co. (89 Fed. Rep. 664), 16. 
 
 60, 183, 320, 328, 365, 446, 
 
 449, 459, 460, 462. 
 
 V. Budde (82 Fed. Rep. 541), 
 
 398, 407. 
 V. Herrmann (89 Fed. Rep. 
 669), 258, 259, 328, 329, 350, 
 366, 461, 778. 
 V. Hogan (6 W. W. & A'B. 
 
 Eq. 225), 275, 373. 
 V. Kennett (Seb. 556), 369, 373. 
 V. Wheeler (69 N. Y. 271), 70, 
 
 376. 
 V. White (6 W. W. & A'B. Eq. 
 
 216), 275, 373. 
 V. Wilmerding-Loewe Co. (103 
 Fed. Rep. 90), 366, 385. 
 Herbert v. Dupaty (42 La. Ann. 
 
 343), 188, 200, 206. 
 Hetterman v. Powers (102 Ky. 
 
 133), 56, 569. 
 Heublein v. Adams (125 Fed. 
 
 Rep. 782), 21, 58, 65, 98. 
 Hickman v. Link (116 Mo. 123), 
 
 183. 
 Hier v. Abrahams (82 N. Y. 519), 
 
 103, 171, 287, 373. 
 Higgins V. Dakin (33 N. Y. Supp. 
 890), 656. 
 V. Keuffel (140 U. S. 428), 424, 
 425, 427. 
 Higgins Co. v. Higgins Soap Co. 
 (144 N. Y. 462), 144, 146, 
 150, 156. 
 Hildreth v. McCaul (74 N. Y. 
 Supp. 1075), 400. 
 V. D. S. McDonald Co. (164 
 
 Mass. 16), 253. 
 V. Sparks Mfg. Co. (99 Fed. 
 Rep. 484), 259, 340, 384. 
 Hill V. Lockwood (32 Fed. Rep. 
 
 389), 33, 55, 134, 337. 
 Hilsen v. Libby (44 N. Y. Super. 
 
 Ct. 12), 54. 
 Hilson Co. V. Foster (80 Fed. 
 Rep. 896), 39.
 
 UiQ-H08 
 
 TABLE OF CASES. 
 
 XXXVll 
 
 Hine v. Lart (10 Jur. 106), 99, 
 
 119, 334. 
 Hinrichs v. Berndea (Cox, Man- 
 ual, 594), 47. 
 Hipgrave v. Case (L. R. 28 Ch. D. 
 
 356), 216. 
 Hiram Holt Co. v. Wadsworth 
 
 (41 Fed. Rep. 34), 79, 83, 
 
 102, 286. 
 Hiram Ricker & Sons v. Leigh 
 
 (77 N. Y. Supp. 540). 274. 
 Hiram Walker & Sons v. Miko- 
 
 las (79 Fed. Rep. 955), 137. 
 Hires v. Hires (6 Pa. Dis. R. 
 
 285), 249. 
 Hirsch v. Jonas (L. R. 3 Ch. D. 
 
 584), 56. 
 Hirst V. Denham (L. R. 14 Eq. 
 
 542), 101, 102, 103. 
 Hitchcock V. Coker (6 Ad. & E. 
 
 428), 192. 
 H. Mueller Mfg. Co. v. A. Y. Mc- 
 
 Donaly & Morrison Mfg. Co. 
 
 (132 Fed. Rep. 585), 380. 
 Hoagland v. Segur (38 N. J. Law 
 
 237). 208. 
 Hobbs V. Francais (19 How. Pr. 
 
 567), 69. 
 Hoff V. Tarrant & Co. (71 Fed. 
 
 Rep. 163), 24, 68. 
 Hogg V. Kirby (8 Ves. 215), 164. 
 Hohner v. Gratz (1), (50 Fed. 
 
 Rep. 369), 378, 397. 
 V. Gratz (2), (52 Fed. Rep. 
 
 871), 145. 
 Holbrook v. Nesbitt (163 Mass. 
 
 120), 198, 206, 211. 
 Hollis V. Shaffer (38 Kas. 492), 
 
 200. 
 Holloway v. Holloway (13 Beav. 
 
 209), 140, 144, 376. 
 Holmes, Booth & Haydens v. 
 
 Holmes, Booth & Atwood 
 
 Mfg. Co. (37 Conn. 278), 144. 
 
 148, 156, 256. 
 Holt V. Menendez (23 Fed. Rep. 
 
 869), 372. 
 
 References are to pages. 
 
 Holzapfel's Composition Co. v. 
 Rahtjen's American Compo- 
 sition Co. (183 U. S. 1), 74. 
 
 Hoosier Drill Co. v. Ingels (14 
 Off. Gaz. 785), 412, 421. 
 
 Hondayer, Matter of (150 N. Y. 
 37), 192. 
 
 Hopkins Amusement Co. v. Froh- 
 man (202 111. 541), 171. 
 
 Hopkins v. Hitchcock (14 C. B. 
 N. S. 65), 297, 299. 
 
 Horlick's Food Co. v. Elgin Milk- 
 ine Co. (56 C. C. A. 544), 92. 
 
 Hornbostel v. Kinney (110 N. Y. 
 94), 104. 
 
 Horton Mfg. Co. v. Horton Mfg 
 
 Co. (18 Fed. Rep. 816), 24, 
 
 210, 21L 
 Horwich v. Walker-Gordon Lab- 
 oratory Co. (205 III. 497), 
 
 557. 
 Hostetter v. Adams (10 Fed. Rep. 
 
 838), 88, 249, 253, 294, 302, 
 
 303. 
 V. Anderson (1 W. W. & A'B. 
 
 Eq. 7), 274, 294. 
 V. Becker (73 Fed. Rep. 297), 
 
 285. 
 V. Bower (74 Fed. Rep. 235), 
 
 274, 393. 
 V. Brueggeman-Reinert Distill- 
 ing Co. (46 Fed. Rep. 188), 
 
 273, 274. 
 V. Brunn (107 Fed. Rep. 707), 
 
 3G9. 
 V. Comerford (97 Fed. Rep. 
 
 585), 274, 393. 
 V. Conron (111 Fed. Rep. 737), 
 
 273. 
 V. E. G. Lyons Co. (99 Fed. 
 
 Rep. 734), 372. 
 V. Fries (17 Fed. Rep. 620), 
 
 5, 273. 
 V. :\Iartinoni (110 Fed. Rep. 
 
 524), 274.
 
 xxxvm 
 
 TABLE OF CASES. 
 
 Hos-Int 
 
 References 
 
 Hostetter v. Sommers (84 Fed. 
 
 Rep. 333), 274. 
 V. Van Vorst (62 Fed. Rep. 
 
 600), 277, 405. 
 V. Vowinkle (Fed. Cas. No. 
 
 6714), 285, 376, 383, 394. 
 V. Wm. Schneider Co. (107 Fed. 
 
 Rep. 705), 273. 
 Houchens v. Houchens (95 Md. 
 
 37), 377. 
 Hovenden v. Lloyd (18 W. R. 
 
 1132), 28. 
 Howard v. Henriques (3 Sandf. 
 
 725), 311. 
 V. Taylor (90 Ala. 241), 188, 
 
 214. 
 Howe V. Howe Sewing Machine 
 
 Co. (50 Barb. 236), 141. 
 V. McKernan (30 Beavan, 547), 
 
 62, 395, 396. 
 V. Searing (10 Abb. Pr. 264), 
 
 24, 198. 
 Howe Scale Co. v. Wyckoff, Sea- 
 mans & Benedict (198 U. S. 
 
 118), 60, 154. 
 Hoxie V. Chaney (143 Mass. 592), 
 
 24, 25, 70, 96, 148, 193, 197, 
 
 198. 
 Hoyt V. Holly (39 Conn. 326), 
 
 19L 
 V. Hoyt (143 Pa. St. 623), 4, 
 
 14, 18. 
 V. J. T. Lovett Co. (17 C. C. A. 
 
 652), 91. 
 Hubbard v. Miller (27 Mich. 15), 
 
 200, 208. 
 Hubbuck V. Wilkinson (C. A.), 
 
 (L. R. 1898, 12 Q. B. 86), 49. 
 Hudson V. Osborne (39 L. J. Ch. 
 
 79), 25, 178, 179, 188, 311. 
 Hughes V. Northern Pac. Ry. Co. 
 
 (18 Fed. Rep. 106), 367. 
 Humphreys Homeopathic Medi- 
 cine Co. V. Hilton (60 Fed. 
 
 Rep. 756), 297. 
 Humphreys' Specific Med. Co. v. 
 
 are to pages. 
 
 Wenz (14 Fed. Rep. 250), 5, 
 
 Co, 91, 285, 296. 
 Hunt V. Maniere (34 Beav. 157), 
 
 339. 
 Hurricane Pat. Lantern Co. v. 
 
 Miller (56 How. Pr. 234), 291. 
 Hutchinson v. Blumberg (51 Fed. 
 
 Rep. 829), 104, 377, 404. 
 V. Covert (51 Fed. Rep. 832). 
 
 104, 288. 
 Huwer v. Dannehoffer (82 N. 
 
 Y. 499), 26, 336. 
 Kygeia Distilled Water Co. v. Hy- 
 
 geia Ice Co. (72 Conn. 64*6), 
 
 100. 
 Hygienic Fleeced Underwear Co. 
 
 V. Way (133 Fed. Rep. 245)," 
 368. 
 V. Way (C. C. A., 137 Fed. Rep. 
 
 592), 102, 292. 
 Hymen v. Solis Cigar Co. (4 
 
 Colo. App. 475), 58, 63. 
 
 Illinois Watch Case Co. v. Elgin 
 
 Nat. Watch Co. (35 C. C. A. 
 
 237), 46, 89, 135, 272, 315, 
 
 331, 446. 
 Improved Fig Syrup Co. v. Cali- 
 fornia Fig Syrup Co. (54 Fed. 
 
 Rep. 175), 88, 122, 373. 
 Independent Baking Powder Co. v. 
 
 Boorman (130 Fed. Rep. 726), 
 
 378. 
 India Rubber Co. v. Rubber 
 
 Comb Co. (45 N. Y. Super. 
 
 Ct. R. 258), 145, 296. 
 Indurated Fibre Co. v. Amos- 
 
 keag Fibre Co. (37 Fed. Rep. 
 
 695), 91, 109. 
 Industrial Mutual Deposit Co. v. 
 
 Central Mutual Deposit Co. 
 
 (66 S. W. Rep. 1032), 151. 
 Ingram v. Stiff (5 Jur. N. S. 
 
 947), 168. 
 Insurance Oil Tank Co. v. Scott 
 
 (33 La. Ann. 946), 55, lOL
 
 Int-Jos 
 
 TABLE OF CASES. 
 
 XXXIX 
 
 References 
 
 International Silver Co. v. Rodg- 
 
 ers Bros. Cutlery Co. (ioG 
 
 Fed. Kep. 101b), 287. 
 V. Simeon L. & Geo. H. Rodg- 
 
 ers Co. (110 Fed. Rep. 950), 
 
 145, 336. 
 V. Wm. G. Rogers Co. (113 
 
 Fed. Rep. 526), 145, 
 International Society v. Interna- 
 tional Society (59 N. Y. Supp. 
 
 785), 272. 
 Investor Pub. Co. v. Dobinson 
 
 (1), (72 Fed. Rep. 603), 150, 
 
 151, 156. 
 V. Dobinson (2), (82 Fed. Rep. 
 
 56), 45, 143, 168. 
 Iowa Seed Co. v. Dorr (70 la. 
 
 481), 143, 189. 
 
 Jackson v. Byrnes (103 Tenn. 
 
 698), 198. 
 Jacoby & Co. v. Lopez (23 Off. 
 
 Gaz. 342), 421, 459. 
 Jaeger's Sanitary W. S. Co. v. Le 
 
 Boutilier (47 Hun, 524), 21. 
 Jaffe V. Evans & Sons, Ltd. (75 
 
 N. Y. Supp. 257), 109. 
 James v. James (L. R. 13 Eq. 
 
 421), 92, 144, 219, 368. 
 Janney v. Pan-Coast Ventilator & 
 
 Mfg. Co. (128 Fed. Rep. 121), 
 
 184, 287. 
 V. Pan-Coast Ventilator & Mfg. 
 
 Co. (2), (131 Fed. Rep. 143), 
 
 400. 
 Jaros Hygienic Underwear Co. v. 
 
 Simons (49 Fed. Rep. 276), 
 
 45. 
 Jaros Underwear Co. v. Fleece 
 
 Underwear Co. (60 Fed. Rep. 
 
 622), 91, 340. 
 Jay V. Ladler (6 R. P. C. 136). 
 
 124. 268. 
 Jefferson v. Markert (112 Ga. 
 
 498), 209. 
 
 are to pages. 
 
 Jerome v. Johnson (59 N. Y. 
 
 Supp. 859), 264, 282. 
 Jennings v. Johnson (37 Fed. 
 
 Rep. 364), 24, 124. 
 Jewish Colonization Ass'n v. Sol- 
 omon (125 Fed. Rep. 994), 
 
 334. 
 J. G. Mattingly Co. v. Mattingly 
 
 (17 Ky. L. Rep. 1), 35. 
 V. Mattingly (96 Ky. 430), 23, 
 
 24, 35. 
 Job Printers' Union of Chicago v. 
 
 Kinsley (107 111. App. 654)'. 
 
 262. 
 
 John Batt & Co. v. Dunnett (L. 
 
 R. 1899 A. C. 428), 21. 
 Johnson & Johnson v. Bauer & 
 
 Black (27 C. C. A. 374), 249, 
 
 281, 282, 394. 
 V. Bauer & Black (79 Fed. 
 
 Rep. 954), 249, 282. 
 
 Johnson v. Brunor (107 Fed. Rep. 
 466), 249. 
 
 Johnson v. Hitchcock (3 N. Y. 
 Supp. 680), 278. 
 
 Johnson v. Moss (45 Cal. 515), 
 
 200. 
 v. Orr-Ewing (7 App. Cas. 219), 
 
 15, 39, 293. 
 V. Seaman (48 C. C. A. 158), 83. 
 V. Schenck (Fed. Case. No. 
 
 7412), 7. 
 
 .Johnson Steel Street Railway Co. 
 v. North Branch Steel Co. 
 (48 Fed. Rep. 191), 229. 
 
 Joseph Banigan Rubber Co. v. 
 
 Bloomingdale (89 Off. Gaz. 
 
 1670), 96, 458. 
 Joseph Dixon Crucible Co. v. 
 
 Benham (4 Fed. Rep. 527). 
 
 391. 
 
 Joseph v. Macowsky (96 Cal. 
 518), 09. 
 
 Josselyn v. Swezey & Dart (15 
 Off. Gaz. 702), 42L
 
 xl 
 
 TABLE OF CASES. 
 
 Jud-Koh 
 
 -^ 
 
 1.1 
 
 References 
 
 J. & P. Coats V. John Coates 
 
 Thread Co. (135 Fed. Rep. 
 
 177), 155. 
 J. R. Watkins Med. Co. v. Sands 
 
 (83 Minn. 326), 58, 219. 
 Judson V. Malloy (40 Cal. 299), 
 
 183. 
 Julian V. Hoosier Drill Co. (78 
 
 Ind. 408), 63, 100, 179, 180. 
 Jurgenson v. Alexander (24 How. 
 
 Pr. 269), 402, 793. 
 
 K 
 
 Kaiserbrauerei v. Baltz Brewing 
 
 Co. (71 Fed. Rep. 695), 92, 
 
 101. 
 Kann v. Diamond Steel Co. (89 
 
 Fed. Rep. 706), 256, 281, 282, 
 
 289, 294. 
 Kassel v. Jeuda (70 N. Y. Supp. 
 
 480), 249. 
 Kathreiner's Malz Kaffee Fab. v. 
 
 Pastor Kneipp Med. Co. (82 
 
 Fed. Rep. 821), 21. 
 Keasbey v. Brooklyn Chemical Co. 
 
 (142 N. Y. 467), 97, 111, 161. 
 Keller v. B. F. Goodrich Co. (117 
 
 Ind. 556), 378. 
 Kellog V. Totten (16 Abb. Pr. 
 
 35), 194. 
 Kelly V. Byles (40 L. T. 623), 93. 
 Kennedy v. Dr. David Kennedy 
 
 Corp. (66 N. Y. Supp. 225), 
 
 310. 
 Kennedy Corp. v. Kennedy (55 
 
 N. Y. Supp. 917), 309 
 Kenny v. Gillet (70 Md. 574), 70. 
 Kentucky Distilleries & Ware- 
 house Co. V. Wathen (110 
 
 Fed. Rep. 641), 286. 
 Kerry v. Toupin (60 Fed. Rep. 
 
 272), 104, 249, 253. 
 
 are to pages. 
 
 Keuffel & Esser Co. v. H. S. 
 
 Crocker Co. (118 Fed. Rep. 
 
 187), 283, 284, 285, 287, 288, 
 
 289. 
 Kidd V. Horry (28 Fed. Rep. 
 
 773), 238. 
 V. Johnson (100 U. S. 617), 21, 
 
 30, 34, 61, 102, 148, 179, 189, 
 
 334. 
 Kidd & Co. V. Mills, Johnson & 
 
 Co. (5 Off. Gaz. 337), 102, 
 
 334. 
 Kinahan v. Bolton (15 Ir. Ch. 
 
 75), 297, 299, 332. 
 V. Kinahan (15 Ir. Ch. 75), 256. 
 Kingsley v. Jacoby (20 N. Y, 
 
 Supp. 44), 312. 
 Kinney v. Allen (Fed. Case No. 
 
 7826), 296, 418. 
 V. Basch (Seb. 542), 35, 104, 
 
 296, 299. 
 Kinney Tob. Co. v. Mailer (53 
 
 Hun, 340), 104. 
 Kipling V. G. P. Putnam's Sons 
 
 (57 C. C. A. 295), 7, 164. 
 Kirkpatrick v. Pope Mfg. Co. (61 
 
 Fed. Rep. 46), 396. 
 Klotz V. Hecht (73 Fed. Rep. 
 
 822), 45, 136. 
 Knoedler v. Boussod (47 Fed. 
 
 Rep. 465), 187, 189, 197, 206, 
 V. Glaenzer (5 C. C. A. 305), 
 
 187, 189, 197, 198, 206. 
 Knott V. Morgan (2 Keen, 213), 
 
 43. 
 Knox V. Columbia Liberty Iron 
 
 Co. (42 Fed. Rep. 378), 391. 
 Koebel v. Chicago Landlords' 
 
 Protective Bureau (210 111. 
 
 176), 286. 
 Kohler v. Sanders (122 N. Y. 65), 
 
 91. 
 Kohler Mfg. Co. v. Beeshore (1), 
 
 (53 Fed. Rep. 262), 451. 
 V. Beeshore (2), (8 C. C. A. 
 
 215). 21, 184, 220, 291, 322, 
 
 451.
 
 Kos-Law 
 
 TABLE OF CASES. 
 
 xU 
 
 References 
 
 Kostering v. Seattle Brewing & 
 
 Malting Co. (54 C. C. A. 76), 
 
 103, 268, 302. 
 Kramer v. Old (119 N. Car. 1), 
 
 209. 
 Krauss v. Jos. R. Peebles' Sons 
 
 Co. (58 Fed. Rep. 585), 68, 
 
 275, 276, 353, 373. 
 Kroegher v. McConway & Forley 
 
 Co. (149 Pa. St. 444), 230. 
 Kronthal Waters v. Becker (137 
 
 Fed. Rep. 649), 25. 
 Kroppf V. Furst (94 Fed. Rep. 
 
 150), 44, 45. 
 Kyle V. Perfection Mattress Co. 
 
 (127 Ala. 39), 103. 
 
 Labouchere v. Dawson (L. R. 13 
 
 Eq. 322), 206. 
 Lacroix v. Escobal (37 La. Ann. 
 
 533), 413, 453. 
 La Croix v. May (15 Fed. Rep. 
 
 236), 60, 62, 461. 
 V. Sarrazin (15 Fed. Rep. 489), 
 
 391. 
 Lafayette Ins. Co. v. French (18 
 
 How. 404), 350. 
 Laird v. Wilder (2 Bush, Ky., 
 
 131), 70. 
 Lalance & Grosjean Mfg. Co. v. 
 
 National Enameling & Stamp- 
 ing Co. (109 Fed. Rep. 317), 
 
 249. 
 Lamb v. Evans (L. R. 1892, 3 
 
 Ch. 462), 224. 
 Laraont v. Leedy (88 Fed. Rep. 
 
 72), 89, 366. 
 Lamplough v. Balmer (W. N., 
 
 1867, p. 293), 73. 
 Lanahan v. John Kissel & Son 
 
 (135 Fed. Rep. 899), 100, 
 
 377. 
 
 are to pages. 
 
 Landreth v. Landreth (22 Fed. 
 
 Rep. 41), 143, 145, 249. 
 Lane v. Smythe (46 N. J. Eq. 
 
 443), 188. 
 Lare v. Harper & Bros. (30 C. C. 
 
 A. 373), 380, 400. 
 La Republique Francaise v. Sara- 
 toga Vichy Springs Co. (99 
 Fed. Rep. 773), 397. 
 V. Saratoga Vichy Springs Co. 
 
 (191 U. S. 427), 159. 
 V. Schultz (1), (57 Fed. Rep. 
 
 37), 6, 129. 
 V. Schultz (2), (94 Fed. Rep. 
 
 500), 45, 46. 
 V. Schultz (3), (42 C. C. A. 
 
 233), 172. 
 V. Schultz (4), (115 Fed. Rep. 
 196), 292. 
 Larrabee v. Lewis (67 Ga. 561), 
 
 4, 94. 
 
 Lashus V. Chamberlain (6 Utah 
 
 385), 189, 214. 
 Lauferty v. Wheeler (11 Abb. N. 
 
 C. 220), 77, 96, 135. 
 
 Laughman's Appeal (128 Pa. 1), 
 25. 
 
 Lautz Bros. & Co. v. Schultz & 
 
 Co. (9 Off. Gaz. 791), 421. 
 Lavanburg v. Pfeiffer (52 N. Y. 
 
 Supp. 801), 277. 
 V. Pfeiffer (66 N. Y. Supp. 39), 
 
 277. 
 Laverne v. Hooper (Ind. L. R. 8 
 
 Mad. 149), 176, 337, 353. 
 Lawrence v. Times Printing Co. 
 
 (90 Fed. Rep. 24), 217. 
 
 Lawrence Mfg. Co. v. Lowell (129 
 Mass. 325), 296, 298. 
 
 V. Tenn. Mfg. Co. (31 Fed. 
 Rep. 776), 354. 
 
 V. Tennessee Mfg. Co. (138 U. 
 
 5. 537), 16. 38, 41, 44; 84, 
 108, 120, 126, 159, 141. 181, 
 257, 354.
 
 xlii 
 
 TABLE OF CASES. 
 
 Law-Lig 
 
 Lawson v. Bank of London (18 
 
 C, B. 84), b51. 
 Lazenby v. White (41 L. J. Cli. 
 
 354), 91, 179, 180. 
 Lea V. Deakin (Fed. Case No. 
 
 S154), 95, 129, 180. 
 V. Millar (Seb. 513), 95, 180, 
 
 181. 
 V. Wolff (15 Abb. Pr. N. S. 1), 
 
 95, 128, 137, 373. 
 Leahy V. Glover (10 R. P. C. 141), 
 
 374, 393. 
 Leather Cloth Case (11 H. L. C. 
 
 523), 3, 9, 13, 21, 22, 28, 
 
 39, 69, 74, 75, 138, 149, 179, 
 
 265, 361. 395. 
 Leather Cloth Co. v. Hirschfield 
 
 (1), (1 N. R. 551), 76. 
 V. Hirschfield (2), (1 H. & M. 
 
 295). 
 V. Lorsont (L. R. 9 Eq. 345), 
 
 72. 
 Leclancha Battery Co. v. West- 
 ern Electric Co. (1), (21 
 
 Fed. Rep. 538), 379, 380, 401. 
 V. Western Electric Co. (2), 
 
 (23 Fed. Rep. 276), 111. 
 Lee V. Haley (22 L. T. N. S. 251), 
 
 35, 172. 
 V. Haley (5 Ch. App. Cas. 155), 
 
 168, 272, 373. 
 Lehigh Valley Coal Co. v. Ham- 
 blen (23 Fed. Rep. 225), 154. 
 Leidersdorf v. Flint (1), (Fed. 
 
 Case No. 8,219), 314, 411. 
 V. Flint (2), (50 Wis. 401), 
 
 359. 
 Lemoine v. Gauton (2 E. D. 
 
 Smith, 343), 62, 179, 360. 
 Leonard v. Wells (L. R. 26 Ch. 
 
 D. 288), 105. 
 V. White's Golden Lubricator 
 
 Co. (38 Fed. Rep. 922), 105, 
 
 373. 
 Le Page Co. v. Russia Cement Co. 
 (2 C. C. A. 555), 24, 352, 358, 
 
 359. 
 
 References are to pages. 
 
 Leprince v. Her & Morris (92 
 
 Off. Gaz. 189), 453. 
 Lever v. Bedingfield (80 L. T. N. 
 
 S. 100), 44, 124. 
 Lever v. Goodwin (4 R. P. C. 
 
 492), 124. 
 Lever Bros. (Ltd.) v. Pasfield (88 
 
 Fed. Rep. 484), 104, 289, 393. 
 
 Lever Bros. Ltd., Boston Works 
 
 v. Smith (112 Fed. Rep. 998), 
 
 289. 
 Levyean v. Clements (175 Mass. 
 
 376), 225. 
 Levy V. Waitt (1), (56 Fed. Rep, 
 
 1016), 21, 56, 97. 
 V. Waitt (2), (10 C. C. A. 227), 
 
 14, 21, 56, 58, 63, 65. 
 V. Walker (L. R. 10 Ch. D. 
 
 463), 23. 
 Lewis & Nelson's Appeal (67 Pa. 
 
 153), 376. 
 Lewis V. Chapman (3 Beavan, 
 
 133), 120. 
 V. Klapproth (11 Vict. L. R. 
 
 (E) 214), 354. 
 V. Langdon (7 Sim. 421), 24, 
 
 211. 
 L. H. Harris Drug Co. v. Stucky 
 
 (46 Fed. Rep. 624), 16, 89, 
 
 323, 446, 450, 455. 
 Lichtenstein v. Goldsmith (37 
 
 Fed. Rep. 359), 99, 182. 
 Liebig's Extract Co. v. Hanbury 
 
 (17 L. T. N. S. 298), 92,180. 
 Liebig's Extract of Meat Co. v. 
 
 Libby, McNeill & Libby (103 
 
 Fed. Rep. 87), 92. 
 Liebig's Extract of Meat Co. v. 
 
 Walker (115 Fed. 822), 92, 
 
 321. 
 Liggett & Myer Tobacco Co. v. 
 
 Finzer (128 U. S. 182), 272, 
 
 291. 
 V. Hynes (20 Fed. Rep. 883), 
 
 104. 243, 256, 263, 280, 303, 
 
 391, 419.
 
 Lig-Man 
 
 TABLE OF CASES. 
 
 xliii 
 
 References are to pages. 
 
 Liggett & Myer Tobacco Co. v. 
 
 Sam Reid Tob. Co. (104 Mo. 
 
 53), 272, 361. 
 Lilienthal v. Drucklieb (84 Fed 
 
 Rep. 918), 217. 
 Linde v. Bensel (22 Hun, 601), 
 
 333. 
 Linoleum Mfg. Co. v. Nairn (7 
 
 CIi. Div. 834), 79, 92, 109, 
 
 140. 
 Linton v. First National Bank of 
 
 Kittanning (10 Fed. Rep. 
 
 894), 139. 
 Lippincott v. Hubbard (28 Pitts. 
 
 L. J. 303), 23, 25. 
 Lippman v. People (175 HI. 101), 
 
 557. 
 Listman Mill Co. v. Wm. List- 
 man Mill Co. (88 Wis. 334), 
 
 23, 102. 
 Little V. Gallus (38 N. Y. Supp. 
 
 487), 220, 222, 227. 
 V. Kellam (100 Fed. Rep. 353), 
 
 288. 
 Littlejobn v. Mulligan (3 New 
 
 Zealand Rep. 446), 384. 
 Livermore v. White (74 Me. 452), 
 
 183. 
 Llewellyn v. Rutherford (L. R. 
 
 10 C. P. 456), 195. 
 Lockwood V. Bostwick (2 Daly, 
 
 521), 97, 283. 
 Longman v. Tripp (2 Bos. & P. 
 
 N. R. 67), 25. 
 V. Winchester (16 Ves. 269), 
 
 165. 
 Lord V. Whitehead & Atherton 
 
 Machine Co. (24 Fed. Rep. 
 
 801). 364, 395. 
 Lord Byron v. Johnston (2 Mer. 
 
 29), 43. 
 Lorillard Co. v. Paper (86 Fed. 
 
 Rep. 956), 294. 
 Lorillard v. Pride (28 Fed. Rep. 
 434), 79, 243, 244, 419. 452. 
 V. Wight (15 Fed. Rep. 383). 
 249. 
 
 Love V. Stidham (18 App. D. C. 
 
 306), 209. 
 Low V. Fels (35 Fed. Rep. 361), 
 
 382. 
 V. Hall (47 N. Y. 104), 656. 
 V. Hart (90 N. Y. 457), 338, 
 
 374. 
 Lowell Mfg. Co. V. Lamed (Fed. 
 
 Case No. 8570), 57. 59, 419. 
 Lucker v. Phoenix Assurance Co. 
 
 (67 Fed. Rep. 18), 396. 
 Luddington Novelty Co. v. Leon- 
 ard (119 Fed. Rep. 937), 97. 
 V. Leonard (62 C. C. A. 269), 
 
 384. 
 Lux V. Haggin (68 Cal. 255), 174, 
 Luyties v. Hollender (1), (21 
 
 Fed. Rep. 281), 315, 321, 328, 
 
 365, 461. 
 V. Hollender (2), (30 Fed. Rep. 
 
 632), 92, 329, 461. 
 Lyman v. Burns (47 Off. Gaz. 
 
 660), 103. 
 Lysney v. Selby (2 Ld. Raym. 
 
 1118), 216. 
 
 M 
 
 Macdonald v. Richardson (1 Giff. 
 
 81), 188. 
 Macmahan Pharmacal Co. v. 
 
 Denver Chem. Mfg. Co. (51 
 
 C. C. A. 302), 21, 65. 
 Magee Furnace Co. v. Le Barron 
 
 (127 Mass. 115), 275. 
 Magnolia Metal Co. Trademarks 
 
 (66 L. J. Ch. N. S. 312), 92. 
 
 Mandeville v. Harmon (42 N. J. 
 
 Eq. 185), 192. 
 Manhattan Med. Co. v. Wood (1), 
 
 Fed. Cas. No. 9026). 17. 51, 
 
 303. 
 V. Wood (2). (108 U. S. 218), 
 
 24, 67, 68, 71, 105, 106, 135, 
 
 181, 243.
 
 xliv 
 
 TABLE OF CASES. 
 
 Man-Mel 
 
 References 
 
 Manitowoc Malting Co. v. Mil- 
 waukee Malting Co. (119 Wis. 
 
 543), 272. 
 Manitowoc Mfg. Co. v. Dickerman 
 
 (57 Off. Gaz. 1721), 63, 324, 
 
 458, 460. 
 Manitowoc Pea-Packing Co. v. 
 
 William Numsen & Sons (93 
 
 Fed. Rep. 196), 137. 
 Manufacturing Co. v. Simpson 
 
 (54 Conn. 527), 145. 
 V. Trainer (101 U. S. 51), 3, 4, 
 
 6, 68, 87, 126, 263, 297, 298, 299. 
 Marcovitch v. Bramble, Wilkins 
 
 & Co. (Cox. Manual, No. 
 
 595), 398. 
 Marcus Ward & Co. v. Ward (1), 
 
 (15 N. Y. Supp. 913), 143. 
 V. Ward (2), (40 N. Y. S. Rep. 
 
 792), 206. 
 Market Co. v. Hoffman (101 U. S. 
 
 112), 329. 
 Marks v. Jaffa (26 N. Y. Supp. 
 
 908), 235. 
 Marsh v. Billings (7 Cush. 322), 
 
 271, 358, 312. 
 V. Warren (14 BlatcM. 263), 
 
 425, 427. 
 Marshall v. Hawkins (4 N. Z. 
 
 L. R. Sup. Ct. 59), 261. 
 V. Pinkham (52 Wis. 572), 92, 
 
 180, 354. 
 V. Ross (L. R. 8 Eq. 651), 77, 
 
 288. 
 Martha Washington Creamery- 
 Buttered Flour Co. V. Mar- 
 tian (44 Fed. Rep. 473), 54, 
 
 378. 
 Martin v. Bowker (163 Mass. 
 
 461), 591. 
 V. Murphy (129 Ind. 464), 191, 
 
 213, 214. 
 V. Wright (6 Sim. 297), 46. 
 Marvel Co. v. Pearl (— C. C. A. 
 
 — ., 133 Fed. Rep. 160), 95. 
 
 are to pages. 
 
 Marvel Co. v. Tullar Co. (125 
 
 Fed. Rep. 829), 255. 
 Massam v. Cattle Food Co. (L. 
 
 R. 14 Ch. D. 748), 22. 
 Matthews v. Murchison (17 Fed. 
 
 Rep. 760), 174. 
 Matsell V. Flannagan (2 Abb. 
 
 Pr. N. S. 459), 166, 168. 
 Matter of Hondayer (150 N. Y. 
 
 37), 192. 
 Mayer v. Flanagan (12 Tex. Civ. 
 
 App. 405), 24. 
 Maxwell v. Hogg (L. R. 2 Ch. 
 
 App. 307), 64, 368. 
 McAndrew v. Bassett (4 DeG. J. 
 
 & S. 380), 21, 58, 96, 402, 
 
 404. 
 McCall V. Theal (28 Grant Up. 
 
 Can. Ch. 48), 88. 
 McCann v. Anthony (21 Mo. App. 
 
 83), 249, 267, 294, 333, 375. 
 McCardel v. Peck (28 How. Pr. 
 
 120), 175, 311. 
 McCord V. Williams (96 Pa. St 
 
 78), 209. 
 McElwee v. Blackwell (15 Off. 
 
 Gaz. 658), 412, 416, 423. 
 McGowan v. McGowan (22 Ohio 
 
 St. 370), 197, 210, 211. 
 McLean v. Fleming (96 U. S. 
 
 245), 3, 24, 26, 38, 44, 106, 
 
 143, 144, 151, 172, 256, 257, 
 
 264, 265, 361, 364, 372, 377, 
 
 382, 402, 407, 760. 
 
 McMurtrie v. Guiler (183 Mass. 
 451), 205. 
 
 McVeagh v. Valencia Cigar Fac- 
 tory (32 Off. Gaz. 1124), 22. 
 
 McVey v. Brendel (144 Pa. St. 
 
 235). 56. 
 
 Melachrino v. Melachrino Cigar- 
 ette Co. (4 R. P. C. 215), 141, 
 146, 181, 375. 
 
 Mellersh v. Keen (28 Beavan, 
 453), 205, 214.
 
 Mel-Moo 
 
 TABLE OF CASES. 
 
 xlv 
 
 References 
 
 Mellin v. White (L. R., 1895, A. 
 
 C. 154), 49. 
 Meneely v. Meneely (62 N. Y. 
 
 427), 140, 143. 
 Menendez v. Holt (128 U. S. 514), 
 
 21, 23, 31, 56, 100, 101, 106, 
 
 116, 176, 177, 186, 188, 212, 
 
 257, 373. 
 Merchants' Ad. Sign Co. v. Ster- 
 ling (124 Cal. 429), 202. 
 Meriden Britannia Co. v. Parker 
 
 (39 Conn. 454), 70, 375. 
 Merriam v. Famous Shoe and 
 
 Clothing Co. (47 Fed. Rep. 
 
 411), 88, 164. 
 V. Holloway Pub. Co. (43 Fed. 
 
 Rep. 450), 164. 
 V. Texas Sif tings Pub. Co. (49 
 
 Fed. Rep. 944), 95, 164. 
 Merry v. Hoopes (111 N. Y. 415), 
 
 23. 
 Merry weather v. Moore (L. R. 
 
 1892, 2 Ch. D. 518), 222,224. 
 Messer v. The Fadettes (168 
 
 Mass. 140), 147. 
 Messerole v. Tynberg (36 How. 
 
 Pr. 14), 13, 97, 139. 
 Metropolitan Bank v. St. Louis 
 
 Dispatch Co. (1), (36 Fed. 
 
 Rep. 722-724), 187, 188, 192. 
 V. St. Louis Dispatch Co. (2), 
 
 (149 U. S. 436), 186, 188, 
 
 192. 
 Metzler v. Wood (L. R. 8 Ch. D. 
 
 606), 376. 
 Meyer v. Bull Medicine Co. (58 
 
 Fed. Rep. 884), 124, 144. 
 V. Labau (51 La. Ann. 1726), 
 
 209. 
 Millbrae Co. v. Taylor (25 L. R. 
 
 A. 193), 70. 
 Miller v. Beck (Iowa), (72 N. W. 
 
 Rep. 553), 215. 
 V. Keeler (9 Pa. Co. Ct. R. 
 
 274), 192. 
 
 are to pages. 
 
 Miller Tobacco Manufactory Co. 
 
 V. Commerce (45 N. J. Law 
 
 18), 258. 
 Millington v. Fox (3 My. & Or. 
 
 338), 255. 271, 297, 403, 405. 
 Milwaukee R. R. Co. v. Arms (91 
 
 U. S. 487), 358. 
 Miskell V. Prokop (58 Nebr. 628), 
 
 279. 
 Mississippi & Mo. R. R. Co. v. 
 
 Ward (2 Black, 485), 329. 
 Missouri Pacific Railway v. 
 
 Humes (115 U. S. 512), 358. 
 Mitchell V. Henry (L. R. 15 Ch. 
 
 D. 181), 392. 
 V. Read (84 N. Y. 556), 214. 
 M. J. Breitenbach Co. v. Spangen- 
 
 berg (131 Fed. Rep. 160), 
 
 103, 116, 287. 
 Moet V. Clybonn (Seb. 533), 297. 
 V. Cousten (33 Beav. 578), 271, 
 
 404. 
 V. Pickering (L. R. 8 Ch. D. 
 
 372), 297, 299, 339, 405. 
 Monarch v. Rosenfeld (19 Ky. 
 
 Law Rep. 14), 154. 
 Monopol Tobacco Works v. Gen- 
 
 sior (66 N. Y. Supp. 155), 392. 
 Monroe Cattle Co. v. Becker (147 
 
 U. S. 47), 450. 
 Monson v. Boehm (L. R. 26 Ch. 
 
 D. 398), 63, 176, 177. 
 Montgomerie v. Donald (Ct. Sess. 
 
 Cas. 4th Ser. 11, 506), 95. 
 Montgomery v. Thompson (1891, 
 
 App. Cas. 217), 140. 
 Moody V. Thomas (1 Disney 294), 
 
 198. 
 Moore v. Rawson (185 Mass. 264), 
 
 30, 205. 
 V. Rugg (44 Minn. 28), 225. 
 V, Stevenson (27 Conn. 14), 183. 
 
 Moorehead v. Hyde (38 Iowa 
 382), 215.
 
 xlvi 
 
 TABLE OF CASES. 
 
 Moo-New 
 
 References are to pages. 
 
 Moorman v. Hoge (Fed, Case No. 
 9783), 16, 243. 354, 413, 418, 
 450. 
 Moreau v. Edwards (2 Tenn. Ch. 
 
 347), 198. 
 Morgan v. McAdam (36 L. J. Ch. 
 228), 69, 73. 
 V. Rogers (19 Fed. Rep. 596), 
 
 22, 23, 25, 193. 
 V. Schuyler (79 N. Y. 490), 
 206, 211. 
 Morgan Envelope Co. v. Walton 
 (1), (82 Fed. Rep. 469), 281, 
 289. 
 V. Walton (2), (86 Fed. Rep. 
 605), 124, 128. 
 Morgan Sons Co. v. Troxell (Cox, 
 
 Manual, 674), 243, 252, 276. 
 Morison v. Moat (21 L. J. Ch. 
 
 248), 222, 225. 
 Morris v. Moss (25 L. J. Ch. 194), 
 
 188. 
 Morrison v. Case (Fed. Case No. 
 9845), 104, 419, 454. 
 V. Salmon (2 Man. & G. 385), 
 255. 
 Morse v. Hutchins (102 Mass. 
 439), 216. 
 V. Worrell (10 Phila. 168), 103, 
 376. 
 Morse Machine Co. v. Morse (103 
 
 Mass. 73), 219. 
 Mossier v. Jacobs (65 111. App. 
 
 571), 104, 288. 
 Motley V. Downman (3 My. & Cr, 
 
 1), 255, 297, 335. 
 Moxie Nerve Food Co. v. Baum- 
 bach (32 Fed. Rep. 205), 53, 
 122, 253, 287, 377. 
 V. Beach (33 Fed. Rep. 248), 
 
 259, 287, 380, 396. 
 V. Beach (35 Fed. Rep. 465), 
 221. 
 Mullins V. People (23 How. Pr. 
 289), 654. 
 
 Mumm V. Kirk (40 Fed. Rep 
 
 589), 45, 112. 
 Munro v. Smith (13 N. Y. Supp. 
 708), 262, 277. 
 V. Tousey (129 N. Y. 38), 267. 
 Munsey v. Butterfield (133 Mass. 
 
 492), 188. 206. 
 Murray v. Engraving Co. (28 N. 
 
 Y. Supp. 271), 237. 
 Musselman & Clarkson's Appeal 
 
 (62 Pa. St. 81), 189. 
 Myers v. Baker (3 H. & N. 802), 
 255. 
 V. Cunningham (44 Fed. Rep. 
 
 349). 
 V. Kalamazoo Buggy Co. (54 
 
 Mich. 215), 148, 207. 
 V. Theller (38 Fed. Rep. 607), 
 249, 274. 
 
 N 
 
 National Biscuit Co. v. Baker 
 
 (95 Fed. Rep. 135), 7, 10, 
 
 104. 289. 301, 302, 304. 
 V. Ohio Baking Co. (127 Fed. 
 
 Rep. 160). 101. 
 V. Swick (121 Fed. Rep. 1007), 
 
 249. 
 National Gum & Mica Co. v. 
 
 Braendly (51 N. Y. Supp. 
 
 93), 228. 
 National Starch Mfg. Co. v. Dur- 
 
 yea (41 C. C. A. 244), 143. 
 Native Guano Co. v. Sewage 
 
 Manure Co. (8 P. R. 125). 
 
 93. 
 Neilson v. Betts (L. R .5 H. L. 
 
 R. 1), 359. 
 Nerve Food Co. v. Baumbach (32 
 
 Fed. Rep. 205), 53. 
 Neva Stearine Co. v. Mowling (9 
 
 Vict. L. R. 98), 180. 
 Newark Coal Co. v. Spangler (54 
 
 N. J. Eq. 354), 143.
 
 New-Ome 
 
 TABLE OF CASES. 
 
 xJvii 
 
 References 
 
 Newbro v. Undeland (96 N. W. 
 
 Rep. 635), 377. 
 Newby v. Railroad Co. (Fed. 
 
 Case No. 10,144), 150. 
 New Home Sewing Machine Co. 
 
 V. Bloomingdale (59 Fed. 
 
 Rep. 284), 100. 285. 
 Newman v. Alvord (49 Barb. 
 
 588). 6, 18, 35, 85, 87, 136. 
 V, Pinto (4 •\ P. C. 508), 70, 
 
 375, 404. 
 New Orleans v. Steamship Co. 
 
 (20 Wall. 387). 398. 
 New York Asbestos Mfg. Co. v. 
 
 Ambler Asbestos Air-Cell 
 
 Covering Co. (1), (99 Fed. 
 
 Rep. 85), 379. 380, 400. 
 V. Ambler Asbestos Air-Cell 
 
 Covering Co. (43 C. C. A. 
 
 46), 379. 
 New York Cement Co. v. Coplay 
 
 Cement Co. (1), (44 Fed. 
 
 Rep. 277), 94. 
 V. Coplay Cement Co. (2), (45 
 
 Fed. Rep. 212), 27, 52, 94, 
 
 134, 336. 
 New York Life Ins Co. v. Crav- 
 ens (178 U. S. 389), 318. 
 Nichols V. Kimpton (3 Times L. 
 
 R. 674), 402. 
 Nicholson v. Wm. A. Stickney 
 
 Cigar Co. (158 Mo. 158), 264. 
 Nlxey V. Roffey (W. N., 1870, 
 
 p. 227), 72. 
 N. K. Fairbank Co. v. Central 
 
 Lard Co. (64 Fed. Rep. 133), 
 
 98, 182, 284. 373. 
 V. Dunn (126 Fed. Rep. 227), 
 
 277. 
 V. Luckel, King & Cake Soap 
 
 Co. (1). (88 Fed. Rep. 694). 
 
 45, 100, 267, 285, 301. 
 V. Luckel, King & Cake Soap 
 
 Co. (2), (42 C. C. A. 376), 
 
 8, 267, 285, 301. 
 V. Luckel, King & Cake Soap 
 
 are to pages. 
 
 Co. (3), (106 Fed. Rep. 498), 
 
 372. 
 v. Luckel, King & Cake Soap 
 
 Co. (4), (54 C. C. A. 204), 
 
 172. 
 V. R. W. Bell Mfg. Co. (71 Fed. 
 
 Rep. 295), 248. 
 V. R. W. Bell Mfg. Co. (23 C. 
 
 C. A. 554), 248, 268, 793. 
 V. Windsor (61 C. C. A. 233), 
 
 382. 
 Noel V. Ellis (89 Fed. Rep. 978), 
 
 95, 289. 
 Noera v, Williams Mfg. Co. (158 
 
 Mass. 110), 253. 
 Nolan Bros. Shoe Co. v. Nolan 
 
 (131 Cal. 271), 279. 
 Northcutt v. Turney (101 Ky. 
 
 314), 55, 97, 129, 134, 335. 
 North Eastern Awl Co. v. Marl- 
 borough Awl Co. (168 Mass. 
 
 147), 7. 
 Nunn V. D' Albuquerque (34 Beav. 
 
 595), 403. 
 Nuthall V. Vining (28 W. R. 330), 
 
 243. 249. 
 
 
 
 Oakes v. St. Louis Candy Co. 
 
 (146 Mo. 391). 7, 59. 
 V. Tonsmierre (49 Fed. Rep. 
 
 447), 22, 62, 38L 
 Oakey v. Dalton (L. R. 35 Ch. D. 
 
 700), 335. 
 Ohio & Miss. Ry. Co. v. Press 
 
 Pub. Co. (48 Fed. Rep. 206), 
 
 48. 
 Ohio Baking Co. v. National Bis- 
 cuit Co. (62 C. C. A. 116). 
 
 101. 
 Oldham v. James (13 Ir. Ch. 
 
 393), 354. 
 Olin V. Bate (98 111. 53). 140. 
 Omega Oil Co. v. Weschler (71 
 
 N. Y. Supp. 983), 103, 270.
 
 xlviii 
 
 TABLE OF CASES. 
 
 Ono-Peo 
 
 Onondaga Co. Milk Association 
 
 V. Wall (17 Hun, 494), 200. 
 Opinion of Attorney General (47 
 
 Off. Gaz. 397), 804. 
 Oppermann v. Waterman (94 
 
 Wis. 583), 285. 
 Oregon Steam Nav. Co. v. Wind- 
 sor (20 Wall. 64), 202. 
 O'Rourke v. Central City Soap 
 
 Co. (26 Fed. Rep. 576), 64, 
 
 96, 366. 
 Orr V. Diaper (L. R. 4 Ch. D. 
 
 92), 339, 395. 
 Orr-Ewing v. Chooneeloll Mullick 
 
 (Cor. 150), 62. 
 V. Grant, Smith & Co. (2 Hyde, 
 
 185), 62, 256. 
 V. Johnson (7 A. C. 219), 262, 
 
 281, 304. 
 Orr-Ewing & Co. v. Grant (2 
 
 Hyde, 185), 256. 
 Osgood V. Allen (1 Holmes, 185), 
 
 85, 127, 128, 262. 
 V. Rockwood (Fed. Case No. 
 
 10,605), 100, 371, 416, 422. 
 
 Pabst Brewing Co. v. Ekers 
 
 (Rap. Jud. Que. 21 C. S. 
 
 545), 62. 
 Palmer v. Graham (1 Pars. Eq. 
 
 Cas. 476), 198. 
 V. Harris (60 Pa. St. 156), 69, 
 
 70, 100, 374. 
 V. Travers (20 Fed. Rep. 501), 
 
 49. 
 Paris Medicine Co. v. W. H. Hill 
 
 Co. (42 C. C. A. 227), 263, 
 
 302. 
 Parker v. Hulme (1 Fisher, 44), 
 
 356. 
 Parkland Hill Blue Lick Water 
 
 Co. V. Hawkins (95 Ky. 502), 
 
 97. 
 
 References are to pages. 
 
 Parkhurst v. Brock (47 Atl. Rep. 
 
 1068), 208. 
 Parlett v. Guggenheimer (67 Md. 
 
 542), 70, 285, 374. 
 Parsons v. Hay ward (31 Beavan, 
 
 199), 188, 195. 
 Partlo V. Todd (17 Can. S. C. 
 
 R. 196), 114, 116. 
 Partridge v. Menck (2 Sandf. Ch. 
 
 R. 622), 69, 127, 373. 
 Paton V. Majors (46 Fed. Rep. 
 
 210), 396. 
 Paul V. Barrows (4 DeG. J. & 
 
 S. 150), 299. 
 V. Virginia (8 Wall. 168), 318, 
 
 350. 
 Pavesich v. New England Life 
 
 Ins. Co. (50 S. E. Rep. 68), 
 
 236, 240. 
 P. C. Weist Co. V. Weeks (177 
 
 Pa. 412), 50, 323. 
 Peabody v. Norfolk (98 Mass. 
 
 452), 219, 220, 222, 224. 
 Peltz V. Eichele (62 Mo. 171), 
 
 213. 
 Pence v. Langdon (99 U. S. 578, 
 
 581), 174. 
 Pennsylvania Co. v. Railroad Co. 
 
 (118 U. S. 290), 350. 
 Pennsylvania Salt Mfg. Co. v. 
 
 Meyers (79 Fed. Rep. 87), 
 
 103. 
 Pennsylvania Tel. Co. v. Western 
 
 Union Co. (96 U. S. 9), 319. 
 People V. Bartholf (20 N. Y. 
 
 Supp. 782), 656. 
 V. Cannon (139 N. Y. 32), 654, 
 
 656. 
 V. Elfenbein (20 N. Y. Supp. 
 
 364), 656. 
 V. Fisher (57 N. Y. Sup. Ct. 
 
 552), 56, 419. 
 V. Gluckman (70 N. Y. Supp. 
 
 173), 655. 
 V. Hilfman (70 N. Y. Supp. 
 
 621), 655.
 
 Peo-Por 
 
 TABLE OF CASES. 
 
 xlix 
 
 References 
 
 People V. Hogan (29 N. Y. St. 
 
 110), 654. 
 V. Krivitzky (168 N. Y. 182), 
 
 655. 
 V. Molins (10 N. Y. Supp. 130), 
 
 25, 460. 
 V. Roberts (159 N. Y. 70), 185, 
 
 192, 193. 
 Pepper v. Labrot (8 Fed. Rep. 
 
 29), 23. 24, 179, 294. 
 Perceval v. Phipps (2 Ves. & B. 
 
 19), 225. 
 Perkins v. Heert (158 N. Y. 306), 
 
 655. 
 Perks V. Hall (W. N., 1881, p. 
 
 Ill), 375. 
 Perry v. Truefit (6 Beav. 66), 
 
 13, 38, 39, 69, 102. 
 Peterson v. Humphrey (4 Abb. 
 
 Pr. 394), 24, 210. 
 Petrolia Mfg. Co. v. Bell & Bo- 
 
 gart Soap Co. (97 Fed. Rep. 
 
 781), 31, 98. 
 Pettes V. American "Watchman's 
 
 Clock Co. (85 N. Y. Supp. 
 
 900), 655. 
 Pfeiffer v. Wilde (46 C. C. A. 
 
 415), 389. 
 Phalon V. Wright (5 Phila. 464), 
 
 69, 90. 375. 
 Phelan v. Collender (13 N. Y. 
 
 Sup. Ct. 244), 24. 
 Philadelphia Nov. Co. v. Blakes- 
 
 ley Nov. Co. (40 Fed. Rep. 
 
 588), 113, 249. 
 V. Rouss (40 Fed. Rep. 585), 
 
 113. 
 Philadelphia R. R. Co. v. Quig- 
 ley (62 U. S. (21 How.) 213), 
 
 357. 
 Piaget V. Headley (68 N. Y. Supp. 
 
 351), 254. 
 Pickett V. Green (120 Ind. 584), 
 
 191, 213. 
 Pidding v. How (8 Sim. 477), 
 
 100, 69. 
 
 arc to pages. 
 
 Pierce v. Frank (15 L. J. Ch. 
 
 122). 402. 
 V. Fuller (8 Mass. 228), 188. 
 V. Guittard (68 Cal. 68), 41. 
 Pike Mfg. Co. v. Cleveland Stone 
 
 Co. (35 Fed. Rep. 896), 100, 
 
 101, 102. 105, 182, 283, 289. 
 Pilmore v. Hood (5 Bing. N. C. 
 
 97). 216. 
 Pillsbury v. Pillsbury- Washburn 
 
 Flour Mills Co., (12 C. C. 
 
 A. 432), 25, 72, 263. 301, 303. 
 
 375. 
 Pillsbury-Washburn Flour Mills 
 
 Co. V. Eagle (82 Fed. Rep, 
 
 816), 130. 
 V. Eagle (30 C. C. A. 386), 8, 
 
 10, 130, 132, 135, 136, 141. 335. 
 Pinto V. Badman (8 R. P. C. 181, 
 
 Cartmell, 270), 21, 115. 
 V. Trott (8 P. R. 173), 284. 
 Piso Co. V. Voight (4 Ohio N. P. 
 
 347), 70, 353. 
 Pittsburg Crushed Steel Co. v. 
 
 Diamond Steel Co. (85 Fed. 
 
 Rep. 637), 184, 290, 322, 323. 
 Plant Seed Co. v. Michel Plant 
 
 & Seed Co. (23 Mo. App. 
 
 579), 146. 
 P. Lorillard Co. v. Peper (86 
 
 Fed. Rep. 956), 294, 392. 
 Pollen V. LeRoy (30 N. Y. 549), 
 
 394. 
 Pollard V. Photographic Co. (40 
 
 C. D., Eng., 345), 225. 
 Ponsardin v. Peto (33 Beav. 643), 
 
 339. 
 Pontefact v. Isenberger (106 Fed. 
 
 Rep. 499), 100, 274. 
 Pope V. Curl (2 Atk. 342), 225. 
 Popham V. Cole (66 N. Y. 69), 
 
 267, 418. 
 V. Wilcox (66 N. Y. 69), 93, 
 
 265, 291. 
 Porter v. Gorman (65 Ga. 11), 
 
 188, 197.
 
 1 
 
 TABLE OF CASES, 
 
 Por-Ral 
 
 References ai 
 
 Portuondo v. Monne (28 Fed. 
 
 Rep. 16), 261, 380. 
 Postal Tel. Cable Co. v. Netter 
 
 (102 Fed. Rep. 691), 460. 
 Postum Cereal Co. v. American 
 Health Food Co. (109 Fed. 
 Rep. 898), 8, 291. 
 V. American Health Food Co. 
 (56 C. C. A. 360), 247, 256. 
 Potter V. Commissioners of Inland 
 
 Revenue (10 Ex. 147), 188. 
 Potter Drug & Chem. Co. v. Mil- 
 ler (75 Fed. Rep. 656), 99, 
 282. 
 Potter Drug & Chem. Corp v. 
 Pasfield Soap Co. (102 Fed. 
 Rep. 490), 99, 291. 
 V. Pasfield Soap Co. (46 C. C. 
 A. 40), 99, 291. 
 Ponsardin v. Peto, (33 Beav. 642), 
 
 339. 
 Powell V. Birmingham Vinegar 
 Brewery Co. (L. R. 1894, 
 3 Ch. D. 449), 124. 
 Pratt's Appeal (117 Pa. St. 401), 
 
 29, 52, 335, 373. 
 Pratt's Mfg. Co. v. Astral Re- 
 fining Co. (27 Fed. Rep. 
 492), 88. 
 Press Pub. Co. v. Falk (59 Fed. 
 Rep. 324), 225. 
 V. Monroe (73 Fed. Rep. 196), 
 357, 358. 
 Preservaline Mfg. Co. v. Heller 
 Chem. Co. (118 Fed. Rep. 
 103), 78. 
 Price V. Goodall (L.. R. 1891, 1 
 
 Ch. D. 35), 7. 
 Price Baking Powder Co. v. 
 Fyfe (45 Fed. Rep. 799), 99, 
 122, 381. 
 Prince's Metallic Paint Co. v. 
 Carbon Metallic Paint Co. 
 (Seb. 573), 143. 
 V. Prince Mfg. Co. (1), (53 
 Fed. Rep. 493), 321, 328, 350. 
 461. 
 
 e to pages. 
 
 Prince's Metallic Paint Co. v. 
 
 Prince Mfg. Co. (2), (6 C. 
 
 C. A. 647), 175. 
 Prince Mfg. Co. v. Prince's Metal- 
 lic Paint Co. (1), (15 N. Y. 
 
 Supp. 249), 23, 33. 
 V. Prince's Metallic Paint Co. 
 
 (2), (135 N. Y. 24), 66, 68, 
 
 136. 
 Probasco v. Bouyon (1 Mo. App. 
 
 241), 22, 208. 
 Proctor V. McBride (Fed. Cas. 
 
 No. 11,441), 287. 
 Procter & Gamble Co, v. Globe 
 
 Refining Co. (34 C. C. A. 
 
 405), 249, 291, 294, 300. 
 Provident Chemical Works v. 
 
 Canada Chemical Mfg. Co. (2 
 
 Ont. Law Rep. 182), 88. 
 Prudential Assurance Co. v. 
 
 Knott (L, R. 10 Ch. D. 142), 
 
 46. 
 Putnam Nail Co, v, Ausable 
 
 Horsenail Co. (53 Fed. Rep, 
 
 390), 45. 
 V. Bennett (43 Fed. Rep. 800), 
 
 257, 372. 452. 
 V, Dulaney (140 Pa. 205), 112, 
 
 R 
 
 Radam v. Destroyer Co. (81 
 Texas, 122), 391, 392. 
 
 Radde v. Norman (L. R. 14 Eq. 
 348), 55, 286. 
 
 Raggett V. Findlater (L, R. 17 
 Eq. 29), 93. 
 
 Rahtjen's American Composition 
 Co. V. Holzappel's Composi- 
 tion Co. (41 C. C. A. 329), 74. 
 
 Railroad Co, v. Harris (12 Wall. 
 65), 350. 
 
 Rains v. White (52 S. W. Rep. 
 970), 249. 
 
 Ralli V. Fleming (Ind. L. P.. 3 
 Calc. 417), 296.
 
 Ral-Re Con 
 
 TABLE OF CASES. 
 
 li 
 
 References are to pages. 
 
 Ralph V. Taylor (L. R. 25 Ch. D. 
 
 194), 79. 
 Rammelsberg v. Mitchell (29 
 
 Ohio St. 22), 212. 
 Ramsden v. Dyson (L. R. 1 H. 
 
 L. 129), 174. 
 Ranft V. Reimers (200 111. 386), 
 
 198. 
 Ransom v. Ball (7 N. Y. Supp. 
 238), 68. 
 V. Mayor (1 Fisher, 252), 356. 
 Ransome v. Bentall (3 L. J. Ch. 
 161), 76, 266, 297, 298. 
 V. Graham (51 L. J. Ch. 897), 
 297. 
 Rawlinson v. Brainard & Arm- 
 strong Co. (59 N. Y. Supp. 
 880), 100, 291. 
 Rawson v. Pratt (91 Ind. 9). 
 
 214, 216. 
 Raymond v. Royal Baking Pow- 
 der Co. (1), (22 C. C. A. 
 278), 389. 
 V. Royal Baking Powder Co. 
 (2), (29 C. C. A. 245), 103. 
 Re Adriance, Piatt & Co. (Comm. 
 Decis., 1881, p. 52), 451. 
 Alden (15 Off. Gaz. 389), 90. 
 American Lubricating Oil Co. 
 
 (9 Off. Gaz. 687), 104, 420. 
 American Sardine Co. (3 Off. 
 
 Gaz. 495), 88, 418, 455. 
 American Saw Co. (58 Off. 
 
 Gaz. 521). 455. 
 Ames (23 Off. Gaz. 344), 455. 
 Arbenz (L. R. 35 Ch. D. 248). 
 
 180. 
 Armstrong & Co. (26 MSS. 
 
 D. 260), 452. 
 Atkins Filter Co. (3 P. R. 
 
 164), 94. 
 Australian "Wine Importers, 
 Ltd.. (L. R., 41 Ch. D. 278), 
 4. 
 Baldwin (30 L. T. 354), 104. 
 
 Re Barker's Trademark (53 L. T. 
 
 N. S. 23), 282. 
 Barrows (L. R. 5 Ch. D. 353), 
 
 297, 299. 
 Baschiera's Trade-mark (33 S. 
 
 J. 469), 280. 
 Blakeslee & Co. (Comm. De- 
 cis., 1871, 284), 419. 
 Block & Co. (14 Off. Gaz. 235), 
 
 415, 419. 
 Boehm & Co. (8 Off. Gaz. 319), 
 
 414, 451. 
 Bogardus (5 MSS. D. 2), 454. 
 Bole Bros. (12 Off. Gaz. 939), 
 
 418. 
 Bovril (L. R. 1896, 2 Ch. D. 
 
 600), 97. 
 Bowe (50 MSS. D. 168), 454. 
 Brandreth (1), (Seb. 626), 87. 
 
 93. 
 Brandreth (2), (59 N. Y. Supp. 
 
 1092), 229. 
 Brand Stove Co. (62 Off. Gaz. 
 
 588), 418. 
 Brigham (Comm. Decis. 1881, 
 
 p. 38), 418. 
 Bromo-Celery Co. (Newton Dig. 
 
 190), 110. 
 Brook (26 W. R. 791), 297. 
 Burgoyne (6 R. P. C. 227), 116. 
 Bush & Co. (10 Off. Gaz. 164). 
 
 98, 420. 
 California Fig Syrup Co. (L. 
 
 R. 40 Ch. D. 620), 88, 799. 
 Carter Medicine Co. (L. R., 
 
 1892, 3 Ch. D. 472), 799. 
 Chetwood (165 U. S. 443), 400. 
 Chichester Chemical Co. (52 
 
 Off. Gaz. 1061), 455. 
 Christiansen (3 R. P. C. 54), 
 
 262, 392. 
 
 Coggin. Kidder & Co. (11 Off. 
 
 Gaz. 1109), 420. 
 Consolidated Fruit Jar Co. (14 
 
 Off. Gaz. 269), 420.
 
 lii 
 
 TABLE OF CASES. 
 
 Re Cor-Re Joh 
 
 References ar 
 
 Re Cornwall (1), (12 Off. Gaz. 
 138), 104, 420, 455. 
 Cornwall (2), (12 Off. Gaz. 
 
 312), 99, 418. 
 Densham (L. R. 1895, 2 Ch. 
 
 D. 176), 116. 
 Dibble Mfg. Co. (18 MSS. D. 
 
 428), 451. 
 Dick & Co. (9 Off. Gaz. 538), 
 
 95, 419. 
 Dole Bros. (12 Off. Gaz. 939), 
 
 89, 420. 
 Dutcher Temple Co. (Com. Dec. 
 
 1871, p. 248), 57. 
 Eagle Pencil Co. (10 Off. Gaz. 
 
 981), 298, 413, 418. 
 Eastman (W. N. 1880, p. 128). 
 
 101. 
 Edinburgh Correspondent News- 
 paper (Ct. of Sess. Cas. 1st 
 Ber. 1, new ed., 407, n.), 168. 
 English (Comm. Dec. 1870, p. 
 
 143), 413. 
 Excelsior Spring Co. (Newton 
 
 Dig. 153), 110. 
 Fairchild (21 Off. Gaz. 789), 
 
 456. 
 Farbenfabriken T. M. K. (L. R. 
 
 1894, 1 Ch. D. 645), 115. 
 Farina (44 L. T. N. S. 99), 28, 
 
 172, 334. 
 Farnum & Co. (Comm. De- 
 
 cis., 1880, p. 155), 451. 
 Finlayson, Bousfield & Co. (61 
 
 Off. Gaz. 152), 453. 
 Fitzpatrick, Davis & Co. (18 
 
 MSS. D. 278), 451. 
 Francis & Mallon (Comm. De- 
 
 cis. 1871, p. 283), 418. 
 Glines (8 Off. Gaz. 435), 104. 
 Godillot (6 Off. Gaz. 641), 411. 
 Goodyear Rubber Co. (11 Off. 
 Gaz. 1062), 89, 417. 
 
 e to pages. 
 
 Re Gordon (12 Off. Gaz. 517), 
 
 418. 
 
 Graham (2 Off. Gaz. 618), 93. 
 
 Green (8 Off. Gaz. 729), 418. 
 
 Grossmith (60 L. T. N. S. 
 
 612), 99, 176. 
 Grove (67 Off. Gaz. 1447), 
 
 110, 418, 455. 
 Hall (13 Off. Gaz. 229), 180, 
 
 417. 
 Haggenmacher (60 Off. Gaz. 
 
 438), 450. 
 Hankinson (8 Off. Gaz. 89), 
 
 413, 414, 446, 452. 
 Hanson's Trade-mark (5 R. P. 
 
 C. 130), 250. 
 Harden Fire Extinguisher Co.'s 
 Trademark (55 L. J. Ch. 
 596), 91. 
 Hauthaway (Comm. Dec. 1871, 
 
 p. 97), 417. 
 Heaton's Trademark (L. R. 27 
 
 Ch. D. 570), 70. 
 Hendley (72 Off. Gaz. 1654), 
 
 455, 456. 
 Holt & Co. (L. R., 1891, 1 Ch. 
 
 711), 104. 
 Horsburgh (53 L. J. Ch. 237), 
 
 95, 261. 
 Horton (45 L. T. N. S. 541), 
 
 208. 
 Hudson's Trademark (3 R. P. 
 
 C. 155), 57. 
 Imbs (10 Off. Gaz. 463), 420. 
 India Rubber Comb Co. (8 Off. 
 
 Gaz. 905), 419, 420, 451. 
 Jackson Co.'s Trademark (6 R. 
 
 P. C. 80), 116. 
 Jelley, Son & Jones (51 L. J. 
 
 Ch. 639), 268, 391. 
 J. Marsching & Co. (15 Off. 
 
 Gaz. 294), 455. 
 Johnson (2 Off. Gaz. 315), 92, 
 93.
 
 Re Jon-Re San 
 
 TABLE OF CASES. 
 
 liii 
 
 References 
 
 Re Jones (53 L. T. 1), 27. 
 Jordan (49 Fed. Rep. 238), 391. 
 Kampfe Bros. (58 MSS. D. 
 
 306), 451. 
 Kane & Co. (9 Off. Gaz. 105). 
 
 243, 418. 
 Keasbey & Mattison Co. (160 
 
 U. S. 221), 329, 331, 350. 
 Kimball (11 Off. Gaz. 1109), 
 
 414, 452. 
 Knight (38 MSS. D. 341), 451. 
 Kuhn & Co.'s Trademark (53 
 
 L. J. Ch. 238), 375, 402. 
 La Soci6t6 Anonyme des Ver 
 reries de I'Etoile (10 R. P. 
 C. 436), 280. 
 Lawrence (10 Off. Gaz. 163), 
 
 119, 417. 
 Leonard & Ellis' Trademark (26 
 
 Ch. D. 288), 79. 
 Lisner (13 Off. Gaz. 455), 414, 
 
 451. 
 Maigen's Application (28 W. R. 
 
 759). 100. 
 Manny & Co. (17 MSS. D. 155), 
 
 451. 
 Manske & Co. (64 Off. Gaz. 
 
 858), 449. 
 Maw, Son & Thompson (22 
 
 MSS. D. 403), 451. 
 Meyerstein (7 R. P. C. 114), 94. 
 Mitchell (L. R. 7 Ch. D. 36), 
 297, 334. 
 
 Moet & Chandon (18 MSS. U. 
 259), 449. 
 
 O'Donnell (Fed. Case 10, 434), 
 445. 
 
 Palmer (L. R. 21 Ch. D. 47), 
 354. 
 
 Palmer's Trademark (24 Ch. D. 
 504), 79, 81, 88. 
 
 Park (12 Off. Gaz. 2), 412, 413, 
 419. 
 
 Parker (13 Off. Gaz. 323), 411, 
 418. 
 
 are to pages. 
 
 Re Perry Davis & Son (58 L. T. 
 N. S. 695), 7. 
 Pierce (23 MSS. D. 16), 451. 
 I'orter Blanchard's Sons 
 (Comm. Uecis. 1871, p. 97), 
 418, 420. 
 Pratt & Farmer (10 Off. Gaz. 
 
 866), 418. 
 Price's Patent Candle Co. (L. 
 
 R. 27 Ch. D. 681), 93. 
 Proctor, Jr. (51 Off. Gaz. 1785), 
 
 455. 
 Rabone (Seb. 642), 268. 
 Rader (13 Off. Gaz. 996), 91. 
 Rader & Co. (Comm. Decis. 
 
 1878, p. 67), 417, 419. 
 Railton (25 MSS. D. 321), 118, 
 
 455. 
 Randell's Estate (8 N. Y. 
 
 Supp. 652), 188, 206. 
 Rankinson (8 Off. Gaz. 89), 94. 
 Richardson (3 Off. Gaz. 120), 
 
 417, 418. 
 Riviere's Trademark (L. R. 26 
 
 Ch. D. 53), 337, 368. 
 Roach (10 Off. Gaz. 333), 89, 
 
 417. 
 Roberts (1), (Comm. Decis. 
 
 1871, p. 113), 420. 
 Roberts (2), (Comm. Decis. 
 
 1871, p. 100), 417, 420. 
 Roberts (3), (Comm. Decis. 
 1871, p. 101), 420. 
 
 Rohland (10 Off. Gaz. 980), 99, 
 418. 
 
 Rotherham (29 W. R. 503), 115. 
 Rothschild (7 Off. Gaz. 220), 
 412, 453. 
 
 Rowe & Post (9 Off. Gaz. 496), 
 
 420. 
 
 Rubber Clothing Co. (lo Off. 
 
 Gaz. Ill), 420. 
 Rust (29 W. R. 393), 334. 
 Sanitas Co. (4 R. P. c. 533), 
 
 114.
 
 liv 
 
 TABLE OF CASES. 
 
 Re Sau-Ric 
 
 References are to pages. 
 
 Re Saunion & Co. (Cox, 625), 69, 
 
 87. 
 Schmidt (53 MSS. D. 7), 449. 
 Simpson & Sons (10 Off. Gaz. 
 
 333), 411. 
 Snook (2 Hilt. 566), 139. 
 Speer's Trademark (4 R. P. C, 
 
 521), 280. 
 Swezy (62 How. Pr. 215), 26. 
 Sykes (43 L. T. N. S. 626). 57. 
 Talbot (8 R. P. C. 149), 87. 
 Tampa Suburban R. Co. (168 
 
 U. S. 583), 390. 
 Thayer (54 Off. Gaz. 957), 453. 
 Thewlis & Blakey's Trademark 
 
 (10 R. P. C. 369), 282, 289. 
 Thomas (14 Off. Gaz. 821), 
 
 417, 419. 
 Tolle (2 Off. Gaz. 415), 354, 
 
 417, 418. 
 Vidvard & Sheehan (8 Off. Gaz. 
 
 143), 413, 415. 
 Volta Belt Co. (8 Off. Gaz. 
 
 144), 414, 451. 
 Warburg & Co. (13 Off. Gaz. 
 
 44), 88, 418. 
 Watson (16 MSS. D. 467), 452. 
 Weaver (10 Off. Gaz. 1), 102, 
 
 419, 454. 
 Weil (83 Off. Gaz. 1802), 456. 
 Weisman (Newton Dig. 119), 
 
 118. 
 Wellcome (L. R. 32 Ch. D. 
 
 213), 22, 32. 
 Whitaker (Newton's Dig. 130), 
 
 243. 
 Whiteley (43 L. T. N. S. 627), 
 
 268. 
 Whyte (Comm. Dec. 1871, p. 
 
 301), 411. 
 Worthlngton's Trademark (L. 
 
 R. 14 Ch. D. 8), 249, 282 
 392. 
 Read v. Richardson (45 L. T. N. 
 S. 54), 77, 281, 394. 
 
 Reddaway & Co. v. Bentham 
 Hemp Spining Co. (9 R. P. 
 
 C. 503), 123, 262. 
 
 V. Banham (L. R. 1896, A. C. 
 199), 11, 36, 124, 125, 157. 
 Redgrave v, Hurd (L. R. 20 Ch. 
 
 D. 1), 216. 
 
 Reed v. West (47 Tex. 240), 174. 
 Reeder v. Brodt (6 Ohio Dec. 
 
 248), 96, 331. 
 Reeves v. Denicke (12 Abb. Pr. 
 
 N. S. 92), 24, 197. 
 Regina v. Closs (D. & B. 460), 
 345. 
 V. Dundas (6 Cox, 380), 345. 
 V. Gray (Seb. 183), 345. 
 V. Smith (D. & B. 566), 345. 
 V. Sutter (10 Cox, 577), 345. 
 Regis V. J. A. Jaynes & Co. (185 
 
 Mass. 458), 256. 
 Rehbein v. Weaver (133 Fed. 
 
 Rep. 607), 320. 
 Reinhart v. Spaulding (49 L. J. 
 
 Ch. 57), 100. 
 Republic of Peru v. Reeves (40 
 
 N. Y. Sup. Ct. 316), 336. 
 Renter's Telegram Co. v. Byron 
 
 (43 L. J. Ch. 661), 226. 
 Reynolds v. Bullock (47 L. J. Ch. 
 
 773), 194. 
 R. Heinisch's Sons Co. v. Boker 
 (86 Fed. Rep. 765), 43, 137, 
 146. 
 Ricard v. Caton College Co. (92 
 
 N. W. Rep. 958), 279. 
 Richards V. Butcher (L. R. 1891, 
 2 Ch. D. 522), 89. 
 V. Hunt (65 Ga. 342), 212. 
 V. Peacock (33 N. J. Eq. 606), 
 209. 
 Richardson & Boynton Co. v. 
 Richardson & Morgan Co. (8 
 N. Y. Supp. 53), 168. 
 Richmond Nervine Co. v. Rich- 
 mond (159 U. S. 293), 24, 
 767.
 
 Ric-Ryd 
 
 TABLE OF CASES. 
 
 Iv 
 
 References 
 
 Richter v. Anchor Remedy Co. 
 
 (52 Fed. Rep. 455), 20, 62, 
 
 322. 
 V. Reynolds (8 C. C. A. 220). 
 
 20, 22, 184, 322, 451. 
 Rillet V. earlier (61 Barb. 435), 
 
 100, 119. 
 Rivero v. Norris (Seton, 4th ed., 
 
 236), 339. 
 Roberson v. Rochester Folding 
 
 Box Co. (65 N. Y. Supp. 
 
 1109), 241. 
 V. Rochester Folding Box Co. 
 
 (71 N. Y. Supp. 876), 241. 
 V. Rochester Folding Box Co. 
 
 (171 N. Y. 538), 232, 236, 
 
 237, 241. 
 Roberts v. Sheldon (Fed. Case 
 
 No. 11,916), 103, 287, 338. 
 Robertson v. Berry (50 Md. 591), 
 
 162, 253. 
 
 V. Quiddington (28 Beavan, 
 529), 192. 
 
 Robinson v. Finlay (L. R. 9 Ch. 
 D. 487), 27, 57, 181, 296. 
 V. Storm (103 Teun. 40), 145. 
 
 Rodgers v. Nowill (1), (6 Hare, 
 325), 143, 255, 351, 402. 
 
 V. Nowill (2), (Cox, Manual. 
 No. 115), 398, 399. 
 
 V. Philip (1 Off. Gaz. 29), 354. 
 
 V. Rodgers (31 L. T. N. S. 
 285), 272. 
 
 Rogers v. Rogers (53 Conn. 121), 
 145. 
 
 V. Taintor (97 Mass. 291), 25, 
 27, 143. 
 
 Rogers Co. v. Wm. Rogers Mfg. 
 Co. (17 C. C. A. 576), 145, 
 156. 
 
 Rogers Mfg. Co. v. Rogers & 
 
 are to pages. 
 
 Spurr Mfg. Co. (11 Fed. 
 
 Rep. 495). 
 Rolt V. Bulmer (Seb. 614), 194. 
 Root V. Railway Co. (105 U. S. 
 
 189), 363. 
 
 Ropes V. Upton (125 Mass. 258). 
 214. 
 
 Rose V. Henley (47 L. J. Ch. 577), 
 294. 
 V. Henly (Seb. 551), 273. 
 V. Loftus (47 L. J. Ch. 576), 
 271, 274, 294, 333, 404. 
 Rosing V. Atkinson (27 Sol. J. 
 534), 99. 
 
 Rowland v. Mitchell (L. R. 1897, 
 1 Ch. D. 71), 7. 
 
 Rowley v. Houghton (2 Brewst. 
 
 303), 100. 
 Royal Baking Powder Co. v. 
 
 Davis (26 Fed. Rep. 293), 
 
 249, 253. 
 V. Raymond (70 Fed. Rep. 
 
 376), 3, 103, 135, 176, 177. 
 V. Royal (58 C. C. A. 499), 145. 
 V. Royal Chemical Co. (Price 
 
 & Steuart, 1), 792. 
 Roy Watch Case Co. v. Camm- 
 
 Roy Watch Case Co. (50 N. 
 
 Y. Supp. 979), 288. 
 Rumford Chem. Works v. Muth 
 
 (35 Fed. Rep. 524), 87, 109. 
 Rupp V. Over (3 Brewst. 133), 
 
 198. 
 Russell V. Lundeen (72 Off. Gaz. 
 
 420), 224. 
 
 Russia Cement Co. v. Frauenhar 
 (126 Fed. Rep. 228), 276. 
 V. Katzenstein (109 Fed. Rep. 
 314), 101, 276. 
 
 V. LePage (147 Mass. 206), 24. 
 140, 144, 148, 193, 373. 
 Ryder v. Holt (128 U. S. 525), 
 321, 328, 350, 461.
 
 Ivi 
 
 TABLE OF CASES. 
 
 Sal-Sch 
 
 s 
 
 References are to pages. 
 
 (179 U. S. 19), 20, 33, 100, 
 
 Salinger v. Salinger (45 Atl. Rep. 
 
 558), 215. 
 Salomon v. Hertz (40 N. J. Eq. 
 
 400), 220, 221, 222. 
 Samuel v. Berger (24 Barb. 163), 
 
 354. 
 Samuel Bros & Co. v. Hostetter 
 
 Co. (55 C. C. A. Ill), 273. 
 Samuels v. Spitzer (177 Mass. 
 
 226), 286. 
 Sanders v. Jacob (20 Mo. App. 
 
 96), 172. 
 Sanitas Co. v. Condy (4 P. R. 
 
 195), 288. 
 Sanitas Nut Food Co. v. Cemer 
 
 (96 N. W. Rep. 454), 223. 
 Santa Fe Electric Co. v. Hitch- 
 cock (50 Pac. Rep. 332), 194. 
 Sarrazin v. W. R. Irby Cigar Co. 
 
 (35 C. C. A. 496), 14, 16, 23, 
 
 60, 101, 322, 449. 
 Sartor v. Schaden (101 N. W. 
 
 Rep. 511), 7. 
 -V. Smith (101 N. W. Rep. 515), 
 
 301. 
 Sawyer Crystal Blue Co. v. Hub- 
 bard (32 Fed. Rep. 388), 260, 
 
 273, 294. 
 Sawyer v. Horn (1 Fed. Rep. 24), 
 
 38, 254, 295, 383, 419. 
 V. Kellogg (1), (7 Fed. Rep. 
 
 720), 82, 146, 243, 253, 288, 
 
 303, 338, 375. 
 V. Kellogg (2), (9 Fed. Rep. 
 
 601), 176, 288, 303, 338, 375, 
 
 382, 383, 402, 403. 
 Saxby v. Easterbrook (Cox, Man- 
 ual, 606), 47. 
 Saxlehner v. Apollinaris Co. (L. 
 
 R. 1897, 1 Ch. D. 893), 406. 
 V. Eisner & Mendelson Co. (1), 
 (88 Fed. Rep. 61), 277, 405. 
 V. Eisner & Mendelson Co. (2), 
 
 (91 Fed. Rep. 536), 20, 33. 
 V. Eisner & Mendelson Co. (3), 
 
 173, 179, 183, 376, 772. 
 
 V. Eisner & Mendelson Co. (4), 
 
 (138 Fed. Rep. 22), 384, 386. 
 
 V. Nlelson (179 U. S. 43), 173. 
 
 V. Siegel-Cooper Co. (179 U. S. 
 
 42), 257, 378. 
 
 Scheer v. American Ice Co. (66 
 
 N. Y. Supp. 3), 210. 
 Schendel v. Silver (18 N. Y. 
 
 Supp. 1), 102, 287. 
 Schenker v. Auerbach (85 N. Y. 
 Supp. 129), 244. y^^T?- V i^" 
 ■^Scheuer v. Muller_,^^(20 C. C. A. 
 161), 45, 136, 137. 
 Schmalz v. Wooley (57 N. J. Eq. 
 
 303), 638. 
 Schmidt v. Brieg (100 Cal. 672), 
 94. 
 V. Crystal Soda Water Co. (35 
 
 Pac. Rep. 855), 94. 
 V. Haake (35 Pac. Rep. 855), 
 
 94. 
 V. Liberty Soda Works Co. (35 
 
 Pac. Rep. 856), 94. 
 V. McEwen (35 Pac. Rep. 854), 
 
 94. 
 V. Steinke (35 Pac. Rep. 856), 
 94. 
 Schneider v. Williams (44 N. J, 
 
 Eq. 391), 56, 64, 361, 419. 
 Schrauder v. Beresford & Co 
 
 (Browne, 661), 61. 
 Schumacher v. Marble (3 Mack- 
 ey, 32). 
 V. Schwenke (1), (26 Fed. Rep. 
 
 818), 328, 350, 365, 461. 
 V. Schwenke (2), (36 Off. Gaz. 
 457), 354, 365, 413, 460. 
 Schumacher & Ettlinger v. Wog- 
 ram (35 Fed. Rep. 210), 412, 
 413. 
 Schuyler v. Curtis (1), (19 N. Y. 
 Supp. 264), 233. 
 V. Curtis (2), (24 N. Y. Supp. 
 509), 235.
 
 Sch-Sin 
 
 TABLE OF CASES. 
 
 Ivii 
 
 Schuyler v. Curtis (3), (64 Hun. 
 594), 235. 
 V. Curtis (4), (147 N. Y. 434), 
 236. 
 Schwarz v. Superior Court (111 
 
 Cal. 106), 399. 400. 
 Schweitzer v. Atkins (37 L. J. 
 
 Ch. 847). 
 Scott V. Mackintosh (1 V. & B. 
 503), 188. 209. 
 V. Rowland (20 W. R. 208), 
 
 24, 188. 
 T. Standard Oil Co. (106 Ala. 
 475), 90, 274. 
 Scriven v. North (124 Fed. Rep. 
 894), 44, 89. 
 V. North (134 Fed. Rep. 366). 
 44. 
 Seabury v. Grosvenor (Fed. Case 
 
 No. 12,576), 70, 460. 
 Seaman v. Johnson (106 Fed. 
 
 Rep. 915), 83. 
 Seely v. Fisher (11 Sim. 581), 
 
 46, 47. 
 Seixo V. Provezende (L. R. 1 Ch. 
 
 D. 192), 129, 264, 280, 292. 
 
 Selchow V. Baker (93 N. Y. 59), 
 
 104, 181. 
 
 V. Chaffee & Selchow Mfg. Co. 
 
 (132 Fed. Rep. 996), 93, 118. 
 
 Seltzer v. Powell (8 Phila. 296), 
 
 104. 
 Sen-Sen Co. v. Britten (L. R. 
 
 1899, 1 Ch. D. 692), 74. 
 Schackle v. Baker (14 Ves. 468), 
 
 189. 
 Shaver v. Heller & Merz Co. (48 
 C. C. A. 48), 182, 376. 
 V. Shaver (54 la. 208), 4, 58, 
 145, 361, 373. 
 Shaw V. Pilling (175 Pa. St. 78), 
 
 256, 360, 394. 
 Shaw Stocking Co. v. Mack (12 
 Fed. Rep. 707), 5, 103, 288, 
 294, 296, 297. 
 
 References are to pages. 
 
 Sheldon v. Houghton (5 Blatch. 
 
 285), 189. 
 Sheppard v. Stuart (13 Phila. 
 
 117), 62, 99, 114, 182. 
 S. Hernsheim Bros. & Co. Ltd. v. 
 J. H. Hargrave & Son (81 
 Off. Gaz. 503), 458. 
 Sherwood v. Andrews (5 Am. L. 
 R. N. S. 588), 24, 71, 91, 180. 
 V. Horton, Cato & Co. (84 Off. 
 Gaz. 2018), 60, 320. 
 Shipwright v. Clements (19 W. R. 
 
 599), 23, 25, 178, 194. 
 Shook V. Wood (32 Leg. Int. 
 
 264), 171. 
 Shrimpton v. Laight (18 Beav. 
 
 164), 266, 376. 
 Sibley Soap Co. v. Lambert Phar- 
 macal Co. (103 Off. Gaz. 
 2172), 325. 
 Siegert v. Abbott (1), (61 Md. 
 276), 24, 70, 71, 353. 
 V. Abbott (2), (79 N. Y. Sup. 
 
 Ct. 243), 87, 119. 
 V. Abbott (4), (72 Hun, 243), 
 
 353, 453. 
 V. Ehlers (Seb. 432), 119, 338. 
 V. Findlater (L. R. 7 Ch. D. 
 
 801), 87, 119, 219, 338. 
 V. Lawrence (11 Vict. L. R. 
 47), 338, 375. 
 Simmons Hardware Co. v. Waibel 
 
 (1 So. Dak. 488), 226. 
 Simmons Med. Co. v. Simmons 
 (81 Fed. Rep. 163), 223, 224. 
 Simpson v. Wright (1), (15 Off. 
 Gaz. 248), 421. 
 V. Wright (2), (15 Off. Gaz. 
 293), 417, 421. 
 Singer Mfg. Co. v. Bent (163 U. 
 S. 205), 79, 82, 109, 121, 122, 
 141. 
 
 V. Brill (Cox, Manual, 672), 
 121. 
 
 V. Charlebois (16 Rap. 
 Q. C. S. 167), 81. 
 
 Jud.
 
 Iviii 
 
 TABLE OF CASES. 
 
 Sin-Soc 
 
 Singer Mfg. Co. v. Hippie (109 
 
 Fed. Rep. 152), 78. 
 
 V. June Mfg. Co. (163 U. S. 
 
 169), 78, 79, 80, 94, 109, 121, 
 
 122, 140, 145, 159, 183. 
 
 V. Kimball & Morton (Ct. Sess. 
 
 Cas. Srd ser. XI, 267), 62. 
 V. Larsen (Fed. Case No. 
 
 12,902), 79, 141. 
 V. Loog (L. R. 18 Ch. D. 412), 
 
 121, 256, 292, 332, 373. 
 V. Loog (L. R. 8 A. C. 15), 
 
 347, 351. 
 V. Riley (11 Fed. Rep. 706), 79. 
 V. Stanage (6 Fed. Rep. 279), 
 
 78. 
 V. Wilson (L. R. 2 Ch. D. 
 434), 57, 59, 253, 256, 267, 
 349. 
 Singleton v. Bolton (3 Doug. 293), 
 
 28, 43, 255. 
 S. Jarvis Adams Co. v. Knapp 
 
 (58 C. C. A. 1), 231. 
 Skinner v. Oakes (10 Mo. App. 
 
 45), 22, 35, 148. 
 Slack V. Suddoth (102 Tenn. 
 
 375), 193. 
 Slater v. Banwell (50 Fed. Rep. 
 150), 396. 
 V. Merritt (75 N. Y. 268), 400. 
 Slazenger v. Feltham (6 R. P. 
 
 C. 531), 253, 282. 
 Sleepy Eye Milling Co. v. C. F. 
 Blanke Tea & Coffee Co. (85 
 Off. Gaz. 1905), 60, 101, 320. 
 Small V. Sanders (118 Ind. 105), 
 
 331. 
 Smalley v. Greene (52 la. 241), 
 
 191. 
 Smith V. Adams (6 Paige, 435), 
 120. 
 V. Carron Co. (13 P. R. 108), 
 
 289. 
 V. Everett (27 Beavan, 446), 
 
 188, 206. 
 V. Fair (14 Ont. Rep. 729), 22. 
 
 References are to pages. 
 
 Smith V. Gibbs (44 N. H. 335), 
 198. 
 V. Imus (32 Alb. L. J. 455), 22, 
 
 129, 299. 
 V. Mason (W. R. 1875, p. 62), 
 
 103 
 V. Reynolds (Fed Case No. 
 
 13,098), 370, 414, 415, 417. 
 V. Sixbury (25 Hun, 232), 102, 
 
 110. 
 
 V. Walker (37 Mich. 456), 129. 
 
 V. Woodruff (48 Barb. 438), 
 
 69, 104. 
 
 Smith & Davis Mfg. Co. v. Smith 
 
 (89 Fed. Rep. 486), 296, 297. 
 
 Smith-Dixon Co. v. Stevens (59 
 
 Atl. Rep. 401), 379, 583. 
 Snider v. McKelvey (27 Ont. App. 
 
 339), 214. 
 Snodgrass v. Wells (11 Mo. App. 
 
 590), 17, 21, 24. 
 Snow v. Holmes (71 Cal. 142), 
 
 207, 216. 
 Snowden v. Noah (Hopkins' Ch. 
 
 347), 3, 36, 165, 168. 
 Snyder Mfg. Co. v. Snyder (54 
 
 Ohio St. 86), 23, 210. 
 Social Register Ass'n v. Howard 
 (60 Fed. Rep. 270), 104, 168. 
 V. Murphy (128 Fed. Rep. 116), 
 168, 291. 
 Societe Anonyme v. Baxter (Fed. 
 Case No. 8099), 268. 
 V. Western Distilling Co. (1), 
 (43 Fed. Rep. 416), 97, 119, 
 122. 
 V. Western Distilling Co. (2), 
 
 (46 Fed. Rep. 921), 386. 
 V. Western Distilling Co. (3), 
 42 Fed. Rep. 96), 399. 
 Society, etc. de la Benedictine v. 
 Micalovitch (36 Alb. L. J. 
 364), 97, 413, 453. 
 Societe des Huiles d'Olive de 
 ::ice v. Rorke (31 N. Y. 
 Supp. 51), 379.
 
 Soc-Ste 
 
 TABLE OF CASES. 
 
 Ux 
 
 References 
 
 Society of Accountants v. Corpo- 
 ration of Accountants (20 
 
 Scot. Sess. Cas., 4th ser., 
 
 750), 335. 
 Sohier v. Johnson (111 Mass. 238), 
 
 23, 30. 
 Sohl V. Geisendorf (1 Wilson, 
 
 Ind., 60), 177, 297. 
 Solis Cigar Co. v. Pozo (16 Colo. 
 
 388), 25. 116. 
 Somerville v. Schembri (L. R. 
 
 21 App. Cas. 453), 374. 
 Sorg V. Welsh (16 Off. Gaz. 910), 
 
 104, 412, 414. 
 South Carolina v. Seymour (153 
 
 U. S. 353), 446. 
 Southern v. How (Popham, 144), 
 
 13, 36. 
 Southern White Lead Co. v. Cary 
 
 (25 Fed. Rep. 125), 136, 137, 
 
 288. 
 V. Coit (39 Fed. Rep. 492), 
 
 136, 137. 
 Specific Med. Co. v. Wenz (14 
 
 Fed. Rep. 250), 5. 
 Sperry v. Percival Milling Co. 
 
 (81 Cal. 252), 249, 253, 285, 
 
 392. 
 Spice V. James (Seb. 46). 190. 
 Spieker v. Lash (102 Cal. 38), 
 
 92, 148. 
 Spier V. Lambdin (45 Ga. 319), 
 
 199. 
 Spratt V. Jeffery (10 B. & C. 249), 
 
 189. 
 Spring Valley Water Works v. 
 
 Schottler (62 Cal. 69), 193. 
 Stachelberg v. Ponce (1), (23 
 
 Fed. Rep. 430), 71, 101, 353. 
 V. Ponce (2), (128 U. S. 686), 
 
 92, 261, 353, 460. 
 Standinger v. Standinger (19 
 
 Leg. Int. 85), 141. 
 Starey v. Chilworth Gunpowder 
 
 Co. (L. R. 24 Q. B. D. 90), 
 
 68. 
 
 are to pages. 
 
 State V. Barnett (159 Ind. 432), 
 
 564. 
 V. Berlinsheimer (62 Mo. App. 
 
 165), 56. 
 V. Bishop (128 Mo. 373), 57, 
 
 616. 
 V. Gibbs (56 Mo. 133), 19, 51, 
 
 62, 616. 
 V. Hagen (6 Ind. App. 167), 
 
 56, 563. 
 V. Mason (38 Pac. Rep. 130), 48. 
 V. McGrath (92 Mo. 357), 151. 
 V. Niesmann (101 Mo. App. 
 
 507), 616. 
 V. Schmidt (48 Atl. Rep. 588), 
 
 638. 
 V. Thierauf (167 Mo. 429), 616. 
 V. Wright (159 Ind. 394), 563. 
 State of Pennsylvania v. Wheel- 
 ing & Belmont Bridge Co. 
 
 (59 U. S. 421), 344. 
 Steinthal v. Samson (Seb. 546), 
 
 114. 
 
 Steinway v. Henshaw (5 P. R. 
 
 77), 288. 
 Stephens v. DeConto (4 Abb. Pr. 
 
 N. S. 47), 101, 167, 168. 
 V. Peel (16 L. T. N. S. 145), 
 
 288. 
 Sterling Remedy Co. v. Eureka 
 
 Mfg. Co. (1), (70 Fed. Rep. 
 
 704), 45, 102. 
 V. Eureka Mfg. Co. (2), (25 
 
 C. C. A. 314), 97, 290. 
 V. Gorey (110 Fed. Rep. 372), 
 
 283, 301. 
 V. Spermine Med. Co. (50 C. C. 
 
 A. 657), 283, 387. 
 Sternberger v. Thalheimer (3 Off. 
 
 Gaz. 120), 98, 416. 
 Steuart v. Gladstone (L. R. 10 
 
 Ch. D. 646), 194. 
 Stevens Linen Works v. William 
 
 & John Don & Co. (121 Fed. 
 
 Rep. 171), 42, 298, 393.
 
 Ix 
 
 TABLE OF CASES. 
 
 Ste-Ter 
 
 References are to pages. 
 
 Stewart v. Challacombe (11 lU. 
 App. 379), 215. 
 V. Einstein (64 Off. Gaz. 1533), 
 
 335. 
 V. Hook (118 Ga. 445), 220, 
 
 223. 
 V. Smithson (1 Hilt. 119), 74, 
 
 76. 
 Stirling Silk Mfg. Co. v. Ster- 
 ling Silk Co. (46 Atl. Rep. 
 
 199), 78. 
 St. Louis Piano Mfg. Co. v. Mer- 
 
 kel (1 Mo. App. 305), 59. 
 St. Louis Stamping Co. v. Piper 
 
 (33 N. Y. Supp. 443), 90. 
 Stokes V. Allen (9 N. Y. Supp. 
 
 846), 104. 
 V. Landgraff (17 Barb. 608), 89, 
 
 90, 92, 93, 107. 
 Stokes Bros. Mfg. Co. v. Heller 
 
 (56 Fed. Rep. 297), 229. 
 Stone V. Carlan (Cox, Manual, 
 
 No. 104), 312. 
 V. Goss (55 Atl. Rep. 736), 223. 
 Stonebraker v. Stonebraker (33 
 
 Md. 252), 144. 
 Stoughton V. Woodard (39 Fed. 
 
 Rep. 902), 99. 
 Strasser v. Moonelis (108 N. Y. 
 
 611), 56, 419. 
 Stuart V. F. G. Stewart Co. (85 
 
 Fed. Rep. 778), 145, 146. 
 V. F. G. Stewart Co. (33 C. C. 
 
 A. 480), 145, 146, 288, 301. 
 Stuart & Co. V. Scottish Val de 
 
 Travers Paving Co. (Ct. Sess. 
 
 Cas., 4th ser., 13, 1), 90. 
 Swift V. Day (4 Robertson, 611), 
 
 267, 399. 
 V. Peters (11 Off. Gaz. 1110), 
 
 421. 
 Swift & Co. V. Brenner (125 Fed. 
 
 Rep. 826), 45. 287. 
 V. Groff (114 Fed. Rep. 605), 
 
 371. 
 
 Sykes v. Sykes (3 B. & Cr. 541), 
 
 73, 255, 333, 348. 
 Symington v. Footman (56 L. T. 
 
 N. S. 696), 91. 
 Symonds v. Greene (28 Fed. Rep. 
 
 834), 99, 327, 329, 350, 380, 
 
 396, 461. 
 V. Jones (82 Me. 302), 24. 
 
 T 
 
 Taendsticksfabriks Aktiebolaget 
 
 Vulcan V. Myers (11 N. Y. 
 
 Sup. 663), 277. 
 
 V. Myers (139 N. Y. 364), 105, 
 
 375, 378. 
 
 Talbot V. Webley (3 R. P. C. 276), 
 
 97. 
 Talcott V. Moore (6 Hun, 106), 
 
 168, 404. 
 Tarrant & Co. v. Hoff (22 C. C. 
 
 A. 644), 24, 68. 
 Taylor v. Ashton (11 M. & W. 
 402), 255. 
 V. Bemis (Fed. Case No. 13779), 
 
 17, 22. 
 V. Bothin (Fed. Case No. 
 
 13780), 27, 52. 
 V. Carpenter (1), (3 Story, 
 458), 19, 62, 103, 172, 374, 
 749. 
 V. Carpenter (2), (2 W. & M. 
 1), 19, 120, 172, 175, 177, 295, 
 351, 355. 
 V. Carpenter (3), (2 Sandf. Ch. 
 603), 14, 19, 266, 295, 358, 
 373. 
 V. Gillies (59 N. Y. 331), 90. 
 V. Howard (110 Ala. 468), 214. 
 V. Taylor (L. R. 2 Eq. 290), 
 144, 261, 301. 
 T. B. Dunn Co. v. Trix Mfg. Co. 
 
 (63 N. Y. Supp. 333), 394. 
 Telephone Mfg. Co. v. Sumter 
 Mfg. Co. (63 S. C. 313), 129. 
 Territory v. Guyott (9 Mont. 46), 
 448. 
 
 I
 
 Tet-Twe 
 
 TABLE OF CASES. 
 
 Ixi 
 
 References 
 
 Tetlow V. Savournin (15 Phila. 
 
 170), 222. 
 V. Tappan (85 Fed. Rep. 774), 
 
 21, 58, 63, 65, 104, 180. 
 Thackeray v. Saxlehner (60 C. C. 
 
 A. 562), 174. 
 The Amiable Nancy (3 Wheat. 
 
 546), 358. 
 The Collins Co. v. Oliver Ames 
 
 & Son Corporation (18 Fed. 
 
 Rep. 561), 269. 
 The Fair v. Jose Morales & Co. 
 
 (82 111. App. 499), 21. 
 Thedford Medicine Co. v. Curry 
 
 (96 Ga. 89), 332. 
 The Peck Bros. & Co. v. Peck 
 
 Bros. Co. (51 C. C. A. 251), 
 
 156. 
 Thomas G. Plant Co. v. May Co. 
 
 (100 Fed. Rep. 72), 103. 
 V. May Co. (44 C. C. A. 534), 
 
 8, 103, 161. 
 Thompson v. Andrus f73 Mich. 
 
 551), 188. 
 V. Mackinnon (2 Steph. Dig. 
 
 726), 23. 
 V. Montgomery (1891, App. Cas. 
 
 217), 132. 
 Thompson v. Winnebago County 
 
 (48 Iowa 155), 188. 
 Thompson & Co. v. Robertson 
 
 (Ct. Sess. Cas., 4th ser., XV, 
 
 880), 56. 
 Thomson v. Winchester (36 Mass. 
 
 214), 37, 95. 
 Thorley's Cattle Food Co. v. Mas- 
 
 sam (42 L. T. N. S. 851), 47, 
 
 144. 
 
 Thornbury v. Bevill (1 Y. & 
 C. Ch. 554), 191. 
 
 Thornton v. Crowley (47 N. Y. 
 
 Super. Ct. 527), 261. 
 Thum Co. V. Tloczynski (114 
 
 Mich. 149), 222. 
 
 are to pages. 
 
 Thynne v. Shove (L. R. 1890, 45 
 
 Ch. D. 577), 24, 143, 148, 197. 
 Tichenor v. Newman (186 111. 
 
 264), 192. 
 Tode V. Gross (127 N. Y. 480), 
 
 213. 
 Towle V. Spear (7 Penn. L. J. 
 
 176), 69, 95. 
 Tonge V. Ward (21 L. T. N. S. 
 
 480), 289, 338, 374, 404. 
 Town V. Stetson (4 Abb. Pr. N. 
 
 S. 218), 89, 107. 
 Townsend v. Hurst (37 Miss. 
 
 679), 217. 
 Tracy v. Banker (170 Mass. 266), 
 
 56, 591. 
 Trade-mark Cases (100 U. S. 82), 
 
 14, 16, 58, 63, 341, 313, 314, 
 
 411, 445. 
 Trask Fish Co. v. Wooster (28 
 
 Mo. App. 408). 94. 
 Trego V. Hunt (65 L. J. Ch. 1), 
 
 197, 206. 
 Trisdorfer & Co. v. Estate of 
 
 Bassett (60 MSS. D., Sept. 
 
 1896), 63. 
 Tuck & Sons v. Priester (L. R. 
 
 19 Q. B. D. 629), 79, 225. 
 Tucker Mfg. Co. v. Boyington 
 
 (Fed. Cas. No. 14229), 95, 
 
 261. 
 
 Tuerk Power Co. v. Tuerk (36 
 N. Y. Supp. 384), 145. 
 
 Turner v. Evans (2 El. & El. 
 512), 208. 
 
 V. Major (3 Giff. 442), 24, 188. 
 Turton & Sons. Ltd. v. Turton 
 
 (L. R. 42 Ch. D. 128), 143. 
 Tussaud V. Tussaud (38 W. R. 
 440), 23, 143, 145. 
 
 Tuttle V. Blow (176 Mo. 158), 34. 
 Twentsche Stoom Bleekery Goor 
 
 V. Ellinger (26 W. R. 71), 
 
 338, 374, 375.
 
 bdi 
 
 TABLE OF CASES. 
 
 Uni-Vol 
 
 References are to pages. 
 
 u 
 
 Union Paper Collar Co. v. Met- 
 ropolitan Collar Co., Ltd. (3 
 Daly, 171), 396. 
 United States v. Braun (39 Fed. 
 Rep. 775), 60, 321, 342, 445. 
 V. Campe (89 Fed. Rep. 697), 
 
 344. 
 V. Duell (17 App. Cas. D. C), 
 
 459. 
 V. Holliday (3 Wall. 407), 448. 
 V. Koch (40 Fed. Rep. 250), 
 
 342, 445. 
 V. Loeb (49 Fed. Rep. 636), 344. 
 V. Marble (3 Mackey 32), 426. 
 V. Marble (22 Off. Gaz. 1366), 
 
 412, 413, 426. 
 V. National Lead Co. (75 Fed. 
 
 Rep. 94), 396. 
 V. 132 Packages of Spirituous 
 Liquors and Wines (22 C. C. 
 A. 228), 344. 
 V. 132 Packages (65 Fed. Rep. 
 
 980), 344. 
 V. Roche (1 McCrary, 385), 
 
 411, 422. 
 V. Seymour (66 Off. Gaz. 1167), 
 
 453, 457, 458. 
 V. Steffens (100 U. S. 82), 421. 
 V. Upham (43 Fed. Rep. 68), 
 450. 
 United States Cordage Co. v. Wm. 
 Wall's Sons Rope Co. (90 
 Hun 429), 218. 
 Upmann v. Currey (29 Sol. J. 
 735), 339, 374. 
 V. Elkan (L. R. 12 Eq. 140), 
 
 263, 338, 339, 403. 
 V. Forester (L. R. 24 Ch. D. 
 231), 263, 339, 369, 370, 374, 
 375, 403. 
 Upper Assam Tea Co. v. Herbert 
 
 (7 R. P. C. 183), 282. 
 Uri V. Hirsch (123 Fed. Rep. 
 568), 70. 
 
 y 
 
 Vacuum Oil Co. v. Climax Re- 
 fining Co. (56 C. C. A. 90), 
 158. 
 V. Eagle Oil Co. (122 Fed. Rep. 
 105), 304. 
 Valentine v. Valentine (31 L. R. 
 
 Ir. 488), 406. 
 Van Beil v. Prescott (85 N. Y. 
 
 630), 94. 
 Van Camp Packing Co. v. Cruik- 
 
 shanks Bros. Co. (33 C. C. 
 
 A. 280), 243, 253, 379. 
 Vanden Bergh & Co. v. Belmont 
 
 Distillery Co. (99 Off. Gaz. 
 
 1624), 324. 
 Van Dyke v. Jackson (1 E. D. 
 
 Smith, N. Y., 419), 212. 
 Van Hoboken v. Mohns & Kalten- 
 
 bach (112 Fed. Rep. 528), 96, 
 
 274, 392. 
 Van Horn v. Coogan (52 N. J. 
 
 Eq. 380), 103, 124, 287. 
 Van Houten v. Hooton Cocoa & 
 
 Chocolate Co. (130 Fed. Rep. 
 
 600), 310. 
 Van Stan's Stratena Co. v. Van 
 
 Stan (58 Atl. Rep. 1064), 2.9. 
 Verges v. Forshee (9 La. Ann. 
 
 294), 215. 
 Viano v. Baccigalupo (183 Mass. 
 
 160), 272. 
 Vickery v. Welsh (19 Pick. 523), 
 
 219. 
 Victor Talking Machine Co. v. 
 
 Armstrong (132 Fed. Rep. 
 
 711), 243, 244. 
 Vitascope Co. v. United States 
 
 Phonograph Co. (83 Fed. Rep. 
 
 30), 45, 105. 
 Vogt V. People (59 111. App. 684), 
 
 346, 558.
 
 iVon-Web 
 
 TABLE OF CASES. 
 
 Ixiii 
 
 References are to pages. 
 
 Vonderbank v. Schmidt (44 La. 
 
 Ann. 264), 206, 311. 
 Von Faber v. Faber (124 Fed. 
 
 Rep. 603), 143. 
 Von Mumm v. Frash (56 Fed. 
 Rep. 830), 137, 249, 267, 391. 
 V. Kirk (40 Fed. Rep. 589), 
 
 249. 
 V. Steinmetz (137 Fed. Rep. 
 
 168), 173. 
 V. Witteman (1), (85 Fed. 
 
 Rep. 906), 243, 253, 260. 
 V. Witteman (2), (33 C. C. A. 
 404), 243, 253. 
 Vulcan Detinning Co. v. Amer- 
 ican Can Co. (58 Atl. Rep. 
 290), .230. 
 
 w 
 
 W. A. Gaines & Co. v. E. Whyte 
 
 Grocery, Fruit & Wine Co. 
 
 (107 Mo. App. 507), 102. 
 V. Leslie (54 N. Y, Supp. 421), 
 
 102, 287, 
 Wagner v. Daly (97 Hun, 477), 
 
 64. 
 
 Walker v. Alley (13 Grant Up. 
 
 Can. Ch. 366), 278. 
 V. Mikolas (79 Fed. Rep. 955), 
 
 283. 
 V. Reid (Fed. Case No. 17084), 
 
 95, 299. 
 
 Wallach v. Whigmore (87 Fed. 
 
 Rep. 469), 53, 334, 353. 
 
 Wallis V. Wallis (4 Dr. 458), 375. 
 
 Walter Baker Co. v. Baker (1), 
 
 (77 Fed. Rep. 181), 135, 285. 
 
 V. Baker (2), (87 Fed. Rep. 
 
 209), 373. 
 V. Sanders (26 C. C. A. 220), 
 35, 377, 386, 397. 
 
 V. Slack (65 C. C. A. 138), 385, 
 386. 
 
 Walton V. Crowley (Fed. Case 
 
 No. 17133), 32, 61, 266. 
 Wamsutta Mills v. Allen (12 
 
 Phila. 535), 269, 289. 
 Ward V. Drat (Cox, Manual, 607), 
 
 46. 
 V. Robinson (L. R. 9 Ch. D. 
 
 487), 27, 181. 
 Warfield v. Booth (33 Md. 63), 
 
 192. 
 Waring v. Cox (1 Camp, 369), 15. 
 Warner v. Roehr (Fed. Cas. No. 
 
 17189 A), 351, 356, 746. 
 V. Searle & Hereth Co. (191 U. 
 
 S. 195), 315, 365, 469. 
 Warren v. Warren Thread Co. 
 
 (134 Mass. 247), 25, 322. 
 Washburne v. Dosch (68 Wis. 
 
 436), 198. 
 V. National Wall Paper Co. (81 
 
 Fed. Rep. 17), 187, 192. 
 Washburn & Moen Mfg. Co. v. 
 
 Freeman Wire Co. (41 Fed. 
 
 Rep. 410), 78, 396. 
 V. Haish (Fed. Case No. 17217), 
 
 78. 
 Washington Medallion Pen Co. v. 
 
 Esterbrook (Fed. Case No. 
 
 17246 a), 244. 
 
 Waterman v. Shipman (130 N. 
 Y. 301), 83, 101. 
 
 Watkins v. Landon (52 Minn. 
 389), 180, 219, 607. 
 
 Watt V. O'Hanlon (4 P. R. 1), 93. 
 
 Waukesha Hygeia Min. Springs 
 Co. V. Hygeia Sparkling Dis- 
 tilled Water Co. (11 C. C. A. 
 277), 52, 100, 449, 462. 
 
 Weber Medical Tea Co. v. Kirch- 
 stein (101 Fed. Rep. 580), 
 277. 
 
 V. Weber (102 Fed. Rep. 158), 
 388. 
 
 Webster v. Ketcham (39 N. Y. 
 Sup. Ct 54), 334.
 
 Ixiv 
 
 TABLE OF CASES. 
 
 Web-Wil 
 
 References are to pages. 
 
 Webster v. Webster (3 Swanst. 
 
 490), 23, 361. 
 V. Williams (62 Ark. 101), 191. 
 Wedderburn v. Wedderburn (22 
 
 Beavan, 84), 187. 
 Weed V. Peterson (12 Abb. Pr. 
 
 N. S. 178). 24, 197, 402, 404. 
 Weener v. Brayton (152 Mass. 
 
 101), 3, 56, 361, 402. 
 Weinstock, Lubin & Co. v. Marks 
 
 (109 Cal. 529), 286, 303. 
 Welch V. Knott (4 K. & J. 747), 
 
 274, 294. 
 Weldon v. Dick (L. R. 10 Ch. D. 
 
 247), 172. 
 Wellman & Dwire Tob. Co. v. 
 
 Ware Tob. Works (46 Fed. 
 
 Rep. 289), 95, 249. 
 Wells V. Ceylon Perfume Co. (105 
 
 Fed. Rep. 621), 292. 
 Wells & Richardson v. Siegel- 
 
 Cooper Co. (106 Fed. Rep. 
 
 77), 98. 
 Welsbach Light Co. v. Adam 
 
 (107 Fed. Rep. 463), 58, 289, 
 
 305, 459. 
 Welz V. Rhodius (87 Ind. 1),199. 
 Weston V. Hemmons (2 Vict. L. 
 
 R. Eq. 121), 222. 
 V. Ketcham (1), (39 N. Y. 
 
 Super. Ct. 54), 21, 24. 
 V. Ketcham (2), (51 How. Pr. 
 
 455), 21, 30. 
 Wetmore v. Scovell (3 Edw. Ch. 
 
 515), 226. 
 Weyman v. Soderberg (108 Fed. 
 
 Rep. 63), 89, 129, 272. 
 Wharton v. Thurber (Cox, Man- 
 ual, 663), 403. 
 Wheeler v. Johnston (3 L. R. Ir. 
 
 284), 55, 79. 
 White V. Jones (1 Abb. Pr. N. S. 
 
 337), 197. 
 V. Wagar (1), (83 111. App. 
 
 592), 344, 558. 
 
 White V. Wagar (2), (185 111. 
 
 195), 344, 558. 
 Whitfield V. Loveless (64 Off. Gaz. 
 
 442), 311. 
 Whiting Mfg. Co. v. Jos. H. Bau- 
 land Co. (56 N. Y. Supp. 
 114), 380. 
 Whitman v. Hubbell (30 Fed. 
 
 Rep. 81), 329. 
 Whitney v. Robertson (124 U. S. 
 
 190), 449. 
 Whittaker v. Howe (3 Beavan, 
 
 383), 19L 
 Whittier v. Dietz (66 Cal. 78), 
 
 17, 59, 332. 
 Wilcox & Gibbs S. M. Co. v. Mar- 
 ble (1 Mackey, 284), 426. 
 V. The Gibbens Frame (17 Fed. 
 Rep. 623), 78, 243, 419. 
 Wilkinson v. Griffith (8 R. P. C. 
 
 370), 267, 280. 
 Williams v. Adams (Fed. Case 
 No. 17711), 105, 394. 
 V. Brooks (50 Conn. 278), 375, 
 
 392. 
 V. Farrand (88 Mich. 473), 187, 
 
 198. 210. 
 V. Fears (179 U. S. L70), 316. 
 V. Johnson (2 Bos. 1), 105, 145, 
 
 246, 375. 
 V. Mitchell (45 C. C. A. 265), 
 
 97, 387. 
 V. Osborne (13 L. T. N. S. 
 
 498), 375. 
 V. Spence (25 How. Pr. 366), 
 
 105. 
 V. Williams (3 Mer. 157), 220. 
 V. Wilson (4 Sandf. Ch. 379), 
 195. 
 Williams Mfg. Co. v. Noera (158 
 
 Mass. 110), 121. 
 Wilmer v. Thomas (74 Md. 485), 
 
 25, 322. 
 Wilson V. Singer Mfg. Co. (12 
 Fed. Rep. 57), 75.
 
 Win-Zan 
 
 TABLE OF CASES. 
 
 Ixv 
 
 References 
 
 Winchester Repeating Arms Co. 
 
 V. Butler Bros. (128 Fed. 
 
 Rep. 976), 330. 
 Winn V. Gilmer (27 Fed. Rep. 
 
 817), 450. 
 Winsor v. Clyde (9 Phila. 513), 
 
 337. 
 Wirtz V. Eagle Bottling Co. (50 
 
 N. J. Eq. 164), 258, 267. 
 Witt V. Reed Electric Co. (187 
 
 Pa. 424). 229. 
 Witthaus V. Braun (44 Md. 303), 
 
 20, 22, 23, 193. 
 Wm. J. Moxley Co. v. Braun & 
 
 FittsCo. (93 111. App. 183), 14. 
 Wm. G. Rogers Co. v. Interna- 
 tional Silver Co. (55 C. C. 
 
 A. 83), 146. 
 
 Wm. Rogers Mfg. Co. v. Rogers 
 
 & S. Mfg. Co. (11 Fed. Rep. 
 
 495), 57, 128, 143, 144, 146, 
 
 148, 151. 
 V. R. W. Rogers Co. (66 Fed. 
 
 Rep. 66), 143, 144. 
 V. R. W. Rogers Co. (17 C. C. 
 
 A. 57), 143. 
 V. Rogers (84 Fed. Rep. 639), 
 
 143, 146. 
 V. Simpson (54 Conn. 527), 143. 
 Wolfe V. Alsop (12 Vict. L. R. 
 
 (E.), 421), 94, 354. 
 
 V. Barnett (24 La. Ann. 97), 
 
 179, 375. 
 V. Burke (56 N. Y. 115), 70, 
 
 143. 
 V. Goulard (18 How. Pr. 64), 
 
 94, 128. 
 V. Hart (4 V. L. R. Eq. 125), 
 
 94. 
 V. Lang (13 V. L. R. 752), 94, 
 
 354. 
 
 Wood V. Burgess (L. R. 24 Q. B. 
 D. 162), 346. 
 
 are to pages. 
 
 Wood V. Butler (3 R. P. C. 81), 70. 
 V. Hinchman (110 Off. Gaz. 
 
 600), 293. 
 V. Lambert (L. R. 32 Ch. D. 
 
 247), 7, 56, 182. 
 V. Sands (Seb. 467), 148. 
 Woodcock V. Guy (33 Wash. 234), 
 
 60, 717. 
 Woodman v. United States (15 
 
 Ct. of CI. 541), 411. 
 Woods V. Sands (Fed. Case No. 
 
 17963), 311. 
 Woodward v. Lazar (21 Cal. 449), 
 
 311. 
 Woolf V. Woolf (43 Sol. J. 127), 
 
 402. 
 Woolsey v. Judd (4 Duer 379), 
 
 225. 
 Wooster v. Kisch (26 Hun, 61), 
 
 213. 
 Worden & Co. v. California Fig 
 
 Syrup Co. (187 U. S. 515), 88. 
 Wormser v. Shayne (111 111. App. 
 
 556), 377. 
 Wotherspoon v. Currie (L. R. 5 
 
 H. L. 508), 35, 100, 140, 256, 
 
 257. 
 V. Gray (Ct. Sess. Cas., 3d ser., 
 
 2), 95. 
 Wright V. Simpson (15 Off. Gaz. 
 
 9G8), 27, 28, 412, 423. 
 
 Yale Cigar Mfg. Co. v. Yale (30 
 Off. Gaz. 1183), 56, 100, 412, 
 421, 423, 457, 458. 
 
 Young V. Jones (Fed. Case No. 
 18159), 24, 26, 52. 
 
 V. Macrae (9 Jur. N. S. 322), 
 79, 93. 
 
 Zanturjian v. Boornazian (55 Atl. 
 Rep. 199), 206.
 
 HOPKINS ON TRADEMARKS 
 
 CHAPTER I. 
 
 PREFATORY. 
 
 § 1. The need of legal restraint of unfair trade.— It is 
 not the spirit of our laws to interfere with fair competi- 
 tion. It is for the best interests of society that prices 
 should be adjusted by the economical laws of supply and 
 demand. With limitations that have been imposed by 
 varying local conditions, tempered by the caprices of 
 legislation and the idiosyncrasies of judges, our common 
 and statutory law alike condemn contracts in restraint 
 of trade, and monopolies, complete or partial. But, on 
 the other hand, there are recognized property rights 
 which are of necessity monopolistic in their character. 
 The most notable are those created by the patent and 
 copyright laws, which grant, for a limited time, a monop- 
 oly in the production of the brain of the author or inven- 
 tor. The value of these laws in the advancement of 
 science, manufacture and art is universally recognized. 
 Closely allied to these rights is the right of those engaged 
 in commerce to be subjected to none but fair competition. 
 
 Unfair competition consists in passing off one's goods 
 as the goods of another, or in otherwise securing patron- 
 age that should go to another, by false representations 
 that lead the patron to believe that he is patronizing the 
 other person. It is of vital importance to healthy busi- 
 ness conditions that such competition should be sup- 
 pressed. It is equally important however, that fair com- 
 petition shall not be interfered with. Whether the com- 
 1 1
 
 2 HOPKINS ON TRADEMARKS. [§ 1 
 
 petitive acts complained of are fair or unfair is the vital 
 point in each litigated case. 
 
 It is apparent that the simplest means of depriving 
 another of the trade he has built up is to copy the marks 
 he places on his merchandise. This is the easiest method 
 of stealing his trade, and most universal because of the 
 general use of marks or brands upon personal property. 
 The use of such marks runs far back into the shadows of 
 history, and to the period when a knowledge of written 
 language was unusual among tradesmen. It is only nat- 
 ural that these marks used in trade, ot trademarks, should 
 have first become the subjects of judicial consideration, 
 and that the law concerning them should have reached a 
 state of comparatively complete development before 
 infringers began to employ other and more obscure means 
 to divert trade. 
 
 It is true, as well, that the development of the law of 
 the technical trademark tended to encourage the bucca- 
 neers of commerce to invent new and subtler means of 
 stealing another's trade without trespassing upon his 
 trademark rights. But the law, steadily though slowly, 
 extended its bulwark of protection about the legitimate 
 trader, until at length he was afforded legal redress 
 in some form, not always adequate or complete, against 
 the fraudulent diversion of his trade, in whatever form 
 it might appear. 
 
 In the light of these facts it is self evident that the law 
 of the technical trademark must first be mastered before 
 the student can with understanding study the gradual 
 evolution, from this protoplasm, of the larger law regu- 
 lating all unfair competition in trade. 
 
 From the early days of commerce, probably from its 
 beginning, the keen rivalry of competing merchants has 
 led to the use of unfair and dishonest methods of divert- 
 ing custom. With the growth of commerce has come a 
 corresponding increase of fraudulent competition and its 
 attendant evils. The English-speaking people were slow
 
 §2] 
 
 PREFATORY. 
 
 to realize tliat some legal restraint should be imposed 
 upou the dealer who seeks to secure patrouage by dress- 
 ing his goods in a manner calculated to deceive the pub- 
 lic into a belief that they are the goods of another. There 
 are a few unimportant unfair trade cases in the English 
 reports of the eighteenth century; the first reported 
 American decision was rendered in 1825.^ The law as it 
 is administered by the courts of the United States to-day 
 is almost wholly the product of the last half-centur>'. 
 
 The purpose of this treatise is to discuss the law of 
 unfair trade in its broadest sense, including not only the 
 law of trademarks, but also the principles applicable 
 to the restraint of fraudulent competition in cases where 
 no trademark is involved. ''The law of trademarks is 
 but part of the law of unfair competition in trade." ^ 
 
 § 2. Trademark defined.^— A trademark is a distinc- 
 
 1 — Snowden v. Noah, Hopkins' 
 Ch. 347. 
 
 2 — Bradford, J., in Dennison 
 Mfg. Co. V. Thomas Mfg. Co., 94 
 Fed. Rep 651, 659. 
 
 3 — Judicial definitions. — "A 
 trademark may consist of a name, 
 symbol, letter, form or device, if 
 adopted and used by a manufac- 
 turer or merchant in order to des- 
 ignate the goods he manufactures 
 or sells, to distinguish the same 
 from those manufactured or sold 
 by another, to the end that the 
 goods may be known in the mar- 
 ket as his, and to enable him to 
 secure such profits as result from 
 his reputation for skill, industry, 
 and fidelity." Mr. Justice Clifford 
 in McLean v. Fleming, 96 U. S. 
 245, 254, and in Amoskeag Mfg. Co. 
 V. Trainer, 101 U. S. 51, 60. 
 
 "A trademark, properly so 
 called, may be described as a par- 
 ticular mark or symbol, used by a 
 person for the purpose of denoting 
 
 that the article to which it is 
 affixed is sold or manufactured 
 by him or by his authority, or 
 that he carries on business at a 
 particular place." Lord Cranworth 
 in Leather Cloth Co. v. American 
 Leather Cloth Co., 35 L. J. Ch. 61. 
 
 "A trademark is a mere notice, 
 an arbitrary mark or sign put on 
 an artificial product, whereby any 
 person interested in the informa- 
 tion may be assured as to the ori- 
 gin of said product." Showalter, 
 J., in Royal Baking Powder Co. 
 V. Raymond, 70 Fed. Rep. 376, 380. 
 
 "A trademark is a peculiar 
 name or device, by which a per- 
 son dealing in an article desig- 
 nates it as of a peculiar kind, 
 character or quality, or as manu- 
 factured by or for him, or dealt 
 in by him, and of which he is en- 
 titled to the exclusive use." Dev- 
 eos, J., in Weener v. Brayton, 152 
 Mass. 101, 102. 
 
 "It is a mode of designating
 
 HOPKINS ON TR.VDEMARKS. 
 
 [§2 
 
 goods as being the goods which 
 have been, in some way or other, 
 dealt with by A. B., the person 
 who owns the trademark." Kay, 
 J., in Re The Australian Wine 
 Importers, (Ltd.), L. R- 41 Ch. D. 
 278, 281. 
 
 "Symbols or devices used by a 
 manufacturer or merchant to dis- 
 tinguish the products, manufac- 
 tures, or merchandise which he 
 produces, manufactures or sells, 
 from that of others, are called and 
 known by the name of trade- 
 marks. They are used in order 
 that such products, manufactures 
 or merchandise may be known as 
 belonging to the owner of the 
 symbol or device, and that he may 
 secure the profits from its repu- 
 tation or superiority." Mr. Jus- 
 tice Clifford in Amoskeag Mfg. Co. 
 V. Trainer, 101 U. S. 51, 56. 
 
 "Any name, symbol, letter, fig- 
 ure or device adopted by the per- 
 sons manufacturing or selling 
 goods, and used and put upon 
 such goods to distinguish them 
 from those manufactured or sold 
 by others, and employed so often 
 and for such a length of time, as 
 to raise the presumption that the 
 public would know that it was 
 used to indicate ownership of the 
 goods in the person manufactur- 
 ing or selling them, constitutes 
 his trademark." Rhodes, J., in 
 Derringer v. Plate, 29 Cal. 292; 
 Cox, 324. 
 
 "A trademark is a symbol arbi- 
 trarily selected by a manufacturer 
 or dealer, and attached to his 
 wares to indicate that they are his 
 wares." Douglas, J., in Cady v. 
 Schultz, 19 R. I. 193; 61 Am. St 
 Rep. 763, 765. 
 
 "It is a sign or mark by which 
 the manufactured articles pro- 
 
 duced by one person, or firm, or 
 maker are distinguishable from 
 those produced by rival manufac- 
 turers." Williams, J., in Hoyt v. 
 Hoyt, 143 Pa. St. 623; 24 Am.' St. 
 Rep. 575. 
 
 "A trademark consists of a 
 word, mark or device adopted by 
 a manufacturer or vendor to dis- 
 tinguish his productions from 
 other productions of the same ar- 
 ticle." Gilfillan, C. J., in Cigar- 
 makers' Protective Union v. Con 
 haim, 40 Minn. 243; 12 Am. St. 
 Rep. 726. 
 
 "A trademark is a name, sign, 
 symbol, mark, brand, or device of 
 any kind, used to designate the 
 goods manufactured or sold, or 
 the place of business of the man- 
 ufacturer or dealer in such goods." 
 Beck, J., in Shaver v. Shaver, 54 
 Iowa, 208; Price & Steuart, 395. 
 
 "A trademark may consist of 
 anything, marks, forms, symbols, 
 which designate the true origin or 
 ownership of the article." Monell, 
 J., in Godillot v. Hazard, 44 N. Y. 
 Sup. Ct. 427. 
 
 "A trademark is . . . the 
 name, symbol, figure, letter, form, 
 or device used by a manufacturer 
 or merchant to designate the 
 goods he manufactures or sells, to 
 distinguish them from those man- 
 ufactured or sold by another, to 
 the end that they may be known 
 in the market as his, and to se- 
 cure such profits as result from a 
 reputation for superior skill, in- 
 dustry or enterprise." Crawford, 
 J., in Larrabee v. Lewis, 67 Ga. 
 562. 
 
 "A trademark is an arbitrary 
 character or characters without 
 special meaning, adopted by per- 
 sons, firms or corporations for the 
 purpose of identifying the goods
 
 §2] 
 
 PREFATORY, 
 
 manufactured by them or of which 
 they have the sale." Marble, 
 Commissioner, in Ex parte Frie- 
 berg & Workum, 20 Off. Gaz. 1164. 
 "Broadly defined, a trademark 
 is a mark by which the wares of 
 the owner are known in trade. Its 
 object is two-fold: First, to pro- 
 tect the party using it from com- 
 petition with inferior articles; 
 and second, to protect the public 
 from imposition. . . . Anything 
 which can serve to distinguish one 
 man's productions from those of 
 another may be used. The trade- 
 mark brands the goods as genuine, 
 just as the signature to a letter 
 stamps it as authentic." Coxe, J., 
 in Shaw Stocking Co. v. Mack, 12 
 Fed. Rep. 707, 710. 
 
 "A trademark is any proper 
 mark by which goods and wares 
 of the owner or manufacturer are 
 known in the trade. Courts of 
 equity have two objects in view in 
 granting injunctions against their 
 imitation: 1. To secure to the in- 
 dividual adopting one the profits 
 of his skill, industry, and enter- 
 prise; 2. To protect the public 
 against fraud." Nixon, J., in 
 Humphreys' Specific Med. Co. v 
 Wenz, 14 Fed. Rep. 250, 252. 
 
 "A trademark is a sign or sym- 
 bol primarily confined exclusively 
 to the indication of the origin or 
 ownership of the goods to which 
 it may be attached and it may be 
 composed of any name, device, 
 line, figure, mark, word, letter, 
 numeral or combination or ar- 
 rangement of any or all of these, 
 which will serve the sole purpose 
 of a trademark, and which no 
 other person can adopt or use with 
 equal truth." Hargis, J., in Avery 
 V. Meikle, 81 Ky. 73. 
 
 "A trademark consists of a 
 
 word, mark, or device adopted by 
 a manufacturer or vendor to dis- 
 tinguish his production from 
 other productions of the same ar- 
 ticle." Wallace, J., in Hostetter v. 
 Fries, 17 Fed. Rep. 620, 622. 
 
 "A trademark, as defined by 
 Bouvier, is a sign, writing or 
 ticket put on manufactured goods, 
 to distinguish them from others. 
 It has, by a commentator on trade- 
 marks, been more fully explained 
 as a name, symbol, figure, letter, 
 form, or device, adopted and used 
 by a manufacturer or merchant to 
 designate the goods he manufac- 
 tures or sells to distinguish them 
 from the goods of another." Alli- 
 son, P. J., in Ferguson v. Davol 
 Mills, 2 Brewst. 314. 
 
 "A trademark is some arbitrary 
 or representative device attached 
 to or sold with merchandise and 
 serving to designate the origin or 
 manufacture of that merchan- 
 dise." Carpenter, J., in Davis v. 
 Davis, 27 Fed. Rep. 490, 491. 
 
 "What is a trademark? A 
 'mark' means to make a visible 
 sign upon something; to affix a 
 significant mark to; to draw, cut. 
 fasten, brand; a token upon, in- 
 dicating or intimating something; 
 to affix an indication to; to at- 
 tach one's name or initials to. A 
 trade-mark, therefore, consists of 
 the use in trade of such a mark, 
 placed upon goods manufactured 
 by a particular person and placed 
 in market with such marks, for 
 sale and trade." Welker, J., in 
 Adams v. Heisel, 31 Fed. Rep. 
 279, 280. 
 
 "A trademark is properly de- 
 fined by Upton (Upton's Trade- 
 marks, 9) as 'the name, symbol, 
 figure, letter, form or device 
 adopted and used by a manufac-
 
 HOPKINS ON TRADEMARKS. 
 
 [§2 
 
 turer or merchant, in order to des- 
 ignate the goods that he manufac- 
 tures or sells, and distinguish 
 them from those manufactured 
 or sold by another, to the end that 
 they may be known in the market 
 as his, and thus enable him to se- 
 cure such profits as result from a 
 reputation for superior skill, in- 
 dustry or enterprise.' The trade- 
 mark must be used to indicate not 
 the quality, but the origin or own- 
 ership of the article to which it 
 is attached. It may be any sign, 
 mark, symbol, word or words, 
 which others have not an equal 
 right to employ for the same pur- 
 pose." Earl, Commissioner of Ap- 
 peals, in Newman v. Alvord, 51 N, 
 Y. 189, 193. 
 
 "Every one is at liberty to affix 
 to a product of his own manufac- 
 ture any symbol or device, not 
 previously appropriated, which 
 will distinguish it from articles 
 of the same general nature manu- 
 factured or sold by others, and 
 thus secure to himself the benefits 
 of increased sale by reason of any 
 peculiar excellence he may have 
 given to it. The symbol or device 
 thus becomes a sign to the public 
 of the origin of the goods to which 
 it is attached, and an assurance 
 that they are the genuine article 
 of the original producer. In this 
 way it often proves to be of great 
 value to the manufacturer in pre- 
 venting the substitution and salo 
 of an inferior and different article 
 for his products. It becomes his 
 trademark, and the courts will 
 protect him in its exclusive use." 
 Mr. Justice Field in Amoskeag 
 Mfg. Co. V. Trainer, 101 U. S. 51, 
 53. 
 
 "Trademark. — An arbitrary 
 symbol affixed by a manufacturer 
 
 or merchant to a vendible com- 
 modity. The principal purpose of 
 a trademark is to guarantee the 
 genuineness of a product. It is, in 
 fact, the commercial substitute for 
 one's autograph. In all ages it has 
 been used to denote origin, and 
 thus protect the purchaser as well 
 as the vendor. All countries pro- 
 tect the integrity of trade-marks, 
 and nearly all civilized nations 
 have treaties or conventions se- 
 curing reciprocity of protection. 
 The tests of a trademark are: 1. 
 Universality; that is, commonly 
 recognized as such. 2. Exclusive- 
 ness; in the possession of the 
 owner. 3. Individuality; must in- 
 dicate origin and ownership. 4. 
 Must be for merchandise. 5. Must 
 be in a lawful business. 6. Must 
 be distinct and invariable." 
 Knight's Mechanical Dictionary, 
 title "Trademark," p. 2609. 
 
 "Our word 'trademark' compre- 
 hends both the marque de fabrique 
 and marque de commerce of 
 France." Townsend, J., in La Re- 
 publique Francaise v. Schultz, 57 
 Fed. Rep. 37, 41. 
 
 "A distinctive mark of authen- 
 ticity, through which the products 
 of particular manufacturers or the 
 vendible commodities of particu- 
 lar merchants may be distin- 
 guished from those of others." 
 Mr. Chief Justice Fuller in Elgin 
 Nat. Watch Co. v. Illinois Watch 
 Case Co. (2), 179 U. S. 665, 673. 
 
 "A trademark — is a name or a 
 mark or a device which it at- 
 tached to the article to point out 
 Its origin." Shipman, J., in Adee 
 V. Peck Bros. & Co., 39 Fed. Rep. 
 209, 210. 
 
 "A trademark is a word, a sym- 
 bol or device by which the wares 
 of the owner are known in trade."
 
 §3] 
 
 PREFATORY. 
 
 tive* name, word, mark, emblem, design, symbol or device, 
 used in lawful coinmerce to indicate or authenticate the 
 source from which has come, or through which has passed, 
 the chattel upon or to which it is applied or affixed.^ 
 
 §3. Tradename defined.— The word ''tradename" as 
 used in the decisions has two dilterent meanings. Stand- 
 
 Coxe, J., in Kipling v. G. P. Put- 
 nam's Sons, 120 Fed. Rep. 631. 57 
 C. C. A. 295. 
 
 "A trademark is an arbitrary, 
 distinctive name, symbol, or de- 
 vice, to indicate or authenticate 
 the origin of the product to which 
 it is attached." Deemer, C. J., in 
 Sartor v. Schaden, Iowa, 101 N. W. 
 Rep. 511. 
 
 "A trademark is a notice, a me- 
 dium of information touching ori- 
 gin or ownership." Showalter, J., 
 in Beadleston & Woerz v. Cooke 
 Brewing Co., 20 C. C. A. 405, 74 
 Fed. Rep. 229, 234. 
 
 "A trademark is a means of au- 
 thenticating or indicating the ori- 
 gin of an article." Billings, J., in 
 Johnson v. Schenck, Fed. Case 
 No. 7,412. 
 
 4 — By the word "distinctive," as 
 used in our definition, is meant 
 that the mark must be something 
 which "shall be capable of distin- 
 guishing the particular goods in 
 relation to which it is to be used 
 from other goods of a like charac- 
 ter belonging to other people." 
 Lord Chief Justice Russell, in 
 Rowland v. Mitchell, L. R. (1897) 
 1 Ch. D. 71, 74. Wood v. Lambert. 
 L. R. 32 Ch. D. 247; 54 L. T. N. S. 
 314; 3 P. R. 81; (Court of Ap- 
 peals) L. R. 32 Ch. D. 257; 55 L. 
 J. Ch. 277; 54 L. T. N. S. 317; 3 
 P. R. 88; Re Perry Davis & Son, 
 58 L. T. N. S. 695; 5 P. R. 333, and 
 
 many similar English cases treat 
 of the word "distinctive" as used 
 in the English Patents, Designs 
 and Trademarks Act of 1883, sec- 
 tion 64, sub-section 1, c. But the 
 word is used with the same sig- 
 nificance by our own leading ju- 
 rists, as for example, by Mr. Chief 
 Justice Fuller, in Elgin National 
 Watch Co. V. Illinois Watch Case 
 Co. (2), 179 U. S. 665, 673; by Jus- 
 tice Holmes, in North-Eastern Awl 
 Co. V. Marlborough Awl Co., 168 
 Mass. 147; 60 Am. St. Rep. 373; 
 and by Judge Lacombe in National 
 Biscuit Co. V. Baker, 95 Fed. Rep. 
 136. For this reason the word is 
 incorporated in the definition 
 given in the text. 
 
 5 — The mode in which the mark 
 is applied or affixed is immaterial. 
 It may be water-marked in trans- 
 lucent fabrics. Price v. GoQdall, 
 L. R. (1891) 1 Ch. D. 35. It has 
 been held to be a sufficient method 
 of affixing the mark, to use it in 
 advertising, and to place a litho- 
 graphed fac-simile of it on a card, 
 in a box containing a quantity of 
 the goods. Hay & Todd Mfg. Co. 
 v. Querns Brothers, 86 Off. Gaz. 
 1323. It has been held that to dis- 
 play the mark on a show-card 
 placed on lots of candy in a show 
 window, is not sufficient to estab- 
 lish a trademark right therein. 
 Oakes v. St. Louis Candy Co., 146 
 Mo. 391, 48 S. V,\ Rep. 467.
 
 8 HOPKINS ON TRADEMARKS. [§ 3 
 
 ing alone, and separate from the word ''trademark" it 
 includes all business names; while in the expression 
 "trademarks and tradenames" it means all business 
 names which are not technical trademarks.** 
 
 Mr. Browne, in his valuable treatise on trademarks 
 (sec. 91) uses the following language; ''the distinction 
 will be readily comprehended, when it is remembered 
 that a trademark owes its existence to the fact that it is 
 actually affixed to a vendible commodity. A tradename 
 is more properly allied to the goodvrill of a business." 
 This distinction is of itself decidedly misleading. Many 
 tradenames are "actually affixed to a vendible com- 
 modity, ' ' ' and as both trademarks and other tradenames 
 are a constituent part of the goodwill of the business in 
 which they are used, it is not possible for one class of 
 names to be more properly allied to the goodwill than the 
 other, nor is it proper to say of either that it is "allied" 
 to something of which it is a component part. 
 
 A name is frequently referred to as a "trademark" 
 and as a "tradename" in the same opinion.^ Some of 
 our ablest judges treat the words "tradename" and 
 "trademark" as synonymous.^ 
 
 Some of the cases dealing with tradenames are fairly 
 bewildering to one who endeavors to reconcile them or 
 deduce a general definition of "tradename" from them. 
 In a Massachusetts case, for example, the court found 
 that the defendant had acquired the right to the use of 
 the name "John G. Loring & Co." as a "trademark" on 
 goods, but had no right to use it as a tradename.^ ^^ 
 
 6— N. K. Fairbank Co. v. Luckel, Mass., 85, 53 N. E. Rep. 141. 
 King & Cake Soap Co., 102 Fed. 8 — Opinion of Seaman, J., in 
 Rep. 327, 331, 42 C. C. A. 376, 92 Postum Cereal Co. v. American 
 Off. Gaz. 1437. Health Food Co., 109 Fed. Rep. 
 
 7 — As "Minnesota Patent," in 898. 
 Pillsbury-Washburn Co. v. Eagle, 9— Thomas G. Plant Co. v. May 
 86 Fed. Rep. 608, 30 C. C. A. Co., 44 C. C. A. 534. 105 Fed. Rep. 
 386; and "Waltham," in Amer- 375. 
 
 lean Waltham Watch Co. v. 10— Bowman v. Floyd, 85 Mass. 
 United States Watch Co., 173 76.
 
 § 3] PREFATORY. 9 
 
 As a proper name cannot be a trademark, under prin- 
 ciples discussed elsewhere in this book, while the mean- 
 ing of the word as used by the court is clear, the opinion 
 lends no assistance to the distinction between "trade- 
 mark" and "tradename." 
 
 Plistorically, this confusion probably arose in the Eng- 
 lish decisions. In one of the leading cases we find that 
 Lord Chancellor Westbury said "a name or the style of 
 a firm may by long usage become a mere trademark, "^^ 
 and in the same case, in the House of Lords, Lord Cran- 
 worth referred to the difficulties which ' ' may arise where 
 the trademark consists merely of the name of the manu- 
 facturer."^^ 
 
 Lord Romilly said in another case "the name or style 
 of the firm of ' Banks & Co. ' was an asset of the partner- 
 ship, and if the whole concern and the good will of a 
 business have been sold, the name, as a trademark, would 
 have been sold with it."^^ 
 
 With this loose use of the word trademark by such 
 eminent judges some forty years since, it is not remark- 
 able that the bench and the profession have not yet drawn 
 the line separating trademarks from tradenames with any 
 degree of lucidity. The question of mere definition is 
 nearly always a matter of secondary importance in the 
 progress of any science. The want of an accurate dis- 
 tinction between trademarks and tradenames has not 
 hampered the growth of this branch of the law; if it had, 
 the distinction would long since have been drawn by the 
 courts. The principles involved in trademark cases and 
 tradename cases have been substantially identical. But 
 with their development it has been necessary' to sharply 
 define the technical trademark, and if it were possible to 
 draft as accurate a definition of tradename the result 
 
 11— Leather Cloth Co. v. Ameri- can Leather Cloth Co., 11 H. L. C. 
 
 can Leather Co., 4 Deg. J. & S. 141, 523, .533. 
 
 144. 13 — Banks v. Gibson, 34 Beav. 
 
 12— Leather Cloth Co. v. Ameri- 566.
 
 10 HOPKINS ON TRADEMARKS. [§ 3 
 
 would be to measure the metes and bounds of the field of 
 eases in which relief will be granted against the fraudu- 
 lent use of a word or phrase used as the distinguishing 
 identification mark of a commercial enterprise or article 
 of trade. 
 
 It is clear that words of common right ought not to be 
 called tradenames. Thus, the word '' cracker" imprint- 
 ed on a soda cracker indicates merely that it is a soda- 
 cracker. As the article itself conveys that knowledge, 
 the word is superfluous. Mark the cracker ''Uneeda,'* 
 and an entirely different result follows. The word is a 
 trademark.^^ The word, so afiixed, meets the require- 
 ments of all the definitions given herein. It is a distin- 
 guishing indication of origin and ownership. But take 
 an example of another kind of word applied to a common 
 staple article of merchandise. "Flour" stamped on a 
 sack of flour is meaningless. "Patent Flour" means 
 something more. "Minnesota Patent Flour" means pat- 
 ent flour made in Minnesota. Clearly the word "flour" 
 alone, and the words "Patent Flour" together, cannot 
 be called tradenames, though they are names used in 
 trade. They are of common right. They can be truth- 
 fully applied to flour regardless of the place where, or 
 the person by whom, it is produced. "Minnesota Patent 
 Flour" is not a trademark. It is of common right to 
 all persons producing patent flour in Minnesota. But it 
 is a tradename, because it will be a medium of fraud if 
 persons producing flour elsewhere than in Minnesota are 
 permitted to apply it to their flour.^^ 
 
 To use another example of a very common class. Any 
 one can make soap and mark it "Soap." Any soap 
 manufacturer can call his soap "Best Soap." A partic- 
 ular manufacturer adds his name to this mark and pro- 
 duces ' * Babbitt 's Best Soap. ' ' He has not made a trade- 
 
 14_lSrational Biscuit Co. v. Mills Co. v. Eagle, 30 C. C. A. 386, 
 Baker. 95 Fed. Rep. 135. 86 Fed. Rep. 608. 
 
 15 — Pillsbury - Washburn Flour
 
 § 3.] PREFATORY. 
 
 11 
 
 mark but he has made a tradename.^'' Another person 
 named Babbitt entering the market subse(iuently must 
 clearly distinguish his soap from that of the other Bab- 
 bitt. 
 
 An example of a descriptive of the composition of the 
 article itself is '^ Cellular Cloth," a cloth fabric having 
 cells in its texture. This is not a tradename,'^ while 
 ''Camel's Hair" belting is.^® 
 
 The reason for the distinction lies solely in the fact 
 that the latter words became established in the trade as 
 designating the goods of the first introducer. While the 
 two marks on their face are in identically the same cate- 
 gor}% the circumstances surroimding their commercial 
 use have rendered the first strictly of common right, and 
 the second that sort of quasi-trademark which for con- 
 venience, and because of the inadequacy, of our vocabu- 
 lary, we are constrained to call a tradename. 
 
 With all of these distinctions before us, and having re- 
 gard solely to the meaning which should attach to the 
 word ' ' tradename " if it is to be accurately differentiated 
 from the technical trademark, on the one hand, and the 
 names completely publici juris employed in commerce on 
 the other, the author submits the following definition: 
 A tradename is a word or phrase by which a business en- 
 terprise or business location or specific articles of mer- 
 chandise from a specific source are known to the public, 
 and which when applied to merchandise is generic or de- 
 scriptive and hence not susceptible of appropriation as 
 a technical trademark. 
 
 This definition, the author confidently believes, will 
 aid the reader in properly classifying and distinguishing 
 the ''trademark" and "tradename" cases, and that it 
 properly includes not only commeTcial names other than 
 those applied to merchandise, but those names applied 
 
 16— Babbitt v. Brown, 68 Hun ton, L. R. (1899) App. Cas. 326. 
 515. 18 — Reddaway v. Banham, L. R. 
 
 17— Cellular Clothing Co. v. Max- (1896) App. Cas. 199.
 
 12 HOPKINS ON TRADEMARKS. [§ 4 
 
 to mercliandise whicli though they are not trade- 
 marks have acquired a secondary'' meaning in the trade 
 and hence are protected in equity against their use by 
 another in fraudulent competition. 
 
 The English text-writer, Mr. Kerly, has included this 
 class of words in his treatment of "tradenames." He 
 says: **A name which is applied or attached to a trad- 
 er's goods when they are offered for sale, so as to distin- 
 guish them from similar goods, and to identify them with 
 him, or with his successors as the owners of a particular 
 business, as being made, worked upon, imported, select- 
 ed, certified, or sold by him or them, is a trademark. 
 And if it is within any of the classes enumerated in sec. 
 64 (of the British Patents, Designs and Trademarks 
 Acts), it may be registered as a trademark. But wheth- 
 er or not the name is applied or attached to the goods, 
 so as to conform to the definition just stated, or regis- 
 tered as a trademark, if it is in fact known in the market 
 as the distinctive name of the goods of a particular trad- 
 er, no one else may use it for dealings in other goods of 
 the same class as those in connection with which it has 
 acquired its distinctive significance. * * * The qual- 
 ified right in the tradename— a right to prevent a de- 
 fendant from passing off his goods as those of the plain- 
 tiff by the use of it— exists only with regard to goods of 
 the kind for which the plaintiff uses it, and to which the 
 connection with his business suggested by the use of the 
 name extends. "^^ 
 
 § 4. Earliest recognition of trademarks.— While the 
 reports of the first English trademark case are not har- 
 monious, it is probable that the report of Popham is sub- 
 stantially correct. It is as follows: ''An action upon 
 the case was brought into the common pleas by a cloth- 
 ier that whereas he had gained great reputation for his 
 making of his cloth by reason of which he had great ut- 
 
 19— Kerly on Trademarks, 2nd Ed., London 1901, p. 475.
 
 § 5] PREFATORY. 13 
 
 terance to liis great benefit and profit, and that lie used 
 to set his mark to liis eloth whereby it sliouid be known 
 to be his cloth; and another clothier perceiving it used 
 the same mark to his ill-made cloth on purpose to deceive 
 him, and it was resolved that the action did well lie."-" 
 
 § 5. The evolution of the law of trademarks.— This de- 
 cision, rendered in 1590, was the first legal recognition of 
 trademarks. The growth of that recognition was very 
 gradual, however, for as late as 1742 we find Lord Hard- 
 wicke saying that he ''knew no instance of restraining 
 one trader from making use of the same mark with an- 
 other,"-^ although the learned chancellor takes judicial 
 cognizance of the wide-spread use of trademarks, observ- 
 ing that ''every particular trader had some particular 
 mark or stamp." And a century later Lord Langdale 
 said: "It does not seem to me that a man can acquire 
 l^roperty merely in a name or mark."-- 
 
 § 6. The relative protection given by patents and 
 trademarks.— "Usually the protection given by the pat- 
 ent is far greater, though of less duration in time, than 
 that obtained by the use of a trademark, because if an 
 
 20 — Southern (or Southerne) v. trademark is a property right. 
 
 How, 2 Popham, 144; Cro. Jac. Hall v. Barrows, 4 DeG. J. & S. 
 
 471; 2 Rolle, 28; Cox, 633; Seb. 150; 33 L. J. Ch. 204; 10 Jur. N- 
 
 Dig. 1. S. 55; 9 L. T. N. S. 561; Cox, Man- 
 
 21— Blanchard v. Hill, 2 Atk. ual, Case No. 215. Opinion of 
 
 484; Cox, 633; Seb. Dig. 2. Mr. Westbury, L. C, in Leather Cloth 
 
 Sebastian observes of this de- Co. v. American Leather Cloth 
 
 cision: "The decision seems in a Co., 4 DeG. J. & S. 141; Lord Cran- 
 
 great measure to have been found- worth, in House of Lords, S. C, 
 
 ed upon a dread of setting up a 11 H. L. C. 533; Lord Kingsdown. 
 
 monopoly, the distinction between in House of Lords, S. C, 11 H. L. 
 
 a trademark and a patent not be- C. 544; Messerole v. Tynberg, 4 
 
 ing clearly present to his lord- Abb. Pr. N. S. 410; 36 How. Pr. 
 
 ship's mind." Sebastian, Trade- 14; Cox, 479; Oilman v. Hunne- 
 
 marks (4th ed.), p. 6. well, 122 Mass. 139; Cox, Manual. 
 
 22 — 1842. Perry v. Truefitt, 6 Case No. 541; Fish Bros. Wagon 
 
 Beav. 66; 1 L. T. 0. S. 384; Seb. Co. v. Fish Bros. Mfg. Co., 95 Fed. 
 
 73; Cox, 644,646. It is now clearly Rep. 457, 461, 37 C. C. A. 146. 
 established that the right to a
 
 14 HOPKINS ON TRADEMARKS. [§ 7 
 
 article is patented, nobody but the owner of the patent 
 can without his consent make or sell anything embody- 
 ing the same principles or elements, while a trademark 
 only secures one in the use of the name or emblem 
 adopted by him and applied to the article. "2- 
 
 § 7. Trademarks distinguished from patents and copy- 
 rights.— While trademarks to a degree partake of the na- 
 ture of both patents and copyrights, and the three have 
 many governing legal principles in common, there are 
 wide differences separating each from the others. As 
 stated by Mr. Justice Miller in Trademark Cases, ^^ ''the 
 ordinary trademark has no necessary relation to inven- 
 tion or discovery. The trademark recognized by the 
 common law is generally the growth of a considerable 
 period of use, rather than a sudden invention. It is of- 
 ten the result of accident rather than design, and when 
 under the act of congress it is sought to establish it by 
 registration, neither originality, invention, discovery, 
 science or art is in any way essential to the right con- 
 ferred by that act. If we should endeavor to classify it 
 under the head of writings of authors, the objections are 
 equally strong. In this, as in regard to inventions, orig- 
 inality is required. And while the word ivritings may 
 be liberally construed, as it has been, to include original 
 designs for engravings, prints, etc., it is only such as are 
 original, and are founded in the creative powers of the 
 mind." And in the House of Lords, in 1882, Lord Black- 
 
 22— Allen, J., in Dover Stamp- Rep. 575; Sarrazin v. W. R. Irby 
 
 ing Co. V. Fellows, 163 Mass. 191, Cigar Co., 93 Fed. Rep. 624, 
 
 40 N. E. Rep. 105, 47 Am. St. 626, 35 C. C. A. 496. A 
 
 Rep. 448, 28 L. R. A. 448. trademark "may be, and usually 
 
 23 — 100 U. S. 82, 94. See also is, wholly destitute of originality." 
 
 Taylor v. Carpenter, 2 Sandf. Ch. Mr. Justice Brown in Duer v. Cor- 
 
 603; 11 Paige, 292; Cox, 45; Cox, bin Cabinet Lock Co., 149 U. S. 
 
 Manual, Case No. 84; Levy v. 216, 223. To the same effect, see 
 
 Waitt, 21 U. S. App. 394, 61 Fed. Wm. J. Moxley Co. v. Braun & 
 
 Rep. 1008, 10 C. C. A. 227; Hoyt v. Fitts Co., 93 111. App. 183. 
 Hoyt, 143 Pa. St. 623; 24 Am. St. 
 
 I
 
 8] 
 
 PREFATORY. 
 
 15 
 
 bum said,^"* ''trademarks have sometimes been likened 
 to letters patent and sometimes to copyrights, from both 
 of which they differ in many respects. And I think, to 
 borrow a phrase used by Lord Ellenborough in Waring 
 V. Cox,-^ with reference to a different branch of the law, 
 'much confusion has arisen from similitudinary reason- 
 ing on the subject.' " 
 
 § 8. Function —The function of a trademark is to con- 
 vey to the purchaser knowledge of the origin, source, 
 ownership or manufacture of the article to which it is 
 applied.-" As will be shown hereinafter, the trademark 
 need neither indicate the manufacturer or the place of 
 the article's manufacture, but may indicate either the 
 
 24 — Johnston v. Orr Ewing, 7 
 App. Cas. 219, 228. 
 
 25—1 Camp. 369. 
 
 26 — "The function of a trade- 
 mark is to indicate to the public 
 the origin, manufacture or owner- 
 ship of articles to which it is ap- 
 plied, and thereby secure to its 
 owner all benefit resulting from 
 his identification by the public 
 with the articles bearing it. No 
 person other than the owner of a 
 trademark has a right, without 
 the consent of such owner, to use 
 the same on like articles, because 
 by so doing he would in substance 
 falsely represent to the public that 
 his goods were of the manufac- 
 ture or selection of the owner of 
 the trademark, and thereby would 
 or might deprive the latter of the 
 profit he otherwise might make 
 by the sale of the goods which the 
 purchaser intended to buy. Where 
 a trademark is infringed the es- 
 sence of the wrong consists in the 
 sale of the goods of one manufac- 
 turer or vendor as those of an- 
 other, and it is on this ground that 
 a court of equity protects trade- 
 
 marks. It is not necessary that a 
 trademark should on its face show 
 the origin, manufacture or owner- 
 ship of the articles to which it is 
 applied. It is sufficient that by 
 association with such articles in 
 trade it has acquired with the 
 public an understood reference to 
 such origin, etc." Bradford, J., in 
 Dennison Mfg. Co. v. Thomas Mfg. 
 Co., 94 Fed. Rep. 651, 656. 
 
 "The sign, symbol or mark may 
 be purely fanciful, and convey no 
 information as to the name of the 
 producer. But the essential thing 
 is that it shall be designed and 
 used to indicate the origin of the 
 article and that all articles hav- 
 ing the same mark come from a 
 common source." Lurton, J., in 
 Deering Harvester Co. v. Whitman 
 & Barnes Mfg. Co., 91 Fed. Rep. 
 376, 380. 
 
 "It is not essential to property 
 in a trademark that it should in- 
 dicate any particular person as the 
 maker of the article to which it 
 Is attached." Danforth, J., in God- 
 illot v. Harris. 81 N. Y. 263.
 
 16 HOPKINS ON TRADEMARKS. LS ^ 
 
 natural product of the earth, or the handling or selection 
 of the goods, or some labor that has been performed in 
 connection therewith. It serves solely to guide the pub- 
 lic to the goods it wants to buy, acting as a perpetual 
 means of identification and advertisement of goods of 
 repute. 
 
 § 9. Nature of the right to a trademark.— The right to 
 a trademark is a right of property,-' which the state may, 
 in the exercise of its police power, protect by appropriate 
 penal legislation. This right of property is, in the Unit- 
 ed States, treated as a common-law right, and in no wise 
 dependent upon written law for its inception.^^ 
 
 Lord Cranworth referred to this right as ''a right 
 (s-hich can be said to exist only and can be tested only by 
 its violation."-" While it is true that the right can only 
 be tested after it has been violated, or its violation has 
 been threatened, it is certainly untrue that it exists ''only 
 by its violation," because there is no violation of a right 
 not pre-existing. Judge Folger, speaking for the New 
 York Court of Appeals, critised this dictum, saying, "but 
 its violation is when one adopts or imitates, and applies 
 to an article of his manufacture the name or mark pre- 
 viously used by another as a designation for his produc- 
 tion. * * * It is a matter of property, and the profit- 
 able use of property."^'' 
 
 27— Derringer v. Plate, 29 Cal. Moorman v. Hodge, 2 Sawyer, 78, 
 292; 87 Amer. Dec. 170; R. Cox, 85, Fed. Case No. 9783; L. 
 324; Seb. 249; Bass, Ratcliff & H. Harris Drug Co. v. Stucky, 
 Gre'tton (Ltd.) v. Feigenspan, 9^ 46 Fed. Rep. 624, 626; Bat- 
 Fed. Rep. 206, 212; Boston Diatite tie v. Finlay, 50 Fed. Rep. 106; 
 Co. V, Florence Mfg. Co., 114 Mass. Hennessy v. Braunschweiger, 89 
 69; Lawrence Mfg. Co. v. Tennes- Fed. Rep. 664; Sarrazin v. W. R. 
 see Mfg. Co., 138 U. S. 537, 548; Irby Cigar Co., 93 Fed. Rep. 624, 
 Liggett & Myer Tobacco Co. v. 627, 35 C. C. A. 496. 
 Hynes, 20 Fed. Rep. 883; G. G. 29— Farina v. Silverlock, 6 DeG., 
 White' Co. V. Miller, 50 Fed. Rep. M. & G. 214, 217. 
 277 279. ^'^ — Congress & Empire Spring 
 
 28— Trademark Cases, 100 U. S. Co. v. High Rock Congress Spring 
 
 82; Derringer v. Plate, supra; Co., 45 N. Y. 291.
 
 § 10] PREFATORY. 17 
 
 Much legislation has taken place tending to aid the 
 common-law remedies and afford more effective redress 
 against trademark piracy, but with the solitary excep- 
 tion of California ^^ it has nowhere been held in the Unit- 
 ed States that compliance with a statute is a prerequisite 
 to the acquisition of a trademark. The contrary rule 
 obtains in England; registration being necessary to en- 
 title the owner to sue for infringement."^- A peculiar 
 element of the trademark right is that it must be used 
 as an entirety.^"' The owner of a trademark cannot con- 
 vey to others territorial rights to its use,''* and a part- 
 ner's interest in the trademarks owned by the partner- 
 ship cannot be levied upon by or subjected to the pay- 
 ment of claims of his personal creditors."^ 
 
 §10. The test of exclusiveness.— The trademark right 
 must be exclusive; by this test it stands or falls. As 
 Judge Cochran has said, "what makes a mark affixed by 
 a seller to goods produced or selected by him a technical 
 trademark (i. e., one whose exclusive use by him in 
 marking goods of the same or like character will be pro- 
 tected) is that when it is affixed to goods of that char- 
 acter it amounts to a representation that they are the 
 goods of the person who has adopted it as his trademark. 
 If it does not amount to such a representation, it is not a 
 technical trademark. ' '^" 
 
 31— Whittier v. Dietz, 66 Cal. Wood, Fed. Case No. 9026; 4 Cliff. 
 
 78. The evil effect of this decision 461. 
 
 has since been obviated by the en- 34— Snodgrass v. W'ells, 11 Mo. 
 
 actment of the present section App. 590. Per contra as to the 
 
 3199 of the Political Code of Call- title of a periodical publication 
 
 rornia. which provides that "any (not a technical trademark), see 
 
 person who has first adopted and Estes v. Williams, 21 Fed. Rep. 
 
 used a trademark or name, wheth- 189. 
 
 er within or beyond the limits of 35— Taylor v. Bemis. 4 Biss. 
 
 this state, is its original owner." 406; Cox, Manual. 132; Fed. Case 
 
 32 — The Merchandise Marks No. 13779. 
 
 Acts, 1887-1894 (50 and 51 Vict., 36— Bissell Chilled Plow Works 
 
 c. 28). V. T. M. Bissell Plow Co., 121 Fed. 
 
 33— Manhattan Med. Co. v. Rep. 357, 364.
 
 18 HOPKINS ON TRADEMARKS. [§ H 
 
 § 11. Requisites of a valid trademark.— As seen in our 
 definition, a trademark must 
 
 (a) Be used in lawful commerce; 
 
 (b) Be in some way applied or affixed to a subject of 
 lawful commerce; 
 
 (c) Be distinctive, identifying the character of the 
 article to which it is so affixed. 
 
 As comprehensive and concise a statement of the requi- 
 sites of a valid trademark as can be found in the books 
 is as follows: "The trademark must be used to indicate 
 not the quality, but the origin or ownership of the article 
 to which it is attached. It may be any sign, mark, sym- 
 bol, word or words, which others have not an equal right 
 to employ for the same purpose. "^^ 
 
 These are f undainental conditions which are never var- 
 ied, and to which there can be no exception. There are 
 further conditions which we will examine in detail in a 
 subsequent chapter. 
 
 § 12. Perpetual existence.— The life of a trademark is 
 as long as its continuous use by the owner or his as- 
 signees. It is only terminated by abandonment, which 
 we will deal with later 
 
 "A trademark may increase in value to its owners by 
 use, and the law could not put a time limit on the owner's 
 right to it any more than it could put a limit upon his 
 right to use any other article of property. ' ' ^^ 
 
 The act of 1881 provided (§5) that a certificate of reg- 
 istry shall in the case of articles manufactured in this 
 country remain in force for thirty years from its date, 
 subject to renewal for a like period at any time during 
 the six months prior to the expiration of the term of thir- 
 ty years; so that all protection and benefit of that act 
 will be lost by failure to renew within the period stated. 
 
 37— Earl, Commissioner of Ap- 38— Hoyt v. Hoyt, 143 Pa. 623, 
 peals, in Newman v. Alvord, 51 N. 22 Atl. Rep. 755. 
 Y. 189, 193.
 
 § 13] PREFATORY. 19 
 
 But congress was careful to provide further ( § 11 act of 
 1881) that nothing in the act shall be construed as un- 
 favorably al'l'ecting a claim to a trademark after the term 
 of registration shall have expired. 
 
 By the Act of 1905 (§ 12), the force of the certificate is 
 limited to twenty years' duration with renewal privi- 
 leges, and ^23 provides that nothing in the act "shall 
 prevent, lessen, impeach, or avoid any remedy at law or 
 in equity which any party aggrieved by any wrongful 
 use of any trademark might have had if the provisions of 
 this iVct had not been })assed." 
 
 § 13. Territorial limitation.— Unlike a patent, a trade- 
 mark knows no territorial limitation. The courts of the 
 United States, and those of the several states, 
 are open to the owners of trademarks of what- 
 ever citizenship or nationality who may seek to 
 protect their trademarks against plracy.^^ The 
 act of congress of 1881 provided for the regis- 
 tration of trademarks owned by aliens located in 
 any foreign country or tribe, which, by treaty, conven- 
 tion or law, affords similar privileges to citizens of the 
 United States" (Act of 1881, sec. 1), and substantially 
 the same provision is contained in the Act of 1905, Sec. 1. 
 The acquisition of a valid trademark in any place carries 
 with it the right to use the mark everywhere. ^*^ This is 
 subject to the exception that a foreigner doing business 
 
 39— state v. Gibbs, 56 Mo. 133; J. 423; 2 Jur. N. S. 929; 30 L. T. 
 
 Taylor v. Carpenter (1), 3 Story, 62; Seb. 151; Collins Co. v. Co- 
 
 458; Cox. 14; Seb. 78; Coats v. hen, 3 K. & J. 428; 3 Jur. N; S. 
 
 Holbrook, 2 Sandf. 586; Cox, 20; 929; 29 L. T. 245; 30 L. T. 62; 
 
 Seb. 79; Taylor v. Carpenter (2), 5 W. R. 676; Seb. 152; Collins Co. 
 
 2 Wood. & M. 1; Cox, 32; 9 L. T. v. Reeves, 28 L. J. Ch. 56; 4 Jur. 
 
 514; Seb. 83; Taylor v. Carpen- N. S. 865; 33 L. T. 101; 6 W. R. 
 
 ter (3), 2 Sandf. 603; 11 Paige, 717; Seb. 164; Collins Co. v. 
 
 292; Cox, 45; Seb. 84; Lemoine Walker, 7 W. R. 22; Seb. 171. 
 V. Ganton, 2 E. D. Smith, 343; 40— Except that an alien who 
 
 Cox, 142; Seb. 125; Derringer v abandons his trademark in this 
 
 Plate, 29 Cal. 292; Cox, 324; Seb. country is not re-vested with the 
 
 249; Collins Co. v. Brown, 3 K. & right to use it, by the force of
 
 20 HOPKINS ON TRADEMARKS. [§ 14 
 
 in his own countr}^ under the trademark has no common- 
 law right to that trademark in the United States, as 
 against a domestic firm which had established business 
 under a similar trademark, adopted in good faith, before 
 the alien had sold any goods in this country. ^^ 
 
 In a recent case, an assignment of a trademark limited 
 to certain specified states has been sustained and an in- 
 fringer enjoined as to those states. The doctrine of this 
 section was not invoked, however, as far as the opinion 
 discloses. ^- As to a corporate name, the injunction has 
 been limited in its operation, to exclude a defendant from 
 doing business in the state of New York. '^^ 
 
 In a case involving the use of the word ''Liliputian" 
 in a mail-order business, a Chicago defendant was en- 
 joined at the instance of a New York complainant be- 
 cause of the occui^ancy by each through the mails of a 
 common business territory. ^^ 
 
 § 14. The necessity of user.— There can, finally, be no 
 right in or to a trademark apart from its use. ''The 
 mere sale of a trademark apart from the business in 
 which it has been used confers no right of ownership, be- 
 cause no one can claim the right to sell his goods as 
 goods manfactured by another. To permit this to be 
 done would be a fraud upon the public.^^ To quote from 
 a New York court, "There is no sach thing as a trade- 
 mark 'in gross,' to use that term of analogy. It must 
 be 'appendant' of some particular business in which it 
 is actually used upon, or in regard to specified arti- 
 
 subsequent legislation in his own Preserving Co., 131 Fed. Rep. 359. 
 
 country. Saxlehner v. Eisner & 43 — Employers' Liability Assur. 
 
 Mendelson Co., 91 Fed. Rep. 536, Corp., Ltd., v. Employers' Liabil- 
 
 539. Saxlehner v. Eisner & Men- ity Ins. Co., 16 N. Y. Supp. 397, 
 
 delson Co. (3), 179 U. S. 19, 36. 400. 
 
 41 — Richter v. Anchor Remedy 44 — Ball v. Best, 135 Fed. Rep. 
 
 Co., 52 Fed. Rep. 455; affirmed in 434. 
 
 Richter v. Reynolds, 59 Fed. Rep. 45 — Witthaus v. Braun, 44 Md. 
 
 577, 8 C. C. A. 220. 303; 22 Amer. Rep. 44. 
 
 42 — Griggs, Cooper & Co. v. Erie
 
 §14] 
 
 PREFATORY. 
 
 21 
 
 cles."^^ It follows, therefore, that the owner of a trade- 
 mark can not sell territorial rights in a trademark to dif- 
 ferent persons, so as to enable them to make and sell 
 goods as being made by him."*^ "It goes without saying 
 that a trademark or tradename can only be acquired Ijy 
 adoption accompanied with actual use. "^'^ The invent- 
 or of a system of manufacturing garments, who has never 
 engaged in their actual manufacture and sale, has no 
 trademark right in a mark to be applied to such gar- 
 ments.^^ 
 
 A mere casual use, inteiTupted, or for a brief period, 
 will not suffice to establish a trademark right in the 
 mark;'"'*^ there must be such a user, as to its length and 
 publicity, as will show an intention to adopt the mark as 
 a trademark for a specific article.^ ^ 
 
 46— Weston v. Ketcham (2), 51 
 How. Pr. 455; Seb. 487; Pinto v. 
 Badman, 8 R. P. C. 181; Cartmell^ 
 270; Dixon Crucible Co. v. Gug- 
 genheim, 7 Phila. 408; 2 Brewst. 
 321; 3 Am. L. T. 288; Cox, 559; 
 Seb. 331; Cotton v. Gillard, 44 L. 
 J. Ch. 90; Seb. 447; McAndrew v. 
 Bassett, 4 DeG. J. & S. 380; 33 L. 
 J. Ch. 566; 10 Jur. N. S. 550; 10 
 L. T. N. S. 442; 12 W. R. 777; 4 
 N. R. 123; Seb. 234; Kidd v. 
 Johnston, 100 U. S. 617; Weston 
 V. Ketcham (1), 39 N. Y. 54; 
 Leather Cloth Co. v. American 
 Leather Cloth Co., 4 DeG. J. & S. 
 137; 11 H. L. C. 523. The Fair v 
 Jose Morales & Co., 82 111. App. 
 499. 
 
 47 — Snodgrass v. Wells, 11 Mo. 
 App. 590. But in another case the 
 assignment by the English pub- 
 lisher of "Chatterbox" of the right 
 to publish a "Chatterbox" in the 
 United States was sustained. Estes 
 V. Williams, 21 Fed. Rep. 189. 
 The name, being that of a periodi- 
 
 cal publication, was not a tech- 
 nical trademark. 
 
 48 — Kathreiner's Malz Kaffee 
 Fab. V. Pastor Kneipp Med. Co., 82 
 Fed. Rep. 321, 325, per Jenkins, J. 
 
 49 — Jaeger's Sanitary W. S. Co. 
 V. Le Boutillier, 47 Hun, 521. Thus 
 under the English statutes a regis- 
 trant is not entitled to register a 
 mark for goods in which he does 
 not deal and in which he does not 
 actually intend to deal. John Batt 
 
 6 Co. V. Dunnett, L. R. (1899) A. 
 C. 428. 
 
 50— Menendez v. Holt, 128 U. S. 
 514; Levy v. Waitt (1), 56 Fed. 
 Rep. 1016; Levy v. Waitt (2). 61 
 Fed. Rep. 1008, 10 C. C. A. 227; 
 Brower v. Boulton (1), 53 Fed. 
 Rep. 389; Brower v. Boulton (2), 
 
 7 C. C. A. 567, 58 Fed. Rep. 888; 
 Macmahan Pharmacal Co. v. Den- 
 ver Chemical Mfg. Co., 113 Fed. 
 Rep. 468, 51 C. C. A. 302. Tetlow 
 V. Tappan, 85 Fed. Rep. 774; Heub- 
 lein V. Adams, 125 Fed. Rep. 782. 
 
 51 — Kohler Mfg. Co. v. Beeshore,
 
 22 
 
 HOPKINS ON TRADEMARKS. 
 
 :§i^ 
 
 § 15. Trademarks as subjects of sale, assignment or 
 bequest.— lu the early adjudicatious the assignability of 
 trademarks was not clearly established.^ - 
 
 It can now be said, however, that trademarks are gen- 
 erally assignable during the life-time of the owner of the 
 mark, and capable of transmission at his death. Indeed, 
 this rule is the necessary and indispensable correlative 
 of the rule that trademarks have perpetual existence. 
 But there is the necessary' qualification that with the 
 trademark must go the good-will of the business, the 
 right to select or manufacture the article to which the 
 former owner has been in the habit of affixing the trade- 
 mark in use."^ Any other course would tend to mislead 
 
 59 Fed. Rep. 572, 576, 8 C. C. A. 
 215; Richter v. Reynolds, 59 Fed. 
 Rep. 577, 579; 8 C. C. A. 220. 
 
 52 — See Corwin v. Daly, 7 Bos. 
 222; Cox, 265, where the court 
 says, referring to a name used as 
 a trademark: "The employer of 
 it can neither give any special 
 right to another, nor abandon it 
 to the community so as forever to 
 take away the right of employing 
 it to designate his wares." In an- 
 other case it has been held that 
 one can "so sell his name as to de- 
 prive himself of the right to use 
 it for his own manufacture, and 
 give the right to another." Pro- 
 basco V. Bouyon, 1 Mo. App. 241. 
 In a later case before the same 
 court, however, the court said: 
 "We think the answer to this 
 question depends upon the effect 
 which the use of the name, in 
 each particular instance, is shown 
 to have upon the minds of the pub- 
 lic," and concluded that if the 
 public would be led to believe the 
 assignor was still manufacturing 
 the goods, when they were the 
 manufacture of another, the trans- 
 action would be a fraud upon the 
 
 public and the use of the assigned 
 name would not be protected. 
 Skinner v. Oakes, 10 Mo. App. 45; 
 Cox, Manual, 680. This dictum 
 was quoted with approval in Oakes 
 V. Tonsmierre, 4 Woods, 547; Price 
 & Steuart, 817, 49 Fed. Rep. 447. 
 
 53 — Atlantic Milling Co. v. Rob- 
 inson, 20 Fed. Rep. 217; Massam 
 v. Cattle Food Co., L. R. 14 Ch. D. 
 748; Ex parte Lawrence, 44 L. T. 
 N. S. 98; Seb. 630; Re Wellcome, 
 L. R. 32 Ch. D. 213; Leather 
 Cloth Co. V. American Leather 
 Cloth Co., 4 DeG. J. & S. 137; 33 
 L. J. Ch. 199; Seb. 223; Goodman 
 V. Meriden Brittania Co., 50 Conn. 
 139; "Witthaus v. Braun, 44 Md. 
 303; 22 Am. Rep. 44; Seb. 492; 
 Skinner v. Oakes, 10 Mo. App. 45; 
 Taylor v. Bemis, 4 Biss. 406, Fed. 
 Case 13779; McVeagh v. Valencia 
 Cigar Factory, 32 Off. Gaz. 1124: 
 Price & Steuart, 970; Oakes v. Tons- 
 mierre, 4 Woods, 547, 49 Fed. 
 Rep. 447; Price & Steuart, 817; 
 Baldwin v. Von Micheroux, 25 N. 
 Y. Supp. 857; Morgan v. Rogers, 
 19 Fed. Rep. 596; 12 Off. Gaz. 
 1113; Smith v. Imus, 32 Alb. L. 
 J. 455; Cotton v. Gillard, 44 L. J.
 
 § 15] PREFATORY. '23 
 
 the public. It is irrovided by section 70 of the English 
 Patents, Designs and Trademarks Act of 1883 that "A 
 trademark, when registered, shall be assigned and trans- 
 mitted only in connection with the good-will of the busi- 
 ness concerned in the particular goods or classes of goods 
 for which it has been registered, and shall be detennin- 
 able with the good-will." No corresponding provision 
 existed in the act of congress of 1881. The act of 1905, 
 § 10, provides **that every registered trademark . . . 
 shall be assignable in connection with the good-will of 
 the business in which the mark is used." 
 
 Inasmuch as there can be no title in a trademark apart 
 from the good-will of the business in which it is used, it 
 follows that, in an assignment of the business and good- 
 will of the owner of the mark, the title to the trademark, 
 without being specially mentioned, passes to the as- 
 signee,^"* It is not so clear, however, that the purchaser 
 acquires the right to use the name of the vendor, this 
 
 Ch. 90; Smith v. Fair, 14 Ont. Rep. 303; 22 Amer. Rep. 44; Seb. 492; 
 729; Burton v. Stratton, 12 Fed. Morgan v. Rogers, 19 Fed. Rep. 
 Rep. 696; Price & Steuart, 668; 596; 26 Off. Gaz. 1113; Cox, Man- 
 Pepper V. Labrot, 8 Fed. Rep. 29; ual, 692; Merry v. Hoopes, 111 N. 
 Chadwick v. Covell, 151 Mass. 190, Y. 420; Churton v. Douglas, Johns. 
 23 N. B. Rep. 1068; Cox, Manual, 174; Fulton v. Sellers, 4 Brewst. 
 716; Cooper v. Hood, 26 Beav. 42; Thompson v. Mackinnon, 2 
 293; Churton v. Douglas, Johns. Steph. Dig. 726; Lippincott v. 
 1(4; Shipwright v. Clements, 19 Hubbard, 28 Pitts. L. J. 303; Burk- 
 W. R. 599; Sohier v. Johnson, 111 hardt v. Burkhardt Co., 4 Ohio N. 
 Mass. 238; Gegg v. Bassett, 3 P. 358; Listman Mill Co. v. Wm. 
 Ont. L. Rep. 263; Dant v. Head, Listman Mill Co., 88 Wis. 334; 
 90 Ky. 255. 13 S. W. Rep. 1073; J. Prince Mfg. Co. v. Prince's Metal- 
 G. Mattingly Co. v. Mattingly, 96 lie Paint Co., 39 N. Y. S. R. 488; 
 Ky. 430, 31 S. W. Rep. 985. Menendez v. Holt. 128 U. S. 514; 
 54 — Shipwright v. Clements, 19 Hegeman v. Hegeman, 8 Daly, 1; 
 W. R. 599; Seb. 350; Congress & Sarrazin v. W. R. Irby Cigar Co., 
 Empire Spring Co. v. High Rock 93 Fed. Rep. 624, 35 C. C. A. 496; 
 Congress Spring Co., 57 Barb., 526; Allegretti v. Allegretti Chocolate 
 Cox, 599; 45 N. Y. 291; 10 Abb. Cream Co.. 177 111. 129, 53 N. E. 
 Pr. N. S. 348; 6 Amer. Rep. 82; Rep. 487, affirming s. c. 76 111. App. 
 4 Am. L. T. 168; Cox, 624; Seb. 581; Snyder Mfg. Co. v. Snyder, TA 
 354; Y.'itthaus v. Braun, 44 Md. Ohio St. 86, 43 N. E. Rep. 325.
 
 24 
 
 HOPKINS ON TRADEMARKS. 
 
 [§15 
 
 right being affirmed in some cases^'^ and negatived in 
 otliers.^'^ It would seem to be the law that a territorial 
 right to use a trademark cannot be assigned^'^ though 
 in the case of the name of a periodical publication the 
 contrary rule has been announced.^^ 
 
 The fact of a trademark containing the name or ini- 
 tials of a former owner of a business will not disentitle 
 an assignee of the business from its use, because the 
 proper name is treated as indicative of the business 
 rather than the present owner of the business.^^ But the 
 courts of the United States are inclined to insist that 
 the public be notified of the change of ownership, and 
 
 55 — Banks v. Gibson, 34 Beav. 
 566; Levy v. Walker, L. R. 10 Ch. 
 D. 463; Webster v. Webster, 3 
 Swanst. 490; Clark v. Leach, 32 
 Beav. 14; Bond v. Milbourn, 20 W. 
 R. 197; Tussaud v. Tussaud, 38 
 W. R. 440; Phelan v. Collender, 
 13 N. Y. Sup. Ct. 244; Hoff v. Tar- 
 rant & Co., 71 Fed. Rep. 163; 
 affirmed in Tarrant & Co. v. Hoff, 
 76 Fed. Rep. 959, 22 C. C. A. 644; 
 J. G. Mattingly Co. v. Mattingly, 96 
 Ky. 430. 
 
 56— Scott v. Rowland, 20 W. R. 
 208; Lewis v. Langdon, 7 Sim. 
 421; Turner v. Major, 3 Gift. 442; 
 Dence v. Mason, 41 L. T. N. S. 573; 
 Dickson v. McMaster, 18 Ir. Jur. 
 202; Reeves v. Denicke, 12 Abb. 
 Pr. N. S. 92; Howe v. Searing, 10 
 Abb. Pr. 264; Cox, 244; Petersen 
 V. Humphrey, 4 Abb. Pr. 394; Cox, 
 212; Thynne v. Shove, 89 L. T. 
 Jour. 84; Mayer v. Flanagan, 12 
 Tex. Civ. App. 405; Sherwood v. 
 Andrews. 5 Am. L. Reg. N. S. 588; 
 Seb. 263. 
 
 57 — Snodgrass v. Wells, 11 Mo. 
 App. 590. 
 
 58— Estes v. Williams, 21 Fed. 
 Rep. 189, 
 
 59 — Pepper v. Labrot, 8 Fed. 
 Rep. 29; LePage Co. v. Russia 
 Cement Co., 2 C. C. A. 555, 51 Fed. 
 Rep. 941; Jennings v. Johnson, 37 
 Fed. Rep. 364; Frazer v. Frazer 
 Lubricator Co., 121 111. 147, 13 N 
 E. Rep. 639; McLean v. Fleming, 
 96 U. S. 245; Symonds v. Jones 
 82 Me. 302. 8 L. R. A. 570; Fil 
 kins v. Blackman, 13 Blatchf. 440 
 Fed. Case No. 4786; Weed v. Peter 
 son, 12 Abb. Pr. N. S. 178; Young 
 V. Jones, 3 Hughes, 274, Fed. 
 Case No. 18,159; Fulton v. 
 Sellers, 4 Brewst. 42; Weston v. 
 Ketcham (1), 39 N. Y. 54; Clark 
 V. Ins. Co., 7 Mo. App. 71; Frank 
 V. Sleeper, 150 Mass. 583, 23 N. E. 
 Rep. 213; Hoxie v. Chaney, 143 
 Mass. 592; Russia Cement Co. v. 
 LePage, 147 Mass. 206, 17 N. E. 
 Rep. 304; Brown Chemical Co. v. 
 Meyer, 139 U. S. 540; Bulte v. 
 
 Ingleheart Bros., — C. C. A. ; 
 
 137 Fed. Rep. 492, 499. The fact 
 that a trademark includes the 
 name and portrait of the first own- 
 er does not render it unassignable 
 to another. Richmond Nervine Co. 
 V. Richmond, 159 U. S. 293, 302.
 
 § 15] PREFATORY. 25 
 
 this is now the safer rule,*'''* particularly where the trade- 
 mark is a mark ol" special qualities, due to su- 
 perior material, processes, care and skill exer- 
 cised by the originator thereof, or the mark 
 bearing his name "would, or at least might, 
 imply that his personal work or supervision was em- 
 ployed in the manufacture; and in such cases it would be 
 a fraud upon the public if the trademark should be used 
 by other persons, and for this reason such a trademark 
 would be held to be unassignable. . . . But, on the 
 other hand, the usages of trade may be such that no such 
 inference would naturally be drawn from the use of a 
 trademark which contains a person's name, and that all 
 that purchasers would reasonably understand is that 
 goods bearing the trademark are of a certain standard, 
 kind or quality, or are made in a certain manner, or after 
 a certain formula, by persons who are carrying on the 
 same business that formerly was carried on by the per- 
 son whose name is on the trademark. "*^^ In the sale of a 
 business, then, the general rule is that the trademarks 
 connected with the business will pass to the purchaser 
 without being specified in the bill of sale,*^- and in case of 
 a general assignment or bankruptcy the trademarks also 
 pass, to inure to the benefit of the creditors.*^- The ex- 
 
 60— Manhattan Med. Co. v. Wood, W. R. 599; Wilmer v. Thomas, 74 
 
 108 U. S. 218; Horton Mfg. Co. v. Md. 485; 13 L. R. A. 380; Solis 
 
 Horton Mfg. Co., 18 Fed. Rep. 816; Cigar Co. v. Pozo, 16 Colo. 388; 
 
 Alaska Packers' Ass'n v. Alaska 25 Am. St. Rep. 279; Laughman's 
 
 Imp. Co., 60 Fed. Rep. 103; Sie- Appeal, 128 Pa. 1, 18 Atl. Rep. 415, 
 
 gert V. Abbott (1), 61 Md. 276; 5 L. R. A. 599; Morgan v. Rogers, 
 
 Sherwood v. Andrews, 5 Am. L. 19 Fed. Rep. 596. Trademarks 
 
 Reg. N. S. 588; Seb. 263; Car- "pass under a sale of the 'asseto 
 
 michael v. Latimer, 11 R. I. 395; and goodwill' of the business, 
 
 Seb. 521; Pillsbury v. Pillsbury- whether specially mentioned or 
 
 Washburn Flour Mills Co., 64 Fed. not." Holland, J., in Kronthal 
 
 Rep. 841; 12 C. C. A. 432; People Waters v. Becker, 137 Fed. Rep. 
 
 V. Molins, 10 N. Y. Supp. 130. 649, 652. 
 
 61 — Charles Allen, J., in Hoxie 63 — Hegeman v. Hegeman. S 
 
 V. Chaney, 143 Mass. 592, 10 N. E. Daly, 1; Rogers v. Taintor, 97 
 
 Rep. 713. Mass. 291; Warren v. Warren 
 
 62— Shipwright v. Clements, 19 Thread Co.. 134 Mass. 247; Hud-
 
 26 HOPKINS ON TRADEMARKS. [§ 15 
 
 ception to each of these rules arises where the trademark 
 depends upon the secret processes or individual skill of 
 its owner for its value.*^^ 
 
 Trademarks may, in connection with the good-will of 
 the business wherewith they are connected, be trans- 
 mitted by bequest.*^^ This naturally leads to the result 
 that several persons may by bequest (as they may upon 
 dissolution of copartnership) become possessed of the 
 right to use the same trademark. As where a decedent, 
 a watchmaker using ''Dent, London" as a mark on 
 watches which he manufactured at three several shops in 
 London, bequeathed the business of two of these shops 
 to one person and the third shop to another. It appears 
 to have been held here that each legatee had a several 
 right to the use of the trademark.^^ The rights of the 
 partners in the use of the firm trademarks upon dissolu- 
 tion have been thus defined by Judge Hughes: 
 "Rights in trademark are analagous to rights in 
 the good-will of a partnership. In the absence of ex- 
 press stipulation at the time of dissolution, each partner 
 may go on and use the trademark of the firm. ' '"^ It is 
 
 son V. Osborne, 39 L. J. Ch. 79 ; ests in patents, patent rights, copy- 
 Cotton V. Gillard, 44 L. J. Ch. 90; rights, and trademarks." 
 Ex parte Foss, 2 DeG. & J. 230: 64— Re Swezey, 62 How. Pr. 
 Bury V. Bedford, 4 DeG. J. & S. 215. 
 
 352; Ex parte Young, Seb. 537; 65— McLean v. Fleming, 96 U. S. 
 
 Longman v. Tripp, 2 Bos. & P. N. 245; Huwer v. Dannenhoffer, 82 
 
 R. 67; Hammond v. Brunker, 9 R. N. Y. 499, 502. 
 
 P. C. 301; Cartmell, 142; Lippiu- 66— Dent v. Turpin, 2 J. & H. 
 
 cott V. Hubbard, 28 Pitts. L. J. 139; 30 L. J. Ch 495; 7 Jur. N. 
 
 303; Burkhardt v. Buckhardt Co., S. 673; 4 L. T. N. S. 673; 9 W. R. 
 
 4 Ohio N. P. 358; Batchellor v. 548. Mr. Cox observes, "This case 
 
 Ttiomson, 86 Fed. Rep., 630; Sar- is to be taken as of an exceptional 
 
 razin v. W. R. Irby Cigar Co., 35 character; it is not in accord with 
 
 C. C. A. 496, 93 Fed. Rep. 624, 626. settled principles." Cox, Manual, 
 
 The Bankruptcy Act of 1898, 196. 
 
 § 70a, provides that the trus- 67— Young v. Jones, Fed. Case 
 
 tee in bankruptcy shall be No. 18,159, 3 Hughes, 274; Price & 
 
 vested by operation of law Steuart, 150. And to the same 
 
 with the title of the bank- effect, see Caswell v. Hazard, 121 
 
 rupt, as of the date he was ad- N. Y. 484, 24 N. E. Rep. 707; Haz- 
 
 judged a bankrupt, to all "inter- ard v. Caswell (2), 93 N. Y. 259-
 
 § 15] PREFATORY. 27 
 
 clear, however, that where a mark is a common design 
 for the purpose of a connnon adventure used by several 
 independent dealers or manufacturers in a joint enter- 
 prise, a mark belonging to neither individually, but rep- 
 resenting the enterprise of all concerned, for the pur- 
 poses of their joint adventure, the trademark can be used 
 only so long as all the parties remain interested in the 
 enterprise; when it terminates, the function and life of 
 the trademark also tenninate."^ If the business and 
 good-will of a partnership are sold upon dissolution the 
 trademark goes with the other assets.'''' Another ques- 
 tion is presented where one partner retires from the firm. 
 It the retiring partner re-engages in business and con- 
 tinues to use the trademark, it has been held that that 
 fact, even if the mark is applied by him to a spurious 
 article, is evidence of his intention to retain his interest 
 
 262; Huwer v. Dannenhoffer, 82 use of the trademark, and perhaps 
 
 N. Y. 499, 502; Banks v. Gibson, 34 each of them will be entitled to 
 
 Beav. 566; 34 L. J. Ch. 591; 6 N. such exclusive use as to all other 
 
 R. 373; 13 W. R. 1012; 11 Jur. N. persons except their associates in 
 
 S. 680; Seb. 248; Condy v. Mil- ownersiiip." New York Cement 
 
 chell, 37 L. T. N. S. 268; 37 L. T. Co. v. Coplay Cement Co., 45 Fed. 
 
 N. S. 766; 26 W. R. 269; Seb. Rep. 212. 
 
 561; Taylor v. Bothin, Fed. Case 68— Re Jones 53 L. T. 1, Cart- 
 No. 13,780, 5 Sawy. 584; Wright mell, 189; Robinson v. Finlay, and 
 V. Simpson, 15 Off. Gaz. 968; Price Ward v. Robinson, L. R. 9 Ch. D. 
 & Steuart, 165. In this connection 487; 39 L. T. 398; 27 W. R. 294; 
 Mr. Justice Bradley said: "In Cartmell, 295. These cases arose 
 holding that it is necessary to the between merchants in Manchester 
 validity of a trademark that the and corresponding houses in Man- 
 claimant of it must be entitled to ilia and Rangoon. The trademarks 
 an exclusive right to it, or prop- were composite marks, containing 
 erty in it, we do not mean to say crests, names of the individuals 
 that it may not belong to more written in Chinese characters, 
 than one person, to be enjoyed coats of arms, and other personal 
 jointly or severally. Copartners, ijidicia of the parties interested, 
 upon a dissolution of partnership, 69 — Armistead v. Blackwell, 1 
 may stipulate that each of them Off. Gaz. 603; Seb. 399; Rogers v. 
 may use the trademarks of the Taintor, 97 Mass. 291; Seb. 283; 
 firm, and there may be many other Bradbury v. Dickens, 27 Beav. 53; 
 cases of joint and several owner- 28 L. J. Ch. 667; 33 L. T. 54; Seb. 
 ship; but such co-owners will to- 173; Banks v. Gibson, 34 Beav. 
 gether be entitled to the exclusive 566; 11 Jur. N. S. 680, 34 L. J.
 
 28 HOPKINS ON TRADEMARKS. [§ 15 
 
 in the trademark^" If upon dissolution one partner 
 takes the whole business by agreement, the valuation of 
 the retiring partner's interest must include his interest 
 in the trademarks of the partnership, which pass with 
 the good-will.'^ 
 
 Trademarks upon the death of their owner pass with 
 his other jDersonalty to his personal representatives.'^- 
 There should, of course, be a conveyance of the dece- 
 dent's title by administration; and where, as in H oven- 
 den V. Lloyd, there is no administration, and a relation 
 simply continues business and uses the trademark, he 
 probably acquires no title to the trademark thereby. 
 At all events, in that case, where the deceased's son so 
 used the trademark and subsequently sold his business 
 with its good-will to a third party, it was held that the 
 son had acquired no title capable of being transferred to 
 such third party J^ The supreme court of Pennsylvania, 
 however, has distinctly held that where a man's sons 
 continued to use his trademark after his death (there 
 having been no evidence of administration upon his 
 estate) and subsequently separated, each continuing in 
 business and using the trademark, they were entitled to 
 an injunction against a stranger imitating that trade- 
 mark, upon a bill in equity in which they joined as com- 
 plainants. The subject is not as fully discussed by the 
 court as it should have been. The language of Lord 
 Cranworth in Leather Cloth Co. v. American Leather 
 Cloth Co.'^^ is quoted in the opinion, as follows: ''Diffi- 
 culties, however, may arise where the trademark con- 
 ch. 591; 13 W. R. 1012; 6 N. R. 72— Croft v. Day, 7 Beav. 84; Re 
 273. Farina, 44 L. T. N. S. 99; Giblett 
 
 70— Wright v. Simpson, 15 Off. v. Read, 9 Mod. 459. 
 Gaz. 968; Price & Steuart, 165. 73— Hovenden v. Lloyd, 18 W. R. 
 
 71— Banks v. Gibson, 34 Beav. 1132; Seb. 337. There was sub- 
 566; 11 Jur. N. S. 680; 34 L. J. stantially the same state of facts 
 Ch. 591; 13 W. R. 1012; 6 N. R. and the same holding in Singleton 
 373; Seb. 248; Gage v. Canada Pub. v. Bolton, 3 Doug. 293; Cox, 634; 
 Co., 11 Can, S. C. R. 306; 6 Ont. Seb. 4. 
 Rep. 68; 11 Ont. App. 402. 74—11 H. L. C. 523.
 
 § 15] PREFATORY. 29 
 
 sists merely of the name of the manufacturer. 'When he 
 dies, those who succeed him (grandchildren or man-ied 
 daughters, for instance), though they may not hear the 
 same name, yet ordinarily continue to use the original 
 name as a trademark, and they would be protected 
 against any infringement of the exclusive right to that 
 name. They would be so protected, because according to 
 the usage of trade they would be understood as meaning 
 no more by the use of their grandfather's or father's 
 name than that they were carrj'ing on the manufacture 
 formerly carried on by him. ' ' In the course of its opin- 
 ion the Pennsylvania court observes: "It was urged, 
 however, that conceding this sjnmbol to have been a valid 
 trademark in the hands of Jesse Darlington (gi'andfather 
 of complainants), or even of Jared (his son), that upon 
 the death of the latter it ceased to be the property of any 
 one, and that its use by several members of the family of 
 the latter destroyed its distinctive features and left it 
 open to the public to appropriate it. We cannot assent 
 to this proposition.""^ It might be suggested that in 
 cases of this character (i. e., where no administration is 
 had upon the estate of a deceased owner of a trademark) 
 its use by relatives in a similar business is practically an 
 adoption dc novo of the mark, left open to the world for 
 appropriation b}^ its owner's death. 
 Where the owner of a trademark takes partners into 
 
 75 — Paxon, J., in Pratt's Appeal, the business themselves or by sell- 
 117 Pa. St. 401, 412. "The reason ing to one who will, its chief ele- 
 why a trademark may pass 'with- ment as an asset is wanting. But 
 out administration,' as suggested it seems, also, that cases may arise 
 by Paxon, J., in Pratt's Appeal, 117 in which the trademark of a de- 
 Pa. St. 401, seems to be that a ceased testator or intestate is of 
 trademark can have no value ex- value to creditors, or a subject of 
 cept in connection with the busi- contention among heirs, when ad- 
 ness to which it attaches; and as ministration may become neces- 
 creditors are not usually in condi- sary." Woerner, Administration, 
 tion to realize the value of the 635, note 8. 
 trademark, either by carrying on
 
 30 HOPKINS ON TRADEMARKS. [§15 
 
 the business in which it is employed, the title to the 
 trademark ordinarily is merged into the partnership 
 assetsJ^ The supreme court of the United States has 
 apparently held to the contrary,'^ but the facts were that 
 the owner of the mark owned the premises in which the 
 business was conducted, and took two of his clerks into 
 partnership. He did not convey the realty to the firm, 
 and upon dissolution there was correspondence between 
 him and the withdrawing partners which, in the lan- 
 guage of Mr. Justice Field, "discloses beyond question 
 their knowledge of the transfer and recognition of his 
 power to make it;" refeiTing to his subsequent sale of 
 his business and his trademark to another. It would 
 seem from this decision, then, that the partner who 
 originally owns the mark may by agreement permit the 
 use of the trademark by the firm during its existence, 
 reserving the title to the trademark to himself in the 
 event of dissolution. 
 
 In a recent case it has been held that "When a trade- 
 mark or tradename is owned by one who enters into a 
 partnership with another for the manufacture of the 
 article designated, the title of the trademark does not 
 pass to the partnership except by express agreement. "^^ 
 A like ruling has been made as to the trademark of one 
 of the incorporators of a corporation."^^ In each case the 
 title of the mark is a question of fact, and title to per- 
 sonalty usually follows possession. Use by a partner- 
 ship is 2^ri7na facie evidence of ownership by the partner- 
 ship. 
 
 The federal supreme court has held that when a part- 
 
 76_Weston v. Ketcham (2), 51 264, 70 N. E. Rep. 64. 
 
 How. Pr. 455; Filkins v. Black- 77— Kidd v. Johnson, 100 U. S. 
 
 man, 13 Blatchf. 440, 446, Fed. 617, 619. 
 
 Case No. 4,786; Sohier v. John- 78— Kirkpatrick, J., in Greacen 
 
 son, 111 Mass. 238, 242; Bury v. Bell, 115 Fed. Rep. 553, 554. 
 
 V. Bedford, 4 DeG. J. & S. 352-371; 79— Cutter v. Gudebrod Bros. Co. 
 
 Condy v. Mitchell, 37 L. T. N. S. (2), 61 N. Y. Supp. 225. 
 268; Moore v. Rawson, 185 Mass.
 
 § 15] PREFATORY. 81 
 
 uer retires from a firm, assenting to or acquiescing in 
 the retention by tlie otlier partners of the old place of 
 business and the future conduct of the business by them 
 under the old name, the good-will (including the title to 
 the firm's trademarks) remains with the latter as a mat- 
 ter of course,^® 
 
 It is important to note, in considering the assignabil- 
 ity of trademarks, the doctrine first announced by Judge 
 Shipman, that **Tlie right to use a trademark cannot be 
 so enjoyed by an assignee that he shall have the right to 
 affix the mark to goods differing in character or species 
 from the article to which it was originally attached. * '^^ 
 And where the trademark involved the use of the as- 
 signor's name, it was said: ** Where an individual parts 
 with a right to the use of his own name in any given 
 connection, the courts should not extend the contract by 
 which he does so beyond its necessary scope. It certainly 
 will not be held that a man has tied himself up so as to 
 prevent the use of his own name any further than the 
 clear terms of the agreement show his intention to do 
 
 S0."«" 
 
 One who has assigned either his trademark^^ or trade- 
 name ^^ will be enjoined from again using the mark or 
 name himself; if he makes such an assignment to a cor- 
 poration with a reversion to him if the corporation 
 ceases to exist, he cannot make a valid assignment of 
 the mark to another during the life of the corporation.^^ 
 
 The assignee of a trademark does not, merely by vir- 
 
 80— Menende^ v. Holt, 128 U. S. Medicine Co. v. Thedford (2), 58 
 
 514. 522. Fed. Rep. 347, 349. 
 
 81— Filkins v. Blackman, 13 83— Bury v. Bedford, 4 DeG. J. 
 
 Blatchf. 440, 444, Fed. Case & S. 352; Burkhardt v. Burkhardt 
 
 No. 4,786. This rule is again Co., 4 Ohio N. P. 358. 
 
 laid down in Chattanooga Med- 84 — Churton v. Douglas, John- 
 
 icine Co. v. Thedford (1), 49 son (Eng.), 174. 
 
 Fed. Rep. 949, 952; Chattanooga 85— Petrolia Mfg. Co. v. Bell & 
 
 Medicine Co. v. Thedford (2), 58 Bogart Soap Co., 97 Fed. Rep. 781, 
 
 Fed. Rep. 347. 784. 
 
 82 — Newman, J., in Chattanooga
 
 32 HOPKINS ON TRADEMARKS. [ § 15 
 
 tue of the assignment, obtain a riglit to enjoin infringers 
 of tlie mark. He must show that he has actually applied 
 it, commercially, to goods of the class for which it is 
 claimed as a trademark.^" 
 
 AVhile, as we have seen, a trademark is assignable 
 only in connection with the good-will of the business in 
 which it is used, it does not follow that both must be 
 conveyed by the same instrument or at the same time; 
 and under the English Patents, Trademarks and Copy- 
 right Act of 1883 it has been held that the registration 
 of an assignment of a trademark need not be contem- 
 poraneous with the assignment of the goodwill.^^ It is 
 possible that the originator of a manufacturing business 
 and the person who purchases that business may each 
 thereafter have a right to the limited use of the trade- 
 name and trademark used in connection with that busi- 
 ness.^^ Where such a state of facts arises, either the 
 vendor or purchaser can assign his right to the use of the 
 tradename and trademark, and either will be enjoined 
 upon the application of the other from using the words 
 "only genuine" in connection with the name or mark.^^ 
 
 In a case where a trademark was used by a manufac- 
 turer in England and also by a firm in the United States 
 in which he was a partner, the use of the trademark 
 having begun in both places about the same time, and it 
 having become a distinctive mark, identifying the article 
 manufactured in the United States, the English manufac- 
 turer retired from the American house. Upon his subse- 
 quently attempting to use it in a separate business of the 
 same kind in this country, it was held that his successors 
 
 86 — Walton v. Crowley, Fed. Belle Wagon Works, 82 Wis. 546; 
 
 Case No. 17,133, 3 Blatchf. 440, 448; Fish Bros Wagon Co. v. Fish Bros. 
 
 Filkins v. Blackman, 13 Blatchf. Mfg. Co., 87 Fed. Rep. 201; af- 
 
 440, 445, Fed. Case No. 4786. firmed, 95 Fed. Rep. 457, 37 C. C. 
 
 87_Re Wellcome, L. R. 32 Ch. A. 146. 
 
 D. 213; 3 R. P. C. 76; 55 L. J. Ch. 89— Fish Bros. Wagon Co. v. 
 
 542; 54 L. T. 493; 34 W. R. 453; Fish Bros. Mfg. Co., 87 Fed. Rep. 
 
 Cartmell, 342. 203. 
 
 88 — Fish Bros. Wagon Co. v. La
 
 §35] PREFATORY. 33 
 
 in the old fimi had, upon his retirement, succeeded to the 
 exclusive right to use the trademark, as part of the 
 business, and he was enjoined from using the mark in 
 his new establishment in the United States.'^*^ This case 
 is but a practical application of the doctrines we have 
 just considered, to an unusual state of facts. 
 
 Whenever the alien owner of a trademark has aban- 
 doned its use in the United States by neglecting to assert 
 his rights as against infringers in this country-, the pub- 
 lic has a right to use that mark, of which it will not be 
 divested by the operation of a law subsequently enacted 
 by the country of which the former owner is a citizen.^^ 
 A trademark applied to mineral paint produced from a 
 deposit on a particular piece of land will pass to a pur- 
 chaser of tlie land as an incident to the realty,'*- as will 
 a trademark applied to the wafer of a particular 
 spring,**^ or the right to use words designating a partic- 
 ular building rather than the business conducted there- 
 in,"^ or the right to use a mark which has come to desig- 
 nate the product of a mill or factory rather than of the 
 proprietor.-"^ 
 
 In a case where the plaintiff had assigned the right to 
 use his trademark to the defendant for a terai of years, 
 for a share of the profits of defendant's business, and 
 during the term re-engaged in the use of the mark, in an 
 action by the plaintiff upon the contract it was hold 
 that the plaintiff could recover the profits due him under 
 the contract, and the defendant was allowed damages 
 for the breach of the contract. The validity of the 
 assignment appears not to have been questioned.^^ 
 
 90— Batchelor v. Thompson, 86 93— Hill v. Lockwood, 32 Fed; 
 
 Fed. Rep. 630. Rep. 389. 
 
 91 — Saxlehner v. Eisner & Men- 94 — Armstrong v. Kleinhaus, 82 
 
 delson Co. (2), 91 Fed. Rep. 536; Ky. 303. 
 
 Saxlehner v. Eisner & Mendelson 95 — Atlantic Milling Co. v. Rob- 
 Co. (3). 179 U. S. 19, 36. inson, 20 Fed. Rep. 217. 
 
 92— Prince Mfg. Co. v. Prince's 96— Coe v. Bradley, 9 Off. Gaz. 
 
 Metallic Paint Co. 15 N. Y. Supp. 541, Fed. Case No. 2,941. 
 249; Cox, Manual, 721. 
 3
 
 34 HOPKINS ON TRADEMARKS. [§16 
 
 There is an exception to the general inile that a trade- 
 mark cannot be assigned save in connection with a busi- 
 ness; where the mark is associated with the product of 
 a secret process, the mark necessarily goes with an as- 
 signment of the process.'-*^ Thus the Court of Appeals 
 of New York, speaking through O'Brien, J., has said, 
 ** There are doubtless some trademarks that consist of 
 words that identify an article produced by some secret 
 23rocess and without the use of which the article could 
 not be described. In other words the name used may 
 be inherent in the article itself and is not used as in this 
 case to distinguish one cigar from another. The cele- 
 brated cordial, which is in use the world over, known 
 as 'Chartreuse' is a sample of a trademark, the bare 
 assignment of which might confer upon the assignee the 
 right to manufacture and sell that article. '"^^ 
 
 § 16. Assignability of distillery brands and the like. 
 —Trademarks used at a particular producing establish- 
 ment uj^on the articles produced at the establishment 
 may be lawfully assigned and transferred with the estab- 
 lishment. Of such a mark it has been said that ''its sub- 
 sequent use by the person to whom the establishment is 
 transferred is considered as only indicating that the 
 goods to which it is affixed are manufactured at the same 
 place and are of the same character as those to which the 
 mark was attached by its original designer. ' '^ This rule 
 has been applied to brands consisting in whole or in part 
 of proper names. Thus, in the leading case, the brand 
 was "S. N. Pike's Magnolia Whiskey, "^ and in another 
 case the brands were "J. G. Mattingly & Sons, Standard 
 Bourbon" and "J. G. Mattingly & Sons, Pure Eye."^ 
 
 97— Tuttle V. Blow, 176 Mo. 158, dies Trading Co., 180 N. Y. 445. 
 
 173; Falk V. American West Indies 1 — Mr. Justice Field in Kidd v. 
 
 Trading Co., 180 N. Y. 445; Bald- Johnson, 100 U. S. 617. 
 
 win V. VonMicheroux, 25 N. Y. 2— Kidd v. Johnson, 100 U. S. 
 
 Supp. 857, 859. 617. 
 
 98 — Falk V. American West In- 3 — J. G. Mattingly Co, v. Mat-
 
 § 17] PREFATORY. 35 
 
 § 17. Unfair competition.— In 1877, the American 
 writer, Mr. Charles E. Coddington, in his excellent digest 
 of trademark cases, remarked that **The interference 
 of courts of equity, instead of being founded upon the 
 theory of protection to the owner of trademarks, is now 
 supported mainly to prevent frauds upon the public* If 
 the use of any words, numerals or symbols is adopted 
 for the purpose of defrauding the public, the courts will 
 interfere to protect the public from such fraudulent in- 
 tent, even though the person asking the intervention of 
 the court may not have the exclusive right to the use of 
 these words, numerals or symbols."^ He added that this 
 rule was fully supported by four cases, two Englisli and 
 two American, which he cited." Since that time, the 
 recognition of the doctrine so expressed has grown 
 steadily and certainly, so that it now demands treatment 
 as a specific branch of the law, separate, apart from, but 
 including the narrower and strictly technical law of 
 trademarks.'^ ''The tendency of the courts at the pres- 
 ent time seems to be to restrict the scope of the law 
 applicable to technical trademarks, and to extend its 
 scope in cases of unfair competition."^ 
 
 tingly, 17 Ky. L. Rep. 1, 27 S. W. L. J. Ch. 130; 23 L. T. N. S. 443; 
 
 Rep. 985; J. G. Mattingly Co. v. 18 W. R. 942; L. R. 5 H. L. 508; 42 
 
 Mattingly, 96 Ky. 430, 31 S. W. L. J. Ch. 130; 27 L. T. N. S. 393; 
 
 Rep. 279. Seb. 329. 
 
 4 — The writer erred in ascribing 1872. Newman v. Alvord, 49 
 
 this as the only reason. The pre- Barb. 588; 35 How. Pr. 108; Cox, 
 
 vention fraud upon the person 404; 51 N. Y. 189; 10 Am. Rep. 
 
 whose goods are pirated is equally 588; Seb. 282. 
 
 important and cogent. Humphrey's 1877. Kinney v. Basch, Seb. 542. 
 
 Specific Med. Co. v. Wenz, 14 Fed. 7 — "The law of unfair competi- 
 
 Rep. 250; Skinner v. Oakes, 10 tion is well settled. It is only the 
 
 Mo. App. 45. application of that law to individ- 
 
 5 — Coddington, Digest, sec. 36. ual cases which requires discus- 
 
 6 — 1869. Lee v. Haley, 21 L. T. sion." Lacombe, J., in Walter 
 
 N. S. 546; 18 W. R. 181; L. R. 5 Baker & Co. v. Sanders, 80 Fed. 
 
 Ch. 155; 39 L. J. Ch. 284; 22 L. Rep. 889, 891, 26 C. C. A. 220. 
 
 T. N. S. 251; 18 W. R. 242; Seb. 8— Baker. J., in Church & 
 
 325. Dwight Co. v. Russ, 99 Fed. Rep. 
 
 1872. Wotherspoon v. Curie, 22 276-278. 
 L. T. N. S. 260; 18 W. R. 562; 42
 
 36 HOPKINS ON TRADEMARKS. [§ 18 
 
 § 18. Historical.— In 1742, in Blanchard v. EUl, a de- 
 cision of no authority and of no particular use except to 
 illusti*ate the slow growth of the law of trademarks, Lord 
 Hardwicke observed, referring to Southern v. Hoiv:^ 
 "It was not the single act of making use of the mark 
 that was sufficient to maintain the action, but doing it 
 with a fraudulent design, to put oif bad cloths by this 
 means, or to draw away business from the other 
 clothier. "^^ The chancellor so crudely expressed (but 
 disapprovingly) the first reported judicial reference to 
 the law of unfair competition. In 1896, Lord Chancellor 
 Halsbuiy, addressing the House of Lords, said: ''For 
 myself, I believe the principle of the law may be very 
 plainly stated, and that is, that nobody has any right to 
 represent his goods as the goods of somebody else."^^ 
 This sentence is a terse statement of the fundamental 
 maxim of unfair competition. The English courts have 
 long recognized the rule, and it may be found repeated in 
 various phraseology by all the English courts within 
 whose jurisdiction trademark and analogous cases have 
 come. 
 
 It is more difficult to trace the growth of this doctrine 
 in the American decisions. Chancellor Sandford in 1825, 
 in an action concerning the right to the name of a peri- 
 odical, obser\'-ed, ''The injury for which redress is given 
 . . . results from the imposture practiced upon the 
 customers of an existing establishment, or upon the pub- 
 lic, "^^ so recognizing the rule which Mr. Coddington 
 failed to recognize. 
 
 Twelve years later, in Massachusetts, it was said that 
 "Imposition, falsehood and fraud, on the part of the de- 
 
 9 — Southern v. How, Popham. 11 — Reddaway v. Banham, L. R. 
 
 144; Cro. Jac. 471; 2 Rolle, 28; (1896) Appeal Cases, 199-204. 
 
 gel5_ 1. 12 — Snowden v. Noah, Hopkins' 
 
 10— Blanchard v. Hill, 2 Atk. Ch. R. 347; Cox, 1; Seb. 41. 
 484; Seb. 2.
 
 § 18] PREFATORY. 37 
 
 fendant, in passing off his own medicines as those of the 
 plaintiff, would be a ground of action. "^^ 
 
 In 1840 Chancellor Walworth was presented with an 
 application for an injunction to restrain the use of the 
 words ''New Era" as the name of a newspaper, the com- 
 plainant being the proprietor of a rival periodical de- 
 nominated ** Democratic Republican New Era." He de- 
 nied the application, and in the course of his opinion 
 said: *'Tlie allegation in the complainant's bill of com- 
 plaint is that the defendant has assumed the name of 
 the complainant's newspaper for the fraudulent purpose 
 of imposing upon the public, and supplanting him in the 
 good-will of his established paper, by simulating the 
 name and dress thereof; with the intent to cause it to be 
 understood, and believed by the community, that the 
 defendant's newspaper was the same as the complain- 
 ant's, and thereby to injure the circulation of the latter. 
 If this were in fact so, I should have no difficulty in mak- 
 ing this order absolute. For although the business of 
 publishing newspapers ought, in a free country, to be 
 always open to the most unlimited competition, fraud 
 and deception certainly are not essential to the most 
 perfect freedom of the press. ... As the names of 
 party newspapers, in these days, have no necessarj^ con- 
 nection with the principles which they advocate, and are 
 manufactured as readily as the new names if not the new 
 principles of political parties, there could be very little 
 excuse for the editor of a newspaper who should adopt 
 the precise name and dress of an old established paper, 
 which would be likely to interfere with the good-will of 
 the latter by actually deceiving its patrons. "^^ 
 
 Not until 1888 did the United States supreme court 
 give distinct recognition to the law of unfair competi- 
 
 13 — Thomson v. Winchester. 19 14 — Bell v. Locke, 8 Paige, 75; 
 Pick. 214; Seb. 59. Cox, 11; Seb. 65.
 
 38 HOPKINS ON TRADEMARKS. [§18 
 
 tion,^^ and three years later Mr. Chief Justice Fuller an- 
 nounced the doctrine clearly and unequivocally, in these 
 terms: ''The jurisdiction to restrain the use of a trade- 
 mark rests upon the grounds of the plaintiff's property 
 in it, and of the defendant's unlawful use thereof. If 
 the absolute right belonged to plaintiff, then, if an in- 
 fringement were clearly shown, the fraudulent intent 
 would be inferred, and, if allowed to be rebutted in ex- 
 emption of damages, the further violation of the right of 
 property would nevertheless be restrained. It seems, 
 however, to be contended that plaintiff was entitled 
 at least to an injunction, upon the principles applicable 
 to cases analogous to trademarks; that is to say, on the 
 ground of fraud on the public and on the plaintiff, perpe- 
 trated by defendant by intentionally and fraudulently 
 selling its goods as those of the plaintiff. Undoubtedly 
 an unfair and fraudulent competition against the busi- 
 ness of the plaintiff— conduct with the intent, on the 
 part of the defendant, to avail itself of the reputation of 
 the plaintiff to palm off its goods as plaintiff's— would, 
 in a proper case, constitute ground for relief. "^^ 
 
 15 — Goodyear India Rubber Perry v. Truefit, 6 Beavan, 66; 
 
 Glove Mfg. Co. V. Goodyear Rub- Croft v. Day, 7 Beavan, 84. 
 
 ber Co., 128 U. S. 598; Cox, Man- Indeed, McLean v. Fleming may 
 
 ual, 705. In this case Mr. Justice be properly regarded as the first 
 
 Field said (128 U. S. at p. 604), case in which the federal supreme 
 
 "The case at bar cannot be sus- court made any mention of the 
 
 tained as one to restrain unfair doctrine. This sentence occurs in 
 
 trade. Relief in such cases is the opinion: "Nor is it necessary, 
 
 granted only where the defendant, in order to give a right to an in- 
 
 by his mark, signs, labels, or in junction, that a specific trademark 
 
 other ways, represents to the pub- should be infringed; but it is sufR- 
 
 lic that the goods sold by him are cient that there was an attempt on 
 
 those manufactured or produced the part of the respondent to palm 
 
 by the plaintiff, thus palming off off his goods as the goods of the 
 
 his goods for those of a different complainant." McLean v. Fleming, 
 
 manufacturer, to the injury of the 96 U. S. 245. 
 
 plaintiff." Citing McLean v. Flem- 16 — Lawrence Mfg. Co. v. Ten- 
 
 ing, 96 U. S. 245; Sawyer v. Horn, nessee Mfg. Co., 138 U. S. 537; Cox, 
 
 1 Fed. Rep. 24, 4 Hughes, 239; Manual, 720.
 
 §18] 
 
 PREFATORY. 
 
 39 
 
 With this decision the doctrine of unfair competition 
 may be regarded as being finally established in the 
 United States; and as based not only on fraud on the 
 public, but on the plaintiff.^ ^ 
 
 17 — "The law relating to this 
 subject is well understood. No 
 man has a right to use names, 
 symbols, signs or marks which are 
 intended, or calculated, to repre- 
 sent that his business is that of 
 another. No man should in this 
 way be permitted to appropriate 
 the fruits of another's industry, or 
 impose his goods upon the public 
 by inducing it to believe that they 
 are the goods of some one else. 
 If A presents his goods in such a 
 way that a customer who is ac- 
 quainted with the goods of B and 
 intends to purchase them is in- 
 duced to take the goods of A in- 
 stead, believing them to be the 
 goods of B, A is guilty of a fraud 
 which deceives the public and in- 
 jures his competitor. Where the 
 goods of a manufacturer have be- 
 come popular not only because of 
 their intrinsic worth, but also by 
 reason of the ingenious, attractive 
 and persistent manner in which 
 they have been advertised, the 
 good-will thus created is entitled 
 to protection. The money invest- 
 ed in advertising is as much a part 
 of the business as if invested in 
 buildings, or machinery, and a 
 rival in business has no more right 
 to use the one than the other, — no 
 more right to use the machinery 
 by which the goods are placed on 
 the market than the machinery 
 which originally created them. No 
 one should be permitted to step in 
 at the eleventh hour and appropri- 
 ate advantages resulting from 
 
 years of toil on the part of anoth- 
 er." 
 
 "The action is based upon decep- 
 tion, unfairness and fraud, and 
 when these are established the 
 court should not hesitate to act. 
 Fraud should be clearly proved; it 
 should not be inferred from re- 
 mote and trivial similarities. Ju- 
 dicial paternalism should be avoid- 
 ed; there should be no officious 
 meddling by the court with the pet- 
 ty details of trade; but, on the 
 other hand, its process should be 
 promptly used to prevent an hon- 
 est business from being destroyed 
 or invaded by dishonest means." 
 Coxe, J., in Hilson Co. v. Foster, 
 80 Fed. Rep. 896-897. 
 
 "The fundamental rule is that 
 one man has no right to put otf 
 his goods for sale as the goods of 
 a rival trader; and he cannot, 
 therefore (in the language of Lord 
 Langdale in the case of Perry v. 
 Truefit, 6 Beavan, 66-73), 'be al- 
 lowed to use names, marks, letters 
 or other indicia by which he may 
 induce purchasers to believe that 
 the goods which he is selling are 
 the manufacture of another per- 
 son.' " Lord Kingsdown in Leath- 
 er Cloth Co. (Ltd.) v. American 
 Leather Cloth Co, (Ltd.), 11 H. 
 L. C. 358; followed in Johnston v. 
 Orr-Ewing, 7 App. Cas. 219-229. 
 
 "The gradual but progressive ju- 
 dicial development of the doctrine 
 of unfair competition in trade has 
 shed lustre on that branch of our ju- 
 risprudence as an embodiment, to a
 
 40 
 
 HOPKINS ON TRADEMARKS, 
 
 [§19 
 
 § 19. Unfair competition distinguished from trade- 
 mark infringement.— It can hardly be doubted that at 
 its iuception the doctrine of unfair competition was de- 
 vised to protect the public, rather than to recognize any 
 vested right in the complainant. He had adopted a geo- 
 graphical name, a generic term, or words otherwise puh- 
 lici juris, to designate his wares. Perhaps he had no de- 
 vice, symbol or mark whatsoever, but relied upon the 
 shape, form or color of his packages. He had, at all 
 
 marked deg^ree, of the principles 
 of high business morality, involv- 
 ing the nicest discrimination be- 
 tween those things which may, 
 and those which may not, be done 
 in the course of honorable rivalry 
 in business. This doctrine rests 
 on the broad proposition that 
 equity will not permit any one to 
 palm off his goods on the public aa 
 those of another. The law of 
 trademarks is only one branch of 
 the doctrine. But while the law 
 of trademarks is but part of the 
 law of unfair competition in trade, 
 yet when the two are viewed in 
 contradistinction to each other an 
 essential difference is to be ob- 
 served. The infringement of trade- 
 marks is the violation by one per- 
 son of an exclusive right of an- 
 other person to the use of a word, 
 mark or symbol. Unfair competi- 
 tion in trade, as distinguished 
 from infringement of trademarks, 
 does not involve the violation of 
 any exclusive right to the use of 
 a word, mark or symbol. The 
 word may be purely generic or de- 
 scriptive, and the mark or symbol 
 indicative only of style, size, shape 
 or quality, and as such open to 
 public use 'like the adjectives of 
 the language,' yet there may be 
 unfair competition in trade by an 
 
 improper use of such word, mark 
 or symbol. Two rivals in busi- 
 ness competing with each other in 
 the same line of goods may have 
 an equal right to use the same 
 words, marks or symbols on simi- 
 lar articles produced or sold by 
 them respectively, yet if such 
 words, marks or symbols were 
 used by one of them before the 
 other and by association have 
 come to indicate to the public that 
 the goods to which they are ap- 
 plied are of the production of the 
 former, the latter will not be per- 
 mitted, with intent to mislead the 
 public, to use such words, marks 
 or symbols in such a manner, by 
 trade dress or otherwise, as to de- 
 ceive or be capable of deceiving 
 the public as to the origin, manu- 
 facture or ownership of the arti- 
 cles to which they are applied; and 
 the latter may be required, when 
 using such words, marks or sym 
 bols, to place on articles of his 
 own production or the packages in 
 which they are usually sold some- 
 thing clearly denoting the origin, 
 manufacture or ownership of such 
 articles, or negativing any idea 
 that they were produced or sold 
 by the former." Bradford, J., in. 
 Dennison Mfg. Co. v. Thomas Mfg. 
 Co., 94 Fed. Rep. 651-659.
 
 19] PREFATORY. 41 
 
 events, none of those methods of distinguishing his goods 
 from those of other merchants which the law recognizes 
 as a Tight of property and denominates "trademark." 
 Yet his goods had a fixed quality and were sought for by 
 the public. When his competitor endeavored to palm off 
 other goods as his upon the public, the chancellor would 
 say as Lord Langdale said; "My decision does not de- 
 pend on any peculiar or exclusive right the plaintiffs 
 have to use the name of Day & Martin, but upon the fact 
 of the defendant using those names in connection with 
 certain circumstances, and in a manner calculated to 
 mislead the public, and to enable the defendant to obtain, 
 at the expense of Day's estate, a benefit for himself, to 
 which he is not in fair and honest dealing entitled."^ 
 
 The true theory of unfair competition has not always 
 been as clearly stated by the courts as it should be. One 
 line of decisions bases this doctrine and the right to in- 
 junctive relief upon the protection of the public from 
 fraud. On the other hand. Judge Thayer has stated that 
 relief is granted "To restrain the defendants from per- 
 petrating a fraud which injures the complainant's busi- 
 ness, and occasions him a pecuniary loss."^ 
 
 It is yery clear that equity interv^enes in the protection 
 from fraud of both the complainant whose business is or 
 may be injured by the unfair and fraudulent competi- 
 tion, and the public who are the consumers of his mer- 
 chandise.^ 
 
 In a sense it is not exact to separate the doctrines of 
 trademark infringement and unfair competition.^ The 
 underlying doctrine is the same— the control of fraud, 
 great or petty, by the intervention of equity; and yet, 
 
 1 — Croft V. Day, 7 Beav. 84; the same effect see Pierce v. Guit- 
 
 Seb. 76. tard, 68 Cal. 68-71. 
 
 2 — Carson v. Ury. 39 Fed. Rep. 3 — Lawrence Mfg. Co. v. Ten- 
 
 777; Cox, Manual, 709; following nessee Mfg. Co., 138 U. S. 537. 
 
 Goodyear India Rubber Glove Mfg. 4— See note to Scheuer v. Muller, 
 
 Co. V. Goodyear Rubber Co.. 128 U. 20 C. C. A. 161. 
 S. 598; Cox, Manual, 705. And to
 
 42 HOPKINS ON TRADEMARKS. [§ 19 
 
 without a clear understanding of the doctrines of unfair 
 competition, it is impossible to read intelligently the 
 tradename cases which have so long been treated either 
 as being ''trademark" cases, or cases "analogous to" 
 trademark cases. We have discussed elsewhere the use 
 of proper names as trademarks, and from an examina- 
 tion of the cases the careful student will conclude that 
 proper names are not trademarks, and that there should 
 not be such a thing as a technical tradename. A name 
 which is not a trademark is not entitled to protection as 
 a trademark.^ It is only entitled to protection when it 
 is fraudulently used by another. Thus, in the case of 
 "Dent, London,"^ which we have before referred to, 
 Dent is a proper name and London a geographical word. 
 They are entitled to protection against fraudulent use, 
 but only for the same reasons and in the same sense that 
 the size, shape, color and design of labels or packages are 
 entitled to protection against such fraudulent use. This 
 is true of many cases which have been decided by the 
 courts as trademark cases. 
 
 The fact is that there has always existed the willing- 
 ness of equity to keep the zeal of competing traders 
 within the bounds of fairness.'^ In the very early case 
 
 5 — "After a careful considera- fraud so perpetrated being a legiti- 
 tion of the various cases bearing mate ground for equitable interfer- 
 on the subject, the conclusion was ence, and the practical basis of it. 
 reached in Draper v. Skerrett, 116 It is by this standard that the 
 Fed. Rep. 206, that, to justify a complainant's right to relief in 
 court of equity in interfering in an the present instance must be 
 alleged case of unfair competition, judged. Stevens Linen Works v. 
 there must be something more Don & Co., 121 Fed. Rep. 171; Al- 
 than the mere duplication by the len B. Wrisley Co. v. Iowa Soap 
 one party of the other's trade- Co., 122 Fed. Rep. 796, 59 C. C. A. 
 name, and that this was to be 54." Archbald, J., in Heide v. Wal- 
 found in the deceptive use of imi- lace & Co., 129 Fed. Rep. 649, 650: 
 tative methods of display, or other Affirmed (C. C. A.), 135 Fed. Rep. 
 device by which the public are led 346. 
 
 into buying the infringer's goods 6 — Dent v. Turpin, 30 L. J. Ch. 
 
 where they intended to buy those 495; Seb. 196; Ante, p. 26. 
 
 of the original producer; the 7 — This branch of the law is a
 
 § 19] PREFATORY. 43 
 
 of Singleton v. Bolton, where both parties made and 
 sold a compound which they styled "Dr. Johnson's 
 Yellow Ointment," Lord Mansfield said: "If the defend- 
 ant had sold a medicine of his own under the plaintiff's 
 name or mark, that would be a fraud for which an action 
 would lie. But here both the plaintiff and defendant 
 use the name of the original Inventor, and no evidence 
 was given of the defendant having sold it as if prepared 
 by the plaintiff. "« So that even at the early date of the 
 rendition of that opinion (1783) the remedy for unfair 
 competition would have been applied upon a proper state 
 of facts; i. e., ii the defendant had sold his goods as the 
 goods of the plaintiff. 
 
 In 1810 Lord Eldou said: "There can be no doubt that 
 this court would interpose against that sort of fraud 
 which has been attempted by setting up the same trade 
 in the same place, under the same sign or name, the 
 party giving himself out as the same person."^ It was 
 by analogous reasoning that the same learned judge, six 
 years later, enjoined the piracy of Lord Byron's name, 
 applied to poems not of his composition.^*^ 
 
 In 1836 Lord Langdale enjoined a defendant from 
 using omnibuses painted like the plaintiff's, and driven 
 and managed by servants dressed in livery like that of 
 the plaintiff's serv^ants.^^ 
 
 So that the doctrine was old when Mr. Justice Clifford 
 said from the bench of the federal supreme court, ' ' Nor is 
 it necessary, in order to give a right to an injunction, 
 
 most interesting illustration of the Boker, 86 Fed. Rep. 765-768. 
 
 unlimited adaptability of equity to 8 — Singleton v. Bolton, 3 Doug. 
 
 cope with fraud in every form. 293; Cox, 624; Seb. 4. 
 
 Judge Townsend has accurately ob- 9 — Cruttwell v. Lye, 17 Ves. 335: 
 
 served that "A court of equity 1 Rose, 123; Seb. 17. 
 
 keeps pace with the rapid strides 10 — Lord Byron v. Johnston. 2 
 
 of the sharp competitors for the Mer. 29; Seb. 23. 
 
 prize of public favor, and insists 11 — Knott v. Morgan, 2 Keen. 
 
 that it shall be won only by fair 213; Seb. 57. 
 
 trade." R. Heinisch's Sons Co. v.
 
 44 HOPKINS ON TRADEMARKS. [§ 19 
 
 that a specific trademark should be infringed; but it is 
 sufficient that the court is satisfied that there was an 
 attempt on the part of the respondent to palm off his 
 goods as the goods of the complainant. "^^ 
 
 The whole question of fairness in trade is peculiarly 
 ■within the province of equitable jurisdiction; trademark 
 infringement is but one form of unfair competition. Un- 
 fair competition is the equivalent term for the ''passing 
 off" of the English^ ^ and the "concurrence deloyale" of 
 the French decisions.^ ^ 
 
 It must be borne in mind, however, that there is this 
 practical distinction between the issues in cases of tech- 
 nical trademark infringement and cases of unfair com- 
 petition where no technical trademark is involved; the 
 court is to be guided to its conclusions not by reference 
 to any arbitrarj^, fanciful and distinctive device to which 
 the plaintiff has a property right. But it is for him to 
 determine, in the light of all the facts, whether or not an 
 unfair competition has been instituted by the respond- 
 ent. Judge Kirkpatrick, in referring to this question, 
 has said : ' ' Recognizing the principle, I am of the opinion 
 that the similarity (of the competing articles) which will 
 warrant the interference of the court must be determined 
 by the circumstance of each case."^^ ^Y\ule fraud is pre- 
 sumed from the wrongful use of a trademark it must be 
 proven, directly or by inference, in all cases of unfair 
 competition which do not involve a technical trade- 
 mark.^*^ 
 
 12 — McLean v. Fleming, 96 U. S. deceitful representation or perti- 
 
 245. dious dealing must be made out 
 
 13_L,ever Bros. (Ltd.) v. Bed- or be clearly inferable from the 
 
 ingfield, 80 L, T. 100. circumstances." Mr. Chief Justice 
 
 14— Pouillet, Marques de Fab- Fuller, in Lawrence Mfg. Co. v. 
 
 rique et de la Concurrence Deloy- Tennessee Mfg. Co., 138 U. S. 537- 
 
 ale (4th ed.), sees. 459 et seq. 551. To the same effect see Scriven 
 
 15— Kroppf V. Furst, 94 Fed. v. North, C. C. A., 134 Fed. Rep. 
 
 Rep. 150. 366, affirming, with modification, 
 
 16— Church & Dwight Co. v. Scriven v. North, 124 Fed. Rep. 894. 
 Russ, 99 Fed. Rep. 276-279. "The
 
 § 19] PREFATORY. 45 
 
 ib. 
 
 But it is true of both classes of cases that where the 
 defendant's conduct is calculated to mislead, "it is not 
 essential that any particular person should have been ^C 
 actually misled,'"'^ nor is it necessary to prove that the 
 defendant's goods have actually been sold as the plain- 
 tiff's.18 
 
 As we have noted, the policy of the law is to encourage 
 legitimate competition. Thus it has been held that a -^ 
 manufacturer under a patent cannot complain of the C. 
 competition of a former employee who has patented an 
 invention in the same art and is manufacturing under 
 his patent.^^ 
 
 This rule that fraud must be proven in cases of unfair 
 competition is exemplified by reference to the cases cited 
 in the foot-note, where such comparisons have been made -^ 
 by the courts, resulting in a finding that the competition 
 of the respondent was fair,-^ and others where the facts ' -< 
 have led the court to the contrary conclusion.^^ -^ 
 
 With the exception of this feature, the same general ^ 
 rules of law and procedure prevail in this class of cases 
 
 17 — Dallas, J., in Bickmore Gall Investor Pub. Co. v. Dobinson, 82 
 
 Cure Co. v. Karns, 134 Fed. Rep. Fed. Rep. 56; C. F. Simmons Med.l ^ 
 
 833, 835, C. C. A. : and to Co. v. Simmons, 81 Fed. Rep. 162; r A 
 
 the same effect see Scheuer v. La Republique Francaise v. 
 
 Muller, 74 Fed. Rep. 225, 20 C. C. Schultz, 94 Fed. Rep. 500; Vita- 
 
 A. 161; Swift & Co. v. Brenner, scope Co. v. United States Phono- 
 
 125 Fed. Rep. 826. graph Co., 83 Fed. Rep. 30; Brown 
 
 18— Devlin v. McLeod, 135 Fed. v. Doscher, 147 N. Y. 647; Mumm 
 
 Rep. 164, 166. v. Kirk, 40 Fed. Rep. 589; Jaros 
 
 19 — American Coat Pad Co. v. Hygienic Underwear Co. v. Simons, 
 
 Phoenix Pad Co., 113 Fed. Rep. 49 Fed. Rep. 276. 
 629. 51 C. C. A. 339. 21— Draper v. Skerrett, 94 Fed. 
 
 20 — Kroppf V. Furst, 94 Fed. Rep. 912; Anheuser-Busch Brewing 
 
 Rep. 150; Putnam Nail Co. v. Au- Ass'n v. Fred Miller Brewing Co., 
 
 sable Horsenail Co., 53 Fed. Rep. 87 Fed. Rep. 864; Block v. Stand- 
 
 390; Sterling Remedy Co. v. Eu- ard Distilling Co., 95 Fed. Rep. 
 
 reka Mfg. Co., 70 Fed. Rep. 704; N. 978; Allegretti Chocolate Cream 
 
 K. Fairbank Co. v. Luckel, King & Co. v. Keller, 85 Fed. Rep. 643; 
 
 Cake Soap Co., 88 Fed. Rep. 694; City of Carlsbad v. Tibbetts, 51 
 
 Klotz V. Hecht, 73 Fed. Rep. 822; Fed. Rep. 852. 
 
 ^ 
 
 I
 
 46 HOPKINS ON TRADEMARKS. [§ 20 
 
 as obtain in proceedings to restrain trademark infringe- 
 ment. Tims, an injunction to restrain an unfair compe- 
 tition has been expressly denied upon the ground that 
 the complainant was guiltj^ of laches and acquiescence.^- 
 
 Federal jurisdiction in cases of unfair competition 
 must of course be predicated upon the general rules 
 fixing the jurisdiction of the federal courts, so that those 
 courts cannot entertain such an action arising between 
 citizens of the same state. ^" 
 
 § 20. Trade slander and libel.— The question whether 
 equity will enjoin competing traders from publishing 
 libelous or slanderous matter concerning their competi- 
 tors' business has been frequently presented to the 
 courts In an early case Lord Eldon said : ' ' The publica- 
 tion of a libel is a crime, and I have no jurisdiction to 
 prevent the commission of crimes, except, of course, such 
 cases as belong to the protection of infants, where a deal- 
 ing with an infant may amount to a crime,— an exception 
 arising from that peculiar jurisdiction of this court. "^* 
 How far this doctrine— which extended to all forms of 
 libel— has been modified by the federal courts of the 
 United States is an involved question, the discussion of 
 which would not be relevant in this book. 
 
 But at an early date Lord Cottenham, in refusing to 
 
 22 — La Republique Francaise v. statement disparaging the plain- 
 
 Schultz, 94 Fed. Rep. 500, 501. tiff's literary worlf, Seely v. Fish- 
 
 23— Illinois \vatch Case Co. v. er, 11 Sim. 581; 10 L. J. Ch. N. S. 
 Elgin Nat. Watch Co., 94 Fed. Rep. 274. And see Clark v. Freeman, 
 667-672. And see Air-Brush Mfg. 11 Beavan, 112; Fleming v. New- 
 Co. V. Thayer, 84 Fed. Rep. 640. ton, L. R. 1 H. L. C. 363; Bullock 
 
 24— Gee v. Pritchard, 2 Swanst. v. Chapman, 2 DeG. & Sm. 211; 
 
 402. To the same effect see (re- Browne v. Freeman (2), Cox, 
 
 fusing an injunction against the Manual, 424; Prudential Assur- 
 
 exhibtion of a painting falsely pur- ance Co. v. Knott, L. R. 10 Ch. D. 
 
 porting to be a copy of a picture 142; Fisher & Co. v. The Apollin- 
 
 by the plaintiff) Martin v. Wright, aris Co., L. R. 10 Ch. D. 297-299; 
 
 6 Sim. 297; refusing to enjoin a Ward v. Drat, Cox, Manual, 607. 
 publication by defendant of a 
 
 I
 
 § 20] PREFATORY. 47 
 
 enjoin libelous statements uttered of the plaintiff's 
 literary work, said that the proper remedy lay in an 
 action at law.^'^ And the English courts have subse- 
 quently held that where matter has been held libelous 
 in an action at law, the repetition of the libel would be 
 enjoined in equity.-'* In one case where the court refused 
 to enjoin a defendant from circulating an advertisement 
 among the plaintiff's customers which charged the 
 plaintiff with infringing his trademarks, the court in- 
 timated that the injunction might have been granted if 
 malice had been shown.-^ It may now be regarded, how- 
 ever, as the settled law in England that "the court will 
 interfere by injunction where statements are made with 
 reference to the infringement of a patent, or the invasion 
 of a trademark and the lilvc, if it is proved to the satis- 
 faction of the court that these statements are untrue."-^ 
 The same doctrine would seem to obtain in this coun- 
 try. It is libelous to publish of a dealer in school books 
 that he deals in ** antiquated books" and books which 
 are "disgraceful trash."-'' And it has been held libelous 
 per se to publish of another dealer of the same name 
 (Davey) "that an unscrupulous grocer of the same name, 
 in the immediate vicinity, advertises * Davey 's teas and 
 coffees,' with a view to deceive the public, and may sell 
 an inferior article."^*' Judge Lacombe has laid down 
 the broad proposition that "every legal occupation from 
 which pecuniary benefit may be derived creates such 
 special susceptibility to injury by language charging un- 
 
 25 — Seely v. Fisher, 11 Sim. 581; Liebig's Extract of Meat Co., 45 L. 
 
 10 L. J. Ch. N. S. 274. T. N. S. 757-758; and to the same 
 
 26 — Saxby v. Easterbrook. Cox, effect, Halsey v. Brotherhood, 45 L. 
 
 Manual, 606; Hinrichs v. Berndes, T. N. S. 640; Empire Typesetting 
 
 Cox, Manual, 594; Thorley's Cat- Machine Co. v. Linotype Co., 79 L. 
 
 tie Food Co. V. Massam, L. R. 46 L. T. N. S. 8. 
 J. Ch. 713. 29 — American Book Co. v. Gates, 
 
 27— Colley v. Hart, 7 R. P. C. 85 Fed. Rep. 729-734. 
 101. 30— Davey v. Davey, 50 N. Y. 
 
 28 — Chitty, J., in Anderson v. Supp. 161.
 
 48 HOPKINS ON TRADEMARKS. [§ 20 
 
 fitness or improper conduct of such occupation that such 
 language is actionable, without proof of special dam- 
 ggg M31 j^ ^ ^]jg necessary corollary of this rule that a 
 disparaging statement concerning the goods sold by an- 
 other, whether under a trademark or not, must be of a 
 character to charge him with business incapacity or im- 
 proper conduct of his business before it can come within 
 the class of matter that is slanderous or libelous per se. 
 For if the words used apply to the plaintiff's merchan- 
 dise in such a manner as to constitute an imputation of 
 his improper conduct in or want of capacity for his busi- 
 ness, they will be libelous or slanderous per seP 
 
 The truth is always a defense in actions of this charac- 
 ter. Thus where the plaintiff had bought the goods in 
 question from the defendant and advertised them for 
 sale, the publication of an advertisement by the defend- 
 ant that read as follows: '*An opinion of Shawknit 
 hose should not be formed from the navy blue stockings 
 advertised as first quality by (plaintiff), since we sold 
 (plaintiff) some lots which were damaged in the dye- 
 house," was held not libelous, in the absence of a show- 
 ing of its untruth.^^ And a wide latitude is allowed in 
 criticism of chattels where the facts are not misstated. 
 So it is not libelous to attack the theories advanced in 
 a book even with sarcasm and ridicule, if there is no mis- 
 representation of what is set forth in the book;^^ and a 
 criticism of one of the pictures of an artist stating that 
 it is not good of its kind is not libelous, where it does 
 not attack him in his professional character generally.^^ 
 
 31 — Ohio & Miss. Ry. Co. v. v. Mason (Oregon), 38 Pac. Rep. 
 
 Press Pub. Co.. 48 Fed. Rep. 206. 130. 
 
 32 — So where in a criminal pros- 33 — Boynton v. Shaw Stocking 
 
 ecution under the Oregon Code the Co., 146 Mass. 219; 15 N. E. Rep. 
 
 words applied to the property of 507. 
 
 the prosecuting witness in such a 34 — Dowling v. Livingstone, 108 
 
 manner as to expose him to hatred, Mich. 321; 66 N. W. Rep. 225. 
 
 contempt or ridicule, they were 35 — Battersby v. Collier, 54 N. Y. 
 
 held to be a libel upon him. State Supp. 6%Z.
 
 § 21] PREFATORY. 49 
 
 So, it has been held in England that no action will lie 
 against a defendant trader for stating falsely and mali- 
 ciously that his goods are superior to those of the plain- 
 tiff, even though the plaintiff suffers special damage 
 therefrom,^" and no false statement directly disparaging 
 the plaintiff's goods is actionable in the absence of proof 
 of special damage."^ 
 
 Where an alleged libel consisted of a charge that the 
 plaintiff had no right to use a certain trademark, it was 
 held to be a slander of title and not a libel upon the 
 plaintiff; that the burden was upon the plaintiff to prove 
 malice, falsity and special damage, and that the cause of 
 action sui-vived the plaintiff's death.^^ 
 
 The remedy for libel or slander affecting the title to a 
 trademark depends upon whether there is a threatened 
 continuance of the publication of the libelous or slander- 
 ous matter. *' Courts of equity have no jurisdiction of 
 libel or slander affecting title to property or property 
 rights, or any other slander or libel, unless threatened or 
 apprehended repetition makes preventive relief proper 
 and necessary. The remedy for past injuries of that 
 nature is understood to be wholly at law."^^ 
 
 § 21. Are trademark rights monopolistic in character? 
 —In some jurisdictions, there has been a tendency to re- 
 gard trademark rights as monopolies, and to that fact 
 may be accredited the line of decisions which have con- 
 strued technical trademark rights very narrowly.^^ 
 
 36 — Hubbuck v. Wilkinson (C. icy, because against common right. 
 
 A.), L. R. (1898) 1 Q. B. 86. The grants, charters, letters patent. 
 
 37 — Mellin V. White, L. R. (1895) or other form of device or assur- 
 
 A. C. 154. ance by the sovereign for their 
 
 38 — Hatchard v. Mege, L. R. 18 creation were declared by the act 
 
 Q. B. D. 771-775. of Parliament of 21 Jac. I, c. 3, to 
 
 39 — Wheeler, J., in Palmer v. be 'utterly void and of none effect, 
 
 Travers, 20 Fed. Rep. 501. and in no wise to be put in use 
 
 40 — "Monopolies of any sort and operation.' Nothing short of 
 
 have never been favorites with the the 'omnipotence of parliament' 
 
 law. They were held by the com- is able to exclude a subject from 
 
 mon law to be against public pel- trade in England. 7 Bac. Abr. p. 
 
 4
 
 50 
 
 HOPKINS ON TRADEMARKS. 
 
 [§21 
 
 This tendency is erroneous. When the Statute of 
 Monopolies, 21 Jae. I, c. 3, was enacted, in 1623, trade- 
 marks had never been legally recognized. The Statute, 
 therefore, could have no possible reference to trademark 
 rights. The later decisions which refer to trademarks 
 as being monopolistic in character have been based upon 
 a misconception of what constitutes a trademark. Eesult- 
 ing as it does from the mere effort of the producer or 
 handler of an article to identify his goods to the pur- 
 chaser, it is merely a medium of authentication, and 
 while the owner's title to it is necessarily exclusive, it is 
 in no sense a monopoly. The effort of an infringer to 
 invade that right is not a laudable attempt to break a 
 monopoly, but an offense against society, and it has been 
 
 23. Two exceptions to this general 
 rule were given by the early text 
 writers: First, 'It seemeth clear 
 that the king may, for a reason- 
 able time, make a good grant to 
 any one of the sole use of any art 
 invented or first brought into the 
 realm by the grantee.' Second. 
 The king may grant to particular 
 persons the sole use of some par- 
 ticular employments, as 'of print- 
 ing the Holy Scriptures and law 
 books' etc. The somewhat curious 
 reason given for the second ex- 
 ception is that an unrestrained 
 liberty to print the books to which 
 it relates might be 'of dangerous 
 consequences to the public' To 
 these exceptions a third must now 
 be added, viz. the right of a trades- 
 man to the exclusive use of such 
 signs, words, or symbols as he may 
 have adopted and used in his busi- 
 ness to distinguish articles of his 
 own production from all similar 
 articles produced by other per- 
 sons. These exceptions do not im- 
 pair the force of the general rule, 
 
 'Exceptio prohat regulam de rebus 
 non exceptis.' The rule is unre- 
 stricted liberty in the practice of 
 all arts and trades, and in the use 
 of the methods by which they are 
 conducted. He who asserts the 
 right to an exclusive privilege in 
 any department of business must 
 bring himself under the protection 
 of some recognized exception to 
 the rule. The plaintiffs in this 
 case claim an exclusive privilege 
 under the third exception, viz. the 
 right to the sole use of a certain 
 trademark adopted, used, and reg- 
 istered by them; and they allege 
 that the defendants have adopted 
 and are now using a trademark 
 which is an imitation of, and an 
 infringement upon, their own. It 
 becomes important, therefore, to 
 learn just what the plaintiffs' trade- 
 mark is, and then to determine 
 whether it has been improperly 
 imitated by the defendants." Wil- 
 liams, J., in P. C. Weist Co. v. 
 Weeks, 177 Pa. 412, 35 Atl. Rep. 
 693.
 
 § 22] HOPKINS ON TRADEMARKS. 51 
 
 likened by the courts to the criminal offenses of forgery 
 and counterfeiting. Thus, Judge Rives said, ''That any 
 imitation of a trademark, calculated to deceive the un- 
 wary customer, differs from absolute forgery, not in the 
 nature, but rather in the extent of the injury. "^^ 
 
 The Supreme Court of Missouri has said that ''If by 
 fraudulent means, other parties are pennitted to counter- 
 feit and forge and simulate these trademarks . . . 
 the connnunity is imposed on and cheated. "^- 
 
 The distinction has been emphasized by a Scottish 
 court in the following language: 
 
 "Monopoly is not the thing for which the one party 
 struggles and which the other resists. On the contrary, 
 fair trading is all for the protection of which the law is 
 invoked; and the public, as well as the manufacturer or 
 merchant, are concerned that infringement of trademarks 
 and trade designations should be prevented. For there is 
 a double wrong: the public are or may be deceived, and 
 the trader whose trademark or trade designation is in- 
 fringed is or may be injured."^" 
 
 § 22. Title.— The general rule has been stated by Mr. 
 Justice Clifford to be that "trademarks are an entirety, 
 and are incapable of exclusive use at different places by 
 more than one independent proprietor. "^^ But this rule 
 is subject to exceptions; or, rather, the word "exclusive," 
 as used by Mr. Justice Clifford, must not be construed to 
 mean that there cannot be joint and several ownership 
 of a trademark. Mr. Justice Bradley has said at Circuit 
 that, "In holding that it is necessary to the validity of a 
 trademark or tradename that the claimant must be en- 
 titled to an exclusive right to it, or proi>erty in it, we do 
 not mean to say that it may not belong to more than one 
 
 41— Blackwell v. Armistead, Fed. v. Young & Sons, Ct. Sess. Cas. 
 
 Case No. 1474, 3 Hughes, 163. 4th Ser. X 874. 
 
 42 — Wagner, J., in State v. Gibbs, 44— Manhattan Med. Co. v. Wood, 
 
 56 Mo. 133, 136. Fed. Case 9026. 
 
 43 — Lord Craighill in Dunnachie
 
 52 HOPKINS ON TRADEMARKS. [§ 23 
 
 person, to be enjoyed jointly or severally. Copartners, 
 upon dissolution of a partnership, may stipulate that 
 each of them may use the trademarks of the firm, and 
 there may be many other cases of joint and several own- 
 ership; but such co-owners will together be entitled to the 
 exclusive use of the trademark, and perhaps each of them 
 will be entitled to such exclusive use as to all other per- 
 sons except their associates in ownership.^^ Judge Swan 
 has said that a trademark ''may be the subject of owner- 
 ship by two or more, without impairing the claim of its 
 owners to redress for its unlawful use by others. "^^ 
 
 As indicated in the last quotation, general and several 
 ownership arises frequently upon the dissolution of part- 
 nership, where the assets are divided or the trademark 
 is not sold with the other assets, even in the absence of a 
 special agreement.'*^ 
 
 Joint and several ownership may also be created by 
 consent.'*^ It may also be created by assignment."**^ And 
 a contract foi' the purpose of establishing and defining 
 the respective trademark rights of the parties to it, and 
 providing for the addition of other matter to the trade- 
 mark, in order to prevent confusion between the goods of 
 the parties, has been sustained upon grounds of public 
 policy.^^ 
 
 § 23. Licenses.— The extent to which licenses for the 
 use of trademarks may be granted, has not yet been defi- 
 nitely settled, although the courts have repeatedly recog- 
 nized their existence and enforced them. Thus, relief by 
 injunction was granted by the United States Circuit Court 
 
 45 — New York &. R. Cement Ck). 48 — Emerson v. Badger, 101 
 
 V. Coplay Cement Co., 45 Fed. Rep. Mass. 82; Pratt's App. 117 Pa. 401. 
 
 212. 49— Fish Bros. Wagon Co. v. La- 
 
 46— Cleveland Stone Co. v. Wal- Belle Wagon Works, 82 Wis. ^46. 
 
 lace, 52 Fed. Rep. 431-439. 50— Waukesha H. M. Springs Co. 
 
 47— Taylor v. Bothin, Fed. Case v. Hygeia S. D. Water Co., 11 C 
 
 No. 13,780; Young v. Jones, Fed. C. A. 277, 63 Fed. Rep. 438. 
 Case No. 18159.
 
 § 23] PREFATORY. 5^ 
 
 in Texas, notwithstanding the defense that the complain- 
 ant had granted a license to another to use the trademark 
 within the state of Texas; Judge Sabin remarking, "The 
 fee to the trademark still remains in the complainant, and 
 any injury to it will justify injunction."^* And in a more 
 recent case, Judge Hazel construed a conveyance of * * the 
 absolute and exclusive use" of certain trademarks in and 
 to certain states, reserving the right to the personal use 
 of the mark by the person executing the conveyance, to 
 be sufficient to entitle the grantee in the conveyance to 
 maintain suit against an infringer.^^ 
 
 It is to be regretted, that in the case last referred to, 
 the court did not go fully into the question whether ex- 
 clusive contemporaneous rights to the same trademark 
 may exist in different parts of the same country. The 
 latter question is wholly undetermined, and is probably 
 the most important question concerning the tenure of 
 trademark rights, which has not yet been adjudicated. 
 In a recent case. Judge Dallas has treated the question of 
 licensing the use of a trademark exactly as if it were a 
 license under a patent, wholly on the authority of the 
 well-established line of decisions in patent cases, that 
 where there is an exclusive licensee of the right to use a 
 trademark, he is a necessary party to a bill for its in- 
 fringement. In this case, however, the mark was used 
 uix)n a patented article during the life of the patent, 
 and the license granted covered both the patent and the 
 trademark rights.^^ 
 
 Where the defense is interposed to an action foi' in- 
 fringement, that the defendant has had a license for 
 its use, that defense is met by showing that the defend- 
 ant has failed to perform all the conditions of the licens- 
 
 51 — Moxie Nerve Food Co. v. Preserving Co., 131 Fed. Rep. 359 
 Baumbach. 32 Fed. Rep. 205-210. 362. 
 
 52 — Griggs, Cooper & Co. v. Erie 53 — Wallach v. Wigmore, S7 
 
 Fed. Rep. 469.
 
 54 HOPKINS ON TRADE M^VRKS. [§ 23 
 
 ing agreement, and has been notified by the plaintiff that 
 the license has been teiToinated.^'* 
 
 In an action for the recovery of license fe^s, the defend- 
 ant is estopped to deny the validity of the mark.^^ 
 
 54— Martha Washington Cream- 55— Hilsen v. Libbey, 44 N. Y. 
 
 ery Buttered Flour Co. of the Uni- Supr. Ct 12. 
 ted States v. Martien, 44 Fed. Rep. 
 473.
 
 CHAPTER n. 
 
 THE ACQUISITION OF A TRADEMARK. 
 
 § 24. Who may acquire.— Generally speaking, any 
 person^ capable of holding title to personal property 
 may acquire the right to a trademark. In practice, by 
 far the greater portion of all trademarks are held by 
 manufacturers. There are, however, many persons, not 
 manufacturers, who use trademarks as a means of iden- 
 tifying the subject-matter of their commerce. First 
 among these, in their natural order, are those who apply 
 geographical names as trademarks, to the natural pro- 
 ducts of the earth. This may be done, of course, only by 
 the owner of its sole place of production,^ as, if the pro- 
 duct were accessible to others, there could be no exclusive 
 right to the trademark, except to identify the person who 
 handled the product on its way to the consumer. 
 
 This leads us to the second, and larger, class of those 
 who can acquire trademark rights, though they are not 
 manufacturers. Many mercantile houses who merely se- 
 lect merchandise, use trademarks upon the goods they 
 
 1 — "A corporation is entitled to S. 242; Radde v. Norman, L. R. 
 
 have its trademark as well as a 14 Eq. 348; Braham v. Beachim, 7 
 
 private individual, and may sue Ch. D. 848; 47 L. J. Ch. 348; 38 
 
 for its infringement." Fenner, J., L. T. N. S. 640; 26 W. R. 654; 
 
 in Insurance Oil Tank Co. v. Scott, Seb. 589; Hill v. Lockwood, 32 
 
 33 La. Ann. 946. Fed. Rep. 389; City of Carlsbad v. 
 
 2— Congress & Empire Spring Schultz, 78 Fed. Rep. 469; City of 
 
 Co. v. High Rock Congress Spring Carlsbad v. Kutnow, 71 Fed. Rep. 
 
 Co., 45 N. Y. 291-302; 10 Abb. Pr. 167, 18 C. C. A. 24; affirming 68 
 
 N. S. 348; 6 Am. Rep. 82; 57 Barb. Fed. Rep. 794; Northcutt v. Tur- 
 
 526; Cox, 599; Dunbar v. Glenn, 42 ney, 101 Ky. 314; 41 S. W. Rep. 
 
 Wis. 118; Seb. 529; Wheeler v. 21. To the same effect see Atlan- 
 
 Johnston, 3 L. R. Ir. 284; Apol- tic Milling Co. v. Robinson, 20 
 
 linaris Co. v. Norrish. 33 L. T. N. Fed. Rep. 217. 
 
 55
 
 56 
 
 HOPKINS ON TRADEMARKS. 
 
 [§24 
 
 SO select,^ and these are valid, because, in the language 
 of Mr. Chief Justice Fuller, the marks so used are equiva- 
 lent to a certificate that the goods so marked are the 
 genuine article which has been determined by the select- 
 ors to possess a certain degree of excellence, evidencing 
 that the skill, knowledge and judgment of the selectors 
 have been exercised in ascertaining that the particular 
 goods so marked are possessed of a merit rendered defi- 
 nite by their examination and of a uniformity rendered 
 certain by their selection.^ Slightly analogous to this 
 class of cases are those where the members of a trades 
 union adopt a label to be used by the workmen who com- 
 pose the union, upon the goods manufactured by them. 
 In a number of cases their right to the protection of this 
 label, as a trademark, has been denied,'^ while in others 
 the right is affirmed.^ 
 
 3— Dewitt V. Mathey, 18 Ky. L. 
 Rep. 257, 35 S. W. Rep. 1113. 
 
 4— Menendez v. Holt, 128 U. S. 
 514-520; Levy v. Waitt (1), 56 
 Fed. Rep. 1016; Levy v. Waitt (2), 
 61 Fed. Rep. 1008. 10 C. C. 
 A. 227; Hirsch v. Jonas, L. 
 R. 3 Ch. D. 584, 586; Re Aus- 
 tralian Wine Importers (Ltd.), 41 
 Ch. D. 278-281; Thompson & Co. v. 
 Robertson, Ct. Sess. Cas. (4th ser.) 
 XV, 880; 25 Scot. L. Rep. 649; 
 Yale Cigar Mfg. Co. v. Yale, 30 Off. 
 Gaz. 1183; Wood v. Lambert, L. R. 
 32 Ch. D. 247. 
 
 5 — Ex parte Cigar Makers' Ass'n, 
 16 Off. Gaz. 958; Schneider v. Wil- 
 liams, 44 N. J. Eq. 391; Cigar 
 Makers' Union v. Conhaim, 40 
 Minn. 726 (the last case by a 
 divided court, three denying the 
 right of trademark and two af- 
 firming it) ; McVey v. Brendel, 144 
 Pa. St. 235; Cox, Manual, Case No. 
 730; Weener v. Brayton, 152 Mass. 
 101; Cox, Manual, Case No. 712; 
 
 State V. Berlinsheimer, 62 Mo. 
 App. 165. 
 
 6— Allen v. McCarthy, 37 Minn. 
 349, affirming the decision of the 
 lower court by an equally divided 
 bench; Bloete v. Simon, 19 Abb. N. 
 C. 88; People v. Fisher, 57 N. Y. 
 Sup. Ct. 552; Cigar Makers' Pro- 
 tective Union v. Lindner, 3 Ohio 
 St. Dec. 244; Strasser v. Moonelis, 
 108 N. Y. 611; Tracy v. Banker, 
 170 Mass. 266; Beebe v. Tolerton 
 & Stetson Co., 117 Iowa 593, 91 N. 
 W, Rep. 905; Bulena v. Newman, 
 31 N. Y. Supp. 449; Cigarmakers' 
 International Union of America v. 
 Goldberg, 57 Atl. Rep. 141; Cohnv. 
 People, 149 111. 486, 37 N. E. Rep. 
 60; State v. Hagen, 6 Ind. App. 
 167, 33 N. E. Rep. 223; Hetterman 
 V. Powers 102 Ky. 133, 43 S. W. 
 Rep. 180. In Carson v. Ury, Judge 
 Thayer remarks: "It is no doubt 
 true that the union label does not 
 answer to the definition ordinarily 
 given of a technical trademark, be-
 
 §25] 
 
 THE ACQUISITION OF A TR.VDEMARK. 
 
 57 
 
 Importers'^ or exporters** may have trademarks to 
 identify the goods passing through their hands, and it 
 has been held that a bleacher who finishes goods manu- 
 factured by another has a right to a trademark applied 
 to goods so treated by him." 
 
 § 25. User. — There can be no right in a trademark 
 until it has been used. Under the English act'" an appli- 
 cation for registration of a trademark is deemed to he 
 equivalent to public use of the trademark. But even 
 this is merely to supply a constructive instead of the 
 actual user required at common law/^ and the general 
 rule is not affected by that statute.'- The exclusive right 
 to the use of a trademark is acquired only by priority of 
 appropriation. The claimant of a trademark must have 
 
 cause it does not indicate with any 
 degree oi certainty by what par- 
 ticular person or firm the cigars to 
 which it may be affixed were man- 
 ufactured, or serve to distinguish 
 the goods of one cigar manufac- 
 turer from the goods of another 
 manufacturer, and because the 
 complainant appears to have no 
 vendible interest in the label, but 
 merely a right to use it on cigars 
 of his own make, so long and only 
 so long as he remains a member 
 of the union. In each of these re- 
 spects the label lacks the charac- 
 teristics of a valid trademark." In 
 the case at bar, the complainant 
 being a manufacturer of cigars, he 
 was granted equitable relief on 
 the ground of unfair competition. 
 Carson v. Ury, 39 Fed. Rep. 777; 
 Cox. Manual, Case No. 709. As to 
 criminal prosecution for infringe- 
 ment of union label see State v. 
 Bishop, 128 Mo. 373. As to the 
 sufficiency of proof in such a prose- 
 cution under the Massachusetts 
 Statute of 1895 (C. 462, § 4), see 
 
 Commonwealth v. Rozen, 176 
 Mass. 129, 57 N. E. Rep. 223. 
 
 7— Godillot V. Hazard, 44 N. Y. 
 Super. Ct. 427. 
 
 8 — Robinson v. Finlay, L. R. 9 
 Ch. D. 487. 
 
 9— Re Sykes, 43 L. T. N. S. 626. 
 
 10 — Sec. 75, Patents, Designs and 
 Trademark Act, 1883, amended 
 1888, 51 and 52 Vict., c. 50; Re 
 Hudson's Trademark, 3 R. P. C. 
 155; 32 Ch. D. 311; 55 L. J. Ch. 
 531; 55 L. T. 228; 32 W. R. 616; 
 Cartmell, 168; Edwards v. Dennis, 
 30 Ch. D. 454. 
 
 11 — Under the act of 18"0 it was 
 held that registration was equiva- 
 lent to public use of a trademark. 
 Re Dutcher Temple Co., Comr. Dec. 
 1871, p. 248. See sections 7 and 
 11 of the Act of 1881; Wm. Rogers 
 Mfg. Co. v. Rogers & S. Mfg. Co., 
 11 Fed. Rep. 495. 
 
 12 — Singer Manufacturing Co. v 
 Wilson, 2 Ch. D. 434-440; Lowell 
 Mfg. Co. v. Lamed, Cox, Manual, 
 No. 428.
 
 58 HOPKINS ON TR.U)EM^\JIKS. [§ 26 
 
 been the first to use or employ the same on like articles 
 of production.^^ A single instance of user, with accom- 
 panying circumstances evidencing an intent to continue 
 that use,** is sufficient to establish the right to a trade- 
 mark; there is no requirement that the use shall continue 
 for any prescribed or definite length of time.^^ It is im- 
 material that the first use of the mark was accidental, for 
 a trademark, in the language of the United States Su- 
 preme Court, * ' is often the result of accident rather than 
 design."*® 
 
 On the other hand, the use of a mark may be * * so tran- 
 sitory^ spasmodic, and inconsiderable," as not to vest 
 title in its user as against one whose use has been ''long- 
 continued, notorious, and universally recognized."*'^ 
 
 § 26. Affixing the mark.— As stated in our definition, 
 the mark must be affixed to the subject it serves to 
 identify. ''It may be either affixed to, or impressed 
 upon, the goods themselves by means of a stamp or an 
 adhesive label, or it may be made to accompany the 
 goods by being impressed or made to adhere to an envel- 
 
 13 — J. R. Watkins Med. Co. v. used the trademark." Romilly, 
 
 Sands, 83 Minn. 326, 86 N. W. Rep. M. R., in Hall v. Barrows, 32 L. 
 
 340. J. Ch. 548. 
 
 14 — Columbia Mill Co. v. Alcorn, The right exists "the moment 
 
 150 U. S. 460; Tetlow v. Tappan, the article goes into the market 
 
 85 Fed. Rep. 774; Hyman v. Soils so stamped." Westbury, L. C, in 
 
 Cigar Co., 4 Colo. App. 475; Amer- McAndrew v. Bassett, 4 DeG. J. 
 
 ican Washboard Co. v. Saginaw & S. 380-386. 
 
 Mfg. Co., 43 C. C. A. 233; 103 Fed. The right dates from the time 
 
 Rep. 281; Welsbach Light Co. v. when the actual occupation of the 
 
 Adam, 107 Fed. Rep. 463. market with goods bearing the 
 
 15 — Shaver v. Shaver, 54 Iowa, mark began. Levy v. Waitt, 61 
 
 208; 37 Am. Rep. 194; Hall v. Fed. Rep. 1008-1011, 10 C. C. A. 
 
 Barrows, 32 L. J. Ch. 548; Seb. 227. 
 
 215. 16 — Mr. Justice Miller in Trade- 
 
 The length of time required to mark Cases, 100 U. S. 82. 
 
 establish the right of trademark. 17 — Heublein v. Adams, 125 Ad- 
 
 — "The interference of a court of ams, 125 Fed. Rep. 782, 785. And 
 
 equity cannot depend on the length see ante, sec. 11. 
 of time the manufacturer has
 
 § 27] THE ACQUISITION OP A TR.VDEMARK. 59 
 
 ope or case containing the goods. "^^ It has been held in 
 England that a trademark may be water-marked/^' and a 
 measuring stick with an octagonal head, used as a core 
 for rolls of carpet, has been held to be of itself a valid 
 trademark.-^ The question of the mode of affixing is 
 purely practical, and one package, parcel or bottle of 
 merchandise may bear a number of trademarks. A very 
 large percentage of the liquors imported into the United 
 States from Europe bear not only the trademark of the 
 producer, but also that of the bottler; and in many cases 
 another trademark, that of the capsule manufacturer, is 
 to be found impressed in the metallic capsule. In like 
 manner a complicated machine may bear many trade- 
 marks, indicating the manufacturers of the wheels, axles, 
 oil-cups, bearings, etc., and the machine as a whole bear 
 the comprehensive trademark of the maker who has se- 
 lected these several parts and assembled them. 
 
 A trademark cannot be acquired by merely using the 
 mark in advertising.^^ 
 
 § 27. Registration not a means of acquiring.— With 
 the solitary exception of the California case of Whitiier 
 V. Dietz," it has nowhere been held in the United States 
 that the right to a trademark is created by registration.--^ 
 
 18— Sir G. Jessel, M. R., in 22—66 Cal. 78. This decision 
 
 Singer Mfg. Co. v. Wilson, supra, led to the enactment of the pres- 
 
 19 — Alexander Pirie & Sons v. ent section 3199 of the Political 
 
 Goodall, L. R. (1891) 1 Ch. D. Code of California (March 12, 
 
 35-41; holding a water-mark to be 1885), providing that "Any person 
 
 a "brand" within the meaning of who has first adopted and used a 
 
 sec. 64, subsec. 2 (c) of the Pat- trademark or name, whether with- 
 
 ents, Designs and Trademarks in or beyond the limits of this 
 
 Act, 1883. state, is its original owner." 
 
 20 — Lowell Mfg. Co. v. Lamed, 23 — The recording of a name as 
 
 Cox, Manual, No. 428; Fed. Case a trademark cannot give it the 
 
 No. 8570. quality of a trademark, if it was 
 
 21 — Hazelton Boiler Co. v. Ha- not theretofore a valid trademark, 
 
 zelton Tripod Boiler Co., 142 111. Oakes v. St. Louis Candy Co., 
 
 494, 30 N. E. Rep. 339. St. Louis 146 Mo. 391; 48 S. W. Rep. 467. 
 
 Piano Mfg. Co. v. Merkel, 1 Mo. "The general rule adopted by the 
 
 App. 305. courts on this subject is that state
 
 60 
 
 HOPKINS ON TRADEM^iRKS. 
 
 [§28 
 
 Section 1 of the act of 1905 provides that owners of 
 trademarks used in commerce may obtain registration 
 of such trademarks by complying with the requirements 
 stipulated in the act. The applicant must show that he, 
 and no one else, has a right to use the mark; that he is 
 actually using it in commerce with foreign nations or 
 among the several states, or with Indian tribes; and that 
 it is not so similar to the registered or known mark of 
 another as to be calculated to deceive.-"* So that registra- 
 tion under the act of congress is in no sense a means of 
 acquiring the right to a trademark ;2^ and indeed the ac- 
 tual application of the trademark in commerce is so es- 
 sential a prerequisite to registration under the act, that 
 as between two applicants for registration of the same 
 mark, one of whom had in fact used his mark in trade, 
 while the other had the assignment of the mark, ac- 
 quired by transfer from its inventor, but had never ac- 
 tually applied it, the commissioner of patents held that 
 
 "Registration under the act of 
 1881 is of but little, if any, value, 
 except for the purpose of creating 
 
 statutes providing for registration 
 of trademarks are in affirmance of 
 the common law; that the reme- 
 dies given by such statutes are 
 either declaratory or cumulative 
 and additional to those recognized 
 and applied by the common law." 
 Per curiam, in Woodcock v. Guy, 
 33 Wash. 234, 74 Pac. Rep. 358. 
 "As the name 'Remington' is an 
 ordinary family surname, it was 
 manifestly incapable of exclusive 
 appropriation as a valid trade- 
 mark, and its registration as such 
 could not in itself give It valid- 
 ity." Mr. Chief Justice Fuller in 
 Howe Scale Co. v. Wyckoff, Sea- 
 mans & Benedict, 198 U. S. 118. 
 
 24 — Ex parte Lyon, Dupuy & Co., 
 28 Off. Gaz. 191. 
 
 2.5 — "Property in trademarks 
 does not derive its existence from 
 an act of congress." La Croix v. 
 May, 15 Fed. Rep. 236. 
 
 a permanent record of the date of 
 adoption and use of the trade- 
 mark, or in cases where it is nec- 
 essary to give jurisdiction to the 
 United States courts." Hawley, 
 J., in Hennessy v. Braunschwei- 
 ger & Co., 89 Fed. Rep. 665-668; 
 quoted and followed in Sleepy Eye 
 Milling Co. v. C. F. Blanke Tea 
 and Coffee Co., 85 Off. Gaz. 1905. 
 It does not create a trademark. 
 United States v. Braun, 39 Fed. 
 Rep. 775; Sarrazin v. W. R. Irby 
 Cigar Co., 93 Fed. Rep. 624-627, 
 35 C. C. A. 496; Brower v. Boul- 
 ton, 53 Fed. Rep. 389, 390; Brower 
 V. Boulton (2), 58 Fed. Rep. 888- 
 890, 7 C. C. A. 567; Einstein v. 
 Sawhill, 65 Off. Gaz. 1918; Sher- 
 wood V. Horton, Cato & Co., 84 Off.
 
 § 29] THE ACQUISITION OF A TRADEMARK. 61 
 
 the actual prior use determined the right to the mark.^* 
 But registration under the laws of the United States and 
 under the laws of several of the states, while creating no 
 new rights, confers remedies and special protection to 
 the owner of a trademark which we will examine in an- 
 other chapter. 
 
 § 28. Acquisition by assignment.— The assignment of 
 trademarks is a subject of some difficulty and is discussed 
 elsewhere in this book. It is sufficient in this connection 
 to say that trademark rights are generally assignable, 
 that quality being indispensable to the striking charac- 
 teristic of perpetual existence possessed by trademarks, 
 and that a proper assignment conveys to the assignee all 
 the property rights in and to the trademark possessed by 
 his assignor.-^ The Act of 1905, Sec. 10 provides that a 
 registered trademark and trademarks for the registra- 
 tion of which application has been made, shall be assign- 
 able in connection with the good-will of the business in 
 which it is employed; and any assignment of such mark 
 shall be void as against a subsequent purchaser for value 
 without notice unless recorded in the Patent Office within 
 three months from its date. We need note at this time 
 only the general restriction on the assignability of trade- 
 marks—that they cannot be assigned save in connection 
 with the good-will of the business with which they are 
 identified.-^ 
 
 It is true of trademarks as of other personal property 
 that the great mark of ownership is possession, and con- 
 tracts that the title to personalty shall be in one party and 
 the possession in another cannot be set up to the preju- 
 dice of a bona fide purchaser without notice. Accordingly, 
 a contract that the right to use the mark shall revert to 
 the assignor should the assignee sell his business, cannot 
 
 Gaz. 2018; La Croix v. May, 15 27— Walton v. Crowley, 3 Blatch. 
 
 Fed. Rep. 236. 440; Cox, 166, Fed. Case No. 17.133. 
 
 26— Schrauder v. Beresford & 28— Field, .T., in Kidd v. Johnson, 
 
 Co., Browne, Trademarks, 661. 100 U. S. 617-620.
 
 62 HOPKINS ON TRADEMARKS. [§ 30 
 
 avail as against a bona fide purchaser from the assignee, 
 buying without notice.-^ 
 
 ^ 29. Acquisition by an alien.— In 1844 Chancellor Wal- 
 worth announced that in the interposition of equity for 
 the protection of trademark rights "there is no difference 
 between citizens and aliens. "^'^ This is also the rule in 
 Engiand,^^ Scotland,^- Canada,^^ and India.^^ But it has 
 been held that a foreigner has no common-law right 
 to a trademark in the United States as against a citizen 
 who has adopted a similar mark, in good faith, before the 
 alien has sold any goods in this country .^^ 
 
 § 30. Priority of appropriation.— In order to acquire 
 a trademark, its claimant must be its first appropriator, 
 as we have seen; for, as said by Finletter, J., "in no 
 other way can a mark or device indicate 'true origin or 
 ownership. ' ' '^*^ Indeed, Bouvier has defined the right of 
 trademark in these terms; "The right of trademark is 
 said to be best termed an exclusive right arising from 
 first usej"^" and it has been said by the United States 
 
 29 — Oakes v. Tonsmierre, 49 J. 423; Collins Co. v. Walker, 7 
 
 Fed. Rep. 447-452. W. R. 222; Collins Co. v. Reeves, 
 
 30— Taylor v. Carpenter (3), 11 28 L. J. Ch. 56; How© v. McKer- 
 
 Paige Ch., 292-296; 3 Story, 458; nan, 30 Beav. 547. 
 
 2 Wood. & M. 1; Cox, 45. This is 32— Singer Mfg. Co. v. Kimball 
 
 the general rule in the United & Morton, Ct. Sess. Cas. (3d ser.) 
 
 States. La Croix v. May, 15 Fed. XI. 267. 
 
 Rep. 236; Lemoine v. Gauton, 2 33 — Davis v. Kennedy, 13 Grant, 
 
 E. D. Smith, 343; Cox, 142; Coats Up. Can. Ch. 523. Pabst Brewing 
 
 V. Holbrook, 2 Sandf. Ch. 586; Co. v. Ekers, Rap. Jud. Que. 21 C. 
 
 Cox, 20; Coffeen v. Brunton, 4 S. 545. 
 
 McLean, 516; Cox, 82; and under 34 — Orr-Ewing v. Chooneeloll 
 a criminal act against counterfeit- Mullick, Cor. 150; Orr-Ewing v. 
 ing trademarks, a conviction was Grant, Smith & Co., 2 Hyde, 185. 
 sustained by the Missouri supreme 35— Richter v. Anchor Remedy 
 court where the defendant counter- Co., 52 Fed. Rep. 455. 
 feited the mark of an English 36— Sheppard v. Stuart, 13 Phil, 
 manufacturer. State v. Gibbs, 56 117; Price & Steuart, 193-200. 
 Mo. 133. 37— Bouvier, Diet., title "Trade- 
 Si — Collins V. Cowen, 3 K. & .T. marks." 
 428; Collins Co. v. Brown, 3 K. &
 
 § 30] THE ACQUISITION OF A TR^VDEM.VRK. 63 
 
 supreme court that "The exclusive right to the use of a 
 mark or device chiimed as a trademark is founded on 
 priority of appropriation; that is to say, the claimant of 
 a trademark must have been the first to use or employ 
 the same on lilvo articles of production. "^'^ There must 
 necessarily be such a use as qualifies the mark as an in- 
 dication of the origin and ownership of the goods to 
 which it is applied. If the same mark had been in prioi* 
 use by another at the same place or another locality near 
 enough to start a similar right, the second user could 
 have no trademark right to it.^'-* "In order that the 
 claimant of the trademark may primarily acquire the 
 right of property in it, it must have been originally 
 adopted and used by him— that is, the assumed name 
 or designation must not be one that was then in actual 
 use by others; and such adoption and use confer upon 
 liim the right of property in the trademark. "■'^ A trade- 
 mark having no necessary relation to invention or dis- 
 covery,^^ it is the party who first actually uses a mark, 
 and not the one who first thought of it or designed it, that 
 is entitled to protection in its use as a trademark.^- A 
 mere declaration of intention to use a certain mark in 
 the future does not create a right to its use as a trade- 
 mark, for such right can only originate with the actual 
 
 38— Columbia Mill Co. v. Alcorn, tate or' Bassett, 60 MSS. D. Sept. 
 
 150 U. S. 460. See also Manitowoc 1896. 
 
 Mfg. Co. V. Dickerman, 57 Off. .<The right to a trademark does 
 
 Gaz. 1721. j^qI^ depend upon originality, even 
 
 39— Tetlow V. Tappan, 85 Fed. ^s against the originator of the 
 
 Rep. 774; Hyman v. Soils Cigar characteristic use." Holmes, C. J.. 
 
 Co.. 4 Colo. App. 475. jn ^^.t v. Tucker, 178 Mass. 493; 
 
 40— Derringer v. Plate, 29 Cal. 59 n. E. Rep. 1111; Citing Monson 
 
 292; Cox, 324. y Boehm, L. R. 26 Ch. D. 398, 407, 
 
 41— Trademark Cases, 100 U. S. 408; Levy v. Waitt (2), 10 C. C. 
 
 82. A. 227, 61 Fed. Rep. 1008. 25 L. 
 
 42— George v. Smith, 52 Fed. R. A. 190; Julian v. Hoosier Drill 
 
 Rep. 830; Trisdorfer & Co. v. Es- Co.. 78 Ind. 408, 412.
 
 64 HOPKINS ON TRADEMARKS. [§30 
 
 use of the mark in commerce."*^ And it lias been held in 
 England, by Lord Justice Cairns, that there can be no 
 right of trademark until the goods bearing the mark are 
 actually upon the market, and that it cannot be pro- 
 tected before that time, even though the goods to which 
 it is to be applied are in the course of manufacture, and 
 the claimants of the mark have made expenditures in 
 advertising it.^^ The right to the mark must relate back 
 to its first use. One cannot imlawfully appropriate a 
 trademark belonging to another, and subsequently ac- 
 quire a good title thereto by the abandonment thereof by 
 the first proprietor.^5 But a mark once abandoned is 
 open to appropriation by another who adopts it subse- 
 quently in good faitli.^*^ 
 
 As a matter of practice, inasmuch as the plaintiff must 
 show title in order to make a case, evidence of the fact 
 that he or his predecessor in title was the first to appro- 
 priate the mark to the class of goods for which he claims 
 it as a trademark, is usually a part of the prima facie 
 case. In a New York case, it was shown in defense that 
 prior to the date when plaintiff first labeled cigars with 
 the label in controversy, certain label manufacturers had 
 sold the same label to other jJersons in the trade. Injunc- 
 tion was denied upon the ground that such evidence 
 negatived plaintiff's claim of exclusive title.^^ 
 
 It is now well established that priority of adoption 
 alone does not necessarily determine the ownership of the 
 mark. The use of "the mark by one claimant may be "so 
 transitory, spasmodic, and inconsiderable," as not to 
 vest title in the user as against one whose use has been 
 
 43 — Schneider v. Williams, 44 N. 45 — O'Rourke v. Central City 
 
 J. Eq. 391; 14 Atl. Rep. 812; 44 Soap Co., 26 Fed. Rep. 576-578. 
 
 Off. Gaz. 1400. 46— Brower v. Boulton, 53 Fed. 
 
 44— Maxwell v. Hogg, L. R. 2 Rep. 389. 
 
 Ch. 307; 36 L. J. Ch. 433; 16 L. 47— Wagner v. Daly, 97 Hun 
 
 T. N. S. 130; Seb. 264. 477, 22 N. Y. Supp. 493.
 
 § 30] THE ACQUISITION OF A TR.VDEMARK. 65 
 
 "long continued, and universally recognized. ""^^ As 
 Judge Elmer B. Adams has stated it, *'TLe right to a 
 trademark at common law, independent of the registra- 
 tion statute, is not created by invention or priority of 
 adoption alone. A word, sjinbol, or device, to be a valid 
 trademark constituting a right of proi)erty, must have 
 been used by the owner in connection with the sale of his 
 goods for such length of time, and under such circum- 
 stances, as indicates to the trade that the goods in con- 
 nection with which it appears are his goods, as distin- 
 guished from those of other manufacturers or dealers. 
 The mere adoption of such word, symbol, or device, un- 
 accompanied by such a use, is not sufficient to create an 
 exclusive right thereto. "^^ 
 
 48— Heublein v. Adams, 125 Fed. To the same effect see Tetlow v. 
 
 Rep. 782, 785. Tappan, 85 Fed. Rep. 774, 775; 
 
 49— Macmahan Pharmacal Co. v. Levy v. Waitt, 10 C. C. A. 227, 61 
 
 Denver Chemical Mfg. Co. 113 Fed. Rep. 1008, 25 L. R. A. 190. 
 Fed. Rep. 468-47C; 51 C. C. A. 302.
 
 CHAPTER ni. 
 
 WHAT CONSTITUTES A VALID TRADEMARK. 
 
 § 31. The general rule.— Having seen in the preced- 
 ing chapters something of the general requisites of a 
 valid trademark, we now approach the subject of the 
 more exact tests to be applied in determining its valid- 
 ity. It is the general rule that a mark must be truthful 
 and unobjectionable on the ground of being a generic 
 term.^ 
 
 § 32. It must be truthful.— This rule is apparently 
 simple, yet it has given rise to much discussion and some 
 apparent conflicts in the decisions. Honest competition 
 is the requirement of the chancellor, and he is just as 
 ready to dismiss the bill of a complainant whose trade- 
 mark is calculated to deceive the public into a belief 
 that his goods are something other than they actually 
 are, as he is to enjoin the defendants where he has in- 
 fringed an honest trademark. The modern law of unfair 
 trade is a perfect superstructure of ethical principles, 
 founded upon the basis of all ethics— honesty. In no 
 class of cases is the rule that he who comes into a court 
 of equity must do so with clean hands more rigidly ap- 
 plied.^ It is not material whether the words or symbols 
 used as trademark contain the deceptive or untruthful 
 statement. Indeed the dishonest matter is usually for- 
 eign to the mark itself, and contained in other matter 
 used in advertising or describing the goods sold under 
 the mark. 
 
 1 Prince Mfg. Co. v. Prince's 2 — Dadirrian v. Yacubian, 98 
 
 Metallic Paint Co. (2), 135 N. Y. Fed. Rep. 872-876. 
 24, 31 N. E. Rep. 990. 
 
 66
 
 § 33] WHAT CONSTITUTES A VALID TRADEMARK. 67 
 
 § 33. A dishonest label will invalidate.— We find that 
 where a distiller mixed nearly thirty-six per cent, of 
 other whiskies with his own brand, and sold the blend 
 under a label formerly used upon whisky of his own dis- 
 tillation, with cautions to avoid imitations and asserting 
 that the mixture was "bottled at the distillery warehouse 
 and is warranted perfectly pure and unadulterated," an 
 injunction was refused because of this misrepresentation. 
 This decision, whose tendency is more far-reaching than 
 that of Manhattan Medicine Co. v. Wood,^ seems on the 
 reading of the facts to impose a hardship on the owners 
 of the mark, Jas. E. Pepper & Co. The interest of the 
 complainant was derived under a contract with that firm 
 giving him the entire control of their trade in bottled 
 whisky. The proof showed that up to and including 
 the 3^ear 1891 the Pepper Company bottled nothing un- 
 der the gold trade label partially described above used 
 by them but "Old Pepper" whisky distilled by them, 
 but that after November, 1891, the demand for the dis- 
 tillery bottling became so great that they could not sup- 
 ply it with the output of their own distillery and therefore 
 bought other whiskies shown to be more expensive, older 
 and made by the same formula as their own, and blended 
 these whiskies with their own, and bottled the resulting 
 blend under the same label and trademark. Here, if ever, 
 one would think equity would relax its rule, and, as the 
 public had not suffered by the complaixiant 's acts, would 
 continue to protect the trademark. But the learned court 
 thus tersely applies the principles: "Pepper offers as an 
 excuse for bottling a mixture that the demand for his 
 goods had so increased that he could not supply it with 
 Pepper whisky. What was this demand for? Plainly 
 for pure and unadulterated Pepper whisky, bottled at the 
 distillery. If this could not be honestly supplied, then it 
 could not be supplied at all in such a way as to keep the 
 
 3—108 U. S. 218.
 
 5S HOPKINS ON TR^VDEMARKS. [§ 34 
 
 business within the protection of a court of equity. Re- 
 lief is refused to Pepper and his privies because of his 
 misrepresentations to the public."^ Thus is emphasized 
 the statement of Mr. Justice Field that the protection of 
 equity is extended to the owner of a trademark '' not only 
 as a matter of justice to liiru, but to prevent imposition 
 upon the public. ' '^ There are a number of cases in which 
 the misrepresentation has been held to be so slight and 
 immaterial as not to disentitle the complainant to relief.^ 
 Thus, a claim by the manufacurer of a patent medicine 
 that it permanently overcomes habitual constipation, will 
 not, even if untrue, disentitle the plaintiff from relief 
 in equity, the court taking judicial notice of the fact that 
 the effect of any medicine for constipation is largely 
 dependent upon the constitution and habits of the per- 
 son treated.'^ 
 
 The use of the words ''Sole Manufacturer" by a dealer 
 who does not manufacture, but has the article produced 
 for him by another, has been held not to debar the user of 
 the trademark from equitable relief,* as has the addition 
 of the word ''distillers" to the firm name of former pro- 
 prietors of a distillery owned by a complainant.^ 
 
 § 34. The cases of false representation in connection 
 with trademarks.— In 1837 the English High Court of 
 Chancery in Pldding v. Hoiv, announced that it could not 
 
 4 — Krauss v. Jos. R. Peebles' Amoskeag Manufacturing Co. v. 
 
 Sons Co., 58 Fed. Rep. 584-596. An Trainor, 101 U. S. 51. 
 
 English case resembling this as to 6 — Tarrant & Co. v. Hoff, 71 Fed. 
 
 the facts is Starey v. Chilworth Rep. 163; affirmed, 76 Fed. Rep. 
 
 Gunpowder Co., L. R. 24 Q. B. D. 959, 22 C. C. A. 644; Centaur Co. 
 
 90. V. Robinson, 91 Fed. Rep. 889; 
 
 Relief will be denied in such Ransom v. Ball, 7 N. Y. Supp. 238. 
 
 cases although the article is ac- 7— California Fig Syrup Co. v. 
 
 tually as good as it is represented Worden, 95 Fed. Rep. 132-134. 
 
 to be. Prince Mfg. Co. v. Prince's 8— Gluckman v. Strauch, 91 N. 
 
 Metallic Paint Co. (2), 135 N. Y. Y. Supp. 223. 
 
 24, 31 N. E. Rep. 990. 9— Frazier v. Bowling, 18 Ky. L. 
 
 5— Manhattan Medicine Co. v. Rep. 1109, 39 S. W. Rep. 45. 
 Wood, 108 U. S. 218-223; citing
 
 § 34] WHAT CONSTITUTES A VALID TRADEMARK. 69 
 
 interfere in behalf of a plaintiff who had "thought fit 
 to mix up that which may be true with that which is 
 false" in his labels and advertisements.^^ The Court 
 of Appeals of New York in a similar case in 1848, by 
 Gardiner, J., observed laconically, "The privilege of de- 
 ceiving the i)ublic, even for their own benefit, is not a 
 legitimate subject of commerce; and at all events, if the 
 maxim that he who asks equity must come with pure 
 hands is not altogether obsolete, the complainant has 
 no right to invoke the extraordinary jurisdiction of a 
 court of chancery in favor of such a monopoly. "^^ Prior 
 to this, an injunction was refused where the mark in 
 question was applied by the complainant to a "quack" 
 medicine.^- "Balm of Thousand Flowers," the name of 
 a cosmetic, being deceptive, its infringement by a defend- 
 ant assuming the name "Balm of Ten Thousand Flow- 
 ers" was not enjoined,''^ although the same mark was 
 held valid and the rule announced that ' ' the public should 
 be left to its own guardianship" in Fet ridge v. Mer- 
 chant }^ But the doctrine generally is that of Pidcling v. 
 HowP 
 
 10— Pidding V. How, 8 Sim. 477; 212; 36 How. Pr. 33; Cox, 434; 
 
 Cox, 640; followed in Perry v. Palmer v. Harris, 60 Pa. St. 156; 
 
 Trueflt, 6 Beav. 66; Cox, 644. 8 Am. L. Reg. N. S. 137; Cox, 
 
 11— Partridge v. Menck, 2 Sandf. 523; Dixon Crucible Co. v. Gug- 
 
 Ch. R. 622; 2 Barb. Ch. R. 101; 1 genheim, 3 Am. Law T. 228; 2 
 
 How. App. Cas. 558; Cox, 72. Brewster, 321; Cox, 559; Leather 
 
 12 — Towle V. Spear, 7 Penn. L. Cloth Co. v. American Leather 
 
 J. 176; Cox, 67; followed in Heath Cloth Co., 11 Jur. N. S. 513; Cox, 
 
 V. Wright, 3 Wall. Jr., 1; Cox, 154. 688; 11 H. L. C. 543; Flavel v. 
 
 13 — Fetridge v. Wells, 4 Abb. Harrison, 10 Hare, 467; Morgan v. 
 
 Pr. 144; 13 How. Pr. 385; Cox, 180. McAdam, 36 L. J. Ch. 228; Ford 
 
 14—4 Abb. Pr. 156; Cox, 194. v. Foster, L. R. 7 Ch. D. 611; 41 
 
 15— Supra, 8 Sim. 477; Cox, 640. L. J. Ch. 682; Re Saunion & Co.. 
 
 The rule is conceded, announced Cox, Manual, No. 625; Estcourt v. 
 
 or followed in Hobbs v. Francais, The Estcourt Hop Essence Co., 31 
 
 19 How. Pr. 567; Cox, 287; Phalon L. T. N. S. 567; L. R. 10 Ch. D. 
 
 V. W^right, 5 Phila. 464; Cox. 307; 276; 44 L. J. Ch. 223; 32 L. T. N. 
 
 Smith V. Woodruff, 48 Barb. 438; S. 80; 23 W. R. 213; Joseph v. 
 
 Cox, 373; Curtis v. Bryan, 2 Daly, Macowsky, 96 Cal. 518; Merlden
 
 70 HOPKINS ON TRADEMARKS. [§ 34 
 
 The general rule concerning the effect of false represen- 
 tations by the plaintiff in the use of the mark upon his 
 right to relief in equity, has been comprehensively stated 
 by Mr. Justice Shiras, as follows: "When the owner 
 of a trademark applies for an injunction to restrain the 
 defendant from injuring his property by making false 
 representations to the public, it is essential that the plain- 
 tiff should not in his trademark, or in his advertisements 
 and business, be himself guilty of any false or misleading 
 representation; that if the plaintiff makes any material 
 false statement in connection with the property which he 
 seeks to protect, he loses his right to claim the assistance 
 of a court of equity; that where any symbol or label 
 claimed as a trademark is so constructed or worded as 
 to make or contain a distinct assertion which is false, no 
 property can be claimed in it, or, in other words, the 
 right to the exclusive use of it cannot be maintained."^® 
 
 For the reasons we have been considering in this chap- 
 ter, the patent office has refused to admit to registration 
 as a trademark for powdered soap ' ' the picture of a bag 
 
 Britannia Co. v. Parker, 39 Conn. Cartmell, 242; Kenny v. Gillet, 70 
 
 454-460; Laird v. Wilder, 2 Bush Md. 574; Siegert v. Abbott (1), 61 
 
 (Ky.), 131; 15 Am. Rep. 707; Con- Md. 276; Parlett v. Guggenheimer, 
 
 nell V. Reed, 128 Mass. 477; 35 67 Md. 542; Palmer v. Harris, 60 
 
 Am. Rep. 299; Wolfe v. Burke, 7 Pa. St. 156; Hoxie v. Cheney, 143 
 
 N. Y. Sup. Ct. 151; 56 N. Y. 115; Mass. 592; 10 N. E. Rep. 713; Clot- 
 
 2 Off. Gaz. 441; Seabury v. Gros- worthy v. Schepp, 42 Fed. Rep. 
 
 venor, Fed. Case No. 12576; 14 Off. 62; California Syrup of Figs Co. 
 
 Gaz. 679; Hennessy v. Wheeler, 69 v. Stearns (2), 73 Fed. Rep. 812; 
 
 N. Y. 271; Piso Co. v. Voight, 4 Buckland v. Rice, 40 Ohio St. 526; 
 
 Ohio N. P. 347; California Syrup Burton v. Stratton, 12 Fed. Rep. 
 
 of Figs Co. V. Stearns (1), 67 Fed. 696-699; Ginter v. Kinney Tobac- 
 
 Rep. 1008; Wood v. Butler, 3 R. co Co., 12 Fed. Rep. 782. 
 P. C. 81; L. R. 32 Ch. D. 247; 16— Clinton E. Worden & Co. v. 
 
 55 L. J. Ch. 377; 54 L. T. 314; California Fig Syrup Co., 187 U. 
 
 Cartmell, 349; Re Heaton's Trade- S. 516, 528; 47 L. ed. 282, 288. To 
 
 mark, L. R. 27 Ch. D. 570; 53 L. the same effect see Uri v. Hirsch, 
 
 J. Ch. 959; 51 L. T. 220; 32 W. R. 123 Fed. Rep. 568; Millbrse Co. v. 
 
 951; Cartmell, 160; Newman v. Taylor, (Cal.), 37 Pac. Rep. 235, 
 
 Pinto, 4 R. P. C. 508; 57 L. T. 31; 25 L. R. A. 193.
 
 § 35] WHAT CONSTITUTES A VALID TRADEMARK. 71 
 
 having the open end thereof closed by a tie," the commis- 
 sionei' holding that such a mark was necessarily decep- 
 tive or descriptive, and in either event was not a valid 
 trademark .^^ 
 
 § 35. Manhattan Medicine Co. v. Wood.— This de- 
 cision, the language of whose oi)iuioii has been more 
 often cited in support of the proposition under consider- 
 ation than any other, was based on this statement of 
 facts. The complainant derived all its trade rights in 
 and to a proprietary medicine styled "Atwood's Genuine 
 Physical Jaundice Bitters" from its original manufac- 
 turer, Moses Atwood, who lived at Georgetown, Massa- 
 chusetts, and manufactured it there. The court says: 
 "It is not honest to state that a medicine is manufac- 
 ured by Moses Atwood, of Georgetown, Massachusetts, 
 when it is manufactured by the Manhattan Medicine 
 Company, in the city of New York."^^ On these facts 
 the protection of their mark was refused complainants. 
 
 § 36. The similar cases— Assignment must be made 
 public in conjunction with the trademark, when.— Fol- 
 lowing Manliattan Medicine Co. v. Wood, the Court of 
 Apj)eals of ]\Iaryland held''-' where the label used by 
 the manufacturers of Angostura Bitters did not disclose 
 the death of Dr. J. G. B. Siegert, their originator, that 
 the label was not truthful and its infringement would 
 not be enjoined. And the same rule has been applied 
 as against one continuing to use the name of a prede- 
 cessor in business, whose label does not announce the 
 change.-^ The rule in this regard is held by McKenna, 
 
 17— Ba? par(!e Martin, 89 Off. Gaz. 19— Seigert v. Abbott (1), 61 
 
 2259. "A word to be used as a Md. 276. The same doctrine is 
 
 trademark must obviously be followed in Sherwood v. Andrews, 
 
 meaningless as applied to the 5 Am. L. Reg. N. S. 588; Seb. 263: 
 
 goods, so as to be neither descrip- Stachelberg v. Ponce, 23 Fed. Rep. 
 
 tive nor deceptive." Duell, Com- 430; Price & Steuart, 967. 
 
 missioner, in Ex parte Pearson To- 20— Helmbold v. H. T. Helmbold 
 
 bacco Co., 85 Off. Gaz. 287. Mfg. Co., 53 How. Pr. 453. 
 
 18 — Manhattan Medicine Co. v. 
 Wood, 108 U. S. 218.
 
 "^2 HOPKINS ON TRADEMARKS. [§37 
 
 J., to be that where a trademark is a mark of special 
 qualities, due to superior material, processes, skill and 
 care exercised by the originator thereof, an assignee of 
 the business who continues to use labels which contain 
 the false statement that the goods are being prepared bv 
 the originator is not entitled to equitable relief against 
 an infringer. 2^ 
 
 §37. Unauthorized use of words "patent" or "pat- 
 ented."— The use of the words "patent" or ''patented," 
 in connection with or as part of a trademark, where the 
 article identified by the mark is in fact not covered by 
 letters patent, has given rise to many interesting de- 
 cisions. All of these matters of untruthful representa- 
 tion are to be tested by the question of whether or not 
 they are direct, or "purely collateral" misrepresenta- 
 tions.-2 Where the letters patent of the United States 
 covering an alleged improvement in jars had been de- 
 clared invalid by judicial decision, but the manufacturer 
 continued to designate the jars "Mason's Patent" jars, 
 it was held that the fact deprived the manufacturer of 
 equitable relief against an infringement.^^ In England 
 
 21 — Alaska Packers' Association R. 311; Cox, Manual, C84. In 
 
 V. Alaska Imp. Co., 60 Fed. Rep. this case tlie false use of the word 
 
 103. The supreme court of Penn- "patentee," used by the complain- 
 
 sylvania has held the contrary, ant in advertisements, was held to 
 
 saying that an assignee is entitled be a collateral misrepresentation 
 
 to relief, even though he has not which did not disentitle him to a 
 
 designated himself as assignee in remedy in equity against an infrin- 
 
 making use of the mark. Fulton ger. 
 
 V. Sellers, 4 Brewst. 42. The ten- 23— Consolidated Fruit Jar Co. 
 
 dency of the later rulings is to up- v. Dorflinger, Fed. Case No. 3129; 
 
 hold the use of the mark by the 6 Fed. Cas. 339; 2 Am. Law T. 
 
 asignee, except where his failure Rep. N. S. 511; Cox, Manual, 444. 
 
 to disclose the fact of the assign- The same rule is announced in 
 
 ment is equivalent to misrepre- England in Leather Cloth Co. v. 
 
 sentation and falsehood. See Pills- Lorsont, L. R. 9 Eq. 345; 39 L. J. 
 
 bury v. Flour-mills Co., 64 Fed. Ch. 86; 21 L. T. N. S. 661; 18 W. 
 
 Rep. 841-850, 12 C. C. A. 432. R. 572; Cox, Manual, Case No. 
 
 22— Ford v. Foster, L. R. 7 Ch. 324; Nixey v. Roffey, W. N. 1870, 
 
 D. 611; 27 L. T. N. S. 220; 20 W. p. 227; Cox, Manual, Case No. 343.
 
 § 37] WHAT CONSTITUTES A VALID TRADEMARK. 73 
 
 a plaintiff used on his label the words "Royal letters 
 patent," and supported the use of the words by showing 
 that for many years he had paid the stamp duty on "pat- 
 ent medicines," and was only using the labels remaining 
 on hand at the time he discovered his medicines did not 
 belong to that class, lie was denied an injunction against 
 an infringer of his label.-* 
 
 The reason for the particular disfavor witli wliich 
 equity regards this class of cases is that, by using words 
 indicating that an article is patented where it is not, the 
 owner of the mark is seeking to obtain the benefits of a 
 monopoly, where he has none. As stated by Vice-Chan- 
 cellor Wood, in Morgan v. McAdamr^ "x\ll those who are 
 induced to buy these crucibles thus described as ' Patent 
 Plumbago Crucibles ' are to a certain extent deceived, 
 because they are led to believe that the article is pro- 
 tected by a patent, and thus may be induced to purchase 
 it from the plaintiff under the belief that there is a pat- 
 ent, and that the plaintiffs, or at least some limited num- 
 ber of persons, are the only persons authorized to sell it; 
 and further, they are led to believe that if they should 
 be minded to set up any manufactory of the same kind 
 for themselves, they would be unable to do so in conse- 
 quence of the plaintiffs being the possessors, either by 
 way of license or ownership, of a patent preventing the 
 world at large from imitating the article which is sold 
 by them under this particular designation." 
 
 And although in another English case^^ a plaintiff was 
 held entitled to recover* in an action at law in a case of 
 this kind, where his father had held a patent held to be 
 invalid (as in Consolidated Fruit Jar Co. v. Dorfinger, 
 
 24— Lamplough v. Balmer, W. N. 467; 22 L. J. Ch. S66; 17 Jur. 368; 
 
 1867. p. 293. 1 W. R. 213; Cox, Manual. Case 
 
 25—36 L. J. Ch. 228; Cox, Man- No. 116. 
 ual, Case No. 267. Other argu- 26— Sykes v. Sykes, 3 B. & Cr. 
 
 ments are used by the same judge 541. 
 In Flavel v. Harrison, 10 Hare,
 
 74 HOPKINS ON TRADEMARKS. [§ 38 
 
 supra, where the contrary rule is announced), the rule is 
 generally that, where no valid patent has ever existed, 
 the use of words indicating the contrary will debar the 
 plaintiff from relief in equity.^^ 
 
 Mr. Justice Fuller has accurately defined the rule un- 
 der consideration in the following language: "No right 
 to a trademark which includes the word 'patent', and 
 which describes the article as 'patented', can arise when 
 there is and has been no patent; nor is the claim a valid 
 one for the other words used, when it is based upon their 
 use in connection with that word."^^ 
 
 But where there has been a valid patent upon the sub- 
 ject-matter of the trademark, different issues arise. 
 
 In England it has been held that the fact that a plain- 
 tiff put a mark upon his goods with the addition of the 
 words ''trademark," when his mark was not registered, 
 did not amount to such a misrepresentation as to deprive 
 him of the right to an injunction, because the use of the 
 words "trademark" did not necessarily carry with it 
 the implication that the mark had been registered.-^ 
 
 § 38. Use of such word as a trademark where there 
 has been a patent.— The last clause of Section 4901, Ee- 
 vised Statutes of the United States, declares that "ev- 
 er}^ person who in any manner marks upon or affixes to 
 any unpatented article the w^ord 'patent', or any word 
 importing that the same is patented, for the purpose of 
 deceiving the public shall be liable for every such of- 
 fence to a penalty of not less than $100, with costs; one- 
 half of said penalty to the person who shall sue for the 
 same, and the other to the use of the United States, to 
 
 27 — Leather Cloth Co. v. Ameri- v. Rahtjen's American Composi- 
 
 can Leather Cloth Co., 11 Jur. N, tion Co., 183 U. S. 1, 8, 46 L. ed. 
 
 S. 513; Cox, 688; 11 H. L. C. 543; 49; reversing Rahtjen's Composi- 
 
 Cox, Manual, Case No. 223. See, tion Co. v. Holzapfel's Composi- 
 
 per contra, Stewart v. Smithson, tion Co., 41 C. C. A. 329, 101 Fed. 
 
 1 Hilt. 119; Cox, 175. This case Rep. 257. 
 cannot be regarded as of authority. 29 — Sen Sen Co. v. Britten, L. 
 
 28— Holzapfel's Compositions Co. R. (1899) 1 Ch. D. 692.
 
 § 38] WHAT CONSTITUTES A VALID TR.VDEMARK. 75 
 
 be recovered by suit in any district court of the United 
 States witliin wliose jurisdiction sucli offense may liave 
 been committed." It is not an offense under this law to 
 affix to an article the word ''patented" and the date of 
 an expired patent, for the reason that the offense is not 
 complete unless the mark affixed indicates that there 
 is a present subsisting patent upon the article.'^' 
 
 In Cheavin v. Walker,^^ Jessel, M. R., observes with 
 regard to the effect of the use of the word "patent" by 
 the plaintiff: ''The question was fully discussed in the 
 case in the House of Lords, Leather Cloth Co. v. Ameri- 
 can Leather Cloth Co., 11 H. L. C. 543,^^ and I have noth- 
 ing to add to what was there said. No doubt a man may 
 use the word 'patent' so as to deceive no one. It may 
 be used so as to mean that which was a patent, but is not 
 so now. In other words, you may state in so many words, 
 or by implication, that the article is manufactured in 
 accordance with a patent which has expired. But if you 
 suggest that it is protected by an existing patent, you 
 cannot obtain the protection of that representation as a 
 trademark. Protection only extends to the time allowed 
 by the statute for the patent, and if the court were after- 
 wards to protect the use of the word as a trademark, it 
 would be in fact extending the time for protection given 
 by the statute. It is therefore impossible to allow a man 
 who has once had the protection of a patent to obtain a 
 further protection by using the name of his patent as a 
 trademark." 
 
 "But, further, no man can claim a trademark in a 
 falsehood. It is a falsehood to represent that the patent 
 is still subsisting." 
 
 And Kekewich, J., said in Re Adams' Trade- 
 
 30— Wilson V. Singer Mfg. Co., 92; Seb. 528. See also Nixey v. 
 
 12 Fed. Rep. 57. RofEey, W. N. 1870, p. 227; Seb. 
 
 31— L. R. 5 Ch. D. 850; 46 L. J. 343. 
 
 Ch. 686; 36 L. T. 938; Cartmell, Zl—Ante, § 37.
 
 76 IIOPKIXS ON TRADEMARKS. [§ 38 
 
 marks :^^ "The word 'patent' means not necessarily that 
 there is now current a patent of protection, but that the 
 article in question is one of those articles which had the 
 merits of utility and novelty, and therefore received the 
 protection of the crown by letters patent." 
 
 There are other decisions, however, not so clear as to 
 facts, and apparently not in harmony with Cheavin v. 
 Walker, supra. Five years after that case. Bacon, V. C, 
 in a case where the plaintiffs had stamped the word 
 "patent" on plowshares manufactured by them after 
 their patent had expired, said " (they) make their shares 
 according to the invention in the expired patent, as 
 everybody else may; but to suggest that they have in 
 any manner claimed anything under or in respect to that 
 patent, and that they have done this fraudulently and to 
 deceive the public, is merely desperate, and opposed to 
 the truth of the case."^^ Yet it does not appear in the 
 report wherein this differed from the use of the word 
 "patent" as criticized in Cheavin v. Walker. In another 
 case=^^ Vice-Chancellor Wood said: "It does not follow, 
 because upon the expiration of the patent the article and 
 its known description become known to all, that there- 
 fore all would become entitled to use the label by which 
 the patentees had been accustomed to distinguish their 
 goods. ' ' This he held in regard to a label used on pack- 
 ages of pins marked " Taylor & Co.'s Patent Solid-headed 
 Pins;" the manufacturer continuing to use the label 
 after the expiration of his patent. The conclusion of the 
 learned Vice-Chancellor was that "The public may have 
 
 33_9 R. p. c. 174; 66 L. T. 610; patent have ever issued, but the 
 
 Cartmell, 43. exclusive right of manufacture of 
 
 34 Ranscme v. Graham, 51 L. baskets has been secured by reg- 
 
 J. Ch. 897; 47 L. T. 218; Cartmell, istration of their design. Cave v. 
 
 279. Same rule in Stewart v. Myers, Seton (5th ed.), 539; Cox, 
 
 Smithson, 1 Hilt. 119; Cox, 175; Manual, Case No. 304. 
 
 Leather Cloth Co. v. Hirschfeld, 1 35— Edelsten v. Vick, 11 Hare, 
 
 N. R. 551; Cox, Manual, Case No. 78; 1 Eq. Rep. 413; 18 Jur. 7; Cox, 
 
 214. And even where no letters Manual, Case No. 119.
 
 § :J8J WLIAT CONSTITUTES A V.U.ID TRADEM.UtK. 77 
 
 acquired confidence in that particular label, and that con- 
 fidence may have given a value to it which the patentees 
 may be entitled to have after the expiration of their 
 patent. ' ' 
 
 In another case it was held that where plaintiffs 
 labeled their thread "Patent Thread," they would not 
 be denied relief against an infringer, because the word 
 *' patent" by long usage had come to denote the char- 
 acter of the thread, and did not imply the existence of 
 any patent.'^" 
 
 Of course the holder of letters patent may describe 
 himself as ''patentee" and his goods as "patented" even 
 where he doubts the validity of the patent, and its valid- 
 ity has been questioned by others.''^ And it has been held 
 in New York that one who applies for letters patent is 
 not disentitled from relief against an infringer by reason 
 of his describing the goods as "patented" after his ap- 
 plication had been filed, but before the issuance of letters 
 j)atent.^^ Where the plaintiffs used their label bearing 
 the words "specially registered trademark" after appli- 
 cation, but before registration, the English Court of Ap- 
 peals granted an interlocutoiy injunction against an in- 
 fringer, but expressly said in their opinion that they re- 
 frained from finally deciding the question whether that 
 misrepresentation prima facie destroj'ed plaintiff's right 
 to protection.^^ 
 
 It will be seen, therefore, that the cases discussed in 
 this and the next jTi'eceding section are for the greater 
 part English, and their reasoning is rather confused. 
 The surest conclusion to be reached by an examination 
 of the cases in this section is that of Lord Kingsdown, in 
 Morgan v. McAdam:*^ "Of course it would be better, 
 
 36— Marshall v. Ross, L. R. 8 38— Lauferty v. Wheeler, IG 
 
 Eq. 651; 39 L. J. Ch. 225; 21 L. How. Pr. 488; 11 Daly. 194. 
 
 T. N. S. 260; 17 W. R. 1086; Cox, 39— Read v. Richardson, 45 L. T. 
 
 Manual, Case No. 316. 54; Cartmell, 281. 
 
 37— Blakey v. Latham, 85 L. T. 40—36 L. J. Ch. 228; Cox, Man- 
 
 (Journal), 47. ual. No. 267.
 
 78 HOPKINS ON TRADEMARKS. [§ 39 
 
 aud those wlio are inclined to act with scrupulous hon- 
 esty would take care, to put the date of their patent, 
 which would obviate all difficulty, upon the articles 
 which they designate as patented." Judge Kohlsaat, in 
 denying a motion for preliminary injunction, based his 
 decision upon the fact that the complainant, though not 
 marking the article itself "patented," had issued circu- 
 lars stating that it was patented, after the patent had ex- 
 pired."*^ 
 
 One who issues circulars or uses markings on merchan- 
 dise falsely indicating the goods dealt in by him to have 
 been made under a particular patent will be enjoined at 
 the instance of the owner of the patent.^ ^ Y/here there 
 has been a patent, he who has manufactured a trade- 
 marked article under the patent during its lifetime, al- 
 though he has lost the exclusive right to the use of the 
 trademark upon the expiration of the patent, may yet en- 
 join one from using the mark upon an article not made 
 according to the expired patent.'*^ Where the complain- 
 ant had falsely advertised that the method of applying 
 its name to silk dealt in by it was patented, a preliminary 
 injunction against an infringer was refused because of 
 the misrepresentation.^^ 
 
 §39. Names of patented articles.— The general rule 
 as to the name applied to a patented article during the 
 life of the patent, is that upon the expiration of the 
 patent, the public acquires the right to make, use, and 
 sell the patented article, and to distinguish it by the name 
 which it bore during the life of the patent.^^ 
 
 41— Preservaline Mfg. Co. V. Hel- Sterling Silk Co., (N. J. Ch.), 46 
 
 ler Chemical Co., 118 Fed. Rep. Atl. Rep. 199. 
 
 103. 45 — Fairbanks v. Jacobus, Fed. 
 
 42— Washburn & Moen Mfg. Co. Case No. 4608, 14 Blatchf. 337; 
 
 V. Haish, Fed. Case No. 17217. Singer Mfg. Co. v. Stanage, 6 Fed. 
 
 43— Singer Mfg. Co. v. Hippie, Rep. 279; Adee v. Peck Bros. & 
 
 109 Fed. Rep. 1-52. Co., 37 Fed. Rep. 209; Singer 
 
 44— Stirling Silk Mfg. Co. v. Mfg. Co. v. June, 163 U. S. 169;
 
 § 39] WHAT CONSTITUTES A V.\1,ID TRADEMARK. 79 
 
 In the leading case upon this subject, Mr. Justice 
 "White, speaking for the United States Supreme Court, 
 explained the reason of the rule as follows: "It is self- 
 evident that on the expiration of a i)atent the monoi)oly 
 created by it ceases to exist, and the right to make the 
 thing formerly covei'ed by the patent becomes public 
 property. It is upon this condition that the patent is 
 granted. It follows, as a matter of course, that on the 
 tennination of the patent there passes to the public the 
 right to make the machine in the form in which it was 
 constructed during the patent. We may therefore dismiss 
 without further conunent the complaint, as to the foi*m in 
 which the defendant made his machines. It equally fol- 
 lows from the cessation of the monopoly and the falling 
 of the patented device into the domain of things public, 
 that along with the public ownership of the device there 
 must also necessarily pass to the public the generic desig- 
 nation of the thing which has arisen during the monop- 
 oly, in "consequence of the designation having been ac- 
 quiesced in by the owner, either tacitly^ by accepting the 
 
 Wilcox & Gibbs S. M. Co. v. The & Ellis' Trademark, 26 Ch. D. 288; 
 
 Gibbens Frame, 17 Fed. Rep. 623; Singer Mfg. Co. v. June, 41 Fed. 
 
 Singer Mfg. Co. v. Bent, 163 U. Rep. 208; Brill v. Singer Mfg. Co., 
 
 S. 205; Centaur Co. v. Killenber- 41 Ohio St. 127; 52 Am. Rep. 74; 
 
 ger, 87 Fed. Rep. 725; Singer Mfg. Hiram Holt Co. v. Wadsworth, 41 
 
 Co. V. Larsen, 8 Biss. 151, Fed. Fed. Rep. 34; Coats v. Merrick 
 
 Case No. 12902; Burton v. Strat- Thread Co., 36 Fed. Rep. 324; Cen- 
 
 ton, 12 Fed. Rep. 696-700; Good- taur Co. v. Heinsfurter, 84 Fed. 
 
 year Rubber Co. v. Day, 22 Fed. Rep. 955; 28 C. C. A. 581; Loril- 
 
 Rep. 44; Singer Mfg. Co. v. Riley, lard v. Pride, 28 Fed. Rep. 434; 
 
 11 Fed. Rep. 706; Wheeler & Wil- Gaily v. Colt's Patent Fire Arms 
 
 son Mfg. Co. V. Shakespear, 39 L. Mfg. Co., 30 Fed. Rep. 118; Dover 
 
 J. Ch. 36; Tucker Mfg. Co. v. Stamping Co. v. Fellows, 163 
 
 Boyington, Fed. Cas. No. 14229; 9 Mass. 191; 47 Am. St. Rep. 448: 
 
 Off. Gaz. 455; Filley v. Child, 16 Centaur Co. v, Robinson, 91 Fed. 
 
 Blatchf. 376; Fed. Case No. 4787; Rep. 889; Centaur Co. v. Neathery, 
 
 Ralph V. Taylor, L. R. 25 Ch. D. 91 Fed. Rep. 891; Centaur Co. v. 
 
 194; Linoleum Mfg. Co. v. Nairn, Hughes Bros. Mfg. Co., 91 Fed. 
 
 7 Ch. D. 834; Young v. Macrae, 9 Rep. 901; Centaur Co. v. Marshall, 
 
 Jur. N. S. 322; Re Palmer's Trade- 97 Fed. Rep. 785. 
 mark, 24 Ch. D. 504; Re Leonard
 
 so HOPKINS ON TRADEMARKS. [§39 
 
 benefits of the monopoly, or expressly, by his having so 
 connected the name with the machine as to lend comite- 
 nance to the resulting dedication. To say othei'wise 
 would be to hold that, although the public had acquired 
 the device held by the patent, yet the owner of the patent 
 or the manufacturer of the patented thing had retained 
 the designated name which was essentially necessary to 
 vest the public with the full enjojanent of that which has 
 become theirs by the disappearance of the monopoly. 
 In other words, that the patentee or manufacturer could 
 take the benefit and advantage of the patent upon the 
 condition that at its termination the monopoly should 
 cease, and yet when the end was reached disregard the 
 public dedication and practically perpetuate indefinitely 
 an exclusive right. 
 
 ''The public having the right on the expiration of the 
 patent to make the x>atented article and to use its generic 
 name, to restrict this use, either by preventing its being 
 placed upon the articles when manufactured, or by using 
 it in advertisements or circulars, would be to admit the 
 right and at the same time destroy it. It follows, then, 
 that the right to use the name in every form passes to the 
 public with the dedication resulting from the expiration 
 of the patent. 
 
 ''Xor is this right governed by different principles 
 where the name, which has become generic, instead of be- 
 ing an arbitrary one, is the surname of the patentee or 
 original manf acturer. "^^ 
 
 There appears to be an exception to this general rule 
 where the use of the name antedates the existence of the 
 patent, and where it further appears that the name and 
 not the patent gave its value to the article.^^ 
 
 In accordance with the general rule, the patent office 
 has declined to register a trademark which is the name 
 
 46— Singer Mfg. Co. v. June Mfg. 47— Batcheller v. Thomson, 35 
 Co. 163 U. S. 169, 185; 41 L. ed. C. C. A. 532, 93 Fed. Rep. 660, 665. 
 118, 124.
 
 § 39] WHAT CONSTITUTES A VALID TRADEMARK. 81 
 
 of a patented article/** even in association with an arbi- 
 trary^ symbol."*^ 
 
 It is by no means clear what trademarks applied to 
 patented articles, other than mere names or words de- 
 scriptive of the thing patented, will become imhlici juris 
 upon the expiration of the patent. Thus the Supreme 
 Court of Massachusetts has held that where a special 
 word, device or symbol is added to the general descrip- 
 tive name of the article of the patent, it is possible that 
 the trademark right may exist in the combination of the 
 word and the device or sjTnbol, notwithstanding the ex- 
 piration of the patent.^*^ 
 
 In this connection, Lindley, L. J., says ''I do not mean 
 to say that a manufacture!* of a patented article cannot 
 have a trademark not descriptive of the patented article, 
 so as to be entitled to the exclusive use of that mark after 
 the patent has expired, for instance, if he impressed 
 upon the patented articles a grifhn or some other device; 
 but, if his only trademark is a word or set of words de- 
 scriptive of the patented article of which he is the only 
 maker, it appears to me to be impossible for him ever to 
 make out, as a matter of fact, that this mark denotes him 
 as the maker, as distinguished from other makers. "^^ 
 
 In every case of the kind under considea*ation, however, 
 others will be enjoined from using the mark in such a way 
 as to deceive the public into the false belief that they 
 are getting the goods of the original owner of the mark.^^ 
 
 Thus in the leading case, the court found that the 
 Singer Sewing Machine sold by the defendant after the ex- 
 piration of the Singer patent, embodied features not a 
 
 48 — Ex. p, Velvril Co., Ltd. 84 51— Re Palmer's Trademark, L. 
 
 Off. Gaz. 807. R. 24 Ch. D. 504-521. 
 
 49— Holophane Glass Co. 100 Off. 52— Singer Mfg. Co. v. Charle- 
 
 Gaz. 450; Ex p. Farnum & Co. 18 bois, 16 Rap. Jud. Q. C. S. 167; 
 
 Off. Gaz. 412. Centaur Co. v. Link, 62 N. J. Eq. 
 
 50— Dover Stamping Co. v. Fel- 147, 49 Atl. Rep. 828. 
 lows, 163 Mass. 191, 47 Am. St. 
 Rep. 448. 
 6
 
 82 HOPKINS ON TRADEMARKS. [§39 
 
 part of the patented article, and which had been used by 
 the complainant to indicate itself as the manufacturer of 
 the machine; and Mr. Justice White In reversing and re- 
 manding the case directed a decree of iujunction in favor 
 of the complainant, ''perpetually enjoining the defend- 
 ant, its agents, ser\'ants, and representatives, first, from 
 using the word 'Singer' or any equivalent thereto, in 
 advertisements in relation to sewing machines, without 
 clearly and unmistakably stating in all said advertise- 
 ments that the machines are made ])y the defendant, as 
 distinguished from the sewing machines made by the 
 Singer Manufacturing Company, second, also perpetually 
 enjoining the defendant from marking upon sewing 
 machines or upon any plate or device -connected there- 
 with or attached thereto the word 'Singer,' or words 
 or letters equivalent thereto, without clearly and unmis- 
 takably specifying in connection therewith that such 
 machines are the product of the defendant or other manu- 
 facturer, and therefore not the product of the Singer 
 Manufacturing Company. "^^ 
 
 It is manifest, however, that to create this right in the 
 public, two conditions of facts are prerequisite; first, 
 there must have been a patent, second, the patent must 
 have expired. 
 
 "Wliere the owner of the trademark had made an un- 
 successful application for a patent upon the article to 
 which the trademark was applied, Bradley, J., held that 
 he had a valid subsisting right to the trademark upon the 
 rejection of his application, and said "His failure to 
 establish his patent (which would have covered all his 
 rights) ought not to preclude him from falling back on 
 his right to the trademark. ' '^'^ 
 
 In a case where the patent had not expired, Judge 
 Vann, speaking for the Court of Appeals of New York, 
 said: "Assuming that upon the expiration of the patent 
 
 53— Singer Mfg. Co. v. Bent, 163 54— Sawyer v. Kellogg, 7 Fed. 
 U. S. 169, 204, 41 L. ed. 118, 131. Rep. 720. 723.
 
 §40] WHAT CONSTITUTES A VALID TRADEMARK. 83 
 
 any one may use the name, until tliat time arrives, why 
 should the inventor be deprived of a right which, without 
 question, would be liis if lie had not taken out a patent 
 for his invention."^"' 
 
 Where a name indicating a patented article exists, an 
 exclusive licensee for the sale of the patented articles un- 
 der a license to which the defendant is not a party cannot 
 enjoin him from conducting an unfair competition by 
 means of the name; the licensor not being a party to the 
 action, and no infringement of the patent being charged, 
 and the defendant having the right to deal in the articles 
 known by the name.^° If the patent is reissued the trade- 
 mark will be valid during the life of the reissued patent.^^ 
 §40. Generic term, defined.— By ''generic term" 
 (Latin, genus, gcncr; French, genre) is meant a term 
 which may not be appropriated as a trademark because 
 it is too general and comprehensive in its meaning to be- 
 come the monopoly of an individal in application to mer- 
 chandise. The word in its proper signification includes 
 the use of geographical names, proper names, and de- 
 scriptive words, used in commerce. It is a matter of re- 
 gret that the courts have not defined these several 
 phrases in their relations to each other, but such is the 
 fact. The correctness of the author's definition is clearly 
 established by analysis of the three classes of words and 
 the reasons why they are not sustained as trademarks. 
 We will examine them in their order. 
 
 (a) Geographical names.— Isir. Justice Strong has said 
 "It must be considered as a sound doctrine that no one 
 can apply the name of a district or country to a well- 
 known article of commerce, and obtain thereby such an 
 exclusive right to the application as to prevent others in- 
 
 55 — Waterman v. Shipman, 130 versing Seaman v. Johnson, 105 
 
 N. Y. 301, reversing s. c. 8 N. Y. Fed. Rep. 915. 
 
 Supp. 814. 57 — Hiram Holt Co. v. Wads- 
 
 56 — Johnson v. Seaman, 108 worth, 41 Fed. Rep. 34. 
 Fed. Rep. 951, 48 C. C. A. 158; re-
 
 84 HOPKINS ON TRADEMARKS. [§40 
 
 habiting the district, or dealing in similar articles com- 
 ing from the district, from truthfully using the same 
 designation."^'^ In our further examination of the use 
 of geographical names in trade, we will find that they are 
 never properly sustained as technical trademarks except 
 where they are used by one who is the sole owner of the 
 entire locality to which the name is applied. In such a 
 case the geographical name has ceased to be generic, 
 because one person has the sole and exclusive Tight of 
 trade or manufacture in the locality. Thus the author 
 reasons that geogi'aphical names are ordinarily generic, 
 and whenever they are held not to be valid trademarks 
 it is because they are generic. 
 
 (h) Proper names.— The eminent English barrister, 
 Mr. Sebastian, has said in his work on trademarks that 
 "a name is in its very nature generic, and is properly ap- 
 plied to designate, not one individual in the world, but, 
 it may be, many thousands, to all of whom it is equally 
 appropriate."^^ 
 
 (c) Descriptive icords have always been understood to 
 come within the category of generic terms; indeed, Mr. 
 Browne in his treatise upon the subject has defined ''gen- 
 eric names" to be "names merely descriptive of an ar- 
 ticle of trade, of its qualities, ingredients or character- 
 istics."*^^ The United States supreme court has held 
 that there can be no technical trademark right in words 
 used to denote class, grade, style, quality, ingredients or 
 characteristics.^^ 
 
 It is apparent, therefore, that the definition of generic 
 terms which we have adopted is scientifically exact, in- 
 cluding nothing more nor less than the words which are 
 not subject to exclusive appropriation as trademark, be- 
 
 58 — Delaware & Hudson Canal GO— Browne on Trademarks (2d 
 
 Co. V. Clark, 13 Wall. (80 U. S.) ed.), sec. 134. 
 
 311-327. 61— Canal Co. v. Clark, 13 Wall. 
 
 59— Sebastian on Trademarks 311-322; Lawrence Mfg. Co. v. Ten- 
 
 (4tli ed.), p. 23. nessee Mfg. Co., 138 U. S. 537-548.
 
 § 40] WHAT CONSTITUTES A V.VLID TRADEMARK. 85 
 
 cause they cannot be so appropriated '*to the advance- 
 ment of the business interests of any particular indi- 
 vidual, firm or company. The inability to make such 
 appropriation of them arises out of the circumstance 
 that, on account of their general or popular use, every 
 individual in the conmmnity has an equal right to use 
 them, and that right is in all cases paramount to the 
 rights and interests of any person. "*^- 
 
 A generic or descriptive word cannot be made a valid 
 tcademark by misspelling it (as, for example, ''Kid Nee 
 Kure," applied to a medicine), ^^ or by printing it in 
 letters from the alphabet of a foreign language/^^ 
 
 Thus the word ''Koachsault," applied to a preparation 
 for destroying roaches, has been held invalid as a trade- 
 mark.''^ 
 
 It must not be inferred, however, that words in com- 
 mon use cannot be appropriated as trademarks. They 
 certainly can be so appropriated if used in a new and 
 distinctive sense. If any other rule obtained, no words 
 could be used as trademarks unless the person adopting 
 them was their original and first inventor. There is no 
 such legal requirement either as to words or devices.^® 
 ''Words in common use may be adopted, if at the time of 
 adoption they were not used to designate the same or 
 similar articles of production. "^^ 
 
 It is obvious that the article to which the mark is ap- 
 plied must be considered in this connection. As Judge 
 "Wallace has put it, "whether a word claimed as a trade- 
 mark is available because it is a fanciful or arbitrary 
 name, or whether it is obnoxious to the objection of being 
 descriptive, must depend upon the circumstances of each 
 
 62 — Daniels, J., in Newman v. 65 — Barrett Chemical Co. v. 
 
 Alvord. 49 Barb. 588; Cox, 404. Stern, 176 N. Y. 27, 68 N. E. Rep. 
 
 63— Bj- parte Henderson, 85 Off. 65, reversing 76 N. Y. Supp. 1009. 
 
 Gaz. 453. G6— Osgood v. Allen, 1 Holmes, 
 
 M—Ex parte Stuhmer, 86 Ofif. 185, Fed. Case No. 10603. 
 
 Gaz. 181. 67 — Osgood v. Allen, supra,
 
 S6 HOPKINS ON TRADEMARKS. [§40 
 
 case. The word which would be fanciful or arbitrary 
 when applied to one article may be descriptive when ap- 
 plied to another. If it is so apt and legitimately significant 
 of some quality of the article to which it is sought to be 
 applied that its exclusive concession to one person would 
 tend to restrict others from properly describing their 
 own similar articles, it cannot be the subject of a monop- 
 oly. On the other hand, if it is merely suggestive, or 
 figurative only, it may be a good trademark, notwith- 
 standing it is also indirectly or remotely descriptive. "p» 
 While the following is an extract from a judicial argu- 
 ment delivered by a court in a futile attempt to justify 
 its decree sustaining as a trademark a geographical word 
 to which the plaintiff had no color of exclusive right, 
 it is still a lucid exposition of the principle under con- 
 sideration: ''Words and names having a known or estab- 
 lished signification cannot within the limits of such 
 specification be exclusively appropriated to the advance- 
 ment of the business purposes of any particular indi- 
 vidual, firm or company. The inability to make such 
 appropriation of them arises out of the circumstance 
 that on account of their general or popular use every 
 individual in the community has an equal right to use 
 them, and that right is in all cases paramount to the 
 rights and interests of any one person, firm or company. 
 What alike may be claimed and used by all cannot be 
 exclusively appropriated to advance the interests of any 
 person. Numerous cases have been before the courts in 
 which this limitation upon the use of words and names 
 as trademarks has been maintained and established, and 
 no good reason can be given for questioning or impeach- 
 ing their conclusions. But while this limitation is en- 
 tirely reasonable, there can be no propriety in extending 
 it beyond the circumstance upon which it is founded; and 
 accordingly any member of the community whose inter- 
 
 68— Bennett v. McKinley, 65 Fed. Rep. 505, 13 C. C. A. 25.
 
 § 41] WHAT CONSTITUTES A VALID TRADEMARK. 87 
 
 ests and business may be i/romoted by doing so, should be 
 at liberty to apply even names and words in common use 
 to the products of his industry, in such a manner as to 
 indicate their origin or particular manufacture, where 
 such application will not intrench upon and be in no way 
 included in their use by the public. By doijig so, the 
 rights of no member of the community can be in any 
 manner infringed, and no public inconvenience whatever 
 can be occasioned by it. The public will still be left at 
 full liberty to use such words or terms as they were used 
 before; while for a special purpose a new office or purpose 
 may be imposed upon them. 
 
 *'In cases of that description no greater inconvenience 
 or embarrassment can be found in jjrotecting parties in 
 the enjoyment of the new use or purpose engrafted upon 
 a popular tenn than has been found in extending that 
 protection to the case of a word created for the occa- 
 sion."^ 
 
 § 41. Illustrations of generic terms.— In the following 
 instances the words and marks mentioned have been held 
 to be invalid as trademarks because generic; being geo- 
 graphical or descriptive. The examples are arranged in 
 alphabetical order for convenient reference. 
 
 ''A. C. A.," cloth;- **Acid Phosphate," medicinal prep- 
 aration;^ ''Allcock's Porous Plasters," medicated plas- 
 ters;^ ** Aluminum," Washboards;^ ''Ammoniated Bone 
 Superphosphate of Lime," fertilizer;^ ''Anglo-Portugo," 
 oysters ;^ * ' Angostura, ' ' bitters f ' * American, ' ' sardines f 
 
 1— Newman v. Alvord, 49 Barb. Saginaw Mfg. Co., 103 Fed. Rep. 
 
 588. 281; 43 C. C. A. 233. 
 
 2— Amoskeag Mfg. Co. v. Train- 6— Alleghany Fertilizer Co. v. 
 
 er. 101 U. S. 51. Woodside. 1 Hughes. 115, Fed. 
 
 3— Rumford Chem. Works v. Case No. 206. 
 
 Muth, 35 Fed. Rep. 524. 7— Re Saunion & Co., Seb. 625; 
 
 4— Re Brandreth, L. R. 9 Ch. D. Cox, Manual, 625. 
 
 618. 8— Siegert v. Findlater, L. R. 7 
 
 5— American Washboard Co. /. Ch. D. 801; Siegert v. Abbott (2),
 
 HOPKINS ON TRADEMxVRKS. 
 
 [§41 
 
 *' Antiquarian," book-store;^" "Apple and Honey," med- 
 ieine;^^ ''Asbestos," AVall plaster;^- "Astral," oil;^' 
 "Balm of Thousand Flowers," cosmetic 1^=^ "Barber's 
 Model," razors i^'^ "Bazaar," patterns for clothing ;^^ 
 "Better Than Mother's," mince meat;^« "Black 
 Package," tea;^» "Book," the device of a book, used 
 by a publisher r° "Borax," soapr^ "Braided Fixed 
 Stars," cigar lights;-- "Cachemire Milano," fabric;-"* 
 "California Syrup of Figs," laxative medicine ;2-* "C. A. 
 P.," cream acid phosphate;-^ "Castoria," medicine ;2« 
 "Celebrated Stomach Bitters," bitters ;27 "Cellular," 
 cloth of cellular construction ;28 "Centennial," medals ;29 
 
 79 N. Y. Sup. Ct. 243. But see, 
 contra, A. Bauer & Co. v. Siegert, 
 56 C. C. A. 487, 120 Fed. Rep. 81, 
 84. 
 
 9 — Re American Sardine Co., 3 
 Off. Gaz. 495. 
 
 10 — Choynski v. Cohen, 39 Cal, 
 501. 
 
 11 — Ex parte G. F. Heublein & 
 Bro., 87 Off. Gaz. 179. 
 
 12 — Asbestos & Asbetic Co. v. 
 Wm. Sclater Co., 18 Rap. Jud. Que. 
 C. S. 360. 
 
 13— Pratt's Mfg. Co. v. Astral Re- 
 fining Co., 27 Fed. Rep. 492-494. 
 
 15 — Fetridge v. Wells, Cox, Am. 
 Tr. Cas. 180. 
 
 16 — Ex parte Krusius Bros., 82 
 Off. Gaz. 1687. 
 
 17— McCall V. Theal, 28 Grant 
 (Up. Can.) Ch. 48. 
 
 18 — Ex parte Ervin A. Rice Co., 
 83 Off. Gaz. 1207. 
 
 19— Fischer v. Blank, 138 N. Y. 
 244. 
 
 20 — Merriam v. Famous Shoe & 
 Clothing Co., 47 Fed. Rep. 411. 
 
 21 — Dreydoppel v. Young, 14 
 Phila. 226. 
 
 22— Re Palmer, L. R. 24 Ch. D. 
 504. 
 
 23— Re Warburg. 13 Off. Gaz. 44. 
 
 24 — Worden & Co. v. California 
 Fig Syrup Co., 187 U. S. 515; Cali- 
 fornia Fig Syrup Co. v. Putnam, 
 66 Fed. Rep. 50; California 
 Fig Syrup Co. v. Stearns, 67 
 Fed. Rep. 1008; s. c. on appeal, 
 73 Fed. Rep. 812; Re California 
 Fig Syrup Co., L. R. 40 Ch. D. 620. 
 Contra, see California Fig Syrup 
 Co. V. Improved Fig Syrup Co., 51 
 Fed. Rep. 296; Improved Fig 
 Syrup Co. v. California Fig Syrup 
 Co., 54 Fed. Rep. 175; California 
 Fig Syrup Co. v. Worden, 86 Fed. 
 Rep. 212; s. c, 95 Fed. Rep. 132. 
 
 25 — Provident Chemical Works 
 V. Canada Chemical Mfg. Co., 2 
 Ont. Law. Rep. 182. 
 
 26 — Centaur Co. v. Robinson, 91 
 Fed. Rep. 889; Centaur Co. v. 
 Neathery, 34 C. C. A. 118, 91 Fed. 
 Rep. 891; Centaur Co. v. Hughes 
 Bros. Mfg. Co., 34 C. C. A. 127, 91 
 Fed. Rep. 901. Centaur Co. v. Link, 
 62 N. J. Eq. 147, 49 Atl. Rep. 828. 
 27 — Hostetter v. Adams, 20 
 Blatchf. 326. 
 
 28— Cellular Clothing Co. v. 
 Maxton, L. R. (1899) A. C. 326. 
 
 29— Hartwell v. Viney, Fed. Case 
 No. 6158.
 
 §41] 
 
 WHAT CONSTITUTES A VALID TRADEMARK, 
 
 89 
 
 '' Cherry Pectoral," medicine ;3o ''Chill Stop," medi- 
 cine;^^ ''Chlorodyne," medicinal compound ;^2 <<ciub 
 House," gin;=^^ "Computing," scales ;»'' "Continental," 
 sought to be protected from infringement as the name of 
 a fire insurance corporation;''^ "Copenhagen," snuff ;•''<* 
 "Cough Remedy," cough medicine;^" "Crack Proof," 
 rubber ;3« "Cramp Cure," medicine j^'-^ "Cream," yeast ;-'^ 
 "Cresylic," ointment ;-'^ "Croup Tincture," medicine ;"*2 
 "Crystallized Egg," for a preparation of eggmeat;" 
 "Cylinder," glass products.-*-* 
 
 "Desiccated," codfish;-*^ "Druggists' Sundries," 
 cigars;'*'^ "Dry Monopole," champagne;^" "Durham," 
 tobacco.^^ 
 
 "Egg," macaroni i'*^ "Elastic Seam," drawers -"^^ 
 "Elgin," watches ;^^ "Emolliorum," waterproof dress- 
 ing for leather;'^- "Encyclopedia Britannica," title of an 
 
 30 — Ayers v. Rushton, 7 Daly, 9. 
 
 31 — Ex parte Hance Bros. & 
 White, 87 Off. Gaz. 698. 
 
 32 — Browne v. Freeman (1), 12 
 W. R. 305; Seb. 230; Cox, Manual, 
 230; Browne v. Freeman (2), Seb. 
 424; Cox, Manual, 424. 
 
 33 — Corwin v. Daly, 7 Bos. 222. 
 
 34 — Computing Scale Co. v. 
 Standard Computing Scale Co. 55 
 C. C. A. 459. 118 Fed. Rep. 9t)o. 
 
 35 — Continental Ins. Co. v. Con- 
 tinental Fire Ass'n, 96 Fed. Rep. 
 846; affirmed, 41 C. C. A., 326, 101 
 Fed. Rep. 255. 
 
 36 — Weyman v. Soderberg, 108 
 Fed. Rep. 63. 
 
 37— Gillman v. Hunnewell, 122 
 Mass. 139. 
 
 38— Re Goodyear Rubber Co. 11 
 Off. Gaz. 1062. 
 
 39— L. H. Harris Drug Co. v. 
 Stucky, 46 Fed. Rep. 624. 
 
 40 — Gillett V. Lumsden, 4 Ont. 
 Law Rep. 300. 
 
 41 — Carbolic Soap Co. v. Thomp- 
 son, 25 Fed. Rep. 625. 
 
 42— Re Roach, 10 Off. Gaz. 333. 
 
 43 — Lamont v. Leedy, 88 Fed. 
 Rep. 72. 
 
 44 — Stokes v. Landgraff, 17 
 Barb. 608; Cox, Am. Tr. Cas. 137. 
 
 45 — Town V. Stetson, 4 Abb. Pr. 
 N. S. 218; 3 Daly, 53; Cox, Am. 
 Tr. Cas. 514. 
 
 46— ^x parte Cohn (2), 16 Off. 
 Gaz. 680. 
 
 47 — Richards v. Butcher, L. R. 
 (1891) 2 Ch. 522. 
 
 48— Blackwell v. Wright, 73 N. 
 C. 310. 
 
 49— Re Dole Bros., 12 Off. Gaz. 
 939. 
 
 50— Scriven v. North, 124 Fed. 
 Rep. 894, 896. 
 
 51 — Illinois Watch Case Co. v. 
 Elgin Nat. W^atch Co., 94 Fed. Rep. 
 667; reversing s. c, 89 Fed. Rep. 
 487. 
 
 52— Re Talbot, 8 R. P. C. 149.
 
 90 
 
 HOPKINS ON TRADEMARKS. 
 
 :§4i 
 
 encyclopedia;^^ ''Evaporated," food products ;'^^ ''Ever 
 Ready," coffee mills ;^° "Extract of Night-Blooming 
 Cereus," perfume.*^^ 
 
 "Fairbank's Patent," scales ;^^ "Famous," stoves ;^^ 
 "Favorite," letter-file ;''''' " Ferro-phospliorated Elixir of 
 Calisaya Bark," medicine ;*'° "Fire-proof," oil;^^ 
 "Flinch," unpatented game so named by the inventor ;®2 
 "French," paints;*'^ "French Tissue," medicated 
 paper ;^'* "Fruit," vinegar.^-''' 
 
 "Galen," manufactured glass ;^^ "Gibraltar," lamp 
 chimneys ;*^^ "Glendon," iron;*'^ "Golden," ointment ;^^ 
 "Gold Label," bread ;^« "Gold Medal," saleratus;'i 
 "Goodyear Rubber Co.," as name for rubber manufac- 
 turing house;"- "Granite," enameled kitchen utensils ;'^-'^ 
 "Granolithic," artificial stone ;^'* "Granulated Dirt-Kil- 
 ler," soap;'^'^ "Greatest value for the money," shoes;'''® 
 
 53— Black v. Ehrich, 44 Fed. 
 Rep. 793. 
 
 54— Re Alden, 15 Off. Gaz. 389. 
 
 55 — Ex parte Bronson Co., 87 
 Off. Gaz. 1782. 
 
 56— Phalon v. Wright, 5 Phila. 
 464; Cox, Manual, 232. 
 
 57 — Fairbanks v. Jacobus, 14 
 Blatch. 337, Fed. Case No. 4608. 
 
 58 — Ex parte Brand Stove Co., 
 62 Off. Gaz. 588. 
 
 59— Cook & Cobb Co. v. Miller, 
 65 N. Y. Supp. 730. 
 
 60 — Caswell v. Davis, 58 N. Y. 
 223; 17 Amer. Rep. 223. 
 
 61— Scott V. Standard Oil Co., 
 106 Ala. 475; 31 L. R. A. 374; 19 
 So. Rep. 71. 
 
 62— H. B. Chaffee Co. v. Selchow, 
 131 Fed. Rep. 543. 
 
 63 — Ex parte Marsching & Co., 
 15 Off. Gaz. 294. 
 
 64— Draper v. Skerrett (2), 116 
 Fed. Rep. 206, 208. 
 
 65 — Alden v. Gross, 25 Mo. App. 
 123. 
 
 66 — Stokes v. Landgraff, 17 
 Barb. 608; Cox, Am. Tr. Cas. 137. 
 
 67 — Ex parte Nave & McCord 
 Merc. Co., 86 Off. Gaz. 1985. 
 
 68 — Glendon Iron Co. v. Uhler, 
 75 Pa. St. 467; 15 Amer. Rep. 599. 
 
 69— Green v. Rooke, W. N. 
 1872, p. 49. 
 
 70— Ex parte Stuhmer, 86 Off. 
 Gaz. 181. 
 
 71— Taylor v. Gillies, 59 N. Y. 
 331. 
 
 72 — Goodyear's India Rubber 
 Glove Mfg. Co. V. Goodyear Rubber 
 Co., 128 U. S. 598; reversing s. c, 
 21 Fed. Rep. 276. 
 
 73 — St. Louis Stamping Co. v. 
 Piper, 33 N. Y. Supp. 443. 
 
 74— Stuart & Co. v. Scottish Val 
 de Travers Paving Co., Ct Sess. 
 Cas. (4th ser.) 13, 1. 
 
 75 — Ex parte Waeferling, 16 Off. 
 Gaz. 764. 
 
 76 — Ex parte Parker, Holmes & 
 Co., 85 Off. Gaz. 287.
 
 §41] 
 
 WHAT CONSTITUTES A V.VLID TRADEMARK. 
 
 91 
 
 "Greeu Mountain," grapes ;^'^ ** Guaranteed," corset;'* 
 ''Guentlier's Best," flour ;''^ "Gyrator," bolting ma- 
 chines.^*^ 
 
 ''Hand Grenade," fire extinguisher;^ "Hamburg," 
 tea;- ** Harvey's Sauce," condiment;' "Headache Waf- 
 ers," medicinal compound ;■* "Health Food," cereal prod- 
 ucts and prepared foods;"' "Health Preserving," corsets;*' 
 "Highly Concentrated Compound Fluid Extract of 
 Buchu," medicine;'^ "Holbrook's," school apparatus;^ 
 "Homoeopathic Medicines," description of articles so 
 called;" "Hydro-Bromo Soda Mint," medicine;^'' "Hy- 
 gienic," underwear.^* 
 
 "Imperial," beer;^- "Indurated Fibre," wood-j^ulp 
 products;'' "Instantaneous," tapioca prepared for 
 speedy cooking;'^ "International Banking Co," as name 
 of banking concern ;^'* "Iron Bitters," bitters containing 
 iron;"' "Ironstone," water pipe.*' 
 
 77— Hoyt V. J. T. Lovett Co., 71 
 Fed. Rep. 173; 17 C. C. A. 652; 31 
 L. R. A. 44; 39 U. S. App. 1. 
 
 78 — Symington v. Footman, 56 
 L. T. N. S. 696. 
 
 79 — Ex parte Guenther Milling 
 Co., 86 Off. Gaz. 1986. 
 
 SO— Ex parte Wolf, 80 Off. Gaz. 
 1271. 
 
 1 — Re Harden Fire Extinguisher 
 Co.'s Trademark, 55 L. J. Ch. 596. 
 
 2— Frese v. Bachof, 14 Blatchf. 
 432, Fed. Case No. 5110. 
 
 3— Lazenby v. White, 41 L. J. 
 Ch. 354. 
 
 4— Gessler v. Grieb, 80 Wis. 21: 
 27 Am. St. Rep. 20; 48 N. W. Rep. 
 1098. 
 
 5— Fuller v. Huff, 99 Fed. Rep. 
 439 (Reversed by Fuller v. Huff. 
 43 C. C. A. 453, 104 Fed. Rep. 141). 
 
 6— Ball V. Siegel, 166 111. 137. 
 
 7— Helmbold v. Helmbold Mfg. 
 Co.. 53 How. Pr. 453. 
 
 8 — Sherwood v. Andrews, 3 Am. 
 
 Law Reg. N. S. 588. 
 
 9 — Humphrey's Spec. Homoeo- 
 pathic Med. Co. V. Wenz, 14 Fed. 
 Rep. 250. 
 
 10— Ex parte Spayd, 86 Off. Gaz. 
 631. 
 
 11 — Jaros Hygienic Underwear 
 Co. V. Fleece Hygienic Underwear 
 Co., 60 Fed. Rep. 622; s. c, 65 Fed. 
 R^p. 424. 
 
 12 — Beadleston & Woerz v. 
 Cooke Brewing Co., 20 C. C. A- 
 405; 74 Fed. Rep. 229. 
 
 13 — Indurated Fibre Co. v. 
 Amoskeag Indurated Fibre Ware 
 Co., 37 Fed. Rep. 695. 
 
 14 — Bennet v. McKinley, 65 Fed. 
 Rep. 505; 13 C. C. A. 25. 
 
 15— Kohler v. Sanders, 122 N. Y. 
 65; affirming s. c, 48 Hun, 48. 
 
 16 — Brown Chem. Co. v. Stearns, 
 37 Fed. Rep. 360; Brown Chem. 
 Co. V. Meyer, 139 U. S. 540; Cox. 
 Manual. 726. 
 
 17— Re Rader, 13 Off. Gaz. 596.
 
 92 
 
 HOPKINS ON TRADEMARKS. 
 
 [§41 
 
 ''Johnson's American AnodjTie," liniment ;^^ ''Juli- 
 enne," soup.^^ 
 
 "Kaiser," beer;^" ''Kentucky Club," whiskey ;2i ''Kid 
 Nee Kure, "-- " Kidney & Liver, ' ' bitters.-^ 
 
 "Lackawanna," coalp'* "Lake," glass product;-^ "La 
 Normandie," cigars;-^ "Liebig's Extract of Meat," meat 
 extract made under Liebig's formula;-^ "Lieutenant 
 James' Horse Blister," ointment;-^ "Linoleum," floor- 
 cloth;-'^ "Loch Katrine," whiskey.^^ 
 
 "Magnolia," alloy metal f "Malted Milk," infants' 
 food;^- "Marshall's Celebrated," liniment ;^^ "Maryland 
 Club Rye," whiskey ;^^ "Masonic," cigars ;^^ "Matzoon," 
 fermented milk;^*^ "Medicated Prunes," medicine f^ 
 
 18— Re Johnson, 2 Off. Gaz. 315. 
 
 19— Godillot V. Hazard, 81 N. Y. 
 263. 
 
 20— Luyties v. Hollender, 30 
 P''ed. Rep. 632. Per contra, see 
 Kaiserbrauerei v. Baltz Brewing 
 Co.. 71 Fed. Rep. 695. 
 
 21 — Davies County Distilling Co. 
 V. Martinoni, 117 Fed. Rep. 186. 
 
 22— Ex parte Henderson, 85 Off, 
 Gaz. 453. 
 
 23— Spieker v. Lash, 102 Cal. 
 38; 36 Pac. Rep. 362. 
 
 24 — Delaware & Hudson Canal 
 Co. V. Clark, 13 Wall. 311. 
 
 25— Stokes v. Landgraff, 17 
 Barb. 608; Cox, Am. Tr. Cas. 137. 
 
 26— Stachelberg v. Ponce, 128 U. 
 S. 686. 
 
 27 — Liebig's Extract of Meat Co. 
 (Ltd.) V. Hanbury, 17 L. T. N. S. 
 298; Anderson v. Liebig's Extract 
 of Meat Co. (Ltd.), 45 L. T. 757; 
 Cartmell, 47; Liebig's Extract of 
 Meat Co. v. Libby, McNeill & Lib- 
 by, 103 Fed. Rep. 87; Liebig's Ex- 
 tract of Meat Co. v. Walker, 115 
 Fed. Rep. 822. 
 
 28 — James v, James, L. R. 13 Eq. 
 
 421; 41 L. J. Ch. 353; 26 L. T. N. 
 S. 568; 20 W. R. 434; Seb. 388. 
 
 29 — Linoleum Mfg. Co. v. Nairn, 
 L. R. 7 Ch. D. 834; 47 L. J. Ch. 
 430; 38 L. T. N. S. 448; 26 W. R. 
 463; Seb. 536. 
 
 30— Bulloch, Lade & Co. v. Gray, 
 19 Jour. Juris. 218; Seb. 452. 
 
 31 — Magnolia Metal Co.'s Trade- 
 marks, 66 L. J. Ch. N. S. 312. 
 
 32 — Ex parte Horlick's Food Co., 
 84 Off. Gaz. 1870; Horlick's Food 
 Co. V. Elgin Milkine Co., 56 C. 
 C. A. 544, 120 Fed. Rep. 264. 
 
 33— Marshall v. Pinkham, 52 
 Wis. 572. 
 
 34 — Cahn v. Hoffman House, 28 
 N. Y. Supp. 388. Contra, see 
 Cahn V. Gottschalk, 2 N. Y. Supp. 
 13. 
 
 35— ^a; parte Smith (3), 16 Off. 
 Gaz. 764. 
 
 36 — Dadirrian v. Yacubian, 72 
 Fed. Rep. 1010; Dadirrian v. Yacu- 
 bian, (2), 90 Fed. Rep. 812. But 
 see Dr. Dadirrian & Sons Co. v. 
 Hauenstein, 74 N. Y. Supp. 709. 
 
 37— ^o; parte Smith (2), 16 Off. 
 Gaz. 679.
 
 §41; 
 
 WHAT CONSTITUTES A V.VLID TRADEMABK. 
 
 93 
 
 ''Metallic Clinton," paint ;='« ''Microbe Killer," antisep- 
 tic;^^ "Moline," pIows;^« "Montserrat," lime juice.-*' 
 
 "National JSpenn," candles;^- "Native Guano," fer- 
 tilizer;^'* "New Manny," hai'vester;''^ "New York," glass 
 products ;^= "Nourishing London," stout.''" 
 
 "Old Bourbon," wliiskey;^^ "Old Country," soap;^^ 
 "Old Innisliowen," whiskey;-*'' "Old London Dock," 
 gin .50 << Olive," bicycles having olive-colored frames.^' 
 
 "Paraffin," oil;" "Parcheesi," game, invalid because 
 a mere variation of the Hindoostanee name for the same 
 game;^-*^ "Parson's Purgative," pills ;^^ "Perfect Face 
 Paste," medicine ;^^ "Philadelphia," beer;'" "Pocahon- 
 tas," coal;'"'^ "Post Office," direct(yry;-'« "Porous," me- 
 dicinal plasters ;'^» "Prime Leaf," lard;«« "Prize Medal, 
 1862," on goods sold by one awarded a medal at the Lon- 
 
 38 — Clinton Metallic Paint Co. 
 V. New York Metallic Paint Co., 60 
 N. Y. Supp. 437. 
 
 39— Alff V. Radam, 77 Tex. 530. 
 
 40 — Candee, Swan & Deere v. 
 Deere & Co., 54 111. 439; 5 Amer. 
 Rep. 125. 
 
 41 — Evans v. Von Laer, 32 Fed. 
 Rep. 153. 
 
 42— Re Price's Patent Candle 
 Co., L. R. 27 Ch. D. 681. 
 
 43 — Native Guano Co. v. Sew- 
 age Manure Co., 8 P, R. 125. 
 
 44— Re Graham, 2 Off. Gaz. 618. 
 
 45— Stokes v. Landgraff, 17 
 Barb. 608; Cox, Am. Tr. Cas. 137. 
 
 46— Raggett v. Findlater, L. R. 
 17 Eq. 29; 43 L. J. Ch. 64; 29 L. 
 T. N. S. 448; 22 W. R. 53; Seb. 
 431. 
 
 47— Hardy v. Cutter, 3 Off. Gaz. 
 468. 
 
 48— Allen B. Wrisley Co. v. 
 Iowa Soap Co., 104 Fed. Rep. 548; 
 Allen B. Wrisley Co. v. Iowa Soap 
 
 Co., 59 C. C. A. 54, 122 Fed. Rep. 
 r96. 
 
 49— Watt V. O'Kanlon, 4 P. R. 1. 
 
 50 — Binninger v. AVattles, 28 
 How. Pr. 206. 
 
 51— Ex parte Olive "Wheel Co., 
 84 Off. Gaz. 1871. 
 
 52 — Young V. Macrae, 9 Jur. N. 
 S. 322. 
 
 53— Selchow v. Chaffee & Sel- 
 chow Mfg. Co., 132 Fed. Rep. 996. 
 
 54 — Re Johnson, 2 Off. Gaz. 315. 
 
 55— ^a^ parte Rail, 85 Off. Gaz. 
 453. 
 
 56— Eggers v. Hink, 63 Cal. 445. 
 
 57 — Coffman v. Castner, 87 Fed. 
 Rep. 457, 31 C. C. A. 55. Affirmed in 
 Castner v. Coffman, 178 U. S. 168, 
 44 L. ed. 1021, and overruling At- 
 water v. Castner, 32 C. C. A. 77, 
 88 Fed. Rep. 642. 
 
 58— Kelly v. Byles, 40 L. T. 623. 
 
 59— Re Brandreth, Seb. 626. 
 
 60— Popham v. Wilcox, 66 N. Y. 
 69.
 
 94 
 
 HOPKINS ON TRADEMARKS. 
 
 [§41 
 
 dou International Exhibition of 1862 j^^^ ''Purity," oleo- 
 margarine.^" 
 
 "Ked," snuff ;^2 "Richardson's Patent Union," leather 
 splitting machine;^-* ''Rose," vanilla extract;*"^ "Rosen- 
 dale," cement ;«« "Rye and Rock," liquor.''^ 
 
 "Safety," explosive powder ;^» "Sanitary," filter ;'^'» 
 ' ' Sarsaparilla and Iron, ' ' tonic ; ' "^ ' ' Satinine, ' ' starch and 
 soap;^ "Satin Polish," boots and shoes;- "Schiedam 
 Schnapps," liquor ;3 "Selected Shore," mackerel;^ "Sin- 
 ger," sewing machines, after expiration of the Singer 
 patents;^ "Snowflake," crackers, the word being descrip- 
 tive of the quality of flour used;" "Somatose," meat ex- 
 tract, from the Greek "soma," Angl. "body," genitive 
 "somatos;"^ "Splendid," flour ;« "Standard A," cigars ;» 
 
 61— Batty v. Hill, 1 H. & M. 
 264; 8 L. T. N. S. 791; 11 W. R. 
 745; 2 N. R. 265; Seb. 218. 
 
 62 — Ex parte Capitol City Dairy 
 Co., 83 Off. Gaz. 295. 
 
 63 — Ex parte Pearson Tobacco 
 Co., 85 Off. Gaz. 287. 
 
 64— Re Richardson, 3 Off. Gaz. 
 120. 
 
 65 — Clotworthy v. Schepp, 42 
 Fed. Rep. 62. 
 
 66 — New York Cement Co. v. 
 Coplay Cement Co. (1), 44 Fed. 
 Rep. 277; New York Cement Co. 
 V. Coplay Cement Co. (2), 45 Fed. 
 Rep. 212. 
 
 67— Van Beil v. Prescott, 82 N. 
 Y. 630. 
 
 68 — Ex parte Safety Powder Co., 
 16 Off. Gaz. 136. 
 
 69— Re Atkins Filter Co., 3 P. 
 R. 164. 
 
 70— Schmidt v. Brieg, 100 Cal. 
 672; Same v. McEwen, 35 Pac. 
 Rep. 854; Same v. Crystal Soda 
 Water Co., Id. 855; Same v. 
 Steinke, Id. 855; Same v. Haake, 
 
 Id. 855; Same v. Liberty Soda 
 Works Co., Id. 856. 
 
 1— Re Meyerstein, 7 R. P. C. 114; 
 L. R. 43 Ch. D. 604; 59 L. J. Ch. 
 401; 62 L. T. 526; 38 W. R. 440; 
 Cartmell, 225. 
 
 2 — Ex parte Brigham, 20 Off. 
 Gaz. 891. 
 
 3— Wolfe V. Goulard, 18 How. Pr. 
 64; Seb. 179; Cox, Am. Tr. Cas. 
 226; Burke v. Cassin, 45 Cal. 467; 
 Wolfe V. Hart, 4 V. L. R. Eq. 125; 
 Wolfe V. Alsop, 10 V. L. R. Eq. 
 41; 12 V. L. R. 421; Wolfe v. 
 Lang, 13 V. L. R. 752. 
 
 4 — Trask Fish Co. v. Wooster, 28 
 Mo. App. 408. 
 
 5— Singer Mfg. Co. v. June Mfg. 
 Co., 163 U. S. 169. 
 
 6 — Larrabee v. Lewis, 67 Ga. 
 561; 44 Am. Rep. 735. 
 
 7— Farben-fabriken T. M. K., 7 
 R. P. C. 439; L. R. (1894) 1 Ch. 
 645. 
 
 S—Ex parte Stokes, 64 Off. Gaz. 
 437. 
 
 2— Ex parte Cohn (1), 16 Off. 
 Gaz. 680.
 
 §41 
 
 WHAT CONSTITUTES A \AIAD TRADEMAHK. 
 
 95 
 
 ''Steel Shod," shoes having soles quilted with steel 
 wire;^'^ "Stoga Kip," boots;" "Straight-Cut," cigar- 
 ettes;'^ "Svenska Suusiiiagauiset, " meaning Swedish 
 snuff store;'-'' "Sweet Lotus," tobacco;'^ "Swing," 
 scythe-sockets.'^ 
 
 "Taffy-Tolu," chewing-gum;"^ "Tasteless," drugs;'^ 
 "Thomsonian," medicines;'** "Timekeeper," watches;'" 
 "Toothache Gum," remedy for toothache;-" "Tycoon," 
 tea;-' "Tucker Spring," bed.-- 
 
 " United States," dental rooms.-^ 
 
 "Valvolene," oil;--" "V-0," medicine;-^ "Vitae-Ore," 
 medicine;-" "Victoria," lozenges.-^ 
 
 "Water of Ayr," stone;-'* "Webster's Dictionary," ap- 
 plied to the standard lexicon of that name;-^ "Whirling 
 Spray," syringes ;^*^ "Wister's Balsam of White Cherry," 
 medicine;^' "AVorcestershire, " sauce.^^ 
 
 10 — Brennan v. Emery-Bird- 
 Thayer Dry Goods Co., 99 Fed. 
 Rep. 971; S. C. 108 Fed. Rep. 624; 
 47 C. C. A. 532. 
 
 11— Walker v. Reid, Fed. Case 
 No. 17,084. 
 
 12— Ginter v. Kinney, 12 Fed. 
 Rep. 782. 
 
 13 — Bolander v. Peterson, 136 
 111. 215. 
 
 14— Wellman & Dwire Tob. Co. 
 V. Ware Tob. Works, 46 Fed. Rep. 
 289. 
 
 15 — Ex parte Thompson, Derby 
 & Co., 16 Off. Gaz. 137. 
 
 16 — Colgan v. Danheiser, 35 Fed. 
 Rep. 150. 
 
 17— Re Dick & Co., 9 Off. Gaz. 
 538. 
 
 18 — Thomson v. Winchester, 36 
 Mass. 214. 
 
 19 — Ex parte Strasburger & Co., 
 20 Off. Gaz. 155. 
 
 20— Devlin v. McLeod, 135 Fed. 
 Rep. 164; Devlin v. Peck, 135 Fed. 
 Rep. 167. 
 
 21— Corbin v. Gould, 133 U. S. 
 308. 
 
 22— Tucker Mfg. Co. v. Boying- 
 ton, 9 Off. Gaz. 455, Fed. Case No. 
 14229. 
 
 23— Cady v. Schultz, 19 R. I. 
 193; 61 Am. St. Rep. 763. 
 
 24— Re Horsburgh, 53 L. J. Ch. 
 237. 
 
 25— Noel V. Ellis, 89 Fed. Rep. 
 978-981. 
 
 26 — Noel V. Ellis, supra. 
 
 27 — Wotherspoon v. Gray, Ct. 
 Sess. Cas. (3d ser.) 2,38. 
 
 28 — Montgomerie v. Donald, Ct. 
 Sess. Cas. (4th ser.) 11,506. 
 
 29 — Merriam v. Texas Siftings 
 Pub. Co., 49 Fed. Rep. 944-947. 
 
 30— Marvel Co. v. Pearl, C. C. A., 
 133 Fed. Rep. 160, 162. 
 
 31— Towle v. Spear, 7 Penn. L. 
 J. 176; Cox, Am. Tr. Cas. 67; Seb. 
 90. 
 
 32— Lea v. Deakln, 11 Biss. 2a 
 Fed. Case No. 8154; Lea v. 
 Wolff, 15 Abb. Pr. N. S. 1; 46
 
 96 
 
 HOPKINS ON TRADEMARKS. 
 
 :§42 
 
 ''Yale," locks ;^^ "Yucatan," leather and leather 
 goods.^^ 
 
 § 42. Examples of valid trademarks, fancy, arbitrary 
 or distinctive words.— The following instances are illus- 
 trative of fancy, arbitrary or distinctive words, which 
 have been either held proper, protected against unfair 
 competition, or their use upheld as trademarks in appli- 
 cation to the classes of merchandise in connection with 
 which the words have respectively been used. In some 
 cases the question of validity was not raised, nor are all 
 of them to be upheld as technical trademarks. These 
 illustrations are given in their alphabetical order to fa- 
 cilitate reference. 
 
 ''Ainswortli," thread ;^^ "Alderney," oleomargarine;^^ 
 ''American Cold Japan," paint;" "American Express," 
 sealing wax;^^ "American Volunteer," shoes ;3^ "Anato- 
 lia," licorice ;^<^ "A. N. Hoxie's Mineral," soap;^^ "An- 
 chor Brand," wire;^^ " Annihilator," medicine;"^^ "Anti- 
 Wash-board," soap;'*^ "Apollinaris," mineral water ;^-^ 
 "A. V. H.," gin.-^e 
 
 How. Pr. 157; Seb. 407; Lea v. 
 Millar, Seton (4th ed.), 242; Seb. 
 513. 
 
 33 — Ex parte Yale & Towne Mfg. 
 Co. 81 Off. Gaz. 801. 
 
 M—Ex parte V/eil, 83 Off. Gaz. 
 1802. 
 
 35 — Ainsworth v. Walmesley, ii 
 L. R. 1 Eq. 518. 
 
 36— Lauferty v. Wheeler, 11 
 Abb. N. C. 220; 11 Daly, 194; 63 
 How. Pr. 488. 
 
 37— Reader v. Brodt, 6 Ohio Dec. 
 248; 4 Ohio N. P. 265. 
 
 38 — Dennison Mfg. Co. v. 
 Thomas Mfg. Co., 94 Fed. Rep. 651- 
 653. 
 
 39 — Joseph Banigan Rubber Co. 
 V. Bloomingdale, 89 Off. Gaz. 1670. 
 
 40 — McAndrews v. Bassett, 4 
 DeG. J. & S. 380; 33 L. .J. Ch. 566; 
 10 Jur. N. S. 550; 10 K T. N. S. 
 
 442; 12 W. R. 777; 4 N. R. 123; 
 Cox, 669. Anatolia is a geograph- 
 ical name, but its use here w.as 
 protected on the theory of unfair 
 competition. 
 
 41 — Hoxie V. Chaney, 143 Mass. 
 592. 
 
 42— Edelsten v. Edelsten, 1 DeG. 
 J. & S. 185; Cox, 667. 
 
 43 — Fulton V. Sellers, 4 Brewct. 
 42. 
 
 44 — O'Rourke v. Central City 
 Soap Co., 26 Fed. Rep. 576. 
 
 45 — Apollinaris Co. v. Norrish, 
 33 L. T. N. S. 242; Same v. Ed- 
 wards, Seton (4th ed.), 247; Same 
 V. Moore, Cox, Manual, Case No. 
 675; Same v. Herrfeldt, 4 P. R. 
 478; Same v. Soberer, 27 Fed. Rep. 
 18. 
 
 46 — Van Hoboken v. Mohns & 
 Kaltenbach, 112 Fed. Rep. 528.
 
 42] 
 
 WHAT CONSTITUTES A \MAD TRADEMARK. 
 
 97 
 
 "Baco-Curo," remedy for tobacco habit;*' ''B. 1^. B.," 
 medicine ;^« "B. B. H.," with a crown, iron;^'-* ''Baffle," 
 safes;-"'" "Balm of Thousand Flowers," cosmetic;"'' 
 "Beatty's Headline," copy book;'^- "Bell of Moscow," 
 wine;"'^ "Benedictine," liqueur;"'^ "Bethesda," mineral 
 water ;^'^ "Bismarck," paper collars;^" "Blackstone," ci- 
 gars;" "Blood Searcher," medicine ;"''* "Blue Lick," 
 water;'^" "Boker's Stomach Bitters," medicine;"'^ "Bovi- 
 lene," pomade;"' "Bovril," meat extract;''- "Bromidla," 
 medicine f'^ ' ' Bromo-Caffeine, ' ' medicine.''^ 
 
 "Carrom," game-board;*^"' "Cashmere Bouquet," toilet 
 soap;®** "Celluloid," compound of pyroxyline ;^^ "Celery 
 
 47 — Sterling Remedy Co. v. Eu- 
 reka Chemical and Mfg. Co., 80 
 Fed. Rep. 105; 49 U. S. App. 709; 
 25 C. C. A. 314. 
 
 48 — Foster v. Bloou Balm Co., 
 77 Ga. 216. 3 S. E. Rep. 284. 
 
 49— Hall V. Barrows, 4 DeG. J. 
 & S. 150; Cox, 668. 
 
 50— Talbot V. Webley, 3 R. P. C. 
 276; Cartmell, 324. 
 
 51 — Fetridge v. Merchant, 4 Abb. 
 Pr. 156. 
 
 52— Gage v. Canada Publ. Co.. 11 
 Can. Sup. Ct. 306; 6 Ont. Rep. 68; 
 11 Ont. App. 402. 
 
 53 — Re Charles Narcisse Ferre, 
 Cert. No. 8939. 
 
 54 — Societe Anonyme v. Western 
 Distilling Co., 43 Fed. Rep. 416; 
 Societe Anonyme De La Distillerie 
 De La Benedictine v. Micalovitch, 
 Fletcher & Co.. 36 Abb. Law J. 364; 
 A. Bauer & Co. v. Distillerie de la 
 Liqueur Benedictine, 56 C. C. A. 
 480, 120 Fed. Rep. 74. 
 
 55 — Dunbar v. Glenn, 42 Wis. 
 118; Seb. 529. 
 
 56 — Messerole v. Tynberg, 4 Abb. 
 Pr. N. S. 410; 36 How. Pr. 14; Cox. 
 479; Seb. 300. 
 7 
 
 57— Levy v. Waitt, 56 Fed. Rep. 
 1016. 
 
 58 — Fulton V. Sellers, 4 Brewst. 
 42; Cox, Manual, Case No. 279. 
 
 59— Northcutt v. Turney, 101 
 Ky. 314; 41 S. W. Rep. 21; Park- 
 land Hill Blue Lick Water Co. .v. 
 Hawkins (Ky.) 26 S. W. Rep. 389; 
 95 Ky. 502; 16 Ky. Law Rep. 210; 
 44 Am. St. Rep. 254. 
 
 60— Funke v. Dreyfus, 34 La. 
 Ann. 80; 44 Am. Rep. 413. 
 
 61 — Lockwood v. Bostwick, 2 
 Daly, 521. 
 
 62— Re Bovril, L. R. (1896) 2 
 Ch. D. 600. 
 
 63— Battle v. Finlay (2), 50 Fed. 
 Rep. 106; Battle v. Finlay (1), 45 
 Fed. Rep. 796. 
 
 64 — Keasbey v. Brooklyn Chem- 
 ical Works, 37 N. E. Rep. 476; 142 
 N. Y. 467; reversing s. c, 21 N. Y. 
 Supp. 696. 
 
 65 — Luddington Novelty Co. v. 
 Leonard, 119 Fed. Rep. 937; Wil- 
 liams v. Mitchell, 45 C. C. A. 265, 
 106 Fed. Rep. 168. 
 
 66— Colgate & Co. Cert. No. 914 
 Colgate v. Adams, 88 Fed. Rep. 
 899. 
 
 67— Celluloid Mfg. Co. v. Read,
 
 98 
 
 HOPKINS ON TRADEMARKS. 
 
 [§42 
 
 Compound," medicine;^* ''Centennial," clothing ;^^ or al- 
 coholic spirits;''^ ''Champion," flour ;^^ "Charley's 
 Aunt," name of farce ;^2 "Charter Oak," stoves;'^ "Chat- 
 terbox," juvenile books, published periodically;'^ "Chi- 
 cago Waists," corset waists;"^ "Chicken Cock," whis- 
 key;'^ "Chinese Liniment " ;'' "Climax," stoves;'^ 
 "Club," Cocktails ;'» "Club Soda," carbonated water ;«» 
 "Coal Oil Johnny's Petroleum," soap;^^ "Cocoaine," 
 hair oil;^- "Coe's Superphosphate of Lime," fertilizer ;^3 
 "Comfort," periodical publication;^^ "Compactum," 
 umbrellas ;^^ "Congress Water," mineral water ;^^ "Cot- 
 tolene, ' ' lard substitute :^' ' ' Cough Cherries, ' ' conf ection- 
 
 47 Fed. Rep. 712; Celluloid Mfg. 
 Co. V. Cellonite Mfg. Co., 32 Fed. 
 Rep. 94. 
 
 68 — Wells & Richardson Co. v. 
 Siegel, Cooper & Co., 106 Fed. Rep. 
 77. 
 
 69 — Sternberger v. Thalheimer, 
 3 Off. Gaz. 120. 
 
 70— Re Bush & Co., 10 Off. Gaz. 
 164. 
 
 71— Atlantic Milling Co. v. Rob- 
 inson, 20 Fed. Rep. 217; 27 Off. 
 Gaz. 1322. 
 
 72— Frohman v. Miller, 29 N. Y. 
 S. 1109; 8 Misc. Rep. 379. 
 
 73 — Filley v. Fassett, 44 Mo. 
 173; 100 Am. Dec. 275; Cox, Am. 
 Tr. Cas. 530; 9 Am. L. Reg. N. S. 
 402; Seb. 313; Filley v. Child, 16 
 Blatchf. 376. 
 
 74 — Estes V. Leslie, 29 Fed. Rep. 
 91; Estes v. Worthington, 31 Fed. 
 Rep. 154; Estes v. Leslie, 27 Fed. 
 Rep. 22; Fed. Case No. 4787. 
 
 75 — Gage-Downs Co. v. Feather- 
 bone Corset Co., 83 Fed. Rep., 213. 
 
 76— G. G. White Co. v. Miller, 50 
 Fed. Rep. 2W. 
 
 77 — Coffeen v. Brunton, 4 Mc- 
 Lean 516; 5 McLean 256. 
 
 78 — Filley v. Fassett, 44 Mo. 173. 
 
 79 — Heublein v. Adams, 125 
 Fed. Rep. 782. 
 
 80 — Cochrane v. Macnish (P. 
 C.) L. R. (1896) A. C. 225; 65 L. 
 J. P. C. N. S. 20; 74 Law T. R. 
 109. 
 
 81— Petrolia Mfg. Co. v. Bell & 
 Bogart Soap Co., 97 Fed. Rep. 781. 
 
 82 — Burnett v. Phalon, 3 Keyes, 
 594; 5 Abb. Pr. N. S. 212; 9 Bos. 
 193. 
 
 83— Bradley v. Norton, 33 Conn. 
 157; Cox's American Trademark 
 Cases 331; 87 Am. Dec. 200. 
 
 84— Gannert v. Rupert, 127 Fed. 
 Rep. 962, 62 C. C. A. 594, revers- 
 ing S. C. 119 Fed. Rep. 221. 
 
 85— Re Davis Trademarks, 22 
 Trademark Record, 50. 
 
 86 — Congress, etc. Spring Co. v. 
 High Rock Congress Spring Co. 57 
 Barb. 526; Cox, 599; 45 N. Y. 291; 
 10 Abb. P. R. N. S. 348; 6 Am. Rep. 
 82; 4 Am. L. T. 168; Cox, Am. Tr. 
 Cas. 624; Seb. 354. 
 
 87— N. K. Fairbank Co. v. Cen 
 tral Lard Co., 64 Fed. Rep. 133.
 
 42] 
 
 WHAT CONSTITUTES A VALID TUADEMARK. 
 
 99 
 
 gj.y..88 <' Cream," baking powder;*" **Cuticura," toilet 
 soap."" 
 
 ** Derringer, " fire-arms;^ '*Dr. Drake's German Croup 
 Remedy," medicine;*- '*Dr. Lobenthal's Essentia Anti- 
 phthisica," medicine;'' ** Dublin," soap;^ "Durham," 
 smoking tobacco;'' " Dyspepticure, " medicine.® 
 
 "Edelweiss," perfume;^ "Elastic," book-cases;® 
 "Electro-Silicon," polishing jn-eparation ;** "Elk," ci- 
 gars;^'^ "Emollia," toilet cream;'' "Empire," stoves;^^ 
 "Epicure," canned salmon;'-' "Ethiopian," stockings ;^^ 
 "Eureka," fertilizer;'"' shirts,"' fire-hose,^'^ or steam- 
 packing;^* "Excelsior," stoves;^" or soap.^** 
 
 88— Stoughton v. Woodard, 39 
 Fed. Rep. 902. 
 
 89 — Price Baking Powder Co. v. 
 Fyfe, 45 Fed. Rep. 799. 
 
 90 — Potter Drug & Chem. Co. v. 
 Miller, 75 Fed. Rep. 656. Held in- 
 fringed by word "curative" and 
 imitative devices. The mark as- 
 sumed to be valid in Potter Drug 
 & Chem. Corp. v. Pasfield Soap Co., 
 102 Fed. Rep. 490; Same v. Same. 
 106 Fed. Rep. 914, 46 C. C. A. 40. 
 
 1— Derringer v. Plate, 29 Cal. 
 292; Cox, Am. Tr. Cas. 324. 
 
 2 — Drake Medicine Co. v. Gless- 
 ner 68 Ohio St. 337, 67 N. E. Rep. 
 722. 
 
 3— Re Rohland, 10 Off. Gaz. 980. 
 
 4— Re Cornwall & Co., 12 Off. 
 Gaz. 312. 
 
 5 — Blackwell v. Armistead, Fed. 
 Case No. 1474, 5 Am. L. T. 
 85; 3 Hughes, 163; Armistead v. 
 Blackwell, 1 Off. Gaz. 603; Black- 
 well v. Dibrell, 14 Off. Gaz. 633, 
 Fed. Case No. 1475; Blackwell v. 
 Wright, 73 N. C. 310. 
 
 Q—Ex parte Foley & Co., 87 Off. 
 Gaz. 1957. 
 
 7 — Rosing v. Atkinson, 27 Sol. 
 J. 634. 
 
 8 — Globe- Wernicke Co. v. Brown, 
 121 Fed. Rep. 185. 
 
 9 — Electro-Silicon Co. v. Hazard, 
 29 Hun, 369; 36 N. Y. Sup. Ct. 369. 
 
 10 — Lichtenstein v. Goldsmith, 
 37 Fed. Rep. 359. 
 
 11— Re Grossmith, 60 L. T. N. S. 
 612. 
 
 12— Filley v. Fassett, 44 Mo. 
 173; Seb. 313. 
 
 13— George v. Smith, 52 Fed. 
 Rep. 830. 
 
 14— Hine v. Lart, 10 Jur. 106; 7 
 L. T. O. S. 41; Seb. 80. 
 
 15 — Alleghany Fertilizer Co. t. 
 Woodside, 1 Hughes, 115; Seb. 364; 
 Fed. Case No. 206. 
 
 16— Ford V. Foster, L. R. 7 Ch. 
 D. 611; 41 L. J. Ch. 682; 27 L. T. 
 N. S. 219; 20 W. R. 818; Seb. 384. 
 
 17 — Eureka Fire Hose Co. v. 
 Eureka Rubber Mfg. Co., N. J. Ch. 
 60 Atl. Rep. 561. 
 
 18 — Symonds v. Greene, 28 Fed. 
 Rep. 834. 
 
 19— Filley v. Fassett, 44 Mo. 
 173; S.b. 313; Sheppard v. Stuart, 
 13 Phila. 117. 
 
 20— Braham v. Bustard, 1 H, & 
 M. 447, 9 L. T. N. S. 199.
 
 100 
 
 HOPKINS ON TRADEMARKS. 
 
 [§42 
 
 *'Faber," pencils pi '' Family," salve ;22 **Favorita," 
 flour r^ "Fibre Chamois," dress linings r^ ''Filofloss," 
 silkr'^ ''Filh-e Rapide," filters.^^ 
 
 ''Glenfield," starch;-^ or washing powder ;^^ "Golden 
 Crown, ' ' cigars ;-^ ' ' Golden Wedding, ' ' whiskey f^ ' ' Gou- 
 raud's Oriental Cream," cosmetic ;^^ "Hunter," whis- 
 key;^- "Grand Master," cigars ;^^ "Green Mountain," 
 scythe-stones;^^ "Grenade," syrup.^^ 
 
 "Hanford's Chestnut Grove," whiskey ;^*^ "Hansa," 
 lard, sausages and bacon ;^^ "Heliotype," prints ;^^ 
 "Hero," jars;^'' "Home," sewing machine;^" "Hoosier," 
 drills;''^ "Howqua's Mixture," tea;*^ "Hunyadi," medi- 
 cinal water ;'^^ "Hygeia," water ;^^ " Hygieniques, " sus- 
 penders.'*'^ 
 
 21— Faber v. Faber, 49 Barb. 
 357; 3 Abb. Pr. N. S. 115; Cox, Am. 
 Tr. Cas. 401. 
 
 22 — Reinhart v. Spaulding, 49 L. 
 J. Ch. 57. 
 
 23— Menendez v. Holt, 128 U. S. 
 182; Cox, Manual, Case No. 707. 
 
 24 — ^American Fibre Chamois 
 Co. V. De Lee, 67 Fed. Rep. 329; 
 71 Off. Gaz. 1458. 
 
 25 — Rawlinson v. Brainard & 
 Armstrong Co. 59 N. Y. Supp. 880; 
 28 Misc. Rep. 287. 
 
 26 — Re Maignen's Application, 
 28 W. R. 759; Cartmell, 216. 
 
 27 — Wotherspoon v. Currie, L. 
 R. 5 H. L. 508; 42 Law J. Ch. 130; 
 27 L. T. N. S. 393. 
 
 28— N. K. Fairbank Co. v. 
 Luckel, etc. Soap Co., 88 Fed. Rep. 
 694. 
 
 29— Palmer v. Harris, 60 Pa. St. 
 156. 
 
 30 — Pontefact v. Isenberger, 106 
 Fed. Rep. 499. 
 
 31— Gouraud v. Trust, 10 N. Y. 
 Sup. Ct. 627. 
 
 32 — Lanahan v. John Kissel & 
 Son, 135 Fed. Rep. 899. 
 
 33— Yale Cigar Mfg. Co. v. Yale, 
 30 Off. Gaz. 1183. 
 
 34— Pike Mfg. Co. v. Cleveland 
 Stone Co., 35 Fed. Rep. 896. 
 
 35— Rillet V. Carlier, 61 Barb. 
 435. 
 
 36— Hanford v. Westoott, 16 Off. 
 Gaz. 1181. 
 
 37 — Ex parte Tietgens & Robert- 
 son. 87 Off. Gaz. 2117. 
 
 38 — Osgood V. Rockwood, 11 
 Blatchf. 310, Fed. Case No. 10605. 
 
 39 — Rowley v. Houghton, 2 
 Brewst. 303. 
 
 40 — New Home Sewing Machine 
 Co. V. Bloomingdale, 59 Fed. Rep. 
 284. 
 
 41 — Julian v. Hoosier Drill Co., 
 78 Ind. 408. 
 
 42— Pidding v. How., 8 Sim. 477. 
 
 44 — Saxlehner v. Eisner & Men- 
 delson Co. (3), 179 U. S. 19. 
 
 45 — Waukesha Hygeia Mineral 
 Springs Co. v. Hygeia Sparkling 
 Distilled Water Co., 63 Fed. Rep. 
 438; 11 C. C. A. 277; Hygeia Dis- 
 tilled Water Co. v. Hygeia Ice Co., 
 72 Conn. 646; 45 Atl. Rep. 957; 49 
 L. R. A. 147.
 
 §42] 
 
 WHAT CONSTITUTES A VALID TRADEMARK. 
 
 101 
 
 "Ideal," fountain pens;^^ "Indian Pond," scythe- 
 stones;"**' "Indian Root," pills ;^^ "In-er-seal," bakery- 
 products;'^'' "Insectine," insect powder;"*' "Insurance," 
 Qjj.52 **lnvigorator," spring bed bottoms ;^^ "Iron Clad," 
 boots.^* 
 
 "Junket," rennet preparation.^' 
 
 "Kaiser," beer;^'' "Kathairon," remedy;'*'^ "King 
 Bee," smoking tobacco;'^ "Kitchen Crystal," soap;-^* 
 "Knickerbocker," shoes ;^'' "Koffio," cereal coffee.*'^ 
 
 "La Cronica," newspaper;*'- "Lacto-Peptine," medi- 
 cine ;^^ "La Favorita," flour;'''* "Lamoille," scythe- 
 stones;*'' "La Norma," cigar-boxes;*'*' "La Normandi," 
 cigars;*'^ "Leopold," woolen-cloth;*'^ "LaPage," glue;^* 
 
 46 — Bailly v. Nashawannuck 
 Mfg. Co.. 51 Off. Gaz. 970; 10 N. 
 Y. Supp. 224. 
 
 47 — Waterman v. Shipman, 130 
 N. Y. 301. 
 
 48— Pike Mfg. Co. v. Cleveland 
 Stone Co., 35 Fed, Rep. 896. 
 
 49 — Comstock v. White, 18 How. 
 Pr. 421. 
 
 50 — Ohio Baking Co. v. National 
 Biscuit Co., 62 C. C. A. 116; 127 
 Fed. Rep. 116; affirming National 
 Biscuit Co. V. Ohio Baking Co., 127 
 Fed. Rep. 160. 
 
 51 — Arthur v. Howard, 19 Pa. 
 Co. Ct. 81. 
 
 52 — Insurance Oil Tank Co. v. 
 Scott, 33 La. Ann. 946. 
 
 52— Ex parte Heyman, 18 Off. 
 Gaz. 922. 
 
 54 — Hecht v. Porter, 9 Pac. 
 Coast, L. J. 569. 
 
 55 — Hansen v. Siegel-Cooper Co. 
 (2), 106 Fed. Rep. 691. 
 
 56 — Kaiserbrauerei v. Blatz 
 Brewing Co., 71 Fed. Rep. 695; s. 
 c. affirmed, 74 Fed. Rep. 222. 
 
 57— Heath v. Wright. Cox, Am. 
 Tr. Cas. 154, 3 W^all. Jr. 1. 
 
 58 — Sarrazin v. W. R. Irby Cigar 
 Co., 93 Fed. Rep. 634, 35 C. C. A. 
 496. 
 
 59— Re Eastman, W. N. 1880, p. 
 128. 
 
 60— Burt V. Tucker, 178 Mass. 
 493. 59 N. E. Rep. 1111, 52 L. R. A. 
 112. 
 
 61 — Sleepy Eye Milling Co. t. 
 C. F. Blanke Tea & Coffee Co., 85 
 Off. Gaz. 1905. 
 
 62 — Stephens v. DeConto, 4 
 Abb. Pr. N. S. 47. 
 
 63 — Carnrick v. Morson; Seb. 
 543; Cox, Manual, 543. 
 
 64 — Menendez v. Holt, 128 U. S. 
 514. 
 
 65— Pike Mfg. Co. v. Cleveland 
 Stone Co., 35 Fed. Rep. 896. 
 
 66 — Ex parte Egyptian Cigarette 
 Co., 85 Off. Gaz. 1905. 
 
 67 — Stachelberg v. Ponce, 23 
 Fed. Rep., 430. 
 
 68 — Hirst v. Denham, L. R, 14 
 Eq, 542; 27 L. T. N. S. 56; 41 L. 
 J. Ch. 752. 
 
 69 — Russia Cement Co. v. Katz- 
 enstein, 109 Fed. Rep. 314.
 
 102 
 
 HOPKINS ON TRADEMARKS. 
 
 [§42 
 
 ''Licensed Victuallers," relish ;'^^ ''Lightning," hay 
 knives ;'^^ "Lion," merchandise;'^- "Liverpool," woolen 
 cloth ;^^ "London Whiffs," cigars;^* "Lone Jack," smok- 
 ing tobacco/^ 
 
 "Magic," scythe-stones;^^ "Magnetic Balm," oint- 
 ment ;^^ "Magnolia," liquor ;'^^ "Maizena," corn flour ;'^^ 
 "Marvel," mill products;^" "Medicated Mexican Balm," 
 medicine ;^^ "Menlo Park," watches ;^2 <'Mojava," 
 blended coffee ;«^ "Muffet," neck-scarf s.^* 
 
 "Napoleon," cigars ;^^ "New Era," newspaper;^* 
 "Nickel," soap;«^ "Nickel-Li," cigars ;«« "No-To-Bac," 
 medicine.^^ 
 
 "0. F. C," whiskey ;»« "Old Crow," whiskey ;''i "Ome- 
 
 70— Cotton V. Gillard, 44 L. J. 
 Ch. 90. 
 
 71— Hiram Holt Co. v. Wads- 
 worth, 41 Fed. Rep. 34. 
 
 72 — Re Weaver, 10 Off. Gaz. 1. 
 
 73— Hirst v. Denham, L. R. 14 
 Eq. 542. 
 
 74 — Feder v. Brudno, 5 Ohio N. 
 P. 275. 
 
 75 — Carroll v. Ertheiler, 1 Fed. 
 Rep. 688. 
 
 76 — Pike Mfg. Co. v. Cleveland 
 Stone Co., 35 Fed. Rep. 896. 
 
 77— Smith v. Sixbury, 25 Hun. 
 232; 32 N. Y. Sup. Ct. 232. 
 
 78 — Kidd & Co. v. Mills, Johnson 
 & Co., 5 Off. Gaz. 337; Kidd v. 
 Johnson, 100 U. S. 617. 
 
 79 — Glen Cove Mfg. Co. v. Lude- 
 ling, 22 Fed. Rep. 823. 
 
 80 — Listman Mill Co. v. William 
 Listman Milling Co., 60 N. W. 
 Rep. 261; 88 Wis. 334. 
 
 81— Perry v. Truefit, 6 Beav. 56; 
 1 L. T. 384; Seb. 73. 
 
 82 — Ex parte Hampden Watch 
 Co., 81 Off. Gaz. 1282. 
 
 83 — American Grocery Co. v. 
 Sloan, 68 Fed. Rep. 539. 
 
 84 — Hygienic Fleeced Underwear 
 Co. V. Way, C. C. A. 137 Fed. Rep. 
 592, 595. 
 
 85— Goldstein v. Whelan, 62 Fed. 
 Rep. 124. 
 
 86— Bell v. Locke, 8 Paige, 75; 
 Cox, Am. Tr. Cas. 11. 
 
 87— Ex parte Butler, 87 Off. Gaz. 
 1781. 
 
 88— Schendel v. Silver, 18 N. Y. 
 Supp. 1; 63 Hun. 330. 
 
 89 — Sterling Remedy Co. v. Eu- 
 reka, etc. Mfg. Co., 70 Fed. Rep. 
 704; 80 Fed. Rep. 105. 
 
 90— Geo. T. Stagg Co. v. Taylor, 
 95 Ky. 651; 27 S. W. Rep. 247. 
 
 91 — W. A. Gaines & Co. v. Leslie, 
 54 N. Y. Supp. 421; W. A. Gaines 
 & Co. V. E. Whyte Grocery, Fruit 
 & Wine Co., 107 Mo. App. 507; 81 
 S. W. Rep. 648.
 
 §42] 
 
 WHAT CONSTITUTES A VALID TRADEMARK. 
 
 103 
 
 ga Oil," liniment ;»2 ''Osman," towels ;"3 ''Otaka," bis- 
 cuits ;»^ '' Oxford," bibles.»=^ 
 
 "Pain-Killer," medicine;"*^ ''Parabola," needles;-'^ 
 ''Pectorine," medicine;"^ **Pepto-Mangan," medicinal 
 preparation;"'' "Perfection," mattresses;^ "Persian," 
 thread ;2 "Pigs in Clover," puzzle;^ "Portland," stoves;^ 
 "Pride," cigars;'^ "Puddine," pudding preparation.^ 
 
 "Queen," shoes.'^ 
 
 "Ranier," beer;* "Rising Sun," stove polish;'* "Roger 
 Williams," cotton cloth ;'** "Rosebud," canned salmon ;^^ 
 "Royal," baking powder;*- "Royal Blue," carpet 
 
 13 
 
 sweeper, 
 
 "Sapolio," scouring brick ;*^ "Saponifier," concen- 
 trated lye;'5 "Sefton," cloth;*« "Shawknit," stockings;*' 
 
 92— Omega Oil Co. v. Weschler, 
 71 N. Y. Supp. 983. 
 93 — Barlow & Jones v. Johnson, 
 
 7 P. R. 395. 
 
 94 — Ex parte Lorenz, 89 Off. 
 Gaz. 2067. 
 
 95— Chancellor of Oxford Uni- 
 versity V. Wilmore-Andrews Pub. 
 Co.. 101 Fed. Rep. 443. 
 
 96— Davis v. Kendall, 2 R. I. 
 566; Davis v. Kennedy, 13 Grant 
 Up. Can. Ch. 523. 
 
 97— Roberts v. Sheldon. Fed. 
 Case No. 11,916; 18 Off. Gaz. 1277; 
 
 8 Biss. 398. 
 
 98— Smith v. Mason, W. R. 
 (1875) p. 62. 
 
 99— M. J. Breitenbach Co. v. 
 Spangenberg, 131 Fed. Rep. 160. 
 
 1 — Kyle V. Perfection Mattress 
 Co., 127 Ala. 39, 28 So. Rep. 545. 
 
 2— Taylor v. Carpenter (1), 3 
 Stoi'y. 458. 
 
 3 — Lyman v. Burns, 47 Off. Gaz. 
 660. 
 
 4 — Van Horn v. Coogan, 52 N. J. 
 Eq. 380; 28 Atl. Rep. 788. 
 
 5 — Hier v. Abrahams, 82 N. V. 
 519; 37 Am. Rep. 589. 
 
 6 — Clotworthy v. Schepp, 42 Fed. 
 Rep. 62. 
 
 7— Thomas G. Plant Co. v. May 
 Co.. 44 C. C. A. 534, 105 Fed. Rep. 
 375; Thomas G. Plant Co. v. May 
 Co., 100 Fed. Rep. 72. 
 
 8 — Kostering v. Seattle Brewing 
 & Malting Co., 54 C. C. A. 76, 116 
 Fed. Rep. 6^0. 
 
 9 — Morse v. Worrell, 10 Phila. 
 168. 
 
 10 — Barrows v. Knight, 6 R. I. 
 434; Cox, Am. Tr. Cas. 238. 
 
 11 — Ex parte Kinney. 72 Off, 
 Gaz. 1349. 
 
 12 — Royal Baking Powder Co. v. 
 Raymond, 70 Fed. Rep. 376; Ray- 
 mond v. Royal Baking Powder Co., 
 85 Fed. Rep. 231, 29 C. C. A. 245. 
 
 13 — Ex parte Grand Rapids 
 School Furniture Co., 87 Off. Gaz. 
 1957. 
 
 14 — Enoch Morgan's Sons Co. v. 
 Wendover, 43 Fed. Rep. 420. 
 
 15 — Pennsylvania Salt Mfg. Co. 
 V. Meyers, 79 Fed. Rep. 87. 
 
 16 — Hirst V. Denham, L. R. 14 
 Eq. 542. 
 
 17 — Shaw Stocking Co. v. Mack. 
 12 Fed. Rep. 707.
 
 104 
 
 HOPKINS ON TRADEMARKS, 
 
 :§42 
 
 "Silver Grove," whiskey ;i8 "Six Little Tailors," tailor- 
 ing firm's name;^^ "Slate Roofing," paint ;-^ "Sliced Ani- 
 mals," toysp^ "Social Register," directory ;2- "Star," 
 shirts;-^ iron,^-* oil,-^ soap,^^ lead pencils,-^ tobacco ;2^ "St. 
 James," newspaper,-'^ or cigarettes ;^^ "Sunlight," 
 soap;^^ "Swan Down," complexion powder i^^ ''Sweet 
 Caporal," cigarettes ;^^ "Sweet Opopouax of Mexico," 
 perfume ;^^ "Syrup of Red Spruce Gum," medicine.^'^ 
 
 "Tamar Indien," lozenges;^" "The Good Things of 
 Life," periodical ;^^ "The Nile," playing cards registered 
 as a print ;^^ "Tidal Wave," tobacco i^^ "Tivoli," beer;'''* 
 "Trilby," gloves ;^i "Twin Brothers," yeast.''^ 
 
 "Uneeda," biscuit.^^ 
 
 18— Seltzer v. Powell, 8 Phila. 
 296. 
 
 19 — Mossier v. Jacobs, 65 111. 
 App. 571. 
 
 20 — Re Glines, 8 Off. Gaz. 435. 
 
 21— Selchow V. Baker, 93 N. Y. 
 59. 
 
 22 — Social Reg. Ass'n v. Howard, 
 60 Fed. Rep. 270; 67 Off. Gaz. 1448. 
 
 23 — Morrison v. Case, 9 Blatchf. 
 548; 2 Off. Gaz. 544; Fed. Case No. 
 9845; Hutchinson v. Blumberg, 51 
 Fed. Rep. 829; Hutchinson v. Cov- 
 ert, 51 Fed. Rep. 832. 
 
 24 — Dixon v. Jackson, 2 Scot. L, 
 Rep. 188. 
 
 25 — Re American Lubricating 
 Oil Co., 9 Off. Gaz. 687. 
 
 26 — Re Cornwall, 12 Off. Gaz 
 138. 
 
 27 — Faber v. Hovey, Codd. Dig. 
 79, 242; Seb. 481. 
 
 28 — Liggett & Myer Tob. Co. v. 
 Sam Reid Tob. Co., 155 Mo. 843; 
 Liggett & Myer Tob. Co. v. Hynes, 
 20 Fed. Rep. 883. 
 
 29— Giblett v. Read, 9 Mod. 
 459; Seb. 3; Ex parte Foss, Re 
 Baldwin, 30 L. T. 354; 2 DeG. & J. 
 230; 27 L. J. Bkptcy. 17; 4 Jur. N. 
 
 S. 522; 21 L. T. 30; Seb. 159. 
 
 30— Kinney v. Basch, Seb. 542. 
 
 31 — Lever Bros. (Ltd.) v. Pas- 
 neld, 88 Fed. Rep. 484. 
 
 32— Tetlow V. Tappan, 85 Fed. 
 Rep. 774. 
 
 33 — Kinney Tob. Co. v. Mailer, 
 53 Hun, 340; 6 N. Y. Supp. 389; 
 Hornbostel v. Kinney, 110 N. Y. 
 94, 17 N. E. Rep. 666. 
 
 34— Smith v. Woodruff, 48 Barb. 
 438. 
 
 35— Kerry v. Toupin, 60 Fed. 
 Rep. 272. 
 
 36— Grillon v. Guenin, W. N. 
 1877, p. 14. 
 
 37— Stokes v. Allen, 9 N. Y. 
 Supp. 846; 56 Hun, 526. 
 
 38 — Ex parte United States 
 Playing Card Co., 82 Off. Gaz. 1209. 
 
 39— Sorg V. Welsh, 16 Off. Gaz. 
 910. 
 
 40 — Berliner Brauerei Gesell- 
 schaft V. Knight, W. N. 1883, p. 70. 
 
 41— Re Holt & Co.'s Trademark 
 (C. A.), L. R. (1891) 1 Ch. 711. 
 
 42— Burton v. Stratton, 12 Fed. 
 Rep. 696. 
 
 43 — National Biscuit Co. v. 
 Baker, 95 Fed. Rep. 135.
 
 §43] 
 
 WHAT CONSTITUTES A VALID TRADEMARK. 
 
 105 
 
 *'Valvoline," lubricating oil;** **Vitascope," ma- 
 chine.'*^ 
 
 ** Vulcan," matches.**' 
 
 "Waverly," bicycles;*^ "Willougliby Lake," scythe- 
 stones;*** Wi star's Balsam of Wild Cherry," medicine.** 
 
 "Yankee," soap.^*^ 
 
 § 43. Generic terms judicially defined.— It is confusing 
 to the student to be told that words indicating quality 
 cannot be a valid trademark, and yet to be confronted 
 by the physical fact and judicial dictum that the highest 
 function of the trademark is its indication of quality. 
 In a leading case Mr. Justice P'ield said that a trademark 
 is **a sign of the quality of the article ;"^^ and in the lead- 
 ing case of Amoskeag Manufacturing Co. v. Spear, the 
 learned court says that the trademark of a manufacturer 
 *'is an assurance to the public of the quality of his 
 goods. "^^ In the same opinion, however, the judge 
 
 44 — Leonard v. White's Golden 
 Lubricator Co., 38 Fed. Rep. 922; 
 Leonard v. "SVells, L. R. 26 Ch. D. 
 288. Per contra. Re Horsburgh, 
 53 L. J. Ch. 237. 
 
 45 — Vitascope Co. v. U. S. Phon- 
 ograph Co. 83 Fed. Rep. 30. 
 
 46 — Taendsticksfabriks Antiebo- 
 laget Vulcan v. Myers, 139 N. Y. 
 364. 
 
 47 — Ex parte Indiana Bicycle 
 Co., 72 Off. Gaz. 654. 
 
 48— Pike IMfg. Co. v. Cleveland 
 Stone Co., 35 Fed. Rep. 896. 
 
 49— Fowle V. Spear, 7 Pa. L. J. 
 176. 
 
 50 — ^Williams v. Adams, 8 Biss. 
 452; Fed. Case No. 17711; AVil- 
 liams V. Spence, 25 How. Pr. 366; 
 Williams v. Johnson, 2 Bos. 1. 
 
 51 — Manhattan Medicine Co. v. 
 Wood, 108 U. S. 218-222. 
 
 52 — Amoskeag Mfg. Co. v. Spear 
 (1849). 2 Sand. S. C. 599; Cox, 87; 
 Seb. 100. 
 
 In a recent case Judge Bradford 
 has called attention to the use of 
 the word "quality" in the cases, 
 and distinguished its two differ- 
 ent meanings, in the following 
 language: 
 
 "A trademark is designed to en- 
 able one legitimately to build up 
 or protect his business, but not to 
 deprive others of the right to use 
 necessary or proper means for car- 
 rying on an honorable competi- 
 tion in trade. No one has a right 
 to appropriate a sign or a symbol 
 which, from the nature of the fact 
 it is used to signify, others may 
 employ with equal truth, and there- 
 fore have an equal right to employ 
 for the same purpose. Canal Co. 
 V. Clark, 13 Wall. 311, 324. Hence 
 no one can acquire an exclusive 
 right to the use, as a trademark, 
 of a generic name, or word, which 
 is merely descriptive of an article, 
 or a sign, symbol, figure, letter,
 
 106 
 
 HOPKINS ON TRADEMARKS. 
 
 [§43 
 
 (Duer) observes that the manufacturer *' has no right to 
 appropriate a sign or symbol which, from the nature of 
 the fact which it is used to signify, others may employ 
 with equal truth, and therefore have an equal right to 
 employ for the same purpose. Were such an appropria- 
 tion to be sanctioned by an injunction, the action of a 
 court of equity would be as injurious to the public as it 
 is now beneficial; it would have the effect in many in- 
 stances of creating a monopoly in the sale of particular 
 
 brand, form or device, which either 
 on its face or by association indi- 
 cates or denotes merely grade, 
 quality, class, shape, style, size, 
 ingredients or composition of an 
 article or a word or words in com- 
 mon use designating locality, sec- 
 tion or region of country. The 
 word 'quality' is used in different 
 senses in the cases. It is employed 
 in some to denote the grade, ingre 
 dients or properties of an article, 
 and in others to indicate generally 
 the merit or excellence of an ar- 
 ticle as associated with or coming 
 from a certain source. While there 
 can be no valid trademark as de- 
 noting quality when used merely 
 in the former sense, there may be 
 a valid trademark as indicating 
 quality when used in the latter 
 sense. Thus in McLean v. Flem- 
 ing, 96 U. S. 245-253, the court 
 said: 
 
 " 'Such a proprietor, if he owns 
 or controls the goods which he ex- 
 poses to sale, is entitled to the ex- 
 clusive use of any trademark 
 adopted and applied by him to the 
 goods to distinguish them as being 
 of a particular manufacture and 
 quality,' etc. 
 
 "In Medicine Co. v. Wood, 108 
 U. S. 218, 222; 2 Sup. Ct. 439, tha 
 court said: 
 
 " 'He may thus notify the public 
 of the origin of the article and 
 secure to himself the benefits of 
 any particular excellence it may 
 possess from the manner or mate- 
 rials of its manufacture. His 
 trademark is both a sign of the 
 quality of the article and an as- 
 surance to the public that it is a 
 genuine product of his manufac- 
 ture.' 
 
 "In Menendez v. Holt, 128 U. S. 
 514, 520; 9 Sup. Ct. 144, the court, 
 speaking of the words 'La Favo- 
 rita' as applied to flour, said: 
 
 " 'It was equivalent to the signa- 
 ture of Holt & Co. to a certificate 
 that the flour was the genuine ar- 
 ticle which had been determined 
 by them to possess a certain de- 
 gree of excellence. . . . And 
 the fact that flour so marked ac- 
 quired an extensive sale, because 
 the public discovered that it might 
 be relied on as of a uniformly 
 meritorious quality, demonstrates 
 that the brand deserves protec- 
 tion rather than it should be de- 
 barred therefrom, on the ground, 
 as argued, of being indicative of 
 quality only.' " 
 
 Dennison Mfg. Co. v. Thomas 
 Mfg. Co., 94 Fed. Rep. 651-657.
 
 §43] WHAT CONSTITUTES A VALID TRADEMARK. 107 
 
 goods as exclusive as if secured by a patent, and freed 
 from any limitation of time." 
 
 In another early case the chancellor observed: "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 arti- 
 cles in which he deals, ... no property in such 
 words, marks or devices can be acquired. There is ob- 
 viously 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 ar- 
 ticle could be defrauded. ' '^ And in more recent cases the 
 rule has been explained in somewhat similar terms. *'It 
 is true that no one can appropriate as a trademark the 
 commercial name of an article which every man has the 
 right to make and sell."- 
 
 **No manufacturer can acquire a special property in 
 an ordinary term or expression, the use of which as an 
 entirety is essential to the correct and truthful designa- 
 tion of a particular article or compound. The courts 
 have gone a long way, and with plain justice, in protect- 
 ing the honest and enterprising manufacturer of any 
 good and useful article from the unscrupulous pirating 
 of his special reputation; but they have been equally 
 careful to prevent any attempted monopoly of that which 
 is common to all."^ 
 
 ''Nor can a generic name, or a name merely descrip- 
 tive of an article of trade, of its qualities, ingredients or 
 characteristics, be employed as a trademark, and the ex- 
 clusive use of it be entitled to legal protection. No one 
 
 1— stokes V. Landgraff, 17 Barb. Phila. 226; Price & Steuart, 423, 
 608; Cox, 137; Seb. 121. 424. 
 
 2 — Dreydoppel v. Young, 14 3 — Town v. Stetson, 5 Abb. Pr. 
 
 N. S. 218; Cox, 514, 515.
 
 108 HOPKINS ON TRADEMARKS. [§44 
 
 can claim protection for the exclusive use of a trade- 
 mark or tradename which would practically give him a 
 monopoly in the sale of any goods other than those pro- 
 duced or made by himself. If he could, the public would 
 be injured rather than protected, for competition would 
 be destroyed."^ 
 
 The fact that the article to which the trademark is 
 applied has obtained such a wide sale that the mark has 
 become indicative of quality, as well as of origin and 
 ownership, is not of itself sufficient to render the mark 
 puhlici juris and so deprive its owner of the right to re- 
 lief against infringers.^ 
 
 § 44. The name given an unpatented invention by the 
 inventor.— Such names clearly should, if otherwise unob- 
 jectionable, be treated as valid trademarks in the hands 
 of the inventor or his assigns. Under the rule discussed 
 in the next section, if the inventor patents his invention, 
 he cannot lengthen his monopoly's duration by applying 
 a trademark to the patented article; his right to the 
 trademark expires with the life of the letters patent. 
 Where he elects to dedicate his invention to the public, 
 his right to adopt a trademark for such specimens as he 
 himself may manufacture, is obvious. But the name by 
 which he distinguishes his invention, being the necessary 
 name of the article, cannot be used by another, holding 
 no assignment from the inventor.^ 
 
 § 45. Necessary name of a product.— The necessary 
 name of a product, natural or manufactured, cannot be a 
 trademark, for the reasons we have discussed. This is 
 true of goods manufactured under a patent. The descrip- 
 tive name by which they are known during the life of 
 the letters patent becomes their popular name in the 
 
 4— Delaware & Hudson Canal see Mfg. Co., 138 U. S. 537, 547; 
 
 Co. V. Clark, 13 Wall. 311-323; 5 Burton v. Stratton, 12 Fed. Rep. 
 
 Am. L. T. 135; 1 Off. Gaz. 279; 696. 
 
 Seb. 327. 6— H. B. Chaffee Mfg. Co. v. Sel- 
 
 5 — Lawrence Mfg. Co. v. Tennes- chow, 131 Fed. Rep. 543.
 
 § 45] WHAT CONSTITUTES A VALID TRADEMARK. 109 
 
 trade— the name by which tliey are necessarily known 
 and distinguished. "VVlien, therefore, the protection of 
 the patent has ex})ired the name is puhlici juris, and the 
 manufacturer under the letters patent can claim no trade- 
 mark in it.^ 
 
 Thus, the word ''Linoleum" as applied to a kind of 
 floor covering,^ '* Singer" applied to sewing machines,** 
 and ''Lanoline" applied to a wool-fat preparation,^** 
 were held to be puhlici juris upon the exj)iration of 
 the letters patent covering the articles to which they 
 were applied. 
 
 Analogous to this class of cases is that where new 
 combinations of old elements are found, and it is sought 
 to distinguish such a new compound or combination by 
 joining the descriptive names of its constituent elements. 
 This is best illustrated by a case where the words claimed 
 as trademark were ' ' Ferro-phosphorated Elixir of Cali- 
 saya Bark," which claim was distinctly negatived by 
 the New York Court of Appeals, Folger, J., saying: 
 ''They may not be appropriated by one to mark an 
 article of his manufacture, when they may be used 
 truthfully by another to inform the public of the ingre- 
 dients which make up an article made by him."^^ For 
 this reason the name "Acid Phosphate" applied to a 
 medicinal preparation,^ ^ and "Indurated Fibre" applied 
 to wares made of wood-pulp,^-^ are not valid trademarks; 
 and the word "Bromo-Quinine" was refused registration 
 
 7 — Centaur Co. v. Robinson, 91 U. S. 205; Singer Mfg. Co. v. June, 
 
 Fed. Rep. 889; Same v. Neathery, 163 U. S. 169. 
 
 91 Fed. Rep. 891; Same v. Hughes 10 — JafEe v. Evans & Sons, Ltd., 
 
 Bros. Mfg. Co., 91 Fed. Rep. 901. 75 N. Y. Supp. 257. 
 
 The cases are collected, ante, § 11 — Caswell v. Davis, 58 N. Y. 
 
 39. 223-233. 
 
 8 — Linoleum Mfg. Co. v. Nairn, 12 — Rumford Chemical Works 
 
 L. R. 7 Ch. D. 834; 47 L. J. Ch. v. Muth, 35 Fed. Rep. 524. 
 
 430; 38 L. T. N. S. 448; 26 W. R. 13— Indurated Fibre Co., v. 
 
 463; Seb. 536. Amoskeag Fibre Co., 37 Fed. Rep. 
 
 9— Singer Mfg. Co. v. Bent, 163 695.
 
 110 HOPKINS ON TRADEMARKS. [§ 45 
 
 as a trademark for medicines,^* as was also the word 
 ' ' Ferro-Manganese " as a mark for mineral waters/ ''* and 
 the word ''Bromo-Celery" for a medicinal preparation.^® 
 
 There are cases, however, where such words or combi- 
 nations of words have been held not to be descriptive. 
 Thus the word "Cocoaine" as applied to a hair wash 
 compounded from cocoanut oil and other ingredients,^^ 
 and *' Magnetic Balm" as applied to a medicinal com- 
 pound,^ '^ have been upheld as valid trademarks. The 
 word ''Electro-Silicon" applied to a polishing compound 
 has also been upheld,^ ^ and it appears very clear that the 
 words ''Magnetic" or "Electric" as used in the two 
 cases last referred to are purely arbitrary and fanciful. 
 
 We have noted that the patent office has refused regis- 
 tration to an api)licant offering the word "Bromo-Qui- 
 nine" as the name of a medicinal preparation. This 
 decision is in hopeless conflict with some of the adjudi- 
 cated cases. The word "Bromidia," as a trademark for 
 a chemical combination of chloral hydrate, bromide of 
 potassium and other substances, was admitted to regis- 
 tration and subsequently upheld as valid, the court upon 
 final hearing saying that the word "has no meaning 
 whatever except as connected with complainants' busi- 
 ness, and as associated with and indicative of a soothing 
 cxr soporific mixture prepared and sold by them. ' '^" The 
 word " Bromo-Caffeine " was admitted to registration, 
 and upheld judicially, the Court of Appeals of New York 
 saying, per Peckham, J., "We think there is a distinc- 
 tion between the facts in this case and that of Caswell 
 
 14 — Re Grove, Newton, Dig. 192; 18 — Smith v. Sixbury, 25 Hun, 
 
 8. c. Ibid. 191; 67 Off. Gaz. 1447. 232. 
 
 15 — Re Excelsior Spring Co., 19 — Electro-Silicon Co. v. Trask, 
 
 Newton, Dig. 153. 59 How. Pr. 189; Electro-Silicon 
 
 16 — Re Bromo-Celery Co., New- Co. v. Hazard, 29 Hun, 369. 
 
 ton. Dig. 190. 20 — Battle & Co. v. Finlay (pre- 
 
 17 — Burnett v. Phalon, 3 Keyes, liminary hearing), 45 Fed. Rep. 
 
 594. 796, (final hearing) 50 Fed. Rep. 
 
 106.
 
 §46j WHAT CONSTITUTES A VALID TR.UJEMARK. Ill 
 
 V. Davis.^^ In this case the term perhaps suggests that 
 some one among the hundreds of substances that bromine 
 may combine witli lias been used in such combination 
 together witli calTeine. There are, however, some seven 
 different ingredients in the plaintiff's preparation, and 
 there is no free bromine among them, and there is no 
 evidence as to what the substance is which the bromine 
 (if any) had combined with before beijig used in the 
 preparation, and so it is plain that the words 'Bromo- 
 Caffeine' do not in fact describe the ingredients or even 
 give any clear general idea as to what they are."-- It is 
 the general rule that ''when an article is made that was 
 theretofore unknown, it must be christened with a name 
 by which it can be recognized and dealt in; and the name 
 thus given to it becomes public property, and all who 
 deal in the article have the right to designate it by the 
 name by which alone it is recognizable."-^ 
 
 Under peculiar circumstances a mark, otherwise a 
 valid trademark, will become the common property of 
 two or more merchants, each of whom may have a right 
 to its use, provided he so uses it as not to pass off his 
 goods as those of one of the others entitled to use the 
 mark. Thus a plaintiff was refused an injunction re- 
 straining the use of the mark ''Aramingo Check" to des- 
 ignate printed cloth made at the Aramingo Mills, where 
 the defendant showed that the cloth sold by him under 
 the mark was the product of the same mills, and the la- 
 bels used by the respective parties differed in size and 
 color so that confusion could not result from their use.^^ 
 
 § 46. Marks common to the trade.— In a considerable 
 number of cases, marks have been involved which, wholly 
 or in part, are common to the particular trade in which 
 
 21—58 N. Y. 223, cited supra. Battery Co. v. Western Elec. Co., 
 22— Keasbey v. Brooklyn Chemi- 23 Fed. Rep. 276. 
 cal Works, 142 N. Y. 467-476. 24— Colloday v. Baird, 4 Phila. 
 
 23— Wallace, J., in Leclanche 139; Cox' American Trademark 
 
 Cases, 257.
 
 112 HOPKINS ON TRADEMARKS. [§47 
 
 they are used. It is obvious that this condition must, in 
 many cases, have originated in infringement, or an at- 
 tempt to prey upon the mark or dress of the first trader 
 who adopted it: and that, in time, it became impossible 
 to tell to whom the mark or dress belonged. Thus the 
 "sawbuck" or ''cross-bar" mark or brand has been 
 found common to the tea-trade.-^ 
 
 § 47. The trademarked article not a trademark.— It 
 is obvious that if a commercial article itself could consti- 
 tute a trademark, there would be little use for patent 
 laws. As Judge Cai*penter said, "in the very nature of 
 the case, * * * the trademark must be something 
 other than, and separate from, the merchandise."-^ 
 
 Nor can the article, by being colored, constitute a 
 trademark. This is illustrated by the case in which it 
 was sought to protect a bronzed horse-shoe nail as a 
 trademark.^" It is again illustrated by the attempts to 
 hold as a trademark a "distinctively colored streak in a 
 wire rope,"-*^ or a "rose-colored metallic capsule" for a 
 champagne bottle.^^ 
 
 § 48. Packages as trademarks.— It is equally obvious 
 that a commercial package cannot be a trademark. In 
 one of the early cases upon this rule. Judge Johnson said: 
 ' * It appears that the ornamental tin pail which the plain- 
 tiff employs is a common article in commerce, and that 
 pails made of tin, ornamented or unomamented, are and 
 have long been in use for all such purposes as any one 
 chose to apply them to. The question whether any one 
 can seize upon such an article and make title to its exclu- 
 sive use for a special purpose, by calling it a trademark, 
 must be far from clear in favor of the claimant. The 
 
 25— Castle v. Siegfried, 103 28— A. Leschen & Sons Rope Co. 
 
 Calif. 71, 37 Pac. Rep. 210. v. Broderick & Bascom Rope Co., 
 
 26— Davis v. Davis, 27 Fed. Rep. 134 Fed. Rep. 571, Affirming s. c. 
 
 490, 492. 123 Fed. Rep. 152. 
 
 27_putnam Nail Co. v. Dulaney, 29— Mumm v. Kirk, 40 Fed. Rep. 
 
 140 Pa. 205. 589.
 
 § 49] WHAT CONSTITUTES A VALID TRADEMARK. 113 
 
 forms and materials of packages to contain articles of 
 merchandise, if such claims should be allowed, would 
 be rapidly taken up and approin-iated by dealers, until 
 some one, bolder than the others, might go to the very 
 root of things, and claim for his goods the primitive 
 brown paper and tow string, as a peculiar property. It 
 will be observed, that it is not a mark at all which is 
 claimed, but the whole enveloping package, the whole 
 surface of which is covered by the ornamental pattern. "**'' 
 
 Nor can a package be made a trademark by being col- 
 ored."'^ Judge Coxe concisely embodied the rule in these 
 words: **The trend of the law is strongly towards the 
 proposition that, in ordinary circumstances, the adoption 
 of packages of peculiar fonn and color alone, unaccom- 
 panied by any distinguishing symbol, letter, sign, or seal, 
 is not sufficient to constitute a trademark. "•"- 
 
 § 49. Method of arranging goods as trademark.— 
 The arrangement of goods in a package can not consti- 
 tute a trademark. Judge Welker said: ''The complain- 
 ants could not obtain a trademark * * * in the man- 
 ner in which the gun might be placed in the boxes. "^^ 
 Judge Carpenter made the same ruling with reference to 
 the arrangement of cakes of soap in red and yellow wrap- 
 pers, the colors alternating.^* 
 
 The importance of these rulings has vastly decreased 
 of late years, owing to the fact that all of these matters, 
 packages, labels, and methods of packing, are now under- 
 stood to relate only to proof of fraudulent intent in com- 
 petition. No technical trademark right exists in either of 
 them; in the abstract, they are each of common right. 
 But like size, shape, form and color, each readily becomes 
 
 30— Harrington v. Libby, Fed. Co. v. Rouss, 40 Fed. Rep. 5S5, 587 
 
 Case No. 6,107. 12 Off. Gaz. 188. 33— Adams v. Heisel, 31 Ferl. 
 
 31— Philadelphia Novelty Mfg. Rep. 279. 
 
 Co. V. Blakesley Novelty Co., 40 34 — Davis v. Davis, 27 Fed. Rep. 
 
 Fed. Rep. 588. 490. 
 
 32— Philadelphia Novelty Mfg. 
 8
 
 114 HOPKINS ON TRADEMARKS. [§ 50 
 
 subsen'ient as an instrumentality of fraud where unfair 
 competition is intended. They enter into the litigation 
 of today, not upon the theory that property is claimed in 
 them, but merely as badges of fraud. 
 
 § 50. Words taken from the dead languages.— Words 
 from the dead languages have frequently been applied to 
 merchandise and sustained as valid trademarks, as, for 
 example, the Greek ''Eureka" as a mark for shirts^^ or 
 for a fertilizing material,'"^' and the Latin "Excelsior" for 
 stoves^^ or soap.^^ The Latin phrase ''Ne Plus Ultra" 
 was invalid as a trademark solely because the plaintiff 
 did not show exclusive user in himself, and the words 
 and an accompanying device were found to be common 
 to the trade.^^ It has been said by the Canadian supreme 
 court that there can be property in a word of a dead lan- 
 guage even if it be expressive of quality,^" but this dictum 
 is incorrect, as appears from the authorities reviewed in 
 the next succeeding section. A descriptive word from a 
 dead language cannot be other than a generic term when 
 used as a mark for goods. Thus, on an application for 
 registration for the word ''Sanitas" for medicines, Kay 
 J., remarked: ''The truth is that if this word were ap- 
 plied to medicines, it would mean to any ordinary person 
 that the medicines were health medicines; that is, health- 
 giving medicines; and that is descriptive of the quality 
 or of the effect of the use of these medicines. How is it 
 possible that it is not descriptive?"^^ 
 
 35_Ford v. Foster, L. R. 7 Ch. 39— Beard v. Turner, 13 L. T. 
 
 D 611. N. S. 746; Seb. 251. 
 
 36— Alleghany Fertilizer Co. v. 40— Partlo v. Todd, 17 Can. S. 
 
 Woodside, 1 Hughes, 115, Fed. C. R. 196. 
 
 Case No. 206. 41 — Re Sanitas Co., 4 R. P. C. 
 
 37_Sheppard v. Stuart, 13 533; 58 L. T. 166; Cartmell, 305. 
 
 Phila. 117; Price & Steuart, 193. Similar reasoning forbade the 
 
 38 — Braham v. Bustard, 1 H. & registration of "Somatose" as a 
 
 M. 447. "Excelsior" applied to trademark for a nourishing meat 
 
 gun-cotton goods was not upheld, product; the Greek "Soma," gen- 
 
 Steihthal v. Samson, Seb. 546. itive "Somatos," being the equiva-
 
 § 51 J WHAT CONSTITUTES A VALID TRADEMARK. 115 
 
 § 51. Words and phrases from modem foreign lan- 
 guages.— This topic has been fruitful of conflicting hold- 
 ings. It is not settled what character of words so taken 
 will be sustained as valid trademarks. 
 
 The English courts have consistently adhered to the 
 rule announced by Chitty, J., in Davis v. Stribolt: ''I 
 am of the opinion that in reference to an article produced 
 in a foreign countr}' and imported into England, where 
 it was previously unknown and without a name, the word 
 used in that foreign countrj^ as the common term to de- 
 scribe or denote the article is not a fancy name within 
 the meaning of the act." For these reasons the Norwe- 
 gian words *'Bokel" and "Bokol" (meaning "beer") 
 were held not valid as trademarks for beer.^^ 
 
 A curious case is that of Re Rotherham. The house of 
 Rotherham of Coventr}^ had long made and exported 
 watches to Tod & Co. of Alexandria, by whom they were 
 sold, such watches bearing upon their dials the word 
 '*Tod" in Arabic characters; "Tod" as an Arabic sub- 
 stantive meaning "A high mountain." The Arabic 
 word was registered as a trademark, Vice-Chancellor Ba- 
 con holding an order of the commissioners prohibiting 
 registration of words in foreign languages invalid.^^ 
 
 The phrase "Flor Fina Prairie Superior Tabac" was 
 held to be a valid trademark for cigars,"*^ as have been 
 the words "Tamar Indien" for lozenges,^^ "Intimidad" 
 for cigars,^« "El Destino," also for cigars,-*^ "El Cabio" 
 
 lent of the English "body;" "so- 44 — Cope v. Evans, L. R. 18 Eq. 
 
 mat" being the root of many Eng- 138; 30 L. T. N. S. 292; 22 W. R. 
 
 lish words and "ose" a common 453; Seb. 433. 
 
 English suffix. Re Farben-fa- 45 — Grillon v. Guenin, W. N. 
 
 briken T. M. K., L. R. (1894) 1 Ch. 1877, p. 14; Seb. 532. 
 
 D. 645. 46 — Caruncho v. Stephenson, 25 
 
 42— Davis v. Stribolt, 59 L. T. Sol. J. 929. 
 
 S54; Cartmell, 105. 47— Pinto v. Badman, 8 R. P. C. 
 
 43— Re Rotherham, 29 W. R. 181; Cartmell, 270. 
 503; Seb. 647.
 
 116 HOPKINS ON TRADEMARKS. [§ 51 
 
 for tobacco/^ and "La Favorita" for flour.^^ ''Maza- 
 wattee," a compound of the Hindustani words "Maza," 
 meaning taste or relish, and the Singalese ''Wattee," 
 meaning garden or estate, is a valid trademark because 
 it conveys no meaning to any class of persons, English, 
 Hindoo or Singalese, and has no reference to the quality 
 of the goods/'*^ 
 
 With reference to " Pepto-Mangan, " used as a mark 
 for a medicinal preparation. Judge Holt has said, "It 
 seems, if analyzed by a person familiar with the Greek 
 and German languages, somewhat descriptive, but I think 
 it would seem to the general public to be an artificial and 
 manufactured word. ' '^^ 
 
 The rules thus far discussed in this section do not seem 
 to apply to aboriginal words or sounds. The word (or 
 sound) "Oomoo, " taken from the language of the Aus- 
 tralian aborigines, was admitted to English registration 
 by Chitty, J., after a careful consideration;''- on the other 
 hand, the word "Kokoko," meaning "owl" in the lan- 
 guage of the Chippeway Indians, was refused registra- 
 tion as a trademark for cotton goods.^^ 
 
 It was held in a dictum of the supreme court of Can- 
 ada, in the very thoroughly considered case of Partlo v. 
 Todd, that a descriptive foreign word, or a word in a 
 dead language not known to people in general, because it 
 is not understood, may become the trademark of the per- 
 son who first uses it upon a particular article sold by 
 him.''^ This theory has been affirmed by a New York 
 state court and denied by Judge Showalter in the federal 
 circuit court for the Northern District of Illinois, in two 
 
 48— Solis Cigar Co. v. Pozo, 16 52— Re Burgoyne, 6 R. P. C. 
 
 Colo. 388; 26 Pac. Rep. 556. 227; 61 L. T. 39; Cartmell, 85. 
 
 49 — Menendez v. Holt, 128 U. S. 53 — Re Jackson Company's 
 
 514. Trademark, 6 R. P. C. 80; Cart- 
 
 50— Re Densham, L. R. (1895) mell, 177. 
 
 2 Ch. D. 176. 54— Partlo v. Todd, IT Can. S. 
 
 51— M. J. Brietenbach Co. v. C. R. 196-213. 
 Spangenberg, 131 Fed. Rep. 160.
 
 § 51J WHAT CONSTITUTES A \ALID TILVUEMARK. 117 
 
 suits of the same complainant, involving the right to the 
 word ''Matzoon" as a trademark for a food product 
 made of fermented milk. "Matzoon" or "Maadzoon" 
 appears to be the sound of the name which Armenians 
 give to a similar article made of fermented milk in Tur- 
 key. The New York court says: "I do not think that 
 such a term can properly be regarded as descriptive in 
 this country. It would be absolutely meaningless to all 
 but a little group of Armenians in the millions of inhabi- 
 tants of the United States. It would be equally mean- 
 ingless in most of Europe. A Choctaw word would sig- 
 nify just as much. To the medical profession, among 
 whom the plaintiff sought approval for his product, and 
 to the drug trade, the name 'Matzoon' was practically 
 an arbitrary or fanciful designation. It was not incor- 
 porated into the English langage. It was derived from 
 a language hardly known here, and to the vast majority 
 of our people it meant nothing. Hence the rule upon 
 which the defendant relies has no application here." It 
 was accordingly held to be a valid trademark.^'^ That 
 this rule is dangerous to the law of trademarks is appar- 
 ent. If it is left to the courts to say when a descriptive 
 word taken from a modern foreign language may or may 
 not be used as a trademark, practically endless litigation 
 is opened to future generations. The court forgot the 
 rule that a trademark must be capable of universal use, 
 and knows no territorial restriction.^*^ As Chitty, J., re- 
 marked in Davis v. Striholt: ''If the argument were 
 well founded, the importer into this country of any for- 
 eign article not previously known in this country could 
 restrain any one else from using the name by which it 
 was called in the country in which it was produced. "^^ 
 Upon the application to Judge Showalter for a prelimin- 
 
 55— Dadirrian v. Yacubian, 37 N. 57— Davis v. Stribolt, 59 L. T. 
 
 Y. Supp. 611. N. S. 854, cited supra. 
 
 56 — Subject to the exceptions 
 noted ante, § 13.
 
 118 HOPKINS ON TRADEMARKS. [§ 51 
 
 ary injunction to restrain the use of the same word ' ' Mat- 
 zoou," that learned court said: "The strong contention 
 is that Dr. Dadirrian introduced into this country a prod- 
 uct which was unknown here, and by a name which was 
 equally unknown, and that, since the name has become 
 identified here with the article as made by him his prop- 
 erty in the name should be recognized. But, as already 
 said, the product was in fact old, as was also the name. 
 The ignorance of people in this country touching it, its 
 uses and its name, cannot be treated as property, and be, 
 in a manner, capitalized as an element in the good-will 
 of this complainant. This would be the case if no other 
 dealer was permitted to tell what Matzoon is, and what 
 a considerable portion of the human race has found it 
 useful for, after an experience with it under that name 
 which, according to the record, dates back some eight 
 centuries." The application was accordingly denied, 
 and the ruling of the trial court was followed in the first 
 circuit and subsequently upheld by the United States cir- 
 cuit court of appeals for that circuit.^^ 
 
 The German word ''Ansatz," meaning ''Compound,'* 
 has been refused registration as a trademark for bitters,^® 
 as have been the words "Chili Colorow" (meaning red 
 pepper in provincial Spanish), as a trademark for condi- 
 ments.^° 
 
 Vice-Chancellor Shadwell held a complainant who 
 marked watches manufactured by him for the Turkish 
 trade with the Turkish word "Pessendede" (meaning 
 warranted) in Turkish characters, entitled to the exclu- 
 sive right to so mark his watches. This was, however, 
 
 58 — Dadirrian v. Yacubian, 72 Selchow v. Chaffee & Selchow Mfg. 
 
 Fed Rep. 1010-1014; 75 Off. Gaz. Co., 132 Fed. Rep. 996. 
 
 1856; followed in Dadirrian v. Ya- 59 — Re Weisman, Newton, Dig. 
 
 cubian (2). 90 Fed. Rep. 812. Lat- 119. 
 
 ter case affirmed on appeal, Dadir- 60 — Re Railton, Newton, Dig. 
 
 rian v. Yacubian (3), 98 Fed. Rep. 213. 
 872, 39 C. C. A. 321. Followed in
 
 §51] WJIAT CONSTITUTES A VALID TRADEMARK. 119 
 
 not necessary to the decision of the case, and was a mere 
 dictum.^^ 
 
 The case of Broadhurst v. Barlow was that of plaintiffs 
 who used, beside a symbol of a lion in a scroll, the words 
 ''Exactly 12 Yards," in Turkish, Annenian and Greek, 
 upon the rolls of cloth made by them for exportation to 
 Greece and Turkey. With other relief, the defendant 
 was enjoined from using the words "exactly 12 yards" 
 in the languages used by plaintiffs. This relief would 
 seem to be incidental to the portion of the injunction 
 which related to fanciful scrollwork used by both par- 
 ties.«2 
 
 The use of the word ' * Grenadine " as a trademark for 
 a syrup made of pomegranate juice was protected by 
 injunction against a defendant who began the sale of 
 another syinip under the name of ' ' Grenade Syrup, ' ' not- 
 withstanding the word "Grenade" in French signifies 
 "Pomegranate." This was purely a case of unfair com- 
 petition.*''^ The patent office has refused registration for 
 the words "Fur Familien-Gebrauch" (For Family Use) 
 and "Lawrence Feiner Familien-Flanner ' (Lawrence 
 Fine Family Flannel), but upon the ground that they 
 were mere words in common use and not distinctive.^'' 
 And it is now the fixed rule of that oflBce that no descrip- 
 tive words reproduced in letters from a foreign language 
 will be admitted to registration, when registration would 
 be refused to their English equivalents.**^ 
 
 61 — Gout V. Aleploglu, 6 Beavan, tS Fed. Rep. 416; Fischer v. Blank. 
 69; 5 Leg. Obs. 495; Seb. 51. Cox, Manual, 731, 138 N. Y. 244. 
 
 62— Broadhurst v. Barlow, W. N. 63— Rillet v. Carlier, 61 Barb. S. 
 1872. p. 212; L. J. Notes of Cases. ^- ^^^' ^^ ^^"^^ ^- N- S. 186; Seb. 
 p. 183; Seb. 411. The use of labels ^^^- "^^^ ^'^'^^ "Ethiopian" print- 
 printed in several languages was '^ '" Egyptian characters upon 
 
 stockings was protected from in- 
 fringement, but in a case of un- 
 fair competition. Hine v. Lart, 10 
 Seb. 432; Curtis v. Bryan, 2 Daly, j^j. i06- 7 L T 41 
 212; Cox, 434, Siegert v. Abbott 64-Re Lawrence & Co., 10 Off. 
 (2), Cox. Manual, 718; Societe Gaz. 163; Seb. 504. 
 Anonyme v. Western Distilling Co., Q^—Ex parte Stuhmer. 86 Off. 
 
 enjoined in Siegert v. Findlater, L. 
 R. 7 Ch. D. 801; Siegert v. Ehlers.
 
 120 HOPKINS ON TRADEMAKi:^^. [§52 
 
 § 52. Words become generic through use.— A word 
 originally fanciful and indicative of origin or ownership 
 may through the laches of the owner become puhlici 
 juris. Thus the word " Chlorodine, " while originally a 
 good trademark, became generic through the failure of 
 the manufacturer to prosecute a suit brought by him to 
 restrain its use,^*^ and because it had become the name 
 of the article.*^^ This, of course, is substantially a hold- 
 ing that the trademark has been abandoned by the own- 
 er's neglect. The American courts have been averse to 
 so holding. It was said in Taylor v. Carpenter that the 
 court was "not aware that a neglect to prosecute, be- 
 cause one believed he had no rights, or from mere pro^ 
 crastination, is any defense at law, whatever it may be 
 in equity, except under the statute of limitations pleaded 
 and relied on, or under some positive statute, like that 
 as to patents, which avoids the right if the inventor per- 
 mits the public to use the patent some time before taking 
 out letters."*'^ Words primarily indicative of origin or 
 ownership remain valid as trademarks notwithstanding 
 the fact that the articles to which they are applied may 
 obtain such extensive sales that the marks have also be- 
 come indicative of quality.'^^ 
 
 Gaz. 181. In this case the appli- ground for withholding relief, cit- 
 cant sought registration for the ing, in support of this proposition, 
 words "Gold Label" produced in inter alia, the opinion of Chancel- 
 Hebrew characters. lor Walworth in Smith v. Adams. 
 
 66 — Browne v. Freeman (1), 12 6 Paige, 435-443; and the copy- 
 
 W. R. 305; 4 N. R. 476. right case of Lewis v. Chapman. 3 
 
 67— Browne v. Freeman (2), W. Beavan, 133, where a delay of six 
 
 N. 1873, 178; Amoskeag Mfg. Co. years was held to disentitle the 
 
 V. Garner, 55 Barb. 151; 6 Abb. Plaintiff from relief. 
 
 Pr. N. S. 265; Cox, 541. 68— Taylor v. Carpenter, 2 Wood. 
 
 In this case the controlling fact & M. 1; 9 L. T. 514; Cox, 32. 
 
 was that the complainant's and 69 — Burton v. Stratton, 12 Fed. 
 
 defendant's marks were used on Rep. 696-702; Lawrence Mfg. Co. v. 
 
 different classes of goods. The Tennessee Mfg. Co., 138 U. S. 537- 
 
 court, however, expressly names 547. 
 the laches of the complainant as a
 
 § 53] WHAT CONSTITUTES A VALID TRADEMARK. 121 
 
 Whether or not a word has become public property, in 
 that it has acquired a generic meaning, descriptive of a 
 general kind, quality, or class of goods is a pure ques- 
 tion of fact to be determined from the evidence in each 
 particular caseJ'^ 
 
 § 53. The use of generic names protected.— Possibly 
 the widest deviation from tli(i narrow path of trademark 
 protection which has been accomplished by the law of un- 
 fair competition is to be found in the cases involving the 
 deceptive use of generic terms. The supreme court of the 
 United States has held in regard to the name of a person 
 used as a descriptive name of a patented article, during 
 the life of a patent, that while that name becomes piihlici 
 juris upon the expiration of the patent, it must be so used 
 by manufacturers other than the original maker as not 
 to deceive the public into the belief that the goods offered 
 for sale are the goods of such original maker.'^^ The 
 same rule has been established in England.'^- 
 
 So it was held by Mr. Justice McKenna, when circuit 
 judge, that ''Syrup of Figs" was entitled to injunctive 
 protection. He said: "Kespondent urges tliat the words 
 * Syrup of Figs' are descriptive, and that complainant de- 
 ceives when it uses them to designate its compound. The 
 deceit does not appear on the face of the bill, and it 
 is unimportant if they are descriptive. The question is 
 now, not whether complainant has the exclusive right to 
 use the words 'Syrup of Figs' or 'Fig Syrup,' but it is 
 whether respondent has, by use of them and other words, 
 and by the other imitations alleged and exhibited, so far 
 imitated the form of complainant's device and descrip- 
 
 70— Williams Mfg. Co. v. Noera, & Co., 39 Fed Rep. 209; Singer 
 
 158 Mass. 110, 32 N. E. Rep. 1037. Mfg. Co. v. Brill, Cox. Manual, 
 
 71— Singer Mfg. Co. v. June Mfg. 672. 
 
 Co., 163 U. S. 169; Singer Mfg. Co. 72— Singer Mfg. Co. v. Loog, H. 
 
 V. Bent, 163 U. S. 205. See, also, L. 8 A. C. 15; 53 L. J. Ch. 481; 48 
 
 to the same effect, Fairbanks v. L. T. 3; 31 W. R. 325; Cartmeil, 
 
 Jacobus, 14 Blatchf. 337; Fed. 306. 
 Case No. 4608. Adee v. Peck Bros.
 
 122 HOPKINS ON TRADEMARKS. [§53 
 
 tiou to represent its goods as its goods, and appropriate 
 its reputation and trade. The gravamen of the action is 
 the simulation of complainant's devices and the decep- 
 tion of purchasers. This is the principle of the best con- 
 sidered cases, uniting them, notwithstanding their di- 
 verse facts. "^^ 
 
 In affirming the decision of Judge McKenna, however, 
 the circuit court of appeals held that "Syrup of Figs" 
 was not a generic name.^"* The later case of California 
 Fig Syrup Co. v. Warden''^ put the plaintiff's right to 
 relief upon the proper ground of unfair competition, 
 aside from any technical trademark right in the words. 
 
 From the doctrine stated by the federal supreme 
 court^^ it follows that the designs, symbols and marks 
 used by a patentee during the life of the patent upon 
 packages containing the patented article may not be im- 
 itated by another upon the expiration of the patent, and 
 such imitation will be enjoined.^'^ 
 
 The rule of unfair competition, that no man has a right 
 to represent his goods as the goods of another, is dis- 
 
 73— California Fig Syrup Co. v. Stearns, 67 Fed. Rep. 1008; s. c, 
 
 Improved Fig Syrup Co., 51 Fed. 73 Fed. Rep. 812-814; California 
 
 Rep. 296-297, citing Burton v. Fig Syrup Co. v. Putnam, 66 Fed. 
 
 Stratton, 12 Fed. Rep. 696; Baking Rep. 750. Since the foregoing was 
 
 Powder Co. v. Fyfe, 45 Fed. Rep. written, the United States Supreme 
 
 799; Nerve Food Co. v. Baumbach, Court has held the mark to be de- 
 
 32 Fed. Rep. 205; Anonyme, etc., ceptive. Clinton E. Worden & Co. 
 
 Societe v. Western Dis. Co., 43 Fed. v. California Fig Syrup Co., 187 U. 
 
 Rep. 417. S. 516. 
 
 74— Improved Fig Sprup Co. v. 75— (1) 86 Fed. Rep. 212-215; 
 
 California Fig Syrup Co., 54 Fed. California Fig Syrup Co. v, Worden 
 
 Rep. 175-178. It is very difficult to (2), 95 Fed. Rep. 132. 
 understand how the court could 76 — Singer Mfg. Co. v. June, 163 
 
 conclude that "Syrup of Figs" was U. S. 169; Singer Mfg. Co. v. Bent, 
 
 not a generic name. It lacks every 163 U. S. 205. 
 
 requisite of a valid trademark, and 77 — Greene v. Woodhouse, 38 Off. 
 
 is undoubtedly either deceptive or Gaz. 1891; Centaur Co. v. Killen- 
 
 merely descriptive of one of the berger, 87 Fed. Rep. 725; Same r. 
 
 ingredients of the medicine (a Robinson, 91 Fed. Rep. 889; Same 
 
 liquid laxative.) It has been so v. Neathery, 91 Fed. Rep. 891; 
 
 held in California Fig Syrup Co. v. Same v. Hughes Bros. Mfg. Co., 91
 
 § 53] WHAT CONSTITUTES A VALID TRADf:MARK. 123 
 
 tinctly applied in several of the more recent English de- 
 cisions to tenns strictly generic and of which technical 
 trademark rights could not be predicated. Thus where 
 the manufacturers of ''Reddaway Camel Hair Belting" 
 sought to enjoin a rival manufacturer from styling his 
 product ''The Bentham Camel Hair Belting," Lord Jus- 
 tice Lindley, in the court of appeal, said: ''The catch- 
 words are 'Camel Hair Belting.' * * * ti^^ use of 
 the catch-words alone may establish the plaintiff's right 
 to relief. The plaintiffs have no right to the exclusive 
 use of these words; but they have a right to restrain any 
 one from so using them as to pass his goods off as the 
 goods of the plaintiffs, "^^ So an injunction was granted. 
 Very similar to this was the case in which the plaintiffs 
 manufactured a soap under the name "The Self- Wash- 
 er." The defendants thereafter applied the term "Self- 
 washing" to their soaps. It was held that the terms ' ' Self- 
 washer" or "Self- washing" were used in a descriptive 
 sense and therefore neither could be appropriated as a 
 valid technical trademark; but because of the paper used 
 by the defendants in wrapping their soap, being an imi- 
 tation parchment paper, and the type used by them, 
 which closely resembled that used by the plaintiffs, the 
 defendants were enjoined. Lord Justice Cotton, in the 
 court of appeal, observing: "There may be no monopoly 
 at all in the individual things separated, but if the whole 
 are so joined together as to attempt to pass off, and to 
 have the effect of passing off, the defendants' soap as the 
 plaintiffs', then, although the plaintiffs have no monop- 
 oly either in 'Self-washing' or 'Self-washer' or in the 
 parchment paper or in the spaced printing, yet if those 
 
 Fed. Rep. 901. In this connection with the prefix "original." Cocks 
 
 it is probable that the name by v. Chandlers, L. R. 11 Eq. 447. 
 which the patented article was 78— Reddaway v. Bentham 
 
 known during the life of the pat- Hemp Spinning Co., 9 R. P. C. 
 
 ent (if otherwise valid as a trade- 503; L. R. (1892) 2 Q. B. 639; 67 
 
 mark) may be continued in use, L. T. 301; Cartmell, 282.
 
 124 HOPKINS ON TRADEMARKS. [§53 
 
 things in wliicli they have no sole right are so combined 
 by the defendants as to pass off the defendants' goods as 
 the plaintiffs', then the defendants have brought them- 
 selves within the old common-law doctrine in respect of 
 which equity will give to the aggrieved party an injunc- 
 tion in order to restrain the defendant from passing off 
 his goods as those of the plaintiff."'^'' 
 
 These cases, with those cited in the foot-note, will suf- 
 ficiently demonstrate the fact that the rule under consid- 
 eration is not only important but well established, and 
 that the user of a strictly generic term will be protected 
 in the business he has established under that term, as 
 against a dishonest use of it by a competitor.^^ 
 
 The doctrine of unfair competition, by which the use 
 of descriptive words has sometimes been restrained, has 
 engrafted upon it this important qualification — that in 
 no case will the use of a merely desciiptive word be re- 
 strained as deceptive, unless in circumstances which show 
 fraud on the part of the user.^^ The English leading 
 cases upon this proposition are the ''Camel Hair Belt- 
 ing" case,^- to which we have already referred, and the 
 "Cellular Clothing" case.^^ In the former case the de- 
 fendant said expressly that by usijig the term "Camel 
 
 79— Lever v. Goodwin, 4 R. P. Co., 58 Fed. Rep. 884; Morgan En- 
 
 C. 492-506; 36 Ch. D. 1; 57 L. T. velope Co. v. Walton, 86 Fed. Rep. 
 
 583; 36 W. R. 177; Cartmell, 209. 605; VanHorn v. Coogan, 52 N. J. 
 
 80— Lever v. Bedingfield, 80 L. Eq. 380; 28 Atl. Rep. 788; An- 
 
 T. N. S. 100; Barlow v. Johnson, 7 heuser-Busch Brewing Ass'n v. 
 
 R. P. C. 395; Cartmell, 73; Cur- Fred Miller Brewing Co., 87 Fed. 
 
 tis V. Pape, 5 R. P. C. 146; Cart- Rep. 864; Cellular Clothing Co. v. 
 
 mell, 105; Jay v. Ladler, 6 R. P. Maxton, L. R. (1899) A. C. 326; 
 
 C. 136; 40 Ch. D. 649; 60 L. T. Goodman v. Bohls, 3 Tex. Civ. App. 
 
 27; 37 W. R. 505; Cartmell, 184; 183; 22 S. W. Rep. 11'. 
 
 Powell V. Birmingham Vinegar 81 — Cellular Clothing Co. v. 
 
 Brewery Co., L. R. (1894) 3 Ch. D. Maxton, L. R. (1899) A. C. 326- 
 
 449-462; Reddaway v. Banham, L. 341. 
 
 R. (1896) A. C. 199; Brown Chem- 82— Reddaway v. Banham, L. R. 
 
 ical Co. V. Meyer, 31 Fed. Rep. (1896) A. C. 199. 
 
 453; Jennings v. Johnson, 37 Fed. 83— Cellular Clothing Co. v. 
 
 Rep. 364; Meyer v. Bull Medicine Maxton, L. R. (1899) A. C. 326.
 
 § 53] WHAT CONSTITUTES A VALID TRADEMARK, 125 
 
 Hair Belting" he would be enabled to seJl his goods as 
 those of the plaintiff. Each case involved the use of a 
 descriptive word. In the belting case, however, the word 
 had acquired an additional meaning. The mere use of 
 the words ''Camel's Hair" had come to ])e understood in 
 the trade as indicating belting of the plaintiff's manu- 
 facture. It was proved in addition to this that the de- 
 fendant's acts were done in consummation of a fraudu- 
 lent design to sell his goods as those of the plaintiff. For 
 these reasons the use of the word Ijy the defendant was 
 restrained.®* The Cellular Clothing case differed from 
 this on the facts. As in the belting case, the words ''Cel- 
 lular Clothijig" were originally purely descriptive, being 
 applied to a cloth of cellular stnicture. It was not shown 
 that the term had so acquired a technical and secondary 
 meaning, arising from its natural meaning, that it could 
 be excluded from the use of eveiy one else,**-^ and it was 
 not shown that the defendant had intended to defraud 
 the plaintiff, or that any one had bought of the defendant 
 in the belief that he was getting plaintiff's goods.®'' The 
 Cellular Clothing case demonstrates very clearly that one 
 who takes upon himself to prove that words which are 
 merely descriptive or expressive of the quality of the 
 goods have acquired a secondaiy meaning and indicate 
 that the goods are of his manufacture has assumed a 
 burden which, while it is not impossible, is, in the lan- 
 guage of Lord Davey, ' ' at the same time extremely diffi- 
 cult to discharge— a much greater burden than that of 
 a man who undertakes to prove the same thing of a word, 
 not significant and not descriptive, but what has been 
 compendiously called a 'fancy' word."®^ 
 
 84— See opinion of Lord Hals- Clothing Co. v. Maxton, L. R. 
 
 bury in Cellular Clothing Co. v. (1899) A. C. 326-337. 
 
 Maxton, L. R. (1899) A. C. 326- 86— Lord Watson in Cellular 
 
 335, and Reddaway v. Banham, L. Clothing Co. v. Maxton, L. R. 
 
 R. (1896) A. C. 199, 204-205. (1899) 326-337'. 
 
 85 — Lord Halsbury in Cellular 87 — Lord Davey in Cellular
 
 126 HOPKINS ON TRADEMARKS. [§ 54 
 
 § 54. The test of "origin or ownership."— One of the 
 primary methods— if indeed it is not the fmidamental 
 test— in determining the validity of a trademark has 
 been broadly annomiced by the supreme court of the 
 United States in these words: "The office of a trade- 
 mai'k is to point out distinctively the origin or ownership 
 of the article to which it is affixed, or, in other words, to 
 give notice who was the producer."^** And it has re- 
 cently been said: "That such mark or symbol (i. e., 
 any mark or symbol claimed as trademark) must be de- 
 signed, as its primary object and pui-pose, to distinguish 
 each of the articles to which it is affixed from like arti- 
 cles produced by others, seems to be the clear consensus 
 of all the cases which are authoritative."^^ 
 
 Substantially this form of expression has been em- 
 ployed by the American courts from their earliest trade- 
 mark decisions. Our profoundly learned chancellor, Wal- 
 worth, stated the rule as well as any court that has fol- 
 lowed him, when he said: "The court proceeds upon 
 the ground that the complainant has a valuable interest 
 in the good-will of his trade or business. And that hav- 
 ing appropriated to himself a particular label, or sign or 
 trademark, indicating to those who wish to give him their 
 patronage that the article is manufactured or sold by 
 him, or by his authority, or that he carries on business 
 at a particular place, he is entitled to protection against 
 a defendant who attempts to pirate upon the good-will 
 of the complainant 's friends or customers, or the patrons 
 of his trade or business, by sailing under his flag without 
 
 Clothing Co. v. Maxton, L. R Co., 91 Fed. Rep. 376-378, citing 
 
 (1899) 326-343. Delaware & Hudson Canal Co. v. 
 
 88— Delaware & Hudson Canal Clark, 13 Wall. 311; Amoskeag 
 
 Co. V. Clark, 13 Wall. 311; 5 Am. Mfg. Co. v. Trainer, 101 U. S. 54; 
 
 L. T. 135; 1 Off. Gaz, 279; Seb. Lawrence Mfg. Co. v. Tennessee 
 
 327. Mfg. Co., 138 U. S. 537; Columbia 
 
 89— Lurton. J., in Deerlng Har- Mill Co. v. Alcorn, 150 U. S. 460. 
 vester Co. v. Whitman-Barnes Mfg.
 
 § 54] WHAT CONSTITUTES A VzVLID TR.VDEMARK, 127 
 
 his authority or consent."""^ In the light of tliis state- 
 ment, the words of the supreme court assume a broader 
 meaning. In 1849, the year following that in which the 
 opinion last quoted from was rendered, it was said in an 
 opinion of the superior court of New York City, that** the 
 owner of a trademark has no right to an exclusive use of 
 any words, letters, figures or symbols wliich have no re- 
 lation to the origin or ownership of the goods. '"^^ And 
 the same court, by the same judge (Duer), repeated the 
 statement in very nearly the same words in 1857, saying 
 that a name could be rightfully used and protected as a 
 trademark only * ' where the name is used merely as indi- 
 cating the true origin or ownership of the article offered 
 for sale, never where it is used to designate the article 
 itself and has become, by adoption and use, its proper 
 appellation. "^2 ^^^j jjj jggg ^j^g supreme court of Cali- 
 fornia stated the rule to be that trademarks will be pro- 
 tected ' ' only so far as such marks serve to designate the 
 true origin or ownership of the goods to which they are 
 attached. '"^3 So that when the doctrine as first stated by 
 the federal supreme court was announced, it had become 
 well settled in our jurisprudence that a trademark must 
 indicate origin or ownership, and the only difficulty pre- 
 sented by the maxim to bench and bar is that of its appli- 
 cation to each new state of facts as it arises. It must be 
 noted, however, that * ' it is, of course, no fatal objection 
 to the validity of a trademark that it does not include 
 the name of the manufacturer or producer. The sign, 
 symbol or mark may be purely fanciful, and convey no 
 information as to the name of the producer. But the 
 
 90— Partridge v. Menck, 2 Sand. Pr. 144; 13 How. Pr. 385; Cox. 
 
 Ch. 622; 2 Barb. Ch. 101; 1 How. 180; Seb. 144. 
 App. Cas. 558; Cox. 72; Seb. 91. 93— Falkinburg v. Lucy, 35 Cal. 
 
 91 — Amoskeag Mfg. Co. v. Spear. 52; and Eggers v. Hink. 63 Cal. 
 
 2 Sand. S. C. 599; Cox, 87; Seb. 445. See also Osgood v. Allen 
 
 100. (Maine), 1 Holmes, 185; 6 Am. L. 
 
 92— Fetrldge v. Wells, 4 Abb. T. 20; 3 Off. Gaz. 124; Seb. 410.
 
 128 HOPKINS ON TRADEMARKS. [§ 55 
 
 essential thing is that it shall be designed and used to 
 indicate the origin of the article and that all articles hav- 
 ing the same mark come from a common source.'"'* 
 
 It is self-evident that while a mark may be indicative 
 of origin and ownership, it may, because generic or de- 
 ceptive, fall short of being a valid trademark. But every 
 valid trademark must be indicative of origin or owner- 
 ship in the sense in which those words are used in the de- 
 cisions. 
 
 § 55. Geographical names.— The rule that geograph- 
 ical names cannot be exclusively appropriated for the 
 purposes of trademark has been recognized from the 
 infancy of trademark law. It was said by the United 
 States supreme court that "No one can apply the name 
 of a district of countrj^ to a well-known article of com- 
 merce and obtain thereby such an exclusive right to the 
 application as to prevent others inhabiting the district, 
 or dealing in similar articles coming from the district, 
 from truthfullj^ using the same designation. It is only 
 when the adoption or imitation of what is claimed to be 
 a trademark amounts to a false representation, express 
 or implied, designed or incidental, that there is any title 
 to relief against it."^ 
 
 94— Lurton, J., in Deering Har- Am. L. T. 20; 3 Off. Gaz. 124; Seb. 
 
 vester Co. v. Whitman & Barnes 410; Glendon Iron Co. v. Uhler, 75 
 
 Mfg. Co., 91 Fed. Rep. 376-380. To Pa. St. 467; 15 Am. Rep. 599; 13 
 
 the same effect see Dennison Mfg. Am. L. Reg. N. S. 543; 6 Off. Gaz. 
 
 Co. V. Thomas Mfg. Co., 94 Fed. 154; Seb. 439; Bulloch, Lade & Co. 
 
 Rep. 651-656. v. Gray, 19 Journ. of Jurisp. 218; 
 
 1— Delaware & Hudson Canal Co. Seb. 452; Wolfe v. Goulard, 18 
 
 V. Clark, 13 Wall. 311; 5 Am. L. T. How Pr. 64; Clinton Met. Paint 
 
 135; 1 Off. Gaz. 279; Seb. 327; Co. v. N. Y. Met. Paint Co., 50 N. 
 
 and to the same effect, see Y. Supp. 437; Gabriel v. Sicilian 
 
 Columbia Mill Co. v. Alcorn, 150 Asphalt Co., 52 N. Y. Supp. 722; 
 
 U. S. 460; Candee, Swan & Co. v. Morgan Envelope Co, v. Walton, 86 
 
 Deere & Co., 54 111. 439; 5 Am. Fed. Rep. 605; Wm. Rogers Mfg. 
 
 Rep. 125; 4 Am. L. T. 266; 10 Am. Co. v. Rogers & S. Mfg. Co., 11 
 
 L. Reg. N. S. 694; Seb. 339; Re Fed. Rep. 495; Burgess v. Burgess, 
 
 Tolle, 2 Off. Gaz. 415; Seb. 405; 17 Eng. L. & Eq. 257; Brooklyn 
 
 Osgood V. Allen, 1 Holmes, 185; 6 White Lead Co. v. Masury, 25 Barb.
 
 §56] WHAT co:<.STrruTES A v.vlid tr.vdemark. 129 
 
 § 56. As employed by sole owner of a natural product 
 and its place of production.— There can be uo doubt that, 
 where the owuer of a geographical site productive of a 
 salable article is the sole owner, he may have an ex- 
 clusive right in the name of his site. This i*ule has been 
 followed in several cases where the proprietor of the 
 commodity was the owner of the place of its produc- 
 tion, and the name of that place was a prominent and 
 controlling part of the trademark. Lord Cranworth so 
 held in the case of a wine-grower who used the name of 
 his vineyard as a trademark for his wines.- And the use 
 of the words "Congress Water" as designating the prod- 
 uct of ''Congress Spring" was sustained on the suit of 
 the sole owner of the springs.^ 
 
 § 57. When geogTaphical names will be protected as 
 trademarks.— In many cases the use of geographical 
 words has been protected on the ground of unfair compe- 
 tition. It was so held where the complainants applied 
 the word ''Durham," the name of a town in Xorth Caro- 
 lina, to tobacco manufactured by them at that locality. 
 
 416; Lea v. Wolff, 13 Abb. Pr. N. though the -word "Raleigh" was 
 
 S. 389; 15 Id. 1; 46 How. Pr. 157; that of an historical personage, 
 
 1 Am. L. T. N. S. 400; Seb. 407; registration was refused because 
 
 Carmichel v. Latimer, 11 R. L 395; it was also a geographical name. 
 
 Eggers V. Hink, 63 Cal. 445; Dun- Ex parte Oliver, 18 Off. Gaz. 923; 
 
 bar V. Glenn, 42 Wis. 118; Anheu- Price & Steuart, 59. 
 
 ser-Busch Brewing Association v. 2 — Seixo v. Provezende, L. R. 1 
 
 Pisa, 23 Blatchf. 245; Lea v. Deak- Ch. 192; 12 Jur. N. S. 215; 14 L. T. 
 
 in, Fed. Case No. 8154, 11 N. S. 314; 14 W. R. 357; Seb. 256. 
 
 Biss. 23; Pratt's Appeal, 117 3 — Congress & Empire Spring 
 
 Pa. St. 401; Smith v. Walker, 37 Co. v. High Rock Congress Spring 
 
 Mich. 456; Smith v. Imus, 32 Alb. Co., 4 Am. L. T. 168; 10 Abb. Pr. 
 
 L. J. 455; Burton v. Stratton, 12 N. S. 348; 6 Am. Rep. 82; 57 Barb. 
 
 Fed. Rep. 696; Evans v. Van Laer, 526; 45 N. Y. 291; Cox, 599; to the 
 
 32 Fed. Rep. 153; Gabriel v. Sicil- same effect, see La Republique 
 
 lian Asphalt Co. (2), 56 N. Y. Francaise v. Schultz, 57 Fed. Rep. 
 
 Supp. 30; Gebbie v. Stitt, 31 N. Y. 37; City of Carlsbad v. Kutnow, 68 
 
 Supp. 102; Weyman v. Soderberg, Fed. Rep. 794; s. c, 71 Fed. Rep. 
 
 108 Fed. Rep. 63; Telephone Mfg. 167; City of Carlsbad v. Schultz, 78 
 
 Co. V. Sumter Mfg. Co., 63 S. C. Fed. Rep. 469; Northcutt v. Turney, 
 
 313, 41 S. E. Rep. 322. Even 101 Ky. 314; 41 S. W. Rep. 21. 
 9
 
 130 HOPKINS ON TR.VDEM^VRKS. [§ 57 
 
 The defendant, whose business was conducted at Eich- 
 mond, was enjoined from applying the word to tobacco 
 produced by him.^ And the usual rule by which geo- 
 graphical names have been protected against infringers 
 by injunction was thus tersely stated by the patent office: 
 * * Undoubtedly courts of equity have granted injunctions 
 to restrain the fraudulent use of words of this character; 
 but the grounds of such decisions have been invariably, 
 I think, the fraud of the defendants, and not any exclu- 
 sive right of the plaintiffs. ' '^ Probably a more accurate 
 statement, however, is that of the United States circuit 
 court of appeals in the very well considered opinion in 
 Pillshury-Washhurn Co. v. Eagle :^ ''The distinction, 
 both in the English and American cases, is between those 
 where a geographical name has been adopted and 
 <;laimed as a trademark proper, and those where it has 
 been adopted first as merely indicating the place of 
 manufacture, and afterwards, in the course of time, has 
 become a well-known sign and synonym for superior ex- 
 cellence. In the latter class of cases, persons residing at 
 other places will not be permitted to use the geograph- 
 ical name so adopted as a brand or label for similar 
 goods for the mere purpose, by fraud and false represen- 
 
 4— Blackwell & Co. v. Dibrell & that the plaintiff, merely on the 
 Co., 3 Hughes, 151, Fed. Case No. strength of having been first in 
 1,475; Price & Steuart, 10. the field may put later comers to 
 ' ^—Ex parte Farnum & Co.. 18 the trouble of taking such reason- 
 Off. Gaz. 412; Price & Steuart, 68. able precautions as are commer- 
 6—86 Fed. Rep. 608, 30 C. C. A. cially practicable to prevent their 
 386; overruling s. c, 82 Fed. Rep. lawful names" and advertisements 
 816. The false use of a geographi- from deceitfully diverting the 
 cal name will not be tolerated plaintiff's custom." This was said 
 when it is so used as to promote of the word "Waltham" as applied 
 unfair competition and to induce to watches by Holmes, J., in Amer- 
 the sale of spurious goods. Collins- ican Waltham Watch Co. v. United 
 platt V. Finlayson, 88 Fed. Rep. 693. States Watch Co., 173 Mass. 85; 
 "Whatever might have been the 53 N. E. Rep. 141; followed in 
 doubts some years ago, we think American Waltham Watch Co. v. 
 that now it is pretty well settled Sandman, 96 Fed Rep. 330.
 
 § 58 J WHAT CONSTITUTES A VALID TRADEMARK. 131 
 
 tation, of appropriating the good-will and business 
 which long continued industry and skill ard a generous 
 use of capital has rightfully built up. It will be of no 
 avail in such cases, where the facts are admitted or 
 proven, to allege a want of power in a court of equity to 
 find a remedy." In other words, geogra})hical names 
 can never be appropriated as trademark; but with the de- 
 velopment of the law of unfair competition has come the 
 incidental protection of geographical names applied to 
 merchandise, not as technical trademark, but as an indi- 
 cation to the public of the true place of its manufacture. 
 And no manufacturer can defend, any more than he 
 could maintain, a suit in equity, where he is falsely repre- 
 senting the place where his manufacture is conducted. 
 
 § 58. Geographical names— The underlying principle. 
 —Judge Lacombe has recently given this concise ex- 
 pression of the rule applied by courts of equity to geo- 
 graphical names falsely used in unfair competition: 
 *' Whatever may be the decisions in the state courts, it 
 is abundantly settled by authority in the federal courts 
 that they will not tolerate a false use of a geographical 
 name when it is so used as to promote unfair competition 
 and to induce the sale of spurious goods."" In a later 
 case, the rule has been illustrated and applied as fol- 
 lows: ''Tlie respondents concede that they put up in 
 cans pears grown in Maryland and adjoining states, 
 and keep the cans without labels until they are sold, 
 and then, at the desire of their customers, they label 
 them as California pears, canned by some pretended 
 packer at some place in California. This is a clear case 
 of fraudulent competition by the use of a geographical 
 name which the complainants are entitled to use, but 
 the respondents are not. It is true that no one single 
 packer can acquire an exclusive right to use as a pri- 
 vate trademark, 'California Pears,' or 'California,' as 
 
 7 — Collinsplatt v. Finlayson, 88 Fed. Rep. 693.
 
 132 HOPKINS ON TR.U)EMARKS. [§ 58 
 
 a label on canned pears; but all tlie persons who put up 
 California grown pears in California have a right to 
 use it; and it has acquired, the bill alleges, an especial 
 trade significance of value. With regard to articles of 
 food, and particularly with regard to fruits, the place 
 where they are grown creates often an essential distinc- 
 tion as to quality and flavor; and this distinction, when 
 it has become known in trade by the geographical name 
 of the iDlace where grown, the growers of the fruit are 
 entitled to the benefit of, and the consumers should not 
 be deceived. The present is such a case, and presents, 
 I think, indisputable ground for application of the equi- 
 table jurisdiction which prevents unfair and fraudulent 
 competition by simulated trade designations."^ 
 
 The suprem^e court of the United States has clearly ex- 
 cluded geographical names from use as technical trade- 
 marks. 
 
 It was said by Mr. Justice Jackson: "The general 
 principles of law applicable to trademarks, and the con- 
 ditions under which a party may establish an exclusive 
 right to the use of a name or symbol, are well settled by 
 the decisions of this court, . . . which . . . estab- 
 lish the following general propositions: . . . (3) 
 That the exclusive right to the use of the mark or device 
 claimed as a trademark is founded on prioritj^ of appro- 
 priation; that is to say, the claimant of the trademark 
 must have been the first to use or employ the same on like 
 articles of production. (4) Such trademarks cannot 
 
 8 — Morrow, J. in California Fruit in the Stone Ales Case, in the 
 Canners' Ass'n v. Myer, 104 Fed. House of Lords, which suggest 
 Rep. 82, citing Pillsbury- Washburn that a practical monopoly might 
 Co. V. Eagle, 30 C. C. A. 386, 86 Fed. be acquired of the use of the name 
 Rep. 608-618. The leading English of a place where goods are manu- 
 case is the Stone Ales Case, Thomp- factured; but they must, it is sub- 
 son V. Montgomery, (1891) App. mitted, be read by reference to the 
 Cas. 217; 8 R. P. C. 365. Of this de- facts of the case, which was one 
 cision a very learned English law of deliberate fraud." Kerly on 
 writer has said: "There are dicta Trademarks (London, 1894), p. 44.
 
 § 58] WHAT CONSTITUTES A VALID TRADEMARK. 133 
 
 consist of words in common use as designating locality, 
 section, or region of countr}'."'^ 
 
 The reasons for this rule have been more fully ex- 
 pressed by Mr. Justice Strong, in these words: '*No one 
 can claim protection for the exclusive use of a trademark 
 or tradename, which would practically give liim a mo- 
 nopoly in the sale of any goods other than those produced 
 or made by himself. If he could, the public would be in- 
 jured rather than protected; for competition would be 
 destroyed. Nor can a generic name, or a name merely 
 descriptive of an article of trade, of its qualities, in- 
 gredients, or characteristics, be employed as a trade- 
 mark, and the exclusive use of it be entitled to a legal 
 protection. . . . He has no right to apiwopriate a 
 sign, or a symbol, which, from the nature of the fact it is 
 used to signify, others may employ with equal truth, and 
 therefore have an equal right to employ for the same pur- 
 pose. And it is obvious that the same reasons which 
 forbid the exclusive appropriation of generic names, or 
 of those merely descriptive of the article manufactured, 
 and which can be employed with truth by other manu- 
 facturers, apply with equal force to the appropriation of 
 geographical names designating districts of country. 
 Tbeir nature is such that they cannot point to the origin 
 (l3ersonal origin) of the articles of trade to which they 
 may be applied. ... It must be considered as sound 
 doctrine that no one can apply the name of a district of 
 country to a well-known article of commerce, and obtain 
 thereby such an exclusive right to the application as to 
 prevent others inhabiting the district, or dealing in 
 similar articles coming from the district, from truthfully 
 using the same designation. "^'^ 
 
 Is it not a reasonable conclusion from these and the 
 kindred cases which we have heretofore examined, that 
 there can be no technical trademark in a geographical 
 
 9— Columbia Mill Co. v. Alcorn, 10 — Delaware & Hudson Canal 
 150 U. S. 460. Co. V. Clark, 13 Wall. 323.
 
 134 HOPKINS ON TRADEMARKS. [§ 58 
 
 name? To the author's mind that conclusion is inevi- 
 table, and there is but one class of geographical names 
 which are to be excepted from the operation of the rule, 
 namely, those applied to a natural product and its sole 
 place of production. The name so used may very prop- 
 erly be a trademark, indicative of the origin and own- 
 ership of the natural product, and at the same time indi- 
 cating the locality of its production. Here the name 
 imdoubtedly is a trademark if there is but one owner of 
 the entire locality, and the courts have uniformly so 
 held.^^ The same scientific objection to geographical 
 names as trademark obtains as in the case of proper 
 names. They are generic, in that every manufacturer 
 who sees fit to locatefin that city or vicinagejand inaugu- 
 rate a competing business has an equal right with all 
 those who have preceded him in the locality, and all 
 those who may thereafter so locate, in using the name of 
 that locality in advertising his wares and in preparing 
 them for commerce.^ ^ 
 
 Being generic they cannot be used as trademarks, with 
 the one exception we have noted, that of the title to the 
 entire locality being vested in one owner. In that case 
 no one else can locate there and institute competition; 
 the name of the locality is not generic, and that fact ex- 
 empts it from the operation of the rule. 
 
 In the course of a well-considered opinion Judge Sho- 
 walter has held the name "Elgin" as applied to watch- 
 movements to be a strictly technical trademark, even 
 though the name is that of the town where the factory is 
 situated, because, in the words of the court: "This mark 
 has this significance (designating complainants' manu- 
 
 11— City of Carlsbad v. Schultz, 12— Blackwell v. Dibrell, Fed. 
 78 Fed. Rep. 469; City of Carls- Case No. 1475, 3 Hughes, 160; New- 
 bad V. Kutnow, 71 Fed. Rep. 167, man v. Alvord, 49 Barb. 588; 35 
 affirming 67 Fed. Rep. 794; Hill \. How. Pr. 108; Cox, 404; Delaware 
 Lockwood, 32 Fed. Rep. 389; & Hudson Canal Co. v. Clark, 13 
 Northcutt V. Turney, 101 Ky. 314, Wall. 311; New York Cement Co. v. 
 41 S. W. Rep. 21. Coplay Cement Co., 45 Fed. Rep. 212,
 
 §59] WHAT CONSTITUTES A VALID TRADEMARK. 
 
 135 
 
 facture) where the town of Elgin is entirely unknown." 
 But this is purely a dictum, and presented in a case of 
 fraudulent competition, where the defendants had re- 
 moved their factory from Chicago to Elgin ^'with the 
 purpose ... of giving some color of right to a de- 
 signed trespass on complainant's good-will. "^"^ 
 
 § 59. A false geographical name vitiates trademark. 
 —To all that has been said in the last preceding section 
 must be noted one broad qualification. He who seeks to 
 uphold a trademark in a court of equity must do so with 
 clean hands, so that a trademark otherwise good will be 
 vitiated and the right to it destro3'ed by the use of a false 
 geographical name in connection with it.^^ And this is 
 true, as expressed by Judge Showalter, even though '*No 
 actual or substantial wrong may have resulted to any one 
 from this misrepresentation."^^ 
 
 This rule, however, has its practical limitations. Like 
 other forms of misrepresentation, it may be that the use 
 of a geographical name, by one not residing or manufac- 
 turing within the locality named, amounts to a mere col- 
 lateral misrepresentation. Thus, the fact that one of the 
 mills of manufacturers who are joined in an action to 
 restrain the fraudulent use of the name of the city in 
 which they are situated, is situated outside the limits of 
 the city, is not a bar to equitable relief, when the mill 
 is practically a portion of a plant the remainder of which 
 is within the city.^^ 
 
 There is a class of words usually treated as "geograph- 
 
 13— Elgin Nat. Watch Co. v. Ill- Wood, 108 U. S. 218; and cases 
 
 Inois Watch Co., (1) 89 Fed. Rep. cited ante. § 34. 
 
 487. Reversed on jurisdictional 15 — Royal Baking Powder Co. v. 
 
 grounds, Illinois Watch Co. v. El- Raymond, 70 Fed. Rep. 376-382. To 
 
 gin Nat. Watch Co., 94 Fed. Rep. same effect, see American Cereal 
 
 667; 35 C. C. A. 237; the latter de- Co. v. Eli Pettijohn Cereal Co. (1). 
 
 cision affirmed in Elgin Nat. Watch 72 Fed. Rep. 903, 908. 
 
 Co. V. Illinois Watch Co. (2), 179 16— Pillsbury- Washburn Flour 
 
 U. S. 665. Mills Co. v. Eagle. 86 Fed. Rep. 
 
 14— Manhattan Med. Co. v. 608, 30 C. C. A. 386. 58 U. S. App. 
 
 490, 41 L. R. A. 162.
 
 136 HOPKINS ON TRADEMARKS. [§ 60 
 
 ical names fancifully used" that have been treated as 
 trademarks. So of "Aldemey" oleomargarine,^^ 
 "Vienna" bread/ ^ ''German" sweet chocolate (''Ger- 
 man" being the name of an individual ).^'^ But in their 
 last analysis, the "fanciful use" ascribed to those words 
 by the Courts are simply a convenient excuse for avoiding 
 the harsh doctrine of Manhattan Medicine Co. v. Wood. 
 The misrepresentation may be implied from the lan- 
 guage employed though not in express words.-*^ 
 
 § 60. The right to complain of unfair use of geograph- 
 ical name.— The right to use the name of a locality in 
 the manufacture and sale of goods is a general right 
 of all who manufacture in that locality.-^ It therefore 
 follows that where any one not living in that locality 
 uses its name to indicate his merchandise, he is resorting 
 to a trick to divert business from the dealers in the same 
 kind of merchandise who in fact live in the locality and 
 honestly use its name as a mark upon their goods.^^ 
 
 The action to restrain such an unfair competition may 
 be brought either by one^^ or alP^ of the merchants who 
 are entitled to the use of the name of the locality and are 
 using it upon the same class of merchandise. 
 
 § 61. When relief will be granted against fraudu- 
 lent use of geographical names.— It would be a vain 
 
 17 — Lauferty v. Wheeler, 83 Fruit Canners' Ass'n v. Myer, 104 
 
 How. Pr. 488. Fed. Rep. 82. 
 
 18 — Fleischmann v. Schuck- 23 — Newman v. Alvord, 49 Barb, 
 
 mann, 62 How. Pr. 92. 588; 35 How. Pr. 108; Cox. 404; 
 
 19_Walter Baker & Co. V. Baker, 51 N. Y. 189; 10 Am. Rep. 588; 
 
 77 Fed. Rep. 181. Klotz v. Hecht, 73 Fed. Rep. 822; 
 
 20 — Prince Mfg. Co. v. Prince's Scheuer v. Muller, 20 C. C. A. 161, 
 
 Metallic Paint Co. 135 N. Y. 24, 31 74 Fed. Rep. 225; Gage-Downs Co. 
 
 N. B. Rep. 990, 17 L. R. A. 129. v. Featherbone Corset Co., 83 Fed. 
 
 21 — Pillsbury-Washburn Co. v. Rep. 213; Southern White Lead 
 
 Eagle, 86 Fed. Rep. 608, 30 C. C. A. Co. v. Coit, 39 Fed. Rep. 492; A. F. 
 
 3g6. Pike Mfg. Co. v. Cleveland Stone 
 
 22— Ibid. "A palatable trick," it Co., 35 Fed. Rep. 896. 
 
 v/as termed by Gresham, J., in 24 — Pillsbury-Washburn Co. v. 
 
 Southern White Lead Co. v. Gary, Eagle, 86 Fed. Rep. 608. 
 25 Fed. Rep. 125-127. California
 
 § 62] WHAT CONSTITUTES A VALID TRADEMARK. 137 
 
 task to eimiiierate the various forms of misuse of geo- 
 graphical names which hav^e beeu enjoined. An exam- 
 ination of the cases will show the versatility of the fraud- 
 ulent dealer in devising schemes to deceive the public 
 and deprive the legitimate dealer of his trade. The 
 13riuting of an xVmerican label in the French language 
 has been treated as evidence of unfairness in competition 
 against French exporters to the United States;-'"' and 
 the statement upon a package that its contents were 
 **Chicorien Kaffee aus der fabrik von E. B. Muller & Co., 
 in Roulers (Belgien)," was held to be misleading and 
 unfair where the facts showed that the only part of the 
 manufacture done in Belgium was to "harvest" the chic- 
 ory root, the other processes being done in the United 
 States.-*^ In brief, it is particularly true of the subject 
 under discussion that "a court of equity keeps pace with 
 the rapid strides of the sharp competitors for the prize 
 of public favor and insists that it shall be won only by 
 fair trade. "-■^ Some of the cases are cited in the foot- 
 note.-^ 
 
 J; 62. Proper names as trademark.— It is a self-evi- 
 dent proposition that every one has the right to use his 
 own name for purposes of trade. It was held by Vice- 
 Chancellor AVood that a man's own name might be his 
 trademark even when united with other words, them- 
 selves generic and hence incapable of exclusive appro- 
 priation. In sustaining the words "Ainsworth's 
 
 25— Klotz V. Hecht, 73 Fed. Rep. Fed. Rep. 492; City of Carlsbad v. 
 
 822. Thackeray, 57 Fed. Rep. 18; Cahn 
 
 26— Scheuer v. Muller, 74 Fed. v. Gottschalk, 2 N. Y. Supp. 13; 
 
 Rep. 225-228: 20 C. C. A. 161. Hiram Walker & Sons v. Mikolas, 
 
 27 — R. Heinisch's Sons Co. v. 79 Fed. Rep. 955; Von Mumm v. 
 
 Boker, 86 Fed. Rep. 765-768. Frash, 56 Fed. Rep. 830; Lea v. 
 
 28 — Anheuser-Busch Brewing Wolff, 15 Abb. Pr. N. S. 1; 46 How. 
 Ass'n V. Piza, 24 Fed. Rep. 149; Pr. 147; Seb. 407; Anheuser-Busch 
 A. F. Pike Mfg. Co. v. Cleveland Brewing Co. v. Fred Miller Brew- 
 Stone Co.. 35 Fed. Rep. 896; South- ing Co., 87 Fed. Rep. 864; Manito- 
 ern White Lead Co. v. Cary, 25 woe Pea-Packing Co. v. William 
 Fed. Rep. 125; Same v. Coit, 39 Numsen & Sons. 93 Fed. Rep. 196.
 
 138 HOPKINS ON TRADEMARKS. [§62 
 
 Thread" as a trademark he said: "Is not a man's name 
 as strong an instance of trademark as can be suggested? 
 —subject only to this inconvenience, that if a Mr. Jones 
 or a Mr. Brown relies on his name, he may find it a very 
 inadequate security, because there may be several other 
 manufacturers of the same name. ' '-^ But any name may 
 be used by any one who cares to designate himself by it, 
 and in this sense a proper name can never be an essen- 
 tial part of a trademark,''^ because, as we have seen, a 
 valid trademark must be exclusive, as against all the 
 world. The decisions as to this are conflicting, ver}' 
 confusing, and in many instances the result of careless 
 use of language. Thus Chancellor Westbury said: "It is 
 true that a name or the style of a firm may by long 
 usage become a mere ti*ademark. ' '^^ In another case the 
 same learned chancellor said: "A name, though origi- 
 nally the name of the first maker, may in time become a 
 mere trademark or sign of quality, and cease to denote 
 or to be current as indicating that any particular person 
 is the maker. In many cases a name once affixed to a 
 manufactured article continues to be used for genera- 
 tions after the death of the individual who first affixed 
 it."^^ In the first named case, any one named "Ains- 
 worth" might lawfully use the word as a trademark. 
 He would be restrained only where he resorted to unfair 
 competition by so preparing or advertising his thread as 
 to deceive customers into the belief that they were buy- 
 ing the thread made by another Ainsworth. As to the 
 
 29— Ainsworth v. Walmsley, L. trade." Davis, J., in Drake Medi- 
 
 R. 1 Eq. 518; 35 L. J. Ch. 352; 12 cine Co. v. Glessner, 68 Ohio St. 
 
 Jur N. S. 205; 14 L. T. N. S. 220; 337, 67 N. E. Rep. 722. 
 
 14 W. R. 363; Seb. 257. • 31— Leather Cloth Co. v. Ameri- 
 
 30— "In a technical sense, there can Leather Cloth Co., 4 DeG. J. & 
 
 can be no trademark in the name S. 137-142; Seb. 223. 
 
 of a person, because all such 32— Hall v. Barrows, 4 DeG. J. & 
 
 names are generic, and because, S. 150; 33 L. J. Ch. 204; 10 Jur. 
 
 speaking in a general sense, every N. S. 55; 9 L. T. N. S. 561; 12 W. 
 
 person has the right to use his R. 322; 3 N. R. 259; Seb. 215. 
 own name for the purposes of
 
 § 63] WHAT CONSTITUTES A VALID TRADEMARK. 139 
 
 dicta of Lord Westbury^ they are meaningless, for the 
 same reason. If a nuui's name is not a valid trademark 
 for his goods in his life-time, because any one of the same 
 name may use it for the same purpose, how can it possi- 
 bly become a trademark in the use of his successoi's after 
 his death? 
 
 § 63. Names of celebrities.— Far different is the rule 
 as to names which are those of celebrities, their use as 
 trademarks being universally recognized.-'^ Yet here the 
 scientific objection remains that any one bearing the 
 name of the ill-fated Corsican would have the undoubted 
 right to manufacture ''Napoleon" cigarettes, notwith- 
 standing the prior appropriation of that word as a 
 trademark by another manufacturer. If the words ' ' Em- 
 peror Napoleon" were so approiniated, they would un- 
 doubtedly be good as against the world.^"* 
 
 § 64. In general, of one's own name.— Although the 
 custom is universal for male persons to bear the name 
 of their parents, there is nothing in the common law pro- 
 
 33—" 'Roger Williams,' though purpose, a broad distinction which 
 
 the name of a famous person, long was early perceived and which 
 
 since dead, is, as applied to cotton caused some difficulty in the uni- 
 
 cloth, a fancy name, as would be versal acceptance of a name as an 
 
 so applied the names of Washing- efficacious trademark. The differ- 
 
 ton, Greene, Perry, or of any other ence is, that a name is in its very 
 
 heroes, living or dead." Ames, C. nature generic, and is properly ap- 
 
 J., in Barrows v. Knight, 6 R. I. plied to designate, not one individ- 
 
 434; Cox, 238; Seb. 184. It has ual in the world, but, it may be, 
 
 been so held of the word "Bis- many thousands, to all of whom it 
 
 marck" (used as a trademark for is equally appropriate. The addi- 
 
 paper collars) during the life-time tion of the christian to the surname 
 
 of Bismarck. Messerole v. Tyn- does, indeed, diminish the number 
 
 berg, 36 How. Pr. 14; 4 Abb. Pr. of persons to whom the appella- 
 
 N- S. 410. tion belongs; but the christian 
 
 34— The learned English barris- name is commonly abbreviated to 
 
 ter Sebastian, in his work on an initial letter, and, in any case. 
 
 Trademarks, thus states the rule: the surname is the important part 
 
 'There is between a name of an in- of the name, beyond which many 
 
 dividual or firm used as a trade- persons do not care to investigate." 
 
 mark, and a fancy name or arbi- Sebastian, Trademarks (4th ed.), 
 
 trary symbol used for the same 24.
 
 140 
 
 HOPKINS ON TRADEMARKS. 
 
 [§64 
 
 liibiting a man from taking any other name he may 
 choose.^^ This doctrine has long been settled beyond 
 peradventure. It is of course equally certain that one 
 must not use his name so as to work a fraud upon others 
 of the same name.^*^ Subject to this restriction a man will 
 never be restrained from the full enjoyment of his name, 
 whether that name be that of his parents or adopted by 
 himself. As stated by Turner, L. J,: "Where the defend- 
 ant sells goods under his own name, and it happens that 
 the plaintiff has the same name, it does not follow that 
 
 35— England v. New York Pub. S8 111. 53; 38 Am. Rep. 98, where 
 
 Co., 8 Daly, 375; Price & Steuarr, injunction to restrain the use of 
 
 14; Re Snook, 2 Hilt. 566. Linton an assumed name was denied un- 
 
 V. First National Bank of Kittan- der peculiar circumstances, 
 ning, 10 Fed. Rep. 894-897. 36— The doctrine is well settled 
 
 The right to assume a name. — that "every one has the absolute 
 
 Lord Chelmsford observes: "In right to use his own name honest- 
 
 this country we do not recognize ly in his own business, even 
 
 the absolute right of a person to though he may thereby incidental- 
 
 a particular name to the extent of ly interfere with and injure the 
 
 entitling him to prevent the as- business of another having the 
 
 sumption of that name by a same name, in such case the 
 
 stranger. The right to the exclu- inconvenience or loss to which 
 
 sive use of a name in connection those having a common right are 
 
 with a trade or business is fami- subjected is damnum absque inju- 
 
 liar to our law; and any person ria. But although he may thus 
 
 using that name, after a relative use his name, he cannot resort to 
 
 right of this description has been any artifice or do any act calcu- 
 
 acquired by another, is considered lated to mislead the public as to 
 
 to have been guilty of a fraud, or the identity of the business firm 
 
 at least of an invasion of another's or establishment, or of the article 
 
 right, and renders himself liable produced by them, and thus pro- 
 
 to an action, or he may be re- duce injury to the other beyond 
 
 strained from the use of the name that which results from the simi- 
 
 by an injunction. But the mere larity of name." Devens, J., in 
 
 assumption of a name which is Russia Cement Co. v. Le Page, 147 
 
 the patronymic of a family by a Mass. 206-208; 17 N. E. Rep. 304; 
 
 stranger who had never before quoted and followed in Singer 
 
 been called by that name, what- Mfg. Co. v. June Mfg. Co., 163 U. 
 
 ever cause of annoyance it may be S. 169-187. This is the rule an- 
 
 to the family, is a grievance for nounced in Burgess v. Burgess, 3 
 
 which our law affords no redress." DeG. M. & G. 896; 22 L. J. Ch. 
 
 Du Boulay v. Du Boulay, L. R. 2 675; 17 Jur. 292; 21 L. T. 53. And 
 
 P. C. 430-441; and see Olin v. Bate, see Linoleum Mfg. Co. v. Nairn, 7
 
 § 65] WHAT CONSTITUTES A V.VLID TKADEMARK. 141 
 
 the defendant is selling his goods as the goods of the 
 plaintiff. It is a question of evidence in each case 
 whether there is false representation or not."^^ Hence 
 we see that the subject of this section is more propei-ly 
 treated under the head of unfair competition, and it is 
 therefore considered in that connection in the next sec- 
 tion, 
 
 § 65. The use of proper names in trade.— We have in 
 the preceding sections given some consideration to the 
 subject of proper names, considered with reference to 
 their exclusive appropriation for mercantile purposes. 
 The conclusion reached was that in a scientijfic sense 
 there can be no trademark in a proper name, because all 
 proper names are generic. The author believes that this 
 rule is well sustained by the reasons heretofore given at 
 length. In their anxiety to effect perfect justice the 
 courts have frequently said that such words were valid 
 trademarks,-'*'^ but the reasoning of the opinions indicated 
 that the use of the language adopted was careless and 
 erroneous. The proper method of reading the class of 
 
 Ch. Div. 834-837; 47 L. J. Ch. 430; 562; 45 Off. Gaz. 347; Singer Mfg. 
 
 38 L. T. N. S. 448; 26 W. R. 463; Co. v. Larsen, Fed. Case No. 12902, 
 
 Dig. 536; Croft v. Day, 7 Beavan, 8 Bissell, 151-153; Price & Steuart, 
 
 84; Dig. 76; Holloway v. Holloway, 72; Singer Mfg. Co. v. Bent, 1G3 U. 
 
 13 Beavan, 209; Dig. 106; Wother- S. 205. 
 
 spoon V. Currie, L. R. 5 H. L. 508; 37 — Burgess v. Burgess, 3 DeG. 
 
 Montgomery v. Thompson, (1891) M. & G. 896; 22 L. J. Ch. 675; 17 
 
 App. Cas. 217; Rogers v. Rogers, 53 Jur. 292; 21 L. T. O. S. 53; Cox. 
 
 Conn. 121; 55 Am. Rep. 78; 33 Alb. 117. A man cannot sell his own 
 
 L. J. 70; Oilman v. Hunnewell, name to another for the purpose 
 
 122 Mass. 139; Cox 541; Menee- of carrying on a rival trade against 
 
 ly V. Meneely, 62 N. Y. 427; another bearing the name so at- 
 
 1 Hun, 673; 2 Thomp. & C. tempted to be used. Melachrino v. 
 
 540; 62 N. Y. (17 Sickels), 427; Melachrino Cigarette Co., 4 R. P. 
 
 20 Am. Rep. 489; 2 Am. L. T. N. S. C. 215; Cartmell, 223. 
 482; Dig. 472; Pillsbury v. Pills- 38— Standinger v. Standinger, 19 
 
 bury, 24 U. S. App. 395-404; Law- Leg. Int. 85; Fulton v. Sellers, 4 
 
 rence Mfg. Co. v. Tennessee Mfg. Brews. 42; Candee v. Deere. 54 111. 
 
 Co., 138 U. S. 537; 31 Fed. Rep. 439; Howe v. Howe Sewing Ma- 
 
 776; Brown Chem. Co. v. Meyer, 139 chine Co., 50 Barb. 236; Gillis v. 
 
 U. S. 540; 31 Fed. Rep. 453; Coats Hall, li Brews. 509. 
 V. Merrick Throad Co.. 149 U. S.
 
 142 HOPKINS ON TRADEMARKS. [§ 66 
 
 cases just referred to is to bear in mind that, while the 
 courts recognized the law of unfair competition, they did 
 not know or recognize it by that name. The tendency 
 was to restrain fraudulent competition, but to restrain it 
 by invoking trademark law. In the inaccurate reasoning 
 of the courts, the fact that a man whose name was ''E. P. 
 Hall" came into equity seeking an injunction against a 
 defendant bearing a different name, but printing ''E. P. 
 Hall" upon his merchandise, suggested that the easiest 
 manner of disposing of the issues was to say that Hall 
 had a trademark right in his own name, which right the 
 defendant was infringing.^^ So the defendant was very 
 properly enjoined, justice was done, and the technical 
 error of the decision was overlooked. For error it was, 
 because the proper name Hall, even prefixed by the 
 initials E. P., is a generic name which any one may use, 
 provided that he does not so use it as to pass off his 
 goods upon the purchasing public as the goods of an- 
 other. 
 
 If any further proof were needed to show the rule to 
 be accurate, we could examine the cases in which the 
 use of a proper name could not possibly give a right of 
 trademark, because the name was not used in application 
 to merchandise. One of the most striking instances of 
 this kind is afforded by the case in Avhich a theatrical 
 combination was protected in the use of the name ' ' Chris- 
 ty 's Minstrels. "^^ 
 
 39 — Gillis V. Hall, 3 Brews. 509. in his sense of equity, saw that 
 40 — Christy v. Murphy, 12 How. a wrong was being committed and 
 Pr. 77. In his opinion, Judge that it onght to be enjoined, and 
 Clarke makes these prefatory re- he enjoined it. The remedy was 
 marks: "It is now well estab- just as effective and proper as if 
 lished that the court will grant an he had comprehended the law of 
 injunction against the use by one unfair competition as treated in 
 tradesman of the trademarks of the later decisions. But if he had 
 another. Will this protection be understood the principles he ad- 
 extended to enterprises undertak- ministered he would not have re- 
 en for the purpose of affording ferred to the law of trademarks to 
 amusement or recreation to the justify his conclusion, 
 public?" The court instinctively.
 
 %66] 
 
 WHAT CONSTITUTES A VALID TRADEMARK. 
 
 143 
 
 § 66. The use of proper names generally.— From this 
 preliminary discu.ssiou of the priiicipJes of unfair com- 
 petition we can now undertake to classify what we may 
 term, for want of a better phraseology, the proper-name 
 cases. 
 
 (a) Where the defendant is using his own name in 
 good faith. In these cases there is no unfairness in the 
 competition between the parties, and the defendant will 
 not be restrained.^' 
 
 But in this connection it should be observed that one 
 
 41 — Burgess v. Burgess, 3 DeG. 
 M. & G. 806; 17 Jur. 292; Seb. 117; 
 Coats V. Piatt, 17 Leg. Int. 213; 
 Faber v. Faber, 49 Barb. 357; 3 
 Abb. Pr. N. S. 115; Ck)x, 401; Seb. 
 278; Wolfe v. Burke, 56 N. 
 Y. 115; Meneely v. Meneely, 
 1 Hun, 367; 62 N. Y. 427; Seb. 
 472; Decker v. Decker, 52 How. Pr. 
 218; Seb. 525; Prince Metallic 
 Paint Co. v. Carbon Metallic Paint 
 Co., Seb. 573; Rodgers v. Nowill, 
 6 Hare, 325; Seb. 82; Clark v. 
 Clark, 25 Barb. 76; Cox. 206; Seb. 
 148; Comstock v. White, IS How. 
 Pr. 421; Cox, 232; Binninger v. 
 Wattles, 28 How. Pr. 206; Cox, 
 318; Seb. 240; Hardy v. Cutter, 3 
 Off. Gaz. 468; Seb. 427; Carmichef 
 V. Latimer, 11 R. L 395; 23 Am. 
 Rep. 481; 16 Alb. L. J. 73; Seb. 
 521; Gilman v. Hunnewell, 122 
 Mass. 139; Seb. 541; McLean v. 
 Fleming, 96 U. S. 245; 13 Off. Gaz. 
 913; Brown Chemical Co. v. Meyer, 
 139 U. S. 540; Cox, Manual, 726; 
 Wm. Rogers Mfg. Co. v. Rogers & 
 S. Mfg. Co., 11 Fed. Rep. 495; Lan- 
 dreth v. Landreth, 22 Fed. Rep. 41; 
 Wm. Rogers Mfg. Co. v. R. W. Rog- 
 ers Co., 66 Fed. Rep. 56; affirmed, 
 17 C. C. A. 57, 70 Fed. Rep. 1019; 
 Wm. Rogers Mfg. Co. v. Rogers, 84 
 Fed. Rep. 639; Rogers v. Taintor, 
 
 97 Mass. 291; Thynne v. Shove, L. 
 R. (1890) 45 Ch. D. 577-582; Inves- 
 tor Pub. Co. V. Dobinson, 82 Fed. 
 Rep. 56; Marcus Ward & Co. v. 
 Ward, 15 N. Y. Supp. 913; 61 Hun, 
 625; Drummond Tobacco Co. v. 
 Randle, 114 111. 412; 2 N. E. Rep. 
 536; Newark Coal Co. v. Spangler, 
 54 N. J. Eq. 354; 34 Atl. Rep. 932; 
 American Cereal Co. v. Eli Petti- 
 john Cereal Co. (2), 76 Fed. Rep. 
 372; 22 C. C. A. 336, affirming s. 
 c. 72 Fed. Rep. 903; Duryea v. Na- 
 tional Starch Mfg. Co., 25 C. C. A 
 139, 45 U. S. App. 649; 79 Fed. 
 Rep. 651; affirmed, 101 Fed. Rep. 
 117; Wm. Rogers Mfg. Co. v. 
 Simpson, 54 Conn. 527; Foster v. 
 Webster Piano Co., 13 N. Y. Supp. 
 338; 59 Hun, 624; Tussaud v. 
 Tussaud, 38 W. R. 440; Iowa Seed 
 Co. V. Dorr, 70 la. 481; Turton & 
 Sons (Ltd.) V. Turton, 42 Ch. D. 
 128; American Cereal Co. v. Eli 
 Petti John Cereal Co. (1), 72 Fed. 
 Rep. 903 ; Bingham School v. Gray, 
 122 N. Car. 699, 30 S. E. Rep. 304, 
 41 L. R. A. 243; Harson v. Halk- 
 yard, R. I., 46 Atl. Rep. 271; Von 
 Faber v. Faber, 124 Fed. Rep. 603, 
 611; National Starch Mfg. Co. v. 
 Duryea, 41 C. C. A. 244, 101 Fed. 
 Rep. 117.
 
 144: UOPKINS ON TK^UJEMAKIIS. [§ 66 
 
 vrlio enters into competition with another person of the 
 same name, who has an old and established business, is 
 under an obligation to more widely differentiate his 
 goods fi'om those of the latter than is required of third 
 Ijersons having different names.^- A court of equity may 
 direct a defendant, in such a case, how to use his name 
 so as not to injure the complainant who bears the same 
 name."*^ This direction has at times taken the form of 
 an injunction restraining the party at fault from using 
 his name in connection with his product, except in con- 
 junction with the words "No connection with the orig- 
 inal " (giving the name and location of the other 
 
 party), or words of like import.'^ ^ 
 
 (b) "V\niere the defendant is using his own name or that 
 of another in a manner wilfully calculated to deceive the 
 public into a belief that his goods are the goods of the 
 plaintiff who bears the same name. This presents a 
 state of facts that warrants the invocation of the injunc- 
 tive power of equity; the decisions being practically' 
 unanimous.^^ 
 
 42 — Baker & Co. v. Baker, 77 53; Seb. 117; Taylor v. Taylor, 2 
 
 Fed. Rep. 181; 78 Off. Gaz. 1427; Eq. R. 290; 23 L. J. Ch. 255; 22 L. 
 
 Walter Baker & Co. v. Sanders, 26 T. 271; Seb. 124; Clark v. Clark, 
 
 C. C. A. 220, 80 Fed. Rep. 889-895. 25 Barb. 76; Cox, 206; Seb. 148; 
 
 43 — Baker & Co. v. Baker, 77 Stonebraker v. Stonebraker, 33 Md. 
 Fed. Rep. 181; 78 Off. Gaz. 1427; 252; Seb. 333; Holmes, Booth & 
 Tarrant & Co. v. Hoff, 76 Fed. Rep. Haydens v. Holmes, Booth & At- 
 959; affirming s. c, 71 Fed. Rep. wood Mfg. Co., 37 Conn. 278; 9 Am. 
 163; Walter Baker & Co. v. San- Rep. 324; Seb. 340; James v. 
 ders, 80 Fed. Rep. 889-894; City of James, L. R. 13 Eq. 421; 41 L. J. 
 Carlsbad v. Schultz, 78 Fed. Rep. Ch. 353; 26 L. T. N. S. 568; 20 W. 
 469. In the last named case Judge R. 434; Seb. 388; McLean v. Flem- 
 Coxe designed a label for the de- ing, 96 U. S. 245; 13 Off. Gaz. 913; 
 fendant's use, a copy of which is Thorley's Cattle Food Co. v. Mas- 
 embodied in his opinion. sam, 42 L. T. N. S. 851; Cox, Man- 
 
 44 — Allegretti Chocolate Cream ual, 668; Russia Cement Co. v. Le 
 
 Co. V. Keller. 85 Fed. Rep. 643. Page, 147 Mass. 206; 17 N. E. Rep. 
 
 45— Holloway v. Holloway, 13 304, 44 Off. Gaz. 823; Cox, Manual, 
 
 Beav. 209; Seb. 106; Burgess v. 706; Brown Chemical Co. v. Meyer, 
 
 Burgess, 3 DeG. M. & G. 896; 22 L. 55 Off. Gaz. 287; 139 U. S. 540; 
 
 J. Ch. 675; 17 Jur. 292; 21 L. T. Meyer v. Bull Medicine Co., 06 Off.
 
 66] 
 
 WHAT CONSTITUTES A VALID TRADEMARK. 
 
 145 
 
 "Every one lias the absolute ri^lit to use his own name 
 honestly in his own business, even though he may thereby 
 incidentally interfere with and injure the business oi" an- 
 other having the same name. In such case the inconven- 
 ience or loss to which those having a common right are 
 subjected is damnum absque injuria. But, although he 
 may thus use his name, he cannot resort to any artifice 
 or to any act calculated to mislead the public as to the 
 identity of the business fiiTii or establishment, or of the 
 article produced by them, and thus produce injury to the 
 other beyond that which i-esults from the similarity of 
 name. Where the name is one which has previously 
 thereto come to indicate the source of manufacture of 
 particular devices, the use of such name by another, un- 
 accompanied with any precaution or indication, in itself 
 amounts to an artifice calculated to produce the decep- 
 tion alluded to in the foregoing adjudications."^''' 
 
 Gaz. 197; 18 U. S. App. 372; 7 C. 
 C. A. 558; 58 Fed. Rep. 884; Hig- 
 gins Co. V. Higgins Soap Co., 144 
 N. Y. 462; 39 N. E. Rep. 490, 43 
 Am. St. Rep. 769; Wm. Rogers 
 Mfg. Co. V. R. W. Rogers Co., 66 
 Fed. Rep. 66; 73 Off. Gaz. 970; 
 DeLong v. DeLong Hook & Eye 
 Co., 74 Off. Gaz. 809; Garrett v. 
 Garrett & Co., 24 C. C. A. 
 173, 79 Off. Gaz. 1681; 78 
 Fed. Rep. 472-478; Baker & Co. 
 V. Baker, 77 Fed. Rep. 181; 78 Off. 
 Gaz. 1427; Rogers Mfg. Co. v. Rog- 
 ers & Spurr Mfg. Co., 11 Fed. Rep. 
 495; Price & Steuart, 621; Tuerk 
 Power Co. v. Tuerk, 36 N. Y. Supp. 
 384; 92 Hun, 65; Gillis v. Hall, 
 Cox, 596; Devlin v. Devlin, 69 N. Y. 
 212; Tussaud v. Tussaud, 38 W. R. 
 440; Frazer v. Frazer Lubricator 
 Co., 121 111. 147; 13 N. E. Rep. 639: 
 Shaver v. Shaver, 54 la. 208; India 
 Rubber Comb Co. v. Rubber Comb 
 Co., 45 N. Y. Super. Ct. R. 258: 
 Gage V. Canada Pub. Co., 11 Can. 
 
 Sup. 306; Rogers Co. v. Wm. Rog- 
 ers Mfg. Co., 70 Fed. Rep. 1017; 
 Landreth v. Landreth, 22 Fed. 
 Rep. 41; Manufacturing Co. v. 
 Simpson, 54 Conn. 527; Rogers v. 
 Rogers, 53 Conn. 121; Hohner v. 
 Gratz, 52 Fed. Rep. 871; Williams 
 V. Johnson, 2 Bos. 1; Cox, 214; 
 Stuart V. F. G. Stewart Co., 
 33 a C. A. 480, 91 Fed. 
 Rep. 243; reversing s. c, 85 
 Fed. Rep. 778; International Sil- 
 ver Co. V. Simeon L. & George H. 
 Rogers Co., 110 Fed. Rep. 955; 
 Chickering v. Chickering & Sons. 
 120 Fed. Rep. 69, 56 C. C. A., 475; 
 Royal Baking Powder Co. v. Royal, 
 58 C. C. A. 499, 122 Fed. Rep. 337; 
 International Silver Co. v. Wm. G. 
 Rogers Co., 113 Fed. Rep., 526: 
 Robinson v. Storm, 103 Tenn. 40, 
 52 S. W. Rep. 880. 
 
 46 — Singer Mfg. Co. v. June Mfg. 
 Co., 163 U. S. 169. "A man may 
 not use his own name to accom- 
 plish a fraud, designed or con-
 
 146 HOPKINS ON TRADEMARKS. [§ 66 
 
 (c) Where the defendant is a corporation whose cor- 
 porate name includes a proper name and was selected 
 by its incorporators with the intent and for the purpose 
 of deceiving the public into the belief that its goods are 
 the goods of the plaintiff. Such frauds will of course be 
 enjoined.'*" 
 
 (d) ^"\'liere the defendant has, solely for the purpose 
 of unfair trade, secured from some person having the 
 same name as the plaintiff a license to use that name for 
 the purpose of fraudulently competing with the plaintiff. 
 This, being an artiiice in promotion of unfair trade, ren- 
 ders the defendant liable to injunction.^^ 
 
 In such a case, the licensor is a joint tort-feasor with 
 the licensee.^'' 
 
 Finally, in regard to the assignment of the right to 
 use one's name, the law is well settled that a man can so 
 assign the right to use his name subject only to the gen- 
 eral rules of public policy governing contracts in re- 
 straint of trade.^*' 
 
 The right to use the name Booth, in connection with a 
 theatre, described in the assignment of a lease as 
 ''Booth's Theatre," was held to pass to the assignee be- 
 cause it had become affixed to the establishment;''^ and 
 
 structive." Jenkins, J., in Stuart v. Fed. Rep. 778; Dodge Stationery 
 F. G. Stewart Co., 91 Fed. Rep. Co. v. Dodge, Cal., 78 Pac. Rep. 879. 
 243-248, 33 C. C. A. 480. 48 — Melachrino v. Melachrino 
 47 — Wm. Rogers Mfg. Co. v. Egyptian Cigarette Co., 4 R. P. C 
 Rogers, 73 Off. Gaz. 970; 84 215; Cartmell, 223; Sawyer v. Kel- 
 Fed. Rep. 639; Rogers Mfg. Co. v. logg, 7 Fed. Rep. 720; Cox, Manual, 
 Rogers & Spurr Mfg. Co., 11 Fed. 681; R. Heinisch's Sons Co. v. Bo- 
 Rep. 495; Higgins Co. v. Higgins ker, 86 Fed. Rep. 765; Garrett v. 
 Soap Co., 144 N. Y. 462; 39 N. E. T. H. Garrett & Co., 78 Fed. Rep. 
 Rep. 490, 43 Am. St. Rep. 769; 472, 24 C. C. A. 173. 
 Plant Seed Co. v. Michel Plant & 49— Wm. G. Rogers Co. v. Inter- 
 Seed Co., 23 Mo. App. 579; Garrett national Silver Co., 55 C. C. A. 83. 
 V. T. H. Garrett & Co., 24 118 Fed. Rep. 133. 
 C. C. A. 173, 78 Fed. Rep. 50— Brewer v. Lamar, 69 Ga. 
 472; Clark Thread Co. v. Armitage, 656, 47 Am. Rep. 766. 
 21 C. C. A. 178, 74 Fed. Rep. 936; 51— Booth v. Jarrett, 52 How. Pr. 
 Stuart V. F. G. Stewart Co., 91 169; Seb. 524. 
 Fed. Rep. 243; reversing s. c, 85
 
 § 66] WHAT CONSTITUTES A V.\JJD TRADEMARK. 147 
 
 it may follow that proper names attached to or used in 
 connection with places of amusement generally would 
 pass to an assi^iee without specific enumeration in the 
 instrument of assignment. 
 
 It was suggested in the case of Christy v. Murphy, in- 
 volving the right to use the words "Christy's Minstrels," 
 that if the plaintiff had seen fit to do so he could have 
 conveyed to the defendants an irrevocable license to use 
 that name in connection with that form of theatrical 
 enterprise.*'"'- But in the more recent case of Messer v. 
 The Fadeites, the supreme court of Massachusetts, Latli- 
 rop, J., dissenting, refused to recognize an assignment 
 of the name of an orchestra, holding that while the or- 
 ganizer and conductor of a musical organization may 
 have some right of ownership in it, such right is purely 
 personal, depending upon the personal reputation or skill 
 of the conductor, and is therefore not assignable; and 
 that the continued use of the name would mislead and 
 therefore work a fraud upon the public.^^ While the 
 name involved ("The Fadettes") is not the name of a 
 person, the decision is properly noticed here as a strik- 
 ing deparature from the doctrine of Christy v. Murphy, 
 supra, and from what the author conceives to be the law. 
 The dissenting opinion of Justice Lathrop is well 
 grounded on authority, and the reader is refen^ed to it 
 for his reasoning. Briefly, the court ought to have done 
 as has been occasionally done in the federal courts, 
 namely, it should have instructed the assignee of the 
 name "The Fadettes" how to use that name in its adver- 
 ing matter so as not to deceive the public into a belief 
 that the orchestra was still under the personal direction 
 of its fonner manager and director. To hold that the 
 assignment was void was to put a premium on dishon- 
 esty. 
 
 It is interesting to note that in a subsequent case the 
 
 52 — Christy v. Murphy, 12 How. 53 — Messer v. The Fadettes, 168 
 Pr. 77; Cox, 164; Seb. 137. Mass. 140.
 
 148 HOPKINS ON TRADEMARKS. [§ 67 
 
 same court affirms a decree directing a defendant to 
 clearly mark his goods so as to indicate they are not the 
 plaintiff 's.5^ 
 
 One who has assigned the right to use his name in spe- 
 cific trade will be enjoined from using his own name in 
 that trade, in competition with his assignee, for such 
 competition would be unfair and fraudulent.^^ Pro- 
 moters of a corporation whose names have been used as 
 a part of the corporate name cannot be pennitted to use 
 their names in connection with and as the name of a rival 
 company. Such conduct will be enjoined because of ' ' the 
 injury to the party aggrieved, and the imposition upon 
 the public, by causing them to believe that the goods of 
 one man or firm are the production of another. ' '^® 
 
 In conclusion, the general rule underlying this class of 
 cases has been aptly stated as follows: ''All these cases 
 in equity depend upon an appropriation by one person 
 of the reputation of another, sometimes actually fraudu- 
 lent, and sometimes only constructively so."^^ 
 
 § 67. Fictitious proper names.— Whether the use of a 
 fictitious proper name will vitiate an accompanying 
 trademark so as to deprive its owner of relief in equity 
 depends upon whether fraud is accomplished through the 
 use of the name. Thus, one Thomas Nelson Dale, mark- 
 
 54 — Flagg Mfg. Co. v. Holway, R. 365. And where the assignor 
 
 — Mass. , 59 N. E. Rep. 667. has acquiesced in the opening of 
 
 55 — Meyers v. Kalamazoo Buggy mail addressed to him, by his as- 
 Co., 54 Mich. 215; Thynne v. signee, he will be enjoined from 
 Shove, L. R. (1890) 45 Ch. D. 577; receiving and opening such mail 
 Wood V. Sands, Seb. 467; Russia addressed to him. Dr. David Ken- 
 Cement Co. v. Le Page, 147 Mass. nedy Corp. v. Kennedy, 55 N. Y. 
 206; 17 N. E. Rep. 304; Kidd v. Supp. 917. 
 
 Johnson, 100 U. S, 617; Spieker 56— Holmes, Booth & Haydens v. 
 
 V. Lash, 102 Cal. 38-45; Hoxie v. The Holmes, Booth & Atwood Mfg. 
 
 Chaney, 143 Mass. 592, 10 N. E. Co., 37 Conn. 278; 9 Am. Rep. 324; 
 
 Rep. 713; Skinner v. Oakes, 10 Seb. 340. 
 
 Mo. App. 45; Grow v. Seligman, 57 — Lowell, J., in Wm. Rogers 
 
 47 Mich. 647; Churton v. Douglas, Mfg. Co. v. Rogers & Spurr Mfg. 
 
 Johns. 174; 28 L. J. Ch. 841; 5 Co., 11 Fed. Rep. 495-499. 
 Jur. N. S. 887; 33 L. T. 57; 7 W.
 
 § 68] WHAT CONSTITUTES A VALID TRADEMARK. 149 
 
 ing thread made and sold by him with the fictitious firm 
 name "Thomas Nelson & Co." was gnmted an injunction 
 against an infringer, the court saying "the public is not 
 in fact deceived, as it is shown that no such firm exists 
 as Thomas Nelson & Co. who are known to be manufac- 
 turers of thread. "^'^ Upon the same principle, if a manu- 
 facturing or business establishment has a firm name 
 which it uses upon its merchandise, it is no fraud upon 
 the public if the finn name no longer represents the 
 same individuals that it did when first adopted."''-* 
 
 § 68 Revocation of license to use one's own name.— 
 When a person has permitted another to build up a busi- 
 ness under his name, the license may become irrevoca- 
 ble. It was so held by the supreme court of Pennsylva- 
 nia, where the purchaser of the machinery" and stock of 
 goods of an insolvent partnership at a sheriff's sale was 
 given permission to continue the use of the finn name. 
 A bill was filed four years subsequently to enjoin the pur- 
 chaser from continuing to use the name, and for an ac- 
 count of profits. Among other controlling facts, it ap- 
 peared that at the time of the sheriff's sale the good-will 
 and firm name were valueless, and that their sole value 
 was due to the efforts of the purchaser. This decision 
 seems to be sound, and it is chiefly of value because of 
 the distinction between the license here involved, and the 
 license which is implied in the case of the infringer of a 
 technical trademark, and which has been held to be re- 
 vocable at any time. Mestrezat, J., said "It is undoubt- 
 edly true that a mere license without consideration is 
 determinable at the pleasure of the licensor. But that is 
 not the rule in this state, where the enjoyment of the 
 license must necessarily be and is preceded by the expen- 
 diture of money. In such cases the license becomes an 
 
 58— Dale v. Smithson, 12 Abb. - 59 — Leather Cloth Co. Ltd. v. 
 Pr. 237; Cox' American Trade- American Leather Cloth Co. Ltd., 
 mark Cases, 282. L. R.. 11 H. L. C. 523, 542.
 
 150 HOPKINS ON TRADEMARKS. [§69 
 
 agreement on a valuable consideration, and is irrevoca- 
 ble. "«« 
 
 § 69. Corporate names.— The general rule governing 
 the supervision of equity over the names of corporations 
 has been comprehensively stated as follows: "In respect 
 to corporate names, an injunction lies to restrain the 
 simulation and use by one cor[3oration of the name of a 
 prior corporation which tends to create confusion, and 
 to enable the later corporation to obtain, by reason of 
 the similarity of names, the business of the prior one. 
 The courts interfere in these cases, not on the ground 
 that the state may affix such corporate names as it may 
 elect to the entities it creates, but to prevent fraud, actual 
 or constructive. The names of coi^iorations organized 
 under general laws, and in most other cases, are chosen 
 by the promoters, and it would be an easy way to escape 
 from the obligations which are enforced as between in- 
 dividuals if a cori^oration were granted immunity by rea- 
 son of their corporate character. '"^^ 
 
 Probable confusion of business is usually a prominent 
 factor in the disposition of cases of this class.*^^ 
 
 The courts are confused in their phraseology with ref- 
 erence to the character of corporate names. There can 
 be no trademark right in a corporate name, for the con- 
 clusive reason that it is not, as such, applied to the sub- 
 ject-matter of commerce. In an early case Judge Deady, 
 of Oregon, said, "The corporate name of a corj^oration 
 is a trademark from the necessity of the thing, "*^^ and 
 this very phrase, with other dicta, has been quoted with 
 
 60— Harris v. Brown, 202 Pa. 16, Case No. 10144, Deady, 609. 
 
 51 Atl. Rep. 586. "The name of a corporation has 
 
 61 — Higgins Co. v. Higgins Soap been said to be the 'knot of its 
 
 Co., 144 N. Y. 462, 39 N. E. Rep. combination,' without which it 
 
 490, 43 Am. St. Rep. 769. cannot perform its corporate func- 
 
 62 — Drummond Tobacco Co. v. tions." Wallace, J., in Goodyear 
 
 Randle, 114 111. 412, 2 N. E. Rep. Rubber Co. v. Goodyear's Rubber 
 
 536. Mfg. Co., 21 Fed. Rep. 276. 
 
 63 — Newby v. Railroad Co., Fed.
 
 § 69] WHAT CONSTITUTES A VALID TRADEMARK. 151 
 
 approval in a more recent case."^ The author has in a 
 former section collected the judicial definitions of trade- 
 mark, and it is a scientific impossibility to bring Judge 
 Deady's dictum within the scope of either of those defi- 
 nitions, or to extend the definitions to include that dic- 
 tum. Mr. Justice ClifTord's definition may be referred to 
 as making the author's position clearer."^^ It is entirely 
 erroneous to treat a corporate name as being a trade- 
 mark. 
 
 This error has arisen from the unfamiliarity of the 
 courts witli the essential requirements of technical trade- 
 marks, and the fact that equitable relief had to be admin- 
 istered in cases where the courts had no precedents at 
 hand except in the trademark decisions, which afforded 
 similar reasoning to support their conclusions. 
 
 The reason why equity intervenes to protect corporate 
 names from imitation is that they are essential parts of 
 the being of corporations, or, as expressed by the supreme 
 court of Missouri, its name is a necessarj- element of the 
 existence of a corporation."*' 
 
 As the Ehode Island court has phrased it, "The prin- 
 ciples upon which these cases rest are that, although a 
 corporation may be legally created, it can no more use its 
 corporate name in violation of the rights of others than 
 an individual can use his name, legally acquired, so as to 
 mislead the public and to injure another.""'^ The courts, 
 therefore, will protect a coi^:)oration in the use of its 
 name in the absence of any express statutory enact- 
 ment.^s The exercise of this power is an enforcement of 
 the law of unfair competition as shoT\Ti in the following 
 language of Bradley, J.: ''Fair competition in business 
 is legitimate, and promotes the public good; but an un- 
 
 64— Investor Pub. Co. v. Dobin- 67— Armington v. Palmer, — R. 
 
 son. 72 Fed. Rep. 603. 606. I. , 43 L. R. A. 95, 42 Atl. Rep. 
 
 65— McLean v. Fleming. 96 U. S.- 308. 
 
 245-254. 68— Farmers' Loan & Trust Co. 
 
 66.— State v. McGrath, 92 Mo. v. Farmers' Ix)an & Trust Co. of 
 
 257. Kansas, 1 N. Y. Supp. 44; William
 
 152 HOPKINS ON TRADEMARKS. [§ 69 
 
 fair appropriation of another's business, by using his 
 name or trademark, or an imitation thereof calculated to 
 deceive the public, or in any other way, is justly punish- 
 able by damages, and will be enjoined by a court of 
 equity.'"'^ This dictum is contained in the opinion in 
 the Celluloid case, where the corporate name happened 
 to be the trademark applied by the corporation to mer- 
 chandise manufactured and sold by it. It is a self-evi- 
 dent j^roposition that a generic word embodied in a cor- 
 porate name is not entitled to protection in equity. The 
 rule was thus stated by Mr. Justice Field, in delivering 
 the opinion of the United States supreme court in a case 
 where the Goodyear Eubber Co. sought to restrain an- 
 other corporation from using the name " Goodyear 's 
 Rubber Manufacturing Co." He said: ''The name of 
 * Goodyear Eubber Company' is not one capable of ex- 
 clusive appropriation. 'Goodyear Rubber' are terms de- 
 scriptive of well-known classes of goods produced by the 
 process known as Goodyear 's invention. Names which 
 are thus descriptive of a class of goods cannot be exclu- 
 sively appropriated by any one. The addition of the 
 word 'Company' only indicates that parties have formed 
 an association or partnership to deal in such goods, 
 either to produce or to sell them. Thus parties united to 
 produce or sell wine, or to raise cotton or grain, might 
 style themselves wine company, cotton company, or grain 
 company; but by such description they would in no re- 
 spect impair the equal right of others engaged in similar 
 business to use similar designations, for the obvious rea- 
 son that all persons have a right to deal in such articles 
 and to publish the fact to the world. Names of such ar- 
 ticles cannot be adopted as trademarks, and be thereby 
 appropriated to the exclusive right of any one, nor will 
 
 Kogers Mfg. Co. v. Rogers & Spurr Industrial Mutual Deposit Co. v. 
 
 Mfg. Co., 11 Fed. Rep. 495; Cellu- Central Mutual Deposit Co., — 
 
 loid Mfg. Co. V. Cellonite Mfg. Co., Ky. , 66 S. W. Rep. 1032. 
 
 32 Fed. Rep. 94; Investor Pub. 69 — Celluloid Mfg. Co. v. Cellon- 
 
 Co. V. Dobinson, 72 Fed. Rep. 603; ite Mfg. Co., 32 Fed. Rep. 94.
 
 §69] 
 
 WHAT CONSTITUTES A VALID TRz\DEMARK. 
 
 153 
 
 the incorporation of a company in the name of an article 
 of commerce, without other specification, create any ex- 
 clusive right to the use of the name. ' '^"^ 
 
 In his latest utterance upon this subject, the United 
 States Supreme Court speaking through Mr. Chief Jus- 
 tice Fuller says *'the principle that one coii:)oration is 
 not entitled to restrain another from using in its corpo- 
 rate title a name to which others have a common right, 
 is sustained by the discussion in Columbia Mill Co. v. Al- 
 
 io — Mr. Justice Field, in Good- 
 year Co. V. Goodyear Rubber Co., 
 128 U. S. 598-602; reversing s. c, 
 21 Fed. Rep. 276. Thus in an ac- 
 tion by one fire insurance com- 
 pany to restrain another from the 
 use of the word "Continental" in 
 Its corporate name, the court said: 
 "The distinguishing feature of the 
 names of the two incorporated 
 companies is the word 'Continen- 
 tal.' It is the use of this word 
 hy the defendant which the com- 
 plainant seeks to enjoin. It is the 
 contention of the complainant 
 that, by reason of the long-contin- 
 ued use of this word by it, and the 
 fact that it has built up a large 
 and lucrative business under this 
 distinguishing name, it has se- 
 cured a property right in said 
 word 'Continental,' in connection 
 with its incorporated name, and it 
 is entitled to the exclusive use of 
 the word 'Continental,' in connec- 
 tion with its insurance business, 
 in the sections of the country 
 where it is engaged in such busi- 
 ness. Upon the showing made by 
 the complainant, it might be en- 
 titled to the relief sought, were the 
 distinguishing word of its corpo- 
 rate name such a one as could be 
 
 exclusively appropriated in the 
 designation or conduct of a busi- 
 ness by a person, firm or corpora- 
 tion. The word 'continental' is in 
 general and prevalent use, and 
 means pertaining to or character- 
 istic of a continent. As applied to 
 or designating an insurance com- 
 pany, it would be descriptive of 
 the bounds within which such 
 company carried on its business. 
 The scope of the business carried 
 on by many insurance companies 
 is continental in extent. A term 
 which can be truthfully used by 
 many in the description of a busi- 
 ness or occupation cannot be ex- 
 clusively appropriated by any one 
 of them. The word 'continental' 
 is a generic term, and it is not the 
 policy of the law to permit the ex- 
 clusive appropriation of words or 
 terms which are generic; that is, 
 which pertain to a class of related 
 things, and which are of general 
 application. The right to use such 
 words should remain vested in the 
 public." Meek, J., in Continental 
 Ins. Co. V. Continental Fire Ass'n^ 
 96 Fed. Rep. 846-848; affirmed, 41 
 C. C. A. 326, 101 Fed. Rep. 255. 
 To the same effect see Goodyear 
 Rubber Co. v. Day, 22 Fed. Rep. 44.
 
 154 HOPKINS ON TRADEMAKKS. [§ 69 
 
 corn- (150 U. S. 460), and is, we think, necessarily appli- 
 cable to all names publici juris."'^^ 
 
 A foreigTi coiporation cannot, by application to a court 
 in the state in which a new corporation is being organ- 
 ized, secure an injunction restraining the fonnation of 
 the new corporation under the same corporate name as 
 that of the plaintiff. But in dismissing a bill brought for 
 such a puii^ose, Judge Gresham said: ''I do not say what 
 may be done if the defendants succeed in creating their 
 corporation bearing the complainant's name, and a suit 
 shall be brought by the complainant to prevent individ- 
 uals claiming to be officers or managers of such corpora- 
 tion from interfering with the complainant's business. "^^ 
 
 In conclusion, there is no practical difference, so far 
 as equitable rights and remedies are concerned, between 
 corporate names and the name of a copartnership or an 
 individual. As said by Mr. Justice Bradley, on circuit, 
 in dealing with the names of corporations plaintiff and 
 defendant, ''the fact that both are corporate names is of 
 no consequence in this connection. They are the busi- 
 ness names by which the parties are known, and are to be 
 dealt with jDrecisely as if they were the names of private 
 firms or partnerships."^^ 
 
 And in a similar case, the Supreme Court of Illinois 
 has said, ''Even if the corporate namxcs of the two cor- 
 porations are somewhat similar, yet, in the absence of any 
 intent, act, or artifice to mislead dealers in the market or 
 the public at large as to the identity of the corporations, 
 
 71— Howe Scale Co. v. Wyckoff 72— Lehigh Valley Coal Co. v. 
 
 Seamans & Benedict, 198 U. S. 118; Hamblen, 23 Fed. Rep. 225, 226. 
 
 citing American Cereal Co. v. Eli 73 — Celluloid Mfg. Co. v. Cellon- 
 
 Pettijohn Cereal Co. 72 Fed. Rep ite Mfg. Co., 32 Fed. Rep. 94-97. To 
 
 903; 76 Fed. Rep. 372; Hazelton the same effect, see Baker v. 
 
 Boiler Co. v. Hazelton Tripod Baker, 53 C. C. A. 157, 115 Fed. 
 
 Boiler Co., 142 111. 494; Monarch Rep. 297; Howe Scale Co. v. 
 
 V Rosenfeld, 19 Ky. Law Rep. 14, Wyckoff, Seamans & Benedict, 198 
 
 39 S. W. Rep. 236. U. S. 118.
 
 § 69 J WHAT CONSTITUTES A VALID TU.VDEMARK. 155 
 
 the Elgin Creamer}- Company has the same right to use 
 its corjoorate name in the transaction of its business that 
 the Elgin Butter Company has to use its corporate name. 
 It would seem that tlie same rule should apply to corpo- 
 rations in this regard that obtaijis in respect to natural 
 persons; and, in the absence of any fraudulent intention 
 or act, or any contract to prohibit it, every natural per- 
 son has the absolute right to his own name in his own 
 business. ' '^^ 
 
 As to the use of a proper name of an incorporator as 
 part of the corporate name. Judge Lochren has stated 
 the rule as follows: ''While any person has the right to 
 use his own name in the conduct of his business, in de- 
 scribing the articles of his manufacture, and which he is 
 dealing in, he has not the right to use the name of any 
 other dealer; and it is well settled by the authorities that 
 a corporation has not the right to use the name of one 
 of its incorporators for the purpose of unfair competi- 
 tion with an older dealer, where it is likely to do him in- 
 jury, and that it will not be permitted to use that name 
 if it is the name by which the older article is usually 
 called for and described. "^^ 
 
 A corporation cannot, by securing a license from or 
 employing a person bearing the desired proper name, so 
 use that name as part of its corporate name as to main- 
 tain an unfair competition with an older business em- 
 ploying the name.'^" 
 
 Under a penal statute of Illinois providing a punish- 
 ment for any person, company or associalion not incor- 
 porated, assuming "a corporate name," relief in equity 
 has been denied individuals doing business as "Aetna 
 
 74— Baker, J. in Elgin Butter Tliread Co., 135 Fed. Rep., 1^7, 
 
 Co. V. Elgin Creamery Co., 155 111. 179. 
 1:^7; 40 N. E. Rep. 616. 76— Garrett v. T. H. Garrett & 
 
 75— J. & P. Coats V. John Coates Co., 78 Fed. Rep. 472, 24 C. C. A. 173.
 
 156 HOPKINS ON TRADEMARKS. [§ 70 
 
 Iron Works. ' '" ' And in another instance it has been held 
 that individuals doing business as ''Hazleton Boiler 
 Company" could not convey the right to use said name."^^ 
 In the former case, the rule is broadly laid down that, in 
 that state a copartnership can have no property in a name 
 importing a corporation. 
 
 In the latter case, it was held by the Supreme Court of 
 Illinois that a foreign corporation had no standing in 
 the courts of Illinois to contest the right of an Illinois 
 corporation to use the same name. Judge Jenkins has 
 remarked that this holding ''is not in accord with the 
 decisions of the federal and of other state courts. "'^^ 
 
 §70. "Secondary meaning" defined.— Of late years 
 the expression ''secondary meaning" has been fre- 
 quently employed in opinions in cases of unfair compe- 
 tition. The expression has come to indicate a meaning 
 that may be ' ' secondary ' ' either in point of intent, or in 
 point of time. 
 
 Thus, in a leading English case, Lord Macnaghten 
 said: 
 
 "The appellants concede— they cannot, indeed, any 
 longer dispute— that everybody who makes belting of 
 camel hair, is entitled to describe his belting as "Camel- 
 hair Belting,' provided he does so fairly. But they con- 
 tend, and I think with reason, that neither Banham nor 
 anybody else is entitled to steal Reddaway's trade under 
 color of imparting accurate and possibly interesting in- 
 formation. Practically the only difference which the un- 
 
 77— Clark v. Aetna Iron Works, Mfg. Co., 17 C. C. A. 576, 70 Fed. 
 
 44 111. App. 510. Rep. 1017; Publishing Co. v. Dob- 
 
 78— Hazelton Boiler Co. v. Ha- binson, 72 Fed. Rep. 603; Higgins 
 
 zelton Tripod Boiler Co., 142 111. Co. v. Hipgins Soap Co., 144 N. Y. 
 
 494; 30 N. E. Rep. 339. 462, 39 N. E. Rep. 490, 27 L. R. A. 
 
 79— The Peck Bros. & Co. V. Peck 42, 43 Am. St. Rep. 769; Holmes, 
 
 Bros. Co., 51 C. C. A. 251, 113 Fed. Booth & Hayden v. Holmes, Booth 
 
 Rep. 291, 302; citing Celluloid & Atwood Mfg. Co., 37 Conn. 278, 
 
 Mfg. Co. V. Cellonite Mfg. Co., 32 293, 9 Am. Rep. 324. 
 Fed. Rep. 94; Rogers Co. v. Rogers
 
 § 70] WUAT CONSTITUTES A VALID TR.VDEMARK. 137 
 
 expected turn in the evidence has made is this: the case 
 now comes under the second branch oi' the proposition 
 laid down by Lord Justice James; if 'Camel-hair Belting' 
 liad kept its place as a fanciful tenn, it would have fallen 
 under the first. The learned counsel for the respondents 
 maintained that the expression 'Camel-IIair Belting,' 
 used by Banliam, was the ' simple truth. ' Their proposi- 
 tion was that, 'where a man is simply telling the 
 truth as to the way in which his goods are made, or as 
 to the materials of which they are composed, he cannot 
 be held liable for mistakes which the public may make.' 
 That seems to me to be rather begging the question. Can 
 it be said that the description 'Camel-Hair Belting,' as 
 used by Baiiham, is the simple truth? I will not call it 
 an abuse of language to say so, but certainly it is not 
 altogether a happy expression. The whole merit of that 
 description— its one virtue for Banham's purposes— lies 
 in its duplicity. It means two things. At Banham's 
 works, where it cannot mean Keddaway's belting, it 
 may be construed to mean belting made of cam- 
 el's hair. Abroad, to the Gemian manufacturer, to the 
 Bombay mill owner, to the up-country native, it must 
 mean Redda way's belting; it can mean nothing else. I 
 venture to think that a statement which is literally true, 
 but which is intended to convey a false impression, has 
 something of a faulty ring about it ; it is not sterling coin ; 
 it has no right to the genuine stamp and impress of 
 truth. "80 
 
 Here, both in point of time and point of intent, ' ' Camel- 
 Hair" meant primarily belting having camel's hair as a 
 component. 
 
 Where the mark in its first application is a valid trade- 
 mark, "the mere fact that the article has obtained such 
 a wide sale that the mark has also become indicative of 
 quality is not of itself sufficient to debar the owner of 
 
 80— Reddaway V. Banham (1896), App. Cas. 199.
 
 158 HOPKINS ON TRADEMARKS. [§ 70 
 
 protection or make it the common proj)erty of the 
 trade. "«i 
 
 Where, on the other hand, the mark in the first instance 
 is generic, because merely descriptive or geographical, 
 or the name of a j^erson, and under that mark a particular 
 trader has occupied the market, a subsequent invasion of 
 the market by another using the mark may (though it 
 does not necessarily) constitute unfair competition; but 
 no matter how long the use continues, the mark will never 
 become a technical trademark.^- 
 
 The iTile has been frequently applied and illustrated. 
 It has been admirably stated by Judge Lurton in the fol- 
 lowing terms: 
 
 "That a descriptive word or sign or symbol, descrip- 
 tive from popular use in a descriptive sense, may acquire 
 a secondary- significance denoting origin or ownershii^, is 
 true. But this secondary significance is not protected as 
 a trademark, for a descriptive word is not the subject of 
 a valid trademark; the only office of a trademark being 
 to indicate origin or ownership. When a descriptive or 
 geographical word or symbol comes by adoption to have 
 a secondary meaning denoting origin, its use in this sec- 
 ondary sense may be restrained, if it amounts to unfair 
 competition. In such case, if the use of it by another be 
 for the purpose of palming off the goods of one as and 
 for the goods of another, a court of equity will interfere 
 for the purpose of preventing such a fraud. But this kind 
 of relief depends upon the facts of each case, and does 
 not at all come under the rules applicable to the infringe- 
 ment of a trademark. "^^ 
 
 As to the secondary meaning of geographical names, 
 
 81 — Brown, J., in Burton v. puting Scale Co., 55 C. C. A. 459, 
 
 Stratton, 12 Fed. Rep. 696, 702. 118 Fed. Rep. 965, 968. 
 
 82 — Brennan v. Emery - Bird - 83 — Vacum Oil Co. v. Climax Re- 
 
 Thayer Dry-goods Co., 47 C. C. A. fining Co., 56 C. C. A. 90, 120 Fed. 
 
 562, 108 Fed. Rep. 624, 627; Com- Rep. 254, 256. 
 puling Scale Co. v. Standard Com-
 
 § 71] WHAT CONSTITUTES A V.UJD TKADEMARK. 159 
 
 Mr. Justice Brown has said, "geographical names often 
 acquire a secondary significance indicative not only of 
 the place of manufacture or production, but of the name 
 of the manufacturer or producer and the excellence of 
 the thing manufactured or produced, which enables the 
 owner to assert an exclusive right to such name as against 
 every one not doing business within the same geograph- 
 ical limits; and even as against them, if the name be used 
 fraudulently for the purpose of misleading buyers as to 
 the actual origin of the thing produced, or of passing off 
 the productions of one person as those of another. "^^ 
 
 The general doctrine has been stated with admirable 
 conciseness by Judge Lurton, as follows: ''When the 
 word is incapable of becoming a valid trademark, because 
 descriptive or geographical, yet has by use come to stand 
 for a particular maker or vendor, its use by another in 
 this secondary sense will be restrained as unfair and 
 fraudulent competition, and its use in its primary or 
 common sense confined in such a way as will prevent a 
 probable deceit by enabling one maker or vendor to sell 
 his article as the product of another. "^•'^ 
 
 § 71. Words of double meajiing.— In connection with 
 the subject of "secondary" meanings, we may con- 
 sider, briefly, the decisions concerning the appropriation 
 to trade uses of the class of words having double mean- 
 
 84— La Republique Francaise v. 549, 11 Sup. Ct. 396, 34 L. ed. 997; 
 
 Saratoga Vichy Spring Co., 191 U. Chemical Co. v. Meyer, 139 U. S. 
 
 S. 427. 435, 48 L. ed. 247, 252. To 540, 11 Sup. Ct. G25, 35 L. ed. 247; 
 
 the same effect see Elgin National Mill Co. v. Alcorn, 150 U. S. 460, 
 
 Watch Co. V. Loveland, 132 Fed. 14 Sup. Ct. 151, 37 L. ed. 1144; 
 
 Rep. 41, 47; American Waltham Singer Mfg. Co. v. June Mfg. Co., 
 
 Watch Co. V. United States Watch 163 U. S. 169, 16 Sup. Ct. 1002, 41 
 
 Co.. 173 Mass. 85, 53 N. E. Rep. 141. L. ed. 118; Elgin Nat. Watch Co. 
 
 85 — Computing Scale Co. v. v. Illinois W'atch Case Co., 179 U. 
 
 Standard Computing Scale Co., 55 S. 665, 21 Sup. Ct. 270, 45 L. ed. 
 
 C. C. A. 459, lis Fed. Rep. 965, 365; Bennett v. McKinley, 13 C. C. 
 
 967. Citing Lawrence Mfg. Co. v. A. 25, 65 Fed. Rep. 505. 
 Tennessee Mfg. Co., 138 U. S. 537,
 
 160 HOPKINS ON TR^U>EMARKS. [§ 71 
 
 iugs, being in one sense arbitran'^ and in another descrip- 
 tive. 
 
 A careful search of the decisions involving words of 
 this character fails to disclose a clearer statement of the 
 coiTect iTile than is embodied in the following language 
 of Judge Wallace: ''No principle of the law of trade- 
 mark is more familiar than that wliich denies protection 
 to any woi'd or name which is descriptive of the qualities, 
 ingredients, or characteristics of the article to which it 
 is applied. An exclusive right to the use of such a word, 
 as a trademark, when applied to a particular article or 
 class of articles, cannot be acquired by the prior appro- 
 priation of it, because all persons who are entitled to 
 produce and vend similar articles are entitled to describe 
 them, and to employ any appropriate terms for that pur- 
 pose. Whether a word claimed as a trademark is avail- 
 able because it is a fanciful or arbitrary name, or whether 
 it is obnoxious to the objection of being descriptive, must 
 depend upon the circumstances of each case. The word 
 which would be fanciful or arbitrary when applied to 
 one article may be descriptive when applied to another. 
 If it is so apt, and legitimately significant of some quality 
 of the article to which it is sought to be applied, that 
 its exclusive concession to one person would tend to re- 
 strict others from properly describing their own similar 
 articles, it cannot be the subject of a monopoly. On the 
 otlier hand, if it is merely suggestive, or is figurative 
 only, it may be a good trademark, notwithstanding it is 
 also indirectly or remotely descriptive."^^ 
 
 In the opinion quoted from, the word ''instantaneous" 
 was held to be aptly descriptive of one of the qualities 
 of the goods to which it was ajjplied. In a later case it 
 has been held that the words ' ' Queen, " or " Queen Qual- 
 ity," as applied to shoes, are not so descriptive as to pre- 
 clude their exclusive appropriation as a "tradename," 
 
 86— Bennett v. McKinley, 13 C. C. A. 25, 65 Fed. Rep. 505, 506,
 
 § 71] WHAT CONSTITUTES A VALID TRADEMARK, IGl 
 
 Judge Severens apparently using tlie word ** trade- 
 name" as synonymous witli "trademark."®^ 
 
 "It has been repeatedly ruled that a word which sug- 
 gests even the composition, quality, or characteristics of 
 an article to which it is applied may yet be a good trade- 
 mark. "«« 
 
 87 — Thomas G. Plant Co. v. May & Woerz v. Cooke Brewing Co., 20 
 
 Co., 44 C. C. A. 534, 105 Fed. Rep. C. C. A. 405. 74 Fed. Rep. 229. 234. 
 
 375, 379. citing Keasbey v. Chemical Works, 
 
 88— Showalter, J., in Beadleston 142 N. Y. 467, 37 N. E. Rep. 476. 
 
 11'
 
 CHAPTER IV. 
 
 TRADEMARK RIGHTS IN TITLES OF BOOKS, PERIODICALS 
 
 AND PLAYS. 
 
 § 72. Trademark in title of a book.— Upon this subject 
 there has been less harmony of opinion than would be 
 expected. It has been said by the court of appeals of 
 Maryland that *'A publisher has either in the title of his 
 wOTk or in the application of his name to the work, or in 
 the particular marks which designate it, a species of 
 property similar to that which a trader has in his trade- 
 mark. ' '^ 
 
 Mr. Browne in his learned treatise on trademarks says: 
 ''Can printed books be protected by trademarks? Yes, 
 as mere merchandise ; no, as literary productions. ' '^ This 
 is true, in so far as it asserts that marks or devices may 
 be used to distinguish the product of the publisher or 
 book dealer.'^ He says further: "There seems to be no 
 sufficient reason why the title of a book may not be 
 deemed a valid trademark,"^ and thereby expresses the 
 error contained in the careless dictum of the Marj^land 
 court quoted above. The correct view is stated in clear 
 terms by Mr. Rowland Cox, in his note to Clemens v. Bel- 
 ford:^ ''It is necessarily true that the name of a book is, 
 under all circumstances, a descriptive term which means 
 a particular thing. The book is created and given a 
 name, and the name is added to the language as a term 
 
 l_Robertson v. Berry, 50 Md. related to property right in the 
 
 591; Price & Steuart, 153. title of a periodical publication, 
 
 2_Browne, Trademarks, sec. 116. 4— Browne, Trademarks, sec. 118. 
 
 3— Mr. Browne cites six cases in 5—14 Fed. Rep. 728; Cox, Man- 
 support of this proposition, neither ual, 685. 
 one of which is applicable. All 
 
 162
 
 § 72] BOOK TITLES AS TRADEM.VRKS. 163 
 
 of description. If a copyright is taken, the owner of the 
 copyright enjoys, as long as the privilege continues, the 
 exclusive right to the use of the name; and when the 
 privilege expires, the name, always a descriptive term, 
 becomes puhlici juris. If the hook is not copyrighted, 
 the literary matter becomes puhlici juris as soon as it is 
 published, and the name of the literary matter goes to 
 the public as an incident of that which it describes. If 
 there is language in some of the cases which seems to 
 indicate that the name of a book can be protected as a 
 trademark, reflection will demonstrate that it cannot be 
 made good. The names of periodicals and newspapers, 
 as distinguished from books, are protected as in the 
 nature of trademarks; and in many instances the publi- 
 cations in connection with which the names have been 
 used were proper subjects of copyright. In some cases 
 they contained, or might have contained, articles in con- 
 nection with which the statutory privilege had been ac- 
 quired. But the name which has been protected has never 
 been simply the name of a book, but always that of a 
 constantly changing series. Thus the term *01d Sleuth 
 Library' was distinctly arbitrary, and never the name 
 of a particular book or literary production, and for this 
 reason it was in an accurate sense a trademark, and 
 must continue to be as long as the publication was con- 
 tinued. But if the publication of the periodical were 
 discontinued for a period of years, the name would 
 cease to be arbitrary and take its place in literature 
 as indicating a definite collection of articles, pictures, 
 etc., and as soon as it acquired that settled meaning, it 
 would, in the absence of copyright, become puhlici 
 juris." 
 
 It is now established law that there is no trademark 
 right in the title of a book. Judge Wallace stated the 
 rule very lucidly when he said; ''Neither the author 
 or proprietor of a literary work has any property in its 
 name. It is a term of description, which senses to
 
 164 HOPKINS ON TRADEMARKS. [§ 73 
 
 identify the work; but any other person can with im- 
 punity adopt it, and apply it to any other book, or to 
 any trade commodity, provided he does not use it as 
 a false token to induce the public to believe that the 
 thing to which it is applied is the identical thing which 
 it originally designated. If literary property could be 
 protected upon the theory that the name by which it 
 is christened is equivalent to a trademark, there would 
 be no necessity for copyright laws.'"^ This dictriue is 
 fully sustained by the later cases."^ 
 
 § 73. Trademark in title of periodical.— In 1859 Vice- 
 Chancellor Stuart enjoined a defendant who had begun 
 the jDublication of ''The Penny Bell's Life and Sporting 
 News" from publishing any newspaper under that 
 name, or any other name in which the words ''Bell's 
 Life" should occur, the application being made by the 
 proprietors of "Bell's Life in London." In the course 
 of his opinion the vice-chancellor said: "This is an 
 application in support of the right to property."^ Thus 
 was distinctly recognized the right of trademark in the 
 title of a periodical publication. Long prior to this 
 time, however, equity had suppressed this species of 
 piracy between publishers, the first reported case being 
 that of Hogg v. Kirhy, where the complainant was the 
 proprietor of a magazine called "The Wonderful Maga- 
 zine" and the defendant's publication bore substan- 
 tially the same name with the addition of the words 
 "New Series, Improved." The injunction was granted 
 by Lord Eldon.» 
 
 6 — Black V. Ehrich, 44 Fed. Rep. 49 Fed. Rep. 944 (opinion by 
 
 793, 794. Judge Shipman) ; Kipling v. G. 
 
 7 — Merriam v. Holloway Pub. P. Putnam's Sons, 120 Fed. Rej). 
 
 Co., 43 Fed. Rep. 450 (opinion by 631, 57 C. C. A. 295. 
 Mr. Justice Miller on circuit) ; 8 — Clement v. Maddick, 1 Giff. 
 
 Merriam v. Famous Shoe and 98; 5 Jur. N. S. 592; 33 L. T. 
 
 Clothing Co., 47 Fed. Rep. 411 117; Seb. 174. 
 (opinion by Judge Thayer); Mer- 9 — Hogg v. Kirby, 8 Yes. 215; 
 
 riam v. Texas Sittings Pub. Cc, Seb. 10. Lord Eldon also re-
 
 § 73] BOOK TITLES AS TRADEMARKS. 165 
 
 In the United States Chancellor Sandford was the 
 first to recognize this right, in 1825, although he re- 
 fused to enjoin the use of the title "The New York Na- 
 tional Advocate" on the application of the proprietor of 
 *'Tlie National Advocate," both names being applied 
 to newspapers published in the city of New York, hold- 
 ing the names to be substantially different; and this 
 notwithstanding the fact that the defendant had been 
 the editor for the publisher who had sold "The Na- 
 tional Advocate" to the complainant. Tlie chancellor 
 did not exjDressly hold the title of the paper to be a 
 trademark, but treated it as part of the good-will of the 
 printing establishment.^ '^ Indeed he seems to have 
 treated the subject solely from the standpoint of unfair 
 competition, ignoring the question of technical prop- 
 erty right, as did Chancellor AYalworth in 1840 in refus- 
 ing to enjoin the use of the title "New Era" on the 
 application of complainants who published the "Demo- 
 cratic Republican New Era," saying inter alia, "There 
 could be very little excuse for the editor of a new paper 
 who should adopt the precise name and dress of an old 
 established paper, which would be likely to interfere 
 with the good-will of the latter by actually deceiving 
 its patrons. "^^ 
 
 In 1867, however, a clear cut opinion of the court of 
 common pleas of the city of New Y^ork recognized the 
 property Tight in unmistalvable tenns. The plaintiffs, 
 proprietors of the "National Police Gazette," applied 
 for an injunction to restrain the publication of the 
 "United States Police Gazette" by the defendants. 
 Brady, J., said: "The title of a newspaper may be a 
 
 strained a defendant from the pub- 10 — Snowden v. Noah, Hopkins, 
 
 lication of a court calendar which Ch. R. 347; Cox, 1; Seb. 41. 
 
 he was issuing as a continuation 11 — Bell v. Locke, 8 Paige, 75; 
 
 of the complainant's work. Long- Cox, 11; Seb. 65. 
 
 man v. Winchester, 16 Ves. 269; 
 
 Seb. 15.
 
 166 HOPKINS ON TRADEMARKS. [§ '^3 
 
 purely original one, and the proprietor for that reason, 
 entitled to its exclusive use. He may create a word, 
 or combination of words, for the particular designation 
 of his paper, and in that way acquire an exclusive right 
 to the use of the name employed. He may combine, 
 as the plaintiffs have, well-known English words m 
 common use. ... It also appears that the plain- 
 tiffs' paper has been published weekly under that name 
 for many years, . . . that its circulation is large 
 and valuable, and that it was the only police gazette, eo 
 nomine, published in the United States at the time of 
 the publication of the paper complained of by them. 
 . . . From these facts it is apparent that the plain- 
 tiffs have acquired a right connected with the publica- 
 tion of a newspaper called the National Police Gazette, 
 which must be preserved against any fraud attempted 
 to be perpetrated against them."^^ 
 
 In 1870, in the Philadelphia court of common pleas. 
 Judge Paxson said, ''the name of a newspaper is a 
 trademark. As much so as a label stamped upon a 
 bale of muslin. "^^ But this was mere obiter dictum, as 
 the learned court was dealing with the mark and dress 
 of a stove polish. 
 
 Subsequently the superior court of New York City, 
 per Monell, J., said: "I do not understand that the 
 protection which the law affords to 'trademarks,' even 
 assuming the name of a newspaper to be a trademark, 
 goes so far as is claimed in this case. The protection 
 which has been granted to that species of property has 
 never, I believe, been extended over anything that was 
 the subject of a patent or a copyright, but is confined 
 to appropriations of names designating some particular 
 manufacture or business. There can be no such prop- 
 erty in a newspaper except, perhaps, in the name or 
 
 12 — Matsell v. Flanagan, 2 Abb. 13 — Dixon Crucible Co. v. Gug- 
 Pr. N. S. 459; Cox, 367; Seb. 270. genheim, 2 Brewster, 321, Cox, 
 
 559, 576. 

 
 § 73] BOOK TITLES AS TRADEMARKS. 167 
 
 * title of the paper, wliich is the only continuing portion 
 of it. The contents of eacli issue are the composition or 
 creation of the editor or contributors, are varied each 
 day, and when given to the pul)lic all literary propri- 
 etorshij) in them is lost. And the law of trademarks, 
 like the law of copyright, cannot be applied to a work 
 of so fluctuating and fugitive a character. "^^ 
 
 As late as 1881 Sir George Jessel, master of the rolls, 
 said: '*It does not appear to me that there was any 
 invention in the combination of 'Splendid Misery,' any 
 more than there would be in the words 'Miserable Sin- 
 ner,' or anything of that kind. The adoption of the 
 words as the title of a novel might make a trade- 
 mark."^^ 
 
 In 1898 the appellate division of the supreme court of 
 New York said it could not follow the reasoning of 
 counsel ''when he contends that the public, by its short 
 way of referring to the 'Commercial Advertiser,' has 
 given the plaintiff some kind of an undefined trademark 
 in this popular form of speech,— a doctrine which would 
 equally apply to a 'sobriquet' or diminutive; that its 
 unauthorized use by the defendant, whether likely to in- 
 jure the plaintiff or not, should be absolutely enjoined as 
 an invasion of a strict property right. "^® 
 
 While, on the other hand, the United States circuit 
 court for the district of New Jersey had held in 1894 
 that the words "Social Eegister," applied by a pub- 
 lisiiei' to a director}- of a certain locality, containing 
 names of persons resident therein, selected with refer- 
 ence to the personal and social standing of such persons, 
 
 14— Stephens v. De Conto, 7 Rob- fluctuating and fugitive a form, 
 
 ertson, 343; 4 Abb. Pr. N. S. 47: Clayton v. Stone, 2 Paine, 382-392. 
 
 Cox, 442; Seb. 295. The learned 15— Dicks v. Yates, L. R. 18 Ch. 
 
 court cites an opinion holding that D. 76-88. 
 
 a newspaper or price current can- 16 — Commercial Advertiser 
 
 not be copyrighted because the Ass'n v. Haynes. 49 N. Y. Supp. 
 
 term science cannot, with any pro- 938-942. 
 priety, be applied to a work of so
 
 168 HOPKINS ON TRADEMARKS. [ § 73 
 
 ''become a trademark, and are entitled to protection as 
 such."^" 
 
 From our cursory view of the foregoing decisions and 
 dicta it is plainly manifest tliat tlie right to technical 
 trademark in the title of a periodical has been affirmed 
 and denied with some show of reason upon each side. 
 The subject has been ably discussed by Mr. Browne, who 
 concludes that the name so used is a technical trade- 
 mark.^^ In that conclusion we must coincide, and it is 
 well sustained by the reasoning of Mr. Rowland Cox, 
 which we have before quoted.^ '^ But the fact is patent 
 that it is still a mooted question, and that the solicitor 
 attempting to restrain piracy of this kind would better 
 frame his bill upon unfair competition and not upon 
 technical trademark. The New York supreme court, in 
 its decision above referred to, says that "the fundamen- 
 tal doctrine upon which relief in this class of cases is 
 afforded ' ' is that of ' ' misleading or the tendency to mis- 
 lead, with consequent injur}^, actual or probable."-^ 
 
 In a decision of the United States Circuit Court of 
 
 17— Social Register Ass'n v. Stiff, 5 Jur. N. S. 947; Lee v. Ha- 
 
 Howard, 60 Fed. Rep. 270, 271. ley, 5 Ch. App. Cas. 155; Clement 
 
 The same ruling was made in So- v. Maddick, 5 Jur. N. S. 592. 
 
 cial Register Ass'n v. Murphy, 128 And to the same effect see 
 
 Fed. Rep. 116. Snowden v. Noah, Hopkins, Ch. 
 
 18— Browne, Trademarks (2d 347; Bell v. Locke, 8 Paige, 75; 
 
 ed.), sec. 115. As instances of in- Tallcot v. Moore, 6 Hun, 106; Ste- 
 
 junction restraining use of in- phens v. DeConto, 4 Abb. Pr. N. S. 
 
 fringing titles of periodicals, see 47; Matsell v. Flanagan, 2 Abb. 
 
 Edmonds v. Benbow, Seton (3d Pr. N. S. 459; Publishing Co. v. 
 
 ed.), 905; Re Edinburgh Corro^ Dobinson, 82 Fed. Rep. 56; Rich- 
 
 spondent Newspaper, Ct. of Sess. ardson & Boynton Co. v. Richard- 
 
 Cas. 1st ser. I (new ed.), 407 n; son & Morgan Co., 8 N. Y. Supp. 
 
 Cox, Manual, No. 34. 53; Farmers' Loan & Trust Co. v. 
 
 19 — Note to Clemens v. Belford, Farmers' Loan & Trust Co., 1 N. 
 
 14 Fed. Rep. 728; Cox, Manual, Y. Supp. 44; Borthwick v. Even- 
 
 684; ante, § 72. ing Post, L. R. 37 Ch. D. 449; Estes 
 
 20 — Commercial Advertiser v. Leslie (2), 29 Fed. Rep. 91; 
 
 Ass'n V. Haynes, 49 N. Y. Supp. Estes v. Leslie (1), 27 Fed. Rep. 
 
 938-942; citing Bradbury v. Bee- 22; Estes v. Worthington, 31 Fed. 
 
 ton, 39 Law J. Ch. 57; Ingram v. Rep. 154.
 
 § 74] BOOK TITLES AS TRADEMARKS. 169 
 
 Appeals for the Second Circuit, rendered since the fore- 
 going was written, it is distinctly held that the name of 
 a periodical is a technical common-law-trademark.-' 
 
 S 74. Play titles as trademarks.— The principles stated 
 by Judge Wallace in the language which we have here- 
 tofore quoted in reference to book titles as trademarks, 
 *'If literary property could be protected upon the theory 
 that the name by which it is christened is equivalent 
 to a trademark, there would be no necessity for copy- 
 right laws," applies with equal cogency to the name by 
 which a play is designated. But there is this distinc- 
 tion between the titles of plays and the titles of books; 
 the fonner are comprehensive of something more than 
 the mere title of the literary composition which is pro- 
 duced as a play, while the latter are strictly limited to 
 the literary production itself. Practically, in all of the 
 cases involving play titles with which the courts of 
 this country have had to do, there was some scheme 
 of production involved which represented the busi- 
 ness enterprise of the manager, as well as the pre- 
 sentation of the ideas of the author. The ideas of the 
 author again are not entirely embodied in language 
 which reaches the audience in word sung or spoken. 
 The '* business" of the play is sometimes never reduced 
 to writing, and in the majority of cases the production 
 of the brain of a third person, the skilled stage manager, 
 is of the very essence of the play, and is at times the 
 deteniiining factor which makes the play a success. So, 
 in its last analysis, the name of a play is the medium 
 which signifies to the patrons of the theatre three things : 
 the literary production of the playright, the artistic aid 
 of the stage manager, and the moneyed investment as 
 well as the skill in cast selection of the manager. And 
 these three things disregard the accompanying investi- 
 
 21— Gannert v. Rupert, 62 C. C. A. 594, 127 Fed. Rep. 962, revers- 
 ing S. C. 119 Fed. Rep. 221.
 
 170 UOPKINS ON TRADEMARKS. [§ 74 
 
 ture of costumes, scenery, and incidental music which 
 represent the efforts of the musician, the landscape 
 painter, the costumer, and the skilled selector of furni- 
 ture and other accessories. A play title then stands 
 for a kind of personal property which is strictly sui- 
 generis, the distinguishing mark by which the produc- 
 tion is identified to the public before and after the first 
 performance. It is manifest that a play title also car- 
 ries with it a specific and unique form of goodwill to 
 which all of the things which we have enumerated help 
 to contribute. 
 
 The extent to which courts of equity will protect 
 a play from piracy, aside from any question of copy- 
 right, is not yet fully determined. The cases are few in 
 number, but are sufficient to establish the general prin- 
 ciple that the broad doctrine of unfair competition in 
 trade which we have considered in this book may be 
 invoked wherever deception of the public and injury to 
 the complainant will probably result from a refusal of 
 the injunction. This fact is more important because of 
 the difficulty attendant upon making out a case of copy- 
 right infringement where the subject matter involved is 
 a dramatic composition. 
 
 In a case in which "L'Aiglon" was the play involved, 
 and in an opinion in which he refers to that name as 
 being a trademark for the plaintiff's organization. Judge 
 McAdam has said, ''The question, 'What's in a name* 
 has been answered by the courts in many well-considered 
 cases, wherein the exclusive right to a name possessed 
 or owned by a successful business enterprise has been 
 maintained against imitators and wrongdoers who 
 sought, by an unauthorized use, to deceive the public 
 and profit by the wrong. While courts have in some 
 instances refused injunctive relief to protect the use of 
 the title where plays were dissimilar, and the appropria- 
 tion a mere coincidence (Frohman v. Miller, 8 Misc. Eep. 
 379, 29 N. Y. Supp. 1109), they have uniformly enjoined
 
 § 74] BOOK TITLES AS TRADEMARKS. 171 
 
 such use where deception of the public and injury to 
 the plaintiff were likely to follow a refusal to grant 
 equitable aid {Shook v. Wood, 32 Leg. Int. 264; Illtr v. 
 Abrahams, 82 N. Y. 519). "22 Jq a later case the Supreme 
 Court of Illinois affnned a decree of injunction in a case 
 where the plaintiff was the producer of the play ''Sher- 
 lock Holmes" and the defendant subsequently produced 
 a play entitled ''Sherlock Holmes, Detective." In affiiin- 
 ing the decree of injunction, the Supreme Court based 
 the plaintiff's right to equitable relief upon the ground 
 that the names of the respective plays were so similar 
 that the public "would be deceived to believe that the 
 drama of the appellant company was that which the 
 apellee had been producing." The court expressly 
 declined to decide whether or not the plaintiff had a 
 trademark right or property in the words "Sherlock 
 Holmes," basing the relief upon the general rule as to 
 unfair competition, Judge Boggs remarking that 
 "Equity provides a remedy to prevent such unfair and 
 fraudulent competition among business rivals in any 
 and all lines of legitimate trade and business."-^ 
 
 22— Frohman v. Payton, 68 N. Y. Frohman, 202 111. 541, 67 N. E. 
 Supp. 849. Rep. 391, affirming s. c, 103 lU. 
 
 23 — Hopkins Amusement Co. v. App. 613.
 
 CHAPTEE V. 
 
 THE LOSS OF THE RIGHT TO A TRADEMARK'S USE. 
 
 ^ 75. Laches.— There is no laches where a complain- 
 ant is only waiting to get a sufficient quantity of evidence 
 to secure a successful prosecution of the infringer,^ and 
 of course none exists where the complaint has no knowl- 
 edge of the fact of infringement;- and it has been dis- 
 tinctly held by the federal supreme court that an 
 injunction will not generally be refused on the ground 
 of delay alone.^ Following that decision, it was said by 
 Judge Xixon, in the United States circuit court in the 
 district of New Jersey: ''There has been large discus- 
 sion of the question how far laches, in stopping the in- 
 fringement of a trademark, will deprive a complainant 
 of the benefits of a preliminary injunction. But that 
 discussion has been put to rest, so far as this court is 
 concerned, by the recent decision of the supreme court 
 in the case of McLean v. Fleming,^ where it was held 
 that acquiescence of long standing was no bar to an 
 injunction, although it precluded the party acquiescing 
 from any right to an account for past profits.'"^ 
 
 The rule has always been, however, that laches on the 
 part of the owner of a trademark would be a bar 
 
 1 — Cave V. Myers, Seton (4th 3 — McLean v. Fleming, 96 U. S. 
 
 ed.), 238; Lee v. Haley, 22 L. T. 245. 
 
 N. S. 251. 4t— Supra. 
 
 2 — Re Farina, 27 W. R. 456; Seb. 5 — Consolidated Fruit Jar Co. v. 
 
 642; Weldon v. Dick, L. R. 10 Ch. Thomas, Cox, 665. And to the 
 
 D. 247; 39 L. T. N. S. 467; Seb. same effect see La Republique 
 
 638; Taylor v. Carpenter (1), 3 Francaise v. Schultz, 42 C. C. 
 
 Story, 458; Cox, 14; Seb. 78; Tay- A. 233, 102 Fed. Rep. 153; San- 
 
 lor V. Carpenter (2), 2 Wood. & ders v. Jacob, 20 Mo. App. 96; 
 
 M. 1; Cox, 32; 9 L. T. 514; Gilka N. K. Fairbank Co. v. Luckel, King 
 
 V. Mihalovitch, 50 Fed. Rep. 427. & Cake Soap Co. (4), 116 Fed. Rep. 
 
 332, 54 C. C. A. 204. 
 
 172
 
 § 75J LOSS OF RIGHT TO trademark's USE. 173 
 
 to his application foi- a preliminary injunction. Judge 
 Wallace stated the inile as follows: "Laches in prose- 
 cuting infringers has always been recognized as a suffi- 
 cient reason for denying a preliminary injunction; some- 
 times, apparently, by way of discipline to a complainant 
 who has manifested reluctance to burden himself with 
 the expense and vexation of a lawsuit, and delayed legal 
 proceedings until his patience was exhausted. AVhen 
 delay of the owner of a patent or trademark to prose- 
 cute infringers has been of a tendency to mislead the 
 public or the defendant sought to be enjoined into a 
 false security, and a sudden injunction would result 
 injuriously, it ought not to be granted summarily, but 
 the comi)lainaut should be left to his relief at final 
 hearing."" 
 
 In cases of unfair competition, where no technical 
 trademark is involved, a preliminary injunction will be 
 denied where the defendant's goods have been sold 
 openly for many years In the package complained of.'^ 
 
 Laches which prevents recovery in one case, will not 
 be a bar to another action of the same complainant 
 against a subsequent infringer. Thus, in the ''Hunyadi" 
 cases, the complainant, the vendor of a Hungarian min- 
 eral water was denied relief as to the use of the word 
 ''Hunyadi" against the vendor of w^ater from another 
 spring in Hungary, upon the ground of laches, four- 
 teen different Hungarian mineral waters having been 
 marketed in the United States under the name ''Hun- 
 yadi," and the complainant being estopped as to 
 dealers in such Hungarian bitter waters by laches.^ 
 Subsequently an American dealer entered the market 
 with an artificial water to which he applied the mark 
 
 6— Estes V. Worthington, 22 8— Saxlehner v. Nielson, 179 U. 
 
 Fed. Rep. 822. To the same effect, S. 43, 45 L. ed. 77. Same v. Eis- 
 
 see C. O. Burns Co. v. W. F. ner & Mendelson Co., 179 U. S. 19, 
 
 Burns Co., 118 Fed. Rep. 944. 45 L. ed. 60. 
 
 7 — Von Mumm v. Steinmetz, 137 
 Fed. Rep. 168.
 
 17-1 HOPKINS ON TRADEMARKS. [§ 76 
 
 ^'Hunyadi." In affirming a decree granting the injunc- 
 tion, Judge Grosscup said ''appellant offers a manufac- 
 tured water of whose contents the public has no knowl- 
 edge, and at a cost ruinous to the importation of the 
 genuine water. The Supreme Court never meant, in our 
 judgment, to throw around such a competitor, the pro- 
 tection of the estoppel indicated, or expose the public 
 to a device under which they would drink the waters 
 of Lake Michigan, doctored after appellant's recipe, in 
 the belief that they were drinking the natural waters of 
 Hungary'. ' '^ 
 
 §76. Laches and acquiescence distinguished.— 
 
 ^'Laches" and ''acquiescence" are terms frequently used 
 synonymously, or at least without due regard to their 
 respective meanings. "Laches" imports a merely pas- 
 sive, while "acquiescence" implies an active assent.^ ^ 
 The supreme court of California has said, " 'Laches' 
 would strictly seem to imply neglect to do that which 
 ought to have been done; 'acquiescence' a resting satis- 
 fied with or submission to an existing state of things. "^^ 
 "Acquiescence— that is, assent— is tantamount to an 
 agreement. "^ ^ The supreme court of the United States, 
 by Mr. Justice Swayne, has said: "Acquiescence and 
 waiver are always questions of fact. There can be 
 neither without knowledge. The terms import this foun- 
 dation for such action. One cannot waive or acquiesce 
 in a wrong while ignorant that it has been committed. 
 Current suspicion and rumor are not enough. There 
 must be knowledge of facts which will enable the party 
 to take effectual action. "^^ 
 
 9— Thackeray v. Saxlehner, 60 13— Pence v. Langdon, 99 U. S. 
 
 C. C. A. 562, 125 Fed. Rep. 911, 913. 578-581. See also to the same 
 
 10_Wood on Limitations, sec. 62. effect, Allen v. McKeen. 1 Sumn. 
 
 11— Lux V. Haggin, 69 Cal. 255- 276-314; Evans v. Smallcombe, L. 
 
 269. R., 3 H. L. 249; Ramsden v. Dyson, 
 
 12— Matthews v. Murchison, 17 L. R. 1 H. L. 129; Reed v. West, 
 
 Fed. Rep. 760-766. 47 Tex. 240.
 
 §77] LOSS OF RIGHT TO TR.UJEMARK's USE. 175 
 
 §77. Acquiescence.— ''The consent of a manufac- 
 turer to the use or iuiitation of his trademark by another 
 may, perhaj^s, be justly inferred from his knowledge 
 and silence; but such a consent, whether expressed or 
 implied, when purely gratuitous, may certainly be with- 
 drawn; and when implied, it lasts no longer than the 
 silence from which it springs. It is, in reality, no more 
 than a revocable license. The existence of the fact may 
 be a proper subject of inqury in taking an account of 
 profits if such an account shall hereafter be decreed; 
 but even the admission of the fact would furnish no 
 reason for refusing an injunction."^'* This dictum of 
 Judge Duer in Amoskeag Mfg. Co. v. Spear is so com- 
 131-ehensive as to warrant its extended quotation above 
 given. While it was held by Vice-Chancellor Wood that 
 a plaintiff's acquiescence in the defendant's use of his 
 mark for two years after the plaintiff had seen it pub- 
 licly exhibited would disentitle him to relief,^ ^' an in- 
 junction was granted in a case where a dissenting 
 opinion shows that the essential feature of the mark 
 had been used by others than plaintiff with his knowl- 
 edge for more than twenty years.^^ It has been held in 
 a federal circuit court that acquiescence for a time equal 
 to that prescribed in the statute of limitations must be 
 shown.^^ Acquiescence cannot be inferred and it is 
 revocable if it could be.^^ 
 
 14 — Amoskeag Mfg. Co. v. Spear, 17 — Taylor v. Carpenter (2), 2 
 
 2 Sandf. S. C. 599; Cox, 87. The Wood. & M. 1; Cox, 32. But 
 
 withdrawal of gratuitous permis- "laches for even less than the 
 
 sion to use one's name may be statutory period of limitations, 
 
 made at the pleasure of the party aided by other circumstances, will 
 
 granting such permission. McCar- bar a right." Acheson, J., in 
 
 del V. Peck, 28 How. Pr. 120. Prince's Met. Paint Co. v. Prince 
 
 15— Beard v. Turner, 13 L. T. R. Mfg. Co.. 6 C. C. A. 647, 57 Fed. 
 
 iSi. S. 747; Cox, 717. Rep. 938-944. where the plaintiff 
 
 16— Gillott V. Esterbrook, 47 was held to be estopped by eight 
 
 Barb. 455 Cox, 340. Dissent of years' acqtiiescence, 
 
 Ingraham, J. 18 — Gillott v. Esterbrook, supra;
 
 176 HOPKINS ON TRADEMARKS. [§ 78 
 
 ''In England the rule is stringent in trademark cases 
 that lack of diligence in suing deprives the complainant 
 in equity of the right either to an injunction or an ac- 
 count. Our courts are more liberal in this respect. A 
 long lapse of time will not deprive the owner of a trade- 
 mark of an injunction against an infringer, but a reason- 
 able diligence is required of a complainant in asserting 
 his rights, if he would hold a wrong-doer to an account 
 for profits and damages. This rule, however, applies 
 only to those cases where there has been an acquiescence 
 after a knowledge of the infringement is brought home 
 to the complainant."^^ 
 
 § 78. Abandonment.— The consideration of laches and 
 acquiescence leads us naturally to the subject of aban- 
 donment. The first form of abandonment is by disuse of 
 the mark. "That the right to use a trademark may be 
 lost by abandonment or disuse is too clear to need argu- 
 ment or the support of authority.""" But the length of 
 time during which the mark is not used is immaterial 
 except when it is such as, taken in connection with all 
 the circumstances, will show the intention of its owner 
 to abandon it."^ "A man who has a trademark may 
 properly have regard to the state of the market and the 
 demand for the goods; it would be absurd to suppose he 
 lost his trademark by not putting more goods on the 
 market when it was glutted. ' '-- Registration was refused 
 in England where the applicant's mark "Emollio" had 
 not been used by him for eleven years, and his applica- 
 
 Amoskeag Mfg. Co. V. Spear, supra; Laverne v. Hooper, Ind. L. R. 
 
 Christy v. Murphy, 12 How. Pr. 8 Mad. 149; Royal Baking Powder 
 
 77; Cox, 164; Seb. 137; Menen- Co. v. Raymond, 70 Fed. Rep. 376. 
 
 dez V. Holt, 128 U. S. 514. 21— Burt v. Tucker, 178 Mass. 
 
 19— Nixon, J., in Sawyer v. Kel- 493, 59 N. E. Rep. 1111, 52 L. R. A. 
 
 logg, 9 Fed. Rep. 601. 112; Gillett v. Lumsden, 4 Oni. 
 
 20 — Hughes, J., in Blackwell v. Law Rep. 300. 
 
 Dibrell, Fed. Case No. 1475, 3 22— Chitty, J., in Monson v. 
 
 Hughes, 151; 14 Off. Gaz. 633; Boehm, L. R. 2G Ch. D. 398-400; 
 
 Price & Steuart, 39; Seb. 590; Cartmell, 233.
 
 §78] LOSS OF RIGHT TO trademark's USE. 177 
 
 tion was opposed by one who had, in the meantime, reg- 
 istered the word ''KmoUine" as a trademark for articles 
 similar to those upon which the applicant Intended to 
 affix his mark (perfumery).-^ Before the courts will de- 
 clare an abandonment by disuse there must be satisfac- 
 tory proof of intention of abandonment. It has been 
 suggested by Chitty, J., that such intention will be gath- 
 ered from the owner's acts in breaking up the moulds by 
 which the mark is made, and taking the trade-marked 
 article from his price lists.-^ 
 
 It must be borne in mind, in this connection, that the 
 defense of abandonment is not favored by the courts. 
 One judge has said, ''there is something very abhorrent 
 in allowing such a defense to a wrong. "-^ Although as a 
 matter of course a trademark once abandoned may be 
 adopted by another for the same class of merchandise,^*' 
 there must be clear proof of the fact of abandonment,-'^ 
 and it ought to be clearly shown that such other person 
 is adopting the same mark fairly and honestly, and not 
 in an attempt to filch from its original owner the reputa- 
 tion he has obtained for it.-^ What act or acts will 
 constitute an abandonment must be determined by the 
 facts in each particular case. One English decision held 
 that a dismissal of a l)ill for injunction was an abandon- 
 ment of the trademark sought to be protected by the 
 
 The abandonment of names used in connection with 
 particular premises where selling or manufacturing is 
 conducted has led to some apparent conflicts of opinion 
 
 23— Re Grossmith, 6 R. P. C. 26— Menendez v. Holt, 128 U. S. 
 
 180; 60 L. T. N. S. 612; Cartmell, 514; Royal Baking Powder Co. v. 
 
 137. Raymond, 70 Fed. Rep. 376-382. 
 
 24— Monson v. Boehm, L. R. 26 27— Sohl v. Geisendorf, 1 Wil- 
 
 Ch. D. 398-405; Cartmell, 233. son (Ind.), GO; Seb. 367. 
 
 7 25— Woodbury, J., in Taylor v. 28— Royal Baking Powder Co. v. 
 
 ^ Carpenter (2), 2 Wood. & M. 1: Raymond, 70 Fed. Rep. 376-382. 
 
 Cox, 32. 29 — Browne v. Freeman, 12 W. 
 
 R. 305; 4 N. R. 476. 
 
 12
 
 178 HOPKINS ON TRADEMARKS. [§ 78 
 
 among the courts. Careful analysis of the facts will 
 show that there is some semblance of harmony in the 
 rulings. Whether a removal from the premises will con- 
 stitute an abandonment of the use of the name depends 
 on whether the name indicates the building itself, or 
 merely the business conducted therein. Thus, "Booth's 
 Theatre" designated the theatre and not the actor, and 
 upon its sale by Edwin Booth he could not restrain his 
 vendee from the use of the name, as Messrs. Jarrett & 
 Palmer had fully advertised the fact that they were 
 lessees and managers, and no question of fraud could 
 be raised.^"^ As stated by Wallace, J., in Atlantic Mill- 
 ing Co. V. Robinson: ''The right to the exclusive use of 
 a word or symbol as a trademark is inseparable from 
 the right to make and sell the commodity which it has 
 been appropriated to designate as the production or 
 article of the proprietor. It may be abandoned if the 
 business of the proprietor is abandoned. It may be- 
 come identified with the place or establishment where the 
 article is manufactured or sold, to which it has been 
 applied, so as to designate and characterize the article 
 as the production of that place or establishment, rather 
 than of the proprietor. A trademark of this descrip- 
 tion is of no value to the original proprietor because 
 he could not use it without deception, and therefore 
 would not be protected in its exclusive enjoyment. 
 Such a trademark would seem to be an incident to the 
 business of the place or establishment to which it owes 
 its origin, and without which it can have no independ- 
 ent existence. It should be deemed to pass with a 
 transfer of the business because such an implication 
 is consistent with the character of the transaction and 
 the presumable intention of the parties. "^^ 
 
 30— Booth V. Jarrett, 52 How. Dixon Crucible Co. v. Guggen- 
 
 Pr. 169. heim, 3 Am. L. T. 228; Hudson v. 
 
 31— Atlantic Milling Co. v. Rob- Osborne, 39 L. J. Ch. N. S. 79: 
 
 Inson. 20 Fed. Rep. 218; citing Shipwright v. Clements, 19 W. R.
 
 §78] LOSS OF RIGHT TO trademark's USE. 179 
 
 So that the use of the name 'SStiUman" to indicate 
 the cloth product of the Stillman Mills ;^- ''Old Oscar 
 Pepper" to indicate the product of the distiller)^ of 
 that name;'^^ "Osborne House" to designate a liotel 
 first owned by Osborne ;^^ "Tower Palace," designat- 
 ing a building, having a tower, where a clothing busi- 
 ness was conducted,"'"' are all held to be indicative of 
 the premises and abandoned by the owner of the name 
 who sells the premises or removes therefrom. It fol- 
 lows that a mere arbitrary name not designating the 
 locality or building in which a business is transacted 
 will survive a change in the location of the business."*" 
 
 The length of time during which a trademark is not 
 used is, as we have seen, merely a circumstance to be 
 considered with all the other facts in the case in deter- 
 mining whether there was an intention to abandon its 
 use. Thus, defendants have been restrained from using 
 a mark that has lain in disuse for periods of one year,^^ 
 three years,-'*^ four years,'**' nine years,^^ ten years,^^ and 
 even twenty years.^^ The vital question is the intention 
 
 599. See also to the same effect 37 — Lemoine v. Gauton, 2 E. D. 
 
 HaU V. Barrows, 4 DeG, J. & S. Smith, 343; Cox. 142. 
 
 150; Glen & Hall Mfg. Co. v. Hall, 38— Julian v. Hoosier Drill Co., 
 
 61 N. Y. 227-234; Kidd v. Johnson, 75 inj, 408. 
 
 100 U. S. 617; Leather Cloth Co. sq_b^,^ ^. Tucker, 178 Mass. 
 
 V. American Leather Cloth Co., ^gg^ 59 ^ ^ ^^^ ^^^^ 52 L R 
 
 11 Jur. N. S. 513; Ainsworth v. ^ ^^^ 
 
 Walmesley, 44 L. J. 555 
 
 32 — Carmichael v. Latimer, 11 
 R. L 395. 
 
 40— Lazenby v. White, 41 L. .T. 
 
 N. S. 354; Saxlehner v. Eisner & 
 
 Mendelson Co. (3), 179 U. S. 19. 
 
 33— Pepper v. Labrot, 8 Fed. An injunction was refused because 
 
 I^^P- 29. plaintiff delayed action for nine 
 
 34 — Hudson v. Osborne, 39 L. J. years in Amoskeag Co. v. Garner, 
 
 Ch. N. S. 79. 55 Barb. 151. 
 
 35 — Armstrong v. Kleinhaus, 82 41 — Wolfe v. Barnett, 24 La. 
 Ky. 303. Ann. 97. 
 
 36— Dewitt v. Mathey (Ky.), 35 42— Gillott v. Esterbrook, 48 N. 
 S. W. Rep. 1113 (not officially re- Y. 374. 
 ported).
 
 180 HOPKINS ON TR.VDEMARKS. [ § "^ 
 
 of the owner of the mark, and the burden of establishing 
 abandonment lies upon the party who affirms it.^" 
 
 There may be an involuntaiy abandonment of a trade- 
 mark through the fact that, once distinctive, it has 
 ceased to indicate the merchandise of the owner of the 
 mark and has become puhlici juris because it indicates 
 only a peculiar product or method of manufacture. This 
 again arises from the peculiar circumstances of each 
 case. ''What is the test by which a decision is to be 
 arrived at, whether a word which was originally a trade- 
 mark has become publici juris? I think the test must be 
 whether the use of it by other persons is still calculated 
 to deceive the public; whether it may still have the effect 
 of inducing the public to buy goods not made by the orig- 
 inal owner of the trademark as if they were his goods. 
 If the mark has come to be so public and in such univer- 
 sal use that nobody can be deceived by the use of it, or 
 can be induced from the use of it to believe that he is buy- 
 ing the goods of the original trader, it appears to me, 
 however hard to some extent it may appear on the 
 trader, yet practically as the right to a trademark is 
 simply a right to prevent a trader from being cheated 
 by other persons' goods being sold as his goods through 
 the fraudulent use of the trademark, the right to the 
 trademark must be gone." This extract from an opin- 
 ion of Mellish, L. J.,^^ is probably the clearest explana- 
 tion of the cases involving this topic. The cases turn- 
 ing upon this point are many.^'^ 
 
 43— Julian v. Hoosier Drill Co., Ch. 354; Lea v. Millar, Seb. 513; 
 
 78 Ind. 408. This is analogous to Seton (4th ed.), 242; Lea v. Dea- 
 
 the rule that where one sued for kin, Fed. Case No, 8154, 11 
 
 Infringing a trademark sets up a Biss. 23; Re Arbenz, L. R. 35 
 
 prior right to the mark in ques- Ch. D. 248; Neva Stearine Co. 
 
 tion, it is incumbent upon him to v. Howling, 9 Vict. L. R. 98; Sher- 
 
 establich his prior use by satisfac- wood v. Andrews, 5 Am. L. R. N. 
 
 tory evidence. Tetlow v. Tappan, S. 588; Rs Hall, 13 Off. Gaz. 229; 
 
 85 Fed. Rep. 774. Liebig's Extract Co. v. Hanbury, 
 
 44— Ford v. Foster, L. R. 7 Ch. 17 L. T. N. S. 298; Watkins v. 
 
 X>. 611. Landon, 52 Minn. 389-393; 54 N. 
 
 45 — Lazenby v. White, 41 L. .T.
 
 § 78] LOSS OP RIGHT TO TRADEMARK'S USE. 181 
 
 The adoption of a new label or brand is, of course, an 
 abandonment of all the distinctive features of the old 
 label or brand not preserved in the new one."**^ 
 
 The owner of a trademark may by a practice of ship- 
 ping goods bearing the mark to the same consignee, so 
 that it may be held out to or believed by purchasers to 
 indicate some right to the mark in the consignee, lose 
 the exclusive right to its use."*^ 
 
 Tlie fact that a manufacturer uses his name or an 
 additional symbol, such as a coat-of-anns, in connec- 
 tion with the distinctive word, does not deprive him of 
 his trademark right in the distinctive word. Thus the 
 manufacturer of *' Eureka" shirts, which he marked 
 ''R. Ford's Eureka Shirt, London," was awarded an 
 injunction restraining a defendant from the sale of an 
 article marked ''The Eureka Shirt. "^^ The manufac- 
 turers of ''Excelsior White Soft Soap" sought to en- 
 join the makers of "Bustard & Co.'s Excelsior ^Yliite 
 Soft Soap," and upon the motion it was held that their 
 right to injunctive relief was not affected by the fact 
 that the defendants had never used the word except 
 in conjunction with their firm name."*^ 
 
 A manufacturer who uses his trademark in connec- 
 
 W. Rep. 193; 19 L. R. A. 236; Mar- Ward v. Robinson, L. R. 9 Ch. D. 
 
 shall V. Pinkham, 52 Wis. 572; 487. 
 
 Price & Steuart, 497. The mere 48 — Ford v. Foster L. R. 7 Ch. 
 
 fact that a name used as trade- D. 616; L. R. 7 Ch. D. 611; 41 L. 
 
 mark comes into popular use in a J. Ch. 682; 27 L. T. N. S. 219; 20 
 
 descriptive sense does not invali- W. R. 818; Seb. 384. The mere 
 
 date its use as a trademark. Sel- addition of a coat-of-arms to a 
 
 chow V. Baker, 93 N. Y. 59; Cellu- trademark (as registered in Eng- 
 
 loid Mfg. Co. V. Cellonite Mfg. Co., land) is not sufficient to disen- 
 
 32 Fed. Rep. 94; Lawrence Mfg. title the person using the mark to 
 
 Co. V. Tennessee Mfg. Co., 138 U. sue for an injunction. Melachrino 
 
 S. 537-547; Burton v. Stratton, 12 v. Melachrino Cigarette Co., 4 R. 
 
 Fed. Rep. 696. P. C. 215; Cartmell, 223; Ham- 
 
 46 — Manhattan Medicine Co. v. mond v. Brunker, 9 R. P. C. 301 ; 
 
 Wood, 108 U. S. 218; Lea v. Mil- Cartmell, 142. 
 
 lar. Seton (4th ed), 242; Seb. 513. 49— Braham v. Bustard, 1 H. & 
 
 47 — Robinson v. Finlay, and M. 447; 9 L. T. N. S. 199; 11 W.
 
 182 HOPKINS ON TRADEMARKS. [§ 78 
 
 tion with words indicating that his goods are the prod- 
 uct of another maker will lose his right to have the 
 word used as trademark protected. This was held in 
 a case where '"Eton" cigarettes were so put up as to 
 suggest that they were of foreign manufacture.'^'^ But 
 a manufacturer who uses his trademark on goods pre- 
 pared for the jobbing trade, adding to or using there- 
 with the name of the jobber, does not lose his right to 
 the protection of the trademark, for, as said by Judge 
 Colt: ''In doing this no real deceit was practiced upon 
 the public, because the purchaser obtained the same 
 goods which he would have purchased if the name of 
 the jobber had not been upon them.'"^^ In one case it 
 was argued by the defendants that when the plaintiffs 
 furnished their ''Excelsior" stoves to the trade and 
 marked the dealers' names upon the stoves, they 
 thereby permitted the dealer to hold himself out to 
 the public as the manufacturer of the stoves. This was 
 not a successful defense, but the court stood upon the 
 fact that there was "nothing in connection with the 
 names of these dealers to indicate that they are the 
 manufacturers, and there is no evidence that any one 
 ever supposed they were the manufacturers. "^^ 
 
 Advertisements published in the United States by 
 
 R. 1061; 2 N. R. 572; Seb. 226. manufacture by placing upon it 
 
 The same defense was attempted the names of his customers who 
 
 where "Cottolene" was the trade- are engaged in selling it, nor by 
 
 mark and "Cottoleo," with the de- the fact that the consumers know 
 
 fendant's name, the alleged in-' only the name and excellence ot 
 
 fringement. Defendant was en- the article, and neither know nor 
 
 joined. N. K. Fairbank Co. v. care who makes it," Sanborn. J., 
 
 Central Lard Co., 64 Fed. Rep. in Shaver v. Heller & Merz Co., 
 
 133. 108 Fed. Rep. 821-824, 48 C. C. A. 
 
 50 — Wood V. Lambert, L. R. 32 48. To the same effect. City Brew- 
 
 Ch. D. 247, ery Co. v. Powell, L. R. (1897), 
 
 51 — Pike Mfg. Co. v. Cleveland App. Cas. 710, 716; Lichtenstein 
 
 Stone Co., 35 Fed. Rep. 896-898. 'v. Goldsmith, 37 Fed. Rep. 359. 
 
 "One does not lose the good will 52— Sheppard v. Stuart, 13 Phila. 
 
 of his trade in an article of his 117; Price & Steuart, 193.
 
 §78] LOSS OF RIGUT TO TR.VDEMARK's USE. 183 
 
 a corporation having the exclusive sale of certain Hun- 
 garian mineral waters, to the effect that the name 
 under which the waters were sold had become a gen- 
 eral name for all similar waters, and that the corpora- 
 tion would thenceforth distinguish the particular water 
 sold by it by a special trademark, were held not to 
 evidence an abandonment of the original mark which 
 was binding on the owner of the wells; Mr. Justice 
 Brown announcing the following rule "To establish 
 the defense of abandonment it is necessary to show 
 not only acts indicating a practical abandonment, but 
 an actual intent to abandon. Acts which unexplained 
 would be sufficient to establish an abandonment may be 
 answered by showing that there never was an intention 
 to give up and relinquish the right claimed.""^ 
 
 In the same case, the discontinuance of two suits 
 for infringement, brought by the selling corporation, 
 after preliminary injunctions had been obtained, are 
 held by the supreme court not to be binding upon the 
 complainant in the absence of proof that the discon- 
 tinuance was made with the complainant's knowledge 
 and acquiescence.^^ 
 
 There may be a constructive abandonment of specific 
 features of a trademark, arising from a failure to enu- 
 merate such features in securing registration. If the 
 registration shows a claim to a trademark ''more lim- 
 ited in its description than the owner's common-law 
 rights would otherwise be, the owner is bound by such 
 limitation as showing what he really claimed. "^^ Thus, 
 in an application for registration of a trademark, the 
 
 53 — Saxlehner v. Eisner & Men- Rep. 600; Judson v. Malloy, 40 
 
 delson Co.. 179 U. S. 19-31; citing Cal. 299; Hickman v. Link, 116 
 
 Singer Mfg. Co. v. June Mfg. Co., Mo. 123, 22 S. W. Rep. 472. 
 
 163 U. S. 169, 186, 41 L. ed. 118, 54— Saxlehner v. Eisner & Men- 
 
 125, 16 Sup. Ct. Rep. 1002; Moore delson Co., 179 U. S. 19, 34. 
 
 V. Stevenson, 27 Conn. 14; Liver- 55— Hawley, J., in Hennessy v. 
 
 more v. White, 74 Me. 452, 43 Am. Braunschweiger & Co., 89 Fed. Rep.
 
 184 HOPKINS ON TRiVDEMARKS. [§ 78 
 
 failure to claim the letter ''s" as a part or feature 
 thereof was held to be an abandonment of that feature 
 of the mark.^^ 
 
 A person who acquires a patent covering a manufac- 
 tured article known by a trademark, may, during the 
 life of the patent, enjoin an infringer even though he 
 has ceased manufacturing the patented article.'^'^ 
 
 664-668; citing Kohler Mfg. Co. v. v. Diamond Steel Co., 85 Fed. Rep. 
 
 Beeshore, 8 C. C. A. 215; 59 Fed. 637, 
 
 Rep. 572; Richter v. Reynolds, 8 57 — Janney v. Pan-Coast Ven- 
 
 C. C. A. 220; 59 Fed. Rep. 577. tilator Mfg. Co., 128 Fed. Rep. 121. 
 56— Pittsburgh Crushed Steel Co.
 
 CHAPTER VI. 
 
 GOODWILL. 
 
 § 79. Defined.— Goodwill, because of the various 
 forms ill which it exists, is difficult of definition. It 
 may be personal, in which event it is the result of the 
 labor and efforts of the person to whom it belongs and 
 survives a change of locality. It may be local, in 
 which event the personal efforts of those who have 
 created or assisted in creating it have so identified it 
 with the location that it adheres thereto and does not 
 attach to a business subsequently established elsewhere 
 by the same persons. Or, in the case of local goodwill, 
 the goodwill may have largely had its origin in the 
 natural advantages of the locality before any personal 
 exertions have been expended upon it; as, for example, 
 a location upon a water front peculiarly accessible and 
 desirable as a location for the erection of a grain eleva- 
 tor, ship yard, pier or warehouse, where there exists 
 a natural advantage of site before human enterprise 
 erects the elevator or other structure. The goodwill 
 which then arises consists of three things, the natural 
 advantages of the site, the erection of a suitable build- 
 ing or structure with its proper mechanical equipment, 
 and, finally, the good reputation that results from skil- 
 ful, enterprising, and honest management of the busi- 
 ness. The definitions of goodwill, therefore, must be 
 read in the light of these distinctions. 
 
 ''Goodwill is a modem but important growth of the 
 law, not mentioned by some of the early writers, but 
 given great prominence at the present time."^ Mr. 
 
 1— Vann, J., in People v. Rob- Rep. 685; 45 L. R. A. 126. 
 erts, 159 N. Y. 70-80; 53 N. E. 
 
 185
 
 186 
 
 liOPKINS ON TRADEMARKS. 
 
 :§79 
 
 Justice Story has defined goodwill as "the advantage 
 or benefit which is acquired by an establishment be- 
 yond the mere value of the capital, stock, funds, or 
 propeiiy employed therein, in consequence of the gen- 
 eral public patronage and encouragement which it re- 
 ceives from constant or habitual customers, on account 
 of its local position or common celebrity, or reputation 
 for skill or affluence, or punctuality, or from other acci- 
 dental circumstances or necessities, or even from an- 
 cient partialities or prejudices."- 
 
 It would be very difficult, if indeed possible, to frame 
 a more accurate and comprehensive definition of local 
 goodwill. This one, as given, has been expressly and 
 in liaec verba adopted by the supreme court of the 
 United States, Mr. Chief Justice Fuller prefacing his 
 use of it by saying "there is difficulty in deciding ac- 
 curately what is included under the tenn."^ 
 
 2 — story on Partnership, sec. 99. 
 
 3 — Metropolitan Bank v. St. 
 Louis Dispatch Co., 149 U. S. 436- 
 446, "It is the probability that 
 the business will continue in the 
 future as in the past, adding to the 
 profits of the concern and contrib- 
 uting to the means of meeting its 
 engagements as they come in." 
 Sanderson, J., in Bell v. Ellis, 33 
 Cal. 620-625. 
 
 "Goodwill was defined by Lord 
 Eldon in Cruttwell v. Lye, 17 Ves. 
 335-346, to be 'nothing more than 
 the probability that the old cus- 
 tomers will resort to the old 
 place;' but Vice-Chancellor Wood, 
 in Churton v. Douglas, Johnson, 
 174-188, says it would be taking 
 too narrow a view of what is 
 there laid down by Lord Eldon to 
 confine it to that, but that it must 
 mean every positive advantage 
 that has been acquired by the old 
 
 firm in the progress of its busi- 
 ness, whether connected with the 
 premises in which the business 
 was previously carried on, or with 
 the name of the late firm, or with 
 any other matter carrying with it 
 the benefit of the business." Mr. 
 Chief Justice Fuller in Menendez 
 V. Holt, 128 U. S. 514-522. 
 
 "The goodwill of an established 
 business, which is a common sub- 
 ject of contract, is nothing but the 
 chance of being able to keep the 
 business which has been estab- 
 lished." Wallace, J., in Barber v. 
 Connecticut Mutual Life Ins. Co., 
 15 Fed. Rep. 312, 313. 
 
 "It is property of a very peculiar 
 and exceptional character. It is 
 intangible property which, in the 
 nature of things, can have no ex- 
 istence apart from a business of 
 Kome sort that has been estab- 
 lished and carried on at a partiC'
 
 §80] 
 
 GOODWILL. 
 
 187 
 
 §80. In particular cases.— "As applied to a news- 
 paper, the goodwill usually attaches to its name rather 
 than to the place of publication. The probability of the 
 title continuing to attract custom in the way of circula- 
 tion and advertising patronage, gives a value which 
 
 ular place." Thayer, J., in Metro- 
 politan Bank v. St. Louis Dispatch 
 Co., 36 Fed. Rep. 722-724. 
 
 "The goodwill of a business com- 
 prises those advantages which may 
 inure to the purchaser from hold- 
 ing himself out to the public as 
 succeeding to an enterprise which 
 has been identified in the past 
 with the name and repute of his 
 predecessor." Wallace, J., in 
 Knoedler v. Boussod, 47 Fed. Rep. 
 465, 466. This definition was ap- 
 proved on appeal. Knoedler v. 
 Glaenzer, 55 Fed. Rep. 895-899. 
 
 "Goodwill has been defined as 
 'all that good disposition which 
 customers entertain toward the 
 house or business identified by the 
 particular name or firm, and 
 which may induce them to con- 
 tinue giving their custom to it." 
 There is nothing marvelous or 
 mysterious about it. When an in- 
 dividual or a firm or a corporation 
 has gone on for an unbroken 
 series of years conducting a par- 
 ticular business, and has been so 
 scrupulous in fulfilling every obli- 
 gation, so careful in maintaining 
 the standard of goods dealt in, so 
 absolutely honest and fair in all 
 business dealings that customers 
 of the concern have become con- 
 vinced that their experience in the 
 future will be as satisfactory as it 
 has been in the past, while such 
 customers' good report of their 
 own experience tends continually 
 
 to bring new customers to the 
 same concern, there has been pro- 
 duced an element of value quite 
 as important — in some cases, per- 
 haps, far more important — than 
 the plant or machinery with which 
 the business is carried on. That 
 it is property is abundantly 
 settled by authority, and, indeed, 
 is not disputed. That in some cases 
 it may be very valuable property 
 is manifest." Lacombe, J., in 
 Washburn v. National Wall Paper 
 Co., 81 Fed. Rep. 17-20. 
 
 "Goodwill has been defined by 
 this court to be 'the favor which 
 the management of a business 
 wins from the public, and the 
 probability that old customers will 
 continue their patronage.' " Mc- 
 Grath, J., in Williams v. Farrand, 
 88 Mich. 473-477. 
 
 "There is considerable difficulty 
 in defining accurately what is in- 
 cluded under this term goodwill; 
 it seems to be that species of con- 
 nection in trade which induces cus- 
 tomers to deal with a particular 
 firm. It varies almost in every 
 case, but it is a matter distinctly 
 appreciable which may be pre- 
 served (at least to some extent), 
 if the business be sold as a going 
 concern, but which is wholly lost 
 if the concern is wound up, its lia- 
 bilities discharged, and its assets 
 got in and distributed." Sir John 
 Romilly, M. R., in Wedderburn v. 
 Wedderburn, 22 Beavan, 84-104
 
 188 
 
 HOPKINS ON TRADEMARKS. 
 
 [§80 
 
 may be protected and disposed of and constitutes 
 property.""* 
 
 Goodwill is an appurtenant of every form of business 
 which relies directly upon public favor. We find in the 
 books cases in which the existence of a valuable good- 
 will is found as appurtenant to a wide range of mercan- 
 tile pursuits; as, for example, in the business of flour 
 and grain merchants,-^ the manufacture of patent medi- 
 cines,*^ and of feiTO plates and picture frames,^ the busi- 
 ness of a stage-line,^ a livery-stable,^ a milk-route,^ "^ a 
 drinking saloon,'^ or where the owners of the goodwill 
 were bankers,^- bakers,^ ^ glass-stainers,^-' haberdash- 
 ers,'^ glass-blowers,'^ brewers,'" hardware dealers,'* 
 tailors,"^ cheesemongers,^*^ provision merchants,^' manu- 
 
 4 — Metropolitan Bank v. St. 
 Louis Dispatch Co., 149 U. S. 436- 
 446; affirming s. c, 36 Fed. Rep. 
 722. To tlie same effect see Porter 
 V. Gorman, 65 Ga. 11; Dayton v. 
 Wilkes, 17 How. Pr. 510. 
 
 The goodwill and name of a 
 newspaper may attach to the print- 
 ing plant, so as to be vested in the 
 lessee of the plant. Lane v. 
 Smythe, 46 N. J. Eq. 443-454. 
 
 5— Menendez v. Holt, 128 U. S. 
 514-522. 
 
 6 — Brown Chemical Co. v. Meyer, 
 31 Fed. Rep. 453; s. c, 139 U. S. 
 540. 
 
 7 — Dean v. Emerson, 102 Mass. 
 480. 
 
 8— Pierce v. Fuller, 8 Mass. 228. 
 
 9 — Herbert v. Dupaty, 42 La. 
 Ann. 343. 
 
 10— Munsey v. Butterfleld, 133 
 Mass. 492. 
 
 11— Howard v. Taylor, 90 Ala. 
 241. 
 
 12— Smith V. Everett, 27 Bea- 
 van, 446. 
 
 13— Costello V. Eddy, 12 N. Y. 
 Supp. 236. 
 
 14— Scott V. Rowland, 20 W. R. 
 208. 
 
 15— Re Randall's Estate, 8 N. Y. 
 Supp. 652. 
 
 16 — Featherstonhaugh v. Fen- 
 wick, 17 Ves. 298. 
 
 17— Hall V. Hall, 20 Beavan, 139. 
 
 18 — Thompson v. Andrus, 73 
 Mich. 551. 
 
 19 — Parsons v. Hayward, 31 L. 
 J. Ch. 666. 
 
 20— Hudson v. Osborne, 39 L. J. 
 Ch. 79. 
 
 21— Scott V. Mackintosh, 1 V. & 
 B. 503. 
 
 22— Turner v. Major, 3 Giff. 442. 
 
 23 — Armstrong v. Bitner, 71 Md. 
 118; Thompson v. Winnebago 
 County, 48 Iowa, 155. 
 
 24 — Macdonald v. Richardson, 1 
 Giff. 81. 
 
 25— Morris v. Moss, 25 L. J. Ch. 
 194. 
 
 26 — Potter v. Commissioners of 
 Inland Revenue, 10 Ex. 147.
 
 § 80] GOODWILL. 189 
 
 facturing cliemists,^^ real estate and fire insurance 
 agents,-^ commission agents,^^ mercers,-^ paper-mak- 
 ers,-'^ pencil-makei-s,-" liotel or public-house keepers,'-^** 
 whisky merchants,-"-* dyers,^*' dealers in works of art 
 and artists' materials,'" dealers in boots and shoes,''- 
 tobacco brokers,'''^ hide dealers,''^ snuff makers,-'"' uphol- 
 sterers,"-" iron masters,-''^ dealers in seeds, grains and 
 plants,^^ carriers,^'-* milliners ;^*^ and as we will see else- 
 where, physicians, solicitors and attorneys may have a 
 vendible goodwill. 
 
 It is patent that a goodwill may be created in con- 
 nection with any business, enterprise, occupation or 
 profession. The older cases exjTressly denied the exist- 
 ence of a goodwill which could be the subject of sale, 
 in connection with the learned professions. Thus, Lord 
 Chancellor Chelmsford, as recently as 1858, said: "The 
 term goodwill seems wholly inapplicable to the business 
 of a solicitor, which has no local existence, but is en- 
 tirely personal, depending upon the trust and confi- 
 dence which persons may repose in his integrity and 
 ability to conduct their legal affairs. "^^ 
 
 27 — Banks v. Gibson, 34 Beavan, 34 — Goodman v. Henderson, 58 
 
 566. Ga. 567. 
 
 28— Spratt v. Jeffery, 10 B. & C. 35 — Hammond v. Douglas, 5 Ves. 
 
 249; Lashus v. Chamberlain, G 539. 
 
 Utah, 385; Elliott's Appeal, 60 Pa. 36 — Chissum v. Dewes, 5 Russ. 
 
 St. 161; Musselman & Clarkson's 29. 
 
 Appeal, 62 Pa. St. 81. 37— Hall v. Barrows, 4 DeG. I. 
 
 29— Kidd V. Johnson, 100 U. S. & S. 150. 
 
 617. 38— Iowa Seed Co. v. Dorr, 70 
 
 30— Bryson v. Whitehead, 1 S. la. 481. 
 
 & S. 74. 39— Cruttwell v. Lye, 17 Ves. 
 
 31— Knoedler v. Boussod, 47 Fed. 335. 
 
 Rep. 465; Knoedler v. Glaenzer, 40— Shackle v. Baker, 14 Ves. 
 
 55 Fed. Rep. 895. 468. 
 
 32— Curtis v. Gokey, 68 N. Y. 41— Auten v. Boys, 2 DeGex & 
 
 300. Jones, 626-636. And to the same 
 
 33 — Davies v. Hodgson, 25 Bea- eCfect see Sheldon v. Houghton, 5 
 
 van, 177. Blatchf. 285, 291, Fed. Case No.
 
 190 HOPKINS ON TRADEMARKS. [§ 80 
 
 That tliei-e is good reasoning in this dictum cannot be 
 denied. In a case of later date, in Scotland, it was said 
 ''there is truly no such thing as goodwill in the case of 
 a business carried on by a professional man, such as a 
 physician, surgeon, or law agent, whose success depends 
 entirely upon his own personal skill. It is quite differ- 
 ent in the case of a trade or manufacture, where the 
 employer may have the possession of patents or trade 
 seci^ets, or may, by long exercise of his trade or manu- 
 facture in some particular locality, have drawn together 
 skilled artisans and attracted the custom of a district 
 to his establishment. In such a case it is not the indi- 
 vidual skill of the employer, but the reputation which 
 his establishment has acquired, which creates that in- 
 corporeal, but frequently valuable, estate known as the 
 'goodwill' of a trade. But there is no such thing in 
 the case of a professional man. His business dies with 
 him, and the man who comes after him in the district 
 must depend for success upon his own exertions. It is 
 quite true that such businesses are occasionally sold; 
 but what is thus sold in case of a living professional 
 man retiring from business is truly the personal recom- 
 mendation which the seller gives to his former clients 
 or patients in favor of his successor, coupled with the 
 predecessor's own retirement from business. But where 
 the physician or law agent is dead, nothing of the kind 
 can take place. He has been removed by death from 
 all possibility of competing with the new doctor or the 
 new solicitor, and his voice being forever silenced, he 
 cannot give any recommendation to his clients or 
 patients. "^2 
 
 12,748; Graver v. Acme Harvester has been held that the goodwill 
 
 Co., 209 111. 483, 70 N. E. Rep. 1047, of an attorney was not a subject of 
 
 affirming Acme Harvester Co. v. administration. Spice v. James, 
 
 Craver, 110 111. App. 413. Seb. 46; Arundell v. Bell, 52 L. J. 
 
 42— Lord Curriehill in Bain v. Ch. 537. 
 
 Munro, 15 Scot. L. Rep. 260. It In an early case, however, it
 
 §81. 
 
 GOODWILL. 
 
 191 
 
 While the courts have, for the reasons stated, looked 
 with disfavor upon executory contracts for the sale of 
 the goodwill of a i^rofessional man's practice, and have 
 refused to decree specific performance under such con- 
 tracts," still when the sale is complete and the contract 
 partly executed, its terms will he enforced.'^ Thus 
 where a solicitor retired, pennitting his partner to con- 
 tinue the use of the firm name, in consideration of an 
 annuity to be paid him, and the continuing partner de- 
 faulted in the payment of the annuity, the contract was 
 specifically enforced.^-"' 
 
 In the United States there have been frequent in- 
 stances of the sale of the goodwill of a medical practi- 
 tioner, and contracts for such sales have been uniformly 
 held good.^" 
 
 §81. As a subject of sale.— "The goodwill of a 
 trade is a subject of value and price. It may be sold. 
 
 was held that a contract entered 
 into by a practicing attorney to 
 relinquish practice, recommend his 
 clients to his successor, that he 
 would not practice within certain 
 limits, and would permit the use 
 of his name in the first name of 
 his successor for a certain period, 
 was good in law. (1803) Bunn v. 
 Guy, 4 East, 190. And in a simi- 
 lar case, where a solicitor sold his 
 practice and agreed not to prac- 
 tice in Great Britain for twenty 
 years. Lord Langdale held the 
 contract valid and binding on the 
 vendor, and he was enjoined from 
 attempting to resume his practice 
 in Great Britain during the speci- 
 fied time. (1841) Whittaker v. 
 Howe, 3 Beavan, 383. 
 
 But the courts have refused to 
 decree specific performance of a 
 contract for the sale of an attor- 
 ney's practice. Bozon v. Farlow, 1 
 Mer. 459: Seb. 22; Thornbury v. 
 
 Bevill, 1 Y. & C. Ch. 554; 6 Jur. 
 407; Seb. 71. 
 
 And where a member of a firm 
 of surgeons died, it was held that 
 the survivor could not be obliged 
 to sell the goodwill of the prac- 
 tice for the joint benefit of him- 
 self and his deceased partner's 
 estate, Vice-Chancellor Leach re- 
 marking that "such partnerships 
 are very different from commer- 
 cial partnerships." Farr v. Pearce, 
 3 Madd. 74. 
 
 43 — See last note. 
 
 44 — Hanna v. Andrews, 50 la. 
 462; Sraalley v. Greene, 52 la. 241. 
 
 45— Aubin v. Holt, 2 K. & J. 66. 
 
 46 — Webster v. Williams, 62 
 Ark. 101; 34 S. W. Rep. 537 
 Bradbury v. Barden, 35 Conn. 577 
 Martin v. Murphy, 129 Ind. 464 
 Pickett V. Green, 120 Ind. 584 
 Hoyt V. Holly, 39 Conn. 326; Gil 
 man v. Dwight, 13 Gray, 356 
 Dwight V. Hamilton, 113 Mass
 
 192 HOPKINS ON TRADEMARKS. [§81 
 
 bequeathed, or become assets in the hands of the per- 
 sonal representative of a ti'ader,"'*^ or it may be mort- 
 gaged.^^ 
 
 It may be of greater value than the stock of goods or 
 i^lant of machinery with which the business is carried 
 on,"*^ or it may attach to the mere name of a publication 
 and have a definite value apart from and in no wise de- 
 l^endent upon any tangible property.^^ 
 
 It cannot be sold, by a judicial decree or otherwise, 
 apart from the business with which it is connected.^^ 
 
 It may be given, together with the business with 
 which it is connected, in payment for stock in a corpo- 
 ration, so that stock issued solely for such goodwill 
 will, to the extent of its value, be issued for ''property 
 actually received" within the meaning of section 42 of 
 the stock corporation law of the state of New York.^^ 
 The goodwill of a domestic corporation is property 
 which is taxable as part of its capital stock.^^ That of 
 a foreign corporation is liable to taxation ''at the place 
 where it has a market value. "^^ 
 
 175; Warfield v. Booth, 33 Md. 63; 47— Tindal, C. J., in Hitchcock v. 
 
 Miller v. Keeler, 9 Pa. Co. Ct. R. Coker, 6 Ad. & E. 428-454. 
 
 274; Butler v. Burleson, 16 Vt. 48 — Metropolitan National Bank 
 
 176; Tichenor v. Newman, 186 111. v. St. Louis Dispatch Co., 36 F<,d. 
 
 264, 57 N. E. Rep. 826. Rep. 722, 724. 
 
 But, to the contrary, see Man- 49 — Washburn v. National Wall 
 
 deville v. Harman, 42 N. J. Eq. 185. Paper Co., 81 Fed. Rep. 17-20. 
 
 In this case the covenant was as 50 — Metropolitan Bank v. St. 
 
 follows: "In consideration of this Louis Dispatch Co., 149 U. S. 436- 
 
 contract, made with him by the 446; Boon v. Moss, 70 N. Y. 465. 
 
 said Mandeville, the said Harman 51 — Robertson v. Quiddington, 
 
 hereby covenants and agrees not 28 Beavan, 529; Metropolitan Na- 
 
 to engage in the practice of medi- tional Bank v. St. Louis Dispatch 
 
 cine or surgery in the city of Co., 36 Fed. Rep. 722-724; s. c, 149 
 
 Newark at any time hereafter." U. S. 436-446. 
 
 The court held that the law was 52 — Washburn v. National Wall 
 
 unsettled as to whether such a Paper Co., 81 Fed. Rep. 17. 
 
 contract was or was not void as in 53 — Matter of Hondayer, 150 N. 
 
 restraint of trade, and therefore Y. 37. 
 
 denied the preliminary injunction 54 — People v. Roberts, 159 N. Y. 
 
 sought for. 70; 53 N. E. Rep. 685.
 
 §81] GOODWILL. 193 
 
 A stockholder (holding less than all of its stock) 
 cannot transfer the goodwill of a coq:)oration.^^ 
 
 It is clear that the goodwill of a i)rofessional man 
 cannot be made the subject of involutary sale. In the 
 language of the supreme court of Tennessee, "certainly 
 there can be no forced sale or transfer in invitum of 
 such (professional) goodwill so far as it is based upon 
 professional reputation and standing, such as arises 
 from the skill of physicians, dentists, attoraeys, etc., 
 whatever may be done as to such goodwill as arises out 
 of location."^® 
 
 It must be remembered that the trademarks and the 
 goodwill of a business are inseparable. "We have seen 
 elsewhere that a trademark can have no existence in 
 gross. It is strictly appurtenant to the goodwill of the 
 business in which it is used.^'^ And so it has been said 
 of goodwill that ** while it is not necessarily local, it is 
 usually to a great extent, and must of necessity, be in- 
 cident to a place, an established business, or a name 
 known to the trade. "^^ 
 
 In a conveyance of goodwill, however, apt words 
 should be employed. Thus it has been held that the 
 goodwill was not covered by a clause in a contract of 
 partnership relating to the partnership ** property, 
 credits and effects," or ''stock in trade and effects. "^^ 
 And a similar holding has been made in regard to the 
 words ''premises, stock in trade, etc.,"*^*^ as well as 
 
 55— Spring Valley Water Works Wltthaus v. Braun, 44 Md. 303; 
 
 V. Schottler, 62 Cal. 69, 118. Hoxie v. Chaney. 143 Mass. 592; 10 
 
 56— Wilkes, J., in Slack v. Sud- N. E. Rep. 713; Russia Cement 
 
 doth. 102 Tenn, 375. Co. v. Le Page. 147 Mass. 206, 17 N 
 
 57 — "As an abstract right, apart E. Rep. 304. 
 
 from the article manufactured, a 58 — Vann, J., in People v. Rob 
 
 trademark cannot be sold, the rea- erts, 159 N. Y. 70-83; 53 N. E. Rep 
 
 son being that such transfer would 685; 45 L. R. A. 126. 
 
 be a fraud upon the public." Colt, 59— Hall v. Hall, 20 Beavan. 139 
 
 J., in Morgan v. Rogers, 19 Fed. 60 — Burfield v. Rouch, 31 Bea 
 
 Rep. 596. And to same effect, van, 241. 
 13
 
 194 HOPKINS ON TRADEMARKS. [§81 
 
 where the words "estate and effects" were used in 
 partnership articles.^^ 
 
 On the other hand, Lord Westbury construed the 
 words, ''stock belonging to the partnership," to in- 
 clude the goodwill,**- and other eminent judges have 
 held goodwill to be included in the words ''moneys, 
 stocks in trade, debts, effects and things, "^^ and "prop- 
 erty and effects,"^'* while Vice-Chancellor Malins said: 
 "The sale of a business is a sale of the goodwill. It is 
 not necessary that the word 'goodwill' should be men- 
 tioned. ... In the sale of a business a trademark 
 passes, whether specially mentioned or not," He ac- 
 cordingly held that goodwill was included in an assign- 
 ment that conveyed all the assignor's interest in the 
 partnership premises and effects, without specifically 
 referring to the goodwill.^^ In a suit for the specific 
 perfonnance of a contract for the purchase of a share 
 in a business, in which the expression "goodwill, etc." 
 was employed, Lord Eomilly was of opinion that "these 
 words are connected together, and unite such other 
 things as are necessarily connected with and belong to 
 the goodwill, many of which are easily pointed out; for 
 instance, the use of trademarks. . . . All these 
 would be included in the words et cetera, and would be 
 included in the conveyance.'"**' 
 
 The words "business connections and patronage" 
 have been held to convey the goodwill."" 
 
 In this connection it is to be noted that there are 
 two general classes of goodwill— general and local. The 
 
 61 Steuart v. Gladstone, L. R. entire assets of a business does 
 
 10 Ch. D. 646. not necessarily include the good- 
 
 62 Hall V. Barrows, 4 DeG. J. will. Santa Fe Electric Co. v. 
 
 ^ g 150 Hitchcock (New Mex.), 50 Pac. 
 
 63— Rolt V. Bulmer, Seb. 614. 332. 
 
 64 Reynolds v. Bullock, 47 L. J. 66— Cooper v. Hood, 26 Beavan, 
 
 Ch. 773. 
 
 29c 
 
 65— Shipwright v. Clements, 19 67— Kellog v. Totten, 16 Abb 
 W. R. 599. But a mortgage of the Pr. 35.
 
 § 82] GOODWILL. 195 
 
 t 
 
 distinction is well-drawn in an English case, as fol- 
 lows: "In some classes of business, when the trade has 
 long been carried on in a profitable manner in a particu- 
 lar house, and a new tenant comes in and continues to 
 carry on the same business there, it is found by expe- 
 rience that many, if not all, of the customers resort 
 there as before. This is found so regularly to happen 
 that it has become usual to pay a money value for it, 
 which is commonly called 'goodwill.' It may be that 
 there may be a species of goodwill which may be the 
 subject of bargain and sale, although not dependent on 
 the business being carried on in any particular place; 
 for instance, in the case of what are called 'quack- 
 medicines.' But when we come to speak of the good- 
 will of a public-house, it is obvious that it is a thing 
 which is attached to a locality."^® In accordance with 
 this rule, whenever the goodwill is local, in the sense 
 of being attached to a particular house or store, it will 
 pass with a sale of the lease of the trading premises,"^ 
 or the sale of a public house,"^ or even a tailoring estab- 
 lishment.'^^ 
 
 § 82. Goodwill subject to proceedings in eminent 
 domain.— Where the goodwill of a business transacted 
 on particular premises has been injured by the invasion 
 of the realty in eminent domain proceedings, the Mas- 
 sachusetts court has said that such goodwill of a lessee 
 or owner ''is not property for which damages can be 
 included, and is to be considered only so far as it tends 
 to embrace the market value of the estate that is in- 
 jured. "'^^ 
 
 68— Llewellyn v. Rutherford, L. Ch. D. 226; Elliott's Appeal, 60 
 
 R. 10 C. P. 456. Pa St. 161. 
 
 69 — Daugherty v. Van Nostrand, 71 — Parsons v. Hay ward, 31 
 
 1 Hoff. Ch. (N. Y.) 68; Williams Beavan, 199; Chittenden v. Wit- 
 
 V. Wilson, 4 Sandf. Ch. 379. beck, 50 Mich. 401-421. 
 
 70 — Ex parte Punnett, L. R. 16 72 — Edmonds v. Boston, 108 Mass. 
 
 549.
 
 196 HOPKINS ON TRADEMARKS. [§83 
 
 § 83. Goodwill in its relation to firm and other 
 names.— While the unity existing between goodwill and 
 trademarks is clearly defined, the subject of trade- 
 names or firm-names in their relation to goodwill is 
 attended with some difficulty. The general rule has 
 been well stated by Vice-Chancellor Wood, as follows: 
 *'The name of a firm is a very important part of the 
 goodwill of the business can-ied on by the firm. A per- 
 son says: 'I have always bought good articles at such 
 a house of business; I know it by that name, and I send 
 to the house of business identified by that name for that 
 purpose.' There are cases every day in this court with 
 reference to the use of the name of a particular firm, 
 connected generally, no doubt, with the question of 
 trademark. But the question of trademark is in fact 
 the same question. The firm stamps its name on the 
 articles. It stamps the name of the firm which is car- 
 rying on the business on each article, as a proof that 
 they emanate from the firm; and it becomes the known 
 firm to which applications are made, just as much as 
 when a man enters a shop in a particular locality. And 
 when you are parting with the goodwill of a business, 
 you mean to part with all that good disposition which 
 customers entertain towards the house of business iden- 
 tified by the particular name or firm, and which may 
 induce them to continue giving their custom to it. You 
 cannot put it anything short of that. That the name 
 is an important part of the goodwill of a business is 
 obvious, when we consider that there are at this 
 moment large banking firms, and brewing firms, and 
 others, in this metropolis, which do not contain a single 
 member of the individual name exposed in the firm."^* 
 This dictum, however, is flatly opposed to the rulings of 
 the American courts, that the sale of the goodwill of a 
 business carries with it no right to the use of the ven- 
 
 73 — Churton v. Douglas, Johns. 174.
 
 § 84] GOODWILL. 197 
 
 dor's name as the name of the establishment/^ al- 
 though the purcliaser may properly advertise himself 
 as being "successor to" his vendor J"' And the later 
 English cases indicate that the rule has been somewhat 
 modified in England, Justice Stirling saying, "the de- 
 fendant is entitled to use the plaintiff's name in the 
 business so long and so far as he does not by so doing 
 expose him to any liability, but no further."^*' The 
 American courts have very properly gone to the length 
 of holding that, upon the withdrawal of a partner, the 
 remaining partners w411 be enjoined from continuing 
 the use of a firm name which indicates that the with- 
 drawing partner is still a member of the firm.'^^ Where 
 the name is not a proper name, its subsequent use by 
 the vendor of the goodwill will of course be enjoined."^* 
 
 § 84. Rights of vendor.— The vendor of the goodwill 
 of a business may, in the absence of any agreement to 
 the contrary, re-engage in a competitive business.'^^ 
 
 As said by Chief Justice Bigelow in the supreme 
 court of Massachusetts: "Whenever such is the intent 
 of the parties, it is carried into effect by an express 
 stipulation, which, if not in undue restraint of trade, 
 may be valid and binding. But we know of no case 
 where any such agreement has been raised by mere im- 
 plication, arising from the sale of the goodwill of a 
 person's trade, in connection with a particular place 
 of business where it has been carried on."^° 
 
 74 — Knoedler v. Glaenzer, 55 79 — Hoxie v. Chaney, 143 Mass. 
 
 Fed. Rep. 895; Reeves v. Denicke, 592-596; 10 N. E. Rep. 713, 58 Am. 
 
 12 Abb. Pr. N. S. 92. Rep. 149; Trego v. Hunt, 65 L. J. 
 
 75 — Knoedler v. Glaenzer, 55 Ch. 1. 
 
 Red. Rep. 895; Weed v. Peterson, 80 — Bassett v. Percival, 87 Mass. 
 
 12 Abb. Pr. N. S. 178. (5 Allen), 345-347; and to the 
 
 76 — Thynne v. Shove, L. R. same effect see Porter v. Gorman, 
 
 (1890) 45 Ch. D. 577-582. 65 Ga. 11; Knoedler v. Boussod! 
 
 77 — McGowan v. McGowan, 22 47 Fed. Rep. 465; Knoedler v. 
 
 Ohio St. 370. Glaenzer, 55 Fed. Rep. 895; Berga- 
 
 78 — Drake v. Dodsworth, 4 Kas. mini v. Bastien, 35 La. Ann. 60, 
 
 159. 48 Am. Rep. 216; White v. Jones,
 
 198 HOPKINS ON TRADEMARKS. [§ 84 
 
 In a later case involving the sale of the goodwill of 
 a medical practice, the same court distinguished the 
 facts from those in the case quoted from, and held that 
 a sale of this kind of goodwill contained by implication 
 a covenant not to re-engage in the medical practice in 
 the same locality /^^ 
 
 An English writer has said, ^'As the decisions at 
 present stand, the title to this section is to some extent 
 misleading, inasmuch as the legal position of the as- 
 signor of a business, after he has parted with it, is in 
 Eo way different from that of any other member of the 
 public, provided, of course, that he has not bound him- 
 self by additional restrictive covenants. "^^ Even in 
 the absence of express stipulation, good faith requires 
 of a party who has sold the goodwill of his business 
 that he should do nothing which tends to deprive the 
 purchaser of its benefits and advantages. It is clear 
 that he has no right to hold himself out as continuing 
 the business which he sold to the plaintiff, or as carry- 
 ing on his former business at another place to which 
 he has removed.^^ In other words, in every case of the 
 sale of a goodwill the vendor must not enter into an 
 unfair competition with his purchaser. What will con- 
 
 1 Abb. Pr. N. S. 337; Howe v. Over, 3 Brewst. 133; Moreau v. Ed- 
 Searing, 6 Bosw. 354; Cruttwell v. wards, 2 Tenn. Ch. 347; Palmer v. 
 Lye, 17 Ves. 335; Dayton v. Wilkes, Graham, 1 Pars. Eq. Cas. 476; 
 17 How. Pr. 516; Hanna v. An- Findlay v. Carson, 97 Iowa, 537, 
 drews, 50 la. 462; Cottrell v. Bab- 66 N. W. Rep. 759; Drake v. Dods- 
 cock Mfg. Co., 54 Conn. 138; Cos- worth, 4 Kansas, 135; Ranft v 
 telle V. Eddy, 128 N. Y. 650; Wil- Reimers, 200 111. 386, 60 L. R. A. 
 liams V. Farrand, 88 Mich. 473; 291, 65 N. E. Rep. 720. 
 Jackson v. Byrnes, 103 Tenn. 698, 54 81— Dwight v. Hamilton, 113 
 S. W. Rep. 984; Holbrook v. Nesbit. Mass. 175. 
 
 163 Mass. 120; 39 N. E. Rep. 794; 82— Allan on Goodwill, p. 32. 
 
 Grimm v. Walker, 45 Iowa, 106; 83— Hoxie v. Chaney, 143 Mass. 
 
 Smith V. Gibbs, 44 N. H. 335; 592-597, 10 N. E. Rep. 713; Hall's 
 
 Moody V. Thomas, 1 Disney 294; Appeal, 60 Pa. 458, 100 Am. Dec. 
 
 Washburn v. Dosch, 68 Wis. 436, 584; Knoedler v. Glaenzer, 5 C. 
 
 32 N. W. Rep. 551; Bradford v. C. A. 305, 55 Fed. Rep. 895. 
 Peckham, 9 R. I. ?.oO; Rupp v.
 
 § 85] GOODWILL. 199 
 
 stitute such unfair competition must be determined in 
 the light of all the facts in each particular case. 
 
 § 85. Covenants not to re-engage in business.— As we 
 have seen, tiie mere sale of a goodwill does not carry 
 with it by implication a covenant that the vendor will 
 not re-engage in the same business. Consequently, such 
 covenants nmst be expressed in tenns, and the construc- 
 tion of such covenants is a matter of law. While, as we 
 have seen, the goodwill itself will be passed by the con- 
 veyance of the business, without special mention, the 
 agreement of the vendor not to re-engage in the same 
 business should be as explicit, both as to time and as 
 to the territory, as the circumstances of the case will 
 permit. A frequent defense to an action, based u^jon cove- 
 nants not to re-engage in business, is that the contract 
 is void at common-law as being an unreasonable re- 
 straint of competition in trade. The general rule of 
 the common-law is stated by Mr. Bishop to be as fol- 
 lows: **An agreement, without limitation, not to carry 
 on a particular trade, which is lawful and beneficial to 
 the community and to the individual, is void as against 
 public policy. "^^ 
 
 A covenant not to re-engage in business will not be 
 implied from the vendor's covenant in the bill of sale 
 **to warrant and defend the sale of the said property 
 and interest, as herein stated. "^^ 
 
 84 — Bishop on Contracts, Section of furniture so long' as said Bagby 
 
 515. continue such business," it was 
 
 85 — Costello V. Eddy, 12 N. Y. held that Bagby's conveyance of 
 
 Supp. 236. Agreements upon dis- the business to a corporation was 
 
 solution are construed by the same a discontinuance of the business 
 
 rules as other contracts, with a by him, and Rivers was entitled 
 
 view of ascertaining the actual in- to resume the furniture business 
 
 tent in the minds of the parties, if he saw fit. Bagby & Rivers Co. v. 
 
 Thus in a covenant which read Rivers, 87 Md. 400; 40 L. R. A. 632. 
 "the said Rivers covenants that he 86 — Welz v. Rhodius, 87 Ind. 1; 
 
 will not engage in the manufacture Spier v. Lambdin, 45 Ga. 319.
 
 200 HOPKINS ON TRADEMARKS. [§85 
 
 A verbal agreement not to engage in a rival business 
 does not come within the statute of frauds. It may be 
 valid when made as collateral to and distinct from a 
 lease of premises, provided the parol agreement is made 
 in consideration of the execution of the written lease.^^ 
 But in an action at law upon a contract of sale, such 
 collateral parol agreement cannot be shown or recov- 
 ered on.^^ 
 
 A contract not to re-engage in business must, like 
 any other contract, be founded on a sufficient considera- 
 tion or it will not be enforced.^^ And the plaintiff in 
 an action upon such a contract must not be guilty of 
 any breach on his part, or he will be denied relief in 
 equity.^^ 
 
 A covenant not to re-engage in business may not 
 specify the territory in which the vendor is precluded from 
 doing business. If from all the circumstances of the 
 case it appears that it was the intention of the party to 
 limit the territory to a town, county or state, the con- 
 tract will be so construed, and the vendor will be en- 
 joined from continuing or re-entering business in the 
 territory so fixed.^^ 
 
 The courts of late years have relaxed the old rules 
 so that the restrictive covenant may be unlimited as to 
 area. "It cannot be said that the early doctrine that 
 contracts in general restraint of trade are void, with- 
 out regard to circumstances, has been abrogated. But 
 it is manifest that it has been much weakened, and that 
 the foundation upon which it was originally placed has, 
 to a considerable extent at least, by the change of cir- 
 cumstances, been removed. "^^ 
 
 87— Costello V. Eddy, 12 N. Y. lis v. Shaffer, 38 Kas. 492; Johnson 
 
 Supp. 236; Herbert v. Dupaty, 42 v. Moss, 45 Cal. 515. 
 La. Ann. 343. 90— Hubbard v. Miller, 27 Mich. 
 
 88 — Onondaga Co. Milk Associa- 15. 
 tion V. Wall, 17 Hun, 494. 91 — Andrews, J., in Diamond 
 
 89— Cassldy v. Metcalf, 1 Mo. Match Co. v. Roeber, 106 N. Y. 
 
 App. 593-601; s. c. 66 Mo. 519; Hoi- 473-484. The cases are reviewed 
 
 at length in this opinion.
 
 § 85] GOODWILL. 201 
 
 The subject of contracts in restraint of trade is out- 
 side of the scope of this book, but the following extract 
 from the opinion of Mr. Justice liradley concisely cov- 
 ers the principles which govern the construction of all 
 covenants of the kind under consideration: ** There are 
 two principal grounds on which the doctrine is founded, 
 that a contract in restraint of trade is void as against 
 public policy. One is, the injury^ to the public by being 
 deprived of the restricted party's industry; the other 
 is, the injury to the party himself by being precluded 
 from pursuing his occupation and thus being prevented 
 from supporting himself and his family. It is evident 
 both these evils occur when the contract is general, not 
 to pursue one's trade at all, or not to pursue it in the 
 entire realm or country^ The country suffers the loss 
 in both cases; and the party is deprived of his occupa- 
 tion, or is obliged to expatriate himself in order to fol- 
 low it. A contract that is open to such grave objection 
 is clearly against public policy. But if neither of these 
 evils ensue, and if the contract is founded on a valid 
 consideration and a reasonable ground of benefit to the 
 other party, it is free from objection and may be en- 
 forced. 
 
 ''In accordance with these principles it is well settled 
 that a stipulation by a vendee of any trade, business or 
 establishment, that the vendor shall not exercise the 
 same trade or business, or erect a similar establishment 
 within a reasonable distance, so as not to interfere with 
 the value of the trade, business or thing purchased, is 
 reasonable and valid. In like manner a stipulation by 
 the vendor of an article to be used in a business or 
 trade, in which he is himself engaged, that it shall not 
 be used within a reasonable region or distance, so as 
 not to interfere with his said business or trade, is also 
 valid and binding. The point of difficulty in these cases 
 is to determine what is a reasonable distance within 
 which the prohibitory stipulation may lawfully have
 
 202 
 
 HOPKINS ON TRADEMARKS. [§85 
 
 effect. And it is obvious, at first glance, that this must 
 depend upon the circumstances of the particular case; 
 although, from the uncertain character of the subject, 
 much latitude must be allowed to the judgment and dis- 
 cretion of the parties. It is clear that a stipulation 
 that another shall not pursue his trade or employment 
 at such a distance from the business of the person to 
 be protected, as that it could not possibly affect or in- 
 jure him, would be unreasonable and absurd. On the 
 other hand, a stipulation is unobjectionable and binding 
 which imposes the restraint to only such an extent of 
 territory as may be necessary for the protection of the 
 party making the stipulation, provided it does not vio- 
 late the two indispensable conditions, that the other 
 party be not pi-evented from pursuing his calling, and 
 that the country be not deprived of the benefit of his 
 exertions."^ 
 
 The covenant not to re-engage in business may be 
 entered into by the stock holders of the corporation, 
 whose capital stock and goodwill is being conveyed to 
 a purchaser. The sale of the stock alone does not carry 
 with it by implication a covenant not to re-engage; in- 
 deed, the California conrt has held in a case where the 
 covenant not to re-engage was supported only by the 
 sale of stock in a corporation, that as the sale of the 
 stock could not carry with it the goodwill of the corpo- 
 ration, the element of goodwill did not enter into the 
 transaction, and the covenant was void as being in re- 
 straint of trade.^ 
 
 The following agreement of stock holders made col- 
 laterally with the sale of the business and goodwill of 
 their corporation contains a typical covenant of the 
 kind under consideration: ''This instrument witnes- 
 seth, that William Vernon Booth has purchased the 
 
 l_Oregon Steam Nav. Co. v. 2— Merchants' Ad-Sign Co. v. 
 Windsor, 20 Wall., 64-72. Sterling, 124 Cal. 429.
 
 § 85 J GOODWILL. 203 
 
 plant, business and goodwill of the business of the 
 Davis Fresh & Salt Fish Co., and has paid therefor the 
 sum of $17,473.14; that in making said transfer, and as 
 an inducement to said William Vernon Booth to pur- 
 chase said plant, business and goodwill and pay the 
 sum aforesaid for the same, we each have agreed that 
 we would not, and we now do agree, each for himself, 
 jointly and severally with him, the said William Ver- 
 non Booth, his heirs and assigns, forever, that we will 
 not during the next ten years, in the territory or the 
 immediate vicinity of the territory dealt in by our com- 
 pany, engage or in any manner be interested in, either 
 directly or indirectly, for ourselves or for others, the 
 same or like kind or character of business as that here- 
 tofore conducted and now being carried on by said com- 
 pany, its officers, agents, employees and assigns, and 
 that we will not, during the said period of ten (10) 
 years, either directly or indirectly, be guilty of any act 
 interfering with the business, its goodwill, its trade or 
 its customers, or come in competition with the same; 
 and we will not, jointly or severally either in firms or 
 corporations, or as individuals or in any other way, 
 directly or indirectly interfere with the said trade or 
 business, or do any act prejudicial to the same or any 
 part thereof, or interfere with the persons employed 
 therein; the meaning hereof being that the said Wil- 
 liam VeiTion Booth is buying and paying for the good- 
 will of the business in the largest and fullest scope of 
 the term; and that we will not, and each agi-ees that he 
 will not, do anything to interfere with or injure the 
 said business, but will during said period, lend his aid 
 and best influence to the promotion and advancement 
 of the same." 
 
 It was urged in defense of a bill filed by the pur- 
 chaser to restrain the share holders from the viola- 
 tion of this agreement, that it was void because in vio- 
 lation of the Anti-Trust Act of July 21, 1890. This de-
 
 204 HOPKINS ON TRADEMARKS. [§ 86 
 
 fense did not prevail because the contract did not have, 
 upon its face, a direct relation to interstate commerce. 
 It was further urged that the covenant was void of 
 common-law because it was an unreasonable restraint of 
 competition in trade. This defense also failed, inas- 
 much as the covenant was merely ancillary to the con- 
 veyance of the goodwill of the corporation. The gen- 
 eral rule was announced by the court ''that such stipu- 
 lation is valid if it goes no farther than to support and 
 protect the interests transferred by the contract of sale.^ 
 
 § 86. The vaJuation of goodwill.— It is manifestly a 
 matter of great difficulty to secure an accurate valua- 
 tion of goodwill. Like a trademark it has no value 
 except as an integral portion of the business with which 
 it is connected, and of which it is a part. We have con- 
 sidered some of the things that enter into goodwill, and 
 it is obvious that its value is a thing entirely independ- 
 ent of the cash value of the physical assets of the busi- 
 ness of which it is a part. In fact, goodwill is fre- 
 quently sold at a valuation far in excess of the total 
 value of all of the physical properties of the business. 
 On the other hand, the value of a goodwill is liable to 
 sudden and violent fluctuation as is the value of a 
 trademark. 
 
 A single shipment of inferior goods may render the 
 trademark under which they are packed, a thing of no 
 value, and personal goodwill depends for its value upon 
 the continued activity and integrity of the person or 
 persons to whom it belongs. 
 
 Concerning the valuation of the goodwill of a part- 
 nership, the Massachusetts court has said, "While no 
 rule can be laid down by which the goodwill of a trad- 
 ing partnership in all cases can be ascertained and its 
 value fixed with mathematical precision and accuracy, 
 
 3— Severens, J., :n Davis v. A. Booth & Co., 65 C. C. A. 269, 131 
 Fed. Rep. 31, 38.
 
 § 86] GOODWILL. 205 
 
 yet if it be assumed that a finn has been in existence for 
 a time long enough to establish a business suflSciently 
 permanent in character to include not only its cus- 
 tomers, but the incidents of locality, and a distinctive 
 name, these advantages constitute a going business 
 enterprise; and it may then be said that the name and 
 what is done under it go together, and a goodwill exists 
 which forms an asset of commercial value in a winding 
 up between partners. The fact that such an asset may 
 be difficult of appraisement is no legal reason for deny- 
 ing to the retiring partner an appraisal, if it be proved 
 that he is entitled to it."* 
 
 An English text writer says, ''The usual basis of 
 valuation is the average net profits made during the 
 few years preceding the sale,'"^ and in accordance with 
 this rule, an English court has assessed the value of 
 the goodwill of a banking business at one year's aver- 
 age net profits.'' 
 
 The value of the goodwill of a professional practice 
 has been based upon two years' net profits.'^ 
 
 It is evident that all the facts relating to the char- 
 acter of the goodwill, the probability of the continuance 
 of its value, and any other matters which render its 
 duration a matter of doubt or certainty, must be con- 
 sidered in an attempt to place a value upon it. Thus, 
 where the goodwill was being conveyed in administra- 
 tion, the fact that the brother of the testator had been 
 interested in the business, and could not be prevented 
 from carrying it on in competition with a purchaser, 
 rendered the goodwill valueless as a subject of sale by 
 the executor.^ In estimating the value of the interest 
 
 4 — Moore v. Rawson, 185 Mass. 6 — Mellersh v. Keen, 28 Beav. 
 264. 70 N. E. Rep. 64, citing Mc- 453. 
 
 Murtrie v. Guiler, 183 Mass. 451, 7 — Featherstonhaugh v. Turner. 
 454, 67 N. E. Rep. 358. 25 Beav. 382. 
 
 5 — Allan on Goodwill, page 82. 8 — Davies v. Hodgson, 25 Beav. 
 
 177.
 
 206 HOPKINS ON TRADEMARKS. [§ 87 
 
 of a deceased partner in the goodwill of the business, 
 the rights of the surviving partner must be taken into 
 account.* 
 
 § 87. Competition between vendor and vendee.— The 
 
 vendor is at liberty to lease or sell other property he 
 may own in the neighborhood, to another person who 
 may carry on the same business, provided there is no 
 collusion, and the lessor has no interest in the busi- 
 ness.' '^ 
 
 In the absence of a covenant or statute to the con- 
 trary, the vendor may employ any fair method of 
 soliciting trade which does not involve a false or frau- 
 dulent representation.^^ But the English rule and that 
 in Eliode Island is that he cannot directly solicit from 
 former customers.'^ No form of soliciting trade will 
 be permitted however which tends directly to deprive 
 the vendee of the benefit of the reputation of the busi- 
 ness purchased by him, to take away from him the 
 patronage which appertained to it, or to draw away the 
 business of its habitual customers.^ ^ 
 
 The goodwill of the business of a decedent does not 
 carry with it the right to use the decedent's name.^^ 
 Such goodwill is an asset to be accounted for by the 
 personal representative, and if that representative takes 
 
 9 — Smith V. Everett, 27 Beav. Rep. 283; Knoedler v. Glaenzer, 55 
 
 446. Fed. Rep. 895, 5 C. C. A. 305. 
 
 10— Bradford v. Peckham, 9 R. 12— Trego v. Hunt, 65 L. J. Ch. 
 
 I. 250-253; Herbert v. Dupaty, 42 1; L. R. (1896) A. C. 7; 12 Eng. 
 
 La. Ann. 343. Ruling Cases, 442; Labouchere v. 
 
 11— Holbrook v. Nesbitt, 163 Dawson, L. R. 13 Eq. 322; Zantur- 
 
 Mass. 120; 39 N. E. Rep. 794, Cot- jian v. Boornazian, R. I., 55 Atl. 
 
 trell V. Babcock, 54 Conn. 138; Rep. 199. 
 
 Vonderbank v. Schmitt, 44 La. Ann. 13— Munsey v. Butterfield, 133 
 
 264; Marcus Ward & Co. v. Ward, Mass. 492-495. Citing Angier v. 
 
 40 N. Y. State Rep. 792; Knoed- Webber, 14 Allen 211. 
 
 ler V. Boussod, 47 Fed. Rep. 465; 14 — Morgan v. Schuyler, 79 N. Y. 
 
 Close V. Flesher. 59 N. Y. State 490; Re Randall's Estate, 8 N. Y. 
 
 Supp. 652-654.
 
 § 87] GOODWILL. 207 
 
 charge of the business and conducts it as his own he is 
 chargeable with the value of the goodwill.^*^ 
 
 Equity looks with disfavor upon any method of 
 diverting from the purchaser of a goodwill the benefits 
 which ought to come to him by reason of his purchase. 
 Thus, where partners sold out their interest in the 
 goodwill of a partnership known as the Kalamazoo 
 Wagon Company, and then organized a corporation 
 under the name of Kalamazoo Buggy Company, they 
 were enjoined, at the suit of their vendee, from the 
 use of that name; and the court held that the writ of 
 injunction properly ran against all persons connected 
 with the corporation,^"^ 
 
 A statute of California provides that "One who sells 
 the goodwill of a business thereby warrants that he will 
 not endeavor to draw off any of the customers."^" 
 
 In another case one Thomson was a partner of his 
 brother, in Europe, and a partner of other persons in a 
 separate establishment in New York. Both houses were 
 dealing in "Thomson's Glove-fitting" corsets. Thomson 
 sold out his interest in the New York house and after- 
 ward attempted to sell the corsets made by him in Eu- 
 rope, in the United States. He was enjoined from so 
 doing, the court holding that, when he assigned his in- 
 terest in the goodwill of the New York partnership, the 
 good-will carried with it all his right to use the trade- 
 mark "Thomson's Glove-fitting" in the United States.^^ 
 
 In a sale of a physician's practice, where the vendor, 
 after three months, returned to the same city and opened 
 an oflSce fifteen rods away from, in the nearest house 
 but one to, his former office, the supreme court of Massa- 
 chusetts held his conduct to be a breach of the implied 
 covenant "that the vendor will not himself do anything 
 
 IT)— Re Randall's Estate, 8 N. Y. 115; 19 L. R. A. 82. 
 
 Supp. 652. 17— Cal. Civ. Code §1776; Snow 
 
 Ifi— Myers v. Kalamazoo Buggy v. Holmes, 71 Cal. 142. 
 
 Co., 54 Mich. 215; Brass & Iron 18— Batchellor v. Thomson, 86 
 
 Works Co. V. Payne, 50 Ohio St. Fed. Rep. 630.
 
 208 HOPKINS ON TRADEMARKS. [§ 87 
 
 to disturb or injure the vendee in the enjoyment of that 
 which he has purchased. "^^ 
 
 When an article of manufacture has had the manu- 
 facturer's name applied to it, and he sells his business 
 and goodwill and ''confers the authority to use his 
 name," so ajiplied, to his vendee, he will be enjoined 
 from again engaging in a similar business under his 
 own name.-^ 
 
 A covenant by the vendor not to re-engage in busi- 
 ness may not specify the territory in which he is pre- 
 cluded from doing business. If from all the circumstances 
 of the case it appears that it was the intention of the par- 
 ties to limit that territory to a town, county or state, 
 the contract will be so construed, and the vendor will 
 be enjoined from continuing or re-entering business in 
 the territory so fixed.-^ A single act or sale in the line 
 of the business sold is not a breach of a covenant not to 
 re-engage in a particular ''business," as business is car- 
 ried on by an aggregation of acts.-- 
 
 A vendor of a good-will may not do indirectly what 
 he is forbidden, by the terms of his contract, from doing 
 directly. So if he form a corporation to carry on his 
 business, and the other incorporators have knowledge 
 
 19 — Endicott, J., in Dwight v. court of equity when asking its as- 
 
 Hamilton, 113 Mass. 175-177. Where sistance." Cassidy v. Metcalf, 65 
 
 the vendor re-engaged in the same Mo. 519. 
 
 (a mercantile) business in the 20 — Frazer v. Frazer Lubricator 
 
 same vicinity, a bill in equity Co., 121 111. 147, 13 N. B. Rep. 639; 
 
 brought by him to reform the con- Ayer v. Hall, 3 Brewst. 509; Fil- 
 
 tract of sale was dismissed on the kins v. Blackman, Fed. Case No. 
 
 ground that he had not done 4786, 13 Blatch. 440; Probasco v. 
 
 equity. Cassidy v. Metcalf, 1 Mo. Bouyon, 1 Mo. App. 241. 
 
 App. 593-601. This decision was 21— Hubbard v. Miller, 27 Mich, 
 
 reversed by the supreme court of 15. 
 
 Missouri, but that court agreed 22 — Parkhurst v. Brock, Vt. 47 
 
 with the St. Louis court of ap- Atl. Rep. 1068; oiting Hoagland v. 
 
 peals in holding that "the plain- Segur, 38 N. J. Law 237; Turner 
 
 tiff's conduct was not characterized v. Evans, 2 El. & El. 512; Re Hor- 
 
 by that good faith with which a ton, 45 Law T. (N. S.) 541. 
 party should always approach a
 
 § 87 j GOODWILL. 209 
 
 of Lis contract, the corporation will be enjoined from 
 conducting business with or for the vendor.*'' And he 
 is not at liberty to take stock in or to help to organize or 
 manage a corporation formed to compete with his ven- 
 dee,-' nor may he deliver goods within the proliibited 
 territoiy, although maintaining his store and making 
 the sales without that •territoiy.^'^ 
 
 If he re-engages in business under the pretense of 
 acting as a broker or commission agent only, the same 
 rule applies and he will be enjoined.-*^ And again, the 
 rule applies where the defendant re-engages in the pro- 
 hibited busness as the salaried employee of a third per- 
 son, and he will be enjoined.^^ In a case where the 
 vendor covenanted to make the goodwill as valuable 
 as he could. Lord Eldon held that the vendee was not 
 bound to take the actual profit made, but that he would 
 ''have an action of covenant, if he can establish his 
 title to more through the default of the vendor."-'^ 
 
 Where a limit of time is fixed in the covenant against 
 re-engaging in business, the vendor may re-engage in 
 the business upon the expiration of the time. But where 
 the covenant was made jointly with a conveyance of 
 the vendor's good-will, he was restrained after he re- 
 engaged in business from making personal solicitation 
 of his foiTaer customers and using extracts from their 
 books in relation to the business.-'' 
 
 23— Beal v. Chase, 31 Mich. 490. Battershell v. Bauer, 91 111. App. 
 
 24— Kramer v. Old, 119 No. Car. 181. 
 1; 56 Am. St. Rep. 650. 28— Scott v. Mackintosh, 1 V. & 
 
 25— Love V. Stidham, 18 App. D. B. 503. As a matter of course 
 
 C. 306. such a covenant will not be created 
 
 26 — Richardson v. Peacock, 33 N. by implication. Where the vendor 
 
 J. Eq. 597. conveyed the good-will of a school, 
 
 27— Finger v. Hahn, 42 N. J. Eq. it was held that the sale did not 
 
 606. Emery V. Bradley, 88 Me. 357; bind him by implication to exert 
 
 34 Atl. Rep. 167; Meyer v. Labau, his efforts thereafter to secure the 
 
 51 La. Ann. 1726; Boutelle v. attendance of pupils. McCord v. 
 
 Smith, 116 Mass. Ill; Jefferson -'. Williams, 96 Pa. St. 78. 
 Markert, 112 Ga. 498. 37 S. E. Rep. 29— Armstrong v. Bitner, 71 Md. 
 
 758. Opposed to these cases see 118-127, 
 14
 
 210 HOPKINS ON TRADEMARKS. [§ 88 
 
 The sale of a business and its goodwill do not, in 
 the absence of an express agreement, entitle the pur- 
 chaser to use the vendor's name, even where he cove- 
 nants not to re-engage in the business for a term of 
 years.^*^ 
 
 §88. Partnership goodwill.— Disputes as to good- 
 will arise most frequently between partners. The vari- 
 ous text-writers who have treated the law of partner- 
 ship have dwelt at length upon the principles of the law 
 of goodwill which are applicable in this connection, so 
 that for the purj^ose of this book a brief glance at the 
 leading principles will suffice. 
 
 As we have seen elsewhere, every man has the right 
 to use his own name in business, so long as he does not 
 use it in such a way as to establish an unfair competi- 
 tion. 
 
 The use of the name of a withdrawing partner, as 
 part of the firm name, in such a way as to expose him 
 to liability or to the possibility of being sued, will be 
 enjoined at his suit.^^ The better rule would seem to 
 be that in the absence of express agreement the firm 
 name will not pass to one who purchases the assets of a 
 partnership.^- 
 
 30 — Scheer v. American Ice Co., ties; and that a purchaser thereof 
 
 66 N. Y. Supp. 3. under either method of sale is en- 
 
 31 — McGowan v. McGowan, 22 titled to continue the business as 
 
 Ohio St. 370; Peterson v. Hum- the successor of the firm, and make 
 
 phrey, 4 Abb. Pr. 394. use of the firm name for that pur- 
 
 32 — Williams v. Farrand, 88 Mich. pose. And further, that when the 
 
 473; 50 N. W. Rep. 446. Horton purchaser transfers the property 
 
 Mfg. Co. V. Horton Mfg. Co., 18 so acquired by him to a corporation 
 
 Fed. Rep. 816. This rule is not yet of which he is a member, organ- 
 
 clearly established. Thus the su- ized to succeed to the business, it 
 
 preme court of Ohio says: "Upon may carry on the business in the 
 
 the dissolution of a trading copart- same manner under a corporate 
 
 nership its assets, including the name, including the name which 
 
 good-will of the business, may be has been used by the firm." Wil- 
 
 sold as a whole, either by the part- liams, J., in Snyder Mfg. Co. v. 
 
 ners directly, or through a receiv- Snyder, 54 Ohio St. 86-96; 43 N. E. 
 
 er under an order made by a court Rep. 325, citing Brass & Iron Works 
 
 in a case to which they are par- v. Payne, 50 Ohio St. 115.
 
 § 88] GOODWILL. 211 
 
 When one partner has been expelled from the part- 
 nership because of his violation of its articles, he will 
 not, in the absence of contract binding him not to re- 
 engage in the business, be enjoined from doing similar 
 business iin his own name, and soliciting patronage from 
 customers of the old firm/''* A surviving partner who 
 lias the right to use the firm name may enjoin his de- 
 ceased partner's executor from using the firm name for 
 his own benefit."'^ 
 
 Upon the appointment of a receiver for the finn as- 
 sets, either member of the firm will be enjoined from 
 so using his own name as to mislead the public into 
 the belief that he has acquired the goodwill, since such 
 injunction is necessary to the presei-vation of the good- 
 will as part of the firm assets.^'' 
 
 A retiring partner who has sold the other the firm 
 property, without making mention of the goodwill, will 
 be granted an injmiction against any use of the firm 
 name by the continuing partner which would give the 
 public reason to believe he was still a member of the 
 firm, to the injury of his new business.^® 
 
 Upon the dissolution of a partnership the partner 
 who retains the use of the old premises may lawfully 
 advertise the premises as being ''formerly occupied by" 
 the old finn, and either partner may advertise himself 
 as being "formerly of" or ''late of" the firm, using 
 words that convey only the facts and have no tendency 
 
 33 — Dawson v. Beeson, L. R. 24 of the right to use the name is 
 
 Ch. D. 504. personal and cannot be transferred 
 
 34 — Lewis v. Langdon, 7 Sim. by the continuing partner to an- 
 
 422. other. Horton Mfg. Co. v. Horton 
 
 35— Bininger v. Clark, 60 Barb. Mfg. Co., 18 Fed. Rep. 816; Bagby 
 
 113. Where a retiring partner & Rivers Co. v. Rivers, 87 Md. 400; 
 
 stipulated that the continuing part- 40 L. R. A. 632. 
 ner might continue the use of his 36 — McGowan v. McGrOwan, 22 
 
 name in the style of the firm, it Ohio St. 370. 
 has been held that the assignment
 
 212 HOPKINS ON TRADEMARKS. [§ 88 
 
 to deceive or mislead the firm's customers or the public 
 generally.^^ 
 
 Where the retiring partner permits the old firm name 
 (of which his name is a part) to be used, and makes no 
 publication of the fact of his retirement, he is estopped 
 from denying the copartnership, as against a creditor 
 of the continuing partner, who has extended credit in 
 the belief that he is still a member of the firm.^^ 
 
 Upon administration of a partnership estate, the 
 goodwill should be included in the appraisement of the 
 partnership assets, and if the surviving partner appro- 
 priates it to his own use by continuing the partnership 
 business, he may be compelled to account for its value 
 to the estate of the deceased partner.^^ 
 
 ^Yhere a partner came into a partnership for a fixed 
 period, agreeing, *'to carry on business with the defend- 
 ants for one year, and then to leave it in their hands," 
 he was held to have acquired thereby no interest in the 
 goodwill of the business.''*' 
 
 Upon the retirement of a partner, if he permits the 
 other partners to retain the old premises and continue 
 the use of the firm name, the goodwill remains with 
 the continuing partners.''^ 
 
 A retiring partner who re-engages in business will be 
 enjoined from using the expressions ''our firm", "our 
 new store", and like matter holding out his new con- 
 cern as continuing the business of the old firm.^- 
 
 37 — Morgan v. Schuyler, 79 N. Y. incoming partner's interest should 
 
 490; Holbrook v. Nesbit, 163 Mass. be ascertained annually, and fur- 
 
 120, 39 N. E. Rep. 794. ther provided for the sale of his 
 
 38 — Backus v. Taylor, 84 Ind. interest to his partner on dissolu- 
 
 503; Richards v. Hunt, 65 Ga. 342. tion at the price ascertained in 
 
 39 — Rammelsberg v. Mitchell, 29 determining his share. The court 
 
 Ohio St. 22. held that this disposed of his prop- 
 
 40 — Van Dyke v. Jackson, 1 E. erty in the good-will. 
 
 D. Smith (N. Y.) 419; Duden v. 41— Menendez v. Holt, 128 U. S. 
 
 Maloy, 63 Fed. Rep. 183; 11 C. C. 514. 
 
 A. 119. In the latter case the part- 42— Fite v. Dorman, (Tenn.), 57 
 
 nership articles provided that the S. W. Rep. 129.
 
 §89] GOODWILL. 213 
 
 §89. Remedies.— The purchaser of a good-will whose 
 enjoyment of it is interfered with may have his remedy 
 either at law or in equity. These remedies are adminis- 
 tered on the same general principles which apply to 
 other cases of unfair competition, and which are dis- 
 cussed elsewhere in this book. 
 
 The jurisdiction of equity in this class of cases is 
 predicated upon the fact that the injury is continuing, 
 that its further operation can only be restrained by the 
 exercise of the injunctive power of the chancellor, and 
 that damages at law afford no adequate compensation 
 for the injuiy. 
 
 If, however, the plaintiff resorts to an action at law, 
 the measure of his damages is well defined by the su- 
 preme court of Missouri: ''If plaintiffs lost less than 
 the defendant made, they cannot recover the whole of 
 defendant's profits; if plaintiffs lost more than the de- 
 fendants made, they would not be limited to defend- 
 ant's profits. What the plaintiffs have lost by the de- 
 fendant's breach of covenant, and not what the de- 
 fendant has gained thereby, is the legal measure of dam- 
 ages in this case."^^ 
 
 The parties to a contract for the sale of a goodwill 
 may provide in the contract for a fixed amount of dam- 
 ages. In the absence of fraud, the sum so fixed will be 
 adopted as the measure of damages by the court.^" 
 Where the parties have so agreed upon the amount of 
 damages, the vendee, in case of a breach of covenant, 
 has an adequate remedy at law, and injunction will not 
 lie.-*^ The remedy is for the recovery of the sum so 
 fixed.^^ 
 
 43— Hough, J., in Peltz v. Eich- ley v. Peddie, 16 N. Y. 469; Woos- 
 
 ele, 62 Mo. 171-180. And to the ter v. Kisch, 26 Hun. 61. 
 
 same effect see Burckhardt v. 45— Martin v. Murphy, 129 Ind. 
 
 Burckhardt, 36 Ohio St. 261. 464-467. Unless the defendant is 
 
 44— Tode v. Gross, 127 N. Y. insolvent, which fact will make a 
 
 480-487, 13 L. R. A. 652, 28 N. E. case for injunctive relief. Pickett 
 
 Rep. 469. 40 N. Y. S. R. 300; Dakin v. Green, 120 Ind. 584. 
 
 V. Williams, 17 Wendell, 447; Bag- The general doctrine that equity
 
 2U 
 
 HOPKINS ON TRADEMARKS. 
 
 [§89 
 
 AVIiere there are no damages stipulated, and no sub- 
 stantial injury is proven, the plaintiff is entitled only 
 to nominal damages.*'^ ''The loss of profits, if there 
 are data from which the amount may be ascertained 
 with reasonable certainty, the diminution in value of the 
 property sold, all may be regarded as elements of the 
 damages which go to make up the measure of recov- 
 eiy. "■^^ 
 
 Where the defendant has re-engaged in business in 
 violation of a covenant against his so doing, the case is 
 one where ''the law will not nicely attempt to limit the 
 amount of reparation, but will extend the line of re- 
 lief so as to embrace all the consequences of the wrong- 
 doer's act, although quite remote from the original 
 transaction."^^ The measure of the vendee's damages 
 
 will not interfere to restrain a per- 
 son from doing an act which he 
 has agreed not to do, when liquid- 
 ated damages have been provided 
 in case he does the act, is subject 
 to this qualification. "The question 
 in every case is, what is the real 
 meaning of the contract? And if 
 the substance of the agreement :s 
 that the party shall not do a par- 
 ticular act, and that is the evident 
 object and purpose of the agree- 
 ment, and it is provided that, if 
 there is a breach of this agreement, 
 the party shall pay a stated sum, 
 which does not clearly appear to 
 be an alternative which he has the 
 right to adopt instead of perform- 
 ing his contract, there would seem 
 to be no reason why a court of 
 equity should not restrain him 
 from doing the act, and thus carry 
 out the intention of the parties. 
 . . . In other words^ naming a 
 sum to be paid as liquidated dam- 
 ages does not in itself conclusively 
 establish that the parties contem- 
 plated the right to do the act upon 
 
 payment of the compensation, and 
 make an alternative agreement for 
 the benefit of the party who has 
 done what he had agreed not to 
 do." Edicott, J., in Ropes v. Upton, 
 125 Mass. -258-261. It has been 
 held in Canada that in event of a 
 breach of such a contract the ven- 
 dee has his election to enjoin the 
 vendor or recover the amount 
 named as liquidated damages. Sni- 
 der V. McKelvey, 27 Ont. App. 339. 
 
 46 — Martin v. Murphy, 129 Ind. 
 464. 
 
 47 — Taylor v. Howard, 110 Ala. 
 468, 18 South. Rep. 311. 
 
 48 — Howard v. Taylor, 90 Ala. 
 241-244; and to the same effect see 
 Burckhardt v. Burckhardt, 42 Ohio 
 St. 474, Mitchell v. Read, 84 N. Y. 
 556; Mellersch v. Keen, 28 Beavan, 
 453; Rawson v. Pratt, 91 Ind. 9; 
 Lashus V. Chamberlain, 6 Utah, 
 385; Gregory v. Spieker, 110 Cal. 
 150, 42 Pac. Rep. 576. 
 
 49— Dow V. Electric Co. (N. H.) 
 41 Atl. Rep. 288, 42 L. R. A. 569.
 
 §89 J GOODWILL. 215 
 
 will be the amount of profits lost during the term by 
 reason of defendant's unlawful competition, and if, in 
 addition, the goodwill of the business at the end of the 
 term is worth less than it would have been but for de- 
 fendant's unlawful act, the vendee is entitled to re- 
 cover that amount.^" The vendee cannot recover the 
 profits realized by the vendor through his breach of the 
 contract/*^ 
 
 For the greater irdi-i the remedies open to the owner 
 of a goodwill whose rights are invaded are administered 
 by courts of equity. But injury to a goodwill may be 
 effected in many various ways, for each of which an ap- 
 propriate remedy will be found either at law or in equity. 
 Thus where a defendant's goodwill has been destroyed 
 by a wrongful attachment, he will be allowed compensa- 
 tion therefor in an action for damages against the at- 
 taching creditor.^- 
 
 In an action at law a petition which alleges that 
 plaintiff has purchased defendant's business and good- 
 will, and that the defendant agreed not to re-engage 
 in the same line of business for two years, and 
 that in violation of his agreement, he has re-engaged 
 in the same line of business during such jieriod, and 
 thereby damaged plaintiff, has been held good on de- 
 murrer.'^^ 
 
 The action for damages for breach of contract involv- 
 ing goodwill is governed by the general principles in- 
 volved in similar actions in trademark cases, which are 
 considered elsewhere in this book. 
 
 A contract for the sale of a business and goodwill will 
 be rescinded if the vendor has falsely stated facts in re- 
 
 50 — Salinger v. Salinger, N. H., 51— Gregory v. Spieker, 110 Cal. 
 
 45 Atl. Rep. 558; Buckhardt v. 150, 42 Pac. Rep. 576. 
 
 Buckhardt, 36 Ohio St. 261; Verges 52— Miller v. Beck (Iowa), 72 N. 
 
 V. Forshee, 9 La. Ann. 294; Stewart W. Rep. 553. 
 
 V. Challacombe, 11 111. App. 379; 53— Erwin v. Hayden (Texas), 
 
 Moorehead v. Hyde, 38 Iowa 382. 43 S. W. Rep. 610.
 
 216 HOPKINS ON TRADEMARKS. [§89 
 
 gard to the value of the goodwill ; as where he has rep- 
 resented that his receipts or profits from the business 
 were gi'eater than they actually had been,^"* or that the 
 premises sold have brought a higher rental than they 
 actually did."^ And the misrepresentation has been held 
 to rescind the contract where the misstatement was not 
 made directly to the vendee, but to a third party who 
 communicated it, with the vendor's knowledge, to the 
 vendee/'^'^ On the other hand, the duty is imposed upon 
 the vendee to act at once upon learning the facts which 
 justify a rescission. Where he fails to do so he will be 
 bound by his contract, and his remedy lies in an action 
 for damages,^^ as he may recover damages without re- 
 scinding the contract.^*^ 
 
 AA^ienever the false representations amount to a war- 
 rantj^ an action for damages will lie even in the absence 
 of proof of fraud. Otherwise the burden is upon the 
 vendee to show that the representation was fraudulently 
 made.^^ 
 
 The measure of damages in such case is the difference 
 between the actual value of its property at the time of 
 the purchase, and its value if the property had been 
 what it was represented or warranted to be.*'^ 
 
 Covenants against re-engaging in business may be 
 specifically enforced, as we have seen, or the vendor may 
 be enjoined from their violation. It has been held in 
 England that with an action for specific performance a 
 claim for damages may be made as an alternative."* 
 
 It has been held that a debtor's goodwill cannot be 
 
 54— Dobell v. Stevens, 3 B. & C. 58— Snow v. Holmes, 71 Cal. 142- 
 
 623; Cruess v. Pessler, 39 Cal. 33C. 148. 
 
 55 — Lysney v. Selby, 2 Ld. Raym. 59 — Redgrave v, Hurd, L. R. 20 
 
 1118. Ch. D. 1. 
 
 56 — Pilmore v. Hood, 5 Bing. N. 60 — Morse v. Hutchins, 102 Mass. 
 
 C. 97. 439; Rawson v. Pratt, 91 Ind. 9. 
 
 57— Dobell v. Stevens, 3 B. & C. 61— Hipgrave v. Case, L. R. 28 
 
 623. Ch. D. 356.
 
 § 89] GOODWILL. 217 
 
 reached by a creditor's bill, because it is not subject to 
 levy, in satisfaction of their debts."" 
 
 The apijlication for injunctive relief is governed by 
 the rules concerning similar applications in trademark 
 cases. 
 
 A plaintiff need not allege or })rove damages as a pre- 
 requisite to an injunction to restrain a defendant from 
 re-engaging in business, in breach of a covenant between 
 the parties."'^ When a vendee in applying for an injunc- 
 tion also asked judgment for the possession of the books 
 and papers used by the vendor in the business in which 
 it had engaged in violation of its covenants the order was 
 refused because there was a remedy at law for their re- 
 coveiy.^" 
 
 In cases where the vendor of a goodwill is sought to 
 be restrained from re-engaging in business in violation 
 of his covenant, the amount in controversy is the value 
 of the goodwill, and the federal courts cannot acquire 
 jurisdiction unless the value of the goodwill exceeds 
 $2,000.«=^ 
 
 A violation of a covenant not to re-engage in business 
 is a defense to a suit by the vendor upon notes given by 
 the vendee for the purchase money .^^ 
 
 Wliere the covenant not to re-engage is incorporated 
 in the bill of sale, the consideration paid has been held 
 to be not only for the stock of goods, but for the agree- 
 ment not to re-engage.^'" 
 
 Remedy as to infringement of tradenames identified 
 with goodiuill.— Many of the actions for breach of con- 
 tract in relation to the sale of goodwill have had for 
 
 62 — Lilienthal v. Drucklieb, 84 65 — Lawrence v. Times Printing 
 
 Fed. Rep. 918. Co., 90 Fed. Rep. 24-28. 
 
 63 — Anderson v. Rowland, 18 66 — Townsend v. Hurst,. 37 Miss. 
 
 Tex. Civ. App. 460; 44 S. W. Rep. 679. 
 
 911. 67— Eisel v. Hays, 141 Ind. 41, 
 
 64 — Lawrence v. Times Printing 40 N. E. Rep. 119. 
 Co.. 90 Fed. Rep. 24-26.
 
 218 HOPKINS ON TRADEMARKS. [§89 
 
 their object the restraint of the vendor in the use of the 
 tradename under which the business has been conducted. 
 Where the goodwill and tradename has been sold, the 
 subsequent use of the name by the vendor will be en- 
 joined, even where the vendor has reserved the right to 
 resume business under any other than the old name.^^ 
 
 The relief will be granted where there has been a 
 contract to convey the tradename and goodwill, and the 
 consideration has been paid, though the vendor has not 
 made a fonnal assignment of the goodwill and name.*'^ 
 
 The relief will be granted where the vendee does not 
 continue the use of the old name, but conducts the 
 business under his own name.'^^ 
 
 68 — Burckhardt v. Burckhardt, 70— Grow v. Seligman, 47 Mich. 
 
 42 Ohio St 474, 51 Am. Rep. 842. 607, 41 Am. Rep. 737, 11 N. W. 
 
 69— United States Cordage Co. v. Rep. 404. 
 Wm. Wall's Sons Rope Co., 35 N. 
 Y. Supp. 978, 90 Hun, 429. 
 
 HI
 
 CHAPTER Vn. 
 
 TRADE SECRETS; RIGHT OF PRIVACY. 
 
 §90. Introductory.— "A secret in trade is fully 
 recognized as proijertv in equity, the disclosure of which 
 will be restrained by injunction."^ A contract in refer- 
 ence to such a secret cannot be in restraint of trade, 
 ** because the public has no rights in the secret. "- 
 
 When the name applied to a secret preparation is a 
 trademark, no one but the owner of the mark can apply 
 it to the preparation. But if it be not a valid trade- 
 mark, then the manufacture of the secret preparation, 
 and the placing of it upon the market under the same 
 name, is open to any one who can lawfully discover the 
 secret process.^ But "it is settled that a secret art is a 
 
 1— Smith. P. J., in Champlin v. 389; 54 N. W. Rep. 193; 19 L. R. 
 
 Stoddart, 30 Hun, 300-302. A. 236; Davis v. Kendall, 2 R. I. 
 
 2 — Morse Machine Co. v. Morse, 566; Siegert v. Findlater, L. R. 7 
 103 Mass. 73-75; Fowle v. Park, 131 Ch. D. 801; Comstock v. White, 18 
 U. S. 88. Vickery v. Welsh, 13 How. Pr. 421; Condy v. Mitchell, 
 Pick. 523-527. "Upon the sale of 37 L. T. N. S. 268; James v. 
 a secret process, a covenant, ex- James, L. R. 13 Eq. 421; Canham 
 press or implied, that the seller v. Jones, 2 V. & B. 218; J. R. Wat- 
 will iiot use the process himself or kins Medical Co. v. Sands, 83 
 communicate it to any other per- Minn. 326, 86 N. W. Rep. 340. 
 son is lawful, because the process "It may also be observed, in this 
 must be kept secret to be of any connection, that the word 'proper- 
 value, and the public has no in- ty,' as applied to trade secrets 
 terest in the question by whom it and inventions, has its limitations; 
 is used." for it is undoubtedly true that 
 
 Gray, J., in Central Transporta- when an article manufactured by 
 
 tion Co. V. Pullman's Palace Car some secret process, which is not 
 
 Co., 139 U. S. 24. Citing Fowle v. the subject of a patent, is thrown 
 
 Park, 131 U. S. 88, 97; Vickery v. upon the market, the whole world 
 
 Welsh, 19 Pick. 523-527; Peabody is at liberty to discover, if it can 
 
 V. Norfolk, 98 Mass. 452-460. by any fair means, what the pro- 
 
 3 — Watkins v. Landon, 52 Minn, cess is, and, when discovery is 
 
 219
 
 220 HOPKINS ON TR.\J)EMARKS. [§91 
 
 legal subject of property,"* and its owner has a vested 
 riglit to the secrecy of all those who occupy a fiduciary 
 relationship to his business. So that no one who obtains 
 knowledge of the secret by fraud or unfair means will 
 be permitted to avail himself of the fruits of his fraud, 
 by disclosing the secret or manufacturing under it.'^ 
 
 §91. Where equity will not interfere.— ''Courts of 
 equity will not interfere by injunction in disputes be- 
 tween the owners of quack medicines, meaning thereby 
 remedies or specifics w^iose composition is kept secret, 
 and which are sold to be used by the purchasers with- 
 out the advice of regular or licensed physicans."^ And 
 in 1817 Lord Eldon said: "I do not think that the 
 court ought to struggle to protect this sort of secrets in 
 medicine."^ 
 
 Broadly stated, equity will not interfere to prevent 
 the disclosure of secrets by means of which frauds have 
 been committed.** 
 
 Then there are limits to the extent of the injunction, 
 ■which will be suggested by the facts in each particular 
 case. For example, in one case which has been fre- 
 quently cited, the plaintiff was a tanner and manufac- 
 turer of leather, owning secret processes relating to 
 the treatment of leather. Two of his former employees 
 
 thus made, to employ it in the .effect, see Stewart v. Hook, 118 Ga. 
 
 manufacture of similar articles. In 145, 45 S. E. Rep. 369, 63 L. R. A. 
 
 such a case, the inventor's or man- 255; Dobson v. Graham, 49 Fed. 
 
 ufacturer's property in his process Rep. 17. 
 
 is gone; but the authorities all 5 — Salomon v. Hertz, 40 N. J. 
 
 hold that, while knowledge ob- Eq. 400; Little v. Gallus, 38 N. Y. 
 
 tair.Pd in this manner is perfectly Supp. 487. 
 
 legitimate, that which is obtained 6 — Shiras, Circuit Justice, in 
 
 by any breach of confidence can- Kohler Mfg. Co. v. Beeshore, (2), 
 
 not be sanctioned." Adams, J., in 59 Fed. Rep. 572-574, 8 C. C. A. 215. 
 
 Eastman Co. v. Reichenbach, 20 N. 7 — Williams v. Williams, 3 Mer. 
 
 Y. Supp. 110-116; affirmed, 29 N. 157; Seb. 26. 
 
 Y. Supp. 1143; 79 Hun. 188. 8— Follet v. Jeffreyes, 1 Sim. N. 
 
 4 — Gray, J., in Peabody v. Nor- S. 1; Gartside v. Outram, 3 Jur. N. 
 
 folk, 98 Mass. 452. To the same S. 39.
 
 § 92] TRADE SECRETS. 221 
 
 were enjoined, on his application, from disclosing any of 
 his secret processes, but, in the absence of any proof of 
 an express agreement of secrecy, the court refused that 
 portion of his prayer for relief which asked that the de- 
 fendants be enjoined from disclosing ** where or from 
 whom the complainant buys his materials, and to wliom 
 he sells his goods, or the prices at which he buys or 
 sells;" the chancellor remarking that an agreement in 
 reference to such matters "may well be regarded, in 
 the absence of anything to the contrary in its terras, as 
 limited in its obligation to the time of employment. 
 . . . He (the employee), notwithstanding such agree- 
 ment, might himself, after leaving the employment, use 
 the knowledge he had obtained. He might sell to the 
 customers of his late employer, and buy of those from 
 whom the latter purchased, and do both in comi:>etition 
 with him."^ 
 
 § 92. Protection in equity.— Equity will always act to 
 protect trade-secrets, and this protction may be either 
 affirmative or negative in character. In its affirmative 
 form, relief is granted by injunction to restrain the un- 
 lawful use of such secrets. In its negative fonn, equity 
 protects parties and witnesses against the compulsory 
 disclosure of trade-secrets. 
 
 The plaintiff's witness who testifies merely to the 
 uses and effects of a secret process is privileged from 
 answering questions on cross-examination disclosing 
 the ingredients of such secret process.^ ^ 
 
 Accordingly where the defense to an action for trade- 
 mark infringement is that plaintiff's goods are injurious, 
 the defendant was not permitted to examine him as to the 
 ingredients of which his goods were composed, the court 
 saying, *'if these questions must be answered, every 
 manufacturer will be at the mercy of any one who de- 
 
 9 — Runyon, C, in Salomon v. 10 — Moxie Nerve Food Co. t. 
 HertE, 40 N. J. Eq. 400. Beach, 35 Fed. Rep. 465.
 
 222 HOPKINS ON TRADEMARKS. [§92 
 
 sires to extort from him an account of his process, for 
 an attempt to restrain an infringer would result in the 
 disclosing of all that makes the invention valuable. "^^ 
 
 In one of the early cases in which a property right in 
 trade secrets was recognized, the proceeding was one 
 brought to enforce the sj^ecific performance of a con- 
 tract for the sale of the goodwill of a dyer's business, 
 witli the exclusive use of a secret mode of dyeing. Vice^ 
 Chancellor Leach sustained the contract and directed its 
 specific perfonnance. In the course of his opinion he 
 said: "Although the policy of the law will not permit 
 a general restraint of trade, yet a trader may sell a 
 secret of business and restrain himself generally from 
 using that secret. Let the master, in settling the deed 
 which is to give etfect to this agreement, introduce a 
 general covenant to restrain the use of the secret for 
 twenty years, and a covenant, limited in point of lo- 
 cality, as to carrying on the ordinary business of a 
 dyer, both parties being willing that the agreement 
 should be so modified. "^- 
 
 As against employees who attempt to profit by secrets 
 of which they have obtained knowledge by reason of 
 their employment, the right to relief in equity has always 
 been recognized. In one of the early cases Lord Cran- 
 worth said: "There is no doubt whatever that where a 
 party who has a secret in trade employs persons under 
 contract, express or implied, or under duty, express or 
 implied, those persons cannot gain the knowledge of 
 that secret and then set it up against their employer. "^^ 
 
 ll_Tetlow V. Savournin, 15 v. Darley, 47 L. J. Ch. 567; Thum 
 
 Phila. 170. Co. v. Tloczynski, 114 Mich. 149; 
 
 12 — Bryson v. Whitehead, 1 S. & 72 N. W. Rep. 140; Salomon v. 
 
 S. 74. Hertz, 40 N. J. Eq. 400; Eastman 
 
 13 — Morison v. Moat, 21 L. J. Co. v. Reichenbach, 20 N. Y. Supp. 
 
 Ch. 248; Ansell v. Gaubert, Seton 110; 29 N. Y. Supp. 1143; 79 Hun. 
 
 (4th ed.), 235; Peabody v. Nor- 188; Little v. Gallus, 38 N. Y. 
 
 folk, 98 Mass. 452; Weston v. Hem- Supp. 487; Fralich v. Despar, 165 
 
 mons, 2 Vict. L. R. Eq. 121; Hagg Pa. St. 24; Merryweather v.
 
 § 92] TRADE SECRETS. 223 
 
 In order to obtain this relief it is not necessary that 
 the employee should have been bound to secrecy by con- 
 tract. In an opinion dealing with a case of tliis charac- 
 ter, Judge Williams said: "Having entered the service 
 of complainants, and having liad ini})arted to him their 
 secrets, defendant was, in equity and good conscience, 
 obliged to preserve them as sacredly as his own, and 
 this as well without a contract as with it. "^"^ And an- 
 other court has stated the rule as follows: "By a care- 
 ful reading of the various decisions upon this subject, it 
 will be seen that some are made to depend upon a breach 
 of an express contract between the parties, while others 
 proceed upon the theory that where a confidential rela- 
 tion exists between two or more parties engaged in a 
 business venture, the law raises an implied contract be- 
 tween them that the employee will not divulge any trade 
 secrets imparted to him, or discovered by him in the 
 course of his employment, and that a disclosure of 
 such secrets, thus acquired, is a breach of trust and a 
 violation of good morals, to prevent which a court of 
 equity should intei'vene."'"^ 
 
 Where there is such a contract between employer and 
 
 Moore, L. R. (1892) 2 Ch. 518; F. makes known to me the ways 
 
 Simmons Med. Co. v. Simmons, 81 and secrets of manufacturing and 
 
 Fed. Rep. 163; Stewart v. Hook, stilling of different kinds of oils, 
 
 118 Ga. 445, 45 S. E. Rep. 369, 63 and of the different kinds of grease 
 
 L. R. A. 255; Sanitas Nut Food manufactured by him, that I will 
 
 Co. V. Cemer, — Mich. — , 96 N. W. not use such knowledge or secrets 
 
 Rep. 454; Stone v. Goss, — N. J for my own gain, nor will I ever, 
 
 — , 55 Atl. Rep. 736. so long as I may live, divulge or 
 
 The following contract was held make known in any way the knowl- 
 
 valid and binding upon the defend- edge I may receive while in his 
 
 ant in Fraiich v. Despar. supra: employ, or any part of said secret, 
 
 "I, Andrew Despar, of the city either of mix in oils or otherwise.'* 
 
 of Pittsburg, state of Pennsylvania, 14 — Simmons Med. Co. v. Sim- 
 
 in the employ of E. C. Fraiich, a mons, 81 Fed. Rep. 163-166. 
 
 manufacturer of oils, etc., also of 15 — Adams, J., in Eastman Co. v. 
 
 the said city of Pittsburg, do sol- Reichenbach, 20 N. Y. Super. 110- 
 
 emnly swear that if the said E. C. 116.
 
 224 HOPKINS ON TRiVDEMARKS. [§ 92 
 
 employee, it is not objectionable as being in restraint of 
 trade.^^ 
 
 The obligation of secrecy extends to every character 
 of employment. Thus, canvassers who have accumu- 
 lated materials in the course of soliciting advertisements 
 for their employer may be enjoined from using such 
 material for a rival publication;^''^ and an engine 
 maker's clerk who had made a table of dimensions of 
 Ills employer's engines was enjoined from disclosing the 
 data so obtained.^ ^ 
 
 Where it affirmatively appears that the trade secret 
 exists, that it has been imparted in confidence to the 
 defendant, and that the plaintiff will be injured by the 
 disclosure, if one is made, the defense that defendants do 
 not intend to use or divulge the secret will not be given 
 much weight, for the reason that under tlie circumstances 
 an injunction cannot hann the defendant, and if the 
 injunction was withheld, and the secret disclosed, the 
 injury to the plaintiff would be one which the law is 
 practically powerless to remedy.^'' 
 
 Where a designer, employed for his special skill by a 
 manufacturer, makes the entries of formulas invented 
 by him in the course of his employment in books of his 
 own instead of books furnished by his employer for the 
 purpose, the employer is entitled to the knowledge of 
 the formulas.2^ 
 
 The principles under consideration extend beyond the 
 relationshiiD of master and servant. In fact, through- 
 out all of this book that relates to equitable remedies we 
 are but dealing with the application of those remedies 
 which has been made upon specific forms of fraud. The 
 
 16 — Simmons Med. Co. v. Sim- 19 — Russell v. Lundeen, 72 Off. 
 
 mons, 81 Fed. 163; Peabody v. Nor- Gaz. 420. 
 
 folk, 98 Mass. 452. 20— Dempsey v. Dobson, 174 Pa. 
 
 17— Lamb v. Evans, L. R. (1892) 122, 34 Atl. Rep. 459, 32 L. R. A. 
 
 3 Ch. 462. 761. 
 
 18 — Merryweather v. Moore, L. 
 R. (1892) 2 Ch. 522.
 
 § 92j TRADE SECRETS. 225 
 
 cases analogous to trade secrets are many, and the lan- 
 guage of Vice-Chaucellor Turner in the leading case of 
 Morrison v. Moat is apj)licable to all of them: ''Differ- 
 ent grounds have been assigned for the exercise of 
 the jurisdiction. In some cases it has been referred to 
 property, in others to contract, and in others, again, it 
 has been treated as founded upon trust or confidence, 
 meaning, as I conceive, that the court fastens the obli- 
 gation on the conscience of the party, and enforces it 
 against him in the same manner as it enforces, against a 
 party to whom a benefit is given, the obligation of per- 
 forming a promise, on the faith of which the benefit has 
 been conferred. "^^ 
 
 So a photographer has been restrained from making 
 prints from a negative bearing the plaintiff's portrait ;22 
 a lithographer, from making copies of the plaintiffs' 
 pictures in excess of the number ordered by the plaint- 
 iffs ;23 and the exhibition of etchings, obtained by the 
 defendant through a breach of trust, has been re- 
 strained,-* as has the publication of lectures, not pub- 
 lished or authorized to be published by the lecturer,^^ 
 and the publication of private letters.^^ 
 
 The ground for enjoining the publication of private 
 letters has sometimes been based upon a property right 
 in them,27 and sometimes upon the ground that their 
 publication would be painful to the writer.^^ 
 
 21— Morison v. Moat, 20 L.. J. Ch. Q. B. D. 629, Levyeau v. Clements, 
 
 248. 175 Mass. 376; 50 L. R. A. 397. 
 
 22— Pollard v. Photographic Co.. 24— Albert v. Strange. 2 DeG & 
 
 40 C. D. (Eng.) 345. Moore v. gm. 652. 
 Rugg. 44 Minn. 28, 9 L. R. A. 58. „' ." ,, tt . ^. 
 
 AR XT w D^,, 1^1 rru *• 25— Abernethy v. Hutchinson, 3 
 
 46 N. W. Rep. 141. The negative t t /-.u oi . 
 
 ,,..,, Ij. o. Cn. Lii. 
 may belong to the photographer, 
 
 but he has no right of reproduc- 26— Earl of Lytton v. Devey. 54 
 
 tion without the purchaser's con- ^- -^^ ^^' ^93; Perceval v. Phipps. 
 
 sent. Corliss v. E. W. Walker Co, ^ ^®^- * ^- ^^• 
 
 64 Fed. Rep. 280; Press Pub. Co. 27— Pope v. Curl, 2 Atk. 342; 
 
 V. Falk. 59 Fed. Rep. 324. Woolsey v. Judd, 4 Duer 379. 
 
 23— Tuck & Sons v. Priester, 19 28— Gee v. Pritchard, 2 Swanst. 
 16
 
 226 HOPKINS ON TRADEMARKS. [§92 
 
 A peculiar state of facts developed in a recent case is 
 worthy of notice. The plaintiff, a hardware dealer, had 
 published and distributed to the trade catalogues in 
 which the prices were marked in figures, letters and 
 characters, according to a secret code devised by plain- 
 tiff. The defendant, who owned a copy of the catalogue, 
 so marked with prices in secret characters, ol>- 
 tained a copy of the key to the code from one of the 
 plaintiff's employees, and incorporated the secret code 
 from the key into the catalogue. Upon this state of facts 
 the defendant was enjoined from disclosing the informa- 
 tion thus obtained, and a receiver was appointed to take 
 charge of the defendant's copy of the catalogue.^'' This 
 case api^ears to be in conflict with the English case of 
 Renter's Telegram Co. v. Byron, where the plaintiffs 
 devised a cypher code containing cypher words indicat- 
 ing the names of their customers. This cypher was 
 communicated to the defendant while he was in the em- 
 plojTuent of the plaintiffs. After he left the plaintiffs 
 and started a rival business, he sent advertisements to 
 their customers stating that he had their cyphers, and 
 soliciting their custom. The court held that the de- 
 fendant was guilty of no breach of trust because the 
 cyphers were known to the customers, and the defend- 
 ant could have obtained the cyphers from any of them 
 who might choose to do business with him.^^ The de- 
 cision of the American court seems to be correct in prin- 
 ciple. 
 
 In every case where the plaintiff seeks protection for 
 a trade secret, it must appear that it really is a secret. 
 If a so-called secret process is lawfully known to others 
 in the trade, no one will be enjoined from disclosing or 
 
 402; Wetmore v. Scovell, 3 Edw. Waibel, 1 So. Dak. 488. 47 N. W. 
 Ch. 51^. Rep. 814, 11 L. R. A. 267. 
 
 29 — Simmons Hardware Co. v. 30 — Reuter's Telegram Co. v. 
 
 Byron, 43 L. J. Ch. 661.
 
 § 92 j TRADE SECRETS. 227 
 
 using it.^^ But the fact tliat the secret has been the sub- 
 ject of a patent, since expired, which remained a mere 
 paper patent, and dormant, does not negative the fact 
 that it is or may be still a secret. ''Many an invention 
 and many an idea of value are doubtless to be found in 
 the records of the patent office, but so far as public 
 actual knowledge thereof is concerned, they might as 
 well be non-existent. "^- 
 
 Contracts relating to trade secrets are, of course, sub- 
 ject to the same rules of construction as other contracts. 
 So in a case where the defendant sold a formula for mak- 
 ing certain soap and "agreed to file and surrender his 
 right and claims in the process and formulae and making 
 of said soap," and that he "would not sell any plants 
 in the United States for the manufacture of that par- 
 ticular kind of soap, during the tenn of twenty years," 
 it was very properly decided that the contract did not 
 preclude him from selling or putting up any other kind 
 of a soap plant to or for anybody else; and where he 
 put up a soap plant for making soaps in general, and 
 the owner of the plant then began the manufacture of 
 the particular soap in question, there was no cause of 
 action either as against him or the owners of the plant.^^ 
 
 Employees may be enjoined from disclosing trade 
 secrets even in the absence of an express agreement of 
 secrecy, as we have seen, and it is no defense that the 
 employee was a minor at the time he entered the em- 
 ployment.^* 
 
 A defendant had agreed upon entering the employ- 
 ment of the plaintiff as a workman, on a salaiy, to dis- 
 close certain secret processes known only to him. He 
 
 31— Bell & Bogart Soap Co. v. 33— Bell & Bogart Soap Co. v. 
 
 Petrolia Mfg. Co., 54 N. Y. Supp. Petrolia Mfg. Co., 54 N. Y. Supp. 
 
 663-666; Bristol v. Equitable Life 663. 
 
 Assurance Society, 132 N. Y. 264; 34— Little v. Gallus, 38 N. Y. 
 
 30 N. E. Rep. 506. Supp. 487. 
 
 32 — Shiras, J., in Benton v. 
 Ward, 59 Fed. Rep, 411-413.
 
 228 HOPKINS ON TR.U)EMARKS. [§ 92 
 
 failed to make tlie disclosure and left the plaintiff's em- 
 ployment. In defense to an application for an injmac- 
 tion restraining liim from imparting the secret processes 
 to others, he urged that his employment had been for no 
 definite tenn. This defense did not avail in view of the 
 fact that the plaintiff had invested in material it expected 
 to use in connection with the secret processes. The court 
 observed that '* although the processes were not patented, 
 yet, as they were secret, and as their secrecy was pro- 
 tected by the contract between the defendant and the 
 plaintiff, the plaintiff is in a situation to insist that the 
 defendant, who agreed to protect the secrecy of these 
 processes, and thus preserve their value, should not be 
 permitted to disclose them, and thus deprive the plain- 
 tiff of the valuable property which he had induced it to 
 purchase. ' '^^ 
 
 Where an employe of a partnership invents a secret 
 process for the use of the firm, either member of the 
 firm may after dissolution use the secret process, and 
 either member will, on the complaint of another member, 
 be enjoined from representing himself as being the sole 
 owner of such secret process.'® 
 
 Trade secrets or processes, if reduced to writing, are 
 subject to levy and sale under a common-law writ of 
 execution.''^ ^AHiere one not a party to the suit had 
 machinery of his own, used in connection with a secret 
 process belonging to him, on premises belonging to a 
 corporation for which a receiver was appointed, on the 
 facts being presented to the court the order appointing 
 the receiver was so modified as to permit the third party 
 to remove his machinery from the premises, and without 
 the receiver being given the opportunity to inspect the 
 machinerj^, as such inspection would lead to the dis- 
 ss— Rumsey, J., in National Gum 25 N. Y. Supp. 857; affirmed, 83 
 & Mica Co. V. Braendly, 51 N. Y. Hun, 43; 31 N. Y. Supp. 857. 
 Supp. 93-97. 37 — Hanley v. Fidelity Ins. T. A 
 
 36 — Baldwin v. Von Micheroux, S. Co., 8 Pa. Dist. R. 207.
 
 § 92] TRADE SECRETS. 229 
 
 coveiy of the process.^" Trade secrets, such as recipes 
 or processes are proper subjects oi" taxation.^'-' A false 
 reijresentation as to the efficiency of a secret process 
 is ground for rescinding a contract for its sale*" 
 
 It would seem clear, on principle, that a witness not a 
 party to a suit would be fully protected against any 
 attempt to compel him to disclose his trade secrets, yet 
 we find a case holding that a subpoena duces tecum call- 
 ing for the production of drawings by such a witness 
 was enforced, notwithstanding his objection that the 
 drawings related to a secret process used by him.^' 
 Tliis decision is unsupported by any authority. On the 
 other hand, a defendant in an action for infringement of 
 a process patent will not be compelled to submit to an 
 inspection of his factory where his answer avers that 
 his process is not that of the patent, and is his own 
 secret, unpatented process, used from a period antedat- 
 ing the patent in suit.^^ §4908, United States Revised 
 Statutes, a provision relating to the taking of testimony 
 in interference cases pending in the Patent Office, pro- 
 vides that no witness shall be guilty of contempt for 
 disobeying a subpoena issued by the clerk of any court 
 of the United States, as provided for by §4906, ''for 
 refusing to disclose any secret invention or discovery 
 made or owned by himself." In an interference pro- 
 ceeding, one of the parties to the interference refused 
 to answer an interrogatory propounded to him, placing 
 his refusal upon the ground that the question sought 
 to disclose a secret discover}^ or invention, such as is 
 protected by §4908. It was held that the witness was 
 not entitled to the protection of the section for the rea- 
 
 38 — Witt V. Reed Electric Co., 41 — Johnson Steel Street Rail 
 
 187 Pa. 424; 41 Atl. Rep. 317. Co. v. North Branch Steel Co., 48 
 
 39— Re Brandreth, 59 N. Y. Supp. Fed. Rep. 191. 
 
 1092; 28 Misc. Rep. 468. 42— Stokes Bros. Mfg. Co. v. Hel- 
 
 40 — Finley Rubber-Varnish & En- ler, 56 Fed. Rep. 297. 
 amel Co. v. Flnley, N. J. Ch. 32 
 Atl. Rep. 740.
 
 230 HOPKINS ON TRADEMARKS. [§92 
 
 son that the alleged secret possessed so intimate a con- 
 nection with the subject-matter of the patent, that he 
 had no right to withhold it from the public. The court 
 said, ''In applying for the patent it was his duty to dis- 
 close the most available method known to him of carry- 
 ing the discovery into effect— in other words, of manu- 
 facturing his new fabric. This information, which may 
 be used by others after his patent has expired, is an 
 important part of the compensation which the public ob- 
 tains for the temporary monopoly granted him. If he 
 could withhold it, disclosing an inferior method simply, 
 which he does not employ, the discovery would never be- 
 come available public property, as the patent laws con- 
 template it shall. He would have a monopoly after his 
 patent had expired, which would continue as long as he 
 could conceal this material part of his discovery. I do 
 not say that such disclosure was essential to the validity 
 of his patent, (that question is not before me,) but the 
 information withheld does not constitute such a secret 
 as the section, or equity, protects. "^^ 
 
 It is no defense to an action for royalties on the 
 manufacture of articles invented by the plaintiff and 
 made under his direction and from dies furnished by 
 him, that the article was not patented; ''so long as the 
 inventor holds the secret in his own possession, it is 
 property, or a thing of value, for the transfer of which 
 he may demand a price; and, if he passes it over to a 
 purchaser on an agreement to pay, it is no defense to 
 the latter to say that there is no patent."" One who 
 has become bound as an employee not to divulge a trade 
 secret, cannot defend on the ground that the secret was 
 dishonestly procured by complainant's assignee.^^ The 
 
 43_Dornan v. Keefer, 49 Fed. 45— Vulcan Detinning Co. v. 
 
 Rep. 462, 58 Off. Gaz. 1093. American Can Co., N. J. Ch., 58 
 
 44— Mitchell, J., in Kroegher v. Atl. Rep. 290. 
 McConway & Forley Co., 149 Pa. 
 St. 444-457; 23 Atl. Rep. 341.
 
 § 93] TRADE SECRETS. 231 
 
 general rule, however, is well settled, that **if the giv- 
 ing of the testimony sought, or the production of the 
 documents called for will disclose what are character- 
 ized as 'trade-secrets,' the witness has a legal privilege 
 to witlihold it."^'' In a bill to enjoin the disclosure of 
 a secret process, it is not necessary to state what the 
 process is.^^ 
 
 § 93. The right of privacy.— Judge Cooley said ''the 
 right of one's person may be said to be a right of com- 
 plete immunity; to be let alone."*" This "right to be 
 let alone," if extended to the unauthorized publication 
 of the portrait of an individual, would constitute the 
 right of privacy concerning which there has been con- 
 siderable discussion of late years. To say whether that 
 right will ever be generally recognized, would be merely 
 a guess in the present state of the adjudications, and 
 the guess would be much more hazardous, if one were to 
 say whether or not the right of privacy could ever be 
 extended to the protection of anything more than the 
 reproduction of the portrait of an individual. As yet, 
 there are but few decisions upon the subject, although it 
 has been considerably discussed in legal and other 
 periodicals.^*^ 
 
 The difficulty attendant upon the assertion of this 
 right appears to reside principally in the apparent im- 
 possibility of extending the protection of equity to this 
 ' ' right to be let alone, ' ' to anything beyond the mere un- 
 authorized reproduction of the likeness of an individual, 
 without creating a species of lese majeste, and establish- 
 
 46 — Cochran, J. in Crocker- Harv. Law Rev. 193. Other arti- 
 
 Wheeler Co. v. Bullock, 134 Fed. cles, 32 Cent. L. J. 69; 40 Cent. L. 
 
 Rep. 241, 245. J. 53; 49 Cent. L. J. 379; 55 Cent. 
 
 47— S. Jarvis Adams Co. v. L. J. 123; 57 Cent L. J. 361; 30 
 
 Knapp, 58 C. C. A. 1, 121 Fed. Rep. Am. Law Rev. 614; 12 Yale L. J. 
 
 34. 40. 35; 24 Nat. Corp. Rep. 709; 25 
 
 48— Cooley on Torts, 139. Nat. Corp. Rep. 183, 415. 
 
 49— "The Right of Privacy," 4
 
 232 HOPKINS ON TRADEMARKS. [§93 
 
 ing a judicial censorship of all critical matter relating to 
 an individual, wliicli happens to displease him. 
 
 Thus, Judge Parker has stated, in his recent opinion 
 denying the existence of the right of privacy, that 'Hhe 
 so-called 'right of privacy' is, as the phrase suggests, 
 founded upon the claim that a man has a right to pass 
 through this world, if he wills, without having his pic- 
 ture published, his business enterprises discussed, his 
 successful experiments written up for the benefit of 
 others, or his eccentricities commented upon, either in 
 hand-bills, circulars, catalogues, periodicals, or news- 
 papers; and necessarily, that the things which may not 
 be written and published of him must not be spoken of 
 him by his neighbors, whether the comment be favorable 
 or otherwise. "^° This dictum calls attention to the 
 rediictio ad ahsiirdum which would result if the ''right 
 to be let alone" were to be literally asserted. And at 
 the threshold of the inquiry, it is obvious that this 
 "right to be let alone" must be so limited as not to 
 interfere with freedom of speech. The right of the in- 
 dividual to be protected against publication of false and 
 defamatory matter is fully established, and adequately 
 protected by the law. In going beyond the law of slan- 
 der and libel, in recognition of the individual's right 
 not to be even criticised, or commented upon, a task is 
 being undertaken which is both delicate and difficult, if 
 it is not, indeed, impossible. That any such right ex- 
 isted in the common law has been asserted, but scarcely 
 proven. Again quoting from Judge Parker, "mention 
 of such a right is not to be found in Blackstone, Kent, 
 or any other of the great commentators upon the law, 
 nor . . . does its existence seem to have been as- 
 serted prior to abont the year 1890."^^ 
 
 Of course, the absence of precedent does not negative 
 
 50 — Roberson v. Rochester Fold- 51 — Roberson v. Rochester Fold- 
 ing Box Ck)., 171 N. Y. 540. in^ Box Co., 171 N. Y. 540.
 
 § 93] TRADE SECRETS. 233 
 
 the absence of a right and its corresponding remedy, but 
 the right, about which so much has Ix^en written witli the 
 result that the only definition of it whicli has been fonnu- 
 lated is contained in the words "the right to be let 
 alone," a definition which, on its face, cannot be liter- 
 ally construed, and whose necessary limitation seems to 
 be incapable of definition, must be closely scrutinized, 
 and carefully weighed before it can secure a place in 
 our jurisprudence. 
 
 In 1892 this right was distinctly affirmed by the 
 supreme court of New York in a case^- in which an in- 
 junction issued against the execution and display at the 
 Chicago World's Fair of a statue of Mrs. Schuyler, 
 which statue was to be designated "The Typical Philan- 
 thropist." The proceeding was brought by a relative of 
 Mrs. Schuyler, and the injunction issued against the 
 members of an unincorporated association under whose 
 auspices the display was to be made. The motion for 
 injunction pendente lite was granted upon the ground 
 that Mrs. Schuyler was not a public character because 
 she had not placed herself before the public, either in 
 accepting public office or in becoming a candidate for 
 office, or as an artiste or literateure. This order being 
 appealed from, Van Brunt, P. J., said: "While con- 
 curring with the conclusion arrived at by the learned 
 justice below, I cannot subscribe to the doctrine which 
 seems to pervade the opinion rendered upon the deci- 
 sion of the motion, that if ]\[rs. Schuyler had been a 
 public character, as defined by him, this motion should 
 have been denied. The claim that a person who volun- 
 tarily places himself before the public, either by accept- 
 ing public office or becoming a candidate for office, or 
 as an artist or literary man, thereby surrenders his per- 
 sonality while living and his memory when dead to the 
 public, to be used or abused, as any one of that irre- 
 
 52— Schuyler v. Curtis, 19 N. Y. Supp. 264.
 
 234 HOPKINS ON TRADEMARKS. [§ 93 
 
 sponsible body may see fit, cannot for a moment be 
 entertained. . . . It is urged upon the part of the 
 api^ellants that even if Mrs. Schuyler were alive, and 
 had the same objection to the defendants' proposed 
 action that the plaintiff now has, she would be remedi- 
 less and powerless. If such were the fact, it would 
 certainly be a blot upon our boasted system of juris- 
 prudence that the courts were powerless to prevent the 
 unwarranted doing of things by persons who are mere 
 volunteers, which would wound in the most cruel man- 
 ner the feelings of many a sensitive nature. It is fur- 
 ther urged that the plaintiff has no standing in court 
 and that the fancied injury to the plaintiff complained 
 of, if any such injurj^ can be in any way discovered, is 
 certainly not such an injury as the court will grant an 
 injunction to prevent, because it is not an injuiy to his 
 person, to his estate, or to his good name, and is not a 
 violation of his privacy or seclusion, and because the 
 plaintiff stands in the same relation to the defendants 
 and to their i)roject as does all the rest of the world, 
 and in no other relation. The result of this claim is that 
 when a x>erson is dead there is no power in any court to 
 protect his memory, no matter how outrageously it may 
 be insulted. The feelings of relatives and friends may 
 be outraged, and the memory of the deceased degraded 
 with impunity, by any person who may desire thus to 
 affect the living. It seems to us that such a proposition 
 carries its own refutation with its statement. It can- 
 not be that by death all protection to the reputation of 
 the dead and the feelings of the living, in connection 
 with the dead, has absolutely been lost. The memory 
 of the deceased belongs to the sur\dving relatives and 
 friends, and such relatives have a right to see that that 
 which would not have been permitted in respect to the 
 deceased when living shall not be done with impunity 
 when the subject has become incapable of protecting 
 himself. It is undoubtedly true that cases of the char-
 
 § 93] TRADE SECRETS. 235 
 
 acter now before the court are not to be found in the 
 books. But it is probably the first time in the history 
 of the world that the audacious claim which is here 
 presented has ever been advanced. If it had, we have 
 no doubt the books would have contained a record in 
 connection with the same. The fact that the plaintiff 
 has suffered no pecuniary damage, redress for which is 
 sought in this action, is no answer to the application, 
 because one of the most important departments in the 
 jurisprudence of courts of equity is the prevention of 
 wrongs which would be otherwise irreparable because 
 courts of law cannot afford any remedy in damages.'" 
 
 Upon entering judgment in the same case, Ingraham, 
 J., calls attention to the fact that the action of the de- 
 fendants was not a libel nor within the provisions of the 
 New York constitution securing to each citizen the right 
 to freely speak, write and publish his sentiments on all 
 subjects.- 
 
 In a subsequent case (1893) the superior court of 
 New York city reaffirmed the doctrines of Schuyler v. 
 Curtis in the case of an actor whose portrait was to be 
 published in connection with that of another member of 
 his profession as the subjects of a voting contest to 
 ascertain which was the more popular, and such publi- 
 cation was enjoined; the court remarking that ''the 
 courts will in such cases secure to the individual what 
 has been aptly termed the right to be let alone. "^ 
 
 In 1895 Schuyler v. Curtis reached the New York 
 court of appeals, and in an elaborate opinion delivered 
 by Judge Peckham the judgment of the lower court was 
 reversed. In the course of his opinion, however, he 
 says: "For the purpose we have in view it is unneces- 
 sary to wholly deny the existence of the right of privacy 
 
 1— Schuyler v. Curtis, 64 Hun. 3— Marks v. Jaffa, 26 N. Y. 
 594. Supp. 908, 6 Misc. Rep. 290. 
 
 2— Schuyler v. Curtis. 24 N. Y. 
 Supp. 509-511.
 
 236 HOPKINS ON TR.VDEMARKS. [§93 
 
 to which the plaintiff appeals as the foundation of his 
 cause of action. It may be admitted that courts have 
 power in some cases to enjoin the doing of an act where 
 the nature or character of the act itself is well calculated 
 to wound the sensibilities of an individual, and where 
 the doing of the act is wholly unjustifiable, and is, in 
 legal contemplation, a wrong, even though the existence 
 of no 'property,' as that term is generally used, is in- 
 volved in the subject. 
 
 "If the defendant had projected such a work in the 
 lifetime of Mrs. Schuyler, it would perhaps have been 
 a violation of her individual right of privacy, because 
 it might be contended that she had never occupied such 
 a position towards the public as would have authorized 
 such action by any one as long as it was in opposition 
 to her wishes." Judge Gray in a dissenting opinion, 
 stated, ''I cannot see why the right of privacy is not a 
 form of property, as much as the right of complete im- 
 munity of one's person."* Concerning this case, the 
 supreme court of Georgia has stated that it ''settles 
 nothing as to the existence of a right of privacy, but 
 merely rules that if it exists at all, it is a personal right, 
 and dies with the person."^ 
 
 Judge Parker has said of this decision that "It is not 
 authority for the existence of a right to privacy which 
 entitles a party to restrain another from doing an act 
 which, though not actionable at law, occasions the plain- 
 tiff mental distress.'"^ 
 
 Pending this appeal another New York court had held 
 that "a parent cannot maintain an action to enjoin the 
 unauthorized publication of the portrait of an infant 
 
 4 — Schuyler v. Curtis, 42 N. E. 5 — Pavesich v. New England Life 
 Rep. 22-24; 147 N. Y. 434; 49 Am. Ins. Co., 50 S. E. Rep. 68. 
 St. Rep. 671; 31 L. R. A. 286. 6— Roberson v. Rochester Fold- 
 
 ing Box Co., 171 N. Y. 540.
 
 55 93] TRADE SECRETS. 237 
 
 child, and for damages for iujuiy to his sensibilities 
 caused by the invasion of his child's privacy, for the law 
 takes no cognizance of a sentimental injury, independent 
 of a wrong to i>erson or property."^ 
 
 In 1902 the New York court of appeals finally held 
 that there was no right of privacy at law or enforceable 
 in equity.** 
 
 The supreme court of Michigan in 1899 held that 
 it had no jurisdiction to enjoin the use of the name 
 and likeness of a deceased person used upon a label ap- 
 plied to a cigar named after him, so long as such publi- 
 cation did not amount to a libel. At the conclusion of 
 an exhaustive review of the cases, Hooker, J., said: 
 ''This 'law of privacy' seems to have obtained a foot^ 
 hold at one time in the history of our jurisprudence, not 
 by that name, it is true, but in effect. It is evidenced 
 by the old maxim, the greater the truth the greater the 
 libel ; and the result has been the emphatic expression of 
 public disapproval, by the emancipation of the press and 
 the establishment of freedom of speech, and the aboli- 
 tion in most of our states of the maxim quoted, by con- 
 stitutional provisions. ' ' 
 
 "The limitation upon the exercise of these rights be- 
 ing the law of slander and libel, whereby the publication 
 of an untruth that can be presumed or shown to the sat- 
 isfaction, not of the plaintiff, but of others (i. e., an im- 
 partial jury), to be injurious, not alone to the feelings 
 but to the reputation, is actionable. Should it be thought 
 that it is a hard rule that is applied in this case, it is 
 only necessary to call attention to the fact that a ready 
 remedy is to be found in legislation. We are not satis- 
 fied, however, that the rule is a hard one, and think that 
 
 7— Murray v. Engraving Co., 28 ing Box Co., 171 N. Y. 538, 64 N. 
 N. Y. Supp. 271. E. Rep. 442, reversing s. c. 71 N. 
 
 8 — ^Roberson v. Rochester Fold- Y. Supp 876.
 
 238 HOPKINS ON TRADEMARKS. [§93 
 
 the consensus of opinion must be that the complainants 
 contend for a much harder one."" 
 
 The onlj^ case in which the question of the existence 
 of the right of privacy has been brought before the fed- 
 eral courts is one which the widow and children of 
 George H. Corliss, an inventor, brought to enjoin the 
 publication of a biographical sketch and portrait of Mr. 
 Corliss. The plaintiffs put their case squarely upon the 
 proposition that the proposed publication would be an 
 invasion of the right of privacy which a court of equity 
 should prote<!t. There was some discussion upon the 
 question whether Mr. Corliss was a public or a private 
 character. The court distinctly denied the existence of 
 any right of privacy which it could recognize, saying 
 that under the law "one can speak and publish what 
 he desires, provided he commits no offense against 
 public morals or private reputation. "^^ The opinion pro- 
 ceeds flatly on the theory that a court of equity has no 
 power to restrain a libelous publication.^^ At the same 
 time the publication of the portrait was enjoined because 
 the original had been obtained by the defendant from 
 the plaintiifs on certain conditions which it had not com- 
 plied with. 
 
 Upon the motion to dissolve the injunction certain ad- 
 ditional evidence had been adduced, and the court in its 
 opinion finds the fact to be that the defendant had ob- 
 tained the portrait from a photograph; and that Mr. 
 Corliss was in fact a public character. The court says: 
 ''The distinction in the case of a picture or photograph 
 lies, it seems to me, between public and private charac- 
 
 9_Atkinson v. John E. Doherty 11— Boston Diatite Co. v. Flor- 
 
 & Co.. 121 Mich. 372, 80 N. W. Rep. ence Mfg. Co., 114 Mass. 69; Bran- 
 
 285-289. dreth v. Lance, 8 Paige, 24; Kid<l 
 
 10— Corliss V. E. W. Walker Co., v. Horry, 28 Fed. Rep. 773. 
 57 Fed. Rep. 434.
 
 § 93] TRADE SECRETS. 239 
 
 ter. A private individual should be protected against 
 the publication of any portraiture of himself, but where 
 an individual becomes a public character the case is 
 different. A statesman, author, artist, or inventor, wiio 
 asks for and desires public recognition, may be said to 
 have surrendered this right to the i>ublic."^^ 
 
 The right of privacy has been recognized by the Pat- 
 ent Office, and, as to portraits of living individuals, the 
 Act of 1905 prohibits their registration without the con- 
 sent of the person.'^ 
 
 In a recent opinion, the Supreme Court of Georgia, 
 per Cobb, J., has sustained the right of privacy as of 
 common law origin, in the following language: 
 
 *'The right of privacy has its foundation in the in- 
 stincts of nature. It is recognized intuitively, conscious- 
 ness being the witness that can be called to establish its 
 existence. x\ny person whose intellect is in a normal 
 condition recognizes at once that, as to each individual 
 member of society, there are matters private, and there 
 are matters public, so far as tlie individual is concerned. 
 Each individual as instinctively resents any encroach- 
 ment by the public upon his rights which are of a private 
 nature as he does the withdrawal of those of his rights 
 which are of a public nature. A right of privacy in 
 
 12 — Corliss V. E. W. Walker Co., sent of Dewey to appropriate it as 
 
 64 Fed. Rep. 280-282. a trademark. A living celebrity is 
 
 13 — Thus in a case presented entitled to protection from the or- 
 
 to the Patent Ofl5ce where the ap- dinary trader." Duell, Commis- 
 
 plicant sought to register the mark sioner, in Ex parte Mclnnemey, 85 
 
 "Dewey's Chewies," for confec- Off. Gaz. 149. The Act of 1905 in 
 
 tionery. The commissioner said, § 5 contains the provision "that 
 
 in response to the applicant's sug- no portrait of a living individual 
 
 gestion that "Dewey's" is not an may be registered as a trademark. 
 
 ordinary surname: "I cannot re- except by the consent of such in- 
 
 frain from expressing the opinion dividual, evidenced by an instrn- 
 
 that even if it be registrable, no ment in writing." 
 one has the right without the con-
 
 240 HOPKINS ON TRADEMARKS. [§93 
 
 matters purely private is therefore derived from natural 
 law." 
 
 "The injuria of the Roman law, sometimes translated 
 'injury' and at other times 'outrage,' and which," says 
 the court, ''is generally understood at this time to con- 
 vey the idea of legal wrong, was committed, not 
 
 only by striking with the fists or with the club or lash, 
 but also by shouting until a crowd gathered around one, 
 and it was an outrage or legal wrong to merely follow 
 an honest woman or young boy or girl ; and it was de- 
 clared in unequivocal terms that these illustrations were 
 not exhaustive, but that an injurj^ or legal wrong was 
 committed 'by numberless other acts.' Sandar, Just. 
 Hammond's ed. 499; Poste, Inst, of Gains, 3d ed. 449. 
 The punishment of one who had not committed any 
 assault upon another, or impeded in any way his right 
 of locomotion, but who merely attracted public attention 
 to the other as he was passing along a public highway or 
 standing upon his private grounds, evidences the fact 
 that the ancient law recognized that a person had a legal 
 right 'to be let alone,' so long as he was not interfering 
 with the rights of other individuals or of the public. "^^ 
 
 The decision of the Georgia Court was unanimous. 
 Judge Parker's opinion in the case of Roherson v. 
 Rochester Folding-Box Co. was concurred in by three, 
 and dissented from by the other three judges. A com- 
 parison of the opinions of Judge Parker and Judge 
 Cobb discloses the best arguments for and against the 
 existence of the right of privacy; that of Judge Cobb is 
 well reasoned, and admirably stated; that of Judge 
 Parker is more concisely expressed, and certainly as well 
 grounded in reason. The conservative views of Judge 
 Parker are summed up in the following words: "The 
 
 14 — Pavesich v. New England Life Ins. Co., 50 S. E. Rep. 68.
 
 §93] TRADE SECRETS. 241 
 
 legislative body could very well interfere and arbitrarily 
 provide that no one should l^e permitted for his own 
 selfish puq)ose to use the picture or the name of another 
 for advertising purposes without his consent. In such 
 event no embarrassment would result to the general body 
 of the law, for the rule would be applicable only to 
 cases provided for by the statute. The courts, however, 
 being without authority to legislate, are required to 
 decide cases upon principle, and so are necessarily em- 
 barrassed by precedents created by an extreme, and 
 therefore unjustifiable, application of an old princi- 
 ple. '"^ 
 
 15 — Roberson v. Rochester Fold- see S. C, 65 N. Y. Supp. 1109, 71 
 .'ng Box Co.. 171 N. Y. 540. For N. Y. Supp. 876. 
 the opinions of the courts below. 
 
 !•
 
 CHAPTER Vin. 
 
 INFRINGEMENT. 
 
 §94. Of infringement generally.— The word ''in- 
 fringement ' ' is difficult of exact definition. For the pur- 
 poses of the present discussion, its broadest meaning, 
 that of the infraction or invasion of another's trade 
 rights, by passing off, or attempting to pass off, upon 
 the public one's own goods as his, may suffice. As to 
 technical trademark infringement, it should be more nar- 
 rowly defined as the infraction or invasion of any por- 
 tion of the mark, symbol or device in which one has 
 acquired a right of property, either by way of reproduc- 
 tion in fac-simile, or imitation. An English text-writer 
 has thus defined it: "Infringement is the use by the 
 defendant, for trading purposes, in connection with 
 goods of the kind for which the plaintiff's right to exclu- 
 sive use exists, not being the goods of the plaintiff, of 
 a mark identical with the plaintiff's mark, or either 
 comprising some of its essential features or colourably 
 resembling it, so as to be calculated to cause the goods to 
 be taken by ordinary purchasers for the goods of the 
 plaintiff."^ Vice-Chancellor Shadwell stated the rule to 
 be that, if a mark contains twenty-five parts and but one 
 is taken (i. e., imitated or copied), liability has been 
 created thereby, and there has been a technical infringe- 
 ment.^ 
 
 1 — Kerly on Trademarks (2(i pirated." Filley v. Fassett, 44 Mo. 
 
 ed., London, 1901), p. 363. 173; Cox, 530; Seb. 313. And to 
 
 2 — Guinness v. Ullmer, 10 L. T. the same effect, Braham v. Bustard, 
 
 127; Seb. 89. "The imitation need 9 L. T. N. S. 199; 1 Hem. & M. 
 
 not be exact or perfect. It may be 447; 11 W. R. 1061; 2 N. R. 572; 
 
 limited or partial; nor is it requi- Seb. 226. 
 site that the whole should be 
 
 242
 
 § 95] INFRINGEMENT. 243 
 
 § 95. No trademark in form, size, material or color.— 
 
 It is a well settled rule that there can be no trademark 
 right in the mere form, size or color •' of an article used 
 commercially, or the form, size or color of the package 
 containing it.-* It is also an established princi])le that 
 there can be no trademark right in the directions, no- 
 tices or usual advertising matter used upon or in de- 
 scription of merchandise.'^ There has never been a 
 deviation from this rule in the adjudication of the courts 
 of this country. Whenever relief has been granted 
 against an imitator or counterfeiter of either the form, 
 size, color, method of packing, advertising, or directions 
 used by a legitimate dealer, it has been granted upon the 
 broad theory of regulating fraud, and not upon the nar- 
 rower ground of technical trademark infringement. 
 
 There can be no technical trademark in a well known 
 material substance, such as a tin tag impressed upon 
 plug tobacco f nor in a method of packing merchandise ;^ 
 or a display card, with horizontal lettering, for hooks 
 
 3— Victor Talking Machine Co. 28 W. R. 330; Van Camp Packing 
 
 V. Armstrong, 132 Fed. Rep. 711. Co. v. Cruikshanks Bros. Co., 90 
 
 4 — Moorman v. Hoge, 2 Sawyer, ^^^- Rep. 814; Von Mumm v. 
 
 78; Harrington v. Libby, 14 Witteman, 85 Fed. Rep. 966; Von 
 
 Blatchf. 128; Ball v. Siegel, 116 Mumm v. Witteman (2), 33 C. C. 
 
 111. 143; Enoch Morgan's Sons Co. A. 404, 91 Fed. Rep. 126; Fleisch- 
 
 V. Troxell, 89 N. Y. 292; Sawyer mann v. Starkey, 25 Fed. Rep. 127; 
 
 V. Horn, 4 Hughes, 239; 1 Fed. Brown v. Doscher, 147 N. Y. 647-651; 
 
 Rep. 24; Manhattan Medicine Co. Charles E. Hires Co. v. Consu- 
 
 V. Wood, 108 U. S. 218; Re Kane mers' Co., 41 C. C. A. 71. 100 
 
 & Co., 9 Off. Gaz. 105; Liggett & ^ed. Rep. 809-811; Flagg Mfg. Co. 
 
 Myer Tob. Co. v. Hynes, 20 Fed. v- Holway, — Mass. , 59 N. E. 
 
 Rep. 883; Fairbanks v. Jacobus, 14 Rep. 667; E. Regensburg & Sons 
 
 Blatchf. 337; Fed. Case No. 4608; v. Juan F. Portuondo Cigar Mfg. 
 
 Wilcox & Gibbs Sewing Machine Co., 136 Fed. Rep. 866, 869. 
 
 Co. V. Gibbons. 21 Blatchf. 431; 5— Candee v. Deere, 54 HI. 462; 
 
 Brill V. Singer Mfg. Co., 41 Ohio Ball v. Siegel. 116 111. 143. 
 
 St. 127; Re Whitaker, Newton's 6— Lorillard v. Pride, 28 Fed. 
 
 Dig. 130; Adams v. Heisel, 31 Fed. Rep. 434. 
 
 Rep. 279; Lorillard v. Pride, 28 7 — Davis v. Davia, 27 Fed. Rep. 
 
 Fed. Rep. 434; Davis v. Davis, 27 490. 
 
 Fed. Rep. 490; Nuthall v. Vining,
 
 244 HOPKINS ON TRADEMARKS. [§95 
 
 and eyes;^ but a fraudulent imitation of another's tin 
 tag has been restrained;'' and injunctions against the 
 fraudulent use of another's style of package and method 
 of packing ^^ are frequent, in the absence of any claim 
 to a technical trademark right in the complainant. 
 
 The courts have been averse to recognizing a trade- 
 mark right in anything calculated to be useful, aside 
 from indicating origin or ownership. So, in holding that 
 there was no trademark right in a series of indentations 
 in plug tobacco, so arranged as to serve as guides in cut- 
 ting the plug into pieces of one ounce each, Judge 
 Blodgett said : ' ' One of the piinciples running through 
 the law of trademarks is that there need be no utility 
 attached to the trademark itself— that is, it shall have 
 no useful purpose in connection with the goods further 
 than to show the origin or manufacture."^^ 
 
 There may be combinations of form and color with 
 other things, which will entitle the owner to relief 
 against one duplicating his article. Thus in a case where 
 the defendant duplicated the plaintiff's talking machine 
 records, injunction issued against the ''manufacture and 
 sale of disk records, black or nearly black in color, with 
 a red seal center inscribed with decoration and letters in 
 gilt, when such records contain the shop numbers or 
 catalogue numbers of complainant's disk records, or 
 when the sound recording grooves thereon are copies of 
 the grooves on complainant's disk records. "^- 
 
 Finally, it is obvious, that where the resemblance re- 
 sides in particulars of packages which have become com- 
 mon to the trade, no relief can be granted.^ ^ A mark, 
 
 8 — De Long Hook & Eye Co. v. 11 — Dausman & Drummond To- 
 
 Francis Hook & Eye Co., 118 Fed. bacco Co. v. Ruffner, Fed. Case No. 
 
 Rep. 938. 3,585, 15 Off. Gaz. 559. 
 
 9— Lorillard v. Wright, 15 Fed. 12— Victor Talking Machine Co. 
 
 Rep. 383. ^- Armstrong, 132 Fed. Rep. 711. 
 
 10— Washington Medallion Pen 13— Schenker v. Awerbach, 85 N. 
 
 Co. V. Easterbrook, Fed. Case No. Y. Supp. 129. 
 17,246a.
 
 § 96J JNFKINGEMENT. 245 
 
 consisting of a brown-coloied-paper cigar-band of pecu- 
 liar shape, has been held to be invalid, Judge McPherson 
 saying, "Certainly the color alone could not be appro- 
 priated by the complainant as a trademark, nor the 
 shape alone, nor the material alone ; and even the combi- 
 nation of these three elements could not make a valid 
 trademark, because neither singly nor in combination do 
 t ey point to the complainant as the source from which 
 the goods are derived."^* 
 
 §96. The early adjudications.— The endeavor of the 
 dishonest merchant to prey ui^on and profit by the rep- 
 utation of his honest competitor is always hampered by 
 fear of detection. If a trademark is counterfeited the 
 counterfeit product is placed upon the market stealthily; 
 where the offender lacks the courage to counterfeit he 
 resorts to colorable imitations, not of his competitor's 
 trademark, but of his methods of packing and prepar- 
 ing goods for sale, thus simulating a resemblance, in the 
 words of Judge Lacombe, "sufficiently strong to mislead 
 the consumer, although containing variations sufficient 
 to argue about, should the designer be brought into 
 court. "^^ 
 
 The earliest leading case involving this form of fraud- 
 ulent competition arose between rival soap manufactur- 
 ers. The plaintiffs made and sold an article styled 
 "Genuine Yankee Soap." The defendant put up a 
 soap under the same style, imitating the size and shape 
 of the cake, the color and material of the wrapper, and a 
 hand-bill, as used by the i)laintiffs. There was a disincli- 
 nation on the part of the court to decide whether the 
 words "Genuine Yankee" were a valid trademark, and 
 its decision was put solely upon the ground of unfair 
 trade, the court saying: "The defendant is engaged in 
 
 14 — E. Regensburg & Sons v. 15 — Collinsplatt v. Finlayson, 88 
 Juan F. Portuondo Cigar Mfg. Co., Fed. Rep. 693. 
 136 Fed. Rep. 866. 869.
 
 246 HOPKINS ON TRADEMARKS. [§ 96 
 
 a gross and palpable endeavor, by imitating the marks 
 and labels used by plaintiiTs, to deceive the public and 
 obtain patronage which would in all probability be 
 attracted to the plaintiffs. . . . They have adopted, 
 in reference to their manufacture (of an article which 
 any and every one may manufacture and sell, if he 
 please), a form and size of cake, a particular mode of 
 covering and packing, a combination of three labels on 
 each cake, an exterior hand-bill upon the box, and have 
 so arranged the whole as to suggest to any one desiring 
 to purchase their soap, upon an inspection, that the arti- 
 cle is theirs, and made by them, like that heretofore 
 made, sold and known as their manufacture. All this the 
 defendant has copied, with an exactness which is calcu- 
 lated to deceive even the wary, much more to entrap 
 those who are not in the exercise of a rigid scrutiny. 
 . . . Without deciding whether the defendant may 
 or may not use either of the words 'Genuine' or 'Yan- 
 kee," in any possible combination, we think it sufficient to 
 say that he may not use the labels, or devices, or hand- 
 bills which he is using, nor any other like labels, hand- 
 bills, or devices, in imitation of, or simulating the labels, 
 devices, or hand-bills used by the plaintiffs, as set forth 
 in the bill of complaint, or any other similar labels, 
 devices, or hand-bills calculated to deceive the public, or 
 create the belief that the soap he sells is the soap made 
 or sold by the plaintiffs under the name of Genuine 
 Yankee Soap."i« 
 
 Mr. Rowland Cox has said,^^ however, that the rule 
 "that where the appearance of a peculiar and original 
 package has acquired through use an understood refer- 
 ence to the goods of a manufacturer, and a competing 
 manufacturer knowingly imitates the peculiar charac- 
 teristics of the package, with intent to deceive the public, 
 
 16— Williams v. Johnson (1857), 17— Cox, Manual, p. 86; note to 
 2Bos. 1; Cox, 214. Williams v. Johnson, supra.
 
 § 97] INFRINGEMENT. 247 
 
 such imitations will bo held to Ixi an infringement of the 
 rights of the i>erson first using the package," can hardly 
 be said to have found distinct expression prior to 1878, 
 where it occurs in the opinion of Judge Wheeler in Frese 
 V. Bachof.^^ And, indeed, that decision, if not the 
 earliest, is still one of the clearest in its enunciation of 
 the iTile. 
 
 §97. Infringement of color.— The cases in which an 
 unfair competition is effected by means of infringement 
 of color alone are naturally very few in number. Where 
 the color involved is common to the trade, it will be dis- 
 regarded in determining the issue of infringement.^*^ In- 
 deed the case nearest approximating such an infringe- 
 ment is one in which the complainant and defendant 
 manufactured stoves of similar external appearance, 
 enameling the inside faces of their stoves with white 
 enamel. On demurrer to the bill Judge Baker said: "If 
 the question for decision were simply whether the plain- 
 tiff could acquire the sole right to use white enamel for 
 the lining of the doors of its stoves and ranges, it 
 would present a ({uestion whose solution would prove 
 embarrassing. But the case made upon the bill and 
 admitted by the demurrer is that the defendants are 
 manufacturing stoves and ranges having white enamel 
 doors in the similitude of those manufactured by com- 
 plainant, and with the fraudulent purpose of palming 
 them off upon the trade and the luiblic as the stoves and 
 ranges manufactured by the complainant. It is not 
 necessary to determine whether the white enamel lin- 
 ing, which has been long and exclusively used by the 
 complainant for the inner lining of the doors of its 
 stoves and ranges, constitutes a trademark, or whether 
 it does not. It is sufficient to justify the interposition 
 
 18— Seb. 603; 13 Off. Gaz. 635; 360. 119 Fed. Rep. 848, 852; Con- 
 Fed. Case No. 5, 110. tinental Tobacco Co. v. Larus & 
 
 19— Postum Cereal Co. v. Amer- Bro. Co., C. C. A., 133 Fed. Rep. 
 
 ican Health Food Co., 56 C. C. A. 727.
 
 248 HOPKINS ON TRADEMAEKS. [§97 
 
 of a court of equity if the stoves and ranges manufac- 
 tured by the defendants are purposely constructed in the 
 similitude of those manufactured by the complainant, 
 "with the intention and result of deceiving the trade and 
 the public, and inducing them to purchase the stoves 
 and ranges of the defendants in the belief that they are 
 purchasing the stoves and ranges of the complainant's 
 manufacture. The imitative devices used upon the 
 stoves and ranges manufactured by the defendants are 
 alleged to be employed by them for the purpose and 
 Tvith the result of deceiving the public, and thereby 
 diverting the trade of the complainant to the defendants. 
 This they have neither the moral nor the legal right to 
 do."-'' 
 
 The question of its collocation must always be con- 
 sidered in connection with the question of infringement 
 ty the use of color. Announcing the opinion of the fed- 
 eral circuit court of appeals of the second circuit. Judge 
 Lacombe has said: "Color, undoubtedly, is a most im- 
 portant element in all package combinations; but there 
 are other elements as well, which go to make up the 
 entire combination. Because a total change of color 
 would so change the general appearance as to destroy 
 resemblance to another package, it by no means follows 
 that color alone would be sufficient to produce a general 
 appearance, resembling another package. It would not 
 be giving the complainant a monopoly of yellow to re- 
 strain the sale of a particular yellow package, where, in 
 addition to the color, a number of other elements, each 
 differing more or less from its analogue in complainant's 
 package, had been so collated together as to produce 
 a general appearance calculated to delude the unwary 
 purchaser. "2^ 
 
 20— Buck's stove & Range Co. v. C. C. A. 554; reversing s. c, 71 
 
 Kiechle, 76 Fed. Rep. 758. Fed. Rep. 295. To the same effect 
 
 21— N. K. Fairbank Co. v. R. W. see Allen B. Wrisley Co. v. Geo. E. 
 
 Bell Mfg. Co., 77 Fed. Rep. 869, 23 Rouse Soap Co., 87 Fed. Rep. 589.
 
 §97] 
 
 INFRINGEMENT. 
 
 249 
 
 So that we find many cases in which the imitation of 
 color has been a material element in determining the 
 question of infringement,-- In a proper case the court 
 will enjoin the defendant from using the color used by 
 the plaintiff, upon the theoiy that the defendant must be 
 allowed no advantage out of the trade thus obtained 
 wrongfully, but must establish the reputation of his 
 goods upon merit, and w^ithout benefit of the imitation.-'"* 
 
 It may be said that in issues of technical trademark 
 infringement the color of the respective marks is fre- 
 quently of controlling importance. Any system of 
 registration, to be effective, ought to provide for the 
 registration of marks in the exact coloring which it is 
 intended to apply to the mark in use. After the English 
 court of appeals had discussed this question,-^ it was 
 
 22— Kerry v. Toupin, 60 Fed. 
 Rep. 272; Burt v. Smith, 71 Fed. 
 Rep. 161; Carbolic Soap Co. v. 
 Thompson, 25 Fed. Rep. 625; 
 Cleveland Stone Co. v. Wallace, 
 52 Fed. Rep. 431-438; Anheu- 
 ser-Busch Brewing Co. v. Clarke, 
 26 Fed. Rep. 410; Landreth v. Lan- 
 dreth, 22 Fed. Rep. 41; Lorillard 
 V. Wight, 15 Fed. Rep. 383; Hos- 
 tetter v. Adams, 10 Fed. Rep. 838; 
 Von Mumm v. Frash, 56 Fed. Rep. 
 830; Wellman & Dwire Tobacco 
 Co. V. Ware Tobacco Works, 46 Fed. 
 Rep. 289; Gail v. Wackerbarth, 28 
 Fed. Rep. 286; Hires v. Hires, 6 
 Pa. Dis. R. 285; Myers v. Theller, 
 38 Fed. Rep. 607; American Brew- 
 ing Co. V. St. Louis Brewing Co., 
 47 Mo. App. 14; Sperry v. Percival 
 Milling Co., 81 Cal. 252; Royal Bak- 
 ing Powder Co. v. Davis, 26 Fed. 
 Rep. 293; Fleischmann v. Starkey, 
 25 Fed. Rep. 127; Carbolic Soap Co. 
 v. Thompson, 25 Fed. Rep. 625; C. 
 F. Simmons Med. Co. v. Simmons, 
 81 Fed. Rep. 163; Johnson & John- 
 
 son V. Bauer & Black, 27 C. C. A. 
 374, 82 Fed. Rep. 662; reversing s. 
 c, 79 Fed. Rep. 954; Fischer v. 
 Blank, 138 N. Y. 251; Cox, Manual, 
 731; McCann v. Anthony, 21 Mo. 
 App. 83; 38 Off. Gaz. 333; Von 
 Mumm v. Kirk, 40 Fed. Rep. 589; 
 Coats V. Merrick Thread Co., 36 
 l-ed. Rep. 324; Philadelphia Nov. 
 Co. V. Blakesley Nov. Co., 40 Fed. 
 Rep. 588; Proctor & Gamble Co. v. 
 Globe Refining Co., 34 C. C. A. 405, 
 92 Fed. Rep. 357; Johnson v. 
 Brunor, 107 Fed. Rep. 466; Lalance 
 & Grosjean Mfg. Co. v. National 
 Enameling & Stamping Co., 109 
 Fed. Rep. 317; National Biscuit Co. 
 V. Swick, 121 Fed. Rep. 1007; Rains 
 v. White, (Ky.), 52 S. W. Rep. 
 970; Kassel v. Jeuda, 70 N. Y. 
 Supp. 480. 
 
 23 — Franck v. Frank Chicory 
 Co., 95 Fed. Rep. 818-821. 
 
 24— Re Worthington & Co.'s 
 Trademark. L. R. 14 Ch. D. 8-18. 
 See also Nuthall v. Vining, 28 W. 
 R. 330; Cartmell. 248.
 
 250 HOPKINS ON TRADEMARKS. [§ 98 
 
 enacted by Parliament that registration might be in 
 oolor.-^ 
 
 § 98. Infringement of size and form.— The decision of 
 the leading case, Cook S Beniheimer Co. v. Ross;^^ by 
 Judge Lacombe in the circuit court of the United States 
 for the southern district of New York, marked a distinct 
 advance in the scientific development of the law of un- 
 fair comj)etition. The complainant was a corporation 
 which had acquired the sole right to bottle, at the dis- 
 tillery the ' ' Mount Vernon Rye ' ' whisky distilled by the 
 Hannis Distilling Company, in which bottling the com- 
 plainant used a bottle of distinctive form. The facts 
 more fully appear in the opinion, a portion of which is as 
 follows : 
 
 ''Complainant, of course, has no exclusive right to the 
 name 'Mount Vemon,' and the labels of defendants are 
 in no sense an imitation of the labels of the complainant. 
 Complainant's case rests solely on the form of package, 
 which it claims has been so imitated as to make out a 
 case of unfair competition. 
 
 "Undoubtedly, a large part of the consumption of 
 whisky is in public drinking places, where it is dispensed 
 to the consumer from the opened bottle. It is always 
 desirable, therefore, for a dealer who wishes to push the 
 sale of his own goods on their own merits to devise, if he 
 can, some earmark more permanent than a pasted label 
 to distinguish them. Complainant's predecessors accord- 
 ingly, in March, 1890, adopted a brown glass bottle of a 
 
 25 — The Patents, Designs, and which the only distinction is the 
 
 Trademarks Act, 1883, sec. 67. It use of a color, because, practically, 
 
 has been held, under this section, under the terms of the act. that 
 
 that the mark registered in color would give you a monoply of all 
 
 must be distinctive apart from its the colors of the rainbow." Re 
 
 color; and as said by Kay, J.: Hanson's Trademark, 5 R. P. C. 
 
 "You may register a mark, which 130; L. R. 37 Ch. D. 112; 57 L.. J. 
 
 is otherwise distinctive, in color, Ch. 173; 57 L. T. N. S. 859; 36 W. 
 
 and that gives you the right to R. 134; Cartmell. 146. 
 
 use it in any color you like; but 26—73 Fed. Rep. 203. 
 you cannot register a mark of
 
 §98 J INFRINGEMENT. 251 
 
 peculiar square sliapc, unlike any that liad theretofore 
 been used for bottling whisky, or, indeed, so far as the 
 evidence shows, for any other purpose. It is a fonn of 
 package well calculated by its novelty to catch the eye, 
 and be retained in the romeinbraiice of any one who has 
 once seen it. In order to develop and extend the busi- 
 ness they expected to control under their agreement with 
 the Hannis Distilling Company, comi)lainant and its 
 predecessors have expended more than $50,000 in adver- 
 tising its said bottling, hi all these advertisements the 
 peculiar square-shaped bottle is the chief and most promi- 
 nent feature. It is not surprising, therefore, to find it 
 stated in the moving affidavits that the shape and gen- 
 eral appearance of the bottle has come to be principally, 
 if not exclusively, relied on by ordinary purchasers as 
 the means of identifying this bottling of Mount Vernon 
 whisky from all other bottlings, the i3urity of which is 
 not guaranteed by the distillers, but only by the bottler. 
 Complainant's bottling seems to have acquired a high 
 reputation, large and increasing quantities of it being 
 yearly sold, at a price in excess of that obtained by other 
 bottlers of Mount Vernon whisky. 
 
 *' About December, 1895, defendants, who had been 
 dealing in Mount Veraon whisky for many years, began 
 first to put it up in bottles, which are Chinese copies of 
 the peculiar square-shaped, bulging-necked bottles of the 
 complainant. Of course they aver that this was with- 
 out any intention 'to deceive the jDublic, or to palm off 
 defendants' goods for complainant's.' They account for 
 the sudden appearance of their output of Mount Veraon 
 whisky in this fonn as follows: 'There was a demand 
 for Mount Vernon whisky along in November last, and 
 defendants sought a convenient and useful package in 
 which to place their product upon the market, and pur- 
 chased a stock of bottles of the square fonn for that 
 purpose, without making a special design therefor, and 
 in the open market;' and allege that 'such bottles can
 
 252 HOPKINS ON TRADEMARKS. [§ 98 
 
 be purchased of reputable bottle manufacturers from 
 molds used for some time last past.' This last averment 
 may well be true. The industry of defendants ' counsel has 
 marshaled here an arraj^ of square-shaped bottles filled 
 with whisky, which shows that for some time imitations 
 of complainant's bottle have been on the market. But 
 there is not a word of proof to trace back any one of 
 these bottles to a period anterior to the adoption of the 
 square shape by complainant's predecessor as a distinc- 
 tive fomi of package. Despite defendants' denials,— and 
 they only deny intent to deceive the public, liot intent to 
 use a form of package just like complainant's,— the 
 court cannot escape the conviction that they found the 
 square-shaped bottle 'convenient and useful,' because 
 it was calculated to increase the sale of their goods ; and 
 that such increase, if increase there be, is due to the cir- 
 cumstance that the purchasers from defendants have a 
 reasonable expectation that the ultimate consumer, de- 
 ceived by the shape, will mistake the bottle for one of 
 complainants'. This is unfair competition within the 
 authorities, and should be restrained. Injunction pen- 
 dente lite is granted against the further use of the 
 square-shaped, bulging-necked bottle as a package for 
 Mount Vernon whisk}^" 
 
 There never existed a valid reason why a manufacturer 
 should not be protected in the use of a package so pe- 
 culiar and distinctive in size and shape as not to inter- 
 fere with the packing methods of the trade generally. 
 In this respect the law of trademarks fell short in the 
 recognition it should have extended to tradesmen, who, 
 like the Cook & Bernheimer Company in the case last 
 mentioned, chose to distinguish their wares by distinc- 
 tive packing. On account of this deficiency in the law, 
 occasional hardships were inflicted upon honest trades- 
 men and the dishonest competitor went unwhipped of 
 justice.^ But the amount of fraudulent trading effected 
 
 1— Enoch Morgan's Sons Co. v. Troxell, 89 N. Y. Supp. 292.
 
 §98 J INFRINGEMENT. 253 
 
 by means of this form of imitation was sure to evoke the 
 ruling of the leading case in time, and there are numbers 
 of other cases in which an imitation of size and form has 
 been a moving ground of injunction.=^ The remedy has 
 in some cases been held to be dei;)endent upon proof that 
 the public has actually been deceived by the defendant's 
 package.-'* It has been expressly held, indeed, that 
 •'there is no unfair competition, apart from the infringe- 
 ment of a patent or trademark, unless the competing 
 person so makes or marks his goods or conducts his busi- 
 ness that purchasers of ordinary caution and prudence, 
 and not those who are exceptionally dull, are likely to 
 be misled into the belief that his goods are the goods of 
 somebody else."^ But it is the probability of deception, 
 and not proof that customers have actually been de- 
 ceived, that controls or should control in all cases of un- 
 fair competition as well as in cases of technical trade- 
 mark infringement. A learned English judge has asked : 
 **\Miy should we be astute to say that (the defendant) 
 cannot succeed in doing what he is straining every nerve 
 to do!"'"' Where the fonn and size of a package have be- 
 
 2 — Charles E. Hires Co. v. Con- 4 — Allen, J., in Dover Stamping 
 
 Burners' Co., 100 Fed. Rep. 809; Co. v. Fellows, 163 Mass. 191; 40 
 
 Apollinaris Co. v. Brumler, Cox, N. E. Rep. 105, 28 L. R. A. 448; 47 
 
 Manual, 429; Hostetter v. Adams, Am. St. Rep. 448; citing Gilman v. 
 
 10 Fed. Rep. 838; Sawyer v. Kel- Hunnewell, 122 Mass. 139; Singer 
 
 logg, 7 Fed. Rep. 720; Sperry & Mfg. Co. v. Wilson, 2 Ch. D. 434- 
 
 Co. V. Percival Milling Co., 81 Cal. 447; Brill v. Singer Mfg. Co., 41 
 
 252; Noera v. Williams Mfg. Co., Ohio St. 127; 52 Am. Rep. 74; 
 
 158 Mass. 110; Moxie Nerve Food Robertson v. Berry, 50 Md. 591; 33 
 
 Co. v. Baumbach, 32 Fed. Rep. Am. Rep. 328. To the same effect, 
 
 205 ; Kerry v. Toupin, 60 Fed. Rep. Van Camp Packing Co. v. Cruik- 
 
 272; Burt v. Smith, 71 Fed. Rep. shanks Bros. Co., 90 Fed. Rep. 
 
 161; Hildreth v. McDonald, 164 814; Von Mumm v. Witteman. 85 
 
 Mass. 16; 49 Am. St. Rep. 440; Fed. Rep. 966; affirmed, 91 Fed. 
 
 Royal Baking Powder Co. v. Davis, Rep. 126, 33 C. C. A. 404. 
 
 26 Fed. Rep. 293. 5 — Lindley. L. J., in Slazenger v. 
 
 3— Hildreth v. D. S. McDonald Feltham, 6 R. P. C. 538. 
 Co., 164 Mass. 16; 41 N. E. Rep. 56, 
 49 Am. St. Rep. 440.
 
 254 HOPKINS ON TRADEMARKS. [§98 
 
 come common to a trade, resemblance in either or both 
 of tliese particulars is not actionable.^ 
 
 In all of this class of cases the general rule of trade- 
 mark law applies, that it is immaterial whether the goods 
 sold by the defendant are inferior or superior to those of 
 the plaintiff. Thus in an early case Judge Morris said: 
 ''AMiat we decide is that whether the complainant has a 
 trademark or not, as he was the first to put up bluing for 
 sale in the peculiarly shaped and labeled boxes adopted 
 by him, and as his goods have become known to pur- 
 chasers, and are bought as the goods of the complainant 
 by reason of their peculiar shape, color and label, no 
 person has the right to use the complainant's form of 
 package, color or label, or any imitation thereof, in such 
 manner as to mislead purchasers into buying his goods 
 for those of the complainant, whether they be better or 
 worse in quality."^ 
 
 In connection with this branch of our subject, it should 
 be noted that, in the absence of a patent, every one is at 
 liberty to reproduce merchandise or machinery made by 
 another. In the language of the Massachusetts court, 
 " in the absence of a patent, the freedom of manufacture 
 cannot be cut down under the name of preventing unfair 
 competition."* In an earlier case, it was said that 
 ''apart from these {i. e., patents for inventions or 
 designs) any one may make anything in any form, and 
 may copy with exactness that which another has pro- 
 duced, without inflicting any legal injury, unless he 
 attributes to that which he has made a false origin, by 
 claiming it to be the manufacture of another person. ' ' ^ 
 In a later case. Judge Severens has thus stated the 
 
 6 — Allen B. Wrisley Co. v. Geo. Co. v. Holway, Mass., 59 N. E. Rep. 
 
 E. Rouse Soap Co., 87 Fed. Rep. 667. To the same effect see Piaget 
 
 589. V. Headley. 68 N. Y. Supp. 351. 
 
 7— Sawyer v. Horn, 1 Fed. Rep. 9— Johnson, J., in Fairbanks v. 
 
 24-38. Jacobus. 14 Blatch., 337, 339; Fed. 
 
 8— Holmes, C. J., in Flagg Mfg. Case No. 4608, and to the same ef-
 
 § 99j INFRINGEMENT. 255 
 
 rule: "Without doubt, a party may adopt distinguish- 
 ing marks to denote the origin or production as being 
 his own, or he may adopt some other })eculiar method of 
 distinguishing his own goods, and thus retain the benefit 
 of the good reputation wliich lie has acquired for them. 
 But the very idea of distinguishing them implies that it 
 cannot be done by such universal characteristics as be- 
 long to other goods of the kind and which the general 
 public have the undoubted right to use."^^ But in mak- 
 ing an article whose structure may be made by anyone, it 
 is nevertheless unlawful to imitate its ensemble as made 
 by another, with the purpose and effect of misleading the 
 public." 
 
 § 99. Intent and scienter.— It was at first held that 
 equity could only administer relief ancillary to that 
 offered by the courts of law. It is, indeed, difiicult to 
 apprehend on what ground this reluctance to interfere in 
 trademark cases arose. The only explanation vouch- 
 safed is, that when chancer^' undertook to act it was ' ' ex- 
 ercising a jurisdiction over legal rights. "^^ g^t whether 
 at law or in equity, the doctrine of the common law pre- 
 vailed, that the defendant must be shown to have guilty 
 knowledge or fraudulent intent.^ ^ 
 
 In 1838 the rule was distinctly announced that courts 
 of equity ''will act on the principle of protecting prop- 
 erty alone, and it is not necessary for the injunction to 
 prove fraud in the defendant. "^^ This rule is now uni- 
 
 fect, see Dover Stamping Co. v. 12 — Motley v. Downman, 3 Mylne 
 
 FeUows, 163 Mass. 191; 40 N. E. & Cr. 1-14. 
 
 Rep. 105, 28 L. R. A. 448, 47 Am. 13— Singleton v. Bolton, 3 Doug. 
 
 St. Rep. 448; Marvel Co. v. Tullar 293; Morrison v. Salmon, 2 Man. 
 
 Co.. 125 Fed. Rep. 829. & G. 385; Crawshay v. Thompson, 
 
 10 — Globe-Wernicke Co. v. Fred 4 Man. & G. 357; Taylor v. Ashton, 
 
 Macey Co., 56 C. C. A. 304. 119 Fed. 11 M. & W. 402; Rodgers v. Nowill, 
 
 Rep. 696, 704. 5 C. B. 109; Myers v. Baker, 3 H. 
 
 11— Globe-Wernicke Co. v. Brown & N. 802; Sykes v. Sykes, 3 B. A 
 
 & Besly, 57 C. C. A. 344, 121 Fed. C. 541; 5 D. & R. 292. 
 
 Rep. 90. 14 — Millington v. Fox, 3 Mylne 
 
 & Cr. 338.
 
 256 
 
 HOPKINS ON TRADEMARKS. 
 
 [§99 
 
 versally recognized in technical trademark cases.^^ It is 
 tmnecessaiy to show that the defendant knew that liis 
 trademark resembled any other trademark,^ "^ and it fol- 
 lows that it need not be shown that he knew whose mark 
 his resembled ;^^ and, the intent of the defendant being 
 immaterial, the fact that he intended to infringe plain- 
 tiff's rights will not entitle the plaintiff to relief if the 
 defendant's acts do not amount to trademark infringe- 
 ment or unfair competition.^^ 
 
 There is a line of demarkation, to be noted in this re- 
 gard, between the class of unfair trade cases which 
 involves a technical trademark and that which does not. 
 Wliere a plaintiff establishes by competent proof his 
 title to the specific trademark, infringement is shown by 
 comparison with the defendant's mark. The resemblance 
 of the defendant's mark creates a presumption of fraud.^^ 
 
 15 — Glenny v. Smith, 2 Drew. & 
 Sm. 476; 11 Jur. N. S. 964; 13 L. 
 T. N. S. 11; 13 W. R. 1032; 6 N. 
 R. 363; Seb. 247; Filley v. Fassett, 
 44 Mo. 173; Cox, 530; Seb. 313; 
 Amoskeag Mfg. Co. v. Garner (1), 
 55 Barb. 151; 6 Abb. Pr. N. S. 
 265; Cox, 541; Seb. 314; Holmes, 
 Booth & Haydens v. Holmes, Booth 
 & Atwood Mfg. Co., 37 Conn. 278; 
 9 Am. Rep. 324; Seb. 340; Singer 
 Mfg. Co. V. Wilson, 3 App. Cas. 
 376-391; Colman v. Crump, 70 N. 
 Y. 573; 16 Alb. L. J. 352; Seb. 579; 
 Shaw V. Pilling, 175 Pa. St. 78-87; 
 Wotherspoon v. Currie, L. R. 5 H. 
 L. 508-517; McLean v. Fleming, 96 
 U. S. 245-253; Liggett & Myer Tob. 
 Co. V. Hynes, 20 Fed. Rep. 883; C. 
 F. Simmons Med. Co. v. Mansfield 
 Drug Co., 93 Tenn. 84; Elgin Nat. 
 Watch Co. V. Illinois Watch Case 
 Co. (2), 179 U. S. 665-674; Craven- 
 ette Co. V. Benjamin, 105 Fed. Rep. 
 621; American Grocer Pub. Co. v. 
 Grocer Pub. Co., 25 Hun, 398. 
 
 16 — Kinahan v. Kinahan, 15 Ir. 
 Ch. 75; Orr-Ewing & Co. v. Grant, 
 2 Hyde, 185; Singer Mfg. Co. v. 
 Loog, 18 Ch. D. 412; Harrison v. 
 Taylor, 11 Jur. N. S. 408; Edelsten 
 V. Edelsten, 1 DeG. J. & S. 185; 
 Burgess v. Hills, 26 Beavan, 244; 
 Regis V. J. A. Jaynes & Co., 185 
 Mass. 458, 70 N. E. Rep. 480. 
 
 17 — Cartier v. Carlile, 31 Beavan, 
 292. 
 
 18 — Kann v. Diamond Steel Co., 
 89 Fed. Rep. 706-712. "An inten- 
 tion to injure, if no injury be done, 
 constitutes no ground for relief." 
 Jenkins, J., in G. W. Cole Co. v. 
 American Cement & Oil Co., 65 C. 
 C. A. 105, 130 Fed. Rep. 703, 711, 
 citing § 76 of the first edition of 
 this book, and Centaur Co. v. Mar- 
 shall, 38 C. C. A. 413, 07 Fed. Rep. 
 785; Postum Cereal Co. v. Ameri- 
 can Health Food Co., 56 C. C. A. 
 360. 119 Fed. Rep. 848, 852. 
 
 19 — "A trademark, clearly such, 
 is in itself evidence, when used by
 
 § lOOJ INFRINGEMENT. 257 
 
 But where the plaintiff has no trademark there is no 
 basis of comparison such as existed in the fonner case, 
 because there is no technical property right in the plain- 
 tiff. Mere resemblance between the goods of the parties 
 may or may not be sufficient to establish the right to 
 injunction. It must be established that the defendant 
 is unfairly competing with the plaintiff; his fraud must 
 be proven directly or by inference. In a recent opinion 
 Judge Baker says: "While the idea of fraud or imposi- 
 tion lies at the foundation of the law of technical trade- 
 marks as well as the law of unfair competition, it must 
 be borne in mind that fraud may rest in actual intent 
 shown by the evidence, or may be inferred from the cir- 
 cumstances, or may be conclusively presumed from the 
 act itself. In the case of unfair competition the fraudu- 
 lent intent must be shown by the evidence, or be infer- 
 able from the circumstances, while in the case of the use 
 by one trader of the trademark or trade-symbol of a 
 rival trader, fraud will be presumed from its wrongful 
 use."-o 
 
 And the United States supreme court states the iiile to 
 be that "the deceitful representation must be made out 
 or be clearly inferable from the circumstances."-^ 
 
 § 100. What persons liable.— With the establishment 
 of the rule that mala )nens need not be shown,-- it fol- 
 lowed that liability for infringement was extended to 
 
 a third party, of an illegal act. It 20 — Church & Dwight Co. v. 
 
 is of itself evidence that the party Russ, 99 Fed. Rep. 276-279. 
 
 intended to defraud and to palm 21 — Lawrence Mfg. Co. v. Ten- 
 
 o£E his goods as another's." Mr. nessee Mfg. Co., 138 U. S. 537-551, 
 
 Justice Bradley in Putnam Nail Co. followed in Gorham Mfg. Co. v. 
 
 V. Bennett, 43 Fed. Rep. 800. And Emery-Bird-Thayer Co., 43 C. C. 
 
 to the same effect, Boston Diatite A. 511, 104 Fed. Rep. 243, 244. 
 
 Co. V. Florence Mfg. Co., 114 Mass. 22 — Wotherspoon v. Currie, L. R. 
 
 69; McLean v. Fleming, 96 U. S. 5 H. L. 508-517; Saxlehner v. Sie- 
 
 245; Menendez v. Holt, 128 U. S. gel-Cooper Co., 179 U. S. 42. 
 514; Lawrence Mfg. Co. v. Ten- 
 nessee Mfg. Co., 138 U. S. 537. 
 17
 
 258 HOPKINS ON TRADEMARKS. § 101 
 
 many persons who, in the absence of that doctrine, could 
 not be reached by the owner of the pirated mark. "All 
 persons in any way connected with the infringement of a 
 trademark are responsible to the owner for the injury 
 done to his rights."-^ 
 
 § 101. Of labels, generally.— The dress of a commer- 
 cial article usually embodies a label. The consequence 
 is that the cases refer to labels, frequently, as though 
 they were a distinct factor in the law of unfair compe- 
 tition, to be treated as an entity, regardless of the pres- 
 ence or absence of trademark material upon them. Thus 
 Vice-Chancel lor Van Fleet, in the Court of Chancery of 
 New Jersey, has said, *'If we speak with accuracy, these 
 labels cannot be called 'trademarks,' but they serve sub- 
 stantially the same purpose. They are the marks by 
 which the complainant's goods are distinguished in the 
 markets from all like goods put upon the market by 
 other persons, and are, for that reason, according to 
 many decisions, just as much under the protection of 
 the law as trademarks are. The law protects them for 
 the same reasons, and in exactly the same way, that it 
 does trademarks. The leading principle of the law on 
 this subject is that no man should be permitted to sell 
 his goods on the reputation which another dealer has 
 established in the market for his goods, and this princi- 
 ple applies with equal force to the case where the goods 
 of such other dealer are known in the market by a label, 
 as it does to the case where they are known by a mark 
 which is strictly a trademark. No dealer can lawfully 
 adopt the label of another dealer, or one so near like it 
 as to lead the public to suppose that the article to which 
 it is affixed was put upon the market by such other 
 dealer. ' '^^ 
 
 23 — Hawley, J., in Hennessy v. following Miller Tobacco Manufac- 
 
 Herrmann, 89 Fed. Rep. 669-670. tory Co. v. Commerce, 45 N. J. 
 
 24— Wirtz V. Eagle Bottling Co., Law 18, 24. 
 50 N. J. Eq. 164, 24 Atl. Rep. 658;
 
 § 102] INFRINGEMENT. 259 
 
 § 102. The engraver or manufacturer of the label.— 
 
 The rule that equity will enjoin one who ])articipates in 
 the production of an infringing mark or label was first 
 established in Guinness v. Ullmer, in 1847, in which case 
 the plaintiffs were brewers of i)orter, and the defend- 
 ants, who were engravers, engraved plates to be used in 
 printing labels in imitation of the plaintiff's label.-'' This 
 decision was followed in 1855 by a case in which a prin- 
 ter printed and sold labels which were fac-similes of the 
 plaintiff's labels, and the piracy was enjoined;-*' and the 
 rule is now extended to include one who deals in counter- 
 feit labels, though he does not manufacture them.-^ 
 
 In 1877 a label printer was enjoined by the superior 
 court of New York from the manufacture of labels which 
 were colorable imitations of plaintiff's. In aflBrming the 
 decision of the lower court the New York couii of ap- 
 peals announced that it is not necessary in such a case 
 *'to establish a guilty knowledge or fraudulent intent on 
 the part of the wrong-doer. ' '-^ It is now the settled rule 
 
 25— Guinness v. UHmer, 10 L. T. 28— Colman v. Crump, 70 N. Y. 
 
 127; Seb. 89. 573-578; affirming s. c, 40 N. Y. 
 
 26— Farina v. Silverlock, 1 K. & Super. Ct. (8 J. & S.) 548; Seb. 
 
 J. 509; 3 Eq. Rep. 883; 24 L. J. Ch. 579. The court of appeals in this 
 
 632; 25 L. T. 211; 3 W. R. 532; 6 case further says (per Allen, J.): 
 
 DeG. M. & G. 214; 26 L. J. Ch. 11; "It is an infraction of that right 
 
 2 Jur. N. S. 1008; 27 L. T. 277; 4 (i. e., the right to a trademark) 
 
 W. R. 731; 52 Leg. Obs. 342; 30 to print or manufacture, or put on 
 
 L. T. 242; 31 L. T. :^9; 4 K. & J. the marlcet for sale and sell for 
 
 650; Seb. 130. See also to the use, upon articles of merchandise 
 
 same effect, Colman v. Crump, 70 N. of the same class as those upon 
 
 Y. 573; Cuervo v. Jacob Henkell which it is used by the proprietor, 
 
 Co., 60 Off. Gaz. 440; 50 Fed. Rep. any device or symbol which by its 
 
 471; Moxie Nerve Food Co. v. resemblance to the established 
 
 Beach, 33 Fed. Rep. 248; De Kuy- trademark will be liable to deceive 
 
 per v. Witteman, 23 Fed. Rep. 871; the public and lead to the purchase 
 
 Hildreth v. Sparks Mfg. Co., 99 and use of that which is not the 
 
 Fed. Rep. 484. manufacture of the proprietor, be- 
 
 27 — Hennessy v. Herrmann, 89 lieving it to be his." From which 
 
 Fed. Rep. 669; Cantrell & Cochrane, Mr. Cox makes this deduction: 
 
 Ltd., V. Wittemann, 109 Fed. Rep. "The distinction would seem to be 
 
 82. that where the facts of the case
 
 260 HOPKINS ON TRADEMARKS. [§ 103 
 
 that "the mere act of printing and selling labels in 
 imitation of the complainant's might be innocent, and, 
 without evidence of an illicit purpose, would not be a 
 violation of the complainant's rights."-^ Judge Thayer, 
 however, held that the court would presume fraudulent 
 intent where counterfeit labels were manufactured and 
 sold and advertised for sale by the defendant.^*^ 
 
 Where a i)erson induces a manufacturer to make for 
 him goods marked with the trademark of a third per- 
 son, the manufacturer can hold him liable for all money 
 paid and expense incurred by the manufacturer in com- 
 promising a suit brought against him by the owner of 
 the trademark.^^ 
 
 Where both parties are in a similar business, one will 
 be enjoined from buying up the empty bottles or other 
 packages used by the other.^^ 
 
 § 103. Of counterfeiting trademarks.— A counterfeit 
 mark is one which is a fac-simile (e. g., an exact copy 
 or reproduction) of a genuine trademark. Counterfeiting 
 may be accomplished either by using forged fac-simile 
 trademarks, or by using genuine trademarks upon goods 
 substituted for those of the owners of the trademarks; 
 as by refilling bottles, boxes or other packages bearing 
 trademarks after their original contents have been con- 
 sumed. 
 
 shcv/ that the printer of the labels Witteman, 23 Fed. Rep. 871; Cox, 
 
 contemplated their use upon goods Manual, 694. 
 
 not made by the owner of the 30 — Carson v. Ury, 39 Fed. Rep. 
 
 mark, the court will interfere what' 777; Cox, Manual, 709. See also 
 
 ever the intent; but where the pur- Von Mumm v. Wittemann, 85 Fed. 
 
 pose was that they should be hon- Rep. 966. 
 
 estly used in such manner as to be 31 — Dixon v. Fawcus, 9 W. R. 
 
 tantamount to an application of 414; 3 Ell. & Ell. 537; 30 L. J. Q. 
 
 the mark by its owner, the courts B. 137; 7 Jur. N. S. 895; 3 L. T. 
 
 will decline to interfere." Note to N. S. 693; Seb. 194. 
 
 Farina v. Silverlock, Cox, Manual, 32 — Evans v. Von Laer, 32 Fed. 
 
 130. Rep. 153; Sawyer Crystal Blue Co. 
 
 29— Wallace, J., in De Kuyper v. v. Hubbard, 32 Fed. Rep. 388.
 
 § 104] INFRINGEMENT. 261 
 
 § 104. Of imitation of trademarks.— An imitation is 
 a mark so contrived as to reseinble an established trade- 
 mark. The imitation is actionable only in cases where, 
 upon comparison, the court determines that the dif- 
 ference is ''merely colorable,"^'' or as stated by Vice- 
 Chancellor AVood: "In every case the court must ascer- 
 tain whether the differences are made bo7ia fide in order 
 to distinguish the one article from them, whether the re- 
 semblances and the differences are such as naturally 
 arise from the necessity of the case, or whether, on the 
 other hand, the differences are simply colorable. "^^ 
 
 § 105. Colorable imitation.— As to what constitutes 
 colorable imitation, some apparent diversity of opinion 
 arises in the cases. In the opinion of Vice-Chancellor 
 Wood, from which we have quoted in the foregoing sec- 
 tion, he says: " IJesemblance is a circumstance which is 
 of jirimary importance for the court to consider, because 
 if the court finds, as it almost invariably does find in 
 such cases as this, that there is no reason for the resem- 
 blance, excepting for the purpose of misleading, it will 
 infer that the resemblance is adopted for the purpose of 
 misleading.""" But this dictum is not convincing, be- 
 cause if the resemblance is not, in fact, calculated to 
 mislead, the fact that it was adopted for the purpose of 
 misleading is wholly immaterial. 
 
 Thus it has been held repeatedly that where there is no 
 imitation of the essential part of the trademark, a resem- 
 blance in particulars common to the trade is not an in- 
 fringement.^" 
 
 33— Davis v. Kendall. 2 R. I. 566; Ch. 237; Tucker Mfg. Co. v. Boy- 
 Cox, 112; Seb. 103. ington, 9 Off. Gaz. 455, Fed. Case 
 
 34— Taylor v. Taylor, 2 Eq. Rep. No. 14229; Thornton v. Crowley, 47 
 
 290; 23 L. J. Ch. 255; 22 L. T. N. Y. Super. Ct. 527; Price & Steu- 
 
 271; Seb. 124. art, 455; Coats v. Merrick, 36 Fed. 
 
 35— Taylor v. Taylor, supra. Rep. 324, 45 Off. Gaz. 347; Marshall 
 
 36— Portuondo v. Monne, 28 Fed. v. Hawkins, 4 N. Z. L. R. Sup. Ct, 
 
 Rep. 16; Price & Steuart, 1115; 59; Stachelberg v. Ponce (2), 128 
 
 Ball V. Siegel, 116 111. 137; 56 Am. U. S. 686. 
 Rep. 766; Re Horsburgh, 53 L. J.
 
 262 HOPKINS ON TR^VDEMARKS. [§ 106 
 
 § 106. The test of probability of deception.— The va- 
 riance of opinion as to what constitutes colorable imita- 
 tion arises from the standard adopted by the different 
 courts as to the tendency of the alleged infringement to 
 deceive the cautious, ordinary or unwaiy customer. It 
 is never necessary to establish actual deception. Lord 
 Westbury said that it was not "necessarj^ for relief in 
 equity that proof should be given of persons having been 
 actually deceived, and having bought goods with the de- 
 fendant's mark under the belief that they were the manu- 
 facture of the plaintiffs, provided the court be satisfied 
 that the resemblance is such as would be likely to cause 
 the one mark to be mistaken for the other. "^" Accord- 
 ingly it is no defense to show that all the persons pur- 
 chasing goods bearing the simulated mark were aware 
 that the goods were not of the plaintiff's manufacture,^* 
 or that the maker of the spurious goods, or the jobber 
 who sells them to retailers, informs those who purchase 
 that the article is spurious or an imitation ;^^ the reason 
 being that there is no assurance that the retailer will 
 give the same cautionary information to his customers.*^ 
 
 37— Edelsten v. Edelsten, 1 DeG. & M. 427; 11 W. R 1061; 2 N. R. 
 
 J. & S. 200; 9 Jur. N. S. 479; 11 572; Seb. 226; Filley v. Fassett, 44 
 
 W. R. 328; 7 L. T. N. S. 768; 1 N. Mo. 168; Seb. 313; Abbott v. Bak- 
 
 R. 300; and to the same effect ers & Confectioners Tea Ass'n, W. 
 
 see Monro v. Smith. 13 N. Y. N. 1871, p. 207; W. N. 1872, p. 31; 
 
 Sup. 708; Cox, Manual, 724; Dixon Seb. 379; Osgood v. Allen, 1 
 
 v. Fawcus, 3 Ell. & Ell. 537; 30 L. Holmes, 185; 6 Am. L. T. 20; 3 
 
 J. Q. B. 137; 7 Jur. N. S. 895; 3 Off. Gaz. 124; Seb. 410; Job Print- 
 
 L. T. N. S. 693; 9 W. R. 414; Re ers' Union of Chicago v. Kinsley, 
 
 Christiansen's Trademark, 3 R. P. 107 111. App. 654. 
 C. 54; Cartmell, 95; Compania Gen- 38 — Edelsten v. Edelsten, 9 Jur. 
 
 eral de Tobacos v. Rehder, 5 R. P. N. S. 479; 1 DeG. J. & S. 185; 11 
 
 C. 61; Cartmell, 103; Orr-Ewing v. W. R. 328; 7 L. T. N. S. 768; 1 N. 
 
 Johnston, 7 A. C. 219; 51 L. J. Ch. R. 300. 
 
 797; 46 L. T. 216; 30 W. R. 417; 39— Coats v. Holbrook, 2 Sandf. 
 
 Cartmell, 249; Seb. 646; Reddaway Ch. 586; Seb. 79. 
 & Co. V. Bentham Hemp Spinning 40 — Chappell v. Davidson, 2 K. 
 
 Co., 9 R. P. C. 503; (1892) 2 Q. & J. 123; 8 DeG. M. & G. 1; Seb. 
 
 B. 639; 67 L. T. 301; Braham v. 136. 
 Bustard, 9 L. T. N. S. 199; 1 Hem.
 
 § 107] INFRINGEMENT. 263 
 
 So where the defendant claimed that the goods bearing 
 the false mark were for his own family 's use, he was en- 
 joined;''* and where the defendants contended that they 
 did not deal in the goods bearing the fraudulent mark, 
 but only acted as forwarding agents, they were en- 
 joined." - 
 
 It is always the presumption, however, that the con- 
 suming })urcliaser has no opportunity of comparing the 
 conliicting marks; and this presumption is an important 
 element in passing upon the probability of the defend- 
 ant's mark effecting deception."*^ 
 
 There is the further presumption which has been 
 recognized judicially, that the consuming purchaser is 
 *'apt to act quickly, and is therefore not expected to 
 exercise a high degree of caution."^* 
 
 § 107. The degree of resemblance which constitutes 
 infringement.— It follows from the principles which we 
 have reviewed that the question of infringement may be 
 treated from the standpoint of the degree of approxima- 
 tion between the conflicting marks. The rule for apply- 
 ing this test has been thus expressed: "What degree of 
 resemblance is necessary to constitute an infringement 
 is incapable of exact definition, as applicable to all cases. 
 All that courts of justice can do in that regard is to say 
 that no trader can adopt a trademark so resembling that 
 of another trader as that ordinary purchasers buying 
 with ordinary caution, are likely to be misled. Where 
 the similarity is sufficient to create a false impression 
 in the public mind, and is of a character to mislead and 
 
 41 — Upmann v. Forester, L. R. 43 — Pillsbury v. Pillsbury -Wash- 
 
 24 Ch. D. 231; 52 L. J. Ch. 946; burn Co., 64 Fed. Rep. 841; 12 C. 
 
 49 L. T. 122; 32 W. R. 28; Cart- C. A. 432; Manufacturing Co. v. 
 
 mell, 331. Trainer, 101 U. S. 51-64; Liggett 
 
 42 — Upmann v. Elkan, L. R. 12 & Myer Tobacco Co. v. Hynes, 20 
 
 Eq. 140; 40 L. J. Ch. 475; 24 L. T. Fed. Rep. 883. 
 
 N. S. 869; 19 W. R. 867; L. R. 7 44— Paris Medicine Co. v. W. H. 
 
 Ch. 130; 41 L. J. Ch. 246; 25 L. T. Hill Co., 102 Fed. Rep., 148-151; 
 
 N. S. 813; 20 W. R. 131; Seb. 369. 42 C. C. A. 227.
 
 264 HOPKINS ON TRADEMARKS. [§ 108 
 
 deceive the ordinaiy purchaser in the exercise of ordi- 
 nary care and caution in such matters, it is sufficient to 
 give the injured party a right to redress. "^^ 
 
 When the rule is stated in this way, it comes back to 
 tlie original question, the degree of care expected of the 
 consuming purchaser. 
 
 The application of this rule has sometimes gone far 
 afield from the ancient rule that if a mark contained 
 twenty-five parts, and but one was taken by the defend- 
 ant, it constituted infringement. Thus in a Missouri 
 case the plaintiff's mark for cigars was the name 
 "Union Station" and the picture of a building known by 
 that name. The defendant's label had a smaller pic- 
 ture of the same building, and the words ''The Gilpin- 
 Union Station." Each party displayed his own name 
 or initials on the package. The facts recited in the 
 opinion make out a typical case of technical trademark 
 infringement, yet the court denied the relief sought 
 solely on the ground of the differences in the labels, 
 though the conceded facts show the defendant to have 
 appropriated all of the technical trademark matter of 
 the plaintiff's label.^*' 
 
 § 108. The degree of care expected of the purchaser.— 
 Mr. Justice Clifford expressed the rule in these words: 
 ''What degree of resemblance is necessary to constitute 
 an infringement is incapable of exact definition as ap- 
 plicable to all cases. All that courts of justice can do 
 in that regard is to say that no trader can adopt a trade- 
 mark so resembling that of another trader as that ordi- 
 nary jourchasers buying with ordinary caution are likely 
 to be misled. ' ' ^"^ But further, in the same opinion, he 
 
 45 — McAdam, J., in Jerome v. nej' Cigar Co., 158 Mo. 158, 59 S. 
 
 Johnson, 59 N. Y. Supp. 859, quot- W. Rep. 121. 
 
 ing the first two sentences from 47 — McLean v. Fleming, 96 U. S. 
 
 Mr. Justice Clifford in McLean v, 245-251; following the language of 
 
 Fleming, 96 U. S. 245. Lord Cranworth in Seixo v. Pro- 
 
 46— Nicholson v. Wm. A. Stick- vezende, L. R. 1 Ch. D. 192. See
 
 § 108] INFRINGEMENT. 265 
 
 bases the decision explicitly upon the ground that the 
 defendant's package *'is well calculated to mislead and 
 deceive the iinivary.''^*^ 
 
 There are many instances of similar dicta. We have 
 heretofore referred to the assertion of Vice-Cliancellor 
 Shadwell, who said that **If a thing contains twenty- 
 five parts, and but one is taken, an imitation of that one 
 will be sufficient to contribute to a deception, and the 
 law will hold those responsible who have contributed to 
 the fraud." "^^ It is at this point that we can secure prob- 
 ably the most striking proof of the manner in which the 
 law of trademarks and the law of unfair competition 
 overlap each other. True, the function of the trade- 
 mark is to distinguish the goods to which it is applied, 
 and whose origin or ownership it indicates. True that 
 the purpose of an intentional infringement is to draw 
 away the trade secured by the infringed mark for the 
 benefit of the owner of the infringing mark. That in- 
 fringement is to be determined, not by the question 
 whether any substantial part of the trademark is copied 
 or duplicated by the infringing mark, but by the tendency 
 of the pirated mark to deceive (whether the careful, or- 
 dinary or unwary purchaser is immaterial), is an anomaly 
 in our jurisprudence. But the courts have persisted in 
 disregarding the technical composition and detail of 
 trademarks, and have invariably applied the test of tend- 
 ency of the sus}Dected mark to deceive. The test ignores 
 the absolute right of property which exists in a lawful 
 trademark, and gives the owner of such a mark no other 
 or further rights than are given the plaintiff who uses 
 
 also Popham v. Wilcox, 14 Abb. Pr. 49 — Guinness v. Ullmer, 10 L. T. 
 
 N. S. 206; 38 N. Y. Super. Ct. 274; 127. See also Leather Cloth Case, 
 
 66 N. Y. 69; 23 Amer. Rep. 22; 11 H. L. C. 523; 35 L. J. Ch. 53; 
 
 Seb. 425; Dawes v. Davies, Seb. 11 Jur. N. S. 513; 12 L. T, N. S. 
 
 426. 742; 13 W. R. 873; Popham v. Wil- 
 
 48— McLean v. Fleming. 96 U. S. cox, 66 N. Y. 69. 
 245, at page 256.
 
 266 HOPKINS ON TRADEMARKS. [§ 108 
 
 only generic terms to designate his wares and perforce 
 relies upon the doctrines of unfair competition.-'^^ 
 
 The broad rule as stated above by Mr. Justice Clifford 
 has been elaborated by other courts. In some cases no 
 reference is made to the care and caution exjDected to be 
 exercised by the purchasing public,^^ while in others it is 
 held that it must be shown that the mark employed bears 
 such resemblance to the complainant's trademark "as 
 to be calculated to mislead the public generally who are 
 purchasers of the article;"^- sometimes it has been ex- 
 pressed as the deception of 'Hhe ordinary mass of pur- 
 chasers;"^^ or, as by the Massachusetts court, that in- 
 junction will not lie "unless the form of the printed 
 words, the words themselves, and the figures, lines 
 and devices, are so similar that any person, with 
 such reasonable care and observation as the pub- 
 lic generally are capable of using and may be 
 expected to exercise, would mistake the one for 
 the other. "^* The irreverent layman could not 
 fail to note the remarkable elasticity of the rule as thus 
 
 50 — Lord Westbury evidently was Laight, 18 Beav. 164; Hardy v. Cut- 
 impressed with this thought ter, 3 Off. Gaz. 468; Heinz v. Lutz, 
 when he said, "Imposition on the 146 Pa. 592, 23 Atl. Rep. 314. 
 public is necessary for the plain- 52 — Walton v. Crowley, Fed. Case 
 tiff's title, but in this way only, No. 17133, 3 Blatchf. 440-447; Com- 
 that it is a test of the invasion by pania de Tobacos v. Rehder, 5 R. 
 the defendant of the plaintiff's P. C. 61; Cartmell, 103. 
 right of property; for there is no 53 — Blackwell v. Wright, 73 N. 
 injury if the mark used by the de- C. 310-313; Crawshay v. Thompson, 
 fendant is not such as is mistaken, 4 Man. & G. 357; 5 Scott N. R. 
 or is likely to be mistaken, by the 562; 11 L. J. C. P. 301; Seb. 72. 
 public for the mark of the plain- 54 — Gllman v. Hunnewell, 122 
 tiff; but the true ground of this Mass. 139-148. It is only fair to 
 court's jurisdiction is property." note that this case was improperly 
 Hall V. Barrows, 4 DeG. J. & S. 150. brought as a trademark case, and 
 
 51 — Ransome v. Bentall, 3 L. J. is treated as such by the court, 
 Ch. N. S. 161; Seb. 53; Taylor v. whereas the facts show that in- 
 Carpenter (3), 2 Sandf. 603; 11 junctive relief could only have 
 Paige, 292; Cox, 45; Seb. 84; Cof- been granted, if at all, to restrain 
 feen v. Bninton, 5 McLean, 256; the unfair competition of the de- 
 Cox, 132; Seb. 109; Shrimpton v. fendant. It has been held else-
 
 § 108] INFRINGEMENT. 267 
 
 laid down.''"' And we find a court of repute holding that 
 "it is the unwary, and not the wary, who are to be pro- 
 tected, as most likely to be taken in by the counterfeit;"^'' 
 and another saying that equity * ' should presume that the 
 public makes use of the senses of sight and hearing, and 
 that it is possessed of a sufficient amount of intelligence 
 to note the difference these senses convey;""'^ and Sir 
 George Jessel saying: "I am not, as I consider, to de- 
 cide cases in favor of fools and idiots, but in favor of 
 ordinary English people, who understand English when 
 they see it."^* 
 
 The English courts have devoted much time to specu- 
 lating whether '"most Englishmen" would mistake the 
 defendant's mark for the plaintiff's, or whether if the 
 mark failed to deceive "most Englishmen" it still might 
 mislead "the ordinaiy native purchaser in Bombay where 
 the goods go," as has actually been done in the opinion 
 of one court.''^ Under the doctrine so stated, I will not 
 be protected by injunction in a case where the defendant 
 has not copied my trademark sufficiently in detail to 
 deceive "most Englishmen," but if my goods are sold to 
 natives of Africa I may have an injunction against him 
 if he engages in that trade. 
 
 where, however, that the relief will wary." Von Mumm v. Frash, 56 
 not be granted where the defend- Fed. Rep. 830-839. The following 
 ants' acts are such as could deceive cases have held that the right to 
 only a careless purchaser. N. K. relief depends only upon a degree 
 Fairbank Co. v. Luckel, King & of resemblance calculated to de- 
 Cake Soap Co., 88 Fed. Rep. 694. ceive the careless and unwary. Col- 
 But this decision was reversed on man v. Crump, 70 N. Y. 573, 578; 
 appeal; s. c, 42 C. C. A. 376, 102 McCann v. Anthony, 21 Mo. App. 
 Fed. Rep. 327-332. 83; Wirtz v. Eagle Bottling Co.. 
 
 55— Substantially the same die- 50 N. J. Eq. 164. 24 Atl. Rep. 658. 
 
 turn is to be found in Ball v. Sie- 57 — Munro v. Tousey. 129 N.Y. 38. 
 
 gel, 116 111. 137-146; citing Popham 58— Singer Mfg. Co. v. Wilson, 
 
 v. Cole, 66 N. Y. 69. L. R. 2 Ch. D. 434; quoted with 
 
 56 — Swift V. Dey, 4 Robertson, approval, Munro v. Smith, 13 N. 
 
 611; Cox, 319; Seb. 245. And Y. Sup. 708. 
 
 Judge Benedict has said: "It is 59— Wilkinson v. Griffith, 8 R. P. 
 
 no answer to say that the ultimate C. 370-374. 
 purchaser was ignorant or un-
 
 268 HOPKINS ON TRADEMARKS. [§ 109 
 
 If we were to undertake to deduce a general rule from 
 the cases it would be that the test is the likelihood of 
 deception of the consuming purchaser ;^*^ and in applying 
 this test all doubts are to be resolved in favor of the 
 complainant."^ 
 
 § 109. Infringement must be by use on same class 
 of goods.— The English Patents, Designs, and Trade- 
 mark Acts, 1883 to 1888, provide that the application for 
 registration must state the particular goods or classes 
 of goods in connection with which the applicant desires 
 the trademark to be registered."" A similar provision 
 exists in the act of congress of 1905."^ Aside from these 
 provisions as to registration, it is self-evident that there 
 can be no infringement unless the two marks are used 
 on the same class of goods;"* though in this country, 
 owing to the absence of the exact classifications used in 
 the English registration practice, it is probably more ex- 
 act to say that the marks must be used upon goods of so 
 similar description that goods bearing the defendant's 
 mark may be taken for the manufacture of the plaintiff; 
 as where the plaintiff adopted the words ''Lone Jack" 
 to designate smoking tobacco manufactured by him, and 
 
 60— Allegretti Chocolate Cream 62— Patents, Designs, and Trade- 
 Co. V. Keller, 85 Fed. Rep. 643; marks Act, 1883, Part IV, sec. 62, 
 Collinsplatt v. Finlayson, 88 Fed. subsec. 3. 
 Rep. 693; N. K. Falrbank Co. v. 63— Act of 1905, § 1. 
 R. W. Bell Mfg. Co., 23 C. C. A. 64— Re Rabone, Seb. 642; Re 
 554, 77 Fed. Rep. 869-877; Hansen Jelly, Son & Jones, 51 L.. J. Ch. 639; 
 V. Siegel-Cooper Co., (1), 106 Fed. Re Whiteley, 43 L. T. N. S. 627; 
 Rep. 690-691; Kostering v. Seattle Ainsworth v. Walmsley, L. R. 1 
 Brewing & Malting Co., 116 Fed. Eq. 518; Hall v. Barrows, 4 DeG. 
 Rep. 620, 54 C. C. A. 76. J. & S. 150; Hart v. Colley, 7 R. 
 
 61— Anheuser-Busch Brewing P. C. 93; L. R. 44 Ch. D. 193; 59 
 
 Ass'n V. Piza, 24 Fed. Rep. 149-151. L. J. Ch. 355; Cartmell, 154; Jay 
 
 That injunction will be granted if v. Ladler, 6 R. P. C. 136; L. R. 40 
 
 the resemblance is "calculated to Ch. D. 649; 60 L. T. 27; 37 W. R. 
 
 deceive the unwary, the incautious, 505; Cartmell, 184; Colman v. 
 
 or the ignorant purchaser," see Crump, 70 N. Y. 573; Hecht v. Por- 
 
 Cauffman V. Schuler, 123 Fed. Rep. ter, 9 Pac. C. L. J. 569; Soci6t6 
 
 205. Anonyme v. Baxter, 14 Blatchf.
 
 § 109] INFRINGEMENT. 2(i9 
 
 the defendant applied the same words to cigarettes. The 
 court gave as its reason for enjoining the defendant that 
 he was holding out his cigarettes as containing the plain- 
 tiff's tobacco."'' And where the defendants were selling 
 shirts under the name of "Wamyesta" and advertising 
 them as made of "Wamyesta," they were enjoined from 
 using that designation at the instance of the WamsulU 
 Mills, whose product was known as "Wamsutta" mus- 
 lin, and was not used by defendants in the manufacture 
 of their shirts."" Where the complainants used the 
 words "Collins & Co." upon metal articles of their man- 
 ufacture, but did not manufacture shovels, the defend- 
 ants were enjoined from placing those words on shovels, 
 they having exi)orted shovels so marked to Australia, 
 where the complainants marketed a portion of their out- 
 put.""^ In a recent case Judge Bradford said : * ' Pale ale 
 and half-and-half must, as against an " infringer of a 
 trademark for the fonner, be treated as malt liquors sub- 
 stantially similar to each other and belonging to the 
 same class. Courts should not be astute to recognize in 
 favor of an infringer fine distinctions between different 
 articles of merchandise of the same general nature, and 
 should resolve against the wrong-doer any fair doubt 
 whether the public may or may not be deceived through 
 the application of the spurious symbol.""'^ Where the 
 I)laintiff was the manufacturer of "Omega Oil," a lini- 
 ment extensively advertised as a remedy for skin and 
 scalp diseases, a defendant who began to manufacture 
 and sell a soap named "Omega Oil Medicated Soap," 
 advertised by defendant as a remedy for diseases of 
 
 261, Fed. Case No. 8099; Amos- Phila. 535. 
 
 keag Mfg. Co. v. Garner, 55 Barb. 67— Collins Co. v. Oliver Ames fc 
 
 151; George v. Smith, 52 Fed. Rep. Sons, 18 Fed. Rep. 561. See also 
 
 830; Air-Brush Mfg. Co. v. Thayer, to same effect, Eno v. Dunn, L. R. 
 
 84 Fed. Rep. 640. 15 A. C. 252. 
 
 65 — Carroll v. Ertheiler. Cox, 68— Bass, Ratcliff & Gretton 
 
 Manual, 669, 1 Fed. Rep. 688. (Ltd.) v. Feigenspan, 96 Fed. Rep. 
 
 66— Wamsutta Mills v. Allen, 12 206-211.
 
 270 HOPKINS ON TRADEMARKS. [§ 109 
 
 llie skin and scalp, an injunction was granted the plain- 
 tiff on the authority of the "Lone Jack" case, Judge 
 Blanchard saying that "The adoption of the words 
 "Omega Oil' by defendant was calculated to deceive the 
 public into the belief that plaintiff's article was being 
 put up for sale in another form, at least into the belief 
 that the soap was placed on the market by plaintiff or 
 by its consent."*'^ 
 
 It is the necessary converse of the rule under con- 
 sideration that it is no defense to an action for trade- 
 mark infringement that the defendant used the mark 
 in application to another class of merchandise before 
 the plaintiff" began his use of the mark. Thus where a 
 defendant had applied the word, "Eijicure" to canned 
 peaches and canned tomatoes, that fact did not avail as 
 a defense, where the plaintiff was the first to apply the 
 word to canned salmon, and the defendant afterwards 
 began to apply it to canned salmon. In his opinion, 
 Judge Coxe observes: "The reasoning of some of the 
 authorities would indicate that the defendants had a 
 right to use the brand in connection with other fruit 
 and vegetables, analogous to tomatoes and peaches, but 
 to assert that they have the right to use it on all canned 
 goods is carrying the doctrine far beyond any reported 
 case. Beer and nails do not belong to the same class 
 of merchandise because both are sold in kegs."'^*^ 
 
 In a recent case in which the complainant's mark was 
 applied to baking soda and saleratus, and the defend- 
 ant's to baking powder, Judge Baker held the parties' 
 goods to be in the same class because they were handled 
 generally by the same class of dealers and purchased by 
 the same class of customers; either is indifferently used 
 to accomplish the same object ; so that they come in direct 
 competition with each other in sale and use. In that 
 
 69 — Omega Oil Co. v. Weschler, 70 — George v. Smith, 52 Fed. 
 71 N. Y. Supp. 983, 984. Rep. 830-832.
 
 § 110] INFRINGEMENT. 271 
 
 case the rule is announced that "goods are in the same 
 class whenever the use of a given trademark or symbol 
 on both would enable an unscrupulous dealer readily to 
 palm off on the unsuspecting ])urchaser the goods of 
 the infringer as the goods made by the owner of the 
 trademark, or with his authority and consent." "• 
 
 §110. The value of proof of fraudulent intent. — So 
 much is said of fraudulent intent in the decisions that it 
 is proper to discuss it in this place, in its relation to in- 
 fringement. As we have seen, equity will restrain the 
 use of the infringing mark without regard to the intent 
 of the defendant. It is, however, a matter of practical 
 importance to establish the deliberate fraud of the de- 
 fendant where it exists. It was distinctly held by Lord 
 Westbury^ that an account would only be given with the 
 injunction in respect of any user by a defendant after he 
 had become aware of the prior ownership;'^- and in 
 another case, where defendant claimed to have bought 
 counterfeit champagne believing it to be genuine, an ac- 
 counting was denied because of the absence of proof of 
 guilty knowledge."^ And the fraudulent intention of 
 the defendant must be shown in an action at law,""* or at 
 least to support the recovery of punitive damages."^ But 
 the rule is fixed both in England and the United States 
 that proof of fraudulent intent, or actual deception of 
 the public, are alike unnecessary in actions in equity, 
 in technical trademark cases ; nor is it necessar}^ in cases 
 of trademark infringement or unfair competition to 
 prove actual deception of purchasers where tliere is 
 shown "a manifest liability to deception."^*' 
 
 71— Church & Dwight Co. v. 3 Mylno & Cr. 338; Weed v. Peter- 
 
 Russ, 99 Fed. Rep. 276-280. son, 12 Abb. Pr. N. S. 178. 
 
 72 — Edelsten v. Edelsten, 1 DeG. 74 — Edelsten v. Edelsten, supra. 
 
 J. & S. 185. 75— Faber v. D'Utassey. 11 Abb. 
 
 73— Moet V. Couston, 33 Beav. Pr. N. S. 399; Marsh v. Billings, 7 
 
 578. See also Rose v. Loftus, 47 Cush. 322; Cox, 118. 
 
 L. J. Ch. 576; Millington v. Fox, 76— Fuller v. Huff, 43 C. C. A.
 
 272 HOPKINS ON TRADEM^\JtKS. [§ 111 
 
 § 111. The manner of establishing fraudulent in- 
 tent.— The inspection of the two marks in controversy 
 is the main test of the alleged resemblance/'^ although 
 the testimony of expert witnesses familiar with the trade 
 and the habits of customers is of weight."** So, for ex- 
 ample, where the plaintiff's mark was a tin star, and 
 the defendant's a tin buzz-saw, both affixed in use upon 
 plug tobacco, the court could have small difficulty in 
 inferring fraudulent intent.^'-* Among other matters con- 
 sidered by the courts as probative of the defendant's in- 
 tent are false representations of securing awards at an 
 exhibition ;*^'^ the fact that defendant, who adopted as 
 a mark for his factory the words "Norfolk House," 
 previously used by plaintiff, kept the j^ublication of that 
 name out of a city directory ;^^ and the circumstance 
 that defendant removed his place of business into the 
 same locality as the plaintiff,^- or is dealing in other 
 fraudulent goods. *^ 
 
 A curious instance of facts regarded as indicia of 
 fraud is to be found in a case where a plaintiff whose 
 name, originally "Dr. J. W. Trust," had been changed 
 to "Dr. T. F. Gouraud," was the manufacturer of cos- 
 
 453, 104 Fed. Rep. 141, 145, re- Rep. 487, 488; reversed on other 
 
 versing Fuller v. Huff, 99 Fed. Rep. grounds, 35 C. C. A. 237, 94 Fed. 
 
 439; Manitowoc Malting Co. V. Mil- Rep. 667; Fullwood v. Fullwood 
 
 waukee Malting Co., 119 Wis. 543, (1), W. N. 1873, p. 93; W. N. 1873, 
 
 97 N. W. Rep. 389. p. 185; Seb. 42. See also to 
 
 77 — Drummond v. Tinsley, 52 same effect, Lee v. Haley, 21 
 
 Mo. App. 10; Liggett & Myers Tob. L. T. N. S. 546; 18 W. R. 
 
 Co. v. Finzer, 128 U. S. 182-184; 181; L. R. 5 Ch. D. 155; 39 L. J. 
 
 Weyman v. Soderberg, 108 Fed. Ch. 284; 22 L. T. N. S. 251; 18 W. 
 
 Rep. 63-65 . R. 242; Viano v. Baccigalupo, 183 
 
 78 — Drummond V. Tinsley, sMpm. Mass. 160, 67 N. E. Rep. 641; 
 
 79 — Liggett & Myers Tob. Co. v. Church v. Kresner, 49 N. Y. Supp. 
 
 Sam Reid Tob. Co., 104 Mo. 53. 742; International Society v. In- 
 
 80 — Cave v. Myers, Seton (4th ternational Society, 59 N. Y. Supp. 
 
 ed.), 238; Seb. 304. 785. 
 
 81 — Rodgers v. Rodgers, 31 L. 83 — Chas. E. Hires Co. v. Con- 
 
 T. N. S. 285; Seb. 442. sumers' Co., 100 Fed. Rep. 809-812, 
 
 82— Elgin Nat. Watch Co. v. 41 C. C. A. 71. 
 Illinois Watch Case Co., 89 Fed.
 
 § 112] INFRINGEMENT. 273 
 
 metic styled ''Gouraud's Oriental Cream," and the de- 
 fendants, his sons, who had retained the name Trust, 
 engaged in the sale of a cosmetic which they named 
 ''Creme Orientale, by Dr. T. F. Gouraud's Sons;" the 
 court holding from these facts that the statement of the 
 relationship, though tiiithful, was made with fraudulent 
 intent.^* The use on defendant's label of fictitious 
 medals of award has been treated as evidence of fraudu- 
 lent intent**^ 
 
 As most of these badges of fraud have been referred 
 to by the courts because of their determining influence 
 in cases of unfair comi>etition, we will consider them at 
 length in that connection. Those we have mentioned 
 are illustrative, however, of the class of facts pertinent 
 to be shown in cases of technical trademark infringe- 
 ment, and to prove which is important for the reasons 
 and purjioses above referred to. 
 
 §112. Infringing by refilling trademarked pack- 
 ages.— There is no doubt that one who furnishes liquors 
 (or any other class of goods) with the expressed pur- 
 pose that the goods so sold are to be used in refilling 
 genuine packages whose original contents have been re- 
 moved will be dealt with as an infringer and enjoined in 
 equity.^^ The refilling of genuine packages will be 
 restrained,**^ even where the package, a bottle bearing a 
 name blown in the glass, is used for a similar article, 
 in connection with a label not resembling that borne by 
 
 84 — Gouraud v. Trust, 3 Hun, 257. Compare Hostetter v. Fries, 17 
 
 627; Seb. 460. Fed. Rep. 620, in which defendants 
 
 85 — Bolen & Byrne Mfg. Co. v. compounded a substance to be used 
 
 Jonasch, 60 N. Y. Supp. 555. in making Hostetter's Bitters, and 
 
 86 — Hostetter Co. v. Bruegge- sold it with directions for so using 
 
 man-Rcinart Distilling Co., 46 Fed. it, but injunction was denied. This 
 
 Rpp. 188; Cox, Manual, 729; Hos- decision is entitled to no weight, 
 tetter Co. V. Wm. Schneider Co., 87 — Evans v. Von Laer, 32 Fed. 
 
 107 Fed. Rep. 705; Hostetter Co. Rep. 153; Sawyer Crystal Blue Co. 
 
 V. Conron, 111 Fed. Rep. 737; v. Hubbard, 32 Fed. Rep. 388; Rose 
 
 Samuel Bros. & Co. v. Hostetter v. Henley, cited at 47 L. J. Ch. 577; 
 
 Co., 55 C. C. A. Ill, 118 Fed. Rep. 38 L. T. N. S. 410; Seb. 551; Van 
 18
 
 274 HOPKINS ON TR^U)EMARKS. [§ 113 
 
 it originally.*"^ Injunction will issue even where the 
 refilling was done at the request of a customer.^^ Judge 
 Thayer has enjoined a defendant from offering for sale 
 an imitation of Hostetter's Bitters in bulk with advice 
 to customers to refill bottles originally containing the 
 genuine compound, with the spurious article.*^^ In this 
 class of cases "the burden is strongly upon the com- 
 plainant to prove fraud by a fair preponderance of evi- 
 dence. ' "'^ 
 
 §113. Infringement by refitting and reselling worn 
 trademarked articles.— Akin to refilling trademarked 
 packages are cases where, a part of a trademarked arti- 
 cle having worn out in service, the parts are replaced 
 and the article sold without removing the trademark, 
 and where this replacement of parts is made by the 
 owner of the trademark, identity being substantially re- 
 tained, no fraud is effected. Otherwise, if the replace- 
 ment is made by a stranger.*^- The Massachusetts court 
 has refused to enjoin the manufacture of stove castings 
 
 Hoboken v. Mohns & Kaltenbach, Reinert Co., 46 Fed. Rep. 188; Cox, 
 
 112 Fed. Rep. 528; Pontefact v. Manual, 729; cited and followed in 
 
 Isenberger, 106 Fed. Rep. 499; Hostetter v. Sommers, 84 Fed. Rep. 
 
 Hiram Ricker & Sons v. Leigh, 77 333. These cases overrule Hostet- 
 
 N. Y. Supp. 540; Eckhart v. Con- ter v. Fries, 17 Fed. Rep. 620, 
 
 solidated Milling Co. 72 111. App. where Judge Wallace refused to en- 
 
 70; Scott V. Standard Oil Co., 106 join defendants who prepared and 
 
 Ala. 475. sold an extract, giving instructions 
 
 88 — Evans v. Von Laer, 32 Fed. to their customers for making 
 
 Rep. 153; Hostetter v. Anderson, 1 "Hostetter's Bitters" from the ex- 
 
 V. R. (W. A'B. & W.) Eq. 7; 1 tract. The rule stated in the text 
 
 Anst. Jour. 4; Seb. 652; Rose v. is followed in Myers v. Theller, 38 
 
 Loftus, 47 L. J. Ch. 576; 38 L. T. Fed. Rep. 607-609; Hostetter Co. v. 
 
 N. S. 409; Seb. 608. See contra, Martinoni, 110 Fed. Rep. 524. 
 Welch V. Knott, 4 K. & J. 747; 91— Coxe, J., in Hostetter Co. v. 
 
 4 Jur. N. S. 330; Seb. 157. Comerford, 97 Fed. Rep. 585; and 
 
 89 — Barnett v. Leuchars, 13 L. to the same effect see Hostetter 
 
 T. N. S. 495; 14 W. R 166; Seb. Co. v. Bower, 74 Fed. Rep. 235. 
 253. 92 — General Electric Co. v. Re- 
 
 90 — Hostetter v. Brueggeman- New Lamp Co., 128 Fed. Rep. 154.
 
 § 114] INFRINGEMENT. 275 
 
 used to replace woni i)arts of a plaintiff's trademarked 
 stoves.*^^ 
 
 § 114. Infringement by applying a manufacturer's 
 trademark to goods of his to which he does not intend 
 its application.— In Hennessy v. White, the defendants 
 bottled brandy, purchased in casks from plaintiffs, and 
 apjjlied to such bottling a label which was a colorable 
 imitation of that used by plaintiffs to designate a higher 
 grade of brandy sold by them in bottles only. The court, 
 by Molesworth, J., said: '*! think a new feature which 
 has not been present in any other case, and is, there- 
 fore, not touched by the language of the other cases, is 
 one which I ought to act upon here; that is, that 
 the makers of articles of different ([ualities are entitled 
 to brand their best article in a particular way to show 
 the superior value they put upon it." Stowell, C. J., 
 in the same case, in the Victoria supreme court, states 
 the i-ule more broadly: ''If a brandy different from that 
 which the manufacturer bottled is put into bottles and 
 sold as the manufacturer's bottled brandy, the fact that 
 it is the manufacturer's bulk brandy does not make the 
 sale less an imposition."'-*^ There can be no doubt of 
 the right of the manufacturer or selector to designate 
 goods of a certain grade bottled or packed by him by 
 a distinctive trademark, and that no one purchasing 
 goods in bulk from him can thereby acquire the right 
 to pack or bottle such goods under the trademark of the 
 vendor used only upon his packing or bottling. Wliether 
 the bulk goods are better than or inferior to the trade- 
 marked goods is utterly immaterial except as bearing 
 upon the question of damages.^*^ 
 
 93— Magee Furnace Co. v. Le Seb. 651; Krauss v. Jos. R. Pee- 
 
 Barron, 127 Mass. 115. bles' Sons Co., 58 Fed. Rep. 585. 
 
 94— Hennessy v. White, 6 W. W. 95— See the case in which a per- 
 
 & A'B. Eq. 216-221; Seb. 650. See son purchasing pens from a manu- 
 
 also to same effect Hennessy v. facturer removed the labels and 
 
 Hogan, 6 W. W. & A'B. Eq. 225; substituted others marked with a
 
 276 HOPKINS ON TR.U)EMARKS. [§ 115 
 
 "It is manifest that the sale of merchandise in bulk 
 by a manufacturer does not justify the vendee in using 
 on his retail packages the label which the manufacturer 
 uses upon the same merchandise only when prepared by 
 himself on smaller packages for the retail trade,""*' but 
 he is at liberty to so mark them as to truthfully indi- 
 cate the manufacturer.^''' Wliere bulk goods were sold 
 without limitation as to the manner in which they were 
 to be re-sold, the effect of the sale was held to be "to 
 invest the defendants (vendees) with the title to the 
 article, and with the right to divide it into small pack- 
 ages, as (they) might see fit, and sell the same as 
 originating from the plaintiff, according to the fact."®* 
 
 §115. Substitution.— By "substitution," as used here, 
 is meant the substitution by a retail merchant of goods 
 other than those called for by a purchaser. In its nar- 
 rower sense it is confined to the retail merchant who 
 commits the offense. In its broader sense it includes the 
 manufacturer of the substituted goods in cases where he 
 has so prepared the goods as to make the substitution 
 possible, and for the purpose and with the intent that 
 they may be substituted.^ Of such manufacturers the 
 superior court of New York, by Barrett, J., said: "The 
 law of trademarks has been gradually expanding so as 
 to meet just such cases. The courts, in a long and un- 
 broken line of decisions, have endeavored to uphold and 
 enforce commercial m.orality, and have afforded their 
 protection to honest enterprise and skill. "^ As to the 
 
 numeral indicating another grade ment Co. v. Frauenhar, 126 Fed. 
 
 of pen made by the same manufac- Rep. 228. 
 
 turer. Gillott v. Kettle, 3 Duer, 1 — Enoch Morgan's Sons Co. v. 
 
 624; Cox, 148. Wendover, 43 Fed. Rep. 420. 
 
 96 — Taft, J., in Krauss v. Jos. R. 2 — Morgan Sons Co. v. Troxell, 
 
 Peebles' Sons Co., 58 Fed. Rep. Cox, Manual, 674. The New York 
 
 585-592. court of appeals, treating this 
 
 97 — Russia Cement Co. v. Kat- case as purely a technical trade- 
 
 zenstein, 109 Fed. Rep. 314. mark case, reversed it in 89 N. Y. 
 
 98 — Wheeler, J., in Russia Ce- 292. If there had been considered
 
 § 116] INFRINGEMENT. 277 
 
 retailer who performs the actual substitution, there is 
 no question that he will invariably bo enjoined from re- 
 petitions of his offense.^ 
 
 The law as to substitution is admirably embraced in 
 the language of Judge Lacombe: "A court of equity will 
 not allow a man to palm off his goods as those of an- 
 other, whether his misrepresentations are made by word 
 of mouth, or more subtly, by simulating the collocations 
 of details of appearance by which the consuming public 
 has come to recognize the product of his competitor."* 
 
 The sale of an imitation article without misrepresenta- 
 tion will not be enjoined. Where the article was a 
 bitters made in imitation of Hostetter's Bitters, but the 
 defendant had sold the goods without any misrepresen- 
 tation of their identity and without suggesting their 
 adaptibility for substitution, injunctive relief was re- 
 fused.^ 
 
 False oral representations that defendant's goods are 
 those of the complainant will be enjoined,*' though where 
 the defendant's affidavits contradict those of the plain- 
 tiff concerning such representations preliminary injunc- 
 tion will be denied," and the proof must be clear on 
 final hearing to entitle plaintiff to the relief sought.^ 
 
 § 116. The use of misleading signs and circulars en- 
 joined.— The use of misleading business signs will be 
 
 by the appellate court the doctrines 4 — Enterprise Mfg. Co. v. Lan- 
 
 we have now under discussion, the ders, Frary & Clark, 65 C. C. A. 
 
 decision of the lower court would 587, 131 Fed. Rep. 40, 241; affirm- 
 
 have been affirmed. Taendsticks- ing 124 Fed. Rep. 923. 
 
 fabriks Aktiebolaget Vulcan v. My- 5 — Hostetter Co. v. Van Vorst, 62 
 
 ers, 11 N. Y. Sup. 663; Avery v. Fed. Rep. 600. 
 
 Meikle, 81 Ky. 75; Cox, Manual, 6 — Weber Medical Tea Co. v. 
 
 686. and cases cited elsewhere in Kirchstein, 101 Fed. Rep. 580. 
 
 this chapter. 7 — Lavanburg v. Pfeiffer, 52 N. 
 
 3 — Saxlehner v. Eisner & Men- Y. Supp. 801. 
 
 delson Co., 88 Fed. Rep. 61-70; 8— Lavanburg v. Pfeiffer, 66 N. 
 
 Munro v. Smith, 13 N. Y. Sup. 708; Y. Supp. 39. 
 N. K. Fairbanks Co. v. Dunn, 126 
 Fed. Rep. 227.
 
 278 HOPKINS ON TRADEMARKS. [§ 116 
 
 restrained in equity, whether or not such signs are fixed 
 before a particular place of business, or are distributed 
 through the trade. The general rule has been thus 
 stated by the Chancellor of Upper Canada in a case 
 involving the use of signs bearing words "The Gol- 
 den Lion" used upon a diy goods establishment: 
 ''Where it is clear to the Court that the defendant him- 
 self intended an advantage by the use of a particular 
 sign or mark in use by another, and believes he has 
 obtained it, or, in other words, that the defendant him- 
 self thought the use of it was calculated to advertise 
 him at the expense of the plaintiff, and this was his 
 object in using it, and where such has been the effect 
 of the user, T think the Court should say to him 'Remove 
 that sign; its use by you may, as you intend, damage 
 the plaintiff'. It cannot be necessary or valuable to you 
 for any other purpose. You have your choice of many 
 signs which, as a mere attraction, or to give your store 
 a marked designation, must answer a fair business pur- 
 pose equally well. ' " ^ 
 
 It will be noted that in the foregoing case the decep- 
 tion employed consisted in duplicating the tradename in 
 which the plaintiff's business was conducted. The same 
 principle has been applied by a New York Court in 
 granting equitable protection to a flag design used in 
 newspaper advertising by a real estate auctioneer. The 
 advertising device which was employed was the repre- 
 sentation of a flag having an ornamentation of stars, 
 fancifully arranged along its upper and lower edges. 
 The defendant duplicated this device in his newspaper 
 advertising matter, and there was testimony tending 
 to show that persons had actually been deceived into be- 
 lieving that the defendant's advertising was that of the 
 plaintiff.i^ 
 
 9— Walker v. Alley, 13 Grant Up. 10— Johnson v. Hitchcock, 3 N. 
 Can. Ch. 366. Y. Supp. 680.
 
 § 116] INFRINGEMENT. 279 
 
 In the latter case, therefore, the signs were not used 
 upon a place of business. In a Missouri case, equitable 
 relief was granted to a brewing company in the use of 
 white muslin signs of peculiar size and lettering which 
 had been distributed both by the plaintiff and the de- 
 fendant brewing companies to the retail trade through- 
 out the city of St. Louis. The decree in the lower court 
 was for the plaintiff. The St. Louis Court of Appeals, 
 in reversing the decree directing the injunction for the 
 plaintiff, said: **The correct decision of the case at bar 
 depends upon the finding of two propositions: was the 
 imitation of the plaintiff's signs by defendant merely 
 the result of an accident; or was it the result of a pre- 
 conceived design to mislead the jiublic into the belief 
 that the plaintiff's beer was being sold at the defend- 
 ant's place of business? Was the imitation of the sign 
 close enough to bring about such a deception?" ^^ 
 
 The more usual cases are those of signs bearing sim- 
 ilar tradenames exhibited on competing stores in the 
 same vicinity, in which the sign of the later comer is 
 enjoined if calculated to mislead the public into the false 
 belief that they are patronizing the older establish- 
 ment.'^ 
 
 Circulars containing false statements,— The usual 
 remedy by injunction against unfair competition will 
 be granted where a competitor issues circulars calculated 
 to deceive customers into the false belief that the goods 
 of the parties are identical.^^ The relief has been granted 
 where the defendant's circulars were sent to the plain- 
 tiff's customers and recited that defendant had there- 
 
 11 — American Brewing Co. v. St. Caton College Co., (Minn.) 92 N. 
 
 Louis Brewing Co. 47 Mo. App. 14, W. Rep. 958. 
 20. 13— Brown v. Braunstein. 83 N. 
 
 12— Miskell v. Prokop, 58 Nebr. Y. Supp. 1096: Van Stan's Stratena 
 
 628, 79 N. W. Rep. 552; Nolan Co. v. Van Stan,— Pa.— . 58 Atl. 
 
 Bros. Shoe Co. v. Nolan, 131 Calif. Rep. 1064. For a form of injunction 
 
 271, 63 Pac. Rep. 480; Ricard v. in such a case see Bunker v. Ken- 
 
 na. Price & Stewart 883.
 
 280 HOPKINS ON TRADEMARKS. [§ 117 
 
 tofore distributed tlie goods, and that the defendant's 
 manufacturing was done in part at the plaintiff's street 
 address.^ ^ 
 
 Similarly, the use of display signs calculated to de- 
 ceive the public into patronizing one competitor in the 
 belief that they are patronizing the other, will be en- 
 joined,^^ as will the publication of circulars calculated 
 to induce the false belief that a book published by com- 
 plainant was fraudulent.^ ^ 
 
 § 117. Infringement by a dissimilar word or mark.— 
 The general rule is that there may be infringement even 
 in the absence of exact similarity between the marks.^^ 
 
 In 1866 Lord Cranworth said in a leading case: "If 
 the goods of a manufacturer have, from the mark or 
 device he has used, become known in the market by 
 a particular name, I think that the adoption by a rival 
 trader of any mark which will cause his goods to bear 
 the same name in the market may be as much a violation 
 of the rights of that rival as the actual copy of his 
 device." ^^ This dictum was elicited in a case where the 
 
 14— American Novelty & Mfg. 18— Seixo v. Provezende, supra; 
 
 Co. V. Manufacturing Electrical 12 Jur. N. S. 215; 14 L. T. N. S. 
 
 Novelty Co., 73 N. Y. Supp. 755. 314; 14 W. R. 357; Seb. 256. 
 
 15 — cady v. Schultz, 19 R. I. 193, The doctrine of the leading case 
 
 32 Atl. Rep. 915; Duke v. Cleaver, applies to all cases where the 
 
 (Tex.) 46 S. W. Rep. 1128. goods of a particular dealer or 
 
 16 — Halstead v. Houston, 111 manufacturer have become known 
 
 Fed. Rep. 376. by a name derived from his trade- 
 
 17 — Liggett & Myer Tobacco Co. mark. Anglo-Swiss Condensed 
 
 V. Hynes, 20 Fed. Rep. 883. "What Milk Co. v. Metcalf, L. R. 31 Ch. 
 
 degree of resemblance is necessary D. 454; 55 L. J. Ch. 463; 34 W. R. 
 
 is, from the nature of things, a 345; 3 R. P. C. 28; Cartmell, 48; 
 
 matter incapable of definition a Re Speer's Trademark, 4 R. P. C. 
 
 priori. All that courts of justice 521; 55 L. T. N. S. 880; Cartmell, 
 
 can do is to say that no trader 317; Re Baschiera's Trademark, 33 
 
 can adopt a trademark so resemb- S. J. 469; Re La Societe Anonyme 
 
 ling that of a rival as that ordin- des Verreries de I'Estoile, 10 R. P. 
 
 ary purchasers, purchasing with C. 436; L. R. (1894) 1 Ch. D. 61; 
 
 ordinary caution, are likely to be 11 R. P. C. 142; Wilkinson v. 
 
 misled." Lord Cranworth in Seixo Griffith, 8 R. P. C. 370; Cartmell, 
 
 y. Provezende, L. R. 1 Ch. D. 192. 344; Morgan Envelope Co. v. Wal-
 
 § 117] INFRINGEMENT. 281 
 
 plaintiff sold wine in casks stamix^d with the device of 
 a crown and an eagle, and the initials "B. S." on the 
 head of tlie cask, and a crown, the word "Seixo" and 
 a date at the bung hole, from which the wine had ac- 
 quired the name "Crown Seixo;" while the defendants 
 sold wine in casks stamped on the head and at the bung 
 hole with the device of a crown, the initials "C. B.," 
 the words "Seixo de Cima," and figures "1861." The 
 defendants were enjoined notwithstanding the fact that 
 the marks were not similar. 
 
 Under this rule, plaintiffs who made a certain beer to 
 which they applied the device of a bull-dog's head were 
 granted an injunction against the use by competing 
 dealers of a label similar in shape to the plaintiffs' and 
 bearing a terrier's head. There was no resemblance 
 between the labels beyond the similarity in shape, but 
 the plaintiffs' beer had come to be known as "Dog's 
 Head Beer," and the use of a dog's head upon similar 
 merchandise by the defendants was manifestly for the 
 purpose of passing off their beer as being the plain- 
 tiffs '.^» It is self-evident that a trademark may be in- 
 fringed by a mark entirely different, but suggesting to 
 customers and the public the same word or idea. Thus 
 when an English house had used in India a trademark 
 for yam which had led the natives to call for it as " Bhe 
 Hathi" (meaning "Two Elephant") yarn, a competing 
 firm was enjoined from exporting yarn to India under 
 a trademark of which the principal feature was the rep- 
 resentation of two elephants.20 On the same reasoning 
 the word "Sportsman's" accompanied by a picture of 
 two mounted huntsmen, used as a trademark for cherry 
 brandy, was held to be infringed by the picture of a 
 
 ton, 82 Fed. Rep. 469; 81 Off. Gaz. 19— Read v. Richardson, 4.j U T. 
 
 1615; Johnson & Johnson v. Bauer N. S. 54; Cox. Manual, No. 69S. 
 
 & Black, 27 C. C. A. 374, 82 Fed. 20— Orr-Ewing & Co. v. Johnston 
 
 Rep. 662; Kann v. Diamond Steel & Co., 40 L. T. N. S. 307; Seb. 646. 
 Co., 89 Fed. Rep. 706.
 
 282 HOPKINS ON TRADEMARKS. [§ 117 
 
 limiteman standing beside his horse, and the words 
 "Huntsman's Cherry Brandy," where the proof aliunde 
 showed that the plaintiffs' liquor had become known 
 to the public as "The Hunter's Cherry Brandy.""^ 
 
 Judge Sanborn has well said that "every suit of this 
 character is founded on the fact that the action, or the 
 proposed action, of the defendant has deceived, or is cal- 
 culated to deceive, ordinary purchasers buying with 
 usual care, so that they have purchased, or will prob- 
 ably purchase, the goods of the defendant under the mis- 
 taken belief that they are those of the complainant. ' ' -^ 
 So that each case must turn upon the peculiar facts in- 
 volved. Thus where a plaintiff had for some time man- 
 ufactured tennis racquets uniformly stamped at a par- 
 ticular place upon the handle with the words "The 
 Demon," and the defendant began to manufacture and 
 sell racquets of a similar design, stamped, in the cor- 
 responding place upon the handle, with the word "De- 
 motic," the use of the word "Demotic" was restrained.^^ 
 So the word "Curative," applied to soap, has been held 
 to infringe the word "Cliticura," similarly applied j^* 
 and a red Greek cross has been held to be infringed by 
 a maltese cross with a red center, each being used as a 
 mark upon medicinal plasters.^^ 
 
 21 — Re Barker's Trademark, 53 trademark, the word "Ancross" for 
 
 L. T. N. S. 23; Cartmell, 72. Simi- umbrellas was refused registration, 
 
 lar cases are Barlow v. Johnson, 7 Re Thewlis & Blakey's Trademark, 
 
 R. P. C. 395; Cartmell, 73; Upper 10 R. P. C. 369. 
 
 Assam Tea Co. v. Herbert, 7 R. P. 24 — Potter Drug & Chemical 
 
 C. 183; Cartmell, 333; Re Worth- Corp. v. Miller, 75 Fed. Rep. 656. 
 ington's Trademark, L. R. 14 Ch. 25 — Johnson & Johnson v. Bauer 
 
 D. 8; 49 L. J. Ch. 646; 42 L. T. N. & Black, 27 C. C. A. 374, 
 S. 563; 28 W. R. 747; Cartmell, 82 Fed. Rep. 662; reversing 
 351; Jerome v. Johnson, 59 N. Y. same case, 79 Fed. Rep. 954. 
 Supp. 859. In his opinion Judge Jenkins said: 
 
 22 — Kann v. Diamond Steel Co., "It sufficiently appeared by the 
 
 89 Fed. Rep. 706. testimony that the goods of the ap- 
 
 23 — Slazenger v Feltham, 6 R. pellant have come to be known, 
 
 P. C. 531; Cartmell, 310. Thus and are offered, ordered and sold, 
 
 where an anchor had been regis- as 'Red Cross Plasters;' and we 
 
 tered in England as an umbrella cannot but think that the maltese
 
 §117] 
 
 INFRINGEMENT. 
 
 283 
 
 Other instances in which the courts have declared a 
 word or words used as a trademark to be infringed by 
 a different word or words will be found instructive. 
 For the convenience of the reader they are tabulated in 
 alphabetical order. 
 
 The Trademark. 
 ''Abacus." 
 ''Alba." 
 "Anvil." 
 "Apollinaris." 
 "Black Diamond." 
 "Bovilene." 
 "Burgess." 
 
 "Canadian Club Whis- 
 key." 
 "Cascarets." 
 "Cascarets." 
 "Cashmere Bouquet." 
 "Celluloid." 
 ' ' Chartreuse. ' ' 
 "Chatterbox." 
 
 cross adopted by the appellee, In 
 so far as it contains a red circle, 
 has a tendency to promote confu- 
 sion, and will interfere with the 
 legitimate trade of the appellant. 
 . . . The red cross speaks to the 
 eye, and the article being known 
 by that designation speaks also to 
 the ear by that name." 
 
 26— Keuffel & Esser Co. v. H. S. 
 Crocker Co., 118 Fed. Rep. 187. 
 
 27— Ibid. 
 
 28— Ibid. 
 
 29 — Apollinaris Co. v. Herrfeldt, 
 4 P. R. 478; Apollinaris Brunnen 
 V. Somborn. 14 Blatchf. 380; Fed. 
 Case No. 496. 
 
 30— Pike Mfg. Co. v. Cleveland 
 Stone Co., 35 Fed. Rep. 896. 
 
 Held to be infringed by 
 " Arcade. "=« 
 "Antique."-^ 
 " Anchor. "-« 
 "Apollinis."2» 
 "Diamond Gem."^^ 
 "Bovina."'^^ 
 "Burgiss."^^ 
 ' ' Canadian Rye "Whis- 
 key. "^^ 
 "Cascara." ^"^ 
 "Castorets."35 
 ' ' Violets of Cashmere. ' '^*^ 
 "Cellonite."^'^ 
 " Chasseurs. "^^ 
 "Chatterbook."39 
 
 31 — Lockwood v. Bostwick, 2 
 Daly, 521. 
 
 32 — Burgess v. Hills, 26 Beavan. 
 244. 
 
 33— Walker v. Mlkolas, 79 Fed. 
 Rep. 955. 
 
 34 — Sterling Remedy Co. v. 
 Gorey, 110 Fed. Rep. 372. 
 
 35 — Sterling Remedy Co. v. Sper- 
 mine Remedy Co. 50 C. C. A. 657, 
 112 Fed. Rep. 1000. 
 
 36— Colgate v. Adams, 88 Fed. 
 Rep. 899. 
 
 37— Celluloid Mfg. Co. v. Cellon- 
 ite Mfg. Co. 32 Fed. Rep. 94. 
 
 38— A. Bauer Co. v. Order ol 
 Carthusian Monks. 56 C. C. A. 484 
 120 Fed. Rep. 78. 80. 
 
 39— Estes V. Leslie, 29 Fed. Rep. 
 91.
 
 284 
 
 HOPKINS ON TRADEMARKS. 
 
 [§117 
 
 The Trademark. 
 '^Clark's O. N. T." 
 ' ' Cocoaine. ' ' 
 
 * * Cocoatina. ' ' 
 
 * * Coe 's Superphosphate 
 
 of Lime." 
 ''Corona." 
 ''Cottolene." 
 ''Cupola." 
 "Cyclops Machine 
 
 Works." 
 "Doric." 
 "Derby." 
 "Duplex." 
 "Economy." 
 "Egj^ptian Deities." 
 "El Destino." 
 
 "Electro-Silicon." 
 
 "Excelsior." 
 
 "Flor de Margaretta." 
 
 40— Clark Thread Co. v. Armi- 
 tage, 21 C. C. A. 178, 74 Fed. Rep. 
 936. 
 
 41_Burnett v. Phalon, 9 Bos.192. 
 
 42 — Schweitzer v. Atkins, 37 L. 
 J. Ch. 847. 
 
 43_Coe V. Bradley, Fed. Case 
 No. 2941, 9 Off. Gaz. 541. 
 
 44— Keuffel & Esser Co. v. H. S. 
 Crocker Co., 118 Fed. Rep. 187. 
 
 45_N. K. Fairbank Co. v. Cen- 
 tral Lard Co., 64 Fed. Rep. 133. 
 
 46— Keuffel & Esser Co. v. H. S. 
 Crocker Co., supra. 
 
 47— Hainque v. Cyclops Iron 
 Works, 136 Calif. 35, 68 Pac. Rep. 
 1014. 
 
 Held to he infringed hy 
 
 "Clark's N. E. W."*° 
 
 "Cocoine."^^ 
 "Cocaotine."^2 
 
 "Andrew Coe's Super- 
 phosphate of Lime."*^ 
 " Corinth. "^^ 
 "Cottoleo."^^ 
 " Composite. "•*« 
 "Cyclops Iron Works."*' 
 
 "Delos."^8 
 "Derwent."4» 
 " Deluxe. "^<> 
 ' ' Economic. ' '" 
 "Egyptian Amasis."'*^ 
 "El Divino" and "El 
 
 Destinacion. ' "^^ 
 "Electric-Silicon."'^* 
 "Excellent."-'^ 
 "Margarita."^'® 
 
 48— Keuffel & Esser Co. v. H. S. 
 Crocker Co. 118 Fed. Rep. 187. 
 
 49— Derby Dry Plate Co. v. Pol- 
 lard, 2 Times L. R. 276. 
 
 50— Keuffel & Esser Co. v. H. S. 
 Crocker Co., supra. 
 
 51— Ibid. 
 
 52 — Anargyros v. Egyptian Am- 
 asis Cigarette Co. 66 N. Y. Supp. 
 626. 
 
 53— Pinto V. Trott, 8 P. R. 173. 
 
 54 — Electro-Silicon Co. v. Trask, 
 59 How. Pr. 189, followed \n Same 
 V. Levy, 59 How. Pr. 469. 
 
 55— Volger v. Force, 71 N. Y. S. 
 209. 
 
 56 — Benedictus v. Sullivan, 12 P. 
 R. 25.
 
 §117 
 
 INFRINGEMENT. 
 
 285 
 
 The Trademark. 
 ''Genuine Durham Smok- 
 ing Tobacco, ' ' with 
 the picture of a bull. 
 
 "German." 
 
 "Gennan Household 
 Dyes." 
 
 **Germea." 
 
 "Gold Dust." 
 
 "Golden Crown." 
 
 "Gothic." 
 
 "Guinness." 
 
 "Home." 
 
 "Home Brand." 
 
 "Honeymoon." 
 
 "Hostetter Bitters." 
 
 "Hostetter «& Smith." 
 
 * * Humphrey 's Homeo- 
 pathic Specifics. ' ' 
 
 "Junket Tablets." 
 "Ky's Criterion." 
 
 57 — Blackwell v. Armistead, 3 
 Hughes, 163; Fed. Case No. 1474. 
 
 58— Walter Baker & Co. v. Baker, 
 77 Fed. Rep. 181. 
 
 59 — Oppermann v. Waterman, 94 
 V/is. 583; 69 N. W. Rep. 569. 
 
 60 — Sparry v. Percival Milling 
 Co., 81 Cal. 252. 
 
 61— N. K. "Fairbank Co. v. Luck- 
 el, King & Cake Soap Co., 42 C. C. 
 A. 376, 102 Fed. Rep. 327; revers- 
 ing s. c, 88 Fed. Rep. 694. 
 
 62 — Parlett v. Guggenheimer, 67 
 Md. 542; 10 Atl. Rep. 81. 
 
 63— Keuffel v. Esser Co. v. H. S. 
 Crocker Co., 118 Fed. Rep. 187. 
 
 64 — Guinness v. Heap, Seb. 617. 
 
 Held to he infringed by 
 "The Durham Smoking 
 Tobacco, ' ' with the 
 picture of a bull's 
 head."" 
 "Germania."^^ 
 "Excellent German 
 
 Household Dyes."^» 
 "Gei-m."*"^ 
 "Gold Drop."«^ 
 "Golden Chain. "«2 
 " Ionic. "^^^ 
 "Genuine.""'* 
 "Home Delight. "«5 
 "Home Comf ort. "^'^ 
 ' ' Honeycomb. ' '"^ 
 "Host-Style Bitters. "«« 
 "Holsteter & Smyte."«» 
 ' ' Reeves ' Imported Ho- 
 m e o p a t h i c Speci- 
 fics. "^« 
 "Junket Capsules."'^ 
 "Ky's Credential. ""^2 
 
 65 — New Home Sewing Machine 
 Co. V. Bloomingdale, 59 Fed. Rep. 
 284. 
 
 66 — Griggs, Cooper & Co. v. Erie 
 Preserving Co., 131 Fed. Rep. 359. 
 
 67 — Kentucky Distilleries & 
 Warehouse Co. v. Wathen, 110 Fed. 
 Rep. 641-644. 
 
 68— Hostetter v. Becker, 73 Fed. 
 Rep. 297. 
 
 69— Hostetter v. Vowinkle, 1 Dill. 
 329, Fed. Case No. 6714. 
 
 70 — Humphreys' Specific Med. 
 Co. V. Wenz, 14 Fed. Rep. 250-253. 
 
 71 — Hansen v. Siegel-Cooper Co., 
 (2). 106 Fed. Rep. 691. 
 
 72 — Kentucky Distilleries £
 
 286 
 
 HOPKINS ON TRADEMARKS. 
 
 [§117 
 
 The Trademark. 
 ''Lacto-Peptine." 
 ' * Landlords ' Protective 
 
 Bureau." 
 * ' Leopoldshall. ' ' 
 "Lightning Hay 
 
 Knives. ' ' 
 ''Limetta." 
 *' Little Shop." 
 **Maizena." 
 * ' Manufacturers ' Outlet 
 
 Co." 
 "Maryland Club Rye." 
 
 "Mechanics' Store." 
 "Miller's Chicken Cock 
 
 AVliiskey. ' ' 
 ' ' Moma ja. ' ' 
 ' ' Morse 's Compound 
 
 Syrup of Yellow Dock 
 
 Root." 
 
 Held to be infringed by 
 ' ' Lactopepsine. ' '^^ 
 "Landlords' Protective 
 
 Department. ' ''^ 
 "Leopoldsalt."^^ 
 "Lightning Pattern Hay 
 
 Knives. "^*^ 
 "Limette.""^^ 
 "Little Antique Shop."" 
 "Maizharina."^^ 
 "Taunton Outlet Co."^^ 
 
 "Maryland Jockey Club 
 
 Rye. "81 
 "Mechanical Store. "»2 
 "Miller's Game Cock 
 
 Rye. "83 
 
 "Mojava."84 
 
 "Dr. Morse's Improved 
 Yellow Dock and Sar- 
 saparilla Com- 
 pound. ' '8^^ 
 
 Warehouse Co. v. Wathen, 110 Fed. 
 Rep. 641-644. 
 
 73 — Carnrick v. Morson, L. J. N. 
 of C. (1877), p. 71. 
 
 74 — Koebel v. Chicago Land- 
 lord's Protective Bureau, 210 Ills. 
 176, 71 N. E. Rep. 362; affirming 
 Chicago Landlords' Protective Bur- 
 eau V. Koebel, 112 111. App. 21. 
 
 75— Radde v. Norman, L. R. 14 
 Eq. 348. 
 
 76— Hiram Holt Co. v. Wads- 
 worth, 41 Fed. Rep. 34. 
 
 77 — Drewry & Son v. Wood, 127 
 Fed. Rep. 887. 
 
 78— Crawford v. Lans, 60 N. Y. 
 Supp. 387. 
 
 79— Glen Cove Mfg. Co. v. Lu- 
 deling, 22 Fed. Rep. 823; 23 
 Blatchf. 46. 
 
 80 — Samuels v. Spitzer, 177 Mass. 
 226, 58 N. E. Rep. 693. 
 
 81— Cahn v. Gottschalk, 2 N. Y. 
 Supp. 13. 
 
 82 — Weinstock, Lubin & Co. v. 
 Marks, 109 Cal. 529. 
 
 83— G. G. White Co. v. Miller, 
 50 Fed. Rep. 277. 
 
 84 — American Grocery Co. v. 
 Sloan, 68 Fed. Rep. 539. 
 
 85 — Alexander v. Morse, 14 R. L 
 153.
 
 §117] 
 
 INFRINGEMENT. 
 
 287 
 
 I'he Trademark. 
 * * Mottled German Soap. ' ' 
 with circle, moon and 
 stars. 
 
 * ' Moxie. ' ' 
 
 "Moxie Nerve Food." 
 
 ** Nickel-In." 
 
 '* Normal." 
 
 ''Old Crow." 
 
 ''Old Mill Soap." 
 
 "Pancoast." 
 
 "Paragon." 
 
 ' ' Pepto-Mangan. ' ' 
 
 "Portland." 
 
 "Pride." 
 
 "Pride of Rome." 
 
 "Roberts' Parabola 
 
 Gold - Burnished 
 
 Sharps." 
 "Rogers." 
 
 86— Proctor v. McBride, Fed. 
 Case No. 11441. 
 
 1 — Moxie Nerve Food Co. v. 
 Beach, 33 Fed. Rep. 248. 
 
 2 — Moxie Nerve Food Co. v. 
 Baumbach, 32 Fed. Rep. 205. 
 
 3— Schendle v. Silver, 70 N. Y. 
 fciup. Ct. 330, 18 N. Y. Supp. 1. 
 
 4— Keuffel & Esser Co. v. H. S. 
 Crocker Co., 118 Fed. Rep. 187. 
 
 5 — W. A. Gaines & Co. v. Leslie, 
 54 N. Y. Supp. 421; 25 Misc. Rep. 
 20. 
 
 6— Swift & Co. v. Brenner, 125 
 Fed. Rep. 826. 
 
 7 — Janney v. Pan-Coast Ventila- 
 tor & Mfg. Co., 128 Fed. Rep. 121. 
 
 Held to he infringed by 
 
 "S. W. McBride's Ger- 
 man Mottled Soap," 
 with a crescent and 
 star.***^ 
 
 "Noxie."! 
 
 "Standard Nerve 
 Food. "2 
 
 "Nickel-Saved. "3 
 
 "Nonnandy."-* 
 
 "Wliite Crow."= 
 
 "Old Stone Mill Soap."« 
 
 "Pan-coast."'^ 
 
 " Pebble. "« 
 
 "Pepto-Manganate of 
 Iron and Cascara."^ 
 
 "Famous Portland. "^« 
 
 "Pride of Syracuse. "^^ 
 
 "Pride of the Home."^^ 
 
 "William Clark & Sons' 
 Parabola Gold-Burn- 
 ished Sharps. "^^ 
 
 "RoDgers."^^ 
 
 8— Keuffel & Esser Co. v. H. S. 
 Crocker Co., 118 Fed. Rep. 187. 
 
 9 — M. J. Breitenbach Co. v. 
 Spangenberg, 131 Fed. Rep. 160. 
 
 10 — Van Horn v. Coogan, 52 N. J. 
 Eq. 380; 28 Atl. Rep. 788. 
 
 11— Hier v. Abrahams, 82 N. Y. 
 519. 
 
 12 — Ft. Stanwix Canning Co. v. 
 Wm. McKinley Canning Co., 63 N. 
 Y. Supp. 704. 
 
 13— Roberts v. Sheldon, 8 Biss. 
 398; Fed. Case No. 11916. 
 
 14 — International Silver Co. v. 
 Rodgers Bros. Cutlery Co., 136 Fed. 
 Rep. 1019, 1021.
 
 288 
 
 HOPKINS ON TRADEMARKS. 
 
 [§117 
 
 The Trademark. 
 ''Koy Watch-Case Co." 
 
 '^Sanitas." 
 ''Sapolio." 
 ''Sapolio." 
 ''Sawyer's Crystal Blue 
 
 and Safety Box." 
 ''Shawknit." 
 ' * Shrewsbury, Marshall 
 
 & Co. Patent 
 
 Thread." 
 ''Simplex." 
 "Six Little Tailors." 
 "Sorosis." 
 "Southern Company, St. 
 
 Louis. ' ' 
 "Star." 
 "Stark." 
 ' ' Steinway. ' ' 
 "Stephens." 
 "Stuart's Dyspepsia 
 
 Tablets." 
 
 Held to he infringed by 
 
 ' ' Camm-Roy Watch-Case 
 
 Co."^^ 
 
 " Condisanitas. "^^ 
 
 "Saphia."^^ 
 "Sapho."i8 
 
 "Sawin's Soluble Blue 
 and Pepper Box."^* 
 
 " Seamless. "-0 
 
 "Schrewsbury - Marchal 
 Patent Thread, "^i 
 
 ' ' Simplicity. ' '^^ 
 
 "Six Big Tailors. "23 
 
 "Sartoris."2* 
 
 "Southwestern, St. 
 Louis. "^^ 
 
 "Lone Star."2« 
 
 "Star. "27 
 
 "Steinberg. "28 
 
 "Steel Pens. "29 
 
 "Dr. Stewart's Dyspep- 
 sia Tablets. "30 
 
 15 — Roy Watch-Case Co. v. 
 Camm-Roy Watch Case Co., 59 N. 
 Y. Supp. 979. 
 
 16— Sanitas Co. v. Condy, 4 P. R. 
 195. 
 
 17 — Enoch Morgan's Sons Co. v. 
 Schwachofer, 5 Abb. Pr. N. C. 265. 
 
 18 — Enoch Morgan's Sons Co. v. 
 Whittier-Coburn Co., 118 Fed. Rep., 
 657. 
 
 19 — Sawyer v. Kellogg, 7 Fed. 
 Rep. 720, 9 Fed. Rep. 601. 
 
 20 — Shaw Stocking Co. v. Mack, 
 12 Fed. Rep. 707; 21 Blatchf. 1. 
 
 21— Marshall v. Ross, L. R. 8 
 Eq. 651. 
 
 22— Keuffel & Esser Co. v. H. S. 
 
 Crocker Co., 118 Fed. Rep. 187. 
 
 23 — Mossier v. Jacobs, 65 111. 
 App. 571. 
 
 24— Little V. Kellam, 100 Fed. 
 Rep. 353. 
 
 25 — Southern White Lead Co. v. 
 Cary, 25 Fed. Rep. 125. 
 
 26 — Hutchinson v. Covert, 51 
 Fed. Rep. 832, 61 Off. Gaz. 1017. 
 
 27— Gardner v. Bailey, Seb. 365; 
 Fed. Case No. 5221. 
 
 28 — Steinway v. Henshaw, 5 P. 
 R. 77. 
 
 29— Stephens v. Peel, 16 L. T. N. 
 S. 145. 
 
 30— Stuart v. F. G. Stewart Co., 
 91 Fed. Rep. 243, 33 C. C. A. 280.
 
 §117] 
 
 INFRINGEMENT. 
 
 289 
 
 The Trademark. 
 ''Sunlight." 
 ''Swan." 
 "Tonge's." 
 "Trafford." 
 "Uneeda." 
 "Universal." 
 *'Vitae-Ore." 
 "Wamsutta." 
 ' ' Warren. ' ' 
 ' ' Welcome. ' ' 
 "Willoughby Lake.'^ 
 "Yusea." 
 "55." 
 
 Held to he infringed by 
 "American Sunlight. "^^ 
 "Black Swan. "32 
 "Tung's."-*^ 
 "Stafford. "3^ 
 "Iwanta."^^ 
 " University. "3« 
 "Vitalizing Ore."" 
 "Wamyesta."''8 
 " Warranted. ""^^ 
 "AVelcome A. Smith. "^^ 
 "Willoughby Ridge."" 
 "U-C-A."^2' 
 "35."" 
 
 It follows that a word may infringe a symbol, or vice 
 versa. Thus the figure of Columbia is an infringement 
 of the word ' ' Columbia, ' ' previously applied to the same 
 class of merchandise.^^ But the use by a plaintiff of a 
 conventional diamond-shaped design has been held not 
 to confer a trademark right in the word "diamond," 
 Judge Adams remarking: "If the complainant's goods 
 had ever been known in the trade as 'diamond steel,' or 
 
 31— Lever Bros. v. Pasfield, 88 
 Fed. Rep. 484. 
 
 32 — Ex parte Caire, 15 Off. Gaz. 
 248. 
 
 33— Tonge v. Ward, 21 L. T. N. 
 S. 480. 
 
 34— Smith v. Carron Co., 13 P. 
 R. 108. 
 
 35 — National Biscuit Co. v. Bak- 
 er, 95 Fed. Rep. 135. 
 
 36— Keuffel & Esser Co. v. H. S. 
 Crocker Co., 118 Fed. Rep. 187. 
 
 37— Noel V. Ellis, 89 Fed. Rep. 
 978. 
 
 38— Wamsutta Mills v. Allen. 12 
 Phila. 535. 
 
 39— Frost V. Rindskopf, 42 Fed. 
 Rep. 408. 
 19 
 
 40 — Lever Bros. Ltd., Boston 
 Works V. Smith, 112 Fed. Rep. 998. 
 
 41— Pike Mfg. Co. v. Cleveland 
 Stone Co., 35 Fed. Rep. 896. 
 
 42— Welsbach Light Co. v. 
 Adam, 107 Fed. Rep. 463. 
 
 43 — Collins v. Reynolds Card 
 Mfg. Co., 7 Abb. N. C. 17, Price & 
 Steuart, 262. 
 
 44 — Morgan Envelope Co. v. 
 Walton, 82 Fed. Rep. 469; 81 Off. 
 Gaz. 1615. In this connection, see 
 Kann v. Diamond Steel Co.. 89 Fed. 
 Rep. 706, and Re Thewlis & 
 Blakey's Trademark, 10 R. P. C. 
 369.
 
 290 HOPKINS ON TRADEM.\JIKS. [§ 117 
 
 generally as 'diamond' goods, it would undoubtedly be 
 protected in the use of the word 'diamond' as a trade- 
 name, even though such word nowhere appeared in con- 
 nection with the symbol of a conventional diamond form- 
 ing its trademark. Its use by a competitor, either as its 
 corporate name or tradename for its product, under such 
 circumstances would undoubtedly tend to deceive, and 
 fall within the condemnation of the cases ^f complain- 
 ant's counsel. See, especially, Johnson v. Bauer, 82 Fed. 
 Kep. 662." ^-"^ 
 
 The addition of other symbols, words or initials to the 
 trademark of another will not operate to avoid a charge 
 of infringement. "No one who has counterfeited a legit- 
 imate trademark and applied the spurious symbol in 
 competition with the genuine can avoid the charge of 
 infringement by showing that the false mark has in prac- 
 tice been so accompanied, on labels, capsules or other- 
 wise, by tradenames, designations, descriptions or other 
 accessories, not forming part of it, as to render it un- 
 likely that the public has been deceived. Such a show- 
 ing, while it may affect the nature or measure of the 
 relief to be granted, cannot defeat a suit for infringe- 
 ment."^^ 
 
 In the absence of proof of any deception of the public, 
 the courts have not been inclined to declare a different 
 mark an infringement unless the similarity was close. 
 Thus it has been held that the word "Pudding" does 
 not infringe the word "Puddine;"^^ that the word 
 "Bacocuro" does not infringe the word "No-to-bac;""*^ 
 that the mark "B. & S." does not infringe the mark 
 
 45— Pittsburg Crushed Steel Co. 47 — Clotworthy v. Schepp, 42 
 
 V. Diamond Steel Co., 85 Fed. Rep, Fed. Rep. 62. 
 
 637-642. 48 — Sterling Remedy Co. v. Eu- 
 
 46— Bradford, J., in Bass, Ratcliff reka Chem. & Mfg. Co., 80 Fed. 
 
 & Gretton (Ltd.) v. Feigenspan, Rep. 105, 25 C. C. A. 314. 
 96 Fed. Rep. 206-212.
 
 § 117J INFRINGEMENT. 291 
 
 *'S. B.;"^» that the mark ''Filofloss," applied to silk, 
 is a valid trademark notwithstanding the prior use of 
 the mark "Filoselle" applied to silk of a different char- 
 acter ;°" that the mark "Beeshore One-Night Cough 
 Cure" does not infringe the mark "One Xight Cure;"'^' 
 that the mark "Elastic Tolu" does not infringe the 
 mark "Sappota Tolu;"^^ that the mark "Star" and an 
 uncolored tin star is not infringed by "Starlight" and 
 a red paixir star;'^^ that "Everyday Soap" was not so 
 clearly infringed by " Everj'body 's Soap" as to warrant 
 a preliminaiy injunction;"'* that the mark "Cuticura" 
 is not infringed by the mark "Cuticle;"-"'^ that the mark 
 "Grape-nuts" is not infringed by the mark "Grain- 
 Hearts;"^^ that the mark "Yama-Mai" is not infringed 
 by "Ma-mie;"^^ that "Weber" applied to pianos, is 
 not infringed by ' ' Webster ; " ^^ that ' ' Hurricane ' ' is 
 not infringed by " Tempest ;" ■•'•' that "B. T. Babbitt's 
 Trademark Best Soap" is not infringed by "P. T. But- 
 ler's Trademark Best Soap;"^^ that the name "Social 
 Register" applied to a directoiy is not infringed by the 
 words "Newport Social Index ;"*^^ that the name 
 "Vichy" was not infringed by " Lithia- Vichy, " there 
 being numerous artificial vichy waters upon the mar- 
 
 49— Burt V. Smith, 71 Fed. Rep. Pasfield Soap Co. (1), 102 Fed. 
 
 161-163. Rep. 490; Same v. Same (2), 106 
 
 50 — Rawlinson v. Brainard & Fed. Rep. 914, 46 C. C. A. 40. 
 
 Armstrong Co., 59 N. Y. Supp. 880; 56— Postum Cereal Co. Ltd. v. 
 
 28 Misc. Rep. 287. American Health Food Co., 109 
 
 51— Kohler Mfg. Co. v. Beeshore, Fed. Rep. 898. 
 
 (2), 59 Fed. Rep. 572-576, 8 C. C. 57— Boessneck v. Iselin, 82 N. Y. 
 
 A. 215. Supp. 164. 
 
 52 — Adams v. Heisel, 31 Fed. 58 — Foster v. Webster Piano Co., 
 
 Rep. 279. 13 N. Y. Supp. 338. 
 
 53 — Liggett & Myers Tobacco Co. 59 — Hurricane Patent Lantern 
 
 V. Finzer, 128 U. S. 182. Co. v. Miller, 56 How. Pr. 234. 
 
 54— Proctor & Gamble Co. v. 60— Babbitt v. Brown, 68 Hun 
 
 Globe Refining Co., 92 Fed. Rep. 515. 
 
 357; 34 C. C. A. 405. 61— Social Reg. Assn. v. Murphy, 
 
 55— Potter D. & Chem. Corp. v. 128 Fed. Rep. 116.
 
 292 HOPKINS ON TRADEMARKS. [§ 118 
 
 ket;®- that the mark " Rough-on-Eats " was not in- 
 fringed by ''Rough on Skeeters," the goods not being 
 in competition,*^^ that the book title "Farthest North, 
 Nansen," was not infringed by "The Fram 'Expedi- 
 tion.' "^^ While the word "Muffler" is closely similar 
 to "Mufflet," and the latter is a valid trademark for 
 neck-scarfs, the use of the former cannot be enjoined be- 
 cause it is aptly descriptive of the article to which it is 
 applied.*'^ 
 
 It is important to note in this connection the expres- 
 sion of Lord Cranworth, that "It would be a mistake to 
 suppose that the resemblance must be such as would de- 
 ceive persons who should see the two marks placed side 
 by side. The rule so restricted would be of no practical 
 use."*'*' 
 
 And another rule is that a defendant cannot evade 
 the charge of infringement by "showing that the device 
 or inscription upon the imitated mark is ambiguous, and 
 capable of being understood by different persons in dif- 
 ferent ways." ^"^ 
 
 § 118. Patent office rulings on similarity of alleged con- 
 flicting marks. — The decisions of the several commission- 
 ers of patents as to similarity and dissimilarity of 
 marks alleged to be conflicting or identical are fre- 
 quently instructive and valuable as illustrations. In 
 the language of Allen, Commissioner, "The question of 
 anticipation by a prior registered mark may be tested 
 by the question of infringement. The doctrine of the 
 patent law that that which would infringe if later in date 
 will anticipate if earlier is applicable to questions of 
 
 62 — La Republique Francaise v. 65 — Hygienic Fleeced Underwear 
 
 Schultz, (4) 115 Fed. Rep. 196. Co. v. Way, C. C. A., 137 Fed. Rep. 
 
 63— Wells V. Ceylon Perfume Co., 592, 595. 
 
 105 Fed. Rep. 621. 66 — Seixo v. Provezende, L. R. 
 
 64— Harper v. Lare, 93 Fed. Rep. 1 Ch. D. 192. 
 
 989; Harper & Bros. v. Lare, 43 67— Lord Watson in Singer Mfg. 
 
 C. C. A. 182, 103 Fed. Rep. 203. Co. v. Loog (3), 8 App. Cas. 39.
 
 § no; 
 
 INFRINGEMENT. 
 
 293 
 
 trademark, for it involves only the question of substan- 
 tial identity.'"'* 
 
 In the following cases registration was refused upon 
 a prior-registered mark because of the similarity ad- 
 judged by the Commissioner to exist between them: 
 
 The Applicant's mark 
 ''Colonial." 
 ''Dysj^epticide." 
 ' ' Liveroid. ' ' 
 ''Maple Leaf." 
 "Nitro-Hunter." 
 "Pepko." 
 "Satin Skin." 
 "Sagafoam." 
 ' ' Telegra phone. ' ' 
 "Velva." 
 
 Rejected on 
 
 "Colonial Dame."«9 
 
 "Dyspepticure."'^'^ 
 
 "Liveraid."^! 
 "Silver Leaf. ""^2 
 
 "Nitro."^3 
 
 " Pep-Kola. ""^^ 
 
 "Satinette."^^ 
 
 "Sea Foam."^« 
 
 ' ' Telegraphophone. ' '^^ 
 
 "Velvet. "^8 
 
 § 119. Miscellaneous matters relating to infringe- 
 ment. — In the cases of infringement it is manifest that the 
 policy of the law is clear, and that difficulty in determin- 
 ing questions of infringement arises only out of the 
 facts. 
 
 It was asked in the English House of Lords, "How 
 can observations of judges upon other and quite dif- 
 ferent facts bear upon the present case, in which the 
 only question is what is the result of the evidence ?" '^^ 
 
 68 — Ex parte Keystone Chamois 
 Co., 101 Off. Gaz. 3109. 
 
 69— Allen B. Wrisley Co. v. 
 Buck, 95 Off. Gaz. 2483. 
 
 70— Ex parte Foley & Co., 87 Off. 
 Gaz. 1957. 
 
 71 — Ex parte Dr. Harter Med. Co., 
 106 Off. Gaz. 1779. 
 
 72— Ex parte Vogel & Son, 99 Off. 
 Gaz. 2321. 
 
 7Z—Ex parte W. B. Belknap & 
 Co., 105 Off. Gaz. 745. 
 
 Ti—Ex parte Sutton, 108 Off. 
 Gaz. 291. 
 
 75— Wood V. Hinchman, 110 Off. 
 Gaz. 600. 
 
 76 — Ex parte Sodafoam Baking 
 Powder Co., 96 Off. Gaz. 1239. 
 
 77— Ex parte Hutchins, 100 Off. 
 Gaz. 1330. 
 
 7S—EX parte Willard Chem. Co., 
 107 Off. Gaz. 1972. 
 
 79 — Lord Watson in Johnson v. 
 Orr-Ewing, H. L. 7 App. Cas. 219.
 
 294 HOPKINS ON TRADEMARKS. [§ 119 
 
 Analogies will, however, frequently be found in the ad- 
 judicated cases which may assist in classifying the char- 
 acter of infringement under consideration. 
 
 Infringements which display the name or initials of 
 the defendant are none the less infringments if any sub- 
 stantial portion of the mark is taken from the plaintiff's 
 mark.^*^ This principle has been applied to a case where 
 the defendant had washed plaintiff's labels off his bot- 
 tles, leaving only the marks blown or moulded in the 
 glass, and had pasted his own labels upon the bottles,^^ 
 although in similar cases, where the name of the defend- 
 ant was conspicuously displayed on the new label, in- 
 junction was refused.^- But the fact that the defend- 
 ant does display his name upon his goods is always to 
 be considered as a circumstance in his favor.^^ 
 
 Infringement applied to goods of equal quality.— li is 
 settled that the fact that the defendant's goods are equal 
 in quality to the plaintiff's is no defense to the action 
 of infringement. As said by Judge McLean: "To en- 
 title a comjjlainant to protection against a false repre- 
 sentation it is not essential that the article should be 
 inferior in quality. "^^ And in an English case involving 
 
 80— Sawyer Crystal Blue Co. v. T. N. S. 409; Seb. 608; Rose v. 
 
 Hubbard, 32 Fed. Rep. 388; An- Henly, Seb. 551. 
 heuser-Busch Brewing Association 82 — Welch v. Knott, 4 K. & J. 
 
 V. Clarke, 26 Fed. Rep. 410; Gar- 747; Barret v. Gomm, 74 L. T. 
 
 rett V. T. H. Garrett & Co., 24 C. C. (Journal) 388. 
 
 A. 173, 78 Fed. Rep. 472; Anheuser- 83— "This is one of the impor- 
 
 Busch Brewing Association v. Piza, tant means of identification." Sev- 
 
 24 Fed. Rep. 149; Hostetter v. erens, J., in Proctor & Gamble Co. 
 
 Adams, 10 Fed. Rep. 838; Pepper v. v. Globe Refining Co., 34 C. C. A. 
 
 Labrot, 8 Fed. Rep. 29; Shaw 405, 92 Fed. Rep. 357-362. And see 
 
 Stocking Co. v. Mack, 12 Fed. Rep. Kann v. Diamond Steel Co., 89 Fed. 
 
 707; McCann v. Anthony, 21 Mo. Rep. 706; P. Lorillard Co. v. Peper, 
 
 App. 83; Bass, Ratcliff & Gretton 86 Fed. Rep. 956-959; Blackwell v. 
 
 (Ltd.) V. Feigenspan, 96 Fed. Rep. Crabb, 36 L. J. Ch. 504; Beard v. 
 
 206. Turner, 13 L. T. N. S. 746. 
 
 81 — Hostetter v. Anderson, 1 W. 84— Coffeen v. Brunton (2), 5 
 
 W. & A'B. Eq. 7; Seb. 652; Rose McLean, 256. 
 V. Loftus, 47 L. J. Ch. 576; 38 L.
 
 § 120] INFRINGEMENT. 295 
 
 the manuraclure of metallic hones, Lord Denman in- 
 structed the jury that ''even if the defendant's hones 
 were not inferior, the plaintiff was entitled to some 
 damages, inasmuch as his right had been invaded by 
 the fraudulent act of the defendant."**^ It may be re- 
 garded as settled that it is immaterial, in the language 
 of Judge Morris, whether the defendant's goods "Ije 
 better or worse in (luality. " **" 
 
 § 120. The use of letters and numerals.— The principle 
 that there can 1)0 Inidemark rights in letters or numerals 
 cannot be considered as finally settled. Gillott v. Ester- 
 hrook,^~ in which the defendant was enjoined from using 
 the numerals ''303," was for a time regarded as up- 
 holding their use as a trademark, but the case is known 
 and recognized as a case of unfair competition.**^ The 
 leading English case, Ainsivorth v. Wahnslei/, is very 
 similar to Gillott v. Esterhrooh, supra, in that while 
 the imitation of a series of numbers was considered as 
 one of the elements justifying injunction, Vice-Chan- 
 cellor Wood carefully distinguished them as not being 
 a technical trademark."*" There is no case, however, in 
 England in which the courts have recognized "a mere 
 numeral or combination of numerals, standing alone, as 
 sufficiently arbitrary and distinctive to constitute a trade- 
 mark,"^*' and the United States Circuit of Appeals for 
 the Sixth circuit has flatly held that a "bare numeral" 
 cannot be trademark.^^ 
 
 85— Blofield v. Payne, 4 B. & 87—47 Barb. 455; Cox, 340. 
 
 Ad. 410; Seb. 50. See also Taylor 88 — Browne on Trademarkks (2d 
 
 V. Carpenter (2), 2 W. & M. 1; ed.), sec. 228. 
 
 Cox, 32; Taylor v. Carpenter (3), 89— Ainsworth v. Walmsley, L. 
 
 2 Sandf. Ch. 603; Edelsten v. R. 1 Eq. 518-527. 
 
 Edelsten, 1 DeG. J. & S. 185; Seb. 90— Sebaetiaji on Trademarks 
 
 213. (4th ed.). p. 79. 
 
 86 — Sawyer v. Horn. 1 Fed. Rep. 91 — Dennlson Mfg. Co. v. 
 
 24-38. To the same effect see Cut- Scharff Tag, Label & Box Co., C. 
 
 ter V. Gudebrod Bros. Co., 55 N. C. A. , 135 Fed. Rep. 625, 628. 
 Y. Supp. 298.
 
 296 HOPKINS ON TRADEMARKS. [§ 120 
 
 Of course numerals may form a part of a trademark, 
 in combination or collocation with words, figures or de- 
 signs, and many cases in which their imitation has been 
 restrained turned upon this point ;'-•- they will also be 
 protected when used in an arbitrary and distinctive man- 
 ner which conveys no idea of number, although they 
 would jjrobably not be so used except in collocation with 
 designs or words.^^ In one case it was held that a com- 
 l)lainant was entitled to the exclusive use of a trade- 
 mark consisting of the figures i/^, only in the form, size, 
 color and style in which it had been registered and 
 used."^ 
 
 The strongest case holding that numerals alone may 
 form a valid technical trademark is Shaiu Stocking Co. 
 V. Mack,^^ in which Judge Coxe ably reviews the deci- 
 sions and arg-ues that the rejection of numerals as trade- 
 mark was invariably because of their use indicating 
 quality rather than origin or ownership; but he finally 
 bases the reason of his decree of injunction flatly upon 
 the defendant's fraudulent competition. 
 
 The practical difficulty in the way of constructing a 
 trademark from numerals alone is that the defendant 
 could always find a multiplicity of excuses for selecting 
 the same numerals, and the cases indicate that the 
 courts grant ample protection to their use as against 
 their fraudulent imitation.^^ 
 
 92— Boardman v. Meriden Brit- properly a case of unfair competi- 
 
 annia Co., 35 Conn. 402; Lawrence tion. 
 
 Mfg. Co. V. Lowell, 129 Mass. 325; 94— Kinney v. Allen, 1 Hughes, 
 
 Humphreys' Specific Med. Co. v. 106; Seb. 557; Fed. Case No. 7826. 
 
 Wenz, 14 Fed. Rep. 250; Carver 95—12 Fed. Rep. 707. See also 
 
 V. Pinto Leite, L. R. 7 Ch. App. to the same effect Smith & Davis 
 
 90; Robinson v. Finlay, L. R. 9 Mfg. Co. v. Smith, 89 Fed. Rep. 486. 
 
 Ch. D. 487; Broadhurst v. Barlow, 96— Gillott v. Kettle, 3 Duer 
 
 W. N. 1872, p. 212; Carver v. 624; American Solid Leather But- 
 
 Bowker, Seb. 581; Ralli v. Flem- ton Co. v. Anthony, 15 R. L 338; 
 
 ing, Ind. L. R. 3 Calc. 417. Collins v. Reynolds Card Mfg. Co., 
 
 93— Kinney v. Basch, 16 Am. 7 Abb. N. C. 17; India Rubber 
 
 Law Reg. N. S. 596; Seb. 542— Comb Co. v. Jewelry Co., 45 N.
 
 § 12Uj INFRINGEMENT. 297 
 
 Even where numerals were originally indicative of 
 origin and ownership, if they have come to be used to 
 indicate quality, any one having the right to make or 
 sell the article in connection wherewith such numerals 
 are so used may designate the article by the numerals/*^ 
 
 In regard to letters, standing alone or in initial com- 
 binations, the English courts have from an early period 
 treated them as trademarks,°^ although it appears that 
 under the English act of 1875, 38 and 39 Vict., c. 91, 
 Vice-Chancellor Hall has held a single letter cannot be 
 registered as a trademark.^*^ 
 
 The use of a single letter would appear to be at least 
 unsafe, although it might in the United States be re- 
 garded as a trademark; and Judge Bradford in a recent 
 opinion suggests that a single letter or figure may be 
 **so peculiar and unusual in form or ornamentation" as 
 to be a valid trademark.^ 
 
 Combinations of letters, used as initials, have been 
 frequently approved as trademarks in the American 
 decisions,- and in the case of Amoskeag Mfg. Co. v. 
 Trainer,^ in the federal supreme court, the decision, 
 
 Y. Sup. Ct. 258; Sohl v. Geisen- 353; Cartier v. Carlile, 31 Beav. 
 
 dorf, 1 Wills. (Ind.) 60; Hazard 292; Cartier v. Westhead. Seb. 
 
 V. Caswell, 57 How. Pr. 1; Glen 199; Cartier v. May, Seb. 200; 
 
 & Hall Mfg. Co. V. Hall, 61 N. Y. Moet v. Clybonn. Seb. 533; Moet v. 
 
 226; 19 Am. Rep. 278; Seb. 443; Pickering. L. R. 8 Ch. D. 372; Ex 
 
 Humphreys' Homoepathic Medicine parte Young, Seb. 537; Ransome 
 
 Co. V. Hilton, 60 Fed. Rep. 756. v. Graham, 51 L. J. Ch. 897; Bon- 
 
 97— Smith & Davis Mfg. Co. v. dier v. Depatie, 3 Dorion, 233; Re 
 
 Smith, 89 Fed. Rep. 486. Brook, 26 W. R. 791. 
 
 98— Ransome v. Bentall, 3 L. J. 99— Re Mitchell, L. R. 7 Ch. D. 
 
 Ch. 161; Motley v. Downman, 3 36; 46 L. J. Ch. 876; 26 W. R. 
 
 My. & Cr. 1; Millington v. Fox, 3 326; Cartmell, 226. 
 
 My. & Cr. 338; Crawshay v. 1 — Dennison Mfg. Co. v. Thom- 
 
 Thompson, 4 M. & G. 357; Kina- as Mfg. Co., 94 Fed. Rep. 651-658. 
 
 han V. Bolton, 15 Ir. Ch. 75; Hop- 2 — Geron v. Gartner, 47 Fed. 
 
 kins V. Hitchcock, 14 C. B. N. S. Rep. 467: Frank v. Sleeper, 150 
 
 65; Hall v. Barrows, 4 DeG. J. & Mass. 583. 
 
 S. 150; Barrows v. Pelsall. Seh. 3—101 U. S. 51. 
 530; Re Barrows, L. R. 5 Ch. D.
 
 298 HOPKINS ON TRADEMARKS. [§ 120 
 
 which held the letters '*A C A" were not' a valid trade- 
 mark, was based upon the theory that those letters as 
 used by the complainant were indicative of quality, and I 
 
 not of origin or ownership, as Judge Coxe has pointed 
 out.^ There can scarcely be a doubt that both numerals 
 and letters of the alphabet may sometimes be technical 
 trademarks, and the objection to their use in that ca- 
 pacity has been well stated by Judge Colt in the su- 
 preme court of Massachusetts to be "the difficulty of 
 giving to bare numbers the effect of indicating origin or 
 ownership, and of showing that the numbers used were 
 originally designed for that purpose. "^^' And the same 
 practical suggestion was offered by the supreme court 
 of Connecticut in these words: "It may be difficult to 
 give to bare numbers the effect of indicating origin or 
 ownership, and it may be still more difficult to show 
 that they were originally designed for that purpose; but 
 if it be once shown that that was the original design, 
 and that they have had that effect, it may not be easy 
 to assign a reason why they should not receive the same 
 protection, as trademarks, as any other symbol or de- 
 vice."^ j 
 
 A review of the cases indicates that the use of nu- 
 merals or letters has been restrained sometimes on the 
 theory that they were technical trademarks, but never 
 where they were merely used to indicate quality;'^ and 
 where injunction has issued, the facts show that the 
 infringing figures or letters were used in fraudulent 
 competition.^ 
 
 4 — Shaw stocking Co. v. Mack, er. 101 U. S. 51; Stevens Linen 
 
 12 Fed. Rep. 707. Works v. William & John Don & 
 
 5 — Lawrence Mfg. Co. v. Lowell, Co., 121 Fed. Rep. 171, affirmed, 
 
 129 Mass. 325; Price & Steuart, — C. C. A.—, 127 Fed. Rep. 950. 
 
 418. 8 — Ransome v. Bentall, 3 L. J. 
 
 6— Boardman v. Meriden Brit- Ch. N. S. 161; Gillott v. Kettle. 3 
 
 annia Co., 35 Conn. 402; Cox, 490. Duer, 624; Ainsworth v. Walms- 
 
 7— Re Eagl^ Pencil Co., 10 Off. ley, L. R. 1 Eq. 518; Gillott v. 
 
 Gaz. 981; Amoskeag Co. v. Train- Esterbrook, 47 Barb. 455; Cox,
 
 § 121] INFRINGEMENT. 299 
 
 In this connection it is well to note that -'there can be 
 no doubt, and indeed it is not disi)uted, that two letters 
 may constitute a trademark.'"-* So the American courts 
 have unifonnly held that monograms or groups of two 
 or more letters not indicative of quality constitute valid 
 trademarks; thus we find that the following marks have 
 been held valid: *'A. G." applied to cigars and 
 coffee ;^^ *'B. B. B." applied to a medicine ;^i "B. B. 
 H." applied to iron;'- *'S. B." applied to cougli- 
 drops;'-"' ''G. E." applied to electric lamps;^^ ''G. F." 
 applied to velvet ribbon ;'•' ''0. F. C." applied to 
 whiskey ;'« ''A. C. A." applied to ticking;'^ ''J. H. AV." 
 applied to boots.^^ And we find that similar groups of 
 letters and monograms have been treated as valid by 
 the English decisions.^ ^ 
 
 § 121. The judicial test of infringement.— It may be 
 said, generally, that the courts will apply to the facts, 
 in the class of cases that we are considering, any and all 
 tests which are necessary to determine whether or not 
 the competition established by the defendant is fraudu- 
 lent. In delivering the opinion of the federal supreme 
 
 340; 48 N. Y. 374; 8 Am. Rep. 16— Geo. T. Stagg Co. v. Taylor, 
 
 553; Broadhurst v. Barlow, W. N. 95 Ky. 651, 27 S. W. Rep. 247. 
 
 1872, p. 212; Seb. 411; Kinney v. 17 — Amoskeag Mfg. Co. v. Train- 
 
 Basch, Seb. 542; Avery v, Meikle, er, 101 U. S. 51 (dissent of Mr. 
 
 81 Ky. 75. Justice Clifford). To the same ef- 
 
 9 — Kinahan v. Bolton, 15 Jr. Ch. feet see Burton v. Stratton, 12 
 
 75. Fed. Rep. 696; Smith v. Imus, 32 
 
 10— Godillot V. American Gro- Alb. L. J. 455; Frank v. Sleeper, 
 
 eery Co., 71 Fed. Rep. 873. 150 Mass. 583, 23 N. E. Rep. 213. 
 
 11— Foster v. Blood Balm Co., 18— Walker v. Reid, Fed. Case 
 
 77 Ga. 216; 3 S. E. Rep. 284. No. 17084. 
 
 12— Hall V. Barrows, 4 DeG. J. 19— Hopkins v. Hitchcock, 14 C. 
 
 & S. 150. B. N. S. 65; Paul v. Barrows, 4 
 
 13— Burt V. Smith, 71 Fed. Rep. DeG. J. & S. 150; Re Barrows. L. 
 
 161. R. 5 Ch. D. 353; Cartier v. Car- 
 
 14— General Electric Co. v. Re- lile, 31 Beavan, 292; Moet v. Pick- 
 new Lamp Co., 128 Fed. Rep. 154. ering, L. R. 8 Ch. D. 372; Frankau 
 
 15 — Giron v. Gartner, 47 Fed. v. Pope, 11 Cape of Good Hope, 
 
 Rep. 467. 209.
 
 300 HOPKINS ON TR.VDEMARKS. [§ 121 
 
 court in Coats v. Merrick Thread Co., Mr. Justice Brown 
 observed: ''The differences are less conspicuous than 
 the general resemblance between the two. At the same 
 time, they are such as could not fail to impress them- 
 selves upon a jjerson who examined them with a view 
 to ascertain who was the real manufacturer of the 
 thread. "-" And in all cases the court will insi^ect not 
 only the differences but the resemblances, as both must 
 be considered in ascertaining whether the competition 
 between the parties is fair or fraudulent. As said by 
 Judge Severens: ''It has been said that it is the re- 
 semblances that should be looked at, rather than the 
 differences. But the existence of the latter negatives 
 the former, and it is necessary to take both into view, 
 in order to get a correct picture of the whole. ' ' ^i 
 
 Of course the defendant cannot avail himself of dis- 
 similarities which become apparent only upon compari- 
 son of the plaintiff's and defendant's packages or 
 marks. This is because purchasers do not have the op- 
 portunity of making comparisons. "A specific article 
 of approved excellence comes to be known by certain 
 catchwords easily retained in memory, or by a certain 
 IDicture which the eye readily recognizes. The pur- 
 chaser is required only to use that care which persons 
 ordinarily exercise under like circumstances. He is not 
 bound to study or reflect. He acts upon the moment. 
 He is without the opportunity of comparison. It is 
 only when the difference is so gross that no sensible 
 man acting on the instant would be deceived, that it 
 can be said that the purchaser ought not to be protected 
 from imposition. Indeed, some cases have gone to the 
 length of declaring that the purchaser has a right to be 
 careless,^- and that his want of caution in inspecting 
 brands of goods with which he supposes himself to be 
 
 20— Coats V. Merrick Thread Globe Refining Co., Q2 Fed. Rep. 
 Co., 149 U. S. 562. 357-362, 34 C. C. A. 405. 
 
 21 — Proctor & Gamble Co. v. 22 — It has been held on circuit
 
 ? 121] INFRINGEMENT. 301 
 
 familiar ought not to be allowed to uphold a simula- 
 tion of a brand that is designed to work fraud upon the 
 public. However that may be, the imitation need only 
 be slight if it attaches to what is most salient; for the 
 usual inattention of a purchaser renders a good will pre- 
 carious, if exposed to imposition."-^ 
 
 The foregoing extract very fully expresses the char- 
 acter of sui)ervision over fairness in trade exercised by 
 our courts of equity. When an article has become known 
 by a catchword or a peculiar package, any one seeking to 
 use that form of package, or a mark or name that sug- 
 gests the catchword, must take care to keep within the 
 bounds of fairness in trade in so doing.-^ 
 
 Mere colorable distinctions, so arranged as to escape 
 notice,-^ the use of labels which may be removed by 
 retail dealers, leaving the imitated marks free to effect 
 deception,-" and all the other devices and schemes of 
 fraudulent competition disclosed by the reports, are 
 taken into consideration in determining the right to 
 ecpiitable relief. One of the most important tests is the 
 existence of similarities of detail, whether of design, 
 fonn, size, color or material. Belief w^ill always be 
 granted when '*it is manifest from a comprison (of the 
 
 that the careless purchaser will word "Iwanta" has been en- 
 
 not be protected. N. K. Fairbank joined as being a fraud upon the 
 
 Co. V. Luckel, King & Cake Soap owner of the trademark "Uneeda," 
 
 Co., 88 Fed. Rep. 694; but the case both words being applied to biscuit. 
 
 was reversed on appeal: s. c, 102 National Biscuit Co. v. Baker, 95 
 
 Fed. Rep. 327-332, 42 C. C. A. 376. Fed. Rep. 135. And so of the 
 
 The test generally applied is, phrase "Candy Cathartic" used by 
 
 whether one "in the use of ordi- the plaintiff with the word "Cas- 
 
 nary care" can be deceived. Sartor carets" and by the defendant v.ith 
 
 V. Smith, Iowa, 101 N. W. Rep. 515. the word "Cascara." Sterling 
 
 23 — Jenkins, J., in Pillsbury v. Remedy Co. v. Gorey, 110 Fed. 
 
 Flour-AIills Co., 64 Fed. Rep. 841- Rep. 372-373. 
 
 847, 12 C. C. A. 432. 25— Taylor v. Taylor, L. R. 2 
 
 24— Stuart v. F. G. Stewart Co., Eq. 290; 23 L. J. Ch. 255. 
 
 91 Fed. Rep. 243, 33 C. C. 26— Barlow v. Johnson, 7 R. P. 
 
 A. 480. So the use of the C. 395.
 
 302 
 
 HOPKINS ON TRADEMARKS. 
 
 [§121 
 
 two articles in controversy) that one was copied from 
 the other. ' ' -' The court does not search for dissimi- 
 larities, but for points of resemblance.^^ 
 
 "A\'liere there are found strong resemblances, the nat- 
 ural inquiry' for the court is, why do they exist 1 If no 
 sufficient answer appears, the inference is that they exist 
 for the purpose of misleading. ' ' '^'-^ 
 
 No matter what minor differences may exist in the 
 tests of infringement applied by various courts, it has 
 been uniformly noted that the fact that purchasers have 
 no opportunity of comparison must be considered, and 
 the genuine and alleged infringing marks must be judged 
 by the court, therefore, in the light of that fact.^^ 
 
 27 — Shipman, J., In Dixon Cru- 
 cible Co. V. Benham, 4 Fed. Rep. 
 527-530. 
 
 28— Hostetter v. Adams, 10 Fed. 
 Rep. 838-842. Thus Judge La- 
 
 combe, in considering conflicting 
 liquor labels, said: "Inspection of 
 the labels must carry conviction to 
 any unbiased and unprejudiced 
 mind that the later label was pre- 
 pared by some one who had seen 
 the earlier one, and that it was 
 designed, not to differentiate the 
 • goods to which it was affixed, but to 
 simulate a resemblance to com- 
 plainant's goods sufficiently strong 
 to mislead the consumer, although 
 containing variations sufficient to 
 argue about should the designer 
 be brought into court. This is the 
 usual artifice of the unfair trad- 
 er." Collinsplatt v. Finlayson, 88 
 Fed. Rep. 693. In another recent 
 case the same court says: "There 
 are as usual a number of minor 
 differences between the form and 
 the dress of the two packages, 
 which are expatiated upon in the 
 aflBdavits and the brief; but no 
 
 one can look at both packages 
 without perceiving that there are 
 strong resemblances, which could 
 easily have been avoided had there 
 been an honest effort to give de- 
 fendants' goods a distinctive 
 dress." National Biscuit Co. v. 
 Baker, 95 Fed. Rep. 135. 
 
 In referring to conflicting la- 
 bels. Judge Gilbert, in a recent de- 
 cision, says "these differences are 
 such as are usually introduced 
 where the intention is to make an 
 unfair use of an established trade- 
 mark, and at the same time so 
 far depart therefrom as to avoid 
 the charge of infringement." Kos- 
 tering v. Seattle Brewing & Malt- 
 ing Co., 54 C. C. A. 76, 116 Fed. 
 Rep. 620. 
 
 29 — Lurton, J., in Paris Medi- 
 cine Co. v. W. H. Hill Co., 102 
 Fed Rep. 148-151; 42 C. C. A. 227. 
 
 30 — Pillsbury v. Pillsbury- 
 Wa.shburn Flour Mills Co., 64 Fed. 
 Rep. 841-847, 12 C. C. A., 432; Man- 
 hattan Med. Co. V. Wood, Fed. Case 
 No. 9026, 4 Cliff, 461, 108 U. S. 
 218; Alleghany Fertilizer Co. v.
 
 § 122] INFRINGEMENT. 303 
 
 In conclusion it is important to bear in mind that 
 courts of e(iuity have always avoided laying down any 
 liard and fast rules })y which to deteruiiiie what con- 
 stitutes fraud. Tiie reason for this absence of set rules 
 has been well stated as follows: ''Were courts of e<iuity 
 to once declare i-ules presciiljing the limitations of their 
 I)Ower in dealing with it, the jurisdiction would be pei'- 
 petually cramped and eluded by new schemes which the 
 fertility of man's invention w^ould contrive. "•"" 
 
 When one who has been lawfully advertising himself 
 as agent for a particular article has his agency re- 
 voked, he may be enjoined from the use of the word 
 *' agency" even though he continues to deal in the same 
 articles as before;^- and the agent may enjoin the use 
 of a label naming him as the agent for the product.-^^ 
 
 § 122. Restraint of use of misleading advertisements, 
 and the like.— The requirement of fairness in trade has 
 led to the injunction of the use of circulars containing 
 garbled extracts from a letter, published for the pur- 
 pose of diminishing plaintiff's sales, the part of the 
 letter published having a meaning contraiy to that of 
 the letter as a wholc^"* The use of the autographic sig- 
 nature of the defendant's former distiller has been en- 
 joined, when the distiller had withdrawn from defend- 
 ant's employment and established a competing distil- 
 
 Woodside, Fed. Case No. 206. 1 Fed. Rep. 172-174, affirmed under 
 
 Hughes, 115; Sawyer v. Kellogg, same title, 48 C. C. A. 67, 108 Fed. 
 
 7 Fed. Rep. 721; Sawyer v. Kel- Rep. 839. 
 
 logg, 9 Fed. Rep. 601; Liggett & 33— Coleman v. Flavel, 40 Fed. 
 
 Myers Tob. Co. v. Hynes, 20 Fed. Rep. 854. 
 
 Rep. 883; Hostetter v. Adams, 10 34— Halstead v. Houston, 111 
 
 Fed. Rep. 838-842. Fed. Rep. 376. 
 
 31_Weinstock, Lubin & Co. v. 35— George T. Stagg Co. v. Tar- 
 Marks. 109 Cal. 529-539. lor, 95 Ky. 651, 27 S. W. Rep. 247. 
 
 32 — Edison v. Hawthorne, 106
 
 304 HOPKINS ON TR.U)EMARKS. [§ 123 
 
 § 123. Infringement in another jurisdiction.— Where 
 goods bearing an infringing mark are in possession of 
 the defendant, within the jurisdiction, though intended 
 for exportation, the jurisdiction of the court is com- 
 plete and relief will be granted.^^ 
 
 But where the act of infringement occurs wholly in 
 a foreign country an entirely different question is pre- 
 sented, and relief has been denied even though the court 
 had jurisdiction over the parties, and the mark involved 
 had been registered in the United States; Judge Kirk- 
 patrick remarking that "to hold that the branding of 
 goods in a foreign countiy with a trademark registered 
 in the United States constitutes unfair competition in 
 trade would be but another way of extending the trade- 
 mark rights of a citizen of the United States beyond the 
 borders of the country. "^^ 
 
 124. Trademarks of variable sound and pronuncia- 
 tion. — The owner of a valid trademark is, under all the 
 authorities, entitled to equitable protection against one 
 who subsequently adopts a mark calculated to create 
 confusion of the goods of the respective parties. 
 
 Thus the use of the mark "Iwanta" was enjoined by 
 Judge Lacombe because it was expressive of the same 
 idea as ''Uneeda" previously applied to biscuit,^^ and 
 in a later case, where the owner of the trademark ''Yu- 
 sea" sought to enjoin the use of the mark "U-C-A" 
 Judge Hazel said: 
 
 ''The controlling contention in this action is whether 
 the complainant, having a prior and exclusive right to 
 the designation 'Yusea,' has thereby also obtained an 
 exclusive right to the use of the various pronunciations 
 
 36 — Orr-Ewing v. Johnson, 13 C. 38— National Biscuit Co. v. Bak- 
 D. 434, 7 A. C. 219. er, 95 Fed. Rep. 135. 
 
 37— Vacuum Oil Co. v. Eagle Oil 
 Co., 122 Fed. Rep. 105.
 
 § 125] INFRINGEMENT. 305 
 
 and the complex words or syllabic formations to which 
 this particular word is susceptible. A moment's reflec- 
 tion reveals the various pronunciations and composite 
 words to which 'Yusea' may be adapted. A trade- 
 mark which is variously pronounced and distorted to 
 suit the jjurposes of trade and the fancies of the manu- 
 facturer in his endeavor to catch the public eye may yet 
 be protected, within the fair and reasonable scope of 
 a trademark, however artfully it may be conceived. It 
 appears from the affidavits of comi^lainant's manager 
 and advertising agent, the person who conceived the 
 word, that the common pronunciation by the trade in 
 general is as if it were spelt 'You see a,' and that the 
 mantles manufactured by complainant^ are commonly 
 known as 'You-see-a mantles.' This is accentuated 
 by the ordinary pronunciations that follow a casual ob- 
 servation of this complex word. The unique alterations 
 in the pronunciations of the word must, I think, be re- 
 garded as incidental to its use. This perhaps enhances 
 its value as an advertising medium. They do not change 
 the registered designation, and the word 'Yusea' re- 
 mains the dominating word in the trademark. . . The 
 trademark, because of its variable sound and pronuncia- 
 tion, became more prominently known to the public, and 
 thereby served the purpose for which it was conceived; 
 i. e., to attract the attention of the public to the original 
 conception. ' '^^ 
 
 § 125. The effect of a plurality of marks for a single 
 article. — It would seem obvious that a trader might 
 acquire and own as many trademarks as he desires. It 
 would seem that he might, if he desired, have as many 
 different trademarks for the same article of merchan- 
 dise as he saw fit. It seems perfectly clear that a trade- 
 
 39— Welsbach Light Co. v. Adam, 107 Fed. Rep. 463, 465.
 
 306 HOPKINS ON TR.NDEMARKS. [§ 125 
 
 mark which is valuable because it attracts custom in 
 cue community may be utterly valueless in another. 
 
 The British decisions are replete with instances of 
 special marks used for colonial trade, the same article 
 being sold in Great Britain under a different mark. As 
 a matter of fact many articles of merchandise are dealt 
 in under a plurality of marks in this countrj^, certain 
 marks being used in the Northern trade, and different 
 marks on the same merchandise for the Southern and 
 Pacific Coast trade. It would seem that the courts 
 would be as little concerned with the number of marks 
 owned and used by a manufacturer as they would be 
 with the number of patents or copyrights he might own 
 or the number of any other chattels it might please him 
 to acquire and for which he haply has .the means to 
 pay. And yet, these views which on their face appear 
 manifestly obvious, are in conflict with the sole decision 
 so far rendered upon this question and to which we will 
 now briefly advert. 
 
 In Candee v. Deere,*^ the complainant manufactured 
 '^Moline" plows at Moline, Illinois. On different qual- 
 ities of these plows they used the marks "A. No. 1," 
 ^'A. X. No. 1," "No. 1," "X. No. 1," "No. 3," and 
 *'B. No. 1." The word "Moline" being geographical, 
 the complainant's case failed, and the letters and num- 
 bers being m.erely descriptive of different qualities of 
 the plow did not help the complainant's case. 
 
 This case consequently, appears quite irrelevant to the 
 present question ; but it has been used as the basis of the 
 decision of Judge Jenkins dealing directly with the effect 
 of ownership of a plurality of marks used on the same 
 article, in which he says: 
 
 "The principal question which is suggested by the bill 
 and the evidence is whether the manufacturer of a single 
 
 40 — Candee v. Deere, 54 111. App. 439.
 
 § 125J INFRINGEMENT. 307 
 
 article has the right to use, and be protected in the use 
 of, more than one trademark for that article. 1 find 
 little authority upon the subject, and have given to the 
 question much consideration. Upon principle, I think 
 that he cannot, A trademark must denote origin. A 
 trademark is defined by Mr. Upton to be the name, sym- 
 bol, figure, letter, form, or device adopted and used by 
 a manufacturer or merchant in order to designate the 
 goods he manufactures or sells, and distinguish them 
 from those manufactured or sold by another, to the end 
 that they may be known in the market as his, and thus 
 enable him to secure such profits as result from a repu- 
 tation for superior skill, industry or enterprise. Upton, 
 Trademarks, p. 9, c. 1. How can that purpose be ac- 
 complished, if a manufacturer dealing in a single article 
 used a thousand different trademarks to designate the 
 article and its origin^ Such use necessarily produces 
 confusion, and fails of the single purpose of the- trade- 
 mark, to designate with certainty the origin of the prod- 
 uct. Certainly no manufacturer would, in regard of self- 
 interest, indulge in such a practice; for he would there- 
 by defeat the very purpose he sought to accomplish. 
 Tliis consideration has led me to the conviction that the 
 complainant, the originator of perforated rolled toilet 
 pajier, would not do that which would blind the public 
 mind to the originator and manufacturer of the article, 
 and would tend to dissipate its trade. It is more prob- 
 able (and the evidence, I think, sustains the conclusion) 
 that its design was, by the various names, to distinguish 
 between the size, shape, and quality of the paper manu- 
 factured, and that the marks were not placed thereon 
 as indicating origin. The only authority which I have 
 been able to find passing directly upon this question is 
 the case of Candcc v. Deere, 54 111. 439, 457. In the con- 
 clusion reached by the supreme court of Illinois upon 
 this particular question, I fully concur. It is remark-' 
 able that, with respect to so simple a product as that in^
 
 308 HOPKINS ON TRADEMARKS. [§ 126 
 
 question, it should be found that so large a number 
 of claimed trademarks should be used by one manu- 
 facturer, A court of equity cannot be impressed by an 
 appeal to protect that which produces infinite confusion. 
 It may be that in the struggle for trade the whims of 
 retailers must be consulted, and that rivalry between 
 dealers to present something attractive to the public eye 
 must exist; but courts of equity do not sit to indulge the 
 whims of purchasers, or to protect one in creating con- 
 fusion. They sit to protect and to enforce legal and 
 equitable rights. If this bill can be maintained, the ex- 
 tent of the proprietorship of the complainant in the use 
 of arbitraiy names applied to the subject of toilet paper 
 would be limited only by the imagination of its offi- 
 cers."" 
 
 § 126. Confusion of mail matter as test of the right to 
 injunction. — The fact that the use of the mails is involved 
 in the majority of commercial transactions has made 
 the question of the confusion of mail matter one of the 
 tests most frequently applied in cases involving firm 
 names, corporate names, and the like, to determine 
 whether or not the plaintiff is entitled to the relief 
 sought. Thus, we find in a case where the Continental 
 Insurance Company of New York, sought to enjoin the 
 Continental Fire Association of Texas from the use of 
 its corporate name, Judge Meek gave as one of the prin- 
 cipal grounds for denying the relief sought that *'on 
 account of the marked dissimilarity of the addresses of 
 the two companies, mail matter intended for one of them 
 will hardly be misdirected or miscarried to the other. "^^ 
 In a more recent case Judge Kohlsaat, in enjoining the 
 name ''Liliputian Outfitters" at the instance of a com- 
 
 41 — Albany Perforated Wrapping 42 — Continental Insurance Co. 
 Paper Co. v. John Hoberg Co., v. Continental Fire Assn., 96 Fed. 
 102 Fed. Rep. 157, 158. Rep. 846, 849.
 
 § 126j INFRINGEMENT. 1109 
 
 plainant doing business as the ''Liliputian Bazaar," 
 based the right to relief upon the probable confusion 
 of mail matter, says, "It is evident that complainant 
 is a manufacturer and dealer, and that he does a large 
 mail-order business, as does also defendant. It hardly 
 needs saying that the proficiency of the mails at this 
 date is such that ev'eiy nook and comer of the nation 
 as well as of JManitoba is as accessible as were places 50 
 miles away from New York a few years ago. It cannot 
 be otherwise than that the advertising and canvassing 
 of these two rival concerns pass and repass each other 
 innumerable times in their journeys to the centers of 
 trade as well as to the homes of the people— mute con- 
 testants for the favor of supjjlying the wants of each cus- 
 tomer. ' '*^ 
 
 In a New York case, a plaintiff who was the originator 
 of a proprietary remedy sold to the defendant his busi- 
 ness and good-will, including the sole right to use the 
 names "Dr. David Kennedy, of Rondout, N. Y.," and 
 "Dr. D. Kennedy, of Eondout, N. Y." It was subse- 
 quently held that the defendant had the right to receive 
 and open all letters addressed to the plaintiff by either 
 of the forms of addresses named.^^ 
 
 In a subsequent suit, the plaintiff sought to enjoin 
 the defendant from receiving and opening letters ad- 
 dressed to him by name at Kingston, N. Y. In gi-anting 
 the injunction, Betts, J., said: "It ought to be an ex- 
 tremely difficult matter for one person or corporation to 
 obtain the right to open and examine another person's 
 private correspondence without his consent. There is 
 something so repugnant in such a proposition to all our 
 ideas of common fairness that to simply state it is to 
 
 43— Ball V. Best, 135 Fed. Rep. 44— Kennedy Corp. v. Kennedy, 
 434, 437. 55 N. Y. Supp. 917.
 
 310 HOPKINS ON TRADEMARKS. [§ 127 
 
 arouse antagonism thereto. I am of the opinion that 
 this can never become the settled law of this state in any 
 case unless it clearly and unequivocally appears that 
 both parties at the time of making any contract, agree- 
 ment, or bill of sale relating thereto clearly understood 
 and agreed that that was to be the result of the arrange- 
 ment entered into."*^ 
 
 ''In American Clay Mfg. Co. of Pennsylvania v. 
 American Clay Mfg. Co. of New Jersey, 198 Pa. 189, 47 
 Atl. 936, tlie plaintiff was a Pennsylvania corporation, 
 and the defendant a corporation of New Jersey author- 
 ized to do business in Pennsylvania. Both were engaged 
 in the same line of trade at Pittsburg, and the result 
 was a confusion in correspondence and in the drawing 
 and honoring of cheeks and drafts; and the defendants 
 were enjoined. 'There are two classes of cases,' says 
 Mitchell, J., 'involving judicial interference with the 
 use of names: First, where the intent is to get an 
 unfair and fraudulent share of another's business; and, 
 second, where the effect of defendant's action, irrespect- 
 ive of his intent, is to produce confusion m the public 
 mind, and consequent loss to the complainant. In both 
 cases the courts of equity administer equitable re- 
 lief.' '"'^ 
 
 § 127. Hotel names and rights created thereby.— As 
 we have seen elsewhere, as a general rule, the name of a 
 place of business will be protected as against competitors 
 who adopt misleading signs or other advertising matter 
 in order to divert to themselves the business established 
 by the one first adopting the name. It is apparent 
 that there is this distinction between the names of 
 hotels and the names of other places of business ; as to 
 
 45— Kennedy v. Dr. David Ken- 46— Archbald, J., in Van Hou- 
 nedy Corp., 66 N. Y. Supp. 225- ten v. Hooton Cocoa & Chocolate 
 229. Co., 130 Fed. Rep. 600, 603.
 
 § 127] INFRINGEMENT. 311 
 
 other commercial enterprises there may be unfair com- 
 petition between places of business located in different 
 cities or sections, and doing a mail-order business, or 
 transacting business generally by mail, while as to hotels, 
 no such unfair competition can arise because there can bo 
 no confusion created by two hotels in different cities, 
 having the same name. The names of hotels, moreover, 
 stand in a class by themselves because of the complex 
 character of the business involved. In one of the early 
 cases, Campbell, J., in a case involved in the name 
 ** Irving House," drew this distinction in the following 
 words: "We think that the principle of the rule is the 
 same, to whatever subject it may be applied, and that 
 a party will be protected in the use of a name, which 
 he has appropriated, and by his skill made valuable, 
 whether the same is upon articles of personal property 
 which he may manufacture, or applied to an hotel where 
 he has built up a prosperous business. ... To make 
 the application, if one man has, by close attention to 
 the comfort of his guests, and by superior energ}^, 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 appro- 
 priated the name of some portion of the fruits of that 
 goodwill which honestly belongs to him alone."'*'' 
 Under this doctrine, the hotel names ''Columbia,"^* 
 "McCardel House, "^» "Osborne House, "^'^ "Vonder- 
 bank Hotel, "^^ "AVhat Cheer, "^^ a^^j ^' Woods Hotel, ""^^ 
 have been recognized and protected in equity. 
 
 47 — Howard v. Henriques, 3 51 — Vonderbank v. Schmidt, 44 
 
 Sandf. 725. La. Ann. 264. 
 
 48— Whitfield v. Loveless, 64 Off. 52 — Woodward v. Lazar, 21 Cal. 
 
 Gaz. 442. 449. 
 
 49 — McCardel v. Peck, 28 How. 53 — Woods v. Sands, Fed. Case 
 
 Pr. 120. No. 17,963. 
 
 50— Hudson v. Oshorne, 21 L. T. 
 N. S. CS6.
 
 312 HOPKINS ON TRADEMARKS. [§ 127 
 
 The owners of hotels have further been protected by 
 injunction against the unauthorized use of the name of 
 the hotel by persons running carriages and other convey- 
 ances for the transportation of travelers. Thus the pro- 
 prietor of the Irving Hotel was granted an injunction 
 against the use of the name of the hotel by the defend- 
 ant upon his coaches, and upon badges worn by his em- 
 ployees. In granting the injunction, Cantel, J., said, 
 ''The question is, whether the defendants have com- 
 mitted a fraud. I cannot doubt that their intention 
 was to mislead, and to induce travelers to believe that 
 they were servants of the proprietor of the Irving 
 Hotel. "^^ A similar rule was made in favor of the 
 lessee of the ''Revere House" under practically the same 
 circumstances.^^ 
 
 More recently, the supreme court of New York granted 
 an injunction to restrain the use of the name of the 
 *' Holland House" as a trademark for cigars. At the 
 time that the cigars so marked were placed upon the 
 market, there was no hotel of the name open for busi- 
 ness in the city of New York. The plaintiffs were the 
 proprietors of a building in the course of construction, 
 which was to be used for hotel purposes, however, and 
 that building was well known throughout the city of 
 New York as the "Holland House." The injunction was 
 granted upon the ground that the defendant intended to 
 falsely represent to the public that the cigars were in 
 some way connected with the hotel known as the "Hol- 
 land House. "^^ 
 
 54 — stone v. Carlan, Cox, Case 56— Kingsley v. Jacoby, 20 N. 
 
 No. 104. Y. Supp. 44. 
 
 55 — Marsh v. Billings, 7 Gush. 
 322.
 
 CHAPTER IX. 
 
 REGISTRATION. 
 
 § 128. Introductory.— The English Patents, Designs 
 and Trademarks Act, 1883-1888, })rovides that there can 
 be no institution of proceedings to prevent or to recover 
 damages for the infringement of a trademark capable 
 of registration unless it has been registered.^ This pro- 
 vision does not occur in the acts of congress of 1881 or 
 1905, and could have no force or effect if it did, as there 
 can be no valid trademark legislation by congress except 
 under and by virtue of the commerce clause of the federal 
 constitution (clause 3 of sec. VIII). As stated by Mr. 
 Justice Miller: *'A\Tien, therefore, congress undertakes 
 to enact a law which can only be valid as a regulation 
 of commerce, it is reasonable to expect to find on the 
 face of the law, or from its essential nature, that it is a 
 regulation of commerce with foreign nations, or among 
 the several states, or with the Indian tribes. If not so 
 limited, it is in excess of the power of congress. "^ 
 
 § 129. The invalid registration acts.— In order to ob- 
 tain a substantial idea of the difiSculties which have at- 
 tended our national legislation upon trademarks, it is 
 only necessary to read the text of the several enactments 
 of congress, which are collated in the appendix to this 
 book. The act of July 8, 1870, was based upon an entire 
 misconception or disregard of the power resident in con- 
 gress. Both it and the subsequent penal act of August 
 14, 1876, were framed with the evident intention of pro- 
 
 1—46 and 47 Vict., c. 57, sec. 2— Trademark Cases, 100 U. S. 
 77; Hazzopulo v. Kaufmann. 23 82. 
 Sol. J. 819; Goodfellow v. Prince, 
 L. R. 35 Ch. D. 9. 
 
 313
 
 314 HOPKINS ON TRADEMARKS. [§ 130 
 
 viding a uniform trademark law for the several states. 
 As will be seen by reference to the annotations to those 
 aet«, in tlie appendix, their validity was questioned and 
 negatived upon circuit," and it was finally settled by the 
 supreme court that they were unconstitutional and there- 
 fore void.'* 
 
 § 130. The power of congress to protect trademarks.— 
 
 "The commerce clause of the federal constitution pre- 
 sents the remarkable instance of a national power which 
 was comparatively unimportant for eighty years, and 
 which in the last thirty years has been so developed that 
 it is now, in its nationalizing tendency, perhaps the most 
 important and conspicuous power possessed by the fed- 
 eral government. "° 
 
 "With the judicial determination that the act of July 
 8, 1870, was void, came the realization by congress that 
 within the scope of authority contained in the words 
 "The congress shall have power ... to regulate 
 commerce with foreign nations, and among the several 
 states, and with the Indian tribes," must rest the foun- 
 dation for its future trademark legislation. With this 
 fact before it, congress proceeded to the enactment of 
 the act of March 3, 1881, embodied in the supplement 
 to the Revised Statutes as section 322. No reason ap- 
 pears for the fact that under that act protection and the 
 benefits of registration were extended only to "owners 
 of trademarks used in commerce with foreign nations or 
 with the Indian tribes," and not to owners of trade- 
 marks used in interstate commerce. But such is the fact, 
 which it was left to future legislation to remedy.^ 
 
 3— Leidersdorf v. Flint, 8 Biss. States now in force . . . re- 
 
 327. late only to trademarks specially 
 
 4— Trademark Cases, 100 U. S. used in commerce with foreign na- 
 
 82. tions, or with the Indian tribes. 
 
 5— Prentice & Egan, Commerce Act of March 3, 1881 ("21 St. at 
 
 Clause of the Federal Constitution, I.arge, ch. 137, sec. 1). They are 
 
 P- 1- particularly restricted so as not 
 
 G — "The laws of the United to give cognizance to any court of
 
 §131J REGISTRATION. 315 
 
 § 131. The constitutionality of the present re^stration 
 act.— It is a remarkable fact that during tlie period fi-oni 
 March 3, 1881, to February 20, 1905, the question of the 
 constitutionality of the act of 1881 was never i)assed 
 upon by any court. 
 
 The Court of Appeals of the 7th Circuit, speaking by 
 Judge Jenkins, held that the validity of the act of 1881 
 was ** fairly doubtful."^ 
 
 In the same case, the United States Supreme Court 
 expressly declined to pass upon the question of consti- 
 tutionality.* 
 
 So the act of 1881, more limited in its scope, and essen- 
 tially a mere registration act, has been superseded by an 
 act of much wider scope, while as yet the power of con- 
 gress to create any enactment whatever relative to the 
 registration of trademarks is not only undetennined, but 
 clouded by the doubt expressed in the language of the 
 Court of Appeals of the 7th Circuit. The labor per- 
 formed by that court in the development of the law of 
 unfair competition entitles its dictum to high respect; 
 and because of the doubt which that court has seen fit to 
 express, as well as the likelihood that the broad scope 
 of the present trademark act will cause its constitution- 
 ality to be determined at no distant date, it may be well 
 to note the argument which suggests itself as that which 
 must be overcome if the present act is to be held con- 
 stitutional. 
 
 It being conceded that the jurisdiction of congress 
 over the subject of trademarks, if it has any at all, 
 
 the United States in an action or 7 — Illinois Watch Case Co. v. 
 
 suit between citizens of the same Elgin National Watch Co., 94 Fed. 
 
 state, unless the trademark in con- Rep., 667-669, 87 Off. Gaz., 2323, 
 
 troversy is used on goods intend- 35 C. C. A. 237. 
 
 ed to be transported to a foreign 8 — Elgin National Watch Co. v. 
 
 country, or in lawful commercial Illinois Watch Case Co., 179 U. S., 
 
 intercourse with an Indian tribe." 665-667. And see Warner v. 
 
 Wheeler, J., in Luyties v. Hoi- Searle & Hereth Co., 191 U. S., 
 
 lender, 21 Fed. Rep. 281. 195-205.
 
 316 HOPKINS ON TR.VDEM^VRKS. [§ 131 
 
 aside from the treaty-making power, arises solely by 
 authority of the commerce clause of the federal consti- 
 tution, it is urged that unless trademarks themselves are 
 the subjects of interstate commerce, the jurisdiction 
 of congress fails. 
 
 A trademark, as we have seen elsewhere, is an incor- 
 poreal hereditament, having no independent life or ex- 
 istence of its own, but existing only as appendant to the 
 good-will of a business, or as an integral part of that 
 good-will. When the trademark is applied to an article 
 of commerce, that article may be the subject of inter- 
 state commerce, but it by no means follows that the 
 trademark affixed upon the article, or the package con- 
 taining the article, is itself being dealt with as a subject 
 of interstate traffic. This distinction, it has been urged, 
 is amply supported by the language of the supreme court 
 in Champion v. Ames, 188 U. S., 321, where it is said 
 that ** Lottery tickets are subjects of traffic, and there- 
 fore of commerce.' ' 
 
 The status thus fixed upon lottery tickets as the sub- 
 jects of interstate commerce is curiously distinguished 
 from policies of fire and marine insurance by the su- 
 i:)reme court; but the language which that tribunal has 
 more than once employed in reference to insurance pol- 
 icies is instructive as indicating its probable attitude 
 toward trademarks. Thus in one of the later insurance 
 cases, Mr. Justice McKenna says: "The contract of 
 insurance is not an instrumentality of commerce. The 
 making of such a contract is a mere incident of commer- 
 cial intercourse."^ 
 
 The distinction between lottery tickets and insurance 
 policies is one which has not only baffled the layman, but 
 aroused much discussion between members of the bar; 
 but in the language of the supreme court in the lottery 
 cases, and in the insurance cases, the court has uni- 
 
 9 — New York Life Insurance Co. v. Cravens, 178 U. S., 389-401.
 
 § 131] REGISTRATION. 317 
 
 formly held that nothing which is not an instrumentaUty 
 of commerce can come within the purview of the inter- 
 state commerce chiuse of the constitution. 
 
 In Williams v. Fears, 179 U. S., 270, Mr. Chief Justice 
 Fuller has emphasized "the difference between inter- 
 state commerce or an instrumentality thereof on the 
 one side, and the mere incidents which may attend the 
 carrying on of such commerce on the other." 
 
 It would seem clear that the sharpest attack upon the 
 constitutionality of the present act would be along the 
 line of the cases referred to, and if the court determined 
 as a matter of fact, that trademarks were mere incidents 
 attending the carrying on of interstate commerce, it 
 would necessarily follow that the present act, as well 
 as its predecessor, has been founded upon a misconcep- 
 tion of the jurisdiction of congress. AVithout weighing 
 the argument, or pursuing it in the light of other deci- 
 sions of the supreme court, such as those which relate 
 to bills of lading and the like, and without venturing a 
 personal opinion upon the merits of the argument, it 
 will suffice to say that the present act is of extremely 
 doubtful constitutionality, and that section 17, giving 
 jurisdiction to certain courts over trademarks registered 
 in accordance with the provisions of the act, without re- 
 gard to the amount in controversy (a provision incor- 
 porated from section 7 of the act of 1881) offers the op- 
 portunity of readily raising the constitutional question. 
 It is manifestly desirable that the question should be 
 raised and finally disposed of in the near future, that 
 it may be definitely settled. 
 
 This argument is substantially embodied in the re- 
 port of the Committee on the Judiciary of the House 
 of Representatives during the Forty-sixth Congress, as 
 a result of the deliberations of that committee upon a 
 resolution to amend the constitution, and a proposed bill 
 for which the act of 1881 was subsequently substituted. 
 The proposed amendment to the constitution is embodied
 
 318 HOPKINS ON TRADEM.VRKS. [§ 131 
 
 iu the committee's report, a poition of which is as fol- 
 lows : ' ' The bill seeks to re-enact substantially the trade- 
 mark legislation of 1870 (Rev. Stat., sec. 4937-4947, in- 
 clusive) save that it is confined to foreign and interstate 
 commerce. Its theory is that by thus separating them 
 from interstate commerce the objections of the supreme 
 court as to constitutionality will be removed. 
 
 ' ' The resolution to amend the constitution is as follows : 
 
 ARTICLE XVI. 
 
 "Section 1. Congress for promotion of trade and manu- 
 facture, and to carry into effect international treaties, 
 shall have power to grant, i3rotect, and regulate the ex- 
 clusive right to adopt and use trademarks. 
 
 "It is based ujoon the idea that such legislation, though 
 confined to foreign and interstate commerce, is uncon- 
 stitutional, or its advocates may only fear that that may 
 be so, and wish the amendment ex ahundante cautela, 
 and to give confidence to those using trademarks. 
 
 "If the Congress of the United States now has power 
 to pass such laws, the amendment would be useless. Has 
 it that power? 
 
 "After careful consideration we are of oxjinion that it 
 has not. The supreme court in the foregoing opinion 
 avoided deciding that question. A trademark is a con- 
 venience of commerce. Its purj^ose is to identify the 
 thing to be sold. 
 
 "But is no more than the guaranty in writing, or by 
 some words, sign, or device, attached to the thing to be 
 sold, that it is what the seller represents it to be by such 
 writing, etc. By themselves they are not merchandise. 
 Their only use is to attach to merchandise for such iden- 
 tification. They are not necessary to commerce. On 
 the countless things sold in this country, foreign and do- 
 mestic, there are no trademarks but on about 8,000. 
 
 "In Paul V. Virginia (8 Wallace) the court held that 
 congressional control did not cover policies of insurance
 
 § 131] REGISTRATION. 319 
 
 sent from one state of the Union into anotlier wliere a 
 premium was paid therefor. Tliey said tlie poUcies 
 were but 'mere contracts of indemnity against loss by 
 fire.' We think trademarks mere contracts of indemnity 
 against loss by fraud. 
 
 ''Thus the supreme court has held a contract to l>e with- 
 in federal control in Almy v. California. That was a 
 bill of lading for goods to be shipped out of the state. 
 But that decision rested solely ui)on the ground that 'a 
 bill of lading or some other instrument of the same im- 
 port is necessarily always associated with every ship- 
 ment of articles of commerce from the ports of one 
 country to another. The necessities of commerce require 
 it.' (See Almi/ v. California, 24 Howard, 170.) And 
 that decision rests not on the power of congress over 
 commerce, but on the prohibition against tlie states tax- 
 ing exports, etc. The bill of lading was but evidence 
 of the contract of shipping. Taxing it taxed the exported 
 article. And in the Pennsylvania Telegraph Company v. 
 Western Union Telegraph Company (96 U. S. 9) the 
 court pronounced the telegraph 'one of the necessities of 
 commerce. It is indisjjensible as a means of intercom- 
 munication, but especially so in commercial transac- 
 tions.' We think this last case could better stand on 
 the power 'to establish postoffices and postroads.' Yet, 
 if put on the commerce clause, like Almy v. California, 
 it is based on the necessity of the thing legislated upon 
 to foreign or interstate or Indian commerce. As we have 
 said, trademarks are not necessary to such commerce. 
 But even if they were, our opinion would be unchanged. 
 In the case of Steffens, quoted above, the court said: 
 
 " 'It is not every species of property, which is the sub- 
 ject of commerce, or which is used or even essential in 
 commerce, which is brought by this clause of the Consti- 
 tution (commerce clause) within the control of congress. 
 The barrels and casks, the bottles and boxes in which
 
 S20 HOPKINS ON TR.VDEMARKS. [§ 132 
 
 alone certain articles of commerce are kept for safety, 
 and by which their contents are transferred from the 
 seller to the buyer, do not thereby become subjects of 
 congressional legislation more than other property.' 
 
 ' ' But while we think congress can not so legislate with 
 regard to trademarks under the power 'to regulate com- 
 merce with foreign nations, and among the several states 
 and with the Indian tribes' (article 1, section 8, consti- 
 tution), trademarks, in commerce with foreign nations 
 and with the Indian tribes, can be protected under the 
 treaty-making power. ' '^ ^ 
 
 It therefore appears that the Act of 1881 was passed 
 on the theory that it came within the treaty-making pow- 
 ers of congress. The present act cannot be sustained 
 upon that theoiy; it must he sustained, if at all, as a 
 regulation of interstate commerce. 
 
 § 132. The advantages of registration.— The local 
 registration statutes of the several states are too numer- 
 ous and involved to be treated here.^^ The federal courts 
 cannot enforce rights created by state registration, at 
 least as to alleged infringements occurring outside the 
 state in which registration was had.^- 
 
 As to federal registration. Judge Hawley has said 
 that "registration under the act of 1881 is of but little, 
 if any, value, except for the purpose of creating a per- 
 manent record of the date of adoption and use of the 
 trademark, or in cases where it is necessary to give jur- 
 isdiction to the United States courts. "^^ As against 
 a citizen of the same state, a registrant under that act 
 
 10 — Con. Record, Vol. 10, part and followed in Sleepy Eye Mill- 
 
 2, p. 1514. ing Co. v. C. F. Blanke Tea & 
 
 11— See Appendix H. Coffee Co., 85 Off. Gaz. 1905. To 
 
 12 — Rehbein v. Weaver, 133 the same effect see Einstein v. 
 
 Fed. Rep. 607. Sawhill, 65 Off. Gaz. 1918; Sher- 
 
 13 — Hennessy v. Braunschweiger wood v. Horton, Cato & Co., 84 
 
 & Co., 89 Fed. Rep. 664-668. Quoted Off. Gaz. 2018.
 
 132] 
 
 REGISTRATION. 
 
 321 
 
 had not even the riglit to sue in a court of the United 
 States, unless it can be shown that both the original and 
 infringing marks are being used in commerce with for- 
 eign nations or the Indian tribes.*'' 
 
 The certificate of registration is only prima facie evi- 
 dence of ownership of the trademark registered, and is 
 not conclusive or binding upon the courts as to the right 
 of a party to its exclusive use.*'^ 
 
 No right is created by the registration of a generic 
 name,**^ nor by the registration of a mark unrestricted 
 as to form or color, as "a color streak applied to or 
 woven in a wire rope."*^ 
 
 The certificate of registration is only prima facie evi- 
 dence of an admission on the part of the government 
 that the applicant for registration is the owner of a 
 valid trademark, is not a grant of any right or privilege, 
 and does not, therefore, conclude a third party ;*^ but it 
 is conclusive as against the registrant, as limiting and 
 
 14— Ryder v. Holt. 128 U. S. 
 525; Luyties v. Hollender, 22. 
 Blatchf. 413; Schumacher v. 
 Schwenke, 26 Fed. Rep. 816; 
 Gravely v. Gravely, 42 Fed. Rep. 
 265; Prince's Metallic Paint Co. v. 
 Prince Mfg. Co., 53 Fed. Rep. 493. 
 
 15 — Hennessy v. Braunschwei- 
 ger, supra: Brower v. Boulton, 53 
 Fed. Rep. 389; Glen Cove Mfg. Co. 
 v. Ludeling. 22 Fed. Rep. 824-826. 
 
 In the latter case Judge Wal- 
 lace observed: "The act of con- 
 gress makes the registration of 
 the mark only prima facie evi- 
 dence of ownership. Sec. 7. The 
 inquiry is therefore always open 
 as to the validity of the title to 
 a trademark evidenced by the reg- 
 istration. The registration could 
 not confer a title to the trademark 
 upon the complainant if some oth- 
 
 er corporation or individual had 
 acquired a prior right by adoption 
 and use; nor could it vest defend- 
 ant with a title as against the 
 complainant's common-law title. 
 In this view the only office of a 
 registration is to confer jurisdic- 
 tion upon the court to protect a 
 trademark when the proprietor 
 has obtained the statutory evi- 
 dence of title, and the only func- 
 tion of the commissioner of pat- 
 ents is to determine whether an 
 applicant has a presumptive right 
 to the trademark." 
 
 16 — Liebig's Extract of Meat Co. 
 v. Walker, 115 Fed. Rep. 822-826. 
 
 17 — A Leschen & Sons Rope Co. 
 V. Broderick & Bascom Rope Co., 
 134 Fed. Rep. 571. C. C. A. 
 
 18— United States v. Braun, 39 
 Fed. Rep. 775. 
 
 21
 
 322 HOPKINS ON TRADEMARKS. [§ 133 
 
 restricting what he can claim as bis trademark.^ ^ Not- 
 withstanding its registration under the act, the trade- 
 mark of an insolvent will be conveyed by a general as- 
 signment for the benefit of creditors,-*' and it has been 
 held under all the various bankruptcy and insolvency 
 laws that all trademarks of the bankrupt or insolvent 
 pass to the trustee or assignee.-^ 
 
 § 133. The disadvantages of registration.— As indi- 
 cated in the preceding section, registration under the 
 act was held to ''operate as evidence tending to show 
 what was really claimed."^- Judge Acheson has said 
 "it would be a per\^ersion of the right to registration 
 under the act of congress, * * * and would amount 
 to a fraud on other traders, to permit the plaintiff now 
 to assert broader rights in the anchor as a trade symbol 
 than his public registry in 1885 disclosed. * * * Sec- 
 tion 10 gives no countenance to the idea that a person, 
 availing himself of the benefits of the act, may register 
 as his trademark a peculiar re^jresentation of a com- 
 mon emblem, exhibiting special and distinguishing fea- 
 tures and a particular combination, and yet afterwards 
 claim the emblem pure and simple, without regard to 
 such features or combination. To tolerate this would be 
 to defeat the very purpose of the act."-^ 
 
 In a later case, Judge Adams held that by failing to 
 include the letter S as part of a registered mark, the 
 
 19 — Kohler Mfg. Co. v. Beeshore 21 — Warren v. Warren Thread 
 
 (2), 59 Fed. Rep. 572; Richter v. Co., 134 Mass. 247; Wilmer v. 
 
 Reynolds, 59 Fed. Rep. 577; 8 C. Thomas, 74 Md. 485, 22 Atl. Rep. 
 
 C. A, 220; Adams v. Heisel, 31 403. 
 
 Fed. Rep. 279, 281; Kohler Mfg. Co. 22— Shiras, Circuit Justice, in 
 
 V. Beeshore (1), 53 Fed. Rep. 262, Kohler Mfg. Co. v. Beeshore, 8 C. 
 
 264; Richter v. Anchor Remedy C. A. 215, 59 Fed. Rep. 572, 576. 
 
 Co., 52 Fed. Rep, 455; Pittsburgh 23 — Richter v. Anchor Remedy 
 
 Crushed Steel Co. v. Diamond Steel Co., 52 Fed. Rep. 455, 458; affirmed 
 
 Co., 85 Fed. Rep. 637. under the style of Richter v. Rey- 
 
 20— Sarrazin v. W. R. Irby Cigar nolds, 8 C. C. A, 220, 59 Fed. Rep. 
 
 Co., 93 Fed. Rep. 624. 577.
 
 § 133] REGISTRATION. 323 
 
 registrant ''must be held tjD have abandoned this feature 
 of its mark, if it had ever employed it, to the public, and 
 thereby, to have disclaimed any exclusive right to it;"-* 
 and a similar ruling has been made by the Court of Ap- 
 peals of Kentucky.-^ Judge Iveed has very proi^erly held 
 that where certain parts of the mark shown and de- 
 scribed in a registration are recited to be essential, the 
 other parts will be held not to be part of the trademark.^^ 
 It is consequently well established that registry of less 
 than the whole trademark is tantamount to an abandon- 
 ment of the remainder.2^ 
 
 By § 28 of the Act of 1905 it is provided, "That it 
 shall be the duty of the registrant to give notice to the 
 public that a trademark is registered, either by affixing 
 thereon the words "Registered in U. S. Patent Office," 
 or abbreviated thus, "Eeg. U. S. Pat. Off.," or when, 
 from the character or size of the trademark, or from its 
 manner of attachment to the article to which it is appro- 
 priated, this cannot be done, then by affixing a label con- 
 taining a like notice to the package or receptacle wherein 
 the article or articles are inclosed; and in any suit for 
 infringement by a party failing so to give notice of reg- 
 istration no damages shall be recovered, except on proof 
 that the defendant was duly notified of infringement, and 
 continued the same after such notice." 
 
 This section is directly modeled uix)n the correspond- 
 ing section of the patent statutes, which is as follows : 
 
 § 4900. "It shall be the duty of all patentees, and 
 their assigns and legal representatives, and of all i:>er- 
 sons making or vending any patented article for or un- 
 der them, to give sufficient notice to the public that the 
 same is patented ; either bj^ fixing thereon tlie word ' * pat- 
 
 24— Pittsburg Crushed Steel Co. 26— L. H. Harris Drug Co. v. 
 
 V. Diamond Steel Co., 85 Fed. Rep. Stucky, 46 Fed. Rep. 624. 625. 
 
 637, 638. 27— P. C. Weist Co. v. Weeks, 
 
 25_Geo. T. Stagg Co. v. Taylor, 177 Pa. 412, 35 Atl. Rep. 693. 
 95 Ky. 651, 27 S. W^ Rep. 247.
 
 324 HOPKINS ON TRADEMARKS. [§ 134 
 
 ented," together with the day and year the patent was 
 granted ; or when, from the character of the article, this 
 cannot be done, by fixing to it, or to the package where- 
 in one or more of them is inclosed, a label containing 
 the like notice; and in any suit for infringement, by the 
 party failing so to mark, no damages shall be recovered 
 by 'the plaintiff, except on proof that the defendant was 
 duly notified of the infringement, and continued, after 
 such notice, to make, use, or vend the article so pat- 
 ented." 
 
 Under the latter section, Mr. Justice Gray has said 
 ''one of these two things, marking the articles, or notice 
 to the infringers, is made by the statute a prerequisite 
 to the patentee's right to recover damages against them. 
 
 Each is an affinnative fact, and is something to be 
 done by him. * * * By the elementary principles of 
 pleading, therefore, the duty of alleging, and the burden 
 of proving either of these facts is upon the plaintiff, "^s 
 
 Therefore, by registration under the Act of 1905, the 
 registrant has this burden imposed upon him. 
 
 § 134. Interferences.— The rules established by the de- 
 cisions of the patent office in relation to interferences un- 
 der the Act of 1881 are of value in like proceedings un- 
 der the present Act. Section 3 of the Act of 1881 pro- 
 vided that 'Tn an application for registration the com- 
 missioner of patents shall decide the presumptive law- 
 fulness of claim to the alleged trademark; and in any 
 dispute between an applicant and a previous registrant, 
 or between applicants, he shall follow, so far as the 
 same may be applicable, the practice of courts of equity 
 of the United States in analogous cases." 
 
 § 135. Between a registrant and an applicant, the 
 burden of proof is on the applicant, for the reason that 
 the certificate under § 7 of the act is prima facie evidence 
 
 28— Dunlap v. Schofield, 152 U. S. 244, 248, 38 L. Ed. 426, 427.
 
 § 136] REGISTRATION. 325 
 
 of ownership.2^ jjj su^j^j ^ case, Allen, commissioner, 
 has held that the applicant must establish "a date of 
 use in the United States prior to the date of the other 
 party's registration,"''^ and that registration by the ap- 
 plicant under the Act of 1870 "amounts to nothing more 
 than a publication."-'^ 
 
 § 136. The preliminary statement.— In patent inter- 
 ferences a formal preliminary statement is required from 
 each of the parties. In trademark interferences the 
 statement accompanying the application for registration 
 performs the same functions and is treated as a prelim- 
 inary statement. 
 
 The rule of the patent office in relation thereto for- 
 merly provided that each applicant and registrant would 
 be held to the date of adoption alleged in the statement 
 filed with his application. But even under that rule 
 Duell, commissioner, held that evidence of use antedat- 
 ing that set up in the application of the party offering 
 it may be considered and such weight given to it as "may 
 be proper under the circumstances of the case."^^ 
 Subsequently, on an application for leave to file an 
 amended statement, Allen, commissioner, in denying the 
 application held that an amendment could be filed after 
 the determination of the question of priority .'' 
 
 Manifestly, however, evidence offered to prove a date 
 earlier than that set up in the statement must be re- 
 garded with some suspicion. In the language of Allen, 
 commissioner, "it is to be presmned that this statement 
 filed with the application for registration was made after 
 proper inquiry, and while it is not binding upon the par- 
 
 29 — Sherwood v. Horton. Cato & 31 — Auerbach & Sons v. Hall & 
 
 Co., 84 Off. Gaz. 2019; Sibley Soap Hayward Co., Ill Off. Ga«. 806. 
 
 Co. V. Lambert Pharmacal Co., 103 32 — Manitowoc Mfg. Co. v. Dick- 
 
 Off. Gaz. 2172. erman, 57 Off. Gaz. 1721. 
 
 30 — Broderick & Bascom Rope 33— ^'^anden Bergh & Co. v. Bel- 
 Co. V. A. Leschen & Sons Rope Co., mont Distilling Co., 99 Off. Gaz. 
 100 Off. Gaz. 3011. 1624.
 
 326 HOPKINS ON TRADEMARKS. [§ 137 
 
 ties to an interference proceeding it is still entitled to 
 considerable weight/^^ 
 
 § 137. The issues in an interference.— The purpose of 
 an interference is to determine the question of priority 
 of adoption and use as between the parties to the inter- 
 ference. Evidence of prior use by a stranger to the 
 interference will not be considered.^^ 
 
 An interference in fact exists where the marks are so 
 similar as to be calculated to deceive the public, and are 
 used upon classes of goods so closely related that when 
 bearing the same mark one would suppose that they are 
 the product of the same manufacturer.^^ 
 
 34— Ibid. 36— B. A. Corbin & Son v. Mil- 
 
 35 — Carey v. New Home Sewing ler, Kohlhepp, Griese & Co., 98 Off. 
 Machine Co., 101 Off. Gaz. 448. Gaz. 1485.
 
 CHAPTER X. 
 
 COURTS. PARTIES AND CAUSES. 
 
 § 138. Introductory.— In the preceding chapters we 
 have discussed the rights of owners or assignees of 
 trademarks, and the wrongs occurring when these rights 
 are infringed, or, as against persons not the owners of 
 technical trademarks, other methods of unfair competi- 
 tion are resorted to. The remainder of this work will 
 deal with the means by whicli infringers are restrained 
 from a continuance of their wrongdoing and forced to 
 make reparation for the damage they have occasioned. 
 In this chapter we will confine our attention to the courts 
 whose power may be invoked, the jDarties who may seek 
 a remedy or against whom it may be sought, and the 
 causes of action which may properly be brought to de- 
 termine the rights of both parties. 
 
 § 139. Jurisdiction of United States circuit courts.— 
 
 Section 7 of the Act of 1881 provides that courts of the 
 United States shall have original and api^ellate jurisdic- 
 tion in cases involving a registered trademark, without 
 regard to the amount in controversy. It has been held 
 in this connection (prior to the statutes of 1887 and 1888, 
 which raised the "amount in controversy" necessary 
 to federal jurisdiction from $500 to $2,000) that the fed- 
 eral courts were not limited in their trademark jurisdic- 
 tion to cases in which the defendant's profits had exceed- 
 ed five hundred dollars.* And a later decision has held 
 that ''The statute of 1881, which gives them {i. e., own- 
 ers of registered trademarks) the right to commence a 
 suit without alleging the amount in controversy, was not 
 
 1 — Symonus v. Greene, 28 Fed. Rep. 834. 
 
 327
 
 328 HOPKINS ON TRADEMARKS. [§ 139 
 
 repealed by the statutes of 1887 and 1888, which make it 
 necessary, in order to give jurisdiction to the United 
 States Circuit Court, that the amount involved be two 
 thousand dollars."- 
 
 In cases where there is diverse citizenship it does not 
 appear to be necessary to allege that the plaintiff uses 
 his trademark on goods intended for commerce with 
 foreign nations or with the Indian tribes ; but it has been 
 held that the federal courts have no jurisdiction in a 
 trademark action between citizens of the same state un- 
 less the pleadings affirmatively show that the complain- 
 ant uses his trademark on goods intended for commerce 
 with foreign nations or with the Indian tribes.^ It was 
 necessary, under the Act of 1881, where both parties are 
 citizens of the same state, to aver that the defendant has 
 applied the simulated mark to goods intended to be used 
 in such foreign commerce, or trade with the Indian 
 tribes,"* although the reasoning of one of the cases tended 
 to show that logically no such averment in the plead- 
 ings is necessary.^ It is not necessary to show that 
 either party has used the mark in commerce with for- 
 eign nations or with the Indian tribes where the par- 
 ties are of diverse citizenship.® 
 
 Of course, in cases involving the right to an unregis- 
 tered trademark, jurisdiction can only be acquired by 
 the federal courts because of the diverse citizenship of 
 the parties,'^ and the amount in controversy, which must 
 
 2— Glotin V. Oswald, 65 Fed. Rep. Gaz. 1538; 42 Fed, Rep. 265; War- 
 
 151; Garland & Ralston, Federal ner v. Searle & Hereth Co., 191 U. 
 
 Practice, sec. 122; Hennessy v. S. 195. 
 Herrmann, 89 Fed. Rep. 669. 5— Glen Cove Mfg. Co. v. Ludel- 
 
 3— Ryder v. Holt, 128 U. S. 525; ing, 22 Fed. Rep. 823. 
 Glen Cove Mfg. Co. v. Ludeling, 22 6 — Hennessy v. Braunschweiger 
 
 Fed. Rep. 823; Gravely v. Gravely, & Co., 89 Fed. Rep. 664. 
 52 Off. Gaz. 1538; 42 Fed. Rep. 7— Battle v. Finlay, 50 Fed. Rep. 
 
 265; Schumacher v. Schwenke, 26 106; Burt v. Smith. 71 Fed. Rep. 
 
 Fed. Rep. 818; Luyties v. Hollen- 161; Prince's Metallic Paint Co. v. 
 
 der, 27 Blatchf. 413. Prince Mfg. Co., 53 Fed. Rep. 493. 
 
 4 — Gravely v. Gravely, 52 Off.
 
 § 139] COURTS, PARTIES AND CAUSES. 329 
 
 be over $2,000 exclusive of interest and costs ; as to trade- 
 marks, their jurisdiction is concurrent with that of the 
 state courts. By virtue of the act of congress of March 
 3, 1887, ch. 373, as corrected by the act of August 13, 
 1888, ch. 8GG, suit cannot be brought against a corpora- 
 tion for infringement of a trademark except in the dis- 
 trict where it is incorporated.** 
 
 Where a bill was brought to restrain infringement of 
 a registered trademark and to restrain the defendants 
 from unfair competition in simulating the fonn, size, 
 color and shape of cough-drops manufactured by the 
 complainants (both parties being citizens of the same 
 state), the United States Circuit Court of Appeals for 
 the Second Circuit held that the fact that the trademark 
 had not been infringed deprived the circuit court of jur- 
 isdiction, and that court had therefore erred in granting 
 an injunction to restrain the unfair competition com- 
 plained of.° 
 
 In a suit for injunction the "amount in controversy" 
 is the value of the object to be gained by the bill, and 
 not the amount of damages already suffered by the com- 
 plainant.^*^ In actions for infringement of trademark or 
 for unfair competition, therefore, the amount of profits 
 sought to be recovered does not determine this jurisdic- 
 tional question. In trademark cases it is the value of 
 the trademark that determines and fixes the ''amount in 
 controversy."^^ 
 
 In a suit for the protection of a tradename, not a 
 trademark, from unfair competition, ''it is the value of 
 
 8 — Re Keasbey & Mattison Co., ed.), sec. 16. Citing Mississippi & 
 
 160 U. S. 221 ; Garland & Ralston, Mo. R. R. Co. v. Ward, 2 Black, 
 
 Federal Practice, sec. 161. 485; Market Co. v. Hoffman, 101 
 
 9— Burt V. Smith, 71 Fed. Rep. U. S. 112; Symonds v. Greene, 28 
 161. To the same effect see Gold- Fed. Rep. 834; WTiitman v. Hub- 
 stein V. Whelan, 62 Fed. Rep. 124; bell, 30 Fed. Rep. 81. 
 Luyties v. Hollender, 30 Fed. Rep. 11— Symonds v. Greene, 28 Fed. 
 632. Rep. 834: Hennessy v. Hermann, 
 
 10— Foster, Federal Practice (2d 89 Fed. Rep. 669.
 
 330 HOPKINS ON TRADEMARKS. [§ 139 
 
 that name, as measured by the damages to it, not only 
 present but prospective, which determines the amount 
 in controversy. "^- 
 
 This must be specifically pleaded, because "the requi- 
 site value of the matter in controversy is a jurisdictional 
 fact, and it must necessarily be averred in the declara- 
 tion or bill. There are no presumptions in favor of 
 the jurisdiction of the federal courts, as they are spec- 
 ially constituted with jurisdiction in certain cases; and 
 the facts upon which it rests must appear in some form 
 in the record of all suits prosecuted before them. They 
 
 have no jurisdiction except such as the statute con- 
 fers. "^^ 
 
 Thus where a tradename (not a technical trademark) is 
 alleged to be of a certain value, but there is no averment 
 that the defendant's acts will, unless restrained, tend 
 to destroy it or put its value in jeopardy, the bill is de- 
 murrable.^^ 
 
 When the parties are citizens of different states, so 
 that the case comes within the general grant of jurisdic- 
 tion in the first part of the act of March 3, 1887, the de- 
 fendant, by entering a general appearance in a suit 
 brought against him in a district of which he is not an 
 
 12 — Archibald, J., in Draper v. uct, 'to the great loss, injury and 
 
 Skerrett (2), 116 Fed. Rep. 206, damage' of complainant, and that 
 
 207. unless such acts of defendant are 
 
 13 — Garland & Ralston, Federal checked 'the reputation of the 
 
 Practice, sec. 122. complainant and its rifles will 
 
 14 — "The durmurrer raises also a still further suffer great and ir- 
 
 question of jurisdiction. The bill reparable damage.' There is no 
 
 alleges that complainant's trade- averment that complainant's trade 
 
 name, 'Winchester/ is worth in name will be destroyed, nor that it 
 
 excess of $5,000, but makes no is in jeopardy. The court cannot 
 
 charge as to the amount of present assume, in the absence of allega- 
 
 or prospective damage to com- tions to that effect, that the trade- 
 
 plainant arising out of defendant's name will be destroyed, or that 
 
 action, excepting the statements complainant's damages are in ex- 
 
 that defendant's acts are calculated cess of $2,000." Kohlsaat, J., in 
 
 to deceive and mislead intending Winchester Repeating Arms Co. v. 
 
 purchasers of complainant's prod- Butler Bros., 128 Fed. Rep. 976.
 
 § 140J COURTS, PARTIES AND CAUSES. 331 
 
 inhabitant, waives the right to object tliat it is brought 
 in the wrong district.^^ But a corporation, by doing 
 business or appointing a general agent in a district otlier 
 than that in which it is created, does not waive its right, 
 if seasonably availed of, to insist that the suit should 
 have been brought in the latter district.'" 
 
 The Court of Appeals of the district of Columbia had 
 no jurisdiction of trademark cases under section 3 of 
 the law of 1881. '^ 
 
 Federal jurisdiction in cases of unfair competition 
 must of course be predicated upon the general rules fix- 
 ing the jurisdiction of the federal courts, so that those 
 courts cannot entertain such an action arising between 
 citizens of the same state except in so far as the res})ond- 
 ent's wrongful acts affect commerce with foreign nations 
 or the Indian tribes ; at least that is the express holding 
 of the circuit court of appeals for the seventh circuit.^** 
 
 §140. Jurisdiction of the state courts.— The state 
 courts have a jurisdiction concurrent with that of the 
 federal courts in trademark cases.^** It may, at times, 
 be advisable for a non-resident plaintiff who has secured 
 state registration for his mark or label to sue in the state 
 court in preference to the federal court; this will be de- 
 termined by the character of the matter for which state 
 
 15— Re Keasbey & Mattison Co., Elgin Nat. Watch Co., 94 Fed. Rep. 
 
 160 U. S. 221-229. 667, 672, 35 C. C. A. 237. 
 
 16 — Re Keasbey & Mattison Co., 19 — Small v. Sanders, 118 Ind. 
 
 160 U. S. 221-229. This reverses 105, 20 N. E. Rep. 296. It is well 
 
 the ruling in Gray v. Taper-Sleeve settled law that the jurisdiction of 
 
 Pulley Works, 16 Fed. Rep. 436- state and federal courts over suits 
 
 443, where it was held that the for infringement of trademarks is 
 
 service of an agent of a foreign concurrent. The act of March 3, 
 
 corporation was binding, the in- 1881, conferring jurisdiction upon 
 
 fringement having been perpe- the courts of the United States, in 
 
 trated in the district where the ac- no way impaired the jurisdiction 
 
 tion was instituted. of the state courts. Re Keasbey & 
 
 17— Einstein v. Sawhill, 65 Off. Mattison Co., 160 U. S. 221; Reed- 
 
 Gaz. 1918. er v. Brodt, (C. P.) 4 Ohio N. P. 
 
 18— Illinois Watch Case Co. v. 265; 6 Ohio Dec. 248.
 
 332 HOPKINS ON TRADEMARKS. [§ 141 
 
 registration has been secured. Several of the states have 
 by statute extended the definition of trademark to in- 
 clude tickets, labels, wrappers, and other wrappings or 
 packages not properly trademark, and frequently it will 
 be a benefit to a complainant to avail himself of such 
 statutoiy provisions.^^ The courts of every state of the 
 Union have, with the exception of California,-^ always 
 been open to the owners of trademarks seeking redress 
 and protection against piracy, without requiring state 
 registration as a prerequisite. 
 
 § 141. The elements whereon jurisdiction must be 
 predicated. — Lord Chancellor Brady, in the Irish high 
 <»drt of chancery, in 1893, speaking of trademark causes, 
 said: ''In such suits, in order to found the jurisdiction 
 of this court, there must be established, first, the exist- 
 ence of the trademark; next, the fact of an imitation, 
 whether a direct imitation, or one with such variations 
 that the court must regard them as merely colorable ; and 
 thirdly, the fact that the imitations were made without 
 license, or anything that this court could regard as ac- 
 quiescence in their use."^^ Mr. Sebastian refers to the 
 remark of Vice Chancellor Bacon, in England, that 'Hhe 
 law of Scotland does not in this respect differ from the 
 law of England "^^ (referring to trademarks), as estab- 
 lishing, in conjunction with the above dicta of the 
 
 20 — "The phrase trademark as name for any mill, hotel, factory 
 
 used in this chapter includes every or other business." Sec. 366, Penal 
 
 description of word, letter, device. Code of New York, 1893; Montana 
 
 emblem, stamp, imprint, brand. Code, 1895, vol. I, sec. 3160. 
 
 printed ticket, label or wrapper 21 — Whittier v. Dietz, 66 Cal. 78. 
 
 usually affixed by any mechanic. This exception to the rule has 
 
 manufacturer, druggist, merchant since been removed by statutory 
 
 or tradesman, to denote any goods enactment. 
 
 to be imported, manufactured, pro- 22 — Kinahan v. Bolton, 15 Ir. Ch. 
 
 duced, compounded or sold by him, 75-79. See also Thedford Medicine 
 
 other than any name, word or ex- Co. v. Curry, 96 Ga. 89. 
 
 pression generally denoting any 23 — Singer Mfg. Co. v. Loog (3), 
 
 goods of some particular class or L. R. 18 Ch. D. 395-404. 
 description or the designation or
 
 8 141] COURTS, PARTIES AND CAUSES. 333 
 
 learned Irish chancellor, the fact that the jurisdictional 
 I^rinciples in the three kingdoms are the same.-'' The su- 
 preme court of New York lias held it error to dismiss a 
 complaint upon the pleadings and the opening of counsel 
 where the complaint showed the ownership of a tobac- 
 co sample ticket used in trade by the plaintiffs, and the 
 wrongful use of an imitation thereof by the defendants.-'^ 
 For reasons discussed elsewhere, it is not necessarj^ to 
 confer jurisdiction that it be alleged that any one has 
 in fact been misled or deceived by the use of the sinm- 
 lated mark. But the pleadings must be drawn to suit the 
 exigencies of the case; and where the facts plainly 
 showed that the simulated mark did not and could not 
 deceive either the jobber or retailer, and the fraud, if 
 any, was upon the ultimate purchaser, the consumer, it 
 was proper to aver the fact that the infringement was 
 calculated to deceive the consumer,^^ and it is probably 
 always a better course to aver that the imitation is cal- 
 culated to deceive the ultimate purchaser. 
 
 The real and simulated marks should be submitted 
 with the bill of complaint or accurately described in ap- 
 propriate terms, the main test of the alleged resem- 
 blance being inspection by the court ;-^ with the qualifica- 
 tion that the resemblance need not be such as to deceive 
 persons seeing the two marks side by side.^® 
 
 24— Sebastian, Trademarks (4th be deceived." Citing Sykes v. 
 
 ed.), 170. Sykes, 3 B. & Cr. 541; Farina v. 
 
 25— Linde v. Bensel, 22 Hun (29 Silverlock, 1 K. & J. 509; Rose v. 
 
 N Y. Sup. Ct). 601. Loftus, 47 L. J. Ch. 576; Singer 
 
 Mfg. Co. V. Loog (3), 18 Ch. D. 
 395-412. 
 
 26 — Drummond Tobacco Co. v. 
 Tinsley Tobacco Co., 52 Mo. App. 
 
 10, 25. The court adds: "The con- 27— Drummond Tobacco Co. v. 
 
 sumer of the particular article is Tinsley Tobacco Co., 52 Mo. App. 
 
 to be considered almost exclusively ^0, 26. , 
 
 in determining the question of in- 28— McCann v. Anthony, 21 Mo. 
 
 fringement, because, in the case of App. 83; Drummond Tobacco Co. 
 
 an attempted decception, he is sub- v. Tinsley Tobacco Co., 52 Mo. App. 
 
 stantially the only party likely to 10.
 
 334 HOPKINS ON TRADEMARKS. [§ 142 
 
 § 142. The parties plaintiff.— The action to protect a 
 trademark may be brought by its owner or a licensee.^® 
 Trusts, constructive, implied or expressed, may arise,^*^ 
 in which case the name of the trustee would be neces- 
 sary in all suits at law affecting the legal title to the 
 trademark, and it would be his duty at all times to pro- 
 tect and defend the title or allow his name to be used 
 for that purpose, under the established principles of law 
 affecting trusts.^^ 
 
 It is not necessary that all the parties having an in- 
 terest in a trademark join as parties plaintiff. Thus, 
 Vice Chancellor Shadwell held that surviving partners 
 could maintain an action for an infringement of the 
 firm's trademarks, notwithstanding the fact that the per- 
 sonal representatives of a deceased partner might have 
 some interest in them.^^ 
 
 Parties having distinct interests in the devices embod- 
 ied in an infringing label may join as complainants in 
 equity.^^ 
 
 Individuals and corporations having a common interest 
 may join as parties complainant in a bill in equity to re- 
 strain an unfair competition in trade. Thus in a recent 
 case we find seven corporations located in the city of 
 Minneapolis joined in a bill to restrain the fraudulent 
 use of names peculiar to their business and locality, by 
 
 29— Kidd V. Johnson, 100 U. S. Webster v. Ketcham, 39 N. Y. 
 
 617; Kidd v. Mills, 5 Off. Gaz. 337. Sup. Ct. 54. Compare Ex parte 
 
 Where there is an exclusive Lawrence Bros., 44 L. T, N. S. 98; 
 
 licensee he must be made a party, 29 W. R. 392; Re Rust, 29 W. R. 
 
 or no injunction can issue. Wal- 393; Re Farina, 29 W. R. 391. The 
 
 lach V. Wigmore, 87 Fed. Rep. 469. three cases last named are cases in 
 
 30 — Re Mitchell, L. R. 28 Ch. D. which one partner registered a 
 
 666. Thus where the use of a mark in his own name by mistake, 
 
 trademark is improperly obtained 31 — Perry, Trusts (4th ed.), sec. 
 
 by one member of a partnership 520. 
 
 for his own use, he being bound 32 — Hine v. Lart, 10 Jur. 106; 
 
 to obtain it for the partnership, Seb. 80. 
 
 he is held to be the trustee of the 33 — Jewish Colonization Assn. v. 
 
 mark for the benefit of the firm. Solomon, 125 Fed. Rep. 994, 995.
 
 § 142] COURTS, PARTIES AND CAUSES. 335 
 
 a dealer in Chicago,'^* and the owners of two separate 
 **Blue Lick Water" springs in Iventucky joined in a bill 
 to restrain the use of the words "Blue Lick Water" by 
 a third party who had no- right to their use.'*'' During 
 the period of administration the ])ersonal representative 
 of the deceased owner of a trademark holds the mark, 
 as we have seen, although it has been held in one case 
 that it may pass without administration.'''^ Where there 
 is an administrator, it is his duty to defend the trade- 
 mark from infringement, and he can recover all accrued 
 profits and damages from the infringer, as actions to 
 restrain infringement and recover profits and damages 
 are held not to come within the rule actio personalis mor- 
 itur cum persona?'^ The owner of real estate and im- 
 provements thereon may have such a right in a trade- 
 mark used to identify the products of his tenants as to 
 entitle him to prevent his tenants from using the mark 
 after they have removed to other premises.^* 
 
 Upon the dissolution of a copartnership, ''either mem- 
 ber may use the devices or symbols, unless he has di- 
 vested himself of the right. "-^'-^ 
 
 Where copartners dissolve partnership, each retaining 
 
 34— Pillsbury - Washburn Flour 36— Pratt's Appeal, 117 Pa. St. 
 
 Mills Co. V. Eagle, 30 C. C. A. 386, 401. See Stewart v. Einstein, 64 
 
 86 Fed. Rep. 608. See also Gravel Off. Gaz. 1533. 
 
 Roofers' Exchange v, Turnbull, 64 37— Woerner, Administration, 
 
 Off. Gaz. 441. sec. 299; Oakey v. Dalton, L. R. 
 
 35— Northcutt V. Turney, 101 Ky. 35 Ch. D. 700; 35 W^ R. 709; 
 314; 41 S. W. Rep. 21. See also Hatchard v. Mege, L. R. 18 Q. B. 
 Society of Accountants v. Corpora- D. 771; Giblett v. Read, 9 Mod. 
 tion of Accountants, 20 Scot. Sess. 459; Croft v. Day, 7 Beav. 84. 
 Cas. (4th ser.), 750, in which three 38— Atlantic Milling Co. v. Rob- 
 chartered societies joined in an inson, 20 Fed. Rep. 217; Arm- 
 action to prevent the use of the strong v. Kleinhaus, 82 Ky. 803; 
 letters "C. A." (Chartered Ac- Harper v. Pearson, 3 L. T. N. S. 
 countants) by the defendant, those 547; Carmichael v. Latimer, 11 R. 
 letters having been used only to 1.395; Motley v. Downman, 3 My. 
 designate members of the three & Cr. 1; Dickson v. McMaster, 18 
 complaining societies. See also Ir. Jur. 202. 
 Pratt's Appeal, 117 Pa. St., 401. 39— Patterson, J., in Baldwin v.
 
 336 HOPKINS ON TRADEMARKS. [§ 143 
 
 the right to use tlie trademarks of the firm, each can 
 assert his right to the exclusive use of such trademarks 
 as to all persons except his associates in ownership.*** 
 But in all cases where the right to a trademark is vested 
 severallj^ in two or more persons, either of them will be 
 enjoined from advertising or claiming that he is the 
 ''sole proprietor,"*^ or that his is the ''only genuine" 
 article.*- And where title is so held, either of the par- 
 ties entitled to its use may alone maintain a suit in 
 equity against an infringer.*^ 
 
 § 143. The parties defendant.— We have seen in a 
 previous chajjter that the liability for injunction against 
 infringement extends to the manufacturer of dies from 
 which counterfeits of the mark are to be made; and it 
 may accurately be said that every one who deals with 
 the simulated trademark or the means of producing it 
 will be restrained in equity. 
 
 In a case where a temporary injunction had been 
 granted against a person since deceased, without oppo- 
 sition, and the defendant in his life-time had never 
 moved to vacate it, it was held in New York that the 
 cause would not be continued as against the administra- 
 trix of the defendant, because it was not shown that the 
 defendant had acquired any rights in the litigation or 
 that any prejudice would result to the estate by not con- 
 tinuing the action.** 
 
 The question who may be parties defendant involves 
 necessarily a discussion of some of the principles applied 
 by the courts in infringement proceedings. 
 
 Von Micheroux, 25 N. Y. Supp. Simeon L. & George H. Rogers Co., 
 
 857. To the same effect see Hu- 110 Fed. Rep. 955. 
 
 wer V. Dannenhoffer, 82 N. Y. 499. 42— Fish Bros. Wagon Co. v. 
 
 Hazard v. Caswell, 93 N. Y. 259. Fish Bros. Mfg. Co., 87 Fed. Rep. 
 
 40— New York Cement Co. v. 203. 
 
 Coplay Cement Co., 45 Fed. Rep. 43— Dent v. Turpin, 30 L. J. Ch. 
 
 212. 495; Seb. 196. 
 
 41 — International Silver Co. v. 44 — Republic of Peru v. Reeves, 
 
 40 N. Y. Sup. Ct. 316.
 
 § 143] COURTS, PARTIES AND CAUSES. 337 
 
 Where the plaintiff, the sole owner of a mineral 
 spring, leased it to one who adopted a name to indicate 
 its waters, the concessionaire was enjoined at the in- 
 stance of the owner from applying the name so used to 
 water from another spring ;^'^' and in a case where the 
 owner of a spring granted concessions to another con- 
 veying the selling privileges in certain countries, the 
 concessionaire was enjoined from interfering with the 
 sale in those countries of water from the spring sold 
 through parties other th^yi the concessionaire.*" 
 
 A manufacturer may delegate the right to use his 
 trademark to sales merchants, giving them that right 
 only so long as they buy goods, of the class to which the 
 trademark belongs, from him. Upon their ceasing to so 
 purchase their goods they will be enjoined from the use 
 of the mark."*^ 
 
 A firm of shippers of merchandise who applied the 
 name ''The Keystone Line" to vessels they did not own, 
 but of which they had the exclusive management in load- 
 ing and unloading, w^ere held to have acquired such an 
 exclusive right in the name that the owners of the ves- 
 sels so used were enjoined from using the name when 
 the shippers transferred their business to other vessels, 
 the property of other ship-owners.** 
 
 One who is merely a forwarding agent may be en- 
 joined. In an English case a firm of forwarding agents 
 in London received from foreign correspondents several 
 packages of cigars bearing forged brands. They were 
 enjoined, but costs were not assessed against them be- 
 cause they had, prior to suit, given the makers of the 
 brands so counterfeited full information as to the con- 
 
 45— Hill V. Lockwood, 32 Fed. 47— Re Riviere, 53 L. T. N. S. 
 
 Rep. 389. 237. See also Lavergne v. Hooper, 
 
 46— Apolllnaris Co. (Ltd.) v. Ind. L. R. 8 Mad. 149. 
 
 Scherer. 23 Blatchf. 459, 27 Fed. 48— Winsor v. Clyde, 9 Phila. 
 
 Rep. 18. 513. 
 22
 
 338 HOPKINS ON TRADEMARKS. [§ 143 
 
 signees and offered to return the cigars to the consign- 
 ors or to erase the brands.^ '^ 
 
 The managers of an infringing corporation, who are 
 themselves substantially the corporation, are properly 
 joined as co-defendants with the corporation in a bill to 
 restrain the infringement.^^ The directors of an in- 
 fringing corporation may be joined as co-defendants 
 with it.^i 
 
 Servants, agents, and employes generally, may be 
 joined as defendants; they are personally liable to in- 
 jmiction/'- American agents of foreign houses will be 
 enjoined from selling counterfeits or imitation goods re- 
 ceived from their principals.^^ The same rule obtains 
 in regard to English^^ or Australian'^^ agents of foreign 
 principals, and in regard to commission merchants.^^ 
 
 The principal is, of course, liable for the acts of his 
 servants or agents, whether or not he can be shown to 
 have knowledge of those acts.^^ 
 
 Difficulty arises in considering the rights and liabili- 
 ties of innocent j)arties through whose hands counter- 
 feit goods pass in transit, who hold them only as bailees 
 and have no actual or imputed knowledge of their fraud- 
 ulent nature. In the case of wharfingers so situated, 
 
 49— Upmann v. Elkan, L. R. 12 54— Siegert v. Ehlers, Seb. 432; 
 
 Eq. 140; L. R. 7 Ch. Ap. 130. Siegert v. Findlater. L. R. 7 Ch. 
 
 50— California Fig Syrup Co. v. D. 801; Farina v. Cathery, L. J. 
 
 Improved Fig Syrup Co., 61 Off. N. C. 1867, p. 134. 
 
 Gaz. 155; 51 Fed. Rep. 296. 55— Siegert v. Lawrence, 11 Vict. 
 
 51 — Armstrong & Co. v. Savan- L. R. 47. 
 
 nah Soap Works, 53 Fed. Rep. 124, 56— Coats v. Holbrook, 2 Sandf. 
 
 61 Off. Gaz. 1018. 586; Cox, 20; Twentsche Stoorn 
 
 52 — Estes V. Worthington (2), Bleekery Goor v. Ellinger, 26 W. 
 
 30 Fed. Rep. 465; Sawyer v. Kel- R. 70. 
 
 logg (1), 7 Fed. Rep. 721; Saw- 57— Low v. Hart, 90 N. Y. 457; 
 
 yer v. Kellogg (2), 9 Fed. Rep. Atkinson v. Atkinson, 85 L. T. 
 
 601. Jour. 229; Twentsche Stoom 
 
 53 — Carbolic Soap Co. v. Thomp- Bleekery Goor v. Ellinger, 26 W. 
 
 son, 25 Fed. Rep. 625; Roberts v. R. 70; Tonge v. Ward, 21 L. T. N. 
 
 Sheldon, 8 Biss. 398, Fed. Case No. S. 480. 
 11916.
 
 § 143] COURTS, PARTIES AND CAUSES. 339 
 
 wlio offered to act in regard to falsely marked wine in 
 their possession as the court might direct, but asked to 
 have their charges ijrovided Tor, the court ruled that 
 tliey were entitled to a lien ujwn the wine for their 
 charges; that plaintiffs must pay defendant's costs; and 
 if the phiintiffs had any lien for their own costs as 
 against the wine, it nmst be subject to the lien of the 
 wharfingers for their charges.''^ 
 
 An innocent mortgagee of wines bearing a simulated 
 mark was held to have a valid lien thereon, and it was 
 directed that the spurious marks should be effaced and 
 the wines delivered to him.'''* 
 
 In no case, however, will relief in equity stop short of 
 protecting the owner of a trademark of which imitations 
 or counterfeits are found in the hands of a common car- 
 rier or warehouseman."" It is the duty of the bailee so 
 situated to give the owner of the trademark full infor- 
 mation in regard to the goods which are or have been in 
 his hands by virtue of the bailment, and where he re- 
 fuses so to do, even after the goods have gone beyond 
 his control, it has been held that a bill will lie against 
 him to compel discovery .*^^ 
 
 If, on the other hand, the bailee gives the owner of the 
 mark full information, he will be allowed costs if, not- 
 withstanding his disclosures, proceedings are instituted 
 against him.*'- The wrongs of which this book treats 
 being torts, and all participants in torts being principals, 
 
 58 — Moet V. Pickering, L. R. 6 Upmann v. Elkan, L. R. 12 Eq. 140. 
 
 Ch. D. 770: L. R. 8 Ch. D. 372. 61— Orr v. Diaper, L. R. 4 Ch. 
 
 59 — Ponsardin v. Peto, 33 Beav. D. 92. See also Carver v. Pinto 
 
 642. Leite, L. R. 7 Ch. D. 90; 41 L. J. 
 
 60— Ponsardin v. Peto, 33 Beav. Ch. 92; 25 L. T. N. S. 722; 20 W. 
 
 642; Hunt v. Maniere. 34 Beav. R. 134. 
 
 157; Del Valle v. Mayer, Seton 62— Upmann v. Currey, 29 Sol. 
 
 (4th ed.), 236; Seb. 326; Rivero v. J. 735; Upmann v. Forester, L. R^ 
 
 Norris. Seton (4th ed.), 236; Seb. 24 Ch. D. 231; Moet v. Pickering, 
 
 299; Moet v. Pickering, L. R. 6 L. R. 8 Ch. D. 372; Upmann v. 
 
 Ch. D. 770; L. R. 8 Ch. D. 372; Elkan, L. R. 12 Eq. 140.
 
 340 HOPKINS ON TRADEMARKS. [§ 144 
 
 a person who assists in conducting an unfair competition 
 by furnishing frauduluent packages or labels is liable for 
 the injury resulting to the plaintiff from the unfair com- 
 petition.^3 
 
 § 144. Forms of action.— The most usual form of civil 
 action to secure redress for trademark piracy in this 
 country is by bill in equity, praying for an injunction, 
 discovery, account of profits, and damages. The rem- 
 edy at law is by an action on the case, for deceit; that 
 form of action being both the form known to the com- 
 mon law and that prescribed by the act of March 3, 1881. 
 
 An action of deceit may be brought by a purchaser 
 who has been deceived by the vendor of the fraudulent 
 article, but such actions are seldom, if ever, brought, 
 and are practically unheard of. 
 
 One action in a federal court will lie for the infringe- 
 ment of a patent and the infringement of a trademark, 
 where the trademark and the patent were both infringd 
 together,^* and the same rule applies where a publication 
 infringes both a trademark and a copyright.^^ 
 
 63— Hildreth v. Sparks Mfg. Co., Fleece Underwear Co., 60 Fed. Rep. 
 
 99 Fed. Rep. 484. 622. 
 
 64— Walker, Patents (3d ed.), 65— Harper v. Holman, 84 Fed. 
 
 sec. 417; Jaros Underwear Co. v. Rep. 222.
 
 CHAPTER XL 
 
 THE CRIMINAL PROSECUTION— FEDERAL AND STATE. 
 
 § 145. The act of 1876.— The prosecutions under which 
 the decision styled the Trademark Cases^ was rendered 
 were instituted under the act of congress of 187(). This 
 was a penal act applicable to infringers of trademarks 
 registered under the registration act of 1870. Mr. Jus- 
 tice Miller says, in the conclusion of his opinion: "Wliile 
 we have, in our references in this opinion, had mainly in 
 view the act of 1870, and the civil remedy which that act 
 provides, it was because the criminal offenses described 
 in the act of 1876 are, by their express tenns, solely ref- 
 erable to frauds, counterfeits, and unlawful use of trade- 
 marks which were registered under the provisions of 
 the former act. If that act is unconstitutional, so that 
 the registration under it confers no lawful right, then 
 the criminal enactment intended to protect that right 
 falls with it. "2 
 
 After the enactment of the act of March 3, 1881, some 
 able lawyers inclined to the belief that the act of 1876 
 was by the passage of a valid registration act given new 
 life, or, as stated by one eminent jurist: "This is not 
 an instance of revival ; for the penal act was not dead, 
 but simply dormant. Its sleep was ended by the birth of 
 the act of 1881. No words were required in the latter 
 to set the penal law in motion. That which is implied 
 in a statute is just as much a part of it as is that which 
 is expressed. Nor is it repealed by the civil act of 
 1881. "3 
 
 1—100 U. S. 82. 3— Browne, Trademarks (2d 
 
 2— Trademark Cases. 100 U. S. ed.), sec. 371. 
 82-99. 
 
 .'Ul
 
 342 HOPKINS ON TRADEMARKS. [§ 145 
 
 This reasoning, however, has not been followed by 
 the courts. The proposition was first submitted to Judge 
 Thayer, but in his opinion he expressly refrained from 
 deciding it, sustaining demurrers to indictments based 
 upon the act of 1876 upon other grounds.-^ Subsequently 
 the question was squarely presented to Mr. Justice Brew- 
 er, sitting as circuit judge, who said in substance: 
 "While the act of 1870 was a nullity, it must be assumed 
 as a matter of fact that in framing the act of 1876 the 
 penalties imposed were with reference to the terms of 
 the statute of 1870. * * * Again, when the act of 
 1881 was passed, if congress had intended that penalty 
 should be imposed for a trespass upon the rights con- 
 ferred by that statute, or if it had intended that the act 
 of 1876 should be re\dvified and operate upon the act of 
 1881, it was very easy to say so. Its silence in this re- 
 spect is cogent evidence that it did not understand or in- 
 tend that the penal statute should be considered a part of 
 present and valid law. And that assumption is strength- 
 ened by the fact that it had before it for consideration 
 this passage from the opinion of the supreme court 
 (quoted above) in which it is broadly stated that the 
 Act of 1876 had fallen with the Act of 1870. Whatever 
 may be true as to the full meaning of that decision, or 
 as to the general power of congress to impose penalties 
 for trespasses upon rights having no existence, it had be- 
 fore it the general affirmance by the court that the law 
 of 1876 had fallen, and it must be assumed that if it 
 meant that it should stand and be vivified, or that any 
 penalties should be imposed for violations or the law of 
 1881, it would have so stated. These considerations con- 
 vince me very strongly that the Act of 1876 has, as the 
 supreme court said, fallen with the Act of 1870, and it is 
 as much a dead letter as the Act of 1870, and was not 
 vivified or given operative force by the Act of 1881."^ 
 
 4— United States v. Braun, 39 5— United States v. Koch, 40 
 Fed. Rep. 775-777. Fed. Rep. 250-252.
 
 S 146 J THE CRIMIN.VL PROSECUTION. 343 
 
 The Act of 1876, then, is no longer of force, and tliere 
 is no federal relief by criminal prosecution to be had; 
 except that under certain conditions, which we will ex- 
 amine in the next section, the owners of trademarks ap- 
 plied to spirituous liquors and wines may be measurably 
 protected by federal prosecution under the internal rev- 
 enue laws. 
 
 § 146. Section 3449, Revised Statutes.— In the last 
 paragraph of section 29 of the act of congress approved 
 July 13, 18G6, and entitled "An act to reduce internal 
 taxation and to amend an act entitled 'An act to provide 
 internal revenue to support the government, to pay in- 
 terest on the public debt, and for other purposes,' ap- 
 proved June 30, 1864" (now section 3449, Revised Stat- 
 utes of tlie United States), it is provided as follows: 
 
 ** Whenever any person ships, transports, or removes 
 any spirituous or fermented liquors or wines, under any 
 other than tlie proper name or brand known to the trade 
 as designating the kind and quality of the contents of 
 the casks or packages containing the same, or causes 
 such act to be done, he shall forfeit said liquors or wines, 
 and casks or packages, and be subject to paj a fine of 
 five hundred dollars." 
 
 This enactment is constitutional, being within the au- 
 thority delegated to congress by the first clause of sec- 
 tion 8 of article 1 of the constitution, being to "levy and 
 collect taxes," and to "make all laws which shall be nec- 
 essary and proper for carrying into execution that pow- 
 er." It is no objection to the validity of the act that 
 its enforcement incidentally protects the owners of trade- 
 marks. As stated by Mr. Justice Nelson in another con- 
 nection: "It will not do to say that the exercise of an 
 admitted power of congress conferred by the constitution 
 is to be withheld, if it appears, or can be shown, that the 
 effect and operation of the law may incidentally extend 
 beyond the limitation of the })0wer. Upon any such in-
 
 344 HOPKINS ON TRADEMARKS. [§ 147 
 
 terpretation the principal object of the framers of the 
 instrument in conferring the power would be sacrificed 
 to the subordinate consequences resulting from its exer- 
 cise."^ It has therefore been held constitutional by 
 Judges Lacombe/ Thayer, Sanborn, CaldwelP and Haw- 
 ley.*^ Under this section the term ''package" includes 
 every box, barrel, or other receptacle into which distilled 
 spirits have been placed for shipment or removal, either 
 in quantity or in separate small packages, as bottles or 
 jugs.^*^ The phrase "proper name or brand" does not 
 refer to the trademark or make of a certain distiller, but 
 to a removal under an improper or misleading title, as 
 where the fraud on the government is attempted of re- 
 moving brandy under the name of whiskey. "^^ 
 
 What will constitute transportation or removal under 
 the terms of this act is not determined, and will prob- 
 ably depend upon the facts in each particular case. The 
 act includes in its purview any person who ships, trans- 
 ports or removes liquors in violation of its provisions.^ - 
 
 This act is capable of protecting to a great extent the 
 owners of trademarks used in the liquor trade. 
 
 § 147. Criminal liability at coimnon law.— The coun- 
 terfeiter of a trademark is not guilty of forgery.^ ^ His 
 offense is comprehended under some division of the vari- 
 ous fraud acts. Probably it will always be found to fall 
 
 6— state of Pennsylvania v. Wines, 76 Fed. Rep. 364-368, 22 C. 
 
 V/heeling & Belmont Bridge Co., C. A. 228. 
 
 59 U. S. 421-433. 11— United States v. 132 Pack- 
 
 7 — United States v. Loeb, 49 ages of Spirituous Liquors and 
 
 Fed. Rep. 636. Wines, 76 Fed. Rep. 364-368, 22 C. 
 
 8— United States v. 132 Pack- C. A. 228. 
 
 ages of Spirituous Liquors and 12 — United States v. Campe, 89 
 
 Wines, 22 C. C. A. 228, 76 Fed. Rep. Fed. Rep. 697-699. 
 
 364; reversing same case, 65 Fed. 13 — White v. Wagar, 185 111. 195- 
 
 Rep. 980. 202. He may be, where the coun- 
 
 9 — United States v. Campe, 89 terfeit mark contains a guaranty. 
 
 Fed. Rep. 697. expressed or implied. White v. 
 
 10— United States v. 132 Pack- Wagar, 83 III. App. 592-596. 
 
 ages of Spirituous Liquors and ,
 
 § 148] THE CRIMINAL PROSECUTION. 345 
 
 within the limits of the acts defining the offense of ob- 
 taining money under false pretenses.^* But under the 
 English decisions it is not a forgery, even where the 
 trademark counterfeited consists of a signature.^ •'• In 
 the United States, however, prosecutions have been very 
 seldom resorted to. The j^rosecutor in actions sounding 
 in false pretenses should, of course, be the customer who 
 has been defrauded, and as a iiile he is little inclined to 
 prosecute. 
 
 § 148. The penal statutes of the several states.— The 
 more imjDortant statutes relating to trademark protection 
 are set out in the api^endix. It will be noticed, upon 
 examining them, that legislation has enlarged it for 
 the protection of labor organizations and of particular 
 industries; thus, states having no general registration 
 act, have provisions for the registration and protection 
 of timber marks, or of the packages, such as bottles, or 
 syphons, used by the manufacturers of carbonated wat- 
 ers, or the milk cans of the daiiy industry. In the stat- 
 utes, which have been reproduced in the apj^ndix, are 
 to be found admirable examples of every form of trade- 
 mark legislation which the necessities of commerce have 
 thus far created. An adequate registration act in each 
 of the states which now has no general statutory provis- 
 ion upon that subject, and greater uniformity of legis- 
 lation between the states, are greatly to be desired. In 
 the annotations of these cases, it will be noticed that 
 there have been comparatively few reported cases of 
 criminal prosecution under them. The heavy burden of 
 proof imposed upon the state in these cases has served 
 as a deterrent to such prosecution. Thus the Illinois 
 court held that proof that two persons, strangers to 
 the defendant, had told him that the mark on the goods 
 
 14— Regina v. Smith, D. & B. 8 Cox, 37; Regina v. Dundas, 6 
 
 566; 8 Cox, 32. Cox. 380; Regina v. Gray, Seb. 
 
 15— Regina v. Closs. D. & B. 183; Regina v. Sutter, 10 Cox, 
 
 460; 7 Cox, 494; Regina v. Smith, 577.
 
 346 HOPKINS ON TRADEMARKS. [§ 148 
 
 lie was selling was counterfeit, was not necessarily suffi- 
 cient to prove his guilty knowledge.^ ^ This difficulty 
 has been remedied in Massachusetts by the enactment of 
 a provision requiring a defendant charged with the sell- 
 ing of goods bearing a spurious mark to show that he 
 bought them innocently. 
 
 It is undoubtedly proper legislation to impose this 
 requirement upon the defendant. In England, proof of 
 fraudulent intent is not required in a prosecution under 
 Merchandise Marks Act of 1887.*^ 
 
 16— Vogt V. People, 59 111. App. 17— Wood v. Burgess, L. R. 24 
 684. Q. B. D. 162.
 
 CHAPTER XII. 
 
 ACTIONS AT LAW. 
 
 §149. The form of action.— "The only redress for a 
 trademark infringement was at first by an action in a 
 common law court for damages for deceit.^ An ac- 
 tion at law for damages is prescri})ed by the act of 1905, 
 as a proper legal remedy for infringements of trade- 
 marks.^ It is against the policy of the law that the 
 owner of a valid trademark should lose by reason of its 
 infringement. To prevent such a result, the action at 
 law is well adapted, because it measures the plaintiff's 
 recovery by the plaintiff's loss. But it is also against 
 the policy of the law that an infringer should gain by 
 reason of his infringement. 
 
 By Sec. 7 of the Act of 1881 the action of trespass on 
 the case was specified as the appropriate action at law 
 for trademark infringement. 
 
 The history of this form of action has been succinctly 
 described by English jurists. Lord Blackburn said: 
 **The original foundation of the whole law is this: that 
 when one knowing that goods are not made by a partic- 
 ular trader sells them as and for the goods of that trad- 
 er, he does that which injures that trader. At first it 
 was put upon the ground that he did so when he sold in- 
 ferior goods as and for the trader's; but it is established 
 (alike at law^ and in equity^ that it is an actionable in- 
 jury to pass off goods known not to be the plaintiff's as 
 and for the plaintiff's, even though not inferior."^ 
 
 1 — Gaynor, J., in Clinton Metal- 4 — Edelsten v. Edelsten, 1 DeG. 
 lie Paint Co. v. New York Metallic J. & S. 185. 
 Paint Co., 50 N. Y. Supp. 437. 5— Singer Mfg. Co. v. Loog, L. 
 
 2— Act of February 20, 1905, § 16. R. 8 A. C. 15-29. 
 
 3— Blofield V. Payne, 4 B. & Ad. 
 410. 347
 
 348 HOPKINS ON TR.VDEMARKS. [§ 149 
 
 The development of the action on the case, and the 
 manner in which it became adapted to the exigencies of 
 trademark issues, are thus admirably stated by Mellish, 
 Li, J.: "In my opinion all actions of this nature must 
 be founded upon false representations. Originally, I 
 apprehend, the right to bring an action in respect of the 
 improper use of a trademark arose out of the common 
 law right to bring an action for a false representation, 
 which, of course, must be a false representation made 
 fraudulently. It differed from an ordinary action for 
 false representation in this respect: that an action for 
 false representation is generally brought by the person 
 to whom the false representation is made; but in the 
 case of the improper use of a trademark, the common 
 law courts noticed that the false representation which is 
 made by putting another man's trademark, or the trade- 
 name of another manufacturer, on the goods which the 
 wrong-doer sells, is calculated to do an injury, not only 
 to the person to whom the false or fraudulent represen- 
 tation is made, but to the manufacturer whose trademark 
 is imitated; and, therefore, the common law courts held 
 that such a manufacturer had a right of action for the 
 improper use of his trademark. Then the common law 
 courts extended that doctrine one step further; first, if I 
 recollect rightly, in the case of Sykes v. Sykes.^ There 
 it was held that although the representation was ^r- 
 fectly true as between the original vendor and the origi- 
 nal purchaser, in this sense, that the original purchaser 
 knew perfectly well who was the real manufacturer of 
 the goods and therefore was not deceived into believing 
 that he had bought goods manufactured by another per- 
 son, yet if the trademark was put on the goods for the 
 purpose of enabling that purchaser, when he came to re- 
 sell the goods, to deceive any one of the public into 
 thinking that he was purchasing the goods of the manu- 
 
 6—3 B. & Cr. 541.
 
 § 150] ACTIONS AT LAW. 349 
 
 facturer to whom the trademark properly belonged, then 
 that was equally a deception, a selling of goods with a 
 false representation, which would give the original user 
 of the trademark a right of action. That was the com- 
 mon law right. "^ 
 
 § 150. The declaration.— The proper parts of a decla- 
 ration in an action at law are, in their order, as follows: 
 
 1. The title of the court. 
 
 2. The title of the teim. 
 
 3. The name. 
 
 4. The commencement. 
 
 5. The statement of the right of action. 
 
 6. The conclusion. 
 
 The correct title of the United States Circuit Court 
 established in the northern district of California is "The 
 Circuit Court of the United States for the Northern Dis- 
 trict of California," and the titles of the various other 
 circuit courts are the same, except as to the name of the 
 district,® to which should be added the name of the divi- 
 sion of the district, where the judicial districts are sub- 
 divided. 
 
 The term in which the declaration should be entitled is 
 the term to which the defendant is summoned.^ It is un- 
 necessary to entitle a declaration in the name of the case 
 in which it is filed; the style of the case may be indorsed 
 upon the back of the declaration as a matter of conven- 
 ience.^^ 
 
 The venue should be laid in the district where the dec- 
 laration is filed, regardless of the district or districts 
 wherein the infringement was committed.^ ^ 
 
 The commencement sets forth the names of the parties 
 and the capacity in which they respectively sue or are 
 sued, if it is other than a natural capacity.^ ^ 
 
 7— Singer Mfg. Co. v. Wilson, L. 10— Walker, Patents (3d ed.), 
 
 R. 2 Ch. D. 434-453. sec. 422. 
 
 8— Revised Statutes, sec. 608. 11— Ibid. 
 
 9— Chitty, Pleading (15th Am. 12— Ibid, 
 ed.), p. 263.
 
 350 HOPKINS ON TRADEMARKS. [§ 150 
 
 xV corporation cannot be or become a citizen of a 
 state/ ^ and therefore an averment of its citizenship is 
 improper. "When a coi'poration is a party the corporate 
 name should be set forth, followed by the averment that 
 the said corporation '*is a corporation created under the 
 
 laws of the state of , and having its principal place 
 
 of business at ."^■^ 
 
 The courts of the United States having a limited jur- 
 isdiction, the jurisdictional facts must be expressly 
 pleaded in the declaration. Diverse citizenship, if it ex- 
 ists, must be shown. If the trademark involved is reg- 
 istered under the act of Feb. 20, 1905, that fact must 
 be pleaded, because, first, it establishes a prima facie 
 right to the use of the mark, and second, confers juris- 
 diction upon the federal court regardless of the amount 
 in controversy.^^ 
 
 If the action is between citizens of the same state, even 
 though involving a registered trademark, the declara- 
 tion must aver that the plaintiff uses the trademark and 
 the defendant the infringing mark upon goods intended 
 for commerce with foreign nations or with the Indian 
 tribes or interstate commerce.^ ^ If the action is based 
 upon a common law trademark, the declaration must set 
 forth the amount in controversy, which is not the amount 
 sought to be recovered, but the value of the trademark, and 
 that value must be not less than two thousand dollars.^'^ 
 
 13— Paul V. Virginia, 8 Wall. Oswald, 65 Fed. Rep. 151; Hennes- 
 
 168; Ducat V. Chicago, 10 Wall. 410. sy v. Herrmann, 89 Fed. Rep. 669; 
 
 14 — Shiras, Equity Practice (2d ReKeasbey & Mattison Co., 160 U. 
 
 ed.), sec. 34. Citing Lafayette Ins. S. 221-227. 
 
 Co. V. French, 18 How. 404; Rail- 16— Luyties v. Hollender (1), 22 
 
 road Co. v. Harris, 12 Wall. 65; Blatchf. 413; Schumacher v. 
 
 Ex parte Schollenberger, 96 U. S. . Schwenke (1), 26 Fed. Rep. 818; 
 
 369; Pennsylvania Co. v. Railroad Ryder v. Holt, 128 U. S. 525; 
 
 Co., 118 U. S. 290; Goodlet v. Rail- Gravely v. Gravely, 42 Fed. Rep. 
 
 road, 122 U. S. 391. 265; Prince's Metallic Paint Co. v. 
 
 15— Act of March 3, 1881, sec. 7; Prince Mfg. Co., 53 Fed. Rep. 493. 
 Act of 1905, §§ 16, 17. Symonds v. 17— Symonds v. Greene, 28 Fed. 
 
 Greene, 28 Fed. Rep. 834; Glotin v. Rep. 834.
 
 § 150J ACTIONS AT LAW. 351 
 
 Fraud is essential to recovery at law. Lord Westburj^ 
 said, ''Proof of fraud on the part of the defendant is of 
 the essence of the action. "^^ Furthennore, at law it is 
 necessary to show, and plead, that an injury has actually 
 been done by the defendant's act of infringement.''-' 
 
 The averment of infringement should set forth, then, 
 in what the infringement consisted, and that it was done 
 wilfully and with fraudulent intent on the part of the 
 defendant. The statement of the right of action should 
 describe the trademark in exact and appropriate terms, 
 and where possible the real and simulated marks should 
 be reproduced in fac-simile. 
 
 The conclusion of the declaration should pray for the 
 actual damage sustained by the plaintiff and for puni- 
 tive damages if tlie facts justify. Some adjudications in 
 the past have held that there can be no recovery of pun- 
 itive damages,-*^ but such a conclusion is at variance with 
 the fundamental principles of the law of torts. The 
 more wholesome and better reasoned doctrine is to the 
 contrary.-^ 
 
 In Sec. 16 the Act of 1905 provides in relation to ac- 
 tions at law for damages for the infringement of a reg- 
 istered mark, that "whenever in any such action a ver- 
 dict is rendered for the plaintiff, the court may enter 
 judgment therein for any sum above the amount found 
 by the verdict as the actual damages, not exceeding three 
 times the amount of such verdict, together with the 
 
 18— Edelsten v. Edelsten, 1 DeG. Scott, N. R. 562; 11 I>. J. C. P. 
 
 J. & S. 185; Hargraves v. Smith, 301; Seb. 72. 
 
 Seb. 338; Lawson v. Bank of Lon- 19— Singer Mfg. Co. v. Loog (3), 
 
 don, 18 C. B. 84; 25 L. J. C. P. L. R. 8 App. Cas. 15-30. 
 
 188; 2 Jur. N. S. 716; 27 L. T. 134; 20 — Taylor v. Carpenter (2), 2 
 
 4 W. R. 481; Seb. 140; Rodgers v. Wood. & M. 1; Cox, 32; 9 L. T. 
 
 Nowill. 6 Hare, 325; 5 C. B. 109; 514; Seb. 83. 
 
 17 L. J. C. P. 52; 11 Jur. 1039; 21 — Warner v. Roehr, Fed. Case 
 
 10 L. T. 88; Seb. 82; Crawshay v. No. 17189 A; Day v. Woodworth, 
 
 Thompson, 4 Man. & G. 357; 5 13 How. 363; Browne, Trademarks 
 
 (2d ed.), sees. 519, 520.
 
 352 HOPKINS ON TRADEiIAUr;:S. [§ 150 
 
 costs." In a declaration based upon the infringement 
 of a mark registered under the act, the conclusion should 
 pray for the actual damages stated to have been sus- 
 tained by the plaintiff, together with such additional 
 amount, not exceeding in all three times the amount of 
 such actual damages, as the court may see fit to adjudge, 
 together with the costs. 
 
 The conclusion ends with the formal allegation of 
 bringing suit. 
 
 It is necessary at common law in drafting the declara- 
 tion to directly allege that the injury has been commit- 
 ted by continuation from one given time to another or 
 that it was committed on divers days and times. Thus, 
 one pleader alleged in his declaration as follows : ' ' Since 
 the 1st day of November, 1888, knowingly, wilfully, and 
 fraudulently offered for sale, and is now selling, glue in 
 packages." Upon the trial, in the federal circuit court 
 for the district of Massachusetts, the complainant was 
 permitted to introduce proof of sales by the defendant 
 of infringing goods between November 1, 1888, and No- 
 vember 30, 1889, amounting to $56,318.24. The circuit 
 court of appeals of the fourth circuit set aside a judg- 
 ment of $8,000, entered upon the verdict of a jury, say- 
 ing, by Putnam, J., ''There is no continiiando with refer- 
 ence to the matter of selling; so that, according to the 
 common law, the plaintiff could j^roperly prove only one 
 actual sale as an independent basis of damages. The de- 
 fendant insisted at all necessar^^ points on the enforce- 
 ment of the rule, and exceptions were carefully taken and 
 allowed; so that this court, however much it may regret 
 it, is compelled to meet this issue. There is no doubt 
 that at common law the position of the defendant would 
 be correct on this point, and the Massachusetts statutes 
 relating to pleading have not changed this rule."22 
 
 22— Le Page Co. v. Russia Cement Co., 2 C. C. A. 555, 51 Fed. 
 Rep. 941-949, 17 L. R. A. 354.
 
 §151] 
 
 ACTIONS AT LAW. 
 
 353 
 
 § 151. Defenses.— The defenses to actions for trade- 
 mark infringement may be divided into two classes. Tlie 
 first class embraces those defenses which attack the plain- 
 tiff's right to sue. It may be that the owner of a trade- 
 mark who sues for infringement has conveyed the right 
 to use the mark to an exclusive licensee for a term of 
 years. In such a case no injunction can issue unless the 
 licensee joins in the action.--^ It may be advisable to set 
 up laches or acquiescence, or that there are facts to jus- 
 tify a plea that whatever rights the complainant once 
 had he has lost by abandonment; which matters have 
 been discussed in a preceding chapter. In an exceptional 
 case the complainant's recover>^ may be precluded by 
 an estoppel,-^ which should, of course, be pleaded. The 
 complainant's mark may have become invalid because 
 its assignment to him from its former owner has not 
 been sufficiently advertised, and the mark as used tends 
 to mislead the public into a belief that the fonner owner 
 is still the producer of the goods.-^ The complainant's 
 label may contain misrepresentations of fact,-*' or his 
 alleged trademark may be a word that, once distinctive, 
 has become puhlici juris.-'' It is a good defense to the 
 action at law to show either of these matters. The fact 
 that the complainant's trademark is registered does not 
 deprive the public of the right to use a similar mark 
 which was common to the trade before the registration. 
 Thus, where "La Normandi" was registered as a mark 
 for cigars, but "La Normanda" was already in com- 
 mon use for a like purpose, injunction to restrain the use 
 of the latter was denied.^^ In fact the registration of a 
 
 23— Wallach v. Wigmore, 87 Fed. N. P. 347; Krauss v. Jos. R. Pee- 
 
 Rep. 469. bles' Sons Co., 58 Fed. Rep. 585. 
 
 24 — Lavergne v. Hooper, Ind. L. 27 — Siegert v, Abbott (4), 25 N. 
 
 R. 8 Mad. 149. Y. Supp. 590; 72 Hun, 243. 
 
 25 — Alaska Packers' Ass'n v, 28 — Stachelberg v. Ponce, 23 Fed. 
 
 Alaska Imp. Co., 60 Fed. Rep. 103; Rep. 430; Price & Steuart, 967; 128 
 
 Siegert v. Abbott (1), 61 Md. 286. U. S. 686. 
 
 26— Piso Co. V. Voight, 4 Ohio 
 23
 
 354 HOPKINS ON TRADEMAEKS. [§151 
 
 trademark does not prevent its being attacked as a 
 word puhlici juris, or as being itself a colorable imita- 
 tion of another trademark.-'^ The English decisions 
 upon this point are in harmony with those of the courts 
 of the United States.^" 
 
 The defendant may plead a license from the owner of 
 the mark. This, of course, presumes that the license 
 was lawful, and that the licensee has not so used the 
 mark as to perjDetrate a fraud upon the public.^^ Where 
 two or more persons have an equal right in the use of 
 the mark the defendant may plead a license from either 
 of them.^^ 
 
 The second class of defenses that may be interposed 
 are those that deny the infringement— either denying 
 that any infringement has been perpetrated by the de- 
 fendant, or, if the infringing mark has been handled or 
 dealt with by the defendant, denying that guilty knowl- 
 edge which the complainant must prove to sustain his 
 suit at law. 
 
 In the foregoing portion of this section we have noted 
 the defenses which, if sustained by the proof, will re- 
 lieve the defendant from liability at law. The action at 
 law is much easier of defense than that in equity, and in 
 another section, after we have considered the action in 
 equity, will be found enumerated a number of defenses 
 
 29 — Moorman v. Hoge, Fed. Case 31 — The goods to which a licen- 
 
 No. 9783, 2 Sawyer, 78; Decker v. see applies the mark must be equal 
 
 Decker, 52 How. Pr. 218; Glen in quality to the goods to which 
 
 Cove Mfg. Co. V. Ludeling, 22 Fed. the licensor applied them. I^aw- 
 
 Rep. 823; Cox, Manual, 695; 23 rence Mfg. Co. v. Tennessee Mfg. 
 
 Blatchf. 46; Schumacher v. Co., 31 Fed. Rep. 776; 138 U. S. 
 
 Schwenke (2), 36 Oif. Gaz. 457. 537; Oldham v. James, 13 Ir. Ch. 
 
 30— Re Palmer, L. R. 21 Ch. D. 393; 14 Ibid. 81; Bloss v. Bloom- 
 
 47; Bodega Co. (Ltd.) v. Owens, er, 23 Barb. 604; Cox, 200; Sam- 
 
 23 L. R. Ir. 371; Wolfe v. Lang, uel v. Berger, 24 Barb. 163; Cox, 
 
 13 Vict. L. R. 752; Wolfe v. Alsop 178; Rodgers v. Philp, 1 Off. Gaz. 
 
 (2), 12 Vict L. R. (E.), 421; Lewis 29; Re Tolle, 2 Off. Gaz. 415. 
 
 V. Klapproth, 11 Vict. L. R. (E.), 32— Marshall v. Pinkham, 52 
 
 214. Wis. 572; Price & Steuart, 497.
 
 § 152] ACTIONS AT LAW. 355 
 
 which have proved ineffective in equity, many of which 
 would doubtless be adequate at law. 
 
 § 152. Damages.— The courts of the United States 
 have signally failed to agi-ee ui)on any fixed rule as to 
 the measure of damages in actions at law for the in- 
 fringement of trademarks. To the student of the decis- 
 ions the only apparent cause for this fact lies in two 
 practical reasons. The first, that the remedy offered by 
 equity is more complete. The second is that much of the 
 trademark piracy, of this countr}'- at least, is conducted 
 by insolvents, who offer no inducement to the vigilant 
 prosecution which should be visited upon them. In 1846, 
 in the United States circuit court for the district of 
 Massachusetts, AVoodbury, J., said: *'In a case like 
 this (an action of trespass on the case for trademark in- 
 fringement), if in any, no reason exists for giving 
 greater damages than have actually been sustained, or 
 what have been called compensatory. There is nothing 
 peculiarly atrocious in the conduct of the defendant to 
 be punished by damages, and in no other way, as a pub- 
 lice example, considering the blamable usages which ex- 
 ist on this subject. "^^ In a Missouri case, the St. Louis 
 court of appeals, by Lewis, P. J., held that it was error 
 in the trial court to instruct the jury that they might 
 find exemplary damages if from the evidence they be- 
 lieved that the acts of the defendant were wilful or ma- 
 licious. The reasoning of the court is that *'If the plain- 
 tiffs had demanded an accounting of the profits made by 
 the defendants, on the equitable ground that those profits 
 were made by the use of the plaintiff's property, the in- 
 structions might have been substantially applicable."'* 
 
 33 — Taylor v. Carpenter (2), 2 had been directed that they might 
 
 Wood. & M. 1; Cox, 32; Fed. Case find punitive damages. The verdict 
 
 No. 13785. The passage quoted is was not disturbed. 
 
 a mere dictum, uttered in the 34 — Addington v. Cullinane, 28 
 
 course of an opinion upon a mo- Mo. App. 238-241. 
 tion for a new trial where a jury
 
 356 HOPKINS ON TRADEMARKS. [§152 
 
 An emineDt text-writer thus states the rule: "The 
 jury are to give actual damages which the plaintiff has 
 sustained— not vindictive or speculative damages, but 
 such as his proof has shown to their satisfaction he has 
 actually sustained by the infringement."^^ 
 
 To the author's mind the better rule is announced in 
 the case of Warner v. Roehr, in which the instructions of 
 Judge Blodgett to a jury said in part: ''In cases of this 
 character, where you are satisfied from the proof and 
 from the admissions in the case tliat the fraud— the in- 
 tention to defraud— is at the bottom of the matter, . . 
 . the juiy are not confined to the exact monetary dam- 
 ages, but may give what are known as vindictive or ex- 
 emplaiy damages, for the purpose of deterring others 
 from embarking in the same scheme of fraud and decep- 
 tion. "^^ It is not to be doubted that this doctrine is 
 more reasonable and just, and better adapted to protect 
 society from the ravages of trademark infringers, than 
 the rule stated in Taylor v. Carpenter^'^ and Addington 
 V. Cidlinane.^^ It is difficult to see how the result stated 
 in those cases has been attained. They are wholly with- 
 out precedent and opposed to the rule of damages which 
 obtained at common law. What that rule was, and is, 
 so far as our federal courts are concerned, is nowhere 
 more clearly stated than by Mr. Justice Grier in an opin- 
 ion in which he speaks for the federal supreme court. 
 He says: 
 
 ''It is a well-established principle of the common law 
 that in actions of trespass and all actions on the case for 
 torts a jury may inflict what are called exemplary, puni- 
 tive or vindictive damages upon a defendant, having in 
 view the enormity of his offense rather than the mea- 
 
 35— Sutherland, Damages, (2d 36— Warner v. Roehr, Fed. Case 
 
 ed.), vol. Ill, sec. 1202. Citing No. 17189A. 
 
 Ransom v. Mayor, 1 Fisher, 252; 37 — Supra. 
 
 Parker v. Hulme, 1 Fisher, 44; Ad- 38 — Supra. 
 dington v. Cullinane, 28 Mo. App. 
 238.
 
 § 152] ACTIONS AT LAW. 357 
 
 sure of compensation to the plaintiff. We are aware 
 that the propriety of this doctrine has been questioned 
 by some writers; but if repeated judicial decisions for 
 more than a century are to be received as the best ex- 
 position of what the law is, the question will not admit 
 of argument. By the common as well as by statute law 
 men are often punished for aggravated misconduct or 
 lawless acts by means of a civil action, and the damages, 
 inflicted by way of penalty or punishment, given to the 
 -party injured. In many civil actions, such as libel, slan- 
 der, seduction, etc., the wrong done to the i)laiutiff is in- 
 capable of being measured by a money standard; and the 
 damages assessed depend on the circumstances, showing 
 the degree of moral turjDitude or atrocit}^ of the defend- 
 ant's conduct, and may properly be termed exemplary 
 or vindictive rather than compensatory. 
 
 ''In actions of trespass where the injury has been wan- 
 ton and malicious, or gross and outrageous, courts per- 
 mit juries to add to the measured comjiensation of the 
 plaintiff which he would have been entitled to recover, 
 had the injuiy been inflicted without design or intention, 
 something further by way of punishment or example, 
 which has sometimes been called 'smart money,' This 
 has always been left to the discretion of the jury, as the 
 degree of punishment to be thus inflicted must depend 
 on the peculiar circumstances of each case."^^ 
 
 Judge Thayer has said: "Punitive damages may be 
 awarded when a wrongful act is done wilfully, in a wan- 
 ton or oppressive manner, or even when it is done reck- 
 lessly—that is to say, in open disregard of one's civil 
 obligations and of the rights of others,"**^ 
 
 We find the rule sanctioned and reaffinned repeatedly 
 by the supreme court of the United States.*^ It has 
 
 39 — Day v. Woodworth, 54 U. S. 40 — Fotheringham v. Express 
 
 (13 Howard), 363, 371. See Press Co., 36 Fed. Rep. 252, 253. 
 
 Pub. Co. V. Monroe, 73 Fed. Rep. 41— Philadelphia R. R. Co. t. 
 
 196. 201, Quigley. G2 U. S. (21 Howard),
 
 358 HOPKINS ON TRADEMARKS. [§ 152 
 
 been the doctrine adhered to by that court ever since 
 Mr. Justice Story in a case of marine tort spoke of ex- 
 emplary damages as *'the proper punishment which be- 
 longs to such lawless misconduct. "^^ It is manifest that 
 in a case of deliberate counterfeiting of a trademark 
 there should be a recovery of punitive damages, or at 
 least an oi^portunity given the jury to assess punitive 
 damages. 
 
 As to the award of actual damages at law, it has been 
 held that nominal damages will be awarded where a 
 fiTidulent intent is shown, even though no specific injury 
 is pleaded or proven.^^ The St. Louis court of appeals 
 has said, by Bakewell, J., in an action of deceit based 
 upon trademark infringement: ''As to the damages, the 
 facts present a case of fraud on plaintiff and violation of 
 his rights for which the action lies without proof of spe- 
 cific damages. And the damage was not confined to the 
 loss of such actual sales as could be specifically shown 
 to be lost, but the jury might make such inferences as 
 to the loss and injury sustained by plaintiff as they 
 might think warranted by the whole evidence in the 
 case."^* Much to the same effect is the holding of the 
 Massachusetts supreme court.'*^ 
 
 In California the rule of assessing damages would 
 seem to give the plaintiff the profits made by the defend- 
 
 213; Milwaukee R. R. Co. v. Arms, Rep. 941, 949; Taylor v. Carpenter, 
 
 91 U. S. 487, 492; Missouri Pacific 11 Paige, 292; 2 Sandf. 603; Cof- 
 
 Railway v. Humes, 115 U. S. 512, feen v. Brunton, 4 McLean, 516, 
 
 521; Barry v. Edmunds, 116 U. S. 520; Fed Case No. 2946; Blofield v. 
 
 550, 562; Denver Railway V. Harris, Payne, 4 Barn. & Ad. 410, 411; 
 
 122 U. S. 597, 609. Exemplary dam- Marsh v. Billings, 7 Cushing, 322. 
 
 ages may be allowed even where 331; Conrad v. Brewing Co., 8 Mo. 
 
 no actual damage is proven. Press App. 277, 285; El Modello Cigar 
 
 Publishing Co. v. Monroe, 73 Fed. Co. v. Gato, 25 Fla. 886, 915; 9 So. 
 
 Rep. 196, 201. Rep. 23. 
 
 42 — The Amiable Nancy, 16 U. 44 — Conrad v. Brewing Co., 8 
 
 S. (3 Wheat.) 546, 558. Mo. App. 277, 285. 
 
 43 — Le Page Co. v. Russia Ce- 45 — Marsh v. Billings, 7 Cushing, 
 
 ment Co., 2 C. C. A. 555, 51 Fed. 322, 332.
 
 § 152j ACTIONS AT LAW. 359 
 
 ant in his sales of goods bearing the infringing mark.*® 
 But it is very doubtful if that course is proijer in an 
 action at law. Damages were the appropriate, and in- 
 deed the only, remedy at law, while the account of prof- 
 its was peculiar to courts of equity.*^ 
 
 Under the English practice a custom has grown up 
 by which a complainant in equity may pray for an ac- 
 count of profits and an inquiry as to damages (and it has 
 been held in Wisconsin that this is the proper course in 
 pleading),"*" but before any order for discovery can be 
 made he must elect between the accounting of profits and 
 the inquiry of damages. He cannot have both.'*'' As said 
 by Cotton, L. J., in the English court of appeal, in re- 
 fusing discovery asked by a complainant before be had 
 elected between profits and damages : " At the time when 
 the order was made, the plaintiff had not elected to 
 waive his account of profits. Would it then l>e right to 
 allow the plaintiff to get a jury to determine what dam- 
 ages he was entitled to before he had made his election 
 between damages and profits? Should the jury award 
 him a large sum for damages, he would probably accept 
 it ; but if they gave him a small sum only, then he might 
 say *No, I would rather have an account of profits, as 
 I see by the defendant's books that he has made a much 
 larger sum.' "°^ 
 
 It would seem that the damages at law must be based 
 upon the injuiy sustained by the complainant by loss of 
 sales and injury to the reputation of his trademark. Evi- 
 dence of the extent of the defendant's sales may be 
 proper,^^ but only as proof of injury to the complainant, 
 
 46 — Graham v. Plate, 40 Cal. 49— Neilson v. Betts, L. R. 5 H. 
 
 593. 598. L. R. 1. 
 
 47 — Sebastian, Trademarks (4th 50 — Fennessy v. Clark, L. R. 37 
 
 ed.). p. 232. Ch. D. 184, 187. 
 
 48— Leidersdorf v. Flint (2), 50 51— Le Page Co. v. Russia Ce- 
 
 Wis. 401. ment Co., 2 C. C. A. 555; 51 Fed. 
 
 Rep. 941, 949: 17 L. R. A. 354.
 
 360 HOPKINS ON TRADEMARKS. [§ 152 
 
 and not with a view to measuring the plaintiff's dam- 
 ages by the defendant's profits. 
 
 Of course the fact that the defendant has discontin- 
 ued his infringement is no defense to an action of dam- 
 ages,^- which would be barred only by the operation 
 of the statute of limitations. It is comj^etent to show 
 that plaintiff's sales have fallen off because of the in- 
 fringement.^^ 
 
 A Canadian decision held that damages could not be 
 recovered for the sale of a second-hand stove to which 
 a second manufacturer's name-jDlate had been added, 
 where the plate was put on by an employee without the 
 employer's knowledge and the purchaser was informed 
 of the real manufacture of the stove.^^ 
 
 52 — Lemoine v. Gauton, 2 E. D. defendant's infringement. Whether 
 
 Smith, 343; Ck)x, 142; Seb. 125. the latter is the cause of the for- 
 
 53 — Shaw V. Pilling, 175 Pa. St. mer is a question for the jury. 
 
 78, 84. It is competent to show Ibid. 
 
 that a diminution of plaintiff's 54 — Chapleau v. Laporte, 16 
 
 sales occurred concurrently with Rap. Jud. Que. C. S. 189.
 
 CHAPTER XIII. 
 
 THE ACTION IN EQUITY. 
 
 § 153. The basis of equitable jurisdiction.— Lord West- 
 bury said: " Imijositiou on the public occasioned by one 
 man selling his goods as the goods of another cannot 
 be the ground of private action or suit. In the language 
 of Lord Thurlow in Webster v. Webster,^ 'The 
 fraud upon the public is no ground for the plaintiff 
 coming into court.' It is, indeed, true, that, unless the 
 mark used by the defendant be applied by him to the 
 same kind of goods as the goods of the plaintiff, and 
 be in itself such that it may be and is mistaken in the 
 market for the trademark of the plaintiff, the court can- 
 not interfere, because there is no invasion of the plain- 
 tiff's right; and thus the mistake of the buyers in the 
 market, under whicli they, in fact, take the defendant's 
 goods as the goods of the plaintiff, that is to say, im- 
 position on the public, becomes the test of the property 
 in the trademark having been invaded, and not the 
 ground on which the court rests its jurisdiction. "^ 
 
 In quoting the extract given above, Vice Chancellor 
 Van Vleet has said: "The rule as thus stated I under- 
 stand to be the established doctrine now in force on this 
 subject both in this country and in England."^ 
 
 In the early English practice the chancellor had power 
 to refuse or postpone the application of equitable reme- 
 
 1—3 Swanst. 490. Ky. 73, 91; Liggett & Myers Tobac- 
 
 2 — Leather Cloth Co. v. Ameri- co Co. v. Sam Reid Tobacco Co., 
 
 can Leather Cloth Co., 4 DeG. J. 104 Mo. 53, 60; McLean v. Fleming, 
 
 & S. 137, 141. 96 U. S. 245. 251; Shaver v. Shaver. 
 
 3 — Schneider v. Williams, 44 N. 54 Iowa, 208, 209; Barrows v. 
 
 J. Eq. 391, 393. To the same ef- Knight. 6 R. I. 434, 438; Handy v. 
 
 feet see Weener v. Brayton, 152 Commander, 49 La. Ann. 1119. 
 
 Mass. 101, 103 ; Avery v. Meikle, 81 
 
 361
 
 362 HOPKINS ON TRADEMARKS. [§ 153 
 
 dies in trademark cases until the title to the trademark 
 had been determined in a court of law. This practice 
 continued until November 1, 1862, when the "Chancery 
 Regulation Act, 1862,"^ went into effect. The first sec- 
 tion of that act provides that '*In all cases in which any 
 relief or remedy within the jurisdiction of the said 
 courts of chancery respectively is or shall be sought in 
 any cause or matter instituted or pending in either of 
 said courts, and whether the title to such relief or rem- 
 edy be or be not incident to or dependent upon a legal 
 right, every question of law or fact, cognizable in a court 
 of common law, on the determination of which the title 
 to such relief or remedy depends, shall be determined 
 by or before the same court." 
 
 It is important to bear this enactment in mind in ex- 
 amining the earlier English trademark cases, as it ex- 
 plains the many failures of equity to act, or the defer- 
 ring of relief by injunction until the determination of the 
 right to the use of the trademark by trial at law. 
 
 Equity first extended its beneficent protection to the 
 owners of trademarks because of the inadequacy of the 
 remedy at law. This inadequacy arose from the absence 
 of the power in courts of law to act in personam— the 
 injunctive power. But there were other reasons why 
 cognizance of trademark causes belonged peculiarly to 
 equity. Prominent among these was the power of the 
 chancellor in granting discovery— the right to discovery 
 being, as Mr. Bispham says, one of the peculiar advan- 
 tages of a complainant in equity, enjoyed by him in 
 every case in which he was entitled to come into chan- 
 cery, either for the purpose of asserting an equitable title, 
 or setting up an equitable right or applying an equit- 
 able remedy;'' though the right was always conditioned 
 by the necessary restriction that the person brought in 
 
 4—25 and 26 Victoria, c. 42, p. 5— Bispham, Equity (4th ed.), 
 154. p. 600, sec. 557.
 
 § 153] THE ACTION IN EQUITY. 363 
 
 on discovery need not disclose matters tending to in- 
 criminate him or expose him to penalty or forfeiture. 
 And there was yet another reason why this litigation 
 found its way to the chancellor. One of the most ancient 
 forms of action at the common law was the action of ac- 
 count. "But," in the words of Mr. Justice Story, *'the 
 modes of proceeding in that action, although aided from 
 time to time by statutable provisions, were found so 
 very dilatory, inconvenient and unsatisfactoiy, that as 
 soon as courts of equity began to assume jurisdiction 
 in matters of account, as they did at a very early per- 
 iod, the remedy at law began to decline; and although 
 some efforts have been made in modern times to resusci- 
 tate it, it has in England fallen into almost total dis- 
 use."^ So, when it became apparent that an account of 
 profits must be sought as, at least, the basis of a proper 
 money judgment against an infringer, the parties liti- 
 gant were forced to enter the domain of equity. But, 
 above all, there was that power in equity described by 
 Blackstone as the power **to detect latent frauds and 
 concealments, which the process of the courts of law is 
 not adapted to reach. "^ While not exclusive of the 
 courts of law, the courts of equity had original, inde- 
 pendent and inherent jurisdiction to relieve against ev- 
 ery species of fraud.^ 
 
 The remedy sought governs largely the question of 
 jurisdiction in equity. If a mere accounting is sought 
 for, it is insuflficient to vest such jurisdiction, for the 
 account must be incidental to some other equitable re- 
 lief.^ Jurisdiction in equity will not attach for discov- 
 ery simply, except in aid of a suit at law; the party ap- 
 
 6 — story, Equity Jurisprudence 8 — Kerr, Fraud and Mistake 
 
 (13th ed.), sec. 442. (Bump's ed.), p. 43. 
 
 7 — 1 Blackstone, Commentaries, 9 — Root v. Railway Co. 105 U. 
 
 92. S. 189.
 
 364 HOPKINS ON TRADEMARKS. [§ 154 
 
 plying must invoke some other distinct equitable 
 ground.^ ° 
 
 § 154. The bill in equity.— The bill for an infringe- 
 ment of a trademark or unfair competition properly con- 
 sists of six parts: 
 
 1. The title of the court. 
 
 2. The introduction. 
 
 3. The statement. 
 
 4. The prayer for relief. 
 
 5. The interrogating part. 
 
 6. The prayer for process. 
 
 By the twenty-first federal equity rule, the plaintiff is 
 given liberty to omit, at his option, the jurisdiction 
 clause (i. e., that the acts complained of are contrary to 
 equity, and that the complainant is without any remedy 
 at law), the charging part of the bill, setting forth the 
 matters or excuses which the defendant is supposed to 
 intend to set up by way of defeuse to the bill, and the 
 common confederacy clause. The title of the court is 
 given substantially as indicated in the preceding sec- 
 tion on declarations at law, and rule 20 of the federal 
 equity rules prescribes the form of the introductory part, 
 which is a formal address to the judges of the court in 
 which the bill is filed, together with the names and aver- 
 ments of the citizenship of the parties. 
 
 The stating part of the bill should show: (1) The 
 ownership of the trademark, describing it and the mode 
 of its application to merchandise. (2) The registration 
 of that trademark under the act (if registered), and the 
 value of the trademark. (3) The facts in relation to the 
 infringement of the trademark by the respondent. -This 
 part of the bill differs from the corresponding part of 
 the declaration at law in this, that it need not be averred 
 that the defendant had guilty knowledge,^ ^ although that 
 
 10— Lord V. Whitehead & Ather- 11— McLean v. Fleming, 96 U. S. 
 ton Machine Co., 24 Fed. Rep. 801. 245.
 
 § 154] THE ACTION IX EQUITY. 365 
 
 fact should be averred where it is true. ^Vhere profits 
 are sought to be recovered there should be a direct aver- 
 ment that such profits have been realized by the defend- 
 ant on account of the infringement. 
 
 In every case where the value of the complainant's 
 trademark is over two thousand dollars, that fact slioukl 
 be pleaded,' 2 as a jurisdictional safeguard, indei)eudent 
 of the fact of registration under the act of congress. A 
 matter of i)aramount importance where the parties are 
 citizens of the same state is an averment that the com- 
 plainant uses his trademark in interstate commerce 
 or commerce with foreign nations or with the Indian 
 tribes,'^ and under the act of 1881 it had to be averred 
 and proven in such a case that the defendant had used 
 the infringement in commerce with foreign nations or 
 with the Indian tribes.'^ Where the parties are of di- 
 verse citizenship no such averment is necessary.^ ^ What- 
 ever allegations are essential must be made positively 
 and not on information and belief.^^ 
 
 The prayer for relief should be both special and gen- 
 eralj under the directions given in the twenty-first fed- 
 eral equity rule. The special i^ortion of the i)rayer 
 should ask for a preliminary injunction (if it is desired), 
 a perpetual injunction, for an account of the defend- 
 ant's profits, and for an assessment of the damages sus- 
 tained by the complainant by reason of the injuries he 
 has sustained through the loss of reputation of his 
 
 12 — Glen Cove Mfg. Co. v. Lude- Rep. 818; Schumacher v. Schwenke 
 
 ling, 22 Fed. Rep. 823. A bill is (2), 36 Off. Gaz. 457; Gravely v. 
 
 sufficient in this regard which re- Gravely, 42 Fed. Rep. 265. 
 
 cites that "the amount in contro- 14 — Gravely v. Gravely, 42 Fed. 
 
 versy exceeds the sum of $2000." Rep. 265; 52 Off. Gaz. 1538; War- 
 
 Griggs, Cooper & Co. v. Erie Pre- ner v. Searle & Hereth Co., 191 U. 
 
 serving Co., 131 Fed. Rep. 359, 360. S. 195. 
 
 13 — Ryder v. Holt, 128 U. S. 525; 15 — Hennessy v. Braunschweiger 
 
 Luyties v. Hollender (1), 21 Fed. & Co., 89 Fed. Rep. 669. 
 
 Rep. 281, 22 Blatchf. 413; Schu- 16— Gaines & Co. v. Sroufe, 117 
 
 macher v. Schwenke (1), 26 Fed. Fed. Rep. 965.
 
 366 
 
 HOPKINS ON TRADEMARKS. 
 
 §154 
 
 trademark or otherwise. A bill is not demurrable on the 
 ground that it prays for damages in addition to profits, 
 because both can be recovered where fraudulent intent 
 is established.^' But punitive or exemplary damages 
 should not be prayed for, as they cannot be assessed in 
 equity.i« . Where the bill charges the infringement of a 
 registered mark the prayer should ask for an increase 
 of the actual damages found, as provided in § 19 of the 
 act of 1905. 
 
 The prayer for general relief should be in the form 
 usual in equity pleading.^ ^ 
 
 17— El Modello Cigar Co. v. Gato, 
 25 Fla. 886, 915; 7 So. Rep. 23; 
 Benkert v. Feder, 34 Fed. Rep. 534. 
 
 18 — Hennessy v. Wilmerding- 
 Loewe Co., 103 Fed. Rep. 90. 
 
 19 — A bill to enjoin unfair com- 
 petition must expressly charge that 
 the defendant has attempted or in- 
 tended to practice fraud upon the 
 public. Lamont v. Leedy, 88 Fed. 
 Rep. 72, 74. But this rule is hardly 
 broad enough. The better doctrine 
 would seem to be that the bill need 
 only charge that the defendant's 
 merchandise is calculated to de- 
 ceive the public. Judge Lacombe, 
 referring to the practice of the 
 federal courts in cases of unfair 
 trade, has said: "Nor do these 
 courts require specific proof of 
 purchases by individuals actually 
 deceived, when the labels them- 
 selves show an attempt at decep- 
 tion which appears to be well cal- 
 culated to deceive." Collinsplatt 
 v. Finlayson, 88 Fed. Rep. 693. And 
 the same learned court indicates 
 the same rule in Burnett v. Hahn, 
 88 Fed. Rep. 694. 
 
 A bill to enjoin the manufactur- 
 er or vendor of spurious labels 
 must contain an express charge 
 
 that the defendant is actually en- 
 gaged in assisting third persons 
 to palm off their goods upon the 
 public as the goods of the com- 
 plainant, or a substantially equiva- 
 lent averment. De Kuyper v. Wit- 
 teman, 23 Fed. Rep. 871; Hen- 
 nessy v. Herrmann, 89 Fed. Rep. 
 669. 
 
 A bill to enjoin the infringe- 
 ment of a technical trademark 
 must set up facts showing an ex- 
 clusive right to the use of the 
 mark in the plaintiff. He "must 
 recover upon the strength of his 
 own title, and not upon the weak- 
 ness of the defendant's." Brown, 
 J., in O'Rourke v. Central City 
 Soap Co., 26 Fed. Rep. 576-579. 
 
 Improper joinder of causes of 
 action. — A bill is multifarious that 
 joins with a charge of unfair com- 
 petition by the use of a trade- 
 name a claim for damages under 
 the Sherman anti-trust act of July 
 2, 1890. Block V. Standard Dis- 
 tilling & Distributing Co., 95 Fed. 
 Rep. 978. 
 
 A bill is multifarious that joins 
 with a charge of unfair competi- 
 tion (by passing off the defend- 
 ant's goods in unmarked packages
 
 § 154] THE ACTION IN EQUITY. 367 
 
 The form to be used in the interrogating part of the 
 bill is prescribed by. the forty-third federal e(iuity rule. 
 Kule 41 provides that the interrogatories be separated 
 and numbered consecutively, and the interrogatories 
 which each defendant is required to answer must be 
 specified in a note at the foot of the bill. And that rule 
 further provides that where the complainant in his bill 
 waives an answer under oath, or only requires an answer 
 under oath with regard to certain specified interrogato- 
 ries, the answer of the defendant, though under oath, ex- 
 cept such part therof as shall be directly responsive to 
 such interrogatories, shall not be evidence in his favor 
 unless the cause be set down for hearing on bill and an- 
 swer only. 
 
 The twenty-third federal equity rule provides that the 
 prayer for process of subpoena shall contain the names 
 of the defendants named in the introductory part of the 
 bill, and if any of them are known to be infants under 
 age, or otherwise under guardianship, shall state the 
 fact so that the court may take order thereon, as justice 
 may require, upon the return of the process. 
 
 The bill must contain the signature of counsel, as pro- 
 vided in the twenty-fourth federal equity rule. 
 
 Unless a preliminary injunction is prayed for the bill 
 need not be verified.^*^ 
 
 These suggestions for the most part relate to bills in 
 the federal circuit courts. The decisions of those courts 
 are so harmonious that the great bulk of the trademark 
 litigation is before them. As to the state courts, refer- 
 ence must necessarily be had to the local forms of action 
 (or absence of such forms) created by legislative en- 
 actment 
 
 as and for plaintiff's goods) a 20 — Hughes v. Northern Pacific 
 
 charge of patent infringement. Ball Ry. Co., 18 Fed. Rep. 106, 110; 
 
 & Socket Fastener Co. v. Cohn, 90 Black v. Allen, 42 Fed. Rep. 618, 
 
 Fed. Rep. 664. 623.
 
 368 ' HOPKINS ON TRADEMARKS. [§ 155 
 
 Where affirmative relief is sought by a defendant, it 
 should be prayed for in a cross-bill.-^ 
 
 § 155. The defenses in equity.— All defenses good in 
 the action at law are good in the action in equity except 
 that of the innocence of the defendant of wrongful in- 
 tent. In a case where both parties have the right to use 
 the trademark, the defendant will be enjoined from using 
 the words "the only genuine" in connection with the 
 trademark.-^ The jolaintiff must, of course, be actually 
 entitled to use the trademark having applied it com- 
 mercially. Thus Sir James Clark's application to re- 
 strain one Freeman from advertising or selling pills 
 under the name of "Sir J. Clark's Consumption Pills" 
 was denied because the x)laintiff was not engaged in the 
 sale of i^ills.-^ The plaintiff may not be entitled to re- 
 cover because of his not having an exclusive right to the 
 mark; or because he has, without authority, used the 
 words "patent" or "patented" in connection with or 
 as a part of what he claims as his trademark. Or he 
 may have made fraudulent representations in connection 
 with his trademark which will prevent his recovering 
 the relief sought for. A single act done at the sugges- 
 
 21 — Corbin v. E. Taussig & Co., decided in favor of the plaintiff 
 132 Fed. Rep. 662; Hygienic on the ground that he had a prop- 
 Fleeced Underwear Co. v. Way, 133 erty in his own name," i. e., a 
 Fed. Rep. 245. right of privacy, which involves a 
 
 22 — James v. James, L. R. 13 Eq. discussion which it v/ould be aside 
 
 Cas. 421; Cocks v. Chandler, L. R. from our purpose to enter upon 
 
 11 Eq. Cas. 446. here. Lord Chancellor Selborne 
 
 23 — Clark v. Freeman, 11 Beav. has criticised Clark v. Freeman 
 
 112. This decision is criticised in from another standpoint, saying: 
 
 Maxwell v. Hogg, L. R. 2 Ch. App. "That case has been seldom cited 
 
 307; but it is manifestly correct but to be disapproved. Could not 
 
 in principle, considered as a trade- a professional man be injured in 
 
 name case. Lord Justice Cairns his profession by having his name 
 
 says (L. R. 2 Ch. App. 310): "It associated with a quack medicine?" 
 
 has always appeared to me that Re Riviere's Trademark, L. R. 26 
 
 Clark V. Freeman might have been Ch. D. 53.
 
 § 155] THE ACTION IN EQUITY. 369 
 
 tion of the plaintiff's agent will not be treated as an in- 
 fringement.-^ 
 
 It often happens that the defendant may plead by way 
 of mitigation of damages or so as to avoid his liability 
 for an acounting or for costs.-^ Thus, in an English 
 case, the defendants jjurcliased five hundred cigarettes, 
 worth only 17s. Gd., and which bore a mark which was 
 an infringement of the plaintiff's. The court granted 
 the -application for injunction, but refused to order the 
 defendants to pay costs, saying by Sterling, J.: '*! con- 
 fess I think this is not a sort of action that ought to 
 be encouraged. If joersons find a trademark is being 
 pirated, surely it is not the small retailers who ought 
 to be punished. ... I cannot think that it is the 
 duty of the court in every case in which a small dealer 
 who has innocently happened to purchase a small quan- 
 tity of the spurious goods, to fix him with the costs of an 
 action. "2^ A defendant who was printing labels for 
 a third party did not know that the labels bore counter- 
 feits of plaintiff's trademarks. On being notified of the 
 fact of infringement, defendant offered to surrender the 
 lithograph stone and promised to desist from further 
 printing the counterfeit labels. The court adopted the 
 same course as that taken by the English court in the 
 last named case— granted an injunction but at com- 
 plainant's costs.-'^ This case shows that it is not wise 
 to notify a defendant before suing. It has been ex- 
 pressly and repeatedly held that the defendant is not 
 entitled to notice,"^ and it is related by Chitty, J., that 
 
 24— Hennessy v. Kennett, Seb. Guest, 9 R. P. C. 218; L. R. (1892) 
 
 556; Gorham Mfg. Co. v. Emery- 1 Ch. D. 630; 61 L. J. Ch. 242; 66 
 
 Bird-Thayer Co., 92 Fed. Rep. 774; L. T. 257; 40 W. R. 364; CartmeU, 
 
 Hostetter Co. v. Brunn, 107 Fed. 45. 
 Rep. 707. 27 — Bass v. Guggenheimer, 69 
 
 25— Guilhon v. Lindo, 9 Bos. 605; Fed. Rep. 271. 
 Cox' American Trademark Cases, 28 — Upmann v. Forester, L. R. 
 
 295. 24 Ch. D. 231; 52 L. J. Ch. 945; 
 
 26— American Tobacco Co. v. 49 L. T. 122; 32 W. R. 28. 
 24
 
 370 HOPKINS ON TRADEMARKS. [§ 155 
 
 when that very learned jurist, the late Sir G. Jessel, 
 master of the rolls, was at the bar, it was his custom to 
 advise his clients in trademark actions not to give any 
 notice but to move at once.-° 
 
 These suggestions are given here to call the attention 
 of the practitioner whose duty is to defend the alleged 
 infringer to the very serious question of avoiding costs. 
 
 It may be possible to defend successfully on the ground 
 that, although the plaintiff has applied his trademark in 
 commerce, he has not applied it to the same character or 
 class of merchandise as that to which the defendant is 
 applying it. We have touched upon this question be- 
 fore, but a more extended consideration of it may be ad- 
 visable. To answer the question of whether the defend- 
 ant's use of the complainant's trademark is such an un- 
 lawful use that it should be restrained, ''the extent of 
 the owner's property in a trademark, and the character 
 of the act which is held to injuriously affect his prop- 
 erty rights, and to call for the interposition of a court 
 of equity, must be ascertained. . . . The deceit of 
 the public and the subsequent injury to it are as much 
 to be regarded by a court of equity as an injury to a 
 plaintiff's business. It therefore follows that the right 
 of an owner of a trademark is not a right to its ex- 
 clusive use everywhere and under all circumstances."^^ 
 Thus, an iron manufacturer using a lion's head as his 
 trademark cannot enjoin a linen manufacturer from 
 using a lion's head as his mark.^i It was held that 
 ''Fruit Salt" as a trademark for an effervescing drink, 
 a registered mark, might be interfered with by the 
 words "Fruit Salt" designating a baking powder. In 
 this case it was shown that the "Fruit Salt" used in 
 ■producing the effervescing drink had been used as a 
 
 29— Upmann v. Forester, L. R. Mfg. Co. v. Read, 47 Fed. Rep. 712- 
 24 Ch. D. 231-235. 714. 
 
 30 — Shipman, J., in Celluloid 31— Ainsworth v. Walmsley, 35 
 
 L. J. Ch. 352.
 
 § 155] THE ACTION IN EQUITY. 371 
 
 baking powder, in exceptional cases ; but the court re- 
 marked that if it were proposed to so employ the words 
 ''Fiiiit Salt" that **no reasonable person could sup- 
 pose that they had reference to the appellant's i>reijara- 
 tion, such a use would be perfectly unobjectionable. For 
 example, I cannot conceive any one imagining that a 
 ''Fioiit Salt Umbrella" was in any way connected with 
 the article manufactured by Mr. Eno (the effervescing 
 drink). "^- So it has been held in this country that the 
 word ''Celluloid" is a valid trademark as applied to 
 articles actually composed of celluloid,^^ but that the use 
 of tlie word "Celluloid" to designate a starch is not an 
 infringement, because celluloid had never been used in 
 making starch and there was no testimony to show that 
 the plaintiff had intended ever to use it in making 
 starch. There was expert testimony to the effect that 
 it was highly probable that a method might be devised 
 by which celluloid could be converted into a starch-like 
 body fit for use as a substitute for starch, but the court 
 held this statement of probabilities "too indefinite to 
 be the foundation of an injunction."^* The whole ques- 
 tion depends upon how closely related are the classes 
 of goods to which the complainant and respondent apply 
 the mark.^^ 
 
 The other defenses, beside those thus far indicated, 
 such as license from the owner or his co-proprietor in 
 the mark, delay, acquiescence or abandonment, have been 
 treated in connection with the defenses at law. But it 
 is proper to note here that where the complainant has 
 
 32 — Lord Herschell in Eno v. How. Pr. 297; Carroll v. Ertheiler, 
 
 Dunn, U R. 15 App. Cas. 252, 260. 1 Fed. Rep. 688; Hecht v. Porter, 
 
 33— Celluloid Mfg. Co. v. Cel- 9 Pac. C. L. J. 569; Osgood v. 
 
 lonite Mfg. Co., 32 Fed. Rep. 94. Rockwood, Fed. Case No. 10605. 11 
 
 34— Celluloid Mfg. Co. v. Read, Blatch. 310: Smith v. Reynolds, 
 
 47 Fed. Rep. 712, 716. Fed. Case No. 13098, 10 Blatchf. 
 
 35— Collins Co. v. Ames, 20 100; 13 Blatchf. 458; Swift & Ca 
 
 Blatchf. 542: 18 Fed. Rep. 561; v. Groff. 114 Fed. Rep. 605. 
 Amoskeag Mfg. Co. v. Garner, 54
 
 372 HOPKINS ON TRADEMARKS. [§ 155 
 
 been guilty of serious laches liis relief will be limited 
 to the injunction, and an accounting will be refused."" 
 
 AMiere the bill of complaint makes profert of the 
 plaintiff's trademark and exhibits the alleged infringe- 
 ment, a demurrer will be sustained if an inspection of 
 the exhibits satisfies the court that there is no infringe- 
 ment.^^ 
 
 AYliere the defendant undertakes to defend by attack- 
 ing the complainant's title to the mark and fails, the 
 Supreme Court of Louisiana has held that he should 
 be treated as a wanton trespasser.^® 
 
 But the courts are not inclined to sustain demurrers 
 upon the ground that the plaintiff's mark is not a valid 
 technical trademark, where the bill contains the specific 
 charge that the defendant has, by its conduct in the 
 premises, deceived and misled the public into buying its 
 goods as and for the plaintiff's goods.^^ A defect upon 
 the face of the bill, such as a failure to show title to 
 the mark in a complainant, must be met by demurrer 
 and cannot be raised by a plea.^^ 
 
 There are a number of lines of defense which have 
 been ineffective. Among them are to be particularly 
 noted the following: 
 
 1. Infancy."*^ 
 
 2. The registration of defendant's mark, because reg- 
 
 istration is only prima facie evidence of owner- 
 ship.'*2 
 
 3. Laches or delay, except in unusual cases.^^ 
 
 36— Holt V. Menendez, 23 Fed. 40— Hostetter Co. v. E. G. Lyons 
 
 Rep. 869, 871; N. K. Fairbank Co. Co., 99 Fed. Rep. 734. 
 
 V. Luckel, King & Cake Soap Co., 41— Chubb v. Griffiths, 35 Beav. 
 
 106 Fed. Rep. 498. 127. 
 
 37 — Handy v. Commander, 49 42 — Glen Cove Mfg. Co. v. Ludel- 
 
 La. Ann. 1119, 22 So. Rep. 230. ing, 22 Fed. Rep. 823; 23 Blatchf. 
 
 38— Collins Chemical Co. v. Cap- 46; Bass, Ratcliff & Gretton (Ltd.) 
 
 ital City Mfg. Co., 42 Fed. Rep. 64. v. Feigenspan, 96 Fed. Rep. 206, 
 
 39— Putnam Nail Co. v. Bennett, 209, 212. 
 
 43 Fed. Rep. 800. 43— McLean v. Fleming, 96 U. S.
 
 §155] 
 
 THE ACTION IN EQUITY. 
 
 373 
 
 4. Showing that defendant always placed his own ad- 
 
 dress upon his goods, in conjunction witli the in- 
 fringing inark.^' 
 
 5. Showing that defendant has always used his own 
 
 name or initials in conjunction with the infring- 
 ing mark. This is not, of itself, a good defense.*^ 
 
 C. Showing that defendant has always used the word 
 "Improved" in addition to the alleged infringing 
 words.^*^ 
 
 7. Showing that the defendant's goods are not in- 
 ferior in quality to the complainant's."*^ 
 
 8. Showing that the goods sold are goods made by 
 
 the complainant, if they are goods to which the 
 complainant did not intend the mark to be aj)- 
 plied."**^ 
 
 245; Lee v. Haley, L. R. 5 Ch. App. 
 155. See ante, § 75. 
 
 44 — Gray v. Taper-Sleeve Pulley 
 Works, 16 Fed. Rep. 436-442. 
 
 45— Menendez v. Holt, 128 U. S. 
 521; Battle v. Finlay, 50 Fed. Rep. 
 106; N. K. Fairbank Co. v. Central 
 Lard Co. 70 Off. Gaz. 635; 64 Fed. 
 Rep. 133; Boardman v. Meriden 
 Britannia Co., 35 Conn. 402; Hier 
 V. Abrahams, 82 N. Y. 519; Fleisch- 
 mann v. Schuckmann, 62 How. Pr. 
 92; Lea v. Wolff, 15 Abb. Pr. N. 
 S. 1; Carroll v. Ertheiler, 1 Fed. 
 Rep. 388; Hegeman v. O'Byrne, 9 
 Daly, 264; Pratt's Appeal, 117 Pa. 
 St. 401; Walter Baker & Co. v. 
 Baker, 87 Fed. Rep. 209 ; Bass, Rat- 
 cliff & Gretton (Ltd.) v. Feigen- 
 span, 96 Fed. Rep. 206-210; Leon- 
 ard V. White's Golden Lubricator 
 Co., 38 Fed. Rep. 922; Gillott v. 
 Esterbrook, 47 Barb. 455; Dunlap 
 & Co. V. Young, 74 N. Y. Supp. 184. 
 
 46 — Russia Cement Co. v. Le- 
 Page, 147 Mass. 206; 17 N. E. Rep. 
 
 304; Gage v. Canada Pub. Co., 11 
 Can. S. C. R. 306; Improved Fig 
 Syrup Co. v. California Fig Syrup 
 Co., 54 Fed. Rep. 175; 4 C. C. A. 
 264. 
 
 47— Cleveland Stone Co. v. Wal- 
 lace, 52 Fed. Rep. 431-436; Taylor 
 V. Carpenter (3), 11 Paige, 292; 
 Coats V. Holbrook, 2 Sandf. Ch. 
 586; Partridge v. Menck, 2 Sandf. 
 Ch. 622; Cook v. Starkweather, 13 
 Abb. Pr. N. S. 392; Shaver v. Shav- 
 er, 54 Iowa, 208; Coffeen v. Brun- 
 ton, 5 McLean, 256; Gillott v. Es- 
 terbrook, 47 Barb. 455; 48 N. Y. 
 374; Singer Mfg. Co. v. Loog (3), 
 L. R. 8 App. Cas. 15; Edelsten v. 
 Edelsten, 1 DeG. J & S. 185; Blo- 
 field v. Payne, 4 B. & Ad. 410. 
 
 48 — Krauss v. Jos. R. Peebles' 
 Sons Co., 58 Fed. Rep. 585; Hen- 
 nessy v. White, 6 W. W. & A'B. 
 Eq. 216; Hennessy v. Hogan, 6 W. 
 W. & A'B. Eq. 225; Gillott v. Ket- 
 tle, 3 Duer, 624; Hennessy v. Ken- 
 nett, Seb. 556.
 
 374 THE ACTION IN EQUITY. [§ 155 
 
 9. Showing that the defendant did not intend to sell 
 the goods bearing the infringing mark."*'^ 
 
 10. Showing that the complainant's mark has been 
 
 used by others without his knowledge, consent or 
 acquiescence/''^ for "a trespasser cannot justify 
 upon the ground that others have committed like 
 trespasses. ' '^^ 
 
 11. Showing that the same mark has been used by 
 
 others on goods of another class.^- 
 
 12. Showing that a third person used the trademark 
 
 prior to its appropriation by the complainant, 
 when that third person has been refused relief in 
 equity against infringers, because of fraudulent 
 representations made by him in using the mark.^^ 
 
 13. Showing that the infringing act was done by the 
 
 defendant's servants, agents or employees with- 
 out his knowledge.^^ 
 
 14. Showing that defendant partners have incorporated 
 
 after the institution of the suit.^^ 
 
 49— Upmann v. Forester, L. R. Walmsley, L.. R. 1 Eq. 518; Hall 
 
 24 Ch. D. 231; Upmann v. Curry, v. Barrows, 4 DeG. J. & S. 150; 
 
 29 Sol. J. 735. George v. Smith, 52 Fed. Rep. 830. 
 
 50 — Cuervo v. Jacob Henkell Co., 53 — Parlett v. Guggenhelmer, 67 
 
 50 Fed. Rep. 471; Filley v. Fas- Md. 542-544. The rights of the 
 
 sett, 44 Mo. 173; Cox, 530; Taylor third party had been so adjudicated 
 
 V. Carpenter (1), 3 Story, 458; in Palmer v. Harris, 60 Pa. St. 
 
 Cox, 14; Seb. 78; Ford v. Foster, 156. 
 L. R. 7 Ch. App. 611. 54— Low v. Hart, 90 N. Y. 457; 
 
 51 — Actiengesellschaft Vereinigte Twentsche Stoom Bleekery Goor v. 
 
 Ultramarin-Fabriken v. Amberg, Ellinger, 26 W. R. 70; Tonge v. 
 
 48 C. C. A. 264, 109 Fed. Rep. 151. Ward, 21 L. T. N. S. 480; Atkin- 
 
 Reversing same v. same, 102 Fed. son v. Atkinson, 85 L. T. Jour. 
 
 Rep. 551. 229. But see Leahy v. Glover, 10 
 
 52— Celluloid Mfg. Co. v. Cellon- R- P- C. 141. where a single sale 
 
 ite Mfg. Co., 32 Fed. Rep. 94; Col- by defendant's clerk was held in- 
 
 man v. Crump, 70 N. Y. 573; sufficient to warrant injunction. 
 Hegeman v. O'Byrne, 9 Daly, 264; 55 — American Fibre Chamois Co. 
 
 Somerville v. Schembri, L. R. 12 v. De Lee, 67 Fed. Rep. 329. 
 App. Cas. 453-457; Ainsworth v.
 
 § 155J THE ACTION IN EQUITY. 375 
 
 15. Showing that the complainant gave the defendant 
 
 no notice of his intention to bring suit.^" 
 
 16. Showing that a proper name alleged to be an in- 
 
 fringement is the name of a i^erson connected 
 with defendant's business, when in fact such per- 
 son has only given defendant permission to use 
 his name as a means of attracting trade from 
 the complainant, in pursuance of defendant's 
 scheme to fraudulently take away complainant's 
 business.^^ 
 
 17. Showing that plaintiff has added words, figures or 
 
 designs, such as a coat-of-arms, to the trademark 
 as registered.^** 
 
 18. Showing that the complainant's trademark or pack- 
 
 age is only partially copied or imitated in de- 
 fendant's mark or package.^" 
 
 56 — Coats V. Holbrook, 2 Sandf. Meriden Britannia Co. v. Parker, 
 
 Ch. 586; Cox, 20; Sawyer v. Kel- 39 Conn. 450; 12 Am. Rep. 401; 
 
 logg, 9 Fed. Rep. 601-602; Upmann Garrett v. T. H. Garrett & Co., 24 
 
 V. Forester, L. R. 24 Ch. D. 231- C. C. A. 173, 78 Fed. Rep. 472; Pha- 
 
 235; Cartmell, 331; Upmann v. El- Ion v. W^right, 5 Phila. 464; Cox, 
 
 kan, L. R. 12 Eq. 140; L. R. 7 Ch. 307; Wolfe v. Barnett, 24 La. Ann. 
 
 App. 130; Burgess v. Hately, 26 97; 13 Am. Rep. Ill; Melachrino v. 
 
 Beav. 249; Seb. 169; Field v. Lew- Melachrino Cigarette Co., 4 R. P. 
 
 is, Seton (4th ed.), 237; Seb. 280; C. 215; Cartmell, 223; Perks v. 
 
 Re Kuhn, 53 L. J. Ch. 238; Barrett Hall, W. N. 1881, p. Ill; Williams 
 
 V. Goom, 74 L. T. Jour. 388; Fen- v. Johnson, 2 Bos. 1. 
 
 nessy v. Day, 55 L. T. N. S. 161; 58 — Melachrino v. Melachrino 
 
 Siegert v. Lawrence, 11 Vic. L. R. Cigarette Co., 4 R. P. C. 215; Cart- 
 
 47. See, contra, Wallis v. Wallis, mell, 223; Newman v. Pinto, 4 R. 
 
 4 Dr. 458; Twentsche Stoom Bleek- P. C. 508; 57 L. T. N. S. 31; Cart- 
 
 ery Goor v. Ellinger, 26 W. R. 70; mell, 242; Carroll v. Ertheiler, 1 
 
 Chappell V. Davidson, 2 K. & J. Fed. Rep. 688-691. 
 
 123; Williams v. Osborne, 13 L. 59 — McCann v. Anthony, 21 Mo. 
 
 T. N. S. 498; Gorham Mfg. Co. v. App. 83; Enoch Morgan's Sons Co. 
 
 Emery-Bird-Thayer Dry Goods Co., v. Edler, Cox, Manual, 714; Taend- 
 
 92 Fed. Rep. 774-778. sticksfabriks Aktiebolaget Vulcan 
 
 57— Sawyer v. Kellogg, 7 Fed. v. Myers. 139 N. Y. 364; Pillsbury 
 
 Rep. 720; Price & Steuart, 493; 9 v. Pillsbury-Washburn Mills Co., 
 
 Fed. Rep. 601; Rogers Mfg. Co. v. 12 C. C. A. 432, 64 Fed. Rep. 841; 
 
 Rogers Mfg. Co., 11 Fed. Rep. 495; Centaur Co. v. Killenberger, 87 
 
 Williams v. Brooks, 50 Conn. 278; Fed. Rep. 725.
 
 376 HOPKINS ON TRADEMARKS. [§ 155 
 
 As by the use of but one of several words composing 
 the plaintiff's mark.^^ 
 
 *'T]ie reports are full of cases where bills have been 
 sustained for the infringement of one of several words 
 of a trademark."*'^ 
 
 19. Showing that complainant has been guilty of mis- 
 representation in connection with his use of the 
 trademark, where that misrepresentation consists 
 only in harmless exaggeration of the merits of his 
 product (puffing) f- or in purely collateral rep- 
 resentation, as by newspaper advertising f^ or in 
 regard to the size of packages used by him, where 
 the sizes of those packages are the ordinary sizes 
 known to the trade, the capacity of which is gen- 
 erally understood.^* 
 Generally, as to the defense that the complainant has 
 been guilty of misrepresentation, Judge Sanborn has 
 said ''the principle 'that he who comes into equity must 
 do so with clean hands' is familiar and indisputable. 
 But it does not repel all sinners from courts of equity, 
 nor does it disqualify any complainant from obtaining 
 relief there who has not dealt unjustly in the very trans- 
 action concerning which he complains. The iniquity 
 which will repel him must have an immediate and neces- 
 sary relation to the equity for which he sues."*^^ Thus, 
 
 60— Saxlehner v. Eisner & Men- Pr. 421; Cox, 232; Metzler v. Wood, 
 
 delson Co. (3), 179 U. S. 19-33. L. R. 8 Ch. D. 606; Seb. 587; Hol- 
 
 61 — Mr. Justice Brown in Sax- loway v. Holloway, 13 Beav. 209; 
 
 lehner v. Eisner & Mendelson Co., Seb. 106; Ellis v. Zeilen, 42 Ga. 91. 
 
 179 U. S. 19, 33; citing Shrimpton 63— Curtis v. Bryan, 36 How. Pr. 
 
 V. Laight, 18 Beav. 164; Clement 33; 2 Daly, 212; Cox, 434; Seb. 291. 
 
 V. Maddick, 1 Giff. 98; Hostetter 64— Hennessy v. Wheeler, 51 
 
 V. Vowinkle, 1 Dill. 329, Fed. Cas. How Pr. 457; 69 N. Y. 271; 15 Alb. 
 
 No. 6,714; Morse v. Worrell, 10 L. J. 454; Seb. 483. 
 
 Phila. 168, 9 Am. L. Rev. 368; 65— Shaver v. Heller & Merz Co., 
 
 Grillon v. Guenin, Weekly Notes 48 C. C. A. 48, 108 Fed. Rep. 821, 
 
 (1877), 14; American Grocer Pub. 834. Citing Dering v. Earl of 
 
 Asso. v. Grocer Pub. Co. 25 Hun, Winchelsea, 1 Cox, Ch. 318, 319; 
 
 398. I^wis & Nelson's Appeal, 67 Pa. 
 
 62 — Comstock v. White, 18 How. 153, 166; Bateman v. Fargason,
 
 § 155] THE ACTION IN EQUITY. 377 
 
 the use of the word "copyright" in connection with a 
 tradename when no copyright actually exists, has been 
 held not to disentitle the owner from relief in equity,**" 
 and so of statements of opinion concerning the curative 
 properties of a medical compound to which the trade- 
 mark is applied.*^^ But the statement on the label of a 
 small-pox remedy, ** cures the worst cases without mark- 
 ing," is sufficient to disentitle the complainant from re- 
 lief.«8 
 
 20. Showing that the infringement has ceased.'''^ 
 
 21. Showing that the complainant has made a third 
 
 party his licensee for the territorj^ in which the 
 infringement was committed.'*^ 
 
 22. Showing that the defendant has made no sales of 
 
 goods bearing the infringing mark, where it ap- 
 pears that he would have done so had the suit not 
 been instituted.'^^ 
 ''Proof of injury is unnecessary if the evidence es- 
 tablish the fact that injuiy will result unless such use 
 (of the infringing mark) will be restrained. "^^ "The 
 infringement of a trademark implies injury."'"^ 
 
 23. Showing that the defendant is merely a dealer who 
 
 has i3urchased from the originator of the infringe- 
 ment,'^"* or merely the agent of another in the sale 
 of the infringing goods.'^ 
 
 4 Fed. Rep. 32, 33. To the same 70— Moxie Nerve Food Co. v. 
 
 effect see Frazier v. Bowling, 18 Baurabach, 32 Fed. Rep. 205. 
 
 Ky. L. Rep. 1109, 39 S. W. Rep. 45. 71— Cuervo v. Landauer, 63 Fed. 
 
 66 — Wormser v. Shayne, 11 111. Rep. 1003; McLean v. Fleming, 
 
 App. 556. 96 U. S. 252. 
 
 67 — Newbro v. Undeland, Neb. 72 — Maddox, J., in Brown v. 
 
 — , 96 N. W. Rep, 635. Braunstein, 83 N. Y. Supp. 1096. 
 
 68 — Houchens v. Houchens, 95 73 — Thomas, J., in Lanahan v. 
 
 Md. 37, 51 Atl. Rep. 822. John Kissel & Son, 135 Fed. Rep. 
 
 69— Frese v. Bachof, Fed. Case 899. 
 
 No. 5110, 13 Blatchf. 234; Burnett 74— Burnett v. Hahn, 88 Fed. 
 
 v. Hahn, 88 Fed. Rep. 694; Hutch- Rep. 694. 
 
 inson v. Blumberg, 51 Fed. Rep. 75 — Walter Baker & Co. v. San- 
 
 829-831; Clark Thread Co. v. Wm. ders. 80 Fed. Rep. 889. 26 C. C. A. 
 
 Clark Co. (1), 55 N. J. Eq. 658, 37 220. 
 Atl. Rep. 599.
 
 378 HOPKINS ON TR.VDEMARKS. [§ 155 
 
 24. Showing that the defendant once held a license 
 
 from the plaintiff, permitting the use of the mark, 
 when that license has been revoked for failure to 
 pay royalties and other breaches of the licensing 
 contract.'^ '^ 
 
 25. Showing that there has been an adjudication 
 
 against the plaintiff in a court of a foreign coun- 
 try. The subject-matter, in cases of the classes 
 treated in this work, is a tort. Such subjects are 
 not concluded by foreign adjudications, even when 
 the acts referred to are the same identical acts.*^"^ 
 
 26. Showing that the defendant was insane at the time 
 
 of the commission of the infringing acts.'^^ 
 
 27. Showing the defendant's innocence of guilty knowl- 
 
 edge or fraudulent intent.'^^ 
 
 28. Showing that defendant has used plaintiff's mark 
 
 only in connection with matter explanatory of its 
 use (as where the plaintiff marked his goods 
 ''Akron Dental Rubber" and defendant marked 
 his as "Non-Secret Dental Vulcanite, made ac- 
 cording to our analysis of the Akron Dental Rub- 
 ber," the words ''Akron Dental Rubber" being 
 printed in red, from large type), where the added 
 matter is a mere evasive attempt to hide the 
 similarity.^*' 
 
 29. Showing that the plaintiff is a party to a combination 
 
 in restraint of trade.*^^ "It does not tend to foster 
 monopoly to sustain the right, if one has acquired 
 it, to the exclusive use of a trademark. "^^ 
 
 76 — Martha Washington Cream- fabriks Aktiebolaget Vulcan v. My- 
 
 ery Buttered Flour Co. v. Martien, ers, 139 N. Y. 364, 34 N. E. Rep. 
 
 44 Fed. Rep. 473. 904. 
 
 77— Hohner v. Gratz, 50 Fed. 80— Keller v. B. F. Goodrich Co., 
 
 Rep. 369; City of Carlsbad v. Kut- 117 Ind. 556; 19 N. E. Rep. 196. 
 now, 68 Fed. Rep. 794. 81— General Electric Co. v. Re- 
 
 78— Avery v. Wilson, 20 Fed. new Lamp Co., 128 Fed. Rep. 154, 
 
 Rep. 856. 156. 
 
 79 — Saxlehner v. Siegel-Cooper 82 — Gray, J., in Independent 
 
 Co., 179 U. S. 42; Colman v. Baking Powder Co. v. Boorman, 
 
 Crump, 70 N. Y. 573; Taendsticks- 130 Fed. Kep. 726.
 
 §156] 
 
 THE ACTION IN EQUITY. 
 
 379 
 
 § 156. The relief in equity.— In regard to making an 
 application for a ijreliminaiy injunction in cases of un- 
 fair trade or trademark infringement, it should be re- 
 membered that wherever there is any doubt as to the 
 plaintiff's right or the defendant's infringement, the 
 application pendente lite will be denied.'^' Accordingly 
 the courts have refused to grant the preliminaiy injunc- 
 tion where it appeared probable that the plaintiff had 
 never accjuired the exclusive right to use the mark,**^ 
 but held it ds a tenant in common with another;**'^ where 
 there existed a doubt whether the words claimed as 
 trademarks by the plaintiff ("Pile Leclancha" and "Bis- 
 que," applied to electric batteries) were or were not 
 merely descriptive words ;**^ where the facts indicated 
 that the complainant was possibly guilty of laches ;^^ 
 
 83 — "An interlocutory injunction 
 operates somewhat in the nature of 
 judgment and execution before 
 trial. Without question it is at 
 times an appropriate remedy in the 
 prevention of great wrong, but to 
 authorize its issuance there must 
 exist a pressing necessity. The 
 right to it must be clear, and the 
 apprehended injury must be griev- 
 ous, and generally, where the in- 
 jury may be measured in money, 
 the alleged wrong-doer should be 
 shown to be unable pecuniarily to 
 respond." Jenkins, J., in American 
 Cereal Co. v. Eli Pettijohn Cereal 
 Co.. (2), 22 C. C. A. 236, 76 Fed. 
 Rep. 372-374. To the same effect, 
 see Smith-Dixon Co. v. Stevens, 
 Md., 59 Atl. Rep. 401. 
 
 In refusing to grant a prelimin- 
 ary injunction Mr. Justice Bradley, 
 on circuit, said: "My great reluc- 
 tance to grant a preliminary in- 
 junction for suppressing the use 
 of a business name or trademark, 
 in any case in which the matter 
 
 in issue is a subject for fair dis- 
 cussion, induces me to withhold 
 the order." Celluloid Mfg. Co. v. 
 Cellonite Mfg. Co., 32 Fed. Rep. 
 94-102. And to the same effect 
 see Van Camp Packing Co. v. 
 Cruikshanks Bros. Co., 90 Fed. 
 Rep. 814; 33 C. C. A. 280; Charles 
 E. Hires Co. v. Consumers' Co., 41 
 C. C. A. 71, 100 Fed. Rep. 809, 813; 
 Goldstein v. Whelan, 62 Fed. Rep. 
 124. 
 
 84 — Societe des Huiles D'Olive 
 de Nice v. Rorke, 31 N. Y. Supp. 51. 
 
 85 — American Cereal Co. v. Eli 
 Pettijohn Cereal Co., 76 Fed. Rep. 
 372. 22 C. C. A. 236. 
 
 86 — Laclancha Battery Co. v. 
 Western Electric Co., 21 Fed. Rep. 
 538. Same of "air-cell" and "fire- 
 board' applied to fire-proofing ma- 
 terial. New York Asbestos Mfg. 
 Co. v. Amber Asbestos Air-cell Cov- 
 ering Co., 99 Fed. Rep. 85, afl5rmed, 
 43 C. C. A. 46, 102 Fed. Rep. 890. 
 
 87 — Estes V. Worthington, 22 
 Fed. Rep. 822.
 
 380 HOPKINS ON TRADEMARKS. [§ 156 
 
 and where the defendant's affidavits created a doubt in 
 the mind of the court as to whether the plaintiff had 
 been the exclusive user of the symbols claimed by him 
 as his trademark.^^ A preliminary injunction will not 
 be awarded on ex parte affidavits unless in a clear case,^^ 
 particularly where the defendant is financially able to re- 
 spond for damages.^^ A mandatory injunction pending 
 the suit is not granted except in extreme cases where 
 the right thereto is clearly established and it appears 
 that irreparable injury will follow from its refusal.^^ 
 
 So when the court has reason to doubt that the defend- 
 ant has been guilty of acts amounting to an invasion 
 of the plaintiff's trade rights, a preliminary injunction 
 will not be issued.^^ But while refusing the interlocu- 
 tory injunction, the court may, in its discretion, require 
 the defendant to keep an account, pending the suit, of 
 all his dealings in goods bearing the alleged infringing 
 mark; as Judge Treat said in making such an order: 
 *'It will not hurt him to keep an account. "^^ 
 
 It is sufficient to sustain the application for the pre- 
 liminary^ injunction (so far as the plaintiff's title to the 
 mark is concerned) if he has established his right to the 
 trademark in a former proceeding."^ While the decision 
 in such former proceeding is not conclusive and binding 
 upon the court in the later case, it is persuasive and of 
 
 88— French v. Alter & Julian Co., 91— Hagen v. Beth, 118 Cal. 330. 
 
 74 Fed. Rep. 788; Leclancha Bat- 92 — Goodyear Rubber Co. v. Day, 
 
 tery Co. v. Western Electric Co., 22 Fed. Rep. 44; Whiting Mfg. Co. 
 
 21 Fed, Rep. 538; Portuondo v. v. Jos. H. Bauland Co., 56 N. Y. 
 
 Monne, 28 Fed. Rep. 16; Davis v. Supp. 114. 
 
 Davis, 27 Fed. Rep. 490. 93— Goodyear Rubber Co. v. Day, 
 
 89 — New York Asbestos Mfg. Co. 22 Fed. Rep. 44. For a similar 
 
 V. Amber Asbestos Air-cell Cover- order, see Cantrell & Cochrane, 
 
 ing Co., 99 Fed. Rep. 85; Lare v. Ltd., v. Wittemann, 109 Fed. Rep. 
 
 Harper & Bros., 86 Fed. Rep. 481; 82. 
 
 30 C. C. A. 373. 94— Symonds v. Greene, 28 Fed. 
 
 90— H. Mueller Mfg. Co. v. A. Y. Rep. 834, 835; Moxie Nerve Food 
 
 McDonaly & Morrison Mfg. Co., 132 Co. v. Beach, 33 Fed. Rep. 248. 
 Fed. Rep. 585. 58a
 
 § 156] THE ACTION IN EQUITY. 381 
 
 great weight, and on the motion for a preliminary in- 
 junction, especially where it sustains the impression of 
 the court upon the hearing, is decisive.'-'^ Where a de- 
 murrer is interposed to the bill, upon the application for 
 preliminary injunction, the allegations of fraud in the 
 bill are confessed thereby; and if the demurrer is over- 
 ruled the complainant is entitled to the preliminary in- 
 junction."" 
 
 Upon granting a preliminary injunction bond may be 
 required of the complainant. 
 
 W^iere such a bond was given, conditioned for "the 
 payment of all damages and costs to be awarded against 
 the complainant and in favor of the defendant upon the 
 trial or final hearing," a demurrer was sustained to a 
 declaration setting forth the obligee's claim to damage, 
 because no damages were awarded on the final hearing.''" 
 The Supreme Court has commended, as a proper con- 
 dition of such bonds, one which ran "to answer all dam- 
 ages which the defendant in that suit might sustain in 
 consequence of said injunction being granted, should the 
 same be thereafter dissolved."*'^ 
 
 It is a general rule in the law of unfair trade, as well 
 as in patent law, that where the infringement is ad- 
 mitted or proven the plaintiff is entitled to a reference 
 for an accounting as a matter of right.^ But ' ' cases fre- 
 quently arise where a court of equity will refuse the 
 prayer of the complainant for an account of gains and 
 profits, on the ground of delay in asserting his rights, 
 
 95— Price Baking Powder Co. v. Bein v. Heath, 12 How. 168, as con- 
 
 Fyfe, 45 Fed. Rep. 799. trolling his decision. 
 
 96— Enoch Morgan's Sons Co. v. 98— Bein v. Heath, 12 Howard, 
 
 Hunkele. 16 Off. Gaz. 1092, 1093. 168-177. 
 
 97— Beakin v. Stanton, 3 Fed. 1— Oakes v. Tonsmierre, 49 Fed. 
 
 Rep. 435. In his opinion Judge Rep. 447-453; Campbell Printing 
 
 Blodgett calls attention to the wide Press Co. v. Manhattan R. Co., 49 
 
 conflict of authority in the deci- Fed. Rep. 930-932; Fisk v. Mahler, 
 
 sions of the courts of the several 54 Fed. Rep. 528. 
 states upon this subject, and cites
 
 382 HOPKINS ON TR.VDEMARKS. [§ 156 
 
 even when the facts proved render it proper to grant an 
 injunction to prevent future infringement, "^ 
 
 In case of unfair competition, though the facts justify 
 injunction, there can be no money judgment for damages 
 unless the defendant has been found guilty of fraudu- 
 lent intent.^ 
 
 *'In England the rule is stringent in trademark cases 
 that lack of diligence in suing deprives the complainant 
 in equity of the right either to an injunction or an ac- 
 count. Our courts are more liberal in this respect. A 
 long lapse of time will not deprive the owner of a trade- 
 mark of an injunction against an infringer, but a reason- 
 able diligence is required of a complainant in asserting 
 his rights, if he would hold a wrong-doer to an account 
 for profits and damages. This rule, however, applies 
 only to those cases where there has been an acquiescence 
 after a knowledge is brought home to the complainant.'^* 
 
 It is now the rule in England, as we have seen in our 
 discussion of the question of damages at law, that upon 
 the injunction being entered in the action in equity 
 the complainant is compelled to elect between profits 
 and damages ; he cannot have both. If he elects to take 
 his damages, the issue is sent to the Queen's Bench 
 division to be tried by a jury.^ In our federal courts, 
 however, there is no provision for transferring the case 
 from the equity side to the law side after the entry of 
 the interlocutory decree, nor any other provision for sub- 
 mitting the issue of damages, in an equity case, to a 
 juiy. The plaintiff is not compelled to elect between 
 profits and damages, but the reference is made to the 
 master in chancery to take an account of the defendant's 
 profits and to make an assessment of the damages sus- 
 
 2— Mr. Justice Clifford in Mc- sor, 61 C. C. A. 233, 124 Fed. Rep. 
 Lean v. Fleming, 96 U. S. 245-257. 200, 202. 
 
 To the same effect see Low v. 4 — Nixon, J., in Sawyer v. Kel- 
 Fels, 35 Fed. Rep. 361-363. logg, 9 Fed. Rep. 601. 
 
 3 — ^N. K. Fairbank Co. v. Wind- 5— Fennessy v. Rabbits, 56 L. T. 
 
 138; Cartmell. 125.
 
 § 156J THE ACTION IN EQUITY. 383 
 
 tained by the plaintiff.** In assessing damages the mas- 
 ter will consider the extent to whieli plaintiff's sales have 
 fallen off, if the defendant's acts are the cause of such 
 falling off/ 
 
 It was held in one case that the ])rofits due to the use 
 of the trademark only were the subject of in(iuiry.^ But 
 this was clear error, and the court laying down this rule 
 cited in support of it only one precedent and that a 
 patent case." This question was considered very care- 
 fully by the supreme court of California, and its conclu- 
 sion is as follows: "Every consideration of reason, jus- 
 tice and sound policy demands that one who fraudulently 
 uses tlie trademark of another should not be allowed to 
 shield himself from liability for the profit he has made 
 by the use of the trademark, on tlie plea that it is im- 
 possible to determine how much of the profit is due to 
 the trademark, and how much to the intrinsic value of 
 the commodity. ' ' The supreme court held, therefore, that 
 the trial court had not erred in awarding the plaintiff 
 the whole profit made by the defendant.^® In treating 
 the same subject. Judge Sawj^er said: *'To adopt as the 
 measure of compensation for such injuries the difference 
 between the price for which the spurious goods would 
 sell without the trademark and for which they would 
 sell with it imprinted thereon, would be a mockerj^ of 
 justice. In my judgment the infringer should at least 
 account for the entire profits made upon the goods wrong- 
 fully sold with the trademark impressed upon them."" 
 This now appears to be the accepted rule.^- 
 
 6— The Collins Co. v. Oliver Case No. 6714; 1 Dill. 329; Cox, 
 Ames & Sons Corporation, 18 Fed. Manual, No. 207. 
 Rep. 561-571 ; Benkert v. Feder, 34 8— Atlantic Milling Co. v. Row- 
 Fed. Rep. 534, 535; Sawyer v. Kel- land, 27 Fed. Rep. 24. 
 logg, 9 Fed. Rep. 601, 602; Saw- 9— Garretson v. Clark, 111 U. S. 
 yer v. Horn, 1 Fed. Rep. 24-39. To 120. 
 
 the same effect see Clark Thread 10— Graham v. Plate, 40 Cal. 593- 
 
 Co. V. William Clark Co., (2) 56 599. 
 
 N. J. Eq. 739, 40 Atl. Rep. 686. 11— Benkert v. Feder, 34 Fed. 
 
 7 — Hostetter v. Vowinkle, Fed. Rep. 534.
 
 384 HOPKINS ON TR.VDEMARKS. [§ 157 
 
 Counsel fees expended by plaintiff in the cause are 
 not an element of damage, and cannot be considered in 
 assessing damages in equity.^^ 
 
 The court will refuse to decree an accounting where it 
 is manifestly impossible to segregate the profits arising 
 from the infringement.^^ 
 
 In jurisdictions where the master is permitted to as- 
 sess damages, he may do so even in the absence of any 
 direct proof of loss of profit.^ ^ As all participants in 
 torts are principals, one who participates in unfair trade 
 by furnishing fraudulent labels is liable in equity to the 
 party injured for the whole damage resulting from the 
 unfair competition.^ '^ 
 
 § 157. Punitive damages in equity.— "The question of 
 the true measure of damages in cases of this sort is an 
 interesting one. The injured party is entitled to full 
 compensation for the injury, but how shall that be meas- 
 ured? Manifestly, the profits which the infringer has 
 made would not in all cases be compensation to the in- 
 jured. The latter 's loss in part inheres in the failure to 
 acquire a just and deserved gain; also in the injury to 
 the reputation of his product by reason of the substitu- 
 
 12 — Saxlehner v. Eisner & Men- gument, it appears to me that, 
 
 delson Co., 138 Fed. Rep. 22. apart from any direct proof of 
 
 13 — Burnett v. Phalon (1), 21 loss of profit, there arises in cases 
 
 How. Pr. 100; Cox' American of this class an inference of pos- 
 
 Trademark Cases 292. sible damage to the manufacturer 
 
 14 — Ludington Novelty Co. v. whose name is improperly used — 
 
 Leonard, 62 C. C. A. 269, 127 Fed. damage to his well established 
 
 Rep. 155. reputation. It is impossible that 
 
 15 — Thus in a chancery case in the quantum of damage in cases 
 
 New Zealand the court said: "First of this class can be mathematically 
 
 as to damages, I am of opinion ascertained; no account can pos- 
 
 that there has been no direct proof sibly reach such a matter. It must 
 
 of loss of profit by Messrs. Little- always be a matter of discretion 
 
 John & Son, consequent upon the for the court and jury." Littlejohn 
 
 sale of the watches which improp- v. Mulligan, 3 New Zealand Rep. 
 
 erly have their name inscribed 446. 
 
 upon them, but, as I have inti- 16 — Hildreth v. Sparks Mfg. Co., 
 
 mated during the course of the ar- 99 Fed. Rep. 484.
 
 § 158 J THE ACTION IN EQUITY, 385 
 
 tion of the spurious article. The latter element is diflfi- 
 cult, if not impossible of accurate admeasurement. It 
 can only be approximately compensated by an allowance 
 in the nature of punitory damages, resting largely in 
 discretion."*'^ This hapi)ens to be merely a dictum, as 
 the issue was not before the court. But it is the state- 
 ment of a sound principle, though one difficult of prac- 
 tical application, and is flatly opposed to Ilcmiessy v. 
 Wilmerding-Loeue Co.,^^ which denies the right to re- 
 cover punitive damages in equity in this class of cases. 
 
 § 158. Increase of damages in equity.— Section 19 of 
 the Act of 1905 provides that: "Upon a decree being 
 rendered in any such case for wrongful use of a trade- 
 mark the complainant shall be entitled to recover, in ad- 
 dition to the profits to be accounted for by the defendant, 
 the damages the complainant has sustained tliereby. 
 . . . The court shall have the same power to in- 
 crease such damages, in its discretion, as is given by 
 section sixteen of this Act for increasing damages found 
 by verdict in actions of law." 
 
 This provision was doubtless intended to enable the 
 trial court, having regard to the questions of fraudulent 
 intent and guilty knowledge of the defendant, to assess 
 damages by way of punishment, in addition to those 
 damages found by the Master to have been actually sus- 
 tained by the complainant. 
 
 § 159. The defendant's credits upon accounting.— Sec- 
 tion 19 of the Act of 1905 provides that "In assessing 
 profits the plaintiff shall be required tp prove defend- 
 ant's sales only; defendant must prove all elements of 
 cost which are claimed." 
 
 These jjrovisions are evidentiary^, shifting the burden 
 of proof upon the defendant, after the complainant has 
 
 17— Jenkins, J., in Walter Baker 18—103 Fed. Rep. 90. 
 & Co. V. Slack, 130 Fed. Rep. 514, 
 519, 65 C. C. A. 138.
 
 386 HOPKINS ON TRADEMARKS. [§ 160 
 
 proven the extent of sales, to establish such credits or 
 off-sets as he may be entitled to. 
 
 Where the defendant carried on the infringing traffic 
 in connection with his regular business, it has been held, 
 the master in chancery will not make any deduction for 
 expenses in taking the account of profits;^" but two later 
 cases hold directly to the contrary.-*^ 
 
 § 160. Label designing as a judicial function.— The 
 
 willingness of courts of equity to aid in maintaining fair- 
 ness in competition has been evidenced by a label de- 
 signed by Judge Coxe and exhibited with his opinion 
 in a case involving the word "Carlsbad" as applied to 
 mineral water, with the statement that "in order that 
 there may be no misunderstanding upon the settlement 
 of the decree, the court has applied a copy of a label 
 which, it is thought, the defendant may use with im- 
 punity as truthfully representing the water sold by 
 him. "21 
 
 In another case, .Judge Lacombe, in offering alterna- 
 tive forms of decree for the choice of a defendant, said 
 "the mandate will, if defendant prefers, direct a modifi- 
 cation of the interlocutory decree solely by requiring the 
 affixing upon every package sold, in type as prominent 
 as the title, of the statement that "W. H. Baker is dis- 
 tinct from and has no connection with the old chocolate 
 manufactory of Walter Baker & Co.' ""- The Court of 
 Appeals of the Scvonth Circuit has criticised this prac- 
 tise, Judge Jenkins observing that "The court below, 
 upon holding that the changed label of the defendant in- 
 fringed the complainant's right, caused to be submitted 
 for its approval another form of label, which it approved, 
 
 19— Societe Anonyme v. Western 21 — City of Carlsbad v. Schultz, 
 
 Distilling Co. 46 Fed. Rep. 921. 78 Fed. Rep. 469, 472. 
 
 20— Walter Baker & Co. v. Slack, 22— Walter Baker & Co. v. San- 
 
 65 C. C. A., 138, 130 Fed. Rep. ders. 80 Fed. Rep. 889, 895, 26 C. 
 
 514, 520; Saxlehner v. Eisner & C. A. 220. 
 Mendelson Co., 138 Fed. Rep. 22.
 
 § 160] THE ACTION IN EQUITY. 387 
 
 and authorized the defendant to use upon bottles of the 
 same form as those used by the complainant. We greatly 
 doubt the propriety of such action. When an infringe- 
 ment has been found, it should be restrained. A court 
 of equity does not sit as an arbiter to determine in ad- 
 vance upon other and changed labels which the infringer 
 may adopt to avoid the condemnation of the court. 
 Wliether such changed forms do in fact infringe is mat^. 
 ter of fact to be detennined by the court in its usual 
 course of procedure upon complaint lodged by the party 
 damnified. The duty of the court below was to deter- 
 mine whether the labels complained of in the bill in- 
 fringed the com])lainant's right. That duty was fully 
 pcrfonned when the court had so determined. It is not 
 called upon to decide whether a new label proposed for 
 adoption would infringe. This is especially so here, 
 where the infiingement was deliberate and designed. In 
 such case the court ought not to say how near the in- 
 fringer may lawfully approximate the label of the com- 
 plainant, but should cast the burden upon the guilty 
 party of deciding for himself how near he may with 
 safety drive to the edge of the precipice, and whether it 
 be not better for him to keep as far from it as pos- 
 sible";-^ and in a later ease, quoting from the foregoing 
 opinion, the same court, per curiam remarks "it will be 
 time enough for the court to detennine the question upon 
 issues properly framed and the evidence taken there- 
 under. ' '"■* 
 
 AVhere the complainant's counsel has stated that he 
 saw no objection to a proposed new label submitted to 
 him by defendant, the fact was held conclusive against 
 
 23— Charles E, Hires Co. v. Con- to the same effect see Sterling 
 
 sumers' Co., 100 Fed. Rep., 809, Remedy Co. v. Spermine Medical 
 
 813, 41 C. C. A. 71. Co., 50 C. C. A. 657, 112 Fed. Rep. 
 
 24— Williams v. Mitchell, 45 C. 1000. 
 C. A.. 265, 106 Fed. Rep. 168, 172:
 
 388 HOPKINS ON TRADEMARKS. [§ 161 
 
 an application for a preliminary injunction to restrain 
 its use.-^ 
 
 § 161. Appeals.— Section 17 of the Act of 1905 pro- 
 vides that "The circuit courts of Appeal of the United 
 States and the Court of Appeals of the District of Co- 
 lumbia shall have appellate jurisdiction of all suits at 
 law or in equity respecting trademarks registered in ac- 
 cordance with the provisions of this Act, arising under 
 the present Act, without regard to the amount in contro- 
 versy. ' ' 
 
 Section 7 of the act of March 3, 1891 (26 Stat. 826, 
 c. 517) establishing the Circuit Court of Appeals as 
 amended by the act of February 18, 1895 (28 Stat. 666, 
 c. 96), provides: 
 
 "That where upon a hearing in equity in a district 
 court or a circuit court an injunction shall be granted, 
 continued, refused or dissolved by an interlocutory order 
 or decree, or an application to dissolve an injunction 
 shall be refused in a cause in wliich an appeal from a 
 final decree may be taken under the provisions of this 
 act to the circuit court of appeals, an appeal may be 
 taken from such interlocutory order or decree granting, 
 continuing, refusing, dissolving, or refusing to dissolve 
 an injunction to the circuit court of appeals, provided 
 that the appeal must be taken within thirty days from 
 the date of entry of such order or decree and it shall 
 take precedence in the appellate court ; and the proceed- 
 ings in other respects in the court below shall not be 
 stayed, unless othei^wise ordered by that court, during 
 the pendency of such appeal: and provided further that 
 the court below may, in its discretion, require as a con- 
 dition of the api)eal, an additional injunction bond." 
 Under this section, an appeal from a decree made after 
 final hearing on the merits, declaring infringement of a 
 trademark, awarding a perpetual injunction and refer- 
 
 25— Weber Medical Tea Co. v, Weber, 102 Fed. Rep. 156.
 
 § 162] THE ACTION IN EQUITY. 389 
 
 ring the cause to a master for an accounting, is not an 
 api^ealable final decree but is interlocutory, and such an 
 appeal, to be effectual must be taken within 30 days from 
 entr^' of the interlocutory decree.-*^ 
 
 The United States circuit courts of appeals will review 
 the action of the circuit courts in granting or refusing 
 preliminary injunctions, for the purpose of reviewing the 
 discretion of the court below and correcting error in its 
 exercise. In a proper case it will enlarge the scope of a 
 preliminary injunction which falls short of protecting 
 the complainant's rights.-^ 
 
 Where such a preliminary injunctive order is ap- 
 pealed from, however, "the question for consideration 
 is whether the court below improperly exercised its dis- 
 cretionary power in respect of issuing an injunction 
 pendente lite. Unless it clearly appears that it has so 
 done, the order should be affirmed. "^^ 
 
 § 162. Certiorari.— Section 18 of the Act of 1905 pro- 
 vides as follows: 
 
 ''That writs of certiorari may be granted by the Su- 
 preme Court of the United States for the review of cases 
 arising under this Act in the same manner as provided 
 for patent cases by the Act creating the circuit court of 
 appeals." 
 
 The Act referred to is known as the Judiciary Act of 
 1891, Section 6 of which Act provides "That in any 
 such case as is hereinbefore made final in the Circuit 
 Court of Appeals, it shall be competent for the Supreme 
 Court to require by certiorari or otherwise, any such 
 case to be certified to the Supreme Court for its review 
 and determination with the same power and authority in 
 
 26 — Raymond v. Royal Baking 28 — Chickering v. Chickering & 
 
 Powder Co.. 76 Fed. Rep. 465, 22 Sons, 120 Fed. Rep. 69, 73. 56 C. 
 
 C. C. A. 278. C. A. 475; Pfeiffer v. Wilde, 46 C5, 
 
 27— Charles E. Hires Co. v. Con- C. A. 415, 107 Fed. Rep. 456. 
 sumers' Co., 100 Fed. Rep. 809-813, 
 41 C. C. A. 71.
 
 390 HOPKINS ON TRADEMARKS. [§162 
 
 the case as if it bad been carried by appeal or writ 
 of error to the Supreme Court." Section 716 of the 
 United States Revised Statutes has been held to author- 
 ize the use of writs of certiorari by the Supreme Court 
 in all proper cases.^'' 
 
 The general rule concerning the issuance of a writ of 
 certiorari by the Supreme Court is that it rests within 
 the discretion of the court. Mr. Chief Justice Fuller 
 has said that "When sought as between private persons, 
 the general rule is that the writ of certiorari will be 
 granted or denied, in the sound discretion of the court, 
 on special cause or ground shown; and will be refused 
 where there is a plain and equally adequate remedy by 
 appeal or otlierwise. "^^ 
 
 29— Re Tampa Suburban R. Co., 30— Re Tampa Suburban R. Co., 
 168 U. S. 583, 42 L. Ed. 589. 168 U. S. 583, 42 L. Ed. 589.
 
 CHAPTEil XIV. 
 
 MATTERS OF PRACTICE AND EVIDENCE. 
 
 § 163. Matters of which courts will take judicial 
 notice. — This subject is of practical importance in the 
 trial of trademark causes. The courts of the United 
 States will take judicial notice of the statutes of the 
 several states,^ and of the decisions of the state courts 
 upon the constitutionality of such statutes.- All courts 
 will take judicial notice of the treaties or conventions 
 with a foreign government or power."* It has been ex- 
 pressly held that judicial notice will be taken of the 
 convention concerning trademarks, of April 16, 1869, be- 
 tween the United States and France.^ As in other classes 
 of cases, the courts take judicial notice of political facts, 
 legal facts, official facts, public histoiy, natural history 
 and the vernacular language, and all matters of common 
 and ordinary knowledge, including matters of science. 
 
 § 164. Expert and other evidence on the question of 
 infringement.— Inspection by the court is the main, and 
 indeed the final test of the alleged resemblance in trade- 
 mark cases.'^ The courts, as a rule, give little weight to 
 expert testimony on questions of similitude.'' 
 
 1— Re Jordan, 49 Fed. Rep. 238; dison-Tinsley Tob. Co., 52 Mo. 
 
 Gormley v. Bunyan, 138 U. S. 623. App. 10; Collins Chemical Co. v. 
 
 2— Knox V. Columbia Liberty Capitol City Mfg. Co., 42 Fed. Rep. 
 
 Iron Co., 42 Fed. Rep. 378. 64; Liggett & Myer Tob. Co. v. 
 
 3— Ex parte McCabe, 46 Fed. Hynes. 20 Fed. Rep. 883; Joseph 
 
 Rep. 363. Dixon Crucible Co. v. Benham, 4 
 
 4 — La Croix v. Sarrazzin, 15 Fed. Fed. Rep. 527. 
 Rep. 489. 6 — Cook v. Starkweather, 13 Abb. 
 
 5— Von Mumm v. Frash, 56 Fed. Pr. N. S. 392; Popham v. Wilcox, 
 Rep. 830-838; Filley v. Fassett, 44 66 N. Y. 69; Re Jelley, Son & Jones, 
 Mo. 173; Gail v. Wackerbarth. 28 51 L. J. Ch. 639; Radam v. De- 
 Fed. Rep. 286; Drummond v. Ad- stroyer Co., 81 Texas, 122; 16 S. 
 
 391
 
 392 HOPKINS ON TRADEMARKS. [§ 164 
 
 Testimony of skilled witnesses to the effect that in 
 their opinion the public is likely to be deceived by the 
 similarity of two trademarks, although valuable in a 
 doubtful case," is not of itself sufficient evidence of in- 
 fringement.^ When technical trade or scientific ques- 
 tions are involved, however, expert evidence is highly 
 desirable,'^ and especially when the probability of the 
 ultimate consumer being deceived by tlie defendant's 
 goods rests on the character and habits of the people 
 who use the jDroduct,^'' or the manner in which the goods 
 are usually sold or exhibited by the retailer.^ ^ 
 
 Where the defendant was charged with re-filling *'A. 
 V. H." gin bottles, evidence of an expert ganger show- 
 ing a variance in alcoholic proof between the genuine gin 
 and that sold by defendant in the trademarked packages, 
 was admitted.^- 
 
 AVhere the complainant's case rested on the testimony 
 of hired witnesses that they had drunk bitters sold them 
 by the defendant in his saloon as being complainant's 
 
 W. Rep. 990; P. Lorillard Co. v. questioned (Radam v. Capital Mi- 
 
 Peper, 86 Fed. Rep. 956; Monopol crobe Destroyer Co., 81 Texas, 122; 
 
 Tobacco Works v. Gensior, 66 N. 26 Am. St. Rep. 783). 
 
 Y. Supp. 155. Lord Esher, Master 9 — Mitchell v. Henry, L. R. 15 
 
 of the Rolls, has terseley said: "If Ch. D. 181; 43 L. T. 186; Cartmell, 
 
 a naan was to come and tell me 227; Re Worthington, 14 Ch. D. 8; 
 
 that a horse was like a cat, he 49 L. J. Ch. 646; Cartmell, 351; 
 
 might swear it, and you might get Re Christiansen, 3 R. P. C. 54; 
 
 fifty persons to swear it, but I Cartmell, 95; Gorham Co. v. White, 
 
 should not act on such evidence, 14 Wall. 511; Williams v. Brooks, 
 
 because it is pure nonsense." Re 50 Conn. 278; Price & Steuart, 654; 
 
 Christiansen, 3 R. P. C. 54-61. Celluloid Mfg. Co. v. Read, 47 Fed. 
 
 7— Celluloid Mfg. Co. v. Read, Rep. 712-716. 
 
 47 Fed. Rep. 712-716. 10— Drummond v. Addison-Tins- 
 
 8— Columbia Mill Co. v. Alcorn, ley Tob. Co., 52 Mo. App. 10; Sper- 
 
 40 Fed. Rep. 676; Cope v. Evans, ry v. Percival Milling Co., 81 Cal. 
 
 L. R. 18 Eq. 138. But in one case 252-260. 
 
 such evidence was admitted and 11 — Re Worthington, L. R. 14 Ch. 
 
 approved (Williams v. Brooks, 50 D. 8. 
 
 Conn. 278; 47 Am. Rep. 642), 12— Van Hoboken v. Mohns & 
 
 while in another its propriety was Kaltenbach, 112 Fed. Rep. 528.
 
 § 164] MATTERS OF PRACTICE .VND EVIDENCE. 393 
 
 bitters and that said bitters were imitation, the bill was 
 dismissed on the conflicting testimony offered in defense, 
 the court remarking that hired witnesses are not dis- 
 interested and their testimony for that reason should be 
 scrutinized with unusual caution.^^ In dismissing a bill 
 in which a defendant was charged with refilling genuine 
 packages, where the evidence was conflicting, Judge 
 Coxe remarked that "the burden is strongly upon the 
 complainant to prove fraud by a fair preponderance of 
 evidence. "^^ 
 
 Where proof is offered to show that the comi)lainant's 
 business has increased steadily during the period of the 
 alleged unfair competition, and there is no evidence of 
 injury, such facts will be considered in determining the 
 complainant's right to relief.^ '^ AVhere the only evidence 
 of deception came from purchasers who were not misled, 
 it was held that the facts constituted a case of substitu- 
 tion on the part of the retailer, and not unfair competi- 
 tion.^^ 
 
 Expert testimony on other issues.— A witness familiar 
 with the trade may testify to the catch-word or other 
 peculiar designation by which an article is known to the 
 
 13 — Hostetter Co. v. Bower, 74 proof, be persuasive evidence of 
 
 Fed. Rep. 235. The quantity of other sales, and convincing proof 
 
 proof adduced, and its weight, nee- of an intention to sell whenever the 
 
 essarily must be fixed by the at- opportunity of doing so without 
 
 tendant circumstances of each detection is presented." Lacombe, 
 
 case. Thus, in one case it was held J., in Lever Bros. (Ltd.) v. Pas- 
 
 that a single sale of the infringing field, 88 Fed. Rep. 484. Citing De 
 
 article by the defendant's clerk Florez v. Raynolds, 14 Blatchf. 
 
 was insuflScient to warrant injunc- 505. 
 
 tion. Leahy v. Glover, 10 R. P. C. 14— Hostetter Co. v. Comerford, 
 
 141. And in a patent case it was 97 Fed. Rep. 585. 
 
 held that a single sale was not 15 — Stevens Linen Works v. 
 
 per se an infringement. Byam v. William & John Don & Co., 121 
 
 Bullard. 1 Curt. 100; Fed. Case No. Fed. Rep. 171. 
 
 2262. But evidence of a single sale 16— Bickmore Gall Cure Co. v. 
 
 "may, in connection with other Karns Mfg. Co., 126 Fed. Rep. 573.
 
 394 HOPKINS ON TRADEMARKS. [§ 165 
 
 trade/" or to consumers ;^^ and of course other witnesses 
 similarly qualified may testify to the contrary.^ ^ 
 
 Testimony of witnesses properly qualified is admissi- 
 ble to show that owing to the defendant's infringement, 
 plaintiff's sales have fallen off; this is true both at law-*^ 
 and in equity.-^ In the action at law it is competent for 
 the plaintiff's proof to show that his sales fell off con- 
 currently with the defendant's infringement, from which 
 the jury may infer that the falling oft' was the result of 
 the defendant's acts.^- 
 
 Evidence of Defendant's Good Faith.— The relief rest- 
 ing upon the charge of fraud, the fact that a defendant 
 has transacted his alleged infringement openly, by ex- 
 tensive advertising of his package will be considered as 
 bearing on the question of intent, where a technical 
 trademark is not involved."^ 
 
 § 165. Exhibits.— It is particularly desirable that the 
 conflicting marks be at all times easily accessible to the 
 court, and that they be filed as exhibits whenever pos- 
 sible. The practice of the courts of several states does 
 not permit exhibits, other than documentary, to be filed, 
 as no provision has been made for tlieir accommodation 
 and safe-keeping. In Missouri, where this condition 
 prevails, the St. Louis court of appeals has recommend- 
 ed the preservation of the brands or labels as a part of 
 the record on appeal.^^ 
 
 The federal courts, however, afford every facility re- 
 quired for the care of exhibits and the following rule is 
 in effect in all the federal circuit courts of appeals: 
 
 **1. Models, diagrams and exhibits of material form- 
 
 17— Pollen V. LeRoy, 30 N. Y. 78-84; 34 Atl. Rep. 446. 
 
 549-561. 21— Hostetter v. Vowinkle, Fed. 
 
 18 — Johnson & Johnson v. Bauer Case No. 6714; 1 Dill. 329; Cox, 
 
 & Black, 27 C. C. A. 374, 82 Fed. Manual, No. 207. 
 
 Rep. 662; Read v. Richardson, 45 22 — Shaw v. Pilling, supra. 
 
 L.T.N.S. 54; Cox, Manual, No. 698. 23— T. B. Dunn Co. v. Trix Mfg. 
 
 19— Wilkinson v. Greely, Fed. Co., 63 N. Y. Supp. 333. 
 
 Case No. 17671; 1 Curt. 63. 24— Alden v. Gross, 25 Mo. App. 
 
 20— Shaw V. Pilling, 175 Pa. St. 123.
 
 § 166] MATTERS OF PRACTICE AND EVIDENCE. 395 
 
 ing part of the evidence taken in the court below, in any 
 case pending in this court on writ of error or appeal, 
 shall be placed in the custody of the marshal of this 
 court at least ten days before the case is heard or sub- 
 mitted. 
 
 "2. All models, diagrams and exhibits of material 
 placed in the custody of the marshal for the inspection 
 of the court on the hearing of a case must be taken away 
 by the parties within one month after the case is decided. 
 AAHien this is not done, it shall be the duty of the marshal 
 to notify the counsel in the case, by mail or otherwise, 
 of the requirements of this rule, and, if the articles are 
 not removed within a reasonable time after notice is 
 given, he shall destroy them or make such other dis- 
 position of them as to him may seem best."-'' 
 
 It is frequently expedient to annex to the order of in- 
 junction specimens of the marks used by the defendant.^*' 
 
 § 166. Discovery. — The resistance of discovery is 
 usually met with by complainants in trademark causes. 
 
 Lord Romilly compelled a defendant to make a full 
 discovery of all his sales, the prices, profits realized and 
 the names of the purchasers, notwithstanding the objec- 
 tion of the defendant that he would thereby disclose his 
 business secrets f^ and full discoveiy has been compelled 
 in other cases.-^ The power to compel discovery is in- 
 herent in equity, but is not vested in courts of law in 
 the absence of statutory enactment.-'^ 
 
 ''Equitable jurisdiction will not attach for discovery 
 simply, except in aid of a suit at law."^^ 
 
 25— The above rule is numbered feld (2), 1 H. & M. 295; Seb. 224; 
 
 rule 34 in each court of appeals Orr v. Diaper, L. R, 4 Ch. D. 92; 
 
 but that of the seventh circuit, 46 L. J. Ch. 41; Seb. 519. 
 
 where it is numbered rule 32. 29 — Colgate v. Compagnie Fran- 
 
 26 — Hansen v. Siegel-Cooper Co. caise, 23 Fed. Rep. 82-85. 
 
 (1), 106 Fed. Rep. 690, 691. 30— Colt, J., in Lord v. White- 
 
 27 — Howe V. McKernan, 30 Beav. head & Atherton Machine Co., 24 
 
 547. Fed. Rep. 801. 
 
 28— Leather Cloth Co. v. Hirsch-
 
 396 HOPKINS ON TR^VDEM^SJIKS. [§ 167 
 
 In actions at law production of books and papers is 
 fully provided for, in federal practice, by section 724 of 
 tlie Kevised Statutes. It has been held that inspection 
 of books or writings may be ordered to be made before 
 the trial.^^ Its provisions, when atfording an adequate 
 remedy, preclude resorting to equity to compel discov- 
 eiy,^- and render the issuance of subpoena duces tecum 
 unnecessaiy.^^ 
 
 In equitable proceedings discovery will not be enforced 
 when it may tend to incriminate the person against whom 
 discoveiy is sought,^* or to disclose trade secrets,^^ and 
 the same rule applies to the enforced production of 
 books and papers by such persons.^^ 
 
 Subject to these restrictions, discovery of material 
 facts will be compelled.^^ 
 
 When a defendant professes to answer, he must an- 
 swer fully. If he desires protection against discovery, 
 he must seek such protection by plea.^^ 
 
 § 167. Evidence of recognition by others of plaintiif 's 
 right to the mark.— The rule is well settled that a former 
 adjudication establishing a trademark, where there has 
 been an adjudication after a bona fide contest on the 
 merits, and the same issues were presented as in the 
 later suit, is of persuasive if not binding force in a later 
 case.^^ But a mere showing that the claimant of the 
 
 31 — Lucker v. Phoenix Assur- 35 — See ante, Chapter VII. and 
 
 ance Co., 67 Fed. Rep. 18; Ex- Dobson v. Graham, 49 Fed. Rep. 17. 
 
 change Bank v. Wichita Cattle Co., 36 — Ibid. See also Union Paper 
 
 61 Fed. Rep. 190; United States Collar Co. v. Metropolitan Collar 
 
 V. National Lead Co., 75 Fed. Rep. Co. (Ltd.), 3 Daly, 171. 
 
 94. 37— Benbow v. Low, L. R. 16 Ch. 
 
 32— Washburn & Moen Mfg. Co. D. 93; Byass v. Sullivan, 21 How. 
 
 V. Freeman Wire Co., 41 Fed. Rep. Pr. 50; Cox, 278. 
 
 410; Paton v. Majors, 46 Fed. Rep. 38 — Howe v. McKernan, 30 
 
 210. But see Colgate V. Compagnie Beav. 547; Slater v. Banwell, 50 
 
 Francaise, 23 Fed. Rep. 82. Fed. Rep. 150. 
 
 33 — Kirkpatrick v. Pope Mfg. 39 — Moxie Nerve Food Co. v, 
 
 Co., 61 Fed. Rep. 46. Beach, 33 Fed. Rep. 248; Symonds 
 
 34— Byass v. Sullivan, 21 How. v. Greene, 28 Fed. Rep. 834; La 
 
 Pr. 50; Cox, 278. Republique Francaise v. Saratoga
 
 § 168] MATTERS OF PRACTICE AND EVIDENCE. 397 
 
 trademark has by threats of legal prosecution comi>elled 
 or induced others to enter into undertakings to desist 
 from the use of the name, or that others have submitted 
 to injunctions without a contest, is very slight, if any, 
 evidence of the plaintiff's right to use the mark. In a 
 recent case before the House of Lords, Lord Davey 
 said in regard to evidence of cases in which other per- 
 sons had submitted to injunctions and had paid the 
 costs: '^That does not appear to me to be very strong 
 evidence in favor of the pursuers. Of course, a shop- 
 keeper or a person in that position would hesitate a 
 long time before he incurred the expense, which in the 
 case of a trademark or in a patent case is not slight, 
 of defending an action of this character; probably the 
 value to him of the trade he would lose would not in 
 any way compensate for the risk he would incur. There- 
 fore, as evidence of the fact, I do not attach much im- 
 portance to those cases. "^^ An interlocutory decree of 
 one court appears to be entitled to but little weight in a 
 proceeding before another.*^ 
 
 § 168. Contempts.— It is provided by section 725 of 
 the United States Revised Statutes that the Courts of 
 the United States shall have the power to punish, '*by 
 fine or imjjrisonment, at the discretion of the court, con- 
 tempt of their authority; provided, that such power to 
 punish contempts shall not be construed to extend to any 
 cases except the misbehavior of any person in their pres- 
 ence, or so near thereto as to obstruct the administration 
 of justice, the misbehavior of any of the officers of said 
 courts in their official transactions, and the disobedience 
 or resistance by any such officer, or by any party, juror, 
 
 Vichy Springs Co., 99 Fed. Rep. now, 68 Fed. Rep. 794. And to 
 733. But. a decision of the En- the same effect see Hohner v. 
 glish high court of chancery ad- Gratz, 50 Fed. Rep. 369. 
 verse to the claimant of a mark is 40— Cellular Clothing Co. v. 
 not a bar to a suit for infringement Maxton, L. R. (1899) A. C. 326-346. 
 of the mark brought in the United 41— Walter Baker & Co. v. San- 
 States. City of Carlsbad v. Kut- ders, 80 Fed.Rep.889, 26 C.C.A.220.
 
 398 HOPKINS ON TRADEMARKS. [§ 168 
 
 witness, or other person, to any lawful writ, process, 
 order, rule, decree, or command of said courts." 
 
 Contempt of court is a specific criminal offense.'*^ Im- 
 position of a fine for contempt is a judgment in a crimi- 
 nal case.^^ It has been held that a i3laintiff who circu- 
 lates matter prejudicial to the defense of a pending ac- 
 tion for trademark infringement is guilty of a contempt,** 
 as has also been held of a plaintiff who published a false 
 and perv'^erted construction of the purpose and effect of 
 an injunction.*^ 
 
 By far the greater number of applications to commit 
 for contemjjt in the class of cases under consideration 
 are based upon the failure of the party enjoined to com- 
 ply with the injunctive decree. Where no attempt has 
 been made toward compliance with the decretal order, 
 the resjwndent is, of course, in contempt and liable to 
 commitment, like any other contemnor.**' But where 
 some effort has been made to comply with the order, but 
 to an extent not satisfactory to the complainant, an issue 
 of fact is raised for the determination of the trial court, 
 and as a rule its findings and judgment will not be re- 
 viewed on appeal;*'^ and where the contempt proceedings 
 are referred, the court is reluctant to disturb the find- 
 ings of fact made by the referee.*^ 
 
 It is a contempt, after decree, to offer the infringing 
 goods for sale, even though no sale is actually effected ;*'-^ 
 nor does it exempt the defendant from commitment to 
 show that he intended to comply with the decree, if in 
 
 42 — Fischer V. Hayes, 6 Fed. Rep. 46 — Rodgers v. Nowill (2), Cox, 
 
 63-68. Manual, No. 115; 3 DeG. M. & G. 
 
 43 — New Orleans v. Steamship 614. 
 
 Co., 20 Wall. 387-392; Butler v. 47— Devlin v. Devlin, 69 N. Y. 
 
 Fayerweather, 91 Fed. Rep. 458; 212; Cox, Manual, No. 463. 
 
 33 C. C. A. 625; 63 U. S. App 123. 48— Hennessy v. Budde, 82 Fed. 
 
 44 — Coats V. Chadwick, L. R. Rep. 541. 
 
 (1894) 1 Ch. D. 347. 49— Marcovitch v. Bramble, Wil- 
 
 45 — Gorham Mfg. Co. v. Emery- kins & Co., Cox, Manual, No. 595. 
 Bird-Thayer Dry Goods Co., 92 
 Fed. Rep. 774-779.
 
 § 168J ilATTEUS OF PRACTICE AND EVIDENCE. 399 
 
 fact he has not complied with it.'^^ But wherever the 
 court determines that the defendant has so altered his 
 marks or packages that there is no longer any danger 
 of the public mistaking his goods for those of the plain- 
 tiff, he will be discharged.^! Where, however, the change 
 is only sufficient to avoid the letter of the decree, and 
 the defendant's mark or package is still calculated to 
 X>romote deception, under the English practice the in- 
 junction may be enlarged upon the hearing of the con- 
 tempt proceedings so as to cover the new fraud, even 
 though the motion to commit must be refused/'- The 
 rulings of the courts in this regard have taken a wide 
 range. There have been cases in which the court has 
 declined to commit upon the defendant making an offer 
 to devise such changes in his mark as would meet with 
 the approval of the court,^^ and others where the court 
 has directed the defendant to make such changes with 
 the alternative of being committed.^^ Where an in- 
 junction is in part mandatoiy and in part prohibitive, 
 and the mandatoiy portion is suspended by an appeal, 
 the court cannot punish the defendant for contempt for 
 the violation of such mandatory portion, although his 
 act is a joint violation of both portions.^^ 
 
 And a defendant who sells a stock of bottles, labels 
 and wrappers to a third party, after a decree enjoining 
 him from dealing in an infringing liquor put up in the 
 bottles, under the labels and enclosed in the wrappers, 
 under circumstances indicating that it was for the pur- 
 pose of enabling the purchaser to supply defendant's 
 former customers with the infringing goods, is guilty of 
 contempt.^^ One who is enjoined from preparing, put- 
 so — Devlin v. Devlin, 69 N. Y. 54 — Rodgers v. Nowill (2), Cox, 
 212; Cox, Manual, No. 463. Manual, No. 115; 3 DeG. M. & G. 
 
 51 — Swift V. Dey, 4 Robertson, 614. 
 611; Cox, 319. 55 — Schwarz v. Superior Court, 
 
 52— Cartier v. May, Cox, Manual, 111 Cal. 106. 
 No. 200. 56 — Societe Anonyme v. Western 
 
 53— Croft v. Day f2), Cox, Man- Distilling Co., 42 Fed. Rep. 96. 
 ual, No. 77.
 
 400 HOPKINS ON TR.VDEMARKS. [§169 
 
 ting up, selling, offering or advertising for sale, any 
 medicinal beverage made from fermented milk under the 
 name of "Matzoon" is guilty of contempt if he aids 
 another in doing the forbidden acts, as the agent or 
 servant of the other.^' Where the injunctive order runs 
 against agents, servants and employes ' 'there is no re- 
 straint laid ujDon the agent, servant, or employee per- 
 sonally, but merely as the agent, servant, or employee 
 of the enjoined defendant. "^^ One enjoined from using 
 a firm name, who continues to use stationery bearing the 
 name, left legible though having ink spread over it, is 
 giiilty of contempt,^^ as is one who publishes a cir- 
 cular reflecting upon the decree under which he is en- 
 joined.^^ 
 
 The foregoing rulings have been made in unfair trade 
 cases. It would be foreign to our purpose to go into an 
 extended discussion of the law governing contempts, 
 which ap])lies to this as to all other classes of cases. It 
 is well to note, however, that in the federal courts, at 
 least, while proceedings in contempt are not reviewable 
 on error or appeal, they may be reached by certiorari.^^ 
 
 § 169. Affidavits. — Applications for restraining orders 
 and preliminary injunctions are usually founded upon 
 and resisted by affidavits. A preliminary injunction 
 will not be awarded on ex parte affidavits unless in a 
 clear case.^'^ rpj^^ complainant's affidavits in chief must 
 
 57— Dadirrian v. Gullian, 79 33 C. C. A. 625; 63 U. S. App. 123; 
 
 Fed. Rep. 784. holding that writ of error will lie 
 
 58 — Ibid; citing Slater v. Mer- to review an order committing for 
 
 ritt, 75 N. Y. 268. contempt a witness, not a party to 
 
 59 — Hildreth v. McCaul, 74 N. Y. the cause, for his refusal to an- 
 
 Supp. 1075. swer questions. 
 
 60— Janney v. Pan-Coast Ven- 62 — Lare v. Harper & Bros., 86 
 
 tilator & Mfg. Co. (2), 131 Fed. Fed. Rep. 481; 30 C. C. A. 373; 
 
 Rep. 143. New York Asbestos Mfg. Co. v. 
 
 61 — Re Chetwood, 165 U. S. 443- Ambler Asbestos Air-cell Covering 
 
 462; Schwarz v. Superior Court, Co., 99 Fed. Rep. 85; Diamond 
 
 111 Cal. 106. Compare Butler v Match Co. v. Safe Harbor Match 
 
 Fayerweather, 91 Fed. Rep. 458; Co., 109 Fed. Rep. 154.
 
 § 169 J MATTERS OF PRACTICE AKD EVIDENCE. 401 
 
 show all the facts necessary to establish a prima facie 
 right to the injunctiou sought.'"' The defendant's affi- 
 davits may be by way of traverse, in which case no 
 counter affidavits can be offered by the comphiinant; or 
 they may set up matter by way of confession and avoid- 
 ance, in which case the complainant may produce affi- 
 davits in reply. But where such affidavits are offered 
 by the comi)lainant in reply, no further affidavits can 
 be offered by the defendant by way of rejoinder."^ 
 
 All affidavits so used must be entitled in the cause; 
 otherwise they are mere extrajudicial oaths, perjury 
 could not be assigned upon them, and they cannot be 
 considered as evidence.^""' 
 
 63 — Leclancha Battery Co. v. 65 — Hawley v. Donnelly, 8 Paige, 
 
 Western Electric Co., 21 Fed. Rep. 415; Buerk v. Imhaeuser, Fed. 
 
 538. Case No. 2107a; 10 Off. Gaz 907; 
 
 64— Day V. New England Car Goldstein v. Whelan, 62 Fed. Rep. 
 
 Spring Co., 3 Blatch. 154-159. 124. 
 
 26
 
 CHAPTER XV. 
 
 COSTS. 
 
 § 170. Generally.— In cases of unfair trade the same 
 rules as to costs obtain as in other actions. The general 
 rule is that costs follow the event. A successful plain- 
 tiff will be awarded costs/ and costs will be refused to 
 one who is unsuccessful. - 
 
 So costs will be awarded to the successful plaintiff, 
 even though he is denied damages,^ and against an in- 
 fant,^ or a married woman having a separate estate.^ 
 
 § 171. Avoiding costs by submission.— We have had 
 occasion elsewhere to refer to the iTile laid down by 
 Sir George Jessel, that the complainant in actions of 
 the character now under consideration should not give 
 
 1 — Coats V. Holbrook, 2 Sandf. 
 Ch. 586; Cox, 20; Seb. 7b; Pierce v. 
 Frank, 15 L. J. Ch. 122; Seb. 81; 
 Rodgers v. Nowill, 6 Hare, 325; 
 Seo. 82; Burgess v. Hately, 26 
 Beav. 249; Seb. 169; Burgess v. 
 Hills, 26 Beav. 244; 28 L. J. Ch. 
 S56; Seb. 170; Collins Co. v. 
 "Walker, 7 W. R. 222; Seb. 171; 
 Jurgensen v. Alexander, 24 How. 
 Pr. 269; Cox, 298; Seb. 211; Edel- 
 sten V. Edelsten, 1 DeG. J. & S. 
 185; Seb. 213; McAndrews v. Bas- 
 sett, 4 DeG. J. & S. 380; Seb. 234; 
 Chubb V. Griffiths, 35 Beav. 127; 
 Seb. 255; Field v. Lewis, Seton 
 (4th ed.), 237; Seb. 280; Weed v. 
 Peterson, 12 Abb. Pr. N. S. 178; 
 Seb. 387; Compagnie Laferme v. 
 Hendrick, Seb. 512; Sawyer v. Kel-' 
 logg, 9 Fed. Rep. 601; Cox, Man- 
 ual, 682; McLean v. Fleming, 96 
 U. S. 245; Chappell v. Davidson, 2 
 
 K. & J. 123; Seb. 136; Re Kuhn & 
 Co.'s Trademark, 53 L. J. Ch. 238. 
 Costs "are always awarded to 
 the successful side, unless there 
 has been something in the conduct 
 of the party which renders such a 
 course inequitable and unjust to 
 the losing side." Nixon, J., in 
 Bunker v. Stevens, 26 Fed. Rep. 
 245-249. 
 
 2— Bass v. Dawber, 19 L. T. N. S. 
 6z6; Seb. 310; Appeal of the Put- 
 nam Nail Co., Cox, Manual, No. 
 725; Weener v. Brayton, 152 Mass. 
 101. 
 
 3 — Weed v. Peterson, 13 Abb. Pr. 
 N. S. 178; Seb. 387. 
 
 4— Chubb V. Griffiths, 35 Beav. 
 127; Seb. 255; Cory v. Gertcken, 2 
 Madd. 49; Woolf v. Woolf, 43 Sol. 
 J. 127. 
 
 5 — Nicholls V. Kimpton, 3 Times 
 L. R. 674. 
 
 402
 
 §171 J COSTS. 403 
 
 notice to the infringer before suit;'' and it has been held 
 in this country that no demand or notice is necessary.'^ 
 It is of the gravest irajwrtance to the practitioner to bear 
 this rule in mind, whether he be for the plaintiff or de- 
 fendant. A failure to observe it will oftentimes involve 
 an innocent and injured client in the payment of costs 
 which would otherwise fall upon the other jjarty; for it 
 is no defense to an assessment of costs against the de- 
 fendant that no demand was made or notice served be- 
 fore suit.* A defendant who makes a full submission 
 will not be mulcted in costs. Thus, a label manufacturer 
 who had innocently made labels upon the order of a cus- 
 tomer evaded costs by promising to desist from the man- 
 ufacture, and offering to surrender the lithograph stone 
 with which the work was done.*^ Lord Eomilly, in a 
 leading case in which the defendants were forwarding 
 agents holding as bailee goods bearing a spurious mark, 
 gave the doctrine this succinct expression: ''It is his 
 (the defendant's) duty at once to give all the informa- 
 tion required, and to undertake that the goods shall not 
 be removed or dealt with until the spurious brand has 
 been removed, and to offer to give all facilities to the 
 person injured for that purpose. If, after that, the }3er- 
 son injured files a bill, though he will be entitled to 
 all that he asks in the shape of relief, as he might have 
 got it all without suit, he will not get from such defend- 
 ant the costs of the suit, and he may have to pay them."^** 
 This rule has been uniformly followed.^^ A defend- 
 ant may make such an offer of submission, by answer or 
 
 6 — Upmann v. Forester, L. R. 24 10 — Upmann v. Elkan, L. R. 12 
 
 Ch. D. 231. Eq. 140; Seb. 369. 
 
 7— Sawyer v. Kellogg. 9 Fed. 11— Millington v. Fox, 3 Myl. & 
 
 ^®P- ^'^l- Cr. 338; Seb. 63; Burnett v. Leuch- 
 
 ^■~^^^^- ars, 13 L. T. N. S. 495; Seb. 253; 
 
 9 — Bass, Ratcliff & Gretton v. Wharton v. Thurber, Cox, Manual, 
 
 Guggenheimer, 69 Fed. Rep. 271. 663; Nunn v. D'Albuquerque, 34 
 
 Beav. 595.
 
 404 HOPKINS ON TRADEMARKS. [§ 172 
 
 otherwise, at any stage of the proceedings, and so tlirow 
 ■upon the plaintiff all costs subsequently accruing.^ - 
 
 § 172. Submission to avoid costs must be complete. 
 —It is the necessary correlative of the rule stated in the 
 preceding section that no submission can avail a de- 
 fendant unless it is full, adequate and complete. Thus a 
 submission, otherwise good, was rendered ineffective be- 
 cause the defendant did not couple with it an offer to 
 pay all costs accrued.^ ^ An offer of submission on con- 
 dition that each party pay his own costs was held in- 
 effective.^* Further adjudication in support of the gen- 
 eral doctrine of this section will be found in the note.^^ 
 
 § 173. Costs refused successful defendant.— There are 
 a number of instances wherein a defendant against whom 
 the plaintiff has been denied relief has been left to pay 
 his own costs. These cases are not always predicated 
 upon the defendant's absolute fraud, for, even where 
 fraud could not be established, he may have been ^ilty 
 of conduct so suspicious as to justify the imposition of 
 his own costs.^^ Thus where the defendant had dealt 
 
 12 — "If the defendant had offer- Coats v. Holbrook, 2 Sandf. Ch. 
 
 ed the plaintiffs all they were en- 586; Weed v. Peterson, 12 Abb. 
 
 titled to, and after that the plain- Pr. N. S. 178. 
 
 tiffs had proceeded in the suit, I 14 — Moet v. Couston, 33 Beav. 
 
 most certainly should not have giv- 578. 
 
 en the plaintiffs a penny of the 15 — Tonge v. Ward, 21 L. T. N. 
 
 costs incurred after that period; S. 480; Seb. 321; Coats v. Hol- 
 
 indeed, I should have endeavored brook, 2 Sandf. Ch. 586; Cox, 20; 
 
 to make them pay them." Lord Seb. 79; Fennessy v. Day, 55 L. T, 
 
 Romilly in Burgess v. Hills, 26 N. S. 161. 
 
 Beav. 244; Seb. 170. And to the 16— Talcott v. Moore, 6 Hun, 
 
 same effect see the opinion of the 106; Seb. 478; Rose v. Loftus, 47 
 
 same Master of the Rolls in Moet L. J, Ch. 576; Seb. 608. Thus, 
 
 V. Couston, 33 Beav. 578; Seb. 235. vphere both plaintiff and defend- 
 
 13 — Hutchinson v. Blumberg, 51 ant made cigars falsely marked 
 
 Fed. Rep. 829 ; McAndrews v. Bas- "Habana," the English court of 
 
 sett, 4 DeG. J. & S. 380; Seb. 234; appeals dismissed the bill with- 
 
 Burgess v. Hately, 26 Beav. 249; out costs and adjudged the costs 
 
 Seb. 169; Burgess v. Hills, 26 of the appeal against the defend- 
 
 Beav. 244; Seb. 170; Collins Co. ant. Newman v. Pinto, 4 R. P. C. 
 
 V. Walker, 7 W. R. 222; Seb. 171; 508; 57 L. T. N. S. 31.
 
 § 174] COSTS. 405 
 
 in bitters, and assented to suggestions that they might 
 be passed off on the public as the "Hostetter's Bitters" 
 of the plaintiff, the court tliought the facts did not war- 
 rant an injunction, but that the defendant had invited 
 the litigation by his conduct and ought not to have his 
 costs.^''' 
 
 § 174. Miscellaneous matters.— Innocent wharfingers 
 in whose possession was found champagne bearing a 
 false brand, and who were made parties defendant to 
 an action but at once submitted to act as the court might 
 direct, were awarded their costs, and given a lien for 
 their warehouse charges, and that lien given priority 
 over the plaintiffs' claim for costs.^'^ 
 
 Where the defendant is a retail dealer, who has acted 
 innocently and handled only a small quantity of the in- 
 fringing goods, a plaintiff may not be awarded costs 
 even though the injunction issues.^ '^ Some courts ap- 
 ply this rule where it appears that the defendant's sales 
 have not been large enough to justify the expense of 
 taking an account.^^ 
 
 AMiere it appeared that the defendant had adopted 
 
 17 — Hostetter v. Van Vorst, 62 prosecute those who place the 
 
 Fed. Rep. 600. spurious goods on the market; 
 
 18 — Moet V. Pickering, L. R. 8 and although I agree that the 
 
 Ch. D. 372. plaintiifs are entitled to an in- 
 
 19 — Thus where a small retailer junction, yet I cannot think it is 
 
 was charged with infringing a the duty of the court in every case 
 
 cigarette trademark, and it was in which a small retail dealer who 
 
 shown that the transaction related has innocently (and I think that 
 
 only to five hundred cigarettes, the defendants in this case have 
 
 valued at 17s. 6d., which the de- acted innocently) happened to pur- 
 
 fendant had bought in ignorance chase a small quantity of the 
 
 of the infringement, it was said: spurious goods, to say that he 
 
 "I think that this is not the kind ought to be fixed with the costs of 
 
 of action which ought to be en- the action." Shilling, J., in Amer- 
 
 couraged. If the owner of a trade- ican Tobacco Co. v. Guest, L. R. 
 
 mark finds that it is being pirated, (1892) 1 Ch. D. 630-632. 
 surely it is not the small retailer 20 — Saxlehner v. Eisner & Men- 
 
 who ought to be punished, but an delson Co., 88 Fed. Rep. 61-70. 
 endeavor ought to be made to
 
 406 HOPKINS ON TRADEMAEKS. [§ 174 
 
 plaintiff's trademark (which consisted of words under- 
 stood by many simply to indicate quality), and did so in 
 ignorance of the plaintiff's existence, the plaintiff was 
 granted an injunction but without costs.^^ A plaintiff 
 may be denied costs because of his delay in instituting 
 suit.^^ 
 
 If in his bill the plaintiff makes specific charges 
 against the defendant which he is unable to substantiate 
 with proof, he may, under the English practice, obtain 
 an injunction with costs, but be adjudged to pay all of 
 the defendant's costs occasioned by the maldng of the 
 unfounded charge.^^ 
 
 Where the infringement was not innocent, but the de- 
 fendants offered to pay costs and publish any reasonable 
 advertisements announcing that they had no connection 
 with the plaintiffs, it was held that by ignoring this offer 
 the plaintiffs had lost their right to relief, and the ac- 
 tion was dismissed. It is doubtful if this decision would 
 be given much consideration by an American court.^^ 
 
 One who procures the preparation of an article bear- 
 ing an infringement of another's trademark will be 
 liable to refund to the manufacturer such reasonable 
 sum as he may pay to the owner of the trademark in 
 compromise of an action for the infringement, together 
 with the costs of such action.^^ 
 
 In regard to appeals, the same general rules as to 
 costs obtain as are applied by the inferior courts. Thus 
 on an appeal from a committal for contempt, based on 
 the violation of an injunction in a trademark case, the 
 upper court sustained the ruling of the lower, but, be- 
 cause the violation seemed open to dispute, gave no costs 
 of the appeal.^^ 
 
 21— Millington v. Fox, 3 Myl. & 24— Valentine v. Valentine, 31 L. 
 
 Cr. 338; Cox, Manual, 642. R. Ir. 488. 
 
 22 — Amoskeag Mfg. Co. v. Gar- 25 — Dixon v. Fawcus, 3 Ell. & 
 
 ner (2), 54 How. Pr. 298. Ell. 537. 
 
 23— Saxlehnsr v. Apollinaris Co., 26— Devlin v. Devlin, 69 N. Y. 
 
 L. R. (1897) 1 Ch. 893. 212.
 
 § 174] COSTS. 407 
 
 In the leading case of McLean v. Fleming the defend- 
 ant appealed from a decree awarding the plaintiff an 
 injunction and accounting. The supreme court reverse<l 
 the decree as to the accounting, on the ground that the 
 plaintiff was guilty of laches, but let the decree of in- 
 junction stand. It then gave plaintiff his costs in the 
 lower court, and the defendant the costs of the appeal.^^ 
 
 The costs of an unsuccessful motion to commit for 
 contempt will be taxed against the moving party. -^ The 
 costs of contempt proceedings can be taxed against a 
 defendant only where, ui)on the facts, he might have 
 been committed.^^ While it would seem the better prac- 
 tice to make no order as to costs upon the entry of inter- 
 locutory decrees, and to withhold such order until the 
 entry of final decree upon the master's report, we find 
 very respectable authority for the contrary practice.^^ 
 
 27— McLean v. Fleming, 96 U. Rep. 561-571. "Courts of equity, 
 
 S. 245. having a large discretion in mat- 
 
 28 — Hennessy v. Budde, 82 Fed. ters of costs, frequently give costs 
 
 Rep. 541. in Intermediate stages of a cause, 
 
 29 — Dence v. Brand, W. N. 1881, without waiting for the final de- 
 
 p. 31. cree." Dick, J., in Avery v. Wil- 
 
 30— The Collins Co. v. Oliver son, 20 Fed. Rep. 856-859. 
 Ames & Son Corporation, 18 Fed.
 
 APPENDIX.
 
 CONTENTS OF APPENDIX. 
 
 A. Trademark Act of July 8, 1870. Annotated. 
 
 B. Label Registration Act of June 18, 1874. Annotated. Patent 
 
 Office Rules, and Forms relative thereto. 
 
 C. Trademark Act of August 14, 1876. Annotated. 
 
 D. Trademark Act of March 3, 1881. Annotated. 
 
 E. Trademark Act of August 5, 1882, and War Department Circulars. 
 
 F. Trademark Provision of the Tariff Act of 1897. Annotated. 
 
 G. Trademark Act of February 20, 1905. Annotated. Patent Office 
 
 Rules, and Forms relative thereto. 
 
 H. Trademark Statutes of the States and Territories. Annotated. 
 
 With Forms for Registration Applications. 
 I. Canadian Trademark and Design Act, with Rules and Forms. 
 
 J. Bills of Complaint and Answers. Judicially Approved. 
 
 K. Forms of Injunction — Interlocutory and Final Decrees. 
 
 L. Classification of Registered Trademarks. 
 
 M. American and English Bibliography. 
 
 N. International Convention of March 20, 1883. 
 
 O. Trademark Provision of an Act incorporating the American Na- 
 tional Red Cross. 
 
 P. Trademark Laws of Foreign Nations. 
 
 Q. Trademark Treaties with Foreign Nations. 
 
 410
 
 APPENDIX A. 
 
 ACT OF CONGl^ESS OF JULY 8, 1870.^ 
 
 Section 77.- And be it further enacted, that any per- 
 son or firm domiciled in the United States, and any cor- 
 poration created by the authority of the United States, 
 
 1 — Although this act is no long- 
 er in force, having been held un- 
 constitutional, and the acts of 1881 
 and 1905 having been since enacted, 
 it is thought advisable to set forth 
 the earlier act, in order that the 
 decisions under it may be under- 
 stood. In Leidersdorf v. Flint (1), 
 8 Biss. 327, the validity of the act 
 of 1870 was questioned by the 
 United States circuit court, on the 
 ground that the constitution of 
 the United States did not author- 
 ize legislation by congress on the 
 subject of trademarks, except such 
 as had been actually used in com- 
 merce with foreign nations and 
 among the several states, or with 
 the Indian tribes; and in Trade- 
 mark Cases, 100 U. S. 82, the act 
 was formally declared by the su- 
 preme court to be on this ground 
 unconstitutional and invalid. But 
 this does not entitle persons hav- 
 ing marks registered under the 
 invalid act to recover back the 
 fees paid by them (Woodman v. 
 United States, 15 Ct. of CI. 541), 
 though they will be credited with 
 such fees when applying for regis- 
 tration under the new act. See Act 
 of 1881, sec. 6, infra. Nor does 
 the invalidity of the act justify 
 
 411 
 
 the disregard of injunctions grant- 
 ed under the general jurisdiction 
 of the court. Unitea States v. 
 Roche, 1 McCrary, 385. And it has 
 been held that registration of a 
 mark under the invalid act, even 
 without reregistration under the 
 act of 1881, is suflBcient to prevent 
 registration of a similar mark un- 
 der the new act of 1881. Ex parte 
 Lyon, Dupuy & Co., 28 Off. Gaz. 
 191. Since the passing of the act 
 of 1870, it has been considered in 
 the Patent Office that while, on the 
 one hand, the benefits of registra- 
 tion as trademarks were to be re- 
 served for trademarks, and for 
 trademarks only (e. g., in re 
 Parker, 13 Off. Gaz. 323, registra- 
 tion as a trademark was refused 
 to that which could at most 
 amount to a design), so, on the 
 other hand, it was only by regis- 
 tering them as trademarks, and 
 not by patenting them as designs 
 (Ex parte King, Comm. Decis. 
 1870, p. 109; Re Whyte, id. 1871, 
 p. 304), or registering them as la- 
 bels (Re Godillot, 6 Off. Gaz. 641; 
 Re Simpson & Sons, 10 id. 333; Ex 
 parte Davids & Co., 16 id. 94; Ex 
 
 2— See Act of 1881, sees. 1, 2.
 
 412 
 
 APPENDIX A. 
 
 or of any state or territory thereof, and any person, firm, 
 or corjioration resident of or located in any foreign coun- 
 try which by treaty or convention affords similar privi- 
 leges to the citizens of the United States, and who are 
 entitled to the exclusive use^ of any lawful trademark, 
 or who intend to ado^Dt and use any trademark,^ for ex- 
 clusive use within the United States, may obtain protec- 
 
 parte Schumacher & Ettlinger (1), 
 ly id. 791), that the benefits of 
 the statute could be obtained for 
 trademarks. Descriptive words 
 not registerable as trademarks 
 were properly allowed to be regis- 
 tered as labels. Ex parte Waefer- 
 ling, 16 id. 746; Ex parte Brigham, 
 20 id. 891; Ex parte Lutz, 33 id. 
 1389; and see Re Park, 12 id. 2, in 
 which it was sought to register as 
 part of a label a device for which 
 the applicant had previously 
 sought registration as a trade- 
 mark. In United States v. Marble, 
 22 id. 1366, however, the supreme 
 court of the District of Columbia 
 held that the commissioner of pat- 
 ents had no authority to refuse 
 registration to a label merely on 
 the ground that it might have been 
 registered as a trademark; but 
 in the later case otEx parte Schu- 
 macher & Ettlinger (2), 22 id. 
 1291, the commissioner again re- 
 fused registration as labels to 
 what he considered to be trade- 
 marks; and in Ex parte Moodie, 
 28 id. 1271, and Ex parte Wiesel, 
 36 id. 689, the commissioner re- 
 peated this decision, and his 
 course was in the former case up- 
 held on appeal by the supreme 
 court of the District of Columbia 
 in Ex parte Moodie, 28 id. 1271. 
 The federal courts have also held 
 that a trademark must be regis- 
 tered as such, and not copyrighted 
 
 as a label. Schumacher & Ett- 
 linger V. Wogram, 35 Fed. Rep. 
 210. It is for the commissioner to 
 decide whether what is presented 
 to him is a trademark or label. Ex 
 parte Moodie, 28 Off. Cas. 1271. 
 
 3 — In McElwee v. Blackwell, 15 
 Off. Gaz. 658. it was held that al- 
 though where registration had 
 been wrongfully granted to one, it 
 might subsequently be properly 
 granted to another who was really 
 entitled to the exclusive use, yet 
 it would not be granted to another 
 who was not entitled to the ex- 
 clusive use, even though he might 
 be entitled to use the mark to 
 some extent. And see Wright v. 
 Simpson, 15 id. 968; also Sorg v. 
 Welsh, 16 id. 910, as to admissions 
 of right in another; and Yale 
 Cigar Manufacturing Co. v. Yale, 
 30 id. 1183. Under the act of 1881 
 registration will be refused where 
 it appears that the applicant is 
 only one of several who have a 
 right to use the mark. Ex parte 
 Langdon, 61 Off. Gaz. 286. 
 
 4 — Under these words a new 
 trademark might be registered 
 prior to any actual use. Re Roths- 
 child, 7 Off. Gaz. 220; and see 
 Hoosier Drill Co. v. Ingels, 14 id. 
 785. This is not the case under 
 the act of 1881. See sees. 1 and 2, 
 notes, and Ex parte Strasburger it 
 Co., 20 Off. Gaz. 155.
 
 ACT OF CONGRESS OF JULY 8, 1870. 
 
 413 
 
 tion for such lawful trademark-- by complying with the 
 following requirements,*^ to wit: 
 
 First. By causing to be recorded in the Patent Office/ 
 the names of the parties and their residence and place of 
 business,** who desire the protection of the trademark. 
 
 Second. The class of merchandise'* and the particular 
 description of goods^^ comprised in such class, by which 
 the trademark has been or is intended to be appropriated. 
 
 5— As to what is a lawful trade- 
 mark, see infra, sec. 79. Registra- 
 tion cannot make a lawful trade- 
 mark out of that which does not 
 contain the necessary elements 
 (Moorman v. Hoge. 2 Sawy. 78; 
 Schumacher & Ettlinger v. 
 Schwenke (2), 36 Off. Gaz. 457); 
 but by sec. 7 of the act of 1881 reg- 
 istration is prima facie evidence of 
 ownership. It has been doubted 
 whether the use of a registered 
 trademark can be restrained 
 (Decker v. Decker, 52 How. Pr. 
 218); but in Glen Cove Manufac- 
 turing Co. V. Ludeman, 23 Blatchf. 
 46, an injunction was granted in 
 such a case. See also Schumacher 
 & Ettlinger v. Schwenke (2), 36 
 Ofi!. Gaz. 457. Separate registra- 
 tion must be obtained for each 
 mark which differs from another 
 by the addition of a symbol: e. g., 
 "X," "XX," "XXX," were held to 
 require separate registration. Re 
 English, Comm. Decis. 1870, 142; 
 and see Re Eagle Pencil Co., 10 
 Off. Gaz. 981. 
 
 6 — Absolute compliance with 
 these requirements is necessary on 
 the part of applicants. Re Hank- 
 inson, 8 Off. Gaz. 89. But it is not 
 necessary that the very words of 
 
 the act should be cited, so long as 
 the spirit of it is satisfied. Re 
 Vidvard & Sheehan, 8 id. 143. 
 
 7 — In Lacroix v. Escobal, 37 La. 
 Ann. 533, it was held that a French 
 citizen, who had not deposited 
 his mark in the United States pat- 
 ent office, as required by the con- 
 vention of 1869 between the United 
 States and France, was not en- 
 titled to maintain an action for in- 
 fringement. But see Society, etc. 
 de la Benedictine v. Micalovitch, 
 36 Alb. L. J. 364. 
 
 8 — The registration of the name 
 of a firm has been held to be suf- 
 ficient, without giving the particu- 
 lars as to each of the partners. 
 Smith V. Reynolds (2), 3 Off. Gaz. 
 213; 10 Blatchf. 100. 
 
 9 — This requirement has been 
 interpreted to exclude from regis- 
 tration the marks of persons other 
 than manufacturers or merchants: 
 e. g., a carpet cleaner. Re Hankin- 
 son, 8 Off. Gaz. 89. 
 
 10— It has been held that a de- 
 scription of the class and goods as 
 "paints" is sufficient (Smith v. 
 Reynolds (2), 10 Blatchf. 100), 
 and so with "alcoholic spirits" (Re 
 Boebm & Co., 8 Off. Gaz. 319) ; 
 but that "fancy goods" is insuffi-
 
 414 
 
 APPENDIX A. 
 
 Third. A description of the trademark itself^ ^ with 
 fac-similes thereof^- and the mode in which it has been 
 or is intended to be applied and used.^^ 
 
 Fourth. The length of time, if any, during which the 
 trademark has been used.^* 
 
 Fifth. The payment of a fee of twenty-five dollars, in 
 the same manner and for the same purpose as the fee 
 required for patents.^ ^ 
 
 Sixth. The compliance with such regulations as may 
 be prescribed by the commissioner of patents.^ ^ 
 
 cient, as being too general a term. 
 Re Lisner, 13 id. 455. Different 
 persons may register the same 
 trademark for different descrip- 
 tions of goods even in the same 
 class. Sorg v. Welsh, 16 id. 910. 
 In Smith v. Reynolds (2), 10 
 Blatchf. 100, and s. c. (3), 3 id. 
 213, it was held that a firm which 
 had registered a trademark for 
 "paints" was not entitled to re- 
 strain the use of the mark on 
 white lead by another firm which 
 had used the mark on that variety 
 of paint before the plaintiffs had 
 used or registered their mark; and 
 in the former case it was held that 
 the registration being bad as to 
 white lead was bad in toto, though 
 but for that it might have been 
 good. 
 
 11 — The trademark must be suf- 
 ficiently described for it to be pos- 
 sible to clearly distinguish between 
 the essential and non-essential 
 elements. Re Volta Belt Co., 8 Off. 
 Gaz. 144. 
 
 12 — The facsimile limits the ver- 
 
 bal description of the mark. Duke 
 V. Green, 16 Off. Gaz. 1094. 
 
 13 — The previous user of the ap- 
 plicants or their derivative title 
 must be stated. Ex parte Consol- 
 idated Fruit Jar Co., 16 Off. Gaz. 
 679. Only one example of the mode 
 of use will be admitted. Re Kim- 
 ball, 11 id. 1109. And see Smith 
 V. Reynolds (2), 10 Blatchf. 100. 
 
 14 — See Ex parte Consolidated 
 Fruit Jar Co., 16 Off. Gaz. 679. 
 
 15 — A fee paid can only be re- 
 covered when it was paid by actual 
 mistake: e. g., a payment in ex- 
 cess, or one not required by law. 
 When, therefore, an application 
 has failed because the proposed 
 mark was not registrable, the fee 
 paid cannot be recovered, although 
 a renewed application for the reg- 
 istration of an essentially different 
 mark has proved successful. Re 
 Block & Co., 14 Off. Gaz. 235. See 
 note 1, p. 411, supra, as to credit- 
 ing fees paid under this invalid 
 act. 
 
 16 — See sec. 81, infra, and note 
 thereto.
 
 ACT OF CONGRESS OF JULY 8, 1870. 415 
 
 Seventh. The filing of a declaration,^'^ under the oath 
 of the person or of some member of the firm or officer of 
 the cor])oration, to the effect that the party claiming 
 protection for the trademark has the right to the use of 
 the same, and that no other person, firm or corjjoration 
 has the right to such use, either in the identical form, or 
 having such near resemblance thereto as might be calcu- 
 lated to deceive,'^ and that the descri})tion and fac- 
 similes i)resented for record are true copies of the trade- 
 mark sought to be protected. 
 
 Section TS.^'-* And l>e it further enacted, chat such 
 trademark shall remain in force for thirty years from 
 the date of such registration, except in cases where such 
 trademark is claimed for and applied to articles not 
 manufactured in this countrj-, and in which it receives 
 protection under the laws of any foreign country for a 
 shorter period, in which case it shall cease to have any 
 force in this country by virtue of this act, at the same 
 time that it becomes of no effect elsewhere, and during 
 the period that it remains in force it shall entitle the 
 person, firm, or corporation registering the same to the 
 exclusive use thereof so far as regards the description 
 of goods to which it is appropriated in the statement 
 filed under oath as aforesaid, and no other person shall 
 lawfully use the same trademark, or substantially the 
 same, or so nearly resembling it as to be calculated to 
 deceive, upon substantially the same description of 
 goods.^" Provided that six months prior to the expira- 
 
 17 — As to the necessity for the person, firm or corporation has a 
 
 filing of this declaration, and for right to the use of the same, or 
 
 the production of sufficient evi- substantially the same, mark, is a 
 
 dence of it, on a trial for infringe- suflScient compliance with this re- 
 
 ment, see Smith v. Reynolds (1), quirement. Re Vidvard & Shee- 
 
 10 Blatchf. 85, where an injunc- han, 8 Off. Gaz. 143. 
 
 tion was refused on the ground of 19 — See Act of 1881, sees. 5, 7, 11 
 
 the deficiency of such evidence. 20 — An illegal registration by a 
 
 18 — A declaration that no other part owner not entitled to exclu-
 
 416 APPENDIX A. 
 
 tion of the said term of thirty years, application may be 
 made for a renewal of such registration, under regula- 
 tions to be prescribed by the commissioner of patents, 
 and the fee for such renewal shall be the same as for the 
 original registration, certificate of such renewal shall be 
 issued in the same manner as for the original registra- 
 tion, and such trademark shall remain in force for a 
 further term of thirty years ; And provided further, that 
 nothing in this section shall be construed by any court as 
 abridging or in any manner affecting unfavorably the 
 claim of any person, firm, corporation, or company to 
 any trademark after the expiration of the term for which 
 such trademark was registered. 
 
 Section 79.-^ And be it further enacted, tliat any per- 
 son or corporation who shall reproduce, copy, counter- 
 feit, or imitate any such recorded trademark, and affix 
 the same to goods of substantially the same description, 
 properties and qualities as those referred to in the regis- 
 tration,- shall be liable to an action on the case for 
 damages for such unlawful use of such trademark at the 
 suit of the owner thereof in any court of competent juris- 
 diction in the United States, and the party aggrieved 
 shall also have his remedy according to the course of 
 equity to enjoin the wrongful use of his trademark, and 
 to recover comi>ensation therefor in any court having 
 jurisdiction over the person guilty of such wrongful 
 
 sive use, was held not to justify 21— See Act of 1881, sees. 3, 7. 
 issuing another certificate to an- 22— See Osgood v. Rockwood, 11 
 other part owner of the same mark, Blatchf. 310; Fed. Cas. No. 10605, 
 in order to put him on an equal where it was held that persons 
 footing in court. McElwee v. who had registered a trademark 
 Blackwell, 15 Off. Gaz. 658. In an for prints made according to a pat- 
 interference, the applicant was ented process were not entitled un- 
 granted registration as against a der this act to an injunction 
 prior registrant whose user had against a person who had used the 
 been experimental and interrupted, mark on prints not made in ac- 
 Sternberger v. Thalheimer, 3 Off. cordance with the patent. 
 Gaz. 120.
 
 ACT OF CONGRESS OF JULY 8, 1870. 
 
 417 
 
 use.^^ The commissioner of patents-* shall not receive 
 and record any proposed trademark which is not and 
 cannot become a lawful trademark,^'^ or which is merely 
 
 23 — The United States circuit 
 courts had jurisdiction under this 
 act In cases of infringement of 
 trademarlt, even when both par- 
 ties were citizens of the same 
 state. Duwel v. Bohmer, 14 Off. 
 Gaz. 270; but see sees. 7 and 11 of 
 the act of 1881. 
 
 24 — The validity of the decisions 
 of the acting commissioner was 
 upheld in Simpson v. Wright (2), 
 15 Off. Gaz. 293. 
 
 25 — The question what may be 
 registered as being a "lawful trade- 
 mark" has been considered in 
 many cases. The device of a 
 crown is a good trademark. Smith 
 V. Reynolds (2), 10 Blatchf. 100. 
 The arms of one of the states 
 could not be registered as a trade- 
 mark. Ex parte Davids & Co., 16 
 Oil. Gaz. 94. And it has been held 
 that the same is the case with the 
 Freemasons' square and compass, 
 Re Tolle, 2 id. 415; and the word 
 "Masonic," Ex parte Smith (3), 16 
 id. 764. In Re Thomas, 14 id. 821, 
 the Freemasons' symbols were al- 
 lowed to be registered in combina- 
 tion, and Re Tolle, supra, was 
 overruled. In Ex parte King (2), 
 46 id. 119, the decision in Re 
 Thomas, 14 id. 821, was followed, 
 and the design of the badge adopt- 
 ed by the Grand Army of the Re- 
 public was allowed to be registered 
 as a trademark for writing paper 
 by a person who had no connection 
 with that society, and it was said 
 that, that society not having used 
 27 
 
 their badge as a mark on writing 
 paper, they would be infringing 
 the applicant's rights If they were 
 to begin to do so. The words 
 "Knights of Labor" were refused 
 registration as a mark for whisky 
 on this ground and because decept- 
 ive. Ex parte Bloch & Co., 40 Off. 
 Gaz. 443. A word which has be- 
 come common, e. g., "Calhoun" 
 plow, cannot be registered. Re 
 Hall & Co.. 13 id. 229. Registra- 
 tion has been refused to the fol- 
 lowing words and expressions, on 
 the ground of descriptiveness: 
 "Beeswax oil," Re Hauthaway (1), 
 Comm. Decis. 1871, 97; s. c. (2), 
 id. 284; "Razor Steel," Re Rob- 
 erts (4), id. 100; "Invisible" face 
 powder. Ex parte Palmer, id. 289; 
 "A. Richardson's Patent Union 
 Leather Splitting Machine," Re 
 Richardson, 3 Off. Gaz. 120; "Fiir 
 Familien-Gebrauch," and "Law- 
 rence Feiner Familien-Flannel," 
 Re Lawrence, 10 id. 163; "Iron 
 Stone" drain pipes. Re Rader & 
 Co., Comm. Decis., 1878, 67; 
 "Croup Tincture," Re Roach, 10 
 Off. Gaz. 333; "Crack-proof" In- 
 dia rubber, Re Goodyear Rubber 
 Co., 11 id. 1062; "Evaporated" ar- 
 ticles of food. Ex parte Alden, 15 
 id. 389; "Standard A" cigars, Ex 
 parte Cohn (1), 16 id. 680; "Drug- 
 gists' Sundries," Ex parte Cohn 
 (2), 16 id. 680; "Safety" powder, 
 Ex parte Safety Powder Co., 16 id. 
 136; "Medicated Prunes," Ex parte 
 Smith (2), 16 id. 679; "SaUn Pol-
 
 418 
 
 APPENDIX A. 
 
 ish," shoe polish, Re Brigham, 
 Comm. Decis. 1881, 38; "Swing" 
 scythe socltets, Ex 'parte Thomp- 
 son, Derby & Co., 16 Off. Gaz. 137; 
 "Granulated Dirt Killer" soap, Ex 
 parte Waeferling, 16 id. 764; 
 "Famous," merchandise generally. 
 Re Brand Stove Co., 62 Off. Gaz. 
 588; and "Splendid" flour. Ex 
 parte Stokes, 64 Off. Gaz. 437. And 
 the same has been the case with 
 respect to the figure of a fish for 
 fishing lines. Re Pratt & Farmer, 
 10 id. 866; and the representation 
 of a twig with three leaves and a 
 plum, for prunes, Ex parte Smith 
 (2), 16 id. 679; and see Popham 
 V. Wilcox, 66 N. Y. 69. On the 
 other hand, "The Blanchard 
 Churn," Re Porter Blanchard's 
 Sons, Comm. Decis. 1871, 97; 
 "Beaverine" boots and shoes. Re 
 Francis & Mallon, id. 283; and 
 "Dr. Lobenthal's Essentia Antiph- 
 thisica," Re Rohland, 10 Off. Gaz. 
 980, have been admitted to regis- 
 tration as being non-descriptive. 
 In a series of cases registration 
 has been refused on the ground 
 that the term claimed, if properly 
 applicable to the goods with re- 
 spect to which it was used, was de- 
 scriptive, but if not, was deceptive: 
 e. g., "Bromo-Quinine," Re Grove, 
 67 Off. Gaz. 1447; "American Sar- 
 dines," Re American Sardine Co., 
 3 id. 495; "Egg Macaroni," Re 
 Bole Bros., 12 id. 939; "Cachemire 
 Milano," Re Warburg & Co., 13 id. 
 44; "French Paints," Ex parte 
 Marsching & Co., 15 id. 294; "Lon- 
 don" animal foods. Ex parte 
 Knapp, 16 id. 318; but see Re 
 Green, 8 id. 729, where registration 
 
 was granted to "German Syrup." 
 On the latter ground of deceptive- 
 ness, the word "patent" cannot be 
 registered as a part of a mark for 
 an article made under an expired 
 patent. Re Richardson, 3 id. 120. 
 A geographical name is not usual- 
 ly registrable. Armistead v. Black- 
 well, 1 id. 603, "Durham" tobacco; 
 Re Tolle, 2 id. 415, "Cherry Street 
 Mills," and "Market Street Mills;" 
 Ex parte Knapp, 16 id. 318, "Lon- 
 don" animal foods; Ex parte 
 Marsching & Co., 15 id. 294, 
 "French Paints;" Ex parte Far- 
 num & Co., 18 id. 412, "Lancaster" 
 goods. But such a name may be 
 registered when arbitrarily select- 
 ed. Re Cornwall (2), 12 id. 312, 
 "Dublin" soap. Similarly, numer- 
 als may be registered when arbi- 
 trarily selected. Kinney v. Allen, 
 1 Hughes, 106; Ex parte Dawes & 
 Fanning, 1 Off. Gaz. 27; American 
 Solid Leather Button Co. v. An- 
 thony, 15 R. I. 338. But not other- 
 wise. Re Eagle Pencil Co., 10 Off. 
 Gaz. 91. It has been held that a 
 peculiarity in the form of a barrel 
 is not registrable as a trademark, 
 Moorman v. Hoge, 2 Sawy. 78 ; nor a 
 representation of such barrel when 
 applied to the goods contained in 
 it. Ex parte Halliday Bros., 16 Off. 
 Gaz. 500; nor is a special kind of 
 barrel-hoop registrable. Re Kane 
 & Co., 9 id. 105. But see Cook v. 
 Starkweather, 13 Abb. Pr. N. S. 
 392, A special collar box was held 
 not to constitute a trademark, Car- 
 rington v. Libby, 14 Blatchf. 128; 
 and a sampler pattern was refused 
 registration. Re Parker, 13 Off- 
 Gaz. 323; and a strip of tobacco
 
 ACT OF CONGRESS OF JULY 8, 1870. 
 
 419 
 
 Intended to be wrapped around the 
 mouthpiece of cigarettes, on the 
 ground that it was Intended to 
 serve purposes of convenience 
 rather than of identification. Re 
 Gordon, 12 id. 517; and the use of 
 a tin tag or ticket on the goods, 
 irrespective of shape and de- 
 sign, is no trademark, Lorillard v. 
 Pride, 28 Fed. Rep. 434; though a 
 tin tag of special shape, size and 
 color may be, Lorillard v. Wight, 
 15 Fed. Rep. 383. There is no 
 trademark in the shape of a plug 
 of tobacco.. Liggett & Myers To- 
 bacco Co. V. Hymes, 20 Fed. Rep. 
 883; or of a box. Sawyer v. Horn, 
 4 Hughes, 239; Ball v. Siegel, 116 
 111. 137; or of sticks of chewing 
 gum, Adams v. Heisel, 31 Fed. 
 Rep. 279; or of the frame of a 
 sewing machine originally made 
 under a patent, Wilcox & Gibbs 
 Sewing Machine Co. v. Gibbons' 
 Frame, 21 Blatchf. 431; Brill v. 
 Singer Manufacturing Co., 41 Ohio 
 St. 127; nor in a manner of ar- 
 ranging in boxes cakes of soap 
 wrapped in differently colored pa- 
 per wrappers, Davis v. Davis, 27 
 Fed. Rep. 490; nor in a novi de 
 plume, Clemens v. Belford, 11 Biss. 
 459. But registration has been 
 granted to a peculiarly shaped 
 stick intended to be so placed in 
 a roll of carpet as to show an oc- 
 tagonal ring at each end, Lowell 
 Manufacturing Co. v. Larned, Fed. 
 Cas. No. 8570. Registration can- 
 not be granted to minor and non- 
 essential features in a compound 
 mark. Ex parte Coats, 16 Off. Gaz. 
 544. Occasionally a mark has been 
 allowed to be registered in alter- 
 native forms, e. g., "The Star 
 Shirt," the same words with the 
 figure of a star, and "The * Shirt." 
 Morrison v. Case, 9 Blatchf. 548; 
 
 the figure of a lion, the word 
 "Lion," or both, Re Weaver, 10 Off. 
 Gaz. 1; and see Re Park, 12 id. 2; 
 Re Thomas, 14 id. 821; Ex parte 
 Peper, 16 id. 678. A bad trade- 
 mark does not become a good one 
 by the addition of unobjectionable 
 elements. Re Blakeslee & Co., 
 Comm. Decis. 1871, 284, "Cundu- 
 rango Ointment Co.;" Re Dick & 
 Co. 9 Off. Gaz. 538. "D. D. & Co. 
 tasteless" drugs; Re Rader & Co., 
 13 id. 596, "Iron Stone" in an oval 
 border. But it appears to be possi- 
 ble for two marks, which separate- 
 ly are not good trademarks, to 
 form one in combination. Ex parte 
 Davids & Co., 16 id. 94. A trade- 
 mark cannot be registered for the 
 purpose of being used by all the 
 members of an association on 
 goods of any quality, nor can a 
 mark which is intended to be used 
 in furthering a scheme for the re- 
 straint of trade. Ex parte Cigar 
 Makers' Association, 16 id. 958; 
 and in Schneider v. Williams, 44 
 N. J. Eq. 391, the court refused to 
 protect such a mark at the in- 
 stance of a member of the associa- 
 tion. In Strasser v. Moonelis. 108 
 N. Y. 611; People v. Fisher, 57 N. 
 Y. Sup. Ct. 552; Allen v. McCar- 
 thy, 37 Minn. 347; and Bloete v. 
 Simon, 49 Abb. N. C. 88, however, 
 a different view was taken of the 
 propriety of such a mark. It seems 
 that the decision of a competent 
 court as to the validity of a mark 
 is binding upon the patent oflBce. 
 Re India-rubber Comb Co., 8 Off. 
 Gaz. 905. If an application is re- 
 fused on the ground that the pro- 
 posed mark is not registrable, a 
 renewed application for the regis- 
 tration of a mark not open to ob- 
 jection must be treated as a new 
 application, and it cannot be treat-
 
 420 
 
 APPENDIX A. 
 
 the name of a person, fiiiu, or corporation only,^® unac- 
 companied by a mark sufficient to distinguish it from the 
 same name where used by other persons, or which is 
 identical with the trademark appropriated to the same 
 class of merchandise and belonging to a different owner 
 and already registered or received for registration, or 
 which so nearly resembles such last mentioned trade- 
 mark as to be likely to deceive the public.^" Provided, 
 that this section shall not prevent the registry of any 
 lawful trademark rightfully used at the time of the pas- 
 
 sage of this act.-^ 
 
 ed as an amendment of the original 
 application, nor can the fee orig- 
 inally paid be returned. Re Block 
 & Co., 14 id. 235. 
 
 26— Thus, in Re Rowe & Post, 
 9 Off. Gaz. 496, the name "The 
 New York Cutlery Co." was re- 
 fused registration as a new mark. 
 As to the registration of names as 
 old marks, see Re Porter Blanch- 
 ard's Sons, Comm. Decis. 1871,97; 
 Re Roberts (1), id. 113; s. c. (2), 
 id. 100; s. c. (3), id. 101; Re India- 
 rubber Comb Co., 8 Off. Gaz. 905; 
 Re Consolidated Fruit Jar Co., 14 
 id. 269; Ex parte Davids & Co., 16 
 id. 94; Re Creedmore Cartridge 
 Co., 56 id. 1333. The prohibition 
 does not extend to the registration 
 of the name of a person other than 
 the applicant, and such names 
 may be registered, at all events 
 with their owners' consent, if liv- 
 ing. Ex parte Sullivan & Burke, 
 16 id. 765; Ex parte Pace, Talbott 
 & Co., 16 id. 909. 
 
 27 — Thus, in Re American Lu- 
 bricating Oil Co., 9 Off. Gaz. 687, 
 registration was refused to the 
 word "Star" as a trademark on 
 oil, the device of a star having 
 already been registered for the 
 same article; so in Re Coggin, 
 
 Kidder & Co., 11 id. 1109, to a de- 
 vice in which the principal feature 
 was the name "Haxall," which had 
 long been the trademark of an- 
 other firm; so in Re Bush & Co., 
 10 id. 164, to a combination mark 
 consisting of the applicant's own 
 registered trademark and two other 
 devices appropriated by other 
 firms; so in Ex parte Claire, 15 id. 
 248, to the words "Black Swan," 
 the word "Swan" being already 
 registered; so in Ex parte Smith 
 (1), 16 id. 679, to "A. S. California 
 Family * Soap," "California" and 
 " * " being already separately on 
 the register; and see Ex parte 
 Weisert Bros., 16 id. 680. On the 
 other hand, in Re Imbs, 10 id. 463, 
 registration was granted, notwith- 
 standing that two other marks 
 contained somewhat similar feat- 
 ures; and in Re Cornwall (1), 12 
 id. 138, a device of a star and a 
 crescent was registered, although 
 a star had previously been regis- 
 tered. 
 
 28 — Under this proviso registra- 
 tion was granted to a name used 
 as a trademark before 1870, e. g., 
 "The India-rubber Comb Co. of 
 New York," Re India Rubber Comb 
 Co., 8 Off. Gaz. 905; "The Rubber
 
 ACT OF CONGRESS OF JULY 8, 1870. 
 
 421 
 
 Section SO.^" And be it further enacted, that the time 
 of the receipt of any trademark at the Patent Office for 
 registration shall be noted and recorded and copies of 
 the trademark and of the date of the receipt thereof, and 
 of the statement filed therewith, under the seal of the 
 Patent Office, certified by the commissioner, shall be evi- 
 dence in any suit in which such trademark shall ha 
 brought into controversy. 
 
 Section 81.^*^ And be it further enacted, that the com- 
 missioner of patents is authorized to make rules and 
 regulations"'^ and to prescribe forms for the transfer of 
 
 Clothing Co.," Re Rubber Clothing 
 Co., 10 Id. 111. See Re Dole Bros., 
 12 id. 939; Re Consolidated Fruit 
 Jar Co., 14 id. 369; Ex par^e Con- 
 solidated Fruit Jar Co., 16 id. 679. 
 This saving proviso, is, however, 
 omitted from the act of 1881, so 
 that the prohibition as to names, 
 etc., is universal. See Act of 1881, 
 sec. 3, and Ex parte Fairchild, 21 
 Off. Gaz. 789, in which case regis- 
 tration was refused to a name 
 which had been used as a trade- 
 mark for twenty years, and had 
 been registered under the Act of 
 1870. 
 
 29— See Act of 1881, sees. 3, 4. 
 
 30— See Act of 1881, sec. 12. 
 
 31 — It was formerly decided that 
 the authority given to the commis- 
 sioner by section 81 to make regu- 
 lations empowered him to declare 
 an interference in a trademark 
 case, for the purpose of deciding a 
 question of title to the trademark, 
 on the analogy of the practice in 
 patent cases. Lantz Bros. & Co. v. 
 Schultz & Co., 9 Off. Gaz. 791; 
 Duke V. Green, 16 id. 1094. And 
 though it was thought in Swift v. 
 Peters, 11 id. 1110, that the ques- 
 tion whether a registered propri- 
 etor of a mark was entitled to the 
 
 exclusive use of it against an ex- 
 partner was a question for a court 
 of law, and not for the office, it 
 ■was held in Hoosier Drill Co. v. 
 Ingels, 14 id. 785, that, in investi- 
 gating the title of the mark, all 
 matters relating to the ownership 
 should be gone into; and in Han- 
 ford V. Wescott, 16 id. 1181, Fed. 
 Cas. No. 6022, it was held that a 
 decision of the examiner of inter- 
 ferences, unappealed from, was 
 conclusive as to the right to a 
 mark; and see Josselyn v. Swezey 
 & Dart, 15 Off. Gaz. 702, as tore- 
 opening the evidence taken on an 
 interference, and Simpson v. 
 Wright (1), 15 id. 248, and s. c. 
 (2), 15 id. 293, as to rehearing an 
 interference. After the case of 
 United States v. Steffens, 100 U. 
 S. 82, it was held that the Patent 
 Office has no longer any authority 
 to decide questions of disputed 
 titles to trademarks, or to declare 
 interferences in such cases. Brauu 
 & Co. V. Blackwell, 19 Off. Gaz. 
 481; and see Ex parte Stvashurger 
 & Co., 20 id. 155. and Jacoby & Co. 
 v. Lopez & Co., 23 id. 342. And in 
 Yale Cigar Mfg. Co. v. Yale. 30 id. 
 1183, it was decided that a declara- 
 tion of interference is authorized
 
 422 APPENDIX A. 
 
 the right to use such trademarks, conforming as nearly 
 as practicable to the requirements of the law respecting 
 the transfer and transmission of copyrights. 
 
 Section 82.^- And be it further enacted, that any i^er- 
 son who shall procure the registry of any trademark, 
 or of himself as the owner thereof, or an entry respect- 
 ing a trademark, in the Patent Office under this act, by 
 making any false or fraudulent representations or decla- 
 ration verbally or in writing, or by any fraudulent means, 
 shall be liable to pay damages in consequence of any 
 such registry or entiy to the jDcrson injured thereby, to 
 be recovered in an action on the case in any court of 
 competent jurisdiction within the United States. 
 
 Section 83.^^ And be it further enacted, that nothing 
 in this act shall jorevent, lessen, impeach or avoid, any 
 remedy at law or in equity which any party aggrieved 
 by any wrongful use of any trademark might have had 
 if this act had not been passed.^'* 
 
 Section 84.^^ And be it further enacted, that no action 
 shall be maintained under the provisions of this act by 
 any person claiming the exclusive right to any trademark 
 which is used or claimed in any unlawful business or 
 upon any article which is injurious in itself, or upon any 
 trademark which has been fraudulently obtained, or 
 which has been formed and used with the design of de- 
 
 by section 3 of the act of 1881. In register, practically to displace the 
 
 such cases the only duty of the registered owner, though his mark 
 
 office is to decide whether the op- is not removed from the register, 
 
 ponent has or has not a better title Ibid. For the present rule as to 
 
 than the applicant, not to decide interferences see note 7 to sec. 3 
 
 any further question. Ibid. If, on of the Act of 1881; and see § 7, 
 
 an interference between an appli- A'ct of 1905. 
 
 cant and a registered owner with 32 — See Act of 1881. sec. 9. 
 
 respect to the same mark, the 33 — See Act of 1881, sec. 10. 
 
 right to registration is adjudged to 34 — See Osgood v. Rockwood, 11 
 
 the applicant, notwithstanding the Blatchf. 310; Fed. Cas. No. 10605; 
 
 opposition of the registered owner, United States v. Roche, 1 McCrary, 
 
 the result is, while strictly giving 385; Fed. Cas. No. 16180. 
 
 the applicant merely the right to 35 — See Act of 1881, sec. 8.
 
 ACT OF CONGRESS OF JULY 8, 1870. 
 
 423 
 
 ceiving the public in the purchase or use of any article 
 of merchandise.^" 
 
 36 — It seems that this act pro- stead v. Blackwell, 1 Off. Gaz. 603 
 
 vided no means for removing from 
 registration a mark which was 
 wrongfully registered, e. g., a mark 
 which did not contain any of the 
 essential particulars. See Armi- 
 
 McElwee v. Blackwell, 15 id. 658 
 Wright V. Simpson, 15 id. 968 
 Yale Cigar Mfg. Co. v. Yale, 30 id 
 1183.
 
 APPENDIX B. 
 
 LABEL ACT OF JUNE 18, 1874. 
 
 (18 Statutes at Large, 78.) 
 
 An act to amend the law relating to patents, trademarks 
 and copyrights. 
 
 Section 3. That in the construction of this act the 
 words ''engraving," "cut" and "print" shall be applied 
 only to pictorial illustrations or works connected with 
 the fine arts, and no prints or labels designed to be used 
 for any other articles of manufacture shall be entered 
 under the copyright law, but may be registered in the 
 Patent Oflfice. And the commissioner of patents is hereby 
 charged with the supervision and control of the entry or 
 registry of such prints or labels, in conformity with the 
 regulations provided by law as to copyright of prints, 
 except that there shall be paid for recording the title of 
 any print or label not a trademark, six dollars, which 
 shall cover the expense of furnishing a copy of the record 
 under the seal of the commissioner of patents, to the 
 party entering the same.^ 
 
 1 — This law can be sustained and no possible influence upon 
 
 only under the constitutional del- science or the useful arts." Mr. 
 
 egation of authority to congress to Justice Field in Higgins v. KeufEel, 
 
 legislate upon copyrights. 140 U. S. 428. 
 
 The provision quoted has refer- No action at law or in equity 
 
 cnce only to such writings as are can be maintained for the in- 
 
 the result of intellectual labor and fringement of a label so registered 
 
 are founded in the creative powers (copyrighted) unless the provision 
 
 of the mind. of the copyright law in regard to 
 
 "It does not have any reference the notice has been complied with, 
 to labels which simply designate or i. e., "by inscribing upon some vis- 
 describe the articles to which they ible portion thereof, or of the sub- 
 are attached, and which have no stance on which the same shall be 
 value separated from the articles, mounted, the following words, 
 
 424
 
 LABEL ACT OF JUNE 18, 1874. 
 
 425 
 
 viz.: 'Entered according to Act of 
 
 Congress, in the year , by 
 
 A. B., in ttie office of the Librarian 
 of Congress, at Washington;' or 
 (at the option of the registrant) 
 the word 'Copyright,' together with 
 the year the copyright was entered, 
 and the name of the party by 
 whom it was taken out;" thus, 
 
 "Copyright. 18 , by A. B." Hig- 
 
 glns V. Keuffel, 140 U. S. 428. 
 
 It is manifest that under this de- 
 cision the act affords no protection 
 to labels, and registration under it 
 is idle. Luby, Patent Office Prac- 
 tice, p. 121. But until there is a 
 decision declaring the law uncon- 
 stitutional the Patent Office is open 
 for this class of registration. Ex 
 parte H. J. Heinz Co., 62 Off. Gaz. 
 1064. It is held, however, that a 
 label will not be admitted to reg- 
 istry unless it has the same degree 
 of artistic excellence as would en- 
 title It to copyright in the office of 
 the Librarian of Congress. Ex 
 parte Palmer, 58 Off. Gaz. 383. And 
 labels containing or consisting of 
 matter constituting trademarks 
 will not be registered until such 
 trademark matter has been regis- 
 tered as trademark. Ex parte Dia- 
 mond Laboratory Co., 44 MSS. Dec. 
 19; Ex parte Ruckstuhl, 56 Off. 
 Gaz. 927. A label bearing the 
 name and address of the owner, 
 the name of the article to which 
 it is applied, with the price and 
 directions for use, exhibiting no 
 attempt at artistic or literary 
 merit, will not be registered. Ex 
 parte Eldredge Co., 55 Off. Gaz. 
 1278. The same ruling has been 
 made as to a label purely descript- 
 ive of the articles to which it is 
 intended to be applied. Ex parte 
 C. G. Hainline & Co., 58 Off. Gaz. 
 947. 
 
 Prints and labels defined. — "Reg- 
 istered labels or prints and trade- 
 marks are recognized by the terms 
 of the law and decisions of the 
 courts as applicable only to some 
 kind of merchandise: labels, as 
 giving the names of the manufac- 
 turers, place of manufacture, na- 
 ture or quality of goods, directions 
 for use. and the like." Doolittle, 
 Assistant Commissioner, in Ex 
 parte Parker, 13 Off. Gaz. 323. 
 
 Long prior to the decision of 
 Higgins V. Keuffel, 140 U. S. 428 
 (supra). Judge Blatchford had 
 held that this section was purely 
 a copyright act, and that under 
 the general copyright regulation 
 of congress (sec. 4956, R. S.) no 
 person could claim protection for 
 a label so registered unless "be- 
 fore publication" he had deposited 
 a printed copy of the title of the 
 article in respect of which the 
 copyright was claimed, in the Pat- 
 ent Office. Marsh v. Warren, 14 
 Blatchf. 263; 14 Off. Gaz. 678; Fed. 
 Cas. No. 9121; 16 Fed. Cas. 821. 
 
 It has been held that the mere 
 fact that words or designs which 
 appear upon the label might be 
 used as trademarks does not pre- 
 vent registration under this act. 
 Ex parte Orcutt & Son, 8 Off. Gaz. 
 276; and in another early case the 
 applicant's label was admitted to 
 registry, but certain "arbitrary 
 words" and "fanciful figures" were 
 first refused or stricken out of the 
 label, and the commissioner sug- 
 gested that they should be regis- 
 tered as trademarks. Ex parte W. 
 Simpson & Sons. 10 Off. Gaz. 334. 
 But as indicated in the first por- 
 tion of this note, the prevailing 
 doctrine was that "the presence in 
 a label of matter registrable as a 
 trademark excludes the whole
 
 426 
 
 APPENDIX B. 
 
 from registration." Ex parte Thad- 
 deus Davids & Co.. 16 Off. Gaz. 
 94. It has been held by the su- 
 preme court of the District of Co- 
 lumbia, however, that the commis- 
 sioner of patents has no discre- 
 tion to determine whether a par- 
 ticular label should be classed as 
 a trademark or as only a label. 
 That his duties as respects this 
 act are purely ministerial, and 
 mandamus will lie to compel him 
 to register any label properly pre- 
 sented for registration. United 
 States ex rel. Wilcox & Gibbs Sew- 
 ing Machine Co. v. Marble, 1 
 Mackey, 284; 22 Off. Gaz. 1366; 
 United States ex rel. Schumacher 
 V. Marble, 3 Mackey, 32. And it 
 is now settled that a print will not 
 be refused registration "even 
 though it may contain matter ca- 
 pable of sequestration as a trade- 
 mark, not in fact registered as a 
 trademark." Greeley, Commis- 
 sioner, in Ex parte United States 
 Playing Card Co., 82 Off. Gaz. 1209, 
 1210. 
 
 In regard to this act, the Pat- 
 ent Office has adopted the follow- 
 ing rule: "These sections of stat- 
 utes (referring to sections 3, 4 and 
 5 of the act of June 18, 1874) are 
 construed as authorizing the reg- 
 istry of 'prints' and 'labels.' A 
 label is a device or representation 
 not borne by an article of manu- 
 facture or vendible commodity. A 
 print is a device or representation 
 not borne by an article of mianu- 
 facture or vendible commodity, but 
 in some fashion pertaining there- 
 to — such, for instance, as a pic- 
 torial advertisement thereof. A 
 label cannot be registered if it 
 hear a device capable of registra- 
 tion as a trademark, until after 
 such device is registered as a 
 
 trademark. Both labels and prints, 
 in order to be entitled to registry, 
 must be intellectual productions in 
 the degree required by the copy- 
 right law." 
 
 The restriction contained in this 
 rule as to the registration of la- 
 bels containing a device capable 
 of sequestration as a trademark 
 does not apply to a print contain- 
 ing such a device, and it will be 
 admitted to registration, even 
 though it may contain a device so 
 capable of sequestration as a trade- 
 mark, and that device has not been 
 registered. Ex parte United States 
 Playing Card Co.. 82 Off. Gaz. 1209. 
 The Patent Office has furnished 
 the following information to appli- 
 cants for the registration of prints 
 and labels under this act, and 
 forms for use in making applica- 
 tion for such registration: 
 
 "The so-called print and label 
 section of the copyright statute, 
 approved June 18, 1874, is con- 
 strued to provide for the registra- 
 tion of any print or label without 
 examination as to its novelty. 
 
 "An adverse decision by the ex- 
 aminer who has charge of the reg- 
 istration of prints and labels, upon 
 an applicant's right to have a 
 print or label registered, will be 
 reviewed by the commissioner in 
 person, on petition, without fee. 
 
 "The word 'print,' as used in 
 this act, so far as it relates to reg- 
 istration in the Patent Office, is de- 
 fined as an artistic representation 
 or intellectual production not 
 borne by an article of manufac- 
 ture or vendible commodity, but in 
 some fashion pertaining thereto — 
 such, for instance, as an advertise- 
 ment thereof. 
 
 "The word 'label,' as used in this 
 act, so far as it relates to registra-
 
 LABEL ACT OP JUNE 18, 1874. 
 
 427 
 
 tion in the Patent Office, Is de- 
 fined as an artistic representation 
 or intellectual production im- 
 pressed or stamped directly upon 
 the articles of manufacture, or upon 
 a slip or piece of ppper or other ma- 
 terial, to be attached In any man- 
 ner to manufactured articles, or 
 to bottles, boxes, and packages 
 containing them, to indicate the 
 contents of the package, the name 
 of the manufacturer, or the place 
 of manufacture, the quality of 
 goods, directions for use, etc. 
 
 "By the words 'articles of man- 
 ufacture' (to which such print or 
 label is applicable by this act) is 
 meant all vendible commodities 
 produced by hand, machinery, or 
 art. 
 
 "No print or label can be regis- 
 tered unless it properly belongs to 
 an article of commerce and is as 
 above defined. 
 
 "To entitle the proprietor of any 
 such print or label to register the 
 same in the Patent Office, the ap- 
 plication for the registration there- 
 of must be made to the commis- 
 sioner of patents, and said appli- 
 cation should be signed by the 
 proprietor or his agent. There 
 must also be filed in the Patent 
 Office five copies of the print or 
 label one of which, when the print 
 or label is registered, shall be cer- 
 tified under the seal of the commis- 
 
 sioner of patents and returned to 
 the proprietor. 
 
 "The certificate of such registra- 
 tion will continue in force for 
 twenty-eight years. 
 
 "The certificate may be contin- 
 ued for a further term of fourteen 
 years upon filing a second appli- 
 cation within six months before 
 the expiration of the term of the 
 original certificate, and complying 
 with all other regulations with re- 
 gard to original applications. 
 Within two months from the date 
 of said renewal, the applicant 
 must cause a copy of the record 
 thereof to be published for four 
 weeks in one or more newspapers 
 printed in the United States. 
 
 "The fee for registration of a 
 print or label is $6, to be paid in 
 the same manner as fees for trade- 
 marks. 
 
 "The attention of persons con- 
 templating the registry of a print 
 or label in the Patent Office is 
 called to the decision of the United 
 States supreme court in Higgins v. 
 Keuffel, 55 0. G. 1139; 140 U. S. 
 428; to the decision of the United 
 States circuit court in Marsh et al. 
 V. Warren et al, 14 0. G. 678, and 
 to the decisions of the commis- 
 sioner of patents in E.r parte 
 United States Playing Card Co.. 82 
 O. G. 1209, and Ex parte Mahn, 82 
 O. G. 1210."
 
 RULES GOVERNING THE REGISTRATION OF 
 
 PRINTS AND LABELS IN THE 
 
 PATENT OFFICE. 
 
 United States Patent Office, 
 
 Washington, D. C, July 1 1902. 
 The following rules, designed to be in strict accordance 
 with the provisions of the copyright law, for the registra- 
 tion of prints and labels, are published for gratuitous 
 distribution. 
 
 Applicants for registration and their attorneys are ad- 
 vised that their business will be facilitated by the observ- 
 ance of the forms on pages 438-441. 
 
 F. I. Allen, 
 Commissioner of Patents. 
 
 CORKESPONDEN CE . 
 
 1. All business with the office should be transacted in 
 writing. Unless by the consent of all parties, the action 
 of the office will be based exclusively on the written 
 record. No attention will be paid to any alleged oral 
 promise, stipulation, or understanding in relation to 
 which there is disagreement or doubt. 
 
 2. Applicants and attorneys will be required to con- 
 duct their business with the office with decorum and cour- 
 tesy. Papers presented in violation of this requirement 
 will be returned. But all such papers will first be sub- 
 mitted to the Commissioner, and only returned by his 
 direct order. 
 
 3. All letters should be addressed to "The Commis- 
 sioner of Patents"; and all remittances by postal order, 
 check, or draft should be to his order. 
 
 4. A separate letter should in every case be written in 
 relation to each distinct subject of inquiry or application. 
 
 428
 
 LABEL ACT OP JUNE 18, 1874. 429 
 
 Complaints against the examiner, assignments for record, 
 fees, and orders for copies or abstracts must be sent to 
 the office in separate letters. 
 
 5. Letters relating to pending applications should re- 
 fer to the name of the applicant and date of filing. Let- 
 ters relating to registered prints and labels should refer 
 to the name of registrant and immber and date of cer- 
 tificate. 
 
 6. The personal attendance of applicants at the Patent 
 Office is unnecessar}\ Their business can ]>e transacted 
 by correspondence. 
 
 7. When an attorney shall have filed his power of at- 
 torney, duly executed, the correspondence will be held 
 with him. 
 
 8. A double correspondence with an applicant and his 
 attorney, or with two attorneys, can not generally be al- 
 lowed. 
 
 9. The office can not undertake to respond to inquiries 
 propounded with a view to ascertain whether certain 
 prints and labels have been registered, or, if so to whom, 
 or for what goods ; nor can it give advice as to the nature 
 and extent of the protection afforded by the law, or act 
 as its expounder, except as questions may arise upon ap- 
 plications regularly filed. 
 
 10. Express charges, freight, postage, and all other 
 charges on matter sent to the Patent Office must be pre- 
 paid in full ; otherwise it will not be received. 
 
 ATTORNEYS. 
 
 11. An applicant may prosecute his own case, but he is 
 advised, unless familiar with such matters, to employ a 
 competent attorney. The office can not aid in the selec- 
 tion of any attorney. An applicant may be represented 
 by any person who is registered under the provisions of 
 Rule 17 of the Eules of Practice of tlie Patent Office to 
 prosecute applications for patents. 
 
 12. Before any attorney, original or associate, will be
 
 430 ■ ^^PPENDIX B. 
 
 allowed to inspect papers or take action of any kind, liis 
 power of attorney must be filed. But general powers 
 given by a principal to an associate can not be considered. 
 In each application the written authorization must be 
 filed. A power of attorney purporting to have been given 
 to a firm or copartnership will not be recognized, either in 
 favor of the firm or of any of its members, unless all its 
 members shall be named in such power of attorney. 
 
 13. Substitution or association can be made by an at- 
 torney upon the written authorization of his principal; 
 but such authorization will not empower the second at- 
 torney to appoint a third. 
 
 14. Powers of attorney may be revoked at any stage 
 in the proceedings of a case upon application to and ap- 
 proval by the Commissioner; and when so revoked the 
 oSice will communicate directly with the applicant, or 
 such other attorney as he may appoint. An attorney will 
 be promptly notified by the docket clerk of the revocation 
 of his power of attorney. 
 
 15. For gross misconduct the Commissioner may re- 
 fuse to recognize any person as an attorney either gen- 
 erally or in any particular case ; but the reasons for such 
 refusal will be duly recorded and be subject to the ap- 
 proval of the Secretary of the Interior. 
 
 WHO MAY EEGISTER A PRINT OR LABEL. 
 
 16. The author of any print or label, who is a citizen 
 or resident of the United States, or who is a subject or 
 citizen of any country to whose subjects or citizens the 
 United States has extended the benefits of copyright, is 
 privileged to obtain registration in the United States. 
 
 Any person to whom an author who has the privilege of 
 copyright in the United States has transferred his copy- 
 right can apply for and obtain a copyright entry as a 
 proprietor. 
 
 17. By the act of March 3, 1891, which went into effect 
 on July 1 of the same year, the United States Congress,
 
 LABEL ACT OP JUNE 18, 1874. 431 
 
 by amendment of tlie then existing copyright law, re- 
 moved the limitation of the i)rivilege of copyright to 
 citizens of the United States and made it possible for 
 foreign authors to obtain copyright in the United States 
 upon the same terms as native authors. The last section 
 of this statute limits its application as follows: 
 
 That this act shall only apply to a citizen or subject of a foreign 
 state or nation when such foreign state or nation permits to citizens of 
 the United States of America the benefit of copyright on substantially 
 the same basis as (to) its own citizens, and when such foreign state or 
 nation is a party to an international agreement which provides for 
 reciprocity in the granting of copyright, by the terms of which agree- 
 ment the United States of America may at its pleasure become a party 
 to such agreement. The existence of either of the conditions aforesaid 
 shall be determined by the President of the United States by procla- 
 mation made from time to time as the purposes of this act may require. 
 
 Under the operation of this provision, the privileges 
 of copyright in the United States have been extended by 
 Presidential proclamations to the authors of Belgium, 
 Chile, Costa Kica, Denmark, France, Germany, Great 
 Britain and her possessions (Australia, Canada, India, 
 etc.), Italy, Mexico, Netherlands (Holland) and posses- 
 sions, Portugal, Spain, and Switzerland. 
 
 The authors of the countries named, therefore, and 
 their assigns, as copyright proprietors, can obtain copy- 
 right protection for their prints and labels in the United 
 States upon the same conditions as American authors. 
 
 Under the authority of the opinions of the Attorney- 
 General dated December 2, 1898, and February 19, 1902, 
 residents of Cuba, Hawaii, and Porto Rico are entitled to 
 the benefits of the copyright laws relating to the registra- 
 tion of prints and labels. 
 
 THE APPLICATION. 
 
 18. To entitle the author or proprietor of any such 
 print or label to register the same in the Patent Office, the 
 application for registration thereof must be made to the 
 Commissioner of Patents, and the said application should
 
 432 APPENDIX B. 
 
 be signed by the author or proprietor, or for the author 
 or proprietor by a duly authorized agent. 
 
 19. A complete application comprises— 
 
 (a) A statement addressed to the Commissioner of 
 Patents, disclosing applicant's name, nationality, and 
 place of doing business; whether author or proprietor, 
 and, if proprietor, a disclosure of the nationality of the 
 author; the title of the print or label, and the name of 
 the article of manufacture for which the print or label 
 is to be used. 
 
 {b) Ten copies of the print or label, one of which, 
 when the print or label is registered, shall be certified 
 under the seal of the Commissioner of Patents and re- 
 turned to the author or proprietor. 
 
 (c) A statement of its nonpublication prior to date of 
 filing. 
 
 (d) A fee of $6. 
 
 20. Tlie title of the print or label must appear on the 
 copies filed. 
 
 21. The deposit of the 10 copies required should be 
 made before the publication of the print or label, the law 
 providing that no person shall be entitled to a copyright 
 unless he shall also not later than the date of publication 
 thereof, in this or any foreign country, deliver the re- 
 quired copies of the i^rint or label in the office of registry. 
 
 22. Pending applications are preserved in secrecy, and 
 no infonnation will be given without authority of the 
 applicant respecting the filing of an application for the 
 registration of a print or label by any person, or the sub- 
 ject-matter thereof, unless it shall, in the opinion of the 
 Commissioner, be necessary to the proper conduct of 
 business before the office. 
 
 EXAMINATION OF APPLICATIONS. 
 
 23. The so-called print and label section of the copy- 
 right statute, approved June 18, 1874, is construed to 
 provide for the registration of any print or label without 
 examination as to it-^ novelty.
 
 LABEL ACT OF JUNE 18, 1874. 433 
 
 24. All applications for registration are considered 
 in the first instance by tlie examiner. AVlienever on ex- 
 amination of an application registration is refused for 
 any reason whatever the applicant will be notified there- 
 of. The reasons for such rejection will be stated, and 
 such information will be given as may be useful in aiding 
 the applicant to judge of the propriety of further prose- 
 cuting his apijlication. 
 
 25. The examination of an application and the action 
 thereon will be directed throughout to the merits, but in 
 each letter the examiner shall state or refer to all his ob- 
 jections. 
 
 AMENDMENTS. 
 
 26. The ai)plication may be amended to correct infor- 
 malities or to avoid objections made by the office, or for 
 other reasons arising in the course of examination, and if 
 the copies of the prints or labels furnished are for any 
 reason not registrable under the copyi-ight law, the appli- 
 cant may substitute copies which confonu to the require- 
 ments of said law. 
 
 27. In every amendment the exact word or words to be 
 stricken out or inserted nmst be specified, and the precise 
 point indicated where the erasure or insertion is to be 
 made. All such amendments must be on sheets of paper 
 separate from the papers previously filed, and written on 
 but one side of the paper. 
 
 28. After allowance, the examiner will exercise juris- 
 diction over an application only by special authority 
 from the Commissioner. 
 
 Amendments may be made after the allowance of an 
 application on the recommendation of the examiner, ap- 
 l)roved by the Commissioner, without withdrawing the 
 case from issue. 
 
 29. After the completion of the ai)plication, the office 
 will not return the papers for any jrarpose whatever. If 
 the applicant has not preserved copies of the papers 
 
 28
 
 434 APPENDIX B. 
 
 wliicli lie wishes to amend, the office will furnish them on 
 the usual temis. (See Rule 42.) 
 
 SUBJECT-MATTER OF APPLICATION 
 
 30. The word "print," as used in section 3 of the 
 copyright act, so far as it relates to registration in the 
 Patent Office, is defined as an artistic and intellectual pro- 
 duction designed to be used for an article of manufacture, 
 and in some fashion pertaining thereto but not borne by 
 it; such, for instance, as an advertisement thereof. 
 
 31. The word "label," as used in this act, so far as it 
 relates to registration in the Patent Office, is defined as 
 an artistic and intellectual production impressed or 
 stamped directly upon the article of manufacture, or 
 upon a slip or piece of paper or other material, to be at- 
 tached in any manner to manufactured articles, or to 
 bottles, boxes, and packages containing them, to indicate 
 the article of manufacture. 
 
 32. No print or label can be registered unless it prop- 
 erly belongs to an article of manufacture, and is descrip- 
 tive thereof, and is as above defined, and unless the ap- 
 plication is filed before publication thereof. 
 
 APPEALS. 
 
 33. An adverse decision by the examiner who has 
 charge of the registration of prints and labels, upon an 
 applicant's right to have a print or label registered, will 
 be reviewed by the Commissioner in person, on appeal, 
 without fee. 
 
 ISSUE, DATE, AND DURATION OF CERTIFICATE. 
 
 34. Wien the requirements of the law and of the rules 
 have been complied with, and the office has adjudged a 
 print or label registrable, a certificate will be issued by 
 the Commissioner under his seal, to the effect that the 
 applicant has complied with the law, and that he is en- 
 titled to the protection of his print or label in such case
 
 LABEL ACT OF JUNE 18, 1874. 435 
 
 made and provided. Attached to the certificate will ]>e a 
 copy of the jn-int or label. 
 
 35. The weekly issue closes on Thursday, and the cer- 
 tificates of registration of that issue bear date as of the 
 third Tuesday thereafter. 
 
 36. A certificate of registry shall remain in force for 
 twenty-eight years from its date. 
 
 37. The certificate may be continued for a further 
 term of fourteen years upon filing a second application 
 within six months before the exijiration of the term of 
 the original certificate and complying with all other regu- 
 lations with regard to original applications. Within two 
 months from the date of said renewal the applicant must 
 cause a coi)y of the record thereof to be published for 
 four weeks in one or more newspapers printed in the 
 United States. 
 
 ASSIGNMENTS. 
 
 38. Prints and labels are assignable in law by an in- 
 strument in writing. This should state the names of the 
 assignee and assignor, the title of the print or label as- 
 signed ; the date of filing the application, or, if registered, 
 the date and number of the certificate, a statement of a 
 ** valuable consideration," and should be dated and 
 signed. 
 
 Every assignment must be recorded in the Patent Office 
 within sixty days after its execution, in default of which 
 it shall be void as against any subsequent purchaser or 
 mortgagee, . for a valuable consideration, without notice. 
 
 COPIES AND PUBLICATIONS. 
 
 39. After a print or label has been registered, copies 
 thereof can be furnished, when authorized by the Com- 
 missioner, upon the payment of the fee. 
 
 40. An order for a copy of an assignment must give 
 the liber and page of the record, as well as the name of 
 the proprietor; otherwise an extra charge will be made
 
 436 APPENDIX B. 
 
 for the time consumed in making the search for such as- 
 signment. 
 
 •il. The Official Gazette of the Patent Office will con- 
 tain a list of all the prints and labels registered, with the 
 name and address of the registrant in each case, the title 
 of the print or label, and a statement of the particular 
 goods to which it is to be applied, together with the date 
 of filing the application. 
 
 FEES. 
 
 42. On filing an application for registration of a print or label.. $6.00 
 For manuscript copies for every 100 words or fraction thereof.. .10 
 For recording every assignment, agreement, power of attorney, 
 
 or other paper of 300 words or less 1.00 
 
 For recording every assignment, agreement, power of attorney, 
 or other paper of more than 300 words and less than 1,000 
 
 words 2.00 
 
 For recording every assignment, agreement, power of attorney, 
 
 or other paper of more than 1,000 words 3.00 
 
 For abstracts of title: 
 
 For the certificate of search 1.00 
 
 For each brief from the digests of assignments 20 
 
 For assistance to attorneys and others in the examination of 
 
 records, one hour or less 50 
 
 Each additional hour or fraction thereof 50 
 
 For single printed copy, when authorized by the Commissioner. .05 
 
 If certified, for the grant 50 
 
 For the certificate 25 
 
 43. The fee for registration of a print or label is to be 
 paid to the Commissioner of Patents, or to the Treasurer 
 or any of the assistant treasurers of the United States, 
 or to any of the depositaries, national banks, or receivers 
 of public money designated by the Secretary of the 
 Treasury for that purpose, who shall give the depositor 
 a receipt or certificate of deposit therefor, which shall be 
 transmitted to the Patent Office. When this can not be 
 done without inconvenience, the money may be remitted 
 by mail, and in everj^ such case the letter should state the 
 exact amount inclosed. All money orders and checks 
 should be made payable to the ''Commissioner of 
 Patents."
 
 LABEL ACT OF JUNE 18, 1874. 437 
 
 44. All money sent by mail, either to or from the 
 Patent Office, will be at the risk of the sender. All pay- 
 ments to the office must be made in specie, Treasury 
 notes, national-bank notes, certified checks, or money 
 orders. 
 
 REPAYMENT OF MONEY. 
 
 45. Upon refusal of the Commissioner to register the 
 print or label, and on ajjplication by the applicant, or his 
 duly authorized agent, the fee may be returned. 
 
 NOTICE OF COPYRIGHT. 
 
 46. It is necessary, in order to maintain an action for 
 infringement of a copyright, that the claim of copyright 
 be printed on each copy of the article protected. The 
 wording of the notice is detennined by the copyright 
 statute, section 4962, and should be as follows: Copy- 
 right, 19—, by (inserting full name of author or proprie- 
 tor).
 
 FOEMS OF APPLICATION FOR REGISTRATION 
 
 OF PRINTS. 
 
 (1) FOR AN INDIVIDUAL. 
 
 To the Commissioner of Patents: 
 
 The undersigned, A. B., a citizen (or subject, as the case may be) 
 
 of the , residing at , , and doing business at 
 
 No. street, in said city, hereby applies as author 
 
 (or proprietor, as the case may be) (if the application is made by the 
 proprietor, the nationality of the author from whom title is derived 
 should be stated) for registration of the print shown in the accom- 
 panying copies, ten of which are furnished. 
 
 The print has not been published; its title is , and it is used 
 
 for advertising purposes for . 
 
 A. B., 
 Author or Proprietor. 
 Dated this day of , 190—. 
 
 (2) FOR A FIRM. 
 
 To the Commissioner of Patents: 
 
 The undersigned, C. D. & Co., a firm domiciled in the city of , 
 
 county of , State of , and doing business at No. 
 
 street, in said city, and composed of the following mem- 
 
 Ijers . citizens of (or subjects, as the case may be) 
 
 ^ hereby apply as author (or proprietor, as the case may be) 
 
 (if the application is made by the proprietor, the nationality of the 
 author from whom title is derived should be stated) for registration 
 of the print shown in the accompanying copies, ten of which are 
 furnished. 
 
 The print has not been published; its title is , and it is used 
 
 for advertising purposes for . 
 
 C. D. & Co., 
 Author or Proprietor, 
 By C. D., a member of the firm. 
 
 Dated this day of — , 190—. 
 
 (3) FOR A CORPORATION. 
 
 To the Commissioner of Patents: 
 
 The applicant. The E. & F. Company, a corporation duly created by 
 
 authority of the laws of the State of (or other authority, as the 
 
 438
 
 LABEL ACT OF JUNE 18. 1874. 439 
 
 case may be), located in the city of , county of , in said 
 
 State, and doing business at No. street, in said city. 
 
 hereby applies as proprietor (the nationality of the author from whom 
 title is derived should be stated) for registration of the print shown in 
 the accompanying copies, ten of which are furnished. 
 
 The print has not been published; its title is , and it is used 
 
 for advertising purposes for . 
 
 The E. & F. Company, 
 By G. H., the President {or other officer.) 
 
 Dated this day of , 190—.
 
 FORMS OF APPLICATION FOR REGISTRATION 
 
 OF LABELS. 
 
 (1) FOR AN INDIVIDUAL. 
 
 To the Commissioner of Patents: 
 
 The undersigned, A. B., a citizen (or subject, as the case may be), 
 
 of the , residing at , , and doing business 
 
 at No. street, in said city, hereby applies as author 
 
 (or proprietor, as the case may be) (if the application is made by the 
 proprietor, the nationality of the author from whom title is derived 
 should be stated) for registration of the label shown in the accom- 
 panying copies, ten of which are furnished. 
 
 The label has not been published; its title is , and it is to be 
 
 used on . 
 
 A. B., Author or Proprietor. 
 
 Dated this day of , 190—. 
 
 (2) FOR A FIRM. 
 
 To the Commissioner of Patents: 
 
 The undersigned, C. D. & Co., a firm domiciled in the city of , 
 
 county of , State of , and doing business at No. 
 
 street, in said city, and composed of the following mem- 
 bers, , citizens of (or subjects, as the case may be) 
 
 , hereby apply, as author (or proprietor, as the case may be, if 
 
 the application is made by the proprietor, the nationality of the author 
 from whom title is derived should be stated), for registration of the 
 label shown in the accompanying copies, ten of which are furnished. 
 
 The label has not been published; its title is , and it is to be 
 
 used on . 
 
 C. D. & Co., 
 Author or proprietor, 
 By C. D., 
 A member of the firm. 
 Dated this day of , 190—. 
 
 I 
 
 (3) FOR A CORPORATION. 
 
 To the Commissioner of Patents: 
 
 The applicant. The E. and F. Company, a corporation duly created 
 
 by authority of the laws of the State of (or other authority, as 
 
 440
 
 LABEL ACT OF JUNE 18^ 1874, 441 
 
 the case may be), located in the city of , county of , in 
 
 said State, and doing business at No. street, in 
 
 said city, hereby applies as proprietor (the nationality of the author 
 from whom title is derived should be stated) for registration of the 
 label shown in the accompanying copies, ten of which are furnished. 
 
 The label has not been published; its title is , and it is to be 
 
 used on . 
 
 The E. & F. Comi-anv, 
 By G. H., 
 The President {or other officer). 
 Dated this day of , 190—.
 
 APPENDIX C. 
 
 PENAL ACT OF AUGUST 14, 1876. 
 
 (19 Statutes at Large, 141.) 
 
 Be it enacted hy the Senate and House of Representatives 
 of the United States of America in Congress assem- 
 bled: 
 
 Section 1. That every person who shall, with intent 
 to defraud, deal in or sell, or keep or offer for sale, or 
 cause or procure the sale of, any goods of substantially 
 the same descriptive properties as those referred to in 
 the registration of any trademark pursuant to the stat- 
 utes of the United States, to which, or to the package 
 in which the same are put up, is fraudulently affixed said 
 trademark, or any colorable imitation thereof, calculated 
 to deceive the public, knowing the same to be counter- 
 feit, or not the genuine goods referred to in said regis- 
 tration, shall, on conviction thereof, be punished by a 
 fine not exceeding one thousand dollars, or imprisonment 
 not more than two years, or both such fine and imprison- 
 ment. 
 
 Section 2. That every person who fraudulently affixes, 
 or causes or i3rocures to be fraudulently affixed, any 
 trademark registered pursuant to the statutes of the 
 United States, or any colorable imitation thereof, calcu- 
 lated to deceive the public, to any goods of substantially 
 the same descriptive properties as those referred to in 
 said registration, or to the package in which they are 
 put up knowing the same to be counterfeit, or not the 
 genuine goods referred to in said registration, shall, on 
 conviction thereof, be punished as prescribed in the first 
 section of this act. 
 
 Section 3. That every person who fraudulently fills, 
 
 442
 
 PENiU. ACT OF AUGUST 14, 1876. 443 
 
 or causes or procures to be fraudulently filled, any pack- 
 age to which is affixed any trade-mark, registered pur- 
 suant to the statutes of the United States, or any color- 
 able imitation thereof, calculatcMl to deceive tlie i)ublic, 
 with any goods of substantially the same descriptive 
 properties as those referred to in said registration know- 
 ing the same to be counterfeit, or not the genuine goods 
 referred to in said registration, shall, on conviction 
 thereof, be punished as prescribed in the first section of 
 this act. 
 
 Section 4. That any person or persons who shall, 
 with intent to defraud any person or persons, knowingly 
 and wilfully cast, engrave, or manufacture, or have in 
 his, her, or their })ossession, or buy, sell, offer for sale, or 
 deal in, any die or dies, plate or plates, brand or brands, 
 engraving or engravings, on wood, stone, metal, or other 
 substance, moulds, or any false representations, likeness, 
 copy, or colorable imitation of any die, plate, brand, en- 
 graving or mold of any private label, brand, stamp, 
 wrapper, engraving on paper or other substance or 
 trademark, registered pursuant to the statutes of the 
 United States, shall, upon conviction thereof, be pun- 
 ished as prescribed in the first section of this act. 
 
 Section 5. That any person or persons who shall, 
 with intent to defraud any person or persons, knowingly 
 and wilfully make, forge or counterfeit, or have in his, her 
 or their possession, or buy, sell, offer for sale, or deal in, 
 any representation, likeness, similitude, copy, or color- 
 able imitation of any private label, brand, stamp, wrap- 
 per, engraving, mold or trademark, registered pursuant 
 to the statutes of the United States, shall, upon convic- 
 tion thereof, be punished as prescribed in the first sec- 
 tion of this act. 
 
 Section 6. That any person who shall, with intent to 
 injure or defraud the owner of any trademark, or any 
 other person lawfully entitled to use or protect the same, 
 buy, sell, offer for sale, deal in, or have in his possession
 
 444 APPENDIX C. 
 
 any used or empty box, envelope, wrapper, case, bottle, 
 or other package, to whicli is affixed, so that the same 
 may be obliterated without substantial injurj^ to such 
 box or other thing aforesaid, any trademark, registered 
 pursuant to the statutes of the United States, not so de- 
 faced, erased, obliterated, and destroyed as to prevent 
 its fraudulent use, shall, on conviction thereof, be pun- 
 ished as prescribed in the first section of this act. 
 
 Section 7. That if the owner of any trademark, reg- 
 istered pursuant to the statutes of the United States, or 
 his agent, make oath, in writing, that he has reason to 
 believe, and does believe, that any counterfeit dies, 
 plates, brands, engravings on wood, stone, metal, or 
 other substance, or moulds, of his said registered trade- 
 mark, are in the possession of any person with intent to 
 use the same for the purpose of deception and fraud, or 
 make such oaths that any counterfeits or colorable imi- 
 tations of his said trademark, label, brand, stamp, 
 wrapper, engraving on paper or other substance, or 
 empty box, envelope, wrapper, case, bottle, or other 
 package, to which is affixed said registered trademark 
 not so defaced, erased, obliterated, and destroyed as to 
 prevent its fraudulent use, are in the possession of any 
 person with intent to use the same for the purpose of 
 deception and fraud, then the several judges of the cir- 
 cuit and district courts of the United States, and the 
 commissioners of the circuit courts may, within their 
 respective jurisdictions, proceed under the law relating 
 to search-warrants, and may issue a search-warrant au- 
 thorizing and directing the marshal of the United States 
 for the proper district to search for and seize all said 
 counterfeit dies, plates, brands, engravings on wood, 
 stone, metal, or other substance, moulds, and said coun- 
 terfeit trademarks, colorable imitations thereof, labels, 
 brands, stamps, wrappers, engravings on paper, or other 
 substance, and said empty boxes, envelopes, wrappers, 
 cases, bottles or other packages that can be found; and
 
 PENAL ACT OF AUGUST 14, 187G. 445 
 
 upon satisfactory i>roof being made that said counterfeit 
 dies, plates, brands, engravings on wood, stone, metal, 
 colorable imitations thereof, labels, brands, stamps, 
 or other substance, moulds, counterfeit trademarks, 
 wrappers, engravings on paper or other substance, 
 empty boxes, envelopes, wrapj)ers, cases, bottles, or 
 other packages, are to be used by the holder or owner 
 for the purpose of deception and fraud, that any of said 
 judges shall have full power to order all said counter- 
 feit dies, plates, brands, engravings on wood, stone, 
 metal, or other substance, moulds, counterfeit trade- 
 marks, colorable imitations thereof, labels, brands, 
 stamps, wrappers, engravings on paper or other sub- 
 stance, empty boxes, envelopes, wrappers, cases, bottles, 
 or other packages, to be publicly destroyed. 
 
 Section 8. That any person who shall, with intent to 
 defraud any person or persons, knowingly and wilfully 
 aid or abet in the violation of any of the provisions of 
 this act, shall upon conviction thereof, be punished by a 
 fine not exceeding five hundred dollars, or imprisonment 
 not more than one year, or both such fine and imprison- 
 ment.^ 
 
 1 — This act is important be- the certificate of registration con- 
 cause of its connection with the tained words to show that the al- 
 Trademark Cases, 100 U. S. 82. In leged owner acquired an exclusive 
 that case the supreme court de- property in the mark claimed, 
 clared the act of 1870 to be uncon- United States v. Braun, 39 Fed. 
 stitutional because this act was by Rep. 775. 
 
 its express terms confined to This statute having been judi- 
 
 frauds, counterfeits, and unlawful cially declared void could not be 
 
 use of trademarks which were reg- and was not made operative by the 
 
 istered under the provisions of the enactment of the statute of 1881. 
 
 former act. The registration act United States v. Koch, 40 Fed. 
 
 being invalid, the criminal enact- Rep. 250. 
 
 ment intended to protect the rights The requirements of an applica- 
 
 of registrants fell with it. Trade- tion for a search-warrant under 
 
 mark Cases. 100 U. S. 82-99. § 7 of this act were discussed by 
 
 It was held that there could be Judge Treat in Re O'Donnell, Fed. 
 
 no conviction under this act unless Case No. 10434, 14 Off. Gaz. 379.
 
 APPENDIX D. 
 
 TRADEMARK ACT OF MARCH 3, 188r. 
 
 An act to authorize the registration of trademarks 
 and protect the same. 
 
 Be it enacted by the Senate and House of Representa- 
 tives of the United States in Congress assembled: 
 
 § 1.- That owners ^ of trademarks ^ used in 
 commerce with foreign nations or with the Indian tribes,^ 
 
 1 — This act has been usually 
 treated as valid. South Carolina 
 V. Seymour, 153 U. S. 353; 67 Off. 
 Gaz. 1191; L. H. Harris Drug Co. 
 V. Stucky, 46 Fed. Rep. 624; Hen- 
 nessy v. Braunschweiger, 89 Fed. 
 Rep. 664. But in a late case Judge 
 Jenkins said: "There has been no 
 ruling upon the constitutionality 
 of this act, and it need only be 
 said that its validity is fairly 
 doubtful." Illinois Watch Case 
 Co. V. Elgin National Watch Co., 
 94 Fed. Rep. 667-669; 87 Off. Gaz. 
 2323; 35 C. C. A. 237. 
 
 The supreme court, in affirming 
 the decree of the court of appeals 
 in this case, expressly declined 
 passing upon the question of the 
 constitutionality of the act. Elgin 
 National Watch Co. v. Illinois 
 Watch Case Co. (2), 179 U. S. 665- 
 677. 
 
 This act presupposed the exist- 
 ence of a valid trademark which 
 might be registered on compliance 
 with the requirements of the act, 
 and registration under the act did 
 not in any manner affect the na- 
 ture or function of the mark. Ed- 
 
 ison v. Thomas A. Edison, Jr., 
 Chemical Co., 128 Fed. Rep. 1013. 
 
 2— See Notes, Act of 1870, sec. 
 77, ante, p. 411. 
 
 3 — Ownership is a prerequisite. 
 A carpet cleaner was refused regis- 
 tration for the mark used by him 
 on his wagons and upon carpets 
 cleaned by him, because he could 
 not comply with the clause of the 
 act of 1870 requiring a statement 
 of the class of merchandise and 
 the particular description of goods 
 to which he applied the mark. Re 
 Hankinson, 8 Off. Gaz. 89. An offi- 
 cial fish inspector has no trade- 
 mark in the official brand used by 
 him, because he has no private 
 ownership therein. Chase v. Mays, 
 121 Mass. 343. A certificate of reg- 
 istration of trademark will not be 
 issued to the applicant and his as- 
 signee jointly. Ex parte Spinner, 
 35 MSS. D., July, 1887. A trade- 
 mark adopted by a real-estate deal- 
 er for use in the course of his busi- 
 ness cannot be registered. Ex 
 parte Roy, 54 Off. Gaz. 1267. When 
 it appears that several parties 
 have the right to the use of the 
 
 446
 
 TRADEMARK ACT OF MARCU 3, 1S81. 
 
 447 
 
 mark, independent registration 
 will not be granted to either of 
 them. Ex parte Langdon, 61 Off. 
 Gaz. 286. A certificate will not be 
 Issued to the assignee of the ap- 
 plicant. Ex parte Roasted Cereals 
 Co., 57 MSS. D. 455. Even when 
 the assignment has been recorded. 
 Ex parte Bassett, 55 Off. Gaz. 997; 
 Ex parte Spinner, 35 MSS. D. 15. 
 
 Thus registration was refused 
 ■where the facts showed that "ap- 
 plicant is a voluntary association 
 or league of flour manufacturers, 
 all members of which use the mark 
 upon their product and have an in- 
 terest severally and in common in 
 its protection; and the present ap- 
 plication for registration is made 
 by the association through its sec- 
 retary, an officer duly authorized 
 to that end. The applicant is not 
 a corporation, nor is it, in strict 
 use of the term, a partnership; 
 but it is a voluntary association 
 or league or union of the kind rec- 
 ognized by the laws and courts of 
 the state of its domicile, and by 
 the laws and courts of nearly all 
 the states of the Union, as lawful 
 and of the kind to which they ex- 
 tend protective and other relief in 
 proper cases. As an association 
 it does not itself make, brand, or 
 sell the flour to which its mark is 
 applied; but its members by its 
 authority use the selected mark on 
 wheat flour of their own manufac- 
 ture. The league states its objects 
 to be: 'To oppose the adulteration 
 of flour, to assist in enforcing the 
 law, to protect its honest millers 
 from dishonest competition, to ex- 
 pose fraud, to maintain the integ- 
 rity of the American milling trade, 
 and to afford buyers a guarantee 
 that they can obtain from mem- 
 bers of this league absolutely pure 
 
 flour.' As to its membership, the 
 rule is: 'Any miller who does not 
 adulterate flour can join this 
 league upon the payment of ten 
 dollars membership fee, and exe- 
 cuting the affidavit and contract 
 which are conditions of the mem- 
 bership.' • * * But the owner- 
 ship of the mark is, by agreement 
 of all interested parties, vested in 
 the association, and the right to 
 its use by any individual arises 
 only from permission of the asso- 
 ciation and is subject to forfeit- 
 ure upon failure to comply with 
 the prescribed terms." The com- 
 missioner saying: "I can find no 
 authority in the trademark act per- 
 mitting this office to register a 
 trademark, the right to use which 
 is farmed out and which is not 
 actually used by the would-be reg- 
 istrant. While the verified decla- 
 ration accompanying the statement 
 in this case sets forth that no 
 other person, firm or corporation 
 has any right to use the mark, yet 
 the brief of counsel shows that all 
 of the members of the association, 
 which is stated to be composed of 
 a majority of the principal flour 
 manufacturers of the United 
 States, have a right, under certain 
 conditions, to use the mark." 
 Duell, Commissioner, in Ex parte 
 The Anti-Adulteration League, 86 
 Off. Gaz. 1803. 
 
 A word to be used as the name 
 of or mark for a patented article 
 will not be admitted to registra- 
 tion. In so ruling the commis- 
 sioner has said: "In view of the 
 fact that under the trademark act 
 of 1881 a certificate of registry re- 
 mains in force for thirty years 
 from its date, I do not think this 
 office should register trademarks 
 which, though lawful trademarks
 
 448 
 
 APPENDIX D. 
 
 at the date when registry is 
 sought, will become public prop- 
 erty before the expiration of the 
 thirty years. By so doing the pat- 
 ent office would be placed in the 
 light of attempting to aid in pro- 
 longing a monopoly, which mani- 
 festly, under the decisions of the 
 courts, is unwarranted. To thus 
 attempt to give the petitioner a 
 monopoly for many years longer 
 than is given by the patent would 
 be a fraud upon the public." Duell, 
 Commissioner, in Ex parte Velvril 
 Co., 84 Off. Gaz. 807. To the same 
 effect see Ex parte F. H. Gilson 
 Co., 83 Off. Gaz. 1992. 
 
 4 — "Under the statute of March 
 3, 1881. 'owners of trademarks,' 
 under certain conditions as to use 
 and upon compliance with certain 
 requirements which need not now 
 be considered, are entitled to ob- 
 tain registration therefor. The 
 phrase 'owners of trademarks' 
 manifestly limits the right of reg- 
 istration to such person or per- 
 sons, natural or artificial, as pos- 
 sess the legal title to that for 
 which registration is sought, and it 
 further limits the right of regis- 
 tration to that which is a trade- 
 mark. It is therefore incumbent 
 upon the various tribunals of the 
 office having in charge the regis- 
 tration of trademarks, when an 
 application for registration is filed, 
 to decide at the outset two ques- 
 tions: (1) Is applicant the owner, 
 and (2) is that which he seeks to 
 register a trademark? Manifestly 
 the tribunals of this office, in de- 
 ciding the question of ownership, 
 are not precluded by the state- 
 ment and declaration of ownership, 
 made by the applicant from con- 
 sidering and deciding whether he 
 ir or is not the owner of the thing 
 sought to be registered. It is not 
 
 unusual to refuse registration be- 
 cause of the absence of legal title 
 in the applicant — for example, 
 when it appears that before appli- 
 cant adopted and used his alleged 
 mark the identical thing has been 
 adopted and used by another. 
 Equally is it the province and duty 
 of the tribunals of the office having 
 jurisdiction of the registration of 
 trademarks to decide whether the 
 thing presented for registration is 
 a trademark. An applicant may be 
 the owner of the thing alleged to 
 be his trademark, and yet the 
 thing presented for registration 
 may not be a trademark. The state- 
 ment and declaration of applicant 
 that the thing presented for regis- 
 tration is a trademark are not con- 
 clusive. The question is what the 
 thing is, and not what it is called. 
 That the statute vests in this office 
 the power to pass upon these two 
 questions I believe, and to pass 
 upon such questions has been the 
 uniform practice of my predeces- 
 sors ever since the enactment of 
 the trademark law of 1881." Duell, 
 Commissioner, In Ex parte The 
 Bronson Co., 87 Off. Gaz, 1782; and 
 in Ex parte Buffalo Pitts Co., 89 
 Off. Gaz. 2069. 
 
 5 — Commerce with the Indian 
 tribes may be conducted wholly 
 within the limits of a single state. 
 "The power of congress is not de- 
 termined by the locality of the 
 traffic, but extends wherever inter- 
 course with Indian tribes, or with 
 any member of an Indian tribe, is 
 found, although it may originate 
 and end within the limits of a sin- 
 gle state." Prentice & Egan, Com- 
 merce Clause of the Federal Con- 
 stitution, p. 346, citing United 
 States v. Holliday, 3 Wall. 407; 
 Territory v. Guyott, 9 Mont. 46.
 
 TRADEMARK ACT OF MARCH 3, 1881. 
 
 449 
 
 provided such owners shall be domiciled in the United 
 States or located in any foreign country or tribe, which, 
 by treaty, convention, or law,^' affords similar privi- 
 leges to citizens of the United States, may obtain regis- 
 tration^ of such trademarks by complying with the fol- 
 lowing requirements : 
 
 6 — The fact that a mark is law- 
 ful in a foreign country is no test 
 of its registrability here. Re Moet 
 & Chandon. 18 MSS. D. 259. In 
 that case registration was refused 
 although the mark had been reg- 
 istered in France. On the other 
 hand ,the words "Germania" and 
 "Goliath" have been registered in 
 the United States by citizens of 
 Germany, notwithstanding the fact 
 that the words could not be regis- 
 tered in Germany as trademark, 
 because it appeared that citizens 
 of the United States had been per- 
 mitted to register marks in Ger- 
 many for which German citizens 
 would not be allowed registration. 
 Re Manske & Co., 64 Off. Gaz. 858; 
 Re Schmidt, 53 MSS. D. 7. Un- 
 der this act a foreigner is entitled 
 to no other or further rights than 
 a citizen of the United States. Ex 
 parte Buffalo Pitts Co., 89 Off. Gaz. 
 2069. 
 
 The distinction between the 
 terms "treaty" and "convention" 
 is purely artificial. "A treaty is 
 primarily a contract between two 
 or more independent nations." Mr. 
 Justice Field, in Whitney v. Rob- 
 ertson, 124 U. S. 190-194. 
 
 The International Convention 
 for the Protection of Industrial 
 Property, signed at Paris, March 
 20, 1883, and adceded to by presi- 
 dential proclamation on behalf of 
 the United States, March 29, 1887, 
 cannot become operative in the ab- 
 sence of federal legislation. Opin- 
 29 
 
 ions of the Attorney-General, 1889, 
 p. 253; 47 Off. Gaz. 398; Ex parte 
 Zwack & Co., 76 Off. Gaz. 1855. 
 
 For treaties and conventions, 
 1776-1887, see "Treaties and Con- 
 ventions Between the United 
 States and Other Powers:" Gov- 
 ernment Printing Office, 1889. See 
 post, Appendix Q. 
 
 The declaration with Great Brit- 
 ain is drawn so as to confer mu- 
 tual trademark rights upon the 
 subjects and citizens of each of 
 the contracting parties throughout 
 the dominions and possessions of 
 the other. Citizens or residents 
 of British colonies are therefore 
 permitted to register their trade- 
 marks under this treaty whenever 
 it is satisfactorily shown that in 
 the respective colonies similar pro- 
 tection is afforded to citizens of 
 the United States. 
 
 7 — "Registration under the act of 
 1881 is of but little, if any, value, 
 except for the purpose of creating 
 a permanent record of the date of 
 adoption and use of the trade- 
 mark: or in cases where it is nec- 
 essary to give jurisdiction to the 
 United States courts." Hawley, J., 
 in Hennessy v. Braunschweiger, 89 
 Fed. Rep. 664. To the same effect 
 see Waukesha Hygeia Mineral 
 Springs Co. v. Hygeia Distilled 
 Water Co.. 70 Off. Gaz. 1319; 63 
 Fed. Rep. 438; 11 C. C. A. 277; 
 Sarrazin v. W. R. Irby Cigar & To- 
 bacco Co., 93 Fed. Rep. 624-627; 
 Brower v. Boulton, 53 Fed. Rep.
 
 450 
 
 APPENDIX D. 
 
 1st. By causing to be recorded in the Patent Office a 
 statement specifying name,** domicile,*^ location/^ and 
 citizenship" of the party applying; the class of mer- 
 chandise and the particular description of goods com- 
 prised in such class to which the particular trademark 
 
 389; Adams v. Heisel, 31 Fed. Rep. 
 279-281. 
 
 The act does not define trade- 
 marks. — "It will be observed that 
 the statute (referring to the act of 
 1870) does not define the term 
 'trademark,' or say of what it shall 
 consist. The term is used as 
 though its signification was al- 
 ready known to the law. It speaks 
 of it as an already existing thing, 
 and protects it as such. The thing 
 to be protected must be an exist- 
 ing lawful trademark, or some- 
 thing that may then for the first 
 time be adopted as a lawful trade- 
 mark independent of the statute. 
 There must be a lawful trade- 
 mark adopted without reference to 
 the statute, and then, by taking 
 the prescribed steps, that trade- 
 mark, so already created and ex- 
 isting, may receive certain further 
 protection under the statute." 
 Moorman v. Hoge, 2 Sawy. 78. The 
 reasoning of this opinion is equal- 
 ly applicable to the act of 1881. 
 L. H. Harris Drug Co. v. Stucky, 
 46 Fed. Rep. 624-628; Ex parte M. 
 Block & Co., 40 Off. Gaz. 443. 
 
 8 — The christian name of the 
 applicant should be given In all 
 cases, instead of the initial only, 
 for reasons indicated in Monroe 
 Cattle Co. V. Becker, 147 U. S. 47: 
 United States v. Upham, 43 Fed. 
 Rep. 68. 
 
 9 — Domicile, i. e., the place of 
 residence of the applicant; "that 
 place in which he has fixed BTis 
 habitation, without any present in- 
 
 tention of departing therefrom." 
 Gordon, J., in Carey's Appeal, 75 
 Pa. St. 201-205. 
 
 10 — Where an application shows 
 the applicant to be a citizen of one 
 foreign country and located in an- 
 other, his application will be gov- 
 erned by the existing treaty, con- 
 vention or law of the country of 
 his location. By locaton is meant 
 the situs of the factory or other 
 place of business of the applicant. 
 Re Haggenmacher, 60 Off. Gaz. 438. 
 
 11 — What the applicant's citizen- 
 ship may be is wholly immaterial. 
 His right to registration is gov- 
 erned by the country of his loca- 
 tion, which may or may not be 
 identical with that of his citizen- 
 ship. Re Haggenmacher, supra. 
 
 Citizenship defined. — Citizenship 
 means "residence with intention of 
 remaining permanently at that 
 place. A man may reside in a state 
 for an indefinite period of time 
 without becoming a citizen, but 
 the moment a man takes up his 
 residence in a state different from 
 that where he formerly was domi- 
 ciled or was a citizen, with intent 
 and purpose of making the new 
 place of residence his future home, 
 that moment he loses his former 
 domicile, and becomes domiciled in 
 the new place; or in other words, 
 he ceases to be a citizen of the 
 former place of residence and be- 
 comes a citizen of the state of his 
 adoption." Turner, J., in Winn v. 
 Gilmer, 27 Fed. Rep. 817.
 
 TR.VDEMARK ACT OF MARCH 3, 1881. 
 
 451 
 
 has been apjjropriated;'- a description of the trademark 
 itself'^ fac-similes thereof/^ and a statement of the mode 
 
 12 — The fact that the Araoskeag 
 Manufacturing Company had ap- 
 plied its mark to cotton goods ex- 
 cept prints did not give it an ex- 
 clusive right to its use on all cot- 
 ton goods including prints. Amos- 
 keag Mfg. Co. v. Garner, 55 Barb. 
 151. The term "Fancy Goods" in- 
 cludes too many sub-classes to be 
 allowed in one registration. Re 
 Lisner, Comm. Decis. 1878, p. 46. 
 Registration has been refused for 
 a mark to cover an indurated 
 blood compound and the various 
 articles, such as door knobs, to be 
 made from it. Re Dibble Mfg. Co., 
 18 MSS. D. 428. Application for 
 registration of a mark to be used 
 upon druggists' sundries was re- 
 fused because the words were too 
 indefinite. Re Maw, Son & Thomp- 
 son, 22 MSS. D. 403. 
 
 What one registration may cover. 
 — A single trademark may be reg- 
 istered to be applied to all goods 
 made of hard rubber. Re India 
 Rubber Comb Co., 16 MSS. D. 38. 
 Bourbon, wheat and rye whiskies, 
 wines, brandies and gins, may be 
 included in one registration. Re 
 Boehm & Co., Comm. Decis. 1875, 
 p. 103; as may "agricultural im- 
 plements," Re Manny & Co., 17 
 MSS. D. 155; "canned goods," Re 
 Fitzpatrick, Davis & Co., 18 MSS. 
 D. 278; and "cutlery," Re Kampfe 
 Bros., 58 MSS. D. 306; as well as 
 proprietary medicinal and toilet 
 compounds, Re Knight. 38 MSS. 
 D. 341. One registration may, 
 however, cover all the classes of 
 goods upon which the trademark 
 has been used. Ex parte Clark- 
 Jewell-Wells Co.. 83 Off. Gaz. 915. 
 
 But a picture and a word cannot 
 be embodied in the same registra- 
 tion unless they are true alterna- 
 tives. Ex parte J. D. Richards & 
 Sons, 54 MSS. D. 425; Ex parte 
 Adam Roth Gro Co., 62 Off. Gaz. 
 315; Ex parte Kinney, 72 Off. Gaz. 
 1349; Ex parte Muir, 87 Off. Gaz. 
 357; Ex parte Lazarus Schwarz & 
 Upper, 64 Off. Gaz. 1396. 
 
 13 — The description must dis- 
 tinguish the essential from the 
 non-essential features of the mark. 
 Re Volta Belt Co., 8 Off. Gaz. 144. 
 The essential features being those 
 serving to distinguish the goods of 
 the applicant, an essential feature 
 cannot be anything that is not a 
 valid trademark, such as the geo- 
 graphical word "Lancaster." Re 
 Farnum & Co., Comm. Decis. 1880, 
 p. 155; 18 Off. Gaz. 412; Re Adri- 
 ance, Piatt & Co., Comm. Decis. 
 1881, p. 52; 20 Off. Gaz. 1820; Re 
 Pierce, 23 MSS. D. 16. The de- 
 scription and fac-simile incorpor- 
 ated in the certificate of registra- 
 tion are evidence to show the ex- 
 tent of the owner's claim of trade- 
 mark, when he sues for its protec- 
 tion as a common-law trademark. 
 Richter v. Reynolds, 59 Fed. Rep. 
 577; Kohler Mfg. Co. v. Beeshore, 
 53 Fed. Rep. 262; s. c, 8 C. C. 
 A. 215. The essential feature of 
 a trademark is not that which the 
 registrant elects to designate as 
 such, but that which would strike 
 the public mind as its most salient 
 feature. Ex parte Standard Fash- 
 ion Co.. 89 Off. Gaz. 189. 
 
 14 — This section does not con- 
 template registration of form, ma- 
 terial, or color. Materials are not
 
 •i52 
 
 APPENDIX D, 
 
 in wbicli the name is applied and affixed to goods/ ^ and 
 the length of time during which the trademark has 
 been used.^*^ 
 
 subject to appropriation as trade- 
 mark; it has been so held in re- 
 gard to tin used as tags upon plug 
 tobacco, Lorillard v. Pride, 28 Fed. 
 Rep. 434; nor is a method of bronz- 
 ing horse-shoe nails, Putnam Nail 
 Co. V. Bennet, 43 Fed. Rep. 800; 
 59 Fed. Rep. 909; 8 C. C. A. 362; 
 nor the form of sticks of chewing 
 gum, Adams v. Heisel, 31 Fed. Rep. 
 279; nor the method in which 
 goods are arranged in packages. 
 Ibid., and Davis v. Davis, 27 Fed. 
 Rep. 490. 
 
 For further discussion of form, 
 color, etc., see ante, pp. 247 et seq. 
 
 A fac-simile need not contain 
 any unessential portion of the 
 mark sought to be registered. Re 
 Watson, 16 MSS. D. 467; Re Arm- 
 strong & Co., 26 MSS. D. 260. 
 
 One fac-simile only is sufficient 
 to illustrate the mode of using the 
 mark. Re Kimball, Comm. Decis. 
 1887, p. 54. 
 
 Fac-simile defined. — "A fac-sim- 
 ile is an exact counterpart of an 
 original, and a fac-simile repre- 
 sented by a drawing is an exact 
 counterpart of an original, so far 
 as the nature of a drawing per- 
 mits. A close adherence to the 
 language of the statute would seem 
 to require that in each case the 
 trademark and nothing but the 
 trademark should be represented 
 by the drawing, and while, perhaps, 
 it would be going too far to apply 
 in all cases a rule so rigorous, it 
 is certainly within the discretion 
 of the office to insist upon It in 
 cases where . . . legitimate 
 doubts arise as to whether protec- 
 
 tion should not be sought through 
 the law relating to designs. In 
 my judgment the cases are very 
 rare in which the registration of a 
 trademark under the statute re- 
 quires or should permit of any 
 other matter than the fac-simile of 
 the trademark." Mitchell, Com- 
 missioner, in Ex parte Hudson, 55 
 Off. Gaz. 1401. Applicants are re- 
 stricted to symbols which conform 
 to their fac-similes as well as to 
 their verbal descriptions. Duke v. 
 Green, 16 Off. Gaz. 1094. 
 
 15 — The statement of the mode 
 of application must be given. Ex 
 parte Hudson, 55 Off. Gaz. 1401. It 
 must appear that the trademark is 
 intended to be used upon "goods or 
 manufactured articles, the general 
 objects of commerce." Ex parte 
 Roy and Nourse, 54 Off. Gaz. 1267. 
 The use of a trademark upon bill- 
 heads, letter-heads, cards and cir- 
 culars used in a business does not 
 come within the contemplation of 
 the statute; although it would be 
 properly a trademark if used 
 thereon as articles of commerce 
 and not as mere vehicles of com- 
 munication between a dealer and 
 other persons. Ibid. The things 
 to which a trademark may be af- 
 fixed so as to be entitled to regis- 
 tration are goods, wares and mer- 
 chandise — articles that may be 
 transported, in contradistinction to 
 those fixed species of property 
 which the law includes under the 
 term real estate. Ibid. Registra- 
 tion under this act Is limited to 
 marks used upon manufactures or 
 merchandise. Re Hankinson, 8 Off.
 
 TRADEMxVRK ACT OF M.VKCU 3, 1881. 
 
 453 
 
 2d. By paying into the treasury of the United States 
 the sum of twenty-five dollars/^ and complying with 
 such regulations as may be prescribed by the Commis- 
 sioner of Patents. 
 
 Gaz. 89. It is a sufficient applica- 
 tion If the marlc is used in adver- 
 tising, and a lithographed repro- 
 duction of it inserted in each box 
 containing the merchandise. Hay 
 & Todd Mfg Co. V. Querns Broth- 
 ers, 86 Off. Gaz. 1323. 
 
 16 — The language of the Act of 
 1871 was "the length of time, if 
 any, during which the trademark 
 has been used." This was con- 
 strued to admit marks to registra- 
 tion that never had been used in 
 commerce. Re Rothschild, 7 Off. 
 Gaz. 220. It must now be shown 
 as a prerequisite to registration 
 that there has been actual applica- 
 tion of the mark to merchandise 
 and actual user in commerce. Uni- 
 ted States V. Seymour, 66 Off. Gaz. 
 1167. Registration under this sta- 
 tute avails nothing if the name or 
 symbol is never used. Siegert v. 
 Abbott, 72 Hun, 243. 
 
 It was held in one case that a 
 citizen of France who had not de- 
 posited his mark in the Patent Of- 
 fice under the provisions of the 
 treaty of 1869 between the United 
 States and France could not main- 
 tain an action tor infringement. 
 Lacroix v. Escobal, 37 La. Ann. 
 533. But in a later case it is held 
 that a registration under the Act 
 of 1881 by a French citizen ren- 
 ders the deposit of the mark under 
 the terms of that convention un- 
 necessary. Soci6t6 de la Benedic- 
 tine v. Micalovitch, 36 Alb. L. J. 
 364. The dates of adoption set 
 forth in the applications of two 
 
 rival registrants are not conclu- 
 sive. Einstein v. Sawhill, 61 Oft. 
 Gaz. 287. Where actual user ap- 
 pears to have been first made after 
 application for registry, the mark 
 may be admitted to registration 
 upon the filing of a supplemental 
 application. Einstein v. Sawhill 
 (2), 64 Off. Gaz. 1533. 
 
 User in a foreign country alone 
 does not entitle an applicant to reg- 
 istration under this section. 
 Farmers Mfg. Co. v. W. R. Har- 
 rison & Co., 96 Off. Gaz. 2062; Le- 
 prince v. Her & Morris, 92 Off. 
 Gaz. 189. "Limited sales in this 
 country by a foreign manufacturer 
 upon especial orders to supply par- 
 ticular customers" do not give a 
 common law right to the mark 
 "since they did not constitute a 
 use of the mark in such circum- 
 stances as to publicity and length 
 of use as to show an intention to 
 adopt it as a trademark." Allen, 
 Commissioner, in Farmers Mfg. Co. 
 V. W. R. Harrison & Co., 96 Off. 
 Gaz. 2062. 
 
 17 — The fee cannot be refunded 
 because registration is refused. Re 
 Thayer, 54 Off. Gaz. 957. Where 
 the domestic branch of a house 
 having offices in the United States 
 and abroad, filed an application in 
 ignorance of the fact that an iden- 
 tical application had been made 
 by one of the foreign offices, the 
 fee paid on the second application 
 was refunded. Re Finlayson, Bous- 
 field & Co., 61 Off. Gaz. 152.
 
 454 
 
 APPENDIX D. 
 
 § 2.^^ 
 
 That the application prescribed in the forego- 
 ing section must, in order to create any right whatever 
 in favor of the party filing it, be accompanied by a writ- 
 ten declaration verified by the person, or by a member 
 of a firm,^** or by an officer of a corporation applying, to 
 the effect that such party has at the time a right to the 
 use of the trademark sought to be registered, and that 
 no other person, firm or corporation has the right to 
 such use, either in the identical form or in any such near 
 resemblance thereto as might be calculated to deceive,^^ 
 that such trademark is used in commerce with foreign 
 nations or Indian tribes, as above indicated,^^ and that 
 the description and fac-similes presented for registry 
 truly represent the mark sought to be registered.^^ 
 
 § 3.-^ That the time of the receipt of any such appli- 
 cation shall be noted and recorded. But no alleged 
 trademark shall be registered unless the same appear to 
 
 18_See Act of 1870, sec. 77, 
 ante, p. 411. 
 
 19 — An application of a partner- 
 ship cannot properly be made by- 
 one not a member of the firm but 
 merely a so-called "director." Ex 
 parte Kirker, Greer & Co. (Ltd.), 
 37 MSS. D. 392. 
 
 20 — Registration will be refused 
 whenever in the opinion of the 
 commissioner the mark offered is 
 so similar to a registered mark as 
 to be likely to lead to mistake or 
 confusion. Ex parte Coon, 58 Off. 
 Gaz. 946. In case of doubt • con- 
 cerning such similarity, that doubt 
 will be resolved against (he appli- 
 cant. Re Bowe, 50 MSS. D. 168; 
 Re Bogardus, 50 MSS. D. 2. 
 
 21 — The declaration on oath that 
 there has been a user of the mark 
 in the classes of commerce speci- 
 fied is insisted on by the Patent 
 Office. Ex parte Strasburger & 
 Co., 20 Off. Gaz. 155. 
 
 22 — A word and a figure which 
 are true alternatives constitute a 
 single mark. Morrison v. Case, 9 
 Blatchf. 548; 2 Off. Gaz. 544. Hence 
 they may be covered by one regis- 
 tration. Re Weaver, 10 Off. Gaz. 
 1; Ex parte Kinney, 72 Off. Gaz. 
 1346. But where they are not true 
 alternatives, as in the case of the 
 word "Crescent" and the figure of 
 the crescent moon, and the word 
 and figure might convey wholly 
 different meanings to the observer, 
 they will not be registered upon a 
 single application. Ex parte Laz- 
 arus Schwarz & Lipper, 64 Off. 
 Gaz. 1396; Ex parte Roth Grocery 
 Co., 62 Off. Gaz. 315. 
 
 23— See Act of 1870, sees. 79, 80, 
 ante. The fact that this act 
 does not expressly exclude de- 
 scriptive words from registra- 
 tion does not raise a presumption 
 that descriptive words shoul'd be 
 admitted to registration. L. H.
 
 TRADEMARK ACT OF MARCH 3, 1881. 
 
 455 
 
 be lawfully-' used as such by the applicant in foreign 
 commerce or commerce with Indian tribes, as above nien- 
 tioned, or is within the provision of a treaty, convention, 
 or declaration with a foreign power; nor which is merely 
 
 Harris Drug Co. v. Stucky, 4tJ Fed. 
 Rep. 624-627. 
 
 24 — See cases cited in note to 
 sec. 79 of the Act of 1870, ante. 
 A mark that is deceptive in its 
 nature will not receive registra- 
 tion. Ex parte Bloch & Co., 40 
 Off. Gaz. 443; Re Chichester Chem- 
 ical Co., 52 Off. Gaz. 1061; Re Amer- 
 ican Sardine Co., Comm. Decis. 
 1873, p. 82; Re Grove, 67 Off. Gaz. 
 1447. The coat-of-arms of the 
 United States, or either of the 
 states, will not be admiited to reg- 
 istration. Ex parte Schmachten- 
 berg Bros., 51 MSS. D. 204. 
 
 Nor will a descriptive word: as 
 "Albany Beef," for canned stur- 
 geon. Re Ames, 23 Off. Gaz. 344; 
 "Chili Colorow," for table sauce, 
 Re Railton, 25 MSS. D. 321; "Time- 
 Keeper," for watches. Ex parte 
 Strasburger & Co., 20 Off. Gaz. 
 155; "Cristalline," for artificial 
 jewels. Ex parte Kipling, 24 Off. 
 Gaz. 899. 
 
 Nor a picture or word that is 
 descriptive or deceptive. Ex parte 
 Martin, 89 Off. Gaz. 2258; Ex parte 
 Wolf, 80 Off. Gaz. 1271; Ex parte 
 Grove, 67 Off. Gaz. 1447. 
 
 Nor a geographical word: as 
 "Cromarty," for dried fish. Re 
 Proctor, Jr., 51 Off. Gaz. 1785; 
 "Trenton," for saws. Re American 
 Saw Co., 58 Off. Gaz. 521; "Clover- 
 dale," Re Hendley, 72 Off. Gaz. 
 1654. In many instances. Tiowever, 
 where the commissioner has deem- 
 ed the geographical word to be 
 used in a purely arbitrary sense 
 
 it has been admitted to registra- 
 tion. Re Cornwall & Bros., 12 Off. 
 Gaz. 312; Ex parte Tietgens & Rob- 
 ertson, 87 Off. Gaz. 2117. The fol- 
 lowing extracts from leading rul- 
 ings of the Patent Office may serve 
 as guides for applicants seeking 
 registration for geographical 
 words. Their registrabUity "is to 
 be determined in view of the cir- 
 cumstances of each particular case. 
 . . . One geographical name 
 might be either descriptive or de- 
 ceptive; another geographical 
 name applied to the same article 
 might be neither." Thus, it was 
 held that it having become a com- 
 mon practice to apply the words 
 "Irish," "Limerick," etc., to soap, 
 there was no objection to register- 
 ing the word "Dublin," as applied 
 to soap; in view of the state of 
 the trade and the nature of the 
 article, "Dublin" applied to soap 
 manufactured in this country, was 
 neither descriptive nor deceptive. 
 This doctrine was announced in a 
 decision of Acting Commissioner 
 Doolittle. refusing registration for 
 the word "French" as applied to 
 American made paints on the 
 ground that it was deceptive. Re 
 J. Marsching & Co., 15 Off. Gaz. 
 294. In a later decision, refusing 
 registration to the word "Clover- 
 dale" as a trademark for canned 
 fruits and vegetables. Acting Com- 
 missioner Fisher announced the 
 following classification: "Geo- 
 graphical names may for conveni- 
 ence be divided into three classes; 
 first, those that are well known
 
 456 
 
 APPENDIX D, 
 
 the name of the applicant,-'^ nor which is identical with a 
 registered or known trademark ^'^ owned bv another and 
 
 and in common use — such, for ex- 
 ample, as 'United States,' 'New 
 York,' 'San Francisco,' etc. The 
 law is settled that words coming 
 under this class ought not to be 
 registered. The second class in- 
 cludes words which in their pri- 
 mary significance are not geograph- 
 ical, even tnough they may appear 
 in the Postal Guide or similar pub- 
 lications. Such words as 'trilby,' 
 'Creole,' 'puritan' and 'volunteer,' 
 are good examples of this class. 
 These words, it seems to me, ought 
 not to be refused registration on 
 the ground that they are geographi- 
 cal, since it cannot fairly be said 
 that they are 'words in common 
 use as designating locality or sec- 
 tion of a country.' The third 
 class would logically occupy a posi- 
 tion between the tv/o classes men- 
 tioned above, and it consists of 
 words which primarily have a 
 geographical meaning — for exam- 
 ple, terms ending or compounded 
 with such words as 'city,' 'town,' 
 'shire,' 'mount,' or 'mont.' Such 
 words, I think, should not be reg- 
 istered, for the reason that they 
 are clearly geographical in their 
 primary significance, even if it can- 
 not be said that they are widely 
 enough known to come strictly un- 
 der the first class. It seems to me 
 that the word in question, 'Clover- 
 dale,' clearly comes under the third 
 class." Ea? parte Hendley, 72 Off. 
 Gaz. 1654. A geographical word 
 does not become properly registra- 
 ble by being enclosed in a geomet- 
 rical figure. So the word "Yuca- 
 tan" was refused registration as a 
 mark for leather, even though en- 
 closed in a square figure. Ex parte 
 Weil, 83 Off. Gaz. 1802. 
 
 25 — This prohibition is strictly 
 enforced. Even a name used as a 
 mark for twenty years, and admit- 
 ted to registration under the act 
 of 1870 has been refused registra- 
 tion under this statute. Re Fair- 
 child, 21 Off. Gaz. 789. Congress 
 by an enactment under date of 
 August 5. 1882, provided: "That 
 nothing contained in the law (of 
 March 3, 1881), shall prevent the 
 registry of any lawful trademark 
 rightfully used by the applicant in 
 foreign commerce or commerce 
 with Indian tribes at the time of 
 the passage of said act." 22 Stats, 
 at Large, p. 298. This proviso has 
 admitted to registration names of 
 corporations, as, for example, the 
 words "Union Metallic Cartridge 
 Co.," which were in use as mer- 
 chandise marks prior to March 3, 
 1881. But no name of a corpora- 
 tion not used prior to that time 
 as a mark can now be admitted to 
 registration. Ex parte Creedmore 
 Cartridge Co., 56 Off. Gaz. 1333. 
 And see note to the act of August 
 5, 1882. Registration has been re- 
 fused to a name as part of a trade- 
 mark which also included a device. 
 Ex parte Adriance, Piatt & Co., 20 
 Off. Gaz. 1820. But a name used 
 as part of an old combination 
 trademark has been admitted to 
 registry. Ex parte Frieberg & 
 Workum, 20 Off. Gaz. 1164. A 
 proper name joined to a geographi- 
 cal name does not constitute a 
 valid trademark, therefore "Buf- 
 falo Pitts" was refused registra- 
 tion as a trademark for threshing 
 machines. Ex parte Buffalo Pitts 
 Co., 89 Off. Gaz. 2069. 
 
 26 — Registration has been refus- 
 ed where the applicant's mark.
 
 TR.\DEMARK ACT OF MARCH 3, 1881. 
 
 457 
 
 appropriated to the same class of merchandise, or which 
 so nearly resembles some other person's lawful trade- 
 mark as to be likely to cause confusion or mistake in the 
 mind of the public, or to deceive purchasers.^'^ In an 
 aj^plication for registration the commissioner of patents 
 shall decide the presumptive lawfulness of claim to the 
 alleged trademark;-'' and in any dispute between an ap- 
 plicant and a previous registrant, or between ai)plicants, 
 he shall follow, so far as the same may be applicable, the 
 
 "Triumphant" for flour, had been 
 registered by another under the 
 act of 1870, and not re-registered 
 under the act of 1881. Ex parte 
 Lyon, Dupuy & Co., 28 Off. Gaz. 
 191; Dyrenforth, Acting Commis- 
 sioner, tersely observing that "To 
 decide otherwise would be to open 
 Pandora's box and turn loose fraud 
 upon individuals and imposition 
 upon the public." The fact that 
 the applicants used the mark in 
 foreign commerce while the record 
 did not show the registrant to 
 have done so was held immaterial. 
 Ibid; and to the same effect, Yale 
 Mfg. Co. V. Yale, 30 Off. Gaz. 1183. 
 A trademark consisting of a de- 
 sign will not be admitted to regis- 
 tration, when the same design has 
 been embodied in a design patent 
 granted to another. Ex parte Lee 
 & Shepard, 24 Off. Gaz. 1271. 
 
 27 — The commissioner must de- 
 cide, "first, if the applicant has 
 actually used the trademark in 
 lawful commerce with foreign na- 
 tions or with the Indian tribes, 
 and then if he has the right to the 
 use of it at all. If he finds that 
 the alleged trademark is the name 
 of the applicant or any other 
 name which cannot lawfully be 
 converted into a trademark at 
 common law, or that it is identi- 
 cal with the trademark of another. 
 
 registered or unregistered, or is a 
 deceptive imitation of another, or 
 that it is not the property of the 
 applicant, he cannot admit it to 
 registration, though he may be sat- 
 isfied that the applicant has used 
 it in regular commerce with for- 
 egin nations or the Indian tribes." 
 Court of Appeals, District of Co- 
 lumbia, by Sheppard, J., in United 
 States V. Seymour, 66 Off. Gaz. 
 1167-1169. Where a part of the 
 applicant's mark was the word 
 "Railway," which word had been 
 registered by another, the applica- 
 tion was refused. Ex parte Stras- 
 burger & Co., 20 Off. Gaz. 155. The 
 question presented to the commis- 
 sioner upon an issue of anticipa- 
 tion is "whether the trademark 
 sought to be registered is so simi- 
 lar to any trademark already reg- 
 istered for use upon the same 
 class of articles as to be calculated 
 to deceive purchasers using ordi- 
 nary caution." Frothingham, As- 
 sistant Commissioner, in Ex parte 
 George B. Hurd & Co., 59 Off. Gaz. 
 1763; and to the same effect. Ex 
 parte Coon, 58 Off. Gaz. 946. 
 
 28 — No court can grant registra- 
 tion nor direct the action of the 
 commissioner by mandamus. His 
 duties are not ministerial, but re- 
 quire the exercise of judgment and 
 discretion. His performance of
 
 458 
 
 APPENDIX D. 
 
 practice of courts of equity of the United States in 
 analogous cases.-** 
 
 § 4. That certificates of registry of trademarks shall 
 be issued in the name of the United States of America 
 under the seal of the Department of the Interior, and 
 shall be signed by the commissioner of patents, and a 
 record thereof, together with printed copies of the 
 specifications, shall be kept in books for that purpose. 
 CojDies of trademarks and of statements and declara- 
 tions filed therewith, and certificates of registry so signed 
 and sealed, shall be evidence in any suit in which such 
 trademarks shall be brought in controversy.^^ 
 
 those duties will not be reviewed 
 on or controlled by mandamus. 
 United States v. Seymour, 66 Off. 
 Gaz. 1167-1172, 153 U. S. 353, 38 
 L. Ed. 742. 
 
 29 — Under this provision the 
 commissioner has power to declare 
 an interference, even between a 
 partnership and one of its mem- 
 bers. If the applicant shows bet- 
 ter title he will be admitted to 
 registration notwithstanding a pri- 
 or registry. Yale Mfg. Co. v. Yale, 
 SO Off. Gaz. 1183. In such a case 
 the burden of proof to establish 
 priority is upon the applicant. 
 Manitowoc Mfg. Co. v. Dickerman, 
 57 Off. Gaz. 1721. In cases of in- 
 terference the question presented 
 to the commissioner is substan- 
 tially the same as would arise in 
 a court of equity if either of the 
 parties were seeking to enjoin the 
 other from the use of the mark. 
 Ibid. In interferences the issue is 
 as broad as the broadest claim. S. 
 Hernsheim Bros. & Co. (Ltd.) v. 
 J. H. Hargrave & Son, 81 Off. Gaz. 
 503; Joseph Banigan Rubber Co. 
 V. Bloomingdale, 89 Off. Gaz. 1670. 
 By section 9 of the act establish- 
 ing the court of appeals of the 
 District of Columbia that court is 
 
 given the determination of ap- 
 appeals from the decision of the 
 commissioner of patents "in any 
 interference case." That court has 
 held that this clause does not re- 
 fer to or include trademark inter- 
 ferences. Einstein v. Sawhill, 65 
 Off. Gaz. 1918. An applicant pre- 
 sented for registration a mark sub- 
 stantially the same as one regis- 
 tered by another under the act of 
 1870, which had not been re-regis- 
 tered under the act of 1881. Reg- 
 istration was refused by the ex- 
 aminer. The applicant then 
 sought to institute an interfer- 
 ence; this was refused because 
 the former registration was void. 
 Under all the facts the commis- 
 sioner notified the registrant un- 
 der the act of 1870 that an appli- 
 cation for registry was pending 
 with which his registry would in- 
 terfere if it were a registry under 
 the act of 1881, and that sixty 
 days would be allowed wherein 
 the former registrant might make 
 an application under the act of 
 1881 with a view to interference. 
 Ex parte American Lead Pencil 
 Co., 61 Off. Gaz. 131. 
 
 30 — The decision of the commis- 
 sioner of patents upon interfer-
 
 TRADEM.VRK ACT OF MARCH 3, 1881. 
 
 459 
 
 § 5. That a certificate of registry shall remain in force 
 for thirty years from its date, except in cases where 
 tlie trademark is claimed for and applied to articles not 
 manufactured in this country, and in which it receives 
 protection under the laws of a foreign country for a 
 shorter period, in which case it shall cease to have any 
 force in this country by virtue of this act at the time that 
 such trademark ceases to be exclusive property else- 
 where. At any time during tlie six months i)rior to the 
 expiration of thirty years, such registration may be re- 
 newed on the same terms and for a like period.^^ 
 
 § 6. That applicants for registration under this act 
 shall be credited for any fee or part of a fee heretofore 
 paid into the treasury of the United States with intent 
 to procure protection for the same trademark.^^ 
 
 § 7. That registration of a trademark shall be prima 
 facie evidence of ownership.^^ Any i^erson who shall 
 
 ence proceedings was held under 
 the act of 1870 to render the 
 issues presented to hirn res adjudi- 
 cata and they cannot be reopened 
 in a subsequent proceeding be- 
 tween the parties. Hanford v. 
 Westcott, Fed. Case No. 6,022, 16 
 Off. Gaz. 1181. But in passing 
 upon the same question under the 
 Act of 1881 Judge Adams said, of 
 Hanford v. Westcott, "If the rea- 
 soning of that case was ever per- 
 suasive, it cannot be considered 
 so in the light of the changes in 
 the law since it was rendered." 
 A. Leschen & Sons Rope Co. v. 
 Broderick & Bascom Rope Co., 123 
 Fed. Rep. 149, 152. 
 
 31— See Act of 1870, sec. 78, 
 ante. 
 
 32 — The fee for registration un- 
 der the act of 1881 was required 
 to be paid upon filing the appli- 
 cation. 
 
 The sum of $10 paid as a first 
 
 fee under the act of 1870 was 
 credited upon this payment on ap- 
 plications pending in the Patent 
 Office when the act of 1881 went 
 into effect. 
 
 But all persons to whom regis- 
 tration was granted under the act 
 of 1870 were entitled to register 
 under this act without additional 
 charge. Jacoby & Co. v. Lopez, 
 23 Off. Gaz. 342. 
 
 33 — As to the evidenciary value 
 of the certificate of registration, 
 see Elgin National Watch Co. v. 
 Illinois Watch Case Co., 179 U. S., 
 665-672; Brower v. Boulton, 7 C. 
 C. A. 567, 58 Fed. Rep. 888; United 
 States V. Duell, 17 App. Cas. (D. 
 C.) 478; Glen Cove Mfg. Co. v. 
 Ludeling, 22 Fed. Rep. 824; Hen- 
 nessy v. Braunschweiger, 89 Fed. 
 Rep. 664; Welsbach Light Co. v. 
 Adam. 107 Fed. Rep. 463. That 
 this section has no bearing upon 
 the jurisdiction of a state court in 
 a proceeding under a state statute
 
 460 APPENDIX D. 
 
 reproduce, counterfeit, copy or colorably imitate any 
 trademark registered under this act, and affix the same 
 to merchandise of substantially the same descriptive 
 properties as those described in the registration,^^ shall 
 be liable to an action on the case for damages for the 
 wrongful use of said trademark at the suit of the owner 
 thereof; and the party aggrieved shall also have his 
 remedy according to the course of equity to enjoin the 
 wrongful use of such trademark used in foreign com- 
 merce or commerce with Indian tribes, as aforesaid, and 
 to recover compensation therefor in any court having 
 jurisdiction over the person guilty of such wrongful act; 
 and courts of the United States shall have original and 
 appellate jurisdiction in such cases without regard to the 
 amount in controversy.^^ 
 
 § 8. That no action or suit shall be maintained under 
 the provisions of this act in any case when the trade- 
 mark is used in any unlawful business, or upon any arti- 
 cle injurious in itself, or which mark has been used with 
 the design of deceiving the public in the purchase of 
 
 see People v. Molins, 10 N. Y. this section. Postal Tel. Cable Co. 
 
 Supp. 130. V. Netter, 102 Fed. Rep. 691. 
 
 Thus the registration of a mark 35 — Registration of a mark com- 
 
 by another throws the burden of mon to the trade does not confer 
 
 proving priority upon one who an exclusive right to its use. 
 
 subsequently applies for registra- Stachelberg v. Ponce, 128 U. S. 
 
 tiou for the same mark. Manito- 686. Registration" of a mark is 
 
 woe Mfg. Co. V. Dickerman, 57 Off. not conclusive. Its use may be re- 
 
 Gaz. 1720. See act of 1870, sec. strained at the suit of one who 
 
 78, 79; ante. has a prior right to its use. Glen 
 
 34 — As to what is "merchandise Cove Mfg. Co. v. Ludeling, 22 Fed. 
 
 of substantially the same descrip- Rep. 824, 826; Schumacher v. 
 
 tive properties," see Air-Brush Schwenke (2), 36 Off. Gaz. 457; 
 
 Mfg. Co. V. Thayer, 84 Fed. Rep. Hennessy v. Braunschweiger, 89 
 
 €40; Bass, Ratcliff & Gretton Fed. Rep. 664. 
 
 (Ltd.) V. Feigenspan, 96 Fed. Rep. The registrant will not be pro- 
 
 206. tected in the use of his trademark 
 
 Blanks and envelopes used by a if it is found to contain a material 
 
 telegraph company are not "mer- false representation. Seabury v. 
 
 chandise" within the meaning of Grosvenor, 14 Blatchf. 262. 
 
 Jurisdictional amount. — The
 
 TR.VDEMARK ACT OF MAKCII 3, 1881. 461 
 
 merchandise, or under any certificate of registry fraudu- 
 lently obtained.'^'' 
 
 §9. That any person who f-:liall procure the registi-y 
 of a trademark, or of himself as the owner of a trade- 
 mark, or an entry res]Tecting a trademark, in the office 
 of the commissioner of i)atents, by a false or fraudulent 
 representation or declaration, orally or in writing, or by 
 any fraudulent means, shall be liable to pay any dam- 
 age sustained in consequence thereof to the injured 
 l)arty, to be recovered in an action on the case.^^ 
 
 S 10. That nothing in this act shall prevent, lessen, 
 impeach or avoid any remedy at law or in equity which 
 any party aggrieved by any wrongful use of any trade- 
 mark might have had if the provisions of this act had 
 not been passed.^^ 
 
 § 11. That nothing in this act shall be construed as 
 unfavorably alTecting a claim to a trademark after the 
 term of registration shall have expired; nor to give cog- 
 nizance to any court of the United States in an action or 
 suit between citizens of the same state, unless the trade- 
 mark in controversy is used on goods intended to be 
 transported to a foreign country, or in lawful commer- 
 cial intercourse with an Indian tribe.-'^ 
 
 amount in controversy is the value 39 — See Act of 1870, sec. 78, 
 
 of the trademark. Symonds v. ante. 
 
 Greene, 28 Fed. Rep. 834; Hen- Where both parties are citizens 
 
 nessy v. Herrmann, 89 Fed. Rep. of the same state the averments 
 
 669. of the complaint must show that 
 
 36 — This provision is merely in both the parties are using the 
 
 declaration of the common law. mark in commerce with foreign 
 
 See act of 1870, sec. 84, ante. nations or with the Indian tribes. 
 
 37— See act of 1870, sec. 82, Ryder v. Holt, 128 U. S. 525; 
 
 ante. Luyties v. Hollender (1), 21 Fed. 
 
 38— See act of 1870, sec. 83, Rep. 281; Schumacher v. Sch- 
 
 ante. "The present act does not wenke, 26 Fed. Rep. 818: Luyties 
 
 abridge or qualify the common-law v. Hollender (2), 30 Fed. Rep. 
 
 right, but by the express terra of 632; Gravely v. Gravely, 42 Fed. 
 
 section 10 preserves it intact." Rep. 265; Prince's Metallic Paint 
 
 Wallace, J., in LaCroix v. May, 15 Co. v. Prince Mfg. Co., 53 Fed. 
 
 Fed. Rep. 236. Rep. 493. Such an averment is
 
 462 
 
 APPENDIX D. 
 
 § 12. That the commissioner of patents is authorized 
 to make rules and regulations and prescribe forms for 
 the transfer of the right to use trademarks and for 
 recording such transfers in his office.^" 
 
 § 13. That citizens and residents of this country wish- 
 ing the protection of trademarks in any foreign country, 
 the laws of which require registration here as a condi- 
 tion precedent to getting such protection there, may reg- 
 ister their trademarks for that purjoose as is above 
 allowed to foreigners, and have certificate thereof from 
 the Patent Office.^^ 
 
 necessary only where the proceed- 
 ing is between citizens of the 
 same state. It is not necessary 
 where the complainant is an 
 alien. Hennessy v. Braunschwei- 
 ger, 89 Fed. Rep, 664. 
 
 40— See Act of 1870, sec. 81. 
 This section provides for trans- 
 fers only being registered. An in- 
 strument affecting the use of a 
 trade-mark, but not amounting to 
 a transfer or assignment thereof, 
 cannot legally be registered in the 
 Patent Office. Waukesha Springs 
 Co. V. Hygeia Water Co., 63 Fed. 
 Rep. 438-442. 
 
 41 — "One reading the section 
 would infer that foreigners have 
 been allowed under the preceding 
 sections some privilege; but a 
 careful reading of the act fails 
 to disclose that a foreigner is en- 
 titled to any other or further 
 rights than those given to citi- 
 zens of the United States. The 
 phrase 'as is above allowed to for- 
 eigners' renders the section mean- 
 ingless." Duell, Commissioner, in 
 Ex parte Buffalo Pitts Co., 39 
 Off. Gaz. 2069.
 
 APPENDIX E. 
 
 ACT OF AUGUST 5, 1882. 
 
 Be it enacted by the Senate and House of Representa- 
 tives of the United States of America in Congress 
 assembled: 
 
 Tliat nothing contained in the law entitled "An act 
 to authorize the registration of trademarks and j^rotoct 
 the same," approved March third, eighteen hundred and 
 eighty-one, shall prevent the registry of any lawful 
 trademark rightfully used by the applicant in foreign 
 commerce or commerce with Indian tribes at the time of 
 the passage of said act.^ 
 
 Approved August 5, 1882. 
 
 [1905. Department Circular No. 40. Division of Customs.] 
 Tbeasuby Department, Office of the Secretary, 
 
 Washington, March 21, 1905. 
 To Collectors of Customs and Others Concerned: 
 
 The attention of officers of the customs and others is invited to the 
 following provisions of section 27 of the act approved February 20, 
 1905, effective April 1. 1905: 
 
 "Section 27. That no article of imported merchandise which shall 
 copy or simulate the name of any domestic manufacture, or manufac- 
 turer or trader, or of any manufacturer or trader located in any for- 
 eign country which, by treaty, convention, or law affords similar privi- 
 leges to citizens of the United States, or which shall copy or simulate 
 a trademark registered in accordance with the provisions of this Act, 
 or shall bear a name or mark calculated to induce the public to believe 
 that the article is manufactured in the United States, or that it is 
 manufactured in any foreign country or locality other than the coun- 
 try or locality in which it is in fact manufactured, shall be admitted 
 to entry at any custom-house of the United States; and, in order to 
 
 1— This act applies only to such one could exclusively appropriate 
 marks as were lawful trademarks a surname as a trademark. There- 
 prior to March 3, 1881, and only fore a surname cannot be regis- 
 such marks can be admitted to tered under the act of 1881. Ex 
 registration. Long prior to 1881 parte Gale Mfg. Co., 85 Off. Gaz. 
 it had been established that no 1907. 
 
 463
 
 464 APPENDIX E. 
 
 aid the officers of the customs in enforcing this prohibition, any domes- 
 tic manufacturer or trader, and any foreign manufacturer 
 or trader, who is entitled under the provisions of a treaty, 
 convention, declaration, or agreement between the United States 
 and any foreign country to the advantages afforded by law to 
 citizens of the United States in respect to trademarks and commercial 
 names, may require his name and residence, and the name of the 
 locality in which his goods are manufactured, and a copy of the cer- 
 tificate of registration of his trademark, issued in accordance with the 
 provisions of this Act, to be recorded in books which shall be kept for 
 this purpose in the Department of the Treasury, under such regula- 
 tions as the Secretary of the Treasury shall prescribe, and may furnish 
 to the Department fac-similes of his name, the name of the locality in 
 which his goods are manufactured, or of his registered trademark; 
 and thereupon the Secretary of the Treasury shall cause one or more 
 copies of the same to be transmitted to each collector or other proper 
 officer of customs." 
 
 The provisions of this section give to manufacturers and traders 
 located in foreign countries, which, by treaty stipulations, give similar 
 privileges to the United States, the same advantages as are given to 
 domestic manufacturers and traders. The act does not affect names 
 or trademarks heretofore recorded in the Treasury Department, and 
 as to them the protection so far as concerns prohibition of importation 
 will continue. Nor does the act appear to make it compulsory on the 
 part of domestic manufacturers or traders, or foreign manufacturers 
 or traders, to register names (not trademarks) with the Commissioner 
 of Patents, in order to prevent illegal importations. 
 
 Domestic manufacturers and traders, and foreign manufacturers 
 and traders, to avail themselves of the privileges of the act, so far 
 as concerns trademarks, are required to register their trademarks with 
 the Commissioner of Patents before the Treasury Department can act. 
 Applications for recording the names and trademarks in this De- 
 partment under section 27 will state the name of the owner, his resi- 
 dence and the locality in which his goods are manufactured, and in 
 the case of trademarks should be accompanied with a certified copy of 
 the certificate of registration of his trademark issued in accordance 
 with the provisions of the act and the names o^ the ports to which 
 fac-similes should be sent. In the case of the name of a domestic man- 
 ufacture, manufacturer or trader (not registered as a trademark in 
 the Patent Office) the application must be accompanied by the proper 
 proof of ownership and proof as to the country or locality in which the 
 goods are manufactured, which must consist of the affidavit of the 
 owner or one of the owners, certified by an officer entitled to adminis- 
 ter oaths and having a seal. 
 
 On the receipt by a customs officer of any such fac-similes, with in- 
 formation from the Department that they have been recorded therein, 
 he will properly record and file them and exercise care to prevent the 
 entry at the custom-bnuse of any article of foreign manufacture copy- 
 ing or simulating such mark.
 
 ACT OF AUGUST 5, 1882. 4G5 
 
 No fees are charged for recording trademarks in the Treasury De- 
 partment and custom-houses. 
 
 A sufficient number of fac-slmlles should be forwarded to enable 
 the Department to send one copy to each port named in the application, 
 with ten additional copies for the files of the Department. 
 
 Especial attention is invited to the provision in said section pro- 
 hibiting the entry of articles "which shall bear a name or mark calcu- 
 lated to induce the public to believe that the article is manufactured 
 in the United States, or that it is manufactured in any foreign coun- 
 try or locality other than the country or locality in which it is in fact 
 manufactured," and collectors and other officers of the customs are 
 instructed to use due diligence to prevent violations of this provision. 
 
 The provisions of the act also apply to Porto Rico, the Philippine 
 Islands, Hawaii, and any other territory under the jurisdiction and 
 control of the United States. Lesue M. Shaw, 
 
 Secretary. 
 
 3f
 
 APPENDIX F. 
 
 TKADEMAKK PROVISION OF THE TARIFF AOT 
 
 OF 1897. 
 
 (30 Statutes at Large, 151.) 
 
 Section 11 of this chapter provides: ''That no article 
 of imported merchandise which shall copy or simulate 
 the name or trademark of any domestic manufacture or 
 manufacturer, or which shall bear a name or mark, which 
 is calculated to induce the public to believe that the 
 article is manufactured in the United States, shall be 
 admitted to entry at any custom house of the United 
 States. And in order to aid the officers of the customs 
 in enforcing this prohibition, any domestic manufacturer 
 who has adopted trademarks may require his name and 
 residence and a description of his trademarks to be re- 
 corded in a book which shall be kept for that purpose in 
 the department of the treasury, under such regulations 
 as the secretary of the treasury shall prescribe, and may 
 furnish to the department fac-similes of such trade- 
 marks ; and thereupon the secretary of the treasury shall 
 cause one or more copies of the same to be transmitted 
 to each collector or other proper officer of the customs." 
 (30 Stats, at Large, p. 207.) 
 
 In this connection the following circular has been 
 issued by the treasury department: 
 
 [1897. Department Circular No. 116. Division of Customs.] 
 Teeasuby Department, Office of the Secretary, 
 
 Washington, D. C, August 3, 1897. 
 To Officers of the Customs and Others: 
 
 The attention of officers of the customs and others is invited to the 
 following provision of section 11 of the act of July 24, 1897: [quoting 
 above section.] 
 
 Applications for the recording of names or trademarks in this de- 
 
 466
 
 TRADEMARK PROVISION OF ACT OF 1897. 467 
 
 partment will state the name and residence of the domestic manufac- 
 turer, and furnish a description of the mark and the names of the 
 ports to which the fac-similes should be sent. No such name or trade- 
 mark will be received unless accompanied by the proper proof of 
 ownership and proof that the owner is a domestic manufacturer, 
 which must consist of the affidavit of the owner or one of the owners, 
 certified by a notary public, or other officer entitled to administer 
 oaths, and having a seal. 
 
 On the receipt by a customs oflScer of any such fac-similes, with 
 Information from the department that they have been recorded 
 therein, he will properly record and file them, and will exercise care 
 to prevent the entry at the custom-house of any article of foreign man- 
 ufacture copying or simulating such mark. 
 
 No fees are charged for recording trademarks in the department 
 and custom-houses. 
 
 A sufficient number of fac-similes should be forwarded to enable the 
 department to send one copy to each port named in the application 
 with ten additional copies for the files of the department. 
 
 Especial attention is invited to the provision in said section pro- 
 hibiting the entry of articles "which shall bear a name or mark which 
 Is calculated to induce the public to believe that the article is manu- 
 factured in the United States," and collectors and other officers of the 
 customs are instructed to use due diligence to prevent violations of 
 this provision. 
 
 W. B. Howell, 
 
 Assistant Secretary. 
 
 No fees are charged for recording trademarks under 
 this section. Applicants must state the name and resi- 
 dence of the domestic manufacturer and specify the ports 
 to which fac-similes are to be sent. Synopsis Treasury 
 Decisions, 1895, p. 926; Id., 1896, p. 70. The treasury 
 department cannot determine the validity of a trademark. 
 Its powers are limited to the exclusion of articles which 
 copy or simulate trademarks filed for record with the 
 department. Synopsis Treasun^ Decisions. 1895, p. 929. 
 
 Compare sec. 6, Tariff Act of Aug. 27, 1894 ; and sec. 
 7 of the Act of Oct. 1, 1890.
 
 APPENDIX G. 
 
 ACT OF FEBRUARY 20, 1905. 
 
 An act to authorize the registration of trademarks used in commerce 
 with foreign nations or among the several States or with Indian 
 tribes, and to protect the same. 
 
 Be it enacted by the Senate and House of Representa- 
 tives of the United States of America in Congress 
 assembled: 
 
 That the owner of a trademark used in commerce with 
 foreign nations, or among the several states, or with 
 Indian tribes, provided such owner shall be domiciled 
 within the territory' of the United States, or resides in 
 or is located in any foreign country which, by treaty, 
 convention, or law, affords similar privileges to the citi- 
 zens of the United States, may obtain registration for 
 such trademark by complying with the following re- 
 quirements: First, by filing in the Patent Office an 
 application therefor, in writing, addressed to the Com- 
 missioner of Patents, signed by the applicant, specifying 
 his name, domicile, location, and citizenship; the class 
 of merchandise and the particular description of goods 
 comprised in such class to which the trademark is ap- 
 propriated; a description of the trademark itself, and 
 a statement of the mode in which the same is applied 
 and affixed to goods, and the length of time during 
 which the trademark has been used. With this state- 
 ment shall be filed a drawing of the trademark, signed 
 by the applicant, or his attorney, and such number of 
 specimens of the trademark, as actually used, as may be 
 required by the Commissioner of Patents. Second, by 
 paying into the Treasury of the United States the sum 
 of ten dollars, and otherwise complying with the require- 
 
 468
 
 ACT OF FEBRUARY 20, 1905. 469 
 
 merits of this act and such regulations as may be pre- 
 scribed by tlie Commissioner of Patents. 
 
 The enactment of a law whose provisions should extend to the 
 owners of trademarks used in interstate eonnnerce was inspired 
 hy the omission of such a provision in the Act of 1881. Concern- 
 ing that act, Mr. Chief Justice Fuller has said: that, "Obviously 
 the act was passed in view of the decision that the prior act was 
 unconstitutional, and it is, therefore, strictly limited to lawful 
 commerce with foreign nations and with Indian tribes. It is 
 only the trademark used in such commerce that is admitted to 
 registration, and it can only be infringed when used in that 
 commerce, without right, by another than its owner. "^ 
 
 Section 1 of the Act of 1881 was substantially identical with 
 the above section in other respects, except that the above sec- 
 tion requires specimens of the trademark as actually used to 
 be filed, and reduces the government fee from twenty-five dol- 
 lars to ten dollars. 
 
 Sec. 2. That the application prescribed in the forego- 
 ing section, in order to create any right whatever in 
 favor of the party filing it, must be accompanied by a 
 written declaration verified by the applicant, or by a 
 member of the finn or an officer of tlie corporation or 
 association applying, to the effect that the applicant 
 believes himself or the firm, corporation, or association 
 in whose behalf he makes the application, to be the 
 owner of the trademark sought to be registered, and 
 that no other person, firm, corporation, or association, 
 to the best of the applicant's knowledge and belief, has 
 the right to such use, either in the identical form or 
 in such near resemblance thereto as might be calculated 
 to deceive; that such trademark is used in commerce 
 among the several states, or with foreign nations, or 
 with Indian tribes, and that the description and draw- 
 ing presented truly represent the trademark sought to 
 
 1— Warner v. Searle and Hereth Co., 191 U. S. 195, 204.
 
 470 APPENDIX G. 
 
 be registered. If the applicant resides or is located in 
 a foreign country, the statement required shall, in addi- 
 tion to the foregoing, set forth that the trademark has 
 been registered by the applicant, or that an application 
 for the registration thereof has been filed by him in the 
 foreign country in which he resides or is located, and 
 shall give the date of such registration, or the applica- 
 tion therefor, as the case may be, except that in the 
 application in such cases it shall not be necessary to 
 state that the mark has been used in commerce with the 
 United States or among the states thereof. The verifi- 
 cation required by this section may be made before any 
 person within the United States authorized by law to 
 administer oaths, or, when the applicant resides in a 
 foreign country, before any minister, charge d'affaires, 
 consul, or commercial agent holding commission under 
 the government of the United States, or before any 
 notary public, judge, or magistrate having an official 
 seal and authorized to administer oaths in the foreign 
 country in which the applicant may be whose authority 
 shall be proved by a certificate of a diplomatic or consu- 
 lar of the United States. 
 
 This section embraces the matter included in Section 2 of the 
 Act of 1881, with additional provisions concerning the require- 
 ments of the statements to be made by a resident of a foreign 
 country. 
 
 Sec. 3. That every applicant for registration of a 
 trademark, or for renewal of registration of a trade- 
 mark, who is not domiciled within the United States, 
 shall, before the issuance of the certificate of registra- 
 tion, as hereinafter provided for, designate, by a notice 
 in writing, filed in the Patent Office, some person resid- 
 ing within the United States on whom process or notice 
 of proceedings affecting the right of ownership of the 
 trademark of which such applicant may claim to be the 
 owner, brought under the provisions of this act. or 
 under other laws of the United States, may be served.
 
 ACT OF FEBRUARY 20, 1905. 471 
 
 •with the same force and effect as if served upon the 
 applicant or registrant in person. For the purposes of 
 this act it shall be deemed sufficient to sei-ve such notice 
 upon such applicant, registrant, or representative by 
 leaving a copy of such process or notice addressed to 
 him at the last address of which the Commissioner of 
 Patents has been notified. 
 
 This section is new and made desirable by the provisions of 
 Section 2 providing for the registration of marks by persons 
 domiciled in foreign countries. In the manner indicated, ef- 
 fective service can be had in case suit is instituted involving 
 the mark registered. 
 
 Sec. 4. That an application for registration of a trade- 
 mark filed in this country by any person who has pre- 
 viously regularly filed in any foreign country which, 
 by treaty, convention, or law, affords similar privileges 
 to citizens of the United States, an application for regis- 
 tration of the same trademark shall be accorded the 
 same force and effect as would be accorded to the same 
 application if filed in this countr^^ on the date on which 
 application for registration of the same trademark was 
 first filed in such foreign countrj^ : Provided, That such 
 application is filed in this country within four months 
 from the date on which the application was first filed 
 in such foreign country: And provided, That certificate 
 of registration shall not be issued for any mark for 
 registration of which application has been filed by an 
 applicant located in a foreign country until such mark 
 has been actually registered by the applicant in the 
 country in which he is located. 
 
 This section is new in the present act, and is intended for 
 the protection of applicants who have previously filed an ap- 
 pHcation for registration in a foreign country wherein reciprocal 
 privileges are extended to citizens of the United States. Its 
 provisions are in furtherance of Article 4 of the International 
 Convention, which see.
 
 472 APPENDIX G. 
 
 Sec. 5. That no mark by which the goods of the 
 owner of the mark may be distinguished from other 
 goods of the same class shall be refused registration as 
 a trademark on account of the nature of such mark 
 unless such mark— 
 
 (a) Consists of or comprises immoral or scandalous 
 matter ; 
 
 (b) Consists of or comprises the flag or coat of arms 
 or other insignia of the United States, or any simulation 
 thereof, or of any state or municipality, or of any for- 
 eign nation: Provided, That trademarks which are 
 identical with a registered or known trademark owned 
 and in use by another, and appropriated to merchandise 
 of the same descriptive properties, or which so nearly 
 resemble a registered or known trademark owned and in 
 use by another, and appropriated to merchandise of the 
 same descriptive properties, as to be likely to cause 
 confusion or mistake in the mind of the public, or to 
 deceive purchasers, shall not be registered: Provided, 
 Tliat no mark which consists merely in the name of an 
 individual, firm, corporation, or association, not written, 
 printed, impressed, or woven in some particular or dis- 
 tinctive manner or in association with a portrait of the 
 individual, or merely in words or devices which are 
 descriptive of the goods with which they are used, or of 
 the character or quality of such goods, or merely a 
 geographical name or term, shall be registered under 
 the terms of this act: Provided further, That no por- 
 trait of a living individual may be registered as a 
 trademark, except by the consent of such individual, 
 evidenced by an instrument in writing: And provided 
 further. That nothing herein shall prevent the registra- 
 tion of any mark used by the applicant or his predeces- 
 sors, or by those from whom title to the mark is derived, 
 in commerce with foreign nations or among the several 
 states, or with Indian tribes, which was in actual and 
 exclusive use as a trademark of the applicant or his pre-
 
 ACT OF FEBRUARY 20, 1905. 473 
 
 decessors from wlioni be derived title for ten years next 
 preceding the passage of this act. 
 
 This section embraces some of the provisions of Section 3 of 
 the Act of 1881. The moaning and effect of the last proviso 
 are yet to be determined. Read according^ to its terms, it admits 
 to registration any mark in use by the applicant or its pred- 
 ecessors for ten years next preceding the passage of the act, 
 regardless of whether such mark comprises immoral or scandal- 
 ous matter, the flag or coat of arms of the United States, or 
 the portrait of a living individual ; without regard as to whether 
 or not such old mark is identical with or in near resemblance to 
 the registered or kno-WTi trademark of another, and even where 
 the mark consists merely in the name of an individual, etc., 
 without any particular or descriptive type or association. 
 
 What benefit could possibly accrue from admitting a mark 
 to registration which is not a trademark at common law, it is 
 left to the courts to decide. 
 
 Sec. 6. That on the filing of an application for regis- 
 tration of a trademark which complies with the require- 
 ments of this act, and the payment of the fees herein 
 provided for, the Commissioner of Patents shall cause 
 an examination thereof to be made; and if on such ex- 
 amination it shall appear that the applicant is entitled 
 to have bis trademark registered under the provisions 
 of this act, the commissioner shall cause the mark to be 
 published at least once in the Official Gazette of the Pat- 
 ent Office. Any person who believes he would be dam- 
 aged by the registration of a mark may opjwse the 
 same by filing notice of opposition, stating the grounds 
 therefor, in the Patent Office within thirty days after 
 the publication of the mark sought to be registered, 
 which said notice of opposition shall be verified by the 
 person filing the same before one of the officers men- 
 tioned in Section 2 of this act. If no notice of opix)- 
 sition is filed within said time the commissioner shall
 
 474 APPENDIX G. 
 
 issue a certificate of registration therefor, as herein- 
 after provided for. If on examination an application 
 is refused, the commissioner shall notify the applicant, 
 giving him his reasons therefor. 
 
 The provisions of this section for publication and opposi- 
 tion are among: the most valuable features of the present act. 
 Owners of trademarks not desiring- to register are thus en- 
 abled, by proper and vigilant action, to prevent registration 
 of an identical or similar mark by another. 
 
 Sec. 7. That in all cases where notice of opposition 
 has been filed the Commissioner of Patents shall notify 
 the applicant thereof and the grounds therefor. 
 
 Whenever application is made for the registration of 
 a trademark which is substantially identical with a 
 trademark appropriated to goods of the same descrip- 
 tive properties, for which a certificate of registration 
 has been previously issued to another, or for registra- 
 tion of which another has previously made application, 
 or which so nearly resembles such trademark, or a 
 known trademark owned and used by another, as, in the 
 opinion of the commissioner, to be likely to be mis- 
 taken therefor by the public, he may declare that an 
 interference exists as to such trademark, and in every 
 case of interference or opposition to registration he 
 shall direct the examiner in charge of interferences to 
 determine the question of the right of registration to 
 such trademark, and of the sufficiency of objections to 
 registration, in such manner and upon such notice to 
 those interested as the commissioner may by rules pre- 
 scribe. 
 
 The commissioner may refuse to register the mark 
 against the registration of which objection is filed, or 
 may refuse to register both of two interfering marks, 
 or may register the mark, as a trademark, for the per- 
 son first to adopt and use the mark, if otherwise entitled 
 to register the same unless an appeal is taken, as herein-
 
 ACT OF FEBRUARY 20, 1905. 475 
 
 after provided for, from his decision, by a party inter- 
 ested in the proceeding, witliin such time (not less than 
 twenty days) as the commissioner may prescribe. 
 
 As to oppositions, this section is supplemental to Section 6. 
 This section further provides for the creation of interfering^ 
 proceedings, which have formed a large part of the proceed- 
 ings in the Patent Office under the Trademark Act of 1881 and 
 the patent statutes. It further provides for an appeal from 
 the decision of the commissioner in cases of opposition and in- 
 terference. 
 
 Sec. 8. That every applicant for the registration of 
 a trademark, or for the renewal of the registration of 
 a trademark, which application is. refused, or a party to 
 an interference against whom a decision has been ren- 
 dered, or a party who has filed a notice of opposition as 
 to a trademark, may appeal from the decision of the 
 examiner in charge of trademarks, or the examiner in 
 charge of interferences, as the case may be, to the com- 
 missioner in person, having once paid the fee for such 
 appeal. 
 
 This section relates to the right of appeal to the commissioner 
 from the examiner of the trademark division of the Patent Office, 
 or the examiner in charge of interferences. It is modeled on 
 § 4909, R. S. U. S., relating to appeals in applications for let- 
 ters patent. 
 
 Sec. 9. That if an applicant for registration of a 
 trademark, or a party to an interference as to a trade- 
 mark, or a party who has filed opposition to the regis- 
 tration of a trademark, or party to an application for 
 the cancellation of the registration of a trademark, is 
 dissatisfied with the decision of the Commissioner of 
 Patents, he may appeal to the court of appeals of the 
 District of Columbia, on complying with the conditions 
 required in case of an appeal from the decision of the 
 commissioner by an applicant for patent, or a party to 
 an interference as to an invention, and the same rules
 
 476 APPENDIX G. 
 
 of practice and procedure shall govern in every stage of 
 such proceedings, as far as the same may be applicable. 
 
 This section, for the first time, creates the right of appeal 
 to the Court of Appeals of the District of Columbia from the 
 decision of the commissioner in trademark applications, inter- 
 ferences and oppositions. 
 
 Sec. 10. That every registered trademark, and every 
 mark for the registration of which application has been 
 made, together with the application for registration of 
 the same, shall be assignable in connection with the good 
 will of the business in which the mark is used. Such 
 assignment must be by an instrument in writing and 
 duly acknowledged according to the laws of the country 
 or state in which the same is executed; any such assign- 
 ment shall be void as against any subsequent purchaser 
 for a valuable consideration, without notice, unless it is 
 recorded in the Patent Office within three months from 
 date thereof. The commissioner shall keep a record of 
 such assignments. 
 
 The first sentence of this section is merely a declaration of 
 the law concerning the assignability of trademarks as it has been 
 settled by the courts. The remainder of the section relates to 
 the formalities attending upon the execution and recording of 
 the assignment of registered marks. 
 
 Sec. 11. That certificates of registration of trade- 
 marks shall be issued in the name of the United States 
 of America, under the seal of the Patent Office, and 
 shall be signed by the Commissioner of Patents, and a 
 record thereof, together with printed copies of the draw- 
 ing and statement of the applicant, shall be kept in 
 books for that purpose. The certificate shall state the 
 date on which the application for registration was re- 
 ceived in the Patent Office. Certificates of registration 
 of trademarks may be issued to the assignee of the 
 applicant, but the assignment must first be entered of 
 record in the Patent Office.
 
 ACT OF FEBRUARY 20, 1905. 477 
 
 Written or printed copies of any records, books, 
 papers, or drawings relating to trademarks belonging to 
 the Patent Office, and of certificates of registration, au- 
 thenticated by the seal of the Patent Office and certified 
 by the commissioner thereof, shall be evidence in all 
 cases wherein the originals could be evidence; and any 
 person making application therefor and paying the fee 
 required by law shall have certified copies thereof. 
 
 This section provides for the formalities attendant upon the 
 issuance of certificates of registration, and to the issue of certi- 
 fied copies of the data relating to trademarks belonging to the 
 Patent Office, and of certificates of registration. 
 
 Sec. 12. That a certificate of registration shall re- 
 main in force for twenty years, except that in the case 
 of trademarks previously registered in a foreign coun- 
 try such certificates shall cease to be in force on the 
 day on which the trademark ceases to be jorotected in 
 such foreign country, and shall in no case remain in 
 force more than twent}^ years, unless renewed. Cer- 
 tificates of registration may be, from time to time, re- 
 newed for like periods on payment of the renewal fees 
 required by this act, upon request of the registrant, his 
 legal representatives, or transferees of record in the 
 Patent Office, and such request may be made at any time 
 not more than six months prior to the expiration of 
 the period for which the certificates of registration were 
 issued or renewed. Certificates of registration in force 
 at the date at which this act takes effect shall remain 
 in force for the period for which they were issued, but 
 shall be renewable on the same conditions and for the 
 same period as certificates issued under the provisions 
 of this act, and when so renewed shall have the same 
 force and effect as certificates issued under this act. 
 
 Under Section 5 of the Act of 1881, a certificate of registra- 
 tion remains in force for thirty years from its date. That period 
 is curtailed by the above section to twenty years.
 
 478 APPENDIX G. 
 
 Sec. 13. That whenever auy person shall deem him- 
 self injured by the registration of a trademark in the 
 Patent Office he may at any time apply to the Commis- 
 sioner of Patents to cancel the registration thereof. The 
 commissioner shall refer such application to the exam- 
 iner in charge of interferences, who is empowered to 
 hear and determine this question and who shall give 
 notice thereof to the registrant. If it appear after a 
 hearing before the examiner that the registrant was not 
 entitled to the use of the mark at the date of his applica- 
 tion for registration thereof, or that the mark is not 
 used by the registrant, or has been abandoned, and the 
 examiner shall so decide, the commissioner shall cancel 
 the registration. Appeal may be taken to the commis- 
 sioner in person from the decision of the examiner of 
 interferences. 
 
 This is a provision for the cancellation of a registration 
 wrongfully secured. 
 
 Sec. 14. Tliat the following shall be the rates for 
 trademark fees: 
 
 On filing each original application for registration of 
 a trademark, ten dollars : Provided, That an application 
 for registration of a trademark pending at the date of 
 the passage of this act, and on which certificate of reg- 
 istration shall not have issued at such date, may, at 
 the option of the applicant, be proceeded with and regis- 
 tered under the provisions of this act without the pay- 
 ment of further fee. 
 
 On filing each application for renewal of the registra- 
 tion of a trademark, ten dollars. 
 
 On filing notice of opposition to the registration of a 
 trademark, ten dollars. 
 
 On an appeal from the examiner in charge of trade- 
 marks to the Commissioner of Patents, fifteen dollars. 
 
 On an appeal from the decision of the examiner ill 
 charge of interferences, awarding ownership of a trade-
 
 ACT OF FEBRUARY 20, 1905. 479 
 
 mark or canceling the registration of a trademark, to 
 the Commissioner of Patents, fifteen dollars. 
 
 For certified and uncertified copies of certificates of 
 registration and other pai)ers, and for recording trans- 
 fers and other papers, the same fees as reciuired by law 
 for such copies of patents and for recording assignments 
 and other papers relating to patents. 
 
 The foregoing provisions as to fees do not provide for the 
 fee to be paid upon an application to cancel registration, al- 
 though a fee is fixed for the appeal from the decision of the 
 examiner of interferences in such cases. 
 
 Sec. 15. That sections forty-nine hundred and thirty- 
 five and forty-nine hundred and thirty-six of the Re- 
 vised Statutes, relating to the payment of patent fees 
 and to the repayment of fees paid by mistake, are 
 hereby made applicable to trademark fees. 
 
 The sections of the Revised Statutes of the United States, 
 referred to in the above section are as follows: 
 
 Section 4985. 
 
 "Patent fees may be paid to the Commissioner of Patents, 
 or to the Treasurer or any of the assistant treasurers of the 
 United States, or to any of the designated depositaries, na- 
 tional banks, or receivers of public money, designated by the 
 Secretary of the Treasury for that purpose; and such officer 
 shall give the depositor a receipt or certificate of deposit there- 
 for. All money received at the Patent Office, for any purpose, 
 or from any source whatever, shall be paid into the treasury 
 as received, without any deduction whatever." 
 
 Section 4936. 
 
 "The Treasurer of the United States is authorized to pay 
 back any sum or sums of money to any person who has through 
 mistake paid the same into the treasury, or to any receiver or 
 depositary, to the credit of the treasury, as for fees accruing 
 at the Patent Office, upon a certificate thereof being made to 
 the Treasurer bv the Commissioner of Patents."
 
 480 APPENDIX G. 
 
 Sec. 16. That the registration of a trademark under 
 the provisions of this act shall be prima facie evidence 
 of ownership. Any person who shall, without the con- 
 sent of the owner thereof, reproduce, counterfeit, copy, 
 or colorably imitate any such trademark and affix the 
 same to merchandise of substantially the same descrip- 
 tive properties as those set forth in the registration, or 
 to labels, signs, prints, packages, wrappers, or recepta- 
 cles intended to be used upon or in connection with the 
 sale of merchandise of substantially the same descriptive 
 properties as those set forth in such registration, and 
 shall use, or shall have used, such reproduction, counter- 
 feit, copy, or colorable imitation in commerce among the 
 several states, or with a foreign nation, or with the 
 Indian tribes, shall be liable to an action for damages 
 therefor at the suit of the owner thereof; and whenever 
 in any such action a verdict is rendered for the plain- 
 tiff, the court may enter judgment therein for any sum 
 above the amount found by the verdict as the actual 
 damages according to the circumstances of the case, 
 not exceeding three times the amount of such verdict, 
 together with the costs. 
 
 This section substantially embodies the provisions of Section 
 7 of the Act of 1881, besides providing for increasing the actual 
 damages found, to a sum not exceeding three times the amount 
 of the verdict. 
 
 The first sentence of this section cannot receive from the court 
 a more liberal interpretation than was given to the same sen- 
 tence in the Act of 1881 ; and as to that provision in the former 
 act, it was expressly held that registration could not serve as 
 the foundation for preliminary injunction.^ 
 
 Obviously, a certificate of registration may be introduced in 
 evidence as prima facie proof of ownership. This would fol- 
 low if the provision were not expressed in the act, as other- 
 wise any registration act would be idle. 
 
 1 — ^A. Leschen Sons Rope Co. v. Broderick & Bascom Rope Com- 
 pany, 123 Fed. Rep., 149, 152.
 
 ACT OF FEBRUARY 20, 1905. 481 
 
 Sec. 17. That the circuit and territorial courts of the 
 United States and the Supreme Court of the District of 
 Columbia shall have original jurisdiction, and the cir- 
 cuit courts of appeal of the United States and the Court 
 of Appeals of the District of Columbia shall have appel- 
 late jurisdiction of all suits at law or in equity resi)ect- 
 ing trademarks registered in accordance with the provis- 
 ions of this act, arising under the present act, without 
 regard to the amount in controversy. 
 
 This section desif,niates the courts haviii},' original and ap- 
 pellate jurisdiction in eases involving registered trademarks. 
 As to the appellate jurisdiction in trademark cases generally, 
 see ante. §116, title "Appeals." 
 
 Sec. 18. That writs of certiorari may be granted by 
 the Sui3reme Court of the United States for the review 
 of cases arising under this act in the same manner as 
 provided for patent cases by the act creating the circuit 
 court of ajDpeals. 
 
 This section is substantially identical with the corresponding 
 section of the judiciary Act of 1891, § 6. As to the issuance 
 of the writ of certiorari by the supreme court, see ante, § 116, 
 title " Certiorari." 
 
 Sec. 19. That the several courts vested with jurisdic- 
 tion of cases arising under the present act shall have 
 power to grant injunctions, according to the course and 
 principles of equity, to prevent the violation of any 
 right of the owner of a trademark registered under this 
 act, on such terms as the court may deem reasonable; 
 and upon a decree being rendered in any such case for 
 wrongful use of a trademark the complainant shall be 
 entitled to recover, in addition to the profits to be ac- 
 counted for by the defendant, the damages the com- 
 plainant has sustained thereby, and the court shall 
 assess the same or cause the same to be assessed under 
 its direction. The court shall have the same power to 
 
 31
 
 482 APPENDIX G. 
 
 increase such damages, in its discretion, as is given by 
 section sixteen of this act for increasing damages found 
 by verdict in actions of law ; and in assessing profits the 
 plaintiff shall be required to prove defendant's sales 
 only; defendant must jDrove all elements of cost which 
 are claimed. 
 
 This section is substantially identical in its provisions with 
 § 4921, R. S. U. S., relating to patent cases, with the addition of 
 providing for the manner of assessing profits. See ante, § 116, 
 title ' ' Increase of Damages in Equity. ' ' 
 
 Sec. 20. That in any case involving the right to a 
 trademark registered in accordance with the provisions 
 of this act, in which the verdict has been found for the 
 plaintiff, or an injunction issued, the court may order 
 that all labels, signs, prints, packages, wrappers, or re- 
 ceptacles in the possession of the defendant, bearing the 
 trademark of the plaintiff or complainant, or any re- 
 production, counterfeit, copy, or colorable imitation 
 thereof, shall be delivered up and destroyed. Any in- 
 junction that may be granted upon hearing, after notice 
 to the defendant, to prevent the violation of any right 
 of the owner of a trademark registered in accordance 
 with the provisions of this act, by any circuit court of 
 the United States, or by a judge thereof, may be served 
 on the parties against whom such injunction may be 
 granted anywhere in the United States where they may 
 be found, and shall be operative, and may be enforced 
 by proceedings to punish for contempt, or otherwise, 
 by the court by which such injunction was granted, or 
 by any other circuit court or judge thereof, in the 
 United States, or by the Supreme Court of the District 
 of Columbia, or a judge thereof. The said courts, or 
 judges thereof, shall have jurisdiction to enforce said 
 injunction, as herein provided, as fully as if the injunc- 
 tion had been granted by the circuit court in which it 
 is sought to be enforced. The clerk of the court or
 
 ACT OF FEBRUARY 20, 1905. 483 
 
 judge granting the injunction shall, when required to 
 do so by the court before which ai)i)lication to enforce 
 said injunction is made, transfer without delay to said 
 court a certified copy of all the papers on which the said 
 injunction was granted that are on file in his office. 
 
 This section is modeled upon § 4966, R. S. U. S., relating to 
 copyrights. 
 
 Sec. 21. That no action or suit shall be maintained 
 under the provisions of this act in any case when the 
 trademark is used in unlawful business, or upon any 
 article injurious in itself, or which mark has been used 
 with the design of deceiving the public in the purchase 
 of merchandise, or has been abandoned, or upon any 
 certificate of registration fraudulently obtained. 
 
 Except as to the provision concerning abandoned trademarks, 
 this section is substantially identical with § 8 of the Act of 1881. 
 
 Sec. 22. That whenever there are interfering regis- 
 tered trademarks, any person interested in any one of 
 them may have relief against the interfering registrant, 
 and all persons interested under him, by suit in equity 
 against the said registrant; and the court, on notice to 
 adverse parties and other due proceedings had accord- 
 ing to the course of equity, may adjudge and declare 
 either of the registrations void in whole or in part 
 according to the interest of the parties in the trademark, 
 and may order the certificate of registration to be deliv- 
 ered up to the Commissioner of Patents for cancellation. 
 This section is new and extends the jurisdiction of courts of 
 original jurisdiction to include the power to decree the can- 
 cellation of a certificate of registration, the decree to be car- 
 ried into effect by the Commissioner of Patents. 
 
 Sec. 23. That nothing in this act shall prevent, les- 
 sen, imj^each, or avoid any remedy at law or in equity 
 which any party aggrieved by any wrongful use of any 
 trademark might have had if the provisions of this act 
 had not been passed.
 
 484 APPENDIX G. 
 
 This section is identical with § 10 of the Act of 1881. See 
 notes to that section, ante. 
 
 Sec. 2-4. That all applications for registration pend- 
 ing in the office of the Commissioner of Patents at the 
 time of the passage of this act may be amended with a 
 view to bringing them, and the certificate issued upon 
 such applications, under its provisions, and the prosecu- 
 tion of such applications may be proceeded with under 
 the provisions of this act. 
 
 As the Act of 1881 was still in effect at the time when the 
 present act went into operation, this provision was intended to 
 give pending applications the benefit of the new act, if amended 
 so as to be brought within its terras. 
 
 Sec. 25. That any person who shall procure regis- 
 tration of a trademark, or entry thereof, in the office of 
 the Commissioner of Patents by a false or fraudulent 
 declaration or representation, oral or in writing, or by 
 any false means, shall be liable to pay any damges sus- 
 tained in consequence thereof to the injured party, to be 
 recovered by an action on the case. 
 
 This section is reproduced from § 9 of the Act of 1881. 
 
 Sec. 26. That the Commissioner of Patents is author- 
 ized to make rules and regulations, not inconsistent with 
 law, for the conduct of proceedings in reference to the 
 registration of trademarks provided for by this act. 
 
 Pursuant to this section, the Commissioner of Patents has 
 made and published the rules and forms which are hereinafter 
 set forth. 
 
 Sec. 27. That no article of imported merchandise 
 which shall copy or simulate the name of any domestic 
 manufacture, or manufacturer or trader, or of any 
 manufacturer or trader located in any foreign country 
 which, by treaty, convention, or law affords similar priv- 
 ileges to citizens of the United States, or which shall 
 copy or simulate a trademark registered in accordance 
 with the provisions of this act, or shall bear a name or
 
 ACT OF FEBRUARY 20, 1905. 485 
 
 mark calculated to induce the puljlic to believe that the 
 article is manufactured in the United States, or that it 
 is manufactured in any foreign country or locality other 
 than the country or locality in which it is in fact manu- 
 factured, shall be admitted to entry at any custom-house 
 of the United States ; and, in order to aid the officers of 
 the customs in enforcing this ])rohibition, any domestic 
 manufacturer or trader, and any foreign manufacturer 
 or trader, who is entitled under the provisions of a 
 treaty, convention, declaration or agreement between the 
 United States and any foreign country to the advantages 
 afforded by law to citizens of the United States in respect 
 to trademarks and connnercial names, may require his 
 name and residence, and the name of the locality in 
 which his goods are manufactured, and a copy of the 
 certificate of registration of his trademark, issued in 
 accordance with the provisions of this act, to be re- 
 corded in books which shall be kept for this purpose in 
 the Department of the Treasury, under such regulations 
 as the Secretary of the Treasury shall prescribe, and 
 may furnish to the Department fac-similes of his name, 
 the name of the locality in which his goods are manu- 
 factured, or of his registered trademark; and thereupon 
 the Secretary of the Treasury shall cause one or more 
 copies of the same to be transmitted to each collector or 
 other proper officer of customs. 
 
 This section is substantially identical with the provisions of 
 §11 of the Act of July 24, 1897, entitled, ''An Act to Provide 
 Revenue for the Government and to Encourage the Industries 
 of the United States," the provisions of that act being extended 
 in order to give manufacturers domiciled abroad the same pro- 
 tection as is given to manufacturers located within the United 
 States. 
 
 Sec. 28. That it shall be the duty of the registrant 
 to give notice to the public that a trademark is regis- 
 tered, either by affixing thereon the words ''Registered 
 in U. S. Patent Office," or abbreviated thus, ''Reg. U.
 
 486 APPENDIX G. 
 
 S. Pat. Off.," or when, from the character or size of 
 the trademark, or from its manner of attachment to the 
 article to which it is appropriated, this can not be done, 
 then by affixing a label containing a like notice to the 
 package or receptacle wherein the article or articles 
 are inclosed; and in any suit for infringement by a 
 party failing so to give notice of registration no dam- 
 ages shall be recovered, except on proof that the de- 
 fendant was duly notified of infringement, and con- 
 tinued the same after such notice. 
 
 This section is modeled upon the corresponding section of 
 the Patent Statutes, § 4900, R. S. U. S. See ante, § 97, title, 
 "The Disadvantages of Registration." 
 
 Sec. 29. That in construing this Act the following 
 rules must be observed, except where the contrary in- 
 tent is plainly apparent from the context thereof: The 
 United States includes and embraces all territory which 
 is under the jurisdiction and control of the United 
 States. The word "States" includes and embraces the 
 District of Columbia, the Territories of the United 
 States, and such other territory as shall be under the 
 .-jurisdiction and control of the United States. The 
 terms *' person" and "owner," and any other word or 
 term used to designate the applicant or other entitled 
 to a benefit or privilege or rendered liable under the 
 provisions of this Act, include a firm, corporation, or 
 association as well as a natural person. The term "ap- 
 plicant" and "registrant" embrace the successors and 
 assigns of such applicant or registrant. The term 
 "trademark" includes any mark which is entitled to 
 registration under the terms of this Act and whether 
 registered or not, and a trademark shall be deemed to 
 be "affixed" to an article when it is placed in any man- 
 ner in or upon either the article itself or the receptacle 
 or package or upon the envelope or other thing in, by,
 
 ACT OF FEBRU.VEY 20, 1905. 487 
 
 av with which the goods are packed or inclosed or 
 othei-wise prepared for sale or distribution. 
 
 This section is new with the present Act. It is a collectioii 
 of definitions made for the purpose of preventing repetition in 
 the preceding sections, as well as to specifically bring the own- 
 ers of marks located in Porto Rico, the Phibppines, and any 
 other territory under the jurisdiction and control of the United 
 States within the benefits of the Act. Each of such territories 
 is defined to be a state within the meaning of the Act, as are 
 also the Territories of the United States, and the District of 
 Columbia. 
 
 Sec. 30. That this Act shall be in force and take 
 effect April first, nineteen hundred and five. All Acts 
 and parts of Acts inconsistent with this Act are hereby 
 repealed except so far as the same may apply to cer- 
 tificates of registration issued under the Act of Con- 
 gress approved March third, eighteen hundred and 
 eighty-one, entitled "An Act to authorize the registra- 
 tion of trademarks and protect the same," or under the 
 Act approved August fifth, eighteen hundred and 
 eighty-two, entitled ''An Act relating to the registra- 
 tion of trademarks." 
 
 Approved, Febnaary 20, 1905.
 
 488 APPENDIX G. 
 
 EULES GOVEENING THE EEGISTEATION OF 
 
 TEADEMAEKS UNDEE THE ACT APPEOVED 
 
 FEBEUAEY 20, 1905, TO TAKE EFFECT 
 
 APEIL 1, 1905. 
 
 United States Patent Office, 
 
 Washington, D. C, April 1, 1905. 
 The following rules, designed to be in strict accord- 
 ance witli the provisions of the act approved February 
 20, 1905, for the registration of trademarks, are pub- 
 lished for gratuitous distribution. 
 
 Applicants for registration and their attorneys are 
 advised that their business will be facilitated by the ob- 
 servance of the forms on page 509, et seq. 
 
 Frederick I. Allen, 
 
 Commissioner of Patents. 
 
 correspondence. 
 
 1. All business with the Office should be transacted 
 in writing. Unless by the consent of all parties, the 
 action of the Office will be based exclusively on the 
 written record. No attention will be paid to any alleged 
 oral promise, stipulation, or understanding in relation 
 to which there is disagreement or doubt. 
 
 2. Apx)licants and attorneys will be required to con- 
 duct their business with the Office with decorum and 
 courtesy. Papers presented in violation of this require- 
 ment will be returned; but all such papers will first be 
 submitted to the Commissioner, and only be returned 
 by his direct order. 
 
 3. All letters should be addressed to ''The Commis- 
 sioner of Patents;" and all remittances by money order, 
 check, or draft should be to his order. 
 
 4. A separate letter should, in every case, be written 
 in relation to each distinct subject of inquiry or appli-
 
 ACT OF FEBRUARY 20, 1905. 489 
 
 cation. Complaints against the examiner in charge of 
 trademarks, assignments for record, fees, and orders 
 for coi:)ies or abstracts must be sent to the Office in 
 separate letters. 
 
 5. Letters relating to pending applications should 
 refer to the name of the applicant, the serial number of 
 the application, and the date of filing. Letters relating 
 to registered trademarks should refer to tlie name of 
 the registrant, the number and date of the certificate, 
 and the merchandise to which the trademark is applied. 
 
 G. The personal attendance of applicants at the 
 Patent Office is unnecessary. Their business can be 
 transacted by correspondence. 
 
 7. "V^^ien an attorney shall have filed his power of 
 attorney duly executed, the correspondence will be held 
 with him. 
 
 8. A double correspondence with an applicant and 
 his attorney, or with two attorneys, can not generally 
 be allowed. 
 
 9. The Office can not undertake to respond to in- 
 quiries propounded with a view to ascertain whether 
 certain trademarks have been registered, or, if so, to 
 whom, or for what goods; nor can it give advice as to 
 the nature and extent of the protection afforded by the 
 law, or act as its expounder, except as questions may 
 arise upon applications regularly filed. 
 
 10. Express, freight, postage, and all other charges 
 on matter sent to the Patent Office must be prepaid in 
 full; otherwise it will not be received. 
 
 ATTORNEYS. 
 
 11. An applicant or an assignee of the entire interest 
 may prosecute his own case, but he is advised, unless 
 familiar with such matters, to employ a competent at- 
 torney. The Office can not aid in the selection of any 
 attorney. 
 
 A register of attorneys is kept in this Office, on which
 
 490 APPENDIX G. 
 
 Arill be entered the names of all persons entitled to rep- 
 resent applicants before the Patent Office. The namea 
 of persons in the following classes will, upon their wiit- 
 ten request, be entered on this register: 
 
 (a) Any person who, on June 18, 1897, was engaged 
 as attorney or agent in the active prosecution of appli- 
 cations for patent before this Office, or had been so en- 
 gaged at any time within five years prior thereto and is 
 not disbarred, or is or was during such period a mem- 
 ber of a firm so engaged and not disbarred, provided 
 that such person shall, if required, furnish information 
 as to one or more applications for patents so prosecuted 
 by him. 
 
 (h) Any attorney at law who is in good standing in 
 any court of record in the United States or any of the 
 States or Territories thereof and shall furnish a certifi- 
 cate of the clerk of such United States, State, or Terri- 
 torial court, duly authenticated under the seal of the 
 court, that he is an attorney in good standing. 
 
 (c) Any person who has been regularly recognized as 
 an attorney or agent to represent claimants before the 
 Department of the Interior, or any bureau thereof, and 
 is in good standing, provided that such person shall 
 furnish a statement of the date of his admission to prac- 
 tice as such attorney or agent, and shall further show, 
 if required by the Commissioner, that he is possessed 
 of the necessary qualifications to render applicants valu- 
 able service, and is otherwise competent to advise and 
 assist them in the presentation and prosecution of their 
 applications before the Patent Office. 
 
 (d) Any person not an attorney at law who shall file 
 a certificate from a judge of a United States, State, or 
 Territorial court, duly authenticated under the seal of 
 the court, that such person is of good moral character 
 and of good repute and possessed of the necessary 
 qualifications to enable him to render applicants valua- 
 ble service, and is otherwise competent to advise and
 
 ACT OF FEBRUARY 20, 1905, 491 
 
 assist them in the presentation and prosecution of their 
 applications before tlie Patent Office. 
 
 (e) Any firm which, on June 18, 1897, was engaged in 
 the active prosecution, as attorneys or agents, of appli- 
 cations for patents before the Patent Office, or had been 
 so engaged at any time witliin five years prior thereto, 
 provided such firm or any memljer thereof is not dis- 
 barred, provided the names of the individuals composing 
 the firm are stated, and provided also that such finn 
 shall, if required, furnish infoiTnation as to one or 
 more applications prosecuted before the Patent Office 
 by them. 
 
 (/) Any finn, not entitled to registration under the 
 preceding sections, which shall show that the individuals 
 composing the firm are each and all recognized as 
 patent attorneys or agents, or are each and all entitled 
 to be so recognized under the preceding sections of this 
 rule. 
 
 The Commissioner may demand additional proof of 
 qualifications, and reserves the right to decline to recog- 
 nize any attorney, agent, or other person applying for 
 registration under this rule. 
 
 Any person or firm, not registered and not entitled to 
 be recognized under this i-ule as an attorney or agent to 
 represent applicants generally, may, upon a showing of 
 circumstances which render it necessary or justifiable, 
 be recognized by the Commissioner to prosecute as at- 
 torney or agent any certain specified application or ap- 
 plications, but this limited recognition shall not extend 
 further than the application or applications named. 
 
 No person, not registered, as above provided, will be 
 permitted to prosecute, as attorney, applications before 
 the Patent Office. 
 
 12. Before any attorney, original or associate, will 
 be allowed to inspect papers or take action of any kind 
 his power of attorney must be filed. General powers 
 given by a principal to an associate can not be consid-
 
 492 APPENDIX G. 
 
 ered. In each application the written authorization 
 nmst be filed. A power of attorney purporting to have 
 been given to a firm or copartnership will not be recog- 
 nized, either in favor of the finn or of any of its mem- 
 bers, unless all its members shall be named in such 
 i:)ower of attorney. 
 
 1.3. Substitution or association may be made by an 
 attorney ujion the written authorization of his principal; 
 but such authorization will not empower the second at- 
 torney to appoint a third. 
 
 14. Powers of attorney may be revoked at any stage 
 in the proceedings of a case upon application to and 
 approval by the Commissioner; and, when so revoked, 
 the Office will communicate directly with the applicant, 
 or such other attorney as he may appoint. An attorney 
 will be promptly notified by the docket clerk of the 
 revocation of his power of attorney. 
 
 15. For gross misconduct, the Commissioner may re- 
 fuse to recognize any person as an attorney, either gen- 
 erally or in any particular case; but the reasons for 
 such refusal will be duly recorded and be subject to the 
 approval of the Secretary of the Interior. 
 
 WHO MAY REGISTER A TRADEMARK. 
 
 Act of Feb. 20, 1905, sec. 1. 
 
 16. A trademark may be registered by any person, 
 firm, corporation, or association domiciled within the 
 territory of the United States, or residing in or located 
 in any foreign country which, by treaty, convention, or 
 law, affords similar privileges to the citizens of the 
 United States, and who is entitled to the use of any 
 trademark and uses the same in commerce with foreign 
 nations, or among the several States, or with Indian 
 tribes, upon payment of the fee required by law and 
 other due proceedings had. (See rules 17 and 19.) 
 
 Act of Feb. 20, 1905, sees. 1, 2, and 4. 
 
 17. No trademark will be registered to an applicant 
 residing or located in a foreign country unless such
 
 ACT OF FEBRU.VRY 20, 1905. 493 
 
 countr}" by treaty, convention, or law, affords similar 
 privileges to the citizens of the United States, nor un- 
 less the trademark has been registered by the applicant 
 in the foreign country in which he resides or is located. 
 In such cases it is not nocessaiy to state in the applica- 
 tion that the trademark has been used in commerce with 
 the United States or among the States thereof. (See 
 Rule 31.) 
 
 WHAT MAY BE REGISTERED AS A TRADEMARK. 
 
 Act of Feb. 20, 1905, sees. 1, 5, and 21. 
 
 18. No trademark will be registered to an owner 
 domiciled within the territory of the United States un- 
 less it shall be made to appear that the same is used 
 as such by said owner in commerce among the several 
 States, or between the United States and some foreigTi 
 nation or Indian tribe; no trademark will be registered 
 to an owner residing in or located in a foreign country 
 unless said country by treaty, convention, or law affords 
 similar privileges to the citizens of the United States; 
 no trademark will be registered which consists of or 
 comprises immoral or scandalous matter, or which con- 
 sists of or comprises the flag or coat of arms or other 
 insignia of the United States, or any simulation there- 
 of, or of any State or municipality, or of any foreign 
 nation, or which is identical with a registered or known 
 trademark owned and in use by another, and appropri- 
 ated to merchandise of the same descriptive properties, 
 or which so nearly resembles a registered or known 
 trademark owned and in use by another, and appro- 
 priated to merchandise of the same descriptive proper- 
 ties, as to be likely to cause confusion or mistake in the 
 mind of the public, or to deceive purchasers; or which 
 consists merely in the name of an individual, firm, cor- 
 poration, or association, not written, printed, impressed, 
 or woven in some particular or distinctive manner or in 
 association with a portrait of the individual, or merely
 
 494 APPENDIX G. 
 
 in words or devices wliieh are descriptive of the goods 
 with which they are used, or of the character or quality 
 of such goods, or merely a geographical name or term; 
 no portrait of a living individual will be registered as 
 a trademark, except by the consent of such individual, 
 evidenced by an instrument in writing; and no trade- 
 mark will be registered which is used in unlawful busi- 
 ness, or upon any article injurious in itself, or which 
 has been used with the design of deceiving the public in 
 the purchase of merchandise, or which has been aban- 
 doned. 
 
 Act of Feb. 20, 1905, sec. 5. 
 
 19. Any mark used in commerce with foreign nations 
 or among the several States or with Indian tribes may 
 be registered if it has been in actual and exclusive use 
 as a trademark of the applicant or his predecessors 
 from whom he derived title for ten years next preceding 
 the passage of the act of February 20, 1905. (See 
 Rule 30.) 
 
 THE APPLICATION. 
 Act of Feb. 20, 1905, sec. 1. 
 
 20. An application for the registration of a trade- 
 mark must be made to the Commissioner of Patents and 
 must be signed by the applicant. 
 
 Act of Feb. 20, 1905, sec. 1. 
 
 21. A complete application comprises: 
 
 (a) A petition, requesting registration, signed by the 
 applicant. (See Form 1, p. 509.) 
 
 {h) A statement specifying the name, domicile, loca- 
 tion, and citizenship of the party applying; the class of 
 merchandise, and the particular description of goods 
 comprised in such class, to which the trademark is ap- 
 propriated; a description of the trademark itself, and 
 a statement of the mode in which the same is applied 
 and aflfixed to the goods, and of the length of time dur-
 
 ACT OF FEBRU.VRY 20, 1905. 495 
 
 ing which the trademark has been used, and, if the ap- 
 plicant be a corporation or association, it must be set 
 forth under the laws of what State or nation organized. 
 (See sec. 29 of the statute, and Fonns '2, 4, and 6, pp. 
 
 509 et seq.) 
 
 (c) A declaration, complying with section 2 of the 
 statute. (See Forms 3, 5, 7, 8, and 9, pp. 509 et seq.) 
 
 {(I) A drawing of the trademark, which shall be a 
 facsimile of the same as actually used upon the goods. 
 (See Rules 34 and 35 and Fonn page 513.) 
 
 (e) Five specimens {or facsimiles, ithen, from the 
 mode of applying or affixing the trademark to the goods, 
 specimens can not he furnished) of the trademark as 
 actually used upon the goods. 
 
 (/) A fee of ten dollars. 
 
 22. The petition, the statement, and the declaration 
 must be in the English language and written on one 
 side of the paper only. 
 
 23. The name of the applicant will appear in the 
 certificate of registration precisely as it is signed to 
 the statement of the application, and, therefore, the sig- 
 nature to the statement must be the correct signature of 
 the applicant, and the name of the applicant wherever it 
 appears in the papers of the application must agree 
 with the name as signed to the statement. 
 
 24. No information will be given without authority 
 of the applicant respecting the filing of an application 
 for the registration of a trademark by any i^erson, or 
 the subject-matter thereof, unless it shall, in the opin- 
 ion of the Commissioner, be necessary to the proi>er 
 conduct of business before the Office. 
 
 Act of Feb. 20, 1905, sees. 14 and 24. 
 
 25. All applications for registration pending in the 
 Patent Office at the time of the passage of the act of 
 l'Ybniar>- 20, 1905, may be amended with a view to 
 bringing them and the certificates issued under such
 
 496 APPENDIX G. 
 
 applications under the provisions of said act, and the 
 prosecution of such applications may be proceeded with 
 under its provisions without the payment of further fee. 
 When such an application is amended to bring it under 
 the act of February 20, 1905, it will be given a serial 
 number and date of filing under said act. 
 
 A trademark registered under the act of March 3, 
 1881, may be registered under the act of February 20, 
 1905, but the application for such registration will be 
 subject to examination in the same manner as other ap- 
 plications filed under said act of February 20, 1905. 
 
 Act of Feb. 20, 1905. sec. 4. 
 
 26. An application for registration of a trademark, 
 filed in this country by any person who has previously 
 regularly filed in any foreign country which, by treaty, 
 convention, or law atfords similar privileges to the 
 citizens of the United States an application for regis- 
 tration of the same trademark, shall be accorded the 
 same force and effect as would be accorded to the same 
 application if filed in this country on the date on which 
 application for registration of the same trademark was 
 first filed in such foreign country: Provided, That such 
 application is filed in this country within four months 
 from the date on which the application was first filed in 
 such foreign country. 
 
 Act of Feb. 20, 1905, sec. 3. 
 
 27. Every applicant for registration of a trademark, 
 or for renewal of registration of a trademark, who is 
 not domiciled within the United States, shall, before the 
 issuance of the certificate of registration, designate, by 
 a notice in writing, filed in the Patent Office, some per- 
 son residing within the United States on whom process 
 or notice of proceedings affecting the right of owner- 
 ship of the trademark of which such applicant may 
 claim to be the owner may be served. This notice shall 
 be indorsed upon the file wrapper of the application.
 
 ACT OF FEBRUARY 20, 1905. 497 
 
 Act of Feb. 20, 1905, sec. 3. 
 
 28. In i:)roceedings relating to an application or a 
 registration under the act of Februaiy 20, 1905, it shall 
 be deemed sufficient to serve notice ui)On the applicant, 
 registrant, or representative by leaving a copy of the 
 ])rocess or notice of proceedings addressed to him at 
 the last address of which the Commissioner of Patents 
 has been notified. 
 
 DECLARATION. 
 Act of Feb. 20. 1905, sec. 2. 
 
 29. The application must be accompanied by a writ- 
 ten declaration verified by the applicant, or by a mem- 
 ber of the firm, or by an officer of the corjioration or 
 association applying, to the effect that he believes him- 
 self, or the firm, corporation, or association in whose 
 behalf he makes the declaration, to be the owner of the 
 trademark sought to be registered, and that no other 
 person, finn, corporation, or association, to the best of 
 his knowledge and belief, has the right to use the trade- 
 mark, either in the identical form or any such near re- 
 semblance thereto as might be calculated to deceive; 
 that such trademark is used in commerce among the 
 several States, or with foreign nations, or with Indian 
 tribes, and that the description, drawing, and specimens 
 {or facsimiles) tnily represent the trademark sought to 
 be registered. (See Eule 17 and Forms 3, 5, 7, 8, and 
 9, p. 509 et seq.) 
 
 30. Where application is made under section 5 of 
 the act of February 20, 1905, on the ground that the 
 mark has been in actual and exclusive use as a trade- 
 mark by the applicant, or his predecessors from whom 
 he derived title, for ten years next preceding the pas- 
 sage of said act, the applicant shall, in addition to the 
 requirements of section 2 of said act, make oath to such 
 actual use of the mark as a trademark by himself, or his 
 l)redecessors, or by those from whom title to the same is 
 derived, for the period specified, and that, to the best of 
 
 32
 
 498 APPENDIX G. 
 
 his knowledge and belief, such use has been exclusive. 
 (See Form 8, page 511.) 
 
 Act of Feb. 20, 1905, sec. *?. 
 
 31. If the applicant resides or is located in a foreign 
 country, the declaration required shall also set forth 
 that the trademark has been registered by the applicant, 
 or that an application for the registration thereof has 
 been filed by him in the foreign country in which he 
 resides or is located, and shall give the date of such 
 registration or of the application therefor, as the case 
 may be. In such cases, it shall not be necessary to state 
 that the mark has been used in commerce with the 
 United States or among the States thereof. (See Form 
 9, page 512.) 
 
 Act of Feb. 20, 1905, sec. 2. 
 
 32. The declaration may be made before any person 
 within the United States authorized by law to admin- 
 ister oaths, or, when the applicant resides in a foreign 
 country, before any minister, charge d'affaires, consul, 
 or commercial agent holding commission under the Gov- 
 ernment of the United States, or before any notary pub- 
 lic, judge, or magistrate having an official seal and 
 authorized to administer oaths in the foreign country in 
 which the applicant may be, whose authority shall be 
 proved by the certificate of a diplomatic or consular 
 officer of the United States, the declaration being at- 
 tested in all cases, in this and other countries, by the 
 proper official seal of the officer before whom the same 
 is made. 
 
 33. Amendment of the declaration will not be per- 
 mitted. If that filed with the application be faulty or 
 defective, a substitute declaration must be filed. 
 
 DRAWING. 
 
 34. (1) The drawing must be made upon pure white 
 paper of a thickness corresponding to two-sheet Bristol 
 
 I
 
 ACT OF FEBRUARY 20, 1905. 499 
 
 board. The surface of the paper must be calendered 
 and smooth. India ink alone must be used, to secure 
 perfectly black and solid lines. 
 
 (2) The size of a sheet on which a drawing is made 
 must be exactly 10 by 15 inches. One inch from its 
 edges, a single marginal line is to be drawn, leaving the 
 ''sight" precisely 8 by 13 inches. Within this margin 
 all work and signatures must be included. One of the 
 shorter sides of the sheet is regarded as its top, and, 
 measuring downwardly from the marginal line, a space 
 of not less than V/^ inches is to be left blank for the 
 heading of title, name, number, and date. (See speci- 
 men of drawing page 513.) 
 
 (3) All drawings must be made with the pen only. 
 Every line and letter, signatures included, must be ab- 
 solutely blaek. This direction applies to all lines, how- 
 ever fine, and to shading. All lines must be clean, 
 sharp, and solid, and they must not be too fine or 
 crowded. Surface shading, when used, should be open. 
 
 Act of Feb. 20, 1905, sec. 1. 
 
 (4) The name of the proprietor of the trademark, 
 signed by himself or his attorney of record, must be 
 placed at the lower right-hand comer of the sheet 
 within the marginal lines, but in no instance should it 
 encroach upon the drawing. 
 
 (5) When the view is longer than the width of the 
 sheet, the sheet should be turned on its side, and the 
 heading should be placed at the right and the signature 
 at the left, occupying the same space and position as in 
 an upright view, and being horizontal when the sheet is 
 held in an upright position. 
 
 (6) Drawings transmitted to the Office should be sent 
 flat, protected by a sheet of heavy binder's board. They 
 should not be rolled or folded. 
 
 (7) An agent's or attorney's stamp, or advertisement, 
 or written address will not be }:>ermitted upon the face 
 of a drawing, within or without the marginal line.
 
 500 APPENDIX G. 
 
 35. The Office, at the request of applicants, will fur- 
 nish the drawings at cost. 
 
 EXAMINATION OF APPLICATIONS. 
 
 Act of Feb. 20, 1905, sec. 6. 
 
 36. All complete applications for registration are 
 considered, in the first instance, by the examiner in 
 charge of trademarks. AVhenever, on examination of 
 an ai:)plication, registration is refused for any reason 
 whatever, the applicant will be notified thereof. The 
 reasons for such refusal will be stated, and such in- 
 formation and references will be given as may be useful 
 in aiding the applicant to judge of the propriety of fur- 
 ther prosecuting his application. 
 
 37. The examination of an application and the action 
 thereon will be directed throughout to the merits, but 
 in each letter the examiner shall state or refer to all 
 his objections. 
 
 Act of Feb. 20, 1905, sec. 6. 
 
 38. If, on examination of an application for the 
 registration of a trademark, it shall appear that the 
 applicant is entitled to have his trademark registered 
 under the provisions of the law, the mark will be pub- 
 lished in the Official Gazette at least once. Such publi- 
 cation shall be at least thirty days prior to the date of 
 registration. 
 
 If no notice of opposition be filed within thirty days 
 after such publication, the applicant or his attorney 
 will be duly notified of the allowance of his application, 
 and a certificate of registration will be issued as pro- 
 vided in Rule 52. 
 
 The weekly issue closes on Thursday, and the certifi- 
 cates of registration of that issue bear date as of the 
 third Tuesday thereafter.
 
 ACT OF FEBRUARY 20, 1905. 501 
 
 AMENDMENTS. 
 
 39. The statement may be amended to correct infor- 
 malities, or to avoid objections made by tlie Office, or 
 for other reasons arising in the course of examination, 
 but no amendments to the description or drawing of the 
 trademark will be permitted unless warranted by some- 
 thing in the specimens {or facsimiles) as originally filed. 
 
 40. In every amendment, the exact word or words to 
 be stricken out or inserted in the statement must be 
 specified, and the i^recise point indicated where the 
 erasure or insertion is to be made. All such amend- 
 ments must be on sheets of }3aper separate from the 
 papers previously filed, and written on but one side 
 of the paj^er. 
 
 Erasures, additions, insertions, or mutilations of the 
 papers and records must not be made by the applicant 
 or attorney. 
 
 41. When an amendatory clause is amended, it must 
 be wholly rewritten, so that no interlineation or erasure 
 shall appear in the clause, as finally amended, when the 
 application is passed to issue. If the number or nature 
 of the amendments shall render it otherwise difficult to 
 consider the case, or to arrange the papers for printing 
 or copying, the examiner may require the entire state- 
 ment to be rewritten. 
 
 42. After allowance, the examiner will exercise juris- 
 diction over an application only by special authority 
 from the Commissioner. 
 
 Amendments may be made after the allowance of an 
 application, if the case has not been printed, on the rec- 
 ommendation of the examiner, approved by the Commis- 
 sioner, without withdrawing the case from issue. 
 
 43. After the completion of the application, the Office 
 will not return the papers for any purpose whatever. 
 If the applicant has not preserved copies of the papers 
 which he wishes to amend, the Office will furnish them 
 on the usual tenus.
 
 502 APPENDIX G. 
 
 INTERFERENCE, OPPOSITION, AND CANCELLATION. 
 
 Act of Feb. 20, 1905, sec. 7. 
 
 44. In case of conflicting applications for registra- 
 tion of a trademark, or in any dispute as to the right to 
 use tlie same, which may arise between an applicant 
 and a registrant, the Office will declare an interference, 
 in order that the parties may have an opportunity to 
 prove priority of use, and the proceedings on such inter- 
 ference will follow, as nearly as practicable, the prac- 
 tice in interferences between applications for patents. 
 
 Act of Feb. 20, 1905, sees. 6 and 14. 
 
 45. Any person who believes he would be damaged 
 by the registration of a mark may oppose the same by 
 filing, in duplicate, a written notice of opposition (see 
 Form 10, page 514), stating the grounds therefor, within 
 thirty days after the publication (see Rule 38) of the 
 mark sought to be registered, which notice of opposi- 
 tion shall be accompanied by the fee required by law, 
 and shall be verified by the person filing the same, be- 
 fore one of the officers mentioned in section 2 of the 
 act of February 20, 1905. (See Rule 32.) 
 
 Act of Feb. 20, 1905, sec. 13. 
 
 46. Any person deeming himself to be injured by the 
 registration of a trademark in the Patent Office, may at 
 any time make application (see Form 11, page 514) to 
 the Commissioner to cancel the registration thereof. 
 Such application shall be filed in duplicate, shall state 
 the grounds for cancellation, and shall be verified by 
 the person filing the same, before one of the officers 
 mentioned in section 2 of the act of February 20, 1905. 
 (See Rule 32.) 
 
 Act of Feb. 20, 1905, sec. 13. 
 
 47. If it appear, after a hearing before the examiner 
 of interferences, that the registrant was not entitled to
 
 ACT OF FEBRUARY 20, 1905. 503 
 
 the use of the mark at the date of his application for 
 registration thereof, or that the mark is not used by 
 the registrant, or has been abandoned, and the examiner 
 in charge of interferences shall so decide, the Commis- 
 sioner shall cancel the registration of the mark, unless 
 api)eal be taken within the limit fixed. 
 
 48. In cases of opposition and of applications for 
 cancellation, the examiner in charge of trademarks shall 
 forward the files and paj^ers to the examiner in charge 
 of interferences, who shall give notice thereof to the ap- 
 plicant or registrant. The applicant or registrant must 
 make answer at such time, not less than thirty days 
 from the date of the notice, as shall be fixed by the ex- 
 aminer in charge of interferences. 
 
 49. The proceedings on oppositions and on applica- 
 tions for cancellation shall follow, as nearly as prac- 
 ticable, the practice in interferences between applica- 
 tions for patents. 
 
 APPEALS. 
 
 Act of Feb. 20, 1905. sees. 8 and 14. 
 
 50. From an adverse decision of the examiner in 
 charge of trademarks upon an applicant's right to regis- 
 ter a trademark, or to renew the registration of a trade- 
 mark, or from a decision of the examiner in charge of 
 interferences, an appeal may be taken to the Commis- 
 sioner in person, upon payment of the fee required by 
 law. 
 
 Act of Feb. 20, 1905, sec. 9. 
 
 51. From the adverse decision of the Commissioner 
 of Patents upon the right of an applicant to register a 
 trademark, or to renew the registration of a trademark, 
 or from the decision of the Commissioner in cases of 
 interference, opposition, or cancellation, an appeal may 
 be taken to the court of appeals of the District of Co- 
 lumbia in the manner prescribed by the rules of that 
 court.
 
 504 APPENDIX G. 
 
 ISSUE, DATE, AND DURATION OF CERTIFICATES. 
 Act of Feb. 20, 1905, sec. 11. 
 
 52. When the requirements of the law and the rules 
 have been complied with, and the Office has adjudged a 
 trademark registrable, a certificate will be issued, signed 
 by the Commissioner, under the seal of the Patent 
 Office, to the effect that the applicant has complied with 
 the law and that he is entitled to registration of his 
 trademark. The certificate shall state the date on which 
 the application for registration was received in the 
 Patent Office. Attached to the certificate will be a 
 photolithographed copy of the drawing of the trade- 
 mark and a printed copy of the statement and the decla- 
 ration. 
 
 Act of Feb. 20, 1905, sec. 12. 
 
 53. A certificate of registration shall remain in force 
 twenty years from its date, except that, in case a 
 trademark be previously registered in a foreign country, 
 such certificate shall cease to be in force on the day on 
 which the trademark ceases to be protected in such for- 
 eign country, and shall in no case remain in force more 
 than twenty years, unless renewed. 
 
 Act of Feb. 20, 1905, sees. 12 and 14. 
 
 54. A certificate of registration may be, from time 
 to time, renewed for like periods on payment of the re- 
 newal fees required, upon request by the registrant, his 
 legal representatives, or transferees of record in the 
 Patent Office, and such request may be made at any time 
 not more than six months prior to the expiration of 
 the period for which the certificate of registration was 
 issued or renewed. 
 
 Act of Feb. 20, 1905, sec. 12. 
 
 55. Certificates of registration in force on the 1st 
 day of April, 1905, shall remain in force for the period 
 for which they were issued, and shall be renewable on
 
 ACT OP FEBRUARY 20, 1905. 505 
 
 the same conditions and for the same periods as certifi- 
 cates issued under the provisions of tlie act of Februaiy 
 20, 1905, and, when so renewed, shall have the same 
 force and effect as certificates issued thereunder. 
 
 Act of Feb. 20, 1905, sec. 4. 
 
 56. A certificate of registration shall not be issued 
 to an applicant located in a foreign country for any 
 trademark for registration of which he has filed an ap- 
 l)lication in such foreign country, until such mark has 
 been actually registered by him in the country in which 
 he is located. 
 
 ASSIGNMENTS. 
 
 Act of Feb. 20, 1905, sec. 10. 
 
 57. Every registered trademark and every mark for 
 the registration of which application has been made, to- 
 gether with the application for registration thereof, 
 shall be assignable in connection with the good-will of 
 the business in which the mark is used. Such assign- 
 ment must be by an instiTiment in writing and duly 
 acknowledged according to the laws of the country' or 
 State in which the same is executed. Provision is made 
 for recording such assignments in the Patent Office; 
 but no such assignment will be recorded unless it is in 
 the English language, nor unless an application for the 
 registration of the mark shall have been first filed in 
 the Patent Office, and such assignment must identify the 
 application by serial number and date of filing, or, when 
 the mark has been registered, by the certificate number 
 and date thereof. No particular form of assignment 
 is prescribed. 
 
 Act of Feb. 20, 1905, sec. 10. 
 
 58. An assignment shall be void as against any sub- 
 sequent purchaser for a valuable consideration, without 
 notice, unless it he recorded in the Patent Office within 
 three months from the date thereof. 
 
 59. The certificate of registration may l^e issued to
 
 506 APPENDIX Q. 
 
 the assignee of the applicant, but the assignment must 
 first be entered of record in the Patent Office. 
 
 COPIES AND PUBLICATIONS. 
 Act of Feb. 20, 1905, sees. 11 and 14. 
 
 60. After a trademark has been registered, printed 
 copies of the statement and declaration in each case, 
 with a photolithographed copy of the drawing of the 
 trademark, may be furnished by the Office upon the pay- 
 ment of the fee. (See Kule 63.) 
 
 61. An order for a copy of an assignment must give 
 the liber and page of the record, as well as the name 
 of the applicant; othei^wise an extra charge will be 
 made for the time consumed in making a search for 
 such assignment. 
 
 62. The Official Gazette of the Patent Office will con- 
 tain a list of all trademarks registered, with the name 
 and address of the registrant in each case, a description 
 of the trademark itself, and a recitation of the particu- 
 lar description of goods to which it is applied. 
 
 FEES. 
 Rev. Stat., 4893; act of Feb. 20, 1905, sec. 14. 
 
 63. On filing each original application for the registration of 
 
 a trademark $10.00 
 
 On filing each application for renewal of the registration of 
 a trademark 10.00 
 
 On filing notice of opposition to the registration of a trade- 
 mark 10-00 
 
 On appeal from the examiner in charge of trademarks to the 
 Commissioner of Patents 15.00 
 
 On appeal from the decision of the examiner in charge of 
 interferences, awarding ownership of a trademark or canceling 
 the registration of a trademark, to the Commissioner of Patents, 15.00 
 
 For manuscript copies, for every 100 words or fraction 
 
 thereof 
 
 .10 
 
 For recording every assignment, agreement, power of attor- 
 ney, or other paper, of 300 words or less 1.00 
 
 For recording every assignment, agreement, power of attor- 
 ney or other paper of more than 300 words and less than 1,000 
 
 2.00 
 
 "words
 
 ACT OF FEBRUARY 20, 1905. 507 
 
 For recording every assignment, agreement, power of attor- 
 ney, or other paper of more than 1,000 words 3.00 
 
 For abstracts of title: 
 
 For the certificate of search 1.00 
 
 For each brief from the digest of assignments .20 
 
 For searching titles or records, one hour or less .50 
 
 Each additional hour or fraction thereof 50 
 
 For a single printed copy of statement, declaration, and 
 
 drawing 05 
 
 If certified, for the grant, additional 50 
 
 For the certificate 25 
 
 Rev. Stat., 4935. 
 
 64. Money required for Office fees may be paid to 
 the Commissioner of Patents, or to the Treasurer, or to 
 any of the assistant treasurers of the United States, or 
 to any of the depositaries, national banks, or receivers 
 of public money, designated by the Secretarj^ of the 
 Treasury for that purpose, and such officer shall give 
 the depositor a receipt or certificate of deposit therefor, 
 which shall be transmitted to the Patent Office. AVhen 
 this can not be done without inconvenience, the money 
 may be remitted by mail, and in every such case the 
 letter should state the exact amount inclosed. All 
 money orders, drafts, and checks should be made pay- 
 able to the "Commissioner of Patents." 
 
 65. All money sent by mail, to the Patent Office, will 
 be at the risk of the sender. All payments to the Office 
 must be made in specie, Treasury notes, national-bank 
 notes, certificates of deposit, money orders, or certified 
 checks. 
 
 REPAYMENT OF MONEY. 
 Rev. Stat., 4936; act of Feb. 20, 1905, sec. 15. 
 
 66. Money paid by actual mistake, such as a pay- 
 ment in excess, or when not required by law, or by 
 neglect or misinformation on the part of the Office, will 
 be refunded; but a mere change of purpose after the 
 payment of money, as when a party desires to withdraw 
 his application for the registration of a trademark, or
 
 508 APPENDIX G. 
 
 to withdraw an appeal, will not entitle a party to de- 
 mand such a return. 
 
 NOTICE OF REGISTRATION. 
 
 Act of Feb. 20, 1905, sec. 28. 
 
 67. It shall be the duty of the registrant to give 
 notice to the public that a trademark is registered, 
 either by aflSxing thereon the words " Registered in U. 
 S. Patent Office," or "Reg. U. S. Pat. Off.," or, when 
 from the character and size of the trademark, or from 
 its manner of attachment to the article to which it is 
 appropriated, this can not be done, then by affixing a 
 label containing a like notice to the package or re- 
 ceptacle wherein the article or articles are inclosed; 
 otherwise, on a suit for infringement, no damages shall 
 be recovered except on proof that the defendant was 
 duly notified of infringement, and continued the same 
 after such notice. 
 
 AMENDMENTS OF THE RULES. 
 
 68. All amendments of the foregoing rules will be 
 published in the Official Gazette. 
 
 QUESTIONS NOT SPECIFICALLY PROVIDED FOR. 
 
 69. All cases not specifically defined and provided 
 for in these rules will be decided in accordance with 
 the merits of each case under the authority of the Com- 
 missioner, and such decision will be communicated to 
 the interested parties in writing. 
 
 Frederick I. Allen, 
 Commissioner of Patents. 
 
 Department of the Interior. 
 Approved, to take effect April 1, 1905. 
 
 E. A. Hitchcock, 
 
 Secretary.
 
 ACT OF FEBRUARY 20, 1905. 509 
 
 FOIIMS FOll PATENT OFFICE PRACTICE.. 
 
 The following forms illustrate the manner of prepar- 
 ing papers for applications for registration of trade- 
 marks. Applicants will find their business facilitated 
 by following them closely: 
 
 (1) PETITION. 
 To the Commissioner of Patents: 
 
 The undersigned presents herewith a drawing and five specimens 
 (or facsimiles) of his trademark, and requests that the same, together 
 with the accompanying statement and declaration, may be registered 
 in the United States Patent Office in accordance with the law in such 
 
 cases made and provided. 
 
 (Signature) . 
 
 Dated , 19—. 
 
 (2) STATEMENT FOR AN INDIVIDUAL. 
 
 To all ichom it may concern: 
 
 Be it known that I, , a citizen (or subject, as the case 
 
 may be) of the , residing at , , and doing 
 
 business at No. street, in said city, have adopted for my 
 
 use a trademark of which the following is a description: 
 
 My trademark consists of . 
 
 The trademark has been continuously used in my business since 
 
 The class of merchandise to which the trademark is appropriated 
 
 is , and the particular description of goods comprised in said 
 
 class upon which I use said trademark is . 
 
 The trademark is displayed on the packages containing the goods, 
 by placing thereon a printed label on which the same is shown [or state 
 other modes of application to the goods}. 
 
 (Signature) . 
 
 (3) DECLARATION FOR AN INDIVIDUAL. 
 State of . County of 
 
 -, being duly sworn, deposes and says that he is the 
 applicant named in the foregoing statement; that he believes the fore- 
 going statement is true; that he believes himself to be the owner of 
 the trademark sought to be registered; that no other person, firm, 
 corporation, or association, to the best of his knowledge and belief, 
 has the right to use said trademark, either in the identical form or 
 in any such near resemblance thereto as might be calculated to de- 
 ceive; that said trademark is used by him in commerce among the 
 several States of the United States and (or) between the United 
 States and foreign nations or Indian tribes, and particularly with [here 
 name one or more foreign 7iations or Indian tribes, or both, as the case 
 may be]; and that the description, drawing, and specimens (or fac-
 
 510 APPENDIX G. 
 
 similes) presented truly represent the trademark sought to be regis- 
 tered. 
 
 (Signature) . 
 
 Subscribed and sworn to before me, a , this day 
 
 of , 19—. 
 
 [l. s.] (Signature) , 
 
 lOfflcial dharacter.} 
 
 (4) STATEMENT FOR A FIRM. 
 To all whom it may concern: 
 
 Be it known that we, , a firm domiciled in 
 
 county of , State of , and doing business at No. 
 
 street, in said city, and composed of the following members, 
 
 , , , citizens of {or subjects, as the case may be) 
 
 , have adopted for our use a trademark, of which the following 
 
 is a description: 
 
 Our trademark consists of 
 
 The trademark has been continuously used in our business since 
 
 The class of merchandise to which the trademark is appropriated 
 
 is , and the particular description of goods comprised in said 
 
 class upon which said trademark is used is . 
 
 The trademark is displayed on the packages containing the goods, 
 by placing thereon a printed label on which the same is shown [or 
 state other modes of application to the goods'^. 
 
 (Signature) , 
 
 By , 
 
 A member of the firm. 
 
 (5) DECLARATION FOR A FIRM. 
 State of , County of , ss: 
 
 , being duly sworn, deposes and says that he is a 
 
 member of the firm, the applicant named in the foregoing statement; 
 
 that he believes the foregoing statement is true; that he believes said 
 
 firm is the owner of the trademark sought to be registered; that no 
 
 other person, firm, corporation, or association, to the best of his 
 
 knowledge and belief, has the right to use said trademark, either in 
 
 the identical form or in any such near resemblance thereto as might 
 
 be calculated to deceive; that said trademark is used by said firm in 
 
 commerce among the several States of the United States and {or) 
 
 between the United States and foreign nations or Indian tribes, and 
 
 particularly with [here name one or more foreign nations or Indian 
 
 tribes, or both, as the case may be] ; and that the description, drawing, 
 
 and specimens {or facsimiles) presented truly represent the trademark 
 
 sought to be registered. 
 
 (Signature) . 
 
 Subscribed and sworn to before me, a , this day 
 
 of . 19— 
 
 [l. s.] (Signature) . 
 
 [Official character.']
 
 ACT OF FEBRUARY 20, 1905. 511 
 
 (6) STATEMENT FOR A CORPORATION OR ASSOCIATION. 
 
 To all whom it may concern: 
 
 Be it known that , a corporation (or association) duly organ- 
 ized under the laws of the State of (or country), and located in 
 
 the city of , county of , in said State (or country), and 
 
 doing business at No. street, in said city of , has 
 
 adopted for its use a trademark of which the following is a descrip- 
 tion: 
 
 The trademark consists of . 
 
 The trademark has been continuously used In our business since 
 
 The class of merchandise to which the trademark is appropriated 
 
 is , and the particular description of goods comprised in said 
 
 class upon which said trademark is used is . 
 
 The trademark is displayed on the packages containing the goods, 
 by placing thereon a printed label on which the same is shown [or 
 state other modes of application to the goods]. 
 
 (Signature) , 
 
 By „ 
 
 Secretary (or other officer). 
 
 (7) DECLARATION FOR A CORPORATION OR ASSOCIATION. 
 State of . County of , ss: 
 
 , being duly sworn, deposes and says that he is the 
 
 secretary (or other officer) of the corporation (or association) , the ap- 
 plicant named in the foregoing statement; that he believes the fore- 
 going statement is true; that he believes said corporation (or associa- 
 tion) is the owner of the trademark sought to be registered; that no 
 other person, firm, corporation, or association, to the best of his knowl- 
 edge and belief, has the right to use said trademark, either in the 
 identical form or in any such near resemblance thereto as might be 
 calculated to deceive; that said trademark is used by said corporation 
 (or association) in commerce among the several States of the United 
 States, and (or) between the United States and foreign nations or 
 Indian tribes, and particularly with [here name one or more foreign 
 nations or Indian tribes, or both, as the case may be] ; and that the 
 description, drawing, and specimens (or facsimiles) presented truly 
 represent the trademarK sought to be registered. 
 
 (Signature) . 
 
 Subscribed and sworn to before me, a , this day 
 
 of . 19—. 
 
 [L. s.] (Signature) . 
 
 (Official Character.) 
 
 (8) DECLARATION FOR APPLICANTS UNDER THE TEN-YEAR 
 
 PROVISO. 
 
 State of , County of , ss: 
 
 -, being duly sworn, deposes and says that he is the
 
 512 APPENDIX G. 
 
 applicant named in the foregoing statement; that he believes the fore- 
 going statement is true; that he believes himself to be the owner of 
 the mark sought to be registered; that no other person, firm, corpora- 
 tion, or association, to the best of his knowledge and belief, has the 
 right to use said trademark, either in the identical form or in any such 
 near resemblance thereto as might be calculated to deceive; that said 
 mark is used by him in commerce among the several States of the Unit- 
 ed States, and (or) between the United States and foreign nations or 
 Indian tribes, and particularly with [here name one or more foreign 
 nations or Indian tribes, or both, as the case may be] ; that the descrip- 
 tion, drawing, and specimens (or facsimiles) presented truly represent 
 the mark sought to be registered; and that the mark has been in actual 
 use as a trademark of the applicant, or his predecessors from whom 
 he derived title, for ten years next preceding the passage of the act of 
 February 20, 1905, and that, to the best of his knowledge and belief, 
 such use has been exclusive.^ 
 
 (Signature) . 
 
 Subscribed and sworn to before me, a , this day 
 
 of . 19—. 
 
 [L. s.] (Signature) . 
 
 {Official Character.) 
 
 (9) DECLARATION FOR FOREIGNERS. 
 
 State of , County of , ss: 
 
 , being duly sworn, deposes and says that he is the 
 
 applicant named in the foregoing statement; that he believes the fore- 
 going statement is true; that he believes himslf to be the owner of 
 the trademark sought to be registered; that no other person, firm, 
 corporation, or association, to the best of his knowledge and belief, has 
 the right to use said trademark, either in the identical form or in any 
 such near resemblance thereto as might be calculated to deceive; that 
 said trademark has been registered in [here name the foreign country 
 in which applicant resides or is located, and the date and number of the 
 registration'], (or) that an application for registration of said trade- 
 mark was filed by him on the day of , 19—, in [here name 
 
 the foreign country in which applicant resides or is located^; that the 
 description, drawing, and specimens (or facsimiles) presented truly 
 represent the trademark sought to be registered. ^ 
 
 (Signature) . 
 
 Subscribed and sworn to before me, a , this day 
 
 of . 19— 
 
 [l. s.] (Signature) , 
 
 (Official character.) 
 
 1 In case the applicant is a firm, corporation, or association, the 
 declaration should be modified accordingly.
 
 ACT OF FEBRUARY 20, 1905. 
 
 513 
 
 .'■\^^i,lttefe^k//' 
 
 Froprtetor 
 
 ^J 
 
 AUorriBf/.
 
 514 APPENDIX G. 
 
 (10) NOTICE OF OPPOSITION. 
 
 To the Commissioner of Patents: 
 
 In the matter of an application for the registration of a trademark 
 
 for , No. , filed , , by , of 
 
 , I, , residing at No. street, in the 
 
 city of , State of , hereby give notice of my intention to 
 
 oppose the registration of said trademark which was published on 
 page — , No. , of the Official Gazette of , 19 — . 
 
 The grounds for opposition are as follows: , 
 
 Dated this day of , 19—. 
 
 (Signature) . 
 
 State of , County of , ss: 
 
 On this day of , 19 — , before me, a , in 
 
 and for , , personally appeared , the above- 
 named party, who, being duly sworn, deposes and says that, to the 
 best of his knowledge and belief, the facts above stated are true. 
 
 [l. s.] (Signature) , 
 
 (Official character.) 
 
 (11) FORM FOR APPLICATION FOR CANCELLATION OF TRADE- 
 MARK. 
 
 To the Commissioner of Patents: 
 
 In the matter of trademark No. , registered , 19 — , 
 
 by , of , and published on page — , vol. — , No. 
 
 , of the Official Gazette for , 19 — , I, the undersigned, 
 
 residing at No. street, in the city of , State of , 
 
 hereby apply for the cancellation of the registration of the above-noted 
 
 trade-mark. The grounds for cancellation are as follows: . 
 
 (Signature) . 
 
 Dated this day of , 19—. 
 
 State of , County of , ss: 
 
 On this day of , 19 — , before me, a , in 
 
 and for , , personally appeared , the above- 
 named party, who, being duly sworn, deposes and says that, to the 
 best of his knowledge and belief, the facts above stated are true. 
 
 [L. s.] (Signature) , 
 
 (Official cfharacter.)
 
 APPENDIX H. 
 
 TRADE-MARK STATUTES OF THE STATES AND 
 TERRITORIES. 
 
 ALABAMA. 
 
 No registration law. 
 
 Article 8, c. 196, Code, 1896, an Act relating to the 
 unauthorized use or defacement of the bottles, siphons, 
 kegs, etc., of manufacturers, bottlers and venders of 
 soda water and other beverages. 
 
 Act of March 1, 1901. An Act for the protection of 
 labels of labor unions. 
 
 ALASKA. 
 
 Carter's Annotated Alaska Codes, Page 18. 
 
 § 84. Knowingly Using or Counterfeiting Trade- 
 marks, etc. That if any person shall wilfully and 
 knowingly use or cause to be used any private brand, 
 label, stamp, or trademark of another, either by counter- 
 feiting the same or using any impression, or copy 
 thereof made or prepared by the proprietor thereof, 
 or shall wilfully and knowingly use or cause to be used 
 any colorable imitation of such brand, label, stamp, or 
 trademark, with intent to deceive any one, such person, 
 upon conviction thereof, shall be punished by imprison- 
 ment in the county jail not less than one month nor 
 more than six months, or by fine not less than twenty 
 nor more than three hundred dollars. 
 
 515
 
 516 APPENDIX H. 
 
 ARIZONA. 
 
 ACT of 1899. 
 
 An act concerning the protection of trademarks and 
 labels and providing a penalty for the imitation of 
 the same. 
 
 Section 1. Whenever any corporation, association or 
 union of workingmen have adopted or shall hereafter 
 adopt for its or their protection any label, trademark, 
 or form of advertisement announcing that goods to 
 which such label, trademark, or form of advertisement 
 shall be attached, were manufactured by it or by a 
 member or members of such union, it shall be unlawful 
 for any person or corporation to counterfeit or imitate 
 such label, trademark or form of advertisement; every 
 person violating this section shall, upon conviction, be 
 punished by imprisonment in the county jail for not less 
 than three months nor more than one year, or by a fine 
 of not less than one hundred dollars, nor more than 
 two hundred dollars, or by fine and imprisonment. 
 
 Sec. 2. Any person who shall use any counterfeit or 
 imitation of any label, trademark or form of advertise- 
 ment of any such corporation, union or association, 
 knowing the same to be counterfeit or imitation, shall 
 be - guilty of a misdemeanor, and shall be punished by 
 imprisonment in the county jail for a term of not less 
 than three months nor more than one year, or by a fine 
 of not less than one hundred dollars nor more than two 
 hundred dollars, or by both. 
 
 Sec. 3. Every such association, union or corporation 
 that has heretofore adopted or shall hereafter adopt a 
 label, trademark or form of advertisement, as afore- 
 said, shall file the same in the office of the secretary 
 of the territory, by leaving two copies, counterparts or 
 fac-similes thereof with the secretary of the territory;
 
 STATE TRADEMARK STATUTES. 517 
 
 said secretary shall deliver to such corporation, associa- 
 tion or union so filing the same, a duly attested certifi- 
 cate of the record of the same, for which he shall re- 
 ceive a fee of three dollars; such certificate of record 
 shall in all suits and prosecutions under this act be 
 sufficient proof of the adoption of such label, trademark 
 or form of advertisement, and of the right of said 
 union, corporation or association, to adopt the same. 
 
 Sec. 4. Every person who shall use or display the 
 genuine label, trademark or form of advertisement of 
 any such association, corporation or union in any man- 
 ner not authorized by such association, corporation or 
 union, shall be deemed guilty of a misdemeanor, and 
 shall be punished by imprisonment in the county jail 
 not less than three months nor more than one year, or 
 by a fine of not less than one hundred dollars, nor more 
 than two hundred dollars, or both. 
 
 Sec. 5. Any person or persons who shall in any way 
 use the name or seal of any such association, corpora- 
 tion or union, or officer thereof, in and about the sale of 
 goods, or otherwise not being authorized to use the 
 same, shall be guilty of a misdemeanor, punishable by 
 imprisonment in the county jail of not less than three 
 months nor more than one year, or by a fine of not less 
 than one hundred dollars, nor more than two hundred 
 dollars, or both. 
 
 Sec. 6. It shall be the duty of the secretary^ of the 
 territory to see that all associations, unions, or corpora- 
 tions enjoying the benefits of labels, trademarks, or 
 forms of advertisements herein described shall comply 
 with the foregoing provisions in all respects. 
 
 Sec. 7. This act shall take effect and be in force from 
 and after its passage. 
 
 Approved March 6, 1899.
 
 518 APPENDIX H. 
 
 ARKANSAS. 
 
 Sandels & Hill's Digest, Statutes of Arkansas, Chapter CL. 
 
 Section 7347. Protection in use of, how secured. 
 
 Sec. 7348. Declaration under oath of party claiming. 
 
 Sec. 7349. Secretary of state not to record name unaccompanied 
 by marks distinguishable from others. 
 
 Sec. 7350. Copies of trademark, etc., under seal of secretary of 
 state, may be used as evidence. 
 
 Sec. 7351. Trademarks to remain in force twenty-five years; ex- 
 ception. 
 
 Sec. 7352. Penalty for violating trademark. 
 
 Sec. 7353. No action allowed to protect trademark used in unlaw- 
 ful business or obtained by fraud, etc. 
 
 Sec. 7354. Persons obtaining trademark by fraud liable for dam- 
 ages. 
 
 Sec. 7355. Construction of act. 
 
 Section 7347. Any person or firm in this state, or 
 any of the United States or territories thereof, and any 
 corporation created by the authority of this state, or the 
 United States or any of the states or territories thereof, 
 and any person, firm or corporation, resident, or 
 located in any foreign country, which, by treaty or 
 convention, atTords similar privileges to citizens of the 
 United States, and who may be entitled to the exclusive 
 use of any lawful trademark or device, or who may 
 intend to adopt and use any trademark or device for 
 exclusive use in this state, may obtain protection for 
 such lawful trademark or device by complying with the 
 following requisites and requirements. 
 
 First— By making out and filing in the office of the 
 Secretary of State of this state, to be there registered 
 or recorded, a statement specifying the names of the 
 parties and their residence and place of business who 
 desire the protection of the trademark, the class of mer- 
 chandise, and particular description of goods comprised 
 in such class, by which or to which the trademark has 
 been or is intended to be appropriated; a description of 
 the trademark itself or device, or combination of words,
 
 STATE TRADEMARK STATUTES. 519 
 
 letters or figures or characters used or intended to be 
 used as such, and the mode in whicli it has been or is 
 intended to be applied and used, and the length of time, 
 if any, during wliicli the trademark has been in use. 
 
 Second— By making payment to the Secretary of 
 State, for the use of the state, of a fee of not less than 
 twenty-five nor more than one hundred dollars, to be 
 determined by the Secretary according to a schedule of 
 fees arranged with reference to tlie number of words, 
 figures, characters, etc., contained in such statement, 
 which schedule it is made the duty of the Secretary to 
 make and keep posted up in his office. 
 
 Sec. 7348. The certificate prescribed in the preceding 
 section must, in order to create any right whatever in 
 favor of the party filing it, be accompanied by a writ- 
 ten declaration, verified by the person or by some mem- 
 ber of the firm or officer of the corporation by whom it 
 is filed, to the effect that the party claiming the x^ro- 
 tection for the trademark has a right to the use of the 
 same, and that no other person, firm or corporation has 
 the right to such use, either in the identical form or in 
 an}'' such near resemblance therto as might be calculated 
 to deceive, and that the fac-similes presented for record 
 are true copies of the trademark sought to be protected. 
 
 Sec. 7349. The Secretary shall not receive and record 
 any proposed trademark which is not and can not be- 
 come a lawful trademark, or which is merely the name 
 of a person, firm or corporation, unaccompanied by a 
 mark sufficient to distinguish it from the same name 
 when used by other persons, or which is identical with a 
 trademark appropriated to the same class of merchan- 
 dise and belonging to a different owner, and already 
 registered or received for registration, or which so 
 nearly resembles such last-mentioned trademark as to be 
 likely to deceive the public. But this section shall not 
 prevent the registry of any lawful trademark rightfully 
 in use on the first day of May, 1883.
 
 520 APPENDIX H. 
 
 Sec. 7350. The time of the receipt of any trademark 
 at the office of the Secretary of State, for registration or 
 record, shall be noted and recorded. Copies of the 
 trademark, and of the date of receipt thereof, and of the 
 statement filed therewith, under the seal of the secretary 
 of state shall be furnished by the Secretary to any per- 
 son who may apply therefor, and pay the fee therefor 
 fixed by the Secretary, not exceeding the fee required 
 for the original registration thereof, and such copies 
 shall be evidence in any suit or j)roceeding in which 
 such trademark shall be brought in controversy. 
 
 Sec. 7351. A trademark registered as above pre- 
 scribed shall remain in force for twenty-five years from 
 the date of such registration, except in case where such 
 trademark is claimed for, and applied to, articles not 
 manufactured in this state, and in which it receives pro- 
 tection under the laws of some other state, territory or 
 foreign country for a shorter period, in which case it 
 shall cease to have any force in this state, by virtue of 
 this act, at the same time that it becomes of no effect 
 elsewhere. 
 
 Sec. 7352. Such trademark, during the period it re- 
 mains in force, shall entitle the person, firm or corj^ora- 
 tion registering the same to the exclusive use thereof, so 
 far as regards the description of goods to which it is 
 appropriated in the statement filed under oath, as afore- 
 said, and no other party shall lawfully use the same 
 trademark, or substantially the same or so nearly 
 resembling it as to be calculated to deceive, on sub- 
 stantially the same description of goods, or obtain, use 
 or employ any article or thing whatever upon which 
 such trademark, or substantially the same, or one so 
 nearly resembling it as to be calculated to deceive, has 
 been printed, painted, stamped, woven, branded or in any 
 manner put or placed, for the purpose of putting up, 
 shipping, selling, or otherwise disposing of substantially 
 the same description of goods as those to which the
 
 STATE TR^VDEMARK STATUTES. 521 
 
 same has been appropriated by the party rightfully en- 
 titled to the use of such trademark; and any person or 
 member of any firm, or agent, or officer of any cor- 
 poration, not entitled so to do, who shall knowingly use 
 such trademark, or obtain, use or employ, as aforesaid, 
 any such article or thing, or shall reproduce, counter- 
 feit, copy or imitate any recorded trademark, and affix 
 the same to, or, for the purpose of having tlie same used 
 or disposed of, to affix to goods of substantially the 
 same descriptive properties and qualities as those re- 
 ferred to in the registration, or who shall, with intent 
 to defraud, deal in or sell, or keep, or offer for sale, or 
 cause or procure the sale of, any goods of substantially 
 the same descriptive properties as those referred to in 
 the registration of any trademark registered in pursu- 
 ance of this act, to which, or to the package in which the 
 same are put up, is fraudulently affixed said trademark, 
 or any colorable imitation thereof, calculated to deceive 
 the public, Iniowing the same to be counterfeit, or not 
 the genuine article, or goods referred to in said registra- 
 tion, shall be deemed guilty of a high misdemeanor, and 
 upon conviction thereof, shall be punished by a fine not 
 exceeding one thousand dollars, or imprisonment not 
 exceeding one year, or both such fine and imprisonment, 
 and such person, and also the firm of which he is a 
 member, or the corporation of which he is an agent or 
 officer, and which may have countenanced or connived 
 at his act, shall moreover be liable to an action for dam- 
 ages for such wrongful act, at the suit of the owner of 
 such trademark, and the party aggrieved shall also have 
 his remedy according to the course of equity, to enjoin 
 the wrongful use of his trademark, and to recover com- 
 pensation therefor in any court of competent jurisdic- 
 tion, and in any such action or suit such owner or ag- 
 grieved party shall be entitled to recover a reasonable 
 amount for attorney's fees, to be paid by the party or 
 parties hold liable therein.
 
 522 APPENDIX H. 
 
 Sec. 7353. No action shall be maintained under the 
 provisions of this act by any person claiming the 
 exclusive right to any trademark which is used or 
 claimed in unj unlawful business, or upon any article 
 which is injurious in itself, or upon any trademark 
 which has been fraudulently obtained, or which has 
 been formed and used with the design of deceiving the 
 public in the purchase or use of any article of merchan- 
 dise. 
 
 Sec. 7354. Any person who shall procure the registry 
 of any trademark, or of himself as the owner of a trade- 
 mark, by making false or fraudulent representations or 
 declarations, verbally or in writing, or by any fraudu- 
 lent means, shall be liable to pay any damages sustained 
 in consequence thereof to the person injured thereby. 
 
 Sec. 7355. Nothing in this act shall prevent, lessen, 
 impeach or avoid any remedy at law, or in equity, which 
 any party aggrieved by any wrongful use of any trade- 
 mark might have, if the provisions of this act had not 
 been enacted, and nothing in this act contained shall be 
 construed by any court as abridging, or in any manner 
 affecting unfavorably, the claim of any person to any 
 trademark after the expiration of the term for which 
 such trademark was registered. 
 
 Act March 31, 1883. 
 
 An act approved April 20, 1895, is entitled '*An act to 
 provide for the registration of brands, trademarks, etc., 
 of boxes, fountains, sjqohons, bottles or other recepta- 
 cles of carbonated goods, and prescribing penalties for 
 violation of said act." 
 
 A synopsis of its contents is as follows: 
 Section 1. Manufacturers or dealers in carbonated 
 goods may file in office of county clerk a fac-simile of 
 mark, brand, etc., used on goods. Fee of $1.00 for such 
 recording. Description, fac-simile, etc., to be published 
 for three weeks, and gives protection as a trademark.
 
 STATE TRADEM.VRK STATUTES. 523 
 
 Sec. 2. Unlawful to fill any bottle, etc., marked with 
 registered brand, or to obliterate such mark. 
 
 Sec. 3. To sell such bottles, except by contract or 
 permission of manufacturer, a misdemeanor. Employee 
 equally liable with princii)al so offending. 
 
 Sec. 4. Penalty. Fines for each offense. 
 
 Sec. 5. Prosecutions may be made utx)n infonnation 
 by owner or manufacturer or agent. Information. 
 How given. What to state. Justice to issue search war- 
 rant. If goods are found, officer to arrest parties. 
 
 Sec. 6. Purchaser of contents to return bottles, ves- 
 sels, etc. If return is demanded by manufacturer or 
 owner before vessels are empty, owner to refund price 
 of contents paid. 
 
 Sec. 7. Fines under this act to be turned into county 
 treasury. 
 
 Sec. 8. Repeals laws in conflict. Act takes effect 
 from passage. 
 
 CALIFORNIA. 
 
 POLITICAL CODE. 
 
 Section 3196. The phrase "trademark" as used in 
 this chapter includes every description of word, letter, 
 device, emblem, stamp, imprint, brand, printed ticket, 
 label, or wrapper usually affixed by any mechanic, manu- 
 facturer, druggist, merchant, or tradesman, to denote 
 any goods to be goods imported, manufactured, pro- 
 duced, compounded or sold by him, other than any 
 name, word, or expression generally denoting any goods 
 to be of some particular class or description, and also 
 any name or names, marks or devices, branded, 
 stamped, engraved, etched, blown, or otherwise attached 
 or produced upon any cask, keg, bottle, vessel, siphon, can, 
 case, or other package used, by any mechanic manufac- 
 turer, druggist, merchant or tradesman, to hold, contain
 
 524 APPENDIX H. 
 
 or inclose the goods so imported, manufactured, pro- 
 duced, compounded or sold by him, other than any 
 name, word or expression generally denoting any goods 
 to be of some particular class or description. [Amend- 
 ment approved March 3, 1903.] 
 
 Sec. 3197. Any person may record any trademark 
 or name by filing with the Secretary of State his claim 
 to the same, and a copy or description of such trade- 
 mark or name, with his affidavit attached thereto, certi- 
 fied to by any officer authorized to take acknowledg- 
 ments of conveyances, setting forth that he (or the firm 
 or corporation of which he is a member) is the exclusive 
 owner, or agent of the owner, of such trademark or 
 name. [Amendment approved March 12, 1885.] 
 
 66 Cal. 78; 102 CaL 44. 
 
 Sec. 3198. The Secretary of State must keep for pub- 
 lic examination a record of all trademarks, or names 
 filed in the office, with the date when filed and name of 
 claimant; and must, at time of filing, colleci from such 
 claimant a fee of three dollars in gold coin, to be paid 
 into the State Library Fund. [Stats. 1863, p. 155.] 
 
 Note. — Fee for filing and issuing certificate is $5.00. See amend- 
 ment to fee bill, Political Code, §416, subdivision 15 (Statutes of 1903, 
 page 27). 
 
 Sec. 3199. Any person who has first adopted and 
 used a trademark or name, whether within or beyond the 
 limits of this state, is its original owner. Such owner- 
 ship may be transferred in the same manner as personal 
 property and is entitled to the same protection by suits 
 at law, and any court of competent jurisdiction may 
 restrain, by injunction, any use of trademarks, or 
 names, in violation of this chapter. 
 
 Sec. 3200. Any trade union, labor association, or 
 labor organization, organized and existing in this state, 
 whether incorporated or not, may adopt and use a trade- 
 mark and affix the same to any goods made, produced
 
 STATE TRADEMARK STATUTES. 525 
 
 or manufactured by the members of such trade union, 
 labor association, or labor organization, or to the box, 
 cask, case, or package containing such goods, and may 
 record such trademark by filing or causing to be filed 
 with the secretaiy of state its claim to the same, and a 
 copy or description of such trademark, with the affidavit 
 af the president of such trade union, labor association, 
 or labor organization, certified to by any officer autlior- 
 ized to take acknowledgements of conveyances, setting 
 forth that the trade union, labor association, or labor 
 organization, of which he is the president, is the exclu- 
 sive owmcr, or agent of the owner, of such trademark ; 
 and all the provisions of Article III., Chapter VII., Title 
 VII., Part III., of the Political Code, are hereby made 
 applicable to such trademark. 
 
 Sec. 3201. The president or other presiding officer of 
 any trade union, labor association, or labor organization, 
 organized and existing in this state, which shall have 
 complied with the provisions of the preceding section, 
 is hereby authorized and empowered to commence and 
 prosecute in his own name any action or proceedings he 
 may deem necessary for the protection of any trade- 
 mark adopted or in use under the ]n'ovisions of the pre- 
 ceding section, or for the protection or enforcement of 
 any rights or powers which may accrue to such trade 
 union, labor association, or labor organization by the 
 use or adoption of said trademark. 
 
 CIVIL CODE. 
 
 Section 655. There may be ownership of all inani- 
 mate things which are capable of appropriation or of 
 manual delivery; of all domestic animals; or all obliga- 
 tions ; of such products of labor or skill as the composi- 
 tion of an author, the good-will of a business, trade- 
 marks and signs, and of rights created or granted by 
 statute.
 
 526 APPENDIX H. 
 
 Sec. 991. One who produces or deals in a particu- 
 lar tbing, or conducts a particular business, may appro- 
 priate to liis exclusive use, as a trademark, any form, 
 symbol or name, which has not been so appropriated by 
 another, to designate the origin or ownership thereof, 
 but he cannot exclusively appropriate any designation, 
 or part of a designation, which relates only to the name, 
 quality or the description of the thing or business, or the 
 place where the thing is produced or the business is car- 
 ried on. 
 
 Sec. 1772. One who sells or agrees to sell any article 
 to which there is affixed or attached a trademark there- 
 by warrants that mark to be genuine and lawfully used. 
 
 PENAL CODE. 
 
 Sec. 350. Every person who wilfully reproduces, 
 copies, imitates, forges, or counterfeits, or procures to 
 be reproduced, copied, imitated, forged, or counterfeited, 
 any trademark usually affixed by any person to his 
 goods, which has been duly recorded in the office of the 
 Secretary- of State, or with the Commissioner of Patents 
 in the United States Patent Office, or any label or brand, 
 composed in whole or in part of a reproduction of said 
 trademark, or who affixes the same to goods of essen- 
 tially the same descriptive properties and qualities as 
 those referred to in the registration of such trademark, 
 with intent to pass off, or to assist other persons to 
 pass off, any goods to which such reproduced, copied, 
 imitated, forged, or counterfeited trademark, or label, 
 or brand is affixed, or intended to be affixed, as the 
 goods of the person, firm, company, or corporation own- 
 ing the said trademark, is guilty of a misdemeanor. 
 [Approved March 27, 1897.] 
 
 Sec. 351. Every person who sells, or keeps for sale, 
 or manufactures or prepares, for the purpose of sale, 
 any goods upon, or to which any reproduced, copied.
 
 STATE TR.VDEMARK STATUTES. 527 
 
 imitated, forged, or counterfeited trademark, or label, 
 or brand, composed in whole or in part of such a repro- 
 duced, copied, imitated, forged, or counterfeited trade- 
 mark has been affixed, after such trademark has been 
 recorded in the office of the Secretary of State, or with 
 the commissioner of patents in the United States Patent 
 Office, intending to represent such goods as the genuine 
 goods of the person, firm, company, or corporation own- 
 ing the said trademark, knowing the same to be repro- 
 duced, copied, imitated, forged, or counterfeited, is 
 guilty of a misdemeanor. [Approved March 27, 1897.] 
 
 Sec. 352. The phrases "forged trademarks" and 
 "counterfeited trademarks," or their equivalents, as 
 used in this chapter, include every alteration or imita- 
 tion of any trademark so resembling the original as to 
 be likely to deceive. 
 
 Sec. 353. The phrase "trademark," as used in the 
 three preceding sections, includes every description of 
 word, letter, device, emblem, stamp, imprint, brand, 
 printed ticket, label, or wrapper, usually affixed by any 
 mechanic, manufacturer, druggist, merchant, or trades- 
 man, to denote any goods to be goods imported, manu- 
 factured, produced, compounded, or sold by him, other 
 than any name, word, or expression generally denot- 
 ing any goods to be of some particular class or descrip- 
 tion. 
 
 Sec. 354. Every person who has in his possession, 
 or who uses any cask, bottle, vessel, case, cover, label, 
 brand, or other thing bearing, or having in any way 
 connected with it, the trademark of another, which has 
 been duly recorded in the office of the Secretary of State, 
 or with the commissioner of patents in the United States 
 Patent Office, or the trade name of another, for the pur- 
 pose of disposing of any article other than that which 
 such cask, bottle, vessel, case, cover, label, brand, or 
 other thing originally contained, or is connected with by 
 the owner of such trademark or trade name, with intent 
 to deceive or defraud, is guilty of a misdemeanor.
 
 528 APPENDIX H. 
 
 Sec. 354 a. Eveiy person who wilfully sells, or traf- 
 fics in any cask, keg, bottle, vessel, siphon, can, case, or 
 other package bearing the duly filed trademark or name 
 of another, printed, branded, stamped, engraved, etched, 
 blown or otherwise attached or produced thereon, or 
 refills any such cask, keg, bottle, vessel, siphon, can, 
 case, or other package with intent to defraud the owner 
 thereof, without the consent of the owner thereof, or 
 unless the same shall have been purchased from the 
 owner thereof, is guilty of a misdemeanor. 
 
 Sec. 354 h. Every person who shall wilfully deface, 
 erase, obliterate, cover up, or otherwise remove, destroy, 
 or conceal the duly filed trademark, or name of another, 
 printed, branded, stamped, engraved, etched, blown, 
 impressed, or othenvise attached to, or produced upon 
 any cask, keg, bottle, vessel, siphon, can, case, or other 
 package, for the pupose of selling, or trafficing in such 
 cask, keg, bottle, vessel, siphon, can, case, or other pack- 
 age, or refilling such cask, keg, bottle, vessel, siphon, 
 can, case, or other package, with intent to defraud the 
 owner thereof, without the consent of the owner, or 
 unless the same shall have been purchased from the 
 owner, is guiltj^ of a misdeameanor. 
 
 Sec. 991. Civil Code, provides that "one who con- 
 ducts a particular business may appropriate to his exclu- 
 sive use as a trademark any form, symbol, or name, 
 which has not been so appropriated by another to desig- 
 nate the origin or ownership thereof." Under this sec- 
 tion, the name "Cyclops Machine Works" has been pro- 
 tected against infringement, although used only as the 
 name of a machine shop, and not as a trademark.^ 
 
 The Act of March 31, 1891, amended March 5, 1903, 
 is entitled "An act to protect the owners of bottles, 
 boxes, siphons and kegs used in the sale of soda waters, 
 mineral or aerated waters, porter, ale, cider, ginger 
 
 1 — Hainque v. Cyclops Iron Works, 136 Cal. 351, 68 Pac. Rep. 1014.
 
 STATE TRADEMARK STATUTES. 529 
 
 ale, milk, cream, small beer, lager beer, weiss beer, beer, 
 white beer, or other beverages." 
 
 The secretary of state has prescribed the following 
 fonn for applications for registration: 
 
 State of California, I 
 County of , j 
 
 , being duly sworn, deposes and says that he is located 
 
 and doing business in the , State of California. That the said 
 
 is the exclusive owner of the trademark described in the 
 
 specification accompanying this affidavit, and he petitions that the 
 said trademark may be filed in the office of the Secretary of State 
 of the State of California, in accordance with the law in such cases 
 made and provided. 
 
 Subscribed and sworn to before me, this day of 
 
 19— 
 
 Notary Public in and for the said , State of California. 
 
 SPECIFICATION. 
 
 To all whom it may concern: 
 
 Be it known that of , State of California, being 
 
 engaged in the business of , adopted for use a 
 
 trademark, of which the following is a description: 
 
 This trademark consists . 
 
 It has generally been arranged as shown in the accompanying fac- 
 simile, . 
 
 (Space for attaching label.) 
 
 This trademark has been used in its business since the day 
 
 of , . 
 
 The class of merchandise and the particular goods upon which the 
 trademark is used is . 
 
 It has been the custom to imprint it upon . 
 
 Witnesses: 
 
 33
 
 530 APPENDIX H. 
 
 COLORADO. 
 
 AN ACT to confer exclusive rights to the use of labels, trademarks, 
 terms, designs, devices or forms of advertisement and provide 
 for the recording of the same, to provide a remedy for the viola- 
 tion of such right, and the penalty for the unlawful use of labels, 
 trademarks, terms, designs, devices and forms of advertising, and 
 to repeal all acts and parts of acts inconsistent herewith. 
 
 Be it enacted by the General Assembly of the State of 
 Colorado : 
 
 Section 1. "^AHienever any person, or any association 
 or union of workingmen, has heretofore adopted or 
 used, or shall hereafter adopt or nse, any label, trade- 
 mark, term, design, device or form of advertisement for 
 the purpose of designating, making known, or distin- 
 guishing any goods, wares, merchandise or other product 
 of labor, as having been made, manufactured, produced, 
 prepared, packed or put on sale by such person or asso- 
 ciation or union of workingmen or by a member or 
 members of such association or union, it shall be unlaw- 
 ful to counterfeit or imitate such label, trademark, term, 
 design, device or form of advertisement, or to use, sell, 
 offer for sale or in any way utter or circulate any 
 counterfeit or imitation of any such label, trademark, 
 term, design, device or form of advertisement. 
 
 Sec. 2. A^Hioever counterfeits or imitates any such 
 labels, trademark, term, design, device or form of ad- 
 vertisement; or sells, offers for sale or in any way 
 utters or circulates any counterfeit or imitation of any 
 such label, trademark, term, design, device or form of 
 advertisement; or keeps or has in his possession with 
 intent that the same shall be sold or disposed of, any 
 goods, wares, merchandise or other product of labor to 
 which or on which any such counterfeit or imitation 
 is printed, painted, stamped or impressed ; or knowingly 
 sells or disposes of any goods, wares, merchandise or 
 other product of labor contained in any box, case, can
 
 STATE TRADEMARK STATUTES. 531 
 
 or package, lo wliicli or on whioli any such counterfeit 
 or imitation is attached, affixed, printed, painted, 
 stamped or impressed; or keeps or has in his possession 
 with intent that the same shall be sold or disposed of, 
 any goods, wares, merchandise or other products of 
 labor in any box, case, can or package to which or on 
 which any such counterfeit or imitation is attached, 
 affixed, printed, painted, stamped or impressed shall 
 be punished by a fine of not more than five hundred 
 dollars ($500), or by imprisonment for not more than 
 three months, or by both such fine and imprisonment. 
 
 Sec. 3. Every such person, association or union that 
 has heretofore adopted or used, or shall hereafter adopt 
 or use, a label, trademark, term, design, device or form 
 of advertisement as provided in section 1 of this act, 
 may file the same for record in the office of the Secre- 
 tary of State by leaving two copies, counterparts or fac- 
 similes thereof, with said Secretary and by filing there- 
 with a sworn application specifying the name or names 
 of the person, association or union on whose behalf such 
 label, trademark, term, design, device or form of adver- 
 tisement shall be filed; the class of merchandise and 
 description of the goods to which it has been or is in- 
 tended to be appropriated stating that the party so 
 filing or on whose behalf such label, trademark, term, 
 design, device or form of advertisement shall be filed, 
 has the right to the use of the same; that no other per- 
 son, firm, association, union or corporation has the right 
 of such use, either in the identical form or in any such 
 near resemblance thereto as may be calculated to deceive 
 and that the fac-simile or counterparts filed therewith are 
 true and correct. There shall be ])aid for such filing 
 and recording a fee of one dollar. Said Secretary shall 
 deliver to such person, association or union so filing or 
 causing to be filed any such label, trademark, term, de- 
 sign, device or fonn of advertisement, so many duly 
 attested certificates of the recording of the same as such
 
 532 APPENDIX n. 
 
 person, association or union may apply for, for each of 
 which certificates said Secretary shall receive a fee of 
 one dollar. Any such certificate of record shall in all 
 suits and prosecutions under this act be sufficient proof 
 of the adoption of such label, trademark, term, design, 
 device or form of advertisement. Said Secretary of 
 State shall not record for any person, union or associa- 
 tion any label, trademark, term, design, device or form 
 of advertisement that would probably be mistaken for 
 any label, trademark, term, design, device of form of 
 advertisement theretofore filed by or on behalf of any 
 other person, union or association. But the said Secre- 
 tary shall file and record under this act any label, trade- 
 mark, term, design, device or form of advertisement, 
 which may have been previously filed by any person, or 
 any association or union of workingmen, provided the 
 person, association or union seeking to file and record 
 under this act is the same person, association or union 
 that previously filed or recorded the same label, trade- 
 mark, term, design, device or form of advertisement. 
 
 Sec. 4. Any person who shall for himself or on be- 
 half of any other person, association or union procure 
 the filing of any label, trademark, term, design, or form 
 of advertisement in the office of the secretary of state 
 under the provisions of this act, by making any false or 
 fraudulent representations, or declarations, verbally or 
 in writing, or by any fraudulent means, shall be liable 
 to pay any damages sustained in consequence of any 
 such filing, to be recovered by or on behalf of the party 
 injured thereby in any court having jurisdiction and 
 shall be punished by a fine not exceeding five hundred 
 dollars ($500) or by imprisonment not exceeding three 
 months, or by both such fine and imprisonment. 
 
 Sec. 5. Every such person, association or union 
 adopting or using a label, trademark, term, design, de- 
 vice or form of advertisement as aforesaid, may proceed 
 by suit for damages to enjoin the manufacture, use,
 
 STATE TRADEMAEK STATUTES. 533 
 
 display or sale of any counterfeits or imitations thereof 
 and all courts of competent jurisdiction shall grant in- 
 junction to restrain such manufacture, use, display or 
 sale and award the complainant in any such suit dam- 
 ages resulting from such manufacture, use, sale or dis- 
 play as may be by the said court deemed just and rea- 
 sonable, and shall require the defendant to pay to such 
 person, association or union all profits derived from such 
 wrongful manufacture, use, display or sale ; and such 
 court shall also order that all such counterfeits or imi- 
 tations in the possession or under the control of any 
 defendant in such cause be delivered to an officer of the 
 court, or to the complainant to be destroyed. 
 
 Sec. 6. Every person who shall use or display the 
 genuine label, trademark, term, design, device or form 
 of advertisement of any such person, association or 
 union in any manner, not being authorized so to do by 
 such person, union or association, shall be deemed guilty 
 of a misdemeanor and shall be punished by imprison- 
 ment for not more than three months or by a fine of not 
 more than five hundred dollars ($500). 
 
 In all cases where such association or union is not 
 incorporated, suits under this act may be commenced 
 and prosecuted by an officer or member of such associa- 
 tion or union on behalf of and for the use of such asso- 
 ciation or union. 
 
 Sec. 7. Any person or persons who shall in any way 
 use the name or seal of any such person, association or 
 union or officer thereof in and about the sale of goods or 
 otherwise, not being authorized to so use the same, shall 
 be guilty of a misdemeanor, and shall be punishable by 
 imprisonment for not more than three months, or by a 
 fine or not more than five hundred dollars ($500). 
 
 Sec. 8. In case the plaintiff is successful in maintain- 
 ing his action either for damages or for permanent 
 relief by injunction, or for nominal damages only, he 
 shall be entitled to recover a reasonable attorney's fee,
 
 534 ^VPPENDIX H. 
 
 to be taxed by the court as a part of the costs, and 
 merged in the judgment. 
 
 Sec. 9. All acts and parts of acts inconsistent here- 
 with are hereby repealed; provided, that this act shall 
 not be construed as impairing any rights heretofore 
 accrued, nor as affecting the remedies therefor hereto- 
 fore existing. 
 
 Approved April 10, 1899. 
 
 FORM FOR APPLICATION FOR REGISTRATION. 
 
 19—. 
 
 To the Honorable the Secretary of State of the State of Colorado: 
 
 1, , being desirous of availing myself of the provisions of 
 
 An Act of the Legislature of the State of Colorado, in relation to 
 trademarks and labels, approved April 10, 1899, have adopted a certain 
 trademark for the purpose of designating and distinguishing a certain 
 article in manner and form as follows, viz.: 
 
 That the said has the right to use the same and that no 
 
 other person, firm, association, union or corporation has the right to 
 use the same, either in the identical form or in any such near 
 resemblance thereto as may be calculated to deceive, and that the fac- 
 similes or counterparts filed herewith are true and correct. 
 
 State of , „„. 
 
 oo • 
 
 On this day of , A. D. 19 — , before me personally 
 
 appeared the above named , to me personally known, and made 
 
 oath that the foregoing statement by him subscribed is true and 
 correct. 
 
 My commission expires . 
 
 Notary Public.
 
 STATE TRADEMARK STATUTES- 535 
 
 CONNECTICUT. 
 
 General Statutes, Revision of 1902. 
 
 Section 4899. IIecord of certificate. Every person 
 entitled to the exclusive use of any trademark, or who 
 intends to adopt and use any trademark not previously 
 adopted or used by another, may file for record in the 
 office of the Secretary of State a certificate setting forth : 
 his name, residence and place of business; the class of 
 merchandise, and the particular description of goods 
 comprised in such class, to which such trademark has 
 been or is to be appropriated; a description of such 
 trademark, and of the mode in which it is to be applied 
 and used; the date when such trademark was first used 
 or adopted ; that he has a right to the use of it ; and thai 
 no other person has the right to such use, either in the 
 identical form, or having such near resemblance thereto 
 as might be calculated to deceive. A fac-simile of such 
 trademark shall be incoi'porated in or annexed to such 
 certificate, and a duplicate shall be filed therewith, to 
 be pasted or bound into the record-book, if practicable. 
 Such certificate shall be signed by the person in whose 
 behalf it is filed, or by his agent, and the person so 
 signing it shall make oath or affirm that all the state- 
 ments therein contained are true to the best of his 
 knowledge and belief. 
 
 Sec. 4900. Liability for false swearing. Every per- 
 son who shall wilfully swear or affirm falsely, in any 
 such affirmation or affidavit, as to any matter therein 
 required to be set forth, shall be guilty of perjury, and 
 shall pay treble damages to every party injured thereby. 
 
 Sec. 4901. Mandamus to compel record. If the secre- 
 tary of state has reason to apprehend, on the filing of 
 any such certificate, that the statements therein con- 
 tained, or any of thorn, are untrue, he may decline to 
 record the same, unless the party filing it shall obtain
 
 536 APPENDIX H. 
 
 a writ of mandamus to compel such recording. Sucli 
 writ may be granted, but without costs to the Secretary, 
 by any proper court, on due proof that all the state- 
 ments in such certificate are true, but no final hearmg 
 on the application therefor shall be had until such notice 
 thereof as said court may order has been advertised 
 in one or more newspapers published in the county 
 where the party filing such certificate resides. Any 
 persons who desire may appear and intervene as de- 
 fendants and oppose the granting of such writ, and 
 shall be liable to judgment for any costs occasioned by 
 fiuch intervention. 
 
 Sec. 4902. Effect of recording. Every person hav- 
 ing the right to make and file such a certificate and affi- 
 davit, upon the recording of the same in said office, shall 
 be entitled to the exclusive use of the trademark therein 
 described for so long as he or his assigns shall continue 
 to be engaged in the manufacture or sale of the mer- 
 chandise or description of goods to which it is appro- 
 priated; and such right shall be assignable in writing, 
 but all assignments thereof shall be good only against 
 the assignor and his personal representatives until 
 lodged for record in said office. 
 
 Sec. 4903. Copies prima facie evidence. The secre- 
 tary shall retain all such certificates on file, and cause 
 the same and all assignments of trademark rights to be 
 recorded at length in his office. Copies of the record of 
 any such certificate attested by him under the seal of 
 the state, shall be prima facie evidence of the right of 
 the party filing such certificate to the exclusive use of 
 the trademark therein described for the periods limited 
 in Sec. 4902. 
 
 Sec. 4904. Counterfeit or imitation. Every person 
 who shall reproduce, copy, counterfeit, or imitate any 
 such recorded trademark, knowing the same to have 
 been recorded, and affix such reproduction, copy, coun- 
 terfeit, or imitation to goods resembling or designed to
 
 STATE TRADEMARK STATUTES. 537 
 
 resemble those to which such trademark is so appro- 
 priated, shall pay to the owner of such trademark double 
 damages, and also such sum, not more than five hundred 
 dollars, as the court before which the action is brought 
 may order to be added to the damages found by the ver- 
 dict or judgment. 
 
 Sec. 4905. Existing rights not affected. The provi- 
 sions of this chapter shall not abridge any rights to any 
 trademarks existing on the twenty-second day of April, 
 1880, whether the same shall be recorded or not, nor any 
 remedies or rights of action otherwise or theretofore ex- 
 isting in favor of owners of trademarks. 
 
 Sec. 4906. Use wit^ intent to deceive. Every per- 
 son who fraudulently and with intent to deceive, affixes 
 any trademark recorded under this chapter, or any such 
 imitation thereof as is calculated to deceive, to any 
 goods, receptacle, or package similar in descriptive 
 properties to those to ^hich such trademark is appro- 
 priated; or who fraudulently and with intent to deceive 
 places in any receptacle or package to which is lawfully 
 affixed a recorded trademark, goods other than those 
 which said trademark is designed and appropriated to 
 protect; or who fraudulently and with intent to deceive, 
 deals in or keeps for sale any goods with a trademark 
 fraudulently affixed as above described in this section, 
 or any goods contained in any package or receptacle 
 having a lawful trademark, which are not such goods as 
 such trademark was designed and appropriated to pro- 
 tect, shall be fined not more than five hundred dollars, or 
 imjn-isoned not more than thirty days, or both. 
 
 Devices on Bottles, Siphons and Boxes are protected 
 by sections 4913 to 4918 inclusive. 
 
 FORM FOR APPLICATION FOR REGISTRATION. 
 
 Know all men hy these presents: 
 
 That , residing in the town of , county of . and 
 
 State of , and having place of business in and
 
 538 .VPPENDIX H. 
 
 engaged in the and sale of , ha — adopted the following 
 
 trademark, to be applied by label, or by engraving, or stamping said 
 trademark upon said goods or the packages containing them, or in 
 advertising the same. 
 
 (Here insert trademark if possible, and send extra copies for 
 record and certified copies, or accurately describe.) 
 
 And further certify that said trademark was first used by 
 
 on or about the day of , A. D. 19 — , and that 
 
 have the exclusive right to the use of the same. 
 State of , County of . ss: 
 
 -, 19— 
 
 Personally appeared, , and made oath to the truth of the 
 
 foregoing certificate, before me. 
 
 Notary Public. Justice of the Peace. 
 
 DELAWARE. 
 
 Chapter 699, Volume 19, Laws of Delaware. 
 
 [Page 552, Code of 1893.] 
 
 AN ACT to protect associations and unions of workingmen and persons 
 in their labels, trademarks and forms of advertising. 
 
 Be it enacted hy the Senate and House of Representa- 
 tives of the State of Delaware in General Assembly 
 met: 
 
 Section 1. Whenever any person, association or 
 union of workingmen have adopted, or shall hereafter 
 adopt for their protection, any label, trademark, or form 
 of advertisement announcing that goods to which such 
 label, trademark, or form of advertisement shall be 
 attached were manufactured by such person, or by a 
 member or members of such association or union, it 
 shall be unlawful for any person or corporation to coun- 
 terfeit or imitate such label, trademark, or form of 
 advertisement. Every person violating this section 
 shall, upon conviction, be punished by imprisonment in
 
 STATE TR.VDEMARK STATUTES. 539 
 
 the county jail for not less than three months nor more 
 than one year, or by a fine of not less than fifty nor 
 more than one hundred dollars ($100), or both. 
 
 Sec. 2. Every person who shall use any counterfeit 
 or imitation of any label, trademark, or fonn of adver- 
 tisement of any such j^erson, union or association, know- 
 ing the same to be counterfeit or imitation, shall be 
 guilty of a misdemeanor, and shall be punished by 
 imprisonment in the county jail for not less than three 
 months nor more than one year, or by a fine of not less 
 than fifty nor more [than] one hundred dollars ($100), 
 or both. 
 
 Sec. 3. Every person, association or union, that has 
 heretofore adopted, or shall hereafter adopt, a label, 
 trademark, or form of advertisement as aforesaid, may 
 file the same in the office of the Secretary of State, by 
 leaving two copies, counterparts or fac-similes thereof 
 with the secretary of state; said secretary shall deliver 
 to such person, association or union so filing the same a 
 duly attested certificate, for which he shall receive one 
 dollar. Such certificate of filing shall in all suits and 
 prosecutions under this act be sufficient proof of the 
 adoption of such label, trademark or form of advertise- 
 ment, and of the right of such i:)erson, association or 
 union to adopt the same. No label shall be received and 
 filed by the Secretary of State that probably would [be] 
 mistaken for a label already filed. 
 
 Sec. 4. Every such person, association or union 
 adopting a label, trademark or form of advertisement, 
 as aforesaid, may proceed by suit to enjoin the manufac- 
 ture, use, display, or sale of any such counterfeits or 
 imitations, and all courts having jurisdiction thereof 
 shall grant injunctions to restrain such manufacture, 
 use, display, or sale, and shall award the complainant in 
 such suit such damages, resulting from such wrongful 
 manufacture, use, display or sale as may by said court 
 be deemed just and reasonable, and shall require the de-
 
 540 APPENDIX H. 
 
 fendants to pay to such person, association or union the 
 profits derived from such wrongful manufacture, use, 
 display or sale; and said court shall also order that all 
 such counterfeits or imitations in the possession, or 
 under the control, of any defendant in such case be de- 
 livered to an officer of the court, or to the complainant, 
 to be destroyed. 
 
 Sec. 5. Eveiy person who shall use or display the 
 genuine label, trademark, or form of advertisement of 
 any such person, association or union in any manner 
 not authorized by such person, union or association, 
 shall be deemed guilty of a misdemeanor, and shall be 
 punished by imprisonment in the county jail not less 
 than three months nor more than one year, or by fine of 
 not less than fifty nor more than one hundred dollars, 
 or both. In all cases where such association or union 
 is not incorporated, suits under this act may be com- 
 menced and prosecuted by any member or officer of such 
 association or union on behalf of and for the use of 
 such association or union. 
 
 Sec. 6. Any person or persons who shall in any way 
 use the name or seal of any such person, association, or 
 union, or officer thereof, in and about the sale of goods, 
 or otherwise, not being authorized to so use the same, 
 shall be guilty of a misdemeanor, punishable by impris- 
 onment in the county jail of not less than three months 
 nor more than one year, or by a fine of not less than 
 fifty nor more than one hundred dollars, or both. 
 
 Sec. 7. The fines provided for in this act may be en- 
 forced before a justice of the peace in all cases where 
 the party complainant shall so elect, and in case of con- 
 viction before such justice of the peace the offender 
 shall stand committed to the county jail until the fine 
 and costs are fully paid. 
 
 Sec. 8. This shall be deemed and taken to be a pub- 
 lic act. 
 
 Passed at Dover, March 29, 1893.
 
 STATE TRADEMARI>; STATUTES. 541 
 
 Chapter 92, vol. 16, Laws of Delaware (Code 1893, p. 551), relates 
 to the protection of manufacturers and vendors of mineral water, 
 porter, ale, or other beverages against the unauthorized use of or 
 injury to their bottles. 
 
 Chapter 226, p. 435, of the Laws of Delaware of 1898-1899. relates 
 to the protection of any labor organization in the adoption and use of 
 a label or seal. 
 
 FLORIDA. 
 
 CiiAPTEU 4974— (No. 90). 
 
 AN ACT to authorize any person, association or union of workingmen 
 to adopt and use a label or trademark, to protect the same by 
 law, to provide for its record, to prevent counterfeiting the same, 
 or using the original or any package containing the same; and to 
 prevent using the name or seal thereof without authority, and 
 fixing penalties for violations thereof. 
 
 Be it enacted by the Legislature of the State of Florida: 
 Section 1. "WHienever any person or any association or 
 union of workingmen lias heretofore adopted or used, or 
 shall hereafter adopt or use, and has filed as hereinafter 
 provided, any label, trademark, tenn, wording, design, 
 device, color or form of advertisement for the purpose 
 of designating, making known, or distinguishing any 
 goods, wares, merchandise or other product of labor, 
 as having been made, manufactured, produced, prepared, 
 packed or put on sale by such person or association or 
 union of workingmen, or by a member or members of 
 such association or union, it shall be unlawful to coun- 
 terfeit or imitate such label, trademark, teiTii, wording, 
 design, device, color or form of advertisements, or 
 knowingly to use, sell, offer for sale, or in any other way 
 utter or circulate any counterfeit, or imitation of any 
 such label, trademark, term, wording, design, device, 
 color or form of advertisement. 
 
 Sec. 2. AVTioever counterfeits or imitates any such 
 label, trademark, term, wording, design, device, color 
 or form of advertisement, or knowingly sells, offers for
 
 542 APPENDIX H. 
 
 sale, or in any way utters or circulates any counterfeit 
 or imitation of any such label, trademark, term, word- 
 ing, design, device, color or form of advertisement; or 
 knowingly purchases and keeps or has in his possession, 
 with intent that the same shall be sold or disposed of, 
 any goods, wares, merchandise or other product of labor 
 to which or on which any such counterfeit or imitation 
 is printed, painted, stamped or impressed; or knowingly 
 IDurchases with intent to sell or dispose of any goods, 
 wares, merchandise or other product of labor contained 
 in any box, case, can or package to which or on which 
 any such counterfeit or imitation is attached, affixed, 
 printed, painted, stamped or im23ressed; or having 
 knowingly purchased, keeps or has in his possession, 
 with intent that the same shall be sold or disposed of, 
 any goods, wares, merchandise or other product of la- 
 bor in any box, case, can or package, to which or on 
 which any such counterfeit or imitation is attached, 
 affixed, printed, painted, stamped or impressed, shall be 
 punished by a fine of not more than five hundred dol- 
 lars, or by imprisonment for not more than three 
 months. 
 
 Sec. 3. Every such person, association or union that 
 has heretofore adopted or used, or shall hereafter adopt 
 or use, a label, trademark, term, wording, design, device, 
 color or foim of advertisement as provided in section 1 
 of this act, may file the same for record in the office of 
 Secretarj^ of State by leaving two copies, counterparts or 
 fac-similes thereof, with said Secretary, and by filing 
 therewith a sworn application specifying the name or 
 names of the person, association or union on whose 
 behalf such label, trademark, term, wording, design, de- 
 vice, color or form of advertisement shall be filed, the 
 class of merchandise and a description of the goods to 
 which it has been or is intended to be appropriated, stat- 
 ing that the party so filing or on whose behalf such label, 
 trademark, term, wording, design, device, color or form
 
 STATE TR.\DEM.MIK STATUTES. 543 
 
 of advertisement shall be filed, lias the right to the use 
 of the same, that no other person, firm, association, 
 union or corporation has the right to use either in the 
 identical form or in any such near resemblance thereto 
 as may be calculated to deceive, and that the fac-simile 
 or counterparts filed therewith are true and correct. 
 
 Tliere shall be paid for such filing and recording a 
 fee of two dolhu's. Said Secretary shall deliver to such 
 person, association or union so filing or causing to be 
 filed any such label, trademark, term, wording, design, 
 device, color or fonn of advertisement so many duly 
 attested certificates of the recording of the same as 
 such person, association or union may apply for, for 
 each of which the Secretary shall receive a fee of one 
 dollar. Any such certificate of record shall, in all suits 
 and prosecutions under this act, be sufficient proof of 
 the adoption of such label, trademark, term, wording, 
 design, device, color or form of advertisement. Said 
 Secretary of State shall not record for any person, union 
 or association any label, trademark, term, wording, de- 
 sign, device, color or form of advertisement that would 
 probably be mistaken for any label, trademark, term, 
 wording, design, device, color or form of advertisement 
 heretofore filed by or on behalf of any other person, 
 union or association. 
 
 Sec. 4. Any person who shall, for himself or on be- 
 half of any other person, association or union procure 
 the filing of any label, trademark, term, wording, design, 
 device, color or form of advertisement in the office of 
 the Secretary of State, under the provisions of this act, 
 by making any false or fraudulent representations or 
 declaration, verbally or in writing, or by any fraudulent 
 means, shall be liable to pay any damages sustained in 
 consequence of such filing, to be recovered by or on 
 behalf of the party injured thereby, in any court hav- 
 ing jurisdiction, and shall be punished by a fine not 
 exceeding five hundred dollars, or by imprisonment not 
 exceeding three months.
 
 544 APPENDIX H. 
 
 Sec. 5. Every sucli person, association or union adopt- 
 ing or using a label, trademark, term, wording, design, 
 de\'ice, color or form of advertisement as aforesaid, may 
 proceed by suit to enjoin the manufacture, use, display, 
 or sale of any counterfeits or imitations thereof, and 
 all courts of competent jurisdiction shall grant injunc- 
 tions to restrain such manufacture, use, display or sale, 
 and may award the complainant in any such suit dam- 
 ages resulting from any such manufacture, use, sale or 
 display, as may be by the said court deemed just and rea- 
 sonable, and shall require the defendants to pay such 
 person, association or union all profits derived from 
 such wrongful manufacture, use, display or sale; and 
 such court shall also order that all such counterfeits or 
 imitations in the possession or under the control of any 
 defendant in such cause be delivered to an officer of the 
 court, or to the complainants, to be destroyed. 
 
 Sec. 6. Every person who shall use or display the 
 genuine label, trademark, term, wording, design, device, 
 color or form of advertisement of any such person, asso- 
 ciation or union in any manner, not being authorized so 
 to do by such person, union or association, shall be 
 deemed guilty of a misdemeanor, and shall be punished 
 by imprisonment for not more than three months or by 
 a fine of not more than five hundred dollars. 
 
 In all cases where such association or union is not in- 
 corporated, suits under this act may be commenced and 
 prosecuted by an officer or member of such association 
 or union on behalf of and for the use of such association 
 or union. 
 
 Sec. 7. Any person or persons who shall, in any way, 
 use the name or seal of any such person, association or 
 union or officer thereof, in and about the sale of goods 
 or otherwise, not being authorized to use the same, shall 
 be guilty of a misdemeanor, and shall be punishable by 
 imprisonment for not more than three months, or by a 
 fine of not more than one hundred dollars.
 
 STATE TR.VDEM^VKK .STATUTE.,. 545 
 
 Sec. 8. Any person using the trademark so adopted 
 and filed by any other person, or any imitation of such 
 trademark, or any counterfeit thereof; or who shall in 
 any manner mutilate, deface, destroy or remove such 
 trademark from any goods, wares, merchandise, article 
 or articles, or from any package or packages containing 
 the same, or from any empty or second-hand packages, 
 which has contained the same or been used therefor, 
 with the intention of using such empty or second-hand 
 package, or of the same being used to contain goods, 
 wares, merchandise, article or articles of the same gen- 
 eral character as those for which they were first used; 
 and any person who shall use any such empty or second- 
 hand package for the purpose aforesaid, without the con- 
 sent in writing of the person whose trademark was first 
 applied thereto or placed thereon, shall, upon conviction 
 thereof, be fined in any sum not less than five hundred 
 dollars, or by imprisonment for not more than three 
 months, and the goods, wares, merchandise, article or 
 articles contained in any such second-hand package or 
 packages shall be forfeited to the original user of such 
 package or packages whose trademark was first applied 
 thereto or placed thereon. The violation of any of the 
 above provisions as to each particular articles or pack- 
 ages shall be held to be a separate offense. 
 
 Sec. 9. The word ''person" in this act shall be con- 
 strued to include a person, copartnership, corporation, 
 association or union of workingmen. 
 
 Sec. 10. This act shall take effect immediately upon 
 its passage and approval by the Governor. 
 
 Approved May 29, 1901. 
 
 34
 
 54:6 APPENDIX H. 
 
 GEORGIA. 
 
 Code 1895, and Supp., 1901. 
 
 § 1736. Whenever any person, association or union of 
 workinginen have adopted, or shall hereafter adopt for 
 their protection, any label, trademark, or form of ad- 
 vertisement announcing that goods to which such label, 
 trademark, and forms or advertisement shall be attached 
 were manufactured by such person or by a member or 
 members of such association or union, it shall be un- 
 lawful for any person or corporation to counterfeit or 
 imitate such label, trademark, or form of advertisement 
 with intent to use the same for the purpose of de- 
 ceiving the public in the sale of the goods. 
 
 § 1737. Every person who shall use any counterfeit 
 or imitation of any label, trademark, or form of adver- 
 tisement of any such person, union, or association, 
 knowing the same to be counterfeit or imitation, shall be 
 guilty of a misdemeanor. 
 
 § 1738. Every person, association, or union of work- 
 ingmen that has adopted or shall hereafter adopt a label, 
 trademark, or form of advertisement, may file the same 
 for record in the office of the secretary of state by leav- 
 ing two copies, counterparts or fac similes thereof, with 
 the secretary of state. Said secretary shall deliver to 
 such person, association, or union, a duly attested cer- 
 tificate of the record of the same, for which he shall re- 
 ceive the fee of one dollar; such certificate of record 
 shall, in all suits under this chapter, be sufficient proof 
 of the adoption of such label, trademark, or form of 
 advertisement, and of the right of said person, associa- 
 tion, or union to adopt the same. No label shall be 
 recorded that probably would be mistaken for a label 
 already of record. 
 
 § 1739. Every such person, association, or union
 
 STATE TRxVDEM.VRK STATUTES. 547 
 
 ado/)ting a label, trademark or fonn of advertisement 
 as aforesaid, may proceed by suit to enjoin the manu- 
 facture, use, display, or sale of any such counterfeits or 
 imitations, and all courts having jurisdiction thereof 
 shall o^rant injunction to restrain such manufacture, use, 
 display or sale, and shall award the complainant in such 
 suits such damages resulting from such wrongful manu- 
 facture, use, display, or sale as may by said courts be 
 deemed just and reasonable, and shall require the de- 
 fendant to pay such person, association, or union the 
 profit derived from such wrongful manufacture, use, 
 dis])lay, or sale, and such court shall also order that all 
 counterfeits or imitations in the possession or under 
 the control of any defendant in such case be delivered 
 to an officer of the court, or to the complainant, to be 
 destroyed. 
 
 ^ 1740. In all cases where such associations or unions 
 are not incorporated, suits may be commenced and 
 prosecuted by any officer or member of such association 
 or union on behalf of and for the use of such associa- 
 tion or union. 
 
 § 1741. Any person or persons who shall in any way 
 use the name or seal of any such person, association or 
 union, or officer thereof, in and about the sale of goods 
 or otherwise, not being authorized to so use the same, 
 knowing that such use is unauthorized, with the intent 
 to deceive the public in the sale of goods, shall be guilty 
 of a misdemeanor. 
 
 § 4035. Any attempt to encroach upon the business of 
 a trader, or other person, by the use of similar trade- 
 marks, names or devices, with the intention of deceiving 
 and misleading the jDublic, is a fraud for which equity 
 grants relief. 
 
 § GCuG. A\nienover any person, firm, corporation or 
 association shall adopt and use in their business, for 
 their protection, any label, trademark, trade name or 
 form of advertisement, it shall be unlawful for any per-
 
 548 APPENDIX H. 
 
 son, firm, corporation or association to counterfeit or 
 imitate sucli label, trademark, trade name or form of 
 advertisement, with intent to use the same for the pur- 
 pose of deceiving the public in the sale of goods. Every 
 person violating this section shall be guilty of a misde- 
 meanor and punished therefor. 
 
 § 6677. Every person, firm, corporation or association 
 who shall use any counterfeit or imitation of any label, 
 trademark, trade name or form of advertisement of any 
 person, firm, corporation or association, knowing the 
 same to be counterfeit or imitation, shall be guilty of a 
 misdemeanor and punished therefor. 
 
 § 6678. Every person, firm, corporation or association 
 who shall use or display the genuine label, trademark, 
 trade name or form of advertisement of any person, 
 firm, corporation or association, in any manner not 
 authorized by law, such person, firm, corporation or 
 association, knowing that such use is not authorized, 
 with intent to deceive the public in the sale of goods, 
 shall be guilty of a misdemeanor and be punished 
 therefor. 
 
 § 6679. Any firm, person, corporation or association 
 who shall use the name or seal of any other person, 
 firm, corporation or association, in and about the sale 
 of goods or otherwise, not being authorized to use the 
 same, knowing that such use is unauthorized, with in- 
 tent to deceive the public in the sale of goods, shall be 
 guilty of a misdemeanor and punished therefor. 
 
 § 6680. Any person, firm, corporation or association 
 that shall be found guilty of violating the provisions of 
 this act, or any of them as aforesaid, shall be punished 
 as prescribed in section 1039 of the Penal Code. 
 
 The Act of December 20, 1893, entitled ''An Act for 
 the Protection of Union Labels, trademarks, and form 
 of advertisement, and providing penalties for counter- 
 feiting the Same" has been held to be designed ex- 
 clusively for the protection of the labels, trademarks
 
 STATE TRADEMARK STATUTES. 549 
 
 and forms of advertisement of labor unions and asso- 
 ciations. 
 
 Comer v. State, 103 Ga. 69, 29 S. E. Rep. 501. 
 
 IDAHO. 
 
 Political Code, 1901. 
 
 Sec, 635. Wlienever any i)crson or any association 
 or union of workingmen has heretofore adopted or used, 
 or shall hereafter adopt or use any label, trademark, 
 term, design, device or form of advertisement, for the 
 ])urpose of designating, making known or distinguish- 
 ing any goods, wares, merchandise, or other products of 
 labor, as having been made, manufactured, jjroduced, 
 prepared, packed or put on sale, by such i:>erson, or 
 association, or union of workingmen, or by a member or 
 members of such association, or union, it shall be unlaw- 
 ful to counterfeit or imitate such label, trademark, term, 
 design, device or form of advertisement, or to use, sell, 
 offer for sale, or in any way utter or circulate, any 
 counterfeit or imitation of any such label, trademark, 
 term, design, device or form of advertisement. 
 
 Sec. 636. Eveiy such person, association or union, 
 that has heretofore adoi)ted or used, or shall hereafter 
 adopt or use, a label, trademark, term, design, device or 
 form of advertisement, as provided in section 635, may 
 file the same for record in the office of the secretaiy of 
 state, by leaving two copies, counterparts or fac similes 
 thereof, with said secretary, and by filing therewith a 
 sworn application specifying the name or names of the 
 person, association or union on whose behalf such label, 
 trademark, term, design, device or fonn of advertise- 
 ment shall be filed; the class of merchandise and a de- 
 scription of the goods to which it has been or is in- 
 tended to be appropriated, stating that the party so 
 filing, or on whose behalf such label, trademark, tenu,
 
 550 APPENDIX H. 
 
 design, device or form of advertisement shall be filed, 
 lias the right to the use of the same; that no other per- 
 son, firm, association, union or corporation has the right 
 to such use, either in the identical form or in any such 
 near resemblance thereto as may be calculated to de- 
 ceive, and that the fac simile or counterparts filed 
 therewith are true and correct. There shall be iraid for 
 such filing and recording a fee of one dollar. Said sec- 
 retary shall deliver to such person, association or union 
 so filing or causing to be filed any such label, trademark, 
 term, design, device or form of advertisement, so many 
 duly attested certificates of the recording of the same 
 as such person, association or union may apply for, for 
 each of which certificates said secretary shall receive a 
 fee of one dollar. Any such certificate of record shall, 
 in all suits and prosecutions under this act, be sufficient 
 proof of the adoption of such label, trademark, term, 
 design, device or form of advertisement. Said secre- 
 tary of state shall not record for any person, union or 
 association any label, trademark, term, design, device 
 or foim of advertisement that would probably be mis- 
 taken for any label, trademark, term, design, device or 
 form of advertisement theretofore filed by or on behalf 
 of any other person, union or association; and any per- 
 son who shall for himself or on behalf of any other per- 
 son, association or union procure the filing of any label, 
 trademark, term, design or form of advertisement in 
 the office of the secretary of state under the provisions 
 of this subdivision, by making any false or fraudulent 
 representations or declarations, verbally or in writing 
 or by any fraudulent means, shall be liable to pay any 
 damages sustained in consequence of any such filing, 
 to be recovered by or on behalf of the party injured 
 thereby, in any court having jurisdiction. 
 
 Sec. 637. Every such person, association or union 
 adopting or using a label, trademark, term, design, de- 
 vice or form of advertisement as aforesaid may proceed
 
 STATE TRADEMABK STATUTES. 551 
 
 by suit to enjoin the manufacture, use, display or sale 
 of any counterfeits or imitations thereof, and all courts 
 of competent jurisdiction shall grant injunctions to re- 
 strain such manufacture and may award the comj^lain- 
 ant in any such damage resulting from such manufac- 
 ture, use, sale or display as may be by the said court 
 deemed just and reasonable, and shall require the de- 
 fendants to pay to such persons, association, or union 
 all i>rofits derived from such wrongful manufacture, 
 use, displa}'' or sale; and such court shall also order 
 that all such counterfeits or imitations in the possession 
 or under the control of any defendant in such cause, be 
 delivered to an officer of the court, or to the complain- 
 ant to be destroyed; and in all cases where such asso- 
 ciation or union is not incori:)orated, suits may be com- 
 menced and prosecuted by an officer or members of such 
 association or union, on behalf of, and for the use of 
 such association or union. 
 
 Penal Code of 1901. 
 
 Sec. 4950. Whoever counterfeits or imitates any 
 label, trademark, term, design, device or form of adver- 
 tisement, described in section 635 of the Political Code, 
 or sells, offers for sale or in any way utters or circu- 
 lates any counterfeit or imitation of any label, trade- 
 mark, term, design, device or form of advertisement; or 
 keeps or has in his possession, with intent that the same 
 shall be sold or disposed of, any goods, wares, merchan- 
 dise or other product of labor to which or on which any 
 such counterfeit or imitation is printed, painted, 
 stamped or impressed, or knowingly sells or disposes 
 of any goods, wares, merchandise or other product of 
 labor contained in any box, case, can or package, to 
 which or on which, any such counterfeit or imitation is 
 attached, affixed, printed, painted, stamped or im- 
 pressed; or keeps or has in his possession, with intent
 
 552 APPENDIX H. 
 
 that the same shall be sold or disposed of, any goods, 
 wares, merchandise or other product of labor in any 
 box, case, can or package to which or on which any such 
 counterfeit or imitation is attached, affixed, printed, 
 painted, stamped or impressed, shall be guilty of a mis- 
 demeanor and be punished by a fine of not more than 
 one hundred dollars, or by imprisonment for not more 
 than three months. 
 
 Sec. 4951. The phrases ''forged trademark" and 
 *' counterfeit trademarks," or their equivalents, as used 
 in this chapter, includes every alteration or imitation 
 of any trademark so resembling the original as to be 
 likely to deceive. 
 
 Sec. 4952. The j^hrase "trademark," as used in sec- 
 tion 4950, includes every descriiotion of word, letter, de- 
 vice, emblem, stamp, imprint, brand, printed ticket, 
 label, or wrapper usually affixed by any mechanic, manu- 
 facturer, druggist, merchant or tradesman, to denote any 
 goods to be goods imported, manufactured, produced, 
 compounded, or sold by him other than any name, word, 
 or expression generally denoting any goods to be of 
 some particular class or description. 
 
 Section 4999. Any person who shall for himself or 
 on behalf of any other person, association, or union 
 procure the filing of any label, trademark, term, design 
 or form of advertisement in the office of the secretary 
 of state, by making any false or fraudulent representa- 
 tions or declarations, verbally or in writing, or by any 
 fraudulent means, shall be liable to pay any damages 
 sustained in consequence of any such filing, to be re- 
 covered by, or on behalf of, the party injured thereby 
 in any court having jurisdiction, and shall be guilty 
 of a misdemeanor and be punished by a fine not ex- 
 ceeding one hundred dollars, or by imprisonment not ex- 
 ceeding three months. 
 
 Section 5000. Every person who shall use or display 
 the genuine label, trademark, term, design, device or
 
 STATE TR.VDEMARK STATUTES. 553 
 
 form of advertisement of any such person, association 
 or union, in any manner not being autliorized so to do 
 by such person, union or association, shall be deemed 
 guilty of a misdemeanor and shall be punished by im- 
 prisonment for not more than three months, or by fine 
 of not more than one hundred dollars. 
 
 Section 5001. Any person or jjersons who shall in 
 any way use the name or seal of any such i)erson, asso- 
 ciation or union or officer thereof in and about the sale 
 of goods or otherwise not being authorized to so use the 
 same, shall be guilty of a misdemeanor, and shall be 
 punishable by imi>risonment for not more than three 
 months, or by a fine of not more than one hundred 
 dollars. 
 
 ILLINOIS. 
 
 Stakr & C. St. 1896, Vol. 3, Pages 3955-3957. 
 
 AN ACT to protect associations, unions of workingmen and persons 
 in their labels, trademarks and forms of advertising. 
 
 Par. 6, § 1. Whenever any person or any association 
 or union of workingmen has heretofore adopted or used 
 or shall hereafter adopt or use any label, trademark, 
 term, design, device or form of advertisement for the 
 purpose of designating, making known or distinguish- 
 ing any goods, wares, merchandise or other product of 
 labor as having been made, manufactured, produced, 
 prepared, packed or put on sale by such person or asso- 
 ciation or union of workingmen, or by a member or 
 members of such association or union, it shall be un- 
 lawful to counterfeit or imitate such label, trademark, 
 term, design, device, or form of advertisement, or to 
 use, sell, offer for sale, or in any way utter or circulate 
 any counterfeit or imitation of any such label, trade- 
 mark, term, design, device or form of advertisement. 
 
 Par. 7, § 2. Whoever counterfeits or imitates any 
 such label, trademark, term, design, device or form of
 
 554 APPENDIX H. 
 
 advertisement, or sells, offers for sale or in any way 
 utters, or circulates any counterfeit or imitation of any 
 such label, trademark, term, design, device or form of 
 advertisement, or knowingly uses any such counterfeit 
 or imitation, or knowingly sells or disposes of or keeps 
 or has in his possession, with intent that the same shall 
 be sold or disposed of, any goods, wares, merchandise 
 or other product of labor to which any such counterfeit 
 or imitation is attached or affixed, or on which any such 
 counterfeit or imitation is printed, painted, stamped or 
 impressed, or knowingly sells, or disposes of any goods, 
 wares, merchandise or other product of labor contained 
 in any box, case, can or package to which or on which 
 any such counterfeit or imitation is attached, affixed, 
 printed, painted, stamped or impressed, or keeps or has 
 in his possession with intent that the same shall be sold 
 or disposed of, any goods, wares, merchandise or other 
 (product of labor in any box, case, can or package to, 
 which or on which any such counterfeit or imitation is 
 attached, affixed, printed, painted, stamped or im- 
 pressed, shall be punished by a fine of not less than one 
 hundred (100) dollars, nor more than two hundred 
 (200) dollars, or by imiorisonment for not less than 
 three (3) months nor more than one (1) year, or by 
 both such fine and imprisonment. 
 
 Par. 8, § 3. Every such person, association or union 
 that has heretofore adopted or used, or shall hereafter 
 adopt or use, a label, trademark, term, design, device or 
 form of advertisement, as provided in section one (1) 
 of this act, shall file the same for record in the office of 
 the secretary of state, by leaving two (2) copies, coun- 
 terparts or fac similes thereof with said secretary, and 
 by filing therewith a sworn statement specifying the 
 name or names of the person, association or union on 
 whose behalf such label, trademark, term, design, device 
 or form of advertisement shall be filed, the class of mer- 
 chandise and a particular description of the goods to
 
 STATE TRADEM.VRK STATUTES. 555 
 
 which it has been or is intended to be appropriated; that 
 tlie party so filing, or on whose behalf such label, trade- 
 mark, term, design, device or fonn of advertisement 
 shall be filed, has the right to the use of the same, and 
 that no other person, firm, association, union or corpo- 
 ration has the right to such use either in the identical 
 foi-m or in any such near resemblance thereto as may 
 be calculated to deceive, and that the fac simile copies 
 or counterparts filed therewith are true and correct. 
 There shall be paid for such filing and recording a fee 
 of one (1) dollar. Any person who shall for himself, 
 or on behalf of any other person, association or union, 
 procure the filing of any label, trademark, term, design, 
 device or form of advertisement in the office of the 
 secretary of state, under the provisions of this act, by 
 making any false or fraudulent representations or dec- 
 larations, verbally or in writing, or by any fraudulent 
 means, shall be liable to pay any damages sustained in 
 consequence of any such filing, to be recovered by or on 
 behalf of the party injured thereby in any court having 
 jurisdiction, and shall be punished by a fine not ex- 
 ceeding two hundred (200) dollars or by imprisonment 
 not exceeding one (1) year or both such fine and im- 
 prisonment. The secretary of state shall deliver to 
 such person, association or union so filing or causing to 
 be filed any such label, trademark, term, design, device 
 or form of advertisement so many duly attested certifi- 
 cates of the recording of the same as such person, asso- 
 ciation or union may apply for, for each of which cer- 
 tificates said secretary shall receive a fee of one (1) 
 dollar. Any such certificate of record shall in all suits 
 and prosecutions under this act be sufficient proof of 
 the adoption of such label, trademark, term, design, de- 
 vice or fonn of advertisement. Said secretary of state 
 shall not record for any person, union or association 
 any label, trademark, term, design, device or fonn of 
 advertisement that would reasonablv be mistaken for
 
 556 APPENDIX H. 
 
 any label, trademark, term, design, device or form of 
 advertisement theretofore filed by or on behalf of any 
 other person, union or association. 
 
 Par. 9, § 4. Eveiy such person, association or union 
 adopting a label, trademark, or form of advertisement, 
 as aforesaid, may proceed by suit to enjoin the manu- 
 facture, use, display or sale of any such counterfeits or 
 imitations; and all courts having jurisdiction thereof 
 shall grant injunctions to restrain such manufacture, 
 use, display or sale, and shall award the complainant in 
 such suit, such damages, resulting from such wrongful 
 manufacture, use, display or sale, as may by said court 
 be deemed just and reasonable, and shall require the de- 
 fendants to pay to such person, association or union 
 the' profits derived from such wrongful manufacture, 
 use, display or sale; and said court shall also order 
 that all such counterfeits or imitations in the possession 
 or under the control of any defendant in such case be 
 delivered to an officer of the court, or to the complainant 
 to be destroyed. 
 
 Par. 10, § 5. Every person who shall use or display 
 the genuine label, trademark, or form of advertisement 
 of any such person, association or union, in any manner 
 not authorized by such person, union or association, 
 shall be deemed guilty of a misdemeanor, and shall be 
 punished by imprisonment in the county jail not less 
 than three months nor more than one year, or by a fine 
 of not less than one hundred dollars nor more than two 
 hundred dollars, or both. In all cases where such asso- 
 ciation or union is not incorporated, suits under this 
 act may be commenced and prosecuted by any officer or 
 member of such association or union on behalf of and 
 for the use of such association or union. 
 
 Par. 11, § 6. Any person or persons who shall in any 
 way use the name or seal of any such person, associa- 
 tion or union, or officer thereof, in and about the sale of 
 goods or otherwise, not being authorized to use the
 
 STATE TE.yDEM.VRK STATUTES. 557 
 
 same, shall be guilty of a misdemeanor, punishable by 
 imprisonment in the county jail of not less than three 
 months nor more than one year, or by a fine of not less 
 than one hundred dollars nor more than two hundred 
 dollars, or both. 
 
 Supplement 1902 (Vol. 4, Stakr & C. St.) 
 
 Paragraph 1, >; 7. The fines provided for in this act 
 may be enforced before a justice of the peace in all 
 cases where the party complaining shall so elect, and in 
 case of conviction before such justice of the peace the 
 offender shall stand conmiitted to the county jail until 
 the fine and costs are fully paid, under the provisions 
 of section 8, article IX, of an act to revise the law in 
 regard to criminal jurisprudence, in force July 1, 1874, 
 or othei*wise. The first process under this section in 
 all prosecutions for the recovery only of the fines, shall 
 be a summons: provided, however, that a warrant for 
 the arrest of the offender, as in other cases when jus- 
 tices of the peace have original criminal jurisdiction, 
 may issue upon the affidavit of any person that any of 
 the provisions of this act have been violated, and that 
 the person making the complaint has just and reason- 
 able grounds to believe the party charged is guilty 
 thereof. (Section as amended by act approved April 22, 
 1902). 
 
 An Act of May 11, 1901, Hurd's Kevised Stat., 1901, 
 p. 1793, relating to the unlawful buying and selling of 
 receptacles, and for the reg-istration of marks in connec- 
 tion with such articles. This Act has been held to be 
 unconstitutional, as being beyond the ix)lice power of 
 the state and in contravention of § 22, article 4 of the 
 Illinois Constitution of 1870 in Hoi^wich vs. Walker- 
 Gordon Laboratory Co., 205 111. 497, 68 N. E. Kep. 938. 
 A similar statute passed in 1873 (Rev. Stat. 1874, p. 
 1084, Chap. 140) was held unconstitutional in Lippman 
 V. People, 175 111. 101, 51 N. E. Rep. 872.
 
 558 APPENDIX H. 
 
 That union labels are properly within the protection 
 of i^aragraph 6, sections 1 to 6, See Cohn v. People, 
 149 111. 486, 37 N. E. Kep. 60 and see Vogt v. People, 
 57 111. App. 684. 
 
 § 2, Chap. 32, Rev. Stat. 1893, forbidding the incor- 
 poration of two companies under the same name, does 
 not prevent the incorporation of separate concerns un- 
 der the corporate names, ''Elgin Creamery Company" 
 and "Elgin Butter Company"; the word "Elgin" being 
 geographical, and there being no proof of any intent, 
 act or artifice to mislead the public as to the identity of 
 the corporation. 
 
 Elgin Butter Co. v. Sands, 155 111. 127, 40 N. E. 
 Rep. 616. 
 
 That a warrant in aid of a suit for trademark in- 
 fringement was improperly issued under the general 
 search warrant act see White v. Wagar, 185 111. 195; 
 White V. Wagar, 83 111. App. 592. 
 
 APPLICATION FOR REGISTRATION OF TRADEMARK. 
 
 State of — 
 County of 
 
 1} 
 
 The undersigned being duly sworn on oath, says that 
 
 makes this statement in behalf, in pursuance of Chapter 140 of 
 
 "Kurd's" Revised Statutes of the State of Illinois. 
 
 That he files herewith two copies which are counterparts or fac- 
 similes of a certain which has adopted and intends to 
 
 appropriate for the purpose of designating, making known or distin- 
 guishing the following described goods, wares, merchandise or products 
 of labor, to-wit: 
 
 That he has the right to use the said and that no other 
 
 person, firm or association has a right to use, either in the identical 
 form herein set forth or in any such near resemblance thereto as may 
 be calculated to deceive. And that the fac-simile copies or counterparts 
 filed herewith are true and correct.
 
 STATE TRADEMARK STATUTES. 559 
 
 The essential part of said . 
 
 Subscribed and sworn to before me by the said this 
 
 day of , A. D. 19—. 
 
 [seal.] 
 
 'Notary Public. 
 
 INDIANA. 
 
 Burns' Annotated Indiana Statutes, Revision of 1901. 
 
 8681. That any firm, i)erson, corporation or volun- 
 tary association that are citizens of the state of Indiana, 
 except foreign corporations, and who are entitled to the 
 exclusive use of any lawful trademark, label, brand, 
 stamp or wrapi)er, may obtain protection for such law- 
 ful trademark, label, brand, stamp or wrapper by com- 
 plying with the following requirements: First, by caus- 
 ing to be filed with the secretary of state a statement 
 specifying the names of the parties, and the residences 
 and places of business, who desire the protection of the 
 trademark, label, brand, stamp or wrapper, the class of 
 merchandise and the particular description of goods 
 comprised in such class, by which the trademark, label, 
 brand, stamp or wrapper has been, or is intended to be 
 ])rotected. A description of trademark, label, brand, 
 stamp or wrapper, with fac simile thereof, showing the 
 mode in which it has been and is intended to be applied 
 and used, and the length of time, if any, during which 
 the trademark, label, brand, stamp or wrapper has been 
 in use. Second, by making a payment of a fee of two 
 dollars to the secretary of state, whose duty it will be 
 to file and record said statement in a book kept for the 
 purpose to be procured by him as other books in his 
 office of like nature are procured. 
 
 8682. Any certificate or statement prescribed in the
 
 560 APPENDIX H. 
 
 preceding section must, in order to create any right 
 whatever in favor of the party filing it, be accompanied 
 by a written declaration verified by the person, or some 
 member of the firm or oflQcer of the corporation or vol- 
 untary association by whom it is filed, to the effect that 
 the party claiming the protection for the trademark, 
 label, brand, stamp or wrapper, has a right to the same 
 and that no other j^erson, firm, corporation or voluntary 
 association has the right to such use either in the iden- 
 tical form or in any such near resemblance as might be 
 calculated to deceive; and that the description and fac 
 simile i^resented for record are true copies of the trade- 
 mark, label, brand, stamp or wrapper sought to be pro- 
 tected. 
 
 8683. The time of the receipt of any trademarks, 
 label, brand, stamp or wrapper at the office of the secre- 
 tary of state for registration shall be noted and re- 
 corded. Certified copies of the trademark, label, brand, 
 stamp or wrapper, and the date of the receipt thereof, 
 and of the statement and affidavit filed therewith shall be 
 prima facie evidence of the facts and statements and 
 affidavit record in any suit in which such trademark, 
 label, brand, stamp or wrapper shall be brought into 
 controversy. 
 
 8684. A trademark, label, brand stamp or wrapper 
 shall remain in force so long as it is used continuously ; 
 after a disuse of six months it shall be deemed out of 
 existence. Such trademark, label, brand, stamp or 
 wrapper may be sold or assigned, or pass to personal 
 representatives by will, or become assets of an estate. 
 In any case where ownership changes of such trade- 
 mark, label, brand, stamp or wrapper, before it can be 
 used by the successor in title, a statement of such 
 change of ownership shall be filed with the secretary of 
 state, and he shall record the same in the book kept 
 for the purpose of recording trademarks, labels, brands, 
 stamps and wrappers, and such secretary shall receive
 
 STATE TRADEMARK STATUTES. 561 
 
 two dollars for recording such statement; and it shall 
 be unlawful to use such trademark, label, brand, stamp 
 or wrapper till such change of ownership has been filed 
 as aforesaid. 
 
 8685. Such trademark, lal^el, brand, stamp or wrap- 
 per shall entitle the person, firm, corporation, or volun- 
 tary association registering the same to the .exclusive 
 use thereof, so far as regards the description of goods 
 to which it is appropriated in the statement filed under 
 oath as aforesaid, and no other person, firm, corjooration 
 or voluntary association can lawfully use the same 
 trademark, label, brand, stamp or wrapper, or substan- 
 tially the same, or so nearly resembling it as to be cal- 
 culated to deceive upon substantially the same descrip- 
 tion of goods. 
 
 8686. For a violation of any rights created by this 
 act, the person, firm, corporation or voluntary associa- 
 tion aggrieved, shall have all common law remedies and 
 actions for damages, and shall be entitled to an injunc- 
 tion to prevent further use of any trademark, label, 
 brand, stamp or wrapper by this act secured to the in- 
 jured person, firm, corporation, or voluntary associa- 
 tion; and, if an injunction is made final and i^erpetual, 
 the injured firm, corporation or voluntary association 
 shall recover reasonable attorney's fees. 
 
 8687. Any owner of a trademark, label, brand, stamp 
 or wrapper, who has complied with the provisions of 
 this act, shall have the right to grant to others the au- 
 thority to use such trademark, label, brand, stamp or 
 wrapper; but such authority to so use must be in writ- 
 ing, signed by the owner of such trademark, label, 
 brand, stamp or wrapper, with two witnesses to such 
 signature, and no one but the owner shall have the right 
 to use such trademark, label, brand, stamp or wrapper, 
 unless such written authority has been given. 
 
 8688. If it becomes necessaiy for any voluntary as- 
 sociation to assert any right to any trademark, label, 
 
 35
 
 562 APPENDIX H. 
 
 brand, stamiD or wrapper, it shall be sufficient to use 
 the name of jDresident or chief officer of such association 
 either in action at law, suit in equity, or indictment for 
 the violation of the provisions of this act. 
 
 8689. This act shall not be construed to lessen, im- 
 pair or abridge any rights or remedies that have here- 
 tofore existed in favor of any one owning or rightfully 
 claiming a trademark, label, brand, stamp or wrapper. 
 
 8690. That any person or persons, who shall know- 
 ingly or wilfully cast or engrave, or manufacture, or 
 have in his, her or their possession, or buy, sell or oifer 
 for sale, or deal in any die or dies, plate or plates, 
 brand or brands, engraving or engravings on wood, 
 stone, metal or other substances, molds or any false 
 representations, likeness, copy or colorable imitation of 
 any die, plate, brand or mold of any private trademark, 
 label, brand, stamp, wrapper, engraving on paper or 
 other substance, registered and recorded pursuant to 
 this act, shall, upon conviction thereof, be punished by 
 imprisonment in the penitentiary for not less than one 
 year, or more than two years, or be fined in a sum not 
 less than one thousand dollars, or more than two thou- 
 sand dollars. 
 
 8691. That any person or persons (who shall) know- 
 ingly and wilfully make, forge or counterfeit, or have 
 in his, her or their possession, or buy, sell, offer for 
 sale or deal in any representation, likeness, similitude, 
 copy or colorable imitation of any private label, brand, 
 stamp, wrapper, engraving, mold or trade mark, regis- 
 tered and recorded pursuant to this act, shall, upon con- 
 viction thereof, be punished by imprisonment in the pen- 
 itentiary for a period of years not more than two nor 
 less than one, or be fined in any sum not less than one 
 thousand dollars nor more than two thousand dollars. 
 
 8692. It shall be unlawful for any person, firm, cor- 
 poration or voluntary association doing business in this 
 state to have in his or its iDossession, or to sell, or offer
 
 STATE TR.VDEMARK STATUTES. 563 
 
 for sale or trade, any goods, wares, merchandise or 
 otlier article upon which he or it knows is placed or 
 affixed a false, forged or spurious trademark, label, 
 brand, stamp, or wrapper in likeness or imitation of 
 some trademark, label, brand, stamp, or wrapper regis- 
 tered as provided for in this act; and any such person, 
 finn, corporation or voluntary association so having in 
 his or its possession or selling, or offering for sale or 
 trade, any goods, wares or merchandise upon which he 
 or it knows is placed or affixed a false, forged or spur- 
 ious trademark, label, brand, stamp or wrapper in like- 
 ness or imitation of some trademark, label, brand, stamp 
 or wrapper registered as aforesaid shall, upon convic- 
 tion thereof, be i:)unished by fine in a sum of not less 
 than fifty dollars ($50.00) nor more than two hundred 
 dollars ($200.00), or imprisoned in the county jail six 
 months, or both. 
 
 Sections 8678-8680c relate to the protection of manufacturers, bot- 
 tlers, and sellers of mineral water, cider, ale, beer, ginger pop, soda 
 water, distilled water, ginger ale, seltzer water, fermented liquors, and 
 other beverages in the unauthorized use of their bottles or syphons. 
 
 Sections 8693-8703, inclusive, relate to the labels, names and stamps 
 of labor unions and associations. 
 
 Under § S680b. an indictment which failed to charge 
 the defendant filled or caused to be filled any bottle or 
 siphon with any liquid mentioned in the Act, was held 
 to be fatally defective. 
 
 State V. iVright, 159 Ind. 394, 65 N. E. Rep. 190. 
 
 Wlien, under the Act of 1891, page 317, the ''Cigar- 
 maker's International Union of America," a national 
 labor union, registered their label, the benefit of the Act 
 being by its terms limited to, ''any firm, person, coqjo- 
 ration, or voluntary association that is a citizen of the 
 State," it was held that the label could not be protected 
 by a criminal prosecution, notwithstanding the fact that 
 members of the association were citizens of the State. 
 
 State V. Hagen, 6 Ind. App. 167, 33 N. E. Rep. 223.
 
 564 APPENDIX H. 
 
 The sufficiency of an indictment under § 8680b. is dis- 
 cussed in State vs. Barnett, 159 Ind. 432, 65 N. E. Rep. 
 515. 
 
 FORM FOR APPLICATION FOR REGISTRATION. 
 
 Certificate accompanying a 
 
 (Insert Label, Trademark, Stamp, or Form of Advertisement, as the 
 
 case may be.) 
 
 filed in accordance with 
 
 An Act to protect manufacturers from the use of counterfeit labels, 
 stamps and trademarks. 
 
 Name or names of the person or association 
 
 (Follow regulations at a.) 
 
 Residence, location or place of business 
 
 Class of merchandise and the particular description of goods com- 
 prised in such class to which the 
 
 (Insert Label, Trademark, Stamp, or Form of Advertisement, as the 
 
 case may be.) 
 
 has been or is intended to be appropriated 
 
 (Follow regulations at b.) 
 
 Length of time, if any, during which the 
 
 (Insert Label, Trademark, Stamp, or Form of Advertisement, as the 
 
 case may be.) 
 
 has been in use. Since 
 
 (Give Month, Day of Month and Year when adopted, or give date 
 since when in use.) 
 
 REGULATIONS. 
 
 o. If a corporation, state under the laws of what State incor- 
 porated. 
 
 If one or more persons are doing business under a proprietary or 
 
 company name, state the name of such person or persons and add the 
 words "doing business under the name and style of," then give the 
 proprietary or company name under which the business is conducted. 
 
 b. State, first, as near as possible in one or two words, the gen- 
 eral class of merchandise to which the label, trademark, stamp or 
 form of advertisement has been or is intended to be appropriated; 
 
 (Second, as near as possible in one or two words, the particular de- 
 scription or designation in such general class of merchandise. Do not 
 describe the composition, or name the parts which comprise the 
 formula of which the merchandise is composed; 
 
 Third, by using the following words: "The essential feature of the 
 (label, trademark, stamp or form of advertisement) is," giving what 
 is considered to be the essential feature or features thereof. If an 
 illustration or pictorial representation is used for a trademark, it is 
 very desirable that a word or words shall also form a part of the 
 "essential features" of such trademark; 
 
 Fourth, by using the following words, that: "The style and size 
 of type and the color of ink and paper may be varied at pleasure."
 
 STATE TR.U)EMARK STATUTES. 565 
 
 •I, , do hereby declare, in accordance with the provisions 
 
 has a right to the use of the — (Insert Label. Trademark. 
 
 Stamp or P'orm of Advertisement, as the case may be.) referred to In 
 the foregoing certificate, and that no other person, firm, association, 
 union or corporation has the right to such use, either in the identical 
 form or in any such near resemblance thereto as may be calculated to 
 deceive, and 
 
 I further declare that the fac-simlles, copies or counterparts filed 
 with the foregoing certificate are true and correct. 
 
 In witness whereof, I have hereunto signed my name this 
 
 day of , in the year one thousand . 
 
 [stamp.) 
 
 Sign here . 
 
 County of •» 
 
 State of , / 
 
 . 19—. 
 
 Then personally appeared the above-named and made oath 
 
 that the foregoing declaration by him subscribed is true. 
 
 Before me, . 
 
 *If a person, insert name; if an officer of an association, union or 
 corporation, insert name, title of oflice, and name of the association, 
 union or corporation. 
 
 tAffix ten-cent revenue stamp here and cancel by writing initials 
 and date thereon. 
 
 IOWA. 
 
 code 1897, ch. 13. tit. 24. 
 
 Sec. 5049. Falsely using label of labor union. 
 Eveiy person, or association or union of working men 
 or others, that has adopted or shall adopt for their pro- 
 tection any label, trademark or form of advertisement 
 may file the same for record in the office of the secretan^ 
 of state by leaving two copies, counterparts or fac-similes 
 thereof with the secretary of state. Said secretary shall 
 thereupon deliver to such person, association or union 
 so filing the same a duly attested certificate of the rec- 
 ord of the same, for which he shall receive a fee of one 
 dollar. Such certificate of record shall in all actions 
 and prosecutions under the following six sections be
 
 566 APPENDIX H. 
 
 sufficient proof of the adoption of sucli label, trademark 
 or foiTu of advertisement, and the right of said person, 
 association or union to adopt the same. 
 
 Sec. 5050. Injunction. Eveiy person, association 
 or union adopting a label, trademark or form of adver- 
 tisement, as specified in the preceding section, may pro- 
 ceed by action to enjoin the manufacture, use, display or 
 sale of any counterfeits or imitations thereof; and all 
 courts having jurisdiction of such actions shall grant in- 
 junctions to restrain such manufacture, use, display or 
 sale, and shall award the complainant therein such dam- 
 ages resulting from such wrongful manufacture, use, 
 display or sale, and a reasonable attorney's fee to be 
 fixed by the court, and shall require the defendant to 
 l^ay to such person, association or union the profits de- 
 rived from such wrongful manufacture, use, display or 
 sale, and a reasonable attorney's fee to be fixed by the 
 court, and said court shall also order that all such coun- 
 terfeits or imitations in the possession or under the con- 
 trol of any defendant in such case be delivered to an 
 officer of the court to be destroyed. Such actions may 
 be prosecuted for the benefit of any association or union 
 by any officer or member thereof. 
 
 Sec. 5051. Imitation of such label. It shall be un- 
 lawful for any person or corporation to imitate any 
 label, trademark or form of advertisement adopted as 
 provided in the second pi?eceding section, or to know- 
 ingly use any counterfeit or imitation thereof, or to 
 use or display such genuine label, trademark or form 
 of advertisement, or the name or seal of such person, 
 union or association, or of any officer thereof, unless 
 authorized so to do, or in any manner not authorized 
 by him or it. Any person violating any provision of 
 this section shall be imprisoned in the county jail not 
 more than thirty days, or be fined not less than twenty- 
 five nor more than one hundred dollars.
 
 STATE TRADEMARK STATUTES. 567 
 
 RULES GOVERNING REGISTRATION 
 
 OF 
 
 LABELS, TRADEMARKS OR FORMS OF ADVERTISING 
 
 A label, trademark, or fonn of advertising, may be 
 registered in either or several of the above forms, but 
 if in more than one form, a separate registration must 
 be had for each of the forms for which registration is 
 desired. Duplicate fac-similes or counterparts for each 
 fonn must he furnished and a fee of $1.00 paid for each 
 registration certificate issued. 
 
 Applicant must designate in enclosed blank applica- 
 tion the fonn in which registration is desired, whether 
 as a label, trademark, or form of advertising. 
 
 No certificate will be issued covering more than one 
 of above forms. 
 
 If application is made by a corporation, union, or 
 association, the application should be signed by the 
 proper officer tliereof, with official title, giving the full 
 name of the firm, corporation, union or association. 
 
 If by a firm the finn name should be given, signed by 
 a member of the firm, or all the members of such finn. 
 
 Remit $1.00 in payment for each certificate. 
 
 All remittances should be made by draft, express or 
 money orders. 
 
 Please do not send personal checks. 
 
 APPLICATION FOB REGISTRATION. 
 OF A 
 
 by of filed in the office of the Secretary of State, of the 
 
 State of Iowa, in accordance with sections 5049, 5050, 5051, Code of 
 1897. 
 
 The said has been or is intended to be appropriated for use 
 
 in connection with . 
 
 The style and size of type and the color of ink and paper may be 
 varied at pleasure. 
 
 If used as a label, or trademark, it is usually applied by painting
 
 668 APPENDIX H. 
 
 or stenciling, by labels, or by forming on the material of which the 
 product is made. 
 
 If, as a form of advertising, it is used in advertisements, in news- 
 papers, circulars, on letter-heads, on invoices, and other printed matter. 
 
 The said has been in use since and consists of the 
 
 arbitrarily selected word, mark, symbol or character herewith illus- 
 trated. 
 
 The essential features of the consists of . 
 
 Ix Witness V/hereof, I have hereunto signed my name this 
 day of A. D. 190— 
 
 Name 
 By 
 
 State of , ■) 
 
 County of j 
 
 Subscribed and sworn to before me this day of , A. D. 
 
 190—. 
 
 Notary Public. 
 
 KANSAS. 
 
 General Statutes 1901. 
 
 § 7850. If any person or persons shall wilfully change, 
 alter, deface, destroy, counterfeit, cut out or dispose of 
 any trademark, brand, impression or device used by a 
 person, company or corporation within this state, to 
 designate a particular description of goods, wares, mer- 
 chandise, cask, barrel, half-barrel, keg, bottle, package, 
 or the contents thereof, he or they shall forfeit and pay 
 to the owner or owners thereof, for each offense, not 
 exceeding the sum of twenty-five dollars, to be recovered 
 in any court proper to try the same, or before a justice 
 of the peace having jurisdiction of the same. 
 
 § 7851. If any person shall change, shift and place 
 any brand, mark or device, used or intended to be used 
 for the purpose aforesaid, to or upon any piece 
 of goods, wares, merchandise, cask, barrel, half-bar- 
 rel, keg, bottle or package, or shall intermix, take
 
 STATE TR.UDEM.VRK STATUTES. 569 
 
 out, change or shift any article, liquid, or commo- 
 dity whatever, into a branded cask, barrel, half-barrel, 
 keg, bottle or package, and thereby avail him or them- 
 selves of another person or persons' brand, mark, or de- 
 vice, he or they shall forfeit for every such offense the 
 sum of twenty-five dollars, to be recovered as aforesaid. 
 
 Sections 7852-7857, inclusive, protects labor unions in the use of 
 their labels and trademarks. 
 
 KENTUCKY. 
 
 No general trademark law. General Statutes, 1899. 
 
 § 4779. Every union or association of workingmen or 
 women adopting a label, mark, name, brand or device in- 
 tending to designate the products of the labor of members 
 of such union or association of workingmen or women 
 shall, in order to obtain the benefits of this act, file du- 
 plicate copies of such label, mark, name, brand or de- 
 vice in the office of the Secretary of State, who shall, 
 under his hand and seal, deliver to the party filing or 
 registering the same, a certified copy and a certificate of 
 the filing thereof. 
 
 It has been held by the Court of Appeals of Kentucky 
 that union labels will be protected against infringement 
 in the absence of a statute. 
 
 Eetterman v. Powers, 102 Ky. 133, 43 S. W. Rep. 180. 
 
 §§ 1279 and 1279a relate to the protection of packages 
 of manufactures and bottlers of soda water, etc. 
 
 The following foi*m lias been prescribed for applica- 
 tion for registration under Section 4749: 
 
 Be it Remembered, That the has adopted the following label. 
 
 mark, name, brand or device, which is intended to designate the 
 
 products of the labor of members of said towit: 
 
 and hereby files duplicate copies thereof in the office of the Secretary 
 of State, pursuant to the provisions of Section 4749, Chapter 130, Ken- 
 tucky Statutes, title "Union and Labor Associations."
 
 570 APPENDIX II. 
 
 Witness the signatures of the President, Secretary and Treasurer, 
 
 and the corporate seal of the said , this day of 
 
 1902. 
 
 LOUISIANA. 
 
 Act No. 49 of 1898.) 
 
 AN ACT to protect labels, trademarks, terms, designs, devices or forms 
 of advertisement, and to provide a penalty for violation thereof. 
 
 Section 1. Be it enacted by the General Assembly of 
 the State of Louisiana: Whenever any person, or any 
 association or union of workmen, has heretofore 
 adopted or used or shall hereafter adopt or use any 
 label, trademark, term, design, device or form of ad- 
 vertisement for the purpose of designating, making 
 known, or distinguishing any goods, wares, merchandise 
 <?r other jiroduct of labor, as having been made, manu- 
 factured, produced, prepared, packed or put on sale 
 by such person or association or union of working- 
 men or by a member or members of such association or 
 union, it shall be unlawful to counterfeit or imitate 
 such Jabel, trademark, term, design, device or form of 
 advertisement, or to use, sell, offer for sale or in any 
 way utter or circulate any counterfeit or imitation of 
 any such label, trademark, term, design, device or form 
 of advertisement. 
 
 Sec. 2. Be it further enacted, etc.. Whoever coun- 
 terfeits or imitates any such label, trademark, term, de- 
 sign, device or form of advertisement; or sells, offers 
 for sale or in any way utters or circulates any counter- 
 feit or imitation of any such label, trademark, term, de- 
 sign, device or form of advertisement; or keeps or has 
 in his possession with intent that the same shall be 
 sold or disposed of, any goods, wares, merchandise or 
 other product of labor to which or on which any such 
 counterfeit or imitation is printed, painted, stamped or 
 impressed ; or knowingly sells or disposes of any goods, 
 wares, merchandise or other products of labor contained
 
 STATE TRADEMARK STATUTES. 571 
 
 in any box, case, can or package, to which or on which 
 any such counterfeit or imitation is attached, affixed, 
 printed, painted, stamped or impressed; or keeps or 
 has in his possession with intent that the same shall be 
 sold or disposed of, any goods, wares, merchandise or 
 other product of labor in any box, case, can or package 
 to which or on which any such counterfeit or imitation 
 is attached, affixed, printed, painted, stamped or im- 
 pressed, shall be punished by a fine of not more than 
 one hundred dollars or by imprisonment for not more 
 than three months. 
 
 Sec. 3. Every such person, association or union that 
 has heretofore adopted or used, or shall hereafter adopt 
 or use, a label, trademark, terra, design, device or form 
 of advertisement as provided in section 1 of this act, 
 may file the same for record in the office of the secretary 
 of state by leaving two copies, counterparts or fac-sim- 
 iles thereof, with said secretary and by filing therewith 
 a sworn application specifying the name or names of 
 the person, association or union on whose behalf such 
 label, trademark, term, design, device, or form of ad- 
 vertisement shall be filed; the class of merchandise and 
 a description of the goods to which it has been or it in- 
 tended to be appropriated, stating that the party so fil- 
 ing or on whose behalf such label, trademark, term, de- 
 sign, device or form of advertisement shall be fiJed, has 
 the right to the use of the same; that no other person, 
 finn, association, union or corporation has the right 
 to such use, either in the identical form or in any such 
 near resemblance thereto as may be calculated to de- 
 ceive, and that the fac-simile or counterparts filed there- 
 with are tnie and correct. There shall be paid for such 
 filing and recording a fee of one dollar. Said secretary 
 shall deliver to such person, association or union so 
 filing or causing to be filed any such label, trademark, 
 term, design, device or form of advertisement so many 
 duly attested certificates of the recording of the same
 
 572 APPENDIX H. 
 
 as such person, association or union may apply for, for 
 each of which certificates said secretary shall receive a 
 fee of one dollar. Any such certificate of record shall 
 in all suits and prosecutions under this act be sufficient 
 proof of the adoption of such label, trademark, term, 
 design, device or form of advertisement. Said secretary 
 of state shall not record for any person, union or asso- 
 ciation any label, trademark, tenn, design, device or 
 form of advertisement that would probably be mistaken 
 for any label, trademark, term, design, device or form 
 of advertisement heretofore filed by or on behalf of any 
 other person, union or association. 
 
 Sec. 4. Any person who shall for himself or on be- 
 half of any other person, association or union procure 
 the filing of any label, trademark, term, design, device 
 or foim of advertisement in the office of the secretary of 
 state under the provisions of this act, by making any 
 false or fraudulent representations or declarations, ver- 
 bally or in writing or by any fraudulent means, shall be 
 liable to pay any damage sustained in consequence of 
 any such filing to be recovered by or on behalf of the 
 party injured thereby in any court having jurisdiction 
 and shall be punished by a fine not exceeding one hun- 
 dred dollars or by imprisonment not exceeding three 
 months. 
 
 Sec. 5. Every such person, association or union adopt- 
 ing or using a label, trademark, term, design, device or 
 form of advertisement as aforesaid may proceed by 
 suit to enjoin the manufacture, use, display or sale of 
 any such counterfeits or imitations thereof, and all 
 courts . of competent jurisdiction shall grant injunc- 
 tions to restrain such manufacture, use, display or sale 
 and may award the complainant in any such suit dam- 
 ages resulting from such manufacture, use, sale or 
 display as may be by said court deemed just and reason- 
 able, and shall require the defendants to pay to such per- 
 son, association or union all profits derived from such
 
 STATE TR^U)EMiVRK STATUTES. 573 
 
 wrongful manufacture, use, display or sale ; and such court 
 shall also order that all such counterfeits or imitations 
 in the possession or under the control of any defendant 
 in such cause be delivered to an officer of the court, or to 
 the complainant, to be destroyed. 
 
 Sec. G. Every person who shall use or display the 
 genuine label, trademark, term, design, device or form 
 of advertisement of any such person, association or un- 
 ion in any manner, not being authorized so to do by such 
 person or association, shall be deemed guilty of a mis- 
 demeanor, and shall be punished by imprisonment for 
 not more than three months or by a fine of not more 
 than one hundred dollars. In all cases where such asso- 
 ciation or union is not incorporated, suits under this act 
 may be commenced and prosecuted by an officer or member 
 of such association or union on behalf of and for the use 
 of such association or union. 
 
 Sec. 7. Any person or persons who shall in any way 
 use the name or seal of any such person, association or 
 union, or officer thereof, in and about the sale of goods 
 or othei-wise, not being authorized to use the same, shall 
 be guilty of a misdemeanor, and shall be punishable by 
 imprisonment for not more than three months, or by a 
 fine of not more than one hundred dollars. 
 
 Sec. 8. This act shall take effect and be in force from 
 and after its passage. 
 
 Approved July 8, 1898. 
 
 FORM FOR APPLICATION FOR REGISTRATION. 
 
 To all Whom it May Concern: 
 
 Be it Known, That , a corporation organized under the laws 
 
 of the State of , domiciled in the City of , County of , 
 
 and doing business in said city and county, has adopted for its use a 
 
 trademark for of which three copies, counterparts or fac-similes, 
 
 are herewith filed for record in the office of the Secretary of State, to- 
 wit: 
 
 This application is filed on behalf of the aforesaid. The 
 
 class of merchandise, and description of goods to which said trade-
 
 574 APPENDIX H. 
 
 mark has been appropriated and is intended to be appropriated is 
 
 , the said has the sole right to the use of the same. No 
 
 other person, firm, association, union or corporation has the right to 
 such use, either in the identical form herein above described, or in any 
 such resemblance thereto as may be calculated to deceive, and the 
 fac-similes or counterparts herewith filed are true and correct. 
 
 Thus done and signed at the City of this day of 
 
 , 190—. 
 
 AFFIDAVIT. 
 
 State of — 
 County of 
 
 ■-} 
 
 being duly sworn, deposes and says that he is the President 
 
 of the , the applicant named in the foregoing instrument, and 
 
 that the facts alleged in said instrument are true. 
 
 Sworn to and subscribed before me, this day of , 19 — . 
 
 Notary Public. 
 
 MAINE. 
 
 EXTRACT FROM CHAPTER 39 REVISED STATUTES. 
 
 Section 37. Any person entitled to the exclusive use 
 of any trademark, or who intends to adopt and use any 
 trademark not previously adopted or used by another, 
 may file for record in the office of the secretary of state 
 a certificate setting forth his name, residence and place 
 of business; the class of merchandise and the particular 
 description of goods comprised in such class to which 
 such trademark has been or is to be appropriated; a 
 description thereof, and of the mode in which it is to 
 be applied and used; the date when it was first used 
 or adpoted; that he has a right to the use of it; and 
 that no other person, firm or corporation has the right 
 to such use, either in the identical form, or having such 
 near resemblance thereto as is calculated to deceive. A 
 fac-simile of such trademark shall be incorporated in 
 or annexed to said certificate, and a duplicate shall be 
 filed therewith, to be pasted or bound into the record
 
 STATE TR.VDEM^VRK STATUTES. 575 
 
 book, if ijracticable. Such certificate shall be signed and 
 swoni to by such person, or his agent. 
 
 Sec. 38. A\lioever wilfully swears or affinns falsely 
 to any such certificate, is guilty of pei-jury, and shall 
 pay treble damages to every party injured thereby. If 
 the secretary of state has reason to apprehend, on the 
 filing of such certificate, that any statement therein con- 
 tained is untrue, he may decline to record the same, un- 
 less the party filing it obtains a writ of mandamus to 
 compel him. Such writ may be granted, but witliout 
 costs to the secretary, by any proper court, on proof 
 that all the statements in such certificate are true, but 
 no final hearing on the application therefor, shall be had 
 until such notice thereof as said court orders has been 
 advertised in one of more newspaj^ers j)ublished in the 
 county where the party filing said certificate resides; 
 and any persons who desire may appear and intervene 
 as parties defendant, and oppose the granting of such 
 writ, and shall be liable to judgment for any costs occa- 
 sioned by such intervention. 
 
 Sec. 39. Eveiy party entitled to make and file such 
 certificate and affidavit, upon recording the same in said 
 office, becomes entitled to the exclusive use of the trade- 
 mark therein described, so long as he or his assigns con- 
 tinue to be engaged in the manufacture or sale of the 
 merchandise or description of goods to which it is ai> 
 propriated; and such right is assignable in writing; but 
 all assignments thereof are good only against the as- 
 signor and his personal representatives, until lodged for 
 record in said office. 
 
 Sec. 40. The secretaiy of state shall retain all such 
 certificates on file, and cause the same and all assign- 
 ments of trademark lights to be recorded at length in 
 his office, and is entitled to a fee of three dollars for 
 each certificate, and one dollar for each assignment so 
 filed and recorded. Copies of the record of any such 
 certificate, attested by him under the seal of the state,
 
 576 .VPPENDIX H. 
 
 are prima facie evidence of the right of the party filing 
 such certificate to the exclusive use of the trademark 
 tlierein described for the periods limited in the preced- 
 ing section. 
 
 Sec. 41. AVlioever reproduces, copies, counterfeits, or 
 imitates any such recorded trademark, knowing the same 
 to have been recorded, and affixes such reproduction, 
 cojDy counterfeit or imitation to goods resembling or 
 designed to resemble those to which such trademark 
 is so appropriated shall pay to the owner of such trade- 
 mark double damages besides such sum not exceeding 
 five hundred dollars as the court before which the action 
 is brought orders to be added to the damages found by 
 the verdict or judgment. 
 
 Sec. 42. AVlioever fraudulently and with intent to de- 
 ceive affixes any trademark recorded under this chapter, 
 or any such imitation thereof as is calculated to de- 
 ceive, to any goods, receptacle or package similar in 
 descriptive properties to those to which such trademark 
 is appropriated, or who fraudulently and with intent to 
 deceive, jolaces in any receptacle or package to which is 
 lawfully affixed a recorded trademark, goods other than 
 those which said trademark is designed and appro- 
 priated to protect; or who fraudulently and with intent 
 to deceive, deals in or keeps for sale any goods with a 
 trademark fraudulently affixed as above described, or 
 any goods contained in any package or receptacle hav- 
 ing a lawful trademark, but not being such goods as 
 said trademark was designed and appropriated to pro- 
 tect, shall be fined not more than five hundred dollars, 
 or imprisoned not more than thirty days, or both. 
 
 Sec. 43. This chapter does not abridge rights to any 
 existing trademarks, whether the same are hereafter 
 recorded or not, nor any remedies or rights of action 
 otherwise or heretofore existing in favor of owners of 
 trademarks.
 
 STATE TRADEMARK STATUTES. 577 
 
 Laws 1893, Ch. 276. 
 
 AN ACT to protect persons, associations and unions of workingmen and 
 others in their labels, trademarks, devices and forms of advertising. 
 
 Section 1. Whenever any person, or any association, 
 or union of workingmen has adopted and used, or shall 
 hereafter adopt and use any label, trademark, device, or 
 form of advertisement to indicate that goods to which 
 such label, trademark, device or form of advertisement, 
 shall be attached or affixed, or on which the same shall 
 be printed, painted, stam})ed or impressed, were manu- 
 factured or produced, packed or put on sale by such per- 
 son or by such association or union, or by a member or 
 members thereof, which was not, before such adoption 
 and use, lawfully adopted, owned and used by another 
 as a label, trademark, device or form of advertisement, 
 from whom no right or authority to use and adopt the 
 same had been acquired by such person, or by such asso- 
 ciation or union, or by such member or members thereof, 
 nor a counterfeit, imitation or semblance thereof, it shall 
 be unlawful to counterfeit or imitate such label, trade- 
 mark, device or fonn of advertisement, or use the same 
 without the consent or authority of the person, associa- 
 tion or union so having adopted and used it. 
 
 Sec. 2. Whoever knowingly, and with intent to mis- 
 lead or deceive, counterfeits or imitates any such label, 
 trademark, device or fonn of advertisement, or know- 
 ingly uses or sells any such counterfeit or imitation of 
 any such label, trademark, device or form of advertise- 
 ment, or knowingly sells or disjxDses of, or keeps, or has 
 in his possession with intent that the same shall be sold, 
 any goods to which any such counterfeit or imitation of 
 such label, trademark, device or fonn of advertisement 
 is attached or affixed, or on which the same is printed, 
 painted, stamped or impressed, shall, for the first 
 offense be punished by fine not exceeding one hun- 
 3C
 
 578 .APPENDIX H. 
 
 dred dollars, or by imprisonment for less than one year, 
 and for the second and everj^ subsequent offense, he 
 shall be punished by fine not less than one hundred, nor 
 more than five hundred dollars, or by imprisonment not 
 less than sixty days, nor more than three years. 
 
 Sec. 3. Everj^ such person, association or union that 
 has heretofore adopted or shall hereafter adopt, a label, 
 trademark, device or form of advertisement as aforesaid 
 shall file the same for record in the office of the secre- 
 tary of state, by leaving two copies, counterparts or fac- 
 similes thereof, with the secretaiy of state, together 
 with a statement, in writing, signed and sworn to by 
 such person or by some person for and in behalf of such 
 association or union, stating when and by whom so far 
 as he Imows and believes, said label, trademark, device 
 or form of advertisement was adopted or used, in what 
 manner and for what purpose the same is to be used 
 and by what right he claims the same, and such other 
 particulars as shall serve to identify the same, said 
 secretar}^ shall deliver to such person, association or 
 union so filing the same a duly attested certificate of the 
 record of the same, for which he shall receive a fee of 
 two dollars. Such certificate of record shall in all suits 
 and prosecutions under this act be sufficient proof of 
 the adoption of such label, trademark, device, or form of 
 advertisement. No label, trademark, device or form of 
 advertisement shall be recorded that so nearly resem- 
 bles one already recorded as to be liable to be mistaken 
 for such label, trademark, device or form of advertise- 
 ment and when in the judgment of the secretary of state, 
 such resemblance exists he shall refuse to record such 
 label, trademark, device or form of advertisement. 
 
 Sec. 4. Every such person, association or union that 
 has adopted and uses a label, trademark, device or fonn 
 of advertisement, as aforesaid, and which has been re- 
 corded in the office of the secretary of state as herein- 
 before provided, may proceed by suit to enjoin the
 
 STATE TR-U)EMABK STATUTES. 579 
 
 manufacture, use, display or sale of any such counter- 
 feits or imitations, or of any goods to which such coun- 
 terfeits or imitations shall be affixed or attached, or on 
 which the same sliall be printed, i)ainted or impressed, 
 and all courts having jurisdiction thereof shall grant 
 injunctions to restrain such manufacture, use, display 
 or sale, and shall award the complainant in such suit, 
 such damages resulting from such wrongful manufac- 
 ture, use, display or sale as may by said court be 
 deemed reasonable, and shall require the defendants to 
 pay such i^erson, association or union the profits de- 
 rived from such wrongful manufacture, use, display or 
 sale; and said court shall also order that all such coun- 
 terfeits or imitations in the possession or under the 
 control of any defendant in such case, be delivered to 
 an officer of the court, or to the complainant, to be de- 
 stroyed. 
 
 Sec. 5. Every person who shall wilfully use or dis- 
 play the genuine label, trademark, device, or form of 
 advertisement of any such person, association or union, 
 in any manner not authorized by such person, union or 
 association, shall be deemed guilty of a misdemeanor, 
 and shall be punished by imprisonment in the county 
 jail not more than six months, or by a fine not exceeding 
 one hundred dollars, or both; and upon conviction for 
 a second offense, shall be punished by imprisonment not 
 less than thirty days nor more than one year, or by a 
 fine not less than fifty nor more than three hundred 
 dollars, or both. 
 
 Sec. 6. Any person or persons who shall in any way 
 wilfully use the name or seal of any such person, asso- 
 ciation or union, or officer thereof, in and about the sale 
 of goods or otherwise, not being authorized to use the 
 same, shall be guilty of a misdemeanor, and shall be 
 punished by imprisonment in the county jail not more 
 than six months, or by a fine not exceeding one hundred 
 dollars, or both; and upon conviction for a second of-
 
 580 APPENDIX H. 
 
 fense shall be punished by imprisonment not less than 
 thirty days nor more than one year, or by a fine not 
 less than fifty nor more than three hundred dollars, or 
 both. 
 
 Sec. 7. In all cases where the association or union 
 mentioned in this act is not incoriDorated, suits and pro- 
 ceedings under this act may be commenced and prose- 
 cuted by an officer or member of such association or 
 union, for and in behalf of and for the benefit of such 
 association or union. 
 
 Approved March 28, 1893. 
 
 Maine also has an act for the protection of the bottles 
 used in the manufacture and sale of mineral water, soda 
 water, and similar packages ; §§ 35-36, c. 39, E,evised 
 Statutes of 1883, as amended with an additional section 
 in Chapter 125, General Laws 1891. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 Sworn Statement accompanying a , filed in accordance with 
 
 the laws of the State of : 
 
 I, , do hereby certify that the , counterparts or fac- 
 similes of which are filed herewith, is filed on behalf of , doing 
 
 business in , in the State of . That the particular class 
 
 of merchandise and the particular description of the goods to which it 
 has been or is intended to be appropriated is . 
 
 That the essential feature of the said consists of . 
 
 That said has been in use by the above named , since 
 
 That the said has the right to the use of the same, and that 
 
 no other person, firm, association or corporation has the right to such 
 use, either in the identical form, or in any such near resemblance 
 thereto as may be calculatd to deceive, and that the fac-simile copies 
 or counterparts filed herewith are true and correct. 
 
 (Signature) . 
 
 State of — 
 County of 
 
 ^} 
 
 On this day of A. D. 190 — , personally ap- 
 peared the above named and made oath that the foregoing state- 
 ment by him subscribed is true. 
 
 Before me.
 
 STATE TR-\X)EMARK STATUTES. 581 
 
 MARYLAND. 
 
 A.N ACT to protect associations and unions of workingmen and per- 
 sons in their labels, trademarks and forms of advertising and to 
 punish offenders for a violation of the same. 
 
 Section 1. Be it enacted by the General Assembly 
 of Maryland, That whenever any person, association or 
 union of workinginen have adopted, or shall hereafter 
 adopt for their protection any label, trademark or form 
 of advertisement announcing and denoting that goods to 
 which such label, trademark or form of advertisement 
 shall or may be attached, were manufactured by such 
 person or by a member or members of such association 
 or union, it shall not be lawful for any person or corpo- 
 ration to counterfeit or imitate such label, trademark 
 or form of advertisement, every person violating this 
 section shall be deemed guilty of a misdemeanor and 
 shall upon conviction by any court having criminal 
 jurisdiction be punished by imprisonment in the city or 
 county jail for not less than three months nor more than 
 one year or by a fine of not less than one hundred dol- 
 lars nor more than five hundred dollars, or both, in the 
 discretion of the court. 
 
 Sec. 2. And he it enacted, That every person, corpo- 
 ration or association who shall use any counterfeit or 
 imitation of any label, trademark or form of advertise- 
 ment of any such i>erson, union or association, knowing 
 the same to be counterfeit or imitation, (he) shall be 
 guilty of a misdemeanor and shall on conviction by any 
 court having criminal jurisdiction be punished by im- 
 prisonment in the city or county jail for a term of not 
 less than one month nor more than one year, or by a 
 fine of not less than one hundred dollars nor more than 
 two hundred dollars, or both, in the discretion of the 
 court, and the burden of proving that the defendant did 
 not know the true character of the said label, trademark
 
 582 APPENDIX H. 
 
 or form of advertisement, and that he used the same in 
 good faith shall be on the defendant. 
 
 Sec. 3. And he it enacted, That every such person, 
 association or union that has heretofore adopted, or 
 shall here^ifter adopt, a label, trademark or foim of ad- 
 vertisement as aforesaid, may file the same for record, 
 in the office of the Secretary of State by leaving two cop- 
 ies, counterparts or fac-similes thereof, with the Secre- 
 tary of State and said Secretary shall deliver to such 
 person, association or union so filing the same a duly 
 attested certificate of the record of the same for which 
 he shall receive a fee of one dollar, such certificate of 
 record shall be in all suits and prosecutions under this act 
 sufficient proof of the adoption of such label, trademark 
 or fonn of advertisement, and of the right of said per- 
 son, association or union to adopt the same, no label 
 shall be recorded, that probably would be mistaken for 
 a label already of record, of which question the said 
 Secretary shall be the judge. 
 
 Sec. 4. And be it enacted, That every such person, 
 association or union adopting a label, trademark or 
 form of advertisement as aforesaid, may proceed by suit 
 to enjoin the manufacture, use, display or sale of any such 
 counterfeit or imitation, and all courts having jurisdiction 
 thereof shall grant injunctions to restrain such manufac- 
 ture, use, display or sale, and shall award the complainant 
 in such suit such damage resulting from such wrongful 
 manufacture, use, display or sale, as may by said court 
 be deemed just and reasonable, according to the evi- 
 dence in the case, and shall require the defendants to 
 pay such persons, associations or unions, the profits 
 derived from such wrongful manufacture, use, display 
 or sale, and in addition to court costs, such reasonable 
 attorney's fees as the court may allow, and said court 
 shall also order that all such counterfeits or imitations 
 in the possession or under the control of any defendant
 
 STATE TRADEMARK STATUTES. 583 
 
 in such case be delivered to an officer of the court, or 
 to the comi)lainant to be destroyed. 
 
 Sec. 5. And be it enacted, That every person who 
 shall use or display the genuine lal^el, trademark of 
 form of advertisement, of any such person, association 
 or union, in any manner not authorized by such person, 
 union or association, shall be deemed guilty of a misde- 
 meanor and shall, on conviction be punished by im- 
 prisonment in the city or county jail not less than one 
 month nor more than one year, or by a fine of not less 
 than fifty dollars or more than two hundred dollars, or 
 both, in the discretion of the court. 
 
 Sec. 6. And he it enacted, That any person or persons 
 who shall in any way use the name or seal of any such 
 person, association or union, or officer thereof, in and 
 about the sale of goods or othei'wise, not being author- 
 ized to so use the same, shall be guilty of a misde- 
 meanor, punishable on conviction by imprisonment in 
 the city or county jail for a term of not less than three 
 months or more than one year, or by a fine of not less 
 than fifty dollars nor more than three hundred dollars, 
 or both, in the discretion of the court. 
 
 Sec. 7. And he it enacted. That all the acts and parts 
 of acts inconsistent with this act are hereby repealed. 
 
 Sec. 8. And he it enacted, That this act shall take 
 eifect from the date of its passage. 
 
 Approved April 4th, 1892. 
 
 Maryland also has an act for the protection of the 
 bottles, jugs, kegs, etc., of manufacturers and dealers 
 in mineral water and other beverages ; §§ 201-206, Arti- 
 cle 27, General Laws, amended by Acts of 1892, Chapter 
 262. 
 
 As to the requisites of a bill in equity founded on 
 registration under the Act of 1892, see Smitli-Dixon Co. 
 V. Stevens, 59 Atl. Rep. 401.
 
 584 APPENDIX H. 
 
 FORM AND REQUIREMENTS FOR REGISTRATION. 
 
 State of ,■) ,.„_ 
 
 City of , / ^^" • 
 
 I hereby certify that , whose business or trade is , 
 
 have adopted a trademark or label, and hereby make application to 
 the Secretary of State of the State of Maryland, for the registration of 
 the same, in compliance with the provisions of Chapter 357 of the 
 laws of Maryland of 1892. 
 
 Witness, the hand of the President (or other proper oflScer) and 
 the seal of the corporation, this day of , 190 — . 
 
 [corporate seal.] 
 
 President (or other proper officer.) 
 
 State of - , . 
 County of '" 
 
 ■-} 
 
 Personally appeared before me, the undersigned, a Notary Public 
 
 of the State of , residing at , in said State and County 
 
 . , who has signed the foregoing certificate, and made oath in due 
 
 form of law that the matters and things therein set forth are true, 
 and that he is the proper oflScer to sign the same. 
 
 Sworn to and subscribed before me, this day of , 190 — . 
 
 Notary Public. 
 [notarial seal.] 
 
 Note. — This form is preparea for the registration of a trademark 
 when the applicant is a company or corporation. The same blank may 
 be used by a person, firm, or association by striking out that portion of 
 the form which relates only to incorporated companies or corporations. 
 The law requires that two copies or fac-similes of the trademark or 
 label to be filed with the application.
 
 STATE TRADEMARK STATUTES. 585 
 
 MASSACHUSETTS. 
 
 CHAPTER 72, REVISED LAWS. 
 
 Definitions. 
 
 Section 1. The following words shall, in addition to 
 their ordinary meaning, have the meaning herein given: 
 
 The word "name" or "names" in sections two, three, 
 six, ten, twelve, fourteen, fifteen, sixteen, eighteen, nine- 
 teen and twenty-one of this chapter includes "letters," 
 "marks," "devices" and "figures." 
 
 The word "person" or "persons" in sections two, 
 seven, nine, fourteen to twenty, inclusive, and twenty- 
 three, includes "firm," "association," "union," and 
 "corj)oration." 
 
 The word "boots" in section four includes "half 
 boots," "shoes," "pumps," "sandals," "slippers" and 
 "overshoes." 
 
 The word "label" or "labels" in sections six to 
 twelve, inclusive, includes "trademark," "stamp" or 
 "fonn of advertisement." 
 
 The word "beverage" or "beverages" in sections fif- 
 teen to eighteen, inclusive, includes also "milk," 
 "cream," "soda water," "mineral" or "aerated 
 waters," "ale," "beer," "ginger ale" or "similar bev- 
 erages." 
 
 The word "vessel" or "vessels" in sections fifteen to 
 eighteen, inclusive, includes "cans," "bottles," "si- 
 phons," "fountains" and "boxes." 
 
 The word "can" or "cans" in sections nineteen to 
 twenty- three, inclusive, includes "jugs," "bottles" and 
 
 "jars." 
 
 Labels and Trademarks. 
 
 Section 2. When a person uses any peculiar name 
 upon or connected with an article manufactured or sold
 
 586 APPENDIX H. 
 
 by him to designate it as an article of a peculiar kind 
 or quality, or as manufactured by him, no other person 
 shall without his consent use the same or any similar 
 name for the pui^pose of falsely representing an arti- 
 cle to have been manufactured by or to be of the same 
 kind or quality as those manufactured or sold by the 
 person rightfully using such name. 
 
 Sec. 3. Whoever violates the provisions of the preced- 
 ing section, and whoever knowingly sells or exposes for 
 sale an article having a name upon or connected with it 
 in violation of the provisions of the preceding section, 
 shall be liable in an action of tort to any party ag. 
 grieved thereby for all damages actually incurred. 
 
 Sec. 4. Every manufacturer of leather or boots shall 
 have the exclusive right of stamping the articles manu- 
 factured by him with his name and the name of the 
 place of manufacture; and such stamping shall be con- 
 sidered as a warranty that the article stamped is mer- 
 chantable, made of good materials and well manufac- 
 tured ; and such article shall not be considered merchant- 
 able unless so stamped. 
 
 Sec. 5. A person who carries on business in this 
 commonwealth shall not assume or continue to use in 
 his business the name of a person formerly connected 
 with him in partnership or tlie name of any other per- 
 son, either alone or in connection with his own or with 
 any other name or designation, without the consent in 
 writing of such person or of his legal representatives. 
 
 Sec. 6. The sujjreme judicial court or the superior 
 court shall have jurisdiction in equity to restrain the 
 use of names or labels in violation of the provisions of 
 this chai)ter. 
 
 Sec. 7. Any person may adopt a label, not previously 
 owned or adopted by any other person, and file such 
 label for record, by depositing two copies or fac-similes 
 thereof in the office of the secretary of the common- 
 wealth, one of which copies or fac-similes shall be at-
 
 STATE TRADExMARK STATUTES. 587 
 
 tached by the secretary of the commonwealth to the cer- 
 tificate of record hereinafter referred to. The api)licant 
 shall fiJe with the label a certificate specifying the name 
 of the i>erson so filing such label, his residence, situation 
 or place of business, the kind of merchandise to which 
 such label has been or is intended to be appropriated, 
 and the length of time, if any, during which it has been 
 in use. If such label has not ])een and is not intended 
 to be used in connection with merchandise, the particular 
 purpose or use for which it has been or is intended 
 shall be stated in the certificate. Such certificate shall be 
 accompanied by a written declaration, verified under 
 oath by the person, or by a member of the finn or by an 
 officer of the association, union or corporation, by which 
 it is filed, that the party so filing such label has a right 
 to use the same, and that no other person has the right 
 to such use, either in the identical form or in any such 
 near resemblance thereto as may be calculated to de- 
 ceive, and that the copies or fac-similes filed therewith 
 are true. The secretary of the commonwealth shall 
 issue to the person depositing such label a certificate 
 of record, under the seal of the commonwealth, and the 
 secretar}'^ shall cause the certificate to be recorded in his 
 office. Such certificate of record or a certified copy of 
 its record in the office of the secretaiy of the common- 
 wealth, shall in all suits and prosecutions under the pro- 
 visions of this section and of sections eight to fourteen, 
 inclusive, be sufficient proof of the recording of such 
 label and of the existence of the person named in the 
 certificate. Tlie fee for filing the certificate and declara- 
 tion and issuing the certificate of record shall be two 
 dollars. No label shall be recorded which could reason- 
 ably be mistaken for a label already on record. 
 
 Sec. 8. The secretary of the commonwealth is author- 
 ized to make regulations, and prescribe forms for the 
 filing of labels, under the provisions of the preceding 
 section.
 
 588 APPENDIX H. 
 
 Sec. 9. The supreme judicial court or the superior 
 court shall have jurisdiction in equity to restrain the 
 manufacture, use or sale of counterfeits or imitations of 
 a label, recorded as provided in section seven, shall 
 award damages resulting from such wrongful manufac- 
 ture, use or sale and shall require the defendant to pay 
 the owner of such label the profits derived from such 
 wrongful manufacture, use or sale; and may also order 
 that all such counterfeits or imitations in his posses- 
 sion or control be delivered to an officer of the court, 
 or to the complainant to be destroyed. If the complain- 
 ant is not incori3orated, suits under the provisions of 
 sections seven, eight and ten to fourteen, inclusive, may 
 be commenced and prosecuted by an officer thereof, on 
 behalf of and for the use of the complainant. Eveiy 
 member of a complainant firm, association or union shall 
 be liable for costs in any such proceeding. 
 
 Sec. 10. Wlioever knowingly makes or uses any coun- 
 terfeit or imitation of any lawful name or label or 
 causes the same to be made or used, or sells, offers for 
 sale, deals in or has in his joossession with intent to 
 use, sell, offer for sale or deal in the same, or affixes, 
 imi^resses or uses such counterfeit or imitation upon 
 any goods, shall be punished by a fine of not more than 
 two hundred dollars or by imprisonment for not more 
 than one year, or by both such fine and imprisonment. 
 
 Sec. 11. Whoever, with intent to defraud, knowingly 
 casts, engraves or manufactures, or has in his posses- 
 sion, or buys, sells, offers for sale, or deals in, a die, 
 plate, brand, mould, or engraving on wood, stone, metal 
 or other substance, of a label recorded pursuant to the 
 statutes of this commonwealth, or a printing press, or 
 types or other tools, machines or materials provided or 
 prepared for making a counterfeit or imitation of such 
 label, shall be punished by a fine of not more than two 
 hundred dollars or by imprisonment for not more than 
 one year, or by both such fine and imprisonment.
 
 STATE TRADEM.VRK STATUTES. 589 
 
 Sec. 12. "W^ioever knowingly sells or exposes for sale 
 goods upon which any lawful name or label or any 
 counterfeit or imitation thereof is unlawfully afl&xed, im- 
 pressed, or used shall be punished by a fine of not more 
 than two hundred dollars or by imprisonment for not 
 more than one year, or by both such fine and imprison- 
 ment. 
 
 Sec. 13. Whoever, with intent to defraud, knowingly 
 aids or abets in the violation of any of the provisions of 
 the seven preceding sections shall be punished by a fine 
 of not more than one hundred dollars or by imprison- 
 ment for not more than six months, or by both such fine 
 and imprisonment. 
 
 Sec. 14. In any suit or prosecution under the provi- 
 sions of the five preceding sections, the defendant may 
 show that he was the owner of such name or label prior 
 to its being filed under the provisions of section seven, 
 and that it has been wrongfully filed by some other per- 
 son. 
 
 Note. — In a prosecution under this act, the recital in the certificate 
 of adoption that the mark had been in use "since about the year 1888," 
 was held suflScient Commonwealth v. Rozen, 176 Mass., 129, 57 N. E. 
 Rep., 223. 
 
 §§ 15-23 relate to the protection of vessels used in the 
 sale of beverages, and milk cans. Held to be a proper 
 police regulation in CommoniceaWi v. Anselvich, 186 
 Mass. 376, 71 N. E. Rep. 790. 
 
 AN ACT to provide for registration of the insignia of societies, asso- 
 ciations and labor unions, and to prohibit the unauthorized use 
 thereof. 
 
 Be it enacted, etc., as follows: 
 
 Section 1. The insignia, ribbons, badges, rosettes, 
 buttons and emblems of any society, association or labor 
 union may be registered in the office of the secretary of 
 the commonwealth in the manner and subject to the pro- 
 visions, so far as they are applicable, set forth in section
 
 590 APPENDIX H. 
 
 seven of chapter seventy-two of the Revised Laws in re- 
 gard to labels; and the secretary is hereby authorized 
 to make regulations and prescribe forms for such regis- 
 tration. 
 
 Sec. 2. TV^oever, not being a member of a society, 
 association or labor union, for the purpose of repre^ 
 senting that he is a member thereof, wilfully wears or 
 uses the insignia, ribbon, badge, rosette, button or em- 
 blem thereof, if the same has been registered in the 
 office of the secretary of the commonwealth, shall be 
 punished by a fine of not more than twenty dollars, or 
 by imprisonment for not more than thirty days, or by 
 both such fine and imprisonment. 
 
 Sec. 3. Chapter four hundred and thirty of the acts 
 of the year nineteen hundred and two and chapter two 
 hundred and seventy-five of the acts of the year nineteen 
 hundred and three are hereby reappealed. 
 
 Approved May 13, 1904. 
 
 §4 of Chapter 462, Statutes 1895, is a penal section 
 for using counterfeit trademarks upon cigars. Under 
 this section when the defendants were shown to have a 
 place of business within the state, a conviction was sus- 
 tained in the absence of any proof as to where the de- 
 fendants intended to sell the cigars bearing the counter- 
 feit mark. 
 
 Commonn-ealth v. Rozen, 176 Mass. 129, 57 N. E. 
 Eep. 223. 
 
 Pub. Stat. Chap. 76, §1 providing that trademarks 
 cannot be used without the consent of the owner, does 
 not apply to a mark that is the name of a machine upon 
 which there has been a patent, after the expiration of 
 the patent. 
 
 Dover Stamping Co. v. Fellows, 163 Mass. 191, 40 N. 
 E. Rep. 105. 
 
 § 6, Chapter 76, Pub. Stat., forbidding any person to 
 "assume or continue to use" in his business the name 
 of a person formerly connected with him in partnership,
 
 STATE TRiVDEMABK STATUTES. 591 
 
 or the name of any other person "without written con- 
 sent," does not apply to a person advertising himself as 
 "formerly with" or "successor to" another. 
 
 Martin v. Boitker, 163 Mass, 461, 40 X. E. Rep. 7GG. 
 
 In a bill in equity brought by a labor union, under 
 § 3, Chap. 462, Stat. 1895, it has been held immaterial 
 that the defendant's use of the spurious label antedated 
 the passage of the act. 
 
 Tracy v. Banker, 170 Mass. 266, 49 N. E. Rep. 308. 
 
 INSTRUCTIONS AND FORM FOR THE REGISTRATION OF 
 TRADEMARKS. 
 
 COMMONWEALTH OF MASSACHUSETTS. 
 
 OFFICE OF THE SECRETARY. 
 
 The accompanying blank form of application is to be used for the 
 registration of a label, trademark, stamp or form of advertisement in 
 this office under the laws of this Commonwealth. 
 
 The regulations printed in small type upon said application are to 
 be carefully followed and observed. 
 
 Two fac-similes of the label, trademark, stamp or form of advertise- 
 ment, either in the press-printed form as used or hand-printed in India 
 ink upon bond or other substantial paper (not card board), and the 
 statute fee of two dollars for registration are to accompany the appli- 
 cation. 
 
 Do not gum or fasten the fac-similes in any way to the application. 
 
 Wm. M. Olix, 
 Secretary of the Commonwealth. 
 
 COMMONWEALTH OF MASSACHUSETTS. 
 
 (Regulations printed below in small type must be strictly adhered to.) 
 
 Certificate accompanying a 
 
 (Insert the Designation, Insignia, Ribbon, Badge, Rosette, Button or 
 
 Emblem as the case may be.) 
 filed for record in accordance with section 7 of chapter 72 of the Re- 
 vised Laws, relative to the adoption and registration of Labels, and 
 chapter 335 of the Acts of 1904, an Act to provide for registration of 
 the Insignia of Societies, Associations and Labor Unions, and to pro- 
 hibit the unauthorized use thereof. 
 
 Name of the Society, Association or Labor Union, , 
 
 (If the Society, Association or Labor Union is a Voluntary Associa-
 
 592 APPENDIX H. 
 
 tion, state the fact. If a Corporation, state the fact, and name 
 the State under the laws of which it is incorporated.) 
 
 Location, . 
 
 (Give city, or town and State.) 
 
 The particular purpose or use for which the 
 
 (Insert the Designation, Insignia, Ribbon, Badge, Rosette, Button or 
 Emblem as the case may be.) 
 
 has been or is intended to be appropriated, . 
 
 (Give, in as few words as possible, the particular purpose or use for 
 which the Insignia, Ribbon, Badge, Rosette, Button or Emblem 
 has been or is intended to be utilized.) 
 
 The essential feature of the 
 
 (Insert the Designation, Insignia, Ribbon, Badge, Rosette, Button or 
 Emblem, as the case may be.) 
 
 consists of 
 
 (Give only what is considered to be the essential feature or features 
 of the Insignia, Ribbon, Badge, Rosette, Button or Emblem.) 
 
 The style and size of type or lettering, and color of ink and com- 
 modity 
 
 (Use the word viay or the words will not as the case may be.) 
 be varied at pleasure. 
 
 Length of time, if any, during which the 
 
 (Insert the Designation, Insignia, Ribbon, Badge, Rosette, Button or 
 Emblem, as the case may be.) 
 
 has been in use. Since 
 
 (Give Month, Day of Month and Year when adopted, or give date since 
 
 when in use.) 
 
 *I, , do hereby declare in accordance with the provision of 
 
 section 7 of chapter 72 of the Revised Laws, that ha — a right 
 
 to use the 
 
 (Insert the Designation, Insignia, Ribbon, Badge, Rosette, Button or 
 
 Emblem, as the case may be.) 
 referred to in the foregoing certificate, and that no other person, firm, 
 association, union or corporation has the right to such use either in 
 the identical form or in any such near resemblance thereto as may 
 be calculated to deceive and 
 
 I FURTHER DECLARE that the copies or fac-similes filed with the fore- 
 going certificate are true. 
 
 In witness whereof I have hereto signed my name this day 
 
 of in the year nineteen hundred and . 
 
 [Sign here.] •
 
 STATE TRADEMARK STATUTES. 593 
 
 COMMONWEALTH OF MASSACHUSETTS. 
 
 190—. 
 
 Then personally appeared the above-named and made oath 
 
 that the foregoing declaration by him subscribed is true. 
 Before me. 
 
 Justice of the Peace. 
 * This declaration Is to be signed and sworn to by an officer of the 
 Society, Association or Labor Union; insert name of officer, title of 
 office, and name of the Society, Association or Labor Union. Outside of 
 Massachusetts, oath is to be administered by a Commissioner for Mas- 
 sachusetts or Notary Public. 
 
 FORM OP FAC-SIMILES. 
 
 This application for registration is to be accompanied by two fac- 
 similes, copies or counterparts of the Insignia, Ribbon, Badge, Rosette, 
 Button or Emblem, in the printed or other durable form, in which such 
 are used, or hand printed in India ink upon substantial paper (not 
 cardboard ) . 
 
 Do not gum or fasten the fac-similes in any way to this applica- 
 tion. 
 
 MICHIGAN. 
 
 §§11681-86, C. L. 1897. 
 
 AN ACT to provide for the protection of associations and unions of 
 workingmen and artisans, or other persons in their Labels, Trade- 
 marks, and Forms of Advertisement, and to punish the counter- 
 feiting and fraudulent use of such labels, trademarks, and forms 
 of advertising. 
 
 (11681) Section 1. That whenever any person or any 
 association or union of workingmen has heretofore 
 adopted or used, or shall hereafter adopt or use, any 
 label, trademark, term, design, device or form of ad- 
 vertisement for the purpose of designating, making 
 known or distinguishing any goods, wares, merchandise 
 or other product of labor as having been made, manu- 
 factured, produced, prepared, packed or put on sale by 
 such person or association or union of workingmen or 
 
 37
 
 594 APPENDIX H. 
 
 by a member or members of such association or union, 
 it shall be unlawful to counterfeit or imitate such label, 
 trademark, tenn, design, device, or form of advertise- 
 ment, or to use, sell, offer for sale, or in any way utter 
 or circulate any counterfeit or imitation of any such 
 labels, trademark, term, design, device or form of ad- 
 vertisement. 
 
 (11682) Sec. 2. AVhoever counterfeits or imitates any 
 such label, trademark, term, design, device or form of 
 advertisement, or sells, offers for sale, or in any way 
 utters or circulates any counterfeit or imitation of any 
 such label, trademark, term, design, device or form of 
 advertisement; or knowingly uses any such counterfeit 
 or imitation, or knowingly sells or disposes of, or keeps 
 or has in his possession, with intent that the same shall 
 be sold or disposed of, any goods, wares, merchandise 
 or other product of labor to which any such counterfeit 
 or imitation is attached or affixed, or on which any such 
 counterfeit or imitation is printed, painted, stamped or 
 impressed; or knowingly sells or disposes of any goods, 
 wares, merchandise or other product of labor contained 
 in any box, case, can or package, to which or on which 
 any such counterfeit or imitation is attached, affixed, 
 printed, painted, stamped or impressed ; or keeps or has 
 in his possession, with intent that the same shall be sold 
 or disposed of, any goods, wares, merchandise or other 
 product of labor in any box, case, can or package to 
 which or on which any such counterfeit or imitation is 
 attached, affixed, printed, painted, stamped or im- 
 pressed ; or shall use or display the genuine label, trade- 
 mark, term, design, device or form of advertisement of 
 any such person, association or union in any manner, 
 not being authorized so to do by such person, union or 
 association; or who shall in any way use the name or 
 seal of any such person, association or union or officer 
 tliereof, in and about the sale of goods or otherwise, not 
 being authorized to so use the same, shall be deemed
 
 STATE TR.VDEMARK STATUTES. 595 
 
 guilty of a misdemeanor, and sliall be punished as here- 
 iual'ter provided. In suits or proceedings for damage, 
 or for equitable relief by or on behalf of any such per- 
 son, association or union, on account of the violation of 
 any provision of this act, it shall not be necessary to 
 prove that such violation was knowingly or wilfully 
 committed. 
 
 (11G83) Sec. 3. Any person, whether a member of a 
 firm or corporation, or otherwise, who shall violate any 
 of the provisions of section one of this act, or who shall 
 knowingly or wilfully violate any provision of section 
 two of this act, shall be deemed to have committed a 
 misdemeanor thereby, and on conviction thereof shall be 
 punished by a fine of not less than ten nor more than one 
 hundred dollars, or by imprisonment in the county jail 
 for a period not exceeding ninety days, or by both such 
 fine and imj^risonment, in the discretion of the court. 
 
 (11684) Sec. 4. In action at law or proceedings in 
 equity brought on behalf of any such association or 
 union which is not incorporated, the same may be 
 brought in the name of any member of such association 
 or union, who has been duly authorized so to do by such 
 association or union, but for the use and benefit of all 
 of the members of such association or union: provided, 
 that before commencing such action or proceeding the 
 member so authorized shall file with the justice or clerk 
 of such court a certificate of the president and secretary 
 of such association or union, showing that such author- 
 ity has been granted. Any criminal proceeding brought 
 for a violation of any provision of this act, may be 
 prosecuted by the authorized attorney of such associa- 
 tion or union, in the court where originally commenced, 
 but in such case the fees and compensation of such at- 
 torney shall be borne and paid exclusively by such asso- 
 ciation or union: provided, that nothing herein shall be 
 deemed to prevent the prosecuting attorney from con- 
 ducting any such prosecution, or the said authorized at-
 
 596 APPENDIX H. 
 
 torney of such association or union from deputizing a 
 duly qualified attorney at law to appear in his stead. 
 
 (11685) See. 5. Every such person, association or 
 union that has heretofore adopted or used, or shall here- 
 after adopt or use, a label, trademark, tenn, design, de- 
 vice or form of advertisement, as provided in section 
 one of this act, shall file the same for record in the 
 office of the secretary of state, by leaving two copies, 
 counterparts or fac-similes thereof, with said secretaiy, 
 and by filing therewith a sworn statement specifying the 
 name or names of the person, association or union on 
 whose behalf such label, trademark, term, design, device 
 or form of advertisement shall be filed, the class of mer- 
 chandise and a particular description of the goods to 
 which it has been or is intended to be appropriated ; that 
 the party so filing, or on whose behalf such label, trade- 
 mark, term, design, device or form of advertisement 
 shall be filed has the right to the use of the same, and 
 that no other person, firm, association, union or corpo- 
 ration has the right to such use, either in the identical 
 form or in any such near resemblance thereto as may 
 be calculated to deceive, and that the fac-simile copies 
 or counterparts filed therewith are true and correct. 
 There shall be paid for such filing and recording a fee 
 of one dollar. Any person who shall for himself, or on 
 behalf of any other person, association or union, procure 
 the filing of any label, trademark, term, design, device 
 or form of advertisement in the office of the secretary of 
 state, under the provisions of this act, by making any 
 false or fraudulent representations or declaration, ver- 
 bally or in writing, or by any fraudulent means, shall 
 be liable to pay any damages sustained in consequence 
 of any such filing, to be recovered by or on behalf of the 
 party injured thereby in any court having jurisdiction, 
 and shall be punished by a fine not exceeding one hun- 
 dred dollars or by imprisonment not exceeding three 
 months, or by both such fine and imprisonment. Said
 
 STATE TRADEMARK STATUTES. 597 
 
 secretary shall deliver to such i)erson, association or 
 union so filing or causing to be filed any such label, 
 trademark, term, design, device or form of advertise- 
 ment so many duly attested certificates of the recording 
 of the same as such person, association or union may 
 apply for, for each of which certificates said secretary' 
 shall receive a fee of one dollar. xVny such certificate 
 of record shall in all suits and prosecutions under this 
 act be prima facie })roof of the adoption of such label, 
 trademark, tenn, design, device or form of advertise- 
 ment. Said secretary of state shall not record for any 
 person, union or association, any label, trademark, term, 
 design, device or form of advertisement that would rea- 
 sonably be mistaken for any label, trademark, term, 
 design, device or fonn of advertisement theretofore filed 
 by or on behalf of any other person, union or association. 
 (11686) Sec. 6. In no case shall the certificate from 
 the secretary of state, obtained in conformity with the 
 fifth section of this act, be assignable by the party to 
 whom the same is issued. 
 
 §§ 5576-5680 page 1781, Vol. 2 C. L. 1897 relate to the protection of 
 packages of manufacturers, bottlers, and vendors of soda water and 
 other beverages. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 Sworn Statement accompaAying a 
 
 (Insert the word Label, Trademark, Term, Design, Device or Form of 
 
 Advertisement, as the case may be.) 
 filed in accordance with Act. No. 206 of the Public Acts of 1895, of 
 Michigan. 
 
 * I, , do hereby declare that the 
 
 (Insert the word Label, Trademark, Term, Design, Device or Form of 
 
 Advertisement, as the case may be.) 
 counterparts or fac-sirailes of which are filed herewith is filed on be- 
 half of that the particular class of merchandise and a particu- 
 lar description of the goods to which it has been or is intended to be 
 
 appropriated is that the said has the right to the use of 
 
 the same and no other person, firm, association, union or corporation 
 has the right to such use, either in the identical form, or in any such
 
 598 APPENDIX H. 
 
 near resemblance thereto as may be calculated to deceive, and that the 
 fac-simile copies or counterparts filed herewith are true and correct. 
 
 (Sign here.) 
 
 State of "» ^ 
 
 County of j 
 
 On this day of , A. D. , before me personally 
 
 appeared the above named and made oath that the foregoing 
 
 statement by him subscribed is true. 
 
 * If a person, insert name; if a member of a company or firm, in- 
 sert name and add the words "a member of the firm or co-partnership 
 doing business under the name and style of," then give the company 
 name, and add "composed of" giving names of the members; if an 
 officer of an association, corporation, or union, insert name, title of 
 office and name of the association, corporation or union. 
 
 MINNESOTA. 
 
 CHAPTER 122, GENERAL. LAWS 1895. 
 
 TRADEMARKS. 
 
 AN ACT to amend an Act entitled an Act Relating to Labels, Trade- 
 marks and Advertisements, and to Provide for Their Protection 
 and the Punishment for Counterfeiting the Same or for Using 
 Counterfeits of the Same. Approved April Seventeenth (17th.) 
 being Chapter Twenty-four (24) of General Laws of Minnesota of 
 1893). 
 
 Be it enacted hy the Legislature of the State of Minne- 
 sota: 
 
 Section 1. That section 1 of an act relating to labels, 
 trademarks and advertisements, and to provide for their 
 protection and the punishment for counterfeiting the 
 same, or for using counterfeits of the same (being chap- 
 ter twenty-four (24) of the General Laws of Minnesota 
 of one thousand eight hundred ninety-three (1893), be,
 
 STATE TR.VDEM.VKK STATUTES. 599 
 
 and the same is hereby amended to read as follows, 
 namely : 
 
 **Sec. 1. Protectiox. Whenever any person, or any 
 association or union of workingmen has heretofore 
 adopted or used or shall hereafter adopt or use any 
 label, trademark, tenn, design, device or form of ad- 
 vertisement for the purpose of designating, making 
 known, or distinguishing any goods, wares, merchandise 
 or other product of labor, as having been made, manu- 
 factured, })roduced, prei)ared, packed or put on sale by 
 such person or association or union of workingiuen or 
 by a member or members of such association or union, 
 it shall be unlawful to counterfeit or imitate such label, 
 trademark, term, design, device or form of adver- 
 tisement or to use, sell, offer for sale or in any way 
 utter or circulate any counterfeit or imitation of any 
 such label, trademark, term, design, device or form of 
 advertisement. ' ' 
 
 Sec. 2. That section two (2) of the act above named 
 be, and is hereby amended, to read as follows, namely: 
 
 ''See. 2. Penalty for counterfeiting or dealing 
 IN COUNTERFEITS. Whoevcr counterfeits or imitates any 
 such label, trademark, term, design, device or form of 
 advertisement, or sells, offers for sale, or in any way 
 utters or circulates any counterfeit or imitation of any 
 such label, trademark, term, design, device or form of 
 advertisement, or keeps or has in his possession with 
 intent that the same shall be sold or disposed of, any 
 goods, wares, merchandise or other products of labor to 
 which any such counterfeit or imitation is printed, 
 painted, stamped or impressed; or knowingly sells or 
 disposes of any goods, wares, merchandise or other pro- 
 duct of labor contained in any box, case, can or pack- 
 age, to which or on which any such counterfeit or imita- 
 tion is attached, affixed, printed, painted, stamped, or 
 impressed; or keeps or has in his possession with intent 
 that the same shall be sold or disposed of, any goods,
 
 600 APPENDIX H. 
 
 wares, merchandise, or other product of labor in any 
 box, case, can or package, to which or on which any- 
 such counterfeit or imitation is attached, affixed, printed, 
 painted, stamped or impressed; shall be punished by a 
 fine of not more than one hundred ($100) dollars or by 
 imprisonment for not more than three months." 
 
 Sec. 3. That section three (3) of said act be and the 
 same is hereby amended so as to read as follows, 
 namely : 
 
 "Sec. 3. Eegistey. Every such person, association 
 or union that has heretofore adopted or used, or shall 
 hereafter adopt or use a label, trademark, term, design, 
 device, or form of advertisement, as provided in section 
 one (1) of this act, may file the same for record in the 
 office of the secretary of state by leaving two copies, 
 counterparts or fac-similes thereof with said secretary, 
 and by filing therewith a sworn application specifying 
 the name or names of the person, association or union 
 on whose behalf such label, trademark, term, design, de- 
 vice or form of advertisement shall be filed; the class of 
 merchandise and a description of the goods to which 
 it has been or is intended to be appropriated; stating 
 that the party so filing or on whose behalf such label, 
 trademark, term, design, device or form of advertise- 
 ment shall be filed has the right to the use of the same ; 
 that no other person, firm, association, union or corpora- 
 tion has the right to such use either in the identical form 
 or in any such near resemblance thereto as may be calcu- 
 lated to deceive, and that the fac-simile or counterparts 
 filed therewith are true and correct. There shall be 
 paid for such filing and recording a fee of one (1) dol- 
 lar. Any person who shall for himself or on behalf of 
 any other person, association or union procure the filing 
 of any label, trademark, term, design or form of ad- 
 vertisement in the office of the secretary of state under 
 the provisions of this act, by making any false or fraud- 
 ulent representations or declaration, verbally or in writ-
 
 STATE TRADEMARK STATUTES. 601 
 
 ing, or by any fraudulent means, shall be liable to pay 
 any damages sustained in consequence of any such fil- 
 ing, to be recovered by or on behalf of the party injured 
 thereby in any court having jurisdiction and shall be 
 jjunished by a fine not exceeding one hundred (100) 
 dollars or by imprisonment not exceeding three (3) 
 months. Said secretary shall deliver to such person, 
 association or union so filing or causing to be filed any 
 such label, trademark, term, design, device or form of 
 advertisement so many duly attested certificates of the 
 recording of the same as such person, association or 
 union may apply for, for each of which certificates said 
 secretary shall receive a fee of one (1) dollar. Any 
 such certificate of record shall in all suits and prosecu- 
 tions under this act be sufficient proof to the adoption 
 of such label, trademark, tenn, design, device or fonn 
 of advertisement. Said secretary of state shall not re- 
 cord for any person, union or association any label, 
 trademark, term, design, device or form of advertise- 
 ment that would reasonably be mistaken for any label, 
 trade mark, term, design, device of form of advertise- 
 ment theretofore filed by or in behalf of any other x^er- 
 son, union or association." 
 
 Sec. 4. That section four (4) of said act be and is 
 hereby amended to read as follows: 
 
 **Sec. 4. Prohibiting infringements. Every such 
 person, association or union adopting or using a label, 
 trademark, term, design, device or fonn of advertise- 
 ment as aforesaid, may proceed by suit to enjoin the 
 manufacture, use, display or sale of any counterfeits or 
 imitations thereof and all courts of competent jurisdic- 
 tion shall grant injunctions to restrain such manufac- 
 ture, use, disj^ay or sale as may be by the said court 
 deemed just and reasonable, and shall require the defen- 
 dants to pay to such person, association or union, all 
 profits derived from such wrongful manufacture, use, 
 disj^lay or sale, and such court shall also order that all
 
 602 APPENDIX H. 
 
 such counterfeits or imitations in the possession or 
 under the control of any defendant in such cause, be de- 
 livered to an officer of the court, or to the complainant to 
 be destroyed." 
 
 Sec. 5. That section five (5) of said act be and the 
 same is hereby amended to read as follows: 
 
 ''Sec. 5. PEN.U.TY FOR APPEOPEiATiNG. Evcry pcrsou 
 who shall use or display the genuine label, trademark, 
 term, design, device or form of advertisement of any 
 such joerson, association or union in any manner not 
 authorized by such person, union or association, shall be 
 deemed guilty of a misdemeanor and shall be punished 
 by imprisonment for not more than three (3) months or 
 by a fine of not more than one hundred (100) dollars. 
 In all cases where such association or union is not in- 
 corporated, suits under this act may be commenced and 
 prosecuted by any officer or member of such association 
 or union on behalf of and for the use of such association 
 or union." 
 
 Sec. 6. That section six (6) of this act may be and 
 is hereby amended to read as follows; 
 
 ''Sec. 6. Penalty fok unauthoeized use. Any per- 
 son who shall in any way use the name or seal of any 
 such person, association or union or officer thereof in 
 and about the sale of goods or otherwise, not being 
 authorized to so use the same, shall be guilty of a mis- 
 demeanor, and shall be punishable by imprisonment for 
 not more than three (3) months, or for a fine of not 
 more than one hundred (100) dollars." 
 
 Sec. 7. This act shall take effect and be in force from 
 and after its passage. 
 
 Approved February 23rd, 1895. 
 
 Gen. St. 1894. 
 Section 6908. Any person or persons who shall know- 
 ingly and wilfully forge or counterfeit, procure to be 
 forged or counterfeited, any representation, likeness,
 
 STATE TRADEMARK STATUTES. 603 
 
 similitude, copy or imitation of the private stamps, 
 brands, wrapper, label or trademark, usually affixed by 
 any mechanic, manufacturer, druggist, merchant or 
 tradesman, to and upon the goods, wares, merchandise 
 or preparation of said mechanic, manufacturer, druggist, 
 merchant or tradesman, with intent to pass off any work, 
 goods, manufacture, compound or preparation, to which 
 such forged or counterfeited representation, likeness, 
 similitude, copy, or imitation is affixed, or intended to 
 be affixed, as the work, goods, manufacture, compound 
 or preparation of such mechanic, manufacturer, drug- 
 gist, merchant or tradesman, shall, upon conviction 
 thereof, be deemed guilty of a misdemeanor, and shall 
 be punished by imprisonment in the county jail for a 
 IDeriod [of] not less than six months, nor more than 
 twelve months, or fined not more than five thousand dol- 
 lars. 
 
 Sec. 6909. Any person or persons who shall, with intent 
 to defraud any person or persons, body corporate or 
 politic, have in his or their possession any die or dies, 
 plate or jDlates, brand or brands, engraving or engrav- 
 ings or printed labels, stamps, imprints, wrapper, or 
 trademarks, or any representation, likeness, similitude, 
 copy or imitation of the private stamps, imprint, brand, 
 wrapper, label, or trademark usually affixed by any me- 
 chanic, manufacturer, druggist, merchant or tradesman, 
 to or upon articles made, manufactured, prepared or com- 
 pounded by him or them, for the purj^ose of making im- 
 pressions or selling the same when made, or using the 
 same upon any other article made, manufactured, pre- 
 pared or compounded, and passing the same off ui)on 
 the community as the original goods, manufactures, prep- 
 arations or compounds of any other person or persons, 
 body corporate or politic, or who shall wrongfully and 
 fraudulently sell or use the genuine stamp, brand, im- 
 print, wrapper, label or trademark, with intent to i^ass 
 off any goods, wares, merchandise, mixtures, compounds
 
 604 APPENDIX H. 
 
 or other articles not the manufacture of the person or 
 persons, body cori^orate or politic, to whom such stamp, 
 brand, imprint, wrappers, label or trademark properly 
 belongs, as genuine and original, shall, upon conviction 
 thereof, be deemed guilty of a misdemeanor, and shall 
 be punished by imprisonment in the county jail not less 
 than six months, nor more than twelve months, or be 
 fined not more than five thousand dollars. 
 
 Sec. 6910. Any person who shall vend or keep for sale 
 any goods, wares, merchandise, mixture or preparation, 
 upon which any forged or counterfeit stamps, brands, 
 imprints, wrappers, labels or trademarks shall be placed 
 or affixed, and intended to represent the said goods, 
 wares, merchandise, mixture or preparation as the genu- 
 ine goods, wares, merchandise, mixture or preparation 
 of any other person or persons, knowing the same to 
 be counterfeit, shall, upon conviction thereof, be deemed 
 guilty of a misdemeanor, and shall be punished by a 
 fine not exceeding five hundred dollars in each case so 
 offending, and shall also be liable in a civil action to 
 the person or persons whose goods, wares, merchandise, 
 mixture or preparation is counterfeited or imitated, or 
 whose stamps, brands, imprints, wrappers, labels, or 
 trademarks are forged, counterfeited, placed or affixed, 
 for all damages such person or persons may or shall 
 sustain by reason of any of the acts in this section men- 
 tioned, and may be restrained or enjoined by any court 
 of competent jurisdiction from doing or performing 
 any of the acts above mentioned. 
 
 Sec. 6911. Any person or persons who shall, with 
 intent to defraud any person or persons, body corporate 
 or politic, knowingly affix or cause to be affixed to or 
 upon any bottle, case, box or package containing any 
 goods, manufacture, mixture, preparation or compound, 
 any stamp, brand, label, wrapper, imprint or trade- 
 mark, which shall designate such goods, manufacture, 
 mixture, preparation or compound, either wholly or
 
 STATE TRADEMARK STATUTES. 605 
 
 in part, the same to the eye or in sound to the ear, 
 as the word or words, or some of the words, used by 
 any 6ther person or persons for designating any goods, 
 manufacture, mixture, preparation or compound manu- 
 factured or prepared by or for such other person 
 or jjersons, or who shall knowingly sell or expose, or 
 offer for sale, any such bottle, case, box or package, 
 with any such stamp, brand, label, wrapper, imprint or 
 mark affixed to or upon it, shall, provided such person 
 or persons so affixing or causing to be affixed any such 
 stamp, brand, label, wrapper, imprint or mark, or to 
 selling or exposing, or offering for sale, any such bottle, 
 case, box or package, shall not have been the first to 
 employ or use such words, to designate, wholly or in 
 part, any goods, manufacture, mixture, preparations or 
 compound, upon conviction thereof, be deemed guilty of 
 a misdemeanor, and shall be punished by imprisonment 
 in the county jail not less than six nor more than twelve 
 months, or be fined not more than five thousand dollars, 
 and shall also be liable to the party aggrieved in the 
 penal sum of one hundred dollars for each and every 
 offense, to be recovered by him in a civil action. 
 
 Sec. 6912. Any person or persons who, with intent to 
 defraud, or to enable another to defraud, any person, 
 shall manufacture or knowingly sell, or cause to be man- 
 ufactured or sold, any article or articles, marked, 
 stamped or branded, or incased or inclosed in any box, 
 bottle or wrapper having thereon any engraving or en- 
 engravings, or printed labels, stamps, imprints, marks, 
 or trademarks, which article or articles are not the man- 
 ufacture, workmanship or production of the person 
 named, indicated or denoted by such marking, stamping 
 or branding, or by or upon such engraving or engrav- 
 ings, printed labels, stamps, imprints, marks or trade- 
 marks, shall, upon conviction thereof, be deemed guilty 
 of a misdemeanor, and for such offense shall forfeit and 
 pay a fine of two hundred dollars, to be recovered, with
 
 606 APPENDIX H. 
 
 costs, in a civil action to be prosecuted by the county 
 attorney, of any county in the state, in the name of the 
 county in which said action shall be commenced, and the 
 one-half of such recovery shall be paid to the informer, 
 and the residue shall be applied to the support of the 
 poor in the county where such recovery is had. 
 
 Sec. 6913. A '^ trademark" is a mark used to indicate 
 the maker, owner or seller of any goods, wares, mer- 
 chandise, mixture, preparation or compound, and in- 
 cludes, among other things, any name of a person or 
 corporation, or any letter, word, device, emblem, figure, 
 seal, stamp, diagram, brand, wrapper, ticket, stopper, 
 label, or other mark lawfully adopted by him and usu- 
 ally affixed to any goods, merchandise mixture, prepara- 
 tion or compound to denote the same was imported, man- 
 ufactured, produced, sold, compounded bottled, packed 
 or otherwise prepared by him. 
 
 Sec. 6914. A trademark is deemed to be affixed to 
 any goods, wares, merchandise, mixture, preparation or 
 compound when it is placed in any manner in or upon 
 either— 
 
 (1) The article itself; or 
 
 (2) A box, bale, barrel, bottle, case, cask, or other 
 vessel or package, or a cover, wrapper, stopper, brand, 
 label, or other thing, in, by, or with which the goods are 
 packed, inclosed or otherwise prepared for sale or dis- 
 position. 
 
 Sec. 6915. An imitation of a trademark, stamp, 
 brand, wrapper, or label is that which so far resembles 
 the genuine trademark, stamp, brand, wrapper or label 
 as to be likely to induce the belief that it is genuine, 
 either by the use of words or letters similar in appear- 
 ance or in sound, or by any sign, device, or the names 
 whatsoever. 
 
 Sec. 6916. No testimony or evidence given by any 
 person in any civil action to which such person may be 
 a party, or by any other witness in such action, or on
 
 STATE TliADEM.VRK STATUTES. 607 
 
 any reference or proceeding wliicli may be had in such 
 action, nor any evidence or testimony derived from the 
 books or j^apers of such party or witness, produced by 
 him as witness, or otherwise, in such action, or on any 
 reference or other proceedings which may be had there- 
 in, can or shall be used in any criminal i)rosecution 
 against such party or witness, under any of the pro- 
 visions of this act ; nor shall any pai-ty or witness refuse 
 to testify or furnish evidence in any civil action by rea- 
 son of any of the provisions of this act. 
 
 Minnesota also has an act entitled "An act to protect 
 the owners of receptacles used in the sale of soda waters, 
 mineral or aerated water, porter, ale, cider, ginger ale, 
 small beer, large beer, Weiss beer, beer, white beer, malt 
 extracts, other beverages, milk, cream, ice cream and 
 butter," approved April 19, 1905. 
 
 The statutory x:)enalty for the infringement of a trade- 
 mark can only be recovered where the fraudulent intent 
 of the defendant is shown. 
 
 Watkins v. Landon, 52 Minn., 389, 54 N. W. Kep. 193. 
 
 MISSISSIPPI. 
 
 Ann. Code 1892. 
 
 Section 1306. Every person who shall knowingly and 
 wilfully forge or counterfeit, or cause or procure to be 
 forged or counterfeited, any representation, likeness, 
 similitude, copy, or imitation of the private stamp, wrap- 
 pers, or labels usually affixed by any mechanic or manu- 
 facturer to, and used by such mechanic or manufacturer 
 on, in, or about the sale of any goods, wares, or mer- 
 chandise whatsoever, shall be guilty of a misdemeanor, 
 and, upon conviction, shall be punished by a fine not ex- 
 ceeding five hundred dollars, or imprisonment in the
 
 608 APPENDIX H. 
 
 county jail not less than three months nor more than 
 one year. 
 
 Sec. 1307. Every person who shall have in his pos- 
 session any die, plate, engraving, or printed label, stamp, 
 or wrapper, or any rejDresentation, likeness, similitude, 
 copy, or imitation of the i^rivate stamp, wrapper, or 
 label usually affixed by any mechanic or manufacturer 
 to and used by such mechanic or manufacturer on, in, 
 or about the sale of any goods, wares or merchandise, 
 with intent to use or sell the said die, plate, or engrav- 
 ing, or printed stamp, label, or wrajDper, for the purpose 
 of aiding or assisting in any way whatever in vending 
 any goods, wares, or merchandise in imitation of, or 
 intended to resemble and be sold for the goods, wares, or, 
 merchandise of such mechanic or manufacturer, shall be 
 guilty of a misdemeanor, and, upon conviction, be pun- 
 ished by fine not exceeding five hundred dollars, or 
 imprisonment in the county jail not less than three 
 months nor more than one year. 
 
 Sec. 1308. Every person who shall vend any goods, 
 wares, or merchandise, having thereon any forged or 
 counterfeit stamp or label, imitating, resembling, or 
 jourporting to be the stamp or label of any mechanic or 
 manufacturer, knowing the same to be forged or counter- 
 feited, and resembling or purporting to be imitations of 
 the stamps or labels of such mechanic or manufacturer, 
 without disclosing the fact to the purchaser thereof, 
 shall be guilty of a misdemeanor, and, upon conviction, 
 shall be punished by imprisonment in the county jail not 
 exceeding three months, or by a fine not less than fifty 
 nor more than five hundred dollars, or both.
 
 STATE TEADEMAEK STATUTES. 609 
 
 MISSOURI. 
 
 CHAPTER 169, REVISED STATUTES. 1899. 
 
 Section 10365. Any person may adopt a trademark — to be regis- 
 tered. 
 
 Sec. 10366. Penalty for counterfeiting trademarks. 
 
 Sec. 10367. Penalty for using false die, brand, etc. 
 
 Sec. 10368. Penalty for keeping or selling goods with false brands. 
 
 Sec. 10369. Penalty for affixing false labels, etc., with intent to 
 defraud. 
 
 Sec. 10370. What courts have jurisdiction. 
 
 Sec. 10371. Articles bearing false trademarks to be destroyed. 
 
 Sec. 10372. What evidence can not be used in criminal prosecu- 
 tion. 
 
 Section 10365. Any person may adopt a trademark 
 —TO BE REGISTERED.— If anv niecliaiiic, manufacturer, 
 association or union of workingmen, or other person, 
 shall wish to adopt any particular name, term, design 
 or device as his or their trademark, to designate, make 
 known or distinguish any article of goods, wares or mer- 
 chandise by him or them manufactured or prepared, h.e 
 or they may write out a description of such name tenr?, 
 design or device, describing the same accurately, and 
 sign and acknowledge the same before some officer com- 
 petent to take the acknowledgment of deeds, and file the 
 same, together with a fac-simile of the name, term, de- 
 sign or device for registration in the office of the secre- 
 tary of state, by leaving two copies, counterparts or fac- 
 similes thereof, with the secretary of state; said secre- 
 tary shall deliver to such mechanic, manufacturer, asso- 
 ciation or union of workingmen or other person so filing 
 the same, a duly attested certificate of the filing of the 
 same, for which he shall receive a fee of one dollar; 
 such certificate shall in all suits and prosecutions under 
 this chapter, be sufficient proof of the adoption of such 
 label trademark or form of advertisement, and of the 
 right of such mechanic, manufacturer, association or 
 
 39
 
 610 APPENDIX H. 
 
 union of workingmen or other jjerson to adopt the same. 
 Xo label, trademark or form of advertisement shall be 
 registered that in any way resembles, or would probably 
 be mistaken for a label or trademark already registered. 
 (R. S. 1889, §8569, amended, Laws 1893, p. 260; 
 amended. Laws 1903, p. 275.) 
 
 Sec. 10366. Penalty for counteefeiting teade- 
 M.\EKs.— Any person or persons, association or union of 
 workingmen, who shall knowingly and wilfully make, 
 forge or counterfeit any representation, likeness, simili- 
 tude, copy or imitation of the private label, stamp, 
 brand, wrapper, engraving, mould or trademark usually 
 affixed by any manufacturer, mechanic, merchant, trades- 
 man, druggist, person or body corporate, association or 
 union of workingmen, or body politic to, ui)on or used 
 in connection with the goods, wares, merchandise, com- 
 pound or preparation of such manufacturer, mechanic, 
 merchant, tradesman, druggist, person, association or 
 union of workingmen, or body corporate or politic, with 
 intent to pass off any goods, wares, merchandise, com- 
 pound or preparation, to which said forged or counter- 
 feit representation, likeness, similitude, copy or imita- 
 tion is affixed, or in connection with which the same 
 may be used or intended to be so affixed or used, as the 
 work, goods, wares, implements, merchandise, compound 
 or preparation of such manufacturer, mechanic, mer- 
 chant, druggist, tradesman, person, association or union 
 of workingmen, or body corporate or politic, shall, upon 
 conviction thereof, be deemed guilty of a misdemeanor, 
 and shall be punished by imprisonment in the county 
 jail for a period of not less than three months nor 
 more than twelve months, or fined not less than one 
 hundred dollars nor more than five thousand dollars, or 
 both such fine and imprisonment. (R. S. 1889, § 8570, 
 amended Laws 1893, p. 260.) 
 
 Sec. 10367. Penalty foe using false die, beand, etc, 
 —Any person or persons, association or union of work-
 
 STATE TR.VDEMARK STATUTES. 611 
 
 ingmen, who shall, with intent to defraud any i^erson or 
 persons, or body corporate or politic, have in his, her or 
 their possession any die or dies, plate or plates, brand 
 or brands, engraving or engravings, printed labels, 
 stamps, imprints, moulds, wrappers or trademarks, or 
 any representation, likeness, similitude, copy or imi- 
 tation of the private label, brand, stamp or wrapper, 
 engraving, mould or trademark usually affixed by any 
 manufacturer, mechanic, merchant, tradesman, druggist, 
 association or union of workingmen, person or body cor- 
 porate or politic, to, upon or used in connection with 
 articles made, manufactured, prepared or compounded 
 by him, her or them, for the purpose of making impres- 
 sions, or selling the same when made, or using the same 
 upon or in connection with any other article made, 
 manufactured, prepared or compounded, and passing 
 the same off upon the community as the original goods, 
 wares, implements, merchandise, compound or prepara- 
 tion of any other person or persons, association or 
 union of workingmen, or body corporate or politic, or 
 who shall in fact sell or use the same, or for the purpose 
 of secreting the same from the rightful owner or own- 
 ers, or who shall wrongfully or fraudulently use the 
 genuine label, brand, stamp, wrapper, imprint, engrav- 
 ing, mould or trademark, with intent to pass off any 
 goods, wares, implements, merchandise, compound or 
 preparation, or other article not the manufacture of the 
 person, persons, association or union of workingmen, 
 or body corporate or politic, to whom such label, brand, 
 stamp, wrapiDer, engraving, imprint, mould or trade- 
 mark properly belongs, as genuine and original, shall, 
 upon conviction thereof, be deemed guilty of a misde- 
 meanor, and shall be punished by imprisonment in the 
 county jail not less than three months nor more than 
 twelve months, or fined not less than one hundred dol- 
 lars nor more than five thousand dollars, or both such
 
 612 APPENDIX H. 
 
 fine and imprisonment. (E. S. 1889, § 8571, amended, 
 Laws 1893, p. 260.) 
 
 Sec. 10368. Penalty for keeping or selling goods 
 wiTfi FALSE BRANDS.— Any pcrson, persons, association 
 or union of workingmen, or body corporate or politic, 
 who shall vend or keep for sale any goods, wares, mer- 
 chandise, compounds or preparations upon which or in 
 connection with which any forged, imitation or counter- 
 feit label, brand, stamp, wrapper, imprint, engraving, 
 bottle or trademark shall be placed, affixed or used, and 
 intended to represent the said goods, wares, implements, 
 merchandise, compounds or ]orei3a rations as the genuine 
 goods, wares, implements, merchandise compound or 
 preparation of any other person or persons, association 
 or union of workingmen, or body corporate or politic, 
 knowing the same to be imitation or counterfeit, shall 
 be deemed guilty of a misdemeanor, and, upon convic- 
 tion thereof, shall be punished by a fine of not less than 
 one hundred dollars nor more than five thousand dollars, 
 or by imprisonment in the county jail not less than one 
 month nor more than twelve months, or both, and shall 
 also be liable to a civil action to the person or persons, 
 association or union of workingmen, or body corporate 
 or politic, whose goods, wares, implements, merchandise, 
 compounds or preparations is imitated or counterfeited, 
 or whose label, stamp, wrapper, engraving, imprint, bot- 
 tle, or trademark is imitated, forged or counterfeited, 
 placed, affixed or used, for aJl damages such person or 
 persons, association or union of workingmen, or body 
 corporate or politic, may or shall sustain, both by virtue 
 of the loss of profits and the damage done to the reputa- 
 tion of the said genuine article, goods, wares, imple- 
 ments, merchandise, compound or preparation, by rea- 
 son of any of the acts in any section of this chapter 
 mentioned, and may be restrained or enjoined by any 
 court of competent jurisdiction from doing or perform-
 
 STATE TRADEMARK STATUTES 613 
 
 ing any of the acts herein mentioned. (K. S. 1889, 
 §8572, amended, Laws 1893, p. 260.) 
 
 Sec. 103G9. Penalty eok atfixing false labels, etc., 
 WITH INTENT TO DEFKAUD.— Any j^erson or persons who 
 shall, with intent to defraud any person or persons, as- 
 sociation or union of workingmen, or body corporate or 
 politic, knowingly afiBx or cause to be affixed to or 
 upon any case, box, web, package or bottle containing 
 any goods, wares, merchandise, compound or prepara- 
 tion, any label, brand, stamp, wrapper, engraving, im- 
 print or mark which shall designate such goods, wares, 
 merchandise, compound or preparation, either wholly or 
 in part by a word or words, or by general design, which 
 shall be wholly or in part the same to the eye, or in 
 sound to the ear, as the word or words or the general 
 design used by any person or persons, association or 
 union of workingmen, or body corporate or politic, for 
 designing any goods, wares, merchandise, compound 
 or preparation, manufactured or prepared by or for 
 some other person or persons, association or union of 
 workingmen, or body corporate or politic, or who shall 
 knowingly sell or expose or otfer for sale any such case, 
 box, web, package, or bottle, with any such label, brand, 
 stamp, wrapper, engraving, imprint or mark affixed to 
 or upon it, shall, provided such person or persons affix- 
 ing or causing to be affixed any such label, brand, stamp, 
 wrapper, engraving, imprint or mark or so selling or 
 offering for sale any such case, box, web, package or 
 bottle, shall not have been the first to employ or use 
 such word or words or general design to designate, 
 wholly or in part, any goods, wares, mechandise, com- 
 pound or ])reparation, and upon conviction thereof be 
 deemed guilty of a misdeameanor, and shall be liable to 
 the party aggrieved in the penal sum of five hundred 
 dollars, and for a further sum equal to the amount 
 which the aggrieved party might have received for the 
 same amount of genuine goods, wares, merchandise, com-
 
 614 APPENDIX II. 
 
 pounds or preparations, and shall be guilty of a misde- 
 meanor, and on conviction may be punished by im- 
 prisonment in the county jail for a period of not less 
 than one month nor more than twelve months or fined 
 not less than one hundred dollars, nor more than five 
 thousand dollars, or both such fine and imprisonment. 
 (R. S. 1889, §8573, amended. Laws 1893, p. 260.) 
 
 Sec. 10370. What courts have jurisdiction.— All 
 courts of this state having jurisdiction of criminal cases 
 shall have jurisdiction of proceedings for violaton of 
 this chapter. All suits brought under this chapter shall 
 be brought by the person or persons injured or de- 
 frauded by such parties ; and if brought by any asso- 
 ciation or union of workingmen, the suit may be brought 
 in the name of the president and secretary, to the use 
 and benefit of association or corporation, and may thus 
 sue and be sued. (R. S. 1889, § 8574, amended. Laws 
 1893, p. 260.) 
 
 Sec. 10371. Articles bearing false trademarks to 
 BE DESTROYED.— It shall bc the duty of any officer within 
 the jurisdiction of the court having authority, to whom 
 there shall be delivered any warrant for the arrest of 
 any person alleged to have committed any offense cre- 
 ated by this chapter, to seize any and all goods, wares, 
 merchandise, compounds, preparations, labels, brands, 
 implements, stamps, wrappers, imprints, engravings, 
 plates, bottles, dies or moulds, mentioned or referred to 
 in the complaint, or affidavit or information, upon which 
 said warrant issued, and upon final conviction of the 
 offended, the court shall direct such of same as may be 
 counterfeit to be destroyed, and they shall be so de- 
 stroyed accordingly: Provided, hoicever, That if said 
 property consists of wares and merchandise, which, in 
 the judgment of the court, are independent of any trade- 
 mark, of genuine and intrinsic value, and capable of 
 being applied to a useful and beneficial purpose, then 
 and in such case all counterfeit words, marks, wrappers,
 
 STATE TR.VDEMARK STATUTES. 615 
 
 labels, emblems, stamps, brands, bottles, imprints and 
 signs used in connection therewith shall be first erased, 
 obliterated and destroyed, and said property shall be 
 sold within ten days next succeeding the decision of the 
 court thereon, in such manner as the court shall direct, 
 and the proceeds of said sale, less the expense thereof, 
 be applied to the benefit of the school fund of the county 
 in which said seizure was effected. (K. S. 1889, §8575, 
 amended. Laws 1893, p. 260.) 
 
 Sec. 10372. What evidence shall not be used in 
 CRIMINAL PROSECUTIONS.— No tostimouy or evidence given 
 by any person in any civil action to which said person 
 may be a party, or by any other witness in such action, 
 or in any reference or proceeding which may be had in 
 such action, nor any testimony or evidence derived from 
 the books or papers of such party or witness, or other- 
 wise, in such action, or in any reference or other pro- 
 ceeding which may be had therein, can or shall be asked 
 in any criminal prosecution against such party or wit- 
 ness, under any of the privisions of this chai^ter, nor 
 shall any party or witness refuse to testify or furnish 
 evidence in any civil action by reason of any of the pro- 
 visions of this chapter. (R. S. 1889, § 8576, amended, 
 Laws 1893, p. 260.) 
 
 §§2270-2274, Revised Statutes 1899, provide for the 
 protection of boxes and other receptacles, used by manu- 
 facturers of bottles, bottlers, manufacturers of and deal- 
 ers in mineral waters, soda waters, and other beverages, 
 the description of the names, marks, or designations to 
 be recorded with the recorder of deeds of the county or 
 city. § 2274 contains provisions for search warrants in 
 such cases. 
 
 Under § 10369 an information which sets out and con- 
 tains a copy of the defendant's label, and of the label 
 which the defendant's label is alleged to imitate, and 
 which alleges that the defendant's label imitates the
 
 616 APPENDIX H. 
 
 other ''in part" but does not state what part of the one 
 is an imitation of the other, is fatally defective. 
 
 State V. Thierauf, 167 Mo. 429, 67 S. W. Rep. 292. 
 
 An information in a prosecution for selling cigars in 
 boxes bearing a counterfeit union label, in which a 
 genuine union label was pasted, was approved in State 
 V. Niesmann, 101 Mo. App. 507, 74 S. W. Rep. 638. 
 
 An act of 1893, for the protection of union labels has 
 been held not to be in violation of Article 4, § 53 of the 
 Constitution of Missouri; and that to sustain a convic- 
 tion, guilty knowledge by the defendant must be shown. 
 
 State V. Bishop, 128 Mo. 373, 31 S. W. Eep. 9. 
 
 The early act against counterfeiting trademarks 
 (Wag. St. p. 1330) was held to be designed for the pro- 
 tection of trademarks, regardless of the citizenship of 
 their owners. It might, therefore, be invoked in a prose- 
 cution based upon a trademark owned by a citizen of 
 another country. 
 
 State V. Gibbs, 56 Mo. 133. 
 
 FORMS OP APPLICATION FOR REGISTRATION. 
 FORM FOR CORPORATION. 
 
 Enow all men ty these presents: 
 
 That the , a corporation duly organized and existing under 
 
 the laws of the State of , and having its office in the City of 
 
 said State, desiring to avail itself of the provisions of chapter 
 
 169, Revised Statutes of 1899, and more particularly of section 10,365 
 thereof, as amended in 1903, has adopted for its use a trademark to 
 designate, make known or distinguish a certain article of goods, ware 
 or merchandise by it manufactured or prepared, of which the follow- 
 ing is a description: 
 
 the essential feature of which the , as applied to 
 
 ; and that the fac-similes presented herewith are true and cor- 
 rect copies thereof. , 
 
 In testimony whereof, the said corporation has caused this instru- 
 ment to be signed by its and the seal of said corporation to be 
 
 hereto attached, at the City of , State of , this ^ 
 
 day of , 190—. 
 
 [seal.] 
 
 (President or other duly authorized officer.)
 
 STATE TRADEMARK STATUTES. 617 
 
 --} 
 
 State of — 
 County of 
 
 On this day , 190 — , before me appeared , to me 
 
 personally known, who, being by me duly sworn did say that he Is the 
 
 — of the said , a corporation, and that the seal afhxed to the 
 
 foregoing instrument is the corporate seal of said corporation, and 
 that said instrument was signed and sealed in behalf of said corpora- 
 tion by authority of its board of directors, and said acknowl- 
 edged said instrument to be the free act and deed of said corporation, 
 for the purpose therein stated. 
 
 In testimony whereof, I have hereunto set my hand and affixed ray 
 
 seal at my office in the City of the day and year last above 
 
 written. 
 
 My commission expires . 
 
 Notary Public. 
 
 FORM FOR INDIVIDUALS OR PARTNERSHIPS. 
 
 Know all men by these presents: 
 
 That I, , residing in the City of , State of , have 
 
 adopted for my use a trademark to designate, make known or dis- 
 tinguish a certain article of goods, wares or merchandise by me manu- 
 facturer or prepared, of which the following is a description: 
 
 the essential feature of which the , as applied to 
 
 ; and that the fac-similes presented herewith are true and cor- 
 rect copies thereof. 
 
 In testimony whereof, I have hereunto set my hand at the City 
 of , State of , this day of , 190—. 
 
 State of — 
 County of 
 
 -} 
 
 On this day of , 190 — , before me personally appeared 
 
 -, to me known to be the person described in and who executed 
 
 the foregoing instrument, and acknowledged that he executed the same 
 as his free act and deed. 
 
 In testimony whereof, I have hereunto set my hand and affixed 
 
 my seal at my office in the City of the day and year last above 
 
 written. My commission expires . 
 
 Notary Public. 
 Note. — The application for registration must be executed in dupli- 
 cate. In other words, two originals.
 
 618 APPENDIX H. 
 
 MONTANA. 
 Political Code. 
 
 Section 3161. Any person may record any trade- 
 mark or name, by filing with the Secretary of State his 
 claim to the same, and a copy or description of such 
 trademark or name, with his affidavit attached thereto, cer- 
 tified to by an officer authorized to take acknowledgments 
 of conveyances, setting forth that he or the firm or corpo- 
 ration of which he is a member, is the exclusive owner, 
 or agent of the owner of such trademark or name. 
 
 Sec. 3162. The Secretary of State must keep for pub- 
 lic examination a record of all trademarks or names filed 
 in his office, with the date when filed and the name of the 
 claimant, and must not record any two like trademarks 
 or names. He must at the time of filing and recording 
 a trademark or name, collect from the claimant a fee of 
 three dollars. 
 
 Approved Feb. 25, 1899. 
 
 Penal Code. 
 
 § 642. Every person who shall use any counterfeit or 
 imitate any label, trademark or form of advertisement 
 of any such person, union or association, knowing the 
 same to be counterfeit or imitation, shall be guilty of 
 a misdemeanor. 
 
 (§642. Act approved March 6, 1895.) 
 
 § 643. Every such person, association or union that 
 heretofore adopted, or shall hereafter adopt, a label, 
 trademark or form of advertisement as aforesaid may 
 file the same for record in the office of the Secretary of 
 State, by leaving two copies, counterparts or fac-similes 
 thereof with the Secretary of State ; said secretary shall 
 deliver to such person, association or union filing the
 
 STATE TR.^J)EMARK STATUTES. 619 
 
 same a duly attested certificate of the record of the 
 same, for which he shall receive a fee of one dollar. 
 Such certificate of record shall in all suits and prosecu- 
 tions under this act be sufficient proof of the adoption 
 of such label, trademark or form of advertisement, and 
 of the right of said jiierson, association or union to adopt 
 the same. No label shall be recorded, that, probably, 
 would be mistaken for a label already of record. 
 (§643. Act approved March 6, 1895.) 
 
 NEBRASKA. 
 
 Compiled Statutes 1901. 
 
 Section 6810. If any person shall falsely make, alter, 
 forge, counterfeit, print or photograph * * * ^^y 
 private stamp, brand, wrapj^er, label, or trademark, 
 usually affixed by any mechanic, manufacturer, druggist, 
 merchant, or tradesman to or upon the goods, wares, 
 merchandise, preparation or mixture of such mechanic, 
 manufacturer, druggist, merchant, or tradesman; * * * 
 with intent to damage or defraud any person or persons, 
 body politic or corporate, or ay military body organ- 
 ized under the laws of this state ; or shall utter or pub- 
 lish as true and genuine, or cause to be uttered and pub- 
 lished as genuine and true, or shall have in his j^osses- 
 sion with intent to utter and i3ublish as true and genuine, 
 any of the above named false, altered, forged, counter- 
 feited, falsely printed, or photographed matter above 
 specified and described, knowing the same to be false, 
 altered, forged, counterfeited, falsely printed, or photo- 
 graphed, with intent to prejudice, damage or defraud 
 any person or persons, body politic or corporate. Eveiy 
 person so offending shall be imprisioned in the i'>eniten- 
 tiary for any space of time not exceeding twenty years
 
 620 APPENDIX H. 
 
 nor less than one year, and pay fine not exceeding five 
 hundred dollars. 
 
 Sec. 6811. If any person shall have in his possession 
 any die or dies, plate or plates, brand or brands, engrav- 
 ing, imjDrint, printed labels, wrappers, or any other in- 
 strument, thing or means whatever with intent therewith 
 or thereby to falsely make, forge, or counterfeit any 
 matter specified in the last preceding section, or to cause 
 or enable the same to be done; or shall have in his pos- 
 session any such falsely made, forged, or counterfeited 
 matter whether the same be completed or only partly 
 executed, for the purpose of bartering, selling, or dispos- 
 ing thereof, knowing the same to be falsely made, forged 
 or counterfeited, with intent thereby to prejudice, dam- 
 age or defraud any person or persons, body politic or 
 corporate, every person so offending shall be imprisoned 
 in the penitentiary not less than six months nor more 
 than ten years, and pay a fine not exceeding one thou- 
 sand dollars. 
 
 Sec. 6814. Any person who shall vend or keep for 
 sale any goods, merchandise, mixture or preparation, 
 upon which any forged or counterfeit stamps, brands, 
 imprints, wrappers, labels, or trademarks be placed or 
 affixed, and intended to represent the said goods, mer- 
 chandise, mixture or preparation, as the true and genu- 
 ine goods, merchandise, mixture or preparation of any 
 IDerson or persons, knowing the same to be counterfeit, 
 shall be punished by a fine not exceeding one hundred 
 dollars. 
 
 §§ 6922, 6926, are directed to the protection of casks, 
 barrels, kegs, bottles and boxes, used in the handling 
 of soda water, mineral water and other beverages. 
 
 §§ 3549, 3553, relate to the protection of the labels of 
 trade unions and their registration with the Secretary 
 of State.
 
 STATE TRADEM.UiK STATUTES. 621 
 
 NEVADA. 
 
 COMPILED LAWS. 1900. 
 
 AN ACT concerning trademarks and names. Approved March 8, 
 
 1865, 268. 
 
 5040. Section 1. Unlawful to imitate.— AMien a 
 person who has complied with the provisions of section 
 two of tliis act, uses any particular name, letters, marks, 
 device, figures or other trademark or name, cut, stamped, 
 cast or engraved upon, or in any manner attached to 
 or connected with any article, or with the covering or 
 wrapping thereof, manufactured or sold by him, to desig- 
 nate it as an article of a peculiar kind, character, or 
 quality, or as an article manufactured or sold by him, 
 or if such trademark or name be so connected with any 
 bottle, box, cask, or other thing used for holding such 
 article, it shall be unlawful for any other person, with- 
 out his consent to use said trademark or name, or any 
 similar trademark or name, for the purj^ose of repre- 
 senting any article to have been manufactured or sold 
 by the person rightfully using such trademark or name, 
 or to be of the same kind, character, or quality as that 
 manufactured or sold by the i3erson rightfully using 
 such trademark or name. 
 
 5041. Sec. 2. Claim filed.— Any person wishing to 
 secure the exclusive use of any such trademark or name 
 imder the provisions of this act, shall Sle his claim to 
 the same, and a copy or description of such trademark 
 or name, with the Secretary of State. 
 
 5042. Sec. 3. Fee foe filing.— The Secretary of State 
 shall keep a record of all trademarks or names filed in 
 his office with the date when filed and name of claim- 
 ant, for public examination. A fee of five dollars ?hall 
 be paid to the Secretary of State at the time of filing
 
 622 APPENDIX H. 
 
 each copy and description of any trademark or name, 
 by the party claiming the use and benefit of the same. 
 It is hereby made the duty of the Secretary of State to 
 pay all fees accruing under this section into the State 
 Librarj^ Fund. (As amended, Statutes 1893, page 80, 
 reducing charge of filing and recording trademarks and 
 names from $20 to $5.) 
 
 5043. Sec. 4. Any person violating the provisions of 
 the first section of this act shall be guilty of a misde- 
 meanor, and on conviction thereof shall be punished by 
 a fine of not less than twenty-five dollars, nor more than 
 five hundred dollars or by imprisonment in the county 
 jail for not less than five days, nor more than thirty 
 days, or by both such fine and imprisonment; and he 
 shall be further liable to any party aggrieved by such 
 violation for all damages actually incurred, to be re- 
 covered as a debt in any court of competent jurisdiction. 
 
 5044. Sec. 5. It shall be unlawful for any person to 
 counterfeit any trademark or name, or to have or use a 
 counterfeit trademark or name, or sell any article bear- 
 ing or having in any way conected with it a counterfeit 
 trademark or name, which has been filed according to 
 section two of this act, knowing it to be such, or having 
 good and sufficient reason to know it to be such. Every 
 alteration or imitation of any trademark or name which 
 has been filed according to section two of this act which 
 shall be made, applied, or used, or which shall cause any 
 trademark or name, with such alterations or imitations, 
 to resemble any genuine trademark or name, so as to be 
 calculated or likely to deceive, shall be deemed to be a 
 counterfeit trademark or name within the meaning of 
 this act and every act of making, applying, or otherwise 
 using any such alteration or imitation as aforesaid, done 
 by any person, such person shall be deemed to be guilty 
 of counterfeiting a trademark or name, or knowingly using 
 a counterfeit trademark or name, within the meaning of 
 this act. Every person violating the provisions of this
 
 STATE TRADEMARK STATUTES. 623 
 
 section shall be guilty of a misdemeanor, and on con- 
 viction thereof shall be punished as provided in section 
 four of this act. 
 
 5045. Sec. 6. Everj^ person who shall have or use 
 any cask, bottle, vessel, case, cover, label, or other thing, 
 bearing or having in any way connected with it the 
 trademark or name of another, which has been filed ac- 
 cording to section two of this act, for the purpose of dis- 
 posing of any article with intent to deceive or defraud, 
 other than that which said cask, bottle, vessel, case, 
 cover, label, or other thing originally contained, or was 
 connected with by the owner of said trademark or name, 
 shall be guilty of a misdemeanor, and on conviction 
 thereof shall be punished as provided in section four of 
 this act. 
 
 5046. Sec. 7. Every person who shall knowingly, aid, 
 or abet, or counsel in, or procure the commission of any 
 offense which is by this act made a misdemeanor, shall 
 be deemed and held to be guilty of a misdemeanor, and 
 shall be subject to the penalties provided in section four 
 of this act. 
 
 5047. Sec. 8. This act shall not be so construed as to 
 permit any person to file, without authority from the 
 owner, any trademark or name owned, or previously 
 used by another person, nor in any way to interfere 
 with, hinder, prevent, or restrain the importation or 
 sale, by any person, of genuine articles of merchandise 
 having, or belonging thereto, genuine trademarks or 
 names manufactured or sold in other states or countries. 
 
 5048. Sec. 9. Any person who has first adopted and 
 used a trademark or name, whether within or beyond the 
 limits of this state, shall be considered its original 
 owner, and the ownership may be transferred in the 
 same manner as personal property, and shall be entitled 
 to the same protection by suits at law as other personal 
 property.
 
 624 APPENDIX H. 
 
 5049. Sec. 10. Every person filing with the secre- 
 tary of state as provided in section two of this act, his 
 claim to any trademark or name, shall have attached to 
 the copy and description thereof his affidavit, duly certi- 
 fied to by any officer authorized by the laws of this state 
 to take acknowledgments of conveyances, setting forth 
 that he (or the firm or corporation of which he is a 
 member) is the exclusive owner or agent of the accom- 
 panying trademark or name. 
 
 5050. Sec. 11. Any court of competent jurisdiction 
 may restrain, by injunction, any use of trademarks or 
 names in violation of any section of this act. 
 
 5051. Sec. 12. No person otherwise competent as a 
 witness, shall be disqualified or excused from testifying 
 as a witness, either before a grand jury or a petit jury 
 or otherwise, concerning any offense mentioned in this 
 act, on the ground that his testimony may criminate him- 
 self, but such testimony shall be reduced to writing, and 
 no indictment or prosecution shall afterward be brought 
 against him for said offenses, concerning which he has 
 testified as a witness. 
 
 5052. Sec. 13. Any witness called to give testimony 
 on behalf of the state, before any grand jury, or before 
 any court of justice shall be required to give such tes- 
 timony, which shall be reduced to writing, and such wit- 
 ness shall not be liable to suffer any punishment or for- 
 feiture for any offense against the provisions of this act 
 so disclosed.
 
 STATE TRADEil^UtK STATUTES. 625 
 
 NEW HAMPSHIRE. 
 
 LAWS 1895, CH. 42. 
 
 AN ACT to protect associations and unions of workingmen and per- 
 sons in their labels, trademarks and forms of advertising, and 
 the owners of literary, dramatic and musical compositions, and 
 works of art in their property. 
 
 Be it enacted hy the Senate and House of Representa- 
 tives in General Court convened: 
 
 Section 1. "\\T3enever any person, association, or 
 union of workingmen have adopted, or shall hereafter 
 adopt, for their protection, any label, trademark, or 
 form of advertisement announcing that goods to which 
 such label, trademark, or forai of advertisement shall 
 be attached were manufactured by such jDcrson, or by a 
 member or members of such association or union, it 
 shall be unlawful for any person or corporation to 
 counterfeit or imitate such label, trademark, or form of 
 advertisement. And whenever any person, firm, asso- 
 ciation, or corporation is the owner of any literary, dra- 
 matic or musical composition and the right of the au- 
 thor pertaining thereto, and such composition has not 
 been copyrighted, printed or published, or of any map, 
 chart, engraving, cut, print, photograph, or negative 
 thereof, statue, statuary, model, or design, which has 
 not been copyrighted or offered for sale, it shall be 
 unlawful for any other person, firm, association, or cor- 
 poration to publish, produce, print, or sell or offer to 
 sell the same without first obtaining the consent of the 
 owner thereof. 
 
 Sec. 2. Every person who shall use any counterfeit 
 or imitation of any label, trademark, or form of adver- 
 tisement of any such person, union, or association, know- 
 ing the same to be counterfeit or imitation, shall be 
 guilty of a misdemeanor, and shall be punished as 
 provided in section 7 of this act. 
 
 40
 
 626 APPENDIX H. 
 
 Sec. 3. Every such person, association or union that 
 has heretofore adopted or shall hereafter adopt, a label, 
 trademark, or form of advertisement, as aforesaid, may 
 file the same for record in the office of the secretary of 
 state, by leaving two copies, counterparts or fac-similes 
 thereof with the secretary of state; and the secretary- 
 shall deliver to such person, association or union so fil- 
 ing the same a duly attested certificate of the record of 
 the same, for which he shall receive a fee of one dollar. 
 Such certificate of record shall, in all suits and prosecu- 
 tions under this act, be prima facie proof of the adoption 
 of such label, trademark, or form of advertisement, and 
 of the right of said person, association or union to adopt 
 the same. No label shall be recorded that probably 
 would be mistaken for a label already of record. 
 
 Sec. 4. Every such person, association or union adopt- 
 ing a label, trademark, or form of advertisement, as 
 aforesaid, may proceed by suit to enjoin the manufac- 
 ture, use, display, or sale of any such counterfeits or 
 imitations and all courts having jurisdiction thereof shall 
 grant injunctions to restrain such manufacture, use, dis- 
 play or sale, and such person, association, or union shall 
 be entitled to such damages resulting from such wrong- 
 ful manufacture, use, display or sale, as may be deemed 
 just and reasonable, and the supreme court shall also 
 order that all counterfeits or imitations in the possession 
 or under the control of the defendant in such case be 
 delivered to an officer of the court, or to the complainant, 
 to be destroyed. 
 
 Sec. 5. Every person who shall use or display the 
 genuine label, trademark, or form of advertisement of 
 any such joerson, association, or union in any manner 
 not authorized by such person, association, or union, 
 shall be deemed guilty of a misdemeanor, and shall be 
 punished as provided in section 7 of this act. In all 
 cases where such association or union is not incorpo- 
 rated, suits under this act may be commenced and prose-
 
 STATE TR.IDEMARK STATUTES. 627 
 
 cuted by any officer or member of such association or 
 union in behalf of and for the use of such association or 
 union. 
 
 Sec. 6. Any person or persons who shall in any way 
 use the name or seal of any such person, association, 
 or union, or officer thereof, in and about the sale of 
 goods, or otherwise, not being authorized to so use the 
 same, shall be guilty of a misdemeanor, punishable as 
 provided in the succeeding section. 
 
 Sec. 7. Any violations of any of the provisions of 
 this act shall be punished by imprisonment in the county 
 jail for a term of not less than three months nor more 
 than one year, or by a fine of not less than one hundred 
 dollars nor more than two hundred dollars, or both. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 To the Honorable, the Secretary of State: 
 
 Sworn application accompanying 
 
 Be it Known, That has heretofore adopted and used a cer- 
 tain and herewith files the same for record in the office of the 
 
 Secretary of State by leaving two copies, counterparts or fac-similes 
 thereof, with said Secretary, and by filing therewith this sworn appli- 
 cation : 
 
 (1) The name of the person so filing such is . 
 
 (2) The class of merchandise upon which the same has been 
 
 used is and a particular description of the goods comprised in 
 
 such class is . 
 
 (3) Said has been used by applicant since . 
 
 (4) Said and consists of the essential feature of 
 
 ■which 
 
 State of — 
 County of 
 
 -} 
 
 I, , being first duly sworn, depose and say that I am , 
 
 the applicant herein, and make this affidavit and verification in 
 
 behalf. That I have read the above and foregoing application and 
 know the contents thereof, and that the facts set out therein are true; 
 
 that said so filing said has the right to the use of the 
 
 same and that no other person, firm, association, union, corporation, 
 or organization has the right to such use. either in the identical form 
 or In any such near resemblance thereto as may be calculated to de-
 
 628 APPENDIX H. 
 
 ceive, and that the two copies, counterparts or fac-similes, filed here- 
 with are true and correct. 
 
 Subscribed and sworn to before me this day of , 190 — . 
 
 Fees I enclosed. 
 
 NEW JERSEY. 
 
 LAWS 1898. CHAPTER 50. 
 
 AN ACT to provide for the registration of labels, trademarks, terms 
 and designs, and protect and secure the rights, property and inter- 
 ests therein of the persons, associations, organizations and cor- 
 porations adopting and filing the same. 
 
 Be it enacted T)y the Senate and General Assembly of the State of New 
 Jersey: 
 
 1. It shall be lawful for any person, association, or- 
 ganization or corporation to adopt for their protection 
 and file for registry, or cause to be filed for registry, as 
 herein provided any label, trademark, term or design 
 that has been used or is intended to be used for the pur- 
 pose of designating, making known or distinguishing 
 any goods, wares, merchandise or products of labor that 
 have been or may be wholly or partly made, manufac- 
 tured, produced, prepared, packed or put on sale by 
 any jDerson, association, organization or corporation, or 
 to or uj^on which any work or labor has been applied or 
 expended by any person or by any member or members 
 of any association, organization or corporation that has 
 adopted and filed for registry, or that may adopt and file 
 for registry, any such label, trademark term, or design 
 as aforesaid, or announcing or indicating that the same 
 have been made in whole or in part by any such per- 
 son, association, organization or corporation or by any 
 member or members thereof. 
 
 2. Whenever any person, association, organization or 
 corporation shall adopt and file for registry, or cause to
 
 STATE TRADEMARK STATUTES. G29 
 
 be adopted and filed for registrj^ any label, trademark, 
 term, or design pursuant to the provisions of this act, 
 the property, privileges, rights, remedies and interests 
 in and to any such label, trademark, term or design, and 
 in and to the use of the same, provided or given by this 
 act to, or otherwise conferred upon or enjoyed by, the 
 person, association, organization or corjjoration filing 
 the same, or causing the same to be filed for registry, 
 shall be fully and completely secured, preserved and 
 protected as the property of those entitled to the same, 
 before any such label, trademark, tenn or design has 
 been actually applied to any goods, wares, merchandise 
 or product of labor and put upon the market for sale 
 or otherwise, and before any use or appropriation of 
 any such label, trademark, tenn or design has been made 
 in connection with any such goods, wares, merchandise 
 or product of labor, as well as after the same has been 
 used or apj^lied to designate, make known or distinguish 
 any such goods, wares, merchandise or product of labor 
 and they have been put upon the market. 
 
 3. Any person, association, organization or corpora- 
 tion that has heretofore adopted and used, or shall here- 
 after adopt and use, any label, trademark, tenn or design 
 as herein provided, may file the same for registry in the 
 oflBce of the secretary of state by leaving two copies, fac- 
 similes or counterparts thereof, with the said secretary, 
 and filing therewith a statement in the form of an affida- 
 vit, subscribed and sworn to by any such person, or by 
 any officer, agent or attorney of any such association, 
 organization or coi-poration, specifying the person, asso- 
 ciation, organization or corporation by whom, or on 
 whose behalf, any such label, trademark, term or 
 design is filed, and the class or character of the 
 goods, wares, merchandise or product of labor to 
 which the same has been, or is intended to be, appro-; 
 priated or applied, and that the person, association, 
 organization or corporation so filing the same, or on
 
 630 APPENDIX H. 
 
 whose behalf the same is so filed, has the right to 
 the use of said label, trademark, term or design, 
 and that no other person, firm, association, or- 
 ganization or corporation has the right to such use, 
 either in the identical form or in any such near resem- 
 blance thereto as may be calculated to deceive, without 
 the permission or authority of the person, association, 
 organization or corporation filing the same, or causing 
 the same to be filed, and that the copies, fac-similes or 
 counterparts filed therewith are true and correct copies, 
 fac-similes or counterparts of the genuine label, trade- 
 mark, term or design of the person, association, organi- 
 zation or corporation filing the same or causing the 
 same to be filed; and there shall be paid for such filing 
 and registiy a fee of one dollar to the secretary of state 
 for the use of the state. 
 
 4. The secretaiy of state, upon the filing of any such 
 label, trademark, term, or design that is not in conflict 
 with the next section hereof, shall register the same, and 
 shall deliver to the person, association, organization or 
 corporation filing the same, or causing the same to be 
 filed, as many certified copies thereof, with his certifi- 
 cate of such registry, as any such person, association, 
 organization or corporation may request, and for every 
 such copy and certificate there shall be paid to the sec- 
 retary of state, for the use of the state, a fee of one dol- 
 lar; and any such certified copy and certificate shall be 
 admissible in evidence and competent and sufficient 
 proof of the adoption, filing and registry of any such 
 label, trademark, term or design by any such person, 
 association, organization or corporation, in any action 
 or judicial proceeding in any of the courts of this state, 
 and of due compliance with the provisions of this act; 
 Provided, however, that such certificate shall not be as- 
 signable or transferable by the person, association, or- 
 ganization or corporation to whom the same is issued by 
 the secretary of state.
 
 STATE TRADEMARK STATUTES. 631 
 
 5. It shall not be lawful for the secretary of state to 
 register, or permit to be registered, for any person, as- 
 sociation, organization or corporation any label, trade- 
 mark, tenn or design that is in the identical form of 
 any other label, trademark, term or design theretofore 
 filed by or on behalf of any other person, association, 
 organization or corporation, or that bears any such 
 near resemblance thereto as may be calculated to deceive, 
 or that would be liable to be mistaken therefor; and any 
 person, association, organization or corporation who 
 shall file or procure the filing and registry of any label, 
 trademark, term or design in the office of the secretary 
 of state, under the provisions of this act, by making any 
 false or fraudulent representations or declarations, with 
 fraudulent intent, shall be liable to pay any damages 
 sustained in consequence of any such registry, to be 
 recovered by or on behalf of the party injured thereby 
 in any court of law of this state having jurisdiction in 
 civil causes. 
 
 6. Whenever any person, association, organization or 
 corporation has heretofore adopted and filed for record 
 or registry, or shall hereafter adopt and file for registry, 
 any label, trademark, term or design, or cause the same 
 to be done, as herein provided, and the same shall have 
 been registered pursuant to this act, it shall be unlawful, 
 and a violation of this act, for any other person, associa- 
 tion, organization or corporation to manufacture, use. 
 sell, offer for sale, or in any way utter or circulate, any 
 counterfeit or imitation of any such label, trademark, 
 term or design; or have in possession, with intent that 
 the same shall be sold or disposed of, any goods, wares, 
 merchandise or product of labor to which or on which 
 any counterfeit or imitation of any such label, trade- 
 mark, term or design is attached, affixed, printed, 
 painted, stamped, impressed or displayed; or to sell or 
 dispose of, or offer to sell or dispose of, or have in pos- 
 session with intent that the same shall be sold or dis-
 
 632 APPENDIX H. 
 
 posed of, any goods, wares, merchandise or product of 
 labor contained in any box, case, can or package to 
 which or on which any such counterfeit or imitation is 
 attached, affixed, printed, painted, stamped, impressed 
 or displayed. 
 
 7. AN'henever any person, association, organization or 
 corporation has heretofore adoj^ted and filed for record 
 or registry', or shall hereafter adopt and file for registry, 
 any label, trademark, teim or design as herein provided, 
 it shall be unlawful, and a violation of this act, for any 
 other jDcrson or persons, association, organization or 
 corporation, to make any use, sale, offer for sale or 
 display of the genuine label, trademark, term or design 
 of any such person, association, organization or corpora- 
 tion, filing the same; or to have any such genuine label, 
 trademark, term or design in possession with intent 
 that the same shall be used, sold, offered for sale or 
 displayed, or that the same shall be applied, attached 
 or displayed in any manner whatever to or on any 
 goods, wares or merchandise; or to sell, offer to sell, or 
 dispose of or have in possession with intent that the 
 same shall be sold or disposed of, any goods, wares or 
 merchandise in any box, case, can or package to or on 
 which any such genuine label, trademark, term or design 
 of any such person, association, organization or corpora- 
 tion is attached, affixed or displayed; or to make any 
 use whatever of any such genuine label, trademark, term 
 or design, without first obtaining in every such case, the 
 license, consent or authority of the person, associa- 
 tion, organization or corporation adopting, filing and 
 registering the same, or causing the same to be adopted, 
 filed and registered ; and any such license, consent or au- 
 thority may be revoked and terminated at any time 
 upon notice, and thereafter any use thereof shall be a 
 violation of this act, and subject those violating the 
 same to all the liabilities and penalties herein provided 
 against any violation thereof.
 
 STATE TRADEMxVRK STATUTES. 633 
 
 8. It shall be lawful for any person, association, or- 
 ganization or coiporation that has adopted and filed, 
 or caused to be filed and recorded or registered in the 
 ofifice of the secretary of state, at any time before the 
 passage of this act, any label, trademark, term or de- 
 sign, to refile the same for registration by the secretary 
 of state pursuant to the provisions of this act, uiK)n pay- 
 ment of the fees herein provided for filing and register- 
 ing any label, trademark, term or design, and for copies 
 and certificates thereof, and any person, association, or- 
 ganization or corporation so refiling any such label, 
 trademark, tenn or design shall have and be entitled 
 to all the rights, remedies, privileges and protection 
 given by this act to any person, association, organiza- 
 tion or corporation originally filing any label, trademark, 
 term or design under the provisions of this act and sub- 
 ject to the same liabilities. 
 
 9. The court of chancery shall have jurisdiction in all 
 cases arising or commenced therein under this act for 
 the violation of any of the provisions thereof; and any 
 person, association, organization or corporation filing, 
 or causing to be filed, for registry, any label, trademark, 
 term or design pursuant to the provisions of this act, 
 shall have the right to an action in the said court against 
 any person or persons, association, organization or cor- 
 porations, for the violation of any of the provisions of 
 this act; and upon the filing of any bill of complaint 
 therefor, the law and practice regulating proceedings in 
 that court shall be applicable thereto ; and the said court 
 is hereby empowered and required to enjoin the manu- 
 facture, counterfeiting, imitation, dispay, use, sale, offer 
 of sale, circulating or uttering of any counterfent or imi- 
 tation of any such label, trademark, term or design of 
 any such person, association, organization or corpora- 
 tion; and the sale or disposal of any goods, wares, mer- 
 chandise or product of labor to which, or on which, any 
 such counterfeit or imitation label, trademark, term or
 
 634 APPENDIX H. 
 
 design is attached, afiflxed, printed, painted, stamped, 
 impressed or displayed; or any goods, wares, merchan- 
 dise or product of labor contained in any box, case, can 
 or package to or on which any such counterfeit or imi- 
 tation is attached, affixed, printed, painted, stamped, im- 
 pressed or displayed; and further to enjoin the manu- 
 facture, use, sale, offer of sale, or display, of any gen- 
 uine label, trademark, term or design of any such per- 
 son, association, organization or corporation filing the 
 same as aforesaid; or having in possession any such 
 genuine label, trademark, term or design with intent 
 that the same shall be used, sold, offered for sale or dis- 
 played, or the same applied, attached or displayed in 
 any manner whatever to or on any goods, wares, mer- 
 chandise or product of labor; or the selling or offer to 
 sell or dispose of, or having in possession with intent 
 that the same shall be sold, offered for sale or disposed 
 of, any goods, wares or merchandise in any box, case, 
 can or package to or on which any such genuine label, 
 trademark, term or design of any such person, associa- 
 tion, organization or corporation is attached, affixed or 
 displayed; and from making any other, or any, use 
 whatever of any such genuine label, trademark, term or 
 design, without having first obtained, in any and every 
 such case, the consent and authority of the person, as- 
 sociation, organization or corporation adopting, filing 
 and registering the same, or causing the same to be filed 
 and registered, as herein provided; and the said court 
 of chancery is hereby empowered to make such other 
 orders and direct such other proceedings as the court 
 may deem necessary and proper for the due protection 
 of the rights of complainants, effecting the purposes of 
 this act, the prevention of any violation of any of the 
 provisions of the same ; and secure and protect any and 
 all persons, associations, organizations or corporations 
 in all the rights, privileges, property and interests to 
 which they or any of them are or may be entitled in
 
 STATE TRADEMARK STATUTES. 635 
 
 any such label, trademark, term or desigu under any of 
 the provisions of tliis act or otherwise; and it shall be 
 the duty of tlie said court of chancery to award to the 
 complainant or complainants in any such action any and 
 all damages resulting from any such wrongful use of any 
 such label, trademark, term or design by any defendant 
 or defendants, or for any violation of any of the pro- 
 visions of this act; and to require any such defendant 
 or defendants to pay to such complainants any and all 
 such damages, together with all costs and expenses in- 
 curred by any such complainant in any such action or 
 proceeding; and the said court shall also order and de- 
 cree that the defendants pay to the complainant or com- 
 plainants any and all projfits obtained, received or de- 
 rived from any such wrongful use or any violation of 
 the provisions of this act; or both profits and any such 
 damages, and that any and all such counterfeits or imi- 
 tations of any such labels, trademarks, terms or designs 
 in the possession or under the control of the defendant 
 or defendants in any such action shall be delivered up to 
 an officer of the court, or to the complainant, to be de- 
 stroyed, and that any such genuine labels, trademarks, 
 terms or designs in the possession or under the control 
 of any such defendant or defendants shall be delivered 
 up to the complainant. 
 
 10. That, in addition to any other rights, remedies or 
 penalties provided by this act, and as concurrent there- 
 with, any person or persons, association, organization 
 or corporation that shall violate any of the provisions 
 of this act shall be liable to a penalty of not less than 
 two hundred and not more than five hundred dollars, 
 to be recovered in an action of debt in any court of law 
 of this state having jurisdiction in civil causes, by any 
 such person, association, organization or corporation 
 that has adopted and filed, or caused the same to be done 
 as aforesaid, any such label, trademark, term or design; 
 which action may be commenced by summons as in ordi-
 
 636 APPENDIX H. 
 
 nary cases, and shall be proceeded with therein as or- 
 dinary cases in said court; and in case any execution 
 shall be issued upon any judgment obtained against the 
 defendant or defendants in any such action and the 
 same be returned unsatisfied, the court, on application 
 and two days' notice to the defendant, may award an 
 execution to take the body of the defendant or defend-t 
 ants as in other cases where a capias may issue out of 
 the circuit or supreme courts of this state; and there- 
 after the rights, remedies and liabilities of the parties, 
 and the proceedings in the case shall be the same, or as 
 nearly as may be, as in other actions in said courts 
 where an execution to take the body of the defendant or 
 defendants has been issued; and it shall be the duty of 
 the court in which any such action may be brought to 
 make all proper and necessary orders to restrain and 
 prevent any defendant or defendants from continuing 
 the committing of any violation of any of the provisions 
 of this act. 
 
 11. In any suit or proceeding in equity, or in any 
 action at law, brought by or on behalf of any such asso- 
 ciation or organization that is not incorporated, for 
 any violation of any of the provisions of this act, the 
 same may be brought in the recognized name of any 
 such association or organization, or in the proper name 
 of the president or the secretary or the treasurer of any 
 such association or organization who has been or may 
 be given authority to bring any action or actions for 
 or in behalf of any such association or organization, 
 and if for any reason such authority is not given be- 
 fore the commencement of any such suit or action, the 
 same may be given thereafter at any time before the 
 trial of the same; and any such suit in equity or action 
 at law may be brought as aforesaid in the recognized 
 name of any branch or local or sub-association, affiliated 
 or connected with any national or international asso- 
 ciation or organization, or in the name of the president,
 
 STATE TRADEMARK STATUTES. 637 
 
 or the secretaiy, or the treasurer thereof; and such 
 authority to bring the same may be given by any board 
 of directors, executive board, or executive committee, 
 of any such association or organization, elected, chosen, 
 or appointed by any such association or organization ; 
 and any such person or persons bringing any such 
 action or proceeding in any court of law or equity in 
 this state shall have the right to receive any and all 
 moneys, property or other valuable thing recovered by 
 or adjudged to the complainant or plaintiff in any such 
 suit or action, for the use and benefit of the association 
 or organization entitled to the same; and whenever any 
 such suit or action shall be brought by or on behalf of 
 any such branch or local or sub-association or organiza- 
 tion as herein provided instead of by or on behalf of| 
 any such national or international association or organi- 
 zation, such branch or local or sub-association bring- 
 ing the same shall be entitled to the same rights, privi- 
 leges, remedies and advantages, in the i^rosecution of 
 such suit or action, as any other party or parties author- 
 ized by this act to bring such suit or action would have 
 been entitled to if any such suit or action had been 
 brought by them, or in their behalf, as herein provided. 
 
 12. This act shall be construed by all courts at all 
 times, in all suits, actions and proceedings, in the most 
 liberal manner for effecting the objects and purposes 
 thereof and protecting the claims, rights, interests, use 
 and property of every person, association, organization 
 or corporation in and to any label, trademark, tenn or 
 design, filed and registered pursuant to the provisions 
 of this act. 
 
 13. All acts and parts of acts contrary to, or incon- 
 sistent with the provisions of this act, be and the same 
 are hereby repealed. 
 
 14. This act shall be deemed and taken to be a public 
 act, and shall take effect immediately. 
 
 Passed ]\Iarch 15th, 1898.
 
 63S APPENDIX H. 
 
 In an action to recover penalties under § 6 of this act 
 it is not necessary to show guilty knowledge by the de- 
 fendant. Cigar Makers' International Union of America 
 V. Goldberg, 57 Atl. Kep. 141. 
 
 The act is constitutional. Ihid. 
 
 § 10 of this Act imposing a penalty of not less than 
 two hundred dollars, and not more than five hundred 
 dollars, permits the plaintiff in an action for its recovery 
 to elect and fix the amount for which the suit shall be 
 brought within these limits. 
 
 State V. Schmidt, 48 Atl. Rep. 588. 
 
 The Acts passed in 1889, 1892 and 1895, for the pro- 
 tection of the labels, trademarks and forms of advertis- 
 ing of associations or unions of workingmen, were held 
 not to be unconstitutional, and not in violation of Article 
 4, § 7, paragraph 11 of the Constitution of New Jersey, 
 forbidding the passage of private, local or special laws, 
 granting to any association, corporation, or individual, 
 any special privilege, immunity, or franchise whatever. 
 
 Schmalz v. Wooley, 57 N. J. Eq. 303, 41 Atl. Rep. 939. 
 
 An Act of February 21, 1854, supplemented March 
 25, 1863, relating to the protection of packages of manu- 
 facturers of mineral waters, and other beverages, and 
 prescribing a penalty for the unauthorized use thereof, 
 did not apply to junk dealers who had registered bot- 
 tles on their premises. 
 
 Boivden v. Randolph Tp., 41 N. J. Law, 462. 
 
 In the Act of March 11, 1891, for the protection of 
 manufacturers and bottlers of mineral waters and the 
 like, several offenses are specified. It has been held, 
 that in a complaint under this Act, no statement of de- 
 mand is required; and that a complaint is defective 
 which charges, in the alternative, the commission of 
 one or another of several of the specified offenses. 
 
 Brant v. Froelich, 49 N. J. Law, 336, 8 Atl. Rep. 283.
 
 STATE TRADEMARK STATUTES. 639 
 
 NEW MEXICO. 
 
 AN ACT providing for tlie registration of tradenames, trademarks, 
 
 and labels. 
 
 Be it enacted by the Legislative Assembly of the Territory of New 
 Mexico: 
 
 Section 1. Any person or persons, firm, corporation 
 or association who manufacture or deal in articles of a 
 commercial nature and wish to retain the exclusive right 
 to the use of a tradename, trademark or label shall 
 make a description of the same in writing, accompanied 
 by a facsimile of such tradename, trademark or label, 
 which description and application must set forth the 
 class or classes of merchandise to be covered by such 
 tradename, trademark or label, together with a state- 
 ment that the applicant claims by priority of adoption 
 and employment of the same exclusive right to the use 
 thereof. Such instrument shall be signed by at least one 
 of the persons or by the officials of the Company making 
 application for registration, the whole duly acknowl- 
 edged, and filed in the office of the Secretary of the Ter- 
 ritory. For the filing of each application and issuing 
 certificate thereof, the Secretary shall collect a fee of 
 $5.00. The Secretary shall keep a record of each trade- 
 name, trademark or label, and it shall be unlawful for 
 any other person, firm, corporation or association to 
 adopt a tradename, trademark or label identical with or 
 similar to one previously registered. A copy of such 
 description of any tradename, trademark or label, cer- 
 tified under the Great Seal of the Territory of New 
 Mexico, shall be prima facie evidence of the facts there- 
 in stated. 
 
 Sec. 2. The proprietor of each tradename, trademark 
 or label shall cause the same to be plainly marked, 
 printed, stamped or branded upon each article or origi- 
 nal package covered by the same.
 
 640 APPENDIX H. 
 
 Sec. 3. It shall be unlawful for any person or per- 
 sons, firm, corporation or association to use or refill 
 any barrel, sack, package or bottle bearing any regis- 
 tered tradename, trademark, or label with any article 
 for purposes of deceit. 
 
 Sec. 4. It shall be unlawful for any person or persons, 
 firm, corporation or association to make, forge or coun- 
 terfeit any tradename, trademark or label previously 
 registered in accordance with this act; have in his or 
 their possession, except with written permission of the 
 owner thereof, any die, stamp, stencil or model of such 
 tradename, trademark or label; vend or keep for sale 
 any drugs, goods, wares or merchandise intended to 
 represent the drugs, goods, wares or merchandise cov- 
 ered by such tradename, trademark or label, or affix any 
 general design identical with or similar to such trade- 
 name, trademark or label when not the first to employ or 
 use the same. 
 
 Sec. 5. Any person or persons, firm, corporation or 
 association violating the provisions of sections 3 or 4 
 of this act shall be deemed guilty of misdemeanor an^ 
 shall be subject to a fine in a sum not less than $50.00 
 nor more than $200.00 for each offense, at the discretion 
 of the court, together with damages as they may appear. 
 
 Sec. 6. The provisions of this act, in so far as they 
 may be applicable, are hereby extended to any person 
 or persons, firm, corporation or association, who may 
 have registered a tradename, trademark or label in good 
 faith prior to the passage of this act, and this act shall 
 be in force and effect from and after its passage. 
 
 Chap. 24, Laws 1905. Approved March 2, 1905.
 
 STATE TRADEMARK STATUTES. 641 
 
 NEW YORK. 
 
 Chap. 376, Laws of 1896, contains the following sec- 
 tion: 
 
 § 28. Trademarks. Any person engaged in manu- 
 facturing, bottling, or selling any beverage, medicine,- 
 perfumery or mixture in this state, put up by him for 
 sale in any vessel or receptacle, with his name or other 
 private mark branded, stamped or marked thereupon, 
 may file in the office of the secretary of state and in the 
 office of the county clerk of the county where the same 
 is manufactured, bottled, or put up for selling, a de- 
 scription of the name or other private mark so branded, 
 stamped, or marked thereupon, and publish the same 
 once a week, for at least three weeks successively, in a 
 newspaper published in said county, except in New 
 York and Kings, where such publication shall be for the 
 same length of time daily in two newspapers therein, 
 and he shall thereupon be deemed the proprietor of such 
 name or mark and of every vessel or receptacle upon 
 which it may be branded, stamped or placed. No per- 
 son, other than such proprietor, shall fill for any i)ur- 
 pose, any such vessel or receptacle so branded, stamped 
 or marked or from which any such brand, stamp, mark, 
 name or device has been removed, defaced or obliterated, 
 nor remove, deface or obliterate the same, or place other 
 brands, stamps, marks, names or devices upon any such 
 vessel or receptacle without the written peraiission of 
 such proprietor, or unless there has been a sale to such 
 person of such vessel or receptacle, exclusive of the con- 
 tents thereof, by such proprietor. 
 
 No person other than such proprietor, shall, without 
 his permission, use, traffic in, purchase, sell, dispose of, 
 convert, mutilate, destroy or wilfully or unreasonably 
 refuse to return or deliver to such proprietor on de- 
 
 41
 
 642 APPENDIX H. 
 
 maud, any such vessel or receptacle so branded, stamped 
 or marked belonging to such proprietor. 
 
 Any person violating any provision of this section 
 shall forfeit to such proprietor one hundred dollars for 
 each such violation. 
 
 Possession of any such vessel or receptacle without 
 the consent of the proprietor of the trademark thereupon 
 shall be presumptive evidence of such violation. 
 
 § 29 of this Act imposes a penalty for using milk cans 
 without the consent of the owner, when such cans are 
 marked with the initials of the owner and makes posses- 
 sion of any such cans presumptive evidence of unlawful 
 usage. In sustaining a judgment for the penalty im- 
 posed by the Act, the possession and use of the can by 
 the defendant was held to be continuous violation of 
 the statute, and that the cause of action was not barred, 
 by sub-division 3, § 383, Code of Civil Procedure. 
 
 Bell V. Gibson, 75 N. Y. Supp. 753. 
 
 The Act of May 27, 1896 (Chap. 933, Laws of 1896) 
 is as follows: 
 
 § 1. Any and all persons and corporations engaged 
 in manufacturing, bottling or selling soda waters, min- 
 eral or aerated waters, porter, ale, beer, cider, ginger 
 ale, milk, cream, small beer, lager beer, weiss beer, white 
 beer, or other beverages or medicines, medical prepara- 
 tions, perfumery, oils, compounds or mixtures, in bottles, 
 siphons, tins or kegs, with his, her, its or their name or 
 names, or other marks or devices branded, stamped, en- 
 graved, etched, blown, impressed, or otherwise produced 
 upon such bottles, siphons, tins or kegs, or the boxes 
 used by him, her, it or them, may file in the office of the 
 clerk of the county in which his, her, its or their prin- 
 cipal place of business is situated, or if such person, 
 persons, corporation or corporations shall manufacture 
 or bottle out of this state, then in any county in this 
 state, and also in the office of the secretary of state, a 
 description of the name or names, marks or devices so
 
 STATE TRADEMARK STATUTES. 643 
 
 used by him, her, it or them, respectively, and cause 
 such descrii^tion to be printed once in each week, for 
 three weeks successively, in a newspaper published in 
 the county in which said notice may have been filed as 
 aforesaid, except that in the city and county of New 
 York and the city of Brooklyn, in the county of Kings, 
 such publication shall be made twice in each week, for 
 three weeks successively, in two daily newspapers pub- 
 lished in the cities of New York and Brooklyn, re- 
 spectively. 
 
 § 2. It is hereby declared to be unlawful for any per- 
 son or persons, corporation or corporations to fill with 
 soda water, mineral or aerated waters, porter, ale, cider, 
 ginger ale, milk, cream, beer, small beer, lager beer, 
 weiss beer, white beer or other beverages, or with medi- 
 cine, medical j^reparations, perfumery, oils, compounds 
 or mixtures, any bottle, box, siphon, tin or keg so 
 marked or distinguished as aforesaid, with or by any, 
 name, mark or device, of which a description shall have 
 been filed and published, as j^rovided in section one of 
 this act, or to deface, erase, obliterate, cover up or 
 otherwise remove or conceal any such name, mark or de- 
 vice thereon, or to sell, buy, give, take or otherwise dis- 
 pose of or traffic in the same without the written con- 
 sent of, or unless the same shall have been purchased 
 from the person or persons, corporation or corporations, 
 whose mark or device shall be or shall have been in or 
 upon the bottle, box, siphon, tin or keg so filled, traf- 
 ficked in, used or handled as aforesaid. Any person or 
 persons, or corporation or corporations offending 
 against the provisions of this section shall be deemed 
 guilty of a misdemeanor, and shall be punished for the 
 first offense by imprisonment for not less than ten days 
 nor more than one year, or by a fine of fifty cents for 
 each and every such bottle, box, siphon, tin or keg so 
 filled, sold, used, disposed of, bought or trafficked in, 
 or by both such fine and imprisonment, and for- each
 
 644 ^\PPENDIX H. 
 
 subsequent offense by imprisonment for not less than 
 twenty days nor more than one year, or by a fine of not 
 less than one dollar, nor more than five dollars, for 
 each and every bottle, box, siphon, tin or keg so filled, 
 sold, used, disposed of, bought or trafficked in, or by 
 both such fine and imprisonment, in the discretion of the 
 magistrate before whom the offense shall be tried. 
 
 § 3. The use by any person, other than the person or 
 persons, corporation or corporations, whose device, 
 name or mark shall be or shall have been upon the same 
 without such written consent or purchase as aforesaid, 
 of any such marked or distinguished bottle, box, siphon, 
 tin or keg, a description of the name, mark or device, 
 whereon shall have been filed and published, as herein 
 provided, for the sale therein of soda waters, mineral 
 or aerated waters, porter, ale, cider, ginger ale, milk, 
 cream, beer, small beer, lager beer, weiss beer, white 
 beer or other beverages, or any article of merchandise, 
 medicines, medicinal preparations, perfumery, oils, com- 
 pounds, mixtures or preparations, or for the furnishing 
 of such or similar beverages to customers, or the buy- 
 ing, selling, using, disposing of or trafficking in any 
 such bottles, boxes, siphons, tins or kegs by any person 
 other than said persons or corporations having a name, 
 mark or device thereon of such owner without such writ- 
 ten consent, or the having by any junk dealer or dealers 
 in second-hand articles, possession of any such bottles, 
 boxes, siphons, tins or kegs, a description of the marks, 
 names or devices, whereon shall have been so filed and 
 published as aforesaid, without such written consent, 
 shall and is hereby declared to be presumptive evidence 
 of the said unlawful use, purchase and traffic in of such 
 bottles, boxes, siphons, tins or kegs. 
 
 § 4. Whenever any person, persons or corporation 
 mentioned in section one of this act, or his, her, its or 
 their agent shall make oath before any magistrate that 
 he, she or it has reason to believe, and does believe,
 
 STATE TRADEMARK STATUTES. 645 
 
 that any of his, her, its or their bottles, boxes, siphons, 
 tins or kegs, a description of the names, marks or de- 
 vices whereon has been so filed and published as afore- 
 said, are being unlawfully used or filled, or had, by any 
 j^erson or corporation manufacturing or selling soda, 
 mineral or aerated waters, jjorter, ale, cider, ginger ale, 
 milk, cream, small beer, lager beer, weiss beer, white 
 beer or other beverages or medicine, medical prepara- 
 tions, perfumery, oils, compounds or mixtures, or that 
 any junk dealer or dealer in second-hand articles, ven- 
 der of bottles, or any other person or corporation has 
 any such bottles, boxes, siphons, tins or kegs in his, 
 her or its possession, or secreted in any place, the said 
 magistrate must thereupon issue a search warrant to 
 discover and obtain the same, and may also cause to 
 be brought before him the person in whose possession 
 such bottles, boxes, siphons, tins or kegs may be found, 
 and shall then inquire into the circumstances of such 
 possession, and if such magistrate finds that such person 
 has been guilty of a violation of section two of this act, 
 he must impose the punishment herein prescribed, and 
 he shall also award jjossession of the proi:)erty taken 
 upon such warrant to the owner thereof. 
 
 § 5. The requiring, taking or accepting of any de- 
 posit, for any purpose, upon any bottle, box, sij^hon, tin 
 or keg shall not be deemed or constitute a sale of such 
 I^roperty, either optional or otherwise, in any proceed- 
 ing under this act. 
 
 § 6. Any person or persons, corporation or corpora- 
 tions, that has or have heretofore filed in the offices men- 
 tioned in section one of this act a description of the 
 name or names, mark or devices upon his, her, their or 
 its property, therein mentioned, and has caused the same 
 to be published according to the law existing at the time 
 of such filing and publication shall not be required to 
 again file and publish such description to be entitled to 
 the benefits of this act.
 
 646 APPENDIX H. 
 
 The Act of May 3, 1904, is as follows: 
 Section 1. Any and all persons and corporations en- 
 gaged in manufacturing, freezing, preserving or selling 
 ice cream, confectioner}^, charlotte russe, cakes and jel- 
 lies, with his, her, its or their name or names or other 
 marks or devices, branded, stamped, engraved, stenciled, 
 blown, impressed or otherwise produced upon the freez- 
 ers, cans, blocks, moulds, trays, bricks, pans, tanks, 
 pails, kegs, tubs, refrigerators, boxes, spoons, cutlery, 
 glass, china, chairs, tables or signs used by him, her, it 
 or them, may file in the office of the clerk of the county 
 in which his, her, its or their principal place of business 
 is located, or, if such person, persons, corporation, or 
 corporations, shall manufacture or sell out of this state, 
 then in any county in this state, and also in the office 
 of the secretary of state, a description of the name or 
 names, marks or devices, so used by him, her, it or them, 
 respectively, and cause such description to be printed 
 once in each week, for three weeks successively, in a 
 newspaper published in the county in which said notice 
 may have been filed, as aforesaid, except that in the city 
 and county of New York, and the city of Brooklyn, in 
 the county of Kings, such publication shall be made 
 twice in each week, for three weeks successively, in two 
 daily newspapers published in the cities of New York 
 and Brooklyn respectively. 
 
 § 2. It is hereby declared to be unlawful for any per- 
 son or persons, corporation or corporations, to make 
 use of, for similar or other purposes, any such freezers, 
 cans, blocks, moulds, trays, bricks, pans, tanks, pails, 
 kegs, tubs, refrigerators, boxes, spoons, cutlery, glass, 
 china, chairs, tables or signs so marked or distinguished, 
 as aforesaid, with or by any name, mark or device, of 
 which a description shall have been filed and published, 
 as provided in section one of this act, or to deface, erase, 
 obliterate, cover up or otherwise remove or conceal, 
 any such name, mark or device thereon, or to sell, buy,
 
 STATE TRADEMARK STATUTES. 647 
 
 give, take or otherwise dispose of or traffic in the same 
 without the written consent of, or unless the same shall 
 have been purchased from the person or persons, corpo- 
 ration or corporations, whose mark or device shall be 
 or shall have been in or upon the said freezers, cans, 
 blocks, moulds, trays, bricks, pans, tanks, pails, kegs, 
 tubs, refrigerators, boxes, spoons, cutlery, glass, china, 
 chairs, tables or signs trafficked in, used or handled as 
 aforesaid. Any person or persons, corporation or cor- 
 l)orations offending against the provision of this sec- 
 tion, shall be deemed guilty of a misdemeanor, and shall 
 be punished for the first offense by imprisonment not 
 less than ten days nor more than one year, or by a fine 
 of three dollars for each and every such article named 
 and described in section one, sold, used, disposed of, 
 bought or trafficked in, or by both such fine and im- 
 prisonment, and for each subsequent offense by impris- 
 onment not less than twenty days nor more than one 
 year, or by a fine of not less than five dollars nor more 
 than ten dollars for each and every such article named 
 and described in section one, sold, used, disposed of, 
 bought or trafficked in, or by both such fine and im- 
 prisonment, in the discretion of the magistrate before 
 whom the offense shall be tried. 
 
 § 3. The use by any person other than the person 
 or persons, corporation or corporations, whose device, 
 name or mark shall be or shall have been upon the same 
 without such written consent or purchase as aforesaid, 
 of any such article named and described in section one, 
 a description of the name, mark or device whereon shall 
 have been filed and published as herein provided, for 
 similar or other purposes, or the buying, selling, using, 
 disposing of, or trafficking in any such article named 
 and described in section one, by any person other than 
 said persons or corporations having a name, mark or de- 
 vice thereon of such owner, without such written con- 
 sent, or the having by any junk dealer or dealers in sec-
 
 648 APPENDIX H. 
 
 ond-hand articles, possession of any such article, named 
 and described in section one, a description of the marks, 
 names or devices, whereon shall have been so filed and 
 published as aforesaid, without such written consent, 
 shall, and is hereby declared to be presumptive evidence 
 of the said unlawful use, purchase and traffic in of such 
 freezers, cans, blocks, moulds, trays, bricks, pans, tanks, 
 pails, kegs, tubs, refrigerators, boxes, spoons, cutlery, 
 glass, china, chairs, tables or signs. 
 
 § 4. AVlienever any person, persons or corporation 
 mentioned in section one of this act, or his, her, its or 
 their agent, shall make oath before any magistrate, that 
 he, she, or it, has reason to believe, and does believe, 
 that any of his, her, its or their freezers, cans, blocks, 
 moulds, trays, bricks, pans, tanks, pails, kegs, tubs, re- 
 frigerators, boxes, spoons, cutlery, glass, china, chairs, 
 tables or signs, a description of the names, marks or 
 devices whereon has been so filed and published as 
 aforesaid, are being unlawfully used for similar or other 
 purposes, or that any junk dealer or dealer in second- 
 hand articles, or any other person or corporation, has 
 any such article as named and described herein, in his, 
 her or its possession, or secreted in any place, the said 
 magistrate must thereupon issue a search warrant to 
 discover and obtain the same, and may also cause to be 
 brought before him the person in whose possession such 
 articles as named and described herein may be found, 
 and shall then inquire into the circumstances of such 
 possession, and if such magistrate finds that such person 
 has been guilty of a violation of section two of this act, 
 he must impose the punishment herein prescribed, and 
 he shall also award possession of the property taken 
 upon such warrant to the owner thereof. 
 
 § 5. The requiring, taking or accepting of any de- 
 posit, for any purpose, upon any freezer, can, block, 
 mould, tray, brick, pan, tank, pail, tub, keg, refrigerator, 
 box, spoon, cutlery, glass, china, chair, table or sign.
 
 STATE TRADEMARK STATUTES. 649 
 
 shall not be deemed or constitute a sale of such prop- 
 erty, either optional or otherwise, in any proceeding 
 under this act. 
 
 § G. Any person or j^ersons, corporation or corpora- 
 tions, that has or have heretofore filed in the offices men- 
 tioned in section one of this act, a description of the 
 name or names, mark or devices upon his, her, their or 
 its property, therein mentioned, and has caused the same 
 to be published according to the law existing at the time 
 of such filing and publication, shall not be required to 
 again file and publish such description to be entitled to 
 the benefits of this act. 
 
 Ch. 415, Laws of 1897, contains the following sections: 
 
 § 15. Labels, brands, etc., used by labor organizations. 
 A union or association of employes may adopt a device 
 in the form of a label, brand, mark, name or other char- 
 acter for the purpose of designating the products of the 
 labor of the members thereof. Duplicate copies of such 
 device shall be filed in . the office of the Secretary of 
 State, who shall, under his hand and seal, deliver to the 
 union or association filing or registering the same a cer- 
 tified copy and a certificate of the filing thereof, for 
 which he shall be entitled to a fee of one dollar. 
 
 § 16. Illegal use of labels, et cetera, a misdemeanor; 
 injunction proceedings.— A person who, (1) shall in any 
 way use or display the label, brand, mark, name or 
 character, adopted by any such union or association as 
 provided in the preceding section, without the consent 
 or authority of such union or association; or (2) shall 
 counterfeit or imitate any such label, brand, mark, name 
 or other character, or knowingly sells or disposes or 
 keeps or has in his possession with intent to sell or dis- 
 pose of, or keeps or has in his possession with intent to 
 sell, or dispose of any goods, wares, merchandise or 
 other products of labor contained in any box, case, can, 
 or package, to which, or on which any such counterfeit 
 or imitation is attached, affixed, printed, painted,
 
 650 APPENDIX II. 
 
 stamped or impressed, is guilty of a misdemeanor, and 
 shall be punished by a fine of not less than one hundred 
 dollars, nor more than five hundred dollars, or by im- 
 prisonment for not less than three months nor more than 
 one year, or by both such fine and imprisonment. 
 
 The Penal Code contains the following provisions 
 (Penal Code, 1901); 
 
 § 364. A iDorson who, knowingly, in a case where pro- 
 vision for the punishment for the oifense is not other- 
 wise specially made by statute: 
 
 1. Falsely makes or counterfeits a trademark; or, 
 
 2. Affixes to any article of merchandise, a false or 
 counterfeit trademark, knowing the same to be false and 
 counterfeit, or the genuine trademark, or an imitation of 
 the trademark of another, without the latter 's con- 
 sent; or, 
 
 3. Sells, or keeps, or offers for sale, an article of 
 merchandise, to which is affixed a false or counterfeit 
 trademark, or the genuine trademark, or an imitation of 
 the trademark of another, without the latter 's con- 
 sent; or, 
 
 4. Has in his possession a counterfeit trademark, 
 knowing it to be counterfeit, or a die, plate, brand, or 
 other thing for the puri^ose of falsely making or counter- 
 feiting a trademark; or, 
 
 5. Makes or sells, or offers to sell or dispose of, or, 
 has in his possession with intent to sell or dispose of, 
 an article of merchandise with such a trademark as to 
 appear to indicate the quantity, quality, character, place 
 of manufacture or production, or persons manufacturing 
 or producing the article, but not indicating it truly; or, 
 
 6. Wlio knowingly sells, offers or exposes for sale, 
 any goods which are represented in any manner, by 
 word or deed, to be the manufacture or product of any 
 person, firm or corporation, other than himself, unless 
 such goods are contained in the original packages and 
 under the labels, marks or names placed thereon by the
 
 STATE TRADEMARK STATUTES. 651 
 
 manufacturer who is entitled to use such marks, names, 
 brands or trademarks; or, 
 
 7. Who shall sell, or expose for sale, any goods in 
 bulk, to which no label or trademark shall be attached, 
 and shall by representation, name or mark written or 
 I^rinted thereon, represent that such goods are the pro- 
 duction or manufacture of a person who is not the 
 manufacturer; is guilty of a misdemeanor. 
 
 Page 149. 
 
 § 365. The expression ''article of merchandise," as 
 used in this title, signifies any goods, wares, work of art, 
 commodity, compound, mixture or other preparation or 
 thing, which may be lawfully kept or offered for sale. 
 
 § 366. A ''trademark" is a mark used to indicate the 
 maker, owner or seller of an article of merchandise, and 
 includes among other things, any name of a person or 
 corporation, or any letter, word, device, emblem, figure, 
 seal, stamp, diagram, brand, wrapper, ticket, stopper, 
 label or other mark, lawfully adopted by him, and usu- 
 ally afiSxed to an article of merchandise to denote that 
 the same was imported, manufactured, produced, sold, 
 compounded, bottled, packed or otherwise prepared by 
 him; and also a signature or mark used or commonly 
 placed by a painter, sculptor or other artist, upon a 
 painting, drawing, engraving, statue or other work of 
 art, to indicate that the same was designed or executed 
 by him. 
 
 § 367. A trademark is deemed to be affixed to an ar- 
 ticle of merchandise when it is placed in any manner in, 
 or upon, either 
 
 1. The article itself; or, 
 
 2. A box, bale, barrel, bottle, case, cask, or other ves- 
 sel or package, or a cover, wrapper, stopper, brand, 
 label or other thing, in, by or with which the goods are 
 packed, enclosed or otherwise prepared for sale or dis- 
 position.
 
 652 APPENDIX H. 
 
 § 368. An ''imitation of a trademark" is that which 
 so far resembles a genuine trademark as to be likely to 
 induce the belief that it is genuine, whether by the use 
 of words or letters similar in appearance or in sound, or 
 hj any sign, device or other means whatsoever. 
 
 § 369. Refilling or selling stamped mineral water bot- 
 tles, platters, at cetera.— Any person engaged in making, 
 bottling, packing, selling or disposing of milk, ale, beer, 
 cider, mineral water or other beverage or in making, 
 selling, or disposing of articles of pastry, may register 
 his title as owner of a trademark by filing with the sec- 
 retary of state and the clerk of the county where the 
 13rincipal place of business of such person is situated, a 
 description of the marks and devices used by him in his 
 business, and in case same has not been heretofore pub- 
 lished according to the laws existing at the time of pub- 
 lication, causing the same to be published in a news- 
 jDaper of the county, three weeks daily, if in the city of 
 New York or Brooklyn, and weekly if in any other part 
 of the state; but no trademark shall be filed which is 
 not and cannot become a lawful trademark, or which 
 is merely the name of a person, firm or corporation un- 
 accompanied by a mark sufficient to distinguish it from 
 the same name when used by another person. After 
 such registration, the use without the consent of the 
 owner of the trademark so described or the filling of any 
 bottle, siphon, barrel, platter, vessel, or thing for the 
 purpose of sale, or for the sale, therein, of any article 
 of the same general nature and quality which said bot- 
 tle, siphon, barrel, platter, vessel or other thing before 
 contained, without the obliteration or defacement of thei 
 trademark upon it, when such trademark can be obliter- 
 ated or defaced without substantial injury to the bottle, 
 siphon, barrel, platter, vessel or other thing so as to pre- 
 vent its wrongful use, shall he deemed a misdemeanor. 
 
 Section 370. Keeping such bottles, platters, et cetera, 
 with intent to refill or sell them.— Any person engaged
 
 STATE TRADEMARK STATUTES. 653 
 
 in the business of buying and selling bottles, siphons, 
 barrels, platters, or other vessels or things, who shall 
 with intent to defraud the registered owner of the trade- 
 mark, knowingly sell or offer for sale any lx)ttle, 
 siphon, barrel, platter, vessel, or other thing, to any jjer- 
 son, who he has reason to believe wrongfully intends to 
 use the trademark upon it, or to fill such bottle, siphon, 
 barrel, platter, vessel or other thing in violation of sec- 
 tion three hundred and sixty-nine, shall be deemed guilty 
 of a misdemeanor. 
 
 Section 371. Search for bottles, platters, et cetera.— 
 Whenever a registered owner of a trademark, or his 
 agent, makes oath before a magistrate that he has reason 
 to believe and does believe, stating the grounds of his 
 belief, that a bottle, siphon, barrel, platter, vessel or 
 other thing to which is affixed a trademark belonging to 
 him is being used or filled, or has been sold or offered 
 for sale, by any person whomsoever, in violation of the 
 preceding section, then the magistrate may issue a 
 search warrant to discover the thing and cause the per- 
 son having it in possession to be brought before him and 
 may thereupon inquire into the circumstances, and if 
 on examination, he finds that such person has been 
 guilty of the offense charged, he may hold the offender 
 to bail to await the action of the grand jury, and the 
 offender shall also be liable to an action on the case for 
 damages, for such wrongful use of such trademark at 
 the suit of the owner thereof, and the party aggrieved, 
 shall also have his remedy according to the course of 
 equity to enjoin the wrongful use of his trademark, and 
 to recover compensation therefor, in any court having 
 jurisdiction over the person guilty of such wrongful use. 
 
 Section 438. False labels.— A person who, with intent 
 to defraud, either 
 
 1. Puts upon an article of merchandise, or upon a 
 cask, bottle, stopper, vessel, case, cover, wrapper, pack- 
 age, band, ticket, label or other thing, containing or cov-
 
 654 APPENDIX H. 
 
 ering such an article, or with which such an article is 
 intended to be sold, or is sold, any false description or 
 other indication of or respecting the kind, number, quan- 
 tity, weight or measure of such article, or any part 
 thereof, or the place or country where it was manufac- 
 tured or produced or the quality or grade of any such 
 article, if the quality or grade thereof is required by law 
 to be marked, branded, or otherwise indicated on or with 
 such article; or 
 
 2. Sells or offers for sale an article, which to his 
 knowledge is falsely described or indicated upon any 
 such package, or vessel containing the same, or label 
 thereupon, or any of the particulars specified ; or 
 
 3. Sells or exposes for sale any goods in bulk to 
 which no name or trademark shall be attached, and 
 orally or otherwise represents that such goods are the 
 manufacture or jjroduction of some other than the actual 
 manufacturer or producer, in a case where the punish- 
 ment for such offense is not sj^ecially provided for other- 
 wise by statute; is guilty of a misdemeanor. 
 
 § 438a. Using false marks as to manufacture.— A person 
 who, with intent to defraud or to enable another to de- 
 fraud any person, manufacturers or knowingly sells or 
 causes to be manufactured or sold, any article, marked, 
 stamped or branded, or encased or enclosed in any box, 
 bottle or wrapper, having thereupon any engraving or 
 printed label, stamp, imprint, mark or trademark, which 
 article is not the manufacture, workmanship or produc- 
 tion of the person named, indicated or denoted by such 
 m.arking, stamping or branding, or by or upon such en- 
 graving, jDrinted label, stamp, imprint, mark or trade- 
 mark, is guilty of a misdemeanor. 
 
 As to search warrants under § 369, Penal Code 1893, 
 see People v. Hogan, 29 N. Y. St. 110. For further rul- 
 ings under that section see Mullins v. People, 23 How, 
 Pr. 289, 24 K Y. 399. People v. Cannon, 139 N. Y. 32, 
 34 X. E. Rep. 75-9.
 
 STATE TKiU)EMARK STATUTES. 655 
 
 Chapter 219, Laws 1893, relates to the protection of 
 labels of unions or associations of workingmen, and pro- 
 vides a penalty for selling cigars bearing a counterfeit 
 label. In an action for the recovery of this penalty, it 
 was held that knowledge, or intent to injure or defraud 
 were not ingredients in the offense prohibited, and that 
 allegations of the knowledge, or intent to injure or de- 
 fraud should be treated as surplusage. 
 
 Bulena v. Neumun, 31 N. Y. Supj). 449. See also Per- 
 kins V. Heert, 158 N. Y. 306, 53 N. E. Rep. 18. 
 
 A conviction under § 364, penal code, was sustained 
 where the defendant printed a label containing a trade- 
 mark at the solicitation of the agent of the owner of the 
 trademark. 
 
 People V. Gluckman, 70 N. Y. Supp. 173. 
 
 In sustaining a conviction under the same section, it 
 was held to be immaterial that the prosecutor knew that 
 he was purchasing counterfeit goods. 
 
 People V. Hilfman, 70 N. Y. Supp. 621. 
 
 In sustaining another conviction under this section, 
 the court of appeals similarly held that it was no de- 
 fense that the Act relied on for conviction was done at 
 the instance of the prosecutor. 
 
 People V. Krivitzkij, 168 N. Y. 182, 61 N. E. Rep. 175. 
 
 TVHiere the plaintiffs had filed a certificate pursuant to* 
 § 363, penal code, setting forth their intention to do 
 business under the name ''American Watchman Clock 
 Co.", and subsequently prepared to incorporate under 
 that name, and the defendant having knowledge of the 
 facts, and to forestall the plaintiff's proposed incorpora- 
 tion, thereupon incorporated under the same name, in- 
 junction was granted upon the ground of unfair com- 
 petition. 
 
 Petfes V. American Watchman's Clock Co., 85 N. Y. 
 Supp. 900. 
 
 That one who is convicted of counterfeiting or imitati
 
 Go6 APPENDIX H. 
 
 ing a stamp, wrapper, or label is also liable to civil dam- 
 ages, See Broivn v. Mercer, 37 N. Y. Super. Ct. 265. 
 
 Laws of 1887, Chap. 377, § 2, as amended by laws of 
 1888, Chap. 181, made it unlawful to use boxes, bottles, 
 and other packages having the owner's name, or other 
 marks or devices, "branded, stamped, engraved, etched, 
 blown, impressed, or otherwise produced upon such bot- 
 tles, etc." 
 
 It was held that the use of bottles bearing lithographic 
 labels containing the name of another was not a viola- 
 tion of this act. 
 
 People V, FAfenhein, 20 N. Y. Supp. 364. 
 
 A section of the same act making it a misdemeanor 
 to re-fill registered stamped bottles of the manufacturers 
 of soda water, and the like, was held to apply only to 
 dealing in empty bottles after the original contents had 
 been removed. 
 
 People V. Cannon, 139 N. Y. 32, 34 N. E. Rep. 759. 
 
 Under the laws of 1862, Chap. 306, § 4, and laws of 
 1863, Chap. 209, § 2, relating to the use of false stamps, 
 labels, or trademarks, and providing a penalty therefor, 
 it was held essential to a recovery of the penalty that 
 the fraudulent intent of the defendant be shown. 
 
 Loiv V. Hall, 47 N. Y. 104. 
 
 Under the Union Label Act, Laws 1893, Chap. 219, 
 certain evidence is reviewed and held not sufficient to 
 sustain a judgment for plaintiff in Higgins v. Dakin, 33 
 N. Y. Supp. 890, 86 Hun, 461. 
 
 Laws of 1887, Chap. 377, amended by laws of 1888, 
 Chap. 181, relating to the registration of marks used on 
 bottles, it is required that the certificate filed with the 
 County Clerk, describing the names, marks and devices 
 used on the bottles be certified. Consequently, such a 
 description is admissible in evidence, though defectively 
 acknowledged. 
 
 People V. Bartholf, 66 Hun, 626, 20 N. Y. Supp. 782.
 
 STATE TRADEilARK STATUTES. 657 
 
 Directions for Registration Applications. 
 
 The Secretary of State has published the following 
 directions, concerning applications for registration un- 
 der the foregoing statutes: 
 
 Under either of these provisions a statement in writ- 
 ing should be made by the person, firm, organization or 
 corporation showing the adoption of the name, mark, 
 label, brand or device, to which should be appended an 
 affidavit verifying the same. 
 
 This should be filed in the Secretary of State's office 
 and (except under Chapter 415, Laws of 1897) in the 
 office of the proper County Clerk, followed with the pub- 
 lication in a newspaper where required by either of the 
 foregoing laws. 
 
 The fee of this office for filing a statement under 
 either of the preceding laws is one dollar. 
 
 This office has no blank forms. 
 
 NORTH CAROLINA. 
 
 AN ACT to provide for registration of labels, trademarks and designs. 
 The General Assembly of North Carolina do enact: 
 
 Section 1. It shall be lawful for any person or cor- 
 poration to adopt for their protection and file for regis- 
 try, or cause to be filed for registry, as herein provided, 
 any label, trademark, term or design that has been used 
 or is intended to be used for the purpose of designating, 
 making known or distinguishing any goods, wares, mer- 
 chandise or products of labor that have been or may be 
 wholly or partly made, manufactured, produced, pre- 
 pared, i)acked or put on sale by any person or corpora- 
 tion, or to or upon which any work or labor has been 
 applied or expended by any person, or by any member 
 or members of any coii:)oration that has adopted and 
 
 42
 
 658 APPENDIX H. 
 
 filed for registry, or that may adopt and file for registry, 
 any such label, trademark, term or design as aforesaid, 
 or announcing or indicating that the same have been 
 made in whole or in part by any such person or corpora- 
 tion, or by any member thereof. 
 
 Sec. 2. Whenever any jDcrson or corporation shall 
 adopt and file for registry, or cause to be adopted and 
 filed for registry, any label, trademark, term or design 
 pursuant to the provisions of this act, the property, 
 privileges, rights, remedies and interests in and to any 
 such label, trademark, tenu or design, and in and to 
 the use of same, provided or given by this act to, or 
 otherwise conferred upon or enjoyed by, the person or 
 corporation filing the same, or causing tlie same to be 
 filed, for the registry, shall be fully and completely 
 secured, preserved and protected as the property of 
 those entitled to the same before any such label, trade- 
 mark, term or design has been actually applied to any 
 goods, wares, merchandise, or product of labor, and put 
 upon the market for sale or otherwise, and before any 
 use or appropriation of any such label, trademark, term 
 or design has been made in connection with any such 
 goods, wares, merchandise or product of labor, as well 
 as after the same has been used or applied to designate, 
 make known or distinguish any such goods, wares, mer- 
 chandise, or product of labor and they have been put 
 upon the market. 
 
 Sec. 3. Any person, or corporation that has hereto- 
 fore adopted and used, or shall hereafter adopt and use 
 any label, trademark, term or design as herein provided, 
 may file the same for registry in the office of the Secre- 
 tary of State, or by leaving two copies, fac similes or 
 counterparts thereof, with the said Secretaiy, and filing 
 therewith a statement in the form of an affidavit, sub- 
 scribed and sworn to by any such person, or by any 
 officer, agent or attorney of any such corporation, speci- 
 fying the person or corporation by whom, or on whose
 
 STATE TRADEMARK STATUTES. 659 
 
 belialf, any such label, trademark, term or design is filed, 
 and the class or character of the goods, wares, merchan- 
 dise or products of labor to which the same has been, or 
 is intended to be appropriated or applied, and that the 
 person or corporation so filing the same, or on whose be- 
 half the same is so filed, has the right to the use of said 
 label, trademark, term or design, and that no other per- 
 son, finn, or corporation has the right to such use, either 
 in the identical form or in any such near resemblance 
 thereto as might be calculated to deceive, without the 
 permission or authority of the person or corporation 
 filing the same, or causing the same to be filed, and 
 that the copies, facsimiles or counterparts filed here- 
 with, are true and correct copies, fac similes or counter- 
 parts of the genuine label, trademark, term or design of 
 the person or corporation filing the same, or causing the 
 same to be filed; and there be paid for such registry a 
 fee of one dollar to the Secretary of State for the use of 
 the State, and the same recording fees required by the 
 general corporations act, Public Laws 1901, chapter 2. 
 
 Sec. 4. The Secretary of State upon the filing of any 
 such label, trademark, term or design, that is not in con- 
 flict with the next section hereof, shall register the same, 
 and shall deliver to the person or corporation filing the 
 same, or causing the same to be filed, as many certified 
 copies thereof, with his certificate of such registry, as 
 any such person or corporation may request, and for 
 every such copy and certificate there shall be paid to the 
 Secretaiy of State, for the use of the State, a fee of 
 one dollar; and any such certified copy and certificate 
 shall be admissible in evidence and competent and suf- 
 ficient proof of the adoption, filing and registry of any 
 such label, trademark, term or design, by any such ])er- 
 son or corporation, in any action or judicial proceed- 
 ing in any of the Courts of this State, and of due com- 
 pliance with the provisions of this Act: Provided, how- 
 ever, that such certificate shall not be assignable or
 
 660 APPENDIX H. 
 
 transferable by the person or corporation to whom the 
 same is issued by the Secretary of State. 
 
 Sec. 5. It shall not be lawful for the Secretary of 
 State to register, or permit to be registered, for any 
 person or corj^oration any label, trademark, term or de- 
 sign, that is in the identical form of any other label, 
 trademark, term or design theretofore filed by or on be- 
 half of any other i^erson, or corporation, or that bears 
 any such near resemblance thereto as may be calculated 
 to deceive, or that would be liable to be mistaken there- 
 for ; and any person or corporation who shall file or pro- 
 cure the filing and registry of any label, trademark, term 
 or design in the office of the Secretary of State, under 
 the provisions of this Act, by making any false or frau- 
 dulent representations or declarations, with fraudulent 
 intent, shall be liable to pay any damages sustained in 
 consequence of any such registry, to be recovered by or 
 in behalf of the party injured thereby. 
 
 Sec. 6. Whenever any person or corporation has 
 heretofore adopted and filed for record or registry, or 
 shall hereafter adopt and file for registry, any label, 
 trademark, term or design, or cause the same to be done, 
 as herein provided, and the same shall have been regis- 
 tered pursuant to this act, it shall be unlawful for any 
 other person or corporation to manufacture, use, sell, 
 offer for sale, or in any way utter or circulate any 
 counterfeit or imitation of any such label, trademark, 
 term or design, or have in possession, with intent that 
 the same shall be sold or disposed of, any goods, wares, 
 merchandise or product of labor to which or on which 
 any counterfeit or imitation of any such label, trademark, 
 term or design is attached, affixed, printed, stamped, im- 
 pressed or displayed, or to sell or dispose of, or offer to 
 sell or dispose of, or have in possession with intent that 
 the same shall be sold or disposed of, any goods, wares^ 
 merchandise, or product of labor contained in any box, 
 ease, can or package to which or on which any such
 
 STATE TRADESIARK STATUl'ES. 661 
 
 counterfeit or imitation is attached, afl&xed printed, 
 stamped, impressed or displayed. 
 
 Sec. 7. Whenever any person or corporation has 
 heretofore adopted and filed for record or registry, or 
 shall hereafter adopt and file for registry, any label, 
 trademark, term or design, as herein provided, it shall 
 he unlawful for any other person or corporation to make 
 any use, sale, offer for sale or display of the genuine 
 label, trademark, term or design of any such person or 
 corporation filing the same, or to have any such genuine 
 label, trademark, term or design in possession with in- 
 tent that the same shall be used, sold, offered for sale, 
 or displayed, or that the same shall be applied, attached 
 or displayed in any manner whatever to or on any 
 goods, wares or merchandise, or to sell, offer to sell, or 
 dispose of, or have in possession with intent that the 
 same shall be sold or disposed of any goods, wares or 
 merchandise in any box, case, can or package, to or 
 •which any such genuine label, trademark, term or design 
 of any such person or corporation is attached, affixed, or 
 displayed, or to make any use whatever of any sucl^ 
 genuine label, trademark, term or design, without first 
 obtaining in every such case the license, consent or au- 
 thority of the person or corporation adopting, filing and 
 registering the same, or causing the same to be adopted, 
 filed and registered; and any such license, consent or 
 authority may be revoked and terminated at any time 
 upon notice, and thereafter any use thereof shall be a 
 violation of this act, and subject those violating the 
 same to all the liabilities and i:>enalties herein provided 
 against any violation thereof. 
 
 Sec. 8. The Superior Court shall have jurisdiction in 
 all eases arising or commenced therein under this act for 
 the violations of any of the provisions thereof, and any 
 person or corporation filing, or causing to l)e filed, for 
 registry, any label, trademark, tenn or design i)ursuant 
 to the provisions of this act, shall have the right to an
 
 662 APPENDIX H. 
 
 action in the said court against any person or corpora- 
 tions for the violation of any of the provisions of this 
 act J and the said Court is hereby empowered and re- 
 quired to enjoin the manufacture, counterfeiting, imita- 
 tion, display, use, sale, offer of sale, circulating or utter- 
 ing of any counterfeit or imitation of any such label, 
 trademark, term or design of any such person, associa- 
 tion, organization or corporation; and the sale or dis- 
 posal of any goods, wares, merchandise or product of 
 labor, to which or on which any such counterfeit or imi- 
 tation, label, trademark, tenn or design is attached, af- 
 fixed, printed, painted, stamped or displayed, or any 
 goods, wares, merchandise, or product of labor contained 
 in any box, case, can or package, to or on which any 
 such counterfeit or imitation is attached, affixed, printed, 
 painted, stamped, impressed or displayed; and further 
 to enjoin the manufacture, use, sale, offer of sale, or 
 display, or (of) any genuine label, trademark, term or 
 design of any such person, or corporation filing the 
 same as aforesaid, or having in possession any such 
 genuine label, trademark, term or design with intent that 
 the same shall be used, sold, offered for sale or display, 
 or the same applied, attached or displayed, in any man- 
 ner whatever to or on any goods, wares, merchandise, 
 or product of labor; or the selling or offer to sell or 
 dispose of, or having in possession with the intent that 
 the same shall be sold, offered for sale or disposed of, 
 any goods, wares, merchandise in any box, case or pack- 
 age, to or on which any such genuine label, trademark, 
 term or design of any such person or corporation is at- 
 tached, affixed, or displayed, and from making any other, 
 or any use whatever of any such genuine label, trade- 
 mark, term or design, without having first obtained in 
 any and every such case, the consent and authority of 
 the person or corporation adopting, filing and register- 
 ing the same, or causing the same to be filed and regis- 
 tered, as herein provided; and the said Superior Court
 
 STATE TRADEMARK STATUTES. 663 
 
 is hereby empowered to make such other orders and 
 direct such other proceedings as the Court may deem 
 necessary and proper I'or the due protection oi" the rights 
 of complainants, affecting the purposes of this act, the 
 prevention of any violation of any of the provisions of 
 the same, and secure and protect any and all persons 
 or coriX)rations in all the rights, privileges, property, 
 and interest to which they or any of them are or may be 
 entitled in any such label, trademark, term or design, 
 under any of the provisions of this act, or otherwise; 
 and it shall be the duty of the said Superior Court to 
 award to the complainant or complainants, in any such 
 action, any and all damages resulting from any such 
 wrongful use of any such label, trademark, term or de- 
 sign by any defendant or defendants, or for any viola- 
 tion of any of the provisions of this act, and to require 
 any such defendant or defendants to pay to such com- 
 plainants any and all such damages, together with all 
 costs incurred by any such complaint in any such action, 
 or proceeding; and the said Court shall also order and 
 decree that the defendants pay to the complainant any 
 and all i^rofits obtained, received or derived from any 
 such wrongful use or any violation of the provisions of 
 this act, or both profits and damages, and that any such 
 counterfeits, or imitations of any such labels, trade- 
 marks, terms or designs in the possession or under the 
 control of the defendant or defendants, in any such ac- 
 tion, shall be delivered up to an officer of the Court, or 
 to the complainant, to be destroyed, and that any such 
 genuine labels, trademarks, terms or designs, in the pos- 
 session or under the control of any such defendant or 
 defendant, shall be delivered up to the complainant. 
 
 Sec. 9. That, in addition to any other rights, rem- 
 edies or penalties provided by this act, and as concur- 
 rent therewith, any person or corporation that shall vio- 
 late any of the provisions of this act shall be liable to a 
 l^enalty of two hundred dollars, to be recovered by any
 
 66-i APPENDIX H. 
 
 such person or corporation that has adopted and filed, 
 or caused the same to be done as aforesaid, any such 
 label, trademark, term or design. 
 
 Sec. 10. This act shall be in force from and after 
 April 1st, 1903. 
 
 In the General Assembly read three times, and ratified 
 this 9th day of March, A. D. 1903. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 To the Secretary of State of the State of North Carolina: 
 
 SIR: — In compliance with the requirements of an act of the Gen- 
 eral Assembly of the State of North Carolina, entitled "An Act to 
 provide for the registration of labels, trademarks and designs," ratified 
 
 March 9th, 1903, the undersigned resident or doing 
 
 business in the United States, having heretofore adopted or used, or 
 
 desiring to adopt or use a for the purposes provided 
 
 in said act, and desiring to file the same for record in the office of 
 the Secretary of State of the State of North Carolina, hereby certify: 
 1st. The name of the person or persons, copartnership or corpora- 
 tion, so filing, is 
 
 2d. His or its residence, location or place of business is 
 
 3d. The class of merchandise, and the particular description of 
 goods comprised therein 
 
 The trademark consists of 
 
 Two copies of fac-similes of said mark are tendered herewith. 
 4th. The class to which it has been or is intended to be appropriated 
 
 5th. The length of time, if any, during which it has been in use 
 
 State of 
 
 County of — 
 
 ss: 
 
 Personally appeared before me, this —day of , A. D. 190 — 
 
 who being duly sworn, according to law, depose and say that the state- 
 ments contained in the foregoing instruments are true; that the 
 
 so filing such has a right to use the same, and that no other 
 
 person or persons, firm or corporation, has the right to such use, either 
 in the identical form or in any such near resemblance thereto, as may 
 be calculated to deceive, and that the fac-similes, copies or counter- 
 parts* filed herewith are true and correct. 
 
 Sworn and subscribed before me, the day and year aforesaid. 
 
 ♦Note. — Two copies, counterparts or fac-similes of the trademark, 
 etc., must be filed with this application. 
 Filed, 190— 
 
 Secretary of State.
 
 STATE TRADEMARK STATUTES. 665 
 
 NORTH DAKOTA. 
 Rev. Codes 1899. 
 
 § 3485. One who produces or deals in a particular 
 thing or conducts a particular business, may appropriate 
 to his exclusive use as a trademark any form, symbol or 
 name which has not Ix^en so appropriated by another to 
 designate the origin or ownership thereof; but he cannot 
 exclusively appropriate any designation or part of a 
 designation which relates only to the name, quality, or 
 the description of the thing or business, or the place 
 where the thing is produced or the business is carried 
 on. 
 
 § 3486. The good will of a business is the expectation 
 of continued public patronage, but it does not include a 
 right to use the name of any person from whom it is ac- 
 quired. 
 
 J? 3487. The good will of a business is jiroperty, 
 transferable like any other. 
 
 § 3979. One who sells or agrees to sell any article to 
 which there is affixed or attached a trademark, thereby 
 warrants that mark to be genuine and lawfully used. 
 
 § 3980. One who sells or agrees to sell any article to 
 which there is affixed or attached a statement or mark to 
 express the quantity or quality thereof or the place 
 where it was in whole or in part produced, manufac- 
 tured or prepared thereby warrants the truth thereof. 
 
 § 7256. Every person who willfully forges, counter- 
 feits or procures to be forged or counterfeited any trade- 
 mark usually affixed by any person to any goods of such 
 person, with intent to pass off any goods to which such 
 forged or counterfeit trademark is affixed or intended to 
 be affixed, as the goods of such person, is guilty of a 
 misdemeanor. 
 
 § 7257. Every person who, with intent to defraud, has
 
 666 APPENDIX H. 
 
 in his possession any die, plate or brand, or any imita- 
 tion of the trademark of any person, for the purpose of 
 making any counterfeit or imitation of any description 
 whatever of such trademark, or of selling the same when 
 made, or affixing the same to any goods, and selling or 
 offering the same for sale or disposal as the original 
 goods of any other person, and every person who so uses 
 or sells the same, or who fraudulently uses the genuine 
 trademark of another with intent to sell or offer for sale 
 or disposal, any goods not the goods of the person to 
 whom such trademark properly belongs, as genuine and 
 original, is guilty of a misdemeanor. 
 § 7258. Every person who either: 
 
 1. Uses or causes to be used any brand, mark, name, 
 print, designation or description, the same as or similar 
 to any recorded to any other persons, or on the place re- 
 corded to another; or, 
 
 2. Uses or causes to be used any second hand sacks, 
 box, barrel, can, package or other article on which ha^ 
 been placed any brand, mark, name, print, designation 
 or description, the property of another, for the purposes 
 of deception or profit, is guilty of a misdemeanor, and 
 upon conviction thereof is punishable by fine of not less 
 than one hundred and not exceeding one thousand dol- 
 lars. 
 
 § 7259. Every person who sells or keeps for sale any 
 goods upon which any counterfeit trademark has been 
 affixed, and intended to represent such goods as the gen- 
 uine goods of another, knowing the same to be counter- 
 feited, is guilty of a misdemeanor. 
 
 § 7260. Every person who, with intent to defraud, af- 
 fixes or causes to be affixed to any goods, or to any bot- 
 tle, case, box or other package containing any goods, 
 any description of label, stamp, brand, imprint, printed 
 wrapper, label or mark, which designates such goods 
 by any word or token which is wholly or in part the 
 same to the eye or to ear as the word of any of the
 
 STATE TRADEMARK STATUTES. 667 
 
 words or tokens used by any other person as his trade- 
 mark, and every person who knowingly sells, or keeps, 
 or offers for sale any such bottle, case, box, or other 
 package with any such label, stamp, brand, imprint, 
 printed wrapper, ticket or mark affixed to, or upon it, in 
 case the person affixing or causing to be affixed such 
 mark, or so selling or exposing or offering for sale such 
 bottle, case, box, or other package, was not the first to 
 employ or use such words as his trademark, is guilty of 
 a misdemeanor, and in addition to the punishment \)tq- 
 scribed therefor is liable to the party aggrieved in the 
 penal sum of one hundred dollars for each and every of- 
 fense, to be recovered by him in a civil action. 
 
 §7261. The words "trademark," as used in the sec- 
 tions preceding, include every description of word, let- 
 ter, device, emblem, stamp, imprint, brand, printed tick- 
 et, label, or wrapper usually affixed by any mechanic, 
 manufacturer, druggist, merchant, or tradesman to de- 
 note any goods to be goods imported, manufactured, pro- 
 duced, compounded or sold by him, other than any name, 
 word or expression generally denoting any goods to be 
 of some particular class or description. 
 
 §7262. The word "goods," as used in the sections 
 preceding, includes every kind of goods, wares, mer- 
 chandise, compound or preparation, which may be law- 
 fully kept or offered for sale. 
 
 § 7263. The offense of affixing a false trademark to 
 goods is equally complete within the meaning of sec- 
 tions 7256, 7259 and 7260, whether such mark is affixed 
 to the goods themselves or to any box, bale, barrel, bot- 
 tle, case, cask, wrapper or other package or vessel, or 
 any cover or stopper thereof, in which such goods are 
 put up. 
 
 §§ 7264, 7266 relate to protection of packages of manu- 
 facturers and bottlers of soda, mineral water, and other 
 beverages.
 
 668 APPENDIX H. 
 
 OHIO. 
 No Registration Statute. 
 
 Bates' Ann. St.. 1902. 
 
 Section 7069. Whoever vends, or keeps for sale, any 
 goods, merchandise, mixture, or preparation upon which 
 any forged or counterfeit stamp, brand, imprint, wrajD- 
 per, label or trademark is placed or affixed, and intended 
 to represent the said goods, merchandise, mixture or 
 preparation, as the true and genuine goods, merchandise, 
 mixture or preparation of any other person, knowing 
 the same to be counterfeit, shall be fined not more than 
 one hundred dollars. 
 
 Sec. 7096. Whoever willfully forges or counterfeits 
 any representation, likeness, similitude, copy or imita- 
 tion of the private brand, wrapper, label or trademark 
 usually affixed by any person to or upon the goods, 
 wares, merchandise, preparation or mixture of such per- 
 son, or by any maker of wine from grapes grown within 
 this state, to the bottles or casks used by him to contain 
 the same, with intent to pass off any work, goods, manu- 
 facture, wine, compound, preparation, or mixture, to 
 which such forged or counterfeit representation, like- 
 ness, similitude, copy or imitation is affixed, or intended 
 to be affixed, as the work, goods, manufacture, wine, com- 
 pound, preparation or mixture of such j^erson, shall be 
 fined not more than five hundred dollars, or imprisoned 
 not more than twelve months, or both. 
 
 Sec. 7098. Whoever has in his possession any die, 
 plate, brand, engraving, printed label, stamp, imprint, 
 wrapper, or trademark, or any representation, likeness, 
 similitude, copy, or imitation thereof, usually affixed by 
 any person to or upon articles made, manufactured, pre- 
 pared, or compounded by him, for the purpose of mak- 
 ing impressions, or selling the same when made, or us-
 
 STATE TRADEMARK STATUTES. 669 
 
 ing the same upon any other articles made, manufac- 
 tured, prepared, or compounded, and passing the same 
 off upon the community as the original goods, manufac- 
 ture, preparation, or compound of any other person, or 
 so in fact sells or uses the same, (or) wrongfully and 
 fraudulently uses the genuine stamp, brand, imprint, 
 wrapper, label, or trademark, with intent to pass off any 
 goods, wares, merchandise, mixture, compound, or other 
 article, not the manufacture of the person to whom such 
 stamp, brand, imprint, wrapper, label, or trademark 
 properly belongs, as genuine and original, shall be fined 
 not more than five hundred dollars, or imprisoned not 
 more than twelve months, or both. 
 
 §§ 4364-42 to 4364-44, Laws of Ohio, 1902, relate to the 
 protection of packages used by manufacturers, bottlers 
 and vendors of soda water, mineral water, and other bev- 
 erages, or other articles of merchandise, medicines, 
 compounds, or preparations. 
 
 §§4364-55 to 4364-61 relate to timber marks. 
 
 §§4364-49 to 4364-53C relate to the marks of labor 
 unions. 
 
 §§ 7069-1 and 7069-2 relate to the false marking of sil- 
 verware. 
 
 OKLAHOMA. 
 
 Laws 1897, Ch. 40. 
 AN ACT to provide a label law for the territory of Oklahoma. 
 
 Section 1. '^Mienever any person or any association 
 or union of working-men has heretofore adopted or used 
 or shall hereafter adopt or use any label, trademark, 
 term, design, device or form of advertisement for the 
 purpose of designating, making known or distinguishing 
 any goods, wares, merchandise or other product of labor, 
 as having been made, manufactured, produced, prepared.
 
 670 APPENDIX H. 
 
 packed or put on sale by such person or association or 
 union of workingmen, or by a member or members of, 
 such association or union, it shall be unlawful to coun- 
 terfeit or imitate such label, trademark, term, design, de- 
 vice or form of advertisement, or to use, sell, offer for 
 sale, or in any way utter or circulate any counterfeit or 
 imitation of any such label, trademark, term, design, de- 
 vice or form of advertisement. 
 
 Sec. 2. Whoever counterfeits or imitates any such 
 label, trademark, term, design, device or form of adver- 
 tisement, or sells, offers for sale or in any way utters 
 or circulates any counterfeit or imitation of any such 
 label, trademark, term, design, device or form of adver- 
 tisement, or keeps or has in his possession, with intent 
 that the same shall be sold or disposed of, any goods, 
 wares, merchandise or other product of labor to which 
 or on which any such counterfeit or imitation is printed, 
 painted, stamped or impressed, or knowingly sells or 
 disposes of any goods, wares, merchandise or other prod- 
 uct of labor contained in any box, case, can or package 
 to which or on which any such counterfeit or imitation 
 is printed, painted, stamped or impressed, or knowingly 
 sells or disposes of any goods, wares, merchandise or 
 other product of labor contained in any box, case, can or 
 package to which or on which any such counterfeit or 
 imitation is attached, affixed printed or painted, stamped 
 or impressed, or keeps or has in his possession, with in- 
 tent that the same shall be sold or disposed of, any 
 goods, wares, merchandise or other product of labor in 
 any box, case, can or package to which or on which any 
 such counterfeit or imitation is attached, affixed, printed, 
 painted, stamped or impressed, shall be punished by a 
 fine of not more than a hundred dollars, or by imprison- 
 ment for not more than three months. 
 
 Sec. 3. Everj^ such person, association or union that 
 has heretofore adopted or used, or shall hereafter adopt 
 or use, a label, trademark, term, design, device or form
 
 STATE TRADEMARK STATUTES. 671 
 
 of advertisement, as provided in section one of this act, 
 may file the same for record in the office of the secre- 
 tary of the territory of Oklahoma by leaving two copies, 
 counterparts or fac similes thereof with said secretary, 
 and by filing therewith a sworn application specifying 
 the name or names of the person, association or union 
 on whose behalf such label, trademark, term, design, de- 
 vice or form of advertisement shall be filed; the class 
 of merchandise and a description of the goods to which 
 it has been or is intended to be appropriated, stating 
 that the party so filing, or on whose behalf such label, 
 trademark, term, design, device, or fonn of advertise- 
 ment shall be filed, has the right to the use of the same; 
 that no other person, firm, association, union or corpor- 
 ation has the right to such use either in the identical 
 form or in any such near resemblance thereto as may 
 be calculated to deceive, and that the fac similes or coun- 
 teri^arts filed therewith are true and correct. There shall 
 be paid for such filing and recording a fee of one dollar. 
 
 Said secretary shall deliver to such person, associatiq-n 
 or union so filing or causing to be filed any such label, 
 trademark, teiTa, design, device or form of advertise- 
 ment so many duly attested certificates of the recording 
 of the same as such person, association or union may 
 apply for, for each of which certificates said secretary 
 shall receive a fee of one dollar. Any such certificate of 
 record shall, in all suits and prosecutions under this act, 
 be sufficient proof of the adoption of such label, trade- 
 mark, term, design, device or form of advertisement. 
 Said secretary of the territory shall not record for any 
 person, union or association any label, trademark, term, 
 design, device or form of advertisement that would jn-ob- 
 ably be mistaken for any label, trademark, temi, design, 
 device or form of advertisement. 
 
 Sec. 4. Any person who shall for himself, or on be- 
 half of any other i>erson, association or union, procure 
 the filing of any label, trademark, tenn, design or form
 
 672 APPENDIX H. 
 
 of advertisement in the office of the secretary of the ter- 
 ritory, under the provisions of this act, by making any 
 false or fraudulent representations or declarations, ver- 
 bally or in writing, or by any fraudulent means, shall be 
 liable to pay any damages sustained in consequence of 
 any such filing to be recovered by or on behalf of the 
 party injured thereby in any court having jurisdiction, 
 and shall be punished by a fine not exceeding one hun- 
 dred dollars, or by imprisonment not to exceed three 
 months. 
 
 Sec. 5. Every such person, association or union 
 adopting or using a label, trademark, term, device, or 
 form of advertisement as aforesaid may proceed by suit 
 to enjoin the manufacture, use, display or sale of any 
 counterfeits or imitations thereof, and all courts of com- 
 petent jurisdiction shall grant injunctions to restrain 
 such manufacture, use, display or sale, and may award 
 the complainant in any such suit, damages resulting 
 from such manufacture, use, sale or display as may be 
 by the said court deemed just and reasonable and shall 
 require the defendants to pay to such person, associa- 
 tions or union all profits derived from such wrongful 
 manufacture, use, display or sale, and such court shall 
 also order that all counterfeits or imitations in the pos- 
 session or under the control of any defendant in such 
 cause be delivered to an officer of the court or to the 
 complainant, to be destroyed. 
 
 Sec. 6. Every person who shall use or display the 
 genuine label, trademark, term, design, device or form 
 of advertisement of any such person, association or 
 union, in any manner not being authorized so to do by 
 such person, union or association, shall be deemed guilty 
 of a misdemeanor, and shall be punished by imprison- 
 ment for not more than three months, or by fine of not 
 more than one hundred dollars. In all cases where such 
 association or union is not incorporated, suits under this 
 act may be commenced and prosecuted by an officer or
 
 STATE TRADEMARK STATUTES. 673 
 
 member of such association or union on behalf of, and 
 for the use of, such association or union. 
 
 Sec. 7. Any person or persons who shall in any way 
 use the name or seal of any such person, association or 
 union, or officer thereof, in and about the sale of goods 
 or otherwise, not being authorized to so use the same, 
 shall be guilty of a misdemeanor, and shall be punished 
 by imprisonment for not more than three months, or 
 by a fine of not more than one hundred dollars. 
 
 Sec. 8. This act shall take effect and be in force from 
 and after its passage and approval. 
 
 Approved March 11, 1897. 
 
 Chap. 49 of the Session Laws of 1895 relates to the 
 protection of the packages of manufacturers and dealers 
 in carbonated goods, soda waters and other beverages. 
 
 OREGON. 
 
 Bellinger and Cotton's Annotated Codes and Statutes, Ch. V. 
 
 Trademakks. 
 
 Sec. 4609. Exclusive Use of Trademark, Hoiv Se^ 
 cured.— Any person, partnership, firm, or private cor- 
 poration desiring to secure within this state the exclu- 
 sive use of any name, mark, brand, designation, or de- 
 scription for any article of manufacture or trade, or for 
 any mill, hotel, factory, machine shop or other place of 
 business, shall deliver or cause to be delivered to the 
 secretary of state a particular description or a fac simile 
 of such mark, brand, name, designation, or description 
 as he may desire to use. 
 
 Sec. 4610. Secretary of State to Record Trademarlcs. 
 —If there be not already a claim filed with the Secretary 
 of State for the same or a similar name, mark, brand, 
 designation, or description, he shall immediately record 
 
 43
 
 674 APPENDIX H. 
 
 tlie one furnished in a book to be specially provided and 
 kept by bim for such purpose, which book shall be at all 
 times subject to public inspection and examination. If 
 there be already filed the same or a similar brand, mark, 
 designation, or description, the secretary shall so inform 
 the applicant, and shall not record the same. 
 
 Sec. 4611. Penalty for Infringement.— Any person, 
 partnership, firm, or corporation that shall use or cause 
 to be used any name, mark, brand, designation, or de- 
 scription the same as or similar to one so secured or 
 recorded, for the purpose of deception or profit, shall 
 forfeit to the use of the owner of the name, mark, brand, 
 designation, or description so taken or imitated one-half 
 of the propertj^ goods, or articles of trade upon which 
 the same may be used or placed, or the value thereof, to 
 Idc recovered by the said owner in any court having ju- 
 risdiction of the subject-matter. 
 
 Sec. 4612. Penalty for Second Infringement.— Any 
 person, j^artnership, firm, or private corporation that 
 shall use any such mark, brand, name, designation, or 
 description a second or greater number of times shall 
 forfeit the whole of the property or article upon which 
 the same is placed or used, or the value thereof, to be 
 recovered in the manner provided in the preceding sec- 
 tion. 
 
 Sec. 4613. Penalty for Using Boxes, etc., with An- 
 other's Trademark.— Anj person, partnership, firm, or 
 private corporation that shall use or cause to be used 
 any second hand sack, box, barrel, can, package, or other 
 article on which has been placed any name, mark, brand, 
 designation, or description, the property of another, for 
 the purpose of deception, shall be liable to the same for- 
 feiture of the property inclosed therein as is provided 
 in sections 4611 and 4612. 
 
 Sec. 4614. Importing Goods with Another's Trade- 
 mark Thereon.— If any goods, wares, merchandise, or 
 other articles shall be imported into this state on which
 
 STATE TRADEMARK STATUTES. 
 
 6To 
 
 shall be used, for the purpose of deception, the same or 
 any similar mark, name, brand, designation or descrip- 
 tion as may have been secured under the provisions of 
 this chapter, said goods, wares, merchandise, or other 
 articles shall be forfeited to the use of the party injured, 
 as provided in sections 4611 and 4612. 
 
 Sec. 4615. Fee for Recording Trademark.— A fee of 
 two dollars and a half shall be paid to the Secretary of 
 State by the owner of said trademark as pay for record- 
 ing. 
 
 Sec. 4616. Right to Enjoin Infringement Continues. 
 —Nothing in this act shall be construed so as to affect 
 the power of courts of equity to perpetually restrain by 
 injunction the improper use of any mark, brand, name, 
 description, or designation which may have been secured 
 by the provisions of this chapter. 
 
 RULES OF THE DEPARTMENT OF STATE 
 
 REGULATING THE 
 
 REGISTRulTION OF TRADEMARKS. 
 
 In order to secure, within the State of Oregon, the reg- 
 istration of a brand, label, mark, name, word, word-sym- 
 bol, 2)hrase or designation as a trademark, it is neces- 
 sary to make out a formal application addressed to the 
 Secretary of State setting forth that some individual 
 firm, partnership, or corporation, doing business at a 
 designated place, desires to secure within the state of 
 Oregon the sole and exclusive use as a trademark of 
 some particularly described brand, label, mark, name, 
 word, word-symbol, phrase or designation, for use in 
 some designated manner on some stated class of goods, 
 wares, or merchandise, and that the individual finn, 
 partnership, or corporation, making the application is 
 the original user and originator of the same, and that
 
 676 APPENDIX H. 
 
 by reason of being the original user claims within the 
 State of Oregon the right to the sole and exclusive use. 
 
 This api^lication should be signed and attached to it, 
 either as part of the application or as an exhibit, should 
 be one facsimile of the brand, label, mark, name, word, 
 word-symbol, phrase or designation desired to be trade- 
 marked. Enclosed with the application should be an 
 extra facsimile printed,' impressed or made upon thin 
 durable paper for attaching in the book of records of 
 trademarks. With each application should be enclosed 
 the fee allowed by law of $2.50. 
 
 After the application is received at the office of the 
 Secretary of State an examination of all the records of 
 all trademarks which have heretofore been filed, must 
 be made to ascertain whether or not the design desired 
 to be registered will conflict with anj^thing already regis- 
 tered. If, after such search has been made, it is found 
 not to conflict with anything previously registered, the 
 application is immediately filed and from that time the 
 sole and exclusive use is awarded to the applicant. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 Application to register — a(a) As a trademark in the State 
 
 of Oregon, for (b) 
 
 , 190—. 
 
 To F. I. Dunbar, Secretary of State. 
 
 (c) , (d) , desiring to secure within the State of Ore- 
 gon the sole and exclusive use of a (a) for use upon (b) 
 
 In accordance with the provisions of Chapter V, Title XXXVIII, Bell- 
 inger and Cotton's Annotated Codes and Statutes of Oregon, hereby 
 
 presents this application for the registration of the (a) , described 
 
 as follows: a fac simile of which is marked "Exhibit A," 
 
 hereto attached. This (a) as shown in the exhibit is to be used 
 
 upon (b) , (e) said above named 
 
 And by reason of being the originator and original user of the 
 
 (a) herein described and shown in the exhibit hereto attached, 
 
 the said hereby claims the right to the sole and exclusive use 
 
 of the same within the State of Oregon for the uses and purposes 
 herein stated.
 
 STATE TRADEMARK STATUTES. 677 
 
 (a) Insert whether name, mark, brand, designation or description. 
 
 (b) Insert name of article, or place of business; 
 
 (c) Insert name of person, firm, or corporation; 
 
 (d) Insert whether partnership, firm, or corporation; 
 
 (e) Insert manufactured and sold, or place of business, as the case 
 may be. 
 
 Inclosed with the application should be an extra fac simile printed, 
 impressed, or made upon thin, durable paper for attaching in the book 
 of Records of Trademarks. 
 
 PENNSYLVANIA. 
 
 Act of April 24, 1905. 
 
 No. 210. 
 
 AN ACT amending the third section of the act, entitled "An act to 
 provide for the registration of labels, trademarks, tradenames, 
 stamps, designs, devices, shopmarks, terms, brands, designations, 
 descriptions, or forms of advertisement, and protect and secure the 
 rights, property and interest therein of the persons, copartnerships 
 or corporations adopting and filing the same, and providing penal- 
 ties for the violations of the act," approved the twentieth day of 
 June, Anno Domini one thousand nine hundred and one; so as 
 to further protect and secure the rights, property and interest of 
 persons, corporations or copartnerships adopting and registering 
 said labels, trademarks, tradenames, stamps, designs, devices, shop- 
 marks, terms, brands, designations, descriptions or form of adver- 
 tisement. 
 
 Section 1. Be it enacted, &:c., That the third section 
 of the act, entitled *'An act to provide for the regis- 
 tration of labels, trademarks, tradenames, stamps, de- 
 signs, devices, shopmarks, terms, brands, designations, 
 descriptions or forms of advertisement, and protect and 
 secure the rights, property and interest therein of the 
 persons, copartnerships or corporations adopting and 
 filing the same, and providing penalties for the viola- 
 tion of the act," approved the twentieth day of June, 
 Anno Domini one thousand nine hundred and one, which 
 reads as follows: 
 
 '*Sec. 3. That whenever person or persons, copart- 
 nership or corporations, has heretofore adopted and filed
 
 678 APPENDIX H. 
 
 for record or registry, or shall hereafter adopt and file 
 for registry, any label, trademak, tradename, device, 
 shopmark, designation, or fonn of advertisement, as 
 herein provided, it shall be unlawful, and a violation 
 of this act, for any other person, copartnership or corpo- 
 ration to make any use, sale, offer for sale, or display 
 of the genuine label, trademark, tradename, device, shop- 
 mark, designation, or form of advertisement, or any 
 such likeness or imitation thereof as shall be calculated 
 or liable to deceive, of any such person or persons, 
 cof)artnership or corporations, filing the same ; or to sell, 
 offer to sell, or dispose of, any goods, wares or mer- 
 chandise, in bulk, or in any box, case, can, bottle or 
 package to or which any such genuine label, trademark, 
 tradename, device, shopmark, designation, or form of 
 advertisement, filed for record as aforesaid, or any such 
 likeness or imitation thereof, is attached, affixed or dis- 
 played; or to make any wrongful use whatever of any 
 such genuine label, trademark, tradename, device, shop- 
 mark, designation, or form of advertisement, or any 
 such likeness or imitation thereof; or to in any way use 
 the name or seal of any such person or persons, copart- 
 nership or corporation, or any such likeness or imitation 
 thereof, in and about the sale of goods or otherwise, 
 without first obtaining in every such case the license, 
 consent or authority of the person or persons copartner- 
 ship or corporation, adopting, filing and registering the 
 same; and it shall be unlawful for anj^ other person or 
 persons, firm, copartnership, or corporation to make any 
 use of such label, trademark, tradenames, device, shop- 
 mark, designation, or form of advertisement, so filed, 
 or any such likeness or imitation thereof, or utter or 
 display the same orally or in any printed or written 
 form in the conduct of his business or in any business 
 transaction, attached to merchandise or products of 
 labor, or detached from and independent of the same, 
 on invoice, letter-heads, bills or advertisements, without 

 
 STATE TRADEMARK STATUTES. 679 
 
 express consent, license and authority of the jjcrson or 
 jjersons, copartnership or corporation, so filing the 
 same; and any such license, consent or authority may 
 be revoked and terminated at any time, upon notice, 
 'and thereafter any use tliereof shall be a violation of 
 this act, and subject those violating the same to all the 
 liabilities and penalties herein provided against any 
 violation thereof. He shall refuse to file or register 
 any label, trademark, tradename, device, shopmark, 
 designation, or form of advertisement, identical with, 
 or so similar to as to be calculated or liable to deceive, 
 any label, trademark, tradename, device, shopmark, 
 designation, or form of advertisement, filed or registered, 
 unless it shall be proved to his satisfaction that the 
 person or persons, copartnership or corporation, lastly 
 applying for the registry of such label, trademark, trade- 
 names, device, shopmark, designation, or form of ad- 
 vertisement, shall be entitled thereto, and the owner 
 thereof by right of prior adoption; in which case the 
 date of adoption shall determine the ownership, and 
 shall be proved by affidavits of persons conversant with 
 such dates. In the case the Secretary of the State be- 
 comes satisfied, after hearing the said affidavits, that 
 the person or persons, copartnership or corporation, last 
 applying for registr^'^ is entitled to priority of adoption 
 to register such trademark, tradename, device, shop- 
 mark, designation, or for mof advertisement, he shall 
 revoke the first registry thereof, and re-register the same 
 in the name of said applying person or persons, co- 
 partnership or corporations," be and the same is hereby 
 amended so as to read as follows: 
 
 Sec. 3. That whenever person or persons, copartner- 
 ship or corporations, has heretofore adopted and filed 
 for record or registry, or shall hereafter adopt and file 
 for registry'-, any label, trademark, tradename, device, 
 shopmark, designation, or form of advertisement, as 
 herein provided, it shall be unlawful and a violation of
 
 680 APPENDIX H. 
 
 this act for any other person, copartnership, or corpora- 
 tion to make any use, sale, offer for sale, or display of the 
 genuine label, trademark, tradename, device, shopmark, 
 designation, or form of advertisement, or any such like- 
 ness or imitation thereof as shall be calculated or liable 
 to deceive, of any such person or persons, copartner- 
 ship or corporations, filing the same; or to sell, offer 
 to sell, or dispose of any goods, wares, or merchandise, 
 in bulk, or in box, case, can, bottle or package to or 
 which any genuine label, trademark, tradename, device, 
 shopmark, designation, or form of advertisement, filed 
 for record as aforesaid, or any such likeness or imita-i 
 tion thereof, is attached ; affixed or displayed ; or to make 
 any wrongful use whatever of any such genuine label, 
 trademark, tradename, device, shopmark, designation, or 
 fonn of advertisement, or any such likeness or imitation 
 thereof; or to, in any way, use the name or seal of any 
 such person or persons, corpartnership or corporation, 
 or any other likeness or imitation thereof, in and about 
 the sale of goods, or otherwise, without first obtaining, 
 in eveiy such case, the license, consent or authority of 
 the person or persons, copartnership or corporation, 
 adopting, filing and registering the same; and it shall be, 
 unlawful for any other person or persons, firm, copart- 
 nership, or corporation to remove any such label, trade- 
 mark, tradename, device, shopmark, designation, or form 
 of advertisement, so registered as aforesaid and attached, 
 to merchandise or products of labor, for the purpose of 
 using such merchandise or products of labor as a pat- 
 tern for the reproduction of the same: Provided how- 
 ever. That nothing herein contained shall be taken to 
 prohibit the using of such merchandise or products of 
 labor as a pattern for the reproduction of the same, in 
 individual cases of emergency repair. And it shall be 
 unlaivfid for any other person or persons, firm, copart- 
 nership, or corporation to make any use of such label, 
 trademark, tradename, device, shopmark, designation, or
 
 STATE TRADEMARK STATUTES. 681 
 
 form of advertisement, so filed, or any such likeness or 
 imitation thereof, or utter or display the same orally or 
 in any jDrinted or written fonn in the conduct of his 
 business or in any business transaction, attached to mer- 
 chandise or products of labor, or detached from and in- 
 dependent of the same, on invoice, letter-heads, bills, or 
 advertisements, without express consent, license and au- 
 thority of the person or persons, copartnership or corpo- 
 ration, so filing the same; and any such license, consent 
 or authority may be revoked and terminated at any time, 
 upon notice, and thereafter any use thereof shall be a 
 violation of this act, and subject those violating the same 
 to all the liabilities and penalties herein provided against 
 any violation thereof. He shall refuse to file or register 
 any label, trademark, tradename, device, shopmark, 
 designation, or form of advertisement, identical with, or 
 so similar to as to be calculated or liable to deceive, any 
 label, trademark, tradename, device, shopmark, designa- 
 tion, or form of advertisement, filed or registered, unless 
 it shall be proved to his satisfaction that the person or 
 jiersons, copartnership or coii:»oration, lastly applying) 
 for the registry of such label, trademark, tradename, de- 
 vice, shopmark, designation, or form of advertisement, 
 shall be entitled thereto, and the owner thereof by right 
 of prior adoption; in which case the date of adoption 
 shall determine the ownership, and shall be proved by 
 affidavits of persons conversant with such dates. In the 
 case the Secretary of State becomes satisfied, after hear- 
 ing the said affidavits, that the person or persons, copart- 
 nership or corporation, last applying for registry is en- 
 titled to priority of adoption to register such trademark, 
 tradename, device, shopmark, designation, or form of 
 advertisement, he shall revoke the first registry thereof, 
 and re-register the same in the name of said applying 
 person or persons, copartnership or cor]iorations.
 
 682 APPENDIX H. 
 
 FORM OF APPLICATION FOR REGISTRATION 
 
 To the Secretary of the Commonwealth of Pennsylvania: 
 
 SIR: — In compliance with the requirements of an Act of the Gen- 
 eral Assembly of the Commonwealth of Pennsylvania entitled "An 
 Act to provide for the registration of labels, trademarks, tradenames, 
 stamps, designs, devices, shopmarks, terms, brands, designations, de- 
 scriptions or forms of advertisement, and protect and secure the rights, 
 property and interest therein of the persons, copartnerships or corpora- 
 tions adopting and filing the same, and providing penalties for the 
 violations of the act," approved the 20th day of June, A. D. 1901, the 
 
 undersigned, resident or doing business in the United States, 
 
 having heretofore adopted or used, or desiring to adopt or use a 
 
 for the purposes provided in said act, and desiring to file the same for 
 record in the office of the Secretary of State of the State of Pennsyl- 
 vania, do hereby certify: 
 
 1st. The name of the person or persons, copartnership or corpora- 
 tion so filing, is 
 
 (If a corporation give name of State under which organized.) 
 
 2d. His or its residence, location or place of business 
 
 3d. The class of merchandise, and the particular description of 
 goods comprised therein 
 
 The trademark consists of 
 
 4th. The class to which it has been or is intended to be appro- 
 priated 
 
 5th. The length of time, if any, during which it has been in 
 
 use 
 
 — / **• Signature of Applicant. 
 
 State of — 
 County of 
 
 Personally appeared before me, this day of , A. D. 
 
 190 — , who being duly sworn, according to law, deposes and says that 
 the statements contained in the foregoing instrument are true; that 
 
 the so filing such , has a right to use the same, and that 
 
 no other person or persons, copartnership or corporation, has the right 
 to such use, either in the identical form or in any such near resem- 
 blance thereto as may be calculated to deceive, and that the fac-similes, 
 copies or counterparts filed herewith are true and correct. 
 
 Sworn and subscribed before \ 
 me, the day and year aforesaid, j 
 
 Note. — Two copies, counterparts or fac-similes of the trademark 
 must be filed with this application. Fee for filing and certificate, two 
 dollars.
 
 STATE TRADEMARK STATUTES. 683 
 
 RHODE ISLAND. 
 
 Public Laws of 1900-1. Cii. 735. 
 
 AN ACT for the protection of labels and seals of labor organizations, 
 associations, and societies in the state of Rhode Island and Provi- 
 dence Plantations. 
 
 Section 1. Whenever any person, or any association 
 or union of worldng^nien, has heretofore adopted or used, 
 or shall hereafter adopt or use, any label, trademark, 
 term, design, device, or form of advertisement for the 
 purpose of designating, making known, or distinguishing 
 any goods, wares, merchandise, or other product of labor 
 as having been made, manufactured, produced, prepared, 
 packed, or put on sale by such i3erson, or association or 
 union of workingmen, or by a member, or members, of 
 such association or union, it shall be unlawful to coun- 
 terfeit or imitate such label, trademark, tenn, design, de- 
 vice, or form of advertisement, or to use, sell, offer for 
 sale, or in any way utter or circulate any counterfeit 
 or imitation of any such label, trademark, term, design, 
 device, or form of advertisement. 
 
 Sec. 2. Whoever knowingly counterfeits or imitates 
 any such label, trademark, term, design, device, or form 
 of advertisement which has been filed and recorded in 
 the office of the Secretary of State as hereinafter pro- 
 vided ; or knowingly sells, offers for sale, or in any way 
 utters or circulates any counterfeit or imitation of any 
 such label, trademark, term, design, device or form of 
 advertisement ; or knowingly keeps or has in his posses- 
 sion, with intent that the same shall be sold or disposed 
 of, any goods, wares, merchandise, or other product of 
 labor to which or on which any such counterfeit or imi- 
 tation is printed, painted, stamped, or impressed; or 
 knowingly sells or disposes of any goods, wares, mer- 
 chandise, or other product of labor contained in any
 
 684 APPENDIX H. 
 
 box, case, can, or package to which or on which any 
 such counterfeit or imitation is attached, affixed, printed, 
 painted, stamped, or impressed; or knowingly keeps or 
 has in his possession with intent that the same shall 
 be sold or disposed of, any goods, wares, merchandise, 
 or other product of labor in any box, case, can, or pack- 
 age to which or on which any such counterfeit or imi- 
 tation is attached, affixed, printed, painted, stamped, or 
 impressed, shall be j^unished by a fine of not more than 
 one hundred dollars or by imprisonment for not more 
 than three months. 
 
 Sec. 3. Every such person, association, or union that 
 has heretofore adopted or used, or shall hereafter adopt 
 or use, a label, trademark, term, design, device or form 
 of advertisement as provided in section 1 of this act, shall 
 file the same for record in the office of the Secretary of 
 State by leaving two copies, counterparts, or facsimiles 
 thereof, with said secretary, and by filing therewith a 
 sworn application sioecifying the name or names of the 
 person, association, or union on whose behalf such label, 
 trademark, term, design, device, or form of advertise- 
 ment shall be filed; the class of merchandise, and a 
 description of the goods to which it has been or is in- 
 tended to be appropriated, stating that the party so fil- 
 ing, or on whose behalf such label, trademark, term, de- 
 sign, device, or form of advertisement shall be filed, has 
 the right to the use of the same, that no other person, 
 firm, association, union, or corporation has the right to 
 such use, either in the identical form or in any such 
 near resemblance thereto as may be calculated to de- 
 ceive, and that the facsimile or counterparts filed there- 
 with are true and correct, before there shall be any lia- 
 bility to any suit or proceeding for any violation of this 
 act. There shall be paid for such filing and recording a 
 fee of one dollar. Said secretary of state shall cause a 
 description of such label, trademark, term, design, de- 
 vice, or form of advertisement to be published once a
 
 STATE TRADEMARK STATUTES. 685 
 
 week for three successive weeks, at the expense of the 
 applicant, in some newspaper published in the city of 
 rrovidence. After such publication said secretary shall 
 deliver to such person, association, or union so filing or 
 causing to be filed any such label, trademark, term, de- 
 sign, device or form of advertisement so many duly at- 
 tested certificates of the recording of the same as such 
 person, association, or union may apply for, for each 
 of which certificates said secretary shall receive a fee of 
 one dollar. Any such certificate of record shall in suits 
 and prosecutions under this act be sufficient proof of the 
 adoption of such label, trademark, term, design, device, 
 or form of advertisement. Said secretary of state shall 
 not record for any person, union, or association any 
 label, trademark, term, design, device, or form of adver- 
 tisement that would probably be mistaken for any label, 
 trademark, term, design, device, or form of advertise- 
 ment theretofore filed by or on behalf of any other 
 person, union, or association. 
 
 Sec. 4. Any person who shall, for himself or on be- 
 half of any other person, association, or union, procure 
 the filing of any label, trademark, term, design, or form 
 of advertisement in the office of the secretary of state 
 under the provisions of this act by making any false or 
 fraudulent representations or declarations, verbally or 
 in writing, or by any fraudulent means, shall be liable 
 to pay any damages sustained in consequence of any 
 such filing, to be recovered by or on behalf of the party 
 injured thereby in any court haying jurisdiction, and 
 shall be punished by a fine not exceeding one hundred 
 dollars, or by imprisonment not exceeding three months. 
 In any suit or prosecution under the provisions of this 
 act, the defendant may show that he or it was the owner 
 of such label, trademark, term, design, device, or form 
 of advertisement prior to its being filed under the pro- 
 i^isions of this act, and that it had been filed wrong-
 
 6SG APPENDIX H. 
 
 fully or without right by some other person, association 
 or union. 
 
 See. 5. Every such person, association, or union 
 adopting or using a label, trademark, term, design, de- 
 vice, or form of advertisement, as aforesaid, may pro- 
 ceed by suit to enjoin the manufacture, use, display, or 
 sale of any counterfeits or imitations thereof, and all 
 courts of competent jurisdiction may grant injunctions 
 to restrain such manufacture, use, display, or sale, and 
 may award the complainant in any such suit damages 
 resulting from such manufacture, use, sale, or display, 
 as may be by the said court deemed just and reasonable, 
 and may require the defendants to pay such person, 
 association or union all profits derived from such wrong- 
 ful manufacture, use, display, or sale; and such court 
 may also order that all such counterfeits or imitations 
 in the possession or under the control of any defendant 
 in such cause be delivered to an officer of the court, or 
 to the complainant, to be destroyed. 
 
 In all cases where such association or union is not 
 incorporated, suits under this act may be commenced 
 and prosecuted by an officer or member of such associa- 
 tion or union, on behalf of and for the use of such asso- 
 ciation or union. 
 
 Sec. 6. Any person or persons who shall in any way 
 use the name or seal of any such j^erson, association, or 
 union, or officer thereof, in and about the sale of goods 
 or otherwise, not being authorized to use the same, shall 
 be guilty of a misdemeanor, and shall be punished by 
 imprisonment for not more than three months or by fine 
 of not more than one hundred dollars. 
 
 Sec. 7. The provisions of this act shall not abridge 
 any rights to any trademarks existing at the time of the 
 passage of this act, whether the same shall be recorded 
 or not, nor any remedies or rights of action otherwise 
 or theretofore existing in favor of owners of trade- 
 marks.
 
 STATE TRADEMARK STATUTES. 687 
 
 Sec. 8. The district courts of the several judicial dis- 
 tricts shall have jurisdiction of all comijlaints for viola- 
 tion of this act. 
 
 Sec. 9. This act shall take effect and be in force from 
 and after the first day of June, A. D. 1900, and all acts 
 and parts of acts inconsistent herewith are hereby re- 
 pealed. 
 
 Chapter 627, Pub. Laws 1898-1899 relates to the pro- 
 tection of bottles, barrels, kegs, casks, cans, etc., of manu- 
 facturers, bottlers, and vendors of soda water, mineral 
 water, ale, beer, or other liquids that may be used as 
 foods or beverages, or medicines, perfumery, oils, com- 
 pounds, etc. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 Application accompanying a (Insert Label, Trademark, Term, 
 
 Design, Device, or Form of Advertisement as the case may be) filed in 
 accordance with the provisions of Chapter 735 of the Public Laws, 
 passed April 12, 1900, entitled "An Act for the Protection of Labels 
 and Seals of Labor Organizations, Associations and Societies in the 
 State of Rhode Island and Providence Plantations." 
 
 Name of Person, Association or Union 
 
 Class of merchandise and description of the goods to which the 
 (Insert Label, Trademark, Term, Device, or Form of Advertise- 
 
 ment, as the case may be) has been or is intended to be appropriated, 
 
 do hereby declare, in accordance with the provisions of said 
 
 Chapter 735 of the Public Laws, that ha — a right to the use 
 
 of the same referred to in the foregoing application, that no 
 
 other person, firm, association, union or corporation has the right to 
 such use, either in the identical form or in any such near resemblance 
 thereto as may be calculated to deceive, and that the fac simile or 
 counterparts filed therewith are true and correct. 
 
 In Witness Whereof, I have hereunto signed my name this 
 
 -day of in the year nineteen hundred 
 
 (Sign here.)
 
 688 APPENDIX H. 
 
 State of Rhode Island, etc. 
 
 sc. ISO- 
 Then personally appeared the above-named and made oath 
 
 that the foregoing declaration by him subscribed is true and correct. 
 
 Before me. 
 
 Notary Public. 
 
 SOUTH CAEOLINA. 
 
 No Registration Law. 
 
 The Laws of 1902, No. 601, relate to the protection of 
 bottles, siphons, casks, boxes, etc., of manufacturers, bot- 
 tlers, and vendors of soda water, mineral waters, and 
 other beverages. 
 
 SOUTH DAKOTA. 
 
 POLITICAL CODE, 1903. 
 
 § 3190. It shall be lawful for associations and unions 
 of workmen to adopt, for their protection, labels, trade- 
 marks, and advertisements, used by such unions or asso- 
 ciations, announcing that goods manufactured by mem- 
 bers of such associations or unions are so manufactured 
 by such members. 
 
 § 3191. Any and all persons using such union or asso- 
 ciation trademarks, labels or advertisements, whether ex- 
 actly like such labels, trademarks or advertisements or 
 not, if with the intention to, or likely to, deceive the 
 public, shall be guilty of a misdemeanor and on convic- 
 tion thereof shall be punished by imprisonment of not 
 less than ten days nor more than thirty days, or a fine 
 of not less than twenty-five dollars nor more than one 
 hundred dollars, or both.
 
 STATE TRADEMARK STATUTES. 689 
 
 § 3192. Every person who shall use any such coun- 
 terfeited trademark, label or advertisement,s of such a 
 union or association, after having been notified that the 
 same is so counterfeited, shall be guilty of a misde- 
 meanor and on conviction thereof shall be punished by 
 imprisonment of not less than ten days nor more than 
 thirty days, or by fine of not less than twenty-five dol- 
 lars nor more than one hundred dollars, or both. 
 
 § 3193. Every association of workingmen or labor 
 union adopting a label, trademark or advertisement of 
 the kind specified in section 3190, shall record the same 
 in the office of the secretary of state by leaving two 
 copies of said labels or advertisements with said secre- 
 taiy of state, who shall, under his hand and seal, deliver 
 to the association or union recording such label or ad- 
 vertisements a certificate of record for which he shall 
 receive a fee of one dollar. 
 
 § 3194. Every association or labor union adopting a 
 label, trademark or advertisement of the kind specified 
 in section 3190 may proceed by suit in any of the courts 
 of the state to enjoin the manufacture, use, display or 
 sale of counterfeits or imitations of such labels, trade- 
 marks, or advertisements, and that all courts having 
 jurisdiction of the persons, and upon satisfactory proof 
 of such wrongful use, shall grant an injunction for such 
 wrongful use of such counterfeits, and shall award the 
 complainant such damages resulting from such wrongful 
 use as may be proved, and shall require the defendants 
 to pay to the complainant the profits derived from such 
 wrongful use, or both profits and damages ; and the court 
 shall also order all counterfeit labels and advertise- 
 ments in the possession or under the control of the de- 
 fendant in such cause to be delivered to an officer of 
 the court or to the complainants, to be destroyed. 
 
 § 3195. In like manner such unions or associations of 
 workingmen shall be authorized to proceed against all 
 persons who shall wrongfully use or display the genuine 
 
 44
 
 690 APPENDIX H. 
 
 labels or advertisements of the respective associations or 
 unions, not being authorized by such associations or 
 unions to use or display the same, in any court having 
 jurisdiction thereof. 
 
 CIVIL CODE, 1903. 
 
 § 183. There may be ownership of all inanimate 
 things which are capable of appropriation, or of manual 
 deliver}^; of all domestic animals; of all obligations; of 
 such products of labor or skill, as the composition of an 
 author, the good will of a business, trademarks and 
 signs, and of rights created or granted by statute. 
 
 § 892. One who produces or deals in a particular 
 thing, or conducts a particular business, may appro- 
 priate to his exclusive use, as a trademark, any form, 
 symbol or name which has not been so appropriated by 
 another, to designate the origin or ownership thereof; 
 but he cannot exclusively appropriate any designation, 
 or part of a designation, which relates only to the name, 
 quality or description of the thing or business, or the 
 place where the thing is produced or the business is 
 carried on. 
 
 § 1331. One who sells or agrees to sell any article to 
 which there is affixed or attached a trademark, thereby 
 warrants that mark to be genuine and lawfully used. 
 
 PENAL CODE, 1903. 
 
 § 421. Every person who wilfully forges, counterfeits 
 or procures to be forged or counterfeited any trade- 
 mark usually affixed by any person to any goods of such 
 person, with intent to pass off any goods to which such 
 forged or counterfeit trademark is affixed, or intended to 
 be affixed, as the goods of such person, is guilty of a 
 misdemeanor. 
 
 § 422. Every person who, with intent to defraud, has 
 in his possession any die, plate or brand, or any imita-
 
 STATE TRADEMARK STATUTES. 691 
 
 tion of the trademark of any person, for the purpose of 
 making any counterfeit or imitation of any description 
 whatever of such trademark, or of selling the same when 
 made, or affixing the same to any goods, and selling or 
 offering the same for sale or disposal as the original 
 goods of any other i:>erson, and every person who so 
 uses or sells the same, or who fraudulently uses the 
 genuine trademark of another with intent to sell or offer 
 for sale or disposal, any goods not the goods of the per- 
 son to whom such trademark properly belongs, as gen- 
 uine and original, is guilty of a misdemeanor. 
 
 § 423. Every person who sells or keeps for sale any 
 goods upon which any counterfeited trademark has been 
 affixed, intended to represent such goods as the genuine 
 goods of another, knowing the same to be counterfeited, 
 is guilty of a misdemeanor. 
 
 § 424. Every person who, with intent to defraud, af- 
 fixes or causes to be affixed to any goods, or to any 
 bottle, case, box or other package containing any goods, 
 any description of label, stamp, brand, imprint, printed 
 wrapper, label or mark, which designates such goods by 
 any word or token which is wholly or in part the same 
 to the eye, or to the ear, as the word or any of the 
 words or tokens used by any other person as his trade- 
 mark, and any person who knowingly sells, or keeps or 
 offers for sale, any such bottle, case, box or other pack- 
 age, with any such label, stamp, brand, imprint, printed 
 wrapper, ticket or mark affixed to or upon it, in case 
 the person affixing or causing to be affixed such mark, 
 or so selling, or exposing, or offering for sale such bot- 
 tle, case, box or other package, was not the first to em- 
 ploy or use such words as his trademark, is guilty of a 
 misdemeanor, and in addition to the punishment pre- 
 scribed therefor, is liable to the party aggrieved in the 
 penal sum of one hundred dollars for each and every 
 offense, to be recovered by him in a civil action. 
 
 §425. The word "trademark," as used in the sec-
 
 692 APPENDIX H. 
 
 tions preceding, includes every description of word, let- 
 ter, device, emblem, stamp, imprint, brand, printed 
 ticket, label or wrapper, usually affixed by any mechanic, 
 manufacturer, druggist, merchant or tradesman, to de- 
 note any goods to be goods imported, manufactured, 
 produced, compounded or sold by him, other than any 
 name, word or expression generally denoting any goods 
 to be of some particular class or description. 
 
 §426. The word ''goods" as used in the sections pre* 
 ceding, includes every kind of goods, wares, merchandise, 
 compound or preparation, which may be lawfully kept 
 or offered for sale. 
 
 § 427. The offense of affixing a false trademark to 
 goods is equally complete within the meaning of sections 
 421, 423 and 424, whether such mark is affixed to the 
 goods themselves, or to any box, bale, barrel, bottle, 
 case, cask, wrapper, or other package or vessel, or any 
 cover or stopper thereof, in which such goods are put up. 
 
 § 428. Whenever any person engaged in manufactur- 
 ing, bottling, selling in bottles, soda, mineral waters, 
 porter, ale, cider or small beer, has filed and published, 
 in the manner authorized by law, a description of a 
 name, mark or label usually stamped by him in the bot- 
 tles containing such beverage, every other person who, 
 without the written consent of such manufacturer or 
 dealer, refills with any beverage, whether genuine or 
 otherwise, with the intent to sell the same, any bottles 
 stamped with such name, mark or label, and every per- 
 son who sells, disposes of, purchases or traffics in such 
 bottles, is liable to a penalty of fifty cents for each and 
 every bottle so filled, sold, bought, disposed of, or traf- 
 ficked in, for the first offense, and five dollars for each 
 and every bottle so filled, bought, disposed of, or traf- 
 ficked in, for every subsequent offense. 
 
 § 429. Every person who keeps any bottles such as 
 are designated in the last section, without the written 
 consent of the manufacturer so to do, with intent to refill
 
 STATE TRADEMARK STATUTES. 693 
 
 or use or sell them in violation of the last section, is 
 liable to the penalty therein prescribed. 
 
 § 430. Whenever any manufacturer or dealer desig- 
 nated by section 428, or his agent, shall make oath or 
 affirmation before any magistrate that he has reason to 
 believe and does believe, that any of his bottles stamped 
 and registered as mentioned in said section are being 
 unlawfully used by any person or persons selling or 
 manufacturing mineral water or other beverages, or that 
 any junk dealer or vendor of bottles, has any of such 
 bottles secreted in any place, such magistrate shall there- 
 upon issue a search waiTant to discover and obtain the 
 same under the provisions of the law upon search war- 
 rants, which are hereby declared to fully relate to the 
 l^rposes of this chapter; and the magistrate may" sum- 
 marily bring or cause to be brought before him the pev- 
 son in whose possession the bottles are found, to ex- 
 amine into the circumstances of his possession, and if 
 such magistrate on summar^^ examination finds that such 
 person has been guilty of a violation of section 428, such 
 magistrate shall proceed to impose the fine therein pre- 
 scribed, and, if the same be not paid, to commit such 
 person to jDrison for a term not exceeding fifteen days. 
 
 TENNESSEE. 
 
 Chapter 21, Act of 1905. 
 
 AN ACT to regulate trademarks and to provide remedies and penalties 
 for the violation of this Act. 
 
 Section 1. Be it enacted hy the general assemhli/ of 
 the State of Tennessee, that within the meaning of this 
 Act a trademark shall be construed to be any seal, label, 
 term, design, device, or form of advertisement used for 
 the purpose of designating, making known, or distin- 
 guishing any goods, wares, merchandise, or other prod- 
 uct of labor, as having been made, manufactured, pro-
 
 694 APPENDIX H. 
 
 duced, prepared, packed, or put on sale by any iDerson, 
 firm, corporation, association, or union of workinginen, 
 or by any member or members of such association or 
 union. 
 
 Sec. 2. Be it further enacted, That whenever any per- 
 son, firm, or corporation or any association or union 
 of workingmen has heretofore adopted or used or shall 
 hereafter adopt or use any trademark, it shall be un- 
 lawful to counterfeit or imitate the same; or to use, sell, 
 or to offer for sale, or in any way utter or circulate any 
 counterfeit or imitation of any such trademark provided 
 such trademark has been filed and recorded in the office 
 of the Secretary of State, as provided in Section 4 of 
 this Act. 
 
 Sec. 3. Be it further enacted, That whoever know- 
 ingly counterfeits any such trademarks, or knowing said 
 trademark to be counterfeit, sells, offers for sale, or in 
 any way utters or circulate any counterfeit or imitation 
 of such trademark, or knowing such trademark to be 
 counterfeit, keeps, or has in his possession, with the 
 intent that the same shall be sold or disposed of, any 
 goods, wares, merchandise, or other product of labor to 
 which or on which any such counterfeit or imitation is 
 printed, painted, stamped, or impressed; or knowing 
 said trademark so printed, painted, stamped, or im- 
 pressed thereon, sells or disposes of such goods, wares, 
 merchandise, or other product of labor contained in any 
 box, case, can, or package, to which or on which any 
 such counterfeit or imitation is attached, fixed, printed, 
 painted, stamped or impressed, or knowing such trade- 
 mark to be counterfeit, keeps or has in his possession 
 with the intent that the same shall be sold or disposed 
 of, any goods, wares, merchandise, or other product of 
 labor, in any box, case, can, or package to which or on 
 which any such counterfeit or imitation is attached, af- 
 fixed, printed, painted, stamped, or impressed, shall be 
 punished by a fine of not more than one hundred ($100)
 
 STATE TRADEMARK STATUTES. 695 
 
 dollars, or by imprisonment for not more than three 
 months; provided that any jjerson, firm, or corix)ration 
 buying, selling, or disposing of any goods, wares, mer- 
 chandise bearing said counterfeit trademark, not know- 
 ing the same to be counterfeit, shall not ]x> deemed 
 guilty under the provision of this Act. 
 
 Sec. 4. Be it further enacted, That every person, firm, 
 corporation, or association, or union of workingmen that 
 has heretofore adopted or used, or shall hereafter adopt 
 or use, any trademark mentioned and provided in Sec- 
 tion 1 of this Act, may file the same for record in the 
 office of the Secretary of State by leaving two copies, 
 counterparts ; or facsimiles thereof with said Secretary, 
 and by filing therewith a sworn application, specifying 
 the name or names of the person, firm, corix)ratibn, as- 
 sociation, or union, on whose behalf such trademark shall 
 be filed, the class of merchandise and a description of 
 the goods to which it has been, or is intended to be ap- 
 propriated, stating that the party so filing, or on whose 
 behalf such trademark shall have been filed, has the 
 right to use the same, that no other person, firm, corpo- 
 ration, association or union has the right to such use, 
 either in the identical form or in any such near resem- 
 blance thereto as may be calculated to deceive, and that 
 the facsimile or counterparts filed therewith are true and 
 correct. There shall be paid for such filing and record- 
 ing a fee of five dollars. Said Secretary shall deliver 
 to such person, finn, corporation, association, or union 
 so filing, or causing to be filed, any such trademark, so 
 many duly attested certificates of the recording of the 
 same as such person, finn, corporation, association, or 
 union may apply for, for each of which certificates said 
 Secretary shall receive a fee of one dollar. Any such cer- 
 tificates of record shall in all suits and prosecutions 
 under this Act be prima facie evidence of the adoption 
 of such trademarks. Said Secretary of State shall not 
 record for any person, firm, or corporation, association,
 
 696 APPENDIX H. 
 
 or union any trademark heretofore filed by or on behalf 
 of any other person, firm, corporation, association, or 
 imion. 
 
 Sec. 5. Be it further enacted, That any person, who 
 sliall for himself, on behalf of any other person, firm, 
 corporation, association, or union, procure the filing of 
 any trademark in the office of the Secretary of State, 
 under the provisions of this Act, by knowingly making 
 any false, or fraudulent representation or declaration 
 verbally or in writing, or by any means known to be 
 fraudulent, shall be liable to pay any damages sustained 
 in consequence of such filing, to be recovered by or on 
 behalf of the party injured thereby, in any court having 
 jurisdiction and shall be punished by a fine not exceed- 
 ing one hundred dollars or by imprisonment not exceed- 
 ing three months. 
 
 Sec. 6. Be it further efiacted, That every such person, 
 firm, corporation, association, or union, adopting or 
 using a trademark, may proceed by suit to enjoin the 
 manufacture, use, display, or sale of any counterfeits 
 or imitations thereof, and all courts of competent ju- 
 risdiction shall grant injunctions to restrain such manu- 
 facture, use, display or sale and may award tlie com- 
 plainant in any such suit, the court having jurisdiction, 
 such damages resulting from such fraudulent manu- 
 facture, use, display, or sale as may be by the court or 
 jury deemed just and reasonable; and shall require the 
 defendants to pay to such person, firm, corporation, as- 
 sociation, or union all profits derived from such wrong- 
 ful manufacture, use, display, or sale, and such court 
 shall also order that all such counterfeit or imitations 
 in the possession or under the control of any defendant 
 in such case be delivered to an officer of the court or to 
 the complainant, to be destroyed. 
 
 Sec. 7. Be it further enacted, That every person who 
 shall use or display the genuine trademark for the pur- 
 ix)se of fraud of any such person, firm, corporation, as-
 
 STATE TRADEMARK STATUTES. 697 
 
 sociation, or union, in any manner ncjt heing authorized 
 so to do by such person, linn, corporation, association, 
 or union, shall be deemed guilty of a misdemeanor, and 
 shall be punished by imprisonment for not less than 
 three months, or by a fine of not more than one hun- 
 dred dollars. In all cases where such association or 
 union is not incorporated, suits under this Act may be 
 commenced and prosecuted by an officer or member of 
 such association or union, in behalf of and for the use 
 of such association or union. 
 
 Se€. 8. Be it further enacted, That none of the pro- 
 visions of this Act shall affect or apply to persons, 
 firms, or corporations who shall in good faith buy or 
 come into possession of goods with a counterfeit trade- 
 mark thereon, when such person, firm, or corporation did 
 not know at the time he or they obtained possession of 
 such goods that the same were stamjied with a counter- 
 feit trademark; provided such person, firm, or corpora- 
 tion does not knowingly misrepresent the facts regard- 
 ing the trademark at the time he offers such goods for 
 sale. 
 
 Sec. 9. Be it further enacted, That this Act shall take 
 effect from and after its passage, the public welfare re- 
 quiring it. 
 
 Passed January 31, 1905. 
 
 W. K. Abernathy, 
 Speaker of the House of Representatives. 
 
 J. I. Cox, 
 Speaker of the Senate. 
 Approved. James B. Feazier, 
 
 Governor. 
 
 A true copy. Attest : Jno W. Morton, Secy, of State.
 
 698 APPENDIX H. 
 
 TEXAS. 
 
 General Laws 1895, Ch. 81. 
 
 AN ACT to protect persons, associations, private corporations and 
 unions of workingmen, incorporated or unincorporated, in their 
 labels, trademarks, designs, devices, imprints, and forms of adver- 
 tising and names; and to prescribe penalties for violation of 
 same, and to repeal all laws or parts of laws in conflict with this 
 act. 
 
 Section 1. That whenever any person, association, 
 private corporations or union of workingmen, incorpo- 
 rated or unincorporated, have adopted or shall hereafter 
 adopt for their protection any label, trademark, design, 
 device, imprint or form of advertisement, indicating that 
 goods to which such label, trademark, design, device, im- 
 print or form of advertisement shall be attached, were 
 manufactured by such person, association, private corpo- 
 rations or union, or by a member or members of such 
 association or union, it shall be unlawful for any per- 
 son, inclusive of ofScers, agents, i-eceiver or receivers of 
 corjoorations, to counterfeit or imitate such label, trade- 
 mark, design, device, imprint or form of advertisement 
 or to use such counterfeit or imitation of such label, 
 trademark, design, device, imprint or form of advertise- 
 ment, knowing the same to be counterfeit or imitation, 
 or to aid, assist, countenance or knowingly permit such 
 counterfeit or imitation or the use of such counterfeit 
 or imitation for his own use or benefit, or for the use 
 or benefit of any corporation of which he may then be 
 an officer, agent or receiver. Every person, whether in 
 his individual capacity or as an officer, agent or re- 
 ceiver of a corporation, violating this section, shall, upon 
 conviction, be punished by a fine of not less than twen- 
 ty-five nor more than one hundred dollars. Each day's 
 violation of this section shall be considered a separate 
 offense. 
 
 Sec. 2. Every person, whether in his individual ca-
 
 STATE TRADEMARK STATUTES. 699 
 
 pacity or as the officer, agent or receiver of a corpora- 
 tion, who shall willfully and knowingly use or display 
 the genuine label, trademark, design, device, imprint, or 
 form of advertisement, or name of any such person, as- 
 sociation or union, incorporated or unincorporated, not 
 being authorized to use or display the same, or shall 
 aid, assist, countenance or knowingly permit the use of 
 same, not being authorized to use the same, shall, upon 
 conviction, be punished by fine of not less than twenty- 
 five nor more than one hundred dollars. 
 
 Sec. 3. Every person, association or union of work- 
 ingmen, incorporated or unincorporated, having ado])ted 
 a label, trademark, design, device, imprint or foi*m of 
 advertisement, as aforesaid, may proceed by suit to en- 
 join the wrongful manufacture, use, display or sale of 
 any such label, trademark, design, device, imprint or 
 form of advertisement, and the manufacture, use, dis- 
 jjlay or sale of any such counterfeit or imitation, and all 
 courts having jurisdiction thereof shall grant injunc- 
 tions to restrain such manufacture, use, display or sale, 
 and shall award the plaintiff in such suit such damages 
 resulting from such wrongful manufacture, use, display 
 or sale as by him may have been sustained. Where such 
 association or union is not incorporated suits under this 
 act may be commenced and prosecuted by any officer or 
 member of such association or union in his own name, 
 for himself and for the use and benefit of such associa- 
 tion or union. 
 
 Sec. 4. Every person, association or union of work- 
 ingmen, incorporated or unincoi-jiorated, that has hereto- 
 fore or shall hereafter adopt a label, trademark, design, 
 device, imprint or form of advertisement, shall file the 
 same in the office of the secretary of state by leaving 
 two copies, counterparts or fo/' similes thereof, with the 
 secretary of state, and said secretary shall deliver back 
 to such person, association or union so filing the same 
 one of said copies, counterparts or fac similes, along
 
 700 APPENDIX H. 
 
 with and attached to a duly attested certificate of the 
 filing of same, for which he shall receive a fee of one 
 dollar from such person, association or union. Such cer- 
 tificate of filing shall in all suits and prosecutions under 
 this act be sufficient proof of the adoption of such label, 
 trademark, design, device, imprint or form of advertise- 
 ment, and of the right of such person, association or 
 union to adopt the same. No label, trademark, design, 
 device, imprint or form of advertisements shall be filed 
 as aforesaid that would probably be mistaken for a label, 
 trademark, design, device, imprint or form of adver- 
 tisement already of record : provided, that no person or 
 association shall be permitted to register as a label, 
 trademark, design, device, imprint or form of advertise- 
 ment, any emblem, design or resemblance thereto that 
 has been adopted or used by any charitable, benevolent 
 or religious society or association without their consent: 
 and provided, further, that all persons, institutions or 
 associations now using a label, trademark, design, de- 
 vice, imprint or form of advertisement shall have thirty 
 days' time after this act takes effect in which to file such 
 label, trademark, design, device, imprint or form of ad- 
 vertisement under the provisions of this act. before the 
 same can be registered by others. 
 
 Sec. 5. All laws and parts of laws in conflict with 
 the provisions of this act be and the same are hereby 
 repealed. 
 
 Sec. 6. It being important that the benefits of this 
 act be realized at once, because the parties to be benefited 
 by this act have no adequate protection under existing 
 laws, creates an emergency and an imperative public 
 necessity that the constitutional rule requiring bills to 
 be read on three several days be suspended, and that this 
 act take effect and be in force from and after its pas- 
 sage, and it is so enacted. 
 
 Approved April 29, 1895. 
 
 Sayles' Civ. St. Articles 318a, 318b, p. 148 relate to
 
 STATE TRADEMARK STATUTES. 701 
 
 the protection of bottles, boxes, siphons, etc., of manu- 
 facturers and dealers in mineral water and other bev- 
 erages, and manufacturers of medicines or other com- 
 pounds. 
 
 UTAH. 
 
 EEV. ST., 1898. 
 
 2720. Defined. The phrase ''trademark" as used 
 in this title includes every description of word, letter, 
 device, emblem, stamp, imjDrint, printed ticket, label, or 
 wrapper usually aflSxed by any mechanic, manufacturer, 
 diiiggist, merchant, tradesman, association, or union, 
 whether incorporated or unincor|Dorated, to denote any 
 goods to be goods imported, manufactured, produced, 
 compounded, or sold by him, or by such association or 
 union, other than any name, word, or expression gen- 
 erally denoting any goods to be of some particular class 
 or description. 
 
 2721. Recorded With Secretary of State. Any per- 
 son, association, or union, may record any trademark 
 or name by filing with the Secretary of State his or its 
 claim to the same, and a copy or description of such 
 trademark or name, with his affidavit attached thereto, 
 certified to by any officer authorized to take acknowledg- 
 ments of conveyances, setting forth that he, or the firm, 
 corporation, association, or union, of which he is a mem- 
 ber, is the exclusive owner, or agent of the owner, of 
 such trademark or name. 
 
 2722. Record Open to Public. The Secretary of 
 State must keep for public examination a record of all 
 trademarks or names filed in his office, with the date 
 when filed and name of claimant ; and must at the time 
 of filing collect from each claimant the authorized fee. 
 
 2723. Ownership, Transfer, Damages for Infringe- 
 ment. Any person who has first adopted and used a 
 trademark or name, whether within or beyond the limits
 
 702 APPENDIX H. 
 
 of this State, is its original owner. Such ownership may 
 be transferred in the same manner as personal prop- 
 erty, and is entitled to the same protection by suits at 
 laAv; and any court of competent jurisdiction may re- 
 strain, by injunction, and award damages for any use 
 of trademarks or names in violation of this title. 
 
 4482. Forging or Counterfeiting Trademark. Every 
 person wlio wilfully forges or counterfeits, or procures 
 to be forged or counterfeited, any trademark usually 
 affixed by any person, or by any association or union of 
 workingmen, to his goods, which has been recorded in 
 the office of the Secretaiy of State, with intent to pass 
 off any goods to which such forged or counterfeited 
 trademark is affixed, or intended to be affixed, as the 
 goods of such person or such association or union of 
 workingmen, is guilty of a misdemeanor. 
 
 4483. Selling Goods Be,\eing Counterfeited Trade- 
 mark. Every person who sells, or keeps for sale, any 
 goods upon or to which any counterfeited trademark has 
 been affixed, after such trademark has been recorded in 
 the office of the Secretary of State, intending to repre- 
 sent such goods as the genuine goods of another, know- 
 ing the same to be counterfeited, is guilty of a misde- 
 meanor. 
 
 4484. Forged Trademark, etc. Defined. The phrases, 
 ''forged trademark" and ''counterfeited trademark," or 
 their equivalents, as used in this chapter, include every 
 alteration or imitation of any trademark so resembling 
 the original as to be likely to deceive. 
 
 4485. "Trademark" Defined. The phrase "trade- 
 mark" as used in the three preceding sections, includes 
 every description of word, letter, device, emblem, stamp, 
 imprint, brand, printed ticket, label or wrapper, usually 
 affixed by any mechanic, manufacturer, druggist, mer- 
 chant, or tradesman, or by any association or union of 
 workingmen, to denote any goods to be goods imported, 
 manufactured, produced, compounded, or sold by him, or
 
 STATE TRADEMARK STATUTES. 703 
 
 by such association or union of workingmeu, otlier than 
 any name, word, or expression generally denoting any 
 goods to be of some particular class or description. 
 
 4486. Refilling Cask, Etc., Bearing Trademabk. 
 Every person who has or used any cask, bottle, vessel, 
 case, cover, label, or other thing bearing or having in 
 any way connected with it the duly filed trademark or 
 name of another, for the purpose of disposing with in- 
 tent to deceive or defraud, or anj^ article other than that 
 which such cask, bottle, vessel, case, cover, label, or other 
 thing originally contained or was connected with by the 
 owner of such trademark or name, is guilty of a misde- 
 meanor. 
 
 Note: The fee for registering trademark is $3.00. 
 
 VERMONT. 
 
 Laws of 1898. 
 
 Public Act No. 158. 
 AN ACT to provide for the registration of trademarks. 
 
 Section 1. Any person, partnership or corporation 
 may adopt as and for his or their trademark or trade- 
 name any particular name, term, design, device, label, 
 stamp or form of advertisement, not previously owned 
 or adopted by any other person, partnership or corpo- 
 ration, to designate or distinguish any goods, wares or 
 merchandise by him or them manufactured or prepared, 
 and may file the same for record in the office of the 
 secretary of state, by leaving two copies, counterparts 
 or fac similes thereof, with the said secretary; and shall 
 also file therewith an accurate description of such name, 
 term, design or device, label, stamp or fonn of adver- 
 tisement, verified under oath by the person or some 
 officer of the partnership or corporation by whom it is 
 filed.
 
 704 APPENDIX H. 
 
 There shall be paid for such filing the fee of two dol- 
 lars. 
 
 Said secretary shall deliver to such person, partner- 
 ship or corporation so filing the same, a duly attested 
 certificate of the record of the same, for which he shall 
 receive the fee of two dollars. Such certificate of rec- 
 ord shall in all suits and prosecutions under this act 
 be sufficient proof of the adoption of such trademark 
 or tradename. No name, term, design, device, label, 
 stamp or form of advertisement shall be recorded that 
 in any way resembles or would be reasonably mistaken 
 for a name, term, design, device, label, stamp or form 
 of advertisement already on record. 
 
 Sec. 2. The secretary of state is authorized to make 
 rules and regulations and prescribe forms for the filing 
 of names, terms, designs, devices, labels, stamps and 
 forms of advertisement under the provisions of this act. 
 
 Sec. 3. Every person who, without authority from the 
 owner of a trademark or tradename adopted and re- 
 corded as aforesaid, shall knowingly and willfully make 
 or sell any representation, likeness, similitude, copy, imi- 
 tation or counterfeit of such tradem.ark or tradename, 
 and every person who, without authority from such 
 owner, shall affix, impress or use such trademark or 
 tradename upon any goods, wares or merchandise shall 
 be punished by a fine not exceeding one thousand dol- 
 lars or by imprisonment not exceeding one year, or by 
 both said fine and imprisonment. 
 
 Sec. 4. Every person who shall knowingly and will- 
 fully sell or keep for sale any goods upon which or in 
 connection with which shall be affixed any forgery, imi- 
 tation or counterfeit of a trademark or tradename 
 adopted and recorded as aforesaid, and intended to rep- 
 resent the said goods as the genuine goods of any other 
 person, shall be punished by a fine not exceeding one 
 thousand dollars or by imprisonment not exceeding one 
 year, or by both such fine and imprisonment.
 
 STATE TRADEMARK STATUTES. 705 
 
 Sec. 5. Every person who shall, with intent to de- 
 fraud any other person, partnership or corporation, 
 knowingly affix or cause to be affixed to or upon any 
 iDackage or bottle containing any goods, wares or mer- 
 chandise any name, term, design, device, label, stamjj 
 or I'onn of advertisement, which shall designate such 
 goods, wares or merchandise, either wholly or in part 
 by a word or words, or by general design, which shall 
 be wholly or in part the same either in appearance to 
 the eye, or in sound to the ear, as the word or words 
 or the general design of any trademark or tradename 
 adopted and recorded, as provided in this act, or who 
 shall knowingly sell, or expose for sale, any such pack- 
 age or bottle with any such imitating or counterfeit 
 name, term, design, device, label, stamp or form of ad- 
 vertisement, may also be punished by imprisonment not 
 exceeding one year, or by a fine of not more than five 
 hundred dollars, or by both such fine and imprisonment. 
 
 Sec. 6. The owner of any trademark or tradename 
 adopted and recorded as provided in section 1 of this 
 act may proceed by suit to enjoin any and all other per- 
 sons, partnerships or corporations from the manufacture, 
 use or sale, without the authority of said owner, of all 
 likenesses, similitudes, co])ies, imitations or counterfeits 
 thereof, and also from selling or exposing for sale any 
 and all goods, compounds, or preparations to or with 
 which such unauthorized likeness, similitudes, coi)ies, 
 imitations or counterfeits shall be affixed or connected. 
 And all courts having jurisdiction in equity maj^ grant 
 injunctions to restrain and enjoin such manufacture, use, 
 sale and exposure for sale, and may award to the com- 
 plainant in such suit such a sum of money as shall be 
 just and reasonable compensation for the damage to the 
 reputation of the complainant's genuine goods, com- 
 pounds or preparations by reason of such wrongful man- 
 ufacture, use, sale or exposure for sale; and may also 
 require the defendant to pay to the complainant in such 
 
 45
 
 700 APPENDIX H. 
 
 suit a sum equal to the amount which the complainant 
 would have received for the same quantity of genuine 
 goods, compounds or preparations, and may also order 
 that all such likenesses, similitudes, copies, imitations or 
 counterfeits in the possession of or under the control of 
 any defendant in such case be delivered to an officer 
 of the court, or to the complainant, to be destroyed. 
 
 Approved November 22, 1898. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 Certificate accompanying a (Insert Name, Term, Design, 
 
 Device, Label, Stamp or Form of Advertisement, as the case may be.) 
 
 adopted as a (Insert Trademarlv, or Tradename, as the case 
 
 may be.) and filed in accordance with No. 158 of the Acts of 1898, 
 entitled "An act to provide for the Registration of Trademarks." 
 
 Name or names of the Persons, Partnership or Corporation 
 
 (Follow regulations below at A.) Residence, location or place of 
 
 business, class of merchandise and the particular description 
 
 of goods comprised in such class to which the (Insert Name, 
 
 Term, Design, Device, Label Stamp, or Form of Advertisement, as the 
 case may be,) has been or is intended to be appropriated (Fol- 
 low regulations below at B.) (Here insert the trademark or trade- 
 name adopted and send three extra copies, fac-similes or counterparts 
 of the trademark or name.) Length of time, if any, during which the 
 
 (Insert Name, Term, Design, Device, Label, Stamp, or Form 
 
 of Advertisement, as the case may be.) has been in use. Since 
 
 (Give Month, Day of Month and Year when adopted, or give date since 
 when in use. 
 
 REGULATIONS. 
 
 A. If a corporation, state under the laws of what State incorporated. 
 If one or more persons are doing business under a partnership name, 
 
 state the name of such person or persons and add the words "doing 
 business under the name and style of," then give the partnership name 
 under which the business is conducted. 
 
 B. State, first, as near as possible in one or two words, the gen- 
 eral class of merchandise to which the name, term, design, device, 
 label, stamp, or form of advertisement has been or is intended to be 
 appropriated; 
 
 Second, as near as possible in one or two words, the particular de-
 
 STATE TRADEMARK STATUTES. 707 
 
 scription or designation is such general class of merchandise. Do not 
 describe the composition, or name the parts which comprise the for- 
 mula of which the merchandise is composed; 
 
 Third, by using the following words: "the essential feature of the 
 (trademark, or tradename) is," giving what is considered to be the 
 essential feature or features thereof. If an illustration or pictorial 
 representation is used for a trademark, it is very desirable that a 
 word or words shall also form a part of the "essential features" of 
 such trademark; 
 
 Fourth, by using the following words, that: "The style and size of 
 type and the color of ink and paper may be varied at pleasure." 
 
 *I, do hereby declare, that (Insert the name of the 
 
 Person, Partnership, or Corporation adopting the Trademark or Trade- 
 name.) has a right to the use of the (Insert Trademark, or 
 
 Tradename, as the case may be.) referred to in the foregoing certifi- 
 cate, and that no other person, partnership or corporation has the right 
 to such use, either in the identical form or in any such near resem- 
 blance thereto as may be calculated to deceive, and I further declare 
 that the foregoing description and the fac-similes copies or counter- 
 parts filed with the foregoing certificate are true, correct and accurate. 
 
 In Witness Whereof, I have hereunto signed my name this 
 
 day of , 190 — 
 
 (Sign here.) 
 
 State of Vermont, \ss. 
 
 190— 
 
 Then personally appeared the above-named and made oath 
 
 that the foregoing declaration by him subscribed is true. 
 Before me. 
 
 (Here write official title.) 
 
 * If a person, insert name; if an ofl5cer of a partnership or corpora- 
 tion. Insert name, title of office, and name of the partnership or corpo- 
 ration. Outside of Vermont, oath should be administered by a Com- 
 missioner for Vermont or Notary Public, with seal.
 
 708 APPENDIX H. 
 
 VIRGINIA. 
 
 Act of April 30, 1903. 
 
 AN ACT to protect persons, firms, corporations, associations, or unions 
 of workingmen in the use of their labels, trademarks, terms, de- 
 signs, devices, and forms of advertisements, and to provide for 
 the registry thereof. Approved April 30, 1903. 
 
 1. Be it enacted by the General Assembly of Virginia, 
 That whenever any person, firm, corporation, or any as- 
 sociation or union of workingmen has heretofore adopted 
 or used, or shall hereafter adopt or use, any label, trade- 
 mark, term, design, device, or form of advertisement for 
 the purpose of designating, making known, or distin- 
 guishing any goods, wares, merchandise, or other prod- 
 uct of labor, as having been made, manufactured, pro- 
 duced, prepared, packed, or put on sale by such person, 
 firm or corporation, or association, or union of work- 
 ingmen, by a member or members of such association 
 or union, and has filed the same for registry as herein- 
 after provided, it shall be unlawful to counterfeit or 
 imitate such label, trademark, term, design, device or 
 form of advertisement, or to use, sell, offer for sale or 
 in any way utter or circulate any counterfeit or imita- 
 tion of any such label, trademark, tenn, design, device 
 or form of advertisement. 
 
 2. "Whoever counterfeits or imitates any such regis- 
 tered label, trademark, term, design, device, or form of 
 advertisement, or knowingly and with intent to deceive, 
 sells, offers for sale, or in any way utters or circulates 
 any counterfeit or imitation of any such registered label, 
 trademark, term, design, device, or form of advertise- 
 ment, or knowingly and with intent to deceive, keeps, or 
 has in his possession, with the intent that the same shall 
 be sold or disposed of, any goods, wares, merchandise, 
 or other product of labor to which, or on which, any
 
 STATE TRADEMARK STATUTES. 709 
 
 such counterfeit or imitation is printed, painted, stamped 
 or impressed; or knowingly and with intent to deceive, 
 knowingly sells or disposes of any goods, wares, mer- 
 chandise or other product of labor contained in any box, 
 case, can, or package to which, or on which, any such 
 counterfeit or imitation is attached, affixed, printed, 
 painted, stamped or impressed, or knowingly and with 
 intent to deceive, keeps or has in his possession with 
 intent that the same shall be sold or disposed of, any 
 goods, wares, merchandise, or other product of labor in 
 any box, case, can, or package to which, or on which, 
 any such counterfeit or imitation is attached, affixed, 
 printed, painted, stamped or impressed, shall be pun- 
 ished by a fine of not more than one hundred dollars, 
 or by imprisonment for not more than three months. 
 All such applications for registry shall be made on 
 forms prescribed by the secretary of the Commonwealth, 
 and any person applying to the secretary of the Com- 
 monwealth for a certificate of registry of any label, 
 trademark, term, design, device or fonn of advertise- 
 ment, shall furnish to the said secretaiy a copy fac- 
 simile, or counterpart thereof. 
 
 3. Ever\^ such person, firm, corporation, association 
 or union that has heretofore adopted or used, or shall 
 hereafter adopt or use a label, trademark, term, design, 
 device, or form of advertisement, as provided in section 
 one of this act, may file the same for registry in the 
 office of the Secretary of the Commonwealth by leaving 
 six copies, counterparts, or fac-similes thereof, with the 
 said secretary, and by filing herewith a sworn applicar- 
 tion, specifying (1) the name or names of the person, 
 firm, corporation, association or union, on whose behalf 
 such label, trademark, term, design, de\dce, or form of 
 advertisement shall be filed; (2), the class of merchan- 
 dise and the description of the goods to which it has 
 been, or is intended to be appropriated, stating that the 
 party so filing, or on whose behalf such label, trade-
 
 710 APPENDIX H. 
 
 mark, term, design, device, or form of advertisement 
 shall be filed, has a right to use the same; (3), that no 
 other person, firm, association, nnion or corporation has 
 the right to such use, either in the identical form or in 
 any such near resemblance thereto as may be calculated 
 to deceive, and (4), that the fac-simile or counterparts 
 filed therewith are true and correct. There shall be paid 
 for such filing and registry to the secretary of the Com- 
 monwealth a fee of two dollars and fifty cents. Said 
 secretary shall deliver to such person, firm, corporation, 
 association, or union so filing, or causing to be filed, any 
 such label, trademark, teiTii, design, device, or form of 
 advertisement, so many duly attested certificates of the 
 registry of the same as such person, firm, corporation, 
 association, or union may apply for, for each of which 
 certificates said secretary shall receive a fee of two dol- 
 lars and fifty cents. Any such certificate of registry 
 shall in all suits and prosecutions under this act be suf- 
 ficient proof of the adoption and registry of such label, 
 trademark, term, design, device, or form of advertise- 
 ment. Said secretaiy of the Commonwealth shall not 
 record for any person, firm, corporation, union, or as- 
 sociation any label, trademark, design, term, device, or 
 form of advertisement that would probably be mistaken 
 for any label, trademark, term, design, device or form 
 of advertisement heretofore filed by or on behalf of any 
 other person, firm, corporation, union or association. 
 
 4. Any person who shall for himself, or on behalf of 
 any other person, firm, corporation, association, or union, 
 procure the filing and registry of any label, trademark, 
 term, design, or form of advertisement in the office of 
 the secretary of the Commonwealth, under the provisions 
 of this Act, by making any false or fraudulent repre- 
 sentations or declaration verbally or in writing, or by 
 any fraudulent means, shall be liable to pay any dam- 
 ages sustained in consequence of any such filing, to be 
 recovered by or on behalf of the party injured thereby,
 
 STATE TRADEMARK STATUTES, 711 
 
 in any court having jurisdiction, and shall be i)unished 
 by a fine not exceeding one hundred dollars or by im- 
 prisonment not exceeding three months. 
 
 5. Every such person, firm, corporation, association, 
 or union, which has adopted and registered a label, 
 trademark, term, design, device, or form of advertise- 
 ment as aforesaid, may proceed by suit to enjoin the 
 manufacture, use, display, or sale of any counterfeits or 
 imitations thereof, and all courts of competent jurisdic- 
 tion shall grant injunctions to restrain such manufacture, 
 use, display, or sale, as may be by the said court deemed 
 just and reasonable, and shall require the defendants to 
 pay to such person, firm, corporation, association, or 
 union, all profits derived from such wrongful manu- 
 facture, use, display, or sale; and such court shall also 
 order that any such counterfeits or imitations in the 
 possession, or under the control of any defendant in 
 such cause be delivered to an officer of the court, or to 
 the complainant, to be destroyed. 
 
 6. Ever}^ person who shall use or display the genuine 
 registered label, trademark, term, design, device, or fonn 
 of advertisement, of any such person, finn, corporation, 
 association or union in any manner, not being authorized 
 so to do by such person, firm, cor^ooration, union, or as- 
 sociation, shall be deemed guilty of a misdemeanor, and 
 shall be punished by imprisonment for not more than 
 three months, or by a fine of not more than one hundred 
 dollars. In all cases where such association, or union, 
 is not incorporated, suits under this act may be com- 
 menced and prosecuted by an officer, or member of as- 
 sociation or union, on behalf of, and for the use of, such 
 association or union. 
 
 7. Any person, or persons, who shall in any way use 
 the name or seal of any such person, firm, corjioration, 
 association, or union, or officer thereof, in and about the 
 sale of goods, or otherwise, not being authorized to so 
 use the same, shall be guilty of a misdemeanor, and shall
 
 712 APPENDIX H. 
 
 be punishable by imprisonment for not more than three 
 months, or by a fine of not more than one hundred dol- 
 lars. 
 
 8. This act shall take effect and be in force from and 
 after its passage. 
 
 FORM OF APPLICATION FOR REGISTRATION. 
 
 To the Secretary of the Commonwealth of Virginia: 
 
 (Name and Address) in whose name and behalf this application 
 for the registry in the State of Virginia, of the label, trademark, term, 
 design, device or form of advertising hereinafter indicated is made, 
 in order to secure to the applicant the exclusive use of the same for 
 the purpose of designating, making known and distinguishing the 
 articles hereinafter described, do declare, that: 
 
 The name of the applicant in whose name and behalf this registry 
 is made, is as above set forth: 
 
 The applicant has heretofore adopted and used, and has the right to 
 use, said label, trademark, design, device or form of advertising, for 
 the purpose of designating, making known or distinguishing the articles 
 hereinafter designated, and that no other person, firm, association, 
 union or corporation, has the right to such use, either in the identical 
 form, or in any such near resemblance thereto as may be calculated 
 to deceive. 
 
 The class of articles, and the description thereof, to which such 
 label, trademark, term, design, device or form of advertising is ap- 
 propriated, are the following, to-wit: (Insert fac-simile or coun- 
 terpart of trademark or label.) 
 
 The fac-simile or counterpart herewith filed is true and correct. 
 
 Witness the following signature this, the day of 19C — ■ 
 
 State of of ss. 
 
 I, a notary public for the of , in the State afore- 
 said, do hereby certify that (If officer of corporation or partner so 
 
 state) this day personally appeared before me in my and State 
 
 aforesaid and made oath that the statements contained in the fore- 
 going writing bearing date on the day of , 190 — , are true 
 
 and that he is duly authorized to make this oath. 
 
 Given under my hand and oflEicial seal, this, the day of , 
 
 190—
 
 STATE TRADEMARK STATUTES. 713 
 
 WASHINGTON. 
 
 Nichols, "Existing Corporation Laws of the State of Washington," 
 
 1905. page 160. 
 
 1. Counterfeiting Trademarks Prohibited. When- 
 ever any person, or any association or union of work- 
 ingmen has heretofore adopted or used, or shall here- 
 after adopt or use, and has filed as hereinafter provided 
 any label, trademark, term, design, device or form of 
 advertisement for the purpose of designating, making 
 known, or distinguishing any goods, wares, merchandise 
 or other product of labor, as having been made, manu- 
 factured, produced, prepared, packed or put on sale by 
 such person or association or union of workingmen or by 
 a member or members of such association or union, it 
 shall be unlawful to counterfeit or imitate such label, 
 trademark, term, design, device or form of advertise- 
 ment, or to use, sell, offer for sale, or in any way utter 
 or circulate any counterfeit or imitation of any such 
 label, trademark, term, design, device or form of adver- 
 tisement. 
 
 2. Penalty. ^Vlioever counterfeits or imitates any 
 such label, trademark, term, design, device or form of 
 advertisement, or sells, offers for sale, or in any way 
 utters or circulates any counterfeit or imitation of any 
 such label, trademark, term, design, device or foiTii of 
 advertisement; or keeps or has in his possession, with 
 intent that the same shall be sold or disposed of, any 
 goods, wares, merchandise or other product of labor to 
 which or on which any such counterfeit or imitation is 
 printed, painted, stamped or impressed; or knowingly 
 sells or disposes of any goods, wares, merchandise or 
 other product of labor contained in any box, ease, can 
 or package, to which or on which any such counterfeit 
 or imitation is attached, affixed, printed, painted, stamped
 
 71-1 APPENDIX H. 
 
 or impressed ; or keeps or has in his possession, with in- 
 tent that the same shall be sold or disposed of, any 
 goods, wares, merchandise or other product of labor, in 
 any box, cases, can or package, to which or on which 
 any such counterfeit or imitation is attached, affixed, 
 printed, painted, stamped or impressed, shall be pun- 
 ished by a fine of not more than one hundred dollars, or by 
 imprisonment for not more than three months. 
 
 3. Filing and Eecoeding. Every such person, asso- 
 ciation or union, that has heretofore adopted or used, 
 or shall hereafter adopt or use, a label, trademark, term, 
 design, device or form of advertisement, as provided in 
 section one of this act, may file the same for record in 
 the office of the Secretary of State by leaving two copies, 
 counterparts or fac-similes thereof, with said Secretary, 
 and by filing therewith a sworn application specifying the 
 name or names of the person, association or union on 
 whose behalf such label, trademark, term, design, device 
 or form of advertisement shall be filed, the class of mer- 
 chandise, and a description of the goods to which it has 
 been, or is intended to be appropriated, stating that the 
 party so filing, or on whose behalf such label, trademark, 
 term, design, device or form of advertisement shall be 
 filed, has the right to the use of the same, that no other 
 person, firm, association, union or corporation has the 
 right to such use either in the identical form or in any 
 such near resemblance thereto as may be calculated to 
 deceive, and that the fac-simile or counterparts filed 
 therewith are true and correct. There shall be paid, for 
 such filing and recording, a fee of five dollars. Said 
 Secretary shall deliver to such person, association or 
 union so filing or causing to be filed any such label, 
 trademark, term, design, device or form of advertise- 
 ment, so many duly attested certificates of the record- 
 ing of the same as such person, association or union 
 may apply for, for each of which certificates said 
 Secretary shall receive a fee of two dollars. Any
 
 STATE TRADEilARK STATUTES. 715 
 
 such certificate of record shall, in all suits and pros- 
 ecutions under this act, be sufficient proof of the 
 adoption of such label, trademark, tenn, design, de- 
 vice or fonn of advertisement. Said Secretary of 
 State shall not record for any person, union or asso- 
 ciation, any label, trademark, term, design, device or 
 form of advertisement that would probably be mistaken 
 for any label, trademark, term, design, device or form 
 of advertisement theretofore filed by or on behalf of any 
 other person, union or association. 
 
 4. Fraudulent Filing, etc.— Penalty. Any person 
 who shall, for himself or on Ijehalf of any other person, 
 assQciation or union, procure the filing of any label, 
 trademark, term, design or form of advertisement in 
 the office of the Secretary of State, under the provisions 
 of this act, by making any false or fraudulent representa- 
 tions or declaration, verbally or in writing, or by any 
 fraudulent means, shall be liable to pay any damages 
 sustained in consequence of any such filing, to be re- 
 covered by or on behalf of the party injured thereby, 
 in any court having jurisdiction, and shall be punished 
 by a fine not exceeding one hundred dollars or by im- 
 prisonment not exceeding three months. 
 
 5. Enjoin Use, etc. Every such person, association 
 or union adopting or using a label, trademark, term, de- 
 sign, device or form of advertisement as aforesaid, may 
 proceed by suit to enjoin the manufacture, use, display 
 or sale of any counterfeits or imitations thereof, and all 
 courts of competent jurisdiction shall grant injunctions 
 to restrain such manufacture, use, display or sale, and 
 may award the complainant in any such suit damages 
 resulting from such manufacture, use, sale or display, 
 as may be by the said court deemed just and reasonable, 
 and shall require the defendants to pay to such person, 
 association or union all profits derived from such wrong- 
 ful manufacture, use, display or sale; and such court 
 shall also order that all such counterfeits or imitations in 
 the possession or under the control of any defendant in
 
 716 APPENDIX H. 
 
 sucli cause be delivered to an officer of the court, or to 
 the complainant to be destroyed. 
 
 6. Penalty for Unaut'horized Use. Every person 
 who shall use or display the genuine label, trademark, 
 term, design, device or form of advertisement of any 
 such person, association or union in any manner, not 
 being authorized so to do by such person, union or asso- 
 ciation, shall be deemed guilty of a misdemeanor, and 
 shall be jDunished by imprisonment for not more than 
 three months, or by a fine of not more than one hundred 
 ($100) dollars. In all cases where such association or 
 union is not incorporated, suits under this act may be 
 commenced and prosecuted by an officer or member of 
 such association or union on behalf of and for the use 
 of such association or union. 
 
 7. Penalty for Use of Name or Seal. Any person 
 or persons who shall, in any way, use the name or seal 
 of any such person, association or union or officer 
 thereof, in and about the sale of goods or otherwise, not 
 being authorized to so use the same, shall be guilty of a 
 misdemeanor, and shall be punishable by imprisonment 
 for not more than three months, or by a fine of not 
 more than one hundred dollars. 
 
 8. Penalty for Defacing or Removing Trademark, 
 etc. Any person using the trademark so adopted and 
 filed by any such person, or any imitation of such trade- 
 mark, or any counterfeit thereof; or who shall, in any 
 manner mutilate, deface, destroy or remove such trade- 
 mark from any goods, wares, merchandise, article or 
 articles, or from any package or packages containing 
 the same, or from any empty or second hand package 
 which has contained the same or been used therefor, with 
 the intention of using such empty or second hand pack- 
 age, or of the same being used to contain goods, wares, 
 merchandise, article or articles of the same general char- 
 acter as those for which they were first used; and any 
 person who shall use any such empty or second hand
 
 STATE TRADEMARK STATUTES. 717 
 
 package for the purpose aforesaid, without the consent 
 in writing of the person whose trademark was first ap- 
 plied thereto or placed thereon shall, upon conviction 
 thereof, be fined in any sum not less than one hundred 
 dollars, or by imprisonment for not more than three 
 months, and the goods, wares, merchandise, article or 
 articles, contained in any second hand package or pack- 
 ages shall be forfeited to the original user of such pack- 
 age or packages whose trademark was first applied 
 thereto or placed thereon. The violation of any of the 
 above provisions as to each particular article or package 
 shall be held to be a separate offense. 
 
 9. "Pekson" Defined. The word "person" in this 
 act shall be construed to include a person, co-partner- 
 ship, corporation, association or union of workingmen. 
 
 Where the mark in litigation has not been registered 
 under § 3621, Ballinger's Annotated Codes, the sufl&ciency 
 of a complaint for the infringement of the mark must 
 be adjudged upon the principles of common law. 
 
 Woodcock V. Guy, 33 Wash., 234, 74 Pac. Rep. 358. 
 
 WEST VIRGINIA. 
 
 ACT of 1901. 
 AN ACT providing for the protection of union labels and trademarks. 
 
 1. Whenever any person, firm or corporation, or any 
 association or union of workingmen, has heretofore 
 adopted or used, or shall hereafter adopt or use, any 
 label, trademark, term, design, device or form of adver- 
 tisement for the use of designating, making known, or 
 distinguishing any goods, wares, merchandise or other 
 product of labor, as having been made, manufactured, 
 produced, prepared, packed or put on sale, by such jier- 
 son, firm, corporation or association or union of work- 
 ingmen, or by a member or members of such association
 
 718 APPENDIX H. 
 
 or union, and sliall register the same as provided in sec- 
 tion three of this act, it shall be unlawful to knowingly 
 counterfeit or imitate such label, trademark, term, de- 
 sign, device or form of advertisement, or to knowingly 
 use, sell, offer for sale, or in any way utter or circulate 
 any counterfeit or imitation of any such label, trademark, 
 term, design, device or form of advertisement. 
 
 2, Whoever so knowingly counterfeits or imitates any 
 such registered label, trademark, term, design, device or 
 form of advertisement; or knowingly sells, or offers for 
 sale, or in any way utters or circulates any counterfeit 
 or imitation of any such registered label, trademark, 
 term, design, device or form of advertisement; or know- 
 ingly keeps or has in his possession, with intent that 
 the same shall be sold or disposed of, any goods, wares, 
 merchandise or other product of labor to which or on 
 which any such counterfeit or imitation is printed, 
 l^ainted, stamped or impressed; or knowingly sells or 
 disposes of any goods, wares, merchandise or other pro- 
 duct of labor contained in any box, case, can or package 
 to which or on which any such counterfeit or imitation 
 is attached, affixed, printed, painted, stamped or im- 
 pressed or knowingly keeps or has in his possession, 
 with intent that the same shall be sold or disposed of, 
 any goods, wares, merchandise or other product of labor 
 in any box, case, can or package, to which or on which 
 any such counterfeit or imitation is attached, affixed, 
 printed, stamj^ed or impressed, shall be punished by a 
 fine of not more than five hundred dollars or by impris- 
 onment for not more than three months, or by both such 
 fine and imprisonment. 
 
 3. Every such person, firm, corporation, association or 
 union that has heretofore adopted or used, or shall here- 
 after adopt or use, a label, trademark, term, design, de- 
 vice or form of advertisement as provided in section one 
 of this act, shall register the same by filing the same for 
 record in the office of the secretary of state by leaving 
 
 I
 
 STATE TRADEMARK STATUTES. 719 
 
 two copies, counterparts or fac-similes thereof, with said 
 secretary and by filing therewith a sworn application 
 specifying the name or names of the person, association 
 or union on whose behalf such lal^el, trademark, term, 
 design, device or form of advertisement, shall be filed; 
 the class of merchandise and a description of the goods 
 to which it has been or is intended to be approjjriated, 
 stating that the party so filing, or on whose behalf such 
 label, trademark, term, design, device or form of adver- 
 tisement shall be filed, has the right to use the same; 
 that no other person, firm, association union or corpora- 
 tion has the right to such use, either in the identical 
 form or in any such near resemblance thereto as may 
 be calculated to deceive, and that the fac-similes or coun- 
 teqiarts filed therewith are true and correct. There shall 
 be paid for such filing and recording a fee of one dollar. 
 Said secretary shall deliver to such person, association, 
 or union, so filing or causing to be filed any such label, 
 trademark, term, design, device or form of advertisement 
 so many duly attested certificates of the recording of 
 the same as such person, finn, corporation, association or 
 union may apply for, for each of which certificates said 
 secretary shall receive a fee of one dollar. Any such 
 certificates of record shall in all suits and prosecutions 
 under this act be sufficient proof of the adoption of such 
 labels, trademarks, terms, designs, devices or forms of 
 advertisement. Said secretary of state shall not record 
 for any person, union or association, any label, trade- 
 mark, term, design, device or form of advertisement, 
 that would probably be mistaken for any label, trade- 
 mark, term, design, device or form of advertisement 
 theretofore filed by or on behalf of any other person, 
 firm, corporation, union or association. But the said sec- 
 retary shall file and record under this act any label, 
 trademark, term, design, device or form of advertise- 
 ment, which may have been previously filed by any per- 
 son, firm, corporation or any association or union of
 
 720 APPENDIX H. 
 
 workingmen, provided the person, firm, corporation, as- 
 sociation or union seeking to file and record under this 
 act is the same person, firm, corporation, association or 
 union that previously filed or recorded the same label, 
 trademark, tenn, design, device or form of advertise- 
 ment. 
 
 4. Any person who shall for himself, or on behalf of 
 any other person, firm, corporation, association or union, 
 procure the filing of any label, trademark, tenn, design 
 or form of advertisement, in the office of the secretary of 
 state under the provisions of this act, by making any 
 known false or fraudulent representations, or declara- 
 tions, verbally or in writing, or by any fraudulent means, 
 shall be liable to pay any damages sustained in conse- 
 quence of any such filing to be recovered by or on behalf 
 of the party injured thereby in any court having juris- 
 diction, and shall be punished by a fine not exceeding 
 five hundred dollars or by imprisonment not exceeding 
 three months, or by both such fine and imprisonment. 
 
 5. Ever}" such person, firm, corporation, association 
 or union adopting or using any such registered label, 
 trademark, term, design, device or form of advertise- 
 ment, as aforesaid, may proceed by suit for damages to 
 enjoin the manufacture, use, display or sale of any coun- 
 terfeits or imitations thereof, and all courts of compe- 
 tent jurisdiction shall grant injunctions to restrain such 
 manufacture, use, display or sale, and award the com- 
 plainant in any such suit damages resulting from such 
 manufacture, use, sale or display, as may be by the said 
 court deemed just and reasonable, and shall require the 
 defendants to pay such person, association or union, all 
 profits derived from such wrongful manufacture, use, 
 sale or display; and such court shall also order that all 
 such counterfeits or imitations in the possession or under 
 the control of any defendant in such cause be delivered 
 to an ofiicer of the court, or to the complainant, to be de- 
 stroyed.
 
 STATE TRADEMARK STATUTES, 721 
 
 6. Every person, firm, corporation or union, who shall 
 knowingly use or dispay the genuine label, trademark, 
 term, design, device or form of advertisement of any 
 such person, firm, corporation, association or union when 
 registered as aforesaid, in any manner, not being author- 
 ized so to do by such person, finu, cori)oration, associa- 
 tion or union, shall be deemed guilty of a misdemeanor 
 and shall be punished by imprisonment for not more than 
 three months or by a fine of not more than three hun- 
 dred dollars. In all cases where such association or 
 union is not incorporated suits under this act may be 
 commenced and prosecuted by any officer or member of 
 such association or union on behalf of and for the use 
 of such association or union. 
 
 7. Any person, firm, corporation, association, or union, 
 who shall in any way knowingly use the name or seal of 
 any such person, firm, corporation, association or union, 
 or officer thereof, in and about the sale of goods or other- 
 wise, not being authorized to so use the same, shall be 
 guilty of a misdemeanor and shall be punished by im- 
 prisonment for not more than three months or by a fine 
 of not more than five hundred dollars. 
 
 8. Nothing contained in this act shall be construed as 
 affecting or impairing any right or remedy at law or in 
 equity now existing for the j^rotection of any label, 
 trademark, term, design, device or form of advertise- 
 ment, whether or not the same is registered under the 
 provisions hereof. 
 
 The Act of 1882 relates to timber trade. 
 
 Another Act of 1889 relates to the protection of persons 
 and corporations engaged in manufacturing and selling 
 mineral waters, malt liquors and other beverages. 
 
 46
 
 722 APPENDIX H. 
 
 WISCONSIN. 
 
 ACT of MAY 13, 1901. 
 
 CHAPTER 360. 
 
 AN ACT to provide for registration of trademarks and other marks of 
 ownership and to prevent the unlawful use and disposal of articles 
 marked therewith. 
 
 Section 1. Filing of description ivitli secretary of 
 state; publication of; fees.— Any and all persons or cor- 
 porations who may be the owners of cans, tubs, firkins, 
 boxes, bottles, casks, barrels, kegs, cartons, tanks, foun- 
 tains, vessels or containers with his, her, its or their 
 names, brands, designs, trademarks, devices, or other 
 marks of ownership stamped, impressed, labelled, blown 
 in or otherwise marked thereon, may file with the secre- 
 tary of state and also with the register of deeds of any 
 county in which any such person or persons or corpora- 
 tions may have his, her, its or their principal place of 
 business, a written statement or description verified by 
 afiidavit of such owner or his, her, or its agent, of the 
 names, brands, designs, trademarks, devices or other 
 marks of ownership so used by him, her, it or them, and 
 of the said article or articles upon which the same are 
 used, or if such principal place of business shall be with- 
 out the state, then such written statement or description 
 so verified may be filed with the register of deeds of any 
 county of this state. Said statement shall be published 
 once a week for three successive weeks in a newspaper 
 printed in the English language and of general circula- 
 tion in said county, a copy of which publication, proved 
 in the same manner as proof of publication is now re- 
 quired to be made by law, when no special mode of 
 proving the same is provided, shall also be filed with 
 the secretary of state and with such register of deeds. 
 All such written statements or descriptions and all such 
 certificates of publication so filed with the register of
 
 STATE TRADEMARK STATUTES. 723 
 
 deeds shall be recorded at large by him in a book to be 
 kept by him, and such book shall be subject at all rea- 
 sonable hours to the inspection of all persons who may 
 choose to inspect the same. The secretary of state and 
 the register of deeds shall deliver to any person who 
 may apply therefor copies of all such w^ritten statements 
 or descriptions of names, brands, designs, trademarks, 
 devices, or other marks of ownership and of all certifi- 
 cates of publication so filed with them, duly certified to 
 by them in the usual manner, and such certified copies 
 shall be admissible in evidence in all prosecutions under 
 this act, and shall be prima facie evidence that the pro- 
 visions of this section have been complied with, and of 
 the title of the owner or owners named therein, to the 
 property upon which the name, brand, design, trademark, 
 device or other marks of ownership of such owner or 
 owners may appear as described therein. The secretary 
 of state and the register of deeds shall each receive a 
 fee of one (1) dollar for each statement and certificate 
 of publication filed and also a fee of one (1) dollar for 
 each certified copy of such statement and certificate 
 of publication, to be paid for by the person filing or ap- 
 plying for the same. 
 
 Sec. 2. Sale of receptacle hy other than oirtier pro- 
 hibited.— It is hereby declared to be unlawful for any 
 person or persons or corporation without the written 
 consent of the owner or owners thereof, to hereafter keep 
 for sale any can, tub, firkin, box, bottle, cask, barrel, keg, 
 carton, tank, fountain, vessel or container so marked or 
 distinguished as aforesaid, of which a description shall 
 have been filed and published as provided in section 1 of 
 this act, or to use or fill with any similar substance, com- 
 modity or product as originally contained therein for the 
 sale of such substance, commodity or product, any such 
 can, tub, firkin, box, bottle, cask, barrel, keg, carton, 
 tank, fountain, vessel or container or to receive, take, 
 buy, sell, or dispose of or trafiic in any such can, tub,
 
 724 APPENDIX H. 
 
 firkin, bottle, box, cask, barrel, keg, carton, tank, foun- 
 tain, vessel or container, or to deface, erase, obliterate, 
 cover up or otherwise remove or conceal any such name, 
 brand, design, trademark, device or other mark thereon, 
 for the purpose of destroying or removing the evidence 
 of the ownership of such article. 
 
 Sec. 3. Use of receptacle by other than owner; as to 
 junk dealers.— The using by any person or persons or 
 corporation other than the owner or owners thereof, or 
 his, her, its or their agent, of any such can, tub, firkin, 
 box, bottle, cask, barrel, keg, carton, tank, fountain, vessel 
 of container, for the sale therein of any substance, commo- 
 dity or i^roduct, other than that originally therein con- 
 tained, or the buying, selling, or trafficking in any such 
 can, tub, firkin, box, bottle, cask, barrel, keg, carton, tank, 
 fountain, vessel or container, or the fact that any junk 
 dealer or dealers in cans, tubs, firkins, boxes, bottles, 
 casks, barrels, kegs, cartons, tanks, fountains, vessels or 
 containers, shall have in his or her possession any such 
 can, tub, firkin, box, bottle, cask, barrel, keg, carton, tank, 
 fountain, vessel or container, so marked or stamped, and 
 a description of which shall have been filed and pub- 
 lished as provided in section 1 of this act, shall be, and 
 it hereby is, declared to be, prima facie evidence that 
 such using, buying, selling or trafficking in or possession 
 of is unlawful within the meaning of this act. 
 
 Sec. 4. Forfeiture for violation. — Any person or per- 
 sons or corporation or any officer or agent of any cor- 
 poration acting for or in the name of such corporation 
 who shall violate any of the provisions of this act, shall 
 forfeit not less than five dollars ($5.00) nor more than 
 fifty dollars ($50.00) for the first offense, and not less 
 than fifty dollars ($50.00) nor more than two hundred 
 dollars ($200.00) for each subsequent offense. All for- 
 feitures collected under the provisions of this act shall be 
 paid into the common school fund. 
 
 Sec. 5. Rights of oivner to injunction. — Every such
 
 STATE TRADEMARK STATUTES. 725 
 
 person or corporation having complied with the pro- 
 visions of this act as aforesaid, may proceed hy suit to 
 enjoin any other person or corporation from filing [fill- 
 ing] with any substance, commodity or product for the 
 sale therein of such substance, commodity or product any 
 can, tub, firkin, box, bottle, cask, barrel, keg, carton, 
 tank, fountain, vessel or container, so marked or distin- 
 guished as aforesaid, or from buying, selling, using, or 
 disposing of or trafficking in the same, or from defacing, 
 erasing, obliterating, covering up or otherwise removing 
 any such name, brand, design, trademark, device or other 
 marks or ownership thereon, for the purpose of destroy- 
 ing or removing the evidence of the ownership of such 
 article, and all courts having equity jurisdiction shall 
 have power to grant injunctions according to the course 
 and principles of courts of equity, to restrain such filing 
 [filling] for sale or such buying, selling, giving away, 
 using or disposing of, or trafficking in or such defacing, 
 erasing, obliterating, covering up, or otherwise removing 
 or the violation of any right acquired under the provis- 
 ions of this act, and upon a decree being rendered in any 
 such case against the defendant, the complainant shall 
 be entitled to recover the damages the complainant may 
 have sustained by reason of the said acts of the defen- 
 dant and the court shall assess the same or cause the 
 same to be assessed under its direction. 
 
 Sec. 6. This act shall take effect and be in force from 
 and after its passage and publication.
 
 726 APPENDIX n. 
 
 WYOMING. 
 
 Revised Statutes, 1899. 
 
 Section 2526. Any person, association or union may- 
 adopt a label, trademark, stamp or form of advertise- 
 ment not previously owned or adopted by any other per- 
 son, association or union, and may file the same for rec- 
 ord in the office of the secretary of state, by leaving two 
 copies, counterparts or fac-similes thereof, with said sec- 
 retaiy; and shall file therewith a certificate specifying 
 the name or names of the person, association or union 
 so filing such label, trademark, stamp or form of adver- 
 tisement, his or its residence, location or place of busi- 
 ness, the class of merchandise and the particular descrip- 
 tion of goods comprised in such class to which it has 
 been or is intended to be appropriated, and the length of 
 time, if any, during which it has been in use. Such cer- 
 tificate shall be accompanied by a written declaration, 
 verified under oath by the person or some officer of the 
 association or union by whom it is filed, to the effect that 
 the party so filing such label, trademark, stamp or form 
 of advertisement has a right to the use of the same, and 
 that no other person, firm, association, union or corpora- 
 tion has the right to such use, either in the identical form 
 or in any such near resemblance thereto as may be calcu- 
 lated to deceive, and that the fac-similes, copies or coun- 
 terparts filed therewith are true and correct. There 
 shall be paid for such filing the fee of five dollars. Said 
 secretary shall deliver to such person, association or 
 union so filing the same a duly attested certificate of the 
 record of the same, for which he shall receive the fee of 
 five dollars. Such certificate of record, shall in all suits 
 and prosecutions under this act, be sufficient proof of the 
 adoption of such label, stamp, trademark or form of ad- 
 vertisement. No label, trademark, stamp or form of
 
 STATE TRADEMARK STATUTES. 727 
 
 advertisement shall be recorded that would reasonably 
 be mistaken for a label, trademark, stamp or form of 
 advertisement already on record. 
 
 Sec. 2527. The secretary of state is autliorizod to 
 make rules and regulations, and preserilje forms for the 
 filing of labels, trademarks and forms of advertisement 
 under the provisions of this act. 
 
 Sec. 2528. Tlie owner of any such label, trademark^ 
 stamp or form of advertisement recorded as provided in 
 section one of this act, may proceed by suit to enjoin the 
 manufacture, use or sale of any such counterfeits or imi- 
 tations, and all courts having jurisdiction thereof to 
 grant injunctions to restrain such manufacture, use or 
 sale, and will award the complainant in such suit such 
 damages resulting from such wrongful manufacture, use 
 or sale as may by said court be deemed just and reason- 
 able, and shall require the defendant to pay to such per- 
 son, association or union the profits derived from such 
 wrongful manufacture, use or sale; and such court may 
 also order that all such counterfeits or imitations in the 
 possession or under the control of any defendant in such 
 case be delivered to an officer of the court, or to the com- 
 plainant, to be destroyed. In all cases where such asso- 
 ciation or union is not incorporated, suits under this act 
 may be commenced and prosecuted by an officer of such 
 association or union, on behalf of and for the use of 
 such association or union, and eveiy member of such 
 association or union shall be liable for costs in any such 
 proceedings. 
 
 Sec. 2529. Eveiy person who, without authority from 
 the owner of a label, trademark, stamp or form of adver- 
 tisement recorded as aforesaid, shall make or use any 
 counterfeit or imitation of such lalwl, trademark, stamp 
 or form of advertisement, knowing the same to be coun- 
 terfeit or imitation, and every person who, without au- 
 thority from such owner, shall affix, impress or use such 
 label, trademark, stamp or form of advertisement upon
 
 728 APPENDIX H. 
 
 any goods shall be punished by a fine not exceeding two 
 hundred dollars, or by imprisonment not exceeding one 
 year, or by both such fine and imprisonment. 
 
 Sec. 2530. Every person who shall sell goods upon 
 which such label, trademark, stamp or form of advertise- 
 ment recorded as aforesaid, or any counterfeit or imita- 
 tion thereof, shall be unlawfully impressed, affixed or 
 used, shall be punished by a fine not exceeding two hun- 
 dred dollars, or by imprisonment not exceeding one year, 
 or by both such fine and imprisonment, unless such per- 
 son shall show that at the time such goods came into his 
 possession he did not know that the impression, affixing 
 or use of such label, trademark, stamp or form of adver- 
 tisement was unlawful. 
 
 Sec. 2531. In any suit or prosecution under the pro- 
 visions of this act the defendant may show that he or it 
 was the owner of such label, trademark or form of ad- 
 vertisement, prior to its being filed under the provisions 
 of this act, and that it has been filed wrongfully or with- 
 out right by some other person, association or union. 
 
 Sec. 2532. This act shall not be construed as to apply 
 to brands, marks or tags on live stock.
 
 I 
 
 APPENDIX I. 
 
 CANADIAN TRADEMARK AND DESIGN ACT. 
 Revised Statutes, 1886. 
 CHAPTER 63. 
 
 SHORT TITLE. 
 
 1. This act may be cited as '^The Trademark and De- 
 sign Act." 42 v., c. 22, s. 40. 
 
 APPLICATION OF ACT. 
 
 2. Sections three to twenty-one of this act, both in- 
 clusive, apply only to trademarks, and sections twenty- 
 two to thirty-eight, both inclusive, apply only to indus- 
 trial designs. 42 V., c. 23, s. 37. 
 
 TRADEMARKS. 
 
 3. All marks, names, brands, labels, packages or other 
 business devices, which are adopted for use by any j>er- 
 son in his trade, business, occupation or calling, for the 
 purpose of distinguishing any manufacture, product or 
 article of any description manufactured, produced, com- 
 pounded, packed or offered for sale by him— applied in 
 any manner whatever either to such manufacture, pro- 
 duct or article, or to any package, parcel, case, box or 
 other vessel or receptacle of any description whatsoever 
 containing the same, shall for the pui'pose of this act, 
 be considered and known as trademarks, and may be 
 registered for the exclusive use of the person registering 
 the same in the manner herein provided; and thereafter 
 such person shall have the exclusive right to use the 
 same to designate articles manufactured or sold by him: 
 
 729
 
 730 APPENDIX 1. 
 
 2. Timber or lumber of any kind upon which labour 
 has been ex^Deuded by any person in his trade, business, 
 occupation or calling, shall, for the purposes of this act, 
 be deemed a manufacture, product or article. 42 V., c. 
 22, s. 8. 
 
 4. A trademark may be general or specific, according 
 to the use to which it is applied or intended to be applied 
 by the proprietor thereof: 
 
 {a.) A general trademark is one used in connection 
 with the sale of various articles in which the proprietor 
 deals in his trade, business, occupation or calling gener- 
 ally; 
 
 {h.) A specific trademark is one used in connection 
 with the sale of a class of merchandise of a particular 
 description. 42 V., c. 22, s. 9. 
 
 5. A register of trademarks shall be kept at the De- 
 l^artment of Agriculture, in which any proprietor of a 
 trademark may have the same registered, on complying 
 with the provisions of this act. 42 V., c. 22, s. 1. 
 
 6. The Minister of Agriculture may, from time to 
 time, subject to the approval of the Governor in 
 Council, make rules and regulations and adopt forms for 
 the purposes of this act, as respects trademarks; and 
 such rules, regulations and forms circulated in print, for 
 the use of the public, shall be deemed to be correct for 
 the purposes of this act; and all documents executed 
 according to the same and accepted by the Minister, shall 
 be deemed to be valid so far as relates to official proceed- 
 ings under this act. 42 V., c. 22, s. 2. 
 
 7. The Minister of Agriculture may cause a seal to be 
 made for the purposes of this act; and may cause to be 
 sealed therewith trademarks and other instruments, and 
 copies of such trademarks and other instruments, pro- 
 ceeding from his office in relation to trademarks. 42 V., 
 c. 22, s. 3. 
 
 8. The proprietor of a trademark may have it regis- 
 tered on forwarding to the Minister of Agriculture, to-
 
 CANADIAN TR.U)EMARK AND DESIGN ACT. 731 
 
 gether with the fee hereinafter mentioned, a drawing and 
 description in duijlicate of such trademark, and a decla- 
 ration that the same was not in use to his knowledge by 
 any other person than himself at the time of his adop- 
 tion thereof. 42 V., c. 22, s. 6. 
 
 9. Every proprietor of a trademark who applies for 
 its registration shall state in his application whether the 
 said trademark is intended to be used as a general trade- 
 mark or as a specific trademark. 42 V., c. 22, s. 11. 
 
 10. Before any action is taken in relation to an appli- 
 cation for registering a trademark, the following fees 
 shall be paid to the Minister of Agriculture, that is to 
 say:— 
 
 On every application to register a general trademark, including 
 
 certificate $30 00 
 
 On every applicaiton to register a specific trademark, including 
 
 certificate 25 00 
 
 On every application for the renewal of the registration of a spe- 
 cific trademark, including certificate 20 00 
 
 For copy of each certificate of registration, separate from the re- 
 turn of the duplicate 1 00 
 
 For the recording of an assignment 2 00 
 
 For office copies of documents, not above mentioned, for every 
 
 hundred words or for a fraction thereof 50 
 
 For each copy of any drawing or emblematic trademark, the rea- 
 sonable expenses of preparing the same, — 
 
 And such fees shall be paid over by the Minister of 
 Agriculture to the Minister of Finance and Receiver 
 General : 
 
 2. If the Minister of Agriculture refuses to register 
 the trademark for which application is made, the fee 
 shall be returned to the applicant or his agent,— less the 
 sum of five dollars, which shall be retained as compensa- 
 tion for office exi:)enses. 42 V., c. 22, s. 12. 
 
 11. The Minister of Agriculture may refuse to regis- 
 ter any trademark in the following cases: — 
 
 {a.) If he is not satisfied that the applicant is un- 
 doubtedly entitled to the exclusive use of such trade- 
 mark ;
 
 732 APPENDIX I. 
 
 (b.) If the trademark proposed for registration is 
 identical with or resembles a trademark already regis- 
 tered ; 
 
 (c.) If it appears that the trademark is calculated to 
 deceive or mislead the public; 
 
 (d.) If the trademark contains any immorality or scan- 
 dalous figure; 
 
 (e.) If the so-called trademark does not contain the 
 essentials necessary to constitute a trademark, properly 
 speaking. 
 
 2. The Minister of Agriculture may, however, if he 
 thinks fit, refer the matter to the Exchequer Court of 
 Canada, and in that event such court shall have juris- 
 aiction to hear and determine the matter, and to make an 
 order determining whether and subject to what condi- 
 tions, if any, registration is to be permitted. 54-55 V., 
 e. 35. 
 
 12. The Exchequer Court of Canada may on the infor- 
 mation of the Attorney-General, or at the suit of any 
 person aggrieved by any omission, without sufficient 
 cause, to make any entry in the registry of trademarks, 
 or by an entry made therein without sufficient cause, 
 make such order for making, expunging or varying the 
 entry as the court thinks fit, or the court may refuse 
 the application, and in either case may make such order 
 with respect to the costs of the proceedings as the court 
 thinks fit: 
 
 2. The said court may, in any proceeding, under this 
 section, decide any question that may be necessary or 
 expedient to decide for the rectification of such register: 
 
 3. The registered proprietor of any registered trade- 
 mark may apply to the Exchequer Court of Canada for 
 leave to add to or alter such mark in any particular, not 
 being an essential particular, and the court may refuse 
 or grant leave on such terms as it may think fit: 
 
 4. Notice of any intended application to the court 
 under the last preceding sub-section of this section shall
 
 CAN2U)IAN TRADEMARK AND DESIGN ACT. 733 
 
 be given to the Minister of Agriculture, and he shall be 
 entitled to be heard on the ai)plication : 
 
 5. A certified copy of every order of the court for the 
 making, expunging or vaiying of any entry in the reg- 
 ister of trademarks, or for adding to or altering any 
 registered trademark shall be transmitted to the Minister 
 of Agriculture by the registrar of the court, and such 
 register shall thereupon be rectified or altered in con-* 
 formity with such order, or the purport thereof shall 
 otherwise be duly entered in the register, as the case 
 may be. 54-55 V., c. 35. 
 
 13. On compliance with the requirements of this act 
 and of the rules hereinbefore provided for, the Minister 
 of Agriculture shall register the trademark of the pro- 
 prietor so applying, and shall return to the said proprie- 
 tor one copy of the drawing and description with a cer- 
 tificate signed by the Minister or the deputy of the Min- 
 ister of Agriculture to the effect that the said trademark 
 has been duly registered in accordance with the provis- 
 ions of this act; and the day, month and year of the 
 entry of the trademark in the register shall also be set 
 forth in such certificate; and every such certificate, pur- 
 porting to be so signed, shall be received in all courts in 
 Canada as prima facie e\'idence of the facts therein al- 
 leged without proof of the signature. 42 V., c. 22, s. 7. 
 
 14. A general trademark once registered and destined 
 to be the sign in trade of the proprietor thereof shall en- 
 dure without limitation: 
 
 2. A specific trademark, when registered, shall endure 
 for the term of twenty-five years, but may be renewed 
 before the expiration of the said tenn by the proprietor 
 thereof, or by his legal representative, for another term 
 of twenty-five years, and so on from time to time; but 
 every such renewal shall be registered before the expira- 
 tion of the current term of twenty-five years. 42 V., c. 
 22, s. 10. 
 
 15. Any person who has registered a trademark may
 
 734 APPENDIX I. 
 
 petition for the cancellation of the same, and the Minis- 
 ter of Agriculture may, on receiving such petition, cause 
 the said trademark to be so cancelled ; and the same shall, 
 after such cancellation, be considered as if it had never 
 been registered under the name of the said person. 42 
 v., c. 22, s. 13. 
 
 16. Eveiy trademark registered in the office of the 
 Minister of Agriculture, shall be assignable in law; and 
 on the assignment being produced, and the fee herein- 
 before prescribed being paid, the Minister shall cause 
 the name of the assignee, with the date of the assign- 
 ment and such other details as he sees fit, to be entered 
 on the margin of the register of trademarks on the folio 
 where such trademark is registered. 42 V., c. 22, s. 14. 
 
 17. Every person, other than the person who has reg- 
 istered the trademark, who marks any goods or any ar- 
 ticle of any description whatsoever, with any trademark 
 registered under the j^rovisions of this act, or with any 
 IDart of such trademark, whether by applying such trade- 
 mark or any part thereof to the article itself, or to any 
 package or thing containing such article, or by using any 
 package or thing so marked which has been used by the 
 proprietor of such trademark, or who knowingly sells or 
 offers for sale any article marked with such trademark, 
 or with any part thereof, with intent to deceive and to 
 induce any person to believe that such article was manu- 
 factured, produced, compounded, packed or sold by the 
 proprietor of such trademark, is guilty of a misde- 
 meanor, and liable, for each offence, to a fine not exceed- 
 ing one hundred dollars and not less than twenty dol- 
 lars,— which fine shall be paid to the proprietor of such 
 trademark, together with the costs incurred in enforcing 
 and recovering the same: 
 
 2, Every complaint under this section shall be made 
 by the proprietor of such trademark, or by some one 
 acting on his behalf and thereunto duly authorized. 42 
 v., c. 22, s. 16.
 
 CANADLVN TR.VDEMABK AND DESIGN ACT. 735 
 
 18. An action or suit may be maintained by any pro- 
 prietor of a trademark against any person who uses his 
 registered trademark, or any fraudulent imitation there- 
 of, or who sells any article bearing such trademark or 
 any such imitation thereof, or contained in any package 
 being or purporting to be his, contrary to the provisions 
 of this act. 42 V., c. 22, s. 17. 
 
 19. No person shall institute any proceeding to pre- 
 vent the infringement of any trademark, unless such 
 trademark is registered in pursuance of this act. 42 V., 
 c. 22, s. 4, part. 
 
 20. Any person may be allowed to inspect the register 
 of trademarks; and the Minister of Agriculture may 
 cause copies or representations of trademarks to be de- 
 livered, on the applicant for the same paying the fee or 
 fees hereinbefore prescribed. 42 V., c. 22, s. 18. 
 
 21. Clerical errors which occur in the drawing up or 
 copying of any instrument, under the preceding sections 
 of this act, shall not be construed as invalidating the 
 same, and when discovered they may be corrected under 
 the authority of the Minister of Agriculture. 42 V., c. 
 22, s. 19. 
 
 INDUSTRIAL DESIGNS. 
 
 22. The Minister of Agriculture shall cause to be 
 kept a book to be called "Tlie Register of Industrial 
 Designs." in which any proprietor of a design may have 
 the same registered on depositing with the Minister a 
 drawing and description in duplicate of such design, to- 
 gether with a declaration that the same was not in use, 
 to his knowledge, by any other person than himself at 
 the time of his adoption thereof; and the Minister, on 
 receii^t of the fee hereinafter jirovided, shall cause such 
 design to be examined to ascertain whether it resembles 
 any other design already registered ; and if he finds that 
 such design is not identical with, or does not so closely 
 resemble any other design already registered as to be
 
 736 APPENDIX I. 
 
 confounded therewith, he shall register the same, and 
 shall return to the proprietor thereof one copy of the 
 drawing and description, with a certificate signed by the 
 Minister or the deputy of the Minister of Agriculture, 
 to the effect that such design has been duly registered in 
 accordance with the provisions of this act ; and such cer- 
 tificate shall also set forth the day, month and year of 
 the entry thereof in the proper register; and every such 
 certificate purporting to be so signed shall, without proof 
 of the signature, be received in all courts in Canada as 
 prima facie evidence of the facts therein alleged. 42 V., 
 c. 22, s. 20. 
 
 23. The Minister of Agriculture may, from time to 
 time, subject to the approval of the Governor in Council, 
 make rules and regulations and adopt forms for the pur- 
 i^oses of this act, as respects industrial designs, and such 
 rules, regulations and forms circulated in print for the 
 use of the public, shall be deemed to be correct for the 
 purposes of this act ; and all documents executed accord- 
 ing to the same, and accepted by the Minister, shall be 
 deemed to be valid so far as relates to official proceed- 
 ings under this act. 42 V., c. 22, s. 21. 
 
 24. Every design in order to be protected, shall be 
 registered before publication; and after registration the 
 name of the proprietor, who shall be a resident of Can- 
 ada, shall appear upon the article to which his design 
 applies, if the manufacture is a woven fabric, by being 
 marked upon one end thereof, together with the letters 
 "Ed."; and if the manufacture is any other substance, 
 the letters ''Ed.," with the year of the registration, shall 
 be marked at the edge or upon any convenient part 
 thereof : 
 
 2. The mark may be put upon the manufacture by 
 making it on the material itself, or by attaching thereto 
 a label containing the proper marks. 42 V., c. 22, s. 23. 
 
 25. The author of the design shall be considered the 
 proprietor thereof, unless he has executed the design for
 
 CANADIAN TRADEMARK AND DESIGN ACT. 737 
 
 another person, for a good or valuable consideration— 
 in which case such other person shall be considered the 
 proprietor, and shall alone be entitled to register it ; but 
 his right to the property shall only be co-extensive with 
 the right which he has acquired. 42 V., c. 22, s. 24. 
 
 26. Before any action is taken in relation to an appli- 
 cation for registering an industrial design, the following 
 fees shall be paid to the Minister of Agriculture, that 
 is to say: — 
 
 On every application to register a design, including certificate $5 00 
 
 On every application for an extension of time, including certifi- 
 cate, for each year of such extension 2 00 
 
 For a copy of each certificate of registration, separate from the 
 
 return of the duplicate 1 00 
 
 For the recording of an assignment 2 00 
 
 For office copies of documents, not above mentioned, for every 
 
 hundred words or for a fraction thereof 50 
 
 For each copy of any drawn copy of an industrial design, the 
 reasonable expense of preparing the same: 
 
 And such fees shall be paid over by the Minister of 
 Agriculture to the Minister of Finance and Receiver 
 General : 
 
 2. If the Minister of Agriculture refuses to register 
 the industrial design in respect of which application is 
 made, the fee shall be returned to the applicant or his 
 agent, less the sum of two dollars,— which shall be re- 
 tained as compensation for office expenses. 42 V., c. 22, 
 s. 36. 
 
 27. The Minister of Agriculture may refuse to regis- 
 ter such designs as do not appear to him to be within the 
 provisions of this act, or any design which is contrary to 
 public morality or order— subject to appeal to the Gov- 
 ernor in Council. 42 V., c. 22, s. 34. 
 
 28. On the copy returned to the person registering, 
 a certificate shall be given, signed by the Minister of 
 Agriculture or the deputy of the Minister of Agriculture, 
 showing that the design has been registered, the date of 
 registration, the name of the registered proprietor, his 
 
 47
 
 738 APPENDIX I. 
 
 address, the number of such design, and the number or 
 letter employed to denote or correspond to the registra- 
 tion,— which said certificate, in the absence of proof to 
 the contrary, shall be sufficient proof of the design, of 
 the name of the proprietor, of the registration, of the 
 commencement and term of registry, of the i)erson 
 named as proprietor being proprietor, of the originality 
 of the design, and of compliance with the provisions of 
 this act: and generally the writing purporting to be so 
 signed shall be received as prima facie evidence of the 
 facts therein stated, without proof of the signature. 42 
 v., c. 22, s. 32. 
 
 29. The exclusive right acquired for an industrial 
 design by the registration of the same as aforesaid shall 
 be valid for the term of five years, but may be renewed 
 at or before the expiration of the said term of five years, 
 for a further period of five years or less, on payment of 
 the fee hereinbefore prescribed, so as that the whole 
 duration of the exclusive right shall not exceed ten years 
 in all. 42 V., c. 22, s. 22. 
 
 30. Every design shall be assignable in law, either as 
 to the whole interest or any undivided part thereof, by 
 an instrument in writing, which shall be recorded in the 
 office of the Minister of Agriculture, on payment of the 
 fees hereinbefore provided; and every proprietor of a 
 design may grant and convey an exclusive right, under 
 any copyright, to make, use and vend, and to grant to 
 others the right to make, use and vend such design, 
 within and throughout Canada, or any part thereof, for 
 the unexpired term of its duration, or any part thereof,— 
 which exclusive grant and conveyance shall be called a 
 license, and shall be recorded in the same manner and 
 within the same delay as assignments. 42 V., c. 22, s. 25. 
 
 31. During the existence of the exclusive right 
 (whether it is of the entire or partial use of such de- 
 sign), no person shall, without the license in writing of 
 the registered proprietor, or of his assignee, as the case
 
 CAN^VDIAN TR.\J)EMARK AND DESIGN ACT. 739 
 
 may be, apply such design, or a fraudulent imitation 
 thereof, to the ornamenting of any article of manufac- 
 ture, or other article to which an industrial design may 
 be applied or attached, for the i)urposes of sale, or shall 
 publish, sell or expose for sale or use any such article 
 as. aforesaid, to which such design or fraudulent imita- 
 tion thereof has been applied; and every one who vio- 
 lates the provisions of this section shall forfeit a sum 
 not exceeding one hundred and twenty dollars, and not 
 less than twenty dollars, to the proprietor of the design, 
 which shall be recoverable, with costs, on summary con- 
 viction, by the registered proprietor or his assignee. 42 
 v., c. 22, s. 26. 
 
 32. Every person who places the word "registered," 
 or the letters **Rd.," upon any article for which no de- 
 sign has been registered, or upon any article for the 
 design of which the copyright has expired, or who adver- 
 tises the same for sale as a registered article, or unlaw- 
 fully sells, publishes or exposes for sale such article, 
 knowing' the same to have been fraudulently marked, or 
 that the copyright therefor has expired, shall, for each 
 offence, on summary conviction, be liable to a penalty 
 not exceeding thirty dollars and not less than four dol- 
 lars, which shall be recoverable, with costs, by any per- 
 son who sues for the same ; and a moiety of such penalty 
 shall belong to the prosecutor, and the other moiety to 
 Her Majesty, for the public uses of Canada. 42 V., c. 
 22, s. 27. 
 
 33. The Exchequer Court of Canada shall, in respect 
 of the register of industrial designs, have jurisdiction in 
 a like proceeding and manner as hereinbefore provided in 
 respect of the register of trademarks, to make orders 
 for the making, expunging or varying any entry in such 
 register of industrial designs, or for adding to or alter- 
 ing any industrial design. 54-55 V., c. 35. 
 
 34. The Minister of Agriculture shall, after due ser- 
 vice of such order and pajTnent of the fee hereinbefore
 
 740 APPENDIX I. 
 
 provided, cause such alteration to be made in the regis- 
 ter respecting industrial designs as is directed by the 
 order made under the next preceding section. 42 V., c. 
 22, s. 30. 
 
 35. A suit may be maintained by the proprietor of 
 any design for the damages he has sustained by the ap- 
 plication or imitation of the design, for the purpose of 
 sale, against any person so offending— if the offender 
 was aware that the proprietor of the design had not 
 given his consent to such application. 42 V., c. 22, s. 28. 
 
 36. All proceedings under the preceding sections of 
 this act, respecting industrial designs, shall be brought 
 within twelve months from the commission of the offence, 
 and not afterwards; and none of the provisions of the 
 said sections shall apply to protect any design which 
 does not belong to a person resident within Canada, and 
 which is not applied to a subject matter manufactured 
 in Canada. 42 V., c. 22, s. 31. 
 
 37. Any person may be allowed to inspect the regis- 
 ter of industrial designs; and the Minister of Agricul- 
 ture may cause copies or representations of industrial 
 designs to be delivered, on the applicant for the same 
 paying the fee which is deemed sufficient for the purpose 
 of having the same copied or represented. 42 V., c. 22, 
 s. 33. 
 
 38. Clerical errors which occur in the drawing up or 
 copying of any instrument respecting an industrial de- 
 sign, shall not be construed as invalidating the same, but, 
 when discovered, they may be corrected under the au- 
 thority of the Minister of Agriculture. 42 Y., c. 22, s. 35.
 
 CANADIAN TRiU)EMARK AND DESIGN ACT, 741 
 
 RULES AND FORMS OF THE DEPARTMENT OF 
 
 AGRICULTURE RESPECTING "THE 
 
 TRADEMARK AND DESIGN ACT." 
 
 APPROVED BY THE GOVERNOR IN COUNCIL, ON THE 9tH OF 
 
 MAY, 1887. 
 
 GENERAL RULES. 
 
 L 
 
 Tliere is no necessity for any personal appearance at 
 the Department of Agriculture, unless specially called 
 for by order of the Minister or the Deputy, every trans- 
 action being carried on by writing. 
 
 n. 
 
 In every case the applicant or depositor of any paper 
 is responsible for the merits of his allegations and of 
 the validity of the instruments furnished by him or his 
 agents. 
 
 m. 
 
 The correspondence is carried on with the applicant, 
 or with the agent who has remitted or transmitted the 
 papers to the office, but with one person only. 
 
 TV. 
 
 All papers are to be clearly and neatly written on fools- 
 cap paper and every word of them is to be distinctly 
 legible, in order that no difficulty should be met with in 
 the taking cognizance of and in the registering and 
 copying them.
 
 742 APPENDIX I. 
 
 V. 
 
 All communications to be addressed in the following 
 words:— To the Minister of Agriculture, (Trademark 
 and Copyright Branch), Ottawa. 
 
 VI. 
 
 As regards proceedings not specially provided for in 
 the following forms, any form being conformable to the 
 letter and spirit of the law will be accepted, and if not 
 so conformable will be returned for correction. 
 
 VII. 
 
 A copy of the Act and the Eules with a particular sec- 
 tion marked, sent to any person making an inquiry, is 
 intended as a respectful answer by the office. 
 
 TRADEMARKS. 
 
 vin. 
 
 An application for the registration of a General Trade- 
 mark shall be made in duplicate after the following 
 form :— 
 
 To the Minister of Agriculture, 
 
 {Trademark and Copyright Branch), 
 Ottawa. 
 
 I, {name of person) of the {City, Town or other locality, as the 
 case may he), in {name of County, Province or State, as the case may 
 he), hereby furnish a duplicate copy of a General Trademark, in ac- 
 accordance with Sections 4 and 9 of "The Trademark and Design Act," 
 which I verily believe is mine, on account of having been the first to 
 make use of the same {or on account of having acquired it from, 
 naming the person, whom I verily believe to he the original proprietor 
 thereof). 
 
 The said General Trademark consists {here must he inserted a
 
 CANADIAN TRADEMARK AUD DESIGN ACT. 743 
 
 description of the Trademark, recital of the Motto or Mottoes, dc, dc, 
 in order to explain the pattern furnished), and I hereby request the 
 said General Trademark to be registered in accordance with the law. 
 
 I forward herewith the fee of |30, in accordance with Section 10 of 
 the said Act. 
 
 In testimony thereof, I have signed in the presence of the two un- 
 dersigned witnesses, at the place and date hereunder mentioned. 
 
 (Place and date.) (Signature of Proprietor.) 
 
 Signature of the two witnesses 
 
 ) 
 
 IX. 
 
 An application for the registration of a Specific Trade- 
 mark shall be made in duplicate, after the following 
 form:— 
 
 To the Minister of Agriculture, 
 
 {Trademark and Copyright Branch), 
 Ottawa. 
 
 I, {name of person) of the {City, Town or other locality, as the case 
 may be), in {name of County, Province or State, as the case may be), 
 hereby furnish a duplicate copy of a Specific Trademark, to be applied 
 to the sale of {description of the class of Merchandise), in accordance 
 with Sections 4 and 9 of "The Trademark and Design Act," which I 
 verily believe is mine, on account of having been the first to make use 
 of the same {or on account of having acquired it from, naming the 
 person, whom I verily believe to be the original proprietor thereof). 
 
 The said Specific Trademark consists (here must be inserted a 
 description of the Trademark, recital of the Motto or Mottoes, dc, dc, 
 in order to explain the pattern furnished), and I hereby request the 
 said Specific Trademark to be registered in accordance with the law. 
 
 I forward herewith the fee of $25, in accordance with Section 10 of 
 the said Act, 
 
 In testimony thereof, I have signed, in the presence of the two 
 undersigned witnesses, at the place and date hereunder mentioned. 
 
 {Place and date.) (Signature of Proprietor.) 
 
 Signature of the two witnesses. [•
 
 744 APriiNDlX 1. 
 
 INDUSTRIAL DESIGNS. 
 
 X. 
 
 An application for the registration of an Industrial De- 
 sign shall be made in duplicate, after the following 
 form: — 
 
 To the Minister of Agriculture, 
 
 (Trademark and Copyright Branch), 
 Ottawa. 
 
 I, {name of the person) being a resident of Canada, and now resid- 
 ing in the (City, Town or other locality, as the case may he), in the 
 (name of the Province, as the case may be), hereby declare that I 
 am the proprietor of the Industrial Design of which duplicate copies 
 are herewith forwarded, and which consists (here insert a description 
 of the design, and an explanation of its use), and I hereby request 
 that the said Industrial Design be registered in accordance with the 
 law. 
 
 I forward herewith the fee of $5, in accordance with Section 26 of 
 "The Trademark and Design Act." 
 
 In testimony thereof, I have signed, in the presence of the two un- 
 dersigned witnesses, at the place and date hereunder mentioned. 
 
 (Place and date.) (Signature of the Proprietor.) 
 
 Signature of the two witnesses 
 
 •1 

 
 CANADIAN TEADEMAEK AND DESIGN ACT. 745 
 
 NOTICE. 
 
 The correspondence with the Department is carried 
 through the Canadian Mail, free of postage. 
 
 The foi-warding of any paper should always be accom- 
 panied by a letter, and a separate letter should be writ- 
 ten in relation to each distinct subject. 
 
 It is particularly recommended that reference should 
 be made to the law, before writing on any subject to the 
 Department in order to avoid unnecessaiy explanations 
 and useless loss of time and labor: and it is also recom- 
 mended, in every case, to have the papers and drawings 
 prepared by a competent person, for the interest both of 
 the applicant and of the public service. 
 
 A sufficient margin should be left on every paper, and 
 specially on specifications and assignments, for the in- 
 sertion of references or certificates, and for the affixing 
 of the seal thereto. 
 
 It must be remembered that the better the papers are 
 executed, the sooner the work is despatched at the office, 
 and the surer the regularity of the proceedings is guar- 
 anteed.
 
 
 APPENDIX J. 
 
 FOEMS OF BILLS AND: ANSWERS. 
 
 DECLARATION. 
 
 (Warner v. Roehr, Fed. Case No. 17189A.) 
 
 In the Circuit Court of the United States in and for the 
 Northern District of Illinois. 
 
 HULBEBT H. Wabner, trading and 
 doing business under the name 
 and style of H. H. Waenee & Co., 
 vs. 
 Fbank Roehb. 
 
 No. 18765. 
 
 Case. Damages, $25,000. 
 
 H. H. W., a citizen of the state of New York, trading and doing busi- 
 ness under the firm name and style of H. H. W. & Co., at the city of 
 Rochester, in the county of Monroe, in said state of New York, plaintiff, 
 by W. H. B. and J. F. L., his attorneys, complains of F. R., a citizen of 
 the state of Illinois, and residing and doing business at the city of Chi- 
 cago, in the county of Cook, in the said state of Illinois and in the dis- 
 trict aforesaid, defendant, of a plea of trespass on the case. 
 
 For that whereas, the said plaintiff shows that for several years last 
 past he has been engaged, at the said city of Rochester, in the manu- 
 facture and sale of a certain medicinal preparation known as "War- 
 ner's Safe Kidney and Liver Cure," which preparation has become 
 widely known through the domain of commerce, and especially in all 
 parts of the United States, as a valuable medicine for various kinds of 
 diseases of human beings. 
 
 That in the introduction of said medicinal preparation, and to bring 
 it to the attention of the public, he expended in advertising the sum of 
 about five hundred thousand dollars ($500,000), and in various ways 
 has expended enormous sums of money to that end; that for a better 
 protection of his right as proprietor, manufacturer and vendor of said 
 medicine he has caused peculiar bottles to be manufactured to contain 
 the same, which bottles have blown into the glass thereof the name of 
 said medicine, and which name contains a word-symbol, to wit, the 
 word "Safe," as the essential element of a trade mark, and also the 
 symbolic "trademark" consisting of the representation of a fire-proof 
 safe; which said "trademark" is his sole property, no other person, 
 firm or corporation having a right to the use of the same, either in the 
 
 746
 
 FORMS OP BILLS AND ANSWERS. 747 
 
 identical form or in any such near resemblance thereto as might be cal- 
 culated to deceive, nor to affix to medicine or merchandise of substan- 
 tially the same descriptive properties as his medicine aforesaid. 
 
 That being the owner of said "trademark," by virtue of priority of 
 adoption, in connection with said medicine, this plaintiff caused the 
 same to be recorded in the Patent Office of the United States, with a 
 statement specifying his name, domicile, location and citizenship; the 
 class of merchandise and the particular description of goods com- 
 prised in the class to which the particular "trademark" had been 
 appropriated by him; also a description of the "trademark" itself with 
 fac-similes thereof, and a statement of the mode in which the same is 
 applied and affixed to goods and the length of time during which the 
 said "trademark" has been used by him for the purpose aforesaid. 
 
 Plaintiff further shows that he paid into the trea.sury of the United 
 States the sum of twenty-five dollars ($25.00) and complied with the 
 regulations prescribed by the commissioner of patents as provided in 
 the act of congress entitled "An act to authorize the registration of 
 trademarks and protect the same," approved March 3, 1881, as will more 
 fully appear by reference to the certificate of registry of said trade- 
 mark, numbered 9597, dated the 8th day of August, 1882, signed by E. 
 M. Marble, commissioner of patents, and attested by the seal of the 
 Department of the Interior, which certificate is hereto attached and 
 made part of this declaration. 
 
 Plaintiff further shows that said "trademark" is applied and affixed 
 to goods by blowing it in the glass, as aforementioned, and by printing 
 it on paper, which in the form of labels is afterwards pasted on the 
 bottles containing the medicine, and it is also printed on wrappers, or 
 otherwise affixed to packages to be used in any manner calculated to 
 notify purchasers of the contents and to guard against fraud. 
 
 This plaintiff shows that he is the sole owner by right of priority of 
 adoption and use of a certain other trademark consisting of a fac- 
 simile of his firm signature, "H. H. Warner & Co.," which said latter- 
 mentioned "trademark" is printed on a separate label, and pasted over 
 the cork of each bottle, after the same has been filled with said medi- 
 cine. 
 
 Plaintiff further shows that he is the sole owner by right of priority 
 of adoption and use of a certain other trademark entitled "Book of 
 $2,000.00 Prize Enigmas," containing the representation of a man, rep- 
 resenting a botanist standing beside a palm tree examining a plant 
 through a magnifying glass, and other matters not necessary to be here 
 mentioned, all the same being printed on the cover of a pamphlet. 
 
 Plaintiff further shows that he is the sole owner by right of priority 
 of adoption and use of a certain other trademark representing the front 
 of a fire-proof safe, in the central part of which is shown a negro, on 
 one knee gathering herbs, above whom are the words, "Warner's Safe," 
 and below him are the words, "Kidney and Liver Cure." 
 
 Plaintiff further shows that for the purpose of guarding against 
 fraudulent imitations of his said medicine, and to authenticate the
 
 748 APPENDIX J. 
 
 genuineness of goods of his manufacture, he caused, and still causes, 
 each bottle of the same to have wrapped about it a pamphlet bearing 
 his said trademarks with loose circulars between the leaves of said 
 pamphlet, and wrapped about the same another printed circular, print- 
 ed in several different languages; which said pamphlet contained a 
 great many testimonials of the intrinsic value of said medicine as a 
 remedy for various diseases and disorders, and also fac-similes of the 
 signatures of the signers of said testimonials; and said pamphlet con- 
 taining, among other matters, a great many enigmas for the solution of 
 which large prizes were offered by the plaintiff. That as a further 
 precaution against fraud, and as a means of identification, the said 
 medicine is packed in wooden boxes, which boxes contain each one 
 dozen bottles of plaintiff's medicine labeled and wrapped as aforesaid, 
 and bearing upon one side of the boxes the following printed words: 
 "One Dozen Warner's Safe Kidney and Liver Cure, Manufactured by H. 
 H. Warner & Co., Rochester, N.^Y." 
 
 And the said plaintiff further shows that he has ever since the dates 
 of the adoption of the said trademarks been and now is solely entitled 
 to all the rights, interests and privileges thereby so secured unto him; 
 and that the said medicine with the accompanying trademark has been 
 extensively introduced to public use, and that large quantities thereof, 
 to wit, several millions of bottles, have been purchased and consumed 
 by the public for which he has received several millions of dollars, and 
 that he would but for the wrongful acts of the said defendant, Frank 
 Roehr, have made further large gains, profits and advantages from the 
 manufacture and sale of said medicine. And plaintiff further shows 
 
 that heretofore, to wit, on or about the day of October, A. D. 1883, 
 
 at the city of Chicago, in the district aforesaid, the said defendant 
 Frank Roehr, well knowing the premises, and the rights and privileges 
 theretofore secured unto him the said plaintiff, and in order to deprive 
 him of his profits, benefits and advantages which might and otherwise 
 should and would have accrued to him at the said district, and else- 
 where, unlawfully, unjustly, and wrongfully simulated the various 
 aforesaid trademarks, circulars, labels, wrappers, packages and boxes, 
 in which said genuine medicine of this plaintiff has been put up for 
 the purposes of commerce, and for the purpose of carrying into execu- 
 tion his nefarious enterprise in that respect, the said defendant, F. R., 
 employed large capital, and a large number of assistants, including 
 printers, electrotypers, photographers, and other persons skilled in the 
 arts necessary for the accomplishment of his unlawful purpose afore- 
 said, and did make exact representations of the genuine trademarks, 
 labels, etc., hereinbefore described, so closely resembling the genuine 
 as to be calculated to deceive purchasers, and which in many instances 
 did actually deceive purchasers, who supposed that they were buying 
 the genuine medicine manufactured as aforesaid by this plaintiff, when 
 in fact the simulated packages contained only a base fluid, colored to 
 resemble the genuine medicine of the plaintiff. 
 
 Plaintiff further shows that said defendant, F. R., manufactured
 
 FORMS OP BILLS AND ANSWERS. 749 
 
 large quantities of packages made in exact representation of this plaint- 
 iff's genuine packages and containing inside thereof the simulated 
 labels, wrappers, etc., hereinbefore described, and bottles filled with a 
 fluid purporting to be this plaintiff's genuine medicine, but which in 
 fact was not so, but only a base imitation thereof, and offered for sale 
 at the district aforesaid and elsewhere, and did sell large quantities of 
 the same, all of which said wrongful acts of said defendant, F. R., were 
 done without the knowledge, consent or acquiescence of the said plaint- 
 iff, and with the intent to injure and defraud him. to the damage of 
 this plaintiff of twenty-five thousand dollars ($25,000), and therefore he 
 brings this suit. 
 
 W. H. B., 
 J. F. L.. 
 Plaintiff's Attorneys. 
 Indorsed: Filed Dec. 6, 1883, Wm. H. Bradley, Clerk. 
 
 BILL OF COMPLAINT. 
 
 (Taylor v. Carpenter, 3 Story, 458.) 
 
 To the Judges of the Circuit Court of the United States for the Dis- 
 trict of Massachusetts: 
 
 J. T. and W. T., of the borough of Leicester, in that part of the 
 United Kingdom of Great Britain and Ireland called England, man- 
 ufacturers, subjects of Victoria the First, queen of said kingdom, and 
 aliens to each and all of the United States of America, and the territo- 
 ries and districts thereof, bring this bill of complaint against D. C. of 
 F., in the said district of Massachusetts, manufacturer, a citizen of tho 
 said state of Massachusetts. And thereupon the said J. T. and W. T., 
 complaining, say that for many years past they have been very exten- 
 sively engaged in manufacturing cotton thread at Leicester aforesaid, 
 and vending the same in large quantities, not only in England, but 
 throughout the United States, and in particular in the city of B., in said 
 district. That their said thread is, and for many years has been, put 
 up for sale on spools, and labeled on the top of the spools "Taylor's 
 Persian Thread" in a circle, in the center of which is the number of the 
 thread, and on the bottom of some of the spools "J. & W. Taylor. 
 Leicester," and on the bottom of others, "J. & "W. Taylor," with the 
 number of yards of thread on each spool, each spool usually containing 
 two hundred yards or three hundred yards of thread, and the spools 
 containing two hundred yards being black and labeled "200 yds." on 
 the bottom of the spool, and those containing three hundred yards 
 being red, and labeled "300 yds." on the bottom of the spools. And 
 on the center of some of the said labels on the bottom of each spool Is 
 stamped the symbol or print of the head and forepart of a lion ramp- 
 ant. And on the center of other of said labels is stamped a coat-of- 
 arms, the shield whereon contains a lion rampant, and over the same
 
 750 APPENDIX J. 
 
 three balls with the motto "In Deo Coufido." And your orators further 
 say that their spools so marked, stamped, colored, or labeled as afore- 
 said, are put up for sale in paper envelopes, each containing one dozen 
 of spools; which said envelopes are prepared and stamped by your 
 orators for said purpose, and some of said envelopes bear in raised 
 letters stamped on them the inscription, "The Persian Thread, made 
 by J. & W. Taylor, labeled on the top of each spool, Taylor's Persian 
 Thread, and on the bottom J. & W. Taylor, Leicester. The above is for 
 the protection of buyers against certain piratical articles of inferior 
 quality, fraudulently labeled with the name of Taylor." And on other 
 of the said envelopes is stamped a coat-of-arms representing a shield, 
 the upper division of which is gilt, and contains three red balls, and 
 the lower division thereof is red and contains the effigy of a lion 
 rampant, with the motto under the same, "In Deo Confido." Your 
 orators further show unto your honors that their said thread has been 
 and is manufactured of various sizes and numbers, to meet the wants 
 of the trade; and by means of the care, skill and fidelity with which 
 your orators have conducted the manufacture thereof for a series of 
 years, their said thread has acquired a great reputation in the trade 
 throughout the United States, and large quantities of the same are 
 constantly required from your orators to supply the regular demand 
 for the consumption of the country. And your orators have established 
 agencies for the sale thereof to the wholesale dealers and jobbers in the 
 cities of B., N. Y., P. and N. O., and in addition thereto your orators 
 employ B. W., now residing in said city of N. Y., as their general 
 agent for the United States, in relation to the sale of their said spool 
 sewing cotton thread; and a mercantile firm of H. & C. are the agents 
 of your orators for the sale of the same in the city of B.; and your 
 orators further show unto your honors that their said thread is known 
 and distinguished by the trade and the public as "Taylor's Persian 
 Thread," and that your orators were the original manufacturers there- 
 of, and the first who introduced the same to the public. That your ora- 
 tors' said general agent, on or about the first day of March last past, 
 hearing that complaints were made of the quality of "Taylor's Persian 
 Thread," proceeded to investigate the cause of said complaint and 
 thereupon ascertained that a spurious article of spool sewing cotton 
 thread was offered for sale by sundry jobbers in the said city of B., 
 as and for your orators' "Persian Thread," and that such complaints 
 had arisen from the fraudulent imposition of such spurious article on 
 the public. Your orators further show unto your honors that their 
 said agent further ascertained upon inquiry, and your orators charge 
 the facts to be, that the said spurious thread so sold and offered for 
 sale in the said city of B., or some of it, was furnished to the said job- 
 bers by D. C, either by him personally or by one F. D. E., of B.. his 
 agent in that behalf, and your orators are informed and believe that 
 the said D. C. has sold the said thread, put up. marked and designated 
 as aforesaid, in the said city of B.; that the said D. C, disregarding 
 the rights of your orators, and fraudulently designing to procure the
 
 FORMS OF BILLS AND ANSWERS. 751 
 
 custom and trade of persons who are in the habit of vending or using 
 your orators' said "Persian Thread," and to induce them and the 
 public to believe that his said thread was in fact manufactured by 
 your orators, had engaged extensively in the manufacture of sewing 
 cotton thread, and caused the same to be put up for sale in envelopes 
 and on spools similar to those used by your orators, and so colored and 
 stamped and labeled as to resemble exactly the said spools and envel- 
 opes used by your orators. And the said spool sewing cotton thread, 
 prepared by the said U. C. and sold by him, and which he is engaged 
 in selling as aforesaid, is an exact Imitation of the same article which 
 your orators had been manufacturing as aforesaid, and selling in the 
 United States for many years before the said D. C. commenced his said 
 fraudulent imitation thereof. And the said spurious article, although 
 inferior in quality to the genuine Persian Thread manufactured by 
 your orators, can only be distinguished therefrom, so exact is the said 
 D. C.'s imitation as aforesaid, by a careful examination of its quality, 
 and by its falling short in the number of yards contained on each spool 
 from the number marked thereon as the contents thereof. And that 
 the general appearance of the spurious article is the same as that of 
 your orators' genuine thread, and well calculated to deceive those 
 dealing in the purchase and sale thereof. Your orators further show 
 unto your honors that their said general agent has obtained specimens 
 of the said spurious Persian Thread so sold by the said D. C. That in 
 some of the specimens thus obtained, the thread is put upon black 
 spools, and in other of said specimens the thread is put upon red 
 spools, and said black and red spools are of the same size and appear- 
 ance with those used by your orators, on the top of which spurious 
 spools there is pasted a round paper label, partly gilt, on which is 
 printed in a circle the words "Taylor's Persian Thread," and in the 
 center of the circle the number of the thread; and on the other end on 
 the bottom of such spurious spools there is pasted a round paper label 
 on some of which is printed in a circle the words, "J. & W. Taylor, 
 Leicester," and on others. "J. & W. Taylor," with the number of yards 
 of thread on the spools, and across others of the labels on said black 
 spools the letters and figures "200 yds.," and on said red spools the 
 letters and figures "300 yards" are printed, and in the center of the 
 said label there is impressed the figure or symbol of the head and 
 forepart of a lion rampant. And in other of said specimens the thread 
 is put on spools corresponding in all particulars to those herein just 
 liefore described, except that the labels on the bottom thereof bear a 
 coat-of-arms, the center of the shield whereof contains a lion rampant, 
 with three balls over the same, and with the motto under, "In Deo 
 Confido." Your orators have also obtained specimens of the envelopes 
 in which said D. C.'s spurious thread is put up and sold by him or 
 his agents, which bear the same inscription, letters and stamps that 
 those used and employed by your orators bear. And in all these 
 particulars of the labels on each end of the said spurious spools of 
 thread, and the envelopes in which they are put up, they are exactly
 
 752 APPENDIX J. 
 
 like the envelopes and the labels on the respective ends of the spools 
 of your orators' genuine Persian Thread, as hereinbefore stated. Your 
 orators further show unto your honors that they have not yet ascer- 
 tained the extent to which the said D. C. has carried his said fraudulent 
 imitation and sale of your orators' said thread. But your orators' 
 said general agent has found the same offered for sale to the trade in 
 at least six wholesale or jobbing houses in the city of B., as "Taylor's 
 Persian Thread" — from which your orators believe, and they therefore 
 charge, on their belief, that the said D. C. has been and is engaged in 
 selling his said fraudulent and spurious imitation of your orators' 
 "Persian Thread" to a large extent in various places in the United 
 States, with intent that the same should circulate and be received and 
 used by the public as Taylor's genuine "Persian Thread." And your 
 orators further show unto your honors that the fraudulent and in- 
 equitable conduct of the said D. C. is not only injuring them in the 
 sales of their said genuine "Persian Thread," and the profits which 
 they would otherwise reasonably make thereon, but by the inferior 
 quality and false measure the said spurious "Persian Thread" is greatly 
 prejudicing the reputation of your orators' said "Persian Thread" in 
 the market, and, unless the said imitation is discontinued or prevented, 
 will ultimately destroy the character and standing of the genuine ar- 
 ticle. And your orators also charge that the said spurious article is a 
 fraud and deception upon such of the citizens of the state of Massa- 
 chusetts, and of the United States, as purchase the same, believing it 
 to be the genuine article manufactured by your orators. And your 
 orators further show unto your honors that in the month of March 
 last past, having discovered a portion of the aforesaid fraudulent con- 
 duct of the said D. C, your orators did file their bill of complaint be- 
 fore the chancellor of the state of New York, wherein they set forth 
 many of the facts which are in substance hereinbefore stated, and 
 prayed for an injunction to restrain the said D. C. from the afore- 
 said fraudulent use of the name and trademarks of your orators, and 
 the same was granted by the court; and the said D. C. having appeared 
 and filed his answer to the said bill, did therein admit that he had used 
 the name and trademark of your orators in manner set forth in the 
 bill aforesaid; but denied that the article manufactured by him was of 
 inferior quality to that manufactured by your orators; and afterwards 
 an application was made to the chancellor to dissolve the injunction 
 aforesaid, which last mentioned motion is now before the said chan- 
 cellor, and by reason of the great number of causes depending before 
 him, the aforesaid cause cannot be decided without great delay. And 
 your orators are informed and believe it to be true that the said D. C, 
 residing out of the jurisdiction of the chancellor of the state of New 
 York, can, with impunity, disregard the injunction aforesaid, and that 
 he has continued to make sales in the city of B. and elsewhere of the 
 said thread, put up, labeled, and appearing precisely like that made, 
 put up, and sold by your orators, and your orators continue to be 
 greatly injured thereby.
 
 FORMS OF BILLS AND ANSWERS. 753 
 
 In consideration whereof, and for as muchi as your orators are reme- 
 diless in tlie premises at common law, and cannot have adequate 
 relief save by the aid and interposition of this court, to the end, there- 
 fore, that the said D. C. if he can, show why your orators should not 
 have the relief hereby prayed, and may upon his corporal oath, and 
 according to the best and utmost of his knowledge, remembrance, in- 
 formation and belief, full, true, direct and perfect answers make to 
 the several interrogatories hereinafter numbered and set forth; and 
 the said D. C. and his attorneys, solicitors, counselors, agents and 
 servants may be enjoined and restrained from manufacturing, selling 
 or offering for sale, directly or indirectly, any spool cotton sewing 
 thread manufactured by him or any person other than your orators, 
 under the denomination of "Taylor's Persian Thread," or on spools 
 with the words, "Taylor's Persian Thread," or "J. & W. Taylor, 
 Leicester," or "J. & W. Taylor," printed, painted, written, or stamped, 
 or attached or pasted thereon, or with your orators' said device of a 
 lion rampant, or with their said coat-of-arms thereon; or on spools 
 so made or having any label, printing or device thereon, in such man- 
 ner as to be colorable imitations of your orators' said spool thread, 
 usually known as "Taylor's Persian Thread," and that the said D. C. 
 may be decreed to account to your orators for all the profits which 
 he has made by the sale of his said fraudulent imitation of your orators' 
 thread, and all the profits which your orators would have made on 
 the sales of their genuine thread but for the said D. C.'s inequitable 
 and wanton piracy of their said name, spools and labels; and that your 
 orators may have their costs and charges in this behalf paid by the 
 said D. C; and that your orators may have such other and further 
 relief in the premises as to your honors shall seem meet, and shall be 
 agreeable to equity and good conscience. 
 
 May it please your honors to grant unto your orators a writ of 
 injunction, issuing out of and under the seal of this court, to be 
 directed to the said D. C, his attorneys, solicitors, counselors, agents 
 and servants, therein and thereby commanding and enjoining them, 
 under a certain penalty in the said writ to be expressed, according to 
 the foregoing prayer of your orators. 
 
 May it also please your honors to grant unto your orators a writ 
 of subpoena, issuing out of and under the seal of this court, to be 
 directed to the said D. C, commanding him on a certain day and 
 under a certain penalty in the said writ to be inserted, personally to 
 be and appear before your honors in this honorable court, then and 
 there to answer the premises, and to stand to, abide by. and perform 
 such order and decree therein as to your honors shall seem meet, and 
 shall be agreeable to equity and good conscience. 
 
 C. P. C, of Counsel. J. & W. T., 
 
 C. P. and B. R. C, By W. B.. their Agent 
 
 Solicitors. and Attorney. 
 
 48
 
 "34 APPENDIX J. 
 
 ss. 
 
 United States of America, | 
 District of Massachusetts, j 
 
 Personally appeared before me the above-named B. W., on this 
 second day of December, A. D. 1843, and made oath that this bill in 
 equity by him signed, in as far as it states matters within his knowl- 
 edge, is true to his knowledge, and in as far as it states matters 
 within his belief, is true to his best belief. 
 
 W. W. S., Commissioner, etc. 
 
 Interrogatories to be answered by D. C: 
 
 1. Whether or not have you manufactured and sold, in Massachu- 
 setts or elsewhere, thread put upon black spools, on one end of each 
 of which spools is pasted, or otherwise fastened, a circular paper 
 label partly gilt, on which is printed in a circle the words "Taylor's 
 Persian Thread," and in the center thereof the number of the thread, 
 and on the other end of each of said spools is pasted or otherwise fast- 
 ened a circular white paper label, on which is printed in a circle the 
 words "J. & W. Taylor, Leicester," and across the same label "200 
 yds.," and in the center of the same label there is impressed the figure 
 or symbol of a lion rampant? 
 
 2. Whether or not you have manufactured and sold, in Massachu- 
 setts or elsewhere, thread put upon red spools, corresponding in all 
 respects to the black spools described in the preceding interrogatory, 
 except in the color of the spool and in the quantity of thread thereon; 
 and in the letters and figures "300 yds." printed across the said* white 
 paper label? 
 
 3. What number of each kind of the said spools of thread have 
 you manufactured and sold? State the same accurately, and distin- 
 guish the kind and number of the thread, and the number of black 
 spools and the number of red spools so sold by you since you 
 commenced selling the same, and the times when and the places where 
 the same have been sold. 
 
 4. What have been the profits made or realized by you on the man- 
 ufacture and sale of thread put upon spools colored, decorated and 
 fitted up in the manner described in the first and second interrog- 
 atories? 
 
 5. To whom and what persons in particular have you sold the said 
 thread put up in the manner described in the first and second inter- 
 rogatories? 
 
 6. Who is, and who has been, your agent in Boston for the sale of 
 your thread put upon spools fitted up in the manner described in the 
 first and second interrogatories? 
 
 7. Whether or not did you admit in an answer signed, sworn to and 
 filed by you in the court of chancery in and for the state of New 
 York, to a bill of complaint therein pending wherein the said J. T. 
 and W. T. are complainants, and yourself is defendant, that you 
 have engaged in the manufacture of sewing cotton thread, which you 
 have caused to be put up for sale on spools similar to those used by
 
 FORMS OP BILLS AND ANSWERS. 755 
 
 the complainants, and so colored, stamped and labeled as to resemble 
 exactly or as nearly as the same could be done, the said spools used 
 by the complainants, and the said spool sewing cotton, which has been 
 prepared and sold by you, is an exact imitation of the same article 
 which the complainants had been selling in the United States many 
 years before you commenced manufacturing your thread? 
 
 8. Whether or not have you manufactured and sold in Massachu- 
 setts sewing cotton thread upon black spools and upon red spools, on 
 one end of each of which is fastened a circular paper label, described 
 as in interrogatory numbered 1, and on the other end is fastened a 
 circular paper label on which is stamped a coat-of-arms, the shield 
 whereof contains a lion rampant, and over the same three balls, with 
 the motto under the shield, "In Deo Confido," and around said shield is 
 printed in some of said labels, "J. & W. Taylor, Leicester," and in 
 others, "J. & W. Taylor," with the number of yards on said spools? 
 
 9. Whether or not have you put up and sold your sewing cotton 
 thread, colored, stamped and labeled in all or some of the modes 
 described in this bill in envelopes or wrappers, some bearing in 
 raised letters the inscription, "The Persian Thread, made by J. & W. 
 Taylor, labeled on top of each spool Taylor's Persian Thread and on 
 the bottom J. & W. Taylor, Leicester. The above is for the protec- 
 tion of buyers against certain piratical articles of inferior quality, 
 fraudulently labeled with the name of Taylor," and others bearing a 
 coat-of-arms, the upper division of which is in gilt, and has three red 
 balls thereon, and the lower division is red. and has a lion rampant 
 thereon. C. P. and B. R. C, 
 
 Solicitors. 
 
 BILL OF COMPLAINT. 
 
 (Carson v. Ury, 39 Fed. Rep. 777.) 
 
 In the Circuit Court of the United States for the Eastern Division 
 of the Eastern Judicial District of Missouri. 
 
 James Carson, Complainant, 
 vs. 
 Henry Ury. Harriet Ury, Richard } In Equity. 
 
 Ury, Erskine Mansfield and A. 
 
 Beliner, Defendants. 
 J. C, a resident and citizen of the city of New York, in the state of 
 New York, files this his amended bill of complaint, under leave of 
 court had and obtained, against the above defendants. H. U.. H. U., 
 R. U., E. M. and A. B., all of whom are citizens of the state of Missouri 
 and residents of the city of St. Louis, in the eastern division of the 
 eastern judicial district of the said state, and thereupon your orator 
 complains and says:
 
 756 APPENDIX J. 
 
 First. That your orator for more than seven years has been and 
 now is a member of the Cigar Makers' International Union of Amer- 
 ica; that the members of said union are severally cigar makers residing 
 in the United States, and said union is a voluntary unincorporated 
 association of practical cigar makers formed for the purpose of pro- 
 moting the mental, moral and physical welfare of the members, by 
 assisting them to obtain labor at remunerative wages, by affording 
 them pecuniary aid in case of sickness and providing money in case 
 of death, and generally to maintain a high standard of workmanship 
 and fair wages of cigar makers. 
 
 Second. That the question which is the subject of this action is one 
 of common and general interest to all members of the Cigar Makers' 
 International Union of America, and that they are very numerous, 
 being over twenty-five thousand in number, and that it is impracti- 
 cable, therefore, to bring them all before the court in this action. 
 
 Third. That as your orator is informed and believes, for the pur- 
 pose of designating the manufacturing of members of the Cigar Makers' 
 International Union of America, the said union through its delegates 
 in convention assembled in Chicago in the month of September, 1880, 
 devised and adopted a trademark, or label to which they gave the 
 name of "Union Label," a fac-simile of which is annexed hereto and 
 marked "Exhibit A;" that prior to the adoption of said label the 
 same had not been known or in use in this country or elsewhere, and 
 ever since said adoption the members of the Cigar Makers' Interna- 
 tional Union of America have exclusively used said labels, and the 
 same have been conspicuously posted on the outside of cigar boxes 
 containing cigars made by the members of said Cigar Makers' Inter- 
 national Union of America. 
 
 Fourth. That the members of said union are by the constitution and 
 laws of said union allowed to make and sell cigars, and to use on 
 such cigars so made and sold by them labels like said "Exhibit A," 
 provided they do not employ others to make said cigars; and that 
 your orator for about two years last past has been making and selling 
 cigars in the city of New York aforesaid and has used there the 
 labels like said "Exhibit A," and has built up a profitable trade for 
 himself under said label, and that your orator was the owner of 
 the cigars which he thus made and sold under said label to the public. 
 
 Fifth. That the said label affixed to cigar boxes is intended as a 
 guaranty that the cigars therein contained are manufactured by mem- 
 bers of the Cigar Makers' International Union of America, and that 
 good and clean workmanship has thereby been secured; and that the 
 cigars were not made in tenement houses or state prisons or by coolies, 
 and for these reasons the cigars so labeled command a higher price 
 in the market than cigars of similar appearance, but without such 
 label, can command; that there is a large demand among the public 
 for cigars having said label, which demand has been growing every 
 year since the organization of said union, and the use of said label
 
 FORMS OF BILLS AND ^VNSWERS. 757 
 
 has been and is a source of great profit and advantage to your orator 
 and to the other members of said union. 
 
 Sixth. That it is the practice of said union to furnish gratuitously 
 copies of tne genuine label marked "Exhibit A" to all manufac- 
 turers of cigars in the United States who employ exclusively mem- 
 bers of the said union, who themselves own and sell the cigars which. 
 they make. 
 
 Seventh. That the wages demanded and received by the members 
 of said union, are about three dollars higher per one thousand cigars 
 than the wages demanded and received by other workmen, and that 
 union-made cigars, that is, boxes of cigars carrying the said labels, 
 bring in the market about three dollars more per thousand than such 
 cigars would bring without such labels; that this is the case because 
 the cigars bearing said labels are known to the public to be made by 
 competent workmen in clean and healthy shops. 
 
 Eighth, That by the use of said genuine labels as aforesaid, your 
 orator and other members of said union have made great profits and 
 the public is protected from impure and unhealthy cigars. 
 
 Ninth. That said union does not issue labels to manufacturers em- 
 ploying tenement house labor, or prison labor, or coolie labor, or who 
 do not pay the required scale of wages demanded by said union, and 
 that said union does not sell any such labels either to manufacturers 
 or to the public. 
 
 Tenth. That as your orator is informed and believes, since the 
 adoption and use of said label by said union, and since the time when 
 your orator commenced to sell cigars bearing said genuine label, the 
 said defendants have conspired and federated together to cheat and 
 defraud your orator and the members of said union so using said 
 label as aforesaid, and fraudulently impose upon manufacturers and 
 dealers in cigars and upon the public by manufacturing and offering 
 for sale and selling and giving away for use on cigar boxes, labels 
 which are spurious and counterfeits of said genuine labels, and in 
 furtherance of this fraudulent and illegal business have adopted the 
 name "B. Alberts." That your orator is informed and believes that 
 the said name of B. Alberts is fictitious and that there is no person 
 of that name, but that the same was first adopted by defendant B.; 
 but however this may be, your orator further says that said defend- 
 ants under said name have manufactured, offered for sale and sold 
 spurious and counterfeit labels for use as aforesaid — a copy of which 
 said spurious and counterfeit label is hereto annexed, marked "Ex- 
 hibit B." That the spurious label so offered and given away and 
 sold by said defendants under the said name of B. Alberts is a close 
 Imitation and counterfeit of the genuine adopted by said union as 
 aforesaid. That the said defendants have also lately inserted an ad- 
 vertisement in the United States Tobacco Journal, a newspaper pub- 
 lished in the city of New York, state of New York, and in other pub- 
 lications, representing to the public that they had for sale copies of 
 said genuine label, issued by authority of said Cigar Makers' Inter-
 
 758 APPENDIX J. 
 
 national Union of America, and containing a representation of such 
 label. All of which acts of said defendants are done without the au- 
 thority or permission of your orator or the officers and members of 
 said union, and against its will and protest. That in furtherance of 
 said fraudulent and illegal purposes, and with the intent to cheat and 
 defraud as aforesaid, said defendants have published a fictitious ad- 
 dress, in said name of B. Alberts as aforesaid, to wit: No. 222 Pine 
 street, in the city of St. Louis, there being no person by the name of 
 B. Alberts at said address, and have caused all mail there received in 
 answer to their advertisements to be delivered to the place of busi 
 ness of said defendants, H. U. and H. U., with whom, as your orator 
 is informed, the other defendants are associated at No. 304 North 
 Main street, in the city of St. Louis. 
 
 Eleventh. That said wrongful and fraudulent acts of said defend- 
 ants, and their continuation, are calculated to deceive and mislead 
 and do deceive and mislead the public into the belief that said de- 
 fendants have authority from said union to sell or give away said 
 genuine labels, and further tend to deceive the public into the belief 
 that the cigars thus labeled by the purchasers of said labels from 
 the defendants are the cigars made and sold by your orator and such 
 other makers of cigars as have authority to use the genuine label of 
 said union; and they further tend to deceive the public into the belief 
 that the false and spurious labels sold and offered for sale, or given 
 away by said defendants, are the genuine labels of said union. 
 
 Twelfth. That your orator has, and the other members of said 
 Cigar Makers' International Union of America have, a valued and 
 pecuniary interest in the genuine labels issued by said union, and used 
 by the members thereof, and that he has, and they have, suffered irre- 
 parable damage by the wrongful acts of said defendants, and that, 
 if suffered to continue, the wrongful acts of said defendants will tend 
 to produce further irreparable damage to your orator and to the other 
 members of said Cigar Makers' International Union of America. 
 
 Thirteenth. That your orator has no adequate remedy at law for 
 said injury. 
 
 Fourteenth. That said injury cannot be adequately compensated 
 in money, but your orator alleges that the matters in dispute and 
 Injury to him, exclusive of interest and costs, exceed the sum of two 
 thousand dollars. 
 
 Fifteenth. That as your orator is informed and believes, one or 
 more of said defendants, prior to the commencement of said wrongful 
 acts, were members of said union and well acquainted with its con- 
 stitution, by-laws and practice, but are not now members of caid 
 union. 
 
 Sixteenth. And your orator further shows unto your honors on in- 
 formation and belief, that said defendants have made and sold, and 
 caused to be made and sold, large quantities of said labels, and have 
 large quantities on hand, which they are now offering for sale, and 
 have made and realized large profits and advantages therefrom; but
 
 FORMS OF BILLS AND .VNSWERS. 759 
 
 to what extent and how much exactly your orator does not know and 
 prays a discovery thereof; and that said labels have been used by 
 many manufacturers of cigars in the sale of cigars which were not 
 made by your orator or by any member of the Cigar Makers' Inter- 
 national Union of America. 
 
 Seventeenth. And your orator further says that the use and sale of 
 said labels by said defendants, and their preparation for and avowed 
 determination to continue the same, and their other aforesaid and 
 unlawful acts in disregard and defiance of your orator, have the effect 
 to and do encourage and induce others to disregard your orator's 
 rights in the premises. 
 
 And your orator prays that said defendants, H. U., H. U., R. U., 
 E. M. and A. B., their servants, agents, attorneys and workmen, and 
 each and every of them, may be restrained and enjoined provisionally 
 and perpetually, by the order and injunction of this honorable court, 
 from directly or indirectly making, using, vending, delivering or in 
 anywise counterfeiting or imitating said genuine label of the Cigar 
 Makers' International Union of America, or from making, selling or 
 offering for sale or giving away any labels like or similar to those 
 issued by said Cigar Makers' International Union of America, and that 
 the defendant may be decreed to pay the costs of this suit, and that 
 your orator may have such further or such other relief as to this 
 honorable court shall seem meet and as shall seem agreeable to 
 equity. 
 
 An answer under oath is hereby expressly waived. 
 
 May it please your honors to grant unto your orator the writ of in- 
 junction, as well provisional as perpetual, issuing out of and under 
 the seal of this honorable court, commanding, enjoining and restrain- 
 ing said defendants, H. U., H. U., R. U., E. M. and A. B., command- 
 ing them by a certain day and under certain penalty to be and appear 
 in this honorable court thee and there to answer the premises and to 
 stand to and abide such order and decree as may be made against 
 them. 
 
 And your orator will ever pray, etc. 
 
 A. K., of Counsel. B., S. & K., 
 
 Complainants' Solicitors, 
 with whom are H. O. & 
 State of New York 
 Southern District of New York 
 City and County of New York 
 
 J. C, being duly sworn, says that he is the complainant named in 
 the foregoing complaint, that he has read said complaint, and that 
 the allegations contained therein are true except those which are 
 stated therein to be alleged on information and belief, and as to those 
 he believes said complaint to be true. 
 Sworn to before me this 23d day of March, 1889. 
 
 H. M. T., 
 Notary Public of New York County. 
 
 ■1
 
 760 APPENDIX J. 
 
 BILL OF COMPLAINT. 
 (McLean v. Fleming, 96 U. S. 245.) 
 
 To the Judges of the Circuit Court of the United States within and for 
 
 the District of Missouri. 
 
 C. F. of Pittsburg, in the State of Pennsylvania, a citizen of said 
 State, brings this his bill of complaint against J. H. McL., of St. Louis, 
 in the Eastern District of Missouri, and a citizen of the State of 
 Missouri, and thereupon your Orator complains and says that he is 
 now, and for the last sixteen months has been extensively engaged in- 
 dividually in the manufacture of a certain pill, designated and known 
 in trade and by public advertisement, and by dealers and consumers 
 as "Dr. C. McLane's Liver Pills," and that said pills have become very 
 extensively known and used in the United States and in other coun- 
 tries. 
 
 Your Orator states further that said pills were first made and sold 
 by Dr. Charles McLane, at Morgantown, Virginia, where said Mc- 
 Lane resided — that said McLane was the original and exclusive in- 
 ventor and proprietor of said pills, and first made and sold the same 
 by the name and description of "Dr. McLane's Liver Pills," and by 
 that name they were known and designated and were made and sold 
 only by said Dr. Charles McLane, till June 19th, 1844, when said Mc- 
 Lane, by bill of sale of that date, sold his interest therein to one J. 
 K. of Pittsburg, Pennsylvania, giving said K. the right to make and 
 vend the same in the United States, reserving only the privilege of 
 making and vending the same himself in Morgantown, aforesaid, as 
 will appear by said bill of sale, a copy of which is herewith filed 
 marked A., and thereby said J. K. became the sole owner and proprietor 
 thereof with the exclusive right to make and sell the same and to use 
 the name thereof, excepting only the personal privilege reserved as 
 aforesaid, and thereupon said K. began at Pittsburg, Pennsylvania, the 
 manufacture and sale of said pills, according to the recipe of said 
 Dr. McLane, and continued such manufacture at said place till about 
 the 11th day of April, 1845, when said K. formed a partnership with 
 one J. F. under the name and style of J. K. & Co., and said K. Invested 
 said firm with the full right to make and sell said pills, and to 
 use the name thereof, and said firm engaged largely in the business 
 of making and selling said pills, and in order to designate the same as 
 an article of their own manufacture, and to prevent imposition and 
 fraud upon the public and persons desiring to purchase the same, 
 said firm, during or before the year 1847 commenced putting up said 
 pills in wooden boxes of uniform size, shape and appearance, having 
 perpendicular sides, with top and bottom of elliptical shape, said box 
 containing twenty-two pills, and caused the words "McLane's Liver 
 Pill" to be stamped in red wax upon the cover of each box; and in 
 further pursuance of their said design to designate said pill as the 
 genuine article so manufactured by them as aforesaid, said firm pro-
 
 FORMS OF BILLS AND ANSWERS. 761 
 
 cured at their own expense certain plates, and caused to be made there- 
 from a certain token-label or trademark, consisting of a wrapper which 
 was placed by them around each box of pills, and which was printed 
 with ink of a light red color; the portion thereof covering the top of 
 each box being engraved with a narrow border of scalloped pattern, 
 surrounding a panel with background or wave line engraving, and 
 with the words "Dr. McLane's Celebrated Liver Pills. In sick head- 
 ache and in all bilious complaints surpassed by none — 25 cts.," en- 
 graved thereon and appearing in white letters shaded by red lines; 
 and on the portion of said wrapper covering the rear side of the box 
 a panel of similar background surrounded by a border of dark red 
 and white lines appearing interlaced or woven, and with the words 
 following to wit: "In future my liver pills will have a red steel en- 
 graved wrapper, and my name in red wax on each box," appearing 
 thereon in white letters shaded by red lines, and having also a fac- 
 simile of the signature of C. McLane engraved and printed in red 
 ink at the bottom thereof; and upon the portion of the said wrapper 
 covering the front side of the box a panel with a border and back- 
 ground similar to that last mentioned, having the words "Prepared for 
 the proprietor by J. K. & Co., No. 60 Wood St., Pittsburg, Pa.," there- 
 on in white letters shaded with red lines and also the words "None 
 can be genuine without the signature of J. K. & Co." printed thereon 
 in red ink the words "J. K. & Co." being a facsimile of said firm's 
 signature. A copy of said label is hereto annexed marked "B," and 
 made part hereof, one cf which labels or trademarks was placed on 
 and around each box of said pills made and sold by said firm. 
 
 The said firm being thus the sole and exclusive owners of said pills 
 and of the recipe for making the same, and of the said token-label or 
 trademark, and the plates for the same, exclusively made, put up 
 and sold said pills and said label and trademark thereon, and brought 
 the same into notice, and, by the expenditure of large sums of money 
 in advertising and by the exercise of energy and skill, they gave 
 to said pills a wide and enviable reputation, and they derived from the 
 manufacture and sale thereof large profits. 
 
 Your Orator states further that on the 29th day of March, 1853, said 
 J. K. died leaving the said J. F. the sole surviving partner of said firm 
 of J. K. & Co., who continued the business of said firm, and on or 
 .about the 30th day of April, 1853, the executors of said J. K. for the 
 sum of thirty-four thousand dollars, and other considerations, conveyed 
 to said surviving partner, J. F. and to your Orator jointly, who formed 
 a partnership under the name and style of F. Bros., all the right, title 
 interest and claim of said J. K. in and to the goods, chattels, notes, 
 accounts, claims, rights, and credits of every description belonging to 
 the late firm of J. K. & Co. in the drug business in Pittsburg afore- 
 said, as will appear by bill of sale thereof dated April 30th, 1853, a 
 <;opy of which is hereto annexed and marked "C." 
 
 Under said bill of sale, said J. F. and C. F.. composing the firm of 
 F. Bros., at once took possession of the business of making and selling
 
 762 APPENDIX J. 
 
 said "Dr. McLane's Liver Pills." and of said plates, tokens, labels and 
 trademarks, and thereby became the exclusive owners of the same 
 and of the right to make and sell the same with the said labels, tokens, 
 and trademarks thereon, except the right reserved by the said Dr. 
 Charles McLane as aforesaid. On or about January 11th, 1854, L. W. 
 Jr., became a partner in the said firm of F. Bros, and afterwards said 
 Dr. C. McLane relinquished to said F. Bros, all his right thereto, 
 and further recognized and confirmed to said F. Bros, the full and 
 exclusive right in said pills and said labels and trademarks, by con- 
 tract dated January 8th, 1857, a copy of which is herewith filed marked 
 "D." 
 
 Said firm of F. Bros, greatly enlarged the business of making and 
 selling said pills until the year 1855, since which time until the year 
 1872, while putting them up in boxes of the same material size and 
 shape as already hereinbefore described, and placing a seal with the 
 words "McLane's Liver Pills" stamped in red wax upon the cover of 
 each box containing said pills as before described, they folded around 
 each box a circular containing remarks upon the nature and effect of 
 said pills and the diseases for which they are recommended with di- 
 rections for their use, printed in the English, German, French and 
 Spanish languages, a copy of which, circular is hereto attached and 
 marked "E;" and in order to still further and more readily distinguish 
 article of pills manufactured by them as aforesaid, as of their own 
 manufacture, they procured new steel plates and caused to be printed 
 therefrom labels or trademarks forming an external wrapper, con- 
 sisting of a fine steel engraving with a facsimile of the signatures of 
 C. McLane and said firm of F. Bros, engraved thereon, the ground 
 work of said engraved wrapper on the top of the box being com- 
 posed of fine lines crossing the box diagonally and at right angles 
 with each other and the words "Dr. C. McLane's celebrated liver 
 pills, in sick head-ache and in all bilious complaints surpassed by 
 none. Price 25 cts." engraved thereon, showing the letters and figures 
 in white, the said words "celebrated liver pills" being upon a scroll 
 similar to a double ogee in form, v^^itli black back-ground. On said 
 engraved wrapper covering one side of said boxes, said firm caused to 
 be engraved and printed the words: "Prepared only by F. Bros, suc- 
 cessors to J. K. & Co." all in white letters, also a facsimile of their 
 signature in black, and the words "without whose signature none can 
 be genuine" printed in black letters, and on the opposite side of said 
 boxes are printed other words in white letters as follows: "In future 
 my genuine liver pills will have a fine steel engraved wrapper, and 
 my name in red wax on each box," with a facsimile of the signature 
 of C. McLane in black script, a copy of which label is hereto attached 
 marked "F." 
 
 The business of making and selling s'aid pills with said labels, 
 tokens, and trademarks thereon, was carried on by said firm of F. 
 Bros, from the 30th day of April. 1853, in their said firm name, and 
 said firm from said last mentioned date, owned and held among their
 
 FORMS OP BILLS AND ANSWERS. 763 
 
 firm assets the right of making and selling said pills and using there- 
 on said tokens, labels, and trademarks, notwithstanding the changes 
 that were made from time to time from said 30th day of April, 1853, 
 until the present time, in the individual members of said firm which 
 were as follows: 
 
 On the 11th day of January, A. D. 1854, L. W. Jr. became a member 
 of said firm, which was composed of said J. F., C. F. and said W., 
 until the 12th day of October, 1857, when said L. W. Jr. withdrew from 
 said firm, and in consideration of the sum of seventeen thousand dol- 
 lars conveyed to said J. F. all his right, title and interest and claim 
 of, in and to the property, assets and effects whatever of said firm of 
 F. Bros, including the right to make and sell said pills, and to use said 
 tokens, labels, and trademarks, as will appear by said W. bill of sale 
 of that date, a copy of which is hereto attached, marked "F2," and 
 from and after said 12th day of October, 1857, said firm composed of 
 said J. F. and C. F. carried on the business of making and selling 
 said pills, put up as aforesaid with said labels thereon, until the first 
 day of July, A. D. 1865. when said C. F. withdrew from said firm, and 
 in consideration of the sum of thirty-five thousand dollars, relinquished 
 to said J. F. all his said C's. Interest, right title or claim in and to 
 all the property and assets of said firm of F. Bros., and said J. F. there- 
 after, under said firm name of F. Bros., continued to carry on the busi- 
 ness of making and selling and putting up said pills as above described 
 at Pittsburg, Pa., till about the 2nd day of November. 1870. when the 
 said J. F. died, and by will, a copy of which is herewith filed marked 
 "G" and made part hereof, bequeathed to your Orator the good-will 
 and proprietorship of McLane's and other medicines, owned and con- 
 trolled by him, which included said Liver Pills, and the right to make, 
 put up and sell the same as described last aforesaid, upon certain con- 
 ditions; in effect that your Orator should take charge of and carry on 
 said business, and pay off the pecuniary legacies given in said will, 
 all of which your Orator has done, and by his said will, said J. F. 
 bequeathed to your Orator after payments of the legacies of said will, 
 all the residue of his estate, and thereby your Orator became, and is 
 now, the sole and exclusive owner and proprietor of said pills, and the 
 recipe for making the same, and of said tokens, labels and trademarks, 
 and the plates therefor, and has the sole and exclusive right to make 
 and sell said pills and to use said labels, tokens, and trademarks, and 
 as residuary legatee of said J. F., your Orator is entitled to recover 
 all damages or profits, that accrued to him in his lifetime, or to said 
 firm of F. Bros. 
 
 And your Orator has, since the death of said J. F.. continued, and 
 still continues the business of making and selling said pills and using 
 thereon the said label and trademark under the said name of F. Bros., 
 as hereinbefore described, and your Orator is now using said label as 
 shown by Exhibit "F." with these exceptions only that within the last 
 few months, he has used and now uses as a ground work on his labels 
 shaded curved lines cutting and crossing each other In such a way as
 
 764 APPENDIX J. 
 
 to produce the effect of alternate light and shade crossing the top of 
 the box diagonally, in place of straight lines crossing each other 
 diagonally as hereinabove described, and he now omits on his labels 
 as now used by him the words "Successors of J. K. & Co." and has also 
 substituted "24" in place of "60" as the number of Wood street, as 
 will appear in Exhibit "H" hereto annexed, and that both said firm of 
 F. Bros, until the death of J. F., and from that time, your Orator doing 
 business in said firm name as aforesaid, have, since the passage of the 
 Act of Congress requiring the same, placed across the bottom and 
 ends of each box of said pills when put up for sale, and over the folds 
 of the external wrapper, their proprietary United States Revenue stamp. 
 And your Orator says that being the sole and exclusive owner and' 
 proprietor of said pills and of the recipe for making the same and of 
 said tokens, labels and trademarks, and the plates therefor as afore- 
 said, and having the sole and exclusive right to make and sell said 
 pills prepared and put up as aforesaid, with said tokens, labels and 
 trademarks thereon, your Orator hoped he might be permitted to ex- 
 clusively manufacture and sell the same as put up. and to exclusively 
 use, for the purpose of indicating the origin of said pills, said tokens, 
 labels and trademarks, but the Defendant, with the intent to injure 
 and defraud your Orator in the premises, and to reap the advantages, 
 benefits and profits of the credit and reputation of said pills, is now 
 engaged, and has been engaged for some time, to wit — a period un- 
 known to your Orator, but believed by him to be several years, making 
 and vending, and causing to be vended by others, a spurious, counter- 
 feit and inferior article of pills, prepared in imitation of and calculated 
 and intended to be sold as the genuine "Dr. C. McLane Liver Pills," 
 of your Orator's own manufacture, and having thereon a false, forged 
 and counterfeit token-label or trademark, made in Imitation of and 
 closely resembling that of your Orator, so as to enable the Defendant 
 to reap the benefits and profits of the credit and reputation of the 
 genuine pills made and sold by your Orator, and his predecessors in 
 ownership, as aforesaid at great expense, and when thus prepared, the 
 defendant has sold, and is now selling and causing to be sold, said 
 spurious and counterfeit pills as the genuine article of your Orator's 
 own manufacture, intending to deceive and thereby actually deceiving 
 the public and customers of your Orator, and supplanting your Orator's 
 trade and injuring him to a large amount, but which your Orator is un- 
 able to state or fix without a statement or account of the amount of 
 sales made as aforesaid by said Defendant. 
 
 And the Defendant, for the purpose of more completely and effec- 
 tually deceiving the public, and persons wishing to buy the genuine 
 pills of your Orator's own manufacture, puts up his said false, counter- 
 feit and spurious pills in boxes of the same material, size and shape 
 as those used by your Orator as aforesaid, and places upon the cover 
 of each box a seal in red wax of the same style, size, and appearance 
 as the red seal used by your Orator as aforesaid, and which is specially 
 used and referred to by your Orator in his circulars and advertisements,
 
 FORMS OF BILLS AND ANSWERS. 765 
 
 and relied upon by him to indicate to the public and his customers, 
 the genuine article of pills, made and sold by your Orator as afore- 
 said, and while endeavoring completely to deceive the public and those 
 seeking the genuine pills of your Orator, by the use of the red seal so 
 placed upon the cover of the boxes used by the Defendant, as aforesaid, 
 he seeks to shield himself from the inevitable consequence of his at- 
 tempt to injure and defraud your Orator by using a stamp impressing 
 in faint and obscure letters on said red wax the words "J. H. McLean, 
 St. Louis," which are yet as illegible as not to undeceive those who 
 are cheated into supposing, from the mere pressure of the seal on the 
 cover of the box, that the same contains the genuine pills manufactured 
 by your Orator, and the Defendant places around the boxes of pills so 
 put up by him, a circular printed in the English, German, French, Span- 
 ish and other languages, a copy of which is hereto attached marked 
 "J," and encloses the whole with a wrapper consisting of a lithograph 
 impression similar in general appearance to the outer wrapper used 
 by your Orator, the body thereof being formed like that of your Orator, 
 of lines crossing the box diagonally and at right angles to each other, 
 with the words "Dr. J. H. McLean's Universal pills or vegetable liver 
 pills, prepared only by Dr. J. H. McLean, No. 314 Chestnut Street, St. 
 Louis, Mo." printed thereon across the top of each box in white letters; 
 the words "Universal pills" being upon a background of black and on 
 a strip or scroll circular in form; the whole presenting a -general ap- 
 pearance similar to the label covering the top of the box used by your 
 Orator as aforesaid, while upon the label covering the side of said 
 boxes put up by Defendant, are printed the words, "To prevent coun- 
 terfeiting I have changed the color of my label" In white letters upon, 
 a dark back ground, such as is used by your Orator, and with the De- 
 fendant's name "Dr. J. H. McLean" signed in black script, but in such 
 obscured lettering as to be almost illegible; and on the label covering 
 the other side of said box, the Defendant causes to be printed in white 
 letters, in style and appearance resembling the label used by your 
 Orator, the words "For the cure of liver complaint, head-ache, bilious 
 diseases, etc." A copy of said counterfeit label is hereto attached 
 marked "K." 
 
 And your Orator avers that the Defendant caused to be printed and 
 uses said label as aforesaid, as your Orator believes and charges the 
 fact to be, for the sole purposes of enabling him to defraud your Orator 
 of trade and profit by selling his spurious and counterfeit goods as and 
 for the goods so advertised, manufactured and sold by your Orator. 
 
 And your Orator further says that the illegal and wrongful acts set 
 forth and complained of aforesaid, are but the carrying out of fraud- 
 ulent designs of the Defendant, which he long ago conceived for the 
 purpose of drawing your Orator's trade to himself by the wrongful use 
 of fraudulent imitations of said tokens, labels and trademarks of your 
 Orator, and in furtherance of the purpose, as your Orator believes and 
 charges the fact to be, the Defendant did, prior to the year 1855 print 
 or cause to be printed a certain false or counterfeit label, token or
 
 766 APPENDIX J. 
 
 trademark, in imitation of or closely resembling the token label and 
 trademark then and for many years theretofore exclusively used and 
 owned by J, K. & Co. aforesaid, being the label of a light red color 
 hereinbefore fully described and referred to as Exhibit "B." And De- 
 fendant placed said false and counterfeit labels on boxes of pills of 
 his own manufacture, which boxes were similar to the boxes then used 
 by said J. K. & Co., and on the lid of each box of pills so put up and 
 sold by him he placed a seal stamped in red wax in imitation of that 
 used by said K. & Co. as aforesaid, and then wrapped each box of pills 
 in one of the counterfeit labels last above described, which label con- 
 sisted of an engraved wrapper printed with ink of a light red color, 
 nearly resembling in shade and general appearance that used by said 
 K. & Co. and with the words "Dr. McLean's Universal pills for cure 
 of liver complaint, headache, bilious diseases, etc." printed on the 
 portion covering the top of each box, in white letters shaded by a red 
 line, and below the above, the words "Price (see directions inside) 
 25 cts." On the side of the box were printed on the wrapper the words 
 "Dr. McLean's Universal pillen zur heilung von Leber Krankheiten 
 Kopfweh bilosen Kraukheiten U. L. W." appearing in white letters 
 shaded by red lines, as in the genuine label, and with the words 
 "Vorschrift auf der innern seite" printed in red letters underneath, 
 while on the portion of said wrapper covering the opposite side of said 
 box are printed the words "Prepared by J. H, McLean, N. E. Corner 
 3rd and Pine Sts., St. Louis, Mo." 
 A copy of said label is hereto attached marked "L." 
 And your Orator believes and charges that the Defendant procured 
 and used the said last described label solely for the purpose of deceiv- 
 ing the public and those wishing to buy the genuine pills made and sold 
 as aforesaid by said J. K. & Co., but he says that Defendant's fraud- 
 ulent designs were to some extent frustrated and the effects of his 
 wrongful acts partially averted from the rightful proprietor of said 
 label and trademark by the circumstances of the said firm of F. Bros, 
 in the year 1855, having changed the label and wrapper used by them 
 and by said J. K. & Co. prior to that time, and adopted the label 
 lately used by your Orator as aforesaid, but your Orator says that after 
 the adoption by him of said last named label as aforesaid, the Defend- 
 ant continued for many years to use the red label procured and used 
 by him in imitation of the trademark used by said firm of F. Bros, as 
 aforesaid, but finding the carrying on of his said business unprofitable 
 while he was using his said fraudulent red label, and your Orator was 
 using the dark label above described, Defendant conceived the design 
 of changing the color of his label, and adopting in place of the red 
 label theretofore used by him, another dark label in imitation of the 
 label or trademark of your Orator, which was done, as your Orator be- 
 lieves and charges for the purpose of wrongfully diverting the trade 
 of your Orator to himself and enabling him to sell his goods as and 
 for the goods manufactured and sold by your Orator, and not for the
 
 FORMS OF BILLS AND ANSWERS. 767 
 
 purpose of preventing counterfeiting as Defendant falsely publishes 
 on his own fraudulent label. 
 
 Your Orator states further that said Defendant was never authorized 
 by him to make, put up, or sell said pills as of your Orator's own 
 manufacture, or to use or make said tokens, labels or trademarks in 
 imitation of or resemblance to those of your Orator as said Defendant 
 is charged to have done above, nor to make or sell any such false or 
 counterfeit pills with such false or counterfeit labels attached thereto, 
 but said Defendant well knows that your Orator is now, and his pred- 
 ecessors were, the sole and exclusive proprietors of Dr. C. McLane's 
 celebrated liver pills and of the said labels and trademarks, marked 
 "B" and "F" as hereinbefore set forth, and said Defendant also well 
 knows that said false and counterfeit labels or trademarks used by 
 him are mere imitations of the labels and trademarks of your Orator 
 and his predecessors, made, contrived and got up by said Defendant 
 with the intent to deceive the public and purchasers thereof, and to 
 defraud your Orator. 
 
 All of which said acts and things and pretenses are against equity 
 and good conscience, and a great loss and damage to your Orator, and 
 inasmuch as your Orator is without full redress at law, and can only 
 obtain adequate relief in equity, and as he avers that a continuance of 
 the acts aforesaid, will occasion irreparable loss and injury to him; to 
 the end, therefore, that the said Defendant may, if he can, show why 
 your Orator should not have the relief hereby prayed, and may upon 
 his corporal oath, and according to the best and utmost of his knowl- 
 edge, remembrance, information and belief, full, true and perfect 
 answer make to all the allegations hereof, and to the several interrog- 
 atories hereinafter numbered and set forth; that is to say: 
 
 (Interrogatories and prayer for relief). 
 
 M. L. G. & D.. 
 
 Solicitors for Complainant. 
 
 BILL OF COMPLAINT. 
 
 (Richmond Nervine 0». v. Richmond, 159 U. S. 293). 
 
 To the Judges of the Circuit Court of the United States for the South- 
 ern District of Illinois: 
 
 The Dr. S. A. R. Nervine Co., of Saint Joseph, Missouri, a corpora- 
 tion duly incorporated and organized under and by virtue of the laws 
 of the State of Missouri and a citizen of said State, brings this its bill 
 of complaint against S. A. R., resident of the County of Douglas, State 
 of Illinois, and a citizen of said state of Illinois, and for cause there- 
 of your Orator complains and states that heretofore and prior to the 
 20th day of December, 1877, the said S. A. R. being then engaged in 
 the business of making and selling a medicine known as "Samaritan 
 nervine," a medicine for the relief of epileptic fits and all other ner-
 
 768 APPENDIX J. 
 
 vous diseases, adopted and used as his trademark on such, medicine 
 the figure of a man in an epileptic fit falling backward, with his 
 arms extended and his cane and hat dropping to the ground, with the 
 word "trade" printed in small capitals on the right of said figure and 
 the word "mark" printed in small capitals on the left side of said fig- 
 ure. A copy or specimen of which said trademark, adopted and used 
 by said S. A. R. in his said business and on his said medicine herein 
 aforesaid, as registered in the United States Patent Ofiice March 26th, 
 1878, is hereto attached, marked Exhibit "A," for the purpose of illus- 
 trating and explaining the said trademark, so used and adopted by 
 the said S. A. R. as aforesaid. 
 
 Your Orator further represents to your Honors that after the said 
 S. A. R. had used and adopted said device as and for his trademark 
 in his business the "Dr. S. A. Richmond Medical Company" was in- 
 corporated and organized under and by virtue of the laws of the 
 State of Missouri and succeeded the said S. A. R. in the business of 
 manufacturing and selling the medicine aforesaid on v/hich said 
 trademark was used, and acquired all the right, title, and interest in 
 and to said trademark theretofore owned and enjoyed by said S. A. 
 R. 
 
 Your Orator further represents to your honors that the incorpora- 
 tion of the "Dr. S. A. Richmond Medical Company" about the latter 
 part of the year 1883 or early part of the year 1884, the particular date 
 of which your Orator is unable to state, said "Dr. S. A. Richmond 
 Medical Company" adopted and used, in connection with the trade- 
 mark aforesaid, an engraved portrait of Dr. S. A. Richmond, placed 
 on the outside wrapper in which the bottle of medicine was encased, 
 forming the front side of bottle, and on circulars and other mediums 
 of advertising, and was also blown in the bottles and photographed on 
 paper and pasted on opposite side of the bottles; the words "new style" 
 printed in small capitals on the upper right hand corner of said out- 
 side wrapper, and the word "adopted" and figures "1884" printed in 
 same manner in upper left-hand corner of said wrapper; also the por- 
 trait of said Dr. S. A. R., surrounded by four globes, was placed on 
 outside wrapper on the back of said bottles. 
 
 A copy or specimen of said portrait and globes as used, as aforesaid, 
 by said "Dr. S. A. Richmond Medical Company" is hereto attached and 
 marked Exhibit "B" for the purpose of illustration and explanation. 
 
 Your Orator further represents to your honors that on or about the 
 13th day of May, 1884, the said "Dr. S. A. Richmond Medical Company" 
 made an assignment for the benefit of its creditors under and pursuant 
 to the laws of the State of Missouri. That said assignment was duly 
 made, prosecuted and wound up according to law. A copy of the 
 resolution of said company authorizing the president thereof to make 
 such assignment is hereto attached, marked Exhibit "C," and made a 
 part of this bill. 
 
 That by order of the court in said proceedings of assignment, the 
 formula for compounding raid medicine, the good-will of the business.
 
 FORMS OP BILLS AND .ANSWERS. 769 
 
 and the trademark and all other designs used by the said "Dr. S. A. 
 Richmond Medical Company," including the portrait, and portrait con- 
 nected with globes used by said company as herein aforesaid for the 
 purpose of advertising said medicine, was duly and lawfully sold by 
 the assignee of said "Dr. Richmond Medical Company," and that 
 J. A. R. became the purchaser thereof; that afterwards your Orator, 
 "The Dr, S. A. Richmond Nervine Company," was incorporated and 
 organized under and by virtue of the laws of the State of Missouri, and 
 by purchase of and transfer by said J. A. R., succeeded the "Dr. S. A. 
 Richmond Medical Company," in the manufacture and sale of said med- 
 icine, the Samaritan nervine, and acquired all the right, title and in- 
 terest in and to said personal property, formula, trademark and all 
 devices used in connection therewith, as aforesaid, theretofore owned, 
 adopted, used and enjoyed by the said "Dr. S. A. Richmond Medical 
 Company," and that thereby your orator became and now is the sole, 
 exclusive and rightful owner of said property, formula, trademark, and 
 devices adopted and used in connection therewith, and is entitled to the 
 sole and exclusive use and enjoyment of the same, and is now and for 
 several years last past has been engaged in making and selling said 
 Samaritan nervine and using thereon and in connection therewith the 
 trademark and portrait of said Dr. Richmond and said other devices in 
 connection therewith, as hereinbefore mentioned and set out. 
 
 Your Orator further represents to your honors that after your orator 
 had succeeded to all of the rights of the "Dr. S. A. Richmond Medical 
 Company" and had engaged in the business of making the said med- 
 icine aforesaid under said trademark, etc., and about May 1st, 1884, it 
 was adopted as and for an additional trademark for medicine for reliev- 
 ing epileptic fits and other nervous diseases, said portrait of Dr. S. A. 
 Richmond with the word "trade" printed in small capitals on the left 
 side of said portrait, and the word "mark" printed in small capitals on 
 the right of said portrait. A copy or specimen of which said trade- 
 mark so used and adopted by your orator as registered in the United 
 States Patent Office March 6th, 1888, is hereto attached, marked Exhibit 
 "D," for the purpose of illustrating and explaining the said trademark 
 so adopted by your orator. 
 
 That after your orator acquired the said trademark as aforesaid it 
 has been extensively engaged in manufacturing and selling said med- 
 icine under said trademarks and said other devices used in connection 
 therewith; that it has extensively advertised said medicine under said 
 trademarks and devices used in connection therewith, and has spent 
 large sums of money in so advertising said medicine and bringing it 
 to the knowledge of the public; that said medicine under said trade- 
 marks, etc.. has acquired an extensive and valuable reputation all over 
 the United States and in foreign countries through the efforts and 
 labors of your orator and its large expenditures of money in adver- 
 tising and pushing the sale of said medicine under said trademarks, 
 etc., and that your orator has acquired a valuable property interest in 
 
 49
 
 770 APPENDIX J. 
 
 and to said trademarks that makes their exclusive enjoyment in your 
 orator of great pecuniary value and importance. 
 
 Your orator, in further complaint, further represents to your honors 
 that notwithstanding the long use and enjoyment of said trademarks 
 and the portrait, etc., used in connection therewith as aforesaid, which 
 your orator charges and avers was used by the "Dr. S. A. Richmond 
 Medical Company" and by the assignee thereof was sold to your orator 
 and used by it continuously from thence to the present time with the 
 knowledge and consent of the said Dr. S. A. R., and notwithstanding 
 its rights to the exclusive use and enjoyment of said trademarks, etc., 
 the said defendant, S. A. R., for the purpose of defrauding your orator, 
 well knowing the premises and the rights and privileges secured to 
 your orator by the use and adoption of said trademarks, and to appro- 
 priate to himself the profits, benefits and advantages which would have 
 accrued to it from the exclusive use of said trademarks, etc., within 
 the district aforesaid, has made what he styles "Samaritan nervine," 
 and is now wrongfully engaged in making the same in Tuscola, county 
 of Douglas and State of Illinois, unlawfully, wrongfully and deceitfully 
 wrapped and packed such so-called "Samaritan nervine" similar to that 
 used by your orator, and is now wrongfully making, and wrongfully 
 and deceitfully wrapping and packing said so-called "Samaritan ner- 
 vine" in packages similar to that used by your orator and have used 
 thereon both the trademai'Ks aforesaid and the devices connected there' 
 with as aforesaid, in direct violation of the exclusive right to use the 
 same vested in your orator, and that he has by means of said trade- 
 marks and devices sold large quantities of so-called "Samaritan ner- 
 vine" throughout the United States and in said district where your 
 orator is selling its nervine under said trademarks aforesaid in direct 
 infringement of said trademarks. The fact that said defendant is en- 
 gaged in the manufacture and sale of said medicine and using said 
 trademarks and devices in connection therewith will more fully appear 
 by defendant's aflJdavit filed in the Patent Ofiice of the United States, 
 a copy of which is hereto attached, marked Exhibit "E," and made a 
 part of this bill. 
 
 Your orator further states that what amount of goods said defend- 
 ant, S. A. R., has sold under said trademarks it is unable to state nor 
 does it know but upon information and belief, but your orator avers that 
 he has sold large quantities of the same, using said trademarks, is now 
 making said so-called "Samaritan nervine" and using said trademarks 
 thereon, and have received and are receiving for such sales great 
 gains and profits, but to what amount your orator is ignorant and 
 cannot set forth, except that it alleges that such gains and profits 
 amount to more than five thousand dollars, exclusive of costs, and that 
 your orator has been damaged to an amount exceeding five thousand 
 dollars, exclusive of costs. 
 
 Your orator further represents to your honors that said S. A. R., the 
 defendant herein, well knowing the exclusive right of your orator to 
 make and vend said medicine, "Samaritan nervine," and the exclusive
 
 FORMS OP BILLS AND ANSWERS. 771 
 
 right and privilege of your orator to use said trademarks and devices 
 in the sale of said medicine and in connection therewith, and in the 
 advertisement of the same, and the great benefit secured to your Orator 
 by the use and adoption of said trademarks, intending to injure your 
 said orator and appropriate to himself the profits, benefits, and advan- 
 tages which would accrue to it from the exclusive use of said trade- 
 marks within the district aforesaid, has wrongfully and fraudulently 
 applied to the Patent Office of the United States of America for regis- 
 tration of said portrait of said Dr. S. A. R. adopted and long used by 
 your orator as its trademark aforesaid as and for his trademark; all 
 of which will fully appear by copy of his statement and declaration 
 filed in the Patent Office of the United States of America, which is 
 hereto attached, marked Exhibit "F," and made part hereof; that said 
 S. A. R. has no interest in the formula for compounding the medicine 
 in suit nor is he entitled to adopt or use said portrait as his trade- 
 mark. 
 
 Your orator further represents to your honors that said S. A. R. is 
 •wholly insolvent and worthless, and that he would be unable to pay 
 any damages that your orator might sustain by means of the premises 
 aforesaid; that your said orator has no speedy or adequate remedy at 
 law in the premises, and it can only be protected in its several rights 
 herein by the equitable interposition of this court. 
 
 Your orator prays that the defendant may be required to make a 
 disclosure of all such sales and profits, and that they may be required 
 to account with and pay over to your orator all the damages it may 
 have sustained and profits which he has received from such unlawful 
 use of said trademark, and that they may be enjoined provisionally 
 and preliminarily pending a hearing herein. 
 
 Wherefore, the premises considered, your orator prays that upon a 
 final hearing the defendant be enjoined and restrained by decree from 
 in any manner making and selling said medicine, Samaritan nervine, 
 under the name of Samaritan nervine or under anj' ether name what- 
 ever, and from in any manner using said trademarks or devices 
 enumerated therewith or either of them or any trademark or marks so 
 nearly resembling them as will be calculated to deceive on any of their 
 preparations and from infringing upon your orator's exclusive right to 
 use the same; that the defendant be enjoined and restrained from the 
 further prosecution of the registration of said portrait as his said 
 trademark before the Patent Office of the United States, and that he 
 be required to account with and pay over to your orator all damages 
 sustained by it and profits by him received from such unlawful use 
 of said trademarks. 
 
 That your orator may have such other and further relief in the 
 premises as equity and good conscience will allow and as to this 
 court shall seem meet; and may it please your honors to grant unto 
 your orator a writ of subpoena of the United States of America under 
 the seal of this honorable court, directed to the defendant. S. A. R., 
 commanding him to appear in this honorable court, then and there to
 
 772 APPENDIX J. 
 
 answer all and singular the premises and to stand to and perform and 
 abide such further orders, directions, and decree as may be made 
 against him; and your orator will ever pray. 
 
 H. & P. and B. & B. & P., 
 
 Solicitors for Complainant. 
 
 BILL. OF COMPLAINT. 
 
 (Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19). 
 
 To the Honorable the Judges of the Circuit Court of the United States 
 for the Southern District of New York: 
 Elmilie Saxlehner brings this bill of complaint against Eisner & Men- 
 delson Company, and thereupon your Orator complams and says, upon 
 information and belief: 
 
 1. That your Orator is the widow of Andreas Saxlehner, deceased, 
 and resides at the City of Budapest, in the Kingdom of Hungary, and is 
 a subject of the King of Hungary. 
 
 2. That the defendant, the said Eisner & Mendelson Company, 
 during the time when the acts hereinafter complained of were com- 
 mitted was, and now is, a corporation duly incorporated under the 
 laws of the State of West Virginia, having an office for the transaction 
 of its business in the City of New York, and is a citizen of the State 
 of West Virginia. 
 
 3. That the said Andreas Saxlehner, late of the City of Budapest, 
 in the Kingdom of Hungary, was at all the times herein mentioned, 
 until the 24th day of May, 1889, the proprietor of a certain well situ- 
 ated at Orsod, within the city limits of the city of Buda (otherwise 
 known in the German language as the city of Of en), which city has 
 for about twenty-five years last past been, and is now, united with 
 the city of Pest, under the name of Budapest, in said Kingdom of 
 Hungary, the waters of which said well possess valuable medicinal 
 properties. 
 
 4. That in or about the year 1863 said Andreas Saxlehner com- 
 menced to bottle the waters of said well and to sell the same in the 
 market, and for the purpose of distinguishing his said bitter waters 
 from other bitter waters then known and sold in the market, adopted 
 the arbitrary and fanciful name or trademark of "Hunyadi Janos" for 
 his said bitter waters. 
 
 5. That by reason of the great care exercised by him in the business 
 of obtaining, caring for and bottling said waters and selling the same 
 in the market, and the valuable properties of said water, said business 
 soon increased and additional territory was thereafter acquired by said 
 Andreas Saxlehner in which new wells, all giving forth the same 
 water, were opened by him, all being situated near said first-men- 
 tioned well, and in a valley surrounded by considerable hills, the 
 geographical name of which valley and territory contained in it is
 
 FORMS OP BILLS AND ANSWERS. 773 
 
 Orsod, and thereupon said Andreas Saxlehner applied said name of 
 "Hunyadi Jauos" to the bottled water of said spring sold by hira in 
 the market. 
 
 6. That at or about the time when said Andreas Saxlehner adopted 
 said name of "Hunyadi Janos" as aforesaid, he also adopted a charac- 
 teristic and novel style of bottles in which said water was sold by him 
 in the market, the same being of a straight shape with a short neck to 
 the top of which was attached a metal capsule bearing the inscription 
 "Hunyadi Janos Budai Keseruviz" (meaning Hunyadi Janos bitter 
 water of Buda) together with a portrait supposed to be. a portrait of 
 the mediaeval Hungarian hero Hunyadi Janos stamped thereon, and a 
 novel and peculiar label covering almost the whole body of the bottle, 
 the characteristic features of which said label were a division of the 
 same into three longitudinal fields, the middle field bearing said por- 
 trait in a medallion with the name "Hunyadi Janos" written in large 
 letters on the top part of said label, the color of the middle field being 
 red. That thence hitherto said natural mineral waters bottled and sold 
 by said Andreas Saxlehner in Hungary and other European countries 
 and in all markets of the world, have been known and called by said 
 name and trademark of "Hunyadi Janos" water. That the said name 
 "Hunyadi Janos" is in no way descriptive of the nature or quality of 
 the water of the said well or wells, but was adopted by the said pro- 
 prietor as a fancy or ideal name and as a trademark to distinguish the 
 water of his said wells in commerce from all other waters. 
 
 7. That soon after said business of bottling and exporting said Hun- 
 yadi Janos water had been commenced by said Andreas Saoclehner in 
 the year 1863, said water, named, bottled, and labeled as aforesaid, be- 
 came popular and was exported to and sold in all the principal coun- 
 tries of Europe and also in the United States of America. That in the 
 countries inhabited by the Latin races, the word "Janos" became the 
 common appellation of said water, it being known as "Eau de Janos" or 
 "Aqua di Janos," while in England and the United States of America 
 the name "Hunyadi" became the common appellation thereof, it being 
 known as "Hunyadi water." That in the month of March, 1876, said 
 Andreas Saxlehner executed a contract to a corporation known as the 
 "Apollinaris Company, Limited," of London, by which he granted to 
 said company the exclusive right to sell his said natural "Hunyadi 
 Janos" bitter water in Great Britain, its colonies and possessions and 
 the United States of America, and other transmarine countries for the 
 term of ten years, which contract was thereafter further extended and 
 terminated on the 25th day of March, 1896. 
 
 8. That about the time when said contract was entered into a label 
 was designed to be used on the bottles of such water which were to 
 be sold through said "Apollinaris Company. Limited," of substantially 
 the same contents and characteristic parts as the label theretofore 
 used, but of a different color, the body of the label being of blue color, 
 while the red color of the central field was substantially retained. 
 That the name "Hunyadi Janos" together with the historical portrait
 
 774 APPENDIX J. 
 
 and the name of "Andreas Saxlehner" were retained on same label in 
 the same manner as before, as was also the division into three longi- 
 tudinal fields; and the general style of the bottles, as also the capsule 
 and imprint thereon above described remained the same. That said 
 label was substantially like the label used by your orator, the suc- 
 cessor of Andreas Saxlehner in said business, as hereinafter referred 
 to. That soon thereafter there was added to said blue and red label a 
 small narrow strip on the top thereof, in the same blue color contain- 
 ing the printed words "Sole exporters: The Apollinaris Company, Lim- 
 ited, London," which strip has been since retained, the reading of the 
 print being thereafter changed to "Proprietor: Firm of Andreas Sax- 
 lehner, Budapest, Hungary." 
 
 9. That ever since the adoption of said red and blue label, as afore- 
 said, in or about the year 1876, large quantities of such bitter water 
 thus bottled and labeled were exported by the said Andreas Saxlehner 
 through said Apollinaris Company, Limited, to the United States of 
 America, and there sold to the public, and said water became known 
 in the United States of America under the name of "Hunyadi water," 
 and became known under the name as the property of said Andreas 
 Saxlehner, and was ordered and sold under such name, the same being 
 an abbreviation of the name "Hunyadi Janos." That a large traflBc 
 and business in exporting to the United States, and vending therein 
 said water, was established and continuously carried on and is now 
 carried on by your orator as successor in business of said Andreas 
 Saxlehner. 
 
 10. That on May 24, 1889, said Andreas Saxlehner died, and your 
 orator, his widow, thereupon succeeded him in said business of bottling 
 and exporting said Hunyadi Janos water, and became and is the pro- 
 prietor thereof. 
 
 11. That since the termination of said contract with said Apollinaris 
 Company, Limited, your orator has continued said business of ship- 
 ping to the United States, and selling therein said Hunyadi Janos 
 water, commonly known as Hunyadi water, in bottles and with labels 
 and capsules thereon substantially as hereinbefore last described, ex- 
 cepting that upon said labels the statement is contained, "Proprietor: 
 Firm of Andreas Saxlehner, Budapest, Hungary," in place of an indi- 
 cation of the Apollinaris Company as exporters. That your orator is 
 the sole proprietor of the firm of Andreas Saxlehner, and lawfully 
 doing business in Austria-Hungary, under said firm name. 
 
 12. That on or about the 12th day of November, 1886, said Andreas 
 Saxlehner duly made application to the United States Patent OflSce, 
 according to the statute of the United States therefore provided, for 
 registration of the name "Hunyadi" as his trademark for natural 
 aperient waters, and such proceedings were thereafter had, that on or 
 about the 5th day of April, 1887, a certificate of registration of said 
 trademark "Hunyadi" was duly issued to him by said United States 
 Patent Ofllce, dated on said last-mentioned day, and numbered 14252,
 
 FORMS OF BILLS AND ANSWERS. 775 
 
 to which certificate, or a certified copy thereof, ready in court to be 
 produced, your orator refers for greater certainty. 
 
 13. That by reason of said sales by your orator and her predeces- 
 sors in business, and his and your orator's agents as aforesaid, the 
 said word "Hunyadi" on said label by her used and her predecessor as 
 aforesaid, dealers in mineral water, and the purchasers and consumers 
 of said water generally have come to know and have long known your 
 orator's mineral water under the names and trademarks, "Hunyadi" 
 or "Hunyadi Janos," and under the said label, and in the style of 
 bottles, capsules and labels as before described, and that the water 
 so furnished and sold by your orator in the United Slates is procured 
 directly from the well or wells aforesaid, and, therefore, to rely upon 
 the said label and trademark as an assurance and guarantee of the 
 genuineness, strength and purity of the said water, and your orator 
 alleges that said assurance and guarantee was and is of great value to 
 your orator and to the dealers and consumers of said water. And that 
 said water so sold by your orator has come generallj to be known and 
 designated by the trade so called, and by purchasers and consumers 
 of the water in the United States of America by the first and charac- 
 teristic word of said trademark, "Hunyadi," the "Janos" being com- 
 paratively seldom used in common parlance in this country. 
 
 14. And your orator further shows unto your honors that the de- 
 fendant above named, well knowing the premises and the rights exist- 
 ing in and secured to your orator as aforesaid, but contriving to injure 
 your orator and deprive her of the benefits and advantages which 
 might and otherwise would accrue unto her from the enjoyment of 
 such rights and to injure and impose upon the public, subsequent to the 
 adoption of the said trademark, label, bottle and capsules by your 
 orator and her predecessor, recently and before the commencement of 
 the suit, as your orator is informed and believes, in the City of New 
 York and elsewhere, without license or allowance and against the will 
 of your orator, in violation of the rights of your orator and infringing 
 the said trademark, did unlawfully and wrongfully import for sale and 
 sell and offer for sale bitter water not coming from your orator's said 
 wells in bottles of identical shape and size as those used by your orator 
 and with certain capsules thereon stamped with a portrait in imitation 
 of that impressed on your orator's capsules, surrounded by a circular in- 
 scription and the initials H. L. and with labels on said bottles bearing 
 the name "Hunyadi Laszlo," Budai Keseriiviz, and a portrait in the 
 middle field of said label, set in a medallion, all in close and fraudu- 
 lent simulation of your orator's trademark; and that defendant's said 
 labels also further imitate your orator's labels by being divided in 
 three longitudinal fields, covering almost the whole body of the bottle, 
 the color of the middle field being red, and that of the body of the 
 label being blue, and in many other particulars, all contrived to induce 
 the public to take defendant's said water as and in place of your 
 orator's water. 
 
 And that other bottles of such water, sold by said defendant, imitate
 
 776 APPENDIX J. 
 
 your orator's bottles in shape, size and color, capsule and label, being 
 marked with the name "Hunyadi Matyas," and bearing a label de- 
 signed in close and fraudulent simulation of your orator's said label 
 in color, division into three panels and printed matter contained 
 thereon, including a medallion portrait in the central panel and 
 repeated on the capsule. 
 
 15. And your orator further shows that the similarity between the 
 said bottles, capsules, labels and names used respectively by your 
 orator and the defendant is so great that the public and consumers 
 and purchasers are likely to be deceived thereby, and are in fact 
 deceived to suppose the water so sold by the said defendant to be that 
 sold by your orator and thereby to cause your orator great loss and 
 damage. 
 
 16. That until the year 1890 your orator and her said predecessor 
 in business did not enjoy adequate protection in Hungary in the use 
 of her and his trademarks, tradenames and labels on account of the 
 lack of statutes regulating such matter, by reason of which fact other 
 persons used the name Hunyadi in connection with other names as 
 trademarks for other bitter waters, and closely imitated your orator's 
 labels, capsules and bottles, and your orator's predecessor was unable 
 to stop such fraudulent practices. That since 1890, the law of Hungary 
 has been changed, and your orator has succeeded in causing all these 
 fraudulent marks and labels to be suppressed by proper proceedings 
 brought for this purpose, including also the use of the name "Hunyadi 
 Laszlo" and "Hunyadi Matyas," and the labels upon which said names 
 were used by the proprietors of the springs from which said defend- 
 ant's waters came, and that the further use of said names is now a 
 criminal offense in Hungary. 
 
 That your orator has duly notified said defendant of her rights and 
 claims in the premises and requested it to desist from such further 
 sales, but said defendant has refused and still refuses so to do. 
 
 19. That the value of the matter in dispute between your orator 
 and the defendant, exclusive of interest and costs, exceeds the sum 
 of two thousand dollars. 
 
 20. That by reason of the said acts done or threatened and intended 
 to be done by said defendant, all in defiance of the rights of your 
 orator, as aforesaid, great and irreparable loss and injury has been, 
 is and will be caused to your orator, and she has been and is and 
 will be deprived of great gains, profits and advantages which might 
 and otherwise would be obtained and enjoyed; and your orator is 
 informed and believes that the said defendant by reason of the said 
 sales of the said water under the names of Hunyadi Laszlo, and 
 Hunyadi Matyas, and the said labels, capsules and bottles, has made 
 and realized large profits and advantages, and now has in its possession 
 or under its control, or subject to its order a large quantity of said 
 waters so bottled, capsuled and labeled which it proposes to sell, but 
 to what extent said sales have been made and how large profits have 
 been derived therefrom, your orator does not know and prays a dis-
 
 FORMS OF BILLS AND ANSWERS. 777 
 
 covery thereof. And your orator further says that such sales made 
 by the said defendant, and the threats and intention of defendant to 
 make such further sales and said unlawful acts in disregard and 
 defiance of the rights of your orator have the effect to and do encour- 
 age and induce others to interfere with the said trademark and label, 
 and to violate and disregard your orator's rights. 
 
 And, forasmuch as your orator can have no adequate relief except 
 in this court, to the end, therefore, that the said defendant may, if it 
 can, show why your orator should not have the relief hereby prayed 
 and may, according to the best and utmost knowledge, remembrance, 
 information and belief of its officers, full, true, direct and perfect 
 answers make to the premises and to all the several matters herein- 
 before stated and charged as fully and particularly as if severally 
 and separately interrogated as to each and every of such matters, 
 and may be compelled to account for and pay to your orator the 
 profits by it acquired and the damages suffered by your orator from 
 the aforesaid unlawful acts. But an aswer under oath is hereby 
 expressly waived. 
 
 Your orator prays that the said defendant, its oflacers, servants, 
 agents, attorneys and workmen, and each and every of them, may 
 be restrained and enjoined provisionally and permanently by the order 
 and injunction of this honorable court from procuring, parting with, 
 selling or attempting to sell within the United States of America any 
 water or liquid not coming from the said wells of your orator under 
 the name or designation of Hunyadi Laszlo or Hunyadi Matyas or 
 any name or designation in which the word "Hunyadi" occurs, and 
 also from procuring, parting with, selling or attempting to sell within 
 the said limits any such water in any bottle or vessel imitating or 
 resembling in form, color and general appearance those used as afore- 
 said by your orator and her predecessor in business, or bearing upon 
 it any capsule stamped in any manner imitating or resembling the 
 said capsules of your orator, or any label in form, color, design and 
 general appearance imitating or resembling the said label of your 
 orator on the said bottles of Hunyadi Janos water, and also from 
 procuring, parting with or selling or attempting to sell within said 
 limits any such water put up or contained in bottles resembling and 
 bearing capsules, marks and labels resembling those of your orator 
 -or bearing the name "Hunyadi." 
 
 And your orator also prays that defendant may be decreed to deliver 
 up unto your orator or to this honorable court any and all labels in 
 its possession upon which the words "Hunyadi" or Hunyadi Laszlo 
 and Hunyadi Matyas appear, or which are madG in imitation of or 
 resembling those adopted and used by your orator, and any and all 
 bottles, whether filled or unfilled, and all capsules which imitate or 
 resemble the bottles and capsules used by your orator for said 
 "Hunyadi Janos" water, and to pay unto your orator all profits derived 
 by the said defendant from the sale of any water under the said name 
 Hunyadi Laszlo or Hunyadi Matyas, or any name or designation In
 
 778 APPENDIX J. 
 
 which the word "Hunyadi" appears, or any vessel upon which was 
 or is affixed the label or capsules resembling those adopted and used 
 as aforesaid by your orator, as well as the costs of this suit; and that 
 your orator may have such further relief or such other or different 
 relief as to this honorable court shall seem meet and as shall be 
 agreeable to equity. 
 
 May it please your honors to grant unto your orator the writ of 
 injunction, as well provisional as permanent, issuing out of and 
 under the seal of this honorable court, commanding, enjoining and 
 restraining the said defendant, its officers, servants, agents, attorneys 
 and workmen, and each and every of them as is hereinbefore and in 
 that behalf prayed. 
 
 May it please your honors to grant unto your orator the writ of 
 subpoena issuing out of and under the seal of this honorable court 
 directed to the said defendant, Eisner & Mendelson Company, by a 
 certain day and under a certain penalty to be and appear in this 
 honorable court, there and then to answer the premises and to stand 
 to and abide such order and decree as may be made against it. 
 
 And your orator will ever pray, &c. 
 
 B. & K., 
 Complainant's Solicitors. 
 
 BILL OF COMPLAINT. 
 
 (Hennessy v. Herrmann, 89 Fed. Rep. 669.) 
 
 In the Circuit Court of the United States for the Northern Judicial 
 District of the State of California. 
 
 Jacques Richard Maurice Hennessy,' 
 Jacques Francis Henry Hennessy, 
 James Richard Charles Hennessy, 
 Armand Castillon and Emmanuel )■ In Equity. 
 Castaigne, 
 
 against 
 J. H. and C. S. 
 
 To the Honorable Judges of the Circuit Court of the United States 
 for the Northern Judicial District of California: 
 
 First. J. R. M. H., J. F. H. H., J. R. C. H., A. C. and E. C, all 
 of Cognac in France, and citizens of the Republic of France, bring 
 this their bill of complaint against J. H. and C. S., of the city and 
 county of San Francisco, state of California, residents of the North- 
 ern Judicial District aforesaid, and citizens thereof, and thereupon 
 your orators complain and say: 
 
 Second. Complainants state that at all the times hereinafter men- 
 tioned they were copartners under the firm name and style of James
 
 FORMS OF BILLS AND ^VNSWERS. 779 
 
 Hennessy and Company. That the complainants are, and for a long 
 time previous to the commission of the grievances hereinafter men- 
 tioned have been, exporters, bottlers and vendors of a cordial or 
 liquor known as Hennessy brandy, which the complainants and their 
 predecessors in the partnership business have for upwards of thirty 
 years last past produced, bottled and sold. 
 
 Third. That said brandy when bottled by these complainants is 
 put up in peculiar tall, dark colored bottles, to wit, twelve inches in 
 height, bearing (a) a rectangular label bearing the inscription, "Jas. 
 Hennessy & Co., Cognac," in gold letters on a white ground, encircled 
 by a wreath of vine leaves and grapes, in gold, said w'reath being 
 surmounted by an arm bearing a battle axe, also in gold; (b) a small 
 oblong label of white with gold border lines, bearing the word "France" 
 in gold; (c) a crescent-shaped label; (d) a cork branded with the 
 words "James Hennessy & Co."; (e) a metal capsule; all with their 
 own proper devices and trademarks adopted by the complainants 
 for that purpose the year A. D. 1870, and all encased in square wooden 
 boxes holding twelve bottles each. 
 
 Fourth. That complainants' trademarks have been duly registered 
 under the provisions of the statute of the United States in the year 
 A. D. 1881. That by reason of the long experience and great care 
 of the complainants in their said business, and the good quality of 
 said brandy, distinguished as it was by its trademarks, tradenames, 
 labels, corks, capsules, and the shape, size and color of its bottles, 
 the same has become widely known in the community and throughout 
 the world as a useful and valuable cordial and acquired a high repu- 
 tation as such, and has commanded and still commands an extensive 
 sale throughout the United States and Europe, which is and has been 
 a source of great profit to these complainants. That your orators' 
 tradename and trademarks are of a value of two thousand dollars 
 and upwards. That said brandy when bottled by complainants is 
 known as such brandy to the public, buyers and consumers thereof 
 by the said name of James Hennessy & Company's brandy, or Hen- 
 nessy brandy, or Hennessy cognac, together with the complainants' 
 own proper devices, tradenames, and trademarks aforesaid, and by its 
 straw wrappers or casings accompanying and enclosing said bottles, 
 and by the peculiar shape and color of the bottles themselves. 
 
 Fifth. Complainants state that notwithstanding the long and quiet 
 use and enjoyment by the complainants of said tradename and trade- 
 mark and to the form, device and descriptive matter of said labels, 
 the defendants, well knowing the premises and with the preconceived 
 intention to injure the complainants, and with the purpose to defraud 
 them, and with the purpose to deprive these complainants of the 
 benefits and profits resulting from the great reputation acquired for 
 said brandy, and the consequent demand therefor, and with the intent 
 to acquire for themselves the benefits and profits of said reputation, 
 and with the intent to assist others to palm off on the public brandy 
 not being exported, sold or bottled by complainants, as the goods of
 
 780 APPENDIX J. 
 
 the complainants, and in wilful disregard of complainants' rights in 
 the premises, kept, offered for sale and sold, and advertised for sale, 
 and now keep, offer for sale and sell in the city and county of San 
 Francisco and state of California, and elsewhere in the United States 
 of America, counterfeit labels in imitation of complainants' labels 
 under the name of "Hennessy & Co.," using fac-similes of complain- 
 ants' tradename, devices and labels, which with intent to deceive 
 and defraud the public and the buyers and consumers thereof they 
 have caused to be sold to dealers engaged in counterfeiting the bottled 
 brandy of your orators; that defendants sold said labels for the pur- 
 pose and with the intent that they should so be used, and that in 
 fact they have been so used, in fraud of your orators' rights. 
 
 Sixth. That such imitation labels are calculated to deceive the pur- 
 chasers and consumers of said brandy, and are calculated to cause 
 the public and the buyers and consumers thereof to believe that the 
 brandy kept and offered for sale and sold by defendants' customers 
 is the brandy exported, bottled and sold by the complainants. 
 
 Seventh. That such imitation is calculated to deceive and mislead 
 the purchasers and consumers of the complainants' brandy, and has 
 actually deceived and misled and still does mislead many of them to 
 buy the brandy or liquor sold by the defendants' customers in the 
 belief that it is the brandy exported and bottled by the complainants, 
 to the great loss, injury and damage of the complainants. That the 
 article so put up and sold by the defendants' customers is of greatly 
 inferior quality to that of the complainants, and deleterious to the 
 health of the consumer, and the general esteem and reputation of the 
 brandy exported by the complainants has been and is now being 
 injured and damaged thereby. 
 
 Eighth. Forasmuch as your orators can have no adequate relief 
 except in this court, and to the end, therefore, that the defendants 
 may, if they can, show why your orators should not have the relief 
 hereby prayed, and may make a full disclosure and discovery of all 
 the matters aforesaid, and according to the best and utmost of their 
 knowledge, remembrance, information and belief, full, true, direct and 
 perfect answer make to the matters hereinbefore stated and charged, 
 but not under oath, an answer under oath being expressly waived. 
 
 And that the defendants may be decreed to account for and pay over 
 adequate damages arising from their aforesaid acts in violation of 
 your orators' rights, your orators pray that your honors may grant a 
 writ of injunction issuing out of and under the seal of this honor- 
 able court, perpetually enjoining and restraining the said defendants, 
 their clerks, attorneys, agents and servants from keeping, offering 
 for sale, or selling any brandy not being the brandy exported and 
 bottled by your orators, put up in bottles of the general form, shape 
 and color of complainants' bottles, and wrapped with labels of the 
 form, device and in the manner complained of, or in any other form 
 and device which shall be a colorable imitation of complainants' 
 brandy, or from applying to any such brandy the name "Hennessy
 
 FORMS OF BILLS AND ANSWERS. 781 
 
 Brandy," or from using upon or in connection with said brandy or 
 any counterfeit of your orators' labels or cases the name "Hennessy," 
 or any combination of such name or name of like sound, and that the 
 defendants deliver up to your orators all bottles having thereon said 
 false label, and also all such false labels in their possession or under 
 their control, to the end and purpose that the same may be destroyed. 
 
 And that your honors upon the rendering of the decree above prayed 
 may assess, or cause to be assessed, the damages your orators have 
 sustained by reason of the premises. 
 
 May it please your honors to grant unto your orators not only a 
 writ of injunction conformable to the prayer of this bill, but also a 
 writ of subpoena of the United States of America, directed to the said 
 J. H. and C. S., commanding them on a day certain to appear and 
 answer unto this bill of complaint, and to abide and perform such 
 order and decree in the premises as to the court shall seem proper 
 and required by the principles of equity and good conscience. 
 
 J. L. H., of Counsel. A. L. P. and J. L. H., 
 
 Solicitors for Complainants. 
 
 United States of America, 
 Northern Judicial District of California, 
 
 J. L. H., on behalf of the said complainants, Jacques Richard 
 Maurice Hennessy, Jacques Francis Henry Hennessy, James Richard 
 Charles Hennessy, Armand Castillon and Emmanuel Castaigne, and 
 duly authorized to act for them herein, being on his oath sworn, 
 deposeth and says that he has read the above bill of complaint, and 
 that the matters therein set forth are true to his best knowledge, 
 information and belief. 
 
 Subscribed and sworn to before me, this 19th day of July, 1898. 
 
 S. H., 
 Clerk U. S. Cir. Ct, N. D. C. 
 
 ANSWER. 
 
 (Benkert v. Feder, 34 Fed. Rep. 534.) 
 
 In the Circuit Court of the United States in and for the Ninth Circuit 
 and District of California. 
 
 "Wnj-iAM J. Benkekt, Complainant, 
 
 vs. 
 
 Morris Rosenthal and Samuel F^der, 
 
 Defendants. 
 
 No. 3507. 
 
 The answer of M. R. and S. F. to the bill of complaint of W. J. B,, 
 complainant. 
 
 These defendants, saving and reserving to themselves all right of 
 exception to said bill of complaint on account of the many errors 
 therein contained, for answer thereto or to so much and such parts 
 thereof as they are advised by counsel it is necessary or important 
 for them to make answer unto, answering, say:
 
 782 APPENDIX J. 
 
 That they have no knowledge or information other than from said 
 bill of complaint as to the partnership or business of the complain- 
 ant and Casper Benkert, or the continuance thereof, and cannot admit 
 or deny the allegations of said bill relative thereto, and insist that 
 complainant make proof thereof. 
 
 Defendants say that they have no knowledge or information other 
 than from said bill of complaint as to the sale by Casper Benkert to 
 complainant of his interest in said alleged business and the carrying 
 or. and ownership and proprietorship thereof, and cannot admit or 
 deny the allegations of said bill relative thereto, and insist that com- 
 plainant make proof thereof. 
 
 Defendants say that they have no knowledge or information other 
 than from said bill of complaint as to the business of the partnership 
 of C. Benkert & Son and of complainant, or of the boots and shoes 
 manufactured and sold by them or either of them, or of the quality, 
 quantity and price of such boots and shoes, or the mark or other 
 designation thereof or thereon, and cannot admit or deny the allega- 
 tions of said bill relative thereto, and insist that complainant make 
 proof thereof. 
 
 Defendants say that they have no knowledge or information other 
 than from said bill of complaint as to the placing as a trademark 
 upon said boots and shoes, and to indicate the ownership and origin 
 thereof, the words "C. Benkert & Son," and to the knowing of said 
 boots and shoes by the name of "C. Benkert & Son," and cannot 
 admit or deny the allegations of said bill relative thereto, and insist 
 that complainant make proof thereof. 
 
 Defendants say that they have no knowledge or information other 
 than from said bill of complaint as to the name of "C. Benkert & Son" 
 being a trademark, or the ownership of said name, or the right to use 
 and place the same upon boots or shoes, and cannot admit or deny the 
 allegations of said bill relative thereto, and insist that complainant 
 make proof thereof. 
 
 These defendants and each of them deny that they have for more 
 than five years last past been partners in trade as set forth in said 
 bill of complaint, except as follows: for the four years previous to the 
 month of March, 1884, they, with one Bromberger, were partners in 
 trade under the firm name of Rosenthal, Feder & Co., and in said 
 month said Bromberger retired from the copartnership formed by 
 them; since said month these defendants have been partners in trade 
 as sot forth in said bill of complaint. 
 
 These defendants and each of them deny that within five years or 
 at any time or times whatsoever they or either of them had manufac- 
 tured or sold, or are now manufacturing or selling, large or any 
 quantities of boots and shoes or boots or shoes, or each or either, on 
 any of which they have placed in plain or conspicuous letters, or at 
 all, the name of "C. F. Benkert & Son," in imitation of the name of 
 "C. Benkert & Son," as alleged in said bill of complaint, or at all. 
 
 Defendants and each of them deny that they or either of them have
 
 FORMS OF BILLS AND ANSWERS. 783 
 
 stamped in sole-leather or buttons or any other part of said boots and 
 shoes, or any boots or shoes whatsoever, in plain conspicuous letters 
 or otherwise, the name or words "C. F. Benkert & Son, Phila." 
 
 Defendants deny that they have manufactured or are still manufac- 
 turing said boots and shoes or any boots or shoes marked with the 
 name of "C. F. Benkert & Son" in San Francisco, Hawaiian Islands, 
 other domestic or foreign markets or elsewhere, and admit and show 
 to this court that they have sold in San Francisco and elsewhere a 
 small quantity of boots and shoes marked "C. F. Benkert & Son," 
 comprising not more than two hundred and fifty dozen pairs thereof; 
 and further state and show that the boots and shoes so sold were of 
 an entirely different class, style, nature and grade from the boots and 
 shoes alleged in said bill of complaint to be manufactured by the com- 
 plainant and as such were recognized by and sold to the customers 
 and patrons of these defendants. 
 
 Defendants say they have no knowledge or information other than 
 from said bill of complaint as to the relative quality, cost of manu- 
 facture and prices of sale of said boots and shoes and the boots and 
 shoes made by the complainant, and cannot admit or deny the allega- 
 tions of said bill relative thereto, and insist that complainant make 
 proof thereof. 
 
 Defendants and each of them deny that they have had manufac- 
 tured for them as set forth in said bill of complaint large or any 
 quantities of boots or shoes or any boots or shoes whatever on which 
 was printed the name "C. F. Benkert & Son" or stamped "C. F. 
 Benkert & Son, Phila.," as set forth in said bill of complaint, excepting 
 not more than three hundred and twenty-one dozens thereof, and the 
 defendants and each of them deny that they have sold or are still 
 selling boots and shoes with said words printed or stamped thereon in 
 San Francisco or elsewhere, excepting that they have heretofore sold 
 not more than the two hundred and fifty dozens thereof aforesaid. 
 
 The defendants and each of them deny that they have placed or 
 caused to be placed on said boots or shoes alleged to have been sold by 
 them or upon any other boots or shoes whatsoever said words, to wit, 
 "C. F. Benkert & Son," for the purpose of deceiving the public or 
 purchasers generally, or any other person, or causing them or any 
 of them to believe the said boots or shoes were manufactured by the 
 complainant or at all. They deny that the public or purchasers gen- 
 erally or any of them have been deceived or have believed on account 
 of said names being on said boots or shoes that the same were genuine 
 or other boots or shoes manufactured by the complainant, and that 
 being deceived as alleged in said bill of complaint, or being deceived 
 at all, have purchased or are now purchasing, or these defendants 
 have sold or are now selling, said boots or shoes as or for genuine or 
 other boots or shoes manufactured by the complainant They deny 
 that by any of the acts and doings set forth in said bill of complaint 
 they or either of theru have unlawfully or otherwise greatly or at all 
 injured or depreciated the complainants' trade in fine or other boots
 
 784 APPENDIX J. 
 
 or shoes, or the good or other reputation or standing of said boots or 
 shoes, alleged in said bill of complaint to have been had by them. 
 
 Defendants and each of them deny that, unless restrained by injunc- 
 tion, they by using said name on the boots and shoes sold by them 
 will infringe on the alleged name and trademark of the complainant 
 and deny that they have already at any time been doing the same. 
 
 The defendants state and show that they have sold not more than 
 two hundred and fifty dozens of boots and shoes marked "C. F. Benk- 
 ert & Son," and have realized therefrom a profit of about and not 
 more than five hundred (500) dollars. 
 
 The defendants and each of them deny that by reason of the said 
 alleged infringement, or of any other act or doing of these defendants 
 or either of them, the complainant has suffered loss or damage to 
 a very large or other amount or any loss or damage whatsoever. 
 
 Without this that there is any other matter, cause or thing in the 
 said bill of complaint contained material or necessary for these defend- 
 ants or either of them to make answer unto and not herein and hereby 
 well and sufliciently answered, confessed, traversed and avoided is 
 true to the knowledge or belief of these defendants; all of which 
 matters and things these defendants are ready and willing to aver, 
 maintain and prove as this honorable court shall direct, and humbly 
 pray to be hence dismissed with their reasonable costs and charges 
 in this behalf most wrongfully sustained. 
 
 M., B. & M., 
 I. S. B., Solicitors for Defendants. 
 
 Of Counsel for Defendants. 
 
 ANSWER. 
 (Brown Chemical Co. v. Meyer, 139 U. S. 540.) 
 
 THE JOINT ANSWER OF CHRISTIAN F. G. MEYER, et al. to the 
 Bill of Complaint of the BROWN CHEMICAL COMPANY. 
 
 These defendants now and at all times hereafter saving and reserv- 
 ing unto themselves all benefit and advantage of exception which can 
 or may be had or taken to the many errors, uncertainties and other 
 Imperfections in the said bill contained for answer thereto or to so 
 much and parts thereof as these defendants are advised it is material 
 or necessary for them to make answer unto, say, etc. 
 
 These defendants have no information sufficient to form a belief 
 as to whether or not said complainant has for a period of many years 
 last past been engaged in the preparation and sale of a certain 
 medicine at the city of Baltimore and therefore call for strict proof 
 of same although defendants are informed and believe that complain- 
 ant has been engaged in the preparation and sale of a medicine, but 
 these defendants on information and belief deny that said medicine 
 has acquired or long enjoyed a very high or any particular reputation
 
 FORMS OF BILLS AND ANSWERS. 785 
 
 as a remedy for the prevention or cure of many or any dis^jases, but 
 whether it is sold in immense or any considerable quantities to com- 
 plainant's great profit these defendants have no information sufflcieac 
 to form a belief although defendants believe that complainant be 
 sold enough of said medicine to make some profit. 
 
 These defendants further answering said bill of complaint admit, 
 on information and belief, that said complainant as alleged In said 
 bill has adopted, applied and used, and is using a certain label wiiu 
 the words and representations as described and set forth in said bill, 
 but as to whether or not as set forth in said bill said label has been 
 used since about the year 1879, or as to whether or not said complain- 
 ant devised or originated said label, these defendants have no informa- 
 tion sufficient to form a belief, and therefore calls for strict proof 
 of said allegations. 
 
 These defendants further answering said bill of complaint admit on 
 information and belief that the designation "Browns Iron Bitters" 
 has come to be associated with complainant's medicine or product, 
 but whether or not to the exclusion of all others, defendants cannot 
 say as matter of law, but defendants say as matter of fact, no other 
 Brown Iron Bitters are known to these defendants, and that those 
 desiring complainant's medicine are in the habit of using the designa- 
 tion "Browns Iron Bitters" with the understanding that it means com- 
 plainant's medicine alone since there are no other Browns Iron Bitters 
 made up or sold to the trade as defendants are informed and believe; 
 and that whenever the said designation, Browns Iron Bitters are used, 
 it means a medicine prepared and put up by complainant at the city 
 of Baltimore, in the State of Maryland, 
 
 These defendants further answering said bill of complaint say they 
 have no information sufficient to form a belief as to whether or not 
 said complainant has spent large sums of money in advertising 
 amounting to hundreds of thousands annually, although defendants 
 believe complainant has advertised extensively. Defendants admit 
 that complainant's output has been of great magnitude, amounting 
 to many thousands of bottles annually, but as to whether or not said 
 bottles have all borne a label consisting in part of the words "Browns 
 Iron Bitters," these defendants do not know, but believe and suppose 
 it is so. 
 
 These defendants admit on information and belief that the said 
 designation "Browns Iron Bitters" has come to be identified with said 
 complainant's product, but not to the exclusion of all others as matter 
 of legal right, although as before stated, these defendants know of 
 no other "Browns Iron Bitters" in the trade. Defendants do not knov/ 
 whether or not said designation is known and is now used in all parts 
 of the United States by consumers generally when they desire to obtain 
 the said preparation of complainant, although these defendants know 
 of no other preparation of the same designation. 
 
 These defendants further answering said bill of complaint say they 
 have no information sufficient to form a belief as to whether or not 
 50
 
 786 APPENDIX J. 
 
 said designation has ever been employed in connection with any other 
 preparation or remedy, and therefore calls for strict proof of the 
 same; but these defendants deny that the said designation is to all 
 intents and purposes, or to any intent or purpose complainant's trade- 
 name or trademark, or that said complainant now has or has ever had 
 the exclusive right to the use of said designation as a tradename or 
 trademark for a medicinal preparation or otherwise, or that no one 
 except complainant has had, or now has any right to use said designa- 
 tion as a tradename or trademark for a medicinal preparation or 
 otherwise; and these defendants further answering deny that they 
 have done anything which is fraudulent or which will be restrained 
 by this Honorable Court. 
 
 These defendants further answering said bill of complaint admit 
 that they were engaged in business as wholesale druggists at the city 
 of St. Louis, in the State of Missouri, but deny that they have been 
 long or at all cognizant of the high reputation or any particular 
 reputation of complainant's medicine, but admit that for some time 
 they have known of the said designation "Browns Iron Bitters." 
 
 These defendants further answering said bill of complaint admit 
 that prior to the commencement of this suit and as well since they 
 had and have sold medicine put up in bottles to which have been 
 attached and applied labels containing the words "Browns Iron Tonic," 
 but these defendants explicitly deny that such sales or any of them 
 were or have been made in order to injure complainant by diverting 
 any profits of complainant in the sale of its medicine or otherwise, or 
 that such sales were fraudulently made, or that the bottles or the 
 labels thereon containing the words "Browns Iron Tonic," were in- 
 tended by these defendants or any of them to indicate that the 
 medicine contained in said bottles was prepared and put up by com- 
 plainant; and these defendants deny that they ever have fraudulently 
 offered or caused to be offered or sold or that they still fraudulently 
 offer or cause to be offered or sold in large or any quantities the 
 said medicine so as aforesaid labelled "Browns Iron Tonic," although 
 these defendants admit that they have, as of right they might, offered 
 and sold and still offer for sale said "Browns Iron Tonic"; as they 
 have bought and sold complainant's said medicine, but without loss 
 or injury to said complainant. 
 
 These defendants further answering said bill of complaint, deny 
 that large or small, or any quantities or quantity of said Browns Iron 
 Tonic have been, through any act of these defendants, or any of them, 
 or through any use by them of said designation of "Browns Iron 
 Tonic" at any time sold as or for complainant's "Browns Iron Bitters" 
 or mistaken therefor in any instance, or that said Complainant has 
 lost anything or been injured thereby. 
 
 These defendants further answering said bill of complaint, deny 
 that it was their purpose to offer or sell said "Browns Iron Tonic" 
 upon any reputation established by complainant or as or for com- 
 plainant's said alleged celebrated "Browns Iron Bitters"; and defend-
 
 FORMS OF BILLS AND ANSWERS. 787 
 
 ants deny that any of their acts in the premises have been or are 
 contrary to equity or good conscience, or that they ought to be 
 enjoined from the further sale of said "Browns Iron Tonic." 
 
 These defendants further answering said bill of complaint state 
 that while they claim and allege that the words "Browns Iron Bitters" 
 are not the subject of trademark or tradename, and that defendants 
 or anybody else might legally use the same words especially if as in 
 this case, the entire designation is not used but is changed so as to 
 exclude the idea of any misleading or fraudulent purpose; yet these 
 defendants have as good right as complainant possibly could have 
 to the use of the entire designation "Browns Iron Bitters" and as 
 ground of this claim and as further answer to said bill of complaint, 
 these defendants aver on information and belief, and charge the truth 
 to be that in or near the summer of 1881, one E. L. B. in connection 
 "With one C. J. L. commenced putting up and selling the said prep- 
 aration "Browns Iron Tonic" at Little Rock, Arkansas, as a wholly 
 distinct preparation from "Browns Iron Bitters", and without any 
 intention or purpose to imitate complainant's said preparation, which 
 at that time had not been advertised or sold to any great extent, as 
 these defendants on information and belief aver. Subsequently to this 
 date, as these defendants on information and belief, aver, said B. sold 
 out his interest in said preparation to said C. J. L., who has since 
 that time been putting up, at Little Rock, Arkansas, said medicine, 
 and offering it to the public, and these defendants have bought some 
 of it and sold some of it, viz: Four gross bottles before March 24th, 
 1886, and since that date about seven gross bottles. 
 
 These defendants further aver that the said preparation "Browns 
 Iron Tonic" as offered and sold by him, as well as by said B. & L. 
 and since by said L., has been put up in cartons and bottles wholly 
 differing in size, color and appearance from said complainant's bottles 
 and with labels adapted and applied to the bottles wholly differing 
 in size, color, appearance and details from complainant's labels, 
 which are enclosed in wrappers wholly different from said cartons of 
 "Browns Iron Tonic", so that the public could not be misled or the 
 complainant injured, which has always been very far from these 
 defendants' purpose or object, and as well very far from said B. and 
 L.'s purpose or object as these defendants believe; these defendants 
 exhibit and file with this answer a bottle of "Browns Iron Tonic" 
 ■with its carton and label marked exhibit "C" and as well a label, 
 wrapper and bottle of complainant's preparation, marked Exhibit "D", 
 and pray that the Court will consider them as part of this answer. 
 
 These defendants further answering said bill of complaint, on in- 
 formation and belief, aver and charge the truth to be that early in 
 1882, the said complainant entered into a correspondence with said 
 L. & B. with respect to said "Browns Iron Tonic", and said L. & B. 
 sent complainant a sample bottle of their Tonic, wrapper and label. 
 Whereupon as a result of said correspondence and examination, said 
 complainant in a letter to said L. & B. expressed themselves as
 
 IbS APPENDIX J. 
 
 satisfied that said "Browns Iron Tonic" did not conflict with said 
 "Browns Iron Bitters", which letter was and is in words and figures 
 as follows: — 
 
 Baltimore, August 28th, 1882. 
 Mess. C. J. Lincoln & Co., 
 
 Little Rock, Ark. 
 Gentlemen: — Inclosing your invoice thank you for your kind and 
 satisfactory letter. "We wish the Browns Iron Tonic a success as upon 
 examination we cannot see where it can conflict with us except in 
 the multiplicity of the Brown family. 
 
 Your fr'ds, 
 
 Brown Chemical Co. 
 
 Said complainant has, as these defendants are informed and believe, 
 ever since the date of said letter, with full knowledge of all the facts 
 and after examination with respect to same, made no complaint of or 
 objections to the putting up and sale of said "Browns Iron Tonic" 
 until just before this suit was brought, and so by its said letter and 
 its long silence and acquiescence in the manufacture and sale of said 
 "Browns Iron Tonic" said complainant ought not in equity and good 
 conscience, if for no other reason, to be granted in a court of equity 
 any relief in the premises. 
 
 These defendants further answering said bill of complaint, deny 
 that the complainant has suffered by the acts of these defendants, 
 damage to the extent of Ten Thousand Dollars, or any other sum, or 
 that said complainant has been done any wrong by these defendants 
 or is entitled to any relief in the premises. 
 
 And these defendants deny all and all manner of unlawful com- 
 bination and confederacy, wherewith they are by the said bill charged, 
 without this, that any other matter, cause or thing in the complain- 
 ant's said bill of complaint contained, material or necessary for these 
 defendants to make answer unto, and not herein and hereby well and 
 sufficiently answered, confessed, traversed and avoided or denied, is 
 true, to the knowledge or belief of these defendants; all which matter 
 and things these defendants are ready and willing to aver, maintain 
 and prove, as this Honorable Court shall direct; and pray to be hence 
 dismissed with their reasonable costs and charges in this behalf most 
 wrongfully sustained. 
 
 B. A, & McK., 
 Solicitors for Defendants.
 
 APPENDIX K. 
 
 FORMS OF INJUNCTION. 
 
 INTERLOCUTORY DECREE. 
 
 (Benkert v. Feder, 34 Fed. Rep. 534.) 
 
 In the United States Circuit Court, Northern District of 
 California, Ninth Judicial Circuit. 
 
 WuLLiAM J. Benkkkt, Complainant, 
 vs. 
 Samuel Feueb and Auuelia Rosenthal. 
 Executrix of the Last Will and Testa- 
 ment of Mouuis Rosenthal, Deceased, 
 Defendants. 
 
 )■ No. 3507. 
 
 At a stated term, to wit, the February term, 1888, of the circuit 
 court of the United States of America of the ninth judicial circuit, in 
 and for the northern district of California, held at the court room 
 thereof, in the city and county of San Francisco, on Monday, the 1st 
 day of June, A. D., 1888. 
 
 Present: The Honorable Lorenzo Sawyer, circuit judge. 
 
 This cause having come on to be heard upon the bill of complaint 
 herein, the answer of the defendants, and replication of the complain- 
 ant, the bill of revivor, the stipulation of the parties in regard thereto, 
 and the proofs, documentary and written, taken and filed in said 
 cause, and having been argued by counsel for the respective parties 
 and submitted to the court for consideration and decision: 
 
 Now, therefore, on consideration thereof, it is ordered, adjudged and 
 decreed, and the court doth hereby order, adjudge and decree, as fol- 
 lows, to wit: 
 
 That the name of "C. Benkert & Son" has been a tradename and 
 also a trademark upon boots and shoes for upwards of twenty-five 
 years last past, and as such tradename and trademark is good and 
 valid in law. 
 
 That the complainant. William J. Benkert. is, and ever since the 
 year 1876 has been, the exclusive owner of said tradename and trade- 
 mark, and during all said time, at the city of Philadelphia, in the state 
 of Pennsylvania, has carried on the business, under the said trade- 
 name, of manufacturing and selling boots and shoes, and during all 
 said time has stamped and printed, and used upon all the said boots 
 
 789
 
 790 APPENDIX K. 
 
 and shoes so made and sold by him, the said words "C Benkert & Sou" 
 as a trademark. 
 
 That the original defendants herein, Samuel Feder and Morris 
 Rosenthal, have infringed upon the said tradename and trademark 
 and upon the exclusive rights of the complainant under the same — 
 that is to say, by manufacturing and selling within the ten years 
 last past, and prior to the commencement of this suit, large quantities 
 of boots and shoes upon each of which they have placed in plain, con- 
 spicuous, printed letters the name "C. F. Benkert & Son" in imitation 
 of the name "C. Benkert & Son" as charged in the bill of complaint. 
 
 And it is further ordered, adjudged and decreed, that the complain- 
 ant do have and recover of and from the defendants, Samuel Feder 
 and Aurelia Rosenthal, executrix of the last will and testament of 
 Morris Rosenthal, deceased, the profits, gains and advantages which 
 the said defendants or either of them have received or made, or which 
 have arisen or accrued to them, or either of them, from the infringe- 
 ment of the said tradename and said trademark of "C. Benkert & Son" 
 by the making, using and selling, or the making, using or selling of 
 said boots and shoes having placed thereon the name "C. F. Benkert & 
 Son" or any other name in imitation of complainant's tradename and 
 trademark of "C. Benkert & Son." 
 
 And it is further ordered, adjudged and decreed, that the said com- 
 plainant do recover of the defendants his costs and charges and 
 disbursements in this suit to be taxed. 
 
 And it is further ordered, adjudged and decreed, that it be referred 
 to S. C. Houghton, Esq., the standing master in chancery of this 
 court, residing in the city and county of San Francisco, northern dis- 
 trict, and state of California, to ascertain and take, and state, and 
 report to this court, an account of the number of pairs of boots and 
 shoes manufactured and sold or manufactured or sold by the original 
 defendants, Samuel Feder and Morris Rosenthal, or either of them, 
 and also the gains, profits and advantages which the said original 
 defendants or either of them, or the estate of said Morris Rosenthal, 
 have received, or made, or which have arisen or accrued to them or 
 either of them, or it, from infringing the said exclusive rights of the 
 said complainant by the manufacturing and selling, or manufacturing 
 or selling, of boots and shoes having stamped and placed upon them 
 the infringing trademark in imitation of the trademark of "C. Benkert 
 & Son." 
 
 And it is further ordered, adjudged and decreed, that the complain- 
 ant on such accounting have the right to cause an examination of the 
 defendants, Samuel Feder and Aurelia Rosenthal, and each of them, 
 and their and each of their agents, servants, or workmen or other 
 witnesses as may be necessary to take said accounting, and also the 
 production of the books, vouchers and documents of which said defend- 
 ants, Samuel Feder or Aurelia Rosenthal, and their and each of their 
 attorneys, servants, agents and workmen may be possessed, and cause
 
 FORMS OF INJUNCTION. 791 
 
 them to attend for sucli purposes before said master from time to 
 time as such master shall direct. 
 
 And it is further ordered, adjudged and decreed, that a perpetual 
 injunction be issued in this case, against the said defendants. Samuel 
 Feder and Aurelia Rosenthal, restraining and perpetually enjoining 
 them and each of them, and their and each of their servants, agents, 
 clerks and workmen, and all persons claiming or holding under or 
 through them, from manufacturing or using or selling, or in any way 
 disposing of, boots and shoes or boots or shoes having stamped, or 
 printed, or in any way marked thereon the name "C. F. Benkert & 
 Son," or any other name in imitation or simulation of the said trade- 
 mark "C. Benkert & Son," pursuant to 'he prayer of the said bill of 
 complaint. 
 
 LOKE.NZO SaWYEU. 
 
 United States Circuit Judge, Ninth 
 Judicial Circuit. 
 
 WRIT OF INJUNCTION. 
 
 In the Circuit Court of the United States for the Ninth Judicial Cir- 
 cuit in and for the Northern District of California. 
 
 BooRD & Son, Complainant, ^ 
 
 vs. I In Equity. 
 
 E. G. Lyons Company, Respondent, j 
 
 The President of the United States. To E. G. Lyons Company, its 
 clerks, agents, servants and employees. Greeting: 
 Whereas, It has been represented to us in the circuit court of the 
 United States for the northern district of California that Boord & Son, 
 a corporation, of London, England, have a valid trademark in a device 
 consisting of a cat standing upon a barrel, as applied to bottled gin. 
 and that you. the said E. G. Lyons Company, have infringed said right 
 by dealing in bottled gin bearing an imitation of said trademark: 
 
 Now, therefore, you. the said E. G. Lyons Company, your clerks, 
 agents, servants and employees, are strictly commanded and enjoined 
 under the pains and penalties which may fall upon you, and each of 
 you, in case of disobedience, that you forthwith and until the further 
 order, judgment and decree of this court, desist from dealing in any 
 gin bottled in imitation of complainant's gin and bearing the device 
 of a cat standing upon a barrel. 
 
 Witness, the Honorable Melville W. Fuller, Chief Justice of the 
 United States, this 14th day of October, in the year of our 
 [seal] Lord one thousand eight hundred and ninety-eight, and of 
 our Independence the 123d. 
 
 SouTiiAKi) Hoffman, Clerk.
 
 792 APPENDIX K. 
 
 FINAL DECREE. 
 
 (Royal Baking Powder Co. v. Royal Chemical Co., 
 Price & Steuart, 1.) 
 
 This cause having been tried at a special term of this court, before 
 the Hon. Hooper C. Van Vorst, one of the justices thereof, without a 
 jury, and the proofs and allegations of the parties having been heard, 
 the said court gave its decision in writing in favor of the plaintiffs, 
 and against the defendants, with costs; which decison has been filed 
 wth the clerk of this court: 
 
 Now, in pursuance thereof, it is hereby adjudged that the plaintiffs 
 are entitled to judgment on all the issues, and judgment is hereby 
 rendered in favor of the plaintiffs, and against the defendants thereon, 
 and it is hereby also adjudged that the plaintiffs are entitled to the 
 exclusive use of the term "Royal," as their trademark, on labels 
 attached to baking powder manufactured by them, and in connection 
 with the words "baking powder." And it is further adjudged, that 
 the use by the defendants of the word "Royal" on labels affixed to 
 baking powder, made by the defendants, or printed or written on 
 boxes, labels or otherwise howsoever, in connection with baking 
 powder made by them, was in violation of the plaintiff's rights. 
 
 And it is further adjudged, that the defendants, their agents, clerks, 
 workmen, servants and attorneys, perpetually refrain, and they are 
 hereby perpetually enjoined and restrained, from using the term or 
 designation "Royal" on, or around, or in connection with, any cans, 
 boxes or other packages, of any nature or kind whatever, containing 
 baking powder, or in any sign, invoice, billhead, card, circular, adver- 
 tisement, in connection with baking powder, and from using the 
 name "Royal Baking Powder," and from selling and disposing of any 
 baking powder with the word "Royal" attached thereto, except on such 
 baking powder as is obtained from the plaintiffs. 
 
 And it is further adjudged, that the plaintiffs recover of the defend- 
 ants their costs and disbursements in this action. 
 
 INJUNCTION. 
 
 (Gillis V. Hall, 2 Brewst. 342.) 
 
 Defendants enjoined "from making and selling any preparations as 
 and for the preparations specified in plaintiff's label, and from using 
 the name of Hall, or R. P. Hall, or Reuben P. Hall, either singly or 
 in connection with others, upon any such preparation; or from making 
 or using any trademark, label or wrapper in imitation of those now 
 in use by plaintiff."
 
 FORMS OF INJUNCTION. 793 
 
 (Colton V. Thomas, 2 Brewst. 308.) 
 
 Injunction against defendant "restraining the further use of the 
 cards and signs complained against in the bill; and also to restrain 
 the employment by him of any device by which the patients and 
 patrons of the plaintiff, without the exercise of excessive care, will 
 be induced to suppose that the defendant's place of business is the 
 place of business of the Colton Dental Association." 
 
 (Gillott V. Esterbrook, 47 Barb. 455.) 
 
 "Ordered and adjudged that the said defendants, R. E., R. E., Jr., 
 J. C, Jr., and J. B., and each of them, their agents and servants, do 
 absolutely and perpetually desist and refrain from infringing or using 
 the said trademark of the plaintiff, and from making or selling pens 
 with said numerals '303' impressed on the boxes or packages contain- 
 ing steel pens." 
 
 (Jurgensen v. Alexander, 24 How. Pr. 269; Cox, 298.) 
 
 Ordered: (1) "That the defendant, his agents, clerks, servants and 
 all others employed under or in connection with him be perpetually 
 enjoined and restrained from disposing of, selling, or causing to be 
 disposed of or sold, any watches bearing the false, simulated and 
 spurious stamp or mark, 'Jules Jurgensen, Copenhagen.' " 
 
 2. "That the defendant do produce before Nathaniel Jarvis, Esq., 
 appointed herein referee for such purpose, the said watches, which 
 at the time of the commencement of this suit were in defendant's 
 possession, and had upon them the said false, simulated and spurious 
 trademark, to be erased or obliterated therefrom, by or under the 
 direction of the said referee, at the cost and expense of the said 
 defendant." 
 
 (Coffeen v. Brunton, 4 McLean, 516; Cox, 82.) 
 
 "To enjoin the defendant from using the label or directions accom- 
 panying the liniment he sells as aforesaid, or other labels or directions, 
 or any advertisements or handbills respecting the same words which 
 are used by the complainant on his label or directions, and which tend 
 to produce an impression on the purchaser and the public that the lini- 
 ment sold by the defendant contains the same ingredients as the 
 'Chinese Liniment,' and is, in effect, the same medicine." 
 
 (N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 77 Fed. Rep. 869.) 
 
 Defendant enjoined from putting up and selling or offering for sale 
 "The particular form of packages which has been referred to in the 
 bill and put in evidence as 'defendant's second package,' or any other 
 form of package which shall, by reason of the collocation of size, shape, 
 colors, lettering, spacing and ornamentation, present a general appear- 
 ance as closely resembling the 'complainant's package,' referred to in 
 the bill and marked in evidence, as does the said 'defendant's second
 
 794 APPENDIX K. 
 
 package.' This injunction shall not be construed as restraining 
 defendant from selling packages of the size, weight, and shape of 
 compainant's package, nor from using the designation 'Buffalo soap 
 powder' nor from making a powder having the appearance of com- 
 plainant's 'Gold Dust.' nor from using paper of a yellow color as wrap- 
 pers for its packages, provided such packages are so differentiated in 
 general appearance from said 'complainant's package' that they are not 
 calculated to deceive the ordinary purchaser." 
 
 MANDATE OF CIRCUIT COUilT OF APPEALS, AFFIRMING 
 DECREE OF INJUNCTION. 
 
 (Feder v. Benkert, 76 Fed. Rep. 613.) 
 
 United States of America — ss. 
 
 The President of the United States of America, To the Honorable 
 the Judges of the Circuit Court of the United States for the North- 
 em District of California, Greeting: 
 
 Whereas, lately in the circuit court of the United States for the 
 northern district of California, before you, or some of you, in a cause 
 between William J. Benkert, complainant, and Samuel Feder, and 
 Aurelia Rosenthal, executrix of the last will and testament of Morris 
 Rosenthal, deceased, respondents, a decree was duly entered in favor of 
 the said complainant, which said decree is of record in the office of the 
 clerk of the said circuit court, to which record reference is hereby made 
 and the same is hereby expressly made a part hereof, and as by the in- 
 spection of the transcript of the record of the said circuit court, which 
 was brought into the United States circuit court of appeals for the ninth 
 circuit, by virtue of an appeal agreeably to the act of congress, in such 
 cases made and provided, fully and at large appears. 
 
 And Whereas, in the year of our Lord one thousand eight hundred 
 and ninety-five, the said cause came to be heard before the said circuit 
 court of appeals, on the said transcript of record, and was argued by 
 counsel: 
 
 On consideration whereof, it is now here ordered, adjudged and 
 decreed, that the decree of the said circuit court in this cause be, and 
 the same is hereby, affirmed, with costs. 
 
 You, therefore, are hereby commanded that such further proceedings 
 be had in said cause as according to right and justice, and the laws 
 of the United States, ought to be had, the said appeal notwithstanding. 
 
 Witness, the Honorable Melville W. Fuller, Chief Justice of the 
 United States, the 16th day of November, in the year of our Lord one 
 thousand eight hundred and ninety-five. 
 
 F D. Monckton, 
 Clerk of the United States Circuit Court 
 of Appeals for the Ninth Circuit.
 
 APPENDIX L. 
 
 CLASSIFICATION OF TRADEMARKS. 
 
 The following classification of registered trademarks has been pub- 
 lished in connection with the rules of the Patent Office. It is understood 
 to be a classification of pre-existing registrations rather than as a 
 guide to the classification to be observed in filing application: 
 
 Agricultural Machines and Imple- 
 ments. 
 
 Baking Powder and Yeast. 
 
 Beltings, Hose, and Packings. 
 
 Beverages. 
 
 Blackings and Leather Dressings. 
 
 Boots, Shoes, and Lasts. 
 
 Brooms and Brushes. 
 
 Buttons. 
 
 Canned Goods. 
 
 Carpets, etc. 
 
 Cement, Plaster, and Bricks. 
 
 Cleaning and Polishing Prepara- 
 tions. 
 
 Coffee and Tea. 
 
 Conductors and Insulators. 
 
 Confectionery. 
 
 Corsets. 
 
 Cured Meats. 
 
 Dairy Machines and Products. 
 
 Dentistry. 
 
 Drugs and Chemicals. 
 
 Dry Goods. 
 
 Electrical Apparatus and Sup- 
 plies. 
 
 Fancy Goods. 
 
 Fertilizers. 
 
 Firearms, Ammunition, and Ex- 
 plosives. 
 
 Fire Extinguishers. 
 
 Flour. 
 
 Foods and Relishes. 
 
 Fuel. 
 
 Furniture. 
 
 79; 
 
 Games and Toys. 
 
 Glassware. 
 
 Gloves. 
 
 Headwear. 
 
 Household Articles. 
 
 Inks. 
 
 Jewelry and Plated Ware. 
 
 La'mps, Lanterns, etc. 
 
 Lard and Tallow. 
 
 Laundry Machines and Articles. 
 
 Leather and Saddlery. 
 
 Locks and Hardware. 
 
 Lumber and Manufactures. 
 
 Machines and Devices. 
 
 Malt LiQuors. 
 
 Matches. 
 
 Medical Compounds. 
 
 Metals and Manufactures. 
 
 Miscellaneous. 
 
 Musical Instruments. 
 
 Needles and Pins. 
 
 Oils and Lubricants. 
 
 Optics and Measuring Instru- 
 ments. 
 
 Paints and Painters' Supplies. 
 
 Paper and Envelopes. 
 
 Poisons for Animals. 
 
 Publications. 
 
 Receptacles. 
 
 Rope, Cord and Twine. 
 
 Rubber Goods. 
 
 Seeds. Plants and Trees. 
 
 Sewing Machines and Attach- 
 ments.
 
 796 
 
 APPENDIX L. 
 
 Sewing Silk, Cotton, and Thread. 
 
 Shirts, Collars, and Cuffs. 
 
 Soap. 
 
 Spices, Mustard, and Salt. 
 
 Spirituous Liquors. 
 
 Starch, Cornstarch, and Products. 
 
 Stationery Miscellany. 
 
 Steam and Plumbing Supplies. 
 
 Stoves and Furnaces. 
 
 Sugar, Syrup, and Molasses. 
 
 Surgical Instruments and Appli- 
 ances. 
 Tailoring and Clothing. 
 Time-keeping Instruments. 
 Tobacco and Tobacco Products. 
 Toilet Articles and Preparations. 
 Tools and Cutting Instruments. 
 Umbrellas, Parasols, and Canes. 
 Underwear and Furnishings. 
 Vehicles. 
 Wines.
 
 APPENDIX M. 
 
 BIBLIOGRAPHY. 
 
 AMERICAN. 
 
 Browne. A Treatise on the Law of Trademarks. Boston. 1885. A Sup- 
 plement to same. Boston. 1898. 
 
 Bump. Law of Patents, Trademarks and Copyrights. (2d ed.) Balti- 
 more. 1884. 
 
 Coddington. A Digest of the Law of Trademarks. New York. 1878. 
 
 Cox. American Trademark Cases. A compilation of all the reported 
 Trademark Cases decided in the American courts prior to 1861. 
 Cincinnati. 1871. 
 
 Cox. A Manual of Trademark Cases including Sebastian's Digest. 
 (English) (2d ed.) Boston. 1892. 
 
 Greely. Foreign Patent and Trademark Laws. Washington. 1899. 
 
 Hopkins. Law of Unfair Trade. Chicago. 1900. 
 
 Newton. Digest of Patent Office Trademark Laws. Washington. 1896. 
 
 Paul. The Law of Trademarks. St. Paul. 1903. 
 
 Price & Steuart. American Trademark Cases reported between 1879 
 and 1887. Baltimore. 1887. 
 
 Upton. A Treatise on the Law of Trademarks. Albany. 1860. 
 
 ENGLISH. 
 
 Adams. Law of Trademarks. London. 1886. 
 
 Allan. Law Relating to Good-will. London. 1889. 
 
 Barclay, Law of France Relating to Industrial Property. London. 1881, 
 
 Cartmell. Abstract of Trademark Cases (1876-1892). London. 1893. 
 
 Edmunds. Patents, Designs and Trademarks Acts. London. 1895. 
 
 Fulton. Treatise on Patents, Trademarks and Designs. London. 1894. 
 
 Hart. Trademarks. London. 1889. 
 
 Kerly. Law of Trademarks. London. (2d ed.) 1901. 
 
 Lawson. Law and Practice under the Patents, Designs and Trade-« 
 
 marks Acts. London. 1889. 
 Payn. Merchandise Marks Act. 1887. London. 1888. 
 Sebastian. Digest of Cases of Trademark, etc. London. 1879. 
 Sebastian. Law of Trademarks. London. (4th ed.) 1899. 
 Slater. Copyright and Trademarks, with particular reference to lij . 
 
 fringement. London. 1884. 
 
 797
 
 APPENDIX N. 
 
 INTERNATIONAL ARRANGEMENTS. 
 
 INTERNATIONAL CONVENTION FOR THE PROTECTION OF 
 INDUSTRIAL PROPERTY. 
 
 (Signed at Paris, March 20, 1883. Ratifications exchanged at Paris, 
 
 June 6, 1884.) 
 
 (Official Translation.) 
 
 His Majesty the King of the Belgians, His Majesty the Emperor of 
 Brazil, His Majesty the King of Spain, the President of the French 
 Republic, the President of the Republic of Guatemala, His Majesty the 
 King of Italy, His Majesty the King of the Netherlands, His Majesty 
 the King of Portugal and the Algarves, the President of the Republic ol 
 Salvador, His Majesty the King of Servia, and the Federal Council of 
 the Swiss Confederation, 
 
 Being equally animated with the desire to secure by mutual agree- 
 ment complete and effectual protection for the industry and commerce 
 of their respective subjects and citizens, and to provide a guarantee for 
 the rights of inventors, and for the loyalty of commercial transactions, 
 have resolved to conclude a convention to that effect, and have named 
 as their plenipotentiaries, that is to say: [Here follow the appoint- 
 ments of the plenipotentiaries.] 
 
 Who having communicated to each other their respective full powers, 
 found in good and due form, have agreed upon the following Articles: 
 
 Article I. 
 
 The governments of Belgium, Brazil, Spain, France, Guatemala, Italy, 
 Holland, Portugal, Salvador, Servia and Switzerland constitute them- 
 selves into a union for the protection of industrial property. 
 
 Article II. 
 
 The subjects or citizens of each of the contracting states shall, in 
 all the other states of the union, as regards patents, industrial designs 
 or models, trademarks and tradenames, enjoy the advantages that their 
 respective laws now grant, or shall hereafter grant, to their own sub- 
 jects or citizens. 
 
 Consequently they shall have the same protection as the latter, and 
 the same legal remedy against any infringement of their rights, pro- 
 vided they observe the formalities and conditions imposed on subjects 
 or citizens by the internal legislation of each state. 
 
 798
 
 INTERNATIONAL ARRANGEMENTS. 799 
 
 Article III. 
 
 Subjects or citizens of states not forming part of the union, who are 
 domiciled or have industrial or commercial establishments in the ter- 
 ritory of any of the states of the union, shall be assimilated to the sub- 
 jects or citizens of the contracting states. 
 
 Article IV. 
 
 Any person who has duly applied for a patent, industrial design or 
 model, or trademark in one of the contracting states, shall enjoy, as 
 regards registration in the other states, and reserving the rights of 
 third parties, a right of priority during the periods hereinafter stated. 
 
 Consequently, subsequent registration in any of the other states of 
 the union before expiry of these periods shall not be invalidated 
 through any acts accomplished in the interval; either, for instance, by 
 another registration, by publication of the invention, or by the working 
 of it by a third party, by the sale of copies of the design or model, or 
 by use of the trademark. 
 
 The above mentioned terms of priority shall be six months for pat- 
 ents, and three months for industrial designs and models and trade- 
 marks. A month longer is allowed for countries beyond sea. 
 
 Article V. 
 (Relates only to patents.) 
 
 Article VI. 
 
 Every trademark duly registered in the country of origin shall be 
 admitted for registration, and protected in the form originally regis- 
 tered in all the other countries of the union.' 
 
 That country shall be deemed the country of origin where the appli- 
 cant has his chief seat of business. 
 
 If this chief seat of business is not situated in one of the countries 
 of the union, the country to which the applicant belongs shall be 
 deemed the country of origin. 
 
 Registration may be refused if the object for which it is solicited is 
 considered contrary to morality or public order. 
 
 Article VII. 
 The nature of the goods on which the trademark is to be used can, 
 in no case, be an obstacle to the registration of the trademark. 
 
 Article VIII. 
 A tradename shall be protected in all the countries of the union, 
 without necessity of registration, whether it form part or not of a 
 trademark- 
 
 ' No effect can be given to this or any other article of the convention by the 
 courts of Great Britain, except so far as It is embodied in section 103 of the 
 Patents Act. 1883. Re California Fig Syrup Co.. 40 Ch. D. 620. And to be regis- 
 tered in Great Britain, a foreign mark must contain one of the essential partic- 
 ulars defined in section 64 of said act. Re Carter Medicine Co., L. R. (1892), 
 3 Ch. D. 472.
 
 800 APPENDIX N. 
 
 Article IX. 
 
 All goods illegally bearing a trademark or tradename may be seized 
 on importation into those states of the union where this mark or name 
 has a right to legal protection. 
 
 The seizure shall be effected at the request of either the proper pub- 
 lic department or of the interested party, pursuant to the internal legis- 
 lation of each country. 
 
 Aeticle X. 
 
 The provisions of the preceding article shall apply to all goods falsely 
 bearing the name of any locality as indication of the place of origin, 
 when such indication is associated with a tradename of a fictitious 
 character or assumed with a fraudulent intention. 
 
 Any manufacturer of, or trader in, such goods, established in the 
 locality falsely designated as the place of origin, shall be deemed an 
 interested party. 
 
 Article XI. 
 
 The high contracting parties agree to grant temporary protection to 
 patentable inventions, to industrial designs or models, and trademarks, 
 for articles exhibited at official or officially recognized international 
 exhibitions. 
 
 Article XII. 
 
 Each of the high contracting parties agrees to establish a special 
 government department for industrial property, and a central office for 
 communication to the public of patents, industrial designs or models, 
 and trademarks. 
 
 Article XIII. 
 
 An international office shall be organized under the name of "Bureau 
 International de I'Union pour la Protection de la Propriete Industri- 
 elle" (International Office of the Union for the Protection of Industrial 
 Property). 
 
 This office, the expense of which shall be defrayed by the govern- 
 ments of all the contracting states, shall be placed under the high 
 authority of the Central Administration of the Swiss Confederation, 
 and shall work under its supervision. Its functions shall be determined 
 by agreement between the states of the union. 
 
 Article XIV. 
 
 The present convention shall be submitted to periodical revisions, 
 with a view to introducing improvements calculated to perfect the 
 system of the union. 
 
 To this end conferences shall be successively held in one of the con- 
 tracting states by delegates of the said states. The next meeting shall 
 take place in 1885 at Rome.
 
 INTERNATIONAL ARRANGEMENTS. 801 
 
 Abticle XV. 
 
 It Is agreed that the high contracting parties respectively reserve to 
 themselves the right to make separately, as between themselves, special 
 arrangements for the protection of industrial property, in so far as 
 such arrangements do not contravene the provisions of the present con- 
 vention. 
 
 Abticle XVI. 
 
 States which have not taken part in the present convention shall be 
 permitted to adhere to it at their request. 
 
 Such adhesion shall be notified officially through the diplomatic chan- 
 nel to the government of the Swiss Confederation, and by the latter 
 to all the others. It shall imply complete accession to all the clauses 
 Bfnd admission to all the advantages stipulated by the present conven- 
 tion. 
 
 Article XVTI. 
 
 The execution of the reciprocal engagements contained in the present 
 convention is subordinated, in so far as necessary, to the observance of 
 the formalities and rules established by the constitutional laws of those 
 of the high contracting parties who are bound to procure the applica- 
 tion of the same, which they engage to do with as little delay as pos- 
 sible. 
 
 Abticle XVIII. 
 
 The present convention shall come into operation one month after 
 the exchange of ratifications, and shall remain in force for an unlimited 
 time, till the expiry of one year from the date of its denunciation. This 
 denunciation shall be addressed to the government commissioned to 
 receive adhesions. It shall only affect the denouncing state, the con' 
 vention remaining in operation as regards the other contracting parties. 
 
 Abticle XIX. 
 
 The present connvention shall be ratified, and the ratifications ex> 
 changed in Paris, within one year at the latest. 
 
 In witness whereof the respective plenipotentiaries have signed the 
 same, and have affixed thereto their seals. 
 
 Dated at Paris the 20th March. 1883. 
 
 (Signed by the Plenipotentiaries.) 
 
 FINAL PROTOCOL. 
 
 (Official Translation.) 
 
 On proceeding to the signature of the convention concluded this day 
 between the governments of Belgium, Brazil. Spain, France, Guatemala. 
 Italy, the Netherlands, Portugal. Salvador. Servia and Switzerland, for 
 the protection of industrial property, the undersigned plenipotentiaries 
 have agreed as follows: 
 51
 
 802 APPENDIX N. 
 
 1. The words "industrial property" are to be understood in their 
 broadest sense; they are not to apply simply to industrial products 
 properly so called, but also to agricultural products (wines, corn, fruits, 
 cattle, etc.), and to mineral products employed in commerce (mineral 
 waters, etc.). 
 
 2. (Relates only to patents.) 
 
 3. The last paragraph of article II does not affect the legislation of 
 each of the contracting states, as regards the procedure to be followed 
 before the tribunals, and the competence of those tribunals. 
 
 4. Paragraph 1 of article VI is to be understood as meaning that no 
 trademark shall be excluded from protection in any state of the union, 
 from the fact alone that it does not satisfy, in regard to the signs com- 
 posing it, the conditions of the legislation of that state; provided that 
 on this point it comply with the legislation of the country of origin, 
 and that it had been properly registered in said country of origin. 
 With this exception, which relates only to the form of the mark, and 
 under reserve of the provisions of the other articles of the convention, 
 the internal legislation of each state remains in force. 
 
 To avoid misconstruction, it is agreed that the use of public armor- 
 ial bearings and decorations may be considered as being contrary to 
 public order in the sense of the last paragraph of article VI. 
 
 5. The organization of the special department for industrial prop- 
 erty mentioned in article XII shall comprise, so far as possible, the 
 publication in each state of a periodical official paper. 
 
 6. [After providing for the common expenses of the international 
 oflBce, continues:] 
 
 The Swiss government will superintend the expenses of the inter- 
 national office, advance the necessary funds, and render an annual 
 account, which will be communicated to all the other administrations. 
 
 The international office will centralize information of every kind 
 relating to the protection of industrial property, and will bring it to- 
 gether in the form of a general statistical statement, which will be dis- 
 tributed to all the administrations. It will interest itself in all matters 
 of common utility to the union, and will edit, with the help of the docu- 
 ments supplied to it by the various administrations, a periodical paper 
 in the French language dealing with questions regarding the object of 
 the union. 
 
 The numbers of this paper, as well as all the documents published 
 by the international office, will be circulated among the administra- 
 tions of the states of the union in the proportion of the number of con- 
 tributing units as mentioned above. Such further copies as may be 
 desired either by the said administrations, or by societies or private 
 persons, will be paid for separately. 
 
 The international office shall at all times hold itself at the service of 
 members of the union, in order to supply them with any special infor- 
 mation they may need on questions relating to the internal system of 
 industrial property. 
 
 The administration of the country in which the next conference is
 
 INTERNATIONAL ARRANGEMENTS. 803 
 
 to be held will make preparation for the transactions of the conference, 
 with the assistance of the international office. 
 
 The director of the international office will be present at the meetings 
 of the conferences, and will take part in the discussions, but without 
 the privilege of voting. 
 
 He will furnish an annual report upon his administration of the 
 office, which shall be communicated to all the members of the union. 
 
 The official language of the international office will be French. 
 
 7. The present final protocol, which shall be ratified together with 
 the convention concluded this day, shall be considered as forming an 
 integral part of. and shall have the same force, validity, and duration 
 as, the said convention. 
 
 In witness whereof the undersigned plenipotentiaries have drawn up 
 the present protocol. 
 
 (Signed by the Plenipotentiaries.) 
 
 ACCESSION OF GREAT BRITAIN AND IRELAND 
 TO THE CONVENTION. 
 
 The undersigned, ambassador extraordinary and plenipotentiary of 
 Her Majesty the Queen of the United Kingdom of Great Britain and 
 Ireland to the French Republic, declares that her Britannic Majesty, 
 having had the International Convention for the Protection of Indus- 
 trial Property, concluded at Paris on the 20th March, 1883, and the 
 protocol relating thereto, signed on the same date, laid before her, and 
 availing herself of the right reserved by article XVI of that convention 
 to states not parties to the original convention, accedes, on behalf of 
 the United Kingdom of Great Britain and Ireland, to the said inter- 
 national convention for the protection of industrial property, and to 
 the said protocol, which are to be considered as inserted word for word 
 in the present declaration, and formally engages, as far as regards the 
 President of the French Republic and the other high contracting par- 
 ties, to co-operate en her part in the execution of the stipulations con- 
 tained in the convention and protocol aforesaid. 
 
 The undersigned makes this declaration on the part of Her Britannic 
 Majesty, with the express understanding that power is reserved to Her 
 Britannic Majesty to accede to the convention on behalf of the Isle of 
 Man and the Channel Islands, and any of Her Majesty's possessions, on 
 due notice to that effect being given through Her Majesty's government. 
 
 In witness whereof the undersigned, duly authorized, has signed the 
 present declaration of accession, and has affixed thereto the seal of 
 his arms. 
 
 Done at Paris, on the 17th day of March, 1884. 
 
 (Sigrned) Lyons. 
 [L. S.]
 
 804 APPENDIX N. 
 
 DECLARATION OF ACCEPTANCE OF ACCESSION OF 
 GREAT BRITAIN. 
 
 (Official Translation. J 
 
 Her Majesty the Queen of the United Kingdom of Great Britain and 
 Ireland, having acceded to the International Convention relative to the 
 protection of industrial property, concluded at Paris, March 20th, 1883, 
 together with a protocol dated the same day, by the declaration of 
 accession delivered by her ambassador extraordinary and plenipoten- 
 tiary to the government of the French Republic; the text of which 
 declaration is word for word as follows: 
 
 [Here is inserted the text of the declaration of accession <in English.] 
 
 The President of the French Republic has authorized the under- 
 signed, President of the Council, Minister for Foreign Affairs, to form- 
 ally accept the said accession, together with the reserves which are con- 
 tained in it concerning the Isle of Man, the Channel Islands, and all 
 other possessions of Her Britannic Majesty, engaging as well in his own 
 name as in that of the other high contracting parties to assist in the 
 accomplishments of the obligations stipulated in the convention and the 
 protocol thereto annexed, which may concern the United Kingdom of 
 Great Britain and Ireland. 
 
 It witness whereof the undersigned, duly authorized, has drawn up 
 the present declaration of acceptance and has affixed thereto his seal. 
 
 Done at Paris, the 2d April, 1884. 
 
 (Signed) Jules Ferry. 
 
 [L. S.] 
 
 This convention is not self-executing, but requires legislation to make 
 it effective in the United States. Opinion of Miller, Attorney-General, 
 47 Off. Gaz. 397; Ex parte Zwack & Co., 73 Off. Gaz. 1855. 
 
 For a list of the existing treaties and conventions between the United 
 States and foreign nations see post, p. 807.
 
 APPENDIX O. 
 
 Section 4 of the Act of January 5, 1905, incorporating 
 the American National Red Cross, is as follows: 
 
 Sec. 4. That from and after the passage of this Act 
 it shall be unlawful for any person within the jurisdic- 
 tion of the United States to falsely and fraudulently hold 
 himself out as, or represent or pretend himself to be, a 
 member of, or an agent for, the American National Red 
 Cross, for the purjDOse of soliciting, collecting, or receiv- 
 ing money or material ; or for any person to wear or dis- 
 play the sign of the Red Cross, or any insignia colored 
 in imitation thereof for the fraudulent purpose of induc- 
 ing the belief that he is a member of, or an agent for, the 
 American National Red Cross. Nor shall it be lawful for 
 any person or corporation, other than the Red Cross of 
 America, not now lawfully entitled to use the sign of the 
 Red Cross, hereafter to use such sign or any insignia col- 
 ored in imitation thereof for the purposes of trade or as 
 an advertisement to induce the sale of any article what- 
 soever. If any person violates the provisions of this sec- 
 tion, he shall be guilty of a misdemeanor and shall be 
 liable to a fine of not less than one nor more than five 
 hundred dollars, or imprisonment for a tenn not exceed- 
 ing one year, or both, for each and every offense. The 
 fine so collected shall be paid to the American National 
 Red Cross. 
 
 ****** 1^ 
 
 Approved, January 5, 1905. 
 
 805
 
 APPENDIX P. 
 
 The trademark laws of several of the foreign nations 
 
 have been published from time to time in the Official 
 Gazette of the Patent Office. The references are to the 
 volume and page of that publication. 
 
 COUNTRY. VOLUME. PAGE. DATE. 
 
 A^rgentine Republic 42 383 Jan. 24, 1888 
 
 Austria-Hungary 52 1539 Sept. 2, 1890 
 
 Do , 59 1611 June 14,1892 
 
 Bulgaria 65 137 Oct. 3, 1893 
 
 Brazil 45 235 Oct. 9, 1888 
 
 China 112 2095 Oct. 25, 1904 
 
 Cuba ^.100 1114 July 29,1902 
 
 Do 108 800 Jan. 19, 1904 
 
 Denmark 54 1419 Mar. 10, 1891 
 
 Ecuador ^.93 361 Oct. 9, 1900 
 
 England 25 90 Oct. 2, 1883 
 
 Do 46 1395 Mar. 12, 1889 
 
 Germany 31 1447 June 23, 1885 
 
 Do 71 145 Apr. 2, 1895 
 
 Greece 69 126 Oct. 2, 1894 
 
 Guatemala 93 360 Oct. 9, 1900 
 
 Italy 24 102 July 3,1883 
 
 Japan 48 1402 Sept. 3, 1889 
 
 Do 70 1503 Mar. 12, 1895 
 
 Do 78 1744 Mar. 16.1897 
 
 Do 83 598 Apr. 26, 1898 
 
 Do 88 1899 Sept. 5, 1899 
 
 Mexico 51 809 May 6, 1890 
 
 Netherlands 23 1334 Apr. 3, 1883 
 
 Do 66 174 Jan. 2, 1894 
 
 Do 66 321 Jan. 16, 1894 
 
 Panama 115 1852 Apr. 18,1905 
 
 Portugal 70 279 Jan. 8,1895 
 
 Roumania ^55 1653 June 23,1891 
 
 Servia 75 1035 May 12,1896 
 
 Switzerland 23 2237 June 5, 1883 
 
 Transvaal (British) 101 3110 Dec. 30, 1902 
 
 Victoria 33 501 Oct. 27, 1885 
 
 806
 
 APPENDIX Q. 
 
 The United States has entered into conventions with 
 the several governments named below for the reci];jrocal 
 registration of trademarks of citizens of, or persons domi- 
 ciled in the respective countries. 
 
 Country. 
 
 Date Proclaimed. 
 
 Ki;i»(JUTEO. 
 
 Austria-Hungary 
 
 June 1, 1872. 
 
 17 Stat, at L. 917, 2 
 Off. Gaz. 418. 
 
 Belgium (now obsolete) 
 
 July 30/1869. 
 
 16 Stat, at L. 765. 
 
 Belgium 
 
 July 9, 1884. 
 
 29 Off. Gaz. 452. 
 
 Brazil 
 
 June 17, 1889. 
 
 21 Stat, at L. 659. 
 
 Denmark 
 
 Oct. 12, 1892. 
 
 61 Off. Gaz. 571. 
 
 France 
 
 July 6, 1869. 
 
 16 Stat, at L. 771, 2 
 Off. Gaz. 416. 
 
 Germany- 
 
 June 1, 1872. 
 
 17 Stat, at L. 921, 2 
 Off. Gaz. 418. 
 
 Great Britain 
 
 July 17, 1878. 
 
 14 Off. Gaz. 233. 
 
 Italy 
 
 March 19. 1884. 
 
 27 Off. Gaz. 304. 
 
 Japan 
 
 March 9, 1897. 
 
 78 Off. Gaz. 1744. 
 
 Luxemburg 
 
 March 15, 1905. 
 
 115 Off. Gaz. 1332. 
 
 Netherlands 
 
 Feb. 16, 1883. 
 
 23 Off. Gaz. 1334. 
 
 Russia 
 
 Oct. 15, 1868. 
 
 16 Stat, at L. 725, 2 
 Off. Gaz. 416. 
 
 Russia 
 
 Nov. 28, 1874. 
 
 Revision Committee 
 Report, p. 336. 
 
 Servia 
 
 Dec. 27, 1882. 
 
 22 Stat, at L. 966, 28 
 Off. Gaz. 1191. 
 
 Spain 
 
 April 19. 1883. 
 
 25 Off. Gaz. 98. 
 
 Switzerland 
 
 May 16, 1883. 
 
 23 Off. Gaz. 2237. 
 
 807
 
 INDEX. 
 
 References are to pages. 
 
 "ABACUS," 283. 
 
 ABANDONMENT— 
 
 a question of intent, 176. 
 
 burden of proof in establishing, 177. 
 
 by adoption of new brand or label, 181. 
 
 by advertisement of sales agent, 182. 
 
 by dismissing bill for injunction, 177, 183. 
 
 by limited registration, 183. 
 
 by owner, will not confer title on another fraudulently using 
 
 mark, 177. 
 by permitting infringements, 183. 
 by removal from premises, 178. 
 by retiring partner, 32. 
 defense of, not favored by courts, 176. 
 involuntary, 180. 
 
 of features of mark not registered, 183. 
 of mark owned jointly by independent dealers, by termination of 
 
 joint business, 27. 
 proof of intention of, 183. 
 terminates trademark right, 18, 176. 
 
 ABORIGINAL WORDS— 
 
 as trademarks, 116. 
 "A. C. A." (cloth), 87, 298. 
 
 ACCIDENTAL ADOPTION, 58. 
 
 ACCOUNT— 
 
 pending the suit, may be ordered where preliminary injunction 
 refused, 380. 
 
 ACCOUNTING?— 
 
 credits upon, 385. 
 
 denied where defendant ignorant of plaintiff's mark, 271. 
 plaintiff entitled to reference for, as mater of right, when In- 
 fringement confessed or proven, 381. 
 refused because of acquiescence, 175. 
 refused because of laches, 172, 372. 
 
 809
 
 810 INDEX. 
 
 References are to pages. 
 
 "ACID PHOSPHATE," 87, 109. 
 ACQUIESCENCE— 
 
 a bar to relief against unfair competition, 174. 
 
 always question of fact, 174. 
 
 cannot be inferred, 175. 
 
 distinguished from laches, 174. 
 
 is revocable, 175. 
 
 may bar right to accounting, 175. 
 
 no bar to injunction, 175. 
 
 none without knowledge of facts, 176. 
 
 tantamount to agreement, 174. 
 ACQUISITION— 
 
 by assignment, 61. 
 
 of trademark, generally, 61. 
 ACTION (see Action At Law; Suits in Equity) — 
 
 forms of, 347. 
 
 for trademark and copyright infringement, may be joined, 340. 
 
 for trademark and patent infringement, may be joined, 340. 
 
 failure to prosecute may effect abandonment of trademark, 177, 
 183. 
 
 for infringement survives owner's death, 335. 
 
 for invasion of goodwill, 212. 
 ACTION AT LAW— 
 
 declaration in, 349. 
 
 generally, 347. 
 
 trespass on the case, 347. 
 
 continuando must be pleaded in, 352. 
 
 form of declaration, 746. 
 
 ACT OP 1870— 
 
 in full, 411. 
 ACT OF 1874, 424. 
 ACT OF 1876, 442. 
 
 void because Act of 1870 invalid, 445. 
 
 no conviction under, in absence of recital of exclusive ownership 
 in certificate, 445, n. 1. 
 
 not revived by act of 1881, 445, n. 1. 
 ACT OF 1881— 
 
 in full, 446. 
 
 did not make act of 1876 operative, 445, n. 1. 
 
 requirements of registration under, 446, n. 3. 
 
 validity of, 446, n. 1. 
 ACT OF AUGUST 5, 1882, 463. 
 ACT OF 1897, 466. 
 ACT OF FEBRUARY 20, 1905, 468.
 
 INDEX. 811 
 
 References are to pages. 
 
 ADDED MATTER— 
 
 in use of false mark, no defense, 290. 
 
 may tend to mitigate damages, 290. 
 "ADJECTIVES OF THE LANGUAGE," may be Instruments of fraud, 
 
 39, n. 17. 
 ADMINISTRATION— 
 
 upon trademark, 28. 
 
 of good-will, 28. 
 
 trademarks of deceased person should be conveyed by, 28. 
 
 may pass without, 28, 29, n. 75. 
 ADMINISTRATOR— 
 
 as plaintiff in suit for infringement, 335. 
 ADOPTION— 
 
 actual adoption of trademark indispensable, 64. 
 
 advertising mark is not, 64. 
 
 date of, stated in application, not conclusive, 325. 
 
 priority of, not conclusive, 64, 65. 
 ADVERTISEMENT— 
 
 dishonest, deprives user of equitable relief, 66. 
 
 misleading, when restrained, 278, 303. 
 
 not a trademark, 243. 
 
 of fact of assignment, 71. 
 ADVERTISING— 
 
 an element of goodwill, 278. 
 
 as assets, 251. 
 
 mere use of mark in, does not create trademark right, 59. 
 ADVERTISING SOLICITOR— 
 
 enjoined from using material for rival publication, 224. 
 "^TNA IRON WORKS" CASE, 155. 
 AFFIDAVITS— 
 
 ex parte, insufficient as basis of preliminary injunction except in 
 clear case, 400. 
 
 in chief, in application for preliminary injunction, must estab- 
 lish all necessary facts, 400. 
 
 must be entitled in the cause, 401. 
 
 proceeding by, on application for preliminary injunction, 401. 
 AFFIXING— 
 
 mode of, immaterial, 7, 58. 
 "A. G.." 299. 
 AGENT— 
 
 goodwill of, 188. 189. 
 
 liability of, for handling infringing goods. 337, 338. 
 
 act done at suggestion of plaintiff's, not an infringement, 368. 
 
 upon determination of his employment enjoined from using word 
 "Agency" upon his signs, 303.
 
 812 INDEX. 
 
 References are to pages. 
 
 AGREEMENTS UPON DISSOLUTION— 
 
 how interpreted, 199, n. 85. 
 "AINS WORTH" (thread), 96, 137. 
 "AIR-CELL," 379, n. 86. 
 
 ALABAMA TRADEMARK STATUTES, 515. 
 ALASKA TRADEMARK STATUTES, 515. 
 "ALBA," 283. 
 
 "ALBANY BEEF," 455, n. 24. 
 "ALLCOCK'S POROUS PLASTERS," 87. 
 "ALDERNEY" (oleomargarine), 96, 135. 
 
 ALIEN— 
 
 abandoning mark in United States, acquires no right by subse- 
 quent legislation in his own country, 19, n. 40. 
 
 acquisition of trademark by, 62. 
 
 cannot have trademark right as against a citizen making prior 
 adoption in good faith, 62. 
 
 might register under act of 1881, 450, n. 11. 
 
 need not aver that mark is used in foreign commerce, to come 
 within federal jurisdiction, 461, n. 39. 
 
 trademark rights of, 62. 
 ALTERNATIVES— 
 
 registration of, 292. 
 
 what may be registered as, 292. 
 "ALUMINUM" (washboards), 87. 
 AMBIGUITY— 
 
 as a defense, 292. 
 "AMERICAN" (sardines), 87. 
 "AMERICAN COLD JAPAN" (paint), 96. 
 "AMERICAN EXPRESS" (sealing wax), 96. 
 "AMERICAN VOLUNTEER" (shoes), 96. 
 "AMMONIATED BONE SUPERPHOSPHATE OF LIME," 87. 
 
 AMOUNT IN controversy- 
 Is value of trademark, 460, n. 35. 
 
 in suit to restrain vendor of goodwill from re-engaging in busi- 
 ness, 217. 
 
 ANALOGY— 
 
 value of, in determining character of infringement, 294. 
 
 "ANATOLIA" (licorice), 96. 
 
 "ANCHOR BRAND" (wire), 96. 
 
 "ANGLO-PORTUGO" (oysters), 87. 
 
 "ANGOSTURA" (bitters), 71. 
 
 "A. N. HOXIE'S MINERAL" (soap), 96.
 
 INDEX. 813 
 
 References are to pages. 
 "ANNIHILATOR" (medicine), 96. 
 "ANSATZ" (bitters), 118. 
 ANSWER— 
 
 form of, 781, 784. 
 ANTICIPATION— 
 
 what constitutes, 457, n. 27. 
 "ANTIQUARIAN" (book store), 88. 
 "ANTI-WASHBOARD" (soap), 96. 
 "ANVIL," 283. 
 "APOLLINARIS," 96, 283. 
 APPEAL, 388. 
 
 APPENDANT, TRADEMARK RIGHT MUST BE, 20. 
 "APPLE AND HONEY" (medicine), 88. 
 APPLICATION— 
 
 what is sufficient, of mark, 452, n. 15. 
 ARKANSAS, TRADEMARK STATUTES, 518. 
 ARTICLE OF MANUFACTURE, DEFINED, 427. 
 "ASBESTOS" (wall plaster), 88. 
 
 "ASSETS AND GOODWILL"— 
 
 sale of conveys trademarks, 25, n. 62. 
 
 ASSIGNMENT— 
 
 assignability of trademarks, generally, 61. 
 
 assignee acquires trademark subject to necessity of continued 
 user, 32. 
 
 assignee must publish fact of assignment, when, 71. 
 
 assignee can apply trademark only to same class of goods as 
 assignor, 31. 
 
 assignor may be enjoined from use of mark, 31. 
 
 general, in insolvency, conveys trademarks without special men- 
 tion, 25. 
 
 general, of business, conveys trademarks without special men- 
 tion, 25. 
 
 limited to specified territory, 20. 
 
 of mark applied to the product of a secret process, 34. 
 
 of mark containing name and portrait of former owner, 24, n. 59. 
 
 of right to use one's own name, 146. 
 
 of right to use proper name cannot be reassigned, 211, n. 33. 
 
 of trademark by implication, 178. 
 
 right of assignee of trademark to use name of assignor, 72. 
 
 ASSIGNOR— 
 
 enjoined from using his assigned name, 148. 
 
 "ASTRAL" (oil), 88.
 
 814 INDEX. 
 
 References are to pages. 
 ATTACHMENT— 
 
 action for damages for injury to goodwill througli wrongful, 215. 
 ATTORNEY— 
 
 goodwill of, 189. 
 
 "ATWOOD'S GENUINE PHYSICAL JAUNDICE BITTERS," 71. 
 AUTOGRAPHIC SIGNATURE— 
 
 misleading use of, enjoined, 304. 
 "A-V-H" (gin), 88. 
 
 B 
 
 "BABBITT'S BEST" (soap), 10. 
 "BACCO-CURO" (remedy), 97. 
 "BAFFLE" (safes), 97. 
 BAILEE— 
 
 of infringing goods, duty of to make discovery, 339. 
 
 of infringing goods, liable to injunction, 339. 
 BAKER— 
 
 goodwill of, 188. 
 
 "BALM OF THOUSAND FLOWERS" (cosmetic), 69, 88, 97. 
 BANKER— 
 
 goodwill of, 188. 
 BANKRUPTCY— 
 
 trademarks in, 25, n. 63, 321. 
 "BARBERS MODEL" (razors), 88. 
 "BAZAAR" (patterns), 88. 
 "B. B. B.," 97, 299. 
 "B. B. H." (iron), 97, 299. 
 "BEATTY'S HEADLINE" (copy-book), 97. 
 "BELL OF MOSCOW" (wine), 97. 
 "BELL'S LIFE" CASE, 164. 
 "BENEDICTINE" (liqueur), 97. 
 BEQUEST— 
 
 of trademark, 26. 
 "BETHESDA" (water), 97. 
 
 "BETTER THAN MOTHER'S" (mince meat), 88. 
 "BHE HATHI," 281. 
 BIBLIOGRAPHY, 797. 
 BILL IN EQUITY, 364. 
 orderly parts of, 364. 
 
 1. Title of court, 364. 
 
 2. Introduction, 364.
 
 INDEX. 815 
 
 References are to pages. 
 
 BILL IN EQUITY— Continued. 
 
 3. Statement, 364. 
 
 4. Prayer for relief, 366. 
 
 5. Interrogating part, 367. 
 
 6. Prayer for process, 367. 
 averments of citizenship of parties, 364. 
 
 defect on face of, must be met by demurrer and not by plea, 372. 
 form of interrogatories, 754. 
 
 form of, trademark infringement, 749, 760, 767, 772, 778. 
 form of, unfair competition, 755. 
 need not be verified, when, 367. 
 
 not demurrable because praying for both profits and damages, 363. 
 should show application of mark in foreign or interstate com- 
 merce, 365. 
 to restrain dealing in fraudulent labels, 366. 
 to restrain disclosure of secret process, 219. 
 to restrain unfair competition, 366. 
 
 "BISMARCK" (collars), 97, 139. 
 "BLACK DIAMOND," 283. 
 "BLACK PACKAGE" (tea), 88. 
 "BLACKSTONE" (cigars), 97. 
 "BLOOD SEARCHER" (medicine), 97. 
 "BLUE LICK WATER," 97. 
 "BOKER'S STOMACH BITTERS," 97. 
 "BOKOL" (beer), 115. 
 BOND— 
 
 on preliminary injunction, 381. 
 BOOK— 
 
 device of, not trademark, 88. 
 
 title of, as trademark, 162. 
 BOOKS AND PAPERS— 
 
 discovery and inspection of, 396. 
 "BOOTH'S THEATRE" CASE, 146. 
 "BORAX" (soap), 88. 
 
 BOTTLES— 
 
 distinctive, protected, 250. 
 refilling enjoined, 273. 
 
 "BOVILENE," 97. 283. 
 
 "BOVRIL" (meat extract), 97. 
 
 BOXES— 
 
 injunction against competitor buying, 260. 
 
 "BRAIDED FIXED STARS" (cigar lights), 88.
 
 816 INDEX. 
 
 References are to pages. 
 
 BREWER— 
 
 goodwill of, 188. 
 "BROMIDIA" (medicine), 97, 110. 
 "BROMO-CAFFEINE," 97, 110. 
 "BROMO CELERY," 109. 
 "BROMO-QUININE," 109, 110. 
 
 "B. T. BABBITT'S TRADEMARK BEST SOAP," 291. 
 "BUFFALO PITTS," 456. 
 BULK GOODS— 
 
 purchaser of, cannot use manufacturer's trademark used only on 
 his own packages, 275. 
 BURDEN OF PROOF— 
 
 in establishing abandonment, 180. 
 
 in establishing priority against existing registration, in applica- 
 tion to register, 460, n. 33. 
 
 on applicant in interferences, 458, n. 29. 
 
 strongly upon complainant in refilling cases, 274. 
 "BURGESS," 283. 
 "BUSINESS CONNECTIONS AND PATRONAGE"— 
 
 include goodwill, 194. 
 
 "C. A.", 335. 
 
 "CACHEMIRE MILANO" (cloth), 88. 
 
 CALIFORNIA TRADEMARK STATUTES, 523. 
 
 CALIFORNIA TRADEMARK FORMS, 529. 
 
 "CALIFORNIA SYRUP OF FIGS" (laxative), 88. 
 
 "CAMEL HAIR BELTING" (case), 11, 123, 156. 
 
 CANADIAN ACT, RULES AND FORMS, 729, 741, 742. 
 
 "CANADIAN CLUB WHISKEY," 283. 
 
 CANCELLATION OF REGISTRATION, 423, n. 36. 
 
 "C. A. P." (cream acid phosphate), 88. 
 
 CARE— 
 
 degree of, expected of consumers, 300, 
 CARPET CLEANER— 
 
 marks of, 446, n. 3. 
 CARRIERS— 
 
 liable for infringement, 338. 
 "CARROM" (game-board), 97. 
 "CASCARETS" (carthartic medicine), 283. 
 "CASHMERE BOUQUET" (toilet soap), 97, 283.
 
 INDEX. 817 
 
 References are to pages. 
 "CASTORIA" (medicine), 88. 
 CATALOGUE— 
 
 improper use of, restrained, 226. 
 CATCH-WORDS— 
 
 by wliich goods known to trade, how proven, 39S. 
 
 suggested by a trademark, protected, 123, 301. 
 CAUSES OF ACTION— 
 
 joinder of, 340. 
 "CELEBRATED STOMACH BITTERS," 88. 
 CELEBRITY— 
 
 name of, as trademark, 139. 
 
 registration of name of, as trademark, 239. 
 "CELERY COMPOUND" (medicine), 97. 
 "CELLULAR CLOTHING" (case). 11, 88, 124. 
 "CELLULOID," 283. 
 
 "CENTENNIAL" (clothing, etc.), 88, 98. 
 CERTIFICATE OF REGISTRATION— 
 
 how assigned, 61. 
 
 value of, 321, 324. 459, n. 33. 
 CERTIORARI— 
 
 generally. 389. 
 
 to review contempt proceedings, 400. 
 "SCHAMPION" (flour), 98. 
 "CHARLEY'S AUNT" (farce title), 98. 
 "CHARTER OAK" (stoves), 98. 
 "CHARTREUSE" (cordial), 34, 283. 
 "CHATTERBOX" (periodical), 21, 98, 283. 
 "CHERRY PECTORAL" (medicine), 89. 
 CHEESEMONGER— 
 
 goodwill of, 188. 
 "CHICAGO WAISTS" (corsets), 98. 
 "CHICKEN COCK" (whiskey), 98, 286. 
 "CHILI COLOROW" (condiment), 118. 
 "CHILL STOP" (medicine), 89. 
 "CLIMAX" (stoves), 98. 
 "CHINESE LINIMENT," 98. 
 
 "CHLORODYNE" (medicinal compound). 89, 120. 
 "CHRISTY'S MINSTRELS" (case), 142. 147. 
 CIRCULARS— 
 
 false representations in. deprive from relief, 78. 
 
 injunction against, when containing false representations, 277. 
 52
 
 818 INDEX. 
 
 References are to pages. 
 
 CITIZENSHIP— 
 
 averment of, concerning corporation, not proper, 350. 
 
 defined, 450, n. 11. 
 
 diverse, must be pleaded in federal practice, 364. 
 
 of applicant for registration, immaterial, 450. 
 
 what averments necessary in federal equity pleading, 364. 
 "CLARK'S 0. N. T.", 284. 
 CLASSIFICATION— 
 
 of trademarks, suggested by patent office, 795. 
 CLASS OP GOODS— 
 
 must be stated in registering, 451. 
 
 infringement must be upon same, 270. 
 "CLEAN HANDS"— 
 
 equitable rule as to, 68. 
 "CLIMAX" (stoves), 98. 
 "CLOVERDALE," 455. 
 "CLUB" (cocktails), 98. 
 "CLUB HOUSE" (gin), 89. 
 "CLUB SODA," 98. 
 
 "COAL OIL JOHNNY'S PETROLEUM" (soap), 98. 
 COAT-OF-ARMS— 
 
 not registrable, 471. 
 
 of state or United States not registrable, 455. 
 
 effect of adding, to trademark, 375. 
 "COCOAINE" (hair oil), 98, 110, 284. 
 "COCOATINA," 284. 
 
 "COE'S SUPERPHOSPHATE OF LIME," 98, 284. 
 COLLATERAL MISREPRESENTATION— 
 
 v^fill not debar mark from protection, 68, 72, n. 22. 
 COLLOCATION— 
 
 in issue of fraudulent use of color, 248. 
 "COLONIAL," 293. 
 COLOR— 
 
 fraudulent imitation of, 243. 
 
 infringement of, restrained, 243. 
 
 no trademark in, 112, 245. 
 
 not registrable as trademark, 250, note. 
 
 registration in, 249. 
 
 COLORABLE IMITATION— 
 of trademarks. 
 
 COLORADO— 
 
 statutes and forms, 530, 534.
 
 INDEX. 819 
 
 References are to pages. 
 
 COMBINATIONS— 
 
 in restraint of trade, 378. 
 
 of old word-elements, 109. 
 "COMFORT" (publication), 98. 
 COMMERCE— 
 
 trademark must be used in, 18. 
 COMMERCE CLAUSE— 
 
 as basis of federal trademark legislation, 314. 
 "COMMERCIAL ADVERTISER" (case), 167. 
 
 COMMISSIONER OF PATENTS— (See Statutes: Act of 1905, and 
 Trademark Rules of Patent Office). 
 
 duties of, judicial, 457. 
 
 action of, not controlled by mandamus, 457, n. 28. 
 
 shall keep a record of assignments, 476. 
 
 COMMON LAW— 
 
 right of trademark not abridged or qualified by registration act, 
 461, n. 38. 
 COMMON TO THE TRADE— 
 
 resemblance in such particulars no infringement, 244. 
 
 words, not subject to exclusive appropriation, 106, 107, 111. 
 "COMPACTUM" (umbrellas), 98. 
 COMPARISON— 
 
 by the court, final test of resemblance, 391. 
 
 no opportunity of, given consumer, as affecting test of infringe- 
 ment, 263. 
 "COMPUTING" (scales), 89. 
 
 "CONCURRENCE DELOYALE," French equivalent for unfair com- 
 petition, 44. 
 CONFUSION— 
 
 of business as evidence of right to relief, 150, 308. 
 
 "CONGRESS WATER," 98, 129. 
 CONNECTICUT— 
 
 statutes and forms, 535, 537. 
 
 CONSTRUCTION— 
 
 of contracts aiTecting trade secrets. 
 
 CONTEMPTS— 
 
 action upon, not reviewed on appeal, 400. 
 
 by circulating matter prejudicial to defense, 398. 
 
 by offering infringing goods for sale, though no sale effected, 398. 
 
 by publishing perverted construction of injunction, 398. 
 
 by violation of decree, 398. 
 
 costs of unsuccessful motion to commit, 407. 
 
 costs upon appeal, 406.
 
 820 INDEX. 
 
 References are to pages. 
 
 CONTEMPTS— Continued. 
 
 enlarging decree on hearing, 399. 
 
 erroneous action upon, reached by certiorari, 400. 
 
 in disobeying subpoena, 229. 
 
 intent of contemnor, immaterial, 398. 
 "CONTINENTAL" (fire insurance corporation), 89, 153. 
 CONTINUANDO— 
 
 must be pleaded in action at law, 352. 
 CONTINUITY— 
 
 of use, trademark right dependant on, 18. 
 CONTRACTS— 
 
 in reference to trade secrets, 219. 
 
 how construed, 227. 
 
 in restraint of trade, 201. 
 
 for sale of goodwill, 201. 
 
 not to disclose trade secret, implied as between master and ser- 
 vant, 223. 
 CONTRACTS AFFECTING USE OF TRADEMARK (See Statutes: 
 Acts of 1881 and 1905) — 
 
 not amounting to transfer or assignment, cannot be registered, 
 462, n. 40. 
 
 "COPENHAGEN" (snuff), 89. 
 
 COPYRIGHTS— 
 
 action for infringing, joinder of, 340. 
 
 distinguished from trademarks, 14. 
 
 "CORONA," 284. 
 
 CORPORATE NAMES— 
 as trademarks, 150. 
 fraudulent, enjoined, 145. 
 
 governed by same principles as names of partnerships and in- 
 dividuals, 154. 
 registrable, when, 456, n. 25. 
 
 CORPORATION— 
 
 cannot acquire right to use proper name in unfair competition, 155. 
 
 cannot be a citizen, 350. 
 
 creation of, no defense to infringement by incorporators, 374. 
 
 goodwill of, 192. 
 
 having common interest, may join as plaintiff. 
 
 injunction may issue against all persons connected with infring- 
 ing, 207. 
 
 jurisdiction of federal courts in suits against, 350. 
 
 may hold trademarks, 55. 
 
 restraint of, from improper use of proper name in corporate 
 name, 155.
 
 INDEX. 821 
 
 References are to pages. 
 
 CORPORATION— Continued. 
 
 stock issued for goodwill, 192. 
 
 transfer of goodwill of, 193. 
 COSTS— 
 
 as against innocent warehouseman, 405. 
 
 as against retailer, 3(i9. 
 
 awarded bailee who has made discovery, 405. 
 
 caused by unfounded charge in bill, 406. 
 
 generally, 402. 
 
 in unsuccessful motion to commit for contempt, 407. 
 
 may be adjudged on interlocutory decree, 407. 
 
 may be allowed where damages refused, 402. 
 
 on appeal, when decree reversed in part, 406. 
 
 on interlocutory decree, 407. 
 
 pleading to avoid, 369. 
 
 refused as against retail dealer, 369. 
 
 refused as against label manufacturer acting ignorantly, 369. 
 
 refused because of delay, 406. 
 
 refused successful defendant, when, 404. 
 
 subject to prior lien of wharfinger's charges, 405. 
 
 upon appeal from committal for contempt, 406. 
 
 usually follow the event, 402. 
 
 want of notice, no defense to recovery of, 402. 
 
 where sales too small to justify accounting, 405. 
 
 "COTTOLENE," 98, 182. 284. 
 "COUGH CHERRIES" (confectionery), 98. 
 "COUGH REMEDY," 89. 
 COUNTERFEITING — 
 
 trademarks, 260. 
 
 infringement by, 2G0. 
 
 COURTS— 
 
 jurisdiction of, in cases of unfair competition, 46. 
 
 COVENANTS 
 
 not to re-engage, 197, 199, 200, 202, 208. 
 
 "CRACK PROOF" (rubber), 89. 
 "CRAMP CURE," 89. 
 "CREAM" (baking powder), 89, 99. 
 CREDITS ON ACCOUNTING, 385. 
 "CBESYLIC" (ointment), 89. 
 CRIMINAJ. PROSECUTION— 
 
 for traderna'-y infringement. 344. 
 "CRISTALLINE," 455. 
 "CROMARTY." 455.
 
 822 INDEX. 
 
 References are to pages. 
 
 CROSS-BILL— 
 
 necessary where affirmative relief sought by a defendant, 368. 
 
 "CROUP TINCTURE," 89. 
 "CROWN SEIXO" (case), 28L 
 "CRYSTALLIZED EGG," 89. 
 "CUPOLA," 284. 
 
 .CUSTOMERS' BRANDS, 182, n. 51. 
 "CUTICURA," 99, 282. 
 "CYCLOPS MACHINE WORKS," 284. 
 "CYLINDER" (glass) 89. 
 
 CYPHER CODE— 
 
 improper use of, when restrained, 226. 
 
 D 
 
 DAMAGES— 
 
 amount of, does not fix jurisdiction of federal courts in trade- 
 mark cases, 329. 
 
 and profits both assessed in equity, 382. 
 
 awarded in equity where no loss of profit shown, 384. 
 
 counsel fees as an element, 384. 
 
 election between, and profits, in English practice, 382. 
 
 for invasion of goodwill, 195, 212. 
 
 in actions at law, 355. 
 
 in cases of unfair competition only where intentional fraud, 382. 
 
 increasing, under Act of 1905, 351, 385. 
 
 jury may make interferences as to, from all the evidence, 358. 
 
 loss of sales as an element of, 358, 359, 383. 
 
 may be mitigated by showing matter added to mark in use, 290. 
 
 nominal, in actions at law, 358. 
 
 plaintiff must elect between, and profits, under English practice, 
 382. 
 
 punitive, cannot be assessed in equity, 384. 
 
 punitive may be recovered at law, 355. 
 
 punitive, only where fraudulent intent shown, 356. 
 
 punitive or exemplary, where may be allowed where no actual 
 damage proven, at law, 358, note. 
 
 "DAY & MARTIN," 4L 
 
 DEAD LANGUAGES— 
 
 trademarks consisting of words from, 114. 
 words from, may be used as trademark, when, 114. 
 
 DEALER— 
 
 goodwill of, 188, 189. '
 
 INDEX. 823 
 
 References are to pages. 
 
 DEALER— Continued. 
 
 purchasing infringing goods from manufacturer, injunction 
 against, 377. 
 
 in fraudulent labels, 259. 
 DECEIT— 
 
 action of, by defrauded purchaser, 340. 
 DECEPTION— 
 
 doubt as to, resolved in favor of complainant, 268. » i 
 
 need not be shown, when, 271. 
 
 probability of, as test of infringement, 253. 
 
 proof of, when necessary, 253. 
 DECEPTIVE MARKS— 
 
 not registrable, 455, n. 24. 
 DECLARATION (see Forms) — 
 
 in action of trespass, 349. 
 DECREE— 
 
 directing defendant how to use a proper name, 386. 
 
 directory, generally, 386. 
 DEFENDANT (See Parties Defendant) — 
 
 unsuccessfully attaching plaintiff's title is wanton trespasser, 372. 
 
 DEFENSES— 
 
 abandonment, 176. 
 
 action at law better susceptible of defense than suit in equity, 354. 
 acquiesence, 174. 
 
 added matter used with infringing mark, ineffective, 290, 378. 
 adverse adjudication in a foreign country, 378. 
 attacking plaintiff's right to sue, 353. 
 denying, infringement, 354. 
 equality of quality no defense, 294. 
 estoppel, 353. 
 explanatory matter, 378. 
 
 fraudulent representations by plaintiff, as, 368. 
 in action at law, 353. 
 
 ineffective, that refilling was done at request of customer, 274. 
 in equity, 353. 
 insanity, 378. 
 
 laches, as defense to accounting, 172. 
 laches or delay, 172, 372. 
 license from owner, 53, 354. 
 misrepresentations by owner, 353. 
 
 no defense that purchaser was notified of real nature of in- 
 fringing goods, 360. 
 
 none to show defendant added "Improved" to infringing mark, 373. 
 none to show defendant placed his name, initials or address on 
 infringing goods, 294.
 
 824 INDEX. 
 
 References are to pages. 
 DEFENSES— Continued. 
 
 non-infringement, 354. 
 
 of abandonment, not favored, 177. 
 
 of equality of quality of goods, 373. 
 
 of infancy, 372. 
 
 of plaintiff adding coat-of-arms to trademark, 375. 
 
 of prior use, ineffective, where user accompanied by false rep- 
 resentations, 374. 
 
 of registration of defendant's mark, 372. 
 
 of using name and address in conjunction with trademark, 373. 
 
 plaintiff's failure to advertise assignment, 71. 
 
 prior use must be on same class, 374. 
 
 showing that infringement has ceased, ineffective, 377. 
 
 that complainant is a party to a combination in restraint of 
 trade, 378. 
 
 that defendant added word "Improved," 373. 
 
 that defendant did not intend to sell, ineffective, 374. 
 
 that defendant did not sell, ineffective, 377. 
 
 that defendant did not make infringing article, ineffective, 377. 
 
 that defendant has been licensed, ineffective where license re- 
 voked, 377. 
 
 that defendant has ceased infringing, 360. 
 
 that defendants have incorporated, ineffective, 374. 
 
 that defendant is acting as agent, ineffective, 377. 
 
 that infringing goods were made by plaintiff, ineffective, 373. 
 
 that infringement has ceased, no defense in action at law, 360. 
 
 that infringement is only partial, ineffective, 375. 
 
 that infringement of proper name is done under fraudulent li- 
 cense, ineffective, 375. 
 
 that infringement committed by agents or servants, 374. 
 
 that licensee has not joined in action, 377. 
 
 that mark has become publici juris, 353. 
 
 that mark is common to the trade, 353. 
 
 that others are infringing, ineffective, 374. 
 
 that plaintiff is guilty of misrepresentations to public, 376. 
 
 that territorial licensee is not joined in suit, ineffective, 377. 
 
 use by others on goods of another class, 374. 
 
 ■want of notice, ineffective, 375. 
 
 wrongful use of words "patent" or "patented," 72, 
 
 DEFINITIONS— 
 
 acquiescence, 174. 
 
 amount in controversy, 460, n. 35. 
 article of manufacture, 427. 
 citizenship, 450, n. 11. 
 counterfeit mark, 260. 
 distinctive, 7.
 
 INDEX. 
 
 825 
 
 References are to pages. 
 
 OEFINITIONS— Continued. 
 
 domicile, 450, n. 9. 
 
 essential features of trademark. 451, n. 13. 
 
 fac-simile, 452, n. 
 
 function of trademarks, 15. 
 
 generic term, 83, 105. 
 
 goodwill, 185. 
 
 imitation mark, 261. 
 
 infringement, 242. 
 
 label, 434. 
 
 laches, 174. 
 
 location, 450, n. 10. 
 
 owner, 486. 
 
 person, 486. 
 
 print, 434. 
 
 quack medicine, 220. 
 
 registrant, 486. 
 
 right of privacy, 231. 
 
 states, 486. 
 
 substitution, 276. 
 
 trademark, 3, 486. 
 
 tradename, 7. 
 
 trade secret, 219. 
 
 treaty, 449. n. 6. 
 DEGREE OF CARE— 
 
 expected of consumers, 264. 
 DEGREE OF RESEMBLANCE— 264. 
 DELAWARE STATUTES, 538. 
 
 DEMURRER— 
 
 interposed on application for preliminary Injunction, 381. 
 confesses allegations of fraud, and injunction issues if demurrer 
 
 overruled, 381. 
 proper attack on defects upon face of bill. 372. 
 sustained where exhibited conflicting marks show no infringe- 
 ment, 372. 
 to title shown in bill, 372. 
 
 will not lie to bill in equity on ground of uniting prayers for 
 damages and profits, 366. 
 "DENT. LONDON," 42. 
 "DERBY," 284. 
 
 "DERRINGER" (fire-arms). 99. 
 DESCRIPTION— 
 
 requisites of. in registration, 494. 
 DESCRIPTIVE PICTURE— 
 not a trademark, 70.
 
 826 INDEX. 
 
 References are to pages. 
 
 DESCRIPTIVE WORDS— 
 
 invalid because generic, 84. 
 not registrable, 455, ?^. 24. 
 
 valid trademarks if remotely descriptive, 86. 
 why objectionable as trademarks, 84. 
 DESIGN— 
 
 patented by another, not registrable as trademark, 457, n. 26. 
 "DESSICATED" (codfish), 89. 
 DETAILS— 
 
 similarity of, 301. 
 "DEWEY'S CHEWIES"— 
 
 refused registration, 239, n. 13. 
 "DIAMOND STEEL" (case), 289. 
 DIRECTORS— 
 
 of corporation as defendants in action for infringement by cor- 
 poration, 338. 
 DISCOVERY— 
 
 to avoid costs, 339. 
 when compelled, 395. 
 "DISQUE," 379. 
 DISSIMILAR WORD OR MARK— 
 
 may infringe, 290. 
 DISSOLUTION— 
 
 use of trademarks by partners on, 26. 
 use of trade secrets by partners on, 228. 
 DISTILLERY BRANDS— 
 
 assignability of, 34. 
 DISTINCTIVE— 
 defined, 7. 
 
 trademark must be^ 18. 
 DISTRICT OF COLUMBIA— 
 
 courts of appeals, jurisdiction under act of 1905, 475. 
 DISUSE— 
 
 abandonment of trademark by, 179. 
 DIVERSE CITIZENSHIP— 
 
 must be pleaded, in federal practice, 350. 
 "DOG'S HEAD BEER" (case). 28L 
 
 DOMICILE— 
 
 defined, 450, n. 9. 
 
 "DORIC," 284. 
 
 DOUBLE MEANING— 
 words of, 159.
 
 INDEX. 827 
 
 References are to pages. 
 
 DRESS— 
 
 of goods, 247, 250. 
 "DR. LOBENTHAL'S ESSENTIA ANTIPHTHISICA," 99. 
 "DRUGGISTS' SUNDRIES" (cigars), 89. 
 
 "DRUGGISTS' SUNDRIES"— 
 
 too broad for class in registration, 451. 
 
 "DRY MONOPOLE" (champagne), 89. 
 "DUBLIN" (soap), 99. 
 "DUPLEX," 284. 
 
 DURATION— 
 
 of life of trademarks, 18. 
 of term of registration, 477. 
 
 "DURHAM" (tobacco), 89, 99, 129, 285. 
 "DYSPEPTICURE," 99, 293. 
 
 E 
 
 "ECONOMY." 284. 
 "EDELWEISS" (perfume), 99. 
 "EGG" (macaroni), 89. 
 "EGYPTIAN DEITIES," 284. 
 "ELASTIC" (book-cases), 99. 
 "ELASTIC SEAM" (drawers), 89. 
 "EL CABIO" (tobacco), 115. 
 "EL DESTINO" (cigars), 115. 284. 
 "ELECTRO-SILICON," 99, 110, 284. 
 "ELGIN" (watches), 89, 134. 
 "ELK" (cigars), 99. 
 
 EMINENT DOMAIN— 
 
 goodwill subjected to, 195. 
 
 "EMOLLIA" (toilet cream), 99. 
 
 "EMOLLIORUM" (leather dressing), 89. 
 
 "EMPIRE" (stoves), 99. 
 
 EMPLOYEE— 
 
 enjoined from disclosing trade secrets, 220. 
 liable for infringement, 338. 
 
 EMPTY PACKAGES— 
 
 competitor enjoined from buying, 260. 
 
 "ENCYCLOPEDIA BRITANNICA," 89.
 
 828 INDEX. 
 
 References are to pages. 
 ENGRAVER— 
 
 of fraudulent marks, 259. 
 ENSEMBLE— 
 
 imitation of, 255. 
 "EPICURE" (canned salmon), 99. 
 EQUALITY OF QUALITY— 
 
 no defense, 294. 
 EQUITY— 
 
 jurisdiction of, in cases of unfair competition, 361. 
 
 relief in, 379. 
 "ESTATE AND EFFECTS"— 
 
 goodwill, not included in, 194. 
 ESTOPPEL— 
 
 as a defense, 353. 
 
 must be pleaded, 353. 
 
 of license to deny validity, 54. 
 
 of withdrawing partner as against subsequent creditor, where old 
 firm name used, 212. 
 
 "ETHIOPIAN" (stockings), 99, 119, n. 68. 
 "ETON" (cigarettes), 182. 
 "EUREKA" (fertilizer, etc.). 99, 114. 
 "EUREKA" (shirts), 99, 18L 
 "EVAPORATED" (food), 90. 
 "EVER READY" (coffee mills), 90. 
 "EVERYDAY SOAP," 291. 
 EVIDENCE— 
 
 burden of proof in refilling cases, 392. 
 
 burden of proving abandonment, 180. 
 
 burden of proving prior right, 180, n. 43. 
 
 delay in order to secure, not laches, 172. 
 
 expert, on question of infringement, 393. 
 
 matters of which courts take judicial notice, 391. 
 
 of abandonment, 176. 
 
 of deception, when necessary, 393, 
 
 of defendant's sales, 393. 
 
 of experts, as to habits of customers, 392. 
 
 of fraud, 271. 
 
 of fraud, particular instances, 272. 
 
 of fraudulent intent — 
 
 in trademark cases, 271. 
 
 in other cases of unfair competition, 271. 
 
 in criminal prosecution, 271. 
 
 of good faith 394. 
 
 of Intent of contemnor immaterial, 398.
 
 INDEX. 829 
 
 References are to pages. 
 ETVIDENCE— Continued. 
 
 of loss of sales, 358. 
 
 of loss of sales, in action at law, 358. 
 
 of other frauds, 272. 
 
 of submission of others, 396. 
 
 printing label in foreign language, evidence of fraud, 136. 
 
 registration as, of extent of claim, 322. 
 EVOLUTION OF LAW OF TRADEMARKS, 13. 
 "EXCELSIOR" (soap), 99, 114. 181, 284. 
 "EXCELSIOR" (stoves, etc)., 99, 182, 
 EXCLUSIVE LICENSEE— 
 
 must be a party, 53. 
 EXCLUSIVENESS— 
 
 as test of trademark's validity, 17. 
 EXECUTION— 
 
 may be levied on trade secret, 228. 
 
 on goodwill, 192. 
 EXEMPLARY DAMAGES— 
 
 in actions at law, 355. 
 
 may be allowed where no actual damages proven, 355. 
 EXHIBITS— 
 
 attaching to Injunctive order, 395. 
 
 introducing conflicting marks, as, 372. 
 
 demurrer may be sustained on inspection of, 372. 
 EXPERT EVIDENCE— 
 
 as to habits of customers, 392. 
 
 as to variance in alcoholic proof ia liquors, 392. 
 
 on question of infringement, 392. 
 
 valuable in doubtful case, 392. 
 
 on technical and scientific questions, 392. 
 
 on catch-words applied to goods, 393. 
 EXPORTERS— 
 
 may have trademarks, 57. 
 EXTENSIVE SALE— 
 
 does not invalidate mark, 120. 
 "EXTRACT OF NIGHT-BLOOMING CERBUS" (perfume), 90. 
 
 F 
 
 "FABER" (pencils), 100. 
 FAC-SIMILE— 
 
 defined, 452, n. 
 
 need not contain unessential features of mark, 452, n. 
 
 one only needed for registration, under Act of 1881. 452, n. 
 
 required in registration, under Act of 1905. 468.
 
 830 INDEX. 
 
 References are to pages. 
 "FADETTES" (case), 147. 
 "FAIRBANK'S PATENT" (scales), 90. 
 FALSE LABELS— 
 
 averment of bill to restrain dealing in, 778. 
 FALSE PRETENSES— 
 
 in sale of goods under imitation mark, 344. 
 FALSE REPRESENTATION— 
 
 as to foreign origin of goods, 137, 182. 
 
 in connection with trademarks, 67, 68, 70. 
 
 deprives owner of registered mark of protection, 460, n. 35. 
 FALSELY MARKING— 
 
 article "patented," 74. 
 "FAMILY" (salve), 100. 
 "FAMOUS" (stoves), 90. 
 "FANCY GOODS"— 
 
 too broad for class in registration, 451, n. 12. 
 "FARTHEST NORTH" (book title), 292. 
 "FAVORITA" (flour), 100. 
 "FAVORITE" (letter file), 90. 
 FEDERAL COURTS— 
 
 jurisdiction concurrent with state courts in trademark cases, 331. 
 
 jurisdiction dependent upon diverse citizenship in cases of un- 
 registered trademarks, 327. 
 
 jurisdiction of, in cases of unfair competition, 329. 
 
 jurisdiction of, in trademark cases, 331. 
 
 FEES (See Statutes; Act of 1905, and Statutes of the Several States) — 
 
 for registration of trademark in patent office, 506. 
 
 for registration, when refunded, 453, n. 17. 
 "FERRO-MANGANESE" (mineral water), 110. 
 
 "FERRO-PHOSPHORATED ELIXIR OF CALISAYA BARK," 90, 109. 
 "FIBRE CHAMOIS" (dress linings), 100. 
 "FILOFLOSS" (silk), 100, 29L 
 "FILOSELLE," 291. 
 "FILTRE RAPIDE" (filters), 100. 
 "FIRE-BOARD," 379. n. 86. 
 "FIRE-PROOF," (oil), 90. 
 FIRM NAME— 
 
 as part of goodwill, 211. 
 
 as trademarks, 141. 
 
 passes to purchaser of assets only by express agreement, 210. 
 FISH INSPECTOR— 
 
 marks of, 446, w. 3.
 
 INDEX. 831 
 
 References are to pages. 
 
 FLAG— 
 
 not registrable, 471. 
 "FLINCH" (game), 90. 
 "FLOR DE MARGARETTA," 284. 
 "FLOR FINA" (cigars), 115. 
 FLORIDA, STATUTES, 541. 
 FOREIGN ADJUDICATIONS— 
 
 upon right to trademark, 397, n, 
 FOREIGN CORPORATION— 
 
 right of, to enjoin formation of new corporation under same 
 name, 154, 156. 
 FOREIGNERS— 
 
 had no special privilege under act of March 3, 1881, 462, n. 41. 
 FOREIGN LANGUAGE— 
 
 printing generic word in letters from, does not make trademark, 
 85. 
 
 use of, as evidence of unfair competition, 136. 
 
 words from, as trademarks, 115. 
 FOREIGN TRADEMARK LAWS— 
 
 enumerated, 806. 
 FORGERY— 
 
 counterfeiting trademarks is not, 345. 
 FORM— 
 
 not registrable as trademark, 462, n. 
 
 infringement of, 250. 
 
 FORM, SIZE AND COLOR— 
 no trademark in, 243. 
 
 FOftMER— 
 
 adjudication, 380, 396. 
 
 FORMS (Forms for state registration are indexed under the names 
 of the several states.) — 
 answer, 781, 784. 
 bill of complaint: 
 
 trademark infringement, 749, 760, 767, 772, 778. 
 
 unfair competition, 755. 
 
 against dealer in spurious labels, 778. 
 cancellation, application for, 514. 
 contract against disclosing trade secret, 223. 
 covenant not to re-engage, 192, note; 202. 
 declaration, action at law^ 746. 
 drawing, form of, 513. 
 injunction: 
 
 interlocutory decree, 789.
 
 832 INDEX. 
 
 References are to pages. 
 FORMS— Continued. 
 
 final decree, 792, 793. 
 writ, 791. 
 interrogatories, 754. 
 
 mandate, circuit court of appeals, 794. 
 opposition, notice of, 514. 
 pleading registration of trademark, 774. 
 registration, prints and labels: 
 application by: 
 
 an individual — prints, 438. 
 a firm — prints, 438. 
 a corporation — prints, 438. 
 an individual — labels, 440. 
 a firm — labels, 440. 
 a corporation — labels, 440. 
 trademark registration: 
 petition, 509. 
 
 statement by an individual, 509. 
 declaration for an individual, 509. 
 statement by a firm, 510. 
 declaration for a firm, 510. 
 statement by a corporation, 511. 
 declaration for a corporation, 511. 
 declaration under ten-year-proviso, 511. 
 declaration for a foreign applicant, 511. 
 FORMS OF ACTION, 340. 
 FORMER ADJUDICATION— 
 
 value of, 380. 
 FORMULA— 
 
 protection of. 224. 
 FRAUD— 
 
 as the basis of equitable jurisdiction, 35, 36, 38, 39, 41. 
 evidence of, 136. 
 
 how charged in bill to restrain unfair competition, 366, n, 19. 
 in using one's own name, 145. 
 no fixed rules for dealing with, in equity, 303. 
 must be pleaded in action at law, 351. 
 must he proven in cases of unfair competition, 44. 
 presumed from printing American label in foreign language, 136. 
 presumed from wrongful use of trademark, 38, 44. 
 FRAUDULENT INTENT— 
 how proven, 272. 
 may be inferred, 257. 
 must be shown in action at law, 257. 
 
 presumed in equity from wrongful use of trademark, 38, 257. 
 proof of, 259, 272. 
 
 M
 
 INDEX. 833 
 
 References are to pages. 
 
 FRAUDULENT PACKAGES— 
 
 liability of dealer in, 340. 
 FRAUDULENT REPRESENTATIONS— 
 
 by plaintiff, as a defense, 353. 368. 
 "FRENCH" (paints), 90. 
 "FRENCH TISSUE" (medicated paper), 90. 
 "FRUIT SALT," 370. 
 "FRUIT" (vinegar), 90. 
 FUNCTION— 
 
 of trademarks, 15. 
 
 G 
 
 "GALEN" (manufactured glass), 90. 
 
 "G. E." (electric lamps), 299. 
 
 GENERIC TERMS— 
 
 cannot be trademarks, 66. 
 
 classified, 83. 
 
 common to trade, no exclusive right to, conveyed by registration, 
 
 111. 
 defined, 83. 
 
 from dead languages, not valid trademarks, 114. 
 Illustrations of, 87. 
 
 include geographical and descriptive words and proper names, 83. 
 judicially defined, 105. 
 not made trademarks by registration, 321. 
 
 "GENUINE YANKEE" (soap), 245. 
 
 GEOGRAPHICAL NAMES— 
 
 as employed by sole owner of natural product and place of 
 
 production, 55, 84. 
 as trademarks, 55, 86, 128. 
 
 cannot be essential feature of trademark, 455. 
 classification of, 455, n. 24. 
 not registrable, generally, 455. 
 when registrable, 455. 
 false use of vitiates trademark, 135. 
 may be descriptive or deceptive, 455, n. 24. 
 not made registrable by surrounding geometrical figure, 456, n. 
 not registrable under Act of 1905, 471. 
 not trademarks because generic, 83. 
 protected against unfair competition, 121. 
 when protected as trademarks, 129. 
 who may complain of false use of, 136. 
 why objectionable as trademarks, 83. 
 
 53
 
 834 INDEX. 
 
 References are to pages. 
 
 GEORGIA, STATUTES, 546. 
 
 "GERMAN" (sweet chocolate), 135, 285. 
 
 "GERMAN HOUSEHOLD DYES," 285. 
 
 "GERMANIA," 285. 
 
 "GERMEA," 285. 
 
 "G. F.," 299. 
 
 "GIBRALTAR" (lamp chimneys), 90. 
 
 GLASSBLOWERS AND GLASS-STAINERS— 
 goodwill of, 188. 
 
 "GLENDON" (iron), 90. 
 
 "GLENFIELD" (starch), 100. 
 
 "GOLD DUST," 285. 
 
 "GOLD LABEL" (bread), 90. i 
 
 "GOLD MEDAL" (saleratus), 90. ^ 
 
 "GOLDEN CROWN" (cigars), 100, 285. 
 
 "GOLDEN" (ointment), 90. 
 
 "GOLDEN WEDDING" (whiskey), 100. 
 
 "GOLIATH," 449. 
 
 GOODWILL— 
 
 administration of, in partnership estate, 212. 
 
 advertising as an element of, 39, n. 17. 
 
 appraisal of, 205. 
 
 analogous to trademarks, 204. 
 
 as subject of levy and sale, 192. 
 
 classes of business having, 187. 
 
 competition between vendor and vendee, 206. 
 
 conveyance of, by stockholders, 202. 
 
 covenant to make valuable, 209. 
 
 damages for impairment of, 213. 
 
 defined, 185, 186, 187. 
 
 general and local, distinguished, 185, 195. 
 
 goes to personal representative, 206. 
 
 in relation to firm and corporate names, 196. 
 
 inseparable from trademarks, 8, 193. 
 
 involuntary alienation of, 192. 
 
 jurisdiction in federal courts in cases involving, 217. 
 
 mortgage of, 192. 
 
 not necessarily included in mortgage of entire assets, 194, n. 65. 
 
 of foreign corporation, 192. 
 
 of learned professions, 190. 
 
 of newspaper, 192. 
 
 of partnership, 210. 
 
 professional, 190.
 
 INDEX. 835 
 
 References are to pages. 
 
 GOODWILL— Continued. 
 
 remedies of purchaser, 212. 
 
 rescission of contract for sale of, 215. 
 
 rights of vendor, 197. 
 
 sale of, 191. 
 
 sale of, on dissolution, 2UG. 
 
 sale of, conveys trademarks without special mention, 27. 
 
 subject to eminent domain, 195. 
 
 taxation of, 192. 
 
 trademarlts inseparable from, 61. 
 
 trademarks can only be assigned with, 61. 
 
 valuation of, 204. 
 
 vendee of, enjoined from re-engaging in business, 206. 
 
 what words necessary to convey, 193. 
 "GOODWILL. ETC."— 
 
 defined, 194. 
 "GOODYEAR RUBBER CO.," 90, 152. 
 "GOTHIC," 285. 
 
 "GOURAUD'S ORIENTAL CREAM" (cosmetic), 100. 
 "GRAND MASTER" (cigars), 100. 
 "GRANITE" (kitchen utensils), 90. 
 "GRANOLITHIC" (artificial stone), 90. 
 "GRANULATED DIRT-KILLER" (soap), 90. 
 "GRAPE-NUTS," 291. 
 
 "GREATEST VALUE FOR THE MONEY" (shoes), 90. 
 "GREEN MOUNTAIN" (sythe-stones). 91, 100. 
 "GRENADE" (syrup), 100, 119. 
 GROUPS OF LETTERS— 
 
 as trademarks, 297. 
 "GUARANTEED" (corsets), 91. 
 "GUENTHER'S BEST" (flour), 91. 
 GUILTY KNOWLEDGE— 
 
 need not be proven, when, 259. 
 "GUINNESS," 285. 
 "GYRATOR" (bolting machines), 91. 
 
 H 
 
 "HABANA," 404, n. 16. 
 HABERDASHER— 
 
 goodwill of, 188. 
 "HAMBURG" (tea). 91.
 
 836 INDEX. 
 
 References are to pages. 
 "HAND GRENADE" (fire extinguisher), 91. 
 "HANFORD'S CHESTNUT GROVE" (whiskey), 100. 
 "HANSA" (lard, etc.), 100. 
 HARDWARE DEALER— 
 
 goodwill of, 188. 
 "HARVEY'S SAUCE/' 91. 
 
 "HAZLETON BOILER COMPANY" (case), 156. 
 "HEADACHE WAFERS," 91. 
 "HEALTH FOOD" (cereal products), 91. 
 "HEALTH PRESERVING" (corsets), 91. 
 "HELIOTYPE" (prints), 100. 
 "HERO" (jars), 100. 
 
 "HIGHLY CONCENTRATED COMPOUND FLUID EXTRACT OF 
 BUCHU," 91. 
 
 "HOLBROOK'S" (school apparatus), 91. 
 
 "HOLLAND HOUSE" (case), 312. 
 
 "HOME" (sewing machines), 100, 285. 
 
 "HOMEOPATHIC MEDICINES," 9L 
 
 "HONEYMOON," 285. 
 
 "HOOSIER" (drills), 100. 
 
 "HOSTETTER'S BITTERS"— 
 
 infringement by dealing in material for refilling, 273. 
 
 infringed by other words, 285. 
 HOTEL NAMES, 310. 
 "HOWQUA'S MIXTURE," 100. 
 
 "HUMPHREY'S HOMOEPATHIC SPECIFICS," 285. 
 "HUNTER" (shoes etc.), 100. 
 "HUNTSMAN'S CHERRY BRANDY," 281. 
 "HUNYADI" cases, 100, 173. 
 "HURRICANE," 291. 
 "HYDRO-BROMO SODA MINT," 91. 
 "HYGEIA" (water), 100. 
 "HYGIENIC" (underwear), 91. 
 "HYGIENIQUES" (suspenders), 100, 
 
 IDAHO, STATUTES, 549. 
 
 "IDEAL" (fountain pens), 101. 
 
 ILLINOIS. STATUTES AND FORMS, 553, 558.
 
 INDEX. 837 
 
 References are to pages. 
 
 ILLUSTRATIONS— 
 
 of generic terms, 87. 
 
 of valid trademarks, 96. 
 IMITATION— 
 
 of particulars common to the trade, 261. 
 
 of trademarks, 261. 
 
 of trademark, may be limited or partial, 261. 
 "IMPERIAL" (beer), 91. 
 IMPORTERS— 
 
 may have trademarks, 57. 
 IMPOSITION— 
 
 on the public, as test of infringement, 266. 
 IMPROPER JOINDER— 
 
 of other causes of action with suits to restrain unfair competi- 
 tion, 340. 
 "IMPROVED"— 
 
 addition of, to mark, no defense, 373. 
 INDIANA, STATUTES AND FORMS, 559, 564. 
 "INDIAN POND" (sythe-stones). 101. 
 "INDIAN ROOT" (pills), 101. 
 INDIAN TRIBES— 
 
 commerce with may be wholly in a single state, 448, n. 5. 
 "INDURATED FIBRE" (wood-pulp products), 91, 109. 
 "IN-ER-SEAL" (bakery products), 101. 
 INFANCY— 
 
 not a defense, 372. 
 INFANT— 
 
 liable for costs, 402. 
 INFRINGER— 
 
 liable for whole profit on infringing article, 383. 
 
 may recover from person procuring the infringement, 406. 
 
 INFRINGEMENT— 
 
 by a dissimilar word or mark, 280. 
 
 by applying manufacturer's mark to his goods not intended to be 
 
 so marked, 275. 
 by counterfeiting, 260. 
 by goods of equal quality, 294. 
 by imitation, 261. 
 
 by others than defendant, no defense, 374. 
 by refilling genuine packages, 273. 
 by solicitation of complainant's agent, 368. 
 defined, 242. 
 discontinuance of, no defense to action for damages, 377.
 
 838 
 
 INDEX. 
 
 References are to pages. 
 
 INFEINGEMENT— Continued. 
 
 evidence of loss of sales resulting from, 360. 
 
 expert evidence as to, 392. 
 
 how pleaded, in action at law, 351. 
 
 in another jurisdiction, 304. 
 
 judicial tests of, 299. 
 
 liability of person ordering, to manufacturer, 260. 
 
 may be partial, 242, 375. 
 
 must be on same class of goods, 120, n. 67, 268, 312. 
 
 of catchwords, 123. 
 
 of form, size and color, 243, 250. 
 
 tested by probability of deception, 262. 
 
 tests of, 299. 
 
 what participants liable for, 336. 
 
 when single instance of, warrants injunction, 393, n. 13. 
 
 INITIALS— 
 
 as trademarks, 297. 
 
 INJUNCTION (see FORMS; INTERLOCUTORY DECREE; PRELIM- 
 INARY INJUNCTION.) — 
 
 against dealers, printers, engravers, etc., 259. 
 
 against disclosure of trade-secret, 219. 
 
 against fraudulent imitation of tin tag, 243. 
 
 against licensee on breach of condition, 377. 
 
 against refilling, 273. 
 
 against vendee of good-will re-engaging in business, 206. 
 
 cannot issue in suit to which exclusive licensee is not a party, 53. 
 
 denied when doubt whether plaintiff's mark generic, 379. 
 
 denied when plaintiff guilty of laches, 172. 
 
 denied where exclusiveness of plaintiff's fight doubtful, 379. 
 
 denied where plaintiff's right not exclusive, 380. 
 
 denied where plaintiff's right or defendant's infringement doubt- 
 ful, 379. 
 
 enlarging on hearing of contempt proceedings, 399. 
 
 forms of, 789, 791. 
 
 granted against threatened infringement, 377. 
 
 granted on ex parte affidavits only in clear case, 380. 
 
 limited as to territory, 20. 
 
 may be granted without costs, 406. 
 
 preliminary, may be reviewed and enlarged on appeal, in federal 
 practice, 389. 
 
 may issue against all persons connected with infringing corpora- 
 tion, 207. 
 
 no contempt in violation of, where stayed by appeal, 399. 
 
 refused owner of registered mark containing false representation, 
 460, n. 35.
 
 INDEX. 839 
 
 References are to pages. 
 
 INJUNCTION— Continued. 
 
 preliminary, refused where defendant solvent, and injury may be 
 repaired by money judgment, 379, n. 83. 
 
 right to, not lost by laches and acquiescence, 172. 
 
 value of interlocutory decree in another case, 397. 
 
 preliminary, weight of former adjudications concerning plaintiff's 
 title, upon, 380, 396. 
 
 when warranted by evidence of single infringement, 393, n. 13. 
 
 who liable to, 257. 
 
 will lie against registrant by one having prior right, 4C0, n. 35. 
 INJURY— 
 
 need not be proven, 377. 
 INOPERATIVE DEFENSES (See Defenses) — 
 
 that the mark has become indicative of quality through extensive 
 sales, 120. 
 INSANITY— 
 
 not a defense to charge of infringement, 378. 
 "INSECTINE" (insect powder), 101. 
 INSPECTION BY THE COURT— 
 
 of conflicting marks, 272. 
 INSPECTION— 
 
 of books and papers, 395. 
 "INSTANTANEOUS" (tapioca), 91, 160. 
 "INSURANCE" (oil), 101. 
 INTENT— 
 
 distinction between trademark and other cases as to, 256. 
 
 generally, 255. 
 
 immaterial in action in equity, 256. 
 
 immaterial where no injury done, 256. 
 
 of parties as to assignment of trademark, 178. 
 INTENTION— 
 
 actual intention to adopt trademark necessary, 21. 
 
 INTERFERENCE— 
 appeals, 421, n. 31. 
 
 may be declared between partner and firm, 458, n. 29. 
 better title prevails, 
 between registrant and applicant, 324. 
 burden of proof upon applicant, 324. 
 effect of decision, 421, 7i. 31, 458, n. 30. 
 nature of issues in, 326, 421, 458. 
 nature of practice in, 324, 325. 
 preliminary statement, 325. 
 
 registrant under act of 1870 notified of application under act of 
 1881 to register similar mark, 458, n. 29.
 
 840 INDEX. 
 
 References are to pages. 
 
 INTERLOCUTORY DECREE (see Forms) — 
 
 as evidence of right to trademark, 397. 
 
 decree may adjudge costs, 407. 
 INTERMITTENT USE — 
 
 will not establish trademark right, 21. 
 "INTERNATIONAL BANKING CO.," 9L 
 INTERNATIONAL CONVENTION— 
 
 for protection of industrial property, 798. 
 
 United States not a party, 804, n. 
 INTERROGATORIES— 
 
 form of, 754. 
 INTERRUPTED USE— 
 
 will not create title, 21, 58. 
 INTERSTATE COMMERCE— 
 
 present federal act relates to trademarks used in, 493. 
 "INTIMIDAD" (cigars), 115. 
 INVENTION— 
 
 name of an unpateated, 108. 
 "INVIGORATOR" (spring bed bottoms), 101. 
 IOWA, STATUTES AND FORMS, 565, 567. 
 "IRON BITTERS," 91. 
 "IRON CLAD" (boots), 101. 
 "IRONSTONE" (water pipe), 91. 
 
 JEOPARDY— 
 
 of mark by defendant's acts should be pleaded, 330. 
 "J. H. W." (boots), 299. 
 
 "JOHNSON'S AMERICAN ANODYNE" (liniment), 92. 
 JOINDER— 
 
 of causes of action, 340. 
 
 of parties plaintiff, 334. 
 JOINT TORT-FEASOR— 
 
 liable for whole damage resulting from tort, 384. 
 
 licensor and licensee as, 146. 
 JUDICIAL DEFINITIONS— 
 
 of goodwill, 185. 
 
 of trademarks, 3. 
 
 JUDICIAL NOTICE, 391. 
 
 JUDICIAL TESTS— 
 
 of infringement, 299.
 
 INDEX. 841 
 
 References are to pages. 
 "JULIENNE" (soup), 92. 
 "JUNKET TABLETS," 101, 285. 
 JURISDICTION— 
 
 of equity based on right of property in trademark cases, 41. 
 
 of equity in matters of trade-secret, 221. 
 
 of federal courts in cases involving goodwill, 212. 
 
 of federal courts in cases of unfair competition, 46, 329, 331. 
 
 of federal courts in trademark cases, 327. 
 
 of federal courts under Act of 1881, 320. 
 
 of federal courts in trademark actions between citizens of same 
 state, 46. 
 
 where complainant an alien, 461, n. 39. 
 
 of state courts, in trademark cases, 331. 
 
 of state and federal courts, concurrent in trademark cases, 331. 
 
 K 
 
 "KAISER" (beer), 92, 101. 
 KANSAS STATUTES, 568. 
 "KATHAIRON" (remedy), 101. 
 KENTUCKY STATUTES, 569. 
 "KENTUCKY CLUB" (whisky), 92. 
 "KENTUCKY'S CRITERION," 285. 
 "KEYSTONE LINE," 337. 
 "KID NEE KURE," 85, 92. 
 "KIDNEY AND LIVER" (bitters), 92. 
 "KING BEE" (smoking tobacco), 101. 
 "KITCHEN CRYSTAL" (soap), 101. 
 "KNICKERBOCKER" (shoes), 101. 
 "KOFFIO" (cereal coffee), 101. 
 "KOKOKO"— 
 
 aboriginal, refused registration as trademark for cotton goods, 116. 
 
 LABEI^- 
 
 as commercial dress, 258. 
 
 dealer in, liable for damages, 384. 
 
 defined, 434. 
 
 designing by court for defendant's direction, 144. 
 
 engraver, liability of, 259. 
 
 false, averments of bill to restrain dealing in, 260. 
 
 false, manufacture of, 259.
 
 842 INDEX. 
 
 References are to pages. 
 LABEL — Continued. 
 
 fraudulent intent of manufacturer presumed, where, 260. 
 
 if containing false statements invalidates trademark used there- 
 with, 67. 
 
 serves same purpose as trademark, 258. 
 
 intended to be removed by retail dealer, 301. 
 LABEL MANUFACTURER— 
 
 liability of, 259. 
 LACHES— 
 
 a bar to preliminary injunction, 172. 
 
 a bar to relief against unfair competition, 173. 
 
 as a defense, 172. 
 
 as governed by statute of limitations, 360. 
 
 distinguished from acquiescence, 174, 175. 
 
 may bar account, 172, 372. 
 
 may work abandonment, 120. 
 
 no bar to injunction, 172. 
 
 none where delay is to secure evidence, 172. 
 
 none where plaintiff ignorant of infringement, 172. 
 "LACKAWANNA" (coal), 92. 
 "LA CRONICA" (newspaper), 101. 
 "LACTO-PEPTINE," 101, 286. 
 "LA FAVORITA" (flour), 101, 106, 116. 
 "LAIGLON" CASE, 170. 
 "LAKE" (glass product), 92. 
 "LAMOILLE" (scythe-stones), 101. 
 "LA NORMA" (cigar boxes), 101. 
 "LANDLORDS' PROTECTIVE BUREAU," 285. 
 "LA NORMANDI" (cigars), 92, 101. 
 "LANOLINE" (patented wool-fat preparation), 109. 
 LECTURES— 
 
 publication of, restrained, 225. 
 "LEOPOLD" (cloth), 101. 
 "LEOPOLDSHALL," 285. 
 "LE PAGE" (glue), 101. 
 LETTERS AND NUMERALS— 
 
 whether subject to appropriation as trademark, 295. 
 
 protected against unfair competition, 296. 
 LETTERS PATENT— 
 
 compared with trademarks, 13. 
 LEVY AND SALE— 
 
 on goodwill, 192. 
 
 on trade-secrets, 228, 229. 

 
 INDEX. 843 
 
 References are to pages. 
 
 LIABILITY— 
 
 of contributory infringer, 339. 
 
 of deception, in case of unfair competition, 271. 
 
 of all connected with infringement, 258. 
 
 LIBEL— 
 
 charging trademark infringement, 46, 47, 48. 
 
 in trade, 46. 
 LICENSE, 52. 
 
 as a defense, 53. 
 
 joint, of patent and trademark, 53. 
 
 once revoked, no defense to subsequent infringement, 54. 
 
 revocable, to use trademark, 54. 
 
 to use mark for fraudulent purpose, 155. 
 "LICENSED VICTUALLERS" (relish), 102. 
 LICENSEE— 
 
 estopped to deny validity, 54. 
 
 exclusive, must be party to action, 53, 
 
 joint tort-feasor with licensor, 146. 
 
 may sue for infringement, 53, 334. 
 
 territorial, need not be joined as plaintiff, 53. 
 LICENSOR— 
 
 necessary party to suit for infringement, 83. 
 "LIEBIG'S EXTRACT OF MEAT," 92. 
 "LIEUTENANT JAMES' HORSE BLISTER," 92. 
 "LIGHTNING" (hay knives), 102, 285. 
 "LILIPUTIAN BAZAAR" CASE, 309. 
 "LIMETTA," 285. 
 "LINOLEUM," 92, 109. 
 "LION" (merchandise), 102. 
 LIQUIDATED DAMAGES— 
 
 in contracts affecting goodwill, 213. 
 LITHOGRAPHS— 
 
 improper reproduction of, restrained, 225 
 "LITTLE SHOP," 286. 
 "LIVEROID," 293. 
 "LIVERPOOL" (cloth), 102. 
 LIVERY STABLE— 
 
 goodwill of, 188. 
 LOCATION— 
 
 change of, as evidence of fraud, 272. 
 "LOCH KATRINE" (whiskey), 92. 
 "LONDON WHIFFS" (cigars), 102.
 
 844 INDEX. 
 
 References are to pages. 
 
 •'LONE JACK" (tobacco), 102, 268, 
 
 LOSS OF SALES— 
 
 as proof of damages, 358. 
 
 how established in cases of infringement, 394. 
 
 LOUISIANA STATUTES AND FORMS, 570, 573. 
 
 M 
 
 "MAGIC" (scythe-stones), 102. 
 "MAGNETIC BALM" (ointment), 102, 110. 
 "MAGNOLIA" (whiskey). 34, 102. 
 "MAGNOLIA" (metal), 92. 
 MAIL-MATTER— 
 
 protection of, 148, n. 55, 308. 
 MAINE STATUTES AND FORMS, 574, 580. 
 "MAIZENA" (corn flour), 102, 286. 
 "MALTED MILK," 92. 
 
 MANDAMUS— 
 
 does not lie to direct action of commissioner on trademark appli- 
 cations, 457, 71. 28. 
 MANUFACTURER OF FALSE LABELS— 
 
 liability of, 259. 
 "MANUFACTURERS' OUTLET CO.," 286. 
 "MAPLE LEAF," 293. 
 
 MARK— 
 
 common to a trade, 106, 107, 111. 
 MARKING ARTICLE "REGISTERED U. S. PATENT OFFICE," 323. 
 MARQUE DE COMMERCE— 
 
 comprehended by our word trademark, 6. 
 MARQUE DE FABRIQUE— 
 
 comprehended by our word trademark, 6. 
 MARRIED WOMAN— 
 
 having separate estate, liable for costs, 402. 
 "MARSHALL'S CELEBRATED" (liniment), 92. 
 "MARVEL" (mill products), 102. 
 MARYLAND STATUTES AND FORMS, 581, 584. 
 "MARYLAND CLUB RYE," 92, 286. 
 "MASONIC" (cigars), 92. 
 "MASON'S PATENT" (jars), 72. 
 MASSACHUSETTS STATUTES AND FORMS, 585, 591.
 
 INDEX. 845 
 
 References are to pages. 
 
 MASTER AND SERVANT— 
 
 implied contract not to disclose trade secret, 222. 
 MATERIAL— 
 
 not registrable as trademark, 452, n. 
 "MATZOON" (fermented milk), 92, 117. 
 "MAZAWATTEE" (tea), 116. 
 MEANINGLESS— 
 
 trademark must be, 71, n. 17. 
 MEASURE OF DAMAGES— 
 
 in action for breach of covenant not to re-engage, 214. 
 
 in actions for invasion of goodwill, 213. 
 "MECHANICS' STORE," 286. 
 MEDALS— 
 
 of award, fictitious, 273. 
 "MEDICATED MEXICAN BALM" (medicine), 102. 
 "MEDICATED PRUNES" (medicine), 92. 
 "MENLO PARK" (watches), 102. 
 MERCHANDISE— 
 
 cannot be a trademark, 112. 
 
 of substantially the same descriptive properties, 460. 
 "METALLIC CLINTON" (paint), 93. 
 
 METHOD OF ARRANGEMENT— 
 
 not a trademark, 113, 243. 
 MICHIGAN STATUTES AND FORMS, 593, 597. 
 "MICROBE KILLER," 93. 
 MINNESOTA STATUTES, 598. 
 "MINNESOTA PATENT" (flour), 8. 
 
 MINOR DIFFERENCES— 
 
 of forms and dress, no defense, 302, n. 28. 
 
 MISREPRESENTATION— 
 
 as to size of package, when package is ordinary size known to 
 
 the trade, 376. 
 collateral, 376. 
 enjoined whether oral or written, 277. 
 
 MISSISSIPPI STATUTES, 607. 
 
 MISSOURI STATUTES AND FORMS, 609, 616. 
 
 MISSPELLING— 
 
 generic word does not make trademark, 85. 
 
 MISTAKE— 
 
 in registration by a partner, creates a trust, 334, n. 30.
 
 846 INDEX. 
 
 References are to pages. 
 
 MODE OF APPLICATION— 
 
 must be stated in application for registration, 451. 
 MODERN FOREIGN LANGUAGES— 
 
 words taken from, as trademarks, 115. 
 "MOJAVA" (coffee), 102. 
 "IVIOLINE" (plows), 93. 
 "MOMAJA," 286. 
 "MONEYS, STOCK IN TRADE, DEBTS, EFFECTS AND THINGS"— 
 
 includes goodwill, 194. 
 MONOGRAMS— 
 
 as trademarks, 299. 
 MONOPOLIES— { 
 
 trademark rights as, 49. 
 MONTANA STATUTES, 618. 
 "MONTSERRAT" (lime juice), 93. 
 
 "MORSE'S COMPOUND SYRUP OF YELLOW DOCK ROOT," 286. 
 MORTGAGE— 
 
 of assets of business does not necessarily include goodwill, 194, 
 n. 65. 
 
 of goodwill, 192. 
 MORTGAGEE— 
 
 lien of, upon infringing goods, 339. 
 "MOTTLED GERMAN SOAP," 287. 
 "MOXIE NERVE FOOD," 287. 
 "MOUNT VERNON RYE," 250. 
 "MUFFLET" (neck scarfs), 102, 292. 
 
 N 
 
 NAME (see Proper Names) — 
 aflSxed to establishment, 146. 
 necessary, of a product. 111. 
 
 of celebrity, refused registration when also geographical name, 129. 
 of defendant, added to mark, circumstance in his favor, 294. 
 of place of amusement, 146. 
 of secret preparation, 219. 
 one's own, 139. 
 
 NAME OF PATENTED ARTICLE— 
 
 made publici juris by expiration of patent, 78. 
 
 protected from unfair competition after expiration of patent, 122. 
 
 NAMES— 
 
 christian, of applicants for registration should be given, 450, n. 8. 
 of celebrities, 239.
 
 INDEX. 847 
 
 References are to pages. 
 "NAPOLEON" (cigars), 102, 139. 
 "NATIONAL POLICE GAZETTE" CASE, 165. 
 "NATIONAL SPERM" (candles), 93. 
 "NATIVE GUANP" (fertilizer), 93. 
 NATURAL PRODUCT— 
 
 name of, as trademark, 55, 129. 
 NEBRASKA STATUTES, 619. 
 "NE PLUS ULTRA," 114. 
 NEVADA STATUTES, 621. 
 "NEW ERA" (newspaper), 102, 165. 
 
 NEW HAMPSHIRE STATUTES AND FORMS, 625, 627. 
 NEW JERSEY STATUTES, 628. 
 "NEW MANNY" (harvester), 93. 
 NEW MEXICO STATUTES, 639. 
 NEWSPAPER— 
 
 goodwill of, 37. 
 
 Infringement of name of, 37, 164. 
 NEW YORK STATUTES, 641. 
 "NEW YORK" (glass products), 93, 
 "NICKEL" (soap), 102. 
 "NICKEL-IN" (cigars), 102, 287. 
 "NITRO," 293. 
 NOMINAL DAMAGES— 
 
 in actions at law, 358. 
 "NORMAL," 287. 
 
 NORTH CAROLINA STATUTES AND FORMS, 657, 664. 
 NORTH DAKOTA STATUTES, 665. 
 NOTICE— 
 
 before suit, inadvisable, 370. 
 
 defendant not entitled to, 369. 
 
 want of, no defense, 369. 
 "NO-TO-BAC" (medicine), 102, 290. 
 "NOURISHING LONDON" (stout), 93. . 
 NUMERALS— 
 
 as trademarks, 295. 
 
 o 
 
 "O. F. C." (whiskey), 102, 299. 
 OFFICIAL BRAND— 
 
 not a trademark, 446.
 
 848 INDEX. 
 
 References are to pages. 
 OHIO STATUTES, 668. 
 OKLAHOMA STATUTES, 669. 
 "OLD BOURBON" (whiskey), 93. 
 "OLD COUNTRY" (soap), 93. 
 "OLD CROW" (whiskey), 102, 287. 
 "OLD INNISHOWEN" (whiskey), 93. 
 "OLD LONDON DOCK" (gin), 93. 
 "OLD MILL" (soap), 287. 
 "OLD PEPPER" (whiskey), 67, 179. 
 "OLD SLEUTH LIBRARY" CASE, 163. 
 "OLIVE" (bicycles), 93. 
 "OMEGA OIL" (liniment), 102, 269. 
 "ONE NIGHT CURE," 291. 
 ONE'S OWN NAME— 
 
 generally, 139. 
 
 gratuitous permission to use, may be withdrawn at will, 175, n. 14. 
 
 injunction against use of, after assignment, 148. 
 
 revocation of license to use, 149. 
 
 sale of right to use, 141. 
 "ONLY GENUINE"— 
 
 improperly used by one not having exclusive title, 336, 368, 
 
 "OOMOO" (cotton goods), 116. 
 
 "OPPORTUNITY OF COMPARISON," 300. 
 
 ORAL REPRESENTATIONS— 
 
 of identity, enjoined when false, 277. 
 
 OREGON STATUTES AND FORMS, 673, 676. 
 
 "ORIENTAL CREAM" CASE, 273. 
 
 "ORIGIN OR OWNERSHIP"— 
 generally, 62, 63, 126. 
 
 ORIGINALITY— 
 
 not a test of trademark right, 14, 63. 
 
 "OSBORNE HOUSE" CASE, 179. 
 
 "OSMAN" (towels), 103. 
 
 "OTAKA" (biscuit), 103. 
 
 OWNERSHIP— 
 
 change of, public should be notified of, 24. 
 
 need not be indicated in connection with mark, 15. 
 
 prerequisite to registration, 446. 
 "OXFORD" (bibles), 103.
 
 INDEX. 849 
 
 References are to pages. 
 
 P 
 
 PACKAGES— 
 
 cannot be a trademark, 112. 
 
 empty, restraint of competitor from buying, 260. 
 
 fraudulent, liability of dealer in, 340. 
 
 protection in use of, 243. 
 PACKING— 
 
 method of, not trademark, 113, 243. 
 "PAIN-KILLER" (medicine), 103. 
 
 PALMING OFF— 
 
 enjoined, 38, n. 15. 
 "PANCOAST," 287. 
 "PARABOLA" (needles), 103. 
 "PARAFFIN" (oil), 93. 
 "PARAGON," 287. 
 "PARCHEESI" (game), 93. 
 "PARSON'S PURGATIVE" (pills), 93. 
 PARTIES DEFENDANT, 257, 336. 
 PARTIES PLAINTIFF— 
 
 must include exclusive licensee, 53, 334. 
 
 where trademark is incident to realty, 335. 
 
 who may be, 136. 
 PARTNER— 
 
 when trustee of mark for firm's benefit, 334, n. 30. 
 
 PARTNERSHIP— 
 
 administration of partnership estate, 212. 
 
 agreements upon dissolution, 199, n. 85. 
 
 effect of retirement of one partner, 30. 
 
 goodwill of, 31, 204. 
 
 injunction by withdrawing partner against use of firm name, 211. 
 
 name must not import incorporation (in Illinois), 156. 
 
 one not a partner cannot secure registration of mark, 454, 7?. 19 
 
 rights of partners In trademarks on dissolution, 26, 211. 
 
 sale of goodwill on dissolution conveys trademarks without spe- 
 cial mention, 27. 
 
 trademarks of individuals merged in partnership property, 30. 
 "PASSING OFF"— 
 
 the English equivalent of unfair competition, 44. 
 
 PATENT— 
 
 action for infringement of: 
 
 properly joined with charge of trademark infringement, 340. 
 improperly joined with charge of unfair competition, 366, n. 19. 
 compared with trademarks, 11. 
 54
 
 850 INDEX. 
 
 Refereyices are to pages. 
 
 PATENTED ARTICLE— 
 
 dress of, protected after expiration of patent, 122. 
 
 registration refused name of or mark for, 80. 
 
 trademark right in name applied to, 78, 108. 
 
 trademark right in name applied to, not abandoned during life 
 of patent, 82. 
 "PATENT," "PATENTED," "PATENTEE"— 
 
 unauthorized use of words, 72, 75, 368. 
 "PATENT PLUMBAGO CRUCIBLES," 73. 
 "PATENT SOLID-HEADED PINS," 76. 
 "PATENT THREAD," 77. 
 "PECTORINE" (medicine), 103. 
 PENAL LAWS (see Names of the Several States). 
 PENNSYLVANIA STATUTES AND FORMS, 677, 682. 
 'PEPKO," 293. 
 
 "PEPTO-MANGAN" (medicine), 103, 116, 287. 
 "PERFECT FACE PASTE," 93. 
 "PERFECTION" (mattresses), 103. 
 PERIODICAL— 
 
 infringement of name of, 164. 
 
 titles of, as trademarks, 164. 
 PERPETUAL EXISTENCE OF TRADEMARKS, 18. 
 "PERSIAN" (thread), 103. 
 PERSONAL REPRESENTATIVE— 
 
 goodwill goes to, 206. 
 "PESSENDEDE" (watches), 118. 
 "PHILADELPHIA" (beer), 93. 
 PHILIPPINES— 
 
 protection of registered trademarks in, 487. 
 PHONOGRAPH RECORDS— 
 
 imitation of, 244. 
 
 PHOTOGRAPHS— 
 
 improper reproduction of, restrained, 225, 238. 
 
 PICTURE— 
 
 descriptive, not a trademark, 70. 
 PHYSICIAN— 
 
 goodwill of, 189. 
 "PIGS IN CLOVER" (puzzle), 103. 
 "PILE LECLANCHA," 379. 
 
 PLACES OF AMUSEMENT— 
 names of, 146.
 
 INDEX. 851 
 
 * 
 
 References are to pages. 
 PLAY TITLE AS TRADEMARK, 1C9. 
 PLEA— 
 
 cannot reach defects upon face of bill, 372. 
 
 in avoidance of discovery, 396. 
 PLEADING— 
 
 in the action at law, 349. 
 
 jurisdictional facts in proceedings in federal courts, 327. 
 
 tendency of mark to deceive, 333. 
 PLURALITY OF MARKS FOR SINGLE ARTICLE, 306. 
 "POCAHONTAS" (coal). 93. 
 "POROUS" (plasters), 93. 
 "PORTLAND" (stoves), 103, 287. 
 PORTO RICO— 
 
 protection of registered trademarks, 487. 
 PORTRAIT— 
 
 unauthorized publication of, 225, 235, 236. 
 "POST OFFICE" (directory), 93.. 
 PRAYER FOR RELIEF— 
 
 in bill in equity, 366. 
 
 PRELIMINARY INJUNCTION (see Injunction, Preliminary) — 
 appeal from order granting, 389. 
 denied because of laches, 172. 
 not granted on ex parte affidavits except in a clear case, 380. 
 
 "PREMISES, STOCK IN TRADE, ETC."— 
 goodwill not included in, 193. 
 
 PRESUMPTIONS— 
 
 as to carelessness of consuming purchaser, 300. 
 none in favor of federal jurisdiction, 327. 
 
 "PRIDE" (cigars), 103, 287. 
 
 "PRIDE OF ROME," 287. 
 
 "PRIME LEAF" (lard), 93. 
 
 PRINCIPAL— 
 
 liable for infringement by agent, 338. 
 
 PRINTS AND LABELS (see Forms; Statutes, Prints and Labels) — 
 adverse decision, appeal from, 434. 
 advertisement, when considered a print, 434. 
 appeal to commissioner, 434. 
 application, 431. 
 
 for renewal, 435. 
 
 requisites of. 435. 
 articles of manufacture, definition of the words, 427.
 
 If/:' J 
 
 852 INDEX. 
 
 References are to pages. 
 
 PKINTS AND LABELS— Continued. 
 
 assignment of, 435. 
 
 certificate of registration, 427. 
 renewal of, 435. 
 signature to, etc., 435. 
 
 commissioner, appeal to, 434. 
 
 copies of print or label, filing of, 432. 
 
 decisions pertaining to registry of labels, 427. 
 
 duration of term of registration, 434. 
 
 examiner, appeal from decision of, 434. 
 
 fees, 436. 
 
 label, definition of the word, 434. 
 
 pertinence to the article of manufacture required in prints, 434. 
 
 print, definition of the word, 434. 
 
 proprietor or agent should sign the application, 43L 
 
 renewal of certificate of registration, 435. 
 
 term of registration, 435. 
 PRINTER— 
 
 of fraudulent labels, 259. 
 
 proof of intent of, 260. 
 PRIORITY OF APPROPRIATION— 
 
 generally, 57, 63. 
 PRIOR RIGHT— 
 
 burden of proving, 180, n. 43. 
 
 PRIOR USE— 
 
 controls even as against registrant, 460, n. 35. 
 
 no defense, unless on same class, 374. 
 
 void because accompanied by false representations, no defense, 374- 
 PRIVACY— 
 
 right of, 231. 
 PRIVATE LETTERS— 
 
 publication of, restrained, 225. 
 "PRIZE MEDAL," 93. 
 PROBABILITY OP DECEPTION— 
 
 as test of infringement, 262. 
 
 in unfair competition cases, 262. 
 
 PROCESS— 
 
 secret, 219. 
 
 PRODUCT— 
 
 necessary name of, 108. 
 
 PROFITS— 
 
 and damages may be recovered in equity, 363. 
 ^ made by sale of infringing article may be recovered, 363. 
 
 plaintiff not limited to profits due to use of mark, 363.
 
 INDEX. 853 
 
 References are to pages. 
 
 PROMOTER— 
 
 unfair competition of, 148. 
 PROPER NAME— 
 
 assignment of, cannot be re-assigned, 211, n. 33. 
 
 cannot be assigned for fraudulent use in competition, 146. 
 
 could not be registered under act of March 3, 1881, 456. 
 
 cannot be technical trademark, 83, .137, 138, n. 30. 
 
 defendant using his own in good faith, 143. 
 
 defendant using in manner calculated to deceive, 144. 
 
 fictitious, does not disentitle to relief In equity, 148. 
 
 not trademarks because generic, 137. 
 
 of celebrity, 139. 
 
 of first owner of mark being included in mark does not render 
 it unassignable, 24, n. 59. 
 
 registration of, under Act of 1905, 471. 
 
 the right to assume, 139. 
 
 the use of one's own name, 137. 
 "PROPERTY, CREDITS AND EFFECTS"— 
 
 goodwill not included in^ 194. 
 PUBLIC POLICY— 
 
 as to covenants not to re-engage, 201. 
 PUBLICI JURIS— 
 
 extensive sale does not render mark, 108. 
 
 test of whether word has become, 180. 
 
 that mark has become, as a defense, 353. 
 
 words may become, by laches, 120. 
 "PUDDINE," 103, 290. 
 PUFFING— 
 
 harmless misrepresentation, 376. 
 PUNITIVE DAMAGES— 
 
 allowed where no actual damage proven, 358, note. 
 
 cannot be assessed in equity, 385. 
 
 in actions at law, 355. 
 PURCHASER— 
 
 degree of care of, 264. 
 
 presumptions as to care of, 263. 
 "PURITY" (oleomargarine), 94. 
 
 Q 
 
 QUACK MEDICINES— 
 
 trademarks applied to, are not protected, 220. 
 "QUALITY"— 
 
 defined, 105, n. 52. 
 
 (inferiority or superiority) of infringing goods immaterial, 295. 
 "QUEEN" (shoes), 103, 160.
 
 854 INDEX. 
 
 References are to pages. 
 
 R 
 
 "RALEIGH," 129. 
 "RANIER" (beer), 103. 
 REAL-ESTATE DEALER— 
 
 mark used by, not a trademark, 446. 
 "RED CROSS," Act of January 5, 1905, 805. 
 "RED CROSS PLASTER," 282. 
 "RED" (snuff), 94. 
 REFEREE— 
 
 reluctance to disturb findings of, in contempt cases, 398. 
 REFILLING— 
 
 burden of proof in cases of, 274. 
 
 enjoined even when done at the customer's request, 274. 
 
 packages with spurious goods, 273. 
 REFITTING— 
 
 trademarked articles, 274. 
 "REGISTERED TRADEMARK"— 
 
 falsely imprinting, 77. 
 REGISTRATION (see Forms; Statutes; Trademark Rules of Patent 
 Office) — 
 
 advantages of, 320. 
 
 a prerequisite to trademark right under English statute, 17. 
 
 as evidence of extent of registrant's claim, 322. 
 
 by aliens, 413, n. 7, 492. 
 
 by one partner through mistake, 334, n. 30. 
 
 cannot validate mark otherwise invalid, 59. 
 
 certificate will issue to assignee, 476. 
 
 citizenship of applicant immaterial, 468. 
 
 class of goods must be stated, 468. 
 
 constitutionality of act of 1905, 315. 
 
 date of adoption stated in application not conclusive, 325. 
 
 defense that it does not make valid trademark of mark common 
 to the trade, 353. 
 
 description of essential features, 451, n. 13. 
 
 disadvantages of, 322. 
 
 does not preclude third party, 460, n. 35. 
 
 doubts as to similarity resolved against applicant, 454, n. 20. 
 
 features of mark not included in, abandoned, 322. 
 
 federal, advantages of, 320. 
 
 function of commissioner in applications for, as to title, 457, n. 27. 
 
 granted only for class in which mark is actually used, 451, n. 12. 
 
 granted only to valid trademarks, 446, n. 1. 
 
 in color, 452, n. 14. 
 
 invalid Federal Statutes, 313.
 
 INDEX. • 855 
 
 References are to pages. 
 REGISTRATION— Continued. 
 
 is record of adoption of trademark, 320. 
 
 jurisdiction of congress concerning, 314. 
 
 limits registrant to matter claimed, 322. 
 
 mode of application must be stated, 452, n. 
 
 must be pleaded, 350. 
 
 no institution of suit for trademark infringement without, under 
 English act, 313. 
 
 not a grant of right or privilege, 321. 
 
 not a means of acquiring trademark, 57, 60, 453, n. 16. 
 
 not conclusive as to right to trademark, 460, n. 35. 
 
 not granted for use on "fancy goods," 451, n. 12. ' 
 
 of corporate names, 456, n. 25. 
 
 of defendant's mark, not a defense, 372. 
 
 of name of celebrity, 239, n. 13. 
 
 of name of or mark for patented article, refused, 447. 
 
 of mark common to trade, 460, n. 35. 
 
 of mark of voluntary association of manufacturers, refused, 419, 
 447. 
 
 of partnership mark, granted only on application of partner, 
 454, n. 
 
 of proper name does not create trademark right, 60. 
 
 of trademark, does not cure objection of its being colorable imi- 
 tation of another mark, 321. 
 
 only prima facie evidence of ownership, 321, n. 15. 
 
 ownership a prerequisite, 448, n. 4. 
 
 pleading, form of, 747. 
 
 prima facie evidence of ownership, 321, n. 15. 
 
 refused coat-of-arms of the United States, 493. 
 
 refused descriptive words reproduced in letters from foreign 
 language, 119. 
 
 refused form, material and color, 418. 
 
 refused generic words, 417. 
 
 refused geographical names, 455, n. 24. 
 
 refused name of patented article, 447. 
 
 refused picture and word not true alternatives, 454, n. 
 
 refused proper and geographical names joined, 456, n. 25. 
 
 remedies conferred by, 61. 
 
 right to, not concluded by registrability in foreign country. 
 449, n. 6. 
 
 state (see Statutes of the several States). 
 
 the valid federal statutes (see Acts of 1881 and 1905, in Ap- 
 pendix). 
 
 under act of 1870 was equivalent to public use, 57. 
 
 under English statute constructive user of trademark, 57. 
 
 use of fac-similes in, 452.
 
 856 INDEX. 
 
 References are to pages. 
 
 EEGISTEATION— Continued. 
 
 validity of present federal statute, 315. 
 
 value of, 59, 60, n. 25, 449, n. 7. 
 
 when refused, fee not refunded, 453, n. 17. 
 
 REISSUE OF PATENT— 
 
 extends life of trademark applied to patented article, 83. 
 
 RELATIVE PROTECTION GIVEN BY PATENTS AND TRADE- 
 MARKS, 13. 
 RELIEF— 
 
 in equity, 379. 
 
 "REMINGTON," 60, note. 
 
 REMOVAL OF BUSINESS— 
 
 to plaintiff's locality, as proof of fraud, 272. 
 RENEWAL PRIVILEGE UNDER ACT OF 1905, 19. 
 REPLACEMENT— 
 
 of parts of trademarked articles, 274. » 
 
 RES ADJUDICATA— 
 
 none created by decision of court of foreign country, 378. 
 RESCISSION— 
 
 of contract for sale of goodwill, for vendor's fraud, 215. 
 RESEMBLANCE— \ 
 
 inspection by court as test of, 261, 300. 
 
 need not be such as to deceive purchasers having opportunity of 
 comparison, 300. 
 RESTRAINT OF TRADE— 
 
 combination in, 201. 
 
 contract relating to trade secret is not in, 219. 
 
 in sale of goodwill, 201. 
 RETAIL DEALER— U 
 
 costs may not be imposed against, 405, n. 19. 11 
 
 REVOCATION OF LICENSE TO USE NAME, 149. j^ 
 
 REVIVAI^ 
 
 of action against deceased infringer's representative, 335. 
 RHODE ISLAND STATUTES AND FORMS, 683, 687. . 
 
 "RICHARDSON'S PATENT UNION" (machine), 94. t 
 
 RIGHT OF PRIVACY, 231. 
 "RISING SUN" (stove polish), 103. 
 "ROACHSAULT," 85. 
 
 "ROBERT'S PARABOLA GOLD-BURNISHED SHARPS," 287. 
 "ROGER WILLIAMS" (cloth), 103, 139. 
 "ROGERS," 287.
 
 INDEX. 857 
 
 References are to pages. 
 
 "ROSE" (vanilla extract), 94. 
 
 "ROSEBUD" (canned salmon), 103. 
 
 "ROSENDALE" (cement). 94. 
 
 "ROUGH ON RATS," 292. 
 
 "ROYAL" (baking poowder), 103. 
 
 "ROYAL BLUE" (carpet sweeper), 103. 
 
 "ROY WATCH CASE CO.." 288. 
 
 ROYALTIES ON ARTICLES MADE BY SECRET PROCESS, 230. 
 
 "R. P. HALL," AS TRADEMARK, 141. 
 
 "RYE AND ROCK" (liquor), 94. 
 
 "SAFETY" (powder), 94. 
 "SAGAFOAM," 293. 
 SALE— 
 
 of business, conveys trademarks used therein. 25. 
 
 of trademarks, 22. 
 
 SALES— 
 
 diminution of, as evidence of damage, 360. 
 
 evidence of extent of, 394. 
 SALOON— 
 
 goodwill of, 188. 
 "SANITARY" (filter), 94. 
 "SANITAS," 114. 288. 
 "SAPOLIO" (scouring brick), 103, 288. 
 "SAPONIFIER" (concentrated lye), 103. 
 "SAPPOTA TOLU," 291. 
 "SARSAPARILLA AND IRON" 94. 
 "SATININE" (starch and soap), 94. 
 "SATIN POLISH" (boots and shoes), 91. 
 "SATIN SKIN," 293. 
 
 "SAWYER'S CRYSTAL BLUE AND SAFETY BOX." 288. 
 "S. B.," 291. 
 
 "SCHIEDAM SCHNAPPS/' 94. 
 SCIENTER, 255. 
 
 SEARCH WARRANTS— 
 
 under act of 1876. 445. n. 1. 
 
 under local statutes (see Statutes of the several States). 
 
 SECONDARY MEANING, 156.
 
 858 INDEX. 
 
 References are to pages. 
 
 SECTION 3449, R. S. U. S., 343. 
 SECRET— 
 
 in trade, 219. 
 SECRET PREPARATION— 
 
 name of, as trademark, 219. 
 SECRET PROCESS. 34. 
 "SELECTED SHORE" (mackerel), 94. 
 SELECTORS— 
 
 of merchandise, may have trademarks, 55. 
 
 "SEFTON" (cloth), 103. 
 "SELF-WASHER" (soap), 123. 
 
 SERVANT— 
 
 liable for infringement, 338. 
 "SINGER" (sewing machine), 94, 109. 
 
 SHAPE— 
 
 infringement of, restrained, 250. 
 "SHAWKNIT" (stockings), 103, 288. 
 "SHERLOCK HOLMES" CASE, 171. 
 SHERMAN ANTI-TRUST ACT— 
 
 claim for damages under, cannot be joined with bill to restrain 
 unfair competition, 366, n. 19. 
 "SHREWSBURY, MARSHALL & CO. PATENT THREAD," 288. 
 
 SIGNS— 
 
 fraudulent, when enjoined, 277. 
 "SILVER GROVE" (whiskey), 104, 
 "SIMPLEX," 288. 
 "SINGER" (sewing machines), 81. 
 
 SINGLE SALE— 
 
 when sufficient to secure injunction, 393, n. 13. 
 "SIR J. CLARK'S CONSUMPTION PILLS," 368. 
 "SIX LITTLE TAILORS," 104, 288. 
 
 SIZE— 
 
 imitation of, restrained, 250. 
 
 no trademark in, 250. 
 SLANDER— 
 
 in trade, 46. 
 
 of title to trademark, 49. 
 "SLATE ROOFING" (paint), 104. 
 "SLICED ANIMALS" (toys)," 104. 
 "SNOWFLAKE" (crackers), 94. 
 "SOCIAL REGISTER" (directory), 104, 167, 291.
 
 INDEX. 859 
 
 References are to pages. 
 
 "SOLE PROPRIETOR"— 
 
 use of words enjoined, 336. 
 "SOMATOSE" (meat extract), 94, 114, n. 41. 
 SOUTH CAROLINA STATUTES, 688. 
 SOUTH DAKOTA STATUTES, 688. 
 "SOUTHERN COMPANY, ST. LOUIS," 288. 
 "SOROSIS," 288. 
 SPECIFIC PERFORMANCE— 
 
 of contract for sale of goodwill, 191. 
 "SPLENDID" (flour), 94. 
 "STANDARD A" (cigars), 94. 
 STAGE LINE— 
 
 goodwill of, 188. 
 "STAR" (tobacco, etc.), 104, 288. 
 "STARK," 288. 
 STATE PENAL LAWS, 345. 
 STATE REGISTRATION— 
 
 advantages of, 332. 
 STATUTE OF FRAUDS— 
 
 agreement not to engage in rival business does not come within, 
 200. 
 
 STATUTE OF LIMITATIONS— 
 in case of laches, 175. 
 
 STATUTES: ACT OF 1870, 341. 
 
 STATUTES: ACT OF 1876, 341. 
 
 STATUTES: ACT OF MARCH 3, 1881— 
 action: 
 
 by commissioner on application (sec. 3), 454. 
 
 for damages (sees. 7, 9), 459. 
 
 for an injunction (sec. 7), 459. 
 
 jurisdiction of United States courts in an (sec. 7), 459. 
 
 when barred (sec. 8), 460. 
 appellate jurisdiction of United States courts (sec. 7), 459. 
 applicant: 
 
 citizenship of, to be recited (sec. 1), 450. 
 
 domicile of, to be recited (sec. 1), 450. 
 
 name of, not registrable (sec. 3), 454. 
 
 name of, to be specified in the application (sec. 1), 450. 
 
 statement of, to recite what (sec. 1), 450. 
 application: 
 
 action on same by the commissioner (sec. 3), 454. 
 
 conflicting with another (sec. 3), 454.
 
 860 INDEX. 
 
 References are to pages. 
 
 STATUTES (Act of 1881)— Continued. 
 
 length of time of use of mark, to be recited in (sec. 1), 452. 
 must be accompanied by a written declaration (sec. 2), 454. 
 must recite what (sec. 1), 450. 
 time of receipt of, to be recorded (sec. 3), 454. 
 article: 
 
 if injurious, an action for damages or injunction is barred 
 
 (sec. 8), 460. 
 not manufactured in this country, term of registration for 
 
 (sec. 5), 459. 
 assignment, commissioner to prescribe forms and rules for 
 (sec. 12), 462. 
 bars: 
 
 to an action for damages or injunction (sees. 8, 11), 460. 
 to registration (sees. 1, 2, 3), 446. 
 business, if unlawful, bars an action for damages or injunction, 
 
 (sec. 8), 460. 
 certificates of registration: 
 
 how and when issued (sees. 4, 13), 458, 462. 
 use of same in courts as evidence (sec. 4), 458. 
 citizenship of applicant: 
 
 as affecting the right to register (sec. 1), 446. 
 to be specified in the application (sec. 1), 446. 
 claim, presumptive lawfulness of, to be decided by the commis* 
 
 sioner (sec. 3), 454. 
 class of merchandise to be recited in the application (sec. 1), 450. 
 commerce with foreign nations or Indian tribes, use of trademark 
 
 in, necessary to registration (sees. 1, 2, 3), 446. 
 commissioner: 
 
 action on application (sec. 3), 454. 
 
 to decide presumptive lawfulness of claim (sec. 3), 454. 
 
 to prescribe regulations for registration (sec. 1), 446. 
 
 to prescribe rules and forms for assignments and transfers, 
 
 (sec. 12), 462. 
 to sign certificates of registration (sec. 4), 458. 
 common law and equitable rights: 
 
 not abridged by expiration of term of certificate "(sec. 11), 
 
 461. 
 not abridged by statute (sec. 10), 461. 
 compensation, registrant aggrieved may recover (sec. 7), 459. 
 conflicting applications (sec. 3), 454. 
 
 convention with a foreign power as conferring the right to reg- 
 ister (sec. 3), 454. 
 confusion of the public mind by similarity of marks bars regis- 
 tration (sec. 3), 454.
 
 INDEX. 861 
 
 References are to pages. 
 
 STATUTES (Act of 1881)— Continued, 
 copies: 
 
 of printed speciflcatious to be kept on record (sec. 4), 458. 
 
 under official seal to be evidence (sec. 4), 458. 
 copying and using registered trademark damages for (sec. 7), 
 
 459. 
 counterfeiting, damages for (sec. 7), 459. 
 
 courts of equity, practice to be followed in oflSce action on con- 
 flicting applications (sec. 3), 454. 
 courts of the United States, jurisdiction of (sec. 7), 459. 
 damages : 
 
 action for, when barred (sec. 8), 460. 
 
 for affixing fraudulent trademark to merchandise (sec. 7), 
 459. 
 
 for false or fraudulent registration (sec. 9), 461. 
 
 for wrongful use of registered trademark (sec. 7), 459. 
 deceit of the public: 
 
 action to defend trademark so used^ not maintainable (sec. 
 8), 460. 
 
 by similarities in marks, bars registration (sees. 2, 3), 454. 
 declaration: 
 
 must be in writing (sec. 2), 454. 
 
 must be verified by whom (sec. 2), 454. 
 
 must contain what (sec. 2), 454. 
 
 when false or fraudulent, damages for (sec. 9), 461. 
 
 with a foreign power, as conferring the right to register 
 (sec. 3), 454. 
 description: 
 
 must truly represent the mark (sec. 2), 454. 
 
 of the goods required (sec. 1), 446. 
 
 of the mark required (sec. 1), 446. 
 domicile of applicant must be recited in the application (sec. 1), 
 
 446. 
 duration of certificate (sec. 5), 459. 
 equitable rights not affected by statute, or expiration of term 
 
 (sees. 10, 11), 461. 
 equity: 
 
 aggrieved registrant may resort to (sec. 7), 459. 
 
 courts of, practice followed in interference cases (sec. 3), 454. 
 evidence: 
 
 copies under seal to be received as (sec. 4), 458. 
 
 of ownership, registration to be prima facie (sec. 7), 459. 
 
 of registry (sec. 4), 458. 
 expiration of term of certificate does not abridge common-law or 
 equitable rights (sec. 11), 461.
 
 862 INDEX. 
 
 References are to pages. 
 
 STATUTES (Act of 1881)— Continued. 
 facsimiles: 
 
 of trademarks to be filed (sec. 1), 446. 
 presented, must truly represent the mark (sec. 2), 454. 
 false registration, damages for (sec, 9), 461, 
 fees: 
 
 for registry, and how payable (sec. 1), 446. 
 formerly paid with intent to procure registration (sec. 6), 459. 
 foreign countries, residents of may register when (sees. 1, 3), 446. 
 foreign nations or Indian tribes, trademarks used in commerce 
 
 with, along registrable (sees. 1, 2, 3), 446-457. 
 foreign power convention with, as conferring right of registration 
 
 (sec. 3), 454. 
 former rights and remedies preserved (sec. 10), 461. 
 forms for assignments to be prescribed by commissioner (sec. 
 
 12), 462. 
 fraud in obtaining registration bars an action (sec. 8), 460. 
 fraudulent: 
 
 declaration and registration, damages for (sec. 9), 461. 
 trademark, damages for affixing same to merchandise (sec. 
 7), 459. 
 goods, particular description of same, to be recited (sec. 1), 446. 
 identity with other trademarks, bars registration when (sees. 2, 
 
 3), 454. 
 imitation of registered trademark, penalty for (sec. 7), 459. 
 Indian tribes or foreign nations, trademarks used in commerce 
 
 with, alone registrable (sees. 1, 2, 3), 446-457. 
 infringement, remedy for (sec. 7), 459. 
 injunction: 
 
 action for, when barred (sec. 8), 460. 
 
 against the wrongful use of a registered trademark (sec. 7), 
 459. 
 interference practice, to follow the rules of United States courts 
 
 of equity (sec. 3), 454. 
 issue of certificates of registration (sec. 4), 458. 
 jurisdiction, original and appellate, of United States courts (sec. 
 
 7), 459. 
 lawfulness of claim to trademark to be decided by commissioner 
 
 (sec. 3), 454. 
 length of time of use of mark to be recited (sec. 1), 446. 
 location of applicant to be specified (sec. 1), 446. 
 manufacture of articles abroad, registration for (sec. 5), 459. 
 merchandise, class of to be recited (sec. 1), 446. 
 mistake or confusion in the public mind, caused by similarity of 
 
 trademarks, bars registration (sec. 3), 454. 
 mode of affixing, to be recited (sec. 1), 446.
 
 INDEX. 803 
 
 References are to pages, 
 
 STATUTES (Act of 1881)— Continued, 
 name of applicant: 
 
 not registrable (sec. 3), 454. 
 
 to be specified in the application (sec. 1), 446. 
 oath to declaration, how and by whom made (sec. 2), 454. 
 ownership, registration to be prima facie evidence of (sec. 7), 459. 
 penalty: 
 
 for false or fraudulent registration (sec. 9), 4G1. 
 
 for imitation of trademark (sec. 7), 459. 
 printed copies of specification to be kept of record (sec. 4), 458. 
 receipt of application, time of to be recorded (sec. 3), 454. 
 recording: 
 
 of time of receipt of application (sec. 3), 454. 
 
 of transfers of right of use (sec. 12), 462. 
 
 records of trademarks, statements, declarations, etc., to be 
 kept (sec. 4), 458. 
 registration: 
 
 as a condition precedent to registration abroad (sec. 13), 462. 
 
 authorized when (sec. 1), 446. 
 
 bars to (sees. 1, 2, 3), 446, 457. 
 
 by residents of foreign countries (sees. 1, 3), 446, 457. 
 
 certificates of, how and when Issued (sees. 4, 13), 458, 462. 
 
 certificates of use of same in courts as evidence (sec. 4), 458. 
 
 expiration of term of, does not abridge common-law or equit- 
 able rights (sec. 11), 461. 
 
 fee for (sees. 1, 6), 446, 459. 
 
 how effected (sec. 1), 446. 
 
 marks are registrable (sec. 5), 459. 
 
 obtained by false or fraudulent representations, damages for 
 (sec. 9), 461. 
 
 records of, to be kept (sec. 4), 458. 
 
 renewal of, can be made when (sec. 5), 459. 
 
 restricted to marks used in foreign or Indian commerce (sees. 
 1, 2, 3), 446, 457. 
 
 right to, as affected by citizenship of applicant (sec. 1), 446. 
 
 right to, as conferred by treaty convention, or declaration 
 with a foreign power (sec. 3), 454. 
 
 right of action secured thereby (sec. 7), 459. 
 
 rules for, to be prescribed by the commissioner (sec. 1), 446. 
 
 to be prima facie evidence of ownership (sec. 7), 459. 
 
 use in foreign and Indian commerce a prerequisite to (sees. 
 1, 2, 3), 446, 457. 
 regulations and rules to be prescribed by the commissioner (sees. 
 
 1, 12), 446, 462. 
 remedy for infringement (sec. 7), 459. 
 renewal of registration (sec. 5), 459.
 
 864 INDEX. 
 
 References are to pages. 
 
 STATUTES (Act of 1881)— Continued. 
 
 reproduction and use of registered trademark, penalty for (sec. 
 
 7), 459. 
 resemblance to other marks must be avoided (sees. 2, 3), 454. 
 restrictions: 
 
 on actions for damages or an injunction (sec. 8), 460. 
 
 on actions for infringement, (sees. 8, 11), 460, 461. 
 
 on registration (sees. 1, 2, 3), 446 457. 
 right to use the mark must belong exclusively to the applicant 
 
 (sec. 2), 454. 
 rights at common law and equity not abridged: 
 
 by expiration of the term of registration (see. 11), 461. 
 
 by the enactment of the statute (sec. 10), 461. 
 rules and regulations, to be prescribed by the commissioner (sees. 
 
 11, 12), 461, 462. 
 similarity to other marks bars registration, when (sees. 1, 12), 
 - 446, 462. 
 specifications, printed copies of, to be kept of record (sec. 4), 
 
 458. 
 statement of applicant: 
 
 to recite what (sec. 1), 446. 
 
 recording of (sec. 4), 458. 
 terms of registration: 
 
 duration of (see. 5), 459. 
 
 expiration of, does not abridge common-law or equitable 
 rights (sec. 10), 461. 
 
 limitation of (sec. 5), 459. 
 
 renewal of (sec. 5), 459. 
 time of receipt of application to be recorded (see. 3), 454. 
 
 of use to be recited (see. 1), 446. 
 transfers of the right of use, how regulated (sec. 12), 462. 
 treasury department, deposit of trademark in, 466. 
 treaties as conferring the right of registration (see. 3), 454. 
 United States: 
 
 citizens of, may obtain registration (see. 3), 454. 
 
 courts of, to have jurisdiction, when (sec. 7), 459. 
 use: 
 
 if an unlawful business, bars an action (sec. 8), 460. 
 
 if wrongful, common-law and equitable rights unimpaired, 
 (sec. 10), 461. 
 
 if wrongful or unlawful, bars registration (sec. 3), 454. 
 
 length of time of, to be recited (sec. 1), 446. 
 
 right of, must be exclusive in the applicant (sec. 2), 454. 
 
 right of, transfers of (sec. 12), 462. 
 
 unlawful, of trademark, damages or injunction (sec. 7), 459. 
 verification of declaration, how and by whom made (sec. 2), 454.
 
 INDEX. 865 
 
 References are to pages. 
 
 STATUTES: ACT OF FEBRUARY 20. 1905. 
 
 abandoned trademarks, action may not be brought on (sec. 21), 
 
 483. 
 action: 
 
 by commissioner on application (sec. 6), 473. 
 
 for damages (sees. 16, 19, 25), 480, 481, 484. 
 
 for an injunction (sec. 19), 481. 
 
 jurisdiction of United States courts in an (sees. 17, 18, 19. 
 
 20), 481, 482. 
 when barred (sees. 21, 28), 323. 483, 485. 
 act of 1881, rights of registrants under (sees. 12, 30), 477, 487. 
 "affixed" defined (sec. 29). 486. 
 amendments to applications filed under act of 1881 (sees. 14, 
 
 24), 478, 484. 
 appeals: 
 
 fees for (sees. 8, 14), 475, 478. 
 
 to the commissioner of patents (sees. 7, 8, 13), 474, 475, 478. 
 to the court of appeals of the District of Columbia (sec. 9), 
 475. 
 patent practice and procedure to govern (sec. 9), 475. 
 appellate jurisdiction of United States courts (sec. 17), 481. 
 applicant: 
 
 "applicants" defined (sec. 29), 486. 
 citizenship of, to be recited (sec. 1), 468. 
 domicile of, to be recited (sec. 1), 468. 
 location of, to be recited (sec. 1), 468. 
 name of, to be recited (sec. 1), 468. 
 statement of. to recite what (sec. 1), 468. 
 who may apply for registration (sec. 1). 468. 
 applications: 
 
 action on same by the commissioner (sec. 6), 473. 
 
 conflicting (sec. 7), 474. 
 
 date of, in foreign country must be stated when (sec. 2), 469. 
 
 examination of (sec. 6), 473. 
 
 fees on filing (sees. 1, 14), 468, 478. 
 
 filed under the act of 1881 may be amended (sees. 14, 24). 
 
 478, 484. 
 length of time of use of mark to be recited in (sec. 1), 468. 
 may be assigned (sec. 10), 476. 
 must be addressed to the commissioner of patents (sec. 1), 
 
 468. 
 must be accompanied by a drawing (sec. 1), 468. 
 must be accompanied by a written declaration (sec. 2), 469. 
 must be accompanied by specimens of the trademark (sec. 1), 
 
 468. 
 must be filed in the patent office (sec. 1), 468. 
 55
 
 866 INDEX. 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued. 
 
 must be in writing (sec. 1), 468. 
 must be signed by the applicant (sec. 1), 468. 
 must recite what (sec. 1), 468. 
 
 must state how trademark is applied or aflBxed to the goods 
 (sec. 1), 468. 
 article, if injurious, an action for damages or injunction is 
 
 barred (sec. 21), 483. 
 assignments: 
 
 applications for registration may be assigned (sec. 10), 476. 
 
 fees for recording (sec. 10), 476. 
 
 must be acknowledged according to laws of country or state 
 
 in which executed (sec. 10), 476. 
 must be in connection with the good will of the business 
 
 (sec. 10), 476. 
 must be in writing (sec. 10), 476. 
 record of assignments to be kept in the patent office (sec. 10), 
 
 476. 
 shall be void unless recorded in the patent office w;thin 
 
 three months (sec. 10), 476. 
 trademarks may be assigned (sec. 10), 476. 
 bars: 
 
 to action for dama-os or injunction (sees. 21, 28), 323, 483, 485. 
 to registration (sees. 1, 2, 4, 5), 468, 471. 
 business, if unlawful, bars an action for damages or injunction 
 
 (sec. 21), 483. 
 cancellation, proceedings for (sees. 13, 22), 478, 483. 
 certificates of registration: 
 
 in case of foreign registration, shall cease when the foreign 
 
 registration expires (sec. 12), 477. 
 issued under the act of 1881, may be renewed under the act 
 
 of Feb. 20, 1905 (sec. 12), 477. 
 issued under the act of 1881, shall remain in force (sees 
 
 12, 30), 477, 487. 
 may be canceled (sees. 13, 22), 478, 483. 
 may be issued to the assignee (sec. 11), 476. 
 may be renewed (sec. 12), 477. 
 
 shall bear the seal of the patent office (sec. 11), 476. 
 shall be signed by the commissioner of patents (sec. 11), 476. 
 shall not be issued to foreign applicants until they have ob- 
 tained registration in country of residence (sec. 4), 471. 
 shall remain in force not more than 20 years (sec. 12), 477. 
 shall state date of application (sec. 11), 476. 
 use of copies of in court as evidence (sec. 11), 476. 
 
 citizenship: 
 
 as affecting right to register (sec. 1), 468.
 
 INDEX. 867 
 
 References are to pages, 
 
 STATUTES (Act of 1905)— Continued. 
 
 of applicant to be recited (sec. 1), 468. 
 class of merchandise to be recited in application (sec. 1), 468. 
 coats of arms not registrable (sec. 5), 471. 
 commerce: 
 
 between States (sec. 1), 468. 
 
 foreign applicants need not state that the trademark has 
 been used in commerce with the United States or among 
 the States thereof (sec. 2), 469. 
 with foreign nations (sec. 1), 468. 
 with Indian tribes (sec. 1), 468. 
 commissioner: 
 
 action on application (sec. 6), 473. 
 appeals to (sec. 8), 475. 
 
 jurisdiction of, to cancel registrations (sees. 13, 22), 478, 483. 
 may refuse to register interfering marks, when (sec. 7), 474. 
 to decide presumptive lawfulness of claim (sec. 6), 473. 
 to prescribe regulations for registration (sec. 26), 484. 
 to sign the certificates of registration (sec. 11), 476. 
 common-law and equitable rights not abridged by statute (sec. 
 
 23), 483. 
 conflicting applications (sec. 7), 474. 
 
 confusion of the public mind by similarity of marks bars regis- 
 tration (sec. 5), 471. 
 constitutionality of, 315. 
 
 contempt, action for violating injunction (sec. 20), 482. 
 convention with a foreign power as conferring the right to reg- 
 ister (sees. 1, 4), 468, 471. 
 copies: 
 
 of actual trademark or facsimiles required from applicant 
 
 (sec. 1), 468. 
 of printed specifications to be kept of record (sec. 11), 476. 
 of records of injunction proceedings furnished to courts 
 
 applying for same (sec. 20), 482. 
 of publications, prices (sec. 14), 478. 
 
 of records under official seal to be evidence (sec. 11), 476. 
 copying and using registered trade-marks: 
 damages for (sees. 16, 19), 480, 481. 
 restraint of (sec. 19), 481. 
 counterfeiting, damages for (sec. 16), 480. 
 courts of the United States, jurisdiction of (sees. 16, 17, 18, 19), 
 
 480, 481. 
 damages: 
 
 action for, when barred (sees. 21. 28), 483, 485. 
 for affixing fraudulent trademark to merchandise (sec. 16), 
 351, 480.
 
 868 INDEX. 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued. 
 
 for false or fraudulent registration (sec. 25), 484. 
 
 for wrongful use of registered trademarks (sees. 16, 19), 480, 
 
 481. 
 may be increased (sees. 16, 19), 480, 481. 
 deceit of the public: 
 
 action to defend trademark used in^ not maintainable (sec. 
 
 21), 483. 
 by similarity in marks, bars registration (sec. 5), 471. 
 deceptive trademarks, action under, may not be brought (sec. 21), 
 
 483. 
 declaration: 
 
 may be verified, before whom (sec. 2), 469. 
 must be in writing (sec. 2), 469. 
 must be verified, by whom (sec. 2), 469. 
 must contain what (sec. 2), 469. 
 
 for foreign applicants (sec. 2), 469. 
 under 10-year proviso (sec. 5), 471. 
 when false or fraudulent, damages for (sec. 25), 484. 
 definitions of "aflGixed," "applicant," "owner," "person," "regis- 
 trant," "States," "trademark," "United States" (sec. 29), 486. 
 description: 
 
 must truly describe the mark (sec, 2), 469. 
 of the goods required (sec. 1), 468. 
 of the mark required (sec. 1), 468. 
 descriptive trademarks, not registrable (sec. 5), 471. 
 destruction of infringing trademarks (sec. 20), 482. 
 domicile of applicant must be recited in the application (sec. 1), 
 
 468. 
 drawing of the trademark required (sec. 1), 468. 
 duration of the certificate of registration (sec. 12), 477. 
 equity, aggrieved parties may resert to (sees. 17, 19, 22, 23), 
 
 481. 483. 
 evidence: 
 
 copies under seal to be received as (sec. 11), 476. 
 of ownership, registration to be prima facie (sec. 16), 480. 
 of registry (sec. 11), 476. 
 examination of applications: 
 
 applicant to be notified of the result of (sec. 6), 473. 
 commissioner of patents to cause (sec. 6), 473. 
 facsimiles of trademarks, when to be filed (sec. 1), 468. 
 false registration, damages for (sec. 25), 480. 
 fees: 
 
 additional fee not required for applications pending at the 
 
 date of passage of this act (sec. 14), 478. 
 for copies (sec. 14), 478.
 
 INDEX. 869 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued. 
 
 for recording assignments (sec. 14), 478. 
 
 for registration or renewal (sees. 1, 14), 468, 478. 
 
 if paid by mistake may be refunded (sec. 15), 479. 
 
 on appeal to the commissioner of patents (sees. 8, 14), 475, 
 
 478. 
 on filing notice of opposition (sec. 14), 478. 
 flags or coats of arms not registrable (sec. 5), 471. 
 foreigners: 
 
 entitled to date of application in country of residence in 
 
 certain cases (sec. 4), 471. 
 must designate representative in the United States (sec. 3), 
 
 470. 
 must first register in country of residence (sees. 2, 4), 469,471. 
 must give date of registration in country of residence or 
 
 date of application therefor (sec. 2), 469. 
 must reside in a country affording similar privileges to the 
 
 citizens of the United States (sec. 4), 471. 
 need not state that mark has been used in commerce with 
 the United States or among the States thereof (sec. 2), 469. 
 notices for, may be served on their representatives in the 
 
 United States (sec. 3), 470. 
 when entitled to register (sees. 1, 2, 4), 468, 469, 471, 
 foreign nations, registration of trademark used in commerce with 
 
 (sec. 1), 468. 
 foreign powers, conventions or treaties with, and laws of, as 
 
 affecting right of registration (sees. 1, 4), 468, 471. 
 former rights and remedies preserved (sees. 12, 23), 477, 483. 
 fraud in obtaining registration, bars an action (sec. 21), 483. 
 fraudulent: 
 
 declaration and registration damages for (sec. 25)', 484. 
 trademarks, damages for aflBxing same to merchandise (sec 
 16), 480. 
 geographical terms, not registrable (sec. 5), 471. 
 goods, particular description of, to be recited (sec. 1), 468. 
 identity with other trademarks bars registration when (sec. 5), 
 
 471. 
 imitation of registered trademarks, penalty for (sees. 16, 19), 480, 
 
 481. 
 immoral or scandalous matter not registrable (sec. 5), 471. 
 importation of articles of merchandise bearing unlawful trade- 
 marks prohibited (sec. 27), 484. 
 Indian tribes, registration of trademarks used in commerce 
 
 with (sec. 1), 468. 
 infringement, remedy for (sees. 16, 19), 480, 481.
 
 870 INDEX, 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued, 
 injunction: 
 
 action for, when barred (sees. 21, 28), 483, 485. 
 
 against the wrongful use of a registered trademark (sec. 19), 
 
 481. 
 may be enforced by proceedings to punish for contempt (sec. 
 
 20), .482. 
 may be enforced in any jurisdiction (sec. 20), 482. 
 notice of, may be served wherever defendant can be found 
 in United States (sec. 20), 482. 
 injurious articles, action may not be brought on trademarks 
 
 used on (sec. 21), 483. 
 interferences: 
 
 examiner in charge of has jurisdiction over — 
 cancellations (sec. 13), 478. 
 interferences (sec. 7), 474. 
 oppositions (sec. 7), 474. 
 when declared (sec. 7), 474. 
 interfering trademarks, suits, and proceedings in equity (sec. 22), 
 
 483. 
 issue of certificates of registration (sees. 6, 11), 473, 476. 
 
 to assignees (sec. 11), 476. 
 jurisdiction: 
 
 of the commissioner of patents (sees. 8, 13), 475, 478. 
 of the examiner of interferences (sees. 7, 13), 474, 478. 
 original and appellate, of the United States courts (sees. 9, 
 16, 17, 18, 19, 20, 22), 475, 483. 
 lawfulness of claim to trademark to be decided by the commis- 
 sioner (sec. 6), 473. 
 lawful trademarks, or those used lawfully, alone registrable 
 
 (sec. 5), 471. 
 length of time of use of trademark to be recited (sec. 1), 468. 
 list of trademarks to be published in the Official Gazette (sec. 
 
 6), 473. 
 location of applicant to be specified (sec. 1), 468. 
 merchandise bearing unlawful trademarks, importation prohibited 
 
 (sec. 27), 484. 
 merchandise, class of, to be recited (sec. 1), 468. 
 mistake, or confusion in the public mind caused by similarity of 
 
 trademarks, bars registration (sec. 5), 471. 
 mode of affixing trademark to be recited (sec. 1), 468. 
 name of applicant: 
 
 not registrable, except on certain conditions (sec. 5), 471. 
 to be specified in the' application (sec. 1), 468. 
 notice of opposition and of the grounds therefor to be given to 
 applicants (sec. 7), 474.
 
 INDEX. 871 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued, 
 notice of registration: 
 
 registrants must give (sec. 28), 485. 
 
 form of (sec. 28). 485. 
 notice for foreign applicants may be served on their representa- 
 tives in the United States (sec. 3), 470. 
 oath to declaration may be made before whom (sec. 2), 469. 
 oppositions: 
 
 may be made by any person who believes he would be dam- 
 aged by registration (sec. 6), 473. 
 
 must be accompanied by fee (sec. 14), 478. 
 
 notice of grounds of opposition shall be given to applicants 
 (sec. 7), 474. 
 
 notice of, must be filed within 30 days after publication (sec. 
 6), 473. 
 
 notice of, must be verified (sec. 6), 473. 
 
 proceedings under (sec. 7), 474. 
 
 publication of trademarks in Official Gazette before registra- 
 tion to enable opposition to be made (sec. 6), 473. 
 "owner" defined (sec. 29), 486. 
 
 ownership, registration to be prima facie evidence of (sec. 16), 480. 
 penalty: 
 
 for false or fraudulent registration (sec. 25), 484. 
 
 for imitation of trademark (sees. 16. 19, 20), 480, 481, 482. 
 "person" defined (sec. 29), 486. 
 petition, to contain what (sec. 1), 468. 
 
 portraits of living individuals not registrable without their con- 
 sent in writing (sec. 5), 471. 
 printed copies of specifications to be kept of record (sec. 11), 476. 
 printed copies of trademarks to be furnished by the Office (sees. 
 
 11. 14), 476, 478. 
 profits may be recovered (sec. 19). 481. 
 
 publication of trademarks in the Official Gazette (sec. 6), 473. 
 publications, prices of copies of (sec. 14), 478. 
 recording: 
 
 fees for (sec. 14), 478. 
 
 of assignments (sec. 10), 476. 
 records of trademarks, statements, declarations, etc., to be kept 
 
 (sec. 11), 476. 
 refunding of fees (sec. 15), 479. 
 refusal of an application (sees. 6, 7). 473, 474. 
 "registrant" defined (sec. 29), 486. 
 
 registrants under the act of 1881, rights of (sec. 12), 477. 
 registration: 
 
 authorized by (sec. 1), 468. 
 
 bars to (sees. 1, 2, 4, 5), 468, 469, 471.
 
 872 INDEX. 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued. 
 
 by residents of foreign countries (sees. 1, 3), 468, 470. 
 certificates of — 
 
 duration (sec. 12), 477. 
 
 how and when issued (sees. 6, 11), 473, 476. 
 renewal of (sec. 12), 477. 
 
 use of, in courts as evidence (sees. 11, 16), 476, 480. 
 fees for (sec. 14), 478. 
 how effected (sees. 1, 2), 468, 469. 
 marks not registrable (sec. 5), 471. 
 obtained by false or fraudulent representation, damages for 
 
 (sec. 25), 484. 
 of marks used 10 years prior to the passage of this act (sec. 
 
 5), 471. 
 records of, to be kept (sec. 11), 476. 
 renewal of, can be made, when (sec. 12), 476. 
 right to — 
 
 as affected by citizenship of applicant (sees. 1, 4), 468, 471. 
 as conferred by treaty, or convention with a foreign 
 power, or by the laws of a foreign country (sees. 1, 4), 
 468, 471. 
 rules for, to be prescribed by the Commissioner (sec. 26), 484. 
 to be prima facie evidence of ownership (sec. 16), 480. 
 use in foreign or Indian or interstate commerce, a prerequi- 
 site to (sec. 1), 468. 
 who is entitled to (sees. 1,4), 468, 471. 
 regulations and rules to be prescribed by the Commissioner (sec. 
 
 26), 484. 
 remedies for infringements (sees. 16, 19, 20, 23), 480, 481, 482,483. 
 renewal of certificate of registration (sec. 12), 477. 
 
 must be made not more than six months prior to expiration 
 
 (sec. 12), 477. 
 who may request (sec. 12), 477. 
 representatives in the United States, foreign applicants must 
 
 designate (sec. 3), 470. 
 reproduction and use of registered trademarks, penalty for (sees. 
 
 16, 19, 20), 480, 481, 482. 
 resemblances to other marks must be avoided (sec. 5), 471. 
 residence of applicants required (sec. 1), 468. 
 
 restrictions: 
 
 on actions for damages or an injunction (sees. 21, 28), 483, 485. 
 
 on actions for infringement (sees. 21, 28), 483, 485. 
 
 on registration (sec. 5), 471. 
 review by Commissioner of adverse decision (s"c. 9), 475. 
 right to use the trademark must belong exclusively to the ap- 
 plicant (sec. 2), 469.
 
 INDEX. 873 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued. 
 
 rights at common law or equity not abridged (sec. 23), 483. 
 rules and regulations to be prescribed by the Commissioner (sec. 
 
 26), 484. 
 scandalous or immoral matter not registrable (sec. 5), 471. 
 schedule of fees (sec. 14), 478. 
 similarity to other trademarks, bars registration when (sec. 5), 
 
 471. 
 specifications, printed copies of, to be kept of record (sec. 11), 476. 
 specimens of the trademark required (sec. 1), 4G8. 
 statement of applicant: 
 
 to recite what (sec. 1), 468. 
 recording of (sec. 11), 476. 
 "states," defined (sec. 29), 486. 
 states, registration of trademarks used in commerce between 
 
 (sec. 1), 468. 
 ten years' use prior to the passage of this act permits registration 
 
 of certain marks (sec. 5), 471. 
 term of registration: 
 
 duration of (sec. 12), 477. 
 limitation of (sec. 12), 477. 
 renewal of (sec. 12), 477. 
 time of use to be recited (sec. 1), 468. 
 "trademark" defined (sec. 29), 486. 
 
 trademarks to be published in Official Gazette (sec. 6), 473. 
 transfers of the right of use, how regulated (sec. 10), 476. 
 treasury department, deposit of trademark in (sec. 27), 484. 
 treaties, as conferring the right of registration (sees. 1, 4), 468, 
 
 471. 
 United States: 
 
 citizens of, may obtain registration, when (sec. 1). 468. 
 courts of, to have jurisdiction, when (sees. 16, 17, 18, 19). 
 
 480, 481. 
 definition of the term "United States" as used in this act 
 (sec. 29), 486. 
 unlawful business, use of trademarks in, bars an action (sec. 21), 
 483. 
 
 use: 
 
 if in an unlawful business, bars an action (sec. 21), 4S3. 
 
 if wrongful, common law and equitable rights unimpaired 
 
 (sec. 23), 483. 
 length of time of, to be recited (sec. 1), 468. 
 mode of, to be recited (sec. 1), 468. 
 
 right of, must be exclusive with the applicant (sec. 2), 469. 
 right of, transfers of (sec. 10), 476.
 
 874 INDEX. 
 
 References are to pages. 
 
 STATUTES (Act of 1905)— Continued. 
 
 unlawful, of trademarks, damages or injunctions (sees. 16, 
 19, 20), 480, 481. 
 verification of declaration, how and by whom made (sec. 2), 469. 
 writ of certiorari, may be granted by the Supreme Court of the 
 United States (sec. 18), 481. 
 STATUTES: PRINTS AND LABELS— (ACT OF 1874) — 
 art, works of, not registrable (sec. 3), 424. 
 commissioner: 426. 
 
 jurisdiction as to registration (sec. 3), 424. 
 to sign and seal the copy of record of registration (sec. 3), 
 424. 
 copyright law, application to registry of prints and labels (sec. 
 
 3), 424. 
 cut, the word construed as meaning what (sec. 3), 424. 
 engraving, the word construed as meaning what (sec. 3), 424. 
 fees for registration (sec. 3), 427, 436. 
 fine arts, registry not allowed to illustrations or works connected 
 
 with (sec. 3), 424. 
 illustrations, when registrable (sec. 3). 
 labels, registration of (sec. 3), 426. 
 law of copyright, application of to registry of prints and labels 
 
 (sec. 3), 426. 
 Patent Office rules, 428. 
 
 pictorial illustrations, when registrable (sec. 3), 125. 
 print, the word construed as meaning what (sec. 3), 425, 426. 
 record of registration, copy of, fee for (sec. 3), 436. 
 registration, provisions as to (sec. 3), 424. 
 works of art, not registrable (sec. 3), 424. 
 
 STATUTES— 
 
 Section 3449, R. S. U. S., 343. 
 
 "STEEL SHOD" (shoes), 95. 
 
 "STEINWAY," 288. 
 
 "STEPHENS," 288. 
 
 "STILLMAN MILLS," 179. 
 
 "ST. JAMES" (newspaper, etc.), 104. 
 
 "STOCK BELONGING TO THE PARTNERSHIP"— 
 includes goodwill, 194. 
 
 "STOCK IN TRADE AND EFFECTS"— 
 
 goodwill not included in, 193. 
 "STOGA KIP" (boots), 95. 
 
 "STONE ALES"— 
 case, 132, n. 8.
 
 INDEX. 875 
 
 References are to pages. 
 "STRAIGHT CUT" (cigarettes), 95. 
 STRUCTURE— 
 
 imitation of, 255. 
 "STUART'S DYSPEPSIA TABLETS," 288. 
 SUBMISSION— 
 
 to avoid costs, 403, 405. 
 
 must be complete, 403, 404. 
 
 may be made at any stage of the case, 403. 
 
 by others as evidence of right to trademark, 396. 
 
 offer of on conditions, iusuflBcient, 404. 
 SUBPOENA DUCES TECUM— 
 
 for drawings enforced against objection they relate to secret 
 process, 229. 
 "SUBSTITUTION"— 
 
 defined, 276. 
 "SUCCESSOR TO"— 
 
 right of purchaser of business to advertise as, 197. 
 SUITS IN EQUITY— 
 
 for invasion of goodwill, 
 
 generally, 361. 
 "SUNLIGHT" (soap), 104, 289. 
 SURNAME— 
 
 not registrable under Act of 1881, 463, n. 
 "SVENSKA SNUSMAGANISET." 95. 
 "SWAN," 289. 
 
 "SWAN DOWN" (complexion powder), 104. 
 "SWEET CAPORAL" (cigarettes), 104. 
 "SWEET LOTOS" (tobacco), 95. 
 "SWEET OPOPONAX OF MEXICO" (perfume), 104. 
 "SWING" (scythe-sockets), 95. 
 SYMBOL— 
 
 may be infringed by. or infringe, a word, 289. 
 
 SYPHONS— 
 
 acts to protect, (See Statutes of the several States). 
 "SYRUP OF FIGS" (medicinal preparation), 121. 
 "SYRUP OF RED SPRUCE GUM" (medicine), 104. 
 
 T 
 
 "TAFFY TOLU" (chewing gum), 95. 
 TAILOR— 
 
 goodwill of, 188. 
 
 <7
 
 876 INDEX. 
 
 References are to pages. 
 "TAMAR INDIEN" (lozenges), 104, 115. 
 TARIFF ACT OF 1897, 466. 
 "TASTELESS" (drugs), S5. 
 TAXATION OF TRADE SECRETS, 228, 229. 
 TELEGRAPH BLANKS— 
 
 not merchandise within act of 1881, 460, n. 34. 
 "TELEGRAPHONE," 293. 
 TENDENCY— 
 
 to deceive, as test of infringement, 265. 
 TENNESSEE, STATUTES, 693. 
 TERM OF REGISTRATION, 477. 
 TERRITORIAL LIMITATION— 
 
 none as applied to trademarks, 19. 
 TESTS OF INFRINGEMENT, 265, 299. 
 TEXAS, STATUTES, 698. 
 "THE DEMON," 282. 
 
 "THE GOOD THINGS OF LIFE" (periodical), 104. 
 "THE NILE" (playing cards), 104. 
 THOMSONIAN (medicines), 95. 
 "THOMSON'S GLOVE-FITTING CORSETS," 207. 
 "TIDAL WAVE" (tobacco), 104. 
 TIME— 
 
 required to create trademark right, 58, n. 15. 
 "TIME-KEEPER" (watches), 95. 
 TIN TAG — 
 
 not a trademark, 243. 
 
 fraudulent imitation of, enjoined, 244. 
 
 TITLE— 
 
 book, as trademark, 162. 
 
 former adjudication establishing, conclusive on application for 
 
 preliminary injunction, 380. 
 of periodical as trademark, 164. 
 of play as trademark, 169. 
 
 registration only prima facie evidence of, 372. 
 should be pleaded, 372. 
 
 "TIVOLI" (beer), 104. 
 
 "TOD" (watches), 115. 
 
 "TONGE'S," 289. 
 
 "TOOTHACHE GUM," 95. 
 
 "TOWER PALACE" case, 179. 
 
 t
 
 INDEX. 877 
 
 References are to pages. 
 
 TRADE LIBEL, 46. 
 
 slander or libel not actionable in absence of proof of special 
 damage, 47. 
 
 TRADEMARK— 
 
 abandonment of, 176. 
 
 acquisition of, generally, 55. 
 
 alien cannot have, as against a citizen malting prior adoption 
 
 in good faith, 62. 
 analogy of to goodwill, 27. 
 assignability of, 22. 
 assignment by implication, 
 assignment of territorial rights in, 20. 
 cannot exist "in gross"; must be "appendant," 20. 
 can only be assigned with goodwill, 27. 
 casual use cannot create, 21. 
 counterfeiting, 260. 
 
 courts not critical of, where fraudulent competition exists, 372. 
 defined, 3. 
 
 defined by Act of 1905, 486. 
 dependent on priority of appropriation, 62. 
 distinguished from patents and copyrights, 14. 
 does not become pxihlici juris through extensive sales, 108. 
 earliest recognition of, 36. 
 evolution of the law of, 40. 
 function of, defined, 15. 
 
 imitation of, may be limited or partial, 242. 
 includes the French marque de fabrique and marque de com- 
 merce, 6. 
 infringement akin to forgery, 51. 
 in initials, 297. 
 
 in name of secret preparation, 219. 
 inseparable from business, 20. 
 inseparable from goodwill, 22. 
 in title of book, 162. 
 in title of periodical, 164. 
 in title of play, 169. 
 invalidated by dishonest label, 67. 
 is an assurance of quality, 105. 
 letters and numerals as, 295. 
 may be a word in common use, when, 85. 
 may be purely fanciful, 85. 
 may consist of word from dead language, 114. 
 may indicate natural product, 84. 
 may pass by Implication as incident to realty. 33. 
 misspelling generic word does not make, 85. 
 mode of affixing, immaterial, 7.
 
 878 INDEX. 
 
 References are to pages. 
 
 TRADEMAKK— Continued, 
 must be distinctive^ 7. 
 must be exclusive, 17. 
 must be meaningless, 71, n. 17. 
 must be truthful, 70. 
 must not be common to the trade. 111. 
 need not indicate manufacture or place of manufacture, 15. 
 none in name of patented article after expiration of patent, 83. 
 no right of, in form, size or color, 112, 245. 
 no right of, in necessary name of product, 108. 
 not acquired by registration, 59. 
 not defined by acts of 1870 and 1881, 450, note. 
 of partnership, passes with sale of goodwill, 27. 
 of variable sound and pronunciation, 304. 
 perpetual existence of, 18. 
 printing generic word in letters from foreign alphabet does not 
 
 make, 85. 
 proper names cannot constitute, 84. 
 remotely descriptive word may be, 8G. 
 reproduction of, proof of fraudulent intent, 256. 
 requisites of valid, 66. 
 
 right acquired only by adoption and actual use, 20. 
 right of, in word applied to patented article during life of the 
 
 patent, 82. 
 
 where use of mark antedates patent, 80. 
 right to, a common law right, 16. 
 right to, a right of property, 16. 
 right to, may be common to several owners, 51, 52. 
 right to, must be exclusive, 10, 51. 
 right to, is not monopoly, 49. 
 right to, protected in territory under military government of the 
 
 United States, 486. 
 territorial limitation, 19. 
 
 territorial rights to, cannot be conveyed, 17. 
 the law of, but part of law of unfair trade, 3. 
 unlawful to apply to manufacturer's product to which he does 
 
 not intend its application, 275. 
 water mark may be, 7. 
 what are essential features of, 451, n. 13. 
 
 words and devices common to the trade cannot be, 106, 107, 111. 
 words of double meaning as, 159. 
 
 TRADEMARK RULES OF PATENT OFFICE— 
 abandoned trademarks (rule 18), 493. 
 act of 1881, rights of registrants under (rule 55), 504. 
 action of the Office to be directed to the merits (rule 37), 500. 
 additions to papers not permitted (rule 40), 501.
 
 INDEX. 879 
 
 References are to pages. 
 
 TRADEMARK RULES OF PATENT OFFICE— Continued. 
 
 advertising stamp of attorneys not permitted on drawings (rule 
 
 34, —6), 498. 
 allowance: 
 
 amendments after (rule 42), 501. 
 notice of (rule 38), 500. 
 amendments: 
 
 after allowance (rule 42), 501. 
 
 form of (rule 40), 501. 
 
 in general (rules 39, 40, 41, 42, 43), 501. 
 
 new matter not permitted in (rule 39), 501. 
 
 to amendment, form of (rule 41), 501. 
 
 to applications filed under act of 1881 (rule 25), 495. 
 
 will give such applications new serial numbers and dates 
 of filing (rule 25), 495. 
 to declaration, will not be permitted (rule 33), 498. 
 to rules, will be published in the Official Gazette (rule 68), 
 
 508. 
 to statement, when permitted (rule 39), 501. 
 appeals: 
 
 to the Commissioner of Patents (rule 50), 503. 
 to the court of appeals of the District of Columbia (rule 51), 
 503. 
 applicant: 
 
 may prosecute his own case (rule 11), 489. 
 should not correspond with OflBce if he has an attorney (rules 
 7, 8), 489. 
 applications: 
 
 are preserved in secrecy (rule 24), 495. 
 conflicting, practice, etc. (rule 44), 502. 
 date of, in foreign country, must be stated, when (rule 31), 
 
 498. 
 examination of (rules 36, 37, 38), 500. 
 fee on filing (rules 21. if). 63), 494, 506. 
 filed under act of 1881 may be amended (rule 25), 495. 
 
 will be given new serial numbers and dates of filing 
 under the act of Feb. 20. 1905 (rule 25). 495. 
 may be assigned (rule 57), 505. 
 to contain what, form of (rule 21), 494. 
 
 assignments: 
 
 fees for recording (rule 63), 506. 
 
 must be recorded within three months (rule 58), 505. 
 
 orders for copies of, must give liber and page of record (rule 
 61). 506. 
 
 provisions regulating (rules 57, 58. 59), 505. 
 attendance of applicants in person not necessary (rule 6), 489
 
 880 INDEX. 
 
 References are to pages. 
 
 TBADEMAKK KULES OF PATENT OFFICE— Continued, 
 attorneys: 
 
 correspondence will be held with (rule 7), 489. 
 
 disbarment of (rule 15), 492. 
 
 in general (rules 11, 12, 13, 14, 15), 489, 492. 
 
 registration of (rule 11), 489. 
 
 stamp of, not permitted on face of the drawing (rule 34, — 7), 
 498. 
 
 substitution of (rule 13), 492. 
 bars to registration (rules 17, 18), 492, 493. 
 cancellation, proceedings for (rules 28, 47, 48, 49), 496, 502, 503. 
 certificate of registration: 
 
 date of (rule 53), 504. 
 
 duration of (rule 53), 504. 
 
 issue of (rules 52, 53), 504. 
 
 issued under act of 1881 shall remain in force (rule 55), 504. 
 may be renewed under act of Feb. 20, 1905 (rule 55), 504. 
 
 may be issued to an assignee (rule 59), 505. 
 
 may be canceled (rule 46), 502. 
 
 renewal of (rule 54), 504. 
 
 will not be issued to foreign applicants until they have ob' 
 tained registration in country of residence (rule 56), 505. 
 charges for express, postage, etc., must be prepaid (rule 10), 489. 
 citizenship: 
 
 as affecting right to register (rule 16), 492. 
 
 of applicant to be recited (rule 21, — b), 494. 
 class of merchandise to be recited in application (rule 21, — 6), 494. 
 coats of arms not registrable (rule 18), 493. 
 commerce: 
 
 between States (rule 18), 493. 
 
 foreign applicants need not state that the trademark has 
 been used in commerce with the United States or among 
 the States thereof (rule 31), 498. 
 
 with foreign nations (rule 18), 493. 
 
 with Indian tribes (rule 18), 493. 
 commissioner: 
 
 appeals to (rule 50), 503. 
 
 communications to be addressed to (rule 3), 488. 
 communications. (See Correspondence.) 
 conflicting applications, interferences, patent practice to govern 
 
 in (rule 44), 502. 
 copies of actual trademark required from applicant (rule 21, — e), 
 
 494. 
 copies of publications, prices of (rule 63), 506. 
 corporations must recite under the laws of what State or nation 
 incorporated (rule 21, — 6), 494.
 
 INDEX. _ 881 
 
 References are to pages. 
 
 TRADEMARK RULES OF PATENT OITICE— Continued, 
 correspondence: 
 
 charges for postage, etc., must be prepaid (rule 10), 489. 
 checks, drafts, etc., to be drawn to the Commissioner's or- 
 der (rule 3), 488. 
 decorum and courtesy required (rule 2), 488. 
 double correspondence not permitted (rule 8), 489. 
 letters relating to application should state what (rule 5), 489. 
 office can not expound the law, etc. (rule 9), 489. 
 personal attendance unnecessary (rule 6), 489. 
 separate letter for each subject of inquiry required (rule 4), 
 
 488. 
 will be held with the attorney (rule 7), 489. 
 courtesy and decorum required of applicants and attorneys 
 
 (rule 2). 488. 
 date of certificate of registration (rule 53), 504. 
 deceptive trademarks not registrable (rule 18), 493. 
 declaration: 
 
 in general (rules 29, 30, 31, 32, 33), 497. 498. 
 may not be amended (rule 33), 498. 
 requisites of (rules 29, 30, 31), 497, 498. 
 for foreign applicants (rule 31), 498. 
 under 10-year section (rule 30), 497. 
 to be verified before whom (rule 32), 498. 
 decorum required from applicants and attorneys (rule 2), 488. 
 description of the trademark required (see Statute), (rule 21, — ft), 
 
 494. 
 descriptive marks not registrable (rule 18), 493. 
 disbarment of attorneys (rule 15), 492. 
 domicile to be recited (see Statute), (rule 21. — b), 494. 
 double correspondence not allowed (rule 8), 489. 
 drawing: 
 
 furnished by the Office (rule 35), 500. 
 must not be folded (rule 34, —6), 498. 
 requisites of (rule 34), 498. 
 duration of term of registration (rule 53). 504. 
 English language to be used in the application papers and as- 
 signments (rules 22, 57), 495, 505. 
 erasures by applicant or attorney not permitted (rule 40), 501. 
 
 examination: 
 
 applicants will be notified of the result of (rule 36). 500. 
 of applications (rules 36. 37. 38). 500. 
 
 of applications for registration of trademarks previously reg- 
 istered under act of 1881 (rule 25). 495. 
 examiner in charge of trademarks, original jurisdiction of. pro- 
 ceedings before (rule 36), 500. 
 
 \ f
 
 882 INDEX. 
 
 References are to pages. 
 
 TKADEMAEK EULES OF PATENT OFFICE— Continued, 
 express charges must be prepaid (rule 10), 489. 
 fac-simile of trademarlv, wlien to be filed (rule 21, — e), 494. 
 fees: 
 
 additional fee not required for applications pending at the 
 date of the passage of act of February 20, 1905 (rule 25), 
 495. 
 how paid (rules 3. 64, 65), 488, 507. 
 refunded, when (rule 66), 507. 
 schedule of (rule 63), 506. 
 flags or coats of arms not registrable (rule 18), 493. 
 foreigners: 
 
 entitled to date of application in country of residence in 
 
 certain cases (rule 26), 496. 
 must designate representative in United States (rule 27), 496. 
 must first register in country of residence (rule 56), 505. 
 must give date of registration in country of residence or 
 
 date of application therefor (rule 31), 498. 
 must reside in a country affording similar privileges to the 
 
 citizens of the United States (rule 18), 493. 
 need not state that mark has been used in commerce with 
 the United States or among the States thereof (rule 17), 
 492. 
 notices for, may be served on their representatives in the 
 
 United States (rule 28), 497. 
 when entitled to register (rule 17), 492. 
 foreign nations, registration of trademarks used in commerce 
 
 with (rule 18), 493. 
 geographical terms not registrable (rule 18), 493. 
 goods, particular description of, to be recited (see Statute), 
 
 (rule 21, —6), 494. 
 immoral or scandalous matter not registrable (rule 18), 493. 
 Indian tribes, registration of trademarks used in commerce with 
 
 (rule 18), 493. 
 information of certain kinds not furnished (rules 9, 24), 489, 495. 
 injurious articles, trademarks used on, not registrable (rule 18), 
 
 493. 
 insertions by applicants or attorneys not permitted (rule 40), 501. 
 interferences: 
 
 examiner in charge of, has jurisdiction over — 
 cancellations (rules 46, 48), 502, 503. 
 interferences (rule 44), 502. 
 oppositions (rules 45, 48), 502, 503. 
 when declared, practice (rule 44), 502. 
 Issue of certificates of registration (rules 52, 53), 504. 
 to assignee (rule 59), 505.
 
 INDEX. 883 
 
 References are to pages. 
 
 TBADEMAEK RULES OF PATENT OFFICE— Continued. 
 
 lawful trademark.s, or those used lawfully, alone registrable 
 
 (rule lH), 493. 
 length of time used to be recited (see Statute), (rule 21, — 6), 494. 
 letters, rules and regulations governing (see Correspondence), 
 list of trademarks to be published in the Official Gazette (rule 
 
 62), 506. 
 merchandise, class of, to be recited (see Statute), (rule 21, — i»),494. 
 merits. Office action to be directed to the (rule 37), 500. 
 mode of applying and affixing trademark to the goods to be re- 
 cited (see Statute), (rule 21, — b), 494. 
 mutilation of papers not permitted (rule 40), 501. 
 name of applicant not registrable, except under certain condi- 
 tions (rule 18), 493. 
 name of applicant to be recited (see Statute), (rule 21, — b), 494. 
 new matter not permitted by amendment (rule 39), 501. 
 notice of allowance (rule 38), 500. 
 notice of opposition and of the grounds t^^erefor to be given to 
 
 applicants (rule 48), 503. 
 notice of registration: 
 
 form of (rule 67), 508. 
 registrants must give (rule 67), 508. 
 notices for foreign applicants may be served on their representa- 
 tives in the United States (rule 28), 497. 
 oath, to be made before whom (rule 32), 498. 
 oppositions: 
 
 may be made by any person who believes he would be dam- 
 aged by registration (rule 45), 502. 
 must be accompanied by fee (rule 45), 502. 
 notice of grounds of opposition shall be given to applicants 
 
 (rule 48), 503. 
 notice of, must be filed within 30 days after publication (rule 
 
 45), 502. 
 notice of, must be verified (rule 45), 502. 
 proceedings under (rules 45, 48, 49), 502, 503. 
 orders for copies, to specify what (rule 61), 506. 
 personal attendance of applicants unnecessary (rule 6), 489. 
 petition to contain what (rule 21, — a), 494. 
 
 portraits of living individuals not registrable without their con- 
 sent in writing (rule 18), 493. 
 postage must be prepaid (rule 10), 489. 
 powers of attorney: 
 
 filing of (rule 12), 491. 
 requisites of (rule 12), 491. 
 revocation of (rule 14), 492.
 
 884 INDEX. 
 
 References are to pages. 
 
 TBADEMAEK RULES OF PATENT OFFICE— Continued. 
 
 printed copies of trademarks furnished by the OflSce (rule 60), 
 
 506. 
 priority proceedings, patent practice to govern (rule 44), 502. 
 publication in the Official Gazette: 
 
 of registered trademarks (rule 62), 506. 
 
 of trademarks before registration (rule 38), 500. 
 publications, prices of copies of (rule 63), 506. 
 recording assignments (rules 57, 58), 505. 
 
 fees for (rule 63), 506. 
 refunding of fees (rule 66), 507. 
 
 refusal of an application. Office proceedings (rules 36, 37), 500. 
 registrants under act of 1881, rights of (rule 55), 504. 
 registration: 
 
 barred when (rules 17, 18, 56), 492, 493, 505. 
 
 certificate of, date, duration, etc. (rule 53), 504. 
 
 of attorneys (rule 11), 489. 
 
 of marks used ten years prior to the act of Feb. 20, 1905 
 (rule 19), 494. 
 
 of particular trademarks. Office can not advise as to (rules 9, 
 24), 489, 495. 
 
 renewal of (rule 54), 504. 
 
 who is entitled to (rules 16, 17), 492. 
 remittances, how made (rules 3, 64, 65), 488, 507. 
 renewal of certificates of registration (rule 54), 504. 
 repayment of money, when made (rule 66), 507. 
 representatives in the United States, foreign applicants must 
 
 designate (rule 27), 496. 
 residence of applicants required (see Statute), (rule 21, — &), 494. 
 restrictions on registration (rules 17, 18), 492, 493. 
 return of papers lacking in courtesy and decorum (rule 2), 488. 
 return of application papers not allowed (rule 43), 501. 
 review by Commissioner of adverse decision (rule 50), 503. 
 scandalous or immoral matter not registrable (rule 18), 493. 
 schedule of fees (rule 63), 506. 
 secrecy, applications preserved in (rule 24), 495. 
 separate letters, when required (rules 4, 40), 488, 501. 
 signatures of applicant must be uniform (rule 23), 495. 
 specimens of the trademark required (rule 21, — e), 494. 
 statement: 
 
 may be amended (rule 39), 501. 
 
 must recite what (rule 21. — 6), 494. 
 state, registration of trademarks used in commerce among (rule 
 
 18), 493. 
 substitute declaration, when required (rule 33), 498. 
 substitution of attorneys (rule 13), 492.
 
 INDEX. 885 
 
 References are to pages. 
 
 TRADEMARK RULES OF PATENT OFFICE— Continued. 
 
 ten years' use prior to act of Feb. 20, 1905, permits registration 
 of certain marks (rule 19), 494. 
 
 term of registration: 
 
 duration of (rules 53, 55), 504. 
 renewal of (rules 54, 55), 504. 
 
 transfer of trademark rights (see also Assignments), (rule 57), 
 505. 
 
 unlawful business, trademarks used in, not registrable (rule 18), 
 493. 
 
 use: 
 
 manner, or mode of, to be recited (rule 21, — h), 494. 
 time of. to be recited (see Statute), (rule 21, — b), 494. 
 
 verification of declaration (rule 32), 498. 
 
 weekly issue to close on Thursday (rule 53), 504. 
 
 writing, business to be transacted in (rule 1), 488. 
 TRADE NAMES— 
 
 defined, 7. 
 
 generally, 7. 
 TRADE SECRET— 
 
 as subject of levy and sale, and taxation, 228, 229. 
 
 conveyed with goodwill, 222. 
 
 defined, 219. 
 
 may be subject of expired patent, 227. 
 
 must be unknown to others, 226. 
 
 privilege of witness from disclosure, 221, 229. 
 
 subject to levy and sale, 228. 
 
 subject to taxation, 229. 
 TRADE SLANDER, 46. 
 TRADES UNION— 
 
 label of, as trademark, 56. 
 "TRAFFORD." 289. 
 TREATY— 
 
 defined, 449, n. 6. 
 
 -making power of congress, basis of act of 1881, 316. 
 TREATIES AND CONVENTIONS— 
 
 as conferring right to registration, 468, 471. 
 
 judicial notice taken of, 391. 
 
 with foreign nations, enumerated, 807. 
 "TRENTON," 455, n. 24. 
 "TRILBY" (gloves). 104. 
 
 TRUSTEE— 
 
 duty of, to protect title to trademark. 334. 
 
 in bankruptcy has title to bankrupt's trademarks, 26, n. 63.
 
 886 INDEX. 
 
 References are to pages. 
 TRUSTS— 
 
 concerning titles to trademarks, 334. 
 TRUTH— 
 
 indispensable to valid mark, 66. 
 "TUCKER SPRING" (bed), 95. 
 "TWIN BROTHERS" (yeast), 104. 
 "TYCOON" (tea), 95. 
 
 u 
 
 ULTIMATE CONSUMER— 
 
 probable deception of, as test of infringement, 268. 
 "UNEEDA" (biscuit), 10, 104, 289. 
 UNFAIR COMPETITION (see Infringement, and Jurisdiction) — 
 
 between vendor and vendee of goodwill, 197. 
 
 bill in equity to enjoin, 366, n. 19. 
 
 by improper use of proper name, restrained, 42. 
 
 distinguished from trademark infringement, 41. 
 
 generic words protected against, 40. 
 
 in what it consists, 1. 
 
 law of, includes law of trademarks, 2, 3. 
 
 law of, is well settled, 35, n. 7. 
 
 relief against, based on fraud against the plaintiff and the pub- 
 lic, 41. 
 UNION LABELS— 
 
 and other marks of trades unions, 419, 447. 
 
 as trademarks, 56. 
 
 infringement of, enjoined because unfair competiticn, 56, n. 6. 
 "UNION METALLIC CARTRIDGE CO," 456. 
 "UNION STATION" (cigars), 264. 
 
 "UNITED STATES" (dental rooms), 95. * 
 
 "UNIVERSAL," 289. 
 UNWARY— 
 
 deception of, as test of infringement, 265. 
 
 USER— 
 
 a prerequisite to acquiring trademark, 20. 
 
 casual, insuflBcient to create trademark right, 21. 
 
 character of, necessary, 20, 58. 
 
 held immaterial under act of 1870, 57. 
 
 must be shown to secure registration, 453, n. 16. 
 
 after application filed, may be shown by supplemental petition 
 
 453, n. 16. 
 must be actual, 64. 
 must be upon goods actually upon the market, 64.
 
 IXDEX. 887 
 
 References are to pages. 
 
 USER— Continued. 
 
 originally unlawful, not cured by abandonment of mark by 
 owner, 64. 
 
 single instance of, sufficient to establish right to trademark, 65. 
 
 of trademark, limited to indicating origin and ownership, 65. 
 UTAH STATUTES, 701. 
 
 V 
 
 VALUATION OF GOODWILL, 204. 
 VALUE OF TRADEMARK— 
 
 should be pleaded in federal practice, 350. 
 "VALVOLINE" (lubricating oil), 95, 105. 
 "VELVA," 293. 
 VENUE— 
 
 how laid in action at law, 349. 
 VERIFICATION— 
 
 of bill in equity, 367. 
 VERMONT STATUTES AND FORMS, 703, 706. 
 "VICHY" (mineral water), 291. 
 ..VICTORIA" (lozenges), 95. 
 "VIENNA" (bread). 135. 
 "VITAE-ORE," 95, 289. 
 "VIASCOPE" (machine), 105. 
 VIRGINIA STATUTES AND FORMS, 708, 712. 
 "V-0" (medicine), 95. 
 VOLUNTARY ASSOCIATION— 
 
 registration for mark used by, refused, 419, 447. 
 "VULCAN" (matches), 105. 
 
 w 
 
 WAIVER— 
 
 always question of fact, 174. 
 
 none without knowledge of facts, 174. 
 "WALTHAM" (watches), 8. 130, n. 6. 
 "WAMSUTTA" (muslin), 269, 289. 
 WAREHOUSEMAN— 
 
 submission of. to avoid costs, 405. 
 "WARREN," 289. 
 WASHINGTON STATUTES, 713. 
 WATER-MARK— 
 
 may be a trademark, 7.
 
 888 INDEX. 
 
 References are to pages. 
 "WATER OF AYR" (stone), 95. 
 "WAVERLY" (bicycles), 105. 
 "WEBER" (pianos), 291. 
 "WEBSTER'S DICTIONARY," 95. 
 "WELCOME" (soap), 289. 
 WEST VIRGINIA STATUTES, 717. 
 WHARFINGERS— 
 
 handling infringing goods, given lien for charges, 338. 
 
 lien of, upon infringing goods, 339. 
 "WHIRLING SPRAY" (syringes), 95. 
 "WILLOUGHBY LAKE" (scythe-stones), 105, 289. 
 WISCONSIN STATUTES, 722. 
 
 "WISTAR'S BALSAM OF WILD CHERRY," 95, 105. 
 WITNESS— 
 
 privilege as to disclosure of secret process, 229. 
 "WONDERFUL MAGAZINE" CASE, 164. 
 "WORCESTERSHIRE" (sauce), 95. 
 WORD— 
 
 may be infringed by, or infringe, a symbol, 289. 
 
 of double meaning, 159. 
 WRIT OF INJUNCTION— 
 
 form of, 791. 
 WYOMING STATUTES, 726. 
 
 Y 
 
 "YALE" (locks), 96. 
 "YAMA-MAI," 291. 
 "YANKEE" (soap), 105. 
 "YUCATAN" (leather), 96. 
 "YUSEA," 289, 305.
 
 &> 
 
 ^ 
 
 (\f 
 
 LOS ANGb^^ii^ 
 
 ^
 
 UC SOUTHERN REGIONAL LIBRARY FACILITY 
 
 AA 000 772 189 7
 
 '^m': 
 
 •Mmkil 
 
 ,^t^r. 
 
 j-^ 
 
 .^Sattl::^.:aa&itL';ii&'iSaB^{^ rii: